United States District Court, D. Idaho
MEMORANDUM DECISION AND ORDER
C. NYE CHIEF U.S. DISTRICT COURT JUDGE.
before the Court is Defendant LaBelle Lake Ice Palace, LLC,
and LaBelle Lake, LLC's (collectively “Labelle
Lake”) Motion for Bond (Dkt. 16) and Motion to Dismiss
Claims 2 and 3 (Dkt. 25). On June 4, 2019, the Court held
oral argument and took the motions under advisement. Upon
review, and for the reasons set forth below, the Court
DISMISSES WITHOUT PREJUDICE the Motion for Bond and DENIES
the Motion to Dismiss.
Castles and LaBelle Lake are business competitors that have
each created their own ice attractions. Simply described,
these are outdoor attractions, constructed of ice, that
include sculptures, artistic creations, and structures that
visitors can enter-such as tunnels and caves. Ice Castles is
a Utah Limited Liability Company and currently has six
locations in the United States and Canada. Labelle Lake is an
Idaho Limited Liability Company and currently has one
location in Rigby, Idaho. Thousands of individuals visit
these attractions each year.
2011, Brent Christensen-the original creator of Ice Castles
ice structures, and a current manager at Ice Castles-filed a
patent application entitled “Methods for Constructing
Ice Structures.” In 2013, the United States Patent and
Trademark Office (“USPTO”) granted the
application. U.S. Patent No. 8, 511, 042 (“the
‘042 patent”) is the embodiment of
September 2017, an individual associated with LaBelle Lake
reached out to Ice Castles to discuss opening an ice
attraction in Idaho. The Court is unaware of the extent to
which the two companies negotiated these matters, but it is
clear that a business agreement never materialized.
the winter of 2017-2018, LaBelle Lake built its own ice
attraction in Rigby, Idaho, and began soliciting customers.
Thereafter, in January 2018, Ice Castles retained legal
counsel and sent two “cease and desist” letters
to LaBelle Lake indicating its position that LaBelle
Lake's attraction-more specifically how the attraction
was created-violated the patented ice castle building
technique protected in the ‘042 patent.
Lake responded to each letter indicating its position that it
was not infringing on the ‘042 patent. Ultimately, Ice
Castles filed the instant suit in December 2018, when it
became apparent that LaBelle Lake planned to open its
facility again for the 2018-2019 winter season.
overarching dispute in this case can be summed up quite
simply as follows: Ice Castles asserts that LaBelle Lake
infringes on the methodology outlined in the ‘042
patent as it relates to the construction of its ice
sculptures and structures. LaBelle Lake, on the other hand,
contends that its methods are sufficiently different to avoid
infringement because it uses “ice logs” and not
“icicles” in its designs.
after suit was filed, LaBelle Lake filed a Motion for Bond
(Dkt. 16), asserting that under Idaho Code section 48-1701
et seq., Ice Castles must post a sufficient bond to
ensure the integrity of its suit. Shortly after it filed its
Motion for Bond, LaBelle Lake filed a Motion to Dismiss two
claims raised in Ice Castles Amended Complaint (Dkt. 25). The
Court will address each motion in turn.
Motion for Bond (Dkt. 16)
2014, the Idaho Legislature passed Idaho Code section 48-1701
et seq., entitled “Bad Faith Assertions of
Patent Infringement, ” in an attempt to
“facilitate the efficient and prompt resolution of
patent infringement claims, protect Idaho businesses from
abusive and bad faith assertions of patent infringement and
build Idaho's economy, while at the same time carefully
not interfering with legitimate patent enforcement
actions.” Idaho Code § 48-1701(2).
the Statute, the Court may consider numerous factors when
determining whether a party has made a bad faith assertion of
patent infringement including the following:
(a) The person sends a demand letter to a target without
first conducting an analysis comparing the claims in the
patent to the target's products, services or technology.
(b) The demand letter does not contain the following
(i) The patent number;
(ii) The name and address of the patent owner or owners and
assignee or assignees, if any; and
(iii) The factual allegations concerning the specific areas
in which the target's products, services and technology
infringe the patent or are covered by the claims in the
(c) The demand letter does not identify specific areas in
which the products, services and technology are covered by
the claims in the patent.
(d) The demand letter demands payment of a license fee or
response within an unreasonably short period of time.
(e) The person offers to license the patent for an amount
that is not reasonably based on the value of a license to the
(f) The person asserting a claim or allegation of patent
infringement acts in subjective bad faith, or a reasonable
actor in the person's position would know or reasonably
should know that such assertion is meritless.
(g) The claim or assertion of patent infringement is
(h) The person or its subsidiaries or affiliates have
previously filed or threatened to file one (1) or more
lawsuits alleging patent infringement based on the same or
similar claim, the person attempted to enforce the claim of
patent infringement in litigation and a court found the claim
to be meritless.
(i) Any other factor the court finds relevant.
Code § 48-1703(2)(a)-(i). On the flip side, the Court
may consider the following factors as evidence that a person
has not made a bad faith assertion of patent
(a) The person engages in a good faith effort to establish
that the target has infringed the patent and to negotiate an
(b) The person makes a substantial investment in the use of
the patent or in the production or sale of a product or ...