United States District Court, D. Connecticut
O.F. MOSSBERG & SONS, INC., Plaintiff,
TIMNEY TRIGGERS, LLC, and TIMNEY MANUFACTURING, INC., Defendants.
RULING AND ORDER ON MOTION TO DECLARE THIS CASE
A. BOLDEN, UNITED STATES DISTRICT JUDGE
Triggers, LLC's, and Timney Manufacturing, Inc.
(together, "Defendants" or "Timney") have
moved to declare this case exceptional under 35 U.S.C. §
285 in order to recover attorney's fees from OF. Mossberg
& Sons, Lie. ("Mossberg" or "Plaintiff) in
this voluntarily dismissed patent infringement case. Mot. to
Declare Case Exceptional ("Def's Mot"), ECF No.
following reasons, this motion is DENIED.
FACTUAL AND PROCEDURAL BACKGROUND
"manufactures and sells a popular range of specialized
aftermarket gun triggers." Vehr Decl. ¶¶ 4-5,
Mot. to Declare Case Exceptional, Ex. A, ECF No. 89-2. Those
triggers are "compatible with weapons sold by a variety
of manufacturing brands, including Mossberg, Remington,
Winchester, FN Herstal, and others." Id. ¶
5. Mossberg is reportedly America's largest firearm
manufacturer. Opp. to Mot. to Declare Case Exceptional
("PI. Opp."), ECF No. 90.
November 13, 2007, the United States Patent and Trademark
Office ("USPTO") issued U.S. Patent No. 7, 293, 385
("the '385 Patent"), entitled "Modular
Trigger Group for Firearms and Firearm Having a Modular
Trigger Group," to its inventor. Mossberg Timeline, Opp.
to Mot. to Declare Case Exceptional ("PI. Opp."),
Ex. A, ECF No. 90-1. The patent application included 17
Claims. Def.'s Mot. at 5. On September 22, 2011, Mossberg
bought the '385 Patent. PI. Opp. at 3; Bartozzi Decl. at
February 12, 2012, Mossberg filed its original Complaint
against Timney for patent infringement. Compl., ECF No. 1. On
May 30, 2012, Mossberg filed an Amended Complaint, claiming
that Timney had infringed on the '385 Patent. Compl.
¶ 12, ECF No. 8. Mossberg alleged that the '385
patent "basically describes a modular trigger assembly
which can be substituted for an existing trigger assembly
within a firearm, such as an' AR' style,
semiautomatic rifle." Id. ¶ 13. Mossberg
further alleged that Timney Triggers had made, used, offered
to sell, or sold "specific modular trigger assemblies
(for firearms) that are covered by the '385 patent."
Id. ¶ 14.
23, 2012, Timney filed a request for inter partes
reexamination of the '385 Patent with the United States
Patent and Trademark Office ("USPTO"), claiming,
among other things, that the '385 Patent was invalid
because of prior art patents including U.S. Patent No. 4,
671, 005 (the "Jewell Patent"). ECF Nos. 24, 25;
see also Def.'s Mot. at 6. The USPTO granted the
request for reexamination, and on October 12, 2012, Judge
Stefan Underhill granted a motion to stay the case pending
the USPTO's reexamination determination. ECF No. 37.
of the inter partes reexamination, the USPTO ruled
that Claims 3 and 7 were patentable over prior art cited by
Timney and therefore were not subject to reexamination.
Status Report at 2, ECF No. 44. The Examiner then rejected
claims 1-2, 5-6, and 8-10. Id. On December 7, 2012,
Mossberg responded by cancelling the rejected claims and
adding new ones, which Mossberg asserted were clearer.
Id. at 2-3. On June 14, 2013, the Director for the
Office of Patent Legal Administration, Officer of the Deputy
Commissioner for Patent Examination Policy, issued a final
agency action finding that the USPTO lacked jurisdiction to
conduct reexamination on the claims because the original
request for inter par tes reexamination had failed
to identify the real party in interest. Id. at 3-4.
September 9, 2013, Mossberg moved to lift the stay in this
Court. ECF No. 43. Timney opposed the motion and stated that
it would file another request for reexamination. ECF No. 60.
The Court maintained the stay. ECF No. 62.
April 3, 2014, Timney filed a request with the USPTO for an
ex parte reexamination.Status Report, ECF No. 61.
The USPTO granted the request for reexamination and then
rejected every claim based on prior art cited by Timney.
Id. at 2-3; see also Id. Ex. C, ECF No.
61-3 (finding Claims 1-10 unpatentable). On July 7, 2014,
Mossberg filed an Amendment in which it cancelled Claim 10,
presented Claims 11-15 for consideration, and argued that
Claims 1-9 and 11-15 were patentable. Status Report at 3, ECF
No. 61. On August 20, 2014, the USPTO found that Claims 1-9
and 11-15 were patentable and confirmed that Claim 10 was
September 8, 2015, Timney filed a second request for an
ex parte reexamination of the '385 Patent, with
additional prior art that had not been considered in the
previous reexamination. Id. at 4. The USPTO granted
the second request. Id. In a First Office Action, it
rejected Claims 1-9 and 11-15 as not patentable. Id.
Mossberg filed a formal Amendment, cancelling Claim 1 and
arguing that the remaining Claims should be found patentable.
Id. In a Second Office Action, the Examiner
continued to reject Claims 2-8 and 11-15. Id.
Mossberg filed another Amendment, and the Examiner issued a
Third Office Action, finding that Claims 3, 7, and 11-15 were
patentable, and rejecting Claims 2, 4-6, 8, and 9.
Id. Mossberg filed a third Amendment, cancelling
Claims 2 and 4, and arguing that Claims 5, 6, 8, and 9 were
patentable. Id. at 5.
December 10, 2015, Timney filed a third request for ex
parte reexamination on Claims 3, 7, and 11-15. Timeline,
Ex. A, Opp. to Mot. to Declare Case Exceptional. On May 23,
2016, the USPTO found that Claims 3, 5-9, and 11-15 were not
patentable. ECF No. 89-18.
September 20, 2016, the USPTO released an Office Action
finding all claims unpatentable, citing Taiwan Patent 409847
(the "Li Patent"). Id. On December 29,
2016, the USPTO issued a Final Rejection of All Claims,
citing the Li Patent. ECF No. 89-21. In that decision, the
Claims 3, 5-9 and 11-15 stand rejected under pre-AIA 35
U.S.C. 103(a) as being unpatentable over Taiwan 490, 847 to
Li in view of the AR-15 Schematics, U.S. Patent No. 4, 671,
005 to Jewell, Benelli Montefeltro Super 90 (American
Rifleman Publication) and U.S. Patent No. 4, 103, 586 to
ECF No. 89-21 at 3.
February 21, 2017, Mossberg appealed to the Patent Trial and
Appeal Board. Timeline, Ex. A., Opp. to Mot. to Declare Case
Exceptional. The Appeal Board affirmed. The Appeals Board
reexamined Claims 3, 5-9, and 11-15, as Claims 1, 2, and 4
had been cancelled. PTAB Decision at 2, ECF No. 89-22. As to
Claim 3, the Appeals Board agreed with the Examiner that
"the claimed invention merely substitutes the
selector/positioning spring attachment arrangement of Li with
the bushing/pin attachment arrangement of Tollinger."
Id. at 8. As to Claims 5, 6, 8, and 9, the Appeals
Board found, in a section entitled "Rejections 2 and 3
Based on Jewell," that those claims "stand rejected
as obvious over Jewell in view of Bielfeldt, Biller, Walker,
AR-15 Schematics, and Li, while claims 3, 7, and 11-15 stand
rejected as obvious over Jewell in view of Bielfeldt, Biller,
Walker, American Rifleman, as evidenced by Benelli
Owner's Manual, Tollinger, AR-15 Schematics, and
Li." Id. at 11.
September 25, 2017, Timney Triggers notified this Court that
the Patent Trial and Appeal Board issued a decision, and that
no claims in the '385 patent had survived reexamination
or the appeal to the Board. Notice, ECF No. 77.
October 18, 2017, O.F. Mossberg filed a notice of voluntary
dismissal of the case under Federal Rule of Civil ...