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O.F. Mossberg & Sons, Inc. v. Timney Triggers, LLC

United States District Court, D. Connecticut

September 14, 2018

O.F. MOSSBERG & SONS, INC., Plaintiff,
v.
TIMNEY TRIGGERS, LLC, and TIMNEY MANUFACTURING, INC., Defendants.

          RULING AND ORDER ON MOTION TO DECLARE THIS CASE EXCEPTIONAL

          VICTOR A. BOLDEN, UNITED STATES DISTRICT JUDGE

         Timney 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. 89.

         For the following reasons, this motion is DENIED.

         I. FACTUAL AND PROCEDURAL BACKGROUND

         Timney "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.

         On 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 5.

         On 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.

         On July 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").[1] 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.

         As part 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.

         On 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.

         On April 3, 2014, Timney filed a request with the USPTO for an ex parte reexamination.[2]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 cancelled. Id.

         On 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.

         On 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.

         On 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 USPTO found:

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 Tollinger.

ECF No. 89-21 at 3.

         On 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.

         On 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.

         On October 18, 2017, O.F. Mossberg filed a notice of voluntary dismissal of the case under Federal Rule of Civil ...


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