Adaptive Tactical v. Lickteig

COMPLAINT FOR DECLARATORY JUDGMENT REGARDING NONINFRINGEMENT AND INVALIDITY - 1

Christopher Cuneo, ISB No. 8557 Dana M. Herberholz, ISB No. 7440 Jamie K. Ellsworth, ISB No. 8372 PARSONS BEHLE & LATIMER 800 W. Main Street, Suite 1300 Boise, ID 83702 Telephone: (208) 562-4900 Facsimile: (208) 562-4901 Email: [email protected] [email protected] [email protected]

Attorneys for Plaintiff Adaptive Tactical, LLC

UNITED STATES DISTRICT COURT

DISTRICT OF IDAHO

ADAPTIVE TACTICAL, LLC,

Plaintiff,

v.

SHANE LICKTEIG,

Defendant.

Case No. 1:14-cv-00268 COMPLAINT FOR DECLARATORY JUDGMENT REGARDING PATENT NON-INFRINGEMENT DEMAND FOR JURY TRIAL

COMES NOW Plaintiff Adaptive Tactical, LLC (“Adaptive”), by and through its

undersigned counsel of record, Parsons Behle & Latimer, and by way of complaint for

declaratory judgment regarding non-infringement of U.S. Patent No. 8,276,306 against

Defendant Shane Lickteig (“Lickteig”), hereby alleges and avers as follows:


NATURE OF THE ACTION

1. This is an action brought pursuant to the Declaratory Judgment Act, 28 U.S.C. §§

2201-2202, for a declaratory judgment of non-infringement of United States Patent No.

8,276,306 (“‘306 patent”) (attached hereto as Exhibit A) under the Patent Laws of the United

States, 35 U.S.C. §§ 101, et seq.

PARTIES

2. At all times relevant hereto, Adaptive was and now is an Idaho limited liability

corporation authorized to do business in the state of Idaho with its principal place of business

located at 1910 Madison Avenue, Nampa, Idaho 83687.

3. Upon information and belief, at all times relevant hereto, purported ‘306 patent

owner Lickteig was and is an individual and a resident of Mesa, Arizona.

JURISDICTION AND VENUE

4. This action arises under the patent laws of the United States, Title 35 of the

United States Code. This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331

and 1338(a).

5. Upon information and belief, this Court has personal jurisdiction over Lickteig

because Lickteig has constitutionally sufficient contacts with Idaho so as to make personal

jurisdiction proper in this Court. In particular, upon information and belief, Lickteig maintains a

website that offers for sale products made by Lickteig that are made available to residents of

Idaho and this judicial district.

6. Venue is proper in this district under 28 U.S.C. §§ 1391(b) and 1400.


FACTS AND ALLEGATIONS GIVING RISE TO THIS ACTION

7. Adaptive designs, manufactures, and sells innovative firearms and firearm

accessories. Adaptive infuses every product with over 40 years of firearm design and polymer

engineering expertise. Adaptive offers products focused on improving speed, performance, and

versatility. Adaptive’s passion for design and innovation is balanced with an unrelenting

commitment to quality product, uncompromising safety, and unmatched customer satisfaction.

8. Adaptive designed and offers for sale the TacTRED™ Monopod which is a

spring-loaded monopod firearm accessory designed to be used with a firearm having a suitable

rifle stock.

9. On June 19, 2014, Lickteig, through his counsel, sent Adaptive a letter, a true and

correct copy of which is attached hereto as Exhibit B. In the letter, Lickteig alleged ownership

of the ‘306 patent, alleged that Adaptive’s TacTREDTM Monopod “infringes at least claims 1 and

2” of the ‘306 patent, and claimed that Adaptive’s “manufacture, use, sale, or offer for sale and

display of such products” infringes the ‘306 patent claims.

10. The letter further alleged that Lickteig would “vigorously protect and defend the

subject intellectual property rights to the fullest extent of the law.”

11. The letter further demanded that Adaptive contact Lickteig’s counsel within

fourteen days to discuss licensing the ‘306 patent, or to (i) cease all development and do not

proceed with the manufacture, use, sale, display, and/or offer for sale of the TacTREDTM

Monopod; (ii) immediately provide Lickteig with an accounting of the total sales volume for the

TacTREDTM Monopod products sold so that Lickteig may assess damages; and (iii) provide

written assurance Adaptive’s compliance with the above demands.


12. The letter further warned that should Adaptive elect not to comply with the

foregoing demands, Lickteig “will initiate such actions as he deems appropriate in respect to the

circumstances, without further notice or warning to you” and that “any legal action taken will

include a claim for attorney’s fees and treble damages.”

13. By virtue of Lickteig’s actions and statements, Adaptive has a reasonable fear and

apprehension that patent infringement litigation will be brought against it. Therefore, there

currently exists an actual and justiciable controversy between Adaptive and Lickteig relating to

the ‘306 patent.

14. Lickteig’s allegations of Adaptive’s infringement of ‘306 patent place a cloud

over Adaptive’s products and relationships with potential distributors and customers. In fact,

and as outlined below, Adaptive’s products do not infringe, either directly or indirectly, any

claim of the ‘306 patent.

15. Under the circumstances, there exists a clear, substantial and continuing threat to

Adaptive’s business as long as the current controversy remains unresolved. Accordingly,

Adaptive needs and seeks resolution of the issues raised in this complaint for declaratory relief to

lift the cloud over its business. On at least such basis, Adaptive is entitled to declaratory relief.

16. Adaptive denies that it now infringes or in the past has infringed, either directly,

indirectly, literally, or under the doctrine of equivalents, any claim of the ‘306 patent.

FACTS RELATING TO NON-INFRINGEMENT

17. The ‘306 patent contains 2 claims, both directed to an “improved aiming method

for a long barrel firearm.” See, Exhibit A, claims 1-2.

18. The claimed method comprises a step (a) of providing various structures relating

to a firearm support and steps (b)-(e) that require various actions by the user of the firearm.


19. It is unquestionable that a patented method is not infringed “unless all the steps

are carried out.” See, Limelight Networks, Inc. v. Akamai Technologies, Inc., 572 U.S. ___, 134

S. Ct. 2111, 2117 (2014); see also, Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S.

336, 344 (1961) (a “patent covers only the totality of the elements in the claim and ... no element,

separately viewed, is within the grant”).

20. Furthermore, the U.S. Court of Appeals for the Federal Circuit has held that

“where the actions of multiple parties combine to perform every step of a claimed method, the

claim is directly infringed only if one party exercises ‘control or direction’ over the entire

process such that every step is attributable to the controlling party, i.e., the ‘mastermind.’”

Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1329 (2008) (internal citations omitted). In

addition, a “mere ‘arms-length cooperation’ will not give rise to direct infringement by any

party.” Id. (internal citations omitted).

21. Likewise, there can be no induced infringement under 35 U.S.C. § 271(b) when

“the performance of all the patent’s steps is not attributable to any one person ... [a]nd, … where

there has been no direct infringement, there can be no inducement of infringement.” See,

Limelight, 134 S. Ct at 2117.

22. On its face, Adaptive does not perform at least steps (b)-(e) of ‘306 patent claims

1 and 2.1

23. Any person that would potentially perform steps (b)-(e) of ‘306 patent claims 1-2

is “the shooter” of the firearm over whom Adaptive would only have, at best, an “arms-length”

1 Adaptive maintains that it also does not perform all the required “providing” steps listed in

step (a) of the ‘306 patent claim 1 and reserves its right to articulate that further basis for non-infringement.


cooperative relationship that does not give rise to direct infringement as a matter of law under

Muniauction and Limelight.

24. Accordingly, Adaptive seeks a declaratory judgment that it does not now infringe,

nor in the past has infringed, either directly, indirectly, literally, or under the doctrine of

equivalents, any claim of the ‘306 patent.

FIRST CLAIM FOR RELIEF (Declaratory Judgment of Patent Non-Infringement)

25. Adaptive re-alleges and incorporates by reference, as though fully incorporated

herein, the allegations contained in paragraphs 1-24 inclusive.

26. Neither Adaptive, nor its products, including but not limited to the TacTRED™

Monopod, directly infringe, contributorily infringe, or actively induce others to infringe, either

literally or under the doctrine of equivalents, any claim of the ‘306 patent.

27. Adaptive is entitled to a declaratory judgment by the Court that it, and its

products, including but not limited to the TacTRED™ Monopod, have not and do not infringe

any claims of the ‘306 patent.

DEMAND FOR JURY TRIAL

Plaintiff hereby demands a trial by jury on all issues so triable pursuant to Federal Rule of

Civil Procedure 38, and will not stipulate to a jury of less than twelve (12) jurors.

PRAYER FOR RELIEF

WHEREFORE, Adaptive prays for entry of judgment, as follows:

1. That judgment be entered in favor of Adaptive on all claims for relief raised in the

Complaint;


2. For a declaratory judgment by the Court that Adaptive, and its products, including

but not limited to the TacTRED™ Monopod, have not and do not infringe any claims of the ‘306

patent;

3. For a declaration, as warranted, that this is an exceptional case under 35 U.S.C. §

285;

4. For an award to Adaptive of its attorneys’ fees and expenses in this action;

5. That judgment and order be entered awarding to Adaptive all other relief to which

Adaptive may prove itself to be entitled; and

6. For such other and further relief as the Court deems just and proper.

DATED THIS 3rd day of July, 2014.

PARSONS BEHLE & LATIMER

By /s/ Christopher Cuneo Christopher Cuneo Attorneys for Plaintiff Adaptive Tactical, LLC

Documents

Adaptive Tactical v. Lickteig