SIG SAUER INC. v. Springfield, Inc. d/b/a Springfield Armory

Filing 36

ORDER Entered by Magistrate Judge Jonathan E. Hawley on 11/17/2021 denying 30 Motion to Amend/Correct; finding as moot 23 Motion for Judgment on the Pleadings. See Written Order. (ANW)

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E-FILED

Thursday, 18 November, 2021 08:36:17 AM
Clerk, U.S. District Court, ILCD

IN THE
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF ILLINOIS
ROCK ISLAND DIVISION
SIG SAUER INC.,
Plaintiff/Counterclaim
Defendant,

Case No. 4:21-cv-04085-SLD-JEH

v.
SPRINGFIELD, INC., d/b/a
SPRINGFIELD ARMORY,
Defendant/Counterclaim
Plaintiff.
Order

Now before the Court is the Defendant/Counterclaim Plaintiff Springfield,
Inc., d/b/a Springfield Armory’s Motion to Amend Counterclaims (Doc. 30), the
Plaintiff/Counterclaim Defendant Sig Sauer Inc.’s Opposition to Springfield
Armory’s

Motion

to

Amend

its

Pleadings

(Doc.

33),

and

the

Defendant/Counterclaim Plaintiff’s Reply (Doc. 35). For the reasons set forth
below, the Defendant’s Motion is DENIED.
I
On May 10, 2021, the Plaintiff, a firearms manufacturer, filed its Complaint
(Doc. 1) against Defendant Springfield, Inc. alleging two counts of patent
infringement. Specifically, the Plaintiff alleged the Defendant has made, used,
sold, and offered for sale certain firearm magazines which directly, jointly,
indirectly, and/or willfully infringe one or more claims in Sig Sauer U.S. Patent
Nos. 10,480,880 (880 Patent) and 10,962,315 (315 Patent). On July 6, 2021, the
Defendant

filed

its

Answer

to

Complaint,
1

Affirmative

Defenses

and

4:21-cv-04085-SLD-JEH # 36

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Counterclaims (Doc. 14). The Defendant counterclaimed for declaratory relief
regarding non-infringement (Count I) and declaratory relief regarding invalidity
(Count II). On August 16, 2021, the Plaintiff filed a Motion for Judgment on the
Pleadings (Doc. 23) seeking a judgment dismissing and/or striking the
Defendant’s affirmative defenses and counterclaims. The Defendant thereafter
filed its First Amended Answer to Complaint, Affirmative Defenses and
Counterclaims (Doc. 28) which again included one counterclaim for declaratory
relief regarding non-infringement and a second counterclaim for declaratory relief
regarding invalidity.
On August 18, 2021, the Court adopted the Revised Discovery Plan Schedule
(Doc. 24) which included a deadline of January 24, 2022 to “[a]mend pleadings as
of [r]ight” and to “[j]oin additional parties without leave of court.” (Doc. 24 at pg.
1).

On October 8, 2021, the Defendant filed the instant Motion to Amend

Counterclaims to assert a patent infringement claim. The Plaintiff states that just
recently, on September 28, 2021, it was granted U.S. Patent No. 11,131,525 (525
Patent). In its proposed Second Amended Answer to Complaint, Affirmative
Defenses and Counterclaims, the Defendant alleges that upon information and
belief, the Plaintiff makes, uses, imports, sells, or offers for sale three firearms
assemblies that infringe one or more claims of the 525 Patent.
II
Federal Rule of Civil Procedure 15(a)(2) provides in relevant part that the
Court should freely give leave to a party to amend its pleading “when justice so
requires.” FED. R. CIV. P. 15(a)(2). However, leave to amend may be denied
where there is undue delay, bad faith on the movant’s part, repeated failure to cure
deficiencies by amendments previously allowed, undue prejudice to the opposing
party if the amendment is allowed, or futility. Bausch v. Stryker Corp., 630 F.3d 546,
562 (7th Cir. 2010) (citations omitted).
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The Plaintiff argues that adding an unrelated patent dispute would cause
undue prejudice as: there are no overlapping facts or issues between the dispute
set forth in its Complaint and the Defendant’s new patent claim; allowing the
amendment would double the expense, complexity, and length of trial in this case,
and trying two different patent disputes concerning unrelated technologies would
be more likely to confuse a jury than focusing on a single dispute. The Defendant,
on the other hand, argues that both patent infringement claims require
overlapping presentations of information on how firearms are constructed and
operate, how the businesses operate and sales are made, the commercial
relationship between the parties, and customary and comparable profits and
licensing practices bearing on damages issues such that resolving all claims
between the parties in one proceeding is more economical. The Court agrees with
the Plaintiff. The Complaint and proposed counterclaim share just two things in
common: the parties and claims of patent infringement. Whereas the Plaintiff’s
880 Patent and 315 Patent “are directed to ammunition magazine technology” and
which are alleged to have been infringed based upon Springfield, Inc.’s use and
sale of certain pistol magazines, the Defendant’s 525 Patent “concerns free-floating
handguards which attach to rifle or rifle-style barrels.” (Doc. 33 at pgs. 4-5). 1
In contrast to the instant case, in IXYS Corp. v. Advanced Power Tech., Inc., the
defendant/counterclaimant sought leave to amend to add a counterclaim for
infringement of a patent that was the parent of the patent of which the defendant
had already counterclaimed for infringement. 2004 U.S. Dist. LEXIS 804, at *1, 9
(N.D. Cal. Jan. 22, 2004).

The IXYS Corp. court thus rejected the plaintiff’s

argument that the proposed amendment would present a new legal theory such
that it would cause a “radical shift in direction” where the parent patent

1

The Defendant does not challenge the Plaintiff’s summary description of the parties’ respective patents.

3

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“describe[d] correspondingly similar technology; the majority of the claim terms
in question in the [parent] patent [were] repeated in” the patent already at issue in
the case. Id. at *9. In 01 Communique Lab., Inc. v. Citrix Sys., the plaintiff sought to
amend its complaint for patent infringement to include allegations that an
additional one of the defendant’s products infringed upon the plaintiff’s patent.
2014 U.S. Dist. LEXIS 75367, at *15 (N.D. Ohio June 3, 2014). The 01 Communique
Lab., Inc. court concluded that “substantial considerations of judicial economy and
efficiency” compelled it to permit the amendment where the amendment did not
add any new parties, “nor [did] it identify new patents with additional claims that
would need to be construed. Rather, the amendment involve[d] the same patent and
similar technology.” Id. at *25-26. (emphasis added).
While the Defendant here does not state with specificity the extent of
overlap that may exist in this case, the extent of overlap between the existing and
proposed patent infringement claims in the Defendant’s cited cases was
abundantly clear. In fact, here, the Plaintiff already detailed an instance where
overlap is lacking:

the Sig Sauer handguards (the subject of the proposed

counterclaim) were designed by an entirely different research and development
team than those who designed and invented the pistol magazines (the subject of
the Complaint). (Doc. 33 at pg. 11). Thus, the Court is not convinced that allowing
amendment would promote judicial economy in this case.
The Defendant also disputes that the expanded scope of the case, should the
amendment be allowed, would prejudice the Plaintiff; the Defendant says the
burden of defending against an infringement claim cannot, in and of itself, be
considered prejudicial and pursuing parallel cases would be more costly.
However, it certainly seems fair to consider the increased cost of expanded
litigation as prejudicial to the Plaintiff where the expanded litigation would not
necessarily guarantee a more efficient use of everyone’s time and resources.
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Lastly, the Court agrees with the Defendant that juries in this district are
competent to handle a patent infringement dispute. But that does not mean that
the Court should ignore the reality that presenting two different patent disputes
to a single jury is simply more likely to confuse and/or mislead a jury than would
presenting one dispute. Bifurcation for trial would not remedy the inefficiencies
that would occur in the pre-trial phase of the case and could very well cause
additional time and expense. See FED. R. CIV. P. 42(b) (“For convenience, to avoid
prejudice, or to expedite and economize, the court may order a separate trial of one
or more separate issues, claims, crossclaims, counterclaims, or third-party claims .
. . .”) (emphasis added).
Because the Defendant’s Motion to Amend is denied, it is unnecessary to
consider the Plaintiff’s alternative request to grant the Motion, sever the new
patent counterclaim, and transfer the counterclaim to the District of New
Hampshire.
III
For the reasons set forth above, the Defendant/Counterclaim Plaintiff’s
Motion to Amend Counterclaims (Doc. 30) is DENIED. The Clerk is directed to
MOOT the Plaintiff/Counterclaim Defendant’s Motion for Judgment on the
Pleadings (Doc. 23) as the Defendant has since filed its First Amended Answer to
Complaint, Affirmative Defenses and Counterclaims (Doc. 28). See Civil LR 7.1(E).
It is so ordered.
Entered on November 17, 2021.
s/Jonathan E. Hawley
U.S. MAGISTRATE JUDGE

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