IN THE UNITED STATES DISTRICT COURT 

FOR THE DISTRICT OF OREGON 

TANNERITE SPORTS, LLC and 

DANIEL TANNER, 

Plaintiffs, 

vs. 

JERENT ENTERPRISES, LLC, dba 

SONIC BOOM EXPLODING TARGETS, 

Defendant. 

Andrea'D. Coit 

Ha~rang Long Gary Rudnick, PC 

360 East 10th Avenue, Suite 300 

Eugene, OR 97401 

Kevin M. Drucker (pro hac vice) 

David L. Cargille (pro hac vice) 

Mendelsohn, Drucker, & Dunleavy, PC 

1500 John F. Kennedy Blvd., Suite 312 

Philadelphia, PA 19102 

Attorneys for Plaintiffs 

Page 1 - OPINION AND ORDER 

Case No. 6:15-cv-180-AA 

OPINION AND ORDER 

Case 6:15-cv-00180-AA Document 54 Filed 12/18/15 Page 1 of 5
Joshua M. Wolf 

Wolf Legal, LLC 

17390 SW Rose Petal Lane #206 

Beaverton, OR 97003 

Michael T. Hilgers (pro hac vice) 

Gober Hilgers, PLLC 

14301 FNB Parkway, Suite 100 

Omaha, NE 68154 

Attorneys for Defendant 

AIKEN, Chief Judge: 

Defendant Jerent Enterprises, LLC, dba Sonic Boom Exploding 

Targets moves for leave to file its Second Amended Answer and 

Counterclaims pursuant to Fed. R. Ci v. P. 15 and this Court's 

October 6, 2015 Order. Defendant's motion is GRANTED. 

BACKGROUND 

Plaintiffs Tanneri te Sports, LLC and Daniel Tanner filed a 

complaint against defendant alleging patent infringement of its 

Tannerite® brand binary targets under the Patent Act, 35 U.S.C. § 

271. Plaintiff Daniel Tanner is the patent holder of binary 

exploding rifle targets used for long-range shooting practice. These 

targets are safe and legal to ship and store because they are 

packaged to keep the oxidizer separate from the catalyst, thus 

preventing the target from exploding until mixed. Plaintiffs allege 

that defendant continues to willfully and deliberately commit direct 

infringement, inducement of direct infringement by its customers and 

end users, and contributory infringement of at least claim 25 of 

U.S. Patent No. RE44,386 ("the '386 patent") through its 

manufacture, use, sale, and offering for sale of nearly identical 

binary exploding rifle targets marketed under the "Sonic Boom" brand 

name. Plaintiff further alleges that defendant infringed U.S. Patent 

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Case 6:15-cv-00180-AA Document 54 Filed 12/18/15 Page 2 of 5
No. RE44,440 ("the '440 patent") in the same manner summarized 

above. 

In its Amended Answer, defendant alleged the following three 

counterclaims: (1) defendant has not directly or indirectly 

infringed, and is not continuing to directly or indirectly infringe, 

the '386 or '440 patent; (2) some or all of the claims of the '386 

and '440 patents are invalid; and (3) plaintiffs have engaged in 

inequitable conduct rendering the '386 and '440 patent claims 

invalid and unenforceable. 

On August 10, 2015, plaintiffs filed a motion to dismiss 

defendant's three counterclaims. Plaintiffs' motion was granted in 

part and denied in part, and defendant granted twenty days to 

request leave to amend its counterclaims and to provide a copy of 

the proposed amendments to the Court (doc. 41). 

On October 26, 2015, defendant timely moved for leave to file 

its Second Amended Answer and Counterclaims and attached the 

proposed amendments to the motion. 

STANDARD OF REVIEW 

Fed. R. Civ. P. 15 governs amended and supplemental pleadings. 

With regard to amended pleadings, Rule 15 expressly states "[t]he 

court should freely give leave when justice so requires." Fed. R. 

Civ. P. 15 (a) (2). Further, district courts apply Rule 15 with 

"extreme liberality". Eminence Capital, LLC v. Aspeon, Inc., 316 

F.3d 1048, 1051 (9th Cir. 2003). Nonetheless, district courts 

consider several factors when determining whether to allow a motion 

to amend, including bad faith, undue delay, prejudice to the 

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Case 6:15-cv-00180-AA Document 54 Filed 12/18/15 Page 3 of 5
opposing party, futility of the amendments, and whether previous 

amendments have been allowed. Foman v. Davis, 371 U.S. 178, 182 

(1962); U.S. v. Corinthian Colls., 655 F.3d 984, 995 (9th Cir. 

2011) . Of these five factors, prejudice to the opposing party is 

afforded the greatest weight. Eminence Capital, 316 F.3d at 1052. 

DISCUSSION 

The issue before the Court is whether allowing defendant to 

file its amended counterclaims would cause prejudice to plaintiffs, 

undue delay, or would be futile. The Court finds no evidence of 

prejudice or undue delay given that the amended counterclaims are 

brought within the time allotted by the Court and the parties are 

in the early stages of discovery. Additionally, there is no evidence 

defendant's amendments were made in bad faith; rather, they were 

alleged pursuant to the October 6, 2015 Order. 

Furthermore, the Court is not persuaded by plaintiffs' argument 

that defendant's request for leave to amend should be denied because 

defendant's proposed amendments are futile. Defendant's proposed 

amended counterclaims and briefing filed in support of the motion 

contain specific allegations with additional facts and exhibits 

supporting the proposed amendments. Thus, the Court finds allowing 

defendant to file its amended counterclaims will not be futile and 

therefore grants leave to file the proposed amendments. Eminence 

Capital, 316 F.3d at 1052 (absent prejudice or a strong showing of 

the remaining factors, leave to amend shall be granted). 

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CONCLUSION 

For the reasons set forth above, defendant's motion for leave 

to file its Second Amended Answer and Counterclaims (doc. 45) is 

GRANTED. 

IT IS SO ORDERED. 

Dated this _/_£day of December 2015. 

Ann Aiken 

United States District Judge 

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