DCT
3:25-cv-01427
Johnson v. CHIAPPA Firearms USA Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Steve Johnson (Tennessee)
- Defendant: Chiappa Firearms, USA, LTD. (Ohio) and Chiappa Firearms, S.r.i. (Italy)
- Plaintiff’s Counsel: Murthy Patent Law Inc.
- Case Identification: Johnson v. Chiappa Firearms, USA, LTD., 5:25-cv-01427, N.D. Cal., 02/11/2025
- Venue Allegations: Venue is asserted based on allegations that Defendants committed acts of direct infringement in the district, including by using the accused products in connection with providing services to customers.
- Core Dispute: Plaintiff alleges that Defendants’ "Charles Daly" brand triple-barrel shotguns infringe a patent related to the design and mechanism of such firearms, and further alleges breach of a prior license agreement and copyright infringement.
- Technical Context: The technology concerns the mechanical design of break-action shotguns, specifically a configuration using three barrels to increase shell capacity while aiming to retain the reliability of simpler designs.
- Key Procedural History: The complaint alleges that the parties entered into a license agreement for the patent-in-suit on July 1, 2020. The dispute appears to stem from alleged sales activity and a disagreement over royalty payments for products sold or offered for sale near the patent's expiration date.
Case Timeline
| Date | Event |
|---|---|
| 2004-04-26 | Priority Date for U.S. Patent No. 6,935,063 |
| 2005-08-30 | U.S. Patent No. 6,935,063 Issues |
| 2020-07-01 | Plaintiff and Defendant Chiappa USA allegedly sign license agreement |
| 2024-01-20 | Defendants allegedly sell infringing products at Las Vegas Shot Show |
| 2024-04-26 | U.S. Patent No. 6,935,063 expires |
| 2025-02-11 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,935,063 - "Triple-Barrel Shotgun" (Issued Aug. 30, 2005)
The Invention Explained
- Problem Addressed: The patent's background section identifies the "diminished shell capacity" of traditional one- and two-barrel break-down shotguns as a disadvantage compared to pump-action or automatic shotguns, which themselves are often legally limited to three shells for hunting (U.S. Patent No. 6935063, col. 1:26-34). The goal was to provide a three-shot capacity gun with the mechanical simplicity and reliability of a break-down action, which is less prone to jamming (U.S. Patent No. 6,935,063, col. 1:20-25).
- The Patented Solution: The invention is a break-down shotgun that incorporates three barrels in a novel arrangement that combines features of "over and under and side by side double barrels into one gun" (’063 Patent, col. 2:45-48). The design specifies a triangular barrel configuration with one top barrel resting centrally on two bottom barrels, along with the associated firing and ejection mechanisms needed to operate a three-barrel system (’063 Patent, Abstract; Fig. 3).
- Technical Importance: This design sought to offer hunters a firearm that complied with three-shell hunting regulations while providing the recognized reliability and low maintenance advantages of a break-down action over more complex pump or semi-automatic alternatives (’063 Patent, col. 2:48-51).
Key Claims at a Glance
- The complaint identifies independent claim 1 as an asserted claim (Compl. ¶22).
- Essential elements of independent claim 1 include:
- A break down shotgun
- A stock
- Three barrels supported by the stock
- A firing mechanism supported by the stock
- A specific barrel arrangement: "in a triangular form pointing upward, having two bottom barrels side by side and one top barrel resting on top of said two bottom barrels and centrally located between said two bottom barrels"
- A shell elector and arm assembly for ejecting shells
- A firing mechanism with "three sears and three hammers and at least one trigger"
- Hammers that "can move in a forward motion to engage a firing pin"
- A "barrel selector and safety trigger locking mechanism"
- "interchangeable choke tubes received by said three barrels"
III. The Accused Instrumentality
Product Identification
- The accused products are "triple barrel shotguns" sold under the "Charles Daly" trademark (Compl. ¶¶23-24).
Functionality and Market Context
- The complaint alleges these are infringing firearms sold and offered for sale by Defendants (Compl. ¶23). The complaint includes a screenshot from the Charles Daly website depicting a category of triple-barrel shotguns, which form the basis of the infringement allegations (Compl. ¶25; Ex. 7). The complaint alleges these products are sold online, in person, and were displayed and sold at a trade show in Las Vegas (Compl. ¶¶26, 34).
IV. Analysis of Infringement Allegations
The complaint asserts that a formal claim chart is unnecessary due to the parties' prior license agreement (Compl. ¶37). The following chart is constructed based on the narrative allegations matching asserted Claim 1 to the accused Charles Daly products.
’063 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A break down shotgun, comprising: a stock, three barrels supported by said stock... | Defendants make, use, and sell "triple barrel shotguns" under the Charles Daly brand. | ¶¶23, 25 | col. 6:1-4 |
| wherein said three barrels are arranged in a triangular form pointing upward, having two bottom barrels side by side and one top barrel resting on top of said two bottom barrels and centrally located between said two bottom barrels, | The complaint alleges this specific arrangement discloses the "inventive concept" and accuses products shown on Defendant's website. A screenshot shows a shotgun with this apparent configuration. (Compl. Ex. 7). | ¶22 (p.6), ¶25 | col. 6:8-13 |
| said shot gun further including: a shell elector and arm assembly, supported by said stock, for electing three shotgun shells from said three barrels, | The complaint does not provide specific detail for analysis of the accused product's shell ejector mechanism. | N/A | col. 6:14-16 |
| wherein said firing mechanism includes three sears and three hammers and at least one trigger, | The complaint does not provide specific detail for analysis of the accused product's internal firing mechanism. | N/A | col. 6:17-18 |
| further including a barrel selector and safety trigger locking mechanism supported by said stock, and | The complaint does not provide specific detail for analysis of the accused product's barrel selector or safety mechanism. | N/A | col. 6:20-22 |
| further including interchangeable choke tubes received by said three barrels. | The complaint alleges that Defendant "deliberately removed parts called 'screen in chokes' so as to avoid patent infringement," which suggests the underlying product is designed to receive them. | ¶32 | col. 6:23-24 |
- Identified Points of Contention:
- Scope Questions: A central question will be whether the dispute is governed by the prior license agreement (a contract issue) or by patent law principles of infringement. The complaint alleges that Defendants' sales activities constitute infringement because royalties were not paid (Compl. ¶27).
- Technical Questions: The complaint provides very little technical detail about the internal workings of the accused Charles Daly shotguns. A key evidentiary question will be whether the accused products contain the specific mechanisms recited in the claim, such as a "shell elector and arm assembly" and a firing mechanism with "three sears and three hammers," as the complaint does not contain allegations on these points.
V. Key Claim Terms for Construction
- The Term: "a shell elector and arm assembly...for electing three shotgun shells from said three barrels"
- Context and Importance: This term defines a key functional component of the patented shotgun. Proving infringement will require the Plaintiff to show that the accused products contain a structure that meets this limitation. Practitioners may focus on this term because the complaint is silent on the specific ejector mechanism used in the Charles Daly shotguns, making it a likely area of dispute during discovery and claim construction.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language "for electing" could be argued to cover any mechanism that performs the function of extracting spent shells from the three barrels, regardless of its specific structure.
- Evidence for a Narrower Interpretation: The specification describes a particular embodiment in detail, including "shell ejection arms 41a and 41b" that are "rimmed to allow all three shot shells to be ejected" and pivot on a rod (U.S. Patent No. 6,935,063, col. 4:51-56; Figs. 5-7). A defendant may argue the term should be limited to the structures disclosed or their equivalents.
VI. Other Allegations
- Indirect Infringement: The complaint makes conclusory allegations of inducement and contributory infringement "through their sales, offers for sale, and use of the Accused Products" (Compl. ¶37). It does not, however, plead specific facts showing an intent to encourage infringement by third parties, such as by citing user manuals or advertisements that instruct on an infringing use.
- Willful Infringement: The complaint alleges willful infringement based on Defendants' alleged actual knowledge of the ’063 patent. This knowledge is purportedly established by the existence of a license agreement between Plaintiff and Chiappa USA dated July 1, 2020 (Compl. ¶19, ¶39). The allegation is that Defendants continued to infringe after having notice of the patent via this agreement.
VII. Analyst’s Conclusion: Key Questions for the Case
This case presents a hybrid patent and contract dispute. The resolution will likely depend on the answers to several key questions:
A primary issue is one of legal framework: Does the parties’ conduct fall under the terms of the now-disputed license agreement, making this primarily a breach of contract case, or does it constitute patent infringement? The complaint appears to plead these theories in the alternative.
A critical evidentiary question will be one of technical proof: Can the Plaintiff demonstrate that the accused "Charles Daly" shotguns practice every element of the asserted claim, particularly the internal "shell elector and arm assembly" and "firing mechanism," for which the complaint provides no specific factual allegations?
A third question relates to damages and willfulness: If infringement is found, the existence of a prior license agreement will be central to the willfulness analysis, as it strongly suggests pre-suit knowledge of the patent.