DCT

5:25-cv-01427

Johnson v. CHIAPPA Firearms USA Ltd

Log In

I. Executive Summary and Procedural Information

  • Case Name: Steve Johnson v. Chiappa Firearms, USA, LTD. and Chiappa Firearms, S.r.i.
  • Parties & Counsel:
  • Case Identification: 5:25-cv-01427, N.D. Cal., 02/11/2025
  • Venue Allegations: Venue is alleged based on Defendants having committed acts of 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 specific design and mechanism of a three-barreled firearm.
  • Technical Context: The technology relates to multi-barrel firearms, specifically break-action shotguns, a market segment where shell capacity and mechanical reliability are key features.
  • Key Procedural History: The complaint alleges that Defendants had actual knowledge of the patent-in-suit at least as of July 1, 2020, due to a license agreement between Plaintiff and Chiappa USA. The dispute appears to have arisen from Defendants’ alleged sales of infringing products and subsequent failure to pay royalties under that agreement, which Plaintiff alleges was deliberately broken.

Case Timeline

Date Event
2004-04-26 Priority Date for U.S. Patent No. 6,935,063
2005-08-30 Issue Date for U.S. Patent No. 6,935,063
2020-07-01 Chiappa USA signs license agreement with Plaintiff for the '063 Patent
2024-01-20 Defendants allegedly sold infringing products at Shot Show
2025-02-11 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 6,935,063 - "Triple-Barrel Shotgun"

The Invention Explained

  • Problem Addressed: The patent’s background section identifies the "diminished shell capacity" of traditional two-barrel break-down shotguns as their "main disadvantage" compared to pump or automatic shotguns, especially since hunting laws often limit capacity to three shells ('063 Patent, col. 1:26-34).
  • The Patented Solution: The invention is a break-down shotgun that incorporates three barrels, thereby matching the legally-mandated three-shot capacity for activities like waterfowl hunting while retaining the simple, reliable mechanics of a break-down design ('063 Patent, Abstract). The design combines features of both "over and under and side by side double barrels into one gun" by arranging the barrels in a specific triangular formation ('063 Patent, col. 2:45-48).
  • Technical Importance: The design aims to provide sportsmen with a firearm that offers a three-shot capability without the risk of jamming associated with pump and automatic actions ('063 Patent, col. 1:19-25, Abstract).

Key Claims at a Glance

  • The complaint asserts independent Claim 1 ('063 Patent, col. 6:1-24; Compl. ¶22).
  • The essential elements of Claim 1 are:
    • A break down shotgun comprising: a stock,
    • three barrels supported by said stock, wherein said three barrels receive three shotgun shells,
    • a firing mechanism supported by said stock for firing the three shotgun shells,
    • 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,
    • a shell elector and arm assembly, for electing three shotgun shells from said three barrels,
    • wherein said firing mechanism includes three sears and three hammers and at least one trigger,
    • wherein said hammers can move in a forward motion to engage a firing pin for a selected barrel,
    • a barrel selector and safety trigger locking mechanism, and
    • interchangeable choke tubes received by said three barrels.
  • The complaint alleges infringement of "each Asserted Claim," which it identifies as Claim 1, but this phrasing may suggest an intent to reserve rights to assert other claims (Compl. ¶23, 36).

III. The Accused Instrumentality

Product Identification

The accused products are "triple barrel shotguns" sold under the "Charles Daly" trademark, which the complaint alleges is owned by Defendants (Compl. ¶23, 24).

Functionality and Market Context

The complaint alleges Defendants are making, using, selling, and offering for sale these triple-barrel shotguns through their websites and at trade shows (Compl. ¶23, 26). The complaint includes a screenshot from the charlesdaly.com website depicting various triple-barrel shotgun models, which serves as a visual representation of the accused products (Compl. ¶25, Ex. 7). A second screenshot from the same website is alleged to show products where Defendants "deliberately removed parts called 'screen in chokes' so as to avoid patent infringement" (Compl. ¶32, Ex. 9). The complaint alleges these products are sold within the United States (Compl. ¶23).

IV. Analysis of Infringement Allegations

The complaint does not provide a claim chart, stating, "There is no need for a claim chart because Plaintiff and Chiappa USA had a license regarding the '063 patent, and Chiappa USA has deliberately broken that license" (Compl. ¶37). The infringement theory is therefore premised on the assertion that the accused "Charles Daly" products are the same as, or functionally equivalent to, the products previously covered by the license agreement. The complaint reproduces the text of Claim 1 and then makes a general allegation that Defendants' accused products directly infringe it (Compl. ¶22, 23, 36). Infringement under the doctrine of equivalents is also alleged (Compl. ¶38).

  • Identified Points of Contention:
    • Contractual vs. Technical Dispute: The complaint’s reliance on the prior license agreement raises the question of whether the primary dispute is a contractual matter concerning the scope and breach of that license, rather than a technical patent infringement analysis.
    • Technical Questions: A key question is whether the accused "Charles Daly" shotguns, as depicted on the Charles Daly website (Compl. ¶25, Ex. 7), practice every element of Claim 1. This includes the specific upward-pointing triangular barrel arrangement, the internal firing mechanism with three sears and hammers, the barrel selector, and the use of interchangeable choke tubes. The complaint's allegation that Defendants removed "'screen in chokes'" (Compl. ¶32) points to the "interchangeable choke tubes" limitation as a potential area of dispute.

V. Key Claim Terms for Construction

  • The Term: "arranged in a triangular form pointing upward"
  • Context and Importance: This term defines the specific geometric configuration of the barrels, which the complaint identifies as disclosing the "inventive concept of the ‘063 patent" (Compl. p. 6:8-11). The infringement analysis will depend on whether the accused products embody this exact spatial relationship. Practitioners may focus on this term because any deviation in the accused product's barrel layout could be a basis for a non-infringement argument.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification discloses that "the three barrels could be arranged in a vertical line or in an inverted triangular arrangement" ('063 Patent, col. 4:41-43). This language may be used to argue that the "triangular form" should not be strictly limited to the "pointing upward" embodiment described in the claim.
    • Evidence for a Narrower Interpretation: The claim language itself is highly specific, reciting not just a "triangular form" but one that is "pointing upward, having two bottom barrels side by side and one top barrel resting on top of said two bottom barrels." Figure 3 graphically depicts this exact configuration ('063 Patent, Fig. 3). An argument could be made that the claim is expressly limited to this specific orientation.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement and contributory infringement "through their sales, offers for sale, and use of the Accused Products" (Compl. ¶37). The factual support for the requisite intent is tied to the existence of the prior license agreement.
  • Willful Infringement: The complaint alleges willfulness based on Defendants' alleged actual knowledge of the '063 Patent. This knowledge is asserted to stem from the July 1, 2020 license agreement signed between Plaintiff and Chiappa USA, which predates the infringing activity alleged in the complaint (Compl. ¶19, 39).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A primary issue will be the interplay between contract and patent law: will the case be driven by a technical infringement analysis, or will it center on the terms of the prior license agreement and whether the accused products are the same as those formerly licensed? The complaint’s assertion that "There is no need for a claim chart" (Compl. ¶37) suggests Plaintiff may seek to frame the dispute primarily around the alleged breach of the license.
  • A key evidentiary question will concern structural identity: do the accused Charles Daly triple-barrel shotguns contain every element recited in Claim 1, particularly the specific "triangular form pointing upward" barrel arrangement and the "interchangeable choke tubes"? The allegation that Defendants removed certain components to avoid infringement (Compl. ¶32) suggests this will be a central point of technical contention.
  • A third critical question relates to willfulness: does the prior license agreement establish pre-suit knowledge sufficient to support a finding of willful infringement, potentially leading to enhanced damages if infringement is found? The existence of a formal, signed license is a significant fact supporting the allegation of knowledge.