DCT
3:18-cv-01270
Lemoine v. Mossberg Corp
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Eric Lemoine and TTC Performance Products, Inc., d/b/a Black Aces Tactical (Florida)
- Defendant: Mossberg Corporation (Delaware) and O.F. Mossberg & Sons, Inc. (Connecticut)
- Plaintiff’s Counsel: Louis R. Gigliotti, PA
- Case Identification: 3:18-cv-01270, S.D. Fla., 04/20/2018
- Venue Allegations: Plaintiff alleges venue is proper in the Southern District of Florida because Defendant has conducted acts in the district and a substantial part of the events giving rise to the claim occurred there.
- Core Dispute: Plaintiff alleges that Defendant’s Mossberg 590M model shotgun, which utilizes a detachable box magazine, infringes a patent on a shotgun magazine receiver assembly.
- Technical Context: The technology concerns retrofitting conventional pump-action or semi-automatic shotguns, which typically use a fixed tubular magazine, to accept a detachable box-style magazine for faster reloading.
- Key Procedural History: The complaint details extensive pre-litigation history between the parties, beginning in 2013, which included meetings, shipment of Plaintiff's patent-pending product samples to Defendant for evaluation, and discussions regarding a potential OEM or licensing deal. These allegations form the basis of the willful infringement claim.
Case Timeline
| Date | Event |
|---|---|
| 2013-01-08 | U.S. Patent No. 8,756,846 Priority Date |
| 2013-02-XX | Parties meet at Acusport business conference |
| 2013-09-XX | Defendant requests and receives product samples from Plaintiff |
| 2013-10-XX | Parties meet at NASGW trade show in Dallas, TX |
| 2014-06-24 | U.S. Patent No. 8,756,846 Issues |
| 2015-09-XX | Defendant's Chief of Engineering allegedly purchases Plaintiff's patented receivers |
| 2015-10-XX | Parties meet and Plaintiff requests negotiation of a licensing agreement |
| 2018-02-XX | Defendant releases the accused Mossberg 590M shotgun |
| 2018-02-27 | Plaintiff purchases an accused Mossberg 590M shotgun |
| 2018-04-20 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,756,846 - "Shotgun Magazine Receiver Assembly," issued June 24, 2014
The Invention Explained
- Problem Addressed: The patent’s background section identifies the slow, one-at-a-time reloading process for conventional shotguns that use a fixed tubular magazine as a key limitation, especially in police or military applications where reload speed can be critical (’846 Patent, col. 1:13-31, 1:41-44).
- The Patented Solution: The invention is a replacement receiver assembly designed to be retrofitted onto an existing "conventional shotgun" (’846 Patent, col. 2:47-52). This assembly replaces the shotgun's original receiver, bolt, and slide, and includes a magazine opening, or "magwell," on its underside to accept a detachable, box-style magazine, thereby enabling rapid reloading (’846 Patent, col. 4:36-47; Fig. 7). The assembly is designed to mate with the shotgun's original factory components, such as the barrel, trigger group, and stock (’846 Patent, col. 3:31-36).
- Technical Importance: This technology allows a user to modify a standard, widely available shotgun to give it the tactical advantage of a detachable magazine system, a feature more commonly found on modern rifles (’846 Patent, col. 1:38-41).
Key Claims at a Glance
- The complaint asserts infringement of the ’846 Patent generally, without specifying claims (Compl. ¶31). Independent Claim 1 is representative of the core invention.
- Independent Claim 1 recites a shotgun magazine receiver assembly for converting a conventional shotgun, comprising:
- An elongated receiver body with an interior space and channels on its opposing side surfaces.
- At least one connector on the receiver body for mating with a complementary connector on the conventional shotgun.
- A shotgun barrel opening and a trigger assembly opening.
- A magazine opening on the bottom side of the receiver body configured to receive a removable shotgun shell magazine.
- A bolt with a firing pin chamber, an extractor arm recess, and a spring groove.
- A firing pin within the chamber.
- A lock stop opening through the bolt.
- The complaint does not explicitly reserve the right to assert dependent claims, but the general nature of the allegations suggests this possibility.
III. The Accused Instrumentality
Product Identification
- The accused product is the Mossberg Model 590M shotgun (Compl. ¶18).
Functionality and Market Context
- The complaint alleges the Mossberg 590M contains a "shotgun magazine receiver assembly" that infringes the ’846 Patent (Compl. ¶19).
- The core of the infringement allegation is that the accused shotgun is "virtually identical to the design claimed in the ‘846 Patent" (Compl. ¶31). The complaint further alleges that Defendant used Plaintiff's own patented products, provided for evaluation, to "make and design an infringing competitive-shotgun" (Compl. ¶21).
- The complaint positions the accused product as a direct competitor that incorporates Plaintiff's technology to gain an "unfair advantage in the market" (Compl. ¶28).
IV. Analysis of Infringement Allegations
The complaint does not contain a claim chart or detailed infringement contentions. The analysis below maps the elements of Claim 1 to the general allegations made against the Mossberg 590M.
’846 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an elongated receiver body having a front end, a back end, a top surface, a bottom surface, and a pair of opposing side surfaces defining an interior space | The complaint alleges the accused Mossberg 590M shotgun contains a shotgun magazine receiver assembly. | ¶19 | col. 3:42-47 |
| a magazine opening disposed along the bottom side of the receiver body... said magazine opening being configured to receive a removable shotgun shell magazine | The accused Mossberg 590M is a model line defined by its use of a detachable box magazine, which implies the presence of a magazine opening. | ¶18, ¶19 | col. 4:36-41 |
| a bolt having a front end, a rear end, a top surface, a bottom surface and a pair of side walls defining a firing pin chamber | The complaint alleges the accused shotguns are "virtually identical" to the patented design, which includes a specific bolt. | ¶31 | col. 4:51-58 |
| an extractor arm recess located along each side wall of the bolt and adjacent to the front wall; and a spring groove disposed along one of the side walls of the bolt | The complaint's allegation that the accused product is "virtually identical" implies the presence of these specific bolt features. | ¶31 | col. 5:4-11 |
| at least one connector disposed along the receiver body, said at least one connector having a location that is suitable for mating with a complementary connector disposed on the conventional shotgun | The complaint alleges Defendant used Plaintiff's technology for converting a shotgun, which relies on such connectors. | ¶1, ¶21 | col. 3:48-54 |
No probative visual evidence provided in complaint.
- Identified Points of Contention:
- Technical Questions: The primary question is factual: does the Mossberg 590M receiver assembly, particularly its bolt, contain every structural limitation recited in Claim 1? The complaint’s allegation of the products being “virtually identical” (Compl. ¶31) will require element-by-element proof, especially for specific, detailed features like the "extractor arm recess" and "spring groove" on the bolt.
- Scope Questions: A potential dispute may arise over the claim preamble language "for converting a conventional shotgun." Defendant may argue that the 590M is a new firearm, not a "conversion" of a "conventional shotgun" as contemplated by the patent, and that the preamble should be treated as a claim limitation.
V. Key Claim Terms for Construction
The Term: "for converting a conventional shotgun" (preamble of Claim 1)
- Context and Importance: This term appears in the preamble of the independent claim. If construed as limiting, it could narrow the scope of the patent to cover only retrofit kits, as opposed to newly manufactured firearms that incorporate similar features. Defendant may argue its 590M is a firearm manufactured from the ground up and therefore does not "convert" anything.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiff may argue the preamble merely states an intended purpose and does not limit the claimed structure, which is a complete receiver assembly. The body of the claim recites a self-contained apparatus without requiring the act of conversion.
- Evidence for a Narrower Interpretation: The patent repeatedly describes the invention as a "retrofit kit for existing shotguns" (’846 Patent, col. 3:1-2) and a device that "can function to replace the traditional receiver" of a "conventional shotgun" (’846 Patent, col. 3:31-36). This language may support an interpretation that the claims are limited to assemblies designed for retrofitting.
The Term: "at least one connector ... suitable for mating with a complementary connector disposed on the conventional shotgun" (Claim 1)
- Context and Importance: This limitation is central to the invention's function as a replacement component for a standard firearm. Infringement will depend on whether the assembly points on the 590M receiver are found to be "connectors" designed to mate with parts from a "conventional shotgun" (e.g., a stock, grip, or trigger group).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiff may argue that any point of attachment (e.g., screw holes, pins) that secures the receiver to other standard shotgun components (like a stock or barrel) meets this limitation, regardless of whether the final product is sold as a kit or a complete firearm.
- Evidence for a Narrower Interpretation: The patent specification shows these connectors as through-holes at specific locations "identical to those found on the stock receiver 4 in which the new receiver body 30 is replacing" (’846 Patent, col. 4:42-46; Fig. 3a). Defendant could argue this limits the term to an assembly that perfectly mirrors the connection points of a pre-existing, specific model of "conventional shotgun."
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced and contributory infringement, stating that Defendant acts "through its dealer network" (Compl. ¶32). The factual basis for how the dealer network specifically induces or contributes to infringement by others is not detailed.
- Willful Infringement: The complaint makes detailed allegations to support willfulness. It claims Defendant had actual knowledge of the technology while it was patent-pending, citing a series of communications, meetings, and product sample evaluations beginning in February 2013 (Compl. ¶20.A-I). The complaint alleges that Plaintiff's patented products were shipped to Defendant for evaluation, and that Defendant's Chief of Engineering purchased several patented receivers (Compl. ¶20.B, 20.G). It further alleges Plaintiff directly requested that Defendant negotiate a license (Compl. ¶20.H). These alleged facts, if proven, would strongly support a finding of pre-suit knowledge and willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A Question of Copying and Equivalence: The case appears to center on the factual allegation that Defendant's 590M receiver is "virtually identical" to the patented assembly. A key evidentiary question will be whether the accused product contains every limitation of the asserted claims, especially the specific geometries of the bolt, or if Defendant's design deviates in a way that avoids infringement.
- The Impact of Pre-Suit History: The extensive history of communication and product evaluation alleged in the complaint will be central to the willfulness claim. The core question for the fact-finder will be whether Defendant's development of the 590M after evaluating Plaintiff's patented samples and declining licensing discussions constitutes the kind of "egregious" conduct that warrants enhanced damages.
- A Definitional Dispute over Scope: The resolution of the case may depend on claim construction, particularly whether the patent is limited to "conversion" kits for "conventional" shotguns. A central legal question will be whether the claims can be read to cover a newly manufactured firearm that incorporates the patented features, or if they are confined to aftermarket retrofit assemblies only.