DCT
1:24-cv-09053
Laser Ammo Ltd v. Partnerships Unincorp Associations
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Laser Ammo, Ltd. (Israel)
- Defendant: The Partnerships and Unincorporated Associations Identified in Schedule "A" (Foreign)
- Plaintiff’s Counsel: Keener & Associates, P.C.
- Case Identification: 1:24-cv-09053, N.D. Ill., 09/27/2024
- Venue Allegations: Venue is predicated on Defendants targeting business activities towards Illinois consumers, including offering shipping to the state, accepting payment in U.S. dollars, and completing sales to Illinois residents, thereby causing tortious injury within the district.
- Core Dispute: Plaintiff alleges that Defendants’ online sales of "Counterfeit Products" infringe four U.S. patents related to dry fire training devices.
- Technical Context: The technology involves laser-emitting cartridges that are inserted into standard firearms to allow for safe, ammunition-free training with real-time visual feedback on shot placement.
- Key Procedural History: The four asserted patents are part of a long-standing continuation family. The complaint is brought against a schedule of currently unknown defendants, a common procedural posture for actions against alleged foreign counterfeiters operating through online marketplaces.
Case Timeline
| Date | Event |
|---|---|
| 2010-01-19 | Priority Date for ’156, ’904, ’394, and ’775 Patents |
| 2014-05-27 | U.S. Patent No. 8,734,156 Issues |
| 2015-10-20 | U.S. Patent No. 9,163,904 Issues |
| 2020-01-01 | U.S. Customs and Border Protection report on counterfeiting cited |
| 2022-08-16 | U.S. Patent No. 11,415,394 Issues |
| 2023-06-20 | U.S. Patent No. 11,680,775 Issues |
| 2024-09-27 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,734,156 - "Dry Fire Training Device"
Issued May 27, 2014
The Invention Explained
- Problem Addressed: The patent describes the drawbacks of live-fire training, including financial cost, safety risks, and location inconvenience, as well as the difficulty of identifying and correcting marksmanship errors like "flinching" due to anticipated recoil (’156 Patent, col. 1:26-45; col. 2:1-11). Traditional dry-fire practice lacks the immediate feedback needed to confirm a "hit" and evaluate performance (’156 Patent, col. 1:30-35).
- The Patented Solution: The invention is a multi-mode, light-emitting cartridge designed to be inserted into a firearm's chamber (’156 Patent, col. 3:21-24). When the user pulls the trigger, the firearm's striker makes mechanical contact with an input device on the cartridge, which activates a control circuit to power a light source, emitting a beam of light down the barrel to indicate the point of aim (’156 Patent, Abstract; col. 4:50-54).
- Technical Importance: The device enables users to practice with their own firearms safely and without ammunition, providing instant visual feedback that was previously unavailable in dry-fire training, thereby helping to improve shooting technique (’156 Patent, col. 1:46-50).
Key Claims at a Glance
- The complaint asserts "all claims" of the patent (’Compl. ¶44). Independent claim 1 is central to the invention.
- Essential elements of independent claim 1 include:
- A multi-mode light emitting drill cartridge for a firearm.
- A light source for generating a first emission of light.
- A first tubular member (a body or casing).
- An input device at the rear end for receiving a mechanical impulse from the firearm's striker.
- A signaling mechanism to transform the kinetic energy of the impulse into data signals.
- A control circuit with an integrated circuit to receive the data signals and transmit control signals to the light source.
- The complaint reserves the right to assert all direct and indirect claims (’Compl. ¶44).
U.S. Patent No. 9,163,904 - "Dry Fire Training Device"
Issued October 20, 2015
The Invention Explained
- Problem Addressed: This patent, a continuation of the '156 patent family, addresses the same fundamental problems of live-fire and dry-fire training (’904 Patent, col. 1:24-44). It implicitly addresses the need for enhanced durability and reliability in a device subjected to the repeated mechanical shock of a firearm's striker.
- The Patented Solution: The invention is a training device with an illuminator, controller, and an actuator activated by the firearm's striker (’904 Patent, Abstract). The patent further discloses specific structural enhancements, including an insulating sleeve to prevent short-circuiting of the power supply and "two spring-like biases" positioned on opposite sides of the power source to ensure a consistent electrical connection is maintained, even when the device is struck (’904 Patent, col. 6:3-24).
- Technical Importance: The claimed invention focuses on improving the internal robustness of the training cartridge, ensuring it can function reliably despite the physical forces involved in dry-firing a real weapon (’904 Patent, col. 6:18-24).
Key Claims at a Glance
- The complaint asserts infringement of "all claims" of the patent (’Compl. ¶44). Independent claim 1 is the broadest claim.
- Essential elements of independent claim 1 include:
- A multifunction dry fire training device insertable into a firearm.
- An illuminator, a controller, an actuator, and a power source.
- A hollow body comprising a first and second casing.
- An insulating sleeve for the power source to prevent contact with the casing.
- Two spring-like biases at opposite sides of the power source to allow movement upon striker impact without disconnecting power.
- The complaint reserves the right to assert all direct and indirect claims (’Compl. ¶44).
U.S. Patent No. 11,415,394 - "Dry Fire Training Device"
Issued August 16, 2022
- Technology Synopsis: Continuing the patent family, the ’394 Patent further refines the actuator assembly. It discloses a device that emits light upon activation by a firearm's trigger, with a particular focus on an actuator comprising a non-metallic striking pad designed to sustain repeated impacts without being pierced and to avoid causing "shot peening" damage to the firearm's striker (’394 Patent, col. 2:62-68, col. 7:36-44).
- Asserted Claims: All claims, including independent claim 1 (’Compl. ¶44).
- Accused Features: The "Counterfeit Products" are alleged to be dry fire training devices that incorporate the patented technology (’Compl. ¶19, ¶44).
U.S. Patent No. 11,680,775 - "Dry Fire Training Device"
Issued June 20, 2023
- Technology Synopsis: The ’775 Patent describes a modular construction for the training device. The invention is detailed as comprising detachable front and rear parts, enabling easier replacement of components like the actuator or power supply, and a retaining pipe assembly with modular extensions to secure the device in firearms with different barrel lengths (’775 Patent, col. 4:51-61; col. 14:45-54).
- Asserted Claims: All claims, including independent claim 1 (’Compl. ¶44).
- Accused Features: The "Counterfeit Products" are alleged to be dry fire training devices that incorporate the patented technology (’Compl. ¶19, ¶44).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are identified as "Counterfeit Products," "Infringing Products," or "Unauthorized Products," which are described as dry fire training devices (’Compl. ¶4, ¶23). The specific products are sold online by the unknown Defendants listed in Schedule A through storefronts on platforms such as Amazon.com, eBay, Temu, and DHGate.com (’Compl. ¶4).
Functionality and Market Context
The complaint alleges the accused products are "similar and substandard copies of Plaintiff's patented products" that are sourced from a common, unknown manufacturer in China (’Compl. ¶9, ¶18, ¶23). While the complaint does not provide a technical description of the accused products' operation, it alleges they infringe the Asserted Patents, implying they are cartridges that insert into a firearm and emit light when the trigger is pulled (’Compl. ¶19, ¶44). The complaint includes a reference to an exhibit showing the webpage of a suspected manufacturer, which it alleges shows the accused product (’Compl. ¶18, Ex. 5).
IV. Analysis of Infringement Allegations
The complaint makes general allegations of infringement without providing an element-by-element mapping of the asserted claims to the features of the accused products. The infringement theory is based on the allegation that Defendants are selling identical "Counterfeit Products" sourced from a single manufacturer that infringe the Asserted Patents in the same way (’Compl. ¶18).
U.S. Patent No. 8,734,156 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a light source for generating a first emission of light | The Counterfeit Products are alleged to be light-emitting drill cartridges that contain a light source. | ¶19, ¶44 | col. 15:42-43 |
| an input device abutting the rear end which comprises a first component disposed in the second opening for receiving a mechanical impulse | The Counterfeit Products are alleged to contain an input device at the rear of the cartridge that is activated by the firearm's striker. | ¶19, ¶44 | col. 15:52-58 |
| a signaling mechanism proximate to the first component such that the signaling mechanism transforms kinetic energy into data signals | The Counterfeit Products are alleged to contain a mechanism that converts the mechanical force of the striker into an electrical signal. | ¶19, ¶44 | col. 16:1-3 |
| a control circuit proximate the input device which comprises an integrated circuit | The Counterfeit Products are alleged to contain a control circuit with an integrated circuit to process the signal from the input device. | ¶19, ¶44 | col. 16:4-10 |
U.S. Patent No. 9,163,904 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an illuminator for emitting, upon receiving a command from a controller, a first beam of light | The Counterfeit Products are alleged to contain an illuminator that emits a light beam when activated. | ¶19, ¶44 | col. 16:9-11 |
| a hollow body which comprises a first casing... and a second casing for housing the illuminator | The Counterfeit Products are alleged to have a two-part casing structure. | ¶19, ¶44 | col. 16:1-8 |
| an insulating sleeve containing said power source, for readily preventing contact of the power source with the first or second casing | The Counterfeit Products are alleged to contain an insulating sleeve for their power source. | ¶19, ¶44 | col. 16:1-4 |
| two spring-like biases situated at opposite sides of said power source... for allowing said power source to move when a firearm striker strikes the actuator | The Counterfeit Products are alleged to have spring-like components that maintain electrical contact during the shock of a striker impact. | ¶19, ¶44 | col. 16:5-9 |
Identified Points of Contention
- Evidentiary Questions: The complaint makes broad allegations that the accused products are "copies" that infringe "all claims." A primary point of contention will be factual: can the Plaintiff produce evidence demonstrating that the accused products, once obtained, actually practice each specific structural and functional limitation of the asserted claims? For example, it raises the question of whether the accused products contain the specific "two spring-like biases" of the ’904 Patent or the modular construction of the ’775 Patent.
- Scope Questions: The patents disclose very specific embodiments, such as the "bell-shaped absorbent material" within the actuator (’394 Patent, col. 7:22-26). A potential dispute may arise over whether the term "actuator" is limited to the detailed structures disclosed in the specification or if it can be construed more broadly to cover different switching mechanisms that may be present in the allegedly "substandard" accused products (’Compl. ¶23).
V. Key Claim Terms for Construction
The complaint does not provide sufficient detail for analysis of claim construction disputes. However, based on the patent specifications, the following terms may become central to the infringement analysis.
The Term: "actuator" (’394 Patent, Claim 1)
- Context and Importance: The actuator is the critical component that translates the mechanical action of the firearm's striker into an electrical signal for the control circuit. The infringement determination will hinge on whether the mechanism used in the accused products falls within the scope of this term as defined by the patents.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests the actuator is not limited to a single structure, stating it may be constructed from materials sensitive to "pressure, shock, or mechanical stress such as a piezoelectric material" or may comprise an "electronic sensor such as a vector or vibration sensor" (’394 Patent, col. 3:5-13).
- Evidence for a Narrower Interpretation: The patents provide a highly detailed description of a preferred embodiment, including a "non metallic striking pad," "energy absorbing material," a "bell-shaped absorbent material," and a "conductive end pin" that closes a circuit (’394 Patent, col. 2:63-68; col. 7:17-35). A defendant could argue that the term should be limited to structures with these specific features.
The Term: "two spring-like biases" (’904 Patent, Claim 1)
- Context and Importance: This term appears in independent claim 1 of the ’904 Patent and defines a specific structural requirement for maintaining a reliable power connection. Infringement of this patent will depend directly on whether the accused products contain a structure that meets this "two... biases" limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "spring-like" suggests a functional definition, potentially covering any component that provides a biasing force, not just a conventional coil spring. Later patents in the family disclose a "standing flat spring," supporting the idea that the term is not limited to one spring type (’394 Patent, Fig. 6A).
- Evidence for a Narrower Interpretation: The claim language is specific, requiring "two" biases "situated at opposite sides of said power source" (’904 Patent, col. 16:6-7). Figure 1 clearly illustrates two separate components (16, 17) on opposite ends of the battery (12). A party could argue that a device with a single spring, or a different physical arrangement, does not meet the plain language of the claim.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants are "contributing to, inducing and engaging in the sale of Counterfeit Products" through the operation of their online stores (’Compl. ¶5).
- Willful Infringement: Willfulness is alleged based on Defendants having "full knowledge of Plaintiff's ownership of the Asserted Patents" and the infringement being "obvious and notorious" (’Compl. ¶27, ¶46). The complaint further alleges that Defendants intentionally conceal their identities and consult "seller-defense" websites to obtain early notice of lawsuits in order to hide assets, suggesting a deliberate intent to infringe (’Compl. ¶7, ¶36).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof: As the complaint makes only general infringement allegations, the case will turn on whether the Plaintiff, after obtaining the accused products, can provide technical evidence that these alleged "counterfeit" devices practice the specific structural and functional limitations recited in the asserted claims, such as the detailed actuator assembly or the dual-bias power connection.
- A determinative procedural question will be one of jurisdiction and enforcement: Can the Plaintiff successfully pierce the anonymity of the foreign-based Defendants operating through online marketplaces to establish personal jurisdiction, effect service, and ultimately enforce any potential judgment? The viability of the action hinges on overcoming this initial hurdle.