Incubate Products LLC v. Shirlen

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Incubate Products, LLC; Robert Hefter; Salvadore Castro; and Kevin Johnson (North Carolina)
  • Defendant: Andrew M. Shirlen (North Carolina)
  • Plaintiff’s Counsel: Coats & Bennett, PLLC
• Case Identification: 1:23-cv-01100, M.D.N.C., 09/15/2025
• Venue Allegations: Venue is alleged as proper pursuant to 28 U.S.C. § 1391(b), which typically relies on the defendant's residence. The complaint alleges Defendant resides within the judicial district.
• Core Dispute: Plaintiffs allege they are the true inventors of the subject matter claimed in U.S. Patent No. 11,614,304 and seek a court order to correct the patent's inventorship, which currently lists Defendant as the sole inventor.
• Technical Context: The technology concerns a hands-free carrier for long guns, designed to hold a firearm securely on a user's chest in a "high ready" position for quick deployment.
• Key Procedural History: The complaint alleges that Defendant engaged Plaintiff Incubate Products to design and prototype the gun carrier. It further alleges that Plaintiffs conceived and designed all aspects of the final product, provided detailed drawings and prototypes to Defendant's patent attorney, and that Defendant subsequently filed for and obtained the patent naming only himself as inventor.

Case Timeline

Date	Event
2020-03-13	Initial meeting between Defendant and Plaintiffs to discuss a shotgun holster concept.
2020-04-01	Follow-up telephone conversation between Hefter and Defendant.
Early Apr 2020	Plaintiffs Hefter, Castro, and Johnson allegedly begin designing the gun carrier.
2020-04-24	Plaintiff Hefter meets with Defendant and discloses details of the "Generation 1" design.
Mid-May 2020	Plaintiffs allegedly conceive the "Generation 6" design for the gripping structure.
2020-05-15	Plaintiffs hold an update meeting with Defendant, presenting the Generation 6 design.
2020-06-05	Plaintiff Hefter emails presentations of the designs to Defendant's patent attorney.
2020-06-17	Plaintiff Hefter sends updated detailed drawings of the gun carrier design to Defendant's attorney.
2020-08-07	'304 Patent Priority Date (Provisional Application No. 63/062,711 filed).
2021-06-04	Plaintiff Johnson sends full SolidWorks files to Defendant's patent attorney.
2021-06-28	Non-provisional application leading to the '304 Patent filed.
2023-03-28	U.S. Patent 11,614,304 issues.
2023-07-28	Defendant allegedly dissolves business arrangement with Plaintiff Incubate Products.
2025-09-15	Complaint for Correction of Inventorship filed.

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

• Patent Identification: U.S. Patent No. 11,614,304, "Hands-Free Long-Gun Carrier," issued March 28, 2023 (the ’304 Patent).

The Invention Explained

• Problem Addressed: The patent's background describes shortcomings with existing methods for carrying long guns, such as rifles and shotguns. Traditional slings let the weapon hang by gravity, requiring significant motion to bring it into a firing position, while other "high ready" carriers can be cumbersome or slow to deploy. (’304 Patent, col. 1:17-30).
• The Patented Solution: The invention is a device featuring a support plate worn on the user's chest and a "gripping structure" mounted on the plate. This structure includes upper and lower jaw members that are "resiliently deflectable," allowing them to open to receive a portion of the long gun (e.g., the receiver) and then spring back to grip it securely in a stable, "port arms" position, ready for rapid deployment. (’304 Patent, Abstract; col. 3:37-47).
• Technical Importance: The claimed solution aims to provide a stable, hands-free carrying system that maintains the firearm in an accessible position, balancing security during movement with the need for immediate access. (’304 Patent, col. 1:33-39).

Key Claims at a Glance

• The complaint focuses on inventorship of the subject matter in independent claims 1 and 14. (Compl. ¶38).
• The essential elements of independent claim 1 include:
  • A support plate supported at a user's chest.
  • A gripping structure on the support plate configured to releasably engage a long-gun.
  • The gripping structure comprising a back portion and upper and lower spaced apart "resiliently deflectable" jaw members.
  • The jaw members defining a forward-facing opening and having specific lip portions (downturned on the upper jaw, upturned on the lower jaw).
  • The back and jaw members configured to resiliently receive and engage the rear, upper, and lower surfaces of the long-gun's receiver.

III. The Disputed Invention

Product Identification

• The Hands-Free Long-Gun Carrier described and claimed in the ’304 Patent.

Functionality and Conception Context

• The complaint alleges that Plaintiffs conceived, designed, and prototyped multiple versions of the gun carrier, including a series of designs referred to as "Generation 1" through "Generation 6" as well as a "clam shell" design. (Compl. ¶¶ 18, 22-23). These designs allegedly embody the key features of the patented invention, including a body harness, a support plate, and various configurations of the gun gripping structure with resilient jaws. (Compl. ¶17). The complaint includes a visual from Plaintiffs' alleged design files, showing a SolidWorks drawing of the "Generation 6" gripping structure and support plate, and places it adjacent to Figure 4A from the issued ’304 Patent to illustrate their similarity. (Compl. p. 8). The central dispute is not over the functionality of a product, but rather over who conceived of the claimed functional and structural elements of this invention.

IV. Analysis of Inventorship Allegations

The complaint does not allege infringement. Instead, it alleges that Plaintiffs are the proper inventors of the claimed subject matter. The following table summarizes the alleged contributions of Plaintiffs Hefter, Castro, and Johnson to the conception of the elements of Claim 1.

U.S. Patent 11,614,304 Alleged Inventorship Contributions

Claim Element (from Independent Claim 1)	Plaintiffs' Alleged Contribution to Conception	Complaint Citation	Patent Citation
a support plate supported at a user's chest	Jointly conceived by Hefter, Castro, and Johnson. The complaint provides a side-by-side comparison of a SolidWorks drawing allegedly prepared by Johnson and Figure 3 of the patent to support this. (Compl. p. 9).	¶39(a), ¶25	col. 3:6-14
a gripping structure on the support plate configured to releasably engage and support a long-gun in a port arms position	Conceived by Hefter, Castro, and Johnson through the development of multiple designs (Generations 1-6 and clam shell).	¶38	col. 3:37-41
upper and lower spaced apart resiliently deflectable jaw members defining an opening facing substantially forward	A core feature of all gripping structures allegedly conceived by Hefter, Castro, and Johnson.	¶38	col. 5:39-44
the upper jaw member having an upper jaw portion and a downturned lip portion along a forward edge of the upper jaw portion	A feature of the gripping structures allegedly conceived by Hefter, Castro, and Johnson.	¶38	col. 5:40-44
the lower jaw member having a lower jaw portion and an upturned lip portion along a forward edge of the lower jaw portion	A feature of the gripping structures allegedly conceived by Hefter, Castro, and Johnson.	¶38	col. 5:44-48
the back and jaw members configured to resiliently receive therein a receiver of the long-gun	The fundamental function of the gripping structures allegedly conceived by Hefter, Castro, and Johnson.	¶38	col. 5:49-55

• Identified Points of Contention:
  • Scope Questions: A primary question may be whether the Defendant's initial concept, described as a "modified plaster arm cast," constitutes a contribution to the conception of any of the specific limitations ultimately claimed in the patent, or if it merely identified a problem for the Plaintiffs to solve. (Compl. ¶¶ 12-13).
  • Evidentiary Questions: The case will likely depend on the strength of corroborating evidence. A key question is what contemporaneous documentation and testimony can the Plaintiffs produce to prove they conceived of the "definite and permanent idea" of the claimed invention. The complaint relies on alleged SolidWorks drawings, presentations, prototypes, and communications with the Defendant's own patent attorney. (Compl. ¶¶ 24, 28, 31-33).

V. Key Claim Terms for Construction

While claim construction is not the central dispute, the definition of key terms defines the scope of the invention for which inventorship is claimed.

• The Term: "gripping structure"

• Context and Importance: This term represents the core of the invention. The dispute centers on who conceived of its various configurations and functional attributes. The complaint alleges Plaintiffs conceived multiple embodiments, including the "Generation 6" design which allegedly incorporates an "overlapping back portion that allows the height of the gripping structure to be adjusted," a feature corresponding to elements of claim 13. (Compl. ¶23).

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent describes several distinct embodiments of the "gripping structure," including a two-part adjustable version (FIGS. 4A-4B), a hinged version (FIGS. 14-16), and a unitary version with flexible "fingers" (FIGS. 20-22). This variety could support a construction that is not limited to any single embodiment. (’304 Patent, col. 4:30-67; col. 5:6-17).
  • Evidence for a Narrower Interpretation: A party could argue the term should be understood in light of the primary embodiment shown in Figures 1-13, which features L-shaped jaw members with overlapping foot portions that form the back of the structure, as explicitly recited in claim 13. (’304 Patent, col. 3:50-57).

• The Term: "resiliently deflectable jaw members"

• Context and Importance: This functional language is critical to how the invention works. The act of invention was not just designing jaws, but designing jaws with this specific property. Plaintiffs allege they designed the jaws to be "deflectable and resilient" to allow a gun to be inserted and secured. (Compl. ¶19). Proving who conceived of this functional solution is central to proving inventorship.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification states that the material of the jaws may have "inherent resiliency that provides a deflectable gripping force." (’304 Patent, col. 4:1-4). This suggests the property can arise from material choice alone.
  • Evidence for a Narrower Interpretation: The patent also discloses specific mechanical structures to achieve this property, such as using "elastomeric spacers" to create a "resilient tension" (FIG. 16) or forming the jaws from "separately resiliently bendable or deflectable 'fingers'" (FIG. 20). (’304 Patent, col. 4:35-40; col. 5:12-14). An argument could be made that the term requires a specific structural implementation rather than just a material property.

VI. Other Legal Claims

• Rescission and Restitution (Count II): The complaint alleges that the parties had a binding agreement for Plaintiffs to receive a 30% interest in a company formed to commercialize the invention in exchange for their design services. It alleges Defendant breached this agreement by failing to provide the equity interest. (Compl. ¶¶ 58-67).
• Unjust Enrichment (Count III): As an alternative theory, the complaint alleges that Defendant accepted and benefited from valuable product design services provided by Plaintiffs without providing compensation, and that it would be inequitable for Defendant to retain these benefits. (Compl. ¶¶ 68-71).

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

This is not a typical patent infringement suit; it is a dispute over ownership and creation. The outcome will likely turn on evidence related to the timing and substance of conception. The central questions for the court appear to be:

• A question of conception: Does the evidence establish that Plaintiffs Hefter, Castro, and Johnson formed a "definite and permanent idea of the complete and operative invention" as it was claimed, and that Defendant Shirlen did not make a material contribution to the conception of any claimed feature?
• A question of corroboration: Can the Plaintiffs provide sufficient corroborating evidence—such as the referenced SolidWorks files, dated presentations, and third-party testimony (potentially including the Defendant's own patent attorney)—to support their claim of prior conception, as is required to overcome the presumption that the named inventor is the true and only inventor?