DCT
1:19-cv-00792
NST Global, LLC v. Sig Sauer Inc.
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: NST Global, LLC, d/b/a SB Tactical (Florida)
- Defendant: Sig Sauer Inc. (Delaware)
- Plaintiff’s Counsel: Jacobs & Crumplar, P.A.
- Case Identification: 1:19-cv-00792, D. Del., 01/22/2019
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is incorporated in Delaware, resides in the district, and has committed alleged acts of infringement in the state.
- Core Dispute: Plaintiff alleges that Defendant’s firearm stabilizing brace products infringe two patents related to forearm-gripping stabilizing attachments for handguns.
- Technical Context: The technology concerns firearm accessories that attach to the rear of large-format pistols, allowing a user to brace the weapon against their forearm to improve stability and control for one-handed operation.
- Key Procedural History: The complaint alleges a prior business relationship between the parties, including two exclusive distribution agreements in 2013 and 2016, through which Defendant allegedly gained knowledge of the patent applications. Plaintiff also alleges sending pre-suit notice with claim charts to Defendant in January 2019. Subsequent to the filing of this complaint, both asserted patents were the subject of Inter Partes Review (IPR) proceedings (IPR2020-00423 and IPR2020-00424), resulting in the cancellation of the specific independent claims asserted in this complaint.
Case Timeline
| Date | Event |
|---|---|
| 2012-11-27 | Priority Date for ’444 and ’021 Patents |
| 2013-01-XX | SIG allegedly learned of Plaintiff's patent efforts |
| 2013-02-25 | ’444 Patent application filed |
| 2013-03-01 | Effective date of first Exclusive Distribution Agreement |
| 2014-06-05 | Addendum to 2013 Agreement executed |
| 2014-10-20 | ’021 Patent application filed |
| 2014-10-28 | ’444 Patent issued |
| 2016-01-11 | Effective date of second Exclusive Distribution Agreement |
| 2016-05-31 | ’021 Patent issued |
| 2018-05-21 | SIG allegedly released video depicting an accused product |
| 2018-12-XX | Representatives for the parties met to discuss potential dispute |
| 2019-01-03 | SIG allegedly released video depicting accused products |
| 2019-01-07 | Plaintiff allegedly sent correspondence with claim charts to SIG |
| 2019-01-09 | SIG issued press release for an accused product |
| 2019-01-17 | SIG allegedly began selling an additional accused product |
| 2019-01-22 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,869,444 - "Forearm-Gripping Stabilizing Attachment for a Handgun," issued October 28, 2014
The Invention Explained
- Problem Addressed: The patent addresses the difficulty of holding a handgun steady, particularly during one-handed operation or for users with physical disabilities, which is often compounded by the forward weight concentration of certain handguns ('444 Patent, col. 1:21-34).
- The Patented Solution: The invention is an attachment that connects to a support structure extending from the rear of a handgun, such as a buffer tube ('444 Patent, col. 1:50-55). The attachment features a body with an upper portion containing a passage to receive the support structure and a lower portion that is "bifurcated" to form two flaps that grip the user's forearm, secured by a strap ('444 Patent, col. 1:55-62). This design intends to make the handgun function as an extension of the user's forearm, improving stability and control ('444 Patent, Abstract).
- Technical Importance: The technology provides a novel mechanical solution to improve handgun stability, addressing a recognized need for better control during firing, especially in non-traditional handgun formats ('444 Patent, col. 1:35-42).
Key Claims at a Glance
- The complaint asserts independent claim 1 ('444 Patent, Compl. ¶9). It should be noted that claim 1 was subsequently cancelled by an Inter Partes Review certificate issued July 17, 2023.
- Essential elements of claim 1 include:
- A body with a passage for telescopically receiving a handgun's support structure.
- A lower portion that is "bifurcated" to define a "pair of spaced flaps" for receiving a user's forearm.
- A strap to secure the flaps and retain the user's forearm.
U.S. Patent No. 9,354,021 - "Forearm-Gripping Stabilizing Attachment for a Handgun," issued May 31, 2016
The Invention Explained
- Problem Addressed: Similar to its parent patent, the ’021 Patent addresses the challenge of stabilizing a handgun during one-handed firing, particularly for users who cannot maintain a firm grip for extended periods ('021 Patent, col. 1:24-38).
- The Patented Solution: The invention is a stabilizing attachment that mounts to a rearwardly-extending support structure of a handgun ('021 Patent, col. 1:51-56). The attachment body includes a passage that extends "entirely through" it to receive the support structure, a lower portion with "at least one flap," and a strap to secure the flap to a user's forearm ('021 Patent, col. 6:10-22). This configuration is designed to stabilize the firearm against the user's arm ('021 Patent, col. 1:60-64).
- Technical Importance: This patent refines the concept of a forearm brace by claiming a specific configuration where the mounting passage passes completely through the device, which may have implications for manufacturing and use ('021 Patent, col. 3:56-62).
Key Claims at a Glance
- The complaint asserts independent claim 1 ('021 Patent, Compl. ¶13). It should be noted that claim 1 was subsequently cancelled by an Inter Partes Review certificate issued July 17, 2023.
- Essential elements of claim 1 include:
- A body with a passage for telescopically receiving a handgun's support structure.
- A lower portion with "at least one flap" extending from the upper portion.
- A strap to secure the flap to a user's forearm.
- The passage extends "entirely through said body between said front end and said rear end."
III. The Accused Instrumentality
- Product Identification: The complaint identifies the "Accused Products" as the SIG SAUER Folding PCB Kit (“PCB”), SIG MCX Rattler PCB (“Rattler”), SIG MPX Copperhead (“Copperhead”), SIG MCX Rattler Canebreak (“Canebreak”), and SIG MCX Virtus Pistol (“Virtus”) (Compl. ¶15).
- Functionality and Market Context: The Accused Products are described as having a "similar stabilizer design" to Plaintiff's products and are alleged to be in direct competition (Compl. ¶15). The complaint provides a photographic depiction of one of the Accused Products, the PCB, attached to a firearm (Compl. ¶40). Functionally, the products are alleged to attach to the rear of a firearm via the "receivers 1913 interface" and serve as a stabilizing brace (Compl. ¶73). The complaint alleges that SIG markets and sells these products throughout the United States via retail stores, distributors, its website, and other channels (Compl. ¶16).
IV. Analysis of Infringement Allegations
’444 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a body having a front end, a rear end, an upper portion, a lower portion, and a passage longitudinally extending within said upper portion and at least through said front end of said body, the support structure of the handgun being telescopically receivable by said passage | The Accused Products are alleged to be attachments with a body that mounts to a firearm via a "1913 rail mounting interface," which allegedly functions as a "passage" receiving the firearm's "support structure." | ¶15, ¶41, ¶73 | col. 3:49-54 |
| said lower portion being bifurcated so as to define a pair of spaced flaps between which a user's forearm is received when securing the Stabilizing attachment to the user's forearm | The Accused Products allegedly feature a lower portion with flaps designed to receive and stabilize against a user's forearm. | ¶15, ¶40 | col. 3:65-4:2 |
| a strap connected to said body, said strap securing said spaced flaps to retain the user's forearm between said spaced flaps when the stabilizing attachment is secured to a user's forearm | The Accused Products allegedly include a strap to secure the device to the user's forearm. | ¶15, ¶40 | col. 4:11-16 |
’021 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a body having a front end, a rear end, an upper portion, a lower portion, and a passage longitudinally extending within said upper portion and at least through said front end of said body, the support structure of the handgun being telescopically receivable by said passage | The Accused Products are alleged to be attachments with a body that mounts to a firearm via a "1913 rail mounting interface," which allegedly functions as a "passage" receiving the firearm's "support structure." | ¶15, ¶41, ¶73 | col. 6:10-14 |
| said lower portion having at least one flap extending from said upper portion | The Accused Products allegedly possess at least one flap on their lower portion for bracing against a forearm. | ¶15, ¶40 | col. 6:15-16 |
| a strap connected to said body, said strap securing said at least one flap to a user's forearm when the stabilizing attachment is secured to a user's forearm | The Accused Products allegedly include a strap to secure the device to the user's forearm. | ¶15, ¶40 | col. 6:17-19 |
| wherein said passage extends entirely through said body between said front end and said rear end of said body | The mounting portion of the Accused Products is alleged to constitute a passage that extends entirely through the device body. | ¶15, ¶40 | col. 6:20-22 |
Identified Points of Contention
- Scope Questions: A central question for infringement is whether the accused "1913 rail mounting interface" (Compl. ¶73) falls within the scope of the claimed "passage" that "telescopically" receives a "support structure." The patents primarily disclose a cylindrical buffer tube as the support structure ('444 Patent, col. 3:51-52), raising the question of whether a rail-and-clamp system meets the claim limitations.
- Technical Questions: For the ’444 Patent, a factual dispute may arise over whether the accused products’ lower portion is "bifurcated" to form a "pair of spaced flaps" in the manner required by claim 1. The side-view photograph in the complaint does not provide sufficient detail to resolve this (Compl. ¶40).
V. Key Claim Terms for Construction
The Term: "support structure"
- Context and Importance: The construction of this term is critical because the patents heavily feature a "buffer tube" as the exemplary support structure ('444 Patent, col. 3:51), while the accused products allegedly attach to a "1913 interface" (Compl. ¶73). The outcome of the infringement analysis may depend on whether a 1913 rail is considered a "support structure" under the patent's definition.
- Intrinsic Evidence for a Broader Interpretation: The specification contemplates alternative mounting, stating that a "suitable attachment structure, such as, tubular member 62 or the like may be provided for attachment to a hand gun that otherwise is devoid of a suitable structure" via a bracket ('444 Patent, col. 5:20-24). This suggests the invention is not strictly limited to firearms with integral buffer tubes.
- Intrinsic Evidence for a Narrower Interpretation: The primary embodiment repeatedly referenced and illustrated is a "buffer tube 26" that is "telescopically receivable" by the passage ('444 Patent, col. 3:51-54, Fig. 1). A party could argue that the term should be limited to the cylindrical, tube-like structures disclosed, which are distinct from a rail interface.
The Term: "bifurcated" ('444 Patent, Claim 1)
- Context and Importance: This term defines the physical characteristic of the lower portion of the brace. Whether the accused products infringe this claim element depends directly on the meaning of "bifurcated" and whether their structure meets that definition.
- Intrinsic Evidence for a Broader Interpretation: The term itself implies a split into two branches. A party might argue that any design resulting in two distinct lower lobes or flaps for engaging the forearm meets this functional requirement.
- Intrinsic Evidence for a Narrower Interpretation: The specification describes the "lower body portion 22 is longitudinally bi-furcated and includes downwardly depending opposed flaps 28 and 30" ('444 Patent, col. 3:65-67). The drawings (e.g., Fig. 2) depict a specific Y-shaped split. A party could argue the term requires this particular geometry and not merely the presence of two separate flaps.
VI. Other Allegations
- Indirect Infringement: The complaint includes counts for induced and contributory infringement of the ’444 Patent (Compl. ¶¶ 68-87). For inducement, it alleges SIG instructs users on how to install and use the products for their infringing purpose, citing product descriptions stating the "kit installs easily on your SIG MPX or SIG MCX via the receivers 1913 interface" (Compl. ¶73). For contributory infringement, it alleges the accused products are especially made for an infringing use and are not staple articles of commerce with substantial non-infringing uses (Compl. ¶83).
- Willful Infringement: Willfulness is alleged for all infringement counts (Compl. ¶58, ¶64, ¶78, ¶84). The allegations are based on Defendant's alleged long-standing knowledge of the patents and pending applications, purportedly gained through the parties' prior "Exclusive Distribution Agreement[s]" starting in 2013 (Compl. ¶22, ¶26), and on the "January 2019 Correspondence" that allegedly included claim charts, providing pre-suit notice (Compl. ¶39).
VII. Analyst’s Conclusion: Key Questions for the Case
- A foundational issue, arising from post-filing events, is one of claim viability: given that the asserted independent claims of both patents were cancelled in Inter Partes Review, the case will likely turn on whether the plaintiff can proceed by asserting the surviving dependent claims and, if so, whether infringement of those narrower claims can be established.
- A core infringement issue will be one of definitional scope: can the term "support structure", which is primarily disclosed in the patent as a cylindrical "buffer tube", be construed broadly enough to encompass the "1913 rail interface" used by the accused products?
- A key factual question will concern intent and damages: how will the extensive history between the parties, including alleged distribution agreements and pre-suit discussions, influence the determination of willful infringement, especially considering the defendant allegedly proceeded with its product launch after these interactions?