DCT
2:19-cv-00632
Skyline ToolWorks LLC v. Techna Clip LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Skyline Toolworks LLC (Pennsylvania)
- Defendant: Techna Clip, LLC (Idaho)
- Plaintiff’s Counsel: Montgomery McCracken Walker & Rhoads LLP
- Case Identification: 2:19-cv-00632, E.D. Pa., 03/05/2019
- Venue Allegations: Venue is alleged to be proper in the Eastern District of Pennsylvania because Defendant Techna Clip sells products within the district, both directly and through authorized intermediaries.
- Core Dispute: Plaintiff Skyline seeks a declaratory judgment that Defendant Techna Clip's patents for concealed carry handgun clips are invalid and not infringed by Skyline's "CLIPDRAW" products.
- Technical Context: The technology involves accessory clips that attach to a handgun's slide, allowing it to be carried securely on a belt or waistband without a traditional holster.
- Key Procedural History: This declaratory judgment action was filed by Skyline following pre-suit correspondence in which Techna Clip accused Skyline of infringing the patents-in-suit and threatened litigation. A central pillar of Skyline's complaint is an attack on the patents' priority dates, alleging that procedural defects during prosecution prevent the patents from claiming the benefit of earlier-filed applications. If successful, this argument could allow Skyline to use Techna Clip's own public disclosures as invalidating prior art.
Case Timeline
| Date | Event |
|---|---|
| 2001-XX-XX | Skyline alleges it began selling its CLIPDRAW products (Compl. ¶34) |
| 2013-07-06 | KEL-TEC allegedly offered for sale a similar clip accessory (Compl. ¶35) |
| 2014-03-26 | Techna Clip allegedly displayed the claimed invention on its Facebook page (Compl. ¶31) |
| 2014-07-24 | Techna Clip allegedly displayed a picture of the claimed invention in use on its Facebook page (Compl. ¶32) |
| 2014-08-06 | Earliest priority date for '685 and '173 Patents ('705 Provisional Application) |
| 2017-03-02 | Techna Clip sent first letter to Skyline accusing it of potential infringement (Compl. ¶11) |
| 2018-02-27 | U.S. Patent No. 9,903,685 issues |
| 2018-08-01 | Techna Clip sent second letter to Skyline with element-by-element infringement allegations (Compl. ¶11) |
| 2019-03-05 | U.S. Patent No. 10,222,173 issues |
| 2019-03-05 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,903,685, "Concealed Carry Clip for Handguns," Issued February 27, 2018
The Invention Explained
- Problem Addressed: The patent describes issues with prior art handgun clips, noting that they can cover friction slots on the rear of a handgun's slide, which are used to grip and operate the slide. Additionally, it states that the screws used to attach such clips can be subjected to shearing forces that cause them to fail (’685 Patent, col. 2:10-19).
- The Patented Solution: The invention is an "improved concealed carry clip" system that attaches to a replacement rear cover plate on the handgun's slide. The clip itself includes "friction punchings or stamped protrusions" to help a user grip and draw back the slide. The system also describes a cover plate with machined projections designed to fit snugly with the clip's mounting tab, which is intended to reduce shear loads on the mounting screws and prevent the clip from rocking (’685 Patent, Abstract; col. 2:20-33). Figure 4, for instance, shows the clip (200) with its mounting tab (401) and friction punchings (404A-C), separate from the replacement cover plate.
- Technical Importance: The described solution aims to provide a robust, non-permanent method for adding a carry clip to a handgun that does not interfere with the weapon's normal operation or require permanent modification of the firearm (’685 Patent, col. 2:3-10).
Key Claims at a Glance
- The complaint notes that Techna Clip previously asserted independent claims 1 and 12 (Compl. ¶11).
- Independent Claim 1 recites:
- A handgun concealed carry clip, comprising: a mounting tab; a rear slide cover plate secured to the handgun concealed carry clip by the mounting tab, and
- a clip connected to the mounting tab and extending along the handgun with a forward end of the clip terminating before a chamber of the handgun,
- the forward end of the clip including a portion which contacts a slide of the handgun and a portion which flares away from the slide,
- wherein the clip further provides a continuous space disposed between the clip and the handgun.
- Independent Claim 12 recites a system comprising a rear slide cover plate and a handgun concealed carry clip.
- The complaint does not explicitly reserve the right to assert dependent claims, as it is a DJ action seeking a judgment of non-infringement and invalidity of the patents as a whole (Compl., Prayer for Relief).
U.S. Patent No. 10,222,173, "Concealed Carry Clip for Handguns," Issued March 5, 2019
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the ’685 Patent, the ’173 Patent addresses the same technical problems: prior art clips can obscure grip surfaces on the slide and place undue shearing force on attachment screws (’173 Patent, col. 2:10-19).
- The Patented Solution: The ’173 Patent describes the same solution, focusing on a clip with friction-enhancing features (e.g., "through-hole friction punchings or stamped protrusions") and a corresponding replacement rear cover plate that may include projections to secure the clip and reduce screw shear (’173 Patent, Abstract; col. 2:23-38). The specification and drawings are substantially identical to those in the ’685 Patent.
- Technical Importance: The technical contribution is identical to that of the ’685 Patent: a non-permanent carry clip that preserves the operational functionality of the handgun slide (’173 Patent, col. 2:3-10).
Key Claims at a Glance
- The complaint seeks a declaratory judgment of invalidity and non-infringement for all claims of the ’173 Patent (Compl. ¶¶47-55).
- Independent Claim 1 recites:
- A handgun clip, comprising: a clip, including a mounting tab which is connectable to a rear slide cover plate of a handgun,
- the clip extending along a slide of the handgun with a forward end of the clip terminating before a chamber of the handgun,
- and including one or more through hole punchings along the clip or one or more stamped protrusions along the clip,
- wherein the clip further includes a concave portion disposed between the mounting tab and a continuous space which is located under the clip.
- Independent Claim 14 recites a system comprising a rear slide cover plate and a clip with similar features.
- The complaint seeks a declaration of invalidity and non-infringement for the patent as a whole (Compl., Prayer for Relief).
III. The Accused Instrumentality
Product Identification
Skyline’s "CLIPDRAW" brand concealed carry handgun clip products (Compl. ¶6). The pre-suit accusations specifically identified CLIPDRAW products for certain GLOCK, SMITH & WESSON, and SPRINGFIELD handguns (Compl. ¶12).
Functionality and Market Context
The CLIPDRAW products are accessory clips designed to be attached to a handgun, enabling it to be carried in a "secure, concealed, non-holstered manner, such as on belts or waistbands" (Compl. ¶6). The complaint alleges that Skyline has been selling these products, which utilize a "drilled and tapped replacement handgun rear cover plate," since at least 2001, positioning them as a long-standing competitor in the market (Compl. ¶34). A photo included in a pre-suit letter from Skyline's counsel shows a CLIPDRAW product installed on a Glock handgun. (Compl., Ex. E, p. 57).
IV. Analysis of Infringement Allegations
The following analysis is based on the infringement theories advanced by Techna Clip in its pre-suit correspondence and attached draft complaint, which Skyline included as exhibits to its own declaratory judgment complaint (Compl., Ex. D).
'685 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a handgun concealed carry clip, comprising: a mounting tab; a rear slide cover plate secured to the handgun concealed carry clip by the mounting tab, and | Techna Clip's pre-suit chart shows Skyline's CLIPDRAW product, which includes a mounting tab that secures to a replacement rear slide cover plate. | Ex. D, p. 43 | col. 5:55-65 |
| a clip connected to the mounting tab and extending along the handgun with a forward end of the clip terminating before a chamber of the handgun, | A photograph in the chart shows the CLIPDRAW clip extending along the slide of a handgun. The chart alleges the clip terminates before the chamber. | Ex. D, p. 43 | col. 5:60-63 |
| the forward end of the clip including a portion which contacts a slide of the handgun and a portion which flares away from the slide of the handgun at a terminating end of the forward end of the clip, | A side-view photograph of the accused product on a handgun is provided to show the clip contacting the slide and then flaring away at its forward end. | Ex. D, p. 44 | col. 7:6-14 |
| wherein the clip further provides a continuous space disposed between the clip and the handgun between the connection of the clip to the mounting tab and the portion of the forward end of the clip which contacts the slide of the handgun. | The same side-view photograph is used to illustrate the space created between the main body of the clip and the side of the handgun. | Ex. D, p. 44 | col. 7:11-14 |
- Identified Points of Contention:
- Scope Questions: A primary dispute will likely concern the claim limitation "terminating before a chamber of the handgun." The invalidity allegations in the complaint suggest that Skyline will argue that its own prior art products, as well as those from third parties and Techna Clip itself, meet this limitation, raising the question of whether the claim is invalid as anticipated or obvious (Compl. ¶¶34, 39, 44).
- Technical Questions: Skyline’s complaint and pre-suit correspondence focus almost exclusively on invalidity, not on technical distinctions for non-infringement. However, a potential infringement question could arise regarding whether the accused CLIPDRAW products include every element, such as the specific "flares away" geometry or the creation of a "continuous space" in the manner required by the claims.
V. Key Claim Terms for Construction
- The Term: "terminating before a chamber of the handgun" ('685 Patent, claim 1; '173 Patent, claim 1)
- Context and Importance: This term is critical to both the infringement and validity analyses. Its construction will determine the temporal and spatial scope of the claim. Skyline's invalidity case hinges on this term being broad enough to read on prior art clips that it alleges were on sale more than one year before the patents' effective filing dates (Compl. ¶¶34, 35, 44). Techna Clip would require a narrower construction to distinguish the claims from that same prior art.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain language does not specify how far before the chamber the clip must terminate. A party could argue that any termination point rearward of the front-most part of the chamber meets the limitation. The specification states the feature allows the handgun to be carried lower on the body and avoids interference with the ejector, but does not explicitly define the term by these functions (’173 Patent, col. 6:25-34).
- Evidence for a Narrower Interpretation: A party could point to specific embodiments to argue for a more limited meaning. For example, the patent describes a "shorter version" of the clip (1500) where the forward end is "about even with the pivot pin (109) of the ejector (108)," which it deems a "preferred embodiment" because it avoids being pushed aside during ejection (’173 Patent, col. 6:35-45). This could be used to argue the term requires termination at or behind the ejector port to be patentably distinct.
VI. Other Allegations
- Indirect Infringement: The threatened complaint included as Exhibit D focuses on direct infringement under 35 U.S.C. § 271(a) and does not contain specific factual allegations to support a claim for indirect infringement (Compl., Ex. D, p. 39, ¶12).
- Willful Infringement: In its threatened complaint, Techna Clip alleged that Skyline's infringement was willful and deliberate. This allegation was based on Skyline's alleged continuation of infringing activities after receiving a notice of infringement from Techna Clip dated March 2, 2017 (Compl., Ex. D, p. 40, ¶16).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue for the court will be one of procedural validity: Did Techna Clip's failure to reference earlier provisional and non-provisional applications in its Application Data Sheets, as alleged by Skyline, constitute a fatal defect that forfeits the benefit of the earlier priority dates? The answer to this question will determine which prior art references are available to challenge the patents' validity.
- A second core issue is one of claim scope and anticipation: Can the claim phrase "terminating before a chamber of the handgun" be construed in a way that distinguishes the patented invention from prior art clips, including Techna Clip's own alleged pre-filing public disclosures and Skyline's long-commercialized CLIPDRAW products? The case may turn on whether this limitation provides a novel and non-obvious feature or merely describes an existing characteristic of such products.
- A key evidentiary question will be one of public availability: Can Skyline prove by clear and convincing evidence that the prior art products and online posts it has identified were in public use or on sale more than one year before the patents' correct effective filing date, and that they contained all the limitations of the asserted claims?