DCT
3:23-cv-05890
Palmetto State Armory LLC v. Shield Arms LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Palmetto State Armory, LLC (South Carolina)
- Defendant: Shield Arms, LLC (Montana)
- Plaintiff’s Counsel: Burr & Forman LLP
- Case Identification: 3:23-cv-05890, D.S.C., 11/16/2023
- Venue Allegations: Plaintiff alleges venue is proper in the District of South Carolina because Defendant purposefully shipped products into the state for sale and directed its patent enforcement activities, including cease and desist letters, at Plaintiff within the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its 15-round pistol magazine does not infringe Defendant's patent related to an increased capacity ammunition magazine.
- Technical Context: The technology concerns firearm ammunition magazines designed to increase capacity over standard "single stack" magazines while maintaining the same external dimensions to fit existing handgun frames.
- Key Procedural History: The action was precipitated by a series of communications from Defendant to Plaintiff, beginning on September 5, 2023, alleging infringement of the patent-in-suit and demanding that Plaintiff cease selling the accused product. These communications are cited by Plaintiff as establishing a justiciable controversy for a declaratory judgment action.
Case Timeline
| Date | Event |
|---|---|
| 2019-10-29 | U.S. Patent No. 11,747,102 Priority Date |
| 2023-09-05 | U.S. Patent No. 11,747,102 Issue Date |
| 2023-09-05 | Defendant sends cease-and-desist letter to Plaintiff |
| 2023-10-19 | Defendant contacts Plaintiff to demand cessation of sales |
| 2023-10-24 | Defendant contacts Plaintiff to inquire if sales have stopped |
| 2023-11-16 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,747,102 - "Increased Capacity Ammunition Magazine"
- Patent Identification: U.S. Patent No. 11747102, "Increased Capacity Ammunition Magazine", issued September 5, 2023.
The Invention Explained
- Problem Addressed: The patent describes a trade-off in handgun magazine design between the slim profile of lower-capacity "single stack" magazines and the greater width of higher-capacity "double stack" magazines (’971 Patent, col. 1:43-53). Simply making a metal magazine to fit the dimensions of a polymer single-stack magazine can create excess internal front-to-back space, which may cause cartridges to misalign and feeding to become unreliable (’971 Patent, col. 2:16-24).
- The Patented Solution: The invention is a magazine with a metallic body, which allows for thinner walls than a comparable polymer magazine. This thin-walled construction creates enough internal side-to-side space to accommodate a staggered arrangement of cartridges, increasing capacity. To address the resulting front-to-back fit issue, the patent describes forming a "longitudinally extending rib" or "ridge" on the exterior of the metallic forward wall to ensure the magazine fits correctly within the handgun's magazine well (’971 Patent, col. 5:12-23; Abstract).
- Technical Importance: This design purports to significantly increase ammunition capacity (e.g., from ten to fifteen rounds) without altering the external dimensions of the original manufacturer's magazine, thereby maintaining the handgun's concealability and ergonomic feel (’971 Patent, col. 6:16-20).
Key Claims at a Glance
- The complaint focuses its non-infringement arguments on independent Claim 5.
- Essential elements of Claim 5 include:
- A pistol magazine with a "metallic tubular body" that has a "bottom removable closure member."
- The "forward wall" of this body has a "longitudinally extending spacer projecting outwardly therefrom."
- An "edge in the first side wall or the second opposite side wall" is configured to interact with a pistol's magazine catch.
- Internal dimensions are configured to hold 9x19 mm cartridges in a "staggered arrangement."
- A "first external dimension" measured from the "forwardmost surface of the longitudinally extending spacer" is required to match that of a conventional single stack magazine.
- A "second external dimension" (width) is also required to match that of a conventional single stack magazine.
III. The Accused Instrumentality
Product Identification
- The "Accused Magazine" is the Palmetto State Armory (PSA) 9MM 15-round magazine for its PSA DAGGER MICRO pistol (SKUs A05-0005-00 and A05-0002-00) (Compl. ¶13).
Functionality and Market Context
- The complaint describes the Accused Magazine as a "polymer-over-metal double stack magazine" (Compl. ¶13). It is alleged to feature a "thinner-walled metallic body" coupled with a "separate polymer component on the front wall" (Compl. ¶13). The complaint further alleges this separate polymer component contains a "recess" that engages the pistol's magazine catch (Compl. ¶24), and that the magazine has a "polymer base" (Compl. ¶13). The complaint includes a photograph illustrating this separate polymer component on the magazine's front face (Compl. p. 6).
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The table below summarizes PSA's arguments against how the Accused Magazine meets the limitations of Claim 5.
U.S. Patent No. 11,747,102 Infringement Allegations
| Claim Element (from Independent Claim 5) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a metallic tubular body defining a hollow interior having a forward wall, a rearward wall, a first side wall, a second opposite side wall, an open top with feed lips, and a bottom removable closure member | The Accused Magazine is described as a "polymer-over-metal" magazine with a metallic body and a bottom closure member made of polymer, not metal. | ¶13, ¶27 | col. 6:28-31 |
| the forward wall having a longitudinally extending spacer projecting outwardly therefrom | The Accused Magazine has a "separate polymer component" adjacent to its metallic front wall, rather than a spacer projecting from the metallic wall itself. | ¶23 | col. 6:31-33 |
| an edge in the first side wall or the second opposite side wall configured to interact with a magazine catch... | The Accused Magazine has a "recess in the separate polymer component," not an edge in the metallic side wall, to engage the magazine catch. A photograph shows this recess in the non-metallic front piece. | ¶24, p. 8 | col. 6:33-37 |
| a first external dimension of the metallic tubular body from the forwardmost surface of the longitudinally extending spacer to the rearmost surface of the rearward wall to match the corresponding exterior dimension of the single stack... magazine | Plaintiff argues this dimension is not met because the Accused Magazine lacks the claimed "longitudinally extending spacer" and because the measurement would originate from a separate polymer component, not the "metallic tubular body." | ¶25 | col. 6:46-54 |
Identified Points of Contention
- Scope Questions: The core of the dispute appears to center on claim construction. A primary question is whether the claim "a metallic tubular body... having a... spacer" requires the spacer itself to be metallic and part of the body, or if a separate, non-metallic component attached to the metallic body can satisfy the limitation. The same question applies to the "bottom removable closure member."
- Technical Questions: A key factual question will be whether the Accused Magazine's "separate polymer component" (Compl. p. 6) is structurally and functionally equivalent to the claimed "longitudinally extending spacer." A similar question arises regarding whether the "recess" in the polymer component (Compl. p. 8) meets the limitation of an "edge in the... side wall."
V. Key Claim Terms for Construction
"a metallic tubular body... having a... spacer projecting outwardly therefrom"
- Context and Importance: This term is central because PSA's non-infringement defense relies heavily on its accused magazine having a separate, polymer component on its front face, not a spacer formed from the metallic body (Compl. ¶23). Practitioners may focus on this term because its construction could be dispositive of infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that "metallic" modifies only "tubular body," and that the body simply must "have" a spacer, without limitation as to the spacer's material or method of attachment. The claim itself does not explicitly state "a metallic spacer."
- Evidence for a Narrower Interpretation: The specification describes the spacer ("ridge 32") as being "stamped or roll formed into the metal as it is formed into the shape of the body" (’102 Patent, col. 5:15-18). The abstract states the ridge is "configured from the metallic body walls." This language suggests the spacer is an integral, metallic feature of the body, supporting a narrower construction.
"an edge in the first side wall or the second opposite side wall"
- Context and Importance: PSA alleges its magazine catch feature is a "recess in the separate polymer component," not an "edge in the... side wall" (Compl. ¶24). The interpretation of "in the... side wall" will determine whether a feature on an attached, non-metallic front piece can meet this limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue "in" is a locational term and does not require the "edge" to be monolithically formed from the metallic wall material itself.
- Evidence for a Narrower Interpretation: The patent specification refers to "one or more cut-outs 26 that allow the magazine 10 to be retained by a magazine catch" and depicts these "cut-outs" in the metallic "body 12" (’102 Patent, col. 4:1-4; Fig. 3). This suggests the feature is contemplated as being part of the metallic body wall.
VI. Other Allegations
- Indirect Infringement: The complaint includes a blanket denial of any direct or indirect infringement (Compl. ¶28).
- Willful Infringement: The complaint notes that Defendant's cease-and-desist letter threatened that "continued infringement may be considered willful and expose Palmetto State Armory to liability for treble damages and/or attorney fees" (Compl. ¶14). This allegation of pre-suit knowledge serves as part of the basis for the declaratory judgment action.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope and material composition: Can the claim phrase "a metallic tubular body... having a [component]" be construed to read on a device where the specified component (e.g., the "spacer" or "closure member") is made of a different material (polymer) and is a separate part attached to the metallic body? The patent's description of forming the spacer from the metallic body wall will be critical evidence in this analysis.
- A related question will be one of structural and locational interpretation: Does the claim limitation "an edge in the first side wall or the second opposite side wall" require the feature to be physically located within the metallic side wall itself, or can it be met by a feature on a separate, non-metallic component that is attached to the magazine's "front"?
- Finally, the case will present a fundamental question of infringement under the doctrine of equivalents, should literal infringement fail. The court may need to determine whether a separate, attached polymer component performs substantially the same function, in substantially the same way, to achieve substantially the same result as the claimed integral, metallic spacer.