DCT
1:22-cv-00021
James Chadwick Meyers v. Damon Albus doing Business As 5D
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: JM4 Tactical, LLC (Texas) and James Chadwick Myers (Texas)
- Defendant: Damon Albus, dba 5D, dba 5D Custom Hats & Leather (Texas)
- Plaintiff’s Counsel: Leavitt Eldredge Law Firm
- Case Identification: 1:22-cv-00021, N.D. Tex., 03/14/2022
- Venue Allegations: Venue is alleged to be proper in the Northern District of Texas because the Defendant conducts business within the district, and a substantial portion of the events giving rise to the action occurred there.
- Core Dispute: Plaintiffs allege that Defendant’s gun holsters infringe one utility patent and four design patents related to holsters featuring a magnetic retention system.
- Technical Context: The technology concerns firearm holsters, specifically those using magnets instead of traditional clips or snaps to provide retention and attachment to clothing, aiming to improve concealability and user comfort.
- Key Procedural History: The complaint alleges a prior business relationship where Defendant was engaged to manufacture holsters for Plaintiffs. During this period, Plaintiffs allegedly disclosed trade secrets under a non-disclosure agreement. Following the termination of this relationship, Plaintiffs allege Defendant began selling infringing products and falsely claimed to be the inventor of the designs. This history raises potential disputes over inventorship and trade secret misappropriation, which are included as separate counts in the complaint.
Case Timeline
| Date | Event |
|---|---|
| 2016-04-26 | '451 Design Patent Filing Date |
| 2016 (approx.) | Former Business Relationship Begins |
| 2016-10-05 | '731 Design Patent Filing Date |
| 2016-10-28 | '530 Patent Priority Date |
| 2017-06-06 | '451 Design Patent Issue Date |
| 2017-06-21 | '329 Design Patent Filing Date |
| 2017-10-10 | '530 Patent Issue Date |
| 2017-12-20 | '979 Design Patent Filing Date |
| 2018-03-06 | '731 Design Patent Issue Date |
| 2018-12-25 | '329 Design Patent Issue Date |
| 2019-03-05 | '979 Design Patent Issue Date |
| 2022-03-14 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,784,530 - "Gun holster system and method of use"
Issued October 10, 2017
The Invention Explained
- Problem Addressed: The patent’s background section identifies the bulkiness and weight of conventional gun holsters as a problem that "restricts the user's ability to effectively conceal the firearm" and may discourage individuals from carrying one (’530 Patent, col. 2:20-27).
- The Patented Solution: The invention proposes a holster system that replaces traditional mechanical fasteners with a magnetic retention system. The system comprises a body to hold the firearm and an integrated strap assembly that folds over an article of clothing, such as a waistband (’530 Patent, col. 2:35-40). This assembly includes a "fastener protrusion" with two magnets and a corresponding "fastener housing" on the holster body with a third magnet, which engage to secure the holster (’530 Patent, Abstract; col. 2:57-60). This design aims to reduce the holster's profile while ensuring the firearm is retained securely but remains accessible (’530 Patent, col. 4:16-22).
- Technical Importance: The use of a magnetic fastening system was intended to provide a more discreet and comfortable alternative to holsters relying on bulkier conventional clips or belt loops for attachment and retention (’530 Patent, col. 2:31-34).
Key Claims at a Glance
- The complaint asserts infringement of all claims, with a focus on independent claim 1 (Compl. ¶ 21).
- Essential elements of independent claim 1 include:
- A body with an upper opening for the gun and a lower opening for the barrel.
- An integrally secured strap assembly with an elongated strap, a "fastener protrusion" on the strap, and a "fastener housing" on the body to engage the protrusion.
- A configuration where the strap folds back to engage the protrusion and housing.
- A specific arrangement of "two magnets" within the protrusion and a "third magnet" within the housing.
- The magnets must engage each other without obstructing the removal of the gun.
- The "combined magnetic retention strength" must be "strong enough to retain the gun within the body."
- The complaint reserves the right to assert dependent claims by alleging infringement of "each claim" of the patent (Compl. ¶ 21).
U.S. Design Patent No. D788,451 - "Gun holster"
Issued June 6, 2017
The Invention Explained
- Problem Addressed: Not applicable. Design patents protect the ornamental appearance of an object, not its function.
- The Patented Solution: The patent claims the specific ornamental design for a gun holster as depicted in its figures (’451 Patent, “CLAIM”). The design is characterized by a unique contoured body, a strap portion with a circular raised element, and a larger, D-shaped raised element on the main body of the holster, as illustrated in the patent’s ten figures which show it from various angles and in a folded state (’451 Patent, Figs. 1-10).
- Technical Importance: Not applicable for a design patent.
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a gun holster as shown and described" (Compl. ¶ 8b; ’451 Patent, “CLAIM”).
- The complaint alleges infringement of this claim (Compl. ¶ 21).
U.S. Design Patent No. D811,731 - "Gun holster"
Issued March 6, 2018
- Technology Synopsis: This patent protects the ornamental design for a gun holster, characterized by a specific profile with a large circular feature on the main body and an integrated strap piece, as shown in the patent's elevation and plan views (Compl. ¶ 8c; ’731 Patent, Figs. 1-4).
- Asserted Claims: "The ornamental design of a gun holster as shown and described" (Compl. ¶ 8c).
- Accused Features: The complaint alleges that Defendant's holsters infringe the design claimed in the ’731 patent (Compl. ¶ 21).
U.S. Design Patent No. D836,329 - "Gun holster"
Issued December 25, 2018
- Technology Synopsis: This patent protects the ornamental design for a gun holster. Its distinctive features include a rectangular loop at the top of the strap, a circular element below the loop on the strap, and a specific contoured shape for the main holster body (Compl. ¶ 8d; ’329 Patent, Figs. 1-4).
- Asserted Claims: "The ornamental design of a gun holster as shown and described" (Compl. ¶ 8d).
- Accused Features: The complaint alleges that Defendant's holsters infringe the design claimed in the ’329 patent (Compl. ¶ 21).
U.S. Design Patent No. D841,979 - "Gun holster"
Issued March 5, 2019
- Technology Synopsis: This patent protects the ornamental design for a gun holster, which includes a wide, foldable flap with visible stitching, a main body also outlined with stitching, and views showing the holster in both closed and open/unfolded states (Compl. ¶ 8e; ’979 Patent, Figs. 1-5).
- Asserted Claims: "The ornamental design of a gun holster as shown and described" (Compl. ¶ 8e).
- Accused Features: The complaint alleges that Defendant's holsters infringe the design claimed in the ’979 patent (Compl. ¶ 21).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are "holsters" that are manufactured, marketed, and sold by the Defendant (Compl. ¶¶ 17, 21).
Functionality and Market Context
The complaint alleges that the accused holsters use the "JM4 patent, trade dress, and trade secrets" (Compl. ¶ 17). It does not identify specific product models or provide technical details about their construction or operation beyond a general allegation of infringement. The complaint does not provide sufficient detail for analysis of specific functionality.
IV. Analysis of Infringement Allegations
’530 Patent Infringement Allegations
The complaint does not provide a detailed, element-by-element infringement analysis. It makes a general allegation that Defendant’s holsters infringe each claim of the ’530 patent (Compl. ¶ 21). The following table summarizes this allegation against the elements of independent claim 1.
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a body having a front side and a back side forming an upper opening disposed therebetween and forming a lower opening at a lower surface of the body | The complaint alleges Defendant’s holsters have a body with these features, but provides no specific details. | ¶21 | col. 3:17-20 |
| a strap assembly integrally secured to the back side body, the strap assembly having: an elongated strap...a fastener protrusion...and a fastener housing... | The complaint alleges Defendant’s holsters include a strap assembly meeting these limitations, but does not describe it. | ¶21 | col. 3:21-29 |
| wherein the elongated strap folds backwards and away from the upper opening to cause the fastener protrusion and the fastener housing to engage | The complaint alleges Defendant’s holsters operate in this manner, but does not provide details. | ¶21 | col. 4:5-8 |
| two magnets disposed within a thickness of the fastener protrusion; and a third magnet disposed within a thickness of the housing | The complaint alleges Defendant’s holsters contain this specific magnet arrangement, but does not provide evidence or description. | ¶21 | col. 4:9-12 |
| wherein the two magnets are configured to engage with the third magnet | The complaint alleges that this magnetic engagement occurs in Defendant's holsters. | ¶21 | col. 4:13-15 |
| wherein engaging the two magnets with the third magnet does not obstruct the upper opening and does not obstruct or hinder entire removal of the gun from the body | The complaint alleges this non-obstruction feature is present in Defendant's holsters. | ¶21 | col. 4:16-19 |
| wherein a combined magnetic retention strength generated by the two magnets and third magnet is strong enough to retain the gun within the body | The complaint alleges Defendant's holsters provide sufficient magnetic strength for retention as claimed. | ¶21 | col. 4:19-22 |
Design Patent Infringement Allegations (’451, ’731, ’329, and ’979 Patents)
The complaint alleges that Defendant’s holsters infringe the designs claimed in the four asserted design patents (Compl. ¶ 21). The legal standard for design patent infringement is whether an ordinary observer would find the accused design to be substantially the same as the patented design, such that they would be induced to purchase one believing it to be the other. The complaint does not contain images of the accused holsters, which prevents a direct comparison. However, the complaint does provide figures from the asserted patents to establish the claimed designs. For example, the complaint includes several views of the '731 patent's claimed design for a gun holster (Compl. p. 4). It also includes several figures from the '451 patent to illustrate its claimed ornamental design (Compl. p. 3). The core of the design patent dispute will rest on a visual comparison of the accused products, once identified, with these and the other claimed designs.
Identified Points of Contention
- Evidentiary Questions: For the ’530 patent, a central issue will be whether Plaintiffs can produce evidence to show that the accused holsters meet every limitation of claim 1, including the precise number and placement of magnets and the functional requirement of sufficient retention strength. For the design patents, the dispute will turn on a visual comparison between the accused products and the designs claimed in the patents.
- Scope Questions: For the ’530 patent, the meaning of terms like "integrally secured" may be disputed, raising the question of whether it requires a one-piece construction or permits other forms of permanent attachment.
V. Key Claim Terms for Construction
Term: "integrally secured" (’530 patent, claim 1)
- Context and Importance: This term, which describes the connection of the strap assembly to the holster body, is critical for defining the structural scope of the claim. Practitioners may focus on this term because its construction will determine whether holsters with straps attached via methods like stitching or riveting, rather than being formed from a single piece of material, fall within the claim.
- Intrinsic Evidence for a Broader Interpretation: The patent does not provide an explicit definition. The term is used to describe the attachment of the strap assembly to the body, and the patent's focus is on the magnetic fastening method, not the specific method of constructing the strap-to-body joint (’530 Patent, Abstract). This could support an interpretation covering any form of permanent attachment.
- Intrinsic Evidence for a Narrower Interpretation: The patent figures appear to depict the strap and body as continuous, flowing components, which could suggest a single-piece construction (’530 Patent, Figs. 2, 3). A defendant could argue that "integrally" should be construed narrowly to mean "of a single, unitary piece," thereby excluding products with separately attached straps.
Term: "strong enough to retain the gun within the body" (’530 patent, claim 1)
- Context and Importance: This functional limitation sets the performance standard for the magnetic retention system. Practitioners may focus on this term because its validity under 35 U.S.C. § 112 is a potential issue; it could be challenged as indefinite if it is found to be purely subjective.
- Intrinsic Evidence for Interpretation: The patent specification offers little quantitative guidance, stating only that the magnets "cause retention on the gun so the gun will not fall out" (’530 Patent, col. 2:62-64). A plaintiff may argue that one of ordinary skill in the art could determine the necessary force through routine experimentation. Conversely, a defendant may argue that "strong enough" is fatally indefinite because it depends on unstated variables like the firearm's weight and the user's activity level, and the patent fails to provide any objective standard by which to measure this strength.
VI. Other Allegations
Indirect Infringement
The complaint does not plead specific facts to support claims of induced or contributory infringement, such as allegations that Defendant provided instructions to customers to use the holsters in an infringing manner.
Willful Infringement
The complaint alleges that Defendant’s infringement is "willfully and maliciously" continuing (Compl. ¶ 17). This allegation is based on Defendant's alleged knowledge of the patents, which may stem from the parties' prior business relationship and from cease and desist requests sent by Plaintiffs (Compl. ¶¶ 11-13, 15). The complaint further alleges that Defendant "responded aggressively" to these requests and "taunted them to file this suit," which, if proven, could support a finding of willful infringement (Compl. ¶ 16).
VII. Analyst’s Conclusion: Key Questions for the Case
- A threshold issue may be one of inventorship and ownership. Given the complaint’s narrative of a prior manufacturing relationship followed by Defendant’s alleged claims of having "invented and designed the JM4 holster" (Compl. ¶ 14), the validity of the patents could be challenged on the basis of inventorship, turning the case on evidence of who actually conceived of the claimed inventions.
- The case presents a key evidentiary question of infringement. The complaint is factually sparse, so the outcome will depend heavily on whether discovery produces evidence that the accused holsters contain every element of the asserted utility claim and are "substantially the same" in overall visual appearance as the asserted design patents from the perspective of an ordinary observer.
- A central legal question will be the construction and validity of functional claim language. For the '530 utility patent, the case may turn on whether the court construes the term "strong enough to retain the gun" as providing an objective, understandable standard to a person skilled in the art, or finds it to be impermissibly subjective and therefore indefinite.