DCT
1:22-cv-00121
JM4 Tactical v. her Tactical
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: JM4 Tactical, LLC; and James Chadwick Myers (Texas)
- Defendant: Her Tactical, LLC; E & R LLC d/b/a Her Tactical; Vicky Arlene Johnston; and Blake Cheal (Utah)
- Plaintiff’s Counsel: Leavitt Eldredge Law Firm; MK Smith, APC
- Case Identification: 1:22-cv-00121, D. Utah, 09/19/2022
- Venue Allegations: Venue is alleged to be proper because the Defendants reside in the judicial district or have committed acts of infringement and maintain a regular and established place of business within the district.
- Core Dispute: Plaintiff alleges that Defendant’s inside-the-waistband (IWB) magnetic retention holsters infringe one utility patent and four design patents related to magnetic gun holster systems.
- Technical Context: The technology resides in the firearm accessories market, specifically addressing methods for concealing and carrying firearms using holsters that employ magnets for retention and attachment.
- Key Procedural History: The complaint alleges a history between the parties involving a third-party media company hired by the Plaintiff, during which several of Plaintiff's holster samples allegedly went missing. The complaint also alleges that Defendants were provided with pre-suit notice of infringement of the utility patent and, despite being aware of it, declined to cease their allegedly infringing activities.
Case Timeline
| Date | Event |
|---|---|
| 2016-04-26 | D'451 Patent Filing Date |
| 2016-10-05 | D'731 Patent Filing Date |
| 2016-10-28 | '530 Patent Priority Date |
| 2017-06-06 | D'451 Patent Issue Date |
| 2017-06-21 | D'329 Patent Filing Date |
| 2017-10-10 | '530 Patent Issue Date |
| 2017-12-20 | D'979 Patent Filing Date |
| 2018-03-06 | D'731 Patent Issue Date |
| 2018-12-25 | D'329 Patent Issue Date |
| 2019-03-05 | D'979 Patent Issue Date |
| 2021-07-01 | Plaintiff begins collaboration with Chamber Media (approx. date) |
| 2021-08-20 | Defendant Her Tactical's Facebook page created |
| 2021-08-22 | Plaintiff's commercial shoot; holsters subsequently go missing |
| 2021-09-24 | Defendant Her Tactical posts video of planned IWB holster |
| 2022-01-06 | Defendant Johnston registers Her Tactical |
| 2022-01-18 | Defendants begin advertising accused holsters online (at least by) |
| 2022-06-01 | Defendants begin advertising holsters as "patent pending" (at least by) |
| 2022-08-19 | Plaintiff provides infringement notice to Defendants |
| 2022-08-22 | Defendants allegedly acknowledge awareness of patent, refuse to stop sales |
| 2022-09-19 | 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 Oct. 10, 2017)
The Invention Explained
- Problem Addressed: The patent’s background section identifies the "limited use and weight" of conventional gun holsters, noting their bulkiness can restrict a user's ability to effectively conceal a firearm ('530 Patent, col. 1:21-24).
- The Patented Solution: The invention is a gun holster system that uses a combination of a body, a folding strap, and embedded magnets to secure the holster to an article of clothing, such as a waistband, without a traditional clip. A "fastener protrusion" on the end of the strap engages with a "fastener housing" on the holster body, with magnets in both components providing the retention force ('530 Patent, Abstract; col. 2:50-63).
- Technical Importance: This design aims to provide a more versatile and less bulky method for securing a holster, expanding the options for concealed carry beyond users wearing a belt ('530 Patent, col. 2:36-39).
Key Claims at a Glance
- The complaint focuses on infringement of Independent Claim 1 (Compl. ¶11a, ¶39).
- The essential elements of Claim 1 include:
- a body with an upper opening for a gun and a lower opening
- a strap assembly integrally secured to the back side of the body
- the strap assembly having an elongated strap, a fastener protrusion, and a fastener housing
- the strap folding backwards to engage the protrusion and housing
- "two magnets" within the fastener protrusion
- a "third magnet" within the housing
- the magnets engaging each other without obstructing the gun opening
- a combined magnetic strength sufficient to retain the gun
U.S. Design Patent No. D788,451 - HOLSTER (Issued Jun. 6, 2017)
The Invention Explained
- Problem Addressed: Design patents protect the ornamental, non-functional appearance of an article of manufacture. The goal is to create a new, original, and ornamental design.
- The Patented Solution: The patent claims "the ornamental design for a holster, as shown and described" (’451 Patent, Claim). The design consists of the visual characteristics of the holster, including its overall shape, the specific contours of the main body, the proportions of the attached strap, and the appearance of the circular elements, as depicted in the patent's figures (D'451 Patent, Figs. 1-10).
Key Claims at a Glance
- The patent contains a single claim for the ornamental design shown in the drawings. The complaint alleges that Defendants' holsters are "substantially similar" to those claimed in the '451 patent (Compl. ¶42).
U.S. Design Patent No. D811,731 - Gun holster
- Patent Identification: D811,731, "Gun holster," issued March 6, 2018.
- Technology Synopsis: This patent claims the ornamental design for a gun holster, characterized by a particular profile, a prominent circular housing on the main body, and a strap that folds over the top. The side views show a distinct looped appearance when folded.
- Asserted Claims: The single design claim.
- Accused Features: The overall ornamental appearance of the Defendants' IWB magnetic retention holsters (Compl. ¶32, ¶42).
U.S. Design Patent No. D836,329 - Gun holster
- Patent Identification: D836,329, "Gun holster," issued December 25, 2018.
- Technology Synopsis: This patent claims the ornamental design for a gun holster featuring a body with a circular housing and an attached strap that forms a rectangular loop at its end, rather than folding back on itself.
- Asserted Claims: The single design claim.
- Accused Features: The overall ornamental appearance of the Defendants' IWB magnetic retention holsters (Compl. ¶32, ¶42).
U.S. Design Patent No. D841,979 - Gun holster
- Patent Identification: D841,979, "Gun holster," issued March 5, 2019.
- Technology Synopsis: This patent claims the ornamental design for a gun holster with a wide strap that folds over the main body. The design is distinguished by visible dashed stitching lines that define the shape and placement of the magnetic components.
- Asserted Claims: The single design claim.
- Accused Features: The overall ornamental appearance of the Defendants' IWB magnetic retention holsters (Compl. ¶32, ¶42).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are Defendants' "IWB magnetic retention holsters" sold under the "Her Tactical" brand (Compl. ¶23, ¶28).
Functionality and Market Context
The products are advertised as inside-the-waistband holsters for carrying a firearm (Compl. ¶28). The complaint includes several photographs that depict the accused product as a holster with a main body and a folding strap containing circular magnetic elements for attachment to clothing (Compl. ¶32). These photographs, comparing Plaintiff's and Defendant's products side-by-side, show holsters with a similar overall shape, folding strap mechanism, and placement of circular magnetic components (Compl. ¶32). The complaint alleges these products are sold through various online channels, including the Defendants' website, Amazon, and Etsy (Compl. ¶36).
IV. Analysis of Infringement Allegations
'530 Patent Infringement Allegations
| 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... | The accused product is a holster with a main body that forms an opening to receive a firearm. This is shown in the complaint's photographs. | ¶32 | col. 2:39-42 |
| a strap assembly integrally secured to the back side body... | The accused product features a strap that appears to be permanently attached to the main holster body. | ¶32 | col. 2:34-36 |
| a fastener protrusion extending from a back surface of the elongated strap... | The photographs show a circular element at the end of the strap, which is alleged to be the fastener protrusion. | ¶32 | col. 2:50-52 |
| a fastener housing extending from an outer surface of the back side of the body... | The photographs show a corresponding circular element on the main body of the accused holster, which is alleged to be the fastener housing. | ¶32 | col. 2:52-54 |
| wherein the elongated strap folds backwards and away from the upper opening... | The accused product is marketed as an IWB holster, and its design shows a strap intended to fold over a waistband for attachment. | ¶28, ¶32 | col. 2:64-65 |
| two magnets disposed within a thickness of the fastener protrusion; and a third magnet disposed within a thickness of the housing | The complaint alleges the accused products are "magnetic retention holsters" but does not provide specific details on the number or arrangement of magnets. | ¶32 | col. 2:57-60 |
| wherein engaging the two magnets with the third magnet does not obstruct the upper opening... | The complaint does not provide sufficient detail for analysis of this element. | — | col. 4:13-16 |
| wherein a combined magnetic retention strength...is strong enough to retain the gun within the body. | The complaint alleges the accused products are "poorly crafted, unsafe, and not fit for use," which raises a question about whether this limitation is met. | ¶34 | col. 4:17-20 |
- Identified Points of Contention:
- Technical Question: A primary evidentiary dispute will likely concern the specific magnetic structure. The complaint does not allege facts showing that the accused product meets the precise limitations of "two magnets" in the protrusion and a "third magnet" in the housing. The Plaintiff will need to prove this specific configuration exists in the accused products.
- Factual Question: The complaint's own allegation that the accused holsters are "unsafe" and "not fit for use" (Compl. ¶34) may be used by the defense to argue that the accused products do not meet the claim limitation requiring a "magnetic retention strength...strong enough to retain the gun within the body."
D'451 Patent Infringement Allegations
The complaint alleges that the accused holsters are "confusingly similar" to the Plaintiff's products and patented designs (Compl. ¶34, ¶42). For design patents, the legal test is whether an "ordinary observer," taking into account the prior art, would be deceived into purchasing the accused product believing it to be the patented design. The infringement allegation is primarily supported by the side-by-side photographic comparisons provided in the complaint (Compl. ¶32). The analysis will turn on a visual comparison of the overall ornamental appearance of the accused holster against the figures in the '451 patent.
V. Key Claim Terms for Construction
The Term: "integrally secured" ('530 Patent, Claim 1)
- Context and Importance: This term defines the connection between the strap and the holster body. Its construction is critical because if it is construed to mean "formed from a single, continuous piece of material," products with a stitched-on strap might not literally infringe.
- Evidence for a Broader Interpretation: The term is not explicitly defined in the patent, which may support an interpretation that it means "permanently attached as a single functional unit," regardless of the method of attachment.
- Evidence for a Narrower Interpretation: The patent figures, particularly Figures 2 and 3, appear to depict the strap assembly and the body as being formed from one continuous piece of material ('530 Patent, Figs. 2-3). The description of the strap assembly being "integrally attached" to the body could be read in light of these figures to imply a single-piece construction ('530 Patent, col. 2:34-36).
The Term: "two magnets" ('530 Patent, Claim 1)
- Context and Importance: This is a precise numerical limitation. Proving literal infringement requires evidence that the accused "fastener protrusion" contains exactly two magnets, not one, three, or a single ring-shaped magnet.
- Intrinsic Evidence for Interpretation: The claim language is facially unambiguous. The specification reinforces this narrow reading by stating, "The system 201 is further provided with 2 magnets 217 disposed within the thickness of the protrusion 219" ('530 Patent, col. 2:57-59). Practitioners may focus on this term because such explicit numerical limitations are often difficult to overcome with arguments for equivalence.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that the individual defendants, Johnston and Cheal, induced the corporate defendants (Her Tactical and E&R) to infringe by directing their activities (Compl. ¶¶48-49). This is based on allegations that they jointly manage and control the companies as a "family business" (Compl. ¶45).
- Willful Infringement: The complaint alleges willful infringement based on both pre-suit and post-suit conduct. It alleges that Defendants obtained and copied Plaintiff's holster samples (Compl. ¶54), received a formal notice of infringement on August 19, 2022 (Compl. ¶30), and subsequently confirmed their awareness of the patent while refusing to cease sales (Compl. ¶31). The allegation that Defendants advertised their product as "patent pending" may also be used to support an inference of deliberate infringement or an attempt to conceal it (Compl. ¶¶29, 57).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue for the utility patent will be one of technical proof: can the Plaintiff produce evidence that the accused holsters contain the highly specific configuration of "two magnets" in the strap's protrusion and a "third magnet" in the body's housing, as explicitly required by the claim language? A failure to prove this precise structure could be fatal to the literal infringement claim.
- For the design patents, the case will turn on a question of visual deception: would an ordinary observer, viewing the accused Her Tactical holster in the context of other holsters on the market, be deceived into thinking it is the Plaintiff's patented design? This will involve a close comparison of the overall aesthetic impression of the products.
- A significant factual dispute will likely surround the issue of willfulness: do the complaint's allegations—involving a prior business relationship, missing product samples, and an explicit refusal to cease sales after receiving notice—constitute the type of egregious conduct required to justify enhanced damages?