DCT

1:22-cv-00121

JM4 Tactical v. her Tactical

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:22-cv-00121, D. Utah, 08/28/2023
  • Venue Allegations: Venue is alleged to be proper in the District of Utah because each Defendant resides in the district, has committed alleged acts of infringement in the district, and has a regular and established place of business in the district.
  • Core Dispute: Plaintiffs allege that Defendants’ "Her Tactical Holsters," an inside-the-waistband magnetic retention holster, infringe one of Plaintiffs' utility patents and four of their design patents.
  • Technical Context: The technology at issue relates to firearm holsters, specifically inside-the-waistband (IWB) holsters that use magnets for retention and attachment to clothing, offered as an alternative to traditional clip-based designs.
  • Key Procedural History: The complaint alleges that Plaintiffs provided an infringement notice to Defendants on August 19, 2022, regarding at least the utility patent. It further alleges that Defendants were already aware of the patent registration and declined to cease and desist from their allegedly infringing activities.

Case Timeline

Date Event
2016-04-26 Priority Date for U.S. Patent No. D788,451
2016-10-05 Priority Date for U.S. Patent No. D811,731
2016-10-28 Priority Date for U.S. Patent No. 9,784,530
2017-06-06 U.S. Patent No. D788,451 Issues
2017-06-21 Priority Date for U.S. Patent No. D836,329
2017-10-10 U.S. Patent No. 9,784,530 Issues
2017-12-20 Priority Date for U.S. Patent No. D841,979
2018-03-06 U.S. Patent No. D811,731 Issues
2018-12-25 U.S. Patent No. D836,329 Issues
2019-03-05 U.S. Patent No. D841,979 Issues
2021-09-21 Defendants allegedly begin soliciting pre-order sales
2022-01-18 Defendants allegedly begin advertising holsters online
2022-08-19 Plaintiffs allegedly provide infringement notice to Defendants
2023-08-28 First Amended Complaint Filed

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 (’530 Patent)

The Invention Explained

  • Problem Addressed: The patent’s background section identifies the "limited use and weight" of conventional holsters, noting their "bulkiness" can restrict a user's ability to conceal a firearm and may deter individuals from carrying one (’530 Patent, col. 1:21-26).
  • The Patented Solution: The invention is a holster system designed to be less bulky than traditional models. It features a main body to hold the firearm and an integrated strap assembly that folds over the user's waistband or clothing (’530 Patent, col. 2:35-39). This strap is secured not by a conventional clip, but by a "fastener protrusion" on the strap that fits into a "fastener housing" on the holster body, with magnets embedded in both components to provide the retention force (’530 Patent, col. 2:50-64).
  • Technical Importance: This design provides a method for securing a holster that avoids the profile and rigidity of a traditional belt clip, potentially increasing comfort and concealability (’530 Patent, col. 1:21-24).

Key Claims at a Glance

  • The complaint asserts independent Claim 1 (’530 Patent, col. 3:15-4:20; Compl. ¶11.i).
  • Essential elements of independent Claim 1 include:
    • A body with an upper opening for the gun and a lower opening.
    • A strap assembly "integrally secured" to the back side of the body.
    • The strap assembly comprises an "elongated strap," a "fastener protrusion" on the strap, and a "fastener housing" on the body.
    • The strap folds backwards to engage the protrusion and housing.
    • Two magnets within the fastener protrusion and a third magnet within the housing.
    • The engagement of the magnets does not obstruct the upper opening or hinder gun removal.
    • The "combined magnetic retention strength" is "strong enough to retain the gun within the body."
  • The complaint reserves the right to assert dependent claims (Compl. ¶11.i).

U.S. Patent No. D788,451 - “Holster”

Issued June 6, 2017 (’451 Patent)

The Invention Explained

  • Problem Addressed: As a design patent, the '451 Patent does not articulate a technical problem. It protects the ornamental, non-functional appearance of a product.
  • The Patented Solution: The patent claims "[t]he ornamental design for a holster, as shown and described" (’451 Patent, Claim). The figures depict a specific aesthetic for an IWB holster characterized by a smooth, contoured body, a relatively narrow strap extending from the top, and distinct circular regions indicating the placement of the fastener components. FIG. 10 of the patent is particularly illustrative, showing the design in its folded, "as-worn" configuration, which defines its visual profile during use.
  • Technical Importance: The claimed design provides a unique visual appearance for a magnetic retention holster, distinguishing it from other holsters on the market.

Key Claims at a Glance

  • The complaint asserts the single claim of the '451 Patent (Compl. ¶53).
  • The claim protects the overall ornamental design of the holster as depicted in the patent's ten drawing figures.

Multi-Patent Capsule: Additional Design Patents

  • U.S. Patent No. D811,731 (“Gun holster,” issued March 6, 2018): This patent protects an alternative ornamental design for a gun holster. The design features a distinct profile with a more angular body shape and a different contour where the strap meets the main body compared to the '451 patent. The complaint alleges the "Her Tactical Holsters" infringe its single claim covering the design shown in the figures (Compl. ¶53).
  • U.S. Patent No. D836,329 (“Gun holster,” issued December 25, 2018): This patent protects another ornamental design for a gun holster. This design is characterized by a rectangular loop at the top of the strap, creating a different visual impression from the prior designs. The complaint alleges the "Her Tactical Holsters" infringe its single claim covering the design shown in the figures (Compl. ¶53).
  • U.S. Patent No. D841,979 (“Gun holster,” issued March 5, 2019): This patent protects a further ornamental design for a gun holster, featuring a wider, rounded strap that folds over the top of the holster body. The complaint alleges the "Her Tactical Holsters" infringe its single claim covering the design shown in the figures (Compl. ¶53).

III. The Accused Instrumentality

Product Identification

  • The accused products are "IWB magnetic retention holsters" sold by Defendants under the name "Her Tactical Holsters" (Compl. ¶26).

Functionality and Market Context

  • The complaint alleges these are inside-the-waistband holsters that use a magnetic system for retention and attachment (Compl. ¶26). Defendants are alleged to have advertised that the holsters can be secured in various ways, including to the front of a bra (Compl. ¶¶24-25). The complaint includes photographs comparing the accused holsters to Plaintiffs' products, showing holsters of a similar shape and construction with a folding strap and magnetic closure. This is illustrated in a set of four representative photographs comparing the parties' products (Compl. ¶30). The products are allegedly marketed as "brand-new", "revolutionary", and "patent pending" and sold through numerous online channels, including the Her Tactical website, Etsy, and Amazon (Compl. ¶¶34, 46).

IV. Analysis of Infringement Allegations

’530 Patent Infringement Allegations

The complaint alleges that the Her Tactical Holsters literally, or equivalently, meet all the requirements of the '530 patent’s claims (Compl. ¶50). It does not provide an element-by-element chart, but the core allegations can be summarized as follows:

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 Her Tactical Holster has a main body that receives a firearm. ¶¶26, 30 col. 2:39-42
a strap assembly integrally secured to the back side body... an elongated strap extending from... the back side of the body The accused holster features a folding strap that is part of the overall construction, as shown in product photographs. ¶¶30, 50 col. 2:35-37
a fastener protrusion extending from a back surface of the elongated strap; and a fastener housing extending from an outer surface of the back side of the body... The accused holster's strap and body have corresponding parts of a magnetic closure system that engage when the strap is folded. ¶¶30, 50 col. 2:50-53
wherein the elongated strap folds backwards and away from the upper opening to cause the fastener protrusion and the fastener housing to engage The strap on the accused holster is designed to fold over clothing to secure the holster in place. ¶¶24, 30 col. 2:65-3:2
two magnets disposed within a thickness of the fastener protrusion; and a third magnet disposed within a thickness of the housing The accused holster uses a magnetic retention system to secure the strap to the body. ¶¶26, 30 col. 2:57-61
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... The magnetic closure on the accused holster is located on the strap, away from the opening where the firearm is drawn. ¶¶30, 50 col. 4:13-17
wherein a combined magnetic retention strength... is strong enough to retain the gun within the body The accused holster is advertised for the purpose of securely carrying a firearm. ¶¶25, 36 col. 4:18-20

Design Patent Infringement Allegations

For the '451, ’731, ’329, and ’979 patents, the complaint alleges that the accused Her Tactical Holsters are "substantially similar" to the claimed ornamental designs (Compl. ¶53). The primary evidence offered for this allegation is a series of side-by-side photographs of the parties' products, which are intended to show a "confusingly similar" overall visual appearance (Compl. ¶¶30, 32). The legal question will be whether an ordinary observer, giving the degree of attention a purchaser usually gives, would be deceived into purchasing the accused product, believing it to be the patented design.

Identified Points of Contention

  • Technical Question (’530 Patent): The complaint alleges both that the accused product infringes the claim limitation requiring the magnetic retention to be "strong enough to retain the gun" (Compl. ¶¶50, 11.i), and also that the accused holsters are "poorly crafted, unsafe, and not fit for use" (Compl. ¶43). This raises the question of what evidence will be presented to simultaneously prove the product meets the claim's functional strength requirement for infringement purposes while also being unsafe for liability purposes.
  • Scope Question (’530 Patent): The complaint does not provide detailed structural information about the accused product's closure system. A key question will be whether that system has structures that meet the definitions of a "fastener protrusion" and a "fastener housing," as those terms are used in the patent, or if the accused system operates in a way that falls outside this claimed structure.

V. Key Claim Terms for Construction

  • The Term: "integrally secured" (from Claim 1)

    • Context and Importance: This term defines the required relationship between the strap assembly and the holster body. Its construction will determine whether methods like sewing a separately manufactured strap to the body meet the limitation, or if a more unified construction is required. Practitioners may focus on this term because the method of attachment is a fundamental aspect of the holster's construction.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent repeatedly describes the strap assembly as "integrally attached" or "integrally secured" to the body, without specifying the method of attachment, which may suggest that any permanent or non-removable connection is sufficient (’530 Patent, col. 2:36, col. 3:20).
      • Evidence for a Narrower Interpretation: The figures appear to show the strap and body as being formed from continuous pieces of material rather than being stitched together as separate components (’530 Patent, Figs. 2-3). A defendant could argue this visual representation limits the term to a more unified construction.

  • The Term: "strong enough to retain the gun within the body" (from Claim 1)

    • Context and Importance: This is a functional limitation that defines the performance standard for the magnetic closure. Its construction is critical because it lacks a precise numerical value, making its scope open to interpretation and reliant on extrinsic evidence of what one of ordinary skill in the art would understand.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification provides a general functional description, stating the magnets "cause retention on the gun so the gun will not fall out" (’530 Patent, col. 2:63-64). This could support a reading where any magnetic force that reasonably prevents the gun from being dislodged under normal conditions meets the claim.
      • Evidence for a Narrower Interpretation: There is no specific language in the patent to support a narrower construction, but a defendant may argue the term is indefinite if a person of ordinary skill in the art cannot determine with reasonable certainty when this performance standard is met.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that individual defendants Johnston and Cheal induced infringement by Defendant E&R. The allegations state they took action "intended to cause and [that] led to the literal or direct infringement" and that E&R "carried out the actions induced upon it" by them (Compl. ¶¶60-61).
  • Willful Infringement: The willfulness claim is based on allegations that Defendants had knowledge of Plaintiffs' patents. The complaint pleads that Defendants obtained and copied Plaintiffs' products and continued to sell the accused holsters after receiving a notice of infringement on August 19, 2022 (Compl. ¶¶28-29, 77, 82).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A central issue will be one of evidentiary proof for the '530 utility patent: Can Plaintiffs demonstrate that the "Her Tactical Holster" both (a) possesses the specific structure of a "fastener protrusion" engaging a "fastener housing" and (b) meets the functional requirement that its magnetic force is "strong enough to retain the gun," particularly in light of the complaint's own allegations that the accused product is "poorly crafted" and "unsafe"?
  • For the design patents, the key question will be a visual comparison under the ordinary observer test: Is the overall ornamental appearance of the accused "Her Tactical Holster," as shown in the complaint's photographic evidence, substantially the same as the specific designs claimed in the four asserted design patents, such that it would deceive a potential purchaser?
  • A significant legal question will concern the scope of liability: Will Plaintiffs be able to pierce the corporate veil by proving their alter ego allegations, thereby making the individual defendants Johnston and Cheal personally liable for the alleged patent infringement of the corporate entity E&R?