DCT
3:18-cv-05287
Dieu v Hillwig
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Duffy Dieu d/b/a DD Machine (Washington)
- Defendant: James Gilbert Hillwig, Jr. and Hillwig Tool, LLC (Pennsylvania)
- Plaintiff’s Counsel: Mann Law Group
- Case Identification: 3:18-cv-05287, W.D. Wash., 04/11/2018
- Venue Allegations: Plaintiff alleges venue is proper because Defendants transact business and have provided products to customers within the judicial district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its "Universal Handgun Sight Pusher Tool" does not infringe Defendant's patent and that the patent-in-suit is invalid due to prior art.
- Technical Context: The technology concerns mechanical tools designed for the precise adjustment or removal of handgun sights from the gun's slide.
- Key Procedural History: This declaratory judgment action follows a cease-and-desist letter sent by Defendant's counsel to Plaintiff in March 2015. The complaint alleges that Defendant subsequently made public accusations of infringement on platforms including YouTube and Defendant's own website, and filed a formal complaint with Amazon.com, which resulted in the delisting of Plaintiff's product.
Case Timeline
| Date | Event |
|---|---|
| 2011-12-08 | Alleged public availability date of prior art sight pusher tool |
| 2013-02-20 | ’413 Patent Priority Date |
| 2014-12-16 | ’413 Patent Issue Date |
| 2015-03-24 | Defendant’s counsel sends cease-and-desist letter to Plaintiff |
| 2017-04-12 | Defendant allegedly posts comments on YouTube accusing Plaintiff of infringement |
| 2017-08-01 | Defendant allegedly files formal infringement complaint with Amazon.com |
| 2018-04-11 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,910,413 - “Sight Pushing Apparatus,”
- Patent Identification: U.S. Patent No. 8,910,413, “Sight Pushing Apparatus,” issued December 16, 2014 (’413 Patent).
The Invention Explained
- Problem Addressed: The patent describes the difficulty of realigning or replacing handgun sights, which can become misaligned from impact or wear. This task is noted as potentially difficult, especially for novices or those without specialized tools (’413 Patent, col. 1:16-23).
- The Patented Solution: The invention is a block-like apparatus designed to securely hold a handgun slide. The apparatus features a lower cavity to receive the slide and an upper cavity where the sight is positioned. A user advances a "pushing member" through a bore in the side of the block, which presses against a separate "jaw member." This jaw member then bears against the sight element, allowing for controlled lateral adjustment or removal (’413 Patent, Abstract; col. 2:49-53). A key feature is an alignment flange on the jaw member that engages a groove on the gun slide to ensure proper positioning (’413 Patent, col. 4:30-35).
- Technical Importance: The apparatus provides a stable platform and a mechanism for incremental control when applying lateral force to a sensitive component, aiming to prevent damage to the gun slide or the sight element during adjustment (’413 Patent, col. 1:24-31).
Key Claims at a Glance
- The complaint broadly references all claims of the ’413 Patent without specifying any particular ones (Compl. ¶ 1). Independent claim 1 is representative of the core invention.
- Independent Claim 1 includes the following essential elements:
- A block member with exterior walls and an interior area defining an upper and lower cavity.
- Internal side walls in the lower cavity configured to receive a gun slide.
- A first bore and a second bore extending from the exterior side walls into the upper cavity.
- A pushing member with an elongate configuration, selectively received in either bore.
- A jaw member situated in the upper cavity, adjacent to the gun slide, which is movable by the pushing member to move the sight element.
- The jaw member includes an alignment flange extending downwardly, configured to register with a complementary alignment groove on the gun slide.
- The complaint does not explicitly reserve the right to address dependent claims.
III. The Accused Instrumentality
Product Identification
- The "Universal Handgun Sight Pusher Tool" manufactured, sold, and offered for sale by Plaintiff Duffy Dieu / DD Machine (Compl. ¶¶ 10, 16).
Functionality and Market Context
- The complaint describes the accused product as a tool for adjusting sights on handguns (Compl. ¶ 10). The central allegation is that this tool is not an infringement but is instead based on, and "substantially duplicates," a design that was publicly known, used, and sold as early as December 8, 2011, more than a year before the '413 Patent's effective filing date (Compl. ¶¶ 15, 23). The complaint references an internet website listing from that date as evidence of this prior art design (Compl. ¶ 15, Ex. E). A screenshot provided in Exhibit E shows a block-like tool with a T-handle bolt for pushing a sight on a secured gun slide (Compl., Ex. E). The complaint alleges that Defendant's infringement assertions to Amazon.com led to the delisting of the product, causing a "substantial loss of sales, revenues and profits" (Compl. ¶ 13).
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. Its theory is that to the extent the ’413 Patent claims are construed to require structures beyond those shown in the alleged prior art (Exhibit E), the Plaintiff's tool does not include such structures and therefore does not infringe (Compl. ¶ 17).
’413 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality (Plaintiff's Position) | Complaint Citation | Patent Citation |
|---|---|---|---|
| a block member, comprising: opposed exterior first and second side walls... opposed top and bottom walls... | The complaint does not dispute that the accused tool is a block-like apparatus. | ¶15, Ex. E | col. 5:27-34 |
| said block member defines an interior area that includes an upper cavity... and a lower cavity... | The complaint does not dispute the accused tool has cavities for a gun slide and sight. | ¶15, Ex. E | col. 5:36-40 |
| a jaw member situated in said upper cavity adjacent the gun side... said jaw member being movable inwardly in said upper cavity when contacted by said pushing member so as to move the sight element... | The complaint alleges that if the claims require structures beyond the prior art shown in Exhibit E, its tool lacks them. The primary point of dispute may be whether the accused tool contains this specific, separate "jaw member" component. | ¶17 | col. 5:60-64 |
| wherein said jaw member includes an alignment flange extending downwardly from a bottom side thereof, said alignment flange configured to register with a complementary alignment groove on the gun slide... | The complaint asserts a general lack of infringing structures. The presence of this specific alignment flange on a jaw member in the accused tool is a potential point of factual dispute. | ¶17 | col. 5:65-col. 6:2 |
- Identified Points of Contention:
- Structural Questions: The core of the non-infringement case appears to be whether the accused Universal Sight Pusher Tool incorporates two key structures from Claim 1: (1) a distinct "jaw member" that is separate from the "pushing member," and (2) an "alignment flange" on that jaw member. The complaint alleges that its tool is a substantial duplicate of the prior art design in Exhibit E, which raises the question of whether that prior art design includes these specific claimed features (Compl. ¶ 15).
- Scope Questions: The dispute raises the question of how broadly the term "jaw member" can be interpreted. If the accused tool uses a single component that both pushes and contacts the sight, the court will need to determine if that single component can meet the claim limitations for both a "pushing member" and a "jaw member," which are recited as distinct elements in the claim.
V. Key Claim Terms for Construction
- The Term: "jaw member"
- Context and Importance: This term appears central to both the infringement and validity analyses. The patent depicts the "jaw member" (60) as a discrete component that sits between the "pushing member" (44) and the gun sight. Plaintiff's non-infringement defense may depend on arguing its tool lacks this specific element, while Defendant's infringement case would require showing the accused tool has the same or an equivalent structure. Practitioners may focus on this term because its construction could determine whether a tool with a single, direct-contact pushing bolt falls within the scope of the claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the jaw member's function as being "configured to bear against the sight element when urged by the pushing member" (’413 Patent, Abstract). Defendant could argue that any component that fulfills this function, regardless of its specific form, meets the definition.
- Evidence for a Narrower Interpretation: Claim 1 recites a "pushing member" and a "jaw member," suggesting they are structurally distinct elements. The patent's figures consistently show the jaw member (60) as a separate block from the pushing member (44) (’413 Patent, Fig. 4). The summary of the invention also describes the jaw member as a separate element situated in the upper cavity that is "urged by the pushing member" (’413 Patent, col. 2:49-53), reinforcing the idea of two separate interacting components.
VI. Other Allegations
- Indirect Infringement: This is a declaratory judgment action and does not contain allegations of indirect infringement by the Plaintiff.
- Willful Infringement: The complaint does not allege willful infringement. However, it does allege that Defendant's accusations of infringement were made "knowingly and willfully" and were false, forming the basis for counts of Lanham Act violations, fraud, and unfair competition (Compl. ¶¶ 28, 30, 32). The Plaintiff seeks attorneys' fees under 35 U.S.C. § 284, alleging the case is exceptional, which appears to be based on the Defendant's alleged bad-faith enforcement activities pre-suit (Compl., Prayer for Relief ¶ F).
VII. Analyst’s Conclusion: Key Questions for the Case
This case presents two primary questions for the court, one turning on validity and the other on infringement.
- A core issue will be one of validity in view of prior art: does the 2011 sight pusher tool, which Plaintiff alleges was publicly available (Compl., Ex. E), disclose every element of the asserted claims of the ’413 Patent, thereby rendering them anticipated or obvious? The outcome will depend on the factual evidence presented regarding the structure and public availability of that prior art tool.
- A parallel issue will be one of definitional scope for infringement: can the claim term "jaw member", which the patent illustrates as a distinct component separate from the "pushing member", be construed to read on the mechanism in Plaintiff's accused tool? The resolution of this claim construction dispute may be dispositive of the non-infringement question.