DCT
2:21-cv-00024
Schmeisser GmbH v. Ac Unity Doo
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Schmeisser GmbH (Germany)
- Defendant: AC-Unity d.o.o (Bosnia); RTG Parts, LLC (Wyoming)
- Plaintiff’s Counsel: Welborn Sullivan Meck & Tooley, P.C.; Carson LLP
- Case Identification: 2:21-cv-00024, D. Wyo., 10/28/2022
- Venue Allegations: Venue is alleged to be proper in the District of Wyoming because Defendant RTG Parts, LLC resides and has committed acts of infringement there. As a foreign company, Defendant AC-Unity may be sued in any district.
- Core Dispute: Plaintiff alleges that Defendants’ high-capacity "quad stack" firearm magazines infringe a patent related to the internal housing structure that enables cartridges to transition from a four-column stack to a two-column feed.
- Technical Context: The technology concerns high-capacity firearm magazines, which aim to increase a firearm's operational time between reloads, a significant factor in military, law enforcement, and sport shooting applications.
- Key Procedural History: The complaint alleges that Defendant RTG Parts, LLC previously filed a petition for Inter Partes Review (IPR) against the patent-in-suit, which the Patent Trial and Appeal Board (PTAB) denied to institute, finding RTG failed to establish a reasonable likelihood of prevailing on any challenged claim. The complaint also notes that the court previously entered a preliminary injunction against RTG, and that Plaintiff provided both Defendants with written notice of the patent upon its issuance.
Case Timeline
| Date | Event |
|---|---|
| 2018-01-30 | '045 Patent Priority Date |
| 2019-01-21 | Plaintiff notifies AC-Unity of pending patent applications |
| 2020-12-15 | U.S. Patent No. 10,866,045 ('045 Patent) Issues |
| 2020-12-23 | Plaintiff notifies Defendants of issued '045 Patent |
| 2021-10-21 | Defendant RTG files Petition for Inter Partes Review of '045 Patent |
| 2022-04-27 | PTAB denies institution of Inter Partes Review |
| 2022-H1 | Accused Products offered for sale by Target Sports USA |
| 2022-10-28 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,866,045 - "Housing for a Cartridge Magazine for a Firearm and Cartridge Magazine for a Firearm"
- Issued: December 15, 2020
The Invention Explained
- Problem Addressed: The patent seeks to improve high-capacity "stack-type" firearm magazines. It notes that increasing capacity from a standard 20-30 rounds to 60 or more rounds significantly enhances a firearm's "operating efficiency" by reducing the frequency of reloads. However, prior art high-capacity magazines were either cumbersome (like drum magazines) or, if using a stacked design, were vulnerable to dirt, wear, and failure, particularly if they used internal partition walls that could cause cartridges to jam during feeding ('045 Patent, col. 1:41-58, col. 2:50-58).
- The Patented Solution: The invention is a magazine housing with a specific internal geometry that transitions from a wide lower section holding four columns of cartridges (a "quad stack") to a narrow upper section that feeds two columns of cartridges into the firearm. The key is a smooth, partition-less "transitional region" where the cartridges are guided by the shape of the housing walls, including internal protrusions and curved paths, to "roll down—quasi like in a zipper system" into a two-column stack ('045 Patent, Abstract; col. 3:42-58). This design claims to provide reliable feeding without the jamming risks associated with partition walls.
- Technical Importance: The design aims to provide the high-capacity benefits of a 60-round magazine in a more streamlined and reliable package than existing drum magazines or earlier stacked designs ('045 Patent, col. 2:25-29).
Key Claims at a Glance
- The complaint asserts independent claim 1.
- Essential elements of independent claim 1 include:
- A housing for a cartridge magazine with an interior space consisting of a first region, a second region, and a transitional region connecting them.
- The housing has front, rear, and side walls, with the front and rear walls extending along curved paths.
- The first region is configured to accommodate four stacks of cartridges "arranged directly adjoining one other."
- The second region is configured to accommodate two stacks of cartridges "arranged directly adjoining one other."
- The inside surface of the front wall has a "first protrusion" extending from the transitional region into the first and second regions.
- The inside surface of the rear wall has a "second protrusion" extending from the first region to an end in or near the transitional region.
- The complaint reserves the right to assert dependent claims 11, 12, 13-15, and 17-19 (Compl. ¶134, ¶144).
III. The Accused Instrumentality
Product Identification
The complaint identifies two accused products:
- The "AC-AK47 60 Round Quad Stack Magazine 7.62 x 39" ("Accused Product") (Compl. ¶19).
- The "AR-15 M4 223 Remington/5.56 NATO 60 Round Quad Stack Magazine" ("AR Accused Product") (Compl. ¶19).
Functionality and Market Context
- The complaint alleges both products are high-capacity firearm magazines that hold 60 rounds of ammunition by using a "quad stack" design that transitions to a double-stack feed (Compl. ¶31-33, ¶94-96). The complaint references an exhibit showing Defendant RTG advertising the Accused Product as a "Quad Stack" magazine (Compl. ¶42, Ex. 2).
- The core accused functionality is the internal housing structure. The complaint alleges this structure contains a wide first region for four cartridge columns, a narrower second region for two columns, and a transitional region between them, along with internal protrusions on the front and rear walls that guide the cartridges (Compl. ¶30-33, ¶45-46, ¶93-96, ¶107-108).
- The complaint alleges Defendant AC-Unity manufactures, sells, and imports the products into the United States for sale to distributors and individual customers, and that Defendant RTG also imported, used, and sold the Accused Product (Compl. ¶19-23). The complaint also points to evidence of the products being offered for sale online in the U.S. (Compl. ¶79, Ex. 5).
IV. Analysis of Infringement Allegations
'045 Patent Infringement Allegations (re: Accused Product for AK-style rifle)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a housing for a cartridge magazine for a firearm... an interior space consisting of a first region and a second region, with a transitional region... which connects the first region and the second region | The Accused Product is a housing for a cartridge magazine whose interior space has a first (quad stack) region, a second (double stack) region, and a transitional region connecting them. | ¶25, ¶30 | col. 13:1-11 |
| the first region being configured for accommodating four stacks of cartridges arranged directly adjoining one other | The Accused Product's first region corresponds to the quad stack region where the housing holds four columns of cartridges. | ¶31 | col. 13:25-29 |
| the second region being configured for accommodating two stacks of cartridges arranged directly adjoining one other | The Accused Product's second region corresponds to the double stack region where the housing holds two columns of cartridges. | ¶32 | col. 13:30-34 |
| the inside surface of the front wall has a first protrusion which protrudes... into the interior space... originating from the transitional region at least partially into the first region and also at least partially into the second region | The inside surface of the Accused Product's front wall has a first protrusion that extends along the Z-axis, starting in the transitional region and extending through the first and second regions. | ¶45 | col. 13:35-42 |
| the inside surface of the rear wall has a second protrusion which protrudes... into the interior space... and which along the Z-axis features a start in the first region and an end in the transitional region or in the second region | The inside surface of the Accused Product's rear wall has a second protrusion that extends along the Z-axis, starting in the first region and terminating in the transitional region. | ¶46 | col. 13:42-49 |
'045 Patent Infringement Allegations (re: AR Accused Product for AR-style rifle)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a housing for a cartridge magazine for a firearm... an interior space consisting of a first region and a second region, with a transitional region... which connects the first region and the second region | The AR Accused Product is a housing for a cartridge magazine whose interior space has a first (quad stack) region, a second (double stack) region, and a transitional region connecting them. | ¶88, ¶93 | col. 13:1-11 |
| the first region being configured for accommodating four stacks of cartridges arranged directly adjoining one other | The AR Accused Product's first region corresponds to the quad stack region where it holds four columns of cartridges. | ¶94 | col. 13:25-29 |
| the second region being configured for accommodating two stacks of cartridges arranged directly adjoining one other | The AR Accused Product's second region corresponds to the double stack region where it holds two columns of cartridges. | ¶95 | col. 13:30-34 |
| the inside surface of the front wall has a first protrusion which protrudes... into the interior space... originating from the transitional region at least partially into the first region and also at least partially into the second region | The AR Accused Product's front wall has a first protrusion extending along the Z-axis, starting in the transitional region and extending through the first and second regions. | ¶107 | col. 13:35-42 |
| the inside surface of the rear wall has a second protrusion which protrudes... into the interior space... and which along the Z-axis features a start in the first region and an end in the transitional region or in the second region | The AR Accused Product's rear wall has a second protrusion extending along the Z-axis, starting in the first region and terminating in the transitional region. | ¶108 | col. 13:42-49 |
Identified Points of Contention
- Scope Questions: The claims recite specific start and end points for the internal "protrusions" (e.g., the first protrusion "originating from the transitional region," the second having a "start in the first region and an end in the transitional region"). The litigation may focus on whether the accused products' internal structures meet these precise geometric and positional requirements.
- Technical Questions: The patent emphasizes a "zipper system" functionality where cartridges smoothly roll from four to two stacks ('045 Patent, col. 3:42-45). A key technical question will be whether the accused magazines achieve their quad-to-double stack transition in the manner claimed by the patent, or through a technically distinct mechanism that falls outside the claim scope. The complaint's detailed allegations of specific dimensions (e.g., ¶54-57, ¶117-120) suggest that the precise geometry of the transition will be a focal point.
V. Key Claim Terms for Construction
The Term: "transitional region"
- Context and Importance: This term defines the critical area of the invention where the four-column stack of cartridges is funneled into a two-column stack. The definition of where this region begins and ends, and what structural characteristics it must have, is central to determining the scope of the claims and whether the accused products infringe.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself defines the term functionally as the region which "connects the first region and the second region with one another" ('045 Patent, col. 13:9-11). This could support a less restrictive definition based on its connective function.
- Evidence for a Narrower Interpretation: The specification describes this region as the place where cartridges "roll down—quasi like in a zipper system—on their shell surfaces" ('045 Patent, col. 3:42-45). Defendants may argue this "zipper system" language limits the term to a specific type of smooth, rolling transition, potentially excluding other methods of funneling cartridges.
The Term: "arranged directly adjoining one other"
- Context and Importance: This term is used to describe how the cartridges are stacked in both the four-stack and two-stack regions. It is critical for distinguishing the claimed invention from prior art designs that might use partition walls to separate cartridge columns. Practitioners may focus on this term because infringement depends on the accused products lacking such partitions.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The common meaning of "adjoining" suggests simple contact, which the complaint alleges occurs in the accused products (Compl. ¶31, ¶94).
- Evidence for a Narrower Interpretation: The specification clarifies that this means the cartridges "directly touch each other, at least in partial areas of their shell surfaces" ('045 Patent, col. 10:35-37). This detail could be used to frame arguments around the specific nature and extent of contact required between cartridges in the stack.
VI. Other Allegations
Indirect Infringement
The complaint focuses on direct infringement but alleges facts that could support an indirect infringement theory. It states that AC-Unity sells and imports the accused products to "distributors and individual customers" and that these distributors then sell the products to customers (Compl. ¶20). These allegations may lay the groundwork for a claim of induced infringement against AC-Unity for knowingly causing its distributors and customers to infringe.
Willful Infringement
The complaint makes explicit allegations of willful infringement against both defendants. The basis for willfulness includes alleged pre-suit and post-suit knowledge of the '045 patent and infringement. Specific facts cited include: Plaintiff providing written notification of the issued patent to both defendants on December 23, 2020 (Compl. ¶14); RTG's continued infringement until a preliminary injunction was issued (Compl. ¶136-137); and both defendants' continued infringement even after the PTAB's decision to deny institution of RTG's IPR petition (Compl. ¶139, ¶146-147).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction and scope: can the term "transitional region," as described in the patent with its "zipper system" analogy, be construed to read on the specific internal geometry and feeding mechanism of the AC-Unity magazines? The outcome will depend on whether the court adopts a broader functional definition or a narrower one tied to the specific mechanics described in the specification.
- A second central question will be one of factual infringement: assuming the claims are construed, a key evidentiary battle will likely concern the precise location and function of the "protrusions" within the accused magazines. The case may turn on whether these structures meet the specific positional limitations recited in claim 1 (e.g., starting and ending in the claimed regions).
- Finally, given the detailed allegations of pre-suit notice, a prior preliminary injunction, and continued infringement after a failed IPR challenge, a significant question for damages will be willfulness: did the defendants' alleged conduct following notice of the patent rise to the level of egregious behavior required for an enhancement of damages under 35 U.S.C. § 284?