SALT LAKE CITY (LN) — JM4 Tactical LLC moved Thursday for partial summary judgment against Her Tactical and its owner, Vicky Arlene Johnston, arguing that the competing women's-targeted magnetic gun holster maker cannot challenge the validity of six patents it never retained an expert to attack — and that Johnston cannot avoid personal liability for the accused acts of designing, selling, and distributing the accused holster merely by characterizing those acts as taken on behalf of her company.
The motion, filed in the U.S. District Court for the District of Utah, targets two discrete issues the patent holder says can be resolved as a matter of law before trial. The first is the collapse of Her Tactical's invalidity defenses across two utility patents and four design patents. The second is Johnston's personal exposure for every act of designing, selling, and distributing the accused holster.
On the invalidity front, JM4 argues the answer turns on a straightforward evidentiary gap. Under 35 U.S.C. § 282, defendants challenging a patent's validity must clear a clear-and-convincing-evidence bar. Her Tactical pleaded invalidity under sections 101, 102, 103, and 112, identified prior-art references, and then disclosed no expert witness. Discovery has closed. Without admissible expert testimony tying each prior-art reference to each claim element, JM4 contends, the Federal Circuit's decision in Schumer v. Laboratory Computer Systems forecloses the defense as a matter of law. The court in Schumer held that invalidity testimony concerning anticipation must come from one skilled and must identify each claim element, state the witness's interpretation of the claim element, and explain in detail how each claim element is disclosed in the prior-art reference.
JM4 also argues that Her Tactical's principal argument — that the accused holster uses fewer than three magnets and therefore cannot infringe the '530 Patent under the doctrine of equivalents — is a non-infringement theory, not an invalidity theory, and cannot be bootstrapped into a § 282 defense. Her Tactical's own non-infringement contentions describe the accused product as containing a single magnet integrated into each end of the flap such that when the flap is folded, the magnets engage each other to secure the holster relative to the undergarment strap.
The personal-liability argument against Johnston rests largely on her own deposition testimony. According to the motion, Johnston testified that she designed the accused product on behalf of E&R — the operating entity behind Her Tactical — and that the same was true for all of the accused acts. JM4 argues that testimony, combined with deposition admissions that Johnston personally accepted customer payments through her personal Venmo account, used her personal phone for customer transactions, and directed customers to retrieve holsters from her home, places her within the Federal Circuit's rule in Wordtech Systems v. Integrated Networks Solutions that corporate officers who actively assist with infringement may be personally liable regardless of whether the corporation is their alter ego.
Johnston's knowledge of the patents is also at issue. JM4 contends that knowledge is established by Johnston's own admissions. Defendants admitted in three successive versions of their answer that Johnston was aware of JM4's utility patent rights no later than August 22, 2022 — the date a freedom-to-operate analysis was addressed to Vicky Johnston and Her Tactical by a patent agent. Johnston separately testified at deposition that she first reviewed inventor James Chadwick Myers's patent claim in August 2021, roughly nine months before Her Tactical made its first commercial sale in late May 2022. As to the second utility patent, Johnston confirmed under oath that she was aware of it by September 2023.
JM4 is not asking the court to resolve direct infringement, willfulness, or patent-by-patent inducement intent at this stage. Those questions, along with defendant Blake Cheal's individual liability, remain reserved for trial.
Her Tactical's gross revenue product reached at least $48,000 as of November 2023, according to Johnston's own deposition testimony — a figure JM4 says it intends to supplement through trial.