DCT
2:17-cv-08411
Intl Designs Corp LLC v. Hair Art Int'l Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: International Designs Corporation, LLC (Florida) and HAIRTALK GmbH (Germany)
- Defendant: Hair Art Intl, Inc. (California)
- Plaintiff’s Counsel: Savur Threadgold LLP; Kain Spielman, P.A.
- Case Identification: 2:17-cv-08411, C.D. Cal., 11/17/2017
- Venue Allegations: Venue is alleged to be proper based on Defendant having a regular and established place of business within the Central District of California.
- Core Dispute: Plaintiffs allege that Defendant’s INVISI-TAB TOPPER hair extensions infringe a patent related to a method for manufacturing thin, tape-in hair extensions that appear to grow naturally from the scalp.
- Technical Context: The technology concerns tape-in hair extensions, a segment of the professional beauty market focused on creating products that are lightweight, non-damaging, and visually indistinguishable from natural hair.
- Key Procedural History: The complaint notes that Plaintiffs’ counsel sent a cease and desist letter, including a copy of the patent-in-suit, to Defendant in March 2017. Defendant allegedly denied infringement and continued its accused activities, which may form the basis for a willfulness claim.
Case Timeline
| Date | Event |
|---|---|
| 2008-02-08 | '500 Patent Priority Date (German Utility Model Application) |
| 2013-05-07 | '500 Patent Issue Date |
| 2017-02-XX | Defendant allegedly begins selling accused INVISI-TAB TOPPER product |
| 2017-03-XX | Plaintiffs send cease and desist letter to Defendant |
| 2017-11-17 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 8,434,500, “HAIR BAND,” issued May 7, 2013
The Invention Explained
- Problem Addressed: The patent describes prior art hair extensions as being comparatively thick, laborious to produce, and prone to matting with the wearer's natural hair. These issues arose from methods like knotting hairs together in strands or knitting them into a net, which created bulk at the attachment point and could result in an unnatural appearance. (’500 Patent, col. 2:4-10, 2:37-48).
- The Patented Solution: The invention proposes a hair band constructed from a thin, strip-shaped elastic foil. Individual hairs are "stitched" through this foil and then secured with a glue-bond on the back side of the foil only. This construction method allows the hairs to emerge from the front of the foil in a way that mimics natural hair growth from the scalp, creating a very thin and flat profile. (’500 Patent, Abstract; col. 3:3-9; Fig. 3). The fixed ends on the back side are also designed to run in the same direction as the main hair, further reducing bulk and potential matting. (’500 Patent, col. 3:7-9).
- Technical Importance: This design aimed to provide a hair extension that is easier to manufacture, thinner, and has a more natural external appearance than previous methods that relied on netting or knotted strands. (’500 Patent, col. 4:1-12).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 18. (Compl. ¶26).
- Independent Claim 1 requires:
- A strip-shaped carrier structure having an elastic foil forming an outer layer.
- Several hairs with ends fixed to the carrier, extending straight through.
- The ends of the hairs are individually stitched through the foil in a two-dimensional distribution.
- The hairs are fixed to the carrier structure by a glue-bond to the back side of the foil only.
- The fixed ends of the hairs, on the back side of the foil, run straight through in the main direction of the hairs.
- The complaint reserves the right to assert dependent claims 2-17. (Compl. ¶29).
III. The Accused Instrumentality
Product Identification
The INVISI-TAB TOPPER hair extensions sold by Defendant HAIR ART. (Compl. ¶1).
Functionality and Market Context
The accused product is a tape-in hair extension system sold to salons and stylists. (Compl. ¶¶13, 23). The complaint alleges that the product is a "special type of hair extension because the hair comes out of the hair extension tape or hair band similar to natural hair falling away from the salon consumer's scalp." (Compl. ¶25). The complaint includes a Facebook picture of the accused INVISI-TAB product. (Compl. ¶24, Ex. C). It further alleges that the product's construction involves extension hair ends being "stitched through the foil" and then "fixed, attached and glued to carrier's back side." (Compl. ¶27). The complaint provides microscopic photographs of the accused product, which are alleged to show hairs protruding from the extension tape. (Compl. ¶17, Ex. E).
IV. Analysis of Infringement Allegations
'500 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a strip-shaped carrier structure having an elastic foil forming an outer layer of the carrier structure, and having a direction of main extension | The accused product is a hair band having a strip-shaped carrier of elastic foil, which may be polyurethane foil, and has a main carrier direction. | ¶26 | col. 5:40-41 |
| several hairs having ends fixed to the carrier structure, and extending straight through from the carrier structure in a main direction running perpendicular to the direction of main extension... | Extension hairs run straight through the carrier in a main hair extension direction which is perpendicular to the length or main extension direction of the carrier. | ¶27, ¶6(2) | col. 5:37-39 |
| wherein the ends of the hairs are individually stitched through the foil forming the outer layer of the carrier structure, the hairs individually stitched through in a two-dimensional distribution of stitching through points | The accused product's extension hair ends are stitched through the foil as a single hair or as multiple hairs at individual stitch-through points. | ¶27 | col. 5:42-43 |
| and are fixed to the carrier structure by a glue-bond to the back side of the foil only... | Stitched-through hair ends are fixed, attached, and glued to the carrier's back side. The complaint provides annotated magnified photographs allegedly showing this construction. | ¶27, ¶22, Ex. F | col. 5:47-49 |
| the fixed ends of the hairs, at the back side of the foil, running straight through in the main direction of the hairs from the glue-bond of their ends through the foil... | The glued extension hair ends run in the same direction as the extension hair falling from the carrier. | ¶28(c) | col. 6:49-56 |
Identified Points of Contention
- Scope Questions: The case may turn on the meaning of "individually stitched." Does this term require a process analogous to sewing with a needle, or could it be construed more broadly to cover any method of perforating the foil and passing individual hairs through?
- Technical Questions: What evidence demonstrates that the hairs in the accused product are fixed by a glue-bond "to the back side of the foil only"? This negative limitation is a significant hurdle for infringement. The defense may argue that adhesive or structural elements on the front or within the foil also contribute to fixation, thereby avoiding this limitation. The annotated photographs in Exhibit F will be critical evidence in this factual determination (Compl. ¶22).
V. Key Claim Terms for Construction
The Term: "individually stitched"
Context and Importance: This term describes the core manufacturing step of the invention. Its definition is critical because infringement will depend on whether the defendant's method of passing hairs through the carrier foil falls within the scope of "stitching." Practitioners may focus on this term because it is a specific verb of action whose technical meaning is not explicitly defined in the patent.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification describes the result as hairs emerging from the foil at "stitching through points," but does not detail the specific tool or mechanism used for the stitching action. (e.g., ’500 Patent, col. 5:42-47). This could support an interpretation covering any method that achieves this structure.
- Evidence for a Narrower Interpretation: The patent contrasts its invention with prior art methods of "knotted" hairs and hairs "knitted to a carrier netting." (’500 Patent, col. 2:27, 2:62). The use of the specific term "stitched" in contrast to these other terms of art could support an argument that it carries a narrower, distinct meaning, potentially one closer to its ordinary definition involving sewing.
The Term: "fixed... by a glue-bond to the back side of the foil only"
Context and Importance: This negative limitation ("only") is a powerful potential defense against infringement. If the accused product uses any other method or location for fixation in addition to a back-side glue-bond, it may fall outside the claim's scope.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party arguing for infringement might focus on the patent's overall objective of creating a thin hair band, arguing that the "only" limitation should be interpreted in light of that purpose and that insignificant, non-fixing adhesive elsewhere should not defeat the claim. (’500 Patent, col. 4:3-5).
- Evidence for a Narrower Interpretation: The plain language of the claim is explicitly limiting. The patent repeatedly emphasizes that the hairs are fixed "to the back side of the foil only," and this is presented as a key distinction that achieves the invention's thin profile. (’500 Patent, Claim 1, col. 6:52-53). This suggests the term was intentionally chosen to be restrictive.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement. The factual basis for this claim is Defendant's certification program for salons, its website (Invisi-Tab.com), Facebook pages, and YouTube videos, which allegedly teach and encourage stylists to apply the accused products in an infringing manner. (Compl. ¶¶16, 38, 8:1-2).
- Willful Infringement: The complaint alleges willful infringement based on Defendant's continued sale of the accused product after receiving a cease and desist letter from Plaintiffs' counsel in March 2017, which included a copy of the ’500 patent. (Compl. ¶¶17, 32, 37).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim construction and factual proof: can the term "individually stitched," as used in the patent, be proven to read on the manufacturing process of the accused INVISI-TAB product? This will be closely tied to an evidentiary question of whether the hairs are fixed "to the back side of the foil only," a critical limitation that will depend heavily on forensic analysis of the accused product.
- A key legal question will be the scope of the negative limitation. The case may turn on whether the term "only" is given its strict, absolute meaning, or if it can be interpreted to permit other incidental or non-functional adhesive elements without defeating the infringement claim. The outcome of this construction could be dispositive for infringement.