DCT
2:19-cv-02631
Jarena LLC v. Applied Lacquer Industries Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Jarena LLC (Arizona)
- Defendant: APPLIED LACQUER INDUSTRIES INC., dba APRÉS (California)
- Plaintiff’s Counsel: Quarles & Brady LLP
- Case Identification: 2:19-cv-02631, C.D. Cal., 04/05/2019
- Venue Allegations: Venue is alleged to be proper in the Central District of California because the Defendant is a California corporation that resides in the judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s Gel-X Nail Extension System infringes a patent related to a method for applying prefabricated, UV-curable artificial nails.
- Technical Context: The technology relates to the professional and consumer nail care industry, specifically methods for applying full-coverage artificial nail extensions using gel-based products and UV light for curing.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of the patent-in-suit and its alleged infringing activity via a letter dated August 29, 2017, and that Defendant’s counsel acknowledged notice in a response letter dated December 4, 2017. This pre-suit notice forms the basis for the willfulness allegation.
Case Timeline
| Date | Event |
|---|---|
| 2009-12-06 | U.S. Patent No. 8,534,299 Priority Date |
| 2013-09-17 | U.S. Patent No. 8,534,299 Issued |
| 2017-08-29 | Plaintiff allegedly sent notice letter to Defendant |
| 2017-12-04 | Defendant's counsel allegedly acknowledged notice of patent |
| 2019-04-05 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 8,534,299, “Prefabricated Nails, Apparatus and Method for Producing,” issued September 17, 2013.
The Invention Explained
- Problem Addressed: The patent’s background section describes the application of artificial nails as a "tedious and cumbersome process" that requires "skillful craftsmanship" to sculpt nails individually, rather than using prefabricated products (U.S. Patent No. 8,534,299, col. 1:11-20).
- The Patented Solution: The invention discloses a method for applying prefabricated artificial nails made from a UV-curable gel. The core of the method involves attaching a pre-made, UV-transmissible gel nail to a person's natural nail using a UV-curable bonding agent, and then applying UV radiation through the prefabricated nail to cure the bonding agent underneath, securing the nail in place (’299 Patent, col. 2:56-65; Abstract). The patent also describes a molding process for mass-producing these prefabricated nails (’299 Patent, col. 1:56-col. 2:16).
- Technical Importance: This approach sought to simplify and expedite the nail extension process by shifting from individually sculpted nails to mass-produced, ready-to-apply gel nail tips that could be bonded quickly using a UV cure. (’299 Patent, col. 1:35-43).
Key Claims at a Glance
- The complaint asserts independent method claim 8 (’299 Patent, col. 8:32-43; Compl. ¶9).
- Claim 8: A method of applying preformed artificial nails to the finger nails of a human hand, comprising:
- applying a UV curable bonding agent to the surface of each finger nail plate;
- positioning a prefabricated gel nail on each finger nail plate over the bonding agent, the prefabricated gel nail comprising a UV curable and UV transmissible gel; and
- applying UV radiation through each prefabricated gel nail onto the bonding agent to attach the prefabricated gel nail to the finger nail plate by UV cure.
- The complaint states infringement of "at least one claim... (including, but not limited to, claim 8)" (Compl. ¶9).
III. The Accused Instrumentality
Product Identification
- Defendant’s "Gel-X Nail Extension System" products, including the "Natural Round Short" kit (Compl. ¶¶9, 10).
Functionality and Market Context
- The accused system is described as a method for applying artificial nail extensions. The complaint provides a 10-step instructional diagram, "FIG. A," showing the application process (Compl. ¶10). The process involves applying a "pH Bonder," "Non-Acidic Gel Primer," and a thin layer of "Extend Gel" to the natural nail. A "Gel-X tip" is then filled with more "Extend Gel" and pressed onto the nail. A handheld "Mini LED Light" is used to "flash cure" the nail for 10 seconds while holding it in place, followed by a full cure of the entire hand in a larger LED lamp for 30 seconds (Compl. ¶10, FIG. A).
- The complaint quotes Defendant's marketing material, which describes the "Aprés Gel-X" system as "the world's first and only soft gel nail extension system" and notes that the "Gel-X nail tips and Extend gel are manufactured from cutting edge soft gel formulas" (Compl. ¶11).
IV. Analysis of Infringement Allegations
’299 Patent Infringement Allegations
| Claim Element (from Independent Claim 8) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a. applying a UV curable bonding agent to the surface of each finger nail plate; | Defendant's instructions direct users to apply a thin layer of "Extend Gel" onto the fingernail, which is alleged to be the UV curable bonding agent. The complaint provides an image from Defendant's instructions showing this step (image labeled "4"). | ¶11, p. 4 | col. 6:60-65 |
| b. positioning a prefabricated gel nail on each finger nail plate over the bonding agent, the prefabricated gel nail comprising a UV curable and UV transmissible gel; and | Defendant's instructions direct users to apply "Extend Gel" to the underside of a "Gel-X tip" and press the tip onto the fingernail. The "Gel-X tip" is alleged to be the prefabricated, UV curable, and UV transmissible gel nail. The complaint provides images from Defendant's instructions showing these steps (images labeled "7" and "8"). | ¶11, p. 4 | col. 8:35-37 |
| c. applying UV radiation through each prefabricated gel nail onto the bonding agent to attach the prefabricated gel nail to the finger nail plate by UV cure. | Defendant's instructions direct users to cure the nail with a "Mini LED Light" and then a larger LED lamp, both of which apply light over the top of the "Gel-X tip." This is alleged to be the application of UV radiation through the nail to cure the bonding agent. The complaint provides an image from Defendant's instructions showing this step (image labeled "10"). | ¶11, p. 4 | col. 8:38-43 |
Identified Points of Contention
- Technical Questions: A primary technical question is whether the material composition of Defendant's "Gel-X tip" meets the claim limitation of a "UV curable and UV transmissible gel." The complaint alleges the tips are made from "soft gel formulas" (Compl. ¶11), but the case may require evidence demonstrating the tip's specific material properties, including its degree of UV transmissibility and whether it is itself "UV curable" as defined by the patent.
- Scope Questions: The analysis may raise the question of how much UV radiation must pass through the nail for it to be considered "UV transmissible." The patent does not appear to specify a required percentage of transmission, leaving the term open to construction. Similarly, the definition of a "prefabricated gel nail" may be disputed, particularly whether the accused "soft gel" tips fall within the scope of the "UV curable gel" described in the patent specification (e.g., ’299 Patent, col. 4:65-col. 5:2).
V. Key Claim Terms for Construction
- The Term: "UV transmissible gel"
- Context and Importance: This term, found in claim 8, is critical to the infringement theory. The inventive method is distinguished by its step of curing a bonding agent through the prefabricated nail itself. Therefore, whether the accused "Gel-X tip" is made of a "UV transmissible gel" is a central question. Practitioners may focus on this term because its construction will likely determine whether the core step of the accused process (curing with an LED lamp on top of the nail) reads on the claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discusses making one of the mold members from a "UV transmissive material (e.g. glass, clear plastic, clear acrylic)" to allow UV light to cure the gel inside the mold (’299 Patent, col. 2:28-29). A party could argue that "UV transmissible" should be given its plain and ordinary meaning: any material that allows a sufficient amount of UV radiation to pass through to cure the underlying bonding agent, without being limited to a specific material type or degree of transparency.
- Evidence for a Narrower Interpretation: A party could argue that the term should be limited by the context of the overall invention. The patent describes the gel itself with a specific chemical composition, including "Urethane Diacrylate, Urethane Triacyrlate," etc. (’299 Patent, col. 4:65-col. 5:2). An argument could be made that a "UV transmissible gel" must not only be transmissive but also be of the general chemical nature described in the specification for forming the nail itself, potentially excluding other types of plastics or materials.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement, stating that Defendant knowingly encourages its customers to infringe by providing instructions (such as those in FIG. A) and products "that are especially made for infringing use" (Compl. ¶13). It also alleges contributory infringement on similar grounds.
- Willful Infringement: The complaint alleges that Defendant’s infringement has been "willful and deliberate" because it had "actual knowledge of the '299 patent" since at least August 29, 2017, based on a notice letter sent by Plaintiff (Compl. ¶¶8, 14).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case will likely depend on the answers to two central questions:
- A core issue will be one of definitional scope: can the term "UV transmissible gel," as used in the patent, be construed to read on the "soft gel formulas" allegedly used to create Defendant's "Gel-X" nail tips? The construction of this term will be fundamental to the infringement analysis.
- A key evidentiary question will be one of technical properties: what evidence will be presented to prove that the accused "Gel-X tip" is, in fact, "UV transmissible" to a degree sufficient to practice the claimed method, and that it is also "UV curable" in the manner contemplated by the patent?