DCT
2:19-cv-10588
Guy A Shaked Investments Ltd v. Beyond Beauty Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Guy A. Shaked Investments Ltd. (Israel) and Dafni Hair Products, Ltd. (Israel)
- Defendant: Beyond the Beauty, Inc. (California)
- Plaintiff’s Counsel: Latham & Watkins LLP
- Case Identification: 2:19-cv-10588, C.D. Cal., 12/16/2019
- Venue Allegations: Venue is alleged to be proper in the Central District of California because the Defendant has its principal place of business in North Hollywood, California, and has allegedly committed acts of infringement in the district.
- Core Dispute: Plaintiffs allege that Defendant’s "BRUSH N' GO" hair straightening brush infringes one design patent and three utility patents related to the structure and safety features of heated hairbrushes.
- Technical Context: The technology concerns hair styling appliances that combine the form of a brush with heating elements, intended to offer a faster and safer alternative to traditional flat irons.
- Key Procedural History: The complaint does not mention prior litigation. However, post-issuance proceedings have significantly impacted the asserted patents. U.S. Patent 9,578,943 was the subject of an ex parte reexamination, resulting in the amendment of asserted claim 1. U.S. Patent 9,591,906 was subject to an inter partes review (IPR) which concluded after the complaint was filed, resulting in the cancellation of asserted claim 18. U.S. Patent 9,877,562 was also subject to an IPR, with all asserted claims surviving the challenge.
Case Timeline
| Date | Event |
|---|---|
| 2012-05-17 | Earliest Priority Date for asserted patents |
| 2015-09-01 | DAFNI brush first publicly revealed (approximate date) |
| 2015-12-01 | Original DAFNI brush went on sale (approximate date) |
| 2016-01-01 | Defendant allegedly began selling "BRUSH N' GO" (approximate date) |
| 2017-02-28 | U.S. Patent No. 9,578,943 Issued |
| 2017-03-14 | U.S. Patent No. 9,591,906 Issued |
| 2018-01-30 | U.S. Patent No. 9,877,562 Issued |
| 2018-05-08 | U.S. Design Patent No. D817,007 Issued |
| 2019-12-16 | Complaint Filed |
| 2020-09-30 | IPR filed against '906 Patent |
| 2020-10-09 | IPR filed against '562 Patent |
| 2021-05-24 | Reexamination requested for '943 Patent |
| 2022-07-08 | '943 Patent Reexamination Certificate Issued |
| 2022-08-04 | '906 Patent IPR Certificate Issued (cancelling asserted claim 18) |
| 2024-02-08 | '562 Patent IPR Certificate Issued (confirming asserted claims) |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D817,007 - Hair Straightening Brush
The Invention Explained
- Problem Addressed: The complaint describes a need for a hair styling tool that is distinct from traditional brushes but recognizable for its function, with a "futuristic" feel reflective of its innovative technology (Compl. ¶23).
- The Patented Solution: The D'007 Patent claims the ornamental design for a hair straightening brush. The design features an oval brush head, a handle, and a specific visual arrangement of bristles on the brush face (D’007 Patent, FIGS. 1-6). The claim is for the product's overall visual appearance, not its function.
- Technical Importance: The complaint alleges the aesthetic design was important to distinguish the product from traditional brushes and reflect its technological innovation (Compl. ¶23).
Key Claims at a Glance
- Design patents have a single claim: "The ornamental design for a hair straightening brush, as shown and described." (D’007 Patent, Claim).
U.S. Patent No. 9,578,943 - Hair Straightening Brush
The Invention Explained
- Problem Addressed: The patent addresses the safety and operational challenges of prior art hair straightening tools, such as hot combs, which pose risks of scalp burns and are difficult to use effectively ('943 Patent, col. 1:24-27). The inventors sought to create a brush that could apply sufficient heat to straighten hair without damaging it and while protecting the user's scalp from accidental burns (Compl. ¶¶20, 22).
- The Patented Solution: The invention is a hairbrush with a combination of protruding heating elements and heat-insulating "spacers." The spacers are arranged to maintain a safe distance between the hot elements and the user's scalp, even when the brush is pressed against the head ('943 Patent, Abstract; col. 4:1-9). The arrangement of these elements in offset rows on the brush face is designed to provide effective three-dimensional heating (Compl. ¶20; '943 Patent, col. 3:45-51).
- Technical Importance: This design allows for a larger heated surface area than a flat iron, reducing styling time, while the integrated safety spacers mitigate the risk of burns, a key limitation of earlier heated styling tools (Compl. ¶¶21-22).
Key Claims at a Glance
- The complaint asserts claims 1-4, 8, 9, 11, 12, and 15-21 (Compl. ¶43). Independent claim 1, as amended by the ex parte reexamination certificate, is central.
- Amended Independent Claim 1:
- A hairbrush, comprising: a heating plate extending over a face of the hairbrush;
- a plurality of heating elements thermally coupled to the heating plate and protruding from only the face of the hairbrush, arranged in a plurality of lengthwise rows;
- wherein...the heating elements thereof are offset relative to the heating elements in an adjacent one of the plurality of lengthwise rows;
- a plurality of heat insulating spacers projecting outwardly from at least some of the plurality of heating elements, thereby providing a space between the plurality of heating elements and a user’s scalp during use; and
- a plurality of heat insulating elongate peripheral spacers disposed at least around a portion of the hair treating area of the hairbrush.
- The complaint reserves the right to assert dependent claims (Compl. ¶43).
Multi-Patent Capsule
- Patent Identification: U.S. Patent No. 9,591,906, Hair Straightening Brush, issued March 14, 2017.
- Technology Synopsis: The '906 Patent is directed to a method of manufacturing a brush with specific spacer arrangements to protect the user's scalp. The patent describes arranging spacers to maintain distance from the scalp, including additional spacers around the heating elements, and specifies a relationship between spacer density and flexibility to ensure protection ('906 Patent, Abstract; Compl. ¶48).
- Asserted Claims: Claim 18 (Compl. ¶¶49, 50).
- Accused Features: The complaint alleges that Defendant's act of manufacturing the BRUSH N' GO infringes the claimed method by incorporating multiple spacers to maintain a specific distance from the user's scalp and a density of spacers designed to ensure space when flexed (Compl. ¶49).
Multi-Patent Capsule
- Patent Identification: U.S. Patent No. 9,877,562, Hair Straightening Brush, issued January 30, 2018.
- Technology Synopsis: The '562 Patent claims a hairbrush apparatus with a specific structural relationship between the heating elements and the insulating spacers. It requires the heating elements to be "monolithic with and protruding from the heating plate," and for the spacers to project from a "bore in a heating element" ('562 Patent, Abstract; Compl. ¶55).
- Asserted Claims: Claims 1-10 (Compl. ¶57).
- Accused Features: The complaint alleges the BRUSH N' GO brush infringes by having a heating plate, monolithic heating elements in rows, heat insulating spacers projecting from a bore in those elements, and peripheral spacers (Compl. ¶56).
III. The Accused Instrumentality
Product Identification
- Defendant’s "BRUSH N' GO" straightening brush (Compl. ¶32).
Functionality and Market Context
- The complaint alleges the BRUSH N' GO is a ceramic straightening brush sold by the Defendant since 2016 (Compl. ¶¶15, 32). The complaint provides a side-by-side photograph comparing the accused product to Plaintiffs' DAFNI brush, showing a similar oval head shape, handle, and bristle pattern (Compl. ¶32, p. 10).
- Functionally, the complaint alleges the accused product includes a heating plate, multiple protruding heating elements arranged in offset lengthwise rows, heat-insulating spacers projecting from the heating elements, and peripheral heat-insulating bristles (Compl. ¶¶42, 56).
- The complaint frames the accused product as a "copycat" that "copies the look, feel, and straightening technology" of Plaintiffs' invention and seeks to profit from it (Compl. ¶¶15, 32).
IV. Analysis of Infringement Allegations
D'817,007 Infringement Allegations
The complaint alleges that the Defendant's BRUSH N' GO brush infringes the D'007 Patent (Compl. ¶36). Infringement of a design patent is determined by the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design. The complaint provides a side-by-side visual comparison of the DAFNI brush and the accused BRUSH N' GO product (Compl. ¶32, p. 10). This image shows two brushes with similar overall oval shapes, handle contours, and a dense pattern of protrusions on the brush face, which will likely form the basis of Plaintiffs' infringement argument.
'943 Patent Infringement Allegations
| Claim Element (from Amended Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a heating plate extending over a face of the hairbrush; | The BRUSH N' GO brush is a brush with a heating place on the face of the brush. | ¶42 | col. 6:1-2 |
| a plurality of heating elements thermally coupled to the heating plate and protruding from only the face of the hairbrush, the plurality of heating elements defining a hair treating area...arranged in a plurality of lengthwise rows... | The accused brush has multiple heating elements thermally coupled to and protruding from the plate, arranged in lengthwise rows. | ¶42 | col. 6:3-11 |
| wherein, for each of the plurality of lengthwise rows, the heating elements thereof are offset relative to the heating elements in an adjacent one of the plurality of lengthwise rows; | The rows of heating elements on the BRUSH N' GO straightening brush are arranged in lengthwise, offset rows. | ¶42 | col. 6:12-16 |
| a plurality of heat insulating spacers projecting outwardly from at least some of the plurality of heating elements, thereby providing a space between the plurality of heating elements and a user's scalp during use; | Each heating protruding heating element also has a heat insulating spacer projecting outwardly from the heating element. | ¶42 | col. 6:17-21 |
| a plurality of heat insulating elongate peripheral spacers disposed at least around a portion of the hair treating area of the hairbrush. | The rows of heating elements on the accused brush are surrounded by heat-insulating bristles, which serve as peripheral spacers providing space between the user's scalp and the heating elements. | ¶42 | col. 6:22-25; col. 2:8 |
- Identified Points of Contention:
- Scope Questions: A central question for the D'007 design patent will be whether the visual differences between the accused product and the patented design are significant enough to an ordinary observer to avoid infringement. For the '943 utility patent, a question may arise regarding the definition of "protruding from only the face of the hairbrush," and whether the accused product's structure meets this limitation precisely.
- Technical Questions: Does the accused product's structure meet the specific limitations of the "heat insulating elongate peripheral spacers" as defined in the patent? The complaint alleges these are met by "heat-insulating bristles" (Compl. ¶42), raising the question of whether generic bristles satisfy the "elongate peripheral spacers" limitation as construed in light of the specification.
V. Key Claim Terms for Construction
- The Term: "heat insulating spacers" ('943 Patent, amended claim 1)
- Context and Importance: This term is fundamental to the patent's safety function. The definition will determine what structures qualify as the claimed protective elements. Practitioners may focus on this term because the infringement allegation relies on the accused product's "heat insulating bristles" meeting this limitation (Compl. ¶42).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that "Spacers may have any form and may be positioned on the brush and/or on the heating elements" ('943 Patent, col. 2:12-13). This language could support a broad definition that encompasses various structures, including bristles.
- Evidence for a Narrower Interpretation: The patent provides specific examples, such as "soft silicon spacers" (col. 5:21) and spacers in the form of "caps" (col. 5:23-24) or those connected to the tops of heating elements (FIG. 3A, 130B). An argument could be made that the term is limited to structures distinct from simple bristles, especially given the detailed discussion of their resilience and density ('943 Patent, col. 4:22-29).
VI. Other Allegations
- Indirect Infringement: The complaint does not plead specific facts to support claims of induced or contributory infringement, such as allegations that Defendant knew of the patents and specifically intended for its customers to infringe.
- Willful Infringement: The complaint does not contain an explicit count for willful infringement or allege facts that would support a finding of willfulness, such as pre-suit knowledge of the patents-in-suit. The prayer for relief includes a request for attorney's fees, which can be awarded in exceptional cases, but the complaint body does not lay the factual groundwork for such a claim (Compl. ¶(f), p. 15).
VII. Analyst’s Conclusion: Key Questions for the Case
This case presents several critical questions for the court that will likely determine its outcome:
The Impact of Post-Filing Events: A dispositive issue for the '906 Patent is the legal effect of the post-filing IPR decision that cancelled the only asserted claim (claim 18). While asserted in the 2019 complaint, its subsequent cancellation may render that cause of action moot. In contrast, the survival of the '943 and '562 patent claims through reexamination and IPR, respectively, may strengthen Plaintiffs' position regarding their validity.
Definitional Scope and Infringement: For the utility patents, the case will turn on claim construction. A core question is one of structural identity: do the "heat-insulating bristles" of the accused BRUSH N' GO product (Compl. ¶42) possess the specific characteristics of the claimed "heat insulating spacers" and "elongate peripheral spacers" as defined by the '943 patent specification and its amended claims?
Aesthetic Similarity vs. Function: For the D'007 design patent, the key question is one of visual perception: would an ordinary observer, viewing the overall ornamental appearance of the BRUSH N' GO, be deceived into thinking it is the DAFNI brush, or are the differences in their designs sufficient to create distinct commercial impressions?