DCT
2:19-cv-10589
Guy A Shaked Investments Ltd v. Chiang Ka Man
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Guy A. Shaked Investments Ltd. and Dafni Hair Products, Ltd. (Israel)
- Defendant: Chiang Ka Man (California)
- Plaintiff’s Counsel: Latham & Watkins LLP
- Case Identification: 2:19-cv-10589, C.D. Cal., 12/16/2019
- Venue Allegations: Venue is alleged to be proper in the Central District of California because the Defendant resides in the district, conducts business in California, and allegedly commits acts of patent infringement within the district.
- Core Dispute: Plaintiffs allege that Defendant’s "VETROO" brand electric hair straightening brush infringes one design patent and three utility patents related to the structure and safety features of heated hair styling brushes.
- Technical Context: The technology concerns heated hair brushes that use an array of three-dimensional heating elements and protective spacers to straighten hair more quickly and safely than traditional flat iron straighteners.
- Key Procedural History: The complaint identifies Dafni Hair Products, Ltd. as the exclusive licensee of the patents-in-suit, which are owned by Guy A. Shaked Investments Ltd. Subsequent to the filing of the complaint, the asserted patents have undergone post-grant proceedings. U.S. Patent No. 9,578,943 was the subject of an ex parte reexamination that resulted in amended claims. U.S. Patent No. 9,591,906 was the subject of an Inter Partes Review (IPR) that resulted in the cancellation of the sole asserted claim (Claim 18). U.S. Patent No. 9,877,562 was the subject of an IPR where all asserted claims were found patentable. These post-filing developments fundamentally alter the scope and viability of the asserted claims.
Case Timeline
| Date | Event |
|---|---|
| 2012-05-17 | Earliest Priority Date for all Patents-in-Suit |
| 2015-09-01 | Plaintiffs' "DAFNI" brush revealed in YouTube video |
| 2016-01-01 | Alleged first sale of Accused "VETROO" Product |
| 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 D817,007 Issued |
| 2019-12-16 | Complaint Filed |
| 2020-09-30 | Inter Partes Review of '906 Patent initiated |
| 2020-10-09 | Inter Partes Review of '562 Patent initiated |
| 2021-01-18 | Disclaimer of claims 20 and 21 of '943 Patent filed |
| 2021-05-24 | Ex Parte Reexamination of '943 Patent requested |
| 2022-07-08 | Reexamination Certificate for '943 Patent issued |
| 2022-08-04 | Inter Partes Review Certificate for '906 Patent issued |
| 2024-02-08 | Inter Partes Review Certificate for '562 Patent issued |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,578,943 - “Hair Straightening Brush,” issued Feb. 28, 2017
The Invention Explained
- Problem Addressed: The patent background describes operational and safety requirements for hot combs as limiting their applicability, while the complaint elaborates that traditional flat irons are time-consuming and can cause heat damage to hair and burns to the user (Compl. ¶¶ 16, 20; ’943 Patent, col. 1:24-27).
- The Patented Solution: The invention is a hairbrush with a plurality of heated elements protruding from a base plate, which increases the total heating surface area compared to a flat iron. This structure is combined with protective, heat-insulating spacers arranged among and around the heating elements to maintain a safe distance between the hot surfaces and the user's scalp, allowing for faster and safer styling (Compl. ¶¶ 20-22; ’943 Patent, Abstract, col. 2:30-38). The arrangement is depicted in various configurations, such as in Figure 3A of the patent.
- Technical Importance: The design's three-dimensional array of heating elements enables users to straighten larger sections of hair at once, significantly reducing styling time while the integrated spacers mitigate the risk of burns (Compl. ¶¶ 21, 22).
Key Claims at a Glance
- The complaint asserts claims 1-4, 8, 9, 11, 12, and 15-21 (Compl. ¶43). However, a subsequent ex parte reexamination resulted in the amendment of independent claims 1 and 15 and the disclaimer of claims 20 and 21. The amended claims are now controlling.
- Amended Independent Claim 1:
- 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 a number of the heating elements in at least one of the lengthwise rows is different than a number of heating elements in at least one other of the lengthwise rows;
- 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;
- 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.
- Amended Independent Claim 15 is also asserted and was similarly amended to require a different number of heating elements in different lengthwise rows.
- The complaint reserves the right to assert other claims, including dependent claims (Compl. ¶42).
U.S. Patent No. 9,591,906 - “Hair Straightening Brush,” issued Mar. 14, 2017
The Invention Explained
- Problem Addressed: The patent addresses the same general problem of providing a safe and effective heated styling brush, focusing on protecting the user's scalp from direct contact with hot elements ('906 Patent, col. 1:18-22).
- The Patented Solution: The patent claims a brush structure and a method of manufacturing it, with a specific focus on the arrangement and properties of spacers. The invention describes using spacers with a specified density and resilience to ensure that a minimum safe distance is maintained between the heating elements and the scalp, even when the brush is pressed against the head ('906 Patent, Abstract; col. 4:38-52).
- Technical Importance: This approach directly links the physical properties of the protective spacers (e.g., flexibility) to the safety of the device during real-world use, aiming to provide a reliable protective buffer.
Key Claims at a Glance
- The complaint asserts independent claim 18 (Compl. ¶¶ 49, 50).
- Crucially, a post-filing Inter Partes Review proceeding concluded with the cancellation of claims 1-3, 5-18, and 20. As such, the sole asserted claim of the '906 Patent is no longer valid.
- Original Independent Claim 18 (Asserted in Complaint, now Cancelled):
- A method, comprising:
- arranging a plurality of spacers to maintain a specified distance between protruding ends of a plurality of heating elements protruding from a face of a hairbrush and a scalp of a head that is being brushed;
- the hairbrush further including a plurality of heat insulating elongate peripheral spacers disposed at least around a portion of the plurality of spacers and the plurality of heating elements with ends of the plurality of heat insulating elongate peripheral spacers being closer to the face of the hairbrush than ends of the plurality of spacers;
- wherein the plurality spacers are dispersed on at least a part of the hairbrush's face at a specified density selected to assure maintaining the specified distance with respect to a resilience of the plurality of spacers.
Multi-Patent Capsule
U.S. Design Patent D817,007, “Hair Straightening Brush,” issued May 8, 2018
- Technology Synopsis: This patent protects the ornamental, non-functional design of a hair straightening brush. Protection covers the visual appearance, including the overall shape of the brush head and handle, and the pattern of bristles on the face (D’007 Patent, Figures 1-6).
- Asserted Claims: Claim 1 (the single claim of the patent) (Compl. ¶36).
- Accused Features: The complaint alleges that the overall visual appearance of the VETROO brush is substantially the same as the patented design, such that it would deceive an ordinary observer (Compl. ¶36).
U.S. Patent No. 9,877,562, “Hair Straightening Brush,” issued Jan. 30, 2018
- Technology Synopsis: This patent describes a hairbrush with heating elements that are "monolithic with and protruding from" a heating plate. The invention specifies that heat-insulating spacers project from a "bore" within the heating elements and that "peripheral spacers" are located on at least two sides of the brush ('562 Patent, Abstract; Compl. ¶55).
- Asserted Claims: Claims 1-10 are asserted; Claim 1 is independent (Compl. ¶57).
- Accused Features: The VETROO brush is accused of having a heating plate, monolithic heating elements, spacers projecting from a bore in those elements, and peripheral spacers, thereby meeting the limitations of the asserted claims (Compl. ¶56).
III. The Accused Instrumentality
- Product Identification: The accused product is the "VETROO electric hair straightening brush" (Compl. ¶32).
- Functionality and Market Context: The complaint alleges the VETROO brush is an electric hair styling tool sold directly to consumers through Amazon.com (Compl. ¶33). Its accused functionality includes using a heating plate with multiple protruding heating elements arranged in rows to straighten hair (Compl. ¶¶ 42, 56). The complaint includes a visual comparison, suggesting the VETROO brush copies the "look, feel, and straightening technology" of Plaintiffs' DAFNI brush (Compl. ¶32). This side-by-side photograph provided in the complaint juxtaposes the VETROO product with the DAFNI Original, highlighting alleged similarities in the brush head shape and bristle pattern (Compl. ¶32, at p. 10).
IV. Analysis of Infringement Allegations
U.S. Patent No. 9,578,943 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 accused product 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... arranged in a plurality of lengthwise rows, wherein a number of the heating elements in at least one of the lengthwise rows is different than a number of heating elements in at least one other of the lengthwise rows; | The accused product has "multiple heating elements thermally coupled to and protruding from the plate" that are "arranged in lengthwise... rows." | ¶42 | col. 6:3-13; Fig. 2A |
| 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 are arranged in "offset rows." | ¶42 | col. 6:13-18 |
| 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. 6:19-24 |
| a plurality of heat insulating elongate peripheral spacers disposed at least around a portion of the hair treating area of the hairbrush. | The heating elements are described as being surrounded by "heat-insulating bristles." | ¶42 | col. 6:25-28 |
U.S. Patent No. 9,591,906 Infringement Allegations
Note: The sole claim asserted from this patent, Claim 18, was cancelled in an Inter Partes Review proceeding after the complaint was filed. The infringement allegations are therefore moot. The analysis below is presented based on the complaint as filed.
| Claim Element (from Independent Claim 18) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method, comprising: arranging a plurality of spacers to maintain a specified distance between protruding ends of a plurality of heating elements... and a scalp... | The complaint alleges Defendant infringes by "manufacturing brushes with multiple spacers to maintain a specific distance." | ¶49 | col. 5:47-51 |
| the hairbrush further including a plurality of heat insulating elongate peripheral spacers... with ends... being closer to the face of the hairbrush than ends of the plurality of spacers; | The complaint alleges Defendant manufactures brushes with "additional, shorter spacers around the heating elements." | ¶49 | col. 4:5-14 |
| wherein the plurality spacers are dispersed on at least a part of the hairbrush's face at a specified density selected to assure maintaining the specified distance with respect to a resilience of the plurality of spacers. | The complaint alleges Defendant manufactures brushes with "a density of spacers designed to ensure space between the user's scalp and the heating elements when the spacers are flexed." | ¶49 | col. 4:22-25 |
- Identified Points of Contention:
- Scope Questions: For the ’943 Patent, a point of contention may be whether the accused product's "heat-insulating bristles" meet the specific definition of "heat insulating elongate peripheral spacers" as required by the amended claim.
- Technical Questions: A key factual question for the ’943 Patent will be whether the accused VETROO brush has a different number of heating elements in different lengthwise rows, a limitation added during reexamination. The complaint's general allegations do not specifically address this amended limitation.
- Procedural Questions: The most significant issue for the ’906 Patent is legal and procedural: the asserted claim has been cancelled. This raises the question of whether the cause of action for infringement of the ’906 Patent can proceed as pleaded.
V. Key Claim Terms for Construction
The Term: "heating elements" (’943 Patent, Amended Claim 1)
- Context and Importance: This term is fundamental to all asserted utility patents. Its construction will determine the range of structures that can be found to infringe, particularly regarding material composition and shape.
- Intrinsic Evidence for a Broader Interpretation: The specification defines the term broadly as "any type of heat conductive element, in particular metal (e.g. aluminum) heat conductors" and states that they "may have any shape" (’943 Patent, col. 2:1-5).
- Intrinsic Evidence for a Narrower Interpretation: The patent figures depict specific embodiments with elongated, cylindrical, or conical shapes (e.g., ’943 Patent, Figs. 2A, 3A). A party might argue that the term should be interpreted in light of these disclosed embodiments.
The Term: "heat insulating elongate peripheral spacers" (’943 Patent, Amended Claim 1)
- Context and Importance: This limitation defines a key safety feature intended to distinguish the invention. The definitions of "elongate" and "peripheral" are critical to determining the scope of the required spacer structure. Practitioners may focus on this term because it is a compound limitation describing a specific subset of the protective bristles.
- Intrinsic Evidence for a Broader Interpretation: The specification does not provide a precise definition for "elongate" or "peripheral," potentially allowing for any spacers on the outer boundary of the heating element field that are longer than they are wide.
- Intrinsic Evidence for a Narrower Interpretation: Figure 1A of the patent illustrates these spacers as a distinct, nearly-continuous row of bristles forming an outer border. A defendant could argue this specific arrangement is required to be a "peripheral spacer" and that "elongate" implies a specific aspect ratio not present in all bristle types.
VI. Other Allegations
- Indirect Infringement: The complaint does not plead separate counts for indirect infringement (induced or contributory). The causes of action are for direct infringement pursuant to 35 U.S.C. § 271(a) (Compl. ¶¶ 43, 50, 57).
- Willful Infringement: The complaint does not explicitly allege willful infringement. While it seeks attorney's fees, it does not plead facts sufficient to establish pre-suit knowledge or egregious conduct that might support a finding of willfulness.
VII. Analyst’s Conclusion: Key Questions for the Case
- A threshold issue will be one of "procedural viability": given that the sole asserted claim of the '906 Patent was cancelled in a post-filing IPR, can the cause of action for infringement of that patent survive, or is it moot as pleaded?
- A central evidentiary question for the '943 Patent will be one of "infringement under an amended scope": can Plaintiffs prove that the accused VETROO brush satisfies the limitations added during reexamination, specifically the requirement that lengthwise rows of heating elements contain different numbers of elements?
- For the design patent, the case will turn on a question of "ornamental similarity": does the VETROO brush's overall design create a visual impression that is substantially the same as the D'007 patent in the eyes of an ordinary observer, or are the differences sufficient to avoid infringement?