DCT

2:19-cv-10590

Guy A Shaked Investments Ltd v. Elegante Beauty Discount Center Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:19-cv-10590, C.D. Cal., 12/16/2019
  • Venue Allegations: Venue is alleged to be proper in the Central District of California because the Defendant's principal place of business is in Los Angeles.
  • Core Dispute: Plaintiffs allege that Defendant’s "CHROMATIQUE PROFESSIONAL" hair straightening brush infringes one design patent and three utility patents related to Plaintiffs' "DAFNI" heated brush technology.
  • Technical Context: The technology concerns heated hair styling brushes that use an array of protruding heated elements and protective spacers as a purported safer and more efficient alternative to traditional flat irons.
  • Key Procedural History: The complaint alleges Defendant had pre-suit knowledge of two patents-in-suit via a notice letter sent in February 2018. Since the complaint was filed, the asserted patents have been subject to significant post-grant proceedings. U.S. Patent No. 9,591,906 had its single asserted claim cancelled in an Inter Partes Review (IPR). U.S. Patent No. 9,578,943 underwent ex parte reexamination, resulting in amended claims, and a separate disclaimer of two other claims. Conversely, U.S. Patent No. 9,877,562 had its asserted claims challenged in an IPR and confirmed as patentable, potentially strengthening its posture in this litigation.

Case Timeline

Date Event
2012-05-17 Earliest Priority Date for all Asserted Patents
2015-09-01 Plaintiff's DAFNI brush publicly revealed in YouTube video
2016-01-01 Alleged start of Defendant's infringing activity
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
2018-02-15 Plaintiff sent notice letter to Defendant regarding '943 and '906 patents
2018-05-08 U.S. Design Patent No. D817,007 Issued
2019-12-16 Complaint Filing Date
2022-07-08 Reexamination Certificate Issued for '943 Patent
2022-08-04 IPR Certificate Issued for '906 Patent (cancelling asserted claim)
2024-02-08 IPR Certificate Issued for '562 Patent (confirming asserted claims)

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 describes the safety and operational drawbacks of conventional hair straightening tools like hot combs, which have been in use since the 19th century but pose risks and can be difficult to use effectively ( Compl. ¶16; ’943 Patent, col. 1:24-27).
  • The Patented Solution: The invention is a brush-like device that straightens hair using a three-dimensional array of heated, protruding elements combined with protective, heat-insulating spacers. This design intends to increase the heated surface area contacting the hair for efficiency while using the spacers to maintain a safe distance between the hot elements and the user's scalp, mitigating the risk of burns (Compl. ¶20-22; ’943 Patent, col. 4:1-8).
  • Technical Importance: This approach sought to combine the ease of use of a brush with the straightening effect of a flat iron, allowing users to style larger sections of hair more quickly and safely than was possible with prior tools (Compl. ¶21).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claims 2-4, 8, 9, 11, 12, and 15-21 (Compl. ¶46). Subsequent to the complaint filing, claims 20 and 21 were disclaimed, and claim 1 was amended during reexamination.
  • Independent Claim 1 (as amended by Reexam. Cert. '943 C1) requires:
    • A heating plate extending over a face of the hairbrush.
    • A plurality of heating elements thermally coupled to the plate and protruding from its face, arranged in lengthwise rows where at least one row has a different number of heating elements than another row.
    • The heating elements in each row are offset relative to the elements in an adjacent row.
    • A plurality of heat insulating spacers projecting outwardly from at least some of the heating elements to create a space between the heating elements and a user's scalp.
    • A plurality of heat insulating elongate peripheral spacers disposed around a portion of the hair treating area.

U.S. Design Patent No. D817,007 - "Hair Straightening Brush," Issued May 8, 2018

The Invention Explained

  • Problem Addressed: The complaint states that the inventors considered the aesthetic design to be of high importance, aiming for a "futuristic" look that would be recognizable but distinct from traditional, non-heated hairbrushes (Compl. ¶23).
  • The Patented Solution: The D’007 Patent protects the unique ornamental, non-functional appearance of a hair straightening brush. The protected design consists of the overall shape of the brush head and handle, the specific two-dimensional pattern of the bristles on the brush face, and the side profile, as depicted in the patent's figures (D’007 Patent, Figs. 1-6).

Key Claims at a Glance

  • The patent contains a single claim: "The ornamental design for a hair straightening brush, as shown and described." Infringement is determined by the "ordinary observer" test, which asks if an ordinary observer would believe the accused design is the same as the patented design.

Multi-Patent Capsule: U.S. Patent No. 9,591,906

  • Patent Identification: U.S. Patent No. 9,591,906, "Hair Straightening Brush," Issued Mar. 14, 2017.
  • Technology Synopsis: This patent relates to a hairbrush with protruding heating elements and spacers. The asserted claim is a method of manufacturing such a brush, which recites arranging different types of spacers to maintain a specific distance from the user's scalp and includes a limitation relating spacer density to flexibility to ensure scalp protection ('906 Patent, Claim 18; Compl. ¶52).
  • Asserted Claims: Claim 18 (Compl. ¶54).
  • Accused Features: The complaint alleges that Defendant's act of manufacturing its "CHROMATIQUE PROFESSIONAL" brush infringes this method claim (Compl. ¶53-54). Note: Asserted claim 18 was cancelled in an IPR proceeding that concluded after the complaint was filed ('906 IPR Certificate, p. 2).

Multi-Patent Capsule: U.S. Patent No. 9,877,562

  • Patent Identification: U.S. Patent No. 9,877,562, "Hair Straightening Brush," Issued Jan. 30, 2018.
  • Technology Synopsis: This patent claims a hairbrush with a specific construction, requiring heating elements that are "monolithic with and protruding from" a heating plate. It further claims "heat insulating spacers projecting from a bore" in a heating element, focusing on a particular structural integration of the components ('562 Patent, Claim 1; Compl. ¶60).
  • Asserted Claims: Claims 1-10 (Compl. ¶62).
  • Accused Features: The "CHROMATIQUE PROFESSIONAL" brush is alleged to embody these features, including a heating plate, monolithic heating elements, and spacers that project from a bore within those elements (Compl. ¶61).

III. The Accused Instrumentality

  • Product Identification: The "CHROMATIQUE PROFESSIONAL" hot straightening brush (Compl. ¶32).
  • Functionality and Market Context: The accused product is a heated hairbrush designed to straighten hair. The complaint alleges that it "copies the look, feel, and straightening technology" of Plaintiffs' DAFNI brush and has been sold since 2016 through Defendant's website and major retailers, including Amazon.com and Walmart (Compl. ¶32-33). The complaint provides a side-by-side image comparison of the plaintiff's DAFNI brush and the accused "CHROMATIQUE PROFESSIONAL" brush to illustrate their alleged visual similarity (Compl. p. 11, Image).

IV. Analysis of Infringement Allegations

D’007 Patent Infringement Allegations

The complaint alleges that the ornamental design of the "CHROMATIQUE PROFESSIONAL" brush is substantially the same as the design claimed in the D'007 Patent, infringing the patent under the "ordinary observer" test (Compl. ¶38). The visual evidence provided in the complaint juxtaposes the accused product with Plaintiffs' product, inviting a direct comparison of their overall shape, bristle patterns, and handle configurations (Compl. p. 11, Image).

  • Identified Points of Contention: The central question for the court will be whether an ordinary observer, familiar with prior art brush designs, would be deceived into purchasing the accused product, believing it to be the patented DAFNI design. The analysis will turn on the visual weight of similarities versus differences in the products' overall aesthetic impressions.

'943 Patent Infringement Allegations

Claim Element (from Independent Claim 1, as amended) Alleged Infringing Functionality Complaint Citation Patent Citation
a heating plate extending over a face of the hairbrush; The accused brush has a heating plate on its face. ¶45 col. 6:32-33
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; The accused brush has multiple heating elements protruding from the plate, arranged in lengthwise rows. The complaint does not specify whether the rows contain different numbers of elements. ¶45 col. 6:34-42
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 accused brush are arranged in offset rows. ¶45 col. 6:43-46
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 protruding heating element on the accused brush allegedly has a heat insulating spacer projecting outwardly from it. ¶45 col. 6:47-50
and a plurality of heat insulating elongate peripheral spacers disposed at least around a portion of the hair treating area of the hairbrush. The accused brush is allegedly surrounded by heat-insulating bristles that function as peripheral spacers. ¶45 col. 6:50-52
  • Identified Points of Contention:
    • Scope Questions: A primary issue will be whether the accused product meets the limitation added during reexamination requiring that lengthwise rows have different numbers of heating elements. The complaint's allegations, drafted before the reexamination, do not address this specific structural detail.
    • Technical Questions: A factual question may arise as to whether the bristles on the accused product can be properly characterized as two distinct types required by the claim: "heat insulating spacers projecting outwardly from... heating elements" and separate "heat insulating elongate peripheral spacers."

V. Key Claim Terms for Construction

  • The Term: "offset relative to the heating elements in an adjacent... row"

    • Context and Importance: This term defines the staggered, non-linear arrangement of the heating elements, a key feature of the claimed "three dimensional heating" effect. The interpretation of "offset" will determine whether a slight misalignment is sufficient or if a more structured, alternating pattern is required.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The term itself is not explicitly defined with numerical constraints in the specification, which may support an interpretation that any arrangement where elements are not in perfect columns meets the limitation ('943 Patent, col. 6:43-46).
      • Evidence for a Narrower Interpretation: The patent figures, such as Figure 2A, depict a specific, regular, alternating offset pattern. A defendant may argue these embodiments limit the term to a pattern that creates the "undulating paths" mentioned elsewhere in the patent family ('943 Patent, Fig. 2A).

  • The Term: "monolithic with" (from '562 Patent)

    • Context and Importance: This term, asserted in the '562 patent, is not present in the '943 patent and appears to be a key distinction. Practitioners may focus on this term because its construction will be central to determining infringement of the '562 patent and distinguishing it from the '943 patent. It speaks to how the heating elements are integrated with the heating plate.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent does not explicitly define "monolithic." A plaintiff might argue it means formed as a single, continuous unit, which could be read on various manufacturing methods where the elements and plate are effectively one piece ('562 Patent, col. 6:1-3).
      • Evidence for a Narrower Interpretation: The term "monolithic" in an engineering context often implies being fabricated from a single piece of material (e.g., machined or molded). A defendant could argue for this narrower construction, which might not read on a product where elements are attached to a plate post-fabrication.

VI. Other Allegations

  • Indirect Infringement: The complaint's jurisdictional allegations contain general references to inducement (Compl. ¶14), but the formal causes of action are pleaded exclusively as direct infringement under 35 U.S.C. § 271(a) (Compl. ¶46, ¶54, ¶62).
  • Willful Infringement: Willfulness is alleged for all four patents-in-suit. For the '943 and '906 patents, the allegation is based on pre-suit knowledge stemming from a notice letter dated February 15, 2018 (Compl. ¶34, ¶47, ¶55). For the D'007 and '562 patents, which issued after the letter, the willfulness allegation would rely on knowledge gained from the filing of the complaint or other post-suit notice (Compl. ¶39, ¶63).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A central issue will be one of viability and scope: How will the post-filing cancellation of the asserted '906 patent claim and the amendment of the asserted '943 patent claim reshape the litigation? This will likely narrow the dispute to the surviving D'007, '562, and amended '943 patents, each with a distinct infringement theory.
  • A key evidentiary question for the utility patents will be one of structural correspondence: Does the accused product contain the specific features required by the claims as construed, particularly the '943 patent's amended requirement for rows with different numbers of elements and the '562 patent's requirement for "monolithic" elements with spacers projecting from a "bore"?
  • For the design patent, the case will turn on a question of overall appearance: Would an ordinary observer, viewing the accused "CHROMATIQUE PROFESSIONAL" brush in the context of other brushes on the market, be deceived into thinking it is the same as the D'007 patented design, or are the visual differences sufficient to distinguish them?