2:19-cv-10591
Guy A Shaked Investments Ltd v. Karmin Professional Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Guy A. Shaked Investments Ltd. (Israel) and Dafni Hair Products, Ltd. (Israel)
- Defendant: Karmin Professional Ltd. (Hong Kong)
- Plaintiff’s Counsel: Latham & Watkins LLP
- Case Identification: 2:19-cv-10591, C.D. Cal., 12/16/2019
- Venue Allegations: Venue is asserted based on Defendant's regular and established place of business in Beverly Hills, California, and alleged acts of infringement within the district.
- Core Dispute: Plaintiffs allege that Defendant’s KARMIN G3 ceramic straightening brush infringes one design patent and three utility patents related to heated hair straightening brush technology.
- Technical Context: The technology concerns heated hair styling tools that combine the form factor of a brush with heating elements, aiming to provide a safer and more efficient alternative to traditional flat iron straighteners.
- Key Procedural History: The complaint was filed in December 2019. Since the filing, significant post-filing events have occurred involving the patents-in-suit. An Inter Partes Review (IPR) of the ’906 Patent resulted in the cancellation of claim 18, the only claim asserted from that patent. An Ex Parte Reexamination of the ’943 Patent resulted in amendments to several claims, including the asserted independent claim 1, which may give rise to a defense of intervening rights. A separate IPR proceeding for the ’562 Patent concluded with the asserted claims being found patentable.
Case Timeline
| Date | Event |
|---|---|
| 2012-05-17 | Earliest Priority Date ('943, '906, '562, D'007 Patents) |
| 2017-01-01 (on or before) | Accused Karmin G3 Product Sales Begin |
| 2017-02-28 | U.S. Patent 9,578,943 Issues |
| 2017-03-14 | U.S. Patent 9,591,906 Issues |
| 2018-01-30 | U.S. Patent 9,877,562 Issues |
| 2018-05-08 | U.S. Design Patent D817,007 Issues |
| 2019-12-16 | Complaint Filed |
| 2021-01-18 | Disclaimer of claims 20-21 of '943 Patent filed |
| 2022-07-08 | Reexamination Certificate for '943 Patent Issues (amending claims) |
| 2022-08-04 | IPR Certificate for '906 Patent Issues (cancelling asserted claim 18) |
| 2024-02-08 | IPR Certificate for '562 Patent Issues (confirming patentability) |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent D817,007 - "Hair Straightening Brush," issued May 8, 2018
The Invention Explained
This patent does not cover a functional invention, but rather the specific ornamental design of a hair straightening brush. The protected design includes the overall shape of the brush head and handle, the pattern and arrangement of the bristles on the brush face, and the placement of a circular button on the handle.
Key Claims at a Glance
The patent contains a single claim for "the ornamental design for a hair straightening brush, as shown and described" in the patent's figures. (D'007 Patent, Claim).
U.S. Patent 9,578,943 - "Hair Straightening Brush," issued February 28, 2017
The Invention Explained
- Problem Addressed: The patent background notes that traditional "hot combs" have been used for over a century, but their applicability has been limited by "operational considerations and safety requirements" (ʼ943 Patent, col. 1:24-27). This identifies the technical challenge of designing a heated styling tool that is both effective and safe for consumer use, particularly in preventing burns to the scalp.
- The Patented Solution: The invention is a hairbrush that integrates a plurality of protruding heating elements with two types of safety features: heat-insulating spacers that project from the heating elements themselves, and a border of "elongate peripheral spacers" around the main heating area (ʼ943 Patent, col. 6:31-53). This combination is designed to straighten hair efficiently while maintaining a safe distance between the hot elements and the user's scalp, as illustrated by the depiction of spacers (130C) shielding a scalp (85) from heating elements (125) in Figure 3C.
- Technical Importance: The design sought to create a tool that offered the three-dimensional heating of a brush, increasing surface area contact with hair compared to a flat iron, while systematically addressing the risk of scalp burns through a specific structure of protective spacers. (ʼ943 Patent, col. 4:47-52).
Key Claims at a Glance
- The complaint asserts independent claim 1 and a number of dependent claims (Compl. ¶43). Notably, claim 1 was amended during a post-filing ex parte reexamination.
- The essential elements of the amended independent claim 1 are:
- A hairbrush with a heating plate extending over its face.
- A plurality of heating elements thermally coupled to the plate and protruding from only the face, arranged in lengthwise rows, where the number of heating elements in at least one row is different from 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.
- A plurality of heat insulating elongate peripheral spacers disposed at least around a portion of the hair treating area. (ʼ943 Patent, C1 Certificate, col. 1:23-46).
- The complaint also asserts claims 2-4, 8, 9, 11, 12, and 15-21. (Compl. ¶43).
U.S. Patent 9,591,906 - "Hair Straightening Brush," issued March 14, 2017
Technology Synopsis
The ʼ906 patent describes a hairbrush with protruding heating elements and a specific configuration of spacers designed to protect the user's scalp. The claimed invention focuses on the structural relationship between different types of spacers, including spacers located on top of the heating elements and "elongate peripheral spacers" around the hair treating area, which are located closer to the brush face than the other spacers. (ʼ906 Patent, claim 1).
Asserted Claims
Claim 18, a method claim. (Compl. ¶50). (Note: This claim was subsequently cancelled in a post-filing IPR proceeding).
Accused Features
The complaint alleges infringement based on the manufacture of the Karmin G3 brush, which is said to incorporate multiple types of spacers to maintain a specific distance from the scalp, including shorter spacers around the heating elements. (Compl. ¶49).
U.S. Patent 9,877,562 - "Hair Straightening Brush," issued January 30, 2018
Technology Synopsis
The ʼ562 patent is directed to a hairbrush where the heating elements are "monolithic with and protruding from the heating plate." A distinguishing feature is the structure of the heat insulating spacers, which are claimed to project from a "bore" in a respective heating element, with the bore completely surrounding a portion of the spacer. The invention also includes peripheral spacers along the sides of the brush. (ʼ562 Patent, Abstract; claim 1).
Asserted Claims
Independent claim 1 and dependent claims 2-10. (Compl. ¶57).
Accused Features
The complaint alleges the Karmin G3 brush infringes by having a heating plate with monolithic, protruding heating elements arranged in rows, with insulating spacers projecting from a bore in those elements and peripheral spacers on the sides of the brush. (Compl. ¶56).
III. The Accused Instrumentality
Product Identification
The "KARMIN G3" ceramic straightening brush. (Compl. ¶32).
Functionality and Market Context
The complaint alleges the KARMIN G3 is a heated hairbrush that "copies the look, feel, and straightening technology" of Plaintiffs' DAFNI brush. (Compl. ¶32). The complaint includes a side-by-side visual comparison of the DAFNI brush and the accused KARMIN G3 brush, showing two functionally similar products with oval heads, dark bodies, and a dense field of protruding bristles/elements. (Compl. p. 10). The complaint characterizes the product as a "knock-off" and "copycat" that emerged on the market after the DAFNI brush gained popularity. (Compl. ¶¶14, 32). The complaint alleges the KARMIN G3 is sold directly through Defendant's website and from its headquarters in North Hollywood, California. (Compl. ¶33).
IV. Analysis of Infringement Allegations
The complaint alleges that the overall appearance of the accused KARMIN G3 brush is substantially the same as the patented design of the D'007 Patent. The complaint provides a side-by-side photographic comparison of the DAFNI brush and the accused KARMIN G3 brush, which may serve as evidence for an ordinary observer to compare the patented and accused designs. (Compl. p. 10). The question for the court will be whether an ordinary observer, giving such attention as a purchaser usually gives, would be deceived into purchasing the KARMIN G3 supposing it to be the DAFNI brush.
’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; | A brush with a heating place on the face of the brush. | ¶42 | col. 6:31-32 |
| 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... | Multiple heating elements thermally coupled to and protruding from the plate, arranged in lengthwise rows. | ¶42 | col. 6:33-41 |
| 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 complaint does not provide sufficient detail for analysis of this element. | N/A | col. 1:31-35 (C1 Cert.) |
| 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. 6:42-45 |
| a plurality of heat insulating spacers projecting outwardly from at least some of the plurality of heating elements... | Each protruding heating element also has a heat insulating spacer projecting outwardly from the heating element. | ¶42 | col. 6:46-49 |
| a plurality of heat insulating elongate peripheral spacers disposed at least around a portion of the hair treating area of the hairbrush. | The heating element rows are surrounded by heat-insulating bristles. | ¶42 | col. 6:50-53 |
Identified Points of Contention
- Scope Questions: A primary issue for the ʼ943 patent arises from the post-filing amendment of claim 1. Does the accused KARMIN G3 product meet the newly added limitation requiring that "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"? The complaint, filed before the reexamination, does not allege facts to support this specific structural feature. This creates a potential mismatch between the asserted claim scope and the infringement allegations.
- Technical Questions: A factual question will be whether the "heat-insulating bristles" alleged to be "surrounding" the heating elements of the Karmin G3 meet the claim requirement of "a plurality of heat insulating elongate peripheral spacers disposed at least around a portion of the hair treating area." The analysis may turn on the structure, material, and placement of these bristles.
V. Key Claim Terms for Construction
"heating elements thereof are offset relative to the heating elements in an adjacent one of the plurality of lengthwise rows" ('943 Patent, Amended Claim 1)
- Context and Importance: This term defines the staggered arrangement of the heating elements, which is a key structural feature. The construction of "offset" will determine whether any non-aligned arrangement infringes or if a more specific geometric relationship is required. Practitioners may focus on this term because it is central to the brush's three-dimensional structure, which Plaintiffs allege provides superior heating. (Compl. ¶20).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not quantify the degree of offset required, suggesting that any arrangement where adjacent rows are not perfectly aligned could fall within the claim's scope.
- Evidence for a Narrower Interpretation: The patent figures, such as Figure 2A, depict a very regular, grid-like offset pattern. A party could argue that "offset" should be construed in light of this specific embodiment, limiting the term to a similarly structured, alternating arrangement.
"heat insulating elongate peripheral spacers" ('943 Patent, Amended Claim 1)
- Context and Importance: This limitation defines the protective boundary of the brush. The meaning of "peripheral" and "elongate" will be critical for infringement, as it distinguishes these spacers from those projecting from the heating elements themselves.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "peripheral" could be interpreted broadly to mean any spacers located at or near the edge of the heating area, without requiring a continuous wall. "Elongate" could simply mean the spacers are longer than they are wide.
- Evidence for a Narrower Interpretation: The specification discusses disposing spacers "around substantially an entirety of the hair treating area" (ʼ943 Patent, col. 8:25-28). Figures 1A and 1C show these spacers as a distinct, continuous outer row of bristles. A party could argue these specific disclosures limit the term to a structure that forms a substantive protective ring or wall around the heating elements.
VI. Other Allegations
Indirect Infringement
The complaint does not plead specific facts to support claims of induced or contributory infringement, such as knowledge of the patents combined with actions encouraging infringement by third parties. The allegations are centered on Defendant's direct infringement through its own manufacturing and sales activities. (Compl. ¶¶42, 49, 56).
Willful Infringement
The complaint does not include a specific count for willful infringement or allege facts that would typically support such a claim, for instance, that Defendant had pre-suit knowledge of the patents-in-suit and engaged in objectively reckless conduct. The prayer for relief requests attorneys' fees under 35 U.S.C. § 285, but the complaint does not plead a factual basis for the case being "exceptional." (Compl. ¶(f), p. 15).
VII. Analyst’s Conclusion: Key Questions for the Case
- Impact of Post-Filing Proceedings: A threshold issue for the court will be the profound impact of post-filing patent office proceedings. With the sole asserted claim of the ’906 patent cancelled by IPR, that portion of the case appears to be moot. For the ’943 patent, the analysis will focus on whether Plaintiffs can prove infringement of the newly-amended claims and whether the doctrine of intervening rights will shield Defendant from past damages.
- Pleading vs. Amended Claim Scope: A key evidentiary question for the ’943 patent will be one of factual proof: can Plaintiffs demonstrate that the accused KARMIN G3 brush possesses the specific structure required by the amended claims—namely, having a different number of heating elements in different lengthwise rows—a feature not alleged in the original complaint?
- Design Patent Similarity: For the design patent claim, the case will turn on a question of visual perception: is the overall ornamental appearance of the accused KARMIN G3 brush "substantially the same" as the D'007 patented design in the eyes of an ordinary observer, or are the visual differences sufficient to avoid infringement?