DCT

2:19-cv-10592

Guy A Shaked Investments Ltd v. Ontel Products Corp

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:19-cv-10592, C.D. Cal., 12/16/2019
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains a regular and established place of business in Pacoima, California, and has committed the alleged acts of patent infringement within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s "SIMPLY STRAIGHT" hair straightening brush infringes two design patents and three utility patents related to heated hair brush technology.
  • Technical Context: The technology at issue involves hair straightening brushes that use heated elements and protective spacers as an alternative to traditional flat irons, aiming to provide faster and safer styling.
  • Key Procedural History: The complaint alleges Defendant was on notice of potential infringement of pending applications as early as 2015 and received notice of infringement of the issued patents, including detailed allegations, on March 29, 2017. Subsequent to the complaint's filing, several of the patents-in-suit have undergone post-grant proceedings. U.S. Patent 9,578,943 was the subject of an ex parte re-examination that resulted in amended claims. U.S. Patent 9,591,906 was the subject of an Inter Partes Review (IPR) that resulted in the cancellation of all asserted claims. U.S. Patent 9,877,562 was also subject to an IPR, with all claims found patentable.

Case Timeline

Date Event
2012-05-17 Earliest Priority Date (’943, ’906, ’562 Patents)
2015-01-01 Accused Product Launch ("since 2015")
2016-07-20 Filing Date (D'007 Patent)
2017-02-28 Issue Date (U.S. Patent 9,578,943)
2017-03-14 Issue Date (U.S. Patent 9,591,906)
2017-03-29 Plaintiff Provides Notice of Infringement to Defendant
2018-01-30 Issue Date (U.S. Patent 9,877,562)
2018-05-08 Issue Date (U.S. Design Patent D817,007)
2019-12-16 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,578,943 - "Hair Straightening Brush"

The Invention Explained

  • Problem Addressed: The complaint asserts that traditional flat irons are time-consuming and can damage hair due to high heat, while prior art hot combs have safety limitations (Compl. ¶¶ 16, 20; ’943 Patent, col. 1:23-27).
  • The Patented Solution: The patent describes a hairbrush with a plurality of protruding heating elements arranged to increase the heated surface area for hair contact, allowing for effective straightening at lower temperatures (Compl. ¶¶ 20-21). To mitigate the risk of burns, the design incorporates "spacers" of a specified density and resilience arranged around and among the heating elements to maintain a safe distance between the hot surfaces and the user's scalp (’943 Patent, Abstract; col. 2:30-38).
  • Technical Importance: The technology aimed to merge the straightening capability of a flat iron with the convenience of a hairbrush, while improving safety and reducing styling time (Compl. ¶¶ 18, 22).

Key Claims at a Glance

  • The complaint asserts at least claims 1-4, 8, 9, 11, 12, and 15-21 (Compl. ¶47). Subsequent to the complaint, claim 1 was amended via an ex parte re-examination certificate (US 9,578,943 C1).
  • The essential elements of independent claim 1, as amended, include:
    • A heating plate extending over a face of the hairbrush;
    • A plurality of heating elements protruding from only the face of the hairbrush, 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 heating elements in an adjacent row;
    • A plurality of heat insulating spacers projecting outwardly from at least some of the heating elements; and
    • A plurality of heat insulating elongate peripheral spacers disposed around a portion of the hair treating area.
  • The complaint was filed prior to the amendment of the asserted claims.

U.S. Patent No. 9,591,906 - "Hair Straightening Brush"

The Invention Explained

  • Problem Addressed: The patent addresses the same operational and safety concerns with conventional hair straightening tools as the ’943 Patent (Compl. ¶¶ 16-17; ’906 Patent, col. 1:19-23).
  • The Patented Solution: This patent is directed to a method for safely straightening hair. The method involves arranging spacers on a brush to maintain a specified distance from the scalp, where the density and resilience of the spacers are selected to ensure that distance is maintained during use (’906 Patent, Abstract; col. 5:42-59). The claims focus on the structural relationship between different types of spacers to achieve a safe design.
  • Technical Importance: The invention provides a manufacturing and design framework for creating a heated brush that is both effective and safe from causing burns to the user's scalp (Compl. ¶22).

Key Claims at a Glance

  • The complaint asserts infringement of claim 18 (’906 Patent, Compl. ¶55).
  • An Inter Partes Review Certificate (US 9,591,906 K1), issued August 4, 2022, after the complaint was filed, indicates that claims 1-3, 5-18, and 20 of the ’906 Patent have been cancelled. The asserted claim 18 is therefore no longer valid.

U.S. Design Patent D817,007 - "Hair Straightening Brush"

  • Technology Synopsis: This patent protects the ornamental design of a hair straightening brush. Protection extends to the overall visual appearance, including the shape of the brush head and handle, and the pattern of the bristle-like elements on the brush face, as depicted in the patent's figures (’007 Patent, Figs. 1-6).
  • Asserted Claims: Design patents contain a single claim for the ornamental design as shown and described (Compl. ¶38).
  • Accused Features: The complaint alleges that the overall "look" of the accused SIMPLY STRAIGHT brush copies the patented design (Compl. ¶¶ 32, 39).

U.S. Patent 9,877,562 - "Hair Straightening Brush"

  • Technology Synopsis: This patent claims a hairbrush having a heating plate from which "monolithic" heating elements protrude in rows. The invention's point of novelty includes heat insulating spacers that project from a "bore" within the heating elements themselves, which are surrounded by peripheral spacers to protect the user from heat (’562 Patent, Abstract; col. 6:1-6).
  • Asserted Claims: The complaint asserts claims 1-10 (Compl. ¶63).
  • Accused Features: The SIMPLY STRAIGHT brush is alleged to embody the claimed invention, possessing a heating plate, monolithic heating elements, spacers projecting from a bore in those elements, and peripheral spacers (Compl. ¶62).

III. The Accused Instrumentality

Product Identification

  • The "SIMPLY STRAIGHT" straightening brush (Compl. ¶32).

Functionality and Market Context

  • The complaint describes the accused product as a ceramic straightening brush that allegedly "copies the look, feel, and straightening technology" of the Plaintiff's DAFNI brush (Compl. ¶32). It is allegedly sold through major U.S. retailers, including Amazon.com, WalMart, and Bed Bath & Beyond (Compl. ¶33). The complaint provides a visual of the accused product's brush head, showing rows of bristles on an oval-shaped face. This image depicts the array of bristle-like elements on the face of the accused SIMPLY STRAIGHT brush (Compl. p. 11).

IV. Analysis of Infringement Allegations

’943 Patent Infringement Allegations

The complaint’s allegations are mapped below to the elements of independent claim 1, as amended during re-examination.

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 [sic] on the face of the brush." p.13, ¶1 col. 6:11-12
a plurality of heating elements... 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... in at least one other... row; The accused product has "multiple heating elements" arranged in "lengthwise... rows." The complaint does not address the limitation requiring a different number of elements per row, as this was added after the complaint was filed. p.13, ¶2-4 col. 6:13-22
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 product "are arranged in... offset rows." p.13, ¶4 col. 6:23-26
a plurality of heat insulating spacers projecting outwardly from at least some of the plurality of heating elements...; Each protruding heating element in the accused product "also has a heat insulating spacer projecting outwardly from the heating element." p.13, ¶5-6 col. 6:27-31
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 alleged to be "surrounding by heat-insulating bristles." p.13, ¶5 col. 6:32-35

’906 Patent Infringement Allegations

The complaint asserts infringement of claim 18 of the ’906 Patent (Compl. ¶55). An Inter Partes Review Certificate (US 9,591,906 K1), issued August 4, 2022, confirms that claim 18 has been cancelled. This development raises a threshold question regarding the viability of this cause of action as pleaded.

Identified Points of Contention

  • Impact of Re-examination ('943 Patent): A primary issue will be whether the Plaintiff can prove that the accused SIMPLY STRAIGHT brush meets the limitations added to the ’943 Patent claims during re-examination. Specifically, the complaint does not allege facts supporting the new limitation that "a number of the heating elements in at least one of the lengthwise rows is different than a number... in at least one other of the lengthwise rows," creating a potential gap between the pleadings and the currently enforceable claim scope.
  • Technical Questions: The dispute may turn on whether the components of the accused product function as claimed. For example, what evidence demonstrates that the bristles on the SIMPLY STRAIGHT brush function as both "heat insulating spacers projecting outwardly" from the heating elements and as distinct "heat insulating elongate peripheral spacers" as those terms are used in the patent.

V. Key Claim Terms for Construction

  • The Term: "heating elements thereof are offset relative to the heating elements in an adjacent one of the plurality of lengthwise rows" (’943 Patent, claim 1)

    • Context and Importance: This "offset" arrangement is a central structural feature of the claimed brush, and the complaint alleges the accused product has "offset rows" (Compl. p.13, ¶4). The definition of "offset" will be critical to determining if the specific pattern on the SIMPLY STRAIGHT brush infringes.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claim language itself does not specify a degree or type of offset, which may support a construction covering any non-linear alignment between adjacent rows (’943 Patent, col. 6:23-26).
      • Evidence for a Narrower Interpretation: The patent figures depict a specific, regular, staggered pattern (’943 Patent, Figs. 2A, 2B). A party could argue that this disclosure limits the term "offset" to a similar checkerboard-style arrangement.

  • The Term: "heat insulating elongate peripheral spacers" (’943 Patent, claim 1)

    • Context and Importance: These spacers are a key safety feature. The infringement allegation rests on the "heat-insulating bristles" surrounding the heating elements of the accused product meeting this limitation (Compl. p.13, ¶5). Practitioners may focus on this term because the case may depend on whether the outer ring of bristles on the accused device can be properly characterized as "peripheral spacers" that are distinct from other spacers.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification broadly defines a "spacer" as "any structure arranged to keep a clearance" from the scalp (’943 Patent, col. 2:9-12), which could encompass the outer bristles.
      • Evidence for a Narrower Interpretation: The specification and figures distinguish between different types of spacers: those on the brush periphery (130A), those on top of heating elements (130B), and those among them (130C) (’943 Patent, Fig. 1A; col. 4:9-13). This could support an argument that "peripheral spacers" must be structurally or positionally distinct from other bristles or spacers on the brush.

VI. Other Allegations

  • Indirect Infringement: While no separate count is plead, the complaint includes a general allegation of inducing infringement (Compl. ¶14), presumably based on the sale of the SIMPLY STRAIGHT brush to end-users who would then use it in an infringing manner.
  • Willful Infringement: The complaint alleges willful infringement for all asserted patents. The basis for this allegation is pre-suit knowledge, stemming from a 2015 notification regarding pending applications and a March 29, 2017 notification that provided "detailed infringement allegations" against the accused product for the issued patents (Compl. ¶¶ 34-36, 48, 56, 64).

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

  • Impact of Post-Filing Patent Office Proceedings: A threshold issue is the effect of the IPR and re-examination proceedings on the case. The cancellation of the asserted claim of the '906 patent appears to render that cause of action non-viable, while the amendments to the '943 patent claims raise the evidentiary question of whether the accused product meets the newly added limitations that were not addressed in the original complaint.
  • Claim Construction and Infringement Scope: A central substantive dispute will likely be one of definitional scope: can the term "heat insulating elongate peripheral spacers" be construed to read on the outer ring of bristles in the accused brush, or are the claimed spacers required to be structurally distinct from other bristles as depicted in the patent’s embodiments?
  • Design Patent Obviousness and Infringement: For the design patent, the case will turn on the ordinary observer test: does the accused SIMPLY STRAIGHT brush have substantially the same overall visual appearance as the patented design, such that an ordinary observer would be deceived into purchasing the accused product, considering the prior art in the field?