DCT

2:19-cv-10593

Guy A Shaked Investments Ltd v. Trade Box LLC

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:19-cv-10593, C.D. Cal., 12/16/2019
  • Venue Allegations: Venue is alleged to be proper in the Central District of California based on the defendant’s principal place of business being in Los Angeles and the commission of infringing acts within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s "STRAIGHT UP" and "GLOSSIE" lines of heated hair straightening brushes infringe two design patents and three utility patents related to the technology and ornamental appearance of such devices.
  • Technical Context: The technology concerns hair straightening brushes that utilize a three-dimensional array of heated elements combined with protective, heat-insulating spacers, a design intended to offer a safer and more efficient alternative to traditional flat iron straighteners.
  • Key Procedural History: The complaint alleges that the defendant, Instyler, sought to license the plaintiffs’ intellectual property in 2016 and was provided with detailed infringement allegations in March 2017, prior to the filing of the suit. These allegations form the basis of the willfulness claims. Post-filing administrative proceedings at the U.S. Patent and Trademark Office have significantly impacted the patents-in-suit. An ex parte reexamination of the ’943 patent resulted in amended claims. More critically, an inter partes review (IPR) of the ’906 patent resulted in the cancellation of all asserted claims. An IPR of the ’562 patent confirmed the patentability of all asserted claims.

Case Timeline

Date Event
2012-05-17 Earliest Priority Date for ’943, ’906, ’562 Patents
2016-01-01 Alleged Launch of "STRAIGHT UP" Product (approx. date)
2016-03-01 Alleged Licensing Discussions Initiated by Defendant
2017-01-01 Alleged Launch of "GLOSSIE" Product (approx. date)
2017-02-28 U.S. Patent No. 9,578,943 Issued
2017-03-14 U.S. Patent No. 9,591,906 Issued
2017-03-24 Plaintiff Allegedly Provided Defendant Notice of Infringement
2018-01-30 U.S. Patent No. 9,877,562 Issued
2018-05-08 U.S. Design Patent No. D817,007 Issued
2019-03-05 U.S. Design Patent No. D842,539 Issued
2019-12-16 Complaint Filed

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 identifies that traditional hair straightening tools like flat irons are often inefficient, time-consuming, and can damage hair due to high, concentrated heat (Compl. ¶20). The patent background further notes that operational and safety issues have limited the adoption of earlier hot comb technologies ('943 Patent, col. 1:24-27).
  • The Patented Solution: The invention is a brush-like device featuring a large surface with numerous protruding heating elements. This design increases the total heated surface area that contacts the hair, allowing for effective straightening at lower, less damaging temperatures (Compl. ¶¶ 20-21). To address safety, the design incorporates heat-insulating "spacers" that protrude from the heating elements and around the brush's periphery, creating a protective gap between the hot surfaces and the user's scalp and hands ('943 Patent, Abstract, col. 4:1-14; Compl. ¶22).
  • Technical Importance: The technology represents a shift from the two-dimensional clamping of a flat iron to a "three dimensional heating" approach, which the patent suggests provides a safer and more efficient method for hair straightening ('943 Patent, col. 4:48-51).

Key Claims at a Glance

  • The complaint asserts independent claim 1, among other dependent claims (Compl. ¶56).
  • The essential elements of the originally issued independent claim 1 include:
    • A heating plate extending over a face of the hairbrush;
    • A plurality of heating elements thermally coupled to the plate, protruding from its face, and arranged in multiple lengthwise rows;
    • The heating elements in each row being "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; and
    • A plurality of heat-insulating elongate peripheral spacers around a portion of the hair treating area.
  • The complaint reserves the right to assert claims 1-4, 8, 9, 11, 12, and 15-21 (Compl. ¶56). It should be noted that claims 20 and 21 were disclaimed by the patentee in a later proceeding ('943 Patent, Disclaimer).

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

Issued Mar. 14, 2017

The Invention Explained

  • Problem Addressed: Similar to its related patents, the '906 patent addresses the safety and efficiency limitations of conventional hair straightening tools (Compl. ¶¶ 16, 62; '906 Patent, col. 1:20-23).
  • The Patented Solution: The '906 patent is directed to a method of manufacturing a brush, focusing on the specific arrangement and characteristics of protective spacers. The claimed method involves arranging spacers to maintain a set distance from the scalp, including peripheral spacers and considering the "resilience" of the spacers to ensure safety even when the brush is pressed against the head ('906 Patent, Abstract, col. 8:8-25).
  • Technical Importance: The invention focuses on the engineering and manufacturing principles required to create a safe yet effective heated brush, specifically by defining the relationship between spacer density, flexibility, and the protective gap maintained during use (Compl. ¶63).

Key Claims at a Glance

  • The complaint asserts independent claim 18, a method claim (Compl. ¶64).
  • The essential elements of independent claim 18 include:
    • Arranging a plurality of spacers to maintain a specified distance between heating element ends and a user's scalp;
    • Including elongate peripheral spacers whose ends are closer to the brush face than the ends of the other spacers; and
    • Dispersing the spacers at a specified density selected to maintain the safety distance with respect to the "resilience of the plurality of spacers."
  • The complaint does not assert other claims of the '906 patent. As noted, claim 18 was later cancelled during an inter partes review proceeding ('906 Patent, IPR Certificate).

U.S. Patent No. 9,877,562 - Hair Straightening Brush

  • Patent Identification: U.S. Patent No. 9,877,562, Hair Straightening Brush, issued Jan. 30, 2018.
  • Technology Synopsis: This utility patent discloses a hairbrush where the heating elements are "monolithic with and protruding from the heating plate." The invention also specifies heat-insulating spacers that project from a "bore" within each heating element, as well as peripheral spacers, to shield the user from heat ('562 Patent, Abstract; Compl. ¶70).
  • Asserted Claims: Independent claim 1 and dependent claims 2-10 (Compl. ¶72).
  • Accused Features: The complaint alleges the accused brushes infringe by having a heating plate with monolithic protruding heating elements, spacers projecting from bores in those elements, and peripheral spacers (Compl. ¶71).

U.S. Design Patent No. D817,007 - Hair Straightening Brush

  • Patent Identification: U.S. Design Patent No. D817,007, Hair Straightening Brush, issued May 8, 2018.
  • Technology Synopsis: This patent protects the specific ornamental design of a hair straightening brush, characterized by its overall shape, the pattern of bristles on the brush face, and the handle configuration (D'007 Patent, FIGS. 1-6).
  • Asserted Claims: The single claim for the ornamental design as shown and described in the patent (Compl. ¶41).
  • Accused Features: The overall visual appearance of the "STRAIGHT UP," "STRAIGHT UP mini," and "GLOSSIE" brushes are alleged to be substantially the same as the claimed design (Compl. ¶41).

U.S. Design Patent No. D842,539 - Hair Straightening Brush

  • Patent Identification: U.S. Design Patent No. D842,539, Hair Straightening Brush, issued Mar. 5, 2019.
  • Technology Synopsis: This patent protects a second, distinct ornamental design for a hair straightening brush, featuring a different handle design and bristle layout from the D'007 patent (D'539 Patent, FIGS. 1-6).
  • Asserted Claims: The single claim for the ornamental design as shown and described in the patent (Compl. ¶48).
  • Accused Features: The overall visual appearance of the "STRAIGHT UP mini" brush is alleged to be substantially the same as the claimed design (Compl. ¶48).

III. The Accused Instrumentality

Product Identification

  • The accused products are the “STRAIGHT UP” ceramic straightening brush, the “STRAIGHT UP mini” ceramic brush, and the “GLOSSIE” ceramic straightening brush (Compl. ¶¶ 33-34).

Functionality and Market Context

  • The complaint alleges these are heated ceramic brushes that copy the "look, feel, and straightening technology" of the plaintiffs' DAFNI brush (Compl. ¶33). The complaint alleges that these products are sold directly via the defendant's website and through major U.S. retailers, including ULTA Beauty, Sally Beauty, Kohl's, and Target (Compl. ¶35). The complaint provides an image showing three accused brushes, highlighting their oval shape and bristle patterns (Compl. p. 11).

IV. Analysis of Infringement Allegations

’943 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a heating plate extending over a face of the hairbrush The accused brushes have a "heating place on the face of the brush." ¶55 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... The accused brushes have "multiple heating elements thermally coupled to and protruding from the plate" which are "arranged in lengthwise... rows." ¶55 col. 6:34-41
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 brushes "are arranged in lengthwise, offset rows." ¶55 col. 6:42-45
a plurality of heat insulating spacers projecting outwardly from at least some of the plurality of heating elements... "Each heating protruding heating element also has a heat insulating spacer projecting outwardly from the heating element." ¶55 col. 6:46-50
a plurality of heat insulating elongate peripheral spacers disposed at least around a portion of the hair treating area... The heating elements are surrounded by "heat-insulating bristles." ¶55 col. 6:51-54

’906 Patent Infringement Allegations

Claim Element (from Independent Claim 18) Alleged Infringing Functionality Complaint Citation Patent Citation
arranging a plurality of spacers to maintain a specified distance between protruding ends of a plurality of heating elements... and a scalp... Instyler's manufacturing process includes using "multiple spacers to maintain a specific distance between the ends of the heating elements and the user's scalp." ¶63 col. 8:8-15
...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 manufacturing process includes "additional, shorter spacers around the heating elements." ¶63 col. 8:15-20
...the plurality spacers are dispersed... at a specified density selected to assure maintaining the specified distance with respect to a resilience of the plurality of spacers The manufacturing process includes using "a density of spacers designed to ensure space between the user's scalp and the heating elements when the spacers are flexed." ¶63 col. 8:21-25

Identified Points of Contention

  • Scope Questions: For the '943 patent, the construction of "offset relative to" will be critical. The dispute may center on whether the accused products' bristle arrangement meets the specific geometric relationship required by this term, or if the term is limited to the staggered pattern shown in the patent's figures. For the '562 patent, the term "monolithic with" raises the question of whether the accused products' heating elements are formed as a single, continuous piece with the heating plate, or are attached in a way that falls outside this definition.
  • Technical Questions: The infringement allegation for the '906 patent targets a method of manufacturing. A key question is what evidence the plaintiff can present to prove the defendant's manufacturing process includes the specific step of selecting a spacer density based on resilience calculations, as required by the claim, rather than merely arriving at a functional design. This is now likely a moot point, given the claim's cancellation.

V. Key Claim Terms for Construction

The Term: "offset relative to" (’943 Patent, Claim 1)

  • Context and Importance: This term governs the spatial arrangement of the heating elements. Its interpretation is central to the infringement analysis, as a non-infringing product might use a simple grid, while an infringing one would need to embody the specific "offset" pattern. Practitioners may focus on this term because the allegation hinges on this geometric limitation.
  • Intrinsic Evidence for a Broader Interpretation: The specification discusses the arrangement creating "undulating paths" for hair, which could support a construction covering any non-aligned pattern that achieves this effect ('943 Patent, col. 8:38-40).
  • Intrinsic Evidence for a Narrower Interpretation: The patent figures, particularly FIG. 2A, depict a highly regular, staggered configuration. A party could argue the term should be limited to this specific illustrated embodiment where elements in one row are centered in the gaps of the adjacent row.

The Term: "monolithic with" (’562 Patent, Claim 1)

  • Context and Importance: This term describes how the heating elements are joined to the heating plate. The infringement question for the '562 patent may turn on whether the accused products are made via a process that creates a "monolithic" structure.
  • Intrinsic Evidence for a Broader Interpretation: The specification does not provide extensive detail on the manufacturing process, which may support an interpretation that "monolithic" simply means integrally and inseparably joined, not necessarily formed from a single piece of material.
  • Intrinsic Evidence for a Narrower Interpretation: The plain meaning of "monolithic" implies being formed from a single, undifferentiated block. A party could argue this requires the plate and elements to be cast, molded, or machined from a single piece of stock, which is a specific and potentially limiting structural feature ('562 Patent, col. 10:20-22).

VI. Other Allegations

Indirect Infringement

  • The complaint does not plead a separate cause of action for indirect infringement under 35 U.S.C. § 271(b) or (c). However, it does allege that venue is proper in part because the defendant is "inducing others to commit acts of patent infringement" (Compl. ¶¶ 14, 15), preserving the factual basis for such a claim. The formal counts are for direct infringement under § 271(a).

Willful Infringement

  • Willfulness is alleged for all five patents-in-suit. The allegations are based on purported pre-suit knowledge, citing Instyler's alleged attempts to license the technology in 2016 and Plaintiffs' provision of "detailed infringement allegations" to Instyler on March 24, 2017 (Compl. ¶¶ 36-38, 42, 57, 65).

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

  • A primary issue for the court will be the impact of post-filing administrative proceedings. The cancellation of the sole asserted claim of the '906 patent during an inter partes review appears to be dispositive for the Fourth Cause of Action, raising the question of how the court will handle this now-moot infringement allegation.
  • For the surviving utility patents, the case will likely involve a central question of definitional scope. The dispute may turn on whether claim terms such as "offset relative to" ('943 patent) and "monolithic with" ('562 patent) are construed broadly enough to encompass the defendant’s product designs, or if they are narrowed by the specific embodiments shown in the patent specifications.
  • Regarding the design patents, a key evidentiary question will be one of visual comparison. The analysis will focus on whether the overall ornamental appearance of the accused Instyler brushes creates the same visual impression as the patented designs in the mind of an ordinary observer familiar with the prior art.