DCT
2:22-cv-06657
Kitsch LLC v. Lauren Peterson
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Kitsch LLC (California)
- Defendant: Lauren Peterson (Utah); Lolly LLC d/b/a PonyPick (Utah)
- Plaintiff’s Counsel: BROOKS KUSHMAN P.C.
- Case Identification: 2:22-cv-06657, C.D. Cal., 01/17/2023
- Venue Allegations: Plaintiff Kitsch alleges venue is proper in the Central District of California because it is headquartered in the district, the alleged harm occurred there, and Defendants sent cease-and-desist communications into the district. Further, Kitsch alleges that any patent infringement suit brought by Defendants against Kitsch would be required to be filed in this district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its elastic hair cutter products do not infringe Defendants' patent for a "Hair Tie Extraction Implement," and that the patent-in-suit is invalid.
- Technical Context: The technology concerns a handheld consumer product designed to safely cut and remove small elastic hair bands from a person's hair.
- Key Procedural History: The dispute arose after Defendants filed a complaint with Amazon, resulting in the removal of Plaintiff's product listing. Defendants subsequently sent letters to Plaintiff accusing it of infringement. The patent-in-suit is a continuation-in-part of a prior, abandoned application, which may be relevant to determining the scope and validity of the asserted claims.
Case Timeline
| Date | Event |
|---|---|
| 1998-11-24 | U.S. Design Patent D401,492 (cited prior art) issues |
| 2016-12-14 | Earliest Priority Date for '908 Patent |
| 2021-12-28 | U.S. Patent No. 11,206,908 issues |
| 2022-06-01 | Kitsch's Amazon product listing removed per Defendants' complaint |
| 2022-06-21 | Defendants send email to Kitsch alleging infringement |
| 2022-08-01 | Defendants send follow-up email to Kitsch |
| 2022-08-05 | Kitsch informs Defendants its products do not infringe |
| 2023-01-17 | Kitsch files First Amended Complaint for Declaratory Judgment |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,206,908 - "Hair Tie Extraction Implement"
- Patent Identification: U.S. Patent No. 11,206,908, "Hair Tie Extraction Implement," issued December 28, 2021.
The Invention Explained
- Problem Addressed: The patent's background describes the difficulty and discomfort associated with removing small elastomeric hair ties, which can become entangled in hair. It notes that using conventional tools like knives or scissors is ineffective and risks cutting the user or their hair ('908 Patent, col. 1:23-41).
- The Patented Solution: The invention is a specialized tool comprising a shank, a hook for engaging a hair tie, and a blade positioned within the hook to sever the tie. A key feature is an "outwardly rising bill" at the terminal end of the hook, which is designed to be inserted into the hair to isolate the hair tie from the hair strands before cutting ('908 Patent, Abstract; col. 2:44-49). This configuration is intended to provide a safe and painless method for removing hair ties ('908 Patent, col. 1:32-41).
- Technical Importance: The patent presents the invention as a novel solution to a common problem for which no dedicated, safe, and effective tool previously existed ('908 Patent, col. 1:32-35).
Key Claims at a Glance
- The complaint identifies independent claims 1, 9, and 13 as being in dispute (Compl. ¶26).
- Independent Claim 1 recites an apparatus with:
- an elongated grippable shank;
- a hook with a blade recess, where the shank and hook are "approximately parallel" near the hook's apex;
- a bill at the hook's end that "rises outward from the hook and the elongated grippable shank"; and
- a razor blade on the hook's interior surface with a sharpened edge facing away from the hook's apex.
- Independent Claim 9 recites a similar apparatus with a shank, a hook with a blade recess where the shank and hook are "approximately parallel," a bill that "rises outward," and a razor blade that "forms a chord within the hook."
- Independent Claim 13 recites an apparatus with:
- a shank;
- "a plurality of bristles forming a brush" protruding from the shank;
- a hook with a blade recess;
- a bill that "rises outward from the hook and the shank"; and
- an interior surface of the hook that is sharpened to form a blade, with the entire apparatus being a "single integrated, polymeric piece."
- The complaint notes that claims 2-8, 10-12, and 14-19 are dependent and will not be infringed if the independent claims are not infringed (Compl. ¶35).
III. The Accused Instrumentality
Product Identification
- The complaint identifies two sets of accused products: Kitsch's original "elastic cutter" and its "new elastic cutters," which were created as a redesign (Compl. ¶¶15, 23).
Functionality and Market Context
- The products are described as tools "used to remove elastic bands that are used, for example, to hold up a ponytail" (Compl. ¶15). The complaint includes an image of the original Kitsch product, showing a tool with a handle and a hooked end. A separate image shows the redesigned product, which has a similar overall form factor but with alleged design differences (Compl. ¶¶15, 23). The complaint presents a close-up image of the redesigned product's hook, annotating it with an arrow to illustrate a key technical distinction from the patented invention (Compl. ¶33).
- Kitsch is positioned as a "leading accessories manufacturer" whose products are sold in major retail stores like Nordstrom and Anthropologie, as well as through e-commerce channels (Compl. ¶14).
IV. Analysis of Infringement Allegations
As this is a complaint for declaratory judgment, the analysis below summarizes Plaintiff Kitsch's non-infringement arguments.
’908 Patent Infringement Allegations (Claim 1)
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality (per Kitsch) | Complaint Citation | Patent Citation |
|---|---|---|---|
| the bill extends away from the elongated grippable shank and away from the hook such that the bill rises outward from the hook and the elongated grippable shank | For the redesigned products, the bill is alleged to "intentionally tilt inward" and therefore does not rise "outward" as required by the claim. An annotated image is provided to support this assertion. | ¶33 | col. 5:48-51 |
| a razor blade affixed to the interior surface of the hook | The complaint does not provide sufficient detail for analysis of this element. | col. 5:55-58 |
’908 Patent Infringement Allegations (Claim 13)
| Claim Element (from Independent Claim 13) | Alleged Non-Infringing Functionality (per Kitsch) | Complaint Citation | Patent Citation |
|---|---|---|---|
| a plurality of bristles forming a brush, the bristles protruding from the shank | The complaint alleges that the elastic cutters sold by Kitsch "do not include 'a plurality of bristles forming a brush.'" | ¶31 | col. 6:47-49 |
| the bill rises outward from the hook and the shank | As with Claim 1, the complaint alleges the redesigned product's bill tilts "inward" and does not rise "outward." | ¶33 | col. 6:53-54 |
Identified Points of Contention
- Scope Questions: A primary issue is the interpretation of "rises outward from the hook and the... shank." The dispute will center on whether this language can be construed to cover Kitsch's redesigned product, which allegedly features a bill that "tilts inward" (Compl. ¶33). A side-by-side visual comparison in the complaint contrasts the design of a prior art patent with the '908 patent, which may inform the interpretation of the tool's geometry (Compl. ¶39).
- Technical Questions: A factual question for Claim 13 is whether Kitsch's products contain any structure that meets the definition of "a plurality of bristles forming a brush" (Compl. ¶31). The provided images of the Kitsch products do not show such a feature (Compl. ¶¶15, 23).
V. Key Claim Terms for Construction
The Term: "rises outward"
Context and Importance: This term, appearing in all asserted independent claims, is central to Kitsch's non-infringement argument for its redesigned product. Kitsch alleges its product's bill "tilts inward," creating a direct conflict with this limitation (Compl. ¶33).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patentee may argue the term simply requires the bill to protrude "upwardly and outwardly from the hook" ('908 Patent, col. 4:12-13), suggesting any non-coplanar, upward-angled orientation from the main shank could suffice.
- Evidence for a Narrower Interpretation: The figures, particularly FIG. 1A, depict a bill with a distinct angle away from the central axis of the shank. Kitsch may argue that "outward" requires this specific directional vector, which its "inward" tilting bill opposes.
The Term: "approximately parallel"
Context and Importance: Practitioners may focus on this term because Kitsch alleges it renders Claims 1 and 9 invalid for indefiniteness under 35 U.S.C. § 112, arguing it "lacks reasonable certainty and an objective anchor" (Compl. ¶28).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader (Definite) Interpretation: A patentee might argue that the claim provides context by stating this parallel relationship defines a region that "taper[s] the blade recess" ('908 Patent, col. 5:17-20). This functional language could provide an objective anchor for a person of ordinary skill in the art.
- Evidence for a Narrower (Indefinite) Interpretation: The specification does not provide a definition, numerical range, or standard for what degree of parallelism is required. The absence of such guidance in the written description may support the argument that the term fails to reasonably apprise the public of the claim's scope.
VI. Other Allegations
Indirect Infringement
- The complaint seeks a declaration that Kitsch is not liable for any form of infringement, including by inducement or contribution (Compl. ¶44). The complaint does not detail specific facts underlying any potential indirect infringement claim by Defendants.
Willful Infringement
- The complaint does not contain an allegation of willful infringement. However, it does contain facts relevant to a potential future counterclaim for willfulness by Defendants. The complaint acknowledges Kitsch received notice of the '908 patent via Amazon around June 1, 2022, and directly from Defendants' counsel on June 21, 2022, establishing a date of knowledge (Compl. ¶¶6-7). The complaint also notes Kitsch's subsequent investigation and its assertion of non-infringement and invalidity, facts Kitsch could use to rebut a charge of willfulness (Compl. ¶¶22, 36).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction and infringement: Can the claim term "rises outward," which appears in all independent claims, be interpreted to read on Kitsch's redesigned product, which allegedly features a bill that "tilts inward"? The answer will likely determine infringement for the redesigned products.
- A dispositive threshold issue will be one of validity: Does the term "approximately parallel" in Claims 1 and 9 render those claims invalid as indefinite for failing to provide a person of ordinary skill with reasonable certainty about the scope of the invention?
- A key evidentiary question will be one of invalidity over prior art: Does the cited U.S. Design Patent No. 401,492 for a "Safety Cutter," which Kitsch presents as visually similar to the '908 patent's invention, anticipate or render obvious the asserted claims? (Compl. ¶39).