DCT

2:23-cv-01427

Urban Dollz LLC v. Lashify Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:23-cv-01427, C.D. Cal., 02/24/2023
  • Venue Allegations: Venue is alleged in the Central District of California based on Defendant Lashify's principal place of business and Defendant Lotti's residence being within the district.
  • Core Dispute: Plaintiff alleges that Defendants engage in false advertising under the Lanham Act and false patent marking under the Patent Act by falsely representing that their artificial eyelash products are patented and that they invented the underlying technology.
  • Technical Context: The technology relates to do-it-yourself (DIY) artificial eyelash extensions, specifically multi-lash clusters designed for application underneath a user's natural lashes.
  • Key Procedural History: The complaint heavily references a prior U.S. International Trade Commission (ITC) proceeding (Inv. No. 337-TA-1226). It alleges that the ITC determined Defendant's "Gossamer" eyelashes do not practice U.S. Patent Nos. 10,660,388 and 10,721,984. The complaint further alleges that Defendant was made aware of significant prior art during this ITC litigation, which it claims invalidates other patents Defendant asserts.

Case Timeline

Date Event
2016-07-28 Earliest Priority Date for ’388 and ’260 Patents
2017-12-01 Defendant allegedly claims its "Fuse Control Wand" is "Patented"
2018-03-27 U.S. Design Patent No. D814,107 issues to Defendant Lotti
2020-05-26 U.S. Patent No. 10,660,388 ('388 Patent) issues
2020-07-28 U.S. Patent No. 10,721,984 ('984 Patent) issues
2021-03-29 Defendant allegedly identified prior art in ITC litigation
2021-06-09 ITC Administrative Law Judge determines Defendant's product does not practice the '388 Patent
2021-10-06 ITC determines Defendant's product does not practice the '984 Patent
2022-01-11 U.S. Patent No. 11,219,260 ('260 Patent) issues
2023-02-24 Complaint Filing Date

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

U.S. Patent No. 11,219,260, “Artificial Lash Extensions,” issued January 11, 2022

The Invention Explained

  • Problem Addressed: Conventional single eyelash extensions are time-consuming and expensive to apply, requiring a professional cosmetician. Traditional strip lashes can be uncomfortable, difficult to apply, and appear unnatural. (U.S. Patent No. 10,660,388, col. 1:24-46).
  • The Patented Solution: The patent describes an artificial lash extension system composed of multiple "clusters" of artificial hairs. These clusters are attached to a common "base" using heat, creating a single, multi-cluster unit. This unit is specifically designed to be attached to the underside of a person's natural eyelashes, rather than on top or directly to the eyelid. ('260 Patent, Claim 1, as cited in Compl. ¶45; '388 Patent, col. 2:54-65).
  • Technical Importance: This technology purports to offer a method for consumers to achieve the appearance of professional lash extensions at home by simplifying the application process from one-lash-at-a-time to one-segment-at-a-time. (Compl. ¶18).

Key Claims at a Glance

  • The complaint focuses its allegations on Claim 1. (Compl. ¶45).
  • The essential elements of independent Claim 1, as quoted in the complaint, are:
    • An artificial lash extension system comprising a plurality of lash extensions.
    • Each lash extension comprises a plurality of clusters of artificial hairs (with each cluster having at least two hairs).
    • A base, where the clusters are attached to the base by at least an application of heat.
    • The artificial hairs of each cluster protrude from the base.
    • At least some artificial hairs of at least one cluster are coupled to one another at the base.
    • The base is designed to attach the lash extension to an underside of natural lashes.

U.S. Patent No. 10,660,388, “Artificial Lash Extensions,” issued May 26, 2020

The Invention Explained

  • Problem Addressed: The patent addresses the same problems of cost, time, and skill required for conventional eyelash extension application. ('388 Patent, col. 1:24-46).
  • The Patented Solution: This patent claims a method for applying artificial eyelashes. The method involves obtaining a pre-made set of lash "fusions" (each fusion comprising multiple clusters), grasping the set with an applicator, applying adhesive to the top side of the fusions, and arranging and affixing the set only to the underside of the subject's natural upper eyelash. ('388 Patent, Claim 1).
  • Technical Importance: The claimed method is directed at the specific "under-lash" application technique that Defendant markets as its core innovation for at-home users. (Compl. ¶¶18-19).

Key Claims at a Glance

  • The complaint does not specify a claim, but its allegations of non-practice relate to the core method. Independent Claim 1 is representative.
  • The essential elements of independent Claim 1 are:
    • Obtaining a set of clusters of artificial eyelashes that form a set of lash fusions connected to a base.
    • Grasping the set of lash fusions with an applicator.
    • Applying an adhesive to a top side of the set of lash fusions.
    • Arranging the set of lash extensions proximate to an underside of a natural upper eyelash.
    • Affixing the set of lash extensions only to the underside of the natural upper eyelash.

III. The Accused Instrumentality

Product Identification

  • The complaint identifies Defendant's "Gossamer" artificial eyelashes, the "Fuse Control Wand" applicator, the "Lash Lozenge" and "Lash Cartridge" containers, and the "Lashify System" as a whole. (Compl. ¶¶ 64, 66, 67, 69). The false marking allegations center specifically on the "Gossamer" eyelashes and other products associated with the '388 Patent. (Compl. ¶¶ 83, 128, 131).

Functionality and Market Context

  • The "Gossamer" lashes are described as segments of artificial eyelash clusters designed for at-home application. (Compl. ¶71). The system is marketed as the "worlds first and only DIY lash extension system," intended for application underneath the user's natural lashes. (Compl. ¶¶3, 18-19). The complaint alleges that Defendant has built its brand reputation and commercial success on positioning itself as a prolific inventor and the originator of this technology. (Compl. ¶¶ 88-89).

IV. Analysis of False Marking & Advertising Allegations

'260 Patent False Advertising Allegations

The complaint alleges that Defendant's claims of inventing the subject matter of the ’260 Patent are false because the invention was anticipated by a prior art product ("PUIE") that the named inventor allegedly purchased from Amazon.com before filing the patent application. (Compl. ¶¶ 46-47). The complaint includes an image of the alleged prior art PUIE product, which depicts multiple segments of clustered artificial lashes in a retail package (Compl. ¶46).

Claim Element (from Independent Claim 1) Alleged Anticipating Feature of Prior Art "PUIE" Product Complaint Citation Patent Citation
a plurality of lash extensions... comprising: a plurality of clusters of artificial hairs... The PUIE product comprises multiple distinct lash segments, each made of multiple clusters of artificial hairs. The complaint provides an annotated photograph identifying these features. ¶¶48-50 col. 4:52-56
a base, wherein the plurality of clusters are attached to the base by at least an application of heat... The PUIE product allegedly has a base to which the clusters are attached via heat fusion, consistent with Defendant's own explanation of the PUIE product in the prior ITC litigation. ¶51 col. 3:1-11
wherein the at least two artificial hairs of each of the plurality of clusters protrude from the base... The hairs of the PUIE product's clusters are alleged to protrude from the heat-fused base. An annotated photograph points to the base from which the hairs extend. ¶52 col. 4:5-10
wherein the base is designed to at least attach the lash extension to an underside of natural lashes. The complaint alleges the base of the PUIE eyelashes is designed for attachment to the underside of natural lashes, consistent with the claim. ¶54 col. 2:61-65
  • Identified Points of Contention:
    • Factual Question: A central question is whether the PUIE product, allegedly purchased by the inventor prior to the patent's priority date, contains every element of Claim 1 of the '260 Patent. The complaint's detailed allegations and use of annotated images from a related litigation proceeding suggest this will be a heavily fact-dependent inquiry. (Compl. ¶¶48-54).
    • Scope Question: The analysis may turn on the construction of terms like "base" and "application of heat." The court may need to determine if the structure of the PUIE product's base and the method of its formation fall within the scope of these terms as used in the patent.

'388 Patent False Marking Allegations

The complaint alleges that Defendant falsely marks or advertises its "Gossamer" eyelashes and at least 29 other products as being covered by the '388 Patent. (Compl. ¶¶ 128, 131). This allegation is primarily based on a finding by an ITC Administrative Law Judge that the "Gossamer" products do not practice the '388 Patent, a finding Defendant did not appeal. (Compl. ¶¶ 83-84).

Claim Element (from Independent Claim 1) Alleged Reason for Non-Practice / Falsity Complaint Citation Patent Citation
obtaining a set of clusters of artificial eyelashes that form a set of lash fusions that are connected to a base... The complaint's allegation of false marking is not based on a specific element but on the overall finding of non-practice by the ITC. ¶¶83, 128 col. 7:26-30
grasping the set of lash fusions via an applicator; The complaint alleges the ITC determined the "Gossamer" artificial eyelashes do not practice the '388 patent. ¶83 col. 7:31-33
applying an adhesive to a top side of the set of lash fusions; Defendant's product allegedly does not meet the limitations of the patent, according to the prior ITC proceeding. ¶83 col. 7:40-42
affixing the set of lash extensions only to the underside of the natural upper eyelash of the subject... The complaint alleges that Defendant's continued association of the '388 Patent with its products is deceptive, given the prior unappealed finding of non-practice. ¶¶83, 128 col. 7:45-48
  • Identified Points of Contention:
    • Legal Question: A primary issue will be the legal effect of the prior ITC finding. The court will need to assess whether that determination of non-practice is sufficient to support a claim that Defendant's subsequent marking was done "for the purpose of deceiving the public" as required by 35 U.S.C. § 292.
    • Technical Question: While the complaint relies on the ITC's conclusion, the underlying technical question is whether Defendant's products, when used as directed, actually perform the steps of the method claimed in the '388 Patent, particularly the limitation of "affixing... only to the underside of the natural upper eyelash."

V. Key Claim Terms for Construction

  • The Term: "base ... wherein the plurality of clusters are attached to the base by at least an application of heat" ('260 Patent, Claim 1)

    • Context and Importance: The definition of this term is critical to the allegation that the '260 Patent was anticipated. The complaint's theory rests on the PUIE prior art product having a "heat fused" base that meets this limitation. Practitioners may focus on whether "attached to the base by... heat" requires the base itself to be formed by heat, or merely that clusters are attached to a pre-existing base using heat.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claim language "attached to the base by at least an application of heat" could be read to cover any process where heat is used to join the clusters to the base structure, regardless of how the base itself is formed.
      • Evidence for a Narrower Interpretation: The specification of the related '388 Patent describes a "hot melt method" where artificial hairs "begin to fuse to one another at that end" to form clusters, which are then fused together to form a lash fusion. ('388 Patent, col. 4:18-22, col. 7:3-6). This could support an interpretation that the "base" is the heat-fused portion of the artificial hairs themselves, not a separate structure to which they are attached.

  • The Term: "affixing the set of lash extensions only to the underside of the natural upper eyelash" ('388 Patent, Claim 1)

    • Context and Importance: This term is central to the allegation of false marking for the '388 method patent. The prior ITC finding of non-practice likely hinged on whether Defendant's products could be affixed only to the lashes without also contacting the user's skin or waterline.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The term could be interpreted to mean the primary or intended point of attachment is the underside of the lashes, allowing for incidental contact elsewhere.
      • Evidence for a Narrower Interpretation: The word "only" is a strong limiter. A defendant in an infringement case would likely argue this requires exclusive contact with the underside of the lashes, and any application that also results in adhesion to the skin of the waterline (tightline) would fall outside the claim scope. The patent itself distinguishes between the "upper tightline" and the "upper lash line." ('388 Patent, Fig. 1; col. 2:56-58).

VI. Allegations of Intent to Deceive

  • False Marking: The complaint alleges that Defendant's false marking was done with an intent to deceive the public. It supports this by pointing to the unappealed ITC determination that the "Gossamer" products do not practice the '388 Patent. (Compl. ¶¶ 83-84, 128). The complaint alleges that despite this ruling, Defendant continues to list the '388 Patent on its "Intellectual Property" webpage and associate it with at least 29 products, including via a "Patented Technology" logo. (Compl. ¶¶ 129-131).
  • False Advertising: The complaint alleges Defendant's claims of inventorship are knowingly false. It claims the inventor of the '260 Patent purchased and used the allegedly anticipating PUIE product to make her "first embodiments of the claimed invention," thereby establishing knowledge of the prior art. (Compl. ¶¶ 46-47, 55). Further, it alleges Defendant was put on notice of numerous prior art patents and publications during the ITC litigation but continued to claim it invented "DIY lash extensions." (Compl. ¶¶ 41-42).

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

  • A core issue will be one of anticipation and knowledge: Can the plaintiff prove that the "PUIE" product, allegedly purchased by the inventor, contains every element of the '260 Patent's claims, and that Defendant's continued claims of inventorship in light of this alleged knowledge constitute false advertising?
  • A key evidentiary question will be one of deceptive intent: In the context of the false marking claim, will the prior, unappealed ITC finding of non-practice be sufficient to establish that Defendant's continued association of the '388 Patent with its products was for the "purpose of deceiving the public" under 35 U.S.C. § 292?
  • A central theme of the case will be the line between permissible marketing and statutory falsity: The court will be asked to determine whether Defendant's branding and aggressive intellectual property assertions cross from "puffery" into legally actionable false advertising and false patent marking that has caused tangible competitive harm.