DCT
2:23-cv-03796
Combe Inc v. Kos Kos USA LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Combe Incorporated (Delaware)
- Defendant: KOS KOS USA LLC d/b/a CARICARE (California)
- Plaintiff’s Counsel: Venable LLP
- Case Identification: 2:23-cv-03796, C.D. Cal., 05/17/2023
- Venue Allegations: Venue is alleged to be proper because the Defendant is a California corporation, resides in the district, and has allegedly committed infringing acts within the district through sales on its website and at brick-and-mortar storefronts.
- Core Dispute: Plaintiff alleges that Defendant’s "CariCare Naturally Darkening Shampoo" infringes a patent related to hair coloring compositions that gradually darken hair through repeated use with air oxidation.
- Technical Context: The technology concerns shampoo-based hair coloring products that offer a gradual, less noticeable change in hair color, intended to be integrated into a consumer's daily grooming routine as an alternative to traditional, multi-part hair dye kits.
- Key Procedural History: Plaintiff alleges sending two cease-and-desist letters to Defendant, on February 1, 2023, and March 3, 2023, providing Defendant with pre-suit notice of the patent-in-suit. This history forms the basis for the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2014-01-24 | U.S. Patent No. 9,474,704 Priority Date |
| 2016-10-25 | U.S. Patent No. 9,474,704 Issue Date |
| 2023-01-19 | Plaintiff purchased accused product from Defendant's website |
| 2023-02-01 | Plaintiff sent first cease-and-desist letter to Defendant |
| 2023-03-03 | Plaintiff sent second cease-and-desist letter to Defendant |
| 2023-05-17 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,474,704 - Gradual Haircolor Compositions and Methods of Using the Same, issued October 25, 2016
The Invention Explained
- Problem Addressed: The patent describes shortcomings in conventional hair coloring products, noting that permanent oxidation dyes require mixing harsh chemicals (like hydrogen peroxide) and that existing "air oxidation" dyes are typically leave-in products requiring long dwell times, making them inconvenient for daily use. A key challenge identified is the lack of a successful method for gradually coloring hair through a simple, repeatable process like shampooing. (’704 Patent, col. 1:23-36, col. 2:19-24).
- The Patented Solution: The invention is an "air oxidation haircolor composition" that can be formulated as a shampoo or conditioner. It uses atmospheric oxygen, rather than a separate chemical developer, to activate dye precursors. The composition is designed to be applied and then rinsed from the hair "directly after application," integrating the coloring process into a normal grooming routine and achieving a gradual color build-up over multiple uses. (’704 Patent, Abstract; col. 2:54-61; col. 3:60-65).
- Technical Importance: This approach seeks to combine the convenience of a daily-use shampoo with the effect of hair coloring, offering a gradual change that avoids the "undesirable effect" of visible root regrowth associated with traditional monthly colorings. (’704 Patent, col. 5:1-7).
Key Claims at a Glance
- The complaint asserts independent claim 18 and dependent claims 19-21 and 23 (Compl. ¶19).
- Independent Claim 18:
- An air oxidation haircolor shampoo composition comprising:
- an air oxidation hair dye;
- at least one cleansing surfactant; and
- optionally, at least one conditioning agent, where a conditioning agent content is about 0.5% to about 15% weight by weight,
- wherein the air oxidation haircolor shampoo composition cleanses hair, and
- wherein the air oxidation haircolor shampoo composition gradually colors hair with repeated use.
- The complaint reserves the right to assert infringement under the doctrine of equivalents (Compl. ¶34).
III. The Accused Instrumentality
Product Identification
- The accused product is the "CariCare Naturally Darkening Shampoo" (Compl. ¶2).
Functionality and Market Context
- The complaint alleges the accused product is a shampoo that functions to cleanse hair and, through repeated applications, gradually darken it (Compl. ¶¶24-25, 30). The product is sold through Defendant's website, as well as on Amazon.com, Walmart.com, and at brick-and-mortar stores (Compl. ¶¶7, 9). The complaint alleges the product's packaging and website promote its ability to achieve "amazing effects in four weeks" and show progressive darkening with repeated use, indicating its market position as a gradual hair coloring product (Compl. ¶30). An image from the accused product's packaging depicts four hair swatches showing progressive darkening from "White" to "21x" applications (Compl. p. 6).
IV. Analysis of Infringement Allegations
'704 Patent Infringement Allegations
| Claim Element (from Independent Claim 18) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an air oxidation haircolor shampoo composition comprising: an air oxidation hair dye; | The CariCare shampoo is alleged to be an air oxidation haircolor composition containing an air oxidation hair dye, identified as 1,2,4-Trihydroxybenzene. | ¶¶20-21 | col. 2:54-58 |
| at least one cleansing surfactant; | The accused product is alleged to contain cleansing surfactants, including Sodium C14-16 Olefin Sulfonate, Lauryl Glucoside, and Disodium Laureth Sulfosuccinate. | ¶22 | col. 8:9-11 |
| and optionally, at least one conditioning agent, where a conditioning agent content is about 0.5% to about 15% weight by weight, | The accused product allegedly contains the conditioning agent Polyquaternium-10, and it is alleged on information and belief to be within the claimed weight-by-weight percentage. | ¶23 | col. 9:50-62 |
| wherein the air oxidation haircolor shampoo composition cleanses hair, | The complaint alleges on information and belief that the accused shampoo cleanses hair. | ¶24 | col. 3:49-51 |
| and wherein the air oxidation haircolor shampoo composition gradually colors hair with repeated use. | The product allegedly colors hair gradually with repeated use, supported by images on its packaging showing progressive darkening over multiple uses. | ¶25, p. 6 | col. 3:51-53 |
- Identified Points of Contention:
- Scope Question: The patent specification frequently describes the "air oxidation haircolor composition" as comprising "at least one primary oxidation dye intermediate" and "at least one aromatic triol" (a coupler) (’704 Patent, col. 2:59-61). The complaint alleges the accused product contains 1,2,4-Trihydroxybenzene (Compl. ¶21), which the patent identifies as an aromatic triol/coupler, not a primary intermediate (’704 Patent, col. 7:44-46). This raises the question of whether the claim term "an air oxidation hair dye" requires the presence of a primary dye intermediate, as described in the specification, or if a composition with only a coupler can meet this limitation.
- Technical Question: What evidence demonstrates that the accused product's conditioning agent, Polyquaternium-10, is present at a concentration of "about 0.5% to about 15% weight by weight" as required by the claim? The complaint makes this allegation on "information and belief" (Compl. ¶23), suggesting that reverse engineering or discovery will be needed to substantiate this element.
V. Key Claim Terms for Construction
The Term: "an air oxidation hair dye"
- Context and Importance: The definition of this term is critical. If construed narrowly to require both a primary dye intermediate and a coupler, as consistently described in the patent's detailed description, the infringement case may be more difficult to prove, as the complaint only identifies a coupler (1,2,4-Trihydroxybenzene) in the accused product. If construed broadly to mean any substance that colors hair via air oxidation, the complaint's allegation may be stronger.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Claim 18 itself uses the general term "an air oxidation hair dye" without explicitly requiring separate intermediate and coupler components. An argument could be made that the plain language of the claim is broader than the specific examples in the specification.
- Evidence for a Narrower Interpretation: The specification repeatedly describes the invention as a combination of components. For example, a method for coloring hair requires a composition comprising "at least one primary oxidation dye intermediate; at least one aromatic triol; and water" (’704 Patent, col. 2:59-63). A defendant may argue that these descriptions define the scope of the claimed "air oxidation hair dye."
The Term: "gradually colors hair with repeated use"
- Context and Importance: This is a functional limitation central to the invention's purpose. The parties will likely dispute the standard for what constitutes "gradual" coloring. Practitioners may focus on this term because its construction will determine the type of evidence needed to prove or disprove infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The phrase itself is not explicitly defined in the claims, which could support giving it its ordinary meaning in the context of consumer hair products.
- Evidence for a Narrower Interpretation: The specification provides a specific quantitative description: "Preferably, gradually coloring hair is achieving about 30% or less, about 20% or less, about 15% or less, or 10% or less, of color development of one's natural shade with every application" (’704 Patent, col. 5:18-22). A defendant may argue this passage limits the scope of the claim term to this specific rate of color development.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement, stating that Defendant knowingly instructs customers to use the CariCare shampoo in an infringing manner. The alleged instructions include directions on the packaging to apply the shampoo, lather for about 3 minutes, and rinse, with the knowledge that gradual coloring effects will be seen over weeks of such use (Compl. ¶¶31-32).
- Willful Infringement: Willfulness is alleged based on Defendant's actual knowledge of the '704 patent since at least February 1, 2023, the date of the first of two cease-and-desist letters sent by Plaintiff. The complaint alleges that Defendant continued its infringing activities after receiving these notices (Compl. ¶33).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: does the claim term "an air oxidation hair dye", as used in Claim 18, require the presence of both a primary dye intermediate and a coupler, as consistently described in the patent's specification, or can it be read to cover a formulation containing only a coupler, as is currently alleged against the accused product?
- A key evidentiary question will be one of functional performance: can the Plaintiff provide sufficient evidence, likely through consumer studies or technical testing, to demonstrate that the accused product "gradually colors hair" in a manner that falls within the scope of that term, particularly if the court adopts the quantitative definition of "30% or less" color development per use found in the patent's specification?
- A third question will relate to the doctrine of equivalents: should direct infringement fail, can Plaintiff demonstrate that any missing claim element in the accused product is met by an equivalent structure or function, an argument it has explicitly reserved the right to make (Compl. ¶34)?