Twist It Up Inc v. Annie Intl Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Twist It Up, Inc. (Delaware)
  • Defendant: Annie International Inc. (Pennsylvania)
  • Plaintiff’s Counsel: RHEMA LAW GROUP, Group
• Case Identification: 8:24-cv-00736, C.D. Cal., 04/03/2024
• Venue Allegations: Venue is alleged to be proper in the Central District of California because the plaintiff's principal place of business is in the district, the defendant allegedly targeted harm and injury to the plaintiff there, and a substantial part of the relevant events occurred in the district.
• Core Dispute: Plaintiff alleges that Defendant’s hair comb product infringes patents related to a hair twisting system and method.
• Technical Context: The technology concerns handheld, non-electric devices for creating twists or coils in hair, particularly within the market for natural African-American hair styling products.
• Key Procedural History: U.S. Patent No. 10,799,006 is a continuation of the application that issued as U.S. Patent No. 10,368,623. Both patents claim priority to the same 2016 provisional application. This shared prosecution history may be relevant for claim construction and potential estoppel arguments.

Case Timeline

Date	Event
2016-11-30	Earliest Priority Date for '623 and '006 Patents
2019-08-06	U.S. Patent No. 10,368,623 Issued
2020-10-13	U.S. Patent No. 10,799,006 Issued
2024-04-03	Complaint Filed

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

U.S. Patent No. 10,368,623, “HAIR TWISTING SYSTEM” (Issued Aug. 6, 2019)

• The Invention Explained:
  • Problem Addressed: The patent’s background section identifies a need in the African-American hair care market for a "simple, durable, portable, and washable product" to create natural hair coils, noting that prior solutions like heated combs, motorized devices, or sponges suffered from issues such as complexity, cost, or being unsanitary (’623 Patent, col. 1:25-55).
  • The Patented Solution: The invention is a method of using a tool, which has a frame and interwoven "strings," to style hair. As described in the detailed description and depicted in figures, a user presses the device's string grid into their hair towards the scalp and then rotates the tool while moving it away, which twists the hair into coils (’623 Patent, col. 4:41-56; Fig. 2). The patent highlights that allowing the string intersections to be "moveable" increases the device's effectiveness (’623 Patent, col. 4:56-62).
  • Technical Importance: The patented method provides a mechanical, non-chemical, and reusable means for achieving a popular hairstyle, addressing perceived shortcomings in prior art (’623 Patent, col. 1:19-29).
• Key Claims at a Glance:
  • The complaint asserts independent method claim 1 and dependent claims 2, 6, and 10 (Compl. ¶13).
  • Independent Claim 1 requires the steps of:
    • providing a hair twisting system comprising a frame, a handle, and strings with "moveable" intersections forming a grid network;
    • placing the frame toward a user's head;
    • pressing the strings into the user's hair toward the scalp;
    • rotating the handle while the hair is held between the strings; and
    • moving the frame away from the scalp, causing the strings to disengage and leave newly formed twisted locks.

U.S. Patent No. 10,799,006, “HAIR TWISTING SYSTEM” (Issued Oct. 13, 2020)

• The Invention Explained:
  • Problem Addressed: Sharing a specification with the ’623 Patent, the ’006 Patent addresses the same need for a simple and effective tool for creating natural hair coils (’006 Patent, col. 1:26-56).
  • The Patented Solution: While the ’623 Patent claims the method of use, the ’006 Patent claims the apparatus itself. The invention is a hair twisting system comprising a frame with an "annular shape," a handle, and "strings extending linearly between opposing portions of the frame inner surface" to form a grid network (’006 Patent, Abstract; Fig. 1). The system is described as being configured to perform the hair twisting function detailed in the ’623 patent’s method claims.
  • Technical Importance: The device provides a durable, washable, and portable alternative to sponges or complex electrical styling tools (’006 Patent, col. 1:45-56).
• Key Claims at a Glance:
  • The complaint asserts independent claims 1 and 6, along with several dependent claims (Compl. ¶18).
  • Independent Claim 1 requires a system comprising:
    • a frame having an annular shape;
    • a handle with a specific structure extending from the frame;
    • strings with ends connected to opposing sides of the frame inner surface, which "extend linearly" and intersect to form a "grid network" where the "intersections are formed by the strings overlapping";
    • the system is configured for specific hair-twisting actions (e.g., to be pressed into hair, rotated, and moved away from the scalp).

III. The Accused Instrumentality

• Product Identification: The accused instrumentality is the "TWIST & PIK" hair comb product (Compl. ¶10).
• Functionality and Market Context: The complaint alleges the "TWIST & PIK" is a hair comb product sold and distributed by Defendant through its own website and other retailers (Compl. ¶¶10-11). A visual of the accused product's packaging shows a device with a circular head containing a grid-like surface and a handle shaped like a hair pick (Compl. p. 5). The complaint alleges that Defendant is a direct competitor in the beauty and hair products business (Compl. ¶10).

IV. Analysis of Infringement Allegations

The complaint alleges that Defendant’s "TWIST & PIK" product and its use infringe the asserted claims, but does not provide a claim chart or a detailed element-by-element explanation of its infringement theory (Compl. ¶¶13, 18). The infringement allegations are conclusory, stating that the accused product or process "practices each and every element" of the asserted claims.

The complaint provides an image of Plaintiff's "TWIST IT UP®" product, which embodies the patented technology with a "tennis racket" style design (Compl. p. 4; ¶33). The complaint also provides an image of the accused "TWIST & PIK" product, which features a circular head with a mesh or grid and a handle that doubles as a pick (Compl. p. 5). A comparison of the claim language to the visual evidence of the accused product raises several potential points of contention.

• Identified Points of Contention:
  • Direct Method Infringement ('623 Patent): The complaint alleges that "Defendants have practiced and continue to practice... the process" of claim 1, which includes steps like "placing the frame toward a head of a user" and "pressing the strings into hair" (Compl. ¶13). This raises an evidentiary question as to whether the corporate defendant itself performs these hair-styling method steps, for instance, in product testing or marketing demonstrations.
  • Technical Questions ('006 Patent): Claim 1 of the ’006 patent requires "strings" that "intersect to form a grid network" where the "intersections are formed by the strings overlapping." The visual of the accused product (Compl. p. 5) suggests its grid may be a single molded piece rather than a collection of individual, overlapping strings. The case may turn on whether this construction meets the claim limitation.
  • Scope Questions ('623 and '006 Patents): A central question for both patents is whether the term "strings" can be construed to read on the grid structure of the accused product. Further, claim 1 of the ’623 Patent requires "moveable intersections." The degree of flexibility, if any, at the junction points of the accused product's grid will be a key technical fact in the infringement analysis.

V. Key Claim Terms for Construction

• The Term: "strings" (asserted in independent claims of both patents)

  • Context and Importance: This term is fundamental to the claimed invention. The infringement analysis will depend heavily on whether the grid structure of the accused product, which may be a single molded component, qualifies as "strings" under the patents.
  • Intrinsic Evidence for a Broader Interpretation: The claims themselves do not specify the material or manufacturing method of the "strings," which could support an interpretation covering any filament-like or grid-forming structures that perform the claimed function.
  • Intrinsic Evidence for a Narrower Interpretation: The specification repeatedly refers to the strings as being "woven" and potentially made of "nylon" (’623 Patent, col. 4:43-46). An embodiment is described where "strings 104 can provide moveable intersections by being fully independent and not fixed to each other" (’623 Patent, col. 4:50-54). This language may support a narrower construction limited to individual, flexible filaments rather than a rigid, integrated grid.

• The Term: "moveable intersections" ('623 Patent, Claim 1)

  • Context and Importance: The patent specification explicitly identifies the discovery that "strings being allowed to move at the intersection point" increases the device's effectiveness (’623 Patent, col. 4:56-59). Practitioners may focus on this term because if the accused product’s grid intersections are fixed, infringement of the method claim may not be found.
  • Intrinsic Evidence for a Broader Interpretation: The patent does not define a specific degree of movement, which might allow the term to cover any structure whose intersections exhibit some flexibility or deformation under pressure.
  • Intrinsic Evidence for a Narrower Interpretation: The description of "woven" strings that are "fully independent and not fixed to each other at the points where the strings 104 intersect" suggests a construction requiring the strings to be able to slide relative to one another at the intersection point, a potentially higher standard than mere material flexibility (’623 Patent, col. 4:50-56).

VI. Other Allegations

• Indirect Infringement: The complaint does not contain a formal count for indirect infringement. The primary allegation against the ’623 method patent is one of direct infringement by the defendant (Compl. ¶13).
• Willful Infringement: The complaint alleges that Defendant’s infringement is "willful, wanton and deliberate, with full knowledge and awareness of Plaintiff’s patent rights" (Compl. ¶¶14, 19). The complaint does not state the basis for this alleged knowledge (e.g., a notice letter). However, it does provide a photograph of the accused product's packaging, which includes the words "PATENT PENDING," an allegation that may be used to argue Defendant was aware of the relevant patent landscape (Compl. p. 5).

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

This dispute appears to center on fundamental questions of claim scope and technical comparison. The outcome will likely be determined by the court's resolution of the following issues:

• A core issue will be one of definitional scope: Will the term "strings," as used in the patents, be construed broadly enough to cover the accused product's grid, which appears to be a single molded component, or will it be limited to the "woven," independent-filament structure described in the specification's embodiments?

• A key evidentiary question will be one of technical operation: Does the grid of the accused product have "moveable intersections" as required by the asserted method claim? The patent frames this as a key technical advantage, and the degree of movement in the accused device will be a critical factual determination.

• A significant procedural question will be one of infringement theory: Can the plaintiff provide sufficient evidence to prove its allegation that the defendant corporation directly infringed the method claims by physically performing the steps of styling hair, or will the case shift to a theory of indirect infringement?