DCT

2:19-cv-01218

PS American Intl Industries v. Stiles

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:19-cv-01218, E.D. Cal., 09/24/2019
  • Venue Allegations: Plaintiff American International Industries (AII) alleges venue is proper in the Eastern District of California because Defendant Sharidan Stiles resides in the district and has previously submitted to the court's jurisdiction by filing related patent litigation in the same district.
  • Core Dispute: Plaintiff seeks a declaratory judgment that its "Ardell Precision Shaper" personal razor does not infringe Defendant's patents for a narrow-width styling razor.
  • Technical Context: The dispute concerns the market for personal styling razors, specifically small, narrow-bladed devices designed for detailed grooming of areas like eyebrows.
  • Key Procedural History: This declaratory judgment action follows a complex litigation history. Defendant Stiles previously sued AII and retailer Walmart in the E.D. Cal. (the "Pending California Action") alleging infringement of the ’329 Patent. Subsequently, in June and July 2019, Stiles filed four new lawsuits in the E.D. Tex. (the "Texas Actions") against AII’s retail customers (Target, CVS, Walmart, HEB), alleging infringement of both the ’329 and ’689 patents. This complaint by AII seeks to bring the dispute back to the California court. The ’689 Patent is a continuation of the application that led to the ’329 Patent and is subject to a terminal disclaimer.

Case Timeline

Date Event
2000-11-29 Earliest Priority Date for ’329 and ’689 Patents
2003-01-01 Defendant allegedly disclosed invention to Walmart
2007-07-10 Filing date of application leading to ’329 Patent
2014-07-11 Defendant files "Initial California Action"
2014-09-25 Defendant files "Pending California Action" vs. AII/Walmart
2015-08-18 U.S. Patent No. 9,108,329 Issues
2017-07-18 U.S. Patent No. 9,707,689 Issues
2019-06-06 Defendant files "Texas Actions" against retailers
2019-09-24 Plaintiff files this First Amended Complaint for DJ

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

U.S. Patent No. 9,707,689 - Personal Styling Razor

Issued July 18, 2017

The Invention Explained

  • Problem Addressed: The patent addresses the need for a razor with a reduced-size head suitable for shaving areas that require fine detail, such as eyebrows, the bikini area, or for creating stylistic hair patterns on the scalp (’689 Patent, col. 1:28-37). Conventional razors are described as being too wide for such precise applications, while other small razors are designed for trimming rather than close shaving (’689 Patent, col. 1:24-28, col. 3:32-38).
  • The Patented Solution: The invention is a small, hand-held personal styling razor featuring a narrow blade and head portion, combined with an ergonomic handle. A key feature is a straight cutting edge that extends slightly beyond the rest of the razor head—specifically "about 0.02 inch"—which allows the blade to cut hair close to the skin without being obstructed by other parts of the razor, such as guards (’689 Patent, Abstract; col. 2:35-53).
  • Technical Importance: The invention provides a purpose-built, safer alternative to the practice of stylists breaking larger straight-razor blades into smaller pieces to perform detailed shaving, a practice described as dangerous (’689 Patent, col. 7:48-58).

Key Claims at a Glance

  • The complaint notes that the related Texas Actions assert infringement of independent claim 9 (Ex. D, ¶29).
  • Independent Claim 9 includes the following essential elements:
    • A personal shaving razor with a handle portion and a head portion.
    • The head portion has a razor blade with two corner portions and a straight cutting edge.
    • The straight cutting edge extends beyond all other parts of the head portion by about 0.02 inch.
    • The head portion and blade are less than or equal to 1/2 inch wide.
    • The head portion is wider than the razor blade.
  • The related Texas Actions also assert dependent claims 10-13 and 16-18 (Ex. D, ¶29).

U.S. Patent No. 9,108,329 - Personal Styling Razor

Issued August 18, 2015

The Invention Explained

  • Problem Addressed: As with its continuation patent, the ’329 Patent identifies a need for a razor capable of shaving with much finer detail than typical razors, which are generally about an inch wide (’329 Patent, col. 1:24-37).
  • The Patented Solution: The patented solution is a disposable or replaceable-head razor with a narrow blade and an ergonomic handle designed for precise control. The specification describes a specific geometry, including an angle of "about 135 degrees" between the upper and lower portions of the handle and a blade that extends "about 0.02 inch" beyond the head, allowing it to "shave unwanted hair from a body surface by cutting the hair close to the root" (’329 Patent, Abstract; col. 2:40-61). Figure 10 illustrates an embodiment with these specific geometric characteristics (’329 Patent, Fig. 10).
  • Technical Importance: The technology provides a safe and effective tool for detailed grooming and styling, such as for eyebrows, goatees, or creating hair art on the scalp, where conventional razors are unsuitable (’329 Patent, col. 1:30-34).

Key Claims at a Glance

  • The complaint notes that the related Texas Actions assert infringement of independent claim 11 (Ex. D, ¶29).
  • Independent Claim 11 includes the following essential elements:
    • A personal shaving razor with a handle portion (having upper and lower longitudinal portions) and a head portion.
    • The longitudinal axes of the handle's upper and lower portions form an angle of about 135 degrees.
    • The handle portion has a maximum width of less than or equal to about 3/8 inch.
    • The head portion is attached to the upper handle portion and includes a razor blade with a straight cutting edge.
    • The cutting edge extends beyond all other parts of the head portion by about 0.02 inch.
    • The head portion and blade are less than or equal to about 1/4 inch wide.
    • The razor has an overall length of less than or equal to about 3.5 inches.
  • The related Texas Actions also assert dependent claims 12-14 (Ex. D, ¶29).

III. The Accused Instrumentality

Product Identification

  • The "Ardell Pro Brow Precision Shaper" (also referred to as the "Ardell Precision Shaper") (Compl. ¶9; Ex. D, ¶29).

Functionality and Market Context

  • The accused product is a personal shaving razor marketed for detailed grooming, such as shaping eyebrows (Ex. D, ¶50). It consists of a handle portion and a head portion containing a narrow razor blade (Ex. D, ¶51). An image included in the Texas complaints shows the accused Ardell Pro Brow Precision Shaper, depicting its overall shape and a close-up of the razor head (Ex. D, p. 10).
  • The complaints filed in the Texas Actions allege that the product is a "lower-quality knockoff" of the patented "Stiles Razor" and that its sale by major retailers undercuts the market for Stiles's product (Ex. D, ¶¶28, 36).

IV. Analysis of Infringement Allegations

’689 Patent Infringement Allegations

Claim Element (from Independent Claim 9) Alleged Infringing Functionality Complaint Citation Patent Citation
A personal shaving razor for shaving unwanted hair from a body surface, comprising: a handle portion; and a head portion attached to said handle portion... The Ardell Pro Brow Precision Shaper is a personal shaving razor with a handle and head portion, used for shaving eyebrows. ¶76, ¶77 col. 9:15-18
...said head portion comprising a razor blade having two corner portions and a straight cutting edge portion... Breaking apart the head portion reveals a razor blade with two corner portions and a straight cutting edge. ¶79 col. 9:19-22
...extending beyond all other parts of said head portion along said straight cutting edge portion by about 0.02 inch... The straight cutting portion of the blade extends beyond all other parts of the head portion by about 0.02 inches. ¶78 col. 9:24-29
...wherein said head portion and blade are less than or equal to 1/2 inch wide... The head portion and blade of the accused product are less than or equal to about 1/2 inch wide (approximately 0.31 inch wide). ¶80 col. 10:1-3
...and wherein said head portion is wider than said razor blade. The head portion of the accused product is alleged to be wider than the razor blade. ¶81 col. 10:4-5

Note: All complaint citations in this section refer to Exhibit D of the main complaint.

’329 Patent Infringement Allegations

Claim Element (from Independent Claim 11) Alleged Infringing Functionality Complaint Citation Patent Citation
A personal shaving razor...comprising a handle portion having an upper longitudinal portion and a lower longitudinal portion... The accused product has a handle with an upper longitudinal portion and a lower longitudinal portion. ¶55 col. 10:6-9
...wherein said longitudinal axes of said upper and lower longitudinal portions form an angle that is about 135 degrees... The longitudinal axes of the two handle portions, accounting for curvature, form an obtuse angle of approximately 135 degrees. ¶55 col. 10:11-13
...a head portion...comprising a razorblade having...a straight cutting edge portion...extending beyond all other parts of said head portion...by about 0.02 inch... The head portion has a razor blade with a straight cutting portion that extends beyond other parts of the head by about 0.02 inches. ¶52 col. 10:19-27
...wherein said head portion and blade are less than or equal to about 1/4 inch wide... The head portion and blade of the accused product are alleged to be less than or equal to about 1/4 inch wide. ¶53 col. 10:28-29
...and wherein said razor has an overall length of less than or equal to about 3.5 inch. The accused product has an overall length less than or equal to about 3.5 inches. ¶54 col. 10:30-31

Note: All complaint citations in this section refer to Exhibit D of the main complaint.

Identified Points of Contention

  • Scope Questions: The primary dispute appears to center on the phrase "about 0.02 inch." The DJ complaint alleges the accused product "significantly exceeds" this limitation (Compl. ¶23), while the Texas complaints allege it meets the limitation (Ex. D, ¶52). This raises the question of how the term "about" will be construed and what the factual measurement of the accused product is.
  • Technical Questions: The claims require a specific geometry for the handle ("angle that is about 135 degrees"). Given the curved, ergonomic nature of the handle, a technical question arises as to how the "longitudinal axes" are to be determined and whether the accused product's shape satisfies this limitation, even with the acknowledgment that tangents may be used to account for curvature (Ex. D, ¶55).

V. Key Claim Terms for Construction

  • The Term: "about 0.02 inch"

  • Context and Importance: This term is central to the infringement analysis for both patents. The patentee used this specific dimension to distinguish the invention from prior art during prosecution (Compl. ¶26). The declaratory judgment complaint hinges its non-infringement argument on the assertion that the accused product "significantly exceeds" this dimension (Compl. ¶23). Practitioners may focus on this term because its construction—whether it allows for any meaningful deviation from 0.02 inches—could be dispositive of infringement.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The use of the word "about" itself suggests the patentee did not intend to be limited to the precise value of 0.02 inches. The specification does not provide an explicit definition or range for "about" (’689 Patent, col. 10:4-6).
    • Evidence for a Narrower Interpretation: The specification emphasizes the precision of the device. More importantly, the prosecution history cited in the complaint notes that the examiner distinguished prior art (DE 3136033) where the blade projected "around 1 mm," which was described as "about twice as long as the 0.02 inch claim limitation" (Compl. ¶26). A defendant may argue this creates a clear disavowal of scope for blade extensions significantly larger than 0.02 inches.

  • The Term: "a handle portion having an upper longitudinal portion and a lower longitudinal portion, wherein said lower longitudinal portion has a longitudinal axis and said upper longitudinal portion has a longitudinal axis and said longitudinal axes of said upper and lower longitudinal portions form an angle that is about 135 degrees"

  • Context and Importance: This limitation from the ’329 Patent defines the razor's ergonomic shape. Because the handle is curved, defining the "longitudinal portions" and their "axes" is not straightforward. Practitioners may focus on this term because the method of measuring this angle on the accused product will be a key technical question for infringement.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification describes the handle using general ergonomic terms like "wavy effect" and "curved portions," suggesting the exact geometry is not rigid (’329 Patent, col. 4:38-42). The use of "about 135 degrees" also provides some flexibility.
    • Evidence for a Narrower Interpretation: The patent includes a specific embodiment in Figure 10 that visually depicts the 135-degree angle between two relatively straight sections of the handle (’329 Patent, Fig. 10; col. 9:1-5). A party could argue that the claim should be construed consistently with this clear depiction, limiting how the "axes" can be drawn on a more continuously curved device.

VI. Other Allegations

  • Willful Infringement: The complaints filed in the Texas Actions, which are attached as exhibits to this DJ complaint, allege willful infringement. The allegations are based on a long history of communications between the patentee (Stiles) and the retailers, including Target, dating back to 2010. These communications allegedly included presentations and correspondence informing the retailers of the pending patent applications that matured into the patents-in-suit and asserting that the accused Ardell product infringed the patent rights (Ex. D, ¶¶30-32). The allegations assert that the retailers had pre-suit knowledge of the patents and the infringement but continued to sell the accused product (Ex. D, ¶33).

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

  • A core issue will be one of claim construction and measurement: Can the term "about 0.02 inch," which was used to distinguish prior art during prosecution, be construed to cover the blade extension of the accused product? The resolution will depend on both the legal interpretation of "about" in this context and the factual evidence regarding the product's actual dimensions.
  • A second central question will be one of geometric interpretation: How are the "longitudinal axes" of the curved handle portions to be defined and measured? The case may turn on whether the accused product's ergonomic shape can be shown to meet the "about 135 degrees" angular limitation required by the ’329 Patent.
  • A key question regarding validity, raised by the DJ plaintiff, is whether the "0.02 inch claim limitation" was placed in the public domain by the patentee's own alleged activities prior to the patent's critical date, potentially rendering the claims invalid under 35 U.S.C. § 102 (Compl. ¶¶27-28).