DCT
3:20-cv-06086
Lashify Inc v. Artemis Family Beginnings Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Lashify, Inc. (Delaware)
- Defendant: Alicia Zeng and Patrick Ellsworth, d/b/a Lilac St; and Artemis Family Beginnings, Inc. (California / Delaware)
- Plaintiff’s Counsel: Fenwick & West LLP
- Case Identification: 3:20-cv-06086, N.D. Cal., 08/28/2020
- Venue Allegations: Venue is alleged to be proper as Defendants reside in the district, have a regular and established place of business, have committed infringing acts in the district, and have targeted sales to California residents through an interactive commercial website.
- Core Dispute: Plaintiff alleges that Defendants’ Lilac St. do-it-yourself eyelash extension systems infringe two patents related to the structure of artificial lash segments and their method of application to the underside of a user's natural lashes.
- Technical Context: The technology lies in the consumer beauty sector, specifically addressing do-it-yourself (DIY) artificial eyelash extension systems that aim to replicate the look of professional applications with at-home convenience.
- Key Procedural History: The complaint alleges that Plaintiff sent multiple pre-suit letters to Defendants identifying U.S. Patent No. 10,660,388 and requesting they cease infringing activities. The second patent-in-suit, U.S. Patent No. 10,721,984, is a continuation of the application that resulted in the '388 patent.
Case Timeline
| Date | Event |
|---|---|
| 2016-07-28 | Earliest Priority Date for '388 and '984 Patents |
| 2019-09-01 | Alleged timeframe for Defendants' product testing begins ("fall of 2019") |
| 2020-05-08 | First alleged cease and desist letter sent by Lashify to Lilac |
| 2020-05-26 | U.S. Patent No. 10,660,388 ('388 Patent) Issued |
| 2020-06-01 | Second alleged cease and desist letter sent by Lashify to Lilac |
| 2020-06-04 | Third alleged cease and desist letter sent by Lashify to Lilac |
| 2020-07-28 | U.S. Patent No. 10,721,984 ('984 Patent) Issued |
| 2020-08-28 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,660,388 - "Artificial Lash Extensions"
- Patent Identification: U.S. Patent No. 10,660,388, "Artificial Lash Extensions," issued May 26, 2020.
- The Invention Explained:
- Problem Addressed: The patent's background describes conventional eyelash extensions as time-consuming and expensive, as they must be applied one-by-one by a professional. It characterizes other at-home options like strip lashes as uncomfortable, unnatural-looking, and difficult to apply evenly ('388 Patent, col. 1:23-48).
- The Patented Solution: The invention discloses a method for applying pre-fabricated sets of eyelash extensions. The system uses "lash fusions," which are bundles of multiple "clusters" of artificial hairs that are themselves heat-fused together at the base. A set of these fusions, arranged to match the eye's curvature, can then be grasped with an applicator and affixed in a single motion to the underside of a user's natural lashes, near the eyelid's tightline ('388 Patent, Abstract; col. 2:3-12; Fig. 9).
- Technical Importance: This method seeks to provide a DIY system that achieves the seamless look of professional extensions by applying them under the natural lash line, while retaining the speed and ease of use of at-home products ('388 Patent, col. 6:21-36).
- Key Claims at a Glance:
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶41).
- Claim 1 is a method claim with the following essential steps:
- Obtaining a set of lash extensions comprised of multiple clusters of artificial eyelashes, where each cluster is "heat fused at its root" and the clusters are "further heat fused adjacent to each other to form the base."
- Grasping the set of lash fusions with an applicator.
- Applying an adhesive to a "top side" of the lash fusions.
- Arranging the extensions proximate to the "underside of a natural upper eyelash."
- Affixing the extensions "only to the underside of the natural upper eyelash" so that the top side of the extension adheres to the underside of the natural lash.
U.S. Patent No. 10,721,984 - "Artificial Lash Extensions"
- Patent Identification: U.S. Patent No. 10,721,984, "Artificial Lash Extensions," issued July 28, 2020.
- The Invention Explained:
- Problem Addressed: The patent identifies the same problems as its parent '388 patent: the high cost and time of professional lash extensions and the shortcomings of conventional at-home solutions ('984 Patent, col. 1:25-49).
- The Patented Solution: Rather than a method, the '984 patent claims the physical lash extension product. The invention is a lash extension constructed from at least two distinct clusters of artificial hairs. Each cluster is formed by a "heat fused connection." These separate clusters are then joined together into a "common base," creating a multi-cluster segment ready for application ('984 Patent, Abstract; col. 2:1-2).
- Technical Importance: The invention provides a pre-fabricated, multi-cluster lash component that is structurally designed for use in a DIY under-lash application system, differing from single clusters or traditional strip lashes ('984 Patent, col. 4:10-18).
- Key Claims at a Glance:
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶52).
- Claim 1 is a product claim for a lash extension comprising:
- A "first cluster" of artificial hairs formed by a "first heat fused connection."
- A "second cluster" of artificial hairs formed by a "second heat fused connection."
- A "common base" that includes the bases of the first and second clusters, from which the clusters extend while being "spaced apart from each other."
- The entire assembly forms a lash extension "configured to be attached to a user."
III. The Accused Instrumentality
Product Identification
- Product Identification: Defendants' "Accused Products" include the "Lilac Starter Kit," which contains "Lilac Lashes," a "Lilac Applicator," and "Lilac Bond" (Compl. ¶17, ¶29).
Functionality and Market Context
- Functionality and Market Context: The Lilac St. system is a DIY eyelash extension kit alleged to be a "nearly exact" copy of Plaintiff's system (Compl. ¶28). The complaint alleges the kit provides users with clusters of lash fibers, an adhesive, and an applicator tool for self-application (Compl. ¶29). A key allegation is that the system is marketed and intended for application to the underside of the user's natural lashes (Compl. ¶34). For example, the complaint provides a photograph from Lilac's website showing its lashes applied to the underside of a model's natural lashes (Compl. ¶34, p. 11). The complaint further alleges that Defendants' website previously advertised that its lashes were "bonded with innovative heat-fuse technology," a statement that was later removed (Compl. ¶35). The complaint shows a side-by-side visual comparison of the parties' respective starter kits, which appear to contain functionally similar components (Compl. ¶29, p. 8).
IV. Analysis of Infringement Allegations
'388 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| obtaining a set of clusters of artificial eyelashes... wherein each cluster... is heat fused at its root, wherein the set of clusters is further heat fused adjacent to each other to form the base | The "Lilac Lashes" are provided as sets of lash clusters. The complaint alleges Lilac's website previously described its lashes as being "bonded with innovative heat-fuse technology." | ¶35, ¶42 | col. 7:32-44 |
| grasping the set of lash fusions via an applicator | The Lilac Starter Kit includes a "Lilac Applicator" tool for handling the lash segments. The complaint includes a visual comparison of the applicators. | ¶29, p. 9 | col. 8:30-34 |
| applying an adhesive to a top side of the set of lash fusions | The Lilac Starter Kit includes a "Lilac Bond" adhesive intended for application. | ¶29, ¶42 | col. 8:35-51 |
| arranging the set of lash extensions... proximate to... an underside of a natural upper eyelash... [and] affixing the set of lash extensions only to the underside | Lilac's marketing materials, including website photographs, allegedly instruct and encourage users to apply the lashes to the underside of their natural lashes. | ¶34, ¶43 | col. 8:44-51 |
'984 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a plurality of first artificial hairs, each... having a first heat fused connection... to form a first cluster of artificial hairs | The Lilac Lashes are comprised of clusters of fibers. The complaint cites Lilac's prior website statement about using "innovative heat-fuse technology" as evidence of this structure. | ¶30, ¶35, ¶53 | col. 7:20-31 |
| a plurality of second artificial hairs... having a second heat fused connection... to form a second cluster | As above, applied to an adjacent cluster within the same lash segment. | ¶30, ¶35, ¶53 | col. 7:20-31 |
| the first base and the second base are included in a common base from which the... clusters... extend | The accused Lilac Lashes are constructed as segments of multiple clusters. The alleged "heat-fuse technology" is the basis for the formation of a common base. A visual in the complaint shows the segmented nature of the lashes. | ¶35, ¶53, p. 9 | col. 7:45-59 |
- Identified Points of Contention:
- Technical Questions: A primary factual dispute will likely concern the actual construction of the Lilac Lashes. What evidence, beyond the now-removed website language, demonstrates that the lashes are "heat fused" as claimed in both patents? The complaint alleges Lilac removed this description and claimed it was a mistake (Compl. ¶35), setting up a direct conflict over the product's technical attributes.
- Scope Questions: For the '388 patent's method claim, a key question is whether Lilac's marketing materials and instructions cause users to perform the step of "affixing the set of lash extensions only to the underside." The complaint points to marketing photos as inducement (Compl. ¶34), while also quoting a letter from Lilac's counsel stating that users can apply the lashes to either the upper or lower side of their natural lashes (Compl. ¶33). This raises a dispute over both direct and indirect infringement.
V. Key Claim Terms for Construction
The Term: "heat fused"
Context and Importance: This term appears in the asserted independent claims of both patents and is central to the infringement allegations. Practitioners may focus on this term because its definition will determine whether the accused products, which Defendants now allegedly claim are not heat fused (Compl. ¶35), meet the core technical limitation of the patents. The dispute hinges on whether Lilac's products are made using a process that falls within the scope of this term.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the process using general terms like a "hot melt method" and a "heat seal process" ('388 Patent, col. 7:32-37). It also notes that materials like PBT could be heated to a range of temperatures (e.g., 55-110° C) to cause the fibers to fuse ('388 Patent, col. 7:36-39). This could support an interpretation that covers any process using heat to melt and join fibers.
- Evidence for a Narrower Interpretation: The specification also discusses, as a potential alternative, connecting hairs using "an adhesive... rather than being fused together via a hot melt process" ('388 Patent, col. 4:45-48). A party could argue this language draws a distinction, suggesting "heat fused" requires direct thermal bonding of the lash material itself, as opposed to a process where an adhesive is merely cured with heat.
The Term: "only to the underside of the natural upper eyelash"
Context and Importance: This limitation in claim 1 of the '388 patent defines the precise, and allegedly novel, location of application. Its construction is critical because Defendants have allegedly argued that their product is not exclusively for under-lash use (Compl. ¶33). The infringement analysis for the method claim depends on whether the accused method meets this locational requirement.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification consistently describes the invention's purpose as applying lashes "underneath an individual's natural lashes" ('388 Patent, col. 1:65) and "directly to the underside of the individual's natural lashes rather than to the eyelid" ('388 Patent, col. 6:39-41). This consistent focus could support a reading where "only" serves to distinguish from traditional top-lash or eyelid application.
- Evidence for a Narrower Interpretation: The term "only" is restrictive. A party could argue that if the application process results in any adhesive touching the eyelid skin or wrapping around to the side or top of a natural lash, the method is not performed "only" on the underside. It could also be argued that if alternative, non-infringing application methods are possible and not discouraged, the accused product's intended use is not for application "only" to the underside.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is based on allegations that Lilac's website, marketing materials, and instructions actively encourage customers to apply the lashes to the underside of their natural lashes, thereby performing the patented method (Compl. ¶43). The complaint offers a marketing image from Lilac's website as evidence of this encouragement (Compl. ¶34). Contributory infringement is based on the allegation that the accused products are especially adapted for this infringing use and have no substantial non-infringing use (Compl. ¶43-44).
- Willful Infringement: The complaint alleges willful infringement based on pre-suit knowledge. It states that Lashify sent multiple letters to Lilac putting it on notice of the '388 patent and its infringement prior to filing the lawsuit (Compl. ¶31, ¶40, ¶44). The allegations of intentional copying of Lashify's system and subsequent "deceptive conduct" to "cover up its infringing activities" are also offered to support willfulness (Compl. ¶27, ¶32, ¶35).
VII. Analyst’s Conclusion: Key Questions for the Case
A central issue will be one of evidentiary proof: are the accused Lilac Lashes manufactured using a "heat fused" process as claimed in the patents? The resolution may depend on the weight the court gives to Lilac's now-removed website statements, which are alleged to be an admission, versus what a technical analysis of the physical products reveals.
The case will also present a key question of induced infringement: do Lilac's marketing and instructions, taken as a whole, demonstrate an affirmative intent to encourage users to perform the claimed method of affixing lashes "only to the underside," particularly in light of Defendants' alleged denial that this is the sole intended method?
Finally, the dispute may turn on claim construction: what is the precise technical scope of the term "heat fused"? Does it broadly cover any bonding process involving heat, or is it narrowly limited to the direct melting of fibers without a separate adhesive, a distinction the patent's own language may support?