DCT
4:18-cv-06595
Kaneka Corp v. Uno Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Kaneka Corporation (Japan)
- Defendant: UNO & Company, LTD. (Korea)
- Plaintiff’s Counsel: Procopio, Cory, Hargreaves & Savitch LLP
- Case Identification: 3:18-cv-06595, N.D. Cal., 10/29/2018
- Venue Allegations: Plaintiff alleges venue is proper because Defendant is subject to personal jurisdiction in the district. It further notes that Defendant previously consented to jurisdiction by filing its own declaratory judgment action in the district concerning the same patent and by seeking to transfer a prior related action into the district.
- Core Dispute: Plaintiff alleges that Defendant’s artificial hair fibers infringe a patent related to flame-retardant polyester fiber compositions, continuing a pattern of infringement previously adjudicated in a prior lawsuit.
- Technical Context: The technology concerns the chemical composition of synthetic fibers for artificial hair, specifically polyester-based fibers formulated to be flame-retardant while maintaining human hair-like aesthetic and styling characteristics.
- Key Procedural History: The complaint is premised on a prior lawsuit ("Earlier Action") where a jury found that Defendant infringed the same patent-in-suit and that the patent was not invalid. That case resulted in a damages award and a permanent injunction against Defendant, which was affirmed by the U.S. Court of Appeals for the Federal Circuit. This new complaint alleges infringement for a period after the one covered by the judgment in the Earlier Action.
Case Timeline
| Date | Event |
|---|---|
| 2003-07-25 | '429 Patent Priority Date |
| 2010-07-20 | '429 Patent Issue Date |
| 2010-07-20 | "Earlier Action" Filed by Kaneka against Uno (N.D. Tex.) |
| 2010-11-05 | Uno Files Declaratory Judgment Action against Kaneka (N.D. Cal.) |
| 2013-06-28 | Jury Finds Infringement of '429 Patent by Uno in "Earlier Action" |
| 2013-11-05 | Final Judgment Entered in "Earlier Action" |
| 2015-03-18 | Permanent Injunction Entered Against Uno in "Earlier Action" |
| 2016-04-07 | Federal Circuit Affirms Judgment and Injunction |
| 2018-10-29 | Current Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,759,429 - "FLAME-RETARDANT POLYESTER FIBERS FOR ARTIFICIAL HAIR"
The Invention Explained
- Problem Addressed: The patent describes a need for artificial hair fibers that are both flame-retardant and possess desirable characteristics like heat resistance, strength, and good feel, similar to human hair (’429 Patent, col. 1:54-60). Prior attempts to make polyester fibers flame-retardant often resulted in drawbacks, such as poor mechanical properties, difficulty in manufacturing, or the tendency for fibers to melt and drip when exposed to flame (’429 Patent, col. 2:16-28).
- The Patented Solution: The invention claims to solve this problem by creating a specific fiber composition. This composition is a mixture of a base polyester (e.g., polyethylene terephthalate) with a specific type and amount of a brominated epoxy flame retardant (’429 Patent, Abstract). By combining these specific components in the claimed ratios, the resulting fiber is alleged to achieve high flame resistance while maintaining the necessary physical properties for use as high-quality artificial hair (’429 Patent, col. 2:43-48).
- Technical Importance: This approach sought to provide the market with a synthetic hair fiber that could be safely styled with heat tools without the fire risk associated with traditional polyester fibers, addressing a key need in the artificial hair industry (Compl. ¶12).
Key Claims at a Glance
- The complaint asserts infringement of at least Claim 1, as construed in the prior litigation (Compl. ¶46).
- Independent Claim 1 requires:
- A flame retardant polyester artificial hair, comprising
- 100 parts by weight of (A) a polyester made of one or more of polyalkylene terephthalate or copolymer polyester, which comprises polyalkylene terephthalate as a main component, and
- 5 to 30 parts by weight of (B) a brominated epoxy flame retardant represented by a specific general formula,
- wherein a repeating unit "m" represents 30 to 150, and
- having a monofilament size of 30 to 80 dtex.
- The complaint notes infringement of "one or more claims," preserving the right to assert others (Compl. ¶18A).
III. The Accused Instrumentality
Product Identification
- The accused products are flame-retardant polyester fibers sold by Defendant under the "Natura" and "Unolon" trade names, including product lines such as Natura I, Natura II, Natura EZ, Natura XO, Unolon I, Unolon II, Unolon XO, and Unolon E (the "Accused Fibers") (Compl. ¶14).
Functionality and Market Context
- The Accused Fibers are synthetic fibers intended for use in artificial hair products, such as wigs and extensions (Compl. ¶27). The complaint alleges that Defendant developed these fibers by reverse-engineering Plaintiff's own "Futura" fiber (Compl. ¶14).
- Plaintiff alleges that a substantial portion of Defendant's worldwide sales of these fibers are ultimately imported into the United States, including sales to prominent U.S. distributors (Compl. ¶30, 41).
IV. Analysis of Infringement Allegations
The complaint's infringement theory relies heavily on the findings of the "Earlier Action," where the Accused Fibers were previously found to infringe. The core allegation is that Defendant has continued to sell the same or substantially similar infringing fibers after the judgment and injunction in that prior case (Compl. ¶26, 48). The complaint provides a chemical structure diagram of the claimed flame retardant, taken from the patent, to illustrate the specific compound at issue (Compl. ¶46, p. 8).
'429 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A flame retardant polyester artificial hair, comprising 100 parts by weight of (A) a polyester made of one or more of polyalkylene terephthalate or copolymer polyester... | The Accused Fibers are made from a polyester fiber (Compl. ¶47). | ¶47 | col. 8:20-22 |
| ...and 5 to 30 parts by weight of (B) a brominated epoxy flame retardant represented by the...general formula (1)...wherein m represents 30 to 150... | The Accused Fibers allegedly contain a tetrabrominated epoxy flame retardant within the claimed 5 to 30 parts-by-weight ratio. The complaint cites prior trial expert testimony and nuclear magnetic resonance testing as evidence (Compl. ¶47). | ¶46, ¶47 | col. 10:50-57 |
| ...and having a monofilament size of 30 to 80 dtex. | The complaint makes a blanket allegation that the Accused Fibers meet "each and every other element of claim 1" (Compl. ¶47). | ¶47 | col. 21:39-40 |
- Identified Points of Contention:
- Technical Questions: The primary factual dispute will likely concern whether the composition of the Accused Fibers sold after the prior judgment (from January 2013 forward) is materially the same as the composition of the fibers previously found to infringe (Compl. ¶49). What evidence, such as new laboratory testing, will be presented to confirm the continued presence and proportion of the claimed flame retardant in the current products?
- Legal Questions: A key legal question is the preclusive effect of the prior adjudication. To what extent will the court apply the doctrine of collateral estoppel (issue preclusion) to prevent the re-litigation of issues already decided, such as claim construction and the infringing nature of the original product formulation?
V. Key Claim Terms for Construction
The complaint states that Claim 1 was construed in the "Earlier Action," suggesting that claim construction may not be the primary area of dispute in this case (Compl. ¶46). However, the definition of the key chemical component remains central.
- The Term: "a brominated epoxy flame retardant represented by the following general formula (1)"
- Context and Importance: This term defines the specific chemical additive that is the heart of the invention. Infringement turns on whether Defendant’s fibers contain this particular class of compound. Practitioners may focus on this term because the chemical structure is the key technical limitation separating the claimed invention from the prior art and other flame retardant technologies.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discloses a family of related brominated epoxy flame retardants, including those with different terminal groups, designated as formulas (α), (β), and (γ) (’429 Patent, col. 8:65 - col. 9:4). A party could argue that "brominated epoxy flame retardant" should be understood in the context of this disclosed family.
- Evidence for a Narrower Interpretation: Claim 1 explicitly recites "general formula (1)," which corresponds to a specific structure (the terminal non-blocked version shown as formula (α)) (’429 Patent, col. 21:25-36). The abstract also features this specific structure (’429 Patent, Abstract). A party could argue the claim is strictly limited to compounds falling within that precise formula, not the broader class disclosed elsewhere.
VI. Other Allegations
- Indirect Infringement: Plaintiff alleges induced infringement, asserting that Defendant sells the Accused Fibers to third-party manufacturers with the knowledge and intent that they will be incorporated into finished hair products imported into and sold in the U.S. (Compl. ¶34, 39). The complaint alleges Defendant has knowledge of the patent and of infringement based on the "Earlier Action" (Compl. ¶35-38), and encourages infringement through its business practices, such as adjusting shipping schedules for U.S. importers (Compl. ¶43).
- Willful Infringement: The complaint alleges that Defendant’s infringement has been willful because it continued to sell the infringing fibers even after a jury verdict, a final judgment, and the entry of a permanent injunction against it in the "Earlier Action" (Compl. ¶26, 31). The basis for willfulness is post-judgment knowledge of infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
Given the extensive prior litigation, this case appears to be focused on enforcement and ongoing conduct rather than a first-time test of the patent’s validity or scope.
- A central issue will be one of product continuity: does the evidence demonstrate that the "Natura" and "Unolon" fibers sold by the Defendant since the 2013 judgment are materially identical to the fibers previously adjudicated to infringe, or has the Defendant altered the product in a way that might evade the claim?
- A key legal question will be the preclusive effect of the prior judgment: to what extent will the court's prior claim construction and the jury's infringement findings from the "Earlier Action" be binding in this case, potentially shifting the burden to the Defendant to prove its current products are different and non-infringing?
- A critical question for damages will be the consequence of post-injunction infringement: what is the proper remedy for sales that allegedly occurred in defiance of a permanent injunction, and do the facts support a finding of willful infringement that would justify enhanced damages?