DCT
1:19-cv-01276
FS Korea Industries Inc v. Elf Cosmetics Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: F.S. Korea Industries, Inc. (Republic of South Korea)
- Defendant: e.l.f. Cosmetics, Inc. (Delaware)
- Plaintiff’s Counsel: Heyman Enerio Gattuso & Hirzel LLP; Vorys, Sater, Seymour and Pease LLP
- Case Identification: 1:19-cv-01276, D. Del., 12/03/2019
- Venue Allegations: Venue is asserted in the District of Delaware on the basis that Defendant e.l.f. Cosmetics, Inc. is a Delaware corporation.
- Core Dispute: Plaintiff alleges that two of Defendant’s cosmetic brush products infringe the ornamental designs protected by two of Plaintiff's U.S. design patents.
- Technical Context: The dispute centers on the ornamental appearance of cosmetic brushes, a product category where unique and distinctive design can be a significant market differentiator.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with pre-suit notice of infringement of one of the two patents-in-suit via a letter dated July 12, 2017.
Case Timeline
| Date | Event |
|---|---|
| 2015-01-19 | Priority Date for U.S. Design Patent No. D766,587 |
| c. 2015 | Defendant allegedly begins selling the Precision Multi Blender Massage Brush |
| 2016-01-22 | Priority Date for U.S. Design Patent No. D791,489 |
| 2016-09-20 | U.S. Design Patent No. D766,587 Issues |
| 2017-07-11 | U.S. Design Patent No. D791,489 Issues |
| 2017-07-12 | Plaintiff allegedly sends notice letter to Defendant regarding D'587 patent |
| 2019-12-03 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D766,587 - "Cosmetic Brush Head," issued Sep. 20, 2016
The Invention Explained
- Problem Addressed: Design patents protect ornamental appearance rather than solving a functional problem. The implicit goal is to create a new, original, and ornamental design for an article of manufacture that is visually distinct from prior designs (D’587 Patent, Claim).
- The Patented Solution: The patent claims the specific ornamental design for a cosmetic brush head as depicted in the patent's figures (D’587 Patent, Claim). Key features of the design include a wide, oblong brush head with a dense bristle pack. The side profile views show a distinct, undulating or wave-like contour across the top surface of the bristles (D’587 Patent, FIG. 4, FIG. 5). The broken lines in the drawings, which depict a handle, are explicitly disclaimed and do not form part of the patented design (D’587 Patent, Description).
- Technical Importance: The complaint alleges this design was used for its "Ping-Pong Brush," described as one of its "popular brush designs" (Compl. ¶9).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is: "The ornamental design for a cosmetic brush head, as shown and described." (D’587 Patent, Claim).
- The essential visual elements of this design, shown in solid lines in the patent figures, include:
- A densely-packed brush head with an elongated, rounded rectangular top profile.
- A distinctive, concave, wave-like or scalloped shape when viewed from the side.
U.S. Design Patent No. D791,489 - "Cosmetic Brush," issued July 11, 2017
The Invention Explained
- Problem Addressed: As with the D’587 Patent, the objective is the creation of a novel ornamental design for a cosmetic brush to provide a unique aesthetic appearance (D’489 Patent, Claim).
- The Patented Solution: The patent claims the ornamental design for a cosmetic brush, with key features including a circular brush head with a tiered or stepped side profile and a prominent concentric, spiraling "swirl" pattern on the top surface of the bristles (D’489 Patent, FIG. 1, FIG. 6). The design as claimed covers the brush head and the upper portion of the ferrule, while the handle shown in broken lines is disclaimed as environmental structure (D’489 Patent, Description).
- Technical Importance: The complaint identifies this design with Plaintiff's "popular" product named the "Swirl Brush" (Compl. ¶11).
Key Claims at a Glance
- The single asserted claim is: "The ornamental design for a cosmetic brush, as shown and described." (D’489 Patent, Claim).
- The essential visual elements of this design, shown in solid lines, include:
- A circular brush head.
- A tiered or stepped arrangement of bristles creating a sculpted side profile.
- A distinct spiral or swirl pattern visible on the top surface of the brush head.
III. The Accused Instrumentality
- Product Identification: The complaint accuses two e.l.f. products: the "Precision Multi Blender Massage Brush" and the "Swirl Foundation Brush" (Compl. ¶13, ¶17, ¶26).
- Functionality and Market Context: The accused products are cosmetic brushes for applying makeup (Compl. ¶13). The complaint alleges they are "copycat brushes" (Compl. ¶14). It further alleges that Defendant's sale of the Precision Multi Blender Massage Brush began in 2015 and caused a major retailer to stop purchasing Plaintiff's corresponding product, suggesting a competitive market relationship (Compl. ¶14). The complaint provides an image of the two accused brushes, identifying which brush is accused of infringing each patent. (Compl. ¶13, p. 4).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is whether an "ordinary observer," giving such attention as a purchaser usually gives, would be deceived into purchasing the accused product believing it to be the patented design (Compl. ¶19, ¶28). The complaint presents side-by-side visual comparisons to support its allegations.
D'587 Infringement Allegations
The complaint includes a visual comparison table that juxtaposes figures from the D'587 patent with photographs of the accused "Precision Multi Blender Massager Brush." (Compl. ¶18, pp. 5-6).
| Claim Element (Visual Feature from D'587 Patent) | Alleged Infringing Feature (from "Precision Multi Blender Massage Brush") | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental appearance of a wide, oblong brush head as shown in the patent figures. | The accused product embodies a wide, oblong brush head that is alleged to be the same or substantially the same as the patented design. | ¶19; p. 5 | FIG. 1 |
| The distinct undulating, wave-like contour of the top bristle surface as seen in the side elevation views. | The accused brush displays a similar undulating, wave-like side profile on its bristle surface, creating a visual impression alleged to be nearly identical. | ¶19; p. 6 | FIG. 4, FIG. 5 |
- Identified Points of Contention:
- Scope Questions: A central question will be whether the overall visual impression created by the accused brush is "substantially the same" as the patented design. The analysis will focus on the visual impact of the claimed features, particularly the specific curvature and proportions of the wave-like bristle top.
- Technical Questions: The court may need to consider what aspects of the design are ornamental versus functional. A defense could argue that any similarities are dictated by the functional need to apply cosmetics to the contours of a face, potentially limiting the scope of the design protection.
D'489 Infringement Allegations
The complaint provides a similar visual comparison for the D'489 patent, showing patent figures next to images of the accused "Swirl Foundation Brush." (Compl. ¶27, pp. 8-9).
| Claim Element (Visual Feature from D'489 Patent) | Alleged Infringing Feature (from "Swirl Foundation Brush") | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental appearance of a circular, tiered brush head as shown in perspective and side views. | The accused brush features a circular brush head with a tiered bristle structure, alleged to create a substantially similar visual appearance. | ¶28; p.8 | FIG. 1, FIG. 3 |
| The distinct concentric swirl pattern on the top surface of the brush head. | The accused brush exhibits a concentric swirl pattern on its top surface, which the complaint alleges is the same or substantially the same as the patented design's top plan view. | ¶28; p.9 | FIG. 6 |
- Identified Points of Contention:
- Scope Questions: The dispute will likely focus on the degree of similarity required in the "swirl" pattern. The question will be whether minor differences in the density, depth, or specific path of the swirl are sufficient to distinguish the accused product from the patented design in the mind of an ordinary observer.
- Technical Questions: As with the D'587 patent, a potential defense could be that the swirl and tiered structure are functional features for picking up and applying foundation, which could narrow the enforceable scope of the ornamental design.
V. Key Claim Terms for Construction
In design patent cases, the "claim" is understood through the drawings. Formal construction of text-based terms is not the primary focus. Instead, the analysis centers on the scope of the visual design as a whole.
- The "Term": The overall ornamental appearance of the "Cosmetic Brush Head" (D’587) and "Cosmetic Brush" (D’489).
- Context and Importance: The entire infringement analysis rests on comparing the overall visual appearance of the patented designs to the accused products. The scope of the design—what it covers beyond the exact lines in the drawing—is the central issue. Practitioners may focus on the impact of prior art designs, which can limit the scope of a patented design to its novel features.
- Intrinsic Evidence for Interpretation: The primary evidence is the patent drawings themselves.
- Evidence for a Broader Interpretation: A patentee would argue that protection extends to the overall visual impression and is not defeated by minor differences. The solid lines in the figures define the claimed design, and anything that is "substantially the same" infringes (D’587 Patent, FIG. 1-7; D’489 Patent, FIG. 1-7).
- Evidence for a Narrower Interpretation: An accused infringer would argue that protection is limited to the specific ornamental features shown and that any noticeable difference avoids infringement. The explicit disclaimer of the handles via broken lines demonstrates that the claims are precisely limited to the brush heads as shown (D’587 Patent, Description; D’489 Patent, Description).
VI. Other Allegations
- Indirect Infringement: The complaint does not plead separate counts for indirect infringement. The allegations are for direct infringement under 35 U.S.C. § 271(a) (Compl. ¶17, ¶26).
- Willful Infringement: The complaint alleges willful infringement of the D'587 patent (Compl. ¶24). The factual basis for this allegation is a notice letter Plaintiff's counsel allegedly sent to Defendant on July 12, 2017, putting Defendant on notice of the patent. The complaint alleges that infringement continued after this date (Compl. ¶15). No specific factual basis for pre-suit knowledge is alleged for the D’489 patent.
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this dispute will likely depend on the court's findings on the following key questions:
- Substantial Similarity: Applying the "ordinary observer" test, is the overall ornamental appearance of the accused e.l.f. brushes "substantially the same" as the designs claimed in the D'587 and D'489 patents? This will be a fact-intensive inquiry based on visual evidence.
- Scope and Prior Art: What is the proper scope of the patented designs in light of the prior art for cosmetic brushes? The extent to which the designs' features were known or common in the industry will inform how broad or narrow the patent protection is.
- Willfulness: Regarding the D'587 patent, did e.l.f.'s alleged continued sales after receiving the July 2017 notice letter constitute willful infringement, potentially exposing the company to enhanced damages?