Wahl Clipper Corp v. Conair Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Wahl Clipper Corporation (Illinois)
  • Defendant: Conair Corporation (Delaware) and Conair LLC (Delaware)
  • Plaintiff’s Counsel: Barnes & Thornburg LLP
• Case Identification: 1:23-cv-00114, D. Del., 01/30/2023
• Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware because Defendants are Delaware corporations, are present in the district, and have systematic and continuous business contacts with the state.
• Core Dispute: Plaintiff alleges that Defendant’s professional hair clippers infringe a design patent covering the clipper's ornamental appearance and a utility patent directed to an internal mechanism for damping motor vibration and noise.
• Technical Context: The technology at issue resides in the field of electric hair clippers, concerning both the external industrial design and the internal mechanical engineering for improving user experience by reducing operational noise and vibration.
• Key Procedural History: The complaint alleges that Plaintiff provided Defendant with pre-suit notice of infringement for both asserted patents. Notice for the '491 Design Patent was allegedly sent on January 13, 2022, and notice for the '276 Utility Patent was allegedly sent on March 25, 2022. These allegations form the basis for claims of willful infringement.

Case Timeline

Date	Event
2013-03-15	Priority Date for U.S. Patent No. 9,038,276
2013-03-15	Priority Date for U.S. Design Patent No. D715,491
2014-10-14	Issue Date for U.S. Design Patent No. D715,491
2015-05-26	Issue Date for U.S. Patent No. 9,038,276
2022-01-13	Plaintiff allegedly sent cease and desist letter for '491 Patent
2022-03-25	Plaintiff allegedly sent cease and desist letter for '276 Patent
2023-01-30	Complaint Filing Date

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

U.S. Design Patent No. D715,491 - "Base with Projections," issued October 14, 2014

The Invention Explained

• Problem Addressed: Design patents protect the novel, non-functional, ornamental appearance of a manufactured article rather than addressing a technical problem.
• The Patented Solution: The '491 Patent claims the specific ornamental design for a hair clipper base, or housing. The design is characterized by its overall shape, contours, and the arrangement of surface features, as depicted in the patent's figures (D'491 Patent, Figs. 1-7). Key visual elements include the profile of the main body, the shape of the transition to the blade assembly, and the asymmetrical indentations and features along its sides.
• Technical Importance: In consumer and professional goods, a distinctive industrial design can serve as a source identifier and a key differentiator in the marketplace.

Key Claims at a Glance

• Design patents have a single claim, which is for the ornamental design as shown in the drawings (D'491 Patent, CLAIM). The complaint asserts infringement of this single claim (Compl. ¶12).

U.S. Patent No. 9,038,276 - "Hair Clipper with a Rotary Motor Vibration and Noise Damper," issued May 26, 2015

The Invention Explained

• Problem Addressed: The patent identifies undesirable vibration and noise in hair clippers that use rotary motors, particularly when the motor has clearance within the housing, which can lead to resonance and amplified noise ('276 Patent, col. 1:10-24).
• The Patented Solution: The invention is a multi-part assembly designed to suppress these effects. It consists of a "flexible motor vibration damper" that fits over the motor, a "motor cover" that is secured over the damper to the main housing, and a "secondary housing cover" that encloses the entire internal assembly ('276 Patent, Abstract; col. 1:40-52). Compressing the flexible damper between the motor and the two-part cover structure is intended to absorb vibrational energy and reduce noise ('276 Patent, col. 2:60-63).
• Technical Importance: Reducing operational vibration and noise in a handheld tool can improve operator comfort, reduce fatigue, and enhance the user's perception of the product's quality and refinement ('276 Patent, col. 1:28-34).

Key Claims at a Glance

• The complaint asserts infringement of at least independent claim 1 (Compl. ¶24, 25).
• The essential elements of independent claim 1 include:
  • a base structural housing with a blade set
  • a rotary motor with a shaft and cam
  • the base housing having at least one support for the motor
  • the motor having a base side and a cover side
  • a flexible motor vibration damper formed to fit over the cover side of the motor
  • a motor cover secured to the base structural housing over the vibration damper
  • a secondary housing cover secured to the base structural housing over the motor cover
• The complaint does not explicitly reserve the right to assert dependent claims but alleges infringement of "one or more claims" (Compl. ¶24, 25).

III. The Accused Instrumentality

Product Identification

The accused product is the BaBylissPRO LO-PROFX clipper (Compl. ¶11). The complaint notes that it is accusing both an original and a "second version" of the device (Compl. ¶24, 25).

Functionality and Market Context

The accused device is a professional electric hair clipper. The complaint alleges that its external design intentionally mimics a "classic Americano shape" associated with Plaintiff's products to appeal to the same customer base (Compl. ¶19). It also alleges that the product's internal construction infringes the '276 Patent's claimed vibration damping system (Compl. ¶24). The complaint provides links to online videos where the accused device is directly compared to Plaintiff's clippers, suggesting they compete in the same market segment (Compl. ¶18, 20).

IV. Analysis of Infringement Allegations

D'491 Patent Infringement Allegations

The complaint alleges that the accused LO-PROFX clipper infringes the '491 Patent's claimed design under the "ordinary observer" test, asserting that an observer would be confused as to the source of the goods (Compl. ¶12). A central part of the infringement theory is that the accused product appropriates the patented design, and that any differences do not defeat infringement. The complaint includes a side-by-side visual comparison of the patented design and the accused product. This image from the complaint shows the patented design from Figure 7 next to a photograph of the accused clipper, with an annotation pointing out that the accused device is "Elongated slightly to achieve symmetry" (Compl. p. 4, Exhibit E). The complaint argues that this modification, which makes the accused product symmetrical whereas the patented design is asymmetrical, is merely the addition of an element and does not create a significantly different effect on the eye of the ordinary observer (Compl. ¶14).

'276 Patent Infringement Allegations

The complaint alleges that two different versions of the LO-PROFX clipper infringe at least claim 1 of the '276 Patent (Compl. ¶24, 25). It states that claim charts demonstrating how the accused devices meet every element of claim 1 are attached as Exhibits F and G (Compl. ¶24, 25). However, as these exhibits were not provided, the complaint does not contain sufficient detail in its narrative prose to construct a claim chart or conduct a detailed element-by-element analysis of the infringement theory.

• Identified Points of Contention:
  • Scope Questions ('491 Patent): A primary issue for the design patent will be whether making the clipper's housing symmetrical creates a substantially different overall ornamental appearance from the patented asymmetrical design. The court will need to determine if an ordinary observer, giving such attention as a purchaser usually gives, would be deceived into purchasing one supposing it to be the other.
  • Technical Questions ('276 Patent): The infringement analysis for the utility patent will depend on the specific internal construction of the accused clippers. A key question will be whether the accused devices contain separate and distinct components that meet the definitions of a "flexible motor vibration damper," a "motor cover," and a "secondary housing cover," and whether these components are assembled in the manner required by the claim.

V. Key Claim Terms for Construction

'276 Patent

• The Term: "flexible motor vibration damper"

• Context and Importance: This term describes the core component of the claimed invention. The outcome of the infringement analysis may depend on whether the corresponding part in the accused device possesses the properties of being "flexible" and functioning as a "damper" in the manner disclosed in the patent.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claim language itself does not impose significant structural limitations. The specification describes the damper as "preferably made of flexible rubber or plastic material that absorbs vibration and reduces noise" ('276 Patent, col. 2:39-41), which suggests a functional definition rather than a strictly structural one.
  • Evidence for a Narrower Interpretation: The specification discloses a specific embodiment of the damper with features including a plurality of "spaced ribs," "motor face flanges," and a "raised portion" with an "oval shaped outer ring" ('276 Patent, col. 2:42-54, Figs. 6A). A defendant may argue that the claim term should be construed to require some or all of these structural characteristics present in the disclosed embodiment.

• The Term: "motor cover" and "secondary housing cover"

• Context and Importance: Claim 1 requires both a "motor cover secured to the base structural housing over the vibration damper" and a "secondary housing cover secured to the base structural housing over the motor cover." The existence of these two distinct cover elements is a requirement of the claim. Practitioners may focus on these terms because if the accused device uses a single, unitary cover instead of two separate ones, it may not literally infringe.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: A plaintiff might argue that as long as two separable pieces perform the covering functions, the claim is met, regardless of their specific names or forms.
  • Evidence for a Narrower Interpretation: The patent consistently refers to the "motor cover 60" and the "secondary housing cover 13" as distinct components ('276 Patent, col. 1:49-52). The exploded view in Figure 4 clearly depicts them as two separate parts. This provides evidence that the inventor contemplated a two-part cover structure, which could support a narrower construction requiring two physically separate components.

VI. Other Allegations

• Indirect Infringement: The complaint does not contain specific factual allegations to support a claim for indirect infringement. The prayer for relief for Count II mentions enjoining inducement of and contribution to infringement of the '276 Patent, but the body of the complaint lacks a corresponding factual basis (Compl. p. 6, ¶B; p. 9, ¶B).
• Willful Infringement: The complaint alleges willful infringement for both patents. For the '491 Patent, it cites a cease and desist letter from January 2022 and provides a quote from a Conair marketing director allegedly admitting to "going after the classic Americano shape" (Compl. ¶15, 19). For the '276 Patent, it alleges knowledge based on a cease and desist letter from March 2022 and further alleges bad faith conduct by the defendant during pre-suit communications regarding a potential redesign (Compl. ¶26, 28).

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

• A core issue will be one of ornamental similarity: does the accused clipper's symmetrical housing create an overall visual impression that is substantially the same as the patented asymmetrical design in the eye of an ordinary observer, or is the difference significant enough to avoid infringement?
• A key evidentiary question will be one of structural correspondence: does the internal assembly of the accused clipper contain distinct components that map onto each of the claimed "flexible motor vibration damper," "motor cover," and "secondary housing cover," or is its construction sufficiently different to fall outside the literal scope of the claim?
• Finally, a central question for damages will be willfulness and intent: given the allegations of pre-suit notice and copying, did the defendant act with an objectively high likelihood of infringement and a known or obvious risk, or can it demonstrate a reasonable, good-faith belief that its products did not infringe or that the patents were invalid?