Tolife Tech Pty Ltd v. Individuals Corps Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: ToLife Technologies Pty Ltd (Australia) and Moshe Maor
  • Defendant: The Individuals, Corporations, Limited Liability Companies, Partnerships, and Unincorporated Associations Identified on Schedule A
  • Plaintiff’s Counsel: Boies Schiller Flexner LLP
• Case Identification: ToLife Technologies Pty Ltd and Moshe Maor v. The Individuals, Corporations, Limited Liability Companies, Partnerships, and Unincorporated Associations Identified on Schedule A, 25-cv-60547, S.D. Fla., 03/21/2025
• Venue Allegations: Venue is alleged to be proper based on Defendants having committed acts of infringement in the district and doing substantial business there, including offering products for sale and shipping them to Florida consumers.
• Core Dispute: Plaintiffs allege that Defendants’ online stores sell counterfeit lice combs that infringe a design patent covering the ornamental appearance of Plaintiffs' V-COMB product.
• Technical Context: The technology resides in the consumer health and personal care sector, specifically concerning devices for the chemical-free removal of head lice.
• Key Procedural History: The complaint alleges that Plaintiff ToLife has received design awards for its V-COMB products in 2015 and 2020 and has marketed the products since at least 2014. No prior litigation or post-grant proceedings involving the patent-in-suit are mentioned in the complaint.

Case Timeline

Date	Event
2014-01-01	Plaintiff began marketing V-COMB products (approximate)
2015-01-01	Plaintiff received Good Design Selection Award (approximate)
2019-04-22	D858,877 Patent Priority Date (Filing Date)
2019-09-03	D858877 Patent Issue Date
2025-03-21	Complaint Filing Date

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

U.S. Design Patent No. D858,877 - "Lice comb"

• Patent Identification: U.S. Design Patent No. D858,877, "Lice comb," issued September 3, 2019.

The Invention Explained

• Problem Addressed: Design patents do not solve a functional problem but rather protect the novel, non-obvious, and ornamental appearance of an article of manufacture. The patent protects a specific aesthetic design for a lice comb.
• The Patented Solution: The patent claims the specific ornamental design for a lice comb as depicted in its seven figures ('877 Patent, Figs. 1-7). The claimed design features a handheld device with a curved, tapering body, a transparent filter component near the head, and a specific comb head assembly ('877 Patent, Fig. 1).
• Technical Importance: The complaint asserts that the product embodying the design has received multiple design awards, including a 2015 Good Design Selection Award and a 2020 Good Design Award for Medical & Scientific Product Design, suggesting its aesthetic appearance is recognized as innovative within its field (Compl. ¶16).

Key Claims at a Glance

• Design patents contain a single claim. The asserted claim is: "The ornamental design for a lice comb, as shown." ('877 Patent, Claim).
• The scope of the claim is defined by the solid lines in the patent's drawings, which illustrate the design from multiple perspectives:
  • Front top perspective view (Fig. 1)
  • Top elevation view (Fig. 2)
  • Bottom elevation view (Fig. 3)
  • Right side elevation view (Fig. 4)
  • Left side elevation view (Fig. 5)
  • Front elevation view (Fig. 6)
  • Rear elevation view (Fig. 7)

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are "Counterfeit Products" sold by Defendants through various "Defendant Internet Stores" on marketplace platforms such as Amazon and Walmart (Compl. ¶¶3, 4a, 26). The complaint identifies these as, for example, an "Electric Vacuum Comb for Lice Removal" (Compl. p. 15).

Functionality and Market Context

The accused products are alleged to be electric vacuum combs for removing head lice and eggs from hair (Compl. p. 15). The complaint alleges these products are sold through online stores designed to appear as legitimate retailers, often using Plaintiffs' own branding and imagery to attract customers (Compl. ¶¶28-29, 32). An image from a Defendant's online store shows an "Electric Vacuum Comb for Lice Removal" featuring a handheld body and a comb head with a filter (Compl. p. 15). The complaint contends these are "inferior imitations" of Plaintiffs' genuine V-COMB products (Compl. ¶5).

IV. Analysis of Infringement Allegations

The complaint alleges that the accused "Counterfeit Products" embody the design claimed in the '877 Patent (Compl. ¶3, ¶55). The core of a design patent infringement analysis is the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design. The complaint supports its allegation with a visual comparison (Compl. ¶56). A representative listing for an accused product is provided in the complaint, which shows the product from several angles (Compl. p. 15).

• Identified Points of Contention:
  • Scope Questions: A central question will be whether the overall visual impression of the accused products is substantially the same as the claimed design in the '877 Patent. The complaint's characterization of the accused products as "counterfeit" suggests Plaintiffs will argue for a near-identical match (Compl. ¶3).
  • Technical Questions: The infringement analysis will turn on a visual comparison of the products' ornamental features. A key question for the court will be whether any differences between the accused product design and the patented design are significant enough to be noticeable to an ordinary observer, thereby avoiding a finding of infringement. The complaint presents an image of an accused product that appears to share the patented design's overall shape, transparent filter, and comb head configuration (Compl. p. 15).

V. Key Claim Terms for Construction

In a design patent case, the "claim" is the visual design itself, as depicted in the drawings. The key interpretive exercise is not construing a text-based term but determining the scope of the claimed overall visual appearance.

• The Term: "The ornamental design for a lice comb, as shown"
• Context and Importance: The entire infringement analysis depends on the scope of the visual design protected by the patent. The comparison between the "as shown" design and the appearance of the accused products will be determinative. Practitioners may focus on this as the dispositive issue, as the test is whether the designs are substantially the same in the eyes of an ordinary observer.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: Plaintiffs may argue that the "as shown" design should be viewed as a whole, focusing on the overall visual impression created by the combination of its features (the tapering body, the transparent filter, the head assembly). They may argue that minor variations in individual features do not alter the overall appearance and thus do not escape infringement. The patent's inclusion of seven distinct views could be argued to define a robust and holistic design concept ('877 Patent, Figs. 1-7).
  • Evidence for a Narrower Interpretation: Defendants could argue that the "as shown" language limits protection to the precise article depicted in the drawings. They might attempt to identify and emphasize any small differences in proportion, curvature, or surface ornamentation between their products and the patent figures to argue that an ordinary observer would not be deceived.

VI. Other Allegations

• Indirect Infringement: The complaint alleges that Defendants infringe "directly and/or indirectly" by making, using, selling, and importing the accused products (Compl. ¶55). The prayer for relief also seeks to enjoin those "aiding, abetting, contributing to, or otherwise assisting anyone in infringing" the patent (Compl. Prayer ¶2.d).
• Willful Infringement: Willfulness is alleged based on the assertion that Defendants' infringement was knowing and intentional (Compl. ¶45, ¶57). The complaint frames Defendants' actions as part of a deliberate "illegal counterfeiting operation" designed to trade on Plaintiffs' goodwill and intellectual property (Compl. ¶7, ¶25).

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

1. Visual Identity: The central issue is one of visual comparison: Is the ornamental design of the accused "Electric Vacuum Comb" substantially the same as the design claimed in the '877 Patent from the perspective of an ordinary observer? The complaint’s use of terms like "counterfeit" and "embody the design" suggests that Plaintiffs' case will rest on demonstrating a near-verbatim copy of the patented aesthetic.
2. Scope of Remedy: A key question will concern the appropriate remedy. The complaint seeks damages including Defendants' total profits from the infringing articles pursuant to 35 U.S.C. § 289 (Compl. ¶60, Prayer ¶7). Should infringement be found, the ability to trace and calculate these profits from the numerous, allegedly anonymous online sellers identified in Schedule A will present a significant evidentiary challenge.