DCT

1:23-cv-23631

Foreo Inc v. T Schedule A

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
    • Plaintiff: Foreo Inc. (Nevada)
    • Defendant: The Individuals, Corporations, Limited Liability Companies, Partnerships, and Unincorporated Associations Identified on Schedule A (allegedly foreign)
    • Plaintiff’s Counsel: Boies Schiller Flexner LLP
  • Case Identification: 1:23-cv-23631, S.D. Fla., 09/21/2023
  • Venue Allegations: Plaintiff alleges venue is proper because Defendants have committed acts of patent infringement in the Southern District of Florida, conduct substantial business in the district, and have offered to sell and ship infringing products into the district.
  • Core Dispute: Plaintiff alleges that numerous e-commerce store operators are making, using, selling, and importing skincare devices that infringe a portfolio of Plaintiff's utility and design patents.
  • Technical Context: The technology relates to handheld electronic personal care devices, primarily facial cleansing brushes that use an oscillating motor to deliver vibrations through a textured silicone surface.
  • Key Procedural History: The complaint does not reference prior litigation, licensing history, or post-grant patent office proceedings. The filing appears to be the initial action in an anti-counterfeiting enforcement campaign targeting numerous online sellers simultaneously.

Case Timeline

Date Event
2013-01-07 Earliest Priority Date for ’065, ’788, ’073 Patents
2013-06-13 Earliest Priority Date for ’455, ’961, ’481 Design Patents
2013-12-20 Priority Date for ’956 Patent
2014-11-04 ’961 Design Patent Issued
2015-07-14 ’481 Design Patent Issued
2016-11-22 ’952 Design Patent Issued
2016-11-29 ’064 Design Patent Issued
2016-12-27 ’772 Design Patent Issued
2017-01-17 ’438 Design Patent Issued
2017-02-28 ’956 Patent Issued
2017-10-10 ’711 Design Patent Issued
2018-02-13 ’065 Patent Issued
2019-07-16 ’788 Patent Issued
2020-04-21 ’104 Design Patent Issued
2020-04-28 ’810 Design Patent Issued
2023-04-25 ’073 Patent Issued
2023-09-21 Complaint Filed

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

U.S. Patent No. 9,889,065 - “SKIN CLEANSER”

(Issued: February 13, 2018)

The Invention Explained

  • Problem Addressed: The patent's background section notes that manual skin cleaning can be ineffective at removing contaminants like grease and oils, and that other cleaning devices can cause "abrasions or other harsh impacts on the skin" (’065 Patent, col. 1:24-33).
  • The Patented Solution: The invention is a handheld skin cleanser with a soft, elastic exterior, such as silicone, featuring textured surfaces with rounded "touch-points" (’065 Patent, col. 1:36-41). An internal oscillating motor generates pulsations that are transmitted through these touch-points to the user's skin, creating a "tapping motion" intended to cleanse the skin and loosen contaminants more effectively and gently than traditional scrubbing (’065 Patent, col. 1:48-62; Fig. 1).
  • Technical Importance: The use of hygienic, non-absorbent silicone and vibrational "tapping" rather than rotational scrubbing represented an alternative approach to powered facial cleansing, aiming to provide a deep clean without the harshness of nylon bristles (’065 Patent, col. 2:35-41, col. 2:55-59).

Key Claims at a Glance

  • The complaint does not identify specific asserted claims. Independent claim 1 is representative of the technology.
  • Independent Claim 1:
    • A skin cleanser body with a substantially flat base configured to stand unaided.
    • A silicone exterior covering the body.
    • The exterior has a first side with first and second textured areas, each with a set of touch-points, where the second set's touch-points have a smaller diameter than the first set's.
    • The exterior has a second side with a third textured area comprising a third set of touch-points.
    • A first oscillating motor to produce pulsations.
    • At least one control to operate the motor.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 10,349,788 - “SKIN CLEANSER”

(Issued: July 16, 2019)

The Invention Explained

  • Problem Addressed: As with the related ’065 Patent, the background identifies the inadequacy of manual cleaning and the potential for harshness with other cleansing devices (’788 Patent, col. 1:24-33).
  • The Patented Solution: The patent describes a handheld device that uses an oscillating motor to deliver pulsations through textured surfaces on a silicone body (’788 Patent, col. 1:34-44). The solution focuses on providing different textures, such as "thinner touch-points for gentle cleansing" and "thicker touch-points" for more targeted cleansing of oilier areas, to address different skin needs with a single device (’788 Patent, col. 4:12-25).
  • Technical Importance: This patent further develops the concept of using varied silicone textures on a single vibrating device to offer customized cleansing for different areas of the face or different skin types.

Key Claims at a Glance

  • The complaint does not identify specific asserted claims. Independent claims 1 and 8 are representative.
  • Independent Claim 1:
    • A skin cleanser body with a substantially flat base and a specific cross-sectional shape (longer than it is wide).
    • A silicone exterior with a first side having a first textured surface area (with a first set of touch-points) and a second side with a second textured surface area (with a second set of touch-points).
    • A first oscillating motor and at least one control.
  • Independent Claim 8:
    • A skin cleanser body with a substantially flat base and a specific cross-sectional shape.
    • A silicone exterior with a first side having a first textured surface area (with a first set of touch-points) and a second side that is also integrally formed with the silicone exterior.
    • A first oscillating motor and at least one control.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 11,633,073 - “SKIN CLEANSER”

(Issued: April 25, 2023)

  • Technology Synopsis: This patent, part of the same family as the ’065 and ’788 patents, also claims a handheld skin cleanser. It describes a device with a body, a front, a back, and an oscillating motor, where a silicone exterior covers the body and has a textured surface with touch-points for cleansing the skin.
  • Asserted Claims: The complaint does not specify which claims are asserted (Compl. ¶54).
  • Accused Features: The complaint broadly alleges that the "Infringing Products" utilize the technology claimed in the Utility Patents (Compl. ¶54; Prayer for Relief ¶a(i)).

U.S. Patent No. 9,578,956 - “TOOTHBRUSH WITH BIOFILM-REMOVING TOUCH POINTS”

(Issued: February 28, 2017)

  • Technology Synopsis: This patent describes a toothbrush, not a skin cleanser. The invention is a toothbrush device with a head, neck, and handle, where the head comprises bristle "touch-points" made of a polymer material like silicone, designed for biofilm removal from teeth.
  • Asserted Claims: The complaint does not specify which claims are asserted (Compl. ¶54).
  • Accused Features: The complaint accuses "skincare devices" of infringing the "Utility Patents," a group which includes this toothbrush patent (Compl. ¶¶1, 17, 54).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are identified generally as "Infringing Products" sold by the Defendants through various "Defendant Internet Stores" on platforms such as Amazon, DHGate, eBay, Walmart, and Wish (Compl. ¶¶3, 4).

Functionality and Market Context

  • The complaint characterizes the accused products as "inferior imitations" of Plaintiff's genuine "FOREO Products" (Compl. ¶4). While not detailing their specific operation, the complaint provides photographs of exemplary accused products (Compl. p. 13). These photographs depict handheld devices with a colored body, a textured cleansing surface composed of numerous small protrusions consistent with silicone, and user controls.
  • The complaint alleges Defendants market these products in a way that is designed to appear as if they are Plaintiff's genuine products, thereby trading on Plaintiff's reputation and goodwill (Compl. ¶¶1, 4, 29). The image in the complaint shows two accused products, one blue and one pink, which are visually similar to the patented designs. (Compl. p. 13).

IV. Analysis of Infringement Allegations

Utility Patent Infringement Allegations

The complaint does not provide sufficient detail for a claim chart analysis. It alleges that "Defendants are manufacturing, distributing, offering for sale, selling, and/or importing into the United States, products which infringe directly or indirectly on at least one or more of the Utility Patents both literally and under the doctrine of equivalents" (Compl. ¶54). The complaint does not map any specific features of the accused products to any specific claim elements of the asserted utility patents.

Design Patent Infringement Allegations

The infringement theory for the design patents is based on visual similarity. The complaint provides a side-by-side comparison of figures from Plaintiff's design patents with images of the accused products (Compl. ¶60, p. 13). This visual evidence shows accused products with an overall shape, textured brush head, and control interface that Plaintiff alleges constitutes a "colorable imitation" of the designs claimed in the Design Patents (Compl. p. 13; Prayer for Relief ¶a(ii)).

Identified Points of Contention

  • Evidentiary Questions (Utility Patents): A central question will be what evidence Plaintiff can develop to show that the accused "Infringing Products" practice each element of any asserted utility patent claim. The complaint's current lack of detail suggests this will be a focus of discovery.
  • Scope Questions (Utility Patents): The inclusion of the ’956 Patent, which is directed to a toothbrush, raises the question of whether its claims can be construed to read on the accused skincare devices.
  • Visual Comparison (Design Patents): The core of the design patent dispute will be the application of the "ordinary observer" test. The question for the court will be 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.

V. Key Claim Terms for Construction

The complaint does not identify any claim terms for construction. However, based on the patent claims, certain terms may become central to the dispute.

  • The Term: "touch-points" (e.g., ’065 Patent, Claim 1)

  • Context and Importance: This term defines the structures that contact the skin. Its construction will be critical to determining the scope of the claims, as it defines the nature of the cleansing surface. Practitioners may focus on this term because its definition could distinguish the patented invention from prior art brushes with simple bristles or nubs.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The term itself is not highly technical, which may support giving it a plain and ordinary meaning of any point intended for touching.
    • Evidence for a Narrower Interpretation: The specification repeatedly refers to "rounded touch-points" and provides specific dimensions, such as diameters between 0.5 mm and 2.5 mm (’065 Patent, col. 1:39-41, col. 4:35-39). The specification also distinguishes between "thinner touch-points" and "thicker touch-points" for different functions, suggesting the term carries specific structural significance beyond a mere protrusion (’065 Patent, col. 4:12-25).

  • The Term: "a substantially flat base configured to stand unaided" (e.g., ’065 Patent, Claim 1)

  • Context and Importance: This structural limitation appears in multiple independent claims and defines the form and stability of the device's body. Its construction is important for defining the overall product shape required by the claims.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: This language could be interpreted functionally to cover any base design that provides stability, even if not perfectly flat.
    • Evidence for a Narrower Interpretation: The patent figures consistently depict a distinctly flat bottom surface (e.g., ’065 Patent, Fig. 8, item 330). An argument could be made that this consistent depiction limits the claim to bodies with a geometrically flat base, excluding those with, for example, a convex but stable base.

VI. Other Allegations

Indirect Infringement

The complaint makes a conclusory allegation of indirect infringement (Compl. ¶54). It does not, however, plead specific facts to support the knowledge and intent elements required for claims of induced or contributory infringement.

Willful Infringement

The complaint alleges that Defendants' infringement of both the utility and design patents "has been and continues to be willful" (Compl. ¶¶56, 61). No specific facts are alleged to support pre-suit knowledge of the patents, such as prior notice letters or knowledge of Plaintiff's products combined with a deliberate decision to copy them.

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

This case, typical of "Schedule A" enforcement actions, presents several key questions that will likely define its course.

  • Jurisdictional and Evidentiary Linkage: A threshold issue will be procedural: can Plaintiff successfully establish personal jurisdiction over the numerous, often anonymous, foreign entities listed on Schedule A and produce evidence linking each specific defendant to the sale of an infringing product within the United States?
  • Scope and Applicability of Patents: A substantive technical question will concern the scope of the asserted patent portfolio. Specifically, it raises the question of how the claims of a toothbrush patent (the ’956 Patent) could be read to cover the accused skincare devices, an issue for which the complaint provides no explanation.
  • Design Infringement and the Ordinary Observer: The core of the case may turn on the design patent claims, where the evidence is more direct. A key question will be one of visual perception: do the accused products, as depicted in the complaint (Compl. p. 13), create a visual appearance so similar to the patented designs that they would deceive an ordinary observer?