DCT
1:22-cv-02147
Brunett & Esnard IP LLC v. Does 1 225
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Brunett & Esnard IP, LLC (North Carolina)
- Defendant: Does 1-225, As Identified in Exhibit 2 (Foreign Jurisdictions)
- Plaintiff’s Counsel: Keener & Associates, P.C.
- Case Identification: 1:22-cv-02147, N.D. Ill., 04/26/2022
- Venue Allegations: Venue is alleged to be proper in the Northern District of Illinois because the Defendants, though their identities are unknown, allegedly target and sell products to consumers in Illinois through interactive e-commerce websites.
- Core Dispute: Plaintiff alleges that numerous foreign entities, operating through online storefronts, are selling "counterfeit" facial hair shaping tools that infringe a U.S. patent covering a specific design for such a tool.
- Technical Context: The technology at issue is a physical grooming template designed to help users create symmetrical and well-defined necklines, jawlines, and beard lines.
- Key Procedural History: The complaint is filed against 225 "Doe" defendants, described as a "cabal of foreign counterfeiters" who intentionally conceal their identities. The primary procedural challenge noted is identifying these defendants, who are alleged to operate through various aliases on e-commerce platforms like Amazon, eBay, and Wish.
Case Timeline
| Date | Event |
|---|---|
| 2014-11-03 | Priority Date for U.S. Patent No. 9,661,909 |
| 2017-05-30 | U.S. Patent No. 9,661,909 Issued |
| 2022-04-26 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,661,909 - Facial Hair Shaping Tool
The Invention Explained
- Problem Addressed: The patent identifies the common difficulty men face in sculpting facial hair into "clean symmetrical shapes," which often results in an "unbalanced look" when attempting to trim beards, sideburns, or goatees symmetrically ('909 Patent, col. 1:31-41).
- The Patented Solution: The invention is a physical, generally L-shaped template designed to contour to a user's face ('909 Patent, Abstract). It provides specifically shaped edges to guide a razor or trimmer for creating a defined neckline, jawline, and beardcheek line. Key features include a tapered "pointed tip" edge for precision and embedded markers that allow a user to align the tool symmetrically on both sides of the face ('909 Patent, col. 3:42-65).
- Technical Importance: The tool aims to provide a simple, repeatable method for achieving a professionally groomed appearance without requiring the freehand skill typically needed for symmetrical facial hair styling ('909 Patent, col. 1:31-41).
Key Claims at a Glance
- The complaint asserts independent Claim 1 ('909 Patent, col. 6:4-34; Compl. ¶¶11, 15).
- The essential elements of Claim 1 include:
- A "unitary and generally L-shaped main body" with defined surfaces and sides.
- An outer edge on several sides that is "tapered to form a pointed tip along an entirety thereof."
- A "plurality of markers" embedded as indentations in the main body.
- The markers include a first and second marker arranged in a "mirror image" on the front and back surfaces.
- The tool’s various sections are "configured to conform" to a user's neckline, jawline, and beardcheek line.
- The complaint does not explicitly reserve the right to assert dependent claims but references infringement of "all claims of the Asserted Patent" (Compl. ¶45).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are "Counterfeit Products," identified as facial hair shaping tools sold by the Doe Defendants through "Infringing Webstores" on platforms such as Amazon, eBay, and Wish (Compl. ¶¶3, 19). The complaint alleges that all Defendants are selling the same infringing product sourced from a common, unknown manufacturer in China (Compl. ¶¶8, 13-14).
Functionality and Market Context
- The complaint alleges that the accused products are "similar and substandard copies" of Plaintiff's own products (Compl. ¶19). The functionality of the accused products is described by reciting, nearly verbatim, the limitations of Claim 1 of the ’909 Patent (Compl. ¶15). The complaint alleges these products are marketed to unsuspecting consumers as genuine or authorized goods, causing consumer confusion and harming Plaintiff's brand (Compl. ¶¶7, 30). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’909 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a unitary and generally L-shaped main body that includes a front surface, a back surface, a top end, an elongated straight-planar first side, an elongated bottom end, a truncated second side, and a curvilinear central section... | The accused products are alleged to "have a unitary and generally L-shaped main body" with the claimed surfaces and sides. | ¶15 | col. 2:51-54 |
| each of the elongated straight-planar first side, the elongated bottom end, and the curvilinear central section including an outer edge having a cross-sectional thickness that is tapered to form a pointed tip along an entirety thereof | The accused products are alleged to have outer edges with a "cross-sectional thickness that is tapered to form a pointed tip along an entirety thereof." | ¶15 | col. 3:42-50 |
| a plurality of markers that are disposed along at least one of the... sides... each of the plurality of markers comprising an indentation that is embedded within the main body | The accused products are alleged to have "a plurality of markers... comprising an indentation that is embedded within the main body." | ¶15 | col. 3:52-61 |
| and said plurality of markers including a first marker and a second marker that are arranged in a mirror image to each other along the front surface and the back surface of the main body | The accused products are alleged to have markers "arranged in a mirror image to each other along the front surface and the back surface of the main body." | ¶15 | col. 3:55-57 |
| wherein the curvilinear central section includes a shape and dimension that is configured to conform to a neckline of an adult user, the elongated bottom end includes a dimension that is configured to conform to a jawline of an adult user, and each of the straight-planar first side and the elongated bottom end include a shape and dimension that is configured to conform to a beardcheek line of an adult user. | The complaint alleges that the corresponding sections of the accused products include shapes and dimensions "configured to conform" to a user's neckline, jawline, and beardcheek line. | ¶15 | col. 6:26-34 |
Identified Points of Contention
- Factual Question: The central dispute appears to be factual. The complaint alleges, on "information and belief," that the accused products meet every limitation of Claim 1 (Compl. ¶15). A key question will be whether discovery can substantiate that the physical products sold by the numerous Doe Defendants actually possess all the claimed structural features, such as the specific tapered edge and the mirror-image markers.
- Scope Questions: The infringement analysis may depend on the interpretation of "configured to conform." The court will need to decide if this requires a specific geometry, such as the exemplary "curve radius of approximately 58 mm" disclosed for the neckline ('909 Patent, col. 4:15-17), or if it is a broader statement of intended use that could be met by any generally suitable curve.
V. Key Claim Terms for Construction
The Term: "unitary"
- Context and Importance: This term appears in the first limitation of Claim 1. Its construction will determine whether the tool must be manufactured as a single, indivisible piece or if it can be assembled from multiple components. Practitioners may focus on this term because if the accused products are assembled, they may not be "unitary."
- Intrinsic Evidence for Interpretation:
- Evidence for a Narrower Interpretation: The specification suggests a single-piece construction, stating the main body can be "constructed from a unitary mold of injected plastic" and that elements may be "formed together as one continuous element" ('909 Patent, Abstract; col. 5:34-37).
- Evidence for a Broader Interpretation: A party could argue "unitary" simply means the components are joined to form a single, inseparable tool in its final form, not that it must originate from a single piece of material.
The Term: "configured to conform to a [neckline/jawline/beardcheek line]"
- Context and Importance: This phrase appears in the final three limitations of Claim 1 and defines the required geometry of the tool's various edges. The outcome of the infringement analysis depends on whether this is interpreted as a structural requirement tied to specific shapes or merely a statement of intended use.
- Intrinsic Evidence for Interpretation:
- Evidence for a Narrower Interpretation: The patent provides "preferred embodiment" dimensions, such as a 95 mm height for the first side and a 58 mm curve radius for the central section, which are "advantageously designed to accommodate the shape of an average male head" ('909 Patent, col. 4:3-17). This suggests a specific structure is intended.
- Evidence for a Broader Interpretation: The claims themselves do not recite these specific dimensions, which may suggest that any shape generally suitable for the stated purpose meets the limitation.
VI. Other Allegations
Indirect Infringement
- The complaint alleges that Defendants are "personally contributing to, inducing and engaging in the sale of Counterfeit Products" (Compl. ¶4). The allegations primarily focus on the Defendants' direct acts of making, using, selling, and importing, which form the basis of the direct infringement claim (Compl. ¶45).
Willful Infringement
- The complaint alleges willful infringement, stating that the infringement is "obvious and notorious" and that Defendants have "no good faith basis" for their actions (Compl. ¶46). The basis for knowledge is pled on "information and belief," asserting that Defendants have had "full knowledge of Plaintiff's ownership of the Asserted Patent" (Compl. ¶28).
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary issue will be one of procedural execution: given that the lawsuit targets 225 anonymous "Doe" defendants alleged to be foreign operators, a significant hurdle for the Plaintiff will be successfully identifying, serving, and obtaining jurisdiction over these entities to enforce any judgment.
- A key evidentiary question will be one of factual verification: can the Plaintiff prove that the products sold by this diverse and concealed group of online sellers are, in fact, uniform and practice every limitation of Claim 1, including specific structural details like the "tapered... pointed tip" and "mirror image" markers?
- The case may also turn on a question of definitional scope: will the functional language "configured to conform" be construed to require the specific dimensions disclosed in the patent's specification, or will a more general shape suffice, potentially broadening the scope of the claim to cover a wider range of similar-looking products?