Beth Bender Beauty LLC v. Does 1 174 As

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Beth Bender Beauty, LLC (California)
  • Defendant: Does 1-174, As Identified in Exhibit 2 (Foreign Jurisdictions)
  • Plaintiff’s Counsel: Keener & Associates, P.C.
• Case Identification: 1:23-cv-15123, N.D. Ill., 10/19/2023
• Venue Allegations: Venue is asserted on the basis that the unnamed defendants are subject to personal jurisdiction in the district, have targeted sales to Illinois residents through interactive websites, and a substantial part of the events giving rise to the claims occurred in the district.
• Core Dispute: Plaintiff alleges that numerous foreign entities, operating through online storefronts, are selling counterfeit eyeliner stencils that infringe the ornamental designs covered by four of Plaintiff's U.S. design patents.
• Technical Context: The dispute is in the field of cosmetic accessories, specifically peel-and-place stencils used to guide the application of eyeliner.
• Key Procedural History: The complaint is structured as an anti-counterfeiting action against a large number of unidentified "Doe" defendants, alleged to be an "interrelated group of counterfeiters." This procedural posture, common in actions against online marketplace sellers, suggests the initial phases of litigation may focus on identifying the defendants and establishing a basis for joining them in a single action. The complaint asserts the patents have never been licensed to the defendants.

Case Timeline

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

U.S. Design Patent No. D800,963 - “Set of Peel Away Eyeliner Stencils”, issued October 24, 2017

The Invention Explained

• Problem Addressed: Design patents protect ornamental appearance rather than functional solutions to technical problems. The implicit goal is to provide a tool with a specific, aesthetically distinct appearance for creating popular eyeliner styles. The complaint refers to Plaintiff’s products as "specialized peel and place eyeliner stencils" (Compl. ¶22).
• The Patented Solution: The patent claims the ornamental design for a set of two distinct eyeliner stencils presented on a backing sheet (D’963 Patent, Description; FIG. 1). The design as a whole consists of the specific curves, points, and overall shape of each of the two stencils, one resembling a classic "cat eye" form and the other a shorter, more rounded curve (D’963 Patent, FIG. 1, FIG. 7). The broken lines in the figures, representing the backing sheet, are not part of the claimed design (D’963 Patent, Description).
• Technical Importance: The value of the design lies in its unique and recognizable ornamental appearance, which Plaintiff alleges the consuming public has come to associate with its brand (Compl. ¶¶25, 28).

Key Claims at a Glance

• Design patents contain a single claim. The asserted claim is: "The ornamental design for a peel away eyeliner stencil set, as shown and described" (D’963 Patent, Claim).
• The essential visual elements of the claim are the specific shapes of the two stencils depicted in the drawings, including:
  • A first stencil with an elongated, sweeping curve terminating in a sharp point.
  • A second, shorter stencil with a more pronounced, rounded curve.
  • The spatial relationship and combined appearance of this specific pair of stencils.

U.S. Design Patent No. D809,196 - “Eyeliner Stencil”, issued January 30, 2018

The Invention Explained

• Problem Addressed: This patent protects the ornamental design of a single, standalone cosmetic stencil.
• The Patented Solution: The patent claims the ornamental design for a single eyeliner stencil (D’196 Patent, Claim). The claimed shape appears to be identical to the longer, "cat eye" style stencil from the pair claimed in the D'963 patent, featuring the same elongated curve and pointed end (D’196 Patent, FIG. 1). The design is for the stencil itself, as the broken-line outline in the drawing is for illustrative purposes only and does not form part of the claim (D’196 Patent, Description).
• Technical Importance: This patent provides design protection for one of the specific stencil shapes, independent of its inclusion in a set.

Key Claims at a Glance

• The single asserted claim is: "The ornamental design for an eyeliner stencil, as shown and described" (D’196 Patent, Claim).
• The essential visual elements of the claim are the features of the single stencil shown in the drawings, including its specific length-to-width ratio, the curvature of its primary edge, and the shape of its pointed tail.

U.S. Design Patent No. D809,197 - “Eyeliner Stencil”, issued January 30, 2018

• Technology Synopsis: This patent claims the ornamental design for a single eyeliner stencil (D’197 Patent, Claim). The claimed design appears to be the second, shorter stencil from the pair shown in the D'963 patent, characterized by its distinct, more compact and rounded shape (D’197 Patent, FIG. 1).
• Asserted Claims: The single design claim for the ornamental design as shown and described.
• Accused Features: The "Counterfeit Products" sold by Defendants are alleged to infringe the ornamental design of the ’197 Patent (Compl. ¶¶ 48-49).

U.S. Design Patent No. D811,655 - “Set of Peel Away Eyeliner Stencils”, issued February 27, 2018

• Technology Synopsis: This patent claims the ornamental design for a set of two peel-away eyeliner stencils on a backing sheet (D’655 Patent, Description). The visual appearance of the two stencils in the drawings is substantially the same as the designs shown in the D'963 patent (D’655 Patent, FIG. 1).
• Asserted Claims: The single design claim for the ornamental design as shown and described.
• Accused Features: The "Counterfeit Products" sold by Defendants are alleged to infringe the ornamental design of the ’655 Patent (Compl. ¶¶ 48-49).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are "Counterfeit Products," identified as "similar and substandard copies" of Plaintiff's "peel and place eyeliner stencils" (Compl. ¶22, p. 6). These products are allegedly sold by the 174 Doe Defendants through various online e-commerce stores hosted on Amazon.com (Compl. ¶4).

Functionality and Market Context

The complaint alleges the accused products are eyeliner stencils designed to "resemble" Plaintiff's genuine products (Compl. ¶32). They are allegedly sourced from a common manufacturer in China and sold by an "interrelated group of counterfeiters" who intentionally conceal their identities while targeting consumers in the United States (Compl. ¶¶ 6, 9, 16). The complaint frames the sales as part of an illicit counterfeiting operation that harms Plaintiff's brand and causes consumer confusion (Compl. ¶¶ 2, 33).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

The complaint does not contain claim charts or images of the accused products, instead making broad allegations that the "Counterfeit Products" infringe the "ornamental design claimed in each of the Asserted Patents" (Compl. ¶48). The core of the infringement theory is that the accused products are copies or "colorable imitations" of Plaintiff's patented designs, sold in a manner that is "likely to cause and has caused confusion, mistake, and deception by and among consumers" (Compl. ¶33).

For design patents, the legal test for infringement is 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's allegations of resemblance and consumer confusion are intended to meet this standard. A definitive analysis would require a side-by-side visual comparison of the accused products with the drawings of the asserted patents.

Identified Points of Contention

• Factual Question (The Ordinary Observer Test): The central issue will be a visual and factual one: Are the accused eyeliner stencils "substantially the same" as the designs claimed in the asserted patents? This comparison will depend entirely on evidence of the accused products, which is not yet in the record.
• Scope Question (Single Stencil vs. Set): A potential dispute may arise over the scope of the D'963 and D'655 patents, which claim a "set" of two stencils. If defendants sell only one of the stencil designs individually, a question arises as to whether such a sale can infringe a patent claiming the ornamental design of a pair. This may distinguish infringement of the "set" patents from the '196 and '197 patents, which claim the stencils individually.
• Evidentiary Question (Joinder): The complaint alleges all 174 Doe Defendants are an "interrelated group" selling the "same infringing product" from a "common source" (Compl. ¶¶ 6, 42). A key threshold question for the court will be whether Plaintiff can produce sufficient evidence to support these allegations and justify joining all defendants in a single lawsuit.

V. Key Claim Terms for Construction

In design patent litigation, the "claim" is understood to be the visual design depicted in the drawings, and formal claim construction is rare. However, the scope of the article of manufacture identified in the patent's title can be a point of contention.

• The Term: "Set of...Stencils"
• Context and Importance: This term appears in the titles of the D'963 and D'655 patents. Its interpretation is critical for determining the scope of infringement. Practitioners may focus on this term because if a defendant sells only one of the two stencil designs, but not both together as a "set," it may have a defense that it does not infringe the patents claiming the design for a set. This could limit the applicability of the '963 and '655 patents to only those sellers who offer the specific pair of stencils as a combined unit.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue that the design for a "set" protects the novel design of its components. However, this position is generally weak in design patent law, which protects the design as a whole.
  • Evidence for a Narrower Interpretation: The patent specifications explicitly describe the invention as "a pair of peel away stencils" (D'963 Patent, Description) and the figures consistently depict two distinct items (D'963 Patent, FIG. 1, FIG. 2, FIG. 7). This intrinsic evidence strongly suggests that the claimed "ornamental design" is the appearance of the two stencils as a set, and therefore infringement would require an accused product to be or include that specific pair.

VI. Other Allegations

• Indirect Infringement: The complaint makes a conclusory allegation of indirect infringement (Compl. ¶48). However, it does not plead specific facts to support a claim for either induced infringement (e.g., specific actions taken with the intent to encourage direct infringement) or contributory infringement. The allegations focus on the defendants' own acts of making, using, and selling.
• Willful Infringement: Willfulness is alleged based on the assertion that the infringement is "obvious and notorious" and that defendants have "full knowledge of Plaintiff's ownership of the Asserted Patents" (Compl. ¶¶ 31, 50). The complaint further alleges that the defendants are "counterfeiters" engaged in intentional copying, which, if proven, would support a finding of egregious conduct sufficient for willfulness under 35 U.S.C. § 284 (Compl. ¶¶ 2, 50).

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

1. A Core Evidentiary Question of Visual Similarity: The case fundamentally hinges on a visual, factual comparison. Can the Plaintiff demonstrate that the ornamental designs of the accused products sold by the Defendants are "substantially the same" as the designs claimed in the four asserted patents in the eyes of an ordinary observer?
2. A Procedural Question of Joinder and Liability: Can the Plaintiff produce sufficient evidence to prove its allegation that the 174 unnamed "Doe" Defendants constitute an "interrelated group" sourcing products from a "common manufacturer"? The answer will determine whether these defendants can be held jointly liable in a single action or if they are independent actors requiring separate legal proceedings.
3. A Definitional Question of Scope: For the '963 and '655 patents, a key issue will be whether the claim to a design for a "set" of stencils can be infringed by a product that consists of only one of the two stencils shown in the patent drawings, or if infringement requires the accused product to be sold as the specific claimed pair.