Bounce Curl LLC v. Partnerships Unincorp Associations

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Bounce Curl, LLC (Arizona)
  • Defendant: The Partnerships and Unincorporated Associations Identified in Schedule "A" (Foreign Jurisdictions)
  • Plaintiff’s Counsel: Keener & Associates, P.C.
• Case Identification: 1:24-cv-06575, N.D. Ill., 08/13/2024
• Venue Allegations: Venue is alleged to be proper in the Northern District of Illinois because Defendants allegedly transact business in the state, target consumers in Illinois for sales, offer shipping to Illinois, and have caused substantial injury to the Plaintiff within the district.
• Core Dispute: Plaintiff alleges that Defendants’ sale of counterfeit hair brushes via online e-commerce platforms infringes two of its U.S. design patents.
• Technical Context: The case concerns the ornamental design of consumer personal care products, specifically hair brushes, where unique appearance can be a significant market differentiator.
• Key Procedural History: The action is a First Amended Complaint filed against a group of foreign entities, whose specific identities are alleged to be unknown, operating online storefronts. This procedural posture, common in anti-counterfeiting litigation, suggests the initial phases of the case may focus on identifying and serving the defendants. No prior litigation or post-grant proceedings are mentioned.

Case Timeline

Date	Event
2023-07-28	U.S. Patent D1,028,527 Priority Date
2023-12-11	U.S. Patent D1,025,614 Priority Date
2024-05-07	U.S. Patent D1,025,614 Issue Date
2024-05-28	U.S. Patent D1,028,527 Issue Date
2024-08-13	Complaint Filing Date

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

U.S. Design Patent D1,025,614 - "Brush"

• Patent Identification: U.S. Patent No. D1,025,614, "Brush," issued May 7, 2024.

The Invention Explained

• Problem Addressed: Design patents do not address technical problems; they protect the aesthetic and ornamental aspects of a functional item. The goal is to create a new, original, and non-obvious ornamental design for an article of manufacture, in this case, a hair brush.
• The Patented Solution: The patent protects the specific visual appearance of a hair brush as illustrated in its seven figures ('614 Patent, Figs. 1-7). The claimed design features an elongated body with a distinct head and a tapering pintail handle. Key ornamental features include the specific arrangement of bristles on the brush head and a unique, ridged or scalloped texture along the side edges of the head ('614 Patent, Figs. 1, 4-5). The dashed lines in the drawings indicate that certain portions of the brush are not part of the claimed design, focusing the legal protection on the elements shown in solid lines ('614 Patent, p.1, Description).
• Technical Importance: The commercial value of the design is asserted in the complaint, which describes Plaintiff's product as having a "unique and original design" (Compl. ¶23).

Key Claims at a Glance

• Design patents contain a single claim. The asserted claim is: "The ornamental design for a brush, as shown and described" ('614 Patent, Claim).
• The essential visual elements of this claim, shown in solid lines in the patent drawings, include:
  • The overall profile of the brush, comprising a head and an elongated, pointed handle.
  • A specific pattern and density of bristles on the brush head.
  • A series of prominent, repeating ridges along both side edges of the brush head.
  • The particular shape and curvature of the transition from the head to the handle.

U.S. Design Patent D1,028,527 - "Hair Brush"

• Patent Identification: U.S. Patent No. D1,028,527, "Hair Brush," issued May 28, 2024.

The Invention Explained

• Problem Addressed: As with the ’614 Patent, the objective is the creation of a new, original, and ornamental design for a hair brush.
• The Patented Solution: The ’527 Patent protects the ornamental design for a hair brush depicted in its seven figures ('527 Patent, Figs. 1-7). The visual appearance is characterized by a brush body with a head portion and a long, tapering pintail handle. The design's notable features, which are very similar to those in the ’614 Patent, include the bristle configuration and the textured side edges of the brush head ('527 Patent, Figs. 1, 4, 6). The claim protects the combination of these visual elements as a whole.
• Technical Importance: The complaint alleges the design is part of a "unique and original" product identity that Plaintiff seeks to protect from imitation (Compl. ¶23).

Key Claims at a Glance

• The single asserted claim is: "The ornamental design for the hair brush, as shown and described" ('527 Patent, Claim).
• The essential visual elements of this claim include:
  • The overall shape of the hair brush, including the head and pintail handle.
  • The specific layout of the bristles on the brush head.
  • The ornamental ridged texture applied to the side edges of the head.
  • The unadorned, smooth surface of the bottom of the brush head and handle.

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are "Counterfeit Products," specifically hair brushes, allegedly sold by the Defendants through various e-commerce platforms such as Amazon.com, eBay, and Temu (Compl. ¶¶ 5, 21).

Functionality and Market Context

The complaint alleges that the accused products are "similar and substandard copies" of Plaintiff's patented products and are "designed to resemble" them (Compl. ¶¶ 21, 27). It is alleged that all Defendants sell the "same infringing product," which is sourced from a "common manufacturer or consortium of manufacturers" in China (Compl. ¶¶ 10, 17). The Defendants are characterized as a "cabal of foreign counterfeiters" operating through numerous "Infringing Webstores" under various aliases to target consumers in the United States (Compl. ¶¶ 3, 5, 9).

IV. Analysis of Infringement Allegations

The standard for determining infringement of a design patent 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 alleges that Defendants' "Counterfeit Products" directly and indirectly infringe the ornamental design claimed in both the ’614 and ’527 Patents (Compl. ¶43). The core of the infringement theory is that the accused products are copies that are visually indistinguishable from the patented designs in the eyes of a consumer (Compl. ¶¶ 21, 27). The complaint asserts that all Defendants are infringing "in the same way" by selling the same product (Compl. ¶17).

No probative visual evidence provided in complaint.

• Identified Points of Contention:
  • Evidentiary Question: The central issue will be a factual comparison between the accused products and the patented designs. A primary question for the court will be whether Plaintiff can produce sufficient evidence to demonstrate that the accused products are "substantially the same" as the claimed designs under the ordinary observer test.
  • Scope Question: Design patents protect only the specific ornamental features shown in solid lines in the drawings. A potential point of contention may arise if the accused products, once identified and produced, exhibit any variations from the precise configurations shown in the patent drawings (e.g., in the handle shape, bristle density, or side-ridge pattern), raising the question of whether such differences are significant enough to avoid a finding of infringement.

V. Key Claim Terms for Construction

Claim construction for design patents typically involves a verbal description of the claimed ornamental design as depicted in the patent's figures, rather than construing specific text-based claim limitations.

• The Term: "The ornamental design for a brush [or hair brush], as shown and described."
• Context and Importance: The court's description of the claimed designs will define the scope of protection. This judicial construction serves as the benchmark against which the accused products are compared under the ordinary observer test. The level of detail included in the court's description will be critical to the infringement analysis.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party might argue that the claim should be construed to protect the overall visual impression of the brush, focusing on the combination of the pintail handle, the brush head shape, and the textured sides, rather than an exacting, element-by-element match.
  • Evidence for a Narrower Interpretation: A party could argue for a narrow construction limited to the precise details depicted in the solid lines of the drawings. This would include the exact curvature of the handle, the specific number and arrangement of the bristle rows, and the exact shape and spacing of the ridges on the side of the head, as shown in figures like FIG. 1, FIG. 4, and FIG. 6 of the patents ('614 Patent, Figs. 1, 4, 6; ’527 Patent, Figs. 1, 4, 6). The disclaimer of elements shown in dashed lines further supports a narrower focus on only the claimed features ('614 Patent, p.1, Description).

VI. Other Allegations

• Indirect Infringement: The complaint alleges that Defendants are "personally contributing to, inducing and engaging in the sale of Counterfeit Products" (Compl. ¶6). It also alleges they work in "active concert" with an unknown manufacturer to import and sell the infringing products (Compl. ¶15), which may support a claim for induced or contributory infringement.
• Willful Infringement: The complaint alleges willful infringement, asserting that the infringement is "obvious and notorious" and that Defendants have "no good faith basis" for believing their products do not infringe (Compl. ¶45). It further alleges that Defendants had "full knowledge of Plaintiff's ownership of the Asserted Patents" (Compl. ¶26).

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

1. A Factual Question of Similarity: The case will fundamentally turn on the application of the "ordinary observer" test. The central question is whether the accused products, once presented as evidence, are substantially the same in overall ornamental appearance as the specific designs claimed in the ’614 and ’527 patents, to the degree that a purchaser would be deceived.
2. A Procedural Question of Jurisdiction and Identification: A significant procedural challenge will be for the Plaintiff to successfully identify, serve, and establish personal jurisdiction over the anonymous foreign entities operating the various online storefronts, which is a prerequisite to obtaining an enforceable judgment.
3. A Question of Culpability: Should infringement be established, a key issue for damages will be willfulness. The court will need to determine whether Plaintiff can prove that Defendants acted with knowledge of the patents and objective recklessness, which could justify an award of enhanced damages under 35 U.S.C. § 284.