DCT
4:24-cv-00183
Contego Spa Designs Inc v. Soho Nails Spa LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Contego Spa Designs, Inc. (California)
- Defendant: Soho Nails Spa LLC (Missouri)
- Plaintiff’s Counsel: Capes, Sokol, Goodman & Sarachan, P.C.; Vista IP Law Group LLP
- Case Identification: 4:24-cv-00183, W.D. Mo., 03/15/2024
- Venue Allegations: Venue is alleged to be proper because Defendant Soho Nails Spa resides in the district, has a regular and established place of business in the district, and has committed the alleged acts of patent infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s use of certain pedicure spa chairs infringes a patent related to a pedicure basin with a sanitary overflow protection system.
- Technical Context: The technology addresses sanitation in pedicure foot baths by enabling the use of disposable liners, which typically block the main drain, while preventing water overflow via a secondary basin.
- Key Procedural History: The complaint notes that the patent-in-suit was assigned by the inventor to the Plaintiff on November 21, 2019, establishing Plaintiff's standing to bring this action.
Case Timeline
| Date | Event |
|---|---|
| 2013-03-12 | ’353 Patent Priority Date (Application Filing) |
| 2016-03-22 | ’353 Patent Issue Date |
| 2019-11-21 | ’353 Patent Assigned to Plaintiff |
| 2024-03-15 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,289,353 - "PEDICURE BASIN WITH OVERFLOW PROTECTION" (Issued Mar. 22, 2016)
The Invention Explained
- Problem Addressed: The patent's background describes a sanitation issue in pedicure salons where disposable plastic liners are used to cover pedicure basins. These liners, while improving hygiene, block the basin's primary drain, creating a risk of water overflow if the water level is adjusted and making it difficult to manage water temperature (’353 Patent, col. 1:32-50).
- The Patented Solution: The invention proposes a dual-basin system. A main basin for the client's feet has a portion of its peripheral rim intentionally built at a "lowered height." If the water level rises too high, it spills over this lowered rim into an adjacent secondary basin, which can have its own unobstructed drain. This allows for overflow management even when a liner makes the main drain unusable (’353 Patent, Abstract; col. 3:20-30). The concept is illustrated in figures such as Figure 2A, which shows the main basin (210), secondary basin (220), and lowered rim (230).
- Technical Importance: This design provides a practical solution that reconciles the use of sanitary disposable liners with the functional need to prevent accidental water spillage in a salon environment (’353 Patent, col. 4:26-32).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2, 3, and 6 (Compl. ¶30).
- Independent Claim 1 requires:
- A spa chair with a seat for a patient.
- A main basin positioned in front of the seat.
- A peripheral rim around the main basin.
- At least a portion of the peripheral rim is at a "lowered height" relative to a "prescribed height" to allow liquid to overflow.
- A "liner" covering the main basin's surface up to the rim.
- A secondary basin "communicated with the main basin" over the lowered rim portion to collect the overflow.
III. The Accused Instrumentality
Product Identification
- The complaint identifies the accused products as "KYEN model pedicure spa chairs sold by T-Spa," which are allegedly installed and used at Defendant's "Soho Nails Spa" location (Compl. ¶¶34, 40).
Functionality and Market Context
- The complaint alleges that the KYEN Accused Product is a pedicure spa chair used by Soho to provide pedicure services to its customers (Compl. ¶¶36, 39).
- The alleged functionality mirrors the patent's claims, including a seat, a main basin, a secondary basin, and a peripheral rim with a lowered portion allowing for liquid overflow from the main basin to the secondary basin (Compl. ¶37).
- A key allegation is that Soho's employees "insert[] disposable liners into the main basin" when using the chairs, thereby creating the conditions for infringement of the complete claimed combination (Compl. ¶39). A photograph included as Exhibit 10 allegedly shows a Soho employee using an accused chair with a disposable liner inserted (Compl. ¶40).
IV. Analysis of Infringement Allegations
’353 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a spa chair for use by a spa patient in a pedicure of the feet of the patient... comprising: a seat arranged for receiving the patient... a main basin in front of the seat and arranged such that the feet of the patient sitting on the seat are received into the main basin; | The KYEN Accused Product is a pedicure spa chair with a seat and a main basin for a patient's feet, as shown in photographs from Defendant's website and business location (Compl. Exs. 2, 3, 5). | ¶37 | col. 2:56-63 |
| the main basin having a peripheral rim for containing liquid in the main basin; | The KYEN Accused Product's main basin has a peripheral rim to contain water. A close-up view allegedly shows this feature (Compl. Ex. 6). | ¶37 | col. 4:50-51 |
| the main basin having at least a portion of the peripheral rim arranged at a lowered height relative to a prescribed height of the peripheral rim so that the liquid can overflow said at least a portion of the peripheral rim... | The main basin of the accused chair allegedly has a portion of its rim at a lowered height, which allows liquid to overflow when the basin is filled past a certain depth. | ¶37 | col. 3:20-23 |
| a liner covering a surface of the main basin up to the peripheral rim in an installed configuration; | The complaint alleges that Soho's employees insert disposable liners into the main basin of the accused chairs when providing pedicure services to customers. Exhibit 10 is a photograph allegedly showing this use at Soho's place of business. | ¶39 | col. 4:15-18 |
| and a secondary basin communicated with the main basin over said at least a portion of the peripheral rim so as to collect all overflow of liquid from the main basin that is directed by said at least a portion of the peripheral rim towards the secondary basin; | The KYEN Accused Product allegedly includes a secondary basin positioned to collect overflow from the main basin. A photograph of the product purportedly shows this secondary basin and its communication path with the main basin (Compl. Ex. 7). | ¶38 | col. 3:23-30 |
- Identified Points of Contention:
- Scope Questions: The case may turn on the interpretation of "communicated with." The complaint alleges communication via direct overflow from one basin to another (Compl. ¶38). A question for the court is whether this functional arrangement, without a dedicated pipe or channel, falls within the scope of the claim term as supported by the patent's specification, which shows both adjacent basins (Fig. 2A) and basins connected by a "spout" (Fig. 4A) (’353 Patent, col. 4:4-6).
- Technical Questions: A central factual question will be whether the accused KYEN chair's rim has a "lowered height" portion that is structurally designed for and functionally directs overflow into the secondary basin, as claimed, or if the feature is merely aesthetic. The plaintiff supports this with photographic evidence, such as a close-up of the main basin from a manufacturer video (Compl. ¶36, Ex. 6) and a photo of the secondary basin (Compl. ¶38, Ex. 7).
V. Key Claim Terms for Construction
- The Term: "liner"
- Context and Importance: The use of a "liner" is a required element of the asserted independent claim and is central to the patent's stated purpose of solving a sanitation-related problem. The contributory infringement claim is predicated on the defendant supplying the chair "except for the 'liner'" (Compl. ¶49), making the term's definition critical.
- Evidence for a Broader Interpretation: The specification suggests flexibility, describing the liner as "typically either a plastic bag type (like a trash bag) or a harder plastic that has been molded to fit like a shell" (’353 Patent, col. 1:36-40). The doctrine of claim differentiation may also support a broad reading, as dependent claims 3 and 4 separately recite a "flexible plastic liner" and a "hard shell liner," respectively, suggesting the term "liner" in independent claim 1 is not limited to either type.
- Evidence for a Narrower Interpretation: A defendant might argue that the term "liner" should be limited to the context provided in the patent's background, implying a disposable, single-use item intended for sanitation (’353 Patent, col. 1:32-44). The complaint itself alleges the use of "disposable liners" (Compl. ¶44).
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement.
- Inducement: The inducement claim is based on allegations that Soho instructs its employees to insert disposable liners into the accused chairs, thereby causing them to perform the final step of the claimed combination. This is supported by photographs allegedly taken at Soho's business showing the chairs in use with liners (Compl. ¶44, citing Exs. 8-10).
- Contributory Infringement: Plaintiff alleges that Soho contributes to infringement by providing the "Spas Without Liners," which it claims are a material part of the invention, are not a staple article of commerce, and are known to be especially adapted for an infringing use (i.e., with a liner) (Compl. ¶¶49-52).
- Willful Infringement: The complaint includes a conclusory allegation that the infringement has been "deliberate and intentional" (Compl. ¶27). It does not, however, plead specific facts indicating that Defendant had pre-suit knowledge of the ’353 Patent or its infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case may depend on the court's determination of several key issues:
A core issue will be one of definitional scope: Can the term "communicated with," which describes the relationship between the two basins, be construed to cover a simple overflow from one basin into an adjacent one, or does it require a more specific, engineered connection?
A key evidentiary question will be one of factual correspondence: Does the evidence, including manufacturer materials and photographs of the chairs in use, demonstrate that the accused KYEN model pedicure chairs function as alleged—specifically, that they possess a rim with a "lowered height" portion designed to direct overflow into a secondary basin, thereby satisfying the structural limitations of the patent's claims?
Finally, the case against the end-user defendant will raise questions of indirect liability: Can the plaintiff prove the requisite knowledge and specific intent for its inducement and contributory infringement claims, particularly that the accused chair has no substantial non-infringing use and was used by the defendant with the knowledge and intent to infringe?