DCT
1:20-cv-09901
Guy A Shaked Investments Ltd v. Ontel Products Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Guy A Shaked Investments Ltd (Israel) and Dafni Hair Products Ltd (Israel)
- Defendant: Ontel Products Corp (New Jersey)
- Plaintiff’s Counsel: Latham & Watkins LLP
- Case Identification: 1:20-cv-09901, D.N.J., 11/03/2022
- Venue Allegations: The complaint, originally filed in the Central District of California, was transferred to the District of New Jersey. Plaintiffs allege venue is proper as Defendant is a New Jersey corporation that has consented to venue and has committed acts of infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s "SIMPLY STRAIGHT" hair straightening brush infringes one design patent and one utility patent related to the functional and aesthetic features of heated hair brushes.
- Technical Context: The technology concerns heated hair styling tools that function as brushes, intended to offer a faster, safer, and less damaging alternative to traditional flat-iron straighteners.
- Key Procedural History: The complaint alleges Plaintiff first notified Defendant of potential infringement of pending patent applications in 2015, followed by notice of the issued U.S. Patent No. 9,578,943 in March 2017. The '943 Patent subsequently underwent ex parte reexamination, resulting in a certificate that amended several claims, including the lead asserted independent claim. The patentee also filed a disclaimer for two claims of the '943 Patent.
Case Timeline
| Date | Event |
|---|---|
| 2012-05-17 | Earliest Priority Date for '943 Patent |
| 2013-05-16 | Earliest Priority Date for D'007 Patent |
| 2015-01-01 | Accused "SIMPLY STRAIGHT" Brush Launch (approx. "since 2015") |
| 2015-09-01 | Plaintiff's DAFNI brush revealed in YouTube video (approx.) |
| 2017-02-28 | Issue Date of U.S. Patent No. 9,578,943 |
| 2017-03-29 | Plaintiff alleges providing notice of infringement to Defendant |
| 2018-05-08 | Issue Date of U.S. Design Patent No. D817,007 |
| 2021-01-18 | Disclaimer filed for claims 20 and 21 of '943 Patent |
| 2022-07-08 | Reexamination Certificate issued for '943 Patent |
| 2022-11-03 | Corrected First Amended Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D817,007 - "Hair Straightening Brush"
The Invention Explained
- Problem Addressed: The complaint suggests a need for a hair styling tool with a unique aesthetic that is "sleek and stylish, with a 'futuristic' feel" to reflect its innovative technology, distinguishing it from traditional brushes (Compl. ¶23).
- The Patented Solution: The D’007 Patent claims the specific ornamental design for a hair straightening brush as depicted in its figures. The design features an oval-shaped head, a handle that tapers from the head, an array of bristle-like projections on the face, and a distinct ring of peripheral bristles (D’007 Patent, FIGS. 1-6). The claim is to the visual appearance, not the functional aspects, of the brush.
- Technical Importance: Not applicable to a design patent.
U.S. Patent No. 9,578,943 - "Hair Straightening Brush"
The Invention Explained
- Problem Addressed: The patent and complaint identify several problems with conventional hair straightening tools like flat irons: they are time-consuming, require portioning hair into small sections, and use high temperatures that can damage hair (Compl. ¶¶ 16, 20-21). A related safety problem is the risk of users burning their hands or scalp on the heated surfaces ('943 Patent, col. 1:24-27; Compl. ¶22).
- The Patented Solution: The invention is a brush-like device that uses an array of three-dimensional heated elements protruding from a base plate to increase the contact surface area with hair, allowing for effective straightening at lower temperatures ('943 Patent, Abstract; Compl. ¶20). To address safety, the design incorporates heat-insulating "spacers" (e.g., bristles) that are dispersed among the heating elements and around the periphery to maintain a safe distance between the hot components and the user's scalp ('943 Patent, col. 4:1-14; Compl. ¶22).
- Technical Importance: This combination of features is described as enabling faster, more efficient hair straightening for larger sections of hair, while simultaneously reducing the risk of hair damage and user burns (Compl. ¶¶ 21-22).
Key Claims at a Glance
- The complaint asserts independent claim 1, among others (Compl. ¶¶ 44-45). The analysis here focuses on the amended version of claim 1 from the ex parte reexamination certificate.
- Essential elements of reexamined claim 1:
- A heating plate extending over a face of the hairbrush;
- A plurality of heating elements thermally coupled to the plate and protruding from its face, arranged in lengthwise rows, where at least one row has a different number of heating elements than another row;
- The heating elements in each row are offset relative to the elements in an adjacent row;
- A plurality of heat insulating spacers projecting outwardly from at least some of the heating elements to create space between the elements and a user's scalp; and
- A plurality of heat insulating elongate peripheral spacers disposed around a portion of the hair treating area.
- The complaint reserves the right to assert numerous other claims, including a wide range of dependent claims specified in a footnote (Compl. ¶45, fn. 10).
III. The Accused Instrumentality
Product Identification
- The "SIMPLY STRAIGHT" straightening brush (Compl. ¶30).
Functionality and Market Context
- The complaint describes the accused product as a ceramic straightening brush that allegedly "copies the look, feel, and straightening technology" of the Plaintiffs' DAFNI brush (Compl. ¶30).
- Technically, it is alleged to have a heating plate with multiple protruding heating elements arranged in lengthwise, offset rows, surrounded by heat-insulating bristles (Compl. ¶44). The complaint includes a photograph of the accused product. This image shows an oval-headed brush with rows of dark, bristle-like heating elements interspersed with lighter-colored protective bristles (Compl. p. 11, Image).
- The product is allegedly sold through major retailers such as Amazon.com, WalMart, and Bed Bath & Beyond, indicating significant commercial presence (Compl. ¶31).
IV. Analysis of Infringement Allegations
D'007 Patent Infringement Allegations
The complaint alleges that Ontel's sale of the SIMPLY STRAIGHT brush infringes the D'007 design patent (Compl. ¶37). The core of this allegation is that the accused product is visually confusingly similar to the patented design. The complaint provides images of the DAFNI product line, which embodies the patented design, and a separate image of the accused SIMPLY STRAIGHT brush (Compl. p. 10, 11). A central issue for the court will be to apply the "ordinary observer" test, determining if an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented one. The visual evidence provided in the complaint, showing two products with similar oval heads, handle shapes, and bristle arrangements, will be foundational to this analysis.
'943 Patent Infringement Allegations
| Claim Element (from Reexamined Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a heating plate extending over a face of the hairbrush; | The accused product is a brush with a "heating place [sic] on the face of the brush." | ¶44 | col. 2:40-45 |
| a plurality of heating elements thermally coupled to the heating plate and protruding from only the face of the hairbrush... arranged in a plurality of lengthwise rows... | The accused product has "multiple heating elements thermally coupled to and protruding from the plate" which are "arranged in lengthwise... rows." | ¶44 | col. 3:11-19 |
| wherein a number of the heating elements in at least one of the lengthwise rows is different than a number of heating elements in at least one other of the lengthwise rows; | The complaint does not explicitly allege this limitation. | N/A | col. 1:31-35 (C1) |
| wherein, for each of the plurality of lengthwise rows, the heating elements thereof are offset relative to the heating elements in an adjacent one of the plurality of lengthwise rows; | The rows of heating elements on the accused product are arranged in "offset rows." | ¶44 | col. 5:41-45 |
| a plurality of heat insulating spacers projecting outwardly from at least some of the plurality of heating elements, thereby providing a space between the plurality of heating elements and a user's scalp... | "Each heating protruding heating element also has a heat insulating spacer projecting outwardly from the heating element." | ¶44 | col. 4:1-14 |
| a plurality of heat insulating elongate peripheral spacers disposed at least around a portion of the hair treating area of the hairbrush. | The accused product's heating elements are described as being surrounded by "heat-insulating bristles." | ¶44 | col. 5:51-54 |
- Identified Points of Contention:
- Evidentiary Question: A primary point of contention may arise from the limitation added during reexamination: that at least one row of heating elements must have a different number of elements than another row. The complaint's infringement narrative for claim 1 does not explicitly map this element to the accused product (Compl. ¶44). Plaintiff will need to present evidence that this geometric constraint is met.
- Scope Question: Does the accused product's arrangement of "heat-insulating bristles" meet the claim requirement for "heat insulating elongate peripheral spacers"? The infringement analysis will depend on the construction of this three-part term and whether the bristles on the accused device satisfy the "elongate" and "peripheral" characteristics as defined by the patent.
V. Key Claim Terms for Construction
The Term: "heat insulating elongate peripheral spacers" ('943 Patent, reexamined claim 1)
- Context and Importance: This term defines the protective outer ring of bristles, a key safety feature. Practitioners may focus on this term because infringement will hinge on whether the accused product's outer bristles meet all three specific limitations: being heat insulating, being "elongate," and being "peripheral."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification defines "spacer" broadly as "any structure arranged to keep a clearance" ('943 Patent, col. 2:9-12). This could support an interpretation where any bristle-like structures on the outer edge that create distance from the scalp qualify.
- Evidence for a Narrower Interpretation: The claim specifically requires the spacers to be "elongate" and "peripheral". The patent figures depict these as a distinct ring of bristles (e.g., 130A in FIG. 1A) that appear longer than the heating elements and form a clear boundary. A party could argue this requires a structure that is both demonstrably longer than other elements and located at the outer boundary of the heating area.
The Term: "offset relative to the heating elements in an adjacent one of the... rows" ('943 Patent, reexamined claim 1)
- Context and Importance: This term dictates the staggered, non-aligned pattern of the heating elements, which is related to the brush's ability to efficiently contact hair. The geometric arrangement of the accused product's heating elements must fall within the scope of this term.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not define a required degree or angle of offset. This could support a reading where any arrangement that is not in perfect grid-like alignment satisfies the limitation.
- Evidence for a Narrower Interpretation: The patent figures, such as FIG. 2A, illustrate a specific and regular alternating pattern. A defendant could argue that the term, read in light of the embodiments, requires a structured, patterned stagger rather than any incidental or random misalignment.
VI. Other Allegations
Indirect Infringement
- While not pleaded as a separate count, the complaint alleges Defendant induces infringement by, among other things, "inducing others to commit acts of patent infringement in this District" (Compl. ¶15). The factual basis for inducement would be Defendant's sale of the SIMPLY STRAIGHT brush with the knowledge and intent that customers will use it for its intended, infringing purpose of straightening hair.
Willful Infringement
- The complaint alleges willful infringement based on pre-suit knowledge. It states that Defendant was notified of pending patent applications in 2015 and received "detailed infringement allegations" regarding the issued '943 Patent on March 29, 2017 (Compl. ¶¶ 32-33). The allegation is that Defendant continued to infringe despite this knowledge (Compl. ¶¶ 34, 38, 46).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central visual and legal question will be one of design equivalency: Does the overall ornamental appearance of the accused "SIMPLY STRAIGHT" brush, as depicted in the complaint, create the same visual impression as the D'007 patented design in the eyes of an ordinary observer, particularly when viewed in light of the prior art?
- A key evidentiary question will be one of proof regarding reexamined claims: Can Plaintiff prove that the accused product meets all limitations of the asserted claims of the '943 Patent as amended by reexamination, specifically the requirement that different rows of heating elements contain a different number of elements—a limitation not explicitly mapped in the complaint's infringement narrative?
- A core issue will be one of definitional scope: The outcome may depend on claim construction, particularly whether the accused product's outer bristles can be defined as "heat insulating elongate peripheral spacers," a multi-part limitation central to the patent's asserted safety features.