DCT
1:24-cv-10116
Skull Shaver LLC v. Cut Buddy
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Skull Shaver, LLC (New Jersey)
- Defendant: The Cut Buddy (North Carolina)
- Plaintiff’s Counsel: Soliman & Associates, PC
- Case Identification: 1:24-cv-10116, E.D. Pa., 10/28/2024
- Venue Allegations: Plaintiff alleges venue is proper because Defendant conducts business, markets its products, and sells its products within the Eastern District of Pennsylvania.
- Core Dispute: Plaintiff alleges that Defendant’s "The Bald Buddy" electric shaver infringes a utility patent and a design patent related to ergonomic handheld shavers designed for curved body parts.
- Technical Context: The technology resides in the field of personal grooming devices, specifically electric shavers with ergonomic designs intended to improve a user's ability to shave their own head.
- Key Procedural History: The complaint notes that the U.S. International Trade Commission (ITC) has previously issued a General Exclusion Order (GEO) that bars the importation of products found to violate Plaintiff's patents. The existence of a GEO can sometimes be used to support allegations of knowledge in an infringement action.
Case Timeline
| Date | Event |
|---|---|
| 2010-00-00 | Skull Shaver was founded |
| 2011-08-08 | Priority Date for U.S. Patent No. 8,726,528 |
| 2011-08-11 | Priority Date for U.S. Patent No. D672,504 |
| 2012-12-11 | U.S. Patent No. D672,504 Issued |
| 2014-05-20 | U.S. Patent No. 8,726,528 Issued |
| 2024-10-28 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,726,528 - "Electric Head Shaver", issued May 20, 2014 (’528 Patent)
The Invention Explained
- Problem Addressed: The patent identifies a deficiency in prior art electric shavers, which were predominantly designed with grips below the cutting surface, making them awkward and difficult to manipulate when shaving curved areas like the head ('528 Patent, col. 1:35-42; Compl. ¶3).
- The Patented Solution: The invention is an electric shaver with a housing specifically shaped to be held comfortably when the grip is oriented above the cutting surface. The solution is characterized by two sets of concave recesses: one pair on the sides of the housing for gripping between fingers (e.g., thumb and forefinger), and another pair on the underside of the housing to accommodate the user's fingertips, allowing the rest of the hand to feel the scalp for a more controlled shave ('528 Patent, col. 2:56-63, Abstract).
- Technical Importance: This ergonomic design aimed to make it "anatomically convenient to hold the shaver against the top and sides of the head," addressing the unique challenges of self-shaving a complex, curved surface ('528 Patent, col. 2:45-48).
Key Claims at a Glance
- The complaint asserts infringement of "one or more claims," with allegations that track independent claim 1 (Compl. ¶¶17-18).
- The essential elements of independent claim 1 include:
- A housing for electrical and drive components with a bottom surface.
- A cutter mechanism located beneath and spaced from the housing's bottom.
- A central hub connecting the housing to the cutter mechanism.
- A "first pair of elongated recesses" on the sides of the housing.
- A "second set of elongated spaced apart recesses" formed in the bottom of the housing, extending upwardly into it and perpendicular to the first pair of recesses.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Design Patent No. D672,504 - "Electric Head Shaver", issued December 11, 2012 (’504 Patent)
The Invention Explained
- Problem Addressed: As a design patent, the ’504 Patent does not articulate a technical problem but instead protects a new, original, and ornamental design for an article of manufacture. The context provided by the related utility patent suggests the design addresses the aesthetic and ergonomic shortcomings of conventional shavers for head-shaving (Compl. ¶3).
- The Patented Solution: The patent protects the specific visual appearance of the electric head shaver as depicted in its eight figures ('504 Patent, Figs. 1-8). The claimed design consists of the overall shape of the housing, including its distinct side and bottom indentations, and the arrangement of the cutting heads relative to the housing.
- Technical Importance: The design's importance lies in its unique ornamental appearance, which serves to distinguish the product in the marketplace.
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is for "The ornamental design for an 'electric head shaver,' as shown and described" ('504 Patent, "CLAIM").
III. The Accused Instrumentality
Product Identification
The accused product is an electric shaver marketed and sold by Defendant as "The Bald Buddy" (Compl. ¶14).
Functionality and Market Context
The complaint describes "The Bald Buddy" as an electric head shaver that embodies the inventions claimed in the patents-in-suit (Compl. ¶14). The complaint references photographs of the accused product attached as Exhibit C, though the exhibit itself is not included in the filing (Compl. ¶14). Allegations state the accused product comprises a housing, a cutter mechanism beneath the housing, and a central hub connecting the two (Compl. ¶18). The product is positioned as "relatively inexpensive costing only about $60.00" (Compl. ¶15).
IV. Analysis of Infringement Allegations
’528 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a housing for containing an electrical source and drive-related components, said housing having a length and a width... said housing further including a bottom; | The accused shaver comprises a housing for containing an electrical source and drive-related components, with a length, width, and bottom. | ¶18 | col. 3:1-4 |
| a cutter mechanism located beneath said bottom of said housing and spaced therefrom; | A cutter mechanism is located beneath the bottom of the housing and spaced therefrom. | ¶18 | col. 3:4-6 |
| a central hub extending from said bottom of said housing to said cutter mechanism and connecting said cutter mechanism to said housing; | A central hub extends from the housing bottom to connect the cutter mechanism to the housing. | ¶18 | col. 3:6-9 |
| said cutter mechanism including a cutting surface defining a plane; | The cutter mechanism includes a cutting surface that defines a plane. | ¶18 | col. 4:18-20 |
| a first pair of elongated recesses formed on said sides of said housing... | The complaint does not provide sufficient detail for analysis of this element. | col. 3:25-29 | |
| a second set of elongated spaced apart recesses formed in said bottom of said housing... extending perpendicular to said first pair of recesses. | The complaint does not provide sufficient detail for analysis of this element. | col. 3:29-35 |
- Identified Points of Contention:
- Structural Questions: The complaint's infringement allegations for the '528 Patent largely recite the language of claim 1 without mapping specific features of the accused product to the claim's two distinct sets of "elongated recesses" (Compl. ¶18). The central dispute will likely be factual: whether "The Bald Buddy" product, as shown in the referenced photographic Exhibit C (Compl. ¶14), actually possesses two pairs of recesses with the specific locations and perpendicular orientation required by the claim.
- Scope Questions: The complaint's allegations are presented at a high level. A key question for the court will be whether the physical indentations on "The Bald Buddy" fall within the scope of the claimed "recesses," or if they are structurally different in a way that avoids infringement.
’504 Patent Infringement Allegations
The complaint alleges that the "overall appearance" of "The Bald Buddy" is "substantially the same as the design in the Patent" (Compl. ¶23). It supports this by noting that both designs comprise a housing, a central hub, and a cutter mechanism (Compl. ¶24).
- Identified Points of Contention:
- Legal Standard Question: A primary issue will be whether the plaintiff's infringement theory for the design patent is legally sufficient. The test for design patent infringement is deception of the "ordinary observer," which focuses on the overall ornamental, non-functional appearance. The complaint's allegations, however, focus on shared functional components (Compl. ¶24), raising the question of whether this meets the proper legal standard.
- Dissimilarity Question: The complaint concedes "there are some differences in the designs" (Compl. ¶23). The defense may argue that these differences are significant enough that an ordinary observer would not be deceived, thus rendering the overall designs plainly dissimilar.
V. Key Claim Terms for Construction
- The Term: "elongated recesses" (’528 Patent, Claim 1)
- Context and Importance: This term appears twice in claim 1 and defines the core ergonomic features of the shaver's housing. The construction of this term will be critical for determining whether the indentations on the accused product meet the structural requirements of the claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification also refers to these features as "concave surfaces" ('528 Patent, col. 3:27), which could support a construction that is not limited to a specific shape or depth, as long as an indentation is present.
- Evidence for a Narrower Interpretation: The figures show distinct and deeply curved indentations (e.g., '528 Patent, Figs. 1, 3). The stated purpose is to "accommodate a portion of a user's fingers" ('528 Patent, col. 4:37-39), which may imply a size, shape, and depth sufficient for that function, potentially narrowing the term to exclude minor or shallow surface variations.
VI. Other Allegations
- Indirect Infringement: The complaint includes language suggesting indirect infringement by alleging Defendant is "causing others to make, use, sell, and/or offer to sell" the accused product (Compl. ¶14). However, it does not plead specific facts, such as references to user manuals or advertising, that would be necessary to establish the elements of knowledge and intent for a claim of induced infringement.
- Willful Infringement: The complaint alleges that Defendant "willfully and deliberately infringed" and seeks treble damages (Compl. ¶14, Prayer for Relief ¶F). The pleading is conclusory and does not allege specific facts demonstrating pre-suit knowledge of the patents. The complaint's reference to a pre-existing ITC General Exclusion Order against infringing products may be leveraged by the plaintiff to argue that Defendant was on notice of Skull Shaver's patent rights (Compl. ¶12).
VII. Analyst’s Conclusion: Key Questions for the Case
A central legal issue will be one of infringement theory: for the design patent claim, can the plaintiff's allegations of infringement, which are based on shared functional elements (Compl. ¶24), satisfy the "ordinary observer" test that is grounded in overall ornamental appearance, especially given the complaint's acknowledgment of design differences (Compl. ¶23)?
A key evidentiary question will be one of structural correspondence: does the accused "The Bald Buddy" shaver physically embody the specific structural limitations of claim 1 of the '528 patent, particularly the "second set of elongated spaced apart recesses" that must be located on the housing's bottom surface and oriented "perpendicular to said first pair of recesses"?
A significant question for willfulness and potential damages enhancement will be notice: can the plaintiff establish that the defendant had pre-suit knowledge of the patents-in-suit, and will the existence of a prior ITC General Exclusion Order (Compl. ¶12) be sufficient to prove that any infringement was willful rather than unknowing?