DCT

1:24-cv-10796

Skull Shaver LLC v. Freebird

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-10796, D.N.J., 11/27/2024
  • Venue Allegations: Venue is alleged to be proper because the Defendant resides in the judicial district of New Jersey.
  • Core Dispute: Plaintiff alleges that Defendant’s "Freebird Flex Series" of electric shavers infringes one utility patent and two design patents related to the ergonomic design of handheld shavers.
  • Technical Context: The technology concerns handheld electric shavers with a housing specifically shaped to facilitate shaving curved body parts, such as the scalp, a task that requires a different grip than traditional face shaving.
  • Key Procedural History: The complaint does not mention any prior litigation between the parties, Inter Partes Review (IPR) proceedings involving the asserted patents, or any prior licensing history.

Case Timeline

Date Event
2010 Plaintiff Skull Shaver founded
2011-08-08 U.S. Patent No. 8,726,528 Priority Date
2011-08-11 U.S. Patent No. D672,504 Priority Date
2012-12-11 U.S. Patent No. D672,504 Issued
2014-05-20 U.S. Patent No. 8,726,528 Issued
2019-05-29 U.S. Patent No. D914,290 Priority Date
2021-03-23 U.S. Patent No. D914,290 Issued
2024-11-27 Complaint Filing Date

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

U.S. Patent No. 8,726,528 - "Electric Head Shaver"

  • Patent Identification: U.S. Patent No. 8,726,528, "Electric Head Shaver," issued May 20, 2014. (Compl. ¶12).

The Invention Explained

  • Problem Addressed: The patent describes that conventional electric shavers, typically designed for face shaving, have grip configurations that are not well-suited for shaving the head, which requires the user to hold the shaver with the grip portion oriented above the cutting surface. (Compl. ¶3; ’528 Patent, col. 2:35-41).
  • The Patented Solution: The invention is an electric shaver with a housing that provides a unique grip form. This includes a "first pair of elongated recesses" on the sides of the housing and a "second set of elongated spaced apart recesses" on the underside of the housing, which are configured to accommodate the user's fingers for a more stable and tactile grip when shaving the head. (’528 Patent, Abstract; col. 3:22-36). The intended use is illustrated in Figures 4-6 of the patent, which show various ways the device can be gripped. (’528 Patent, col. 2:58-65).
  • Technical Importance: The claimed ergonomic design provides an "anatomically convenient" way to hold the shaver against the top and sides of the head, allowing for better control on complex curved surfaces. (’528 Patent, col. 2:45-48).

Key Claims at a Glance

  • The complaint asserts infringement of "one or more claims" of the Utility Patent, with the narrative allegations in the complaint tracking language from independent claim 1. (Compl. ¶¶ 19-20). Independent claims 1 and 3 are the broadest claims of the ’528 Patent.
  • Independent Claim 1 recites, in part:
    • a housing for containing electrical and drive components, with a bottom;
    • a cutter mechanism located beneath and spaced from the housing bottom;
    • a central hub connecting the housing to the cutter mechanism;
    • a "first pair of elongated recesses" on the sides of the housing; and
    • a "second set of elongated spaced apart recesses" on the bottom of the housing, oriented "perpendicular to said first pair of recesses."
  • Independent Claim 3 is similar but recites the housing's bottom surface defining a "first plane" and the cutter surface defining a "second plane," with the first pair of recesses lying in a "third plane."
  • The complaint’s general allegation of infringing "one or more claims" suggests it may reserve the right to assert dependent claims. (Compl. ¶19).

U.S. Design Patent No. D672,504 - "Electric Head Shaver"

  • Patent Identification: U.S. Design Patent No. D672,504, "Electric Head Shaver," issued December 11, 2012. (Compl. ¶11).

The Invention Explained

  • Problem Addressed: Not applicable for a design patent, which protects ornamentality rather than function.
  • The Patented Solution: The patent claims the ornamental design for an electric head shaver as depicted in its figures. (’504 Patent, CLAIM). The key visual features include a generally rectangular housing with rounded corners, prominent concave recesses on its longer sides, and C-shaped recesses on its underside flanking a central hub that connects to a four-headed rotary cutter assembly. (’504 Patent, Figs. 1-3). The broken lines in the figures indicate that the internal surfaces of the cutters are not part of the claimed design. (’504 Patent, p. 1, DESCRIPTION).

Key Claims at a Glance

  • Design patents contain a single claim. The claim is for: "The ornamental design for an "electric head shaver," as shown and described." (’504 Patent, CLAIM).

U.S. Design Patent No. D914,290 - "Electric Shaver Head"

  • Patent Identification: U.S. Design Patent No. D914,290, "Electric Shaver Head," issued March 23, 2021. (Compl. ¶13).
  • Technology Synopsis: This patent claims the ornamental design for just the shaver head component, not the entire shaver body. The design features a specific visual arrangement of four rotary cutters on a distinctively shaped mounting base. The broken lines showing the main shaver body indicate it is for environmental context only and not part of the claimed design. (’290 Patent, Fig. 1; p. 1, DESCRIPTION).
  • Asserted Claims: The patent’s single claim is for the ornamental design for an "electric shaver head, as shown and described." (’290 Patent, CLAIM).
  • Accused Features: The complaint alleges the "overall appearance" of the accused "Flex Series" shaver head is substantially the same as the patented design, pointing to features including "four rotary cutters" in a "square configuration" and the housing for the cutters. (Compl. ¶¶ 25-26).

III. The Accused Instrumentality

Product Identification

The accused products are identified as the "Freebird Flex Series" shavers. (Compl. ¶15).

Functionality and Market Context

The complaint alleges the Flex Series shavers are electric shavers that embody the patented inventions. (Compl. ¶15). The functional components alleged to be infringing include a housing, a cutter mechanism located beneath the housing, a central hub connecting the two, and a cutting surface. (Compl. ¶20). For the design patents, the complaint identifies the accused shaver as having a "four blade electric head shaver head," "four rotary cutters," and "four holders in a square configuration." (Compl. ¶26). The complaint alleges the products are sold exclusively online for less than $60, which prevents prospective customers from closely examining the product before purchase. (Compl. ¶¶ 15-17).

No probative visual evidence provided in complaint.

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; Defendant's accused electric shaver comprises a housing for containing an electrical source and drive-related components, said housing having a length and a width, and said housing further including a bottom. ¶20 col. 4:2-6
a cutter mechanism located beneath said bottom of said housing and spaced therefrom; a cutter mechanism located beneath said bottom of said housing and spaced therefrom; ¶20 col. 4:7-8
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 extending from said bottom of said housing to said cutter mechanism and connecting said cutter mechanism to said housing; ¶20 col. 4:9-11
said cutter mechanism including a cutting surface defining a plane; said cutter mechanism including a cutting surface defining a plane. ¶20 col. 4:12-13
a first pair of elongated recesses formed on said sides of said housing... The complaint alleges the accused shaver practices all limitations of the patent but does not provide specific facts mapping this element. ¶20 col. 4:21-26
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 alleges the accused shaver practices all limitations of the patent but does not provide specific facts mapping this element. ¶20 col. 4:27-32

Design Patent Infringement Allegations

The complaint alleges that the "overall appearance of the Flex Series shaver is substantially the same as the design in the Design Patent and/or Second Design Patent, or is at least a colorable imitation thereof." (Compl. ¶25). This allegation invokes the "ordinary observer" test for design patent infringement. The complaint further alleges that an ordinary observer viewing the accused product online "would be deceived into believing that the Flex Series shaver is the same as the patented design." (Compl. ¶27). The complaint identifies a list of allegedly similar features, such as the use of four rotary cutters in a square configuration. (Compl. ¶26).

Identified Points of Contention

  • Scope Questions: For the ’528 Patent, a central question will be whether the accused product's features meet the specific geometric limitations of the claims. The complaint's allegations in paragraph 20 mirror the claim language but do not specify, for example, whether the accused device has two distinct pairs of recesses or if those recesses are oriented "perpendicular" to each other as required by claim 1.
  • Technical Questions: The infringement analysis for the ’528 Patent will depend on evidence establishing the precise structure of the accused "Flex Series" shaver. For the design patents, the analysis will turn on a comparison of the overall ornamental designs. A question may arise as to whether the features listed in the complaint (e.g., "four rotary cutters") are primarily functional and thus should be given less weight in the infringement analysis for the design patents. (Compl. ¶26).

V. Key Claim Terms for Construction

  • The Term: "elongated recesses" (from ’528 Patent, claim 1)

  • Context and Importance: This term defines the primary ergonomic feature of the patented shaver grip. The scope of "elongated" and what constitutes a "recess" will be critical to determining infringement, as the complaint does not provide dimensional or structural details of the accused product's grip.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification describes these features as "concave surfaces" intended to "accommodate a portion of a user's fingers." (’528 Patent, col. 4:34-36). This functional language could support an interpretation that covers a variety of finger-grip indentation shapes.
    • Evidence for a Narrower Interpretation: The figures depict very specific, deeply curved indentations (e.g., 112a, 113a). (’528 Patent, Figs. 1-3). Further, claim 1 requires a "first pair" and a "second set" that are "perpendicular" to each other, a strict geometric constraint that could narrow the term’s scope to only those devices possessing this specific arrangement. (’528 Patent, col. 4:21-32).

  • The Term: "central hub" (from ’528 Patent, claim 1)

  • Context and Importance: This term defines the structure connecting the shaver body to the cutter mechanism. Its construction is key to the overall assembly of the device. Practitioners may focus on this term because its interpretation could either limit the claim to the specific embodiment shown or allow it to cover a wider array of connection mechanisms.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification describes the hub functionally as the structure through which the "connection between the motor and the cutter head passes." (’528 Patent, col. 3:6-8). This might support a broad definition covering any such connection point.
    • Evidence for a Narrower Interpretation: The preferred embodiment shows a specific structure for the hub (115) that includes an "enlarged lower portion 117." (’528 Patent, Fig. 3; col. 3:8-9). A party might argue that this detailed depiction limits the term to a structure with similar features.

VI. Other Allegations

  • Indirect Infringement: The complaint includes boilerplate language alleging Defendant is "causing others to make, use, sell, and/or offer to sell" the accused product. (Compl. ¶15). However, it does not plead any specific facts to support a claim for either induced or contributory infringement, such as allegations related to user manuals, advertisements instructing infringing use, or the sale of a component with no substantial non-infringing use.
  • Willful Infringement: The complaint alleges that Defendant has "willfully and deliberately infringed" and seeks treble damages. (Compl. ¶15; Prayer for Relief E). The complaint does not, however, allege any facts to support pre-suit knowledge of the patents, such as a prior cease-and-desist letter or a history between the parties. The allegation appears to be based on the act of infringement itself.

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

  • A central issue for the utility patent will be one of structural correspondence: Does the accused "Freebird Flex Series" shaver possess the specific two-pair "elongated recesses" with the perpendicular orientation required by claim 1 of the '528 patent, or will the complaint’s high-level allegations fail to stand up to factual scrutiny of the product's actual geometry?
  • A key question for the design patents will be one of ornamental impression: Will the "ordinary observer" find the overall visual design of the accused shaver to be "substantially the same" as the patented designs, or will the "some differences" acknowledged in the complaint be legally sufficient to distinguish the products' ornamental appearance?
  • A threshold legal question will be the sufficiency of the willfulness pleading: Do the complaint's conclusory allegations of willful infringement, absent any specific facts supporting pre-suit knowledge of the patents, meet the plausibility pleading requirements for such a claim?