JBS Hair Inc v. SLI Production Iw Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: JBS Hair, Inc. (Georgia)
  • Defendant: SLI Production IW Corp. (New Jersey)
  • Plaintiff’s Counsel: KENT & RISLEY LLC
• Case Identification: 1:21-cv-01861, N.D. Ga., 07/26/2021
• Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains a regular and established physical place of business in the district. The complaint dedicates significant attention to an alter ego theory, attempting to link the New Jersey-based Defendant to several Georgia-based entities and warehouses to satisfy venue requirements.
• Core Dispute: Plaintiff alleges that Defendant’s synthetic braiding hair products infringe patents related to methods of bundling hair strands of varying lengths to create a more natural, tapered appearance.
• Technical Context: The technology is in the field of hair accessories, specifically aiming to improve upon conventional synthetic braiding hair by providing a pre-tapered product that saves time for hair stylists and offers a more natural aesthetic.
• Key Procedural History: This First Amended Complaint follows an original complaint. Plaintiff alleges it provided Defendant with pre-suit written notice of infringement for both asserted patents. The complaint also references concurrently filed lawsuits against related entities. The asserted patents, U.S. 10,945,478 and 10,980,301, share a common parent application, now U.S. Patent 10,786,026. U.S. Patent 10,980,301 is subject to a terminal disclaimer.

Case Timeline

Date	Event
2016-12-15	Earliest Priority Date for ’478 and ’301 Patents
2021-03-16	U.S. Patent No. 10,945,478 Issues
2021-04-20	U.S. Patent No. 10,980,301 Issues
2021-07-26	First Amended Complaint for Patent Infringement Filed

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

U.S. Patent No. 10,945,478 - “Packaged Synthetic Braiding Hair,” issued March 16, 2021 (’478 Patent)

The Invention Explained

• Problem Addressed: The patent describes a problem with prior art synthetic braiding hair, where all strands are of a single length and bundled at their midpoint. When folded for use, this creates a "substantially flat" bottom edge that appears unnatural and requires stylists to perform a tedious and time-consuming "teasing" process to create a tapered look (ʼ478 Patent, col. 3:11-25).
• The Patented Solution: The invention addresses this by creating a hair accessory from multiple bundles of hair strands that are either of different lengths or are bundled with their centers offset by a predefined distance. When this combined group of strands is folded around a central point (a "waist"), the differing lengths of the strands' ends create a naturally tapered, rounded, or pointed shape, described as having a "substantially cardioid shaped perimeter" (ʼ478 Patent, Abstract; col. 4:1-20). This pre-tapered construction obviates the need for manual teasing.
• Technical Importance: The invention aims to provide a ready-to-use product that saves significant time and effort for hair stylists while providing a more natural and aesthetically pleasing appearance for the end-user (ʼ478 Patent, col. 4:21-25).

Key Claims at a Glance

• The complaint asserts independent claim 17 and dependent claims 18-20 (Compl. ¶152).
• Independent Claim 17 requires:
  • A hair accessory comprising bundled synthetic braiding hair.
  • The bundled hair comprises a "first bundle" of synthetic hair strands with a "first length" and a "second bundle" with a "second length" that is shorter.
  • The bundled hair is "folded about a waist" to define a perimeter with specific characteristics (a first end at the waist, a middle, and a distal second end).
  • The perimeter's width "narrows" as it extends from the middle to the second end.

U.S. Patent No. 10,980,301 - “Packaged, Bundled Synthetic Braiding Hair Having Bundles of Differing Lengths,” issued April 20, 2021 (’301 Patent)

The Invention Explained

• Problem Addressed: The patent addresses the same issue as the ’478 Patent: the unnatural, "substantially flat" base of conventional braiding hair products that results from bundling same-length strands, which necessitates manual teasing by stylists (ʼ301 Patent, col.1:43-col. 2:9).
• The Patented Solution: The invention, as described in the specification and illustrated in the figures, involves combining a plurality of bundles of synthetic hair, where each bundle has strands of a different length. This composite bundle is then folded, creating a final product with a naturally tapered appearance that eliminates the need for manual adjustment (ʼ301 Patent, Abstract; col. 3:9-40; Fig. 1).
• Technical Importance: This solution provides a commercially efficient way to deliver a hair product that is more aesthetically natural and saves professional stylists preparation time (ʼ301 Patent, col. 3:36-40).

Key Claims at a Glance

• The complaint asserts independent claim 1 and dependent claims 4-9 and 11 (Compl. ¶160).
• Independent Claim 1 requires:
  • A hair accessory comprising bundled synthetic braiding hair.
  • The bundled hair comprises a "first bundle" of synthetic hair strands with a "first length" and a "second bundle" with a "second length" that is shorter.
  • The bundled hair is "folded about a waist" to define a perimeter with a first end at the waist, a middle, and a distal second end.
  • The perimeter's width "narrows" as it extends from the middle to the second end.

III. The Accused Instrumentality

Product Identification

• The complaint identifies the accused products as "Magic Fingers by SLI Goldntree It's a Wig and similar products" (Compl. ¶¶152, 160).

Functionality and Market Context

• The complaint alleges these are packaged synthetic braiding hair products that Defendant makes, uses, sells, and imports (Compl. ¶¶151, 159). For the specific technical details of infringement, the complaint incorporates by reference preliminary claim charts (Exhibits C and D) which are not attached to the provided court filing (Compl. ¶¶152, 160). The complaint includes a screenshot from Google Maps showing the storefront for "It's a Wig," linking the accused product line to Defendant's business name (Compl. p. 15). The complaint also presents an aerial photograph purporting to show the proximity of Defendant's "It's A Wig" location to an alleged affiliate, "Hair Zone," to support its alter ego theory of venue (Compl. p. 16). The allegations regarding Defendant's use of large "Georgia Warehouses" for fulfillment suggest significant commercial activity (Compl. ¶¶10, 77).

IV. Analysis of Infringement Allegations

The complaint references claim-chart exhibits that are not provided. The infringement theory is therefore summarized from the complaint's narrative allegations.

The complaint alleges that Defendant’s "Magic Fingers by SLI Goldntree It's a Wig" products directly infringe the asserted claims of the ’478 and ’301 patents (Compl. ¶¶152, 160). The core of the infringement theory, inferred from the patent claims, is that these products are constructed from multiple bundles of synthetic hair of differing lengths, which are then folded to create a hair piece with a naturally tapered perimeter. The complaint states that the specific manner in which the accused products meet the claim limitations is detailed in preliminary claim charts that were incorporated by reference but are not attached to the filed complaint (Compl. ¶¶152, 160).

• Identified Points of Contention:
  • Structural Questions: A likely point of dispute will be whether the accused products are constructed from multiple, distinct "bundles" of hair that are later combined, as the claims require. The defense may argue that its products are manufactured using a different process, such as creating length variation within a single, integrated bundle, that does not meet the "first bundle" and "second bundle" limitations.
  • Evidentiary Questions: The central evidentiary question for the court will be what proof Plaintiff offers to show that the accused products meet every limitation of the asserted claims. Without the claim charts, it raises the question of how Plaintiff intends to demonstrate, for example, the existence of separate bundles with specific, differing lengths within the final commercial product.

V. Key Claim Terms for Construction

• The Term: "a first bundle of synthetic hair strands" / "a second bundle of synthetic hair strands"

• Context and Importance: The claims of both patents require the presence of at least two distinct "bundles" with different lengths that are combined. The outcome of the infringement analysis may depend heavily on whether this term is construed to mean that the bundles must exist as separate, physical articles before being combined, or if it can also cover conceptual groupings within a product made via an integrated process.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification's general description that different bundles "are assembled together to form a braiding hair assembly" could be argued to support a reading where "bundles" are simply constituent parts of a final whole, without requiring a specific manufacturing sequence involving discrete intermediate components (ʼ478 Patent, col. 5:36-39).
  • Evidence for a Narrower Interpretation: Patent figures and method claims may support a narrower view. For instance, Figure 1 in both patents depicts four physically separate and distinct bundles (101, 102, 103, 104) as inputs to the process (ʼ478 Patent, Fig. 1). Furthermore, the described method includes discrete steps of "obtaining a first bundle" and "obtaining a second bundle" before "bundling" them together, which suggests they must have a separate existence prior to combination (ʼ478 Patent, Fig. 11, steps 1101, 1102, 1105).

• The Term: "folded about a waist"

• Context and Importance: This limitation is critical as it describes the action that creates the final claimed shape of the hair accessory. The definition of "waist" will be central to determining infringement. Practitioners may focus on this term because its construction will define the region and manner of the fold.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification suggests the "waist" is the location where a "binder" is coupled to the bundled hair (ʼ478 Patent, col. 5:58-60). This functional definition could support a broader interpretation covering any central region of the bundle where a fastener is or could be applied.
  • Evidence for a Narrower Interpretation: In one embodiment, the specification notes that the "waist" can be "defined at a section of uneven overlap resulting from the hackling process" (ʼ478 Patent, col. 8:28-31). A defendant could cite this language to argue for a more limited definition tied to a specific manufacturing feature or a non-central location.

VI. Other Allegations

• Indirect Infringement: The complaint focuses on allegations of direct infringement by Defendant for its own acts of making, using, selling, and importing the accused products. It does not appear to advance a separate theory of indirect infringement.
• Willful Infringement: The complaint alleges willful infringement for both patents. The basis for this allegation is that Plaintiff provided Defendant with specific written notice of its infringement prior to filing the lawsuit, and that Defendant continued its infringing activities despite having actual knowledge of the patents (Compl. ¶¶155-156, 163-164).

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

• A threshold issue, to which the complaint devotes considerable effort, will be one of jurisdiction and venue: can Plaintiff’s extensive alter ego allegations successfully pierce the corporate veil to establish that the New Jersey-based Defendant maintains a "regular and established place of business" in the Northern District of Georgia through its alleged affiliates, or will the defense defeat venue by showing the corporate structures are distinct?
• A central merits question will be one of claim scope: how will the court construe the term "bundle"? The case may turn on whether the claims require the physical combination of two or more discrete, pre-existing bundles of hair, or if the term is broad enough to read on a product made through a single, integrated process that creates length variation without combining distinct intermediate articles.
• A key evidentiary challenge will be one of proof of infringement: in the absence of the preliminary claim charts, the primary factual question will be what evidence Plaintiff can marshal through discovery and reverse engineering to prove that the "Magic Fingers" products are actually constructed in a way that meets every structural limitation of the asserted claims.