DCT
1:23-cv-05875
Marut Enterprises LLC v. Foto Electric Supply Co Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Marut Enterprises LLC (California) and Brett Marut (Florida)
- Defendant: Foto Electric Supply Co., Inc. (New York)
- Plaintiff’s Counsel: Venable LLP
- Case Identification: 1:23-cv-05875, E.D.N.Y., 10/05/2023
- Venue Allegations: Venue is alleged to be proper in the Eastern District of New York because the Defendant is incorporated under New York law and maintains its principal place of business within the district.
- Core Dispute: Plaintiffs allege that Defendant’s electric back shavers infringe a patent related to razors with an articulated and extendable handle, and also infringe copyrights on the instruction manuals for Plaintiffs' competing products.
- Technical Context: The technology relates to personal grooming devices, specifically shavers designed with ergonomic features to allow users to shave hard-to-reach areas of their own body, such as the back.
- Key Procedural History: The complaint alleges that Plaintiffs provided Defendant with actual notice of the asserted patent via a letter to counsel on May 26, 2023.
Case Timeline
| Date | Event |
|---|---|
| 2005-09-21 | U.S. Patent No. 7,856,725 Priority Date |
| 2010-12-28 | U.S. Patent No. 7,856,725 Issued |
| 2023-03-23 | Alleged First Available Date for Accused Foto Shaver Products |
| 2023-05-26 | Plaintiffs Allegedly Sent Notice Letter of Infringement to Defendant |
| 2023-10-05 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,856,725 - RAZOR WITH ARTICULATED HANDLE EXTENSION
- Patent Identification: U.S. Patent No. 7,856,725 (“ʼ725 Patent”), issued December 28, 2010.
The Invention Explained
- Problem Addressed: The patent addresses the difficulty individuals face when attempting to shave body hair from their own back using a conventional, normal-sized razor (ʼ725 Patent, col. 1:20-22).
- The Patented Solution: The invention is a razor assembly featuring a multi-part, articulated handle. A first handle section is attached to the shaving head, and a second handle section is pivotably coupled to the first via a connector hinge. This second section is also telescopically extendable, allowing a user to adjust both the length and the angle of the razor to effectively reach different areas of the back (ʼ725 Patent, Abstract; col. 2:10-27). The handle can be folded into a compact configuration for storage or extended to a specific angle (e.g., 135 degrees) for use.
- Technical Importance: The design provides a single, compact grooming tool that offers the adjustability in length and angle needed to solve the common problem of self-shaving hard-to-reach body areas (Compl. ¶14-15).
Key Claims at a Glance
- The complaint asserts infringement of at least independent Claim 1 (Compl. ¶29).
- The essential elements of Claim 1 include:
- A razor assembly with a shaving head and a handle.
- The handle comprises a first handle section, a second handle section, and a connector.
- The second handle section is pivotably coupled to the first and is itself comprised of two slidable portions to adjust its length.
- A "detent assembly" with a button, plate, and elastic member locks the slidable portions at a fixed length.
- The handle pivots from a retracted, "side-by-side" position to an extended position limited to an angle of "no more than 135 degrees."
- The handle sections have recessed surfaces that accept the connector's side plates to create "two flush parallel surfaces" when folded.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused products are the "Foto Shavers," sold on Amazon.com under the brand names "Groom Essentials" and "CHARGEWORX" (Compl. ¶23). The complaint identifies both a battery-operated model (GEMS107) and a rechargeable model (GEMS108) (Compl. ¶24).
Functionality and Market Context
- The accused products are described as cordless back shavers for men, featuring an "Extendable & Foldable Arm for Hard-to-Reach Areas" (Compl. ¶23, p.5). The complaint alleges the products include an ergonomic, extendable handle that allows users to shave their own back (Compl. ¶23, p.5). The complaint identifies Defendant Foto Electric Supply Co. as the manufacturer and alleges the products have been sold since at least March 23, 2023 (Compl. ¶24-25).
IV. Analysis of Infringement Allegations
'725 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a shaving head | The Foto Shavers have a shaving head. An annotated image identifies this component. (Compl. ¶31, p.9). | ¶31 | col. 2:12 |
| a handle having: a connector having a first engageable surface, and two parallel side plates | The Foto Shavers have a handle with a connector (hinge) that includes an engageable surface and side plates. An annotated image highlights these elements. (Compl. ¶33, p.10). | ¶33 | col. 2:17-19, 37 |
| a first handle section connected to the shaving head | The Foto Shavers have a first handle section connected to the shaving head. (Compl. ¶34, p.11). | ¶34 | col. 2:13-14 |
| a second handle section pivotably coupled to the first handle section by the connector | The Foto Shavers have a second handle section that pivots relative to the first via the connector. (Compl. ¶35, p.12). | ¶35 | col. 2:17-20 |
| a first portion and a second portion, with the first portion being slidable with respect to the second portion to adjust the length of the second handle section | The second handle section is telescoping, with one portion sliding relative to another to adjust its length. (Compl. ¶37, p.13). | ¶37 | col. 2:21-24 |
| a detent assembly for locking the first portion at a fixed location along the second portion, the detent assembly including a button resting on a plate... | The Foto Shavers allegedly have a locking mechanism with a button that fixes the telescoping handle sections. An annotated photo points to the alleged "detent assembly." (Compl. ¶38, p.14). | ¶38 | col. 3:3-23 |
| wherein the second handle section is pivoted... to a first retracted position side-by-side the first handle section | The Foto Shavers' handle folds so that the first and second handle sections are side-by-side. An annotated photo illustrates this folded position. (Compl. ¶39, p.16). | ¶39 | col. 2:58-62 |
| and pivoted in a second direction to a second extended position... to an angle of no more than 135 degrees | The Foto Shavers' handle pivots to an extended position, allegedly limited to 135 degrees by the engagement of surfaces on the connector and second handle section. (Compl. ¶40, p.17). | ¶40 | col. 2:40-46 |
| wherein each of the first and second handle sections has... two recessed surfaces... to provide two flush parallel surfaces extending across the side plates to the outer surfaces... | The Foto Shavers allegedly have recessed surfaces at the pivot point that accept the connector plates to create flush surfaces when folded. (Compl. ¶41, p.18). | ¶41 | col. 4:35-42 |
- Identified Points of Contention:
- Technical Questions: The complaint's infringement theory relies on a direct structural correspondence between the accused product and the claim elements. A key technical question will be whether the accused product's locking mechanism for the extendable handle functions as the claimed "detent assembly," which requires a specific arrangement of a "button resting on a plate, with an elastic member coupled between and contacting the plate and the first portion." The complaint provides a photo of the button (Compl. ¶38, p.14) but does not detail the internal mechanism corresponding to the "plate" and "elastic member."
- Scope Questions: The interpretation of precise geometric and relational terms will be central. A dispute may arise over whether the accused device's handle, when folded, results in "two flush parallel surfaces" as required by the claim. The definition of "flush" could be a point of contention, raising the question of how much deviation from perfect co-planarity is permissible under the claim language.
V. Key Claim Terms for Construction
The Term: "detent assembly"
Context and Importance: This term describes the locking mechanism for the telescoping handle. The claim recites a multi-component structure: "a button resting on a plate, with an elastic member coupled between and contacting the plate and the first portion and biasing the button..." (ʼ725 Patent, col. 4:18-24). Practitioners may focus on this term because infringement will depend on whether the accused product’s internal locking mechanism contains each of these specific, interacting components as claimed.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states that the "elastic member" can be, for example, a "spring plate" (ʼ725 Patent, col. 3:7-8), which may support construing the term to cover functionally similar biasing elements beyond a literal spring plate.
- Evidence for a Narrower Interpretation: The specific embodiment detailed in Figures 2b and 2c and the accompanying text (ʼ725 Patent, col. 3:3-23) shows a distinct plate (50) and elastic member (52) as separate but coupled parts. This detailed description could be used to argue for a narrower construction that requires the presence of these distinct structural elements.
The Term: "flush parallel surfaces"
Context and Importance: This term describes the final state of the razor assembly when folded into its retracted position. It requires that the "recessed surfaces accept the side plates in a manner to provide two flush parallel surfaces extending across the side plates to the outer surfaces of the first and second handle sections" (ʼ725 Patent, col. 4:38-42). This term is critical because it defines a key geometric feature of the compact, folded state.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent’s objective is to "obtain a compact configuration that allows the razor 10 to be conveniently packed or stored" (ʼ725 Patent, col. 2:63-65). A party could argue that "flush" should be interpreted functionally in light of this objective, meaning "sufficiently flat for compact storage," rather than requiring strict geometric co-planarity.
- Evidence for a Narrower Interpretation: The term "flush" has a common engineering meaning of being perfectly level or aligned. The claim language is specific, requiring the flush surfaces to extend "across the side plates to the outer surfaces." An annotated photo in the complaint appears to show this alignment on the accused product (Compl. ¶41, p.18). The specificity of the language may support a narrower, more literal geometric interpretation.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant, "alone or by directing and controlling others, manufactured, used, marketed, distributed, imported, shipped, offered for sale, and/or sold" the accused products (Compl. ¶29). While this language could suggest a basis for indirect infringement, the complaint does not contain a separate count for inducement or contributory infringement and focuses its allegations on direct infringement.
- Willful Infringement: The complaint alleges willfulness based on two grounds. First, it alleges that the "striking similarity" between the Foto Shavers and the figures in the '725 Patent suggests that Defendant knowingly copied the invention when designing its product (Compl. ¶42-43). The complaint provides several side-by-side visual comparisons to support this allegation (Compl. ¶43-46). Second, it alleges post-suit willfulness, asserting that Defendant had actual knowledge of the '725 Patent as of a May 26, 2023 notice letter and continued to infringe despite an objectively high likelihood that its actions constituted infringement (Compl. ¶47-48).
- Copyright Infringement: The complaint includes two separate counts for copyright infringement (Counts 2 and 3), alleging that Defendant copied expressive images from Plaintiffs' instruction manuals for use in the manuals accompanying the accused Foto Shavers (Compl. ¶49-60). The complaint includes side-by-side comparisons of the allegedly copied images from the respective manuals (Compl. ¶52, 58).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this dispute may turn on the following key questions:
A core issue will be one of claim construction and technical proof: Can Plaintiffs prove that the internal mechanics of the accused shaver’s telescoping lock contain the specific "button resting on a plate, with an elastic member" structure required by the "detent assembly" limitation of Claim 1? The case may depend on whether the accused mechanism is merely functionally similar or is structurally equivalent to the claimed invention.
A second central question will be willfulness and copying: The complaint presents side-by-side comparisons between the patent’s figures and the accused product to argue for copying (Compl. ¶43). This, combined with the allegation of continued sales after receiving a notice letter, raises a significant question for the court regarding Defendant's state of mind and potential liability for enhanced damages.