DCT
2:18-cv-05625
KISS Nail Products Inc v. Shenzhen Jinri Electrical Appliance Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Kiss Nail Products, Inc. (New York)
- Defendant: Shenzhen Jinri Electrical Appliance Co. Ltd. dba VAV and VIVID & VOGUE (People's Republic of China); John Doe 1 dba ROPALIA
- Plaintiff’s Counsel: Hunton Andrews Kurth, L.L.P.
- Case Identification: 2:18-cv-05625, E.D.N.Y., 10/09/2018
- Venue Allegations: Venue is asserted on the basis that Defendants are foreign entities engaged in infringing activities, including advertising, offering for sale, and selling products through interactive e-commerce platforms targeting consumers in the judicial district.
- Core Dispute: Plaintiff alleges that Defendants’ automatic hair curlers infringe a patent related to hair styling apparatuses featuring a rotating member that automatically gathers and winds hair around a heated barrel.
- Technical Context: The technology concerns automated hair styling tools that simplify the process of curling hair, a significant segment of the consumer beauty care market.
- Key Procedural History: Plaintiff alleges sending a notice letter to Defendant Jinri on July 6, 2018, advising of the patent and its alleged infringement. Plaintiff also alleges submitting a notice of IP Rights violation regarding Defendant Ropalia via Amazon.com on August 6, 2018. These pre-suit notifications are cited as the basis for willful infringement allegations.
Case Timeline
| Date | Event |
|---|---|
| 2013-11-08 | '148 Patent Priority Date |
| 2018-07-03 | '148 Patent Issued |
| 2018-07-06 | Plaintiff allegedly sent notice letter to Defendant Jinri |
| 2018-08-06 | Plaintiff allegedly sent IP violation notice to Ropalia |
| 2018-10-09 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,010,148, "Hair Styling Apparatuses and Related Methods" (Issued July 3, 2018)
The Invention Explained
- Problem Addressed: The patent's background describes challenges with conventional curling irons, which may require manual wrapping of hair or use clamping members that can create snags or tangles. It also notes that some styling devices can pose a burn risk to the user ('148 Patent, col. 1:30-55).
- The Patented Solution: The invention is a hair styling apparatus, such as a curling iron, that automates the process of wrapping hair ('148 Patent, col. 2:27-31). It features a stationary heated barrel and a distinct rotating member located at one end. This rotating member is configured with specific features, including a "tab," designed to catch, guide, and wind a user's hair around the heated barrel without the need for a traditional clamp ('148 Patent, Abstract; col. 5:46-54). The tab is spaced apart from the heated barrel, allowing hair to be gathered and wrapped as the member rotates ('148 Patent, col. 5:58-60).
- Technical Importance: This design aims to provide a more user-friendly and automated curling experience by mechanically gathering and wrapping hair, which may reduce tangling and simplify the styling process compared to manual methods ('148 Patent, col. 5:26-44).
Key Claims at a Glance
- The complaint asserts apparatus claims 1, 2, and 18, and method claim 11 (Compl. ¶¶ 32-34, 38).
- Independent Claim 1 (Apparatus) contains the following essential elements:
- An outer surface defining an outside contour of the hair styling apparatus.
- A heated barrel with a hair styling surface and a central axis.
- A heating element.
- A rotating member at an end of the hair styling surface, which rotates around the barrel's axis and has a hole through which the barrel extends.
- A "tab" that extends along a longitudinal axis and is "formed integrally" with the rotating member.
- The tab, in an "at-rest position," is "spaced apart from an entire length of the heated barrel without being held in place by a user."
- The rotating member forms at least a portion of the apparatus's outer surface.
- The complaint does not explicitly reserve the right to assert dependent claims, but infringement of dependent claim 2 is alleged (Compl. ¶33).
III. The Accused Instrumentality
- Product Identification: The accused products are the "VAV Automatic Hair Curler" sold by Defendant Jinri and the "Ropalia Curler" sold by Defendant John Doe 1 (Compl. ¶¶ 17, 22). The complaint alleges the Ropalia Curler is "substantially identical" to the VAV Curler, other than branding (Compl. ¶23).
- Functionality and Market Context: The complaint alleges the accused "VAV Curler" possesses a handle, a heated barrel, and a rotating member (Compl. ¶30). The complaint includes an annotated image of the VAV Curler, labeling these key components (Compl. p. 7). This image shows a "Rotating Member" and "Tabs Spaced Apart From Heated Barrel" (Compl. p. 7). The complaint states that this rotating member rotates around the central axis of the barrel and includes tabs that extend parallel to the barrel's axis and are spaced apart from the barrel's surface (Compl. ¶¶ 30-31). The products are allegedly sold in the U.S. through e-commerce platforms like Amazon.com (Compl. ¶¶ 17, 22).
IV. Analysis of Infringement Allegations
'148 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a heated barrel defining a hair styling surface and a central axis | The VAV Curler has a "heated barrel" that "defines a central axis along its length." | ¶30 | col. 3:11-14 |
| a rotating member disposed at an end of the hair styling surface and configured to rotate around the central axis of the heated barrel, the rotating member comprising... a hole through which the heated barrel extends | The VAV Curler has a "rotating member" with a "hole through which the heated barrel extends." The "rotating member rotates around the central axis of the barrel." | ¶30 | col. 4:5-8, 4:59 |
| a tab extending along a tab longitudinal axis... wherein the tab is formed integrally with the rotating member | The rotating member includes "tabs, with each tab extending along its respective longitudinal axis, substantially parallel to the central axis of the barrel." The complaint does not specify how the tabs are "formed integrally." | ¶31 | col. 5:46-54 |
| wherein, in an at-rest position, the tab is spaced apart from an entire length of the heated barrel without being held in place by a user | "Each tab is positioned on the rotating member such that it is spaced apart from the surface of the heated barrel." The complaint's annotated image explicitly labels "Tab Spaced Apart From Heated Barrel" (Compl. p. 7). | ¶31 | col. 5:58-60 |
| wherein the rotating member forms at least a portion of the outer surface of the hair styling apparatus | The VAV Curler "defines an outside contour formed, in part, by the rotating member..." | ¶30 | col. 16:17-19 |
- Identified Points of Contention:
- Scope Questions: A central question may be the proper construction of "tab." The patent describes this element as helping to "catch hair and direct and guide it" ('148 Patent, col. 5:51-53). The infringement analysis will depend on whether the accused product's structures perform this specific function in the claimed way.
- Technical Questions: The claim requires the tab to be "formed integrally" with the rotating member. The complaint does not provide evidence on the manufacturing process of the accused curlers. Whether the tab is molded as a single piece with the rotating member or is a separate component that has been attached will be a factual question for the court. The construction of "formed integrally" will be critical to this analysis.
V. Key Claim Terms for Construction
The Term: "tab"
- Context and Importance: This term defines the core novel structure that allegedly enables the automatic hair-gathering function. The infringement case hinges on whether the protrusions on the accused products meet the definition of a "tab" as claimed. Practitioners may focus on this term because its scope will likely determine the outcome of the infringement analysis.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification also refers to more general "retaining elements" which can include "hooks, recesses... protrusions (e.g., knobs, pins, bristles, bosses)" ('148 Patent, col. 4:56-62). A party could argue that "tab" should be interpreted broadly within this context.
- Evidence for a Narrower Interpretation: The patent consistently illustrates the "tab" (110) as a distinct, elongated structure that runs parallel to the barrel and is designed to "direct and guide" hair ('148 Patent, Fig. 1; col. 5:46-54). A party could argue the term is limited to this specific embodiment, distinguishing it from simple knobs or bristles.
The Term: "formed integrally"
- Context and Importance: This term relates to the physical construction and attachment of the "tab" to the "rotating member." Its meaning could be dispositive if the accused products are assembled from multiple components rather than molded as a single unit.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not appear to provide an explicit definition. A party could argue for a functional definition, suggesting that components permanently and rigidly joined to operate as one are "formed integrally."
- Evidence for a Narrower Interpretation: A party could argue that the plain and ordinary meaning implies a unitary construction (i.e., molded from a single piece of material). The patent states the tab is "formed integrally with the rotating member and has a first end and a second end, the first end of the tab being attached to and extending from the upper surface of the rotating member" ('148 Patent, col. 16:20-24), which could suggest a unitary structure originating from the rotating member's surface.
VI. Other Allegations
- Indirect Infringement: The complaint alleges active inducement of infringement of method claim 11 against both defendants (Compl. ¶¶ 39, 49). The basis for this allegation is the claim that Defendants provide "user instructions" with the accused curlers that direct customers to use the products in a manner that practices the patented method (Compl. ¶¶ 38, 48).
- Willful Infringement: Willfulness is alleged against both defendants based on pre-suit knowledge of the '148 Patent. For Defendant Jinri, knowledge is alleged as of July 2018, following receipt of a notice letter (Compl. ¶36). For Defendant John Doe 1 (Ropalia), knowledge is alleged as of August 9, 2018, following a notice of IP rights violation submitted via Amazon.com (Compl. ¶47).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: how will the court define the term "tab"? The case will likely turn on whether this term is limited to the specific elongated, guiding structure shown in the patent's figures or if it can be construed more broadly to cover other types of protrusions on the accused devices.
- A related question is one of structural and factual infringement: does the accused product's "tab" meet the claim limitation of being "formed integrally" with the rotating member? The answer will depend on both the court's construction of the term and on evidence concerning the manufacturing process of the VAV and Ropalia curlers.
- A final question will be one of functionality: does the accused product's rotating member and its associated "tabs" operate to "direct and guide" hair around the barrel in the manner described by the patent, or is there a material difference in the technical method of operation?