DCT
2:19-cv-00536
KISS Nail Products Inc v. One Two Cosmetics LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Kiss Nail Products, Inc. (New York)
- Defendant: One Two Cosmetics, LLC (Florida)
- Plaintiff’s Counsel: Venable LLP
- Case Identification: 2:19-cv-00536, E.D.N.Y., 01/28/2019
- Venue Allegations: Plaintiff Kiss Nail Products, Inc. alleges venue is proper in the Eastern District of New York because a substantial part of the events giving rise to the claim occurred in the district, where Plaintiff is headquartered and where it received cease and desist letters, and because the alleged harm is suffered there.
- Core Dispute: In this Declaratory Judgment action, Plaintiff seeks a court declaration that its "Magnetic Strip Lash" products do not infringe Defendant’s patent directed to a non-adhesive false eyelash system.
- Technical Context: The technology concerns false eyelashes that attach to a wearer's natural lashes using magnetic force between two separate strips, eliminating the need for traditional adhesives.
- Key Procedural History: The action was precipitated by a cease and desist letter sent by Defendant One Two Cosmetics to Plaintiff Kiss Nail Products on December 21, 2018. The complaint alleges these infringement threats have resulted in the delisting of Plaintiff's products from online retailers.
Case Timeline
| Date | Event |
|---|---|
| 2015-01-19 | '506 Patent Priority Date |
| 2018-12-11 | '506 Patent Issue Date |
| 2018-12-21 | Defendant OTC sends cease and desist letter to Plaintiff Kiss |
| 2019-01-28 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 10,149,506, "Non-Adhesive False Eyelash System and Method," issued December 11, 2018.
The Invention Explained
- Problem Addressed: The patent's background section identifies numerous disadvantages with conventional, adhesive-based false eyelashes, including that they are often single-use, difficult to apply correctly, can cause skin irritation, leave residue, and may lose adhesion over time ('506 Patent, col. 1:47-65).
- The Patented Solution: The invention is a two-part false eyelash system comprising an upper and a lower eyelash assembly. Each assembly has one or more magnetic (or magnetically attractive) elements. To apply, the user places the upper assembly on top of their natural eyelashes and the lower assembly underneath. The magnetic attraction between the two assemblies causes them to clamp together, "sandwiching" and securing to the user's natural lashes without any adhesive touching the eyelid ('506 Patent, col. 4:56-65; Abstract). The patent describes this as providing a reusable and easy-to-apply alternative to prior art lashes ('506 Patent, col. 2:9-12).
- Technical Importance: The described approach seeks to solve long-standing usability and comfort issues in the cosmetics market by replacing chemical adhesives with magnetic force as the means of attachment ('506 Patent, col. 2:12-16).
Key Claims at a Glance
- The complaint seeks a declaration of non-infringement as to claims 1-5 and 7-10. Independent claims 1, 2, and 7 are asserted as being representative.
- Independent Claim 1 (System):
- A first and a second artificial eyelash assembly.
- Each assembly includes a substrate strip with a "central region located between the distal ends."
- "three rectangular plate magnets" attached at spaced locations along the "central region" of the first assembly's substrate strip.
- "three rectangular plate magnets" attached at corresponding locations along the "central region" of the second assembly's substrate strip.
- Independent Claim 2 (System):
- A first and a second artificial eyelash assembly.
- Each assembly includes a substrate strip with a "central region located between the distal ends."
- "a plurality of magnetic elements" attached at spaced locations along the "central region" of the first assembly's substrate strip.
- "a plurality of magnetic elements" attached at corresponding locations along the "central region" of the second assembly's substrate strip.
- The complaint does not explicitly reserve the right to assert dependent claims, as this is a declaratory judgment action brought by the accused infringer.
III. The Accused Instrumentality
Product Identification
- Plaintiff’s "Magnetic Strip Lash" products (Compl. ¶11).
Functionality and Market Context
- The accused products are described as consisting of two sets of artificial eyelashes (one for each eye), with each set having an upper and a lower lash strip (Compl. ¶11).
- The complaint states that depending on the specific model, each strip has either two or three magnets. The two-magnet models have one magnet "at one distal end of the strip" and a second "at the opposite distal end of the strip." The three-magnet models have these two end magnets plus an "additional third magnet attached in the center region of the strip" (Compl. ¶11).
- The complaint alleges the products have enjoyed "favorable reviews and acclaim from customers and commercial success" (Compl. ¶11). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
This is a declaratory judgment action where the Plaintiff (Kiss) alleges non-infringement. The table below summarizes Kiss's non-infringement arguments.
'506 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| three rectangular plate magnets attached at first spaced apart locations along the central region of the bottom surface of the substrate strip of the first artificial eyelash assembly | Plaintiff alleges its products do not have "three rectangular plate magnets . . . along the central region" of the eyelash strip. | ¶22 | col. 6:33-37 |
'506 Patent Infringement Allegations
| Claim Element (from Independent Claim 2) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a plurality of magnetic elements attached at first spaced apart locations along the central region of the bottom surface of the substrate strip of the first artificial eyelash assembly | Plaintiff alleges its products do not have "a plurality of magnetic elements . . . along the central region" of the eyelash strip. | ¶23 | col. 7:1-4 |
- Identified Points of Contention:
- Factual Question: The primary dispute appears to be factual. The complaint describes two-magnet product versions with magnets only at the "distal ends" and three-magnet versions with an additional magnet in the "center region" (Compl. ¶11). The blanket allegation of non-infringement raises a question of whether this applies to all models or if Kiss's argument is primarily focused on its two-magnet products.
- Scope Questions: The case may turn on the construction of "central region." Does the term, defined in the claims as "located between the distal ends" ('506 Patent, col. 6:31-32), encompass the entire length of the strip except for the absolute endpoints, or does it imply a more limited area around the geometric middle, thereby excluding the "distal ends" where Kiss places magnets?
V. Key Claim Terms for Construction
- The Term: "central region"
- Context and Importance: This term is critical to the dispute. Plaintiff's non-infringement argument for its two-magnet products appears to be that its magnets are located at the "distal ends" (Compl. ¶11), and therefore not "along the central region" as required by the asserted claims (Compl. ¶¶22, 23). The definition of this term could be dispositive for at least some of the accused products.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims themselves define the term as "a central region located between the distal ends" ('506 Patent, col. 6:31-32). Defendant may argue this language implies any location that is not the absolute distal tip of the substrate.
- Evidence for a Narrower Interpretation: The specification, when describing an embodiment in Figure 7, distinguishes between magnets at the distal ends and those located elsewhere. It describes "magnetic elements 26A and 26G located at the distal ends of the strip (14)" and separately describes "magnetic elements 26C, 26D and 26E located near the center of the strip (14)" ('506 Patent, col. 5:57-62). Plaintiff may use this language to argue that the patent itself treats "distal ends" and the "center" or "central region" as distinct, non-overlapping locations.
VI. Other Allegations
- The complaint does not contain traditional counts for indirect or willful infringement, as it is a declaratory judgment action filed by the accused infringer. Instead, the complaint alleges that Defendant has engaged in "objectively baseless and bad faith patent infringement threats" (Compl. ¶6). These allegations serve to establish the "actual controversy" required for jurisdiction under the Declaratory Judgment Act and may form the basis for Plaintiff's request for attorneys' fees (Compl. p. 6, ¶(c)).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this declaratory judgment action will likely depend on the answers to two central questions:
- A core issue will be one of definitional scope: Can the claim term "central region", which the patent distinguishes from the "distal ends" in its detailed description, be construed to exclude the locations of the magnets on Plaintiff's two-magnet eyelash models?
- A key evidentiary question will be one of factual mapping: For Plaintiff's three-magnet models, which the complaint admits have a magnet "in the center region" (Compl. ¶11), what is the basis for the blanket assertion of non-infringement of claims requiring "a plurality of magnetic elements . . . along the central region"? The analysis for these products may hinge on other limitations, such as the "rectangular plate" shape required by claim 1.