2:19-cv-03631
Blackbird Tech LLC v. KISS Nail Products Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Blackbird Tech LLC d/b/a Blackbird Technologies (Delaware)
- Defendant: KISS Nail Products, Inc. (New York)
- Plaintiff’s Counsel: Stamoulis & Weinblatt LLC
- Case Identification: 2:19-cv-03631, E.D.N.Y., 06/20/2019
- Venue Allegations: Venue is alleged to be proper because the Defendant is a New York corporation that resides, transacts business, and has allegedly committed acts of infringement in the Eastern District of New York.
- Core Dispute: Plaintiff alleges that Defendant’s professional makeup sponge product infringes a design patent for a face sponge.
- Technical Context: The technology is in the field of cosmetic applicators, a high-volume consumer product category where distinctive ornamental designs can be a key market differentiator.
- Key Procedural History: The complaint does not mention any prior litigation, inter partes review (IPR) proceedings, or licensing history related to the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2012-02-16 | ’358 Patent Priority Date (Filing Date) |
| 2012-08-28 | '358 Patent Issue Date |
| 2019-06-20 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D666,358 - "Face Sponge"
The asserted patent is U.S. Design Patent No. D666,358, issued August 28, 2012. (Compl. ¶7).
The Invention Explained
- Problem Addressed: As a design patent, the '358 patent does not articulate a technical problem. Instead, it protects a "unique ornamental design for a face sponge" (Compl. ¶9).
- The Patented Solution: The patent claims the specific ornamental appearance of a face sponge, characterized by a dual-ended body with a narrow, concave central "waist" section. One end tapers to a point, while the other is a broader, rounded base (’358 Patent, Figs. 1-4). The design includes a circular top view and a distinct concentric-circle bottom view (’358 Patent, col. 1:21-26; Figs. 5-6). The overall impression is one of a specific, symmetrical, hourglass-like shape applied to a cosmetic sponge.
- Technical Importance: The design provides a distinctive aesthetic for a consumer product, which may serve to distinguish it from other products in a competitive marketplace (Compl. ¶9).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is for "The ornamental design for a face sponge, as shown and described" (’358 Patent, col. 1:10-11).
- The protected design consists of the visual characteristics embodied in the patent’s figures, including:
- The overall profile shape featuring two distinct end portions connected by a central constricted waist.
- A pointed tip on one end and a larger, rounded base on the other.
- The specific proportions and curvatures shown in the front, side, and back views.
- The top and bottom planar views as depicted.
III. The Accused Instrumentality
Product Identification
The accused instrumentality is the "KISS Professional Makeup dual-tip sponge" (Compl. ¶11).
Functionality and Market Context
The complaint describes the accused product as a makeup sponge. The infringement allegation is based on the product’s appearance, which Plaintiff alleges "embodies the design covered by the '358 patent" (Compl. ¶13). The complaint presents a side-by-side visual comparison, juxtaposing the patent’s line drawings with a photograph of the accused product to support its allegation of misappropriation (Compl. ¶11, pp. 4-5). This comparison shows the accused purple sponge next to Figures 1 through 4 of the '358 patent, highlighting the alleged similarities in their overall shape (Compl. p. 4).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is whether an "ordinary observer," familiar with the prior art, would be deceived into believing the accused design is the same as the patented design. The complaint’s core allegation is that the accused sponge is visually indistinguishable from the patented design.
The complaint provides a photographic comparison of the accused product against the top-down views from the patent, suggesting a similarity in their planar profiles (Compl. p. 5).
| Claim Element (from the single claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a face sponge, as shown... | The KISS Professional Makeup dual-tip sponge allegedly embodies the overall visual appearance of the patented design. The complaint presents a side-by-side visual comparison to support this. | ¶11 | col. 1:10-11 |
| ...in a front view... | The accused sponge is alleged to have the same dual-ended, waisted profile as shown in the patent's front view. | ¶11, p. 4 | col. 1:11-13 |
| ...in a side view... | The accused sponge is alleged to be symmetrical and exhibit the same profile from the side as shown in the patent's side view. | ¶11, p. 4 | col. 1:14-16 |
| ...in a top view... | The accused sponge's pointed end is alleged to correspond to the circular top view shown in the patent. | ¶11, p. 5 | col. 1:21-23 |
| ...and in a bottom view. | The accused sponge's rounded base is alleged to correspond to the concentric-circle bottom view shown in the patent. | ¶11, p. 5 | col. 1:24-26 |
Identified Points of Contention
- Scope Questions: The central question will be one of visual similarity from the perspective of an ordinary observer. The dispute may focus on whether any subtle differences in proportion, curvature, or surface texture between the accused product and the patent's line drawings are significant enough to avoid deception.
- Technical Questions: A key question, although not strictly technical, will be the impact of the prior art on the analysis. The scope of protection for the '358 patent's design will be informed by how similar or different it is from other face sponge designs that existed before it. The complaint does not provide this context, which will likely be a central point of dispute developed during litigation.
V. Key Claim Terms for Construction
In design patent litigation, the design itself is the claim, and formal construction of text is rare. However, the scope of the article of manufacture can be relevant.
The Term: "face sponge"
This term defines the article of manufacture to which the ornamental design is applied.
Context and Importance
Its interpretation is important for defining the relevant field of prior art that an ordinary observer is presumed to be familiar with. Practitioners may focus on this term to argue for a broader or narrower universe of prior art, which in turn would affect the perceived novelty of the patented design and the likelihood of confusion with the accused product.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The patent provides no restrictive definitions, referring to the article simply by its title, "Face Sponge" (’358 Patent, (54)), and in the claim (’358 Patent, col. 1:11). This lack of specific limitation could support an interpretation covering a range of cosmetic applicators.
- Evidence for a Narrower Interpretation: The patent consistently uses the term "face sponge" and does not suggest applicability to other types of articles. The detailed figures themselves, showing a specific type of object, could be argued to inherently limit the scope to the particular type of cosmetic applicator depicted.
VI. Other Allegations
Indirect Infringement
The complaint makes no allegations of induced or contributory infringement. The sole count is for direct infringement under 35 U.S.C. § 271(a) (Compl. ¶13).
Willful Infringement
The complaint does not explicitly allege willful infringement or plead facts related to pre- or post-suit knowledge of the patent. However, it does request that the case be found "exceptional" under 35 U.S.C. § 285 to permit an award of attorneys' fees (Compl. p. 7, ¶E).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this dispute will likely depend on the court's and/or jury's determination of the following questions:
- A core issue will be one of visual comparison: From the perspective of an ordinary observer of cosmetic products, is the accused KISS sponge design substantially the same as the design claimed in the '358 patent, such that the observer would be deceived into purchasing the accused product believing it to be the patented one?
- The case will also turn on the scope of the prior art: How novel was the '358 patent's design at the time of invention? The answer to this question, which will require evidence beyond the complaint, will determine the breadth of protection afforded to the patent and is critical context for the ordinary observer analysis.
- A final question may be the significance of any dissimilarities: Will the defendant be able to identify and emphasize differences in proportions, curves, or texture between its physical product and the patent's line drawings that are sufficient to distinguish the two designs in the mind of an ordinary observer?