DCT
2:23-cv-02672
Voesh Corp v. Codi N Codi Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Voesh Corporation (New York)
- Defendant: Codi N Codi, Inc. (New York)
- Plaintiff’s Counsel: Tutunjian & Bitetto, P.C.
- Case Identification: 2:23-cv-02672, E.D.N.Y., 04/10/2023
- Venue Allegations: Venue is asserted based on Defendant's principal place of business being located within the district and the claims allegedly arising there.
- Core Dispute: Plaintiff alleges that Defendant’s multi-step pedicure kits infringe a patent related to methods for providing a predetermined beauty treatment using sequentially organized, single-use product packets.
- Technical Context: The technology involves packaging for multi-step cosmetic treatments, designed to improve upon bulk containers by offering pre-measured, sanitary, single-use doses that standardize application and simplify inventory for service providers like spas and salons.
- Key Procedural History: The patent-in-suit is a continuation of earlier applications, claiming priority back to a 2015 provisional application. The complaint does not mention any prior litigation or post-grant proceedings involving the patent.
Case Timeline
| Date | Event |
|---|---|
| 2015-04-15 | '058 Patent Priority Date (Provisional Application) |
| 2022-10-25 | '058 Patent Issue Date |
| 2022-10-25 | Alleged Infringement Begins |
| 2023-04-10 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,478,058 - "METHOD FOR PROVIDING A PREDETERMINED BEAUTY TREATMENT"
- Issued: October 25, 2022.
The Invention Explained
- Problem Addressed: The patent's background section describes issues with using bulk or multi-use packaging for skin care products in professional settings like spas. These problems include potential for contamination from repeated access, reduced shelf-life and aroma, inconsistent amounts of product being used per customer, and difficulties in inventory tracking (’058 Patent, col. 1:31-63).
- The Patented Solution: The invention is a system and method that provides a complete, multi-step beauty treatment (e.g., a pedicure) in a single kit. This kit contains a series of individually sealed, single-serve packets, each holding a pre-measured quantity of a specific product for one step of the treatment (’058 Patent, col. 2:7-20). The packets are labeled to indicate their sequence and are housed together in an outer package, creating a standardized, hygienic, and easy-to-inventory solution for service providers (’058 Patent, col. 5:37-44).
- Technical Importance: This packaging method aimed to standardize professional beauty services, ensuring each customer receives a consistent and sanitary treatment, while also providing business efficiencies for the service provider (’058 Patent, col. 2:50-57).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 6.
- Independent Claim 1 recites a method with the following essential elements:
- Providing at least two separate, sequential packets of products.
- Each packet contains a specific, predetermined quantity of a product for a single, discrete step.
- Each packet is labeled with indicia of its corresponding sequential step.
- Providing an outer packaging configured to receive and fit a predetermined number of the separate packets.
- The outer packaging is labeled with indicia of the overall predetermined beauty treatment.
- Independent Claim 6 recites a similar method but adds the element of "selecting at least one common characteristic for each of the identified sequential steps" (e.g., a common fragrance).
- The complaint also asserts dependent claims 2-3, 5, 7-9, and 11 and reserves the right to assert others (Compl. ¶¶18, 24).
III. The Accused Instrumentality
Product Identification
- The "Codi 4 In 1 Pedicure Kit" and "Codi 3 In 1 Pedicure Kit" (Compl. ¶¶15, 16).
Functionality and Market Context
- The accused products are kits sold for performing pedicure treatments (Compl. ¶¶15-16). The "4 In 1" kit, for example, contains four individual packets, each for a distinct step of a pedicure: a "Salt Soak," "Sugar Scrub," "Cream Masque," and "Massage Lotion" (Compl. ¶21). The complaint includes an image showing these four packets arranged sequentially, each with a number (1-4) and a description of the step. An image of the outer packaging shows that these steps are part of a unified "Therapeutic Lavender Pedicure Collection" (Compl. ¶20). The complaint alleges these kits are sold through Defendant's website and that their sale infringes the ’058 patent (Compl. ¶13).
IV. Analysis of Infringement Allegations
'058 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for implementing and providing a predetermined beauty treatment comprising: | The sale of pedicure kits designed for a sequential, multi-step treatment (e.g., the "Codi 4 In 1 Pedicure Kit"). | ¶¶15, 27 | col. 7:26-35 |
| providing at least two separate packets of products to be used sequentially in the providing of the predetermined beauty treatment... | Defendant's kits provide three or four separate packets, such as "Salt Soak," "Sugar Scrub," "Cream Masque," and "Massage Lotion." An image of the individual packets is provided. | ¶¶15, 16, 21 | col. 2:12-14 |
| ...each of the provided separate packets including a specific, predetermined quantity of one of the products for performance of a single discrete sequential step of the predetermined beauty treatment... | Each packet contains a product for a single-use application in a specific pedicure step. | ¶21 | col. 5:63-65 |
| ...and being labeled with indicia representative of the sequential step to which each of the packets correspond in the predetermined beauty treatment... | The packets are labeled with both the name of the step (e.g., "Sugar Scrub") and a number (1, 2, 3, or 4). An image of the accused product's labeled packets is provided as visual evidence. | ¶21 | col. 3:29-31 |
| and providing an outer packaging configured to receive and fit a predetermined number of said separate packets... | Defendant's kits are sold in an outer box that contains the individual packets. An image of the outer packaging is provided. | ¶20 | col. 5:37-41 |
| ...the outer packaging being labeled with indicia representative of the predetermined beauty treatment. | The outer packaging is labeled with the name of the complete treatment, "Therapeutic Lavender Pedicure Collection," and lists the included steps. | ¶20 | col. 5:61-65 |
Identified Points of Contention
- Scope Questions: The patent claims a "method." The complaint alleges infringement by Defendant's acts of making, using, and selling the kits (Compl. ¶27). A potential issue for litigation is whether Plaintiff can adequately prove that Defendant's customers perform the claimed method steps and that Defendant's sale of the kits constitutes inducement of that infringement.
- Technical Questions: Claim 6, which is asserted, requires an outer packaging "sized to only fit the provided separate packets" (’058 Patent, col. 11:11-15). The complaint does not provide evidence regarding the precise fit of the inner packets within the outer packaging. The litigation may explore whether the accused kit's packaging is "sized to only fit" the packets or if it is a more generic box with excess space, which could be a basis for a non-infringement argument as to this limitation.
V. Key Claim Terms for Construction
The Term: "a method for implementing and providing"
- Context and Importance: These are the opening words of the independent claims, defining them as method claims rather than product claims. Practitioners may focus on this term because the complaint's allegations focus heavily on the accused product (the kit itself), but infringement will ultimately depend on the performance of the claimed actions. The defendant will likely argue that as a seller, it does not "implement" or "provide" the treatment itself.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent title and the body of claim 1 use the dual phrasing "implementing and providing," which a plaintiff might argue encompasses the entire commercial chain, including the act of creating and selling a kit specifically designed for the end-user to perform the method.
- Evidence for a Narrower Interpretation: The detailed description focuses on the use of the kit by a "user or technician" (’058 Patent, col. 5:48) or a "service provider" (col. 7:1-3), suggesting the "method" is the act of performing the beauty treatment, not the act of manufacturing or selling the kit for that treatment.
The Term: "indicia representative of the sequential step"
- Context and Importance: The clarity and nature of the step-by-step instructions are central to the invention's goal of standardization. The definition of "indicia" will determine what forms of labeling meet this limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification refers generally to "labeling each of the single-serve sachets with an associate step" (’058 Patent, col. 3:29-31), which could encompass text, numbers, colors, or graphics. The complaint's visual evidence shows the accused product uses both text ("Scrub") and numbers ("2"), which would appear to fall under a broad definition.
- Evidence for a Narrower Interpretation: A defendant could argue that "indicia" requires more than just a functional name and must explicitly denote a sequence (e.g., through numbering). However, given the accused product appears to include numbers, this argument may have limited applicability here unless other accused products do not.
VI. Other Allegations
Indirect Infringement
- The complaint does not contain a separate count for indirect infringement. However, the asserted claims are method claims, and the factual allegations concern the sale of a product. It is therefore implicit that the ultimate theory of liability against the seller would be for induced infringement, based on the allegation that the kits are designed and sold for customers to perform the patented method.
Willful Infringement
- The complaint alleges a "conscious, systematic, and willful pattern of patent infringement" (Compl. ¶2) and that Defendant "chose to copy Plaintiff's patented products" (Compl. ¶14). The complaint also alleges that infringing sales began "since at least October 25, 2022," the date the patent issued, which may form the basis for post-suit willfulness allegations (Compl. ¶13). Plaintiff seeks treble damages for the alleged willful infringement (Compl., Prayer for Relief ¶4).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of liability for a method claim: As the patent claims a "method for...providing a...treatment," and the Defendant is primarily a seller of a product, the case will likely turn on whether the Plaintiff can successfully prove induced infringement. This will require evidence that Defendant’s customers directly infringe the method claims by using the kits as instructed, and that Defendant intended this outcome.
- A key evidentiary question may relate to claim scope and fit: While the infringement allegations for claim 1 appear straightforward based on the complaint's visual evidence, the asserted dependent claims introduce narrower limitations. Specifically, whether the accused product's outer packaging is "sized to only fit" the inner packets, as required by the family of claims dependent on claim 6, may become a factual point of contention not resolved by the initial complaint.