1:22-cv-02749
Tolife Tech Pty Ltd v. Individuals Corps Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Tolife Technologies Pty Ltd (Australia) and Moshe Maor
- Defendant: The Individuals, Corporations, Limited Liability Companies, Partnerships, and Unincorporated Associations Identified on Schedule A to the Complaint
- Plaintiff’s Counsel: Cole Schotz P.C.; Thoits Law
- Case Identification: 1:22-cv-02749, S.D.N.Y., 04/04/2022
- Venue Allegations: Venue is alleged to be proper because Defendants conduct substantial business in the district, have committed acts of patent infringement in the district, and have targeted New York residents for sales through interactive e-commerce stores offering shipping to the district.
- Core Dispute: Plaintiffs allege that numerous e-commerce store operators infringe a U.S. design patent covering an ornamental design for a lice comb.
- Technical Context: The dispute centers on the ornamental design of an electrical device that combines combing and vacuuming for chemical-free head lice and egg removal.
- Key Procedural History: The complaint notes that Plaintiffs' products embodying the design have received multiple design awards from Good Design Australia. The action is brought against a schedule of unidentified online sellers, a common procedure in anti-counterfeiting litigation targeting diffuse e-commerce networks.
Case Timeline
| Date | Event |
|---|---|
| 2014-11-01 | Plaintiff ToLife launched its V-COMB Products |
| 2019-09-03 | U.S. Patent No. D858,877 S issued |
| 2022-04-04 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. D858,877 S, "Lice Comb," issued September 3, 2019 (’877 Patent)
The Invention Explained
- Problem Addressed: The complaint asserts a market for "chemical free head lice treatments" and describes a need for a device that is "gentle and pain-free" (Compl. ¶13). As a design patent, the ’877 Patent itself does not describe a technical problem but protects the specific aesthetic and ornamental appearance of the lice comb shown in its figures.
- The Patented Solution: The patent claims "[t]he ornamental design for a lice comb, as shown" (D’877 Patent, Claim). The design consists of the visual characteristics embodied in the patent’s seven figures, which depict a handheld device with a distinctive overall shape. Key visual features include a flared body that tapers toward the center, a translucent comb-head assembly at one end, and a rounded power/filter section at the other (D’877 Patent, Figs. 1-7).
- Technical Importance: The complaint alleges that the "innovative design" of the V-COMB products has become "enormously popular" and is "broadly recognized by consumers" (Compl. ¶18). It further cites design awards as recognition of the design's "superiority" (Compl. ¶16).
Key Claims at a Glance
- Design patents have a single claim, which is for the ornamental design as depicted in the patent's drawings.
- The protected design is defined by the overall visual impression created by the combination of its constituent features, including:
- A main body with a tapering, concave profile.
- A wider head section containing the comb teeth.
- A wider rear section, appearing to house a motor or filter.
- The specific arrangement of surface details, contours, and proportions as shown in Figures 1-7.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are "unauthorized and unlicensed products" that allegedly infringe the ’877 Patent, sold by Defendants through various "Defendant Internet Stores" on platforms such as Amazon and eBay (Compl. ¶1, ¶3). The complaint provides images of an "Exemplary Infringing Product" (Compl. p. 13).
Functionality and Market Context
The complaint alleges that Defendants are "e-commerce store operators" who reside mainly in foreign jurisdictions and operate through aliases to conceal their identities (Compl. ¶1, ¶19, ¶28). The accused products are marketed on storefronts designed to "appear to unknowing consumers to be authorized online retailers" (Compl. ¶24). The complaint includes an image of an accused product, labeled "Remove lice device," being used to treat human hair and, in another image, next to a dog, suggesting its marketed use (Compl. p. 13).
IV. Analysis of Infringement Allegations
The complaint alleges infringement of the single claim of the ’877 Patent. The legal test for design patent infringement is whether an "ordinary observer," giving such attention as a purchaser usually gives, would be deceived into purchasing the accused product believing it to be the patented one. The complaint supports this allegation with a side-by-side visual comparison.
’877 Patent Infringement Allegations
| Claim Element (Visual Features of the Patented Design) | Alleged Infringing Functionality (as shown in Complaint's Visuals) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for a lice comb, as shown in the patent figures. | The complaint presents images of an "Exemplary Infringing Product" that Plaintiffs allege is a "reproduction, copy or colorable imitation of the design claimed." | ¶41; p. 13 | Figs. 1-7 |
| A handheld body with a distinctive flared shape, tapering at the middle and widening at both ends. | The accused product depicts a handheld body with a visually similar flared shape, narrowest at the grip and wider at the comb and rear sections. | p. 12-13 | Fig. 1 |
| A comb head assembly at the operative end of the device. | The accused product features a comb head assembly at its operative end that appears to have a similar shape and configuration. | p. 12-13 | Fig. 1 |
| A rounded rear section, opposite the comb head. | The accused product has a rounded rear section with visible vents and a power cord, visually corresponding to the rear section of the patented design. | p. 13 | Fig. 1 |
The complaint provides a visual comparison between figures from the patent and an image of an accused product (Compl. ¶42). This image juxtaposes the patent's perspective and top-down views with photographs of an accused product sold online, intended to show their substantial similarity (Compl. p. 12-13).
Identified Points of Contention
- Scope Questions: A central question will be whether the overall visual impression of the accused products is substantially the same as that of the patented design. The court will need to assess if differences between the designs are minor enough that an ordinary observer would be confused.
- Technical Questions: While a functional analysis is not primary, the court may consider whether any visual similarities are dictated purely by function, which would place them outside the scope of design patent protection. The complaint does not provide sufficient detail for analysis of this specific element.
V. Key Claim Terms for Construction
In a design patent case, claim construction does not involve defining textual terms as it would in a utility patent case. The "claim" is the visual design itself as shown in the drawings. The primary legal analysis focuses on comparing the patented design to the accused product from the perspective of an ordinary observer. The scope of the claim is defined by the drawings, and the central issue is a factual comparison rather than a construction of disputed terms.
VI. Other Allegations
- Indirect Infringement: The complaint makes a conclusory allegation of direct "and/or" indirect infringement (Compl. ¶41) and includes "aiding, abetting, [or] contributing to" infringement in its prayer for relief (Compl. p. 14). However, the body of the complaint focuses on direct infringement by the Defendants' own making, using, and selling activities and does not plead specific facts to support a separate theory of inducement or contributory infringement.
- Willful Infringement: Willfulness is alleged based on Defendants having acted "knowingly and intentionally, or with reckless disregard or willful blindness to Plaintiffs' rights" (Compl. ¶39, ¶43). The complaint asserts Defendants had knowledge of the patent and the popularity of Plaintiffs' V-COMB products and proceeded to infringe in bad faith to trade on Plaintiffs' goodwill (Compl. ¶38, ¶39).
VII. Analyst’s Conclusion: Key Questions for the Case
A core issue will be one of visual similarity: Under the "ordinary observer" test, is the overall ornamental design of the accused lice combs sold by Defendants substantially the same as the design claimed in the ’877 Patent, such that a typical purchaser would be deceived? The case will likely depend on a direct visual comparison between the patent figures and the accused products.
A significant procedural question will be one of enforcement and liability: Given that the Defendants are identified as a collective of online sellers allegedly operating under fictitious names, a key challenge for the Plaintiffs will be effectuating service, identifying the responsible entities behind the e-commerce stores, and establishing a sufficient link between each named Defendant and the specific infringing acts alleged.