DCT
7:21-cv-09308
Combe Inc v. Inova Cosmetics
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Combe Incorporated (Delaware)
- Defendant: Inova Urun Gelistirme ve Kozmetik Uretim Ltd. Sti. d/b/a Inova Cosmetics (Turkey)
- Plaintiff’s Counsel: Venable LLP
- Case Identification: 7:21-cv-09308, S.D.N.Y., 12/16/2021
- Venue Allegations: Venue is alleged to be proper because the defendant is a foreign corporation not resident in the United States, and as such, may be sued in any judicial district where it is subject to the court's personal jurisdiction. The complaint alleges the defendant has committed infringing acts in the district.
- Core Dispute: Plaintiff alleges that Defendant’s White to Black Grey Coverage Shampoo infringes three patents related to compositions and methods for gradually coloring hair.
- Technical Context: The technology concerns air-oxidation hair coloring products, which offer a more convenient alternative to traditional two-part dye systems by allowing color to develop gradually through repeated, short applications integrated into a daily grooming routine.
- Key Procedural History: The complaint is a First Amended Complaint, filed after an initial complaint on November 10, 2021. Plaintiff alleges it sent cease and desist letters to the Defendant on April 30, 2021, and June 4, 2021, putting the Defendant on notice of the patents-in-suit prior to the litigation.
Case Timeline
| Date | Event |
|---|---|
| 2014-01-24 | Earliest Priority Date for '993, '704, and '312 Patents |
| 2016-01-19 | U.S. Patent No. 9,237,993 Issues |
| 2016-10-25 | U.S. Patent No. 9,474,704 Issues |
| 2018-07-17 | U.S. Patent No. 10,022,312 Issues |
| 2019-09-06 | Inova Cosmetics Global Trade LLC Incorporated in New York |
| 2021-04-30 | First Cease and Desist Letter Sent by Plaintiff |
| 2021-05-17 | Inova Cosmetics Global Trade LLC Voluntarily Dissolved |
| 2021-06-04 | Second Cease and Desist Letter Sent by Plaintiff |
| 2021-11-10 | Original Complaint Filed |
| 2021-12-16 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,237,993 - "Gradual Haircolor Compositions and Methods of Using the Same," issued January 19, 2016
The Invention Explained
- Problem Addressed: The patent describes conventional permanent hair coloring as inconvenient, requiring the mixing of separate components, including a harsh developer like hydrogen peroxide. Alternative "leave-in" air oxidation dyes require the product to remain in the hair for one or two days, which is also inconvenient. ('993 Patent, col. 1:26-54, col. 2:1-6). The patent identifies a lack of truly successful methods for gradually coloring hair through repeated, short-duration applications. ('993 Patent, col. 2:21-26).
- The Patented Solution: The invention is a method for gradually coloring hair by repeatedly applying an air oxidation haircolor composition and, crucially, removing it "directly after application," consistent with the short use time of a conventional shampoo or conditioner. ('993 Patent, col. 2:55-65). The composition itself is a single-part formula comprising at least one primary oxidation dye intermediate, at least one aromatic triol, and water, which uses atmospheric oxygen to develop color over multiple uses. ('993 Patent, col. 2:60-64).
- Technical Importance: This approach integrates the hair coloring process into an individual's daily grooming routine, eliminating the need for separate mixing steps, harsh chemical developers, and long "leave-in" times. ('993 Patent, col. 2:41-54).
Key Claims at a Glance
- The complaint directly asserts claims 16, 17, 22-23, and 25-27, and alleges inducement of claims 1-15, 18, 20, and 21. (Compl. ¶¶ 24, 30). The foundational independent method claim is Claim 1.
- Independent Claim 1 (Method):
- a) applying an air oxidation haircolor composition to hair;
- b) removing the air oxidation haircolor composition from the hair directly after application; and
- c) repeating a set comprising the steps a) and b) in multiple spaced intervals,
- wherein the composition comprises: 1) at least one primary oxidation dye intermediate; 2) at least one aromatic triol; and 3) water.
- The complaint reserves the right to assert additional claims. (Compl. ¶17).
U.S. Patent No. 9,474,704 - "Gradual Haircolor Compositions and Methods of Using the Same," issued October 25, 2016
The Invention Explained
- Problem Addressed: As a continuation of the '993 Patent, the '704 Patent addresses the same technical problem: the inconvenience and harshness of conventional hair coloring products and the lack of an effective method for gradual coloring. ('704 Patent, col. 1:26-54, col. 2:21-26).
- The Patented Solution: The '704 Patent claims methods and compositions similar to the '993 Patent. A key distinction in the asserted independent method claim is the express requirement that the haircolor composition comprises a "lamellar phase." ('704 Patent, col. 18:38-44). The specification explains that a lamellar phase, formed by certain surfactant mixtures, can trap dye molecules between layers, which is believed to reduce staining and increase stability. ('704 Patent, col. 9:8-42).
- Technical Importance: By introducing the lamellar phase structure, the invention aims to improve the user experience of a gradual haircolor shampoo by reducing skin staining and enhancing product stability, while retaining the convenience of the core method. ('704 Patent, col. 9:36-42).
Key Claims at a Glance
- The complaint directly asserts claims 18-20, 22, and 23, and alleges inducement of claims 1-17, 25, and 26. (Compl. ¶¶ 38, 43). The foundational independent method claim is Claim 1.
- Independent Claim 1 (Method):
- a) applying an air oxidation haircolor composition to hair;
- b) removing the air oxidation haircolor composition from the hair directly after application; and
- c) repeating a set comprising the steps a) and b) in multiple spaced intervals,
- wherein the air oxidation haircolor composition comprises a lamellar phase.
- The complaint reserves the right to assert additional claims. (Compl. ¶38).
U.S. Patent No. 10,022,312 - "Gradual Haircolor Compositions and Methods of Using the Same," issued July 17, 2018
- Technology Synopsis: As a continuation of the prior patents, the '312 Patent is directed to the same technology of gradual air oxidation haircolor compositions and methods. It solves the problem of inconvenient and harsh traditional hair dyes by providing a single-component composition for repeated, short-duration use. The claims add a further limitation that at least about 80% of the surfactants in the composition can form bilayers, which relates to the "lamellar phase" concept of the '704 Patent. ('312 Patent, col. 19:15-17).
- Asserted Claims: The complaint alleges inducement of claims 1-17. (Compl. ¶51).
- Accused Features: The accused features are the composition of the "White to Black" shampoo and the method of its use as instructed by Defendant. (Compl. ¶¶ 52, 57). The complaint specifically alleges the shampoo contains surfactants that form bilayers and a lamellar phase. (Compl. ¶¶ 53, 55, 56).
III. The Accused Instrumentality
Product Identification
- Defendant’s “White to Black Grey Coverage Shampoo” (“White to Black shampoo”). (Compl. ¶17).
Functionality and Market Context
- The complaint alleges the accused product is an air oxidation haircolor shampoo designed to be used daily for at least three months to "gradually reduce grey." (Compl. ¶27). The user instructions cited in the complaint direct users to apply the shampoo, wait for 5 minutes, and then rinse with water, and to repeat this process with "regular use." (Compl. ¶31). The complaint alleges, on information and belief, that the product's chemical composition includes primary oxidation dye intermediates (p-aminophenol, n,n-bis(2-hydroxyethyl)-p-phenylenediamine sulfate), an aromatic triol (1,2,4-trihydroxybenzene), water, and a specific blend of surfactants. (Compl. ¶25).
- The complaint alleges the product is sold and offered for sale in the United States through various websites, including Amazon.com. (Compl. ¶18).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
'993 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a) applying an air oxidation haircolor composition to hair; | Defendant instructs customers to “Apply to the entire hair and scalp.” The complaint alleges the product is an air oxidation haircolor shampoo. | ¶¶ 25, 31 | col. 5:41-44 |
| b) removing the air oxidation haircolor composition from the hair directly after application; | Defendant instructs customers, “After waiting for 5 minutes, rinse with plenty of water.” | ¶31 | col. 5:62-67 |
| c) repeating a set comprising the steps a) and b) in multiple spaced intervals, | Defendant instructs customers to use the shampoo “once every day” and states that “effects will be visible with regular use.” | ¶31 | col. 5:45-50 |
| wherein the air oxidation haircolor composition comprises: 1) at least one primary oxidation dye intermediate; 2) at least one aromatic triol; and 3) water. | The complaint alleges, on information and belief, that the shampoo contains p-aminophenol and n,n-bis(2-hydroxyethyl)-p-phenylenediamine sulfate (primary oxidation dye intermediates), 1,2,4-trihydroxybenzene (aromatic triol), and water. | ¶25 | col. 3:60-64 |
'704 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a) applying an air oxidation haircolor composition to hair; | Defendant instructs customers to “Apply to the entire hair and scalp.” The complaint alleges the product is an air oxidation haircolor composition. | ¶¶ 39, 44 | col. 5:42-45 |
| b) removing the air oxidation haircolor composition from the hair directly after application; | Defendant instructs customers, “After waiting for 5 minutes, rinse with plenty of water.” | ¶44 | col. 5:63-67 |
| c) repeating a set comprising the steps a) and b) in multiple spaced intervals, | Defendant instructs customers to use the shampoo “once every day” and states that “effects will be visible with regular use.” | ¶44 | col. 5:46-51 |
| wherein the air oxidation haircolor composition comprises a lamellar phase. | The complaint alleges, on information and belief, that “at least one cleansing surfactant in Inova’s White to Black shampoo forms a lamellar phase.” | ¶42 | col. 9:8-14 |
Identified Points of Contention
- Scope Questions: A primary question of claim scope will concern the term "directly after application." The infringement allegation rests on this term being broad enough to cover the accused product's instructed 5-minute wait time. The court will have to determine if "directly" allows for such a brief, intentional delay.
- Technical Questions: For the '704 and '312 Patents, infringement hinges on whether the accused shampoo "comprises a lamellar phase." The complaint makes this allegation "on information and belief." (Compl. ¶42, ¶55). A key factual question for the court will be whether the specific combination and concentration of surfactants in the accused product can be scientifically proven to form this specific ordered structure.
V. Key Claim Terms for Construction
"directly after application" (asserted in '993 and '704 Patents)
- Context and Importance: This term's construction is critical because Defendant's instructions specify a 5-minute waiting period before rinsing. Plaintiff's infringement case requires this term to be construed to include that duration, while a narrow, immediate-action-only construction could support a non-infringement argument.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides examples of removal times that are not instantaneous, stating removal may occur "within about 15 minutes, within about 10 minutes, within about 9 minutes, within about 8 minutes, within about 7 minutes, within about 6 minutes, within about 5 minutes..." ('993 Patent, col. 6:6-10). This language may support an interpretation that "directly" means within the short timeframe of a normal grooming routine, not necessarily instantaneously.
- Evidence for a Narrower Interpretation: A party could argue that the plain meaning of "directly" implies immediacy. The fact that the inventors listed specific time durations in the specification but chose the word "directly" for the claim itself could be argued to signal an intent to claim a more immediate removal, distinct from a timed waiting period.
"lamellar phase" (asserted in '704 and '312 Patents)
- Context and Importance: This is a dispositive technical limitation for the later patents. Infringement depends entirely on whether the accused product's chemical formulation creates this specific structure. Practitioners may focus on this term because it moves the dispute from user instructions to complex chemical analysis.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the lamellar phase as stacks of "ordered bilayers" formed by "surfactant mixtures" ('704 Patent, col. 9:8-14). Plaintiff may argue that the types of surfactants alleged to be in the accused product are well-known to form such structures, making the allegation plausible.
- Evidence for a Narrower Interpretation: The patent attributes specific functional properties to the lamellar phase, including "high zero shear viscosity" and "shear thinning behavior" ('704 Patent, col. 9:15-25). A defendant could argue that to meet the claim limitation, Plaintiff must prove the accused product exhibits these specific physical characteristics, not just that it contains surfactants that can form such a phase.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for all three patents. Inducement is based on allegations that Defendant's instructions on its packaging and website actively encourage and instruct customers to use the "White to Black" shampoo in a manner that directly infringes the method claims (e.g., apply, wait, rinse, and repeat regularly). (Compl. ¶¶ 30-31, 43-44, 51, 57).
- Willful Infringement: Willfulness is alleged for all three patents based on Defendant’s alleged pre-suit knowledge. The complaint states that Defendant was aware of the patents since "at least April 30, 2021," the date of a first cease and desist letter, and that infringement continued after a second letter was sent on June 4, 2021. (Compl. ¶¶ 32, 45, 58).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim construction and scope: can the phrase "directly after application," which is foundational to the patented methods, be interpreted to cover the accused product's instructed 5-minute waiting period, or does "directly" require a more immediate action that the instructions contradict?
- A key evidentiary question will be one of technical proof: for the '704 and '312 patents, the case may turn on whether Plaintiff can produce sufficient scientific evidence to prove that the specific formulation of the accused shampoo actually forms a "lamellar phase," a highly technical and specific chemical structure required by the claims.