2:25-cv-00951
Skull Shaver LLC v. Freebird
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Skull Shaver, LLC (New Jersey)
- Defendant: Freebird (Pennsylvania)
- Plaintiff’s Counsel: Soliman & Associates, PC
- Case Identification: 1:24-cv-10796, D.N.J., 11/27/2024
- Venue Allegations: Venue is alleged to be proper as the Defendant resides in the judicial district of New Jersey.
- Core Dispute: Plaintiff alleges that Defendant’s "Freebird Flex Series" electric shavers infringe one utility patent and two design patents related to the ergonomic design and appearance of shavers for use on curved body parts.
- Technical Context: The technology concerns handheld electric shavers with specific ergonomic features, such as body shape and grip indentations, designed to improve a user's ability to shave their own head.
- Key Procedural History: The complaint does not mention any prior litigation between the parties, Inter Partes Review (IPR) proceedings involving the asserted patents, or any pre-suit licensing communications.
Case Timeline
| Date | Event |
|---|---|
| 2011-08-08 | U.S. Patent No. 8,726,528 Priority Date |
| 2011-08-11 | U.S. Patent No. D672,504 Priority Date |
| 2012-12-11 | U.S. Patent No. D672,504 Issued |
| 2014-05-20 | U.S. Patent No. 8,726,528 Issued |
| 2019-05-29 | U.S. Patent No. D914,290 Priority Date |
| 2021-03-23 | U.S. Patent No. D914,290 Issued |
| 2024-11-27 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,726,528 - Electric Head Shaver (Issued May 20, 2014)
The Invention Explained
- Problem Addressed: The patent’s background section notes that conventional electric shavers are typically designed with a grip below the cutting surface, an orientation which is inconvenient for shaving one’s own head, where the grip must be held above the cutter (’528 Patent, col. 1:33-40). The complaint adds that prior designs lacked versatility and did not provide a firm grip for shaving curved body parts (Compl. ¶3).
- The Patented Solution: The invention is an electric shaver with an ergonomic housing that facilitates a grip above the cutting surface. The housing features two distinct pairs of concave recesses: a first pair on the sides of the housing and a second pair on the bottom surface of the housing, perpendicular to the first (’528 Patent, col. 4:21-35). This allows a user to grip the shaver between two fingers while resting the rest of the hand on the scalp, providing tactile feedback and better control during shaving (’528 Patent, col. 2:58-63; Figs. 4-6).
- Technical Importance: This design purports to make it "anatomically convenient to hold the shaver against the top and sides of the head" (’528 Patent, col. 2:45-48).
Key Claims at a Glance
- The complaint alleges infringement of "one or more claims" of the ’528 Patent, with specific allegations tracking the language of independent claim 1 (Compl. ¶19-20).
- Independent Claim 1 recites the following essential elements:
- A housing for containing electrical and drive components, with a length, width, and a bottom.
- A cutter mechanism located beneath and spaced from the housing's bottom.
- A central hub connecting the cutter mechanism to the housing.
- The cutter mechanism having a cutting surface defining a plane.
- A "first pair of elongated recesses" on the sides of the housing, parallel to the cutting surface plane.
- A "second set of elongated spaced apart recesses" on the bottom of the housing, located on opposite sides of the hub and extending "perpendicular to said first pair of recesses."
U.S. Design Patent No. D672,504 - Electric Head Shaver (Issued Dec. 11, 2012)
The Invention Explained
- Problem Addressed: Not applicable in the context of a design patent, which protects ornamentation rather than function.
- The Patented Solution: The patent claims the specific ornamental design for an electric head shaver as depicted in its figures (’504 Patent, Figs. 1-8). The design’s visual characteristics include a body with prominent concave indentations on its sides, a multi-part hub, and a four-headed cutter assembly arranged in a square pattern (’504 Patent, Fig. 1, Fig. 8).
- Technical Importance: The complaint asserts that the patented designs "changed way consumers view and use handheld electric shaving devices" (Compl. ¶2).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is for "The ornamental design for an 'electric head shaver,' as shown and described" (’504 Patent, col. 1:57-59). The complaint alleges infringement by asserting the accused product's "overall appearance... is substantially the same" (Compl. ¶25).
U.S. Design Patent No. D914,290 - Electric Shaver Head (Issued March 23, 2021)
- Technology Synopsis: This patent protects the ornamental design for a detachable electric shaver head, not the entire shaver body. The claimed design consists of a housing that supports four rotary cutters in a cruciform or square-like arrangement, with the housing itself having a distinct contoured shape (’290 Patent, Figs. 1-2). Broken lines in the figures indicate that the handle or body of the shaver is not part of the claimed design (’290 Patent, Fig. 1).
- Asserted Claims: The single claim for the ornamental design for an electric shaver head as shown and described.
- Accused Features: The complaint alleges that the shaver head of the "Flex Series" product has an overall appearance that is substantially the same as, or a colorable imitation of, the design claimed in the ’290 Patent (Compl. ¶25-26).
III. The Accused Instrumentality
Product Identification
The accused product is the "Freebird Flex Series" electric shaver (Compl. ¶15).
Functionality and Market Context
The complaint describes the accused product as an electric shaver embodying the patented inventions (Compl. ¶15). A photograph of the product is provided as Exhibit D, showing a handheld device with a body and a multi-headed rotary cutter (Compl. ¶15, Ex. D). The complaint alleges the product features a housing, cutter mechanism, and central hub (Compl. ¶20), as well as a four-blade head with four rotary cutters in a square configuration (Compl. ¶26). The complaint notes the products are sold exclusively online for less than $60 (Compl. ¶15, ¶16).
IV. Analysis of Infringement Allegations
’528 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a housing for containing an electrical source and drive-related components, said housing having a length and a width, and said housing further including a bottom | Defendant's shaver comprises a housing for containing an electrical source and drive-related components, with a length, width, and bottom. | ¶20 | col. 4:2-7 |
| a cutter mechanism located beneath said bottom of said housing and spaced therefrom | The shaver includes a cutter mechanism located beneath the bottom of the housing and spaced therefrom. | ¶20 | col. 4:8-10 |
| a central hub extending from said bottom of said housing to said cutter mechanism and connecting said cutter mechanism to said housing | A central hub extends from the housing bottom to the cutter mechanism, connecting the two. | ¶20 | col. 4:11-14 |
| said cutter mechanism including a cutting surface defining a plane | The cutter mechanism includes a cutting surface that defines a plane. | ¶20 | col. 4:15-16 |
| a first pair of elongated recesses formed on said sides of said housing... | The complaint does not provide sufficient detail for analysis of this element. | N/A | col. 4:17-23 |
| a second set of elongated spaced apart recesses formed in said bottom of said housing... and extending upwardly into said bottom... and extending perpendicular to said first pair of recesses | The complaint does not provide sufficient detail for analysis of this element. | N/A | col. 4:24-31 |
Identified Points of Contention
- Evidentiary Question: The complaint’s narrative infringement allegation for the ’528 Patent recites only the general structural components of the shaver (housing, cutter, hub) found in the first part of claim 1 (Compl. ¶20). It omits any specific factual allegation that the accused product contains the "first pair of elongated recesses" on its sides or the "second set of elongated... recesses" on its bottom, which are critical limitations defining the patented ergonomic grip. This raises the question of whether the complaint, even when viewed with the photograph in Exhibit D, provides a plausible factual basis for infringement of the complete claim. The photograph provided as Exhibit D to the complaint depicts the accused "Flex Series" shaver (Compl. ¶15, Ex. D). The court will likely need to scrutinize this visual evidence to determine if it shows features that could correspond to the claimed recesses.
Design Patent Infringement Allegations
The complaint alleges that the "overall appearance of the Flex Series shaver is substantially the same as the design in the Design Patent and/or Second Design Patent, or is at least a colorable imitation thereof" (Compl. ¶25). The infringement test for design patents is whether an "ordinary observer," familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design.
Identified Points of Contention
- Scope Questions: A central question will be whether the visual differences between the accused product (Compl. Ex. D) and the patented designs (’504 Patent, Figs. 1-8; ’290 Patent, Figs. 1-5) are significant enough to prevent an ordinary observer from being deceived. The defense may point to subtle differences in curvature, proportion, or surface ornamentation to argue against a finding of substantial similarity.
- Legal Question: The complaint alleges that because the accused shavers are sold only online, a consumer "does not have an opportunity to closely examine the same," which may heighten the likelihood of confusion (Compl. ¶17, ¶27). This raises the question of what role, if any, the post-sale or limited-inspection commercial context plays in the ordinary observer analysis.
V. Key Claim Terms for Construction
"elongated recesses"
- Context and Importance: This term is fundamental to the functional aspect of the ’528 Patent’s claimed invention—the ergonomic grip. The presence and configuration of features meeting this definition on the accused product will be a focal point of the infringement analysis.
- Intrinsic Evidence for a Broader Interpretation: The claims use the general term "recesses," which could be argued to encompass a wide variety of indentations or cavities that facilitate gripping.
- Intrinsic Evidence for a Narrower Interpretation: The specification repeatedly describes these features as "concave surfaces" (’528 Patent, col. 3:26, 3:29, 4:32). A defendant may argue that "recesses" should be construed more narrowly to mean only the specific "concave" shapes depicted in the patent’s figures.
"extending perpendicular to said first pair of recesses"
- Context and Importance: This term defines the specific geometric relationship between the two sets of recesses, a key structural limitation in claim 1 of the ’528 Patent. Infringement will depend on whether the accused product has two sets of recesses oriented in this specific manner.
- Intrinsic Evidence for a Broader Interpretation: A plaintiff might argue that "perpendicular" should not require a precise 90-degree angle but can mean "generally transverse" or "substantially perpendicular" to achieve the intended gripping function.
- Intrinsic Evidence for a Narrower Interpretation: The patent uses the precise term "perpendicular" without qualification (’528 Patent, col. 4:30-31), and a defendant will likely argue it should be given its plain and ordinary geometric meaning, requiring a strict 90-degree orientation.
VI. Other Allegations
Indirect Infringement
The complaint includes boilerplate language alleging Defendant is "causing others to make, use, sell, and/or offer to sell" the infringing product (Compl. ¶15), but it does not plead specific facts to support the knowledge and intent required for a claim of induced infringement, nor does it allege facts to support contributory infringement.
Willful Infringement
The complaint alleges that Defendant’s infringement was "willfully and deliberately" committed and seeks treble damages (Compl. ¶15; Prayer for Relief ¶E). The pleading does not allege any facts indicating pre-suit knowledge of the patents, suggesting the willfulness claim may be predicated on knowledge gained from the filing of the lawsuit itself.
VII. Analyst’s Conclusion: Key Questions for the Case
A central issue will be one of pleading sufficiency: Has the Plaintiff alleged sufficient facts to make its claim of utility patent infringement plausible? The complaint's primary infringement allegation (¶20) omits any mention of the patented ergonomic "recesses," which are indispensable elements of the asserted independent claim, raising the question of whether the claim can survive a motion to dismiss under the Twombly/Iqbal standard.
For the design patents, the case will turn on a question of visual similarity: Would an ordinary observer, taking into account the prior art, be deceived by the overall appearance of the accused "Freebird Flex Series" shaver into believing it is the same as the ornamental designs protected by the ’504 and ’290 patents, or are the visual differences between the products sufficient to avoid confusion?
A key evidentiary question will be one of structural correspondence: Does the accused product, as a matter of fact, possess two distinct sets of "elongated recesses" with the specific perpendicular orientation required by claim 1 of the ’528 Patent? The resolution of this factual dispute will likely be determinative of the utility patent infringement claim.