DCT
2:25-cv-01828
Nexgel Inc v. KISS Nail Products Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Nexgel, Inc. (Delaware)
- Defendant: Kiss Nail Products, Inc. (New York)
- Plaintiff’s Counsel: Lipton Weinberger & Husick; DiMarino, Lehrer & Collazo, P.C.
- Case Identification: 2:25-cv-01828, E.D. Pa., 04/09/2025
- Venue Allegations: Venue is based on Defendant allegedly directing patent enforcement activities (an Amazon.com takedown notice) into the district, where Plaintiff NEXGEL resides and received notice of the infringement claim.
- Core Dispute: Plaintiff seeks a declaratory judgment that Defendant's patent related to ready-to-use eyelash extensions is invalid, following Defendant's use of the patent to demand the removal of Plaintiff's product from Amazon.com.
- Technical Context: The technology concerns pre-glued, consumer-applied artificial eyelash extension systems, a segment of the cosmetics market focused on simplifying the application process.
- Key Procedural History: The complaint details a lengthy prosecution history for the patent-in-suit, including multiple rejections by the patent examiner and subsequent claim amendments by the applicant. The plaintiff highlights these events to suggest the claims were allowed based on narrow distinctions over prior art, which the plaintiff now challenges.
Case Timeline
| Date | Event |
|---|---|
| 2020-08-21 | '288 Patent Priority Date |
| 2021-08-23 | '288 Patent Application Filing Date |
| 2023-06-05 | First Office Action rejecting claims |
| 2023-10-03 | Final Office Action again rejecting claims |
| 2023-12-04 | Applicant submitted amended claims after final rejection |
| 2024-01-11 | Applicant filed Request for Continued Examination with further amendments |
| 2024-09-05 | Office Action again rejecting all claims on new grounds |
| 2024-10-03 | Applicant submitted amended claims |
| 2024-10-18 | Examiner Interview conducted |
| 2024-10-31 | Applicant submitted interview summary approving examiner's amendment |
| 2024-12-24 | U.S. Patent No. 12,171,288 Issued |
| 2025-03-21 | NEXGEL received notice of Amazon.com takedown report from KISS |
| 2025-04-09 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 12,171,288 - "Ready-To-Use Eyelash Extensions"
- Patent Identification: U.S. Patent No. 12,171,288, "Ready-To-Use Eyelash Extensions," issued December 24, 2024.
The Invention Explained
- Problem Addressed: The patent describes conventional artificial eyelashes as difficult for consumers to apply, requiring access to and skill with specialized adhesives ('288 Patent, col. 1:21-34). Do-it-yourself systems still required users to apply specialty glue to either their own lashes or the artificial lash system before use ('288 Patent, col. 1:41-45).
- The Patented Solution: The invention is an artificial eyelash extension system that is packaged with a pre-applied adhesive element, making it "ready to use" without additional supplies like glue ('288 Patent, col. 2:56-61). The system comprises eyelash filaments attached to a support strip, with an adhesive element connected to the strip and extending along a length of the filaments, allowing it to adhere directly to a user's natural lashes ('288 Patent, col. 11:29-41).
- Technical Importance: This approach aims to eliminate the separate, often messy and difficult, step of applying liquid adhesive, thereby making eyelash extensions more accessible and convenient for inexperienced users ('288 Patent, col. 2:16-22).
Key Claims at a Glance
- The complaint challenges the validity of independent claims 1 and 19 ('288 Patent, col. 11:29-41, col. 12:46-59; Compl. ¶47).
- Independent Claim 1:
- An artificial eyelash extension system comprising:
- a plurality of eyelash filaments, each having a base and a tip;
- a support strip attached to the bases of the eyelash filaments; and
- an adhesive element connected to the support strip and applied to the plurality of the eyelash filaments before the system is packaged for sale;
- wherein the adhesive element is adapted to adhere to natural eyelashes of the user when applied; and
- wherein the adhesive element extends from the support strip along a length of the eyelash filaments.
- Independent Claim 19:
- An artificial eyelash extension system comprising:
- a plurality of eyelash filaments, each comprising a base and a tip;
- a support strip attached to the bases of the eyelash filaments; and
- an adhesive element disposed on the support strip and on a portion of the eyelash filaments that extend outward from the support strip;
- wherein the adhesive element is adapted to adhere to natural eyelashes of the user when applied.
- The complaint asserts that dependent claims are also invalid ('288 Patent, col. 11:42-col. 12:45; Compl. ¶¶ 22, 48, 55).
III. The Accused Instrumentality
This is a declaratory judgment action where the Plaintiff, NEXGEL, seeks a declaration that the Defendant's patent is invalid. The dispute was triggered by a takedown notice concerning NEXGEL's "Pop-On Lashes" sold under the Silly George brand on Amazon.com (Compl. ¶¶ 1, 13). The complaint does not provide a technical description of the Pop-On Lashes. Instead, the analysis focuses on the prior art references that NEXGEL alleges invalidate the '288 Patent.
The primary prior art references cited are:
- Aylott (U.S. Pat. No. 3,935,872): Alleged to disclose an artificial eyelash system with filaments on a support strip and a pre-applied adhesive element (Compl. ¶49).
- Han (WO2015/116247): Also alleged to disclose a pre-packaged eyelash system with an adhesive element applied to filaments attached to a support strip (Compl. ¶56).
- Byrne (U.S. Pat. No. 8,225,800): Cited in combination with Aylott and Han to support allegations of obviousness, specifically for teaching overlapping eyelash filaments (Compl. ¶¶ 75-78).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint does not allege infringement. It alleges the '288 Patent is invalid as anticipated by or obvious in view of prior art. The core of this allegation is that the prior art teaches every element of the asserted claims.
'288 Patent Invalidity Allegations (Anticipation by Aylott)
| Claim Element (from Independent Claim 1) | Alleged Prior Art Disclosure (Aylott) | Complaint Citation | Patent Citation |
|---|---|---|---|
| An artificial eyelash extension system comprising: a plurality of eyelash filaments, each having a base and a tip | Aylott allegedly discloses an artificial eyelash system with multiple eyelash filaments (3) that have a base and tip. | ¶49 | col. 3:49-54 |
| a support strip attached to the bases of the eyelash filaments | Aylott allegedly discloses a support strip (2) attached to the bases of the filaments. | ¶49 | col. 3:46-48 |
| an adhesive element...applied to the plurality of the eyelash filaments before the artificial eyelash extension system is packaged for sale to a user | Aylott allegedly discloses applying an adhesive element to the filaments before the system is packaged for sale. | ¶49 | col. 4:20-25 |
| wherein the adhesive element is adapted to adhere to natural eyelashes of the user when the artificial eyelash extension system is applied | Aylott allegedly discloses a system adapted to attach to a user's natural eyelashes without requiring additional adhesive. | ¶51 | col. 2:12-18 |
| wherein the adhesive element extends from the support strip along a length of the eyelash filaments | The complaint does not directly map this limitation to Aylott for anticipation, but it is a central issue discussed during prosecution and a likely point of contention. | col. 11:39-41 |
- Identified Points of Contention:
- Scope Questions: The complaint's invalidity argument for anticipation appears to depend on whether Aylott's disclosure of an adhesive element on the filaments inherently teaches the specific limitation that the adhesive "extends from the support strip along a length of the eyelash filaments." The patent's prosecution history suggests this exact limitation was added to overcome prior art (Compl. ¶36), making its presence or absence in Aylott a central question.
- Technical Questions: A key factual question will be whether the adhesive described in the prior art references (Aylott, Han) functions in the same way and is located in the same specific configuration as required by the '288 Patent claims, particularly with respect to the relationship between the adhesive, the support strip, and the filaments. The patent examiner's reasons for allowance focused on this precise configuration not being taught by prior art (Compl. ¶¶ 41-42).
V. Key Claim Terms for Construction
- The Term: "extends from the support strip along a length of the eyelash filaments" (Claim 1)
- Context and Importance: This phrase was added during prosecution to distinguish the invention from prior art (Compl. ¶36). The examiner's reasons for allowance explicitly relied on the prior art not teaching "an adhesive element extending from a support strip along a length of the eyelash filaments" (Compl. ¶41). Therefore, the construction of this term will be dispositive for the validity analysis.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue the term simply means the adhesive starts at or near the support strip and covers some portion of the filament's length, without requiring a specific continuous connection or extent. The specification describes embodiments where adhesive is applied "between the support strip and one-half the eyelash filaments' average length away from the support strip" ('288 Patent, col. 4:25-28), which could support a more flexible interpretation.
- Evidence for a Narrower Interpretation: A party could argue the phrase implies a continuous, connected extension of adhesive originating at the support strip itself. The amendment history, introduced to overcome rejections, may be used to argue for a narrower scope that excludes adhesive merely placed on the filaments at some distance from the strip. The prosecution history states the limitation "wherein the adhesive element extends from the support strip" was introduced (Compl. ¶36), suggesting a direct connection or origin point is required.
VI. Other Allegations
- Prosecution History as a Basis for Invalidity: The complaint dedicates significant attention to the '288 Patent's prosecution history (Compl. ¶¶ 25-44). It alleges that the claims were repeatedly rejected over prior art and only allowed after multiple amendments. The plaintiff details the specific limitations added, such as the adhesive being "at a position away from the support strip" (Compl. ¶30), which was later replaced with the adhesive being "connected to the support strip" and extending "along the length of the eyelash filaments" (Compl. ¶36). This narrative suggests the plaintiff will argue that the final amendments either did not patentably distinguish the invention over the art or that the applicant surrendered broader claim scope, potentially creating a prosecution history estoppel argument against any attempt to broaden the claims during litigation.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim construction and prior art interpretation: Does the prior art, particularly the Aylott patent, disclose every element of the asserted claims under a proper construction? Specifically, does Aylott teach an adhesive element that "extends from the support strip along a length of the eyelash filaments," as the '288 patent claims require?
- A second question is one of patentability over the examiner's findings: Was the patent examiner correct in concluding that no prior art of record taught the specific claimed configuration of the adhesive element extending from the support strip along the filaments? The plaintiff's case relies heavily on demonstrating that the examiner's basis for allowance was factually incorrect.
- The case may also turn on the doctrine of prosecution history estoppel: Given the amendments made to overcome prior art rejections, what is the enforceable scope of the claims? The court will need to determine whether the patentee surrendered claim scope that might otherwise cover the prior art configurations now asserted by the plaintiff.