DCT

2:25-cv-00321

KISS Nail Products Inc v. Original Additions Beauty Products Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: KISS Nail Products, Inc. v. Original Additions (Beauty Products) Ltd, 2:25-cv-00321, E.D. Tex., 03/31/2025
  • Venue Allegations: Plaintiff alleges venue is proper because the Defendant is incorporated outside the United States and has committed acts of infringement and conducts regular business in the district, including by selling the accused products in local retail stores.
  • Core Dispute: Plaintiff alleges that Defendant’s "Eylure Pre-Glued Cluster" lash products infringe two patents related to ready-to-use artificial eyelash extensions with pre-applied adhesive.
  • Technical Context: The case concerns the consumer beauty market, specifically do-it-yourself (DIY) artificial eyelash products that do not require users to apply separate liquid adhesive.
  • Key Procedural History: The complaint alleges that Plaintiff’s own products, the imPRESS Falsies, were marked as "patent pending" since their U.S. launch in December 2022. Plaintiff asserts that Defendant was notified of the issued patents and its alleged infringement via a letter dated March 20, 2025, eleven days before filing suit.

Case Timeline

Date Event
2020-08-21 Priority Date for ’288 and ’291 Patents
2022-12-01 Plaintiff's imPRESS Falsies first offered for sale with "patent pending" marking (approx. date from Compl. ¶60)
2024-10-30 U.S. PTO issues Notice of Allowance for ’288 Patent
2024-12-24 U.S. Patent No. 12,171,288 issues
2024-12-24 U.S. Patent No. 12,171,291 issues
2025-03-20 Plaintiff informs Defendant of alleged infringement via letter
2025-03-31 Complaint filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 12,171,288: "Ready-To-Use Eyelash Extensions" (Issued Dec. 24, 2024)

The Invention Explained

  • Problem Addressed: The patent describes conventional artificial eyelashes as difficult to apply, requiring users to have access to and skillfully apply separate, specialized adhesives to a lash strip before application. (’288 Patent, col. 1:21-45).
  • The Patented Solution: The invention is a ready-to-use eyelash extension system with a pre-applied adhesive element. This allows a user to apply the extensions in one step without needing additional supplies like glue. (’288 Patent, col. 2:6-12). The adhesive is disposed on the eyelash filaments themselves at a position away from the support strip, designed to adhere directly to a user's natural lashes rather than their eyelid, thereby avoiding potential skin irritation. (’288 Patent, col. 2:13-22; Fig. 3A).
  • Technical Importance: The technology aims to eliminate the primary user difficulty and supply requirement associated with prior art DIY eyelash systems, making application faster and more convenient. (’288 Patent, col. 2:58-62).

Key Claims at a Glance

  • 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 artificial eyelash extension system is packaged for sale to a user,
    • wherein the adhesive element is adapted to adhere to natural eyelashes of the user when the artificial eyelash extension system is 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 of the plurality of eyelash filaments 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 disposed on a portion of the plurality 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 the artificial eyelash extension system is applied.
  • The complaint asserts infringement of claims 1-15 and 17-19. (Compl. ¶45).

U.S. Patent No. 12,171,291: "Ready-To-Use Eyelash Extensions" (Issued Dec. 24, 2024)

The Invention Explained

  • Problem Addressed: The patent addresses the same difficulties with prior art lash systems as the ’288 Patent: the need for separate adhesives and the complexity of application. (’291 Patent, col. 1:24-51).
  • The Patented Solution: This invention also describes a ready-to-use eyelash system, but it specifically claims a "support surface" that is configured to receive adhesive. This support surface extends across the bases of the eyelash filaments and includes "a plurality of protrusions that extend in a second direction." (’291 Patent, Abstract). These protrusions, which connect to the eyelash filaments, form the structure for holding the pre-applied adhesive. (’291 Patent, Fig. 4A; col. 11:7-15).
  • Technical Importance: This approach provides a defined structure (the support surface with protrusions) for the pre-applied adhesive, distinct from simply applying adhesive to the filaments themselves. (’291 Patent, col. 11:3-6).

Key Claims at a Glance

  • Independent Claim 1:
    • An artificial eyelash extension system comprising a plurality of eyelash extensions, each comprising:
    • a plurality of eyelash filaments, each comprising a base and a tip; and
    • a support surface configured to receive adhesive for applying the eyelash extension to a user's natural eyelashes or eyelid,
    • wherein the support surface extends in a first direction across the bases of the plurality of eyelash filaments and includes a plurality of protrusions that extend in a second direction that is different from the first direction, and
    • wherein the plurality of protrusions connect to the eyelash filaments.
  • Independent Claims 21 and 24 recite similar systems with slightly different claim language.
  • The complaint asserts infringement of claims 1-4, 11, 12, 21, and 24-26. (Compl. ¶47).

III. The Accused Instrumentality

  • Product Identification: The "Eylure Pre-Glued Cluster" lash products. (Compl. ¶4).
  • Functionality and Market Context: The Accused Products are described as "pre-glued" artificial eyelash clusters of varying lengths (10mm, 12mm, 14mm) sold for DIY application. (Compl. ¶¶39-40). The complaint alleges the products include a support material at the base of the eyelash filaments and have adhesive applied not only to this support material but also to "portions of the plurality of the eyelash filaments in a direction extending away from the support material." (Compl. ¶¶42, 44). The complaint includes an annotated image from the Accused Product's packaging that highlights the different lash lengths available in the kit. (Compl. ¶40). Plaintiff asserts that these products compete directly with its own imPRESS Falsies products in the DIY lash market and directly displace its sales. (Compl. ¶¶51-53).

IV. Analysis of Infringement Allegations

The complaint references, but does not attach, claim chart exhibits (Exhibits D and E) detailing its infringement theories. (Compl. ¶¶46, 48). The analysis below is therefore based on the narrative allegations in the body of the complaint.

  • ’288 Patent Infringement Allegations:
    The complaint alleges that the Accused Products meet the limitations of the ’288 Patent claims. It asserts that the products are artificial eyelash extension systems comprising a plurality of eyelash filaments with a base and tip (Compl. ¶41), a support material at the bases of those filaments (Compl. ¶42), and a pre-applied adhesive (Compl. ¶43). Crucially, the complaint alleges that the adhesive in the Accused Products is "applied not only to the support material at the bases of the plurality of eyelash filaments, but also to portions of the plurality of the eyelash filaments in a direction extending away from the support material." (Compl. ¶44). This allegation appears intended to map onto the claim language requiring an "adhesive element" that is "connected to the support strip" and "extends...along a length of the eyelash filaments." The complaint includes a side-by-side photograph comparing the Plaintiff's product to the Accused Product, suggesting they are structurally similar. (Compl. p. 15).

  • ’291 Patent Infringement Allegations:
    The complaint does not provide sufficient detail for a narrative analysis of its infringement theory for the ’291 Patent. It states conclusorily that the Accused Products infringe specific claims (Compl. ¶47) and points to a missing exhibit. (Compl. ¶48). The core of this infringement read would turn on whether the adhesive structure on the Accused Products can be characterized as a "support surface" with "a plurality of protrusions" as claimed in the ’291 Patent.

  • Identified Points of Contention:

    • Scope Question (’288 Patent): A central question will be whether the adhesive on the Accused Product constitutes an "adhesive element connected to the support strip" as claimed. Defendant may argue its product simply has glue applied to the lashes, not a distinct "element" that is "connected to" the support strip in the manner described by the patent.
    • Technical Question (’291 Patent): A key factual dispute will be whether the physical structure of the Accused Product includes the claimed "support surface" with "protrusions." The infringement analysis will depend on evidence showing the specific configuration of the adhesive and lash bases on the Accused Product and whether that configuration meets the structural limitations of the ’291 Patent’s claims.

V. Key Claim Terms for Construction

  • The Term: "adhesive element connected to the support strip" (’288 Patent, Claim 1)

    • Context and Importance: The nature of the connection between the "adhesive element" and the "support strip" is fundamental to the infringement read. The court's construction of this phrase will determine whether adhesive merely placed on the filaments near the strip falls within the claim, or if a more integral, structural connection is required.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes embodiments where the adhesive element is simply "disposed on the eyelash filaments" (’288 Patent, col. 4:21-22) and can be discrete droplets. (’288 Patent, col. 5:16-18). This may support a construction where the connection is functional (via the filaments) rather than a direct physical bond between the adhesive mass and the strip itself.
      • Evidence for a Narrower Interpretation: Claim 19 recites an adhesive element "disposed on the support strip and disposed on a portion of the plurality of the eyelash filaments," suggesting a direct contact with the strip. The doctrine of claim differentiation may be argued to mean Claim 1's "connected to" requires something different, but a defendant could argue that the overall invention, as depicted in figures like 1B and 2A, contemplates a cohesive adhesive structure that is structurally integrated with the support strip.

  • The Term: "support surface... includ[ing] a plurality of protrusions" (’291 Patent, Claim 1)

    • Context and Importance: This term defines the novel structural feature of the ’291 Patent. Infringement hinges on whether the Accused Product has a structure that can be defined as a "support surface" with "protrusions," as opposed to simply adhesive applied to lash fibers. Practitioners may focus on this term because it appears to be the primary point of distinction over the ’288 Patent and other prior art.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent does not appear to strictly define "protrusions," leaving room to argue that any shaped application of adhesive that extends from a base support surface along the filaments could meet this definition. The various depicted embodiments (e.g., fork-shaped, arch-shaped) suggest flexibility in the form of the protrusions. (’291 Patent, col. 11:49-54, Figs. 4C-4E).
      • Evidence for a Narrower Interpretation: The figures, such as Figure 4A, depict protrusions (86) as distinct, finger-like extensions from a main body or "head" (84) of the adhesive element. A defendant could argue this implies a specific, molded shape, and that randomly or continuously applied adhesive on its product does not form such discrete "protrusions." (’291 Patent, col. 11:7-15).

VI. Other Allegations

  • Indirect Infringement: Plaintiff alleges induced infringement, stating that Defendant provides instructions on the product packaging that direct customers to apply the Accused Products in an infringing manner. (Compl. ¶¶57-58, ¶¶68-69). The complaint includes an image from the packaging showing a "STEP 1 APPLY CLUSTER UNDER NATURAL LASHES" instruction, which Plaintiff alleges directs an infringing use. (Compl. p. 13).
  • Willful Infringement: Plaintiff alleges willfulness based on both pre- and post-suit knowledge. It argues Defendant "knew or should have known" of the eventual patent rights due to the "patent pending" marking on Plaintiff's competing product since December 2022. (Compl. ¶60, ¶71). It further alleges actual knowledge as of a March 20, 2025 notice letter, after which Defendant allegedly continued its infringing conduct. (Compl. ¶¶61-62). The complaint also includes a side-by-side image to support an allegation that the Accused Products "appear to have been copied directly" from Plaintiff's product. (Compl. ¶60, p. 15).

VII. Analyst’s Conclusion: Key Questions for the Case

  1. A central issue will be one of claim scope and structure: Does the adhesive on the Defendant’s "Pre-Glued Cluster" products constitute the specific "adhesive element" structures claimed in the patents? For the ’288 Patent, this is a question of connection; for the ’291 Patent, it is a question of whether the adhesive forms a "support surface with...protrusions."
  2. A key evidentiary question for willfulness will be one of copying and intent: Can Plaintiff prove that the Defendant's product was copied from its "patent pending" marked product, and what effect, if any, will the March 20, 2025 notice letter have on damages calculations for any post-notice sales?
  3. A significant procedural question will be personal jurisdiction: Given that the Defendant is a UK corporation with no alleged physical U.S. presence, the court will need to assess whether sales through third-party U.S. retailers like Target and Ulta are sufficient to establish the minimum contacts required for specific personal jurisdiction in the Eastern District of Texas. (Compl. ¶¶11-15, 22-24).