DCT
4:19-cv-00489
Stiles v. H E B LP
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Sharidan L Stiles (California)
- Defendant: H E B LP (Texas)
- Plaintiff’s Counsel: Pierce Bainbridge Beck Price & Hecht LLP
- Case Identification: 4:19-cv-00489, E.D. Tex., 09/02/2019
- Venue Allegations: Plaintiff alleges venue is proper because Defendant H E B LP has regular and established places of business within the Eastern District of Texas, including a specific retail store location.
- Core Dispute: Plaintiff alleges that Defendant’s sale of certain personal styling razors infringes two of Plaintiff's utility patents and one design patent related to narrow-width, precision razors.
- Technical Context: The technology concerns small, ergonomically designed razors for detailed grooming of areas such as eyebrows, bikini lines, and facial hair, a specialized segment of the personal care market.
- Key Procedural History: The filing is a First Amended Complaint, following an original complaint filed in July 2019. The complaint alleges that Plaintiff provided Defendant with notice of the pending patent applications that matured into the patents-in-suit during communications between 2011 and 2014, a fact pattern that may be relevant to the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 1998-XX-XX | Plaintiff conceives of the inventions |
| 2000-11-01 | '329 and '689 Patents Priority Date (Provisional application) |
| 2006-07-14 | '468 Design Patent Filing Date |
| 2007-05-08 | '468 Design Patent Issue Date |
| 2013-09-XX | Defendant allegedly begins selling Accused Products |
| 2015-08-18 | '329 Patent Issue Date |
| 2017-07-18 | '689 Patent Issue Date |
| 2019-07-XX | Original Complaint Filing |
| 2019-09-02 | First Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,108,329 - "Personal Styling Razor" (Issued Aug. 18, 2015)
The Invention Explained
- Problem Addressed: The patent describes conventional razors as being too wide for safe and precise shaving of small or detailed areas like eyebrows, bikini lines, or for creating stylistic hair designs ('329 Patent, col. 3:25-34). It notes that stylists sometimes resort to the unsafe practice of breaking larger blades to create smaller, more precise tools ('329 Patent, col. 7:1-6).
- The Patented Solution: The invention is a hand-held razor with a narrow blade and an ergonomically designed handle to provide greater control for detailed work ('329 Patent, Abstract). Key features include a handle with specific curved portions creating a "waist" for better grip, and a razor blade that extends slightly beyond the head structure, allowing the cutting edge to shave hair close to the skin without obstruction from other parts of the razor head ('329 Patent, col. 8:15-29, 8:51-66).
- Technical Importance: The technology provided a purpose-built, safer alternative for precision grooming, addressing a gap in the market between large, general-purpose razors and small trimmers not designed for close shaving ('329 Patent, col. 9:51-60).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2-14 (Compl. ¶47).
- Independent Claim 1 requires:
- A personal shaving razor for shaving unwanted hair from a body surface;
- Comprising a handle portion and an attached head portion;
- The head portion comprises a razor blade with two corner portions and a connecting straight cutting edge portion;
- The straight cutting edge is disposed substantially perpendicular to a longitudinal axis of the handle;
- The cutting edge extends beyond all other parts of the head portion by about 0.02 inch, such that no part of the head portion extends beyond the blade's cutting edge;
- The head portion and blade are less than or equal to 1/4 inch wide.
U.S. Patent No. 9,707,689 - "Personal Styling Razor" (Issued Jul. 18, 2017)
The Invention Explained
- Problem Addressed: Similar to its parent, the '689 Patent addresses the need for a razor suitable for grooming in fine detail, which conventional razors are not designed for ('689 Patent, col. 2:21-31).
- The Patented Solution: The patent discloses a personal styling razor defined by specific geometric and dimensional relationships. This includes a handle with upper and lower portions forming an obtuse angle of about 135 degrees for ergonomic handling, a narrow head, and a blade that extends slightly beyond the head for unobstructed shaving ('689 Patent, Claim 9). It also introduces the concept of corner guards along the side edges of the blade as a safety feature ('689 Patent, Claim 10).
- Technical Importance: This patent appears to refine the design of the narrow-width razor by codifying specific ergonomic angles and dimensions intended to maximize user control and precision during detailed shaving tasks ('689 Patent, col. 6:50-57).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 9, and dependent claims 2-8 and 10-18 (Compl. ¶116).
- Independent Claim 9 requires:
- A personal shaving razor for shaving unwanted hair;
- Comprising a handle portion and an attached head portion;
- The head portion comprises a razor blade with two corner portions and a connecting straight cutting edge;
- The cutting edge is disposed substantially perpendicular to a longitudinal axis of the handle and extends beyond all other parts of the head portion by about 0.02 inch;
- The head portion and blade are less than or equal to 1/2 inch wide;
- The head portion is wider than the razor blade.
Multi-Patent Capsule: U.S. Design Patent No. D542,468 - "Personal Styling Razor" (Issued May 8, 2007)
- Technology Synopsis: This patent claims the unique ornamental design for a personal styling razor. The claimed design consists of the visual appearance of a razor with a slim, angled head, a tapered upper handle, and a wider, ridged lower grip section, creating a distinct overall aesthetic (D'468 Patent, Figs. 1-4).
- Asserted Claims: The complaint asserts infringement of the single claim of the '468 patent, which protects the ornamental design as shown and described (Compl. ¶188; Prayer for Relief ¶A).
- Accused Features: The overall visual appearance of the "Onyx Professional Details Matter Brow Razor" is alleged to be "deceptively similar and substantially the same as the patented design" when viewed by an ordinary observer (Compl. ¶187). The complaint provides visual side-by-side comparisons to support this allegation (Compl. ¶184, ¶186).
III. The Accused Instrumentality
Product Identification
- The complaint identifies the "Onyx Professional Details Matter Brow Razor," the "KISS Beautiful Tool Kit Grooming (KPLK03)," and the "Ardell Pro Brow Precision Shaper" as the Accused Products (Compl. ¶5).
Functionality and Market Context
- The Accused Products are described as narrow-width personal styling razors used for grooming eyebrows and other small areas (Compl. ¶1, ¶53). They are sold by Defendant H-E-B, a major Texas-based retailer (Compl. ¶11).
- The complaint alleges the products are "Chinese-made knockoffs" that are inferior to the Plaintiff's American-made product and sold to undercut its market (Compl. ¶3, ¶27).
- The complaint provides detailed technical specifications of the products, including specific measurements and angles, based on "teardown analysis" (Compl. ¶55, ¶56, ¶59).
- The complaint includes a screenshot from Defendant's website showing the "Onyx" product for sale (Compl. ¶49).
IV. Analysis of Infringement Allegations
'329 Patent Infringement Allegations
The complaint alleges the "Onyx Professional Details Matter Brow Razor" meets every limitation of Claim 1. The annotated image in the complaint shows the alleged "Corner Portions" and "Straight Cutting-Edge Portion" of the disassembled razor blade (Compl. ¶55).
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a handle portion; and a head portion attached to said handle portion | The Onyx razor is comprised of a handle portion and an attached head portion. | ¶54 | col. 8:51-54 |
| said head portion comprising a razor blade having two corner portions and a straight cutting edge portion that is connected to said two corner portions | As confirmed through teardown, the razor blade has two corner portions and a straight cutting edge connecting them. | ¶55 | col. 9:15-20 |
| said straight cutting edge portion disposed substantially perpendicular to a longitudinal axis of said handle | The cutting edge of the razor blade is substantially perpendicular to the longitudinal axis of the upper part of the handle. | ¶61 | col. 9:35-39 |
| extending beyond all other parts of said head portion along said straight cutting edge portion by about 0.02 inch | Based on measurement, the blade's cutting edge extends beyond other parts of the head portion by approximately 0.02 inch. | ¶56 | col. 9:20-24 |
| wherein said head portion and blade are less than or equal to 1/4 inch wide | The head and blade are measured to be approximately 0.20 inches wide, which is less than 1/4 inch. | ¶57 | col. 9:26-28 |
- Identified Points of Contention:
- Scope Questions: A potential dispute may arise over the construction of "about 0.02 inch," and whether the accused devices fall within that scope. The term "substantially perpendicular" may also be contested, with the complaint providing a diagram alleging a 135-degree angle between handle segments, but asserting the blade itself is perpendicular to the upper handle axis (Compl. ¶59, ¶61).
- Technical Questions: The complaint's infringement theory for certain elements, such as the blade's "corner portions," relies on "teardown analysis" or "breaking apart the head portion" (Compl. ¶55, ¶78). This raises the question of whether a product, as sold and used, meets limitations that are only ascertainable upon its disassembly or destruction.
'689 Patent Infringement Allegations
The complaint makes similar allegations for Claim 9 of the '689 patent. The complaint includes an annotated diagram showing the alleged angle between the upper and lower longitudinal axes of the handle (Compl. ¶128).
| Claim Element (from Independent Claim 9) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a handle portion; and a head portion attached to said handle portion | The Onyx razor is comprised of a handle portion and an attached head portion. | ¶123 | col. 11:21-22 |
| said head portion comprising a razor blade having two corner portions and a straight cutting edge portion | Teardown analysis confirms the blade has two corner portions and a connecting straight cutting edge. | ¶124 | col. 11:23-26 |
| extending beyond all other parts of said head portion...by about 0.02 inch | Measurement confirms the blade's cutting edge extends about 0.02 inch beyond the head portion. | ¶125 | col. 11:28-32 |
| wherein said head portion and blade are less than or equal to 1/2 inch wide | The head and blade are measured to be approximately 0.20 inches wide, which is less than 1/2 inch. | ¶126 | col. 11:34-35 |
| wherein said head portion is wider than said razor blade | The complaint alleges the head portion of the Onyx razor is wider than the razor blade. | ¶127 | col. 11:36-37 |
- Identified Points of Contention: The points of contention identified for the '329 patent are also relevant here. The additional limitation "head portion is wider than said razor blade" appears to be a straightforward factual question, but its resolution will depend on how the boundaries of the "head portion" and "razor blade" are construed.
V. Key Claim Terms for Construction
The Term: "extending beyond all other parts of said head portion" ('329 Patent, Claim 1; '689 Patent, Claim 9)
- Context and Importance: This limitation is central to the invention's purported benefit of "unobstructed" shaving. Its construction will be critical, as the complaint alleges infringement based on teardown analysis, and some accused products may have guards or other structures near the blade edge.
- Intrinsic Evidence for a Broader Interpretation: The specification explains the purpose is to "shave the unwanted hair close to the skin without leaving any stubble by cutting the hair close to the root" ('329 Patent, col. 8:25-29). Plaintiff may argue this functional goal supports reading the term to mean the cutting edge is clear of any feature that would prevent such a close shave.
- Intrinsic Evidence for a Narrower Interpretation: The specification also discloses optional "corner guards" to prevent the corners of the blade from cutting the skin ('329 Patent, col. 8:30-34). A defendant could argue that if such guards are present, the blade does not extend "beyond all other parts," suggesting the claim requires a completely unshielded cutting edge.
The Term: "substantially perpendicular" ('329 Patent, Claim 1; '689 Patent, Claim 9)
- Context and Importance: Practitioners may focus on this term because the precise angle between the blade and handle affects the razor's performance and ergonomics. Defendant may argue its products' geometry deviates from a "perpendicular" orientation.
- Intrinsic Evidence for a Broader Interpretation: The specification does not provide a specific numerical range for "substantially perpendicular," which may support a functional definition encompassing angles that are close to, but not exactly, 90 degrees.
- Intrinsic Evidence for a Narrower Interpretation: The specification states that in some embodiments, the shaving head is mounted at a "right angle" ('329 Patent, col. 6:39-40). This language, along with the drawings (e.g., '329 Patent, Fig. 10), could be used to argue for a construction that is narrowly centered on a 90-degree angle.
VI. Other Allegations
- Indirect Infringement: The complaint focuses on direct infringement under 35 U.S.C. § 271(a), alleging Defendant infringes by "offering to sell and selling" the Accused Products (Compl. ¶47, ¶116). The complaint does not plead specific facts to support claims of induced or contributory infringement.
- Willful Infringement: The complaint alleges willful infringement based on pre-suit knowledge. It claims that between 2011 and 2014, Plaintiff and her representatives had "meetings, presentations, and communications with HEB executives and buyers" where they stated the razor was patented and provided patent application numbers that matured into the patents-in-suit (Compl. ¶29, ¶30). The complaint further alleges that infringement continued after Defendant was served with the original complaint in this matter (Compl. ¶33).
VII. Analyst’s Conclusion: Key Questions for the Case
- A key evidentiary and legal question will be one of structural interpretation: Can claim limitations requiring a specific blade structure, such as "corner portions," be met by products where this structure is allegedly internal to a molded plastic head and is only revealed by disassembling or breaking the product, as the complaint alleges for some of the accused razors?
- A central issue for the design patent claim will be one of visual comparison: Would an ordinary observer, familiar with the prior art, be deceived into purchasing the accused "Onyx" razor under the impression it is the Plaintiff's patented design, based on the overall visual similarity of the two products as presented in the complaint's side-by-side images?
- The viability of the willfulness claim will likely depend on a question of knowledge and intent: What evidence will emerge in discovery to substantiate the allegations that Defendant received specific, actionable notice of its potential infringement during communications that allegedly occurred years before the patents issued?