DCT
4:23-cv-02340
Voesh Corp v. J & K Beauty Supply LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Voesh Corporation (New York)
- Defendant: J & K Beauty Supply, LLC (Texas)
- Plaintiff’s Counsel: Cabello Hall Zinda, PLLC
- Case Identification: 4:23-cv-02340, S.D. Tex., 06/26/2023
- Venue Allegations: Venue is asserted based on the Defendant’s principal place of business being located within the Southern District of Texas.
- Core Dispute: Plaintiff alleges that Defendant’s multi-step pedicure kits infringe a patent related to methods for providing a predetermined beauty treatment using pre-packaged, single-use product quantities.
- Technical Context: The technology concerns single-use, multi-step cosmetic treatment kits, which aim to improve hygiene, provide consistent application amounts, and simplify inventory management for spas and salons.
- Key Procedural History: The asserted patent is a continuation of a series of prior applications dating to 2015. The complaint does not mention any prior litigation, licensing history, or post-grant proceedings involving the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2015-04-15 | '058 Patent Priority Date |
| 2022-10-25 | '058 Patent Issue Date |
| 2023-06-26 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,478,058 - “METHOD FOR PROVIDING A PREDETERMINED BEAUTY TREATMENT”, Issued October 25, 2022
The Invention Explained
- Problem Addressed: The patent’s background section describes the challenges associated with using bulk, multi-use containers of skin care products in professional settings like spas. These challenges include the risk of product contamination, reduced shelf-life from repeated environmental exposure, inconsistent amounts of product being applied by different technicians, and difficulty in tracking inventory (’058 Patent, col. 1:24-61).
- The Patented Solution: The invention claims to solve these problems through a method that provides a multi-step beauty treatment using a set of individual, single-serve packets. Each packet contains a pre-measured quantity of a specific product for one sequential step of the treatment, and the packets are collected together within an outer package to form a complete, single-use kit (’058 Patent, Abstract; col. 2:6-20). The individual packets are labeled to indicate their corresponding step in the sequence, standardizing the treatment process (’058 Patent, col. 10:24-31).
- Technical Importance: This approach seeks to provide a more sanitary, consistent, and inventory-friendly method for delivering professional beauty services compared to traditional bulk product applications (’058 Patent, col. 2:46-56).
Key Claims at a Glance
- The complaint asserts literal infringement of independent claim 1 and dependent claims 2-3, 5-9, and 11 (Compl. ¶34).
- Independent Claim 1 recites a method with the following essential elements:
- Providing at least two separate packets of products to be used sequentially, with each packet containing a specific, predetermined quantity of product for a single discrete step.
- The separate packets are labeled with indicia representative of the sequential step.
- Providing an outer packaging configured to receive and fit a predetermined number of the separate packets.
- The outer packaging is labeled with indicia representative of the predetermined beauty treatment.
- The complaint reserves the right to assert other claims and pleads infringement under the doctrine of equivalents as an alternative theory (Compl. ¶40).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are Defendant’s "5 in 1 Deluxe Pedicure" and "4 in 1 Spa Pedicure" products (Compl. ¶¶24, 26).
Functionality and Market Context
- The complaint alleges that these products are multi-step pedicure kits sold in a single package (Compl. ¶¶24, 26). The "4 in 1 product," for example, is alleged to contain four packets for sequential steps: Epsom Salt, Sugar Scrub, Clay Mask, and Massage Lotion (Compl. p. 5).
- The complaint provides visual evidence of the accused products. One image depicts the "5 in 1 product" outer box alongside five separate, individually labeled packets (Compl. p. 7). Another image shows the "4 in 1 product" outer box and its four contained packets, which are explicitly labeled "Step 1," "Step 2," "Step 3," and "Step 4" (Compl. p. 8).
- Plaintiff alleges that Defendant chose to "copy Plaintiff's patented process" and, in the case of the "4 in 1 product," uses Plaintiff's "PEDI IN A BOX" trademark on its packaging, suggesting the products are direct competitors (Compl. ¶¶22, 28).
IV. Analysis of Infringement Allegations
'058 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) - | Alleged Infringing Functionality - | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for implementing and providing a predetermined beauty treatment comprising: providing at least two separate packets of products to be used sequentially in the providing of the predetermined beauty treatment, each of the provided separate packets including a specific, predetermined quantity of one of the products for performance of a single discrete sequential step of the predetermined beauty treatment utilizing the one of the products and being labeled with indicia representative of the sequential step to which each of the packets correspond in the predetermined beauty treatment; and | Defendant manufactures and sells kits, such as the "4 in 1 product," which contain multiple single-use packets (e.g., Epsom Salt, Sugar Scrub) labeled with sequential step numbers (e.g., "Step 1," "Step 2") for performing a pedicure. | ¶¶ 35-39 | col. 7:29-39 |
| providing an outer packaging configured to receive and fit a predetermined number of said separate packets corresponding to the predetermined beauty treatment, the outer packaging being labeled with indicia representative of the predetermined beauty treatment. | Defendant's kits are sold in an outer box that is configured to contain the set of individual packets. The outer packaging for the "4 in 1 product" is shown containing four packets and is labeled as a "Spa Pedicure" kit. - | ¶¶ 35-39 | col. 5:37-43 |
Identified Points of Contention
- Scope Questions: Claim 1 recites a "method for implementing and providing" a treatment. The complaint alleges direct infringement against the Defendant for "making" and selling the kits (Compl. ¶32). This raises the question of whether a manufacturer who sells a kit containing all the necessary components can be held liable for direct infringement of a method claim, or if its liability is more appropriately analyzed under theories of indirect infringement (e.g., inducement), which are not explicitly pleaded. The resolution may depend on the interpretation of the term "providing" in the claim.
- Technical Questions: While the visual evidence in the complaint appears to map closely to the claim limitations, a potential point of dispute could be whether the labeling on the Defendant's outer packaging—for example, "Hydrangea Deluxe Pedicure"—satisfies the claim element requiring "indicia representative of the predetermined beauty treatment" as that term is construed by the court.
V. Key Claim Terms for Construction
The Term: "predetermined beauty treatment"
Context and Importance: This term defines the overall purpose and scope of the claimed method. Its construction is important for defining the field of the invention. Practitioners may focus on this term to determine if it is limited to specific applications or covers a broader range of cosmetic procedures.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests a broad scope, stating the invention can be for a "manicure or pedicure treatment, or other beauty or skin-care treatment" (’058 Patent, col. 2:6-9) and may also apply to "facials, massages, waxings, etc." (’058 Patent, col. 8:63-65).
- Evidence for a Narrower Interpretation: The patent repeatedly uses "manicure or pedicure" as the primary examples of the treatment (’058 Patent, col. 7:26-28, col. 7:39-43), which a party could argue cabins the core invention to those specific contexts.
The Term: "labeled with indicia representative of the sequential step"
Context and Importance: This limitation is central to the infringement allegation, which relies on the step numbers printed on the accused packets. The definition of "indicia" will determine whether the Defendant's labeling meets this requirement.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes "labeling each of the single-serve sachets with an associate step" (’058 Patent, col. 3:29-31) and discusses coding, which may include written descriptions, color coding, or graphics (’058 Patent, col. 8:59-63). This could support an interpretation where simple numbering (e.g., "Step 1") is sufficient.
- Evidence for a Narrower Interpretation: A party could argue that mere numbers are insufficient and that "indicia representative of the sequential step" requires a more descriptive label. However, the accused products appear to include both a number and a product name (e.g., "Step 2 - Sugar Scrub"), which may satisfy even a narrower construction (Compl. p. 8).
VI. Other Allegations
- Indirect Infringement: The complaint does not contain separate counts for induced or contributory infringement. The infringement allegations are framed as direct infringement under 35 U.S.C. § 271 for the act of "making" and selling the accused products (Compl. ¶32).
- Willful Infringement: The complaint alleges that Defendant's infringement was "conscious, systematic, and willful" (Compl. ¶2) and asks for treble damages for "willful and deliberate infringement" (Prayer for Relief ¶6). The factual support pleaded is a general allegation that Defendant "chose to copy Plaintiff's patented process" (Compl. ¶22), without specifying facts related to pre-suit knowledge of the patent itself.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central legal issue will be one of liability for method claims: can Plaintiff prove that Defendant, as a manufacturer and seller of a product kit, is directly liable for infringing a "method for... providing" a treatment, or is this a case where liability, if any, would arise under an unpleaded theory of indirect infringement?
- A key evidentiary question will turn on claim construction: does the labeling on Defendant’s products, particularly the text on the outer packaging and the step-by-step numbering on the inner packets, satisfy the claim limitations requiring "indicia representative of the predetermined beauty treatment" and "indicia representative of the sequential step," respectively, as those terms are ultimately defined by the court?