DCT

6:20-cv-00951

Skull Shaver LLC v. R

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 6:20-cv-00951, W.D. Tex., 12/02/2020
  • Venue Allegations: Venue is alleged to be proper based on Defendants transacting business and purposefully directing business activities to the district. For the numerous foreign-domiciled Defendants, venue is alleged to be proper in any judicial district.
  • Core Dispute: Plaintiff alleges that Defendants’ various models of electric head shavers infringe one utility patent and one design patent related to an ergonomic shaver design.
  • Technical Context: The technology concerns the ergonomic design of handheld electric shavers, specifically those configured to be held with the grip above the cutting surface for shaving curved parts of the body, such as the head.
  • Key Procedural History: The complaint notes that, simultaneous with its filing, Plaintiff also filed for an investigation before the International Trade Commission (ITC) against the same Defendants concerning the importation and sale of the accused infringing electric shavers.

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
2020-12-02 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 that is ill-suited for the task of shaving one's own head, which requires holding the shaver with the grip above the cutter (’528 Patent, col. 1:36-41). This traditional design limits grip versatility and comfort when shaving curved body parts (Compl. ¶4).
  • The Patented Solution: The invention is an electric shaver with a housing specifically designed for an ergonomic grip when held above the cutter mechanism. The housing includes two distinct pairs of "elongated recesses" or concave surfaces: a first pair on the sides of the housing and a second pair on the bottom surface of the housing ('528 Patent, col. 3:22-34). This configuration is described as allowing a user to comfortably grip the shaver between their fingers while resting the palm on the scalp, which provides better control and sensory feedback during shaving (Compl. ¶5; '528 Patent, col. 3:39-49).
  • Technical Importance: The design provides an "anatomically convenient" way to hold a shaver against the top and sides of the head, a task for which prior art shavers were not optimized ('528 Patent, col. 2:45-48).

Key Claims at a Glance

  • The complaint asserts infringement of "one or more claims," with a specific focus on independent claim 1 (Compl. ¶¶ 42, 44).
  • The essential elements of independent claim 1 include:
    • A housing for containing electrical and drive components, having a length, width, parallel sides, and a bottom.
    • A cutter mechanism located beneath and spaced from the housing bottom.
    • A central hub connecting the housing to the cutter mechanism.
    • A "first pair of elongated recesses" on the sides of the housing, parallel to each other and to the plane of the cutting surface.
    • A "second set of elongated spaced apart recesses" formed in the housing bottom, extending upwardly, located on opposite sides of the hub, and extending perpendicular to the first pair of recesses.
  • The complaint does not explicitly reserve the right to assert dependent claims, but the allegation of infringing "one or more claims" leaves this possibility open.

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 (D'504 Patent, Figs. 1-8). The design is characterized by a generally rectangular, flat-topped housing with rounded corners, distinctive concave indentations on its longer sides, and an underlying multi-head cutting assembly (D'504 Patent, Fig. 1). The complaint describes the design as having "an essentially rounded and flat-topped" housing with "elongated and concave recesses along the sides and bottom" (Compl. ¶155).
  • Technical Importance: Not applicable; the value is in the unique, non-functional aesthetic appearance.

Key Claims at a Glance

  • As is standard for design patents, there is a single claim: "The ornamental design for an 'electric head shaver,' as shown and described" (D'504 Patent, "CLAIM").

III. The Accused Instrumentality

Product Identification

  • The complaint identifies numerous accused products, including "Benepuri's Men's 5-in-1 Electric Shaver & Grooming Kit by AsaVea" (Compl. ¶42), "Bald Shaver's LK-1800 Shaver" (Compl. ¶52), "Suzhou Kaidiya's Kibiy Bald Head Shaver" (Compl. ¶62), and various other multi-head electric shavers sold by the other Defendants.

Functionality and Market Context

  • The accused products are described as electric rotary shavers that are functional copies of the Plaintiff's patented devices (Compl. ¶35). The complaint alleges that these products are "knock-offs" manufactured abroad and sold to U.S. customers through online channels such as Amazon.com, often at "considerably cheaper prices" (Compl. ¶¶ 36, 38). Plaintiff alleges these sales are supported by targeted advertising aimed at customers searching for Skull Shaver's products (Compl. ¶¶ 37-38).

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits for each count of infringement, but these exhibits are not included in the filed document. The following analysis is based on the narrative allegations. No probative visual evidence provided in complaint.

'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 including two substantially opposed and substantially parallel sides... The accused electric shavers are alleged to comprise a housing for containing an electrical source and drive-related components, with a length, width, and two substantially opposed and parallel sides. ¶44 col. 3:1-4
a cutter mechanism located beneath said bottom of said housing and spaced therefrom; The accused shavers allegedly have a cutter mechanism located beneath the bottom of the housing and spaced from it. ¶44 col. 3:19-21
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 is alleged to extend from the housing bottom to the cutter mechanism, connecting the two. ¶44 col. 3:7-9
a first pair of elongated recesses formed on said sides of said housing, said first pair of elongated recesses being substantially parallel to each other and lying in a plane that is... parallel to the plane of said cutting surface, and The accused shavers are alleged to have a first pair of elongated recesses on the housing sides that are substantially parallel to each other and lie in a plane parallel to the cutting surface. ¶44 col. 3:25-27
a second set of elongated spaced apart recesses formed in said bottom of said housing... extending upwardly into said bottom, said recesses of said second set being located on opposite sides of said hub and extending perpendicular to said first pair of recesses. The accused shavers are alleged to possess a second set of elongated recesses formed in the housing bottom, extending upwardly, positioned on opposite sides of the central hub, and oriented perpendicularly to the first set of recesses. ¶44 col. 3:28-34
  • Identified Points of Contention:
    • Geometric Questions: The infringement analysis may turn on the precise geometry of the accused devices. A central question will be whether the accused products' recesses meet the specific relational limitations of Claim 1, such as being "substantially parallel" to the cutting plane (for the first pair) and "perpendicular" to the first pair (for the second set).
    • Technical Questions: A factual dispute may arise over whether the structures identified as "recesses" on the accused products are distinct features or merely part of a generalized ergonomic shape, and whether they function to accommodate a user's fingers in the manner described in the patent.

'504 Patent Infringement Allegations

The complaint alleges that the "overall appearance" of the accused shavers is "substantially the same as the claimed design" in the '504 patent, or at least a "colorable imitation thereof" (Compl. ¶155). The infringement theory relies on the "ordinary observer" test, asserting that a potential consumer viewing the accused product online "would be deceived into believing that [it] is the same as the patented design" (Compl. ¶156). The basis for this alleged similarity is the presence of "essentially rounded and flat-topped shaver housings" and "elongated and concave recesses along the sides and bottom" in both the patented design and the accused products (Compl. ¶155).

V. Key Claim Terms for Construction

  • The Term: 'elongated recesses'

    • Context and Importance: This term defines the primary ergonomic and inventive features of the shaver housing in the '528 patent. The existence, shape, and location of these recesses are central to the infringement allegations. Practitioners may focus on this term because its construction will determine whether the indentations on the accused products are mere stylistic choices or fall within the scope of the claimed functional features.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claim language itself is general, not specifying a particular depth, curvature, or length-to-width ratio for the "recesses."
      • Evidence for a Narrower Interpretation: The specification repeatedly describes these features as "concave surfaces" ('528 Patent, col. 3:26, 30) and states they are "adapted to accommodate a portion of a user's fingers therein" ('528 Patent, col. 4:30-32). This could support a narrower construction requiring a distinct, finger-accommodating concavity, as opposed to a shallow or merely stylistic indentation.

  • The Term: 'substantially parallel'

    • Context and Importance: This term of degree qualifies the geometric relationship between the first pair of recesses and the cutting plane. The outcome of the infringement analysis could depend on how much deviation from perfect parallelism is permitted.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The use of "substantially" itself implies that absolute, geometric parallelism is not required, allowing for some tolerance.
      • Evidence for a Narrower Interpretation: The patent figures (e.g., Fig. 3) depict the recesses as appearing perfectly parallel to the plane of the cutter head. A defendant might argue that "substantially" only accounts for minor manufacturing tolerances, not intentional design deviations.

VI. Other Allegations

  • Indirect Infringement: For the '528 patent, the complaint alleges both inducement and contributory infringement against all Defendants (e.g., Compl. ¶¶ 45-46). The inducement claim is based on allegations that Defendants provide product user manuals instructing customers on the infringing use. The knowledge element for both claims is based on alleged awareness of Plaintiff's patent marking on its packaging and website, and on the filing of the complaint itself. Contributory infringement is further supported by the allegation that the accused shavers have no substantial non-infringing uses (e.g., Compl. ¶46).
  • Willful Infringement: The complaint alleges willful infringement of both patents. The allegations are based on "deliberate and willful behavior with knowledge," supported by the claim that Defendants are "copying of Skull Shavers products, including the design, look and feel and overall functionality" (e.g., Compl. ¶¶ 47, 158).

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

  1. A central issue will be one of geometric scope: Do the accused shavers, which are alleged to be "knock-offs," possess the specific arrangement of recesses claimed in the '528 patent? The case may turn on whether the accused devices' features satisfy the '528 patent's precise geometric requirements, particularly the "substantially parallel" and "perpendicular" relationships between the two sets of recesses.

  2. For the '504 design patent, a key question will be the application of the ordinary observer test in an e-commerce context: Would an ordinary online shopper, giving the attention typical of a consumer for such goods, be deceived into thinking Defendants' products are Plaintiff's patented design? The complaint's focus on online sales channels, where physical inspection is impossible, will likely be a significant factor in this analysis.

  3. A critical evidentiary question will be one of copying and intent: Plaintiff repeatedly alleges that Defendants engaged in "copying" and "deliberate" infringement. The strength of the willfulness and indirect infringement claims will depend on what evidence Plaintiff can produce to show that Defendants had pre-suit knowledge of the patents and intentionally copied the patented technology and design, rather than arriving at a similar product through independent development.