DCT
6:22-cv-00777
Lashify Inc v. Qingdao HOLLYREN Cosmetics Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Lashify, Inc. (Delaware)
- Defendant: Qingdao Hollyren Cosmetics Co., Ltd. d/b/a Hollyren (China)
- Plaintiff’s Counsel: Fenwick & West LLP
- Case Identification: 6:22-cv-00777, W.D. Tex., 07/12/2022
- Venue Allegations: Venue is alleged to be proper because the defendant is an alien corporation, and the court is alleged to have personal jurisdiction based on targeted sales, offers for sale, and importation of accused products into the United States, including Texas.
- Core Dispute: Plaintiff alleges that Defendant’s do-it-yourself (DIY) artificial eyelash extension systems infringe four U.S. patents related to the structure and manufacturing methods of multi-cluster lash extensions designed for application underneath natural lashes.
- Technical Context: The technology occupies a segment of the cosmetics industry focused on providing consumers with a method for at-home application of eyelash extensions that aims to replicate the appearance of professional salon applications.
- Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2016-07-28 | Earliest Priority Date for all Patents-in-Suit |
| 2022-01-11 | U.S. Patent No. 11,219,260 Issues |
| 2022-02-01 | U.S. Patent No. 11,234,472 Issues |
| 2022-02-22 | U.S. Patent No. 11,253,020 Issues |
| 2022-05-17 | U.S. Patent No. 11,330,856 Issues |
| 2022-07-12 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,219,260 - “Artificial Lash Extensions”
The Invention Explained
- Problem Addressed: The patent’s background section notes that conventional eyelash extensions must be applied one-by-one by a professional, a process that is time-consuming and costly, while full "strip lashes" applied to the eyelid are often uncomfortable and easily distinguishable from natural lashes (’260 Patent, col. 1:26-51).
- The Patented Solution: The invention is an artificial lash extension system comprising small segments, or "fusions," each containing multiple "clusters" of artificial hairs (’260 Patent, col. 2:57-61). These clusters are connected at a thin base, formed by applying heat, which allows the segment to be applied as a single unit to the underside of a user's natural eyelashes, creating a more seamless and natural appearance than traditional strip lashes (’260 Patent, Abstract; col. 2:18-24).
- Technical Importance: This under-lash, multi-cluster segment approach enables faster, at-home application of extensions that are lighter and appear more integrated with the natural lash line than prior art alternatives (Compl. ¶34, 39).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶58).
- Claim 1 of the ’260 Patent recites:
- An artificial lash extension system comprising a plurality of lash extensions.
- Each lash extension comprises a plurality of clusters of artificial hairs, with each cluster having at least two artificial hairs.
- Each lash extension also comprises a base, where the clusters are attached to the base by at least an application of heat.
- The artificial hairs of each cluster protrude from the base, and at least some hairs of at least one cluster are coupled to one another at a respective part of the base.
- The base is designed to at least attach the lash extension to an underside of natural lashes.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 11,253,020 - “Artificial Lash Extensions”
The Invention Explained
- Problem Addressed: The patent addresses the same technical problems as the ’260 Patent: the time, cost, and professional skill required for single-lash extensions and the unnatural appearance and discomfort of traditional strip lashes (’020 Patent, col. 1:26-51).
- The Patented Solution: The ’020 Patent also describes a system of lash extensions made of multiple clusters of artificial hairs joined at a base (’020 Patent, Abstract). The key inventive concept, consistent with the ’260 Patent, is the creation of small, multi-cluster lash segments formed by a heat application process and designed specifically for attachment to the underside of the natural lash line, allowing for adjacent placement to build a custom look (’020 Patent, col. 2:18-24).
- Technical Importance: This technology aims to provide a modular, user-friendly system for achieving the aesthetic of professional lash extensions without the associated time and expense (Compl. ¶34, 39).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶67).
- Claim 1 of the ’020 Patent recites:
- An artificial lash extension system comprising a plurality of lash extensions designed to attach adjacent to one another at an underside of natural lashes.
- Each lash extension comprises a plurality of clusters of artificial hairs, with each cluster having at least two artificial hairs.
- Each lash extension also comprises a base from which the hairs of each cluster protrude.
- At least some of the artificial hairs are connected to one another at a respective part of the base by at least an application of heat.
- The complaint does not explicitly reserve the right to assert dependent claims.
Multi-Patent Capsule: U.S. Patent No. 11,330,856 - “Artificial Lash Extensions”
- Technology Synopsis: This patent focuses on the structural relationship between adjacent clusters within a lash extension. The invention describes an arrangement where artificial hairs from a first cluster and a second cluster cross over one another at an "intersecting portion" and are connected by heat at that intersection, which creates a seamless and durable lash line (’856 Patent, Abstract; col. 2:5-15).
- Asserted Claims: At least independent claim 1 (Compl. ¶76).
- Accused Features: The complaint alleges that the accused products feature adjacently aligned clusters where hairs from different clusters intersect and are connected, allegedly by an application of heat (Compl. ¶77).
Multi-Patent Capsule: U.S. Patent No. 11,234,472 - “Artificial Lash Extensions”
- Technology Synopsis: This patent claims a method of manufacturing artificial lash extensions, rather than the product itself. The claimed method involves forming a plurality of clusters with multiple artificial hairs and performing an "attachment process" that includes applying heat to at least a portion of the clusters to attach them to a base designed for under-lash application (’472 Patent, Abstract; Claim 1).
- Asserted Claims: At least independent claim 1 (Compl. ¶85).
- Accused Features: The complaint alleges that Hollyren practices the claimed manufacturing method to create the Accused Products, which are said to embody the structural limitations recited in the patent's claims (Compl. ¶86).
III. The Accused Instrumentality
- Product Identification: The accused instrumentalities are Defendant Hollyren’s "DIY lash extension product lines," including but not limited to the "Hollyren Melted Flare Lashes, DIY Lash Kit Cluster Eyelash Extension, Superfine Band Clusters extensions," and other products identified with a "DD" or as "DIY" (Compl. ¶1).
- Functionality and Market Context: The complaint alleges the Accused Products are artificial eyelash extension systems sold in kits that include lash extensions, an applicator, and bond (Compl. ¶49). The extensions are described as comprising clusters of synthetic hairs and are marketed for application underneath the user's natural lash line (Compl. ¶50). The complaint provides a screenshot from an Alibaba product page showing transaction details for "Self Apply Diy Lash Ribbon Super-fine band Cluster Lash" with shipping destinations in the United States, offered as evidence of sales into the country (Compl. ¶22). Hollyren is also alleged to promote these products through instructional videos on a YouTube channel (Compl. ¶23, 27).
IV. Analysis of Infringement Allegations
11,219,260 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a plurality of lash extensions, each of the plurality of lash extensions comprising: a plurality of clusters of artificial hairs, each of the plurality of clusters comprising at least two artificial hairs; | The Accused Products include multiple artificial lash extensions, each comprising groupings of synthetic hairs that constitute clusters, with each cluster having at least two hairs. | ¶59 | col. 2:18-21 |
| and a base, wherein the plurality of clusters are attached to the base by at least an application of heat, | The lash extensions are alleged to have a base to which the clusters are attached, and upon information and belief, this attachment is accomplished by applying heat to the synthetic material. | ¶59 | col. 2:21-22 |
| wherein the at least two artificial hairs of each of the plurality of clusters protrude from the base, | The hairs in the clusters protrude from the base of the extensions. | ¶59 | col. 2:22-24 |
| wherein at least some of the artificial hairs of at least one of the plurality of clusters are coupled to one another at a respective part of the base, | Within the clusters of the Accused Products, at least some of the artificial hairs are allegedly coupled to one another at a respective part of the base. | ¶59 | col. 2:24-26 |
| and wherein the base is designed to at least attach the lash extension to an underside of natural lashes. | The bases of the extensions are alleged to be designed for attachment to the underside of the natural lashes. | ¶59 | col. 2:26-28 |
11,253,020 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a plurality of lash extensions designed to attach adjacent to one another at an underside of natural lashes, | The Accused Products include multiple lash extensions designed to be attached next to each other on the underside of a natural lash. | ¶68 | col. 2:18-20 |
| each of the plurality of lash extensions comprising: a plurality of clusters of artificial hairs comprising at least two artificial hairs; | Each extension is alleged to comprise groupings of synthetic hairs that constitute clusters, with each cluster having at least two hairs. | ¶68 | col. 2:20-22 |
| and a base from which at least two hairs of each cluster protrude, wherein at least some of the artificial hairs are connected to one another at a respective part of the base by at least an application of heat. | The lash extensions are alleged to have a base from which the hairs protrude, and upon information and belief, the hairs are connected at the base by an application of heat to the synthetic material. | ¶68 | col. 2:22-26 |
- Identified Points of Contention:
- Scope Questions: The infringement analysis for the product patents (’260, ’020, and ’856) may turn on the definition of a "base." The patents describe forming a base via the fusion of the hair clusters themselves. The dispute may raise the question of whether this term can be construed to read on a structure where hair clusters are attached to a separate, pre-existing spine or band, even if heat is used in that attachment process.
- Technical Questions: For the method patent (’472), a central question will be what evidence demonstrates that Hollyren's manufacturing process involves the specific step of "applying heat to at least a portion of the plurality of the clusters to attach the clusters to the base." The complaint alleges this "upon information and belief," which suggests that direct evidence of the accused manufacturing method may be a focal point of discovery (Compl. ¶86).
V. Key Claim Terms for Construction
The Term: "base"
Context and Importance: This term is the structural anchor for all asserted product claims. How the "base" is defined and formed is critical. If construed narrowly to mean only a structure formed by the melting and fusing of the artificial hairs themselves, it may not cover products where clusters are affixed to a separate filament or band. Practitioners may focus on this term because the distinction between a fused-fiber base and a fiber-on-band construction is a primary technical differentiator in this product space.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Claim 1 of the ’260 Patent recites that clusters are "attached to the base," which does not explicitly require the base to be formed from the clusters. The claim separately requires the attachment to be by "an application of heat."
- Evidence for a Narrower Interpretation: The specification repeatedly describes a "hot melt process" where linear artificial lashes are heated "such that they begin to fuse to one another at that end" (’260 Patent, col. 2:48-51). Claim 6 of the ’260 Patent, a dependent claim, recites that "the base is formed by at least the application of heat," suggesting this is a key feature of the invention that could be used to narrow the scope of the independent claim.
The Term: "application of heat"
Context and Importance: This limitation is central to the product claims and is the core of the asserted method claim (’472 Patent, Claim 1). Its construction will determine what manufacturing processes infringe. The question is whether it is limited to a direct heat-sealing process that melts the fibers together, or if it could also cover processes like heat-curing an adhesive.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language is facially broad and does not specify the purpose or outcome of the heat application beyond attachment.
- Evidence for a Narrower Interpretation: The specification states that the "hot melt method requires that the multiple artificial hairs be heated to a temperature that is sufficient to cause the individual lashes to begin to melt" (’260 Patent, col. 7:35-38). This language may support an interpretation requiring partial melting and fusion of the fibers themselves, not merely curing an external agent.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement, stating that Hollyren publishes and makes accessible in the United States videos on its YouTube channel that provide instructions on how to apply the Accused Products in an infringing manner (Compl. ¶23, 27).
- Willful Infringement: Willfulness is alleged based on both pre- and post-suit knowledge. The complaint alleges that Hollyren had pre-suit knowledge of Lashify and its patented products for years, including by purchasing Lashify's products before launching its own and by "monitoring Lashify's patent portfolio" (Compl. ¶52, 62). Post-suit knowledge is established by the filing of the complaint, which provides actual notice of the patents-in-suit (Compl. ¶57, 66).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope and construction: can the term "base," as described in the patents through a "hot melt process" where fibers fuse together, be construed to cover the structure of the Accused Products, which may utilize a different construction, such as attaching fiber clusters to a separate band?
- A key evidentiary question will center on the accused manufacturing process for the ’472 method patent. As the complaint's allegations are based on "information and belief," the case will likely involve significant discovery focused on establishing whether Hollyren's actual manufacturing methods meet the "application of heat" limitation as claimed.
- A central question for damages will be willfulness and intent: can Lashify prove its allegations that Hollyren deliberately copied its system after analyzing its products and monitoring its patent portfolio, thereby establishing the egregious conduct necessary for an enhancement of damages?