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; The Dacus Firm, P.C.
- Case Identification: 6:22-cv-00777, W.D. Tex., 11/30/2022
- Venue Allegations: Venue is alleged to be proper because the Defendant is an alien corporation, over which the court has personal jurisdiction.
- Core Dispute: Plaintiff alleges that Defendant’s do-it-yourself (DIY) artificial eyelash extension products, along with the methods for making and applying them, infringe five patents related to lash extensions composed of multi-hair clusters that are applied underneath the natural lash line.
- Technical Context: The technology concerns consumer-applied artificial eyelash extensions that aim to replicate a professional, salon-quality appearance by using small segments of lashes applied beneath, rather than on top of, the user's natural lashes.
- Key Procedural History: The operative pleading is a Second Amended Complaint. The complaint references Defendant’s Answer to a prior version of the complaint, suggesting that certain of Plaintiff’s allegations regarding false advertising are based on Defendant’s own denials of its manufacturing and design capabilities.
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 |
| 2022-05-17 | U.S. Patent No. 11,330,855 Issues |
| 2022-06-28 | Earliest Alleged Sale of Accused Products |
| 2022-11-30 | Second Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,219,260 - "Artificial Lash Extensions"
Issued January 11, 2022
The Invention Explained
- Problem Addressed: The patent’s background describes conventional eyelash extensions as requiring a time-consuming and costly one-by-one application by a professional cosmetician. It also notes that full "strip lashes" can be uncomfortable and are easily distinguishable from natural lashes. (’260 Patent, col. 1:26-51).
- The Patented Solution: The invention is an artificial lash extension system comprised of multiple small clusters of artificial hairs that are fused together by heat at a thin, lightweight base. These segments, or "lash fusions," are designed to be applied to the underside of an individual's natural lashes, which allows them to blend more seamlessly and be applied more quickly than traditional extensions. (’260 Patent, Abstract; col. 3:1-16).
- Technical Importance: This design enables a do-it-yourself application that can achieve a salon-quality result without the time, cost, or professional assistance previously required. (Compl. ¶37).
Key Claims at a Glance
- Independent Claim Asserted: Claim 1. (Compl. ¶76).
- Essential Elements of Claim 1:
- A plurality of lash extensions.
- Each lash extension comprises a plurality of clusters of artificial hairs, with each cluster having at least two hairs.
- A base, where the clusters are attached to the base by at least an application of heat.
- The hairs protrude from the base, and at least some hairs of a cluster are coupled to one another at a respective part of the base.
- The base is designed to attach the lash extension to an underside of natural lashes.
- The complaint reserves the right to assert additional claims.
U.S. Patent No. 11,253,020 - "Artificial Lash Extensions"
Issued February 22, 2022
The Invention Explained
- Problem Addressed: As with the related ’260 Patent, this patent addresses the technical challenges of applying artificial eyelashes, noting that individual lash extensions must be applied one-by-one to avoid sticking together, a process that can take hours. (’020 Patent, col. 1:26-34).
- The Patented Solution: The patent describes a system of lash extensions comprised of clusters of artificial hairs where at least two hairs in each cluster are connected to one another at a base via heat. The extensions are specifically designed to be attached adjacent to one another on the underside of a natural lash, facilitating a faster and more natural-looking application. (’020 Patent, Abstract; col. 10:2-11).
- Technical Importance: The invention aims to provide a method for creating and applying lash extensions in segments, which is more efficient for consumers than traditional single-lash applications. (Compl. ¶37).
Key Claims at a Glance
- Independent Claim Asserted: Claim 1. (Compl. ¶85).
- Essential Elements of Claim 1:
- A plurality of lash extensions designed to attach adjacent to one another at an underside of natural lashes.
- Each extension comprises a plurality of clusters of artificial hairs, with each cluster having at least two hairs.
- A base from which the hairs of each cluster protrude.
- At least two hairs of each cluster are connected to one another at the base by at least an application of heat.
- The complaint reserves the right to assert additional claims.
U.S. Patent No. 11,330,856 - "Artificial Lash Extensions"
Issued May 17, 2022
- Technology Synopsis: This patent claims an artificial lash extension where adjacent clusters of artificial hairs are constructed with an "intersecting portion." At this intersection, at least one hair from a first cluster crosses a hair from a second cluster, and the clusters are connected at this point, allegedly by heat. (Compl. ¶95).
- Asserted Claims: At least Claim 1. (Compl. ¶94).
- Accused Features: The structure of Defendant's multi-cluster lash extensions, which allegedly feature intersecting and crossing hairs between adjacent clusters. (Compl. ¶95).
U.S. Patent No. 11,234,472 - "Artificial Lash Extensions"
Issued February 1, 2022
- Technology Synopsis: This patent claims a method of manufacturing artificial lash extensions. The method involves forming clusters of multiple artificial hairs and then performing an attachment process that includes applying heat to attach the clusters to a base, with the resulting product designed for application to the underside of natural lashes. (Compl. ¶104).
- Asserted Claims: At least Claim 1. (Compl. ¶103).
- Accused Features: The manufacturing method allegedly practiced by Defendant to create its accused lash extension products. (Compl. ¶104).
U.S. Patent No. 11,330,855 - "Method of Applying Artificial Lash Extensions"
Issued May 17, 2022
- Technology Synopsis: This patent claims a method of applying artificial lash extensions to a user. The method comprises the steps of applying an adhesive, arranging one or more lash extensions at the underside of the natural eyelashes, and affixing the extensions to the underside of the natural eyelashes. (Compl. ¶113).
- Asserted Claims: At least Claim 1. (Compl. ¶112).
- Accused Features: Defendant's instructions for applying the accused products, as promoted through advertisements and instructional videos. (Compl. ¶113).
III. The Accused Instrumentality
- Product Identification: The accused products are Defendant’s DIY lash extension product lines, including the Hollyren Melted Flare Lashes, DIY Lash Kit Cluster Eyelash Extension, Superfine Band Clusters extensions, and other similar "DIY" products. (Compl. ¶2). The complaint also accuses the methods of manufacturing these products and the methods of application taught to end-users. (Compl. ¶¶104, 113).
- Functionality and Market Context: The accused products are described as consumer-focused artificial eyelash extensions sold in kits that include lash segments, an applicator, and a bond. (Compl. ¶54). The complaint alleges these products are made of synthetic fibers and are marketed to be placed under a consumer's natural lash line to mimic the appearance of Plaintiff's products. (Compl. ¶55). The complaint includes a screenshot from Defendant's Alibaba page showing transaction details for sales into the United States. (Compl. ¶25).
IV. Analysis of Infringement Allegations
U.S. Patent No. 11,219,260 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a 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 a plurality of artificial lash extensions comprising a plurality of clusters of artificial hairs with each cluster having at least two artificial hairs. | ¶77 | col. 9:6-10 |
| and a base, wherein the plurality of clusters are attached to the base by at least an application of heat, wherein the at least two artificial hairs of each of the plurality of clusters protrude from the base, | The lash extensions comprise a base from which the clusters protrude and are allegedly attached to the base by an application of heat, based on the synthetic material used. | ¶77 | col. 9:11-15 |
| 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. | ¶77 | col. 9:15-18 |
| and wherein the base is designed to at least attach the lash extension to an underside of natural lashes. | The bases of the accused extensions are allegedly designed to attach to the underside of natural lashes. | ¶77 | col. 9:19-22 |
U.S. Patent No. 11,253,020 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 lash extensions are allegedly designed to attach adjacent to one another on the underside of a natural lash. | ¶86 | col. 10:2-4 |
| 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 lash extensions include a plurality of clusters, each comprising at least two artificial hairs made of synthetic material. | ¶86 | col. 10:5-6 |
| and a base from which the at least two artificial hairs of each of the plurality of clusters protrude, wherein at least two hairs of each cluster are connected to one another at the base by at least an application of heat. | The accused lash extensions comprise a base from which the hairs protrude, and the hairs are allegedly connected at the base by an application of heat. | ¶86 | col. 10:7-11 |
Identified Points of Contention
- Evidentiary Question: The allegations that the accused products are made using an "application of heat" are stated "upon information and belief" and are inferred from the use of synthetic materials. (Compl. ¶¶77, 86). A central factual question will be what evidence discovery provides about Defendant’s actual manufacturing process and whether it meets this claim limitation.
- Scope Question: For the product patents (e.g., ’260 and ’020), a potential dispute may arise over whether the "base" is a structure formed by the application of heat to the hairs themselves, as described in embodiments in the specification, or if it can be a separate spine component to which clusters are attached. (e.g., ’260 Patent, col. 3:1-4).
V. Key Claim Terms for Construction
The Term: "application of heat"
- Context and Importance: This term is a critical limitation in the independent claims of the product patents (’260, ’020, ’856) and the manufacturing method patent (’472). Whether Defendant’s process infringes will depend heavily on the construction of this term. Practitioners may focus on this term because the complaint's allegations regarding its satisfaction are based on inference rather than direct knowledge.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain language "application of heat" is facially broad and is not explicitly limited in the claims to a specific temperature or method.
- Evidence for a Narrower Interpretation: The specification repeatedly describes a "hot melt method" or "heat seal process" where synthetic fibers are heated to a temperature sufficient to "begin to melt" and "fuse to one another." (’260 Patent, col. 7:34-47). A defendant may argue that this context limits the claim term to a process that involves melting or fusing, rather than simply heating.
The Term: "base"
- Context and Importance: The structure of the "base" and how it is formed is central to the product claims. The dispute may turn on whether the accused product's band is a "base" to which clusters are attached "by at least an application of heat," or whether the claim requires the base itself to be formed by that heat application.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "base" is used generally, and the claims require only that the clusters are "attached to the base" by heat, which could be read to cover attaching clusters to a pre-existing spine or band.
- Evidence for a Narrower Interpretation: The specification states that a "lash fusion" includes multiple clusters "fused together near the inner ends... (also referred to as the "base" of the lash fusion)". (’260 Patent, col. 3:1-4). This language may support an interpretation that the "base" is the integral, fused portion of the hairs themselves, not a separate component.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement of the ’855 method patent. The allegations are based on Defendant promoting its products and providing instructions, such as on YouTube, that allegedly direct end-users to perform the claimed method of applying the lashes to the underside of their natural eyelashes. (Compl. ¶¶112-113). The complaint provides a screenshot from an instructional video showing the text "Step 2: Place the cluster eyelashes under the upper natural eyelashes." (Compl. p. 27).
- Willful Infringement: Willfulness is alleged for all five patents. The complaint alleges that Defendant had knowledge of Lashify's patented products and patent portfolio and acted despite an objectively high likelihood that its actions constituted infringement. (Compl. ¶¶80, 89, 98, 107, 116). The allegations are also based on actual notice from the filing of the complaint.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: how broadly will the court define "application of heat"? The viability of infringement claims for four of the five patents may depend on whether the term is construed to cover any manufacturing process involving heat or is limited to a specific "fusion" or "melting" process as detailed in the patent specifications.
- A key evidentiary question will be one of technical proof: what evidence will Plaintiff uncover in discovery to substantiate its "information and belief" allegations regarding Defendant's manufacturing process? The case for direct infringement of the product and manufacturing method patents will likely turn on the technical details of how the accused products are actually made.
- A central question for the method of application patent (’855 Patent) will be one of induced infringement: do Defendant's instructional videos and marketing materials demonstrate the specific intent required to encourage customers to perform all steps of the claimed method, thereby infringing the patent?