DCT
2:24-cv-00016
Lashify Inc v. Pro Lash Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Lashify Inc (Delaware)
- Defendant: Pro Lash Inc (Utah); Bella Lash Extensions LLC d/b/a Pro Lash (Utah); Zachary Chipman; Haley Chipman
- Plaintiff’s Counsel: Lahti Helfgott; TYZ Law Group
- Case Identification: 2:24-cv-00016, D. Utah, 01/05/2024
- Venue Allegations: Venue is alleged to be proper in the District of Utah because Defendants reside or have their principal place of business in the district and have committed the alleged infringing acts there.
- Core Dispute: Plaintiff alleges that Defendant’s do-it-yourself eyelash extension applicator tools infringe utility and design patents covering an eyelash applicator.
- Technical Context: The technology resides within the do-it-yourself (DIY) cosmetic market, specifically concerning ergonomic tools designed for applying artificial eyelash extensions.
- Key Procedural History: The complaint alleges that Plaintiff sent a cease-and-desist letter to Defendants on October 6, 2023. It further alleges that Defendants were aware of Lashify's patent portfolio, citing an admission from Defendant Zachary Chipman that he had studied Lashify's patents prior to the lawsuit. These allegations form the basis for a claim of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2016-12-20 | Earliest Priority Date for U.S. Patent No. 11,278,102 |
| 2017-11-01 | Lashify begins selling its Control Kit® and related products |
| 2021-03-01 | Defendant Zachary Chipman allegedly first purchases Lashify products |
| 2022-01-05 | Defendants launch Pro Lash Instagram account |
| 2022-03-22 | U.S. Patent No. 11,278,102 Issues |
| 2023-02-01 | Lashify launches its patented Birdie Wand™ |
| 2023-08-15 | U.S. Patent No. D995,914 Issues |
| 2023-10-06 | Lashify sends cease-and-desist letter to Defendants |
| 2024-01-05 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,278,102: Applicator for Artificial Lash Extensions (Issued Mar. 22, 2022)
The Invention Explained
- Problem Addressed: The patent's background describes conventional methods of applying eyelash extensions—either individually by a professional or as uncomfortable "strip lashes"—as time-consuming, expensive, and often resulting in an unnatural appearance ('102 Patent, col. 1:24-51).
- The Patented Solution: The invention is an applicator tool with opposed arms that have a unique, non-linear curvature. This shape is specifically contoured to match the curvature of the human tightline (the inner rim of the eyelid), enabling a user to pick up and apply an entire set of pre-arranged lash segments to the underside of the natural lashes in a single, fluid motion ('102 Patent, col. 3:5-19, Fig. 5A).
- Technical Importance: The tool's specific ergonomics were designed to overcome the difficulty of self-applying lash extensions, particularly for the novel under-lash method, thereby making a professional-style result accessible to at-home consumers ('102 Patent, col. 6:18-22).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶83).
- Essential elements of independent claim 1 include:
- An applicator with a pair of opposing arms joined at a hinge.
- Each arm is composed of a first, second, and third section.
- The third section has a curvature and forms the tip of the applicator.
- The curvature of the third section is "contoured to align substantially flush with a shape of a tightline."
- The third sections are designed to grasp artificial lash hairs when pressure is applied to the arms.
U.S. Patent No. D995,914: Combined Tweezer and Applicator for Artificial Lash Extensions (Issued Aug. 15, 2023)
The Invention Explained
- Problem Addressed: Standard tweezers lack the specific ergonomics and aesthetic design suitable for the precise and delicate task of applying artificial lash extensions to one's own eye.
- The Patented Solution: This design patent protects the unique ornamental appearance of an eyelash applicator. The claimed design features a distinctive, fluid, and continuous S-shaped profile, a textured grip area on the widest part of the arms, and uniquely shaped tips ('914 Patent, Figs. 1-8).
- Technical Importance: The design provides a unique aesthetic identity and ergonomic form factor that distinguishes it from conventional cosmetic tools (Compl. ¶94).
Key Claims at a Glance
- The complaint asserts infringement of the single claim of the design patent (Compl. ¶93).
- The claim covers "The ornamental design for a combined tweezer and applicator for artificial lash extensions, as shown and described" ('914 Patent, Claim). Its key visual elements include:
- The overall fluid, S-curved profile of the applicator body.
- The specific shape and angle of the applicator tips.
- The placement and appearance of a textured grip surface.
- The holistic visual impression created by the combination of these features as depicted in the patent's figures.
III. The Accused Instrumentality
- Product Identification: The accused products are Pro Lash's “Mini Pro Curve Tweezer” and a "new full-size, white tweezer applicator product," which the complaint collectively refers to as the "Accused Applicators" (Compl. ¶5, ¶62, ¶84).
- Functionality and Market Context: The Accused Applicators are tools for applying DIY artificial eyelash extensions and are sold as part of the "Pro Lash Mini Kit" (Compl. ¶61). The complaint alleges that these products are central to the Defendants' business, which it characterizes as a "copycat" of the Plaintiff's system, launched after Defendants studied Lashify's products and business model (Compl. ¶4, ¶39, ¶42-47). A side-by-side comparison provided in the complaint shows Lashify's patented "Birdie Wand™" next to Pro Lash's "Mini Pro Curve Tweezers" (Compl. ¶61, p. 21).
IV. Analysis of Infringement Allegations
'102 Patent Infringement Allegations
The complaint alleges that the Accused Applicators meet every limitation of claim 1 (Compl. ¶84). The image on page 31 of the complaint explicitly maps the claimed sections onto photos of the black and white accused applicators (Compl. ¶84, p. 31).
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a pair of opposing arms that are joined to each other at one end of each arm to form a hinge... | The Accused Applicators are applicators comprising a pair of opposing arms joined at one end to form a hinge. | ¶84 | col. 5:10-12 |
| a first section... a second section... and the third section... | Each arm of the Accused Applicators is alleged to comprise a first section, a second section, and a third section, as delineated in the complaint's visual aid. | ¶84 | col. 9:12-19 |
| the third section... defining a curvature... wherein at least part of the first end portion forms a tip | The third section of the Accused Applicators is alleged to have a first and second end portion and define a curvature, with part of the first end portion forming the tip. | ¶84 | col. 9:36-40 |
| the curvature of the third section is contoured to align substantially flush with a shape of a tightline | The complaint alleges the curvature of the third section of the Accused Applicators is "contoured to align substantially flush with the shape of a tightline." | ¶84 | col. 9:41-44 |
| the third sections of the arms are designed to grasp hairs of an artificial lash extension... | The third sections of the Accused Applicators' arms are alleged to be "designed to grasp hairs of an artificial lash extension responsive to an application of pressure to the arms." | ¶84 | col. 9:44-48 |
- Identified Points of Contention:
- Scope Questions: A central dispute may arise over the meaning of "contoured to align substantially flush with a shape of a tightline." The court will have to determine whether this limitation requires a unique curvature specifically adapted for the tightline, or if it can be read more broadly to cover any generally curved tweezer.
- Technical Questions: What evidence does the complaint provide that the accused product's curve is functionally specific to the "tightline" as claimed, rather than being a generic ergonomic curve found in the prior art? The resolution may depend on expert testimony analyzing the geometry of the respective tools.
'914 Patent Infringement Allegations
The complaint alleges that the design of the Accused Applicators is substantially similar to the ornamental design claimed in the '914 Patent, such that it would deceive an ordinary observer (Compl. ¶93-94). A visual comparison in the complaint juxtaposes an image of the patented design with the accused "Mini Pro Curve Tweezer" (Compl. ¶93, p. 34). The infringement theory rests on the assertion that the "fluid design that evokes the silhouette of a bird" is substantially similar in both products (Compl. ¶94).
- Identified Points of Contention:
- Scope Questions: The key legal question is whether the "overall design" of the accused product is "substantially similar" to the patented design. This analysis will require filtering out purely functional elements of the applicator, as design patents only protect ornamental, non-functional features.
- Technical Questions: To what extent are the similarities between the products (e.g., the curved shape) dictated by function versus ornamental choice? Defendants may argue that any resemblance is due to functional necessity for an eyelash applicator or is representative of designs in the prior art.
V. Key Claim Terms for Construction
'102 Patent
- The Term: "contoured to align substantially flush with a shape of a tightline"
- Context and Importance: This term appears to be the primary point of novelty in claim 1, distinguishing the invention from standard curved tweezers. Its construction will be critical for determining the scope of the claim and, consequently, for the infringement analysis. Practitioners may focus on this term because it links a structural feature ("contoured") to a specific, unconventional function ("align... with a shape of a tightline").
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the applicator's shape in general terms, such as having a "concave (e.g., crescent) shape" designed to "substantially complement[] the universal tightline of nearly any human eye" ('102 Patent, col. 3:13-14, col. 4:16-18). Plaintiff may argue this supports a broader construction covering a range of curvatures.
- Evidence for a Narrower Interpretation: The specification repeatedly links the applicator's shape to the specific method of applying lashes underneath the natural lashes and to fitting with a corresponding lash case ('102 Patent, col. 3:5-19, col. 6:58-65). Defendants may argue this context, along with the specific S-curve shown in figures like Fig. 5A, limits the claim to a very particular geometry not present in their product.
VI. Other Allegations
- Indirect Infringement: The complaint alleges active inducement, stating that Defendant Haley Chipman appears in social media and on the Pro Lash website "teaching use of the Pro Lash products, including using the Accused Products for application" (Compl. ¶85, ¶96). This is an allegation of instructing customers on how to use the products in an infringing manner.
- Willful Infringement: Willfulness is alleged for both patents based on both pre-suit and post-suit knowledge. The complaint alleges Defendants had knowledge by systematically studying Lashify's products and by an alleged admission from Defendant Zachary Chipman that he had "spent thousands of dollars looking at Lashify's patents" (Compl. ¶77). It also alleges actual notice via a cease-and-desist letter dated October 6, 2023 (Compl. ¶82, ¶91).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue for the utility patent will be one of functional scope: Does the claim limitation "contoured to align substantially flush with a shape of a tightline" require a specific, novel geometry tied to the under-lash application method, or can it be construed to cover the more general curvature of the accused applicators?
- A key question for the design patent will be the boundary between the ornamental and the functional: Are the similarities between the accused product and the patented design ornamental, or are they dictated by the functional requirements of an eyelash applicator? The outcome will depend on how the court views the design in light of prior art tweezers.
- A central evidentiary battle may focus on the allegations of intentional copying: The complaint's detailed narrative of Defendants studying and emulating Lashify's products, branding, and marketing will be used to support the willfulness claim and may create a powerful, if circumstantial, backdrop for the court's analysis of similarity and infringement.