AST Design v. Prime Time

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: AST DESIGN, LLC and AS DESIGN, LLC, d/b/a MARIA SHIREEN (California)
  • Defendant: Prime Time NYC LLC (New York)
  • Plaintiff’s Counsel: Workman Nydegger
• Case Identification: 2:18-cv-00675, D. Utah, 08/29/2018
• Venue Allegations: Plaintiff alleges venue is proper in the District of Utah because Defendant has offered for sale and sold infringing products within the state, thereby purposely availing itself of the privilege of conducting business in Utah.
• Core Dispute: Plaintiff alleges that Defendant’s hair tie bracelets infringe three patents related to versatile jewelry designed to hold hair accessories.
• Technical Context: The technology concerns fashion accessories, specifically bracelets designed with a channel to hold an elastic hair tie, preventing it from digging into the wearer's wrist while serving as a stylish carrier.
• Key Procedural History: The complaint notes that the ’304 Patent was the subject of an ex parte reexamination, which concluded on July 2, 2018. The USPTO confirmed the patentability of several claims, including the asserted Claim 21, in an amended form. This proceeding may strengthen the patent’s presumption of validity but could also introduce arguments of prosecution history estoppel, potentially limiting the scope of the amended claims under the doctrine of equivalents.

Case Timeline

Date	Event
2013-09-24	Earliest Priority Date for ’304, ’076, and ’413 Patents
2016-12-27	U.S. Patent No. 9,526,304 Issues
2017-09-26	U.S. Patent No. 9,770,076 Issues
2017-10-03	U.S. Patent No. 9,775,413 Issues
2018-07-02	’304 Patent Reexamination Certificate Issued
2018-08-29	Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,526,304 - "Versatile Jewelry," Issued Dec. 27, 2016

The Invention Explained

• Problem Addressed: The patent identifies the common practice of wearing an elastic hair tie on the wrist for convenience, which can be aesthetically unpleasing, create uncomfortable pressure marks, and potentially restrict blood circulation ( Compl. ¶8; ’304 Patent, col. 1:29-39).
• The Patented Solution: The invention is a rigid or semi-rigid cuff-style bracelet featuring an external, circumferential groove. This groove is designed to hold the elastic hair tie, lifting it off the skin to distribute its compressive force across the solid structure of the bracelet, thereby solving both the comfort and aesthetic problems (’304 Patent, Abstract; col. 2:6-12). The open-cuff design is also described as making it easy to place the bracelet on the wrist and remove the hair tie (’304 Patent, col. 2:13-19).
• Technical Importance: The design provides a dual-function accessory that merges the practicality of carrying a hair tie with the aesthetics of fashion jewelry, addressing a specific, widely experienced inconvenience for consumers (’304 Patent, col. 1:35-42).

Key Claims at a Glance

• The complaint asserts independent Claim 21 (Compl. ¶16). This claim was amended during reexamination (Compl. ¶10).
• Essential elements of Claim 21:
  • A semi-rigid or rigid main body arranged to extend over a user's wrist, defining an inner surface, an outer surface, and first and second end portions with a clearance.
  • A circumferential groove in the outer surface with a bottom and sidewalls.
  • A hair band adapted to be selectively disposed within the groove and to span the clearance at a height above the inner surface.
  • The sidewalls are arranged to substantially hold the hair band in place.
  • The hair band has an elasticity, and the main body has a rigidity arranged to resist the elasticity of the hair band without deformation and distribute pressure away from the wrist.

U.S. Patent No. 9,770,076 - "Versatile Jewelry," Issued Sep. 26, 2017

The Invention Explained

• Problem Addressed: The patent addresses the same problem as the ’304 Patent: the physical discomfort and unattractive appearance resulting from wearing a taut elastic hair band directly on the wrist (’076 Patent, col. 1:29-39).
• The Patented Solution: The invention is a piece of versatile jewelry, such as a bracelet, with a rigid or semi-rigid main body that includes a retaining feature like a groove. This structure is designed to hold a hair accessory, with the bracelet's rigidity resisting the elastic force of the accessory to prevent pressure on the wrist (’076 Patent, Abstract; col. 2:36-50).
• Technical Importance: This patent, like its family members, provides a functional and aesthetic solution for individuals who frequently wear hair ties on their wrists for convenience (’076 Patent, col. 1:19-28).

Key Claims at a Glance

• The complaint asserts independent Claim 1 (Compl. ¶20).
• Essential elements of Claim 1:
  • A semi-rigid or rigid main body arranged to extend over a user's wrist, defining an inner surface, an outer surface, and first and second end portions with a clearance.
  • A circumferential groove formed in the outer surface.
  • At least one hair accessory adapted to be selectively disposed within the groove and to span the clearance.
  • The hair accessory has an elasticity, and the main body has a rigidity arranged to resist the elasticity of the hair accessory without deformation of the main body and to distribute pressure away from the wrist.

U.S. Patent No. 9,775,413 - "Versatile Jewelry," Issued Oct. 3, 2017

• Technology Synopsis: This patent is part of the same family and covers similar subject matter. It describes a piece of jewelry, such as an open-cuff bracelet, with a circumferential groove designed to hold a hair band. The rigid structure of the bracelet lifts the elastic band off the wearer’s wrist, distributing its pressure and serving as an aesthetic carrier (’413 Patent, Abstract; col. 2:36-50).
• Asserted Claims: Independent Claim 1 is asserted (Compl. ¶24).
• Accused Features: The complaint accuses Defendant's "hair tie bracelets" of infringement, without providing further detail (Compl. ¶13).

III. The Accused Instrumentality

• Product Identification: The complaint identifies the accused instrumentalities as "hair tie bracelets" that are manufactured, used, imported, exported, offered for sale, and/or sold by Defendant Prime Time NYC LLC (Compl. ¶13).
• Functionality and Market Context: The complaint does not provide specific details regarding the technical functionality, design, or materials of the Accused Products. It alleges that the products infringe by embodying the claimed inventions and refers to claim charts in Exhibits E, F, and G, which were not attached to the filed complaint document (Compl. ¶13). Similarly, no information is provided regarding the products' commercial importance or market position, other than that Defendant sells products to companies throughout the United States (Compl. ¶12). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint alleges that Defendant’s "Accused Products" directly, contributorily, and/or inducedly infringe at least Claim 21 of the ’304 Patent, Claim 1 of the ’076 Patent, and Claim 1 of the ’413 Patent, both literally and under the doctrine of equivalents (Compl. ¶¶ 16, 20, 24). However, the complaint lacks specific factual allegations detailing how the accused bracelets meet each limitation of the asserted claims. It references claim chart exhibits that were not included with the public filing, preventing a detailed, element-by-element analysis of the infringement theory (Compl. ¶13).

• Identified Points of Contention:
  • Factual Questions: A central question will be one of evidence. Without the claim charts or product descriptions, it is unknown what evidence Plaintiff possesses to show that the accused bracelets contain every element of the asserted claims, particularly the specific geometry of the groove and the required rigidity of the main body.
  • Scope Questions: The infringement analysis will depend heavily on the interpretation of functional language in the claims. For example, does an accused bracelet "resist the elasticity... without deformation" as required by the claims if it exhibits any degree of flex? The answer will depend on claim construction.

V. Key Claim Terms for Construction

• The Term: "substantially hold" (from ’304 Patent, Claim 21)

  • Context and Importance: This term defines the required function of the groove’s sidewalls. Its construction is critical because it determines how effectively the bracelet must constrain the hair band to infringe. Practitioners may focus on this term because its ambiguity could be a central point of dispute over whether the accused product's groove performs the same function in the same way as the patent requires.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the purpose of the bracelet as a "carrier to maintain hair accessories" (’304 Patent, col. 1:5-7), which may support an interpretation that "substantially hold" only requires general retention sufficient to carry the band without it easily falling off.
    • Evidence for a Narrower Interpretation: The detailed description specifies that the flatness of the groove's bottom portion and perpendicularity of its sidewalls "reduces the likelihood of the hair accessory 704 forcing or pulling itself toward one side" (’304 Patent, col. 9:12-19). This may support a narrower construction requiring a more secure hold that actively prevents lateral movement within the groove.

• The Term: "without deformation" (from ’304 Patent, Claim 21 and ’076 Patent, Claim 1)

  • Context and Importance: This term qualifies the "rigidity" of the main body. Its construction is vital because a literal, absolute interpretation would mean any product that flexes at all would not infringe. A defendant will likely argue for such a strict interpretation.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader (functional) Interpretation: The patent’s objective is to "distribute pressure from the hair band away from the wrist" (’304 Patent, col. 11:28-30). A plaintiff could argue that "without deformation" should be interpreted functionally to mean without any deformation that would compromise this pressure-distributing function.
    • Evidence for a Narrower (absolute) Interpretation: The plain meaning of the words suggests an absolute lack of deformation. Furthermore, the specification for the related ’076 Patent describes that the main body can be "malleable or resilient" (’076 Patent, col. 8:43-44), creating potential tension with a claim requiring it to resist force "without deformation." A defendant may use this language to argue that the patentee knew how to describe a flexible body and deliberately chose more restrictive language for the claim.

VI. Other Allegations

• Indirect Infringement: The complaint includes conclusory allegations of contributory and induced infringement for all three patents-in-suit (Compl. ¶¶ 16, 20, 24). However, it does not plead specific facts to support the required elements of knowledge and intent, such as referencing defendant’s advertising, product instructions, or other materials that would allegedly encourage infringing uses by third parties.

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

1. Evidentiary Sufficiency: The primary hurdle for the plaintiff will be demonstrating that the accused products meet every limitation of the asserted claims. As the complaint lacks specific factual allegations and relies on un-provided exhibits, a key question is whether discovery will produce evidence of a structural and functional match between the accused bracelets and the patent claims.

2. Claim Scope and the Impact of Reexamination: The case will likely turn on the construction of key functional terms like "substantially hold" and "without deformation". A narrow construction could allow the defendant to design around the patents or argue non-infringement. Furthermore, the ex parte reexamination of the ’304 Patent, which resulted in an amended asserted claim, will be a focal point. The court will need to determine whether the amendments create prosecution history estoppel that limits the plaintiff's ability to claim infringement under the doctrine of equivalents for that patent.