DCT

2:24-cv-00016

Lashify Inc v. Pro Lash Inc

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Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:24-cv-00016, D. Utah, 12/30/2024
  • Venue Allegations: Venue is alleged to be proper in the District of Utah based on the corporate Defendants maintaining their principal place of business in the district, the individual Defendants residing in the district, and the commission of the alleged infringing acts within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s do-it-yourself (DIY) artificial eyelash extension systems and associated applicator tools infringe four patents related to the structure of lash extensions, methods of their application, and the design of applicator tools.
  • Technical Context: The technology resides in the consumer beauty market, specifically the growing segment of at-home, semi-permanent eyelash extension systems designed to provide results comparable to professional salon services.
  • Key Procedural History: The complaint alleges that in separate litigation, a jury found U.S. Patent No. 11,253,020 (the ’020 Patent) to be infringed and not invalid. It further alleges that Defendants’ supplier, in another legal proceeding, stipulated that its products infringe patents including the ’020 Patent and that the patents are valid and enforceable. Plaintiff also alleges it sent Defendants a cease-and-desist letter more than a year before filing the amended complaint, putting Defendants on actual notice of the asserted patents.

Case Timeline

Date Event
2016-07-28 Earliest Priority Date for ’020 and ’855 Patents
2016-12-20 Earliest Priority Date for ’102 Patent
2017-11-01 Lashify begins selling its Control Kit and Gossamer lashes
2021-03-01 Defendant Zachary Chipman allegedly makes first purchase of Lashify products
2022-01-01 Pro Lash business allegedly launches
2022-02-22 ’020 Patent Issued
2022-03-22 ’102 Patent Issued
2022-05-17 ’855 Patent Issued
2022-07-20 Filing Date for D’914 Patent
2023-08-15 D’914 Patent Issued
2023-10-06 Plaintiff sends cease-and-desist letter to Defendant
2024-08-23 Jury verdict in prior case finds ’020 Patent infringed and not invalid
2024-11-05 Supplier Hollyren stipulates to infringement of Lashify patents
2024-12-30 Plaintiff’s First Amended Complaint filed

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

U.S. Patent No. 11,253,020 - *Artificial Lash Extensions*

  • Patent Identification: U.S. Patent No. 11,253,020, “Artificial Lash Extensions,” issued February 22, 2022.

The Invention Explained

  • Problem Addressed: The patent’s background section describes conventional eyelash extensions as requiring a time-consuming and costly one-by-one application process by a professional. Alternative “strip lashes” are described as being uncomfortable and easily distinguishable from natural lashes, while existing multi-lash “clusters” must still be applied individually to prevent them from sticking together (’020 Patent, col. 1:26-54).
  • The Patented Solution: The invention is an artificial lash extension system comprising multiple lash segments, each made of several smaller “clusters” of artificial hairs. These clusters are connected at a thin “base,” where at least some of the hairs are joined by an “application of heat.” This construction creates a pre-arranged set of extensions intended for application to the underside of a user’s natural lashes, aiming to simplify the application process while maintaining a natural appearance (’020 Patent, Abstract; col. 3:3-14).
  • Technical Importance: This design sought to create a new category of at-home lash products by combining the ease of applying a pre-arranged strip with the lightweight, natural look of individually applied extensions, specifically for the novel under-lash application technique (Compl. ¶¶13-16).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (’020 Patent, col. 9:8-20; Compl. ¶125).
  • The essential elements of claim 1 include:
    • An artificial lash extension system with a plurality of lash extensions designed for attachment to the underside of natural lashes.
    • Each lash extension comprises a plurality of clusters of artificial hairs (with each cluster having at least two hairs).
    • Each lash extension has a base from which the hairs protrude.
    • Critically, at least some of the artificial hairs are connected to one another at the base by "at least an application of heat."
  • The complaint expressly reserves the right to assert infringement of other claims (Compl. ¶125).

U.S. Patent No. 11,330,855 - *Method of Applying Artificial Lash Extensions*

  • Patent Identification: U.S. Patent No. 11,330,855, “Method of Applying Artificial Lash Extensions,” issued May 17, 2022.

The Invention Explained

  • Problem Addressed: The patent addresses the same technical problem as the ’020 Patent: the difficulty and expense associated with achieving a professional-quality lash extension look, particularly for non-professionals (’855 Patent, col. 1:25-52).
  • The Patented Solution: The patent claims a specific method for applying artificial lashes. The method comprises the steps of obtaining a set of lash extensions (which are themselves described as having clusters of hairs connected at a base by heat), applying an adhesive, arranging the extensions at the underside of the natural eyelashes, and then affixing them to the underside with the adhesive (’855 Patent, Abstract; Fig. 9).
  • Technical Importance: This patented method provides a systematic, repeatable process for the at-home, under-lash application of the novel lash extension structures, which was a departure from prior art methods focused on professional one-by-one application or over-lash strip application (Compl. ¶22).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (’855 Patent, col. 9:1-20; Compl. ¶138).
  • The essential elements of claim 1 include:
    • Obtaining a set of lash extensions with the structure described in the ’020 Patent (clusters, base, application of heat).
    • Applying an adhesive to enable affixing to an underside of natural eyelashes.
    • Arranging the lash extensions at the underside of the natural eyelashes.
    • Affixing the arranged lash extensions to the underside of the natural eyelashes using the adhesive.
  • The complaint expressly reserves the right to assert infringement of other claims (Compl. ¶138).

U.S. Patent No. 11,278,102 - *Applicator for Artificial Lash Extensions*

  • Patent Identification: U.S. Patent No. 11,278,102, “Applicator for Artificial Lash Extensions,” issued March 22, 2022.
  • Technology Synopsis: This patent discloses a specialized applicator tool for placing artificial lash extensions. The invention is an implement with two opposing arms joined at a hinge, featuring a grasping end with a distinct curvature that is “contoured to align substantially flush with a shape of a tightline,” allowing for the precise placement and securing of lash extensions underneath the natural lash line (’102 Patent, Abstract; col. 3:9-21).
  • Asserted Claims: The complaint focuses on independent claim 1 (Compl. ¶159).
  • Accused Features: The "Mini Pro Curve Tweezer" and a "full-sized, white applicator product" are accused of infringing by virtue of their structure, which allegedly includes opposing arms joined at a hinge and a curved tip contoured to match a user's tightline (Compl. ¶¶160, 165, 166).

U.S. Patent No. D995,914 - *Combined Tweezer and Applicator for Artificial Lash Extensions*

  • Patent Identification: U.S. Patent No. D995,914, “Combined Tweezer and Applicator for Artificial Lash Extensions,” issued August 15, 2023.
  • Technology Synopsis: This design patent protects the ornamental, non-functional appearance of an eyelash applicator. The claimed design features a fluid, swooping shape that the complaint characterizes as evoking the silhouette of a bird (Compl. ¶¶174-175; D’914 Patent, Figs. 1, 3).
  • Asserted Claims: The complaint asserts infringement of the single claim of the design patent (Compl. ¶172).
  • Accused Features: The "Mini Pro Curve Tweezer" is accused of infringing by having an ornamental design that is substantially similar to the patented design, allegedly mimicking its distinctive bird-like shape (Compl. ¶¶176, 178).

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused instrumentalities as Defendants’ “Accused Products,” which include “Classic, Volume, and Mega Volume” DIY lash products and associated “Starter and Mini Kits.” Also accused are the “Mini Pro Curve Tweezer” and a “full-sized, white applicator product,” collectively referred to as the “Accused Applicators” (Compl. ¶¶3-4, 92, 158).

Functionality and Market Context

The accused lash products are described as systems of artificial lash segments, constructed from multiple clusters of synthetic hairs, which are marketed for at-home application to the underside of a user's natural eyelashes (Compl. ¶¶110, 113, 128). The Accused Applicators are tweezer-like tools sold for grasping, placing, and crimping these lash segments onto the natural lashes (Compl. ¶¶90, 114). The complaint positions these products as direct "knock-off" competitors, alleging that Defendants studied Plaintiff's system in order to copy its technology and enter the DIY market segment that Plaintiff claims to have created (Compl. ¶¶2, 51-54, 95). The complaint shows a side-by-side photographic comparison of Plaintiff's patented "Birdie Wand" and Defendant's "Mini Pro Curve Tweezers" to illustrate the alleged copying (Compl. ¶90, p. 28).

IV. Analysis of Infringement Allegations

U.S. Patent No. 11,253,020 - Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
An artificial lash extension system comprising: a plurality of lash extensions designed to attach adjacent to one another at an underside of natural lashes... Defendants’ Classic lash product is sold as part of an “innovative lash system applied under your natural lashes” and sold as a plurality of lash extensions in a package. ¶127-128 col. 2:42-46
...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 Classic lash product includes multiple clusters of artificial hairs, with each cluster comprising a plurality of hairs made from a synthetic material such as PBT. An annotated photograph shows these distinct clusters (Compl. p. 33). ¶129 col. 2:46-50
...a base from which the at least two artificial hairs of each of the plurality of clusters protrude... The artificial hairs of each cluster are connected together to form a base from which the hairs extend. An annotated photograph shows this base structure (Compl. p. 34). ¶130 col. 3:6-11
...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 complaint alleges, upon information and belief, that the artificial hairs of each cluster are connected at the base via an application of heat, which may include heating the synthetic material and/or an adhesive to increase the bond's strength. ¶130-131 col. 1:56-61
  • Identified Points of Contention:
    • Evidentiary Question: A central point of contention may be the “application of heat” limitation. The complaint makes this allegation on “information and belief.” The case may turn on factual evidence obtained during discovery regarding the specific manufacturing process used to create the base of the Accused Lash Products and whether that process involves heat in a manner consistent with the claim language.
    • Scope Question: The parties may dispute the meaning of "base." The question could arise whether the structure where the accused product's hairs are joined constitutes a "base" within the meaning of the patent, which describes a specific technique of fusing crisscrossing hairs from adjacent clusters to create a seamless line (’020 Patent, col. 3:7-14).

U.S. Patent No. 11,330,855 - Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A method comprising: obtaining a set of lash extensions... comprising: a plurality of clusters of artificial hairs... and a base... wherein at least one of the plurality of clusters is connected to the base by at least an application of heat; Defendants direct users to obtain the Accused Lash Products, which are sold in sets and are alleged to have the claimed structure of clusters connected at a heat-formed base. ¶140-142 col. 9:4-10
applying an adhesive to enable one or more lash extensions of the set of lash extensions to be affixed to an underside of natural eyelashes of a user; Defendants’ website and product packaging instruct users to “Evenly apply the Pro Lock Adhesive™ onto clean lashes just like mascara.” These instructions are shown in a screenshot from the accused product's webpage (Compl. p. 36). ¶115, 143, 146 col. 9:11-14
arranging the one or more lash extensions of the set of lash extensions at the underside of the natural eyelashes; and Defendants instruct users to “Apply lashes under your natural lash starting from the inner corners going outwards.” ¶115, 147 col. 9:15-17
affixing the arranged lash extensions to the underside of the natural eyelashes of the user to secure the arranged lash extensions to the natural eyelashes using the adhesive. Defendants instruct users to “Crimp lashes with tweezers to activate the Pro Lock™ pressure sensitive adhesive system. Lock in your lashes for 10 days.” This crimping action is alleged to perform the step of affixing the extensions. ¶114-115, 147 col. 9:18-20
  • Identified Points of Contention:
    • Indirect Infringement: Because this is a method claim performed by end-users, the primary legal theory is indirect infringement. The analysis will focus on whether Defendants, by providing instructions and selling the necessary components (lashes and adhesive), specifically intended to cause their customers to perform each step of the patented method.
    • Functional Mismatch: A potential technical question is whether the act of “crimping” the lashes to “activate” a pressure-sensitive adhesive, as instructed by Defendants, performs the same function as “affixing... using the adhesive” as claimed in the patent.

V. Key Claim Terms for Construction

  • The Term: "application of heat" (from the ’020 and ’855 Patents)

  • Context and Importance: This term is central to defining the structure of the claimed lash extensions and distinguishing them from prior art clusters that may have been joined by adhesive alone or knotted. Infringement of both the product and method patents will likely depend heavily on whether the manufacturing process for the Accused Products falls within the scope of this term.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The claims use the general phrase "application of heat" without specifying a method. The specification mentions a "hot melt method" and "heat seal process" as examples, which may suggest that any process where heat is the primary bonding agent could be covered (’020 Patent, col. 2:52-53, col. 3:9).
    • Evidence for a Narrower Interpretation: The specification contrasts the "hot melt process" with the use of glue, particularly for natural-fiber lashes (’020 Patent, col. 3:56-62). A party could argue that the term implies a specific process of melting and fusing the synthetic fibers themselves, rather than merely using heat to cure an adhesive.

  • The Term: "contoured to align substantially flush with a shape of a tightline" (from the ’102 Patent)

  • Context and Importance: This phrase defines the specific geometry of the applicator's functional tip. The infringement analysis will turn on how closely the accused applicator's curvature must match an anatomical tightline to be considered "substantially flush." Practitioners may focus on this term because it links a structural feature ("contoured") to a functional outcome ("align substantially flush").

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The word "substantially" suggests that a perfect or exact match is not required. The abstract describes the shape as contoured to be flush with the "convex shape of the lash line," which could imply a more general curvature following the eye (’102 Patent, Abstract).
    • Evidence for a Narrower Interpretation: The patent repeatedly emphasizes the importance of the specific curvature for precise application along the tightline, which is a specific anatomical location distinct from the more general "lash line" (’102 Patent, col. 3:15-18). Figures such as 6A and 6B depict a very close correspondence between the applicator’s curve and the curve of the eye, which could support a narrower construction requiring a specific radius of curvature.

VI. Other Allegations

  • Indirect Infringement: The complaint explicitly pleads induced and contributory infringement of the ’855 method patent. The allegations are based on Defendants providing instructions on their website and product packaging that allegedly direct customers to perform all steps of the patented method, and by selling the Accused Lash Products, which are alleged to be a material part of the invention with no substantial non-infringing uses (Compl. ¶¶152-153).
  • Willful Infringement: Willfulness is alleged for all four patents-in-suit. The complaint bases this allegation on Defendants’ alleged pre-suit knowledge from having "spent thousands of dollars looking at Lashify's patents," and on actual notice provided by a cease-and-desist letter dated October 6, 2023, after which Defendants allegedly continued their infringing conduct (Compl. ¶¶49, 121, 133, 154, 168, 182).

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

  • A key evidentiary question for the ’020 and ’855 patents will be one of manufacturing process: can Plaintiff produce evidence to prove its "information and belief" allegation that Defendant's lash extensions are assembled using an "application of heat" to fuse the fibers at the base, as required by the claims, or does discovery reveal a non-infringing method, such as the use of an adhesive alone?
  • A central issue for the ’102 utility patent will be one of functional geometry: how broadly will the court construe the term "contoured to align substantially flush with a shape of a tightline"? The case may turn on whether this requires a specific, anatomically precise curvature, or if the general curve of the accused applicator is sufficient to meet the claim limitation.
  • The design patent dispute will center on the ordinary observer test: would an ordinary observer, aware of prior art applicator designs, be deceived into thinking Defendant's "Mini Pro Curve Tweezer" is the same as the ornamental design claimed in the D’914 patent, particularly given the functional constraints inherent in a tweezer-like tool?