PTAB

PGR2021-00046

KISS Nail Products Inc v. Lashify Inc

Key Events

Petition

petition

Title: ARTIFICIAL LASH EXTENSION
Brief Description: The ’984 patent is directed to artificial eyelash extensions that include multiple clusters of artificial hairs joined together by heat fusion. The claimed extensions feature a "common base" from which the spaced-apart clusters extend.

Prior Art Relied Upon: Quattro Video (a 2015 YouTube video by Petitioner) and Choe (Patent 4,299,242).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that the Quattro Video, which discloses its "iEnvy Quattro Lashes" product, teaches all limitations of the independent claims except for the use of "heat fused" connections. The video shows eyelash extensions comprising multiple clusters of artificial hairs extending from a common, albeit bulky and knotted, base.
- Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine the teachings of Choe with the product in the Quattro Video to improve it. Choe, a decades-old patent, explicitly teaches using a heat fusion technique to create knot-free eyelash extensions, solving the known problems of heaviness, bulkiness, and unnatural appearance associated with knotted bases like the one shown in the Quattro Video. Both references are analogous art aimed at creating easy-to-use, natural-looking eyelash extensions.
- Expectation of Success: A POSA would have a reasonable expectation of success in applying Choe's well-established heat fusion technique to the structure in the Quattro Video, as Choe's method was designed to work on similarly structured, knot-based lashes to create a less bulky, knot-free product.

Prior Art Relied Upon: Quattro Video, Choe (Patent 4,299,242), and Ahn (Patent 10,433,607).
Core Argument for this Ground:
- Prior Art Mapping: This ground incorporates the arguments from Ground I and adds Ahn to address dependent claims reciting specific numbers of artificial hairs per cluster (e.g., a total between 20-90, or 30 or less per cluster). Petitioner contended that the number of hairs per cluster is a matter of aesthetic design choice.
- Motivation to Combine: Ahn, assigned to the Petitioner, discloses various eyelash designs, including clusters with a specific number of hairs (e.g., nine). A POSA seeking to create different aesthetic looks would have been motivated to look at other designs from the same company (Petitioner) and would have found it obvious to implement the specific hair counts taught by Ahn into the base structure of the Quattro Video/Choe combination.

Prior Art Relied Upon: Quattro Video, Choe (Patent 4,299,242), and Nguyen (Application # 2010/0170526).
Core Argument for this Ground:
- Prior Art Mapping: This ground builds on Ground I to address dependent claims requiring adjacent clusters to be "longitudinally cross-connected together away from the...base." The Quattro Video shows hairs from adjacent clusters crossing, but is silent on whether they are connected at these intersections. Nguyen teaches using interlocking attachments with glue to permanently affix crossing hairs to preserve a desired aesthetic pattern.
- Motivation to Combine: A POSA would combine Nguyen's teachings to lock the crossing hair pattern of the Quattro Video/Choe lashes into a fixed position. Both Quattro Video and Nguyen are directed to easy-to-use, natural-looking eyelashes, making them analogous art. The combination would have predictably resulted in a more durable product that maintains its intended crisscross design.
Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Quattro Video and Choe with Nakamura (Patent 10,791,782) for claims reciting specific materials (PBT) and base thickness, and a combination of all four references for claim 29.

"heat fused / heat fusion": Petitioner proposed a construction requiring the "application of heat of a sufficient temperature to cause melting of the physical structure...causing a merging of these separate elements into a unified whole." This narrower construction was contrasted with the Patent Owner's broader "joined using heat."
"the lash fusion": Petitioner argued this term, found in dependent claims 2-7, is indefinite under 35 U.S.C. §112 as it lacks a proper antecedent basis in independent claim 1. Petitioner argued that claim 1 recites a "lash extension," and the specification uses the terms "lash fusion" and "lash extension" inconsistently, creating ambiguity.

Examiner's Misunderstanding of Choe: A central contention was that the Examiner, during prosecution, allowed the claims based on a misunderstanding that Choe only taught fusing hairs within individual clusters, not fusing adjacent clusters together to form a common base. Petitioner argued that Choe expressly discloses a two-step process where heat can be applied to secure lashes "to the lashes in adjacent knotted groups," thereby teaching the formation of the claimed common base.
Indefiniteness and Lack of Written Description: Petitioner argued that claims 2-7 are invalid under §112 for indefiniteness due to the ambiguous term "the lash fusion." It also argued that the inconsistent use of "lash fusion" and "lash extension" throughout the specification and claims renders all claims invalid for lacking adequate written description and enablement.

Petitioner argued that the Board should not exercise discretionary denial under Fintiv. The parallel district court cases were stayed. The co-pending ITC investigation is not preclusive, involves different invalidity arguments, and Petitioner stipulated that if the Post-Grant Review (PGR) were instituted, it would not pursue invalidity in the ITC based on the Quattro Video. Petitioner contended that the strong merits of the petition and the heightened public interest in reviewing a newly issued patent via PGR weigh heavily in favor of institution.

Petitioner requested institution of a PGR and cancellation of claims 1-29 of the ’984 patent as unpatentable.