by Dennis Crouch
This week a unanimous jury in Judge Albright’s W.D.Tex. courtroom filled out a very simple verdict form that favored the patentee Lashify over the accused infringer Worldbeauty, who sells drugstore lashes:
Q: Did Lashify prove, by a preponderance of the evidence, that Worldbeauty has directly infringed the asserted claims of the asserted patents?
A: Yes, Yes, Yes (all 3 claims).
Q: Did Lashify prove, by a preponderance of the evidence, that Worldbeauty’s infringement was willful?
A: Yes
Q: Did Worldbeauty prove, by clear and convincing evidence that teh asserted claims are invalid as obvious in light of the prior art?
A: No, No, No.
Q: What amount did Lashify prove, by a preponderance of the evidence, it is entitled to as damages for Worldbeauty’s infringement?
A: $30.5 million in lost profits.
There will certainly be some post-verdict motions, including the adjudged infringer’s motion for JMOL as well as the patentee’s request for treble damages and attorney fees. The $90 million potential is certainly enough to blink your eyes at.
In the likely appeal, I expect that the infringers will attempt to challenge the lost profit damages award that include convoy sales. Although the patent only covers eyelash products, Lashify presented evidence that its product is ordinarily sold along with other products, including the wand applicator, bond, sealant, and lash remover. The patentee then asked the jury to find that the accused infringers were to blame for lost sales on all those items. You can see Lashify’s Complete DIY Eye Lash Starter Set, which sells on Amazon for $125.
Although Worldbeauty is not a ‘generic’ manufacturer, it does sell product discount drugstore prices. What that means for damages is that we would expect Lashify’s lost profits to be substantially higher than a reasonable royalty tied to Worldbeauty’s sales. In the case, the jury was asked to provide an alternative reasonably royalty award, and its answer was $3.5 million at a 30% royalty rate. Lashify has also indicated that it will seek injunctive relief. Because of its equitable nature, the injunction will be decided by Judge Albright rather than a jury, along with any enhanced damages for willful infringement and attorney fees due if this is found to by the Judge to be an exceptional.
Lashify has a parallel action in the USITC, but the agency refused to rule on the merits — finding that Lashify had failed to show a domestic industry for articles covered by the asserted patents. That case is currently on appeal at the Federal Circuit, with oral arguments to be scheduled soon. Although the Lasify product is manufactured abroad, it argues that the court should still find a U.S. domestic industry — recognizing that Lashify is a U.S. based company who has created a new market segment within the U.S., and that the startup could not find any domestic manufacturing options and so “had little choice but to search overseas.”
In addition to the case against Worldbeauty, Lashify also has actions pending against Kiss Nails, Lilac St., Hollyren, and Urban Doll.
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The verdict was focused on three claims, each from a different patent: Claim 3 of US11219260, Claim 6 of US11253020, and Claim 15 of US11234472. I looked at one of the asserted claims, dependent Claim 3 of US11219260. It covers an artificial lash extension system where each lash extension consists of multiple clusters of at least two artificial hairs attached to a base that is designed to attach to the underside of natural lashes, with the clusters attached to the base by heat application and some hairs coupled together at the base. The hairs are made of a polybutylene terephthalate (PBT), a thermoplastic polyester.
The parties battled over the meaning of the claim term “artificial hairs,” with the accused infringer seeking a definition that includes human hairs. The issue here is that one key prior art reference (“Quattro”) includes what the defense calls “an artificial lash made with human hairs.” Lashify argued for a narrower construction that excluded human hair, but its argument was weak since the specification states that the invention also covers “artificial lashes made of natural materials (e.g., human or authentic mink hair).” Judge Albright sided with the broad construction sought by the defense, but the jury still sided with the patent holder – finding the claims valid (not proven invalid).
These patents all list Lashify’s founder, L.A. based Sahara Lotti, as the inventor. The image below shows the U.S. patent family, that began with two provisional applications filed in 2016, and that has expanded to 175+ global patents. The original filings came from noted patent attorney and patent strategist Roman Tsibulevskiy from Dentons. Folks at Lowenstein appear to now be handling the prosecution.
The image above of the patent family comes from Patent Bots, a service that I have been trying out recently. On the Patent Bots site, you can zoom-in on any family member and get specific information about that case.
The Lashify v. Worldbeauty (Quingdao Lashbeauty) docket sheet includes a host of attorneys with 15 listed for lashify, including Melanie Mayer, Dan Emam and their from Fenwick & West; Andrew Alexander and his team from Calfee Halter. Local counsel Deron Dacus, and Eric Menist from Gibson Dunn. Congratulations on the big win!
Worldbeauty’s side lists 17 attorneys, including Hui Shen, Brett Foster, Mark Miller and Emily Martin-Shakya on the Dorsey & Whitney team; along with attorneys from Steptoe, and Bunsow De Mory. See you in the appeal.