EDVA: Hair-clip patent claims lack sufficient details

The patent-holder and licensee for a patented hair clip were granted leave to amend their patent-infringement claims against a former licensee who continues to sell products that the patent covers.

Background

Plaintiff Chan Soo Kim is listed as the inventor on the 662 Patent, for which Plaintiff Xtenplus holds the exclusive license. Claim 10 of the 662 Patent, reads as follows:

“A hair clip comprising: a lower clip piece; an upper clip piece connected to said lower clip piece through a pivot connection that has a hinge pin and a coil spring, said upper clip piece having a bottom portion that defines a concavity portion for use in defining a hair holding space to hold the hair of a user in a bundled state; a finger connected to said upper clip piece through a pivot connection, said finger used for holding the hair of the user in a bundled state; and a guide loop connected to a rear end portion of said finger through a pivot connection, said guide loop used for preventing hair from entering a joint portion defined by said finger and said upper clip piece; wherein said upper clip piece defines a hold eye, and wherein the rear end portion of said guide loop is located in said hold eye for use in preventing hair from entering the joint portion of said finger and said upper clip piece.”

When a user opens the hair clip, the clip holds the hair in a “holding space, and the finger and the guide loop are moved as a link mechanism.” The clip prevents hair in a bundled state from entering the joint portion, as described in Claim 10.

Defendants Green Tea Ideas, Everglory Creations Inc., and other entities form a “stream of commerce” involving allegedly infringing hair clips (the “Accused Product”). In 2010, Kim and his company entered into a licensing agreement with Xtenplus and Everglory.

In October 2016, Everglory represented it would stop manufacturing and selling the Accused Product, including to Green Tea, but later asserted it had a license and would continue to sell. By letter, Xtenplus and Kim’s company advised Everglory that it did not have distribution rights and had breached the licensing agreements. The letter also purported to terminate both agreements. Everglory responded, stating among other things that the 662 Patent did not cover Everglory’s hair clips.

Kim brought this action, asserting that Green Tea and other defendants use, import, sell, or offer for sale the Accused Product in the U.S. and that Green Tea induces U.S. customers to use the Accused Product, causing those customers to infringe the 662 Patent. Green Tea has moved to dismiss.

Direct infringement

The Plaintiffs allege that Green Tea infringed Claim 10 of the 662 Patent, but they fail to specify which features of the Accused Product correspond to the claim limitations. Instead, they merely copy and paste the patent language and insert a photograph of the unbundled Accused Product with written notations of some claim elements. This does not allow Green Tea to discern which features of the Accused Product infringe which elements of Claim 10.

Moreover, the photo fails to address whether the Accused Product infringes the bundled claim limitations. Lastly, the Plaintiffs do not identify how each feature of the Accused Product infringes the patent.

The complaint thus fails to satisfy the pleading requirements for direct infringement, but the court will grant leave to amend.

Kim v. Green Tea Ideas Inc., Case No. 3:17cv449, Mar. 6, 2018. EDVA at Richmond (Gibney). VLW No. 018-3-067, 5 pp.