DCT

2:17-cv-08509

Nike Inc v. Skechers USA Inc

I. Executive Summary and Procedural Information

Parties & Counsel:
- Plaintiff: Nike Inc (Oregon)
- Defendant: Skechers USA Inc (Delaware)
- Plaintiff’s Counsel: Stoel Rives LLP; Banner & Witcoff LTD
Case Identification: 2:17-cv-08509, D. Or., 01/04/2016
Venue Allegations: Venue is asserted based on allegations that Skechers USA Inc transacts business and has committed acts of patent infringement in the District of Oregon by selling and offering to sell the accused shoes within the state.
Core Dispute: Plaintiff alleges that Defendant’s footwear, including its "Burst" and "Flex Appeal" lines, infringes eight of Plaintiff's design patents covering the ornamental designs for shoe uppers and shoe soles.
Technical Context: The dispute is set in the highly competitive athletic and fashion footwear industry, where the ornamental design of a shoe is a critical component of brand differentiation and commercial value.
Key Procedural History: The front pages of several asserted patents indicate they are subject to terminal disclaimers. Additionally, documents provided with the complaint show that after this lawsuit was filed, U.S. Design Patent Nos. D723,781 and D723,783 survived Inter Partes Review (IPR) challenges, with the U.S. Patent and Trademark Office confirming the patentability of their claims.

Case Timeline

Date	Event
2012-02-29	Earliest Priority Date for ’772, ’781, ’783, ’356, ’359 Patents
2013-08-30	Priority Date for ’853, ’423, ’032 Patents
2014-01-07	U.S. Design Patent No. D696,853 Issued
2014-03-04	U.S. Design Patent No. D700,423 Issued
2014-06-17	U.S. Design Patent No. D707,032 Issued
2015-03-10	U.S. Design Patent Nos. D723,772, D723,781, D723,783 Issued
2015-03-31	U.S. Design Patent Nos. D725,356, D725,359 Issued
2015-11-11	Date of article referencing Skechers' Burst shoe
2016-01-04	Complaint Filed

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

U.S. Design Patent No. D696,853 - "Shoe Upper"

Issued: January 7, 2014

The Invention Explained

Problem Addressed: The complaint asserts that Nike Inc has taken steps to protect its "innovative designs" in the competitive footwear market, implying a need to create and protect unique, non-functional, ornamental appearances for its products (Compl. ¶10).
The Patented Solution: The ’853 Patent claims a specific ornamental design for a shoe upper, not a functional invention. The design's scope is defined by the features shown in solid lines in the patent figures, which include a distinct woven or knitted texture on the side of the upper and a specific arrangement of three lace loops ('853 Patent, Description; Fig. 1). The broken lines depicting the shoe's sole and overall shape are not part of the claimed design and serve only to show the environment in which the design is used ('853 Patent, Description).
Technical Importance: The complaint alleges that this design is part of Nike's "Flyknit" line, which introduced a novel and influential aesthetic to the footwear market (Compl. ¶14).

Key Claims at a Glance

Design patents contain a single claim. The asserted claim is for: "The ornamental design for a shoe upper, as shown and described" ('853 Patent, Claim).
The essential visual elements of this claim are the specific configuration and combination of the side-panel texture and the lace loops, as depicted in solid lines in Figures 1-4 of the patent.

U.S. Design Patent No. D700,423 - "Shoe Upper"

Issued: March 4, 2014

The Invention Explained

Problem Addressed: As with the ’853 Patent, the objective is the creation of a novel and ornamental shoe upper design to distinguish the product in the market (Compl. ¶10).
The Patented Solution: The ’423 Patent claims a different ornamental design for a shoe upper. The protected design consists of a continuous, textured pattern that covers a large portion of the shoe's side profile, as shown in solid lines ('423 Patent, Description; Fig. 2). Unlike the ’853 Patent, the claimed design in the ’423 Patent does not include lace loops or other elements, focusing solely on the visual effect of the textile pattern itself ('423 Patent, Fig. 1).
Technical Importance: This design is also associated with the "Flyknit" aesthetic, which emphasizes a seamless, form-fitting upper construction (Compl. ¶14).

Key Claims at a Glance

The single asserted claim is for: "The ornamental design for a shoe upper, as shown and described" (’423 Patent, Claim).
The essential visual element is the specific appearance of the textured pattern as applied to the side of the shoe upper, as shown in the solid-line portions of Figures 1-3.

U.S. Design Patent No. D707,032 - "Shoe Upper"

Issued: June 17, 2014
Technology Synopsis: The ’032 Patent claims another ornamental design for a shoe upper. The design features a distinct textured side panel and lace loop configuration, creating an overall visual impression that differs from the ’853 and ’423 patents.
Asserted Claims: The single claim for the ornamental design as shown and described.
Accused Features: The design of the Skechers Burst shoe upper is alleged to be substantially the same as the design claimed in the ’032 Patent (Compl. ¶14; Table 4).

U.S. Design Patent No. D723,772 - "Shoe Sole"

Issued: March 10, 2015
Technology Synopsis: The ’772 Patent claims an ornamental design for the side profile of a shoe sole. The design is characterized by its particular curved shape, thickness, and a pattern of horizontal grooves along the side.
Asserted Claims: The single claim for the ornamental design as shown and described.
Accused Features: The side profile designs of the Skechers Women's Flex Appeal, Men's Flex Advantage, Girl's Skech Appeal, and Boy's Flex Advantage shoes are alleged to infringe (Compl. ¶12; Table 5).

U.S. Design Patent No. D723,781 - "Shoe Sole"

Issued: March 10, 2015
Technology Synopsis: The ’781 Patent claims an ornamental design for the bottom of a shoe outsole. The design consists of a specific pattern of segmented, generally rectangular tread pods separated by intersecting flex grooves.
Asserted Claims: The single claim for the ornamental design as shown and described.
Accused Features: The outsole tread patterns of the Skechers Flex Appeal and related shoe models are alleged to infringe (Compl. ¶12; Table 6).

U.S. Design Patent No. D723,783 - "Shoe Sole"

Issued: March 10, 2015
Technology Synopsis: The ’783 Patent claims another ornamental design for a shoe outsole. This design also features segmented tread pods and flex grooves, but in a configuration and arrangement distinct from that of the ’781 Patent.
Asserted Claims: The single claim for the ornamental design as shown and described.
Accused Features: The outsole tread patterns of the Skechers Flex Appeal and related shoe models are alleged to infringe (Compl. ¶12; Table 7).

U.S. Design Patent No. D725,356 - "Shoe Sole"

Issued: March 31, 2015
Technology Synopsis: The ’356 Patent claims an ornamental design for the side profile of a shoe sole. It is visually distinct from the ’772 Patent in its specific contours and surface texturing.
Asserted Claims: The single claim for the ornamental design as shown and described.
Accused Features: The side profile designs of the Skechers Flex Appeal and related shoe models are alleged to infringe (Compl. ¶12; Table 8).

U.S. Design Patent No. D725,359 - "Shoe Sole"

Issued: March 31, 2015
Technology Synopsis: The ’359 Patent claims an ornamental design for a shoe sole that combines both a specific side profile and a bottom outsole pattern. The claimed design is the overall visual appearance created by the combination of these features.
Asserted Claims: The single claim for the ornamental design as shown and described.
Accused Features: The sole designs of the Skechers Flex Appeal and related shoe models are alleged to infringe (Compl. ¶12; Table 9).

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused instrumentalities as specific footwear models: the Skechers' Burst, Women's Flex Appeal, Men's Flex Advantage, Girl's Skech Appeal, and Boy's Flex Advantage shoes (Compl. ¶12).

Functionality and Market Context

The complaint's allegations center on the ornamental appearance of the accused shoes, not their functionality. The accused features are the designs of the uppers and soles. The complaint alleges that the Skechers Burst shoe "ripped off" Nike's "Flyknit" design, which is protected by the asserted "Shoe Upper" patents (Compl. ¶14). Table 2 in the complaint provides a side-by-side visual comparison of figures from the ’853 Patent and photographs of the accused Skechers "Women's Burst" and "Men's Burst" shoes (Compl. p. 5, Table 2). The complaint further alleges that the various "Flex" and "Skech" models incorporate sole designs that are substantially the same as those protected by the asserted "Shoe Sole" patents (Compl. ¶12). Table 6 compares figures from the ’781 Patent, showing a bottom view of the sole, with photographs of the soles of the accused "Women's Flex Appeal" and "Men's Flex Advantage" shoes (Compl. p. 8, Table 6). Nike alleges that Skechers sells these shoes through multiple channels, including its own websites and retail stores, as well as third-party retailers (Compl. ¶17).

IV. Analysis of Infringement Allegations

The complaint does not contain a traditional element-by-element claim chart. Instead, it relies on a narrative theory of infringement supported by visual comparison tables to allege that the accused products are "substantially the same" as the patented designs (Compl. ¶¶13-15). The legal test for design patent infringement is whether an "ordinary observer," giving the matter the attention a typical purchaser would, would be deceived into purchasing the accused product believing it to be the patented one.

The complaint's core infringement theory is that the overall ornamental appearance of the accused Skechers shoes is substantially the same as the overall ornamental appearance of the designs claimed in the Nike patents. For the "Shoe Upper" patents (’853, ’423, and ’032), the complaint alleges that the knitted upper design of the Skechers Burst shoe misappropriates the claimed designs (Compl. ¶14; Tables 2-4). For the "Shoe Sole" patents (’772, ’781, ’783, ’356, and ’359), the complaint alleges that the side profiles and bottom tread patterns of the Skechers Flex Appeal, Flex Advantage, and Skech Appeal shoes create the same visual impression as the patented sole designs (Compl. ¶12; Tables 5-9).

Identified Points of Contention:
- Scope Questions: A central question for the court will be defining the proper scope of the claimed designs. The analysis will involve determining the weight given to the elements shown in solid lines versus the unclaimed environment shown in broken lines. While the unclaimed environment is not protected, it provides context for the claimed design as applied to the article of manufacture.
- Technical Questions: The dispute may turn on whether the visual differences between the patented designs and the accused shoes are significant enough to create a different overall impression for an ordinary observer. Skechers may point to variations in the specific weave of the upper, the shape and size of the sole's tread pods, or the depth of grooves as creating a distinct design. Nike may counter that these are minor differences that do not change the overall aesthetic and that the designs are substantially the same.

V. Key Claim Terms for Construction

In design patent cases, formal construction of written claim terms is rare. The "claim" is understood to be the design itself, as depicted in the drawings. The analysis focuses on construing the visual scope of the design rather than defining words.

The Term: The "ornamental design" for a "shoe upper" or "shoe sole."
Context and Importance: The critical analysis is not the definition of a term, but the interpretation of the visual scope of the patent's protection. The court's interpretation of what the drawings show and protect will be dispositive for the infringement analysis. Practitioners may focus on this "visual claim construction" because it determines whether small differences in the accused product are sufficient to avoid infringement.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent holder may argue that the protection is for the overall visual gestalt created by the design as a whole, not a mere collection of individual features. Language in the patent describing the figures as showing "my new design" could be used to argue for protection of the overall aesthetic, suggesting that minor variations that do not alter this aesthetic should not escape infringement ('853 Patent, Description).
- Evidence for a Narrower Interpretation: The accused infringer may argue that the patent's scope is strictly limited to the exact visual features as they are depicted in the drawings, including their precise proportions, contours, and arrangements. The explicit use of broken lines to disclaim portions of the shoe could be argued to strictly limit the claim to only what is shown in solid lines, making any deviation from those specific features more significant ('853 Patent, Description).

VI. Other Allegations

Willful Infringement: The complaint alleges that "Skechers intended to copy the designs covered by the NIKE Patents" (Compl. ¶16). In its prayer for relief, Nike requests that the court award increased damages up to three times the amount found, pursuant to 35 U.S.C. § 284, and a determination that the case is "exceptional" under 35 U.S.C. § 285 (Compl. p. 13, ¶¶ 5, 7). These requests are predicated on the allegation of intentional and willful infringement.

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

A central question will be one of visual comparison under the ordinary observer test: When viewed as a whole, are the ornamental designs of the accused Skechers shoes substantially the same as the designs claimed in Nike's patents, such that an ordinary purchaser would be deceived? The outcome will depend on a holistic visual analysis rather than a simple checklist of features.
A key legal and factual issue will be the scope of the claimed designs: How much visual difference is required for the Skechers shoes to be considered non-infringing? The court's determination of whether the differences are merely trivial variations on the patented design or are substantial enough to create a distinct overall visual impression will be critical.
A significant procedural factor for two of the patents-in-suit (’781 and ’783) will be the impact of the post-grant IPR proceedings. The fact that these patents were challenged and their claims confirmed as patentable may narrow the available invalidity defenses for Skechers, potentially focusing the dispute for those patents more intensely on the issue of infringement.