DCT
2:18-cv-03950
TBL Licensing LLC v. Kotoni Trading Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: TBL Licensing LLC (Delaware)
- Defendant: Kotoni Trading, Inc. (California)
- Plaintiff’s Counsel: Alston & Bird LLP
- Case Identification: 2:18-cv-03950, C.D. Cal., 05/11/2018
- Venue Allegations: Venue is alleged to be proper in the Central District of California because Defendant is incorporated in California, has a regular and established place of business in the district, and has allegedly committed acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s footwear products infringe two U.S. design patents related to ornamental designs for footwear tread.
- Technical Context: The case concerns the ornamental design of shoe soles, a visual element that can serve as a key source-identifier and point of differentiation in the competitive consumer footwear market.
- Key Procedural History: The 'D305 Patent is a divisional of the application that resulted in the 'D733 Patent, indicating a shared design lineage. Plaintiff states it provided Defendant with written notice of infringement on August 11, 2017, nearly nine months prior to filing the complaint, a fact which may be material to the allegations of willfulness.
Case Timeline
| Date | Event |
|---|---|
| 2013-08-05 | Priority Date for 'D733 and 'D305 Patents |
| 2015-12-08 | 'D733 Patent Issued |
| 2017-05-02 | 'D305 Patent Issued |
| 2017-08-11 | Plaintiff Allegedly Notified Defendant of Infringement |
| 2018-05-11 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D744,733 - "Footwear Tread"
Patent Identification
U.S. Patent No. D744,733 ("the ’D733 Patent"), "Footwear Tread," issued December 8, 2015.
The Invention Explained
- Problem Addressed: As a design patent, the ’D733 Patent does not articulate a technical problem but instead protects a novel, non-functional, ornamental design for an article of manufacture (Compl. ¶12).
- The Patented Solution: The patent claims the specific ornamental appearance of a footwear tread pattern (’D733 Patent, Claim). The design, shown in solid lines, consists of a repeating array of stylized, multi-level square-shaped lugs across the forefoot and heel portions of a shoe sole (’D733 Patent, Fig. 1). The broken lines depicting the overall sole outline indicate that the shape of the sole itself is not part of the claimed design (’D733 Patent, Description).
- Technical Importance: The complaint suggests the design’s importance lies in its role as a brand identifier, stating that "Timberland and its footwear designs are well-known throughout the footwear industry" (Compl. ¶22).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is for "The ornamental design for footwear tread, as shown and described" (’D733 Patent, Claim).
- The claim covers the visual characteristics of the tread pattern as depicted in solid lines in the patent's figures. The complaint does not assert any other claims.
U.S. Design Patent No. D785,305 - "Footwear Tread"
Patent Identification
U.S. Patent No. D785,305 ("the ’D305 Patent"), "Footwear Tread," issued May 2, 2017.
The Invention Explained
- Problem Addressed: Similar to the ’D733 Patent, the ’D305 Patent protects a specific ornamental design for footwear tread (Compl. ¶12).
- The Patented Solution: This patent, which is a divisional of the ’733 Patent’s application, claims the ornamental design for an individual footwear tread element (’D305 Patent, Claim). The figures isolate and provide detailed perspective and elevational views of the specific multi-level, stylized square lug that makes up the pattern in the parent ’733 Patent (’D305 Patent, Figs. 2-5). The description clarifies that unclaimed environmental structure has been removed "for clarity of depiction" (’D305 Patent, Description).
- Technical Importance: This patent protects the core building block of the design shown in the ’733 Patent, which Plaintiff alleges contributes to a well-known brand identity (Compl. ¶33).
Key Claims at a Glance
- The single asserted claim is for "The ornamental design for a footwear tread, as shown and described" (’D305 Patent, Claim).
- The claim covers the visual appearance of the individual tread element shown in solid lines in Figures 2-5. The complaint does not assert any other claims.
III. The Accused Instrumentality
Product Identification
The accused products are footwear styles including, but not limited to, the "NOLTE", "COOPER", "CRUISE", "DANNI", "GERE", "DESOTO" and "DEGAMO" (Compl. ¶5). The complaint uses the "NOLTE" style shoe as its primary example (Compl. ¶20, ¶31).
Functionality and Market Context
The complaint identifies the accused instrumentalities as footwear products that Defendant has manufactured, used, sold, offered for sale, or imported into the United States (Compl. ¶16). It is alleged that these products are sold to "various U.S. retailers" (Compl. ¶21). The complaint provides photographic evidence of the tread design on the sole of the accused "NOLTE" product (Compl. pp. 5, 8).
IV. Analysis of Infringement Allegations
The infringement test for a design patent is whether an "ordinary observer," familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design.
'D733 Patent Infringement Allegations
| Claim Element (from the Single Claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for footwear tread, as shown and described. | The complaint alleges that the accused footwear products, such as the "NOLTE" shoe, feature a tread design that is "substantially similar" to the claimed design. A side-by-side comparison juxtaposes the patented design with the accused tread pattern. | ¶19, p. 5 | Claim, Figs. 1-5 |
The complaint provides a side-by-side visual comparison of the tread design claimed in the ’D733 Patent’s Figure 1 and a photograph of the sole of the accused "NOLTE" footwear (Compl. p. 5).
'D305 Patent Infringement Allegations
| Claim Element (from the Single Claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a footwear tread, as shown and described. | The complaint alleges that the individual tread elements on the accused footwear are "substantially similar" to the design of the individual element claimed in the 'D305 Patent, further alleging the accused design is an "identical copy." | ¶30, ¶33, p. 8 | Claim, Figs. 2-5 |
A similar side-by-side comparison shows the tread design from the ’D305 Patent’s Figure 1 next to a photograph of the accused "NOLTE" footwear sole (Compl. p. 8).
Identified Points of Contention
- Scope Questions: The core legal question is whether the accused tread design is "substantially similar" to the claimed designs in the eyes of an ordinary observer. While the 'D733 Patent claims the overall pattern and the 'D305 Patent claims the individual lug, the accused product is alleged to infringe both. The litigation may explore whether infringement can be found for one but not the other.
- Technical Questions: While the complaint alleges the accused design is an "identical copy" of the patented design, the court will have to compare the visual details. A potential question is whether any minor differences in proportion, angle, or surface texture between the accused product and the patent drawings are sufficient to defeat a finding of substantial similarity.
V. Key Claim Terms for Construction
In design patent cases, claim construction focuses on the scope of the design as depicted in the drawings, rather than on textual terms.
- The Term: "The ornamental design ... as shown and described."
- Context and Importance: The interpretation of this phrase, specifically what is "shown" in solid versus broken lines, defines the scope of protection and is dispositive for infringement. The infringement comparison must be made between the accused product and only the elements shown in solid lines in the patent figures.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party arguing for infringement may focus on the "overall visual impression" of the design, suggesting that minor deviations should be disregarded if the designs create the same general appearance.
- Evidence for a Narrower Interpretation: The patent descriptions explicitly disclaim the material shown in broken lines, stating they "form no part of the claimed design" ('D733 Patent, Description; 'D305 Patent, Description). This language provides strong support for limiting the claim scope strictly to the features depicted in solid lines, requiring a closer visual match for a finding of infringement.
VI. Other Allegations
- Indirect Infringement: The complaint alleges active inducement under 35 U.S.C. § 271(b). The factual basis is Defendant's alleged actions of importing and selling the accused products to U.S. retailers and instructing them via "marketing, advertising and customer assistance" (Compl. ¶21, ¶32).
- Willful Infringement: The complaint alleges willful infringement based on both pre-suit and potential post-suit knowledge. It asserts Defendant had actual notice of the patents and its infringement as of August 11, 2017 (Compl. ¶17). It further alleges that infringement was obvious given that Timberland's designs are "well-known" and the accused design is an "identical copy" (Compl. ¶22, ¶33).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: From the perspective of an ordinary footwear purchaser, is the ornamental design of the accused products "substantially the same" as the designs claimed in the 'D733 and 'D305 patents, such that the purchaser would be deceived?
- A second key question relates to scope and specificity: How will the court analyze infringement of two related-but-distinct design claims—one for an overall pattern ('D733) and one for an individual component ('D305)—by a single accused product?
- Finally, a central evidentiary question will be one of intent: Can Plaintiff prove that Defendant had knowledge of the patents as of August 2017 and that its subsequent infringement was willful, thereby exposing Defendant to potential enhanced damages and attorney's fees?