2:18-cv-09765
Thirty Three Threads Inc v. Arebesk Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Thirty Three Threads, Inc. (f/k/a Toesox, Inc.) (California)
- Defendant: Arebesk Inc. (California); Leana Shayefar (individual)
- Plaintiff’s Counsel: Stetina Brunda Garred & Brucker
- Case Identification: Thirty Three Threads Inc v. Arebesk Inc, 2:18-cv-09765, C.D. Cal., 11/20/2018
- Venue Allegations: Venue is alleged to be proper as Defendants reside in the judicial district, have committed acts of infringement in the district, and maintain a regular and established place of business there.
- Core Dispute: Plaintiff alleges that Defendants' "arebesk" brand of open-toed socks infringes a design patent for an ornamental sock design.
- Technical Context: The dispute is in the market for specialty athletic apparel, specifically socks designed for activities like yoga, pilates, and barre, where toe separation and grip are functional features.
- Key Procedural History: The complaint alleges that Plaintiff sent a cease-and-desist letter to Defendant Shayefar on March 28, 2018, providing notice of the patent-in-suit. Plaintiff alleges it received no response and that Defendants subsequently expanded their allegedly infringing activities.
Case Timeline
| Date | Event |
|---|---|
| 2013-08-15 | '036 Patent Priority Date (Application Filing) |
| 2014-06-17 | '036 Patent Issue Date |
| 2018-03-28 | Plaintiff sends cease-and-desist letter to Defendant |
| 2018-11-20 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D707,036 - "Sock"
- Patent Identification: U.S. Design Patent No. D707,036, "Sock," issued June 17, 2014 (’036 Patent).
The Invention Explained
- Problem Addressed: Design patents do not articulate a technical problem and solution in the manner of utility patents. The objective is to create a new, original, and ornamental design for an article of manufacture, in this case, a sock (Compl. ¶11).
- The Patented Solution: The ’036 Patent claims the specific visual appearance of a sock as depicted in its drawings. The claimed design consists of a low-cut, open-toed sock featuring individual fabric sheaths for each toe, a heel covering, and a distinctive band that extends across the top of the foot (’036 Patent, FIG. 1, 5). The patent specification clarifies that broken lines, such as the depiction of a human foot, show environmental structure and are not part of the claimed design (’036 Patent, Description).
- Technical Importance: The design provides a distinct aesthetic for performance-oriented, toeless socks, distinguishing them from traditional sock designs.
Key Claims at a Glance
- A design patent consists of a single claim. The asserted claim is for: "The ornamental design for a sock, as shown and described." (’036 Patent, Claim).
- The key ornamental features depicted in the patent's solid-line drawings include:
- A low-cut profile that exposes the ankle.
- An opening at the front that exposes all five toes.
- Individual fabric separations between the toes.
- A single, solid band that traverses the top of the foot (the instep).
- A defined heel pocket.
III. The Accused Instrumentality
Product Identification
- The accused products are sock products sold under the name "arebesk," including a model named "Phish Net" (Compl. ¶3, ¶16).
Functionality and Market Context
- The complaint alleges that Defendants manufacture, market, and sell these sock products through their website (Compl. ¶16). The complaint provides images showing the accused products are low-cut, open-toed socks with individual toe separations, designed to be worn on the foot. The complaint includes a photograph of the accused product's packaging, which shows its bottom surface has a grip pattern (Compl. ¶12). Images from the defendant's website show the product offered in various colors and featuring a prominent mesh-like pattern across the top of the foot (Compl. ¶16).
IV. Analysis of Infringement Allegations
Infringement of a design patent is determined by the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it is the patented design. The complaint alleges that the resemblance is "substantial" and would deceive an ordinary observer (Compl. ¶17). The complaint reproduces figures from the patent, including a perspective view (FIG. 1) and a top-down view (FIG. 5), to define the claimed ornamental design (Compl. ¶11).
The analysis below compares the claimed ornamental features to the features of the accused product as depicted in the complaint. The complaint provides photographs of a specimen of the accused product, showing its top and bottom surfaces, including a prominent grip pattern on the sole (Compl. ¶12).
’036 Patent Infringement Allegations
| Claimed Ornamental Feature (from '036 Patent) | Alleged Infringing Feature (from "arebesk" sock) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall visual appearance of a low-cut, open-toed sock with a heel covering. | The accused product is a low-cut, open-toed sock with a heel covering. | ¶16; p.5 images | FIG. 1, 3 |
| A band that extends across the top of the foot. | The accused product has a band that extends across the top of the foot, which is described as having a "Phish Net" design. | ¶16; p.5 images | FIG. 1, 5 |
| Individual openings for the five toes. | The accused product has individual openings for the five toes. | ¶16; p.5 images | FIG. 1, 6 |
- Identified Points of Contention: The infringement analysis will depend on whether an ordinary observer would find the overall visual appearances of the two designs to be substantially the same.
- Scope Questions: The primary question is whether the differences between the designs are significant enough to create a different overall visual impression. A court will have to determine whether the similarities in the overall shape and configuration (low-cut, open-toed, top strap) outweigh the differences.
- Technical Questions: A key factual question is how the specific visual features of the accused product affect its overall appearance compared to the patented design. This includes:
- What is the visual impact of the mesh-like "Phish Net" pattern on the top band of the accused product, as compared to the solid, opaque band with zig-zag stitching shown in the patent's figures? Exemplary images from the defendant's website show the accused "Phish Net" product in various colors and as worn on a foot (Compl. ¶16).
- Does the prominent grip pattern on the sole of the accused product, visible in product photography, create a different visual impression from the patented design, which depicts a plain, unadorned sole (’036 Patent, FIG. 2; Compl. ¶12)?
V. Key Claim Terms for Construction
Claim construction, the process of defining the meaning of disputed claim terms, is not typically a central issue in design patent litigation. The "claim" is understood to be the design as shown in the drawings. The dispute will likely focus not on the meaning of a specific term, but on the comparison of the overall visual appearance of the accused product to the claimed design as a whole.
VI. Other Allegations
- Indirect Infringement: The prayer for relief seeks a judgment that Defendants have contributorily infringed and/or induced infringement (Compl. p. 6, Prayer A). However, the factual allegations in the body of the complaint focus on direct infringement (making, using, selling) and do not contain specific allegations to support the elements of knowledge and intent required for indirect infringement claims.
- Willful Infringement: The complaint alleges that infringement became willful after Defendants received Plaintiff's notice letter dated March 28, 2018 (Compl. ¶13, ¶25). The complaint alleges that Defendants continued and expanded their infringing activities after receiving notice of the ’036 Patent, which may support a finding of willful infringement (Compl. ¶16, ¶25).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case will likely depend on the answers to two central questions:
A core issue will be one of overall visual impression: Applying the ordinary observer test, are the accused "arebesk" socks substantially the same in ornamental appearance as the design claimed in the ’036 Patent? This will involve weighing the similarities in the general form (e.g., open-toed sock with a top strap) against the potential visual differences (e.g., the "Phish Net" top band and the grip-patterned sole).
A key evidentiary question will be the significance of design differences: How much visual weight will be given to features of the accused product that are absent from the patent drawings, such as the prominent mesh pattern on the top strap and the textured grip pattern on the sole? The case may turn on whether these differences are considered minor variations or are significant enough to create a distinct, non-infringing overall design.