DCT
2:19-cv-09230
Nike Inc v. Skechers USA Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: NIKE, Inc. (Oregon)
- Defendant: Skechers USA., Inc. (Delaware)
- Plaintiff’s Counsel: Gibson, Dunn & Crutcher LLP; Banner & Witcoff, Ltd.
- Case Identification: 2:19-cv-09230, C.D. Cal., 10/28/2019
- Venue Allegations: Venue is alleged to be proper in the Central District of California because Defendant Skechers maintains its headquarters and principal place of business in the District.
- Core Dispute: Plaintiff alleges that Defendant’s Skech-Air footwear products infringe two utility patents related to Nike’s proprietary Air and particulate foam cushioning technologies.
- Technical Context: The dispute centers on advanced cushioning systems for athletic footwear, a critical area for performance, marketing, and brand differentiation in the multi-billion dollar athletic apparel industry.
- Key Procedural History: The complaint frames this lawsuit as the fourth in a series of intellectual property disputes between Nike (and its subsidiary Converse) and Skechers. The complaint notes that in response to a prior design patent lawsuit, Skechers filed fifteen petitions for inter partes review (IPR) against Nike's designs, all of which were rejected by the Patent Trial & Appeal Board (PTAB), upholding the patentability of Nike's designs.
Case Timeline
| Date | Event |
|---|---|
| 2003-12-23 | ’420 Patent Priority Date |
| 2008-07-22 | ’420 Patent Issue Date |
| 2015-09-24 | ’412 Patent Priority Date |
| 2018-10-16 | ’412 Patent Issue Date |
| 2019-10-28 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,401,420 - "Article Of Footwear Having A Fluid-Filled Bladder With A Reinforcing Structure," Issued July 22, 2008 (’420 Patent)
The Invention Explained
- Problem Addressed: The patent’s background describes the limitations of conventional polymer foam midsoles, which can deteriorate and lose their cushioning properties over time, and the challenges of using fluid-filled bladders, which require structural support to control their shape and prevent unwanted distension (’420 Patent, col. 1:43-66).
- The Patented Solution: The invention is a sole component that integrates a fluid-filled bladder with an external reinforcing structure. This structure is bonded to the bladder's exterior, particularly along its sides, to control its shape and provide stability (’420 Patent, Abstract). A key aspect is that this reinforcing structure creates a "lasting surface"—a dedicated ridge to which the shoe's upper can be securely attached, solving a critical manufacturing and structural problem for shoes with large-volume air units (’420 Patent, col. 2:45-56).
- Technical Importance: This technology provided a method for creating durable, large-volume, visible air-cushioning units that maintained structural integrity while offering a direct and stable point of attachment for the shoe's upper (’420 Patent, col. 18:30-41).
Key Claims at a Glance
- Independent claim 14 is asserted (Compl. ¶42).
- Essential elements of claim 14 include:
- A sole structure with a fluid-filled bladder and a reinforcing structure secured to it.
- The upper surface of the sole forms a ridge defining a "first portion of a lasting surface."
- At least a portion of this ridge is an inclined surface formed by the reinforcing structure and is located over the bladder.
- The bladder itself defines a "second portion of the lasting surface."
- An upper is secured directly to both the first and second portions of the lasting surface.
- The complaint also asserts dependent claims 15, 16, and 17, and reserves the right to assert others (Compl. ¶41).
U.S. Patent No. 10,098,412 - "Particulate Foam With Other Cushioning," Issued October 16, 2018 (’412 Patent)
The Invention Explained
- Problem Addressed: The patent background explains the difficulty in engineering a single slab of polymer foam that successfully balances both softness (for comfort) and responsiveness (for energy return). Foams are often a compromise, being either too soft and losing compressibility or too hard and sacrificing comfort (’412 Patent, col. 1:56-67).
- The Patented Solution: The invention creates a sole with an internal cavity containing two key elements: a plurality of protrusions extending into the cavity from the outsole, and a quantity of particulate matter (e.g., loose foam beads) that fills the space around the protrusions (’412 Patent, Abstract). The interaction between the fixed protrusions and the mobile beads under load is described as creating a gradient cushioning effect that can be tuned for different responses (’412 Patent, col. 2:1-5).
- Technical Importance: This approach represents a mechanical cushioning system that allows for a more complex, tunable impact response than is typically achievable with a uniform slab of foam, enabling a single sole to provide both soft and responsive characteristics (’412 Patent, col. 29:55-67).
Key Claims at a Glance
- Independent claim 1 is asserted (Compl. ¶52).
- Essential elements of claim 1 include:
- An upper, an outsole, and a cavity between them.
- A plurality of protrusions extending from the outsole up into the cavity.
- These protrusions extend from the forefoot to the midfoot region.
- A specific geometric requirement: a "first protrusion" near the midfoot must be taller than the other protrusions located between it and the shoe's front edge.
- A plurality of foam beads disposed in the cavity, with at least some at the base of the "first protrusion."
- The complaint also asserts dependent claims 2-7 and reserves the right to assert others (Compl. ¶51).
III. The Accused Instrumentality
Product Identification
- The accused products are the "Skech-Air Jumpin' Dots" and "Skech-Air Mega" shoes (Compl. ¶¶34, 36).
Functionality and Market Context
- The complaint alleges these shoes use Nike's patented cushioning technologies (Compl. ¶9). The complaint provides a visual of the "Skech-Air Jumpin' Dots" shoe, which appears to feature a translucent sole filled with visible, multi-colored beads or particles (Compl. p. 3). This visual suggests a system potentially related to the particulate foam technology of the ’412 Patent.
- The complaint also provides a visual of the "Skech-Air Mega" shoe, which appears to feature a large, visible, gas-filled bladder in the heel portion of the sole, contained within a more rigid frame (Compl. p. 3). This visual suggests a structure potentially related to the bladder and reinforcing structure technology of the ’420 Patent.
- The complaint positions the accused products as part of a broader Skechers business strategy to copy innovative technologies from competitors to gain market share (Compl. ¶7).
IV. Analysis of Infringement Allegations
’420 Patent Infringement Allegations
| Claim Element (from Independent Claim 14) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a sole structure incorporating a fluid-filled bladder and a reinforcing structure secured to the bladder, the sole structure having an upper surface and an opposite lower surface, | The accused shoes are alleged to be articles of footwear with a sole structure that includes a fluid-filled bladder and a reinforcing structure secured to it (Compl. ¶42). | ¶42 | col. 6:3-9 |
| the upper surface forming a ridge that defines a first portion of a lasting surface, | The upper surface of the accused sole structure is alleged to form a ridge that defines a first part of a lasting surface (Compl. ¶42). | ¶42 | col. 18:38-41 |
| at least a portion of the ridge being an inclined surface formed by the reinforcing structure and located over the bladder, | The accused ridge is alleged to have an inclined surface, which is formed by the reinforcing structure and positioned over the bladder (Compl. ¶42). | ¶42 | col. 23:10-12 |
| the bladder defining a second portion of the lasting surface; | The bladder in the accused shoes is alleged to define a second part of the lasting surface (Compl. ¶42). | ¶42 | col. 23:18-20 |
| and an upper secured directly to the first portion of the lasting surface and the second portion of the lasting surface. | The shoe's upper is alleged to be secured directly to both the first and second portions of the lasting surface (Compl. ¶42). | ¶42 | col. 23:20-22 |
Identified Points of Contention
- A central question may be one of structural correspondence. The complaint alleges the accused shoes have a "reinforcing structure" that creates an "inclined surface" to form a "lasting surface." The court will have to determine whether the accused structure performs these specific functions in the manner claimed by the patent, or if it represents a different structural design. The factual evidence supporting the existence and function of a "reinforcing structure" separate from but secured to the bladder will be critical.
’412 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an upper; an outsole secured to the upper; a cavity disposed between the upper and the outsole; | The accused shoes are alleged to have an upper, an outsole, and a cavity between them (Compl. ¶52). | ¶52 | col. 8:27-40 |
| a plurality of protrusions extending within the cavity toward the upper from a base end disposed adjacent to the outsole to a distal end disposed within the cavity, the plurality of protrusions (i) extending from a forefoot region...to a midfoot region..., (ii) being spaced apart from one another..., and (iii) including a first protrusion located proximate to the midfoot region and having a height that is greater than a height of the other protrusions... | The accused shoes are alleged to contain a plurality of protrusions with the specific claimed arrangement: extending from the forefoot to the midfoot, being spaced apart, and including a first protrusion near the midfoot that is taller than the other protrusions located forward of it (Compl. ¶52). | ¶52 | col. 11:27-44 |
| and a plurality of foam beads disposed in the cavity, at least a portion of the plurality of foam beads being disposed at a base of the first protrusion. | The accused shoes are alleged to have a plurality of foam beads within the cavity, with at least some of those beads located at the base of the aforementioned tallest protrusion (Compl. ¶52). | ¶52 | col. 8:46-59 |
Identified Points of Contention
- The analysis will likely focus on a question of geometric precision. Claim 1 requires a very specific arrangement and relative height of the "protrusions." The complaint makes a conclusory allegation that this geometry is met, but a key point of contention will be whether discovery and expert analysis show that the accused "Skech-Air Jumpin' Dots" shoe actually includes a protrusion near the midfoot that is demonstrably taller than all other protrusions forward of it, as the claim language demands.
V. Key Claim Terms for Construction
’420 Patent: "lasting surface"
- The Term: "lasting surface"
- Context and Importance: This term is foundational to the ’420 patent's claimed structure, defining the critical interface where the sole component is secured to the shoe's upper. Its construction will determine whether the claim is limited to the specific ridge-based structure shown in the embodiments or could read on a wider array of sole-to-upper connections.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims themselves define the term functionally as the surface to which the upper is secured, without reciting a specific shape (e.g., ’420 Patent, cl. 14).
- Evidence for a Narrower Interpretation: The specification repeatedly and specifically describes the "lasting surface" as being defined by "ridge 45," an "identifiable line" formed by the reinforcing structure (’420 Patent, col. 18:38-41). A party could argue that this specific embodiment defines the true scope of the term.
’412 Patent: "protrusion...having a height that is greater than a height of the other protrusions"
- The Term: "protrusion...having a height that is greater than a height of the other protrusions"
- Context and Importance: This limitation is not a general descriptor but a precise, quantitative geometric relationship that distinguishes the claimed invention. Practitioners may focus on this term because infringement hinges on a finding that the accused product meets this exact dimensional requirement, which is a potential point of factual dispute.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue "height" should be interpreted functionally in the context of cushioning, rather than requiring strict measurement of every feature. The patent discusses the overall goal of creating gradient cushioning (’412 Patent, col. 2:1-5).
- Evidence for a Narrower Interpretation: The claim language is explicitly structural and comparative ("greater than"). The specification supports this with embodiments showing clearly distinct heights among protrusions to achieve a desired effect, such as dispersing particulate matter (’412 Patent, col. 11:37-44). Figure 3 shows first series of projections 310 having a greater height than second series of projections 320. This suggests the term requires a direct, measurable comparison.
VI. Other Allegations
Indirect Infringement
- The complaint alleges only direct infringement under 35 U.S.C. § 271(a) (Compl. ¶¶41, 51). The complaint does not plead specific facts that would support claims for induced or contributory infringement.
Willful Infringement
- The complaint alleges willful infringement for both patents based on knowledge acquired "at least as of the filing date of this complaint" (Compl. ¶¶46, 59). This is a claim for post-suit willfulness, which may support enhanced damages if infringement is found, but it does not allege that Skechers had knowledge of the patents before the lawsuit was filed.
VII. Analyst’s Conclusion: Key Questions for the Case
This case presents two central questions, one for each asserted patent family, alongside a broader narrative theme.
- A core issue for the ’420 patent will be one of structural correspondence: Does the accused "Skech-Air Mega" shoe embody the specific architecture of claim 14, which requires an external "reinforcing structure" that creates an "inclined" "lasting surface" over a fluid-filled bladder, or does it utilize a functionally similar but structurally distinct cushioning system?
- A key evidentiary question for the ’412 patent will be one of geometric compliance: Can Plaintiff prove that the internal sole structure of the accused "Skech-Air Jumpin' Dots" shoe meets the precise geometric limitations of claim 1, specifically the requirement of a single midfoot-proximate "protrusion" that is measurably taller than all others forward of it?
- Finally, the litigation will be shaped by a question of intent and competitive conduct: While legally separate from the technical infringement analysis, the complaint's narrative of a "fourth lawsuit" and a pattern of alleged copying frames the dispute as a strategic battle between rivals, a theme that may influence arguments related to willfulness and damages.