DCT
2:22-cv-05924
Gavrieli Brands LLC v. Xiamen HUAXI Technology Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Gavrieli Brands, LLC (California)
- Defendant: Xiamen Huaxi Technology Co., Ltd. d/b/a CZZPTC (People's Republic of China)
- Plaintiff’s Counsel: Morgan, Lewis & Bockius LLP
- Case Identification: 2:22-cv-05924, C.D. Cal., 08/19/2022
- Venue Allegations: Plaintiff alleges that because Defendant is a foreign entity not resident in the United States, venue is proper in any judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s ballet flat footwear infringes two of Plaintiff's design patents and associated trade dress related to a shoe with a distinctive colored outsole.
- Technical Context: The dispute is in the consumer footwear market, focusing on the protectability of ornamental design features that contribute to a product's brand identity and commercial appeal.
- Key Procedural History: The complaint does not mention any prior litigation, licensing history, or post-grant proceedings involving the patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2011-08-10 | '928 and '950 Patents Priority Date |
| 2011-08-XX | Plaintiff's "Tieks" shoe design receives media coverage |
| 2013-05-14 | U.S. Design Patent No. D681,928 issues |
| 2019-04-09 | U.S. Design Patent No. D844,950 issues |
| 2022-08-19 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D844,950, Shoe With Blue Outpatch Sole (Issued April 9, 2019)
The Invention Explained
- Problem Addressed: Design patents protect ornamental appearance rather than solving a technical problem. This patent protects the specific aesthetic design of a shoe.
- The Patented Solution: The patent claims the ornamental design for a ballet flat-style shoe featuring a distinctively colored outpatch sole (Compl. ¶23; ’950 Patent, DESCRIPTION). The figures illustrate the overall shape and, most notably, the placement and appearance of two colored patches on the bottom of the sole, one at the heel and one at the ball of the foot (’950 Patent, FIG. 5). The patent specifies that the design covers a wide range of blue Pantone colors (’950 Patent, DESCRIPTION, FIG. 85).
- Technical Importance: The design creates a unique visual signature for the footwear, which the complaint alleges is known in the market as the "Peekaboo" outsole and is essential to the Plaintiff's brand identity (Compl. ¶13-14).
Key Claims at a Glance
- The patent contains a single claim for "the ornamental design for a shoe with blue outpatch sole, as shown and described" (’950 Patent, CLAIM).
U.S. Design Patent No. D681,928, Shoe (Issued May 14, 2013)
The Invention Explained
- Problem Addressed: This patent protects the ornamental appearance of a shoe, not a functional solution.
- The Patented Solution: The patent claims the ornamental design for a ballet flat-style shoe with a specific overall shape, gathered topline, and a split-sole appearance on the bottom (’928 Patent, CLAIM; FIGS. 1, 5). A key illustrated feature is the design in a folded configuration, suggesting flexibility is part of its visual identity (’928 Patent, FIG. 8). The broken lines in the drawings denote aspects that are not part of the claimed design (’928 Patent, DESCRIPTION).
- Technical Importance: The design protects the overall aesthetic appearance of the shoe, which contributes to its unique visual presentation and market identity (Compl. ¶24).
Key Claims at a Glance
- The patent contains a single claim for "the ornamental design for a shoe, as shown and described" (’928 Patent, CLAIM).
III. The Accused Instrumentality
- Product Identification: Defendant's "CZZPTC Fruitshoes" and other CZZPTC-branded ballet flats (Compl. ¶4, ¶17, ¶42).
- Functionality and Market Context: The accused instrumentalities are leather ballet flat shoes sold through Defendant's official website and its Amazon Web Store (Compl. ¶9). The complaint alleges these products are offered in a variety of styles and colors, including "Red," "Blackblue," "Yellow," and "Rose Gold" (Compl. ¶42). The core allegation is that the design of these shoes, particularly the use of a colored outsole, "mimic[s] several designs protected by Gavrieli's intellectual property" (Compl. ¶37). The complaint includes a side-by-side image comparison suggesting the accused product is visually similar to Plaintiff's Tieks® shoe (Compl. ¶38, p. 11). Another visual shows that Defendant's website uses marketing language nearly identical to Plaintiff's to describe the durability of its non-skid rubber outsole patches (Compl. ¶44, p. 14).
IV. Analysis of Infringement Allegations
The infringement analysis for a design patent centers on the "ordinary observer" test, assessing whether an ordinary observer would find the design of the accused product to be substantially the same as the design claimed in the patent.
'950 Patent Infringement Allegations
The complaint alleges that the Accused Products have designs "substantially similar" to the design claimed in the '950 Patent (Compl. ¶52). To support this, the complaint provides a visual comparison in Table 1 between a figure from the patent and a photograph of an accused product. This comparison highlights a visually similar ballet flat profile and the presence of a colored outsole visible from the side (Compl. ¶53, p. 18).
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a shoe with blue outpatch sole... | The overall ornamental appearance of the "CZZPTC Fruitshoes" ballet flats, which allegedly feature a similar shape, profile, and a colored outsole that is visible from the side, creating what Plaintiff calls the "Peekaboo" outsole effect. | ¶¶52-54, p. 18 | ’950 Patent, FIGS. 1-8, 85 |
| ...as shown and described. | The complaint provides a side-by-side visual comparison in "Table 1" that juxtaposes a patent drawing with a photo of the accused product to demonstrate the alleged substantial similarity in the overall visual impression given to an ordinary observer. | ¶53, p. 18 | ’950 Patent, FIGS. 1-8, 85 |
'928 Patent Infringement Allegations
The complaint alleges that the Accused Products have designs "substantially similar" to the design claimed in the '928 Patent (Compl. ¶62). Table 2 in the complaint compares a patent drawing with a photograph of an accused product to show alleged similarity in the overall appearance, including the shoe's profile and gathered topline (Compl. ¶63, p. 20).
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a shoe... | The overall ornamental appearance of the "CZZPTC Fruitshoes," which allegedly share a substantially similar silhouette, gathered topline, and general proportions with the claimed design. | ¶¶62-64, p. 20 | ’928 Patent, FIGS. 1-8 |
| ...as shown and described. | The complaint's "Table 2" provides a direct visual comparison between a figure from the '928 patent and the accused product to allege that an ordinary observer would find the designs to be substantially the same. | ¶63, p. 20 | ’928 Patent, FIGS. 1-8 |
- Identified Points of Contention:
- Scope Questions: A primary question for the '950 Patent is whether its claim, explicitly for a "shoe with blue outpatch sole," can be infringed by products with non-blue soles, such as the "Fruitshoes Red" and "Fruitshoes Gold" models alleged in the complaint (Compl. ¶18). The patent's own description specifies a wide range of blue Pantone colors, which may be interpreted as a limitation of the design's scope (’950 Patent, DESCRIPTION, FIG. 85).
- Technical Questions: For both patents, the central question will be one of visual perception under the ordinary observer test. The analysis will focus on whether the overall visual impression of the accused products is substantially the same as the patented designs. Defendant may point to differences in construction or materials, such as those noted in a customer review cited by the Plaintiff (e.g., molded versus real stitches), to argue against a finding of substantial similarity (Compl. ¶39).
V. Key Claim Terms for Construction
While claim construction is less common for design patents than for utility patents, the scope of the claimed design is still a critical issue.
- The Term: "blue outpatch sole" (’950 Patent Title)
- Context and Importance: This phrase from the patent's title and description is central to the scope of the '950 patent. The infringement analysis for accused products with non-blue soles will depend on whether "blue" is considered a strict limitation of the design or merely an exemplary feature of a broader design concept (i.e., a contrasting color sole). Practitioners may focus on this term because the complaint accuses products with a variety of sole colors (Compl. ¶18).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that the core inventive concept is the placement and appearance of a contrasting color outpatch sole, and that "blue" is merely one embodiment. However, this position is challenging in design patent law, where the claim is tied to what is shown and described.
- Evidence for a Narrower Interpretation: The patent is explicitly titled "Shoe With Blue Outpatch Sole." Furthermore, the detailed description of FIG. 85 states the checkered pattern indicates portions "colored any blue color within the range of Pantone PMS 282..." and lists numerous other blue color ranges (’950 Patent, DESCRIPTION). This language provides strong intrinsic evidence that the claimed design is limited to shoes with a blue sole.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain allegations of indirect or induced infringement.
- Willful Infringement: The complaint alleges that Defendant's infringement of both patents was and continues to be "knowing[], willfully, deliberately, maliciously, and in bad faith" (Compl. ¶¶ 55, 65). The factual basis for this allegation includes claims of direct copying of Plaintiff's designs, website imagery, and marketing text (Compl. ¶¶ 38, 44, 46). The complaint also cites a customer review from Amazon that explicitly notes the Defendant's product is a copy of Plaintiff's, which may be used to suggest Defendant was aware of its infringing conduct (Compl. ¶39).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case may turn on the answers to several central questions:
- A core issue will be one of definitional scope: For the '950 patent, can the ornamental design for a "shoe with blue outpatch sole" be construed to cover the accused products sold with non-blue soles, or is the color "blue" an essential and limiting feature of the claimed design?
- A key evidentiary question will be one of visual identity: Applying the "ordinary observer" test, are the accused "CZZPTC Fruitshoes" substantially the same in overall appearance as the designs protected by the '950 and '928 patents, such that a potential purchaser would be deceived?
- A third determinative factor will be intent and copying: Does the evidence of alleged blatant copying—including nearly identical website marketing text and product imagery—support the claims for willful infringement and, in parallel, establish the likelihood of confusion required for the accompanying trade dress infringement claims?