DCT

2:22-cv-05924

Gavrieli Brands LLC v. Xiamen HUAXI Technology Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:22-cv-05924, C.D. Cal., 11/22/2022
  • Venue Allegations: Venue is alleged to be proper because the defendants are non-U.S. residents, which under 28 U.S.C. § 1391(c)(3) permits them to be sued in any judicial district. The complaint also alleges personal jurisdiction based on defendants’ business activities directed at the district.
  • Core Dispute: Plaintiff alleges that Defendants’ "CZZPTC Fruitshoes" ballet flats infringe two design patents and the associated trade dress for Plaintiff’s well-known Tieks® line of footwear.
  • Technical Context: This dispute is in the highly competitive consumer footwear market, focusing on the ornamental design and brand identity of women's ballet-style flats.
  • Key Procedural History: The operative pleading is an Amended Complaint. 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 Earliest Priority Date for '928 and '950 Patents
2011-08-XX Tieks® featured in O Magazine, noted in complaint
2013-05-14 U.S. Design Patent No. D681,928 ('928 Patent) Issues
2019-04-09 U.S. Design Patent No. D844,950 ('950 Patent) Issues
2022-11-22 Amended Complaint Filed

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

U.S. Design Patent No. D844,950 - "Shoe With Blue Outpatch Sole"

  • Patent Identification: U.S. Design Patent No. D844,950, "Shoe With Blue Outpatch Sole," issued April 9, 2019 (Compl. ¶24; ’950 Patent, cover).

The Invention Explained

  • Problem Addressed: Design patents protect new, original, and ornamental designs for an article of manufacture. The complaint frames the commercial context as creating footwear with a distinctive and instantly recognizable design (Compl. ¶18).
  • The Patented Solution: The patent claims the ornamental design for a ballet-style flat shoe characterized by a two-part outsole, where the patches on the sole are a distinct blue color that is visible from the side and bottom of the shoe (’950 Patent, Title, Figs. 1-91). The patent’s description explicitly lists an extensive range of Pantone blue colors that fall within the scope of the claimed design (’950 Patent, Description of Fig. 85).
  • Technical Importance: The complaint alleges that this visible colored outsole, which it calls the "Peekaboo" outsole, is a key feature of its Tieks® brand identity and serves as a source-identifier in the marketplace (Compl. ¶¶18, 22).

Key Claims at a Glance

  • Design patents contain a single claim for the ornamental design as shown in the drawings. The claim of the ’950 Patent is for: "The ornamental design for a shoe with blue outpatch sole, as shown and described" (’950 Patent, Claim).
  • The overall ornamental design includes the following visual elements:
    • The general shape and profile of a women's ballet-style flat.
    • A two-part outsole comprised of a forefoot patch and a separate heel patch.
    • The outsoles are colored blue and are visible in profile view, creating a distinct visual break along the bottom edge of the shoe.
    • A gathered, elasticated appearance around the shoe's top opening.

U.S. Design Patent No. D681,928 - "Shoe"

  • Patent Identification: U.S. Design Patent No. D681,928, "Shoe," issued May 14, 2013 (Compl. ¶25; ’928 Patent, cover).

The Invention Explained

  • Problem Addressed: As with the ’950 Patent, the objective is the creation of a new, original, and ornamental design for footwear (Compl. ¶23).
  • The Patented Solution: The patent claims the ornamental design for a shoe, depicted as a ballet-style flat. The drawings show the shoe’s overall appearance, its gathered top line, its two-part sole construction (visible in FIG. 5), and a unique folded configuration (FIG. 8) (’928 Patent, Figs. 1-8). Unlike the ’950 Patent, the claim and title are not limited to a specific color, protecting the shape and configuration of the design itself.
  • Technical Importance: This patent appears to cover the foundational ornamental design of the Tieks® shoe, establishing rights in the overall shape and structure that Plaintiff alleges has become distinctive in the market (Compl. ¶¶18, 23).

Key Claims at a Glance

  • The patent claims: "The ornamental design for a shoe, as shown and described" (’928 Patent, Claim).
  • The overall ornamental design includes the following visual elements:
    • The overall shape of a women's ballet-style flat.
    • A two-part outsole construction with distinct forefoot and heel portions.
    • A gathered or elasticated top line.
    • The ability to be folded into a compact configuration, as depicted in FIG. 8.

III. The Accused Instrumentality

Product Identification

The accused products are "CZZPTC Fruitshoes" ballet flats, which are offered in a variety of named styles including, but not limited to, "Fruitshoes Blue," "Bright Yellow," "Royal Blue," and "Blackblue" (Compl. ¶¶18, 43, 53).

Functionality and Market Context

The complaint alleges that the accused CZZPTC flats are sold through the CZZPTC website and on Amazon, directly targeting the same consumer base as Plaintiff's Tieks® (Compl. ¶¶10, 73). The central accused feature is the ornamental design, which allegedly mimics the distinctive look of Tieks®, including the two-part colored outsole (Compl. ¶¶43, 45). The complaint provides a visual from the CZZPTC website that highlights the "design Blue color" of its "thick non-skid rubber outsole patches," using language Plaintiff alleges is nearly identical to its own marketing materials (Compl. ¶45, p. 14).

IV. Analysis of Infringement Allegations

Infringement of a design patent occurs if, in the eye of an ordinary observer familiar with the prior art, the accused design is substantially the same as the patented design.

'950 Patent Infringement Allegations

Claim Element (from the Patented Design) Alleged Infringing Functionality Complaint Citation Patent Citation
The overall ornamental appearance of a ballet flat with a two-part, colored "outpatch sole" visible from the side and bottom, specifically in a blue color. The complaint alleges that the CZZPTC "Fruitshoes" and "Navy Blue" CZZPTC ballet flats, among others, incorporate designs "substantially similar" to the patented design. An exemplary photo shows a shoe with a similar profile and a two-part colored sole. ¶53, ¶54 ’950 Patent, Figs. 1-91, Description

'928 Patent Infringement Allegations

Claim Element (from the Patented Design) Alleged Infringing Functionality Complaint Citation Patent Citation
The overall ornamental appearance of a ballet flat with a gathered top line, a two-part sole, and a specific folded configuration. The complaint alleges that various CZZPTC ballet flats have designs "substantially similar" to the patented design. A comparison image shows an accused shoe with a similar overall shape, gathered appearance, and profile. ¶63, ¶64 ’928 Patent, Figs. 1-8

Identified Points of Contention

  • Scope Questions: A central issue will be the scope of the claimed designs in light of the prior art for ballet flats. A court will need to determine whether an ordinary observer, aware of other flats on the market, would find the accused CZZPTC shoes to be substantially the same as the specific designs claimed in the patents.
  • Technical Questions: The complaint includes a customer review that points out potential differences, such as "zig-zag" versus "straight stitch" and a "molded all in one piece" sole on the CZZPTC shoe versus the "two separate components stitched to a leather sole" on the Tieks® shoe (Compl. ¶40). The defense may argue that these and other alleged differences are significant enough to avoid a finding of substantial similarity.
  • Color Limitation: For the ’950 Patent, infringement requires the accused product to have a blue outsole that falls within the extensive Pantone ranges defined in the patent's description (’950 Patent, Description). The complaint alleges infringement by styles named "Fruitshoes Blue" and "Royal Blue" (Compl. ¶53). A factual question will be whether the specific colors of those products match the patent's definition. The infringement allegation against products of other colors (e.g., yellow) would rely on the ’928 Patent, which is not color-limited. The complaint includes a side-by-side comparison of the patented design and an accused yellow shoe, which visually demonstrates the similarity in form, irrespective of color (Compl. p. 18, Table 1).

V. Key Claim Terms for Construction

In design patent cases, there are typically no "terms" to construe in the traditional sense; the claim is the design itself as depicted in the drawings. The analysis focuses on the scope of that visual design.

  • The Term: "The ornamental design for a shoe ... as shown and described"
  • Context and Importance: The entire dispute rests on the scope of the visual property right defined by this phrase. The court's interpretation of what constitutes the core, protectable elements of the design, when viewed in light of prior art, will determine the outcome of the infringement test.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: Plaintiff may argue that the key protectable element is the overall visual impression created by the combination of a ballet flat with a distinct, two-part colored sole that is visible in profile. The complaint includes a screenshot comparison of the CZZPTC and Tieks "About Us" webpages, which are alleged to be nearly identical, to suggest that Defendants themselves viewed the products as interchangeable (Compl. ¶47, p. 16).
    • Evidence for a Narrower Interpretation: Defendants may argue the design is limited to the precise shapes, proportions, and features shown in the drawings. They may point to the significant amount of prior art cited in the patents (e.g., ’950 Patent, pp. 2-3) to argue that the general concept of a ballet flat is unprotectable, and the patent's scope must be narrowly confined to the specific, novel details that distinguish it from what came before.

VI. Other Allegations

  • Indirect Infringement: The complaint does not plead claims for indirect infringement.
  • Willful Infringement: The complaint alleges that Defendants' infringement of both patents was and is "knowingly, willfully, deliberately, maliciously, and in bad faith" (Compl. ¶¶56, 66). This allegation is supported by claims of "blatant copying," including the near-verbatim duplication of website marketing language and imagery that specifically highlights the colored sole feature (Compl. ¶¶45, 47). The complaint also presents side-by-side photographs of the Tieks® product and the accused CZZPTC product to demonstrate the alleged copying (Compl. p. 17).

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

  • A core issue will be one of design scope and prior art: How broad is the protectable scope of the asserted designs in a crowded field of ballet flats? The case will turn on whether an ordinary observer, presumed to be familiar with prior art, would find the accused CZZPTC shoes substantially similar to the specific ornamental designs claimed in the ’950 and ’928 patents, or if the differences are significant enough to distinguish them.
  • A key evidentiary question for the ’950 patent will be one of color matching: Does the specific blue color used on accused CZZPTC products like the "Fruitshoes Blue" and "Royal Blue" styles fall within the extensive range of Pantone shades explicitly defined in the patent?
  • Finally, the case presents a significant question regarding intent and copying: How will the extensive evidence of alleged non-product copying—such as the duplication of website text, marketing slogans, and imagery—influence the court's view of willfulness and the overall commercial context of the dispute?