DCT
2:23-cv-06783
Skechers USA Inc v. Laforst Shoes Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Skechers U.S.A., Inc. (Delaware) and Skechers U.S.A., Inc. II (Virginia)
- Defendant: Laforst Shoes, Inc. (California)
- Plaintiff’s Counsel: KLEINBERG & LERNER, LLP
- Case Identification: Skechers U.S.A., Inc. v. Laforst Shoes, Inc., 2:23-cv-06783, C.D. Cal., 08/17/2023
- Venue Allegations: Venue is alleged to be proper in the Central District of California because the defendant is a resident of California, transacts business and offers allegedly infringing products for sale in the district, and because the plaintiff's principal place of business is in the district, where it suffered harm.
- Core Dispute: Plaintiff alleges that Defendant’s shoe products infringe five of its design patents directed to the ornamental appearance of a "hands free" slip-in shoe, specifically focusing on the design of the heel portion.
- Technical Context: The dispute is in the field of footwear design, where the ornamental and aesthetic appearance of a shoe, particularly distinctive design elements, can be a significant driver of consumer appeal and market success.
- Key Procedural History: The complaint does not mention any prior litigation or post-grant proceedings. Four of the five asserted patents ('576, '858, '888, '312) contain terminal disclaimers, potentially tying their expiration dates to parent patents and suggesting a concerted strategy to protect variations of a core design concept.
Case Timeline
| Date | Event |
|---|---|
| 2022-05-09 | Priority Date for '917, '576, and '858 Patents |
| 2022-05-31 | Priority Date for '888 and '312 Patents |
| 2023-03-07 | U.S. Patent No. D979,917 Issues |
| 2023-05-23 | U.S. Patent No. D986,576 Issues |
| 2023-07-04 | U.S. Patent No. D990,858 Issues |
| 2023-07-25 | U.S. Patent No. D992,888 Issues |
| 2023-08-08 | U.S. Patent No. D994,312 Issues |
| 2023-08-17 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D979,917 - "SHOE UPPER" (Issued Mar. 7, 2023)
The Invention Explained
- Problem Addressed: The complaint suggests a commercial, rather than technical, problem: the need to create footwear with "novel and unique designs" that are "highly appealing" to consumers and visually distinctive in the marketplace (Compl. ¶¶ 3-4).
- The Patented Solution: The patent protects the specific ornamental design for a shoe upper. The core of the design is the visual appearance of the heel counter, which features a prominent, raised shape with a surface pattern of wavy, intersecting lines ('917 Patent, FIGS. 1, 4). The remainder of the shoe is shown in broken lines, indicating it is not part of the claimed design but merely provides environmental context ('917 Patent, Description).
- Technical Importance: The complaint alleges that shoe styles embodying these patented designs are "wildly successful, popular, and highly acclaimed," having sold millions of pairs (Compl. ¶¶ 2-3).
Key Claims at a Glance
- Design patents contain a single claim. The claim is for the visual appearance of the invention as depicted in the patent's figures.
- The essential visual elements of the claimed design are:
- The overall ornamental design for a shoe upper as shown in Figures 1-4 ('917 Patent, Claim).
- A sculpted, raised heel counter portion.
- A specific surface ornamentation on the heel counter consisting of a pattern of wavy, intersecting lines.
- The visual contrast between the claimed heel design (solid lines) and the unclaimed remainder of the shoe (broken lines).
U.S. Design Patent No. D986,576 - "SHOE UPPER" (Issued May 23, 2023)
The Invention Explained
- Problem Addressed: As with the '917 patent, the implicit problem is creating a visually distinct and commercially appealing footwear design (Compl. ¶¶ 3-4).
- The Patented Solution: This patent protects a different ornamental design for a shoe upper. The defining characteristic of this design is a pair of parallel, horizontal bands on the side of the shoe upper, near the opening, which contain vertical shading ('576 Patent, FIGS. 1-3). These bands create a distinct visual element separate from the main body of the shoe upper, which is shown in broken lines and is not part of the claimed design ('576 Patent, Description).
- Technical Importance: This patent is part of a family of designs that Skechers alleges are unique, eye-catching, and a key part of the visual appeal of its successful "hands free" shoe line (Compl. ¶¶ 3, 27).
Key Claims at a Glance
- The single claim covers the ornamental design for the shoe upper as depicted in the patent's figures.
- The essential visual elements of the claimed design are:
- The overall ornamental design for a shoe upper as shown in Figures 1-7 ('576 Patent, Claim).
- A pair of distinct, parallel, horizontal bands on the lateral side of the shoe's collar.
- Shading within the bands, suggesting texture or depth.
- The specific shape and placement of these bands relative to the unclaimed shoe upper.
U.S. Design Patent No. D990,858 - "SHOE UPPER" (Issued Jul. 4, 2023)
- Technology Synopsis: This patent claims an ornamental design for a shoe upper, focusing on the heel and collar area. The design is similar to the '576 Patent, featuring two distinct horizontal bands on the side of the shoe upper, but with a slightly different overall shape and configuration.
- Asserted Claims: The single claim for the ornamental design as shown and described in the patent.
- Accused Features: The complaint alleges the "Laforst shoe" embodies and infringes the design claimed in the '858 Patent (Compl. ¶¶ 30-31).
U.S. Design Patent No. D992,888 - "SHOE UPPER COMPONENT" (Issued Jul. 25, 2023)
- Technology Synopsis: This patent claims an ornamental design for a shoe upper component, specifically the heel and collar portion itself, rather than the entire shoe upper. The design features a smooth, contoured shape with distinct internal padding structures visible at the opening, as detailed in cross-section in FIG. 9 of the patent.
- Asserted Claims: The single claim for the ornamental design as shown and described in the patent.
- Accused Features: The complaint alleges the "Laforst shoe" embodies and infringes the design claimed in the '888 Patent (Compl. ¶¶ 35-36).
U.S. Design Patent No. D994,312 - "SHOE UPPER COMPONENT" (Issued Aug. 8, 2023)
- Technology Synopsis: This patent, like the '888 Patent, claims an ornamental design for a shoe upper component focused on the heel. It shows a different internal padding configuration and overall contour, particularly in the cross-sectional view, distinguishing it from the '888 Patent.
- Asserted Claims: The single claim for the ornamental design as shown and described in the patent.
- Accused Features: The complaint alleges the "Laforst shoe" embodies and infringes the design claimed in the '312 Patent (Compl. ¶¶ 40-41).
III. The Accused Instrumentality
Product Identification
- The accused product is identified as the "Laforst shoe" (Compl. ¶9).
Functionality and Market Context
- The complaint alleges the Laforst shoe is a copy of Skechers' "hands free shoe style" (Compl. ¶17). The complaint provides a perspective view of the accused 'Laforst shoe,' highlighting its textured heel design (Compl. ¶18). This image shows a slip-on athletic-style shoe with a knit or woven upper and a prominent, molded heel counter. The heel counter features a geometric, grid-like texture. The complaint alleges that the defendant, Laforst, only entered the market with this shoe after Skechers had already incurred the risk and expense of developing and popularizing the underlying design concept, suggesting that Laforst sought to capitalize on pre-existing market demand created by Skechers (Compl. ¶4). For comparison, the complaint also includes an image of an actual "Skechers hands free shoe," which features the "SKECHERS SLIP-INS" branding on the heel (Compl. p. 6).
IV. Analysis of Infringement Allegations
Design patent infringement is determined from the perspective of an "ordinary observer." The test is whether this observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented one.
'917 Patent Infringement Allegations
| Claim Element (from the ornamental design) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for a shoe upper, as shown and described in the patent figures. | The overall ornamental design of the accused Laforst shoe, which is alleged to embody the patented design through "detailed copying." | ¶¶ 13, 20 | '917 Patent, p. 1:47-48 |
| A sculpted heel counter featuring a surface pattern of wavy, intersecting lines. | The accused Laforst shoe features a sculpted heel counter with a geometric, grid-like surface pattern that Plaintiff alleges is a copy. | ¶18 | '917 Patent, p. 1:50-53 |
| The visual separation and contrast of the decorated heel portion from the remainder of the shoe upper. | The accused shoe's textured heel is visually distinct from its woven main body, creating an overall visual impression alleged to be the same as the patented design. | ¶18 | '917 Patent, p. 1:54-57 |
'576 Patent Infringement Allegations
The complaint does not provide sufficient detail for analysis of infringement of the '576 Patent. The visual evidence provided (Compl. ¶18) shows a shoe with a textured heel counter consistent with allegations for the '917 patent, but does not clearly depict the two horizontal side bands that are the central feature of the '576 patent design. The complaint makes a conclusory allegation that the Laforst shoe embodies the design, but does not provide specific visual support for this particular patent (Compl. ¶25).
Identified Points of Contention
- Scope Questions: The primary question for the court will be the scope of the claimed designs. For the '917 patent, the analysis may focus on whether the claimed "wavy" line pattern is substantially similar to the accused shoe's "geometric" grid pattern in the eyes of an ordinary observer.
- Technical Questions: A key evidentiary question will be whether the plaintiff can demonstrate that the accused "Laforst shoe" infringes all five asserted patents. The visual evidence in the complaint appears to map most directly to the '917 patent, raising the question of what evidence exists to support infringement of the other four patents, particularly the '576 and '858 patents, which claim a distinct two-band design not clearly visible in the provided images of the accused product.
V. Key Claim Terms for Construction
In design patent cases, claim construction is typically focused on the visual scope of the drawings rather than textual definitions. The central "term" for interpretation is the claimed design itself, as defined by the solid lines in the patent figures.
- The "Term": The ornamental design as a whole, as depicted in the solid lines of the patent figures.
- Context and Importance: The infringement analysis depends entirely on comparing the overall visual impression of the claimed design with the accused product. The scope of what an ordinary observer would perceive as the "design"—whether it is the broad concept or the specific execution of the lines and shapes—will be critical. Practitioners may focus on this issue because the defendant will likely highlight differences between the patent drawings and its product, while the plaintiff will emphasize the similarities in overall appearance.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that the essence of the design is the general concept of a visually distinct, sculpted heel counter with some form of texture ('917 patent) or side-band accent ('576 patent), and that minor variations in the specific pattern do not change the overall visual impression.
- Evidence for a Narrower Interpretation: A party could argue that the design is limited to the exact pattern and shapes shown. The fact that Skechers sought and obtained multiple patents for slight variations of the heel design could be used to argue that each patent grant is narrow and covers only its specific embodiment, and not others.
VI. Other Allegations
- Indirect Infringement: The complaint does not allege indirect infringement.
- Willful Infringement: The complaint alleges that the defendant's infringement of all five patents has been and continues to be "intentional, willful, and without regard to Skechers' rights" (Compl. ¶¶ 21, 26, 31, 36, 41). The factual basis for this allegation appears to be the assertion that the defendant copied the designs only after the plaintiff had invested heavily to create and popularize them, suggesting the defendant acted with knowledge of the plaintiff's designs and their market success (Compl. ¶4).
VII. Analyst’s Conclusion: Key Questions for the Case
- The Ordinary Observer Test: The central issue will be a visual one: from the perspective of an ordinary shoe purchaser, is the accused Laforst shoe "substantially the same" as the designs claimed in Skechers' patents? This will require a detailed comparison of the products, focusing on whether the differences in, for example, the specific heel pattern are sufficient to distinguish them from the claimed designs.
- Scope and the Role of Prior Art: A key legal question will be the scope of protection afforded to each design patent, especially in light of the other patents in the family and the relevant prior art. The court will need to determine whether the patents protect the general idea of a "slip-in" style heel or are limited to the very specific ornamental patterns and shapes depicted in each patent's drawings.
- Evidentiary Sufficiency: A critical question for trial will be one of proof. Can the plaintiff provide sufficient evidence to show that the defendant's product line infringes all five asserted designs? The visual evidence in the complaint appears to focus heavily on one design variation, leaving open the question of how the other, visually distinct patented designs are embodied in the accused shoes.