DCT
2:23-cv-09346
Nike Inc v. Skechers USA Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: NIKE, Inc. (Oregon)
- Defendant: SKECHERS U.S.A., Inc. (Delaware)
- Plaintiff’s Counsel: Arnold & Porter Kaye Scholer LLP
- Case Identification: 2:23-cv-09346, C.D. Cal., 11/06/2023
- Venue Allegations: Venue is alleged to be proper in the Central District of California because Defendant Skechers is headquartered in the district and maintains a regular and established place of business there.
- Core Dispute: Plaintiff alleges that Defendant’s athletic footwear featuring knitted uppers infringes six patents related to its proprietary "Flyknit" technology for manufacturing shoe uppers.
- Technical Context: The technology at issue involves methods for knitting shoe uppers as single, integrated components to reduce material waste, streamline manufacturing, and create footwear with zone-specific performance characteristics.
- Key Procedural History: The complaint notes a history of patent enforcement by Nike against Skechers and other competitors concerning its Flyknit technology. One of the asserted patents, U.S. Patent No. 8,266,749, was the subject of an Inter Partes Review (IPR) proceeding (IPR2016-00922) where the patentability of asserted claim 1 was confirmed, a fact that may be relevant to future validity challenges.
Case Timeline
| Date | Event |
|---|---|
| 2004-03-03 | Priority Date for ’749, ’511, ’781 Patents |
| 2006-11-10 | Priority Date for ’484 Patent |
| 2012-02-20 | Priority Date for ’562 Patent |
| 2012-05-17 | Priority Date for ’636 Patent |
| 2012-09-18 | U.S. Patent No. 8,266,749 Issues |
| 2015-06-23 | U.S. Patent No. 9,060,562 Issues |
| 2016-04-19 | Inter Partes Review Filed against ’749 Patent |
| 2016-12-06 | U.S. Patent No. 9,510,636 Issues |
| 2017-08-15 | U.S. Patent No. 9,730,484 Issues |
| 2018-03-20 | U.S. Patent No. 9,918,511 Issues |
| 2018-06-05 | U.S. Patent No. 9,986,781 Issues |
| 2021-04-19 | Inter Partes Review Certificate Issued for ’749 Patent |
| 2023-11-06 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,266,749 - “Article Of Footwear Having A Textile Upper”, issued September 18, 2012
The Invention Explained
- Problem Addressed: The patent’s background describes the inefficiency of conventional footwear manufacturing, which involves cutting multiple types of materials (leather, foam, textiles) and joining them together. This process is said to generate material waste, require complex supply chain coordination, and potentially reduce the breathability of the final product (U.S. Patent No. 8,266,749, col. 3:5-24).
- The Patented Solution: The invention proposes a method of manufacturing where a "textile element" for a shoe upper is knitted as a single component. This component is formed within a larger "surrounding textile structure" by a knitting machine, with the element itself having a different knitted texture than its surroundings. This allows the element to be defined and outlined during the knitting process itself, after which it is removed (e.g., die-cut) and incorporated into the footwear, streamlining production ('749 Patent, col. 3:26-44; Fig. 9).
- Technical Importance: This method allows for the creation of a complete or substantial portion of a shoe upper as a single, unitary textile piece with varied textures and properties, reducing the need for multiple manufacturing and assembly steps ('749 Patent, col. 11:1-10).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶21).
- Essential elements of claim 1 include:
- A method of manufacturing an article of footwear, comprising:
- simultaneously knitting a textile element with a surrounding textile structure, the knitted textile element having at least one knitted texture that differs from a knitted texture in the surrounding knitted textile structure;
- removing the knitted textile element from the surrounding knitted textile structure;
- incorporating the knitted textile element into the article of footwear.
U.S. Patent No. 9,060,562 - “Method Of Knitting A Knitted Component With An Integral Knit Tongue”, issued June 23, 2015
The Invention Explained
- Problem Addressed: Traditional footwear construction often requires the tongue to be manufactured as a separate component that is then stitched into the upper, adding complexity, material waste, and potential points of discomfort to the manufacturing process (U.S. Patent No. 9,060,562, col. 1:17-col. 2:17).
- The Patented Solution: The patent discloses a method for manufacturing a knitted footwear component where the tongue is created integrally with the upper during the knitting process. The method produces an "integral knit tongue that is of unitary knit construction with the upper," which extends through the throat area of the shoe, eliminating the need for a separate attachment step ('562 Patent, Abstract; Fig. 5).
- Technical Importance: By forming the upper and tongue as a single, integrated knit element, this method reduces material waste, increases manufacturing efficiency, and can improve the overall comfort of the footwear by reducing seams ('562 Patent, col. 7:6-14).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶30).
- Essential elements of claim 1 include:
- A method of manufacturing a knitted component for an article of footwear, comprising:
- knitting a portion of the knitted component defining an upper with a knitting machine;
- knitting an integral knit tongue that is of unitary knit construction with the upper with the knitting machine, the integral knit tongue extending through a throat area of the knitted component; and
- wherein the integral knit tongue is joined by knitting to a forward portion of the throat area and at least along a portion of both a lateral and medial side of the throat area.
U.S. Patent No. 9,510,636 - “Article Of Footwear Incorporating A Knitted Component With An Integral Knit Tongue”
- Patent Identification: U.S. Patent No. 9,510,636, "Article Of Footwear Incorporating A Knitted Component With An Integral Knit Tongue", issued December 6, 2016 (Compl. ¶38).
- Technology Synopsis: This patent claims an article of footwear (a product claim, distinct from the method claim of the ’562 patent) that incorporates a knitted component defining the upper. The key features are an integral knit tongue formed with the upper and "at least one raised element extending a height above the exterior surface of the knitted component" (Compl. ¶39).
- Asserted Claims: Independent claim 1 (Compl. ¶39).
- Accused Features: The complaint accuses Skechers footwear products that allegedly incorporate a knitted upper with an integral tongue and at least one raised external element (Compl. ¶40).
U.S. Patent No. 9,730,484 - “Article Of Footwear Having A Flat Knit Upper Construction Or Other Upper Construction”
- Patent Identification: U.S. Patent No. 9,730,484, "Article Of Footwear Having A Flat Knit Upper Construction Or Other Upper Construction", issued August 15, 2017 (Compl. ¶46).
- Technology Synopsis: This patent is directed to an article of footwear with an upper made from a "flat-knitted element." The claimed structure specifies a central portion with a "domed, three-dimensional structure" configured to extend over the top of a foot, with unitary side portions extending from it. This allows a three-dimensional upper shape to be created directly from a flat-knitting process (Compl. ¶47).
- Asserted Claims: Independent claim 1 (Compl. ¶47).
- Accused Features: The complaint targets Skechers footwear allegedly comprising an upper made from a flat-knitted element with a domed central portion and integral side portions (Compl. ¶48).
U.S. Patent No. 9,918,511 - “Article Of Footwear Having A Textile Upper”
- Patent Identification: U.S. Patent No. 9,918,511, "Article Of Footwear Having A Textile Upper", issued March 20, 2018 (Compl. ¶54).
- Technology Synopsis: This patent claims a shoe upper made from a "flat knit textile element" that is knit to shape rather than cut from a larger sheet, as evidenced by the claim language "flat knit edges free of surrounding textile structure." The invention also requires a "first knit strip" and an adjacent "second knit strip" having different properties, allowing for zoned performance in a single component (Compl. ¶55).
- Asserted Claims: Independent claim 1 (Compl. ¶55).
- Accused Features: The complaint accuses Skechers footwear whose uppers are allegedly made from a flat knit element with finished edges and adjacent strips possessing different properties (Compl. ¶56).
U.S. Patent No. 9,986,781 - “Article Of Footwear Having A Textile Upper”
- Patent Identification: U.S. Patent No. 9,986,781, "Article Of Footwear Having A Textile Upper", issued June 5, 2018 (Compl. ¶62).
- Technology Synopsis: Similar to the ’511 patent, this invention claims an upper made from a flat knit textile element with "flat knit edges free of surrounding textile structure." Its distinguishing feature is the inclusion of a "plurality of ribs integrally knitted into the flat knit textile element" that extend longitudinally along the sides of the upper from the forefoot toward the heel (Compl. ¶63).
- Asserted Claims: Independent claim 1 (Compl. ¶63).
- Accused Features: The complaint accuses Skechers footwear that allegedly features uppers with knit-to-shape edges and integrally knitted longitudinal ribs (Compl. ¶64).
III. The Accused Instrumentality
Product Identification
- The complaint identifies a wide range of Skechers footwear styles as the "Infringing Products," including models from the Arch Fit, GO WALK, and Ultra Flex lines (Compl. ¶15).
Functionality and Market Context
- The accused products are athletic and casual footwear sold to consumers in the United States through Skechers' e-commerce website, retail stores, and authorized distributors (Compl. ¶16). The complaint includes several images of the accused products, such as the "Martha Stewart x Skechers Slip-ins: Ultra Flex 3," which depicts a shoe with a continuous, one-piece knitted textile upper (Compl. p. 6). The allegations center on the knitted construction of the uppers of these shoe models.
IV. Analysis of Infringement Allegations
8,266,749 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of manufacturing an article of footwear, the method comprising: simultaneously knitting a textile element with a surrounding textile structure... | On information and belief, Skechers' manufacturers use a process that involves simultaneously knitting the shoe's textile upper element with a surrounding textile structure. | ¶22 | col. 8:3-10 |
| ...the knitted textile element having at least one knitted texture that differs from a knitted texture in the surrounding knitted textile structure; | The knitted textile element in the accused process allegedly has a texture that differs from the texture of the surrounding structure, thereby outlining it. | ¶22 | col. 8:37-40 |
| removing the knitted textile element from the surrounding knitted textile structure; | The accused manufacturing process allegedly includes a step of removing the knitted element from the surrounding structure. | ¶22 | col. 8:5-7 |
| incorporating the knitted textile element into the article of footwear. | The removed textile element is then allegedly incorporated into the final Skechers shoe product. | ¶22 | col. 6:30-34 |
- Identified Points of Contention (’749 Patent):
- Evidentiary Question: The complaint asserts infringement of this method claim under 35 U.S.C. § 271(g), which covers the importation of products made by a patented process abroad (Compl. ¶22). The central issue will be factual: what specific manufacturing process is used for the accused shoes? The complaint alleges the process on "information and belief," suggesting the precise details will be a subject of discovery.
- Scope Question: A key question for the court may be whether the term "simultaneously knitting a textile element with a surrounding textile structure" requires the element to be actively defined by different stitch patterns during the knitting process (as suggested by the specification), or if it can be read more broadly to cover any process where a large web containing the element is knitted, from which the element is later cut.
9,060,562 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of manufacturing a knitted component for an article of footwear... comprising: knitting a portion of the knitted component defining an upper with a knitting machine... | Skechers' manufacturing process allegedly involves knitting the main upper portion of the shoe on a knitting machine. | ¶31 | col. 2:36-40 |
| ...and knitting an integral knit tongue that is of unitary knit construction with the upper with the knitting machine, the integral knit tongue extending through a throat area of the knitted component; | The process allegedly includes knitting a tongue that is integral and of one-piece construction with the upper. | ¶31 | col. 2:40-44 |
| ...and wherein the integral knit tongue is joined by knitting with the knitting machine to: (1) a forward portion of the throat area, and (2) at least along a portion of both of a lateral side and a medial side of the throat area... | The tongue in the accused products is allegedly joined by knitting to the forward and side portions of the shoe's throat area during manufacturing. | ¶31 | col. 2:44-51 |
- Identified Points of Contention (’562 Patent):
- Evidentiary Question: As with the ’749 patent, this is a method claim asserted under 35 U.S.C. § 271(g) (Compl. ¶31). The dispute will likely focus on the evidence obtained in discovery regarding the actual steps used by Skechers' overseas manufacturers.
- Technical Question: The analysis will turn on whether the accused products' tongues are of "unitary knit construction" with the upper and are "joined by knitting" in the specific manner claimed. The court may need to determine if the manufacturing process creates a single, continuous knit fabric forming both the upper and tongue, or if it involves techniques that fall outside the scope of these terms.
V. Key Claim Terms for Construction
For the ’749 Patent:
- The Term: "a textile element having at least one knitted texture that differs from a knitted texture in the surrounding knitted textile structure"
- Context and Importance: This limitation defines how the "textile element" is distinguished from the "surrounding textile structure" from which it is removed. The construction of this phrase is central to infringement, as it establishes whether merely cutting a shape from a uniform knit fabric is sufficient, or if the knitting process itself must create the boundary via different textures.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim does not specify the degree or type of difference in "knitted texture," which might support an argument that any perceptible variation in stitch or pattern created during knitting suffices.
- Evidence for a Narrower Interpretation: The specification links the different textures to the creation of an "outline" of the textile element within the larger structure, stating that "differences in the stitches within textile structure 60 form an outline with the shape and proportions of textile element 40" ('749 Patent, col. 8:37-40). This may support a construction requiring the textural difference to be sufficient to visibly delineate the element's final shape prior to removal.
For the ’562 Patent:
- The Term: "unitary knit construction"
- Context and Importance: This term is critical for defining the required relationship between the shoe upper and the integral tongue. The infringement analysis will depend on whether the accused products' uppers and tongues are formed as a single, seamless knit piece that meets this definition.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states that the upper and tongue are formed as a "one-piece knit element" ('562 Patent, col. 2:37-38). This could be interpreted to mean that as long as the final component is a single piece of knit fabric, it meets the limitation, regardless of how different sections were formed.
- Evidence for a Narrower Interpretation: The patent's abstract and summary emphasize forming the tongue and upper together to increase efficiency and reduce the number of components ('562 Patent, Abstract; col. 2:12-17). This purpose could support a narrower construction requiring a truly continuous and uninterrupted knitting process between the upper and tongue, without subsequent joining steps that might be characterized as something other than creating a "unitary" construction from the outset.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement for all asserted patents. The factual basis alleged is that Skechers "encourages and induces its third-party manufacturer(s) to manufacture or import" the infringing products, and also encourages its distributors and customers to import or sell them (Compl. ¶¶24, 33, 41, 49, 57, 65).
- Willful Infringement: While there is no separate count for willful infringement, the prayer for relief requests a finding that Skechers' infringement "is and has been willful" and seeks enhanced damages under 35 U.S.C. § 284 (Compl. p. 21, item D). The complaint does not plead specific facts regarding pre-suit knowledge for these particular patents, but it does reference a history of prior patent litigation between Nike and Skechers, which may be used to argue Skechers was aware of Nike's patent portfolio (Compl. ¶4).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of process verification: for the asserted method claims (’749 and ’562 Patents), can Nike produce evidence, through discovery of Skechers’ overseas manufacturing, that the accused shoes are made using a process that meets every step of the claims? The case may turn on whether Skechers’ actual methods differ in a way that avoids infringement, even if the resulting products appear visually similar to Nike's.
- A key question of claim scope and technical structure will likely dominate the analysis of the product claims (’636, ’484, ’511, and ’781 Patents). The dispute will focus on whether the specific constructions of the accused Skechers uppers—such as their raised elements, domed shapes, knit-to-shape edges, or integral ribs—fall within the precise boundaries of the claim language, raising critical issues for claim construction.