DCT
2:25-cv-09384
Jibbitz Inc v. Mma Trading LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Jibbitz, Inc. (Colorado)
- Defendant: Mma Trading LLC (California)
- Plaintiff’s Counsel: FAEGRE DRINKER BIDDLE & REATH LLP
- Case Identification: 2:25-cv-09384, C.D. Cal., 10/01/2025
- Venue Allegations: Plaintiff asserts venue is proper because Defendant is a California corporation with a regular and established place of business in the district and has allegedly committed acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s shoe charms infringe patents related to systems for securing decorative accessories to footwear and other wearable items.
- Technical Context: The technology concerns mechanical fasteners for attaching decorative charms to apparel with pre-existing holes, particularly the popular category of molded foam clogs.
- Key Procedural History: The complaint alleges that Plaintiff sent Defendant nine demand letters prior to filing suit, with the first providing actual notice of the patents-in-suit as early as May 24, 2022. The final pre-suit letter allegedly included claim charts mapping the asserted patents to the accused products.
Case Timeline
| Date | Event |
|---|---|
| 2003-01-01 | Crocs launches its clog-style foam shoe in the U.S. |
| 2005-01-01 | Jibbitz begins manufacturing and selling its shoe charms |
| 2005-07-07 | Earliest Priority Date for ’836, ’519, and ’814 Patents |
| 2006-01-01 | Crocs acquires Jibbitz and its intellectual property |
| 2010-04-20 | U.S. Patent No. 7,698,836 Issues |
| 2012-02-28 | U.S. Patent No. 8,122,519 Issues |
| 2014-07-22 | U.S. Patent No. 8,782,814 Issues |
| 2022-01-01 | Plaintiff first learns of Defendant's alleged infringement |
| 2022-05-24 | Defendant allegedly receives actual notice of patents-in-suit |
| 2025-09-17 | Plaintiff sends final demand letter to Defendant |
| 2025-10-01 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,698,836 - "System and Method for Securing Accessories to Clothing," issued April 20, 2010
The Invention Explained
- Problem Addressed: The patent’s background section describes the challenge of accessorizing molded foam shoes that feature expandable holes. Key difficulties cited include ensuring wearer comfort due to the accessory's proximity to the foot, achieving durability for outdoor use, and accommodating variations in hole sizes and material thicknesses across different shoe models (’836 Patent, col. 1:56-67).
- The Patented Solution: The invention is a system for securing an accessory, composed of a shaft with a "shoulder" at each end. An "inner shoulder" is configured to be inserted through a shoe's expandable hole to engage the inner surface, and is designed with a low profile for comfort. A second, "outer shoulder" engages the shoe's exterior surface and incorporates the decorative element. This two-part structure is designed to securely fasten the accessory regardless of variations in the shoe's material thickness or hole diameter (’836 Patent, Abstract; col. 4:19-31).
- Technical Importance: The design offered a standardized and reliable method for personalizing the popular foam clogs, a task previously complicated by the unique material properties and design inconsistencies of the footwear (’836 Patent, col. 1:45-55).
Key Claims at a Glance
- The complaint asserts independent claim 26 (Compl. ¶26).
- Essential elements of Claim 26 include:
- A system comprising a "shoe" with at least one "expandable hole".
- A "shaft" with first and second ends.
- A "first shoulder" at the first end, configured for insertion through the hole to engage the shoe's "inner surface", with the shoulder being larger in diameter than the hole in its unexpanded state.
- A "second shoulder" at the second end, configured to engage the shoe's "outer surface" and comprising the "decorative accessory".
U.S. Patent No. 8,122,519 - "System and Method for Securing Accessories to Wearable Items," issued February 28, 2012
The Invention Explained
- Problem Addressed: The patent addresses the same technical challenges as the ’836 Patent, namely the difficulty of securely and comfortably attaching accessories to items with expandable holes, given variations in hole size and material thickness (’519 Patent, col. 2:8-17).
- The Patented Solution: The patented solution is a system for securing accessories to a "wearable item" made of "moldable foam material." Like the ’836 Patent, it employs a shaft with a first (inner) shoulder and a second (outer, decorative) shoulder. The inner shoulder passes through an expandable hole to engage the inner surface, while the outer shoulder engages the exterior. The asserted claim explicitly recites that the expandable hole is "formed of a moldable foam material," directly targeting the material composition of popular clogs (’519 Patent, Abstract; col. 12:20-36).
- Technical Importance: This patent refines the inventive concept by specifically claiming the use of "moldable foam material" and broadening the environment from a "shoe" to a "wearable item," potentially strengthening its application in the footwear customization market and beyond (’519 Patent, col. 2:54-58).
Key Claims at a Glance
- The complaint asserts independent claim 27 (Compl. ¶35).
- Essential elements of Claim 27 include:
- A system comprising a "wearable item" with at least one "expandable hole" formed of a "moldable foam material".
- A "shaft" with first and second ends.
- A "first shoulder" at the first end, configured for insertion through the hole to engage the item's "inner surface", with the shoulder being larger in diameter than the hole in its unexpanded state.
- A "second shoulder" at the second end, configured to engage the item's "outer surface" and comprising the "decorative accessory".
U.S. Patent No. 8,782,814 - "System and Method for Securing Accessories to Clothing," issued July 22, 2014
- Patent Identification: U.S. Patent No. 8,782,814, “System and Method for Securing Accessories to Clothing,” issued July 22, 2014 (Compl. ¶42).
- Technology Synopsis: This patent, part of the same family, describes a system for attaching a decorative accessory to an "article of clothing." The system consists of the article of clothing with an expandable hole and a charm featuring a central shaft, a first shoulder to engage the interior surface, and a second shoulder (comprising the accessory) to engage the exterior surface (’814 Patent, Abstract).
- Asserted Claims: Independent claim 16 (Compl. ¶44).
- Accused Features: The complaint alleges that Defendant's "Accused Charms," when sold and displayed with molded shoes, form the infringing system claimed in the patent (Compl. ¶¶43-45). The complaint includes a photograph of the accused charms on a molded shoe as evidence for this count (Compl. p. 13).
III. The Accused Instrumentality
Product Identification
The "Accused Charms" are decorative accessories sold by Defendant MMA Trading LLC at mall kiosks, including locations operating under the name "Charms Zone" (Compl. ¶¶5, 9).
Functionality and Market Context
The charms are designed to be inserted into the ventilation holes of molded foam shoes for customization (Compl. ¶23). The complaint alleges that Defendant markets the Accused Charms by displaying them affixed to such shoes, thereby demonstrating their intended and allegedly infringing use (Compl. ¶15). A photograph provided in the complaint shows numerous Accused Charms with various designs secured to a light-blue molded shoe at a marketing kiosk (Compl. p. 6). The complaint alleges these displays constitute an infringing "use" of the patented systems (Compl. ¶16).
IV. Analysis of Infringement Allegations
’836 Patent Infringement Allegations
| Claim Element (from Independent Claim 26) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| [a] system for securing a decorative accessory, the system comprising; a shoe having at least one expandable hole in an upper portion of the shoe; | The combination of an Accused Charm and a molded shoe, as displayed at Defendant's kiosks (Compl. p. 9). | ¶27 | col. 10:1-3 |
| a shaft having first and second ends; | The post connecting the decorative top of an Accused Charm to its base. | ¶26 | col. 10:4-4 |
| a first shoulder secured to the first end of the shaft, the first shoulder being configured for insertion through one of the at least one expandable hole and configured to engage an inner surface of the upper portion of the shoe... | The base of the Accused Charm, which is inserted through a shoe hole and rests against the inner surface. | ¶26 | col. 10:5-9 |
| the first shoulder being larger in diameter than the expandable hole through which it is inserted when that expandable hole is in its unexpanded state; | The base of the Accused Charm is alleged to be larger than the shoe hole's resting diameter, requiring the hole to stretch for insertion. | ¶26 | col. 10:9-12 |
| and a second shoulder secured to the second end of the shaft, the second shoulder being configured to engage an outer surface of the upper portion of the shoe, the second shoulder comprising the decorative accessory. | The decorative top of the Accused Charm, which rests on the outer surface of the shoe. | ¶26 | col. 10:13-17 |
’519 Patent Infringement Allegations
| Claim Element (from Independent Claim 27) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| [a] system for securing a decorative accessory, the system comprising: a wearable item having at least one expandable hole, the at least one expandable hole formed of a moldable foam material in a molded portion of the wearable item; | The combination of an Accused Charm and a molded foam shoe, as displayed at Defendant's kiosks (Compl. p. 11). | ¶¶35-36 | col. 12:20-23 |
| a shaft having first and second ends; | The post connecting the decorative top of an Accused Charm to its base. | ¶35 | col. 12:24-24 |
| a first shoulder secured to the first end of the shaft, the first shoulder being configured for insertion through one of the at least one expandable hole and configured to engage an inner surface of the wearable item... | The base of the Accused Charm, which is inserted through a shoe hole and rests against the inner surface. | ¶35 | col. 12:25-29 |
| the first shoulder being larger in diameter than the expandable hole through which it is inserted when the expandable hole is in its unexpanded state; | The base of the Accused Charm is alleged to be larger than the shoe hole's resting diameter, requiring the hole to stretch during insertion. | ¶35 | col. 12:29-32 |
| and a second shoulder secured to the second end of the shaft, the second shoulder being configured to engage an outer surface of the wearable item, the second shoulder comprising the decorative accessory. | The decorative top of the Accused Charm, which rests on the outer surface of the shoe. | ¶35 | col. 12:33-36 |
Identified Points of Contention
- Scope Questions: The asserted claims in each patent recite a "system" that includes both the charm and the wearable item (e.g., shoe). The complaint alleges that Defendant, which sells only the charms, directly infringes by "displaying (i.e., 'using')" the complete system at its kiosks (Compl. ¶¶26, 34). This raises the question of whether assembling and presenting a product for marketing display constitutes an infringing "use" of a claimed system under 35 U.S.C. § 271(a).
- Technical Questions: A key factual question for infringement will be whether the accused charms meet the dimensional limitation requiring the "first shoulder" to be "larger in diameter than the expandable hole... in its unexpanded state". The complaint makes this assertion but does not provide specific measurements or test data to substantiate it (Compl. ¶¶26, 35).
V. Key Claim Terms for Construction
The Term: "system comprising" a "shoe" / "wearable item" / "article of clothing"
- Context and Importance: This preamble language is critical because it defines the scope of the claimed invention. The infringement case hinges on whether Defendant can be held liable for infringing a "system" claim when it only sells one component (the charm). The definition will determine whether infringement occurs only when the charm and shoe are combined.
- Intrinsic Evidence for a Broader Interpretation: The specification of the ’836 Patent states that the invention can be used with "belts, hats, and scarves," not just shoes, suggesting the focus is on the fastening mechanism itself rather than a specific application (’836 Patent, col. 4:1-3).
- Evidence for a Narrower Interpretation: The patents' titles, figures, and background sections are overwhelmingly focused on molded foam shoes as the primary embodiment (’836 Patent, FIG. 1; col. 1:45-55). A defendant may argue that the claims should be interpreted in light of this specific context.
The Term: "shoulder"
- Context and Importance: This term describes the key functional components of the charm that secure it to the shoe. The construction of "shoulder" will determine what physical structures satisfy this limitation. Practitioners may focus on this term because the precise geometry of the accused charm's base and decorative top will be compared against this claim element.
- Intrinsic Evidence for a Broader Interpretation: The term is not explicitly defined, suggesting it should be afforded its plain and ordinary meaning as a surface that provides bearing or support. The specification depicts various embodiments with shoulders of different shapes, including discs and integrated decorative forms, supporting a broad structural interpretation (’836 Patent, FIGs. 2B, 3, 4).
- Evidence for a Narrower Interpretation: The specification repeatedly describes the shoulders as being "secured to" the ends of the shaft, which could imply they are structurally distinct from the shaft itself (’836 Patent, col. 4:12-14). An accused product with a continuously tapering or conical base, rather than a discrete flange, might be argued to lack a "shoulder."
VI. Other Allegations
Indirect Infringement
The complaint alleges both induced and contributory infringement. The inducement theory is based on allegations that Defendant's in-store displays of charms on shoes, along with verbal instructions from employees, actively encourage customers to assemble and use the infringing system (Compl. ¶¶17-18, 28, 37). The contributory infringement theory is based on the allegation that the Accused Charms are specially designed for this infringing use and have no substantial non-infringing purpose (Compl. ¶¶20-21, 29, 38).
Willful Infringement
The complaint alleges willful infringement based on Defendant's alleged pre-suit knowledge of the patents. It specifically cites a series of nine demand letters, the first of which was allegedly sent on May 24, 2022, and the last of which purportedly included claim charts. The complaint alleges that Defendant’s continued sales after receiving such notice constitute willful infringement (Compl. ¶¶19, 30, 39, 49).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of defining the infringing act: Does the act of assembling and displaying the accused charms on third-party shoes at a retail kiosk for marketing purposes constitute an infringing "use" of the patented "system" under 35 U.S.C. § 271(a), or is liability limited to theories of indirect infringement?
- A second key question will be one of evidentiary proof for indirect infringement: What specific evidence can Plaintiff produce to demonstrate that Defendant possessed the requisite knowledge and specific intent to encourage its customers to commit direct infringement, particularly given that the charms may have potential uses with non-patented items?
- A dispositive factual question will be one of dimensional compliance: Can Plaintiff demonstrate through measurement or testing that the base of the Accused Charms is physically "larger in diameter than the expandable hole...in its unexpanded state" for the shoes with which they are marketed and displayed, as strictly required by the asserted independent claims?