DCT

5:24-cv-00802

Skechers USA Inc v. American Exchange Apparel Group Corp

I. Executive Summary and Procedural Information

Parties & Counsel:
- Plaintiff: Skechers U.S.A., Inc. (Delaware) and [Skechers U.S.A., Inc.](https://ai-lab.exparte.com/party/skechers-usa-inc) II (Virginia)
- Defendant: American Exchange Group (unknown business entity) and Aero Global LLC (New York)
- Plaintiff’s Counsel: KLEINBERG & LERNER, LLP
Case Identification: 5:24-cv-00802, C.D. Cal., 05/07/2024
Venue Allegations: Venue is alleged based on Defendants transacting business, offering infringing products for sale within the district, and maintaining a regular and established place of business in Riverside, California.
Core Dispute: Plaintiff alleges that Defendant’s footwear infringes nine of Plaintiff's design patents covering the ornamental appearance of a "Scalloped Opening" shoe design.
Technical Context: The dispute is in the field of footwear design, where the ornamental and aesthetic features of a product can be a significant driver of consumer appeal and market success.
Key Procedural History: This filing is a First Amended Complaint. The complaint alleges that Plaintiff previously notified Defendant of the alleged infringement, and that Defendant subsequently continued to sell the accused products from its inventory.

Case Timeline

Date	Event
2019-06-19	Priority Date for all nine Patents-in-Suit
2020-03-03	Issue Date, U.S. Patents D876,788; D876,789; D876,790
2020-03-31	Issue Date, U.S. Patents D879,445; D879,446; D879,447; D879,448; D879,449
2020-04-07	Issue Date, U.S. Patent D880,134
2024-05-07	First Amended Complaint Filing Date

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

U.S. Patent No. D879,448 S - "Shoe Upper"

Patent Identification: U.S. Patent No. D879,448 S, "Shoe Upper," issued March 31, 2020.

The Invention Explained

Problem Addressed: The complaint suggests a need in the footwear market for shoe designs with a "distinctive visual appearance that is highly appealing," particularly around the opening of the shoe where it interfaces with the wearer's foot (Compl. ¶¶ 1-3).
The Patented Solution: The patent claims the ornamental design for a shoe upper, the key feature of which is a continuous, wave-like or "scalloped" top edge (Compl. ¶ 3). The design's overall appearance is defined by the solid lines in the patent's figures, which depict the specific configuration and proportions of these ornamental features from multiple perspectives (’448 Patent, Claim, Figs. 1-7). The cross-hatching shown in several figures indicates the design is applied to a knit material upper (’448 Patent, Description).
Technical Importance: The complaint alleges that this type of design had "broad appeal" and was "instantly successful," indicating its perceived value in differentiating products in the competitive consumer footwear market (Compl. ¶ 17).

Key Claims at a Glance

The complaint asserts the single claim of the '448 Patent (Compl. ¶¶ 22-23).
The claim protects:
- The ornamental design for a shoe upper, as shown and described in the patent.
- The visual characteristics of the design are defined by the features shown in solid lines in Figures 1-7, while portions shown in broken lines illustrate the environment and form no part of the claimed design (’448 Patent, Description).

U.S. Patent No. D879,446 S - "Shoe Upper"

Patent Identification: U.S. Patent No. D879,446 S, "Shoe Upper," issued March 31, 2020.

The Invention Explained

Problem Addressed: As with the '448 Patent, the design addresses the creation of a unique and commercially appealing aesthetic for a shoe's upper opening (Compl. ¶¶ 1-3).
The Patented Solution: The patent claims a distinct ornamental design for a shoe upper, also characterized by a scalloped top-line. While thematically similar to other asserted patents, the specific visual appearance—including the curvature, number, and placement of the "scallops" and the location of the knit material shading—is unique to the views shown in this patent (’446 Patent, Claim, Figs. 1-7).
Technical Importance: The filing of multiple patents for slight variations of the "Scalloped Opening" design suggests the patentee viewed these specific configurations as individually valuable and distinct from one another in the marketplace (Compl. ¶¶ 3-4, 18).

Key Claims at a Glance

The complaint asserts the single claim of the '446 Patent (Compl. ¶¶ 27-28).
The claim protects:
- The ornamental design for a shoe upper, as shown and described in the patent.
- The scope of the design is dictated by the solid lines in the patent's drawings, with broken lines indicating unclaimed subject matter (’446 Patent, Description).

Multi-Patent Capsules

Patent Identification: U.S. Patent No. D876,789 S, "Shoe Upper," issued March 3, 2020.
Technology Synopsis: This patent claims a specific ornamental design for a shoe upper, characterized by a wave-like pattern along the top opening. The design is defined by the solid lines in the patent figures, which show a particular configuration of the scalloped edge (’789 Patent, Claim, Figs. 1-7).
Asserted Claims: Claim 1 (Compl. ¶¶ 32-33).
Accused Features: The "Scalloped Opening" design of the accused AEG shoe (Compl. ¶¶ 5, 33).
Patent Identification: U.S. Patent No. D876,788 S, "Shoe Upper," issued March 3, 2020.
Technology Synopsis: This patent claims a specific ornamental design for a shoe upper featuring a distinct scalloped edge. The scope of the claimed design is limited to the visual appearance depicted in the solid-line drawings of the patent (’788 Patent, Claim, Figs. 1-7).
Asserted Claims: Claim 1 (Compl. ¶¶ 37-38).
Accused Features: The "Scalloped Opening" design of the accused AEG shoe (Compl. ¶¶ 5, 38).
Patent Identification: U.S. Patent No. D876,790 S, "Shoe Upper," issued March 3, 2020.
Technology Synopsis: This patent claims an ornamental design for a shoe upper defined by a specific scalloped or wavy top-line. The protected design is that which is shown in the solid lines of the patent's figures (’790 Patent, Claim, Figs. 1-7).
Asserted Claims: Claim 1 (Compl. ¶¶ 42-43).
Accused Features: The "Scalloped Opening" design of the accused AEG shoe (Compl. ¶¶ 5, 43).
Patent Identification: U.S. Patent No. D879,447 S, "Shoe Upper," issued March 31, 2020.
Technology Synopsis: This patent claims a specific ornamental design for a knit shoe upper, characterized by a wavy pattern along the top opening. The design is defined by the solid lines in the patent figures, with cross-hatching indicating the knit material (’447 Patent, Description, Figs. 1-7).
Asserted Claims: Claim 1 (Compl. ¶¶ 47-48).
Accused Features: The "Scalloped Opening" design of the accused AEG shoe (Compl. ¶¶ 5, 48).
Patent Identification: U.S. Patent No. D879,445 S, "Shoe Upper," issued March 31, 2020.
Technology Synopsis: This patent claims an ornamental design for a knit shoe upper with a distinct scalloped edge. The scope is defined by the visual appearance depicted in the patent's solid-line drawings (’445 Patent, Description, Figs. 1-7).
Asserted Claims: Claim 1 (Compl. ¶¶ 52-53).
Accused Features: The "Scalloped Opening" design of the accused AEG shoe (Compl. ¶¶ 5, 53).
Patent Identification: U.S. Patent No. D880,134 S, "Shoe Upper," issued April 7, 2020.
Technology Synopsis: This patent claims a specific ornamental design for a knit shoe upper, distinguished by its particular scalloped top-line configuration. The claim covers the design as shown and described in the patent's figures (’134 Patent, Claim, Figs. 1-7).
Asserted Claims: Claim 1 (Compl. ¶¶ 57-58).
Accused Features: The "Scalloped Opening" design of the accused AEG shoe (Compl. ¶¶ 5, 58).
Patent Identification: U.S. Patent No. D879,449 S, "Shoe Upper," issued March 31, 2020.
Technology Synopsis: This patent claims an ornamental design for a knit shoe upper, defined by a specific wavy top-line. The protected design is limited to that which is shown in the solid lines of the patent figures (’449 Patent, Claim, Figs. 1-7).
Asserted Claims: Claim 1 (Compl. ¶¶ 62-63).
Accused Features: The "Scalloped Opening" design of the accused AEG shoe (Compl. ¶¶ 5, 63).

III. The Accused Instrumentality

Product Identification

The accused products are identified as "AEG's infringing shoes" that feature a "Scalloped Opening" (Compl. ¶¶ 5, 8, 20). The complaint does not specify particular model names.

Functionality and Market Context

The complaint alleges that the accused shoes "embody" the patented designs (Compl. ¶ 9). The core of the allegation is that Defendant copied Plaintiff's successful and patented design feature rather than innovating (Compl. ¶¶ 4, 19). The complaint includes a side-by-side photographic comparison of an "AEG infringing shoe" and a "Skechers shoe," which purports to show the visual similarity of the designs (Compl. p. 5). This image shows a pink, flat shoe with a knit upper and a scalloped opening, identified as the AEG infringing shoe (Compl. p. 5).

IV. Analysis of Infringement Allegations

Design patent infringement is determined from the perspective of an "ordinary observer." The analysis asks whether such an observer, familiar with the prior art, would be deceived into believing the accused product is the same as the patented design. The complaint alleges that the overall visual impression of the accused AEG shoe is substantially the same as the designs claimed in the asserted patents.

The complaint provides a grid of figures from each of the nine asserted patents, inviting a direct visual comparison to the accused product (Compl. pp. 3-4).

D879,448 S Infringement Allegations

Claim Element (from Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
The ornamental design for a shoe upper, as shown and described.	The accused AEG shoe is alleged to embody the claimed design, featuring a scalloped top-line and overall configuration that creates a visual impression substantially the same as the design shown in the '448 Patent's figures.	¶23; Image at p. 5	'448 Patent, Claim, Figs. 1-7

D879,446 S Infringement Allegations

Claim Element (from Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
The ornamental design for a shoe upper, as shown and described.	The accused AEG shoe is alleged to possess the ornamental features of the claimed design, creating an overall appearance that an ordinary observer would find substantially similar to the design depicted in the '446 Patent's figures.	¶28; Image at p. 5	'446 Patent, Claim, Figs. 1-7

Identified Points of Contention:
- Scope Questions: A central issue will be the scope of each of the nine design patents. The existence of multiple patents for similar, but not identical, scalloped-edge designs raises the question of whether each patent is limited to the precise configuration shown, or if it can cover a broader range of similar designs. The defendant may argue that the claims are narrow and that any differences in its product are sufficient to avoid infringement of each patent individually.
- Visual Questions: The dispute will turn on a visual comparison between the accused AEG shoe and the drawings of each asserted patent. The court and jury will have to determine if the designs are "substantially the same." The side-by-side photo comparison in the complaint is presented as direct evidence to support this assertion (Compl. p. 5). The role of the prior art, which is not detailed in the complaint but is listed on the face of the patents, will be critical in framing this comparison and determining the novelty of the claimed designs.

V. Key Claim Terms for Construction

In design patent litigation, formal claim construction of textual terms is rare, as the claim is understood to be the design itself as depicted in the patent's drawings. The court's "construction" is typically a description of the ornamental features shown in the solid lines of the drawings.

The Feature: The overall ornamental appearance of the "Scalloped Opening" of the shoe upper.
Context and Importance: This feature is the central element of the asserted designs and the core of the infringement dispute. The analysis will focus on the specific visual characteristics of this feature—including the shape, number, depth, and rhythm of the waves, and its interplay with the rest of the shoe upper—as depicted in each patent.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that the claim of each patent covers the general ornamental concept of a wavy top-line on a knit flat of the type shown, pointing to the overall visual effect rather than minute details. The complaint's grouping of nine patents under the single "Scalloped Opening" label supports this thematic approach (Compl. ¶ 3).
- Evidence for a Narrower Interpretation: A party would likely argue that the grant of nine separate patents for slight variations of the same concept demonstrates that each patent's scope is exceptionally narrow and strictly limited to the exact design depicted in its figures. Any perceptible difference between the accused shoe and a specific patent's drawings could be argued as a basis for non-infringement of that patent.

VI. Other Allegations

Willful Infringement: The complaint alleges that Defendant's infringement was and continues to be "intentional, willful, and without regard to Skechers' rights" for each asserted patent (e.g., Compl. ¶ 24, ¶ 29). The factual bases for this allegation include the claims that: (1) Defendant copied the designs only after Plaintiff had incurred the expense of developing and popularizing them (Compl. ¶ 4), and (2) Plaintiff "previously notified AEG of its infringement and, in response, AEG continued to sell off infringing shoes from its inventory" (Compl. ¶ 14). This latter point alleges actual notice and subsequent infringing activity, which may support a finding of willfulness.

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

A core issue will be one of visual scope and infringement: Applying the "ordinary observer" test, is the design of the accused AEG shoe "substantially the same" as the specific ornamental designs claimed in each of the nine asserted patents, considered individually and in light of the relevant prior art? The resolution may depend on whether the court views the patents as protecting a general design concept or as being strictly limited to the exact visual representations in their drawings.
A second central question will concern willfulness and damages: Should infringement be found, the court will examine the evidence supporting willful infringement, particularly the allegation that the defendant continued to sell accused products after receiving notice from the plaintiff. This could expose the defendant to enhanced damages under 35 U.S.C. § 284 and may also factor into an award of the infringer's total profits, a remedy available for design patent infringement under 35 U.S.C. § 289.