DCT
3:19-cv-03071
Rothy's Inc v. Giesswein Walkwaren AG
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rothy’s, Inc. (Delaware)
- Defendant: Giesswein Walkwaren AG (Austria)
- Plaintiff’s Counsel: Arent Fox LLP
- Case Identification: 3:19-cv-03071, N.D. Cal., 06/03/2019
- Venue Allegations: Venue is alleged to be proper in the Northern District of California because Defendant transacts business and offers the accused products for sale within the district, and because Plaintiff’s principal place of business is in the district, where it has allegedly suffered harm.
- Core Dispute: Plaintiff alleges that Defendant’s footwear products, specifically its "The Round" and "The Pointy" shoes, infringe three of Plaintiff's U.S. design patents and its trade dress for ballet-style flats and loafers.
- Technical Context: The dispute is in the women's footwear market, centered on the ornamental design of shoes that are marketed for their style, comfort, and sustainable manufacturing process.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with pre-suit notice of the asserted patents via a letter dated May 13, 2019, four days before Defendant allegedly launched the accused products for sale on its U.S. website. This notice may be used to support the allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2014-12-18 | Priority Date for ’366, ’325, and ’729 Patents |
| 2015-12-01 | Rothy's launches "The Flat" product (approximate) |
| 2016-10-11 | U.S. Patent No. D768,366 issues |
| 2017-11-01 | Rothy's launches "Pointed Loafer" product (approximate) |
| 2018-07-19 | Defendant allegedly purchases Rothy's products |
| 2018-10-23 | U.S. Patent No. D831,325 issues |
| 2018-11-20 | U.S. Patent No. D833,729 issues |
| 2018-12-27 | Defendant allegedly makes additional purchases of Rothy's products |
| 2019-05-13 | Plaintiff sends pre-suit notice letter to Defendant |
| 2019-05-17 | Defendant launches accused products on its U.S. website (approximate) |
| 2019-06-03 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D768,366 - "Shoe" (issued Oct. 11, 2016)
The Invention Explained
- Problem Addressed: As a design patent, the ’366 Patent does not articulate a technical problem. It protects the purely ornamental, non-functional appearance of an article of manufacture (Compl. ¶¶ 19, 38).
- The Patented Solution: The patent claims the specific ornamental design for a shoe, depicted in its figures. The design features a ballet-style flat with a rounded toe, a continuous, seamless-looking upper, a distinct vamp line, and a sleek, low-profile outsole (D’366 Patent, Figs. 1-7). The bottom view shows a textured outsole pattern with a distinct heel section (D’366 Patent, Fig. 7).
- Technical Importance: The complaint alleges that this design is embodied in its "revolutionary, industry changing shoe" known as "The Flat," which achieved significant commercial success and media attention (Compl. ¶¶ 11-12, 15).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a shoe, as shown and described" (D’366 Patent, CLAIM).
- The scope of the claim is defined by the visual appearance of the shoe as shown in the solid lines of Figures 1-7, encompassing:
- The overall profile and shape of the shoe
- The configuration of the rounded toe and vamp
- The appearance of the outsole from the side, top, and bottom views
U.S. Design Patent No. D831,325 - "Shoe" (issued Oct. 23, 2018)
The Invention Explained
- Problem Addressed: The ’325 Patent protects the ornamental appearance of a shoe design (Compl. ¶20).
- The Patented Solution: The patent claims the ornamental design for a shoe that is substantially similar in overall shape to the ’366 Patent but is distinguished by a claimed "contrasting portion" on the heel (D’325 Patent, DESCRIPTION). The patent's description clarifies that this portion is intended to be a different color from the rest of the shoe, creating a color-blocked appearance at the heel (D’325 Patent, DESCRIPTION; Figs. 1, 3-6).
- Technical Importance: This patent protects a specific design variation of the ballet-style flat, adding a distinct visual element to the heel that contributes to the product's overall aesthetic (Compl. ¶26).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a shoe, as shown and described" (D’325 Patent, CLAIM).
- The key ornamental features defining the claim are:
- The overall shape of a round-toed, ballet-style flat
- The presence of a visually distinct, contrasting color portion integrated into the heel area of the shoe's upper
U.S. Design Patent No. D833,729 - "Portion of a Shoe" (issued November 20, 2018)
- Patent Identification: U.S. Design Patent No. D833,729, "Portion of a Shoe", issued November 20, 2018 (Compl. ¶21).
- Technology Synopsis: This design patent protects the ornamental design for only a "portion of a shoe" (D'729 Patent, Title). The drawings show a ballet-style flat where the upper body of the shoe is depicted in solid lines (the claimed portion), while the outsole and other elements are shown in broken lines to provide context but are not part of the claimed design (D'729 Patent, DESCRIPTION). The claimed design is therefore focused on the shape, contours, and appearance of the shoe's upper.
- Asserted Claims: The patent asserts a single claim for "The ornamental design for a portion of a shoe, as shown and described" (D'729 Patent, CLAIM).
- Accused Features: The complaint alleges that the overall appearance of Defendant's "The Round" shoe is "confusingly similar and substantially the same" as the claimed design and therefore infringes the ’729 Patent (Compl. ¶¶ 26, 52).
III. The Accused Instrumentality
Product Identification
- The complaint accuses Defendant's "The Round" shoe of infringing all three asserted design patents (Compl. ¶¶ 38, 45, 52).
Functionality and Market Context
- The complaint alleges that "The Round" is a shoe with a "shape, design and look that is virtually identical to Rothy's The Flat product" (Compl. ¶24). Side-by-side visual evidence provided in the complaint depicts "The Round" as a round-toed, ballet-style flat (Compl. p. 8). The complaint further alleges that Defendant's use of the name "The Round" mimics Plaintiff's naming convention for "The Flat" and is part of an effort to "steal the goodwill associated with Rothy's designs" (Compl. ¶35).
IV. Analysis of Infringement Allegations
D'366 Patent Infringement Allegations
The complaint provides a side-by-side visual comparison of Rothy's shoe, the accused product, and the patent drawings to support its infringement claim (Compl. pp. 8-9). This chart shows a comparison of the outsole designs.
| Claim Element (from Figures of D'366) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design of a shoe | The complaint alleges Defendant's "The Round" product has an overall appearance that is "substantially the same" as the claimed design. | ¶26, ¶38 | Figs. 1-7 |
| A rounded-toe, ballet-style flat profile | The accused "The Round" product is depicted as a rounded-toe, ballet-style flat with a similar profile. | p. 8 | Figs. 1, 4, 5, 6 |
| A specific outsole design and tread pattern | The accused product's outsole, as depicted, allegedly features a similar shape, texture, and heel element as the patented design. | p. 9 | Fig. 7 |
D'325 Patent Infringement Allegations
| Claim Element (from Figures of D'325) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design of a shoe | The complaint alleges Defendant's "The Round" product falls within the scope of the claim. | ¶45 | Figs. 1-7 |
| A contrasting portion at the heel | The complaint includes a visual of a black version of the accused product that appears to feature a small, contrasting tag on the heel. | p. 8 | Figs. 1, 3-6 |
- Identified Points of Contention:
- Scope Questions: A primary issue for the ’325 Patent will be whether the small heel tag on the accused product, as shown in the complaint's visual evidence (Compl. p. 8), constitutes the "contrasting portion" claimed in the patent. The patent figures depict a larger, integrated color-blocked section of the shoe's upper, raising the question of whether the claim's scope covers a smaller, potentially non-integral element like a fabric tag.
- Technical Questions: For all three patents, the central question for the fact-finder will be whether an ordinary observer, taking into account the prior art, would find the accused "The Round" shoe to be substantially the same as the patented designs. The comparison will focus on the overall visual effect created by the combination of claimed features. The side-by-side comparison of the outsoles is particularly notable, as it alleges similarity in a non-obvious part of the shoe (Compl. p. 9).
V. Key Claim Terms for Construction
- The Term: "contrasting portion" (in the context of the D'325 Patent)
- Context and Importance: The infringement analysis for the ’325 Patent may turn entirely on the interpretation of this feature. Practitioners may focus on this term because the visual evidence in the complaint shows the accused product has a small heel tag, whereas the patent drawings depict a larger, integrated area of contrasting color. The outcome of this interpretation could determine infringement of this patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's description states the portion "can be any color," which could suggest flexibility in its appearance (D’325 Patent, DESCRIPTION). An argument could be made that any visually distinct element at the heel that creates a contrast satisfies the claim.
- Evidence for a Narrower Interpretation: The figures consistently and exclusively depict the "contrasting portion" as a large, contiguous section of the shoe's upper that follows the heel's curvature (D’325 Patent, Figs. 1, 3, 4, 5). A court may determine that the claim is limited to this specific visual representation, which would not read on a small, appended tag.
VI. Other Allegations
- Indirect Infringement: The complaint does not plead counts for indirect (induced or contributory) infringement. The infringement allegations are for direct infringement under 35 U.S.C. § 271 (Compl. ¶¶ 38, 45, 52).
- Willful Infringement: The complaint alleges that Defendant’s infringement was and is willful (Compl. ¶¶ 42, 49, 56). This allegation is based on alleged pre-suit knowledge from two sources: (1) Defendant’s alleged purchases of Rothy's products in 2018, which suggests intentional copying (Compl. ¶22), and (2) Defendant’s alleged launch of the accused products on its U.S. website on May 17, 2019, after having received a notice letter from Plaintiff identifying the patents-in-suit on May 13, 2019 (Compl. ¶¶ 32, 34).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of ornamental similarity: Will an ordinary observer, viewing the designs as a whole, find the accused "The Round" shoe to be substantially the same as the designs claimed in the ’366 and ’729 patents? This analysis will depend heavily on the visual evidence, including the side-by-side comparisons of the shoe's profile and, notably, its outsole.
- The case may also hinge on a question of claim scope: Can the "contrasting portion" of the ’325 patent, depicted in the drawings as a large, integrated color-block on the heel, be interpreted to cover the small fabric tag allegedly present on the accused product?
- Finally, a key evidentiary question regarding damages will be one of willfulness: Do the allegations that Defendant purchased Plaintiff's products for study and then launched its own products days after receiving a notice-of-infringement letter constitute the kind of "egregious" conduct that would justify an award of enhanced damages?