DCT
3:24-cv-00256
Jezign Licensing LLC v. Poshmark Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Jezign Licensing, LLC (New York)
- Defendant: Poshmark, Inc. (Delaware)
- Plaintiff’s Counsel: SML Avvocati P.C.
- Case Identification: 3:24-cv-00256, N.D. Cal., 01/15/2024
- Venue Allegations: Venue is alleged to be proper because Defendant is a resident of the district, has a regular and established place of business in the district, and committed alleged acts of infringement there.
- Core Dispute: Plaintiff alleges that various models of footwear sold through Defendant’s e-commerce marketplace infringe a design patent for an "Illuminated Shoe Lower."
- Technical Context: The dispute centers on the ornamental design of illuminated footwear, a consumer product category where visual appearance is a key market differentiator.
- Key Procedural History: The complaint alleges that the patent-in-suit expired on November 13, 2021, limiting any potential recovery to damages for past infringement. The complaint also asserts that Defendant had actual knowledge of the patent from a prior lawsuit filed in the District of Maryland, Jezign Licensing, LLC v. ... Poshmark Inc., Case No. 1:22-cv-01592-RDB.
Case Timeline
| Date | Event |
|---|---|
| 2001-09-27 | 'D848 Patent Priority Date |
| 2007-11-13 | 'D848 Patent Issue Date |
| 2016-04-13 | Earliest Accused Product Listing Date Mentioned |
| 2021-11-13 | 'D848 Patent Expiration Date |
| 2024-01-15 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D554,848, “Illuminated Shoe Lower,” issued November 13, 2007
The Invention Explained:
- Problem Addressed: The complaint suggests a need to create a novel aesthetic for illuminated footwear that differs from previous designs in the "design and placement of the illumination system" (Compl. ¶8).
- The Patented Solution: The patent does not claim a functional invention, but rather "the ornamental design for an illuminated shoe lower, as shown and described" (’D848 Patent, Claim). The design consists of the visual characteristics of the lower portion of a shoe, which is depicted as a translucent or semi-translucent element from which light emanates. The patent explicitly notes that the shoe upper, shown in broken lines in the figures, is for illustrative purposes only and does not form part of the claimed design (’D848 Patent, Description).
- Technical Importance: The complaint alleges that Plaintiff has been "perfecting the design and technology of its unique illuminated footwear" since at least 2000, suggesting the patented design was part of an effort to establish a distinct visual identity in the footwear market (Compl. ¶8).
Key Claims at a Glance:
- Design patents contain a single claim, which is for the ornamental design as depicted in the patent's drawings.
- The asserted claim is: "The ornamental design for an illuminated shoe lower, as shown and described" (’D848 Patent, Claim). The scope of this claim is defined by the visual appearance of the shoe lower shown in solid lines in Figures 1-9.
III. The Accused Instrumentality
- Product Identification: The complaint identifies several models of footwear sold on Defendant's online marketplace, including "MBB and Swaggy LED Light-Up" shoes and various "Bebe" brand shoes such as "Sport Krysten, Sport Keene, and Light-Up Boots" (Compl. ¶¶15-16).
- Functionality and Market Context: The accused instrumentalities are footwear products featuring illuminated soles (Compl. ¶¶15-16). The complaint provides images of several accused products, including a black low-top sneaker with a glowing blue sole, described in a listing from April 13, 2016 (Compl. p. 4). This screenshot of a product listing on Poshmark's platform shows a "Swaggy" brand "Led Shoes" product (Compl. p. 4). The infringement allegation is not based on the products' function but on their ornamental design, which is alleged to be "substantially the same" as the patented design (Compl. ¶17).
IV. Analysis of Infringement Allegations
Design patent infringement is assessed from the perspective of an "ordinary observer." The complaint alleges that an ordinary observer would be deceived into believing the accused products' design is the same as the patented design (Compl. ¶17). The analysis below compares the claimed visual features to the allegations.
'D848 Infringement Allegations
| Claimed Visual Feature (from 'D848 Patent) | Alleged Infringing Feature (from Complaint) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for an illuminated shoe lower, as shown and described. | The accused products have "substantially the same ornamental design as the design claimed in the patent-in-suit." | ¶18 | Figures 1-9 |
| A shoe lower with a continuous, translucent body that appears to emanate light. | The "Swaggy LED Light-Up" shoe features a sole that emits a continuous blue light around its perimeter. A representative image shows this feature. | ¶15; p. 4 | Figs. 1, 6, 8 |
| The specific profile and contours of the shoe lower, including the curvature at the heel and toe. | The accused "Bebe" brand "Light-Up Boots" and other athletic-style shoes feature illuminated soles with shapes and profiles that are alleged to be substantially similar to the patented design. | ¶16; p. 4-5 | Figs. 4, 5, 7, 9 |
- Identified Points of Contention:
- Scope Questions: A primary issue will be whether the overall visual impression of the various accused shoe lowers is "substantially the same" as the specific design claimed in the 'D554,848 patent, particularly in the eyes of an ordinary observer familiar with prior art in illuminated footwear. The complaint's lack of detail on the prior art record leaves this as a central open question.
- Technical Questions: The infringement analysis must disregard the shoe uppers, which are explicitly disclaimed in the patent (’D848 Patent, Description). A question for the court will be whether the claimed "shoe lower" design is sufficiently distinct and whether an ordinary observer would be deceived based solely on similarities in the lower portion of the shoe, given the different styles of the accused products (e.g., low-tops, high-tops, boots) (Compl. pp. 4-5).
V. Key Claim Terms for Construction
In design patents, claim construction focuses on the visual impression of the drawings rather than textual terms. However, the interpretation of the design's scope will be critical.
- The Term: "The ornamental design for an illuminated shoe lower"
- Context and Importance: This phrase defines the subject matter of the patent. The dispute will turn on the breadth of this design. Practitioners may focus on the scope of the design because the infringement test requires a comparison of the accused products to the claimed design as a whole, as understood by an observer familiar with the prior art.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent includes multiple embodiments with slight variations in the sole's texture and contour (e.g., compare Fig. 1, Fig. 6, and Fig. 8). A party could argue this demonstrates the patent covers the general concept of a fully illuminated, translucent shoe lower with the depicted overall shape, not just the exact details of one embodiment.
- Evidence for a Narrower Interpretation: A party could argue that the specific details shown in the solid lines of the drawings—such as the precise curvature of the sole or the specific textural patterns seen in figures like Fig. 5—define and limit the design's scope. The explicit disclaimer of the shoe upper (’D848 Patent, Description) provides a clear boundary, limiting the protected design strictly to the lower portion of the shoe.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Poshmark’s actions of "marketing, offering for sale, and selling" the accused shoes to customers and resellers were done with the intent that those parties would use or resell them in an infringing manner (Compl. ¶¶14, 20).
- Willful Infringement: Willfulness is alleged based on Poshmark’s purported knowledge of the 'D848 patent (Compl. ¶22). The basis for this knowledge is a prior lawsuit, filed in 2022, in which Poshmark was a defendant and which concerned the same patent (Compl. ¶13).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual scope and the impact of prior art: Can the plaintiff demonstrate that, in the eye of an ordinary observer familiar with other illuminated footwear designs, the overall visual impression of the accused shoe lowers is substantially the same as the patented design? The answer will heavily depend on the prior art record developed during litigation.
- A second key question will be the effect of the patent’s disclaimer: Given that the patent explicitly disclaims the shoe upper, the case will test whether the ornamental design of the "shoe lower" alone is sufficiently novel and distinctive to be infringed by complete shoes that have different uppers and are sold in various styles (low-top, high-top, boot).
- A significant procedural question concerns willfulness and damages: The complaint predicates its willfulness claim on knowledge from a lawsuit filed in 2022 (Compl. ¶13), which is after the 'D848 patent's expiration in November 2021 (Compl. ¶15). This raises the question of how post-expiration notice could establish willful infringement for acts that occurred pre-expiration, which will likely be a point of contention in determining enhanced damages.