DCT

3:24-cv-00483

Skechers USA Inc v. Sanchez

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:24-cv-00483, S.D. Cal., 03/11/2024
  • Venue Allegations: Venue is alleged to be proper because Defendants transact business, offer for sale, and reside within the Southern District of California.
  • Core Dispute: Plaintiff alleges that Defendant’s "Exquisite" shoe infringes five design patents covering the ornamental appearance of a shoe upper or shoe upper component.
  • Technical Context: The dispute is in the field of footwear design, specifically concerning the visual appearance of slip-on athletic and casual shoes, a highly competitive consumer market.
  • Key Procedural History: The complaint does not mention any prior litigation, inter partes review (IPR) proceedings, or licensing history related to the patents-in-suit. All asserted patents claim priority to one of two applications filed in 2022.

Case Timeline

Date Event
2022-05-09 Priority Date for U.S. Patent Nos. D986,576 and D990,858
2022-05-31 Priority Date for U.S. Patent Nos. D992,888, D994,312, and D998,951
2023-05-23 U.S. Patent No. D986,576 Issued
2023-07-04 U.S. Patent No. D990,858 Issued
2023-07-25 U.S. Patent No. D992,888 Issued
2023-08-08 U.S. Patent No. D994,312 Issued
2023-09-19 U.S. Patent No. D998,951 Issued
2024-03-11 Complaint Filed

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

U.S. Patent No. D986,576 - “Shoe Upper,” issued May 23, 2023

The Invention Explained

This design patent protects the specific ornamental appearance of a shoe upper.

  • Problem Addressed: The complaint suggests the challenge is to create footwear with a "novel and unique" design that is visually appealing to consumers, particularly one that highlights the heel area (Compl. ¶¶ 1-4).
  • The Patented Solution: The patent claims the specific visual design for a shoe upper as depicted in its figures (D’576 Patent, Figs. 1-7). The design features a distinct, raised heel counter and collar shape. The scope of the protected design is defined by the solid lines in the drawings; the broken lines depicting the rest of the shoe (e.g., the sole and parts of the vamp) are for environmental context only and are not part of the claimed design (D’576 Patent, Description).
  • Technical Importance: The complaint alleges that this type of "hands free" heel design has proven popular, leading to the sale of millions of pairs of shoes (Compl. ¶3).

Key Claims at a Glance

  • The patent contains a single claim: "The ornamental design for a shoe upper, as shown and described" (D’576 Patent, Claim).
  • The claim protects the overall visual impression created by the specific configuration and contours of the shoe upper components shown in solid lines in the patent's figures.

U.S. Patent No. D990,858 - “Shoe Upper,” issued July 4, 2023

The Invention Explained

This patent protects an ornamental design for a shoe upper that is visually similar, but not identical, to the design in the ’576 Patent.

  • Problem Addressed: As with the ’576 Patent, the objective is to create a unique and commercially appealing footwear design that visually separates the heel from the rest of the shoe (Compl. ¶1).
  • The Patented Solution: The patent claims the specific ornamental design shown in its figures, which depict a shoe upper with a distinct heel shape (D’858 Patent, Figs. 1-7). Like the ’576 Patent, this patent uses broken lines to show the surrounding shoe structure, which is not part of the claimed design, thereby focusing the claim on the specific shape and contours of the heel and collar area (D’858 Patent, Description).
  • Technical Importance: The complaint groups this design with others that allegedly embody a successful and popular "hands free" shoe style (Compl. ¶¶ 3, 18).

Key Claims at a Glance

  • The patent’s single claim is for "The ornamental design for a shoe upper, as shown and described" (D’858 Patent, Claim).
  • The claim covers the specific visual appearance of the shoe upper shown in the patent's drawings, focusing on the features rendered in solid lines.

U.S. Patent No. D992,888 - “Shoe Upper Component,” issued July 25, 2023

  • Technology Synopsis: This patent protects the ornamental design for a component of a shoe upper, specifically the heel counter and collar portion, rather than the entire upper. The claimed design is shown both in isolation and within the environment of a shoe (D’888 Patent, Figs. 1-9). Broken lines indicate that the surrounding shoe structure is not part of the claimed design (D’888 Patent, Description).
  • Asserted Claims: The single claim for the ornamental design for a shoe upper component as shown and described (D’888 Patent, Claim).
  • Accused Features: The complaint alleges that the heel design of the "Exquisite" shoe embodies the design claimed in the ’888 Patent (Compl. ¶32).

U.S. Patent No. D994,312 - “Shoe Upper Component,” issued August 8, 2023

  • Technology Synopsis: This patent protects the ornamental design for a component of a shoe upper, focusing on the heel section. The drawings show the component by itself and situated within a larger shoe structure, with broken lines disclaiming the unclaimed portions (D’312 Patent, Figs. 1-9). The claimed design appears to be a slight variation of the design in the ’888 patent.
  • Asserted Claims: The single claim for the ornamental design for a shoe upper component as shown and described (D’312 Patent, Claim).
  • Accused Features: The complaint alleges that the heel design of the "Exquisite" shoe infringes the design claimed in the ’312 Patent (Compl. ¶37).

U.S. Patent No. D998,951 - “Shoe Upper Component,” issued September 19, 2023

  • Technology Synopsis: This patent protects the ornamental design for another variation of a shoe upper component, again focused on the heel area. The claim is limited by the solid lines in the drawings, which depict the component both in isolation and within the context of a shoe (D’951 Patent, Figs. 1-9).
  • Asserted Claims: The single claim for the ornamental design for a shoe upper component as shown and described (D’951 Patent, Claim).
  • Accused Features: The complaint alleges that the heel design of the "Exquisite" shoe embodies the design claimed in the ’951 Patent (Compl. ¶42).

III. The Accused Instrumentality

Product Identification

The accused product is the "Exquisite" shoe (Compl. ¶19).

Functionality and Market Context

  • The complaint identifies the "Exquisite" shoe as a slip-on style shoe sold by Defendants on the website www.golfgrade.com (Compl. ¶¶ 19-20).
  • The infringement allegations center on the ornamental design of the shoe, particularly its heel section (Compl. ¶¶ 4-5). The complaint provides visual evidence comparing the accused "Exquisite" shoe to a Skechers shoe that allegedly embodies the patented designs. This side-by-side comparison shows the profile and top-down views of both shoes, highlighting similarities in the shape of the heel counter and collar (Compl. p. 4).
  • The complaint alleges that Defendants began selling the accused shoe only after Skechers had established a market and broad appeal for its "hands free" heel design, suggesting an attempt to capitalize on Plaintiff's success (Compl. ¶¶ 4, 17).

IV. Analysis of Infringement Allegations

The complaint does not contain a formal claim chart. The infringement theory for design patents rests on the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design. The complaint supports its allegations primarily through visual comparisons.

D986,576 and D990,858 Infringement Allegations

  • The core of the infringement allegation is that the overall ornamental appearance of the accused "Exquisite" shoe is substantially the same as the designs claimed in the ’576 and ’858 patents (Compl. ¶¶ 22, 27). The complaint asserts that the "degree of detailed copying confirms that defendants intentionally and willfully copied each one of Skechers' patented designs" (Compl. ¶8).
  • The complaint presents a side-by-side photographic comparison of the "Infringing Exquisite Shoe" and a "Skechers Shoe" to visually substantiate its claims (Compl. p. 4). This visual, showing multiple angles of the shoes, is intended to demonstrate to the court that the overall visual impression of the two products is confusingly similar from the perspective of an ordinary consumer (Compl. p. 4).

Identified Points of Contention

  • Scope Questions: A central question will be the scope of the claimed designs. The patents use broken lines to disclaim the sole and significant portions of the shoe's upper, limiting the protected design to the specific contours of the heel and collar area. The infringement analysis must focus only on the claimed portions and whether the accused product's corresponding features are substantially similar.
  • Technical Questions: The dispute will likely revolve around a visual comparison. Defendants may argue that differences in the proportions, curvature, or specific features of the accused shoe's heel design are significant enough to create a different overall visual impression for an ordinary observer, thereby avoiding infringement. The court will have to compare the designs from the perspective of a consumer, not an expert.

V. Key Claim Terms for Construction

In design patent litigation, the "claim" is understood to be the drawings themselves. Formal claim construction of terms is rare. However, a critical issue for the court will be determining the precise scope of the claimed design as defined by the patent figures.

  • The Term: The scope of "the ornamental design... as shown."
  • Context and Importance: The distinction between solid and broken lines in the patent figures is dispositive of the claim's scope. Infringement can only be found if the accused product appropriates the novel ornamental features shown in solid lines. Practitioners may focus on this distinction because it limits the comparison to a specific subset of the shoe's features, not the entire shoe.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party might argue that the "overall visual impression" should be assessed holistically, and that the claimed component is the dominant visual feature of the shoe, driving the observer's perception of the entire product.
    • Evidence for a Narrower Interpretation: The patents explicitly state that "The broken lines shown in the drawings represent portions of the shoe upper and environmental structure that forms no part of the claimed design" (D’576 Patent, Description). This language strongly supports limiting the infringement analysis strictly to the features shown in solid lines—namely, the specific shape of the heel counter and collar—and ignoring any similarities in the unclaimed portions of the shoes.

VI. Other Allegations

  • Willful Infringement: The complaint alleges that Defendants' infringement was and is "intentional, willful, and without regard to Skechers' rights" (Compl. ¶¶ 23, 28, 33, 38, 43). The basis for this allegation appears to be the "degree of detailed copying" and the timing of Defendants' entry into the market after the alleged success of Plaintiff's designs (Compl. ¶¶ 4, 8).

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

  1. A core issue will be one of visual similarity: Applying the ordinary observer test, is the ornamental design of the accused "Exquisite" shoe's heel section substantially the same as the specific designs claimed in the patents-in-suit, or are there sufficient visual differences to distinguish them in the eyes of a consumer?
  2. A related question concerns the scope of comparison: How will the court weigh the similarities in the claimed elements (the heel/collar shown in solid lines) against any differences in the unclaimed elements (the rest of the shoe shown in broken lines) when assessing the overall visual impression?
  3. An evidentiary question will be the basis for willfulness: What evidence, beyond the visual similarity of the products themselves, can Plaintiff produce to demonstrate that Defendants engaged in intentional copying with knowledge of Plaintiff's specific patent rights, as required to support a claim for enhanced damages?