DCT
1:16-cv-01846
Crocs Inc v. Toys R US Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Crocs, Inc. (Delaware)
- Defendant: Toys "R" Us, Inc. (Delaware)
- Plaintiff’s Counsel: Wilmer Cutler Pickering Hale and Dorr LLP
- Case Identification: 1:16-cv-01846, D. Colo., 07/19/2016
- Venue Allegations: Venue is alleged to be proper in the District of Colorado because the Defendant resides in the state and has regular and established places of business there.
- Core Dispute: Plaintiff alleges that Defendant’s "Koala Kids" line of foam clog footwear infringes one utility patent related to breathable footwear construction and one design patent related to the ornamental appearance of footwear.
- Technical Context: The dispute centers on molded foam clogs, a category of casual footwear valued for its light weight, comfort, and waterproof characteristics.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of the asserted patents and the alleged infringement via letters dated October 1, 2012, and June 22, 2016, which forms the basis for the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2003-05-23 | U.S. Patent No. 6,993,858 Priority Date |
| 2006-02-07 | U.S. Patent No. 6,993,858 Issue Date |
| 2009-02-23 | U.S. Patent No. D610,784 Priority Date |
| 2010-03-02 | U.S. Patent No. D610,784 Issue Date |
| 2012-10-01 | First Alleged Notice of Infringement to Defendant |
| 2016-05-19 | Earliest Alleged Sale Date of an Accused Product |
| 2016-06-22 | Second Alleged Notice of Infringement to Defendant |
| 2016-07-19 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,993,858 - “Breathable Footwear Pieces”
- Patent Identification: U.S. Patent No. 6,993,858 (the “'858 Patent”), “Breathable Footwear Pieces,” issued February 7, 2006.
The Invention Explained
- Problem Addressed: The patent addresses a need for comfortable footwear suitable for work environments where common options like flip-flops or sandals are inadequate because they are not secure, not waterproof, or fail to protect the wearer from spilled liquids (’858 Patent, col. 1:21-34).
- The Patented Solution: The invention is a footwear piece, typically formed from a single piece of molded foam material, featuring a pivoting strap that can be positioned behind the heel for security or rotated forward. This construction creates a shoe that is lightweight, comfortable, and has a functional strap, with the strap’s attachment designed to hold its position through friction (’858 Patent, col. 2:53-65). The single-piece molded foam base is a central feature (’858 Patent, col. 9:37-39).
- Technical Importance: This design provides a hybrid footwear solution combining the comfort and open-air features of a sandal with the protection and security of a closed-toe shoe, making it suitable for a wide range of recreational and professional uses (’858 Patent, col. 1:60-64).
Key Claims at a Glance
- The complaint asserts infringement of at least independent Claim 1 (Compl. ¶19).
- Essential elements of Claim 1 include:
- A base section with an upper and sole formed as a single part from moldable foam material.
- A pivoting strap made of a moldable material, attached to the upper with plastic connectors, where the strap’s foam is in "direct contact" with the base’s foam.
- An open rear region, where frictional forces at the connectors are "sufficient to maintain the strap section in place in an intermediary position" to lend support to the Achilles portion of the foot.
- A toe region that tapers to generally follow the contour of a human foot.
- A sole with a bottom surface having front and rear tread patterns connected by a flat section.
U.S. Patent No. D610,784 - “Footwear”
- Patent Identification: U.S. Patent No. D610,784 (the “'784 Patent”), “Footwear,” issued March 2, 2010.
The Invention Explained
- Problem Addressed: Design patents protect ornamental appearance rather than solving a technical problem. The complaint alleges that the design was embodied in its successful "Crocband®" model, which combines the "iconic look of Crocs molded footwear with a sporty midsole band" (Compl. ¶10).
- The Patented Solution: The patent claims the specific ornamental design for footwear shown in the patent's figures (’784 Patent, Figs. 1-7). The design’s overall appearance is defined by the combination of its clog-like shape, the pattern of ventilation holes, the pivoting strap, and a visually distinct band running around the perimeter of the shoe at the midsole (Compl. ¶15). The complaint includes a photograph of a Crocs shoe embodying this design (Compl. p. 3, Photo).
- Technical Importance: The design creates a distinctive visual identity that differentiates the product in the marketplace. The complaint alleges that footwear embodying this design has achieved "enormous worldwide success" and become one of the plaintiff's "best-selling products" (Compl. ¶11).
Key Claims at a Glance
- Design patents contain a single claim for the ornamental design as shown and described in the patent's drawings (Compl. ¶26; ’784 Patent, Claim).
III. The Accused Instrumentality
Product Identification
- The complaint accuses the "Koala Kids Eva Clog" foam footwear sold by Defendant Toys "R" Us (Compl. ¶16). Specific products identified include SKN #498262-010880 and SKN #498084-040880 (Compl. ¶16).
Functionality and Market Context
- The complaint describes the accused products as "foam clog footwear" (Compl. ¶16). The complaint provides photographs of an exemplary accused shoe, depicting a clog-style shoe made of a molded material with a pivoting strap, ventilation holes in the upper, and a contrasting-colored band around the midsole (Compl. p. 5, Photos).
- The complaint alleges these products are sold under the "Koala Kids" trade name and were available for purchase on the Defendant's website (Compl. ¶16).
IV. Analysis of Infringement Allegations
’858 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a base section including an upper and a sole formed as a single part manufactured from a moldable foam material | The main body of the accused Koala Kids shoe appears to be constructed from a single molded piece of foam-like material. | ¶19; p. 5, Photos | col. 9:36-39 |
| a strap section...attached at opposite ends thereof to the upper...with plastic connectors such that the moldable foam material of the strap section is in direct contact with the moldable material of the base section | The accused shoe includes a pivoting strap attached to the upper with what appear to be plastic rivet-style connectors. | ¶19; p. 5, Photos | col. 9:40-44 |
| frictional forces...are sufficient to maintain the strap section in place in an intermediary position...whereby the strap section lends support to the Achilles portion of the human foot | The strap on the accused shoe appears to pivot and can be positioned behind the heel to secure the foot. | ¶19; p. 5, Photos | col. 9:47-53 |
| a toe region that generally follows the contour of a human foot, wherein the toe region tapers from an inner area...to an outer area | The accused shoe’s toe box is rounded and appears shaped to accommodate the natural contour of a foot. | ¶19; p. 5, Photos | col. 9:55-61 |
| the sole includes a bottom surface having front and rear tread patterns longitudinally connected by a flat section | The complaint does not provide sufficient detail for analysis of this element, as no images of the accused product's sole are included. | ¶19 | col. 10:1-3 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the accused product's strap assembly meets the "direct contact" limitation of Claim 1. The claim requires the strap's foam material to be in "direct contact" with the base's foam material, but also states they are attached "with plastic connectors." The court will need to determine if the presence of the connector defeats "direct contact" or if the claim allows for contact around the connector.
- Technical Questions: The complaint's allegation will raise the factual question of whether the strap on the accused product generates "frictional forces...sufficient to maintain the strap section in place." This functional limitation may require evidence beyond visual inspection, such as expert testing or testimony, to prove infringement.
’784 Patent Infringement Allegations
The complaint alleges that the accused "Koala Kids Eva Clog" infringes the '784 Design Patent (Compl. ¶26). The complaint provides photographs of the accused product, which show a clog-style shoe with a pivoting strap and a prominent colored band around the midsole (Compl. p. 5, Photos). For design patents, the legal test for infringement is 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 infringement analysis will turn on a visual comparison between the accused product and the design claimed in the '784 Patent figures (Compl. p. 4, Figs. 1-7). A key visual element in both the patented design and the accused product is the "sporty midsole band" (Compl. ¶10).
- Identified Points of Contention:
- The primary dispute will be whether the overall ornamental appearance of the accused shoe is substantially the same as the claimed design in the eyes of an ordinary observer.
- A significant point of contention will likely arise from the scope of the patent itself. The '784 Patent states, "The broken line showing of the sole, upper, and strap is for illustrative purpose only and forms no part of the claimed design" (’784 Patent, Description). This raises the critical question of whether the protected design is limited to the elements shown in solid lines (primarily the midsole band and its texture), or if it extends to the overall appearance of the shoe despite the disclaimer.
V. Key Claim Terms for Construction
’858 Patent
- The Term: "frictional forces...sufficient to maintain the strap section in place"
- Context and Importance: The definition of "sufficient" is critical. A low threshold for this functional requirement would make it easier for the plaintiff to prove infringement, while a high threshold (requiring a very stiff strap) would favor the defendant. Practitioners may focus on this term because it is subjective and central to the strap's claimed functionality.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests the strap should be moveable, stating that it may be desirable "to allow strap 120 to be readily moved" (’858 Patent, col. 6:31-32). This could support an interpretation that the required friction is not excessively high.
- Evidence for a Narrower Interpretation: The specification also states the friction helps "assure that strap 120 remains in place" and does not "succumb to gravity and fall," suggesting the force must be substantial enough to overcome gravity and provide reliable support (’858 Patent, col. 6:25-30).
’784 Patent
- The Term: "The ornamental design for footwear, as shown and described"
- Context and Importance: For design patents, claim construction focuses on defining the scope of the claimed design based on the drawings. The interpretation of the broken-line disclaimer is paramount. Practitioners may focus on this term because it determines what is actually protected by the patent—the entire shoe appearance or only specific features.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that despite the disclaimer, the solid lines (the midsole band) must be considered in the context of the overall shoe environment shown, and that the design as a whole creates a specific visual impression that is protected.
- Evidence for a Narrower Interpretation: The patent’s explicit statement that the broken lines showing the "sole, upper, and strap" form "no part of the claimed design" provides strong evidence that the legally protected design is limited only to the features drawn in solid lines (’784 Patent, Description). This could severely limit the scope of the patent to the midsole band itself.
VI. Other Allegations
- Willful Infringement: The complaint alleges that the Defendant’s infringement was willful (Compl. ¶22, ¶29). This allegation is based on alleged pre-suit knowledge of the patents-in-suit. The complaint states that Plaintiff sent letters to Defendant identifying the '858 and '784 Patents and the infringing products on two separate occasions, October 1, 2012, and June 22, 2016 (Compl. ¶20, ¶28). The complaint alleges that Defendant knew of the patents no later than the 2012 letter and continued its allegedly infringing conduct (Compl. ¶20).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of design patent scope: can the '784 Patent's claim be enforced against the overall appearance of the accused shoe, or does the patent's explicit disclaimer of the "sole, upper, and strap" limit the protected design to only the midsole band, fundamentally altering the infringement analysis?
- A key evidentiary question for the '858 utility patent will be one of functional equivalence: what evidence will be required to prove that the accused shoe's strap generates "sufficient" frictional forces to meet the claim limitation, and can the "direct contact" requirement be met when a plastic connector is present?
- The case will also turn on the question of willfulness: were the 2012 and 2016 notice letters sufficient to put the Defendant on notice of an objectively high likelihood of infringement, justifying enhanced damages if infringement is found?