Gavrieli Brands LLC v. Soto Massini USA Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Gavrieli Brands LLC (California)
  • Defendant: Soto Massini (USA) Corp. (Delaware); Soto Massini SRLS. (Italy); Thomas Pichler (Individual)
  • Plaintiff’s Counsel: Morgan, Lewis & Bockius LLP
• Case Identification: 1:18-cv-00462, D. Del., 05/22/2018
• Venue Allegations: Plaintiff alleges venue is proper in Delaware because Defendant Soto Massini (USA) Corp. is a Delaware corporation and the other defendants are its alter egos or agents who have committed acts of infringement and have a regular and established place of business in the district.
• Core Dispute: Plaintiff alleges that Defendants’ "Terzetto Milano" line of ballet flats infringes five design patents and associated trade dress related to a split-sole shoe with a colored outsole.
• Technical Context: The dispute centers on the ornamental design of women's footwear, specifically a foldable ballet flat featuring a distinctive two-part colored sole, a product category with significant brand differentiation based on aesthetic features.
• Key Procedural History: The complaint alleges that Plaintiff's counsel sent a notice letter to Defendants regarding infringement of the trade dress and the '035' patent on February 16, 2018, and a follow-up email regarding the remaining four patents-in-suit on March 15, 2018.

Case Timeline

Date	Event
2011-08-10	Earliest Priority Date for all Patents-in-Suit
2013-05-14	U.S. Patent No. D681,927 Issues
2016-07-19	U.S. Patent No. D761,538 Issues
2017-03-14	U.S. Patent Nos. D781,035 and D781,032 Issue
2017-05-14	U.S. Patent No. D781,034 Issues
2018-02-05	Accused Product Kickstarter Campaign Begins
2018-02-16	Plaintiff sends notice letter regarding '035 Patent
2018-03-15	Plaintiff sends notice email regarding '032', '034', '927', and '538' Patents
2018-03-17	Accused Product Kickstarter Campaign Ends
2018-05-22	Complaint Filed

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

U.S. Design Patent No. D781,035 - Shoe with Blue Outpatch Sole

• Patent Identification: U.S. Design Patent No. D781,035, “Shoe with Blue Outpatch Sole,” issued March 14, 2017.

The Invention Explained

• Problem Addressed: The patent does not explicitly state a problem, as is typical for design patents. The subject matter suggests an effort to create a novel and aesthetically distinctive ornamental appearance for a women's ballet flat.
• The Patented Solution: The patent claims the specific visual appearance of a ballet flat characterized by its overall shape, gathered heel, and, most notably, a split rubber sole comprised of two separate patches (one for the heel, one for the ball of the foot) colored blue (D’035 Patent, Claim; D'035 Patent, FIG. 5). The design combines the classic silhouette of a ballet flat with a modern, visually distinct sole treatment.
• Technical Importance: The design provides a unique visual identifier for footwear, allowing for brand recognition based purely on the shoe's non-functional, ornamental appearance (Compl. ¶19).

Key Claims at a Glance

• The single claim asserted is for "The ornamental design for a shoe with blue outpatch sole, as shown and described" (D’035 Patent, Claim).
• Key ornamental features of the design as shown in the figures include:
  • A ballet flat upper with a rounded toe and gathered material at the heel.
  • A split outsole with two distinct, non-contiguous patches.
  • A heel patch that is generally rectangular.
  • A forefoot patch that is generally teardrop or spade-shaped.
  • The application of a blue color to the surface of both outsole patches.

U.S. Design Patent No. D781,032 - Dual-Sole Shoe with Color Outpatch Sole

• Patent Identification: U.S. Design Patent No. D781,032, “Dual-Sole Shoe with Color Outpatch Sole,” issued March 14, 2017.

The Invention Explained

• Problem Addressed: Similar to the '035 patent, this design patent seeks to provide a unique ornamental appearance for a ballet flat.
• The Patented Solution: This patent claims the ornamental design for a shoe with the same general shape and dual-sole structure as the '035 patent but is not limited to a specific color (D’032 Patent, Claim). The specification explicitly illustrates numerous embodiments where the outpatch sole is colored violet/purple, green, red/pink, blue, orange, and yellow/gold, indicating the claimed design covers the application of various contrasting colors to the sole (D’032 Patent, Description of FIGS. 8, 22, 36, 50, 71, 85).
• Technical Importance: This design expands the aesthetic concept beyond a single color, protecting the broader visual impression of a ballet flat having a two-part sole in a contrasting color to the shoe's upper (Compl. ¶¶80-81).

Key Claims at a Glance

• The single claim asserted is for "The ornamental design for a dual-sole shoe with color outpatch sole, as shown and described" (D’032 Patent, Claim).
• Key ornamental features of the design are substantially similar to the '035 patent but are presented in multiple color variations within the patent's figures:
  • A ballet flat upper with a rounded toe and gathered heel.
  • A split outsole with two distinct patches.
  • The application of a contrasting color to both outsole patches, with numerous exemplary colors shown.

U.S. Design Patent No. D781,034 - Dual-Sole Shoe with Color Outpatch Sole

• Patent Identification: D781,034, “Dual-Sole Shoe with Color Outpatch Sole,” issued May 14, 2017.
• Technology Synopsis: This patent claims an ornamental design for a ballet flat with a split sole. Like the '032 patent, it shows embodiments with various colors applied to the sole patches, protecting the overall visual impression of the design with a colored, two-part sole (D'034 Patent, Claim; D'034 Patent, Description).
• Asserted Claims: The single claim for the ornamental design as shown and described is asserted.
• Accused Features: The complaint accuses the Terzetto Milano shoe, particularly versions with blue soles and "Soto wine sole" (a violet/purple color), of infringing this design (Compl. ¶¶82-83).

U.S. Design Patent No. D681,927 - Shoe

• Patent Identification: D681,927, “Shoe,” issued May 14, 2013.
• Technology Synopsis: This patent claims an ornamental design for a shoe that appears to be a foldable ballet flat with a split sole. It shows the overall configuration of the shoe, including its ability to fold in half, which is a key feature of the claimed design's appearance in that configuration ('927 Patent, FIG. 8).
• Asserted Claims: The single claim for the ornamental design as shown and described is asserted.
• Accused Features: The complaint accuses the overall design of the Terzetto Milano shoe, including its silhouette and split-sole construction, of infringing this patent (Compl. ¶84).

U.S. Design Patent No. D761,538 - Dual Sole Shoe with Outpatch Sole

• Patent Identification: D761,538, “Dual Sole Shoe with Outpatch Sole,” issued July 19, 2016.
• Technology Synopsis: This patent claims an ornamental design for a ballet flat with a two-part "outpatch" sole. The claimed design focuses on the specific shapes and arrangement of the sole patches and the overall silhouette of the shoe upper ('538 Patent, FIGS. 1-7).
• Asserted Claims: The single claim for the ornamental design as shown and described is asserted.
• Accused Features: The complaint accuses the overall design of the Terzetto Milano shoe, particularly its split-sole configuration, of infringing this patent (Compl. ¶85).

III. The Accused Instrumentality

Product Identification

• The accused products are the "Terzetto Milano" ballet flats sold and offered for sale by Defendants (Compl. ¶48).

Functionality and Market Context

• The Terzetto Milano shoes are described as ballet flats featuring a colored outsole design (Compl. ¶47). The complaint alleges that sometime in 2017, Defendant Pichler rebranded a previous, non-infringing shoe (the "Orthera Bailadrina") by adding a colored outsole to create the accused Terzetto Milano (Compl. ¶47).
• Defendants marketed and sold the shoes through crowdfunding platforms like Kickstarter and Indiegogo, as well as a direct online store (Compl. ¶¶49, 70, 76). The Kickstarter campaign, which ran from February 5 to March 17, 2018, raised $694,417 from over 3,300 backers (Compl. ¶50). During this campaign, the shoes were advertised as having a blue outsole (Compl. ¶50). For example, a visual from the Kickstarter product catalog shows a model wearing the black Terzetto Milano shoe, which prominently displays a bright blue split sole (Compl. ¶50, p. 16).

IV. Analysis of Infringement Allegations

The core of the infringement allegation is that an ordinary observer would find the accused Terzetto Milano shoe design to be substantially the same as the designs claimed in the patents-in-suit. The complaint presents this argument through side-by-side visual comparisons.

D781,035 Infringement Allegations

Claimed Ornamental Feature (from '035 Patent)	Alleged Infringing Feature (from "Terzetto Milano")	Complaint Citation	Patent Citation
Overall ornamental appearance of a ballet flat with a rounded toe and gathered heel.	The accused product is a ballet flat with a rounded toe and gathered heel, creating a substantially similar visual impression.	¶79, Table 2	FIG. 2
A split sole comprising two separate patches, one at the forefoot and one at the heel.	The accused product features a split sole with two separate patches in the same locations.	¶79, Table 2	FIG. 5
A blue color applied to the outpatch sole.	The accused product was advertised, offered for sale, and sold with a blue outsole that is substantially identical in color and application.	¶79, Table 2	Description

D781,032 Infringement Allegations

Claimed Ornamental Feature (from '032 Patent)	Alleged Infringing Feature (from "Terzetto Milano")	Complaint Citation	Patent Citation
Overall ornamental appearance of a ballet flat with a rounded toe and gathered heel.	The accused product embodies a substantially similar overall ballet flat appearance.	¶80, Table 3	FIG. 2
A split sole comprising two separate patches, one at the forefoot and one at the heel.	The accused product features a split sole with two separate patches in the same configuration.	¶80, Table 3	FIG. 5
A contrasting color applied to the outpatch sole, with embodiments including blue, purple, and other colors.	The accused product is offered with a blue outsole and a "Soto wine sole" (purple), both of which are color applications covered by the patent's figures.	¶¶80-81, Tables 3-4	FIGS. 8, 50

Identified Points of Contention

• Scope Questions: A central question will be whether the minor differences between the patented designs and the accused product are sufficient to alter the overall visual impression for an ordinary observer. For instance, the complaint's visual evidence shows a small metallic emblem on the heel of the accused product that is not present in the patent drawings (Compl. ¶80, Table 3). The court will have to consider whether such minor additions are enough to avoid infringement.
• Technical Questions: The case may turn on a direct visual comparison. A key question for the fact-finder will be: viewing the patented design and the accused product side-by-side, are the designs substantially the same such that an ordinary observer would be deceived into purchasing the infringing article? The complaint's comparison tables, such as the one comparing the '035 patent figures to the blue-soled Terzetto Milano, are designed to argue that the answer is yes (Compl. ¶79, Table 2).

V. Key Claim Terms for Construction

For design patents, claim construction is typically not a central issue, as the claim is defined by the drawings rather than words. The claim in each patent is for "the ornamental design for a [shoe], as shown and described." There are no specific terms that require formal construction. However, the scope of the claimed design itself will be at issue.

• The Term: "ornamental design for a shoe"
• Context and Importance: The scope of what is "ornamental" versus what is "functional" is a foundational issue in design patent law. Defendants may argue that certain features of the patented design, such as the split-sole construction, are primarily functional (e.g., for flexibility) and therefore should be given little weight in the infringement analysis. Plaintiff has alleged that the distinctive blue outsole is non-functional (Compl. ¶30). The court's treatment of which visual elements are ornamental will be critical to the infringement analysis.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patents claim the design "as shown and described" ('035 Patent, Claim). This language suggests the claim covers the overall visual impression created by the combination of all depicted features, not just isolated elements. The '032 and '034 patents, by showing numerous color variations, may support a broader scope of protection for any shoe with the claimed shape and a colored, two-part sole.
  • Evidence for a Narrower Interpretation: The figures in the patents show a very specific shape for the shoe upper and the two sole patches. A defendant could argue that the claim is limited to this precise configuration and that any deviation in the accused product, however small, avoids infringement. The broken lines used in some patent figures to disclaim parts of the design could be used to argue that the claimed design is narrowly focused on the solid-line portions ('538 Patent, Description).

VI. Other Allegations

• Indirect Infringement: The complaint makes conclusory allegations of induced and contributory infringement (Compl. ¶87, ¶130, ¶141, ¶152, ¶163, ¶174). However, it does not plead specific facts to support the knowledge and intent elements required for these claims, distinct from the allegations of direct infringement.
• Willful Infringement: The complaint alleges willful infringement based on pre-suit knowledge (Compl. ¶90). It specifically alleges that Defendants had actual notice of the '035 patent as of a February 16, 2018 letter, and of the other four patents as of a March 15, 2018 email, but continued their infringing activities, including running the Kickstarter campaign until March 17, 2018 (Compl. ¶¶63-67, 88-89).

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

This case appears to be a straightforward design patent and trade dress dispute centered on claims of direct copying. The key questions for the court will likely be:

• A core issue will be one of visual comparison: Would an ordinary observer, giving such attention as a purchaser usually gives, be deceived by the similarity between the accused "Terzetto Milano" shoe and the patented designs, causing them to purchase one supposing it to be the other?
• A second key question will be one of scope and functionality: To what extent are the features of the patented designs, particularly the split-sole configuration, considered ornamental rather than functional? The answer will determine the weight those features are given in the infringement analysis.
• Finally, an evidentiary question regarding willfulness will be central to damages: Does the evidence of pre-suit notice letters, followed by Defendants’ continued sales campaign, demonstrate the kind of deliberate or egregious conduct necessary to support a finding of willful infringement and potential enhanced damages?