DCT
1:19-cv-00692
Jezign Licensing LLC v. Starbury Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Jezign Licensing, LLC (New York)
- Defendant: Starbury Corporation (Delaware)
- Plaintiff’s Counsel: Devlin Law Firm LLC; Rabicoff Law LLC
- Case Identification: 1:19-cv-00692, D. Del., 04/17/2019
- Venue Allegations: Venue is asserted based on Defendant’s incorporation in Delaware and alleged acts of patent infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s "Kid's Skurban Elite" shoes infringe a design patent for an ornamental "Illuminated Shoe Lower."
- Technical Context: The dispute concerns the ornamental design of consumer footwear, specifically the aesthetic appearance of athletic-style shoes with illuminated soles.
- Key Procedural History: The asserted patent is a continuation-in-part of two prior patent applications, establishing an earlier priority date for the claimed design.
Case Timeline
| Date | Event |
|---|---|
| 2001-09-27 | Earliest Priority Date for U.S. Patent D554,848 |
| 2007-11-13 | U.S. Patent D554,848 Issued |
| 2019-04-17 | Complaint Filed |
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: Design patents protect ornamental appearance rather than functional solutions. The '848 Patent sought to create a new, original, and ornamental design for the lower portion of a shoe.
- The Patented Solution: The patent discloses several embodiments of an ornamental design for a shoe lower, characterized by a series of translucent regions arranged along the sole which are illuminated (’848 Patent, Description; FIG. 7). The design’s scope is explicitly limited to the shoe lower, as the shoe upper is depicted in broken lines and disclaimed as non-essential, illustrative environment (’848 Patent, Description).
- Technical Importance: The design provides a distinct visual appearance and aesthetic for footwear, intended to create market differentiation through its unique ornamental features (Compl. ¶11).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is: "The ornamental design for an illuminated shoe lower, as shown and described" (’848 Patent, Claim).
- The "elements" of this claim are the visual characteristics of the design as depicted in the patent's drawings. Key visual features of the embodiment shown in FIG. 7 include:
- The overall shape and contour of the shoe lower.
- The specific arrangement and shapes of the illuminated regions along the side of the sole.
- The texture and patterns on the non-illuminated portions of the sole.
III. The Accused Instrumentality
Product Identification
The accused products are Defendant's shoes, including "at least the model named Kid's Skurban Elite," and other shoes alleged to bear "the same or substantially similar infringing designs" (Compl. ¶10).
Functionality and Market Context
The complaint focuses on the ornamental appearance of the accused shoes, specifically "the overall appearance and placement of the Infringing Shoes' illumination system within the sole" (Compl. ¶11-12). The complaint includes a photograph of the "Kid's Skurban Elite" shoe, a blue high-top sneaker with an illuminated sole, presented as an exemplary infringing product (Compl. ¶14).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is 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 presents its infringement theory through a side-by-side visual comparison. The complaint provides a side-by-side comparison table showing a line drawing from the '848 Patent (FIG. 7) next to a photograph of the accused 'Kid's Skurban Elite' shoe (Compl. ¶14).
'848 Patent Infringement Allegations
| Patented Design Feature (as shown in FIG. 7) | Alleged Infringing Design Feature (as shown in Accused Product) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental appearance of the illuminated shoe lower, including the configuration and placement of illuminated regions within the sole. | The complaint alleges the "overall appearance and placement of the Infringing Shoes' illumination system within the sole is substantially the same as the design claimed." | ¶11, ¶13, ¶14 | FIG. 7 |
Identified Points of Contention
- Scope Questions: The infringement analysis will focus exclusively on the shoe lower, as the shoe upper is disclaimed in the patent (’848 Patent, Description). A question for the fact-finder will be whether the specific arrangement of illuminated elements on the accused shoe is "substantially the same" as any of the embodiments depicted in the patent's figures, particularly the one highlighted in the complaint (FIG. 7).
- Technical Questions: The core factual question is one of visual perception: would an ordinary observer perceive the design of the accused shoe and the patented design as substantially the same? The analysis will involve comparing the claimed ornamental features—the shape, pattern, and configuration of the illuminated sole—against the accused product, while disregarding any functional aspects.
V. Key Claim Terms for Construction
Claim construction in a design patent case focuses on defining the scope of the claimed design as depicted in the drawings, rather than interpreting specific text-based terms.
The Issue: The Scope of the Claimed Design
- Context and Importance: The central issue for the court is to articulate the scope of the protected design to the jury. The patent's disclaimer of the shoe upper is a critical aspect of this analysis, as it dictates that infringement can be found regardless of the type of shoe upper to which the accused sole is attached.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent’s express statement that "The broken lines in the shoe upper depicted in the drawings are for illustrative purposes only and form no part of the claimed design" could support a finding that the design right applies broadly to any footwear that incorporates a substantially similar illuminated lower (’848 Patent, Description).
- Evidence for a Narrower Interpretation: The claimed design is defined by the specific visual characteristics shown in solid lines in the drawings (’848 Patent, FIGs. 1-9). A court or jury could find that the design is narrowly limited to the specific shapes, proportions, and arrangement of illuminated elements depicted, and that any significant deviation in the accused product avoids infringement.
VI. Other Allegations
- Willful Infringement: The complaint does not contain an explicit allegation of willful infringement. However, it requests that the case be declared "exceptional" under 35 U.S.C. § 285, which permits an award of attorneys' fees (Compl., Prayer for Relief, ¶D.i). The factual basis for this request is not detailed in the complaint. The prayer for relief for this item contains a notable clerical error, requesting an award of fees against "Lutron," an unrelated entity, rather than Defendant Starbury (Compl., Prayer for Relief, ¶D.i).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual similarity: Will an ordinary observer, giving the attention a typical purchaser would, be deceived by the similarity between the accused Starbury shoe's sole and the ornamental design claimed in the '848 Patent? The outcome will depend on a direct visual comparison, focusing on the similarities and differences in the overall appearance of the designs.
- A key question for the court will be articulating the design's scope: The court must properly instruct the jury on what is and is not protected by the patent, particularly that the claim covers only the ornamental aspects of the shoe lower as depicted in solid lines, and not the functional aspects of illumination or the disclaimed shoe upper.