DCT
1:19-cv-01509
Steven Madden Ltd v. Rothys Inc
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Steven Madden, Ltd. (Delaware)
- Defendant: Rothy's, Inc. (Delaware)
- Plaintiff’s Counsel: Farnan LLP; Debevoise & Plimpton LLP; Amster, Rothstein & Ebenstein, LLP
- Case Identification: 1:19-cv-01509, D. Del., 11/04/2019
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant Rothy's, Inc. is a Delaware corporation and therefore resides in the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its "Rosy Flat" shoe does not infringe three of Defendant’s design patents, along with a declaration that Defendant's asserted trade dress rights are invalid and unenforceable, and a claim that Defendant has engaged in false patent marking.
- Technical Context: The dispute centers on the ornamental designs of women's ballet-style flat shoes, a highly competitive segment of the consumer footwear market.
- Key Procedural History: Plaintiff filed this declaratory judgment action after receiving a cease and desist letter from Defendant alleging patent and trade dress infringement. The complaint notes that Defendant has previously filed lawsuits against other competitors, JKM Technologies and Giesswein Walkwaren AG, asserting similar patent and trade dress rights.
Case Timeline
| Date | Event |
|---|---|
| 2014-12-18 | Priority Date for ’325, ’1,313, and ’4,313 Patents |
| 2018-10-23 | Issue Date for U.S. Design Patent No. D831,325 |
| 2018-10-23 | Issue Date for U.S. Design Patent No. D831,313 |
| 2019-04-02 | Issue Date for U.S. Design Patent No. D844,313 |
| 2019-08-02 | Rothy's sends notice letter to Madden |
| 2019-11-04 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D844,313 - Portion of a Shoe, Issued April 2, 2019
The Invention Explained
- Problem Addressed: Design patents do not articulate a problem and solution in the manner of utility patents; their purpose is to protect the novel, ornamental appearance of an article of manufacture. The context is creating a distinct aesthetic for a women's flat shoe (Compl. ¶¶ 23-24).
- The Patented Solution: The patent claims the specific ornamental design for a portion of a shoe, with the scope of the design being defined by the visual characteristics depicted in solid lines in the patent's figures (’4,313 Patent, "CLAIM," Figs. 1-7). The complaint characterizes this design as a "flat ballet slipper having a flat, wide-bodied profile with a rounded toe design" (Compl. ¶24). It further describes the design as flaring "outwardly from the upper towards the sole," creating what the complaint labels an "Inner Upper Region" and "Outer Upper Region" that contribute to a "wide-bodied flat appearance" (Compl. ¶31).
- Technical Importance: The claimed design provides a specific overall shape and profile intended to be visually distinct within the crowded market for women's footwear (Compl. ¶3).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a portion of a shoe, as shown and described" (’4,313 Patent, "CLAIM").
- As this is a design patent, the essential elements are the visual features shown in the drawings, which the complaint breaks down into:
- A flat ballet slipper profile (Compl. ¶24)
- A "wide-bodied" shape that flares outwardly (Compl. ¶31)
- A "rounded toe design, similar to a narrow parabola" (Compl. ¶30)
- A "short, blunt toe box" (Compl. ¶32)
U.S. Design Patent No. D831,325 - Shoe, Issued October 23, 2018
The Invention Explained
- Problem Addressed: The patent aims to protect a novel ornamental feature to distinguish a shoe's appearance.
- The Patented Solution: The patent claims the ornamental design for a shoe as depicted in its figures (’325 Patent, "CLAIM"). The design is limited to the solid-line portions of the drawings, which consist solely of a portion on the rear upper of the shoe (Compl. ¶¶ 39-40). The patent specification explicitly notes that the figures "include a contrasting portion, which is designated to show that the portion can be any color, and in particular, a color different than the remaining portion of the shoe" (’325 Patent, "DESCRIPTION"; Compl. ¶41). All other parts of the shoe are shown in broken lines, indicating they are not part of the claimed design (Compl. ¶40).
- Technical Importance: The claimed design seeks to protect a specific, localized visual element—a contrasting heel piece—as a source-identifying or differentiating feature on a shoe.
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a shoe, as shown and described" (’325 Patent, "CLAIM").
- The essential elements are the visual features of the portion shown in solid lines, which the complaint characterizes as:
- A band located on the "rear upper of the shoe" (Compl. ¶40)
- The portion has a contrasting appearance, such as a different color, from the rest of the shoe (Compl. ¶41; ’325 Patent, "DESCRIPTION")
Multi-Patent Capsule
- Patent Identification: U.S. Design Patent No. D831,313, Shoe, Issued October 23, 2018 (Compl. ¶33).
- Technology Synopsis: This patent claims the ornamental design for a shoe. The complaint alleges the design is similar to the ’4,313 Patent, featuring a "flat wide-bodied profile with... a short, blunt toe box" (Compl. ¶34). It is presented as having a narrower scope than the ’4,313 Patent because it appears to also claim additional features like the sole, a mid-sole, and ornamentation on the upper, which are disclaimed in the ’4,313 Patent (Compl. ¶34).
- Asserted Claims: The patent asserts a single claim for "the ornamental design for a shoe, as shown and described" (’1,313 Patent, "CLAIM").
- Accused Features: The overall ornamental appearance of the "Rosy Flat" shoe is accused, with the dispute centering on whether its profile and toe shape are substantially similar to the patented design (Compl. ¶¶ 45-47).
III. The Accused Instrumentality
Product Identification
- The "Rosy Flat" shoe sold by Plaintiff Steven Madden, Ltd. (Compl. ¶3).
Functionality and Market Context
- The complaint describes the Rosy Flat as an "on-trend" women's footwear product (Compl. ¶22). Photographs provided in the complaint show it to be a ballet-style flat shoe with a pointed toe and what appears to be a knitted upper construction (Compl. ¶42).
- Madden alleges that the Rosy Flat's design is "substantially different" from the Asserted Patents (Compl. ¶26). Key alleged differences include a profile that is narrow and "tapers inward" rather than being "wide-bodied," and a toe portion that is "much narrower, longer, and has a sharper point" compared to the "blunt, parabola-shaped tip" claimed in the Group 1 Patents (Compl. ¶¶ 45-46).
- A photograph of the Rosy Flat shoe's side profile is provided to illustrate its allegedly non-infringing design (Compl. p. 12). Regarding the ’325 Patent, Madden alleges the Rosy Flat "does not have a colored band around the upper edge of the heel" and thus lacks the claimed contrasting portion (Compl. ¶49).
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The following tables summarize Madden's arguments for why its Rosy Flat shoe is not "substantially the same" as the patented designs from the perspective of an ordinary observer.
D844,313 Patent Infringement Allegations
| Claim Element (from Design shown in patent figures) | Alleged Non-Infringing Feature of Rosy Flat Shoe | Complaint Citation | Patent Citation |
|---|---|---|---|
| A "flat, wide-bodied profile" that flares outwardly, creating a visible "Inner Upper Region" from a top-down view. | The Rosy Flat has a narrow profile that tapers inward, such that the "Inner Side of the Rosy Flat shoe is so narrow that it tapers inward such that it cannot even be seen from a top view." | ¶45 | Figs. 5-6 |
| A "blunt, parabola-shaped" rounded toe. | The Rosy Flat has a toe portion that is "much narrower, longer, and has a sharper point." | ¶46 | Figs. 5-6 |
The complaint includes an annotated image comparing a top-down view from the patent with a photograph of the Rosy Flat to highlight the alleged differences in profile width and toe shape (Compl. p. 14).
D831,325 Patent Infringement Allegations
| Claim Element (from Design shown in patent figures) | Alleged Non-Infringing Feature of Rosy Flat Shoe | Complaint Citation | Patent Citation |
|---|---|---|---|
| An ornamental design for a portion of the rear upper of the shoe. | The Rosy Flat shoe is alleged to have no such distinct ornamental portion on its heel. | ¶49 | Figs. 1, 5 |
| The claimed portion has a contrasting appearance (e.g., color) relative to the rest of the shoe. | The Rosy Flat allegedly has a uniform color and texture on its heel, with "no contrasting portion that differs from the color of the rest of the shoe." | ¶49 | Figs. 1, 5; "DESCRIPTION" |
The complaint provides a photograph of the Rosy Flat's heel, alleging it lacks the contrasting band required by the patent's claim (Compl. p. 15).
Identified Points of Contention
- Scope Questions: A central question for the Group 1 Patents (’4,313 and ’1,313) will be whether the overall visual impression created by the "wide-bodied" profile and "rounded toe" is the dominant ornamental feature. If so, the court will need to decide if the Rosy Flat's pointed toe and tapered profile create a sufficiently different overall impression for an ordinary observer.
- Technical (Visual) Questions: For the ’325 Patent, the dispute raises a direct factual question: does the Rosy Flat shoe contain any feature that could be perceived by an ordinary observer as the "contrasting portion" claimed in the patent? The complaint's position is that it does not (Compl. ¶49).
V. Key Claim Terms for Construction
In design patent cases, construction focuses on describing the claimed visual design in words to guide the "ordinary observer" infringement analysis. The central "term" is the claim itself.
- The Term: "The ornamental design for a [portion of a] shoe, as shown and described."
- Context and Importance: The entire non-infringement argument rests on the visual scope of the patent figures. Practitioners may focus on how narrowly the claim is tied to the specific shapes and proportions depicted. The court's verbal description of the claimed designs—for example, whether it is a "general design for a rounded-toe flat" versus a "specific design with a wide, flared profile and parabolic toe"—will be critical.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party seeking to enforce the patent might argue that the overall impression is that of a simple, knitted ballet flat and that minor variations in toe pointiness or profile width do not change the fundamental design identity. The complaint does not present this view.
- Evidence for a Narrower Interpretation: The complaint provides significant evidence that may support a narrow construction. For the Group 1 Patents, it points to the "wide-bodied profile" and "rounded toe" as specific, limiting features of the claimed design (Compl. ¶¶ 24, 30-32). For the ’325 Patent, the use of broken lines to disclaim the vast majority of the shoe is strong evidence that the claim is narrowly limited to the contrasting rear upper portion shown in solid lines (Compl. ¶40; ’325 Patent, Figs. 1-7).
VI. Other Allegations
- Indirect Infringement: The complaint does not provide sufficient detail for analysis of any indirect infringement theories.
- Willful Infringement: This element is not applicable, as the complaint is a declaratory judgment action for non-infringement initiated by the accused infringer.
- False Marking: The complaint includes a specific count for false patent marking under 35 U.S.C. § 292 (Compl., Count VI). It alleges that Rothy's marks its own "The Point" shoe with the Group 1 Patents, despite "The Point" shoe allegedly not being covered by those patents because it is "much narrower" and lacks the claimed "short blunt toe box" (Compl. ¶¶ 50, 88). The complaint supports this with a visual comparison of the patent design and a photo of "The Point" shoe (Compl. p. 16). The complaint further alleges that Rothy's acts with an "intent to deceive the public" (Compl. ¶88).
VII. Analyst’s Conclusion: Key Questions for the Case
- A question of visual scope and similarity: Is the overall ornamental appearance of Madden's "Rosy Flat" shoe, with its pointed toe and tapered profile, "substantially the same" as the patented designs for a "wide-bodied," rounded-toe shoe in the eyes of an ordinary footwear purchaser?
- A question of feature-specific infringement: Does the ’325 Patent, which is limited to a contrasting ornamental design on the rear upper of a shoe, read on the "Rosy Flat," which is alleged to have a uniform, non-contrasting heel?
- A question of deceptive intent for false marking: Does Rothy's own "The Point" shoe fail to practice the designs of the patents with which it is marked, and if so, does the complaint allege sufficient facts to plausibly suggest that this marking was done with the specific "intent of deceiving the public" as required by statute?