DCT
1:19-cv-01509
Steven Madden Ltd v. Rothys Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Steven Madden, Ltd. (Delaware)
- Defendant: Rothy's, Inc. (Delaware)
- Plaintiff’s Counsel: Susman Godfrey LLP; Amster, Rothstein & Ebenstein, LLP; Farnan LLP
- Case Identification: 1:19-cv-01509, D. Del., 08/26/2019
- 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 seven of Defendant's design patents and that Defendant's related trade dress claims are unenforceable.
- Technical Context: The dispute centers on the ornamental design of women's flat shoes, a highly competitive and design-driven segment of the global footwear industry.
- Key Procedural History: The complaint states that this declaratory judgment action was filed in response to a notice letter from Rothy's threatening litigation for patent and trade dress infringement. The complaint also notes that Rothy's has previously filed infringement lawsuits against other competitors involving many of the same asserted patents.
Case Timeline
| Date | Event |
|---|---|
| 2014-12-18 | Earliest Priority Date for all Asserted Patents |
| 2016-10-11 | U.S. Design Patent No. D768,366 Issues |
| 2017-12-05 | U.S. Design Patent No. D804,156 Issues |
| 2018-08-16 | Rothy's files suit against JKM Technologies |
| 2018-10-23 | U.S. Design Patent No. D831,325 Issues |
| 2018-10-23 | U.S. Design Patent No. D831,313 Issues |
| 2018-11-20 | U.S. Design Patent No. D833,729 Issues |
| 2018-12-25 | U.S. Design Patent No. D836,314 Issues |
| 2019-04-02 | U.S. Design Patent No. D844,313 Issues |
| 2019-06-03 | Rothy's files suit against Giesswein Walkwaren AG |
| 2019-08-02 | Rothy's sends notice letter to Madden |
| 2019-08-26 | Amended Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D831,325 - Shoe
Issued October 23, 2018
The Invention Explained
- Problem Addressed: Design patents do not solve technical problems but rather protect the ornamental appearance of an article of manufacture. The objective is to create a new, original, and ornamental design to distinguish a product aesthetically.
- The Patented Solution: The patent claims the ornamental design for a shoe as depicted in the figures (’325 Patent, Claim). The design is limited to a specific portion of the shoe's rear upper, which is shown in solid lines and described as a "contrasting portion" ('325 Patent, Description). The remainder of the shoe, including the toe, vamp, and sole, is illustrated in broken lines, indicating that it does not form part of the claimed design ('325 Patent, Fig. 1).
- Technical Importance: The design's importance lies in providing a distinct visual element on the heel of a shoe, which can serve as a point of aesthetic differentiation in the consumer market.
Key Claims at a Glance
- The single claim covers "The ornamental design for a shoe, as shown and described" ('325 Patent, Claim).
- The essential elements of the visual design are:
- A portion on the rear upper of the shoe.
- This portion is presented as a "contrasting portion," which the patent states "can be any color, and in particular, a color different than the remaining portion of the shoe" ('325 Patent, Description).
U.S. Design Patent No. D844,313 - Portion of a Shoe
Issued April 2, 2019
The Invention Explained
- Problem Addressed: The patent seeks to protect a new, original, and ornamental design for the upper portion of a shoe.
- The Patented Solution: The patent claims the ornamental design for the upper portion of a shoe, as the sole is shown in broken lines and is not part of the claimed design ('4,313 Patent, Description; Fig. 7). The complaint characterizes the claimed design as being for a "flat ballet slipper having a flat, wide-bodied profile with a rounded toe design" (Compl. ¶24). The complaint further describes this profile as flaring outward from the upper edge toward the sole, creating a "wide-bodied flat appearance" with a "short, blunt toe box" (Compl. ¶32-33).
- Technical Importance: This design provides a specific overall shape and profile for a slip-on flat shoe, which is a foundational element of its visual identity and market appeal.
Key Claims at a Glance
- The single claim covers "The ornamental design for a portion of a shoe, as shown and described" ('4,313 Patent, Claim).
- The essential elements of the visual design include:
- The overall shape of the shoe upper.
- A profile that the complaint alleges is "wide-bodied" and flares outward (Compl. ¶32).
- A toe shape that the complaint describes as "rounded" and "blunt" (Compl. ¶31, ¶33).
Multi-Patent Capsule: U.S. Design Patent No. D831,313
- Patent Identification: U.S. Design Patent No. D831,313, Shoe, Issued October 23, 2018.
- 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 rounded toe" (Compl. ¶35). The complaint suggests the scope may differ from the '4,313 Patent because the '1,313 Patent includes two embodiments: one that claims the sole and mid-sole, and a second that disclaims them with broken lines (Compl. ¶35-36; '1,313 Patent, Figs. 1-14).
- Asserted Claims: The single claim covers "The ornamental design for a shoe, as shown and described."
- Accused Features: The overall shape, profile, and toe design of the Madden "Rosy Flat" shoe are the basis for the infringement allegation that Madden contests (Compl. ¶48-51).
Multi-Patent Capsule: Group 2 Patents (D768,366; D804,156; D833,729; D836,314)
- Patent Identification: U.S. Design Patent Nos. D768,366, D804,156, D833,729, and D836,314.
- Technology Synopsis: The complaint groups these four patents, alleging they are all directed to ornamental designs for "flat ballet slippers having flat, wide-bodied profiles" (Compl. ¶25, ¶39). The central distinguishing feature alleged by the complaint is a toe portion that is "even more rounded than the toe portions of the Group 1 Patents" (Compl. ¶39).
- Asserted Claims: Each patent contains a single claim for the ornamental design for a shoe or a portion of a shoe.
- Accused Features: The infringement allegation, which Madden disputes, targets the overall shape of the "Rosy Flat" shoe, focusing on its profile and toe design (Compl. ¶48).
III. The Accused Instrumentality
Product Identification
The "Rosy Flat" shoe, sold by Plaintiff Steven Madden, Ltd. (Compl. ¶3).
Functionality and Market Context
- The complaint presents the Rosy Flat as a women's flat shoe with a pointed toe (Compl. ¶50). Photographs provided in the complaint show the top, side, and bottom views of the shoe. These photographs depict a slip-on shoe with a textured upper and a distinct, pointed toe shape (Compl. ¶45).
- Madden alleges that its shoe has a "very narrow width and tapers inward," which it contrasts with the "wide-bodied" profile allegedly claimed in the asserted patents (Compl. ¶49).
- The shoe is part of Madden's product line of "on-trend footwear, handbags and accessories to women and men" sold worldwide (Compl. ¶22).
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The analysis below summarizes Madden's allegations regarding the differences between its product and the patented designs.
D831,325 Patent Non-Infringement Allegations
| Claim Element (from '325 Patent) | Alleged Non-Infringing Feature of "Rosy Flat" | Complaint Citation | Patent Citation |
|---|---|---|---|
| An ornamental design for a shoe including a contrasting portion on the rear upper. | The Rosy Flat shoe has no colored band or other contrasting portion around the heel that differs from the color of the rest of the shoe. The side view photograph of the Rosy Flat is provided as evidence of this lack of a contrasting feature (Compl. ¶53). | ¶53 | Description; Fig. 1 |
| The overall ornamental design as shown in the figures, limited to the solid-line portion. | Because the Rosy Flat shoe allegedly lacks the single claimed feature—the contrasting rear portion—Madden alleges that no ordinary observer could be deceived into thinking the designs are the same. | ¶52, ¶77 | Figs. 1-7 |
D844,313 Patent Non-Infringement Allegations
| Claim Element (from '4,313 Patent) | Alleged Non-Infringing Feature of "Rosy Flat" | Complaint Citation | Patent Citation |
|---|---|---|---|
| An ornamental design for a portion of a shoe, characterized by a flat, wide-bodied profile with regions that flare outward from the upper. | The Rosy Flat shoe is alleged to have a narrow profile that tapers inward and is not visible from a top view. A visual comparison is provided to contrast the patent's top-down view with a photograph of the Rosy Flat (Compl. ¶15). | ¶49 | Figs. 5, 6 |
| The design includes a short, blunt, rounded toe box. | The toe of the Rosy Flat is alleged to be "much narrower, longer and has a sharper point," which is contrasted with the "blunt, parabola-shaped tip" claimed in the patent. | ¶50 | Figs. 5, 6 |
| The overall ornamental appearance of the shoe upper as depicted. | The combination of differences in the profile and toe shape allegedly results in a design that is not substantially similar to the patented design in the eye of an ordinary observer. | ¶51 | Figs. 1-7 |
V. Key Claim Terms for Construction
In design patent cases, the "claim" is the visual design shown in the drawings. However, the parties' arguments often center on verbal characterizations of those visual features.
"flat, wide-bodied profile"
- Context and Importance: This descriptive phrase, used by Madden to characterize Rothy's patents, is foundational to its non-infringement argument. The determination of whether the Rosy Flat's allegedly "narrow" and "tapered" profile (Compl. ¶49) is substantially similar to the patented design's profile will be a central point of visual comparison for the fact-finder.
- Intrinsic Evidence for a Broader Interpretation: A party arguing for a broader scope might assert that "wide-bodied" is a relative term meant to distinguish the design from exceptionally narrow or pointed shoe styles, and that the drawings represent a general form rather than a precise width-to-length ratio.
- Intrinsic Evidence for a Narrower Interpretation: Madden's argument points toward a narrower interpretation defined by the patent figures. The top-down view in Figure 6, which shows the sides of the shoe flaring out, could be used to argue that the claim is limited to designs that exhibit this specific wide-stance characteristic ('4,313 Patent, Fig. 6; Compl. ¶32).
"rounded toe"
- Context and Importance: Madden's primary argument for non-infringement of the Group 1 and Group 2 patents hinges on the distinction between the "rounded toe" it ascribes to the patents and the "sharper point" of its Rosy Flat shoe (Compl. ¶50). The visual interpretation of these toe shapes is therefore critical.
- Intrinsic Evidence for a Broader Interpretation: Rothy's may argue that "rounded toe" is a general category encompassing a variety of non-angular toe shapes, and that the claim is not strictly limited to the exact curvature shown but to the overall impression of a soft, non-pointed toe.
- Intrinsic Evidence for a Narrower Interpretation: A party seeking a narrower scope would argue that the claim is limited to the specific visual appearance of the "short, blunt toe box" and "parabola-shaped tip" shown in the patent's figures ('4,313 Patent, Fig. 6; Compl. ¶33, ¶50). The precise contours in the drawings would be presented as the definition of the claimed design.
VI. Other Allegations
False Marking
Madden brings a count for false marking under 35 U.S.C. § 292 (Compl. ¶94-96). It alleges that Rothy's marks its own "The Point" shoe with the Group 1 patents despite knowing that the shoe's design does not fall within the scope of those patents, which allegedly claim a wider, more rounded shoe (Compl. ¶54). Madden asserts this is done with the "intent to deceive the public" and to gain a competitive advantage (Compl. ¶55, ¶95).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of substantial similarity: Would an ordinary observer, comparing the patented designs to the accused "Rosy Flat" shoe, be deceived into purchasing one believing it to be the other? This will require the court to resolve competing characterizations of key visual features, namely the profile of the shoe (is it "wide-bodied" or "tapered"?) and the shape of the toe (is it "rounded" or "pointed"?).
- Another central question relates to the consistency of infringement theories: Madden raises the issue of whether a single accused product can simultaneously infringe multiple design patents that allegedly claim mutually exclusive features—specifically, a "rounded toe" (Group 1 patents) and an "even more rounded" toe (Group 2 patents). The court may need to consider if such allegations are plausible or if they undermine the patentee's position.
- For the false marking claim, a key evidentiary question will be one of intent: Can Madden produce evidence to demonstrate that Rothy's marked its products with patent numbers it subjectively knew were not applicable, for the specific purpose of deceiving the public or competitors? This shifts the focus from a simple comparison of designs to an inquiry into the patentee's state of mind.