DCT

1:24-cv-00859

Rothy's Inc v. MIA Shoes Inc

I. Executive Summary and Procedural Information

Parties & Counsel:
- Plaintiff: Rothy's, Inc. (Delaware)
- Defendant: MIA Shoes, Inc. (Delaware), Designer Brands Inc. d/b/a DSW (Ohio), Stitch Fix, Inc. (Delaware), QVC, Inc. (Delaware), and Caleres, Inc. d/b/a Famous Footwear (New York)
- Plaintiff’s Counsel: Kilpatrick Townsend & Stockton LLP; Morris, Nichols, Arsht & Tunnell LLP
Case Identification: 1:24-cv-00859, D. Del., 07/24/2024
Venue Allegations: Venue is alleged to be proper in the District of Delaware based on Defendants MIA Shoes, QVC, and Stitch Fix being incorporated in Delaware, and Defendants DSW and Famous Footwear allegedly maintaining a regular and established place of business in the district.
Core Dispute: Plaintiff alleges that Defendants’ knitted ballet flat shoes infringe ten of its U.S. design patents and its registered trade dress.
Technical Context: The lawsuit concerns the sustainable footwear market, where products combining aesthetic design with environmentally conscious manufacturing, such as using recycled materials, hold significant consumer appeal.
Key Procedural History: The complaint alleges that Plaintiff sent pre-suit cease-and-desist letters notifying Defendants MIA, DSW, and Stitch Fix of certain asserted patents and trade dress rights beginning in December 2021. The complaint also references a prior successful enforcement action against a third party for similar shoe designs, which resulted in a consent decree.

Case Timeline

Date	Event
2014-12-18	Earliest Patent Priority Date (’276, ’313, ’314, ’943, ’947, ’987, ’090, ’226 Patents)
2015-12-01	Rothy's "The Point" and "The Flat" shoes first released (approx.)
2017-12-19	U.S. Patent No. D805,276 Issued
2018-12-25	U.S. Patent No. D836,314 Issued
2019-03-08	Priority Date for ’946 and ’091 Patents
2019-04-02	U.S. Patent No. D844,313 Issued
2019-11-19	U.S. Patent No. D866,943 Issued
2020-01-21	U.S. Patent No. D872,987 Issued
2020-12-29	U.S. Patent No. D905,946 Issued
2020-12-29	U.S. Patent No. D905,947 Issued
2021-11-01	MIA allegedly began marketing the accused "Kerri" shoe (approx.)
2021-12-21	Rothy's sends cease-and-desist letter to MIA
2022-05-03	U.S. Patent No. D950,226 Issued
2022-09-01	Rothy's sends cease-and-desist letters to DSW (approx.)
2022-10-01	Rothy's sends cease-and-desist letter to Stitch Fix (approx.)
2023-08-15	U.S. Patent No. D995,090 Issued
2023-08-15	U.S. Patent No. D995,091 Issued
2024-07-24	Complaint Filed

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

U.S. Design Patent No. D905,947 - “Portion of a Shoe,” issued December 29, 2020

The Invention Explained

Problem Addressed: The complaint frames the market context as a need for footwear that is both fashionable and environmentally sustainable (Compl. ¶¶ 1, 32). The design patent addresses the "fashionable" aspect by protecting a specific, novel ornamental appearance.
The Patented Solution: The patent does not describe a technical problem or solution, but rather claims "The ornamental design for a portion of a shoe, as shown and described" (’947 Patent, Claim). The figures depict the visual characteristics of a pointed-toe ballet flat, focusing on the shape of the upper, the V-shaped vamp opening, and the overall profile (’947 Patent, FIGS. 1-7). The claimed design is limited to the areas shown in solid lines, while the broken lines illustrate the environment of the shoe and form no part of the claim (’947 Patent, DESCRIPTION).
Technical Importance: The complaint alleges that the shoe designs created by Rothy's are "instantly recognizable" and have garnered a "ravenous following," suggesting the ornamental design itself is a key driver of the product's commercial identity and success (Compl. ¶¶ 2, 33).

Key Claims at a Glance

The patent contains a single claim for the ornamental design as depicted in the drawings.
The essential visual features include:
- A pointed-toe shoe silhouette.
- A continuous upper with a V-shaped throat line or vamp.
- A specific profile shape and slim outsole appearance.
The complaint asserts infringement of the patent as a whole, which is typical for design patents.

U.S. Design Patent No. D872,987 - “Portion of a Shoe,” issued January 21, 2020

The Invention Explained

Problem Addressed: As with the ’947 Patent, this design patent protects an ornamental appearance within the context of creating distinctive and fashionable sustainable footwear (Compl. ¶¶ 1, 39).
The Patented Solution: This patent also claims "The ornamental design for a portion of a shoe, as shown and described" (’987 Patent, Claim). The figures illustrate a design for a pointed-toe ballet flat that is visually very similar to the ’947 Patent, covering the overall shape, V-shaped vamp, and profile as shown in solid lines (’987 Patent, FIGS. 1-14). The patent shows two embodiments, with slight variations in the claimed portions.
Technical Importance: This patent is part of a larger portfolio alleged to protect the "unique, novel, sustainable, comfortable, and stylish" appearance that distinguishes Rothy's products in the market (Compl. ¶ 2).

Key Claims at a Glance

The patent contains a single claim for the ornamental design as depicted in its figures.
The essential visual features are consistent with the ’947 Patent and include:
- A pointed-toe shoe silhouette.
- A V-shaped vamp opening.
- A defined upper shape, shown in solid lines, which constitutes the claimed portion.
The complaint asserts infringement of the patent as a whole.

Multi-Patent Capsule: U.S. Design Patent No. D866,943

Patent Identification: U.S. Patent No. D866,943, “Portion of a Shoe,” issued November 19, 2019.
Technology Synopsis: This patent protects the ornamental design for a portion of a pointed-toe shoe. The drawings emphasize the shape of the vamp and the forward portion of the upper, with the rear portion of the shoe shown in broken lines and thus unclaimed (’943 Patent, FIG. 1).
Asserted Claims: The patent contains a single claim for the ornamental design as shown and described.
Accused Features: The complaint alleges that the "Kerri" and "Lissy" shoe models infringe the ’943 Patent (Compl. ¶¶ 131-132).

Multi-Patent Capsule: U.S. Design Patent No. D844,313

Patent Identification: U.S. Patent No. D844,313, “Portion of a Shoe,” issued April 2, 2019.
Technology Synopsis: This patent protects the ornamental design for a portion of a pointed-toe shoe. The drawings show surface shading that appears to represent a pattern on the upper, with the overall shoe shape depicted (’313 Patent, FIG. 1). The design covers the complete upper and sides of the shoe.
Asserted Claims: The patent contains a single claim for the ornamental design as shown and described.
Accused Features: The complaint alleges that the "Kerri" shoe infringes the ’313 Patent (Compl. ¶ 140).

Multi-Patent Capsule: U.S. Design Patent No. D995,090

Patent Identification: U.S. Patent No. D995,090, “Shoe,” issued August 15, 2023.
Technology Synopsis: This patent protects the ornamental design for a complete shoe with a rounded toe and a slightly V-shaped vamp. Unlike some of the other asserted patents, it claims the design of the entire shoe as shown in the figures (’090 Patent, DESCRIPTION).
Asserted Claims: The patent contains a single claim for the ornamental design as shown and described.
Accused Features: The complaint alleges that the "Aubrie" shoe infringes the ’090 Patent (Compl. ¶ 148).

Multi-Patent Capsule: U.S. Design Patent No. D950,226

Patent Identification: U.S. Patent No. D950,226, “Portion of a Shoe,” issued May 3, 2022.
Technology Synopsis: This patent protects the ornamental design for a portion of a rounded-toe shoe. The claimed portion, shown in solid lines, consists of the vamp and the forward part of the upper, similar in scope to the ’943 patent but for a rounded-toe silhouette (’226 Patent, FIG. 1).
Asserted Claims: The patent contains a single claim for the ornamental design as shown and described.
Accused Features: The complaint alleges that the "Aubrie" shoe infringes the ’226 Patent (Compl. ¶ 154).

Multi-Patent Capsule: U.S. Design Patent No. D836,314

Patent Identification: U.S. Patent No. D836,314, “Portion of a Shoe,” issued December 25, 2018.
Technology Synopsis: This patent protects the ornamental design for a portion of a rounded-toe shoe. The claimed portion is the vamp and forward part of the upper (’314 Patent, FIG. 1). The design appears very similar to that claimed in the ’226 patent.
Asserted Claims: The patent contains a single claim for the ornamental design as shown and described.
Accused Features: The complaint alleges that the "Aubrie" shoe infringes the ’314 Patent (Compl. ¶ 160).

Multi-Patent Capsule: U.S. Design Patent No. D805,276

Patent Identification: U.S. Patent No. D805,276, “Shoe,” issued December 19, 2017.
Technology Synopsis: This patent protects the ornamental design for a complete shoe with a rounded toe. The drawings include surface shading suggesting a particular material pattern or texture across the entire shoe (’276 Patent, FIG. 1).
Asserted Claims: The patent contains a single claim for the ornamental design as shown and described.
Accused Features: The complaint alleges that the "Aubrie" shoe infringes the ’276 Patent (Compl. ¶ 166).

Multi-Patent Capsule: U.S. Design Patent No. D905,946

Patent Identification: U.S. Patent No. D905,946, “Shoe,” issued December 29, 2020.
Technology Synopsis: This patent protects the ornamental design for a portion of a rounded-toe shoe. The solid lines claim the vamp and front portion of the upper (’946 Patent, FIG. 1), while the rest of the shoe is disclaimed.
Asserted Claims: The patent contains a single claim for the ornamental design as shown and described.
Accused Features: The complaint alleges that the "Emme Ballet Flat" shoe infringes the ’946 Patent (Compl. ¶ 172).

Multi-Patent Capsule: U.S. Design Patent No. D995,091

Patent Identification: U.S. Patent No. D995,091, “Shoe,” issued August 15, 2023.
Technology Synopsis: This patent protects the ornamental design for a rounded-toe shoe, showing surface shading to represent a knitted textile. The design appears to cover the entire shoe (’091 Patent, DESCRIPTION, FIG. 1).
Asserted Claims: The patent contains a single claim for the ornamental design as shown and described.
Accused Features: The complaint alleges that the "Emme Ballet Flat" shoe infringes the ’091 Patent (Compl. ¶ 178).

III. The Accused Instrumentality

Product Identification: The accused products are several models of women's knitted ballet flat shoes manufactured by Defendant MIA Shoes and sold by the other Defendants. These include the "Kerri" (also sold as "Izzy"), "Lissy" (also sold as "Kaelynn"), "Aubrie," and "Emme Ballet Flat" shoes (collectively, the "Accused Products") (Compl. ¶¶ 8-9).
Functionality and Market Context: The complaint describes the Accused Products as shoes with knitted uppers and either a pointed or rounded toe, designed to be visually similar to Rothy's own "The Point" and "The Flat" shoe styles (Compl. ¶¶ 8, 10, 85). The complaint provides visual evidence comparing the Accused Products to Rothy's shoes. For example, a side-by-side photographic comparison shows the nearly identical overall appearance of the Rothy's "The Point" shoe and the MIA "Kerri" shoe (Compl. ¶ 10, p. 4). The complaint further alleges that the Accused Products are positioned in the market as direct, lower-priced alternatives, citing consumer reviews that explicitly refer to them as a "Rothy's dupe" and a "knockoff" (Compl. ¶¶ 11-12).

IV. Analysis of Infringement Allegations

The infringement test for a design patent 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 complaint alleges that the Accused Products are "substantially the same" in overall appearance as the claimed designs (Compl. ¶ 81).

D905,947 Infringement Allegations

Claim Element (from the Single Claim)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
The ornamental design for a portion of a shoe, as shown and described.	The "Kerri" shoe is alleged to embody the claimed design. The complaint provides a visual comparison showing that the Kerri shoe has a pointed toe, a V-shaped vamp, and an overall profile that creates a substantially similar visual impression to the design claimed in the patent's figures.	¶83; ¶115	’947 Patent, FIGS. 1, 4, 6

D872,987 Infringement Allegations

Claim Element (from the Single Claim)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
The ornamental design for a portion of a shoe, as shown and described.	The "Kerri" shoe is alleged to embody the claimed design. The complaint provides a side-by-side comparison illustrating that the Kerri shoe's overall appearance, including its pointed toe and V-shaped upper, is substantially the same as the ornamental design depicted in the patent's figures.	¶83; ¶123	’987 Patent, FIGS. 1, 4, 6

Identified Points of Contention

Scope Questions: A central issue will be the scope of the claimed designs as defined by the solid and broken lines in the patent figures. For patents claiming only a "portion of a shoe" (e.g., ’943, ’226), a question for the court will be how to weigh similarities in the claimed portions against potential differences in the unclaimed portions of the shoe.
Visual Similarity Questions: The core of the dispute will be a factual comparison of the designs. While the complaint alleges the designs are "substantially the same" (Compl. ¶ 82), Defendants may argue that differences in proportion, the specific angle of the vamp, the texture of the knit, or the shape of the outsole are significant enough to create a different overall visual impression for an ordinary observer. The side-by-side comparison of colorways may be used by the Plaintiff to argue intent to copy, but the legal test for design patent infringement focuses on the claimed design, not color (Compl. ¶ 85).

V. Key Claim Terms for Construction

While design patents do not have claim terms construed in the same manner as utility patents, the interpretation of the claim's scope is still a central issue.

The Term: "portion of a shoe"
Context and Importance: This phrase, used in the title and claim of most of the asserted patents, is defined by what is shown in solid versus broken lines in the patent drawings. Practitioners may focus on this term because the precise boundary between the claimed "portion" and the unclaimed environment is critical to the infringement analysis. The case may turn on whether the most prominent visual similarities between the Rothy's designs and the Accused Products fall within the solid-line scope of the claims.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that the "portion" represents the core, most distinctive feature of the shoe's appearance. They may suggest that if this claimed portion is copied, infringement occurs even if unclaimed portions (e.g., the heel or sole) differ, as the overall commercial impression is driven by the claimed design.
- Evidence for a Narrower Interpretation: The patent descriptions explicitly state, "The broken lines shown in the figures are included for the purpose of illustrating portions of the...shoe and form no part of the claimed design" (e.g., ’314 Patent, DESCRIPTION). This language may support a narrow interpretation where only the exact features within the solid lines are protected, and any element outside those lines is irrelevant to the infringement analysis.

VI. Other Allegations

Willful Infringement: The complaint alleges that infringement by MIA, DSW, and Stitch Fix was and continues to be willful (Compl. ¶¶ 119, 127, 136, 144). This allegation is supported by claims that these defendants had actual knowledge of at least four of the asserted patents via cease-and-desist letters sent by Rothy's in 2021 and 2022 (Compl. ¶¶ 117, 125, 134, 142). The complaint also alleges intentional copying of the designs (Compl. ¶ 84).

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

A central issue will be one of visual comparison: For each asserted patent, would an ordinary observer, giving the attention a typical shoe purchaser gives, be deceived by the visual similarity between the accused shoe and the patented design, leading them to purchase one thinking it was the other? This will require a detailed, fact-intensive analysis of the overall appearance of the products versus the patent figures.
A related question will be the scope of protection: For the majority of the patents that claim only a "portion of a shoe," the case may turn on whether the most significant design similarities fall within the legally protected solid-line areas of the drawings, or if differences in unclaimed areas are sufficient to create a distinct overall impression.
A key question for remedies will be willfulness and intent: Does the evidence of pre-suit notice through cease-and-desist letters, combined with allegations of copying and consumer reviews identifying the products as "dupes," establish that Defendants' infringement was willful, potentially entitling Plaintiff to enhanced damages?