DCT

9:08-cv-80163

Intl Seaway Trading Corp v. Walgreens Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 9:08-cv-80163, S.D. Fla., 02/15/2008
  • Venue Allegations: Venue is alleged based on Defendant Walgreens operating retail outlets and selling the accused products within the Southern District of Florida.
  • Core Dispute: Plaintiff alleges that clog-style footwear imported by Defendant Touchsport and sold by Defendant Walgreens infringes three of Plaintiff's U.S. design patents.
  • Technical Context: The lawsuit concerns the ornamental design of molded clog footwear, a product category with significant consumer recognition and market presence.
  • Key Procedural History: Plaintiff alleges it provided Defendant Walgreens with actual notice of infringement of the lead patent on April 18, 2007. On June 19, 2007, counsel for Defendant Touchsport allegedly identified it as the supplier of the accused products to Walgreens. On the same day, Plaintiff alleges it notified Walgreens of the impending issuance of the other two patents-in-suit, asserting they would also be infringed by the same products.

Case Timeline

Date Event
2005-02-18 Earliest Priority Date for ’263, ’032, and ’033 Patents
2006-10-03 U.S. Design Patent No. D529,263 Issues
2007-03-XX Plaintiff alleges it first became aware of accused products
2007-04-18 Plaintiff provides Walgreens notice of alleged '263 Patent infringement
2007-06-19 Touchsport identified as supplier; Plaintiff provides notice of impending '032 and '033 Patents
2007-06-26 U.S. Design Patent No. D545,032 Issues
2007-06-26 U.S. Design Patent No. D545,033 Issues
2008-02-15 Complaint Filing Date

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

U.S. Design Patent No. D529,263

  • Patent Identification: U.S. Design Patent No. D529,263, titled "Clog," issued October 3, 2006 (Compl. ¶9, Ex. A).

The Invention Explained

  • Problem Addressed: As a design patent, the patent does not articulate a technical problem; its purpose is to protect the novel, non-functional, ornamental appearance of an article of manufacture, in this case, a clog (’263 Patent, (57) CLAIM).
  • The Patented Solution: The patent claims the specific ornamental design for a clog as depicted in seven figures showing the article from various perspectives (’263 Patent, DESCRIPTION). The claimed visual features include the clog's overall shape and profile, a pattern of circular perforations across the top (vamp), a pivoting strap affixed with a circular rivet, a textured band where the upper meets the sole, and a series of ventilation ports along the lower side of the toe box (’263 Patent, FIG. 1-7).
  • Technical Importance: The claimed design provides a distinctive overall visual appearance for clog-style footwear, which may serve to distinguish the product in the marketplace (Compl. ¶17, ¶19).

Key Claims at a Glance

  • Design patents contain a single claim. The asserted claim is for: "the ornamental design for a clog, as shown and described" (’263 Patent, col. 1:57-58).
  • The scope of this claim is defined by the visual appearance of the clog as a whole, illustrated in the patent's drawings, which includes the combination of:
    • The overall shape and profile.
    • The arrangement of circular perforations on the vamp.
    • The pivoting strap and its attachment mechanism.
    • The textured midsole band.
    • The arrangement of ventilation ports on the side of the toe box.
    • The tread pattern on the outsole.

U.S. Design Patent No. D545,032

  • Patent Identification: U.S. Design Patent No. D545,032, titled "Clog," issued June 26, 2007 (Compl. ¶22, Ex. E).

The Invention Explained

  • Problem Addressed: Similar to the ’263 Patent, the ’032 Patent protects the ornamental design of a clog (’032 Patent, (57) CLAIM).
  • The Patented Solution: The ’032 Patent, a continuation-in-part of the application that led to the ’263 Patent, claims an ornamental design for a clog (’032 Patent, (63)). The seven figures in the ’032 Patent depict a design with the same key visual characteristics as the ’263 Patent, including the clog's profile, perforation pattern, pivoting strap, and textured midsole band (’032 Patent, FIG. 1-7, DESCRIPTION).
  • Technical Importance: The design serves to create a specific, recognizable aesthetic for casual footwear (Compl. ¶27, ¶29).

Key Claims at a Glance

  • The single asserted claim is for: "the ornamental design for a clog, as shown and described" (’032 Patent, col. 1:50-51).
  • The claim covers the overall visual appearance of the clog shown in Figures 1-7, which appears to be substantially the same as the design claimed in the ’263 Patent.

U.S. Design Patent No. D545,033

  • Patent Identification: U.S. Design Patent No. D545,033, titled "Clog," issued June 26, 2007 (Compl. ¶32, Ex. G).
  • Technology Synopsis: This patent also protects an ornamental design for a clog and is a continuation-in-part of the same parent application as the other asserted patents (’033 Patent, (63)). The claimed design is defined by its seven figures. A notable feature of this patent is its use of broken lines to depict the pivoting strap in several figures, which indicates that the strap itself is not part of the claimed design in those depicted configurations (’033 Patent, DESCRIPTION; FIG. 1, 4-6).
  • Asserted Claims: The single claim for "the ornamental design for a clog, as shown and described" (Compl. Count III; ’033 Patent, col. 1:57-58).
  • Accused Features: The complaint alleges that the same clog footwear products accused of infringing the ’263 and ’032 patents also infringe the design claimed in the ’033 Patent (Compl. ¶33).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are "various clog footwear products" sold in Walgreens retail stores and supplied by Touchsport Footwear USA, Inc. (Compl. ¶11, ¶13). The complaint identifies some products by identifiers "WIC# 583174" and "8800W/M SANDALS" (Compl. ¶11).

Functionality and Market Context

The accused products are clog-style shoes. The complaint includes visual evidence in the form of photographs. Exhibit B contains several photographs of the accused clogs, showing a top-down view of a pair of white clogs with circular perforations and a pivoting strap (Compl. Ex. B, p. 21). Another photograph in Exhibit B provides a side-profile view of one of the accused clogs (Compl. Ex. B, p. 23). The complaint alleges these products are imported into the United States and sold in Walgreens stores (Compl. ¶14).

IV. Analysis of Infringement Allegations

The complaint does not provide a formal claim chart. For design patents, infringement is determined by 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 analysis requires a side-by-side comparison of the patented design and the accused product.

’263 Patent and '032 Patent Infringement Allegations

The complaint alleges that the overall ornamental design of the accused clogs is substantially the same as the designs claimed in the ’263 and ’032 patents (Compl. ¶15, ¶25). A visual comparison between the patent figures (e.g., ’263 Patent, FIG. 1) and the photographs of the accused product (Compl. Ex. B, p. 21) reveals similarities in the overall shape, the pattern of circular perforations on the top surface, the presence of a pivoting strap attached with a rivet, and the side ventilation ports. The core of the infringement allegation is that the visual impression created by the accused clog is confusingly similar to that of the patented designs.

  • Identified Points of Contention:
    • Scope Questions: The primary question is whether the accused clogs are "substantially the same" in overall appearance as the patented designs in the eyes of an ordinary observer. The analysis will depend on the degree of similarity in the combination of all visual elements, not just a list of features.
    • Technical Questions: A factual question for the court will be to assess the visual differences, if any, between the accused clogs and the patented designs and to determine whether those differences are significant enough to avoid infringement, particularly when viewed in the context of the prior art in the field of clog-style footwear.

V. Key Claim Terms for Construction

In design patent litigation, there are typically no claim terms to be construed in the traditional sense. The claim is understood to cover the ornamental design as shown in the patent's drawings. The central issue is not the definition of a word but the scope of the visual design itself.

  • The "Term": "the ornamental design for a clog, as shown and described."
  • Context and Importance: The entire dispute hinges on the scope of protection afforded to this claimed design. Practitioners may focus on the overall visual effect created by the combination of features, as the analysis will assess whether the aesthetic appeal of the accused product is derived from the novel features of the patented design.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent claims the design "as shown and described," which encompasses the overall visual impression. Plaintiff may argue that minor deviations do not defeat infringement if the total look and feel are the same. Asserting multiple, very similar patents could be framed as an attempt to protect the core design concept.
    • Evidence for a Narrower Interpretation: The precise depiction in the drawings of the ’263 and ’032 patents, including the shape, number, and placement of holes and vents, defines the limits of the claim. For the ’033 Patent, the use of broken lines to illustrate the strap explicitly removes the strap from the scope of the claimed design in certain views, which suggests a narrower scope for that patent (’033 Patent, col. 1:63-65). The existence of prior art cited on the face of the patents may also be used to argue for a narrower interpretation of what is novel and protected.

VI. Other Allegations

  • Indirect Infringement: While the prayer for relief seeks an injunction against contributory and induced infringement (Compl. p. 9, ¶B), the body of the complaint focuses on allegations of direct infringement, such as selling and importing the accused products (Compl. ¶14, ¶15). The complaint does not plead specific facts to separately support claims for inducement or contributory infringement.
  • Willful Infringement: The complaint alleges that Defendants’ infringement was willful, knowing, and deliberate (Compl. ¶16, ¶26, ¶36). This allegation is based on claims of pre-suit knowledge. Plaintiff alleges it provided Walgreens with actual written notice of the ’263 Patent on April 18, 2007, and notice of the impending issuance of the ’032 and ’033 patents on June 19, 2007 (Compl. ¶12, ¶23, ¶33, Ex. C, Ex. F).

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

  • A core issue will be one of visual comparison: Applying the ordinary observer test, is the overall ornamental design of the Defendants' clog footwear substantially the same as the designs claimed in the Plaintiff’s patents, such that a potential purchaser would be deceived?
  • A second key question will be the scope of patentability: How will the prior art in the field of clog footwear, including references cited during prosecution, affect the scope of the claimed designs? This will determine whether the distinctions between the patented designs and the accused products are trivial or legally significant.
  • Finally, the case may raise a question of patent strategy and interpretation: How will the court treat the assertion of three very similar design patents against the same product, particularly given the explicit disclaimer of the strap via broken lines in the ’033 Patent? This could impact the infringement analysis for each patent individually.