9:18-cv-80496
Shashi LLC v. Thirty Three Threads Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Shashi, LLC (Florida)
- Defendant: Thirty Three Threads, Inc. (California)
- Plaintiff’s Counsel: MALLOY & MALLOY, P.L.
- Case Identification: 9:18-cv-80496, S.D. Fla., 04/16/2018
- Venue Allegations: Venue is alleged based on Defendant’s commission of wrongful acts in the district, conduct of business in the state, and engagement in substantial activity within Florida.
- Core Dispute: Plaintiff alleges that Defendant’s fitness socks infringe two design patents covering the ornamental appearance of non-slip, open-top socks.
- Technical Context: The dispute is in the fitness apparel market, specifically concerning grip socks designed for activities such as Pilates, yoga, and barre workouts.
- Key Procedural History: The complaint does not reference any prior litigation, inter partes review proceedings, or licensing history concerning the patents-in-suit. The second patent asserted, the D812,892 patent, issued less than one month prior to the filing of the complaint.
Case Timeline
| Date | Event |
|---|---|
| 2010-11-XX | Plaintiff begins business of designing and selling fitness socks |
| 2011-06-20 | U.S. Patent No. D664,349 Priority Date |
| 2012-07-31 | U.S. Patent No. D664,349 Issue Date |
| 2015-04-30 | U.S. Patent No. D812,892 Priority Date |
| 2018-01-01 | Alleged start date of Defendant's infringing activity ("at least as early as 2018") |
| 2018-03-20 | U.S. Patent No. D812,892 Issue Date |
| 2018-04-16 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D664,349, "Pair of Non-Slip Ventilated Socks" (Issued Jul. 31, 2012)
The Invention Explained
- Problem Addressed: The complaint asserts that Plaintiff sought to create "exclusive and innovative socks" for fitness applications (Compl. ¶9). Design patents protect ornamental appearance rather than functional solutions.
- The Patented Solution: The patent protects the specific ornamental design for a pair of socks as depicted in its figures (’349 Patent, Claim). Key visual features shown in solid, claimed lines include the low-cut shape, a large rectangular opening on the top of the foot, and a specific grid-like pattern of circular grip elements on the sole (D'349 Patent, Figs. 2-3). The patent explicitly states that broken lines illustrate portions of the socks that "form no part of the claimed design" ('349 Patent, Description).
- Technical Importance: The complaint alleges that Plaintiff invested "considerable time, creative effort, and resources" to develop the goodwill associated with its innovative sock designs (Compl. ¶9).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a pair of non-slip ventilated socks, as shown and described" ('349 Patent, Claim).
- The essential visual elements of the claimed design include:
- The overall low-profile configuration of the sock.
- The shape and placement of the large, rectangular open area on the dorsal side of the foot.
- The particular pattern of circular grip elements on the sole of the sock, which the patent notes represent a "change of material" ('349 Patent, Description; Fig. 3).
U.S. Design Patent No. D812,892, "Pair of Grip Socks with Open Tops" (Issued Mar. 20, 2018)
The Invention Explained
- Problem Addressed: As with the '349 Patent, this patent protects an ornamental design for fitness socks (Compl. ¶10).
- The Patented Solution: The patent claims the ornamental design for a pair of open-top grip socks (’892 Patent, Claim). The claimed design, shown in solid lines, features a similar overall shape, top opening, and grip pattern to the '349 Patent (D'892 Patent, Figs. 6-7). A notable feature of this design is the particular surface texture depicted on the body of the sock, which differs from the untextured appearance of the '349 Patent design (D'892 Patent, Fig. 1). As in the parent patent, broken lines denote unclaimed subject matter ('892 Patent, Description).
- Technical Importance: The complaint alleges this design is part of Plaintiff's "unique patented design and appearance" that is recognizable as its style and work (Compl. ¶11).
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a pair of grip socks with open tops, as shown and described" ('892 Patent, Claim).
- The essential visual elements of the claimed design include:
- The overall low-profile configuration of the sock.
- The large, rectangular open area on the top of the foot.
- The particular pattern of grip elements on the sole.
- The specific surface ornamentation shown on the fabric portions of the sock.
III. The Accused Instrumentality
Product Identification
The complaint identifies the accused products as "Infringing Socks" manufactured, marketed, and sold by Defendant (Compl. ¶15, ¶18). Specifically named products include the "MADDIE" sock, sold under Defendant's Tavi Noir sub-brand, and the "LUNA" sock, sold under its ToeSox sub-brand (Compl. ¶19-20).
Functionality and Market Context
The complaint alleges the accused products are "competing and infringing socks designed for the Pilates, yoga, and barre industry" (Compl. ¶15). The complaint states that photographs of the accused socks are attached as Composite Exhibit C, but this exhibit was not included with the filed complaint (Compl. ¶18). Therefore, the complaint does not provide sufficient detail for a direct visual analysis of the accused products' features.
IV. Analysis of Infringement Allegations
The complaint alleges that the accused "MADDIE" sock infringes both the '349 and '892 patents (Compl. ¶19). Because the infringement test for design patents relies on a visual comparison from the perspective of an "ordinary observer," and the complaint does not contain images of the accused products, a detailed element-by-element analysis is not possible.
The narrative theory of infringement is that Defendant's acts of making and selling goods "embodying the design shown in the '349 Patent" and the "'892 Patent" constitute direct infringement (Compl. ¶25, ¶30). The core of the allegation is that the ornamental design of Defendant's socks is substantially the same as the claimed designs, such that an ordinary observer would be deceived into purchasing Defendant's product believing it was Plaintiff's (Compl. ¶22). No probative visual evidence provided in complaint.
Identified Points of Contention
- Factual Question: The central issue will be a factual comparison: Is the overall ornamental appearance of the accused "MADDIE" sock substantially the same as the designs claimed in the '349 and '892 patents? The resolution will depend on visual evidence not present in the complaint.
- Scope Questions: The analysis may require the court to distinguish between the claimed ornamental features (shown in solid lines) and any unclaimed or purely functional aspects of the socks. The extent to which features like the grip pattern are dictated by function versus ornament may become a point of contention.
V. Key Claim Terms for Construction
In design patent litigation, claim construction involves describing in words the visual design claimed in the patent's drawings rather than defining specific text-based terms. The primary construction issue will be determining the scope of the claimed ornamental designs.
- The "Term": The scope of the "ornamental design as shown and described."
- Context and Importance: The infringement analysis hinges on comparing the accused product to the properly construed claim. Defining the boundaries of the claimed design by separating claimed ornamental features (solid lines) from unclaimed portions (dashed lines) is therefore critical. Practitioners may focus on this distinction to either broaden or narrow the scope of what the patents protect.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that the claim protects the overall visual impression created by the combination of the claimed elements, and that the design should not be broken down into a list of isolated features.
- Evidence for a Narrower Interpretation: Both patents contain explicit language disclaiming the matter shown in broken lines: "The broken lines shown in the drawing views are for purposes of illustrating portions of the pair of...socks that form no part of the claimed design" ('349 Patent, Description; '892 Patent, Description). This language provides strong evidence that the scope of protection is limited to the exact features depicted in solid lines.
VI. Other Allegations
- Indirect Infringement: The complaint includes allegations of "inducement to infringe" the '349 and '892 patents (Compl. ¶25, ¶30). However, the pleading does not set forth specific facts to support the knowledge and intent elements required for an inducement claim, such as referencing specific instructions or advertisements provided by the Defendant.
- Willful Infringement: The complaint alleges that Defendant's infringement was "deliberate, knowing, and wanton" and commenced after the issuance of the patents (Compl. ¶17-18, ¶23). The basis for this allegation appears to be the alleged timing of the infringing acts relative to the issuance of the patents.
VII. Analyst’s Conclusion: Key Questions for the Case
The Factual Question of Visual Similarity: The case's outcome will primarily depend on a factual determination: is the ornamental design of Defendant’s accused socks "substantially the same" as the patented designs? This requires a side-by-side comparison from the perspective of an ordinary observer, an analysis that is impossible without the visual evidence of the accused products referenced but not included in the complaint.
The Legal Question of Scope: A core legal issue will be defining the precise scope of the claimed designs. The court will need to determine what constitutes the protected "ornamental design" by separating the claimed features (solid lines) from unclaimed portions of the article (dashed lines) and from any unprotectable functional elements inherent in grip socks.
The Evidentiary Question of Willfulness: To succeed on its willfulness claim, a key evidentiary question for Plaintiff will be proving that Defendant had pre-suit knowledge of the patents-in-suit. This may be particularly challenging for the '892 patent, which issued less than 30 days before the lawsuit was filed.