DCT

1:19-cv-01408

Nike Inc v. Putian Qingchunzhijia Sports Goods Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:19-cv-01408, N.D. Ill., 03/15/2019
  • Venue Allegations: Venue is based on allegations that Defendant OneMix transacts business and has committed acts of patent infringement in the Northern District of Illinois, including offering for sale and selling the accused shoes.
  • Core Dispute: Plaintiff alleges that Defendant’s athletic footwear infringes fourteen of Plaintiff's U.S. design patents covering the ornamental appearance of shoe outsoles, midsoles, and uppers, in addition to infringing Plaintiff's trademarks.
  • Technical Context: The dispute centers on the ornamental design of athletic footwear, where unique and recognizable aesthetics are a significant driver of consumer choice and brand identity in a highly competitive market.
  • Key Procedural History: The filing is a First Amended Complaint. The complaint alleges that Plaintiff's "AIR MAX" and "FLYWIRE" trademarks are incontestable, a status that may affect the associated trademark claims in the litigation.

Case Timeline

Date Event
2011-02-02 Priority Date: D636,571 Patent
2011-02-02 Priority Date: D636,588 Patent
2011-04-26 Issue Date: U.S. Patent D636,571
2011-04-26 Issue Date: U.S. Patent D636,588
2013-01-01 OneMix Brand Created (approx.)
2013-08-29 Priority Date: D694,501 Patent
2013-08-29 Priority Date: D697,294 Patent
2013-08-30 Priority Date: U.S. Patent D711,081
2013-11-12 Priority Date: D707,935 Patent
2013-11-12 Priority Date: U.S. Patent D709,681
2013-11-22 Priority Date: U.S. Patent D702,424
2013-11-30 Priority Date: D707,934 Patent
2013-12-03 Issue Date: U.S. Patent D694,501
2014-01-14 Issue Date: U.S. Patent D697,294
2014-02-28 Priority Date: U.S. Patent D707,950
2014-04-15 Issue Date: U.S. Patent D702,424
2014-05-31 Priority Date: U.S. Patent D718,036
2014-07-01 Issue Date: U.S. Patent D707,934
2014-07-01 Issue Date: U.S. Patent D707,935
2014-07-01 Issue Date: U.S. Patent D707,950
2014-07-29 Issue Date: U.S. Patent D709,681
2014-08-19 Issue Date: U.S. Patent D711,081
2014-11-25 Issue Date: U.S. Patent D718,036
2015-02-13 Priority Date: D762,965 Patent
2015-02-13 Priority Date: D762,966 Patent
2016-08-09 Issue Date: U.S. Patent D762,965
2016-08-09 Issue Date: U.S. Patent D762,966
2019-03-15 Complaint Filing Date

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

U.S. Design Patent No. D636,571 - "Shoe Outsole"

  • Patent Identification: U.S. Design Patent No. D636,571, titled "Shoe Outsole," issued April 26, 2011.

The Invention Explained

  • Problem Addressed: Design patents protect ornamental aesthetics rather than solving functional problems. The patent seeks to protect a new, original, and ornamental design for a shoe outsole, which serves to create a distinct visual identity for the footwear (Compl. ¶3).
  • The Patented Solution: The patent claims the specific ornamental design for a portion of a shoe outsole, characterized by a textured pattern of various-sized, irregularly-shaped, cell-like pods located on the forefoot area ('571 Patent, Figs. 1-2; Description). The broken lines in the patent drawings indicate that the remainder of the shoe sole and upper are not part of the claimed design ('571 Patent, Description).
  • Technical Importance: The complaint frames NIKE's patented designs as a core component of its investment in research and design, and a key factor in its commercial success (Compl. ¶¶2-3).

Key Claims at a Glance

  • The patent contains a single claim for "The ornamental design for a shoe outsole, as shown and described" ('571 Patent, Claim).
  • The essential visual elements of the claim are the specific shapes, arrangement, and texturing of the pod-like structures on the forefoot, as depicted in the patent's figures.

U.S. Design Patent No. D694,501 - "Shoe Outsole"

  • Patent Identification: U.S. Design Patent No. D694,501, titled "Shoe Outsole," issued December 3, 2013.

The Invention Explained

  • Problem Addressed: The patent aims to protect a novel ornamental design for a shoe outsole to distinguish it aesthetically in the marketplace (Compl. ¶3).
  • The Patented Solution: The design consists of an outsole pattern featuring a grid of raised, generally rectangular blocks with rounded corners ('501 Patent, Fig. 2). A key feature of the design is a recessed, shaded area in the midfoot, which the patent specification notes "depicts a contrast of appearance" without being limited to a specific color ('501 Patent, Description).
  • Technical Importance: This design is part of the portfolio of intellectual property that NIKE alleges is fundamental to its brand identity and market position (Compl. ¶6).

Key Claims at a Glance

  • The patent asserts a single claim for "The ornamental design for a shoe outsole, as shown and described" ('501 Patent, Claim).
  • The essential visual elements include the specific pattern of the rectangular blocks and the contrasting midfoot portion, which together create the overall visual impression of the design.

Multi-Patent Capsule: Additional "Shoe Outsole" Patents

  • D697,294 (issued Jan. 14, 2014), D707,934 (issued Jul. 1, 2014), and D707,935 (issued Jul. 1, 2014): These patents also claim ornamental designs for shoe outsoles. The '294 patent claims a design similar to the '501 patent, featuring a grid of rectangular blocks ('294 Patent, Fig. 2). The '934 patent claims a design with two distinct textured regions on the heel and forefoot, separated by an open arch ('934 Patent, Fig. 2). The '935 patent claims a design featuring a repeating pattern of hexagonal, cube-like shapes ('935 Patent, Fig. 2). The complaint accuses various OneMix shoes, including the "Lightweight Air Cushion," "Basketball Shoes," and "Kids Sneaker Shoes," of infringing these designs (Compl. Tables 5-7).

Multi-Patent Capsule: "Shoe Upper" Patents

  • D636,588 (issued Apr. 26, 2011), D707,950 (issued Jul. 1, 2014), D718,036 (issued Nov. 25, 2014), D762,965 (issued Aug. 9, 2016), and D762,966 (issued Aug. 9, 2016): This group of patents claims ornamental designs for shoe uppers or portions thereof. The designs feature distinct woven or molded textures, patterns, and arrangements of lacing elements ('588 Patent, Fig. 1; '950 Patent, Fig. 1). The complaint alleges that various "OneMix Men's Running Sport Shoes," "Kids Sneaker Shoes," "Women's Woven Training Shoes," and "Men's Air Running Shoes" incorporate designs that are substantially similar to those claimed in these patents (Compl. Tables 8-12).

Multi-Patent Capsule: "Shoe Midsole" Patents

  • D702,424 (issued Apr. 15, 2014), D709,681 (issued Jul. 29, 2014), and D711,081 (issued Aug. 19, 2014): These patents protect the ornamental designs of shoe midsoles. The designs feature distinctive shapes, contours, and surface patterns, including visible cushioning elements that are a signature of certain NIKE product lines ('424 Patent, Fig. 1). The complaint accuses OneMix's "Air Cushion Outdoor Sports" and "Kids Sneaker Shoes," among others, of infringing these midsole designs (Compl. Tables 13-15).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are numerous models of athletic-style footwear promoted and sold by OneMix, which the complaint collectively terms the "Infringing Shoes" (Compl. ¶46). Specific exemplary models are identified by name and photograph in comparison tables within the complaint (Compl. ¶50, Tables 3-15).

Functionality and Market Context

The accused products are athletic and casual footwear sold to U.S. consumers through Defendant's websites and third-party online marketplaces, most notably Amazon.com and eBay.com (Compl. ¶¶7, 48-49). The complaint provides visual evidence from an Amazon.com product page for an accused OneMix shoe, which shows the shoe's appearance and descriptive text (Compl. p. 5). The complaint alleges significant commercial activity, estimating that OneMix sold over 14,000 units on Amazon.com for over $800,000 in revenue in the first two-and-a-half months of 2019 (Compl. ¶13).

IV. Analysis of Infringement Allegations

The infringement test for design patents 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's allegations are presented through side-by-side visual comparisons rather than traditional element-by-element claim charts.

D636,571 Infringement Allegations

Visual Feature (from '571 Patent) Alleged Infringing Feature in OneMix Product Complaint Citation Patent Citation
The overall ornamental design for a shoe outsole as shown in the patent figures. The complaint alleges that the overall visual impression of the outsole on the "ONEMIX Men's Running Sport Shoes Waterproof" is substantially the same as the patented design. ¶¶50, 55; Table 3 Claim; Figs. 1-3
A pattern of irregularly shaped, cell-like pods on the forefoot portion of the outsole. The visual evidence provided in Table 3 juxtaposes the patent drawings with a photo of the accused shoe, inviting a direct visual comparison of the outsole patterns. Table 3, p. 14 Figs. 1-2

D694,501 Infringement Allegations

Visual Feature (from '501 Patent) Alleged Infringing Feature in OneMix Product Complaint Citation Patent Citation
The overall ornamental design for a shoe outsole as shown in the patent figures. The complaint alleges that the overall visual impression of the outsole on the "ONEMIX Men's Lightweight Air Cushion Outdoor Sports Running Shoes" is substantially the same as the patented design. ¶¶50, 55; Table 4 Claim; Figs. 1-3
A grid-like pattern of raised rectangular blocks combined with a central midfoot area having a "contrast of appearance." The visual evidence in Table 4 shows the accused product's outsole, which features a similar block pattern and a contrasting color gradient in the midfoot, for comparison with the patented design. Table 4, p. 15 Description; Fig. 2

Identified Points of Contention

  • Scope Questions: For all asserted design patents, a primary question for the court will be how broadly to construe the scope of the claimed "ornamental design." The analysis will focus on the overall visual impression rather than on a side-by-side comparison of minor details.
  • Technical Questions: The central factual question is one of visual perception: would an ordinary observer be deceived by the similarity between the accused OneMix shoes and the designs claimed in NIKE's patents? The defense may argue that differences in proportion, texture, or unclaimed elements (like color or branding) are sufficient to create a different overall visual impression and avoid infringement. For example, regarding the '501 patent, a question may arise as to whether the specific orange-to-yellow color gradient on the accused shoe's sole (Compl. p. 15, Table 4) creates a different visual impression than the more generic "contrast of appearance" claimed in the patent.

V. Key Claim Terms for Construction

In design patent cases, the "claim" is understood to be the design as depicted in the drawings. There are no traditional "terms" to construe, but the scope of the visual claim itself is a central issue.

  • The "Term": The scope of the claimed "ornamental design for a [shoe part], as shown and described."
  • Context and Importance: The outcome of the infringement analysis depends entirely on the comparison between the claimed visual design and the appearance of the accused products. The core of the dispute will be defining the boundaries of the claimed aesthetic and determining whether the OneMix products fall within them.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party arguing for broader scope may point to the overall visual gestalt created by the drawings, arguing that the claim is not limited to the exact minutiae but covers other designs with the same or a substantially similar overall visual impression. The use of broken lines to disclaim the surrounding environment explicitly defines what is not claimed, thereby focusing the analysis on the claimed features in solid lines ('571 Patent, Description).
    • Evidence for a Narrower Interpretation: A party arguing for narrower scope would emphasize that the claim is limited to the specific design "as shown." They would highlight any and all visual differences between the patent figures and the accused products—in shape, proportion, or arrangement of elements—to argue that the overall appearances are different. They may also seek to introduce prior art designs to limit the scope of patentable novelty attributable to the claimed design.

VI. Other Allegations

  • Indirect Infringement: The complaint does not contain specific allegations of induced or contributory patent infringement. The patent count focuses on direct infringement under 35 U.S.C. § 271(a) through acts of making, using, selling, offering to sell, and importing the accused shoes (Compl. ¶58).
  • Willful Infringement: The complaint alleges that OneMix’s infringement has been "deliberate, intentional, and willful" (Compl. ¶60). This allegation is based on information and belief that OneMix had knowledge of NIKE's patents and trademarks before commencing its activities and continued to infringe despite this knowledge (Compl. ¶¶52-53). The complaint supports this with exhibits showing industry commentators and consumers identifying the OneMix products as "copies" and "exact replicas" of NIKE designs, suggesting OneMix was on notice of its infringing conduct (Compl. ¶¶9-11, 56).

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

  • A central issue will be one of visual similarity: For each of the fourteen asserted design patents, will an ordinary observer, giving the attention a typical purchaser would, be deceived into thinking the accused OneMix shoes are the same as, or are sponsored by the creator of, the patented NIKE designs? This will require a granular, patent-by-patent comparison of the products against the drawings, as previewed in the complaint's comparison tables (Compl. Tables 3-15).
  • A key evidentiary question will be one of intent: Can NIKE establish that OneMix had pre-suit knowledge of the specific design patents and willfully infringed them? The strength of this claim may depend on evidence beyond the general "information and belief" pleading, potentially relying on the third-party commentary cited in the complaint (Compl. ¶¶9, 56) to demonstrate that the similarity was not accidental but the result of deliberate copying.
  • The case also presents an intertwined question of brand confusion: To what extent does the alleged visual similarity of the footwear, combined with OneMix's alleged use of NIKE's famous trademarks (e.g., "Air Max," "Flyknit") in online marketing and keyword advertising (Compl. ¶¶12, 18-19, 51), contribute to a likelihood of consumer confusion that supports both the trademark claims and the willfulness allegations for patent infringement?