DCT
1:22-cv-10879
New Balance Athletics Inc v. Steven Madden Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: New Balance Athletics, Inc. (Massachusetts)
- Defendant: Steven Madden, Ltd. (Delaware)
- Plaintiff’s Counsel: Orrick, Herrington & Sutcliffe LLP
- Case Identification: 1:22-cv-10879, D. Mass., 06/07/2022
- Venue Allegations: Venue is alleged in the District of Massachusetts based on Defendant conducting business in the state, operating at least two retail stores, and maintaining an e-commerce website accessible to Massachusetts consumers.
- Core Dispute: Plaintiff alleges that Defendant’s "Chasen" model sneaker infringes two design patents covering the ornamental sole design of Plaintiff's "327" model sneaker, in addition to claims of trademark infringement and unfair competition.
- Technical Context: The dispute concerns the ornamental design of outsoles in the commercially significant lifestyle athletic footwear market.
- Key Procedural History: The complaint alleges that Plaintiff sent a warning letter to Defendant regarding the accused product in April 2021, prior to the patents-in-suit issuing. Defendant allegedly responded that it would discontinue the shoe, but Plaintiff later discovered continued sales of the original model and the launch of a new "stripeless" version after the patents had issued. A second demand letter was sent in February 2022, which the complaint claims Defendant refused. These pre-suit communications are foundational to the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2020-07-24 | Earliest Priority Date for '755 and '813 Patents |
| 2020 | New Balance launches 327 model sneaker |
| 2021-04-20 | New Balance sends first warning letter to Madden |
| 2021-05-06 | Madden responds to warning letter |
| 2021-06 | Madden allegedly begins selling original "Chasen" model |
| 2021-10-12 | '755 Patent issues |
| 2022-01-04 | '813 Patent issues |
| 2022-02-18 | New Balance sends second warning letter to Madden |
| 2022-06-07 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D932,755, "Shoe Sole" (Issued Oct. 12, 2021)
The Invention Explained
- Problem Addressed: Design patents protect new, original, and ornamental designs for an article of manufacture. The implicit problem addressed is the need for a novel and aesthetically distinctive shoe sole design that can serve as a source identifier and attract consumers in the fashion footwear market (Compl. ¶¶ 2, 20).
- The Patented Solution: The patent claims the specific ornamental design for a shoe sole depicted in its figures ('755 Patent, Claim, Figs. 1-7). The complaint describes the associated commercial product's design as featuring a "novel sole design that curls up the front toe and up the back of the heel in a distinctive manner with a distinctive pattern of circular treads" (Compl. ¶ 20). The claimed design is defined by the solid lines in the patent drawings, which show a flared sole profile and a prominent, textured wrap-around tread ('755 Patent, Figs. 5, 7).
- Technical Importance: The complaint alleges this design was a key driver of the "instant success" of the 327 model, which sold millions of pairs and was widely acknowledged in fashion media (Compl. ¶¶ 23-24).
Key Claims at a Glance
- Design patents have a single claim, which is for the ornamental design "as shown and described" ('755 Patent, Claim).
- The essential visual elements of the claimed design, illustrated in the patent's figures with solid lines, include:
- A flared sole silhouette when viewed from the side.
- An outsole tread pattern composed of circular nubs.
- The tread pattern wrapping vertically up the back of the heel.
- The tread pattern wrapping vertically up the front of the toe.
U.S. Design Patent No. D939,813, "Outsole" (Issued Jan. 4, 2022)
The Invention Explained
- Problem Addressed: As with the '755 Patent, this patent seeks to protect a novel and ornamental design for a component of a shoe (Compl. ¶ 21).
- The Patented Solution: The patent claims the ornamental design for an "outsole" as depicted in its figures ('813 Patent, Claim, Figs. 1-7). The drawings and the underlying design appear identical to those in the '755 Patent, covering the combination of a flared profile and a wrap-around, nub-textured tread ('813 Patent, Figs. 1-7). The complaint groups the two patents as the "New Balance Design Patents" covering "elements of the sole design" (Compl. ¶ 21). The complaint features patent drawings that illustrate the claimed design common to both patents (Compl. ¶ 21, image).
- Technical Importance: The importance of this design is identical to that described for the '755 Patent, as it protects the same underlying aesthetic that contributed to the commercial success of the 327 model (Compl. ¶¶ 23-24).
Key Claims at a Glance
- The patent contains a single claim for the ornamental design "as shown and described" ('813 Patent, Claim).
- The essential visual elements are identical to those of the '755 Patent, as described above.
III. The Accused Instrumentality
Product Identification
Defendant's "Chasen" model sneaker (Compl. ¶ 3). The complaint identifies two versions: the "original Chasen" and a modified "stripeless Chasen" (Compl. ¶¶ 38, 44).
Functionality and Market Context
The complaint alleges the Chasen shoe is a "deliberate knock-off" of New Balance's 327 sneaker, launched to "capitalize on and free-ride off of the success" of the 327 (Compl. ¶ 37). The complaint includes a side-by-side photograph comparing the New Balance 327 and the original Madden Chasen, which shows similarities in the overall silhouette, sole design, and side markings (Compl. ¶ 3, image). A separate image shows the "stripeless Chasen," which appears to retain the sole design while removing diagonal stripes from the shoe's upper (Compl. p. 10, image). The complaint provides evidence of the Chasen shoe being marketed on major retail websites, such as Macy's (Compl. ¶ 43, image).
IV. Analysis of Infringement Allegations
The infringement test for a design patent is whether an "ordinary observer," giving such attention as a purchaser usually gives, would find the accused design substantially the same as the patented design. The following table summarizes the allegations by mapping key features of the patented design to the accused product.
'755 Patent and '813 Patent Infringement Allegations
| Claimed Ornamental Feature (from Patent Figures) | Alleged Infringing Feature of the "Chasen" Shoe | Complaint Citation |
|---|---|---|
| The overall ornamental appearance of the shoe sole. | The complaint alleges that an ordinary observer would find the design of the Chasen shoe to be "substantially the same" as the patented design. | ¶46 |
| A flared sole profile with an outsole tread pattern composed of circular nubs. | The Chasen shoe is alleged to have "slavishly copied" the "distinctive outer sole design" of the 327 shoe, which embodies the patented design. | ¶38 |
| An outsole tread that wraps vertically up the back of the shoe's heel. | The side-by-side comparison photograph provided in the complaint shows the Chasen shoe incorporating a wrap-around heel tread visually similar to the patented design. | ¶3 |
| An outsole tread that wraps vertically up the front of the shoe's toe. | The visual evidence in the complaint shows the Chasen shoe incorporating a wrap-around toe tread that is visually similar to the patented design. | ¶3 |
- Identified Points of Contention:
- The Ordinary Observer Test: The central dispute will be whether the overall visual impression of the Chasen sole is "substantially the same" as the patented design. The defense may argue that differences in the size, density, or exact placement of the sole's nubs are significant enough to be noticed by an ordinary observer, thereby avoiding infringement.
- Scope of Comparison: The patents-in-suit claim only the ornamental design of the sole. A point of contention may arise regarding the extent to which features of the shoe upper (e.g., the original diagonal stripes or lack thereof) should be considered by the ordinary observer or whether the focus must be strictly limited to the claimed sole design.
- Impact of Different Versions: The court will have to analyze infringement for both the "original" and "stripeless" Chasen models. A question is whether the removal of the stripes from the upper of the "stripeless Chasen" has any impact on the infringement analysis of a patent directed to the sole.
V. Key Claim Terms for Construction
In design patent litigation, the "claim" is understood through the patent's drawings rather than textual limitations. The primary interpretive issue is not construing specific terms, but determining the overall scope of the ornamental design protected.
- The "Term": The overall ornamental design for a "shoe sole" / "outsole" as shown in the solid lines of the patent figures.
- Context and Importance: The entire infringement analysis depends on the scope of this visual claim. Practitioners may focus on whether the claim covers the general concept of a wrap-around, nubbed sole or is limited to the precise arrangement and proportions shown in the drawings.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiff may argue that the core ornamental concept is the combination of the flared profile and the distinctive wrap-around heel and toe treads, and that minor variations should not defeat a finding of infringement. The complaint's allegation that the Chasen is "substantially the same" supports this view (Compl. ¶ 46).
- Evidence for a Narrower Interpretation: Defendant may argue that the specific size, shape, and pattern of every circular nub depicted in the solid lines of the patent figures are limitations of the claim. Any deviation in the accused product could be framed as a material difference that an ordinary observer would discern, thus avoiding infringement.
VI. Other Allegations
- Willful Infringement: The complaint alleges that Defendant’s infringement was willful and deliberate for both asserted patents (Compl. ¶¶ 58, 66). This allegation is supported by claims that Defendant has a business strategy of copying popular designs from competitors (Compl. ¶ 39), was put on actual notice of Plaintiff's rights via a warning letter in April 2021 (Compl. ¶ 40), and continued to sell the accused products even after the patents issued and after receiving a second notice in February 2022 (Compl. ¶¶ 43-45).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual similarity: In the eye of an ordinary observer, is the overall ornamental appearance of the Madden "Chasen" sole substantially the same as the design claimed in the '755 and '813 patents, or do differences in the execution of the design elements preclude a finding of infringement?
- A key evidentiary question will be one of intent: Can New Balance prove that Madden's alleged copying was not only direct but also willful, particularly in light of the pre-suit correspondence? The answer will determine the availability of enhanced damages or an award of the infringer's total profits under 35 U.S.C. § 289.
- A final question relates to remedy and scope: How will the court apply the infringement analysis to the two different versions of the accused Chasen shoe, and what impact will the separate trademark and unfair competition claims have on the ultimate scope of any potential injunction or monetary award?