DCT

1:23-cv-12209

Jibbitz Inc v. Dolcan Inc

I. Executive Summary and Procedural Information

Parties & Counsel:
- Plaintiff: Jibbitz, Inc. (Colorado)
- Defendant: Dolcan, Inc. (Massachusetts)
- Plaintiff’s Counsel: Wilmer Cutler Pickering Hale and Dorr LLP
Case Identification: 1:23-cv-12209, D. Mass., 09/26/2023
Venue Allegations: Plaintiff alleges venue is proper in the District of Massachusetts because Defendant is a domestic profit corporation registered in and residing in the state.
Core Dispute: Plaintiff alleges that Defendant’s imitation shoe charms infringe patents related to systems and methods for securing decorative accessories to footwear.
Technical Context: The technology concerns mechanical fasteners for attaching customizable decorative charms to molded foam footwear, a product category popularized by clog-style shoes.
Key Procedural History: The complaint alleges that Plaintiff’s counsel provided Defendant with actual notice of the patents-in-suit and the alleged infringing conduct via letters sent on or before May 6, 2022.

Case Timeline

Date	Event
2003-01-01	Crocs launches original clog style footwear (earliest alleged date)
2005-01-01	Jibbitz begins manufacturing and selling shoe charms (earliest alleged date)
2005-07-07	Earliest Priority Date for ’836, ’519, and ’814 Patents
2006-01-01	Crocs acquires Jibbitz and its intellectual property (earliest alleged date)
2010-04-20	U.S. Patent No. 7,698,836 issues
2012-02-28	U.S. Patent No. 8,122,519 issues
2014-07-22	U.S. Patent No. 8,782,814 issues
2022-01-01	Jibbitz learns of Dolcan's alleged infringing activity (earliest alleged date)
2022-05-06	Jibbitz counsel sends notice letters to Dolcan regarding patents
2023-09-26	Complaint for Patent Infringement filed

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

U.S. Patent No. 7,698,836 - “System and Method for Securing Accessories to Clothing”

Patent Identification: U.S. Patent No. 7,698,836, “System and Method for Securing Accessories to Clothing,” issued April 20, 2010.

The Invention Explained

Problem Addressed: The patent describes the technical challenge of securely attaching accessories to articles made from stretchable materials like foam, such as molded shoes. It notes that durability is important and that variations in hole size and material thickness make it difficult to design a one-size-fits-all accessory. (’836 Patent, col. 2:56-68).
The Patented Solution: The invention is a fastening system composed of a shaft with two ends. An "inner shoulder" on the first end is designed to be pushed through an expandable hole in the shoe and engage the shoe's inner surface. A "second shoulder" on the other end, which comprises the decorative part of the accessory, engages the shoe's outer surface. This mechanical structure leverages the elastic properties of the shoe material to lock the accessory in place. (’836 Patent, col. 4:11-19, 25-33).
Technical Importance: The technology provided a simple, removable, and durable method for consumers to personalize the increasingly popular molded foam footwear of the era. (’836 Patent, col. 2:45-55).

Key Claims at a Glance

The complaint asserts independent claim 26. (Compl. ¶22).
Essential elements of Claim 26:
- A system for securing a decorative accessory.
- The system comprises: a shoe having at least one expandable hole in an upper portion.
- A shaft having first and second ends.
- A first shoulder secured to the first end of the shaft, configured for insertion through the expandable hole and to engage an inner surface of the shoe's upper portion.
- The first shoulder is larger in diameter than the expandable hole when the hole is in its unexpanded state.
- A second shoulder secured to the second end of the shaft, configured to engage an outer surface of the shoe's upper portion, with the second shoulder comprising the decorative accessory.

U.S. Patent No. 8,122,519 - “System and Method for Securing Accessories to Wearable Items”

Patent Identification: U.S. Patent No. 8,122,519, “System and Method for Securing Accessories to Wearable Items,” issued February 28, 2012.

The Invention Explained

Problem Addressed: The patent addresses the same technical challenge as the ’836 Patent: creating a secure fastening system for accessories on items made of stretchable foam that have holes of varying sizes and thicknesses. (’519 Patent, col. 2:5-17).
The Patented Solution: This patent describes a nearly identical mechanical solution but broadens the application from a "shoe" to a "wearable item" that has a molded portion made of "moldable foam material." The system still relies on a shaft with a first shoulder that passes through an expandable hole to engage an inner surface and a second shoulder (the decorative accessory) that engages the outer surface. (’519 Patent, Abstract; col. 6:2-9).
Technical Importance: This patent appears to broaden the protective scope of the core invention beyond footwear to other foam-based wearable goods, such as belts or wristbands. (’519 Patent, col. 2:54-58).

Key Claims at a Glance

The complaint asserts independent claim 27. (Compl. ¶30).
Essential elements of Claim 27:
- A system for securing a decorative accessory.
- The system comprises: a wearable item having at least one expandable hole formed of a moldable foam material in a molded portion of the item.
- A shaft having first and second ends.
- A first shoulder secured to the first end of the shaft, configured for insertion through the hole and to engage an inner surface of the wearable item.
- The first shoulder is larger in diameter than the expandable hole when the hole is in its unexpanded state.
- A second shoulder secured to the second end of the shaft, configured to engage an outer surface of the wearable item, with the second shoulder comprising the decorative accessory.

U.S. Patent No. 8,782,814 - “System and Method for Securing Accessories to Clothing”

Patent Identification: U.S. Patent No. 8,782,814, "System and Method for Securing Accessories to Clothing," issued July 22, 2014. (Compl. ¶37).
Technology Synopsis: This patent describes a system for securing a decorative accessory to an "article of clothing" with an expandable hole. The invention addresses the challenge of creating a secure fastener for stretchable materials by using a two-shouldered device, where one shoulder engages the interior surface of the article and the other, decorative shoulder engages the exterior surface. (’814 Patent, col. 2:36-50, col. 10:1-17).
Asserted Claims: Independent claim 16 is asserted. (Compl. ¶38).
Accused Features: The complaint alleges that Defendant’s "Accused Charms," when integrated by customers with molded shoes, form a system that infringes Claim 16. (Compl. ¶¶38-39).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are "imitation charms" ("Accused Charms") sold by Defendant Dolcan, and the systems created when these charms are integrated with molded shoes. (Compl. ¶¶2, 10, 22).

Functionality and Market Context

The "Accused Charms" are decorative accessories designed to be inserted into the ventilation holes of molded footwear. (Compl. ¶¶10, 15). The complaint alleges that Dolcan markets and sells these charms at mall kiosks under branding such as "Charming Charms" and "Happy Sandal." (Compl. ¶11 & p. 4). A photograph displays a molded clog-style shoe adorned with multiple "Accused Charms" inserted into its ventilation holes, which the complaint alleges is part of a marketing display at a Dolcan kiosk. (Compl. ¶12 & p. 5). The complaint alleges these displays are intended to encourage customers to purchase and use the charms with molded shoes, capitalizing on the success of Plaintiff's products. (Compl. ¶10, ¶15).

IV. Analysis of Infringement Allegations

The complaint alleges that Dolcan directly infringes by making and using the claimed systems in its marketing displays, and indirectly infringes by encouraging and enabling its customers to assemble the infringing systems. (Compl. ¶¶14, 15, 17, 22).

’836 Patent Infringement Allegations

Claim Element (from Independent Claim 26)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
[a] system for securing a decorative accessory, the system comprising: a shoe having at least one expandable hole in an upper portion of the shoe;	The system created by combining an Accused Charm with a molded shoe, which has expandable holes in its upper portion.	¶22, ¶23	col. 2:49-55
a shaft having first and second ends;	The post-like structure of the Accused Charm that connects its decorative top to its base.	¶22, ¶23	col. 4:11-13
a first shoulder secured to the first end of the shaft, the first shoulder being configured for insertion through one of the at least one expandable hole and configured to engage an inner surface of the upper portion of the shoe...	The base of the Accused Charm, which is inserted through a hole in the shoe and rests against the shoe's inner surface.	¶22, ¶23	col. 4:13-16
the first shoulder being larger in diameter than the expandable hole through which it is inserted when that expandable hole is in its unexpanded state;	The base of the Accused Charm is alleged to be larger than the shoe's hole in its normal state, requiring the hole to stretch during insertion.	¶22	col. 4:21-24
and a second shoulder secured to the second end of the shaft, the second shoulder being configured to engage an outer surface of the upper portion of the shoe, the second shoulder comprising the decorative accessory.	The decorative top of the Accused Charm, which remains on the exterior of the shoe and rests against its outer surface.	¶22, ¶23	col. 4:16-19

’519 Patent Infringement Allegations

Claim Element (from Independent Claim 27)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
[a] system for attaching a decorative accessory to a wearable item, the system comprising: a wearable item having at least one expandable hole, the at least one expandable hole formed of a moldable foam material in a molded portion of the wearable item;	The system created by combining an Accused Charm with a molded shoe, which is alleged to be a "wearable item" made of "moldable foam material."	¶30, ¶31	col. 2:60-63
a shaft having first and second ends;	The post-like structure of the Accused Charm connecting its two ends.	¶30, ¶31	col. 5:20-21
a first shoulder secured to the first end of the shaft, the first shoulder being configured for insertion through one of the at least one expandable hole and configured to engage an inner surface of the wearable item...	The base of the Accused Charm, which is pushed through a hole in the shoe to engage the inner surface.	¶30, ¶31	col. 5:58-62
the first shoulder being larger in diameter than the expandable hole through which it is inserted when the expandable hole is in its unexpanded state;	The base of the Accused Charm is alleged to have a diameter larger than the shoe hole's resting diameter.	¶30	col. 6:3-6
and second shoulder secured to the second end of the shaft, the second shoulder being configured to engage an outer surface of the wearable item, the second shoulder comprising the decorative accessory.	The decorative head of the Accused Charm, which sits on the outer surface of the shoe.	¶30, ¶31	col. 6:6-9

Identified Points of Contention:
- Scope Questions: The claims are directed to a "system" that includes both the shoe/wearable item and the accessory. A potential issue is whether Dolcan's sale of only the charm component constitutes direct infringement of the system claim, or if direct infringement is limited to the alleged "using" of the full system in marketing displays. The scope of "wearable item" in the ’519 patent could also be a point of contention, though a shoe fits squarely within the patent's examples. (’519 Patent, col. 2:9-10).
- Technical Questions: A key factual question will be whether the accused charms meet the dimensional limitation that the "first shoulder" is "larger in diameter than the expandable hole... in its unexpanded state." Proving this limitation is met would require specific evidence comparing the dimensions of the accused products with the shoes they are intended for.

V. Key Claim Terms for Construction

The Term: "shoulder" (first and second)
Context and Importance: This term defines the key structural components of the fastener responsible for securing the accessory. The definition of what constitutes a "shoulder" is critical to determining whether the physical structure of the "Accused Charms"—specifically their base and decorative top—meets these claim limitations.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discloses numerous embodiments with shoulders of various shapes and sizes, including rounded, disc-shaped, and integrated designs, suggesting the term is not limited to a single form but rather to its function of engaging a surface. (’836 Patent, FIGS. 3, 4, 6; col. 4:55-59).
- Evidence for a Narrower Interpretation: The primary embodiment and abstract distinguish the "shoulders" as discrete components secured to the ends of the "shaft." (’836 Patent, FIG. 2B; Abstract). Parties could argue this implies a more defined structure than, for example, a simple flaring of the shaft material.
The Term: "expandable hole"
Context and Importance: The entire mechanism of the invention relies on the hole's ability to expand to admit the "first shoulder" and then relax to secure it. The degree and nature of the required "expandability" will be central to the infringement analysis.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent broadly refers to the hole being in a "stretchable material (e.g., foam)." (’836 Patent, col. 2:47-48). This suggests the term could apply to any hole in a material with some elasticity.
- Evidence for a Narrower Interpretation: The background section consistently contextualizes the invention with "molded shoes" made of a specific type of foam material, like those from CROCS™. (’836 Patent, col. 2:49-55). An argument could be made that "expandable" should be construed in the specific context of the elastic properties of that particular material.

VI. Other Allegations

Indirect Infringement: The complaint pleads both induced and contributory infringement.
- Inducement is alleged based on Defendant's marketing displays showing the "Accused Charms" integrated with molded shoes and, on information and belief, employees providing instructions to customers on how to perform the infringing integration. (Compl. ¶15).
- Contributory infringement is alleged on the grounds that the "Accused Charms" are "especially made or adapted" for infringing use and are not "staple articles or commodities of commerce suitable for substantial non-infringing use." (Compl. ¶17).
Willful Infringement: Willfulness is alleged based on Defendant’s continued infringement despite having received actual notice of the Jibbitz Patents. The complaint specifies that Plaintiff’s counsel sent letters to Defendant identifying the patents and the infringing conduct on or before May 6, 2022. (Compl. ¶16, ¶26, ¶34, ¶42).

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

A core issue will be one of direct infringement by “use”: Can Plaintiff prove that Defendant’s in-store marketing displays, which feature the "Accused Charms" integrated with molded shoes, constitute an infringing "use" of the patented "system," thereby creating liability for direct infringement?
A key question for willfulness and indirect infringement will be state of mind: Can Plaintiff establish that Defendant acted with knowledge and specific intent to encourage infringement, particularly in light of the allegation that Defendant received explicit notice of the patents-in-suit more than a year before the complaint was filed?
The case may also turn on a factual evidentiary question: Does the physical evidence show that the base of the "Accused Charms" is dimensionally "larger in diameter" than the shoe holes "in [their] unexpanded state," as required by the plain language of the asserted independent claims?