DCT

1:22-cv-01592

Jezign Licensing LLC v. Bebe Holdings Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:22-cv-01592, D. Md., 11/02/2022
  • Venue Allegations: Venue is asserted based on Defendants conducting business in Maryland and making sales to consumers in the state through interactive websites.
  • Core Dispute: Plaintiff alleges that Defendants' illuminated footwear products infringe a design patent covering the ornamental design for an "illuminated shoe lower."
  • Technical Context: The technology concerns the ornamental aesthetic of footwear, specifically consumer athletic shoes and boots featuring illuminated soles.
  • Key Procedural History: The patent-in-suit expired on November 13, 2021. Consequently, this action seeks monetary damages for past infringement and does not seek an injunction against future sales.

Case Timeline

Date Event
2001-09-27 '848 Patent Earliest Priority Date
2007-11-13 '848 Patent Issue Date
2021-11-13 '848 Patent Expiration Date
2022-11-02 First Amended Complaint Filing Date

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

U.S. Design Patent No. D554,848 - Illuminated shoe lower

  • Issued: November 13, 2007

The Invention Explained

  • Problem Addressed: The complaint suggests that prior designs for illuminated footwear were distinguishable and that the patented invention provides a novel aesthetic through its specific "design and placement of the illumination system" (Compl. ¶9).
  • The Patented Solution: The patent claims the ornamental design for the lower portion of a shoe. The design’s scope is defined by the solid lines in the patent figures, which depict a multi-layered, contoured midsole and a translucent outsole (Compl. ¶13; '848 Patent, Figs. 1-9). The patent explicitly notes that the shoe upper, shown in broken lines, is for illustrative purposes only and forms no part of the claimed design, while other broken lines indicate that the translucent regions are illuminated ('848 Patent, DESCRIPTION).
  • Technical Importance: The complaint alleges the patented design represents an innovative approach to the aesthetic of illuminated footwear, distinguishing it from other shoes and patents (Compl. ¶9).

Key Claims at a Glance

  • The single claim is for "The ornamental design for an illuminated shoe lower, as shown and described" ('848 Patent, CLAIM).
  • The scope of this claim is defined by the visual characteristics of the shoe lower as depicted in solid lines across several figures and embodiments in the patent, including:
    • A continuous, translucent outsole.
    • A multi-layered midsole with distinct, undulating contours and textures.
    • The overall visual impression created by the combination of these features, which the patent indicates are illuminated.

III. The Accused Instrumentality

Product Identification

  • The complaint identifies the "Sport Krysten, Sport Keene, and Light-Up Boots" as the "Infringing Products" (Compl. ¶14).

Functionality and Market Context

  • The accused instrumentalities are footwear products, including high-top sneakers and boots, that feature illuminated soles (Compl. ¶14).
  • The complaint provides several images of the accused products. One image depicts a black high-top sneaker with a translucent sole that contains a series of discrete, visible lights (Compl. p. 4). Another image shows a pink boot with a similar sole featuring distinct, multi-colored lights (Compl. p. 5).
  • The complaint alleges that Defendant Bebe produces, manufactures, or licenses these shoes, which are then sold by Defendants LTD and Poshmark via online websites (Compl. ¶10, ¶11, ¶14).

IV. Analysis of Infringement Allegations

The complaint alleges that the accused products have "substantially the same ornamental design" as claimed in the patent, such that an ordinary observer would be deceived (Compl. ¶15, ¶16).

D554,848 Infringement Allegations

Claimed Design Feature (from '848 Patent Figures) Alleged Infringing Functionality (from Complaint Images) Complaint Citation Patent Citation
An ornamental design for the lower portion of a shoe, including a multi-layered midsole and an illuminated, translucent outsole. The accused products are shoes featuring illuminated soles. The complaint includes an image of a white high-top sneaker with a translucent, illuminated sole. (Compl. p. 4). ¶14, ¶15 '848 Patent, Figs. 1-9; DESCRIPTION
The overall visual impression created by the specific contours, layers, and textures of the midsole combined with the illuminated outsole. The design of the accused products is alleged to be "substantially the same" as the claimed design, such that an ordinary observer would be deceived. The complaint presents an image of the patented design from Figure 7 next to images of the accused products. (Compl. pp. 3-4). ¶15 '848 Patent, Figs. 1-9
  • Identified Points of Contention:
    • Scope Questions: A central question for the court will be the scope of the claimed design. The analysis will compare the overall visual impression of the claimed design—which features smooth, continuous illuminated regions—with that of the accused products, which appear to use discrete, visible light-emitting diodes within their soles (Compl. pp. 4-5).
    • Technical Questions: The infringement analysis will turn on a visual comparison. A key question is whether the specific layered patterns and textures on the midsoles of the accused products are sufficiently different from those depicted in the '848 patent's figures to avoid confusing an ordinary observer.

V. Key Claim Terms for Construction

In design patent cases, the "claim" is the design as a whole, rather than a set of text-based limitations. The construction analysis focuses on the overall visual appearance of the claimed design.

  • The Term: "The ornamental design for an illuminated shoe lower"
  • Context and Importance: The interpretation of the design's scope is critical. A court's description of the claimed design will determine the level of similarity required for infringement. Practitioners may focus on whether the claim covers the general concept of a multi-layered, illuminated sole or is limited to the specific contours and patterns shown in the patent figures.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent discloses multiple embodiments of the design (e.g., Figs. 1-5, Figs. 6-7, Figs. 8-9), which may support an argument that the protected design is not limited to the precise details of any single figure but covers the common visual elements across them.
    • Evidence for a Narrower Interpretation: The patent's description explicitly disclaims the shoe upper by depicting it in broken lines, limiting the design strictly to the "shoe lower" ('848 Patent, DESCRIPTION). Furthermore, the specific, detailed shapes and textures shown in solid lines in the drawings could be argued to confine the design's scope to products that are nearly identical copies.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement, stating that Defendants sold and marketed the accused shoes to consumers and resellers with the intent that those parties would use or sell the products in a manner that infringes (Compl. ¶18). It further alleges Defendants "knew or should have known" that such activities would constitute infringement (Compl. ¶19).
  • Willful Infringement: Willfulness is alleged based on Defendants' "knowledge of the patent-in-suit" (Compl. ¶22). The complaint alleges this knowledge exists from "at least the date on which Defendant received service of the complaint in this action," suggesting a theory of post-suit willfulness (Compl. ¶17).

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

  • A core issue will be one of visual comparison under the ordinary observer test: Would an ordinary observer, giving the attention a purchaser usually gives, be deceived into thinking the accused products have the same design as the '848 patent? This will involve a detailed comparison of the overall appearance, including the sole's contours, layers, and the nature of its illumination (integrated region vs. discrete lights).
  • A second central question will relate to damages for an expired patent: As the patent is expired, the case is purely retrospective. The key evidentiary challenge for the Plaintiff will be to establish the period of infringement and quantify Defendants' total profits attributable to the allegedly infringing design, as permitted for design patents under 35 U.S.C. § 289.