DCT
1:22-cv-01594
Jezign Licensing LLC v. Heelys Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Jezign Licensing, LLC (New York / Maryland)
- Defendant: Heelys, Inc. (Texas)
- Plaintiff’s Counsel: Silverman Thompson Slutkin White; SML Avvocati P.C.
- Case Identification: 1:22-cv-01594, D. Md., 06/28/2022
- Venue Allegations: Plaintiff alleges venue is proper in the District of Maryland based on Defendant’s sales to consumers within the state through an interactive website.
- Core Dispute: Plaintiff alleges that Defendant’s light-up roller shoes infringe a design patent for an ornamental "Illuminated shoe lower."
- Technical Context: The dispute concerns the ornamental design of footwear soles that incorporate lighting elements, a feature intended to enhance visual appeal.
- Key Procedural History: The complaint notes that the patent-in-suit expired on November 13, 2021. Consequently, this action is limited to seeking damages for alleged past infringement and cannot result in 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 |
| 2022-06-28 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D554,848 - “Illuminated shoe lower”
- Patent Identification: U.S. Design Patent No. D554,848, “Illuminated shoe lower,” issued November 13, 2007.
The Invention Explained
- Problem Addressed: The complaint suggests a need to differentiate illuminated footwear from prior art through a unique "design and placement of the illumination system" (Compl. ¶7).
- The Patented Solution: The patent claims the specific ornamental appearance of the lower portion of a shoe, or sole assembly. The design is defined exclusively by the elements shown in solid lines in the patent's figures; the shoe upper, depicted in broken lines, is explicitly disclaimed and does not form part of the invention ('848 Patent, Description, "The broken lines in the shoe upper... form no part of the claimed design."). The claimed visual features include the overall profile of the sole and the specific arrangement of wavy and circular patterns on its side, which are indicated as translucent and illuminated ('848 Patent, Description, FIG. 6).
- Technical Importance: The complaint asserts that this specific design provided a "unique" aesthetic for illuminated footwear (Compl. ¶7).
Key Claims at a Glance
- The patent contains a single claim 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 representations in Figures 1-9. Key ornamental features include:
- The overall contour and profile of the shoe lower.
- A series of recessed, wave-like patterns along the side of the midsole.
- A grouping of circular or ovular elements within the wave-like patterns.
- The visual effect of illumination emanating from these patterned regions.
III. The Accused Instrumentality
Product Identification
- The complaint identifies Defendant’s "Premium 1 Lo Light Up Shoes" as the "Infringing Products" (Compl. ¶11).
Functionality and Market Context
- The accused products are athletic-style shoes featuring an illuminated sole and, characteristic of the Heelys brand, a wheel embedded in the heel. The complaint provides images showing the accused shoe's sole, which contains a series of discrete light-emitting elements arranged along the midsole. One image shows an angled view of the white version of the shoe (Compl. p. 3). Another marketing image shows the black version with the lights actively illuminated, as viewed from the side and bottom (Compl. p. 4). The complaint alleges these products are sold and marketed to end consumers (Compl. ¶14).
IV. Analysis of Infringement Allegations
Design patent infringement is determined by the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into believing the accused design is the same as the patented design. The analysis focuses on the ornamental aspects as claimed.
'848 Patent Infringement Allegations
| Key Ornamental Feature of the Patented Design | Alleged Corresponding Feature in Accused Product | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design of the shoe lower. | The overall ornamental design of the accused shoe's sole assembly. | ¶12 | FIGs. 1-9 |
| A specific profile and contour for the shoe lower assembly. | A similar athletic-style shoe sole profile. The image shows the accused shoe has a comparable shape and thickness. | p. 3 | FIG. 7 |
| A pattern of illuminated regions along the side of the sole. | A series of illuminated regions arranged along the side of the accused product's sole. | p. 4 | FIG. 7 |
| Specific wave-like and circular shapes comprising the illuminated pattern. | A pattern of distinct, separated light-up pods that create an overall illuminated strip along the side of the sole. | p. 3 | FIG. 7 |
Identified Points of Contention
- Scope Questions: A central issue will be whether the "ordinary observer" comparison is properly limited to the claimed "shoe lower," as the patent requires, thereby excluding the distinct design of the Heelys shoe upper and the functional roller wheel, which are not part of the patented design.
- Technical Questions: The court will need to determine if the visual impression created by the accused product's series of discrete, individual light pods is "substantially the same" as the patented design's more integrated, wave-and-circle pattern. The complaint's image of the accused product shows distinct circular lights (Compl. p. 3), which may raise questions when compared to the specific recessed patterns shown in the patent's figures ('848 Patent, FIG. 7).
V. Key Claim Terms for Construction
In a design patent case, the "claim" is the drawing. Claim construction focuses on defining the scope of the claimed design, particularly what is and is not protected.
- The Term: "The ornamental design for an illuminated shoe lower"
- Context and Importance: The construction of this phrase is critical because it defines the visual elements the fact-finder must compare. The primary dispute will likely center on ensuring the comparison is limited to the ornamental features of the shoe lower only, filtering out the unclaimed shoe upper and any functional elements of the accused product.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that the overall visual impression of the design cannot be divorced from its context as part of a shoe, but the patent's own language makes this a difficult position to sustain.
- Evidence for a Narrower Interpretation: The patent specification provides a clear and explicit disclaimer: "The broken lines in the shoe upper depicted in the drawings are for illustrative purposes only and form no part of the claimed design" ('848 Patent, Description). This language strongly supports limiting the infringement analysis strictly to the features shown in solid lines.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Defendant marketed and sold the shoes to consumers and resellers with the intent that they would be used in a manner that infringes the patent (Compl. ¶14).
- Willful Infringement: The complaint alleges that Defendant’s infringement was willful based on "information and belief" that Defendant acted with "knowledge of the patent-in-suit" (Compl. ¶17). The complaint does not plead specific facts to support pre-suit knowledge of the patent.
VII. Analyst’s Conclusion: Key Questions for the Case
The Core "Ordinary Observer" Comparison: Will an ordinary observer, properly instructed to disregard the unclaimed shoe upper and functional roller wheel, be deceived into believing that the specific ornamental design of the accused Heelys sole is substantially the same as the claimed design in the '848 patent? The outcome may depend on whether the visual differences in the patterns of the illuminated elements are significant enough to create distinct overall appearances.
Impact of Prior Art: The complaint invokes the standard of an observer "familiar with the relevant prior art" (Compl. ¶12). A key evidentiary question will be how that prior art, once presented, affects the perceived scope of the '848 patent's design and highlights the similarities or differences between the patented and accused designs.
Damages and Apportionment: As the patent is expired, the case is solely for past damages. A central issue will be the calculation of Defendant's profits attributable to the infringement under 35 U.S.C. § 289. This may involve questions of apportionment, specifically determining what portion of the accused product's value and profit is derived from the allegedly infringing ornamental sole design versus other features like the brand, the shoe upper, and the roller wheel functionality.