DCT

1:22-cv-01594

Jezign Licensing LLC v. Heelys Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:22-cv-01594, D. Md., 05/31/2023 (Filing date of First Amended Complaint)
  • Venue Allegations: Venue is alleged to be proper in the District of Maryland because Defendants conduct business in the state and have made sales to consumers there, including through an interactive website.
  • Core Dispute: Plaintiff alleges that Defendants’ HEELYS brand light-up shoes infringe a design patent covering the ornamental appearance of an "Illuminated shoe lower."
  • Technical Context: The dispute centers on the ornamental design of footwear, specifically shoes featuring an illuminated midsole, a product category popular in the youth and casual footwear market.
  • Key Procedural History: The complaint notes that the patent-in-suit, U.S. Design Patent No. D554,848, expired on November 13, 2021. This procedural fact limits the plaintiff's potential remedy to monetary damages for infringement that occurred during the patent's term and precludes any claim for injunctive relief.

Case Timeline

Date Event
2001-09-27 Priority Date for D'848 Patent
2007-11-13 U.S. Design Patent No. D554,848 Issued
2013-2014 Sequential allegedly licensed HEELYS brand to BBC International, which began selling accused shoes
2021-04-01 BBC International allegedly purchased all rights to the HEELYS brand
2021-11-13 D'848 Patent Expired
2023-05-31 First Amended Complaint Filed

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

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

The Invention Explained

  • Problem Addressed: The complaint suggests that prior illuminated footwear had different designs and placements for their light systems, implying a need for novel ornamental appearances in this market (Compl. ¶9). Design patents protect the way an article looks, not how it works.
  • The Patented Solution: The patent claims a new, original, and ornamental design for the lower portion of a shoe. The design consists of a translucent or semi-translucent midsole and outsole combination with a distinct wavy, contoured profile and a pattern of recessed shapes along the side (D'848 Patent, Figs. 1, 6, 8; DESCRIPTION). The patent explicitly disclaims the shoe's upper portion by rendering it in broken lines, focusing the legal protection on the specific appearance of the sole structure itself (D'848 Patent, DESCRIPTION).
  • Technical Importance: The claimed design offers a specific aesthetic for illuminated footwear, aiming to differentiate a product in a visually-driven consumer market (Compl. ¶9).

Key Claims at a Glance

  • Design patents have a single claim, which is for the ornamental design as shown in the drawings. The D'848 Patent claims: "The ornamental design for an illuminated shoe lower, as shown and described" (D'848 Patent, CLAIM).
  • The essential visual elements of the claimed design are the specific contours, patterns, and overall shape of the shoe lower depicted in solid lines in Figures 1-9.
  • The complaint asserts infringement of the single design claim (Compl. ¶¶17-18).

III. The Accused Instrumentality

Product Identification

The complaint identifies Defendants' "Premium 1 Lo Light Up Shoes" sold under the HEELYS brand as the primary accused products (Compl. ¶19).

Functionality and Market Context

  • The accused products are shoes featuring a light-up sole that contains embedded lights within a translucent midsole, causing the sole to illuminate during use (Compl. p. 4). The complaint includes a marketing image of the accused shoes, which also feature the signature Heelys wheel embedded in the heel (Compl. p. 5).
  • The complaint alleges that Defendant BBC International purchased the HEELYS brand in April 2021 and continues to sell the accused shoes through its own distribution network (Compl. ¶14). A representative image from the complaint shows a white version of the accused shoe with multi-colored lights in the sole (Compl. p. 4).

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 purchasing the accused product believing it to be the patented design. The complaint does not contain a formal claim chart but presents its infringement theory through a side-by-side visual comparison.

The complaint first presents a representative image from the patent, Figure 6, showing a perspective view of the claimed shoe lower design (Compl. p. 3). It then presents images of the accused HEELYS products, such as a black version of the shoe with blue and white lights in the sole (Compl. p. 5).

The infringement allegation rests on the assertion that the overall visual impression of the accused products is "substantially the same" as the patented design (Compl. ¶20). Plaintiff alleges that the combination of a translucent midsole, the placement and style of illumination, and the general profile of the sole on the accused HEELYS shoes are visually similar enough to the D'848 patent's drawings to confuse an ordinary observer (Compl. ¶20).

  • Identified Points of Contention:
    • Scope Questions: A central question will be how an ordinary observer perceives the designs, given that the patent disclaims the shoe upper. The analysis will focus on a comparison between the solid-line sole in the patent drawings and the sole of the accused Heelys shoe.
    • Technical Questions: The dispute may turn on the degree of similarity in the specific ornamental features of the soles. For example, does the wave-like contour and pattern of indentations on the side of the accused HEELYS shoe's sole create the same visual impression as the specific patterns shown in the D'848 patent's figures? The presence of the Heelys wheel in the accused product's heel, a feature not present in the patented design, may also be a point of distinction for the defense.

V. Key Claim Terms for Construction

In a design patent case, the "claim" is the visual disclosure in the drawings. Formal claim construction focuses on interpreting the scope of these drawings rather than defining textual terms.

  • The "Term": The ornamental design for an "illuminated shoe lower."
  • Context and Importance: The scope of the design is the central issue. The court's interpretation of what is and is not covered by the drawings will define the boundaries for the "ordinary observer" infringement test.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party arguing for broader scope might emphasize the overall visual impression created by a translucent, illuminated sole with a generally wavy profile, arguing that minor differences in the specific contours or patterns do not alter the overall appearance.
    • Evidence for a Narrower Interpretation: A party arguing for a narrower scope will point to the specific limitations of the drawings. The design is explicitly for a "shoe lower," with the entire upper disclaimed in broken lines (D'848 Patent, DESCRIPTION). This limits the claimed design strictly to the sole structure. Further, the specific recessed shapes, textures, and contours shown in solid lines in Figures 1-9 could be argued to be required elements of the design, and any deviation in an accused product could be a basis for non-infringement.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement, stating that Defendants 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. ¶23).
  • Willful Infringement: Willfulness is alleged based on knowledge of the patent-in-suit. The complaint alleges Defendants had actual knowledge "since at least the date on which Defendant received service of the complaint in this action" (Compl. ¶22), which supports a claim for post-suit willfulness. A separate, more general allegation claims the infringement was undertaken with knowledge, which could encompass a pre-suit period (Compl. ¶27).

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

  1. The Ordinary Observer Test: The primary question is one of visual comparison: would an ordinary observer, familiar with other light-up shoes, be deceived by the similarity between the accused HEELYS shoe sole and the specific ornamental design claimed in the D'848 patent drawings?
  2. Scope and the Role of Disclaimed Features: How will the fact-finder weigh the similarities in the claimed sole design against potential differences, including features of the disclaimed shoe upper and the functional wheel in the heel of the accused product, which provide context to the overall appearance?
  3. Damages Calculation: As the patent has expired, the case is exclusively about past damages. A key battleground will likely be the accounting of Defendants' profits from the sale of the accused shoes, as 35 U.S.C. § 289 allows a design patent owner to recover the infringer's total profit.