DCT

5:18-cv-00582

Buyers Direct Inc v. Belk Ecommerce LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:18-cv-582, E.D.N.C., 12/11/2018
  • Venue Allegations: Venue is alleged to be proper based on Defendants' corporate residence in North Carolina, the commission of infringing acts within the district, and the maintenance of a regular and established place of business in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s private label "NEW DIRECTIONS" foot coverings infringe a design patent covering the ornamental appearance of a slipper.
  • Technical Context: The dispute is situated in the consumer apparel and footwear market, focusing on the proprietary ornamental design of soft, slipper-style foot coverings.
  • Key Procedural History: The complaint alleges this is the second infringement suit between the parties over the same patent, with a prior 2010 case having been settled after the court denied Defendant's summary judgment motions. Additionally, the asserted patent's validity was confirmed through an ex parte reexamination proceeding at the USPTO in 2014, a fact that may strengthen its presumption of validity.

Case Timeline

Date Event
2008 (Fall) Plaintiff BDI begins selling "snoozies!" foot coverings.
2008-2009 Defendant Belk purchases and sells BDI's "snoozies!" products.
2009-01-22 U.S. Patent Application No. 29/331,258 is filed.
2009-08-18 U.S. Design Patent No. D598,183 issues.
2009-11-01 BDI learns Belk is allegedly selling a copycat product ("Footsies").
2010-02-01 Belk receives actual notice of the '183 Patent via prior lawsuit.
2014-09-24 USPTO issues ex parte Reexamination Certificate for '183 Patent.
2018-11-23 BDI purchases samples of the currently accused "NEW DIRECTIONS" products.
2018-12-11 Complaint is filed.

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

  • Patent Identification: U.S. Design Patent No. D598,183 (“the ’183 Patent”), titled "Slipper," issued on August 18, 2009.

U.S. Design Patent No. D598,183 - "Slipper"

The Invention Explained

  • Problem Addressed: Design patents protect ornamental appearance rather than solving a technical problem. The patent claims a new, original, and ornamental design for an article of manufacture, in this case, a slipper ('183 Patent, Claim). The complaint provides context that the product was developed as a "retail replacement for the slumber sock" (Compl. ¶22).
  • The Patented Solution: The patent protects the specific visual appearance of the slipper as depicted in its drawings ('183 Patent, Claim). The design is characterized by a soft, unstructured body with a low-cut profile, a rounded toe box, a wide, circular opening for the foot, and a prominent, plush fleece lining that forms a distinct cuff visible around the entire opening ('183 Patent, Figs. 1, 3, 6). The claimed design is for the shape and configuration of the slipper itself, as the patent figures do not include any surface ornamentation ('183 Patent, Figs. 1-8).
  • Technical Importance: The complaint asserts that the distinctive design achieved significant commercial success and public recognition, with sales of approximately two million pairs per year and features in national media (Compl. ¶18).

Key Claims at a Glance

  • The complaint asserts the single claim of the ’183 Patent.
  • Claim 1 claims "The ornamental design for a slipper, as shown and described" ('183 Patent, Claim). The core visual elements defined by the patent figures include:
    • The overall shape and configuration of the slipper.
    • A low-cut side profile with a rounded toe.
    • A wide, generally circular foot opening.
    • A visible, fleecy cuff surrounding the foot opening.
    • A soft, unstructured appearance.

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are foot coverings sold under Belk's private label "NEW DIRECTIONS" brand (Compl. ¶33).

Functionality and Market Context

  • The complaint alleges that the "NEW DIRECTIONS" foot coverings are slippers that are "identical in virtually all relevant respects" to BDI's commercial embodiment of the patented design (Compl. ¶33). The complaint presents a photograph of three pairs of the accused products, which feature holiday-themed surface ornamentation such as snowmen, Santas, and reindeer (Compl. ¶41). This image shows three pairs of slippers purchased from a Belk store that Plaintiff alleges are infringing (Compl. ¶41). The complaint further alleges that Belk's sale of these products is part of a broader business strategy to copy successful products from other vendors for its more profitable private label lines, thereby avoiding design costs and trading on the goodwill of the original product creator (Compl. ¶¶35-37).

IV. Analysis of Infringement Allegations

The complaint provides side-by-side visual comparisons to support its infringement allegations. The complaint includes a composite image comparing patent figures to photographs of an accused product to demonstrate infringement (Compl. ¶42, p. 14).

Claim Element (from Claim 1 as shown in figures) Alleged Infringing Functionality Complaint Citation Patent Citation
The overall left-side elevational view of the slipper The accused product allegedly shares the same low-cut side profile, rounded toe, and visible fleecy cuff as depicted in the patent's side view. ¶42 Fig. 4
The rear elevational view of the slipper The accused product's rear view allegedly matches the shape and prominent fleecy cuff shown in the patent's rear view. ¶42 Fig. 3
The top plan view of the slipper The accused product's top-down view allegedly shows the same overall shape, oval opening, and interior fleece lining as depicted in the patent's top view. ¶42 Fig. 6
  • Identified Points of Contention:
    • Scope Questions: The primary legal test for design patent infringement is whether an "ordinary observer," familiar with the prior art, would be deceived into believing the accused product is the same as the patented design. The central question will be whether the overall visual impression of the accused "NEW DIRECTIONS" slippers is substantially the same as the claimed design.
    • Technical Questions: The accused products feature prominent surface ornamentation (e.g., reindeer faces, snowmen) not present in the patent drawings (Compl. ¶41). A key factual question for the court will be whether these applied patterns are sufficient to create a different overall visual impression for the ordinary observer, or if the underlying shape and configuration of the slipper, which Plaintiff alleges is copied, is the dominant visual feature.

V. Key Claim Terms for Construction

In design patent cases, claim construction focuses on the overall visual appearance of the design as shown in the patent's drawings, rather than on interpreting specific textual terms. The central interpretative issue is what an ordinary observer would perceive as the scope of the claimed ornamental design.

  • The Term: The ornamental design as a whole.
  • Context and Importance: The dispute will turn on the perceived similarity between the accused products and the patented design. Practitioners may focus on whether the claimed design is limited to the specific, unadorned slipper shown, or if it covers the general shape and configuration regardless of surface patterns.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent drawings depict the slipper from multiple angles without any surface patterns, which may suggest the claim is primarily directed to the novel shape and configuration of the article ('183 Patent, Figs. 1-8). The fact that the patent's validity was confirmed on reexamination over prior art could be used to argue that the core shape itself is distinctive and protectable (Compl. ¶13).
    • Evidence for a Narrower Interpretation: The figures consistently show a plain, un-patterned exterior. A party could argue that this clean, unadorned look is an integral feature of the claimed ornamental design. From this perspective, the addition of prominent, colorful graphics on the accused products could be argued to create a substantially different overall visual impression, differentiating it from the claimed design.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement, asserting that Belk had knowledge of the ’183 Patent from a previous lawsuit filed in 2010 (Compl. ¶47). It alleges Belk acted with intent by hiring manufacturers to produce the allegedly infringing slippers and by marketing them to consumers, thereby inducing both direct infringement by the manufacturers and by the end-users (Compl. ¶¶48-49).
  • Willful Infringement: Willfulness is alleged based on Belk’s pre-suit knowledge of the ’183 Patent stemming from the prior litigation between the parties (Compl. ¶43, ¶47). The complaint characterizes Belk's actions as a "blatant violation" of BDI's patent rights and part of a continuous "improper business policy" of copying others' designs (Compl. ¶40, ¶35).

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

  1. A core issue will be one of visual similarity: From the perspective of an ordinary observer, is the overall ornamental design of Belk's "NEW DIRECTIONS" slippers, including their shape, profile, and configuration, substantially the same as the design claimed in the '183 Patent?
  2. A key evidentiary question will be the impact of surface ornamentation: Do the holiday-themed graphics on the accused products create a distinct visual impression that avoids infringement, or are they legally insignificant additions to a product whose fundamental shape and configuration are otherwise the same as the patented design?
  3. Given the alleged history of prior litigation, a dispositive question for damages will be one of willfulness: Did Belk's alleged knowledge of the '183 Patent from the 2010 lawsuit render its subsequent sale of the accused product line an act of willful infringement, potentially exposing it to enhanced damages?