5:18-cv-00597
Buyers Direct Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Buyer's Direct Inc. (North Carolina)
- Defendant: Dick's Sporting Goods, Inc. (Delaware/Pennsylvania); Hibbett Sporting Goods, Inc. (Delaware/Alabama); Academy Ltd. (Texas); Implus Footcare, LLC (Delaware/North Carolina)
- Plaintiff’s Counsel: Ellis & Winters LLP; Oblon, McClelland, Maier & Neustadt, L.L.P.
- Case Identification: 5:18-cv-00597, E.D.N.C., 03/21/2019
- Venue Allegations: Plaintiff alleges venue is proper because Defendants have committed acts of patent infringement, maintain regular and established places of business, and are subject to personal jurisdiction within the Eastern District of North Carolina.
- Core Dispute: Plaintiff alleges that Defendants' slipper-sock products infringe its design patent and related trade dress for soft, slipper-style foot coverings.
- Technical Context: The dispute concerns the ornamental design of consumer footwear in the apparel market, where distinctive appearance can be a significant driver of commercial success.
- Key Procedural History: The complaint notes that the asserted design patent, U.S. D598,183, was the subject of an ex parte reexamination, which concluded with the U.S. Patent and Trademark Office confirming the patentability of the design. This prior validation may be raised by the Plaintiff to underscore the strength of the patent.
Case Timeline
| Date | Event |
|---|---|
| 2009-01-22 | U.S. Design Patent No. D598,183 Application Filing Date |
| 2009-08-18 | U.S. Design Patent No. D598,183 Issue Date |
| 2014-09-24 | U.S. Design Patent No. D598,183 Reexamination Certificate Issued |
| 2017-05-21 | Alleged Start of Infringing Design Discussions (approx. "late Spring 2017") |
| 2017-09-21 | Alleged Start of Infringing Product Production (approx. "Fall of 2017") |
| 2018-05-01 | Plaintiff Purchases Accused "SOFSOLE FIRESIDE" Product from Hibbett's |
| 2018-11-01 | Plaintiff Purchases Accused "COZY CABIN" Product from Dick's Sporting Goods |
| 2019-02-01 | Plaintiff Purchases Accused "SOFSOLE FIRESIDE" Product from Academy |
| 2019-03-21 | Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D598,183 - Slipper
The Invention Explained
- Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture rather than its functional utility. The ’183 Patent does not describe a technical problem but instead presents a new, original, and ornamental design for a slipper.
- The Patented Solution: The patent claims "the ornamental design for a slipper, as shown and described" (’183 Patent, CLAIM). The design, depicted across eight figures, consists of a low-cut, soft-sided foot covering with a generally rounded toe, a flat bottom, and a prominent, textured cuff surrounding the foot opening that appears to be fleece or a similar material (’183 Patent, FIG. 1, 3). The drawings show the design as a whole, with solid lines indicating the claimed ornamental features.
- Technical Importance: The complaint alleges that the "distinctive and unique design" has been a driver of "significant commercial success" and "public recognition" for its "snoozies!®" product line (Compl. ¶¶ 22, 25).
Key Claims at a Glance
- The patent asserts a single claim covering the entire ornamental design.
- The essential visual elements of the claimed design, as depicted in the patent's figures, include:
- The overall low-cut, sock-like slipper shape.
- A prominent, textured cuff lining the foot opening.
- A wide, rounded toe box.
- A generally soft, unstructured upper portion.
III. The Accused Instrumentality
Product Identification
The accused products are foot coverings sold under the brand names "SOFSOLE FIRESIDE" and "COZY CABIN" (Compl. ¶¶ 33, 41).
Functionality and Market Context
The accused products are described as "cozy slipper socks" marketed and sold by defendants Implus, Dick's Sporting Goods, Hibbett, and Academy (Compl. ¶¶ 33-36, 40-41). The complaint alleges that these products are "identical in virtually all relevant respects" to the Plaintiff's own "snoozies!®" foot coverings, which embody the patented design, and are sold through directly competing retail channels (Compl. ¶¶ 40, 91). The complaint provides a photo of a tag from an accused "SOFSOLE FIRESIDE" product identifying Defendant Implus as the source (Compl. p. 11).
IV. Analysis of Infringement Allegations
D598,183 Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a slipper, as shown and described. | The complaint alleges that the "SOFSOLE FIRESIDE" and "COZY CABIN" foot coverings create the same overall visual impression as the design claimed in the '183 Patent. It supports this by presenting side-by-side comparisons of the accused products with figures from the patent, alleging a substantial similarity in the low-profile shape, rounded toe, and prominent cuff at the opening. A photographic comparison shows an accused "COZY CABIN" product next to Figures 3, 4, and 6 of the patent to demonstrate similarity from rear, side, and top perspectives. | ¶¶ 51, 54, 60, 62, 67, 69; p. 19 | col. 1:1-2; FIG. 1-8 |
Identified Points of Contention
- Scope Questions: The infringement analysis will turn on whether an ordinary observer would find the overall ornamental appearance of the accused products to be substantially the same as the design claimed in the ’183 Patent.
- Technical Questions: A potential issue for the court is how to weigh the impact of surface ornamentation on the accused products (e.g., the "Nordic Stripe" or penguin patterns shown in photographs) against the unornamented design shown in the patent's figures. The question will be whether these surface patterns are sufficient to create a different overall visual impression, or if the underlying shape and configuration, which appear similar, are dominant enough to support a finding of infringement. The complaint presents several photographic comparisons of different accused products against the patent drawings to argue for infringement despite varying surface patterns (Compl. pp. 22, 25).
V. Key Claim Terms for Construction
In design patent litigation, the "claim" is defined by the drawings rather than textual limitations. Therefore, formal claim construction of specific terms is generally not performed. The central analysis, as described in Section IV, is a comparison of the overall ornamental appearance of the accused product to the design claimed in the patent's figures.
VI. Other Allegations
Indirect Infringement
The complaint alleges inducement against Defendant DSG (Compl. ¶¶ 79-83). The claim is based on allegations that DSG, with knowledge of the ’183 Patent, advertises the accused products with images of people wearing them, thereby encouraging an infringing use by consumers (Compl. ¶81). The complaint provides a supporting image from DSG's website showing a person wearing the product (Compl. p. 28).
Willful Infringement
Willfulness is alleged based on pre-suit knowledge of the ’183 Patent (Compl. ¶¶ 58, 65, 72, 78). The complaint alleges that Defendant Implus gained knowledge during discussions in September 2016 regarding a potential acquisition of Plaintiff's business and subsequently chose to copy the design (Compl. ¶¶ 39, 56). It further alleges Defendant DSG had notice for "multiple years" based on prior offers by Plaintiff to supply its products for resale (Compl. ¶55).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of visual identity: will an ordinary observer, comparing the accused "COZY CABIN" and "SOFSOLE FIRESIDE" products to the ’183 Patent's drawings, find the overall ornamental designs to be substantially the same, even though the accused products feature surface patterns not shown in the patent?
- A key question for damages will be one of intent: does the complaint's narrative of pre-suit business discussions between Plaintiff and Defendants Implus and DSG provide sufficient evidence to support a finding of willful infringement, which would expose Defendants to the risk of enhanced damages?
- A foundational question for the case will involve the overlap of intellectual property rights: how will the court and jury be guided to distinguish between the scope of protection afforded by the ’183 design patent (which protects the specific ornamental design shown) and the asserted "snoozies!®" trade dress (which protects the overall look and feel as a source identifier)?