DCT

1:09-cv-00135

ASICS America Corp v. Akeva LLC

Key Events

Complaint

I. Executive Summary and Procedural Information

Parties & Counsel:
- Plaintiff: ASICS America Corporation (California)
- Defendant: Akeva LLC. (North Carolina)
- Plaintiff’s Counsel: Brooks, Pierce, McLendon, Humphrey & Leonard, L.L.P.
Case Identification: 1:09-cv-00135, M.D.N.C., 02/21/2009
Venue Allegations: Venue is alleged to be proper in the Middle District of North Carolina because the Defendant, Akeva LLC., is a North Carolina corporation with its principal place of business within the district.
Core Dispute: Plaintiff seeks a declaratory judgment that its athletic shoes do not infringe ten patents owned by Defendant related to athletic shoe sole technology, and further alleges that the patents are invalid.
Technical Context: The technology at issue concerns structures within athletic shoe soles, particularly in the heel area, designed to improve cushioning, spring, durability, and versatility.
Key Procedural History: The complaint states this action arises from a controversy initiated on or about December 4, 2008, when Defendant’s counsel contacted Plaintiff, alleged infringement of the patents-in-suit, threatened litigation, and provided a draft complaint. Subsequent settlement discussions were unsuccessful, leading Plaintiff to file this declaratory judgment action.

Case Timeline

Date	Event
1993-08-17	Earliest Priority Date for all Patents-in-Suit
1996-10-01	U.S. Patent No. 5,560,126 Issued
2005-11-22	U.S. Patent No. 6,966,130 Issued
2005-11-29	U.S. Patent No. 6,968,635 Issued
2006-02-14	U.S. Patent No. 6,996,924 Issued
2006-07-04	U.S. Patent No. 7,069,671 Issued
2006-08-01	U.S. Patent No. 7,082,700 Issued
2006-08-15	U.S. Patent No. 7,089,689 Issued
2006-10-03	U.S. Patent No. 7,114,269 Issued
2007-01-02	U.S. Patent No. 7,155,843 Issued
2008-06-03	U.S. Patent No. 7,380,350 Issued
2008-12-04	Akeva counsel allegedly contacted ASICS regarding infringement
2008-12-05	Akeva allegedly provided ASICS with a draft complaint
2009-02-20	ASICS' final agreement not to sue Akeva allegedly expired
2009-02-21	Complaint for Declaratory Judgment Filed

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

U.S. Patent No. 5,560,126 - "Athletic Shoe With Improved Sole," issued October 1, 1996

The Invention Explained

Problem Addressed: The patent’s background describes the combined problems of outsole wear and midsole compression in athletic shoes, particularly in the heel area, which shortens the effective life of the shoe and offers no way for users to customize cushioning or spring characteristics (’126 Patent, col. 1:22–55, col. 2:66–col. 3:2).
The Patented Solution: The invention proposes a shoe with a detachable, rotatable, and/or replaceable rear sole, allowing a user to relocate worn sections or substitute soles with different performance characteristics (’126 Patent, col. 5:41–46). It also discloses a flexible plate, such as a "graphite insert," positioned between the heel support and the rear sole to provide additional spring and reduce midsole compression (’126 Patent, Abstract; Fig. 22).
Technical Importance: This approach sought to extend the usable life of athletic shoes and introduce a level of user customization for performance, addressing key points of failure and user preference in a modular way (’126 Patent, col. 7:50–col. 8:6).

Key Claims at a Glance

The complaint seeks a declaratory judgment of non-infringement of "any valid and/or enforceable claim" of the ’126 patent (Compl. ¶20). Independent claim 1 is representative of the flexible plate technology.
Claim 1 Elements:
- A shoe comprising: an upper having a heel region;
- a rear sole secured below the heel region of the upper; and
- a flexible plate having upper and lower surfaces and supported between at least a portion of the rear sole and at least a portion of the heel region of the upper,
- peripheral edges of the plate being restrained from movement in a direction substantially perpendicular to a major axis of the shoe so that an interior portion of the plate is deflectable relative to the peripheral edges.

U.S. Patent No. 6,966,130 - "Plate For Athletic Shoe," issued November 22, 2005

The Invention Explained

Problem Addressed: The specification addresses the same problems of midsole compression, outsole wear, and lack of customization in conventional athletic shoes, noting these issues are "especially severe in the heel area" (’130 Patent, col. 2:1-4).
The Patented Solution: The invention is a shoe that incorporates a plate capable of being deflected, where the plate includes at least one integral rib on its lower surface (’130 Patent, Abstract). A portion of this rib is exposed to and visible from outside the shoe, providing a visual indicator of the technology while functioning as a spring mechanism (’130 Patent, Abstract; col. 17:59-col. 18:2).
Technical Importance: This design provides a mechanism for adding spring to a user's gait and mitigating midsole compression by using a durable, flexible plate with reinforcing ribs as a core component of the sole structure (’130 Patent, col. 4:3-7).

Key Claims at a Glance

The complaint seeks a declaratory judgment of non-infringement of "any valid and/or enforceable claim" of the ’130 patent (Compl. ¶23). Independent claim 1 is representative.
Claim 1 Elements:
- A shoe comprising: a bottom; a major longitudinal axis; an upper; a sole including an outsole and a midsole;
- a plate having an upper surface, a lower surface, an interior portion and peripheral portions, with the plate positioned over a void and exposed to it;
- at least one opening in the shoe in air communication with the void to expose the interior portion of the plate from outside the shoe; and
- at least one rib integral with at least a portion of the lower surface of the plate, with at least a portion of the rib being exposed to and visible from outside the shoe.

U.S. Patent No. 6,968,635 - "Athletic Shoe Bottom," issued November 29, 2005

Technology Synopsis: This patent relates to an athletic shoe bottom that includes a deflectable plate, an integral arch bridge, and a rear sole with a specific ground-engaging surface geometry (’635 Patent, Abstract). The invention aims to provide support, cushioning, and durability through this integrated sole structure.
Asserted Claims: The complaint alleges non-infringement of at least one claim (Compl. ¶26).
Accused Features: Certain athletic shoes sold by ASICS (Compl. ¶11, 16).

U.S. Patent No. 6,996,924 - "Rear Sole Structure For Athletic Shoe," issued February 14, 2006

Technology Synopsis: This patent describes a shoe structure that includes a deflectable plate and an integral arch bridge (’924 Patent, Abstract). The structure also features an interior sidewall on the outsole layer that is visible from beneath the shoe, connecting the upper and lower surfaces of the outsole.
Asserted Claims: The complaint alleges non-infringement of at least one claim (Compl. ¶29).
Accused Features: Certain athletic shoes sold by ASICS (Compl. ¶11, 16).

U.S. Patent No. 7,069,671 - "Arch Bridge For Athletic Shoe," issued July 4, 2006

Technology Synopsis: This patent discloses an athletic shoe with a deflectable plate positioned over a void, combined with an integral arch bridge (’671 Patent, Abstract). A key feature is that the lower surface of the arch bridge is visible and its peripheral region is approximately planar with the lower surface of the plate.
Asserted Claims: The complaint alleges non-infringement of at least one claim (Compl. ¶32).
Accused Features: Certain athletic shoes sold by ASICS (Compl. ¶11, 16).

U.S. Patent No. 7,082,700 - "Athletic Shoe With Inclined Wall Configuration," issued August 1, 2006

Technology Synopsis: The patent describes a shoe with an upwardly inclined wall that defines an aperture through the bottom of the shoe beneath a plate, allowing the plate to be in air communication with the outside (’700 Patent, Abstract). The configuration is intended to provide cushioning and spring.
Asserted Claims: The complaint alleges non-infringement of at least one claim (Compl. ¶35).
Accused Features: Certain athletic shoes sold by ASICS (Compl. ¶11, 16).

U.S. Patent No. 7,089,689 - "Athletic Shoe With Inclined Wall Configuration And Non-Ground-Engaging Member," issued August 15, 2006

Technology Synopsis: This patent is directed to a shoe with an inclined wall defining an aperture, similar to the ’700 patent, but adds a "non-ground-engaging member" that extends across and contacts the upper perimeter of the inclined wall (’689 Patent, Abstract).
Asserted Claims: The complaint alleges non-infringement of at least one claim (Compl. ¶38).
Accused Features: Certain athletic shoes sold by ASICS (Compl. ¶11, 16).

U.S. Patent No. 7,114,269 - "Athletic Shoe With Improved Sole," issued October 3, 2006

Technology Synopsis: The invention describes a shoe with a foot support region, a sole, and a flexible member positioned between them (’269 Patent, Abstract). The key concept is that a peripheral portion of the flexible member is restrained from movement relative to the interior portion, allowing the interior to deflect and provide spring.
Asserted Claims: The complaint alleges non-infringement of at least one claim (Compl. ¶41).
Accused Features: Certain athletic shoes sold by ASICS (Compl. ¶11, 16).

U.S. Patent No. 7,155,843 - "Athletic Shoe With Visible Arch Bridge," issued January 2, 2007

Technology Synopsis: The patent discloses an athletic shoe that includes an arch bridge that is visible from beneath the shoe (’843 Patent, Abstract). This design makes the technical feature a visible element of the shoe's appearance while providing structural support.
Asserted Claims: The complaint alleges non-infringement of at least one claim (Compl. ¶44).
Accused Features: Certain athletic shoes sold by ASICS (Compl. ¶11, 16).

U.S. Patent No. 7,380,350 - "Athletic Shoe With Bottom Opening," issued June 3, 2008

Technology Synopsis: This patent describes a shoe with a plate and at least one opening extending from the bottom of the shoe into the midsole, providing air communication with the interior of the upper (’350 Patent, Abstract). The opening can extend through the plate itself in certain embodiments.
Asserted Claims: The complaint alleges non-infringement of at least one claim (Compl. ¶47).
Accused Features: Certain athletic shoes sold by ASICS (Compl. ¶11, 16).

III. The Accused Instrumentality

Product Identification

The complaint identifies the products at issue as "certain athletic shoes sold by ASICS" (Compl. ¶11).

Functionality and Market Context

The complaint does not specify any particular models of ASICS shoes or describe their technical functionality. It alleges that ASICS is "a leading supplier of athletic shoes and other related products" (Compl. ¶7). The controversy is based on Akeva's allegations that these unspecified shoes infringe the Akeva patents (Compl. ¶11).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint, seeking a declaratory judgment of non-infringement, does not contain specific infringement allegations against ASICS' products. Therefore, a claim chart summary cannot be constructed from the provided complaint. As the complaint does not articulate a theory of infringement, potential points of contention cannot be identified from the pleading.

V. Key Claim Terms for Construction

"flexible plate" (from ’126 Patent, claim 1)

Context and Importance: This term is central to the claimed invention in the ’126 Patent and appears in various forms throughout the patent family. Its construction will be critical to determining whether modern, integrated shoe sole components, which may not be discrete "plates," fall within the scope of the claims.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the plate as being made of "graphite or other stiff, but flexible, material" (’126 Patent, col. 12:31-33), which may support a construction covering a range of materials and forms that perform the claimed function.
- Evidence for a Narrower Interpretation: The preferred embodiments consistently depict the "flexible plate" as a distinct, removable, circular or gear-shaped "graphite insert" (e.g., '126 Patent, Figs. 22, 25, 26, 28), which may suggest a narrower construction limited to such separable components.

"rib integral with at least a portion of the lower surface of the plate" (from ’130 Patent, claim 1)

Context and Importance: The "integral rib" is a key structural limitation of the ’130 Patent's invention. The dispute may focus on what kind of structural element on the bottom of a shoe's internal plate or moderator constitutes a "rib" and whether it is "integral" in the manner required by the claim.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "rib" is not explicitly defined, which could allow it to be interpreted functionally to cover various types of reinforcing structures that extend from the plate's lower surface.
- Evidence for a Narrower Interpretation: The patent figures illustrate the ribs as distinct, spoke-like structures radiating from a central hub (e.g., '130 Patent, Fig. 8, item 542) or as concentric circles. The term "integral" may be construed to require a one-piece, molded construction, potentially excluding assemblies where reinforcing elements are later bonded to a plate.

VI. Other Allegations

Invalidity

In Count XI, ASICS seeks a declaratory judgment that "one or more of the claims of the Akeva Patents are invalid for failure to meet one or more of the statutory requirements for patentability set forth in 35 U.S.C. §§ 101 et seq." (Compl. ¶50). The complaint does not specify the grounds for invalidity (e.g., anticipation, obviousness) or identify any prior art.

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

A threshold legal question will be one of justiciability: did Akeva’s alleged pre-suit communications, including the provision of a draft infringement complaint, create an "actual controversy" sufficient to support ASICS' declaratory judgment action, or were they merely preliminary licensing negotiations?
A core technical issue will be one of claim scope: can terms rooted in the patents’ 1990s-era embodiments, such as "flexible plate" and "detachable rear sole," be construed broadly enough to read on the potentially more complex and integrated sole structures of modern athletic shoes?
A primary procedural question will be one of case management: given the assertion of ten patents, the court may require the patentee, Akeva, to narrow its infringement contentions to a representative set of patents and claims to make the litigation manageable, a process that will itself shape the focus of the dispute.