DCT
2:24-cv-09423
Skechers USA Inc v. Top Glory Trading Group Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II (Delaware & Virginia)
- Defendant: Top Glory Trading Group Inc., DP Dream Pairs Inc., and Miracle Miles Group, Inc. (New Jersey & China)
- Plaintiff’s Counsel: Greenberg Traurig LLP; Irell & Manella LLP
- Case Identification: 2:24-cv-09423, D.N.J., 09/24/2024
- Venue Allegations: Venue is alleged to be proper in the District of New Jersey because Defendants Top Glory and DP Dream Pairs are incorporated in the state. For Defendant Miracle Miles, venue is based on alleged business transactions, offers for sale, and operation of retail stores within the district.
- Core Dispute: Plaintiff alleges that Defendants’ Bruno Marc brand "Men's Slip-On Canvas Walking Loafer" infringes a patent related to shoe heel counter technology designed for easier, hands-free entry.
- Technical Context: The technology at issue concerns the structural design of a shoe's heel counter, aiming to improve the user experience by allowing a foot to be slipped in without collapsing the heel, a common problem in athletic and casual footwear.
- Key Procedural History: No prior litigation, licensing history, or other procedural events are mentioned in the complaint.
Case Timeline
| Date | Event |
|---|---|
| 2021-10-15 | U.S. Patent No. 12,011,064 Priority Date |
| 2024-06-18 | U.S. Patent No. 12,011,064 Issued |
| 2024-09-24 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 12,011,064 - "Footwear Counter for Easier Entry and Removal," issued June 18, 2024
The Invention Explained
- Problem Addressed: The patent addresses the inconvenience of donning footwear like sports shoes, where a user "must often use one or both hands or operate a shoe horn separate from the shoe to properly insert the foot... and secure the quarter from collapsing under the heel" (’064 Patent, col. 1:23-27).
- The Patented Solution: The invention is a specifically engineered heel cup that is designed to be both flexible and resilient. It features a molded structure with distinct upper, mid, and lower portions. The upper portion is designed to have a "first configuration in its native state" and be "capable of distorting into a second configuration under a load of a user's foot" where it is lowered, allowing the foot to slide in easily. Crucially, it is also "capable of returning to the first configuration after the load of the user's foot is removed" (’064 Patent, col. 1:34-46). This functionality is achieved through a specific geometry, including defined curvatures and relative thicknesses, that facilitates a controlled deformation and recovery (’064 Patent, col. 1:34-53).
- Technical Importance: This technology aims to provide the structural support of a traditional shoe counter while adding a "slip-in" functionality, eliminating the need for hands or shoe horns and thereby improving convenience for the user (Compl. ¶3).
Key Claims at a Glance
- The complaint asserts infringement of at least independent Claim 1 (Compl. ¶24).
- Independent Claim 1 requires:
- An article of footwear with an upper and sole structure defining a shoe opening.
- A heel cup attached to the upper.
- The heel cup is "uniformly molded" with an upper, midportion, and lower portion, where the upper portion has a smaller mediolateral length than the midportion.
- The midportion and lower portion form a "concave structure" to receive the heel.
- The heel cup has a "rearward facing upper concavity" with a first amplitude and a "forward facing lower concavity" with a second amplitude, where the second amplitude is greater than the first.
- The upper portion can distort from a first configuration to a second, lowered configuration under the load of a user's foot and is capable of returning to the first configuration after the load is removed.
- The heel cup has an upper, mid-central, and lower central portion with first, second, and third thicknesses, respectively, where the first thickness is less than the second and third thicknesses.
- The complaint does not explicitly reserve the right to assert dependent claims, but the infringement allegation references "one or more claims" of the patent (Compl. ¶23).
III. The Accused Instrumentality
Product Identification
- The accused product is the "Men's Slip-On Canvas Walking Loafer," sold under the Bruno Marc brand, which is allegedly owned by Defendant DP Dream Pairs (Compl. ¶9, ¶24).
Functionality and Market Context
- The complaint alleges that the accused loafer incorporates a heel counter design that provides the same slip-in functionality as the patented invention (Compl. ¶5). The core of the infringement allegation rests on a physical teardown and analysis of the accused shoe's heel cup component. The complaint presents a series of photographs of a disassembled heel cup from the accused product, alleging it contains the structural and functional features recited in the '064 Patent's claims (Compl. ¶31-59). For example, the complaint provides a cross-section photograph of the accused shoe's heel to show a "Heel Cup Attached to Upper" (Compl. p. 9). The complaint frames the accused product as a direct competitor that followed Skechers' success in the marketplace with its patented slip-in technology (Compl. ¶5).
IV. Analysis of Infringement Allegations
’064 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a heel cup uniformly molded with an upper portion, midportion, and lower portion where in the upper portion has a smaller mediolateral length than the midportion, | The accused loafer contains a heel cup component that is allegedly uniformly molded and has an upper portion, midportion, and lower portion, with the upper portion having a smaller mediolateral length. This is supported by photographs of the disassembled heel cup (Compl. p. 10-11). | ¶32-34 | col. 1:34-37 |
| and the midportion and lower portion form a concave structure configured to receive the heel; | The midportion and lower portion of the accused heel cup allegedly form a concavity to receive the user's heel, as shown in a cross-section image (Compl. p. 12). | ¶35-36 | col. 1:37-39 |
| the heel cup having a rearward facing upper concavity with a first amplitude;...the heel cup having a forward facing lower concavity with a second amplitude;...the second amplitude being greater than the first amplitude; | The accused heel cup allegedly has the claimed dual-concavity structure with relatively sized amplitudes, illustrated with annotated cross-section photos (Compl. p. 12-15). | ¶37-41 | col. 5:40-49 |
| the upper portion having a first configuration;...the upper portion capable of distorting into a second configuration under a load of a user's foot when the user is donning the footwear; wherein in the second configuration at least part of the upper portion is lowered relative to the first configuration; | The complaint alleges the upper portion of the accused shoe's heel deforms when a user's foot is inserted, lowering its position relative to its resting state. This is demonstrated with a sequence of photographs showing the shoe at rest and during foot entry (Compl. p. 15-17). | ¶42-47 | col. 1:40-46 |
| the upper portion capable of returning to the first configuration after the load of the user's foot is removed; | The complaint alleges that once the user's foot is in the shoe, the upper portion of the heel returns to its original position. | ¶48-49 | col. 1:45-46 |
| the heel cup having an upper central portion, a mid-central portion, and lower central portion;...the mid-central portion having a first thickness;...the upper central portion having a second thickness;...the lower central portion having a third thickness; and...the first thickness is less than the second thickness and the third thickness. | The complaint alleges the accused heel cup has central portions with specific relative thicknesses, providing photographs of digital caliper measurements of the disassembled component purporting to show the mid-central portion is thinner than the upper and lower central portions (Compl. p. 18-22). | ¶50-59 | col. 1:49-53 |
Identified Points of Contention
- Structural Questions: The complaint's evidence relies on a disassembled component. A central question will be whether this component functions as claimed when assembled into the final shoe product. Further, the claim requires the heel cup to be "uniformly molded" with three portions; a dispute may arise over whether the accused component, which appears to be a single piece of plastic, meets this structural limitation as defined by the patent.
- Geometric Questions: The complaint uses annotated photographs to illustrate the claimed "concavity" and "amplitude" limitations. A technical dispute may arise over whether the curvature of the accused product quantitatively meets the patent's geometric requirements, particularly the relative amplitudes, which may require expert analysis beyond simple visual inspection.
- Functional Questions: While the complaint provides photographs showing the heel area deforming during entry (Compl. p. 17), the extent to which this demonstrates the specific claimed functionality—"at least part of the upper portion is lowered relative to the first configuration"—may be contested.
V. Key Claim Terms for Construction
The Term: "uniformly molded"
- Context and Importance: This term appears in Claim 1 and describes the fundamental structure of the heel cup. Its construction is critical because infringement depends on whether the accused product's heel component is considered "uniformly molded" with the claimed three portions. Practitioners may focus on whether this requires a single, monolithic piece formed in one process or if it could encompass components formed and then joined together in a uniform manner.
- Intrinsic Evidence for Interpretation:
- Evidence for a Narrower Interpretation: The specification states, "a heel cup may be uniformly molded with an upper portion, midportion, and lower portion" (’064 Patent, col. 1:34-36). This phrasing suggests the three portions are integral to a single molded item, not separate pieces joined later.
- Evidence for a Broader Interpretation: The patent does not explicitly define "uniformly molded" or disclaim other manufacturing methods. An argument could be made that the term describes the resulting uniform nature of the final component, rather than restricting the process to a single-shot molding operation.
The Term: "amplitude"
- Context and Importance: Claim 1 requires a specific relationship between the "first amplitude" of an upper concavity and the "second amplitude" of a lower concavity. The infringement determination for this element will depend on how this geometric property is measured on the accused product.
- Intrinsic Evidence for Interpretation:
- Evidence for a Narrower Interpretation: Figure 6A is a schematic diagram that explicitly labels "A_U" (upper amplitude) and "A_L" (lower amplitude) as the horizontal depth of the curves relative to a vertical line (’064 Patent, FIG. 6A). The description states, "The amplitude (A_U) and width (W_U) of the arc of the upper portion...may be different than the amplitude (A_L) and width (W_L) of the lower arc" (’064 Patent, col. 5:44-48). This suggests a specific, measurable geometric definition.
- Evidence for a Broader Interpretation: The term "amplitude" is used relatively in the claim ("the second amplitude being greater than the first amplitude"). A party could argue that as long as this relative relationship holds true based on a reasonable measurement methodology, the limitation is met, even if the absolute values or measurement technique are not identical to the schematic in FIG. 6A.
VI. Other Allegations
- Willful Infringement: The complaint seeks treble damages for willful infringement, but bases this allegation on infringement occurring "at least since the filing of this complaint" (Compl. ¶23.4). This is a standard allegation of post-suit willfulness based on the notice provided by the lawsuit itself, rather than an allegation of pre-suit knowledge of the patent.
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to center on a direct, product-to-patent comparison, with the plaintiff providing extensive photographic evidence from a teardown of the accused shoe. The key questions for the court will likely be:
- A core issue will be one of structural interpretation: Does the accused "Men's Slip-On Canvas Walking Loafer" contain a heel cup that is "uniformly molded" with distinct upper, mid, and lower portions, as that term is construed from the patent's specification?
- A key evidentiary question will be one of geometric and functional proof: Can the plaintiff demonstrate, likely through expert testimony, that the physical structure of the accused product exhibits the specific geometric relationships claimed—such as the relative "amplitudes" of its curvatures and the relative "thicknesses" of its central portions—and that it deforms and recovers in the precise manner recited in Claim 1?
- A third question will relate to assembled functionality: Does the evidence from the disassembled heel cup component accurately reflect its structure and function when it is integrated into the final, assembled shoe, or does the assembly process alter its properties in a way that is material to the infringement analysis?