DCT
2:25-cv-00176
Cole Haan LLC v. Top Glory Trading Group INC.
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Cole Haan LLC (Delaware)
- Defendant: Top Glory Trading Group Inc. and DP Dream Pairs Inc. (New Jersey)
- Plaintiff’s Counsel: Ansa Assuncao LLP; Thompson Coburn LLP
- Case Identification: 2:25-cv-00176, D.N.J., 01/30/2025
- Venue Allegations: Plaintiff alleges venue is proper in the District of New Jersey because Defendants are incorporated in, reside in, and maintain a regular and established place of business in the district, where they have also allegedly committed acts of infringement.
- Core Dispute: Plaintiff alleges that Defendants’ "Bruno Marc" brand footwear infringes three utility patents related to the construction of knit shoe uppers and one design patent for an ornamental shoe midsole design.
- Technical Context: The technology at issue involves methods for manufacturing footwear uppers from a single, continuous piece of knitted material, which allows for the integration of traditional aesthetic features, such as wingtip patterns, into modern, lightweight shoe designs.
- Key Procedural History: The complaint alleges that Plaintiff previously contacted Defendants regarding infringement of the ’511 and ’163 patents by other shoe models, which may be used to support the allegation that Defendants had actual knowledge of at least two of the patents-in-suit prior to this litigation.
Case Timeline
| Date | Event |
|---|---|
| 2015-10-13 | ’969 Patent Priority Date |
| 2016-07-08 | ’511, ’163, and ’262 Patents Priority Date |
| 2016-10-18 | U.S. Patent No. D768,969 Issues |
| 2019-06-25 | U.S. Patent No. 10,327,511 Issues |
| 2019-10-15 | U.S. Patent No. 10,443,163 Issues |
| 2021-06-22 | U.S. Patent No. 11,041,262 Issues |
| 2025-01-30 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,327,511 - Shoe Having Knit Wingtip Upper
- Patent Identification: U.S. Patent No. 10,327,511, titled "Shoe Having Knit Wingtip Upper," issued on June 25, 2019 (the "’511 Patent").
The Invention Explained
- Problem Addressed: The patent addresses the challenge of creating footwear with complex, traditional design elements using modern, efficient manufacturing processes ('511 Patent, col. 1:16-17). Specifically, it aims to replicate the aesthetic of a classic multi-piece leather "wingtip" shoe in a comfortable, single-piece knit upper.
- The Patented Solution: The invention is a shoe with a knit upper constructed from a single "unitary one-piece" knitted element created on a knitting machine ('511 Patent, col. 1:26-30). This process seamlessly integrates various anatomical regions of the shoe (e.g., heel, toe, midfoot) and, critically, knits a "wingtip pattern" directly into the fabric ('511 Patent, col. 1:49-50). The pattern is defined by "lines of broguing," which are curved lines of holes knitted into the element to mimic the decorative perforations found on traditional dress shoes ('511 Patent, col. 4:30-36; Fig. 5).
- Technical Importance: This manufacturing technique combines the aesthetic of classic footwear with the comfort, breathability, and reduced assembly cost associated with modern knit shoe construction.
Key Claims at a Glance
- The complaint asserts independent claims 1 and 21 (Compl. ¶39).
- Independent Claim 1 requires, among other elements:
- A shoe with a knit upper and a secured sole.
- The knit upper having a "knitted element" formed of a "unitary one-piece construction" on a knitting machine.
- The knitted element comprising various specified regions (heel, midfoot, metatarsal, ball, toe).
- The regions being "seamlessly knitted" together during the process.
- The knitted element including a "wingtip pattern" comprising medial and lateral "lines of broguing."
- The lines of broguing comprising a "wing-shaped curved line of holes" with specific forward and rearward extending portions.
- The rearward portions of the medial and lateral lines of broguing converging toward each other.
- The complaint reserves the right to assert other claims (Compl. ¶39 n.4).
U.S. Patent No. 10,443,163 - Shoe Having Knit Wingtip Upper
- Patent Identification: U.S. Patent No. 10,443,163, titled "Shoe Having Knit Wingtip Upper," issued on October 15, 2019 (the "’163 Patent").
The Invention Explained
- Problem Addressed: Similar to the ’511 Patent, this patent addresses the creation of complex patterns in knit footwear, but it focuses on achieving this through the use of different knit textures rather than just perforations.
- The Patented Solution: The invention describes a unitary one-piece knit upper where the wingtip pattern is defined by a "boundary line" created between two different types of knit structure ('163 Patent, col. 8:5-10). The patent specifies a "first area of a first type of knit structure" and a "second area of a second type of knit structure," where the boundary where they meet is "coincident and coextensive" and forms the wing-shaped pattern ('163 Patent, col. 8:11-17; Fig. 5).
- Technical Importance: This approach allows designers to create visual and textural contrast to form patterns, providing an alternative or complementary method to using perforations (broguing) and potentially enabling different zones of support, flexibility, or breathability within the single knit element.
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶62).
- Independent Claim 1 requires, among other elements:
- A shoe with a knit upper and a secured sole.
- The knit upper having a "knitted element" of a "unitary one-piece construction."
- The knitted element including a "wingtip pattern."
- The element comprising a "first area of a first type of knit structure" and a "second area of a second type of knit structure," with the two types being different.
- The boundaries of these areas being "coincident and coextensive" to define a "boundary line."
- The wingtip pattern comprising this boundary line, which has a specific wing-shaped geometry.
- The complaint reserves the right to assert other claims (Compl. ¶62 n.5).
U.S. Patent No. 11,041,262 - Shoe Having Knit Wingtip Upper
- Patent Identification: U.S. Patent No. 11,041,262, titled "Shoe Having Knit Wingtip Upper," issued June 22, 2021 (the "’262 Patent").
- Technology Synopsis: This patent claims a method of manufacturing an article of footwear. The claimed method comprises the steps of knitting a unitary one-piece upper element that includes distinct anatomical regions, a first area of a "jersey stitch knit," and a second area of a "pointelle stitch knit" ('262 Patent, col. 8:1-5). These two knit areas define a boundary line with an adjacent "line of broguing," and the method includes steps for seamlessly knitting the regions together and attaching the sole to the knit upper ('262 Patent, col. 8:10-25).
- Asserted Claims: Independent claim 1 (Compl. ¶74).
- Accused Features: Plaintiff alleges that the manufacturing processes used to create the "MaxFlex SuiteCraft+ Men's Smart Casual Knit Oxford Shoe" and the "KnitFlex SmartCraft- Men's Lightweight Mesh Casual Oxfords" infringe the claimed method (Compl. ¶¶74, 83).
U.S. Design Patent No. D768,969 - Shoe Midsole
- Patent Identification: U.S. Design Patent No. D768,969, titled "Shoe Midsole," issued October 18, 2016 (the "’969 Patent").
- Technology Synopsis: This patent protects the ornamental design for a shoe midsole, not its functional or structural attributes. The claimed design, as depicted in the figures, consists of the visual appearance of a midsole featuring a series of pronounced, parallel horizontal grooves along its side profile and a particular tread pattern on the bottom surface ('969 Patent, Figs. 1-4). The shoe upper, shown in broken lines, is for illustrative purposes only and is not part of the claimed design.
- Asserted Claims: The single claim for the ornamental design as shown and described (Compl. ¶¶89-90).
- Accused Features: The complaint alleges that the overall ornamental appearance of the midsoles on the "MaxFlex SuiteCraft Men's Casual Wingtip Dress Sneakers," "MaxFlex SuiteCraft- Men's Business Casual Oxford Sneakers," and "MaxFlex SuiteCraft+ Men's Smart Casual Knit Oxford Shoes" is substantially the same as the patented design (Compl. ¶89).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are five models of men's footwear sold under the "Bruno Marc" brand: "MaxFlex SuiteCraft Men's Casual Wingtip Dress Sneakers"; "MaxFlex SuiteCraft- Men's Business Casual Oxford Sneakers"; "MaxFlex SuiteCraft+ Men's Smart Casual Knit Oxford Shoes"; "KnitFlex Breeze+ Men's Mesh Wingtip Oxford Sneakers"; and "KnitFlex SmartCraft- Men's Lightweight Mesh Casual Oxfords" (Compl. ¶5).
Functionality and Market Context
- The complaint characterizes the Accused Products as footwear that copies Plaintiff's patented designs (Compl. ¶5). The products are alleged to be sold and offered for sale in the United States through Defendants' direct-to-consumer websites and third-party online retailers such as Amazon (Compl. ¶¶24-25). Photographs in the complaint depict shoes with knit uppers featuring wingtip-style patterns and soles with horizontal grooves (Compl. pp. 3-4). The complaint presents a side-by-side comparison of figures from the '969 Patent with a photograph of the accused "MaxFlex SuiteCraft Men's Casual Wingtip Dress Sneakers" to illustrate alleged design similarity (Compl. p. 26).
IV. Analysis of Infringement Allegations
’511 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a knit upper | The accused shoes each have a knit upper. An image with a "Knit upper" label identifies this feature on an accused shoe (Compl. p. 10). | ¶41 | col. 7:42 |
| the knitted element being formed of a unitary one-piece construction during a knitting process on a knitting machine | The knit upper of the accused shoes is alleged to be a unitary one-piece construction comprising all the claimed regions. An annotated photograph shows various regions as part of a single "knitted element" (Compl. p. 12). | ¶43 | col. 7:44-46 |
| the knitted element including a wingtip pattern... comprising a medial line of broguing and a lateral line of broguing | The accused shoes are alleged to feature a wingtip pattern composed of medial and lateral lines of perforations. An overhead photograph of an accused shoe includes labels pointing to the "Medial line of broguing" and "Lateral line of broguing" (Compl. p. 14). | ¶46 | col. 8:7-12 |
| the rearwardly extending central broguing portion of the medial line of broguing converging toward the rearwardly extending central broguing portion of the lateral line of broguing | The complaint alleges the wingtip patterns on the accused shoes include converging lines of broguing as recited in the claim. | ¶46 | col. 8:23-26 |
- Identified Points of Contention:
- Scope Questions: A potential dispute may arise over the term "unitary one-piece construction." Based on pre-suit correspondence mentioned in the complaint, Defendants may argue that their shoe uppers are not formed from a single piece if, for example, a tongue or other elements are attached in separate manufacturing steps (Compl. ¶34).
- Technical Questions: The infringement analysis may turn on whether the accused products' wingtip patterns meet the specific geometric limitations of the claim. A key question for the court will be whether the "lines of broguing" on the accused shoes possess the claimed "wing-shaped curved line of holes" and "converging" central portions, or if they differ in ways that place them outside the claim scope.
’163 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| the knitted element comprising a first area of a first type of knit structure and a second area of a second type of knit structure, the second type of knit structure being different from the first type of knit structure | The accused shoes are alleged to have a knitted element comprising two different types of knit structure. An annotated photograph points to a "First knit structure" and a "Second knit structure" on an accused product (Compl. p. 20). | ¶67 | col. 8:5-9 |
| the rear boundary of the first area and the forward boundary of the second area being coincident and coextensive with each other and defining a boundary line between the first and second areas | The complaint alleges that where the two knit structures meet in the accused products, they form a boundary line. | ¶67 | col. 8:11-15 |
| the wingtip pattern comprising the boundary line | The boundary line formed by the two different knit structures is alleged to create the wingtip pattern on the accused shoes. | ¶67 | col. 8:15-16 |
- Identified Points of Contention:
- Scope Questions: The term "different" as it applies to the two "type[s] of knit structure" may become a central point of claim construction. The question will be what degree or kind of difference is required to meet this limitation (e.g., a different stitch type, yarn type, or simply knit density).
- Technical Questions: A factual question for the court will be whether the accused products actually possess two distinct types of knit structure that form a boundary line defining the wingtip pattern. The complaint's visual evidence suggests a textural difference, but it does not provide technical detail on the specific knit structures employed in the accused shoes (Compl. p. 20).
V. Key Claim Terms for Construction
The Term: "unitary one-piece construction" (asserted in '511, '163, and '262 Patents)
- Context and Importance: This term is fundamental to the patents' description of an efficient manufacturing process. Its construction is critical because Defendants, in prior correspondence, allegedly denied infringement based on the absence of this feature in a different shoe (Compl. ¶34), suggesting it will be a contested element in this case. The dispute will likely focus on whether a "knitted element" can still be considered a "unitary one-piece construction" if other components, such as a tongue or reinforcements, are attached to it after the primary knitting process.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the "knitted element" as being formed "during a knitting process on a knitting machine" ('511 Patent, col. 3:54-56). Parties may argue this language means the core body of the upper is the "element," and subsequent attachment of minor parts does not negate its "unitary" nature as it came off the machine.
- Evidence for a Narrower Interpretation: The patent figures depict a separate tongue (22) secured to the knitted element (20) ('511 Patent, Fig. 2). A defendant could argue that if the final "knit upper" (14) includes separately attached pieces, the entire construction is not "unitary," even if a large portion of it is.
The Term: "wingtip pattern" (asserted in '511 and '163 Patents)
- Context and Importance: The specific definition of this term is central to infringement. The '511 Patent defines it by the geometry of "lines of broguing," while the '163 Patent defines it via a "boundary line" between knit structures. Practitioners may focus on this term because the infringement analysis will depend entirely on whether the accused products' patterns map onto these precise, text-based definitions in the claims.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's title and summary refer broadly to a "Shoe Having Knit Wingtip Upper," which could support an argument that the term should be understood to encompass the general, well-known aesthetic of a wingtip shoe ('511 Patent, Title; col. 1:49-50).
- Evidence for a Narrower Interpretation: The claims themselves provide a highly detailed and restrictive definition. For instance, Claim 1 of the '511 Patent requires not just a pattern, but one comprising a "wing-shaped curved line of holes" with specific "medial side," "lateral side," and "central" portions that "converge" in a particular manner ('511 Patent, col. 8:12-26). This language may support a narrow construction that excludes designs deviating from this exact geometry.
VI. Other Allegations
- Willful Infringement: The complaint alleges that Defendants' infringement was and continues to be willful (Compl. ¶¶36-37). This allegation is based on two primary assertions: first, that Defendants had actual knowledge of at least the '511 and '163 patents as a result of prior correspondence from Plaintiff regarding different allegedly infringing shoes (Compl. ¶31); and second, that Defendants had constructive knowledge from Plaintiff's patent marking practices and the alleged "nearly identical" nature of the accused products to Plaintiff's designs (Compl. ¶¶21, 30).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "unitary one-piece construction," central to the asserted utility patents, be construed to cover an upper assembled from a primary knitted element and other, separately attached components? The outcome of this claim construction dispute may be dispositive for a significant portion of the case.
- A second central issue will be one of evidentiary proof for willfulness: will the pre-suit notice provided for "other infringing shoes" be sufficient to establish that Defendants had the requisite knowledge and intent for willful infringement with respect to the specific Accused Products in this lawsuit?
- For the design patent claim, the case will turn on the application of the ordinary observer test: are the ornamental features of the accused midsoles, particularly the grooved sidewall and tread pattern, "substantially the same" as the design claimed in the '969 patent, creating a visual impression that would deceive an ordinary purchaser? The side-by-side visual comparisons presented in the complaint will be the primary evidence for this inquiry (Compl. pp. 26-32).