DCT
2:12-cv-00191
Nike Inc v. Qiloo Intl Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: NIKE, Inc. (Oregon) and Converse Inc. (Massachusetts)
- Defendant: QiLoo International Limited (China)
- Plaintiff’s Counsel: Lewis and Roca LLP; Banner & Witcoff, Ltd.
- Case Identification: 2:12-cv-00191, D. Nev., 02/08/2012
- Venue Allegations: Venue is alleged to be proper in the District of Nevada because Defendant conducts business, has committed acts of infringement, and is subject to personal jurisdiction in the district, specifically by promoting, distributing, and offering to sell infringing products at the twice-annual World Shoe Association (“WSA”) trade shows in Las Vegas.
- Core Dispute: Plaintiffs allege that Defendant’s footwear products infringe a large portfolio of NIKE and Converse design patents and registered trademarks.
- Technical Context: The dispute centers on the ornamental design of athletic and fashion footwear, a highly competitive market where visual appearance and brand identity are critical commercial assets.
- Key Procedural History: The First Amended Complaint alleges a lengthy history of pre-suit notice, detailing seven separate infringement notice letters hand-delivered or sent to Defendant between February 2007 and July 2011. The complaint also notes that one day prior to its filing, the court granted Plaintiffs an Emergency Ex Parte Temporary Restraining Order and Seizure Order, under which additional infringing products were identified at a Las Vegas trade show.
Case Timeline
| Date | Event |
|---|---|
| 1994-12-07 | Priority Date for U.S. Design Patent No. D361,884 |
| 1995-09-05 | Issue Date for U.S. Design Patent No. D361,884 |
| 2000-03-27 | Priority Date for U.S. Design Patent No. D429,877 |
| 2000-08-29 | Issue Date for U.S. Design Patent No. D429,877 |
| 2002-01-16 | Priority Date for U.S. Design Patent No. D462,830 |
| 2002-09-17 | Issue Date for U.S. Design Patent No. D462,830 |
| 2003-02-26 | Priority Date for U.S. Design Patent No. D475,523 |
| 2003-06-10 | Issue Date for U.S. Design Patent No. D475,523 |
| 2003-11-24 | Priority Date for U.S. Design Patent No. D494,353 |
| 2004-03-22 | Priority Date for U.S. Design Patent No. D499,247 |
| 2004-05-21 | Priority Date for U.S. Design Patent Nos. D500,585 & D500,917 |
| 2004-08-17 | Issue Date for U.S. Design Patent No. D494,353 |
| 2004-12-07 | Issue Date for U.S. Design Patent No. D499,247 |
| 2005-01-11 | Issue Date for U.S. Design Patent No. D500,585 |
| 2005-01-18 | Issue Date for U.S. Design Patent No. D500,917 |
| 2005-05-04 | Priority Date for U.S. Design Patent No. D523,618 |
| 2005-05-13 | Priority Date for U.S. Design Patent No. D524,529 |
| 2005-08-31 | Priority Date for U.S. Design Patent No. D524,028 |
| 2006-04-26 | Priority Date for U.S. Design Patent No. D532,600 |
| 2006-06-27 | Issue Date for U.S. Design Patent No. D523,618 |
| 2006-07-04 | Issue Date for U.S. Design Patent No. D524,028 |
| 2006-07-11 | Issue Date for U.S. Design Patent No. D524,529 |
| 2006-09-28 | Priority Date for U.S. Design Patent No. D555,332 |
| 2006-11-28 | Issue Date for U.S. Design Patent No. D532,600 |
| 2006-12-20 | Priority Date for U.S. Design Patent No. D579,186 |
| 2006-12-29 | Priority Date for U.S. Design Patent No. D547,541 |
| 2007-01-24 | Priority Date for U.S. Design Patent No. D546,541 |
| 2007-02-02 | Plaintiff delivers first infringement notice to Defendant (Compl. ¶14) |
| 2007-07-17 | Issue Date for U.S. Design Patent No. D546,541 |
| 2007-07-31 | Issue Date for U.S. Design Patent No. D547,541 |
| 2007-08-01 | Accused products appear in Defendant’s catalogs at WSA show (approx. date) (Compl. p. 7) |
| 2007-09-12 | Priority Date for U.S. Design Patent No. D575,046 |
| 2007-11-20 | Issue Date for U.S. Design Patent No. D555,332 |
| 2008-04-28 | Priority Date for U.S. Design Patent Nos. D573,338 & D573,339 |
| 2008-05-30 | Priority Date for U.S. Design Patent Nos. D580,636 & D580,646 |
| 2008-06-12 | Priority Date for U.S. Design Patent No. D578,294 |
| 2008-07-22 | Issue Date for U.S. Design Patent Nos. D573,338 & D573,339 |
| 2008-07-30 | Plaintiff delivers second infringement notice to Defendant (Compl. ¶15) |
| 2008-08-19 | Issue Date for U.S. Design Patent No. D575,046 |
| 2008-10-14 | Issue Date for U.S. Design Patent No. D578,294 |
| 2008-10-16 | Priority Date for U.S. Design Patent No. D586,548 |
| 2008-10-28 | Issue Date for U.S. Design Patent No. D579,186 |
| 2008-11-18 | Issue Date for U.S. Design Patent Nos. D580,636 & D580,646 |
| 2009-02-17 | Issue Date for U.S. Design Patent No. D586,548 |
| 2009-08-01 | Plaintiff delivers third infringement notice to Defendant (Compl. ¶16) |
| 2010-02-03 | Plaintiff delivers fourth infringement notice to Defendant (Compl. ¶17) |
| 2010-08-11 | Plaintiff delivers fifth infringement notice to Defendant (Compl. ¶18) |
| 2011-02-09 | Plaintiff delivers sixth infringement notice to Defendant (Compl. ¶19) |
| 2011-05-03 | Priority Date for U.S. Design Patent Nos. D641,968 & D642,369 |
| 2011-07-26 | Issue Date for U.S. Design Patent No. D641,968 |
| 2011-07-28 | Plaintiff delivers seventh infringement notice to Defendant (Compl. ¶20) |
| 2011-08-02 | Issue Date for U.S. Design Patent No. D642,369 |
| 2012-02-07 | Court grants Emergency Ex Parte TRO and Seizure Order (Compl. ¶23) |
| 2012-02-08 | First Amended Complaint filed (Compl. p. 1) |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D429,877 - Portion of a Shoe Sole
Issued August 29, 2000
The Invention Explained
As this is a design patent, it does not solve a technical problem but rather protects a unique ornamental appearance.
- The Patented Solution: The patent claims the ornamental design for a specific portion of a shoe sole, namely the heel area (D429,877 Patent, Title). The design consists of a series of rounded, pod-like protrusions extending from the rear of the sole, creating a distinct visual texture and shape (D429,877 Patent, FIG. 1-5). The remainder of the shoe is shown in broken lines, indicating it is for illustrative purposes only and does not form part of the claimed design (D429,877 Patent, Description).
- Technical Importance: The design reflects an aesthetic trend in athletic footwear that emphasizes visible cushioning structures, a visual language heavily associated with NIKE's products from that era.
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a portion of a shoe sole, as shown and described."
- The essential visual elements of this design are the specific arrangement, shape, and contour of the pod-like structures on the heel portion of the sole, as depicted in the patent's five drawing sheets.
U.S. Design Patent No. D462,830 - Portion of a Shoe
Issued September 17, 2002
The Invention Explained
This patent protects the ornamental appearance of a portion of a shoe, again focused on the sole.
- The Patented Solution: The claimed design is for a portion of the shoe located at the rear of the sole (D462,830 Patent, Title). The design features several distinct, separated pods integrated into the heel, with a particular stippled texture shown on the visible surfaces (D462,830 Patent, FIG. 1-4). The boundary of the claimed design is defined by the solid lines in the figures, with the broken lines representing the unclaimed shoe environment (D462,830 Patent, Description).
- Technical Importance: This design continues the aesthetic of externally visible, articulated sole components, intended to convey concepts of performance and cushioning technology through visual form.
Key Claims at a Glance
- The patent contains a single claim for "The ornamental design for a portion of a shoe, as shown and described."
- Key visual features include the shape and placement of the heel pods and the stippled surface texture, as shown in the patent's four figures.
U.S. Design Patent No. D475,523 - Portion of a Shoe Upper
Issued June 10, 2003
- Technology Synopsis: This patent protects the ornamental design for a portion of a shoe upper. The design consists of a series of wavy, rib-like elements extending along the side of the shoe, creating a sense of layered construction and motion.
- Asserted Claims: The single claim is for "The ornamental design for a portion of a shoe upper, as shown and described."
- Accused Features: The complaint alleges that the design of the QiLoo QL-21810 shoe is substantially the same as the claimed design (’523 Patent, FIG. 1-5; Compl. p. 7, Table 3).
U.S. Design Patent No. D555,332 - Double Upper Athleisure Shoe
Issued November 20, 2007
- Technology Synopsis: This patent protects the overall ornamental design of a high-top "athleisure" shoe. The design is characterized by a "double upper" construction, giving the appearance of one shoe layered within another, particularly visible at the eyelet and collar regions.
- Asserted Claims: The single claim is for "The ornamental design for a double upper athleisure shoe, as shown and described."
- Accused Features: The complaint alleges that the QiLoo QL-24715 shoe incorporates a design that is substantially the same as the patented design (’332 Patent, FIG. 1-6; Compl. p. 9, Table 3).
U.S. Design Patent No. D586,548 - Shoe Upper
Issued February 17, 2009
- Technology Synopsis: This patent protects the ornamental design for a portion of a high-top athletic shoe upper. The design features a distinctive pattern of circular perforations on the side panel and a specific strap configuration at the ankle.
- Asserted Claims: The single claim is for "The ornamental design for a shoe upper, as shown and described."
- Accused Features: The complaint alleges that the QiLoo QL-26294 shoe features a design substantially the same as that claimed in the patent (’548 Patent, FIG. 1-3; Compl. p. 9, Table 3).
III. The Accused Instrumentality
Product Identification
The accused products are numerous models of footwear manufactured, promoted, and sold by Defendant QiLoo, collectively referred to as the "Infringing Shoes" (Compl. ¶11). Specific accused model numbers include QL-21810, QL-21533, QL-24715, and QL-26294, among many others (Compl. ¶6, pp. 7-9).
Functionality and Market Context
The complaint alleges that QiLoo promoted, distributed, offered for sale, and sold these shoes within the United States, including at the major WSA trade show in Las Vegas (Compl. ¶¶11-12). The complaint includes images of the accused shoes, allegedly taken from QiLoo's product catalogs, to demonstrate their appearance (Compl. ¶6, pp. 7-9). The complaint alleges these shoes have designs that are "substantially the same" as those protected by the asserted patents (Compl. ¶11). The complaint provides a side-by-side visual comparison showing the patented design for the D555,332 patent and the accused QL-24715 shoe (Compl. p. 9, Table 3).
IV. Analysis of Infringement Allegations
The complaint alleges infringement of numerous design patents. The core of the allegation is that the accused shoes are so visually similar to the patented designs that an ordinary observer would be deceived.
D429,877 Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a portion of a shoe sole, as shown and described. | The accused QiLoo Model QL-21810 shoe incorporates a heel sole portion with rounded, pod-like protrusions that are alleged to be visually identical to the claimed design. | ¶12; p. 7 | D429,877 Patent, FIG. 1-5 |
D462,830 Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a portion of a shoe, as shown and described. | The accused QiLoo Model QL-21533 shoe features a heel sole portion with separated pods and surface texturing alleged to be substantially the same as the claimed design. | ¶12; p. 7 | D462,830 Patent, FIG. 1-4 |
Identified Points of Contention
- Scope Questions: A central question for the court will be the scope of each design patent. The patents claim only the "portion" of the shoe shown in solid lines, with the rest of the shoe disclaimed in broken lines. The infringement analysis must focus only on the claimed portion, but the overall appearance of the accused shoe, including unclaimed elements, may influence the "ordinary observer." The question is whether the visual impression of the claimed portion on the accused shoe is substantially the same as the patented design.
- Design Questions: The dispositive legal test for design patent infringement is the "ordinary observer" test. The primary question is whether an ordinary observer, familiar with the prior art of shoe design, would be deceived into believing the accused QiLoo shoes are the same as the patented NIKE designs. While the complaint's side-by-side photographic comparisons suggest strong visual similarities, a defense would likely focus on any minor differences in proportion, curvature, or detail to argue that the overall visual effects are different. The complaint's visual evidence, such as the comparison of the D494,353 patent to the QL-21193 shoe, will be central to this analysis (Compl. p. 8, Table 3).
V. Key Claim Terms for Construction
Unlike utility patents, claim construction for design patents rarely involves defining verbal terms; the claim is understood through its visual representations in the drawings. The key issue is not the definition of a word, but the scope of the visual design itself.
- The Term: "The ornamental design for a [portion of a shoe/sole/upper] as shown and described."
- Context and Importance: The scope of a design patent is defined by what is shown in solid versus broken lines in the drawings. This distinction is critical because the infringement analysis must compare the accused product only to the claimed features (solid lines), not the unclaimed environment (broken lines). Practitioners may focus on this distinction to argue for a narrow scope of protection limited to the exact visual representation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A plaintiff may argue that the design patent protects the overall visual impression created by the claimed features, and that minor variations in the accused product do not defeat infringement if the overall aesthetic is the same.
- Evidence for a Narrower Interpretation: The patent documents for the asserted designs explicitly state that "The broken line showing...is for illustrative purposes only and forms no part of the claimed design" (e.g., D429,877 Patent, Description). A defendant would argue this language strictly limits the claim to the precise shapes and configurations shown in solid lines, and any deviation in an accused product creates a different overall design.
VI. Other Allegations
Indirect Infringement
The complaint includes a claim for induced infringement, alleging that Defendant "has been and still is inducing others to infringe the NIKE Design Patents" (Compl. ¶27). The factual basis appears to be QiLoo's alleged sale and distribution of the Infringing Shoes to third parties for subsequent sale in the U.S.
Willful Infringement
The complaint makes a strong allegation of willful infringement (Compl. ¶22, ¶28). The basis is an extensive, documented history of seven separate notice letters sent to QiLoo between 2007 and 2011, identifying specific patents and accused shoe models (Compl. ¶¶14-20). The complaint alleges that QiLoo "ignored Plaintiffs' repeated warnings" and continued its infringing conduct, which, if proven, would support a finding of willfulness and potential for enhanced damages (Compl. ¶21).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of visual similarity: For each asserted patent, would an ordinary observer, familiar with the prior art, find the ornamental design of the corresponding accused QiLoo shoe to be substantially the same as the claimed design? The side-by-side comparisons provided in the complaint will be the primary evidence for this fact-intensive inquiry.
- A key question for damages will be willfulness: Can Plaintiffs prove that Defendant's alleged infringement persisted despite a multi-year history of receiving specific, documented notice of infringement? A finding of willfulness could expose Defendant to enhanced damages and attorney fees.
- The case will also involve a granular scope analysis: As the patents claim only specific "portions" of shoes, the court will need to determine, on a product-by-product basis, whether the accused features fall within the precise visual scope of what is claimed in solid lines in each patent, or if differences are sufficient to create a distinct overall visual impression.