Nike Inc v. Fujian Bestwinn China Industry Co Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Nike, Inc. (Oregon)
  • Defendant: FUJIAN BESTWINN (CHINA) INDUSTRY CO., LTD. a/k/a XIAMEN BESTWINN IMP. & EXP. CO., LTD. (China)
  • Plaintiff’s Counsel: Lewis Roca Rothgerber Christie LLP; Banner & Witcoff, Ltd.
• Case Identification: 2:16-cv-00311, D. Nev., 02/17/2016
• Venue Allegations: Venue is based on allegations that Defendant conducts business in the District of Nevada, has committed acts of infringement in the district by promoting and offering to sell accused products at trade shows in Las Vegas, and is subject to personal jurisdiction in the forum.
• Core Dispute: Plaintiff alleges that Defendant’s athletic-style footwear infringes eighteen of Plaintiff's U.S. design patents covering ornamental designs for shoe uppers and outsoles.
• Technical Context: The dispute is in the athletic and "fast fashion" footwear market, a highly competitive industry where the ornamental design and overall visual appearance of a product are significant drivers of consumer choice and brand identity.
• Key Procedural History: The complaint alleges a multi-year history of pre-suit notice to the Defendant, beginning in August 2013. Allegations include in-person notification at a trade show and four subsequent notice letters from counsel, all of which were allegedly ignored. The complaint also references an August 2014 email from a Bestwinn representative marketing the accused products as "Nike style Flyknit sport shoes."

Case Timeline

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

U.S. Patent No. D636,573 - Shoe Outsole, issued April 26, 2011

The Invention Explained

• Problem Addressed: Design patents protect ornamental appearance rather than function. The patent addresses the need for a new, original, and ornamental design for an article of manufacture, in this case, a shoe outsole (D’573 Patent, CLAIM).
• The Patented Solution: The patent claims the specific visual appearance of a shoe outsole characterized by a segmented pattern of crisscrossing diagonal grooves that form repeating X-shapes. The claimed design, shown in solid lines, covers the forefoot and heel portions, which are separated by an unclaimed bridge area, creating a distinct two-part aesthetic (D’573 Patent, Figs. 1-3, DESCRIPTION).
• Technical Importance: This design provides a unique visual texture and geometric pattern for the bottom of a shoe, an element that contributes to the product's overall aesthetic identity in the marketplace (D’573 Patent, Figs. 1-3).

Key Claims at a Glance

• The patent contains a single claim for "The ornamental design for a shoe outsole, as shown and described" (D’573 Patent, CLAIM).
• The claimed design consists of the visual features depicted in solid lines in the patent's drawings.

U.S. Patent No. D666,405 - Shoe Upper, issued September 4, 2012

The Invention Explained

• Problem Addressed: The patent addresses the need for a new, original, and ornamental design for a shoe upper (D’405 Patent, CLAIM).
• The Patented Solution: The claimed design consists of a specific arrangement of five angled, strap-like elements on the midfoot portion of a shoe's upper. These elements appear to originate from near the sole and angle upwards and forwards, creating a dynamic look that visually integrates with the lacing region (D’405 Patent, Figs. 1-2, DESCRIPTION). The remainder of the shoe is disclaimed via broken lines.
• Technical Importance: The design creates a visual motif suggesting containment and support through the use of strong, dynamic lines, a common theme in performance athletic footwear design intended to convey technical attributes through aesthetic choices (D’405 Patent, Figs. 1-2).

Key Claims at a Glance

• The patent contains a single claim for "The ornamental design for a shoe upper, as shown and described" (D’405 Patent, CLAIM).
• The claimed design consists of the visual features depicted in solid lines in the patent's drawings.

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U.S. Patent No. D666,406 - Shoe Upper, issued September 4, 2012

• Technology Synopsis: Claims the ornamental design for a portion of a shoe upper. The design features a series of five angled, strap-like elements on the midfoot, similar to the ’405 Patent but with a slightly different configuration and appearance (D'406 Patent, Figs. 1-2).
• Asserted Claims: The single claim for "the ornamental design for a shoe upper, as shown and described."
• Accused Features: The upper of Defendant's Model BW713901, which is alleged to be substantially similar to the patented design (Compl. ¶10, p. 6). The complaint provides a side-by-side visual comparison showing the patent figure and the accused shoe (Compl. p. 6).

U.S. Patent No. D673,765 - Shoe Upper, issued January 8, 2013

• Technology Synopsis: Claims the ornamental design for a portion of a shoe upper. The design features a series of horizontal striped bands on the rear heel portion of the upper (D'765 Patent, Figs. 2-3).
• Asserted Claims: The single claim for "the ornamental design for a shoe upper, as shown and described."
• Accused Features: The upper of Defendant's Model BW71389F, which is alleged to be substantially similar to the patented design (Compl. ¶10, p. 6).

U.S. Patent No. D682,523 - Shoe Outsole, issued May 21, 2013

• Technology Synopsis: Claims the ornamental design for a portion of a shoe outsole. The design is comprised of a grid-like pattern of rounded, rectangular pods arranged across the forefoot area (D'523 Patent, Fig. 2).
• Asserted Claims: The single claim for "the ornamental design for a shoe outsole, as shown and described."
• Accused Features: The outsole of Defendant's Model BW71448, which is alleged to be substantially similar to the patented design (Compl. ¶10, p. 10).

U.S. Patent No. D683,119 - Shoe Outsole, issued May 28, 2013

• Technology Synopsis: Claims the ornamental design for a portion of a shoe outsole. The design features several longitudinal recessed channels and a distinct trapezoidal window in the heel area (D'119 Patent, Fig. 2).
• Asserted Claims: The single claim for "the ornamental design for a shoe outsole, as shown and described."
• Accused Features: The outsole of Defendant's Model BW71448, which is alleged to be substantially similar to the patented design (Compl. ¶10, p. 10).

U.S. Patent No. D683,946 - Shoe Upper, issued June 11, 2013

• Technology Synopsis: Claims the ornamental design for a portion of a shoe upper. The design features several small, tab-like loops emerging from a side panel on the upper's midfoot section (D'946 Patent, Figs. 1-2).
• Asserted Claims: The single claim for "the ornamental design for a shoe upper, as shown and described."
• Accused Features: The upper of Defendant's Model 90088, which is alleged to be substantially similar to the patented design (Compl. ¶¶10, 17; p. 7).

U.S. Patent No. D694,501 - Shoe Outsole, issued December 12, 2013

• Technology Synopsis: Claims the ornamental design for a shoe outsole. The design features a field of square-shaped tread elements and a contrasting shaded region in the midfoot (D'501 Patent, Fig. 2).
• Asserted Claims: The single claim for "the ornamental design for a shoe outsole, as shown and described."
• Accused Features: The complaint does not specifically pair this patent with an accused model in its visual evidence table (Compl. pp. 6-12).

U.S. Patent No. D696,849 - Shoe Upper, issued January 7, 2014

• Technology Synopsis: Claims the ornamental design for a portion of a shoe upper. The design consists of three prominent, layered, wing-like elements on the midfoot section of the upper (D'849 Patent, Figs. 1-2).
• Asserted Claims: The single claim for "the ornamental design for a shoe upper, as shown and described."
• Accused Features: The upper of Defendant's Model BW71389H, which is alleged to be substantially similar to the patented design (Compl. ¶10, p. 7).

U.S. Patent No. D696,853 - Shoe Upper, issued January 7, 2014

• Technology Synopsis: Claims the ornamental design for a portion of a shoe upper. The design features a series of parallel strands that appear to form loops for a lacing system, set against a contrasting background panel (D'853 Patent, Fig. 2, Fig. 4).
• Asserted Claims: The single claim for "the ornamental design for a shoe upper, as shown and described."
• Accused Features: The uppers of Defendant's Models BW71392F and 14260, which are alleged to be substantially similar to the patented design (Compl. ¶10, p. 7, p. 12).

U.S. Patent No. D700,423 - Shoe Upper, issued March 4, 2014

• Technology Synopsis: Claims the ornamental design for a portion of a shoe upper. The design consists of a textured, woven-like appearance covering the side panel of the shoe (D'423 Patent, Fig. 2).
• Asserted Claims: The single claim for "the ornamental design for a shoe upper, as shown and described."
• Accused Features: The uppers of Defendant's Models BW71392F and 14260, which are alleged to be substantially similar to the patented design (Compl. ¶10, p. 8, p. 12).

U.S. Patent No. D701,689 - Shoe Upper, issued April 1, 2014

• Technology Synopsis: Claims the ornamental design for a portion of a shoe upper. The design features three overlapping, fin-like elements on the midfoot with a pattern of small perforations (D'689 Patent, Figs. 1-2).
• Asserted Claims: The single claim for "the ornamental design for a shoe upper, as shown and described."
• Accused Features: The upper of Defendant's Model BW71389A, which is alleged to be substantially similar to the patented design (Compl. ¶10, p. 8).

U.S. Patent No. D707,027 - Shoe Upper, issued June 17, 2014

• Technology Synopsis: Claims the ornamental design for a portion of a shoe upper. The design consists of a woven or knitted side panel with integrated lacing loops (D'027 Patent, Figs. 1-2).
• Asserted Claims: The single claim for "the ornamental design for a shoe upper, as shown and described."
• Accused Features: The upper of Defendant's Model BW71390A, which is alleged to be substantially similar to the patented design (Compl. ¶10, p. 8).

U.S. Patent No. D707,028 - Shoe Upper, issued June 17, 2014

• Technology Synopsis: Claims the ornamental design for a portion of a shoe upper. The design features a woven side panel with several angled, strap-like elements integrated into the design (D'028 Patent, Figs. 1-2).
• Asserted Claims: The single claim for "the ornamental design for a shoe upper, as shown and described."
• Accused Features: The upper of Defendant's Model BW71390B, which is alleged to be substantially similar to the patented design (Compl. ¶10, p. 9).

U.S. Patent No. D707,032 - Shoe Upper, issued June 17, 2014

• Technology Synopsis: Claims the ornamental design for a portion of a shoe upper. The design features a woven pattern in the midfoot with thread-like lacing loops emerging from it (D'032 Patent, Fig. 2).
• Asserted Claims: The single claim for "the ornamental design for a shoe upper, as shown and described."
• Accused Features: The uppers of Defendant's Models BW71392 and 14260, which are alleged to be substantially similar to the patented design (Compl. ¶10, p. 9, p. 12).

U.S. Patent No. D707,033 - Shoe Upper, issued June 17, 2014

• Technology Synopsis: Claims the ornamental design for a shoe upper. The design features angled, strap-like elements similar to the ’405 and ’406 Patents, but with a different number and spacing of the elements (D'033 Patent, Figs. 1-2).
• Asserted Claims: The single claim for "the ornamental design for a shoe upper, as shown and described."
• Accused Features: The upper of Defendant's Model BW71390B, which is alleged to be substantially similar to the patented design (Compl. ¶10, p. 9).

U.S. Patent No. D710,579 - Shoe Midsole, issued August 12, 2014

• Technology Synopsis: Claims the ornamental design for a shoe midsole. The design features a distinct wavy or grooved texture along the side of the midsole (D'579 Patent, Figs. 1-2).
• Asserted Claims: The single claim for "the ornamental design for a shoe midsole, as shown and described."
• Accused Features: The midsole of Defendant's Model BW71389N, which is alleged to be substantially similar to the patented design (Compl. ¶10, p. 10).

U.S. Patent No. D746,037 - Shoe Upper, issued December 29, 2015

• Technology Synopsis: Claims the ornamental design for a portion of a shoe upper. The design consists of a crisscrossing lace-like pattern formed by strands emerging from the side of the upper (D'037 Patent, Figs. 1-2).
• Asserted Claims: The single claim for "the ornamental design for a shoe upper, as shown and described."
• Accused Features: The upper of Defendant's Model BW71448, which is alleged to be substantially similar to the patented design (Compl. ¶10, p. 10).

III. The Accused Instrumentality

• Product Identification: The complaint identifies a range of footwear products as the "Infringing Shoes," including models 90088, BW71390, BW713901, BW71389F, BW71389H, BW71392F, BW71389A, BW71390A, BW71390B, BW71392, BW71389N, BW71448, 14149, and 14260 (Compl. ¶¶ 13, 17, 23; Table 4, pp. 6-12).
• Functionality and Market Context: The complaint alleges these are "fast fashion footwear" that Defendant promotes and sells at major trade shows in Las Vegas (Compl. ¶11). The complaint further alleges that the Defendant specifically markets these products as being inspired by NIKE's designs, citing a forwarded email from a Bestwinn representative titled "Nike style Flyknit sport shoes the hottest item at Magic [WSA] Show!" (Compl. ¶20). The visual evidence provided in the complaint depicts athletic-style shoes that incorporate ornamental features NIKE alleges are covered by its design patents (Compl. Table 4, pp. 6-12). For example, a provided image shows Defendant's Model BW71390, a blue and yellow athletic shoe (Compl. p. 6). Another image shows the outsole of Defendant's Model 14149 (Compl. p. 11).

IV. Analysis of Infringement Allegations

D636,573 Infringement Allegations

D666,405 Infringement Allegations

Identified Points of Contention

• Visual Similarity: The central issue for each asserted patent is whether an ordinary observer, familiar with the prior art, would find the accused shoe design to be substantially the same as the claimed design. The court will have to compare the overall visual impression of each accused product with the specific ornamental features shown in the solid lines of each corresponding patent's drawings.
• Scope of Protection: A potential point of dispute may be the scope of the claimed designs. The analysis will require determining the contribution of the claimed ornamental features to the overall design, and whether the accused products appropriate that contribution. Differences in unclaimed features (such as shoe color, logos, or surrounding structures) may be argued by the defendant as sufficient to avoid a finding of substantial similarity in the overall appearance.

V. Key Claim Terms for Construction

In design patent litigation, the claim is defined by the drawings rather than textual language. The single claim in each asserted patent is for "the ornamental design for a [shoe part], as shown and described." As such, there are no textual terms for construction in the manner of a utility patent. The primary legal question is the visual scope of the design as a whole, which is determined by comparing the accused product to the patent's figures from the perspective of an ordinary observer.

VI. Other Allegations

• Indirect Infringement: The complaint's prayer for relief seeks judgment for infringement under 35 U.S.C. § 271(b), which pertains to induced infringement (Compl. p. 15, ¶A). Factual support for this allegation may be based on Defendant's alleged promotion and offers to sell the "Infringing Shoes" through catalogs and at trade shows to third-party distributors and retailers (Compl. ¶¶ 9, 11).
• Willful Infringement: The complaint makes a strong claim for willful infringement. It alleges that NIKE provided Bestwinn with direct knowledge of the infringing nature of its activities on multiple occasions, starting in August 2013 (Compl. ¶¶ 16-22). The allegations detail four separate notice letters sent by counsel and in-person notification, which were purportedly ignored (Compl. ¶¶ 17-19, 21-22). The claim is further supported by an alleged email from a Bestwinn representative actively marketing the products as "Nike style Flyknit sport shoes," which may suggest knowledge of NIKE's products and an intent to copy them (Compl. ¶20).

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

• A primary issue for the court will be one of visual comparison: For each of the eighteen asserted design patents, does the overall ornamental appearance of the corresponding accused Bestwinn shoe create a visual impression that is "substantially the same" as the claimed design in the eyes of an ordinary observer?
• A key evidentiary question will be one of willfulness and intent: Do the facts alleged by NIKE—including multiple ignored notice letters and an email explicitly referencing "Nike style" shoes—demonstrate that Bestwinn knew of or was willfully blind to its alleged infringement, which could justify an award of enhanced damages?
• The case also raises a question of design scope in a crowded field: Given the high volume of footwear designs in the market, a central question will be the scope of protection afforded to each of NIKE’s claimed designs. The analysis will likely focus on the specific novel ornamental aspects of each design and whether the accused products appropriate those novel features.