Eliya Inc v. Skechers USA Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Eliya, Inc. (New York)
  • Defendant: Skechers U.S.A., Inc., and Skechers U.S.A., Inc. II (Delaware)
  • Plaintiff’s Counsel: The Law Offices of Tedd S. Levine, LLC
• Case Identification: 1:19-cv-00861, S.D.N.Y., 01/31/2019
• Venue Allegations: Venue is based on allegations that Skechers conducts substantial business in the Southern District of New York, including operating retail stores, maintaining a website accessible in New York, and making commercial sales to customers in the state.
• Core Dispute: Plaintiff Eliya, Inc. seeks a declaratory judgment that its "Eliya Bow Shoe" product does not infringe two design patents held by Defendant Skechers, and further that at least one of the patents is invalid and unenforceable.
• Technical Context: The dispute centers on the ornamental design of casual footwear, a highly competitive segment of the fashion industry where visual appearance is a primary driver of consumer choice.
• Key Procedural History: The lawsuit was initiated by Eliya after receiving a letter from Skechers' attorneys on January 2, 2019, accusing Eliya of infringing the patents-in-suit. In its complaint, Eliya identifies a "Puma Bow Shoe," allegedly sold since 2015, as prior art that anticipates or renders obvious one of the Skechers patents.

Case Timeline

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

U.S. Design Patent No. D821,724 - "Shoe Upper"

Issued July 3, 2018

The Invention Explained

• Problem Addressed: The implicit problem in design patents is the need for a new, original, and ornamental design for an article of manufacture to distinguish it aesthetically in the marketplace.
• The Patented Solution: The patent claims a specific ornamental design for a shoe upper. The design's primary visual features are a slip-on shoe silhouette with a prominent, tied bow situated over the instep. The patent's description clarifies that the broken lines, such as those depicting the shoe's sole, "form no part of the claimed invention" ('724 Patent, Description). The visual character is defined by the shape, configuration, and placement of the elements shown in solid lines. ('724 Patent, FIG. 1-2).
• Technical Importance: In fashion footwear, unique silhouettes and decorative elements, such as the prominent bow, serve as key visual differentiators that can define a product's style and appeal.

Key Claims at a Glance

• Design patents contain a single claim. The asserted claim is for "The ornamental design for a shoe upper, as shown and described." ('724 Patent, Claim).
• The essential visual elements of the claimed design include:
  • The overall shape and proportions of the shoe upper.
  • A large, tied bow element positioned across the instep.
  • The specific three-dimensional configuration and drape of the bow.
  • A smooth surface texture on the upper.

U.S. Design Patent No. D810,412 - "Shoe Upper"

Issued February 20, 2018

The Invention Explained

• Problem Addressed: Similar to the '724 Patent, the goal is to create a new, original, and ornamental design for a shoe upper.
• The Patented Solution: The '412 Patent claims an ornamental design for a slip-on shoe upper characterized by a combination of distinct surface textures and patterns. The design includes a stippled texture on the toe box, a cross-hatched pattern on the mid-foot and heel, and a flat strap across the instep bearing small, scattered floral-like or star-like markings. ('412 Patent, FIG. 1-3, Description). The description notes that the broken lines showing the shoe's sole and opening are not part of the claimed design. ('412 Patent, Description).
• Technical Importance: The use of multiple, contrasting textures and patterns on a single upper is a design technique to create visual interest and a distinct aesthetic identity.

Key Claims at a Glance

• The asserted claim is for "The ornamental design for a design on shoe upper, as shown and described." ('412 Patent, Claim).
• The essential visual elements of the claimed design include:
  • A combination of contrasting surface textures: a stippled region, a hatched region, and a region with small, repeating marks.
  • A strap element across the instep.
  • The specific arrangement and boundaries of these different textured regions on the shoe upper.

III. The Accused Instrumentality

Product Identification

• The "Eliya Bow Shoe" (Compl. ¶13).

Functionality and Market Context

• The complaint identifies the accused product as a shoe purchased by Eliya for sale in the United States (Compl. ¶13). Visual evidence provided in the complaint shows it to be a women's slip-on sneaker. The complaint includes a photograph of the accused product, which features a woven upper, a large fabric bow over the instep, and a distinctive band of what appear to be rhinestones or a similar glittering material around the base of the upper, where it meets the sole (Compl. p. 6, "The Eliya Bow Shoe"). Eliya and Skechers are alleged to be competitors in the footwear market (Compl. ¶9).

IV. Analysis of Infringement Allegations

As this is a Declaratory Judgment action, the analysis focuses on Plaintiff Eliya's allegations of non-infringement.

'724 Patent Infringement Allegations

Eliya alleges that its shoe does not infringe because it "does not embody the overall effects of the '724 Patent" (Compl. ¶17). The complaint presents a side-by-side visual comparison to support this contention (Compl. p. 7).

'412 Patent Infringement Allegations

Eliya alleges its shoe "does not embody the overall effects of the '412 Patent" (Compl. ¶18) and provides a side-by-side comparison (Compl. p. 8).

Identified Points of Contention

• Invalidity: A primary contention is Eliya's affirmative defense that the '724 Patent is invalid as anticipated or obvious in light of prior art, specifically the "Puma Bow Shoe" allegedly sold two and a half years before the '724 patent was filed (Compl. ¶12, ¶15). The complaint includes a visual comparison of the '724 patent design and the Puma shoe (Compl. p. 7).
• Functionality: Eliya alleges that "The bow design on the ‘724 Patent is functional" (Compl. ¶15). If the bow is deemed primarily functional, it would fall outside the scope of design patent protection, which covers only ornamental, non-functional features.
• Overall Impression: For both patents, the core infringement question will be whether an "ordinary observer," giving the attention a typical purchaser would, would be deceived into purchasing Eliya's shoe believing it to be Skechers'. The court will weigh the similarities (e.g., general concept of a bow on a sneaker for the '724 patent) against the alleged differences (e.g., the rhinestone band on the Eliya shoe, the different surface treatments on the '412 patent).

V. Key Claim Terms for Construction

In design patent cases, the "claim" is the visual design itself. Construction focuses on the scope of the design as a whole rather than discrete text-based terms.

• The Term: "The ornamental design for a shoe upper, as shown and described."
• Context and Importance: The scope of this claim—what is and is not protected—is the central issue. The analysis will depend on how broadly the "overall visual impression" is interpreted and whether specific features are considered ornamental or functional. Practitioners may focus on whether the claim covers the general idea of a shoe with a bow, or if it is limited to the specific execution shown in the drawings.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: Skechers may argue that the core ornamental concept is the combination of a particular sneaker silhouette with a large, instep-spanning bow, and that minor variations do not change the overall appearance that is protected by the '724 patent.
  • Evidence for a Narrower Interpretation: Eliya may argue the claim is limited to the precise visual details depicted in the solid lines of the patent figures. The patent's own description explicitly disclaims subject matter shown in broken lines, such as the sole ('724 Patent, Description), reinforcing that the claim is limited to what is shown. Eliya's allegation that the bow is "functional" (Compl. ¶15) may be used to argue that this key feature should be given little to no weight in the infringement analysis, thereby narrowing the protectable scope of the design.

VI. Other Allegations

• Indirect Infringement: Eliya seeks a declaration that it does not induce or contribute to infringement of the '724 and '412 patents (Compl. ¶23, ¶27). The complaint does not provide a factual basis for these allegations beyond a general denial.
• Willful Infringement: The complaint does not allege willfulness. However, it does state that the lawsuit was precipitated by a demand letter from Skechers dated January 2, 2019, which put Eliya on notice of the patents-in-suit (Compl. ¶14). This fact would be relevant to any future claims of post-suit willfulness by Skechers.

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

The resolution of this declaratory judgment action will likely depend on the court's findings regarding three central questions:

1. A core issue will be one of validity over prior art: Is the ornamental design of the '724 Patent distinct enough from the allegedly pre-existing "Puma Bow Shoe" to be considered novel and non-obvious to a designer of ordinary skill in the art?
2. A second key issue is one of functionality: Can Skechers establish that the bow feature of the '724 Patent is primarily ornamental, or will the court agree with Eliya's assertion that it is functional and therefore ineligible for design patent protection?
3. Finally, the case will present a question of infringement scope: For both patents, are the visual differences between the accused "Eliya Bow Shoe" (e.g., the rhinestone band, surface textures, bow vs. strap) and the patented designs significant enough to create a different "overall visual impression" in the mind of an ordinary observer, thereby avoiding infringement?