DCT
1:22-cv-08862
Skechers USA Inc v. Hermes Intl
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Skechers U.S.A., Inc. (Delaware) & Skechers U.S.A., Inc. II (Virginia) (collectively, "Skechers")
- Defendant: Hermès International (France) & Hermès of Paris, Inc. (New York) (collectively, "Hermès")
- Plaintiff’s Counsel: Alston & Bird LLP; Kleinberg & Lerner, LLP
- Case Identification: 1:22-cv-08862, S.D.N.Y., 10/18/2022
- Venue Allegations: Venue is alleged to be proper because Defendants reside in the district and because a substantial part of the events giving rise to the claims occurred in the district.
- Core Dispute: Plaintiff alleges that Defendant’s Éclair and Envol footwear lines infringe two U.S. design patents covering the ornamental appearance of a shoe's midsole periphery and outsole bottom.
- Technical Context: The dispute is in the field of footwear design, where the ornamental appearance of components like the sole can be a significant market differentiator and source of brand identity.
- Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2020-09-03 | Priority Date for U.S. Patent No. D925,183 |
| 2020-09-03 | Priority Date for U.S. Patent No. D965,263 |
| 2021-07-20 | U.S. Patent No. D925,183 Issues |
| 2022-10-04 | U.S. Patent No. D965,263 Issues |
| 2022-10-18 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. D965,263
- Patent Identification: U.S. Patent No. D965,263, Shoe midsole periphery, issued October 4, 2022.
The Invention Explained
- Problem Addressed: The complaint suggests that footwear companies invest significantly in creating novel and proprietary ornamental designs to establish a competitive advantage and brand identity in the marketplace (Compl. ¶¶ 8-9).
- The Patented Solution: The patent claims the ornamental design for the periphery of a shoe midsole. The design, as depicted in the patent's figures, consists of an undulating, wave-like profile with a series of rounded, bulbous protrusions along the bottom edge, separated by recessed areas (D965,263 Patent, FIGS. 1-3). The patent specifies that portions of the shoe shown in broken lines, such as the shoe upper and parts of the outsole, do not form part of the claimed design (D965,263 Patent, DESCRIPTION).
- Technical Importance: The complaint alleges this design is embodied in its "highly successful SKECHERS GO WALK series featuring the MASSAGE FIT sole" (Compl. ¶9).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is for: "The ornamental design for a shoe midsole periphery, as shown and described" (D965,263 Patent, CLAIM).
- The essential visual elements of the claim are the specific shapes, contours, and overall appearance of the midsole periphery depicted in solid lines in the patent’s seven figures.
U.S. Patent No. D925,183
- Patent Identification: U.S. Patent No. D925,183, Shoe outsole bottom, issued July 20, 2021.
The Invention Explained
- Problem Addressed: As with the ’263 patent, the objective is the creation of a novel ornamental design for a component of footwear (Compl. ¶¶ 8-9).
- The Patented Solution: The patent claims the ornamental design for the bottom of a shoe outsole. The core visual feature is a repeating pattern of wavy, pod-like structures that run across the width of the sole, creating an overall undulating appearance on the shoe's tread surface (’183 Patent, FIG. 1, 5). The patent explicitly disclaims the shoe upper, midsole periphery, and other outsole portions shown in broken lines, limiting the claim to the specific bottom-surface pattern (’183 Patent, DESCRIPTION).
- Technical Importance: This design is also alleged to be part of the Skechers "MASSAGE FIT sole" design language, suggesting it contributes to the product line's market identity (Compl. ¶9).
Key Claims at a Glance
- The single asserted claim is for: "The ornamental design for a shoe outsole bottom, as shown and described" (’183 Patent, CLAIM).
- The essential visual elements are the shapes, arrangement, and surface contours of the outsole bottom shown in solid lines in the patent’s figures.
III. The Accused Instrumentality
Product Identification
The accused products are the Hermès "Éclair" and "Envol" shoe models (Compl. ¶12).
Functionality and Market Context
The complaint identifies the accused products as sneakers sold by Hermès. It alleges that both the Éclair and Envol styles feature "the substantially the same infringing sole" (Compl. ¶13). The complaint includes a photograph showing a side profile of the Hermès Éclair sneaker, which features a prominent, thick sole with a wave-like bottom contour (Compl. p. 4). A comparison image shows the bottom of the Éclair sneaker, depicting a tread pattern composed of transverse elements (Compl. p. 6).
IV. Analysis of Infringement Allegations
The complaint bases its infringement allegations on side-by-side visual comparisons between the patented designs and the accused Hermès shoes, rather than a traditional textual claim chart.
'263 Patent Infringement Allegations
| Claimed Design Feature (from Figures) | Alleged Infringing Feature (from Complaint Visuals) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a shoe midsole periphery, characterized by a wavy, undulating profile with rounded protrusions along the lower edge. | The side profile of the Hermès Éclair sneaker, which is alleged to have a visually similar wavy midsole periphery with bulbous lower contours. A visual comparison is provided between the patent's Figure 2 and a photograph of the accused shoe. | ¶14; p. 6 | D965,263 Patent, FIGS. 1-3 |
'183 Patent Infringement Allegations
| Claimed Design Feature (from Figures) | Alleged Infringing Feature (from Complaint Visuals) | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a shoe outsole bottom, characterized by a pattern of transverse, wavy, pod-like structures. | The bottom of the Hermès Éclair sneaker, which is alleged to have a visually similar outsole pattern. A visual comparison is provided between the patent's Figure 1 and a photograph of the accused shoe's outsole. | ¶15; p. 10 | D925,183 Patent, FIGS. 1, 5 |
Identified Points of Contention
- Scope Questions: The infringement analysis will depend on how an "ordinary observer" perceives the designs. A central question is the effect of the unclaimed features shown in broken lines in the patents (e.g., the shoe upper). The court may need to consider whether the overall visual impression of the accused Hermès shoes, which have distinct uppers and branding (e.g., the "H" logo on the Éclair sneaker (Compl. p. 4)), is substantially similar to the claimed designs when viewed in context.
- Visual Questions: The dispute will focus on the degree of similarity between the specific contours, proportions, and overall appearance of the patented designs and the accused soles. The court will compare the designs to determine if the resemblance is close enough to deceive an ordinary purchaser.
V. Key Claim Terms for Construction
In design patent cases, claim construction focuses on the scope of the design as depicted in the drawings, rather than on textual terms. The critical issue is the interpretation of what is claimed (solid lines) versus what is disclaimed (broken lines).
- The "Term": The scope of "the ornamental design... as shown and described."
- Context and Importance: The determination of infringement hinges entirely on comparing the accused product to the visual elements depicted in solid lines in the patent figures. Practitioners may focus on this issue because the treatment of unclaimed environmental structure (the broken-line portions) can be dispositive. The plaintiff will likely argue that only the solid-line features should be compared, while the defendant may argue that the different context provided by the unclaimed features of its shoe creates a different overall visual impression.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (focus on claimed elements): Both patents contain explicit statements that "The broken lines shown in the drawings represent portions of the shoe... that form no part of the claimed design" (’263 Patent, DESCRIPTION; ’183 Patent, DESCRIPTION). This language supports isolating the claimed sole features for the infringement comparison.
- Evidence for a Narrower Interpretation (consider overall context): A defendant could argue that the claimed design's appearance is inseparable from its context as part of a shoe. Therefore, substantial differences in the unclaimed environment of the accused product (e.g., a knit sock-like upper on the Hermès shoe versus the generic shoe shape shown in the patent) may alter the overall ornamental effect, potentially avoiding infringement.
VI. Other Allegations
- Indirect Infringement: The complaint includes a boilerplate allegation that Hermès is "enabling and/or inducing others to commit such acts" (Compl. ¶11). However, it does not plead specific facts to support the knowledge and intent elements required for induced or contributory infringement.
- Willful Infringement: The complaint alleges that Defendant's infringement "is willful" for both patents (Compl. ¶¶ 18, 23). The complaint does not allege any facts supporting pre-suit knowledge, such as a notice letter from Skechers to Hermès. The '263 patent issued only 14 days before the complaint was filed.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of visual similarity: From the perspective of an ordinary observer in the footwear market, is the overall ornamental appearance of the soles on the accused Hermès Éclair and Envol shoes "substantially the same" as the designs claimed in the ’263 and ’183 patents?
- The case will likely turn on the impact of unclaimed context: To what extent will the court allow the unclaimed features of the accused shoes (such as the distinct uppers, materials, and Hermès branding) to influence the "ordinary observer" analysis, or will the comparison be strictly limited to the sole designs depicted in solid lines in the patents?
- An underlying evidentiary question, not addressed in the complaint, will be the scope of the prior art: The degree of novelty of the patented "wavy" sole designs within the broader field of footwear design will inform the scope of their protection and how similar an accused design must be to infringe.