DCT
1:24-cv-05336
Skechers USA Inc v. LL Bean Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Skechers U.S.A., Inc. (Delaware) and Skechers U.S.A., Inc. II (Virginia)
- Defendant: L. L. Bean, Inc. (Maine)
- Plaintiff’s Counsel: Alston & Bird; Kleinberg & Lerner, LLP
- Case Identification: 1:24-cv-05336, S.D.N.Y., 07/15/2024
- Venue Allegations: Venue is alleged to be proper because L. L. Bean transacts business in the Southern District of New York, offers the accused products for sale in the district through its website, and maintains a regular and established place of business in Yonkers, New York, as well as other locations throughout the state.
- Core Dispute: Plaintiff alleges that Defendant’s Freeport shoe line infringes two design patents that protect the ornamental appearance of a shoe’s heel component.
- Technical Context: The dispute centers on the ornamental design features in the competitive lifestyle and casual footwear market, where visual appearance is a key driver of consumer appeal.
- Key Procedural History: The complaint notes that U.S. Patent No. D994,312 is a divisional of the application that resulted in U.S. Patent No. D992,888. This shared prosecution history suggests the designs are closely related variations on a single inventive concept. No other procedural events are mentioned in the complaint.
Case Timeline
| Date | Event |
|---|---|
| 2022-05-31 | Priority Date for ’888 and ’312 Patents |
| 2023-07-25 | ’888 Patent Issue Date |
| 2023-08-08 | ’312 Patent Issue Date |
| 2024-07-15 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D992,888
- Patent Identification: U.S. Design Patent No. D992,888 S, "Shoe Upper Component," issued July 25, 2023.
The Invention Explained
- Problem Addressed: The complaint asserts a need for footwear designs that are "unique and eye-catching" to achieve broad consumer appeal in the lifestyle footwear market (Compl. ¶1, ¶3). The problem is one of aesthetic differentiation.
- The Patented Solution: The patent claims the ornamental design for a "shoe upper component," specifically the heel section. The design is defined by the solid lines in the patent's figures, which depict a distinct visual appearance characterized by "graceful, sweeping, gently rolling lines and slopes" (Compl. ¶3; ’888 Patent, FIG. 1-9). The broken lines in the figures show the rest of the shoe for environmental context but are not part of the claimed design, focusing the legal protection on the specific shape and contour of the heel and collar area (’888 Patent, Description).
- Technical Importance: The complaint alleges that shoe styles embodying these patented designs, referred to as the "Heel Cup," have sold millions of pairs and were "instantly successful" (Compl. ¶3, ¶13).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is: "The ornamental design for a shoe upper component, as shown and described" (’888 Patent, Claim).
- The scope of the claim is defined by the patent's drawings. The essential visual elements shown in solid lines include:
- The profile and curvature of the rear heel counter.
- The shape of the shoe's collar, particularly the raised and flared portion at the top of the heel.
- The specific contours and transitions between the surfaces of the heel component.
U.S. Design Patent No. D994,312
- Patent Identification: U.S. Design Patent No. D994,312 S, "Shoe Upper Component," issued August 8, 2023.
The Invention Explained
- Problem Addressed: As with the parent ’888 Patent, the design addresses the need for aesthetically unique and appealing footwear (Compl. ¶3).
- The Patented Solution: The ’312 Patent claims a closely related ornamental design for a shoe upper component. The overall form is similar to the ’888 Patent, but the drawings may show subtle differences in proportion or contour. Notably, the description states that "dot-dash broken lines in the figures define the bounds of the claimed design," a specific convention for delineating the protected visual features (’312 Patent, Description). The cross-sectional view in FIG. 9, which features cross-hatching, also helps define the claimed three-dimensional shape (’312 Patent, FIG. 9).
- Technical Importance: The complaint groups this patent with the ’888 Patent as part of the commercially successful "Heel Cup" designs (Compl. ¶3, ¶13).
Key Claims at a Glance
- The single asserted claim is: "The ornamental design for a shoe upper component, as shown and described" (’312 Patent, Claim).
- The visual elements are largely consistent with the ’888 Patent, defined by the solid lines and bounded by the dot-dash lines. The claim protects the overall visual impression created by the combination of these features as depicted in the patent's figures.
III. The Accused Instrumentality
- Product Identification: The "L. L. Bean Freeport Shoe" (Compl. ¶4).
- Functionality and Market Context: The complaint alleges that the accused product is a shoe whose heel design is the same as the patented Skechers "Heel Cup" designs (Compl. ¶4). The complaint provides a side-by-side visual comparison showing the heel portion of a teal-colored L. L. Bean Freeport Shoe next to a figure from the ’888 Patent (Compl. p. 4). A second comparison shows the same accused shoe next to a cross-sectional figure from the ’312 Patent (Compl. p. 5). Plaintiff alleges that L. L. Bean only began selling the accused shoe after Skechers had incurred the risk and expense of developing and popularizing the patented design, suggesting copying of a proven-successful aesthetic (Compl. ¶4).
IV. Analysis of Infringement Allegations
'888 Patent Infringement Allegations
| Claim Element (from the single claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a shoe upper component, as shown and described. | The L. L. Bean Freeport Shoe allegedly embodies the overall ornamental design claimed in the ’888 Patent. A side-by-side image compares the profile of the accused shoe’s heel with FIG. 3 of the patent, highlighting the allegedly identical sweeping lines and contours of the heel and collar. | ¶19; p. 4 | ’888 Patent, Description; FIG. 3 |
'312 Patent Infringement Allegations
| Claim Element (from the single claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a shoe upper component, as shown and described. | The complaint alleges the L. L. Bean Freeport Shoe embodies the design claimed in the ’312 Patent. This is supported by a side-by-side comparison of a photo of the accused shoe’s heel with the cross-sectional view of FIG. 9 from the patent, suggesting a match in the three-dimensional structure and appearance. | ¶24; p. 5 | ’312 Patent, Description; FIG. 9 |
- Identified Points of Contention:
- Scope Questions: The primary question in design patent infringement is whether an "ordinary observer," familiar with the prior art, would be deceived into believing the accused product is the patented design. The dispute will center on the overall visual impression created by the L. L. Bean shoe's heel compared to the designs shown in the patent figures.
- Technical (Visual) Questions: The analysis will turn on a direct visual comparison. A key question for the court will be whether any differences in proportion, curvature, or surface texture between the Freeport shoe and the patented designs are significant enough to create a different overall visual impression, or if they are merely minor variations that do not prevent a finding of infringement. The complaint's images present the comparison, but a court would likely rely on an examination of the physical products.
V. Key Claim Terms for Construction
In design patent cases, the figures themselves largely define the claim scope, making formal "construction" of terms less central than in utility patent cases. The primary interpretive task is to determine the scope of the design from the drawings.
- The Term: "The ornamental design for a shoe upper component, as shown and described."
- Context and Importance: This phrase constitutes the entirety of the claim in both patents. Its interpretation is coterminous with the infringement analysis itself. Practitioners may focus on the visual scope defined by the figures, as this determines whether the L.L. Bean shoe's design is "substantially the same" as the patented design.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim is for the overall "ornamental design," not a checklist of individual features. This supports an infringement theory based on the same overall visual impression, even if minor differences exist. The use of broken lines to disclaim the rest of the shoe focuses the inquiry entirely on the heel component, preventing other parts of the shoe from clouding the comparison (’888 Patent, Description).
- Evidence for a Narrower Interpretation: The protection is limited to the specific design "as shown" in the drawings. Any discernible visual difference between the accused product and the precise lines and contours depicted in the patent figures could support a non-infringement argument. The use of dot-dash lines in the ’312 Patent to explicitly define the "bounds of the claimed design" provides a specific boundary that could be argued to narrow the claim's scope (’312 Patent, Description).
VI. Other Allegations
- Indirect Infringement: The complaint does not allege indirect infringement.
- Willful Infringement: The complaint alleges that L. L. Bean’s infringement "has been and continues to be intentional, willful, and without regard to Skechers’ rights" (Compl. ¶20, ¶25). The factual basis for this allegation appears to be the assertion that L. L. Bean copied the design only after Skechers had established its commercial success, which may suggest knowledge and intent to copy a valuable design (Compl. ¶4).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of visual comparison: Under the "ordinary observer" test, is the overall ornamental appearance of the L. L. Bean Freeport shoe's heel substantially the same as the designs claimed in the ’888 and ’312 patents? The outcome will depend on the court's holistic assessment of visual similarity rather than a dissection of individual features.
- A key evidentiary question will be the significance of differences: How will the court weigh any visual differences between the accused product and the patent drawings? The case may turn on whether these differences are deemed minor enough to be ignored by the ordinary observer or substantial enough to create a distinct, non-infringing design.
- A final question will concern willfulness: Can Skechers produce evidence beyond the allegation of "copying success" to demonstrate that L. L. Bean had pre-suit knowledge of the asserted patents and engaged in conduct egregious enough to warrant enhanced damages under 35 U.S.C. § 284?