DCT
1:24-cv-06708
Skechers USA Inc v. Marc Fisher Holdings LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Skechers U.S.A., Inc. (Delaware) and Skechers U.S.A., Inc. II (Virginia)
- Defendant: ABG Rockport LLC (Delaware), Authentic Brands Group LLC (Delaware), MF-RFC LLC (Delaware), and MFF-NW LLC (Delaware)
- Plaintiff’s Counsel: Alston & Bird LLP; Irell & Manella LLP
- Case Identification: 1:24-cv-06708, S.D.N.Y., 08/15/2025
- Venue Allegations: Venue is based on Defendants' principal places of business in the district, transacting business in the district, sales of accused products through retail stores and the internet in the district, and maintenance of corporate offices and showrooms in the district.
- Core Dispute: Plaintiff alleges that Defendant’s "Step Activated" collections of footwear infringe patents related to "Slip-in" footwear technology designed to facilitate easier donning and removal of shoes.
- Technical Context: The technology concerns the mechanical design of a shoe's heel counter, enabling it to deform under the pressure of a user's foot for hands-free entry and then resiliently return to its original shape to secure the foot.
- Key Procedural History: The complaint alleges that Defendants had knowledge of the ’064 Patent at least since the filing of an original complaint on September 9, 2024, and knowledge of the ’594 and ’076 Patents at least since July 31, 2025, upon receipt of a proposed Second Amended Complaint.
Case Timeline
| Date | Event |
|---|---|
| 2021-10-15 | Priority Date for ’064 Patent |
| 2024-06-18 | U.S. Patent No. 12,011,064 Issues |
| 2024-09-09 | Date Defendants allegedly received notice of ’064 Patent |
| 2024-12-05 | Date Plaintiff's counsel last visited accused product website |
| 2025-04-29 | U.S. Patent No. 12,285,076 Issues |
| 2025-06-24 | U.S. Patent No. 12,336,594 Issues |
| 2025-07-31 | Date Defendants allegedly received notice of ’594 and ’076 Patents |
| 2025-08-15 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 12,011,064 - "Footwear Counter for Easier Entry and Removal,"
- Patent Identification: U.S. Patent No. 12,011,064, "Footwear Counter for Easier Entry and Removal," issued June 18, 2024 (’064 Patent).
The Invention Explained
- Problem Addressed: The patent describes the conventional difficulty of putting on athletic shoes, which often requires using hands or a shoe horn to prevent the rear portion of the shoe (the quarter) from collapsing under the user's heel (Compl. ¶122; ’064 Patent, col. 1:23-27).
- The Patented Solution: The invention is a specially designed heel cup that is "uniformly molded" with distinct upper, middle, and lower portions. The upper portion is designed to have a first, native configuration and is capable of distorting into a second, lowered configuration when a user’s foot applies a load during entry, after which it is capable of returning to the first configuration (Compl. ¶123; ’064 Patent, col. 1:34-46). This allows for hands-free entry without permanently deforming the shoe's structure.
- Technical Importance: The design aims to provide the structural integrity of a traditional heel counter during normal wear while adding the novel functionality of controlled, temporary deformation during donning.
Key Claims at a Glance
- The complaint asserts at least independent Claim 1 (Compl. ¶125).
- Essential elements of Claim 1 include:
- An article of footwear with an upper and a sole structure.
- A "heel cup attached to the upper" that is "uniformly molded with an upper portion, midportion, and lower portion."
- Specific geometric features, including a "rearward facing upper concavity" and a "forward facing lower concavity," with the second having a greater "amplitude" than the first.
- A functional requirement that the upper portion can distort from a "first configuration" to a "second configuration" under a user's foot load and is "capable of returning" to the first configuration after the load is removed.
- Specific thickness relationships, wherein a "mid-central portion" has a "first thickness" that is less than both a "second thickness" of an "upper central portion" and a "third thickness" of a "lower central portion."
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 12,336,594 - "Footwear Counter for Easier Entry and Removal,"
- Patent Identification: U.S. Patent No. 12,336,594, "Footwear Counter for Easier Entry and Removal," issued June 24, 2025 (’594 Patent).
The Invention Explained
- Problem Addressed: Similar to the ’064 Patent, this patent addresses the need for a shoe structure that allows for easier, hands-free entry (Compl. ¶166).
- The Patented Solution: This invention focuses on a heel cup design that achieves flexibility through specific structural modifications. It discloses reducing the thickness of the heel cup in certain areas to provide "greater flexibility" and "necessary compressibility" during donning (Compl. ¶167). It also describes incorporating a compressible "interior foam layer" that helps secure the foot once it is inserted (Compl. ¶168).
- Technical Importance: This approach combines material thinning for mechanical flexibility with a foam component for enhanced fit and comfort, providing an alternative or complementary solution to the problem of hands-free shoe entry.
Key Claims at a Glance
- The complaint asserts at least independent Claim 1 (Compl. ¶171).
- Essential elements of Claim 1 include:
- A shoe with a sole and an upper.
- The upper includes "at least one layer of elastic material positioned to stretch and create tension that enhances securement of a foot."
- A "heel cup, comprised of polymer material, affixed to the upper."
- The heel cup has an upper portion, midportion, and lower portion.
- An "interior foam layer adjacent to at least an interior wall of the upper portion of the heel cup."
- The interior foam layer is "compressible" and "extends into a shoe opening, providing securement of the foot once inserted."
- The heel cup includes "at least one reduced thickness region providing flexibility to the heel cup when donning or removing the shoe."
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 12,285,076 - "Footwear Counter for Easier Entry and Removal,"
- Patent Identification: U.S. Patent No. 12,285,076, "Footwear Counter for Easier Entry and Removal," issued April 29, 2025 (’076 Patent).
The Invention Explained
- Technology Synopsis: The ’076 Patent describes a heel cup whose rearmost portion has a vertical cross-sectional shape resembling an "S wave" (Compl. ¶195). This shape, combined with at least one "reduced thickness region" between "thicker adjacent" upper and lower regions, is designed to allow the heel cup to compress and facilitate foot entry (Compl. ¶195, ¶211). The invention also includes a compressible interior foam layer covered by an elastic, wicking textile that is form-fitted to the foam (Compl. ¶196, ¶219).
Key Claims at a Glance
- Asserted Claims: At least independent Claim 23 is asserted (Compl. ¶199).
- Accused Features: The complaint alleges that the accused Rockport shoes feature a heel cup with the claimed S-wave shape, the specified regions of reduced and thicker thickness, and an interior compressible foam layer covered by a form-fitted elastic textile (Compl. ¶209-220).
III. The Accused Instrumentality
Product Identification
- "Rockport" branded footwear in the "Step Activated" collections, including but not limited to the Rockport Tristen Step Activated Slip On, Rockport Tristen Step Activated Lace-Up, Rockport Rhett Step Activated Casual Lace-Up, and Rockport Reece Step Activated Casual Slip-On models (Compl. ¶26).
Functionality and Market Context
- The complaint alleges these products are marketed and sold as shoes that enable easier donning and removal (Compl. ¶3). The infringement allegations focus on the structure of the heel counter, which allegedly incorporates a deformable heel cup, specific geometric concavities, varied thickness regions, and compressible foam layers to achieve this functionality (Compl. ¶125-160, ¶171-188). The complaint shows a screenshot of the "Men's Tristen Step Activated Slip On" being offered for sale on Defendant ABG Rockport's website (Compl. ¶70).
IV. Analysis of Infringement Allegations
’064 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| the heel cup uniformly molded with an upper portion, midportion, and lower portion where in the upper portion has a smaller mediolateral length than the midportion | The complaint provides a photograph of a disassembled heel cup from an accused shoe, identifying distinct upper, mid, and lower portions, and alleges the upper portion has a smaller mediolateral length. | ¶133-135 | col. 1:35-38 |
| the heel cup having a rearward facing upper concavity with a first amplitude; and the heel cup having a forward facing lower concavity with a second amplitude; the second amplitude being greater than the first amplitude | Using photographs of a cross-section of the accused heel cup, the complaint identifies and illustrates with colored lines an upper concavity (first amplitude) and a lower concavity (second amplitude), alleging the second is greater than the first. | ¶138-142 | col. 11:23-27 |
| the upper portion capable of distorting into a second configuration under a load of a user's foot when the user is donning the footwear | A photograph shows the upper portion of the accused shoe's heel being pressed down and deformed by a user's foot during entry. | ¶145-146 | col. 1:40-43 |
| the mid-central portion having a first thickness; the upper central portion having a second thickness; the lower central portion having a third thickness; and the first thickness is less than the second thickness and the third thickness | The complaint provides photographs of a digital caliper measuring the thickness of the disassembled heel cup at three different points, alleging the mid-central portion is thinner than the upper and lower central portions. | ¶153-160 | col. 11:41-47 |
- Identified Points of Contention:
- Scope Questions: The interpretation of "uniformly molded" may be a point of dispute. The complaint shows a component that appears to be a single piece (Compl. ¶134), but the term could be argued to imply specific manufacturing processes or material properties that require further evidence.
- Technical Questions: The complaint's infringement theory relies on measurements of a single disassembled product. A key question for the court will be whether the photographic evidence and caliper readings (Compl. ¶154, ¶156, ¶158) accurately reflect the claimed geometric and thickness relationships ("second amplitude being greater," "first thickness is less than") and whether this evidence is representative of all accused products.
’594 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an upper, including at least one layer of elastic material positioned to stretch and create tension that enhances securement of a foot inserted into the shoe | A photograph of the accused shoe identifies an "Elastic material" gore on the side of the upper, alleged to provide tension for securement. | ¶175-176 | col. 7:32-39 |
| an interior foam layer adjacent to at least an interior wall of the upper portion of the heel cup | A cross-section photograph of the accused shoe's heel area points to an "Interior foam layer" located inside the heel cup structure. | ¶181-182 | col. 6:10-14 |
| wherein the interior foam layer is compressible | The complaint provides two photographs showing the heel area of the accused shoe in an uncompressed state and then being manually compressed by a gloved hand to demonstrate the foam's compressibility. | ¶183-184 | col. 6:20-22 |
| wherein the heel cup includes at least one reduced thickness region providing flexibility to the heel cup when donning or removing the shoe | A series of three photographs shows a digital caliper measuring the thickness of the disassembled heel cup's upper, mid, and lower portions, identifying the midportion as the thinnest and thus a "reduced thickness region." | ¶187-188 | col. 4:18-22 |
- Identified Points of Contention:
- Scope Questions: The term "adjacent" may require construction. The court may need to determine how close or connected the "interior foam layer" must be to the "interior wall" of the heel cup to meet this limitation.
- Technical Questions: The complaint alleges the "reduced thickness region" provides flexibility (Compl. ¶187). A factual question may arise as to whether the measured difference in thickness actually imparts the functional benefit of "providing flexibility" as required by the claim, or if the flexibility is attributable to other design factors.
V. Key Claim Terms for Construction
For the ’064 Patent:
- The Term: "uniformly molded" (Claim 1)
- Context and Importance: This term describes the fundamental nature of the claimed heel cup. Its construction is critical because it could limit the claim scope to products made by specific manufacturing methods. Practitioners may focus on this term to determine if the accused product's multi-component assembly or manufacturing process falls within the claim's scope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the heel cup as a single component with various portions (e.g., "upper portion, midportion, and lower portion") ('064 Patent, col. 1:35-37). This could support a reading that "uniformly molded" simply means formed as a single, unitary piece, regardless of the specific molding technique.
- Evidence for a Narrower Interpretation: The term "uniformly" could be interpreted to require a specific level of material consistency or density throughout the part, potentially excluding processes that create internal variations. The abstract states the heel cup "may be uniformly molded," which could suggest it is a specific embodiment rather than a requirement for all inventions disclosed.
For the ’594 Patent:
- The Term: "reduced thickness region" (Claim 1)
- Context and Importance: This term is tied to the functional requirement of "providing flexibility." The dispute will likely center on whether any thinner area qualifies, or if the reduction in thickness must be the primary cause of the claimed flexibility.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language requires "at least one reduced thickness region," which could be read to mean any portion that is measurably thinner than an adjacent portion of the heel cup.
- Evidence for a Narrower Interpretation: The specification links the reduced thickness to providing "greater flexibility" and "necessary compressibility" ('594 Patent, as cited in Compl. ¶167). A defendant could argue this creates a functional requirement, meaning a region is only a "reduced thickness region" if the reduction is substantial enough to be the reason for the shoe's flexibility during donning.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement against Defendants MFF-NW, ABG Rockport, and Authentic Brands Group (Compl. ¶65, ¶86, ¶101). The allegations state these defendants perform "affirmative acts" that induce others (such as retailers or end-users) to directly infringe, with knowledge of the patents and intent to cause infringement.
- Willful Infringement: The complaint alleges willful infringement against all Defendants (Compl. ¶58, ¶67, ¶88, ¶103). The basis for willfulness is post-suit knowledge. Knowledge of the ’064 Patent is alleged to have begun "at least since September 9, 2024," the date of service of the original complaint. Knowledge of the ’594 and ’076 Patents is alleged to have begun "at least since July 31, 2025," when a proposed Second Amended Complaint was provided (Compl. ¶58).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can terms rooted in manufacturing and geometry, such as "uniformly molded" and "S-wave," be construed broadly enough to read on the accused products, or will their definitions be narrowed by specific embodiments in the patent specification?
- A key evidentiary question will be one of quantitative proof: the complaint's infringement theories for all three patents rely on specific, relative dimensional requirements (e.g., one "amplitude" being "greater than" another; one "thickness" being "less than" two others). The case may turn on whether the plaintiff's photographic and caliper-based evidence from a single sample is sufficient to prove these precise relationships exist across the entire line of accused products.