DCT
2:24-cv-03944
Fast IP LLC v. TISHKOFF Enterprises LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Fast IP, LLC; HandsFree Labs Licensing, LLC; and Kizik Design, LLC (collectively "Kizik") (Utah)
- Defendant: Tishkoff Enterprises, LLC d/b/a Drew Shoe (Ohio)
- Plaintiff’s Counsel: Faegre Drinker Biddle & Reath LLP
- Case Identification: 2:24-cv-03944, S.D. Ohio, 09/16/2024
- Venue Allegations: Venue is alleged based on Defendant being an Ohio corporation with its principal place of business in the Southern District of Ohio and conducting business within the district.
- Core Dispute: Plaintiff alleges that Defendant’s hands-free footwear infringes patents related to a compressible lattice structure located in the heel of a shoe that enables hands-free entry.
- Technical Context: The technology addresses footwear that can be put on without the use of hands, a feature offering convenience and enhanced accessibility for users with mobility limitations.
- Key Procedural History: The complaint alleges a corporate structure where FAST IP owns the patents-in-suit and licenses them to HandsFree Labs and Kizik Design. It also notes that Plaintiff Kizik maintains a publicly accessible webpage listing patents covering its products, with the URL displayed on its shoe boxes.
Case Timeline
| Date | Event |
|---|---|
| 2019-01-07 | Earliest Priority Date for ’810 and ’279 Patents |
| 2020-05-05 | U.S. Patent No. 10,638,810 Issued |
| 2021-04-13 | U.S. Patent No. 10,973,279 Issued |
| 2024-08-10 | Alleged Offer for Sale of Accused Products at Trade Show |
| 2024-09-16 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,638,810 - "Rapid-Entry Footwear Having A Compressible Lattice Structure"
- Patent Identification: U.S. Patent No. 10,638,810, "Rapid-Entry Footwear Having A Compressible Lattice Structure," issued May 5, 2020.
The Invention Explained
- Problem Addressed: The patent identifies the inconvenience or difficulty some individuals experience with donning, doffing, and securing footwear (’810 Patent, col. 1:23-28).
- The Patented Solution: The invention is a "rapid-entry shoe" that incorporates a "compressible lattice structure" in its heel portion (’810 Patent, col. 1:31-34). This structure, comprising interconnected ribs that define a plurality of apertures, is designed to collapse downward when a user steps into the shoe, creating an expanded opening (’810 Patent, col. 4:40-47, col. 4:59-63). The structure is biased to return to a "closed position," where it rebounds to its original shape, securing the user's foot inside the shoe (’810 Patent, col. 5:1-9).
- Technical Importance: This design creates a functional hands-free shoe, eliminating the need for the user to bend down or use their hands to put on or secure the footwear, which represents a significant advancement in convenience and accessibility (’810 Patent, col. 3:32-38).
Key Claims at a Glance
- The complaint alleges infringement of "one or more independent claims" but does not specify which ones (Compl. ¶25). Independent claim 1 is representative.
- Independent Claim 1 of the ’810 Patent recites:
- A rapid-entry shoe comprising a base and a heel portion with a compressible lattice structure.
- The lattice structure is comprised of a plurality of intersecting ribs defining a plurality of apertures.
- The structure has an open position (for foot reception) and a closed position (for foot retention).
- A flange located proximal to a bottom edge of the lattice structure.
- A stabilizer located proximal to a top edge of the lattice structure.
- The structure is biased toward the closed position.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 10,973,279 - "Rapid-Entry Footwear Having A Compressible Lattice Structure"
- Patent Identification: U.S. Patent No. 10,973,279, "Rapid-Entry Footwear Having A Compressible Lattice Structure," issued April 13, 2021.
The Invention Explained
- Problem Addressed: The ’279 Patent, a continuation of the application leading to the ’810 Patent, addresses the same problem of inconvenience in donning and doffing shoes (’279 Patent, col. 1:28-32).
- The Patented Solution: The solution is functionally identical to that of the ’810 Patent: a shoe heel with a compressible lattice structure that facilitates hands-free entry by collapsing and rebounding (’279 Patent, Abstract). The key distinctions lie in the specific claim language defining the structural arrangement of the lattice. For example, certain claims require the lattice to be a "unitary structure formed from a single mold" (’279 Patent, col. 10:10-12).
- Technical Importance: The technology provides the same market benefit of a hands-free footwear experience, as described for the ’810 Patent.
Key Claims at a Glance
- The complaint alleges infringement of "one or more independent claims" without specification (Compl. ¶25). The ’279 Patent has multiple independent claims (1, 7, 12, and 17). Independent claim 1 is representative.
- Independent Claim 1 of the ’279 Patent recites:
- A rapid-entry shoe with a base and a heel portion comprising a compressible lattice structure.
- The structure is comprised of a plurality of ribs (larger and smaller) defining apertures.
- The larger and smaller ribs are comprised of a "unitary structure formed from a single mold."
- The smaller ribs extend between "immediately adjacent" larger ribs.
- The structure has open (collapsed) and closed (un-collapsed) positions and is biased toward the closed position.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The "Drew Shoe Infringing Products," which include the CONNOR, CORBIN, CALEB, BOBBIE, HOBBY, and HARMONY footwear models (Compl. ¶25).
Functionality and Market Context
- The accused products are described as a "line of hands-free footwear" that "incorporates the use of a flexible lattice on the heel of the shoe" (Compl. ¶25). The complaint includes a side-by-side photograph comparing the heel of a Kizik shoe to that of an accused Drew Shoe product, showing a visible external lattice structure on the accused product (Compl. p. 8).
- The complaint alleges these products are "knock-offs" and "obvious imitations" of Kizik's patented technology, sold as part of Drew Shoe's "Spring/Summer 2025" catalog and offered for sale at an industry trade show in August 2024 (Compl. ¶¶ 26, 27).
IV. Analysis of Infringement Allegations
’810 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a heel portion comprising a compressible lattice structure, wherein the compressible lattice structure is comprised of a plurality of intersecting ribs, wherein the plurality of intersecting ribs defines a plurality of apertures | The accused products are alleged to be "hands-free footwear" that incorporate a "flexible lattice on the heel of the shoe." A provided image shows an external, web-like structure on the heel. | ¶25, p. 8 | col. 3:40-47 |
| a stabilizer located proximal a top edge of the compressible lattice structure | The complaint does not provide specific factual allegations mapping any part of the accused products to the claimed "stabilizer." | ¶31 | col. 5:27-31 |
| wherein in the open position the compressible lattice structure is compressed downward toward the base... and wherein in the closed position the compressible lattice structure is expanded... wherein the compressible lattice structure biases the rapid-entry shoe toward the closed position | The complaint generally alleges that the accused products are "hands-free footwear," which implies a similar collapse-and-rebound function, but provides no specific operational details or testing evidence. | ¶25, ¶31 | col. 5:1-9 |
’279 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| wherein the plurality of larger ribs and the plurality of smaller ribs are comprised of a unitary structure formed from a single mold | The complaint makes no specific factual allegation regarding the manufacturing process (e.g., single mold) of the accused product's heel structure. | ¶37 | col. 10:10-12 |
| wherein a plurality of smaller ribs extend between immediately adjacent ribs of the plurality of larger ribs | The complaint does not provide a detailed structural analysis of the accused product's lattice to show it meets this specific geometric arrangement. | ¶37 | col. 10:13-15 |
- Identified Points of Contention:
- Scope Questions: The infringement analysis may turn on whether the accused "flexible lattice" meets the structural and functional requirements of the claimed "compressible lattice structure." A key question will be whether the accused products contain a distinct element that performs the function of the claimed "stabilizer" (’810 Patent) or are made from a "unitary structure" (’279 Patent).
- Technical Questions: What evidence does the complaint provide that the accused product’s heel structure is "biased toward the closed position" as claimed? The allegations currently rest on visual similarity and marketing claims of "hands-free" functionality, rather than on detailed technical analysis of the accused product's operation.
V. Key Claim Terms for Construction
The Term: "compressible lattice structure"
- Context and Importance: This term is the technological core of both asserted patents. The definition of "lattice," its required "compressibility," and its constituent elements ("ribs," "apertures") will be dispositive for both infringement and validity. Practitioners may focus on this term because its scope determines whether the accused heel design falls within the patent's monopoly.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes multiple embodiments with various materials ("polymer," "metallic," "composite") and aperture shapes ("elliptical, non-elliptical, or random"), suggesting the term is not confined to a single embodiment (’810 Patent, col. 4:56-65).
- Evidence for a Narrower Interpretation: The specification explicitly distinguishes the invention from "merely a common fabric/textile material," requiring that it be "capable of being reversibly compressed such that it recoils back up" (’810 Patent, col. 4:51-56). A defendant may argue this functional requirement narrows the term to exclude materials that do not exhibit sufficient recoil force.
The Term: "stabilizer"
- Context and Importance: This is a required element of independent claim 1 of the ’810 Patent. If the accused products are found to lack a "stabilizer" as construed by the court, they cannot literally infringe this claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent discloses that the stabilizer can be a separate component or "integral with the lattice structure," such as a portion with "higher mechanical rigidity" (’810 Patent, col. 5:36-44). This suggests the stabilizer need not be a visually distinct part.
- Evidence for a Narrower Interpretation: The patent defines the stabilizer's purpose as imparting "further stabilizing structure ... to prevent/inhibit ... inward deflection or buckling" (’810 Patent, col. 5:29-31). A defendant may argue that to meet this limitation, a feature must be proven to perform this specific anti-buckling function, not just exist as a structural reinforcement.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain specific counts or factual allegations for indirect infringement (inducement or contributory infringement).
- Willful Infringement: The complaint alleges willful infringement based on Defendant's alleged "full knowledge" of the Kizik Patents (Compl. ¶¶ 33, 39). The allegations are supported by claims that Defendant engaged in "intentional and bad faith conduct," "slavishly copied" Kizik's technology, and launched "copycat marketing activities" (Compl. ¶27). The complaint provides a side-by-side comparison of advertising slogans to support the copying allegation (Compl. p. 9). Furthermore, the complaint alleges constructive notice via Plaintiff's patent marking webpage, the URL for which is allegedly printed on every Kizik shoe box (Compl. ¶22).
VII. Analyst’s Conclusion: Key Questions for the Case
Claim Construction and Scope: A core issue will be one of definitional scope: can the term "compressible lattice structure", with its specific requirements for ribs, apertures, and a biasing force, be construed to read on the accused "flexible lattice"? The presence and definition of the "stabilizer" element in the ’810 patent will be a critical, and potentially dispositive, point of contention.
Evidence of Copying vs. Independent Design: The complaint heavily emphasizes allegations of "slavish copying" and "copycat marketing." A central question for the fact-finder will be whether the evidence supports a finding of deliberate copying, which would bolster the willfulness claim, or if the similarities are the result of independent design within a known functional paradigm for hands-free shoes.
Proof of Technical Function: A key evidentiary question will be one of functional infringement: beyond visual similarity, what technical evidence will Plaintiff present to prove that the accused Drew Shoe products operate in the specific manner required by the claims, particularly the limitation that the structure "biases the rapid-entry shoe toward the closed position"?