DCT
3:14-cv-01586
Lyden v. adidas America Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Robert M. Lyden (Pro Se) (Oregon)
- Defendant: adidas America, Inc. (Delaware); adidas AG (Germany); adidas International Marketing B.V. (Netherlands); The Finish Line, Inc. (Indiana); Foot Locker, Inc. (New York); Dick's Sporting Goods, Inc. (Delaware)
- Plaintiff’s Counsel: Pro Se
- Case Identification: Lyden v. adidas America, Inc., 3:14-cv-01586, D. Or., 10/08/2014
- Venue Allegations: Venue is alleged in the District of Oregon because Defendants conduct substantial business in the district and a substantial part of the alleged infringing acts occurred there, including the design, development, testing, and sale of the accused products.
- Core Dispute: Plaintiff alleges that Defendant’s adidas Springblade and adizero Primeknit Boost footwear products infringe patents related to spring elements for shoe soles and custom-knitted shoe uppers, respectively.
- Technical Context: The dispute is in the field of high-performance athletic footwear, focusing on innovations in sole cushioning systems and advanced upper manufacturing techniques.
- Key Procedural History: The complaint alleges a decade-long history between the parties, including Plaintiff’s disclosure of the patents-in-suit to adidas beginning as early as 1999. It also references a prior patent lawsuit between the same parties (3:10-CV-1249-BR) that was settled in 2011. Additionally, the complaint notes that at the time of filing, the '883 Patent was the subject of an inter partes reexamination requested by Defendant adidas AG.
Case Timeline
| Date | Event |
|---|---|
| 2000-03-10 | Earliest Priority Date for ’878 and ’883 Patents |
| 2002-09-17 | U.S. Patent No. 6,449,878 Issues |
| 2005-07-12 | U.S. Design Patent No. D507,094 Issues |
| 2010-10-12 | Plaintiff files prior patent infringement suit against adidas |
| 2011-10-19 | Prior patent infringement suit is dismissed following settlement |
| 2012-07-03 | U.S. Patent No. 8,209,883 Issues |
| 2012-08-21 | adidas requests inter partes reexamination of the ’883 Patent |
| 2013-08-01 | Accused adidas Springblade shoe launches in the U.S. |
| 2014-07-13 | Accused adidas adizero Primeknit Boost shoe launches in the U.S. |
| 2014-10-08 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,449,878 - Article Of Footwear Having A Spring Element And Selectively Removable Components
- Patent Identification: U.S. Patent No. 6,449,878, "Article Of Footwear Having A Spring Element And Selectively Removable Components," issued September 17, 2002 (’878 Patent).
The Invention Explained
- Problem Addressed: The patent’s background section describes the problem of conventional athletic footwear midsoles, typically made of foam, which degrade over time, lose their cushioning properties, and are permanently affixed to the shoe, preventing replacement or customization ('878 Patent, col. 1:44-54).
- The Patented Solution: The invention proposes replacing the degradable foam with a durable spring element to provide cushioning and energy return. The patent describes a modular footwear construction where the primary components—including the upper, spring element, and outsole—are designed to be easily removed and replaced, allowing a user to customize the shoe for performance or to replace worn-out parts ('878 Patent, col. 2:1-12, Fig. 2).
- Technical Importance: This approach sought to increase the functional lifespan of athletic shoes and introduce a high degree of user-level customization for performance characteristics ('878 Patent, col. 1:55-61).
Key Claims at a Glance
- The complaint asserts independent claims 27 and 30 (Compl. ¶139).
- Independent Claim 27:
- An article of footwear with an upper
- A "superior spring element" extending substantially from the posterior to the anterior side
- At least one "inferior spring element" affixed to the superior spring element
- The inferior spring element is positioned within the rear 50 percent of the shoe's length
- The inferior spring element projects rearward and downward, forming a "V-shape"
- Independent Claim 30:
- An article of footwear with an upper
- A "superior spring element" extending substantially from the posterior to the anterior side
- At least one "inferior spring element" affixed to the superior spring element
- The inferior spring element has a greater length on its lateral side than its medial side
- The inferior spring element has a greater downward concavity on its medial side than on its lateral side
U.S. Patent No. 8,209,883 - Custom Article of Footwear and Method of Making the Same
- Patent Identification: U.S. Patent No. 8,209,883, "Custom Article of Footwear and Method of Making the Same," issued July 3, 2012 (’883 Patent).
The Invention Explained
- Problem Addressed: The patent addresses the limitations of conventional mass-produced athletic footwear, which does not easily accommodate the specific physical and mechanical needs of individual wearers ('883 Patent, col. 3:1-7).
- The Patented Solution: The invention describes a customizable article of footwear and a method for making it. A central feature is the use of an upper made from a "knit textile material" where different sections of the upper (e.g., vamp, quarter) are formed with different knit structures to provide distinct mechanical properties like varied elongation and support ('883 Patent, Abstract; col. 216:5-35). This allows the upper to be precisely engineered for function in a single piece, moving beyond traditional cut-and-sew methods.
- Technical Importance: The technology enables the creation of lightweight, form-fitting uppers with functionally-zoned characteristics, potentially improving performance and comfort while streamlining manufacturing ('883 Patent, col. 13:40-47).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 42 (Compl. ¶153).
- Independent Claim 1:
- An article of footwear comprising an upper made of a "knit textile material element"
- The upper is comprised of different sections: a dorsal section, a vamp section, a tip section, medial and lateral quarter sections, a collar section, and a posterior section
- Each of the dorsal, vamp, quarter, and tip sections comprise a "different knit textile material structure"
- These different structures have "different elongation characteristics"
- Independent Claim 42:
- A sole for a shoe configured to be coupled with an upper made of a "knitting textile material"
- The shoe comprises various sections (tip, vamp, dorsal, etc.)
- The different sections of the upper comprise knitted textiles having "different mechanical properties"
U.S. Design Patent No. D507,094 S - Spring Element For An Article Of Footwear
- Patent Identification: U.S. Design Patent No. D507,094 S, "Spring Element For An Article Of Footwear," issued July 12, 2005 (’094 Patent).
- Technology Synopsis: The ’094 Patent protects the ornamental design for a footwear spring element. The claimed design, as shown in the patent's figures, consists of the unique visual appearance of a sole structure featuring a series of curved, blade-like elements (Compl. p. 47).
- Asserted Claims: Design patents contain a single claim for the ornamental design as shown in the drawings.
- Accused Features: The complaint alleges that the overall visual appearance of the adidas Springblade shoe sole is confusingly similar to and infringes the patented design (Compl. ¶164).
III. The Accused Instrumentality
Product Identification
The adidas Springblade and adidas adizero Primeknit Boost athletic shoes (Compl. ¶7, ¶66, ¶67).
Functionality and Market Context
- The adidas Springblade features a sole composed of sixteen angled, blade-like structures made from a polymer material. These blades are designed to independently compress and release energy, providing propulsion (Compl. ¶67, ¶132). The complaint provides a lateral view image of the Springblade shoe (Compl. p. 19). It also alleges the product was positioned as a major innovation for adidas, quoting a company director as stating, "It is the single most important thing we've done" (Compl. ¶69).
- The adidas adizero Primeknit Boost is an athletic shoe featuring a one-piece upper constructed from a knitted textile, marketed as "Primeknit" (Compl. ¶66). This upper is combined with adidas's "Boost" foam cushioning material in the sole. The complaint alleges the Primeknit technology was adidas's competitive response to Nike's Flyknit footwear and provides an image of the shoe (Compl. ¶53, p. 18).
IV. Analysis of Infringement Allegations
’878 Patent Infringement Allegations
| Claim Element (from Independent Claim 27/30) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a superior spring element extending substantially between the posterior and anterior side | The main sole structure of the Springblade shoe from which the individual blades are attached. | ¶139 | col. 7:10-14 |
| at least one inferior spring element affixed in functional relation thereto and positioned within 50 percent of the length... | The individual, angled blades on the sole of the Springblade shoe, which are alleged to be affixed to the superior spring element. A photograph depicts these blades on the shoe (Compl. p. 19). | ¶139 | col. 7:15-20 |
| and projecting rearward and downward therefrom forming a V-shape | The alleged geometric arrangement of the individual blades relative to the main sole structure. | ¶139 | col. 8:1-5 |
| at least one inferior spring element also comprises greater length on its lateral side relative to its medial side... | The alleged asymmetric geometry of the individual blades. | ¶139 | col. 8:50-55 |
Identified Points of Contention (’878 Patent):
- Scope Questions: The primary dispute may center on whether the term "inferior spring element" can be construed to read on the multiple, discrete "blades" of the Springblade shoe. The patent figures often depict the inferior element as a single, connected component located beneath a "superior spring element" plate ('878 Patent, Fig. 4, Fig. 38), which raises the question of whether the accused design, which integrates the blades as the primary visible feature, falls within the claim's scope.
- Technical Questions: The complaint alleges that the blades meet the geometric requirements of "forming a V-shape" and having "greater length on its lateral side," but provides no specific measurements or technical evidence to support this conclusory mapping (Compl. ¶139). A key factual question will be whether the accused blades actually exhibit the specific V-shape and asymmetric concavity required by the claims.
’883 Patent Infringement Allegations
| Claim Element (from Independent Claim 1/42) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an upper comprising a knit textile material element | The one-piece "Primeknit" upper of the adizero Primeknit Boost shoe, which the complaint alleges is a knitted upper. An image of the shoe is provided in the complaint (Compl. p. 18). | ¶153 | col. 13:40-47 |
| said upper comprising... tip, vamp, dorsal, collar, quarter and posterior sections | The anatomically distinct regions of the single-piece Primeknit upper. | ¶153 | col. 216:11-20 |
| said... sections... comprise "different knit textile structure having different elongation characteristics" | The visually distinct knit patterns and densities in different zones of the Primeknit upper, which are alleged to provide different amounts of stretch and support corresponding to the claim. | ¶153 | col. 216:31-35 |
| said different sections of said upper comprising knitted textiles having different mechanical properties | The same functionally-zoned knitting of the Primeknit upper, alleged to result in different mechanical properties (e.g., stiffness, breathability, support). | ¶153 | col. 218:65-col. 219:1 |
Identified Points of Contention (’883 Patent):
- Scope Questions: A central issue will likely be the construction of "different knit textile structure." The dispute may focus on whether this term requires structurally separate textile components or if it can encompass a single, integrally-knitted fabric that simply varies its stitch pattern and density across different zones, as is common in products like Primeknit.
- Technical Questions: The complaint alleges that the different knit zones have "different elongation characteristics" and "different mechanical properties" (Compl. ¶153). A critical evidentiary question will be whether Plaintiff can provide technical data (e.g., from materials testing) to demonstrate that the observed variations in knit pattern actually result in measurably different mechanical and elongation properties as required by the claims.
V. Key Claim Terms for Construction
’878 Patent: "inferior spring element"
- The Term: "inferior spring element"
- Context and Importance: This term is critical because the infringement theory for the Springblade shoe depends on mapping the individual, prominent blades to this claim element. Adidas may argue its blades are the primary spring system, not an "inferior" component to a "superior" one, suggesting a fundamental mismatch with the claimed architecture.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the element's function broadly, stating it is "affixed in functional relation to the superior spring element" ('878 Patent, col. 7:15-17). This functional language may support an argument that any attached component providing cushioning qualifies.
- Evidence for a Narrower Interpretation: The patent's figures consistently depict the "inferior spring element" as a component situated below a distinct "superior spring element" plate (e.g., element 50 below element 49 in Fig. 38). Further, the description of it "projecting rearward and downward... forming a V-shape" may suggest a specific structure distinct from the multiple, forward-angled blades of the accused product ('878 Patent, col. 8:3-5).
’883 Patent: "different knit textile structure"
- The Term: "different knit textile structure"
- Context and Importance: The viability of the infringement allegation against the single-piece Primeknit upper hinges on this term's meaning. Practitioners may focus on this term because if it is construed to require separate pieces of fabric, the claim would likely not read on the accused product, which is marketed as a seamless, one-piece upper.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself focuses on the result—"different elongation characteristics"—which could be achieved by varying the knit pattern within a single textile. The specification also discusses using "circular knitted and/or three dimensional textile material" which can be "cut from a single piece of textile material" ('883 Patent, col. 13:40-44), potentially supporting an integral construction.
- Evidence for a Narrower Interpretation: The patent repeatedly emphasizes modularity and "selectively and removably" replacing components ('883 Patent, Abstract). An argument could be made that "different... structure" in this context implies distinct, separable structures consistent with the overall theme of interchangeable parts, rather than mere variations within a monolithic component.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that adidas actively induces infringement of both the ’878 and ’883 patents by "retailers, customers, sponsored teams, promotional athletes, and sales personnel" through their making, using, and selling of the accused shoes (Compl. ¶138, ¶152).
- Willful Infringement: The complaint makes extensive allegations to support willfulness. It details a long history of communication where Plaintiff allegedly disclosed his patents and patent applications to adidas executives and legal counsel on multiple occasions between 1999 and 2014, long before the accused products were launched (Compl. ¶35, ¶39, ¶42, ¶46-47, ¶70-71). The complaint alleges that adidas had "actual notice" of the patents and their relevance, yet proceeded to launch the accused products, suggesting deliberate disregard for Plaintiff's patent rights (Compl. ¶140, ¶154).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the claim terms "superior spring element" and "inferior spring element" from the ’878 Patent, which describe a two-part cushioning system, be construed to cover the accused Springblade shoe’s design of multiple, discrete energy-return blades that form the primary structure of the sole?
- A second central question will be one of technical construction: does the term "different knit textile structure" in the ’883 Patent require distinct material components, or can it be met by a single, integrally-knitted upper, like the accused Primeknit product, that varies its knit pattern to create zones with different functional properties?
- Finally, a key factual question impacting damages will be one of willfulness: given the extensive pre-suit history of disclosure and negotiation alleged in the complaint, does the evidence support a finding of willful infringement by adidas?