DCT

3:16-cv-00007

Nike Inc v. Skechers USA Inc

I. Executive Summary and Procedural Information

Parties & Counsel:
- Plaintiff: Nike, Inc. (Oregon)
- Defendant: Skechers USA., Inc. (Delaware)
- Plaintiff’s Counsel: Stoel Rives LLP; Banner & Witcoff, Ltd.
Case Identification: 3:16-cv-00007, D. Or., 01/04/2016
Venue Allegations: Plaintiff NIKE alleges venue is proper in the District of Oregon because Defendant Skechers transacts business and has committed alleged acts of patent infringement in the district by offering for sale and selling the accused products.
Core Dispute: Plaintiff alleges that Defendant’s "Burst," "Flex Appeal," and "Flex Advantage" lines of footwear infringe eight of Plaintiff's U.S. design patents directed to the ornamental appearance of shoe uppers and shoe soles.
Technical Context: The dispute is situated in the highly competitive athletic and lifestyle footwear market, where unique ornamental designs serve as a primary differentiator and a significant source of brand identity and value.
Key Procedural History: While not mentioned in the complaint, post-filing records indicate that U.S. Design Patents D723,781 and D723,783 were challenged in inter partes review (IPR) proceedings initiated in 2017. The U.S. Patent and Trademark Office ultimately issued certificates in 2019 confirming the patentability of the single claim in each of those patents, a procedural development that may bolster their presumption of validity in this litigation.

Case Timeline

Date	Event
2012-02-29	Priority Date for ’772, ’781, ’783, ’356, ’359 Patents
2013-08-30	Priority Date for ’853, ’423, ’032 Patents
2014-01-07	U.S. Design Patent D696,853 Issued
2014-03-04	U.S. Design Patent D700,423 Issued
2014-06-17	U.S. Design Patent D707,032 Issued
2015-03-10	U.S. Design Patent D723,772 Issued
2015-03-10	U.S. Design Patent D723,781 Issued
2015-03-10	U.S. Design Patent D723,783 Issued
2015-03-31	U.S. Design Patent D725,356 Issued
2015-03-31	U.S. Design Patent D725,359 Issued
2015-11-11	Article cited in complaint suggests Skechers Burst shoe on market
2016-01-04	Complaint Filed
2017-01-06	IPR Proceedings initiated against the ’781 and ’783 Patents
2019-09-03	IPR Certificate Issued for D723,783 Patent
2019-09-04	IPR Certificate Issued for D723,781 Patent

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. D696,853 - Shoe Upper

The Invention Explained

Problem Addressed: Design patents do not articulate a technical problem and solution; rather, they protect the novel, non-functional, ornamental appearance of an article of manufacture (Compl. ¶10). The '853 Patent seeks to protect a specific aesthetic design for a shoe upper within the competitive footwear market.
The Patented Solution: The patent claims the ornamental design for a shoe upper as depicted in its figures ('853 Patent, Claim). The claimed design, shown in solid lines, consists of a textured pattern on the midfoot portion of the upper, combined with a configuration of three prominent, curved lace loops ('853 Patent, Fig. 1; Description). The remainder of the shoe is shown in broken lines, indicating it is not part of the claimed design ('853 Patent, Description).
Technical Importance: The claimed design reflects a trend towards knitted or woven uppers, which gained prominence for offering a combination of lightweight support, breathability, and distinct visual textures (Compl. ¶14).

Key Claims at a Glance

Design patents contain a single claim, which is for the ornamental design as shown in the drawings.
The claim for the '853 Patent is: "The ornamental design for a shoe upper, as shown and described." ('853 Patent, Claim). The scope is defined by the visual elements depicted in solid lines in the patent's figures.

U.S. Patent No. D723,772 - Shoe Sole

The Invention Explained

Problem Addressed: The '772 Patent protects a particular ornamental design for a shoe sole, distinguishing it aesthetically from other soles in the market (Compl. ¶10).
The Patented Solution: The patent claims the ornamental design for a shoe sole, illustrated in various views ('772 Patent, Claim). The core of the claimed design is its side profile, which features a distinct curvature and a series of horizontal segments and textures along the midsole ('772 Patent, Fig. 2; Description). The broken lines showing the shoe upper indicate that it is for environmental purposes only and not part of the claimed design ('772 Patent, Description).
Technical Importance: The design's segmented appearance is characteristic of sole designs intended to convey flexibility and lightweight cushioning, which are important functional and marketing attributes in modern athletic footwear.

Key Claims at a Glance

The single claim for the '772 Patent is: "The ornamental design for a shoe sole, as shown and described." ('772 Patent, Claim). Its scope is defined by the visual appearance of the sole as depicted in solid lines.

U.S. Design Patent No. D700,423 - Shoe Upper ("'423 Patent")

Technology Synopsis: This patent protects an ornamental design for a shoe upper. The claimed design consists of a large, textured field that sweeps across the side of the shoe, distinct from the design in the '853 Patent ('423 Patent, Fig. 1).
Asserted Claims: The single claim for the ornamental design as shown and described.
Accused Features: The upper of the Skechers Burst line of shoes (Compl. ¶14, p. 6).

U.S. Design Patent No. D707,032 - Shoe Upper ("'032 Patent")

Technology Synopsis: This patent protects an ornamental design for a shoe upper featuring a distinct textured pattern and lace loop configuration ('032 Patent, Fig. 1).
Asserted Claims: The single claim for the ornamental design as shown and described.
Accused Features: The upper of the Skechers Burst line of shoes (Compl. ¶14, p. 6).

U.S. Design Patent No. D723,781 - Shoe Sole ("'781 Patent")

Technology Synopsis: This patent protects the ornamental design for the bottom of a shoe outsole, characterized by a grid-like pattern of rectangular and square pods separated by channels ('781 Patent, Fig. 1).
Asserted Claims: The single claim for the ornamental design as shown and described.
Accused Features: The sole of the Skechers Women's Flex Appeal, Men's Flex Advantage, Girl's Skech Appeal, and Boy's Flex Advantage shoes (Compl. p. 8).

U.S. Design Patent No. D723,783 - Shoe Sole ("'783 Patent")

Technology Synopsis: This patent protects an ornamental design for a shoe outsole featuring a pattern of segmented pods, similar but distinct from the '781 Patent ('783 Patent, Fig. 1).
Asserted Claims: The single claim for the ornamental design as shown and described.
Accused Features: The sole of the Skechers Women's Flex Appeal, Men's Flex Advantage, Girl's Skech Appeal, and Boy's Flex Advantage shoes (Compl. p. 9).

U.S. Design Patent No. D725,356 - Shoe Sole ("'356 Patent")

Technology Synopsis: This patent protects an ornamental design for the side profile of a shoe sole, featuring a specific curvature and segmented side wall texture ('356 Patent, Fig. 2).
Asserted Claims: The single claim for the ornamental design as shown and described.
Accused Features: The sole of the Skechers Women's Flex Appeal, Men's Flex Advantage, Girl's Skech Appeal, and Boy's Flex Advantage shoes (Compl. p. 10).

U.S. Design Patent No. D725,359 - Shoe Sole ("'359 Patent")

Technology Synopsis: This patent protects an ornamental design for a shoe sole, claiming views of the side, top, and bottom, which feature a combination of a segmented side profile and a pod-based outsole pattern ('359 Patent, Figs. 2, 7).
Asserted Claims: The single claim for the ornamental design as shown and described.
Accused Features: The sole of the Skechers Women's Flex Appeal, Men's Flex Advantage, Girl's Skech Appeal, and Boy's Flex Advantage shoes (Compl. p. 11).

III. The Accused Instrumentality

Product Identification

The complaint identifies two families of accused products: (1) the Skechers "Burst" shoe line, and (2) the Skechers "Women's Flex Appeal," "Men's Flex Advantage," "Girl's Skech Appeal," and "Boy's Flex Advantage" shoe lines (Compl. ¶12).

Functionality and Market Context

The accused products are athletic and lifestyle footwear sold to consumers (Compl. ¶9). The complaint alleges these shoes are sold directly to consumers via e-commerce and retail stores, and also through third-party resellers via a wholesale distribution channel (Compl. ¶17). The complaint asserts infringement by pointing to the overall appearance of the accused shoes, alleging they are "substantially the same" as the designs claimed in the NIKE Patents (Compl. ¶13). The complaint presents a side-by-side comparison in Table 2, juxtaposing Figure 1 of the '853 Patent with photographs of the accused Skechers Women's Burst and Men's Burst shoes (Compl. p. 5). Similarly, Table 5 compares Figure 2 of the '772 Patent to photographs of the accused Women's Flex Appeal and Men's Flex Advantage shoes (Compl. p. 7).

IV. Analysis of Infringement Allegations

For design patents, infringement is determined by the "ordinary observer" test, which asks whether an ordinary observer would believe the accused design to be the same as the patented design. The analysis compares the designs as a whole.

D696,853 Patent Infringement Allegations

Patented Design Feature (from '853 Patent)	Alleged Infringing Feature (in Skechers Burst)	Complaint Citation	Patent Citation
The overall ornamental design of the shoe upper as shown in the patent figures.	The overall ornamental design of the upper on the Skechers Burst shoes.	¶13-14	Figs. 1-4
The specific combination of a textured pattern on the midfoot portion of the upper and the configuration of three curved lace loops.	The complaint's visual evidence in Table 2 shows a textured pattern on the midfoot and a series of lace loops on the accused Skechers Burst shoes.	p. 5	Fig. 2

D723,772 Patent Infringement Allegations

Patented Design Feature (from '772 Patent)	Alleged Infringing Feature (in Skechers Flex Appeal/Advantage)	Complaint Citation	Patent Citation
The overall ornamental design of the shoe sole as shown in the patent figures.	The overall ornamental design of the sole on the accused Skechers Flex Appeal and Flex Advantage shoes.	¶13	Figs. 1-6
The specific side profile view, including its overall curvature and pattern of horizontal segments along the midsole.	The complaint's visual evidence in Table 5 shows a side profile with a similar curvature and segmented midsole on the accused Flex Appeal and Flex Advantage shoes.	p. 7	Fig. 2

Identified Points of Contention

Visual Similarity: The central dispute will be whether the accused Skechers designs are "substantially the same" as the claimed Nike designs in the eye of an ordinary observer. The court will have to weigh the similarities highlighted by Nike against any differences argued by Skechers. Table 4 of the complaint, for instance, compares the '032 patent figures with the Skechers Burst shoe, inviting a direct visual assessment of similarity (Compl. p. 6).
Scope of Protection: The analysis will depend on the scope afforded to the patents. The designs are defined by the solid lines in the drawings, and a key question will be how the presence of prior art designs (not detailed in the complaint) might narrow the scope of protection to the specific novel features of the claimed designs.
Design as a Whole: The infringement analysis requires comparing the designs "as a whole." A potential point of contention is whether the overall visual impression of the accused shoes is dominated by the allegedly copied features, or if other, different design elements are prominent enough to create a distinct overall appearance.

V. Key Claim Terms for Construction

In design patent litigation, the analysis focuses on the visual impression of the claimed design as a whole, rather than the construction of specific textual terms. The scope of the claim is defined by the solid lines in the patent drawings, contrasted with the unclaimed environmental structure shown in broken lines. The key "terms" are therefore the visual features themselves.

The Feature: The "ornamental design for a shoe upper" (e.g., '853 Patent)
Context and Importance: The core of the dispute for the upper patents will be the comparison of the overall visual appearance of the claimed designs with the Skechers Burst shoe. Practitioners may focus on how broadly the "overall appearance" is interpreted—is it the general concept of a woven upper, or the specific pattern and features shown?
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A court could find that the overall impression is defined by the combination of a woven texture in the midfoot with prominent lace loops, and that minor variations in the weave itself do not change the "substantially similar" overall look. The patent claims the design "as shown and described," which could be argued to encompass the holistic impression ('853 Patent, Claim).
- Evidence for a Narrower Interpretation: A court could find the design is limited to the precise texture and shapes depicted in the solid lines. Figure 4 of the '853 Patent provides an enlarged view of the claimed region, suggesting the specific details of the woven pattern are an important part of the design and must be closely appropriated for infringement to be found ('853 Patent, Fig. 4).

VI. Other Allegations

Indirect Infringement

The complaint does not set forth specific factual allegations to support claims for indirect (induced or contributory) infringement. The single claim for relief is for direct infringement under 35 U.S.C. § 271 (Compl. ¶19, 21).

Willful Infringement

The complaint explicitly pleads willful infringement by alleging that "Skechers intended to copy the designs covered by the NIKE Patents" (Compl. ¶16). This allegation is supported by reference to a third-party article describing the accused shoe as having "ripped off" NIKE's "Flyknit" design (Compl. ¶14). The prayer for relief seeks enhanced damages and a determination that the case is exceptional, which are remedies for willful or egregious infringement (Compl. p. 13, ¶¶5, 7).

VII. Analyst’s Conclusion: Key Questions for the Case

A central issue will be one of visual comparison: will an ordinary observer, giving the attention a typical shoe purchaser would, be deceived into thinking the accused Skechers footwear is the same as, or is the source of, the designs protected by Nike’s patents? The case will turn on a holistic comparison of the designs, not just an accounting of similarities and differences.
A key legal and factual question will concern the scope of the patent claims in light of prior art. While not detailed in the complaint, the novelty and non-obviousness of the patented designs over what came before will define the scope of protection. The subsequent survival of the '781 and '783 Patents in IPR proceedings suggests that, for at least those two patents, the designs were deemed patentable over asserted prior art, potentially strengthening Nike's infringement position.
Finally, a critical question will be one of intent: can Nike prove its allegation that Skechers intentionally copied its patented designs? A finding of such willful infringement could expose Skechers to liability for enhanced damages up to three times the actual damages found.