DCT
1:16-cv-00564
Flatley v. Skechers Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Thomas J. Flatley (Rhode Island)
- Defendant: Skechers, Inc. (California); Robert Greenberg, CEO; Michael Greenberg, Chairman
- Plaintiff’s Counsel: Pro Se
- Case Identification: 1:16-cv-00564, D.R.I., 10/14/2016
- Venue Allegations: The complaint does not specify a basis for venue.
- Core Dispute: Plaintiff alleges that Defendant’s manufactured footwear infringes a utility patent and a design patent related to a specialized, low-friction lacing eyelet system.
- Technical Context: The technology concerns footwear components, specifically eyelets for boots and shoes designed to improve the ease and smoothness of lacing.
- Key Procedural History: The complaint is a pro se filing and does not mention any prior litigation, licensing history, or administrative proceedings related to the patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2013-03-19 | Priority Date for U.S. Patent No. D715,520 |
| 2013-08-05 | Priority Date for U.S. Patent No. 8,826,568 |
| 2014-09-09 | U.S. Patent No. 8,826,568 Issues |
| 2014-10-21 | U.S. Patent No. D715,520 Issues |
| 2016-10-14 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,826,568 - “Lacing System,” issued Sep. 9, 2014 (’568 Patent)
The Invention Explained
- Problem Addressed: The patent identifies that conventional shoe lacing systems, such as grommets and open clasps, can produce high friction. This friction can lead to excessive wear on the shoelaces and make it difficult for a wearer to tighten boots evenly and securely, particularly with high-top styles. (’568 Patent, col. 1:23-38).
- The Patented Solution: The invention is a lacing system featuring specially designed eyelets formed from a single piece of wire or rod. These eyelets have a "U-shaped" configuration with a semicircular central portion that engages the lace. Crucially, the eyelets are mounted so their plane is perpendicular to the shoe's flaps, causing them to extend into the closure gap above the tongue. This orientation, combined with the smooth, curved surface, is intended to allow a shoelace to glide with minimal friction and without snagging. (’568 Patent, Abstract; col. 2:51-67).
- Technical Importance: The described approach sought to improve the functionality and feel of lacing systems for popular athletic, work, and hiking boots by providing a "smooth trouble-free operation" absent in prior art systems. (’568 Patent, col. 4:51-53).
Key Claims at a Glance
- The complaint does not specify which claims are asserted. Independent Claim 1 is the broadest system claim.
- Independent Claim 1 requires:
- A shoe with a tongue and a pair of closure flaps.
- A plurality of "extended eyelets" mounted on the flaps that extend into the closure space.
- Each eyelet having an overall "U-shaped configuration" with a "central semicircular portion" for engaging a lace.
- The eyelet's semicircular portion having a "circular cross-sectional configuration."
- The leg portions of each eyelet being parallel and defining a single plane.
- This plane being positioned "perpendicular to said flaps and said tongue."
- A lacing system where an upward force on the lace ends enables "no snag tightening and loosening."
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Design Patent No. D715,520 - “Low friction extended boot eyelet,” issued Oct. 21, 2014 (’520 Patent)
Technology Synopsis
This design patent claims the unique ornamental appearance of a boot eyelet. The claimed design consists of a U-shaped body formed from a cylindrical rod, which terminates in two flattened, tear-drop shaped ears, each with a circular opening for attachment. (’520 Patent, FIG. 2).
Asserted Claims
Design patents contain a single claim for the ornamental design as shown in the drawings.
Accused Features
The complaint alleges that Skechers' footwear incorporates eyelets that are visually identical to the patented design, specifically alleging that the defendants "changed the route, the path of travel of the shoelace" using eyelets changed from a "horizontal... to an upright perpendicular position." (Compl. p. 6).
III. The Accused Instrumentality
Product Identification
The complaint does not identify any specific models of accused products, referring generally to "manufactured footwear in volume into world-wide distribution." (Compl. p. 4).
Functionality and Market Context
The complaint alleges the accused footwear includes a lacing system where the "eyelets that govern the route were changed from the horizontal level position to an upright perpendicular position." (Compl. p. 6). This is the sole technical description provided of the accused functionality. The complaint further alleges these products are subject to "world-wide distribution" but provides no further detail regarding their market context or commercial importance. (Compl. p. 4).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
’568 Patent Infringement Allegations
The complaint does not provide a claim chart. The following table maps the sparse factual allegations to the elements of Independent Claim 1.
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An improved lacing system for a shoe... each of said flaps including a plurality of extended eyelets mounted in longitudinal separation thereon wherein said eyelets extend into said closure space... | Plaintiff alleges the infringement is based on "a lacing system and unique eyelet construction," and that "defendants... entered into the open raceway of the shoe." The complaint does not provide sufficient detail for analysis of the specific structure or mounting of the accused eyelets. | ¶[p. 6] | col. 4:6-19 |
| each of said planes being positioned perpendicular to said flaps and said tongue... | "The eyelets that govern the route were changed from the horizontal level position to an upright perpendicular position." | ¶[p. 6] | col. 4:26-28 |
| a lacing having a longitudinal strand-like body... crisscross threaded through said eyelets such that upward force... will enable the lacing body to smoothly engage the inner surface of said central portions... | "Here they changed the route, the path of travel of the shoelace." | ¶[p. 6] | col. 4:25-31 |
Identified Points of Contention
- Evidentiary Questions: The complaint's allegations are conclusory and lack factual support, such as identification of specific accused products or photographic evidence. A primary issue will be whether any Skechers product actually incorporates eyelets with the specific structural features required by Claim 1 (e.g., U-shape, circular cross-section, parallel legs).
- Technical Questions: A key question is whether the accused system functions as claimed. What evidence does the complaint provide that the accused system enables "no snag tightening" as a result of an "upward force" on the laces, as required by the final limitation of Claim 1? The complaint alleges only a change in the "path of travel of the shoelace." (Compl. p. 6).
V. Key Claim Terms for Construction
The Term: "perpendicular to said flaps"
- Context and Importance: This term is central to the claimed invention's novel orientation and is the most specific technical allegation in the complaint ("upright perpendicular position," Compl. p. 6). Practitioners may focus on this term because the patent specification provides a potentially restrictive definition.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that "perpendicular" should be interpreted functionally to mean an orientation that achieves the goal of extending the eyelet into the closure space to reduce friction, allowing for minor deviations from a true 90-degree angle.
- Evidence for a Narrower Interpretation: The specification explicitly defines this orientation: "The plane of the U-shaped body... is positioned normal to, that is, in a plane 90 degrees to the general plane formed by the flaps." (’568 Patent, col. 4:37-41). This language may support a narrow construction limited to a precise 90-degree angle.
The Term: "eyelet semicircular portion having a circular cross-sectional configuration"
- Context and Importance: This term defines the shape of both the lace-engaging surface and the material from which it is made. Its construction is important for determining the scope of the claim relative to eyelets made with different material profiles (e.g., flat or stamped metal).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent’s objective is to provide a "low friction inner surface." (’568 Patent, col. 4:18-19). A party might argue that any cross-section that is substantially circular to achieve this low-friction purpose should fall within the claim's scope.
- Evidence for a Narrower Interpretation: The specification describes forming the eyelet from "solid circular wire or rod stock." (’568 Patent, col. 4:9-11). This suggests the inventor contemplated a specific material form factor, which could be used to argue for a narrower construction limited to eyelets with a truly circular cross-section.
VI. Other Allegations
Willful Infringement
The complaint does not use the term "willful," but it seeks relief for "egregious and punitive harm done by intrusions." (Compl. p. 4). The complaint does not allege any facts to support a finding of willfulness, such as pre-suit knowledge of the patents.
VII. Analyst’s Conclusion: Key Questions for the Case
- Evidentiary Sufficiency: The case's immediate hurdle is evidentiary. Can the pro se plaintiff identify specific accused products and present evidence demonstrating that they meet, element-by-element, the structural and functional limitations of the asserted claims? The complaint's current conclusory allegations may be insufficient to proceed past a motion to dismiss.
- Definitional Scope: A core legal issue for the '568 Patent will be claim construction, particularly for the term "perpendicular to said flaps." The patent's explicit definition of this term as "90 degrees" could create a significant challenge for proving literal infringement if the accused products deviate even slightly from this precise geometric orientation.
- Design Infringement Standard: For the '520 Design Patent, the central question will be the application of the "ordinary observer" test. Assuming an accused product is identified, the court will need to determine if its overall ornamental appearance is substantially the same as the patented design, such that an ordinary observer would be deceived into purchasing the accused product believing it was the patented design.