DCT
1:25-cv-00161
Columbia Insurance v. Storm Products
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Columbia Insurance Company (Nebraska) and Sofft Shoe Company, LLC (Delaware)
- Defendant: Storm Products, Inc. (Utah)
- Plaintiff’s Counsel: Sandbright, PLLC
- Case Identification: 1:25-cv-00161, D. Utah, 10/17/2025
- Venue Allegations: Venue is asserted in the District of Utah on the basis that Defendant Storm Products, Inc. is a Utah corporation and therefore resides in the district for patent venue purposes.
- Core Dispute: Plaintiffs allege that Defendant’s "3G Racer" line of bowling shoes infringes two patents related to footwear kits with interchangeable foreparts that can be used on either the left or right shoe.
- Technical Context: The technology addresses the specialized needs of bowlers, whose performance depends on having customizable shoe soles that provide specific levels of traction or slide, by creating a universal sole system compatible with both left and right shoes.
- Key Procedural History: The complaint alleges that the President of Defendant Storm, Mr. Tyler Jensen, is a former employee of Plaintiff Sofft who, during his prior employment, was aware of a parent patent to the patents-in-suit and the commercial products embodying the technology. This allegation is central to Plaintiffs' claim for willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2008-11-14 | Earliest Patent Priority Date ('375 and '239 Patents) |
| 2013-06-11 | Parent Patent U.S. 8,458,927 Issued |
| 2020-09-15 | U.S. Patent No. 10,772,375 Issued |
| 2024-12-02 | Plaintiffs Obtained Sample of Accused Product |
| 2025-06-17 | U.S. Patent No. 12,329,239 Issued |
| 2025-10-17 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,772,375 - "Interchangeable Foreparts for Shoes"
- Patent Identification: U.S. Patent No. 10,772,375, issued September 15, 2020. (Compl. ¶11).
The Invention Explained
- Problem Addressed: The patent's background describes the challenges faced by bowlers who require shoes with different sole materials for sliding and traction depending on lane conditions. ( Compl. ¶15; ’375 Patent, col. 1:21-34). It also notes the inefficiency for manufacturers in maintaining inventory for both right- and left-handed bowlers, as conventional shoes are typically "handed." (’375 Patent, col. 1:43-50).
- The Patented Solution: The invention is a footwear kit where the left and right shoes, while having asymmetric overall shapes, are designed with toe regions whose peripheral shapes are "substantially identical." (’375 Patent, col. 2:39-42). This specific design allows a single, symmetrically-shaped removable forepart (sole) to be attached to the toe region of either the left or the right shoe, solving the handedness and inventory problem. (’375 Patent, col. 6:11-23; Fig. 2).
- Technical Importance: This approach enables the production of a single, universal forepart compatible with both shoes in a pair, which can reduce manufacturing complexity and inventory costs for retailers and manufacturers. (’375 Patent, col. 6:17-23).
Key Claims at a Glance
- The complaint asserts independent claim 2. (Compl. ¶¶ 22, 34).
- Essential elements of Claim 2 include:
- A footwear kit comprising a left shoe and a right shoe.
- Each shoe comprises a midsole having a "toe region," defined as the area in front of a line at least three-eighths of the distance from the shoe's frontmost edge to its back.
- The midsole periphery of the left shoe is different from that of the right shoe (i.e., the shoes are asymmetric).
- The toe region periphery of the left shoe is "substantially identical" to the toe region periphery of the right shoe.
- The toe region peripheries of both shoes are "substantially symmetric" about a centerline running from front to back.
U.S. Patent No. 12,329,239 - "Interchangeable Foreparts for Shoes"
- Patent Identification: U.S. Patent No. 12,329,239, issued June 17, 2025. (Compl. ¶13).
The Invention Explained
- Problem Addressed: The ’239 Patent addresses the same problems as its parent ’375 Patent: the need for customizable soles in bowling and the manufacturing inefficiencies associated with producing shoes for both right- and left-handed players. (’239 Patent, col. 1:26-52).
- The Patented Solution: This patent also discloses a footwear kit with asymmetric shoes and an interchangeable forepart. The claims focus on specific geometric constraints of the toe region itself. For example, the toe region is claimed as being "substantially symmetric" about a front-to-back centerline, while simultaneously being "substantially asymmetric" about a perpendicular (left-to-right) centerline. (’239 Patent, col. 8:36-44). This specific combination of symmetry and asymmetry in the shoe's design facilitates the use of a universal forepart.
- Technical Importance: The invention provides a specific geometric design rule for the shoe's toe region that ensures compatibility with an interchangeable forepart, streamlining the manufacturing of customizable, non-handed bowling shoes. (’239 Patent, col. 6:15-27).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 9. (Compl. ¶¶ 22, 40).
- Essential elements of Claim 1 include:
- A footwear kit with a left shoe, a right shoe, and at least one forepart.
- Each shoe has a toe region that is "substantially symmetric about a first center line" (front-to-back) and "substantially asymmetric about a second center line" (left-to-right).
- Each shoe as a whole has a peripheral shape that is "substantially asymmetric."
- The forepart has a periphery that "substantially matches" the toe region periphery of both the left and right shoes.
- Claim 9 is similar but separately defines the symmetric and asymmetric properties for the left and right shoe toe regions.
- The complaint states that the accused products infringe claims 1-7, 9-17, and 19-20, thereby reserving the right to assert dependent claims. (Compl. ¶22).
III. The Accused Instrumentality
Product Identification
The accused products are the Storm "3G Racer" series of bowling shoes, including the 3G Dial Racer, 3G Racer White/Holo, and 3G Racer Mesh. The complaint's analysis focuses on the "3G Racer White/Holo" model. (Compl. ¶¶ 20-21, 24).
Functionality and Market Context
The 3G Racer products are marketed as having a "signature Pull Tab sole system [which] allows for effortless interchangeability." (Compl. ¶21). The complaint alleges the products are sold as a footwear kit that includes a left shoe, a right shoe, a replacement forepart, and a replacement heel. (Compl. ¶26, p. 6). The complaint provides a photograph of the purchased 3G Racer White/Holo kit, showing the shoes, extra soles, and a carrying bag. (Compl. ¶26, p. 6). Plaintiffs allege that these products compete directly with their own Dexter® brand bowling shoes. (Compl. ¶29).
IV. Analysis of Infringement Allegations
’375 Patent Infringement Allegations
| Claim Element (from Independent Claim 2) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a left shoe and a right shoe, each shoe comprising a midsole having a toe region, which is the entire area in front of a selected line at least three eighths of the distance between a frontmost edge of the shoe and a back of the shoe | The 3G Racer White/Holo includes a left and right shoe, each with a toe region alleged to be the area from the frontmost edge to a line at least three-eighths of the distance to the back, as shown in an annotated photograph. (Compl. ¶26, p. 7). | ¶26 | col. 4:57-60 |
| wherein the midsole periphery of the left shoe is different from the midsole periphery of the right shoe | The complaint alleges the left and right shoes of the 3G Racer are asymmetric and mirror images of each other. | ¶26 | col. 6:12-14 |
| wherein the toe region periphery of the left shoe is substantially identical to the toe region periphery of the right shoe | The complaint alleges the peripheral shapes of the toe regions of the accused left and right shoes are substantially identical, as demonstrated in an annotated overlay photograph. (Compl. ¶26, p. 9). | ¶26 | col. 6:14-17 |
| wherein the toe region peripheries of the left shoe and the right shoe are substantially symmetric about a centerline from the front of the shoe through the toe region | The complaint alleges the toe region peripheries are substantially symmetrical about a centerline, shown in an annotated photograph. (Compl. ¶26, p. 10). | ¶26 | col. 6:14-17 |
’239 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a footwear kit comprising: a left shoe; a right shoe | The 3G Racer White/Holo is sold as a footwear kit including a left and right shoe. | ¶27 | col. 8:32-34 |
| wherein said toe region is substantially symmetric about a first center line running from a front...and substantially asymmetric about a second center line perpendicular to said first center line | The complaint alleges the toe region of the accused shoes is substantially symmetrical about a front-to-back centerline and asymmetrical about a left-to-right centerline, illustrated with annotated lines on a product photograph. (Compl. ¶27, p. 12). | ¶27 | col. 6:15-20 |
| at least one forepart; wherein said at least one forepart has a periphery which substantially matches a periphery of said toe region of both said left shoe and said right shoe | The accused kit includes a removably attachable forepart, and the complaint includes photographs demonstrating that the same forepart can be placed on the toe region of both the left and right shoes. (Compl. ¶27, p. 14). | ¶27 | col. 5:36-45 |
| wherein said toe region covers an entire area until at least three eighths of a distance from said frontmost edge to a backmost edge | The accused shoe's toe region is alleged to cover the area from the front edge to a line at least three-eighths of the distance to the back edge, supported by annotated photographs with measurement lines. (Compl. ¶27, p. 16). | ¶27 | col. 4:59-66 |
- Identified Points of Contention:
- Scope Questions: The dispute may center on the proper construction of relative terms like "substantially identical," "substantially matches," and "substantially symmetric/asymmetric." The degree of geometric deviation permitted by these terms will be a central legal question.
- Technical Questions: A key factual question will be whether the accused 3G Racer shoes meet the specific geometric definitions recited in the claims. For example, does the demarcation of the removable forepart on the accused shoe satisfy the "at least three eighths of the distance" limitation for the "toe region," and do the toe regions exhibit the specific combination of symmetry and asymmetry required by the ’239 Patent?
V. Key Claim Terms for Construction
The Term: "substantially identical" (from '375 Patent, Claim 2)
- Context and Importance: This term is critical to the ’375 Patent's core concept. The infringement allegation hinges on whether the toe regions of the otherwise asymmetric left and right shoes are similar enough to be considered "substantially identical," thereby enabling interchangeability. Practitioners may focus on this term because its breadth will determine whether minor differences in the accused product's left and right toe regions avoid infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification's focus on the functional outcome—allowing for "interchangeable attachment of various foreparts" (’375 Patent, col. 6:17-20)—may support a construction where "substantially identical" means functionally equivalent for the purpose of attaching the same forepart, even with some geometric variance.
- Evidence for a Narrower Interpretation: The patent's figures, such as FIG. 2, depict the toe region shapes as appearing to be perfect overlays. A defendant may argue this context limits "substantially" to encompass only minor manufacturing tolerances.
The Term: "toe region" (from '375 Patent, Claim 2 and '239 Patent, Claims 1 and 9)
- Context and Importance: The claims provide an explicit definition for this term based on a geometric ratio ("the entire area in front of a selected line at least three eighths of the distance..."). The infringement analysis depends entirely on whether the physical area covered by the accused product's removable forepart meets this definition.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides embodiments with different ratios, such as "from about three eighths to about five eighths" or "from about one half to about three fourths" of the shoe's length, suggesting the "at least three eighths" language should be read as a floor, not a precise point. (’375 Patent, col. 2:50-59).
- Evidence for a Narrower Interpretation: Because the patentee acted as its own lexicographer by providing a specific definition in the claim itself, arguments to deviate significantly from that definition may be constrained. The definiteness of the "three eighths" ratio will be a point of focus.
VI. Other Allegations
- Willful Infringement: The complaint alleges that Defendant’s infringement was and continues to be willful. (Compl. ¶¶ 35, 41). The factual basis for this allegation is twofold: first, that Storm was aware of the patents-in-suit since their respective issue dates (Compl. ¶¶ 30, 32); and second, the more specific allegation that Storm's President, Mr. Tyler Jensen, is a former employee of Plaintiff Sofft who was aware of the parent patent (U.S. Patent No. 8,458,927) and the Dexter® commercial products embodying the patented technology during his prior employment. (Compl. ¶31).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: how will the court construe the recurring term "substantially" as it applies to the geometric properties of the shoe components (e.g., "substantially identical" and "substantially symmetric")? The resolution of whether this term implies functional equivalence or near-perfect geometric correspondence could be dispositive.
- A key evidentiary question will be one of geometric compliance: do the physical measurements of the accused 3G Racer shoes align with the specific numerical and directional limitations of the asserted claims, such as the "at least three eighths" ratio defining the "toe region" and the dual symmetry/asymmetry requirements?
- A critical question for damages will be scienter and intent: can Plaintiffs prove that Defendant, particularly through its President's alleged knowledge of the parent patent family from his prior employment, had pre-suit knowledge of the patented technology and proceeded to infringe in a manner that would be considered egregious, thereby supporting a finding of willfulness?