Brooks Sports Inc v. Puma Se

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Brooks Sports, Inc. (Washington)
  • Defendant: Puma Se (Germany)
  • Plaintiff’s Counsel: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Case Identification: 3:24-cv-00668, E.D. Va., 09/24/2024
• Venue Allegations: Plaintiff Brooks asserts that venue is proper because Defendant PUMA is a foreign corporation not residing in the United States and is subject to personal jurisdiction in the district under 35 U.S.C. § 293, which governs suits against foreign patentees who have not designated a U.S. agent for service of process.
• Core Dispute: Plaintiff Brooks seeks a declaratory judgment that its Glycerin 21 line of running shoes does not infringe Defendant PUMA's patent related to outsole patterns for footwear.
• Technical Context: The dispute concerns the design of outsoles in the highly competitive performance athletic footwear market, where specific tread patterns can be engineered to affect flexibility, stiffness, and traction.
• Key Procedural History: The complaint alleges a history of worldwide trademark litigation between the parties. This action was precipitated by an August 7, 2024 letter from PUMA to Brooks, which accused the Glycerin 21 product line of infringing a then-unpublished patent application and demanded that Brooks cease all sales and destroy existing inventory. This application subsequently issued as the patent-in-suit on the same day this complaint was filed.

Case Timeline

Date	Event
2021-08-09	'825 Patent earliest priority date
2021-12-01	Brooks begins wear testing Glycerin 21 product line
2023-12-01	Brooks' Glycerin 21 product line first released for sale
2024-04-30	PUMA files the application that led to the '825 Patent
2024-08-05	USPTO allows the application
2024-08-07	Puma Sends infringement allegation letter to Brooks
2024-08-22	PUMA's patent application is published
2024-09-24	U.S. Patent No. 12,096,825 issues
2024-09-24	Brooks files this Declaratory Judgment complaint

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

U.S. Patent No. 12,096,825 - "OUTSOLE PATTERN FOR AN ARTICLE OF FOOTWEAR"

The Invention Explained

• Problem Addressed: The patent describes a challenge in athletic footwear design: balancing the need for sole stiffness, which can aid in running propulsion, with the need for flexibility, which allows for natural foot movement and comfort (’825 Patent, col. 1:50-63). The specification notes that restricting the flexion of the foot, particularly at the toes, can negatively impact a user's performance (id.).
• The Patented Solution: The invention is a shoe sole with a specific pattern of ridges on its ground-engaging surface. This pattern comprises a set of ridges that are "concentrically aligned" around an "epicenter" located in the forefoot area, corresponding to the big toe joint (’825 Patent, Abstract; col. 9:8-12). The ridges are designed with alternating "tall" and "short" portions. The aligned short portions create a "flex zone" intended to bend more easily, while the tall portions create "stiffening zones" to provide support and traction elsewhere (id., col. 3:6-12; col. 11:1-14).
• Technical Importance: This design purports to offer a method for selectively engineering different stiffness and flexibility properties across the outsole to work in concert with the natural biomechanics of a runner's foot (’825 Patent, col. 2:1-7).

Key Claims at a Glance

• The complaint notes that PUMA's pre-suit letter accused claims 1-30 of infringement, which includes independent claims 1, 13, and 23 (Compl. ¶4, ¶18, ¶23).
• Independent claim 1 recites the following essential elements:
  • A sole for an article of footwear with defined medial, lateral, forefoot, midfoot, and heel regions;
  • A set of ridges "concentrically aligned around and emanating outwardly from an epicenter" that is located in the forefoot, closer to the medial side;
  • The ridges are disposed in all three regions (forefoot, midfoot, and heel);
  • A set of spaces extending concentrically between the ridges;
  • The ridges have a "plurality of short portions" with a height smaller than adjacent "tall portions"; and
  • A "flex zone" that is defined by the short portions and is configured to flex more than stiffening zones of the sole.

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused products as the "Glycerin 21 product line," which includes the Glycerin 21, Glycerin GTS 21, Glycerin StealthFit 21, and Glycerin StealthFit GTS 21 running shoes (Compl. ¶3).

Functionality and Market Context

The complaint describes the Glycerin 21 line as a commercially successful and well-regarded line of performance running shoes, noted by industry press for providing "cushioning, support and stability" as well as a "smooth and comfortable" stride (Compl. ¶11, ¶14). A visual included in the complaint depicts the side profile and the outsole of the "Brooks' Glycerin 21 Men's Running Shoe" (Compl. p. 5).

IV. Analysis of Infringement Allegations

The complaint seeks a declaratory judgment of non-infringement and does not include a detailed element-by-element infringement analysis or claim chart. Instead, it presents a narrative theory of non-infringement. Brooks' central allegation is that its Glycerin 21 products do not meet all the limitations of any claim of the ’825 Patent (Compl. ¶29).

Specifically, the complaint asserts that the accused products lack at least two elements that are recited in all asserted claims:

1. "a set of ridges concentrically aligned around and emanating outwardly from an epicenter that is disposed within the forefoot region and closer to the medial side than the lateral side"
2. "a set of spaces that extend concentrically between respective ridges of the set of ridges" (Compl. ¶29).

This focused denial suggests that the core of the dispute will be whether the geometric pattern on the outsole of the Glycerin 21 shoes meets the patent's specific definitions for its ridge structure. The provided image of the shoe's outsole shows a pattern of grooves and raised surfaces, but the precise geometric relationship of these features is not fully discernible from the photograph (Compl. p. 5).

• Identified Points of Contention:
  • Scope Questions: The dispute raises the question of how the terms "epicenter" and "concentrically aligned" should be construed. A central issue will be whether the patent’s claim language requires a pattern of substantially circular ridges originating from a single, identifiable point, or if it can be interpreted more broadly to cover other non-circular, wave-like patterns that may be present on the accused shoe's outsole.
  • Technical Questions: A key factual question for the court will be whether the Glycerin 21 outsole, upon technical inspection, actually incorporates the specific geometric structure required by the claims. The complaint's targeted denial suggests that Brooks' position is that its outsole design is based on a fundamentally different, non-concentric pattern that lacks a single "epicenter."

V. Key Claim Terms for Construction

• The Term: "epicenter"

• Context and Importance: This term defines the origin point for the entire claimed ridge pattern. The existence and location of an "epicenter" on the accused products is a dispositive issue for infringement, as Brooks specifically denies its presence (Compl. ¶29). Practitioners may focus on this term because its interpretation—as either a precise point or a general area—will likely determine the outcome of the infringement analysis.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent does not provide a standalone definition of "epicenter," which a party could argue supports a broader, more general meaning of a "center point" or "origin area."
  • Evidence for a Narrower Interpretation: The specification consistently links the epicenter's location to a specific anatomical landmark: the "first metatarsal-phalangeal joint of a big toe" (’825 Patent, col. 9:10-12). The figures also depict the epicenter as a discrete point (e.g., "130" in Fig. 4), which may support a narrower construction requiring a specific, identifiable origin point.

• The Term: "concentrically aligned"

• Context and Importance: This term describes the geometric layout of the ridges relative to the epicenter. Its construction is critical because Brooks' non-infringement defense hinges on its outsole pattern not being "concentric" (Compl. ¶29). The dispute will likely focus on whether this term requires mathematically perfect or near-perfect circularity, or if it can encompass other curved patterns.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: A party may argue that in the context of an irregular, flexible shoe sole, "concentrically aligned" should not be limited to perfect circles. The patent's own figures show ridges that are not perfectly circular yet are described as part of a concentric set, which could support a construction that includes generally curved shapes sharing a common developmental origin (’825 Patent, Fig. 4).
  • Evidence for a Narrower Interpretation: The specification repeatedly refers to the features as "circular ridges" (’825 Patent, col. 8:55). This language, combined with dictionary definitions of "concentric" (sharing a common center), may support an argument that the claims require the ridges to be substantially circular or arc-shaped around the epicenter.

VI. Other Allegations

• Indirect Infringement: The complaint's prayer for relief seeks a declaratory judgment of non-infringement for indirect infringement (Compl. ¶ A). However, the body of the complaint focuses on the lack of direct infringement and does not provide a separate factual basis for why Brooks would not be liable for inducement or contributory infringement.
• Willful Infringement: Not applicable, as this is a declaratory judgment action filed by the accused infringer. PUMA has not filed a complaint or counterclaim alleging willfulness.

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

This declaratory judgment action appears to be a preemptive strike by Brooks, framed to force an early resolution on narrow, potentially dispositive grounds. The case will likely turn on the following central questions:

1. A core issue will be one of definitional scope: Can the geometric terms "epicenter" and "concentrically aligned," which the patent ties to specific anatomical locations and circular patterns, be construed broadly enough to read on the potentially different, wave-like outsole design of the Brooks Glycerin 21 shoe?
2. A key evidentiary question will be one of factual correspondence: Does the accused outsole pattern, when technically analyzed, actually feature a single origin point from which its ridges emanate in a concentric manner as claimed, or is there a fundamental mismatch in the geometric principles of the two designs?