DCT
2:17-cv-01322
Townsend v
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Herbert E. Townsend (Florida)
- Defendant: Brooks Sports, Inc. (Washington)
- Plaintiff’s Counsel: McAndrews Held & Malloy; Buchanan Ingersoll & Rooney
- Case Identification: 2:17-cv-00062, M.D. Fla., 02/01/2017
- Venue Allegations: Venue is alleged to be proper in the Middle District of Florida because the defendant conducts significant business in the district, is registered with the Florida Department of State, and has allegedly committed acts of patent infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s running shoes featuring "Brooks DNA" adaptive cushioning technology infringe a patent related to shoe midsoles that incorporate dilatant compounds to provide speed-dependent cushioning and energy return.
- Technical Context: The technology at issue involves advanced materials for athletic footwear designed to provide soft, shock-absorbing cushioning during low-impact activities like walking, while becoming firm and energy-returning during high-impact activities like running.
- Key Procedural History: The complaint notes that Defendant Brooks Sports holds its own patent (U.S. Patent No. 8,209,885) for a "Shoe Assembly With Non-Linear Viscous Liquid," which the complaint connects to the accused "Brooks DNA" technology. While not mentioned in the complaint, as it occurred post-filing, the provided patent documentation includes an Inter Partes Review (IPR) certificate for the patent-in-suit. This certificate, resulting from IPR2018-00577, indicates that Claim 1—the primary claim asserted in the complaint—and Claim 6 of the patent-in-suit were cancelled as of June 5, 2020. This post-filing development fundamentally affects the asserted basis of the lawsuit.
Case Timeline
| Date | Event |
|---|---|
| 2004-01-26 | '416 Patent - Earliest Priority Date |
| 2009-02-17 | '416 Patent - Issue Date |
| 2017-02-01 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,490,416: "Shoe With Cushioning And Speed Enhancement Midsole Components And Method For Construction Thereof" (Issued Feb. 17, 2009)
The Invention Explained
- Problem Addressed: The patent's background describes a fundamental trade-off in conventional running shoes, which are typically made with materials having a fixed elastic modulus. This forces a design choice between soft, low-modulus materials that are good for cushioning and shock absorption, and firm, high-modulus materials that are better for storing and returning elastic energy to improve running speed. (’416 Patent, col. 2:6-18).
- The Patented Solution: The invention proposes a shoe with an adaptive midsole to solve this problem. It incorporates an insert containing a "dilatant compound" into a cavity within the shoe's midsole (’416 Patent, Abstract). A dilatant compound is described as a material that behaves like a soft, pliable liquid under slow application of force (e.g., walking) but temporarily solidifies and becomes elastic and "bouncy" under rapid impact (e.g., running) (’416 Patent, col. 2:40-43). This allows a single shoe to provide comfortable cushioning at low speeds and efficient energy return at high speeds.
- Technical Importance: This technology offers a method for creating footwear that automatically adjusts its mechanical properties based on the user's activity level, potentially eliminating the need to choose between shoes optimized for comfort versus performance (’416 Patent, col. 1:15-22).
Key Claims at a Glance
- The complaint asserts infringement of at least independent Claim 1 (Compl. ¶23).
- The essential elements of Claim 1 are:
- A shoe to be worn on a foot, said shoe comprising a midsole having a top surface,
- said shoe midsole fabricated from material having a fixed elastic modulus
- and having at least one cavity formed in said top surface below the bottom of the foot,
- said at least one cavity filled with material consisting essentially of a dilatant compound,
- all of which material consisting essentially of a dilatant compound is retained below the bottom of the foot.
- The complaint does not explicitly assert other claims but may implicitly reserve the right to do so.
III. The Accused Instrumentality
Product Identification
- The complaint identifies "Brooks DNA Insert Shoes" as the accused products (Compl. ¶18).
Functionality and Market Context
- The accused products are athletic running shoes containing a cushioning material that Brooks markets as "Brooks DNA" (Compl. ¶11). The complaint alleges these shoes feature midsoles with at least one cavity containing an insert made of this "Brooks DNA" material (Compl. ¶¶ 18-19).
- Brooks is alleged to describe "Brooks DNA" as a "highly viscous non-Newtonian material... that adapts to the specific force you apply to it," a behavior referred to as "adaptive cushioning" (Compl. ¶12). The plaintiff alleges this material is "stiff under fast loading and is softer when loaded slowly" (Compl. ¶19).
- The complaint does not provide sufficient detail for analysis of the products' commercial importance or market positioning.
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
'416 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A shoe to be worn on a foot, said shoe comprising a midsole having a top surface, | Defendant makes, uses, and sells athletic shoes that include midsoles. | ¶18 | col. 4:40-50 |
| said shoe midsole fabricated from material having a fixed elastic modulus | The midsoles of the accused shoes are allegedly "made of a material that has an elastic modulus that does not change with loading." | ¶18 | col. 8:30-32 |
| and having at least one cavity formed in said top surface below the bottom of the foot, | The accused shoes' midsoles have "at least one cavity formed in the midsole from the top surface of the midsole." | ¶18 | col. 4:1-3 |
| said at least one cavity filled with material consisting essentially of a dilatant compound, | The cavity is filled with an insert made of "Brooks DNA" material, which the complaint alleges "is a dilatant material as described by the 416 patent." | ¶¶19, 21 | col. 8:32-35 |
| all of which material consisting essentially of a dilatant compound is retained below the bottom of the foot. | The insert of Brooks DNA material allegedly "fills the cavity" which is located in the midsole, thereby being retained below the foot. | ¶19 | col. 8:36-38 |
- Identified Points of Contention:
- Substantive Viability: The most significant issue is that Claim 1, the sole independent claim explicitly asserted, was cancelled in an IPR proceeding that concluded after the complaint was filed. This raises the question of whether the plaintiff has a viable cause of action under the current complaint or if it must seek to amend its infringement contentions to rely on other surviving claims.
- Technical Question: A central dispute, should the case proceed on other claims, will be whether the accused "Brooks DNA" material, which Brooks describes as a "highly viscous non-Newtonian material" (Compl. ¶12), meets the patent's specific claim limitation of a "dilatant compound." The parties will likely present conflicting expert testimony on the precise rheological properties of the accused material versus the definition of "dilatant" in the patent.
- Factual Question: The infringement allegation rests on the assertion that the surrounding midsole has a "fixed elastic modulus" (Compl. ¶18). The defendant may challenge this characterization of its midsole foam, which could require material testing to resolve.
V. Key Claim Terms for Construction
The Term: "dilatant compound"
- Context and Importance: This term is the technological core of the asserted claims. Whether the accused "Brooks DNA" material falls within the scope of this term is central to the infringement analysis. Practitioners may focus on this term because the complaint ties infringement directly to the properties of this specific type of material (Compl. ¶21).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides a functional definition, stating a dilatant compound is one "that changes from soft and pliable under slow application of a load to elastic and bouncy under rapid application of a load" (’416 Patent, col. 2:40-43). Plaintiff may argue this broad, functional language should control.
- Evidence for a Narrower Interpretation: The specification also provides a specific example of a dilatant compound, Silly Putty®, and describes a preferred embodiment using a specific chemical mixture including "dimethyl siloxane, hydroxy-terminated polymers with boric acid" (’416 Patent, col. 2:51; col. 4:16-21). Defendant may argue the term should be construed more narrowly in light of these specific disclosures.
The Term: "consisting essentially of"
- Context and Importance: This transitional phrase modifies "dilatant compound" and determines whether the presence of other, unrecited substances in the accused "Brooks DNA" material avoids infringement. Its definition will be critical to determining if the accused material, which may be a complex blend, meets the claim limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Case law generally interprets this phrase to permit the presence of additional components so long as they do not "materially affect the basic and novel properties" of the claimed invention. Plaintiff will likely argue that the "basic and novel" property is the dilatant behavior, and any other components in Brooks' formulation are immaterial.
- Evidence for a Narrower Interpretation: Defendant may argue that other components in its "Brooks DNA" blend are not mere impurities but are essential to its "adaptive cushioning" functionality and materially alter the properties beyond those of a simple "dilatant compound." The patent’s repeated focus on the dilatant compound itself as the active element could support an interpretation where other functional additives are excluded (’416 Patent, Abstract; col. 5:32-44).
VI. Other Allegations
- Indirect Infringement: The complaint does not plead specific facts or make allegations to support a claim for indirect infringement.
- Willful Infringement: The prayer for relief requests a finding of willful infringement and trebled damages (Compl. p. 5, ¶¶ B-C). The complaint does not allege specific facts demonstrating pre-suit knowledge of the ’416 patent. However, it does allege that Defendant Brooks obtained its own patent on similar technology, a fact a plaintiff could potentially use to argue that Brooks was a sophisticated actor aware of the relevant patent landscape (Compl. ¶13).
VII. Analyst’s Conclusion: Key Questions for the Case
- A dispositive threshold issue is one of procedural viability: given the post-filing cancellation of the primary asserted claim (Claim 1) in an IPR, can the plaintiff's case proceed? This will turn on whether the plaintiff can successfully amend its complaint to assert infringement of other, surviving claims from the ’416 patent and whether the initial allegations can support such an amendment.
- A core issue will be one of definitional scope: can the term "dilatant compound," as defined and used within the ’416 patent, be construed to read on the defendant’s "Brooks DNA" material, which is marketed as a "highly viscous non-Newtonian material"? The outcome will likely depend on a technical, expert-driven analysis of the materials' respective properties.
- A key evidentiary question will be one of factual proof: can the plaintiff demonstrate that the accused products meet all limitations of a valid claim, particularly the requirement that the surrounding midsole is made from a material with a "fixed elastic modulus"? This element, which creates the technical problem the invention purports to solve, will require factual evidence that may be contested by the defendant.