DCT
2:24-cv-00940
Puma Se v. Brooks Sports Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Puma Se (Germany) and PUMA North America Inc. (Delaware)
- Defendant: Brooks Sports, Inc. (Washington)
- Plaintiff’s Counsel: Lowe Graham Jones PLLC; Quarles & Brady LLP
- Case Identification: 2:24-cv-00940, W.D. Wash., 11/08/2024
- Venue Allegations: Venue is alleged to be proper as Defendant Brooks Sports, Inc. has its principal place of business in the Western District of Washington and has allegedly committed acts of infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s high-performance athletic shoes infringe five utility patents and five design patents related to advanced sole structures, cushioning systems, and ornamental designs.
- Technical Context: The lawsuit concerns innovations in the highly competitive market for elite running shoes, focusing on sole geometries and specialized foam materials designed to enhance cushioning and energy return.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of U.S. Patent No. 11,825,904 in January 2024, an event that may be central to allegations of willful infringement for that patent.
Case Timeline
| Date | Event |
|---|---|
| 2020-08-18 | Earliest Priority Date for ’904, ’629, ’630, ’422, ’816 Patents |
| 2023-11-28 | U.S. Patent No. 11,825,904 Issues |
| 2024-01-01 | Plaintiff alleges Defendant had knowledge of the ’904 Patent (at least as of) |
| 2024-05-07 | U.S. Patent No. 11,974,629 Issues |
| 2024-05-07 | U.S. Patent No. 11,974,630 Issues |
| 2024-06-25 | U.S. Patent No. 12,016,422 Issues |
| 2024-09-24 | U.S. Patent No. 12,096,816 Issues |
| 2024-11-08 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,825,904 - "Article of Footwear Having a Sole Plate"
Issued: November 28, 2023
The Invention Explained
- Problem Addressed: The patent background describes the challenge in designing footwear soles that provide stability, cushioning, and stiffness to reduce energy loss during athletic activity, noting the need for improved cushioning systems and structural characteristics like sole plates (’904 Patent, col. 1:35-50, col. 2:15-20).
- The Patented Solution: The invention is a sole structure featuring two distinct cushioning members—one in the heel region and one in the forefoot region—separated by a physical gap. A sole plate bridges this gap, extending from the first cushioning member to the second, creating a decoupled system intended to offer tuned performance characteristics across different zones of the foot (’904 Patent, Abstract; col. 2:27-36). FIG. 6 illustrates a cross-section of this arrangement, showing the sole plate (636) positioned between the cushioning members (630, 632) and the upper (’904 Patent, FIG. 6).
- Technical Importance: This design allows for the independent functioning and material selection of the forefoot and heel cushioning components, a key strategy in modern running shoes to optimize both impact absorption at heel-strike and energy return at toe-off (’904 Patent, col. 9:22-34).
Key Claims at a Glance
- The complaint asserts independent Claim 14 (Compl. ¶¶ 20-21, 61).
- The essential elements of Claim 14 include:
- A sole structure for an article of footwear having an upper, the sole structure comprising:
- a first cushioning member;
- a second cushioning member that is spaced apart from the first cushioning member by a gap that extends between the first cushioning member and the second cushioning member; and
- a sole plate that extends across the gap from the first cushioning member to the second cushioning member, the sole plate extending away from the upper moving across the gap from the first cushioning member to the second cushioning member, wherein the sole plate is positioned within at least one of the first cushioning member and the second cushioning member.
- The complaint alleges infringement of "at least Claim 14" (Compl. ¶ 61).
U.S. Patent No. 11,974,629 - "Article of Footwear Having a Sole Plate"
Issued: May 7, 2024
The Invention Explained
- Problem Addressed: The patent addresses the need for footwear with improved cushioning systems and structural features to enhance comfort, fit, and performance (’629 Patent, col. 2:15-20).
- The Patented Solution: The invention specifies a sole architecture where a first cushioning member (heel-to-midfoot) and a second cushioning member (forefoot-to-midfoot) are both coupled to the upper and "overlap in the midfoot region" while being spaced apart to define a gap. Critically, the patent requires that at least one of these cushioning members is a "supercritical foam," a lightweight material known for high energy return (’629 Patent, Abstract; col. 11:2-10). The use of supercritical foam with nitrogen pockets is explicitly mentioned (’629 Patent, col. 3:5-13).
- Technical Importance: The explicit claiming of "supercritical foam" places this invention at the center of the modern "super shoe" trend, where advanced foam compounds are a primary driver of performance enhancements (’629 Patent, col. 10:20-48).
Key Claims at a Glance
- The complaint asserts independent Claim 1 (Compl. ¶¶ 23-24, 68).
- The essential elements of Claim 1 include:
- An article of footwear having a sole structure and an upper, the sole structure comprising:
- a first cushioning member directly coupled to the upper and extending continuously between a heel region and a midfoot region of the sole structure; and
- a second cushioning member directly coupled to the upper and extending continuously between a forefoot region and the midfoot region of the sole structure,
- wherein the first cushioning member and the second cushioning member overlap in the midfoot region and are spaced apart to define a gap that extends between the first cushioning member and the second cushioning member in the midfoot region of the sole structure,
- the gap having a centerline defined between the first cushioning member and the second cushioning member, the centerline following a contour of an end of at least one of the first cushioning member and the second cushioning member that bounds the gap when viewed from a bottom of the article of footwear;
- and wherein at least one of the first cushioning member or the second cushioning member are a supercritical foam.
- The complaint alleges infringement of "at least Claim 1" (Compl. ¶ 68).
U.S. Patent No. 11,974,630
- Technology Synopsis: This patent relates to an article of footwear with a specific outsole construction. The outsole is claimed as having a front segment and a discontinuous rear segment, where the front segment is composed of medial and lateral segments with a "plurality of lobes" that form a "continuous undulating peripheral edge" with a defined number of inflection points (Compl. ¶ 27; ’630 Patent, Abstract). This geometry is intended to provide specific flexibility and ground interaction characteristics.
- Asserted Claims: Claim 15 (independent) (Compl. ¶ 26).
- Accused Features: The sole structure of the Brooks Hyperion Elite LD shoe is alleged to infringe (Compl. ¶ 27).
U.S. Patent No. 12,016,422
- Technology Synopsis: This patent describes a sole structure with a multi-part midsole and an exposed sole plate. A key feature is a "substantially flat angled portion" at the heel, configured to increase ground contact during a heel strike, with the sole plate positioned relative to this angled portion (’422 Patent, Abstract; Compl. ¶ 30). This geometry is designed to manage impact forces and transition the runner's gait.
- Asserted Claims: Claim 14 (independent) is asserted against two products; Claim 9 is also mentioned as being infringed (Compl. ¶¶ 29, 31, 82).
- Accused Features: The sole structures of the Brooks Hyperion Elite 4 and Hyperion Max 2 shoes are alleged to infringe (Compl. ¶¶ 30, 32).
U.S. Patent No. 12,096,816
- Technology Synopsis: This patent focuses on a sole structure containing a midsole with an internal "pocket" that houses a sole plate. The invention specifies a distinct geometry in the heel region, defining a "substantially flat region" that creates a "resting plane" and an "entry region" configured to form a gap between the midsole and that plane (’816 Patent, Abstract; Compl. ¶ 36). This is intended to create a specific rocker-like effect at the heel.
- Asserted Claims: Claims 18 through 28. Claim 18 is a dependent claim that adds a midfoot arch to independent Claim 1, which is the basis for the infringement charts (Compl. ¶¶ 34-37, 89).
- Accused Features: The sole structures of the Brooks Hyperion Elite 4 and Hyperion Max 2 shoes are alleged to infringe (Compl. ¶¶ 36, 37).
III. The Accused Instrumentality
Product Identification
The accused products are performance running shoes from Defendant's "Hyperion" and "Aurora" lines: Hyperion Elite MD, Aurora-BL, Hyperion Elite LD, Hyperion Elite 4, and Hyperion Max 2 (Compl. ¶¶ 20, 23, 26, 29, 31, 37).
Functionality and Market Context
The complaint targets the sole structures of these shoes. The allegations focus on their multi-part midsoles, the inclusion of internal plates, and the use of specialized cushioning materials. For example, the complaint alleges the Aurora-BL uses "Nitrogen-injected DNA LOFT v3 cushioning," which it contends is a supercritical foam (Compl. ¶ 24, p. 6). The Hyperion Elite 4 is shown in a cross-section photograph to have a multi-part midsole and an internal plate exposed via a cutout, features central to the allegations regarding the ’422 and ’816 Patents (Compl. p. 11, ¶ 30). A photograph of the Hyperion Elite MD cut in half shows two separate cushioning members with a plate extending between them (Compl. p. 4, ¶ 21). These products are positioned in the high-performance running shoe market where advanced sole technologies are a primary competitive feature (Compl. ¶ 17).
IV. Analysis of Infringement Allegations
U.S. Patent No. 11,825,904 - Infringement Allegations
| Claim Element (from Independent Claim 14) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A sole structure for an article of footwear having an upper, the sole structure comprising: | The accused Hyperion Elite MD is an article of footwear with an upper and a sole structure. | ¶21, p. 4 | col. 2:27-28 |
| a first cushioning member; | The accused shoe has a rear cushioning element identified as the "first cushioning member." | ¶21, p. 4 | col. 2:29-30 |
| a second cushioning member that is spaced apart from the first cushioning member by a gap that extends between the first cushioning member and the second cushioning member; and | The accused shoe has a front cushioning element identified as the "second cushioning member," separated from the first by a visible gap. | ¶21, p. 4 | col. 2:30-33 |
| a sole plate that extends across the gap from the first cushioning member to the second cushioning member, the sole plate extending away from the upper moving across the gap ... wherein the sole plate is positioned within at least one of the first cushioning member and the second cushioning member. | The accused shoe contains an internal "sole plate" that is shown in a cutaway view to extend across the gap and be positioned within the first and second cushioning members. | ¶21, p. 4 | col. 2:33-36 |
Identified Points of Contention
- Scope Questions: A potential point of dispute may arise from the claim language "the sole plate extending away from the upper moving across the gap." The photograph provided in the complaint shows a plate that appears largely parallel to the plane of the upper (Compl. p. 4, ¶ 21). The defense could argue that this geometry does not satisfy the "extending away" limitation, raising the question of whether this term requires a distinct, measurable angle of departure from the upper.
U.S. Patent No. 11,974,629 - Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An article of footwear having a sole structure and an upper, the sole structure comprising: | The accused Aurora-BL is an article of footwear with an upper and a sole structure. | ¶24, p. 5 | col. 11:2-3 |
| a first cushioning member directly coupled to the upper and extending continuously between a heel region and a midfoot region...; and | The accused shoe has a rear cushioning element that extends from the heel to the midfoot region. | ¶24, p. 5 | col. 11:4-6 |
| a second cushioning member directly coupled to the upper and extending continuously between a forefoot region and the midfoot region... | The accused shoe has a front cushioning element that extends from the forefoot to the midfoot region. | ¶24, p. 6 | col. 11:7-9 |
| wherein the first cushioning member and the second cushioning member overlap in the midfoot region and are spaced apart to define a gap... | The two cushioning members are alleged to overlap in the midfoot region and are separated by a visible gap. | ¶24, p. 6 | col. 11:10-14 |
| and wherein at least one of the first cushioning member or the second cushioning member are a supercritical foam. | The complaint alleges the accused shoe's "Nitrogen-injected DNA LOFT v3 cushioning" is a supercritical foam. | ¶24, p. 6 | col. 11:21-23 |
Identified Points of Contention
- Technical Questions: The central technical dispute for this patent will likely be whether the Defendant's "Nitrogen-injected DNA LOFT v3 cushioning" meets the definition of a "supercritical foam." The complaint supports this allegation with a screenshot of Defendant’s marketing materials describing a "nitrogen-injection process" (Compl. p. 6, ¶ 24). This raises an evidentiary question that will likely require expert testimony on material science and manufacturing processes to resolve.
- Scope Questions: The meaning of "overlap in the midfoot region" may become a point of contention. The parties may dispute the extent of overlap required to meet this limitation and how to define the boundaries of the "midfoot region" in the accused product.
V. Key Claim Terms for Construction
U.S. Patent No. 11,825,904
- The Term: "extending away from the upper"
- Context and Importance: This term is critical because it defines the geometric relationship between the sole plate and the upper as the plate crosses the gap. The infringement analysis depends on whether the accused product's plate, which appears largely parallel to the upper in the complaint's visual, satisfies this requirement (Compl. p. 4, ¶ 21).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the sole plate as having "spring and damping properties" (’904 Patent, col. 9:33-34). A party could argue that any geometry that facilitates this spring-like function, even one without a dramatic angle, meets the "extending away" requirement.
- Evidence for a Narrower Interpretation: Figure 6 of the patent shows a sole plate (136) with a distinct upward curve as it moves from heel to toe, which could be interpreted as "extending away" from the flatter plane of the insole/upper (’904 Patent, FIG. 6). A party could argue this embodiment limits the term to a visibly curved or angled structure.
U.S. Patent No. 11,974,629
- The Term: "supercritical foam"
- Context and Importance: This term is a dispositive limitation in Claim 1. Infringement hinges on whether the accused shoe's cushioning material is classified as such. The complaint explicitly alleges that Defendant's "Nitrogen-injected DNA LOFT v3" is a supercritical foam, citing Defendant's own description of a "nitrogen-injection process" (Compl. p. 6, ¶ 24).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification describes the foam as being formed through a "supercritical foaming process" which "may comprise micropore foams or particle foams, such as a TPU, EVA, PEBAX®, or mixtures thereof" and can be manufactured using a supercritical fluid like N2 (nitrogen) (’629 Patent, col. 10:20-29). This language could support a broad definition covering any foam made with such a process, regardless of the precise base polymer.
- Evidence for a Narrower Interpretation: A defendant might argue that the term, in the context of the patent, implies specific resulting physical properties (e.g., cell structure, density, energy return percentage) that its foam does not exhibit. The patent’s description of the process creating "small pockets within the material" could be used to argue for a specific required microstructure (’629 Patent, col. 10:32-35).
VI. Other Allegations
Indirect Infringement
The complaint includes allegations of active inducement of infringement for all asserted utility patents, stating Defendant actively induced others (e.g., end-users) to directly infringe (Compl. ¶¶ 64, 71, 78, 85, 92). The complaint does not, however, specify the particular acts of inducement, such as references to user manuals or advertising.
Willful Infringement
For the ’904 Patent, willfulness is alleged based on pre-suit knowledge, with Plaintiff claiming it provided notice to Defendant's VP Legal & General Counsel "at least as January 2024" (Compl. ¶¶ 1, 62, 63). For the ’629, ’630, ’422, and ’816 patents, willfulness is alleged based on knowledge acquired no later than the filing of the original or amended complaint (Compl. ¶¶ 70, 77, 84, 91).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of technical definition: will expert evidence establish that Defendant's "Nitrogen-injected DNA LOFT v3" material is a "supercritical foam" as that term is understood in the context of the ’629 Patent, or does it fall outside the patent's technical scope?
- A key question of claim construction will be the interpretation of geometric and relational limitations across the patents, such as whether the accused sole plate is "extending away from the upper" ('904 Patent) or whether the accused heel geometries create the specific "entry region" and "resting plane" claimed in the ’816 Patent.
- A significant issue for damages will be willfulness, particularly for the ’904 Patent, where the allegation of pre-suit notice to Defendant's legal department raises the possibility of enhanced damages if infringement is found to be deliberate.