Crocs Inc v. PolliWalks Inc

1. Case Identification

• Case #: IPR2014-00423
• Patent #: 8,371,043
• Filed: February 10, 2014
• Petitioner(s): Crocs, Inc.
• Patent Owner(s): Polliwalks, Inc.
• Challenged Claims: 1-15

2. Patent Overview

• Title: Molded Footwear
• Brief Description: The ’043 patent relates to footwear where a three-dimensional animal or character figure is integrated into the shoe as a single, molded piece. During prosecution, the patentee asserted that using injection molding to create an integrated, one-piece shoe with such detailed features was difficult and distinguished the invention from prior art.

3. Grounds for Unpatentability

Ground 1: Anticipation over Seamans - Claims 1, 13, and 15 are anticipated by Seamans under 35 U.S.C. §102.

• Prior Art Relied Upon: Seamans (Patent 6,993,858).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Seamans, which was considered by the examiner only for a heel strap, discloses every element of the challenged independent claims. Seamans teaches a shoe where the upper and sole are fabricated as a single unit via an injection molding process using materials like EVA copolymer. It further discloses molding three-dimensional patterns of any desired form, including projections and recesses like bumps and ventilators. Petitioner asserted that the overall shape of the shoe disclosed in Seamans was contemporaneously recognized as resembling a "crocodile's snout," thereby teaching the "three-dimensional animal...figure" limitation. Seamans thus allegedly taught the exact one-piece construction with 3D features that the patentee claimed was novel.

Ground 2: Obviousness over Seamans in view of Ishizawa - Claims 1, 13, and 15 are obvious over Seamans in view of Ishizawa.

• Prior Art Relied Upon: Seamans (Patent 6,993,858) and Ishizawa (Japanese Publication No. 2006-43114).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Seamans teaches the foundational one-piece molded shoe structure and manufacturing process. Ishizawa, which was not before the examiner, teaches forming a shoe's main body as a single unit from synthetic resin into the explicit shape of an animal (e.g., cat, monkey), character, or vehicle. Ishizawa further teaches that these figures are formed three-dimensionally through injection molding, which it describes as a "long been known" technology.
  • Motivation to Combine: A POSITA would combine Seamans's proven manufacturing method with Ishizawa’s explicit decorative figures to expand the variety of commercially appealing and low-cost shoes for children. Ishizawa’s stated goal of creating inexpensive, appealing children's shoes provides a clear reason to apply its aesthetic designs to a known one-piece shoe platform like that taught by Seamans.
  • Expectation of Success: Because both references rely on conventional injection molding techniques, a POSITA would have had a high expectation of success. The combination involved applying a known type of ornamentation (from Ishizawa) to a known product (from Seamans) using a known technique to achieve the predictable result of a one-piece, animal-themed shoe.

Ground 3: Obviousness over Ishizawa and/or Seamans in view of Morris - Claims 1-15 are obvious over Ishizawa and/or Seamans in view of Morris.

• Prior Art Relied Upon: Ishizawa (Japanese Publication No. 2006-43114), Seamans (Patent 6,993,858), and Morris (Patent 6,957,504).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed the remaining claims directed to a sole with an imprinting surface that relates to the figure on the shoe's upper. Seamans and Ishizawa teach the basic one-piece, molded animal-themed shoe. Morris expressly teaches the specific imprinting-sole concept, disclosing a shoe with a three-dimensional first ornamental theme on the upper (e.g., a dinosaur) and a sole with a three-dimensional third ornamental theme comprising an indentation of a footprint of the dinosaur. Morris thus teaches that the animal figure on the upper relates to the animal print on the sole.
  • Motivation to Combine: A POSITA would be motivated to add the imprinting sole feature of Morris to the one-piece molded shoes of Seamans or Ishizawa to enhance the product's play value and commercial appeal to children. This represents a simple combination of known elements to create a more feature-rich product.
  • Expectation of Success: The combination would yield predictable results. Applying a known sole pattern from Morris to a known type of molded shoe from Seamans or Ishizawa would have been a straightforward modification for a POSITA using well-understood molding technology.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 1-15 are obvious over Seamans alone and claims 1, 13, and 15 are obvious over Ishizawa alone, based on similar design modification theories.

4. Key Claim Construction Positions

• Petitioner argued that the claim term "three-dimensional animal [or character figure] with one or more features" and other related aesthetic limitations are purely ornamental and non-functional.
• It was contended that these decorative features have no functional relationship with the shoe substrate and, therefore, should not be afforded patentable weight. Petitioner asserted that merely applying a new design to an article using a well-known manufacturing process does not make the article non-obvious.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-15 of the ’043 patent as unpatentable under 35 U.S.C. §102 and §103.