Crocs Inc v. PolliWalks Inc

1. Case Identification

• Patent #: 8,613,148
• Filed: February 10, 2014
• Petitioner(s): Crocs, Inc.
• Patent Owner(s): Polliwalks, Inc.
• Challenged Claims: 1-19

2. Patent Overview

• Title: Footwear with Three-Dimensional Character Designs
• Brief Description: The ’148 patent is directed to footwear, such as clogs, manufactured via a molding process. The footwear features a three-dimensional animal or character design on its upper portion and, in some claims, a corresponding footprint pattern on the sole, with the entire shoe being substantially formed from molded materials that transition from a fluid to a solid state during manufacturing.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 2, 4, 15-18 under §102 over Ishizawa

• Prior Art Relied Upon: Ishizawa (Japanese Application # 2006-43114).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ishizawa, which was not considered during prosecution, discloses every element of the challenged claims. Ishizawa taught injection-molded shoes with three-dimensional character designs (e.g., cars, cats, monkeys) formed as recessed or raised portions on the shoe's upper. Petitioner asserted that Ishizawa explicitly described using injection molding, a process where material transitions from a fluid to a solid state, and noted that this manufacturing technology "has long been known." Ishizawa also disclosed that design features could be formed from separate components bonded to the main shoe body, anticipating dependent claims directed to multi-piece construction.

Ground 2: Obviousness of Claims 1-19 under §103 over Seamans

• Prior Art Relied Upon: Seamans (published as Application # 2004/0231189, issued as Patent 6,993,858).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Seamans taught the fundamental invention: a shoe (the original Crocs clog) made from a molded material (EVA) that transitions from a fluid to a solid state, featuring three-dimensional decorative patterns on the upper and sole. While Seamans disclosed patterns like bumps and ventilators, Petitioner contended that applying this known molding process to create different ornamental shapes, such as the claimed animal figures, was an obvious design choice.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would be motivated to adapt the molding process taught by Seamans to create any desired three-dimensional pattern, including animal or character figures, to increase the commercial appeal of the footwear. This motivation was allegedly supported by public commentary referring to the Seamans shoe as resembling a "crocodile's snout."
  • Expectation of Success: A POSITA would have a high expectation of success because it would only require modifying the shape of the mold, which is a routine and predictable step in the well-understood injection molding process detailed by Seamans.

Ground 3: Obviousness of Claims 1-19 under §103 over Ishizawa and Seamans in view of Morris

• Prior Art Relied Upon: Ishizawa (Japanese Application # 2006-43114), Seamans (Application # 2004/0231189), and Morris (published as Application # 2004/0148805, issued as Patent 6,957,504).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the teachings of Ishizawa and Seamans (molded shoes with 3D character uppers) by adding Morris to address claims requiring a corresponding animal footprint on the sole (e.g., claims 3 and 6). Morris was cited for its express teaching of a shoe with a 3D ornamental theme on the upper (a dinosaur) and a sole with a corresponding "indentation of a footprint of the dinosaur."
  • Motivation to Combine: A POSITA would combine the footprint-imprinting sole of Morris with the molded character shoes of Ishizawa and/or Seamans for the simple, predictable purpose of enhancing the product's theme. Creating a shoe where the sole's tread matches the upper's character design was argued to be a common-sense combination of known elements to appeal to consumers, particularly children.
  • Expectation of Success: The combination was presented as yielding nothing more than predictable results, as it involved applying a known type of sole design (from Morris) to a known type of shoe (from Ishizawa/Seamans) using well-established manufacturing methods.

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 3 in the petition) for claims 1, 2, 4, 5, and 15-19 based on the combination of Seamans and Ishizawa, arguing that combining their respective features was a predictable variation to achieve a known result.

4. Key Claim Construction Positions

• Petitioner argued that claim terms like "three-dimensional animal or character design" and its associated features are purely ornamental and aesthetic.
• Citing the printed matter doctrine, Petitioner contended these non-functional, decorative elements should not be given patentable weight in the obviousness analysis. The argument was that if the underlying process of making a molded shoe is known, simply changing the decorative shape of the mold does not create a non-obvious invention.

5. Key Technical Contentions (Beyond Claim Construction)

• A central technical contention was that injection molding for footwear was a mature and well-understood technology long before the ’148 patent.
• Petitioner maintained that creating varied and intricate three-dimensional surfaces is an inherent and predictable capability of this process. Therefore, the specific ornamental design claimed in the ’148 patent was not a technical achievement but a routine design choice achievable by simply modifying a mold.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of all challenged claims, 1-19, of Patent 8,613,148 as unpatentable under 35 U.S.C. §§ 102 and 103.