Stride Rite ChildRen's Group LLC v. Shoes BY Firebug LLC

1. Case Identification

• Case #: IPR2017-01810
• Patent #: 9,301,574
• Filed: July 18, 2017
• Petitioner(s): Stride Rite Children's Group, LLC
• Patent Owner(s): Shoes by Firebug LLC
• Challenged Claims: 1-10

2. Patent Overview

• Title: Internally Illuminated Footwear
• Brief Description: The ’574 patent discloses internally illuminated footwear, such as a shoe or boot, having a multi-layer construction. The invention focuses on diffusing light from internal illumination sources (e.g., LEDs) through various layers, including a light diffusing section, to create a visual effect of radiant illumination across the footwear's outer surface.

3. Grounds for Unpatentability

Ground 1: Obviousness over Parker and Rosko - Claims 1, 5, 6, 8, and 9 are obvious over Parker in view of Rosko.

• Prior Art Relied Upon: Parker (Patent 5,894,686) and Rosko (Application 2011/0271558).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Parker disclosed nearly all elements of independent claim 1, including an athletic shoe with an internal light distribution system, a liner, and an upper with a light-diffusing "window." Parker's system used optical fibers. The only element Petitioner asserted was absent from Parker was an "interfacing layer" that is "adjacently connected to" the upper. Rosko disclosed a lighted panel for footwear using more robust LEDs as the light source, which could be placed anywhere on the footwear. The combination of Parker and Rosko was alleged to teach all limitations of claim 1. For dependent claims, Rosko’s disclosure of batteries in the heel portion and Parker’s disclosure of a power source between the liner and upper were argued to render claims 5 and 6 obvious. Parker's inherently light-impermeable outer shoe covering was argued to teach the "light impermeable section" of claim 8.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the references to substitute Parker's fragile and expensive optical fibers with Rosko's more robust and cost-effective LED-based illumination system. Rosko itself identified optical fibers and LEDs as known alternatives for illuminating footwear.
  • Expectation of Success: A POSITA would have a high degree of success because both references are directed to lighted footwear and teach analogous light-emitting elements with reflective backings. The modification was argued to be a simple substitution of one known illumination source for another to achieve a predictable result.

Ground 2: Obviousness over Parker, Rosko, and Guerra - Claims 3, 4, and 10 are obvious over Parker, Rosko, and Guerra.

• Prior Art Relied Upon: Parker (Patent 5,894,686), Rosko (Application 2011/0271558), and Guerra (Patent 5,813,148).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the combination of Parker and Rosko from Ground 1 and added Guerra to teach the "stencil layer" limitation required by claims 3, 4, and 10. Petitioner contended that Guerra disclosed an athletic shoe with an illuminating display that included a "decorative layer" which could be an "opaque film, preferably die-cut with letters, numbers, etc." This die-cut opaque film, placed underneath a translucent layer, functioned as the claimed stencil layer with an "aesthetic cut." Guerra also disclosed a translucent film with opaque letters, which Petitioner argued satisfied the limitations of a stencil layer configured as an aesthetic design.
  • Motivation to Combine: A POSITA would be motivated to add Guerra's die-cut opaque film (stencil layer) to the Parker/Rosko illuminated shoe to display branding, logos, or other designs. This modification would enhance the fashion and design detail of the shoe, which was a known objective in the footwear industry and consistent with Parker's goal of providing a logo or text to its light-up window.
  • Expectation of Success: The combination was asserted to be a straightforward application of a known decorative technique (Guerra's stencil) to a known product (Parker/Rosko's illuminated shoe) to achieve the predictable result of an illuminated design.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claim 2 is obvious over Parker, Rosko, and Dua (Patent 6,910,288) for teaching a textile outer layer, and that claim 7 is obvious over Parker, Rosko, and Guzman (Application 2005/0183294) for teaching the arrangement of light sources in a decorative pattern.

4. Key Claim Construction Positions

• "Upper": Petitioner argued that the broadest reasonable interpretation of "upper" is "the exterior layer(s) of a shoe or boot above the sole." This construction was asserted to be necessary because the claims recite other components like a "liner" and "interfacing layer" as being positioned interior to the upper, distinguishing the "upper" from the shoe's entire structure above the sole.
• "Aesthetic Design": Based on dictionary definitions and the patent's specification, Petitioner proposed that the broadest reasonable interpretation of "aesthetic design" is a "graphic, logo, image, text, shape, pattern or decoration." This construction was central to mapping prior art references that disclosed logos or characters onto the claims.
• "Aesthetic Cut": Consistent with the above, Petitioner argued that an "aesthetic cut" should be construed as "an opening forming a graphic, logo, image, text, shape, pattern or decoration." This was important for arguing that Guerra's die-cut film met the limitations of claim 3.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-10 of the ’574 patent as unpatentable under 35 U.S.C. §103.