Rothy's, Inc. v. Birdies, Inc.

Background

Rothy’s sued Birdies for allegedly infringing five Rothy’s design patents: U.S. Design Patent Nos. D885,016, D885,017, D870,425, D909,718, and D925,874. The patents claim loafer designs with a knitted appearance. Birdies introduced an original Blackbird loafer before Rothy’s obtained the patents; that shoe was made of black calf hair. After Rothy’s obtained patent protection, Birdies introduced a new Blackbird made of knitted material.

Birdies moved for summary judgment, which is a decision without a trial when the evidence leaves no genuine dispute for a jury to decide. Birdies primarily argued that the patents were invalid because the designs were obvious in light of earlier designs. Birdies relied mainly on its original calf-hair Blackbird as the primary earlier design. Birdies also argued that the ’017 patent was invalid because the original Blackbird already disclosed the claimed design, and argued that its knitted Blackbird did not infringe even if the patents were valid.

Patent validity

For design-patent obviousness, the court explained that the relevant question is whether a designer with ordinary skill would have found it obvious to combine earlier designs to create the same overall visual appearance as the patented design. The analysis first requires a primary reference: an existing design whose characteristics are basically the same as the claimed design.

The court held that a reasonable jury would not be compelled to find that the original Blackbird was basically the same as Rothy’s patented designs. Although the shoes shared some structural features and a similar silhouette, the original Blackbird used calf hair, while all five patents claimed a knitted appearance. The court stated that a jury could find that calf hair and knit create different visual impressions. Birdies had not identified another shoe that could serve as a primary reference, and the other references identified in its motion also did not require a finding that they were basically the same as Rothy’s designs.

The court separately rejected Birdies’s anticipation argument concerning the ’017 patent. Anticipation occurs when a single earlier reference is identical in all material respects to the claimed invention. The court held that the calf-hair Blackbird was not so identical to the knitted loafer shown in the ’017 patent that no reasonable jury could reach the opposite conclusion. The court also rejected Birdies’s argument that the ’017 patent did not claim a knitted appearance merely because its written description did not expressly use the same wording as another patent. According to the court, the intersecting lines in the ’017 patent visually suggested knitted material.

Infringement

Design-patent infringement is assessed under the ordinary-observer test. The question is whether an ordinary purchaser, paying the attention usually given when buying the product, would see the two designs as substantially the same and be led to purchase one believing it was the other. The designs must be compared as a whole and in light of earlier designs.

The court held that a reasonable jury could find Birdies’s knitted Blackbird infringing each of Rothy’s five patents. Using the ’718 patent as an example, the court identified similarities in the shoes’ silhouettes, knitted appearance, elongated bodies, pointed toes, gussets, toe springs, and elongated vamps. The court concluded that an ordinary consumer might be confused by the designs. The court said the same reasoning applied to the other four patents.

The court recognized differences that could support Birdies at trial, including shallower gussets, the absence of the patents’ raised heel counter, and a somewhat less angled toe point. But those differences had to be considered in the context of the designs as a whole. Because infringement does not require identical designs, the court held that the similarities were sufficient to allow a reasonable jury to find infringement.

The court also rejected Birdies’s arguments that differences in color prevented infringement as a matter of law. It concluded that the patents did not claim color contrasts in the unclaimed toe or heel portions, that the ’017 patent claimed no particular color, and that the black material shown in the ’718 patent represented knitted texture rather than a requirement that the shoe be black.

Ruling

Judge Vince Chhabria denied Birdies’s motion for summary judgment. The court held that Birdies had not established as a matter of law that Rothy’s patents were invalid, and had not shown as a matter of law that Birdies’s knitted Blackbird did not infringe. The court described infringement as a close question but left those issues for a jury.