552 F.Supp.3d 139
D. Mass.2021Background
- Converse, maker of the Run Star Hike sneaker, owns U.S. Design Patents D873,547 (the ‘547 Patent) and D874,106 (the ‘106 Patent) covering aspects of that sneaker’s sole tread design.
- Steven Madden, Ltd. began selling two relevant shoes in 2020: the Winnona Flatform HighTop Sneaker (Winnona) and the Shark Sneaker.
- Converse sent three cease-and-desist notices (March–May 2020) alleging that the Winnona and Shark infringe the ‘106 and ‘547 patents; Madden continued sales.
- Converse sued in May 2020 alleging (Count I) infringement of the ‘106 Patent by the Winnona and Shark and (Count II) infringement of the ‘547 Patent by the Shark.
- Madden moved to dismiss Count I as to the Winnona under Rule 12(b)(6), arguing the Winnona’s full-length tread cannot infringe the ‘106 Patent, which claims only a rear-portion tread.
- The court denied the motion, finding the patent illustrations and Winnona photographs not plainly dissimilar and concluding dismissal was premature because an ordinary observer could be deceived.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Count I (infringement of the ‘106 Patent by the Winnona) plausibly states a claim under Rule 12(b)(6) | Converse: Premature to resolve claim construction; accused and claimed designs are not clearly dissimilar and an ordinary observer could be deceived | Madden: Winnona’s tread extends full length whereas the ‘106 Patent covers only rear portion; designs are substantially different, so claim is facially implausible | Denied dismissal. Side-by-side comparison not plainly dissimilar; reasonable factfinder could find ordinary-observer confusion, so claim survives pleading stage |
| Whether dismissal is appropriate as a matter of law where no reasonable factfinder could find infringement | Converse: similarity on key rear-sole tread elements supports plausible claim; not appropriate to decide now | Madden: differences in coverage of tread are dispositive and preclude infringement as a matter of law | Court declined to decide infringement as a matter of law at pleading stage; factual inquiry required |
Key Cases Cited
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) (pleading must state a claim that is plausible on its face)
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (courts need not accept legal conclusions or bare conclusory statements)
- Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294 (Fed. Cir. 2010) (design-patent infringement uses the ordinary-observer test)
- MSA Prods. v. Nifty Home Prods., 883 F. Supp. 2d 535 (D.N.J. 2012) (design-infringement claims may be dismissed on Rule 12(b)(6) only when designs are plainly dissimilar)