Patent Infringement

In 2008, Nike submitted a patent application for an invention by Nike employees Bhupesh Dua and Edward Thomas. Their invention was an "Article of footwear with a textile upper," more commonly known as Nike's Flyknit technology. The patent was granted in 2010, and Flyknit quickly gained popularity for its lightweight and breathable design. And since its introduction, sneakers with the Flyknit technology have been trendy, worn by athletes such as Kevin Durant, Simone Biles, and the most followed athlete in the world Christiano Ronaldo. But Nike's Flyknit technology became the subject of a very important patent infringement lawsuit in 2012.

Patent holders have certain exclusive rights, namely the exclusive right to manufacture, use, sell, and import the patented invention. Patent infringement is when these exclusive rights are violated. The unauthorized manufacture, use, sale, or importation of a patented invention without the holder's permission is patent infringement.

For example:

  • Unauthorized manufacture: In 2011, Apple sued Samsung for "slavishly copying the iPhone's design and software features” (Kaya 2018) and integrating them into their Galaxy phones to sell.

  • Unauthorized use: This would be if Company A has a patented method to develop a certain product glass. And Company B uses that method to create its glass without Company A’s permission.

  • Unauthorized sale: If Company B sells phones with a patented screen technology owned by Company A without authorization.

  • Unauthorized Importation: If Company A holds a patent for a new type of ticking for a watch, and Company B imports and sells watches that use this technology without obtaining a license or permission.

There are two general types of infringement. First, literal infringement, which is when the accused product contains a replica of at least one claim of the patented invention since it contains every element of that claim. Second, the doctrine of equivalents, which occurs when the allegedly infringing item is substantially similar. In this situation, the infringing product achieves the same goal as the patented product by performing essentially the same function in the same way.

There are three main defenses that can be used to argue against allegations of patent infringement. Firstly, the accused party may prove that their process, product, or composition does not infringe the patent in question, either literally or under the doctrine of equivalents. Secondly, the accused party may prove that the patent in question is invalid. It's important to note that just because the USPTO issued a patent does not necessarily mean that the patent is valid. If the patent is found to lack novelty, nonobvious, or not meet any other legal requirements for patents, it may be deemed invalid. And lastly, the Prior Use Defense which is “A prior user right is the right of a third party to continue the use of an invention where that use began before a patent application was filed for the same invention.” (USPTO).

Notable Patent Infringement Cases In the Footwear Industry

Nike v. Adidas

The legal battle between Nike and Adidas was over their respective Flyknit and Primeknit technologies. In 2012, Nike released its Flyknit line of sneakers, which utilized a unique knitting process to create a lightweight and breathable shoe. A couple of months later, Adidas released its own Primeknit line, which also used a similar knitting process. Nike alleged that Adidas had infringed on its patent for the Flyknit technology and filed a lawsuit against the company.

The case went back and forth for several years, with Adidas arguing “that the knitted construction technique of the Flyknit upper has been used since the 1940s and, therefore, was obvious and not proprietary to Nike” (Anand & Goldstein 2020). Adidas won over Nike in Europe and Nike’s patent was invalidated. However, “Adidas also lost a challenge to the validity of two Nike Flyknit patents at a U.S. appeals court in 2020” (Reuters).

Nike also recently sued Lululemon for patent infringement of Nike’s Flyknit technology. Nike alleges that Lululemon's stretchy material and flat-knitting technologies utilized in its footwear styles, such as the Blissfeel, Strongfeel, Chargefeel Low, and Chargefeel Mid, are too similar to its own Flyknit products. Nike "is seeking an undisclosed sum in damages and a permanent injunction to prevent any further infringement" (Santiago 2023). Nike has previously sued several businesses, including Adidas, PUMA, and Skechers, for infringing on its Flyknit technology patents.

We asked Kenneth Anand, a lawyer and former General Counsel of Kanye West’s YEEZY Apparel, what the most influential patent infringement case was in the sneaker industry:

Crocs v. ITC

The Crocs vs ITC case was a legal battle between Crocs Inc., the popular shoe manufacturer, and the International Trade Commission (ITC) of the United States. In 2018, Crocs filed a complaint with the ITC, alleging that certain accused companies were importing shoes that infringed on Crocs' patents. Specifically, “Crocs argued that numerous companies were importing foam footwear infringing upon its '858 utility patent of breathable footwear pieces and its '789 design patent of the ornamental elements of Crocs footwear” (Anand & Goldstein 2020).

The Federal Circuit concluded that the accused shoes' appearance was very similar to the patented design. The court ruled that they are “not confident that an ordinary observer” could accurately match the drawings without a lot of effort if they were all jumbled up and displayed in the same colors (Crouch 2010). The court concluded that the accused shoes adequately represented the patented design's overall look and posed a risk of consumer confusion. As a result, the court found that the accused shoes had violated Crocs’ design patent.

Skechers v. Hermès

The French luxury fashion business Hermès International was sued by Skechers U.S.A. Inc. in Manhattan federal court claiming its “Eclair” and “Envol” sneakers infringe two Skechers design patents covering the undulating “Massage Fit” soles in its “Go Walk” walking shoes” (Brittain 2023).

Skechers sought an undetermined amount in monetary damages as well as a court order against infringement by Hermès. The lawsuit was eventually settled privately, and the parties ”signed a confidential settlement agreement on [April 24, 2023]” (FashionNetwork 2023). https://fingfx.thomsonreuters.com/gfx/legaldocs/klpykxayrpg/IP%20SKECHERS%20HERMES%20complaint.pdf

References

Anand, K., & Goldstein, J. (2020). Sneaker Law: All you need to know about the sneaker business. Sneaker Law LLC.

Brittain, B. (2022, October 18). Skechers sues Hermès for patent infringement over shoe soles. Reuters; Reuters. https://www.reuters.com/legal/litigation/skechers-sues-herms-patent-infringement-over-shoe-soles-2022-10-18/

Brittain, B. (2022, August 19). Nike, Adidas settle patent fights over shoe technology. Reuters; Reuters. https://www.reuters.com/legal/litigation/nike-adidas-settle-patent-fights-over-shoe-technology-2022-08-19/#:~:text=Nike%20sued%20Adidas%20in%20Oregon,on%20the%20complaint%20in%20January

Crouch, D. (2010, March 23). Fleshing-Out Design Patent Infringement Doctrine. Patently-O. https://patentlyo.com/patent/2010/03/crocs-inc-v-us-international-trade-commission-itc-fed-cir-2010-in-the-matter-of-certain-foam-footware-in-2006-t.html

FashionNetwork.com WW. (2023). Hermès settles Skechers patent lawsuit over shoe soles in NY. FashionNetwork.com. https://ww.fashionnetwork.com/news/Hermes-settles-skechers-patent-lawsuit-over-shoe-soles-in-ny,1510713.html

Kaya Yurieff. (2018, June 27). Apple and Samsung settle their epic patent infringement battle. CNNMoney. https://money.cnn.com/2018/06/27/technology/apple-samsung-patent-infringement-settlement/index.html

Report on Prior User Rights. (n.d.). Retrieved from https://www.uspto.gov/sites/default/files/ip/global/prior_user_rights.pdf

Santiago, E. (2023, January 31). Nike Sues Lululemon for Patent Infringement of Its Sneaker Designs. Retrieved May 11, 2023, from Hypebeast website: https://hypebeast.com/2023/1/nike-sues-lululemon-patent-infringement-info