Commission Issues Advisory Opinion on Certain Foam Footwear (337-TA-567) – Intellectual Property


United States: Commission issues advisory opinion on certain foam footwear (337-TA-567)

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On March 28, 2022, the ITC issued an advisory opinion in Some foam shoes (Inv. No. 337-TA-567) finding that the Northside Classic Fur Lined clog from Triple T Trading Ltd. (“Triple T”) with permanent fleece lining and its Northside clog with permanent plastic washers do not infringe claims 1 or 2 of U.S. Patent No. 6,993,858 (“the ‘858 patent”), and therefore do not come within the scope of the General Exclusion Order (“GEO”) issued in connection with the investigation.

For your information, investigation 337-TA-567 was initiated in 2006 based on a complaint filed by Crocs, Inc. (“Crocs”) alleging a violation of Section 337 in the sale/ importation of certain foam footwear which infringed claims 1-2 of the ‘858 patent and US Patent No. D517,789 (“the ‘789 design patent”). On July 25, 2008, the Commission issued a final decision finding no violation of Section 337. On July 15, 2011, after an appeal to the Federal Circuit and subsequent remand reversing the previous finding of no violation of the Commission (to see our article of February 24, 2010 for more details regarding the Federal Circuit opinion), the Board found a violation of Section 337 based on infringement of the asserted claims of the patents at issue, granting, among others, a GEO and a Cease and Desist Order (“CDO”) against Double Diamond Distribution, Ltd. of Saskatoon, Canada (“Double Diamond”). The GEO-covered foam shoe that infringes claims 1 and 2 of the ‘858 patent and the ‘789 design patent. The CDO against Double Diamond only covered foam shoes that infringe claim 2 of the ‘858 patent and the ‘789 design patent (because Double Diamond only infringed claim 2 of the ‘858 patent and the ‘789 design patent 789). To see our message of July 20, 2011 for more details regarding the Commission’s decision on the remedial orders and the termination of the investigation.

The ‘789 design patent expired on March 28, 2020. Accordingly, the GEO and CDO, by their terms, relate only to articles which infringe claims 1 and 2 of the ‘858 patent. On November 17, 2021, Triple T requested the institution of an expedited advisory opinion proceeding to determine whether two models of its footwear – its fleece-lined footwear and its footwear with plastic washers – fall within the scope. of the EMB. The Commission initiated an advisory opinion procedure on 17 December 2021.

According to the notice, the Commission has determined that Northside Classic Fur Lined and Northside Clog clogs (which include a permanent fleece lining or plastic washers, respectively) which are designed, attached and sized to prevent “direct contact” between straps and the base of the shoe at this point of connection, do not infringe claims 1 or 2 of the ‘858 patent and are therefore not within the scope of GEO. More specifically, claim 1 states in its relevant part that “the webbing section is made of direct contact with the moldable material of the base section and pivots relative to the base section at the connectors. . . . ” (emphasis added), and claim 2 also states “the section of the strap is in direct contact with the base section and pivots relative to the base section. . . .” (emphasis ours). Thus, “[t]The fundamental issue on which the infringement of the relevant claims of the ‘858 patent rests is undisputed: if the strap is in contact with the base of the shoe at the point of connection, it infringes; if the strap is not in contact with the base of the shoe, it is not.” Based on the parties’ submissions, including samples of shoes provided by Triple T that have either a fleece lining, either plastic washers between the straps and the base at the connection points that are designed, affixed and sized to prevent direct contact between the straps and the base of the shoes, the Commission found that Triple T’s Northside Classic Fur Lined Clog with permanent fleece lining and its Northside clog with permanent plastic washers do not infringe claims 1 or 2 of the ‘858 patent, and are therefore not within the scope of GEO.

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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