Risk of the Catch-22 Argument as a Defense

Risk of the Catch-22 Argument as a Defense

by Dennis Crouch

Rothy and Birdies compete in the shoe industry.  Rothy’s launched its knit loafers in 2017 Birdies launched its solution in 2021 and Rothy’s sued for infringing three of its style and design patents. D885,016, D885,017, D909,718, and D870,425.

Birdies moved for summary judgment of each invalidity and non-infringement.  For the invalidity defense it (partially) relied on its prior calf-hair version of the shoe revealed in the comparison chart previously mentioned.  The defendant built the vintage defensive argument that the prior artwork is so similar to the accused item that either (1) the patent is invalid [if broadly interpreted] or (2) the patent is not infringed [if narrowly interpreted].  On summary judgment, Birdies argued:

In the long run, by accusing the knitted Blackbird—a shoe with a silhouette that predates Rothy’s patents—of infringement, Rothy’s has established a catch-22 for by itself. If the asserted patents are provided Rothy’s wide development (wide adequate to deal with the knitted Blackbird), then the patents are necessarily invalid: the authentic (non-knit) Blackbird predates the asserted patents, and utilizing a knit materials does not save the patents from invalidity, especially presented the myriad of other preexisting knit flats, as nicely as the absence of knit from at minimum a subset of the asserted patents. Alternatively, if the patents are provided a narrower studying that makes it possible for for discrepancies (other than the knit material) concerning the unique Blackbird and the asserted patents, then the knitted Blackbird does not infringe.

Birdies Motion for SJ.   The argument will make feeling.  But, the district courtroom didn’t agree.  For invalidity, the district court docket concluded that the prior art wasn’t quite excellent adequate to come across the design evident.  Then, for infringement, the court docket mentioned that Birdies’ reliance on its possess exact-shaped shoe for invalidity pretty much admits infringement. “Birdies even admits as a great deal by arguing that the authentic Blackbird—made of calf hair—and the Rothy’s patented types share a silhouette.” Rothy’s, Inc. v. Birdies, Inc., 21-2438 (N.D. Cal. 2022).  In the stop, the district court docket denied the defendant’s motion for summary judgment:  “A jury could fairly find that Birdies’ knitted Blackbird, depicted [above], infringes each and every of Rothy’s patents.” The scenario right here offers an additional instance of why Inter Partes Assessment (IPR) proceedings are a godsend for accused infringers.  The independent tribunals permit for the patent challenger to explain to two unique stories with no worrying about creating confusion.

The conclusion in this article was from May 2022. Considering that then, the get-togethers settled the case with Birdies agreeing to halt creating & providing the accused layouts. 

The pleadings consist of the wonderful set of drawings of historic men’s shoes and boots from John Peacock’s book titled Footwear: The Entire Sourcebook.  I would acquire (and have on) individuals 1880 English flowered loafers if I could obtain a sensible pair.

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