16
Apr
By John Presper
On April 13, 2021, the ITC issued an advisory opinion in Certain Foam Footwear (Inv. No. 337-TA-567) finding that the new Original Beach DAWGS™ shoes made and imported into the U.S. by Double Diamond Distribution, Ltd. of Saskatoon, Canada’s (“Double Diamond”) do not wall within the scope of the remedial orders in the underlying investigation.

By way of background, the 337-TA-567 investigation was instituted 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 that infringed claims 1-2 of U.S. Patent No. 6,993,858 (“the ’858 patent”) and U.S. Patent No. D517,789 (“the ’789 design patent”). Double Diamond was among several respondents named in the investigation. On July 25, 2008, the Commission issued a final determination finding no violation of section 337. On July 15, 2011, after an appeal to the Federal Circuit and subsequent remand vacating the Commission’s previous finding of no violation (see our February 24, 2010 post for details regarding the Federal Circuit’s opinion), the Commission found a violation of section 337 based on infringement of the asserted claims of the patents and issued a general exclusion order (“GEO”) and, inter alia, a cease-and-desist order (“CDO”) directed against Double Diamond. The GEO covered foam footwear that infringes claims 1-2 of the ’858 patent and the ’789 design patent. The CDO against Double Diamond only covered foam footwear that infringes claim 2 of the ’858 patent and the ’789 design patent (because Double Diamond was only found to infringe claim 2 of the ’858 patent and the ’789 design patent). See our July 20, 2011 post for more details regarding the Commission’s decision on remedial orders and terminating the investigation.

The ’789 design patent expired on March 28, 2020. Accordingly, the GEO and CDO, by their terms, are only directed to articles that infringe claims 1-2 of the ’858 patent. On December 8, 2020, Double Diamond requested institution of an expedited advisory opinion proceeding to determine whether its new Original Beach DAWGS™ shoes are subject to the GEO or CDO. The Commission instituted an advisory opinion proceeding on January 7, 2021.

According to the opinion, the Commission determined that Double Diamond’s new Original Beach DAWGS™ shoes with permanent plastic washers that prevent all direct contact between the strap and the base of the shoe do not fall within the scope of the GEO or CDO and therefore should not be excluded. Specifically, claim 1 of the ’858 patent recites, in relevant part, that “the strap section is in 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 likewise recites “the strap section is in direct contact with the base section and pivots relative to the base section . . . .” (emphasis added). Thus, “[t]he fundamental question on which infringement of the relevant claims of the ’858 patent hinges is undisputed: if the strap has any contact with the base of the shoe at the point of connection, it infringes; if the strap has no contact with the base of the shoe, it does not.” Based on the parties’ submissions, including a sample of the shoes provided by Double Diamond that have plastic washers on each shoe in between the straps and the base at the points of connection which are sized such that the washers prevent all direct contact between the straps and the base of the shoes, the Commission found that the new Original Beach DAWGS™ shoes do not infringe claims 1-2 of the ’858 patent. Accordingly, the new Original Beach DAWGS™ shoes do not fall within the scope of the GEO or CDO against Double Diamond.
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