11
Apr
By Alec Royka

On March 28, 2022, the ITC issued an advisory opinion in Certain Foam Footwear (Inv. No. 337-TA-567) finding that third party Triple T Trading Ltd.’s (“Triple T”) 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 U.S. Patent No. 6,993,858 (“the ’858 patent”), and thus do not fall within the scope of the general exclusion order (“GEO”) issued in the 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 the ’858 patent and U.S. Patent No. D517,789 (“the ’789 design patent”).  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-in-suit, issuing, inter alia, a GEO and cease-and-desist order (“CDO”) against Double Diamond Distribution, Ltd. of Saskatoon, Canada’s (“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 termination of 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 November 17, 2021, Triple T requested institution of an expedited advisory opinion proceeding to determine whether two models of its footwear—its fleece-lined shoes and its shoes with plastic washers—fall within the scope of the GEO.   The Commission instituted an advisory opinion proceeding on December 17, 2021.

According to the opinion, the Commission determined that Triple T’s Northside Classic Fur Lined Clog and Northside Clog (which include permanent fleece lining or plastic washers, respectively) that are designed, affixed, and sized to prevent “direct contact” between the straps and the base of the shoe at that point of connection, do not infringe claims 1 or 2 of the ’858 patent and thus do not fall within the scope of the GEO.  Specifically, claim 1 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 samples of the shoes provided by Triple T having either fleece lining or plastic washers between the straps and the base at the points of connection which are designed, affixed, and sized to prevent all 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 thus do not fall within the scope of the GEO.



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