United States District Court, E.D. North Carolina, Western Division
TERRENCE W. BOYLE CHIEF UNITED STATES DISTRICT JUDGE.
cause comes before the Court on a motion by defendants
Dick's Sporting Goods, Hibbett Sporting Goods, Academy,
and Implus Footcare for judgment on the pleadings pursuant to
Rule 12(c) of the Federal Rules of Civil Procedure. Plaintiff
has responded, defendants have replied, and a hearing on the
matter was held before the undersigned on September 16, 2019,
at Raleigh, North Carolina. In this posture, the motion is
ripe for ruling and, for the reasons that follow, the motion
for judgment on the pleadings is granted.
amended complaint, plaintiff alleges claims for direct
infringement of its U.S. Design Patent No. D598, 183, (the
'183 patent) which was issued on August 18, 2009, and of
which plaintiff is now the owner. That patent in issue
contains a single claim for the ornamental design for a
slipper and contains eight drawings. [DE 1-1; 1-2]. Plaintiff
has retained the exclusive right to manufacture all
commercial embodiments of the '183 patent. Plaintiff
sells the commercial embodiment of its '183 patent under
the trademark SNOOZIES!.
alleges that defendants directly infringe the '183 patent
by manufacturing, using, importing, offering for sale, and/or
selling foot covers trademarked as SOFSOLE FIRESIDE and COZY
CABIN. 35 U.S.C. § 271. Plaintiff has further alleged
claims for trade dress infringement, unfair competition under
the Lanham Act, and unfair competition under North Carolina
law. The defendants request entry of judgment on the
pleadings in their favor on plaintiff s claims for patent
motion for judgment on the pleadings under Fed.R.Civ.P. 12(c)
allows for a party to move for entry of judgment after the
close of the pleadings stage, but early enough so as not to
delay trial. Fed.R.Civ.P. 12(c). Courts apply the Rule
12(b)(6) standard when reviewing a motion under Rule 12(c).
Mayfield v. Nat'l Ass'n for Stock Car Auto
Racing, Inc., 674 F.3d 369, 375 (4th Cir. 2012).
Accordingly, the Court considers the facts as alleged as true
and construes all inferences in plaintiffs favor. Burbach
Broad. Co. of Delaware v. Elkins Radio Corp., 278 F.3d
401, 406 (4th Cir. 2002). A complaint must allege enough
facts to state a claim for relief that is facially plausible.
Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570
(2007). Facial plausibility means that the facts pled
"allow the court to draw the reasonable inference that
the defendant is liable for the misconduct alleged," and
mere recitals of the elements of a cause of action supported
by conclusory statements do not suffice. Ashcroft v.
Iqbal, 556 U.S. 662, 678 (2009).
design patent protects only "the novel, ornamental
features of the patented design." OddzOn Prod., Inc.
v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir.
1997). The patent holder must prove design patent
infringement by a preponderance of the evidence. Egyptian
Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed
Cir. 2008) (en banc). A court engages in a two-step process
to determine whether a design patent has been infringed.
First, if appropriate, the court construes the claim; second,
the accused design is compared to the allegedly infringed
design patent. OddzOn, 122 F.3d at 1405. This
comparison, referred to as the ordinary observer test, asks
in the eye of an ordinary observer, giving such attention as
a purchaser usually gives, two designs are substantially the
same, if the resemblance is such as to deceive such an
observer, inducing him to purchase one supposing it to be the
other, the first one patented is infringed by the other.
Egyptian Goddess, 543 F.3d at 670; see also
Crocs, Inc. v. Int'l Trade Comm'n, 598 F.3d
1294, 1303 (Fed. Cir. 2010).
evaluating whether infringement has occurred, "[i]t is
the appearance of a design as a whole which is
controlling." OddzOn, 122 F.3d at 1405.
"Where the claimed and accused designs are
'sufficiently distinct' and 'plainly
dissimilar,' the patentee fails to meet its burden of
proving infringement as a matter of law." Ethicon
Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312,
1335 (Fed. Cir. 2015). Design patents are limited to what is
contained in the application drawings, In re Mann,
861 F.2d 1581, 1582 (Fed. Cir. 1988), and the claim language
can serve to limit the scope of a design patent. Curver
Luxembourg, SARL v. Home Expressions Inc., 938 F.3d
1334, 1340 (Fed. Cir. 2019).
determining whether the accused SOFSOLE FIRESIDE and COZY
CABIN foot coverings are plainly dissimilar or sufficiently
distinct, the Court has considered the pleadings and the
photographs of the foot coverings included therein in order
to conduct a side-by-side comparison of plaintiffs '183
patent and the accused foot coverings. The Court has also
considered the photographs of the bottom of the accused foot
coverings submitted by defendants as they are necessary to
conduct a complete similarity analysis. See Philips
v. Pitt Cnty. Mem'l Hosp., 572 F.3d 176,
180 (4th Cir. 2009). The Court is further guided, though not
bound, by the Federal Circuit's discussion of the
'183 patent contained in High Point Design LLC v.
Buyer's Direct, Inc., 621 Fed.Appx. 632, 633 (Fed.
Cir. 2015). In High Point, the Federal Circuit
determined that another allegedly infringing foot covering,
the "Fuzzy Babba," did not infringe the' 183
patent. Id. at 641-42.
'183 patent states it is of the ornamental design for a
slipper. [DE 1 -1 ]. Eight drawings describing the slipper
are included, with a perspective view (figure one), front and
rear elevational view (figures two and three, respectively),
left and right side elevational view (figures four and five),
a top and bottom plan view (figures six and seven), and
another bottom plan view (figure eight). Id. Each
image depicts a structured slipper with a defined opening;
fuzzy, fleece-appearing lining the inside of the slipper as
well as around the opening; a distinctly visible sole; and,
in figure seven, a uniform, tight grid pattern of dots which
appear on the sole, with a smaller section of dots located at
roughly the ball of the foot and a larger section of dots
located between the arch of the foot and the heel. There is a
second embodiment pictured in figure eight showing a smooth
sole with no dots.
comparison, the accused foot coverings, referred to by
defendants as slipper socks, appear softer, less rigid, and
flatter than the' 183 design patent. The accused slipper
socks clearly have no sole, and thus appear more like a sock
than like a slipper. The accused slipper socks and the
'183 design patent share the fuzzy fleece lining that is
visible at the foot opening. However, the images of the
accused slipper socks show appreciably more fuzzy fleece at
the foot opening than do the '183 patent drawings.
Further, the shape of the foot openings are different: the
'183 design patent contains an oval or rounded opening
that appears to be more rigid, while the accused slipper
socks have a v-shaped opening that appears softer and more
flexible. Finally, the bottom of the '183 design patent
and the accused slipper socks differ. The accused foot
coverings have far fewer dots which cover close to the
entirety of the bottom of the slipper sock with wide spaces
between each dot. The bottoms of the accused foot covers are
quite distinct ...