Risk of the Catch-22 Argument as a Defense

by Dennis Crouch

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

Birdies moved for summary judgment of both invalidity and non-infringement.  For the invalidity defense it (partially) relied upon its prior calf-hair version of the shoe shown in the comparison chart above.  The defendant made the classic defensive argument that the prior art is so similar to the accused product 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:

Ultimately, by accusing the knitted Blackbird—a shoe with a silhouette that predates Rothy’s patents—of infringement, Rothy’s has created a catch-22 for itself. If the asserted patents are given Rothy’s broad construction (broad enough to cover the knitted Blackbird), then the patents are necessarily invalid: the original (non-knit) Blackbird predates the asserted patents, and using a knit material does not save the patents from invalidity, particularly given the myriad of other preexisting knit flats, as well as the absence of knit from at least a subset of the asserted patents. Alternatively, if the patents are given a narrower reading that allows for differences (other than the knit material) between the original Blackbird and the asserted patents, then the knitted Blackbird does not infringe.

Birdies Motion for SJ.   The argument makes sense.  But, the district court didn’t agree.  For invalidity, the district court concluded that the prior art wasn’t quite good enough to find the design obvious.  Then, for infringement, the court noted that Birdies’ reliance on its own same-shaped shoe for invalidity almost admits infringement. “Birdies even admits as much by arguing that the original Blackbird—made of calf hair—and the Rothy’s patented designs share a silhouette.” Rothy’s, Inc. v. Birdies, Inc., 21-2438 (N.D. Cal. 2022).  In the end, the district court denied the defendant’s motion for summary judgment:  “A jury could reasonably find that Birdies’ knitted Blackbird, depicted [above], infringes each of Rothy’s patents.” The case here offers another example of why Inter Partes Review (IPR) proceedings are a godsend for accused infringers.  The separate tribunals allow for the patent challenger to tell two different stories without worrying about creating confusion.

The decision here was from May 2022. Since then, the parties settled the case with Birdies agreeing to stop making & selling the accused designs. 

The pleadings include the fabulous set of drawings of historic men’s shoes and boots from John Peacock’s book titled Shoes: The Complete Sourcebook.  I would buy (and wear) those 1880 English flowered loafers if I could find a reasonable pair.

27 thoughts on “Risk of the Catch-22 Argument as a Defense

  1. 9

    Looking in from Europe, where the test for validity is the same as for infringement, Comment #2.2 flags up the decisive point, that the accused infringement is “closer” to the design that is the subject matter of the registration than is the closest prior art. Just look at the images. Plain as day, isn’t it?

    Readers, what more do you want, or need, to decide issues of infringement and validity in the field of design registration?

  2. 8

    Dennis, if I understand you correctly, your analysis might be slightly off when you said:

    “[T]he court noted that Birdies’ reliance on its own same-shaped shoe for invalidity almost admits infringement. [Court:] ‘Birdies even admits as much by arguing that the original Blackbird made of calf hair and the Rothy’s patented design share a silhouette’.”

    The court’s “as much” refers to Birdies’ admission that the silhouettes were similar, not that they admitted infringement. So the Catch-22 was not abrogated. In its conclusion, the court said:

    “Birdies argues that Rothy’s cannot have it both ways. How can the [accused] Blackbird shoe resemble Rothy’s patents closely enough that a jury could find infringement, but not so closely that Birdie’s original [prior art] Blackbird shoe does not render Rothy’s patents invalid due to obviousness? The knitted appearance claimed in Rothy’s patents explains why. Because the original Blackbird shoe uses calf hair, rather than knit, a reasonable jury could find that it fails as a primary reference. But because the knitted Blackbird uses a material visually akin to the [knit] material claimed in Rothy’s patents, that same reasonable jury could find infringement.”

    Perfectly logical. The Catch-22 lives!

    1. 8.1

      So the mere well known substitution of knit material [as in so very many casual and sport shoes] for calf hair for shoe uppers [and properly ignoring any functional differences since this is a design patent] is 103 unobvious to a shoe designer? Is the knit even clearly a claim limitation in this case?

      1. 8.1.1

        The knit was clearly a claim limitation (read the court’s opinion).

        The prior art did not qualify as a proper primary reference under 103 since it was not “basically the same” as the claimed design (since it didn’t show knit material). It was also not “identical in all material respects” (due to the knit material) so it didn’t anticipate under 102. These are the design patent standards for invalidity. Interestingly to you, Paul, the court cited KSR!!!

        1. 8.1.1.1

          Perry, I am sure that you note that Paul continues to attempt to read the statutes as if design patents MUST be treated exactly like utility patents — this after both of us continually chastise him to not do so.

        2. 8.1.1.2

          Thanks Perry, your expertise in design patent law is unchallenged. I merely continue to argue that from a public policy or longer-term viewpoint that the design patent tests for 103 and infringement are too loose and inconsistent with the clearer Sup. Ct. tests for utility patents. I.e., there is no argument that both are very different for design patents. Rather, would those non-statutory old CCPA>CAFC differences be supported by the current Sup. Ct. if challenged in a case like this?

          1. 8.1.1.2.1

            My bet is that SCOTUS would muck it up. They simply do not understand design patents. Hell, the CAFC barely does. SCOTUS grants cert. in a design patent case every 50-100 years or so. Hopefully we won’t have to worry about it until 2066 (50 years after they mucked up Samsung v. Apple).

            1. 8.1.1.2.1.1

              Perry Saidman doesn’t understand design patents either if he thinks it’s possible for anyone to “muck it up” more than it is already.

              This decision is just another bad joke that should embarrass attorneys and professor’s alike.

              1. 8.1.1.2.1.1.1

                There is always the possibility of mucking things up even more.

                You of all people should recognize that (oh, mucker-even-more-upperer).

        3. 8.1.1.3

          Very interesting. So, this statement was wrong –“If the asserted patents are given Rothy’s broad construction (broad enough to cover the knitted Blackbird), then the patents are necessarily invalid: the original (non-knit) Blackbird predates the asserted patents, and using a knit material does not save the patents from invalidity, particularly given the myriad of other preexisting knit flats, as well as the absence of knit from at least a subset of the asserted patents.” Using a knit material could save the patents from invalidity, because this is a design patent. Seems like something the defendant’s counsel should have known, no?

  3. 6

    I want to pick up on the bifurcation issue, one forum for validity, another for infringement. This has always been the case here in Germany. Dennis tells us that:

    “The separate tribunals allow for the patent challenger to tell two different stories without worrying about creating confusion.”

    If here in Germany, one was to “tell two different stories” any credibility you ever had would be lost. Why in the USA cannot a trial lawyer point out to the court the mischief that the other side is making?

    One way to explain the bifurcation point is Mario Franzosi’s “angora cat” example (which dates back to the 1970’s). The long-haired cat is the claim. When facing the infringer, its hairs all stand on end, making it look hugely dangerous. But when its validity is challenged, its owner throws a bucket of water over it, rendering it so small that you have to be impossibly accurate to hit it and get anything to stick on it.

    1. 6.1

      [Why in the USA cannot a trial lawyer point out to the court the mischief that the other side is making?]

      Of course any plaintiff would point out such inconsistent arguments. And either impeach the other party’s experts (if they were the same in both proceedings) or play them off each other if different. And if an argument was successful, estoppel would bar a party from making a contrary argument. However, the one possible “loophole” is where different standards apply in IPRs vs. litigation, a party could possibly argue that different positions in the different fora were not actually contradictory.

      I don’t know if Prof. Crouch was ever a litigatory, but his posts sometimes ignore the practical realities of litigation.

      1. 6.1.1

        Not only ‘different standards,’ but also the fact that one is allowed to provide ‘arguments in the alternative.’

        The ‘gotcha’ case is overstated (almost verging on click-bait).

        1. 6.1.1.1

          One is allowed to make alternative arguments, but all arguments must be supported by law and fact.

  4. 5

    What’s the quote? That which infringes after anticipates before, or something like that? How wonderful that a judge can’t appreciate straightforward, well-established case law, or how it applies in a *simple* case, like shoe designs.

    1. 5.1

      The judge did quote that old “maxim” from Peters v. Active (1889), finding on summary judgment that the original Blackbird does not anticipate the ‘017 patent: “Because the original Blackbird is made of calf hair, it is not so “identical in all material respects” to the claimed knitted loafer that no reasonable jury could conclude otherwise.” The judge did not have to say that since the prior art doesn’t anticipate, it would not infringe, because the accused design was a knitted loafer which is not the same as the calf hair prior art.

  5. 4

    Sorry OT, but as patent attorney’s blog – the 1 percent of the 1 percent of the scientific and legal community – and as the elites that actively participate in understanding the complex debates of public choice theory, regulatory capture, the ‘interests’ that drive legislation – well watch this movie – free for 10 days. Its a slow burn, but gets very good around 1 hr in. link to therealanthonyfaucimovie.com

    1. 3.1

      Glad you mentioned the inescapable trap in the EPC, between its Art 123(2) and 123(3) jaws. For me, this is the most egregious CATCH 22 of all time, and it is one that routinely snares the owners of valuable patents granted by the EPO and in all other respects impervious to validity attacks.

      Can anybody here cite a real life CATCH 22 situation that comes anywhere close to this awesome example under the EPC?

      As to that old Rule about what infringes after anticipates before held sway under English law for centuries, but just recently has been swept away by the mainland European jurisprudence under the EPC.

  6. 2

    I always found it interesting that the relevant standards of proof for invalidity and infringement are different. That is, invalidity must be shown by clear and convincing evidence while infringement is a preponderance. In theory, doesn’t this provide a loophole to a catch-22 situation? That is, even if a current product is identical in all material respects to a prior-art product, is it not conceivable that the current product infringes under the relatively lower standard while the prior-art product would fail to invalidate under the higher standard? That certainly seems like a troubling outcome.

      1. 2.1.1

        Err no, it shows a lack of understanding of administrative law, the separation of powers, and BOP concerning property rights. Start with the right to ‘sue out a patent’ and go from there as to the presumption as to why of the burdens of proof when you have an issued patent and are presenting that patent/infringement/validity trial before a jury. Dennis much respect, but honestly, since you started teaching – a long time now – well let’s just say – the greater good theory – fabian – has crept into your thinking. Fabianism is the end of the Enlightenment.

    1. 2.2

      This is why practicing the prior art is not a solid defense. The argument (and Catch-22) would be much stronger if the prior-art and accused shoes were actually identical. They are far from it. And the accused shoe is much closer to the claimed design than the prior art is.

  7. 1

    Attempting to get a no-trial 103 invalidity decision with a summary judgment motion has always had low odds of success even for utility patents (with clear claim scopes), much less the peculiar standards for design patents. But at least for utility patents one can get a comprehensible factual claim element 103 non-infringement summary judgment decision in some cases with a proper early Markman.

Comments are closed.