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.