Recently, Denmark-based footwear maker ECCO filed a suit alleging claims of patent infringement against Manhattan Beach, CA-based shoemaker Skechers. The suit, filed in the federal district for Delaware, asserts a series of patents owned by the Danish shoemaker which cover aspects of golf shoes which have been commercially successful for ECCO in recent years.
ECCO is asserting a total of four patents in this case, including:
- U.S. Patent No. 8490303, titled Sole for a Golf Shoe. It covers a golf shoe sole having a plurality of cleats distributed along a forefront and a heel area of a sole wherein each cleat is cross shaped and wherein the cleats in the ball or heel area of the sole are greater in height.
- U.S. Patent No. 8991076, same title as the ‘303 patent. It covers a sole for a golf shoe having a plurality of cleats arranged in transverse rows along a longitudinal length of the sole extending from the toe to the heel, the transverse rows being perpendicular to the longitudinal length.
- U.S. Patent No. 9021722, same title as the ‘303 patent. It covers a golf shoe sole having cleats integrated with an outer sole, the cleats having a set of larger sized cleats and smaller sized cleats to provide good traction on the golf course while also enabling the casual use of the shoe outside of the golf course.
- U.S. Patent No. 9332803, same title as the ‘303 patent. It covers a golf shoe sole having sets of cleats distributed along a forefront and heel area of the sole with arms extending radially out from the circular center of the cleat providing traction in first and second directions.
The patents were first practiced by ECCO in the shoemaker’s Golf Street line which was introduced in 2010. After initial sales projections of 2,000 units in 2010, orders skyrocketed past 100,000 units by the first quarter of 2011 after Fred Couples’ use of Golf Street shoes in multiple tournaments, including the Masters Tournament, helped the shoes gain popular acclaim. “ECCO spent a number of years developing these hybrid shoes, which have cleats integrated into the soles,” said Aaron Parker, an IP lawyer with Finnegan and counsel representing ECCO in this case “The sole designs were revolutionary.”
According to ECCO’s complaint, Skechers’ infringement of the asserted patents began at least by February of this year. The alleged claims of infringement regarding the asserted patents involve the particular cleat arrangement as well as the structure of the cleats used in the sole in the golf shoes, which are covered by ECCO’s patents.
Athletic shoes may not seem like a hot-button area of tech development or patent infringement claims but ECCO’s suit is not the only major action taken in U.S. district court regarding the copying of footwear elements, especially cleats. For example, patents covering cleat assemblies were asserted by Nike in early May in an infringement case filed against rival shoemaker Puma; Nike is also alleging that Puma copied elements of its Flyknit textile upper and Air sole bladder cushion elements. In that case, the cleat assemblies are related to soccer sneakers and not the type of golf shoes developed by ECCO. Interestingly, the patents asserted in both the Nike case and the ECCO case are utility patents and not design patents or trademarks which would typically cover elements of fashion apparel such as shoes, which speaks to the research and development activities of those companies. Similarly, many other players in the athletic footwear segment are regularly involved in litigating IP matters related to footwear.
“Historically, ECCO has not been a litigious company,” Parker said. “They’re an innovative family-owned company that focuses on creating high-performing shoes, which is exactly what they’ve done here in the golf industry.” According to data collected from legal analytics site Lex Machina, ECCO USA and ECCO Sko A/S have been parties in 11 district court cases going back to January 1st, 2000; seven of those cases involve patent claims, five cases involve trademark claims and three cases involve commercial claims, with claims overlapping in some cases.
Skechers has been involved in intellectual property litigation on both the plaintiff side and the defendant side, but it has been defending patent infringement suits at a much higher rate in recent years, perhaps suggesting that the company has decided to become part of the efficient infringement cabal. , Skechers has been involved in 89 intellectual property lawsuits filed in U.S. district court dating back to January 1st, 2000. Skechers was a plaintiff in 50 of those cases, a defendant in 39 cases and a third party in two cases. However, when looking at district court filings filed since January 1st, 2010, Skechers has been a defendant 22 times, a plaintiff 10 times and a third party once. Since January 1st, 2015, Skechers has been a defendant in 12 district court cases but has only been a plaintiff three times. Most of the IP cases involving Skechers have included patent infringement claims. These cases involve Skechers corporate entities including Skechers U.S.A. I, Skechers U.S.A. II and Skechers Fitness Group.
Skechers has also been an avid user of the Patent Trial and Appeal Board (PTAB) to challenge the validity of patents held by either Nike or Adidas. To date, Skechers has filed a total of 20 petitions for inter partes review (IPR) at the PTAB. Not once has it been in front of the PTAB as a patent owner defending the validity of its own patents.