UNITED STATES INTERNATIONAL TRADE COMMISSION WASHINGTON, D.C.

Transcription

1 UNITED STATES INTERNATIONAL TRADE COMMISSION WASHINGTON, D.C. In the Matter of CERTAIN FOAM FOOTWEAR Investigation No. 337-TA-567 (Advisory Opinion Proceeding) REPORT OF THE OFFICE OF UNFAIR IMPORT INVESTIGATIONS AS TO WHETHER CERTAIN FOAM FOOTWEAR INFRINGES U.S. DESIGN PATENT NO. D517,789 OR CLAIMS 1 AND 2 OF U.S. PATENT NO. 6,993,858 November 7, 2016 Margaret D. Macdonald, Director Jeffrey T. Hsu, Supervisory Attorney R. Whitney Winston, Investigative Attorney OFFICE OF UNFAIR IMPORT INVESTIGATIONS U.S. International Trade Commission 500 E Street SW, Suite 401 Washington, DC (202) (202) (facsimile)

2 TABLE OF CONTENTS I. INTRODUCTION... 1 II. BACKGROUND... 1 A. PROCEDURAL HISTORY... 1 III. APPLICABLE LEGAL STANDARDS... 4 A. ADVISORY OPINION PROCEEDING... 4 B. INFRINGEMENT Utility Patents Design Patents... 5 IV. SUMMARY OF THE PARTIES ARGUMENTS... 6 A. DOUBLE DIAMOND AND U.S.A. DAWGS REQUEST FOR AN ADVISORY OPINION Subject Products U.S. Patent No. 6,993, U.S. Design Patent No. D517, Strapless Footwear Was Not a Basis for Remedial Orders... 8 B. CROCS RESPONSE TO DOUBLE DIAMOND AND U.S.A. DAWGS REQUEST... 8 V. ANALYSIS... 9 A. SUBJECT ARTICLES... 9 B. INFRINGEMENT - U.S. PATENT NO. 6,993, Claim Construction Infringement C. U.S. DESIGN PATENT NO. D517, VI. CONCLUSION... 20

3 I. INTRODUCTION Pursuant to the Commission s Notice of Institution of an Advisory Opinion Proceeding and Order (August 11, 2016), the Office of Unfair Import Investigations ( OUII ) respectfully submits this report as to whether certain foam footwear are covered by the Commission s General Exclusion Order and Cease and Desist Order as to Double Diamond Distribution, Ltd. ( Double Diamond ). At issue in this advisory opinion proceeding is whether certain models of strapless, clog-type footwear products infringe claims 1 and 2 of U.S. Patent No. 6,993,858 ( the '858 patent ) and U.S. Design Patent No. D517,789 ( the '789 patent ). Although a dispute remains as to the scope of products at issue in this proceeding, Complainant Crocs, Inc. ( Crocs ) concedes that the specific products identified in the request do not fall within the scope of the Commission s remedial orders as to the '858 patent or the '789 patent. See Crocs Response to OUII s Request for Information, EDIS Doc. ID , at 2 (Oct. 3, 2016). For the reasons set forth below, OUII respectfully submits that the undisputed evidence shows that the products at issue do not infringe and, therefore, are not covered by the General Exclusion Order or Cease and Desist Order as to Double Diamond. II. BACKGROUND A. Procedural History The Commission instituted the underlying investigation on May 11, 2006 based on a complaint, as amended, filed by Crocs, Inc. ( Crocs ). 71 Fed. Reg (May 11, 2006). The complaint alleged violations of Section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337, by reason of, inter alia, infringement of claims 1 and 2 of U.S. Patent No. 6,993,858 and U.S. Design Patent No. D517,789. Id. 1

4 On July 25, 2008, the Commission issued its final determination finding no violation of section 337 based on non-infringement and failure to satisfy the technical prong of the domestic industry requirement with respect to the 789 patent, and invalidity of the 858 patent as obvious under 35 U.S.C Fed. Reg (Aug. 1, 2008). On appeal, the U.S. Court of Appeals for the Federal Circuit reversed certain findings, vacated the Commission s final determination, and remanded the investigation to the Commission to address the issues of infringement with respect to the '858 patent and remedy. Crocs, Inc. v. Int l Trade Comm n, 598 F.3d 1294, 1311 (Fed. Cir. 2010). On July 15, 2011, the Commission found a violation of section 337 based on infringement of claims of 1 and 2 of the '858 patent and the '789 design patent, and issued a general exclusion order and, inter alia, a cease and desist order directed against Double Diamond. 76 Fed. Reg (July 21, 2011). On July 12, 2016, Double Diamond and U.S.A. Dawgs, Inc. ( USA Dawgs ) of Las Vegas, Nevada (collectively, the Requesters ) petitioned for an advisory opinion that its Fleece Dawgs footwear are outside the scope of the Commission s general exclusion order and the cease and desist order directed against Double Diamond. No response was filed. On August 11, 2016, the Commission instituted an advisory opinion proceeding under Commission Rule based on Requesters petition to determine whether their Fleece Dawgs footwear infringes claims 1 or 2 of the 858 patent or the 789 patent. The following entities are named as parties to the proceeding: (1) Crocs; (2) Double Diamond; and (3) USA Dawgs. The Commission referred Requesters petition to the Office of Unfair Import Investigations ( OUII ) to investigate and report to the Commission within 90 days. 2

5 On September 22, 2016, OUII wrote to counsel for Crocs, Double Diamond, and U.S.A. Dawgs, formally requesting the submission of information that each party believed to be relevant to the proceeding. In particular, OUII stated that it was interested in receiving responses to the following questions: 1. What is the present dispute between the parties regarding the scope of products at issue in this advisory opinion proceeding? Please provide your contentions regarding the identification of Requesters Fleece Dawgs footwear products that are subject to this advisory opinion proceeding. To the extent possible, please identify the Fleece Dawgs footwear products at issue by name and model number. 2. What is the present dispute between the parties regarding whether Respondents Fleece Dawgs footwear products infringe claims 1 and 2 of U.S. Patent No. 6,993,858? Please provide your contentions on the issue of infringement, claim element by claim element, and cite to all supporting evidence (e.g., product literature, product photographs, design drawings, or declarations). 3. What is the present dispute between the parties regarding whether Respondents Fleece Dawgs footwear products infringe the claim of U.S. Design Patent No. D517,789? Please provide your contentions on the issue of infringement, and cite to all supporting evidence (e.g., product literature, product photographs, design drawings, or declarations). OUII Letter to Counsel (Sept. 22, 2016). OUII asked the parties to submit their (i) initial written submissions by October 3, 2016, and (ii) reply written submissions by October 10, Id. The parties timely filed their initial written submissions as follows: Double Diamond Distribution, Ltd. and U.S.A. Dawgs, Inc. s Response to the Office of Unfair Import Investigations September 22, 2016 Letter (EDIS Doc. ID ) ( Requesters Written Submission ); and Crocs Response to OUII s September 22, 2016 Letter (EDIS Doc. ID ) ( Crocs Written Submission ). Double Diamond and U.S.A. Dawgs timely filed a reply written submission as follows: 3

6 Double Diamond Distribution, Ltd. and U.S.A. Dawgs, Inc. s Reply to Crocs October 3, 2016 Letter (EDIS Doc. ID ) (Requesters Reply Written Submission ). III. APPLICABLE LEGAL STANDARDS A. Advisory Opinion Proceeding Commission Rule (a) provides in pertinent part: Upon request of any person, the Commission may, upon such investigation as it deems necessary, issue an advisory opinion as to whether the person s proposed course of action or conduct would violate a Commission exclusion order, cease and desist order, or consent order. 19 C.F.R (a). A respondent seeking an advisory opinion that its redesigned product (or otherwise new product) falls outside the scope of an exclusion order or a cease and desist order against it bears the burden of demonstrating that such product does not infringe the patent(s) at issue. See Certain Hardware Logic Emulation Systems and Components Thereof, Inv. No. 337-TA-383, Commission Opinion on Remedy, The Public Interest and Bonding at (March 1998) (citations omitted). B. Infringement 1. Utility Patents Determination of patent infringement involves a two-step analysis: first, the claims must be properly construed, and second, the properly construed claims must be compared to the allegedly infringing device. See, e.g., Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357, 1370 (Fed. Cir. 2010). The first step, claim construction, is a matter of law, but the second step, comparison of the claims to the accused product, is a question of fact. See, e.g., id. 4

7 A patent can be infringed either literally or under the doctrine of equivalents. See Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1310 (Fed. Cir. 2005). Literal infringement requires that each and every claim limitation be present in the accused product. Abraxis Bioscience, Inc. v. Mayne Pharma (USA) Corp., 467 F.3d 1370, 1378 (Fed. Cir. 2006). If any claim limitation is absent from the accused device, there is no literal infringement as a matter of law. Amgen, Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1374 (Fed. Cir. 2009). But, even if an accused product does not literally infringe the asserted claim, infringement may still be found under the doctrine of equivalents. See Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950). Under the doctrine of equivalents, an accused product that does not literally infringe a claim may nonetheless be found to infringe the claim if there is equivalence between the elements of the accused product and the claimed elements of the invention. Warner-Jenkinson Co. Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 21 (1997). Thus, infringement may be found where the accused product performs substantially the same function in substantially the same way to obtain substantially the same result. Eagle Comtronics, Inc. v. Arrow Comm. Labs, 305 F.3d 1303, 1315 (Fed. Cir. 2002). 2. Design Patents The ordinary observer test is used to determine whether a design patent has been infringed. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir. 2008) ( Egyptian Goddess ); see also Crocs, Inc. v. Int l Trade Comm n, 598 F.3d 1294, 1302 (Fed. Cir. 2010) ( Crocs ). A claimed design is infringed if an ordinary observer, familiar with the prior art designs, would be deceived into believing that the accused product is the same as the patented design. Crocs, 598 F.3d at 1303 (Fed. Cir. 2010), citing Egyptian Goddess, 543 F.3d at

8 The attention of the ordinary observer may be drawn to those aspects of a claimed design that differ from the prior art. Crocs, 593 F.3d at 1303 ( If the claimed design is close to the prior art designs, small differences between the accused design and the claimed design assume more importance to the eye of the hypothetical ordinary observer. ). Finally, the ordinary observer test applies to the patented design as a whole; minor differences between a patented design and an accused article's design cannot... prevent a finding of infringement. Payless Shoesource, Inc. v. Reebok Int l, Ltd., 998 F.2d 985, 991 (Fed. Cir. 1993) (quoting Litton Sys. Inc. v. Whirlpool, 728 F.2d 1423, 1444 (Fed. Cir. 1984)); see Braun, Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 820 (Fed. Cir. 1992). IV. SUMMARY OF THE PARTIES ARGUMENTS A. Double Diamond and U.S.A. Dawgs Request for an Advisory Opinion Double Diamond and USA Dawgs request that the Commission issue an advisory opinion finding that their Fleece Dawgs line of footwear is outside the scope of the Commission s remedial orders. Request at Subject Products Requesters state that the products at issue are Requesters Fleece Dawgs, which they describe as strapless clog-type footwear [] made of ethylene vinyl acetate and lined on the inside with fleece. Request at 2. According to the Request, various colors and color-patterns of this footwear have been imported by Double Diamond and USA Dawgs since 2009, including the following: (i) Mossy Oak Women s Fleece Dawgs Breakup Infinity, Pink; and (ii) Mossy Oak Women s Fleece Dawgs Winter Brush. Id. Although Requesters do not dispute that their product line includes fleece-lined footwear with straps (as opposed to the strapless 6

9 footwear discussed in the Request), they argue that Fleece Dawgs is defined for purposes of this proceeding to exclude such footwear. See Requesters Reply Written Submission at 1-2, n.2. USA Dawgs and Double Diamond declined OUII s request to identify the Fleece Dawgs footwear products at issue by name and model number, arguing that [l]imiting this proceeding to certain product identification numbers would not make any sense. [] Forcing Requesters to initiate an advisory proceeding every time a new color, color-pattern, and/or size of the same footwear design is offered would be unfairly burdensome, and a waste of time and resources for Requesters and the ITC. Requesters Reply Written Submission at 2, n.3. Instead Requesters identified four broad categories of Fleece Dawgs, as follows: (i) Women s Fleece Dawgs; (ii) Men s Fleece Dawgs; (iii) Women s Mossy Oak Fleece Dawgs; and (iv) Men s Mossy Oak Fleece Dawgs. Id. at U.S. Patent No. 6,993,858 USA Dawgs and Double Diamond contend that their Fleece Dawgs footwear do not infringe claims 1 and 2 of the '858 patent because they do not satisfy the strap section limitations, either literally or under the doctrine of equivalents, as required by those claims. See Request at U.S. Design Patent No. D517,789 With respect to the '789 design patent, Requesters contend that it would be inconsistent and improper to apply the Commission s remedial orders to strapless footwear [b]ecause the inclusion of a heel-strap in the design of the '789 patent served as the basis for the issuance of those Remedial Orders. Request at 11. Although Requesters disagree with how the U.S. Court of Appeals for the Federal Circuit and the Commission have interpreted the '789 patent, they 7

10 argue that the Fleece Dawgs footwear at issue cannot fall within the scope of the Commission s remedial orders in light of those interpretations. See id. at Strapless Footwear Was Not a Basis for Remedial Orders Finally, Requesters argue that the Fleece Dawgs footwear products that are the subject of this proceeding differ materially from the footwear that was the subject of the underlying investigation. Request at 5. In particular, Requesters argue that the footwear at issue in the underlying investigation included neither heel straps nor fleece linings. Id. Requesters thus assert that Fleece Dawgs footwear did not serve as a basis for the issuance of any remedial order in Investigation 337-TA-567. Id. B. Crocs Response to Double Diamond and U.S.A. Dawgs Request Crocs concedes that the shoes actually depicted in the Request are not within the scope of the remedial orders as to the '858 patent or the '789 patent. See Crocs Written Submission at 2. However, Crocs asserts that the articles subject to this advisory opinion proceeding should be limited to the footwear products that are specifically described in the Request. See Crocs Written Submission at 2. Crocs asserts, without dispute, that the Fleece Dawgs footwear line is not limited to the strapless, clog-type footwear products that are depicted and described in the Request, but also includes clog-type footwear with straps. See id. The Request, however, only describes strapless footwear products. Thus, it is improper to expand the relevant products from those depicted to the entire Fleece Dawgs footwear line. See Crocs Written Submission at 2. Because the Fleece Dawgs footwear products specifically described in the Request are not representative of all products in the Fleece Dawgs footwear line, and Requesters have refused to identify the model numbers of footwear products that are the subject of the Request and those 8

11 that are not, Crocs argues that use of the term Fleece Dawgs will lead to ambiguity that may frustrate enforcement by Customs officials. See id. To avoid ambiguity, Crocs argues that the subject articles be limited to the Mossy Oak Women s Fleece Dawgs that are specifically described in the Request. See Crocs Written Submission at 2. V. ANALYSIS Commission Rule , 19 C.F.R , states in relevant part: Upon request of any person, the Commission may, upon such investigation as it deems necessary, issue an advisory opinion as to whether the person s proposed course of action or conduct would violate a Commission exclusion order, cease and desist order, or consent order. The Commission will consider whether the issuance of such an advisory opinion would facilitate the enforcement of section 337 of the Tariff Act of 1930, would be in the public interest, and would benefit consumers and competitive conditions in the United States, and whether the person has a compelling business need for the advice and has framed his request as fully and accurately as possible. 19 C.F.R (a). The Commission s authority to issue advisory opinions has been recognized by the U.S. Court of Appeals for the Federal Circuit. Allied v. U.S. Int l Trade Comm n, 850 F.2d 1573 (Fed. Cir. 1988). A. Subject Articles The articles subject to this advisory opinion proceeding are limited to Requesters Mossy Oak Women s Fleece Dawgs ( Subject Articles ), which are the only products for which photographs and/or physical exhibits have been provided. See Request at 3; Request Exhs Although Requesters seek an advisory opinion that would broadly cover Fleece Dawgs, which they describe as strapless clog-type footwear [] made of ethylene vinyl acetate and lined on the inside with fleece, Requesters have not offered any evidence regarding products other than the Subject Articles. See Request; Requesters Written Submission; Requesters Reply Written 9

12 Submission. Moreover, as discussed below, the evidence shows that Requesters sell footwear in their Fleece Dawgs product line that differ materially and substantially from those described in the Request. Although Requesters describe Fleece Dawgs as strapless clog-type footwear [] made of ethylene vinyl acetate and lined on the inside with fleece, they do not appear to dispute that at least some of Requesters Fleece Dawgs products have straps. See Requesters Reply Written Submission at 2, n.2. Indeed, the USA Dawgs website prominently shows Fleece Dawgs footwear with straps: DAWGS Footwear Official Site, (last visited Oct. 26, 2016). Because Requesters non-infringement analysis is premised on the Subject Articles being strapless, the analysis set forth in the Request does not apply to Fleece Dawgs footwear having 10

13 straps. See Request at The evidence thus shows that Requesters sell footwear in their Fleece Dawgs product line that differ materially and substantially from those described in the Request. Requesters represent that its Women s Fleece Dawgs, Men s Fleece Dawgs, and Men s Mossy Oak Fleece Dawgs do not have straps and are made from the same molds as the Mossy Oak Women s Fleece Dawgs. See Requesters Reply Written Submission at 2. However, Requesters have not identified any such footwear by name and model number, nor have they offered any evidence, such as product literature, product photographs, design drawings, or declarations, as specifically requested by OUII, that would enable the Commission to consider whether those products fall within the scope of any remedial order. See OUII Letter to Counsel (Sept. 22, 2016); Requesters Written Submission; Requesters Reply Written Submission. Accordingly, for the reasons set forth above, the Subject Articles are Requesters Mossy Oak Women s Fleece Dawgs as those products are described in the Request. See Request at 3; Request Exhs B. Infringement - U.S. Patent No. 6,993,858 As set forth above, a determination of patent infringement involves a two-step analysis: first, the claims must be properly construed, and second, the properly construed claims must be compared to the allegedly infringing device. See, e.g., Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357, 1370 (Fed. Cir. 2010). Because the Subject Articles do not include the claimed strap sections, OUII respectfully submits that those articles do not infringe claims 1 and 2 of the '858 patent. 11

14 1. Claim Construction With respect to the first step, claim construction is a generally matter of law. Markman v. Westview Instruments Inc., 52 F.3d 969, 976 (Fed. Cir. 1995) (en banc) ( Markman ), aff d, 517 U.S. 370 (1996). However, claim construction may involve underlying factual determinations. See, Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, (2015). The ordinary and customary meaning of the language of a claim to one of ordinary skill in the art at the time of the invention is the starting point for the analysis. Phillips v. A.W.H. Corp., 415 F.3d 1303, (Fed. Cir. 2005) (en banc); Alloc, Inc., v. U.S. International Trade Commission, 342 F.3d 1361, 1368 (Fed. Cir. 2003) ( Alloc ). Because claims are construed from the perspective of a person having ordinary skill in the art at the time of invention (see Alloc, 342 F.3d at 1368), our infringement analysis begins with this inquiry. In this regard, the Commission has determined that a person of ordinary skill in the art of the '858 patent would have two to five years of hands-on experience in designing and developing products made of molded foams, especially footwear. Certain Foam Footwear, Inv. No. 337-TA-567, Comm n Op. at 8 (Jul. 25, 2008). With regard to the '858 patent, the strap section limitations of claims 1 and 2 are at issue for purposes of this proceeding. Claims 1 and 2 of the '858 patent read as follows: Claim 1. A footwear piece comprising: a base section including an upper and a sole formed as a single part manufactured from a moldable foam material; and a strap section formed of a moldable material that is attached at opposite ends thereof to the upper of the base section with plastic connectors such that the moldable foam material of 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; wherein the upper includes an open rear region defined by an upper opening perimeter, and wherein frictional forces developed by the 12

15 contact between the strap section and the base section at the plastic connectors are sufficient to maintain the strap section in place in an intermediary position after pivoting, whereby the strap section lends support to the Achilles portion of the human foot inserted in the open rear region; and wherein the upper includes a substantially horizontal portion and a substantially vertical portion forming a toe region that generally follows the contour of a human foot, wherein the toe region tapers from an inner area of the base section where the larger toes exist to an outer area of the base section where the smaller toes exist; and wherein the sole includes a bottom surface having front and rear tread patterns longitudinally connected by a flat section. Claim 2. A footwear piece comprising: a base section including an upper and a sole formed as a single part manufactured from a moldable foam material; and a strap section formed of a molded foam material attached at opposite ends thereof to the base section such that the strap section is in direct contact with the base section and pivots relative to the base section; and wherein the upper includes an open rear region defined by an upper opening perimeter; and wherein the sole includes a rear perimeter; and wherein the strap section pivots between a first contact point on the upper opening perimeter and a second contact point on the rear perimeter, and wherein frictional forces developed by the contact between the strap section and the base section at the points of attachment are sufficient to maintain the strap section in place in an intermediary position after pivoting whereby the strap section lends support to the Achilles portion of a human foot inserted in the open rear region; and wherein the upper includes a substantially horizontal portion and a substantially vertical portion forming a toe region that generally follows the contour of a human foot, wherein the toe region tapers from the inner area of the base section where the larger toes exist to the outer area of the base section where the smaller toes exist; and wherein a decorative pattern of raised bumps is molded or otherwise created in the upper near to and extending the length of the upper opening perimeter; and wherein a plurality of ventilators are formed in both the substantially vertical portion and the substantially horizontal portion, and wherein the ventilators extend up a majority of the height of the vertical portion; wherein the vertical portion of the upper includes an upper strip, wherein the ventilators are formed in the upper strip, and wherein the upper strip extends from the toe region to the points of attachment for the 13

16 strap section, and wherein the sole includes a lower strip that parallels the upper strip and is separated by a line that extends from the toe region to a heel of the footwear piece, and wherein the lower strip vertically rises in a direction toward the heel; and wherein the sole includes a bottom surface having front and rear tread patterns longitudinally connected by a flat section without tread patterns bounded by raised side portions; and wherein the sole further includes a top surface having a support base including a raised pattern where a foot contacts the support base. '858 patent, cl. 1-2 (emphasis added). In the underlying investigation, the ALJ construed the following terms related to the strap section limitations of claims 1 and 2: Limitation moldable foam material / moldable material / molded foam material (claims 1 and 2) plastic connectors at the connectors / at the plastic connectors / at the points of attachment direct contact ALJ s Construction foam material capable of being manufactured, using a mold, into a threedimensional shape connectors made from plastic there must be some contact directly between the strap section and base section that occurs somewhere in the area where the base and strap sections are connected Certain Foam Footwear, Inv. No. 337-TA-567, Final Initial Determination at 33-34, 39-41, 44 (Apr. 11, 2008) (unreviewed in relevant part). No additional claim construction disputes have been raised, and it is not disputed that the Subject Articles do not infringe claims 1 and 2 of the '858 patent. See Request; Requesters Written Submission; Croc s Written Submission; Requesters Reply Written Submission. Accordingly, it is not necessary to construe any additional terms for the purpose of determining whether the Subject Articles infringe claims 1 and 2 of the '858 patent. See U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) ( Claim construction is a matter of resolution of disputed meanings and technical scope, to 14

17 clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of infringement. It is not an obligatory exercise in redundancy. ). 2. Infringement Requesters contend that the Subject Articles do not infringe claims 1 and 2 of the '858 patent because they are strapless and thus do not satisfy the strap section limitations of those claims. Request at 7-8. The Subject Articles are shown below: Mossy Oak Women s Fleece Dawgs Breakup Infinity, Pink Mossy Oak Women s Fleece Dawgs Winter Brush 15

18 Request at 3; see also Request Exhs It is clear from examining the Subject Articles that they do not include a strap at all, much less a strap section formed of a moldable material that is attached at opposite ends thereof to the upper of the base section with plastic connectors, as required by claim 1 of the '858 patent, nor do they include a strap section formed of a molded foam material attached at opposite ends thereof to the base section such that the strap section is in direct contact with the base section and pivots relative to the base section, as required by claim 2 of the '858 patent. See Request at 3, Exhs Crocs does not dispute this point, and agrees that the shoes actually depicted in the Request are not within the scope of the remedial orders as to the '858 patent. Crocs Written Submission at 2. Requesters argument that strapless footwear was not part of the underlying investigation is misplaced. See Request at 5. The Commission s remedial orders do not exclude strapless foam footwear. By their terms, the General Exclusion Order applies to [f]oam footwear covered by claims 1 and 2 of the '858 patent or by the '789 patent, and the Cease and Desist Order as to Double Diamond applies to foam footwear that infringe one or more of claim 2 of U.S. Patent No. 6,993,858 [] and U.S. Design Patent No. D517,789. Request Exh. 1. It is true that remedial orders must be read in light of the underlying investigation, and may be limited by its scope. See, e.g., Certain GPS Devices and Products Containing Same, Inv. No. 337-TA-602, Advisory Opinion at 4 (Apr. 20, 2010) ( GPS Devices ). Here, however, the scope of the underlying investigation was not limited so as to exclude strapless foam footwear. See 71 Fed. Reg (May 11, 2006); Certain Foam Footwear, Inv. No. 337-TA-567, Amended Complaint (April 27, 2006). Accordingly, it is not relevant to our analysis whether the 16

19 Commission considered strapless footwear in finding a violation of Section 337 and issuing its remedial orders. Thus, for the reasons set forth above, the Subject Articles do not satisfy the strap section limitations of claims 1 and 2 of the '858, and thus do not infringe those claims. C. U.S. Design Patent No. D517,789 As discussed above, the ordinary observer test is used to determine whether a design patent has been infringed. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir. 2008) ( Egyptian Goddess ); see also Crocs, Inc. v. Int l Trade Comm n, 598 F.3d 1294, 1302 (Fed. Cir. 2010) ( Crocs ). A claimed design is infringed if an ordinary observer, familiar with the prior art designs, would be deceived into believing that the accused product is the same as the patented design. Crocs, 598 F.3d at 1303 (Fed. Cir. 2010), citing Egyptian Goddess, 543 F.3d at 681. According to the Federal Circuit, [t]he proper comparison requires a side-by-side view of the drawings of the '789 patent and the accused products. Crocs, 593 F.3d at Requesters argue that the '789 patent, as it has been construed by the Federal Circuit and the Commission, requires a heel-strap. See Request at 11. Because the Subject Articles do not have heel-straps, Requesters contend that they do not infringe the '789 patent. Id. OUII disagrees with Requesters analysis. The appropriate analysis, as explained by the Federal Circuit, is to compare the accused products with the drawings of the '789 patent, and to determine whether an ordinary observer, familiar with the prior art designs, would be deceived into believing that the accused product is the same as the patented design. Crocs, 593 F.3d at The ordinary observer test applies to the patented design as a whole. Payless Shoesource, Inc. v. Reebok Int l, Ltd., 998 F.2d 985, 991 (Fed. Cir. 1993) (quoting Litton Sys. Inc. v. 17

20 Whirlpool, 728 F.2d 1423, 1444 (Fed. Cir. 1984)); see Braun, Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 820 (Fed. Cir. 1992). Although the absence of a heel-strap is certainly relevant, it remains necessary to perform the side-by-side comparison that is part of the ordinary observer test. See Crocs, 593 F.3d at The 7 figures of the '789 patent appear as follows: '789 patent, Figures

21 For purposes of comparison, the Subject Articles appear as follows: Request at 3; Request Exhs. 2, 4. A side-by-side comparison of the Subject Articles with the figures of the '789 patent suggests that an ordinary observer, familiar with the prior art designs, would not be deceived into believing the accused products are the same as the patented design. As noted by the Federal Circuit: One of the overall effects of the design is the interaction between the strap assembly portion and the base portion of the shoes where the strap is attached to 19

22 the base. Multiple major design lines and curves converge at that point creating a focal point attracting the eye of the ordinary observer when viewing the overall effect of the design. Another overall effect of the design is a visual theme of rounded curves and ellipses throughout the design, including the strap forming a sort of continuation of the sidewall of the base to create a visually continuous ring encircling the entire shoe. Other examples of rounded curves or ellipses in the design are the ellipses formed by the strap and the foot opening in the base. Crocs, 593 F.3d at It does not appear to OUII that the overall effect of the '789 patent design is embodied in the Subject Articles in sufficient detail and clarity so as to cause market confusion. For example, the fleece lining, the arrangement of holes on the roof of the upper, and the absence of a heel-strap present a different overall effect than the design of the '789 patent. Moreover, Crocs does not dispute Requesters contention that the Subject Articles do not infringe the '789 patent. See Crocs Written Submission at 2. Thus, for the reasons set forth above, the Subject Articles do not infringe the '789 patent. VI. CONCLUSION For the reasons set forth above, OUII respectfully submits that Double Diamond and U.S.A. Dawgs have demonstrated that the Subject Articles do not infringe claims 1 and 2 of the 20

23 '858 patent or the '789 patent, and thus do not fall within scope of the General Exclusion Order or Cease and Desist Order as to Double Diamond Distribution, Ltd. /s/ R. Whitney Winston Margaret D. Macdonald, Director Jeffrey T. Hsu, Supervisory Attorney R. Whitney Winston, Investigative Attorney OFFICE OF UNFAIR IMPORT INVESTIGATIONS U.S. International Trade Commission 500 E Street SW, Suite 401 Washington, DC (202) (202) (facsimile) November 7,

24 Certain Magnetic Data Storage Tapes and Cartridges Containing Same Investigation No. 337-TA-1012 CERTIFICATE OF SERVICE The undersigned certifies that on November 7, 2016, he caused the foregoing REPORT OF THE OFFICE OF UNFAIR IMPORT INVESTIGATIONS AS TO WHETHER CERTAIN FOAM FOOTWEAR INFRINGES U.S. DESIGN PATENT NO. D517,789 OR CLAIMS 1 AND 2 OF U.S. PATENT NO. 6,993,858 to be served served upon the parties in the manner indicated below: Complainant Crocs, Inc. Michael A. Berta, Esq. Arnold & Porter LLP Three Embarcardero Center, 10 th Floor San Francisco, CA VIA Michael.Berta@aporter.com Requesters Double Diamond Distribution Ltd. and U.S.A. Dawgs, Inc. David J. Kaplan, Esq W. Windmill Lane, Unit 106 Las Vegas, NV VIA dkaplan@usadawgs.com /s/ R. Whitney Winston R. Whitney Winston Investigative Attorney U.S. International Trade Commission Office of Unfair Import Investigations 500 E Street SW, Suite 401 Washington, DC (202) (202) (fax) 1