IN THE UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF NORTH CAROLINA

WESTERN DIVISION

BUYER’S DIRECT INC.,

Plaintiff,

v.

DICK’S SPORTING GOODS, INC.,

HIBBETT SPORTING GOODS, INC., CASE NO. 5:18-cv-597
ACADEMY LTD.,
IMPLUS FOOTCARE, LLC,
and Unknown retailers who purchase
infringing products from IMPLUS
FOOTCARE LLC
Defendants.

DEFENDANTS’ MEMORANDUM OF LAW IN SUPPORT OF THEIR

MOTION FOR PARTIAL JUDGMENT ON THE PLEADINGS

Pursuant to Rule 12(c), Defendants Dick’s Sporting Goods, Inc. (“Dick’s”), Hibbett

Sporting Goods, Inc. (“Hibbett”), Academy, Ltd. (“Academy”), and Implus Footcare, LLC

(‘Implus”) (collectively, “Defendants”) hereby submit this memorandum of law in support of their

motion for partial judgment on the pleadings with respect to Plaintiff Buyer’s Direct Inc.’s (“BDI”)

claims for design patent infringement (Counts I-V), in the Amended Complaint (ECF No. 30).

I. INTRODUCTION

This is not the first time BDI has asserted patent rights in Federal Court. Nor is it the first

time that the Courts have reviewed whether commercial products infringe the asserted patent.

Indeed, not only has a district court previously determined that the asserted patent is not infringed

by certain commercially-available products, but an appellate court—the U.S. Court of Appeals for

the Federal Circuit—has agreed. The same result should flow here upon this Court’s review of

what has come before and the instruction those Federal Courts have provided regarding the scope

Case 5:18-cv-00597-BO Document 50 Filed 06/10/19 Page 1 of 26

of the asserted patent. And like the prior case history—which provides critical guideposts for this

Court’s analysis here—BDI’s design patent infringement claims fail, as they are implausible and

fail as a matter of law.

BDI alleges that Defendants’ slipper socks (the “Accused Slipper Socks”) infringe its

asserted design patent, U.S. Patent No. D598,183 (the “’183 patent”), which covers the design of

a slipper resembling the shape of a shoe. But a design patent is only entitled to narrow protection,

limited to the overall visual impression of the ornamental aspects of the claimed design. It is these

overall visual impressions of the ornamental aspects of the claimed design that have already been

decided by earlier courts. Moreover, a side-by-side comparison of drawings from the asserted

patent (on the left) and the alleged photographs of Defendants’ Accused Slipper Socks (on the

right)—selected by BDI itself—demonstrate that the overall designs are significantly different:

Whereas the features of the ’183 patent design come together to create the impression of a shoe-

like slipper that the Federal Circuit has described as being “structured and formed,” the Accused

Slipper Socks have a soft and formless appearance—like a thick fleece-lined sock. As such, no

consumer could possibly be deceived into thinking that the designs are the same.

The differences between the ’183 patent design and the Accused Slipper Socks are even

more apparent in view of the Federal Circuit’s decision in High Point Design LLC v. Meijer, Inc.,

621 F. App’x. 632, 638-41 (Fed. Cir. 2015), in which it found that counterclaim-defendant High

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Point Design, LLC’s (“High Point”) accused product, a fuzzy slipper that was arguably closer to

the ’183 patent design than the Accused Slipper Socks, was non-infringing.

Because even a cursory comparison of the drawings from the ’183 patent and the images

of the Accused Slipper Socks in BDI’s Amended Complaint demonstrates that the designs are

plainly dissimilar, BDI’s design patent infringement claims fail as a matter of law. Defendants

thus respectfully request that the Court enter judgment in Defendants’ favor on Counts I-V in the

Amended Complaint.

II. BACKGROUND

BDI filed its Original Complaint in this action on December 19, 2018 (ECF No. 1), and its

Amended Complaint on March 21, 2019 (ECF No. 30). In its Amended Complaint, BDI alleged

claims for design patent infringement (id., Counts I-V), trade dress infringement (id., Count VI),

and unfair competition under North Carolina statutory and common law (id., Counts VII-VIII).

BDI also alleged that it was entitled to a constructive trust on Defendants’ profits (Count IX) and

an accounting against Defendants (Count X).

A. The Asserted Design Patent

For its design patent infringement claims, BDI alleges that it owns a valid patent for a

slipper design, U.S. Patent No. D598,183 (the “’183 patent”). Id. ¶¶ 18-20. The ’183 patent,

entitled “SLIPPER,” issued on August 18, 2009, and contains a single claim for the “ornamental

design for a slipper.”1 ’183 patent (ECF No. 1-1) at 1. The ’183 patent has eight drawings:

1
The ’183 patent is attached to the Amended Complaint and incorporated by reference. Id. ¶ 18.

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Id., Figs. 1-8.

B. The Accused Slipper Socks

BDI alleges that Defendants have either directly infringed or induced infringement of the

’183 patent, based on their manufacture, import, use, or sale of the Accused Slipper Socks.

Specifically, BDI alleges that Defendants Hibbett, Academy, and Implus directly infringe the ’183

patent “by making, importing, using importing, using, offering for sale and/or selling a foot

covering marketed under the SOFSOLE FIRESIDE trademarked brand and any substantially

similar foot coverings.” Am. Compl. (ECF No. 30) ¶ 40, Counts II-III. BDI also alleges that

Defendants Dick’s and Implus directly infringe the ’183 patent “by making, importing, using,

offering for sale and/or selling an infringing foot covering marketed under the COZY CABIN

trademarked brand and any substantially similar foot coverings.” Id. ¶ 47, Count I. In addition,

BDI alleges that Dick’s has induced infringement of the ’183 patent by “advertis[ing] infringing

COZY CABIN foot coverings with depictions of people wearing them as they are designed to be

worn, with the knowledge that such use would constitute direct infringement of the ’183 Patent.”

Id., Count V. And BDI also alleges, based on information and belief, that Implus directly infringes

the ’183 patent by supplying, offering for sale and or selling its allegedly infringing foot coverings

to “unknown Defendant retailers.” Id. ¶ 48, Count IV.

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 The Amended Complaint includes several images that BDI alleges are representative

examples of the Accused Slipper Socks, including the following:

Id. ¶¶ 40, 47.

C. BDI’s Prior Lawsuit Against High Point Design, LLC

BDI previously asserted its ’183 patent against High Point Design’s (“High Point”) Fuzzy

Babba slipper design, without success. See High Point Design LLC v. Buyer’s Direct, Inc., 2014

U.S. Dist. LEXIS 41290 (S.D.N.Y. Mar. 26, 2014), aff’d, 621 F. App’x 632, 641 (Fed. Cir. 2015).

On summary judgment, the district court concluded that the visual impressions of the non-

infringing Fuzzy Babba Slipper design2 (below) and the ’183 patent design were not “substantially

similar.” Thus, a consumer would not confuse the two. Id. The Federal Circuit identified a

number of distinct elements of the ’183 patent design and affirmed the district court’s summary

judgment of non-infringement, concluding that the overall visual impressions between the non-

infringing Fuzzy Babba design and the ’183 patent design were different, in view of their

ornamental aspects. High Point Design LLC v Buyer's Direct, Inc., 621 F. App’x. 632, 638-41

2
This image was taken from the Federal Circuit’s opinion in High Point Design LLC v. Buyer's
Direct, Inc., 621 F. App'x 632, 641 (Fed. Cir. 2015).

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(Fed. Cir. 2015).

III. LEGAL STANDARD

A. Motion for Judgment on the Pleadings

A party may move for judgment on the pleadings as soon as the pleadings are closed. Fed.

R. Civ. P. 12(c). “Courts apply the Rule 12(b)(6) standard when reviewing a motion under Rule

12(c).” Pa. Nat’l Mut. Cas. Ins. Co. v. Beach Mart, Inc., No. 2:14-CV-8-BO, 2018 U.S. Dist.

LEXIS 36211, at *4 (E.D.N.C. Mar. 5, 2018) (citing Mayfield v. Nat’l Ass’n for Stock Car Auto

Racing, Inc., 674 F.3d 369, 375 (4th Cir. 2012).

A complaint must contain a “short and plain statement of the claim showing the pleader is

entitled to relief.” Fed. R. Civ. P. 8(a)(2). “To survive a Rule 12(b)(6) motion, ‘factual allegations

must be enough to raise a right to relief above the speculative level’ and have ‘enough facts to state

a claim to relief that is plausible on its face.’” Wahi v. Charleston Area Med. Ctr., Inc., 562 F.3d

599, 615 n.26 (4th Cir. 2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555, 570, 127 S.

Ct. 1955, 1965, 1974, 167 L. Ed. 2d 929 (2007). “A claim has facial plausibility when the plaintiff

pleads factual content that allows the court to draw the reasonable inference that the defendant is

liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).

On a motion to dismiss, the court must “accept as true all well-pleaded allegations and

view the complaint in the light most favorable to the plaintiff.” Philips v. Pitt Cty. Mem’l Hosp.,

572 F.3d 176, 180 (4th Cir. 2009). However, this Court need not accept as true allegations that

“represent ‘unwarranted inferences, unreasonable conclusions, or arguments,’ or that ‘contradict

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matters properly subject to judicial notice or by exhibit.’” Massey v. Ojaniit, 759 F.3d 343, 353

(4th Cir. 2014) (quoting Blankenship v. Manchin, 471 F.3d 523, 529 (4th Cir. 2006).

Although a Rule 12(b)(6) motion is generally limited to the pleadings, the Court may

consider “documents attached to the complaint, as well as those attached to the motion to dismiss,

so long as they are integral to the complaint and authentic.” Philips v. Pitt County Mem’l Hosp.,

572 F.3d 176, 180 (4th Cir. 2009) (internal citation omitted). The Court may also take judicial

notice of matters of public record. Id.

B. Design Patent Infringement

BDI bears the burden of proving infringement of the ’183 patent by a preponderance of the

evidence. Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1335 (Fed. Cir. 2015). To

determine whether a design patent is infringed, courts apply the “ordinary observer” test which

asks 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, Inc. v. ITC, 598

F.3d 1294, 1303 (Fed. Cir. 2010) (citing Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678

(Fed. Cir. 2008) (en banc)). In evaluating infringement, “[i]t is the appearance of a design as a

whole which is controlling.” OddzOn Prods. v. Just Toys, 122 F.3d 1396, 1405 (Fed. Cir. 1997).

“There can be no infringement based on the similarity of specific features if the overall appearance

of the designs are dissimilar.” Id.

The Federal Circuit recognizes that “[i]n some instances, the claimed design and the

accused design will be sufficiently distinct that it will be clear without more that the patentee has

not met its burden of proving the two designs would appear ‘substantially the same’ to the ordinary

observer.” Egyptian Goddess, 543 F.3d at 678. “If the claimed and accused designs are not plainly

dissimilar, the inquiry may benefit from comparing the claimed and accused designs with prior art

to identify differences that are not noticeable in the abstract but would be significant to the

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hypothetical ordinary observer familiar with the prior art. Ethicon, 796 F.3d at 1335. “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.” Id.

C. Design Patent Claims Are Frequently Disposed of on Rule 12(b)(6) and Rule
12(c) Motions

Because the determination of design patent infringement claims involves a side-by-side

comparison of the asserted design and the accused product, and such a comparison can generally

be made on evidence that is central to the plaintiff’s claims, district courts may dispose of design

patent infringement claims on motions brought under Rules 12(b)(6) or 12(c) of the Federal Rules

of Civil Procedure. See, e.g., Anderson v. Kimberly-Clark Corp., 570 F. App’x 927, 933 (Fed. Cir.

2014) (affirming district court’s Rule 12(c) non-infringement judgment); Colida v. Nokia, Inc.,

347 F. App’x 568, 570 (Fed. Cir. 2009) (affirming dismissal of design patent infringement claim

pursuant to Rule 12(b)(6)); OurPet’s Co. v. Iris USA, Inc., No. 1:14 CV 1642, 2015 U.S. Dist.

LEXIS 185150, at *1 (N.D. Ohio Mar. 23, 2015) (applying the ordinary observer test and

dismissing complaint for design patent infringement pursuant to Rule 12(b)(6)); Legler v. Exxel

Outdoors, Inc., No. 13-C-668, 2014 U.S. Dist. LEXIS 103292, at *13 (E.D. Wis. July 29, 2014)

(applying the ordinary observer test and dismissing complaint for design patent infringement

pursuant to Rule 12(b)(6)); Moose Mt. Toymakers Ltd. v. Majik Ltd., LLC, No. 10-4934 (DMC)

(JAD), 2011 U.S. Dist. LEXIS 90269, at *8-9 (D.N.J. Aug. 12, 2011) (applying the ordinary

observer test and granting non-infringement judgment on the pleadings pursuant to Rule 12(c));

MSA Prods. v. Nifty Home Prods., 883 F. Supp. 2d 535, 542 (D.N.J. 2012) (applying the ordinary

observer test and dismissing design patent infringement claims, in part, pursuant to Rule 12(b)(6));

Parker v. Kimberly-Clark Corp., No. 11 C 5658, 2012 U.S. Dist. LEXIS 2565, at *1 (N.D. Ill. Jan.

10, 2012) (applying the ordinary observer test and dismissing complaint for design patent

infringement pursuant to Rule 12(b)(6)); Cotapaxi Custom Design & Mfg., LLC v. Corp. Edge,

Inc., Civil Action No. 06-5183 (JAG), 2007 U.S. Dist. LEXIS 73172, at *17 (D.N.J. Sep. 28, 2007)

(same); Kellman v. Coca-Cola Co., 280 F. Supp. 2d 670, 679-80 (E.D. Mich. 2003) (applying the

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ordinary observer test and dismissing design patent infringement claims pursuant to Rule

12(b)(6)).
IV. ARGUMENT

BDI’s Amended Complaint fails to state a plausible claim for design patent infringement,

and BDI cannot meet its burden to establish that the Accused Slipper Socks and the claimed design

are “substantially similar.” To the contrary, even a cursory review of the Accused Slipper Socks

demonstrates that they are “plainly dissimilar” from the ’183 patent design, and no ordinary

observer would be deceived into believing that they are the same. Indeed, the differences between

the Accused Slipper socks and the ’183 patent design are even more pronounced than the

differences between the ’183 patent design and the Fuzzy Babba Slippers, which both the district

court and Federal Circuit decided were non-infringing. Accordingly, BDI’s design patent

infringement claims fail as a matter of law.

A. The ’183 Patent Claims a Very Specific Slipper Shoe Design that Appears
“Structured and Formed”

Design patents are entitled to a very narrow scope of protection. In re Mann, 861 F.2d

1581, 1582 (Fed. Cir. 1988). “A design patent only protects the novel, ornamental features of the

patented design,” and the scope of a design patent claim is limited to “its overall ornamental visual

impression, rather than to the broader general design concept.” OddzOn Prods, 122 F.3d at 1405.

Design patents should be construed based on their drawings. Crocs, 598 F.3d at 1302 (“Design

patents are typically claimed as shown in drawings, and claim construction must be adapted to a

pictorial setting.”)

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 The ’183 patent relates to a slipper with a shoe-like structure, and provides the eight

drawings shown below.

’183 patent, Figs. 1-8.

As the Federal Circuit held, the overall visual impression of the ’183 patent design is a

slipper shoe that appears “structured and formed,” as reflected in the ornamental aspects of the

design. See High Point Design, 621 F. App’x at 641. The design elements identified by the Federal

Circuit include:

(1) A body with a “distinct ‘S’ curve between the foot opening and the front of the
slipper as viewed form the side, which ends in a downward slope toward the front
of the body.” Id. at 639, 641; ’183 patent, Fig. 5.

(2) A foot opening with a “relatively defined, curved opening that is lower in the
middle and higher at the edges.” High Point Design, 621 F. App’x at 641; ’183
patent, Fig. 5.

(3) “Fuzz” protruding from the foot opening [that] does not overlap the edge of the foot
opening. High Point Design, 621 F. App’x at 639-40; ’183 patent, Fig. 5.

(4) An outward heel bulge at the rear of the body. High Point Design, 621 F. App’x at
641; ’183 patent, Fig. 5.

(5) A sole. High Point Design, 621 F. App’x at 640; ’183 patent, Figs. 2-5, 7-8.

(6) An embodiment wherein the sole has “dots” that “are arranged in a uniformly
spaced pattern of rows and columns in two separate groups. One group is
positioned closer to the front of the slipper and narrows slightly toward the toe area.
The other group is placed closer to the rear and has a corresponding taper toward

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 the rear area.” High Point Design, 621 F. App’x at 640; ’183 patent, Fig. 7. The
“dot columns” of the patented design are of “varying width.” High Point Design,
621 F. App’x at 642; ’183 patent, Fig. 7.

(7) An embodiment that “has a smooth sole.” High Point Design, 621 F. App’x at 640;
’183 patent, Fig. 8.

In addition to those design elements, the claimed design also includes the following

features that contribute to its overall appearance:

(8) A seam line above the sole of the slipper that surrounds the slipper. ’183 patent,
Fig. 5.

(9) A tapered point toe box. Id., Fig. 6.

(10) “Fuzz” arranged uniformly around the foot opening without gaps. Id.

Below are annotated drawings showing each of these design elements.

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 B. BDI Cannot Meet It’s Burden to Prove that that the ’183 Patent Design and
the Accused Slipper Socks Would Appear “Substantially Similar” to an
Ordinary Observer

The ordinary observer test typically requires a side-by-side comparison of the drawings

from the design patent and the accused device. Crocs, 598 F.3d at 1304; see also High Point

Design, 621 F. App’x at 642 (stating that the district court properly compared the drawings of ’183

patent to the accused design and explaining “[w]e have long-cautioned that it is generally improper

to determine infringement by comparing an accused product with the patentee’s purported

commercial embodiment.”). To succeed on a claim for design patent infringement, the patentee

must establish that “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.” Id. at 1303.

As shown in the following figures, a side-by-side comparison demonstrates that the

Accused Slipper Socks have a very different overall appearance than the ’183 patent design, and

would appear “plainly dissimilar” to an ordinary observer.3

Unlike the “structured and formed” appearance of the ’183 patent design, which resembles

a shoe, the Accused Slipper Socks have a soft and formless appearance—like a thick fleece-lined

sock—and there are numerous differences in the ornamental aspects of each of the designs that

contribute to their different overall visual impressions. To begin, as shown below in Figure 1, the

side profiles of the ’183 patent design and the Accused Slipper Socks are different. Instead of

having a body with a distinct ‘S’ curve between the foot opening and the front of the slipper, the

Accused Slipper Socks are unstructured and have a relatively flat sloping side profile. The

Accused Slipper Socks are also missing the seam line that completely surrounds the bottom of the

3
Defendants are concurrently filing a motion for leave to submit physical exhibits of the
Accused Slipper Socks that BDI identified in its Amended Complaint, and will submit those
physical exhibits if the Court grants the motion.

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’183 patent design. Additionally the Accused Slipper Socks do not have a separate sole. Thus,

while the patented design has at least one of a smooth sole or a sole with two groups of dots having

columns of varying width, the Accused Slipper Socks have neither of these design features.

Figure 1: Side view of ’183 Patent Design and Accused Slipper Socks (compare ’183 patent
(ECF No. 1-1), Fig. 4 with Am. Compl. (ECF No. 30) ¶¶ 54, 62, 69).

’183 Patent Design Accused Slipper Socks

The foot openings are also different in at least three ways. First, whereas the foot opening

in the ’183 patent design is relatively defined, with a curved opening that is lower in the middle

and higher at the edges, the shape of the foot opening in the Accused Slipper Socks is not so

structurally defined, and appears relatively flat when viewed from the side, as shown in Figure 1.

Second, whereas the fuzz protruding from the foot opening in the ’183 patent design does not

pronouncedly overlap the edge of the foot opening, the fleece fuzz in the Accused Slipper Socks

substantially extends over and around the edges of the foot openings. This difference is especially

dramatic when the designs are viewed from above, as shown in Figure 2. Third, the arrangement

of the fuzz around the foot opening is different. Unlike the ’183 patent design in which the fuzz

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is uniformly arranged in a continuous rim fashion around the foot opening, there is a gap in the

protruding fuzz at the front of the foot openings of the Accused Slipper Socks, as shown in Figure

2. The edges of the gap roughly form the shape of a “V” where the edges come together, as

compared to the lack of a “V” shaped gap with the continuous rim arrangement of the fuzz in the

patented design. The “V”-shaped gap of the Accused Slipper Socks is even more apparent in

images of the Accused Slipper Socks being worn, as shown in Figure 5.

Figure 2: Top view of ’183 Patent Design and Accused Slipper Socks (compare ’183 patent
(ECF No. 1-1), Figs. 6 with Am. Compl. (ECF No. 30) ¶¶ 54, 62, 69).

’183 Patent Design Accused Slipper Socks

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 The shapes of the front toe areas of the Accused Slipper Socks are also different from the

patented design. In the ’183 patent design, the toe box is tapered toward a point at the front of the

slipper shoe. In contrast, the front of the Accused Slipper Socks appears much more box-like, with

rounded edges. This difference is readily apparent when the designs are viewed from above, as

shown in Figure 2.

There are also differences in the shape of the rears of the Accused Slipper Socks. Instead

of the structured ‘S’ curve that defines the heel bulge of the ’183 patent design, the rear of the

Accused Slipper Socks appears somewhat amorphous and lacks the defined shape of the ’183

patent design, particularly when viewed from behind, as shown in Figure 3.

Figure 3: Rear view of ’183 Patent Design and Accused Slipper Socks (compare ’183 patent
(ECF No. 1-1), Fig. 3 with Am. Compl. (ECF No. 30) ¶¶ 54, 62, 69).

’183 Patent Design Accused Slipper Socks

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 In addition to the differences in the upper portions of the ’183 patent design and the

Accused Slipper Socks, the bottoms of the designs are also different. As shown below in Figure

4, unlike the ’183 patent design, which either has two separate groups of dots arranged at the front

and back of the sole or no dots at all, the bottoms of the Accused Slipper Socks have one group of

dots that extend through the middle of the design. The dots on the bottoms of the Accused Slipper

Socks are also much larger as compared to the small dots in the ’183 patent design, as shown in

Figure 4.

Figure 4: Bottom view of ’183 Patent Design and Accused Slipper Socks (compare ’183 patent
(ECF No. 1-1), Figs. 7, 8 with Ex. 14).5
’183 Patent Design Accused Slipper Socks

Red circles have been added to show the

location of the dots.

4
Exhibits are attached to the Declaration of Michael A. Anderson filed herewith.
5
BDI did not include photographs of the bottoms of the Accused Slipper Socks in its Amended
Complaint. BDI appears to have withheld this evidence from the Court in its Complaint because
the distinctions in (1) not having any sole at all and (2) not having a sole with the smooth or dot
patterns of Figures 7 and 8 of the patent critically distinguish the Accused Slipper Socks from the
patented design in a non-infringing manner. BDI withheld this evidence despite the fact that the
Federal Circuit previously found that the arrangement of the dots on the soles of the patented
design contributed to the overall visual impression of the ’183 patent design. See High Point
Design, 621 F. App’x at 641-42. Indeed, the Federal Circuit characterized these differences as
critical to the differences between the patented design and the accused product in that appeal. See
id. The Court may nevertheless consider the photographs because the appearance of the Accused
Slipper Socks is integral to BDI’s claims, and the authenticity of the photographs cannot
reasonably be disputed. See Philips, 572 F.3d at 180; see also Kimberly-Clark Corp., 570 F. App’x
at 932 (finding no error in district court’s consideration of photographs submitted with the
defendant’s Rule 12(c) motion).

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 The differences between the Accused Slipper Socks and the ’183 patent design are apparent

even when the Accused Slipper Socks are being used, as shown in Figure 5.

Figure 5: Comparison of ’183 Patent Design and Accused Slipper Socks Being Worn
(compare ’183 patent (ECF No. 1-1), Figs. 4, 6 with Am. Compl. (ECF No. 30) ¶ 81).
’183 Patent Design Accused Slipper Socks

Indeed, the differences in the slopes of the side profiles, the shapes of the foot openings,

the protrusions of the fuzz from the foot openings, the arrangement of the fuzz around the foot

openings (see back foot), and the shapes of the toe areas are even more pronounced when the

Accused Slipper Socks are being worn. Moreover, the images showing the Accused Slipper Socks

as they would appear on a person’s feet highlight their overall soft, formless appearance—like a

thick fleece-lined sock—as opposed to the “structured and formed” shoe-like appearance of the

’183 patent design.

The soft, formless, sock-like appearance of the Accused Slipper Socks is even more

apparent when the products are allowed to lie flat or drape over a support, as shown in Figure 6.

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Figure 6: Comparison of ’183 Patent Design with Accused Slipper Socks Lying Flat and
Draped (compare ’183 patent (ECF No. 1-1), Figs 1, 2. with Ex. 2).6
’183 Patent Design Accused Slipper Socks

6
The photographs in Ex. 2 were not included in BDI’s Amended Complaint but may nevertheless
be considered because the appearance of the Accused Slipper Socks is integral to BDI’s claims,
and the authenticity of the photographs cannot reasonably be disputed. See Philips, 572 F.3d at
180; see also Kimberly-Clark Corp., 570 F. App’x at 932.

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 Based on these differences, an ordinary observer would readily recognize that the overall

appearance of the Accused Slipper Socks is “plainly dissimilar” from the ’183 patent design.

Thus it is clear that BDI has not met and cannot meet its burden of proving that the designs would

appear substantially similar to an ordinary observer, and BDI’s design patent infringement claims

fail as a matter of law. See Ethicon, 796 F.3d at 1335.

C. The Non-Infringing Fuzzy Babba Design Highlights the Dissimilarities

Between the ’183 Patent Design and the Accused Slipper Socks

Although the ’183 patent design and the Accused Slipper Socks are plainly dissimilar, the

differences between the designs are even more apparent in view of the non-infringing Fuzzy Babba

design, which both the district court and the Federal Circuit decided did not infringe the ’183

patent. See High Point Design, 2014 U.S. Dist. LEXIS 41290, at *21; High Point Design, 621 F.

App’x at 641; C.f. Egyptian Goddess, 543 F.3d at 678 (Fed. Cir. 2008) (“[W]hen the claimed and

accused designs are not plainly dissimilar, resolution of the question whether the ordinary observer

would consider the two designs to be substantially the same will benefit from a comparison of the

claimed and accused designs with the prior art.”).

The district court and the Federal Circuit conducted a side-by-side comparison of the ’183

patent design and the non-infringing Fuzzy Babba design and concluded that they bring to mind

different visual impressions. Specifically, the courts decided that, based on their ornamental

aspects, “the Fuzzy Babba’s appearance evokes a soft, gentle image, while the D’183 patent

appears robust and durable,” and that a consumer would not confuse the two designs. High Point

Design, 2014 U.S. Dist. LEXIS 41290, at *21; High Point Design, 621 F. App’x at 641. Images

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Case 5:18-cv-00597-BO Document 50 Filed 06/10/19 Page 19 of 26
of the non-infringing Fuzzy Babba design are reproduced below, from BDI’s appellate brief and

the Federal Circuit’s opinion.7

In granting summary judgment of non-infringement, the district court provided a relatively

brief analysis of the differences between the non-infringing Fuzzy Babba design and the ’183

patent design, explaining:

The Fuzzy Babba conveys the visual effect of an entirely soft and malleable body
with an indistinguishable sole; it is soft and malleable all around. In contrast, the
visual effect of the ’183 Patent is of a formed body and sole with some solidity; and
a body distinct from the sole. It is true that both the ’183 Patent and the Fuzzy
Babba have protruding fuzz or fluff — but that in and of itself is not enough to
render the two designs substantially similar. There is no way to avoid the fact that
the Fuzzy Babba’s appearance evokes a soft, gentle image, while the ’183 Patent
appears robust and durable. A consumer would not confuse the two — there is no
triable issue.

High Point Design LLC v. Buyer’s Direct, Inc., 2014 U.S. Dist. LEXIS 41290, at *22 (S.D.N.Y.

Mar. 26, 2014).

7
The side-view image was taken from the Federal Circuit’s opinion (High Point Design, 621 F.
App’x at 641) and the top-view image was taken from BDI’s appellate brief (Brief for Appellant
Buyer’s Direct, Inc. at 48, High Point Design LLC v. Buyer’s Direct, Inc., 621 F. App’x 632 (Fed.
Cir. 2015) (No. 14-1464)).

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Case 5:18-cv-00597-BO Document 50 Filed 06/10/19 Page 20 of 26
 The Federal Circuit, in affirming the district court’s non-infringement ruling, conducted a

more detailed analysis and described a number of meaningful differences between the non-

infringing Fuzzy Babba design and the ’183 patent design:

 [T]he side profile of the Fuzzy Babba shows a relatively smooth, downward slope
from the rear toward the front area of the slipper. By contrast, the D’183 patent
design has a relatively defined, curved opening that is lower in the middle and
higher at the edges.

 [T]he Fuzzy Babba has a relatively straight rear line, whereas the rear of claimed
design bulges outward.

 The Fuzzy Babba has a relatively flatly sloping side profile, whereas the patented
design has a curved profile, roughly following in an ‘S’ curve shape.

 Unlike the D’183 patent design, the Fuzzy has a continuous distribution of dots
throughout almost the entire length of the sole. These dots are of a constant width
and in one group, in contrast to the varying width of dot columns displayed in
Figure 7, and in further contrast to the embodiment in Figure 8 that has a smooth
sole and no dots.

High Point Design LLC v. Buyer’s Direct, Inc., 621 F. App’x 632, 641-42 (Fed. Cir. 2015).

The Federal Circuit concluded that, based on these differences, BDI could not demonstrate

infringement. The Federal Circuit explained: “[w]e recognize that both designs essentially consist

of a slipper with a fuzzy portion extending upward out of the foot opening. Such high-level

similarities, however, are not sufficient to demonstrate infringement.” Id.

As shown in the images below, the Accused Slipper Socks are no more similar to the ’183

patent design than the Non-Infringing Fuzzy Babba Design. Indeed, the Accused Slipper Socks

appear even less similar than the Fuzzy Babba Design, which was held by two courts to be non-

infringing.

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Case 5:18-cv-00597-BO Document 50 Filed 06/10/19 Page 21 of 26
 Like the ’183 patent design, the non-infringing Fuzzy Babba design and the Accused

Slipper Socks have fuzz protruding from their foot openings, but that is where the similarities

between the ’183 patent design and the non-infringing Fuzzy Babba design and the Accused

Slipper Socks end. Both the non-Infringing Fuzzy Babba design the Accused Slipper Socks evoke

a “soft, gentle image,” as opposed to the “robust and durable” appearance of the ’183 patent design.

See High Point Design, 621 F. App’x at 641; ’183 patent (ECF No. 1-1), Figs. 1-8; Fig 1-5, supra.

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Case 5:18-cv-00597-BO Document 50 Filed 06/10/19 Page 22 of 26
For example, both the Accused Slipper Socks and the Non-Infringing Fuzzy Babba Design lack

the “relatively defined, curved [foot] opening” of the ’183 patent design, and both have a

“relatively flat sloping side profile” as compared to the curved profile of the ’183 patent design,

which roughly follows “an ‘S’ curve shape.” See High Point Design, 621 F. App’x at 641; ’183

patent (ECF No. 1-1), Figs. 4-5; Figs. 1-2, supra. Notably, the fuzz protruding from the foot

openings of the Accused Slipper Socks extends even farther over the sides and top portion than

the fuzz in both the ’183 patent and what was deemed as non-infringing – the Fuzzy Babba designs.

Similar to the non-infringing Fuzzy Babba design, the rear line of the Accused Slipper

Socks is also different than the outward heel bulge of the ’183 patent design. See High Point

Design, 621 F. App’x at 641; ’183 patent (ECF No. 1-1), Fig. 3; Figs. 1, 3, supra.

Also like the non-infringing Fuzzy Babba design, there are “meaningful differences”

between the bottoms of the Accused Slipper Socks and the soles of the ’183 patent design that

“affect the overall visual effect of the two designs.” See High Point Design, 621 F. App’x at 641-

42; Figs. 1, 4, supra. Indeed, unlike both the ’183 patent design and the non-infringing Fuzzy

Babba design, the Accused Slipper Socks do not have a separate sole. See Figs. 1, 4, supra. And

similar to the non-infringing Fuzzy Babba design, the dots on the bottom of Accused Slipper Socks

are arranged in one uniform group “in contrast to the varying width of dot columns displayed in

Figure 7, and in further contrast to the embodiment in Figure 8 that has a smooth sole and no dots.”

Id.

Although the design of the Accused Slipper Socks, like the Non-Infringing Fuzzy Babba

Design and the ’183 patent design, may fall into the general genre of slippers “with a fuzzy portion

extending upward out of the foot opening,” “such high-level similarities . . . are not sufficient to

demonstrate infringement,” as a matter of law. See High Point Design, 621 F. App’x at 642.

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Case 5:18-cv-00597-BO Document 50 Filed 06/10/19 Page 23 of 26
Because the Accused Slipper Socks and the ’183 patent design are “plainly dissimilar,” BDI’s

design patent infringement claims fail as a matter of law. See Ethicon, 796 F.3d at 1335.

V. CONCLUSION

Side-by-side comparison of the Accused Slipper Socks and the ’183 patent design

establishes that the Accused Slipper Socks have a markedly different overall appearance and are

“plainly dissimilar.” Because no ordinary observer would be deceived into believing that they are

the same, BDI cannot meet its burden of establishing that the Accused Slipper Socks and the

claimed design are “substantially similar,” and its design patent infringement claims fail as a matter

of law. Defendants thus respectfully request that the Court enter judgment in Defendants’ favor

on Counts I-V in the Amended Complaint.

Dated: June 10, 2019 Respectfully submitted,

By: /s/ Adam R. Shartzer

P. Weston Musselman, Jr.
FISH & RICHARDSON P.C.
1717 Main Street, Suite 5000
Dallas, Texas 75201
Telephone: (214) 747-5070
Facsimile: (214) 747-2091
musselman@fr.com

Adam R. Shartzer
FISH & RICHARDSON P.C.
1000 Maine Avenue SW, Suite 1000
Washington, D.C. 20024
Telephone: (202) 783-5070
Facsimile: (202) 783-2331
shartzer@fr.com

Michael A. Anderson
FISH & RICHARDSON P.C.
601 Lexington Avenue, 52nd Floor
New York, NY 10022

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Case 5:18-cv-00597-BO Document 50 Filed 06/10/19 Page 24 of 26
 Telephone: (212) 765-5070
Facsimile: (212) 258-2291
maanderson@fr.com

Craig D. Mills
BUCHANAN INGERSOLL
& ROONEY, PC
50 South 16th Street, Suite 3200
Philadelphia, Pennsylvania, 19102
Telephone: (215) 665-3863
Facsimile: (215) 665-8760
craig.mills@bipc.com
North Carolina Bar No. 18729
Local Civil Rule 83.1(d) Counsel for
Defendants Dick Sporting Goods, Inc.,
Hibbett Sporting Goods, Inc., Academy
Ltd., and Implus Footcare, LLC

Attorneys for Defendants Dick’s Sporting

Goods, Inc., Hibbett Sporting Goods, Inc.,
Academy, Ltd., and Implus Footcare,
LLC

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Case 5:18-cv-00597-BO Document 50 Filed 06/10/19 Page 25 of 26
 CERTIFICATE OF SERVICE

I hereby certify that a true and correct copy of the foregoing document was filed with the

Clerk of the Court using the CM/ECF system, which will send notification of such filing to all

counsel of record.

Dated: June 10, 2019

/s/ Adam R. Shartzer

Adam R. Shartzer

Case 5:18-cv-00597-BO Document 50 Filed 06/10/19 Page 26 of 26