Lyden v. Adidas Am., Inc.
| Decision Date | 20 February 2015 |
| Docket Number | No. 3:14-cv-01586-MO,3:14-cv-01586-MO |
| Parties | ROBERT M. LYDEN, Plaintiff, v. adidas AMERICA, INC., a Delaware corporation, adidas AG, a German entity, adidas INTERNATIONAL MARKETING B.V., a Dutch entity, THE FINISH LINE INC., an Indiana corporation, FOOT LOCKER, INC., a New York corporation, and DICK'S SPORTING GOODS, INC., a Delaware corporation, Defendants. |
| Court | U.S. District Court — District of Oregon |
On January 14, 2015, Plaintiff Robert Lyden filed a Motion for Preliminary Injunction [30]. Mr. Lyden seeks to enjoin Defendants and their officers, directors, employees, agents, affiliates, divisions, branches, subsidiaries and all others acting in concert with Defendants or on their behalf from making, using, or selling the infringing adidas shoes, and in particular, the adidas Springblade shoes, in the United States.
"A preliminary injunction is 'an extraordinary and drastic remedy, one that should not be granted unless the movant, by a clear showing, carries the burden of persuasion.'" Lopez v. Brewer, 680 F.3d 1068, 1072 (9th Cir. 2012) (quotingMazurek v. Armstrong, 520 U.S. 968, 972 (1997)). To obtain a preliminary injunction, the movant "must establish [1] that he is likely to succeed on the merits, [2] that he is likely to suffer irreparable harm in the absence of preliminary relief, [3] that the balance of equities tips in his favor, and [4] that an injunction is in the public interest." Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1144 (9th Cir. 2011) (internal quotation marks omitted) ( preliminary injunction); see also Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7, 20 (2008); World Class Tech. Corp. v. Ormco Corp., 964 F. Supp. 2d 1273, 1277 (D. Or. 2013) ().
With respect to Mr. Lyden's trademark claims, there are serious questions regarding whether or not Mr. Lyden has any enforceable trademark rights. It is unclear whether or not Mr. Lyden's purported uses of the claimed marks in commerce are sufficient to establish protectable interests in the mark. As discussed in my Opinion and Order [60], Mr. Lyden has only ever tried to market and sell his Springshoes to companies in the footwear industry; he has never marketed or sold them to the general public. In addition, the only sales of the Springshoe were in connection with a 2002 Intellectual Property and Prototype Agreement with Nike, Inc., and only about a dozen pairs were sold. Given the current state of the law, it is unclear whether or not these actions constitute a prior "use in commerce" sufficient to create protectable rights in theSpringshoe marks. See 15 U.S.C. § 1127. Although it is certainly possible that Mr. Lyden will win on the merits, he has failed to show that it is likely he will win, and therefore this factor weighs against Mr. Lyden's request for a permanent injunction with respect to his trademark claims.
With respect to the alleged infringement of patent No. 6,449,878 ("'878 patent"), Mr. Lyden has not shown he is likely to win on the merits. Defendants argue Mr. Lyden is not likely to win on the merits because the '878 patent's claims are indefinite and therefore the patent is invalid, and even if the claims were definite, the Springblade shoe lacks the claimed elements.
Claims 27 and 30 require a "transverse axis" for the "article of footwear" and a "transverse axis" for the "inferior spring element." U.S. Patent No. 6,449,878 claims 27, 30 (filed Sep. 17, 2002). The claims go on to require "greater concavity downwards adjacent said transverse axis on said medial side than on said lateral side." Id. (emphasis added). Defendants argue that the claims are indefinite because it is impossible to tell which transverse axis "said transverse axis" applies to. In the face of the ambiguity they allege, Defendants propose two potential interpretations of claims 27 and 30, and argue that the Springblade shoes fail to infringe either of those interpretations. Mr. Lyden argues that although the claims appear to refer to two separate transverse axes, they in fact are only referencing one transverse axis, and therefore the claims are not indefinite. Mr. Lyden then applies his interpretation of the claims, and argues that the Springblade shoe embodies each claim of the '878 patent, thus infringing it.
At this stage, it is unclear which party's interpretation of the claims is correct. Both sides make valid arguments in favor of their respective interpretations—neither position is withoutmerit. I am not yet in a position to be able to choose between the parties' competing claim constructions. I believe making that choice would be premature without the benefit of a Markman hearing, and the accompanying briefing. I believe that claims 27 and 30 are sufficiently vague at this stage such that Mr. Lyden has failed to show that he is likely to win on the merits with respect to his '878 patent infringement claim.
With respect to the alleged infringement of patent No. 8,209,883 ("'883 patent"), Mr. Lyden has not shown he is likely to win on the merits. All of the claims of the '883 patent were rejected upon reexamination. See Roettig Decl. [52-3] at 1. Although the decision is on appeal to the Patent Trial and Appeal Board, I agree with Defendants' argument that this rejection raises a substantial question regarding the validity of the '883 patent. Given this substantial question of validity, Mr. Lyden has not shown that he is likely to win on the merits with respect to his '883 patent infringement claim.
With respect to the alleged infringement of design patent No. D507,094 ("'094 patent"), Mr. Lyden has not shown he is likely to win on the merits. The Federal Circuit has held that design patents are directed at the appearance of an article. See PHG Tech.s v. St. John Co.s, Inc., 469 F.3d 1361, 1366 (Fed. Cir. 2006). When a design is primarily functional rather than ornamental, the patent is invalid. Id. Defendants argue that the '094 patent is primarily functional, and therefore invalid. Defendants compare the language in the '878 patent (a utility patent) to the design embodied in the '094 patent (a design patent), and argue that the similarities suggest that the '094 patent is based on a functional design rather than an ornamental one. This argument relies on the underlying assumption than an invention is either functional orornamental, but cannot be both. The United States Patent and Trademark Office's guide on obtaining a design patent states: "Both design and utility patents may be obtained on an article if the invention resides both in its utility and ornamental appearance." Design Patent Application guide, United States Patent and Trademark Office, http://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/design-patent-application-guide (last visited Feb. 12, 2015). It is not enough just to show that a design is both functional and ornamental. In order to invalidate a design patent, case law requires that the invention be primarily functional rather than ornamental. PHG Tech.s, 469 F.3d at 1366. Although Defendants have shown that the design is both functional and ornamental, they have failed at this time to show that the design is primarily functional.
In the alternative, Defendants argue that Mr. Lyden cannot prove their Springblade shoes infringe the '094 patent. "In determining whether an accused product infringes a patented design, [courts] apply the 'ordinary observer' test, that is, 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.'" Anderson v. Kimberly-Clark Corp., 570 Fed.Appx. 927, 933 (Fed. Cir. 2014) (internal citations omitted). Defendants argue that an ordinary observer would not be confused for at least two reasons. First, the rear blade of Defendants' Springblade shoe contains a very visible void or gap; Mr. Lyden's design patent shows no such void or gap. Second, when looking straight on at the side of the Springblade shoe, neither the top nor the bottom of the rear blade is visible; Mr. Lyden's design patent shows that the top and bottom of the rear blade should be visible from such an angle. Defendants argue that these differences are sufficient such that "an ordinary...
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