In a dispute between San Francisco-based shoe companies, Rothy’s sued Birdies for infringing design patents claiming the ornamental design for a shoe or a portion of a shoe. Birdies moved for early summary judgment on both invalidity and noninfringement. Judge Chhabria denied both motions but expressed skepticism that Rothy’s would prove infringement at trial.

The court held that a reasonable jury could find that Birdies’s prior art—its own Blackbird shoe—neither anticipated nor rendered obvious the asserted patents. The asserted patents all claim a loafer with a knitted appearance. This is true, according to the court, even though only some of the asserted patents include text expressly describing “textured portions” that are “designed to show a stitched fabric” because the patents’ drawings all have a “visual appearance that connotes a knit material.” In contrast to this knit material, the prior art Blackbird was made of calf hair. According to the court, a jury could “easily conclude” that the materials convey different visual impressions.

The court further held that a reasonable jury could find that Birdies’ knitted version of the Blackbird infringes the asserted patents, although it was “closer than the question whether Rothy’s patents are invalid as obvious.” According to the court, the knitted Blackbird and claimed design shared a common silhouette, knitted fabric appearance, and other similarities that gave them the same visual impression. But the court also noted that several differences, including differently shaped gussets and toe points, may prove critical, considering the well-developed loafer market. Ultimately, the court noted that Rothy’s may have an “uphill trial battle” on infringement, but the issue was not appropriate for determination on summary infringement.

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