IP Law Daily, TOP STORY—Fed. Cir.: Challenged claims of light-up footwear patents were correctly invalidated by PTAB, (Jun 25, 2020)

By George Basharis, J.D.

Claims for "internally illuminated" children’s shoes were unpatentable as obvious in light of prior art.

Footwear patents focusing on the internal illumination of children’s shoes were obvious in view of an earlier patent and published patent applications describing shoes with similar lighting and reflective components, the Federal Circuit has held, affirming a decision by the Patent Trial and Appeal Board that invalidated the patents. The Board’s determination that a skilled artisan would combine features of the earlier patent and published patent applications was supported by substantial evidence, the court determined (Shoes by Firebug LLC v. Stride Rite Children's Group, LLC, June 25, 2020, Lourie, A.).

Shoes by Firebug sued competitor Stride Rite Children’s Group for infringing two of Firebug’s patents, U.S. Patent 8,992,038 (the ’038 Patent) and U.S. Patent 9,301,574 (the ’574 Patent). The Firebug patents describe a method of internally illuminating shoes by placing a light source between light diffusing layers to create a "visual impression of internal radiant illumination" running across the outer surface of the shoe. Stride Rite filed a petition for inter partes review of the Firebug patents asking the Board to invalidate the patents as obvious over prior art.

The existing patent described a method of illuminating shoes by using internal optical fiber layers, and the published patent applications described the use of multi-layered LEDs to achieve external illumination. According to Stride Rite, a skilled artisan would substitute the fragile optical fiber layers of the existing patent with the LEDs described in the published applications to achieve the internal illumination described by the Firebug patents. The Board agreed with Stride Rite and invalidated the ’038 and ’574 patents.

On appeal, Firebug argued that the preambles to its patents limited the scope of the patents to textile footwear, and neither the existing patent nor the published applications described footwear with textile layers. The Board rejected Firebug’s argument. The court determined that the preamble to the ’574 Patent, unlike the preamble to the ’038 Patent (which described "a structurally complete invention"), did limit the patent to textile footwear. Nonetheless, the court found that even with the limitation, substantial evidence supported the Board’s finding that the Firebug patents were obvious.

The Board was presented with alternate theories as to whether a skilled artisan would combine elements of the existing patent and the published applications to claim the limitations of the Firebug patents. The Board ultimately sided with Stride Rite and the testimony of its expert witness and concluded that the Firebug patents were obvious. The court also rejected Firebug’s contention that the Board improperly failed to consider certain license agreements involving the patents as secondary evidence of nonobviousness. The court noted that the agreements included intellectual property rights in addition to the disputed patents and therefore on their face could not establish a nexus between the commercial interest in Firebug’s products and the claims of the ’038 and ’574 patents.

This case is Nos. 19-1622 and 19-1623.

Attorneys: William Alciati (Gardella Grace PA) for Shoes by Firebug LLC. Gaetan Gerville-Reache (Warner Norcross & Judd LLP) for Stride Rite Children's Group, LLC.

Companies: Shoes by Firebug LLC ; Stride Rite Children's Group, LLC

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