United States District Court, D. Oregon
ADIDAS AMERICA, INC., a Delaware corporation; ADIDAS AG, a foreign entity, Plaintiffs,
SKECHERS USA, INC., a Delaware corporation, Defendant.
Stephen M. Feldman, Perkins Coie LLP, Mitchell G. Stockwell,
Kilpatrick Townsend & Stockton LLP, Matias Ferrario and
Michael Morlock, Kilpatrick Townsend & Stockton LLP, Of
Attorneys for Plaintiffs.
Kenneth R. Davis II and Parna A. Mehrbani, Lane Powell PC,
Mark A. Samuels, Brian M. Berliner, Andrea LaFountain, and
Sina S. Aria, O'Melveny & Myers LLP, Cameron W.
Westin, O'Melveny & Myers LLP, Of Attorneys for
OPINION AND ORDER DISMISSING WILLFUL
Michael H. Simon United States District Judge.
adidas America, Inc. and adidas AG (collectively,
“adidas”) bring this lawsuit against Defendant
Skechers USA (“Skechers”) for patent
infringement. Plaintiffs allege that Defendant's
“Mega Blade 2.0” and “Mega Blade 2.5”
shoes (collectively, the “Mega Blade shoes”)
infringe on Plaintiffs' United States Patent Nos. 9, 339,
079 (the “'079 patent”) and 9, 345, 285 (the
“'285 patent”) (collectively, the
“patents-in-suit”). Pursuant to Rule 12(b)(6) of
the Federal Rules of Civil Procedure, Defendant moves to
dismiss Plaintiffs' claims of willful infringement. For
the reasons stated below, the Court grants Defendant's
motion to dismiss for failure to state a claim may be granted
only when there is no cognizable legal theory to support the
claim or when the complaint lacks sufficient factual
allegations to state a facially plausible claim for relief.
Shroyer v. New Cingular Wireless Servs., Inc., 622
F.3d 1035, 1041 (9th Cir. 2010). In evaluating the
sufficiency of a complaint's factual allegations, the
court must accept as true all well-pleaded material facts
alleged in the complaint and construe them in the light most
favorable to the non-moving party. Wilson v.
Hewlett-Packard Co., 668 F.3d 1136, 1140 (9th Cir.
2012); Daniels-Hall v. Nat'l Educ. Ass'n,
629 F.3d 992, 998 (9th Cir. 2010). To be entitled to a
presumption of truth, allegations in a complaint “may
not simply recite the elements of a cause of action, but must
contain sufficient allegations of underlying facts to give
fair notice and to enable the opposing party to defend itself
effectively.” Starr v. Baca, 652 F.3d 1202,
1216 (9th Cir. 2011). All reasonable inferences from the
factual allegations must be drawn in favor of the plaintiff.
Newcal Indus., Inc. v. Ikon Office Solution, 513
F.3d 1038, 1043 n.2 (9th Cir. 2008). The court need not,
however, credit the plaintiff's legal conclusions that
are couched as factual allegations. Ashcroft v.
Iqbal, 556 U.S. 662, 678-79 (2009).
complaint must contain sufficient factual allegations to
“plausibly suggest an entitlement to relief, such that
it is not unfair to require the opposing party to be
subjected to the expense of discovery and continued
litigation.” Starr, 652 F.3d at 1216. “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.” Iqbal, 556 U.S. at 678 (citing
Bell Atl. Corp. v. Twombly, 550 U.S. 544, 556
AG is the owner by assignment of the patents-in-suit. Adidas
America is the exclusive licensee in the United States under
the patents-in-suit. The '079 patent is titled
“Shoe and Sole.” Issued on May 17, 2016, the
'079 patent describes the invention as including specific
“leaf spring elements” intended to provide
cushioning properties that minimize disadvantages associated
with the use of foamed materials, which are typically used in
shoe construction. The '285 patent also is titled
“Shoe and Sole.” Issued on May 24, 2016, the
'285 patent describes the invention similarly. On July
11, 2016, Plaintiffs filed their complaint against Defendant
in this action, alleging that Defendant's Mega Blade
shoes infringe the patents-in-suit.
allege that Defendant directly and willfully infringed both
patents-in-suit and that Defendant also infringed on the
patents-in-suit indirectly by inducement. As alleged by
Plaintiffs, the '285 patent application was published on
June 16, 2011, and the '079 patent application was
published nearly five years later, on March 3, 2016.
Plaintiffs also allege that adidas introduced its Springblade
shoe in June 2013 and its Springblade Ignite shoe in February
2015. (Unless otherwise indicated, the Court will refer in
this Opinion and Order to both the Springblade shoe and the
Springblade Ignite shoe simply as the “Springblade
shoes.”) Plaintiffs further allege that the Springblade
shoes practice the patents.
publication of a patent application, the claims made, as well
as any further changes in the application, are available for
review by the public. According to Plaintiffs, Defendant or
its agents had access to, and allegedly actually accessed,
the published applications leading to the patents-in-suit
before the patents issued. Also according to Plaintiffs,
Defendant was aware, before the filing of this lawsuit and
even before the issuance of the patents, of the scope of
patent protection that adidas was seeking-and would later be
awarded by the U.S. Patent Office-for adidas's
Springblade shoe technology. Id.
further allege that they launched their commercial
implementation of the patents-in-suit in the form of the
Springblade shoes before Defendant launched its accused Mega
Blade shoes. According to Plaintiffs, Defendant had access
to, and allegedly copied, the features and technology of
Plaintiffs' Springblade shoes-including the inventions
covered by the patents-in-suit-when Defendant created the
Mega Blade shoes. Defendant's copying is evident,
Plaintiffs assert, from a visual comparison of the
parties' respective shoes. Public reports also show,
according to Plaintiffs, that industry commenters and
consumers recognized that Skechers “copied” the
design and features of the Springblade shoes.
moves to dismiss Plaintiffs' willful infringement claims,
asserting that the Complaint fails to allege that Defendant
had pre-suit knowledge of the actual patents-in-suit.
Defendant argues that Plaintiffs' allegations that
Defendant had pre-suit knowledge of the pending applications