Hunton Retail Law Resource

While footwear may not appear to be fertile ground for new inventions, many shoe makers have been granted patent protection for the technologies that go into their products. Sometimes, those inventions are rolled out with little fanfare. Others are, literally, flashy.

Shoes by Firebug sued Stride Rite in the Eastern District of Texas for infringing two of Firebug’s patents, U.S. Patent Nos. 8,992,038 and 9,301,574, for “internally illuminated light diffusing footwear.” The patents describe shoes having illumination sources located beneath diffusing layers, to create, as the patents call it, “the visual impression of radiant illumination.” The patents focus on this internal illumination, in contrast to sticking LED’s to the outside of a shoe. Firebug filed a similar suit against Target.

Instead of battling the infringement issues in the federal district court, Stride Rite petitioned the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office to review the Firebug patents, to reconsider whether the patents were actually new and non-obvious over the prior art. Stride Rite filed two Inter Partes Review petitions, and the PTAB agreed to review the patents (Case Nos. IPR2017-01810 and -01809). As a result of these petitions, the Texas court stayed both the Stride Rite case, as well as the Target case, while the PTAB reviewed the patents.

Just last month, the PTAB issued its decisions, agreeing with Stride Rite that the Firebug patents were obvious in view of earlier patents and published patent applications describing shoes with lighting components. As a result, the PTAB determined that Firebug patents are unpatentable. Firebug now has the opportunity to appeal, if it chooses to do so.