Crocs, Inc. v. Cheng's Enterprises, Inc. et al

Filing 557

ORDER This matter is before the Court for the construction of U.S. Patent No. 6,993,858 (the "'858 Patent") [Docket No. 312-1] and U.S. Patent No. D517,789 (the "'789 Patent") [Docket No. 312-2] (collectively, the &qu ot;patents"). Crocs, Inc. ("Crocs") alleges that defendants Double Diamond Distribution, Ltd. and U.S.A. Dawgs, Inc. (collectively "Dawgs") have infringed the patents. The parties ask the Court to construe certain disputed terms in the patents. Docket No. 402. On June 6, 2017, the Court held a hearing pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), on these terms. Accordingly, the patent claim terms presently at issue shall be construed in accordance with the foregoing, by Judge Philip A. Brimmer on 6/27/2017. (evana, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Judge Philip A. Brimmer
Civil Action No. 06-cv-00605-PAB-KMT
(Consolidated with Civil Action No. 16-cv-02004-PAB-KMT)
Civil Action No. 06-cv-00605-PAB-KMT
CROCS, INC.,
Plaintiff,
v.
EFFERVESCENT, INC.,
HOLEY SOLES HOLDINGS, LTD.,
DOUBLE DIAMOND DISTRIBUTION, LTD., and
U.S.A. DAWGS, INC.,
Defendants.
Civil Action No. 16-cv-02004-PAB-KMT
U.S.A. DAWGS, INC. and
DOUBLE DIAMOND DISTRIBUTION, LTD.,
Plaintiffs,
v.
RONALD SNYDER,
DANIEL HART,
THOMAS J. SMACH,
ANDREW REES,
GREGG RIBATT,
ANDREW REDDYHOFF,
GEORGE B. BOEDECKER, JR.,
LYNDON HANSON,
DONALD LOCOCO,
RAYMOND CROGHAN,
RONALD FRASCH,
MICHAEL MARGOLIS,
JEFFREY LASHER,
MICHAEL E. MARKS,
PRAKASH MELWANI,

JOHN P. MCCARVEL,
ERIK REBICH,
SARA HOVERSTOCK, and
JOHN AND JANE DOE DEFENDANTS 1-30,
Defendants.

ORDER

This matter is before the Court for the construction of U.S. Patent No. 6,993,858
(the “’858 Patent”) [Docket No. 312-1] and U.S. Patent No. D517,789 (the “’789 Patent”)
[Docket No. 312-2] (collectively, the “patents”). Crocs, Inc. (“Crocs”) alleges that
defendants Double Diamond Distribution, Ltd. and U.S.A. Dawgs, Inc. (collectively
“Dawgs”) have infringed the patents. The parties ask the Court to construe certain
disputed terms in the patents. Docket No. 402. On June 6, 2017, the Court held a
hearing pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), on
these terms.
I. THE ’858 PATENT
A. Background
The ’858 Patent is related to footwear with ventilation. Docket No. 312-1, ’858
Patent col. 1 ll. 20-21. The footwear is molded from a lofted material. Id. col. 1 l. 43.
The footwear includes a strap section that is attached to the base “such that the strap
pivots relative to the base section.” Id. col. 2 ll. 1-2. The strap “serves the utilitarian
purpose of lending support to the Achilles portion of the human foot.” Id. col. 6 ll. 1921. The “frictional force developed between strap [] and upper [] . . . is sufficient to

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maintain [the] strap in place. . . . W ithout such friction, strap [] would succumb to
gravity and fall to a position where the foot would not be supported.” Id. col. 6 ll. 23-29.
The ’858 Patent has two claims. Claim one of the ’858 Patent describes:
A footwear piece comprising:
a base section including an upper and a sole formed as a single
part manufactured from a moldable foam material; and
a strap section formed of a moldable material that is attached at
opposite ends thereof to the upper of the base section with plastic
connectors such that the moldable foam material of the strap
section is in direct contact with the moldable material of the base
section and pivots relative to the base section at the connectors;
wherein the upper includes an open rear region defined by an
upper opening perimeter, and wherein frictional forces developed
by the contact between the strap section and the base section at
the plastic connectors are sufficient to maintain the strap section in
place in an intermediary position after pivoting, whereby the strap
section lends support to the Achilles portion of the human foot
inserted in the open rear region; and
wherein the upper includes a substantially horizontal portion and a
substantially vertical portion forming a toe region that generally
follows the contour of a human foot, wherein the toe region tapers
from an inner area of the base section where the larger toes exist
to an outer area of the base section where the smaller toes exist;
and
wherein the sole includes a bottom surface having front and rear
tread patters longitudinally connected by a flat section.
Id. col. 9 ll. 36-60; col. 10 ll. 1-3.
Claim two of the ’858 Patent describes:
A footwear piece comprising:
a base section including an upper and a sole formed as a single
part manufactured from a moldable foam material; and

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a strap section formed of a molded foam material attached at
opposite ends thereof to the base section such that the strap
section is in direct contact with the base section and pivots relative
to the base section; and
wherein the upper includes an open rear region defined by an
upper opening perimeter; and wherein the sole includes a rear
perimeter; and wherein the strap section pivots between a first
contact point on the upper opening perimeter and a second contact
point on the rear perimeter, and wherein frictional forces developed
by the contact between the strap section and the base section at
the points of attachment are sufficient to maintain the strap section
in place in an intermediary position after pivoting whereby the strap
section lends support to the Achilles portion of a human foot
inserted in the open rear region; and
wherein the upper includes a substantially horizontal portion and a
substantially vertical portion forming a toe region that generally
follows the contour of a human foot, wherein the toe region tapers
from the inner area of the base section where the larger toes exist
to the outer area of the base section where the smaller toes exist;
and
wherein a decorative pattern of raised bumps is molded or
otherwise created in the upper near to and extending the length of
the upper opening perimeter; and
wherein a plurality of ventilators are formed in both the substantially
vertical portion and the substantially horizontal portion, and wherein
the ventilators extend up a majority of the height of the vertical
portion;
wherein the vertical portion of the upper includes an upper strip,
wherein the ventilators are formed in the upper strip, and wherein
the upper strip extends from the toe region to the points of
attachment for the strap section, and wherein the sole includes a
lower strip that parallels the upper strip and is separated by a line
that extends from the toe region to a heel of the footwear piece,
and wherein the lower strip vertically rises in a direction toward the
heel; and
wherein the sole includes a bottom surface having front and rear
tread patters longitudinally connected by a flat section without tread
patterns bounded by raised side portions; and
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wherein the sole further includes a top surface having a support
base including a raised pattern where a foot contacts the support
base.
Id. col. 10 ll. 4-58.
B. Legal Standards for Claim Construction of Utility Patents
Claim construction is a question of law for the court, see Cybor Corp. v. FAS
Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc), g uided by Federal Circuit
precedent. See SunTiger, Inc. v. Scientific Research Funding Group, 189 F.3d 1327,
1333 (Fed. Cir. 1999). The Federal Circuit has made clear that “there is no magic
formula or catechism for conducting claim construction.” Phillips v. AWH Corp., 415
F.3d 1303, 1324 (Fed. Cir. 2005) (en banc). Nevertheless, there are several key
sources and doctrines that should be consulted and applied, but “[t]he seq uence of
steps used by the judge in consulting various sources is not important; what matters is
for the court to attach the appropriate weight to be assigned to those sources in light of
the statutes and policies that inform patent law.” Id.
The starting point is the “bedrock principle” that “‘the claims of the patent define
the invention to which the patentee is entitled the right to exclude.’” Id. at 1312 (quoting
Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1115
(Fed. Cir. 2004)). The words of the claims “‘are generally given their ordinary and
customary meaning,’” id. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1582 (Fed. Cir. 1996)), which is “the meaning that the term would have to a person of
ordinary skill in the art in question at the time of the invention,” id. at 1313; see CCS
Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (“Generally

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speaking, [courts] indulge a ‘heavy presumption’ that a claim term carries its ordinary
and customary meaning.”). In those instances when the claim language “involves little
more than the application of the widely accepted meaning of commonly understood
words,” construction is relatively straightforward and “the ordinary meaning . . . may be
readily apparent even to lay judges.” Phillips, 415 F.3d at 1314. W hen the claim terms
have a particular meaning in the field, however, courts “look[ ] to ‘those sources
available to the public that show what a person of skill in the art would have understood
disputed claim language to mean.’” Id. (quoting Innova, 381 F.3d at 1116). These
sources include “‘the words of the claims themselves, the remainder of the
specification, the prosecution history, and extrinsic evidence concerning relevant
scientific principles, the meaning of technical terms, and the state of the art.’” Id.
The context in which a term is used, both in the asserted claim as well as in
other claims of the patent, can be valuable and instructive. Id. at 1314. In addition, the
patent specification – the text and figures of the patent that precede the claims – “‘is
always highly relevant to the claim construction analysis. Usually, it is dispositive; it is
the single best guide to the meaning of a disputed term.’” Id. at 1315 (quoting Vitronics,
90 F.3d at 1582). With that said, “the claim requirement presupposes that a patent
applicant defines his invention in the claims, not in the specification.” Johnson &
Johnston Associates Inc. v. R.E. Service Co., Inc., 285 F.3d 1046, 1052 (Fed. Cir.
2002); see PSC Computer Products, Inc. v. Foxconn Intern., Inc., 355 F.3d 1353, 1359
(Fed. Cir. 2004) (“‘[T]he claims of a patent limit the invention, and specifications cannot

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be utilized to expand the patent monopoly[.]’”) (quoting United States v. Adams, 383
U.S. 39, 48-49 (1966)).
If necessary, courts may also consider the patent’s prosecution history – the
official record of the patent application and subsequent process before the U.S. Patent
and Trademark Office, which “provides evidence of how the PTO and the inventor
understood the patent.” Phillips, 415 F.3d at 1317. Nevertheless, “because the
prosecution history represents an ongoing negotiation between the PTO and the
applicant, . . . it often lacks the clarity of the specification and thus is less useful for
claim construction purposes.” Id. And, although courts may consult extrinsic evidence
such as “expert and inventor testimony, dictionaries, and learned treatises,” such
evidence is “‘less significant than the intrinsic record,’” i.e., the specification and
prosecution history, and courts must be wary not to use extrinsic evidence to override
the meaning of the claim terms demonstrated by the intrinsic evidence. Id. at 1317-19
(quoting C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)).
That is, “extrinsic evidence may be useful to the court, but it is unlikely to result in a
reliable interpretation of patent claim scope unless considered in the context of the
intrinsic evidence.” Id. at 1319.
In short, a court must construe the claim terms as they would be viewed by “the
ordinary artisan after reading the entire patent.” Id. at 1321. This is crucial in order to
respect the public notice function of patents:
The patent system is based on the proposition that claims cover only the
invented subject matter. As the Supreme Court has stated, “[i]t seems to us
that nothing can be more just and fair, both to the patentee and the public,

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than that the former should understand, and correctly describe, just what he
has invented, and for what he claims a patent.”
Id. at 1321 (quoting Merrill v. Yeomans, 94 U.S. 568, 573-74 (1876)).
C. Analysis
On November 8, 2016, the parties submitted a joint disputed claim terms chart in
which they identified nine claim terms that were disputed. Docket No. 307. The Court
addresses these terms below.
1. Person of Ordinary Skill in the Art
Patent claims are to be construed through the eyes of a person of ordinary skill
in the art in question at the time of the invention (“POSITA”). Dawgs offers the following
definition of a POSITA:
A person of ordinary skill in the art in the 2003-2004 timeframe (when both
the ’858 patent and the ’789 patent were filed) would have had at least
several years of hand-on experience with the design and development of
footwear and various aspects of shoemaking from conception through
product design, development, commercialization, and manufacturing.
Such a person would have experienced numerous varied product cycles
with projects representing varied constructions, and would have had a
basic knowledge of functional requirements of footwear and an adequate
understanding of processes and construction techniques needed to
assemble and create various shoe parts and components.
Docket No. 312 at 9. In contrast, Crocs states that a POSIT A would have “two to five
years of hands-on experience in designing and developing products made out of
molded foams, especially footwear.” Docket No. 343 at 15.
The only apparent substantive difference between the two definitions is Crocs’
suggestion that a POSITA have experience in working with molded foam products, not
just footwear products. Dawgs’ reply briefly argues that there is no basis to require

8

expertise in foam products because the ’858 Patent “is directed to ventilated footwear,
not foam.” Docket No. 401 at 2. However, both of the ’858 Patent’s claims refer to
“moldable foam material,” ’858 Patent col. 9 ll. 37-39; col. 10 ll. 6-8, and the
specification describes a process for making molded foam footwear pieces. Id. col. 7 ll.
50-67; col. 8 ll. 1-7. In addition, Crocs’ proposed def inition was previously accepted by
the Federal Circuit. See Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1308-09
(Fed. Cir. 2010) (discussing testimony regarding the experience of “artisans of ordinary
skill in this art” in designing “a strap for a shoe that is [] made of foam”).
In light of the patent’s focus on moldable foam, the Court sees no basis to
modify Crocs’ proposed definition. A POSITA with respect to the patents at issue is an
individual with two to five years of hands-on experience in designing and developing
products made out of molded foam, especially footwear.
2. Moldable Foam Material, Moldable Material, Molded Foam Material
Claim one of the ’858 Patent refers to a footwear piece comprising:
a base section including an upper and a sole formed as a single part
manufactured from a moldable foam material; and a strap section formed
of a moldable material that is attached . . . such that the m oldable foam
material of the strap section is in direct contact with the moldable material
of the base section.
’858 Patent col. 9 ll. 36-44. Similarly, claim two describes a base section and sole
“manufactured from a moldable foam material” and a strap “formed of a molded foam
material.” Id., col. 10 ll. 6-10. Dawgs argues that “the plain and ordinary meaning of
‘moldable’ or ‘molded’ should suffice.” Docket No. 312 at 22. At the claim construction
hearing, Crocs stated that construction of these terms is necessary because a juror

9

might believe that the terms “molded” and “moldable” refer to characteristics of the
foam, “as opposed to the result of the molding process.” Docket No. 554 at 5. As a
result, Crocs argues that the terms “molded” and “moldable” refer to foam material
“capable of being manufactured using a mold into a three-dimensional shape.” Docket
No. 343 at 36. Dawgs does not disagree with Crocs’ proposed interpretation of
“moldable” and “molded.” Docket No. 554 at 7.
The intrinsic evidence lends support to Crocs’ argument that the reference to
moldable foam and molded foam in the claim terms does not merely describe a
characteristic of the foam material. The specification of the patent describes a method
for manufacturing footwear pieces stating:
[T]he footwear pieces disclosed herein can be made of a lofted foam material.
Manufacturing footwear pieces using such a lofted foam material can include
providing a resin that includes a pre-mixture of resin, pigment, and a growth
additive. The resin, originally in pellet form, is heated to a liquid state. This
liquid resin is screwed into a mold that has been heated prior to receiving the
resin. The volume of resin injected into the mold is controlled by the pitch of the
screw that drives the liquid resin into the mold. The liquid resin is allowed to set,
at which time the mold is opened and the formed footwear piece is removed from
the mold. The formed footwear piece is then placed on a cooling last, where it is
allowed to air dry.
’858 Patent col. 7 ll. 50-62. During the drying process, the molded footwear expands
when the mold opens and contracts as it is air cooled, “[t]hus, the process inv olves both
an expansion characteristic and a contraction characteristic.” Id., col. 7-8, ll. 63-7.
These statements in the specification tether the molding process to the manufacture of
the foam material. Thus, Crocs’ proposed construction, which relates the use of molds
to the creation of the foam material, clarifies an aspect of the claim terms.

10

Ian Whatley, the expert retained by Crocs, states that a POSITA would
understand that the terms moldable or molded “relate to the method of manufacture
using a mold.” Docket No. 343-7 at 14, ¶ 26. In other words, a POSITA would
understand that, rather than simply describing a feature of the foam material used in
the invention, the terms moldable and molded relate to the manufacturing process.
Thus, the terms “moldable” and “molded,” as used in the ’858 Patent, refer to a specific
process of using three-dimensional molds to manufacture a piece of footwear.
Accordingly, the Court finds that the claim terms “moldable foam material,”
“moldable material” and “molded foam material” shall be construed as “foam material
capable of being manufactured using a mold into a three-dimensional shape.”
3. Foam Material
Dawgs argues that the term “foam material,” as used in the claim terms
“moldable foam material” and “molded foam material,” should be construed to mean
“material that includes bubbles such that the density of the foam material is different
than the true density of the material.” Docket No. 312 at 22. Dawgs argues in favor of
this construction because “‘foam’ has a scientific meaning that, without more, may not
be readily understood by a jury.” Id. Crocs argues that Dawgs’ proposed construction
should be rejected as inconsistent with the intrinsic evidence and unsupported. 1 Docket
No. 343 at 37-38.
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Crocs additionally argued that Dawgs changed its position from “asserting
indefiniteness to proposing a construction for ‘foam material,’” and that Dawgs did not
submit a proposed construction when the parties exchanged lists of claim terms to be
construed. Docket No. 343 at 36. As a result, Crocs argued that Dawgs had waived
the opportunity to propose a construction of “foam material.” Id. at 36-37. The Court
rejected Crocs’ argument at the claim construction hearing. Docket No. 554 at 12.
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As an initial matter, Dawgs’ proposed construction is not specific to foam. Other
materials, such as ice or glass, may include bubbles that affect the density of the
material, but still do not constitute foam. In addition, Dawgs’ proposed construction
requires consideration of the “true density” of the original material and the end product.
Docket No. 312 at 22. Density is not discussed in the claims or specification of the ’858
Patent and introducing the concept opens unnecessary questions about how to
measure “true density.” See Docket No. 343-7 at 12-13, ¶ 23.
The words of the claim are given their customary and ordinary meaning unless
the specification or the prosecution history warrants a different interpretation. Phillips,
415 F.3d at 1316, 1324. Dawgs does not provide any evidence from the specification
or the prosecution history that the patent uses the term “foam material” in a narrow or
specialized manner.
The Court finds that no construction of the term “foam material” is necessary and
that it shall have its ordinary and customary meaning.
4. Strap Section Lends Support to the Achilles Portion of the Human
Foot
Both claims of the ’858 Patent state that the upper of the footwear includes an
open rear region and that:
frictional forces developed by the contact between the strap section and
the base section . . . are sufficient to maintain the strap section in place in
an intermediary position after pivoting[,] whereby the strap section lends
support to the Achilles portion of [a] human foot inserted in the open rear
region.
’858 Patent col. 9 ll. 46-53; col. 10 ll. 14-25. Both parties ag ree that the claim term
“strap section lends support to the Achilles portion of the human foot” requires
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construction, but they disagree over the appropriate scope. Crocs argues that the term
should be construed to clarify that the claim language does not require constant contact
between the strap section and the Achilles portion of the human foot. Docket No. 343
at 39. Dawgs argues that the term should be construed as “helps to maintain the
footwear in position on the human foot.” Docket No. 312 at 39.
The ambiguity in the claim term stems from the phrase “lends support,” which
does not clearly define the manner or extent of support provided by the strap. For
instance, a strap could help keep the foot in the shoe through constant contact with the
back of the foot or a strap could act as a backstop for the foot, only coming into contact
with the back of the foot if the foot started coming out of the back of the shoe. The
intrinsic evidence demonstrates that Crocs’ argument correctly reflects the function of
the strap. The strap does not depend on constant contact betw een the human foot and
the strap. For example, the specification states:
[i]n some embodiments, a frictional force developed between strap 120
and upper 150 at the location of the rivets is sufficient to maintain strap
120 in place. This helps to ensure that strap 120 remains in place even
when the Achilles part of the foot is not pressing against strap 120.
Without such friction, strap 120 would succumb to gravity and fall to a
position where the foot would not be supported.
’858 Patent col. 6 ll. 22-29. Thus, the specification establishes that the back of the foot
is not always pressing against the strap.
In addition, this understanding of the strap’s function accords with the Federal
Circuit’s discussion of the strap of the ’858 Patent in a prior proceeding:
Instead of pushing the foot forward into the shoe – like prior art straps that
are elastic or length adjustable – the ’858 patent’s passive restraint
system allows the strap to “lend support” only when necessary to keep the
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shoe positioned correctly on the foot. This feature facilitates a loose
anatomical fit that makes the claimed invention more comfortable than
prior art products.
Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1309 (Fed. Cir. 2010) (citation
omitted). While the Court is not technically bound by this opinion of the Federal Circuit
here, it constitutes persuasive authority.
The claim term “strap section lends support to the Achilles portion of the human
foot” shall be construed as “strap section helps to maintain the footwear in position on
the human foot without requiring constant contact between the strap and the foot.”
5. Attached . . . With Plastic Connectors
Claim one of the ’858 Patent describes a “strap section formed of a moldable
material that is attached at opposite ends thereof to the upper of the base section with
plastic connectors.” ’858 Patent col. 9 ll. 40-43. Claim two describes a “strap
section . . . attached at opposite ends thereof to the base section.” Id. col. 10 ll. 9-10.
Crocs argues that the claim terms “attached . . . with plastic connectors” in claim one
and “attached” in claim two should be construed as “attached so that the strap is not
removable by ordinary consumer use.” Docket No. 343 at 41. Crocs states that its
proposed construction is appropriate because the specif ication discloses “that the strap
is attached to the base section with rivets,” id., and that “[n]either a person of skill in the
art, nor a lay juror, would expect something attached with rivets to be removable in the
ordinary course of its use.” Docket No. 343 at 42. Dawgs states that the claim terms
should be given their plain and ordinary meanings and that Crocs is trying to read
limitations from the specification into the claim terms. Docket No. 312 at 20-21.

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Crocs’ proposed construction fails in light of the intrinsic evidence. It is true that
the specification describes a process of using rivets to attach the strap section to the
base of the shoe. ’858 Patent col. 2 ll. 20-33. However, “as a general rule claims of a
patent are not limited to the preferred embodiment, or to the examples listed within the
patent specification.” Dow Chem. Co. v. United States, 226 F.3d 1334, 1342 (Fed. Cir.
2000) (citations omitted). Crocs could have used the term “rivets” in its claims, but
instead chose to draft claim one with reference to “plastic connectors” and claim two
without a limitation as to the mode of attachment. Crocs’ use of broader language in
the claims compared to the specification suggests that the attachments at issue cannot
be limited to “rivets” or to the connotations associated therewith. See Acumed LLC v.
Stryker Corp., 483 F.3d 800, 807 (Fed. Cir. 2007) (refusing to limit claim terms where
patent holder “chose a different term [from that used in the preferred embodiment] that
implies a broader scope”).
Crocs presents no basis, apart from the use of the term rivets in the
specification, to find that the claim language should be limited. The Court finds no
ambiguity in the terms. Accordingly, the terms “attached . . . with plastic connectors”
and “attached” shall have their ordinary and customary meanings.
6. Substantially Horizontal Portion, Substantially Vertical Portion
Both claims of the ’858 Patent describe a design “wherein the upper includes a
substantially horizontal portion and a substantially vertical portion forming a toe region
that generally follows the contour of [the] human foot.” ’858 Patent col. 9 ll. 54-57;
col. 10 ll. 26-29. Dawgs argues that this term is indefinite because the term
“substantially” is a “subjective term of degree” that cannot be understood. Docket
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No. 312 at 13-15. Crocs argues that the scope of the terms “substantially horizontal”
and “substantially vertical” is clear in light of the intrinsic and extrinsic evidence. Docket
No. 343 at 17.
A claim term is indefinite if it fails “viewed in light of the specification and
prosecution history, [to] inform those skilled in the art about the scope of the invention
with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120,
2129 (2014). “An accused infringer must [] demonstrate by clear and convincing
evidence” that a claim term is indefinite. Haemonetics Corp. v. Baxter Healthcare
Corp., 607 F.3d 776, 783 (Fed. Cir. 2010) (citing Halliburton Energy Servs., Inc. v. M-I
LLC, 514 F.3d 1244, 1249-50 (Fed. Cir. 2008)). T he key question is whether the
intrinsic evidence provides “a general guideline and examples sufficient to enable a
person of ordinary skill in the art to determine [the scope of the claims].” Enzo
Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1335 (Fed. Cir. 2010).
The claims of the ’858 Patent indicate that the “substantially vertical” and
“substantially horizontal” portions involve the creation of a “toe region.” ’858 Patent col.
9 ll. 54-56 (“the upper includes a substantially horizontal portion and a substantially
vertical portion forming a toe region”); col. 10 ll. 26-28 (same). Further, in regard to
figure 1, the specification states:
Upper 150 includes a substantially vertical region 151 that includes one or
more ventilators 181.
...
As depicted, upper 150 includes a substantially horizontal region 152 that
rises toward an upper opening perimeter 170.
’858 Patent col. 5 ll. 1-2, 32-33. Figure 1 appears as follows:

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’858 Patent fig. 1.
Although Dawgs is correct that only one figure, constituting one embodiment,
depicts the “substantially” vertical and horizontal portions of the shoe, the Court agrees
with Crocs that figure 1 and the descriptions of figure 1 would allow a POSITA to
determine the scope of these claims. Mr. Whatley opines that a POSITA “would
understand the word ‘substantially’ with regard to the horizontal or vertical portion of the
upper to neither require a piece of foam footwear to be perfectly vertical nor perfectly
horizontal, nor to meet at ninety degrees around the toe region.” Docket No. 343-7 at
5-7, ¶ 13. According to Mr. Whatley, a POSITA would be informed both by the
specification and the inherent limitations of molding, because ninety degree angles are
a “problem point” in working with foam materials. Id. In addition, Mr. Whatley states

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that “in the field of footwear, especially foam footwear, sharp angles and parallel-sided
planar surfaces of an upper are almost non-existent.” Id.
Dawgs argues that the term “substantially” is a term of degree and that the
intrinsic evidence fails to describe how horizontal or how vertical the portions of the
upper must be. Docket No. 312 at 13-15. Because the intrinsic ev idence leaves the
boundaries of the claim terms undefined, Dawgs states that the terms “substantially
horizontal” and “substantially vertical” are left in a “zone of uncertainty” in violation of
Nautilus. Id. at 14. Dawgs cites three cases to demonstrate that the terms
“substantially vertical” and “substantially horizontal” are indefinite terms of degree.
Docket No. 312 at 13-14. However, each of the cases cited by Dawgs acknowledges
that it is permissible to use of a term of degree, such as “substantially,” without
rendering a claim term indefinite. See Core Wireless Licensing S.A.R.L. v. Apple Inc,
2016 WL 3124614, at *12 (N.D. Cal. June 3, 2016); Cayenne Med., Inc. v. Medshape,
Inc., 2016 WL 2606983, at *3 (D. Ariz. May 6, 2016); Fairfield Indus., Inc. v. Wireless
Seismic, Inc., 2015 WL 1034275, at *14 (S.D. Tex. Mar. 10, 2015). The cases offered
by Dawgs do not provide a general prohibition against the use of the term
“substantially” and, in any event, are distinguishable on their facts.
In Core Wireless, a patent dispute involving wireless communication systems,
the court found that the claim term “substantially impair the quality of the user
information” was indefinite. 2016 WL 3124614 at *3. The claim language in Core
Wireless provided that “the sender must ‘restrict[] the number of consecutive [stolen]
frames . . . to a sufficiently low number so as not to substantially impair the quality of

18

the user information.” Id. at *12. The construction of the claim term did not simply
require consideration of the scope of “substantially impair,” but also the relationship
between impairment and an undefined “low number” of frames. The court found the
term indefinite because the specification was “essentially silent” as to the number of
frames that constituted a low number and offered contradictory descriptions regarding
the potential interference associated with the loss of a single frame. Id. Unlike in Core
Wireless, the specification of the ’858 Patent provides an example of conforming
footwear, ’858 Patent fig. 1, and does not offer contradictory assessments of
conforming and nonconforming products.
In Cayenne Medical, a patent dispute involving devices for attaching soft tissue
to bone, the court found that the claim term “substantially different construction” was
indefinite because “nothing in the [] patent specification [] would direct a skilled artisan”
to focus on the figures that plaintiff identified as demonstrating a “substantially different
construction” or what particular features of those embodiments fell within the meaning
and scope of the claim limitation. 2016 WL 2606983 at *6. The court also noted that
the term “substantially different construction” is problematic because it requires
consideration of the degree of dissimilarity, but provides no framework for knowing
when a product is sufficiently dissimilar. Id. The ’858 Patent does not require
consideration of a degree of dissimilarity.
Last, in Fairfield Industries, a patent dispute involving wireless technology used
to transmit seismic data, the court found that the claim term “substantially prevent
communication interference between the first and second pairs” of sensor units was

19

indefinite because the intrinsic evidence failed to describe the boundaries of possible
interference and both sides’ experts said it was possible to eliminate all interference
between pairs of the relevant wireless devices. Thus, “substantially prevent” did not
“serve to acknowledge a physical impossibility or imprecision.” 2015 WL 1034275
at *16. Fairfield Industries is distinguishable because, as Mr. Whatley notes, the use of
the terms “substantially vertical” and “substantially horizontal” relate to both aesthetic
and practical limitations of the invention and would be known to a POSITA. Docket No.
343-7 at 5-7, ¶ 13.
Unlike in the cases cited by Dawgs, the ’858 Patent relates the term
“substantially” to the creation of a toe region and provides an example in the
specification showing how a toe region can be formed from a substantially horizontal
and substantially vertical portion. ’858 Patent col. 5 ll. 1-2, 32-33. Moreover, a POSITA
reading the ’858 Patent would be familiar both with the aesthetics of footwear design
and the practical constraints of working with foam. A POSITA would therefore
understand that a toe region does not consist of strictly vertical and horizontal portions.
A POSITA would be able to rely on principles of design and the specification of the
patent to compare a potentially infringing product to the specification.
Accordingly, the Court finds that Dawgs has not presented clear and convincing
evidence that the terms “substantially horizontal” and “substantially vertical” are
indefinite. The claim terms shall have their ordinary and customary meaning.
7. Generally Follow the Contour of a Human Foot
As noted above, both claims of the ’858 Patent describe a design “wherein the
upper includes a substantially horizontal portion and a substantially vertical portion
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forming a toe region that generally follows the contour of [the] human foot.” ’858 Patent
col. 9 ll. 54-57; col. 10 ll. 26-29. Dawgs argues that the term “generally follows the
contour of a human foot” is indefinite because the word “generally” is a subjective term
of degree and because the patent fails to specify an approach for determining whether
a toe region follows the contour of the human foot. Docket No. 312 at 19. Crocs
argues that the claim term is sufficiently clear in light of the intrinsic and extrinsic
evidence. Docket No. 343 at 16-17.
As noted above, the use of a subjective term of degree does not render a claim
term indefinite. “When a ‘word of degree’ is used, the court must determine whether
the patent provides some standard for measuring that degree.” Enzo, 599 F.3d at 1332
(quotation omitted). A claim term is indefinite when the patent fails to provide sufficient
guidance to enable a POSITA to compare potentially infringing products and determine
“whether interference . . . is substantial.” Sonix Tech. Co. v. Publications Int’l, Ltd., 844
F.3d 1370, 1377 (Fed. Cir. 2017) (quoting Enzo, 599 F. 3d at 1336).
Both claims of the ’858 Patent state that the upper includes a “toe reg ion that
generally follows the contour of a human foot, wherein the toe region tapers from [an]
inner area of the base section where the larger toes exist to [an] outer area of the base
section where the smaller toes exist.” ’858 Patent col. 9 ll. 56-60; col. 10 ll. 28-32. T he
specification provides figures depicting tapering. See id. figs. 3, 6, 8. In addition, the
specification discusses alternative embodiments:
Upper 150 further includes a toe region 155 that surrounds the toes of a
human foot inserted into base section 110. In some embodiments, toe
region 155 tapers from the inner area of base section 110 to the outer
area of base section 110, such that it generally follows the contour of a
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human foot where larger toes exist at the inside of the foot, and the foot
tapers to smaller toes on the outside. . . . In other em bodiments, toe
region 155 is a square cross section that does not exhibit tapering, while
yet other embodiments provide a rounded square where the toe section
has its greatest extension near the [] central point of base section 110,
and tapers in both directions from the central point.
’858 Patent col. 5 ll. 15-29. Mr. W hatley argues that a POSITA would be able to rely on
the claim language, the figures, and the written specification to “confirm and understand
the plain meaning of the claim language.” Docket No. 343-7 at 7, ¶ 14.
The claim language states that the footwear “generally follows the contours of
the human foot” by tapering around the toes, the specification provides multiple
examples of conforming shoes, and a POSITA would be able to use the specification to
identify potentially infringing products. See Edgewell Pers. Care Brands, LLC v. Albaad
Massuot Yitzhak, Ltd., 2017 WL 1900736, at *3 (D. Del. May 9, 2017) (finding that the
term “generally tapered” was sufficiently definite where the specification provided
examples to show the meaning of the claim term). The Court finds that Dawgs has not
provided clear and convincing evidence that the claim term “generally follow the contour
of a human foot” is indefinite.
The claim term “generally follow the contour of the human foot” shall have its
ordinary and customary meaning.
8. In the Upper Near to . . . the Upper Opening Perimeter
Claim two of the ’858 Patent describes “a decorative pattern of raised bumps []
molded or otherwise created in the upper near to and extending the length of the upper
opening perimeter.” ’858 Patent col. 10 ll. 34-36. Crocs argues that the specification
provides sufficient guidance to establish the meaning of the claim term. Docket
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No. 343 at 27. Dawgs argues that the claim term is indefinite because the ’858 Patent
does not specify how close the decorative pattern must be to the upper opening
perimeter. Docket No. 312 at 16.
The claim language describes a “pattern of raised bumps.” ’858 patent col. 10
l. 34. A pattern of bumps is discontinuous and therefore cannot be perfectly contiguous
with the upper opening perimeter. Thus, the claim term “near” reflects a practical
limitation of the decorative design. Moreover, the specification states that “[a]
decorative pattern 190 may or may not be molded or otherwise created near upper
opening perimeter 170.” ’858 Patent col. 5 ll. 41-43. The description refers the reader
to figure 1, which shows the area of the decorative pattern in contact with the upper
opening perimeter of the shoe. Id. fig. 1. The specification provides an example of
conforming footwear.
Mr. Whatley states that a POSITA “would understand a decorative element, such
as that claimed in Claim 2, may extend over various near distances from the upper
opening perimeter for the claimed shoe to function.” Docket No. 343-7 at 8-9, ¶ 17.
Because the purpose of the pattern is decorative, a POSITA would understand that the
decorative element must be sufficiently near the upper opening perimeter such that the
decorative upper and the upper opening perimeter are aesthetically associated. See
Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1291 (Fed. Cir. 2017) (finding
the term “near” definite where “a skilled artisan would understand ‘near’ [in reference to
two objects, to require them] to be displayed in a manner that physically associates the
two”).

23

Dawgs’ argument that the claim term is indefinite rests on three cases where
terms of degree signifying physical proximity were found to be indefinite. Docket No.
312 at 15-16. Dawgs first cites In re Neurografix (’360) Patent Litigation, 201 F. Supp.
3d 206 (D. Mass. 2016), a case involving magnetic resonance imaging systems. Id.
at 206. In Neurografix, the court found the claim term “near said exciting and output
arrangement means” to be indefinite because there was no intrinsic evidence to
describe the meaning of the term and the stated goals of the invention could be
accomplished in “many possible” configurations. Id. at 222-23. Similarly, in Advanced
Aerospace Technologies, Inc. v. United States, 124 Fed. Cl. 282 (2015), the court
found that the claim term “near the point of engagement” was indefinite because the
specification made no reference to the claim term and there was no functional or
industry context in which to interpret the claim. Id. at 291-92. In Abdou v. Alphatec
Spine, Inc., 2014 WL 6611422 (S.D. Cal. Nov. 19, 2014), the court found the term “in
proximity” to be indefinite because “nothing in the claims or specification tells a person
of ordinary skill in the art what the anatomical position, anatomical relationship, spacial
relationship, or proximity should be” for the claim term. Id. at *9.
Unlike in the cases offered by Dawgs, the term “near to” in the ’858 Patent
relates to forming a decorative pattern such that there is an aesthetic relationship
between the pattern and the upper opening perimeter. A claim term need not be
precise in order to be definite, so long as a POSITA would understand the boundary of
the claim term. See Biosig Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374, 1382
(Fed. Cir. 2015) (finding “spaced relationship” definite where a “skilled artisan would be

24

able to determine [the] language requires the spaced relationship to be neither
infinitesimally small nor greater than the width of a user’s hand”). Dawgs has not
shown that a POSITA would not understand the limits of such an aesthetic relationship.
Accordingly, the Court finds that Dawgs has not presented clear and convincing
evidence that the claim term “near to” is indefinite and it shall have its ordinary and
customary meaning.
9. Wherein the Ventilators Extend up a Majority of the Height of the
Vertical Portion
Claim two of the ’858 Patent requires that “a plurality of ventilators are formed in
both the substantially vertical portion and the substantially horizontal portion, and
wherein the ventilators extend up a majority of the height of the vertical portion.” ’858
Patent col. 10 ll. 37-40. Dawgs claims that the last clause of the claim term is indefinite
because the patent fails to define either the “height of the vertical portion” or provide a
method for measuring whether a ventilator extends up a majority of that height. Docket
No. 312 at 17-18. Crocs argues that the claim term should have its plain and ordinary
meaning. Docket No. 343 at 31.
The term “majority” is unambiguous: it requires the ventilators extend up more
than half of the vertical portion. See, e.g., Advanced Aerospace Techs., Inc. v. United
States, 124 Fed. Cl. 282, 301 (2015) (noting that “more than half” and “a majority” are
equivalent in construing the claim term “absorbs most of the energy”); Medtronic, Inc. v.
Edwards Lifesciences Corp., 2013 WL 2147909, at *36 (D. Minn. May 16, 2013)
(construing “majority” to mean “more than fifty percent”); Staples v. Johns Manville, Inc.,
2010 WL 1006240, at *6 (E.D. Mo. Mar. 16, 2010) (construing “majority” as “more than
25

50%”); Rattler Tools, Inc. v. Bilco Tools, Inc., 2007 WL 2008504, at *9 (E.D. La. July 6,
2007) (construing “majority” to mean “more than half”). However, Dawgs argues that,
because the patent fails to specify a method for measuring the height of the vertical
portion or comparing it to the height of the ventilator, a POSITA would be unable to
determine the meaning of the term majority in the context of the ’858 Patent.
Dawgs offers multiple theoretical methods to measure the height of the vertical
portion:
Does one use only “vertical” distance in this measurement? If the portion
is “substantially” vertical, it will have non-vertical length to it. How is this
accounted for?
At what location on the footwear does one measure the “height of the
vertical portion”? Does the patent claim require that the vertical portion
must be consistently equal? If the vertical portion varies in height across
the footwear, what is the appropriate place to measure it?
Where is the top of the “vertical portion”? The patent figures appear to
picture footwear with significant curvature. How does one know where
the top of the vertical portion is?
Docket No. 312 at 18. Dawgs cites cases purportedly demonstrating that, where the
invention allows several potential means to measure an aspect of the invention, a claim
term is indefinite if it fails to specify the means used by the invention. Docket No. 312
at 18-19. However, in each case cited by Dawgs, the evidence demonstrated that a
POSITA would be aware of multiple, equally-valid tests to perform measurements and
that, depending on the test used, allegedly infringing technology may or may not fall
within the scope of the patent. See Dow Chem. Co. v. Nova Chems. Corp., 803 F.3d
620, 633 (Fed. Cir. 2015) (discussing three valid methods for calculating the maximum
slope of a strain hardening coefficient); Teva Pharm. USA, Inc. v. Sandoz, Inc., 789
26

F.3d 1335, 1344 (Fed. Cir. 2015) (finding patent indefinite where “one of skill in the art”
would understand three methods of measuring molecular weight, but the claims and the
specification failed to indicate which measure to use); Otsuka Pharm. Co. v. Torrent
Pharm. Ltd., Inc., 151 F. Supp. 3d 525, 546-47 (D.N.J. 2015) (f inding the term “mean
particle size” indefinite where it was undisputed that the method employed by the patent
generated two possible measures of the mean particle size); Butamax Advanced
Biofuels LLC v. Gevo, Inc., 117 F. Supp. 3d 632, 641 (D. Del. 2015) (f inding the term
“% identity” indefinite where the specification described five possible methods of
calculation).
The Court has already found that a POSITA would be able to understand the
meaning of the term “substantially vertical portion” in light of the claim language and the
specification. Dawgs offers no evidence that a person with experience working with
molded footwear would seriously consider Dawgs’ proposed methodologies for
measuring the height of the vertical portion of the shoe. Instead, Dawgs offers
conjecture about ways in which an individual could theoretically decide to measure the
height of a vertical portion. These methods do not persuade the Court that a POSIT A
would be unable to measure the height of the vertical portion.
Dawgs has not met its burden of providing clear and convincing evidence that a
POSITA would be unable to discern the meaning of the claim term at issue because
there is no showing that a POSITA would consider multiple methodologies to measure
the height of the vertical portion. Accordingly, the claim term “wherein the ventilators
extend up a majority of the height of the vertical portion” shall have its plain and
ordinary meaning.
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II. THE ’789 PATENT
A. Background
The ’789 Patent is a design patent and consists of seven figures depicting a
shoe design. Docket No. 312-2, ’789 Patent fig. 1-7. The seven figures provide
multiple perspectives on the claimed design, including a front, right-side, left-side, top,
bottom, and rear view. Id. figs. 1-7. The description contains the limiting statement that
“[t]he broken line showing of the sole and surface treatment of the upper is for
illustrative purpose only and forms no part of the claim design.” Id. description.
B. Legal Standards for Claim Construction of Design Patents
Trial courts have a duty to “conduct claim construction in design patent cases, as
in utility patent cases.” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed.
Cir. 2008) (citation omitted). However, there is no requirement that the trial court
“provide a detailed verbal description of the claimed design,” because design patents
“typically are claimed as shown in drawings.” Id. (citations omitted). Design patents are
generally better represented by an illustration than by a verbal description; accordingly,
the “preferable course ordinarily will be for a district court not to attempt to ‘construe’ a
design patent claim by providing a detailed verbal description of the claimed design.”
Id.
While the preferable course is not to provide a detailed verbal description, the
Federal Circuit has noted that it may be appropriate to describe “various features of the
claimed design as they relate to the accused design and the prior art” or to address
issues that bear on the scope of a claim, such as conventions in design patent drafting

28

or distinguishing between functional and non-functional elements of the design. Id.
at 680. Accordingly, the trial court may offer a verbal construction of a design patent
where such construction would help to clarify the ornamental aspects of the design
without unnecessarily supplanting the visual impression created by the illustrations
contained in the design patent.
C. The Claim of the ’789 Patent
Dawgs does not propose a detailed verbal construction of the ’789 Patent.
Instead, Dawgs seeks to explain that the ’789 Patent does not include certain f unctional
features and that the broken lines used in the ’789 Patent show that it “does not include
the sole and the portions of the upper and strap depicted with dotted lines.” Docket No.
312 at 24. Crocs argues that no construction of the ’789 Patent is necessary. Docket
No. 343 at 43.
“Where a design contains both functional and non-functional elements, the
scope of the claim must be construed in order to identify the non-functional aspects of
the design as shown in the patent.” OddzOn Prod., Inc. v. Just Toys, Inc., 122 F.3d
1396, 1404-05 (Fed. Cir. 1997). To determine whether a design claim is dictated by
function, the Court considers:
whether the protected design represents the best design; whether
alternative designs would adversely affect the utility of the specified
article; whether there are any concomitant utility patents; whether the
advertising touts particular features of the design as having specific utility;
and whether there are any elements in the design or an overall
appearance clearly not dictated by function.
Sport Dimension, Inc. v. Coleman Co., 820 F.3d 1316, 1322 (Fed. Cir. 2016) (quotation
omitted). However, while it may be appropriate to note particular functional features of
29

a design, it is improper to wholly exclude structural elements of a design patent claim
simply because they have functional aspects. Id. Instead, the Court should consider
the manner in which the functional features of the design patent “contribute to the
overall ornamentation of the design.” Id. at 1323.
In Sport Dimension, the Federal Circuit reversed a district court’s claim
construction of a design patent that excluded “armbands and side torso tapering from
the claim” entirely because the design “includes the shape of the armbands and side
torso tapering, to the extent that they contribute to the overall ornamentation of the
design.” Id. at 1322-23. The district court had found that the armbands and tapering
were part of a utility patent and the patent holder had touted the utility of those features
in advertisements. Id. at 1322. Despite this, the Federal Circuit held that it would be
inappropriate for a court to wholly exclude functional features that contribute to the
overall ornamental design of the patent. Id.
Dawgs argues that two elements of the ’789 Patent should be excluded as
functional – the heel strap and the connectors that attach the heel strap to the upper.
Docket No. 312 at 24. In this case, several factors suggest that the strap and
attachments serve a functional purpose. There is a utility patent noting the importance
of the heel strap. See generally ’858 Patent. Crocs’ advertising regularly discusses the
useful features of the strap. See, e.g., Docket No. 312-14 at 8 (“heel strap keeps shoe
on foot”); Docket No. 312-22 at 2 (“The strap keeps the shoe in place on the f oot, while
giving plenty of space for the toes.”). Moreover, while other types of straps could

30

potentially be used, the foam strap serves a unique function of staying in place without
contact from the human foot.
Despite these factors militating in favor of finding that the strap is functional, the
strap also plays an aesthetic role in the ’789 Patent. Such a role is noted in Crocs’
advertising, see Docket No. 312-32 at 2 (“we added a strap for utility, and gave it some
flair”), and is evident from examining the figures contained in the design patent. See
generally ’789 Patent. As noted by the Federal Circuit:
One of the overall effects of the design is the interaction between the
strap assembly portion and the base portion of the shoes where the strap
is attached to the base. Multiple major design lines and curves converge
at that point creating a focal point attracting the eye of the ordinary
observer when viewing the overall effect of the design. Another overall
effect of the design is a visual theme of rounded curves and ellipses
throughout the design, including the strap forming a sort of continuation of
the sidewall of the base to create a visually continuous ring encircling the
entire shoe. Other examples of rounded curves or ellipses in the design
are the ellipses formed by the strap and the foot opening in the base.
Crocs, 598 F.3d at 1306. Accordingly, as the Federal Circuit observed in Sport
Dimension, excluding the strap and the attachments does not simply excise a functional
aspect of the ’789 Patent.
The Court finds that Dawgs’ proposed construction, which seeks to exclude “the
existence of a heel strap and the connectors that attach the heel strap to the upper,”
Docket No. 312 at 24, would improperly eliminate features that contribute to the
ornamental design of the ’789 Patent.
Dawgs next requests that the Court provide a construction that “[t]he patent
claim also does not include the sole and the portions of the upper and strap depicted
with dotted lines.” Docket No. 312 at 24. The ’789 Patent already states that “[t]he
31

broken line showing of the sole and surface treatment of the upper is for illustrative
purpose only and forms no part of the claim design.” ’789 Patent description. Dawgs
does not argue that this statement is incorrect, but seeks to include a reference to the
’789 Patent’s use of dotted lines on the strap in its figures. Docket No. 312 at 24. The
dotted lines shown on the strap are not mentioned in the description disclaimer. At the
claim construction hearing, Crocs conceded that it would be appropriate to expand the
disclaimer to incorporate the dotted lines shown on the strap because the use of dotted
lines should be construed consistently. Docket No. 554 at 71. Accordingly, the Court
finds that it is appropriate to instruct the jury that the broken line showing of the sole,
surface treatment of the upper, and on the heel strap is for illustrative purpose only and
forms no part of the claim design.
III. CONCLUSION
Accordingly, the patent claim terms presently at issue shall be construed in
accordance with the foregoing.

DATED June 27, 2017.
BY THE COURT:

s/Philip A. Brimmer
PHILIP A. BRIMMER
United States District Judge

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