image: Missoni

image: Missoni

THE FASHION LAW EXCLUSIVE – Skechers is fighting back against the patent infringement lawsuit that Nike filed against it early this year. In the suit, Nike alleges that fellow footwear company, Skechers’ “Burst, Women’s Flex Appeal, Men’s Flex Advantage, Girl’s Skech Appeal, and Boy’s Flex Advantage” shoe styles infringe at least eight of its design patents and that the “overall appearance of the designs of the Nike patents [for its Nike’s Flyknit designs] and the corresponding designs of Skechers’ infringing shoes are substantially the same.” Well, Skechers recently responded to such allegations and is looking to the fashion industry – namely, Italian design houses, Missoni and Dolce & Gabbana – for backing.

In a recently filed petition for review before the U.S. Patent Trial and Appeal Board (“PTAB”), Skechers claims that Nike’s Flyknit patents are invalid, as the designs are simply not that new and that the patent examiner would have known this but he “never considered any Missoni prior art when assessing the patentability of the claimed designs.” According to Skecher’s petition, Missoni’s zig-zag print designs, which date back to the 1950s, were around long before Nike created its Flyknit designs or filed its corresponding patent applications.

Skechers, which is headquartered in Manhattan Beach, California, goes on to state: Knit footwear became a fashion staple in 2010 when high-end fashion designers Dolce & Gabbana and Missoni debuted several knit footwear styles in their fall 2010 collections […] Nike, adidas, Puma, Reebok, and Under Armour are among the athletic footwear companies that have begun applying knitting techniques to their footwear products to harness the benefits of knit fabrics.

The footwear brand further notes: Perhaps the most well-known source of high-end knit designs is Italian fashion design house Missoni. Missoni has become famous for its use of space-dyed yarn—a process in which yarn is dyed in multiple colors or shades before being woven into a fabric […] Not only has Missoni’s popularization of space-dye stripes and knit patterns caught the eye of the world of high-end fashion, space-dye knit patterns serve as a natural source of inspiration for designers looking to incorporate existing knit designs and patterns into athletic footwear products.

 One of Skecher's allegedly infringing sneakers

One of Skecher’s allegedly infringing sneakers

With the aforementioned in mind, Skechers alleges that “any perceived differences between [Nike Flykit designs, and Missoni and other pre-existing knit designs] are de minimis and insufficient to justify a finding that [Nike’s] design is patentable.” As a result, Skechers has asked the PTAB to review the validity of Nike’s patent – the one that corresponds to the upper of its Flyknit design shoes – and ultimately, find that the patent is invalid due to the array of similar knit designs that existed prior to Nike’s design and filing.

Skechers has embarked upon a common course of action. In fact, one of the most frequent responses to a claim of patent infringement is the assertion of the defense that the underlying patent – the one upon which the plaintiff is relying – is invalid, for any number of reasons. More to come …