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IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF VIRGINIA
CHARLOTTESVILLE DIVISION

ROTHY’S, INC. )
)
Plaintiff, )
)
v. ) Civil Action No. 3:18CV00067
)
JKM TECHNOLOGIES, LLC d/b/a )
OESH SHOES, )
)
and )
)
DR. CASEY KERRIGAN, )
)
Defendants. )

DEFENDANTS JKM TECHNOLOGIES, LLC’S AND DR. CASEY KERRIGAN’S
ANSWER TO COMPLAINT FOR PATENT INFRINGEMENT, TRADE DRESS
INFRINGEMENT, AND UNFAIR COMPETITION, AFFIRMATIVE DEFENSES,
AND COUNTERCLAIMS

Defendant JKM Technologies, LLC (“JKM”) and Dr. Casey Kerrigan (“Dr. Kerrigan”)

by counsel, file this Answer, Affirmative Defenses, and Counterclaims to the Complaint for

Patent Infringement, Trade Dress Infringement, and Unfair Competition filed by Rothy’s, Inc.

(“Rothy’s”) as hereafter set forth. JKM and Dr. Kerrigan deny all allegations in the Complaint

not specifically admitted below. In responding to the Complaint, JKM and Dr. Kerrigan use the

headings employed by Rothy’s strictly as a convenience to the Court, and do not admit any

allegation made in, or inference suggested by, such headings. JKM and Dr. Kerrigan answer the

numbered paragraphs of the Complaint as follows:

THE PARTIES

1. JKM and Dr. Kerrigan admit the allegations contained in Paragraph No. 1 of the

Complaint.

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2. JKM and Dr. Kerrigan admit that JKM is a Virginia limited liability company. Except to

the extent explicitly admitted, JKM and Dr. Kerrigan deny the allegations of Paragraph No. 2.

3. JKM and Dr. Kerrigan admit that Dr. Kerrigan lives and resides in the Commonwealth of

Virginia. Except to the extent explicitly admitted, JKM and Dr. Kerrigan deny the allegations of

Paragraph No. 3.

JURISDICTION AND VENUE

4. JKM and Dr. Kerrigan admit that Rothy’s alleges that this is an action for federal design

patent infringement, federal trade dress infringement, and federal unfair competition and false

designation. JKM and Dr. Kerrigan also admit that this Court has subject matter jurisdiction

over this case. Except to the extent explicitly admitted, JKM and Dr. Kerrigan deny the

allegations of Paragraph No. 4.

5. JKM and Dr. Kerrigan admit that this Court has jurisdiction with respect to only those

allegations admitted herein, and to JKM’s and Dr. Kerrigan’s Affirmative Defenses and

Counterclaims. Except to the extent explicitly admitted, JKM and Dr. Kerrigan deny the

allegations of Paragraph No. 5.

6. JKM and Dr. Kerrigan admit only that venue is proper in this Court. Except to the extent

explicitly admitted, JKM and Dr. Kerrigan deny the allegations of Paragraph No. 6.

FACTUAL BACKGROUND

7. JKM and Dr. Kerrigan lack information sufficient to form a belief as to the truth or falsity

of the allegations of Paragraph No. 7, and on that basis deny the same.

8. With regard to Paragraph No. 8, JKM and Dr. Kerrigan admit only that Rothy’s sells a

generic style ballet shoe it calls “The Flat.” JKM and Dr. Kerrigan lack information sufficient to

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form a belief as to the truth or falsity of the remaining allegations of Paragraph No. 8, and on that

basis deny the same.

9. With regard to Paragraph No. 9, JKM and Dr. Kerrigan deny that Rothy’s has any

intellectual property rights in the design or trade dress of “The Flat.” JKM and Dr. Kerrigan lack

information sufficient to form a belief as to the truth or falsity of the remaining allegations of

Paragraph No. 9, and on that basis deny the same.

10. JKM and Dr. Kerrigan deny Paragraph No. 10 of the Complaint.

11. JKM and Dr. Kerrigan deny Paragraph No. 11 of the Complaint.

12. JKM and Dr. Kerrigan lack information sufficient to form a belief as to the truth or falsity

of the allegations of Paragraph No. 12, and on that basis deny the same.

13. JKM and Dr. Kerrigan deny Paragraph No. 13 of the Complaint.

14. JKM lacks information sufficient to form a belief as to the truth or falsity of the

allegations of ownership in the ’D366 Patent referenced in Paragraph No. 14, and therefore

denies the same. Defendant denies all remaining allegations contained in Paragraph No. 14,

including that the ’D366 Patent is valid or provides Rothy’s any rights whatsoever, including the

right to sue and receive any damages whatsoever.

15. JKM lacks information sufficient to form a belief as to the truth or falsity of the

allegations of ownership in the ’D156 Patent referenced in Paragraph No. 15, and therefore

denies the same. Defendant denies all remaining allegations contained in Paragraph No. 15,

including that the ’D156 Patent is valid or provides Rothy’s any rights whatsoever, including the

right to sue and receive any damages whatsoever.

16. JKM lacks information sufficient to form a belief as to the truth or falsity of the

allegations of ownership in the ’D276 Patent referenced in Paragraph No. 16, and therefore

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denies the same. Defendant denies all remaining allegations contained in Paragraph No. 16,

including that the ’D276 Patent is valid or provides Rothy’s any rights whatsoever, including the

right to sue and receive any damages whatsoever.

17. JKM lacks information sufficient to form a belief as to the truth or falsity of the

allegations of ownership in the ’D325 Patent referenced in Paragraph No. 17, and therefore

denies the same. Defendant denies all remaining allegations contained in Paragraph No. 17,

including that the ’D325 Patent is valid or provides Rothy’s any rights whatsoever, including the

right to sue and receive any damages whatsoever.

18. JKM lacks information sufficient to form a belief as to the truth or falsity of the

allegations of ownership in the ’D729 Patent referenced in Paragraph No. 18, and therefore

denies the same. Defendant denies all remaining allegations contained in Paragraph No. 18,

including that the ’D729 Patent is valid or provides Rothy’s any rights whatsoever, including the

right to sue and receive any damages whatsoever.

19. JKM lacks information sufficient to form a belief as to the truth or falsity of the

allegations of ownership in the ’D314 Patent referenced in Paragraph No. 19, and therefore

denies the same. Defendant denies all remaining allegations contained in Paragraph No. 19,

including that the ’D314 Patent is valid or provides Rothy’s any rights whatsoever, including the

right to sue and receive any damages whatsoever.

20. With regard to paragraph 20, Defendants admit only that Dr. Kerrigan is not an

incorporated business or entity. Defendants deny that Dr. Kerrigan does business as OESH

Shoes, and deny all remaining allegations contained in Paragraph No. 20.

21. JKM and Dr. Kerrigan admit that Dr. Kerrigan is an owner of JKM d/b/a OESH Shoes,

and as part of her role as Chairman of JKM she assists in the design, development, and

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manufacture of shoes. Except to the extent explicitly admitted, JKM and Dr. Kerrigan deny the

allegations of Paragraph No. 21.

22. JKM and Dr. Kerrigan admit only that Dr. Kerrigan was aware at some point in time of

the existence of the company Rothy’s and that Rothy’s, along with major athletic shoe brands,

machine knitted shoe uppers for functional purposes. Defendants deny that they copied Rothy’s

designs, patents and alleged trade dress, and deny all remaining allegations contained in

Paragraph No. 22.

23. JKM and Dr. Kerrigan admit only that JKM was aware at some point in time of the

existence of the company Rothy’s and that Rothy’s, along with major athletic shoe brands,

machine knitted shoe uppers for functional purposes. Defendants deny that they copied Rothy’s

designs, patents and alleged trade dress, and deny all remaining allegations contained in

Paragraph No. 23.

24. JKM and Dr. Kerrigan admit that JKM collects market intelligence on many shoes in

order to analyze the overall shoe industry, both past and present, and, as part of this typical due

diligence process, purchases directly or indirectly many shoes, such as Rothy’s The Flat. JKM

and Dr. Kerrigan further admit that a member of the JKM staff purchased a pair of Rothy’s shoes

in March of 2018 for purposes of this typical due diligence process. Except to the extent

explicitly admitted, JKM and Dr. Kerrigan deny the allegations of Paragraph No. 24.

25. JKM and Dr. Kerrigan deny Paragraph No. 25 of the Complaint.

26. JKM and Dr. Kerrigan deny Paragraph No. 26 of the Complaint.

27. JKM and Dr. Kerrigan deny Paragraph No. 27 of the Complaint.

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28. JKM and Dr. Kerrigan admit that as part of a design and development team at JKM, Dr.

Kerrigan helped design and develop The Dream Flat. Except to the extent explicitly admitted,

JKM and Dr. Kerrigan deny the allegations of Paragraph No. 28.

29. JKM and Dr. Kerrigan deny Paragraph No. 29 of the Complaint.

30. JKM and Dr. Kerrigan deny Paragraph No. 30 of the Complaint.

31. JKM and Dr. Kerrigan deny Paragraph No. 31 of the Complaint.

32. JKM and Dr. Kerrigan deny Paragraph No. 32 of the Complaint.

33. JKM and Dr. Kerrigan deny Paragraph No. 33 of the Complaint.

34. JKM and Dr. Kerrigan deny Paragraph No. 34 of the Complaint.

35. JKM and Dr. Kerrigan deny Paragraph No. 35 of the Complaint.

COUNT I
ALLEGED INFRINGEMENT OF U.S. PATENT NO. D768,366

36. JKM and Dr. Kerrigan repeat and re-allege its answers to the foregoing paragraphs as if

stated herein.

37. JKM and Dr. Kerrigan deny Paragraph No. 37 of the Complaint.

38. JKM and Dr. Kerrigan deny Paragraph No. 38 of the Complaint.

39. JKM and Dr. Kerrigan deny Paragraph No. 39 of the Complaint.

40. JKM and Dr. Kerrigan deny Paragraph No. 40 of the Complaint.

41. JKM and Dr. Kerrigan deny Paragraph No. 41 of the Complaint.

42. JKM and Dr. Kerrigan deny Paragraph No. 42 of the Complaint.

COUNT II
ALLEGED INFRINGEMENT OF U.S. PATENT NO. D804,156

43. JKM and Dr. Kerrigan repeat and re-allege its answers to the foregoing paragraphs as if

stated herein.

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44. JKM and Dr. Kerrigan deny Paragraph No. 44 of the Complaint.

45. JKM and Dr. Kerrigan deny Paragraph No. 45 of the Complaint.

46. JKM and Dr. Kerrigan deny Paragraph No. 46 of the Complaint.

47. JKM and Dr. Kerrigan deny Paragraph No. 47 of the Complaint.

48. JKM and Dr. Kerrigan deny Paragraph No. 48 of the Complaint.

49. JKM and Dr. Kerrigan deny Paragraph No. 49 of the Complaint.

COUNT III
ALLEGED INFRINGEMENT OF U.S. PATENT NO. D805,276

50. JKM and Dr. Kerrigan repeat and re-allege its answers to the foregoing paragraphs as if

stated herein.

51. JKM and Dr. Kerrigan deny Paragraph No. 51 of the Complaint.

52. JKM and Dr. Kerrigan deny Paragraph No. 52 of the Complaint.

53. JKM and Dr. Kerrigan deny Paragraph No. 53 of the Complaint.

54. JKM and Dr. Kerrigan deny Paragraph No. 54 of the Complaint.

55. JKM and Dr. Kerrigan deny Paragraph No. 55 of the Complaint.

56. JKM and Dr. Kerrigan deny Paragraph No. 56 of the Complaint.

COUNT IV
ALLEGED INFRINGEMENT OF U.S. PATENT NO. D831,325

57. JKM and Dr. Kerrigan repeat and re-allege its answers to the foregoing paragraphs as if

stated herein.

58. JKM and Dr. Kerrigan deny Paragraph No. 58 of the Complaint.

59. JKM and Dr. Kerrigan deny Paragraph No. 59 of the Complaint.

60. JKM and Dr. Kerrigan deny Paragraph No. 60 of the Complaint.

61. JKM and Dr. Kerrigan deny Paragraph No. 61 of the Complaint.

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62. JKM and Dr. Kerrigan deny Paragraph No. 62 of the Complaint.

63. JKM and Dr. Kerrigan deny Paragraph No. 63 of the Complaint.

COUNT V
ALLEGED INFRINGEMENT OF U.S. PATENT NO. D833,729

64. JKM and Dr. Kerrigan repeat and re-allege its answers to the foregoing paragraphs as if

stated herein.

65. JKM and Dr. Kerrigan deny Paragraph No. 65 of the Complaint.

66. JKM and Dr. Kerrigan deny Paragraph No. 66 of the Complaint.

67. JKM and Dr. Kerrigan deny Paragraph No. 67 of the Complaint.

68. JKM and Dr. Kerrigan deny Paragraph No. 68 of the Complaint.

69. JKM and Dr. Kerrigan deny Paragraph No. 69 of the Complaint.

70. JKM and Dr. Kerrigan deny Paragraph No. 70 of the Complaint.

COUNT VI
ALLEGED INFRINGEMENT OF U.S. PATENT NO. D836,314

71. JKM and Dr. Kerrigan repeat and re-allege its answers to the foregoing paragraphs as if

stated herein.

72. JKM and Dr. Kerrigan deny Paragraph No. 72 of the Complaint.

73. JKM and Dr. Kerrigan deny Paragraph No. 73 of the Complaint.

74. JKM and Dr. Kerrigan deny Paragraph No. 74 of the Complaint.

75. JKM and Dr. Kerrigan deny Paragraph No. 75 of the Complaint.

76. JKM and Dr. Kerrigan deny Paragraph No. 76 of the Complaint.

77. JKM and Dr. Kerrigan deny Paragraph No. 77 of the Complaint.

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COUNT VII
ALLEGED INFRINGEMENT OF ROTHY’S TRADE DRESS

78. JKM and Dr. Kerrigan repeat and re-allege its answers to the foregoing paragraphs as if

stated herein.

79. JKM and Dr. Kerrigan deny Paragraph No. 79 of the Complaint.

80. JKM and Dr. Kerrigan deny Paragraph No. 80 of the Complaint.

81. JKM and Dr. Kerrigan deny Paragraph No. 81 of the Complaint.

82. JKM and Dr. Kerrigan deny Paragraph No. 82 of the Complaint.

83. JKM and Dr. Kerrigan deny Paragraph No. 83 of the Complaint.

84. JKM and Dr. Kerrigan deny Paragraph No. 84 of the Complaint.

COUNT VIII
ALLEGED FEDERAL UNFAIR COMPETITION AND FALSE DESIGNATION

85. JKM and Dr. Kerrigan repeat and re-allege its answers to the foregoing paragraphs as if

stated herein.

86. JKM and Dr. Kerrigan deny Paragraph No. 86 of the Complaint.

87. JKM and Dr. Kerrigan deny Paragraph No. 87 of the Complaint.

88. JKM and Dr. Kerrigan deny Paragraph No. 88 of the Complaint.

PRAYER FOR JUDGMENT AND RELIEF

The paragraphs following the PRAYER FOR JUDGMENT AND RELIEF are legal

conclusions to which a response is required. To the extent a response is required, JKM and Dr.

Kerrigan deny the same. Plaintiff is not entitled to the relief sought in its Complaint or any relief

whatsoever.

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AFFIRMATIVE DEFENSES

By alleging the Affirmative Defenses set forth below, JKM and Dr. Kerrigan do not agree

or concede that they bear the burden of proof or the burden of persuasion on any of these issues,

whether in whole or in part. JKM and Dr. Kerrigan also expressly reserve their right to offer all

facts and evidence showing that JKM and Dr. Kerrigan are not liable for Rothy’s various claims.

For their Affirmative Defenses to the Complaint, JKM and Dr. Kerrigan allege as follows:

FIRST AFFIRMATIVE DEFENSE
(Failure to State a Claim)

Rothy’s Complaint, on one or more claims for relief set forth therein, fails to state a

claim upon which relief can be granted.

SECOND AFFIRMATIVE DEFENSE
(Patent Non-Infringement)

JKM and Dr. Kerrigan have not infringed, and currently do not infringe, D768,366,

D804,156, D805,276, D831,325, D833,729, or D836,314 (the “Rothy’s Design Patents”)

directly, indirectly, contributorily, by inducement, under the doctrine of equivalents, or in any

other manner.

THIRD AFFIRMATIVE DEFENSE
(Patent Invalidity)

The claims of the Rothy’s Design Patents are invalid for failure to satisfy one or more

of the conditions for patentability specified in Title 35 of the United States Code, including

without limitation §§ 101, 102, 103, 112, and/or 171. One or more of Rothy’s Design Patents are

also invalid under the doctrine of double patenting.

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FOURTH AFFIRMATIVE DEFENSE
(Invalid Trade Dress)

Rothy’s has no valid, protectable trade dress in which it enjoys any rights that may be

asserted against JKM or Dr. Kerrigan.

FIFTH AFFIRMATIVE DEFENSE
(No Likelihood of Confusion or False Designation of Origin)

The designs of the accused shoes are not likely to cause consumers to be confused,

mistaken or deceived into believing that the accused shoes originate with or are otherwise

associated with Rothy’s.

SIXTH AFFIRMATIVE DEFENSE
(Functionality)

The claims made in the Complaint and the relief sought therein are barred, in whole or in

part, on the basis that the alleged trade dress and Rothy’s Design Patents, and the use of said

trade dress and said Rothy’s Design Patents, are functional. Accordingly, Rothy’s has no

protectable intellectual property rights in the purported trade dress or the asserted design patents.

SEVENTH AFFIRMATIVE DEFENSE
(Lack of Secondary Meaning and/or Distinctiveness)

The claims made in the Complaint and the relief sought therein are barred, in whole

or in part, on the basis that the alleged trade dress at issue lacks distinctiveness, including,

without limitation, secondary meaning. Accordingly, Rothy’s has no protectable intellectual

property rights in the purported trade dress. Numerous third parties have used, and are using,

identical and/or similar designs on products identical and/or related to those of Rothy’s,

rendering such alleged trade dress commonplace, weak and entitled to no trade dress protection.

EIGHTH AFFIRMATIVE DEFENSE
(Generic Terms)

The claims made in the Complaint and the relief sought therein are barred, in whole

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or in part, on the basis that the alleged trade dress at issue is generic.

NINTH AFFIRMATIVE DEFENSE
(Non-infringement of the Alleged Trade Dress)

JKM and Dr. Kerrigan have not infringed, contributed to the infringement, or induced the

infringement of Rothy’s alleged trade dress.

TENTH AFFIRMATIVE DEFENSE
(Waiver and/or Estoppel)

Each of the purported claims set forth in Rothy’s Complaint is barred by the doctrines of

waiver and/or estoppel.

ELEVENTH AFFIRMATIVE DEFENSE
(Abandonment)

The claims made in the Complaint are barred, in whole or in part, by abandonment of the

alleged trade dress at issue.

TWELFTH AFFIRMATIVE DEFENSE
(Failure to Mitigate)

The claims made in the Complaint are barred, in whole or in part, because of Rothy’s

failure to mitigate damages, if such damages exist. Rothy’s has not marked its products with any

patent numbers or alleged trade dress protection.

THIRTEENTH AFFIRMATIVE DEFENSE
(Prosecution History Estoppel)

The relief sought by Rothy’s as to the claims of one or more of the Rothy’s Design

Patents is barred under the doctrine of prosecution history estoppel.

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FOURTEENTH AFFIRMATIVE DEFENSE
(Acts of Plaintiff)

On information and belief, the damages, if any, that were allegedly sustained by Rothy’s

as a result of the acts complained of in the Complaint were caused in whole or in part or were

contributed to by reason of the acts, omissions, negligence, and/or intentional misconduct of

Rothy’s, its agents, predecessors, and/or related entities. For example, Rothy’s has not marked

its products with any patent numbers or alleged trade dress protection.

FIFTEENTH AFFIRMATIVE DEFENSE
(No Equitable Relief)

As a result of Rothy’s actions, Rothy’s is not entitled to equitable relief, including

but not limited to Rothy’s request for injunctive relief as it has an adequate remedy at law.

SIXTEENTH AFFIRMATIVE DEFENSE
(No Willful Infringement)

Rothy’s claims for enhanced damages and an award of fees and costs have no basis in

fact or law and should be denied. Rothy’s has not marked its products with any patent numbers

or alleged trade dress protection.

SEVENTEENTH AFFIRMATIVE DEFENSE
(Third-Party Use)

The claims made in the Complaint are barred, in whole or in part, by reason of other

parties’ use of any alleged trade dress at issue.

EIGHTEENTH AFFIRMATIVE DEFENSE
(Actions of Others)

The claims made in the Complaint are barred, in whole or in part, because JKM is not

liable for the acts of others over whom it has no control.

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NINETEENTH AFFIRMATIVE DEFENSE
(No Causation)

Rothy’s claims against JKM and Dr. Kerrigan are barred because Rothy’s damages, if

any, were not caused by JKM or Dr. Kerrigan.

TWENTIETH AFFIRMATIVE DEFENSE
(No Damage)

Without admitting that the Complaint states a claim, there has been no damage in any

amount, manner or at all by reason of any act alleged against JKM and/or Dr. Kerrigan in the

Complaint, and the relief prayed for in the Complaint therefore cannot be granted. Rothy’s has

not marked its products with any patent numbers or alleged trade dress protection.

TWENTY-FIRST AFFIRMATIVE DEFENSE
(No Irreparable Harm/No Injunctive Relief)

Rothy’s claims for injunctive relief are barred because Rothy’s cannot show that it

will suffer any irreparable harm from JKM’s and/or Dr. Kerrigan’s actions. Additionally, any

alleged injury is not immediate, and the balance of the hardship and public interest weighs

against the grant of an injunction.

TWENTY-SECOND AFFIRMATIVE DEFENSE
(Adequate Remedy at Law/No Injunctive Relief)

Any alleged injury or damage suffered by Rothy’s would be adequately

compensated by damages. Accordingly, Rothy’s has a complete and adequate remedy at law and

is not entitled to seek equitable relief.

TWENTY-THIRD AFFIRMATIVE DEFENSE
(Duplicative Claims)

Without admitting that the Complaint states a claim, any remedies are limited to the

extent that there is sought an overlapping or duplicative recovery pursuant to the various claims

against JKM and/or Dr. Kerrigan or others for any alleged single wrong.

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TWENTY-FOURTH AFFIRMATIVE DEFENSE
(Acquiescence)

Rothy’s is barred in whole or in part from bringing its claims under the doctrine of

acquiescence.

TWENTY-FIFTH AFFIRMATIVE DEFENSE
(No Punitive Damages)

JKM and Dr. Kerrigan allege that no punitive or exemplary damages should be awarded

arising out of the claims made in the Complaint under the laws of the United States because: (i)

an award of punitive or exemplary damages would be unconstitutional under the United States

Constitution; specifically, the First Amendment to the United States Constitution; (ii) any

recovery of punitive or exemplary damages arising out of the claims made in the Complaint

would constitute the imposition of a criminal fine or penalty without the substantive or

procedural safeguards guaranteed by the Fifth and Fourteenth Amendments to the United States

Constitution; (iii) any such award is precluded or limited pursuant to the United States

Constitution and the due process clause; and (iv) punitive damages would violate the United

States Constitution and common law because such an award is based from procedures that are

vague, open-ended, unbound in discretion, arbitrary and without sufficient constraints or

protection against arbitrary and excessive awards. Rothy’s has not marked its products with any

patent numbers or alleged trade dress protection.

TWENTY-SIXTH AFFIRMATIVE DEFENSE
(Inequitable Conduct)

JKM and Dr. Kerrigan allege that individuals acting on behalf of Rothy’s committed one

or more acts of inequitable conduct before the USPTO in the filing and/or prosecution of one or

more of its patent applications that have led to the patents now asserted against JKM and Dr.

Kerrigan. Upon information and belief, Rothy’s and/or other individuals charged with filing and

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prosecution of its patent applications with duties of good faith and candor to the USPTO

intentionally did not disclose to the USPTO material, non-cumulative prior art and/or other

information.

ADDITIONAL DEFENSES

JKM and Dr. Kerrigan reserve the right to assert additional defenses based on

information learned or obtained during further investigation and/or discovery.

JURY DEMAND

JKM and Dr. Kerrigan demand a trial by jury on all issues so triable.

PRAYER FOR RELIEF

WHEREFORE, JKM and Dr. Kerrigan pray that the Court enter judgment in its favor and

against Rothy’s as follows:

A. Dismissing, with prejudice, Rothy’s claims against JKM and Dr. Kerrigan;

B. Denying all relief that Rothy’s seeks in its Complaint;

C. Awarding JKM and Dr. Kerrigan their expenses and costs in accordance with Rule 54(d)

of the Federal Rules of Civil Procedure;

D. Finding, to the extent the evidence so warrants, this case to be exceptional under

15 U.S.C. § 1117 and awarding JKM and Dr. Kerrigan their costs and attorneys’ fees; and

E. Awarding JKM and Dr. Kerrigan any other relief the Court deems just and proper.

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JKM TECHOLOGIES, LLC and DR.
CASEY KERRIGAN

By:/Nathan A. Evans/

Nathan A. Evans (VSB No. 46840)
WOODS ROGERS PLC
123 East Main St.
Fifth Floor
Charlottesville, VA 22902
Phone: 434-220-6829
Fax: 540-983-7711
nevans@woodsrogers.com

Francis H. Casola (VSB No. 29108)
Charles J. Dickenson (VSB No. 92889)
WOODS ROGERS PLC
10 S. Jefferson Street, Suite 1400
Roanoke, VA 24011
casola@woodsrogers.com
cdickens@woodsrogers.com

Counsel for Defendants JKM Technologies, LLC and Dr. Casey Kerrigan

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UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF VIRGINIA
CHARLOTTESVILLE DIVISION

JKM TECHNOLOGIES, LLC d/b/a )
OESH SHOES )
)
AND )
)
)
DR. CASEY KERRIGAN
)
)
Counterclaim Plaintiffs, )
)
v. ) Civil Action No. 3:18CV00067
)
ROTHY’S, INC., ) JURY TRIAL DEMANDED
)
Counterclaim Defendant. )
)

JKM TECHNOLOGIES, LLC’S AND DR. KERRIGAN’S COUNTERCLAIM AGAINST
ROTHY’S INC.

The defendants and counterclaim plaintiffs, JKM Technologies (“JKM”) and Dr.

Kerrigan (“Dr. Kerrigan”) (collectively “Defendants”), by counsel, file their counterclaim

against the plaintiff and counterclaim defendant Rothy’s, Inc. (“Rothy’s”), and state as follows:

NATURE OF THE ACTION

1. JKM and Dr. Kerrigan seek a declaration that each of the family of Rothy’s

Design Patents (Patent Nos. D768,366, D804,156, D805,276, D831,325, D833,729, and

D836,314) are invalid, and Defendants seek a declaration of non-infringement of the subject

patents. Defendants further seek a declaration that Rothy’s alleged and unregistered trade dress

is invalid, and Defendants seek a declaration of non-infringement of Rothy’s alleged trade dress.

Finally, Defendants seek a declaration of non-violations of federal unfair competition and false

designation laws.

{2383935-1, 106065-00002-03}

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THE PARTIES

2. Counterclaim Plaintiff JKM is a limited liability company organized under the

laws of the Commonwealth of Virginia, with its principal place of business in this District.

3. Counterclaim Plaintiff Dr. Kerrigan is an individual who lives and resides in the

Commonwealth of Virginia.

4. Upon information and belief, Rothy’s, Inc. is a corporation organized and existing

under the laws of the State of Delaware and has its principal place of business in California.

Upon information and belief, Rothy’s imports into the United States, offers for sale, sells and/or

uses in the United States, and in this District, shoes, including “The Flat.”

JURISDICTIONAL STATEMENT

5. Defendants’ counterclaims arise under the patent laws of the United States, 35

U.S.C. §§ 1 et seq., the Declaratory Judgment Act, 28 U.S.C. § 2201, et seq., the patent laws of

the United States, 35 U.S.C. § 1, et seq., and the Lanham Act, 15 U.SC. § 1051, et seq.

6. This Court has jurisdiction over this action pursuant to 15 U.S.C. § 1121 and 28

U.S.C. §§ 1331, 1338(a) & (b), 1367, 2201(a) and 2202.

7. This Court has personal jurisdiction over Rothy’s for at least the following

reasons: (i) Rothy’s regularly does business or solicits business, engages in other persistent

courses of conduct, and/or derives substantial revenue from products and/or services provided to

individuals in this District and in this Commonwealth; and (ii) Rothy’s has initiated litigation in

this Judicial District in connection with this dispute.

8. Venue is proper in this District pursuant to 28 U.S.C. §§ 1391(b)-(c) and 1400(b).

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9. An immediate, real, and justiciable controversy exists between Defendants and

Rothy’s as to whether the family of design patents D768,366, D804,156, D805,276, D831,325,

D833,729, and/or D836,314 are invalid and have not been infringed.

10. An immediate, real, and justiciable controversy also exists between Defendants

and Rothy’s as to whether JKM and Dr. Kerrigan violate the Lanham Act with regard to the

unregistered trade dress that Rothy’s alleges is embodied in Rothy’s “The Flat” product.

11. An immediate, real, and justiciable controversy also exists between Defendants

and Rothy’s as to whether JKM and Dr. Kerrigan violate the Lanham Act with respect to alleged

unfair competition and false designation.

FACTUAL BACKGROUND

I. Dr. Kerrigan Founds JKM Technologies, LLC and OESH Shoes to Make
Healthier Footwear for Women.

12. Dr. D. Casey Kerrigan, who is the founder and chairman of JKM, received an

M.D. from Harvard Medical School in 1987 where she returned after a medical residency in

physical medicine and rehabilitation. Known for her published research on the effects of

different styles of women’s footwear on health, she was recruited to the University of Virginia in

2002 to be the first woman tenured professor and chair in the school of medicine, with a joint

appointment in the school of engineering.

13. As a practicing physician and medical researcher, Dr. Kerrigan encountered

thousands of women who were suffering from a variety of painful and debilitating medical

conditions such as osteoarthritis of the knees and other joints, metatarsalgia, bursitis, tendonitis,

plantar fasciitis, bunions, and hammertoes as a result of poor footwear. JKM was formed in

2002 to address the above issues with further research and development and in 2009, Dr.

Kerrigan left her full-time position at the University of Virginia to focus on JKM.

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14. JKM acquired a development and manufacturing facility in downtown

Charlottesville and by 2011 JKM was manufacturing and selling its first shoe line under the

brand OESH Shoes. JKM prides itself in making shoes for women that are “Healthy by Design”

based on peer-reviewed medical research, using the latest, most innovative technologies. In

2018, OESH Shoes was the recipient of the “Innovator of the Year” Award by the Charlottesville

Business Innovation Council at its 20th Anniversary Gala Celebration.

II. JKM Technologies, LLC Develops A Ballet Flat Shoe Called “The Dream Flat.”

15. JKM’s vision for The Dream Flat was to incorporate specific features that

research had shown to be associated with foot and lower extremity health into a stylish shoe, thus

marrying form and function. The healthy features include a springy sole with uniform thickness

from heel to toe, an overall shape that matches the woman’s foot, an asymmetric wide forefoot

and toe box, a material that stretches to allow freedom of movement, a vamp that expands easily

at the forefoot, a narrow heel, and no harmful features such as excessive arch support, medial or

lateral stabilizers, or a medial to lateral curvature of the sole. The form of the shoe was to be a

standard ballet flat – a style that was not only functional but also fashionable and ubiquitous in

the shoe industry, and the design would have little or no ornamentation—to emphasize the

functional nature of the design. The Dream Flat’s healthy design includes a uniquely thick and

completely flat sole of uniform height in all directions, a uniquely shaped wide and asymmetrical

forefoot and toe box silhouette, and an acutely angled asymmetric pointed vamp that provides

stability while allowing lateral expansion at the forefoot.

16. The Dream Flat’s overall shape and outsole contour and profile are a function of

JKM’s unique, proprietary footwear form or mold called a “last” (blue structure pictured below)

that JKM developed in 2012 and has been using for prototypes and production, including for the

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Dream Flat, since 2013. The last’s shape dictates the toe shape profile, asymmetric pointed

vamp, and overall silhouette of the Dream Flat.

JKM’s Dress Flat Prototype Upper
November 19, 2013

™ Wide, and asymmetrical forefoot and
toe box;
™ Narrow heel with no heel structure; and
™ Acutely angled asymmetric pointed
vamp.

17. JKM has long recognized the limitations of using traditional cut and sew

processes in terms of manufacturing a dress flat upper to fit JKM’s unique anatomically shaped

“last.” Appreciating the need for newer and more efficient manufacturing methods, in 2014,

JKM developed its own in-house 3D printing process that allowed them in 2015 to begin

creating and testing dress flat prototypes with all the desired characteristics of a comfortable,

healthy dress flat. This two-year process which was supported in part by research grants from

the United States National Science Foundation, involved the creation and testing of numerous

dress flat prototypes whereby dress flat uppers were hand knitted and/or crocheted upward from

specially designed 3D printed soles.

18. Ever since Nike, Adidas and others began knitting shoe uppers in 2012 using

computerized knitting machines, many shoe companies, including JKM and Rothy’s, have taken

advantage of using computerized knitting for efficient, cost-effective, large scale manufacturing

of knitted shoe uppers. There are numerous utilitarian advantages to using computerized knitting

to knit shoe uppers and in particular, manufacturing a seamless pointed vamp.

19. On February 5, 2018, JKM approved its Dream Flat design for manufacturing.

The Dream Flat’s design (perspective drawings shown below) depicts the sole and upper design

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including, but not limited to, the Dream Flat’s anatomically-shaped, wide and asymmetrical

forefoot/toe, as well as its acutely angled, asymmetric seamless pointed vamp, to be efficiently

knitted on computerized knitting machines.

JKM’s Dream Flat Design Drawings

February 5, 2018

™ Anatomically shaped with wide
and asymmetrical forefoot;
™ Acutely angled asymmetric
pointed vamp; and
™ Distinctive sole tread design

20. While JKM had launched all its prior footwear on its own OESH Shoes website

(OESHshoes.com), JKM decided to launch the Dream Flat as part of a crowdsourcing campaign

and agreed to partner with Indiegogo, a crowdsourcing platform in San Francisco. A marketing

campaign was built around the Dream Flat’s healthy features, including its uniformly thick sole,

and its exceptionally wide forefoot and broad anatomically shaped toe box. With input from the

Indiegogo marketing team, the campaign included photographs of the Dream Flat being worn in

common everyday poses and a comparison video of the Dream Flat versus an (unnamed) typical

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dress flat.1 The campaign also highlighted that the upper was knit using knitting machines to

create a soft, stretchy sock-like upper.

21. The Dream Flat was launched June 25th, 2018 on Indiegogo.

https://www.indiegogo.com/projects/the-dream-flat-by-oesh#/. Indiegogo especially promotes

campaigns once they achieve a certain level of success. As expected, the Dream Flat campaign

met its initial fundraising goal quickly and was building momentum in sales and in the press.2

However, on July 17, 2018, the same day that JKM’s Indiegogo campaign had reached $50,0000

and Indiegogo featured the Dream Flat in its newsletter, Dr. Kerrigan received a cease and desist

letter (Exhibit A) via email from Rothy’s, demanding an immediate response to alleged

infringements or Rothy’s would take legal action. Rothy’s also copied the cease and desist letter

to two executives at Indiegogo. In the midst of the campaign, JKM had to divert limited

resources to prepare and send a detailed response letter back to Rothy’s (Exhibit B) and the

executives at Indiegogo. Because of Rothy’s interference, JKM’s campaign never re-gained its

initial momentum and never even came close to reaching its multi-million dollar potential.

22. JKM received no reply from Rothy’s after sending the response on August 1,

2018. Fifteen days later, on August 16, while the Indiegogo campaign was still in progress,

Rothy’s filed the present suit.

1
https://www.facebook.com/OESHshoes/videos/1938666189517842/
2
https://www.wvtf.org/post/cinderella-story-cville-doc-determined-craft-perfect-shoe#stream/0

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23. Upon information and belief, since the lawsuit was filed, Rothy’s issued

statements to business publications accusing OESH Shoes of being a “copycat”3 and “selling a

shoe that is alarmingly similar to one of their products.”4

III. Rothy’s, Inc. Develops a Functional Ballet Flat Shoe Called “The Flat,” Files Patent
Applications Embodying the Design of “The Flat,” But Fails to Disclose Prior Art
Proving the Design Lacks Novelty and/or is Obvious.
A. Background

24. Upon information and belief, sometime after Nike, Adidas, and other shoe

companies began knitting shoe uppers in 2012, two businessmen, Roth Martin and Stephen

Hawthornthwaite, thought to build a business around knitting a ballet flat.

25. Upon information and belief, in researching and developing a knitted ballet flat in

California, Martin and Hawthornthwaite were well aware of a popular and highly publicized

crocheted ballet flat made by a women-owned California-based company called Painted Birds.

Painted Birds’ flats, which were sold online and in Anthropologie, were featured in the L.A.

Times on July 2, 2012,5 Fashion Trends Daily on July 24, 2012,6 InStyle Magazine on October

13, 2012,7 Trendhunter on February 8, 2013,8 and ELLE Magazine on July 17, 2013.9 As

3
https://www.bloomberg.com/news/articles/2018-12-17/rothy-s-hits-its-stride-with-35m-from-
goldman-sachs
4
https://techcrunch.com/2018/12/18/rothys-just-landed-35-million-goldman-sachs-to-sell-more-
of-its-popular-ballet-flats/
5
https://latimesblogs.latimes.com/alltherage/2012/07/painted-bird-crocheted-shoes-arrive-just-
in-time-for-summer.html
6
http://www.fashiontrendsdaily.com/fashion-shoes/painted-bird-footwear-takes-flight
7
https://www.instyle.com/news/new-hand-woven-shoes-painted-bird
8
https://www.trendhunter.com/trends/crochet-footwear
9
https://www.elle.com/fashion/accessories/news/a23385/painted-bird-espadrille-shoe-brand/

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reported in InStyle Magazine, “…the styles have already been scooped up by Blake Lively,

Reese Witherspoon, and Kate Hudson…” As reported in Trendhunter, “The Painted Bird shoes

are stylish, comfortable and the perfect flats you can dress up or down.” As reported in ELLE,

“…and in early 2014 they’ll launch Baby Birds, a spin-off collection for little girls.”

26. The design patents at issue in this lawsuit are nearly identical in overall design to

Painted Bird’s seamless 3D crocheted10 ballet flat with among other things, a rounded toe and

symmetric pointed vamp, as demonstrated below and in more detail in Exhibit C.

Painted Birds Flat Rothy’s Design Patent for “The Flat”
(July 2012) (December 2014)

™ Seamlessly constructed; Figures 1 and 6 of Rothy’s submitted
™ Same overall shape and appearance with “parent” patent design for a ballet flat.
rounded toe and symmetric pointed vamp.
NOT CITED TO USPTO

10
Crochet and knitting are structurally equivalent loop needle fabric construction techniques
used to make a shaped, seamless shoe upper with clean, reinforced edges and corners, including
sharp inside corners, without the need for any additional material and/or stitching.

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27. Upon information and belief, Martin and Hawthornthwaite also knew about

another popular ballet flat called the “Jutti Flat,” that had just been introduced by TOMS in

February 2014. In an interview with Time Magazine, Roth Martin conceded that they were

“soaking up inspiration from companies like TOMS and Patagonia.”11 (Emphasis added.)

Likewise, in an interview with the San Francisco Chronicle, Martin said, “TOMS were

everywhere, and it inspired us to create a product…”12 The design patents at issue in this lawsuit

are similar in design to TOMS’ “Jutti Flat” with among other things, a rounded toe, symmetric

pointed vamp, slim profile, sleek, thin wedge sole, and heel structure, as demonstrated below and

in more detail in Exhibit C.

Rothy’s Design Patent for “The Flat”
TOMS “Jutti Flat”
(December 2014)
(February 2014)

™ Same symmetric pointed vamp; ™ Figures 2 and 5 of Rothy’s
™ Same sleek thin wedge sole; and submitted “parent” patent design for
™ Similar ankle seams and heel structure a ballet flat.
and lack of seams at the back of the heel
NOT CITED TO USPTO

11
http://time.com/4390456/san-francisco-fashion-shoes-rothys/
12
https://www.sfchronicle.com/style/article/For-SF-shoemakers-the-world-is-indeed-flat-
9173496.php

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28. Upon information and belief, in December of 2014, Hawthornthwaite and Martin

applied for a design patent with the United States Patent & Trademark Office (“USPTO”) for a

knitted ballet flat with a rounded toe, symmetric pointed vamp, and a thin wedge sole which

embodies the design patent family at issue in this lawsuit.

29. The design of the Flat, and the design embodied in the patents, are nearly identical

in overall design to the popular Painted Birds and TOMS “Jutti Flat” ballet flat designs with a

rounded toe, symmetric pointed vamp, and a seamless heel ankle structure.

30. Upon information and belief, Hawthornthwaite and Martin did not disclose the

Painted Birds or TOMS “Jutti Flat” designs as prior art to the USPTO’s patent Examiner at the

time of filing or at any time during prosecution of the design patents asserted in this case despite

their similar appearance and materiality to patentability.

31. In fact, in the parent design patent application, Hawthornthwaite and Martin did

not submit any prior art whatsoever in an “Information Disclosure Statement” to the USPTO.

Millions of ballet flats are sold every year in the USA yet Hawthornthwaite and Martin never

brought even one example of prior art to the attention of the USPTO when applying for their

design patents.

32. Further, Eliya’s popular “Catwalk Flat,” which had been referenced during the

present lawsuit while Rothy’s new child patents were being prosecuted, is similar in overall

design to the patent application figures—including a rounded toe and pointed vamp—yet was

never disclosed to the USPTO. The Catwalk is pictured below next to an exemplary figure from

Rothy’s new Patent No. D833,729.

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Eliya’s “Bernie Mev Catwalk” Rothy’s Design Patent D833,729 (Fig. 1)
(September 2013) (Filed August 9, 2018)
(Issued November 20, 2018)

NOT CITED TO USPTO

33. There are numerous examples of dress flats pre-existing Rothy’s first parent

patent application that are similar in overall design and with regard to most features including the

overall shape and profile, the toe shape, the vamp shape, the ankle seam location and shape, the

raised heel collar, the band along the top of the vamp, and the sole design. An exemplary, non-

exclusive list of prior art not cited to the patent Examiner and not considered by the patent

Examiner is attached as Exhibit C. In light of the prior art, Rothy’s design patents cover a non-

novel and obvious ballet flat with a functional rounded toe and seamless, symmetric pointed

vamp, a functional, non-ornamental heel structure that holds the shoe together, and other

common features of ballet flats and other functional and/or commonplace aspects described

below.

34. Specifically, the overall design of the shoe shown in the figures of the design

patents is that of a generic, functional women’s ballet flat. Ballet flats are a general type of shoe

characterized by “slipper-like construction, with a very thin or completely flat heel, a closed toe

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and a low cut that reveals the top of the foot.”13 Overall, ballet flats, which were popularized in

the 1940’s-50’s, are slim, sleek, and simple in appearance. There are limited ways to achieve

this overall appearance in a slipper-like shoe with a thin or flat heel, closed toe, and low cut that

reveals the top of the foot. As a result, ballet flat designs vary in limited and predictable ways

that constitute an industry standard. For example, almost all ballet flats have either a rounded toe

shape or a pointed shape. Similarly, almost all ballet flats have either a pointed vamp or a

rounded vamp. With respect to the sole, almost all ballet flats have a sleek thin wedge sole or

minimal heel elevation in the sole. Almost all ballet flats either have a side seam at the ankle, a

central seam at the back, or no seams on the upper.

35. Rothy’s patents show a typical ballet flat, or portions of a typical ballet flat, with a

non-ornamental rounded toe shape, a non-ornamental vamp shape, a non-ornamental band along

the edge of the vamp, a non-ornamental thin wedge sole, a non-ornamental side seam at the

ankle, and/or a non-ornamental raised heel collar.

36. Because Rothy’s design patents are obvious and lack novelty in light of the dense

prior art that was never considered by the patent Examiner, as well as in light of the design(s)

being primarily functional, all of the asserted design patents are invalid.

B. Rothy’s Sends a Cease and Desist Letter to JKM, and Then Misappropriates
JKM’s Design of the Dream Flat in a Patent Application.

37. On July 17, 2018, Rothy’s sent a cease and desist letter (Exhibit A) to JKM

alleging that JKM’s Dream Flat infringed on Rothy’s design patents.

38. On August 1, 2018, JKM responded to Rothy’s cease and desist letter by

providing detailed information about the Dream Flat and high-resolution photographs comparing

13
https://www.liveabout.com/shoe-glossary-ballerina-flats-2987848

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the Dream Flat to each view of Rothy’s design patents showing non-infringement.

39. Upon information and belief, on August 9, 2018, eight days after receiving JKM’s

response to Rothy’s cease and desist letter, Rothy’s filed a new design patent application to the

USPTO which became Patent Number D833,729 under the pretense that the new patent

application was merely a continuation of their earlier patent.

40. Upon information and belief, with JKM’s information about the Dream Flat now

in hand, Rothy’s replaced most of the solid lines in their original drawings with dotted lines and

drew in entirely new boundary lines in an attempt to claim portions of the Dream Flat’s design.

Regarding the new heel seams pictured below, the patent used dash-dot-dash lines, which,

according to the patent, “The areas within the solid lines and outside the dash-dot-dash lines

form the claimed invention.” Upon information and belief, the new heel seams, which Rothy’s

had learned about only days earlier from JKM’s response to the cease and desist letter, were now

being used to define Rothy’s supposed invention:

December 18, 2014, August 1, 2018 JKM
August 9, 2018 New Patent
November 2, 2015, and Response to Cease and
Application
September 7, 2016 Patents Desist Letter

Rothy’s Figure 3 from parent Rothy’s receives this photo of Rothy’s creates new Figure 3
patent D768,366 and the JKM Dream Flat taken at for new patent application
subsequent divisional and the same angle with heel that is granted as patent
continuation patent filings seams D833,729 (showing heel
(showing no heel seams) seams taken from JKM’s The
Dream Flat)

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41. Upon information and belief, these heel seams were not pictured in any of the

previous Rothy’s design patent applications and therefore constituted new subject matter.

Accordingly, JKM’s The Dream Flat was prior art to this new application, yet this prior art,

expressly having the heel seams now claimed by Rothy’s, was not disclosed to the USPTO and

the patent was allowed to issue without the patent Examiner being aware of this critical piece of

prior art.

42. Upon information and belief, in this new patent application, Rothy’s also replaced

most of the solid lines in their original drawings with dotted lines in an attempt to exclude the

differences between Rothy’s patent designs and the Dream Flat’s design without informing the

USPTO of the Dream Flat.

43. Upon information and belief, Rothy’s made a special request to the USPTO for an

expedited examination of this application that became the ‘729 patent. As part of this request, a

declaration to the USPTO was signed by the prosecuting attorney on Rothy’s behalf affirming

that “[a] preexamination search was conducted…” However, despite the information Rothy’s

had received from JKM, which had included the statement that JKM had “identified many

examples of prior art (as well as current art) showing round toe flats with a pointed vamp,”

Rothy’s only re-cited what the patent Examiner had cited in the first, parent application (along

with the other patents in the Rothy’s design patent family). Upon information and belief,

Rothy’s did not perform its own preexamination search, including the specifics of the supposed

search listed in the declaration, and Rothy’s certainly did not ask JKM what prior art they had

identified.

44. Eight days later, on August 16, 2018, Rothy’s filed the present suit against JKM

and Dr. Kerrigan.

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45. Upon information and belief, four days later, on August 20, 2018, Rothy’s filed

an additional patent application to the USPTO which became Patent Number D836,314, again

under the pretense that it was merely a continuation of their parent patent application. For this

patent application, Rothy’s drew new boundary lines over views of a photographed ballet flat.

Upon information and belief, the boundary lines to define the front portion of the shoe were

positioned such that Rothy’s wedged heel elevation would not be visible so as to look more like

JKM’s Dream Flat.

46. Again, Rothy’s made a special request to the USPTO for an expedited

examination of this ‘314 patent. As part of this request, a declaration to the USPTO was signed

by the prosecuting attorney on Rothy’s behalf affirming that “[a] preexamination search was

conducted…” However, despite the information Rothy’s had received from JKM, Rothy’s only

re-cited what the patent Examiner had cited in the first, parent patent application of December

2014 (along with the other patents in the Rothy’s design patent family). Upon information and

belief, Rothy’s did not perform its own preexamination search, including the specifics of the

supposed search listed in the declaration, and Rothy’s certainly did not ask JKM what prior art

they had identified.

C. “The Dream Flat” Does Not Infringe Rothy’s Asserted Design Patents

The D768,366 and D805,276 Asserted Design Patents

47. Upon information and belief, the claims, descriptions, and figures of the

D768,366 patent (the “‘366 Patent”) and the D805,276 patent (the “‘276 Patent”) are identical.

48. In summary, the patented designs as a whole and the JKM Dream Flat are

dissimilar. The overall differences include but are not limited to, the following. The Dream

Flat’s toe box shape is wider relative to the heel, less tapered, and is asymmetrical, giving an

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overall appearance of an organic, foot-shaped toe box instead of a generic slim-profiled rounded

toe as claimed by the patents. The Dream Flat’s vamp is asymmetrical and incorporates an acute

vamp angle, unlike the patents, which claim a symmetrical and obtuse vamp angle. The Dream

Flat’s signature sole is thicker at the forefoot and toe, of uniform thickness from front to back,

and not raised at the heel, giving the Dream Flat a much more substantial appearance than the

patent designs. On the other hand, the patent claims an outer sole that is thin, wedge-shaped, and

beveled, as well as elevated at the heel. Additionally, the Dream Flat has no side seams or heel

structure, but rather prominent central seams at the back, while the patent figures show no seams

at the shoe’s rear, side seams at the ankle, and an entire heel structure holding the shoe together.

49. The patented designs are not similar to the Dream Flat in any way that differs

conspicuously from the prior art. Because there are so many examples of similar prior art

designs (see, e.g., Exhibit C), and because the patented designs are so close to the prior art

designs, even minor differences between the patents and the Dream Flat would be highly

significant to the hypothetical ordinary observer. When considering the prior art, differences that

might not be noticeable in the abstract take on major importance. Therefore, overall, the two

designs could not appear substantially the same to the ordinary observer. A side-by-side

comparison of the figures from the ‘366 Patent and ‘276 Patent, compared to JKM’s Dream Flat,

is presented below.

D768, 366 and D805,276 JKM’s The Dream Flat Notable Distinctions
Patent Figures
Wider forefoot and broad
anatomically shaped toe box,
not pointed;
Sole sidewall is smooth and
thick, not beveled and thin;

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No change in heel elevation
in the sole;
Continuous top curve from
heel to forefoot, no corner at
the ankle;
No ankle band from top of
heel to sole at ankle; and
No heel collar at the back
Wider and broader toe box,
not pointed; and
Sole sidewall is smooth and
thick, not beveled and thin

Two vertical seams attach an
additional piece of material,
not seamless;
Sole sidewall is smooth and
thick, not beveled; and
No collar at the top of the
heel
Sole sidewall is smooth and
thick, not beveled and thin;
No change in heel elevation
in the sole;
Continuous top curve from
heel to forefoot, no corner at
the ankle;
No ankle band from top of
heel to sole at ankle; and
No heel collar at the top back

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Sole sidewall is smooth and
thick, not beveled and thin;
No change in heel elevation
in the sole;
Continuous top curve from
heel to forefoot, no corner at
the ankle;
No ankle band from top of
heel to sole at ankle; and
No heel collar at the top back
Vamp angle is acute and
extends back further;
Vamp is asymmetric;
Continuous curve from heel
to forefoot;
Wider forefoot, broad
anatomically shaped toe box,
and narrower heel based on a
natural foot shape; and
Vertical seams attach an
additional piece of material
at the back of the heel, not
seamless
Flat surface, no change in
heel elevation;
Wider forefoot, broad
anatomically shaped toe box,
and narrower heel based on a
natural foot shape; and
Entirely different tread
pattern which covers the
entire surface, not relegated
to the heel and forefoot

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The D804,156 Asserted Design Patent

50. Patent D804,156 is very similar to patents D768,366 and 805,276. Additional

FIGS 8-14 that were added to the D804,156 Patent “include a shaded portion, which is

designated to show that the portion can be any color, and in particular, a color different than the

unshaded portions in FIGS. 8-14.”

51. The shaded portion is exemplified in FIG. 8 of the D804,156 Patent below (an

arrow to the portion has been added for clarity):

52. As illustrated in paragraph 49, JKM’s Dream Flat does not have a portion as

shaded in FIGS. 8-14 of the D804,156 Patent that is a different color than the unshaded portions

of FIGS. 8-14.

53. All the figures of the D804,156 Patent as compared to JKM’s Dream Flat are

presented in Exhibit D.

The D831,325 Asserted Design Patent

54. Patent D831,325 shows a portion of a shoe at the heel. A side-by-side

comparison of Figures 1 and 3 from the ‘325 Patent compared to JKM’s Dream Flat, is presented

below and a comparison of all Figures 1-7 are included in Exhibit E. Specifically, the

differences include but are not limited to the following: The Dream Flat has no raised heel collar,

no contrasting color at the back of the heel, and no ankle side seams, but rather has prominent

central seams at the back of the heel.

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D831,325 Patent Figures JKM’s The Dream Flat Notable Distinctions
Continuous top curve
from heel to forefoot, no
corner at the ankle;
No ankle seam from top
of heel to sole at ankle;
and
No heel collar or
contrasting portion at the
back
Two vertical seams attach
an additional piece of
material, not seamless;
and
No collar or contrasting
portion at the top of the
heel

The D833,729 Asserted Design Patent

55. With the dotting out of most of the curves in the parent patent and the addition of

the Dream Flat’s heel seam boundary lines, the asserted D833,729 patent now claims an even

more generic dress flat with a round toe and pointed vamp, despite Rothy’s knowing that

Defendants had “identified many examples of prior art (as well as current art) showing round toe

flats with a pointed vamp.” A comparison of the ‘D729 patent to the Dream Flat is attached as

Exhibit F.

56. Nonetheless, the Dream Flat is still very distinguishable from the ‘729 Asserted

Design Patent. The differences between the Dream Flat and the ‘729 Patent include but are not

limited to the following. The Dream Flat’s toe box shape is substantially wider relative to the

heel, less tapered, and is asymmetrical, giving an overall appearance of an organic, foot-shaped

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toe box instead of a generic rounded toe as claimed by the patent. In addition, the Dream Flat’s

vamp is asymmetrical and incorporates an acute vamp angle, unlike the patent, which claims a

symmetrical and obtuse vamp angle.

D833,729 Patent Figures JKM’s The Dream Flat Notable Distinctions
Wider forefoot and
broad anatomically
shaped toe box, not
pointed;
Continuous top curve
from heel to forefoot,
no corner at the ankle
Vamp angle is acute
and extends back
further;
Vamp is asymmetric;
Continuous curve from
heel to forefoot; and
Wider forefoot, broad
anatomically shaped toe
box, and narrower heel
based on a natural foot
shape

The D836,314 Asserted Design Patent

57. Patent D836,314 shows a photographed shoe that has been edited to show only a

portion of the shoe. The photographed shoe is slightly different from the design drawings shown

in the ‘366, ‘276, ‘156, and ‘729 asserted patents insofar as the toe is more pointed and the vamp

is rounded. The Dream Flat’s profile is entirely different from the ‘314 patent as well. The

differences between the Dream Flat and the ‘314 patent include but are not limited to: The

Dream Flat has a much more substantial appearance, a significantly wider forefoot and toe box

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shape, an asymmetrical pointed, not a rounded vamp, and a sole that is obviously thicker at the

toe as can be seen in the figure below comparing the Dream Flat to Figure 6 of the ‘314 patent.

A side-by-side comparison of each of the 14 figures of the ‘314 Patent compared to JKM’s

Dream Flat is included in Exhibit G.

D836,314 Patent JKM’s The Dream Notable Distinctions
Figures Flat
Wider forefoot, broad anatomically
shaped toe box, based on a natural foot
shape (not as pointed);
Vamp angle is pointed and acute, not
round;
Much more substantial appearance; and
Sole sidewall is smooth and thick, not
beveled and thin (not depicted in this
particular patent figure)

D. The Asserted Design Patents are Invalid
1. The Design Patents Lack Novelty and/or are Obvious

58. The overall design of the shoes shown in the figures of the design patents is that

of a generic women’s dress flat (or portions thereof) and, in light of the prior art, the design is

non-novel and/or obvious, and therefore invalid under 35 U.S.C. §§ 102 and 103, respectively.

59. Additionally, the ‘366 and ‘276 patents are invalid for double patenting, because

they claim identical subject matter and scope.

60. The designs illustrated and what is claimed in the patents are non-novel and/or

obvious variations of the prior art as a whole, either alone or in combination, as shown by the

prior art in, for example, paragraphs 25-36, supra.

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61. Moreover, as exemplified in the attached chart (Exhibit C), which is a partial,

non-exclusive listing of prior art not before the patent Examiner during the prosecution of any of

the asserted design patents, prior art from before Rothy’s patent applications is dense with

examples of ballet flat designs similar to the figures in the design patents. There are numerous

examples of shoes that are materially similar with respect to the overall patent design as a whole,

and with respect to most of the features, such as the toe shape, the vamp shape, the ankle seam

location and shape, the raised heel collar, the band along the top of the vamp, the ankle band/heel

structure, and the sole design, thereby rendering the patents obvious and/or not novel.

62. For example, the heel structure as depicted in the parent design patent application

is neither new nor non-obvious, as specifically shown below and in examples in Exhibit C:

March 2014 (The “Kate” Flat by Blake
Brody) Included in Rothy’s Parent Patent Application

NOT CITED TO USPTO

63. In light of the prior art, Rothy’s has not shown how the shoe illustrated in its

patents has a novel or non-obvious design that is different from the industry standard ballet flat

or that is worthy of patent protection.

2. The Design Patents are Functional and Not Primarily Ornamental

64. Rothy’s design patents depict an overall functional ballet flat designed to fit a

woman’s foot closely, with the basic external shape being primarily functional and not for the

purpose of ornamentation, including a functional rounded toe and pointed vamp, a functional

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band along the edge of the vamp, and a functional ankle band / heel structure. Accordingly, the

claimed design as viewed in its entirety is primarily functional overall.

i. Functionality of a Knitted Ballet Flat.
65. A number of prior art utility patents and applications filed by third parties teach

the functionality of a knitted ballet flat, which also render the asserted patents non-novel and

obvious.

66. For example, expired U.S. Patent No. 4,785,558 (Exhibit H) teaches knitting a

shoe upper with interknitted layers. The patent states that the knitted shoe upper provides for “a

combination of suitable elasticity with high air permeability…Since the shoe upper having the

above construction uses a knit fabric layer as the base, it is remarkably superior in flexibility to a

shoe upper which uses a fabric as a base.”

67. European Patent EP2805638 (Exhibit I) teaches a knitted upper shoe part that

may be knitted seamlessly to improve productivity, reduce complication, and retain shape.

68. U.S. Patent Appl. No. 13/442,239 (Exhibit J) teaches a seamless knitted upper

shoe part. As the application explains, the knitting process is functional: “Some benefits of this

process include ease and efficiency of production, reduction of assembly time, maximum

comfort through reduction of seams, and freedom of design.”

69. Nike has filed numerous utility patent applications for machine knitting shoe

uppers. U.S. Patent Appl. No. US 2014/0150292 (Exhibit K) teaches a number of stitch patterns

that are functional to different parts of a shoe upper including the main portion of the upper and

around the foot opening with exemplary figures showing the most basic, non-ornamental knit

pattern structures that are most commonly used in footwear uppers. To the extent that the basic

knit stitch pattern is visible in Rothy’s design patents ‘325 and ‘314, the same basic knit structure

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has already been taught by Nike, exemplified in a number of figures throughout its utility patent

application, including the figure below.

Nike Patent Application 2014/0150292 Rothy’s D836,314 Patent

70. A series of applications and issued utility patents filed by Nike specifically teach

machine knitting a seamless knit 3D ballet flat such as Rothy’s. As stated in Patent No.

7,774,956 (Exhibit L), “While the footwear structures 10’ 100, and 200 shown in FIGS 11A

through 13 are illustrated as ballet or yoga type footwear, the described structures and

techniques may be used to provide upper members or portions thereof for a wide variety of

different footwear products…” (Emphases added.) The patent further teaches that “[f]lat

knitting allows production of textile structures (e.g. for use in footwear uppers) of a final desired

shape such that textile cutting steps can be avoided. Flat knitted elements also can be formed

directly in desired three dimensional shapes…” (Emphases added.)

71. As stated in the 80 year old U.S. Patent No. 2,330,199 (Exhibit M), a functional

upper knitted portion without uncomfortable seams is also contemplated as functional: “If

desired, for ease in construction and comfortable fit, it may be desirable to knit the upper part

of the foot portion of the bootee providing a seam in the front corners extending part way down

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from the edge band in the direction of the front tip of the toe; and from there on down to the sole

the knitting courses may be extended continuously around the whole bootee without any front

corner seams.” (Emphases added.)

ii. Functionality of a Rounded Toe and Pointed Vamp.
72. Rothy’s design patents seek to protect the basic shape of a ballet flat. Since a

women’s dress flat is designed to fit a foot and by its nature is designed to fit a foot closely, the

basic shape of a ballet flat is meant to tightly fit around a foot and is therefore not created for

ornamentation. Regardless of whether the toe box is rounded or pointed or the vamp is rounded

or pointed, the overall design of Rothy’s design patents are functional elements of a shoe design

that are closely related to the need for shoes to comfortably fit the human foot both statically and

with movement.

73. Rothy’s design patents claim a slightly rounded toe instead of a pointed toe. It is

a fundamental principal of shoe design and manufacturing, dating back to a classic 1902 book

entitled The Manufacture of Boots and Shoes,14 that knowledge of the anatomy and construction

of the human foot is essential to the production of footwear (page 2), that it is important for

shoes to fit the shape of the foot (multiple mentions throughout the book), that the shape of

footwear relates not only to comfort but also to foot health (page 2 and throughout), and that “the

foot may be malformed” through improperly shaped footwear such as shoes with a pointed toe-

box” (as illustrated below) (page 2).

14
F.Y. Golding, The Manufacture of Boots and Shoes: Being a Modern Treatise Of All the
Processes of Making and Manufacturing Footgear, Chapman & Hall, London, 328 pages, 1902.

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74. One of the most commonly cited issues relating to shoe shape relates to the shape

of the toe box. It is widely recognized that a pointed toe – while often considered fashionable

and attractive – can have many negative health effects including cramping of the toes, foot

deformities, forefoot lesions, and joint deformities.15 Ill-fitting footwear including pointed toed

shoes can increase forefoot plantar pressure, which has been associated with metatarsalgia, callus

formation and increased risk of ulceration under the metatarsal heads, and pain.16 Accordingly, a

rounded toe is an obvious design variation which is entirely non-ornamental, and functional in

nature. Specifically, a rounded-toe conforms with the natural shape of a human foot, and

therefore inherently improves the health and comfort of the consumer, thereby having medical

benefits.

75. A recent study examined the health effects of differing toe shapes of “everyday

flat shoes” and demonstrated that rounded toe shoes produced less pressure around the medial

aspect of the toes. https://www.ncbi.nlm.nih.gov/pmc/articles/PMC3737013/#B21. The authors

concluded that “the changes observed could be significant in the development of pathology in

certain footwear toe box shapes.” Id.

15
www.ncbi.nlm.nih.gov/pubmed/19497557
16
www.ncbi.nlm.nih.gov/pmc/articles/PMC3737013/#B21

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76. A pointed vamp is another functional element of women’s dress shoe design. A

pointed vamp is more flexible than a rounded vamp because the V shape of the vamp allows the

upper to maximally stretch laterally near the widest point of the foot. Pointed or V-shaped

vamps also cover more of the sides of the metatarsal area of the toes, providing more support and

stability.

77. A pointed vamp is particularly advantageous over a rounded vamp for women

who have a soft tissue and/or bone deformity at the first metatarsal phalangeal joint, otherwise

known as a bunion, because, as above, a pointed vamp compared to a rounded vamp covers and

supports more of the side of the first metatarsal head and metatarsal phalangeal joint. A ballet

flat with a rounded toe and pointed vamp marketed toward women with bunions since 2016 by

Calla Shoes has been positively reviewed, showing medical functionality.17

78. A pointed vamp in combination with a rounded toe has other medical and

aesthetic functionality including, but not limited to: (1) minimizing pressure across the

metatarsal heads, reducing the development of metatarsalgia and Morton’s neuroma, (2)

providing more comfort for people with a wide forefoot and/or high arches,18 and (3) it is

considered to be a desirable feature in a shoe because it is has the visual effect of lengthening the

leg of the wearer.19,20 In sum, the combination of these elements produce primarily functional

advantages that are not protectable by a design patent.

17
https://www.callashoes.co.uk/blog/shoe-style/best-ballet-flats-bunions
18
https://www.russianpointe.com/perfect-fit/finding-your-perfect-fit/vamp-lengths-and-shapes/
19
http://www.leahfeldon.com/tips.html
20
Fall/winter 2003 Style guru, LEAH FELDON author of DOES THIS MAKE ME LOOK
FAT?! (Villard/Random House 2002).

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iii. Functionality of Ankle Band/Heel Structure.

79. Rothy’s design patents also feature an ankle band/heel structure, pictured below

from figures 1 from (A) Patents D768,366 and D805,276, (B) Patent D804,156, and (C)

D831,325:

A. From Figure 1 of B. From Figure 1 of C. From Figure 1 of D831,325
D768,366 and D805,276 D804,156

80. The ankle band/heel structure is a well-known, prior art-based functional way to

bind together a shoe, including a functional way to avoid using seams towards the front of the

shoe, so that the shoe can be seamless at the heel. In fact, several utility patents have been filed

and/or granted for ankle band/heel structures.

81. For example, U.S. Patent No. 4,785,558 (Exhibit H), as exemplified in Figure 1

posted directly below, teaches basic knitting of a shoe upper with interknitted outer and inner

knit layers, including an ankle band/heel structure (designated as “3” in the figure below):

82. U.S. Patent No. 9,771,673 (Exhibit N) refers to a machine knitted shoe upper

where the ankle portion is functionally holding the shoe together. For example, in relation to

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portion “3H,” the patent states, “The shoe upper 1 of the first embodiment is three-dimensionally

knitted in a seamless manner because a heel cover portion 3H extending from an upper end to a

lower end of the instep cover section 3 is formed at a position corresponding to a region from an

Achilles tendon to the heel of the wearer in the instep cover section 3 of the shoe upper 1.”

83. U.S. Patent No. 9,549,591 (Exhibit O) teaches knitting on a flat knitting machine

to create a 3D knitted shoe upper that first knits the heel piece (section 10) shown below and the

body separately in rows, and knits across the two sections in the perpendicular (wales) direction,

creating a 3D upper with apparent seams at the ankle. A similar 3D knitted shoe upper structure

can be created by other commonly used 3D knitting techniques21 including knitting between

portions of the heel and body sections in such a way that there is an apparent seam between all

but the top portion of the intersection between the heel and body sections.

21
http://nopr.niscair.res.in/bitstream/123456789/19312/1/IJFTR%2019%283%29%20189-
194.pdf

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84. These known, functional technologies date back 70-80 years. For example, U.S.

Patent Nos. 2,447,590 (Exhibit P) and 2,001,293 (Exhibit Q) show preferable shapes of knitted

heel pieces such that the seam would conveniently lie at the edges of a standard “heel counter”

stiffening insert such as is taught in U.S. Patent No. 2,447,590:

iv. Functionality of a Band Around the Top of the Shoe Opening.

85. U.S. Patent No. 2,330,199 (Exhibit M), dating back to the 1930s, teaches the

functionality of a band with elasticity around the top of a knitted sock, functionally identical to

the band around the Rothy’s shoe opening to make the product more elastic to facilitate a

comfortable snug fit.

v. The Overall Design and Combination of Elements Claimed in
Rothy’s Design Patents Create Functional Advantages that are Not
Protectable by a Design Patent.

86. At bottom, the combination of claims in Rothy’s design patents create overall

functional advantages for a ballet shoe when the design is viewed in its entirety. They do not

serve source ornamental purposes. If these primarily functional elements are removed from the

design patent protection, Rothy’s is left with nothing to enforce. On this basis alone, Rothy’s

design patents are invalid.

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IV. Rothy’s Alleged Trade Dress

87. Rothy’s also seeks to protect in its “The Flat” an unregistered trade dress

comprised of a “signature round toe, distinctive pointed vamp, seamless 3D knitted upper, slim

profile and sleek outsole.”

88. As explained herein, “The Flat” is a generic ballet flat. The overall design of

“The Flat” is not distinguishable from previously-existing and currently-existing designs. The

rounded toe, pointed vamp, slim profile and sleek outsole are all commonplace ballet flat

designs. Any visual distinctions “The Flat” has outside of its generic design is a function of, or

is part and parcel of, the industry standard knitting method used to make the shoe.

A. Rothy’s Alleged Trade Dress is Functional
89. Rothy’s claimed trade dress, in combination as a whole, describes the functional

result of using an industry-standard seamless knitting process to manufacture an established

women’s dress flat design that has been in the marketplace for decades. Accordingly, the

seamless 3D knitted upper is functional and part and parcel of the overall functionality of the

shoe design and appearance as a whole. All of the elements of the trade dress asserted by

Rothy’s are functional. Moreover, these functional elements work in combination to make the

trade dress overall entirely functional.

90. The overall design of Rothy’s alleged trade dress in its “The Flat,” including the

specific elements described, are functional for the same reasons Rothy’s Design Patents are

invalid for being primarily functional.

91. While each of the elements described in Rothy’s alleged trade dress are functional

in their own right, they are especially functional in assemblage. The combination of these

elements creates a design that is essential to the use and purpose of “The Flat” shoe and therefore

is unprotected by the Lanham Act.

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92. Additionally, the combination of these elements are the reason “The Flat”

functions as a shoe, and therefore directly affects the cost and quality of the shoe.

93. And allowing Rothy’s exclusivity would give them an effective monopoly over

machine knitting an established functional shoe design, thereby significantly hindering

competition.

94. Much of the recognition that Rothy’s provides in support of its Complaint

documents Rothy’s trade dress carrying “functional benefits” like versatility, sustainability, less

waste due to the machine knitting manufacturing process, ability to recycle bottles, machine

washability, breathability, and comfort. Each of these characteristics is functional.

95. The features Rothy’s claims as their trade dress are necessary to the functionality

of the Flat, because each one contributes, alone and especially in combination, to functional

benefits of the Flat and therefore renders the overall purported trade dress taken as a whole

primarily functional. The rounded toe is for proper alignment and comfort of the toes. The

pointed vamp is more flexible than a rounded vamp because the V shape of the vamp allows the

upper to maximally stretch laterally near the widest point of the foot, providing support and

stability. The seamless knitted upper allows for flexibility, which aids in comfort, especially for

women with bunions, as well as stability, support, and breathability. The slim profile hugs the

woman’s foot for comfort and aids in the medical and practical purposes of the shoe as stated

above. And the sleek outsole provides for a flat sole without excessive arch support, medial or

lateral stabilizers, or a medial to lateral curvature of the sole. All these elements are critical to

the functionality of the Flat as a whole, making the overall purported trade dress primarily

functional.

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96. One cannot make the “seamless 3D knitted upper,” the seamless nature of which

makes the purportedly distinctive pointed vamp (with no seams) and slim profile (with no

seams), without a machine knitting process, making the underlying functional process part and

parcel of the overall shoe design, which render the seamless 3D knitted upper and overall shoe

design inherently functional. The pointed vamp is considerably more difficult to manufacture

than a rounded vamp with traditional shoe manufacturing techniques and is even more difficult

to make seamlessly, without knitting or crochet. In fact, a pointed vamp is easier and more cost-

effective to knit than a rounded vamp.

B. No Likelihood of Confusion and Therefore No Trade Dress Infringement

97. Rothy’s claimed alleged trade dress is not distinctive as already described.

98. The “Healthy by Design” features of the accused The Dream Flat shoe product

give it an appearance that is very different from Rothy’s “The Flat” as a whole. These features

include, but are not limited to:

(a) The thick, uniform, unadorned outsole (as opposed to “The Flat’s” thinner

wedge sole with ornamental beveling on the outsole and heel elevation);

(b) The Dream Flat’s very spacious forefoot and toe area with an

asymmetrical, foot-shaped toe box (as opposed to “The Flat’s” more commonplace rounded toe

shape) and an asymmetric pointed vamp (as opposed to “The Flat’s more commonplace pointed

vamp with a perfectly symmetric “V” with equal lengths on each side of the “V”);

(c) The Dream Flat’s lack of large heel structure (as opposed to the “The

Flat,” which has no seam at the heel and an entire heel structure holding the shoe together);

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(d) The Dream Flat’s prominently branded vertical seam on the heel (as

opposed to “The Flat’s” seamless rear heel structure and colored horizontal strip on top of the

heel structure); and

(e) The long, indented treads of the shoe sole (as opposed to “The Flat’s” two

portion heel with curly Q shapes).

Furthermore, the shoes are easily distinguished by prominent branding on the insole and outsole,

and on the heel seam (in the case of The Dream Flat). These stark differences between “The

Flat” (on the left) and The Dream Flat (on the right) are shown in the pictorial side-by-side

comparison below.

Rothy’s “The Flat” JKM’s “The Dream Flat”

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99. JKM advertises the Dream Flat as being “Healthy by Design” which is different

than Rothy’s advertising of “The Flat” that focuses on being made from recycled water bottles.

100. JKM boldly includes its tradename and logo which differentiates it from Rothy’s

shoe.

101. JKM did not copy Rothy’s design nor its alleged trade dress.

102. Upon information and belief, Rothy’s knew about OESH Shoes prior to sending

the cease and desist letter to JKM and purposely caused confusion in the marketplace using

metadata tags or paid search terms to direct consumers who searched for “OESH” to Rothy’s

website. Accordingly, any purported confusion was caused by Rothy’s intentional acts.

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C. Rothy’s “The Flat” Is Not Inherently Distinctive Nor Has It Acquired
Secondary Meaning.

103. As explained, Rothy’s “The Flat” is not distinctive.

104. As but one example of the lack of distinctiveness is a machine knitted ballet flat

from Propet called the TravelFit Flex shown below that has been sold on Amazon since June 27,

2017.

Propet “TravelFit Flex”

June 27, 2017

105. The alleged trade dress in Rothy’s “The Flat” has not attained secondary meaning

and furthermore is not likely to ever achieve secondary meaning because of the dense

marketplace of ballet flat designs that have the same overall appearance that Rothy’s claims is its

trade dress. Some examples of other ballet flats in the market with an overall appearance that is

the same or very similar to what Rothy’s claims as its trade dress, are included below and in

more detail in Exhibit R.

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COUNT I
(Declaration of Invalidity of the D768,366, D804,156, D805,276, D831,325, D833,729, and
D836,314 Design Patents)

106. JKM and Dr. Kerrigan repeat and re-allege the foregoing paragraphs of this

Counterclaim as though fully set forth herein.

107. Rothy’s purports to own the D768,366, D804,156, D805,276, D831,325,

D833,729, and D836,314 Design Patents.

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108. The D768,366, D804,156, D805,276, D831,325, D833,729, and D836,314 Design

Patents are primarily functional and not primarily ornamental, because at least the rounded toe

and pointed vamp are functional in nature, the heel structure is functional in nature, and the

overall knitted design is functional in nature, rendering the overall design(s) as a whole as

depicted in the patents functional.

109. Rothy’s contends that the D768,366, D804,156, D805,276, D831,325, D833,729,

and D836,314 Design Patents are valid and has created a substantial, immediate and real

controversy between the parties as to invalidity of the D768,366, D804,156, D805,276,

D831,325, D833,729, and D836,314 Design Patents.

110. Each and every claim of the D768,366, D804,156, D805,276, D831,325,

D833,729, and D836,314 Design Patents are invalid for failing to satisfy one or more of the

conditions for patentability specified in Title 35 of the United States Code, including without

limitation, §§ 101, 102, 103, 112, and/or 171. One or more of Rothy’s Design Patents are also

invalid under the doctrine of double patenting. Accordingly, Rothy’s is entitled to no relief for

any claim(s) of the D768,366, D804,156, D805,276, D831,325, D833,729, or D836,314 Design

Patents.

111. JKM and Dr. Kerrigan are, and will continue to be, injured by the continued

alleged validity of the design patents, at least because it prevents JKM from being able to use its

the Dream Flat without being subjected to Rothy’s meritless claims in this suit.

COUNT II
(Declaration of Non-Infringement of the D768,366, D804,156, D805,276, D831,325,
D833,729, and/or D836,314 Design Patents)

112. JKM and Dr. Kerrigan repeat and re-allege the foregoing paragraphs of this

Counterclaim as though fully set forth herein.

{2383935-1, 106065-00002-03} 40

Case 3:18-cv-00067-MFU-JCH Document 49 Filed 01/28/19 Page 57 of 63 Pageid#: 528
113. Rothy’s claims to be the owner and assignee of all rights, title and interest in and

under the D768,366, D804,156, D805,276, D831,325, D833,729, or D836,314 Design Patents.

114. Rothy’s has accused JKM and Dr. Kerrigan of infringement of the D768,366,

D804,156, D805,276, D831,325, D833,729, or D836,314 Design Patents and has created a

substantial, immediate and real controversy between the parties as to non-infringement of the

D768,366, D804,156, and/or D805,276, D831,325, D833,729, or D836,314 Design Patents.

115. JKM and Dr. Kerrigan do not infringe and have not infringed, either directly or

indirectly, or literally or under the doctrine of equivalents, the D768,366, D804,156, D805,276,

D831,325, D833,729, and/or D836,314 Design Patents, through their manufacturing/making,

using, selling, and/or offering for sale in the United States, and/or importing into the United

States, of The Dream Flat Accused Product.

COUNT III
(Declaration of Invalidity of the Alleged Trade Dress)

116. JKM and Dr. Kerrigan repeat and re-allege the foregoing paragraphs of this

Counterclaim as though fully set forth herein.

117. Rothy’s accuses JKM and Dr. Kerrigan of infringing on “The Flat’s” unregistered

trade dress, thereby creating a substantial, immediate and real controversy between the parties as

to the invalidity of the alleged trade dress.

118. The overall design of the trade dress alleged by Rothy’s is functional.

119. The features of Rothy’s alleged trade dress are common to other ballet shoe

products. Consequently, the overall design of Rothy’s alleged trade dress is not distinctive or

unique.

120. Upon information and belief, consumers are not aware of the alleged trade dress

in Rothy’s shoes and do not identify the alleged trade dress as an indicator of source. As a result,

{2383935-1, 106065-00002-03} 41

Case 3:18-cv-00067-MFU-JCH Document 49 Filed 01/28/19 Page 58 of 63 Pageid#: 529
the alleged trade dress is non-distinctive and lacks secondary meaning, and thus fails to meet the

requirements of registration or otherwise under 15 U.S.C. § 1052(e)(5).

121. JKM and Dr. Kerrigan have been, and continue to be injured by the present

litigation surrounding the alleged trade dress, at least because it prevents JKM from being able to

promote and sell The Dream Flat without being subject to the claims in Rothy’s Complaint.

122. JKM and Dr. Kerrigan are entitled to a declaration that they are not liable to

Rothy’s on account of a violation of any alleged trade dress infringement, because the alleged

trade dress is invalid.

COUNT IV
(Declaration of Non-Infringement of the Alleged Trade Dress)

123. JKM and Dr. Kerrigan repeat and re-allege the foregoing paragraphs of this

Counterclaim as though fully set forth herein.

124. Rothy’s has accused JKM’s The Dream Flat shoe of infringing its unregistered

“The Flat” shoe trade dress, and has created a substantial, immediate and real controversy

between the parties as to JKM’s and Dr. Kerrigan’s non-infringement of the alleged trade dress.

125. The trade dress alleged by Rothy’s is functional overall and as a whole and/or

constitutes functional features, and the features of the trade dress are common to consumer shoe

products, are generic, and otherwise not distinctive or protectable.

126. Upon information and belief, consumers are not aware of the alleged trade dress

in Rothy’s shoes and do not identify the alleged trade dress as an indicator of source. As a result,

the alleged trade dress is non-distinctive and lacks secondary meaning, and thus fails to meet the

requirements of registration or otherwise under 15 U.S.C. § 1052(e)(5).

{2383935-1, 106065-00002-03} 42

Case 3:18-cv-00067-MFU-JCH Document 49 Filed 01/28/19 Page 59 of 63 Pageid#: 530
127. The appearance of JKMs’ The Dream Flat is not likely to cause confusion,

mistake, or to deceive consumers as to the affiliation, connection, or association of The Dream

Flat with Rothy’s.

128. Rothy’s has not been harmed by or suffered any cognizable injury from any

alleged conduct by JKM or Dr. Kerrigan.

129. JKM and Dr. Kerrigan have been, and continue to be injured by the present

litigation because it prevents JKM from being able to use The Dream Flat without being subject

to the claims in Rothy’s Complaint.

130. JKM and Dr. Kerrigan are entitled to a declaration that they are not liable to

Rothy’s on account of a violation of any alleged trade dress infringement.

COUNT V
(Declaration of No Federal Unfair Competition or False Designation of Origin Under 15
U.S.C. § 1125(a))

131. JKM and Dr. Kerrigan repeat and re-allege the foregoing paragraphs of this

Counterclaim as though fully set forth herein.

132. Rothy’s has accused JKM and Dr. Kerrigan of violating Section 43(a) of the

Lanham Act, 15 U.S.C. § 1125(a) and has created a substantial, immediate and real controversy

between the parties as to the absence of any unfair competition or any false designation of origin

by JKM and/or Dr. Kerrigan through their actions and/or The Dream Flat.

133. Rothy’s claimed trade dress is functional, is common to consumer shoe products

(e.g., the ballet flat style of shoe), is generic, and otherwise is not distinctive or protectable.

134. The appearance of JKM’s The Dream Flat is not likely to cause confusion, cause

mistake, or deceive consumers as to the affiliation, connection, or association of JKM’s The

{2383935-1, 106065-00002-03} 43

Case 3:18-cv-00067-MFU-JCH Document 49 Filed 01/28/19 Page 60 of 63 Pageid#: 531
Dream Flat, or as to the origin, sponsorship, or approval by Rothy’s of JKM’s goods, services, or

commercial activities.

PRAYER FOR RELIEF

WHEREFORE, JKM and Dr. Kerrigan respectfully request entry of judgment as follows:

A. That the Court dismiss with prejudice any and all claims of Rothy’s Complaint

and order that Rothy’s take nothing as a result of the Complaint and that all of Rothy’s prayers

for relief be denied;

B. That the Court declare that Rothy’s D768,366, D804,156, D805,276, D831,325,

D833,729, and D836,314 Design Patents are invalid;

C. That the Court declare that JKM and Dr. Kerrigan have not infringed any of the

D768,366, D804,156, D805,276, D831,325, D833,729, or D836,314 Design Patents;

D. That the Court declare that any alleged trade dress asserted by Rothy’s in its

Complaint is invalid;

E. That the Court declare that JKM and Dr. Kerrigan have not infringed any alleged

trade dress asserted by Rothy’s in its Complaint;

F. That the Court declare that JKM and Dr. Kerrigan have not engaged in any unfair

competition or federal false designation of origin under 15 U.S.C. § 1125(a);

G. That the Court award JKM and Dr. Kerrigan’s attorney’s fees and costs of suit as

an exceptional case;

H. That Rothy’s be ordered to pay all costs associated with this action; and

I. That the Court grant to JKM and Dr. Kerrigan such other and further relief as may

be deemed just and appropriate.

{2383935-1, 106065-00002-03} 44

Case 3:18-cv-00067-MFU-JCH Document 49 Filed 01/28/19 Page 61 of 63 Pageid#: 532
DEMAND FOR JURY TRIAL

JKM and Dr. Kerrigan hereby demand a jury trial on all issues so triable.

JKM TECHOLOGIES, LLC and DR. CASEY KERRIGAN

By: /Nathan A. Evans/

Nathan A. Evans (VSB No. 46840)
WOODS ROGERS PLC
123 East Main St.
Fifth Floor
Charlottesville, VA 22902
Phone: 434-220-6829
Fax: 540-983-7711
nevans@woodsrogers.com

Francis H. Casola (VSB No. 29108)
Charles J. Dickenson (VSB No. 92889)
WOODS ROGERS PLC
10 S. Jefferson Street, Suite 1400
Roanoke, VA 24011
casola@woodsrogers.com
cdickens@woodsrogers.com

Counsel for Defendants JKM Technologies, LLC and Dr. Casey Kerrigan

{2383935-1, 106065-00002-03} 45

Case 3:18-cv-00067-MFU-JCH Document 49 Filed 01/28/19 Page 62 of 63 Pageid#: 533
CERTIFICATE OF SERVICE

The undersigned certifies that a true and correct copy of the foregoing was sent via
CM/ECF this 28th day of January, 2019, to the following participants:

Dana J. Finberg (VSB No. 34977)
Arent Fox LLP
55 Second Street, 21st Floor
San Francisco, CA 94105
(415)757-5897
Dana.finberg@arentfox.com

Michelle Mancino Marsh (Pro Hac Vice)
Paul C. Maier (Pro Hac Vice)
Arent Fox LLP
1301 Avenue of the Americas, 42nd Floor
New York, NY 10019
(212)484-3900
Michelle.marsh@arentfox.com
Paul.maier@arentfox.com

Brian J. Stevens (Pro Hac Vice)
Arent Fox LLP
1717 K. Street, NW
Washington, DC 20006-5344
(202)857-6000
Brian.stevens@arentfox.com

/Nathan A. Evans/

{2383935-1, 106065-00002-03} 46

Case 3:18-cv-00067-MFU-JCH Document 49 Filed 01/28/19 Page 63 of 63 Pageid#: 534
EXHIBIT A

Case 3:18-cv-00067-MFU-JCH Document 49-1 Filed 01/28/19 Page 1 of 5 Pageid#: 535
Arent Fox LLP / Attorneys at Law
Los Angeles, CA / New York, NY / San Francisco, CA / Washington, DC
www.arentfox.com

July 17, 2018 Michelle Mancino Marsh
Partner
212.484.3977 DIRECT
212.484.3990 FAX
Via FedEx and Email michelle.marsh@arentfox.com

OESH Shoes Reference Number
Attn: Dr. Casey Kerrigan 037201.00106
705 Dale Avenue, Suite E
Charlottesville, VA 22903-5273
dckerrigan@oeshshoes.com

Re: @`Xd[`YW_W`f aX HafZkpe' Inc. Intellectual Property Rights

Dear Dr. Kerrigan:

Fgd X[d_ [e [`fW^^WUfgS^ bdabWdfk Uag`eW^ fa HafZkpe' @`U) %nHafZkpeo&) HafZkpe [e S
footwear company based in San Francisco that has gained what Business Insider describes as a
ndShW`age Xa^^ai[`Yo Xad [fe g`[cgW' `ahW^' egefS[`ST^W' Ua_XadfST^W' S`V efk^[eZ eZaWe) HafZkpe
footwear is elegantly designed and seamlessly manufactured from recycled bottles using a 3D
]`[ff[`Y bdaUWee fZSf e[Y`[X[US`f^k dWVgUWe iSefW) HafZkpe ZSe dWbgdbaeWV _adW fZS` ,2 million
plastic bottles since its founding.

HafZkpe ai`e hS^gST^W [`fW^^WUfgS^ bdabWdfk [` [fe bdabd[WfSdk VWe[Y`e' [`U^gV[`Y i[fZagf
^[_[fSf[a` nJZW =^Sf'o nJZW Ga[`f'o S`V nJZW CaSXWd)o HafZkpe ai`e bSfW`f' fdSVW_Sd]' fdSVW
dress, and copyright rights in its designs throughout the world, as well as pending patent
Sbb^[USf[a`e) HafZkpe [`fW^^WUfgS^ bdabWdfk d[YZfe SdW bSdf[S^^k Wh[VW`UWV Tk K`[fWV IfSfWe ;We[Y`
GSfW`fe Eae) ;213'.11' ;3+/',01' S`V ;3+0'-21 %fZW nHafZkpe GSfW`feo&' S^a`Y i[fZ `g_Wdage
other design patents and trademark registrations worldwide, including Chinese Design Patent
Ea) PC -+,0.+,1-0/4)1) HafZkpe d[YZfe [` fZW HafZkpe GSfW`fe VSfW TSU] fa Se WSd^k Se -+,/)

8YS[`ef fZ[e TSU]Ydag`V' [f ZSe dWUW`f^k Ua_W fa HafZkpe SffW`f[a` fZSf kag SdW _aking
g`SgfZad[lWV geW aX HafZkpe intellectual property in connection with your soon-to-be-launched
eZaW' JZW ;dWS_ =^Sf Tk F<I? %fZW n@`Xd[`Y[`Y GdaVgUfo&) MZ[^W fZW @`Xd[`Y[`Y GdaVgUf [e
fagfWV a` kagd iWTe[fW Se ]`[f XaafiWSd i[fZ nS g`[cgW efdWfUZk eaUk-like knit upper [that] gently
ZgYe kagd Xaaf S^^ai[`Y Xg^^' SUf[hW _ahW_W`f'o fZW @`Xd[`Y[`Y GdaVgUf [e S U^WSd [`Xd[`YW_W`f aX
HafZkpe intellectual property' [`U^gV[`Y i[fZagf ^[_[fSf[a` fZW HafZkpe GSfW`fe' Se [e eW^X-evident
from the figures below:

555 West Fifth Street, 48th Floor 1301 Avenue of the Americas, 42nd Floor 55 Second Street, 21st Floor 1717 K Street, NW
Los Angeles, CA 90013-1065 New York, NY 10019-6040 San Francisco, CA 94105-3470 Washington, DC 20006-5344
T 213.629.7400 F 213.629.7401 T 212.484.3900 F 212.484.3990 T 415.757.5500 F 415.757.5501 T 202.857.6000 F 202.857.6395

Case 3:18-cv-00067-MFU-JCH Document 49-1 Filed 01/28/19 Page 2 of 5 Pageid#: 536
OESH Shoes
July 17, 2018
Page 3

The Infringing Product is an undeniable [`Xd[`YW_W`f aX HafZkpe intellectual property,
[`U^gV[`Y i[fZagf ^[_[fSf[a` fZW HafZkpe GSfW`fe S`V fdSVW VdWee d[YZfe [` HafZkpe nJZW =^Sf,o our
U^[W`fpe e[Y`SfgdW dag`V faW X^Sf i[fZ [fe distinctive pointed vamp, seamless 3D knitted upper,
slim profile, and sleek outsole. An ordinary observer would be deceived into believing that the
@`Xd[`Y[`Y GdaVgUf [e fZW eS_W Se HafZkpe bSfW`fWV JZW =^Sf VWe[Y`) DadWahWd' kagd g`SgfZad[lWV
geW aX HafZkpe [`fW^^WUfgS^ bdabWdfk [` Ua``WUf[a` i[fZ fZW @`Xd[`Y[`Y GdaVgUf [e WjfdW_W^k ^[]W^k
to cause confusion among consumers given that it is used in connection with identical goods,
namely footwear. Rothyps is very concerned that consumers are likely to believe the Infringing
GdaVgUf fa TW SXX[^[SfWV i[fZ S`V*ad W`VadeWV Tk HafZkpe Y[hW` kagd g`SgfZad[lWV geW aX HafZkps
intellectual property in The Flat.

The Infringing Product is `af a`^k S` [`Xd[`YW_W`f aX HafZkpe [`fW^^WUfgS^ bdabWdfk d[YZfe'
but may also be construed as a bad faith attempt to trade on the hard-earned reputation and
YaaVi[^^ VWhW^abWV fZdagYZ HafZkpe use of The Flat intellectual property since at least as early
Se -+,/) @`Xd[`YW_W`f aX HafZkpe intellectual property constitutes, inter alia, federal patent
infringement under Section 271 of Title 35 the United States Code (35 U.S.C. § 271 et seq.),
federal trademark and trade dress infringement under Sections 32 and 43(a) of the Lanham Act
(15 U.S.C. §§ 1114 and 1125(a)), and dilution under Section 43(c) of the Lanham Act (15 U.S.C.
§ 1125(c)), as well as common law trademark, trade dress, and copyright infringement, dilution,
S`V _[eSbbdabd[Sf[a`) Oag _Sk TW ^[ST^W Xad _a`WfSdk VS_SYWe S`V Sffad`Wkep XWWe' [` SVV[f[a`
to damages and injunctive relief, due to the willful nature of your infringement.

HafZkpe i[^^ `af fa^WdSfW kagd h[a^Sf[a` aX [fe [`fW^^WUfual property rights. Accordingly, we
demand that you immediately take the following remedial actions: (1) permanently cease any
and all use of The Flat intellectual property in connection with the Infringing Product;
(2) discontinue and return funds from your IndieGogo campaign to wrongfully raise money to
Xg`V kagd g`SgfZad[lWV [`Xd[`YW_W`f aX HafZkpe [`fW^^WUfgS^ bdabWdfk' ihich to date has raised
over $50,000 USD; and (3) cease and desist from any and all other conduct that is likely to
[`Xd[`YW HafZkpe intellectual property, or create the impression that your goods and services are
[` S`k iSk eba`eadWV' SgfZad[lWV Tk' ad afZWdi[eW SeeaU[SfWV ad SXX[^[SfWV i[fZ HafZkpe S`V [fe
goods and services.

=S[^gdW fa bdah[VW S eSf[eXSUfadk dWeba`eW fa HafZkpe VW_Snds within 10 days of the date
of this letter will force our client to consider and pursue all available claims and remedies,
[`U^gV[`Y i[fZagf ^[_[fSf[a` ^[f[YSf[a` [` XWVWdS^ V[efd[Uf Uagdf) MW fdgef kag g`VWdefS`V HafZkpe
obligation to protect its valuaT^W [`fW^^WUfgS^ bdabWdfk' S`V ZabW fZSf kag eZSdW agd U^[W`fpe VWe[dW
to resolve this matter promptly and amicably. Should you wish to discuss this matter further,
please do not hesitate to contact me. Thank you.

Case 3:18-cv-00067-MFU-JCH Document 49-1 Filed 01/28/19 Page 4 of 5 Pageid#: 538
OESH Shoes
July 17, 2018
Page 4

JZW XadWYa[`Y [e i[fZagf bdW\gV[UW fa fZW d[YZfe S`V dW_WV[We ShS[^ST^W fa HafZkpe [`
connection with this matter, any and all of which are hereby expressly reserved.

Very truly yours,

Michelle Mancino Marsh

Cc: Ms. Sangeetha Raghunathan, General Counsel, Indiegogo
Mr. Jules Maltz, Board Member, Indiegogo
HafZkpe' @`U)
Paul C. Maier, Esq.
Natasha Sardesai-Grant, Esq.

Case 3:18-cv-00067-MFU-JCH Document 49-1 Filed 01/28/19 Page 5 of 5 Pageid#: 539
EXHIBIT B

Case 3:18-cv-00067-MFU-JCH Document 49-2 Filed 01/28/19 Page 1 of 30 Pageid#: 540
Vance Intellectual Property, PC w/m 434-531-5976
P.O. Box 1224 f 208-979-0707
Crozet, VA 22932-1224 David@VanceIP.biz
WITHOUT PREJUDICE; SUBJECT TO RULE 408

1 August 2018

VIA E-MAIL

Michelle Mancino Marsh, Esq.
1301 Avenue of the Americas, 42nd Floor
New York, NY 10019-6040
michelle.marsh@arentfox.com

Re: Response to 17 July 2018 Rothy’s Letter

Dear Michelle:

Herein is our response to your 17 July 2018 email to which was attached your “Infringement of
Rothy’s, Inc. Intellectual Property Rights” letter. We also are in receipt of the original of this
letter, which was delivered to OESH Shoes by Federal Express on 18 July 2018.

Overall, we are surprised by your allegations of infringement of Rothy’s intellectual property
because both the appearance of the OESH Dream Flat (the Dream) shown in multiple views in
the campaign video, pictures, and gifs, and the entire Dream marketing message and campaign
are very distinct from Rothy’s intellectual property. Ballet flats, because of their simple, classic
design, by nature look similar so certainly it is possible to find images that share similarities
between one company’s ballet flat and another. But we do not believe that we have in any way
infringed on your clients intellectual property rights.

To be clear, Dr. Kerrigan and OESH Shoes did not design the Dream based on your client’s
intellectual property. Instead, the Dream was specifically designed to be distinct from “slim,”
“sleek” fashion-based ballet flats currently on the market. Based on 20 years of Dr. Kerrigan’s
peer-reviewed published research, the Dream design includes substantive differences from

Case 3:18-cv-00067-MFU-JCH Document 49-2 Filed 01/28/19 Page 2 of 30 Pageid#: 541
Vance Intellectual Property, PC w/m 434-531-5976
P.O. Box 1224 f 208-979-0707
Crozet, VA 22932-1224 David@VanceIP.biz
WITHOUT PREJUDICE; SUBJECT TO RULE 408

Rothy’s and other similar ballet flats including but not limited to a distinctive anatomically
shaped wide forefoot and toe-box and a relatively thick, unadorned outsole that does not taper at
the forefoot, giving it anything but a “slim” and “sleek” appearance. The “unique stretchy sock-
like knit upper that gently hugs your foot allowing full, active movement” is just that – it is very
stretchy and adapts like a sock to the anatomical shape and movement of the foot, which from
our understanding, is quite different from Rothy’s knit upper made from recycled plastic bottles.
There certainly has been no intent to deceive anyone into thinking the Dream is associated with
Rothy’s or any other shoe brand; to the contrary, Dr. Kerrigan’s entire marketing campaign is
focused on how her shoes are different from and healthier than other brands of footwear.

Our marketing message is being healthy by design based on Dr. Kerrigan’s published research
showing, for example, that many women’s dress shoes increase the impact at the knee associated
with the development and progression of knee osteoarthritis. OESH has been making footwear
for women since 2011 that relies upon a unique healthy footwear design and profile (i.e., a
functional design), which is very distinct from Rothy’s. Many OESH customers are unable to
wear a ballet flat, because the narrow forefoot and toe box typical of ballet flats hurts their feet.
The Dream, which follows the same profile and design features as our prior OESH footwear,
fulfills these functional needs of the typical OESH customer who wishes for the OESH design in
a ballet flat.

Side by Side Comparison with Rothy’s Design Patents D768,366, D804,156, and D805,276

In reviewing your client’s above noted design patents we found them to have a large amount of
required detail such that they are fairly narrow in scope. There are numerous, distinct, and
obvious differences between the three (3) Rothy’s design patents identified in your letter (listed
above) and the Dream outlined in the attached tables (Attachments 1-3) and comparative photos
(Attachment 4). In view of eleven distinctions outlined in Attachments 1-3, an ordinary observer
who compared the Dream with the three design patents would easily and quickly conclude that
the Dream is quite distinct from and does not infringe the flats claimed in these patents.

Rothy’s Trade Dress

We are unsure exactly what trade dress rights Rothy’s is asserting. Your letter appears to indicate
that Rothy’s has trade dress rights in their “round toe flat with its distinctive pointed vamp,
seamless 3D knitted upper, slim profile, and sleek outsole.” But you make no attempt to further
define or clarify these rights. From your client’s website we might guess that a “signature blue
halo” on both the inside and outside upper back of the heel would be asserted as a trade dress
right. The OESH Dream has no such “halo.” Instead, the word “OESH” is prominently displayed
at the back of the heel of the Dream, the bottom of the sole, and on the insole.

Case 3:18-cv-00067-MFU-JCH Document 49-2 Filed 01/28/19 Page 3 of 30 Pageid#: 542
Vance Intellectual Property, PC w/m 434-531-5976
P.O. Box 1224 f 208-979-0707
Crozet, VA 22932-1224 David@VanceIP.biz
WITHOUT PREJUDICE; SUBJECT TO RULE 408

A ballet flat is a classic, basic style of shoe that in order to be functional, has very limited options
for design. Most have a slim profile, an oval or pointed toe box shape, and a thin sole in the
forefoot area that gives the flat a sleek appearance. The Dream is visually distinct from Rothy’s
and other designs in having a broad, anatomically shaped toe box, a functional asymmetric
pointed vamp that follows the lines in the forefoot of all prior OESH footwear since 2011, and a
thick sole in the forefoot, such that even within the extremely narrow design confines of a ballet
flat, it is quite distinct from Rothy’s “round toe flat.”

Our understanding is that trade dress can only be claimed for elements that make the image of a
product distinctive. We have identified many examples of prior art (as well as current art)
showing round toe flats with a pointed vamp, and the descriptors “slim profile” or “sleek
outsole” seem too vague and subjective to be considered distinctive. Moreover, with respect to
knitted uppers, knitting shoe uppers on 3D computer numerical controlled (CNC) knitting
machines is already being used by numerous shoe companies, including OESH, to manufacture
uppers of nearly every shoe style. It has become a necessity to stay competitive in the shoe
industry because of the superior performance and cost-effectiveness of producing an entire shoe
upper in one piece, such that a knitted upper could not be the subject of trade dress. Your client
must understand this since their website refers to its knitting process as being “functional” in that
it reduces waste, facilitates design changes, etc. Meanwhile, we are aware of ballet flats with
CNC knitted uppers already being made by a number of other manufacturers besides Rothy’s.

Finally, in studying the figure you provided at the top of page 2 that includes a picture of a
Rothy’s flat next to our Dream flat, we wonder if your client might think that the circle around
the “10” is an attempt to look like their logo. Rest assured, the circled “10” only represents the
size of that particular shoe and OESH has been using this exact same labeling for all its insoles
since 2011.

For all these reasons we do not believe the Dream in any way infringes on any trade dress rights
your client may legitimately claim. The Dream, its research-based functional design (not fashion
design), and its marketing, as detailed in the Indiegogo campaign and elsewhere, are
substantially different from the shoes claimed in Rothy’s three design patents as well as any
trade dress rights Rothy’s might have in “The Flat.”

Case 3:18-cv-00067-MFU-JCH Document 49-2 Filed 01/28/19 Page 4 of 30 Pageid#: 543
Vance Intellectual Property, PC w/m 434-531-5976
P.O. Box 1224 f 208-979-0707
Crozet, VA 22932-1224 David@VanceIP.biz
WITHOUT PREJUDICE; SUBJECT TO RULE 408

We sincerely hope that after carefully reviewing this letter and the attachments you will agree
that the OESH Dream does not infringe on your client’s intellectual property.

If you have any further questions or concerns, we are open to a phone call to further discuss this
matter.

Sincerely,

/David H Vance/

David H. Vance, Ph.D., J.D.

President, VanceIP

Cc: Ms. Sangeetha Raghunathan, General Counsel, Indiegogo
Mr. Jules Maltz, Board Member, Indiegogo
Paul C. Maier, Esq.
Natasha Sardesai-Grant, Esq.

Case 3:18-cv-00067-MFU-JCH Document 49-2 Filed 01/28/19 Page 5 of 30 Pageid#: 544
Vance Intellectual Property, PC w/m 434-531-5976
P.O. Box 1224 f 208-979-0707
Crozet, VA 22932-1224 David@VanceIP.biz
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Attachment 1

Distinctions Between Rothy’s Patented Designs and OESH’s Dream Design

ROTHY’S DESIGN OESH’S DREAM DESIGN
1) Signature Halo – There is a thin band of The Dream design has nothing resembling
material that is distinct from the adjacent this feature and instead has the same color
material on the back of the shoe, forming a U- along the collar/topline as the color on the
shape along the collar or topline of the shoe. back of the shoe.
This feature is visible in Figures 1, 2, 3, 4, 5,
and 6 of all of Rothy’s patents. The Design
Patent D804,156 makes it clear that this band
is a different color from the adjacent material
of the shoe in Figures 8-13. This band is
referred to in marketing materials as Rothy’s
“signature blue halo.”
2) Ankle Band – There is a prominent band The Dream design has nothing resembling
along the collar or topline of the shoe, just this feature and instead has a continuous
below the halo described above, which curves band that runs along the entire top of the
down on a diagonal to meet the sole below the shoe, no diagonal band along the side of
ankle, which is distinct from the band that the shoe, and nothing that sets the heel
runs along the top of the shoe in the forefoot area apart visually from the rest of the
and toe area, and which serves to set the heel shoe.
area apart visually from the rest of the shoe.
This feature is visible in all the Figures of all
of Rothy’s patents.
3) Beveled Sole - There is a bevel that runs There is no such bevel in the Dream
horizontally along the outsole and that design. Instead OESH’s outsole is
provides an ornamental look to the shoe. This smooth, rectangular, and free of
feature is visible in Figures 1-5 of all of ornamentation.
Rothy’s patents.
4) Heel Elevation – The heel is elevated and the In the Dream design there is no heel
sole is significantly thicker at the back of the elevation and the thickness of the sole is
shoe than it is at the front. This feature is consistent from heel to forefoot.
visible in Figures 1, 4, and 5 of all of Rothy’s
patents.
5) Sleek Sole – The sole is thin in the forefoot The Dream design features a distinctively
area. This feature is visible in Figures 1, 4, thick sole in the forefoot area.
and 5 of all of Rothy’s patents.
6) Ankle Corner – There is a raised collar In the Dream design there is no ankle
across the back of the shoe, with the edge of corner. The top edge of the Dream upper
the collar forming an angle with the topline of is continuous all around the ankle and
the shoe upper on both sides. This feature is heel.

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visible in Figures 1-5 of all of Rothy’s
patents.
7) Toe Box Shape – The toe box has an The Dream’s toe box shape is very
elliptical shape that is similar to that of many different from Rothy’s and distinctive.
other ballet flats. The toe box tapers quickly The toe box tapers very gradually between
between the widest part of the shoe and the the wides part of the shoe and the toe,
toe, and is only slightly asymmetrical in the giving a very round, broad, or even boxy
toe area, with the point of the toe close to the appearance, and the toe box is very
midline. The toe box shape is best seen in asymmetrical in the toe area, with the
Figures 2, 6, and 7 of all of Rothy’s patents. point of the toe close to the medial side of
the shoe.
8) Back Surface – The design includes a The Dream design has two vertical
seamless, unadorned, back surface shown in stitching seams attaching an additional
Figures 3 and 6 of all of Rothy’s patents. piece of material that prominently
displays the brand name “OESH.”
9) Shape of Vamp Edge at Front – In Rothy’s The Dream design has a much more
patented design the vamp edge at the front of obvious and deeper V shape, with much
the shoe has a rounded appearance overall, straighter edges instead of a rounded
with a subtle V shape at the front. The angle appearance. In addition the angle of the V
of the V shape is very wide (obtuse). This is is significantly more acute than that
best seen in Figure 6 of all of Rothy’s patents. depicted in Rothy’s patents.
10) Sole- In Figure 7 of all of Rothy’s patents the In the Dream’s design the sole is
sole is tapered and fairly symmetric in the completely different from Rothy’s. The
forefoot area, and there is a clear distinction sole is substantially wider than Rothy’s in
between the heel and the remainder of the the forefoot and toe area, is much more
sole. asymmetric, and is continuous and flat
without distinction between the heel and
the remainder of the sole.
11) Tread – Rothy’s tread pattern and claimed The Dream’s tread pattern extends beyond
ornamentation in Figure 7 of D804,156 bear the unclaimed broken line areas in
no resemblance to OESH’s. Rothy’s patent and has distinctly different
geometry from Rothy’s claimed
ornamentation.

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Attachment 2

US Design Patent D805,276 (‘276) **

Patent Figure # Distinctions between the figures of ‘276/’366 and the Dream

Figure 1 1) Signature Halo
(see Dream 2) Ankle Band
comparison in 3) Beveled Sole
attached Figure 4) Heel Elevation
1a) 5) Sleek Sole
6) Ankle Corner
Figure 2 1) Signature Halo
(see Dream 2) Ankle Band
comparison in 3) Beveled Sole
attached Figure 6) Ankle Corner
2a) 7) Toe Box Shape
Figure 3 1) Signature Halo
(see Dream 2) Ankle Band
comparison in 3) Beveled Sole
attached Figure 6) Ankle Corner
3a) 8) Back Surface
Figure 4 1) Signature Halo
(see Dream 2) Ankle Band
comparison in 3) Beveled Sole
attached Figure 4) Heel Elevation
4a) 6) Ankle Corner
Figure 5 1) Signature Halo
(see Dream 2) Ankle Band
comparison in 3) Beveled Sole
attached Figure 4) Heel Elevation
5a) 5) Sleek Sole
6) Ankle Corner
Figure 6 1) Signature Halo
(see Dream 2) Ankle Band
comparison in 5) Sleek Sole
attached Figure 7) Toe Box Shape
6a) 8) Back Surface
9) Shape of Vamp Edge at Front
Figure 7 2) Ankle Band
(see Dream 7) Toe Box Shape
comparison in 10) Sole
attached Figure
7a)

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** Since Figures 1-7 of D768,366 (‘366) appear to be identical to Figures 1-7 of ‘276, only ‘276
is addressed. If Figures 1-7 of ‘366 differ from ‘276, we ask that you please clarify the
differences.

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Attachment 3

US Design Patent D804,156 (‘156)

Patent Distinctions between the figures of ‘156 and the Dream
Figure #
Figure 1 1) Signature Halo
(see Dream 2) Ankle Band
comparison in 3) Beveled Sole
attached 4) Heel Elevation
Figure 1b) 5) Sleek Sole
6) Ankle Corner
Figure 2 1) Signature Halo
(see Dream 2) Ankle Band
comparison in 3) Beveled Sole
attached 6) Ankle Corner
Figure 2b) 7) Toe Box Shape

Figure 3 1) Signature Halo
(see Dream 2) Ankle Band
comparison in 3) Beveled Sole
attached 6) Ankle Corner
Figure 3b) 8) Back Surface

Figure 4 1) Signature Halo
(see Dream 2) Ankle Band
comparison in 3) Beveled Sole
attached 4) Heel Elevation
Figure 4b) 6) Ankle Corner
Figure 5 1) Signature Halo
(see Dream 2) Ankle Band
comparison in 3) Beveled Sole
attached 4) Heel Elevation
Figure 5b) 5) Sleek Sole
6) Ankle Corner
Figure 6 1) Signature Halo
(see Dream 2) Ankle Band
comparison in 5) Sleek Sole
attached 7) Toe Box Shape
Figure 6b) 8) Back Surface
9) Shape of Vamp Edge at Front
Figure 7 2) Ankle Band
(see Dream 7) Toe Box Shape
comparison in 10) Sole

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attached 11) Tread
Figure 7b)

Figure 8-13 1) Signature Halo- Figures 8 through 13 show the band at the top of the heel
No that can be any color. The Dream has nothing resembling this feature and
comparison is instead has the same color along the collar/topline as the color on the back of
shown or the sole.
attached.

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Attachment 4

Figure 1a- Figure 1 from US Design Patent D805,276 compared with OESH’s Dream

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Figure 1b- Figure 1 from US Design Patent D804,156 compared with OESH’s Dream.

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Figure 2a- Figure 2 from US Design Patent D805,276 compared with OESH’s Dream

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Figure 2b- Figure 2 from US Design Patent D804,156 compared with OESH’s Dream

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Figure 3a- Figure 3 from US Design Patent D805,276 compared with OESH’s Dream

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Figure 3b- Figure 3 from US Design Patent D804,156 compared with OESH’s Dream

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Figure 4a- Figure 4 from US Design Patent D805,276 compared with OESH’s Dream

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Figure 4b—Figure 4 from US Design Patent D804,156 compared with OESH’s Dream

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Figure 5a- Figure 5 from US Design Patent D805,276 compared with OESH’s Dream

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Figure 5b- Figure 5 from US Design Patent D804,156 compared with OESH’s Dream

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Figure 6a- Figure 6 from US Design Patent D805,276 compared with OESH’s Dream

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Figure 6b- Figure 6 from US Design Patent D804,156 compared with OESH’s Dream

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Figure 7a- Figure 7 from US Design Patent D805,276 compared with OESH’s Dream

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Figure7b- Figure 7 from US Design Patent D804,156 compared with OESH’s Dream

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Reference Date Image Significance
16
December D768,366 Figure 3
2014

17
October D831,325 Figure 3
2017

None of the prior art below was before the patent Examiner during prosecution of the asserted
patents. These patents taken alone or in combination(s) show aspects of and an overall design
similar if not identical to the exemplary patented figures. (See right hand column for description
of similarities.)

Reference Date Image Significance
18
July 2012 Painted Birds Flat

Same overall shape
Seamless
Same band at top

NOT CITED TO
USPTO
19
April 2014 TOMS Jutti Flat

Similar nearly
seamless heel

Heel structure

NOT CITED TO
USPTO

EXHIBIT C

Case 3:18-cv-00067-MFU-JCH Document 49-3 Filed 01/28/19 Page 6 of 24 Pageid#: 575
20
November Dansko’s Freely
2014
Similar nearly
seamless heel

NOT CITED TO
USPTO

21
July 2014 Clarks Propose Pixie
Flat

Similar nearly
seamless heel
Same top band

NOT CITED TO
USPTO

EXHIBIT C

Case 3:18-cv-00067-MFU-JCH Document 49-3 Filed 01/28/19 Page 7 of 24 Pageid#: 576
25
April 2014 TOMS Jutti Flat

Same pointed vamp
Same thin wedge sole
Same ankle seams
Heel structure

NOT CITED TO
USPTO
26
November Dansko Freely
2014
Same pointed vamp
Same ankle seams

NOT CITED TO
USPTO

27
February Soda Faddy Flat
2012
Same pointed vamp
Same band at top
Same thin wedge sole

NOT CITED TO
USPTO

28
February Chinese Laundry
2011 Genuine Flat

Same pointed vamp
Same band at top

NOT CITED TO
USPTO

EXHIBIT C

Case 3:18-cv-00067-MFU-JCH Document 49-3 Filed 01/28/19 Page 9 of 24 Pageid#: 578
29
May 2014 Easy Spirit Gulia Flat

Same pointed vamp
Same band at top

NOT CITED TO
USPTO

30
March Blake Brody Kate
2014
Same ankle seams
Same thin wedge sole

NOT CITED TO
USPTO

31
October New Balance Cobb
2010 Hill

Same heel collar
Same ankle seams

NOT CITED TO
USPTO
32
August Lifestride Ballet Flat
2014
Same band at top
Same ankle seams
Same thin wedge sole

NOT CITED TO
USPTO

EXHIBIT C

Case 3:18-cv-00067-MFU-JCH Document 49-3 Filed 01/28/19 Page 10 of 24 Pageid#: 579
Reference Date Image Significance
33
December D768,366 Figure 5
2014

34
October D831,325 Figure 5
2017

35
August 20, D836,314 Figure 5
2018

None of the prior art below was before the patent Examiner during prosecution of the asserted
patents. These patents taken alone or in combination(s) show aspects of and an overall design
similar if not identical to the exemplary patented figures. (See right hand column for description
of similarities.)

Reference Date Image Significance
36
April 2014 TOMS Jutti Flat

Same pointed vamp
Same thin wedge sole
Same ankle seams

NOT CITED TO
USPTO
37
July 2012 Painted Birds Flat

Same pointed vamp
Same raised back at
heel
Same band at top

NOT CITED TO
USPTO

EXHIBIT C

Case 3:18-cv-00067-MFU-JCH Document 49-3 Filed 01/28/19 Page 11 of 24 Pageid#: 580
Reference Date Image Significance
42
December D768,366 Figure 6
2014

None of the prior art below was before the patent Examiner during prosecution of the asserted
patents. These patents taken alone or in combination(s) show aspects of and an overall design
similar if not identical to the exemplary patented figures. (See right hand column for description
of similarities.)

Reference Date Image Significance
43
July 2012 Painted Birds Flat

Same overall shape
with rounded toe and
pointed vamp
Same band along
edge

NOT CITED TO
USPTO

EXHIBIT C

Case 3:18-cv-00067-MFU-JCH Document 49-3 Filed 01/28/19 Page 13 of 24 Pageid#: 582
44
February TOMS Jutti Flat
2014
Same overall shape
with rounded toe and
pointed vamp
Same ankle seams

NOT CITED TO
USPTO

EXHIBIT C

Case 3:18-cv-00067-MFU-JCH Document 49-3 Filed 01/28/19 Page 14 of 24 Pageid#: 583
45
November Dansko Freely
2014
Same overall shape
with rounded toe and
pointed vamp
Same ankle seams

NOT CITED TO
USPTO

46
February Soda Faddy Flat
2012
Same overall shape
with rounded toe and
pointed vamp
Same band along
edge

NOT CITED TO
USPTO

47
September Kim Rogers Tamika
2014 Wedge

Same overall shape
with rounded toe and
pointed vamp
Same ankle seams

NOT CITED TO
USPTO

EXHIBIT C

Case 3:18-cv-00067-MFU-JCH Document 49-3 Filed 01/28/19 Page 15 of 24 Pageid#: 584
Reference Date Image Significance
53
August D836,314 Figure 6
20, 2018
Rounded, not
pointed vamp

None of the prior art below was before the patent Examiner during prosecution of the asserted
patents. These patents taken alone or in combination(s) show aspects of and an overall design
similar if not identical to the exemplary patented figures. (See right hand column for description
of similarities.)
Reference Date Image Significance
54
1983 French Sole ballet
flat

Same overall toe and
vamp shape
Sold 1983-Present

NOT CITED TO
USPTO
55
1956 Repetto Cendrillon

Same overall toe and
vamp shape
Sold 1956-Present

NOT CITED TO
USPTO

56
August Missoni for Target
2011
Same overall toe and
vamp shape
Machine knit

NOT CITED TO
USPTO

EXHIBIT C

Case 3:18-cv-00067-MFU-JCH Document 49-3 Filed 01/28/19 Page 18 of 24 Pageid#: 587
Reference Date Image Significance
57
December D768,366 Figure 7
2014

58
August D836,314 Figure 7
20, 2018

None of the prior art below was before the patent Examiner during prosecution of the asserted
patents. These patents taken alone or in combination(s) show aspects of and an overall design
similar if not identical to the exemplary patented figures. (See right hand column for description
of similarities.)

Reference Reference Reference Reference
59
April TOMS Jutti Flat
2014
Same sole shape
and profile
Similar sole design

NOT CITED TO
USPTO
60
November Dansko Neely
2014
Similar sole design

NOT CITED TO
USPTO

EXHIBIT C

Case 3:18-cv-00067-MFU-JCH Document 49-3 Filed 01/28/19 Page 19 of 24 Pageid#: 588
66
June 2013 Naturalizer
Applause Flat

Similar sole design

NOT CITED TO
USPTO

67
May 2014 Betsey Johnson
Blue Flat

Similar sole design

NOT CITED TO
USPTO
68
February DV8 Ttyl Flat
2014
Similar sole design

NOT CITED TO
USPTO
69
January Earth Breeze Flat
2013
Similar sole design

NOT CITED TO
USPTO

70
June 2014 Propet Emma Flat

Similar sole design

NOT CITED TO
USPTO

EXHIBIT C

Case 3:18-cv-00067-MFU-JCH Document 49-3 Filed 01/28/19 Page 21 of 24 Pageid#: 590
1
Rothy’s Inc., USD768366, 2016 October 11, Figure 1
2
Rothy’s Inc., USD831325, 2018 October 23, Figure 1
3
Rothy’s Inc., USD836314, 2018 December 25, Figure 1
4
2014, April 1, https://www.instagram.com/p/mQHSpJQt3s/?taken-by=shoppaintedbird
http://www.shoppaintedbird.com/products/broadway-flat
5
https://www.amazon.com/TOMS-Womens-Desert-Loafers-Slip-
ONS/dp/B01H5X6R6K/ref=sr_1_5?ie=UTF8&qid=1533245917&sr=8-
5&keywords=Jutti%2Bflats&th=1 “Date first listed on Amazon: April 18, 2014”
6
https://www.amazon.com/gp/product/B00847ETQ2/ref=s9_dcacsd_dcoop_bw_c_x_1_w?th=1
“Date first listed on Amazon: February 22, 2012”
7
https://www.amazon.com/Bernie-Mev-Womens-Catwalk-Flat/dp/B07D49ZL2S/ “Date first
listed on Amazon: September 30, 2013”
8
https://www.belk.com/p/kim-rogers-tamika-wedge/0480002122793.html
9
https://www.mycomicshop.com/search?tid=195991&pgi=51
10
Rothy’s Inc., USD768366, 2016 October 11, Figure 2
11
Rothy’s Inc., USD836314, 2018 December 25, Figure 2
12
https://www.amazon.com/TOMS-Womens-Desert-Loafers-Slip-ONS/dp/B01H5X6R6K
13
Painted Bird Mountain Flat, http://www.shoppaintedbird.com/products/mountain-flat
14
https://www.amazon.com/Bernie-Mev-Womens-Catwalk-Flat/dp/B07D49ZL2S
15
https://www.amazon.com/gp/product/B00847ETQ2/ref=s9_dcacsd_dcoop_bw_c_x_1_w?th=1
16
Rothy’s Inc., USD768366, 2016 October 11, Figure 3
17
Rothy’s Inc., USD831325, 2018 October 23, Figure 3
18
Painted Bird Mountain Flat, http://www.shoppaintedbird.com/products/mountain-flat
19
https://www.amazon.com/TOMS-Womens-Desert-Loafers-Slip-ONS/dp/B01H5X6R6K
20
https://www.amazon.com/Dansko-Neely-Womens-Flat/dp/B00NAX59UK
21
https://www.amazon.com/Clarks-Womens-Propose-Pixie-Fuchsia/dp/B07C5KJ3YW
22
Rothy’s Inc., USD768366, 2016 October 11, Figure 4
23
Rothy’s Inc., USD831325, 2018 October 23, Figure 4
24
Rothy’s Inc., USD836314, 2018 December 25, Figure 4
25
https://www.amazon.com/TOMS-Womens-Desert-Loafers-Slip-ONS/dp/B01H5X6R6K
26
https://www.belk.com/p/kim-rogers-tamika-wedge/0480002122793.html
27
https://www.amazon.com/gp/product/B00847ETQ2/ref=s9_dcacsd_dcoop_bw_c_x_1_w?th=1
28
https://www.amazon.com/CL-Chinese-Laundry-Genuine-Natural/dp/B004DUCD30
29
https://www.amazon.com/Easy-Spirit-Womens-Gulia-Flat/dp/B06Y3B6TXN/
30
http://girliegirlarmy.com/style/20140311/eco-chic-ballet-flats-from-blake-brody/
31
https://www.amazon.com/Cobb-Hill-Emma-ch-Womens-Emma-Ch/dp/B00SJIRB9S
32
https://www.amazon.com/LifeStride-Womens-Nero-Ballet-Flat/dp/B00J8C17JE
33
Rothy’s Inc., USD768366, 2016 October 11, Figure 5
34
Rothy’s Inc., USD831325, 2018 October 23, Figure 5
35
Rothy’s Inc., USD836314, 2018 December 25, Figure 5
36
https://www.amazon.com/TOMS-Womens-Desert-Loafers-Slip-ONS/dp/B01H5X6R6K
37
http://www.shoppaintedbird.com/products/broadway-flat
https://www.pinterest.com/pin/169377635956581946/

EXHIBIT C

Case 3:18-cv-00067-MFU-JCH Document 49-3 Filed 01/28/19 Page 22 of 24 Pageid#: 591
38
https://www.amazon.com/gp/product/B00847ETQ2/ref=s9_dcacsd_dcoop_bw_c_x_1_w?th=1
39
Sponsored Post: Blake Brody Flats, “Westervin” 2014 June 30,
http://www.westervin.com/blog/2014/06/30/sponsored-post-blake-brody-flats/
40
https://www.amazon.com/Easy-Spirit-Womens-Gulia-Flat/dp/B06Y3B6TXN/
41
https://www.amazon.com/LifeStride-Womens-Nero-Ballet-Flat/dp/B00J8C17JE
42
Rothy’s Inc., USD768366, 2016 October 11, Figure 6
43
Painted Bird crocheted shoes arrive just in time for summer, “Los Angeles Times” July 2,
2012
2013 July 8, instagram.com/shoppaintedbird
44
TOMS, Meet the new Jutti Flat + last day for 17.32% off, 2014 February 17
45
https://www.amazon.com/Dansko-Neely-Womens-Flat/dp/B00NAX59UK
46
https://www.amazon.com/gp/product/B00847ETQ2/ref=s9_dcacsd_dcoop_bw_c_x_1_w?th=1
47
https://www.belk.com/p/kim-rogers-tamika-
wedge/0480002122793.html?gclid=EAIaIQobChMIl82c45rk3wIVkcDICh3oFwocEAQYASAB
EgIBmvD_BwE&ef_id=EAIaIQobChMIl82c45rk3wIVkcDICh3oFwocEAQYASABEgIBmvD_
BwE:G:s&s_kwcid=AL!5203!3!200655575030!!!g!347129203635!&cm_mmc=PLA-Google-
Belk_PLA_Geos-Shoes-0480002122793
48
https://www.amazon.com/CL-Chinese-Laundry-Genuine-Natural/dp/B004DUCD30
49
https://www.amazon.com/Bernie-Mev-Womens-Catwalk-Flat/dp/B07D49ZL2S
50
https://www.amazon.com/Easy-Spirit-Womens-Gulia-Flat/dp/B06Y3B6TXN/
51
https://www.amazon.com/gp/product/B00MY459EM/ref=s9_dcacsd_dcoop_bw_c_x_1_w
52
https://www.amazon.com/Corkys-Womens-Sidewalk-Slip-Flat/dp/B00MJ8E098
53
Rothy’s Inc., USD836314, 2018 December 25, Figure 6
54
http://www.frenchsole.com/products/view/HE358
55
https://www.repetto.com/us/women/women-
shoes.html?gclid=EAIaIQobChMIvf2a_tHj3wIVCx6GCh2PbwZtEAAYASABEgLiE_D_BwE&
sous_categorie=1925
https://lagarconne.com/collections/fashion
56
https://poshmark.com/listing/Missoni-For-Target-Knit-Zig-Zag-Flats-Size-75-
580679ef291a35e2cd0103a5
57
Rothy’s Inc., USD768366, 2016 October 11, Figure 7
58
Rothy’s Inc., USD836314, 2018 December 25, Figure 7
59
https://www.amazon.com/TOMS-Womens-Desert-Loafers-Slip-ONS/dp/B01H5X6R6K
60
https://www.amazon.com/Dansko-Neely-Womens-Flat/dp/B00NAX59UK
61
https://www.belk.com/p/kim-rogers-tamika-
wedge/0480002122793.html?gclid=EAIaIQobChMIl82c45rk3wIVkcDICh3oFwocEAQYASAB
EgIBmvD_BwE&ef_id=EAIaIQobChMIl82c45rk3wIVkcDICh3oFwocEAQYASABEgIBmvD_
BwE:G:s&s_kwcid=AL!5203!3!200655575030!!!g!347129203635!&cm_mmc=PLA-Google-
Belk_PLA_Geos-Shoes-0480002122793
62
https://www.amazon.com/CL-Chinese-Laundry-Genuine-Natural/dp/B004DUCD30
63
https://www.amazon.com/Soft-Style-Womens-Block-Vitello/dp/B005OAIGT8/
64
https://www.amazon.com/Cobb-Hill-Emma-ch-Womens-Emma-Ch/dp/B00SJIRB9S
65
https://www.amazon.com/Lucky-Brand-Womens-American-Leather/dp/B005CGON0A/
66
https://www.amazon.com/Naturalizer-Womens-Applause-Ballet-
Flat/dp/B00AW2BMXA?th=1

EXHIBIT C

Case 3:18-cv-00067-MFU-JCH Document 49-3 Filed 01/28/19 Page 23 of 24 Pageid#: 592
67
https://www.amazon.com/Blue-Betsey-Johnson-Womens-Ballet/dp/B00K7GEB34
68
https://www.amazon.com/DV8-Womens-Ttyl-Ballet-Flat/dp/B00HD38392
69
https://www.amazon.com/Earth-Womens-Breeze-Ballet-Flat/dp/B013JN9JYC?th=1
70
https://www.amazon.com/Propet-Womens-Emma-Ballet-Flat/dp/B00IJLCNKC?th=1

EXHIBIT C

Case 3:18-cv-00067-MFU-JCH Document 49-3 Filed 01/28/19 Page 24 of 24 Pageid#: 593
EXHIBIT D

Case 3:18-cv-00067-MFU-JCH Document 49-4 Filed 01/28/19 Page 1 of 5 Pageid#: 594
D804,156 Patent Figures -./C@ 297 +?73< ,;3A Notable Distinctions

Wider forefoot and broad
anatomically shaped toe box,
not pointed;
Sole sidewall is smooth and
thick, not beveled and thin;
No change in heel elevation in
the sole;
Continuous top curve from heel
to forefoot, no corner at the
ankle;
No ankle band from top of heel
to sole at ankle; and
No heel collar at the back
Wider and broader toe box, not
pointed; and
Sole sidewall is smooth and
thick, not beveled and thin

Two vertical seams attach an
additional piece of material, not
seamless;
Sole sidewall is smooth and
thick, not beveled and thin; and
No collar at the top of the heel

Sole sidewall is smooth and
thick, not beveled and thin;
No change in heel elevation in
the sole;
Continuous top curve from heel
to forefoot, no corner at the
ankle;
No ankle band from top of heel
to sole at ankle; and
No heel collar at the top back

Case 3:18-cv-00067-MFU-JCH Document 49-4 Filed 01/28/19 Page 2 of 5 Pageid#: 595
Sole sidewall is smooth and
thick, not beveled and thin;
No change in heel elevation in
the sole;
Continuous top curve from heel
to forefoot, no corner at the
ankle;
No ankle band from top of heel
to sole at ankle; and
No heel collar at the top back

Vamp angle is acute and
extends back further;
Vamp is asymmetric;
Continuous curve from heel to
forefoot;
Wider forefoot, broad
anatomically shaped toe box,
and narrower heel based on a
natural foot shape; and
Vertical seams attach an
additional piece of material at
the back of the heel, not
seamless

Flat surface, no change in heel
elevation;
Wider forefoot, broad
anatomically shaped toe box,
and narrower heel based on a
natural foot shape; and
Entirely different tread pattern
which covers the entire surface,
not relegated to the heel and
forefoot

Case 3:18-cv-00067-MFU-JCH Document 49-4 Filed 01/28/19 Page 3 of 5 Pageid#: 596
The same distinctions as FIG. 1,
?KB V475:% 8 to 14 include a
shaded portion, which is
designated to show that the
portion can be any color, and in
particular, a color different than
the unshaded portions in FIGS.
8 to 14%W ;FC 2NC?J 4I?P F?O
no contrasting color portion, as
designated by the shaded
portion in patent D804,156
The same distinctions as FIG. 2,
?KB V475:% 8 to 14 include a
shaded portion, which is
designated to show that the
portion can be any color, and in
particular, a color different than
the unshaded portions in FIGS.
8 to 14%W ;FC 2NC?J 4I?P F?O
no contrasting color portion, as
designated by the shaded
portion in patent D804,156
The same distinctions as FIG. 3,
?KB V475:% 8 to 14 include a
shaded portion, which is
designated to show that the
portion can be any color, and in
particular, a color different than
the unshaded portions in FIGS.
8 to 14%W ;FC Dream Flat has
no contrasting color portion, as
designated by the shaded
portion in patent D804,156
The same distinctions as FIG. 4,
?KB V475:% 8 to 14 include a
shaded portion, which is
designated to show that the
portion can be any color, and in
particular, a color different than
the unshaded portions in FIGS.
8 to 14%W ;FC 2NC?J 4I?P F?O
no contrasting color portion, as
designated by the shaded
portion in patent D804,156

Case 3:18-cv-00067-MFU-JCH Document 49-4 Filed 01/28/19 Page 4 of 5 Pageid#: 597
The same distinctions as FIG. 5,
?KB V475:% 8 to 14 include a
shaded portion, which is
designated to show that the
portion can be any color, and in
particular, a color different than
the unshaded portions in FIGS.
8 to 14%W ;FC 2NC?J 4I?P F?O
no contrasting color portion, as
designated by the shaded
portion in patent D804,156
The same distinctions as FIG. 6,
?KB V475:% 8 to 14 include a
shaded portion, which is
designated to show that the
portion can be any color, and in
particular, a color different than
the unshaded portions in FIGS.
8 to 14%W ;FC 2NC?J 4I?P F?O
no contrasting color portion, as
designated by the shaded
portion in patent D804,156

The same distinctions as FIG. 7,
?KB V475:% 8 to 14 include a
shaded portion, which is
designated to show that the
portion can be any color, and in
particular, a color different than
the unshaded portions in FIGS.
8 to 14%W ;FC 2NC?J 4I?P F?O
no contrasting color portion, as
designated by the shaded
portion in patent D804,156

Case 3:18-cv-00067-MFU-JCH Document 49-4 Filed 01/28/19 Page 5 of 5 Pageid#: 598
EXHIBIT E

Case 3:18-cv-00067-MFU-JCH Document 49-5 Filed 01/28/19 Page 1 of 4 Pageid#: 599
D831,325 Patent Figures 012GD 5=; +C;7@ -?7E Notable Distinctions
Continuous top curve
from heel to forefoot, no
corner at the ankle;
No ankle seam from top
of heel to sole at ankle;
and
No heel collar or
contrasting portion at the
back

No heel collar or
contrasting portion at the
back

Two vertical seams attach
an additional piece of
material, not seamless;
and
No collar or contrasting
portion at the top of the
heel

Continuous top curve
from heel to forefoot, no
corner at the ankle;
No ankle seam from top
of heel to sole at ankle;
and
No heel collar or
contrasting portion at the
back

Case 3:18-cv-00067-MFU-JCH Document 49-5 Filed 01/28/19 Page 2 of 4 Pageid#: 600
Continuous top curve
from heel to forefoot, no
corner at the ankle;
No ankle seam from top
of heel to sole at ankle;
and
No heel collar or
contrasting portion at the
back

Continuous top curve
from heel to forefoot, no
corner at the ankle;
No ankle seam from top
of heel to sole at ankle;
No heel collar or
contrasting portion at the
back; and
Two vertical seams attach
an additional piece of
material, not seamless

It is unclear what is
claimed here

Case 3:18-cv-00067-MFU-JCH Document 49-5 Filed 01/28/19 Page 3 of 4 Pageid#: 601
Case 3:18-cv-00067-MFU-JCH Document 49-5 Filed 01/28/19 Page 4 of 4 Pageid#: 602
EXHIBIT F

OESH
[Email address]

Case 3:18-cv-00067-MFU-JCH Document 49-6 Filed 01/28/19 Page 1 of 3 Pageid#: 603
D833,729 Patent Figures 012GD 5=; +C;7@ -?7E Notable Distinctions
Wider forefoot and
broad anatomically
shaped toe box, not
pointed;
Continuous top curve
from heel to forefoot,
no corner at the ankle
Wider and broader toe
box, not pointed

The vertical dash-dot-
dash lines were added
to this patent after
D9H=9I=A; *+,ME 1<9
Dream Flat in response
FB /BF<KME 795E9 5A8
desist letter L /BF<KME
did not inform the
USPTO of the Dream
Flat design

Continuous top curve
from heel to forefoot,
no corner at the ankle

Continuous top curve
from heel to forefoot,
no corner at the ankle

Case 3:18-cv-00067-MFU-JCH Document 49-6 Filed 01/28/19 Page 2 of 3 Pageid#: 604
Vamp angle is acute
and extends back
further;
Vamp is asymmetric;
Continuous curve from
heel to forefoot; and
Wider forefoot, broad
anatomically shaped
toe box, and narrower
heel based on a natural
foot shape

Wider forefoot, broad
anatomically shaped
toe box, and narrower
heel based on a natural
foot shape

Case 3:18-cv-00067-MFU-JCH Document 49-6 Filed 01/28/19 Page 3 of 3 Pageid#: 605
EXHIBIT G

Case 3:18-cv-00067-MFU-JCH Document 49-7 Filed 01/28/19 Page 1 of 4 Pageid#: 606
D836,314 Patent Figures 123HE 6>< +D<8A -@8F Notable Distinctions
Wider forefoot and broad
anatomically shaped toe
box, not pointed; and
Sole sidewall is smooth
and thick, not beveled
and thin

Wider and broader toe
box, not pointed; and
Sole sidewall is smooth
and thick, not beveled
and thin

Sole sidewall is smooth
and thick, not beveled
and thin

Sole sidewall is smooth
and thick, not beveled
and thin

Sole sidewall is smooth
and thick, not beveled
and thin

Wider forefoot, broad
anatomically shaped toe
box, based on a natural
foot shape; and
Vamp angle is pointed
and acute, not round

Case 3:18-cv-00067-MFU-JCH Document 49-7 Filed 01/28/19 Page 2 of 4 Pageid#: 607
Wider forefoot, broad
anatomically shaped toe
box, based on a natural
foot shape

The same distinctions as
FIG. 1

The same distinctions as
FIG. 2

The same distinctions as
FIG. 3

The same distinctions as
FIG. 4

The same distinctions as
FIG. 5

Case 3:18-cv-00067-MFU-JCH Document 49-7 Filed 01/28/19 Page 3 of 4 Pageid#: 608
The same distinctions as
FIG. 6

The same distinctions as
FIG. 7

Case 3:18-cv-00067-MFU-JCH Document 49-7 Filed 01/28/19 Page 4 of 4 Pageid#: 609
EXHIBIT H

Case 3:18-cv-00067-MFU-JCH Document 49-8 Filed 01/28/19 Page 1 of 8 Pageid#: 610
Case 3:18-cv-00067-MFU-JCH Document 49-8 Filed 01/28/19 Page 2 of 8 Pageid#: 611
Case 3:18-cv-00067-MFU-JCH Document 49-8 Filed 01/28/19 Page 3 of 8 Pageid#: 612
Case 3:18-cv-00067-MFU-JCH Document 49-8 Filed 01/28/19 Page 4 of 8 Pageid#: 613
Case 3:18-cv-00067-MFU-JCH Document 49-8 Filed 01/28/19 Page 5 of 8 Pageid#: 614
Case 3:18-cv-00067-MFU-JCH Document 49-8 Filed 01/28/19 Page 6 of 8 Pageid#: 615
Case 3:18-cv-00067-MFU-JCH Document 49-8 Filed 01/28/19 Page 7 of 8 Pageid#: 616
Case 3:18-cv-00067-MFU-JCH Document 49-8 Filed 01/28/19 Page 8 of 8 Pageid#: 617
EXHIBIT I

Case 3:18-cv-00067-MFU-JCH Document 49-9 Filed 01/28/19 Page 1 of 12 Pageid#: 618
TEPZZ 8Z56¥8A_T
(19)

(11) EP 2 805 638 A1
(12) EUROPEAN PATENT APPLICATION
published in accordance with Art. 153(4) EPC

(43) Date of publication: (51) Int Cl.:
26.11.2014 Bulletin 2014/48 A43B 23/02 (2006.01) A41B 11/00 (2006.01)
A43D 21/00 (2006.01) D04B 1/16 (2006.01)
(21) Application number: 12865584.2 D04B 1/22 (2006.01)

(22) Date of filing: 07.12.2012 (86) International application number:
PCT/JP2012/081747

(87) International publication number:
WO 2013/108506 (25.07.2013 Gazette 2013/30)

(84) Designated Contracting States: • KINO, Takashi
AL AT BE BG CH CY CZ DE DK EE ES FI FR GB Wakayama-shi
GR HR HU IE IS IT LI LT LU LV MC MK MT NL NO Wakayama 641-8511 (JP)
PL PT RO RS SE SI SK SM TR • HAMADA, Yohji
Wakayama-shi
(30) Priority: 20.01.2012 JP 2012010202 Wakayama 641-8511 (JP)

(71) Applicant: Shima Seiki Mfg., Ltd (74) Representative: Wimmer, Hubert
Wakayama-shi WAGNER & GEYER
Wakayama 641-8511 (JP) Gewürzmühlstrasse 5
80538 München (DE)
(72) Inventors:
• KOSUI, Tatsuya
Wakayama-shi
Wakayama 641-8511 (JP)

(54) FOOTWEAR, AND KNITTING METHOD FOR KNIT FABRIC

(57) Provided is a footwear that excels in productivity is a knitting yarn that is not a heat-fusible yarn, and the
and shape retaining property. Footwear 1 is knitted second knitting yarn is a heat-fusible yarn having thermal
seamlessly with a flat knitting machine having at least a adhesiveness and heat-shrinkable properties. The sec-
pair of a front and a back needle bed and includes a base ond knitting yarn preferably has a configuration including
knit fabric portion 2 having a mixed section 20 knitted a core made from a material that contracts by heat, and
using a first knitting yarn and a second knitting yarn in- a sheath made from a material having a lower fusing
terwoven along the first knitting yarn. The first knitting point than the core.
yarn configuring the mixed section 20 of the footwear 1
EP 2 805 638 A1

Case 3:18-cv-00067-MFU-JCH Document 49-9 Filed 01/28/19 Page 2 of 12 Pageid#: 619
Printed by Jouve, 75001 PARIS (FR)
1 EP 2 805 638 A1 2

Description The first knitting yarn used in the mixed section of the
footwear of the present invention is a knitting yarn that
TECHNICAL FIELD is not a heat-fusible yarn, and the second knitting yarn
is a heat-fusible yarn having thermal adhesiveness and
[0001] The present invention relates to a footwear such 5 heat-shrinkable properties.
as socks, shoes, and the like knitted seamlessly with a [0007] The footwear of the present invention includes
flat knitting machine, and a knitting method for a knit fabric socks, tabi (mitten socks), shoes or the upper of the
of producing the footwear. shoes, and the like. The mixed section in the footwear of
the present invention may be arranged over the entire
BACKGROUND ART 10 footwear or may be arranged at a part of the footwear.
Further, the mixed section in the footwear of the present
[0002] For example, patent document 1 discloses a invention does not need to be uniformly formed. For ex-
pair of shoes, which is one type of footwear. The shoe ample, the knitting structure, the type of knitting yarn to
includes an upper (denoted as an instep covering portion use, the count of the knitting yarn, and the like may differ
in patent document 1), and a sole attached to the upper, 15 between the mixed section at a certain part of the foot-
and a part of the upper includes an "interwoven portion" wear and the mixed section at another part of the foot-
in which the fiber of synthetic resin is interwoven. Be- wear (the type, count, and the like may, of course, be the
cause of such "interwoven portion" formed at the upper, same).
when the upper is subjected to thermal processing while [0008] According to one aspect of the footwear of the
being placed over a last (denoted as shoe form in patent 20 present invention, the heat-fusible yarn configuring the
document 1), the upper can be formed to a shape that second knitting yarn is a heat-fusible yarn having a core-
lies along the shape of the last. sheath structure including a core that contracts by heat
and a sheath having a lower fusing point than the core.
PRIOR ART DOCUMENT [0009] The fusing point of the core and the sheath of
25 the heat-fusible yarn having the core-sheath structure is
PATENT DOCUMENT a temperature higher than the temperature of the general
usage environment of the footwear. For example, the fus-
[0003] [Patent Document 1] Japanese Patent Publica- ing point of the core and the sheath is preferably higher
tion No. 3865307 than or equal to 120°C.
30 [0010] According to another aspect of the footwear of
SUMMARY OF THE INVENTION the present invention, the mixed section arranged in the
footwear is knitted by plating knitting using the first knit-
PROBLEMS TO BE SOLVED BY THE INVENTION ting yarn and the second knitting yarn.
[0011] If the plating knitting (see e.g., International
[0004] The conventional shoes have a problem in that 35 Laid-Open Publication No. 2008/139710, Japanese Pat-
the productivity is poor. Since the shoes are formed by ent Publication No. 3899269) of feeding the first knitting
three-dimensionally sewing a plurality of parts, it is trou- yarn and the second knitting yarn from different yarn feed-
blesome to prepare each part and the task of sewing ers is carried out, a main yarn fed from the preceding
each part is also complicated. Furthermore, the shoes of yarn feeder is arranged on the front surface side of the
patent document 1 also have a problem that the shape 40 mixed section, and a plating yarn fed from the following
retaining property is poor since the "interwoven portion" yarn feeder is arranged on the back surface side of the
of the shoes is made only from the fiber of the synthetic mixed section. Thus, it is apparent that the mixed section
resin. is formed by plating knitting by looking at the mixed sec-
[0005] The present invention has been made in view tion. The mixed section may be knitted by feeding the
of the above situation, and an object of the present in- 45 first knitting yarn and the second knitting from one yarn
vention is to provide a footwear that excels in productivity feeder. In this case, the first knitting yarn and the second
and shape retaining property. Another object of the knitting yarn supplied from different knitting yarn cones
present invention is to provide a knitting method for a knit may be put together in one yarn feeder, or the first knitting
fabric of producing the footwear of the present invention. yarn and the second knitting yarn may be put together in
50 advance by twisting and the like and then fed from one
MEANS FOR SOLVING THE PROBLEMS yarn feeder. In addition, the second kitting yarn may be
interwoven along the first knitting yarn by tucking the sec-
[0006] A footwear according to the present invention ond knitting yarn to the stitches knitted with the first knit-
is a footwear knitted seamlessly with a flat knitting ma- ting yarn.
chine having at least a pair of a front and a back needle 55 [0012] According to another aspect of the present in-
bed, and includes a base knit fabric portion including a vention, the footwear further includes an additional knit
mixed section knitted using a first knitting yarn and a sec- fabric portion arranged on an inner side or an outer side
ond knitting yarn interwoven along the first knitting yarn. of the base knit fabric portion when wearing the footwear;

Case 3:18-cv-00067-MFU-JCH Document 49-92 Filed 01/28/19 Page 3 of 12 Pageid#: 620
3 EP 2 805 638 A1 4

wherein the base knit fabric portion and the additional retaining property by being thermally processed while
knit fabric portion are connected seamlessly at a position being attached to the last. This is because the second
of a foot-inserting part of the footwear. The additional knit knitting yarn fused by the thermal processing is integrat-
fabric portion may also include the mixed section knitted ed with the first knitting yarn, so that the first knitting yarn
using the first knitting yarn and the second knitting yarn. 5 becomes the skeleton in the mixed section and the fused
[0013] According to another aspect of the footwear of second knitting yarn reinforces such skeleton. The foot-
the present invention in which the mixed section of the wear of the present invention also has excellent appear-
base knit fabric portion is knitted by plating knitting and ance. This is because the first knitting yarn is not a heat-
an additional knit fabric portion is arranged, a surface on fusible yarn and thus the first knitting yarn in the mixed
which the second knitting yarn is arranged in the mixed 10 section of the footwear is not fused even if the footwear
section is arranged to face the additional knit fabric por- of the present invention is thermally processed, and the
tion. knitting structure of the mixed section is retained in a
[0014] In the mixed section performed with the plating state at the time of knitting.
knitting as described above, the second knitting yarn, [0018] The footwear of the present invention knitted
which is the heat-fusible yarn, is arranged on either the 15 using the second knitting yarn having the core-sheath
front surface side or the back surface side of the mixed structure exhibits superior shape retaining property.
section. The second knitting yarn, which is the heat-fu- When the footwear is attached to the last and thermally
sible yarn, is arranged between the base knit fabric por- processed, the core of the second knitting yarn contracts
tion and the additional knit fabric portion by arranging the and the shape of the footwear lies along the last, and
surface, on which the second knitting yarn is arranged in 20 furthermore, the core and the first knitting yarn are inte-
the mixed section, to face the additional knit fabric portion grated by the sheath of the second knitting yarn.
when the additional knit fabric portion is arranged on the [0019] The footwear of the present invention in which
inner side or the outer side of the base knit fabric portion. the mixed section is formed by the plating knitting has
If the additional knit fabric portion also includes the mixed excellent appearance. According to the plating knitting,
section, the surface on which the second knitting yarn is 25 the main yarn (one of the first knitting yarn and the second
arranged in the base knit fabric portion and the surface knitting yarn) is arranged on the front side of the mixed
on which the second knitting yarn is arranged in the ad- section, and the plating yarn (the other one of the first
ditional knit fabric portion preferably face each other. knitting yarn and the second knitting yarn) is hidden on
[0015] According to another aspect of the footwear of the back side of the mixed section and is difficult to be
the present invention, the footwear is retained in a shape 30 seen from the front side of the mixed section, that is, the
corresponding to a last by being thermally processed first knitting yarn and the second knitting yarn are not
while being placed over the last. In this case, the second seen as mottles. Which one of the first knitting yarn or
knitting yarn fused by being thermally processed and the the second knitting yarn to be assumed as the knitting
first knitting yarn are integrated in the mixed section of yarn fed from the preceding yarn feeder is not particularly
an outer side knit fabric portion of the footwear. In par- 35 limited, but the first knitting yarn is preferably the knitting
ticular, if the second knitting yarn is the heat-fusible yarn yarn fed from the preceding yarn feeder. This is because
having the core-sheath structure, the core of the second the first knitting yarn is the knitting yarn that determines
knitting yarn and the first knitting yarn are integrated in the outer appearance of the mixed section.
a paralleled state by the sheath of the second knitting [0020] The footwear of the present invention including
yarn fused by the thermal processing. 40 the additional knit fabric portion in addition to the base
[0016] The footwear described above is produced by knit fabric portion has excellent comfortableness. This is
a knitting method for a knit fabric of the present invention because the additional knit fabric portion facing the foot
of seamlessly knitting a knit fabric using a flat knitting of the wearer may be formed to have a texture different
machine having at least a pair of a front and a back needle from the base knit fabric portion.
bed facing each other. In other words, in the knitting meth- 45 [0021] The adherence property of the base knit fabric
od for the knit fabric of the present invention, a first knitting portion and the additional knit fabric portion can be en-
yarn, which is not a heat-fusible yarn, and a second knit- hanced by arranging, on the side of the additional knit
ting yarn, which is a heat-fusible yarn having thermal ad- fabric portion, the surface on which the second knitting
hesiveness and heat-shrinkable properties, are pre- yarn is arranged in the mixed section formed by plating
pared; and at least a part of the footwear is knitted with 50 knitting.
the first knitting yarn and the second knitting yarn inter-
woven along the first knitting yarn. BRIEF DESCRIPTION OF THE DRAWINGS

EFFECTS OF THE INVENTION [0022]
55
[0017] The footwear of the present invention excels in Fig. 1 is a schematic perspective diagram of a shoe
productivity as it is knitted seamlessly. The footwear of shown in an embodiment.
the present invention is a footwear that excels in shape Fig. 2 is a schematic diagram showing a state before

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5 EP 2 805 638 A1 6

thermal processing of the shoe shown in Fig. 1. surrounding the toes is knitted. Next, the portions k, h, i,
Fig. 3 is a knitting image diagram of the shoe shown ~, l of the inner side knit fabric portion 3 are formed so
in Fig. 2. as to correspond to the irregularities of the foot while
using narrowing and widening (portion k is knitted with
MODE FOR CARRYING OUT THE INVENTION 5 tubular kitting using F, B, and portion h is knitted with C-
shaped knitting using F, B). The portion u is knitted with
[0023] An example of knitting a shoe 1 as a footwear a rib structure, the portions t, o, p, q of the outer side knit
of the present invention will now be described with ref- fabric portion 2 are knitted so as to correspond to the
erence to Figs. 1 to 3. irregularities of the foot while again using widening and
[0024] The shoe 1 shown in Fig. 1 is a shoe in which 10 narrowing (portion o is knitted with C-shaped knitting us-
an upper that covers an instep side of a foot, and a sole ing F, B and portion p is knitted with tubular knitting using
that covers a sole side are integrated. A reinforcement F, B) and knitting is finished at the portion r corresponding
sole material (not shown) such as resin, rubber, and the to the roots of the toes.
like, for example, may be attached to the outer side of [0029] In the present embodiment, the knitting yarn for
the sole of the shoe 1. The reinforcement sole material 15 knitting the inner side knit fabric portion 3 and the knitting
is preferably attached to the sole with an adhesive. Of yarn for knitting the outer side knit fabric portion 2 are
course, the reinforcement sole material may be formed different. The inner side knit fabric portion 3 is arranged
by impregnating the sole with the resin, rubber, and the to face the foot of the wearer, and hence is knitted using
like. a knitting yarn that enhances the comfortableness of the
[0025] The shoe 1 of the present embodiment includes 20 wearer. For such knitting yarn, a knitting yarn having at
an outer side knit fabric portion (base knit fabric portion) least one of the properties of hygroscopic property, anti-
2 arranged on the outer side of the shoe 1, and an inner bromic property, and antibacterial property, for example,
side knit fabric portion (additional knit fabric portion) 3 can be used. The heat-fusible yarn is preferably not
arranged on the inner side of the shoe 1. The outer side adopted for the knitting yarn of the inner knit fabric portion
knit fabric portion 2 and the inner side knit fabric portion 25 3 since the feeling degrades once the heat-fusible yarn
3 are connected at a position of a foot-inserting part 11 is fused by thermal processing.
of the shoe 1. A distinctive feature of the shoe 1 is that [0030] In the outer side knit fabric portion 2, a section
(1) the entire shoe 1 is a knit fabric seamlessly knitted other than a rib structure section 25 is a mixed section
using a flat knitting machine, and (2) at least a part (mixed 20 knitted with the first knitting yarn (knitting yarn of a
section 20) of the outer side knit fabric portion 2 config- 30 different type from the knitting yarn of the inner side knit
uring the shoe 1 is knitted with a first knitting yarn, which fabric portion 3), which is not the heat-fusible yarn, and
is not a heat-fusible yarn, and a second knitting yarn, the second knitting yarn, which is the heat-fusible yarn,
which is a heat-fusible yarn interwoven along the first in a paralleled state. In the present embodiment, plating
knitting yarn. knitting of feeding the first knitting yarn from a preceding
[0026] To produce the shoe 1 shown in Fig. 1, the knit 35 yarn feeder, and feeding the second knitting yarn from a
fabric (shoe 1) in which the outer side knit fabric portion following yarn feeder is carried out, so that the first knitting
2 and the inner side knit fabric portion 3 are seamlessly yarn, which is not the heat-fusible yarn, appears on the
connected is first knitted as shown in Fig. 2 using a flat outer surface of the shoe 1. Only the first knitting yarn is
knitting machine. In this case, the inner side knit fabric used for the knitting of the rib structure section 25 so that
portion 3 is preferably formed to a shape substantially 40 the foot can be easily inserted from the foot-inserting part
lying along the shape of the last, to be described later 11 of the shoe 1.
and slightly larger than the size of the last, and the outer [0031] The knitting yarn, which is not the heat-fusible
side knit fabric portion 2 is preferably formed slightly larg- yarn, is used for the first knitting yarn. The material of the
er than the inner side knit fabric portion 3. The flat knitting knitting yarn is preferably polyester, nylon, and the like,
machine to be used for the knitting is not particularly lim- 45 but is not limited thereto. The knitting yarn may be a
ited, and may be, for example, a two-bed flat knitting ma- monofilament yarn, or may be a multi-filament yarn. In
chine or a four-bed flat knitting machine. particular, the multi-filament yarn is preferable, and the
[0027] Fig. 3 shows the knitting image diagram sche- multi-filament yarn is adopted for the first knitting yarn in
matically showing the knitting steps of the shoe 1 shown the present embodiment.
in Fig. 2. Portions e to r shown in Fig. 3 correspond to 50 [0032] The heat-fusible yarn having a core-sheath
portions e to r of Fig. 2. The squared letters next to the structure including a core made from a material that con-
portions e to r of Fig. 3 indicate the needle beds (F = tracts by heat, and a sheath made from a material having
front needle bed, B = back needle bed) for knitting the a lower fusing point than the core is used for the second
relevant portion. knitting yarn, which is the heat-fusible yarn. A contraction
[0028] As shown in Fig. 3, the knitting is first started 55 starting temperature (lower than the fusing point) of the
from the portion e corresponding to the roots of the toes core of the heat-fusible yarn and the fusing point of the
on the instep side of the inner side knit fabric portion 3, sheath are preferably higher than or equal to 120°C, for
and the portion f of the inner side knit fabric portion 3 example. Such heat-fusible yarn includes, for example,

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DIAFLORA (registered trademark of Toyobo Co. Ltd.). relevant portion. Of course, in the shoe 1, the mixed sec-
[0033] The second knitting yarn is not limited to the tion 20 may be arranged only at a specific portion such
core-sheath structure. For example, the knitting yarn hav- as the portion corresponding to the heel, the portion cor-
ing thermal adhesiveness and the knitting yarn having responding to the arch, and the like.
heat-shrinkable properties may be respectively pre- 5
pared, and such knitting yarns may be paralleled at the DESCRIPTION OF REFERENCE NUMERALS
time of knitting to obtain the second knitting yarn, or such
knitting yarns may be twisted before the knitting to obtain [0037]
the second knitting yarn.
[0034] After the knit fabric (shoe 1) of Fig. 2 having the 10 1 shoe (footwear)
configuration described above is knitted, the inner side 11 foot-inserting part
knit fabric portion 3 of the knit fabric is folded into the e to r portion
interior of the outer side knitted fabric portion 2 through 2 outer side knit fabric portion (base knit fabric
the rib structure section 25, and such knit fabric is placed portion)
over the last and thermally processed at a temperature 15 20 mixed section
of higher than or equal to the fusing point of the sheath 25 rib structure section
of the second knitting yarn, the temperature being higher 3 inner side knit fabric portion (additional knit fab-
than or equal to the contraction starting temperature of ric portion)
the core and lower than the fusing point of the core. Thus,
the outer side knit fabric portion 2 and the inner side knit 20
fabric portion 3 are formed into a shape that exactly lies Claims
along the last with the contraction of the core of the sec-
ond knitting yarn. In this case, the sheath of the fused 1. A footwear knitted seamlessly with a flat knitting ma-
second knitting yarn surrounds the outer circumference chine having at least a pair of a front and a back
of the first knitting yarn and enters the gap of each fila- 25 needle bed, comprising:
ment of the first knitting yarn thus strongly integrating the
core of the second knitting yarn and the first knitting yarn. a base knit fabric portion including a mixed sec-
The fused sheath also has a role of bonding the outer tion and knitted using a first knitting yarn and a
side knit fabric portion 2 and the inner side knit fabric second knitting yarn interwoven along the first
portion 3 together. 30 knitting yarn; wherein
[0035] Finally, the shoe 1 shown in Fig. 1 is obtained the first knitting yarn is a knitting yarn that is not
by detaching, from the last, the knit fabric that has sub- a heat-fusible yarn; and
jected to the thermal processing. The obtained shoe 1 the second knitting yarn is a heat-fusible yarn
has a shape that lies along the last, and excels in shape having thermal adhesiveness and heat-shrink-
retaining property. The shoe 1 excels in the shape re- 35 able properties.
taining property because the first knitting yarn and the
core of the second knitting yarn configure the skeleton 2. The footwear according to claim 1, wherein the heat-
in the outer side knit fabric portion 2, and the shape of fusible yarn includes a core that contracts by heat
the skeleton is retained by the sheath of the fused second and a sheath having a lower fusing point than the
knitting yarn. Further, in the shoe 1, the foot-inserting 40 core.
part 11 can be easily stretched since the foot-inserting
part 11 is the rib structure section 25 made of a knitting 3. The footwear according to claim 1 or 2, wherein the
yarn which is not the heat-fusible yarn, and hence the mixed section is knitted by plating knitting using the
shoe 1 is easy to wear. first knitting yarn and the second knitting yarn.
[0036] The present invention is not limited to the em- 45
bodiment described above, and can be appropriately 4. The footwear according to any one of claims 1 to 3,
modified and implemented within a scope not deviating further comprising:
from the gist of the present invention. For example, unlike
the first embodiment, the shoe 1 without the inner side an additional knit fabric portion arranged on an
knit fabric portion 3 may be realized. Moreover, in the 50 inner side or an outer side of the base knit fabric
mixed section 20 of the outer side knit fabric portion 2, portion when wearing the footwear; wherein
the type and count of the first knitting yarn and second the base knit fabric portion and the additional
knitting yarn may be partially changed. For example, the knit fabric portion are connected seamlessly at
first knitting yarn may be thickened at the portion corre- a position of a foot-inserting part of the footwear.
sponding to the heel to enhance the strength of the rel- 55
evant portion, and the contractility of the second knitting 5. The footwear according to claim 4, wherein
yarn may be increased at the portion corresponding to the mixed section of the base knit fabric portion is
the arch to strengthen the tightening of the foot by the knitted by the plating knitting using the first knitting

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yarn and the second knitting yarn; and
a surface on which the second knitting yarn is ar-
ranged in the mixed section is arranged to face the
additional knit fabric portion.
5
6. The footwear according to any one of claims 1 to 5,
wherein
the footwear retained in a shape held to a shape
corresponding to a last by being thermally processed
while being placed over the last; and 10
in the mixed section, the second knitting yarn fused
by the thermal processing is integrated with the first
knitting yarn.

7. A knitting method for a knit fabric for knitting a knit 15
fabric seamlessly using a flat knitting machine having
at least a pair of a front and a back needle bed facing
each other; wherein
the knit fabric is a footwear;
a first knitting yarn, which is not a heat-fusible yarn, 20
and a second knitting yarn, which is a heat-fusible
yarn having thermal adhesiveness and heat-shrink-
able properties, are prepared; and
at least a part of the footwear is knitted with the first
knitting yarn and the second knitting yarn interwoven 25
along the first knitting yarn.

30

35

40

45

50

55

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10

15

20

25

30

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40

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REFERENCES CITED IN THE DESCRIPTION

This list of references cited by the applicant is for the reader’s convenience only. It does not form part of the European
patent document. Even though great care has been taken in compiling the references, errors or omissions cannot be
excluded and the EPO disclaims all liability in this regard.

Patent documents cited in the description

• JP 3865307 B [0003] • JP 3899269 B [0011]
• JP 2008139710 A [0011]

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EXHIBIT O

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EXHIBIT P

Case 3:18-cv-00067-MFU-JCH Document 49-16 Filed 01/28/19 Page 1 of 8 Pageid#: 756
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EXHIBIT Q

Case 3:18-cv-00067-MFU-JCH Document 49-17 Filed 01/28/19 Page 1 of 4 Pageid#: 764
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Women’s
Knit Flat-
East Rabbit9

Pointed vamp
Seamless
knitted upper
Slim Profile
Sleek outsole

Charlotte
Flats- Calla 10

Rounded toe
Pointed vamp
Slim profile
Sleek outsole

Marketed
toward
women with
bunions

9
https://www.amazon.com/Womens-Knit-Flat-Shoes-
Pink/dp/B07CGRQY9L/ref=sr_1_1?s=apparel&ie=UTF8&qid=1546959405&sr=1-
1&nodeID=7141123011&psd=1
10
https://www.callashoes.co.uk/shop-now
EXHIBIT R
EXHIBIT S

Case 3:18-cv-00067-MFU-JCH Document 49-18 Filed 01/28/19 Page 3 of 11 Pageid#: 770
Grosgrain
Ballet Flats-
Eileen
Fisher21

Rounded toe
Pointed vamp
Slim profile
Sleek outsole
Olivia II
Lined Flat-
Crocs22

Rounded toe
Pointed vamp
Slim profile
Sleek outsole

Faded Glory
Women's
Crochet
Casual Flat-
Walmart23

Rounded toe
Pointed vamp
Crocheted
fabric
Slim profile
Sleek outsole

21
https://www.pinterest.com/pin/236087205439377211/?lp=true\
https://www.lastcall.com/Eileen-Fisher-Grosgrain-Ballerina-Flat-Black/prod43435939/p.prod
22
https://www.crocs.com/p/womens-crocs-olivia-ii-lined-
flat/203428.html?gclid=EAIaIQobChMIyKuo94K53QIVEVcNCh0UjwjJEAQYASABEgLSrvD
_BwE&cid=001&ef_id=WrLONAAAAJI69iua:20180913222546:s
23
https://www.walmart.com/ip/Faded-Glory-Women-s-Crochet-Casual-Flat/49865965
EXHIBIT R
EXHIBIT S

Case 3:18-cv-00067-MFU-JCH Document 49-18 Filed 01/28/19 Page 7 of 11 Pageid#: 774
Ballet Pumps- Levels high
Ideal Zign 39 vamp ballet
flats- ASOS 40
Rounded toe
Pointed vamp Pointed vamp
Slim profile Stretchy textile
upper
Slim profile
Sleek outsole
Frankly- Native- Elf 42
ABEO 41
Rounded toe
Rounded toe Pointed vamp
Pointed vamp Slim profile
Slim profile Sleek outsole
Sleek outsole
Brigette Flats- Lynley-
Renaissance 43 UGG 44

Rounded toe Rounded toe
Pointed vamp Pointed vamp
Slim profile Slim profile
Sleek outsole Sleek outsole
Cleo Star
Daze-
Skechers 45

Rounded toe
Seamless knit
upper
Slim profile
Sleek outsole

39
http://www.ranchonoel.com/ideal-zign-women-black-ballet-pumps-ballet-pumps-breathable-
lp-8209.html
40
https://us.asos.com/asos-design/asos-design-levels-high-vamp-ballet-
flats/prd/10645141?clr=black&SearchQuery=ballet%20flats&gridcolumn=1&gridrow=5&gridsi
ze=4&pge=1&pgesize=72&totalstyles=158
41
https://www.thewalkingcompany.com/frankly-abeo-anthracite/m3058-1191
42
https://www.balielf.com/products/native?variant=213199443
43
http://shop.cbssports.com/CBS_Ohio_State_Buckeyes_Ladies_Shoes_And_Socks/Womens_O
hio_State_Buckeyes_Brigette_Flats
44
https://www.ugg.com/ca/women-sale/lynley/1019568.html
45
https://www.amazon.com/Skechers-Cleo-Star-Daze-Metallic-Engineered-
Skimmer/dp/B07BKM2PRZ/
EXHIBIT
EXHIBITR S

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