No sooner could Lululemon file a motion to kick Nike’s patent infringement lawsuit back to the patent board than the world’s biggest sportswear brand was suing the shoe newbie again, this time for allegedly copying the Swoosh brand’s footwear on what proved to be a very busy Monday in Manhattan for attorneys for both sides.
Unlike most trademark infringement lawsuits filed by Nike and other footwear brands, the latest complaint filed by the Oregon giant in the U.S. District Court of Southern New York accuses Lululemon shoes Chargefeel Mid, Chargefeel Low, Blissfeel and Strongfeel—not because the they resemble Nike brands and might confuse consumers, but because they allegedly used Nike’s patented technique of stitching.
Nike says Lululemon has violated a trio of patents it obtained going back to 2012, the earliest being patent No. 8,266,749, referred to in the court filing as the ‘749 Asserted Patent,’ because the Vancouver-based brand allegedly “… manufactures (or has manufactured for it) those shoes by simultaneously knitting a textile element with a surrounding textile structure, the knitted textile element having at least one knitted texture that differs from a knitted texture in the surrounding knitted textile structure; removing the knitted textile element from the surrounding knitted textile structure; and incorporating the knitted textile element into the article of footwear.”
Charges over violations of patents ending in ‘046’ and ‘484’ are similarly technical in nature. In its prayer for relief, the former Kyrie collaborator asks for remuneration, “adequate to compensate Nike for the infringement, but in no event less than a reasonable royalty,” but more vitally, it wants any future use of these factory techniques forbidden by the court.
Just over a year ago, Nike sued Lululemon for patent infringement related to its fitness tracking product Mirror, accusing it of stealing six pieces of intellectual property related to devices tracking heart rate, calories burned, speed and the like.
On Monday, attorneys for Lululemon filed a motion to stay Nike’s suit, asking U.S. Magistrate Judge Ona T. Wang to kick the case down to the U.S. Patent Trial and Appeal Board for further review.
Lululemon lawyers are likely confident that the patent board or a court would rule the application of Nike’s trademark claim to be far too broad. However, Monday’s filing by the defense does not challenge the merits of Nike’s case; rather it contends that a stay would not harm Nike and the court would only be edified by the patent board’s findings should the case make its way back to federal court.
“A stay will not harm Nike, and Nike’s own conduct contradicts any argument that it will suffer any harm that cannot be fully compensated by money damages,” Lululemon attorneys wrote. “Nike delayed filing suit for several years after the alleged infringing product was first offered for sale and did not seek a preliminary injunction when it did finally file suit.”
Mirror acquired its patent and began selling its product in 2018, describing it as “… the world’s first nearly invisible, interactive home gym featuring live and on-demand fitness classes in a variety of workout genres.”
Under the name Curiouser Products Inc., Mirror was acquired by Lululemon in 2020 for approximately $500 million.
The wall-mounted product starts at $1,495 retail and goes up to $2,395 for the multi-user Mirror Family. It allows users to see themselves exercise, while an LED display allows them to chart their performance, and compare it to others, depending on their subscription, which starts at $39 per month.
Lawyers for Lululemon further argued that transferring the case to the patent board was prudent because in only a small fraction of cases were challenged patents invalidated entirely. Going back to the USPTO also increases the chances of the parties settling their conflicts out of court, defendants argued.
“Defendants’ IPR petitions challenge the validity of each asserted claim in this case and are very strong on the merits. But even a bare review of PTO statistics reveals that some or all of the claims are likely to be invalidated,” defense attorneys wrote, pointing to statistics showing the institution rate in 2022 was 70 percent by patent and 67 percent by petition. “Those same statistics show that the majority of the time where the PTAB institutes review, the PTAB invalidates some or all of the claims, the parties settle, of the patent owner cancels the claims.”
Nike has 14 days from Monday’s filing to file an opposition brief and the defendant’s rebuttal to that is due seven days later before Judge Wang reviews the motion.
Mark Brutzkus, a partner at Stubbs Alderton & Markiles, told Sourcing Journal at the time of Nike filing the lawsuit last January that plaintiff’s appear to be focusing on technologies that allow users to compete with one another via the device. He said Peloton and NordicTrak have products with similar features.
“It seems like the two big issues are that the technology enables users to compete with each other and record their own performance,” Brutzkus said, adding that should Nike prevail entirely in its lawsuit against Lululemon, the outcome might be a world where “everyone’s infringing” on Nike’s territory.
Neither attorneys for Nike nor Lululemon responded to Sourcing Journal requests for comment.
Meanwhile, the sneaker giant closed its Nike Town store in downtown Seattle earlier this month and Twitter reacted to the news with mixed emotions.
One user virtually poured one out for a store that was the scene for years of memories.
Others shared a more pessimistic view of the store’s chances in the city of 730,000.
A diehard Nike fan reminisced about queuing up for sneakers at the now shuttered-location.
The choice of Seattle’s inner recesses was the subject of criticism by one commenter, adding to the national narrative that many urban centers have yet to fully rebound from the pandemic or thrive in the new normal.
Another seemed to agree, saying megabrand chain stores detract from what should be the traffic-driving character of a prime downtown location.
Additional reporting by Jessica Binns.