On April 5, 2021, Rothy’s, Inc. (“Rothy’s” or “Plaintiff”), represented by Dana Johannes Finberg of Arent Fox LLP, filed an intellectual property lawsuit against Defendant Birdies, Inc. (“Birdies” or “Defendant”) seeking permanent injunctive relief and other damages for alleged infringement of ornamental design patents owned by Plaintiff. This case was filed in the U.S. District Court for the Northern District of California, San Francisco Division with Judge Nathanael M. Cousins presiding.
The Plaintiff alleged that “Rothy’s owns exclusive rights in the ornamental designs claimed in United States Design Patent Nos. D885,016, D885,017, D909,718, and D870,425 (collectively, the “Rothy’s Asserted Design Patents”). The Plaintiffs have provided a description of all the designs in their submissions including but not limited comparison of Birdie’s infringing products with that of Rothy’s original designs.”
In the complaint, Rothy’s has alleged that “Birdies has used and continues to use the claimed designs of the Rothy’s Asserted Design Patents, without Rothy’s permission, on shoes that Birdies makes, uses, offers for sale, sells, and/or imports into the United States.” “Instead of pursuing independent product development, Birdies has chosen to copy Rothy’s innovative and distinctive product designs in violation of Rothy’s valuable intellectual property rights. Consumers have immediately associated Birdies’ newly-launched, infringing shoe with Rothy’s (as evident from annexure Instagram posts).”
Rothy’s has further alleged “in respect of Design Patents “Birdies’ bad faith intent in their copying of Rothy’s designs is underscored by their propensity to draw liberal “inspiration” from Rothy’s products, leading up to the release of the Infringing Product. For example, in or around, July 2020, Birdies released a colorway pattern of its shoe model “The Swan,” that appears to have been derived from a colorway pattern offered for Rothy’s “Marta Ferri x Rothy’s” The Flat shoes, which had been released in October 2019.”
There are four claims for relief laid down by the Rothy’s. The first claim is for the alleged infringement of U.S. Patent No. D885,016 under 35 U.S.C. § 283. The second claim is for the alleged infringement of U.S. Patent No. D885,017 unless under 35 U.S.C. § 271. The third claim is for the alleged infringement of U.S. Patent No. D909,718 unless under 35 U.S.C. § 271. The fourth claim is for the alleged infringement of U.S. Patent No. D870,425 unless under 35 U.S.C. § 271.
In its prayer for relief, Rothy’s has requested the Court to adjudge that Birdies has infringed the Rothy’s Asserted Design Patents by making, using, offering to sell, selling, and/or importing its infringing shoes into the United States; and thus, enjoin all connected persons from infringing the Rothy’s Asserted Design Patents. It has further requested the Court to order requiring Birdies to pay Rothy’s damages adequate to compensate Rothy’s for Birdies’ alleged infringements of the Rothy’s Asserted Design Patents pursuant to 35 U.S.C. § 284, or the total profit made by Birdies from its alleged infringements of the Rothy’s Asserted Design Patents pursuant to 35 U.S.C. § 289. It has further requested that the Rothy’s be awarded damages up to three times the amount found or assessed, its reasonable attorneys’ fees along with cost & expenses of the action, pre-judgment and post-judgment interest and such other relief as the Court may deem just & proper.
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3:21-CV-02438
04/05/2021
Disposed - Other Disposed
Intellectual Property - Patent
Vince Chhabria
Alex G. Tse
Rothy's, Inc.
Birdies, Inc.
Kasey Koballa
Steven David Moore
Megan E. Bussey
Taylor Jacqueline Pfingst
Kevin Michael Bell
David K. Tellekson
Shannon Elizabeth Turner
Deena Julia Greenberg Feit
Gregory P. Adams
Jessica Andrea Martinez Kaempf
(#204) Order by Judge Vince Chhabria granting #203 Motion to Approve Consent Judgment. The Clerk of the Court is directed to close the case. (vclc1, COURT STAFF) (Filed on 8/25/2022) (Entered: 08/25/2022)
Exhibit 1
Main Document
Exhibit B in Support of Reply
Reply In Support of Motion for Relief Under Rule 56(d)
Main Document
Exhibit J
Exhibit B
(#196) ORDER re: Motions to Seal. Signed by Judge Vince Chhabria on 06/24/2022. (vclc1, COURT STAFF) (Filed on 6/24/2022) (Entered: 06/24/2022)
Civil Cover Sheet
Exhibit Exh D
Exhibit Exh C
Exhibit Exh B
Exhibit Exh A
Docket(#204) Order by Judge Vince Chhabria granting #203 Motion to Approve Consent Judgment. The Clerk of the Court is directed to close the case. (vclc1, COURT STAFF) (Filed on 8/25/2022) (Entered: 08/25/2022)
[-] Read LessDocket(#203) Joint MOTION to Approve Consent Judgment Joint Motion for Entry of Stipulated Final Judgment and Consent Permanent Injunction filed by Rothy's, Inc.(a Delaware corporation ). (Attachments: #1 Exhibit 1)(Moore, Steven) (Filed on 8/22/2022) (Entered: 08/22/2022)
[-] Read LessDocket(#202) NOTICE by Rothy's, Inc. re #196 Order, Terminate Motions (Attachments: #1 Reply In Support of Motion for Relief Under Rule 56(d), #2 Exhibit B in Support of Reply)(Moore, Steven) (Filed on 7/8/2022) (Entered: 07/08/2022)
[-] Read LessDocket(#201) EXHIBITS re #196 Order, Terminate Motions filed byRothy's, Inc.. (Attachments: #1 Exhibit B, #2 Exhibit I, #3 Exhibit J)(Related document(s) #196 ) (Moore, Steven) (Filed on 7/8/2022) (Entered: 07/08/2022)
[-] Read LessDocket(#200) EXHIBITS re #196 Order, Terminate Motions filed byRothy's, Inc.. (Attachments: #1 Exhibit A)(Related document(s) #196 ) (Moore, Steven) (Filed on 7/8/2022) (Entered: 07/08/2022)
[-] Read LessDocket(#199) EXHIBITS re #196 Order, Terminate Motions filed byRothy's, Inc.. (Attachments: #1 Exhibit 8 - As Redacted, #2 Exhibit 9 - As Redacted, #3 Exhibit 10, #4 Exhibit 11, #5 Exhibit 13, #6 Exhibit 15, #7 Exhibit 16, #8 Exhibit 17 - As Redacted, #9 Exhibit 18 - As Redacted, #10 Exhibit 19 - As Redacted, #11 Exhibit 24, #12 Exhibit 25 - As Redacted, #13 Exhibit 26 - As Redacted, #14 Exhibit 27, #15 Exhibit 28 - As Redacted, #16 Exhibit 29 - As Redacted, #17 Exhibit 30 - As Redacted, #18 Exhibit 31 - As Redacted, #19 Exhibit 32 - As Redacted, #20 Exhibit 33, #21 Exhibit 34, #22 Exhibit 35, #23 Exhibit 38 - As Redacted, #24 Exhibit 39 - As Redacted, #25 Exhibit 40 - As Redacted, #26 Exhibit 41, #27 Exhibit 42 - As Redacted, #28 Exhibit 43, #29 Exhibit 44, #30 Exhibit 45)(Related document(s) #196 ) (Moore, Steven) (Filed on 7/8/2022) (Entered: 07/08/2022)
[-] Read LessDocket(#198) NOTICE by Rothy's, Inc. re #196 Order, Terminate Motions (Attachments: #1 Declaration of W Roth In Support of Plaintiff's Opp to Defendant's MSJ, as Redacted, #2 Plaintiff's Opposition to MSJ, as Redacted, #3 Declaration of C de Baere in Support of MSJ, as Redacted)(Moore, Steven) (Filed on 7/8/2022) (Entered: 07/08/2022)
[-] Read LessDocket(#197) NOTICE by Birdies, Inc. re #196 Order, Terminate Motions [Birdies, Inc.'s Notice of Filing Unredacted Documents Pursuant to Court Order (Dkt. 196)] (Attachments: #1 Defendant Birdies, Inc.'s Reply in Support of Its Motion for Summary Judgment of Invalidity, or, in the Alternative, Noninfringement, #2 Exhibit 55 to the Declaration of Jessica M. Kaempf)(Adams, Gregory) (Filed on 7/8/2022) (Entered: 07/08/2022)
[-] Read LessDocket(#196) ORDER re: Motions to Seal. Signed by Judge Vince Chhabria on 06/24/2022. (vclc1, COURT STAFF) (Filed on 6/24/2022) (Entered: 06/24/2022)
[-] Read LessDocket(#195) Order by Judge Vince Chhabria granting #194 joint stipulation to modify the case schedule. Close of Expert Discovery due by 10/21/2022. Close of Fact Discovery due by 9/9/2022. Dispositive Motion due by 10/28/2022. Opposition due by 11/22/2022. Reply due by 12/5/2022. Motion Hearing set for 12/15/2022 09:30 AM in San Francisco, Courtroom 04, 17th Floor before Judge Vince Chhabria. (vclc1, COURT STAFF) (Filed on 6/24/2022) (Entered: 06/24/2022)
[-] Read LessDocket(#10) REASSIGNED CASE - NOTICE OF NEW HEARING DATE: You are notified that the Court has scheduled an Initial Case Management Conference before Judge Vince Chhabria upon reassignment. For a copy of Judge Chhabria's Standing Order and other information, please refer to the Court's website at www.cand.uscourts.gov. Case Management Statement due by 6/30/2021. Initial Case Management Conference set for 7/7/2021, 02:00 PM, by Videoconference Only. This proceeding will be held via a Zoom webinar.Webinar Access: All counsel, members of the public, and media may access the webinar information at #https://www.cand.uscourts.gov/vc Court Appearances:< /b< Advanced notice is required of counsel or parties who wish to be identified by the court as making an appearance or will be participating in the argument at the hearing. A list of names and emails must be sent to the CRD at vccrd@cand.uscourts.gov no later than Thursday, July 1, 2021, by no later than 10:00 a.m.General Order 58. Persons granted access to court proceedings held by telephone or videoconference are reminded that photographing, recording, and rebroadcasting of court proceedings, including screenshots or other visual copying of a hearing, is absolutely prohibited.Zoom Guidance and Setup: #https://www.cand.uscourts.gov/zoom/. (This is a text-only entry generated by the court. There is no document associated with this entry.)(knmS, COURT STAFF) (Filed on 4/8/2021) (Entered: 04/08/2021)
[-] Read LessDocket(#9) ORDER REASSIGNING CASE. Case reassigned using a proportionate, random, and blind system pursuant to General Order No. 44 to Judge Vince Chhabria for all further proceedings. Notice: The assigned judge participates in the Cameras in the Courtroom Pilot Project. See General Order No. 65 and http://cand.uscourts.gov/cameras. Magistrate Judge Nathanael M. Cousins no longer assigned to case. Reassignment Order signed by Clerk on 4/8/2021. (Attachments: #1 Notice of Eligibility for Video Recording)(bwS, COURT STAFF) (Filed on 4/8/2021) (Entered: 04/08/2021)
[-] Read LessDocket(#8) CLERK'S NOTICE OF IMPENDING REASSIGNMENT TO A U.S. DISTRICT COURT JUDGE: The Clerk of this Court will now randomly reassign this case to a District Judge because a party has not consented to the jurisdiction of a Magistrate Judge. You will be informed by separate notice of the district judge to whom this case is reassigned. ALL HEARING DATES PRESENTLY SCHEDULED BEFORE THE CURRENT MAGISTRATE JUDGE ARE VACATED. This is a text only docket entry; there is no document associated with this notice. (lmh, COURT STAFF) (Filed on 4/7/2021) (Entered: 04/07/2021)
[-] Read LessDocket(#7) REPORT on the filing or determination of an action regarding a Patent or Trademark (cc: form mailed to register). (Finberg, Dana) (Filed on 4/7/2021) (Entered: 04/07/2021)
[-] Read LessDocket(#6) CONSENT/DECLINATION to Proceed Before a US Magistrate Judge by Rothy's, Inc... (Finberg, Dana) (Filed on 4/7/2021) (Entered: 04/07/2021)
[-] Read LessDocket(#5) Summons Issued as to Birdies, Inc. (sfbS, COURT STAFF) (Filed on 4/6/2021) (Entered: 04/06/2021)
[-] Read LessDocket(#4) Initial Case Management Scheduling Order with ADR Deadlines: Case Management Statement due by 6/30/2021. Initial Case Management Conference set for 7/7/2021 10:00 AM in San Jose, Courtroom 5, 4th Floor. (sfbS, COURT STAFF) (Filed on 4/6/2021) (Entered: 04/06/2021)
[-] Read LessDocket(#3) Case assigned to Magistrate Judge Nathanael M. Cousins. Counsel for plaintiff or the removing party is responsible for serving the Complaint or Notice of Removal, Summons and the assigned judge's standing orders and all other new case documents upon the opposing parties. For information, visit E-Filing A New Civil Case at http://cand.uscourts.gov/ecf/caseopening.Standing orders can be downloaded from the court's web page at www.cand.uscourts.gov/judges. Upon receipt, the summons will be issued and returned electronically. Counsel is required to send chambers a copy of the initiating documents pursuant to L.R. 5-1(e)(7). A scheduling order will be sent by Notice of Electronic Filing (NEF) within two business days. Consent/Declination due by 4/19/2021. (mbcS, COURT STAFF) (Filed on 4/5/2021) (Entered: 04/05/2021)
[-] Read LessDocket(#2) Proposed Summons. (Finberg, Dana) (Filed on 4/5/2021) (Entered: 04/05/2021)
[-] Read LessDocket(#1) COMPLAINT against Birdies, Inc. ( Filing fee $ 402, receipt number 0971-15796133.). Filed byRothy's, Inc.. (Attachments: #1 Exhibit Exh A, #2 Exhibit Exh B, #3 Exhibit Exh C, #4 Exhibit Exh D, #5 Civil Cover Sheet)(Finberg, Dana) (Filed on 4/5/2021) (Entered: 04/05/2021)
[-] Read Less