What a Difference a Break Makes at the ITC

Patent families claim inventions that are similar since the entire family claims the innovative features of a single or limited number of inventions. They do so by relying on the disclosure of a single patent specification that discloses the features of the entire invention. That’s nothing new. And with design patents, this application strategy can be an effective tool to claim the many aspects of an article’s design as the claims are necessarily and statutorily limited to the ornamental features of an invention.

Creating a patent family is a standard practice in patent law, including for design patents. A patent family consists of multiple patent applications that cover related inventions, all tied to the innovative features of a small group of inventions. Each application in the family relies on a consistent disclosure of the invention. This approach is particularly common in design patents, where claims are statutorily limited to the ornamental aspects of an invention, making it important to file multiple applications to capture variations of those visual features comprehensively.

Claiming an invention across a family of related design patents can be both powerful and perilous to enforce. On July 23 at the International Trade Commission, a family of design patents for women’s flats and ballet-style shoes proved more powerful than perilous.ⁱ In Certain Women’s Flats With Colored Outsoles, 337-TA-1428, Order No. 10 (July 23, 2025), fashion brand Gavrieli Brands, LLC, successfully enforced a family of design patents for women’s shoewear with colored outsoles against foreign manufacturers and sellers of similar flat shoewear in online marketplaces.

The administrative law judge (ALJ) held that the respondents infringed eight design patents directed to the claimed designs. Although the eight design patents collectively covered the entire design of the shoewear, each individual design patent covered only one embodiment of the design. To do so, the individual design patents used solid lines and broken lines to delineate the claims. 37 C.F.R. § 1.152. To an unsophisticated observer of the patented designs, the designs may appear almost identical, but the broken lines differentiate each design patent from one another. For example, one of the design patents may claim a certain feature using solid lines, such as an out-sole or midsole of a woman’s shoe, while outlining the rest of the design using broken lines, thus disclaiming those features. A related design patent may claim a different feature, such as the curve of the shoe’s sole, using solid lines while disclaiming the outsole or midsole using broken lines. With a sophisticated patent portfolio, a single shoe could infringe multiple design patents simultaneously.

The design patents in the Gavrieli patent family illustrate this sophisticated approach. For instance, the U.S. Design Patent D681,927 (the “D927 Patent”) and U.S. Design Patent D681,928 (the “D928 Patent”) use solid and broken lines to cover individual aspects of the overall design:

Source: Certain Women’s Flats With Colored Outsoles, 337-TA-1428, Order No. 10 (July 23, 2025) 

That’s how the ALJ found infringement in the 1428 Investigation. The ALJ began his analysis with the most narrow design patents — those having only solid lines — and concluded that the accused products practiced the claims. Having found infringement on the narrowest design patent, the ALJ concluded that the broader design patents must also be infringed.  

In light of the named respondents’ default, the ALJ recommended that the Commission enter a general exclusion order under 19 U.S.C. § 1337(d)(2). To reach this conclusion, the ALJ recognized that despite being served with the complaint and notice of the investigation, the named respondents failed to appear. This strongly suggested to the ALJ that the respondents would be “unlikely to abide by” a limited exclusion order. The numerosity of the named respondents demonstrated Gavrieli’s hardship in enforcing its design patents on an infringer-by-infringer basis and that widespread infringement existed. The tremendous difficulty in identifying the respondents — some named with seemingly random alphanumeric characters like “tb249835650” — also supported the general exclusion order.  

Takeaways 

Armed with design patents differentiated only by a few broken lines, Gavrieli successfully enforced its entire patent portfolio, offering lessons for similar patent owners. Taken together, a design patent family may be difficult to avoid or design around because each design element is claimed by one or more of the patents. That means the number of changes necessary to fall outside the scope of the design patents is more substantial than merely changing the heel or outsole shape. Building a design patent portfolio around a product such that multiple patents cover a range of design elements makes design-arounds more difficult, as well as provides greater assurances of the validity of at least some of the patents. 

ⁱ The respondents did not appear in this investigation, making any arguments against the patents’ validity a minimal barrier for Gavrieli to overcome. This article assumes these patents’ validity, but it should not be forgotten that the overall patentability of the design patents has not been substantially challenged.