Michael A. Berta

Berta is the senior member of his firm’s IP team on the West Coast, with clients ranging from Adobe, Google and Tesla to Crocs Inc., the Colorado-based maker of sandals and clogs.

Sometimes, he said, “general patent litigation just goes on and on and on.” He has good reason to feel that way. He has been litigating one set of matters for Crocs for 16 years. Crocs Inc. v. Effervescent Inc., 1:06-cv-00605 (D. Colo., filed April 3, 2006).

The lawsuit accuses several companies of selling knockoffs of Crocs’ classic foam sandals that infringe its footwear patents. Berta obtained a general exclusion order from the ITC against some of the competing shoes in 2011. A number of counterclaims brought against the company in the litigation were disposed of in 2017.

Finally, last September, he brought in a summary judgment that ended a counterclaim accusing Crocs and some employees of false advertising under the Lanham Act. Berta said he never believed that claim was strong, but it potentially could have affected Crocs’ business broadly. “To prevail on that as a matter of law was a pretty big deal for the company,” he said. “We’re pretty happy to put to bed all these challenges that came out of the first round of asserting Crocs’ IP.”

One of the competitors sued Crocs in 2017. Berta and his team won motions to dismiss the case, and they followed up with a successful motion for sanctions under the federal courts’ Rule 11. The 9th Circuit upheld the sanctions in a short opinion last May. USA Dawgs Inc. v. Crocs Inc., 19-16296 (9th Cir., decis. May 27, 2021).

Both Crocs personnel and Berta now work from time to time with Customs and Border Patrol to help its agents reject knockoffs trying to be shipped into this country. “I’ve gone to Long Beach … and talked to them about the patents and what we think they cover. It’s interesting,” he said.

“The idea that there’s actually personnel enforcing IP at the border is something I think most people don’t think about.”

On a completely different front, Berta and a partner led an Arnold & Porter team that wrote an amicus brief for several domestic violence groups in the U.S. Supreme Court’s pending Second Amendment case. New York State Rifle & Pistol Association Inc. v. Bruen, 20-843 (U.S., filed Dec. 17, 2020).

Berta said he was glad to work on the project because he has an interest in gun issues and because he has been sensitized to the issue of domestic violence from his sister’s work in the field. The brief makes the point that “throwing guns in the mix with domestic violence invariably, absolutely, unquestionably makes everything a lot more deadly,” he said.

– Don DeBenedictis