DCT
2:17-cv-02904
Deckers Outdoor Corp v. DB Shoe Co LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Deckers Outdoor Corp (Delaware)
- Defendant: DB Shoe Co LLC (California)
- Plaintiff’s Counsel: Blakely Law Group
- Case Identification: 2:17-cv-02904, C.D. Cal., 04/17/2017
- Venue Allegations: Venue is alleged as proper in the Central District of California because the defendant conducts business in the district, the alleged wrongful acts occurred there, and the defendant's principal place of business is located there.
- Core Dispute: Plaintiff alleges that Defendant’s slipper products infringe a design patent covering the ornamental outsole design of Plaintiff's UGG® brand footwear.
- Technical Context: The dispute is in the field of footwear design, where the ornamental appearance of a shoe's outsole can serve as a significant source identifier and a key element of a product's overall trade dress.
- Key Procedural History: The complaint alleges that Plaintiff marks its footwear products with the patent number, which may be relevant for damages calculations. It also alleges pre-suit knowledge and intentional copying to support a claim for willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2000-01-01 | UGG® boots first featured on "Oprah's Favorite Things®" |
| 2004-04-15 | U.S. Patent No. D500,400 Priority Date (Application Filed) |
| 2005-01-04 | U.S. Patent No. D500,400 Issued |
| 2017-04-17 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. D500,400 - "Portion of an Article of Footwear"
- Patent Identification: U.S. Patent No. D500,400, "Portion of an Article of Footwear", issued January 4, 2005.
The Invention Explained
- Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture rather than a technical problem. The patent protects a unique visual design for a footwear outsole, intended to create a distinctive and recognizable appearance for a consumer product (Compl. ¶¶7, 9).
- The Patented Solution: The patent claims the specific ornamental design for a footwear outsole as depicted in its figures ('400 Patent, Claim; FIGS. 1-2). The design is characterized by a tread pattern with blade-like elements radiating from a central point in both the forefoot and heel areas, along with a smooth, oval-shaped feature in the mid-foot region. The claimed design is limited to the features shown in solid lines, while the broken lines showing the rest of the shoe are explicitly disclaimed as part of the protected design ('400 Patent, Description, col. 2:63-67).
- Technical Importance: The complaint alleges this outsole design, which it calls the "Essential Outsole," is used on its highly recognized and commercially successful UGG® brand footwear (Compl. ¶7).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is: "The ornamental design for a portion of an article of footwear, as shown and described." ('400 Patent, col. 2:51-53).
- The scope of this claim is defined by the visual representations in the patent's drawings, particularly the bottom perspective and plan views shown in Figures 1 and 2 ('400 Patent, FIGS. 1-2).
III. The Accused Instrumentality
- Product Identification: Certain slipper products manufactured, marketed, and sold by Defendant DB Shoe Company, LLC (Compl. ¶¶2, 12).
- Functionality and Market Context:
- The accused instrumentalities are footwear products featuring an outsole that Plaintiff alleges is "substantially similar" to the design protected by the ’400 Patent (Compl. ¶21). The complaint includes a side-by-side visual comparison of the patented design, an authentic UGG® product, and the accused product's outsole to illustrate the alleged similarity (Compl. p. 5).
- Plaintiff alleges that Defendant is a competitor that "has copied Deckers’ outsole design in an effort to exploit Deckers’ reputation in the market" (Compl. ¶14).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is whether an "ordinary observer," familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented one. The complaint alleges the accused products meet this standard.
D500,400 Infringement Allegations
| Claim Element (from the design shown in FIGS. 1-2) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental appearance of the outsole tread design. | The complaint alleges the accused outsole is "substantially similar" to the patented design, creating a nearly identical overall visual impression in the eyes of a consumer. | ¶21 | '400 Patent, col. 2:51-53 |
| A tread pattern composed of radiating, blade-like elements in the forefoot and heel portions. | The accused product's outsole is alleged to feature a tread pattern with radiating, blade-like elements that mimic the placement, shape, and overall look of the patented design. | ¶21; p. 5 | '400 Patent, col. 2:59-62 |
| A central, generally oval-shaped element in the mid-foot area, surrounded by the tread pattern. | The accused outsole is alleged to include a central, generally oval-shaped element in the same position and of a similar appearance to that shown in the patented design. | ¶21; p. 5 | '400 Patent, col. 2:59-62 |
- Identified Points of Contention:
- Scope Questions: The primary legal question is whether the overall visual impression of the accused design is "substantially the same" as the claimed design to an ordinary observer. The analysis will focus on the similarities in the designs as a whole, rather than on a comparison of dissected features.
- Technical Questions: A factual question for the court will be whether any minor differences between the accused outsole and the patent drawings are significant enough to prevent an ordinary observer from being deceived. The role and scope of the prior art, which is not detailed in the complaint, will be critical in determining the novelty of the patented design and the significance of any differences.
V. Key Claim Terms for Construction
In design patent litigation, claim construction focuses on the scope of the claimed design as a whole, rather than interpreting specific textual terms. The central issue is defining the visual elements protected by the patent.
- The Term: The scope of the "ornamental design" as shown in the patent's drawings.
- Context and Importance: Determining the scope of the design is the core of the case. The analysis hinges on what visual elements are included in the claim and how they are perceived as a whole. Practitioners may focus on this issue because the outcome of the "ordinary observer" test depends entirely on the visual scope of the patent's protection.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party arguing for broader scope may emphasize that the "ordinary observer" test requires evaluating the design as a whole. They may point to the overall arrangement of radiating blades and the central oval as the dominant visual impression, arguing minor variations in the accused product do not change this overall look ('400 Patent, FIGS. 1-2).
- Evidence for a Narrower Interpretation: A party arguing for narrower scope would highlight the patent's explicit disclaimer of all elements shown in broken lines, which confines the claim strictly to the specific tread pattern shown in solid lines ('400 Patent, Description, col. 2:63-67). They may argue that specific details, such as the exact curvature, thickness, and spacing of the tread elements, define the design, and any deviation in the accused product is therefore significant.
VI. Other Allegations
- Willful Infringement: The complaint alleges willful infringement. This allegation is based on Defendant’s alleged "pre-suit knowledge of Deckers’ rights to the ’400 Patent," which Plaintiff attributes to the widespread popularity of its UGG® products and the patent marking notice ("Pat. No. D500,400") placed on its products (Compl. ¶¶25, 26). The complaint further alleges that Defendant "intentionally copied said design" (Compl. ¶26).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: Applying the "ordinary observer" test, is the accused outsole design "substantially the same" as the ornamental design claimed in the ’400 Patent, considering the designs in their entireties?
- A key evidentiary question will concern the impact of prior art: What does the landscape of prior art for footwear outsoles look like, and how does it inform the scope of the ’400 Patent's design and the significance of any differences between the patented and accused designs?
- A central factual question will be one of intent: Does the evidence support the allegation that the Defendant intentionally copied the patented design with knowledge of the patent, which would be necessary to prove willfulness and potentially entitle the plaintiff to enhanced damages?