DCT
2:18-cv-02337
Deckers Outdoor Corp v. Marks Spencer PLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Deckers Outdoor Corporation (Delaware)
- Defendant: Marks and Spencer PLC (United Kingdom)
- Plaintiff’s Counsel: Blakely Law Group
- Case Identification: 2:18-cv-02337, C.D. Cal., 03/22/2018
- Venue Allegations: Venue is asserted based on Defendant conducting business in California and the alleged wrongful acts and resulting injury occurring within the judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s children's footwear infringes a design patent and associated trade dress for the ornamental appearance of Plaintiff's UGG "Bailey Button" boot.
- Technical Context: The dispute is in the field of footwear design, centering on the specific ornamental and non-functional visual features of a popular style of suede and fleece-lined boot.
- Key Procedural History: The complaint alleges that Plaintiff marks its products embodying the patented design with the patent number, a fact that may be relevant to future claims for damages and willfulness. It also notes the design has been the subject of infringement by unspecified third parties.
Case Timeline
| Date | Event |
|---|---|
| 2008-10-27 | U.S. Patent No. D599,999 Application Filed |
| 2009 | Plaintiff introduced the UGG® Bailey Button boot |
| 2009-09-15 | U.S. Patent No. D599,999 Issued |
| 2018-03-22 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. D599,999 - "Portion of a Footwear Upper"
- Patent Identification: U.S. Patent No. D599,999, "Portion of a Footwear Upper," issued September 15, 2009.
The Invention Explained
- Problem Addressed: Design patents do not solve technical problems but instead protect new, original, and ornamental designs for an article of manufacture. The goal is to create a novel and aesthetically distinct visual appearance for a product, in this case, footwear (Compl. ¶¶ 22, 24).
- The Patented Solution: The patent claims the specific ornamental design for a portion of a boot's upper. The design consists of the visual appearance of an overlapping side panel with a curved top edge, exposing a fleece-type lining along the seam and the top-line of the boot shaft, and secured by a single prominent button-and-loop closure ('999 Patent, FIGS. 1-2, 6). The claim is for the design "as shown and described," with broken lines in the figures indicating that the sole and lower portion of the boot are not part of the claimed design ('999 Patent, col. 2:13-16).
- Technical Importance: The complaint alleges this design became a well-recognized and commercially successful style, contributing to the UGG brand's status and consumer recognition (Compl. ¶¶ 23, 25).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is: "The ornamental design for a portion of a footwear upper, as shown and described." ('999 Patent, Claim).
- The core ornamental elements of the design, as depicted in the patent's solid lines, include:
- The overlapping of front and rear panels on the lateral side of the boot shaft.
- Curved top edges on the overlapping panels.
- Exposed fleece-type lining edging the overlapping panels and the top of the boot shaft.
- A single button and elastic loop closure positioned on the lateral side adjacent to the overlapping panels.
III. The Accused Instrumentality
Product Identification
- The "Accused Products" are footwear for children sold under Defendant's "M&S Kids" line (Compl. ¶14).
Functionality and Market Context
- The complaint identifies the Accused Products as boots sold via Defendant's website, www.marksandspencer.com, which is accessible to U.S. consumers (Compl. ¶14). The complaint provides a photograph of an exemplar Accused Product, described as having been purchased from the website and shipped into the judicial district (Compl. ¶15, p. 4). This image depicts a suede-style boot with a side-button closure and fleece-like trim. Plaintiff alleges that Defendant, a competitor, introduced these products to exploit the market reputation established by Plaintiff's "UGG Bailey Button Boot" (Compl. ¶¶16, 30).
IV. Analysis of Infringement Allegations
The complaint alleges that the Accused Products bear a design that is "substantially similar" to the design claimed in the '999 Patent (Compl. ¶46). The complaint provides a photograph of the accused boot, showing its suede-like exterior, side button, and fleece-like trim (Compl. p. 4).
D599,999 Infringement Allegations
| Claim Element (from the design "as shown and described") | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An ornamental design for a portion of a footwear upper, comprising overlapping panels on the lateral side of the boot shaft. | The accused boot features overlapping panels on its side, as depicted in the provided photograph. | ¶46; p. 4 | col. 2:6-7 |
| Curved top edges on the overlapping panels. | The overlapping side panel on the accused boot has a curved top edge. | ¶46; p. 4 | col. 2:6-7 |
| Exposed fleece-type lining edging the overlapping panels and the top of the boot shaft. | The accused boot displays an exposed, fleece-like lining material along the edge of the overlapping panel and around the top opening of the boot. | ¶46; p. 4 | col. 2:6-7 |
| A single button and loop closure on the lateral side. | The accused boot features a single button closure on its lateral side, fastening the overlapping panel. | ¶46; p. 4 | col. 2:6-7 |
- Identified Points of Contention:
- Scope Questions: The central question for design patent infringement is whether, in the eye of an ordinary observer, the accused design is substantially the same as the claimed design. The analysis will require comparing the overall visual impression of the Accused Product with the specific ornamental features shown in solid lines in the '999 Patent figures, while disregarding the elements shown in broken lines (the sole and lower portion of the boot).
- Technical Questions: A court will examine whether any differences in the proportions, the specific curvature of the panels, the style of the button, or the texture of the materials between the Accused Product and the patented design are significant enough to prevent a finding that the two designs are "substantially similar." The complaint alleges substantial similarity, but the ultimate determination will depend on a side-by-side visual comparison.
V. Key Claim Terms for Construction
In design patent litigation, the "claim" is the design itself as depicted in the drawings, and construction focuses on identifying the scope of the protected design.
- The Term: "portion of a footwear upper"
- Context and Importance: This term, read in conjunction with the drawings, defines the boundaries of the claimed design. The distinction between the solid lines (the claimed "portion") and broken lines (the unclaimed environment) is critical. Practitioners may focus on this distinction because the infringement analysis must be based only on the claimed elements, filtering out the unclaimed boot sole and vamp from the comparison.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim is not limited to any specific size, color, or particular material (e.g., "suede" or "sheepskin"), but rather to the ornamental configuration itself. This may allow the claim to read on boots made of various materials that have the same overall visual appearance.
- Evidence for a Narrower Interpretation: The precise scope is defined by the shapes, curves, and arrangement of the elements shown in solid lines in FIGS. 1-6. The patent specification explicitly states: "The broken lines in FIGS. 1-7 represent portions of the footwear that form no part of the claimed design." ('999 Patent, col. 2:13-15). This statement strictly limits the protected design to the upper side-opening configuration, and any significant deviation in an accused product from these specific visual details could support a non-infringement argument.
VI. Other Allegations
- Willful Infringement: The complaint alleges that Defendant's infringement was willful and intentional (Compl. ¶52). This allegation is based on the asserted "widespread popularity and recognition of Deckers' Bailey Button boot" and the allegation that Deckers marks its footwear with the '999 Patent number in compliance with 35 U.S.C. § 287 (Compl. ¶¶50, 51). Plaintiff avers that these facts establish Defendant had pre-suit knowledge of the patent and "intentionally copied said design" (Compl. ¶51).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: From the perspective of an ordinary footwear purchaser, is the overall ornamental appearance of the accused Marks and Spencer boot substantially the same as the specific design claimed in the '999 Patent, when viewing the design as a whole and properly filtering out the unclaimed portions shown in broken lines?
- A key secondary question will be one of intent and knowledge: Can Plaintiff prove that Defendant had pre-suit knowledge of the '999 Patent, either actually or constructively via patent marking, and intentionally copied the design? The answer will determine potential liability for enhanced damages under 35 U.S.C. § 284 or an award of the infringer’s total profits under 35 U.S.C. § 289, a remedy unique to design patents.