DCT
2:23-cv-00575
Deckers Outdoor Corp v. Walmart Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Deckers Outdoor Corporation (Delaware)
- Defendant: Walmart, Inc. (Delaware)
- Plaintiff’s Counsel: Blakely Law Group
- Case Identification: 2:23-cv-00575, C.D. Cal., 01/25/2023
- Venue Allegations: Venue is alleged to be proper in the Central District of California because Defendant conducts continuous business in the district, a substantial part of the events giving rise to the claims occurred in the district, and Plaintiff has been injured there. Patent venue is asserted based on alleged acts of infringement within the district.
- Core Dispute: Plaintiff alleges that certain footwear products sold by Defendant infringe five of its U.S. design patents and misappropriate the trade dress of several of its well-known footwear styles.
- Technical Context: The dispute is in the field of consumer footwear, where unique and recognizable ornamental designs contribute significantly to brand identity and commercial success.
- Key Procedural History: The complaint alleges that Plaintiff marked its products embodying the patented designs with the relevant patent numbers, either directly or via virtual patent marking, thereby providing notice to potential infringers. This allegation forms the basis for the willfulness claims.
Case Timeline
| Date | Event |
|---|---|
| 2008-10-09 | Priority Date (U.S. D594,638) |
| 2009-06-23 | Issue Date (U.S. D594,638) |
| 2017-01-11 | Priority Date (U.S. D814,162) |
| 2018-04-03 | Issue Date (U.S. D814,162) |
| 2018-09-17 | Priority Date (U.S. D867,731) |
| 2019-11-08 | Priority Date (U.S. D927,161) |
| 2019-11-26 | Issue Date (U.S. D867,731) |
| 2020-07-23 | Priority Date (U.S. D901,870) |
| 2020-11-17 | Issue Date (U.S. D901,870) |
| 2021-08-10 | Issue Date (U.S. D927,161) |
| 2023-01-25 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D901,870 - Footwear Upper and Midsole, Issued November 17, 2020
The Invention Explained
- Problem Addressed: The patent addresses the need for a new, original, and ornamental design for footwear (Compl. ¶148; ’870 Patent, Claim).
- The Patented Solution: The patent claims the specific visual appearance of a footwear upper and midsole, characterized by a platform sole, two wide, fuzzy-textured transverse straps across the instep, and an elasticated heel strap extending from the rear strap (’870 Patent, Figs. 1-7). The broken lines in the figures indicate that the specific surface ornamentation and the exact shape of the outsole bottom are not part of the claimed design (’870 Patent, Description).
- Technical Importance: The complaint associates this design with the UGG® "Oh Yeah" slide, a style it describes as commercially successful and well-recognized (Compl. ¶23, ¶47).
Key Claims at a Glance
- The single claim is for "The ornamental design for a footwear upper and midsole, as shown and described" (’870 Patent, Claim). This claim protects the overall visual appearance depicted in the patent's drawings.
U.S. Design Patent No. D867,731 - Footwear Upper and Midsole, Issued November 26, 2019
The Invention Explained
- Problem Addressed: The patent is directed to providing a new, original, and ornamental design for a sport-style sandal (Compl. ¶156; ’731 Patent, Claim).
- The Patented Solution: The claimed design consists of the visual appearance of a sandal upper and midsole featuring a system of straps, including a forefoot strap and an instep strap connected by an asymmetrical tether strap on the lateral side (’731 Patent, Fig. 6). The design also includes triangular connectors for the heel strap and a molded construction (’731 Patent, Figs. 1-2). Broken lines indicate that the outsole and the interior surface texture of the straps are not part of the claimed design (’731 Patent, Description).
- Technical Importance: The complaint alleges this design is embodied in the Teva® "Hurricane Drift" sandal, a product Plaintiff asserts is a "well-recognized and commercially successful" style (Compl. ¶26, ¶73).
Key Claims at a Glance
- The single claim is for "The ornamental design for a footwear upper and midsole, as shown and described" (’731 Patent, Claim). The claim covers the overall visual impression created by the specific arrangement of straps and connectors shown in the drawings.
Multi-Patent Capsule: U.S. Design Patent No. D927,161
- Patent Identification: U.S. Design Patent No. D927,161, Footwear Upper, Issued August 10, 2021.
- Technology Synopsis: The patent claims the ornamental design for a low-cut, pull-on boot upper. The design is characterized by a low shaft height, a distinct topline that is slightly higher in the front than the back, and a visible seam running vertically down the back with a pull tab at the top (’161 Patent, Figs. 1-5; Compl. ¶164).
- Asserted Claims: The single claim for the ornamental design as shown and described.
- Accused Features: The complaint alleges the "Portland Boot Company brand 'Lucy'" boot infringes the ’161 Patent (Compl. ¶22, ¶166).
Multi-Patent Capsule: U.S. Design Patent No. D814,162
- Patent Identification: U.S. Design Patent No. D814,162, Footwear Upper, Issued April 3, 2018.
- Technology Synopsis: The patent claims the ornamental design for a boot upper. Key features include a decorative ribbon that wraps around the shaft and is tied in a bow at the side, from which two pom-poms are suspended, along with a prominent fleece or fur-like cuff (’162 Patent, Figs. 1-4; Compl. ¶172).
- Asserted Claims: The single claim for the ornamental design as shown and described.
- Accused Features: The "Fifth & Luxe brand 'Women's Comfortable Microsuede Winter Boots'" are accused of infringing the ’162 Patent (Compl. ¶24, ¶174).
Multi-Patent Capsule: U.S. Design Patent No. D594,638
- Patent Identification: U.S. Design Patent No. D594,638, Footwear Outsole, Issued June 23, 2009.
- Technology Synopsis: This patent claims the ornamental design for a footwear outsole, not an upper. The design features a sunburst or ray-like tread pattern radiating from a central point on the forefoot and heel areas, with a distinct smooth circular area in the middle of the forefoot tread (’638 Patent, Figs. 1-2; Compl. ¶180).
- Asserted Claims: The single claim for the ornamental design as shown and described.
- Accused Features: The complaint accuses the outsole of the "Portland Boot Company brand 'Lucy'" boot of infringing the ’638 Patent (Compl. ¶22, ¶182).
III. The Accused Instrumentality
Product Identification
The accused products are various footwear items sold by Walmart, including:
- "Kendall + Kylie" brand "Women's Shane Faux Fur Two Band Slipper" (Compl. ¶23)
- "Wonder Nation" brand "EVA Beach Sport Sandal" and "GEORGE" brand "Float Active Strap Sandal" (Compl. ¶26)
- "Portland Boot Company" brand "Lucy" (Compl. ¶22)
- "Fifth & Luxe" brand "Women's Comfortable Microsuede Winter Boot" (Compl. ¶24)
Functionality and Market Context
- The complaint identifies these products as footwear sold through Walmart's retail stores and website (Compl. ¶19, ¶22, ¶23). The complaint presents images of these products, depicting them as consumer shoes and sandals. For example, the complaint provides a photograph of the accused "Kendall + Kylie" slipper, showing its two-strap, open-toe design with a heel strap (Compl. p. 7).
- The complaint alleges that Walmart is a competitor of Deckers and that the accused products were introduced to "exploit Deckers' goodwill and the reputation" of its various footwear brands, such as UGG® and Teva® (Compl. ¶20).
IV. Analysis of Infringement Allegations
D901,870 Infringement Allegations
| Claim Element (from the single claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a footwear upper and midsole, as shown and described. | The accused "Kendall + Kylie... Slipper" is alleged to have a "substantially similar" design, including two wide, fuzzy transverse straps, a platform sole, an open toe, and a heel strap. A photograph provided in the complaint shows the accused product's overall configuration. | ¶23, ¶150 | Figs. 1-7 |
- Identified Points of Contention:
- Scope Questions: The primary question will be whether the overall ornamental design of the accused "Kendall + Kylie" slipper is "substantially the same" as the claimed design in the ’870 Patent from the perspective of an ordinary observer. The analysis may focus on the visual effect of the proportions, strap placement, and sole shape.
- Technical Questions: A factual question for the court will be how an ordinary purchaser perceives the combination of features. The complaint's visual evidence, such as the image of the pink "Kendall + Kylie" slipper, depicts a branded heel strap, which differs from the unbranded strap shown in the patent drawings; the impact of this difference on the overall visual impression may be a point of dispute (Compl. p. 7).
D867,731 Infringement Allegations
| Claim Element (from the single claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a footwear upper and midsole, as shown and described. | The accused "Wonder Nation" and "GEORGE" brand sandals are alleged to bear a "substantially similar" design. The complaint provides images showing their strap configuration, including a forefoot strap, an instep strap, a heel strap, and an asymmetrical side tether. | ¶26, ¶158 | Figs. 1-7 |
- Identified Points of Contention:
- Scope Questions: A central question will be whether the specific arrangement and shape of the straps and connectors on the accused sandals are substantially similar to the design claimed in the ’731 Patent. The patent disclaims the outsole via broken lines, focusing the infringement analysis on the upper and midsole design.
- Technical Questions: The court will need to compare the visual impression of the accused products, as shown in the complaint's photographs of the "Wonder Nation" and "GEORGE" sandals, with the patent figures (Compl. p. 9). The degree of similarity in the angles of the straps, the shape of the triangular connectors, and the overall molded appearance will be key factual determinations.
V. Key Claim Terms for Construction
As this case involves design patents, formal claim construction focuses on the scope of the claimed ornamental designs as a whole, rather than on discrete text-based terms. The central "term" for construction is the claim itself.
Term: "The ornamental design for a footwear upper and midsole, as shown and described." (from '870 Patent)
- Context and Importance: The scope of this claimed design is the core of the infringement analysis. The determination of what features are included in the overall "look and feel" protected by the patent, and what features are disclaimed, will be critical. Practitioners may focus on this as the comparison to the accused product's design will hinge on the boundaries of the patent's protection.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent uses broken lines to disclaim the specific surface texture of the fuzzy straps and the bottom tread of the outsole (’870 Patent, Description, Figs. 1, 7). This suggests the claim is not limited to a particular material texture or tread pattern, and could be interpreted to cover a variety of slippers with the same general shape and strap configuration.
- Evidence for a Narrower Interpretation: The specific arrangement of two parallel, thick instep straps combined with a platform profile and a heel strap is consistently shown in solid lines across all relevant figures (’870 Patent, Figs. 1-6). This suggests that the combination and relative proportions of these elements as a whole constitute the core of the design, and a design lacking this specific combination might be argued to fall outside the claim's scope.
Term: "The ornamental design for a footwear upper and midsole, as shown and described." (from '731 Patent)
- Context and Importance: Defining the scope of this design is essential for comparing it to the accused sport sandals. The visual weight of each element—the asymmetrical tether, the triangular connectors, the strap widths—will inform the "ordinary observer" test.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The use of broken lines to disclaim the entire outsole and the inner lining of the straps focuses the design on the external configuration of the straps and midsole (’731 Patent, Description, Figs. 1-7). This could support an argument that the patent covers any sandal with a visually similar strap architecture, regardless of the sole design.
- Evidence for a Narrower Interpretation: The design repeatedly shows a specific asymmetrical tether strap connecting the forefoot and instep straps only on the lateral side (’731 Patent, Fig. 6). The consistent depiction of this unique feature in solid lines suggests it is a critical and potentially limiting aspect of the claimed ornamental design.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain specific allegations of indirect patent infringement (inducement or contributory infringement). The patent claims for relief are asserted for direct infringement under 35 U.S.C. § 271 (Compl. ¶150, ¶158, ¶166, ¶174, ¶182).
- Willful Infringement: The complaint alleges that Defendant's infringement was willful for all five asserted patents. The basis for this allegation is that Deckers marked its own products with the relevant patent numbers in compliance with 35 U.S.C. § 287, allegedly putting Defendant on notice of the patents (Compl. ¶153, ¶161, ¶169, ¶177, ¶185). The complaint alleges that Defendant's acts were taken "despite having been put on notice through Deckers' patent marking" and with knowledge of an "objectively high likelihood" of infringement (e.g., Compl. ¶153).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual similarity: For each asserted design patent, would an ordinary observer, giving the attention a typical footwear purchaser gives, be deceived into purchasing one of Walmart's accused products believing it to be one of Deckers' products? This will involve a side-by-side comparison of the overall ornamental appearance of the patented designs and the accused products.
- A key question of design scope will be the extent to which the elements shown in broken lines (e.g., outsoles, surface textures) affect the infringement analysis. The court will need to determine how to properly filter out these disclaimed features when comparing the overall visual impression of the claimed designs to the accused products.
- A central evidentiary question regarding willfulness will be whether Plaintiff can establish that Defendant had pre-suit knowledge of the asserted patents. The sufficiency of Plaintiff's alleged "patent marking" program to provide such notice under 35 U.S.C. § 287 will likely be a significant point of contention.