DCT
2:23-cv-09850
Deckers Outdoor Corp v. Zoetop Business Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Deckers Outdoor Corporation (Delaware)
- Defendant: Zoetop Business Co., Limited (Hong Kong); Shein US Services, LLC (Delaware)
- Plaintiff’s Counsel: Blakely Law Group
- Case Identification: 2:23-cv-09850, C.D. Cal., 11/20/2023
- Venue Allegations: Venue is asserted based on Defendants' alleged business operations, commission of infringing acts, and sales of accused products directed to residents within the Central District of California.
- Core Dispute: Plaintiff alleges that footwear products sold by Defendants under the "Shein" brand infringe a design patent covering the ornamental appearance of a sport sandal.
- Technical Context: The lawsuit concerns the ornamental design of consumer footwear, a market where distinctive and recognizable aesthetics can be a significant commercial driver.
- Key Procedural History: The complaint alleges that Plaintiff provided constructive notice of its patent rights through patent marking on its commercial products prior to the lawsuit's filing.
Case Timeline
| Date | Event |
|---|---|
| 2018-09-17 | U.S. Patent No. D867,731 Priority Date (Application Filing) |
| 2019 | Plaintiff introduces Teva® Hurricane Drift sandal, an alleged commercial embodiment of the patent |
| 2019-11-26 | U.S. Patent No. D867,731 Issues |
| 2023-11-20 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D867,731 - "FOOTWEAR UPPER AND MIDSOLE"
- Patent Identification: U.S. Design Patent No. D867,731, "FOOTWEAR UPPER AND MIDSOLE", issued November 26, 2019.
The Invention Explained
- Problem Addressed: As a design patent, the '731 Patent does not articulate a technical problem. Rather, it addresses the challenge of creating a new, original, and ornamental design for footwear in a competitive market, which the complaint alleges is "unique and inherently distinctive" (Compl. ¶22).
- The Patented Solution: The patent protects the specific visual appearance of a footwear upper and midsole, not its functional or utilitarian features (D'731 Patent, Claim). The claimed design, illustrated in solid lines in the patent's figures, consists of a sport sandal aesthetic featuring a particular arrangement of straps—including a toe strap, an instep strap, and a heel strap—connected by an asymmetric tether strap on the sandal's lateral side, with triangular connection points (D'731 Patent, Fig. 1, 6). The design is for the upper and midsole only; the outsole is depicted in broken lines and is not part of the claimed design (D'731 Patent, DESCRIPTION, Fig. 7).
- Technical Importance: The complaint alleges the design is a "commercially successful" style that has achieved "widespread acceptance and recognition" (Compl. ¶25, ¶27), suggesting its ornamental features provide a distinct and valuable appearance in the footwear market.
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is: "The ornamental design for a footwear upper and midsole, as shown and described" (D'731 Patent, Claim).
- The scope of the claim is defined by the visual characteristics of the design as depicted in the solid lines of Figures 1-6 of the patent.
III. The Accused Instrumentality
Product Identification
- The complaint identifies the accused products as "at least" the footwear sold under the name "Shein" "Women Metal & Rhinestone Decor Sports Sandals Hook-and-loop Fastener Fashion Sandals" with SKU s sx2210252296567737 (Compl. ¶17).
Functionality and Market Context
- The accused instrumentality is a sport-style sandal offered for sale on Defendants' e-commerce website, us.shein.com (Compl. ¶17, ¶20). The complaint places the product in the context of a "fast fashion" business model (Compl. ¶14).
- Plaintiff alleges that Defendants are its competitors and introduced the accused products "in an effort to exploit Deckers' goodwill and the reputation of the" corresponding Teva® brand sandal (Compl. ¶15, ¶28). The complaint includes a visual showing Plaintiff's product, the accused product, and a patent figure side-by-side. This visual from the complaint presents Plaintiff’s Teva® Hurricane Drift sandal next to the Accused Product and a drawing from the '731 Patent to illustrate their alleged similarity (Compl. p. 6).
IV. Analysis of Infringement Allegations
The complaint does not contain a claim chart. The infringement allegation for a design patent centers on the "ordinary observer" test, which asks whether an ordinary observer would find the design of the accused product to be substantially the same as the patented design.
The complaint alleges that Defendants have "produced, imported into the U.S., distributed, advertised, marketed, offered for sale, and/or sold within the United States the Accused Products which bear a design substantially similar to the ornamental design of the '731 Patent" (Compl. ¶69). The core of the infringement claim is that the overall visual impression of the accused Shein sandal is substantially the same as the claimed design in the '731 Patent, such that an ordinary purchaser would be deceived (Compl. ¶69, ¶73).
- Identified Points of Contention:
- Overall Appearance vs. Minor Differences: The central question will be whether the overall visual appearance of the accused sandal is "substantially similar" to the patented design. The defense may focus on any perceived differences in strap proportion, texture, or midsole contour to argue that the designs create different overall impressions.
- Impact of Additional Features: The name of the accused product includes "Metal & Rhinestone Decor" (Compl. ¶17). A potential point of dispute is whether the presence of such additional decorative elements on the accused product alters its appearance sufficiently to distinguish it from the patented design in the eye of an ordinary observer.
V. Key Claim Terms for Construction
In design patent litigation, claim construction focuses on the scope of the design as illustrated in the patent's drawings, rather than interpreting textual terms.
- The Term: "The ornamental design for a footwear upper and midsole, as shown and described."
- Context and Importance: The entire infringement analysis hinges on the scope of this "claim." The primary issue for the court will be to determine what visual elements are protected. Practitioners may focus on the distinction between the solid lines (claimed subject matter) and broken lines (unclaimed environment) in the patent's figures, as this defines the legal boundaries of the protected design.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party may argue that the claim covers the overall visual impression and gestalt of the design shown in solid lines (D'731 Patent, Figs. 1-6). Under this view, an accused product that captures this overall look would infringe, even if it has minor differences.
- Evidence for a Narrower Interpretation: A party may argue that the claim is limited to the precise configuration, proportions, and surface contours shown in the drawings. This interpretation would mean that any noticeable deviation in the accused product creates a new, non-infringing design. The patent’s description explicitly states that "broken lines...represent portions of the footwear that form no part of the claimed design," which definitively excludes the outsole from the claim's scope (D'731 Patent, DESCRIPTION).
VI. Other Allegations
- Indirect Infringement: The complaint makes a general claim for patent infringement under 35 U.S.C. § 271, but the factual allegations focus on direct infringement, stating that Defendants "produced, imported...distributed, advertised, marketed, offered for sale, and/or sold" the Accused Products (Compl. ¶69). The complaint does not plead specific facts to support a separate cause of action for either induced or contributory infringement.
- Willful Infringement: The complaint alleges that Defendants' infringement was willful. The basis for this allegation is that Defendants were put "on notice through Deckers' patent marking" on its commercial products (Compl. ¶72). The complaint further alleges that Defendants' actions were taken "knowing the objectively high likelihood that such actions constituted infringement" (Compl. ¶73).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: In the eye of an ordinary observer, is the overall ornamental design of the accused Shein sandal substantially the same as the design claimed in the '731 Patent, considering the visual impression of the designs as a whole and not just their dissected features?
- A key evidentiary question will be the materiality of differences: Do any differences between the accused product and the patented design, including potential additional features like the "Metal & Rhinestone Decor" referenced in the product's name, create a distinct visual impression that would prevent an ordinary observer from being deceived?
- Finally, the viability of the willfulness claim will raise a question of notice: Does the complaint's allegation of "patent marking" provide a sufficient factual basis to establish that Defendants had pre-suit knowledge of the '731 Patent and its alleged infringement, as required to support a claim for willful infringement?