Deckers Outdoor Corp v. Partnerships Unincorp Associations

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: ABC Corporation (Jurisdiction not specified, identified as the patent owner under seal)
  • Defendant: The Partnerships and Unincorporated Associations Identified on Schedule “A” (Jurisdictions alleged to be the People's Republic of China or other foreign jurisdictions)
  • Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
• Case Identification: 1:20-cv-02931, N.D. Ill., 05/18/2020
• Venue Allegations: Venue is alleged to be proper because Defendants target business activities toward consumers in the United States, including Illinois, through interactive e-commerce stores.
• Core Dispute: Plaintiff alleges that numerous unidentified e-commerce operators are selling footwear that infringes its U.S. design patent.
• Technical Context: The lawsuit concerns the ornamental design of fashion footwear, specifically a popular style of sandal, and its protection against alleged counterfeit products sold online.
• Key Procedural History: The complaint was filed with the Plaintiff's name redacted and Defendants identified only on a sealed schedule. This was done to prevent Defendants from receiving advance notice of a forthcoming motion for a temporary restraining order, a common tactic in cases against a large number of difficult-to-identify online sellers.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

U.S. Design Patent No. D866,941 - "FOOTWEAR UPPER AND MIDSOLE"

• Issued: November 19, 2019.

The Invention Explained

• Problem Addressed: Design patents protect the novel aesthetic appearance of an article of manufacture rather than a functional solution to a technical problem. The filing of the application for the ’941 Patent suggests a desire to protect a new, original, and ornamental design for footwear, distinguishing it from prior designs in the marketplace.
• The Patented Solution: The patent claims the ornamental design for a footwear upper and midsole, as depicted in its figures ('941 Patent, CLAIM, Figs. 1-7). The claimed design features a slide-style sandal characterized by an upper with multiple thick, parallel, plush-appearing straps crossing the top of the foot, combined with a thick platform midsole ('941 Patent, Fig. 1). The design also includes an elasticized heel strap, though broken lines in the figures indicate that the specific surface texture of the heel strap and the entire bottom sole are not part of the claimed design ('941 Patent, DESCRIPTION).
• Technical Importance: The complaint alleges that products incorporating Plaintiff's patented designs have become "enormously popular and even iconic," suggesting the design's aesthetic achieved significant recognition and commercial value (Compl. ¶4).

Key Claims at a Glance

• The complaint asserts the single claim of the ’941 Patent.
• The claim is for "The ornamental design for a footwear upper and midsole, as shown and described" ('941 Patent, CLAIM). The essential visual elements of this design claim include:
  • The overall ornamental configuration of a sandal.
  • An upper comprising multiple, distinct, parallel, and thickly-padded straps.
  • A thick, platform-style midsole.
  • The shape of an elasticized heel strap.

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are the 'Infringing Products' sold by Defendants (Compl. ¶3). These are described as footwear products that incorporate Plaintiff's patented design and are sold through e-commerce stores operating under the 'Seller Aliases' listed in Schedule A (Compl. ¶¶2, 3).

Functionality and Market Context

The complaint alleges that the Infringing Products are "unauthorized and unlicensed" copies sold to unknowing consumers (Compl. ¶3). The Defendants are alleged to operate a network of e-commerce stores that are designed to appear as authorized retailers and use tactics to conceal their true identities, such as providing false registration information and operating multiple virtual storefronts (Compl. ¶¶10, 12, 13). Plaintiff alleges these sales have caused irreparable harm and represent a significant loss of its lawful patent rights (Compl. ¶3). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

Claim Chart Summary

Design patent infringement is determined by the "ordinary observer" test, which asks whether an ordinary observer would believe the accused design is the same as the patented design. The allegations can be summarized by mapping the core features of the patented design to the general allegations against the accused products.

'941 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: The primary legal question in a design patent case is the scope of the claimed design and its similarity to the accused product. The core dispute will center on whether an ordinary observer, taking into account the prior art, would be deceived by the similarity between the accused products and the design claimed in the '941 Patent. The interpretation of what is included in the claim (solid lines) versus what is disclaimed (broken lines) will be critical.
• Technical Questions: A key evidentiary question will be the degree of visual similarity. The complaint alleges the accused products are "copies" or "colorable imitations" (Compl. Prayer 1(a)), but does not provide visual evidence (such as screenshots) to allow for a direct side-by-side comparison with the patent figures. The court will need to compare the actual accused products to the patent's drawings to determine if they are substantially the same in appearance.

V. Key Claim Terms for Construction

In design patent litigation, claim construction focuses on the scope of the design as a whole, as depicted in the drawings, rather than on textual terms.

• The Term: "The ornamental design for a footwear upper and midsole, as shown and described."
• Context and Importance: This phrase constitutes the entirety of the claim, and its scope is defined by the patent's drawings. The central issue for the court is not to define a word, but to determine the overall visual impression created by the claimed design. Practitioners may focus on the effect of the broken lines, which explicitly disclaim the outsole and the surface ornamentation of the heel strap, thereby defining the boundaries of the protected design ('941 Patent, DESCRIPTION). The outcome of the infringement analysis depends entirely on this visual interpretation.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue that the claim covers the overall aesthetic and visual impression of a sandal with multiple, thick, parallel, plush straps and a platform sole. The patent's title, "FOOTWEAR UPPER AND MIDSOLE," and the solid lines in the figures focus the claim on this core combination, potentially allowing for minor variations in other aspects without avoiding infringement.
  • Evidence for a Narrower Interpretation: A party could argue that specific features shown in solid lines—such as the exact number of straps, their curvature, and the precise profile of the midsole—are limitations of the claim. The express disclaimer of the outsole and heel strap texture ('941 Patent, DESCRIPTION) narrows the claim to only the elements shown in solid lines, suggesting those elements must be closely replicated for a finding of infringement.

VI. Other Allegations

Indirect Infringement

The complaint makes a conclusory allegation of indirect infringement (Compl. ¶22) and seeks to enjoin those "aiding, abetting, [or] contributing to" infringement (Compl. Prayer 1(b)). However, the factual allegations primarily describe direct infringement by the Defendants (making, using, and selling). The complaint does not plead specific facts to support the elements of induced or contributory infringement, such as active encouragement of infringement by third parties.

Willful Infringement

Willfulness is alleged based on the assertion that Defendants are an "interrelated group of infringers working in active concert to knowingly and willfully make, use, offer for sale, sell, and/or import" the Infringing Products (Compl. ¶18). The complaint further alleges Defendants use tactics to conceal their identities and evade enforcement, suggesting a deliberate and knowing intent to infringe (Compl. ¶¶13-15). This forms a basis for pre-suit willfulness, though it does not specify when Defendants allegedly gained knowledge of the '941 Patent itself.

VII. Analyst’s Conclusion: Key Questions for the Case

• A core issue will be one of visual scope: In applying the "ordinary observer" test, will the accused products be found to be substantially the same as the specific ornamental design claimed in the '941 Patent, particularly considering the visual effect of the elements shown in solid lines (e.g., the multiple plush straps and platform midsole) versus those disclaimed in broken lines?
• A key practical and jurisdictional question will be one of enforcement and liability: Can the Plaintiff successfully pierce the corporate veil of the various 'Seller Aliases' to prove they are an "interrelated group" (Compl. ¶18) and effectively enforce a potential injunction or damages award against foreign entities alleged to be using sophisticated methods to conceal their operations and assets?