Deckers Outdoor Corp v. Zhenqi Store

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Deckers Outdoor Corporation (Delaware)
  • Defendant: The Partnerships and Unincorporated Associations Identified on Schedule “A” (Jurisdiction not specified; alleged to be foreign, e.g., People's Republic of China)
  • Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
• Case Identification: 1:22-cv-00611, N.D. Ill., 02/03/2022
• Venue Allegations: Venue is based on allegations that Defendants operate interactive e-commerce stores that directly target and make sales to consumers in Illinois.
• Core Dispute: Plaintiff alleges that numerous e-commerce operators sell footwear that infringes its design patent covering the ornamental appearance of a sandal.
• Technical Context: The dispute is in the consumer footwear industry, where the ornamental design of a product is a significant driver of commercial value and brand recognition.
• Key Procedural History: The complaint does not mention prior litigation or administrative challenges involving the patent-in-suit. However, it characterizes the lawsuit as an action against a network of online sellers who allegedly use aliases and offshore operations to conceal their identities and evade enforcement.

Case Timeline

Date	Event
2019-07-23	D'870 Patent Priority Date (Application Filing)
2020-11-17	D'870 Patent Issue Date
2022-02-03	Complaint Filing Date

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

U.S. Design Patent No. D901,870 - Footwear Upper and Midsole

• Patent Identification: U.S. Design Patent No. D901,870, “Footwear Upper and Midsole,” issued November 17, 2020 (the “D’870 Patent”).

The Invention Explained

• Problem Addressed: Design patents protect ornamental appearance rather than functional solutions. The patent seeks to protect a novel visual design for footwear, which the complaint alleges has become "iconic" and is associated with the Plaintiff's UGG brand (Compl. ¶6-7).
• The Patented Solution: The D’870 Patent claims the specific ornamental design for a footwear upper and midsole as depicted in its figures (D’870 Patent, Claim, FIGS. 1-7). The claimed design features a thick, platform-style midsole, two wide, parallel upper straps crossing the top of the foot, and an elasticized strap around the heel (D’870 Patent, FIG. 1, FIG. 5). A key visual characteristic is the stippled shading used throughout the drawings, indicating a uniform, plush, or fleecy texture across the surfaces of the straps and the visible portions of the midsole (D’870 Patent, FIG. 1-2). Broken lines in the drawings indicate that the exact configuration of the heel strap attachment point and the bottom sole tread pattern are not part of the claimed design (D’870 Patent, DESCRIPTION).
• Technical Importance: The complaint alleges that UGG products embodying distinctive designs have become "enormously popular," making their visual appearance a valuable asset in the consumer marketplace (Compl. ¶6).

Key Claims at a Glance

• As is typical for a design patent, there is a single claim: "The ornamental design for a footwear upper and midsole, as shown and described" (D’870 Patent, Claim).
• The essential elements of the claim are the visual features of the footwear depicted in solid lines in Figures 1-7, including:
  • The overall silhouette of an open-toed sandal with a thick platform midsole.
  • The arrangement of two wide, parallel upper straps.
  • The presence of a rear heel strap.
  • The consistent surface texture covering the straps and midsole.

III. The Accused Instrumentality

Product Identification

• The complaint identifies the accused instrumentalities as "the footwear shown in Exhibit 1," which are referred to collectively as the "Infringing Products" (Compl. ¶3).

Functionality and Market Context

• The accused products are footwear sold by Defendants through numerous "fully interactive, e-commerce stores" operating under various "Seller Aliases" (Compl. ¶2, ¶11). The complaint alleges these stores are designed to appear as legitimate retailers to consumers in the United States, including Illinois (Compl. ¶13-14). Plaintiff alleges that the Defendants are part of a network of infringers, likely based in China, who use tactics such as operating under multiple aliases and using offshore accounts to conceal their identities and evade legal enforcement (Compl. ¶9, ¶16-17, ¶19). The complaint includes a table with several views of the patented design, which serves as the visual basis for the infringement claim (Compl. p. 4).

IV. Analysis of Infringement Allegations

The standard for design patent infringement is whether an "ordinary observer," giving such attention as a purchaser usually gives, would be deceived into purchasing the accused product believing it to be the patented design. The complaint alleges that the "Infringing Products" are "the same unauthorized and unlicensed product" shown in Exhibit 1 and that they "infringe directly and/or indirectly the ornamental design claimed in the UGG Design" (Compl. ¶3, ¶24). The following table summarizes the alleged visual correspondence.

D’870 Patent Infringement Allegations

Key Ornamental Feature (from D’870 Patent Figures)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
The overall visual impression created by the combination of a thick platform midsole, two wide upper straps, and a rear heel strap.	The complaint alleges that the accused "Infringing Products" embody and are a "reproduction, copy or colorable imitation of the design claimed."	¶3, ¶24, ¶(1)a	FIGS. 1-7
A thick, platform-style midsole with a uniform surface texture.	The complaint's allegations suggest the accused products feature a substantially similar thick, platform-style midsole.	¶3, ¶24	FIGS. 1-3
Two wide, parallel straps over the top of the foot, both having a uniform surface texture.	The complaint's allegations suggest the accused products feature two wide, parallel upper straps with a similar appearance.	¶3, ¶24	FIGS. 1, 6
A strap positioned around the rear of the heel.	The complaint's allegations suggest the accused products feature a rear heel strap consistent with the patented design.	¶3, ¶24	FIGS. 4, 5

• Identified Points of Contention:
  • Scope Questions: The primary legal question will be the application of the "ordinary observer" test. The dispute may center on whether the overall visual impression of the accused products is "substantially the same" as the patented design, or if any differences are sufficient to distinguish them in the eyes of a typical consumer.
  • Technical Questions: A factual question for the court will be the significance of any minor variations between the patented design drawings and the accused products. The analysis will question whether differences in the specific texture, the precise proportions of the straps to the midsole, or the angle of the straps are substantial enough to alter the overall ornamental appearance, or if they are trivial details that an ordinary observer would overlook.

V. Key Claim Terms for Construction

This section is not applicable, as design patents claim an overall ornamental design depicted in drawings and do not contain textual claim terms that require judicial construction.

VI. Other Allegations

• Indirect Infringement: The complaint makes a conclusory allegation of indirect infringement (Compl. ¶24) and requests an injunction against "aiding, abetting, [or] contributing to" infringement (Compl. p. 11, ¶1(b)). However, it does not plead specific facts detailing how any of the unidentified Defendants induced or contributed to infringement by others.
• Willful Infringement: The complaint alleges that Defendants' infringement was "knowing[] and willful[]" (Compl. ¶20-21). The basis for this allegation appears to be the assertion that Defendants are operating in "active concert" to sell products that are direct copies of Plaintiff's well-known design through e-commerce stores designed to appear legitimate (Compl. ¶14, ¶20).

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 overall ornamental design of the accused footwear substantially the same as the design claimed in the D'870 patent, such that a typical purchaser would be deceived? The outcome will depend on a holistic comparison of the designs rather than an analysis of discrete differences.
• A significant procedural and practical question will be one of enforceability: Given the allegations that the Defendants are a large, shifting network of foreign entities operating under aliases (Compl. ¶9-10, ¶17), a central challenge for the Plaintiff, even if successful on the merits, will be identifying the responsible parties and effectively enforcing any resulting injunction or monetary judgment.