Deckers Outdoor Corp v. Partnerships Unincorp Associations

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Deckers Outdoor Corporation (Delaware)
  • Defendant: The Partnerships and Unincorporated Associations Identified on Schedule “A” (Jurisdiction(s) Unknown)
  • Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
• Case Identification: 1:22-cv-00665, N.D. Ill., 02/07/2022
• Venue Allegations: Venue is asserted based on allegations that Defendants operate interactive e-commerce stores that target business activities and sales toward consumers in Illinois.
• Core Dispute: Plaintiff alleges that Defendants’ unauthorized e-commerce sales of footwear infringe a design patent covering an ornamental design for a footwear upper.
• Technical Context: The dispute is in the consumer footwear market, focusing on the ornamental design and trade dress of high-end, leisure footwear.
• Key Procedural History: The complaint is structured as an action against a group of unidentified "John Doe" defendants, who are alleged to be operators of various e-commerce storefronts. This procedural posture is often used in anti-counterfeiting litigation to target networks of online sellers who allegedly use shifting aliases to evade enforcement.

Case Timeline

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

• Patent Identification: U.S. Design Patent No. D599,999, "Portion of a Footwear Upper," issued September 15, 2009.

The Invention Explained

• Problem Addressed: The complaint does not describe a specific technical problem, as is typical for a design patent. Instead, the patent protects a new, original, and ornamental design for an article of manufacture (Compl. ¶25; D'999 Patent, Claim).
• The Patented Solution: The patent claims the specific ornamental appearance of a portion of a footwear upper, as depicted in its seven figures (D'999 Patent, Description). The design features an asymmetrical, foldable collar, an exposed plush lining, and a side flap with what appears to be a button-and-loop closure mechanism, which collectively create a distinct visual impression (D'999 Patent, FIG. 1-6). The claim is limited to the features shown in solid lines; the remainder of the boot, shown in broken lines, is not part of the claimed design (D'999 Patent, Description).
• Technical Importance: The complaint alleges that products embodying this design, referred to as the "UGG Design," have become "enormously popular and even iconic" and are "instantly recognizable" to the purchasing public (Compl. ¶6).

Key Claims at a Glance

• The single claim of the D'999 Patent is asserted.
• The claim covers "The ornamental design for a portion of a footwear upper, as shown and described." Its scope is defined by the visual appearance of the elements depicted in solid lines in the patent's drawings, which include:
  • An asymmetrical, foldable upper shaft.
  • A side flap element.
  • A visible closure element on the side flap.
  • An exposed, textured lining along the top and side opening of the upper.

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are footwear referred to as the "Infringing Products" (Compl. ¶3). These are allegedly unauthorized and unlicensed products sold by Defendants through various e-commerce stores operating under multiple "Seller Aliases" (Compl. ¶2-3).

Functionality and Market Context

• The complaint alleges that Defendants operate numerous e-commerce stores that are designed to appear as authorized retailers to "unknowing consumers" (Compl. ¶3, ¶14). These stores allegedly offer for sale and sell products that incorporate a "reproduction, copy or colorable imitation of the design claimed in the UGG Design" (Compl. ¶3; Prayer for Relief ¶1(a)). The complaint alleges these online stores target U.S. consumers, including those in Illinois, and accept payment in U.S. dollars (Compl. ¶13).
• The complaint alleges Defendants operate as a coordinated network, using common tactics to conceal their identities and evade enforcement, such as using multiple fictitious aliases, providing false registration information, and maintaining off-shore bank accounts (Compl. ¶10, ¶15-17, ¶19).

IV. Analysis of Infringement Allegations

The complaint does not contain a traditional claim chart. The infringement theory is that the accused footwear products are substantially the same in ornamental appearance as the design claimed in the D'999 patent, such that an ordinary observer would be deceived. The complaint reproduces several figures from the D'999 patent, including a perspective view of the claimed boot design, to illustrate the patented design (Compl. ¶7, p. 4).

Identified Points of Contention

• Factual Question (The Ordinary Observer Test): The central question will be a factual comparison: are the accused products sold by Defendants "substantially the same" as the design claimed in the D'999 patent? The analysis will depend on a side-by-side comparison of the accused products with the patent drawings from the perspective of an ordinary observer familiar with prior art footwear designs.
• Scope Questions: A potential issue may be the scope of the claim as defined by the solid and broken lines in the patent drawings. The claim is for a "portion of a footwear upper," not the entire boot (D'999 Patent, Title; Description). The infringement analysis must focus only on the claimed portion (the upper shown in solid lines) and disregard the unclaimed portions (the sole and lower part of the boot shown in broken lines).

V. Key Claim Terms for Construction

In design patent cases, the "claim" is primarily defined by the drawings rather than text. The construction analysis focuses on determining the scope of the claimed design based on the figures.

• The Term: "The ornamental design for a portion of a footwear upper, as shown and described."
• Context and Importance: The scope of protection is defined by what is shown in solid versus broken lines in the patent figures. The distinction is critical because the infringement analysis under the ordinary observer test must be limited to the claimed subject matter. Practitioners may focus on this distinction to argue whether similarities or differences between the accused product and the patent relate to claimed or unclaimed features.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party might argue that the claim should be viewed holistically, protecting the overall visual impression created by the combination of elements in the upper, and that minor deviations in proportion or detail do not avoid infringement. The patent's title, "Portion of a Footwear Upper," supports a focus on the upper as a complete design element (D'999 Patent, Title).
  • Evidence for a Narrower Interpretation: 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. The broken line which defines the bounds of the claimed design forms no part thereof" (D'999 Patent, Description). This language provides a strong basis for limiting the claim scope strictly to the features depicted in solid lines, excluding the overall shape of the sole and lower boot from the infringement analysis.

VI. Other Allegations

Indirect Infringement

The complaint alleges that Defendants "indirectly" infringe the D'999 patent and asks the court to enjoin those who "aid, abet, contribute to, or otherwise assist" in infringement (Compl. ¶24; Prayer for Relief ¶1(b)). The factual basis appears to be the allegation that Defendants operate as an interrelated network, working "in active concert" to manufacture and sell the infringing products (Compl. ¶17, ¶20).

Willful Infringement

The complaint alleges that Defendants' infringement was "knowing[] and willful[]" and requests treble damages pursuant to 35 U.S.C. § 284 (Compl. ¶20-21; Prayer for Relief ¶4). The allegation is based on the assertion that Defendants are part of a network that intentionally copies the "UGG Design" to trade on Deckers' reputation (Compl. ¶3, ¶20).

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

1. Jurisdiction and Enforcement: A threshold issue will be procedural: can the Plaintiff effectively establish personal jurisdiction over, serve, and ultimately enforce a judgment against a diffuse and anonymous group of foreign-based e-commerce operators who allegedly use tactics specifically designed to evade identification and legal process?
2. Factual Infringement: The substantive core of the case will be a factual determination under the "ordinary observer" test. For each accused product, the key question will be whether its ornamental design is substantially the same as the specific design claimed in the D'999 patent, focusing only on the claimed features of the footwear upper shown in solid lines.
3. Scope of Relief: Assuming infringement is found, a central question will concern the scope and effectiveness of injunctive relief. The case raises the issue of how a court can craft an order that is not only binding on the named (but anonymous) Defendants but also effective against the third-party online marketplace platforms that host them and the ever-changing "Seller Aliases" they may use in the future.