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 unknown; alleged to be People's Republic of China or other foreign jurisdictions)
  • Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
• Case Identification: 1:22-cv-06075, N.D. Ill., 11/03/2022
• 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 Defendants’ footwear, sold through various online storefronts, infringes a U.S. Design Patent for a footwear upper and midsole.
• Technical Context: The dispute concerns the ornamental design of footwear in the consumer fashion and comfort-leisure market.
• Key Procedural History: The complaint frames this action as part of a broader enforcement effort against numerous, unidentified online sellers who allegedly operate from foreign jurisdictions. It alleges these sellers use fictitious aliases and other tactics to conceal their identities and evade enforcement actions.

Case Timeline

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

• Problem Addressed: Design patents protect new, original, and ornamental designs rather than solving technical problems. The complaint asserts that Deckers’ footwear is known for “distinctive patented designs” that are “broadly recognized by consumers” (Compl. ¶7). The ’870 Patent protects one such ornamental design for an article of manufacture.
• The Patented Solution: The patent claims the specific ornamental design for a footwear upper and midsole as depicted in its figures (’870 Patent, CLAIM; Figs. 1-7). The design features an open-toed sandal with a thick, platform-style midsole, two wide, puffy upper straps that cross the top of the foot, and an elasticized heel strap. A key visual characteristic is the plush or fleecy texture suggested by the stippling on the upper straps and the edge of the midsole (’870 Patent, Fig. 1). The design as claimed is defined by the solid lines in the drawings; elements in broken lines, such as the bottom tread of the outsole, are not part of the protected design (’870 Patent, DESCRIPTION).
• Technical Importance: The complaint alleges that designs of this type have become “enormously popular and even iconic,” and are associated by the public with the quality and innovation of the UGG brand (Compl. ¶¶6-7).

Key Claims at a Glance

• The patent asserts a single claim for “The ornamental design for a footwear upper and midsole, as shown and described” (’870 Patent, CLAIM).
• The core visual elements protected by the claim, as shown in solid lines in the patent figures, include:
  • The overall shape and proportion of a thick, platform-style midsole.
  • A configuration of two wide, voluminous straps crossing the instep.
  • The specific visual texture applied to the straps and the edge of the midsole.
  • The visible attachment points of a heel strap.

III. The Accused Instrumentality

Product Identification

• The accused products are footwear items, identified as the “Infringing Products,” sold by Defendants through numerous e-commerce stores operating under various “Seller Aliases” (Compl. ¶3, Schedule A).

Functionality and Market Context

• The complaint alleges that the Infringing Products are “unauthorized and unlicensed” footwear that copies Deckers’ patented design (Compl. ¶3). These products are allegedly marketed and sold to consumers throughout the United States, including Illinois, via "fully interactive, e-commerce stores" (Compl. ¶¶2, 11). The complaint further alleges that these e-commerce stores are designed to appear as authorized retailers and that the products are part of a coordinated effort by interrelated entities to trade on the goodwill of Deckers' UGG brand (Compl. ¶¶14, 17).

IV. Analysis of Infringement Allegations

The standard for design patent infringement is whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design. The complaint alleges that the accused footwear is a “reproduction, copy or colorable imitation” of the design claimed in the ’870 Patent (Compl., Prayer for Relief ¶1(a)). The complaint provides a table of figures from the patent to illustrate the claimed design (Compl. p. 4).

D'870 Patent Infringement Allegations

Claim Element (Visual Feature from D'870 Patent)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
The overall ornamental appearance of the footwear upper and midsole as depicted in the patent's figures.	The complaint alleges that Defendants make, use, and sell "Infringing Products" that "infringe directly and/or indirectly the ornamental design claimed" in the patent.	¶24	D'870 Patent, Figs. 1-7
A specific visual configuration of two wide, puffy straps over the instep on a thick, platform-like midsole.	The complaint alleges the accused products are the "same... product" that infringes the design, implying a feature-for-feature copy. The complaint provides a visual table with multiple views of the patented design to establish the claimed features. (Compl. p. 4).	¶3; p. 4	D'870 Patent, Figs. 1, 6
The distinct visual texture (stippling) shown on the upper straps and along the exposed edge of the midsole.	The infringement allegation against the overall "UGG Design" encompasses the copying of its distinct visual texture, which the complaint alleges is recognizable to consumers.	¶¶7, 24	D'870 Patent, Figs. 1-4

• Identified Points of Contention:
  • Scope Questions: A central question will be the scope of the claimed design. The infringement analysis must properly distinguish between the features shown in solid lines (which are claimed) and those in broken lines (which are unclaimed environmental context), such as the bottom surface of the outsole (’870 Patent, DESCRIPTION; Fig. 7). The outcome may depend on how an ordinary observer weighs the claimed features against any differences in the unclaimed portions.
  • Technical Questions: The primary factual question is one of visual comparison: does the overall ornamental appearance of the accused products create a visual impression that is substantially the same as the claimed design in the ’870 Patent? The court will compare the accused products to the patent's drawings, not to the Plaintiff's commercial product.

V. Key Claim Terms for Construction

In design patent litigation, claim construction is typically minimal, as the claim is defined by the drawings rather than words. The analysis focuses on interpreting the scope of the design from the illustrations.

• The Term: The scope of the “ornamental design for a footwear upper and midsole, as shown and described.”
• Context and Importance: The critical determination is what specific visual elements are protected by the patent's single claim. Practitioners may focus on this issue because the boundary between claimed subject matter (solid lines) and unclaimed environment (broken lines) is dispositive for the infringement analysis.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue that the claim covers the overall visual impression of a sandal with two prominent, puffy straps on a thick sole, and that minor variations in proportion or curvature do not defeat infringement. The focus would be on the design as a whole rather than its constituent parts.
  • Evidence for a Narrower Interpretation: A party could argue that the claim is limited to the precise proportions, contours, and surface texturing shown in the drawings. The patent's explicit disclaimer of elements shown in broken lines, such as the heel strap itself and the outsole tread pattern, provides clear evidence for limiting the claim's scope to only the upper and midsole features shown in solid lines (’870 Patent, DESCRIPTION).

VI. Other Allegations

• Indirect Infringement: The complaint makes a conclusory allegation of indirect infringement (Compl. ¶24) and seeks to enjoin those "aiding, abetting, [or] contributing to" infringement (Compl., Prayer for Relief ¶1(b)). However, the factual allegations focus on the Defendants' own direct acts of making, offering for sale, and selling the accused products. The complaint does not plead specific facts to support a separate claim for induced or contributory infringement, such as knowledge and specific intent to cause infringement by another party.
• Willful Infringement: The complaint alleges that infringement was and is willful (Compl. ¶21). This allegation is supported by claims that Defendants act "knowingly and willfully" in concert and use tactics to conceal their identities and evade enforcement, such as operating under multiple fictitious aliases and using offshore accounts, which suggests knowledge of the infringing nature of their conduct (Compl. ¶¶16, 17, 19, 20).

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

1. A core issue will be one of visual comparison: when applying the “ordinary observer” test, is the overall ornamental design of the Defendants’ accused products substantially the same as the design claimed in the D’870 patent, focusing only on the features depicted in solid lines in the patent’s drawings?

2. A key procedural and enforcement question will be determinative for the litigation’s practical outcome: can the Plaintiff successfully establish personal jurisdiction over the numerous, unidentified foreign Defendants and, if successful on the merits, effectively enforce an injunction and damages award against entities allegedly designed to be anonymous and transitory?