DCT
1:23-cv-01434
Deckers Outdoor Corp v. REDACTED
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Deckers Outdoor Corporation (Delaware)
- Defendant: [REDACTED] and [REDACTED] (United Kingdom)
- Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
- Case Identification: 1:23-cv-01434, N.D. Ill., 03/08/2023
- Venue Allegations: Plaintiff alleges venue is proper because Defendants target business activities toward consumers in the United States, including Illinois, through a fully interactive, commercial website that offers shipping to Illinois, accepts payment in U.S. dollars, and has allegedly resulted in sales to Illinois residents.
- Core Dispute: Plaintiff alleges that Defendants’ footwear products infringe two of its U.S. design patents covering the ornamental appearance of a boot upper and an outsole tread pattern, respectively.
- Technical Context: The dispute is in the field of footwear design, where distinctive ornamental features and branding contribute significantly to market identity and consumer recognition.
- Key Procedural History: The complaint does not mention prior litigation, licensing history, or other procedural events involving these specific parties or patents. The complaint is filed against a schedule of unnamed defendants, a common strategy in anti-counterfeiting enforcement actions.
Case Timeline
| Date | Event |
|---|---|
| 2008-10-09 | Priority Date for U.S. Design Patent D594,638 |
| 2009-06-23 | Issue Date for U.S. Design Patent D594,638 |
| 2019-11-08 | Priority Date for U.S. Design Patent D927,161 |
| 2021-08-10 | Issue Date for U.S. Design Patent D927,161 |
| 2023-03-08 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D927,161 - “Footwear Upper,” issued August 10, 2021
The Invention Explained
- Problem Addressed: The patent addresses the need for a new, original, and ornamental design for a footwear upper (Compl. ¶13).
- The Patented Solution: The patent claims a specific ornamental design for a low-profile boot upper. The design is characterized by its overall shape, the proportions of the shaft and vamp, a distinct binding or seam around the ankle opening (collar), and a pull tab at the rear. (’161 Patent, FIG. 1-5). The patent explicitly disclaims portions of the footwear shown in broken lines, meaning the claim is limited to the ornamental appearance of the upper itself, independent of the outsole or other unclaimed features. (’161 Patent, Description).
- Technical Importance: In the footwear market, silhouette and signature design elements create a recognizable product identity that consumers associate with a specific brand and level of quality. (Compl. ¶¶ 6, 13).
Key Claims at a Glance
- A design patent contains a single claim. The asserted claim is: "The ornamental design for a footwear upper, as shown and described." (’161 Patent, Claim).
- The essential visual elements of the claimed design include:
- A low-cut, slip-on boot silhouette.
- A continuous, raised collar or binding encircling the ankle opening.
- A vertically oriented pull tab affixed to the rear of the collar.
- The specific proportional relationship between these elements as depicted in the patent figures.
U.S. Design Patent No. D594,638 - “Footwear Outsole,” issued June 23, 2009
The Invention Explained
- Problem Addressed: The patent addresses the need for a new, original, and ornamental design for a footwear outsole. (Compl. ¶13).
- The Patented Solution: The patent claims a specific ornamental design for the tread of a footwear outsole. The design’s dominant feature is a repeating, sunburst-like pattern of V-shaped lugs radiating outwards from a central axis, both at the forefoot and the heel. (’638 Patent, FIG. 1, 2). The patent disclaims the overall boot shape and the un-treaded central circular portion of the outsole, as indicated by broken lines, focusing the claim on the specific tread pattern itself. (’638 Patent, Description).
- Technical Importance: Outsole tread patterns provide a unique and often brand-specific visual signature, visible both at the point of sale and in the footprint left by the wearer. (Compl. ¶6).
Key Claims at a Glance
- The asserted claim is: "The ornamental design for a footwear outsole, as shown and described." (’638 Patent, Claim).
- The essential visual elements of the claimed design include:
- A tread pattern composed of multiple, distinct V-shaped lugs.
- The arrangement of these lugs in a radiating, sunburst-like pattern around a central point.
- The application of this pattern to both the forefoot and heel sections of the outsole.
III. The Accused Instrumentality
Product Identification
The complaint identifies "Infringing Products," which are footwear items offered for sale and sold by Defendants through their commercial website. (Compl. ¶¶ 1, 19-21).
Functionality and Market Context
The accused products are described as footwear, specifically boots, that are "studied imitations, infringements, and/or counterfeits" of Deckers' UGG brand products. (Compl. ¶20). The complaint alleges that Plaintiff's investigator purchased an accused product which was then inspected and determined to infringe the asserted patents. (Compl. ¶¶ 22, 24). A visual provided in the complaint shows the purchased product is a low-cut, slip-on boot with a light-colored upper and a tan-colored outsole. (Compl. p. 10). The complaint alleges these products are sold to consumers who expect the quality associated with the genuine UGG brand. (Compl. ¶¶ 1, 37).
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 article thinking it was the patented design. This comparison must be made in light of the prior art.
A comparison image in the complaint shows the patented design for the boot upper next to photographs of an accused product from multiple angles. (Compl. p. 10).
D927,161 Infringement Allegations
| Claim Element (from '161 Patent Design) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental appearance of a low-cut, slip-on boot upper. | The accused product is a low-cut, slip-on boot with a substantially similar silhouette and proportions. | ¶30 | FIG. 1-3 |
| The ornamental appearance of a raised binding or seam around the ankle collar. | The accused product features a similar raised binding around the ankle collar. | ¶30 | FIG. 1-3 |
| The ornamental appearance of a rear pull tab. | The accused product features a rear pull tab of a similar size, placement, and orientation. | ¶30 | FIG. 5 |
A second comparison image shows figures from the patent for the outsole design next to photographs of the outsole of an accused product. (Compl. p. 11).
D594,638 Infringement Allegations
| Claim Element (from '638 Patent Design) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental appearance of a footwear outsole tread pattern. | The accused product's outsole tread pattern creates a substantially similar overall visual impression. | ¶31 | FIG. 1, 2 |
| A repeating, sunburst-like pattern of V-shaped lugs radiating outwards. | The accused product's outsole features a tread with a repeating, sunburst-like pattern of V-shaped lugs. | ¶31 | FIG. 2 |
| The application of the radiating pattern to both the forefoot and heel sections. | The accused product applies the radiating V-shaped lug pattern to both the forefoot and heel sections of its outsole. | ¶31 | FIG. 2 |
- Identified Points of Contention:
- Overall Visual Impression: The central question for both patents will be whether the accused product's design and the patented design are "substantially the same" in the eyes of an ordinary observer. This analysis will involve comparing the designs as a whole, not just dissecting individual features.
- Scope Questions: The analysis for both patents will depend on the scope of the claim as defined by the solid lines in the drawings. The court will need to determine if any minor differences between the accused product and the patented designs are sufficient to avoid a finding of substantial similarity in the overall appearance.
V. Key Claim Terms for Construction
In design patent cases, there are typically no literal "terms" to construe. Instead, the court construes the claim by describing the ornamental features of the design as shown in the patent's drawings. The scope of the claim is a critical issue.
- The Term: "The ornamental design ... as shown and described."
- Context and Importance: The scope of the design claim is defined by what is shown in solid lines versus what is shown in broken lines. Practitioners may focus on this distinction because it determines what is protected. The broken lines explicitly remove certain features from the scope of the claimed design, which can prevent a defendant from avoiding infringement by merely altering an unclaimed feature.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent claims the design "as shown," which encompasses the overall visual effect created by the combination of all features depicted in solid lines. The disclaiming of the boot's other parts (like the outsole in the ’161 patent) suggests the upper design itself is meant to be protected regardless of the specific shoe to which it is attached.
- Evidence for a Narrower Interpretation: The patent description explicitly states, "The broken lines...represent portions of the footwear that form no part of the claimed design." (’161 Patent, Description; ’638 Patent, Description). This language strictly limits the claim to the visual appearance of the elements drawn in solid lines. Any feature of the accused product that differs from the solid-line drawings, even slightly, could be argued to create a different overall visual impression for the ordinary observer.
VI. Other Allegations
- Indirect Infringement: The complaint makes conclusory allegations of direct and/or indirect infringement. (Compl. ¶¶ 44, 48). It also requests an injunction against "aiding, abetting, contributing to, or otherwise assisting anyone" in infringing. (Prayer for Relief ¶1(f)). However, the complaint does not plead specific facts to support a claim for induced or contributory infringement, such as knowledge that the purchasers of its products would be direct infringers and an intent to encourage that infringement.
- Willful Infringement: The complaint alleges that Defendants' infringement was willful. (Compl. ¶¶ 34, 35). The factual basis for this allegation is that, on "information and belief, Defendants are well aware of the extraordinary fame of the UGG Designs and the high-quality products associated therewith." (Compl. ¶32). This suggests a theory of willfulness based on the deliberate copying of a well-known design.
VII. Analyst’s Conclusion: Key Questions for the Case
- Ornamental Similarity: The central issue for both patents will be a factual one of visual comparison: would an ordinary observer, familiar with the prior art, perceive the overall ornamental appearance of the accused boot upper and outsole to be substantially the same as the designs claimed in the ’161 and ’638 patents, respectively? The outcome will depend on a side-by-side comparison of the products and the patent figures.
- Scope and Deception: A key legal and factual question will be one of deceptive similarity: considering the scope of the claims as defined by the solid-line drawings and disclaimers, are any differences between the accused products and the patented designs significant enough to create a distinct visual impression, or are they minor variations that fail to prevent an ordinary observer from being deceived into believing the products are the same?