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” (Jurisdictions Unknown, Allegedly China-based)
  • Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
• Case Identification: Deckers Outdoor Corporation v. The Partnerships and Unincorporated Associations Identified on Schedule “A”, 1:23-cv-01621, N.D. Ill., 03/15/2023
• Venue Allegations: Venue is based on allegations that Defendants directly target and conduct business with consumers in Illinois through interactive e-commerce stores, offer shipping to Illinois, and have made sales to Illinois residents.
• Core Dispute: Plaintiff alleges that numerous e-commerce store operators are infringing its design patent by selling footwear that incorporates the patented ornamental design.
• Technical Context: The dispute is in the consumer footwear industry, specifically concerning the ornamental design of premium comfort-leisure sandals, a market where distinctive appearance is a significant driver of brand recognition and value.
• Key Procedural History: The complaint is structured as a "Schedule A" action against a large number of unknown defendants, a common procedural posture for combating networks of online counterfeiters. The complaint alleges these defendants operate under multiple aliases and use tactics to conceal their identities, which will likely be a central issue in discovery and enforcement.

Case Timeline

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

U.S. Design Patent No. D866,941 - "FOOTWEAR UPPER AND MIDSOLE" (November 19, 2019)

• The Invention Explained:

  • Problem Addressed: Design patents protect the novel, ornamental appearance of a manufactured article rather than its utility. The implicit problem addressed is the need for a new, original, and ornamental design for footwear that is visually distinct from prior designs (Compl. ¶¶ 6-7).
  • The Patented Solution: The patent claims the specific ornamental design for a "footwear upper and midsole" as depicted in its seven figures (D’866,941 Patent, Figs. 1-7). The core visual elements are a thick, rounded-edge midsole combined with a plush, multi-banded upper strap. The patent’s description clarifies that elements shown in broken lines, such as the heel strap and the tread on the sole bottom, do not form part of the claimed design, focusing protection on the overall visual impression of the slide's upper and side profile (D’866,941 Patent, DESCRIPTION).
  • Technical Importance: The complaint alleges that such distinctive patented designs are a key driver of the UGG brand's popularity and consumer recognition, associating the unique aesthetic with quality and innovation (Compl. ¶¶ 6-7).

• Key Claims at a Glance:

  • The patent contains a single claim for "The ornamental design for a footwear upper and midsole, as shown and described" (D’866,941 Patent, CLAIM). The scope of this claim is defined by the solid-line drawings in the patent.

III. The Accused Instrumentality

• Product Identification: The accused products are footwear, referred to in the complaint as the "Infringing Products" (Compl. ¶3).
• Functionality and Market Context: The complaint alleges these products are unauthorized footwear that incorporates the patented "UGG Design" (Compl. ¶3). They are sold by Defendants through various e-commerce stores operating under multiple "Seller Aliases" (Compl. ¶¶ 9, 11). These online stores are alleged to be interactive, target U.S. consumers, and are designed to appear as though they are authorized retailers, making it difficult for consumers to distinguish them from legitimate sellers (Compl. ¶¶ 13-14). A table in the complaint juxtaposes the patent number, D866,941, with several figures from the patent illustrating the claimed design (Compl. p. 4).

IV. Analysis of Infringement Allegations

The complaint does not contain a claim chart. The infringement allegation for a design patent rests on the "ordinary observer" test, which asks 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 asserts that Defendants are making, using, selling, or importing the "Infringing Products" which infringe the ornamental design claimed in the D'866,941 patent (Compl. ¶¶ 3, 24). The central allegation is that the visual appearance of the accused footwear is substantially the same as the design claimed in the patent. The case will depend on a visual comparison between the accused products and the patent's drawings. The complaint alleges that the footwear shown in its Exhibit 1 infringes the patented design (Compl. ¶3).

Identified Points of Contention:

• Scope Questions: The primary question will be whether the accused products are "substantially the same" as the design claimed in the D’866,941 patent in the eyes of an ordinary observer. The analysis will focus on the overall visual impression, not minor differences.
• Technical Questions: An evidentiary question will be whether the products sold by the various "Schedule A" Defendants are, in fact, the "Infringing Products" as alleged and whether Plaintiff can produce sufficient evidence of the accused products' designs to allow for a proper visual comparison against the patent drawings.

V. Key Claim Terms for Construction

In a design patent case, claim construction focuses on the scope of the claimed design as a whole, rather than on discrete textual terms. The central "term" for construction is the design itself.

• The Term: "The ornamental design for a footwear upper and midsole, as shown and described."
• Context and Importance: The entire infringement analysis hinges on the scope of the visual design protected by the patent. The court's interpretation of what constitutes the core ornamental features of the design, as depicted in the drawings, will determine whether the accused products infringe.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party might argue that the overall visual impression of a plush, open-toed slide with a thick platform sole and prominent, overlapping upper bands is the essence of the design, allowing the claim to cover products with slight variations in texture or the exact number of bands. The patent’s title, "Footwear Upper and Midsole," supports focusing on these macro features (D’866,941 Patent, (54)).
  • Evidence for a Narrower Interpretation: A party could argue the design is limited to the precise features shown in solid lines, such as the specific number and gentle curvature of the upper bands and the particular proportions of the midsole (D’866,941 Patent, Figs. 1-7). The explicit disclaimer of the heel strap and sole bottom via broken lines reinforces that the claim is strictly limited to what is "shown and described" in solid lines (D’866,941 Patent, DESCRIPTION).

VI. Other Allegations

• Indirect Infringement: The complaint alleges Defendants infringe "directly and/or indirectly" (Compl. ¶24). It further alleges Defendants are "working in active concert" to manufacture and sell the infringing products and asks the court to enjoin those aiding or abetting the infringement (Compl. ¶20; Prayer for Relief ¶1(b)). The factual basis centers on the allegation of a coordinated network of sellers rather than the inducement of specific end-users.
• Willful Infringement: Willfulness is explicitly alleged (Compl. ¶21). The complaint asserts this claim based on Defendants' alleged "active concert" and use of tactics to conceal their identities and evade enforcement, such as operating under multiple aliases and using offshore accounts, suggesting knowledge of the wrongful nature of their conduct (Compl. ¶¶ 16, 18-20).

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

1. 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 specific design claimed in the D'866,941 patent, or are there sufficient visual differences to place the accused products outside the patent's scope?
2. A key procedural and evidentiary question will be whether the Plaintiff can successfully link the anonymous "Schedule A" entities to the specific infringing acts alleged. The case's viability depends on establishing jurisdiction over and collecting evidence against defendants who are alleged to be intentionally difficult to identify and locate.
3. The willfulness analysis will likely turn on whether the alleged scheme to operate a network of evasive e-commerce stores constitutes the type of egregious conduct necessary for enhanced damages, beyond the infringement itself.