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)
  • Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
• Case Identification: 1:23-cv-01943, N.D. Ill., 03/28/2023
• 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 unidentified e-commerce operators are infringing its design patent for a footwear upper by selling, offering for sale, and importing unauthorized footwear.
• Technical Context: The technology at issue is the ornamental design of consumer footwear, specifically related to the visual appearance of what the complaint identifies as iconic UGG brand boots.
• Key Procedural History: The complaint frames this action as a measure to combat operators of online stores, alleged to be based in foreign jurisdictions like the People's Republic of China, who use multiple aliases and concealment tactics to sell infringing goods and evade enforcement.

Case Timeline

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

U.S. Design Patent No. D599,999 - Portion of a footwear upper (issued Sep. 15, 2009)

The Invention Explained

• Problem Addressed: Design patents protect the novel ornamental appearance of an article of manufacture. The patent does not describe a technical problem, but the complaint asserts that Deckers' "innovative design" is a key driver of the popularity and recognizability of its UGG brand footwear (Compl. ¶¶6-7).
• The Patented Solution: The patent claims the specific ornamental design for a portion of a boot's upper, as depicted in its seven figures ('999 Patent, Claim). The claimed design consists of the features shown in solid lines, which include an asymmetrical, foldable collar, a vertical placket on the side of the boot shaft, and particular seam patterns and proportions ('999 Patent, FIGS. 1-7). The patent explicitly disclaims the elements shown in broken lines, such as the sole of the boot, as not being part of the protected design ('999 Patent, Description).
• Technical Importance: The complaint alleges that the patented design is a key feature of its "enormously popular and even iconic" UGG Products, which are "instantly recognizable" to consumers (Compl. ¶6).

Key Claims at a Glance

• The patent asserts a single claim for "The ornamental design for a portion of a footwear upper, as shown and described" ('999 Patent, Claim). The scope of this claim is defined by the visual representations in the patent's drawings.
• The key ornamental features protected by the claim, as shown in solid lines in the patent figures, include:
  • The overall shape and contour of the footwear upper.
  • An asymmetrical collar that appears to be foldable.
  • A vertical placket on the lateral side of the boot shaft.
  • The specific placement and appearance of exposed seams.

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are the "Infringing Products," identified as footwear that allegedly incorporates the patented design (Compl. ¶3).

Functionality and Market Context

The accused products are boots sold by the Defendants through "fully interactive, e-commerce stores" operating under various seller aliases (Compl. ¶¶2, 11). The complaint alleges these stores are designed to mislead consumers into believing they are authorized retailers and that the products are sold and shipped to consumers throughout the United States, including Illinois (Compl. ¶¶13-14). The complaint includes a perspective view of the patented design, which it alleges is infringed by the Defendants' products (Compl. p. 4, FIG. 1).

IV. Analysis of Infringement Allegations

The complaint alleges that the accused "Infringing Products" embody a design that is substantially the same as the design claimed in the '999 Patent (Compl. ¶24). For a design patent, infringement is determined by the "ordinary observer" test, which considers whether an ordinary observer would be deceived into purchasing the accused product believing it to be the patented one. The complaint does not contain a traditional claim chart, but its allegations map the features of the accused products to the patented design. A side view of the patented design from the complaint illustrates the claimed profile and side placket (Compl. p. 4, FIG. 2).

D599,999 Infringement Allegations

Identified Points of Contention

• Factual Question: The central issue will be a factual comparison: Does the overall ornamental appearance of the Defendants' footwear appear substantially the same as the claimed design to an ordinary observer? This will depend on visual evidence of the accused products presented during litigation.
• Scope Questions: The scope of the patent claim is strictly limited to the elements shown in solid lines in the drawings. A point of contention may arise regarding whether any differences between the accused products and the claimed design, or similarities to the unclaimed portions (shown in broken lines), are sufficient to defeat a finding of substantial similarity.

V. Key Claim Terms for Construction

In design patent cases, formal claim construction of text is rare. The "claim" is understood to be the design itself as depicted in the drawings. Analysis will center on the visual scope of the patent's figures.

• The "Term": The scope of "the ornamental design...as shown and described."
• Context and Importance: The entire infringement analysis depends on the interpretation of the visual scope of the claimed design. The court's assessment of what constitutes the "overall visual impression" of the design will be critical. Practitioners may focus on this issue because the comparison between the patented design and the accused products is the crux of the case.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party might argue that the "overall visual impression" should be viewed holistically and that minor deviations in the accused product do not alter the substantially similar appearance that an ordinary observer would perceive.
  • Evidence for a Narrower Interpretation: A party could argue that the scope is strictly limited to the exact proportions, curvatures, and feature placements depicted in the solid lines of the drawings ('999 Patent, FIGS. 1-7). The patent's explicit disclaimer of all subject matter in broken lines supports a narrower interpretation focused only on the claimed elements ('999 Patent, Description).

VI. Other Allegations

Indirect Infringement

The complaint makes a general allegation of direct and/or indirect infringement and seeks to enjoin "aiding, abetting, [or] contributing to" infringement (Compl. ¶24; Prayer for Relief ¶1(b)). However, the factual allegations focus on the Defendants as direct infringers (sellers), and the complaint does not plead specific elements required for a standalone claim of induced or contributory infringement against a separate entity.

Willful Infringement

The complaint alleges that Defendants' infringement was "knowingly and willfully" committed (Compl. ¶20-21). The basis for this allegation is the assertion that Defendants operate as part of a concerted effort to sell unauthorized products, using tactics to conceal their identities and evade enforcement (Compl. ¶¶16-18).

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

• A central issue will be one of visual comparison: Will the trier of fact, acting as an ordinary observer, find the overall ornamental appearance of the accused products to be substantially the same as the specific design protected by the solid lines in the '999 Patent's figures?
• A key practical question will be one of enforcement and jurisdiction: Given that the lawsuit targets a diffuse group of anonymous foreign e-commerce operators, a primary challenge for the Plaintiff will be successfully identifying the Defendants, establishing the court's jurisdiction over them, and ultimately enforcing any judgment that may be obtained.