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, believed to be China or other foreign jurisdictions)
  • Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
• Case Identification: 1:23-cv-04877, N.D. Ill., 07/26/2023
• Venue Allegations: Venue is based on allegations that Defendants operate interactive e-commerce stores that directly target and make sales to consumers in the United States, including Illinois.
• Core Dispute: Plaintiff alleges that unidentified e-commerce operators are selling footwear that infringes its design patent for a footwear upper.
• Technical Context: The dispute is in the field of footwear design, where the ornamental appearance of a product serves as a key market differentiator and brand identifier.
• Key Procedural History: The complaint is structured as a "Schedule A" action, a common procedural posture in this district for targeting numerous, often anonymous, online sellers of allegedly infringing goods. Plaintiff notes its intent to amend the complaint if Defendants' identities are revealed.

Case Timeline

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

• Patent Identification: U.S. Design Patent No. D927,161, "Footwear Upper," issued August 10, 2021.

The Invention Explained

• Problem Addressed: Design patents do not solve technical problems; they protect new, original, and ornamental designs for an article of manufacture. The patent implicitly addresses the need for a novel aesthetic appearance for a footwear upper (D927161 Patent, Title, CLAIM).
• The Patented Solution: The patent claims the specific ornamental design for a "footwear upper" as depicted in the patent's figures (D927161 Patent, CLAIM). The design features an ankle-height boot upper with a distinct rounded toe, a prominent raised seam running vertically up the front and back, a defined collar, and a pull tab on the rear. The sole of the footwear is depicted in broken lines, indicating it is not part of the claimed design (D927161 Patent, DESCRIPTION; FIG. 1-7).
• Technical Importance: The complaint asserts that distinctive designs like the patented one are broadly recognized by consumers and are associated with the quality and innovation of Plaintiff's UGG brand products (Compl. ¶7).

Key Claims at a Glance

• Design patents contain a single claim. The asserted claim is: "The ornamental design for a footwear upper, as shown and described." (D927161 Patent, CLAIM).
• The scope of the claim is defined by the solid lines in the patent drawings, which depict the following key ornamental features:
  • The overall shape and proportion of the ankle-height upper.
  • A distinct, raised collar at the top opening.
  • A vertical seam element bisecting the side profile.
  • A pull-loop attached at the rear collar.
• The broken lines in the figures, such as those depicting the outsole, represent the environment and are not part of the claimed design (D927161 Patent, DESCRIPTION).

III. The Accused Instrumentality

Product Identification

• The "Infringing Products" are footwear sold by the anonymous Defendants through various e-commerce stores operating under the "Seller Aliases" (Compl. ¶3).

Functionality and Market Context

• The complaint alleges that Defendants operate e-commerce stores on platforms like Amazon, eBay, AliExpress, and Temu to sell the Infringing Products to consumers in the U.S. (Compl. ¶11).
• These stores are allegedly designed to appear as authorized retailers, using content and images that make it difficult for consumers to distinguish them from legitimate sellers (Compl. ¶14). The complaint presents several views of the patented design to illustrate its appearance. (Compl. p. 4).

IV. Analysis of Infringement Allegations

The standard for design patent infringement is 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 alleges that the Infringing Products are "the same unauthorized and unlicensed product" that infringes the patented design (Compl. ¶3). The table below compares the claimed ornamental features to the allegations.

D927,161 Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A central question will be whether the overall visual impression of the accused products is substantially the same as that of the claimed design. The analysis must focus only on the features shown in solid lines (the upper) and not on the unclaimed features (the sole).
  • Technical Questions: The primary question for the fact-finder is one of visual comparison: would an ordinary observer, giving the attention a typical footwear purchaser gives, be deceived by the similarity between the accused product and the patented design? The complaint's visual evidence, showing multiple views of the patented design, will be central to this comparison (Compl. p. 4).

V. Key Claim Terms for Construction

In design patent cases, formal claim construction is rare, as the drawings are the primary definition of the claim. However, disputes can arise over the scope of the claim.

• The Term: "the ornamental design for a footwear upper"
• Context and Importance: The scope of the design patent is limited to the "footwear upper" and does not include the sole, which is shown in broken lines. Practitioners may focus on how the unclaimed sole of the accused products affects the overall visual appearance and whether it is different enough to avoid creating a substantially similar impression in the mind of the ordinary observer. The court's analysis must filter out the unclaimed elements from the comparison.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim is for the design "as shown and described" (D927161 Patent, CLAIM). This language suggests the claim covers the overall visual effect of the combination of elements shown in solid lines, applied to an article of footwear.
  • Evidence for a Narrower Interpretation: The patent explicitly states, "The broken lines in FIGS. 1-7 represent portions of the footwear that form no part of the claimed design" (D927161 Patent, DESCRIPTION). This language strictly limits the legally protected design to the upper itself, excluding the sole and any stitching shown in broken lines. Any infringement analysis must be based only on similarities in the claimed upper.

VI. Other Allegations

• Indirect Infringement: The complaint alleges that Defendants have "jointly and severally" offered for sale products that infringe "directly and/or indirectly" (Compl. ¶20). The prayer for relief seeks to enjoin "aiding, abetting, contributing to, or otherwise assisting anyone" in infringing (Compl., Prayer for Relief ¶1(b)).
• Willful Infringement: Willfulness is explicitly alleged based on the assertion that Defendants are "working in active concert to knowingly and willfully manufacture, import, distribute, offer for sale, and sell Infringing Products" (Compl. ¶20-21). The complaint characterizes Defendants' conduct as part of an intentional business model designed to trade on Deckers' reputation (Compl. ¶3, ¶15-18).

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

• A core issue will be one of visual comparison: Applying the "ordinary observer" test, is the overall ornamental design of the accused footwear uppers substantially the same as the design claimed in the ’161 Patent, such that a consumer would be deceived? The outcome will depend on a direct comparison between the accused products and the patent's drawings.
• A key procedural question will be whether Plaintiff can effectively litigate against a large, anonymous group of "Schedule A" defendants. The case's progression will depend on Plaintiff's ability to identify the operators of the accused e-commerce stores and establish the court's jurisdiction over them.
• A final question relates to damages: If infringement is found, a central issue will be calculating the appropriate remedy, which under 35 U.S.C. § 289 can include the infringer's total profit from the sale of the articles embodying the patented design.