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” (People's Republic of China or other foreign jurisdictions)
  • Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
• Case Identification: 1:23-cv-14710, N.D. Ill., 10/10/2023
• 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 Defendants’ footwear products, sold through a network of online storefronts, infringe a U.S. design patent covering the ornamental appearance of a sandal.
• Technical Context: The dispute concerns the ornamental design of consumer footwear, a market where distinctive visual appearance can be a significant driver of brand identity and value.
• Key Procedural History: The action is brought against a group of unidentified defendants, a common strategy for combating diffuse online sellers who allegedly operate under multiple aliases to evade enforcement. Plaintiff alleges its UGG-branded products embodying the design are marked in compliance with patent notice statutes.

Case Timeline

Date	Event
2019-07-23	D'870 Patent Priority Date (Filing Date)
2020-11-17	D'870 Patent Issue Date
2023-10-10	Complaint Filing Date

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

U.S. Design Patent No. D901,870 - “FOOTWEAR UPPER AND MIDSOLE,” Issued November 17, 2020

The Invention Explained

• Problem Addressed: Unlike utility patents, design patents do not solve a functional problem. They protect the novel, non-obvious, and ornamental appearance of an article of manufacture (Compl. ¶7).
• The Patented Solution: The D'870 Patent claims the specific ornamental design for a "footwear upper and midsole" (D'870 Patent, Claim). The protected design, shown in solid lines in the patent's figures, consists of the visual characteristics of a sandal, including two wide, plush-textured upper straps, a contoured, thick-walled midsole, and a rear heel strap (D'870 Patent, Figs. 1-6). The patent explicitly disclaims elements shown in broken lines, such as the pattern on the bottom of the sole, meaning those elements are not part of the protected design (D'870 Patent, Description).
• Technical Importance: The complaint alleges that such distinctive designs are a core part of the UGG brand's value, are "broadly recognized by consumers," and are associated with the quality and innovation the public expects from UGG products (Compl. ¶¶6-7).

Key Claims at a Glance

• Design patents contain a single claim. The asserted claim is for: "The ornamental design for a footwear upper and midsole, as shown and described." (D'870 Patent, Claim).
• The essential elements of the claim are the visual features depicted in the patent's drawings, including:
  • The overall configuration and proportions of the upper and midsole.
  • The appearance of two wide straps crossing the top of the foot.
  • The appearance of a heel strap.
  • The specific profile and thickness of the midsole.
  • The surface ornamentation, depicted as a stippled, plush texture.

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are footwear referred to as the "Infringing Products" (Compl. ¶3).

Functionality and Market Context

The Infringing Products are footwear sold by Defendants through numerous "fully interactive, e-commerce stores" operating under various "Seller Aliases" on online marketplace platforms such as Amazon, eBay, AliExpress, and Temu (Compl. ¶11). The complaint alleges these online stores are designed to appear as authorized retailers and use common templates, payment methods, and marketing tactics, suggesting they are operated by an interrelated network of infringers (Compl. ¶¶14, 17). These sellers are alleged to be based in foreign jurisdictions like the People's Republic of China (Compl. ¶9).

IV. Analysis of Infringement Allegations

The complaint does not contain a detailed claim chart but alleges that the Infringing Products directly and/or indirectly infringe the ornamental design claimed in the D'870 Patent (Compl. ¶24). The central allegation is that the accused footwear is substantially the same in appearance as the patented design, such that it would deceive an ordinary observer. The complaint includes a multi-panel figure table illustrating various views of the patented design, such as perspective, side, and top-down views (Compl. p. 4).

Identified Points of Contention

• Visual Similarity: The primary question for the court will be whether an ordinary observer, giving such attention as a purchaser usually gives, would find the overall visual appearance of the accused products to be substantially the same as the design shown in the D’870 Patent figures. This analysis will involve a side-by-side comparison of the products.
• Scope of the Claimed Design: A potential point of dispute may be the precise scope of the claimed design. The infringement analysis must focus only on the elements shown in solid lines in the patent drawings, as the patent explicitly disclaims the elements shown in broken lines (e.g., the bottom tread pattern) from the scope of its claim (D'870 Patent, Description).

V. Key Claim Terms for Construction

In design patent litigation, the "claim" is understood to be the drawings themselves, and formal construction of verbal terms is rare. The analysis focuses on the scope of the design as depicted.

The Term: "The ornamental design... as shown and described"

The interpretation of the visual scope of the drawings is the central issue. The case will depend on what an ordinary observer perceives as the overall design captured by the solid lines in Figures 1-7 of the D’870 Patent. Practitioners may focus on this issue because the distinction between the claimed elements (solid lines) and the unclaimed environment (broken lines) defines the boundaries of the patent's protection.

Intrinsic Evidence for Interpretation

• Evidence for a Broader Interpretation: A party arguing for infringement may contend that the "overall visual impression" is what matters, focusing on the combination of the thick sole, two plush forefoot straps, and heel strap, which together create a distinctive look that the accused products allegedly copy (D'870 Patent, Fig. 1).
• Evidence for a Narrower Interpretation: A party defending against infringement may highlight the patent’s disclaimer of all matter shown in broken lines, arguing that the claimed design is limited to the exact shapes, proportions, and surface textures shown in solid lines and does not cover different, although similar, sandal configurations (D'870 Patent, Description, "The broken lines... form no part of the claimed design.").

VI. Other Allegations

Indirect Infringement

The complaint alleges that Defendants are "working in active concert" to sell the Infringing Products and asks the court to enjoin those "aiding, abetting, contributing to, or otherwise assisting" in the infringement, which suggests a theory of joint, induced, or contributory infringement (Compl. ¶20; Prayer ¶1(b)).

Willful Infringement

Willfulness is explicitly alleged (Compl. ¶21). The complaint supports this by claiming Defendants knowingly and willfully sell the Infringing Products and engage in tactics to conceal their identities and evade enforcement, such as using multiple aliases and offshore accounts, which suggests an awareness of the infringing nature of their conduct (Compl. ¶¶10, 16-19).

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

1. A core issue will be one of visual identity: In the eyes of an ordinary observer familiar with the prior art, is the overall ornamental design of the Defendants' accused footwear substantially the same as the specific design claimed in the solid-line drawings of the D'870 patent?

2. A key procedural and enforcement challenge will be whether the Plaintiff can successfully identify, serve, and secure an enforceable judgment against a network of anonymous defendants alleged to be operating internationally and using tactics designed to obscure their identities and assets (Compl. ¶¶9, 19).

3. A central evidentiary question will be whether the Plaintiff can prove its allegations of willfulness by demonstrating that Defendants operated as a coordinated network that knowingly infringed Deckers' design patent while taking active measures to evade detection and legal consequences (Compl. ¶¶18, 20).