DCT

1:24-cv-00283

Deckers Outdoor Corp v. Partnerships Unincorp Associations

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
    • Plaintiff: Deckers Outdoor Corporation (Delaware)
    • Defendant: The Partnerships and Unincorporated Associations Identified on Schedule “A” (Jurisdiction(s) Unknown, believed to be People's Republic of China or other foreign jurisdictions)
    • Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
  • Case Identification: 1:24-cv-00283, N.D. Ill., 01/11/2024
  • Venue Allegations: Venue is alleged to be proper because Defendants target business activities toward consumers in the United States, including Illinois, through interactive e-commerce stores that have targeted sales to Illinois residents.
  • Core Dispute: Plaintiff alleges that unnamed e-commerce operators are infringing a design patent by selling footwear that copies the patented ornamental design of Plaintiff's UGG brand footwear.
  • Technical Context: The dispute centers on the ornamental design of comfort-leisure footwear, a segment of the consumer goods market where brand recognition and distinctive visual appearance are significant drivers of value.
  • Key Procedural History: The complaint is structured as an action against a group of unidentified "Schedule A" defendants, a common procedural posture in cases targeting online counterfeiters. It alleges that Defendants operate under multiple aliases to conceal their identities and interrelationships.

Case Timeline

Date Event
2019-07-23 D'901,870 Patent Application Filing Date
2020-11-17 U.S. Patent No. D'901,870 Issues
2024-01-11 Complaint Filed

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

U.S. Design Patent No. D901,870 - "Footwear Upper and Midsole"

The Invention Explained

  • Problem Addressed: Design patents do not articulate a technical problem and solution in the manner of utility patents. They protect the novel, non-functional, ornamental appearance of an article of manufacture.
  • The Patented Solution: The D'901,870 patent claims the specific ornamental design for a "footwear upper and midsole" (D'901,870 Patent, Claim). The claimed design, as depicted in the patent's figures, consists of the visual appearance of a sandal-style shoe featuring two wide, plush-textured upper straps over the top of the foot, a thick, plush-textured midsole, and an elasticized heel strap (D'901,870 Patent, Figs. 1-6). The patent explicitly disclaims certain parts of the shoe, such as the outsole and the precise attachment point of the heel strap, by rendering them in broken lines (D'901,870 Patent, Description). The complaint includes several figures from the patent to illustrate the claimed design (Compl. p. 4).
  • Technical Importance: The complaint alleges that footwear embodying this design has become "enormously popular and even iconic," and that genuine UGG Products with this design are "instantly recognizable" to the public (Compl. ¶6).

Key Claims at a Glance

  • Design patents contain a single claim. The asserted claim is: "The ornamental design for a footwear upper and midsole, as shown and described." (D'901,870 Patent, Claim).
  • The essential ornamental elements of the claimed design include:
    • A thick midsole with a plush or fleecy surface texture.
    • Two wide, similarly textured straps crossing the top of the foot.
    • A heel strap, shown with an elasticated portion.
    • The overall proportions and arrangement of these elements as depicted in the patent's figures.

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are footwear products referred to as the "Infringing Products" (Compl. ¶3). The complaint alleges these products are unauthorized and unlicensed footwear that copy the patented design.

Functionality and Market Context

The complaint alleges Defendants operate e-commerce stores under various "Seller Aliases" on platforms like Amazon, eBay, AliExpress, and Temu (Compl. ¶11). These stores are alleged to market and sell footwear that is visually identical or substantially similar to the design protected by the D’901,870 patent (Compl. ¶3, ¶24). The complaint further alleges that these e-commerce stores are designed to appear as authorized retailers to unknowing consumers and that the Infringing Products are manufactured by a common source (Compl. ¶14, ¶17).

IV. Analysis of Infringement Allegations

The complaint does not contain a detailed claim chart exhibit. The infringement theory is based 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 alleges that Defendants are making, using, selling, or importing products that "infringe directly and/or indirectly the ornamental design claimed in the UGG Design" (Compl. ¶24). The central allegation is that the overall visual appearance of the accused footwear is substantially the same as the ornamental design shown in the solid lines of the D'901,870 patent's figures.

  • Identified Points of Contention:
    • Visual Similarity: The central factual question for the court will be a direct visual comparison between the accused products and the figures of the D’901,870 patent. The outcome will depend on whether the designs are sufficiently similar to confuse an ordinary observer.
    • Scope Questions: A potential issue may be the scope of the claimed design. The patent's use of broken lines to disclaim the outsole and portions of the heel strap narrows the claim to the specific appearance of the upper and midsole (D'901,870 Patent, Description). The infringement analysis must focus only on the claimed elements shown in solid lines, not on the functional or unclaimed aspects of the footwear.

V. Key Claim Terms for Construction

In design patent litigation, the "claim" is defined by the drawings, and traditional claim term construction is rare. The primary interpretive exercise involves determining the scope of the claimed design based on the figures.

  • The "Term": The overall "ornamental design for a footwear upper and midsole."
  • Context and Importance: The scope of the design is critical. The analysis must distinguish between the claimed ornamental features (solid lines) and the unclaimed functional or environmental aspects (broken lines). Practitioners may focus on this distinction because any differences between the accused product and the unclaimed portions of the patent figures are legally irrelevant to the infringement analysis.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The complaint does not provide sufficient detail for analysis of this element. The patent itself does not suggest a broader scope beyond the drawings.
    • Evidence for a Narrower Interpretation: The patent specification provides an explicit instruction limiting the claim scope: "The broken lines in FIGS. 1-7 represent portions of the footwear that form no part of the claimed design. The broken lines which define the bounds of the claimed design form no part thereof." (D'901,870 Patent, Description). This language definitively limits the protected design to the visual appearance of the elements rendered in solid lines.

VI. Other Allegations

  • Indirect Infringement: The complaint makes a passing allegation of indirect infringement (Compl. ¶24) and aiding and abetting (Prayer for Relief ¶1.b). The factual basis appears to rest on allegations that Defendants work in "active concert" and are "interrelated," suggesting a theory of joint or contributory liability among the various seller aliases (Compl. ¶17, ¶20).
  • Willful Infringement: The complaint alleges that Defendants' infringement was willful (Compl. ¶21). This allegation is supported by claims that Defendants act "knowingly" and engage in conduct designed to evade detection, such as using multiple fictitious aliases and participating in online forums discussing tactics for avoiding enforcement actions (Compl. ¶16, ¶18, ¶20).

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

  1. Jurisdictional and Enforcement Viability: A primary challenge will be procedural: can the Plaintiff effectively identify, serve, and secure an enforceable judgment against a diffuse and allegedly pseudonymous group of foreign-based e-commerce operators? The case's success may depend heavily on the court's willingness to grant early discovery and asset restraints against the defendants' online marketplace accounts and payment processors.

  2. Substantive Design Infringement: The core substantive question is one of visual comparison: is the ornamental design of the Defendants' accused footwear substantially the same as the claimed design in the D'901,870 patent, from the perspective of an ordinary observer? The resolution will depend on a side-by-side comparison that properly focuses only on the claimed features shown in solid lines in the patent drawings.

  3. Willfulness and Damages: If infringement is found, a key issue will be willfulness and the appropriate measure of damages. The complaint's allegations of intentional copying and evasion tactics (Compl. ¶18, ¶20) could support a finding of willfulness, potentially leading to enhanced damages under 35 U.S.C. § 284. Furthermore, for design patent infringement, the plaintiff may seek the defendants' total profits under 35 U.S.C. § 289, which could be a significant remedy in an anti-counterfeiting context.