DCT

1:24-cv-00813

Deckers Outdoor Corp v. Partnerships Unincorp Associations

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-00813, N.D. Ill., 01/30/2024
  • Venue Allegations: Venue is based on allegations that Defendants operate interactive e-commerce stores that target and make sales to consumers in Illinois.
  • Core Dispute: Plaintiff alleges that numerous unidentified e-commerce operators are selling footwear that infringes its design patent for a popular sandal style.
  • Technical Context: The dispute is in the consumer fashion and footwear sector, concerning the ornamental design of comfort-leisure sandals.
  • Key Procedural History: The complaint is structured as a "Schedule A" action against a large number of unidentified defendants, a procedural approach often used in anti-counterfeiting litigation. It alleges Defendants operate in foreign jurisdictions with lax intellectual property enforcement and use tactics to conceal their identities, such as operating under multiple aliases and using offshore accounts.

Case Timeline

Date Event
2019-07-23 D'901,870 Patent Priority Date
2020-11-17 D'901,870 Patent Issue Date
2024-01-30 Complaint Filing Date

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

  • Patent Identification: U.S. Design Patent No. D901,870, titled “Footwear upper and midsole,” issued November 17, 2020.
  • The Invention Explained:
    • Problem Addressed: Design patents protect ornamental appearance rather than solving a technical problem. The patent seeks to protect a new, original, and ornamental design for an article of manufacture, specifically footwear (D’901,870 Patent, Claim).
    • The Patented Solution: The patent claims the specific visual appearance of a "footwear upper and midsole" (D’901,870 Patent, Title). As shown in the patent's figures, the design is characterized by a thick, platform-style midsole, two wide, textured straps crossing the top of the foot, and a rear heel strap (D’901,870 Patent, FIGS. 1-6). The claim is for the design "as shown and described," with broken lines in the figures indicating features, such as the bottom tread of the outsole, that are not part of the claimed design (D’901,870 Patent, Description).
    • Technical Importance: The complaint alleges that footwear embodying the patented design has become "enormously popular and even iconic" and that the design is broadly recognized by consumers (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’901,870 Patent, Claim).
    • The scope of this claim is defined by the solid lines in the patent's seven figures, which collectively illustrate the design's visual characteristics from multiple perspectives. Key ornamental features include:
      • The overall shape and proportion of the thick midsole.
      • The placement and appearance of the two wide straps over the vamp.
      • The presence and configuration of the rear heel strap.

III. The Accused Instrumentality

  • Product Identification: The accused instrumentalities are footwear referred to as the "Infringing Products," which are allegedly unauthorized products sold by Defendants that embody the patented design (Compl. ¶3).
  • Functionality and Market Context: The accused products are sandals sold by the Defendants through various online marketplace platforms, such as Amazon, eBay, AliExpress, and Temu (Compl. ¶11). The complaint alleges that Defendants operate e-commerce stores that are designed to appear as authorized retailers to "unknowing consumers" and that the products are manufactured by a common source (Compl. ¶14, ¶17). The complaint provides a visual chart of the patented design. The complaint presents a chart containing figures of the patented design to illustrate its appearance (Compl. pp. 4-5).

IV. Analysis of Infringement Allegations

The complaint does not contain a detailed claim chart. The infringement theory is based on a direct visual comparison between the accused products and the patented design.

D'901,870 Infringement Allegations

The complaint alleges that Defendants are "making, using, offering for sale, selling, and/or importing" products that "infringe directly and/or indirectly the ornamental design claimed in the UGG Design" (Compl. ¶24). The legal test for design patent infringement is whether, in the eye of an ordinary observer, the accused design is substantially the same as the claimed design, such that the observer would be induced to purchase the accused product supposing it to be the patented one. The complaint asserts that the footwear sold by Defendants is the "same unauthorized and unlicensed product" that infringes the D'870 patent (Compl. ¶3). The complaint includes a table with multiple views from the D'870 patent to illustrate the claimed ornamental design (Compl. pp. 4-5).

  • Identified Points of Contention:
    • Visual Similarity: The central dispute will be a visual one. The key question is whether an ordinary observer, giving the attention a purchaser usually gives, would find the accused products to be substantially the same as the design claimed in the D'870 patent.
    • Scope Questions: A potential issue may be the effect of features shown in broken lines in the patent drawings (e.g., the outsole tread pattern). Defendants may argue that differences in these unclaimed portions of the footwear are sufficient to alter the overall visual impression, while Plaintiff may argue that only the claimed portions (in solid lines) are relevant to the infringement analysis.

V. Key Claim Terms for Construction

In design patent litigation, claim construction focuses on the scope of the design as a whole, rather than the definition of specific text-based terms.

  • The Term: "The ornamental design for a footwear upper and midsole, as shown and described."
  • Context and Importance: The construction of this "claim" will define the scope of the protected design. The central issue is determining which visual features are covered by the patent, as defined by the solid lines in the drawings. This interpretation will establish the benchmark against which the accused products are compared.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent's title, “Footwear upper and midsole,” and the use of surface shading rather than claiming a specific material, could support an interpretation that the design is not limited to a particular material (e.g., fleece) or color, but covers the overall shape, proportions, and configuration of the elements shown in solid lines (D’901,870 Patent, Title; FIGS. 1-6).
    • Evidence for a Narrower Interpretation: The patent's description explicitly disclaims subject matter shown in broken lines, stating they "form no part of the claimed design" (D’901,870 Patent, Description). This language narrows the claim's scope to only the specific visual elements depicted in solid lines, including their precise shapes, proportions, and arrangement.

VI. Other Allegations

  • Indirect Infringement: The complaint does not contain a separate count for indirect infringement. However, the prayer for relief requests an injunction against "aiding, abetting, contributing to, or otherwise assisting anyone" in infringing the patent, which is language associated with indirect infringement theories (Compl. p. 11, Prayer for Relief ¶1(b)). The complaint does not allege specific facts supporting inducement or contributory infringement by the named seller Defendants.
  • Willful Infringement: The complaint alleges that Defendants’ infringement was and is willful (Compl. ¶21). This allegation is supported by claims that Defendants are "working in active concert to knowingly and willfully" sell infringing products and that they employ tactics to conceal their identities and evade enforcement, suggesting knowledge of their infringing activity (Compl. ¶10, ¶16, ¶20).

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

  1. A dispositive issue will be one of visual comparison: applying the "ordinary observer" test, is the ornamental design of the Defendants' accused footwear substantially the same as the specific design claimed in the D'870 patent, considering the design as a whole?
  2. A foundational legal question will be the scope of the patent grant: how will the court define the scope of the claimed design in view of the prior art and the patent's use of broken lines to disclaim certain features? The scope will dictate the level of similarity required to prove infringement.
  3. A significant practical question will be one of enforcement: given that the Defendants are unidentified entities alleged to be operating from foreign jurisdictions, a central challenge for the Plaintiff will be effectively identifying the responsible parties and enforcing any potential judgment.