DCT

1:24-cv-01907

Deckers Outdoor Corp v. Partnerships Unincorp Associations

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-01907, N.D. Ill., 03/06/2024
  • Venue Allegations: Venue is asserted on the basis that Defendants operate interactive e-commerce stores that directly target and make sales to consumers in Illinois.
  • Core Dispute: Plaintiff alleges that numerous online retailers are selling footwear that infringes its U.S. design patent covering an ornamental footwear design.
  • Technical Context: The dispute is in the consumer footwear industry and concerns the ornamental design of a popular open-toed slide sandal.
  • Key Procedural History: The complaint is structured as an action against a group of unidentified defendants, listed on a sealed "Schedule A," who allegedly operate a network of online stores. Plaintiff states that its products embodying the patented design are marked in compliance with patent law, which could be relevant to damages calculations.

Case Timeline

Date Event
2018-09-12 D866,941 Patent Priority Date (Filing)
2019-11-19 D866,941 Patent Issued
2024-03-06 Complaint Filed

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

U.S. Design Patent No. D866,941 - "Footwear Upper and Midsole"

  • Patent Identification: U.S. Design Patent No. D866,941, titled "Footwear Upper and Midsole," issued on November 19, 2019. (Compl. ¶3, p. 4).

The Invention Explained

  • Problem Addressed: Design patents do not solve technical problems; they protect the new, original, and ornamental appearance of an article of manufacture (D866,941 Patent, CLAIM).
  • The Patented Solution: The patent claims the ornamental design for a "Footwear Upper and Midsole" (D866,941 Patent, Title). The design's visual characteristics, shown in solid lines in the patent's figures, include a thick, platform-style midsole and a plush upper comprised of multiple, parallel, rounded bands crossing the top of the foot (D866,941 Patent, FIG. 1, FIG. 6). The patent explicitly disclaims features shown in broken lines, such as the elastic heel strap and the bottom tread of the outsole, meaning these elements are not part of the protected design (D866,941 Patent, DESCRIPTION).
  • Technical Importance: The complaint alleges that footwear with these "distinctive patented designs" have become "enormously popular and even iconic," and are "broadly recognized by consumers" as originating from Plaintiff (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" in the patent's drawings (Compl. ¶24; D866,941 Patent, CLAIM).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are footwear products ("Infringing Products") sold by Defendants on various online marketplace platforms, including Amazon, eBay, AliExpress, and Temu (Compl. ¶¶3, 11).

Functionality and Market Context

The complaint alleges Defendants operate numerous "fully interactive, e-commerce stores" under various "Seller Aliases" to sell the accused footwear (Compl. ¶11). These stores are allegedly designed to appear as authorized retailers to "unknowing consumers" and employ tactics to conceal the operators' identities, such as using false registration information and operating multiple virtual storefronts (Compl. ¶¶12, 14, 15). The complaint alleges these sellers are part of an interrelated network, pointing to shared identifiers like common design templates, payment methods, and textual errors on their websites (Compl. ¶17). The complaint includes a table showing images from the patent to illustrate the "UGG Design" at issue (Compl. p. 4). This table provides multiple views of the patented design, including perspective, side, and top-down views, which forms the basis for comparison against accused products.

IV. Analysis of Infringement Allegations

Design patent infringement analysis does not use a traditional element-by-element claim chart. Instead, infringement is determined by 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' products infringe the D866,941 patent.

Identified Points of Contention

  • Visual Similarity: The central question will be whether the overall ornamental appearance of the Defendants' footwear is "substantially the same" as the design claimed in the '941 Patent. This will involve a visual comparison between the accused products and the patent's drawings, focusing only on the features shown in solid lines.
  • Procedural Questions: A significant portion of the complaint is dedicated to establishing that the "Schedule A" Defendants, though anonymous, form a cohesive and interrelated group of infringers (Compl. ¶¶10, 17, 20). A key question for the court will be whether the evidence is sufficient to link these disparate online seller aliases to a single network and exercise jurisdiction over them.

V. Key Claim Terms for Construction

Claim construction is typically not a central issue in design patent litigation. The claim is understood to be for the design as a whole, as depicted in the drawings. The scope of the claim is defined by the solid lines in the patent figures, while the broken lines illustrate environment and are not part of the claimed design (D866,941 Patent, DESCRIPTION). The dispute is unlikely to turn on the definition of a specific term and will instead focus on the visual comparison required by the ordinary observer test.

VI. Other Allegations

Indirect Infringement

The complaint alleges that Defendants infringe "directly and/or indirectly" and also prays for an injunction against "aiding, abetting, contributing to, or otherwise assisting anyone" in infringing (Compl. ¶24; Prayer for Relief, ¶1(b)). The factual basis for this appears to be the allegation that Defendants are "working in active concert" to manufacture, import, and sell the infringing products (Compl. ¶20).

Willful Infringement

Willfulness is alleged based on the assertion that Defendants "knowingly and willfully" offered for sale and sold products that infringe the "UGG Design" (Compl. ¶20). The complaint suggests this knowledge can be inferred from Defendants' alleged tactics to conceal their identities and evade enforcement, which are described as common practices among infringers (Compl. ¶¶12, 15-16).

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

  1. A Question of Visual Identity: The core infringement question will be one of visual identity under the ordinary observer test: Is the overall ornamental design of the footwear sold by the "Schedule A" Defendants substantially the same as the specific design claimed in the D866,941 patent, considering the scope defined by the solid-line drawings?
  2. A Question of Collective Liability: A critical procedural and evidentiary question will be whether Plaintiff can successfully demonstrate that the numerous, anonymous e-commerce sellers are an interrelated network acting in concert. The court's willingness to treat the "Schedule A" defendants as a single litigable group will be fundamental to the case's progress.