Deckers Outdoor Corp v. Partnerships Unincorp Associations

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Deckers Outdoor Corporation (Delaware)
  • Defendant: NKADJOR_SHOES and The Individuals and Entities Operating nkadjor_shoes (People's Republic of China or other foreign jurisdictions)
  • Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
• Case Identification: 1:24-cv-03623, N.D. Ill., 05/10/2024
• Venue Allegations: Venue is based on allegations that Defendants operate interactive e-commerce stores that target and sell products to consumers throughout the United States, including making sales to residents of Illinois.
• Core Dispute: Plaintiff alleges that Defendants’ e-commerce stores are making, using, offering for sale, selling, and/or importing footwear that infringes a U.S. design patent owned by the Plaintiff.
• Technical Context: The dispute concerns the ornamental design of consumer footwear in the popular and commercially significant comfort-leisure boot market.
• Key Procedural History: This Amended Complaint targets numerous e-commerce operators, identified collectively on a "Schedule A," who allegedly operate under multiple seller aliases to conceal their identities. Plaintiff alleges that its own products embodying the patented design are marked in compliance with patent notice statutes.

Case Timeline

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

U.S. Design Patent No. D927,161 - "FOOTWEAR UPPER"

• Patent Identification: U.S. Design Patent No. D927,161, titled "FOOTWEAR UPPER," issued August 10, 2021. (Compl. ¶3; D’927,161 Patent, front page).

The Invention Explained

• Problem Addressed: Design patents do not solve technical problems; rather, they protect the novel, ornamental appearance of an article of manufacture. The goal is to create a visually distinct and recognizable product design. (D’927,161 Patent, Claim).
• The Patented Solution: The patent claims the specific ornamental design for a "footwear upper." (D’927,161 Patent, Claim). The visual design, as shown in the patent's figures, consists of a low-profile, slip-on bootie characterized by its overall shape, a prominent vertical seam on the rear of the upper, a distinct pull-tab extending from the rear collar, and a defined band around the ankle opening. (D’927,161 Patent, Figs. 1-7). The patent explicitly disclaims the sole of the footwear, which is rendered in broken lines, indicating it is not part of the protected design. (D’927,161 Patent, Description).
• Technical Importance: The complaint alleges these footwear designs are "broadly recognized by consumers" and are associated with the quality and innovation of the plaintiff's UGG brand products. (Compl. ¶7).

Key Claims at a Glance

• The patent asserts a single claim: "The ornamental design for a footwear upper, as shown and described." (D’927,161 Patent, Claim).
• This claim protects the overall visual appearance of the footwear upper as depicted in the solid lines of Figures 1 through 7 of the patent.

III. The Accused Instrumentality

Product Identification

The accused products are footwear, referred to in the complaint as the "Infringing Product." (Compl. ¶3). These products are allegedly sold by Defendants through various e-commerce stores operating under multiple "Seller Aliases" on platforms such as DHgate. (Compl. ¶¶3, 11).

Functionality and Market Context

The complaint alleges Defendants operate "fully interactive, e-commerce stores" to sell the accused footwear directly to U.S. consumers. (Compl. ¶11). These storefronts are allegedly designed to appear as authorized retailers and use images that make it difficult for consumers to distinguish them from genuine outlets. (Compl. ¶14). The complaint asserts that Defendants are not licensed or authorized to use the patented design. (Compl. ¶14). The complaint alleges that the footwear shown in its Exhibit 1 is an example of the "Infringing Product." (Compl. ¶3).

IV. Analysis of Infringement Allegations

The standard for infringement of a design patent is whether an "ordinary observer," familiar with the prior art designs, would be deceived into purchasing the accused product believing it to be the patented design. The complaint alleges that the accused products create a visual impression that is substantially the same as the patented design. (Compl. ¶24). A table on page 4 of the complaint displays seven figures from the D'927,161 Patent, identifying it as the "UGG Design." (Compl. p. 4).

D'927,161 Infringement Allegations

Identified Points of Contention

• Visual Similarity: The central question will be a factual comparison: is the overall ornamental appearance of the accused footwear substantially the same as the design claimed in the ’927,161 Patent from the perspective of an ordinary observer?
• Impact of Prior Art: The scope of a design patent can be narrowed by prior art. A court's analysis may consider how the claimed design differs from pre-existing footwear designs, which could influence the infringement analysis by highlighting which features of the patented design are truly novel and ornamental.
• Identity of Infringers: Given the allegations that Defendants operate through a network of concealed aliases, a significant practical issue may be identifying the specific entities responsible for the alleged infringement and connecting them to the sale of the accused products. (Compl. ¶¶ 9-10).

V. Key Claim Terms for Construction

In design patent cases, claim construction is primarily a matter of interpreting the scope of the design as illustrated in the patent figures, rather than defining textual terms.

• The Term: "The ornamental design for a footwear upper, as shown and described."
• Context and Importance: The entire infringement analysis depends on the scope of this claim. The court's interpretation will determine which visual elements are protected and which are not, thereby defining the benchmark against which the accused products are compared. Practitioners may focus on this issue because the distinction between claimed (solid lines) and unclaimed (broken lines) subject matter is absolute.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party seeking a broader scope may argue that the claim protects the overall visual impression and general aesthetic of the footwear upper, and that minor variations in the accused product do not avoid infringement if the overall appearance is substantially similar. The focus would be on the holistic design rather than a component-by-component match. (D’927,161 Patent, Fig. 1).
  • Evidence for a Narrower Interpretation: A party seeking a narrower scope may point to the explicit disclaimer in the specification: "The broken lines in FIGS. 1-7 represent portions of the footwear that form no part of the claimed design." (D’927,161 Patent, Description). This language strictly limits protection to the features rendered in solid lines—the upper—and excludes the sole. An argument could be made that protection is limited to the precise proportions and arrangement of the specific features shown, such as the exact shape of the pull-tab and the placement of the rear seam. (D’927,161 Patent, Fig. 5).

VI. Other Allegations

• Indirect Infringement: The complaint includes a conclusory allegation of indirect infringement and requests relief for "aiding, abetting, [or] contributing to" infringement. (Compl. ¶24; Prayer for Relief ¶1(b)). However, the factual allegations in the body of the complaint focus on the Defendants' own alleged acts of making, offering, selling, and importing the accused products, which constitute direct infringement. The complaint does not provide specific detail for an independent indirect infringement theory.
• Willful Infringement: Willfulness is explicitly alleged. (Compl. ¶21). The complaint asserts this is based on Defendants "knowingly and willfully" manufacturing and selling the infringing products as part of a concerted effort. (Compl. ¶20). The allegations that Defendants operate under multiple aliases and use tactics to evade detection may be used to support a finding of objective recklessness or egregious conduct. (Compl. ¶¶16, 18).

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

1. A central issue will be one of design infringement: would an ordinary observer, viewing the accused footwear in the context of the prior art, be deceived into thinking its design is the same as the ornamental design for a "footwear upper" claimed in the D'927,161 patent?
2. A key legal question will be the scope of the patented design: how much visual variation is permissible before an accused product is no longer "substantially the same" as the claimed design? The court's analysis will likely be influenced by the novelty and non-obviousness of the design elements over prior art.
3. Given the alleged nature of the defendants, a critical practical question will be one of enforcement and identification: assuming infringement is found, can the plaintiff effectively enforce an injunction and recover damages against a diffuse and allegedly anonymous network of international e-commerce operators?