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” (Jurisdiction Unknown)
  • Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
• Case Identification: 1:24-cv-03743, N.D. Ill., 05/08/2024
• Venue Allegations: Venue is asserted based on Defendants' alleged activities of directly targeting consumers in Illinois through interactive e-commerce stores.
• Core Dispute: Plaintiff alleges that numerous unidentified online retailers are making, using, selling, and importing footwear that infringes its design patent for a footwear upper.
• Technical Context: The case concerns the ornamental design of consumer footwear, a market where distinctive aesthetics can be a significant driver of commercial value and brand recognition.
• Key Procedural History: The complaint is structured as a "Schedule A" action, a common procedural vehicle used by brand owners to sue numerous, often anonymous, online sellers of allegedly counterfeit or infringing goods in a single lawsuit. Plaintiff alleges its products embodying the patented design are marked in compliance with patent law.

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 (“Footwear Upper”), issued August 10, 2021 (the “’161 Patent”).

The Invention Explained

• Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture rather than its utilitarian features. The objective is to create a new, original, and non-obvious aesthetic design that distinguishes a product in the marketplace (Compl. ¶6-7).
• The Patented Solution: The ’161 Patent claims a specific ornamental design for a footwear upper. The visual characteristics of the design are defined by the solid lines in the patent's figures, which depict the article from multiple perspectives (D’161 Patent, FIGs. 1-7). The patent explicitly disclaims the subject matter shown in broken lines, stating, "The broken lines in FIGS. 1-7 represent portions of the footwear that form no part of the claimed design" (D’161 Patent, Description). This means the protected design consists only of the upper's shape, seam configuration, collar, and rear pull-tab, not the sole unit.
• Technical Importance: The complaint alleges that distinctive designs are a key aspect of the UGG brand's value and consumer recognition (Compl. ¶5-7).

Key Claims at a Glance

• The patent asserts a single claim: "The ornamental design for a footwear upper, as shown and described" (D'161 Patent, Claim).
• In design patents, the claim's scope is defined by the drawings. The asserted claim covers the overall visual impression created by the combination of ornamental features depicted in solid lines in the patent figures.

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are footwear products, referred to as the "Infringing Product," allegedly sold by Defendants through various e-commerce stores operating under the "Seller Aliases" listed in the complaint's Schedule A (Compl. ¶3, ¶9).

Functionality and Market Context

• The complaint alleges that Defendants operate e-commerce stores on platforms including Amazon, eBay, AliExpress, and Temu to sell footwear that incorporates Plaintiff's patented design to consumers throughout the United States (Compl. ¶11). These stores are designed to appear as authorized retailers to unknowing consumers, thereby trading on the goodwill associated with Plaintiff's UGG brand (Compl. ¶3, ¶14). The complaint provides a table of figures from the patent to illustrate the design at issue (Compl. p. 4). This table includes a perspective view of the footwear upper, showing its overall shape, side profile, and seam details (Compl. p. 4).

IV. Analysis of Infringement Allegations

Design patent 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. A formal claim chart breaking down elements is not typically used. The following table compares the visual features of the patented design with the complaint's allegations.

’161 Patent Infringement Allegations

• Identified Points of Contention:
  • Factual Question: The central issue will be a factual comparison of the accused products' designs against the design claimed in the '161 Patent. The dispositive question is whether the designs are "substantially the same" from the perspective of an ordinary observer.
  • Scope Question: The analysis will focus strictly on the footwear upper shown in solid lines in the patent drawings. Any differences in the sole unit of the accused products would be irrelevant to the infringement analysis, as the sole is explicitly disclaimed from the patent's scope (D'161 Patent, Description).

V. Key Claim Terms for Construction

Claim construction for design patents is rare, as the drawings themselves are generally considered the best description of the invention. The primary issue is not construing terms, but rather determining the scope of the claimed design.

• The Term: "The ornamental design for a footwear upper"
• Context and Importance: The scope of this phrase is defined entirely by the patent's drawings. Practitioners may focus on the distinction between the solid lines (claimed subject matter) and broken lines (unclaimed environment) because this distinction is fundamental to the infringement analysis. The case will turn on the visual appearance of the upper alone.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim covers the "overall ornamental design," suggesting that the holistic visual impression is what is protected, and minor deviations may not escape infringement if the overall appearance is the same.
  • Evidence for a Narrower Interpretation: The patent specification provides a definitive limitation on scope: "The broken lines in FIGS. 1-7 represent portions of the footwear that form no part of the claimed design" (D'161 Patent, Description). This language strictly confines the protected design to the upper, excluding the sole and any other features shown in broken lines.

VI. Other Allegations

• Indirect Infringement: While Count I is for direct infringement, the prayer for relief seeks to enjoin those "aiding, abetting, contributing to, or otherwise assisting" in the infringement (Compl. p. 10, ¶1(b)). The complaint also alleges Defendants are "working in active concert to knowingly and willfully" infringe (Compl. ¶20), which may support a theory of joint or indirect infringement.
• Willful Infringement: The complaint alleges that Defendants' infringement was willful (Compl. ¶21). This allegation is supported by claims that Defendants are part of an interconnected network of online sellers who knowingly copy designs and use sophisticated tactics to conceal their identities and evade enforcement actions (Compl. ¶15-19).

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

1. A central procedural question will be one of enforceability and jurisdiction: can the Plaintiff effectively identify, serve, and secure a meaningful remedy against the numerous anonymous Defendants, who are alleged to operate from foreign jurisdictions and take active measures to conceal their identities and assets? (Compl. ¶9, ¶19).
2. The core substantive issue will be one of visual comparison: applying the "ordinary observer" test, is the overall ornamental design of the footwear sold by the Defendants substantially the same as the design claimed in the ’161 Patent, such that a consumer would be deceived?
3. A key damages question will be evidentiary: should liability be established, what proof can Plaintiff offer to calculate Defendants' total profits from the infringement—the remedy provided by 35 U.S.C. § 289—particularly given the anticipated difficulty in obtaining discovery from the anonymous and allegedly evasive Defendants?