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' (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-04146, N.D. Ill., 05/20/2024
• Venue Allegations: Venue is based on allegations that Defendants operate interactive e-commerce stores that directly target and make sales to consumers in Illinois.
• Core Dispute: Plaintiff alleges that numerous unknown online retailers are selling footwear that infringes a U.S. design patent covering the ornamental appearance of an UGG-brand sandal.
• Technical Context: The lawsuit concerns the ornamental design of consumer footwear, a fashion-driven market where a product's unique visual appearance is a primary component of its commercial value and brand identity.
• Key Procedural History: This action is a "Schedule A" complaint, a legal strategy often employed by brand owners to simultaneously target a large number of anonymous online sellers, who are typically based overseas and operate under fictitious aliases, in a single proceeding.

Case Timeline

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

U.S. Design Patent No. D901,870 - "FOOTWEAR UPPER AND MIDSOLE"

• Patent Identification: U.S. Design Patent No. D901,870, "FOOTWEAR UPPER AND MIDSOLE," issued November 17, 2020.

The Invention Explained

• Problem Addressed: The patent does not address a technical problem but instead provides a new and unique ornamental design for footwear, which serves to distinguish the product's appearance in the marketplace (Compl. ¶¶6-7).
• The Patented Solution: The patent claims the specific visual appearance of a footwear upper and midsole ('870 Patent, Claim). The design consists of a sandal with a thick, platform-style midsole and two prominent, thick upper straps that cross the instep ('870 Patent, FIGS. 1-3). The drawings use stippling to indicate a plush, fleecy, or textured surface on the straps and midsole wrap. The claim explicitly excludes, through the use of broken lines, the outsole pattern and the specific hardware connecting the heel strap, focusing protection on the core visual elements of the upper and midsole ('870 Patent, Description, FIGS. 1, 7).
• Technical Importance: The claimed design creates a distinctive aesthetic for a casual sandal, which the complaint alleges has become "iconic" and is associated by consumers with the quality and innovation of the UGG brand (Compl. ¶6).

Key Claims at a Glance

• The single claim of the patent is asserted: "The ornamental design for a footwear upper and midsole, as shown and described."
• The key visual features defining the claimed design include:
  • The overall configuration and aesthetic of a sandal with two thick upper straps on a platform sole.
  • The specific shape, proportion, and parallel arrangement of the two upper straps.
  • The particular height and profile of the thick midsole.
  • The surface appearance, suggested by stippling, of the claimed components.

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are footwear products ("Infringing Products") sold by the Defendants through e-commerce stores operating on platforms such as Amazon, eBay, AliExpress, and Temu (Compl. ¶¶3, 11).

Functionality and Market Context

• The complaint alleges the accused products are unauthorized and unlicensed footwear that copy the patented "UGG Design" (Compl. ¶¶3, 14). These products are allegedly sold through a network of online stores that operate under fictitious "Seller Aliases" to conceal the operators' true identities and make it difficult for consumers to distinguish them from authorized retailers (Compl. ¶¶10, 14, 16). A table in the complaint displays multiple views of the patented sandal design, which Plaintiff identifies as the "UGG Design" that the "Infringing Products" are alleged to copy (Compl. p. 4).

IV. Analysis of Infringement Allegations

The complaint alleges that the accused products infringe the '870 Patent because, in the eye of an ordinary observer, their design is substantially the same as the claimed design, inducing the purchase of the accused product in the belief it is the patented product (Compl. ¶24).

D901,870 Infringement Allegations

• Identified Points of Contention:
  • Visual Similarity: The central question for infringement is the application of the "ordinary observer" test. The court will need to determine whether the accused products are substantially the same in overall visual appearance as the claimed design depicted in the '870 patent figures.
  • Scope of Protection: A potential issue is the precise scope of the claimed design. The analysis will focus on the design as a whole, but the claimed features (solid lines) must be compared against the accused products, while the unclaimed features (broken lines) are ignored.

V. Key Claim Terms for Construction

As this is a design patent, claim construction focuses on the scope of the claimed ornamental design as a whole, rather than on specific textual terms. The "construction" is of the visual scope of the design as depicted in the patent's figures.

• The "Term": The "ornamental design for a footwear upper and midsole."
• Context and Importance: The scope of this design is the central issue of the infringement analysis. The determination of infringement will depend entirely on how the overall visual appearance of the claimed design is interpreted and compared to the accused products under the "ordinary observer" test.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue that the claim covers the general concept of a plush-textured, two-strap, platform sandal, focusing on the overall visual impression created by these elements in combination.
  • Evidence for a Narrower Interpretation: A party could argue the claim is limited to the exact proportions, curvatures, and arrangement shown in the solid-line drawings of the '870 patent. The explicit disclaimer of the outsole and strap connectors via broken lines confirms that the claim is precisely limited to the specific upper and midsole shapes shown ('870 Patent, Description).

VI. Other Allegations

• Indirect Infringement: While the factual allegations focus on the Defendants' own direct infringement, the prayer for relief requests an injunction against "aiding, abetting, contributing to, or otherwise assisting anyone" in infringing the patent (Compl. p. 11, ¶1(b)).
• Willful Infringement: The complaint alleges that Defendants' infringement was "knowingly and willfully" committed (Compl. ¶20-21). This allegation is supported by claims that Defendants operate under multiple fictitious aliases and use other tactics to conceal their identities and evade enforcement, suggesting knowledge of wrongdoing (Compl. ¶¶16-17).

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

• Procedural Efficacy: A primary question is procedural: given that the defendants are numerous, anonymous, and allegedly foreign, will the court grant the requested ex parte temporary restraining order and preliminary injunction to quickly halt sales from the identified e-commerce stores?
• Visual Similarity and Infringement: The core substantive issue is one of design scope: do the accused products create an overall visual impression so similar to the specific design claimed in the '870 patent that it would deceive an ordinary observer? The outcome will depend on a direct visual comparison between the patent figures and evidence of the products sold by Defendants.
• Damages and Willfulness: A key question regarding remedy will be whether the plaintiff can prove that the infringement was willful. If so, this could lead to an award of enhanced damages and attorney's fees, in addition to the disgorgement of the infringers' total profits, which is a remedy specific to design patent infringement.