DCT
1:24-cv-08429
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” (China / Other Foreign Jurisdictions)
- Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
- Case Identification: Deckers Outdoor Corporation v. The Partnerships and Unincorporated Associations Identified on Schedule “A”, 1:24-cv-08429, N.D. Ill., 09/13/2024
- 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 e-commerce operators are selling footwear that infringes its U.S. design patent covering an ornamental design for a slide-style sandal.
- Technical Context: The lawsuit concerns the ornamental design of consumer footwear, a market where distinctive and recognizable aesthetics can be a significant commercial driver.
- Key Procedural History: The complaint is structured as a "Schedule A" action against a large group of unidentified defendants, a procedural approach often used to combat widespread online sale of allegedly infringing or counterfeit goods by sellers who operate under multiple aliases to conceal their identities.
Case Timeline
| Date | Event |
|---|---|
| 2018-09-12 | U.S. Patent No. D866,941 Priority Date |
| 2019-11-19 | U.S. Patent No. D866,941 Issued |
| 2024-09-13 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. D866,941, “Footwear Upper and Midsole,” issued November 19, 2019.
U.S. Patent No. D866,941 - "Footwear Upper and Midsole"
The Invention Explained
- Problem Addressed: The complaint suggests that in the competitive footwear market, there is a need for "innovative" and "distinctive patented designs" that are recognizable to consumers and associated with a source of quality (Compl. ¶¶6-7).
- The Patented Solution: The patent protects the specific ornamental appearance of a footwear upper and midsole, not its functional or structural aspects (’941 Patent, Claim). As illustrated in the patent’s figures, the design consists of a thick, platform-like midsole combined with an upper composed of several parallel, puffy, rounded bands that extend across the top of the foot (’941 Patent, Figs. 1, 6). The patent explicitly disclaims certain features shown in broken lines, such as a heel strap and the bottom tread of the sole, meaning these elements are not part of the protected design (’941 Patent, Description).
- Technical Importance: The complaint alleges that such designs have become "enormously popular and even iconic" and are 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" (’941 Patent, Claim).
- The scope of this claim is defined by the visual features depicted in solid lines in the patent’s seven figures. Key ornamental elements include:
- The proportional relationship and appearance of a thick, textured midsole.
- The configuration of the upper, which features a series of parallel, rounded, and cushioned-appearing bands.
- The overall visual impression created by the combination of these features from multiple perspectives.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are footwear products referred to as the "Infringing Product" (Compl. ¶3). These products are offered for sale and sold through numerous e-commerce stores operating under various "Seller Aliases" on marketplace platforms such as Amazon, eBay, AliExpress, and Temu (Compl. ¶11).
Functionality and Market Context
- The complaint alleges the accused products are sold by a network of interconnected operators, believed to be based in China or other foreign jurisdictions, who use tactics to conceal their identities and appear to be authorized retailers (Compl. ¶¶9, 14, 17). These sellers allegedly use similar marketing strategies, website templates, and payment methods, suggesting a common source for the accused products (Compl. ¶17). A table in the complaint presents multiple views of the patented design, including perspective, side, and top-down views, to illustrate the claimed ornamental features that are allegedly infringed (Compl. p. 4).
IV. Analysis of Infringement Allegations
Design patent infringement is determined by the "ordinary observer" test, which assesses whether an ordinary observer would find the patented design and the accused design substantially the same. The complaint alleges that the accused "Infringing Products" are the "same unauthorized and unlicensed product" that embodies and infringes the patented design (Compl. ¶3).
’941 Patent Infringement Allegations
| Claim Element (Visual Feature from '941 Patent) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for a footwear upper and midsole as shown and described. | Defendants are accused of making, using, selling, or importing footwear that "infringe[s] directly and/or indirectly the ornamental design claimed in the UGG Design." | ¶24 | ’941 Patent, Figs. 1-7 |
| The visual appearance of a thick, platform-style midsole. | The complaint's allegation of infringement of the overall design necessarily includes the visual appearance of the midsole as depicted in the patent's figures. The complaint provides visual representations of the patented design to demonstrate the claimed features (Compl. p. 4). | ¶24; p. 4 | ’941 Patent, Figs. 1, 2, 3 |
| The visual appearance of an upper comprising multiple parallel, rounded, puffy bands. | The complaint's allegation of infringement of the overall design necessarily includes the distinctive visual appearance of the upper as depicted in the patent's figures. The complaint visually represents these bands as a core part of the claimed design (Compl. p. 4). | ¶24; p. 4 | ’941 Patent, Figs. 1, 4, 6 |
Identified Points of Contention
- Scope Questions: A central issue in design patent cases is the scope of the claimed design. The patent explicitly disclaims the heel strap and bottom of the sole by showing them in broken lines (’941 Patent, Description). The infringement analysis must therefore focus only on the claimed elements (the upper and midsole) and disregard any similarities or differences in the disclaimed features.
- Technical Questions: The ultimate question for the court will be whether an "ordinary observer," familiar with prior art designs for sandals, would be deceived into believing the accused products are the same as the patented design. This analysis will depend on a visual comparison of the accused products (which are identified in the complaint's un-filed Exhibit 1) and the patent's drawings.
V. Key Claim Terms for Construction
In design patent litigation, claim construction does not involve interpreting words in the same way as in utility patent cases. Instead, the "claim" is understood to be the design itself, as depicted in the drawings.
- The Term: "ornamental design ... as shown and described"
- Context and Importance: This phrase defines the entire scope of the patent right. Its interpretation is not a matter of textual definition but of visually determining what specific features are protected by the patent drawings. Practitioners may focus on this "construction" to argue the scope of the design, particularly what is included (solid lines) versus what is disclaimed (broken lines).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim covers the design "as shown," suggesting that any footwear that produces the same overall visual impression on the ordinary observer infringes, even if there are minor differences. The focus is on the gestalt impression rather than a feature-by-feature comparison.
- Evidence for a Narrower Interpretation: The description explicitly states that "The broken lines...represent portions of the footwear that form no part of the claimed design" (’941 Patent, Description). This language limits the design's scope strictly to the features shown in solid lines—the specific configuration of the upper bands and midsole—and excludes other elements from consideration, potentially narrowing the scope of what constitutes an infringing product.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants infringe "directly and/or indirectly" (Compl. ¶24) and the prayer for relief seeks to enjoin "aiding, abetting, contributing to, or otherwise assisting anyone" in infringing (Compl. p. 10, ¶1(b)). However, the factual allegations focus on the Defendants' own actions of making, offering for sale, and selling the accused products, which constitutes direct infringement. The complaint does not plead specific facts to support a separate theory of indirect infringement, such as alleging Defendants knowingly induced their customers to infringe.
- Willful Infringement: The complaint alleges that Defendants' infringement was "knowing[] and willfully" (Compl. ¶¶20, 21). This allegation is supported by claims that Defendants are part of a network of infringers who use sophisticated tactics to evade detection and enforcement, such as operating under multiple aliases and using offshore accounts, suggesting an awareness of wrongdoing (Compl. ¶¶12, 17-19).
VII. Analyst’s Conclusion: Key Questions for the Case
- Infringement under the "Ordinary Observer" Test: The central issue will be one of visual comparison: are the accused products sold by the Defendants so similar in their overall ornamental appearance to the design claimed in the '941 Patent that they would deceive an ordinary observer into purchasing one believing it to be the other? The outcome will depend heavily on the specific appearance of the accused products.
- Scope of the Patented Design: A key legal question will concern the proper scope of the design claim. The analysis will require careful delineation between the protected elements shown in solid lines (the puffy-banded upper and thick midsole) and the disclaimed subject matter shown in broken lines (the heel strap and sole bottom), which must be ignored when comparing the designs.
- Procedural Efficacy and Enforcement: Given that the case is brought against a "Schedule A" list of unidentified foreign entities, a critical challenge will be procedural. The case's practical success may turn on the Plaintiff's ability to effectively identify the operators, establish jurisdiction, and enforce any potential injunction or monetary judgment against defendants alleged to be operating a diffuse and intentionally obscured e-commerce network.