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; alleged to be in the People's Republic of China or other foreign jurisdictions)
  • Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
• Case Identification: 1:24-cv-11713, N.D. Ill., 11/14/2024
• 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 store operators are selling footwear that infringes a Deckers design patent for a sandal.
• Technical Context: The dispute is in the consumer footwear market and concerns the ornamental design, or visual appearance, of a product rather than its utilitarian function.
• Key Procedural History: The complaint targets a group of unidentified defendants, a common strategy in anti-counterfeiting litigation against online sellers who allegedly use multiple aliases and offshore accounts to evade intellectual property enforcement.

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: Design patents protect the novel ornamental appearance of an article of manufacture. The patent does not articulate a functional problem but instead presents a new, original, and ornamental design for footwear.
• The Patented Solution: The patent claims the specific ornamental design for a “footwear upper and midsole” (’870 Patent, Claim). The claimed design, depicted in solid lines in the patent’s figures, consists of an open-toed sandal with a thick, rounded-edge sole and two wide upper straps across the instep (’870 Patent, Figs. 1-6). The figures also depict a stippled texture on the surfaces of the straps and the visible sides of the midsole, contributing to the overall visual impression (’870 Patent, Fig. 1). The patent’s description notes that elements shown in broken lines, such as the bottom of the sole and portions of a heel strap, do not form part of the claimed design (’870 Patent, Description).
• Technical Importance: The complaint asserts that Deckers’ footwear designs, including the patented “UGG Design,” have become iconic and are broadly recognized by consumers as a symbol of quality and innovation in premium comfort-leisure footwear (Compl. ¶5-7).

Key Claims at a Glance

• The complaint asserts the single claim of the ’870 Patent (Compl. ¶24).
• The claim protects "The ornamental design for a footwear upper and midsole, as shown and described" (’870 Patent, Claim). Its scope is defined by the visual appearance of the article in the patent’s drawings. The key visual elements shown in solid lines include:
  • The overall configuration of an open-toed slide sandal.
  • A thick midsole with a continuous, uniform thickness and rounded edges.
  • Two wide, parallel straps covering the instep.
  • A visible surface texture, depicted as stippling, on the straps and midsole.
  • The configuration of a heel strap attachment point.

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are footwear products, referred to as the “Infringing Products,” that are allegedly unauthorized and unlicensed versions of footwear embodying the patented design (Compl. ¶3).

Functionality and Market Context

The complaint alleges that Defendants operate numerous e-commerce stores under various "Seller Aliases" on platforms such as Amazon, eBay, TikTok, and Temu to market and sell the Infringing Products to consumers in the United States, including Illinois (Compl. ¶11, 13). The complaint further alleges that these e-commerce stores are designed to appear as authorized retailers and use images and content that make it difficult for consumers to distinguish them from legitimate sellers (Compl. ¶14). The complaint provides a table with several views of the patented design to illustrate the claimed ornamental features (Compl. p. 4).

IV. Analysis of Infringement Allegations

D901,870 Infringement Allegations

Identified Points of Contention

• Visual Similarity: The central issue for design patent infringement is 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 outcome will depend on a visual comparison of the accused products with the drawings in the ’870 Patent.
• Scope of "As Shown": The parties may dispute the scope of the claimed design. A question may arise as to whether the stippling shown in the drawings is a required ornamental feature or merely illustrative of a general surface type (e.g., plush or fleece). The degree to which an accused product's texture must match the patent's stippling to infringe could become a point of contention.
• Impact of Unclaimed Elements: The court may need to consider the visual effect of the unclaimed elements (shown in broken lines), such as the heel strap. While not part of the protected design, their presence or absence in an accused product could influence the overall visual impression for an ordinary observer.

V. Key Claim Terms for Construction

In design patent cases, formal claim construction is less common than in utility patent cases, as the claim’s scope is defined by the drawings. However, disputes can arise over the interpretation of those drawings.

• The Term: "ornamental design for a footwear upper and midsole, as shown and described"
• Context and Importance: The entire infringement analysis rests on the scope of the visual design protected by this claim. Practitioners may focus on the interpretation of the drawings, specifically what features are limiting. The interpretation of the stippled texture shown in the figures will be critical to determining the breadth of the patent’s protection.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue that the claim protects the overall shape, proportions, and arrangement of the sandal's components (sole and two straps), and that the stippling is merely one way of showing a non-smooth, fleecy, or plush texture that is characteristic of the UGG brand.
  • Evidence for a Narrower Interpretation: A party could argue that the specific stippled pattern is an integral part of the claimed "ornamental design" and that a product with a visibly different texture (e.g., smooth leather, a different fabric pattern) would create a different overall visual impression and therefore not infringe. The consistent depiction of this texture across all relevant surfaces in the figures may support this view.

VI. Other Allegations

Indirect Infringement

The complaint makes a passing allegation of indirect infringement (Compl. ¶24) and seeks to enjoin "aiding, abetting, [or] contributing to" infringement (Prayer ¶1(b)). However, the core factual allegations describe direct infringement by the Defendants who are making, offering for sale, and selling the accused products.

Willful Infringement

The complaint alleges that Defendants' infringement was willful (Compl. ¶21). This allegation is based on the assertion that Defendants are "working to knowingly and willfully" sell the Infringing Products without authorization and are part of a network of infringers who communicate about tactics for evading enforcement (Compl. ¶18, 20).

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

1. The Infringement Test: A dispositive issue will be the application of the "ordinary observer" test. The case will turn on whether the accused products are "substantially the same" as the visual design depicted in the '870 Patent, a determination that will require a direct visual comparison considering the claimed features and the prior art.
2. Scope of the Design: A central legal question may be the scope of the claimed ornamental design. Specifically, is the stippled texture shown in the patent drawings a limiting feature of the design, or does the claim cover a broader concept of a two-strap sandal with a generally plush or fleecy texture?
3. Enforcement and Jurisdiction: A key practical challenge will be the identification of the defendants and the enforcement of any resulting orders. The case's progression will depend on Plaintiff's ability to effectively serve the anonymous online sellers and the court's willingness to grant relief that can be enforced against e-commerce platforms and financial intermediaries.