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(s) Unknown)
  • Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
• Case Identification: 1:25-cv-00183, N.D. Ill., 01/08/2025
• Venue Allegations: Venue is alleged based on Defendants targeting business activities and sales to consumers in Illinois through interactive e-commerce stores.
• Core Dispute: Plaintiff alleges that numerous unidentified e-commerce operators are selling footwear that infringes its patented ornamental design for a footwear upper.
• Technical Context: The dispute concerns the ornamental design of consumer footwear, a market where distinctive visual appearance and brand identity are significant commercial drivers.
• Key Procedural History: The complaint is structured as an action against a large, unidentified group of online sellers, a common strategy in anti-counterfeiting litigation. It alleges Defendants use tactics such as multiple aliases and offshore accounts to evade enforcement, suggesting that identifying defendants and securing monetary relief may be a central procedural challenge.

Case Timeline

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

• Patent Identification: U.S. Design Patent No. D927,161, “Footwear Upper,” issued August 10, 2021.

The Patented Design Explained

• Problem Addressed: The patent does not describe a technical problem but rather provides a new, original, and ornamental design for a footwear upper, which is a protectable form of intellectual property (D927161 Patent, Claim).
• The Patented Solution: The patent protects the specific visual appearance of an ankle-height footwear upper. The design's key ornamental features include its overall shape, a distinct collar piece, a vertical seam on the side panels, and a pull tab at the rear ('161 Patent, FIG. 1-6). The broken lines in the patent figures, such as those depicting the sole of the footwear, indicate that those elements are not part of the claimed design and serve only to show the environment in which the design is used ('161 Patent, col. 1:66-68).
• Technical Importance: In the footwear industry, unique ornamental designs serve to create a distinct commercial impression and product identity, differentiating a product from its competitors in the marketplace (Compl. ¶6-7).

Key Claims at a Glance

• The patent asserts a single claim: “The ornamental design for a footwear upper, as shown and described.”
• The essential visual elements of this design claim are depicted in solid lines in the patent's figures and include:
  • The overall profile and proportions of an ankle-height boot upper.
  • A defined upper collar portion that wraps around the ankle opening.
  • A side profile featuring a vertical seam element.
  • A rear profile featuring a vertical pull tab.
• The complaint asserts this single design claim (Compl. Count I).

III. The Accused Instrumentality

Product Identification

• Product Identification: The accused instrumentalities are footwear products sold by Defendants, referred to as the "Infringing Product" (Compl. ¶3).

Functionality and Market Context

• Functionality and Market Context: The complaint alleges that Defendants operate numerous e-commerce stores on platforms like Amazon, eBay, AliExpress, and others to sell footwear that embodies the patented design (Compl. ¶11). These stores are allegedly designed to appear as authorized retailers to consumers in the United States, including Illinois (Compl. ¶13-14). The complaint includes a table showing figures from the patent, which it terms the "UGG Design," and alleges that the accused products infringe this design (Compl. p. 4). A representative image of the accused infringing footwear is presented as Exhibit 1 in the complaint (Compl. ¶3).

IV. Analysis of Infringement Allegations

The standard for design patent infringement is whether an "ordinary observer," giving such attention as a purchaser usually gives, would be deceived into purchasing the accused product, believing it to be the patented design. The complaint alleges that the accused products are substantially the same as the patented design.

D927,161 Infringement Allegations

Identified Points of Contention

• Scope Questions: A central question will be how the "ordinary observer" perceives the overall design. The analysis will focus on whether the claimed ornamental features (solid lines) are appropriated in the accused products, and whether any differences are significant enough to avoid a finding of substantial similarity. The effect of the unclaimed sole (broken lines) on the overall appearance may be a point of debate.
• Technical Questions: The primary question is factual: when the accused products are compared side-by-side with the ’161 Patent's drawings, are the designs substantially the same? The complaint asserts this is the case, but it will depend on the evidence presented for each of the numerous accused products. The complaint's visual evidence shows the patented design itself rather than a side-by-side comparison (Compl. p. 4).

V. Key Claim Terms for Construction

In design patent cases, claim construction is typically focused on describing the claimed design in words to assist the fact-finder, rather than construing specific text-based terms. The primary issue is the overall scope of the visual impression created by the design.

• The Term: The scope of the "ornamental design for a footwear upper" as a whole.
• Context and Importance: The scope of the design patent is defined by what is shown in solid lines in the drawings. The court’s interpretation of the design's overall visual impression, including which features are most prominent, will be critical. Practitioners may focus on this issue because the ultimate infringement question hinges on comparing this scope to the appearance of the accused products.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue that the claim covers any footwear upper with the same overall visual impression and combination of key features (ankle height, collar, side seam, pull tab), even if minor details differ. The title, "Footwear Upper," suggests the design applies to the upper portion of the footwear generally ('161 Patent, Title).
  • Evidence for a Narrower Interpretation: A party could argue that the claim is limited to the precise proportions, curvatures, and placement of features as depicted in the patent's figures ('161 Patent, FIG. 1-7). The patent explicitly disclaims the sole and other elements shown in broken lines, which confines the protected design strictly to the upper ('161 Patent, col. 1:66-68).

VI. Other Allegations

• Indirect Infringement: The complaint alleges that Defendants "directly and/or indirectly" infringe the patent (Compl. ¶24). The prayer for relief seeks to enjoin Defendants from "aiding, abetting, contributing to, or otherwise assisting anyone" in infringing, suggesting a claim for indirect infringement (Compl. p. 10).
• Willful Infringement: The complaint alleges that the infringement was willful (Compl. ¶21). The basis for this allegation is the assertion that Defendants "knowingly and willfully" import, offer for sale, and sell the infringing products as part of a coordinated effort (Compl. ¶20).

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

1. A question of visual identity: Is the ornamental design of the accused footwear, as sold by the various Defendants, "substantially the same" as the design claimed in the ’161 Patent from the perspective of an ordinary observer? This core factual determination will be dispositive for infringement.
2. A question of enforcement: Given that the Defendants are alleged to be a diffuse and concealed network of foreign e-commerce operators, a central challenge for the court and the Plaintiff will be the practical ability to identify the responsible parties, obtain jurisdiction, and enforce any resulting injunction or monetary judgment.
3. A question of damages: Should infringement be found, a key issue will be determining the appropriate remedy, including whether Deckers is entitled to Defendants' total profits under 35 U.S.C. § 289, which is a remedy specific to design patent infringement and is requested in the complaint (Compl. p. 11).