DCT
1:25-cv-04816
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 or other foreign jurisdictions)
- Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
- Case Identification: 1:25-cv-04816, N.D. Ill., 05/01/2025
- Venue Allegations: Venue is based on allegations that Defendants operate interactive e-commerce stores that directly target and make sales to consumers in the United States, including residents of Illinois.
- Core Dispute: Plaintiff alleges that numerous e-commerce operators sell footwear that infringes its U.S. design patent for a footwear upper.
- Technical Context: The dispute is in the field of ornamental footwear design, concerning the distinctive appearance of premium comfort-leisure footwear marketed under the UGG brand.
- Key Procedural History: The complaint is a "Schedule A" action targeting a large number of unidentified online merchants, a common strategy against alleged counterfeiters. The complaint notes that products embodying the asserted design are marked in compliance with patent notice statutes and references prior, similar cases to allege a pattern of defendants moving funds to off-shore accounts to evade judgments.
Case Timeline
| Date | Event |
|---|---|
| 2019-11-08 | D927,161 Patent Priority Date (Filing Date) |
| 2021-08-10 | D927,161 Patent Issue Date |
| 2025-05-01 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D927,161 - "FOOTWEAR UPPER" (Issued August 10, 2021)
The Invention Explained
- Problem Addressed: Design patents protect ornamentation rather than function. The complaint frames the commercial context as a market where Deckers' UGG brand has become "enormously popular and even iconic" due to "innovative design" (Compl. ¶6). The implicit problem addressed by the design is creating a novel, non-obvious ornamental appearance to distinguish the product in a competitive marketplace and associate it with the UGG brand's goodwill (Compl. ¶¶ 5-7).
- The Patented Solution: The patent claims the specific ornamental design for a footwear upper, which is defined by the visuals in its figures (’161 Patent, Claim 1; Description). Key features shown in solid lines, and thus part of the protected design, include the overall shape of a low-cut ankle boot, a distinct raised collar encircling the opening, a vertical seam running down the back of the heel, and a pull tab integrated with the rear seam (’161 Patent, Figs. 1-6). The broken lines, such as those depicting the sole, represent unclaimed subject matter (’161 Patent, Description).
- Technical Importance: The complaint alleges that the patented designs are "broadly recognized by consumers" and associated with the quality and innovation of UGG Products (Compl. ¶7).
Key Claims at a Glance
- The patent asserts a single claim for "The ornamental design for a footwear upper, as shown and described" (’161 Patent, Claim 1).
- The scope of this claim is defined by the visual features depicted in the patent’s drawings, the key elements of which include:
- The overall ornamental appearance and profile of a low-cut ankle boot upper.
- A raised collar feature around the ankle opening.
- A central vertical seam on the rear of the upper.
- A pull tab extending from the top of the rear seam.
- The specific proportions and interrelation of these visual elements.
III. The Accused Instrumentality
Product Identification
The accused products are footwear, referred to as the "Infringing Product," which the complaint alleges are unauthorized and unlicensed products that embody the patented design (Compl. ¶3).
Functionality and Market Context
The accused products are offered for sale and sold by the defendant entities through "fully interactive, e-commerce stores" operating on platforms such as Amazon, eBay, AliExpress, Temu, and TikTok (Compl. ¶¶2, 11). The complaint alleges these storefronts are designed to mimic authorized retailers to deceive consumers and that the defendants operate under multiple aliases to conceal their identities and evade enforcement (Compl. ¶¶14, 16). The Infringing Products are alleged to "bear similar irregularities and indicia of being unauthorized," suggesting they originate from a common source (Compl. ¶17).
IV. Analysis of Infringement Allegations
The complaint does not contain a detailed claim chart. Instead, it makes a general allegation that the "Infringing Products" infringe the design patent (Compl. ¶24). The infringement theory rests on the assertion that the ornamental design of the accused products is substantially the same as the patented design in the eyes of an ordinary observer. The complaint includes a table showing figures from the patent to illustrate the design at issue. The complaint's table displays perspective, side, front, rear, and top-down views of the patented footwear upper design (Compl. p. 4).
D927,161 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a footwear upper, as shown and described. | The complaint alleges that Defendants are "making, using, offering for sale, selling, and/or importing" footwear products that directly or indirectly infringe the ornamental design claimed in the D'161 patent. | ¶24 | Claim 1; Figs. 1-7 |
| The specific visual appearance defined by the solid-line drawings in the patent. | The complaint alleges that the "Infringing Product" is the "same unauthorized and unlicensed product" that infringes the patented design, which is depicted in the complaint itself for reference. | ¶3, p. 4 | Figs. 1-6 |
Identified Points of Contention
- Scope Questions: The patent disclaims the sole of the shoe via broken lines (’161 Patent, Fig. 1; Description). The infringement analysis will therefore focus exclusively on the visual appearance of the accused products' uppers. A point of contention could be whether the overall visual impression of an accused upper is "substantially the same" as the claimed design, or if differences in proportion, curvature, or seam details are sufficient to place it outside the patent's scope.
- Evidentiary Questions: The complaint does not include a side-by-side comparison showing an accused product next to the patented design. A central evidentiary question will be whether the plaintiff can produce evidence demonstrating that the products actually sold by the anonymous defendants are, in fact, visually indistinct from the D'161 patent's design from the perspective of an ordinary observer.
V. Key Claim Terms for Construction
In design patent litigation, the claim is typically not construed through detailed verbal descriptions; rather, the scope is determined by the patent’s drawings.
- The Term: "The ornamental design for a footwear upper, as shown and described."
- Context and Importance: This phrase constitutes the entire claim, meaning its scope is defined by the visual content of Figures 1-7. The outcome of the infringement analysis depends entirely on the comparison between the accused products and these drawings. Practitioners may focus on the scope of protection afforded by the drawings as a whole.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party seeking a broader scope might argue that the claim covers the overall visual impression created by the design, protecting against products that evoke the same general aesthetic even with minor differences. The claim is for the design "as shown," which could be interpreted as covering the overall gestalt rather than a checklist of discrete features.
- Evidence for a Narrower Interpretation: A party seeking a narrower scope would emphasize that protection is limited to the specific design "as shown." They would point to the explicit disclaimer of the sole and other elements via broken lines as evidence that the claim is precisely limited to the exact shapes and proportions of the upper shown in the solid-line drawings (’161 Patent, Description).
VI. Other Allegations
- Indirect Infringement: The complaint makes a passing allegation of indirect infringement and seeks to enjoin "aiding, abetting, [or] contributing to" infringement (Compl. ¶24; p. 10, ¶1(b)). However, the factual allegations primarily describe the defendants' own direct infringement by making, offering to sell, and selling the accused products. The complaint does not plead specific facts to support a standalone claim for induced or contributory infringement.
- Willful Infringement: Willfulness is explicitly alleged (Compl. ¶21). The complaint bases this on allegations that Defendants "knowingly and willfully" sell infringing products and are part of a network that uses "tactics for operating multiple accounts, evading detection, pending litigation, and potential new lawsuits," which suggests knowledge of infringement and an intent to continue despite it (Compl. ¶¶18, 20).
VII. Analyst’s Conclusion: Key Questions for the Case
As a "Schedule A" case against numerous, likely foreign-based online sellers, the central issues are as much procedural and evidentiary as they are substantive patent law questions. The case will likely turn on the following:
- A core issue will be one of evidence and attribution: Can the plaintiff successfully identify the anonymous operators, link them to specific e-commerce storefronts, and prove that the products they sold are, in fact, the "Infringing Products" that embody the patented design?
- A key substantive question will be one of visual similarity: Assuming the accused products are put into evidence, does their ornamental design create an overall visual impression that is "substantially the same" as the D'161 patent's design in the view of an ordinary purchaser, or are there sufficient visual differences to avoid infringement?
- A critical practical question will be one of enforcement: Given the allegations that Defendants operate from foreign jurisdictions and utilize tactics to hide assets (Compl. ¶¶9, 19), can the plaintiff obtain and, more importantly, enforce an injunction and collect a monetary judgment against these transient online entities?