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, alleged to be primarily foreign)
  • Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
• Case Identification: 1:25-cv-04967, N.D. Ill., 05/06/2025
• Venue Allegations: Venue is alleged to be proper based on Defendants’ operation of interactive e-commerce stores that directly target and make sales to consumers in Illinois.
• Core Dispute: Plaintiff alleges that footwear sold by numerous unidentified e-commerce operators infringes a U.S. design patent covering an ornamental design for a footwear upper.
• Technical Context: The dispute concerns the ornamental appearance of footwear in the premium comfort-leisure market, where distinctive design can be a significant driver of brand identity and value.
• Key Procedural History: The complaint alleges that the products embodying the patented design are marked in compliance with 35 U.S.C. § 287(a), which may serve as constructive notice to potential infringers. The action is brought against a group of unidentified defendants, a common procedural posture in cases targeting online counterfeit sellers.

Case Timeline

Date	Event
2019-11-08	U.S. Patent No. D927,161 Priority Date (Filing Date)
2021-08-10	U.S. Patent No. D927,161 Issued
2025-05-06	Complaint Filed

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

U.S. Design Patent No. D927,161 - “Footwear Upper”

The patent-in-suit is U.S. Design Patent No. D927,161, issued August 10, 2021 (the “D927,161 Patent”).

The Invention Explained

• Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture rather than a functional utility. The patent addresses the creation of a new, original, and ornamental design for a footwear upper, in a market where Plaintiff alleges its designs have become "iconic" and "instantly recognizable" (Compl. ¶6).
• The Patented Solution: The patent claims the specific visual appearance of a footwear upper, as depicted in the patent’s figures (D927,161 Patent, Figs. 1-7). A critical feature of the patent is the use of broken lines to disclaim subject matter, stating that these lines "represent portions of the footwear that form no part of the claimed design" (D927,161 Patent, Description). The claimed design therefore consists only of the elements shown in solid lines, which include the overall shape and proportions of the ankle-height upper, the shape of the collar opening, a vertical seam on the front, a horizontal seam above the vamp, and a pull-tab at the rear. The sole of the shoe is explicitly disclaimed.
• Technical Importance: In the footwear industry, a distinctive ornamental design can serve as a key source-identifier and a driver of commercial success, which the complaint asserts is the case for its UGG brand products (Compl. ¶¶ 5-6).

Key Claims at a Glance

• The complaint asserts the single claim of the D927,161 Patent (Compl. ¶24).
• The claim is for: "The ornamental design for a footwear upper, as shown and described" (D927,161 Patent, Claim).
• The essential elements of the claim are the visual characteristics of the design as depicted in solid lines in the patent's figures.

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are footwear products referred to as the "Infringing Product" (Compl. ¶3). The complaint alleges these are sold by Defendants through numerous e-commerce stores operating under various "Seller Aliases" on platforms including Amazon, eBay, AliExpress, Walmart, and Temu (Compl. ¶11).

Functionality and Market Context

The complaint alleges that the accused products are unauthorized footwear featuring the patented design (Compl. ¶3). These products are allegedly sold through online storefronts designed to appear as authorized retailers to "unknowing consumers" (Compl. ¶14). The complaint also alleges that irregularities in the products suggest they are manufactured by a common unauthorized source and that the defendant sellers coordinate to evade enforcement (Compl. ¶¶ 17-18).

IV. Analysis of Infringement Allegations

The complaint does not contain a detailed claim chart. Instead, it makes a general allegation that the Defendants’ products infringe the D927,161 Patent (Compl. ¶24). The infringement test for a design patent 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 complaint includes a table with several views of the patented design, which visually establishes the asserted intellectual property. This visual, taken from the patent's figures, shows the front perspective, side, front, rear, top, and bottom views of the footwear design (Compl. p. 4). A direct comparison between this patented design and the accused products will form the basis of the infringement analysis. However, the complaint references the accused product only via an unattached "Exhibit 1," precluding a direct visual comparison based on the provided documents (Compl. ¶3).

• Identified Points of Contention:
  • Factual Question: The central issue will be a visual comparison. Do the accused products, when viewed by an ordinary observer, have an overall appearance that is substantially the same as the claimed design in the D927,161 Patent? The outcome will depend on evidence, such as the actual products or photographs thereof, which is not fully contained within the complaint.
  • Scope Questions: The analysis must focus only on the elements of the footwear upper shown in solid lines in the patent drawings. The court will need to filter out any visual similarities or differences in the unclaimed sole, which is shown in broken lines (D927,161 Patent, Description). The question will be whether the accused products copy the specific combination of claimed ornamental features.

V. Key Claim Terms for Construction

Formal claim construction of specific terms is rare in design patent litigation, as the claim is understood to be defined by the drawings. The primary interpretive task for the court is not to define a word but to determine the overall visual scope of the design.

• The Term: The scope of "the ornamental design... as shown and described."
• Context and Importance: The entire infringement analysis hinges on the scope of the claimed design. Practitioners will focus on which specific visual elements are protected by the patent and which are not. The distinction between the solid-line claimed features and the broken-line unclaimed environment is the most critical aspect of interpreting the claim's scope.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party might argue that the claim covers any footwear upper with a similar overall visual impression, focusing on the general silhouette and arrangement of elements rather than minor details.
  • Evidence for a Narrower Interpretation: A party would point to the explicit disclaimer that "broken lines... form no part of the claimed design" to argue the patent only protects the precise visual features shown in solid lines (D927,161 Patent, Description). Any deviation in the shape, proportion, or placement of these specific features in an accused product could support a non-infringement argument.

VI. Other Allegations

• Indirect Infringement: The complaint includes a boilerplate allegation of direct and/or indirect infringement (Compl. ¶24) and seeks to enjoin "aiding, abetting, contributing to, or otherwise assisting" infringement (Prayer for Relief, ¶1(b)). The factual basis appears to rest on the allegation that the various defendant storefronts are interrelated and part of a common scheme (Compl. ¶¶ 17-18).
• Willful Infringement: The complaint alleges that Defendants' infringement was willful (Compl. ¶21). This allegation is supported by claims that Defendants act "knowingly and willfully" (Compl. ¶20) and actively participate in online communities to learn tactics for evading detection and litigation (Compl. ¶18). Furthermore, the plaintiff's allegation of marking its own products provides a basis for constructive knowledge of the patent (Compl. ¶7).

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

1. A central question will be one of visual identity: When the accused products are compared to the D927,161 Patent's drawings, will an ordinary observer find their overall ornamental designs to be substantially the same? This is a purely factual question that will require visual evidence not yet on the record.

2. A significant procedural hurdle will be one of jurisdiction and enforcement: Can the plaintiff successfully identify the anonymous foreign defendants, establish personal jurisdiction over them in an Illinois court, and enforce a potential judgment against entities that allegedly use tactics to conceal assets and identities? The complaint itself highlights these practical challenges (Compl. ¶¶ 10, 19).

3. A key evidentiary question for willfulness and damages will be one of knowledge and intent: Can the plaintiff produce evidence to substantiate its allegations that the defendants had knowledge of the patent (either actual or constructive via marking) and engaged in a coordinated effort to infringe while evading legal consequences?