DCT
1:25-cv-05052
Deckers Outdoor Corp v. Partnerships Unincorp Associations
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Deckers Outdoor Corporation (Delaware/California)
- Defendant: Jinjiang Qili Shoes Material Co., Ltd. and various unnamed individuals and entities (allegedly People's Republic of China or other foreign jurisdictions)
- Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
- Case Identification: 1:25-cv-05052, N.D. Ill., 05/09/2025
- Venue Allegations: Venue is based on allegations that Defendants operate interactive e-commerce stores that target business activities and sales toward consumers in the United States, including Illinois.
- Core Dispute: Plaintiff alleges that Defendants’ footwear products, sold through various online storefronts, infringe a design patent for an ornamental footwear upper design.
- Technical Context: The dispute concerns the ornamental design of casual footwear, a market segment where brand identity and distinctive appearance are significant commercial drivers.
- Key Procedural History: The complaint does not reference prior litigation involving this patent. The action is framed as an enforcement effort against a network of e-commerce operators who allegedly use aliases and other tactics to conceal their identities, a common fact pattern in anti-counterfeiting litigation involving online marketplaces.
Case Timeline
| Date | Event |
|---|---|
| 2019-11-08 | U.S. Patent No. D927,161 Priority Date (Application Filing) |
| 2021-08-10 | U.S. Patent No. D927,161 Issues |
| 2025-05-09 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D927,161 - “Footwear Upper”
The Invention Explained
- Problem Addressed: Design patents protect ornamental appearance rather than functional solutions. The '161 Patent does not articulate a technical problem but instead presents a new, original, and ornamental design for a footwear upper. (D’927,161 Patent, Claim).
- The Patented Solution: The patent claims the specific visual appearance of an ankle-height footwear upper. The protected design, shown in solid lines in the patent's figures, consists of the overall shape and proportions of the upper, a distinct raised collar element encircling the opening, a vertical seam on the side profile, and a looped pull-tab at the rear. (D’927,161 Patent, Figs. 1-7). The sole of the footwear is depicted in broken lines, indicating it is not part of the claimed design. (D’927,161 Patent, DESCRIPTION).
- Technical Importance: The claimed design provides a distinct aesthetic for a casual boot, which serves as a key visual differentiator in the competitive consumer footwear market. (Compl. ¶¶6-7).
Key Claims at a Glance
- The complaint asserts the single claim of the ’161 Patent. (Compl. ¶¶23-26).
- Design patents contain a single claim, which is for the ornamental design as shown in the drawings. The essential visual elements of the claim include:
- The overall shape, contour, and proportions of an ankle-height footwear upper.
- A raised, distinct collar around the top opening.
- A vertical seam element on the side aspect.
- A fabric pull-tab loop affixed to the rear of the collar.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are footwear products referred to as the “Infringing Products.” (Compl. ¶3). The complaint states these products are depicted in an "Exhibit 1," which was not included in the filed document. (Compl. ¶3).
Functionality and Market Context
- The Accused Products are allegedly sold by Defendants through various interactive e-commerce stores operating under "Seller Aliases" on platforms such as Alibaba. (Compl. ¶11). The complaint alleges these stores are designed to appear as authorized retailers to U.S. consumers and that Defendants use tactics such as providing false registration information to conceal their identities and avoid enforcement. (Compl. ¶¶14-16). The complaint contains a table of figures from the ’161 Patent, which it labels with the patent number, claim, and issue date. (Compl. p. 4).
IV. Analysis of Infringement Allegations
The legal standard for design patent infringement is whether an “ordinary observer,” familiar with the prior art, would be deceived into believing the accused design is the same as the patented design. The analysis must be based on the design as a whole and not on a comparison of isolated features.
Claim Chart Summary
The complaint does not provide a feature-by-feature comparison but makes a general allegation of infringement. The following table maps the core visual features of the patented design to the complaint's general allegations.
| Patented Design Feature (from Figures) | 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, selling, or importing "Infringing Products" that "infringe directly and/or indirectly the ornamental design claimed in the UGG Design." | ¶24 | Figs. 1-7 |
| Overall shape, proportions, and visual impression of the footwear upper. | The complaint asserts the Accused Products are the "same unauthorized and unlicensed product... that infringes Deckers' patented design." | ¶3 | Figs. 1-3 |
| Specific visual elements including the raised collar, side seam, and rear pull-tab. | The complaint alleges infringement of the design as a whole, which necessarily includes these component features that create the overall visual impression. | ¶24 | Figs. 1, 2, 5 |
Identified Points of Contention
- Scope Questions: A central question will be the scope of the claimed design and its overall visual impression. The infringement analysis must properly exclude the unclaimed sole (shown in broken lines) and focus only on the claimed upper. The extent to which differences in the sole of an accused product could alter the overall appearance in the eye of an ordinary observer may become a point of dispute.
- Evidentiary Questions: The complaint's primary visual evidence is a reproduction of the patent's own figures. (Compl. p. 4). A key evidentiary question for the court will be the actual appearance of the "Infringing Products." The analysis will depend on comparing the specific products sold by Defendants to the design claimed in the ’161 Patent.
V. Key Claim Terms for Construction
In design patent cases, the "claim" is the design itself as depicted in the drawings, and traditional claim construction of textual terms is uncommon. The analysis focuses on the scope of the design as a whole. The most critical aspect for interpretation is the distinction between claimed and unclaimed subject matter.
- The "Term": The scope of the claimed "ornamental design for a footwear upper."
- Context and Importance: The infringement analysis will depend entirely on comparing the accused products to the visual design shown in solid lines in the patent figures. Practitioners may focus on the boundary between the claimed upper (solid lines) and the unclaimed environment of the sole (broken lines), as this distinction is foundational to the infringement test.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent claims the design for the "footwear upper" as a whole, suggesting that the overall visual effect created by the combination of the shape, collar, seam, and pull-tab is the focus. A party could argue that minor variations in individual elements do not change the overall appearance, which is substantially the same as the claimed design. (D’927,161 Patent, Figs. 1-7).
- Evidence for a Narrower Interpretation: The patent’s description explicitly states that "The broken lines in FIGS. 1-7 represent portions of the footwear that form no part of the claimed design." (D’927,161 Patent, DESCRIPTION). This language definitively limits the scope of protection to the upper only and could be used to argue that the design is a precise combination of specific elements that must be closely replicated to infringe.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants' products "infringe directly and/or indirectly" the patented design. (Compl. ¶24). The prayer for relief also seeks to enjoin Defendants from "aiding, abetting, contributing to, or otherwise assisting anyone" in infringing acts. (Compl., Prayer for Relief ¶1(b)).
- Willful Infringement: The complaint alleges that Defendants' infringement was willful. (Compl. ¶21). The factual basis for this allegation includes claims that Defendants are "working to knowingly and willfully" sell infringing products and that they employ tactics like using multiple seller aliases and participating in online forums discussing evasion of intellectual property enforcement. (Compl. ¶¶18, 20).
VII. Analyst’s Conclusion: Key Questions for the Case
- 1. The Ordinary Observer Test: The central issue will be one of visual comparison: are the accused products sold by Defendants "substantially the same" as the design claimed in the ’161 Patent from the perspective of an ordinary shoe purchaser? The outcome will depend on the overall visual impression created by the accused products when compared to the patent's drawings, properly accounting for the distinction between the claimed upper and the unclaimed sole.
- 2. Evidentiary Link: A threshold challenge will be evidentiary: given the alleged use of aliases and concealment tactics by numerous unnamed entities, can the plaintiff effectively link the specific "Infringing Products" to each of the Defendants and establish the necessary predicate for liability and relief?
- 3. Jurisdiction and Enforcement: A key procedural question will be the court's ability to exercise personal jurisdiction over the foreign-based, anonymous e-commerce operators and the practical challenges of enforcing any resulting injunction or monetary judgment against them.