DCT

1:25-cv-05211

Deckers Outdoor Corp v. Partnerships Unincorp Associations

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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, believed to be People's Republic of China or other foreign jurisdictions)
    • Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
  • Case Identification: 1:25-cv-05211, N.D. Ill., 05/12/2025
  • Venue Allegations: Venue is alleged on the basis that Defendants operate interactive e-commerce stores that directly target and make sales to consumers in the United States, including Illinois.
  • Core Dispute: Plaintiff alleges that numerous unidentified e-commerce operators are making, using, selling, and importing footwear that infringes a U.S. design patent covering an ornamental design for a footwear upper.
  • Technical Context: The dispute is in the consumer footwear industry, focused on protecting the unique ornamental appearance of premium, leisure-style footwear sold via online marketplaces.
  • Key Procedural History: The complaint alleges that Plaintiff's products embodying the patented design are marked in compliance with 35 U.S.C. § 287(a). It also asserts that the defendants are part of a larger, coordinated network of infringers who use tactics like false identities and offshore accounts to evade enforcement, referencing patterns observed in previous similar cases.

Case Timeline

Date Event
2019-11-08 U.S. Patent D927,161 Priority Date (Filing Date)
2021-08-10 U.S. Patent D927,161 Issued
2025-05-12 Complaint Filed

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: As a design patent, the patent does not articulate a technical problem. Instead, it seeks to protect a unique aesthetic and ornamental appearance for an article of manufacture, distinguishing it from other products in the market (’161 Patent, Claim).
  • The Patented Solution: The patent protects the specific visual characteristics of a footwear upper. The design, illustrated in the patent’s figures, consists of a low-cut bootie with a distinct collar, a vertical seam on the rear of the heel counter that incorporates a pull-tab, and specific seam lines and proportions (’161 Patent, FIG. 1-6). The design's scope is explicitly limited to the upper, as the sole and other elements are rendered in broken lines and disclaimed from the protected design (’161 Patent, Description).
  • Technical Importance: The design provides a distinct visual identity for footwear in a competitive consumer market, which the complaint alleges has become recognizable to the public in connection with the UGG brand (Compl. ¶¶ 6-7).

Key Claims at a Glance

  • The complaint asserts the single claim of the ’161 Patent: "The ornamental design for a footwear upper, as shown and described."
  • The essential visual elements of this design claim, depicted in solid lines in the patent's figures, include:
    • The overall shape and proportions of a low-profile, ankle-height footwear upper.
    • A distinct, raised collar element encircling the foot opening.
    • A vertical seam running down the center of the heel, which terminates in an integrated fabric pull-tab.
    • The specific curvature of the seams that join the different parts of the upper.
  • The complaint reserves the right to assert infringement of the patent generally, which encompasses the single claim (Compl. ¶24).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are footwear products referred to as the "Infringing Product" (Compl. ¶3). These products are allegedly sold by the Defendants through numerous e-commerce stores operating under various aliases on platforms such as Amazon, eBay, AliExpress, Temu, and TikTok (Compl. ¶11).

Functionality and Market Context

  • The relevant feature of the accused products is their ornamental appearance, which Plaintiff alleges is the "same unauthorized and unlicensed product" that infringes the patented "UGG Design" (Compl. ¶3). The complaint alleges these products are sold through sophisticated-appearing online storefronts that are designed to appear as authorized retailers to unknowing consumers (Compl. ¶14). The complaint also portrays the Defendants as part of a network of infringers who use common tactics to conceal their identities and source products from a common origin (Compl. ¶¶17-18). The complaint includes a table showing multiple views of the patented design to illustrate its appearance. (Compl. p. 4).

IV. Analysis of Infringement Allegations

The complaint does not contain a detailed claim chart. Instead, it makes a narrative allegation that the Defendants’ products infringe the design patent. The core of the infringement theory is that the accused footwear is "substantially the same" in overall visual appearance as the design claimed in the ’161 patent, such that an ordinary observer would be deceived (Compl. ¶24). The complaint relies on a non-proffered "Exhibit 1" to show the specific appearance of the "Infringing Product" (Compl. ¶3).

  • Identified Points of Contention:
    • Scope Questions: The primary legal question in a design patent case is the application of the "ordinary observer" test. The dispute will center on whether an ordinary observer, taking into account the prior art, would find the overall visual impression of the accused footwear to be substantially the same as the claimed design in the ’161 Patent.
    • Technical Questions: A key factual question will be the degree of visual similarity between the accused products and the patent's drawings. The analysis will depend on comparing the specific claimed features—the shape, proportions, and seam arrangements shown in solid lines in the patent—with the actual products sold by Defendants. Any perceptible differences could form the basis of a non-infringement defense.

V. Key Claim Terms for Construction

In a design patent case, claim construction involves defining the scope of the claimed design as a whole, rather than construing individual text-based terms. The central issue is the overall visual impression created by the design.

  • The Term: "The ornamental design for a footwear upper, as shown and described"
  • Context and Importance: The scope of this "term" is the entire case. The court's interpretation of the design's overall appearance and which features are ornamental versus functional will determine the outcome of the infringement analysis. Practitioners may focus on the distinction between the claimed elements (solid lines) and unclaimed elements (broken lines), as this is a primary factor in defining the design's scope.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent claims the design for a "footwear upper" generally, not a specific shoe model, which may support an argument that the design covers a range of footwear that embodies the core aesthetic features shown (’161 Patent, Title, Claim).
    • Evidence for a Narrower Interpretation: The patent's description explicitly states, "The broken lines in FIGS. 1-7 represent portions of the footwear that form no part of the claimed design" (’161 Patent, Description). This language strictly limits the protected design to the visual features depicted in solid lines, excluding the sole entirely. An argument for a narrower scope would emphasize that the precise proportions and arrangement of these solid-line features define the bounds of the claim.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Defendants "directly and/or indirectly" infringe the ’161 Patent (Compl. ¶24). The prayer for relief seeks to enjoin "aiding, abetting, contributing to, or otherwise assisting anyone" in infringing the patent (Prayer for Relief, ¶1(b)).
  • Willful Infringement: The complaint alleges that Defendants’ infringement was and is willful (Compl. ¶21). This allegation is based on assertions that Defendants operate as a coordinated network, knowingly engage in infringing activity, use tactics to conceal their identities and evade enforcement, and participate in online forums discussing such tactics (Compl. ¶¶ 18, 20).

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

  1. A core issue will be one of visual identity: Applying the ordinary observer test, is the overall ornamental appearance of the accused products sold by the Defendants substantially the same as the specific design for a "footwear upper" claimed in the ’161 Patent, or are there sufficient visual differences to avoid infringement?
  2. A key procedural and evidentiary question will be one of attribution: Given that the Defendants are alleged to be a network of anonymous online sellers, can the Plaintiff produce sufficient evidence to link the specific infringing products to the e-commerce storefronts and, ultimately, to the entities identified on Schedule A?