1:25-cv-05275
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 Unknown)
- Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
- Case Identification: 1:25-cv-05275, N.D. Ill., 05/13/2025
- Venue Allegations: Venue is based on allegations that the Defendants target and conduct business with consumers in Illinois through interactive e-commerce stores.
- Core Dispute: Plaintiff alleges that numerous unidentified e-commerce operators are selling footwear that infringes its U.S. design patent for a footwear upper.
- Technical Context: The lawsuit concerns the ornamental design of consumer footwear, a market where distinctive aesthetics can be a significant driver of brand recognition and value.
- Key Procedural History: The complaint is structured as an enforcement action against a group of anonymous online sellers, a common strategy in anti-counterfeiting litigation. The complaint notes that analysis from "previous similar cases" informs its allegations regarding defendants' operational tactics.
Case Timeline
| Date | Event |
|---|---|
| 2019-11-08 | '161 Patent Priority Date |
| 2021-08-10 | '161 Patent Issue Date |
| 2025-05-13 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D927,161 - “FOOTWEAR UPPER”
The Invention Explained
- Problem Addressed: In the fashion and footwear industries, creating a novel and non-obvious ornamental design provides a distinct visual appearance that can identify the source and attract consumers (Compl. ¶¶ 6-7). The patent seeks to protect a specific aesthetic for a footwear upper.
- The Patented Solution: The patent protects the specific visual and ornamental characteristics of a footwear upper, as depicted in its figures ('161 Patent, Figs. 1-7). The design features a low-cut ankle height, a distinct collar, vertical seaming, and a rear pull-tab ('161 Patent, Fig. 1-5). Crucially, the patent’s description states that the broken lines, which depict the sole of the shoe, "form no part of the claimed design," limiting the scope of protection to the upper portion only ('161 Patent, Description).
- Technical Importance: The complaint alleges that such distinctive, patented designs are broadly recognized by consumers and are associated with the quality and innovation of its UGG brand products (Compl. ¶7).
Key Claims at a Glance
- The patent contains a single claim for: "The ornamental design for a footwear upper, as shown and described." ('161 Patent, Claim).
- The scope of this claim is defined by the visual appearance of the elements depicted in solid lines in the patent's seven figures.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are footwear products ("Infringing Products") sold by Defendants on various online marketplaces (Compl. ¶3, ¶11).
Functionality and Market Context
The complaint alleges that Defendants operate e-commerce stores on platforms including Amazon, eBay, AliExpress, Temu, and TikTok to sell the Infringing Products to consumers in the United States (Compl. ¶11). It is alleged that these storefronts are designed to appear as authorized retailers and that the operators use tactics to conceal their true identities, such as using false registration information and operating multiple aliases (Compl. ¶14, ¶16). The complaint suggests the Defendants are part of an interrelated network of infringers, likely operating from foreign jurisdictions such as the People's Republic of China (Compl. ¶9, ¶17).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is the "ordinary observer" test, which asks 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 complaint includes a table with several views of the patented design to illustrate the subject of the claim (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 into the United States...Infringing Products that infringe directly and/or indirectly the ornamental design claimed in the UGG Design," which is embodied in the '161 Patent. The complaint does not contain a side-by-side comparison but provides figures from the patent itself to illustrate the claimed design. | ¶24; p. 4 | '161 Patent, Description |
- Identified Points of Contention:
- Factual Question: The central issue will be a visual comparison. The complaint makes a conclusory allegation of infringement but references an "Exhibit 1" (not included in the filing) to show the accused product (Compl. ¶3). The ultimate question for the fact-finder will be whether the accused products are substantially the same in overall visual appearance as the solid-line drawings in the '161 Patent.
- Scope Question: The infringement analysis must properly exclude the shoe's sole from consideration, as it is depicted in broken lines and explicitly disclaimed from the patented design ('161 Patent, Description). Any arguments that rely on similarities in the sole would be improper.
V. Key Claim Terms for Construction
In design patent litigation, claim construction is less about defining words and more about the court describing the overall visual appearance of the claimed design. Formal construction of terms is rare. However, the scope of the claimed article itself may be at issue.
- The Term: "footwear upper"
- Context and Importance: This term defines the article of manufacture to which the design is applied. Its interpretation is critical because the patent explicitly disclaims other parts of the footwear (the sole). The construction clarifies the boundary between the claimed design and the unclaimed environment.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent’s title and claim language use the general term "footwear upper," suggesting the design is not limited to a specific category of footwear (e.g., a boot vs. a shoe) but applies to the upper portion of footwear generally.
- Evidence for a Narrower Interpretation: The specification explicitly states, "The broken lines in FIGS. 1-7 represent portions of the footwear that form no part of the claimed design," which firmly establishes that the "upper" is distinct from the "sole" and that the claim does not cover the footwear as a whole ('161 Patent, Description). The specific embodiment shown in the figures will guide the interpretation of what constitutes the "upper."
VI. Other Allegations
Indirect Infringement
The complaint makes a passing allegation of direct "and/or" indirect infringement and includes "aiding, abetting, [or] contributing to" infringement in its prayer for injunctive relief (Compl. ¶24; Prayer for Relief ¶1(b)). However, the factual allegations focus exclusively on the Defendants' own acts of making, offering to sell, selling, and importing the accused products, which constitutes a theory of direct infringement.
Willful Infringement
Willfulness is alleged based on the assertion that Defendants knowingly and willfully sell the Infringing Products (Compl. ¶20, ¶21). The complaint further alleges that the operators are part of a network that communicates about tactics for evading detection and litigation, which may be used as evidence of intent (Compl. ¶18).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: Applying the "ordinary observer" test, is the overall ornamental design of the accused products substantially the same as the design claimed in the '161 Patent? The outcome will depend on a direct visual analysis by the trier of fact, once evidence of the accused products is presented.
- A central procedural question will be one of enforcement and remedy: Given that the defendants are anonymous foreign entities, the practical success of the litigation may hinge less on a finding of infringement and more on the court's ability to identify the defendants and the court's willingness to grant the requested injunctive relief against third-party online marketplace platforms.