1:26-cv-00466
Deckers Outdoor Corp v. Partnerships Unincorp Associations
I. Executive Summary and Procedural Information
Parties & Counsel:
- Plaintiff: Deckers Outdoor Corporation (Delaware)
- Defendant: Kalstage US (Unknown)
- Plaintiff’s Counsel: Greer, Burns & Crain, Ltd.
Case Identification: 1:26-cv-00466, N.D. Ill., 01/16/2026
Venue Allegations: Plaintiff alleges venue is proper because Defendant targets consumers in the United States, including Illinois, through an e-commerce store, offers shipping to Illinois, accepts U.S. currency, and has allegedly sold infringing products to residents of the state.
Core Dispute: Plaintiff alleges that Defendant’s footwear products sold online infringe a design patent covering the ornamental appearance of a footwear upper.
Technical Context: The dispute is in the highly competitive consumer footwear market, where distinctive ornamental designs contribute significantly to brand identity and commercial success.
Key Procedural History: The complaint does not mention prior litigation, administrative proceedings, or licensing history involving these specific parties. It does allege that the defendant is an entity of "unknown makeup" operating under a seller alias to conceal its identity, which may present procedural challenges related to service and enforcement.
Case Timeline
| Date | Event |
|---|---|
| 2019-11-08 | D'161 Patent Priority Date |
| 2021-08-10 | D'161 Patent Issue Date |
| 2026-01-16 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D927,161 - *"FOOTWEAR UPPER,"*
- Patent Identification: U.S. Design Patent No. D927,161, "FOOTWEAR UPPER," issued August 10, 2021.
The Invention Explained
- Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture rather than its utilitarian function. The patent addresses the need for a novel and non-obvious ornamental design for footwear, which Plaintiff alleges has become a recognizable and distinctive part of its UGG brand identity (Compl. ¶6-7).
- The Patented Solution: The patent claims the specific visual appearance of a footwear upper as depicted in its seven figures (D’161 Patent, Figs. 1-7). The design is characterized by its overall shape, the proportions of the ankle opening to the vamp, the contour of the collar, and the placement and configuration of its seams (D’161 Patent, Claim; Description). The broken lines in the figures indicate that elements such as the outsole are not part of the claimed design (D’161 Patent, Description).
- Technical Importance: In the footwear industry, unique silhouettes and ornamental features are critical for brand differentiation and consumer recognition (Compl. ¶7).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is for: "The ornamental design for a footwear upper, as shown and described" (D’161 Patent, Claim).
- The scope of this claim is defined by the solid lines in the patent’s drawings. Key visual features include:
- An ankle-height, slip-on style upper.
- A distinct, slightly raised collar that encircles the opening.
- A vertical seam running down the back of the heel.
- A pull tab extending from the rear collar.
- The overall profile and proportions of the upper.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are footwear products ("Infringing Product") offered for sale and sold by Defendant through e-commerce stores operating under the seller alias "Kalstage US" (Compl. ¶3, ¶11).
Functionality and Market Context
- The complaint alleges that Defendant operates one or more "fully interactive, e-commerce stores" on platforms such as PayPal and Temu that target U.S. consumers (Compl. ¶2, ¶11). These stores are allegedly designed to appear sophisticated and may use content and images that make it difficult for consumers to distinguish them from authorized retailers of genuine UGG products (Compl. ¶14). Plaintiff alleges Defendant is not licensed or authorized to use the patented design (Compl. ¶14).
IV. Analysis of Infringement Allegations
The complaint alleges that the accused products embody a design that is substantially the same as the patented design, thereby infringing the D'161 Patent (Compl. ¶23-24). The legal test for design patent infringement is whether, in the eye of an ordinary observer, the two designs are substantially the same, such that the observer would be induced to purchase one supposing it to be the other. The complaint provides a table containing several figures from the patent to illustrate the design at issue (Compl. p. 4).
As a traditional claim chart is not used for design patents, the infringement analysis rests on a visual comparison. The core contention is that the overall ornamental appearance of the accused footwear is confusingly similar to the design depicted in the D'161 patent figures.
- Identified Points of Contention:
- Visual Similarity: The central question for the court will be a visual one: Does the accused product's design appropriate the novelty of the patented design which distinguishes it from the prior art? Since Exhibit 1 containing images of the accused product was not attached to the filed complaint, a direct comparison is not possible from the pleading alone.
- Scope Questions: The analysis will depend on comparing the overall visual impression of the accused product with the specific elements shown in solid lines in the D'161 patent figures. Any differences between the accused product and the patented design will be assessed to determine if they are significant enough to prevent an ordinary observer from being deceived.
V. Key Claim Terms for Construction
In design patent litigation, the "claim" is understood to be the drawings, and formal claim construction is less common than in utility patent cases. However, the interpretation of the article of manufacture to which the design is applied can be a point of dispute.
- The Term: "footwear upper"
- Context and Importance: This phrase from the patent's title and claim defines the article of manufacture. Its scope determines the types of products to which the infringement analysis applies. Practitioners may focus on this term to define the context for the "ordinary observer" test.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The use of the general term "footwear upper" could suggest the design is not limited to one specific type of shoe (e.g., a winter boot) but could apply to any footwear sharing the claimed ornamental appearance (D’161 Patent, Title; Claim).
- Evidence for a Narrower Interpretation: The figures consistently show the upper in the context of an ankle-height, slip-on boot. A court may determine that the scope of the design is inseparable from the specific article of manufacture depicted in the drawings (D’161 Patent, Figs. 1-7).
VI. Other Allegations
- Indirect Infringement: The complaint includes a conclusory allegation that Defendant infringes "directly and/or indirectly" (Compl. ¶23). However, it does not plead specific facts to support the knowledge and intent elements required for claims of induced or contributory infringement.
- Willful Infringement: Plaintiff alleges that Defendant’s infringement was willful (Compl. ¶20). The complaint supports this by alleging Defendant is part of a network of e-commerce operators who knowingly engage in fraudulent conduct to conceal their identities and evade enforcement (Compl. ¶15-¶18). The complaint does not allege pre-suit knowledge based on a specific notice letter from Plaintiff.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: Once the accused product is presented, would an ordinary observer, giving the attention a purchaser usually gives, find the design of the accused product to be substantially the same as the ornamental design claimed in the D'161 patent?
- A significant practical question will be one of enforcement and identity: Given the allegations that Defendant operates through aliases, is potentially located overseas, and uses tactics to conceal its identity (Compl. ¶9-10, ¶15), can Plaintiff effectively identify the responsible parties and enforce any monetary or injunctive relief granted by the court?