3:19-cv-01587
Deckers Outdoor Corp v. Pacific Harbors LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Deckers Outdoor Corporation (Delaware)
- Defendant: Pacific Harbors, LLC (Oregon)
- Plaintiff’s Counsel: Gordon Rees Scully Mansukhani, LLP
- Case Identification: 3:19-cv-01587, D. Or., 10/03/2019
- Venue Allegations: Venue is asserted in the District of Oregon on the basis that Defendant maintains its headquarters in the district and the claims asserted arise there.
- Core Dispute: Plaintiff alleges that Defendant’s "The Barberry Button Bomber" footwear infringes U.S. Design Patent No. D599,999, which protects the ornamental design of Plaintiff's UGG® Bailey Button Boot.
- Technical Context: The dispute is in the field of ornamental footwear design, specifically within the commercially significant market for luxury and comfort boots.
- Key Procedural History: The complaint alleges that Plaintiff has marked substantially all of its commercial products embodying the patented design with the patent number, a fact that may be relevant to questions of damages and willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2008-10-27 | '999 Patent Priority Date (Filing Date) |
| 2009-09-15 | U.S. Patent No. D599999 Issued |
| 2019-10-03 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D599,999 - "Portion of a Footwear Upper"
The Invention Explained
- Problem Addressed: Design patents address the aesthetic challenge of creating a new, original, and ornamental design for an article of manufacture. The context provided by the complaint suggests a goal of creating a distinctive and recognizable style within the popular UGG® brand to distinguish it in the marketplace (Compl. ¶¶ 10-11, 22).
- The Patented Solution: The patent claims the specific ornamental appearance of a portion of a boot's upper, not its functional aspects ('999 Patent, Claim). The claimed design, depicted in solid lines in the patent's figures, consists of a boot shaft with an overlapping side panel that has a curved top edge, a button-and-loop closure system, and exposed fleece-type lining along the top of the shaft and the edge of the overlapping panel ('999 Patent, FIGS. 1-2).
- Technical Importance: The commercial embodiment of the design, the "Bailey Button Boot," is alleged to be one of the "most well-recognized and commercially successful styles" of the UGG® brand, suggesting the design's importance in creating a distinct and valuable product identity in the fashion footwear industry (Compl. ¶25).
Key Claims at a Glance
- The single claim asserted is for the ornamental design as depicted in the patent's drawings.
- The essential elements of the claimed design include:
- The overall visual appearance of an overlapping side panel on a boot shaft.
- The specific curved shape of the top edges of the overlapping panels.
- The visual effect of an exposed fleece-type lining along the top of the boot shaft and the edges of the overlapping panel.
- The inclusion of a single button and elastic loop closure featured on the lateral side of the boot shaft.
III. The Accused Instrumentality
Product Identification
The accused product is footwear named "The Barberry Button Bomber" (Compl. ¶13).
Functionality and Market Context
The complaint presents a photograph of the accused product, showing it to be a mid-calf boot with a side-button closure. (Compl. p. 4, "Defendant's Accused Product"). The image depicts a boot with an overlapping side panel, a single button, and what appears to be an exposed fleece or shearling-type lining. The complaint alleges that the Defendant is a competitor that introduced the Accused Products "in an effort to exploit Deckers' reputation in the market" (Compl. ¶16).
IV. Analysis of Infringement Allegations
The complaint alleges that the Accused Products "bear a design that is substantially similar to the ‘999 Patent" (Compl. ¶58). In design patent cases, the analysis turns on a visual comparison. The table below breaks down the core ornamental features of the claimed design and the corresponding features of the accused product as alleged in the complaint.
D599,999 Infringement Allegations
| Claim Element (from "as shown and described") | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a portion of a footwear upper | The overall visual appearance of "The Barberry Button Bomber" boot is alleged to be "substantially similar" to the patented design. | ¶58 | '999 Patent, Claim |
| An overlapping side panel with a curved top edge | The accused product features an overlapping side panel with a curved top edge, secured by a button. The photograph of the accused product shows these features. | ¶58; p. 4 | '999 Patent, FIG. 2 |
| Exposed fleece-type lining along the top of the boot shaft and overlapping panel | The accused product is depicted with an exposed, light-colored lining along the top opening and the edge of the side panel, creating a similar visual effect to the patented design. | ¶58; p. 4 | '999 Patent, FIG. 1 |
| A button and loop closure on the lateral side | The accused product features a single button and what appears to be a closure mechanism on the side of the boot shaft, consistent with the placement and general appearance shown in the patent. | ¶58; p. 4 | '999 Patent, FIG. 2 |
Identified Points of Contention
- Scope Questions: The primary question in design patent infringement is whether an ordinary observer, giving the attention a purchaser usually gives, would find the two designs to be substantially the same. The analysis will depend on the overall visual impression, not a direct comparison of minute details.
- Technical Questions: A key question for the court will be the extent to which prior art in footwear design limits the scope of the '999 Patent. While not detailed in the complaint, prior art could render common features (like a side-button on a boot) unprotectable, forcing the comparison to focus only on the truly novel aspects of Deckers' design. The court will need to determine what constitutes the overall "ornamental design" in light of what was known in the field before the patent.
V. Key Claim Terms for Construction
In design patent litigation, the claim is typically understood as the visual representation in the drawings, and formal construction of verbal terms is rare. The central analysis focuses on a visual comparison of the claimed design as a whole with the accused product. Practitioners may therefore focus not on construing specific terms, but on defining the overall scope of the patented design in view of the prior art. The key issue is what visual elements an ordinary observer would consider part of the patented design's protectable scope.
VI. Other Allegations
Indirect Infringement
The complaint does not allege facts to support claims for indirect patent infringement (inducement or contributory infringement). The patent claim is for direct infringement under 35 U.S.C. § 271 (Compl. ¶58).
Willful Infringement
The complaint alleges that Defendant's infringement was willful (Compl. ¶64). This allegation is based on the asserted "widespread popularity and recognition of Deckers' Bailey Button boot" and the allegation that Deckers marked its products with the patent number, which is alleged to have provided Defendant with pre-suit knowledge of the '999 Patent (Compl. ¶¶ 62-63). The complaint further alleges intentional copying "in an effort to pass them off as if they originated" from Deckers (Compl. ¶63).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: Would an ordinary observer, familiar with the relevant prior art for boot designs, find the overall ornamental appearance of Defendant's "The Barberry Button Bomber" to be substantially the same as the design claimed in the '999 Patent, such that the observer would be deceived into purchasing one thinking it was the other?
- A second central question will be the scope of protection: How does the prior art in footwear design define and limit the protectable scope of the '999 Patent? The answer will determine whether the comparison focuses on the general concept of a side-button boot or on a more specific combination of unique ornamental features.
- A key question for damages will be willfulness: Does the evidence support the allegation that Defendant had pre-suit knowledge of the '999 Patent, either through actual notice or constructively via Plaintiff's patent marking, and engaged in conduct egregious enough to warrant enhanced damages?