Deckers Outdoor v. Schedule A Defendants: Design Patent Dismissed, Reinstatement Window Open
Deckers Outdoor Corporation asserted U.S. Design Patent USD866941S — covering a footwear upper and midsole — against a group of anonymous online marketplace sellers in the Northern District of Illinois. The case closed just 67 days after filing, with Deckers reserving the right to reinstate within 270 days against at least one named seller.
Deckers targets anonymous sellers with UGG-adjacent design patent
On 13 September 2024, Deckers Outdoor Corporation — maker of UGG and HOKA footwear — filed suit in the U.S. District Court for the Northern District of Illinois against a ‘Schedule A’ group of unidentified e-commerce partnerships and unincorporated associations. The action asserted U.S. Design Patent USD866941S, registered under application number 29/663103, which protects the ornamental appearance of a footwear upper and midsole — a configuration closely associated with Deckers’ premium footwear lines.
The case closed on 19 November 2024 — just 67 days after filing — via a Rule 41(a)(1) voluntary dismissal. Critically, the dismissal was filed ‘with leave to reinstate within two hundred and seventy (270) days’ with respect to defendant Quanzhou Xijing Trading Co., Ltd. (Schedule A line 20). This structure, common in Schedule A enforcement campaigns, suggests an ongoing negotiation or compliance monitoring period rather than a clean exit from the dispute.
The 67-day timeline is notably short and consistent with tactical use of TRO and preliminary injunction mechanisms that characterise Schedule A ‘anti-counterfeiting’ litigation in the Northern District of Illinois. Whether Deckers secured account freezes, sales data, or an informal settlement agreement with Quanzhou Xijing before dismissing is not disclosed in the public record. The 270-day reinstatement window — expiring approximately August 2025 — keeps meaningful pressure on the defendant and suggests the matter is not fully resolved.
Filing to Case Dismissed in 67 days
67 days — well below the district median for Schedule A infringement actions, suggesting early resolution
Dismissed with reinstatement rights: what Deckers’ Rule 41 exit means
Rule 41(a)(1) with reinstatement — not a clean exit
A Rule 41(a)(1) voluntary dismissal allows a plaintiff to withdraw without a court order. The addition of a 270-day reinstatement window is a negotiated term — it preserves Deckers’ ability to re-open the action against Quanzhou Xijing Trading Co., Ltd. without refiling. This structure typically accompanies an informal undertaking by the defendant, such as ceasing infringing sales or cooperating with asset disclosure.
Plaintiff-initiated dismissalWith or without prejudice? The record is silent
The filed notice states ‘dismiss this action, with leave to reinstate’ — it does not expressly state ‘with prejudice’ or ‘without prejudice.’ Under Rule 41(a)(1), a first voluntary dismissal is presumed without prejudice unless otherwise stated. The 270-day reinstatement clause further supports a without-prejudice reading, but practitioners should review the docket order, if any, for clarification before treating this as a final disposition.
Prejudice status not explicitQuanzhou Xijing faces a live reinstatement threat until ~August 2025
Quanzhou Xijing Trading Co., Ltd. secured a temporary reprieve but not a final resolution. The 270-day reinstatement window means Deckers can revive the full infringement action — including any injunctive relief sought — without the cost or delay of a new filing. This is a standard leverage mechanism in Schedule A campaigns: defendants face continued uncertainty until the window lapses or a formal settlement is executed.
Reinstatement window openSchedule A litigation as a design patent enforcement tool
Northern District of Illinois Schedule A cases are a well-established mechanism for brand owners to obtain ex parte TROs, platform account freezes, and payment holds against overseas e-commerce sellers. Deckers’ rapid 67-day closure — without a trial or contested ruling — is consistent with this playbook: use the court process to compel compliance or settlement, then exit via voluntary dismissal. The design patent USD866941S remains fully enforceable against other sellers.
Design patent remains activeFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Deckers Outdoor Corp. | Company | Global footwear brand (UGG, HOKA) — holder of USD866941S footwear design patentSearch in Eureka ↗ |
| Defendant | The Partnerships and Unincorporated Associations Identified on Schedule A | Individual | Anonymous e-commerce sellers; specifically Quanzhou Xijing Trading Co., Ltd. identified at line 20Search in Eureka ↗ |
| Plaintiff counsel | Amy Crout Ziegler | Attorney | Counsel for Deckers Outdoor Corp.Search in Eureka ↗ |
| Plaintiff counsel | Justin R. Gaudio | Attorney | Counsel for Deckers Outdoor Corp.Search in Eureka ↗ |
| Plaintiff counsel | Justin Tyler Joseph | Attorney | Counsel for Deckers Outdoor Corp.Search in Eureka ↗ |
| Plaintiff counsel | Luana Faria De Souza | Attorney | Counsel for Deckers Outdoor Corp.Search in Eureka ↗ |
| Plaintiff counsel | Thomas Joseph Juettner | Attorney | Counsel for Deckers Outdoor Corp.Search in Eureka ↗ |
| Plaintiff law firm | Greer, Burns & Crain, Ltd. | Law Firm | Representing Deckers Outdoor Corp.Search in Eureka ↗ |
| Presiding judge | Judge Jorge L. Alonso | Judge | Illinois Northern District CourtSearch in Eureka ↗ |
Official order — verbatim text
The dismissal notice invokes Rule 41(a)(1) — a unilateral plaintiff mechanism — rather than a stipulated dismissal under Rule 41(a)(2), which would require court approval. The express carve-out for Quanzhou Xijing Trading Co., Ltd. at Schedule A line 20, combined with the 270-day reinstatement clause, indicates this was a structured resolution for that specific defendant. The phrasing does not confirm whether other Schedule A defendants were separately dismissed or remain subject to the action; practitioners should examine the full docket for per-defendant disposition orders.
USD866941S — Ornamental design for a footwear upper and midsole
U.S. Design Patent USD866941S, filed under application number 29/663103, protects the ornamental appearance of a footwear upper and midsole configuration. Design patents cover the non-functional, aesthetic aspects of a product — meaning the patent secures the specific visual impression of the upper-midsole combination, not any underlying construction method. Deckers, as assignee, holds this right in the context of its premium footwear portfolio, which includes UGG and HOKA branded products widely recognised for distinctive silhouettes.
For competitors and online sellers, USD866941S represents a meaningful enforcement vector. Design patent infringement is assessed under the ‘ordinary observer’ test — whether an ordinary consumer would find the accused design substantially similar to the patented design. This lower evidentiary threshold, relative to utility patent claims, makes the patent an efficient litigation tool against overseas manufacturers producing visually similar footwear. Brands and suppliers in the casual and fashion footwear segment should treat this patent as an active risk marker when developing new upper-midsole aesthetics.
Should your footwear design be cleared against USD866941S?
Any company designing, manufacturing, or selling footwear with an upper and midsole appearance resembling Deckers’ protected configuration should assess freedom-to-operate risk. This applies particularly to: private-label footwear brands selling on Amazon, Walmart Marketplace, or Alibaba storefronts; ODMs supplying Western retailers; and DTC footwear startups launching in the casual/comfort segment. Deckers has demonstrated willingness to use Schedule A litigation in the Northern District of Illinois — a jurisdiction known for fast TROs and payment freezes.
PatSnap Eureka’s FTO Search Agent can map USD866941S claim coverage against your product design, identify design-around opportunities, and surface related Deckers design filings that may represent additional risk. Running an FTO analysis before product launch or marketplace listing is significantly less costly than defending a Schedule A action with an associated account freeze. Use Eureka to benchmark your design against the patent’s ornamental scope and assess litigation exposure before going to market.
Run a freedom-to-operate analysis on USD0866941S to assess your product’s exposure
Run FTO in Eureka →Similar design patent Schedule A cases in the Northern District of Illinois
Explore comparable footwear design patent infringement actions filed against anonymous e-commerce sellers in the Northern District of Illinois.
What this case signals for footwear design patent enforcement
Deckers’ rapid Schedule A action illustrates how design patents function as enforcement weapons against online marketplace sellers.
Schedule A TRO playbook: speed and asset freezes are the real leverage
The 67-day resolution strongly suggests Deckers secured interim relief — an account freeze or payment hold — before the defendant capitulated. Design patents like USD866941S are particularly effective in this context because ornamental similarity is easier to establish visually than utility patent infringement, lowering the bar for TRO success.
USD866941S remains a live enforcement risk for footwear sellers
The dismissal covers only Quanzhou Xijing as named. The underlying design patent is unimpaired. Any seller offering footwear with a substantially similar upper and midsole appearance remains exposed to a new Schedule A action by Deckers — the template is already proven in this jurisdiction.
Deckers v Partnerships — key questions answered
The case was voluntarily dismissed by Deckers under Rule 41(a)(1) on 19 November 2024, 67 days after filing. The dismissal included a 270-day reinstatement window with respect to Quanzhou Xijing Trading Co., Ltd. (Schedule A line 20). The public record does not specify whether the dismissal was with or without prejudice; under Rule 41(a)(1) a first voluntary dismissal is presumed without prejudice unless stated otherwise.
Deckers asserted U.S. Design Patent USD866941S (application number 29/663103), which protects the ornamental design of a footwear upper and midsole. Design patents cover the aesthetic appearance of a product and are enforced using the ‘ordinary observer’ test for substantial similarity.
Schedule A cases are a litigation format common in the Northern District of Illinois in which plaintiffs sue a large group of anonymous online sellers — typically identified only by marketplace usernames or storefronts — in a single action. The court allows plaintiffs to obtain ex parte TROs and asset freezes against multiple defendants simultaneously. Actual defendant identities are revealed through discovery or platform subpoenas.
The 270-day reinstatement window preserves Deckers’ ability to reopen the case against Quanzhou Xijing Trading Co., Ltd. without filing a new complaint. This is commonly used when a defendant has made undertakings — such as ceasing infringing sales — that Deckers wishes to monitor. If the defendant resumes infringement, Deckers can revive the action immediately. The window is set to expire approximately August 2025.
Yes. A voluntary dismissal of a litigation action does not affect the validity or enforceability of the underlying patent. USD866941S remains a fully active U.S. design patent. Deckers retains the right to assert it against any party — including other Schedule A defendants or new infringers — in future actions. Companies selling footwear with a similar upper and midsole appearance should treat the patent as a live enforcement risk.
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