In a swift procedural conclusion, Deckers Outdoor Corporation voluntarily dismissed its design patent infringement action against zichen_seller and associated unnamed partnerships in the U.S. District Court for the Northern District of Illinois, presided over by Chief Judge LaShonda A. Hunt. Filed on July 19, 2024, and closed just 42 days later on August 30, 2024, the case centered on alleged infringement of U.S. Design Patent USD927161S (Application No. 29/712480), which covers the ornamental design of footwear. The dismissal was entered without prejudice pursuant to Federal Rule of Civil Procedure 41(a)(1), leaving open the possibility of refiled claims.

This case is emblematic of a growing wave of Schedule A enforcement actions — a litigation strategy widely employed by established footwear and consumer goods brands to combat anonymous e-commerce sellers suspected of selling counterfeit or infringing products. For patent attorneys, in-house IP teams, and R&D professionals operating in the footwear and consumer goods space, this case underscores the tactical flexibility and procedural nuances of design patent enforcement against online marketplace sellers, and the importance of monitoring design patent portfolios in fast-moving enforcement campaigns.

Case Overview

The Parties

The Patent at Issue

U.S. Design Patent USD927161S (filed under Application No. 29/712480) protects the ornamental, visual appearance of a footwear design — specifically ‘the footwear shown’ — rather than any functional aspect of the shoe. Design patents of this type grant their owner the exclusive right to the distinct look of the product, covering the overall aesthetic as depicted in the patent’s figures. Real-world enforcement of this patent targets products that are substantially similar in appearance to the protected design, which is particularly relevant in combating counterfeit or copycat footwear sold through online marketplaces.

• • USD0927161S

Legal Representation

Plaintiff Counsel: Greer Burns & Crain, Ltd. (lead: Amy Crout Ziegler)

Litigation Timeline & Procedural History

Case No. 1:24-cv-06112 was filed in the U.S. District Court for the Northern District of Illinois, a venue frequently chosen by brand owners for Schedule A enforcement actions due to its established procedural practices for handling multi-defendant online marketplace cases and its receptiveness to ex parte temporary restraining orders (TROs). As a first-instance district court proceeding, the case represented the initial stage of federal litigation — the forum where factual records are established, preliminary injunctions are sought, and, in many Schedule A matters, early settlements or voluntary dismissals occur before substantive merits are ever adjudicated.

The case resolved in a remarkably compressed 42-day window, from filing on July 19, 2024, to closure on August 30, 2024. This accelerated timeline is characteristic of Schedule A actions, where plaintiffs often obtain ex parte TROs and asset freezes shortly after filing, which can rapidly induce settlement or prompt strategic dismissal. Deckers filed a voluntary dismissal without prejudice under Federal Rule of Civil Procedure 41(a)(1), meaning no court order was required and no merits determination was reached. The without-prejudice designation preserves Deckers’ right to refile claims against these defendants, a common strategic reservation in brand enforcement campaigns where the plaintiff may be gathering additional evidence or negotiating resolution outside of court.

The Verdict & Legal Analysis

Outcome

Pursuant to Federal Rule of Civil Procedure 41(a)(1), Deckers Outdoor Corporation voluntarily dismissed Case No. 1:24-cv-06112 without prejudice as to zichen_seller and all associated individuals and entities on August 30, 2024. No damages were awarded, no injunctive relief was formally entered at the time of dismissal, and no merits determination regarding infringement of USD927161S was made by the court. The without-prejudice dismissal leaves Deckers free to refile this action in the future, and any procedural orders — such as TROs or asset freezes — entered during the case’s brief pendency would not survive the dismissal as binding final orders.

Verdict Cause Analysis

The following analysis examines the legal grounds and procedural dynamics underlying Deckers’ design patent infringement action and its voluntary dismissal without prejudice.

• Deckers asserted infringement of U.S. Design Patent USD927161S, which protects the ornamental appearance of a specific footwear design, against zichen_seller — a defendant identified collectively with other unnamed online marketplace sellers under the Schedule A mechanism.
• The voluntary dismissal was filed under FRCP 41(a)(1), which permits a plaintiff to dismiss an action without a court order before the defendant has served an answer or a motion for summary judgment, making this a unilateral plaintiff decision requiring no judicial approval.
• The without-prejudice designation is a strategic election that preserves the plaintiff’s right to refile claims based on the same design patent against the same or related defendants, often used when a matter resolves informally or when additional evidence gathering is ongoing.
• No defendant counsel of record was identified in the case docket, which is typical in Schedule A matters where anonymous or foreign-based online sellers frequently fail to appear, participate, or retain U.S. legal representation.

Legal Significance

1. A Rule 41(a)(1) voluntary dismissal without prejudice in a Schedule A design patent action carries no preclusive effect on future litigation, meaning Deckers retains full ability to assert USD927161S against zichen_seller in any subsequent proceeding, including in a different venue.
2. The 42-day case duration illustrates that Schedule A design patent enforcement actions can function as rapid-response tools — the threat of asset freezes and TROs often induces settlement or compliance before any substantive ruling on patent validity or infringement scope is ever issued.
3. Because no claim construction or infringement analysis was conducted by the court, this case establishes no precedent regarding the scope or validity of USD927161S, leaving the design patent’s enforceability against similar footwear sellers fully intact and unexamined by judicial scrutiny.

Strategic Takeaways

For Patent Attorneys:

• When representing brand owners in Schedule A actions, FRCP 41(a)(1) dismissals without prejudice are a flexible exit ramp that preserve client rights while avoiding adverse rulings — use them strategically when a defendant has settled informally or when refiling in a different jurisdiction is preferable.
• The absence of defendant counsel in this case highlights the importance of robust service procedures and ex parte TRO strategies to ensure asset freezes are obtained and effective before defendants can transfer or conceal funds offshore.
• Design patent enforcement via Schedule A is most effective when paired with a well-documented claim chart demonstrating substantial similarity between the patented ornamental design and the accused footwear product — prepare these materials before filing to support rapid TRO motions.

For IP Professionals:

• In-house teams at consumer goods and footwear companies should monitor the Northern District of Illinois docket regularly for competitive Schedule A filings, as they reveal enforcement trends and identify which online platforms and seller types are being targeted by industry peers.
• Maintain a living register of your company’s design patent portfolio with enforcement timelines, TRO history, and dismissal records to ensure that without-prejudice dismissals are tracked and refiling windows are acted upon before relevant statutes of limitations create complications.

For R&D Teams:

• Footwear product designers should conduct design patent clearance searches against Deckers’ portfolio — including USD927161S — before finalizing new product aesthetics, as the ornamental design scope of design patents is broad and can capture products with similar visual profiles even without identical features.
• R&D teams selling through online marketplaces should implement a platform monitoring program to detect and respond to TRO-based account suspensions that may arise from Schedule A actions, minimizing revenue disruption during enforcement windows.