Deckers Outdoor Corporation has failed to undo a jury’s patent invalidity finding that handed Quince a win in their closely-watched clash over lookalike UGG boots. In a newly-issued order, Judge Araceli Martínez-Olguín of the U.S. District Court for the Northern District of California denied Deckers’ motion for a new trial on the validity of its UGG design patent, leaving the earlier judgment in Quince’s favor intact.
The ruling comes after the parties took the sole remaining issue in the case to trial in June: whether Quince’s Australian Shearling Mini Boot infringed Deckers’ U.S. Patent No. D927,161 and whether that patent is valid. Following a four-day trial, the jury found that Quince infringed the ’161 patent, but also determined that the patent was invalid, prompting the court to enter judgment for Quince.
Deckers subsequently moved for a new trial limited to the validity of the patent, challenging how the invalidity question reached the jury and how Quince was permitted to make its case.
Who Decides Indefiniteness?
Central to Deckers’ challenge was its argument that indefiniteness is a question of law for the court, and that the court erred by allowing the jury to determine whether the ’161 patent was indefinite – but the court disagreed. In her September 9 order, Judge Martínez-Olguín found that indefiniteness can properly be resolved by a jury when the dispute turns on factual questions. Here, those questions included what an ordinary designer would understand from the patent drawings and whether the designer could understand how to create the patented design despite inconsistencies in those drawings.
The court also rejected Deckers’ claim that it had effectively resolved the issue earlier when it denied Quince’s summary judgment motion. According to the court, that earlier ruling did not amount to a determination that the patent satisfied the definiteness requirement. And the court had already ruled before trial that indefiniteness was properly before the jury.
Even if the court had erred by putting indefiniteness to the jury, it said the error would have been harmless. The underlying factual questions turned on conflicting expert testimony, and Deckers did not argue that the evidence could not support the jury’s verdict. The court could therefore rely on the jury’s implied factual findings in making its own legal determination, leaving the final judgment unchanged.
Expert Testimony and Prior Art
Deckers separately challenged testimony from Quince’s expert, who told the jury that the ’161 patent was invalid because it was obvious, functional, indefinite, and non-enabling. Deckers argued that the expert improperly offered legal conclusions that the patent was indefinite and non-enabling.
The court found that the testimony was grounded in design-level observations, including inconsistent solid-line conventions in the patent figures and how an ordinary designer would interpret them. The expert’s conclusion that an ordinary designer could not understand the drawings with reasonable certainty or recreate the design was a factual conclusion relevant to the question before the jury, the court held.
Deckers also challenged the prior-art evidence presented at trial, arguing that the volume of prior art was cumulative and unfairly prejudicial – but the court found that Deckers had waived that objection. Deckers had not raised the cumulative-evidence argument in its motion in limine and failed to timely lodge its day-of objections under the court’s exhibit procedure. The court also found that Deckers failed to show how the allegedly cumulative evidence prejudiced it.
THE BOTTOM LINE: The court’s order leaves the jury’s verdict intact: Quince’s boot was found to infringe Deckers’ design patent, but Quince nevertheless prevailed because the jury found the patent itself invalid. For Deckers, the ruling ends its attempt to reverse that outcome at the district-court level through a new trial.
More broadly, the outcome highlights the limits of an infringement finding. Establishing that a competing product infringes a design patent only gets a rights holder so far. The patent being asserted must survive the defendant’s validity challenge, too.
The case is Deckers Outdoor Corp. v. Last Brand, Inc., 3:23-cv-04850 (N.D. Cal.).
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