2:15-cv-02812
C.D. Cal.Aug 8, 2018Background
- Deckers owns design patents D599,999 ("'999") and D616,189 ("'189") embodied in UGG Bailey Button and Bailey Button Triplet boots.
- Romeo & Juliette (Romeo) sells BearPaw boots; modified some BearPaw styles to one- or three-button designs; timing of changes disputed.
- Deckers sued Romeo in 2010 for trade dress; parties settled in 2012. The settlement limited Romeo's right to sell inventory manufactured before Jan 1, 2013, and expressly reserved Deckers’ other IP rights.
- In 2015 Deckers sued again, alleging infringement of the '999 and '189 design patents by various BearPaw boots; jury found willful infringement and inducement, and returned an advisory verdict that the '189 patent was not obvious.
- The court tried Romeo’s equitable defenses (equitable estoppel and invalidity of the '189 patent) and issued findings rejecting estoppel and holding the '189 patent not invalid for obviousness.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Deckers is equitably estopped from enforcing patents | Deckers reserved IP rights in the 2012 settlement and continued to enforce patents | Romeo: Deckers’ settlement conduct and delay misled Romeo into believing Deckers waived enforcement | Court: No estoppel — settlement did not grant a general release and expressly reserved Deckers’ IP rights; Deckers’ conduct not misleading |
| Scope of 2012 Settlement — did it permit selling infringing boots without restriction | Deckers: Settlement allowed limited sell-off of pre-termination inventory only | Romeo: Settlement permitted unrestricted sale of boots, including potentially infringing designs | Court: Settlement language is clear and restrictive; sale rights limited to inventory manufactured before Jan 1, 2013, through Dec 31, 2013; no broad license granted |
| Whether the '189 patent is invalid for obviousness | Deckers: Patent presumed valid; objective indicia and differences from prior art support nonobviousness | Romeo: Patent is obvious based on prior art and should be invalidated | Court: '189 patent not invalid for obviousness; accepts jury’s advisory verdict and underlying factual findings supported by substantial evidence |
| Burden/standard for proving patent invalidity | Deckers: Presumption of validity applies; clear and convincing standard required to overcome it | Romeo: (implicit) argue invalidity should be found on the record | Court: Invalidity must be shown by clear and convincing evidence; jury resolved facts, court accepts those factual findings |
Key Cases Cited
- A.C. Aukerman Co. v. R.L. Chaides Const. Co., 960 F.2d 1020 (Fed. Cir. 1992) (framework for equitable estoppel in patent cases)
- Wind Dancer Prod. Grp. v. Walt Disney Pictures, 10 Cal. App. 5th 56 (Cal. Ct. App. 2017) (contract interpretation focuses on parties’ objective intent and whole‑contract reading)
- Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348 (Fed. Cir. 2007) (presumption of patent validity includes presumption of nonobviousness)
- Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342 (Fed. Cir. 2012) (trial court must accept jury’s implicit factual findings on obviousness if supported by substantial evidence)
- Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306 (Fed. Cir. 2000) (Graham factors for obviousness include scope of prior art and objective indicia)