Imagine That IP Law Blog

On the surface, design patents often look straightforward: a handful of drawings, one claim, and a short specification (description). But the recent path of Deckers Outdoor Corporation’s U.S. Design Patent No. D927,161 (161 Patent) shows how deceptively complex design-patent enforcement can become once a patent moves from prosecution to PTAB challenge to jury trial.

The ’161 Patent survived an inter partes review (IPR) challenge at the institution stage. Yet the same design patent later went to trial, where a jury found infringement but also found the patent invalid, resulting in judgment for the accused infringer. That sequence of events provides a useful case study for design-patent owners and accused infringers alike.

It also highlights several themes after LKQ (LKQ Corp. et. al. v. GM Global Technology Operations LLC): the importance of drawing clarity, the evidentiary limits of IPR prior art, the treatment of functional design elements, and the very different invalidity record that may be available in district court.

The Patent and Prosecution History: One Claim, Seven Figures, and the Importance of the Drawings
The 161 Patent is titled “Footwear Upper” and issued from Application No. 29/712,480, filed November 8, 2019, with no earlier priority claim. As is the case in design-patent practice, the drawings do most of the work: solid lines identify the claimed design, while broken lines show portions of the footwear that form no part of the claim.

The prosecution history was relatively short, but strategically important. Deckers filed an IDS citing UGG Classic Mini and UGG Classic Mini II materials, and the Examiner separately cited CN 304964897, later referred to in the IPR as CN’897. The Examiner did not reject the claim over prior art. Instead, the only Non-Final Office Action raised technical drawing objections and enablement and clarity issues under 35 U.S.C. § 112.

Deckers responded with replacement drawings, after which an Ex parte Quayle action (closing patent prosecution on the merits) requiring further drawing corrections was issued. The drawing issues were not merely ministerial. The Ex parte Quayle action addressed broken-line consistency, replacement-drawing practice, and whether deleting certain broken-line environmental disclosure introduced new matter under 35 U.S.C. § 132 and 37 C.F.R. § 1.121. Deckers later submitted corrected drawings, and the application issued as the 161 Patent based on those drawings.

The practical lesson here is meaningful: As discussed below, in design applications, drawing amendments are often not a mere formality. Broken lines, environmental structure, replacement drawings, and the absence of a prior-art rejection can later shape claim construction, written description, functionality, invalidity disputes, and arguments over what the patent does—and does not—cover.

The IPR: A Broad Challenge That Failed at Institution
Next Step Group challenged the only claim of the 161 Patent in IPR2024-00525, asserting anticipation and obviousness based on several prior footwear designs, including, among others, CN’897 and the UGG Classic Mini. The IPR petition advanced alternative theories, including that the pull tab was functional and should be discounted, or, if treated as ornamental, was obvious in view of prior boot designs.

Deckers’ preliminary response attacked the petition on both procedural and substantive grounds. Procedurally, Deckers argued that many of the asserted grounds relied on alleged prior sales and product images, rather than patents or printed publications, which are the only permissible prior-art bases for IPR under 35 U.S.C. § 311(b). Deckers also argued that CN’897 and the UGG Classic Mini had already been considered during prosecution, supporting discretionary denial under § 325(d). Substantively, Deckers argued that the petition improperly ignored the pull tab and failed to analyze the overall visual appearance of the claimed design.

The PTAB permitted limited supplemental briefing after the Federal Circuit’s en banc decision in LKQ, which replaced the former, overly rigid “Rosen-Durling” obviousness framework with a more flexible Graham/KSR-style analysis for design patents. Even under that more flexible standard, however, the Board denied institution of the IPR.

The Board’s decision turned on three points. First, the petitioner had not sufficiently shown that key website and product-listing evidence qualified as prior-art printed publications. Second, the Board refused to eliminate the pull tab from the claim merely because it served a useful purpose. Third, the Board found the prior-art comparisons insufficient because they did not adequately address the designs’ overall visual appearances, including features such as the rear stitch line, foot-opening ratio, pull-tab configuration, rear profile, and top-line slope.

The takeaway from this IPR is that LKQ may have made design-patent obviousness more flexible, but it did not make it any less critical. Petitioners still must prove printed-publication status, address the claimed design as a whole, and explain why the prior art creates the same overall visual appearance from the perspective of the ordinary designer.

The Jury Case: Same Patent, Different Forum, Different Result
The later Quince/Last Brand litigation in the Northern District of California (Deckers Outdoor Corp. v. Last Brand, Inc., 2024 U.S. Dist. LEXIS 149940 (2024)) involved both trade-dress and design-patent claims relating to shearling-style boots. The case narrowed before trial. On summary judgment, the court granted Quince judgment on certain trade-dress claims and Deckers’ patent lost-profits theory, but denied Quince summary judgment that the 161 Patent was invalid as functional or indefinite. Deckers later dismissed its remaining trade-dress claim with prejudice, leaving only the 161 Patent infringement claim for trial.

The jury returned a split verdict, finding that Quince’s Australian Shearling Mini Boot infringed the 161 Patent, but also finding that the 161 Patent was invalid. Because invalidity is a complete defense to infringement, the court entered judgment for Quince on the patent claim. See Deckers Outdoor Corp. v. Last Brand, Inc., 2026 U.S. Dist. LEXIS 141753 (2026). While the verdict form did not specify the invalidity theory, Quince had argued functionality, indefiniteness, and obviousness.

At first glance, the sequence may seem counterintuitive: the PTAB declined to institute review, yet a jury later found the same patent invalid. But those outcomes are not necessarily inconsistent, particularly in view of current IPR practice. They reflect different forums, different records, and different invalidity tools.

In IPR, the petitioner is limited to anticipation and obviousness grounds based on patents and printed publications, and in such instances, the publication dates must be proven to the satisfaction of the Patent Trial and Appeal Board. District court litigation allows for broader patent challenged based on different prior art evidence. An accused infringer may develop invalidity theories using evidence, including physical products, fact and expert testimony, functionality evidence, and trial admissions, that may not be available, or may not be available in the same way, in an IPR.

The key takeaway from the jury trial is that an IPR institution denial is not a validity ruling on the full universe of invalidity defenses or the universe of available prior art. For patent owners, it should not create false comfort. For accused infringers, it should not end the invalidity analysis. The same design patent may look very different when tested against a fuller district-court record.

Practical Takeaways

1. Design-patent prosecution should be built with enforcement in mind
   The prosecution of the 161 Patent shows that drawing formalities can become substantive litigation issues. Broken lines, environmental structure, and replacement drawings should be treated as substantive claim-scope decisions, not just formalities. Just like utility applications, design applications should be prepared with a future courtroom in mind: what is claimed, what is disclaimed, and what visual information is preserved in the file history may all matter later.
2. IDS practice is not a substitute for examiner analysis
   CN’897 and the UGG Classic Mini materials were before the Office, but there was no prior-art rejection. That record helped Deckers in the IPR, but it also left room for later arguments that the prior art had not been meaningfully considered or tested. While a strong prosecution record may benefit patent owners, a thin allowance record may leave room for accused infringers to argue that key visual teachings were not meaningfully addressed.
3. IPR petitioners must prove printed-publication status with precision
   The Board’s institution denial is a warning to IPR petitioners relying on internet evidence. Product listings, customer reviews, Wayback pages, and “date first available” entries may be useful but are not automatically enough. Petitioners must connect the specific images and disclosures they rely on to public accessibility before the critical date.
4. Functionality arguments require evidence, not labels
   The PTAB refused to remove the pull tab from the claim merely because it served a useful purpose. A feature can be useful and still contribute to the claimed ornamental design. A party arguing functionality needs evidence addressing the design, available alternatives, and why the claimed configuration is dictated by function.
5. Overall visual impression remains the center of gravity after LKQ
   The post-LKQ design-patent obviousness framework is more flexible, but it is not merely a checklist exercise. Parties must address the claimed design as a whole from the perspective of the ordinary designer.
6. Trade dress and design patents are related, but not interchangeable
   Trade dress and design patents may protect the same commercial product, but they are not interchangeable. Statements about nonfunctionality, product features, and scope in one context may be used strategically in another. Practitioners should coordinate positions across regimes so that arguments in one context do not undermine arguments in another.
7. An IPR denial is not a validity guarantee
   The failed IPR did not prevent a later jury from finding the 161 Patent invalid. PTAB and district court proceedings involve different records, different evidence, and different invalidity tools.
8. A split verdict can still be a defense win
   The Quince jury found infringement, but also invalidity. Because invalidity defeats infringement liability, judgment entered for Quince on the patent claim. For accused infringers, that underscores the value of preserving and trying invalidity even when infringement risk is significant. For patent owners, it underscores the need to prepare validity proof with the same intensity as infringement proof.

Conclusion
The 161 Patent’s path from prosecution, to failed IPR challenge, to jury invalidity verdict is a useful case study in the lifecycle of a modern design patent. The prosecution record turned on drawing scope and formal support. The IPR turned on printed-publication proof, claim construction, and overall visual impression. The jury case turned on a broader trial record and produced the result that mattered: invalidity and judgment for the accused infringer.

For design-driven companies, the message is clear. Design patents remain powerful, but their strength depends on disciplined prosecution, carefully curated prior-art records, consistent IP-positioning, and litigation strategies that account for the different evidentiary rules of the PTAB and district court.