Imagine That IP Law Blog

In our earlier posts Design Patents in the Real World and When IP Enforcement Becomes the Story, we followed Deckers Outdoor Corporation's U.S. Design Patent No. D927,161 (‘161 Patent) from prosecution, through a failed inter partes review (IPR) challenge, to a June 2026 jury verdict. The jury found that Quince's Australian Shearling Mini Boot infringed the ‘161 Patent, but that the patent was invalid. We also discussed Quince's separate antitrust suit and its motion for attorneys' fees.

Since then, two rulings have moved the story forward. On September 9, 2026, the trial court denied Deckers' motion for a new trial on validity. Deckers Outdoor Corp. v. Last Brand, Inc., 2026 U.S. Dist. LEXIS 204063 (N.D. Cal. Sept. 9, 2026). Two weeks earlier, on August 27, 2026, the court in Quince's separate antitrust case dismissed Quince's complaint with leave to amend. Together, the rulings reinforce two themes from our earlier posts: design-patent drawings matter, and how a case is litigated can matter as much as the merits.

The New-Trial Motion: Three Theories, One Result
On July 22, 2026, Deckers moved for a new trial (a request that the court set aside the verdict and retry the case) limited to validity. It asked the court to rule, as a matter of law, that the ‘161 Patent is not invalid for indefiniteness or lack of enablement. Id. at *4. Deckers argued that (1) indefiniteness is a legal question the judge, not the jury, should have decided; (2) Quince's expert improperly offered legal conclusions; and (3) the volume of prior art admitted at trial was cumulative and unfairly prejudicial. After an August 27 hearing, the motion was denied in its entirety. Id. at *15. Deckers has since appealed to the U.S. Court of Appeals for the Federal Circuit.

Who Decides Indefiniteness?
Indefiniteness asks whether a patent's drawings inform a skilled designer of the scope of the claimed design with reasonable certainty. Deckers argued that, because indefiniteness is intertwined with claim construction, it was for the court alone to decide.

The court disagreed. Relying on BJ Services Co. v. Halliburton Energy Services, Inc., 338 F.3d 1368 (Fed. Cir. 2003), and Bombardier Recreational Prods. Inc. v. Arctic Cat Inc., 785 F. App'x 858 (Fed. Cir. 2019), the court held that indefiniteness may be resolved by a jury where the issues are factual. Deckers at *6. Here, the parties disputed what an ordinary designer would understand from the drawings, and whether that designer could create the design despite inconsistent figures. Those are fact questions.

The court also found O2 Micro International Ltd. v. Beyond Innovation Technology Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008) (holding that “[w]hen the parties present a fundamental dispute regarding the scope of a claim term, it is the court’s duty to resolve it.”) inapposite. The court had already determined the claim's scope by holding that the design is defined by its figures, and neither party identified any further scope question. Its earlier denial of Quince's summary judgment motion was not a ruling that the patent was definite. The court had also twice ruled before trial that indefiniteness was properly before the jury. Deckers at *8 (citing Dkt. Nos. 313, 324).

Finally, the court determined that even if such error had existed, it would have been harmless. The verdict form asked a single, general question on invalidity, and under a general verdict the law presumes the findings needed to support it. Deckers did not dispute that the underlying factual questions were properly before the jury or argue that the evidence could not support the verdict. So, a separate legal ruling by the court would rest on the jury's implied findings and would not change the judgment.

Expert Testimony Grounded in the Drawings
Deckers also argued that Quince's expert crossed a line by testifying that the patent was "indefinite and not enabling." Under Federal Rule of Evidence 704, “expert testimony that is ‘otherwise admissible is not objectionable because it embraces an ultimate issue to be decided by the trier of fact.’” Id. at *10 (quoting Fed. R. Evid. 704(a)). However, the Ninth Circuit has held that “an expert witness cannot give an opinion as to her legal conclusion, i.e., an opinion on an ultimate issue of law.” Hangarter v. Provident Life & Accident Ins. Co., 373 F.3d 998, 1016 (9th Cir. 2004) (quoting Mukhtar v. Cal. State Univ., Hayward, 299 F.3d 1053, 1066 n.10 (9th Cir. 2002)). Thus, an expert may testify on an ultimate issue but may not offer an opinion on an ultimate issue of law. The court found the testimony admissible because it rested on design-level observations: inconsistent solid-line conventions in the figures, an undefined "knob" in Figure 6 (the top view), and how an ordinary designer would read the figures. Deckers at *11. The expert also explained the test he applied and acknowledged that he is not a lawyer.

As we discussed in our first post, the ‘161 Patent's drawings were replaced and then corrected during prosecution. Even so, the validity dispute at trial still turned on how an ordinary designer would read individual solid lines and a small, undefined feature in a single figure.

Procedure Mattered
Several of Deckers' arguments also ran into procedural problems. At the pretrial conference, the court found that Deckers had waived its argument that the judge must decide indefiniteness, because Deckers did not list invalidity as an issue for the court in the joint proposed pretrial order. Deckers never objected to the "voluminous, cumulative" prior art in its motion in limine (a pretrial request to exclude evidence). The court had also already held that Deckers waived its day-of exhibit objections when its counsel responded to the court's reminder three hours after the deadline. Finally, Deckers did not explain how the roughly twenty references presented across six grounds actually prejudiced it.

The Antitrust Update: Noerr-Pennington Holds, For Now
In Last Brand, Inc. v. Deckers Outdoor Corp., 2026 U.S. Dist. LEXIS 194105, at *8 (N.D. Cal. Aug. 27, 2026), the court granted Deckers' motion to dismiss on the ground that Deckers' litigation activity is petitioning protected by the First Amendment and immunized by the Noerr-Pennington doctrine. The Noerr-Pennington doctrine generally shields parties from antitrust liability for petitioning activity, including litigation, unless the litigation is a "sham." A sham may exist where a suit is objectively baseless and brought for an unlawful motive. It may also exist where a series of suits is filed without regard to the merits and for an unlawful purpose.

The court found that Quince had not adequately pleaded the exception. An "overarching problem" was that the complaint did not identify which of the many lawsuits and pleadings it cited formed the "series." Id. at *16. The court asked, for example:

- whether the series included only suits filed after the October 2, 2025 summary judgment order;

- whether cases involving slippers and other designs counted;

- whether Deckers v. Quince itself was part of it. Id. at *16-17.

The court also criticized the complaint's "vague and adjective-laden language." Id. at *17. It granted leave to amend and did not reach antitrust injury, standing, or the elements of attempted monopolization.

Quince took that opportunity. On September 17, 2026, it filed a First Amended Complaint alleging that, from 2014 to 2026, Deckers filed 176 unregistered product-design trade dress lawsuits against Quince, Romeo & Juliette, and approximately 400 other defendants without regard to the merits, and that most defendants settle, default, or withdraw their products rather than pay to defend.

Beyond Quince: The Romeo & Juliette Appeal
Quince's case is not the only Deckers dispute before the Federal Circuit. In Deckers Outdoor Corp. v. Romeo and Juliette, Inc., No. 26-1682, Deckers is appealing a summary judgment that its boot trade dresses, asserted there alongside the 161 Patent, are generic (too common to identify a single source).

Quince's amicus brief supports Romeo & Juliette. It cites two USPTO refusals to register a taller version of the Classic Ultra Mini trade dress, based on screenshots of "over forty brands of boots," which Deckers abandoned, as well as the jury's invalidation of the 161 Patent. Deckers opposed judicial notice of the USPTO materials (accepting them as established without further proof), noting they were not presented to the district court in that case. On October 23, 2026, the court accepted the brief and exhibits for filing and left their relevance to the merits panel. Deckers' reply brief maintains that genericness cannot be divorced from secondary meaning (consumers' association of a design with a single source).

The same boot design is now being litigated on patent, trade dress, and antitrust fronts, and positions taken in one forum are surfacing in the others.

Practical Takeaways
Whether you own design patents or compete with companies that do, the post-trial rulings offer several practical lessons:

1. Closely review drawing line conventions before filing and before asserting. The expert's testimony rested on inconsistent solid-line conventions and an undefined "knob" in Figure 6. Before filing, you should confirm that solid lines for seams, edges, and surface contours are drawn consistently across every view, and that each depicted feature can be identified from the figures alone. Overcoming drawing objections during prosecution does not foreclose an indefiniteness attack in litigation.
2. Raise indefiniteness early and preserve it. Deckers' argument that the judge should decide indefiniteness was waived, in part, because invalidity was not listed as an issue for the court in the joint proposed pretrial order, and the court had twice ruled before trial that the issue was for the jury. A patent owner who wants the court to decide definiteness should request that ruling at claim construction or summary judgment, object on the record if the issue is sent to the jury, and confirm that the pretrial order reflects its position.
3. Think carefully about the verdict form. Because the jury answered a single, general invalidity question, the court presumed the jury made every factual finding needed to support the verdict, which defeated Deckers' harmless-error challenge. Separate questions for each invalidity theory (for example, indefiniteness, lack of enablement, and prior-art invalidity) show which theory the jury accepted and give the losing party a more developed record for post-trial motions and appeal.
4. A new-trial motion is not a do-over. A new-trial motion cannot revive objections that were never properly made. Deckers' prior-art argument failed because it was not raised in a motion in limine and because counsel responded to the court's exhibit-objection reminder three hours after the deadline. It is critical raise evidentiary objections at the requisite time, such as in motions in limine, and be prepared to specifically explain how the challenged evidence caused prejudice.
5. Anchor expert opinions in the figures. The court admitted testimony that the ‘161 Patent was "indefinite and not enabling" because it rested on specific drawing features and the ordinary designer's perspective, and because the expert explained the test he applied and acknowledged that he is not a lawyer. Experts on either side should walk the jury through the figures and tie each opinion to what an ordinary designer would see, rather than offering bare legal conclusions.
6. Sham-litigation claims require specificity. The antitrust dismissal turned largely on Quince's failure to identify which lawsuits made up the alleged "series." An accused infringer pursuing an antitrust theory should define the series with specificity (e.g., which suits, filed when, and involving which designs), identify the sham framework it relies on, and plead facts rather than adjectives. For brand owners, the flip side is that a high-volume enforcement program may itself be scrutinized, so each suit should rest on a documented, merits-based assessment.

Conclusion
The post-trial rulings leave the jury's verdict intact: the ‘161 Patent was found infringed but invalid, and the court declined to disturb that result. Deckers' appeal may give the Federal Circuit an opportunity to address whether, and how, design-patent indefiniteness can be submitted to a jury. Meanwhile, Quince's antitrust theory is now pleaded in an amended complaint, and the Romeo & Juliette appeal may decide whether the Classic Ultra Mini design can be protected as trade dress at all. For design-driven companies, the message echoes our earlier posts: a design patent's strength is set at the drawing board.