Deckers Outdoor Corporation v. Last Brand, Inc. dba Quince

Background

Deckers sued Last Brand, Inc., doing business as Quince, alleging trade-dress infringement, unfair competition under the Lanham Act, federal patent infringement, and violations of California law. The remaining issue at trial was whether Quince’s Australian Shearling Mini Boot infringed Deckers’s U.S. Patent D927,161 and whether that patent was invalid.

The jury found that Quince infringed the patent but that the patent was invalid. Because invalidity completely defeats an infringement claim, the court entered final judgment for Quince despite the infringement finding. Deckers then moved under Federal Rule of Civil Procedure 59 for a new trial limited to patent validity, asking the court to rule that the patent was not invalid for indefiniteness or lack of enablement.

Indefiniteness and the Jury

Deckers argued that indefiniteness was a legal question for the court and that submitting it to the jury was error. The court disagreed. It explained that indefiniteness may be submitted to a jury when it involves factual questions. Here, the parties disputed what a skilled designer would understand from inconsistencies and other features in the patent drawings. The court had already ruled that the patent’s design was defined by its figures and that no further claim construction was required.

The court also held that any error would have been harmless. The factual issues underlying an indefiniteness determination had been tried to the jury through conflicting expert testimony, and Deckers did not argue that the evidence could not support the verdict. The court therefore denied the motion for a new trial based on the submission of indefiniteness to the jury.

Expert Testimony

Deckers argued that Quince’s expert improperly testified to legal conclusions by stating that the patent was indefinite and not enabling. The court concluded that the testimony was admissible under Federal Rule of Evidence 704 because it addressed factual matters relevant to whether an ordinary designer could understand or recreate the design from the drawings. The expert discussed features such as inconsistent line conventions and an undefined feature in one figure, explained the test he applied, and acknowledged that he was not a lawyer.

The court found no abuse of discretion in admitting the testimony and denied the motion for a new trial on that ground.

Prior-Art Evidence

Deckers argued that the volume of Quince’s prior-art references was cumulative and unfairly prejudicial. The court held that Deckers had waived this objection. Deckers had not raised the cumulative-evidence objection in its motion seeking to exclude prior art, and it had also waived objections made after the deadline under the court’s exhibit-exchange procedure.

The court further found that Deckers had not shown that the prior-art evidence affected its substantial rights or caused sufficient prejudice to warrant a new trial. It therefore denied the motion on this ground as well.

Disposition

Judge Araceli Martinez-Olgui denied Deckers’s motion for a new trial in its entirety.