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ARTICLE · 08 FEBRUARY 2024

D. Mass. Patent Litigation Update: December 2023

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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This is part of a series of articles discussing recent orders of interest issued in patent cases by the United States District Court for the District of Massachusetts.

United StatesIntellectual Property
Laura Johnson
Laura Johnson
Michael Kudravetz
Michael Kudravetz
Matthew C. Berntsen
Matthew C. Berntsen
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In Deckers Outdoor Corp. v. Primark U.S. Corp., No. 1:23-cv-10233, Judge Burroughs denied Deckers' motion to strike or dismiss, as appropriate, Primark's remaining affirmative defenses and counterclaims.

In a case involving Deckers' design patents, trade dress, and trademarks for its UGG boots, Primark asserted numerous affirmative defenses challenging Deckers' asserted IP rights, challenging the merits of Deckers' claims, and asserting equitable defenses. Deckers sought to strike these affirmative defenses as "unrecognized," immaterial/redundant, or for failing to provide fair notice. The Court addressed each argument in turn. First, the Court expressly found that the supposedly-"unrecognized" defenses of failure to state a claim, and trade dress being invalid as utilitarian "have both been recognized as affirmative defenses by courts in this district." Second, the Court rejected the bid to find affirmative defenses challenging Deckers' prima facie case (e.g.,

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