DCT

1:23-cv-12666

Nike Inc v. New Balance Athletics Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-12666, D. Mass., 11/06/2023
  • Venue Allegations: Plaintiff alleges venue is proper in the District of Massachusetts because Defendant is headquartered there, maintains a regular and established place of business in the District, and has committed the alleged acts of infringement in the District.
  • Core Dispute: Plaintiff alleges that Defendant’s knit footwear products infringe nine U.S. patents related to its "Flyknit" shoe upper design and manufacturing technology.
  • Technical Context: The dispute centers on patented methods for knitting footwear uppers as a single component to reduce waste and enhance performance, a technology that has become a significant feature in the competitive athletic footwear market.
  • Key Procedural History: Plaintiff notes it has previously enforced its Flyknit patents against competitors including Puma, Adidas, and Lululemon. The complaint also states that Plaintiff sent letters with infringement allegations to Defendant on January 31, 2023, March 3, 2023, and September 1, 2023, establishing a record of pre-suit notice.

Case Timeline

Date Event
2004-03-03 Priority Date for ’749 Patent
2012-09-18 ’749 Patent Issued
2012-11-15 Priority Date for ’932 Patent
2013-02-28 Priority Date for ’562 and '636 Patents
2014-05-09 Priority Date for '484 Patent
2014-12-02 ’932 Patent Issued
2015-06-23 ’562 Patent Issued
2016-04-29 Priority Date for '350, '511, '758 Patents
2016-12-06 ’636 Patent Issued
2017-08-15 ’484 Patent Issued
2018-03-06 ’350 Patent Issued
2018-03-20 ’511 Patent Issued
2018-03-27 ’758 Patent Issued
2020-06-22 Priority Date for '105 Patent
2023-01-31 Nike sends first infringement notice letter to New Balance
2023-03-03 Nike sends second infringement notice letter to New Balance
2023-07-25 ’105 Patent Issued
2023-09-01 Nike sends third infringement notice letter to New Balance
2023-11-06 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,266,749 - "Article Of Footwear Having A Textile Upper"

The Invention Explained

  • Problem Addressed: The patent addresses the inefficiency and waste associated with traditional footwear upper manufacturing, which involves cutting shapes from multiple different material sheets and stitching them together (U.S. Patent No. 8,266,749, col. 3:4-14). This process requires coordinating multiple suppliers and generates significant scrap material (’749 Patent, col. 3:15-19).
  • The Patented Solution: The invention is a method where a desired "textile element" (e.g., a shoe upper) is knitted simultaneously with a surrounding textile structure, from which it is later removed (’749 Patent, Abstract). This process allows for the creation of a single, unitary textile element with varied textures and properties, reducing waste by knitting the component to its net shape (’749 Patent, col. 8:5-12).
  • Technical Importance: This "knit-to-shape" manufacturing method represented a shift from traditional "cut-and-sew" techniques, enabling the creation of lightweight, form-fitting uppers with fewer seams and substantially less manufacturing waste (’749 Patent, col. 3:4-24).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶24).
  • Claim 1 breaks down into the following essential method steps:
    • Simultaneously knitting a textile element with a surrounding textile structure, where the element has at least one knitted texture that differs from the surrounding structure's texture.
    • Removing the knitted textile element from the surrounding structure.
    • Incorporating the removed textile element into an article of footwear.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 8,898,932 - "Article Of Footwear Incorporating A Knitted Component"

The Invention Explained

  • Problem Addressed: Conventional footwear uppers are often constructed from multiple material elements to provide different properties (e.g., stretch, support, breathability) in different areas. This assembly process can be complex and result in an upper with numerous seams (U.S. Patent No. 8,898,932, col. 1:25-40).
  • The Patented Solution: The patent describes an article of footwear with an upper made from a single ("unitary") knitted component comprising two distinct regions: a "foot part" and an "ankle part" (’932 Patent, Abstract). A reinforcing "skin layer" is thermally bonded to the foot part to add structure and durability, but this layer is specifically "absent from the ankle part," allowing the ankle region to retain greater stretch and flexibility for comfort and fit (’932 Patent, col. 4:40-49, col. 7:1-6).
  • Technical Importance: This solution allows for the creation of a zoned upper from a single knitted piece, providing targeted support in high-wear areas (foot part) while ensuring flexibility and comfort around the ankle, a critical area for fit and movement (’932 Patent, col. 15:4-10).

Key Claims at a Glance

  • The complaint asserts independent claim 11 (Compl. ¶33).
  • Claim 11 breaks down into the following essential elements of an article of footwear:
    • An upper and a sole structure secured to it.
    • The upper comprises a knitted component with a foot part and an ankle part, both formed of "unitary knit construction."
    • A skin layer is thermally bonded to the knitted component.
    • This skin layer covers at least a portion of the foot part but is absent from the ankle part.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

Multi-Patent Capsules

  • *U.S. Patent No. 9,060,562, "Method Of Knitting A Knitted Component With An Integral Knit Tongue", issued June 23, 2015 (’562 Patent)*
    • Technology Synopsis: This patent claims a method of manufacturing a shoe upper where the tongue is knitted as an integral, unitary part of the upper itself, rather than being a separate component that is stitched in. The method specifies how the integral tongue is joined by knitting to the forward and side portions of the shoe's throat area (Compl. ¶¶ 39-40).
    • Asserted Claims: Independent claim 1 is asserted (Compl. ¶41).
    • Accused Features: The manufacturing process of the "FuelCell SuperComp Elite v3" product is accused of infringing by allegedly knitting an integral tongue as part of the upper (Compl. ¶41).
  • *U.S. Patent No. 9,510,636, "Article Of Footwear Incorporating A Knitted Component With An Integral Knit Tongue", issued December 6, 2016 (’636 Patent)*
    • Technology Synopsis: This patent claims an article of footwear, rather than a method, that results from a process similar to that in the ’562 Patent. It describes a shoe upper with an integral knit tongue that is joined to the throat area and includes "at least one raised element extending a height above the exterior surface" (Compl. ¶¶ 48-49).
    • Asserted Claims: Independent claim 1 is asserted (Compl. ¶50).
    • Accused Features: The "FuelCell SuperComp Elite v3" product is accused of infringing by allegedly incorporating a knitted component with an integral tongue that has at least one raised element (Compl. ¶50).
  • *U.S. Patent No. 9,730,484, "Article Of Footwear Having A Flat Knit Upper Construction Or Other Upper Construction", issued August 15, 2017 (’484 Patent)*
    • Technology Synopsis: This patent claims an article of footwear with an upper made from a flat-knitted element. The key feature is a "central portion having a domed, three-dimensional structure" that extends over the top of the foot, which is shaped to extend above the plane of the side portions when the element is laid flat (Compl. ¶¶ 56-57). This describes creating 3D shaping directly from a flat-knitting process.
    • Asserted Claims: Independent claim 1 is asserted (Compl. ¶58).
    • Accused Features: A wide range of New Balance products, including various "Fresh Foam X" and "FuelCell" models, are accused of infringing by allegedly including a flat-knitted element with a domed, three-dimensional central portion (Compl. ¶58).
  • *U.S. Patent No. 9,907,350, "Article Of Footwear Having A Textile Upper", issued March 6, 2018 (’350 Patent)*
    • Technology Synopsis: This patent claims a shoe upper constructed from a "flat knit textile element having...flat knit edges free of surrounding textile structure," meaning it is knit to shape rather than cut. The claim requires a combination of features: apertures in the forefoot, a non-textile element in the heel, and one or more strips of non-textile material on the lateral side (Compl. ¶¶ 64-65).
    • Asserted Claims: Independent claim 1 is asserted (Compl. ¶66).
    • Accused Features: Certain "Fresh Foam X" models and the "FuelCell SuperComp Elite v3" are accused of infringing by allegedly having this specific combination of a flat knit element with various non-textile additions (Compl. ¶66).
  • *U.S. Patent No. 9,918,511, "Article Of Footwear Having A Textile Upper", issued March 20, 2018 (’511 Patent)*
    • Technology Synopsis: This patent claims a shoe upper made from a flat knit textile element with free edges, one of which is curved. The core of the claim is the presence of a "first knit strip having a first property and a second knit strip having a second property that is different from the first," with these strips positioned adjacent to each other on the side of the upper (Compl. ¶¶ 72-73). This allows for zoned properties (e.g., stretch vs. support) within the knit structure itself.
    • Asserted Claims: Independent claim 1 is asserted (Compl. ¶74).
    • Accused Features: Numerous "Fresh Foam X," "FuelCell," and "Tekela" models are accused of infringing by allegedly using a flat knit element with adjacent strips having different properties (Compl. ¶74).
  • *U.S. Patent No. 9,924,758, "Article Of Footwear Having A Textile Upper", issued March 27, 2018 (’758 Patent)*
    • Technology Synopsis: This patent claims a shoe upper with a knit textile element having free edges. It requires that the "knit columns" have a knitting direction parallel to the longitudinal axis of the shoe, and also requires a non-textile element on the heel and a plurality of parallel, spaced-apart non-textile strips on the lateral side (Compl. ¶¶ 80-81).
    • Asserted Claims: Independent claim 1 is asserted (Compl. ¶82).
    • Accused Features: Certain "Fresh Foam X," "Tekela," "Furon," and "FuelCell" models are accused of infringing by allegedly having this combination of a knit element with a specific knit direction and non-textile elements (Compl. ¶82).
  • *U.S. Patent No. 11,707,105, "Article Of Footwear Incorporating A Knitted Component With An Integral Knit Ankle Cuff", issued July 25, 2023 (’105 Patent)*
    • Technology Synopsis: This patent claims a specific "soccer shoe" with a knitted upper where the instep area is joined to the sides via knitting. The claim details a lacing system with two sets of apertures ("outer" and "inner") and a specific path the lace must take: through an inner aperture, under the knitted component, out through an outer aperture, across the instep, and repeating on the other side (Compl. ¶¶ 88-89).
    • Asserted Claims: Independent claim 15 is asserted (Compl. ¶90).
    • Accused Features: The "Tekela v4 Pro Low FG" soccer shoe is accused of infringing by allegedly having the claimed knitted upper and specific dual-aperture lacing system (Compl. ¶90).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies a broad range of New Balance footwear as the "Infringing Products," including models from the "Fresh Foam X," "FuelCell," "Furon," "Tekela," and "XC Seven" product lines (Compl. ¶17).

Functionality and Market Context

  • The accused products are athletic and lifestyle footwear featuring knitted uppers (Compl. ¶17). The complaint provides numerous photographs of the accused products, such as the "Fresh Foam X 1080 v12" running shoe and the "Tekela v4 Magia FG" soccer cleat, illustrating the use of knit textiles across different footwear categories (Compl. p. 5). The complaint alleges that New Balance has "escalated the scope of its infringing activities" and is continuing to "introduce new and additional knit footwear styles" despite notice from Nike, suggesting the commercial importance of this technology to Defendant's product strategy (Compl. ¶¶ 4, 16).

IV. Analysis of Infringement Allegations

’749 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A method of manufacturing an article of footwear, the method comprising: simultaneously knitting a textile element with a surrounding textile structure, the knitted textile element having at least one knitted texture that differs from a knitted texture in the surrounding knitted textile structure; The complaint alleges, on information and belief, that New Balance manufactures (or has manufactured for it) the '749 Infringing Products using a process that involves simultaneously knitting a shoe upper component (the "textile element") within a larger knitted textile structure, where the upper component has a different knit texture than its surroundings. ¶24 col. 4:52-59
removing the knitted textile element from the surrounding knitted textile structure; The complaint alleges that the process used by or for New Balance includes removing the knitted shoe upper component from the surrounding textile material it was knitted with. ¶24 col. 4:60-61
incorporating the knitted textile element into the article of footwear. The complaint alleges that the removed shoe upper component is then incorporated into a New Balance shoe. The complaint further alleges that the finished shoes are imported into the U.S. and are not materially changed after importation, triggering infringement under 35 U.S.C. § 271(g). The complaint provides an image of a "FuelCell SuperComp Trainer," one of the products accused of being made by this process (Compl. p. 5). ¶¶24, 25 col. 4:62-64
  • Identified Points of Contention:
    • Evidentiary Questions: A central question will be factual and evidentiary: does the manufacturing process actually used for the accused products, which likely occurs outside the U.S., practice the "simultaneously knitting" and "removing" steps as claimed? Discovery into Defendant's supply chain and manufacturing techniques will be central.
    • Scope Questions: The analysis may turn on the definition of "simultaneously knitting." For example, questions could arise if the "textile element" and the "surrounding textile structure" are knitted in distinct but rapidly successive operations on the same machine, which may raise the question of whether such a process meets the "simultaneously" limitation.

’932 Patent Infringement Allegations

Claim Element (from Independent Claim 11) Alleged Infringing Functionality Complaint Citation Patent Citation
An article of footwear having an upper and a sole structure secured to the upper, the upper comprising: a knitted component that includes (a) a foot part for covering at least a portion of a foot of a wearer and (b) an ankle part for covering at least a portion of an ankle of the wearer, the foot part and the ankle part being formed of unitary knit construction; and The complaint alleges that accused products like the "Tekela v4 Pro FG" soccer cleat have an upper made of a single knitted component that defines both a portion covering the foot and a portion covering the ankle as a single piece (Compl. p. 6). ¶33 col. 4:40-49
a skin layer that is thermally bonded to the knitted component, the skin layer covering at least a portion of the foot part of the knitted component and forming a portion of an exterior surface of the upper, the skin layer being absent from the ankle part of the knitted component. The complaint alleges, on information and belief, that the accused products include a skin layer that is thermally bonded to the knitted upper. This layer is alleged to cover the foot part of the upper to provide structure and support, while being absent from the ankle part, which allows the ankle collar area to remain more flexible. The complaint includes a photo of the "Tekela v3+ Pro FG," which visually suggests a different texture or material on the main body of the shoe compared to the flexible ankle collar (Compl. p. 6). ¶33 col. 6:65-col. 7:6
  • Identified Points of Contention:
    • Scope Questions: A primary issue for claim construction may be the term "unitary knit construction." The parties may dispute whether the accused uppers, which may have various components or post-knitting treatments, meet the definition of being formed as a single knitted piece as contemplated by the patent.
    • Technical Questions: A factual question will be whether the accused products' outer "skin layer" is "thermally bonded" as required by the claim, or if it is attached via other means (e.g., adhesives without thermal activation). Further, the scope of "absent from the ankle part" may be contested if trace amounts of the skin layer material are present in the ankle region.

V. Key Claim Terms for Construction

For the ’749 Patent

  • The Term: "simultaneously knitting"
  • Context and Importance: This term is the crux of the asserted method claim. Its definition will determine whether a process that knits the element and the surrounding structure in closely sequenced steps, rather than in the exact same machine cycle, falls within the scope of the claim. Practitioners may focus on this term because manufacturing processes can involve rapid, automated, but technically sequential steps.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification does not appear to limit the term to a single machine pass. It describes forming an "outline" of the element with different stitches, which could suggest a process that occurs over multiple courses on the same machine during a single, continuous knitting session (’749 Patent, col. 7:42-49).
    • Evidence for a Narrower Interpretation: The term "simultaneously" itself suggests actions occurring at the exact same time. The patent’s description of forming the element within a larger textile structure could be argued to require that yarns for both are being manipulated in the same machine cycles (’749 Patent, FIG. 9).

For the ’932 Patent

  • The Term: "unitary knit construction"
  • Context and Importance: This is a frequently litigated term in knit footwear patents. Its construction is critical because it defines the core concept of the invention: an upper formed as a single knitted piece. The infringement analysis will depend on whether New Balance’s uppers, which may undergo various finishing or assembly steps, qualify as being of "unitary knit construction."
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent states that the term means "formed as a one-piece element through a knitting process" and that this process "substantially forms the various features and structures... without the need for significant additional manufacturing steps" (’932 Patent, col. 8:39-44). This language may support an interpretation that allows for some minor post-knitting additions or modifications.
    • Evidence for a Narrower Interpretation: The patent contrasts its invention with conventional uppers made from "multiple material elements... that are joined through stitching or bonding" (’932 Patent, col. 6:41-45). This could support an argument that any significant post-knitting joining of textile components would take a product outside the scope of "unitary knit construction."

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement for all asserted patents. The basis for inducement is that New Balance allegedly "encourages and induces" its third-party manufacturers to make or import the infringing products and also encourages its "Authorized New Balance Dealers," wholesalers, and distributors to sell or import them (Compl. ¶¶ 26, 34, 43, 51, 59, 67, 75, 83, 91).
  • Willful Infringement: The complaint requests a finding that infringement "is and has been willful" (Compl. p. 28, ¶D). The factual basis for pre-suit knowledge is explicitly stated: Nike sent three letters to New Balance on January 31, March 3, and September 1, 2023, notifying New Balance of its infringement claims before the lawsuit was filed (Compl. ¶¶ 13-15). Continued sales after these notices form the basis for the willfulness allegation.

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of process verification: For the method patents (’749 and ’562), can Nike produce evidence, likely through extensive discovery of overseas manufacturing, that the specific steps used to create the accused New Balance products map onto the claimed methods, particularly the "simultaneously knitting" limitation of the ’749 patent?
  • A second central issue will be one of definitional scope: How will the court construe the term "unitary knit construction," which appears in claims for multiple asserted patents? The viability of infringement claims for the product patents (e.g., ’932, ’636, ’484) will heavily depend on whether the accused products, potentially including multiple assembled components, fall within the scope of this critical term.
  • A third key question will be one of elemental presence: For patents with claims requiring a specific combination of elements (e.g., the non-textile strips of the ’350 and ’758 patents or the unique lacing path of the ’105 patent), the case will turn on a straightforward but technical comparison: do the accused products, as sold, contain every element recited in the asserted claims?