PTAB

IPR2013-00067

adidas AG v. Nike Inc

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Petition
petition Intelligence

1. Case Identification

2. Patent Overview

  • Title: ARTICLE OF FOOTWEAR HAVING A TEXTILE UPPER
  • Brief Description: The ’011 patent relates to an article of footwear with a textile upper. The patent teaches that the upper incorporates a single textile element, formed by a knitting machine, which can have multiple knit constructions to create a lightweight, form-fitting, and comfortable shoe with varied properties in different areas.

3. Grounds for Unpatentability

Ground 1: Anticipation and Obviousness over Nishida

  • Prior Art Relied Upon: Nishida (Patent 5,345,638).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Nishida anticipates or renders obvious all limitations of the challenged claims. Nishida teaches a shoe upper made from a "web of material" produced by conventional textile processes, including knitting. Petitioner contended that Nishida’s disclosure of a textile divided into "different individual parts or areas, which differ from one another" by using different fibers, yarns, or colors meets the core claim limitation of "a single type of textile having a plurality of knit constructions." Nishida’s method of forming uppers from layouts on a larger web was also argued to teach the structural claim limitations.
    • Motivation to Combine (for §103): For the alternative obviousness ground, Petitioner argued that even if Nishida did not explicitly disclose every element, a person of ordinary skill in the art (POSITA) would have found it obvious to apply Nishida's teachings on creating different textile areas to a knitted shoe upper to achieve predictable variations in texture and performance.
    • Expectation of Success (for §103): A POSITA would have had a high expectation of success, as Nishida taught that conventional textile processes were suitable for creating shoe uppers with varied properties.

Ground 2: Obviousness over Osamu

  • Prior Art Relied Upon: Osamu (JP Pub. No. H6-113905).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Osamu teaches the key inventive concept of the ’011 patent. Osamu discloses a shoe upper where different locations have different weave structures to impart varied properties, such as forming a toe cap with a high-density weave and another area with a high-breathability weave. Petitioner argued that substituting a knitted textile for Osamu's woven textile was an obvious design choice, as knitting and weaving were well-known, interchangeable techniques for manufacturing shoe uppers.
    • Motivation to Combine (for §103): This ground is based on an obvious substitution rather than a combination. The motivation for a POSITA to substitute a knitted textile for Osamu's woven one was simply to use a well-known, suitable alternative to achieve the same functional goals of a lightweight, breathable, and efficiently manufactured shoe upper.
    • Expectation of Success (for §103): A POSITA would have reasonably expected success in making this substitution, as the properties of knitted textiles were well understood and their use in footwear was conventional.

Ground 3: Anticipation and Obviousness over Glidden

  • Prior Art Relied Upon: Glidden (Patent 2,147,197).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Glidden, a 1939 patent, teaches a unitary knitted footwear upper where different areas are fabricated with different properties. Glidden explicitly discloses that high-wear areas like the toe and heel may be "more densely fabricated" by "changing the type of stitch or amount [of] thickness of the yarn" to achieve "heavier weight and less extensibility." Conversely, other areas like the ankle are made with a "ribbed construction" for "softness and elasticity." Petitioner asserted this directly teaches a single textile element with different stitch configurations imparting varying properties, as required by claims 16-23.
    • Motivation to Combine (for §103): N/A for the anticipation ground. For the obviousness ground, a POSITA reading Glidden would have been directly motivated to apply its teachings to modern footwear for the stated benefits of comfort, durability, and economy of manufacture.
    • Expectation of Success (for §103): The success of the claimed technique was demonstrated by Glidden itself, which taught a complete and functional knitted upper.

  • Additional Grounds: Petitioner asserted numerous additional obviousness challenges combining primary references (Nishida, Osamu, Glidden) with secondary references teaching specific, well-known features such as multi-layered uppers (Curley, Shiomura) or specific weft-knitting techniques (McDonald, Whiting).

4. Key Claim Construction Positions

  • "A single type of textile": Petitioner argued this term’s broadest reasonable interpretation is a single, one-piece material element that may be formed from one or more yarns, consistent with the specification’s description of a “unitary” construction.
  • "Unitary construction": Petitioner contended this term means a one-piece construction where different portions of the textile element are integrally formed rather than being joined by seams or other connections, based on the patent’s explicit definition.
  • "Weft-knitted" / "Flat-knitted": Petitioner argued these terms should be given their conventional meanings as well-known knitting techniques. It was noted that the Examiner treated these as non-distinguishing product-by-process limitations during the original prosecution.

5. Key Technical Contentions (Beyond Claim Construction)

  • Conventionality of Varying Knit Properties: The petition's central technical assertion was that varying knit constructions (e.g., stitch type, density, yarn thickness) within a single textile element to achieve different functional properties (e.g., durability, elasticity, breathability) in different areas of a garment or shoe upper was a fundamental and well-known technique in the textile arts long before the ’011 patent’s priority date. Petitioner argued this principle rendered the claimed invention a predictable application of old technology rather than a patentable invention.

6. Relief Requested

  • Petitioner requests institution of inter partes review and cancellation of claims 1-46 of the ’011 patent as unpatentable.