adidas AG v. Nike Inc

1. Case Identification

• Case #: IPR2016-00920
• Patent #: 8,042,288
• Filed: April 19, 2016
• Petitioner(s): adidas AG
• Patent Owner(s): Nike, Inc.
• Challenged Claims: 1-38

2. Patent Overview

• Title: Article Of Footwear Having A Textile Upper
• Brief Description: The ’288 patent relates to an article of footwear having an upper that incorporates a textile element. The patent discloses forming this textile element, which may have varying knit constructions, using a knitting machine.

3. Grounds for Unpatentability

Ground 1: Claims 1-38 are obvious over Nishida, Reed, Shiomura, and Shepherd.

• Prior Art Relied Upon: Nishida (Patent 5,345,638), Reed (Patent 3,985,003), Shiomura (Patent 4,785,558), and Shepherd (Patent 6,779,369).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Nishida taught the foundational invention: an article of footwear with an upper incorporating a knitted textile element that is cut from a larger web of material. Nishida disclosed producing shoe parts with different properties (e.g., elasticity, permeability) by modifying the weave or knit type. Reed taught a method of producing textile garments on a computer-controlled circular knitting machine, where elements are formed unitarily within a surrounding textile structure before being removed. Petitioner asserted that combining Nishida's footwear concept with Reed's advanced, cost-effective knitting process rendered the basic invention of claim 1 obvious.
  • Motivation to Combine: A POSITA would combine Nishida and Reed because Nishida expressly suggested its process could be performed with any "conventional textile process," including "program-controlled, particularly computer-controlled, production devices" to vary style and design. Reed disclosed such a device. Both references were directed at reducing production costs and waste, providing a strong motivation to use Reed's efficient, programmable knitting method to produce the footwear uppers described by Nishida. A POSITA would further incorporate the teachings of Shiomura (multi-layer knit fabric for athletic shoes) and Shepherd (multi-layered spacer fabric made on a circular knitting machine) to achieve the performance characteristics desirable for athletic footwear, such as elasticity and air permeability.
  • Expectation of Success: Success was expected because the combination involved applying a known, advanced manufacturing technique (Reed's circular knitting) to a known product (Nishida's footwear) to achieve predictable improvements in efficiency and design variability. The further addition of known athletic textile structures from Shiomura and Shepherd would predictably result in an upper with enhanced performance characteristics.

Ground 2: Claims 1-38 are obvious over Nishida, Castello, Fujiwara, Shiomura, and Shepherd.

• Prior Art Relied Upon: Nishida (Patent 5,345,638), Castello (Patent 4,038,840), Fujiwara (Patent 6,330,814), Shiomura (Patent 4,785,558), and Shepherd (Patent 6,779,369).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented an alternative combination that was substantively similar to Ground 1. Nishida again provided the foundational footwear concept. Castello and Fujiwara were substituted for Reed as teaching the use of programmable, circular knitting machines to simultaneously form textile elements (like collars or sweaters) within a larger textile structure. Both Castello and Fujiwara disclosed using different stitch configurations (e.g., plain stitch, rib stitch, jacquard) to form different parts of the garment, directly mapping onto the ’288 patent’s claims for a textile element with a plurality of knit constructions. The combination with Shiomura and Shepherd served the same purpose as in Ground 1: to teach multi-layered spacer fabrics suitable for athletic footwear.
  • Motivation to Combine: The motivation was analogous to Ground 1. A POSITA, guided by Nishida's suggestion to use computer-controlled knitting processes, would have been motivated to use the methods of Castello and Fujiwara to produce Nishida's shoe uppers. All three primary references (Nishida, Castello, Fujiwara) were directed at solving the same problem: reducing the cost, waste, and time-consuming sewing steps associated with traditional garment and footwear manufacturing. Combining these analogous, cost-saving knitting technologies with Nishida's footwear application was a predictable design choice.
  • Expectation of Success: A POSITA would have had a high expectation of success for the same reasons as in Ground 1. The combination involved applying known, programmable knitting techniques to a known product category to achieve the predictable result of a more efficiently manufactured footwear upper with varied textile properties.

4. Key Claim Construction Positions

• "a first area and a second area with a unitary construction" (claim 14): Petitioner argued this term should be construed consistent with a prior Board construction in a related case (IPR2013-00067) to mean "a textile element having a unitary construction and having a first area and a second area."
• "the knitted textile element having a first area with a first unitary construction and a second area with a second unitary construction different from the first..." (claim 36): Petitioner requested this term also adopt the prior Board construction from the related IPR, meaning "two textile element areas, each having a unitary construction, but which areas may possess different structures... resulting in different properties."
• "wide-tube circular knitting machine" (claim 30): Petitioner proposed this term be construed as "a circular knitting machine with a nominal diameter of 7 inches or larger," based on the ISO 8117 international standard from 2003, which was consistent with the patent's disclosure.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be improper. Although Nishida was before the Examiner, the primary additional references (Reed, Castello, Fujiwara) were not. Petitioner asserted it was presenting different arguments and new supporting evidence based on combinations that the Examiner never considered, thus raising new issues of patentability.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-38 of the ’288 patent as unpatentable.