PTAB

IPR2016-00921

adidas AG v. Nike Inc

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1. Case Identification

2. Patent Overview

  • Title: ARTICLE OF FOOTWEAR HAVING A TEXTILE UPPER
  • Brief Description: The ’598 patent relates to an article of footwear with a textile upper. The invention specifically teaches incorporating a textile element, which may be formed on a knitting machine, into the footwear upper.

3. Grounds for Unpatentability

Ground 1: Obviousness over Reed and Nishida - Claims 1-13 are obvious over Reed in view of Nishida.

  • Prior Art Relied Upon: Reed (Patent 3,985,003) and Nishida (Patent 5,345,638).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Reed taught a method for manufacturing wearable items by forming a cylindrical textile structure on a circular-knitting machine, removing textile elements from that structure, and incorporating them into garments. Reed’s disclosure broadly applied to “all types of garments worn by men, women and children,” and explicitly noted that footwear items like stockings were conventionally knit on such machines. Nishida taught a process for producing shoe-shaped parts using a web of material, cutting out layouts for a shoe upper, and stitching the parts to form the upper. Petitioner contended that Reed disclosed every limitation of the independent claims except for the specific application to footwear uppers, which was supplied by Nishida. Dependent claim limitations, such as using a wide-tube machine (claim 2), forming textures (claim 3), and creating multiple stitch configurations (claim 4), were also allegedly taught by Reed’s disclosure of producing multiple large garments on a computerized electronic knitting machine capable of complex patterns.
    • Motivation to Combine: Petitioner asserted that a person of ordinary skill in the art (POSITA), aware of Reed’s cost-saving knitting process for all types of garments, would combine its teachings with Nishida’s known method for creating textile shoe uppers. The motivation stemmed from the desire to achieve the predictable result of more efficiently manufacturing footwear components. Both references were presented as analogous art directed at reducing costs and improving manufacturing of textile elements through advanced, programmable knitting technology.
    • Expectation of Success: A POSITA would have had a high expectation of success, as the combination involved applying a known manufacturing process (Reed) to a known application (footwear uppers, per Nishida) to achieve predictable improvements in efficiency.

Ground 2: Obviousness over Castello, Fujiwara, and Nishida - Claims 1-13 are obvious over Castello in view of Fujiwara and Nishida.

  • Prior Art Relied Upon: Castello (Patent 4,038,840), Fujiwara (Patent 6,330,814), and Nishida (Patent 5,345,638).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued this combination also rendered the claims obvious. Castello taught using wide-tube circular knitting machines to produce a web containing complex textile elements (e.g., shirt collars) with features like knitted cutting guides and different stitch patterns. Fujiwara taught forming a circular knitted fabric with distinct inner and outer layers that are connected by a stitching construction to form the outline of a garment, which is then cut out. Nishida, as in Ground 1, provided the specific context of forming textile elements for shoe uppers. Together, Castello and Fujiwara allegedly disclosed the core method of knitting a textile structure with an outline of a component that is subsequently removed, and Nishida taught applying such a method to footwear.
    • Motivation to Combine: The primary motivation argued by Petitioner was to solve the common problem of expensive and time-consuming production of textile components. A POSITA would combine Castello’s methods for creating complex features on a circular knitter with Fujiwara’s technique for creating outlined, double-layered garments to increase the options for simultaneously knitting even more features into a single textile element. Nishida provided the express reason to apply this more advanced, combined knitting process to the manufacture of shoe uppers to achieve the same cost and time savings.
    • Expectation of Success: The combination was presented as a predictable integration of known, compatible knitting technologies to improve manufacturing efficiency. A POSITA would have reasonably expected that the advanced knitting features of Castello and Fujiwara could be successfully applied to produce shoe uppers as taught by Nishida.

4. Key Claim Construction Positions

  • “wide-tube circular knitting machine” (claims 2, 9): Petitioner proposed this term be construed as “a circular knitting machine with a nominal diameter of 7 inches or larger.” This construction was based on ISO 8117, an international knitting standard from 2003, which Petitioner argued was consistent with the ’598 patent’s own description of a machine with a 10- to 20-inch diameter.
  • “a first area and a second area with a unitary construction” (claims 4, 11): Petitioner requested the Board adopt its construction from a prior IPR on a related patent, which required “a textile element having a unitary construction and having a first area and a second area.”

5. Arguments Regarding Discretionary Denial

  • Petitioner preemptively argued against discretionary denial under 35 U.S.C. §325(d). While acknowledging that Nishida was before the examiner during prosecution, Petitioner contended that it was only considered for anticipation. The petition presented new prior art references not before the examiner (Reed, Castello, Fujiwara) and new obviousness arguments based on combinations of those references with Nishida. Petitioner argued these new references, rationales, and evidence raised substantive new questions of patentability that warranted institution.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-13 of the ’598 patent as unpatentable.