PTAB

IPR2016-00921

adidas AG v. NIKE, Inc.

Log In

1. Case Identification

  • Case #: Unassigned
  • Patent #: 7,814,598
  • Filed: April 19, 2016
  • Petitioner(s): adidas AG
  • Patent Owner(s): Nike, Inc.
  • Challenged Claims: 1-13

2. Patent Overview

  • Title: ARTICLE OF FOOTWEAR HAVING A TEXTILE UPPER
  • Brief Description: The ’598 patent discloses an article of footwear with a textile upper. The invention focuses on methods of manufacturing the upper by forming a textile element using a knitting machine, removing the element from a larger textile structure, and incorporating it into the shoe 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 discloses a method of manufacturing wearable items by mechanically manipulating yarn with a circular-knitting machine to form a cylindrical textile structure, from which textile elements are removed and incorporated into garments. While Reed teaches this process for garments generally (including hosiery), Nishida specifically describes using textile processes and program-controlled devices to form textile elements in the shape of a shoe upper. Petitioner asserted that Reed teaches every limitation of independent claims 1 and 9, except for the specific application to footwear uppers, which is explicitly taught by Nishida.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references because Reed’s disclosure of forming “all types of garments” explicitly includes footwear items like stockings, suggesting the applicability of its process to footwear. Nishida provides the specific teachings for creating shoe uppers. Both references are directed at reducing manufacturing costs and improving efficiency. A POSITA would therefore have been motivated to apply Reed’s cost-effective, computer-controlled knitting process to produce the footwear uppers described in Nishida.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in this combination, as it involves applying a known manufacturing process (Reed) to a known application (Nishida's footwear uppers) to achieve a predictable result of an efficiently manufactured shoe upper.

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 contended that Castello and Fujiwara teach methods of manufacturing textile elements using circular-knitting machines with complex stitch configurations and programmable patterns to create features like knitted folding creases, sewing marks, and varied textures. Specifically, Castello describes knitting collar elements, and Fujiwara describes knitting sweater components with interknitted outlines directly into a tubular fabric. As in Ground 1, Nishida provides the direct link to footwear by teaching the creation of shoe uppers from a web of material. This combination of prior art allegedly discloses all challenged claim limitations.
    • Motivation to Combine: A POSITA would have been motivated to combine these references to solve the common problem of expensive and time-consuming textile component production. Petitioner argued a POSITA would modify Castello’s process for making collars to incorporate the more advanced computerized techniques from Fujiwara (e.g., independent needle selection) and apply this combined, efficient process to produce footwear uppers as taught by Nishida. The goal would be to leverage the most advanced and efficient knitting technologies to reduce the cost and complexity of manufacturing shoe components.
    • Expectation of Success: The combination involves the application of known, advanced knitting features (from Castello and Fujiwara) to a known article (Nishida's footwear uppers). A POSITA would have reasonably expected this combination to successfully produce complex, integrally-knitted footwear components with predictable results.

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 argued to be consistent with the ’598 patent’s disclosure of a Santoni machine with a 10-20 inch diameter and with ISO 8117, an international knitting standard from 2003 that categorizes machines with diameters of 178 mm (approx. 7 inches) or larger as wide-tube machines.
  • “a first area and a second area with a unitary construction” (claims 4, 11): Petitioner requested the Board adopt the construction from the IPR of the parent ’011 patent. That construction requires “a textile element having a unitary construction and having a first area and a second area.” Petitioner argued this was appropriate because the ’598 patent is a divisional and shares a common specification.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §325(d) would be inappropriate. Although the Examiner considered Nishida during prosecution of the ’598 patent, it was primarily in the context of an anticipation rejection under §102. The petition presented entirely new grounds of obviousness based on new combinations of prior art. The primary references in both grounds, Reed and Castello/Fujiwara, were not cited or considered by the Examiner. Petitioner contended that these new references, combinations, and arguments raise new issues that were not before the Examiner, warranting institution of the IPR. Petitioner also preemptively argued that any secondary considerations of non-obviousness raised by the Patent Owner would fail for a lack of nexus to the challenged claims, which recite removing a textile element from a larger structure, thereby generating cutting waste.

6. Relief Requested

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