PTAB

IPR2016-00922

adidas AG v. NIKE, Inc.

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1. Case Identification

  • Case #: Unassigned
  • Patent #: 8,266,749
  • Filed: April 19, 2016
  • Petitioner(s): adidas AG
  • Patent Owner(s): Nike, Inc.
  • Challenged Claims: 1-9, 11-19, and 21

2. Patent Overview

  • Title: ARTICLE OF FOOTWEAR HAVING A TEXTILE UPPER
  • Brief Description: The ’749 patent discloses an article of footwear and methods of manufacturing it. The core technology involves an upper that incorporates a textile element formed with a knitting machine, where the textile element is simultaneously formed with a surrounding textile structure.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1-9, 11-19, and 21 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 asserted that Reed taught a method of manufacturing wearable items by using a circular knitting machine to simultaneously knit one or more textile elements within a surrounding textile structure. Reed further taught that these elements could have different textures and were designed to be removed and incorporated into a final garment. Petitioner argued that Nishida taught a process for producing shoe uppers by forming textile elements in a web of material, removing them, and incorporating them into an article of footwear. The combination of Reed’s general garment-knitting process with Nishida’s specific application to footwear allegedly rendered the challenged claims obvious. Specifically, Reed was argued to teach the core process of simultaneously knitting a distinct textile element within a surrounding structure, while Nishida supplied the context of applying such a process to footwear.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would have been motivated to apply Reed’s cost-saving, advanced knitting process for general garments to the specific application of footwear taught by Nishida. Both references were directed at reducing manufacturing costs and using modern knitting technology to create textile elements for wearable items. Petitioner argued that applying Reed's method to footwear was a predictable use of prior art elements according to their established functions.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because both Reed and Nishida taught analogous processes for manufacturing textile elements. Combining Reed's knitting method with Nishida's footwear application was presented as a straightforward combination of known techniques to achieve a predictable result.

Ground 2: Obviousness of Claims 1-9, 11-19, and 21 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 taught using wide-tube circular knitting machines to produce a web containing textile elements (e.g., collars for shirts) with complex stitch configurations, which were then removed and incorporated into finished garments. Castello disclosed knitting elements with multiple textures (e.g., rib stitch vs. jersey stitch) and guide lines for cutting. Fujiwara was argued to build on this by describing a double-layer circular knitting machine that connects inner and outer layers along a garment outline. Petitioner asserted that a POSITA would combine the advanced, multi-featured knitting techniques of Castello and Fujiwara with Nishida's disclosure of creating shoe uppers from a web of material.
    • Motivation to Combine: The primary motivation was to solve the common problem of expensive and time-consuming production of textile components. A POSITA would have been motivated to modify Castello's method by incorporating the computerized, double-layer knitting advances of Fujiwara to increase design options. This improved process would then be applied to produce shoe uppers, as taught by Nishida, to achieve the same cost and efficiency benefits in the footwear context.
    • Expectation of Success: Given that all three references were directed to solving similar problems in textile manufacturing, a POSITA would have expected success. The combination involved applying known, advanced knitting techniques (Castello, Fujiwara) to a known application (footwear uppers from Nishida) to predictably improve the manufacturing process.

4. Key Claim Construction Positions

  • “a first area and a second area with a unitary construction” (claims 11, 21): Petitioner argued this term should be construed consistent with a prior Board construction in a related inter partes review (IPR) (IPR2013-00067) involving a parent patent. The proposed construction was "to require a textile element having a unitary construction and having a first area and a second area."
  • “wide-tube circular knitting machine” (claims 9, 19): Petitioner proposed construing this term as “a circular knitting machine with a nominal diameter of 7 inches or larger.” This construction was based on the patent’s own examples (describing a Santoni machine with a 10-20 inch diameter) and its consistency with an international knitting standard (ISO 8117). This construction was central to the argument that the prior art machines disclosed in Reed and Castello met this limitation.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise its discretion to deny institution under §325(d), which addresses issues previously presented to the Office. Although the examiner considered Nishida during prosecution, it was only in the context of anticipation. Petitioner contended that it was presenting new prior art (Reed, Castello, Fujiwara) and new invalidity theories based on obviousness combinations that were never before the examiner. Therefore, the petition raised new issues that would allow the Petitioner to likely prevail, warranting institution of the IPR.

6. Relief Requested

  • Petitioner requested that the Board institute an IPR and issue a final written decision canceling claims 1-9, 11-19, and 21 of the ’749 patent as unpatentable.