adidas AG v. Nike Inc

1. Case Identification

• Case #: IPR2016-00922
• 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 with a textile upper. The patent teaches that the upper incorporates a textile element that can be formed by a knitting machine as part of a larger textile structure and then removed for incorporation into the footwear.

3. Grounds for Unpatentability

Ground 1: Obviousness over Reed and Nishida - 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 argued that Reed, which was not considered during prosecution, teaches the core method of the challenged claims: using a circular knitting machine to simultaneously knit one or more textile elements (garments) within a surrounding textile structure, which are then removed. The independent claims require this method be applied to an "article of footwear." Petitioner asserted that Nishida, which was considered by the examiner for anticipation, explicitly teaches forming shoe upper layouts in a web of material and then cutting them out for assembly. The combination of Reed’s general method with Nishida’s specific application to footwear was alleged to render the claims obvious. For dependent claims, Petitioner mapped features like knitting multiple elements (claim 2) and varying textures (claim 8) to disclosures in both Reed and Nishida.
  • Motivation to Combine: Petitioner contended a person of ordinary skill in the art (POSITA) would combine these references. Reed’s disclosure broadly states its method may be used for "all types of garments," which a POSITA would understand includes footwear. Nishida’s process for manufacturing shoe uppers is analogous art. As both references are directed at reducing manufacturing costs and material waste through advanced knitting technology, a POSITA would have been motivated to apply Reed’s efficient knitting process to the specific field of footwear taught by Nishida.
  • Expectation of Success: Petitioner argued success would be expected because the combination involved applying a known technique (Reed's simultaneous knitting) to a known application (Nishida's footwear uppers) to achieve predictable results, namely a more efficient way to produce knitted footwear components.

Ground 2: Obviousness over Castello, Fujiwara, and Nishida - Claims 1-9, 11-19, and 21 are obvious over Castello and Fujiwara in view of 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 that Castello and Fujiwara, neither of which were cited during prosecution, teach methods of manufacturing textile elements (e.g., collars, sweater components) by simultaneously knitting them within a larger tubular fabric using circular knitting machines. Castello teaches knitting elements with multiple textures and features, while Fujiwara teaches advanced computerized control for knitting complex, integrated garment outlines. Petitioner asserted these references collectively teach the knitting method claimed. Nishida again provided the specific context of applying such methods to produce shoe uppers.
  • Motivation to Combine: The primary motivation asserted was to solve a common problem: the expensive and time-consuming production of textile components. A POSITA would combine Castello's method of producing complex elements with Fujiwara’s more advanced computerized techniques to further improve efficiency and design options. This improved general process would then be applied to the analogous art of footwear, as taught by Nishida, to achieve the same cost and time-saving benefits in that field. All three references share the goal of using the latest knitting technology to reduce costs.
  • Expectation of Success: Petitioner contended a POSITA would have had a high expectation of success, as this combination merely involved integrating known, compatible knitting technologies and applying them to a well-known end-product to achieve the predictable benefit of manufacturing efficiency.

4. Key Claim Construction Positions

• "a first area and a second area with a unitary construction" (claims 11, 21): Petitioner requested the Board adopt the construction from a prior inter partes review (IPR) involving a related patent: "a textile element having a unitary construction and having a first area and a second area." This construction supports the argument that prior art teaching a single textile element with varied textures meets the limitation.
• "wide-tube circular knitting machine" (claims 9, 19): 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 an international standard (ISO 8117) and was used to argue that the machines disclosed in the prior art, such as in Reed and Castello, would be understood by a POSITA to be "wide-tube" machines, thereby meeting the claim limitation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate. Although the examiner considered Nishida during prosecution, it was only in the context of anticipation. Petitioner asserted that its petition raised new issues because it presented prior art references (Reed, Castello, Fujiwara) and obviousness combinations that were never before the examiner. The core of the petition rested on these new combinations and arguments, which Petitioner contended the Board should consider on the merits.

6. Relief Requested

• Petitioner requested the institution of an IPR and the cancellation of claims 1-9, 11-19, and 21 of the ’749 patent as unpatentable.