PTAB

IPR2017-00246

Nike Inc v. Jezign Licensing LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Illuminated Shoe
  • Brief Description: The ’590 patent discloses a shoe with lighting elements designed to substantially uniformly illuminate the shoe's sole. The lighting is activated and deactivated by a manual push-button switch, providing continuous illumination independent of the wearer's movement.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-2 by Shkalim

  • Prior Art Relied Upon: Shkalim (European Patent Application Publication No. 0534560 A1).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Shkalim, which was not considered during prosecution, discloses every limitation of claims 1 and 2. Shkalim teaches a lighted athletic shoe comprising an upper and a sole with a transparent perimeter housing containing a light source. This light source, comprised of a plurality of mini-bulbs, is powered by a battery and toggled by a push-button on-off switch, providing continuous illumination along substantially the entire sole. This configuration meets the limitations of claim 1 for a shoe with an illuminated translucent perimeter sole and a push-button switch for continuous activation. Shkalim’s disclosure of multiple contiguous mini-bulbs forming a uniform pattern was argued to anticipate the limitations of dependent claim 2.

Ground 2: Obviousness of Claim 3 over Shkalim in View of Powell

  • Prior Art Relied Upon: Shkalim (European Patent Application Publication No. 0534560 A1) and Powell (Patent 4,130,951).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that claim 3 builds on claim 1 by adding the limitation that the sole has an opaque perimeter surface with translucent regions formed in the shape of alphanumeric characters arranged to spell a word. While Shkalim taught the base illuminated shoe with a push-button switch, it did not disclose this specific alphanumeric display feature. Powell, also not considered during prosecution, was alleged to supply this missing element. Powell discloses "disco dancing shoes" with an illuminated heel containing a translucent nameplate or label bearing the wearer's identification, formed by light-transmitting holes arranged to spell a name.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Powell’s illuminated personalization feature with Shkalim’s continuously lit athletic shoe for predictable reasons. The primary motivations were to enhance the aesthetic appeal of the shoe and to meet the well-established consumer demand for personalized apparel and footwear, a trend that was prominent in the late 1990s. The combination was presented as a simple substitution of one known element (a uniformly translucent sole) with another known element (a sole with translucent letter-shaped regions) to achieve a predictable result.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in making this combination, as it involved applying a known personalization technique (illuminated names from Powell) to a known product category (illuminated athletic shoes from Shkalim) without changing the fundamental operation of either.

  • Additional Grounds: Petitioner asserted additional anticipation and obviousness challenges that mirrored the logical structure of the grounds above. Claims 1-2 were also alleged to be anticipated by Chien (Patent 5,865,523) and, separately, by Chiaramonte (Patent 4,112,601), both of which were argued to disclose all elements of a push-button activated, continuously illuminated shoe sole. Correspondingly, claim 3 was alleged to be obvious over Chien in view of Powell and over Chiaramonte in view of Powell, using the same motivation-to-combine rationale of adding Powell's personalization feature to the base illuminated shoes disclosed by Chien and Chiaramonte.

4. Key Claim Construction Positions

  • "sole": Petitioner argued that the term "sole" should be construed to mean "the part of a shoe that sits below a wearer's foot." This construction was asserted as critical because embodiments in the ’590 patent show illumination features in the heel area. Petitioner contended that this construction is consistent with the patent's figures and description, ensuring that prior art disclosing features in the heel (such as Powell) is properly considered as being located in the "sole."

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-3 of the ’590 patent as unpatentable.