adidas AG v. Nike Inc

1. Case Identification

• Case #: IPR2017-00264
• Patent #: 8,042,288
• Filed: November 14, 2016
• Petitioner(s): adidas AG
• Patent Owner(s): Nike, Inc.
• Challenged Claims: 1-7, 9-13, 21-38

2. Patent Overview

• Title: Article of Footwear Having a Textile Upper
• Brief Description: The ’288 patent relates to an article of footwear with a textile upper. The patent discloses that the upper incorporates a textile element that can be formed using a knitting machine to create a lightweight and comfortable product.

3. Grounds for Unpatentability

Ground 1: Obviousness over Reed and Nishida - Claims 1-7, 9-13, and 21-38 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 garments using a computerized circular knitting machine to form multi-layered textile elements unitarily within a larger knitted structure, which are then severed. Reed’s process allows for different knit constructions within the same element to create varied textures and properties (e.g., a decorative outer layer and a lining). Nishida taught an article of footwear with an upper formed from a knitted textile element having areas with different properties to improve characteristics like air permeability and softness, which is then attached to a sole structure. Petitioner asserted that the combination of Reed’s manufacturing process and Nishida’s specific footwear application disclosed all limitations of the independent claims, including an upper made of a circular-knitted textile element with multiple knit constructions that is removed from a parent structure and secured to a sole.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine Reed’s cost-saving, computerized knitting process with Nishida’s footwear application. Petitioner pointed to Reed's explicit statement that its invention could be used to form "all types of garments," which includes footwear like stockings, as providing a direct suggestion to apply its teachings to the footwear art. Furthermore, both references shared the goal of reducing manufacturing costs and waste by using advanced, programmable knitting technology, making the combination a predictable design choice to improve a known product.
  • Expectation of Success: A POSA would have had a high expectation of success in combining the references. The proposed combination involved applying a known textile manufacturing process (Reed) to a known end-product (Nishida's shoe upper) to achieve the predictable result of a cost-effective, variably-knit footwear upper.

Ground 2: Anticipation over Nishida - Claims 36-38 are anticipated by Nishida.

• Prior Art Relied Upon: Nishida (Patent 5,345,638).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Nishida, standing alone, disclosed every limitation of claims 36, 37, and 38. Independent claim 36 recites a knitted textile element but, unlike claim 1, does not require it to be "circular-knitted." Nishida expressly taught creating shoe uppers from a web of material produced by a conventional textile process, such as knitting, where different areas of the upper have different properties (e.g., elasticity, air permeability). Nishida further described that these shoe upper layouts are produced unitarily within the web of material, are subsequently cut out, have their edges joined to form seams (e.g., a heel seam and a longitudinal bottom seam), and are secured to a sole structure. Petitioner contended that this single reference mapped to all elements of claim 36 and its dependent claims, which add limitations regarding the properties of the different knit areas.

4. Key Claim Construction Positions

• "the knitted textile element having a first area with a first unitary construction and a second area with a second unitary construction different from the first unitary construction" (claim 36): Petitioner requested the Board adopt the construction from a related inter partes review (IPR) for the parent ’011 patent. The proposed construction was "two textile element areas, each having a unitary construction, but which areas may possess different structures, e.g., knit constructions or stitch configurations, resulting in different properties."
• "wide-tube circular knitting machine" (claim 30): 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 the patent’s own examples and its consistency with a 2003 international knitting standard (ISO 8117) that categorizes machines of that size as large or wide-tube.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate. The core argument was that the petition presented different arguments and new supporting evidence that were not before the Examiner during prosecution. Although Nishida was cited during prosecution of a related patent, the specific combination and invalidity theories presented in the petition were novel. Petitioner also asserted that a prior petition on the ’288 patent was denied for being insufficiently articulated, not on its substantive merits, and therefore the current petition was not an improper "second bite at the apple."

6. Relief Requested

• Petitioner requested institution of an IPR and cancellation of claims 1-7, 9-13, and 21-38 of the ’288 patent as unpatentable.