PTAB

IPR2019-01042

Puma North America Inc v. Nike Inc

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Article of Footwear With Base Plate Having Structure and Studs
  • Brief Description: The ’065 patent describes a cleated athletic shoe designed to optimize propulsion, stability, and responsiveness. The technology centers on a sole base plate with a specific arrangement of pads, studs, diagonal ribs, and midfoot bars intended to improve performance during athletic movements.

3. Grounds for Unpatentability

Ground 1: Obviousness over Anderton and Auger - Claims 1-6 are obvious over Anderton in view of Auger.

  • Prior Art Relied Upon: Anderton (Patent 5,461,801) and Auger (Application # 2009/0293315).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Anderton, which discloses a cleated athletic shoe, teaches the majority of the limitations in independent claim 1. Specifically, Anderton was asserted to disclose a base plate with forefoot, midfoot, and heel regions; various pads and studs (e.g., medial forefoot pad, lateral forefoot pad); a crisscross reinforcement structure comprising two intersecting diagonal arch ribs; and a lateral midfoot bar. Petitioner contended that the key missing element in Anderton is a medial midfoot bar. This element, Petitioner argued, is supplied by Auger, which discloses a cleated shoe with both medial and lateral midfoot ribs to provide traction, control foot motion (e.g., resist over-pronation), and impart stability. The dependent claims were argued to be obvious as they recite additional features also disclosed in Anderton, such as a heel rib connecting heel pads (claim 2), a second lateral heel pad (claim 3), and pads having a larger surface area than the stud bases (claim 5).
    • Motivation to Combine: Petitioner asserted two primary motivations for a Person of Ordinary Skill in the Art (POSITA) to combine the teachings. First, a POSITA would add the medial midfoot bar of Auger to the structure of Anderton to improve traction and stability by creating a more symmetrical reinforcement structure across the midfoot. Since Anderton’s reinforcement structures function to increase traction, adding another known traction element from Auger would be a predictable improvement. Second, a POSITA would incorporate Auger’s medial bar to enhance pronation control and stability in the Anderton shoe, a known problem-solving technique in the field of athletic footwear design.
    • Expectation of Success: The petition argued a POSITA would have a reasonable expectation of success because the combination involves applying a known reinforcement element (Auger's medial bar) to a similar article (Anderton's cleated shoe) to achieve predictable results. Both references operate in the same field and address common objectives of improving traction and stability, making their combination straightforward.
    • Key Aspects: A central argument addressed the "spaced from" limitations added to claim 1 during prosecution to overcome the same prior art. Petitioner contended these limitations—requiring intersection points of the lateral midfoot bar to be "spaced from" the cleat pads—were a matter of obvious design choice and not a patentable distinction, as a POSITA would understand that varying the location and spacing of integrally molded reinforcement structures is a common design parameter.

4. Key Claim Construction Positions

  • "Pad" / "Stud": Based on the specification and prosecution history, Petitioner proposed construing "pad" as the base portion of each cleat and "stud" as the top, ground-engaging portion of each cleat. This distinction was relevant to mapping Anderton’s cleat structures to the claimed elements and addressing limitations such as claim 5, which requires the pad's surface area to be larger than the stud's base.
  • "Spaced From": This term was added to claim 1 during prosecution and was critical for allowance. Petitioner argued that, based on the prosecution history, "spaced from" should not be construed to require any particular distance. Instead, it should be construed as any distance between the intersection point of a midfoot bar on a diagonal rib and the respective stud or pad. This broad construction was crucial to Petitioner's argument that Anderton's structure inherently meets this limitation or that achieving such spacing would have been an obvious design choice.

5. Key Technical Contentions (Beyond Claim Construction)

  • Reinforcement as a Design Choice: Supported by an expert declaration, Petitioner argued that adding Auger's medial midfoot bar to Anderton's sole plate would not alter the fundamental operating principle of Anderton's design. The expert contended that a POSITA would understand that reinforcement structures like ribs and bars operate by penetrating the ground to provide traction and stability. Adding a symmetrical medial bar would be a predictable way to enhance these known functions. The expert further opined that varying the dimensions and spacing of these molded structures to manage weight, flexibility, and stability was a well-known design choice, rendering the "spaced from" limitation obvious.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-6 of the ’065 patent as unpatentable.