PTAB

IPR2019-01042

PUMA North America, Inc. v. NIKE, Inc.

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1. Case Identification

2. Patent Overview

  • Title: ARTICLE OF FOOTWEAR WITH BASE PLATE HAVING STRUCTURE AND STUDS
  • Brief Description: The ’065 patent is directed to cleated athletic footwear, such as for soccer or football, designed to optimize propulsion, stability, and responsiveness. The technology centers on a specific sole base plate structure with an arrangement of pads, studs, diagonal ribs, and midfoot bars intended to provide support and moderate stud pressure during athletic movements.

3. Grounds for Unpatentability

Ground 1: 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 discloses nearly all elements of independent claim 1. Anderton teaches a cleated athletic shoe with a base plate having forefoot, midfoot, and heel regions, along with a "crisscross arch reinforcement" comprising two diagonal ribs (forming an X-shape) and a lateral midfoot bar. Anderton also discloses the claimed arrangement of forefoot and heel pads with corresponding studs. The primary element missing from Anderton is a medial midfoot bar. Petitioner contended that Auger remedies this deficiency by disclosing a cleated shoe with both medial and lateral midfoot bars to provide traction and control foot motion. Petitioner further argued that the key limitations of claim 1, "wherein the third point is spaced from the lateral forefoot pad" and "wherein the fourth point is spaced from the first lateral heel pad," are obvious modifications. These limitations were added during prosecution to overcome a rejection, but Petitioner asserted they represent a simple and known design choice that a person of ordinary skill in the art (POSITA) would have found obvious, as spacing between integrally molded reinforcement structures and cleats is a routine design parameter. The dependent claims were argued to be obvious as they add features also taught by Anderton, such as a heel rib (claim 2), additional pads and studs (claims 3-4), larger pad surface areas (claim 5), and specific intersection point locations (claim 6), all of which were presented as known design configurations.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Anderton and Auger to improve the overall stability and performance of the shoe. Anderton's goal was to improve maneuverability and comfort using reinforcing structures. Auger's goal was to improve traction, control foot motions (like over-pronation), and impart stability using medial and lateral reinforcing ribs. A POSITA would be motivated to add Auger's medial midfoot bar to Anderton’s existing structure to provide symmetrical reinforcement to the midfoot, thereby enhancing pronation control and stability in a predictable manner. This modification would be a straightforward application of a known solution (Auger's medial bar) to a known structure (Anderton's sole plate) to achieve a predictable result.
    • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success because combining the known reinforcement elements from Anderton and Auger for their established functions (traction, stability) in the common field of athletic footwear would yield nothing more than the predictable sum of their parts.

4. Key Claim Construction Positions

  • "Pad" / "Stud": Petitioner argued, consistent with the prosecution history, that "pad" should be construed as the base portion of each cleat and "stud" as the top portion of each cleat. This distinction is important for claim 5, which requires the pad's surface area to be larger than the stud's base.
  • "Spaced From": This term was added to independent claim 1 late in prosecution to secure allowance. Petitioner contended this term should be construed as simply any distance between the specified intersection points on the ribs and the respective cleat pads. Petitioner argued that the patent provides no special definition or technical advantage for this spacing, and its introduction was a non-substantive amendment to overcome a rejection, reflecting a known and obvious design choice rather than a patentable feature.

5. Key Technical Contentions (Beyond Claim Construction)

  • Combination Does Not Alter Fundamental Principles: Supported by an expert declaration, Petitioner contended that adding the medial midfoot bar of Auger to the sole plate of Anderton would not "materially alter the fundamental operating principle" of Anderton's invention. Because Anderton already teaches varying the dimensions of its reinforcement structures, a POSITA could easily integrate Auger's medial bar and adjust the dimensions of all ribs to manage weight while increasing stability, consistent with Anderton's own teachings.
  • "Spaced From" Limitation is a Known Design Choice: Petitioner's expert opined that providing space between integrally molded reinforcement ribs and cleat pads is a matter of routine design choice within the knowledge of a POSITA. The fact that the ’065 patent specification is devoid of the term "space" or any articulated reason for the spacing further supported the argument that this limitation does not confer novelty or non-obviousness.

6. Relief Requested

  • Petitioner requests the institution of an inter partes review and the cancellation of claims 1-6 of the ’065 patent as unpatentable under 35 U.S.C. §103.