PTAB

IPR2019-01043

Puma North America Inc v. Nike Inc

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Soccer Shoe Having Independently Supported Lateral and Medial Sides
  • Brief Description: The ’746 patent discloses a cleated athletic shoe designed to enhance performance and prevent injuries by addressing foot pronation (the inward rolling of the foot). The core technology is a cleat assembly with a medial stiffened section that is stiffer than its corresponding lateral stiffened section, thereby reducing the flattening of the foot during movement.

3. Grounds for Unpatentability

Ground 1: Anticipation by Norton - Claims 1, 5, 6, 9, 10, 13, 14, and 17 are anticipated by Norton under 35 U.S.C. §102.

  • Prior Art Relied Upon: Norton (Patent 4,574,498).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Norton discloses every limitation of the challenged claims in a single reference. Norton teaches an athletic shoe with a sole containing a "pair of spines" that extend along the medial and lateral sides to provide "flexural and torsional rigidity" and control pronation. Petitioner asserted these spines correspond to the claimed medial and lateral support bars and create the claimed stiffened sections. To meet the key limitation that "the medial stiffened section being stiffer than the lateral stiffened section," Petitioner contended that Norton teaches varying the dimensions of the spines as a design choice to control pronation. Further, Petitioner pointed to Figure 2 of Norton, which allegedly shows the medial spine is visibly longer than the lateral spine, thereby creating a stiffer medial section. Petitioner also mapped Norton’s disclosures to the dependent claims, arguing Norton teaches varying spine thickness (claim 5), shows outwardly visible spines (claim 6), and illustrates spine positioning that corresponds to the claimed anatomical locations (claim 9).

Ground 2: Obviousness over Norton and Kilgore - Claims 1, 5, 6, 9, 10, 13, 14, and 17 are obvious over Norton in view of Kilgore under 35 U.S.C. §103.

  • Prior Art Relied Upon: Norton (Patent 4,574,498) and Kilgore (Patent 5,046,267).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted Norton provides the foundational cleated shoe with medial and lateral support "spines" for rigidity. Kilgore, which was not considered during the original prosecution, was presented as explicitly teaching a solution to excessive pronation by using a reinforcing structure to make the medial side of an athletic shoe sole stiffer than the lateral side. Kilgore’s pronation control device "functions to gradually increase the resistance to compression of the midsole from the lateral side to a maximum along the medial side."
    • Motivation to Combine: A POSITA would combine Kilgore’s explicit teachings on pronation control with Norton's cleated shoe design because both references address the same problem in the same field. Petitioner argued a POSITA would be motivated to modify Norton's support spines according to Kilgore’s principle of increasing medial stiffness to achieve the known benefit of improved pronation control. This would involve applying a known technique to a known product to obtain predictable results.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in making the medial side of Norton's cleat assembly stiffer. The combination required only the application of well-understood biomechanical principles to shoe design, such as modifying the dimensions of Norton's medial spine to increase its rigidity, a design choice already suggested by Norton itself.

4. Key Claim Construction Positions

  • Petitioner argued that the construction of the terms "lateral stiffened section" and "medial stiffened section" is limited by prosecution history estoppel.
  • During prosecution of the application leading to the ’746 patent, the Patent Owner allegedly distinguished the claims from a prior art reference (Lussier) by arguing that the claims recite the "medial stiffened section of the cleat assembly is stiffer," not that the medial support bar is stiffer than the lateral support bar.
  • Based on this, Petitioner asserted that the claim terms must be construed to refer to the stiffness of a region of the cleat assembly as a whole, not merely the support bars themselves. This construction was central to Petitioner's argument that the prior art met these limitations.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1, 5, 6, 9, 10, 13, 14, and 17 of the ’746 patent as unpatentable.