PTAB

IPR2019-01043

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

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1. Case Identification

2. Patent Overview

  • Title: Soccer Shoe Having Independently Supported Lateral and Medial Sides
  • Brief Description: The ’746 patent relates to a cleated athletic shoe designed to enhance performance and prevent injuries by controlling foot pronation (the inward rolling of the foot). The core of the invention is a cleat assembly featuring a medial stiffened section that is stiffer than the corresponding lateral stiffened section, intended to reduce excessive pronation.

3. Grounds for Unpatentability

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

  • Prior Art Relied Upon: Norton (Patent 4,574,498).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Norton discloses every element of the challenged claims. Norton teaches an athletic shoe for field sports with a sole, an upper, and a cleat assembly. Crucially, Norton discloses a pair of "spines" (support bars) extending along the medial and lateral sides of the shoe to provide "flexural and torsional rigidity" and "control pronation." Petitioner contended that making the medial section stiffer than the lateral one is an inherent or necessarily disclosed feature of Norton. Norton explicitly teaches that the dimensions of its spines (e.g., height, thickness, length) can be varied as a design choice to achieve the stated purpose of pronation control. Given that increased medial stiffness was a known method for controlling pronation, Petitioner asserted that Norton's disclosure of variable spines for this purpose inherently teaches the claimed differential stiffness.
    • Key Aspects: The anticipation argument hinged on the assertion that Norton's disclosure of configurable support "spines" for the express purpose of pronation control would have been understood by a person of ordinary skill in the art (POSITA) to include making the medial spine stiffer, as this was the known mechanism for achieving that result. Arguments for dependent claims similarly relied on Norton's disclosure of design variations, such as making the medial support bar thicker (claim 5) or ensuring the bars are outwardly visible (claim 6).

Ground 2: Claims 1, 5, 6, 9, 10, 13, 14, and 17 are obvious over Norton in view of Kilgore

  • Prior Art Relied Upon: Norton (Patent 4,574,498) and Kilgore (Patent 5,046,267).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Norton provided the foundational cleated shoe with medial and lateral support bars ("spines") aimed at providing rigidity and controlling pronation. Kilgore, which was not considered during the original prosecution, explicitly teaches a pronation control device for an athletic shoe that "functions to gradually increase the resistance to compression of the midsole from the lateral side to a maximum along the medial side." This creates a sole that is intentionally stiffer on the medial side than the lateral side to control pronation.
    • Motivation to Combine: A POSITA would combine Kilgore’s explicit teaching of differential stiffness with Norton's cleated shoe design to improve its functionality. Norton identified the problem of pronation and proposed a solution using support spines. Kilgore provided a clear, specific solution to the same problem by creating a medial-to-lateral stiffness gradient. Applying Kilgore's well-understood principle to modify Norton's support spines would have been a logical and predictable step to enhance pronation control in a cleated shoe.
    • Expectation of Success: A POSITA would have a high expectation of success in this combination. Both references operate in the same field of athletic footwear and address the identical problem of pronation. The combination involves applying a known technique (differential stiffness from Kilgore) to a compatible structure (the support spines of Norton) to achieve the desired, predictable result of improved foot stability and injury prevention.

4. Key Claim Construction Positions

  • Petitioner argued that the claim terms "lateral stiffened section" and "medial stiffened section" are limited by prosecution history estoppel. During prosecution of the ’746 patent, the Patent Owner distinguished the invention from prior art (Lussier) by arguing that the claims require a stiffened section of the cleat assembly itself to be stiffer, not just a stiffened support bar. Petitioner asserted this distinction is binding and that its invalidity arguments meet this narrower construction, where the support bars (spines) in the prior art inherently stiffen the sections of the cleat assembly to which they are attached.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not defer to the Patent Office’s decision to allow the patent because the petition raises new evidence and arguments not considered during prosecution. Specifically, Petitioner noted that the Kilgore reference, which explicitly teaches the medial-to-lateral stiffness gradient for pronation control, was never before the Examiner. Therefore, the obviousness ground based on the combination of Norton and Kilgore constitutes a new challenge that warrants review on its merits.

6. Relief Requested

  • Petitioner requests the institution of inter partes review (IPR) and the cancellation of claims 1, 5, 6, 9, 10, 13, 14, and 17 of Patent 6,973,746 as unpatentable.