PTAB
IPR2019-01190
PUMA North America, Inc. v. NIKE, Inc.
1. Case Identification
- Patent #: 10,070,679
- Filed: June 11, 2019
- Petitioner(s): PUMA NORTH AMERICA, INC.
- Patent Owner(s): NIKE, INC.
- Challenged Claims: 1
2. Patent Overview
- Title: ARTICLE OF FOOTWEAR INCORPORATING A LENTICULAR KNIT STRUCTURE
- Brief Description: The ’679 patent describes an article of footwear with an upper that includes a "lenticular knit structure." This structure is designed to produce color-shifting visual effects by using differently colored yarns on opposite sides of raised knit features (e.g., tubular ribs), causing the footwear to display different colors when viewed from different angles.
3. Grounds for Unpatentability
Ground 1: Anticipation over Shindo - Claim 1 is anticipated by Shindo under 35 U.S.C. §102.
- Prior Art Relied Upon: Shindo (Japanese Patent No. 10298847).
- Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Shindo, which was not considered during prosecution, discloses every limitation of claim 1. Shindo describes a "cloth" with protruding parts that creates changing visual labels when viewed from different angles. Petitioner asserted that Shindo explicitly states this cloth can be made by "knitting" and is intended for applications including "clothing," making its teachings directly applicable to a footwear component.
- Petitioner mapped the claim’s "lenticular knit structure" to Shindo's protruding knit structures (element 2) which have two "half-planes" (2a, 2b) on opposite sides. These half-planes correspond to the claimed "first portion" and "second portion."
- The claimed requirement for different visual effects from different viewing angles was allegedly met by Shindo’s core teaching. Shindo explains that one half-plane (e.g., 2a) is visible from a first viewing angle (A), while the other half-plane (2b) is visible from a second, different viewing angle (B).
- Shindo’s disclosure that the "label parts" on these half-planes can be created by "knitting of yarn of different color" was argued to meet the color-shifting limitation.
- The limitations requiring the knitted component to have a "front side and an opposite-facing back side" and for the structure to be "disposed on the front side" were argued to be met by Shindo's disclosure that the structures can be formed on one or both sides of the cloth. Petitioner contended that a knitted component inherently has two sides and that a POSITA would understand that such a decorative feature for clothing would be placed on the front side.
- Prior Art Mapping: Petitioner argued that Shindo, which was not considered during prosecution, discloses every limitation of claim 1. Shindo describes a "cloth" with protruding parts that creates changing visual labels when viewed from different angles. Petitioner asserted that Shindo explicitly states this cloth can be made by "knitting" and is intended for applications including "clothing," making its teachings directly applicable to a footwear component.
4. Key Claim Construction Positions
- "Lenticular Knit Structure": Petitioner proposed this term should be construed as "a knit structure configured to present at least two different colors to a viewer when viewed from different viewing angles." Petitioner argued this construction is consistent with the patent’s own specification, which describes the structure as creating a visual effect "similar to or inspired by lenticular printing techniques." This construction is central to the anticipation argument, as it allows the teachings of Shindo—which describes a functionally identical effect in a "cloth" for "clothing"—to be read onto the claims directed to a footwear component.
5. Relief Requested
- Petitioner requested the institution of an inter partes review and the cancellation of claim 1 of the ’679 patent as unpatentable.