Puma North America Inc v. Nike Inc

1. Case Identification

• Case #: IPR2019-01190
• 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 discloses an article of footwear with a knitted component that exhibits color-shifting properties. This effect is achieved by using a "lenticular knit structure," such as raised loops or tubular ribs, where differently colored yarns are placed on opposite sides of the structure to create different visual effects when viewed from different angles.

3. Grounds for Unpatentability

Ground 1: Anticipation by 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, which can be knitted, that features protruding parts with two distinct "half-planes." These half-planes can be formed with different colored yarns to create a label or design that changes in appearance depending on the viewing angle.
    • Petitioner contended that Shindo’s cloth with angle-dependent labeling is a "knitted component" with "color-shifting properties," meeting the preamble and limitation 1[a]. Shindo explicitly states its cloth can be formed by "knitting."
    • Shindo’s "protruding parts" (element 2) were argued to be the claimed "lenticular knit structure." The "one half-plane" (2a) of Shindo's structure, which can be a specific color, corresponds to the "first portion disposed on a first side" of the lenticular structure (limitation 1[b]).
    • Correspondingly, the "other half-plane" (2b) of Shindo's structure represents the "second portion disposed on a second side... opposite the first side" (limitation 1[c]).
    • Shindo's core teaching is that viewing the cloth from one angle (Angle A) reveals the label/color on the first half-plane, while viewing from a different angle (Angle B) reveals the label/color on the second half-plane. Petitioner argued this directly teaches a first visual effect from a first angle and a different, second visual effect from a second angle (limitation 1[d]).
    • For the limitations added during prosecution, Petitioner asserted that Shindo discloses a knitted component with a "front side and an opposite-facing back side" (limitation 1[e]), as Shindo teaches its structure can be applied to "both sides of the cloth 1."
    • Finally, Petitioner argued Shindo discloses the lenticular structure being "disposed on the front side of the knitted component" (limitation 1[f]), as Shindo's figures and description show the protruding parts formed on one side of the base cloth.

4. Key Claim Construction Positions

• "Lenticular knit structure": Petitioner argued 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." This construction was based on the ’679 patent's own specification, which repeatedly describes the structure's function in this manner. Petitioner asserted this construction is also consistent with the term's use in the textile and footwear industry to describe a perspective-dependent visual effect analogous to lenticular printing. This construction is central to the argument that Shindo’s structure, which performs this exact function, meets the claim limitation.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claim 1 of the ’679 patent as unpatentable.