Puma North America Inc v. Nike Inc

1. Case Identification

• Case #: IPR2019-01342
• Patent #: 10,098,411
• Filed: July 16, 2019
• Petitioner(s): PUMA North America, Inc.
• Patent Owner(s): NIKE, Inc.
• Challenged Claims: 1-3, 6-7, 9-14

2. Patent Overview

• Title: Particulate Foam and Other Cushioning
• Brief Description: The ’411 patent discloses an article of footwear featuring a sole structure with a casing positioned between the upper and the outsole. This casing contains a plurality of foam beads for cushioning and includes internal dividers protruding from its bottom surface that terminate before reaching the top surface, creating gaps that permit the beads to migrate between partitioned regions.

3. Grounds for Unpatentability

Ground 1: Obviousness over Johnson, Mozayan, and Nichols - Claims 1-3, 6, 9-11, and 13-14 are obvious over Johnson, Mozayan, and Nichols.

• Prior Art Relied Upon: Johnson (Patent 7,946,058), Mozayan (European Patent No. 383685), and Nichols (Patent 6,061,928).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of these three references teaches every element of independent claims 1 and 9. Johnson was asserted to teach a conventional article of footwear with an upper and a sole structure, specifically disclosing an outsole with articulated grooves designed to improve flexibility by corresponding to indentations in the midsole. Mozayan was cited for teaching a shoe sole with an internal cavity containing a plurality of foam beads ("spherules") and, critically, transverse partitions (the claimed "dividers") that protrude from the bottom wall but terminate below the top wall, leaving a gap. Nichols was asserted to disclose a cushioning assembly comprising a fully formed casing with top and bottom walls enclosing foam beads, providing a more robust container structure than Mozayan's open-top cavity.
  • Motivation to Combine: Petitioner asserted that a person of ordinary skill in the art (POSITA) would combine these references for predictable results. First, a POSITA would combine the partitioned cavity of Mozayan with the casing structure of Nichols to simplify manufacturing and create a more effective, fully enclosed container for the foam beads. Second, a POSITA would combine this bead-filled casing with the grooved outsole of Johnson, aligning the outsole grooves with the internal dividers from Mozayan. The motivation, as explicitly taught in Johnson, would be to enhance the overall flexibility of the shoe by creating consistent flexure regions that extend through the entire sole structure.
  • Expectation of Success: Petitioner contended that a POSITA would have a high expectation of success, as the combination merely applies known cushioning and flexibility-enhancing techniques for their intended and well-understood purposes.

Ground 2: Obviousness over Johnson, Mozayan, Nichols, and Tawney - Claims 7 and 12 are obvious over Johnson, Mozayan, Nichols, and Tawney.

• Prior Art Relied Upon: Johnson (Patent 7,946,058), Mozayan (European Patent No. 383685), Nichols (Patent 6,061,928), and Tawney (Patent 7,244,483).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination in Ground 1 to address the additional limitation in claims 7 and 12 that the casing is "transparent." Petitioner argued that Tawney explicitly teaches using transparent materials for footwear bladders or casings. Tawney explains that when components like sidewalls are transparent, the interior of the bladder becomes visible, a feature known in the art and used for aesthetic purposes in commercial products.
  • Motivation to Combine: Petitioner argued the motivation to add Tawney's teaching to the base combination would be to improve the aesthetic appeal of the shoe. A POSITA would find it desirable to make the casing transparent to allow consumers to see the internal foam beads, thereby visually communicating the shoe's cushioning technology and creating a distinct look.
  • Expectation of Success: The use of transparent polymers in footwear soles was a well-known and straightforward design choice at the time of the invention, ensuring a high expectation of success.

4. Key Claim Construction Positions

• "Divider(s)": Petitioner proposed construing this term as a "protrusion that extends partially into a cavity to separate said cavity into regions or portions and restrict migration of foam beads between said regions or portions." This construction was argued to be consistent with the specification's description and was important for mapping the "transverse partitions" of Mozayan to the claimed limitation.
• "Operable to migrate...via the gaps": Petitioner proposed this term should be construed as "designed to move between regions or portions of the interior cavity...by moving through the gaps." This construction emphasized the intentionality of the design, which Petitioner argued was disclosed in the prior art, where gaps above the partitions would inherently allow for such movement.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate because the primary combination of references asserted in the petition—Johnson in view of Mozayan and Nichols, further in view of Tawney—was not considered or applied by the Examiner during the original prosecution of the ’411 patent. Petitioner noted that while Mozayan was cited in an Information Disclosure Statement, the Examiner never commented on it or used it in a rejection, making the arguments and evidence presented in the petition substantially new.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-3, 6-7, and 9-14 of the ’411 patent as unpatentable.