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

1. Case Identification

• Case #: Unassigned
• 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, and 9–14

2. Patent Overview

• Title: Particulate Foam and Other Cushioning
• Brief Description: The ’411 patent discloses an article of footwear with a sole structure containing a casing positioned between an upper and an outsole. This casing encloses a plurality of foam beads for cushioning and includes internal dividers that protrude from a bottom surface to create separate locations, with gaps above the dividers allowing the beads to migrate between them.

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 in view of 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 references teaches every element of the challenged claims. Mozayan was argued to disclose a shoe with a cavity containing foam beads and transverse partitions (dividers) that protrude upward from the bottom surface but leave a gap below the top surface. Nichols was asserted to teach a complete casing structure (a pocket with a top and bottom wall) for enclosing such foam beads. Johnson was argued to teach an outsole with upwardly contoured grooves that are aligned with indentations in the midsole to enhance flexibility. Petitioner contended that combining Mozayan’s partitioned cavity and Nichols’s enclosed casing creates the claimed casing with foam beads and dividers, and adding Johnson’s outsole with aligned grooves meets the limitations of independent claims 1 and 9.
  • Motivation to Combine: A POSITA would combine Mozayan and Nichols to simplify manufacturing and to better contain the foam beads by forming a complete enclosure, while the dividers would provide varying degrees of cushioning in different regions of the shoe. A POSITA would then incorporate Johnson’s outsole structure with its aligned grooves to improve the overall flexibility of the sole, a known goal in footwear design. Johnson explicitly teaches that its grooves are "positioned to correspond in location with indentations" on the midsole's bottom surface, providing a clear motivation to align them with the dividers of the Mozayan/Nichols combination.
  • Expectation of Success: Petitioner asserted that a POSITA would have a high expectation of success because combining these known elements—a bead-filled casing, internal dividers for support, and flexible outsole grooves—for their intended purposes would yield predictable results.

Ground 2: Obviousness over Johnson, Mozayan, Nichols, and Tawney - Claims 7 and 12 are obvious over Johnson, Mozayan, and Nichols in view of 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. Claims 7 and 12 add the limitation that the casing is transparent. Petitioner argued that Tawney explicitly discloses using transparent material for a shoe’s bladder or casing, stating that "when the exposed sidewalls are transparent, the interior of the bladder is visible." Tawney also noted this was a known design choice, citing prior NIKE AIRMAX footwear as an example.
  • Motivation to Combine: A POSITA would be motivated to make the casing of the shoe from Ground 1 transparent, as taught by Tawney, for aesthetic reasons. This modification would make the internal foam beads visible to the consumer, which could highlight the shoe's cushioning technology and improve its market appeal.
  • Expectation of Success: The use of transparent polymers in footwear was well-established, so a POSITA would have a high expectation of success in applying this known design feature to the combined footwear structure without any undue experimentation.

4. Key Claim Construction Positions

• Divider(s): Petitioner proposed this term be construed 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 claim language and the specification, which describes dividers as restricting or manipulating the migration of particulate matter between adjoining regions.
• Operable to Migrate Between the Locations Within the Interior Cavity of the Casing Via the Gaps: For claim 9, Petitioner proposed this term be construed as "designed to move between regions or portions of the interior cavity of the casing that are separated by laterally extending dividers by moving through the gaps above said dividers." Petitioner argued the specification shows that while dividers restrict movement, the corresponding gaps are intentionally designed to allow some foam beads to pass between the partitioned locations.

5. Relief Requested

• Petitioner requested that the Board institute an inter partes review of claims 1-3, 6-7, and 9-14 of the ’411 patent and cancel those claims as unpatentable.