Skechers USA Inc v. Nike Inc

1. Case Identification

• Case #: IPR2021-00159
• Patent #: 10,098,412
• Filed: October 30, 2020
• Petitioner(s): Skechers USA., Inc.
• Patent Owner(s): Nike, Inc.
• Challenged Claims: 1-21

2. Patent Overview

• Title: Particulate Foam With Other Cushioning
• Brief Description: The ’412 patent relates to articles of footwear featuring a sole structure with an internal cavity. This cavity contains a plurality of protrusions extending from the outsole and is at least partially filled with particulate matter, such as foam beads, to provide cushioning.

3. Grounds for Unpatentability

Ground 1: Claims 1-21 are obvious over Feshbach in view of Whiteman.

• Prior Art Relied Upon: Feshbach (Application # 2014/0230272) and Whiteman (Patent 9,930,928).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Feshbach disclosed every limitation of the challenged claims except for the use of foam beads. Feshbach teaches a shoe sole with a cavity between the outsole and midsole, containing a plurality of protrusions that extend from a forefoot region to a midfoot region. Feshbach’s figures also show that the protrusion nearest the midfoot is taller than the other protrusions in the forefoot, and that the protrusions progressively decrease in height toward the front of the shoe, consistent with the tapering sole geometry. Whiteman was cited solely for its disclosure of a shoe sole midsole comprising "randomly arranged particles of an expanded material," which Petitioner asserted are foam beads.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Whiteman’s foam beads with Feshbach’s design to solve a problem explicitly identified in Feshbach: the collapse of its air-filled cavity under load. Feshbach’s proposed solution—a sealed, airtight chamber—is complex and costly to manufacture. Petitioner argued that filling the cavity with Whiteman’s foam beads provides a simpler, more cost-effective solution to prevent collapse while adding cushioning. Furthermore, Whiteman teaches that combining protrusions and foam beads provides an additional performance benefit of improved anchoring and shear force control, which aligns with Feshbach’s goals of superior comfort and stability.
  • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success, as filling Feshbach's existing cavity with Whiteman's foam beads would be a straightforward manufacturing step using known materials to achieve predictable cushioning and support.

Ground 2: Claims 1-7 are obvious over Lee in view of Whiteman.

• Prior Art Relied Upon: Lee (KR100848718B1) and Whiteman (Patent 9,930,928).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Lee disclosed a shoe sole with a cavity containing a plurality of "acupressure protrusions" having varying heights. Lee’s design includes protrusions extending from the forefoot to the midfoot, with a "first protrusion" near the midfoot having the greatest height, and the protrusions progressively decreasing in height toward the front of the shoe. Instead of foam beads, Lee’s cavity is filled with a soft second midsole that is precisely molded with concave grooves to mate with the protrusions. Whiteman was again relied upon for its disclosure of using foam beads in a shoe midsole.
  • Motivation to Combine (for §103 grounds): A POSITA would be motivated to replace Lee’s complex and costly molded second midsole with Whiteman’s simpler and cheaper foam beads. Manufacturing Lee’s design requires precise tooling to create the mating "male and female form," which is a significant manufacturing expense. Whiteman teaches that its foam particles are "particularly easy to handle" and require no specific orientation. Substituting the beads would achieve Lee’s goal of transmitting acupressure effects and promoting correct walking in a far more cost-effective manner. Whiteman’s teaching that its soles "ideally imitate the rolling of the foot" directly corresponds to Lee’s description of promoting a "rolling motion" for correct walking.
  • Expectation of Success (for §103 grounds): A POSITA would expect success in substituting Whiteman’s foam beads into the cavity of Lee’s first midsole, as it would be a simple replacement of one cushioning material with another to reduce manufacturing complexity and cost.

4. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv): Petitioner argued against discretionary denial under Fintiv, stating that the parallel district court litigation was in its very early stages. At the time of filing, no trial date had been set, preliminary invalidity contentions were not yet due, and minimal investment had been made by the court or parties. Petitioner contended these factors, along with the strong merits of the petition, weighed heavily in favor of institution.
• §325(d): Petitioner argued against discretionary denial under §325(d) because the petition presented new prior art and arguments not before the examiner. The primary references, Feshbach and Lee, which disclose the key "Added Protrusion Limitations," were never considered during prosecution. Although Whiteman was cited by the examiner, Petitioner relied on it only for the undisputed "foam bead" limitation, which the Patent Owner had already acknowledged was in the prior art. Petitioner asserted the examiner materially erred by failing to consider how Whiteman’s teachings could be combined with other art showing varied-height protrusions.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-21 of the ’412 patent as unpatentable.