Skechers v. Nike Inc

1. Case Identification

• Case #: IPR2021-00160
• Patent #: 7,401,420
• Filed: October 30, 2020
• Petitioner(s): Skechers USA., Inc.
• Patent Owner(s): Nike, Inc.
• Challenged Claims: 14-17

2. Patent Overview

• Title: Article of Footwear Having a Fluid-filled Bladder with a Reinforcing Structure
• Brief Description: The ’420 patent describes an article of footwear featuring a sole structure that incorporates a fluid-filled bladder. A separate reinforcing structure is bonded to the exterior of the bladder to restrict its outward swelling under load and provide structural support.

3. Grounds for Unpatentability

Ground 1: Claims 14-17 are anticipated by or, in the alternative, obvious over Chi.

• Prior Art Relied Upon: Chi (Patent 6,918,198).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Chi anticipates every limitation of the challenged claims. Chi’s "air cushion 35" was identified as the claimed "fluid-filled bladder," and its "top peripheral flange 312" was mapped to the "reinforcing structure." The flange is disclosed as part of the outsole, made of a harder material than the cushion, and is "surrounding and bonded to the cushion peripheral wall," thereby restraining lateral swelling. Petitioner asserted that this flange also forms a ridge with an "inclined surface" that is bonded to the shoe's upper, defining a "lasting surface." The dependent claims were also allegedly met, as Chi’s air cushion is a single chamber (claim 15), is bonded to the upper via an adhesive (claim 16), and the reinforcing ridge extends along the medial, lateral, and heel regions (claim 17).
  • Motivation to Combine (for §103 grounds): In the alternative obviousness argument, Petitioner contended that if Chi’s flange was deemed inwardly inclined while the patent required an outward incline, it would have been an obvious design choice for a person of ordinary skill in the art (POSA) to modify the flange to incline outwardly to accommodate different upper designs.
  • Expectation of Success (for §103 grounds): A POSA would have a reasonable expectation of success in making such a modification, as the angle of a midsole's supportive lip is a routine design parameter adjusted based on the shoe's shape and desired bonding characteristics.

Ground 2: Claims 14-17 are obvious over Rudy.

• Prior Art Relied Upon: Rudy (Patent 6,158,149).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Rudy’s "cushioning device 153" discloses the claimed "fluid-filled bladder," and its "encapsulating foam 158" serves as the "reinforcing structure." The foam surrounds the cushioning device and, by being in direct force-transmitting contact, restricts lateral "bulging" under load. The foam extends upwards to form a ridge along the base of the upper, creating an inclined lasting surface. While Rudy shows a thin layer of foam between the bladder and the upper, Petitioner contended it would have been obvious to remove it.
  • Motivation to Combine: A POSA would be motivated to make two key modifications to Rudy. First, a POSA would remove the thin foam layer above the bladder to allow the bladder to directly contact the wearer's foot, improving comfort without sacrificing stability, a modification supported by Rudy’s own statement that "foam encapsulation is not required." Second, a POSA would construct Rudy's encapsulating foam from a harder, higher-density material (as taught by the Bates patent, which Rudy incorporates by reference) to provide better lateral stability and compensate for structural integrity lost due to "view holes" in Rudy's midsole.
  • Expectation of Success: A POSA would expect success in these modifications, as they involve using known materials for their predictable properties (harder foam for stability) and employing a known design (direct bladder-to-upper contact) to achieve the predictable result of improved comfort and stability.

4. Key Claim Construction Positions

• "lasting surface": Petitioner proposed this term be construed as "the surface along which a shoe upper is secured to a sole structure," consistent with its plain meaning in the context of footwear.
• "reinforcing structure secured to the bladder": Petitioner argued this phrase should mean "a structure that is separate from and attached to the bladder and that provides reinforcement to the bladder by restraining distension of the bladder." This construction emphasizes that the reinforcing element is a distinct component added to the bladder.
• "inclined surface": Petitioner asserted this term should be construed according to its plain and ordinary meaning, i.e., to "veer, lean or slope away from a vertical or horizontal plane," without importing any limitation as to the specific direction or degree of the incline.

5. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv Factors): Petitioner argued that discretionary denial under Fintiv was unwarranted because the parallel district court litigation was in a very early stage. Key milestones such as the claim construction hearing were over five months away, a trial date had not been set, and Petitioner’s invalidity contentions were not yet due, indicating minimal investment by the court and parties.
• §325(d): Petitioner contended that denial under §325(d) would be improper because the examiner committed material error by overlooking key prior art. Although Chi was listed in an Information Disclosure Statement (IDS), the prosecution history is silent on its consideration for the ’420 patent. Petitioner highlighted that the same examiner had previously rejected similar claims in related applications as anticipated by Chi, demonstrating the examiner overlooked Chi's highly relevant teachings. Furthermore, Petitioner asserted that Rudy is new, non-cumulative prior art that was never before the examiner.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 14-17 of the ’420 patent as unpatentable.