Lululemon USA Inc v. Nike Inc

1. Case Identification

• Case #: IPR2023-01460
• Patent #: 9,730,484
• Filed: September 27, 2023
• Petitioner(s): Lululemon USA Inc.
• Patent Owner(s): NIKE, Inc.
• Challenged Claims: 1-19

2. Patent Overview

• Title: Article of Footwear Having A Flat-Knitted Element
• Brief Description: The ’484 patent relates to articles of footwear and methods of manufacturing them. The invention centers on a footwear upper that includes a flat-knitted element with a unitary construction, comprising a central portion with a domed, three-dimensional structure and two side portions.

3. Grounds for Unpatentability

Ground 1: Obviousness over Lockwood and Dua - Claims 1 and 5-9 are obvious over Lockwood in view of Dua.

• Prior Art Relied Upon: Lockwood (Patent 3,641,603) and Dua (Application # 2005/0193592).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Lockwood disclosed all elements of claim 1 except for the knitted element being specifically flat knit. Lockwood teaches methods of preforming shoe uppers that include a knitted reinforcement layer and feature a domed, three-dimensional "vamp cone portion" (central portion) with flattened side portions to simplify assembly. Dua discloses using a flat-knitting process to produce textile elements for footwear uppers to increase manufacturing efficiency and reduce waste.
  • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSA) would combine these references because they are in the same field of endeavor (shoe uppers) and address the same problems of manufacturing cost and efficiency. A POSA would have been motivated to apply the known flat-knitting technique from Dua to produce the pre-shaped knitted element disclosed in Lockwood's upper, as flat knitting was one of a finite number of predictable options for producing such a textile element.
  • Expectation of Success (for §103 grounds): A POSA would have had a reasonable expectation of success, as the combination involved the routine selection of a known knitting process (Dua) for a known component (Lockwood's knitted element) to achieve predictable benefits.

Ground 2: Obviousness over Dua, Hong, and Lockwood - Claims 1-19 are obvious over Dua in view of Hong and Lockwood.

• Prior Art Relied Upon: Dua (Application # 2005/0193592), Hong (a 1994 publication titled "The development of 3D shaped knitted fabrics for technical purposes on a flat knitting machine"), and Lockwood (Patent 3,641,603).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Dua discloses a flat-knitted footwear upper with a central portion and two side portions of unitary construction, but lacks an explicitly domed, three-dimensional structure. Hong teaches various methods for creating three-dimensional, shaped fabrics (including domed and spherical forms) using flat-knitting machines, highlighting the benefits of reducing material waste and labor costs. Lockwood confirms the desirability of incorporating a pre-shaped, domed structure into the central portion of a shoe upper to simplify assembly. For dependent claims, Dua was argued to disclose features like lace loops (claims 2-4), varying knit structures (claim 7), and using different yarns (claim 8).
  • Motivation to Combine (for §103 grounds): A POSA would combine these teachings to improve upon Dua's flat-knitted upper. The motivation would be to incorporate a domed, three-dimensional structure, as taught by Hong's flat-knitting methods, into the central portion of Dua's upper to gain the manufacturing and assembly benefits (e.g., simplified assembly, reduced cutting and waste) described by Lockwood. Petitioner noted that the Patent Owner itself cited Hong during a related European prosecution to demonstrate that creating 3D structures via flat knitting was well-known.
  • Expectation of Success (for §103 grounds): Success was reasonably expected because the combination involved implementing a known approach (3D flat knitting from Hong) to achieve a known structure (the domed upper from Lockwood) within a standard flat-knitted upper (Dua) to achieve well-understood benefits.

• Additional Grounds: Petitioner asserted Ground 2, adding Norton (Patent 6,558,784) to the Lockwood and Dua combination to further support teachings related to the structure of the knitted layer. Petitioner also asserted Ground 4, adding Voughlohn (Application # 2006/0053658) to the Dua, Hong, and Lockwood combination to further teach the formation of lace loops of unitary construction.

4. Key Claim Construction Positions

• The petition identified a key claim construction dispute from the parallel district court litigation. The Patent Owner contended that a flat-knitted element could be knit in a flat configuration and then subsequently formed into the claimed "domed, three-dimensional structure."
• Petitioner argued that the plain and ordinary meaning of the claim language requires that the "domed, three-dimensional structure" itself must be formed during the flat-knitting process.
• Petitioner noted its arguments for Grounds 1 and 2 apply even under the Patent Owner's broader interpretation, while its arguments for Grounds 3 and 4 are based on the plain meaning.

5. Arguments Regarding Discretionary Denial

• §325(d) - Same or Substantially the Same Art: Petitioner argued against discretionary denial because key prior art references, Lockwood and Hong, were not considered during the original prosecution. Although Dua was considered, its combination with this new art presents arguments that the Examiner did not previously evaluate.
• §314(a) - Fintiv Factors: Petitioner argued against discretionary denial under Fintiv, stating the petition presents a compelling case for unpatentability. Critically, Petitioner stipulated that if the IPR is instituted, it will not pursue in the parallel district court proceeding the same grounds raised in the petition or any grounds that it could have reasonably raised. This stipulation, per Petitioner, removes any significant overlap of issues between the PTAB and the district court, strongly weighing against denial. The district court case was also noted to be in its early stages.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-19 of the ’484 patent as unpatentable.