Lululemon USA Inc v. Nike Inc

1. Case Identification

• Case #: IPR2024-00159
• Patent #: 9,375,046
• Filed: November 8, 2023
• Petitioner(s): Lululemon USA Inc.
• Patent Owner(s): NIKE, Inc.
• Challenged Claims: 1-3, 7-9, 14-20

2. Patent Overview

• Title: Knitted Component With Hideable Webbed Area
• Brief Description: The ’046 patent discloses knitted articles, such as apparel or footwear uppers, featuring tubular structures separated by webbed areas. In a neutral (unstretched) state, the webbed areas are at least partially hidden, but upon stretching the article, the tubular structures separate to reveal the previously hidden portions of the webbed areas.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 7, 16-18, and 20 are anticipated by or obvious over Good

• Prior Art Relied Upon: Good (Patent 4,702,091).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Good, which discloses a knitted sock with a stretchable cuff, anticipates every limitation of the challenged article claims. Good teaches "rib portions" (claimed tubular structures) separated by "connecting portions" (claimed webbed areas). In a "relaxed condition," the connecting portions are "generally not visible," but in an "extended condition," they are revealed. Petitioner asserted this directly maps to the hide-and-reveal functionality of independent claims 1 and 20. Dependent claims were also allegedly disclosed, including limitations for alternating structures (claim 3), jersey knit patterns (claim 7), and co-extensive knit layers forming a hollow structure (claim 16).
  • Motivation to Combine (for §103 grounds): For claim 3, to the extent Good was found not to disclose the alternating pattern across a "majority of the article," Petitioner argued a POSITA would combine Good's teachings to extend the cuff pattern. The motivation was to achieve known benefits such as adjusting aesthetics, increasing cushioning, or customizing the fit for different wearers (e.g., for a leg warmer).
  • Expectation of Success (for §103 grounds): Success was expected as it involved applying a known knitting technique to increase the length of a cuff, a predictable design modification.

Ground 2: Claims 1-3, 7, 17, 18, and 20 are anticipated by Munsing

• Prior Art Relied Upon: Munsing (Patent 391,005).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was predicated on the Patent Owner's broad proposed claim construction of "tubular structures" as "tube-like structures" that need not be hollow. Petitioner contended that under this broad interpretation, the much older Munsing patent anticipates the claims. Munsing, from 1888, discloses a "double-ribbed jersey fabric" for underwear. In its "normal condition," the ribs lie close together, hiding the woolen thread in the valleys between them. When the fabric is stretched, the ribs separate and expose the "uncovered portions of the woolen thread" in the valleys. Petitioner asserted that Munsing's ribs are the claimed "tubular structures," and the valleys are the "webbed areas," thereby disclosing the hide-and-reveal function of claim 1 and 20.

Ground 3: Claims 8, 9, 14, 15, and 19 are anticipated by or obvious over Minami

• Prior Art Relied Upon: Minami (Application # 2014/0130374).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targeted the claims directed specifically to a shoe upper (claim 8 and its dependents). Petitioner argued Minami, a prior art application from the Patent Owner, discloses a shoe upper formed from a knit component with "protruding areas" that are expressly defined as "tubular structures." These structures are separated by connecting portions (the claimed webbed areas). Petitioner asserted that Minami's figures and description show these tubular structures have a first curved portion with a greater curve length than a second curved portion, directly mapping to the limitations of independent claim 8.
  • Motivation to Combine (for §103 grounds): For dependent claim 9, which requires different yarns for the webbed areas and tubular structures, Petitioner argued Minami teaches that different yarns can be used to impart different properties to different areas of the knit component. A POSITA would combine these teachings and use a different, more durable yarn for the protruding tubular structures to improve wear-resistance, provide greater support, or achieve a different aesthetic, all of which were known design goals disclosed in Minami.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success in selecting different yarns for different regions of a knit upper, as this was a conventional technique to achieve desired functional or aesthetic properties.

4. Key Claim Construction Positions

• "tubular structures / tubular rib structures": This term was presented as the central point of dispute.
  • Petitioner's Position: Argued for a construction of "elongated hollow structures," consistent with the patent's specification describing the structures as "hollow tubes" or "tunnels."
  • Patent Owner's Position (in parallel litigation): Argued for its "ordinary and customary meaning; i.e., tube-like structures," contending that such structures "need not be hollow like a tube." Petitioner leveraged this broad interpretation to formulate its anticipation argument in Ground 2.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under §325(d) or §314(a) (Fintiv).
  • §325(d): The primary prior art references (Good, Munsing, and Minami) were not cited or considered during the original prosecution, presenting new unpatentability arguments.
  • Fintiv Factors: Petitioner contended that denial under Fintiv would be inappropriate because the parallel district court case was in a very early stage, with no trial date set and the claim construction hearing not yet conducted. Furthermore, Petitioner stipulated that if the IPR is instituted, it will not pursue in the district court the same grounds raised in the Petition or any grounds that it reasonably could have raised.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-3, 7-9, and 14-20 of the ’046 patent as unpatentable.