Lululemon USA Inc v. Nike Inc

1. Case Identification

• Case #: IPR2024-00460
• Patent #: 8,266,749
• Filed: January 12, 2024
• Petitioner(s): Lululemon USA Inc.
• Patent Owner(s): NIKE, Inc.
• Challenged Claims: 1-21

2. Patent Overview

• Title: Methods of Manufacturing an Article of Footwear
• Brief Description: The ’749 patent is directed to methods for manufacturing articles of footwear. The core claimed method involves simultaneously knitting a textile element, such as a shoe upper, along with a surrounding textile structure as a single piece, wherein the element and structure have different knitted textures. The textile element is then removed from the surrounding structure and incorporated into an article of footwear.

3. Grounds for Unpatentability

Ground 1: Claims 1-8 and 12-18 are anticipated by Nishida under 35 U.S.C. §102.

• Prior Art Relied Upon: Nishida (International Publication No. WO 92/22223).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Nishida, published in 1992, discloses a method of making a shoe upper from a single knitted "material web." This process involves producing the patterns for the uppers (the "textile element") at the same time as the surrounding strip of material (the "surrounding textile structure"). Petitioner asserted that Nishida explicitly teaches the required different textures, describing the upper patterns as being produced in a "required quality, thickness, multilayered, or the like," while the surrounding structure consists of a "lightweight fabric quality being as simple and inexpensive as possible," such as a gauze. The method is completed by cutting the upper patterns from the web and incorporating them into a shoe, thereby anticipating all limitations of the independent claims.
  • Key Aspects: Petitioner highlighted that in a prior inter partes review (IPR) filed by Adidas, the Board found that Nishida's U.S. counterpart disclosed every element of the independent claims. However, because Adidas had not asserted a single-reference anticipation ground, the claims were not invalidated, a situation Petitioner sought to remedy.

Ground 2: Claims 1-3, 5-8, 11, 13-17, and 21 are anticipated by Zuckerman under 35 U.S.C. §102.

• Prior Art Relied Upon: Zuckerman (Patent 2,047,724).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Zuckerman, published in 1936, anticipates the claims by disclosing a method of making knitted footwear. Zuckerman teaches knitting a "continuous strip" of fabric that comprises several "blanks" (the textile elements) for slippers. These blanks are formed simultaneously with the surrounding portions of the strip. Petitioner argued Zuckerman expressly discloses multiple different textures within each blank, created by varying stitch configurations (e.g., a herringbone portion with angular ribs versus a non-herringbone portion with parallel ribs), using heavier and more durable yarn for the sole portion, and knitting certain areas more tightly. The process concludes by cutting the blanks from the strip and incorporating them into footwear, anticipating the claimed method.

Ground 3: Claims 9-10 and 19-20 are obvious over Nishida in view of a POSA's general knowledge.

• Prior Art Relied Upon: Nishida (International Publication No. WO 92/22223) and a Person of Ordinary Skill in the Art's (POSA) general knowledge.

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed dependent claims reciting the specific type of knitting machine used: a "wide-tube circular knitting machine" (claims 9, 19) or a "jacquard double needle-bar raschel knitting machine" (claims 10, 20). Petitioner argued that while Nishida teaches the knitting process, it does not specify a particular machine, leaving the selection to a POSA.
  • Motivation to Combine: A POSA, seeking to implement Nishida’s method, would have been motivated to choose from a finite number of known industrial knitting technologies. Circular and raschel knitting machines were well-known, cost-effective, and predictable solutions for producing knitted sheets with varying textures as described by Nishida.
  • Expectation of Success: A POSA would have reasonably expected success in using either machine type. These machines were commercially available and widely known to be suitable for manufacturing knit footwear and other articles, and their selection to perform Nishida's disclosed method would have been a matter of routine design choice.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including claims 3, 9-10, 14, and 19-20 as obvious over Zuckerman in view of a POSA's general knowledge; claim 12 as obvious over Zuckerman in view of Doughty (Patent 2,675,631); and claims 11 and 21 as obvious over Nishida in view of Zuckerman.

4. Key Claim Construction Positions

• Petitioner stated it did not seek new constructions for terms previously construed by the Board in the prior Adidas IPR against the ’749 patent.
• Petitioner adopted the agreed-upon construction for “unitary construction” (claims 11, 21) from co-pending litigation: “configuration wherein portions of a textile element are not joined together by seams or other connections.”
• Petitioner applied the Board's prior construction for “wide-tube circular knitting machine” (claims 9, 19): “a circular knitting machine forming body garment sized, tubular textile structures, including those having a diameter that ranges from 10 inches to 20 inches.”

5. Arguments Regarding Discretionary Denial

• §325(d): Petitioner argued that discretionary denial would be inappropriate because the Examiner materially erred during the original prosecution. The Examiner allowed the claims after accepting the Patent Owner's arguments that Nishida's U.S. counterpart failed to teach simultaneous knitting and differing textures. Petitioner asserted that the Board’s contrary finding on these exact issues in the subsequent Adidas IPR constitutes a new circumstance that demonstrates the Examiner's error and warrants reconsideration of the art.
• §314(a) (Fintiv): Petitioner argued against discretionary denial under Fintiv, emphasizing that the petition presents a compelling case of unpatentability for all challenged claims. Further, Petitioner stipulated that if the IPR is instituted, it will not pursue in the parallel district court proceeding the same invalidity grounds raised in the petition or any grounds that it reasonably could have raised, thus eliminating overlap between the forums.

6. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 1-21 of the ’749 patent as unpatentable.