PTAB

IPR2024-00636

Under Armour Inc v. Athalonz LLC

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1. Case Identification

2. Patent Overview

  • Title: Athletic Positioning Footwear
  • Brief Description: The ’786 patent describes athletic footwear featuring a sole with a distinct geometry. The sole includes a heel platform section of uniform height, a mid-foot section, and a toe section that together form an angled support platform defined by three specific slopes, resulting in the toe section being lower than the heel section to enhance athletic positioning.

3. Grounds for Unpatentability

Ground 1: Claims 1-8 are obvious over Kim

  • Prior Art Relied Upon: Kim (Application # 2004/0040181).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kim, which discloses a golf shoe, teaches all limitations of the challenged claims. Kim describes an outsole with a lower surface inclined from its outer edge to its inner edge, which may be formed only at the front portion of the outsole. Petitioner asserted this structure inherently creates the claimed first, second, and third slopes. For the "uniform height" heel platform, Petitioner argued that since Kim states its shoe is "substantially the same as conventional golf shoes" apart from the inclined outsole, a person of ordinary skill in the art (POSITA) would understand this to include a conventional, uniform-height heel, a known feature in athletic footwear.
    • Motivation to Combine (for §103 grounds): As a single-reference ground, the argument relied on the knowledge of a POSITA. Petitioner contended a POSITA would have understood that conventional athletic shoes, which Kim references, included heel platforms with uniform height and would have seen it as obvious to apply Kim’s inclined forefoot to such a conventional shoe structure.
    • Expectation of Success (for §103 grounds): Success would have been expected as it involved applying a known sole feature (inclined forefoot) to a standard shoe construction (uniform heel).

Ground 2: Claims 1-3, 5-6, and 8 are obvious over Dufour

  • Prior Art Relied Upon: Dufour (Patent 4,754,561).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Dufour’s golf shoe teaches the key limitations of the independent claims. Dufour discloses a sole with a "plantar support zone at the level of the heel that remains substantially parallel to the walking surface," which Petitioner mapped to the claimed uniform-height heel platform establishing a reference slope. Dufour further teaches that the sole's front area is "inclined upwards from the inner edge towards the outer edge," which Petitioner argued discloses the angled support platform and its associated slopes.
    • Motivation to Combine (for §103 grounds): This ground was asserted based on Dufour alone in view of the knowledge of a POSITA. Petitioner argued that the slopes claimed in the ’786 patent are an inherent result of the geometry explicitly disclosed in Dufour, making the claimed invention obvious from Dufour’s teachings.
    • Expectation of Success (for §103 grounds): Petitioner argued a POSITA would have expected success because the claimed features are directly taught or are inherent consequences of the structures disclosed in Dufour.

Ground 3: Claims 2, 4, and 7 are obvious over Dufour in view of Kim

  • Prior Art Relied Upon: Dufour (Patent 4,754,561) and Kim (Application # 2004/0040181).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground built upon the teachings of Dufour to address dependent claims 2, 4, and 7, which recite an insole. Petitioner argued that while Dufour discloses the core sole structure of the independent claims, it does not explicitly disclose an insole. Kim was cited for its express teaching of a golf shoe that includes "an insole... arranged on the bottom of the inside of the upper leather portion."
    • Motivation to Combine (for §103 grounds): A POSITA would combine Dufour with Kim because both are in the same field of golf shoe design and address similar problems of improving foot positioning and support. A POSITA seeking to improve Dufour's shoe would have found it obvious to incorporate a well-known component like an insole, as taught by Kim, to provide common benefits such as additional cushioning, comfort, and stability.
    • Expectation of Success (for §103 grounds): There would have been a high expectation of success, as incorporating an insole into a shoe is a simple, common, and predictable modification in footwear design.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 1-3, 5-6, and 8 based on Rubin (Patent 3,789,523) alone, and against claims 2, 4, and 7 based on Rubin in view of Kim. These grounds relied on similar arguments regarding sole geometry and the motivation to add standard components like insoles.

4. Key Claim Construction Positions

  • For the purposes of the IPR, Petitioner did not propose its own constructions. Instead, it argued that the challenged claims are obvious even under the Patent Owner's apparent construction from parallel litigation. Petitioner specifically addressed the phrase "a heel platform section that has a uniform height from an outer edge to an inner edge," noting Patent Owner appears to construe this to allow for some degree of curvature and height change, and argued the prior art meets the claims even under this broader interpretation.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv would be inappropriate. The petition asserted that the parallel district court litigation is in its early stages, with discovery having just begun. Key milestones, such as claim construction briefing and trial, were scheduled for well after the Board’s institution decision date (August 2024 and March 2025, respectively). Petitioner also stated its intent to seek a stay of the litigation pending the outcome of the IPR.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-8 of the ’786 patent as unpatentable.