PTAB

IPR2024-00637

Under Armour Inc v. Athalonz LLC

Log In

1. Case Identification

2. Patent Overview

  • Title: Athletic Positioning Footwear
  • Brief Description: The ’291 patent relates to athletic footwear designed to create a specific "athletic positioning shape." This shape is defined by a combination of the shoe's midsole, insole, and outsole having a specific relationship of three heights: a first height at the heel is greater than a second height at the outside toe section, which is in turn greater than a third height at the inside toe section.

3. Grounds for Unpatentability

Ground 1: Obviousness Based on Kim - Claims 1-5 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 or suggests all limitations of claims 1-5. Kim describes an outsole with a lower surface inclined from its outer edge to its inner edge, making the outer edge thicker than the inner edge. This inclination is disclosed for the front portion of the outsole. Petitioner asserted that a Person of Ordinary Skill in the Art (POSITA) would understand that conventional golf shoes, which Kim otherwise purports to be, have a heel section that is elevated relative to the toe section. The combination of Kim’s explicitly inclined toe section and the conventional elevated heel of athletic shoes would result in the claimed height relationships (first height > second height > third height) and the inherently formed slopes between these points. Dependent claims 2-5, which add limitations regarding mid-foot sections and additional heights, were allegedly also taught or suggested by the overall shape disclosed in Kim’s figures.
    • Motivation to Combine (for §103 grounds): This ground relied on a single reference in view of the background knowledge of a POSITA. The motivation was to apply known design principles of conventional athletic shoes (e.g., elevated heels for support and cushioning) to the specific stability-enhancing sole design of Kim.
    • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success, as combining a known sole inclination with a conventional heel structure involves predictable design choices.

Ground 2: Obviousness over Dufour in view of Kim - Claims 1-5 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: Petitioner contended that Dufour, which also discloses a golf shoe, teaches the core "athletic positioning shape" of claim 1. Dufour’s sole includes an interior support surface that is inclined upward from the inner edge to the outer edge in the front area, while the heel area remains substantially parallel to the ground. This configuration allegedly disclosed the claimed relationship where the heel height (first height) is greater than the outer toe height (second height), which is greater than the inner toe height (third height). However, Dufour did not expressly disclose a separate midsole or insole. Kim was cited to provide the teaching of an "intermediate sole" (midsole) and an "insole" as conventional components of a golf shoe.
    • Motivation to Combine (for §103 grounds): A POSITA would combine the teachings of Dufour and Kim because both references address the same problem of improving a golfer's stance using a sloped sole. To improve the comfort, cushioning, and stability of Dufour’s shoe, a POSITA would have been motivated to incorporate the well-known and conventional midsole and insole components as taught by Kim.
    • Expectation of Success (for §103 grounds): The integration of standard components like a midsole and insole into the shoe design of Dufour was argued to be a simple, predictable modification with a high expectation of success.

Ground 3: Obviousness over Rubin in view of Kim - Claims 1-5 are obvious over Rubin in view of Kim.

  • Prior Art Relied Upon: Rubin (Patent 3,789,523) and Kim (Application # 2004/0040181).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Rubin’s golf shoe disclosed the claimed height relationships. Rubin teaches a wedge-shaped sole where the outer side extends to a lower elevation than the inner side, causing the golfer's foot to tilt inward. This design, combined with a conventional heel, allegedly resulted in the first height (heel) being greater than the second height (outer toe) and the second height being greater than the third height (inner toe). Similar to the argument against Dufour, Petitioner asserted that Rubin did not explicitly detail a separate midsole and insole. Kim was again relied upon to supply these missing, but conventional, elements.
    • Motivation to Combine (for §103 grounds): The motivation was identical to that asserted in Ground 2. A POSITA seeking to improve the Rubin design would naturally look to other art in the same field, like Kim, to incorporate common components for enhanced cushioning and comfort. Both Rubin and Kim teach sloped soles for improved athletic performance, making the combination logical.
    • Expectation of Success (for §103 grounds): A POSITA would have easily modified Rubin's sole to include the midsole and insole from Kim with a predictable and successful outcome.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise discretionary denial under Fintiv. The parallel district court litigation was in its very early stages, with discovery having only recently begun and claim construction briefing not scheduled until August 2024. The trial was not scheduled until March 2025, well after a potential Final Written Decision (FWD) in the inter partes review (IPR). Petitioner also stated its intent to seek a stay of the litigation and asserted that the merits of the petition are particularly strong. Further, Petitioner argued that denial would be inappropriate under General Plastic factors because no prior petition had been filed challenging the claims of the ’291 patent.

5. Relief Requested

  • Petitioner requested institution of an IPR and cancellation of claims 1-5 of the ’291 patent as unpatentable.