PTAB

IPR2024-00638

Under Armour Inc v. Athalonz LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Athletic Positioning Footwear
  • Brief Description: The ’760 patent relates to athletic footwear with a sole designed to provide specific "athletic positioning." The core technology involves a foot platform that positions the big toe area lower than both the heel area and the outer small toe area, combined with a heel area that has substantially no medial-to-lateral slope and a sole bottom that is substantially linear across the ball of the foot.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kim - Claims 1-3, 6-8, and 11 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 independent claim. Kim's outsole has a lower surface inclined from its outer edge to its inner edge, making the outer edge thicker. This structure inherently positions the big toe area lower than the outer small toe area and the heel, which is elevated relative to the front. Petitioner asserted that because Kim is otherwise described as a "conventional golf shoe," a person of ordinary skill in the art (POSITA) would understand its heel to have substantially no medial-to-lateral slope and its sole bottom to be substantially linear at the ball of the foot, as these are common features in such footwear. Dependent claims reciting a mid-foot transition (an inherent feature of any shoe) and a spike pattern (expressly disclosed in Kim) were also allegedly met.
    • Motivation to Combine (for §103 grounds): This ground was based on a single reference in view of the background knowledge of a POSITA. The motivation was simply to build a conventional golf shoe while incorporating Kim's specific inclined sole.
    • Expectation of Success (for §103 grounds): Petitioner implicitly argued success would be expected as the allegedly missing features were standard, well-known elements of conventional athletic shoes.

Ground 2: Obviousness over Dufour - Claims 1-3, 6-8, and 11 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, another golf shoe patent, also discloses the key claim limitations. Dufour teaches an interior support surface that is inclined upwards from the inner edge to the outer edge, positioning the big toe lower than the outer small toe area and the heel. Critically, Dufour expressly disclosed a "plantar support zone 61 at the level of the heel" that "remains substantially parallel to the walking surface," directly teaching the no-slope heel limitation. The bottom of Dufour's outsole was argued to be substantially linear at the ball of the foot. Dependent claims were allegedly met for reasons similar to the Kim analysis, as Dufour also discloses spikes.
    • Motivation to Combine (for §103 grounds): Not applicable, as this is a single-reference obviousness ground.
    • Expectation of Success (for §103 grounds): Not applicable.

Ground 3: Obviousness over Kim and De Obaldia - Claims 4-5 and 9-10 are obvious over Kim in view of De Obaldia

  • Prior Art Relied Upon: Kim (Application # 2004/0040181) and De Obaldia (Patent 4,535,554).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground builds upon the teachings of Kim to address the "stabilizing cup" limitation in dependent claims 4, 5, 9, and 10. Petitioner argued Kim provides the base shoe structure as detailed in Ground 1. De Obaldia, which discloses footwear with anatomical support, was cited for its teaching of a "toe recess 24" and a "recess 26 for accommodating a ball of the wearer's foot." Petitioner asserted that these recesses in De Obaldia constitute the claimed "stabilizing cup" that functions to stabilize and position the toe or ball-of-foot.
    • Motivation to Combine (for §103 grounds): A POSITA would combine the references to improve the sole design of Kim. Since both references are in the field of shoe design and aim to enhance foot positioning and support, a designer seeking to improve the anatomical fit of Kim's shoe would have naturally looked to De Obaldia's known technique of using recesses to provide anatomical support and stabilization.
    • Expectation of Success (for §103 grounds): Petitioner argued a POSITA would have had a high expectation of success, as incorporating molded recesses into a shoe sole was a predictable and well-understood modification in the footwear art.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on Rubin (Patent 3,789,523) alone, and on combinations of Dufour with De Obaldia and Rubin with De Obaldia, relying on similar design modification theories.

4. Key Claim Construction Positions

  • Petitioner argued that for the purposes of the IPR, it would adopt the Patent Owner's apparent constructions from parallel litigation. This includes interpreting "heel area that has substantially no slope" to encompass structures with some degree of curvature and height change, and "bottom of the...sole is substantially linear" to encompass soles that are curved, textured, or have protrusions.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under Fintiv, asserting that the parallel district court case is in its early stages, with discovery having just begun and trial not scheduled until March 2025, well after a potential Final Written Decision (FWD). Petitioner also noted it plans to seek a stay and that the merits of the petition are particularly strong.
  • It was also argued that denial is inappropriate because no prior petitions have been filed challenging the ’760 patent.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-11 of the ’760 patent as unpatentable.