Under Armour Inc v. Athalonz LLC

1. Case Identification

• Case #: IPR2024-00639
• Patent #: 11,375,768
• Filed: March 4, 2024
• Petitioner(s): Under Armour, Inc.
• Patent Owner(s): Athalonz, LLC
• Challenged Claims: 1-5, 8

2. Patent Overview

• Title: Athletic Positioning Footwear
• Brief Description: The ’768 patent relates to an athletic shoe with a sole section that includes two key features: a heel platform with a substantially uniform height around its perimeter, and a forefoot platform constructed of a material with a "gradient compression factor," making it more compressible near its inner edge than its outer edge.

3. Grounds for Unpatentability

Ground 1: Claims 1-5, 8 are obvious over Umezawa in view of Gallas

• Prior Art Relied Upon: Umezawa (Application # 2007/0107258) and Gallas (Application # 2010/0242307).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Umezawa taught a golf shoe with a forefoot platform composed of a "low elastic part" and a "high elastic part." This construction allegedly created a gradient compression factor where the inner part compressed more than the outer part to improve a golfer's swing. To the extent Umezawa did not expressly disclose a heel platform with a uniform height or a sole that is thicker near the heel than the toe, Petitioner asserted that Gallas taught these exact features. Gallas disclosed a golf shoe with an elevated heel and a heel-to-toe drop to improve a golfer's stance, weight distribution, and performance.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Umezawa and Gallas because both references address the same problem of improving a golfer's stance and weight distribution through sole design. Petitioner contended a POSITA would naturally look to Gallas to improve Umezawa’s sole by incorporating the well-known and beneficial feature of a heel-to-toe drop, which provides enhanced stability and athletic performance.
  • Expectation of Success: Petitioner asserted a POSITA would have a reasonable expectation of success, as incorporating the sole shape from Gallas into the shoe of Umezawa was a predictable modification of known design elements to achieve a known benefit.

Ground 2: Claims 1-5, 8 are obvious over Won in view of Norton

• Prior Art Relied Upon: Won (Patent 6,158,151) and Norton (Patent 7,464,428).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Won disclosed a golf shoe with the core elements of the invention, including a sole with a soft inner surface and a hard outer surface to facilitate tilting the foot inward for a stable swing. Won also disclosed shoe designs with a substantially uniform heel height. Petitioner asserted that Norton taught the specific "gradient compression factor" by disclosing a sole element made from a single material with a continuously varying density distribution. This design created a sole that becomes increasingly less compressible from one side to the other to treat pronation and supination.
  • Motivation to Combine: A POSITA would be motivated to substitute Won's dual-material design with Norton’s single-material, variable-density sole. Norton explicitly identified the disadvantages of prior art dual-material soles (like Won's), such as increased labor costs and interconnection problems, and proposed its single-material method as a superior solution that provided a more gradual and effective compression gradient.
  • Expectation of Success: Petitioner argued success would be highly predictable because Norton specifically contemplated its technology as a replacement for dual-material soles like the one disclosed in Won. A POSITA could easily replace Won's sole with Norton's to gain the benefits of improved manufacturability and a more even compression gradient.

Ground 3: Claims 1-5, 8 are obvious over Won in view of Talarico '911

• Prior Art Relied Upon: Won (Patent 6,158,151) and Talarico ’911 (Patent 4,642,911).

• Core Argument for this Ground:

  • Prior Art Mapping: Similar to the previous ground, Petitioner relied on Won for the basic structure of a dual-density golf shoe. It then turned to Talarico ’911 for the teaching of an "increasingly less compressible" forefoot. Talarico ’911 disclosed a dual-density midsole where the two materials mesh at a 45-degree angle. This structure was designed to create "a more even and gradual alteration of the weight-bearing gravitational forces" across the forefoot.
  • Motivation to Combine: Petitioner contended that Talarico ’911 was designed to improve upon the exact type of side-by-side, dual-density soles disclosed in Won. A POSITA would have been motivated to replace the simple vertical interface in Won’s sole with the angled, meshing interface from Talarico ’911 to achieve a more gradual transition in compressibility and better foot alignment, as explicitly taught by Talarico ’911.
  • Expectation of Success: The combination was presented as a predictable substitution of one type of dual-density interface for an improved one to gain known benefits. The Examiner in the ’768 patent’s prosecution history had noted that Talarico ’911 taught forming a forefoot platform with a gradient compression factor.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including grounds that claims 1-5 and 8 are obvious over Umezawa alone and Norton alone. A further ground argued claims 1-5 and 8 are obvious over Won in view of Talarico '911 and further in view of Gallas to supply the teaching of a uniform heel platform if not found in the primary combination.

4. Key Claim Construction Positions

• "Gradient Compression Factor": Petitioner argued that based on the patent’s specification and figures, a POSITA would understand this term to mean that the forefoot platform becomes "increasingly less compressible" from its inner edge to its outer edge.
• "Heel Platform Having a First Height That is Substantially Uniform...": Petitioner stated this term did not require construction for the IPR. However, for the purposes of its arguments, Petitioner adopted the Patent Owner's apparent construction from parallel litigation, which Petitioner characterized as allowing for some degree of curvature and height change across the heel platform.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) based on Fintiv factors. It contended that the co-pending district court litigation is in a very early stage, with claim construction briefing not scheduled until well after the institution decision and trial not until March 2025. Petitioner also stated its intent to seek a stay of the litigation pending the outcome of the IPR.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-5 and 8 of the ’768 patent as unpatentable.