Under Armour Inc v. Athalonz LLC

1. Case Identification

• Case #: IPR2024-00640
• Patent #: 11,510,456
• Filed: March 4, 2024
• Petitioner(s): Under Armour, Inc.
• Patent Owner(s): Athalonz, LLC
• Challenged Claims: 1-5, 7, 9-15, and 17

2. Patent Overview

• Title: Athletic Positioning Footwear
• Brief Description: The ’456 patent relates to athletic footwear with a sole section comprising two key features: a heel platform of substantially uniform height and a forefoot platform constructed to be more compressible near its inner edge than its outer edge to facilitate an athletic position.

3. Grounds for Unpatentability

Ground 1: Claims 1-5, 7, and 12-14 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 discloses a golf shoe with a substantially uniform heel platform and a dual-material forefoot that is softer and more compressible on the inner side than the outer side. This meets most limitations of the challenged claims. However, Won does not explicitly teach a gradient of compressibility from the inner to the outer edge, as required by independent claim 1. Petitioner asserted that Norton remedies this deficiency by teaching a method to create a sole from a single material with a continuously varying density and hardness across its width. This variable density, designed to address foot pronation, provides the claimed "gradient compression factor."
  • Motivation to Combine: A POSITA would combine Norton's single-material, variable-density sole with Won's general shoe design. Both references are in the same field of athletic shoe design and address sole compressibility to improve stability. Norton presents its technology as a direct improvement over two-material soles like Won's, citing advantages such as avoiding material bonding issues and providing a more gradual alteration of forces.
  • Expectation of Success: A POSITA would have a high expectation of success in making this combination, as Norton explicitly discusses replacing dual-material soles with its improved single-material variable-density sole in a predictable art field.

Ground 2: Claims 1-5, 7, 9-15, and 17 are obvious over Umezawa

• Prior Art Relied Upon: Umezawa (Application # 2007/0107258).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that the Umezawa reference alone renders all challenged claims obvious. Umezawa teaches an athletic shoe midsole for golfers comprising a "low elastic part" on the inner side and a "high elastic part" on the outer side. The thickness of these two parts gradually changes along an inclined interface, resulting in a continuous change in compression from the inside to the outside, thereby satisfying the "gradient compression factor" limitation. Umezawa also discloses that its novel midsole has a consistent thickness and is incorporated into an otherwise conventional golf shoe. Petitioner argued that a POSITA would understand a "known" golf shoe to have a heel platform of substantially uniform height, thus meeting all claim limitations.

Ground 3: Claims 1-5, 7, 9-15, and 17 are obvious over Talarico '911

• Prior Art Relied Upon: Talarico '911 (Patent 4,642,911).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Talarico '911 alone discloses every element of the challenged claims. Talarico '911 teaches a midsole with dual-density materials where the lateral (outer) half of the forefoot is denser than the medial (inner) half, causing greater compression on the inner edge. An embodiment using a 45-degree angled interface between materials provides for a "more even and gradual alteration" of forces, satisfying the "gradient" limitation. Talarico '911 further states that its rearfoot portion is of "constant thickness across the width," directly teaching the claimed uniform heel platform.
  • Key Aspects: Petitioner emphasized that during the prosecution of a related patent with claims identical to claims 1-5, 7, and 9 of the ’456 patent, the Examiner rejected those claims as anticipated by Talarico '911, and the Patent Owner did not refute that finding.

• Additional Grounds: Petitioner asserted an additional obviousness challenge based on the combination of Won and Talarico '911, as well as single-reference obviousness grounds based on Won and Norton individually.

4. Key Claim Construction Positions

• "gradient compression factor": Petitioner argued this term, which is undefined in the patent, should be construed to mean a forefoot platform that becomes "increasingly less compressible" from its inner edge toward its outer edge. This construction is crucial for mapping prior art like Norton and Umezawa that discloses gradual changes in sole hardness.
• "heel platform having a first height that is substantial uniform...": Petitioner did not propose a specific construction, instead adopting the Patent Owner's apparent construction from parallel litigation for the purposes of the IPR. This construction appears to permit some curvature and height variation, which Petitioner contended is still met by prior art references disclosing soles of consistent thickness.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §325(d). The core argument was that the key prior art and arguments were not previously presented to the Patent Office. Specifically, the Won reference was never before the examiner, and while Norton, Umezawa, and Talarico '911 were cited in an IDS, they were never substantively reviewed or used as the basis for a rejection. Petitioner also alleged examiner error, pointing out that claims identical to those in the ’456 patent had been rejected over Talarico '911 during prosecution of a related patent.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-5, 7, 9-15, and 17 of the ’456 patent as unpatentable.