Nike Inc v. SherryWear LLC

1. Case Identification

• Case #: IPR2024-01122
• Patent #: 9,289,016
• Filed: July 17, 2024
• Petitioner(s): NIKE, Inc.
• Patent Owner(s): SherryWear LLC
• Challenged Claims: 1, 2, 4, and 7

2. Patent Overview

• Title: Bra with Integrated Pocket System
• Brief Description: The ’016 patent describes a bra pocket system combination. The invention features a side patch on the chest strap that forms a pocket, with a key limitation being that the pocket extends from the chest strap partially onto the adjacent bra cup to hold items like handheld electronic devices.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, 4, and 7 are obvious over Vidai in view of Pintor.

• Prior Art Relied Upon: Vidai (EP 211124 A1) and Pintor (Patent 7,753,759).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Vidai, a 1985 European patent application, discloses all primary elements of independent claim 1. Vidai teaches a bra with cups, shoulder straps, and a chest strap ("side strip") featuring a sewn-on fabric patch to form a pocket for holding valuables. Petitioner asserted Vidai’s pocket is located on the side of the chest strap adjacent to the cup, and that it would have been an obvious design choice to extend this pocket slightly onto the cup to increase storage space, thereby meeting the final limitation of claim 1. For dependent claims, Petitioner contended that Vidai’s disclosure of a zipper teaches the "closure" of claim 7 and that its pocket for "valuables" would be understood by a POSITA to include a "handheld electronic device" (claim 4). For claim 2, Petitioner argued that while Vidai does not specify the cup material, Pintor teaches using resilient polyurethane foam for bra cups, making the substitution obvious.
  • Motivation to Combine: A POSITA designing a pocketed bra would combine Vidai’s accessible side-pocket design with Pintor's comfortable polyurethane cup material. The motivation was to create a commercially desirable product that incorporated the benefits of both references—convenient storage and enhanced comfort.
  • Expectation of Success: A POSITA would have a high expectation of success, as combining known elements like specific fabrics with a standard bra design involves routine modifications with predictable and well-understood results.

Ground 2: Claims 1, 2, 4, and 7 are obvious over Handras in view of Pintor.

• Prior Art Relied Upon: Handras (Application # 2014/0051331) and Pintor (Patent 7,753,759).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Handras discloses a conventional bra structure with cups, shoulder straps, and a chest strap ("side panel") including a pocket formed by a fabric patch. This pocket is disclosed for holding items including cell phones, which Petitioner contended meets the limitation of claim 4. Handras further discloses using a zipper for closure, satisfying claim 7. Petitioner asserted that Handras’s pocket on the side panel is adjacent to the cup and that, similar to the Vidai argument, it would be an obvious modification to extend it onto the cup for increased storage. For dependent claim 2, Petitioner argued that Handras discloses using a "resilient foam material" for the cups, and it would be obvious to use the specific resilient polyurethane foam taught by Pintor for its known benefits.
  • Motivation to Combine: The motivation was to improve upon the bra in Handras by incorporating the comfortable and resilient polyurethane cup material expressly taught by Pintor. This combination would leverage known materials to enhance a known design, creating a more appealing product for consumers.
  • Expectation of Success: Success was expected to be high because the combination involves applying a known, suitable material (Pintor's polyurethane) to a known bra structure (Handras's pocketed bra). The function of each element would remain unchanged and predictable.

4. Arguments Regarding Discretionary Denial

• Petitioner presented substantial arguments that discretionary denial under §314(a) (Fintiv) and §325(d) is unwarranted.
• Arguments against Fintiv Denial: Petitioner argued that the Fintiv factors strongly favor institution. It asserted that a Final Written Decision (FWD) in the IPR would likely issue well before the trial date in the parallel district court litigation. Furthermore, investment in the district court case has been limited, with discovery in its early stages.
• Arguments against §325(d) Denial: Petitioner argued that denial is inappropriate because the grounds are not the same or substantially the same as those previously presented to the PTO. The primary references, Vidai and Handras, were never considered during the prosecution of the ’016 patent. Although Pintor was cited by the Examiner, it was only as a secondary reference for a different purpose. Petitioner contended the Examiner materially erred by failing to consider Pintor’s most relevant teachings, especially in combination with more pertinent art like Vidai or Handras that specifically disclose chest-strap pockets.

5. Relief Requested

• Petitioner requests that the Board institute an inter partes review and cancel claims 1, 2, 4, and 7 of the ’016 patent as unpatentable.