PTAB

IPR2024-01124

Nike Inc v. SherryWear LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Pocket Bra Assembly
  • Brief Description: The ’878 patent discloses a brassiere or chest covering with integrated pockets. The claimed pocket locations include on the chest strap adjacent to the cups, on the back of the bra in a central area, and on the front surface intermediate the breast cups.

3. Grounds for Unpatentability

Ground 1: Obviousness over Vidai and Spagna - Claims 1-4, 11, 14, 15, and 17 are obvious over Vidai in view of Spagna.

  • Prior Art Relied Upon: Vidai (European Patent Application EP211124(A1)) and Spagna (Application # 2007/0298684).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Vidai, filed in 1985, discloses all limitations of independent claims 1 and 15. Specifically, Vidai teaches a bra with cups, a chest strap, and a side pocket formed by a patch on the chest strap. Petitioner asserted that Vidai’s figures clearly show the side patch’s upper edge lying along the same edge line as a portion of the top edge of the chest strap, a key limitation added during prosecution of the ’878 patent. For the dependent claims, Petitioner argued that modifying Vidai’s bra to include additional pockets as taught by Spagna would have been obvious. Spagna was cited to teach a back pocket on a central area where shoulder straps join (for claim 3) and a central pocket intermediate the left and right cups (for claim 14). Claim 4’s closure limitation was argued to be inherently disclosed by Vidai’s teaching of a zipper.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) designing a bra with pockets would combine the teachings of Vidai and Spagna to increase the amount of storage space and provide consumers with a variety of pocket location options. Petitioner contended that combining these known elements from the same field (bras with pockets) to perform their known functions is a simple and predictable design choice.
    • Expectation of Success: A POSA would have had a high expectation of success in combining the references. The proposed modifications involved routine garment construction techniques applied to similar articles (bras), which is simple and predictable technology.

Ground 2: Obviousness over Handras and Spagna - Claims 1-4, 11, 14, 15, and 17 are obvious over Handras in view of Spagna.

  • Prior Art Relied Upon: Handras (Application # 2014/0051331) and Spagna (Application # 2007/0298684).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented an alternative to Ground 1, with Handras serving as the primary reference. Petitioner argued that Handras, like Vidai, discloses a conventional bra with a zippered side pocket on the chest strap adjacent to the cups. Petitioner asserted that Handras’s figures and description teach a rectangular patch forming the pocket with an upper edge that lies along the top edge of the chest strap, thus meeting the key limitations of independent claims 1 and 15. The combination with Spagna was argued for the same reasons as in Ground 1: Spagna provides the explicit teachings for the back pocket (claim 3) and intermediate front pocket (claim 14) that could be added to the Handras bra.
    • Motivation to Combine: The motivation was identical to that in Ground 1. A POSA would be motivated to combine Handras's side pocket design with Spagna's back and intermediate pocket designs to create a garment with enhanced utility and more storage options, appealing to a wider range of consumer preferences for carrying items like keys, cards, or electronic devices.
    • Expectation of Success: The expectation of success was argued to be high for the same reasons as in Ground 1. Both Handras and Spagna relate to bras with pockets, and combining their respective features would involve nothing more than routine modifications well within the skill of a POSA.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under both 35 U.S.C. §314(a) and §325(d).
  • Fintiv Factors (§314(a)): Petitioner contended that the factors weigh in favor of institution. It argued that the parallel district court litigation is in its early stages, with fact discovery just beginning and a trial date not yet set, making it likely the Board’s Final Written Decision (FWD) would issue first. Petitioner also asserted the merits of the petition are strong.
  • Same or Substantially Same Prior Art (§325(d)): Petitioner argued that denial would be improper because the primary references, Vidai and Spagna, were never cited or considered during the prosecution of the ’878 patent. Although Handras was listed on an Information Disclosure Statement, it was never used as the basis for a rejection. Petitioner asserted that the Examiner committed a material error by not applying Handras, as it allegedly teaches the very limitation (the side patch upper edge alignment) that the applicant used to overcome a rejection based on different prior art.

5. Relief Requested

  • Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 1-4, 11, 14, 15, and 17 of the ’878 patent as unpatentable.