Nike Inc v. SherryWear LLC

1. Case Identification

• Case #: IPR2024-01126
• Patent #: 10,219,550
• Filed: July 17, 2024
• Petitioner(s): Nike, Inc.
• Patent Owner(s): SherryWear LLC
• Challenged Claims: 1-14

2. Patent Overview

• Title: Pocket Bra
• Brief Description: The ’550 patent relates to a conventional brassiere with pockets formed on the cups for storing personal items. The invention discloses a patch attached to at least one bra cup to form a pocket capable of repeated use while being worn.

3. Grounds for Unpatentability

Ground 1: Claims 1-14 are obvious over Barg in view of Pintor

• Prior Art Relied Upon: Barg (Patent 3,518,998) and Pintor (Patent 7,753,759).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Barg, filed in 1968, discloses all fundamental elements of the challenged claims. Barg teaches a conventional brassiere with left and right cups, a strap assembly including a chest strap, and a patch on the inner surface of each cup to form a pocket for storing valuables. Barg’s pocket is formed by attaching an inner and outer section of fabric along their side and bottom areas, leaving the top edge open. Petitioner contended that this structure meets the limitations of independent claims 1 and 8, including the specific edges of the cup and patch, the attachment method creating a top-side opening, and the pocket’s capability for repeated use. For dependent claims requiring a pocket on only one cup (e.g., claim 2), Petitioner asserted this is an obvious design choice taught by Pintor.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings of Barg and Pintor to achieve predictable results. To address the single-pocket limitation, a POSITA would have been motivated to modify Barg’s two-pocket design to Pintor’s one-pocket design simply to reduce manufacturing costs and complexity. For limitations requiring stitching, a POSITA would have been motivated to use stitching, as taught by Pintor, because it is a simple, economical, and well-known method for attaching fabric pieces in garment construction.
  • Expectation of Success: A POSITA would have had a high expectation of success in making these modifications. Both references relate to pocket bras, and the proposed changes involve applying conventional garment manufacturing techniques (like stitching or reducing the number of pockets), which would yield predictable and successful results.

Ground 2: Claims 1-14 are obvious over York in view of Pintor

• Prior Art Relied Upon: York (Patent 2,920,628) and Pintor (Patent 7,753,759).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that York, filed in 1958, provides an alternative basis for obviousness. York discloses a brassiere with a pocket on the interior surface of one breast cup for holding valuables like jewelry or money. It explicitly teaches the core elements of the claims: a strap assembly with a chest strap, left and right cups, and a pocket-forming panel (patch) attached by stitching to the lower and side edges of a cup, creating an opening along the upper edge. Petitioner asserted that York alone or with a POSITA’s general knowledge meets most limitations. For claims requiring pockets on both cups (e.g., claim 6), it would have been obvious to add a second pocket to York’s single-pocket design.
  • Motivation to Combine: A POSITA would be motivated to modify York for several reasons. First, to provide more storage, a POSITA would obviously add a pocket to the second cup, as the utility of pockets was well-known. Second, for claim 8’s limitation that the pocket opening faces the interior edge of the cup, Petitioner argued that modifying York’s pocket orientation is a matter of simple design choice. A POSITA would be motivated to reorient the opening to make access easier for the wearer or to better protect the pocket's contents, a modification involving only a routine adjustment to a known sewing technique.
  • Expectation of Success: A POSITA would have had a high expectation of success. Modifying York by adding a second pocket or reorienting the existing pocket’s opening are simple, predictable mechanical changes in the well-established field of garment design, carrying no technical uncertainty.

• Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 1-14 based on Handras (Application # 2014/0051331) in view of Pintor. This ground relied on similar arguments, mapping the elements of a multi-ply pocket bra from Handras and using Pintor to support modifications like creating a single-pocket version.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under both 35 U.S.C. §314(a) (Fintiv) and §325(d). Regarding Fintiv, Petitioner asserted that the Final Written Decision (FWD) in the IPR would likely issue before the trial in the parallel district court litigation, and that the court and parties have invested limited resources to date, as discovery is in its early stages.
• Regarding §325(d), Petitioner argued that its grounds are based on new prior art and arguments. The primary references of Barg, York, and Handras were never considered during the prosecution of the ’550 patent. Although Pintor was cited during prosecution of a grandparent application, it was only as a secondary reference to a less relevant patent (Newman, which taught pockets for bra padding). Petitioner contended the Examiner materially erred by failing to appreciate Pintor’s full teachings in combination with more pertinent primary art like Barg or York, which are directed to storing personal items, not padding.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-14 of the ’550 patent as unpatentable.