Nike Inc v. SherryWear LLC

1. Case Identification

• Case #: IPR2024-01127
• Patent #: 10,219,551
• Filed: July 17, 2024
• Petitioner(s): Nike, Inc.
• Patent Owner(s): SherryWear LLC
• Challenged Claims: 1-8, 12-13, 15-18

2. Patent Overview

• Title: Pocketed Bra Assembly
• Brief Description: The ’551 patent relates to a bra assembly featuring pockets on the chest strap and back. The invention is directed to a bra with cups, a chest strap, and shoulder straps, where "side patch[es]" are attached to the chest strap to form pockets for holding items.

3. Grounds for Unpatentability

Ground 1: Obviousness over Vidai - Claims 1-6, 8, 12-13, and 15-18 are obvious over Vidai.

• Prior Art Relied Upon: Vidai (European Patent Application # EP211124(A1)).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Vidai, published in 1987, discloses every element of the challenged claims. Vidai teaches a bra with two cups, shoulder straps, and two "side strips" that form a chest strap. Crucially, Vidai discloses "at least one pocket" arranged on a side strip, formed by a "piece of fabric" sewn on at least three edges. Petitioner contended this fabric piece is the claimed "side patch." Vidai further specified that the pocket can be opened on its "upper part" for storing "valuable objects" like bank notes or credit cards, satisfying the limitations of independent claims 1 and 16.
  • Motivation to Combine (for §103 grounds): This ground was primarily asserted based on a single reference. For limitations argued as obvious, such as the pocket holding a "handheld electronic device" (claim 6), Petitioner asserted that a Person of Ordinary Skill in the Art (POSA) would have understood "valuable objects" to include contemporary items like cell phones. To the extent certain features like the pocket extending onto the adjacent cup (claim 12) were not explicitly disclosed, Petitioner argued it would have been an obvious design choice to slightly extend the pocket to increase storage space and improve ease of access.
  • Expectation of Success: A POSA would have a high expectation of success in making minor modifications, such as adjusting pocket size or placement, as these are simple and predictable variations in garment design.

Ground 2: Obviousness over Handras - Claims 1-6, 8, 12-13, and 15-18 are obvious over Handras.

• Prior Art Relied Upon: Handras (Application # 2014/0051331).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Handras, published in 2014, also discloses all elements of the primary challenged claims. Handras teaches a bra with cups, shoulder straps, and side panels that function as a chest strap. It explicitly discloses a zippered pocket on the inside of each side panel, formed by a "panel of fabric sewn or otherwise secured to the side panel." Petitioner mapped this fabric panel to the claimed "side patch." Handras expressly contemplated the pocket holding items such as "credit cards, car keys, cell phones and the like," directly teaching the limitation of claim 6.
  • Motivation to Combine (for §103 grounds): As a single-reference ground, the core argument was that Handras taught all claim elements. For limitations requiring obviousness arguments (e.g., claim 12, pocket extending onto the cup), Petitioner argued that modifying the pocket's size to meet different storage needs is a simple design choice explicitly contemplated by Handras. A POSA would be motivated to extend the pocket for increased storage or improved access, a routine modification in apparel design.
  • Expectation of Success: A POSA would have a high expectation of success in modifying the size or shape of the pocket taught by Handras, as it involves well-known sewing and garment construction techniques with predictable results.

Ground 3: Obviousness of Back Pocket Feature - Claim 7 is obvious over Vidai or Handras in view of Spagna or Glass.

• Prior Art Relied Upon: Vidai (EP211124(A1)) or Handras (Application # 2014/0051331) in view of Spagna (Application # 2007/0298684) or Glass (Patent D641,954).
• Core Argument for this Ground:
  • Prior Art Mapping: Claim 7 adds limitations for a "central area at a back" where the shoulder straps and chest strap join together, and a "back pocket on the central area." While Vidai and Handras teach the side pockets, they do not show this specific "racerback" style with a back pocket. Petitioner argued that both Spagna and Glass remedy this deficiency. Both references disclose sports bras with a racerback design where the shoulder straps converge to form a "central area" on the back, and both explicitly teach a pocket located in this central area.
  • Motivation to Combine: A POSA designing a bra with pockets would be motivated to look to the prior art for popular and functional features. A POSA would combine the easily accessible side pockets of Vidai or Handras with the popular racerback style and additional storage pocket taught by Spagna or Glass. This combination would create a more versatile product that appeals to a broader range of consumers, particularly those interested in sports bras, by offering multiple storage options.
  • Expectation of Success: Combining known features from different bra designs—side pockets from one, a racerback with a back pocket from another—was argued to be a routine modification. The outcome would be predictable, as it involves integrating well-understood garment elements.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under Fintiv, stating that the Final Written Decision (FWD) in the IPR is likely to issue before trial in the parallel district court litigation. Investment in the litigation was described as minimal, with fact discovery in its early stages.
• Petitioner also argued against denial under §325(d), contending that the primary prior art references (Vidai, Spagna, Glass) were never considered by the PTO during prosecution. While Handras was cited in an Information Disclosure Statement, it was never used as the basis for a rejection, which Petitioner characterized as a material oversight by the examiner.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-8, 12-13, and 15-18 of Patent 10,219,551 as unpatentable.