Nike Inc v. SherryWear LLC

1. Case Identification

• Case #: IPR2024-01128
• Patent #: 10,244,800
• Filed: July 17, 2024
• Petitioner(s): Nike, Inc.
• Patent Owner(s): SherryWear LLC
• Challenged Claims: 1, 2, 3, 5, 7, and 10

2. Patent Overview

• Title: Pocket Bra Assembly
• Brief Description: The ’800 patent discloses a pocket bra assembly featuring a bra portion, a strap assembly (chest and shoulder straps), and a back pocket. The key claimed features are that the back pocket is formed entirely of stretchable fabric and has an opening that is biased in a closed position at rest.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, 3, 5, 7, and 10 are obvious over Spagna.

• Prior Art Relied Upon: Spagna (Application # 2007/0298684).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Spagna, which discloses a brassiere with an integrated pouch on the back for holding a medication dispensing device, teaches nearly all limitations of the challenged claims. Spagna’s racerback design shows shoulder straps joining at a central back area where a pocket is located on the chest strap. Petitioner contended that Spagna’s disclosure of holding items "safely maintained, even while the wearer is active" inherently teaches or suggests a pocket opening that is biased closed at rest to secure its contents.
  • Motivation to Combine: While asserting Spagna discloses all limitations, Petitioner argued in the alternative that a person of ordinary skill in the art (POSA) would be motivated to modify Spagna for obvious reasons. A POSA would find it obvious to manufacture Spagna's pocket with stretchable material, a well-known fabric for athletic apparel, to better accommodate and secure items of various shapes.
  • Expectation of Success: A POSA would have a high expectation of success in making the pocket from stretchable fabric or ensuring it was biased closed, as these were common, well-understood design choices for athletic and storage garments.

Ground 2: Claims 1, 2, 3, 5, 7, and 10 are obvious over Rose.

• Prior Art Relied Upon: Rose (Application # 2011/0223832).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Rose discloses a brassiere with "clear latex pockets" on the back band, where latex is an inherently stretchable fabric. This teaches the core structure of a bra with a strap assembly and a back pocket made of stretchable material. Rose’s pockets are for holding decorative inserts, but Petitioner argued their fundamental structure meets the claim limitations.
  • Motivation to Combine: A POSA would be motivated to modify Rose to render the pocket "biased in a closed position at rest." This modification is a simple design choice to better secure items, a known problem with a known solution (e.g., using elastic materials or fasteners). Further, a POSA would be motivated to apply Rose's pocket concept to a sports bra (claim 2) to meet consumer demand for customizable athletic wear and for carrying items during exercise.
  • Expectation of Success: Modifying a pocket to be biased closed was a routine and predictable design task for a POSA, ensuring a high expectation of success.

Ground 3: Claims 1, 2, 3, 5, 7, and 10 are obvious over Glass.

• Prior Art Relied Upon: Glass (Design Patent D641,954).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Glass, a design patent for a "Sports Bra with Water Bottle Pocket on Back," expressly discloses a sports bra (claim 2) with a back pocket located at a central area where racerback shoulder straps converge (claim 5). Petitioner contended that the figures in Glass, showing the pocket lying flat when empty and expanding to hold a bottle, inherently disclose that the pocket is made of stretchable fabric and is biased in a closed position at rest. The short-segmented broken lines in the figures are alleged to represent stitching, meeting the limitations of claim 7.
  • Motivation to Combine: As an alternative to inherent disclosure, Petitioner argued a POSA would find it obvious to make the pocket of Glass from stretchable material. Given that Glass is a sports bra and its pocket is for a bulky item, using stretchable fabric would be an obvious and desirable design choice to ensure a snug fit and security.
  • Expectation of Success: Using stretchable fabric for a pocket on a sports bra was a common and predictable design choice, leading to a clear expectation of success.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) (Fintiv), asserting that a Final Written Decision (FWD) is likely to issue before the trial in the parallel district court litigation. The Petitioner noted that investment in the litigation is minimal, as fact discovery is in the early stages and no depositions have occurred.
• Petitioner also argued against denial under §325(d), stating that the primary references (Spagna, Rose, and Glass) were not cited or considered during the original prosecution of the ’800 patent. Therefore, the petition raised new arguments based on new art, which are not cumulative of those previously considered by the PTO.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, 3, 5, 7, and 10 of the ’800 patent as unpatentable.