Nike Inc v. SherryWear LLC

1. Case Identification

• Case #: IPR2024-01129
• Patent #: 10,869,510
• Filed: July 17, 2024
• Petitioner(s): NIKE, Inc.
• Patent Owner(s): SherryWear LLC
• Challenged Claims: 1, 2, 4, 5, 7, 9, and 11

2. Patent Overview

• Title: Pocket Bra
• Brief Description: The ’510 patent discloses a brassiere featuring an integrated pocket on its back. The challenged claims are directed to a pocket bra comprising a strap assembly, a bra portion, and a back pocket positioned on a central area of the wearer's back that is formed entirely of stretchable fabric and has an opening biased in a closed position at rest.

3. Grounds for Unpatentability

Ground 1: Obviousness over Spagna - Claims 1, 2, 4, 5, 7, 9, and 11 are obvious over Spagna.

• Prior Art Relied Upon: Spagna (Application # 2007/0298684).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Spagna discloses every element of the challenged claims, either explicitly or by rendering them obvious to a person of ordinary skill in the art (POSA). Spagna teaches a racerback-style brassiere with an integrated pouch on the "center back" for holding a medication dispensing device. This disclosure meets the limitations of a pocket bra with a strap assembly, bra portion, and a centrally located back pocket. For limitations not expressly disclosed, such as the pocket being made "entirely of stretchable fabric," Petitioner asserted a POSA would find it obvious to use common stretchable materials like spandex to allow the pocket to expand and accommodate objects of various shapes.
  • Motivation to Combine (with POSA knowledge): A POSA would be motivated to modify Spagna's pocket to be made of stretchable fabric to enhance its primary function of securely holding items. Similarly, a POSA would understand that a pocket intended to hold items securely during activity, as described in Spagna, should be "biased in a closed position at rest" to prevent contents from falling out. This was a known design principle for athletic apparel pockets.
  • Expectation of Success: A POSA would have a high expectation of success in making these modifications, as they involved applying conventional materials and well-known design features for pockets in apparel to achieve a predictable result.

Ground 2: Obviousness over Rose - Claims 1, 2, 4, 5, 7, 9, and 11 are obvious over Rose.

• Prior Art Relied Upon: Rose (Application # 2011/0223832).
• Core Argument for this Ground:
  • Prior Art Mapping: Rose discloses a brassiere with "clear latex pockets" on the back band. Petitioner argued that latex is inherently a "stretchable fabric" and that Rose’s back pockets meet the pocket limitation. Rose also discloses the requisite bra portion with cups and a strap assembly. However, Rose's straps do not converge at a central area on the back. Petitioner contended it would have been obvious to a POSA to modify Rose’s conventional strap design to a racerback configuration, a popular and common design for sports bras. This modification would inherently position Rose’s back pockets on the "central area" of the bra's back.
  • Motivation to Combine (with POSA knowledge): A POSA would combine Rose’s teaching of a bra with back pockets with the known racerback design to create a more functional and commercially desirable sports bra. The motivation would be to meet consumer demand for sports bras that offer storage. A POSA would also be motivated to modify Rose's simple slit openings to be biased closed to better secure items, a common objective in designing athletic apparel.
  • Expectation of Success: Modifying a strap configuration and pocket opening are simple design choices in apparel construction. A POSA would have expected success in combining these known elements to produce a functional pocket sports bra.

Ground 3: Obviousness over Glass - Claims 1, 2, 4, 5, 7, 9, and 11 are obvious over Glass.

• Prior Art Relied Upon: Glass (Patent D641,954).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted Glass, a design patent for a "Sports Bra with Water Bottle Pocket on Back," discloses all claimed features. Glass illustrates a racerback sports bra, which inherently includes a strap assembly joining at a central area on the back. The figures clearly show a pocket on this central area. Petitioner argued that a POSA would understand that a pocket designed to hold a water bottle must be made of "stretchable fabric" to accommodate the bottle's insertion and shape. Furthermore, illustrations showing the bra in a closed configuration depict the pocket opening lying flat against the wearer's back, which Petitioner argued discloses the pocket being "biased in a closed position at rest."
  • Motivation to Combine (with POSA knowledge): This ground primarily relied on the direct teachings of Glass, supplemented by the basic knowledge of a POSA. The motivation to use stretchable fabric is inherent in the pocket's stated purpose of holding a bulky water bottle. No significant modification of Glass was alleged to be necessary.
  • Expectation of Success: As Glass was argued to disclose nearly all limitations, a POSA would have a very high expectation of success in arriving at the claimed invention, with any minor interpretations being well within the skill of an ordinary artisan.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under both §314(a) (Fintiv factors) and §325(d).
• §314(a) (Fintiv): Petitioner contended that the parallel district court litigation is in its early stages, with a trial date not yet set and unlikely to occur before a Final Written Decision (FWD) in the IPR. Investment by the court and parties has been limited. The petition also challenges claims not asserted in the litigation, and the merits of the invalidity case are strong, all of which weigh against denial.
• §325(d): Petitioner argued that denial is inappropriate because the primary prior art references—Spagna, Rose, and Glass—were not cited or considered during the original prosecution of the ’510 patent. Therefore, the petition raises new arguments and art that are not cumulative to those previously before the USPTO.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, 4, 5, 7, 9, and 11 of the ’510 patent as unpatentable.