Skechers USA Inc v. Nike Inc

1. Case Identification

• Case #: IPR2025-00141
• Patent #: 8,266,749
• Filed: November 4, 2024
• Petitioner(s): SKECHERS U.S.A., Inc.
• Patent Owner(s): Nike, Inc.
• Challenged Claims: 1-21

2. Patent Overview

• Title: Article of Footwear Having a Textile Upper
• Brief Description: The ’749 patent discloses methods for manufacturing footwear. The methods involve simultaneously knitting a textile element and a surrounding textile structure, where the element has a texture different from the surrounding structure, removing the element, and incorporating it into an article of footwear.

3. Grounds for Unpatentability

Ground 1A: Anticipation/Obviousness over Orei - Claims 1-6, 8, 10-16, 18, and 20-21 are anticipated, or alternatively obvious, over [Orei](https://ai-lab.exparte.com/case/ptab/IPR2025-00141/doc/1020).

• Prior Art Relied Upon: Orei (Patent 7,051,460).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Orei discloses a method of manufacturing a shoe upper from a "double raschel warp knitted fabric" that anticipates or renders obvious every limitation of the challenged claims. Orei describes knitting shoe patterns comprised of multiple distinct parts (e.g., non-mesh and various mesh structures) on a single continuous fabric. These parts are imparted with different physical properties (burst strength, air permeability) by varying the number of meshes, which Petitioner contended results in different knitted textures. The shoe parts (textile elements) are shown disposed within a larger knitted fabric (surrounding structure), are cut from this fabric, and then incorporated into a finished shoe. Orei further discloses using a double needle-bar raschel knitting machine (claim 10) and forming textile elements with multiple areas of unitary construction having different stitch configurations (claim 11).
  • Key Aspects: Petitioner asserted that Orei's disclosure of varying mesh densities to achieve different physical properties inherently teaches the use of different textures.

Ground 1B: Obviousness over Orei in view of McDonald - Claims 7, 12, 17, and 18 are obvious over Orei in view of [McDonald](https://ai-lab.exparte.com/case/ptab/IPR2025-00141/doc/1021).

• Prior Art Relied Upon: Orei (Patent 7,051,460) and McDonald (WO 98/43506).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed claims requiring the joining of longitudinal edges to form a seam and define a void for receiving a foot. Petitioner asserted that Orei teaches securing the edges of the knitted textile element to a shoe sole but does not explicitly detail the method for creating a longitudinal seam along the bottom of the upper. McDonald, which relates to lightweight engineered textiles for shoe uppers, disclosed this exact technique. It taught joining the longitudinal sides of an upper along a seam extending the length of the base to define a void for receiving the foot.
  • Motivation to Combine: Petitioner argued that a person of ordinary skill in the art (POSITA), when implementing Orei’s method, would be motivated to consult related prior art for well-known and conventional techniques to assemble the upper. Because both references are directed to providing lightweight, durable uppers for athletic shoes, a POSITA would combine Orei’s knitted upper with McDonald’s known seam-forming method.
  • Expectation of Success: The combination was argued to be predictable, as joining the bottom edges of an upper was a common and simple way to construct footwear.

Ground 2A: Anticipation by Nishida - Claims 1-8, 11-18, and 21 are anticipated by [Nishida](https://ai-lab.exparte.com/case/ptab/IPR2025-00141/doc/1022).

• Prior Art Relied Upon: Nishida (Patent 5,345,638).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner contended that Nishida, which was previously asserted in an obviousness challenge in adidas IPR, anticipates the claims. Nishida discloses a method of producing a shoe upper from a single knitted "web of material." This web contains multiple layouts (textile elements) produced with specific qualities (e.g., different yarns, styles, thicknesses, weave structures) alongside surrounding "unfinished surface areas" made of a simple, lightweight, and inexpensive material. This directly maps to the claim limitation of a knitted element having a texture that differs from a surrounding structure. The layouts are then cut from the web and incorporated into a shoe.
  • Key Aspects: Petitioner emphasized that in the prior adidas IPR, the Board found that Nishida taught each limitation of the independent claims but declined to institute on anticipation because adidas had not expressly asserted it. This petition explicitly asserted Nishida as an anticipation reference.

• Additional Grounds: Petitioner asserted Ground 1C, arguing claims 9 and 19 are obvious over Orei in view of a POSITA's general knowledge of alternative knitting machines (wide-tube circular knitting machines). Petitioner also asserted Ground 2B, an alternative obviousness challenge over Nishida in view of Guenther (German Patent 627 878), and Ground 2C for specific machine types based on the Nishida combinations.

4. Key Claim Construction Positions

• "texture": Petitioner argued that the plain and ordinary meaning of "texture" should be "the surface appearance and feel of a material," which includes both smooth and non-smooth surfaces. This position was based on the patent's specification, which explicitly describes textures that are "generally smooth," as well as extrinsic dictionary evidence. Petitioner noted this contrasts with the Board's construction in the prior adidas IPR, where "texture" was construed in the context of certain dependent claims to mean "a non-smooth surface." Petitioner asserted this construction is critical because the patent owner previously argued that Nishida failed to disclose "differing textures."

5. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv Factors): Petitioner argued that discretionary denial under Fintiv is inappropriate, citing the Director's Guidance Memorandum. The petition asserted it raises a compelling case of unpatentability, which alone demonstrates that the Board should not deny institution.
• §325(d) (Same or Substantially Same Art or Arguments): Petitioner argued against denial under §325(d), noting that Orei, McDonald, and Guenther were never presented to the Examiner. While Nishida was considered during prosecution and in a prior IPR, Petitioner contended it was presenting new arguments and evidence. Specifically, the petition relied on a translation of Guenther and expert testimony to explain that Nishida's "backing" is an integral base layer, not a separate structure, which directly addressed the arguments that led to allowance.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-21 of Patent 8,266,749 as unpatentable.