Skechers USA Inc v. Nike Inc

1. Case Identification

• Case #: IPR2025-00142
• Patent #: 9,730,484
• Filed: November 4, 2024
• Petitioner(s): SKECHERS U.S.A., Inc.
• Patent Owner(s): Nike, Inc.
• Challenged Claims: 1, 5-9, 11-17

2. Patent Overview

• Title: Article of Footwear Having a Flat Knit Upper Construction or Other Upper Construction
• Brief Description: The ’484 patent discloses an article of footwear with an upper formed from a single, flat-knitted element. The element features a central portion with a domed, three-dimensional structure that is formed unitarily with two flanking side portions.

3. Grounds for Unpatentability

Ground 1: Obviousness over Dua-592, Hong, and Choi - Claims 1, 5-9, and 11-17 are obvious over Dua-592 in view of Hong and/or Choi.

• Prior Art Relied Upon: Dua-592 (Application # 2005/0193592), Hong (a 1994 publication on 3D shaped knitted fabrics), and Choi (a 2005 journal article on seamless garment knitting).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Dua-592 taught a flat-knitted footwear upper with a unitary central portion and two side portions, which forms a domed shape over the instep when assembled. The key limitation of the ’484 patent—added during prosecution to overcome a rejection over Dua-592—requires this domed structure to exist while the element is in a flattened configuration. Petitioner asserted that Hong and Choi both taught the well-known capability of modern flat knitting machines (e.g., Shima Seiki) to create three-dimensional shapes, including domes, directly as part of the knitting process itself.
  • Motivation to Combine: A POSITA would combine the teachings of Hong and/or Choi with Dua-592’s basic upper design to gain the known benefits of 3D knitting. This combination would improve manufacturing efficiency, reduce material waste, and eliminate post-knitting assembly steps, such as closing the toe tip cutout disclosed in Dua-592.
  • Expectation of Success: A POSITA would have a high expectation of success because Hong and Choi described the creation of 3D shapes as a standard, predictable capability of commercially available knitting machines. Petitioner highlighted that Patent Owner itself cited Hong during European prosecution to argue that forming such 3D shapes was well-known in the art.

Ground 2A: Obviousness over Yamamoto and Choi - Claims 1, 5-9, and 11-15 are obvious over Yamamoto in view of Choi.

• Prior Art Relied Upon: Yamamoto (Japanese Patent Publication No. JPU 3118168) and Choi.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Yamamoto disclosed a boot with an upper formed from a single, continuously knitted piece of fabric using a flat knitting machine with a "WHOLEGARMENT" seamless knitting function. This unitary upper included an instep-covering part. Choi provided detailed teachings on the capabilities of seamless knitting machines, including the WHOLEGARMENT machines referenced by Yamamoto, to create various 3D structures without subsequent sewing or linking.
  • Motivation to Combine: A POSITA reviewing Yamamoto’s boot would be motivated to apply Choi's detailed teachings on seamless 3D knitting to improve the design. Specifically, forming the instep portion with an integrated domed structure would eliminate the need for Yamamoto’s separate, bonded "stretch stop piece," which was used to define the upper's shape. This modification would reduce cost, simplify manufacturing, and improve comfort by removing an internal component.
  • Expectation of Success: Success was predictable because Yamamoto already specified using the exact type of advanced knitting machine that Choi described as being capable of creating integrated, seamless 3D structures.

Ground 2B: Obviousness over Ground 2A and Dua-592 - Claims 16-17 are obvious over the combination of Yamamoto and Choi, in further view of Dua-592.

• Prior Art Relied Upon: The combination of Yamamoto and Choi, further viewed with Dua-592.
• Core Argument for this Ground:
  • Prior Art Mapping: The combination of Yamamoto and Choi resulted in a seamless, unitary upper that, like the original Yamamoto disclosure, had an open bottom and heel. Claims 16 and 17 recite assembling the upper by joining side edges to form a seam under the foot and joining rear edges to form a seam along the heel. Petitioner argued that Dua-592 explicitly taught these exact assembly steps for its own flat-knitted upper.
  • Motivation to Combine: A POSITA, faced with the task of attaching a sole to the open-bottomed upper from the Yamamoto/Choi combination, would look to known methods for closing such an upper. Dua-592 provided a well-documented and conventional method for forming underfoot and heel seams in a flat-knitted element, making it an obvious solution to a known problem.
  • Expectation of Success: The combination involved applying a standard shoe assembly technique to a knitted upper, a predictable and straightforward process with a high expectation of success.

4. Key Claim Construction Positions

• Petitioner noted that in parallel litigation and a related IPR, the parties agreed that the term “central portion having a domed, three-dimensional structure” means a “central portion having a domed, three-dimensional structure formed during the flat-knitting process, and not afterward.” Petitioner applied this construction and argued that no other special constructions were necessary for the Board to resolve the asserted grounds.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §314(a) and §325(d). It contended that the petition presented a compelling case of unpatentability, which, under the Director’s Fintiv guidance, weighs strongly against denial. Further, it argued that the grounds rely on new prior art combinations and arguments not considered by the Examiner. Specifically, Yamamoto and Choi were never before the Examiner, and Hong and Choi were newly applied to the specific limitation that was added during prosecution to overcome the original rejection based on Dua-592.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1, 5-9, and 11-17 of the ’484 patent as unpatentable.