Skechers U.S.A., Inc. v. Nike, Inc.

Prosecution History analysis

Examiner Search analysis

Invalidity Framework analysis

Petition

Petition summary

## 1. Case Identification
- Case Number: Not yet assigned
- Patent #: Patent [9,730,484](https://ai-lab.exparte.com/patent/9730484)
- Filed: November 4, 2024
- Petitioner(s): SKECHERS U.S.A., Inc.
- Patent Owner(s): [NIKE](https://ai-lab.exparte.com/party/nike-inc), 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 articles of footwear with uppers comprising a "flat-knitted element." The core inventive concept asserted is a flat-knitted upper element having a central portion with a domed, three-dimensional structure formed unitarily with first and second side portions, where the domed structure extends above the plane of the side portions when the element is in a flattened configuration.

## 3. Grounds for Unpatentability

#### Ground 1: Claims 1, 5-9, and 11-17 are obvious over Dua-592 in view of Hong and/or Choi.
- **Prior Art Relied Upon:** Application # US2005/0193592 (“[Dua-592](https://ai-lab.exparte.com/case/ptab/IPR2025-00123/doc/1014)”), Hong (“The development of 3D shaped knitted fabrics for technical purposes on a flat knitting machine”), and Choi (“Three dimensional seamless garment knitting on V-bed flat knitting machines”).
- **Core Argument for this Ground:**
  - **Prior Art Mapping:** Petitioner asserted that [Dua-592](https://ai-lab.exparte.com/case/ptab/IPR2025-00123/doc/1014), which was cited during prosecution, discloses a flat-knitted, single unitary footwear upper with a central portion (instep region 33) and unitary side portions (medial region 32 and lateral region 31). While [Dua-592](https://ai-lab.exparte.com/case/ptab/IPR2025-00123/doc/1014)’s upper forms a domed shape when assembled into a shoe, it does not explicitly disclose the domed structure existing when the element is in a flattened configuration, the key limitation added to secure allowance of the ’484 patent.
  - **Motivation to Combine:** Petitioner argued a person of ordinary skill in the art (POSITA) would combine the teachings of Hong and/or Choi with [Dua-592](https://ai-lab.exparte.com/case/ptab/IPR2025-00123/doc/1014)'s upper design. Hong (1994) and Choi (1995) both taught that modern flat-knitting machines (e.g., Shima Seiki) could create complex, three-dimensional shapes like domes and spheres directly during the knitting process. A POSITA would be motivated to apply this known 3D knitting capability to [Dua-592](https://ai-lab.exparte.com/case/ptab/IPR2025-00123/doc/1014)’s design to simplify manufacturing, reduce material waste, and eliminate post-knitting steps, such as cutting a toe tip cutout, which is required in [Dua-592](https://ai-lab.exparte.com/case/ptab/IPR2025-00123/doc/1014).
  - **Expectation of Success:** A POSITA would have a high expectation of success because Hong and Choi detail the established capabilities of commercial flat-knitting machines to produce 3D structures. Petitioner highlighted that [Nike](https://ai-lab.exparte.com/party/nike-inc) itself, during prosecution of a related European application, cited Hong to argue that forming 3D knitted textiles was well-known, and that [Nike](https://ai-lab.exparte.com/party/nike-inc)’s own expert in a separate IPR admitted these machine capabilities existed since the 1990s.

#### Ground 2A: Claims 1, 5-9, and 11-15 are obvious over Yamamoto in view of Choi.
- **Prior Art Relied Upon:** Japanese Patent Publication No. JPU 3118168 (“[Yamamoto](https://ai-lab.exparte.com/case/ptab/IPR2025-00123/doc/1017)”) and Choi.
- **Core Argument for this Ground:**
  - **Prior Art Mapping:** Petitioner contended that [Yamamoto](https://ai-lab.exparte.com/case/ptab/IPR2025-00123/doc/1017) discloses a boot upper formed from a single piece of fabric continuously knitted on a flat-knitting machine with a three-dimensional seamless function (WHOLEGARMENT). This process creates an upper with an instep-covering portion that is inherently domed. Petitioner argued this base design meets the primary limitations of claim 1.
  - **Motivation to Combine:** [Yamamoto](https://ai-lab.exparte.com/case/ptab/IPR2025-00123/doc/1017) discloses using a separate, bonded "stretch stop piece" to help define the upper's final shape. A POSITA, familiar with the advanced seamless knitting techniques detailed in Choi, would be motivated to modify [Yamamoto](https://ai-lab.exparte.com/case/ptab/IPR2025-00123/doc/1017)'s process to create a stable, domed structure directly in the knit fabric itself. This would eliminate the need for the separate stretch stop piece, thereby simplifying the assembly process, reducing cost, and improving comfort, consistent with the known benefits of seamless knitting touted by Choi.
  - **Expectation of Success:** Since [Yamamoto](https://ai-lab.exparte.com/case/ptab/IPR2025-00123/doc/1017) already utilizes a 3D seamless knitting machine, a POSITA would have a high expectation of success in applying the specific techniques from Choi to refine the knitting process and form a self-supporting domed structure without additional components.

#### Ground 2B: Claims 16-17 are obvious over Ground 2A in further view of Dua-592.
- **Prior Art Relied Upon:** The combination of [Yamamoto](https://ai-lab.exparte.com/case/ptab/IPR2025-00123/doc/1017) and Choi (from Ground 2A), in further view of [Dua-592](https://ai-lab.exparte.com/case/ptab/IPR2025-00123/doc/1014).
- **Core Argument for this Ground:**
  - **Prior Art Mapping:** This ground specifically targets method claims 16 and 17, which recite joining side edges to form a seam under the foot and joining rear edges to form a seam up the heel. Petitioner argued that the [Yamamoto](https://ai-lab.exparte.com/case/ptab/IPR2025-00123/doc/1017) upper, even when modified by Choi, is essentially a tube with an open bottom and heel, and [Yamamoto](https://ai-lab.exparte.com/case/ptab/IPR2025-00123/doc/1017) does not detail how the upper is closed and secured to a sole. [Dua-592](https://ai-lab.exparte.com/case/ptab/IPR2025-00123/doc/1014) explicitly teaches these exact assembly steps for its unitary knit upper.
  - **Motivation to Combine:** A POSITA tasked with finishing the [Yamamoto](https://ai-lab.exparte.com/case/ptab/IPR2025-00123/doc/1017)/Choi upper would look to known, conventional methods for closing a knit upper. [Dua-592](https://ai-lab.exparte.com/case/ptab/IPR2025-00123/doc/1014) provides a clear, established method for doing so. The motivation is to simply complete the article of footwear by applying a finite, known, and predictable assembly solution to the pre-formed upper.
  - **Expectation of Success:** Combining a known upper with a standard, compatible assembly method would be a straightforward task for a POSITA with a very high expectation of success.

## 4. Key Claim Construction Positions
- Petitioner noted that in parallel litigation, the parties agreed to construe the term “central portion having a domed, three-dimensional structure” to mean the structure is “formed during the flat-knitting process, and not afterward.” Petitioner adopted this construction, arguing it frames the invalidity analysis around the known capabilities of flat-knitting machines at the time of the invention. No other specific constructions were proposed as necessary.

## 5. Key Technical Contentions (Beyond Claim Construction)
- A central technical contention is that the ability to create domed, three-dimensional shapes directly on flat-knitting machines was not a novel invention by [Nike](https://ai-lab.exparte.com/party/nike-inc) but a well-known and routine capability in the art long before the ’484 patent’s priority date. Petitioner supported this by arguing that [Nike](https://ai-lab.exparte.com/party/nike-inc) itself admitted as much during foreign prosecution by relying on the Hong reference to overcome an insufficient disclosure rejection, effectively conceding the technique was part of the general knowledge of a POSITA.

## 6. Arguments Regarding Discretionary Denial
- Petitioner argued against discretionary denial under §314(a) and the *Fintiv* factors, asserting that the petition presents a compelling case of unpatentability that, under the Director’s current guidance, weighs strongly against denial.
- Petitioner also argued against denial under §325(d), stating that the petition raises new arguments and presents prior art combinations not considered by the examiner. Specifically, neither [Yamamoto](https://ai-lab.exparte.com/case/ptab/IPR2025-00123/doc/1017) nor Choi was before the examiner, and Hong was not applied in combination with [Dua-592](https://ai-lab.exparte.com/case/ptab/IPR2025-00123/doc/1014) to address the "domed structure" limitation that was the basis for allowance.

## 7. Relief Requested
- Petitioner requests institution of an inter partes review and cancellation of claims 1, 5-9, and 11-17 of the ’484 patent as unpatentable.

Skechers targets Nike's flat knit upper patent: 13 claims challenged as obvious, arguing 3D domed structures were a known flat-knitting capability.

IPR2025-00142

Skechers U.S.A., Inc. v. Nike, Inc.