PTAB

IPR2025-01394

Top Glory Trading Group Inc v. Cole Haan LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Knitted Footwear with Aesthetic Features
  • Brief Description: The ’262 patent is directed to methods of manufacturing articles of footwear and the resulting shoes. The invention focuses on creating a unitary, one-piece, seamless knit upper that includes distinct areas of different knit structures (e.g., jersey stitch and pointelle stitch) and a line of broguing adjacent to the boundary line between these different knit areas.

3. Grounds for Unpatentability

Ground 1: Obviousness over Dua (incorporating ’762/’288) - Claims 1-13 are obvious over Dua in view of the ’762 and ’288 patents.

  • Prior Art Relied Upon: Dua (Application # 2010/0154256), the ’762 patent (Patent 6,931,762), and the ’288 patent (Patent 6,910,288).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Dua, which expressly incorporates the ’762 and ’288 patents by reference, teaches all essential elements of the challenged claims. Dua discloses a method of manufacturing a dress shoe with a unitary, one-piece knit upper formed by a flat knitting process. It teaches creating different knit structures in desired areas to provide advantageous attributes, including a "less-apertured configuration" (like a jersey knit) and an "apertured configuration" (like a pointelle stitch) separated by a boundary line. The incorporated ’762 patent explicitly discloses using various knit structures, including "jersey knit," to form complex patterns. The incorporated ’288 patent teaches using hot melt yarns (a first yarn) alongside neutral, non-fusible yarns (a second yarn) and applying heat while the upper is on a last to fuse them. The apertures disclosed in Dua, which can be formed by omitting stitches, were argued to constitute the claimed "line of broguing."
    • Motivation to Combine: Petitioner asserted that a Person of Ordinary Skill in the Art (POSITA) would be motivated to apply the teachings of the ’762 and ’288 patents to Dua because Dua explicitly incorporates them. Furthermore, all three references share a common inventor and assignee (Nike, Inc.), are in the same field of art (footwear), and address the same problems of improving the design and manufacture of knitted uppers. A POSITA would naturally use the specific knit types from the ’762 patent and fusible yarns from the ’288 patent within the framework of Dua's shoe construction.
    • Expectation of Success: A POSITA would have had a high expectation of success because combining the references involves applying known knitting techniques and materials for their intended purposes, as contemplated by the primary reference itself.

Ground 2: Obviousness over Dua (and ’762/’288) in view of Flusser - Claims 1-13 are obvious over the combination of Dua and Flusser.

  • Prior Art Relied Upon: Dua (Application # 2010/0154256) incorporating the ’762 and ’288 patents, and Flusser (Alan J. Flusser, Clothes and the Man, 1985).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground relied on Dua (incorporating ’762/’288) for the foundational teaching of a seamless, patterned, multi-structure knit upper for a dress shoe. Petitioner contended that to the extent Dua's "apertures" do not fully teach the claimed "line of broguing" in a wingtip pattern, Flusser remedies this. Flusser is a well-known reference on men's fashion that explicitly discloses traditional dress shoe styles, including the "wing-tip brogue." It illustrates the exact aesthetic claimed: a boundary line separating different regions of the shoe upper (e.g., toe cap and metatarsal regions) with an adjacent, curved line of perforations (broguing).
    • Motivation to Combine: Petitioner argued the motivation was a simple and obvious design choice. Since Dua teaches making knitted uppers for "dress shoes," a POSITA would naturally look to well-known dress shoe designs for aesthetic inspiration. Flusser provided a finite and well-established number of such designs. A POSITA would combine the functional knitted upper from Dua with the classic wingtip brogue aesthetic from Flusser to create a modern version of a traditional dress shoe, a predictable and desirable market outcome.
    • Expectation of Success: The combination required only applying a known decorative pattern to a known textile manufacturing process. As Dua already taught creating complex patterns and apertures via knitting, a POSITA would have a reasonable expectation of successfully programming a knitting machine to replicate the wingtip pattern described in Flusser.

Ground 3: Obviousness over Dua (and ’762/’288) in view of Litke - Claims 1-13 are obvious over the combination of Dua and Litke.

  • Prior Art Relied Upon: Dua (Application # 2010/0154256) incorporating the ’762 and ’288 patents, and Litke (Patent 7,949,570).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented Litke as an alternative to Flusser for teaching the claimed broguing pattern. Litke discloses a computerized system for customizing footwear, which can include woven or non-woven fabric uppers. Critically, Litke illustrates applying a "wingtip pattern" formed of "holes in the upper material" to a shoe. Petitioner argued this directly teaches the claimed arrangement of a boundary line with an adjacent line of broguing in the classic wingtip shape.
    • Motivation to Combine: The motivation was to apply a known, popular shoe design to Dua's knitted upper technology. A POSITA seeking to create a desirable knitted dress shoe, as contemplated by Dua, would be motivated to incorporate popular design patterns like the wingtip shown in Litke. Combining Litke's customizable pattern of holes with Dua's seamless knitting process would allow for the efficient production of aesthetically pleasing and commercially valuable footwear.
    • Expectation of Success: A POSITA would have a reasonable expectation of success, as the combination merely involved programming a knitting machine (as taught by Dua) to create a pattern of holes (as taught by Litke), which was within the established capabilities of the technology at the time.

4. Key Claim Construction Positions

  • Petitioner argued that several claim limitations reciting purely ornamental and aesthetic features are not entitled to patentable weight in a utility patent. This argument was central to all grounds.
  • Aesthetic/Ornamental Limitations: Specifically, limitations defining the "line of broguing," its shape (e.g., "curved line of holes"), and the specific arrangement of a "jersey stitch knit" in the toe region and a "pointelle stitch knit" in the metatarsal regions were identified as relating only to the shoe's appearance. Petitioner asserted these features have no recited structural or functional purpose and thus cannot be used to distinguish the claims over the prior art.

5. Arguments Regarding Discretionary Denial

  • §325(d) Discretion: Petitioner argued against discretionary denial because the primary prior art, Dua (incorporating ’762/’288), Flusser, and Litke, were never considered during the prosecution of the ’262 patent or its parent. Petitioner contended that this new art is not substantially the same as the art previously considered by the examiner.
  • §314(a) Discretion (Fintiv): Petitioner argued against denial based on the co-pending district court case, stating that the litigation is in its early stages with no trial date set. Furthermore, Petitioner stipulated that, upon institution, it would not pursue the same grounds or any grounds that could have been reasonably raised in the IPR in the district court action.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-13 of the ’262 patent as unpatentable under 35 U.S.C. §103.