PTAB

IPR2025-01395

Top Glory Trading Group Inc v. Cole Haan LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Shoe Midsole
  • Brief Description: The ’969 patent claims the ornamental design for a shoe midsole. The design features three vertically stacked, ridged edge layers that form a wave-like profile, topped by a rounded upper layer, with the overall shape pinching in the midsection to follow the contour of a foot.

3. Grounds for Unpatentability

Ground 1: Anticipation - Claim 1 is anticipated by C11947 under 35 U.S.C. §102.

  • Prior Art Relied Upon: C11947 (a Cole Haan shoe video publicly available on YouTube since February 20, 2014).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the C11947 video discloses a shoe midsole design that is substantially the same as the claimed design in the ’969 patent. It asserted that an ordinary observer would find that C11947 shows all key features of the claimed design, including: (1) three vertically stacked ridged edge layers, (2) a similar compression profile with a linear heel section and sloped mid and toe sections, (3) a rounded upper layer, and (4) a pinched midsection.
    • Key Aspects: Petitioner contended that the overall visual impression of the C11947 midsole is a wave-like pattern identical to the ’969 patent design, and any minor differences are due to the media format (video of a physical product vs. line drawings) and would not alter the conclusion of an ordinary observer.

Ground 2: Anticipation - Claim 1 is anticipated by C12652 under 35 U.S.C. §102.

  • Prior Art Relied Upon: C12652 (a Cole Haan product webpage publicly available since at least July 8, 2014).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the C12652 webpage discloses a shoe midsole that is visually identical to the claimed design. The reference allegedly shows the same three ridged layers, the characteristic wave-like compression and slope from heel to toe, a distinct rounded upper layer, and a pinched midsection that overhangs the bottom sole. Petitioner argued the overall design creates the same visual impression as the ’969 patent, making the designs substantially the same to an ordinary observer.

Ground 3: Obviousness - Claim 1 is obvious over Skechers in view of Nike under 35 U.S.C. §103.

  • Prior Art Relied Upon: Skechers (a webpage on Dappered.com published July 10, 2013) and Nike (an EUIPO Design Registration published March 3, 2014).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner identified Skechers as a primary reference that is visually similar to the claimed design, disclosing a midsole with three ridged edge layers, a similar compression pattern, and a rounded upper layer. The secondary reference, Nike, was used to teach the remaining features, specifically the bottom view showing a pinched midsection that follows the shape of a foot and a more pronounced rounded upper layer.
    • Motivation to Combine: A Designer of Ordinary Skill in the Art (DOSITA) would combine Skechers and Nike to improve the design. A DOSITA would have been motivated to implement Nike’s foot-shaped bottom sole into the Skechers design for functional and aesthetic reasons. Further, a DOSITA would have been motivated to adopt Nike’s more rounded upper layer to create a more cohesive and continuous aesthetic where the midsole meets the shoe upper.
    • Expectation of Success: Petitioner argued that a DOSITA would have a reasonable expectation of success, as combining these known design elements involved predictable and simple modifications.

  • Additional Grounds: Petitioner asserted additional anticipation and obviousness challenges based on C11947, C12652, and Nike individually. Petitioner also raised obviousness combinations of C11947 in view of Nike and C12652 in view of Nike, primarily using Nike to teach an overhanging midsole if the primary references were found to lack that feature.

4. Key Claim Construction Positions

  • Petitioner did not propose constructions for specific terms but instead identified four key ornamental features that constitute the overall visual impression of the claimed design, which formed the basis for its prior art mapping:
    • Ridge Layers: Three vertically stacked, ridged-edged layers extending continuously from heel to toe.
    • Compressions: A wave-like profile created by a generally linear heel section, a downwardly sloped and compressed midsection, and an upwardly sloped and compressed toe section.
    • Rounded Upper Layer: A distinct rounded upper layer positioned above the ridged edge layers.
    • Pinched Mid-Section: The midsole shape follows a typical foot, pinching slightly in the mid-section.

5. Arguments Regarding Discretionary Denial

  • §325(d) (Same or Substantially Same Art): Petitioner argued against discretionary denial under §325(d), asserting that the grounds are based on prior art (C11947, C12652, Nike, and Skechers) that was never presented to, or considered by, the Examiner during the original prosecution.
  • §314(a) (Fintiv Factors): Regarding the co-pending district court case, Petitioner contended that the Fintiv factors weigh in favor of institution. The arguments included that Petitioner intends to seek a stay of the litigation, the district court case is in its infancy with no trial date set, and the petition presents strong, compelling arguments of unpatentability that were overlooked during prosecution.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claim 1 of the ’969 patent as unpatentable.