Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 81
` Entered: March 1, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`adidas AG,
`Petitioner,
`
`v.
`
`NIKE, Inc.,
`Patent Owner.
`____________
`
`IPR2013-00067
`Patent 7,347,011 B2
`____________
`Before JOSIAH C. COCKS, JAMES B. ARPIN, and SCOTT A. DANIELS,
`Administrative Patent Judges.
`ARPIN, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision on Remand
`Determining Challenged Claim Unpatentable
`35 U.S.C. §§ 144, 318(a) and 37 C.F.R. § 42.5(a)
`
`
`
`
`571-272-7822
`
`
`
` Paper 81
` Entered: March 1, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`adidas AG,
`Petitioner,
`
`v.
`
`NIKE, Inc.,
`Patent Owner.
`____________
`
`IPR2013-00067
`Patent 7,347,011 B2
`____________
`Before JOSIAH C. COCKS, JAMES B. ARPIN, and SCOTT A. DANIELS,
`Administrative Patent Judges.
`ARPIN, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision on Remand
`Determining Challenged Claim Unpatentable
`35 U.S.C. §§ 144, 318(a) and 37 C.F.R. § 42.5(a)
`
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`I. INTRODUCTION
`
`On May 17, 2013, at the request of adidas AG (“Petitioner”) in a
`Petition (Paper 7, “Pet.”), the Board instituted an inter partes review of
`claims 1–46 of U.S. Patent No. 7,347,011 B2 (Ex. 1002, “the ’011 patent”)
`under 35 U.S.C. § 314. Paper 18 (“Dec. to Inst.”). After institution,
`Nike, Inc. (“Patent Owner”) filed a Motion to Amend (Paper 31), requesting
`cancellation of original claims 1–46 and entry of substitute claims 47–50.
`Petitioner opposed the Motion to Amend (Paper 37), and Patent Owner
`replied to Petitioner’s Opposition (Paper 44). In particular, Petitioner
`opposed the Motion to Amend, producing additional prior art references and
`alleging that the substitute claims were unpatentable in view of the
`combined teachings of the following, prior art references:
`Exhibit No. Reference
`1005
`U.S. Patent No. 5,345,638, issued Sep. 13, 1994 (“Nishida”)
`1020
`U.S. Patent No. 2,178,941, issued Nov. 7, 1939 (“Schuessler I”)
`1021
`U.S. Patent No. 2,150,730, issued Mar. 14, 1939 (“Schuessler II”)
`
`A hearing was held on February 10, 2014. A transcript of the hearing is
`included in the record. Paper 59.
`On April 28, 2014, the panel issued a Final Written Decision in
`accordance with 35 U.S.C. § 318(a). Paper 60 (“FWD I”). The panel
`granted Patent Owner’s request for the cancellation of original claims 1–46,
`but denied Patent Owner’s request for entry of substitute claims 47–50.
`FWD I 42. In particular, the panel concluded that Patent Owner failed to
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`establish the patentability of claims 47–50 over the combined teachings of
`Nishida and Schuessler I and II. Patent Owner appealed the Final Written
`Decision to the U.S. Court of Appeals for the Federal Circuit (“the Federal
`Circuit”). Paper 61.
`On February 11, 2016, the Federal Circuit issued a decision,
`affirming-in-part and vacating-in-part this first Final Written Decision, and
`remanding the case to the Board. Nike, Inc. v. adidas AG, 812 F.3d 1326,
`1329 (Fed. Cir. 2016) (“Nike I”). Specifically, the Federal Circuit affirmed
`the panel’s conclusion that Patent Owner bore the burden of showing the
`patentability of the substitute claims by a preponderance of the evidence.1
`Id. at 1332–34. Further, rejecting Petitioner’s arguments, the Federal Circuit
`affirmed the panel’s construction of “flat knit edges” as “an edge of a flat
`knit textile element, which is itself flat knit, e.g., which is not formed by
`cutting from a flat knit textile element,” as the broadest reasonable
`interpretation of that term. Id. at 1346–47.
`In addition, the Federal Circuit determined that substantial evidence
`supported the conclusion that “a person of skill in the art would have reason
`to modify Nishida using the teachings of the Schuessler References to arrive
`at the unitary, flat-knitted textile upper recited in the proposed substitute
`claims.” Id. at 1335–38; see In re Nuvasive, Inc., 842 F.3d 1376, 1382–83
`
`
`1 As noted below, the Federal Circuit has since determined that the burden
`of showing patentability of the substitute claims may not be placed on the
`patent owner. Aqua Products, Inc. v. Matal, 872 F.3d 1290, 1296 n.1 (Fed.
`Cir. 2017) (O’Malley, J., plurality); see infra note 6.
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`(Fed. Cir. 2016) (“Our recent decisions demonstrate that the PTAB knows
`how to meet this burden. For example, in Nike, Inc. v. Adidas AG, we
`affirmed the PTAB’s finding of a motivation to combine where it
`determined that a [person having ordinary skill in the art (“PHOSITA”)]
`‘interested in Nishida’s preference to minimize waste in the production
`process would have logically consulted the well-known practice of flat-
`knitting, which eliminates the cutting process altogether.’” (internal citations
`omitted)).
`The Federal Circuit, however, identified two errors in the first Final
`Written Decision. First, the panel failed to make a proper determination of
`how proposed claims 48 and 49, both of which Patent Owner sought to enter
`as substitutes for original claim 19, “should be treated per the standard set
`forth in [Idle Free Sys., Inc. v. Bergstrom, Case IPR2012-00027, Paper 26 at
`8–9 (PTAB June 11, 2013)], and, if necessary, a full consideration of the
`patentability of each.” Nike I at 1341–42. Second, the panel failed
`expressly “to examine Nike’s evidence [of long-felt, but unmet, need] and its
`impact, if any, on the Board’s analysis under the first three Graham factors.”
`Id. at 1339–40; see Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)
`(“Such secondary considerations as commercial success, long felt but
`unsolved needs, failure of others, etc., might be utilized to give light to the
`circumstances surrounding the origin of the subject matter sought to be
`patented.” (emphasis added)). The mandate in Nike I issued on April 4,
`2016. Paper 1.
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`Neither party sought to provide additional briefing or requested that
`the Board take new evidence upon remand, and the Federal Circuit expressly
`declined to direct the Board to accept new argument or evidence. Nike I at
`1345 n.6 (citing Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359,
`1367 (Fed. Cir. 2015)). Moreover, neither party sought the Board’s
`guidance regarding procedures on remand. See Paper 62.
`On October 4, 2017, the Federal Circuit issued a decision in Aqua
`Products., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc),
`addressing issues relating to motions to amend before the Board. On
`October 11, 2017, the panel offered to accept briefing on impact of the Aqua
`Products decision on the Nike I remand. See Ex. 3003. On October 27,
`2017, the parties requested to submit briefing addressing the impact of the
`Aqua Products decision and specifically requested timing, page limits, and
`content limitations for such briefing. Id. On October 31, 2017, the panel
`granted the parties’ request for briefing. Id. Subsequently, Petitioner filed
`its Aqua Products Brief (Paper 65), Patent Owner filed its Response to
`Petitioner’s Aqua Products Brief (Paper 66), and Petitioner filed its Reply to
`Patent Owner’s Response (Paper 67).
`On September 18, 2018, we issued a Decision on Remand as a second
`Final Written Decision (Paper 69 (“FWD II”)) considering the two errors in
`the first Final Written Decision, as identified by the Federal Circuit. First, in
`the second Final Written Decision, we determined Patent Owner proposes a
`reasonable number of substitute claims, and it was necessary to fully
`consider the patentability of claim 49. See Nike I at 1341–42. Considering
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`the record in its entirety, we found sufficient reason to modify the teachings
`of Nishida in view of those of Schuessler I and II and David J. Spencer,
`Knitting Technology: A Comprehensive Handbook and Practical Guide (3d
`ed. 2001) (“Spencer”) (see, e.g., Ex. 1012, 84) to achieve the limitations of
`claim 49. Second, we considered Patent Owner’s evidence of long-felt, but
`unmet, need, together with the other Graham factors2 (see Nike I at 1340),
`but we were persuaded or determined that substitute claims 47–50 were
`obvious over the combined teachings of Nishida and Schuessler I and II,
`alone or in combination with Spencer. FWD II 31–32.
`On April 9, 2020, the Federal Circuit affirmed our determination that
`proposed substitute claims 47, 48, and 50 are unpatentable as obvious over
`the combined teachings of Nishida and Schuessler I and II. Nike, Inc. v.
`adidas AG, 955 F.3d 45, 55 (Fed. Cir. 2020) (“Nike II”). With respect to
`claim 49, which depends directly from proposed substitute independent
`claim 47, we determined that, in view of the teachings of Spencer, which
`Petitioner made of record, the omission of stitches was a well-known
`technique in the field of knitting for forming apertures, and a person of
`ordinary skill in the art would have had reason to use such a known
`technique to form the plurality of apertures taught by Nishida, as recited in
`substitute claim 49. FWD II 15–22; see Nike II at 50. Thus, we determined
`that claim 49 is unpatentable as obvious over the combined teachings of
`
`
`2 Graham, 383 U.S. at 17–18.
`
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`Nishida, Schuessler I and II, and Spencer. The Federal Circuit held that,
`although we may raise a challenge to a proposed substitute claim sua sponte,
`relying on prior art of record, such as Spencer, when considering the
`patentability of amended claims; we must give the parties notice and an
`opportunity to be heard regarding such reliance. Nike II at 54. Because we
`did not provide the parties with adequate notice and an opportunity to be
`heard, e.g., via supplemental briefing or at a hearing, regarding the
`application of the teachings of Spencer to claim 49; the Federal Circuit
`“vacate[d] the Board’s decision as to substitute claim 49 and remand[ed] for
`the Board to determine whether substitute claim 49 is unpatentable as
`obvious after providing the parties with an opportunity to respond.” Nike II
`at 55. The mandate in Nike II issued May 18, 2020.3 Paper 80.
`Because the Federal Circuit affirmed our finding of unpatentability
`with respect to claims 47, 48, and 50, we address only the patentability of
`claim 49 in light of the parties’ briefing and the evidence of record. For the
`reasons that follow, considering the entirety of the record before us, we
`
`
`3 In light of the Federal Circuit’s instructions in its remand, which preceded
`the Board’s decision in Hunting Titan, Inc. v. Dynaenergetics Europe
`GmbH, IPR2018-00600, Paper 67 (PTAB July 6, 2020) (precedential), we
`do not revisit our decision to determine whether claim 49 is patentable under
`35 U.S.C. § 103(a), and more particularly, the combination of Nishida,
`Schuessler I and II, and Spencer. Further, we note that neither party has
`argued that the Board here erred by engaging that patentability issue in the
`first instance. Rather, we focus here on the merits of that patentability issue
`given the existing record, taking into account the parties’ arguments made
`after receiving notice of the Board’s inquiry on this score.
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`determine that a preponderance of the evidence establishes that substitute
`claim 49 is unpatentable as obvious over the combined teachings of Nishida,
`Schuessler I and II, and Spencer.
`
`A. The ’011 Patent
`
`The disclosure of the ’011 patent is described in the Final Written
`Decision. FWD I 4–8. Here, we present only a summary description. The
`’011 patent relates to articles of footwear having a textile “upper.”
`Ex. 1002, 1:7–10. In particular, the Specification describes articles of
`footwear having an upper incorporating a knitted textile element and having
`a sole structure secured to the upper. Id. at 3:20–47.
`
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`Figure 8 of the ’011 patent is reproduced below.
`
`
`Figure 8 illustrates an embodiment of an upper according to the ’011 patent.
`Id. at 5:58–6:65. “Textile element 40 is a single material element that is
`formed to exhibit a unitary (i.e., one-piece) construction.” Id. at 5:38–41;
`see also id. at Figs. 10 (depicting textile element 40ʹ) and 11 (depicting
`textile element 40ʺ). Consequently, textile element 40 is configured, such
`that portions of the textile element are not joined together with seams or
`other connections. Id. at 5:38–41, 6:41–46. Edges 41a–44d, which are free
`in Figure 8, are joined together as shown in Figures 3–5 to form seams 51–
`54, thereby forming at least a portion of a void for receiving a foot. In
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`contrast, each of lateral region 31, medial region 32, instep region 33, lower
`regions 34, and heel regions 35 together have a unitary construction without
`seams (id. at 5:44–57, 6:47–50).
`An article of footwear 110 is depicted in FIG. 12 and
`includes a sole structure 120 and an upper 130. Upper 130
`includes a textile element 140 having the general configuration
`of textile element 40. As with textile element 40, textile element
`140 forms both an exterior surface and an interior surface of
`upper 130. In addition, upper 130 includes a lace 131 and a
`plurality of elements 132-135 that also form a portion of the
`exterior surface. Lace 131 extends through a plurality of
`apertures formed in textile element 140. The apertures may be
`formed by omitting stitches at specific locations.
`Id. at 10:15–25 (emphasis added).
`
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`Figure 11 of the ’011 patent is reproduced below.
`
`
`Figure 11 illustrates another embodiment of an upper. Id. at 9:36–10:14. In
`particular, the Specification discloses:
`Third texture 48" is formed to include a plurality of apertures that
`extend through textile element 40". The apertures may be
`formed by omitting stitches at specific locations during the wide-
`tube circular knitting process, and the apertures facilitate the
`transfer of air between the void within upper 20 and the area
`outside of upper 20.
`Id. at 9:55–60 (emphasis added). Third texture 48" extends beyond the
`portion of textile element 40" that receives laces.
`
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`B. Status of the Claims
`
`As noted above, the Federal Circuit affirmed our determination that
`claims 47, 48, and 50 are unpatentable as obvious over the combined
`teachings of Nishida and Schuessler I and II. Substitute claims 47 and 49
`are reproduced below:4
`Claim 47. (Substitute for independent claim 16) An article
`of footwear comprising
`an upper incorporating a [weft-knitted] flat knit textile
`element, the flat knit textile element
`(1) having flat knit edges free of surrounding textile
`structure such that the flat knit edges are not surrounded
`by textile structure from which the textile element must be
`removed, some of the flat knit edges joined together to
`form an ankle opening in the upper for receiving a foot,
`the ankle opening having an edge comprised of one of the
`flat knit edges; and
`(2) having a first area and a second area with a
`unitary construction, the first area being formed of a first
`stitch configuration, and the second area being formed of
`a second stitch configuration that is different from the first
`stitch configuration to impart varying properties to the
`textile element; and
`a sole structure secured to the upper.
`Claim 49. (Second Substitute for dependent claim 19) The
`article of footwear recited in claim [16] 47, wherein at least one
`of
`the first stitch configuration and
`the second stitch
`configuration forms [an aperture] a plurality of apertures in the
`[weft-knitted] flat knit textile element, the apertures formed by
`
`
`4 Subject matter deleted from original claims 16 and 19 is enclosed by
`brackets; subject matter added to those claims is underlined.
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`omitting stitches in the flat knit textile element and positioned in
`the upper for receiving laces.
`Paper 31, 1–2. As noted above, only claim 49 remains at issue; independent
`claim 47, claim 49’s base claim, is reproduced for clarity.
`
`II. DISCUSSION
`A. Issues on Remand
`
`As noted above, on remand, we remedy our failure to provide
`adequate notice and the opportunity to respond to the parties in view of our
`sua sponte challenge to the patentability of claim 49 as obvious over the
`combined teachings of Nishida, Schuessler I and II, and Spencer. Pursuant
`to Patent Trial and Appeal Board (PTAB), Standard Operating Procedure
`(SOP) 9, which describes procedures for decisions remanded from the
`Federal Circuit, the parties conferred to discuss procedures for this review
`upon remand. Subsequently, a conference call was held on July 23, 2020,
`between the panel and counsel for the parties to discuss the procedure for
`this remanded review.
`In accordance with the parties’ pre-conference agreement, no
`submission of additional evidence is necessary or was authorized. After
`hearing the parties’ positions during the conference call, we authorized
`simultaneous, opening and reply briefing. Each party’s opening brief
`addressed three issues: (1) given that we identified sua sponte the
`“patentability issue for proposed substitute claim 49 based on the prior art of
`record, which, if either, party bears the burden of persuasion?,” (2) “does
`Spencer teach or suggest the disputed limitation of substitute claim 49?,”
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`and (3) “would a person of ordinary skill in the art have had reason to
`combine the teachings of Nishida, Schuessler I and II, and Spencer to
`achieve the article of footwear recited in claim 49?” Paper 71, 4–5. The
`simultaneous reply briefing was limited to responding to arguments raised
`by the opposing party in its opening brief, and no arguments for patentability
`or unpatentability not presented in that party’s opening brief were permitted.
`We address these issues in turn below.5
`
`B. Neither Party Bears the Burden of Persuasion
`
`In Aqua Products, Judge O’Malley stated,
`The only legal conclusions that support and define the judgment
`of the court are: (1) the [Office] has not adopted a rule placing
`the burden of persuasion with respect to the patentability of
`amended claims on the patent owner that is entitled to deference;
`and (2) in the absence of anything that might be entitled
`deference, the [Office] may not place that burden on the patentee.
`Aqua Prods., 872 F.3d at 1327 (O’Malley, J., plurality) (emphasis added).6
`The parties agree that Patent Owner does not bear the burden of persuasion
`regarding patentability; so do we. Paper 75, 8; see Paper 74, 1. However, in
`Aqua Products, the Federal Circuit declared where the burden of persuasion
`
`
`5 We invited both parties to request additional briefing or an oral hearing if
`either party felt it was necessary. Paper 71, 4. We received no such request.
`6 We note that the Office now has adopted a rule allocating the burden of
`persuasion in motions to amend, effective for motions filed on or after
`January 20, 2021. Rules of Practice To Allocate the Burden of Persuasion
`on Motions To Amend in Trial Proceedings Before the Patent Trial and
`Appeal Board, 85 Fed. Reg. 82923, 82924 (Dec. 21, 2020).
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`does not lie, but not where it does or may lie. See “Guidance on Motions to
`Amend in view of Aqua Products” (Nov. 21, 2017).7
`Subsequent to Aqua Products, but prior to Nike II, the Federal Circuit
`held that, in circumstances where a petitioner remains as a challenger in an
`inter partes review proceeding, the petitioner bears the burden of showing
`the unpatentability of substitute claims by a preponderance of the evidence.
`Bosch Auto. Serv. Sols., LLC v. Matal, 878 F.3d 1027, 1040 (Fed. Cir. 2017)
`(citing Aqua Products, 872 F.3d at 1311 (O’Malley, J., plurality)).
`Nevertheless, neither Aqua Products nor Bosch addressed the question of
`whether the Board could raise sua sponte a challenge to the patentability of a
`substitute claim, much less who bears the burden of persuasion in such a
`challenge. Nike II partially answered this unanswered question from Aqua
`Products. Specifically, the Federal Circuit held “that it is appropriate for the
`Board to sua sponte raise unpatentability grounds based on the IPR record
`and not be limited to the unpatentability grounds asserted by the petitioner
`in its petition or opposition to the motion to amend, provided that the Board
`gives the parties notice and an opportunity to respond.” Nike II at 53
`(emphasis added); see Hunting Titan, Paper 67, 8 (“We find that Nike[ II]
`resolves the question of whether the Board may advance a ground of
`unpatentability that a petitioner does not advance, or insufficiently
`developed, against substitute claims proposed in a motion to amend. The
`
`
` 7 https://www.uspto.gov/sites/default/files/documents/guidance_on_
`motions_to_amend_11_2017.pdf.
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`Board may do so.” (additional emphasis added)). Nike II, however, is silent
`on the allocation of the burden of persuasion in such a sua sponte challenge.
`Patent Owner contends that Bosch should govern the allocation of the
`burden of persuasion, and that Petitioner bears the burden of persuasion for a
`challenge it did not present in its Petition or in any opposition to the Motion
`to Amend. Paper 74, 2 (“Taking Bosch and Nike[ II] together, the Board
`may sua sponte identify patentability issues, but [Petitioner] still ultimately
`bears the burden of persuasion.”); see Paper 79, 5. Petitioner contends,
`however, that Bosch is distinguishable. Paper 75, 9; see Paper 78, 2.
`“Under Bosch, [Petitioner] agrees that it would bear the burden if the Board
`relied on art and argument raised in its initial briefing. But that is not the
`case here.” Paper 75, 9 (emphasis added). We agree with Petitioner that
`Bosch is distinguishable and does not govern the allocation of the burden in
`this remand.
`Generally, the Board relies “on the incentives the adversarial system
`creates, and expect[s] that the petitioner will usually have an incentive to set
`forth the reasons why the proposed substitute claims are unpatentable.”
`Hunting Titan, Paper 67, 12. The Board recognizes, however, that this may
`not always occur. As the Board explains,
`To be sure, there may be circumstances where the
`adversarial system fails to provide the Board with potential
`arguments for the unpatentability of the proposed substitute
`claims. As noted above, the Supreme Court in Cuozzo
`specifically addressed one such situation, in which the petitioner
`has ceased to participate in the proceeding altogether. Cuozzo
`[Speed Techs., LLC v. Lee], 136 S. Ct. [2131,] 2144 [(2016)]. A
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`similar situation may exist where a petitioner chooses not to
`oppose the motion to amend. And even where both a petitioner
`and patent owner participate in the motion to amend process,
`there may be situations where certain evidence of unpatentability
`has not been raised by the petitioner, but is readily identifiable
`and persuasive such that the Board should take it up in the
`interest of supporting the integrity of the patent system,
`notwithstanding the adversarial nature of the proceedings. For
`example, a situation could arise where the record readily and
`persuasively establishes that substitute claims are unpatentable
`for the same reasons that corresponding original claims are
`unpatentable. There may be other situations as well, but we need
`not undertake to delineate them with particularity at present.
`Such situations are usually fact-specific and the Board can
`address them as they arise.
`Id. at 12–13 (emphases added).
`In Nike I, the Federal Circuit noted,
`It may well be that the Board intended to convey that claim 49
`was obvious in light of Nishida because skipping stitches to form
`apertures, even though not expressly disclosed in Nishida, was a
`well-known technique in the art and that understanding perhaps
`would be a basis to conclude that one of skill in the art would
`utilize this technique to create holes for accepting shoe laces.
`But, the Board did not articulate these findings.
`Nike I at 1344–45 (footnote omitted). In our second Final Written Decision,
`we articulated such findings and identified support for them in the entirety of
`the record. See FWD II 16–17. In this regard, the Federal Circuit noted,
`“Spencer was undisputedly part of the record in this IPR proceeding. As the
`Board correctly observed, Adidas included Spencer as an attachment to its
`petition and both parties’ experts relied on Spencer’s teachings in their
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`declarations.”8 Nike II at 52. Although we failed to provide adequate notice
`of our intention to rely on those findings to the parties and an opportunity for
`the parties to be heard regarding those findings, the Federal Circuit did not
`fault us for evaluating patentability ourselves based on the entirety of the
`record that was, and is, before us.
`Here, that the Board, instead of the Petitioner, raised this challenge is
`a fundamental difference from Bosch. Because Petitioner did not raise the
`instant challenge to claim 49, Petitioner cannot be made to bear the burden
`of persuasion regarding that challenge. As the Federal Circuit held in Aqua
`Products and Nike II, “the Board ‘must consider the entirety of the record
`before it when assessing the patentability of amended claims.’” Nike II at 51
`(quoting Aqua Products, 872 F.3d at 1296). Thus, although the Petitioner
`may ordinarily bear the burden of persuasion regarding substitute claims,
`that is not the case here. Where, as here, the Board raises a patentability
`challenge to a substitute claim sua sponte, the Board itself must consider the
`record in its entirety and justify any finding of unpatentability by reference
`to evidence of record. See PTAB Consolidated Trial Practice Guide, 68
`(Nov. 2019) (“Ultimately, the Board determines whether substitute claims
`are unpatentable by a preponderance of the evidence based on the entirety of
`
`
`8 Spencer was placed in the record by Petitioner, but each Party’s declarant
`relies on its teachings. See Ex. 1001 ¶¶ 7, 39, 56; Ex. 2010 ¶¶ 51, 105;
`Ex. 2009, 42:24–43:12. Thus, each Party was on notice as to the content of
`Spencer and its potential relevance. The parties are tasked with considering
`the content of the record of the inter partes review.
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`the record, including any opposition made by the petitioner.”). We do so
`here.
`
`C. Obviousness of Claim 49 Over Nishida, Schuessler I and II, and Spencer
`
`As noted above, the Federal Circuit affirmed our determination that
`independent claim 47 is unpatentable as obvious over the combined
`teachings of Nishida and Schuessler I and II. The obviousness of claim 47
`over the combined teachings of Nishida and Schuessler I and II is no longer
`in dispute. Claim 49 depends from claim 47 and modifies original claim 19
`to recite “a plurality of apertures in the flat knit textile element” that are
`“formed by omitting stitches in the flat knit textile element and positioned in
`the upper for receiving laces.” Further, Petitioner challenged claim 19, as
`well as its base claim, claim 16, as anticipated by and obvious over Nishida.
`Pet. 3; see Dec. to Inst. 37. Patent Owner cancelled claims 16 and 19 in the
`Motion to Amend without contesting Petitioner’s challenge. Thus, Patent
`Owner waived any arguments regarding the application of the Nishida to the
`limitations of claim 16 or 19, required by claim 49. See MaxLinear, Inc. v.
`CF CRESPE LLC, 880 F.3d 1373, 1377–78 (Fed. Cir. 2018).
`
`1. Knowledge of a Person of Ordinary Skill in the Art
`
`Patent Owner contends:
`The parties agreed the skilled artisan was a person with
`experience designing and developing footwear. (Ex. 2010, ¶ 52
`(the skilled artisan “would have a few years of experience with
`design and development of footwear”); Ex. 1001, ¶ 9 (the skilled
`artisan “would have at least several years’ experience with all
`aspects of shoemaking”).) Neither party suggested the skilled
`19
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`IPR2013-00067
`Patent 7,347,011 B2
`
`artisan would also have knitting experience or expertise, such as
`experience with knitting processes and machines. (Id.; see also
`Ex. 2009, at 44, l1. 2-3.)
`Paper 74, 6 (emphasis added). This is incorrect.
`
`Petitioner asserted,
`one of ordinary skill in the art would have understood and
`expected the benefits of using a single type of textile having a
`plurality of knit constructions for an upper - that is, that a single
`type of textile having a plurality of knit constructions would
`provide the advantages of different properties in the shoe upper,
`such as breathability and elasticity, while increasing the
`efficiency of the manufacturing process. (’011 patent (Ex. 1002),
`2:62-3:16; 11:12-18). Specifically, each of Nishida, Glidden,
`McDonald, Whiting, and Shiomura teach the construction of
`and/or process for constructing a knitted shoe upper.
`Pet. 16–17 (emphases added); see Paper 75, 6; see also Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific
`findings on the level of skill in the art does not give rise to reversible error
`‘where the prior art itself reflects an appropriate level and a need for
`testimony is not shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State
`Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Further, Petitioner’s
`declarant testified that a person of ordinary skill in the art would have basic
`knowledge of the functional requirements of footwear and a comprehensive
`understanding of the range of material choices, as well as construction
`techniques and processes used to create the various parts of a shoe and to
`assemble them in a proper manner.” Ex. 1001 ¶ 9 (emphasis added); see
`Ex. 1016 ¶ 16 (echoing Mr. Fredrick’s definition of a person of ordinary
`skill in the art); Ex. 2009, 49:13–80:6 (discussing knitting knowledge of a
`20
`
`
`
`IPR2013-00067
`Patent 7,347,011 B2
`
`person of ordinary skill in the art). Moreover, Patent Owner’s declarant
`testified “a person of ordinary skill in the art (POSITA) at the time of the
`invention for the ‘011 Patent would have a few years of experience with
`design and development of footwear and knowledge of textiles used in such
`footwear.” Ex. 2010 ¶ 52 (emphasis added). Consistent with the declarants’
`testimony, and as is thoroughly evidenced by the applied references,
`especially Nishida and Glidden, knit textiles and knitting methods were
`known to be used in footwear manufacture. E.g., Ex. 1005, 3:13–15, 5:63–
`6:2; Ex. 1007, 2:2–10; cf. Ex. 1002, 6:51–63 (“Textile element 40 is
`primarily formed from one or more yarns that are mechanically-manipulated
`through either an interweaving, intertwining and twisting, or interlooping
`process, for example. . . . Interlooping involves the formation of a plurality
`of columns of intermeshed loops, with knitting being the most common
`method of interlooping.”). Thus, we remain persuaded that a person of
`ordinary skill in the art would have had knowledge of the materials used in
`the manufacture of footwear, including knit materials and methods of
`knitting materials. FWD I 15–16.
`
`Patent Owner also contends:
`The other evidence of record also fails to establish that
`Spencer’s alleged teaching was a well-known technique to the
`skilled artisan. Spencer is a 413-page technical textbook
`authored by a knitting expert. (Ex. 1012, at 3, 5.) [Petitioner]
`did not provide any evidence that shows the skilled artisan, who
`was in the footwear industry, would have been aware of the
`Spencer textbook in the knitting industry.
`
`21
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`
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`IPR2013-00067
`Patent 7,347,011 B2
`
`Paper 74, 6. Having determined that a person of ordinary skill in the art
`would have experience with knit materials and knitting methods and
`machines and, in particular, with knit materials for use in footwear, “the
`hypothetical person of ordinary skill in the art against whose knowledge the
`question of obviousness is weighed is legally presumed to know all the
`relevant prior art,” including Spencer. In re Kleinman, 484 F.2d 1389, 1392
`(CCPA 1973) (citing In re Boyer, 363 F.2d 455, 458–59 (CCPA 1967)); see
`supra note 8. On this record, we determine a person of ordinary sk
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