Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 71
`Entered: July 24, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`adidas AG,
`Petitioner,
`
`v.
`
`NIKE, Inc.,
`Patent Owner.
`____________
`
`Case 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.
`
`
`
`ORDER
`Conduct of the Proceeding on Remand
`37 C.F.R. § 42.5
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 71
`Entered: July 24, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`adidas AG,
`Petitioner,
`
`v.
`
`NIKE, Inc.,
`Patent Owner.
`____________
`
`Case 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.
`
`
`
`ORDER
`Conduct of the Proceeding on Remand
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2013-00067
`Patent 7,347,011 B2
`
`
`
`On April 9, 2020, the U.S. Court of Appeals for the Federal Circuit
`(“Federal Circuit”) affirmed the Board’s determination that proposed
`substitute claims 47, 48, and 50 are unpatentable as obvious over the
`combined teachings of U.S. Patent No. 5,345,638 (Nishida); U.S. Patent No.
`2,178,941 (Schuessler I); and U.S. Patent No. 2,150,730 (Schuessler II).
`Nike, Inc. v. adidas AG, 955 F.3d 45, 55 (Fed. Cir. 2020). With respect to
`claim 49, which depends directly from proposed substitute independent
`claim 47, the Board determined that, in view of the teachings of David J.
`Spencer, Knitting Technology: A Comprehensive Handbook and Practical
`Guide (3d ed. 2001) (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 by substitute claim 49. Id. at 50. The Federal
`Circuit held that, although the Board may rely on prior art of record in
`considering the patentability of amended claims, the Board must give the
`parties notice and an opportunity to respond to such reliance. Id. at 54.
`In the present inter partes review, the Board could have provided such
`notice and opportunity by informing the parties that it intended to rely on
`Spencer for disclosing the disputed limitation of substitute claim 49 and
`requesting supplemental briefing from the parties regarding its proposed
`ground for unpatentability or by requesting that the parties be prepared to
`discuss Spencer in connection with substitute claim 49 at an oral hearing.
`See id. at 54. Because the Board did not provide the parties with notice and
`an opportunity to be heard regarding the application of the teachings of
`
`2
`
`
`
`IPR2013-00067
`Patent 7,347,011 B2
`
`
`Spenser 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. Id. at 55. The mandate issued May 18,
`2020.
`
`Pursuant to Patent Trial and Appeal Board (PTAB), Standard
`Operating Procedure (SOP) 9, which describes procedures for decisions
`remanded from the Federal Circuit for further proceedings, the parties
`conferred to discuss procedures for this case upon remand. Subsequently, a
`conference call was held on July 23, 2020, between Administrative Patent
`Judges Cocks, Arpin, and Daniels, and counsel for the parties, including
`Mitchell G. Stockwell, Vaibhav P. Kadaba, and Michael T. Morlock of
`Kilpatrick Townsend & Stockton LLP, Atlanta, GA, for Petitioner, and
`Michael J. Harris of Banner & Witcoff, Ltd., Chicago, IL, for Patent Owner,
`to discuss the procedure for this case upon remand.
`In accordance with the parties’ pre-conference agreement, no
`submission of additional evidence is necessary or permitted, and none is
`authorized. After hearing arguments from both parties during the conference
`call, the Board determined that each party is authorized to file an initial brief
`of not more than ten (10) pages, which may address three issues: (1) does
`Spenser teach or suggest the disputed limitation of substitute claim 49?,1
`(2) would a person of ordinary skill in the art have had reason to combine
`
`
`1 See Nike, 955 F.3d at 53 (“Throughout the IPR proceeding, Adidas never
`argued that skipping stitches to form apertures was a well-known technique,
`let alone that Spencer taught this claim limitation.”).
`
`3
`
`
`
`IPR2013-00067
`Patent 7,347,011 B2
`
`
`the teachings of Nishida, Schuessler I and II, and Spenser to achieve the
`article of footwear recited in claim 49?, and (3) given that the Board sua
`sponte identified a patentability issue for proposed substitute claim 49 based
`on the prior art of record, which, if either, party bears the burden of
`persuasion? The initial briefing is strictly limited to these three issues. The
`Board further determined that each party is authorized to file a reply brief of
`not more than five (5) pages, which is strictly limited to responding to
`arguments raised by the opposing party in its initial briefing. No new
`arguments may be presented in the reply brief. The initial briefs shall be
`filed on Thursday, August 20, 2020, and the reply briefs shall be filed on
`Thursday, September 3, 2020. No other briefing is authorized at this time.
`In addition, the parties agreed that no oral hearing is necessary at this time.
`We discussed the briefing requirements and schedule during the
`conference call, and the parties acknowledged that they understood the scope
`and timing of the briefing. If either party later determines that additional
`briefing or an oral hearing is necessary, after first conferring, the parties
`jointly may contact the Board to schedule a conference call to discuss the
`necessity for such additional briefing or oral hearing.
`In consideration of the foregoing, it is hereby:
`ORDERED that neither further submission of evidence nor an oral
`hearing is authorized;
`FURTHER ORDERED that each of the parties is authorized to file an
`initial brief of not more than ten (10) pages, which is limited to addressing
`three issues:
`
`4
`
`
`
`IPR2013-00067
`Patent 7,347,011 B2
`
`
`
`(1) does Spenser teach or suggest the disputed limitation of substitute
`claim 49?,
`(2) would a person of ordinary skill in the art have had reason to
`combine the teachings of Nishida, Schuessler I and II, and Spenser to
`achieve the article of footwear recited in claim 49?, and
`(3) given that the panel sua sponte identified a patentability issue for
`proposed substitute claim 49 based on the prior art of record, which, if
`either, party bears the burden of persuasion?,
`on Thursday, August 20, 2020; and
`FURTHER ORDERED each of the parties is authorized to file a reply
`brief of not more than five (5) pages, limited to responding to arguments
`raised by the opposing party in its initial brief and containing no arguments
`for patentability or unpatentability not presented in that party’s initial brief,
`on Thursday, September 3, 2020.
`
`
`
`
`
`
`
`5
`
`
`
`IPR2013-00067
`Patent 7,347,011 B2
`
`
`PETITIONER:
`Mitchell G. Stockwell
`Vaibhav P. Kadaba
`Tiffany L. Williams
`Theodore G. Brown III
`KILPATRICK TOWNSEND & STOCKTON LLP
`mstockwell@kilpatricktownsend.com
`wkabada@kilpatricktownsend.com
`twilliams@kilpatricktownsend.com
`tbrown@kilpatricktownsend.com
`
`PATENT OWNER:
`Jonathan van Es
`Thomas Pratt
`Joseph M. Skerpon
`Harry Porter
`Michael Harris
`Christopher Renk
`BANNER & WITCOFF, LTD.
`pvanes@bannerwitcoff.com
`tpratt@bannerwitcoff.com
`jskerpon@bannerwitcoff.com
`wporter@bannerwitcoff.com
`mharris@bannerwitcoff.com
`crenk@bannerwitcoff.com
`
`6
`
`
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