UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`adidas AG
`Petitioner,
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`v.
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`NIKE, Inc.
`Patent Owner
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`Case IPR2013-00067
`Patent No. 7,347,011
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`PATENT OWNER’S REPLY BRIEF ON SECOND REMAND
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`adidas AG
`Petitioner,
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`v.
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`NIKE, Inc.
`Patent Owner
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`Case IPR2013-00067
`Patent No. 7,347,011
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`PATENT OWNER’S REPLY BRIEF ON SECOND REMAND
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`I.
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`INTRODUCTON
`adidas failed to identity any evidence that shows omitting stitches to form
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`apertures was a well-known technique to the skilled artisan, or that the skilled artisan
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`had reason to combine the prior art to achieve claim 49. adidas instead relies on
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`attorney argument, including that the disputed limitation was “hardly a leap of
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`innovation.” Its attorneys’ present-day conjectures regarding what was known to the
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`skilled artisan sixteen years ago is not evidence. adidas failed to satisfy its burden.
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`II. ADIDAS FAILED TO PROVE SPENCER TEACHES THE DISPUTED
`LIMITATION OF CLAIM 49
`adidas failed to identity any portions of Spencer that teach omitting stitches1
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`to form apertures. (Paper 75, at 1-4.) Instead, adidas identified portions of Spencer
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`that teach creating stiches to form various structures. (Id.)
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`adidas cited Section 6.8.4 of Spencer, which describes several types of open-
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`work structures. (Ex. 1012, at 84-85.) Some of the structures have apertures and
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`some do not. (Id.) Because not all of the structures have apertures, Spencer
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`distinguishes between “open-work structures” and “open-work apertures.” (Id.)
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`Spencer teaches that apertures are formed by unbalanced tension in open-
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`work structures. (Ex 1012, at 84.) Unbalanced tension is created where “certain
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`adjacent wales are not as directly joined to each other . . . as they are to the wales on
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`1 A “stitch” is “three or more intermeshed needle loops.” (Ex. 1012, p. 69.)
`1
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`their other side.” (Id.) In other words, Spencer teaches forming apertures by joining
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`or stitching certain wales more closely to their adjacent wales on one side than to
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`their adjacent wales on the other side. (Id.) Spencer does not mention omitting
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`stitches in this context. (Id.)
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`Spencer goes on to explain that open-work structures (not apertures) may be
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`produced in several ways, including (i) the introduction of empty needles; (ii) using
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`special elements to produce loop displacement; or (iii) selective press-off of fabric
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`loops. (Ex. 1012, at 85.) Spencer never states that apertures may also be produced
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`using any of these techniques. (Id.) Nor does Spencer state that any of these
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`techniques involve omitting stitches. (Id.)
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`adidas also cited Sections 9.4 and 9.6 of Spencer, which describes float and
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`tuck stitches. (Ex. 1012, at 119-126.) In these sections, Spencer teaches how to create
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`these different types of stitches, not how to omit them. (Id.) Spencer never mentions
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`omitting stitches in this context. (Id.) Spencer also never states that float and tuck
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`stiches are used to form apertures. (Id.) Spencer lists many structures for which float
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`and tuck stitches may be used, but an aperture is not one of them. (Id.)
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`If adidas’s argument is that the skilled artisan would have interpreted the
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`above portions of Spencer to mean the same thing as omitting stitches, adidas failed
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`to provide any evidence supporting that contention. As Nike explained in its opening
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`brief, adidas did not present any expert testimony or other evidence linking
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`2
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`Spencer’s teachings to the disputed limitation. (Paper 74, at 4, 8-9.) And adidas’s
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`attorney argument in its remand brief is not evidence. Icon Health & Fitness, Inc. v.
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`Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017).
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`III. ADIDAS FAILED TO PROVE THE SKILLED ARTISAN WOULD
`HAVE HAD REASON TO COMBINE THE PRIOR ART TEACHINGS
`TO ACHIEVE THE FOOTWEAR RECITED IN CLAIM 49
`adidas parroted the Board’s motivation arguments from the Decision on
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`Remand. (Paper 75, at 4-8.) Those arguments fail for the reasons Nike provided in
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`its opening brief. (Paper 74, at 8-10.)
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`adidas also argued the record identifies “a finite number of predictable
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`solutions for forming holes.” But the only evidence adidas cited is Spencer and
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`Nike’s expert testimony, neither of which identifies omitting stitches as a solution.
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`Spencer teaches forming apertures by unbalanced tension. Nike’s expert discussed
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`forming holes by “punching out the openings.” (Ex. 2010, ¶ 107.)
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`adidas also failed to establish the skilled artisan in the footwear industry would
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`have known of Spencer and its teachings in the knitting industry. adidas argued only
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`that Spencer pre-dates the ’011 patent, that Spencer allegedly provided a useful
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`reference to its “readers in education, industry, and commerce,” and that the skilled
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`artisan would have had an understanding of the materials, techniques, and processes
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`for making shoes. But even if all of that is true, it does not qualify Spencer as
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`analogous art the Board may consider. (See Paper 74, at 7.)
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`3
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`adidas also incorrectly argued—through attorney argument—that a skilled
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`artisan would have combined Nishida, Schuessler I and II, and Spencer because of
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`a desire to minimize waste and eliminate cutting. adidas did not cite any evidence
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`regarding this alleged motivation as to Spencer. None exists—there is neither expert
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`testimony nor any other evidence that Spencer’s teachings minimize waste or
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`eliminate cutting. Attorney argument is not evidence. Icon Health, 849 F.3d at 1043.
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`Finally, adidas continues to incorrectly argue that Nishida teaches or suggests
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`omitting stitches to form apertures. The Board and the Federal Circuit have already
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`rejected this argument. (Paper 69, at 17.) adidas’ expert testimony regarding Nishida
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`is irrelevant. The expert did not offer testimony regarding how Nishida’s “net-like
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`woven or knitted structure” is formed. (Ex. 1001, at 56-57.) He merely opined that
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`the structure has apertures for air permeability. (Id.)
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`IV. ADIDAS BEARS THE BURDEN OF PERSUASION
`adidas argued neither party bears the burden, thus implicitly arguing the Board
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`bears the burden. (Paper 75, at 8-10.) The USPTO raised, and the Federal Circuit
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`rejected, that argument in Bosch. There, the Federal Circuit explained the Board may
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`“justify any finding of unpatentability by reference to the evidence of record in the
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`IPR.” Bosch Auto. Serv. Sols., LLC v. Matal, 878 F.3d 1027, 1040 (Fed. Cir. 2017),
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`as amended (Mar. 15, 2018). The USPTO argued, as a result, that the “petitioner or
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`agency” bears the burden of persuasion. (Ex. 2024, at 5-6.) The Federal Circuit
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`4
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`disagreed and kept the burden on the petitioner. Bosch, 878 F.3d at 1040.
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`The Federal Circuit added to its jurisprudence in its most recent opinion in
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`this proceeding, holding that the Board may also sua sponte identify patentability
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`issues based on the petitioner’s record. Nike, Inc. v. adidas AG, 955 F.3d 45, 51 (Fed.
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`Cir. 2020). But the Court did not address or overturn Bosch. Id.
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` It makes sense for the burden to remain on adidas because, like the petitioner
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`in Bosch, adidas created the IPR record to which the Board is confined. The Federal
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`Circuit noted that its recent opinion in this proceeding does not authorize the Board
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`to look outside the petitioner’s IPR record. Nike, 955 F.3d at 51 at n.1. If the Board
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`is permitted to do so in other proceedings in the future, perhaps it may make sense
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`for the Board to bear the burden of persuasion in those instances. But, here, the Board
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`is confined to the record adidas created and Bosch continues to control. Id.
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`adidas’s reliance on prior Board decisions and the Board’s trial practice guide
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`is misplaced because those authorities do not address this burden question. They
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`address the undisputed point that the Board may justify a finding of unpatentability
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`by reference to the totality of the record. They do not, and cannot, overturn Bosch.
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`adidas bears the burden of persuasion.
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`V. CONCLUSION
`adidas failed to carry its burden of proving substitute claim 49 is unpatentable.
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`Date: September 3, 2020
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`/Christopher J. Renk/ .
`Christopher J. Renk (Reg. No. 33,761)
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`5
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that Patent Owner’s counsel served a copy
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`of the foregoing on the following counsel of record for Petitioner by email on
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`September 3, 2020:
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`Mitchell G. Stockwell (mstockwell@kilpatricktownsend.com)
`Vaibhav P. Kadaba (wkadaba@kilpatricktownsend.com)
`Tiffany L. Williams (tiwilliams@kilpatricktownsend.com)
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street, NE, Suite 2800
`Atlanta, Georgia 30309
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`Theodore G. Brown III (tbrown@kilpatricktownsend.com)
`Kilpatrick Townsend & Stockton LLP
`1080 Marsh Road
`Menlo Park, California 94025
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`/Michael J. Harris/ .
`Michael J. Harris
`ARNOLD & PORTER
`70 West Madison Street, Suite 4200
`Chicago, Illinois 60602
`michael.harris@arnoldporter.com
`Telephone: 312-583-2300
`Facsimile: 312-583-2360
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`6
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