IPR2013-00067
`U.S. 7,347,011
`
`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
`
`Article of Footwear having a Textile Upper
`
`PETITIONER’S RESPONSE BRIEF ON REMAND
`
`
`U.S. 7,347,011
`
`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
`
`Article of Footwear having a Textile Upper
`
`PETITIONER’S RESPONSE BRIEF ON REMAND
`
`
`
`IPR2013-00067
`U.S. 7,347,011
`The foundation of Nike’s argument is that adidas bears the burden and thus
`
`should have introduced additional evidence regarding Spencer. Nike’s burden
`
`argument is incorrect, but, in any event, no additional expert testimony is required.
`
`Spencer is explicit that apertures can be formed by omitting stitches. This well-
`
`known technique can be used to form the apertures shown in Nishida’s Figure 3.
`
`Substitute claim 49 is obvious regardless of who bears the burden of persuasion.
`
`I. The Burden of Persuasion.
`Nike ignores that the issue in dispute is not whether adidas ordinarily bears
`
`the burden of establishing amended claims are unpatentable, but whether a
`
`petitioner bears that burden when the Board sua sponte raises a patentability issue.
`
`In this instance, the petitioner does not bear the burden.
`
`Bosch did not address this question. In Bosch, the Petitioner opposed a
`
`motion to amend, arguing, inter alia, that the proposed substitute claims were
`
`indefinite and obvious. Autel U.S. Inc. v. Bosch Auto. Serv. Sols. LLC, IPR2014-
`
`00183, Paper 38 at *1 (P.T.A.B. Sep. 12, 2014) (“the added limitations render the
`
`substitute apparatus claims indefinite.”); id. at *9 (the “substitute claims … add
`
`features that were already known … such that the claims would have been
`
`obvious.”). The Board rejected the amendment for the same reasons. Autel,
`
`IPR2014-00183, Paper 59 at *50, *53 (P.T.A.B. May 5, 2015). Thus, the Board did
`
`not sua sponte identify a ground of rejection, but rather applied the Petitioner’s
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`1
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`
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`IPR2013-00067
`U.S. 7,347,011
`analysis. The Federal Circuit identified one error, placing the burden on the Patent
`
`Owner while the Petitioner was still participating in the IPR. Bosch Auto. Serv.
`
`Sols., LLC v. Matal, 878 F.3d 1027, 1040 (Fed. Cir. 2017).
`
`Bosch is thus irrelevant to the sua sponte grounds here. Indeed, the Federal
`
`Circuit unequivocally confirmed that the Board may raise a ground of rejection sua
`
`sponte. Nike, Inc. v. adidas AG, 955 F.3d 45, 54 (Fed. Cir. 2020). It expressly
`
`“h[e]ld 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.” Id.
`
`at 53. In view of that holding, it makes no sense to place the burden of persuasion
`
`on the Petitioner for grounds it never raised. To hold otherwise inappropriately
`
`constrains the Board – petitioners may not care if narrower substitute claims issue
`
`and, in such a situation, only the Board can act to prevent issuance of unpatentable
`
`claims. The appropriate course, then, is for the Board to identify the ground and
`
`consider all evidence of record bearing on such an issue.
`
`In any event, the Board previously found that “the entirety of the record,
`
`including the arguments and evidence advanced by Petitioner in opposition to the
`
`Motion to Amend, conveys that Petitioner has met the burden.” Paper 69 at 11 n.6.
`
`As explained below, that finding remains correct. Substitute claim 49 is obvious.
`
`2
`
`
`
`IPR2013-00067
`U.S. 7,347,011
`Spencer Teaches the Disputed Limitation of Substitute Claim 49.
`II.
`Spencer explains that forming apertures by omitting stitches was a well-
`
`known technique. In particular, Spencer describes forming a net-like “open-work
`
`structure,” that “contains areas where certain adjacent wales are not as directly
`
`joined to each other by underlaps or sinker loops as they are to the wales on their
`
`other side. The unbalanced tension causes them to move apart, producing
`
`apertures at these points.” Ex. 1012 at 84. (emphasis added). Spencer describes,
`
`that “apertures” “may be produced by the introduction of empty needles and/or by
`
`using special elements to produce loop displacement.” Id. at 85 (emphasis added).
`
`Nike urges that “Spencer does not teach that ‘empty needles’ are the same as
`
`omitting stitches.” Paper 74 at 4. But empty needles necessarily do not carry yarn
`
`required for a stitch. Indeed, Spencer explains that an empty needle omits a stitch.
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`Ex. 1012 at 122. Spencer’s Figure 9.6 is entitled “Commencing knitting on an
`
`empty rib needle,” and the description states that “[a]s the needle was previously
`
`empty, there will be no loop in the wale ….” Id. Spencer also explains that a float
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`stitch “is produced when a needle (M) holding its old loop fails to receive the new
`
`yarn ….” Id. at 119. A missed yarn results in an omitted stitch. These “missed
`
`yarn” locations form apertures.
`
`Spencer is a textbook with a Copyright in 2001 (three years before the
`
`earliest priority date) and a first publication date nearly twenty years earlier in
`
`3
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`
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`IPR2013-00067
`U.S. 7,347,011
`1983. Such a textbook demonstrates what was well-known. Further, Knitting is
`
`fully contemplated by adidas’s identification of a skilled artisan, which included “a
`
`comprehensive understanding of … construction techniques and processes used to
`
`create the various parts of a shoe and to assemble them in a proper manner.” Ex.
`
`1001 at ¶ 9. Here the challenged patent “discloses and claims an article of footwear
`
`that combines a knitted upper…” (Id. at ¶ 19), and adidas’s expert was already
`
`familiar with Spencer, demonstrating that a skilled artisan would have been aware
`
`of this well-known technique. Ex. 2001 at 42:24-43:4.
`
`Nike criticizes adidas for not introducing additional expert testimony. This is
`
`irrelevant because Spencer’s disclosure is clear, and the Board raised this issue sua
`
`sponte. Further, “unless the Federal Circuit’s opinion directs the Board to reopen
`
`the evidentiary record” the Board is unlikely to authorize the entry of new
`
`evidence. Consolidated Trial Practice Guide (Nov. 2019) at 68.
`
`III. The Combination of Nishida, Schuessler I and II, and Spencer.
`Nike again ignores that this ground of rejection was raised sua sponte. No
`
`testimony is needed to understand the motivation to use a well-known technique of
`
`forming apertures with Nishida’s express disclosure of apertures. While Nishida
`
`may not explicitly state how its apertures were produced, it “does not … exclude
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`any manner by which those apertures may be formed.” Paper 69 at 18 (emphasis
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`added). adidas presented evidence that a person of skill in the art would have,
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`4
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`IPR2013-00067
`U.S. 7,347,011
`among other things, “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….” Ex. 1001 ¶ 9. KSR held that a skilled artisan would have “good
`
`reason to pursue the known options within his or her technical grasp,” a point
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`particularly applicable when those well-known options are found in a textbook as
`
`Spencer demonstrates. KSR Int’l Co. v. Teleflex Inc., 550 U.S. at 398, 421 (2007).
`
`adidas presented evidence of motivation to minimize waste. Paper 69 at 25.
`
`Creating apertures by omitting stitches, as is taught by Spencer, does just that –
`
`eliminating cutting and waste. See, e.g., Ex. 1001 at 56-57. Further, “Nishida
`
`teaches that portions of the upper may be knit so as to be ‘permeable to air.’” Id. at
`
`19 (quoting Ex. 1005 at 3:43–45). And this can be achieved by a “net-like” knitted
`
`structure. Ex. 1005 at 3:51-52. This plainly suggests to a skilled artisan the creation
`
`of an opening (i.e., an aperture), such as Spencer’s “open-work structure” used for
`
`forming “nets”, by omitting a stitch. Ex. 1012 at 85. And this is exactly what
`
`adidas’s expert testified. Ex. 1001 at 56-57. Nishida also describes providing “the
`
`type of embroidery by which a hole pattern is welded and which is commonly used
`
`for the sewing of button holes….” Ex. 1005 at 4:31-38 (emphasis added).
`
`Substitute claim 49 is obvious in view of the combination, including
`
`Spencer’s technique for forming apertures by omitting stitches.
`
`By: /Mitchell G. Stockwell/
`
`Mitchell G. Stockwell (Reg. No. 39,389)
`
`September 3, 2020
`
`5
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`
`
`IPR2013-00067
`U.S. 7,347,011
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of this PETITIONER’S
`
`RESPONSE BRIEF ON REMAND was served via email on the date below,
`
`upon the following:
`
`Michael Harris: michael.harris@arnoldporter.com
`Christopher Renk: chris.renk@arnoldporter.com
`
`Dated: September 3, 2020
`
`By: /Mitchell G. Stockwell/
`
`Mitchell G. Stockwell
`Reg. No. 39,389
`Lead Counsel for Petitioner
`
`
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