adidas AG (Petitioner) v.
`NIKE, Inc. (Patent Owner)
`IPR2016-00921 (U.S. Patent 7,814,598)
`IPR2016-00922 (U.S. Patent 8,266,749)
`
`Petitioner’s Demonstratives
`United States Patent Trial and Appeal Board
`July 12, 2017
`
`Petitioner’s Demonstratives (Ex. 1016) - 1
`
`
`NIKE, Inc. (Patent Owner)
`IPR2016-00921 (U.S. Patent 7,814,598)
`IPR2016-00922 (U.S. Patent 8,266,749)
`
`Petitioner’s Demonstratives
`United States Patent Trial and Appeal Board
`July 12, 2017
`
`Petitioner’s Demonstratives (Ex. 1016) - 1
`
`
`
`Instituted Grounds of Unpatentability
`
`Claims – 598 Patent
`
`1-13
`
`Claims – 749 Patent
`
`1-9, 11-19, and 21
`
`Prior Art
`
`Reed + Nishida
`
`Prior Art
`
`Reed + Nishida
`
`IPR2016-00921, Institution Decision, Paper 6, at 20.
`IPR2016-00922, Institution Decision, Paper 6, at 21.
`
`Petitioner’s Demonstratives (Ex. 1016) - 2
`
`
`
`U.S. Patent No. 3,985,003 to Reed
`
` Reed discloses a method of manufacturing a
`wearable item, which includes, among other
`things,
`– Mechanically manipulating a yarn with a circular-
`knitting machine to form a cylindrical textile structure
`with textile elements located in different portions of the
`textile structure;
`– Removing the textile elements from the textile
`structure; and
`– Incorporating the textile elements “to form all types of
`garments worn by men, women, and children.”
`
`IPR2016-00921, Institution Decision, Paper 6, at 12 (citing Ex. 1006, 1:33-35, 2:22-25, 2:29-31, 3:12-19, 5:56-58, 5:67-6:5).
`IPR2016-00922, id.
`Petitioner’s Demonstratives (Ex. 1016) - 3
`
`
`
`Reed’s Textile Element Is Formed by Interknitting Two Circular Knitted
`Tubes to Form a Pattern Outline
`
`Interknitted stitches
`forming outline of
`textile element formed
`on inner tube 12
`
`Interknitted stitches
`forming outline of
`textile element formed
`on inner tube 12
`
`IPR2016-00921, IPR Petition, Paper 1, at 14-15 (citing Ex. 1006, 1:58-64, FIG. 1; Ex. 1003, ¶ 98).
`IPR2016-00922, id.
`
`Petitioner’s Demonstratives (Ex. 1016) - 4
`
`
`
`Reed’s Textile Element May be Removed by Cutting Along an
`Interknitted Stitch Outline
`
`IPR2016-00921, Petitioner’s Reply, Paper 10, at 17 (citing Ex. 1006, 3:9-15, FIG. 1; Ex. 1003, ¶ 103).
`IPR2016-00922, Petitioner’s Reply, Paper 10, at 16-17 (citing id.).
`
`Petitioner’s Demonstratives (Ex. 1016) - 5
`
`
`
`U.S. Patent No. 5,345,638 to Nishida
`
` Nishida discloses production of a shoe upper by
`– Cutting out a layout in the form of the shoe upper from
`a web of material and;
`– Shaping the shoe upper by connecting material parts
`of the layout.
`
`IPR2016-00921, Institution Decision, Paper 6, at 14-15 (citing Ex. 1009, Abstract).
`IPR2016-00922, id.
`
`Petitioner’s Demonstratives (Ex. 1016) - 6
`
`
`
`Nishida’s Textile Element Is Formed by Knitting a Web of Material
`with a Layout
`
`IPR2016-00921, IPR Petition, Paper 1, at 15, 19 (citing Ex. 1009, 1:50-56, 3:6-9, Ex. 1003, ¶¶ 96, 113).
`IPR2016-00922, IPR Petition, Paper 1, at 21-22 (citing id.).
`
`Petitioner’s Demonstratives (Ex. 1016) - 7
`
`
`
`Nishida’s Cut-Out Textile Element is Shaped into a Shoe Upper
`
`IPR2016-00921, IPR Petition, Paper 1, at 16 (citing Ex. 1009, 1:10-18, FIG. 3).
`IPR2016-00922, IPR Petition, Paper 1, at 18-19 (citing id.).
`
`Petitioner’s Demonstratives (Ex. 1016) - 8
`
`
`
`Overview of Issues
`
` Level of Ordinary Skill in the Art
`
` Scope & Content of Reed & Nishida
`
` Motivation to Combine Reed & Nishida
`
` Weight Given to Mr. Holden’s Unrebutted Testimony
`
`
`
`
`IPR2016-00921, Owner's Response, Paper 9, at 3-4.
`IPR2016-00922, id.
`
`Petitioner’s Demonstratives (Ex. 1016) - 9
`
`
`
`POSITA Has Several Reasons To Combine Reed and Nishida
`
`Reed
`
`Nishida
`
`Reed’s application
`to garments
`suggests use for
`footwear.
`
`Reed’s method of
`making textile
`elements is similar
`to Nishida’s
`method of making
`layouts
`
`Reed & Nishida
`recognize
`cost/waste
`reduction through
`computerized
`knitting.
`
`Petitioner’s Demonstratives (Ex. 1016) - 10
`
`
`
`POSITA Has Several Reasons To Combine Reed and Nishida
`
`Reed
`IPR2016-00921, Petitioner’s Reply, Paper 10, at 12 (citing
`Ex. 1006, 5:56-57); IPR2016-00922, id.
`
`IPR2016-00921, IPR Petition, Paper 1, at 12 (citing Ex. 1006,
`1:33-35); IPR2016-00922, id.
`
`Nishida
`
`IPR2016-00921, IPR Petition, Paper 1, at 12 (citing Ex. 1009,
`1:10-14); IPR2016-00922, IPR Petition, Paper 1, at 11 (citing
`id.).
`
`IPR2016-00921, Petitioner’s Reply, Paper 10, at 6, 11 (citing
`Ex. 1006, 1:58-60, 2:29-31); IPR2016-00922, id.
`
`IPR2016-00921, Petitioner’s Reply, Paper 10, at 12 (citing
`Ex. 1009, 3:6-11); IPR2016-00922, id.
`
`IPR2016-00921, Petitioner’s Reply, Paper 10, at 11 (citing
`Ex. 1006, 2:22-25); IPR2016-00922, id.
`
`IPR2016-00921, Petitioner’s Reply, Paper 10, at 10, 12
`(citing Ex. 1009, 2:27-33, 4:53-55; Nike, Inc. v. Adidas AG,
`812 F.3d 1326, 1338 (Fed. Cir. 2016)); IPR2016-00922, id.
`
`Reed’s application
`to garments
`suggests use for
`footwear.
`
`Reed’s method of
`making textile
`elements is similar
`to Nishida’s
`method of making
`layouts
`
`Reed & Nishida
`recognize
`cost/waste
`reduction through
`computerized
`knitting.
`
`Petitioner’s Demonstratives (Ex. 1016) - 11
`
`
`
`It is Undisputed that the Reed/Nishida Combination Teach All
`Elements of 598 Patent, Claims 1 and 9
`
`[1A], [9A] A method of manufacturing an article of footwear, the method comprising
`steps of:
`
`[1B], [9B] mechanically-manipulating a yarn with a wide-tube circular knitting
`machine to form a cylindrical textile structure having an outline of at least one
`textile element;
`[1C], [9C] removing at least one textile element from the textile structure; and
`
`
`[1D], [9D] incorporating the textile element into an upper of the article of footwear.
`
`
`
`IPR2016-00921, IPR Petition, Paper 1, at 14-16, 19-20.
`
`Petitioner’s Demonstratives (Ex. 1016) - 12
`
`
`
`It is Undisputed that the Reed/Nishida Combination
`Teach All But One Element of 749 Patent, Claims 1 and 13
`[1A], [13A] A method of manufacturing an article of footwear, the method
`comprising:
`
`[1B], [13B] simultaneously knitting a first textile element and a second textile
`element simultaneously with knitting a surrounding textile structure,
`
`[13C] the first knitted textile element located within a first portion of the knitted
`textile structure, the second knitted textile element located within a second portion
`of the knitted textile structure,
`[1C], [13E] removing the first and second knitted textile elements from the
`surrounding knitted textile structure; and
`
`[1E], [13F] incorporating at least one of the first and second knitted textile
`elements into an upper of the article of footwear.
`
`
`IPR2016-00922, IPR Petition, Paper 1, at 13-19, 20-21.
`
`Petitioner’s Demonstratives (Ex. 1016) - 13
`
`
`
`Owner Only Disputes Whether the Reed/Nishida Combination
`Discloses “Texture” Element of 749 Patent, Claims 1 and 13
`
`[1C], the knitted textile element having at least one knitted texture that differs from a knitted
`texture in the surrounding knitted textile structure;
`
`[13D] varying at least one of the types of stitches or the types of yarns in the knitted textile structure
`to impart a texture to the first and second knitted textile elements different from a texture of the
`knitted textile structure extending between the first and second portions;
`
`
`*Underlined text are the only features that Owner relies on to distinguish 749 Patent, claims 1 and 13
`from the Reed/Nishida combination.
`
`IPR2016-00922, Owner's Response, Paper 9, at 50-55.
`
`Petitioner’s Demonstratives (Ex. 1016) - 14
`
`
`
`Owner Disputes Whether the Reed/Nishida Combination Discloses
`“To Impart” or “Forming Apertures” Features of Dependent Claims
`598 Patent, [4], [11] The method recited in claim 1 9, wherein the step of mechanically manipulating
`includes forming the textile element to include 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 textures to a surface of the textile element.
`
`•
`•
`
`•
`•
`
`
`749 Patent, [11], [21] The method of claim 1 13, wherein simultaneously knitting a the first knitted
`textile element simultaneously with a surrounding knitted textile structure
`includes forming the first knitted textile element to include 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 textures to a surface of the first knitted textile element.
`598 Patent, [6] The method recited in claim 1, wherein the step of mechanically manipulating
`includes forming apertures in the textile element.
`*Underlined text are the only features that Owner relies on to distinguish 598 Patent, dependent claims
`4, 6, and 11, and 749 Patent, dependent claims 11 and 21 from the Reed/Nishida combination.
`IPR2016-00921, Owner's Response, Paper 9, at 45-55.
`IPR2016-00922, Owner's Response, Paper 9, at 55-58.
`
`Petitioner’s Demonstratives (Ex. 1016) - 15
`
`
`
`Mr. Holden Provided His Understanding of the
`Level of Ordinary Skill in the Art
`
`IPR2016-00921, IPR Petition, Paper 1, at 8-9 (citing Ex. 1003, ¶ 34).
`IPR2016-00922, IPR Petition, Paper 1, at 8 (citing id.).
`
`Petitioner’s Demonstratives (Ex. 1016) - 16
`
`
`
`Level of Ordinary Skill in the Art is Not Low
`
` Owner’s 598 Response at 13 and 749 Response at 16-17
`incorrectly asserts that “a few years of experience in the footwear
`industry” shows the level of ordinary skill is “low.”
`
`
` But Mr. Holden testified that at least a few years of experience is
`needed to gain a well-rounded range of knowledge and
`understanding of:
`– Shoemaking;
`– Product design;
`– Upper material designs; and
`– Construction techniques and processes.
`IPR2016-00921, Petitioner's Reply, Paper 10, at 2 (citing Ex. 1003, ¶ 34; Ex. 2004, 129:1-18).
`
`IPR2016-00922, id.
`
`Petitioner’s Demonstratives (Ex. 1016) - 17
`
`
`
`Level of Ordinary Skill in the Art is Not Low
`
` Owner’s Expert provided a similar definition in IPR2013-
`00067 for the parent of the 598 & 749 patents:
`
`
`IPR2016-00921, Petitioner's Reply, Paper 10, at 2 (citing IPR2013-00067, Ex. 2010, ¶ 52).
`IPR2016-00922, id.
`
`Petitioner’s Demonstratives (Ex. 1016) - 18
`
`
`
`
`
`Level of Ordinary Skill in the Art Does Not Require Hands-On
`Knitting Machine Experience
`Level of skill does not require operating machinery.
`
`Owner’s Expert in
`Mr. Holden
`
`IPR2013-00067
`
`
`
`
`
`
`
`IPR2016-00921, Petitioner's Reply, Paper 10, at 2-3 (citing Ex. 2004, 72:18-25; IPR2013-00067, Ex. 1015, 38:18-23).
`IPR2016-00922, id.
`Petitioner’s Demonstratives (Ex. 1016) - 19
`
`
`
`Petitioner Properly Analyzed the Full Scope of Reed
`
` Owner’s 598 Response at 19 and 749 Response at 24 asserts that Reed’s
`description of the “present invention” limits Reed to preseamed garments, citing
`inapposite cases holding that claim scope disavowal is assessed for purposes of
`claim construction.
` For analyzing prior art, the rule is that: “The use of patents as references is not
`limited to what the patentees describe as their own inventions or to the problems
`with which they are concerned. They are part of the literature of the art, relevant for
`all they contain.” In re Heck, 699 F.2d 1331, 1332-33 (Fed. Cir. 1983)).
` Reed, in fact, discloses both finished, preseamed garments and post-seamed
`garments (e.g., lined garments).
`
`
`IPR2016-00921, Petitioner's Reply, Paper 10, at 6-7 (citing Ex. 1006, 1:64-2:1, 3:61-4:8, 6:10-17; Ex. 2004, 141:13-20, 142:2-17, 143:15-21; Ex. 1003, ¶¶ 105,
`117).
`IPR2016-00922, id.
`
`Petitioner’s Demonstratives (Ex. 1016) - 20
`
`
`
`Reed is Not Limited to Exclusively Preseamed Embodiments
`
` Reed describes at least two embodiments:
`– “Finished garment” embodiments, in which the preseamed sides
`may eliminate the need for further seaming and assembly.
`– “Lined garment section” embodiments, in which conventional
`assembly and seaming is still needed to achieve a finished
`garment.
`
`IPR2016-00921, Petitioner's Reply, Paper 10, at 6-7 (citing Ex. 1006, 1:64-2:1, 3:61-4:8, 6:10-17; Ex. 2004, 141:13-20, 142:2-17, 143:15-21; Ex. 1003, ¶¶ 105,
`117).
`IPR2016-00922, id.
`
`Petitioner’s Demonstratives (Ex. 1016) - 21
`
`
`
`Reed’s “Finished Garment” Embodiment
`
`IPR2016-00921, Petitioner’s Reply, Paper 10, at 6 (citing Ex. 1006, 1:64-2:1, FIG. 1; Ex. 2004, 142:2-17).
`IPR2016-00922, id.
`Petitioner’s Demonstratives (Ex. 1016) - 22
`
`
`
`Reed’s “Lined Garment Section” Embodiment
`
`Assembling &
`seaming by
`standard
`practices
`
`IPR2016-00921, Petitioner's Reply, Paper 10, at 6-7 (citing Ex. 1006, 3:61-64, 3:66-68, 6:10-13, FIG. 1), Ex. 2004, 141:13-20, 143:15-21; Ex. 1003,
`¶¶ 105, 117).
`IPR2016-00922, id.
`
`Petitioner’s Demonstratives (Ex. 1016) - 23
`
`
`
`Petitioner Properly Analyzed the Full Scope of Nishida
`
` Owner’s 598 Response at 23-24 and 749 Response at 28-29 asserts that Nishida’s
`description of the “primary object of this invention” being “to further develop” the
`previously known process for making shoe parts described in German Patent No.
`627 878 limits Nishida to “printing or producing layouts on the preexisting backing,
`just like the German Patent,” but has provided no authority to support its position.
` “The use of patents as references is not limited to what the patentees describe as
`their own inventions or to the problems with which they are concerned. They are
`part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d
`1331, 1332-33 (Fed. Cir. 1983).
`
`
`IPR2016-00921, Petitioner’s Reply, Paper 10, at 8.
`IPR2016-00922, id.
`
`Petitioner’s Demonstratives (Ex. 1016) - 24
`
`
`
`Owner’s Varied Characterizations of Nishida
`
`
`
`
`
`
`
`In the 598 and 749 Patent IPR proceedings and the 749 Patent prosecution:
`
`
`
`
`In IPR2013-00067 (parent of the 598 and 749 Patents):
`
`
`In the 749 Patent IPR proceeding:
`
`
`IPR2016-00921, Petitioner’s Reply, Paper 10, at 8-9 (citing IPR2016-00922, Ex. 1002, 1/13/2012 Response, pp. 6-8; IPR2013-00067, Paper 31, pp. 6-7;
`IPR2016-00922, Owner's Response, Paper 9, at 53).
`IPR2016-00922, id.
`
`Petitioner’s Demonstratives (Ex. 1016) - 25
`
`
`
`Nishida Describes a Layout Produced
`On a Web of Material or Inside a Web of Material
`
`
`
`
`
`
` Owner’s 598 Response at 25 and 749 Response at 29 incorrectly replaces “inside” with “onto”
`when describing the textile production process.
`
`
`
`
`
`IPR2016-00921, Petitioner's Reply, Paper 10, at 9 (citing Ex. 1009, 1:50-56).
`IPR2016-00922, id.
`
`Petitioner’s Demonstratives (Ex. 1016) - 26
`
`
`
`Nishida Describes Simultaneously Producing a Web of Material and
`a Layout Inside the Web of Material
`
`IPR2016-00921, Petitioner's Reply, Paper 10, at 8-10, 12 (citing Ex. 1009, Abstract, 1:50-56, 3:6-9).
`IPR2016-00922, id.
`
`Petitioner’s Demonstratives (Ex. 1016) - 27
`
`
`
`Mr. Holden Confirmed that Nishida Describes Simultaneously Producing
`a Layout With a Web of Material
`
`IPR2016-00921, Petitioner's Reply, Paper 10, at 9-10 (citing Ex. 1009, 2:12-20; Ex. 1003, ¶ 101); IPR Petition, Paper
`1, at 14, 19 (citing Ex. 1003, ¶¶ 98, 100--101);
`IPR2016-00922, Petitioner's Reply, Paper 10, at 9 (citing Ex. 1009, 2:12-20; Ex. 1003, ¶ 101); IPR Petition, Paper 1, at
`13 (citing Ex. 1003, ¶¶ 98, 100-101).
`Petitioner’s Demonstratives (Ex. 1016) - 28
`
`
`
`POSITA Has Several Reasons To Combine Reed and Nishida
`
`Reed
`
`Nishida
`
`Reed’s application
`to garments
`suggests use for
`footwear.
`
`Reed’s method of
`making textile
`elements is similar
`to Nishida’s
`method of making
`layouts
`
`Reed & Nishida
`recognize
`cost/waste
`reduction through
`computerized
`knitting.
`
`See Slide 11.
`
`Petitioner’s Demonstratives (Ex. 1016) - 29
`
`
`
`Mr. Holden Confirmed that Reed’s Discussion of Garments
`Suggests Use for Footwear
`
`IPR2016-00921, IPR Petition, Paper 1, at 12-13 (citing Ex. 1003, ¶¶ 131, 132).
`IPR2016-00922, IPR Petition, Paper 1, at 11-12 (citing id.).
`
`Petitioner’s Demonstratives (Ex. 1016) - 30
`
`
`
`Mr. Holden Confirmed that Reed and Nishida are Directed to
`Cost/Waste Reduction
`
`IPR2016-00921, Petitioner's Reply, Paper 10, at 11 (citing Ex. 1003 ¶134).
`IPR2016-00922, id.
`
`Petitioner’s Demonstratives (Ex. 1016) - 31
`
`
`
`Mr. Holden Confirmed That Reed and Nishida Describe Analogous
`Computerized Knitting Processes
`
`IPR2016-00921, IPR Petition, Paper 1, at 13 (citing Ex. 1003, ¶ 133).
`IPR2016-00922, IPR Petition, Paper 1, at 12 (citing id.).
`
`Petitioner’s Demonstratives (Ex. 1016) - 32
`
`
`
`POSITA Has Several Reasons To Combine Reed and Nishida
`
` “When a work is available in one field of endeavor, design incentives and other
`market forces can prompt variations of it, either in the same field or a different one.
`… [I]f a technique has been used to improve one device, and a person of ordinary
`skill in the art would recognize that it would improve similar devices in the same
`way, using the technique is obvious unless its actual application is beyond his or
`her skill.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
` Owner provides no evidence to contradict the incentives and market forces
`identified, nor evidence that using Reed’s circular knitting technique to produce
`shoe uppers as in Nishida is an actual application beyond the skilled artisan.
` Petitioner’s expert testimony showing multiple motivations to combine thus stands
`unrebutted.
`
`Petitioner’s Demonstratives (Ex. 1016) - 33
`
`
`
`Owner’s Remaining Critiques on Motivation to Combine Do Not
`Rebut Obviousness
`
` Whether a POSITA would have been aware of the problem in
`the 598/749 patents
` Whether Reed is analogous art
` Why a POSITA would have been motivated to combine Reed
`and Nishida
` How a POSITA would have combined Reed and Nishida
` Whether the combination renders Reed inoperable for its
`intended purpose
` Whether Reed teaches away from the combination
`
`IPR2016-00921, Owner’s Response, Paper 9, at 28-44
`IPR2016-00922, Owner’s Response, Paper 9, at 32-48.
`
`Petitioner’s Demonstratives (Ex. 1016) - 34
`
`
`
`Leo Pharmaceuticals Is Inapplicable
`
` The Federal Circuit already distinguished Leo in this context when
`addressing the parent of the 598 & 749 patents by finding that
`Nishida expressly recognized the need for waste reduction.
`
`Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1338 (Fed. Cir. 2016).
`
`Petitioner’s Demonstratives (Ex. 1016) - 35
`
`
`
`POSITA Knew of the Problem Addressed by
`the 598 and 749 Patents
` Owner asserts that the 598 and 749 Patents only address problem of “making
`footwear uppers from multiple materials.”
`1
`
`2
`3
`4
`
`5
`
`6
`
`• But the reason the 598 and 749
`patents discourage using multiple
`materials is:
`(a) because it is inefficient and
`costly, as it creates a need for
`additional machinery, suppliers,
`multiple manufacturing steps, etc.;
`and
`(b) it detracts from the breathability
`of footwear.
`
`IPR2016-00921, Petitioner's Reply, Paper 10, at 11 (citing Ex. 1001, 3:3-23).
`IPR2016-00922, id.
`
`Petitioner’s Demonstratives (Ex. 1016) - 36
`
`
`
`Mr. Holden Confirmed that the 598 and 749 Patents
`Identify Multiple Problems
`
`IPR2016-00921, Petitioner's Reply, Paper 10, at 11 (citing Ex. 1003, ¶¶ 47-48).
`IPR2016-00922, id.
`
`Petitioner’s Demonstratives (Ex. 1016) - 37
`
`
`
`Reed and Nishida Address the Same Problems as Those Stated in
`the 598 and 749 Patents
`
`Reed
`
`Nishida
`
`IPR2016-00921, Petitioner's Reply, Paper 10, at 11 (citing Ex. 1006, 2:22-25; Ex. 1009, 2:27-33, 3:49-52; Ex. 1003, ¶¶ 134-135).
`IPR2016-00922, id.
`Petitioner’s Demonstratives (Ex. 1016) - 38
`
`
`
`Reed is Analogous Art
`
`Prior art is analogous and can be applied in an obviousness
`combination if it either
`(1)
`“is from the same field of endeavor, regardless of the problem
`addressed”
`
`(2)
`
`or
`“is reasonably pertinent to the particular problem with which
`the inventor is involved.”
`
`Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1000–01 (Fed. Cir. 2016)
`(quoting In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992)).
`
`
`Petitioner’s Demonstratives (Ex. 1016) - 39
`
`
`
`Prong 1: Reed is From the Same Field of Endeavor as
`the 598 and 749 Patents
`
`598 and 749 Patents
`
`Reed
`
`“The field of endeavor of a patent is not limited to the specific point of
`novelty, the narrowest possible conception of the field, or the particular
`focus within a given field.” Unwired Planet, LLC v. Google Inc., 841 F.3d
`995, 1001 (Fed. Cir. 2016).
`
`IPR2016-00921, Petitioner's Reply, Paper 10, at 13 (citing Ex. 1001, 1:18-21); Owner’s Response, Paper 9, at 38 (citing Ex. 1006, 1:8-11).
`IPR2016-00922, Petitioner's Reply, Paper 10, at 13 (citing id.); Owner’s Response, Paper 9, at 43 (citing Id).
`Petitioner’s Demonstratives (Ex. 1016) - 40
`
`
`
`Prong 1: Mr. Holden Confirms that the Garment and Apparel
`Industries are in the Same Field of Endeavor
`
`IPR2016-00921, Petitioner's Reply, Paper 10, at 13-14 (citing Ex. 2004, 26:5-7, 27:11-28:10, 38:11-21).
`IPR2016-00922, Petitioner's Reply, Paper 10, at 13 (citing id.).
`
`Petitioner’s Demonstratives (Ex. 1016) - 41
`
`
`
`Federal Circuit Confirms Substantial Evidence Supports PTAB
`Finding That Nishida and Schuessler I, II Are in Similar Fields
` Like Nishida, the 598 and 749
`Patents describe forming a textile
`product in the form of shoe uppers
`from a textile material.
` Like Schuessler I and II, which
`describes knitting a cap on a knitting
`machine as shown in FIGs 1-2
`below, Reed describes forming a
`textile product in the form of
`garments (e.g., skirts, shirts, pants,
`dresses, hosiery) from a textile
`material.
`
`
`IPR2016-00921, Petitioner’s Reply, Paper 10, at 13 (citing Ex. 1001, 1:18-21, Ex. 1006, 5:56-57; Nike, 812, F.3d at 1337).
`IPR2016-00922, id.
`Petitioner’s Demonstratives (Ex. 1016) - 42
`
`
`
`Prong 2: Reed is Reasonably Pertinent to the Problem of
`the 598 and 749 Patents
`598 and 749 Patents
`
`Reed
`
`IPR2016-00921, Petitioner's Reply, Paper 10, at 11 (citing Ex. 1001, 3:3-23), 14 (citing Ex. 1001, 7:31-37; Ex. 1006, 1:45-55, 2:22-25).
`IPR2016-00922, id.
`Petitioner’s Demonstratives (Ex. 1016) - 43
`
`
`
`Prong 2: Reed is Reasonably Pertinent to the Problem of
`the 598 and 749 Patents
`
` It is legal error for “courts and patent examiners [to] look only to the
`problem the patentee was trying to solve. . . . Under the correct
`analysis, any need or problem known in the field and addressed by
`the patent can provide a reason for combining the elements in the
`manner claimed.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420
`(2007); see also Nike, 812 F.3d at 1337.
`
`
`
`Petitioner’s Demonstratives (Ex. 1016) - 44
`
`
`
`Reed Suggests How a POSITA Would Combine Reed and Nishida
`
` Reed suggests to the POSITA that its process could be used to make shoe
`uppers.
`
`
` The 598 and 749 patents define textiles broadly – not just as shoe uppers.
`
`
`IPR2016-00921, Petitioner's Reply, Paper 10, at 12, 16 (citing Ex. 1006, 5:56-57; Ex. 1003, ¶131-132; Ex. 1001, 2:15-23).
`IPR2016-00922, id.
`
`Petitioner’s Demonstratives (Ex. 1016) - 45
`
`
`
`Reed is Operable When Combined with Nishida
`
`“Finished Garment”
`• Sides cut along yellow lines to
`keep seams with the garment.
`• Bottom cut along red line to
`remove seam from the garment
`to form an opening for a
`person’s body.
`
`
`“Lined Garment Section”
`• Sides and bottom cut along
`yellow lines to keep seams with
`the garment.
`
`
`
`
`
`
`IPR2016-00921, Petitioner’s Reply, Paper 10, at 17 (citing Ex. 1006, 3:9-15, FIG. 1.).
`IPR2016-00922, Petitioner’s Reply, Paper 10, at 16-17 (citing id.).
`
`Petitioner’s Demonstratives (Ex. 1016) - 46
`
`
`
`Reed is Operable When Combined with Nishida
`
` In both the “finished garment” and “lined garment section” embodiments,
`the outlines are interknitted in layered form.
` That is consistent with Nishida:
`
`
`
`IPR2016-00921, Petitioner's Reply, Paper 10, at 16-18 (citing Ex. 1006, 3:9-15, Ex. 1003, ¶103; Ex. 1009, 3:67-68).
`IPR2016-00922, id.
`
`Petitioner’s Demonstratives (Ex. 1016) - 47
`
`
`
`Owner Does Not Establish Any “Teaching Away”
`
`Meiresonne v. Google, Inc., 849 F.3d 1379, 1382-83 (2017) (citation omitted):
` A reference teaches away “when a person of ordinary skill, upon reading the
`reference, would be discouraged from following the path set out in the
`reference, or would be led in a direction divergent from the path that was
`taken” in the claim. A reference that “merely expresses a general preference
`for an alternative invention but does not criticize, discredit, or otherwise
`discourage investigation into” the claimed invention does not teach away.
` The fact that Finseth describes descriptive text as “[o]ften[ ] ... cursory, if not
`cryptic” does not automatically convert the reference to one that teaches
`away from combining text descriptions with a rollover window. This
`description implies only that text descriptions may be incomplete or
`insufficient to fully understand the content. Finseth does not say or imply
`that text descriptions are “unreliable,” “misleading,” “wrong,” or “inaccurate,”
`which might lead one of ordinary skill in the art to discard text descriptions
`completely.
`
`
`Petitioner’s Demonstratives (Ex. 1016) - 48
`
`
`
`Reed Does Not Teach Away From Combination with Nishida
`
` Reed identifies more objectives than simply preseaming.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`IPR2016-00921, Petitioner's Reply, Paper 10, at 11 (citing Ex. 1006, 2:22-31).
`IPR2016-00922, id.
`
`Petitioner’s Demonstratives (Ex. 1016) - 49
`
`
`
`Reed Does Not Teach Away From Combination with Nishida
`
` Reed’s “lined garment sections” embodiments still require conventional
`assembly and seaming to form a finished product.
`
`
`
` Owner’s 598 Response at 39 and 749 Response at 48 admits that Nishida’s
`disclosure is similar.
`
`IPR2016-00921, Petitioner's Reply, Paper 10, at 20 (citing Ex. 1006, 6:10-13).
`IPR2016-00922, id.
`
`Petitioner’s Demonstratives (Ex. 1016) - 50
`
`
`
`Owner Disputes Whether the Reed/Nishida Combination Discloses
`One Element of 749 Patent, Claims 1 and 13
`
`[1C], the knitted textile element having at least one knitted texture (α) that differs from a knitted
`texture (β) in the surrounding knitted textile structure;
`
`[13D] varying at least one of the types of stitches or the types of yarns in the knitted textile structure
`to impart a texture (α) to the first and second knitted textile elements different from a texture (β)
`of the knitted textile structure extending between the first and second portions;
`
`
`*Underlined text are the only features that Owner relies on to distinguish 749 Patent, claims 1 and 13
`from the Reed/Nishida combination.
`
`IPR2016-00922, Owner's Response, Paper 9, at 50-55.
`
`Petitioner’s Demonstratives (Ex. 1016) - 51
`
`
`
`Mr. Holden Confirms That Reed Discloses the [1C] Feature
`
`β
`
`α
`
`IPR2016-00922, Petitioner's Reply, Paper 10, at 21 (citing Ex. 1003, ¶ 109; Ex. 1009, FIGS. 2a, 3).
`
`Petitioner’s Demonstratives (Ex. 1016) - 52
`
`
`
`Mr. Holden Confirms That Reed Discloses the [13D] Feature
`
`β
`
`α
`
`α
`
`IPR2016-00922, Petitioner’s Reply, Paper 10, at 21 (citing Ex. 1003, ¶¶ 108-109).
`
`Petitioner’s Demonstratives (Ex. 1016) - 53
`
`
`
`Nishida Discloses the [1C], [13D] Feature
`
` Owner’s 749 Response at 51-52 acknowledges that Nishida teaches a “web of material
`having different textures” but disputes whether there is any clear disclosure of where the
`textures differ.
`
`
`
`
`
`
`
`Petitioner’s Demonstratives (Ex. 1016) - 54
`
`
`
`Nishida Discloses the [1C], [13D] Feature
`
`β
`
`α
`
`α
`
`IPR2016-00922, Petitioner's Reply, Paper 10, at 22-23 (citing Ex. 1009, 2:15-20, 4:61, 5:50-51, FIG. 2).
`
`Petitioner’s Demonstratives (Ex. 1016) - 55
`
`
`
`Mr. Holden Confirms That Nishida Discloses the [1C], [13D] Feature
`
`IPR2016-00922, IPR Petition, Paper 1, at 17 (citing Ex. 1003, ¶¶ 110-111).
`
`Petitioner’s Demonstratives (Ex. 1016) - 56
`
`
`
`It is Undisputed that Reed Discloses the [1B] Feature
`
`
`
`749 Patent, clam 1[B]: “simultaneously knitting a textile element with a surrounding
`textile structure.”
`
`
`IPR2016-00922, IPR Petition, Paper 1, at 14-15 (citing Ex. 1006, 1:58-64).
`
`Petitioner’s Demonstratives (Ex. 1016) - 57
`
`
`
`Mr. Holden Confirms That Reed Discloses the [1B] Feature
`
`IPR2016-00922, IPR Petition, Paper 1, at 14 (citing Ex. 1003, ¶ 98).
`
`Petitioner’s Demonstratives (Ex. 1016) - 58
`
`
`
`Nishida Discloses the [1B] Feature
`
` Owner incorrectly asserts that the layout is not formed simultaneously
`with the surrounding textile.
`
` Nishida’s FIGs. 1-2 and 4-5 show the
`layouts within a surrounding web of
`material.
`
`
`
`IPR2016-00922, Petitioner's Reply, Paper 10, at 23-24 (citing Owner’s Response, Paper 9, p. 53; Ex. 1009, Abstract, FIG. 2).
`
`Petitioner’s Demonstratives (Ex. 1016) - 59
`
`
`
`Mr. Holden Confirmed that Nishida Discloses the [1B] Feature
`
`IPR2016-00922, IPR Petition, Paper 1, at 13-14 (citing Ex. 1003, ¶ 98, 100-101).
`
`Petitioner’s Demonstratives (Ex. 1016) - 60
`
`
`
`Owner Disputes Whether the Reed/Nishida Combination Discloses “To Impart”
`Feature of 598 Patent, Claims 4, 11, and 749 Patent, Claims 11, 21
`
`598 Patent, [4], [11] The method recited in claim 1 9, wherein the step of mechanically manipulating
`includes forming the textile element to include 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 textures to a surface of the textile element.
`
`•
`•
`
`
`749 Patent, [11], [21] The method of claim 1 13, wherein simultaneously knitting a the first knitted
`textile element simultaneously with a surrounding knitted textile structure
`includes forming the first knitted textile element to include 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 textures to a surface of the first knitted textile element.
`
`•
`•
`
`*Underlined text are the only features that Owner relies on to distinguish 598 Patent, dependent claims
`4 and 11, and 749 Patent, dependent claims 11 and 21 from the Reed/Nishida combination.
`
`IPR2016-00921, Owner's Response, Paper 9, at 45-50.
`IPR2016-00922, Owner's Response, Paper 9, at 55-58.
`
`Petitioner’s Demonstratives (Ex. 1016) - 61
`
`
`
`BRI Construction of “To Impart” Feature
`
`
`
`
`
`
`
`598 Patent, claims 4, 11; 749 Patent, claims 11, 21: “a second stitch configuration
`that is different from the first stitch configuration to impart varying textures.”
`598 and 749 patents describe formation of different textures by varying stitch type:
`
`
`
`
`
`598 and 749 patents also disclose that “similar stitches are utilized throughout
`textile element 40 to impart a common texture,” while “vary[ing] the stitches within
`textile element 40 [will] produce various . . . textures.”
`According to Merriam-Webster, “impart” means to give, convey, or grant from.
`
` Under BRI standard, the presence of the different stitch configurations gives or
`bestows the varying textures.
`
`IPR2016-00921, Petitioner's Reply, Paper 10, at 21 (citing Ex. 1014; Ex. 1001, 8:62-64, 9:1-4); Institution Decision, Paper 6, at 6.
`IPR2016-00922, Petitioner's Reply, Paper 10, at 24 (citing id.); id.
`Petitioner’s Demonstratives (Ex. 1016) - 62
`
`
`
`Board’s Discussion of the “To Impart” Feature
`
`IPR2016-00921, Institution Decision, Paper 6, at 6.
`IPR2016-00922, id.
`
`Petitioner’s Demonstratives (Ex. 1016) - 63
`
`
`
`Mr. Holden Confirms that Reed Discloses the
`“To Impart” Feature In Two Ways
`
`IPR2016-00921, Petitioner’s Reply, Paper 10, at 21-22 (citing Ex. 1003, ¶¶ 115,
`116).
`IPR2016-00922, Petitioner's Reply, Paper 10, at 24-25 (citing Id).
`
`Petitioner’s Demonstratives (Ex. 1016) - 64
`
`
`
`Mr. Holden Confirms that Reed Discloses the
`“To Impart” Feature In Two Ways
`
`IPR2016-00921, Petitioner’s Reply, Paper 10, at 21 (citing Ex. 1003, ¶117).
`IPR2016-00922, Petitioner's Reply, Paper 10, at 25 (citing id.).
`
`Petitioner’s Demonstratives (Ex. 1016) - 65
`
`
`
`Mr. Holden Confirms That The Presence of Different Stitches Can
`Impart a Perceived Texture Difference
`
`IPR2016-00921, Petitioner's Reply, Paper 10, at 4 (citing Ex. 2004, 177:11-25; 178:20-179:19).
`IPR2016-00922, id.
`
`Petitioner’s Demonstratives (Ex. 1016) - 66
`
`
`
`Nishida Discloses the “To Impart” Feature
`
`IPR2016-00921, Petitioner’s Reply, Paper 10, at 22-23 (citing Ex. 1009, 3:43-52, 4:6-9).
`IPR2016-00922, Petitioner's Rep
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