Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 33
`Entered: May 29, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NIKE INC.,
`Petitioner,
`
`v.
`
`JEZIGN LICENSING, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00246
`Patent 6,837,590 B2
`____________
`
`Before KRISTEN L. DROESCH, PHILLIP J. KAUFFMAN, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a), 37 C.F.R. § 42.73
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 33
`Entered: May 29, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NIKE INC.,
`Petitioner,
`
`v.
`
`JEZIGN LICENSING, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00246
`Patent 6,837,590 B2
`____________
`
`Before KRISTEN L. DROESCH, PHILLIP J. KAUFFMAN, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a), 37 C.F.R. § 42.73
`
`
`
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`
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`Case IPR2017-00246
`Patent 6,837,590 B2
`
`I. INTRODUCTION
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`
`§ 6, and this Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons that follow, we determine that
`Petitioner has shown by a preponderance of the evidence that claims 1–3
`(“the challenged claims”) of U.S. Patent No. 6,837,590 B2 (Ex. 1001, “the
`’590 Patent”) are unpatentable.
`A. Procedural History
`Nike Inc. (“Petitioner”) filed a Petition for inter partes review of the
`challenged claims. Paper 3 (“Pet.”). Jezign Licensing, LLC (“Patent
`Owner”) timely filed a Preliminary Response. Paper 11. Pursuant to 35
`U.S.C. § 314, we instituted trial on May 30, 2017, as to the challenged
`claims of the ’590 Patent (Paper 12 ,“Institution Decision” or “Dec.”) and on
`May 2, 2018, we modified the Institution Decision to institute review of all
`challenged claims on all grounds presented in the Petition (Paper 30, “SAS
`Order”). Accordingly, this inter partes review includes the following
`challenges: (1) claims 1 and 2 as unpatentable under 35 U.S.C. § 102(a) and
`(b)1 in view of Shkalim2; (2) claim 3 as unpatentable under 35 U.S.C. § 103
`in view of Shkalim and Powell3; (3) claims 1 and 2 as unpatentable under 35
`
`
`1 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. § 100 et seq. effective on March 16, 2013. The ’590 patent
`issued from an application filed before March 16, 2013; therefore, we
`apply the pre-AIA versions of the statutory bases for unpatentability.
`2 Shkalim, EP 0 534 560 A1, published Mar. 31, 1993 (Ex. 1003,
`“Shkalim”).
`3 Powell, U.S. 4,130,951, issued Dec. 26, 1978 (Ex. 1006, “Powell”).
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`U.S.C. § 102(a) and (b) in view of Chien4; (4) claim 3 as unpatentable under
`35 U.S.C. § 103(a) in view of Chien and Powell; (5) claims 1 and 2 as
`unpatentable under 35 U.S.C. § 102(a) and (b) in view of Chiaramonte5; and
`(6) claim 3 as unpatentable under 35 U.S.C. § 103(a) in view of
`Chiaramonte and Powell. See Dec., 33; SAS Order, 2.
`After institution of trial, Patent Owner filed a Patent Owner Response
`(Paper 16, “PO Resp.”), to which Petitioner filed a Reply (Paper 24,
`“Reply”). Petitioner relies on a Declaration of Lance Rake (Ex. 1002) to
`support its position. Petitioner also filed Objections to Evidence (Paper 17)
`and a Motion to Exclude Evidence (Paper 25). Patent Owner opposed the
`Motion to Exclude (Paper 27) and Petitioner submitted a Reply in support of
`its Motion to Exclude (Paper 29). An oral argument was held on February
`28, 2018. A transcript of the oral argument is included in the record. Paper
`30 (“Tr.”).
`
`
`B. Related Matters
`The parties identify the following district court cases that would affect
`or be affected by a decision in the instant proceeding: Jezign Licensing,
`LLC v. Nike Inc., Case No. 16-cv-1192-TDC (D. Md.); and Jezign
`Licensing, LLC v. Bebe Stores, Inc., Case No. 16-cv-1191-TDC (D. Md.).
`Pet. 1; Paper 5, 2. Patent Owner additionally identifies the following district
`court case: Jezign Licensing, LLC v. Skechers U.S.A., Inc., Case No. 8:16-
`cv-1193 (D. Md.). Paper 5, 2.
`
`
`4 Chien, U.S. 5,865,523, issued Feb. 2, 1999 (Ex. 1004, “Chien”).
`5 Chiaramonte, Jr., U.S. 4,112,601, issued Sept. 12, 1978 (Ex. 1005,
`“Chiaramonte”).
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`C. The ’590 Patent (Ex. 1001)
`The ’590 Patent is directed to “shoes including soles that are
`switchably illuminated.” Ex. 1001, 1:11–14. The ’590 Patent describes as
`background that night safety for outdoor exercisers is an ongoing concern to
`motorists. See id. at 1:17–25. “Some athletic shoes include illuminated
`portions on the shoe upper,” “[o]ther athletic shoes contain illuminated
`portions in the heel,” and “still other athletic shoes contain illuminated
`regions in the instep portion of the sole.” Id. at 1:54–58. According to the
`’590 Patent, “[t]ypically, the light sources for these shoes are activated each
`time the wearer’s foot makes contact with a surface and they remain active
`for a very limited duration (strobe, blink or flash). Thus, the wearer has
`extremely limited control over the duration of illumination.” Id. at 1:58–63.
`Figure 3 of the ’590 Patent is reproduced below.
`
`
`Figure 3 depicts “a side view of a shoe in accordance with the invention.”
`Id. at 2:25–26. The shoe of Figure 3 includes sole 105 attached to upper
`110. See id. at 4:2–3. Sole 105 includes translucent perimeter surface 115.
`See id. at 4:3–4.
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`Figure 4 of the ’590 Patent is reproduced below.
`
`
`Figure 4 depicts “a rear view of shoe in accordance with the invention.” Id.
`at 2:27–28. Translucent perimeter surface 115 has light source 120 disposed
`therein, and preferably connected to push-button switch 125 disposed on rear
`quarter 130. See id. at 4:3–7. “[L]ight source 120 may comprise a plurality
`of light emitting devices 135 contiguously positioned so as to appear to form
`a substantially uniform illustration pattern across perimeter surface 115.” Id.
`at 4:12–16.
`The ’590 Patent further discloses the shoe employs push-button
`switch 125 to facilitate continuous illumination of light source 120 when
`activated. See Ex. 1001, 4:17–19. “Continuous illumination provides
`greater user control of the duration and timing of illumination and provides
`increased visibility over prior art shoes that employ blinking, strobing,
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`flashing or intermittent light sources that are activated only when the
`wearer’s foot makes control with a surface.” Id. at 4:19–25.
`Figure 5 of the ’590 Patent is reproduced below.
`
`
`Figure 5 depicts “a side view of the shoe in accordance with an embodiment
`of the invention.” Id. at 2:29–30. “[S]ole 115 may be generally opaque and
`include translucent regions 140 variously shaped and arranged.” Id. at 4:26–
`29. For example, “translucent regions 140 may be in the shape of letters
`arranged to display a message, i.e., a word, phrase or a numeric phrase.” Id.
`at 4:29–31.
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`D. Challenged Claims
`Challenged claims 1–3 of the ’590 Patent are reproduced below:
`1. An illuminated shoe comprising:
`an upper;
`a sole attached to said upper, the sole including a
`translucent perimeter surface;
`a light source disposed within said sole; and
`a push-button switch coupled to said light source to
`activate the light source such that the light source provides
`continuous illumination across a substantial portion of the
`perimeter surface regardless of whether the wearer is standing
`still or walking.
`2. The illuminated shoe of claim 1 wherein said light
`source includes a plurality of contiguous light emitting devices
`disposed in said sole that form a substantially uniform
`illumination pattern across the perimeter surface.
`3. An illuminated shoe comprising:
`an upper;
`a sole attached to said upper, the sole including an opaque
`perimeter surface having a plurality of translucent regions, the
`translucent regions being formed in the shape of alpha numeric
`characters and being arranged to spell a word;
`a light source disposed within said sole such that said light
`source provides illumination to the plurality of translucent
`regions; and
`a push-button switch coupled to said light source to
`facilitate activation of the light source for user selected periods
`of time independent of whether the wearer is standing still or
`walking.
`Id. at 4:60–6:10.
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`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`construed according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. See 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2144–46 (2016).
`Consistent with the broadest reasonable construction, claim terms are
`presumed to have their ordinary and customary meaning as understood by a
`person of ordinary skill in the art in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). “[T]he [S]pecification ‘is always highly relevant to the claim
`construction analysis. Usually, it is dispositive; it is the single best guide to
`the meaning of a disputed term.’” Phillips v. AWH Corp., 415 F.3d 1303,
`1315 (en banc) (quoting Vitrionics Corp. v. Conceptronic, Inc., 90 F.3d
`1576, 1582 (1996)). An inventor may provide a meaning for a term that is
`different from its ordinary meaning by defining the term in the specification
`with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994). Extrinsic evidence, such as dictionaries and
`expert testimony, may be useful, but it is unlikely to result in a reliable
`interpretation of patent claim scope unless considered in the context of the
`intrinsic evidence. Phillips v. AWH Corp., 415 F.3d at 1319. In addition,
`the Board may not “construe claims during [an inter partes review] so
`broadly that its constructions are unreasonable under general claim
`construction principles.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d
`1292, 1298 (Fed. Cir. 2015), overruled on other grounds by Aqua Prods.,
`Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017).
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`Petitioner proposes a construction for the term “sole,” recited in
`claims 1 through 3. Pet. 12–14. Petitioner contends that the broadest
`reasonable interpretation of “sole” is “the part of a shoe that sits below a
`wearer’s foot.” Id. at 12. Petitioner argues that “[t]he patent consistently
`and without exception uses the term ‘sole’ to refer to one or more regions
`below the wearer’s foot.” Id. Petitioner points to Figures 3 and 5 of the
`’590 Patent which, according to Petitioner, show “the sole 105 occupies the
`entire space below the wearer’s foot while the remainder of the shoe is
`indicated as part of the upper 110.” Id. Petitioner also cites a dictionary
`definition, which defines “sole” as “the part of an item of footwear on which
`the sole rests and upon which the wearer treads.” Id. at 13 n.2 (citing Ex.
`1013; Ex. 1002 ¶ 48).
`Petitioner further argues “[t]o the extent Patent Owner argues that sole
`does not include a heel portion of a shoe, the embodiments disclosed in the
`’590 patent indicate that such an interpretation is not consistent with the
`broadest reasonable construction of the term as used in the ’590 patent.”
`Pet. 13–14. In support of its argument, Petitioner directs attention to Figures
`3 and 4 of the ’590 Patent and argues these figures depict sole 105 as
`including the rear portion of the shoe. See id. at 14 (reproducing Ex. 1001,
`Fig. 3; citing Ex. 1001, 4:1–3; Ex. 1002 ¶ 49).
`For the purpose of the Institution Decision, we adopted “Petitioner’s
`proposed construction of ‘“sole’––the part of a shoe that sits below a
`wearer’s foot––[as] the broadest reasonable interpretation of the term in light
`of the ’590 patent specification.” Dec. 9; see id. at 9–10 (citing Ex. 1001,
`Abstract, 1:11–14, 1:53–63, 2:7–16, 4:1–59, Figs. 3–5; Pet. 13 n.2; Ex.
`3001).
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`Patent Owner contends that Petitioner’s proposed claim construction
`for “sole,” as adopted by the Board, is unreasonable. See PO Resp. 6.
`Patent Owner asserts that Petitioner’s position is “that the term sole must
`include, or also means, heel.” Id. at 7. “Patent Owner does not dispute the
`proposed construction of sole [] insofar as the sole is a portion of a shoe that
`sits below a wearer’s foot,” but “disagrees with Petitioner’s position as
`adopted by the Board that sole and heel are the same parts of a shoe.” Id. at
`7–8. Patent Owner contends that the Board’s determination that the ’590
`Patent does not include a special definition disavowing heel from the
`meaning of the term sole is not sufficient to find that sole means heel. See
`id. at 8. Patent Owner argues, “[n]o passage of the ’590 Patent cited to by
`Petitioner or the Board indicates that Patent Owner intended for sole to mean
`heel.” Id. Patent Owner contends that “Patent Owner did not use the term
`sole in a manner inconsistent with Patent Owner’s position that heel has a
`meaning separate and distinct from sole.” Id. at 8. Patent Owner further
`asserts “that the record does not include evidence sufficient to support a
`determination that a construction of sole meaning heel is reasonable.” Id.
`Patent Owner misapprehends Petitioner’s proposed construction for
`“sole,” and the Board’s initial adoption thereof. Contrary to Patent Owner’s
`argument, we understand that Petitioner does not assert “sole” to mean
`“heel,” or is otherwise synonymous with “heel.” See Pet. 12–14. Also
`contrary to Patent Owner’s argument, the Board merely stated: “[t]he ’590
`patent does not define the term ‘sole’ or disavow the heel portion of the
`athletic shoe as being part of the sole,” and that “Patent Owner fails to
`address the disclosures in the ’590 patent or explain why the record as a
`whole, including the intrinsic evidence, requires a narrower construction of
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`the term ‘sole.’” Dec. 9–10. We reiterate that the ’590 Patent (to include
`the incorporated ’586 Patent) does not include a lexicographical definition
`that specifies that the heel is distinct from the sole. Further, as detailed
`below, the ordinary meaning of the heel being a portion of the sole is
`consistent with the Specification.
`Related to its previous arguments addressing Petitioner’s position,
`Patent Owner further contends, “the intrinsic record is clear that a sole is
`different than a heel.” PO Resp. 10. In support of its position, Patent Owner
`alleges that U.S. Patent 5,285,586 (Ex. 3003, “the ’586 Patent”),
`incorporated by reference in the ’590 Patent, “explains the difficulties
`associated with providing lighting in shoes that do not include heels in their
`typical rigid and voluminous form.” Id. at 9. Also in support of its position,
`Patent Owner directs attention to an article allegedly explaining how
`difficult Petitioner found the task of incorporating illuminated sole
`technology. See id. at 9–10 (citing Ex. 2001).6 Patent Owner further asserts
`that the extrinsic record supports its position that a sole is a different part of
`a shoe than a heel. Id. at 10. Patent Owner contends that “it is common
`knowledge in the footwear industry that the heel is distinct from the sole and
`that the heel is only confined to the back portion of a shoe and not beyond.”
`Id. at 11. In further support of its position, Patent Owner reproduces a
`number of dictionary definitions for “sole” and “heel,” and provides
`numerous web addresses for websites related to footwear. See id. at 11–12.
`Patent Owner contends that its “construction is consistent with the
`customary meaning of sole in the art, and is consistent with its usage in the
`
`
`6 Referred to by Patent Owner as Exhibit 3002.
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`intrinsic record.” Id. at 12. Patent Owner, therefore, concludes that “the
`Board must adopt Patent Owner’s proposed construction of sole, which
`excludes heel from its meaning.” Id.
`We do not agree that Patent Owner’s proposed construction of “sole,”
`“which excludes heel from its meaning,” is consistent with the usage of
`these terms in the intrinsic record. Id. Intrinsic evidence includes the
`Specification and prosecution history. See Phillips v. AWH Corp., 415 F.3d
`at 1316–17. As an initial matter, the article (Ex. 2001) cited by Patent
`Owner is extrinsic evidence, not intrinsic evidence. We consider as intrinsic
`evidence the ’590 Patent and the ’586 Patent, which is incorporated by
`reference in the ’590 Patent and brought to our attention by Patent Owner.
`See Ex. 1001, 3:56–58.
`The ’590 Patent and ’586 Patent disclosures do not support Patent
`Owner’s position. Instead, as detailed below, the ’590 Patent and ’586
`Patent disclose that the sole of an athletic shoe includes several portions,
`including a “heel portion.” See, e.g., Ex. 3003, 3:34–50.
`The ’590 Patent utilizes the term “heel” in a single instance when
`disclosing known prior art, as follows: “Some athletic shoes include
`illuminated regions on the shoe upper. Other athletic shoes contain
`illuminated portions in the heel. While still other athletic shoes contain
`illuminated regions in the instep portion of the sole.” Ex. 1001, 1:54–58
`(emphasis added). The ’590 Patent also discloses “an athletic shoe may be
`provided with a plurality of illuminated regions, including the tongue of the
`shoe, the entire sole of the shoe or portions thereof, the supporting material
`for the shoelace eyelets . . . as well as other regions.” Ex. 1001, 2:41–46
`(emphasis added). Referring to Figure 3, the ’590 Patent discloses “[t]he
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`shoe includes a sole 105 attached to the upper 110. Sole 105 includes a
`translucent perimeter surface 115 having a light source 120 disposed
`therein.” Ex. 1001, 4:1–4. Figures 3 and 4 of the ’590 Patent depict the
`translucent perimeter surface 115 of sole 105 at the back of the shoe (i.e.,
`where the heel of a foot would be accommodated), and also along the side of
`shoe extending from the back of the shoe toward the front of the shoe (i.e.,
`where the toe of a foot would be accommodated). See id. Figs. 3–4; see also
`Pet. 13–14 (reproducing Ex. 1001, Fig. 3 with annotations, citing Ex. 1002
`¶ 49, arguing Figure 3 depicts sole 105 as including the rear portion of the
`shoe); Reply 2–3 (reproducing Ex. 1001, Figs. 3–5, arguing light source 120
`is placed at the heel portion of the sole, and the only location where the lead
`line for sole 105 is placed in Figures 3 and 5 is at the part of the shoe that
`Patent Owner contends is a heel). In sum, the ’590 Patent discloses that the
`sole of the athletic shoe includes several portions, and those portions of the
`sole are located at the back of the athletic shoe and between the back and the
`front of the athletic shoe.
`The ’586 Patent, which is incorporated by reference in the ’590
`Patent, discloses an athletic shoe including a resilient sole, including “a heel
`portion 36 of the sole 22 where the sole is typically the thickest,” and a
`“midsole portion 23 of the sole of the shoe,” and “an outsole portion 24
`underlying” the midsole portion. Ex. 3003, 3:34–50 (emphasis added); see
`Ex. 3003, Figs. 1–3. The ’586 Patent also utilizes the terms heel and sole
`when discussing known prior art as follows:
`In a majority of the examples found in the prior art, the light
`emitting device, as well as the batteries, have been incorporated
`into the heel portion of the sole of a dress shoe. The advantage
`of this configuration is that the heel of a dress shoe generally
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`provides sufficient volume to easily accommodate the
`electronic apparatus and is constructed of a rugged non-resilient
`material that protects the light and battery.
`Ex. 3003, 1:25–32 (emphasis added). In sum, the ’586 Patent
`discloses that the sole of the athletic shoe includes several portions,
`including a heel portion of the sole.
`As to the extrinsic evidence, Patent Owner does not file exhibits for
`the dictionary definitions and websites cited to support Patent Owner’s
`arguments. See Reply 5. Our rules state that “[a]ll evidence must be filed in
`the form of an exhibit.” 37 C.F.R. § 42.61(a); see also Reply 5 (arguing
`Patent Owner did not submit the websites or their content as evidence). As
`such, Patent Owner’s reproductions of dictionary definitions and provisions
`of numerous web addresses for website information do not constitute
`admissible evidence. See 37 C.F.R. § 42.63(a) (“Evidence that is not taken,
`sought, or filed in accordance with this subpart is not admissible.”); see also
`Reply 5 (arguing websites’ content is not admissible evidence). Patent
`Owner’s Exhibit 2001, an article relied upon by Patent Owner for allegedly
`explaining how difficult Petitioner found the task of incorporating
`illuminated sole technology into their shoes (see PO Resp. 9–10), does not
`provide illumination as to broadest reasonable meaning of sole because it
`does not include any mention the sole or heel of a shoe. See Ex. 2001. The
`additional extrinsic evidence of record––the contemporaneous dictionary
`definitions of “sole” in Exhibits 1013 and 3001––also do not exclude the
`heel from the ordinary meaning of “sole.”
`For the foregoing reasons, we determine, based on the entirety of the
`record before us, that the broadest reasonable interpretation, in light of the
`’590 Patent Specification, of “sole” is “the portion of a shoe that sits below a
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`wearer’s foot.” We further determine that the broadest reasonable
`interpretation, in light of the ’590 Patent Specification, of “sole” does not
`exclude the heel, as urged by Patent Owner.
`
`B. Principles of Law
`A claim is unpatentable under 35 U.S.C. § 102 if a prior art reference
`
`discloses every limitation of the claimed invention, either explicitly or
`inherently. Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047 (Fed. Cir.
`1995). If the prior art reference does not expressly set forth a particular
`element of the claim, that reference still may anticipate if that element is
`“inherent” in its disclosure. In re Robertson, 169 F.3d 743 (Fed. Cir. 1999).
`To establish inherency, the extrinsic evidence “must make clear that the
`missing descriptive matter is necessarily present,” or inherent, in the single
`anticipating reference. Continental Can Co. v. Monsanto Co., 948 F.2d
`1264, 1268 (Fed. Cir. 1991). “Inherency, however, may not be established
`by probabilities or possibilities. The mere fact that a certain thing may
`result from a given set of circumstances is not sufficient.” Id. at 1269
`(quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (emphasis added)).
`Inherent anticipation, however, does not require recognition in the prior art.
`Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1377 (Fed. Cir. 2003)
`(“Continental Can does not stand for the proposition that an inherent feature
`of a prior art reference must be perceived as such by a person of ordinary
`skill in the art before the critical date”).
`
`A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
`i.e., secondary considerations. See Graham v. John Deere Co. of Kansas
`City, 383 U.S. 1, 17–18 (1966).
`
`“A determination of whether a patent claim is invalid as obvious
`under § 103 requires consideration of all four Graham factors, and it is error
`to reach a conclusion of obviousness until all those factors are considered.”
`Apple v. Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en
`banc) (citations omitted). “This requirement is in recognition of the fact that
`each of the Graham factors helps inform the ultimate obviousness
`determination.” Id.
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). This burden never shifts to
`Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
`F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek,
`Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of
`proof in inter partes review). Furthermore, Petitioner cannot satisfy its
`burden of proving obviousness by employing “mere conclusory statements.”
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
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`Thus, to prevail in an inter partes review, Petitioner must explain how the
`proposed combinations of prior art would have rendered the challenged
`claims unpatentable. At this final stage, we determine whether a
`preponderance of the evidence of record shows that the challenged claims
`would have been obvious over the proposed combinations of prior art.
`We analyze the instituted grounds of unpatentability in accordance
`with the above-stated principles.
`
`C. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham, 383 U.S. at 17. “The importance of
`resolving the level of ordinary skill in the art lies in the necessity of
`maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v.
`Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The person of ordinary
`skill in the art is a hypothetical person who is presumed to have known the
`relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573,
`1579 (Fed. Cir. 1995).
`Petitioner asserts “[a] person of skill in the art at the time of the
`alleged invention of the ’590 patent would have had a bachelor’s degree in
`footwear, apparel, or industrial design or an equivalent field and 1–3 years
`of work experience in footwear, apparel, or industrial design, or a high
`school education with 2-4 years of work experience in footwear, apparel, or
`industrial design.” Pet. 4–5 (citing Ex. 1002 ¶ 28). Patent Owner does not
`dispute Petitioner’s description of a person of ordinary skill in the art. See
`PO Resp. 1–23. We adopt Petitioner’s description of a person of ordinary
`skill in the art.
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`D. Asserted Grounds of Unpatentability
`1. Section 102 Unpatentability of Claims 1 and 2 as Anticipated by Shkalim
`a. Overview of Shkalim (Ex. 1003)
`Shkalim discloses “a lighted shoe which comprises lighting elements
`which can be easily and conveniently positioned in various positions.” Ex.
`1003, 1:41–46. Figures 1(a) and 1(b) of Shkalim are reproduced below:
`
`
`Figure 1(a) is a schematic perspective view of shoe 1, and Figure 1(b) is a
`partial cross-section of heel 7 of shoe 1 of Figure 1(a), seen from behind.
`See Ex. 1003, 2:39–43. Shkalim discloses that shoe 1 has on-off switch 2,
`which lights lighting elements 4 contained in transparent housing or cover 3.
`See id. at 3:6–9. Shkalim discloses that transparent cover 3, containing
`lighting elements 4, “is attached to the sole and heel by providing a
`‘channel’ 15, into which cover 3 may be inserted.” Id. at 3:9–15.
`“[C]hannel 15 will run . . . along substantially the whole sole of the shoe,
`and its depth will be such as to permit to house the cover 3.” Id. at 3:16–20.
`Shkalim also discloses that “[c]onnection between the cover 3 and the
`material of which the heel and sole are made[] can be effected by [gluing],
`by mechanical forces, by connecting elements, by incorporating the plastic
`material of cover 3 into the material of the heel, e.g., by heat, or by any other
`suitable methods.” Id. at 3:20–26.
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`Figures 2(a) and 2(b) of Shkalim are reproduced below:
`
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`Figure 2(a) illustrates another embodiment of “a shoe . . . in which the cover
`3 is not inserted into a ‘channel’, but is connected to the outer portion of the
`shoe.” Ex. 1003, 3:27–30. Figure 2(b) illustrates on-off switch 2 covered by
`elastic protective cover 5. See id. at 3:37–40.
`Figure 5 of Shkalim is reproduced below:
`
`
`Figure 5 illustrates a segment of transparent cover 3, which contains
`lighting element 4. See Ex. 1003, 4:5–9. Shkalim discloses that lighting
`element 4 “comprises two electric wires 10 and 10’, to which a plurality of
`mini bulbs 11 are connected.” Id.
`b. Analysis of Claims 1 and 2
`Petitioner contends that Shkalim discloses “[a]n illuminated shoe
`comprising: an upper; a sole attached to said upper, the sole including a
`translucent perimeter surface,” as recited in claim 1. See Pet. 21–23.
`Petitioner bases it contention on Shkalim’s disclosures in Figures 1, 2, and 7
`of a sole attached to the upper, Shkalim’s disclosure of a transparent housing
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`or cover 3 containing lighting elements inserted into channel 15 that runs
`along substantially the whole sole of the shoe, and Shkalim’s disclosure that
`the connection between the cover and the material of heel and sole can be
`effected by incorporating the plastic material of cover 3 into the material of
`the heel. See id. (citing Ex. 1003, [57], 1:1–2, 1:5–10, 1:40–53, 3:6–34; Ex.
`1002 ¶¶ 62, 63, 65). We find that Shkalim discloses “a light source disposed
`within said sole,” as recited in claim 1, based on Shkalim’s disclosure of
`lighting elements 4 in transparent housing or cover 3, and channel 15 in the
`sole or heel to which housing or cover 3 may be inserted.7 See Pet. 23–24;
`Ex. 1003, 3:6–50, 4:5–9, Figs. 1(b), 2, 2(a), (b), 3, 5; Ex. 1002 ¶ 66.
`Petitioner contends Shkalim discloses “a push-button switch coupled
`to the light source to activate the light source such that the light source
`provides continuous illumination across a substantial portion of the
`perimeter surface, regardless of whether the wearer is standing still or
`walking,” as recited in claim 1. See Pet. 24–26. Petitioner bases its
`contention on Shkalim’s disclosure in Figure 1 of on-off switch 2 that lights
`lighting elements 4 contained in transparent housing or cover 3, and
`rechargeable battery 8 connected to lighting elements 4 and switch 2. See id.
`(citing Ex. 1003, Figs. 2(a), 2(b), 3, 4, 2:24–26, 3:6–10, 3:34–40, 3:55–4:4;
`Ex. 1002 ¶¶ 67–68). We agree with Petitioner and find that Shkalim’s
`disclosures of transparent cover 3 containing lighting elements 4 in the
`channel 15 of sole, which runs along substantially the whole sole of the
`
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`7 Here, and through our analysis, we note that our Scheduling Order
`cautions Patent Owner “that any arguments for patentability not raised in the
`[Patent Owner’s Response] will be deemed waived.” See Paper 13, 5; see
`also See In re NuVasive, Inc., 842 F.3d 1376, 1380–81 (Fed. Cir. 2016).
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`shoe, meets the claims limitation of “the lighting elements provide
`illumination across a substantial portion of the perimeter surface” of the
`sole. See Pet. 25; Ex. 1003, 2:24–30, 3:15–25, 3:41–45, Fig. 3.
`Petitioner further contends Shkalim’s switch 2 allows the user to turn
`the lights on and leave them on until the switch is used to turn them off
`based on Shkalim’s disclosure of the light swit
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