Trials@uspto.gov
`571-272-7822
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` Paper 13
` Entered: July 6, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SKECHERS U.S.A., INC.,
`Petitioner,
`
`v.
`
`NIKE, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00607
`Patent D696,853 S
`____________
`
`
`Before KEN B. BARRETT, SCOTT A. DANIELS, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`WARD, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`

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`IPR2017-00607
`Patent D696,853 S
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`A. Background
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`I.
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`INTRODUCTION
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`Skechers U.S.A., Inc. (“Skechers”) filed a Petition requesting inter
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`partes review of the claim for a “Shoe Upper” in U.S. Patent No.
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`D696,853 S (Ex. 1001, “the ’853 patent”). Paper 1 (“Pet.”). Patent Owner,
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`Nike, Inc. (“Nike”), filed a Preliminary Response. Paper 12 (“Prelim.
`
`Resp.”).
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`We have authority to determine whether to institute an inter partes
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`review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Upon consideration
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`of the Petition and the Preliminary Response, we determine that Skechers
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`has failed to establish a reasonable likelihood of prevailing on the claim
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`challenged in the Petition. For the reasons expressed below, we deny
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`institution of an inter partes review of the claim in the ’853 patent.
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`B. Additional Proceedings
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`The parties identify that the ’853 patent is at issue in Nike, Inc. v.
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`Skechers U.S.A., Inc., Case No. 3:16-cv-00007 (D. Or.) and that it was the
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`subject of an earlier inter partes review proceeding, IPR2016-01043. Pet. 5;
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`Paper 5, 2. In IPR2016-01043, Skechers challenged the ’853 patent, the
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`same patent at issue here, and the Board denied institution of inter partes
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`review. See Skechers U.S.A., Inc. v. Nike, Inc., Case IPR2016-01043, slip.
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`op. 26 (PTAB Nov. 16, 2016) (Paper 8) (“’1043 Inst. Dec.”). Nike
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`additionally identifies that the ’853 patent is at issue in Nike, Inc. v. Fujian
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`Bestwinn (China) Industry Co., Ltd., Case No. 2:16-cv-00311 (D. Nev.) and
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`identifies a number of related patents involved in other requests for inter
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`partes review. Paper 5, 2.
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`
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`2
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`IPR2017-00607
`Patent D696,853 S
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`C. The ’853 Patent and Claim
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`The ’853 patent, titled “Shoe Upper,” issued on January 7, 2014,
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`naming Angela N. Martin as the inventor, and is assigned to Nike. The
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`drawings of the ’853 patent depict a shoe as mostly unclaimed, as illustrated
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`by uneven-length broken lines, and a portion of the shoe “upper” being
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`claimed with particular elements of the upper illustrated by solid lines.1 The
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`’853 patent contains four figures illustrating the claimed shoe upper.
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`Figures 2 and 4 are set forth below.
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`Figure 2 of the ’853 patent, above, is a “side view” illustrating the
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`claimed portion of the shoe upper. See Ex. 1001, 1, Description.
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`
`
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`1 See In re Zahn, 617 F.2d 261, 267–69 (CCPA 1980) (discussing use of
`solid lines to show claimed designs and dotted or broken lines to show
`environmental structure or unclaimed portions).
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`Patent D696,853 S
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`Figure 4 of the ’853 patent, above, is an “enlarged view” of the
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`claimed portion of the shoe upper. Id.
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`The Description of the ’853 patent states:
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`The three bold lines, including the curved upper loop segments
`and the interrupted lower segments, represent elements forming
`part of the claimed design. The uneven-length broken lines
`immediately adjacent to and fully surrounding the shaded area
`represent unclaimed boundaries of the design. The uneven-
`length broken lines showing the remainder of the shoe are for
`environmental purposes only and form no part of the claimed
`design.
`
`Id.
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`4
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`D. Claim Construction
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`In an inter partes review, “[a] claim in an unexpired patent shall be
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`given its broadest reasonable construction in light of the specification of the
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`patent in which it appears.” 37 C.F.R. § 42.100(b); see Cuozzo Speed
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`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144 (2016) (holding that 37 C.F.R.
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`§ 42.100(b) “represents a reasonable exercise of the rulemaking authority
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`that Congress delegated to the . . . Office”). With regard to design patents, it
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`is well-settled that a design is represented better by an illustration than a
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`description. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed.
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`Cir. 2008) (en banc) (citing Dobson v. Dornan, 118 U.S. 10, 14 (1886)).
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`Although a design patent claim is preferably not construed by providing a
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`detailed verbal description, it may be “helpful to point out . . . various
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`features of the claimed design as they relate to the . . . prior art.” Egyptian
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`Goddess, 543 F.3d at 679–80; cf. High Point Design LLC v. Buyers Direct,
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`Inc., 730 F.3d 1301, 1314–15 (Fed. Cir. 2013) (remanding to district court,
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`in part, for a “verbal description of the claimed design to evoke a visual
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`image consonant with that design”). For this proceeding, we determine that
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`a verbal description is appropriate and helpful to convey a cogent
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`representation of the overall visual appearance of the claimed design and
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`assist in comparison to the prior art. Cf. Crocs, Inc. v. Int’l Trade Comm’n,
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`598 F.3d 1294, 1302 (Fed. Cir. 2010) (noting “the dangers of reliance on a
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`detailed verbal claim construction”).
`
`Skechers asserts that the ’853 patent claims the design of a “portion of
`
`the upper residing generally between a first shoelace loop and a third
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`shoelace loop (closest to the toe).” Pet. 1. Skechers submits the following
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`verbal description of the claimed design:
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`(a) solid striping with (b) inlaid strands forming thin dashed lines
`centered in the striping; (c) pairs of solid striping and dashed
`lines forming inverted-V configurations; (d) each inverted-V
`culminating in an exposed, open horseshoe-shaped shoelace
`loop; and (e) a pattern of fine zigzag lines of varying lengths
`between the striping of the inverted-Vs.
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`Pet. 29. Skechers provides a modified Figure 4, reproduced below, to
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`highlight the purported “solid striping.”
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`
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`Pet. 30 (reproducing Ex. 1001, Fig. 4 (modified)). As shown above,
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`Skechers adds colored highlighting to Figure 4 of the ’853 patent to show
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`what it asserts to be “solid striping” in the claimed design. Id. at 30.
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`Nike disagrees with Skechers’s description and, in particular, argues
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`that “there is no solid striping in the claimed design where indicated. In fact,
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`the only solid striping is Skechers’ orange highlighting, which overlays the
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`interrupted (referred to as ‘dashed’ in the Petition) bold lines forming the
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`inverted V’s.” Prelim. Resp. 32. Nike relies on the Board’s previous
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`description in IPR2016-01043 and states that, “[f]or purposes of responding
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`to [this] Petition, NIKE applies the Board’s description of the claimed
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`design set forth in the [earlier] Decision.” Prelim. Resp. 30; see also ’1043
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`Inst. Dec. at 7–11.
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`We agree with Nike and determine that a proper construction of the
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`’853 patent’s claimed design does not include “solid striping.” To define the
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`purported solid striping in the leftmost inverted-V and the rightmost
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`inverted-V, Skechers’ proposed construction relies, in part, on the uneven-
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`length broken boundary lines at the edges of the claimed portion of the shoe
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`upper. See Figure 4 reproduced above, as modified by Skechers (Pet. 30).
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`These broken lines at the boundary are unclaimed, i.e., not included in the
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`claimed design.2 Skechers seeks to insert into the claim construction a
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`striping effect created by the space surrounding what it refers to as “inlaid
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`strands forming thin dashed lines,” i.e., the “inverted-Vs,” and within certain
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`long “fine zigzag lines” next to the “inlaid strands forming thin dashed
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`lines.” Pet. 29. We are unconvinced that this space is an affirmative, solid
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`striping design element, as it is merely contrasting background surrounding
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`the dashed lines of the inverted-Vs that is continuous with the contrasting
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`background surrounding the shorter fine zigzag lines underneath and
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`between the inverted-Vs, and continuous with the contrasting background
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`above the inverted-Vs and surrounding the “open horseshoe-shaped shoelace
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`loop[s].” Id.
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`As in our earlier decision denying institution of inter partes review of
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`the ’853 patent, we are not persuaded that Skechers’ description of “inlaid
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`strands” provides a significantly better narrative than that already set forth in
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`the ’853 patent’s Description. See ’1043 Inst. Dec. at 8. The ’853 patent’s
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`Description states specifically that “[t]he three bold lines, including the
`
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`2 See Zahn, 617 F.2d at 267–69.
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`curved upper loop segments and the interrupted lower segments, represent
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`elements forming part of the claimed design.” Ex. 1001, 1, Description.
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`Based on our observation of the design as a whole, we are persuaded that the
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`visual impression of the ’853 patent’s three bold lines is one of adjacent
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`inverted-Vs formed by the bold interrupted lower segments and curved
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`upper loop segments. See Ex. 1001, Figs. 1–4; see Durling v. Spectrum
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`Furniture Co., 101 F.3d 100, 104 (Fed. Cir. 1996) (“the focus in a design
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`patent obviousness inquiry should be on visual appearances rather than
`
`design concepts”).
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`
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`Regarding what Skechers describes as “a pattern of fine zigzag lines
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`of varying lengths,” we observe that these fine zigzag lines are underneath
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`and between the inverted-Vs and do not extend upward past the bold
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`interrupted lower segments of the inverted-Vs, and that the area surrounding
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`the curved upper loop segments provides a contrasting background.
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`Ex. 1001, Figs. 1–4. The fine zigzag lines are visually distinctly different
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`from, and angularly aligned relative to, the bold interrupted lower segments
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`of the inverted-Vs. Id. Specifically, the fine zigzag lines have different
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`lengths and are positioned next to and between the bold interrupted lower
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`segments of the inverted-Vs. Id. Considering the visual impression created
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`by the contrasting inverted-Vs and fine zigzag lines as a whole, we are
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`persuaded that these finer lines represent visually apparent zigzag lines of
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`constant amplitude and differing lengths that converge and truncate each
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`other in relation to each of the inverted-Vs so that there is a contrast in the
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`orientation of the zigzag lines both underneath and in-between the inverted-
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`Vs. See id.
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`E. The Alleged Grounds of Unpatentability
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`Skechers contends that the challenged claim is unpatentable under
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`35 U.S.C. § 103 based on RCD 0015 (Ex. 1003), a European design
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`registration filed by Nike on May 30, 2012, combined with either of two
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`U.S. design patent application publications as follows.
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`References3
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`RCD 00154 in view of the ’256 Application5
`RCD 0015 in view of the ’058 Application6
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`Basis
`§ 103
`§ 103
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`Pet. 6–8, 37–66. Skechers relies on the Declaration of Robert John Anders
`
`(Ex. 1008) in support of its arguments.
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`II. ANALYSIS
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`A. Principles of Law
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`“In addressing a claim of obviousness in a design patent, the ultimate
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`inquiry . . . is whether the claimed design would have been obvious to a
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`designer of ordinary skill who designs articles of the type involved.” Apple,
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`Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1329 (Fed. Cir. 2012) (internal
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`quotation and citations omitted). This obviousness analysis generally
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`involves two steps: first, “one must find a single reference, a something in
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`existence, the design characteristics of which are basically the same as the
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`claimed design,” and, second, “once this primary reference is found, other
`
`
`3 For consistency, we utilize the same short titles as the parties do for the
`references.
`4 Ex. 1003, OHIM Cert. of Reg. No. 002049825-0015, dated May 30, 2012
`(“RCD 0015” or “Nike’s European design registration”).
`5 Ex. 1004, U.S. Patent Application Publication No. US 2010/0154256,
`published June 24, 2010 (the “’256 Application”).
`6 Ex. 1005, U.S. Patent Application Publication No. US 2011/0192058,
`published Aug. 11, 2011 (the “’058 Application”).
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`references may be used to modify it to create a design that has the same
`
`overall visual appearance as the claimed design.” High Point Design, 730
`
`F.3d at 1311 (internal quotation and citations omitted).
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`The first step has two parts: we must “(1) discern the correct visual
`
`impression created by the patented design as a whole; and (2) determine
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`whether there is a single reference that creates basically the same visual
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`impression.” Id. at 1312 (internal quotation and citations omitted). Then, in
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`the second step, the primary reference may be modified by secondary
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`references “to create a design that has the same overall visual appearance as
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`the claimed design.” Id. at 1311 (internal quotation and citations omitted).
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`The “secondary references may only be used to modify the primary
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`reference if they are ‘so related [to the primary reference] that the
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`appearance of certain ornamental features in one would suggest the
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`application of those features to the other.’” Durling, 101 F.3d at 103
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`(quoting In re Borden, 90 F.3d 1570, 1575 (Fed. Cir. 1996)).
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`As we have set forth the proper claim construction above, including
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`discerning the correct visual impression of the ’853 patented design, we now
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`turn to the second part of the first step in the obviousness analysis.
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`B. The Asserted Primary Reference
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`For both of its asserted grounds, Skechers relies on Nike’s European
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`design registration, RCD 0015, as the primary, or Rosen,7 reference. Pet. 8,
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`41–59. Figure 3 of RCD 0015 is reproduced below.
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`
`
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`7 In re Rosen, 673 F.2d 388 (CCPA 1982).
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`Figure 3 of RCD 0015, above, is a side elevation view of a shoe
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`including a shoe upper. Ex. 1003, 6.
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`Skechers submits that an excerpt of Figure 2 of RCD 0015,
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`reproduced below, corresponds to the ’853 patent design.
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`
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`Pet. 16 (reproducing Ex. 1003, Fig. 2 (modified)). As shown above,
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`Skechers provides an excerpt of the shoe upper disclosed by RCD 0015 for
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`comparison to the claimed design of the ’853 patent. Pet. 15–17.
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`Skechers asserts that RCD 0015 is a suitable primary reference and
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`that it “provides ‘basically the same visual impression’ as the design claimed
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`in the ’853 patent.” Pet. 41–42. Nike disputes that RCD 0015 is a suitable
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`primary reference. Prelim. Resp. 35–40.
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`Comparing RCD 0015 side-by-side with the ’853 patent, Skechers
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`argues that:
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`The relevant portions of the knit upper depicted in RCD
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`0015 comprise: (a) solid striping with (b) inlaid strands forming
`thin dashed lines centered in the striping; (c) pairs of solid
`striping and dashed lines forming inverted-V configurations; (d)
`each inverted-V culminating in an exposed, open horseshoe-
`shaped shoelace loop; and (e) a pattern of fine zigzag lines of
`varying lengths in significant portions of the area between the
`striping of the inverted-Vs.
`
`Pet. 18 (citing Ex. 1008 ¶ 52), 42–46 (citing Ex. 1008 ¶¶ 88–96). Skechers
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`notes the following differences between RCD 0015 and the ’853 patent
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`design: “RCD 0015 depicts two inverted-Vs culminating in shoelace loops,
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`but no inverted-V at the shoelace eyelet (closest to the toe)” as in the
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`’853 patent, and “in RCD 0015, [the fine zigzag line] pattern occupies
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`significant portions of the area between the striping of the inverted-Vs,
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`whereas in the ’853 patent, this pattern occupies all of the area between the
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`striping of the inverted-Vs.” Pet. 44, 46 (citing Ex. 1008 ¶¶ 92, 96); see also
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`Pet. 20–21 (citing Ex. 1008 ¶¶ 53, 55). Specifically, regarding RCD 0015,
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`Skechers states that “the pattern underneath the inverted-Vs is a uniform
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`pattern of zigzag lines” and “the pattern above the inverted-Vs starts off with
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`a uniform pattern of zigzag lines and then transitions to . . . a ‘dappled
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`pattern.’” Pet. 49 (citing Ex. 1008 ¶ 97). According to Skechers, these
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`differences are de minimis. Pet. 44, 46.
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`Reproduced below is Skechers’ side-by-side comparison of RCD
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`0015 and the ’853 patent’s claimed design with regard to fine zigzag lines.
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`Skechers highlights what it asserts are corresponding zigzag lines in each of
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`RCD 0015 and the ’853 patent.
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`
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`Pet. 21 (reproducing Ex. 1003, Fig. 2 (modified), Ex. 1001, Fig. 4
`
`(modified)). As shown above, Skechers provides annotated versions of
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`Figure 2 of RCD 0015 and Figure 4 of the ’853 patent to show what it
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`asserts are corresponding zigzag lines in RCD 0015 and the ’853 patent.
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`Pet. 45–46.
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`
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`Skechers contends that the ’853 patent and RCD 0015 have similar
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`zigzag lines, both forming fine, “consistently parallel adjacent lines” that
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`converge. Pet. 51–54 (citing Ex. 1008 ¶¶ 101–104). According to Skechers,
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`both the ’853 patent and RCD 0015 show fine lines that truncate and that are
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`not truncated. Pet. 54–56 (citing Ex. 1008 ¶¶ 105–107). Skechers argues
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`that it would be obvious to a designer to “replace the dappled pattern [in
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`RCD 0015] with a pattern of zigzag lines, especially insofar as the pattern of
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`zigzag lines is already a significant aspect of the design,” in order to provide
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`a less cluttered look and simplify the design. Pet. 49–50 (emphasis omitted)
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`(citing Ex. 1008 ¶¶ 98–99).
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`
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`We are not persuaded by Skechers’ arguments because these
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`arguments conflate the two separate steps typical of an obviousness analysis
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`in the context of a design patent. We first must find an appropriate primary
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`reference, “a something in existence,” before moving on to the second step
`
`of modifying that primary reference “to create a design that has the same
`
`overall visual appearance as the claimed design.” High Point Design, 730
`
`F.3d at 1311. In assessing whether there is an appropriate primary reference,
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`we determine whether the proposed reference “creates basically the same
`
`visual impression” as “created by the patented design as a whole.” Id. at
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`1312 (internal quotation and citations omitted). We find Skechers fails to
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`establish sufficiently that its proffered primary reference, RCD 0015, creates
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`basically the same visual impression as that of the ’853 patent because of
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`several differences in appearance.
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`In the portion of the RCD 0015 design that Skechers asserts as
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`corresponding to the ’853 patent’s claimed design, we note that RCD 0015
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`provides at least three different and visually contrasting geometric
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`patterns—a linear pattern and a “dappled pattern” underneath and between
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`the inverted-Vs, and an additional, alternative pattern toward the toe of the
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`shoe. Ex. 1003, Figs. 1–3, 6. This combination of distinctly different
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`patterns surrounding the inverted-Vs in RCD 0015 creates a different visual
`
`impression than that of the ’853 patent, which, rather than combining
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`different types of patterns, only employs fine zigzag lines to surround the
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`inverted-Vs in its design and these zigzag lines and inverted-Vs are provided
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`against a contrasting background. See Ex. 1001, Figs. 1–4.
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`Moreover, the appearance of the linear pattern in RCD 0015 is that of
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`consistently parallel adjacent lines that are also non-parallel with the bold
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`interrupted lower segments of the relative inverted-V. Ex. 1003, Figs. 1–3.
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`Although Skechers refers to the linear pattern in RCD 0015 as “zigzag
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`lines,” we are unpersuaded that these parallel, tightly-adjacent lines are
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`visually similar to the spaced, angularly aligned zigzag lines in the
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`’853 patent. See Pet. 45–46, 51–56. We agree with Nike that,
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`unlike the zig-zag lines in the claimed design that run generally
`parallel to one side of an inverted V and then converge with and
`are truncated by the other side of the inverted V, the alleged zig-
`zag lines in RCD 0015 are parallel with one another and
`converge with and are truncated by both sides of the inverted V’s.
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`Prelim. Resp. 39. Moreover, unlike the contrast in orientation of the zigzag
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`lines in the ’853 patent, the pattern identified by Skechers in RCD 0015 as
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`teaching the zigzag lines is a consistently parallel and uniform pattern that
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`fails to provide zigzag lines with contrasting orientations. See Ex. 1003, 6.
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`Skechers argues, “[t]o the extent that the Board considers . . .
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`variations in the zig zag striping to be discernible, Skechers submits that
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`such variations do not affect the overall visual appearance of the shoe.”
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`Pet. 57 (citing Ex. 1008 ¶ 108). According to Skechers, “[p]arsing each
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`subset of lines” to describe their orientation, whether they converge or are
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`parallel, and whether they are truncated “is far beyond the scope of
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`determining either the ‘basically the same visual impression’ or the ‘overall
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`visual impression’ of the claimed upper.” Id. We disagree. In describing
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`RCD 0015, Skechers states, “[w]ith respect to the zigzag lines, it should be
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`noted that the pattern underneath the inverted-Vs is a uniform pattern of
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`zigzag lines.” Pet. 49 (emphasis added) (citing Ex. 1008 ¶ 97). We find that
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`the angular and converging arrangement of zigzag lines in the ’853 patent
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`suggests that some level of contrast in the orientation of the zigzag lines both
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`underneath and in-between the inverted-Vs is required by the claimed design
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`and results in a different visual impression than that of the consistently
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`parallel and uniform pattern in RCD 0015 relied upon by Skechers as
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`teaching the zigzag lines.
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`
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`We also observe that the fine zigzag lines in the’853 patented design,
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`while underneath and between the inverted-Vs, do not extend above the
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`inverted-Vs into the area surrounding the curved upper loop segments at the
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`apex of the inverted-Vs. Ex. 1001, Figs. 1–4. That is, the background area
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`surrounding the curved upper loop segments contrasts with the zigzag lines
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`and inverted-Vs in the ’853 patent. However, the patterning in RCD 0015
`
`extends upward, past the inverted-Vs and around the shoelace loops, and
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`fails to provide a background area that contrasts with the alleged zigzag line
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`pattern in RCD 0015. Ex. 1003, Figs. 1–3, 6. The continuation of
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`patterning throughout the shoe upper in RCD 0015 and the contrasting
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`background in the top portion of the ’853 patent’s claimed design also
`
`contribute to a difference in visual impression between RCD 0015 and the
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`’853 patent.
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`As Skechers argues, the requirement that the design characteristics of
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`the proposed primary reference be basically the same as the claimed design
`
`does not imply that the appearance of the prior art article must be identical to
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`the claimed design. Pet. 47–48. To that end, in order to find that a prior art
`
`reference is a suitable primary reference, the appearance of the article
`
`described in the proposed primary reference must be compared to the
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`claimed design as a whole. Rosen, 673 F.2d at 391.
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`Comparing the appearance of RCD 0015 to the claimed design of the
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`’853 patent as a whole, we find that the aforementioned differences
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`contribute to an overall visual disparity between RCD 0015 and the
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`’853 patented design. Whereas the claimed design of the ’853 patent has
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`fine zigzag lines underneath and between the inverted-Vs, RCD 0015 uses a
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`combination of different geometric patterns underneath, between, and above
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`the inverted-Vs. Additionally, the zigzag lines in the claimed design have
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`contrasting orientations relative to each other and the inverted-Vs, but the
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`purported zigzag pattern in RCD 0015 is a uniform pattern of consistently
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`parallel adjacent lines. Furthermore, Skechers fails to identify any portion of
`
`RCD 0015 that provides a background area to contrast with the zigzag lines
`
`and inverted-Vs, as included in the claimed design. Thus, we determine that
`
`Skechers fails to sufficiently establish that RCD 0015 is “something in
`
`existence” that “creates basically the same visual impression” as the ’853
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`patented design. Rosen, 673 F.2d at 391; High Point Design, 730 F.3d at
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`1312 (citations omitted).
`
`
`
`Because Skechers has failed to establish that RCD 0015 is an
`
`appropriate primary reference, Skechers has not demonstrated that there is a
`
`reasonable likelihood that it would prevail in showing that the challenged
`
`claim is obvious over RCD 0015 and the ’256 Application or over RCD
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`0015 and the ’058 Application.
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`III. CONCLUSION
`
`For the foregoing reasons, we determine that the information
`
`presented in the Petition fails to establish a reasonable likelihood that
`
`Skechers would prevail in showing that the claim in the ’853 patent is
`
`17
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`IPR2017-00607
`Patent D696,853 S
`
`obvious over RCD 0015 and the ’256 Application, or over RCD 0015 and
`
`the ’058 Application.
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`IV. ORDER
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`Accordingly, it is
`
`ORDERED that the Petition is denied and inter partes review is not
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`instituted.
`
`
`
`For PETITIONER:
`
`Samuel K. Lu
`Michael R. Fleming
`IRELL & MANELLA LLP
`slu@irell.com
`mfleming@irell.com
`
`For PATENT OWNER:
`
`Christopher J. Renk
`Erik S. Maurer
`BANNER & WITCOFF, LTD
`crenk@bannerwitcoff.com
`emaurer@bannerwitcoff.com
`
`
`
`
`
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`18
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