Paper: 13
`Trials@uspto.gov
`571-272-7822 Entered: July 6, 2017
`
`
`
`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 IPR2017-00608
`Patent D707,032 S
`____________
`
`
`
`Before KEN B. BARRETT, SCOTT A. DANIELS, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`Trials@uspto.gov
`571-272-7822 Entered: July 6, 2017
`
`
`
`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 IPR2017-00608
`Patent D707,032 S
`____________
`
`
`
`Before KEN B. BARRETT, SCOTT A. DANIELS, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2017-00608
`Patent D707,032 S
`
`
`INTRODUCTION
`I.
`A. Background and Summary
`Skechers U.S.A., Inc. (“Petitioner”) filed a Petition requesting inter
`
`partes review of U.S. Patent No. D707,032 S (“the ’032 patent,” Ex. 1001).
`Paper 1 (“Pet.”). The Petition challenges the patentability of the sole claim
`of the ’032 patent on the grounds of obviousness under 35 U.S.C. § 103.
`Nike, Inc. (“Patent Owner”) filed a Preliminary Response to the Petition.
`Paper 12 (“Prelim. Resp.”).
`An inter partes review may not be instituted “unless . . . the
`
`information presented in the petition . . . shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered
`the arguments and evidence presented by Petitioner and Patent Owner, we
`determine that Petitioner has not demonstrated a reasonable likelihood that it
`would prevail in establishing the unpatentability of the challenged claims of
`the ’032 patent.
`
`B. Related Proceedings
`Both parties identify, as matters involving or related to the
`
`’032 patent, Nike, Inc. v. Skechers U.S.A., Inc., No. 3:16-cv-00007-PK (D.
`Or.) and IPR2016-01045 (an earlier inter partes review case involving the
`’032 patent). Pet. 4; Paper 3, 2. Patent Owner additionally identifies as
`related matters Nike, Inc. v. Fujian Bestwinn (China) Industry Co., Ltd., No.
`2:16-cv-00311 (D. Nev.), and Inter Partes Reviews IPR2016-01043 (U.S.
`Patent No. D696,853), IPR2016-01044 (U.S. Patent No. D700,423), and
`IPR2017-00607 (U.S. Patent No. D696,853). Paper 3, 2.
`
`2
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`
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`IPR2017-00608
`Patent D707,032 S
`
`
`C. The ’032 Patent and the Claim
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); see also Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). With regard to design
`patents, it is well-settled that a design is represented better by an illustration
`than a description. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679
`(Fed. Cir. 2008) (en banc) (citing Dobson v. Dornan, 118 U.S. 10, 14
`(1886)). Although preferably a design patent claim is not construed by
`providing a detailed verbal description, it may be “helpful to point out . . .
`various features of the claimed design as they relate to the . . . prior art.”
`Egyptian Goddess, 543 F.3d at 679–80; cf. High Point Design LLC v. Buyers
`Direct, Inc., 730 F.3d 1301, 1314–15 (Fed. Cir. 2013) (remanding to district
`court, in part, for a “verbal description of the claimed design to evoke a
`visual image consonant with that design”).
`
`The ’032 patent is titled “Shoe Upper,” and the claim recites “[t]he
`ornamental design for a shoe upper, as shown and described.” Ex. 1001
`(54), (57). The ’032 patent contains three figures. Figures 1 and 2 are
`reproduced below.
`
`3
`
`
`
`IPR2017-00608
`Patent D707,032 S
`
`
`
`Figure 1 is a front perspective view of the claimed shoe upper and Figure 2
`is a side view thereof. Id. at 1. The description of the ’032 patent states:
`The broken lines immediately adjacent to the shaded areas
`represent unclaimed boundaries of the design. The broken lines
`
`4
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`IPR2017-00608
`Patent D707,032 S
`
`
`showing the remainder of the shoe are for environmental
`purposes only and form no part of the claimed design.
`
`Id.
`We determine that the following verbal descriptions will be helpful by
`
`pointing out “various features of the claimed design as they relate to the . . .
`prior art.” Egyptian Goddess, 543 F.3d at 679–80.
`
`We begin by addressing Petitioner’s contentions as to “the various
`features comprising the overall appearance of the design claimed in the '032
`patent as they relate to the prior art.” Pet. 25–26. Petitioner identifies the
`following as such features: “(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 lines of varying lengths between the striping of the
`inverted-Vs.” Id. at 26 (footnotes omitted). Thus, Petitioner’s
`characterizations of at least features (a), (b), (c), and (d), are based on the
`assertion that the claimed design contains solid striping and that the striping
`forms, in part, the inverted-Vs. Patent Owner argues that solid striping does
`not exist in the claimed design. Prelim. Resp. 27–28.
`
`Petitioner, in its modified versions of the claimed design utilizes
`orange highlighting to depict the purported striping and orange lines to
`“highlight[]” the pattern of fine lines between the purported striping.
`Pet. 27, 31–32. These two demonstrative drawings are shown below.
`
`5
`
`
`
`IPR2017-00608
`Patent D707,032 S
`
`
`
`Depicted above, on the left, is Petitioner’s modified version of Figure 2 of
`the ’032 patent with orange highlighting added to depict the purported
`stripes. Id. at 27. On the right, is Petitioner’s modified version of that same
`figure depicting, according to Petitioner, “a pattern of fine lines of varying
`lengths between the striping of the inverted-Vs” where “[t]he demonstrative
`. . . highlights this pattern [with orange lines].” Id. at 31.
`We, however, conclude that there is no solid striping per se in the
`
`claimed design of the ’032 patent. Petitioner uses, in part, boundary lines to
`define the purported striping. Those boundary lines are not part of the
`claimed design and would not appear in an article embodying the design.1
`Additionally, Petitioner’s highlighting and orange lines, particularly in
`modified Fig. 2 above on the right, obscure long fine lines that parallel the
`inlaid strands. Any appearance of stripes in the claimed design is not, as
`Petitioner implies, due to an affirmative design striping element but rather is
`due to the exposure of the background between certain long fine lines and
`
`
`1 See Manual of Patent Examining Procedure (“MPEP”) § 1503.02(III), 9th
`ed. (July 2015) (“Applicant may choose to define the bounds of a claimed
`design with broken lines when the boundary does not exist in reality in the
`article embodying the design. It would be understood that the claimed
`design extends to the boundary but does not include the boundary.”).
`
`6
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`IPR2017-00608
`Patent D707,032 S
`
`around the dashed lines that Petitioner calls “inlaid strands.” In other words,
`it is the specific collective configuration of the fine lines around the dashed
`lines—with some of those fine lines parallel to the dashed lines and some
`others non-parallel with those fine lines and the dashed lines—in
`conjunction with the dashed lines that creates an overall appearance of
`inverted-Vs. Open horseshoe-shaped loops are located above the remainder
`of the design comprising the inverted-Vs and fine lines.
`
`Reference2
`
`D. Applied References
`Dates
`
`Registered Community Design No.
`002049825-0015 (“RCD 0015”)
`Dua, US Pub. No. 2010/0154256
`A1 (“the ’256 Application”)
`Beers, US Pub. No. 2011/0192058
`A1 (“the ’058 Application”)
`
`May 30, 2012
`
`Filed Dec. 18, 2008;
`Published June 24, 2010
`Filed Feb. 11, 2010;
`Published Aug. 11, 2011
`
`Exhibit
`No.
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Petitioner also relies on the Declaration of Robert John Anders, dated
`
`Jan. 5, 2017, (Ex. 1008) in support of its arguments.
`
`
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`Reference[s]
`Basis
`RCD 0015 in view of the ’256 Application § 103(a)
`RCD 0015 in view of the ’058 Application § 103(a)
`
`
`2 For consistency, we utilize the same short titles as the parties for the
`references.
`
`7
`
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`IPR2017-00608
`Patent D707,032 S
`
`
`II. ANALYSIS
`A. Principles of Law
`“In addressing a claim of obviousness in a design patent, the ultimate
`
`inquiry is whether the claimed design would have been obvious to a designer
`of ordinary skill who designs articles of the type involved.” Apple, Inc. v.
`Samsung Elec. Co., 678 F.3d 1314, 1329 (Fed. Cir. 2012) (internal quotation
`and citations omitted). This obviousness analysis generally involves two
`steps: first, “one must find a single reference, a something in existence, the
`design characteristics of which are basically the same as the claimed
`design”; second, “once this primary reference is found, other 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). In performing the first step, we
`must “(1) discern the correct visual impression created by the patented
`design as a whole; and (2) determine whether there is a single reference that
`creates basically the same visual impression.” Id. at 1312 (internal quotation
`and citations omitted). In the second step, the primary reference may be
`modified by secondary references “to create a design that has the same
`overall visual appearance as the claimed design.” Id. at 1311 (internal
`quotation and citations omitted). However, the “secondary references may
`only be used to modify the primary reference if they are ‘so related [to the
`primary reference] that the appearance of certain ornamental features in one
`would suggest the application of those features to the other.’” Durling v.
`Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996) (quoting In re
`Borden, 90 F.3d 1570, 1575 (Fed. Cir. 1996)).
`
`8
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`IPR2017-00608
`Patent D707,032 S
`
`
`B. Primary Reference
`For both of its asserted grounds, Petitioner utilizes RCD 0015
`
`(Ex. 1003) as the primary reference. Petitioner argues RCD 0015 provides
`basically the same visual impression as the claimed design. Pet. 37–57.3
`Reproduced below is Figure 3 of the reference.
`
`
`Figure 3 above depicts a side view of a shoe from RCD 0015. Ex. 1003, 6.
`
`Petitioner, in support of its argument that RCD 0015 provides
`basically the same visual impression as the claimed design, asserts:
`
`
`3 In the prior case before us involving the ’032 patent, we inadvertently
`omitted the word “basically” when stating that we were not persuaded by
`Petitioner’s argument. IPR2016-01045, Decision Denying Institution
`(Paper 7), 12; cf. id. at 10 (identifying Petitioner’s argument as “RCD 0015
`creates basically the same visual impression as the claimed design.”).
`Petitioner makes much of this, now arguing “the Decision held Petitioner to
`a far more stringent standard than the one set forth by the Federal Circuit.”
`Pet. 37; see also id. at 38. We applied the proper standard in the prior case,
`and we apply that same proper standard here.
`
`9
`
`
`
`IPR2017-00608
`Patent D707,032 S
`
`
`Focusing solely on the relevant portions of RCD 0015, the prior
`art reference discloses the following key elements of the design
`claimed in the '032 patent: (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
`lines of varying lengths between the striping of the inverted-Vs
`in significant portions of the area between the striping of the
`inverted-Vs.
`Pet. 39. Petitioner identifies two differences between the claimed design and
`the primary reference. Pet. 43. Specifically, Petitioner argues: “(1) the fine
`line pattern depicted in RCD 0015 occupies significant portions of the area
`between the striping of the inverted-Vs, but not the entire area and
`(2) RCD 0015 depicts two inverted-Vs culminating in shoelace loops, but no
`inverted-V at the shoelace eyelet (closest to the toe).” Id. Petitioner argues
`that these differences are de minimis and modifications necessary to remove
`the differences would have been obvious. Pet. 43, 45–46, 55–57. Petitioner
`thereafter argues that the primary reference could be modified by the
`teachings of the respective secondary reference—the ’256 application in the
`first ground and the ’058 application in the second ground—to have a third
`inverted-V at the eyelet closest to the toe. Pet. 57–58, 60–63.
`
`Petitioner’s arguments conflate the two separate steps typical of an
`obviousness analysis in the context of a design patent. We first must find an
`appropriate primary reference before moving on to the second step of
`modifying that primary reference to “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,
`we determine whether the proposed reference “creates basically the same
`
`10
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`IPR2017-00608
`Patent D707,032 S
`
`visual impression” as “created by the patented design as a whole.” Id.
`at 1312 (internal quotation and citations omitted).
`
`Figure 3 of the primary reference, RCD 0015, shows the shoe as
`having four inverted Vs, each V having a loop at its apex, and without an
`inverted-V at the toe-most lace eyelet. In an earlier, related case, the Board
`described the shoe upper of RCD 0015 as follows:
`The portions of the shoe upper illustrated in RCD 0015 between
`each of the lower legs of the inverted V’s appear as different and
`visually contrasting geometric patterns including: a solid
`pattern, a mesh pattern, a linear pattern and a dappled pattern,
`together in the design. . . . The appearance of the linear pattern is
`that of consistently parallel adjacent lines that are also non-
`parallel with the interrupted lower legs of the relative inverted V.
`IPR2016-01043, Paper 8, 16 (citations omitted).
`
`As Petitioner notes, the claimed design claims only a portion of the
`shoe upper. Pet. 1. That portion encompasses three loops. Accordingly, we
`compare the visual impression of the claimed design against that portion of
`the RCD 0015 identified by Petitioner as corresponding to that of the
`claimed design. Petitioner provides the following demonstrative figure to
`indicate that which it regards as the corresponding portion of RCD 0015.4
`
`
`4 Although Petitioner identifies the demonstrative figure as a modified
`version of Figure 2 of RCD 0015, it appears to be an excerpt from Figure 3.
`
`11
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`IPR2017-00608
`Patent D707,032 S
`
`
`
`We are not persuaded by Petitioner that RCD 0015 creates basically
`
`the same visual impression as the claimed design. Whereas the claimed
`design has as relatively uniform and consistent pattern of fine lines in and
`around the consistent use of inverted-Vs, RCD 0015 has different patterns
`under and above the inverted-Vs and has, under the toe-most lace eye, a
`hodgepodge of patterns rather than an inverted-V with the relatively
`consistent pattern of fine lines.
`
`Petitioner argues and Mr. Anders opines that a designer of ordinary
`skill would have been motivated to modify the design of RCD 0015 to
`utilize a uniform pattern in order to “provide a less cluttered look” and “to
`simplify the design.” Pet. 45–46; Ex. 1008 ¶ 92. Mr. Anders opines that “to
`replace the dappled pattern [of RCD 0015] with a pattern of lines . . . would
`simplify the overall visual effect following the well-known design edict ‘less
`is more.’” Ex. 1008 ¶ 91. With regard to the second difference, Petitioner,
`citing the support of Mr. Anders, argues that adding the missing inverted-V
`would yield, “from a design perspective,” a design of a shoe with a
`perceived performance improvement. Pet. 55–56 (citing Ex. 1008 ¶ 107).
`Additionally, Petitioner argues:
`
`12
`
`
`
`IPR2017-00608
`Patent D707,032 S
`
`
`To a designer of ordinary skill, the design in [the primary
`reference] RCD 0015 immediately begs the question of why
`RCD 0015 did not utilize a third strand and loop and whether
`adding a third strand and loop (so that all of the shoelace eyelets
`have associated with them a third strand and loop) would
`enhance the design by providing greater regularity or uniformity.
`Pet. 56 (citing Ex. 1008 ¶ 108). These arguments suggest that the
`unmodified reference would be viewed by the ordinary designer as inferior
`from a perceived performance perspective and as having less regularity and
`uniformity than the claimed design. Petitioner’s arguments and associated
`expert testimony tend to show that the differences are more than merely
`de minimis and further support the determination that the primary reference
`is not “something in existence” that “creates basically the same visual
`impression” as the claimed design. High Point Design, 730 F.3d at 1311–12
`(internal quotations omitted).
`
`Because Petitioner has not established that RCD 0015 is an
`appropriate primary reference, Petitioner has not demonstrated that there is a
`reasonable likelihood that it would prevail in showing that the challenged
`claim is rendered obvious over RCD 0015 and the ’256 Application or over
`RCD 0015 and the ’058 Application.
`
`III. CONCLUSION
`Petitioner has not demonstrated that there is a reasonable likelihood of
`
`establishing the unpatentability the claim of the ’032 patent.
`
`IV. ORDER
`For the foregoing reasons, it is
`
`ORDERED that the Petition is denied as the challenged claim, and no
`
`trial is instituted.
`
`13
`
`
`
`IPR2017-00608
`Patent D707,032 S
`
`
`
`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
`
`14
`
`
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