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 IPR2017-00617 (Patent D723,772 S)
`Case IPR2017-00619 (Patent D725,356 S)
`Case IPR2017-00623 (Patent D725,359 S)
`____________
`
`
`
`Before KEN B. BARRETT, SCOTT A. DANIELS, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`DECISION1
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`1This Decision addresses the same legal and factual issues raised in
`IPR2017-00617, IPR2017-00619, and IPR2017-00623. The patents at issue
`in all three cases are related, and the arguments made by the parties largely
`are the same in all the three cases. Therefore, we issue one Decision to be
`entered in each case.
`
`
`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 IPR2017-00617 (Patent D723,772 S)
`Case IPR2017-00619 (Patent D725,356 S)
`Case IPR2017-00623 (Patent D725,359 S)
`____________
`
`
`
`Before KEN B. BARRETT, SCOTT A. DANIELS, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`DECISION1
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`1This Decision addresses the same legal and factual issues raised in
`IPR2017-00617, IPR2017-00619, and IPR2017-00623. The patents at issue
`in all three cases are related, and the arguments made by the parties largely
`are the same in all the three cases. Therefore, we issue one Decision to be
`entered in each case.
`
`
`
`IPR2017-00617 (Patent D723,772 S)
`IPR2017-00619 (Patent D725,356 S)
`IPR2017-00623 (Patent D725,359 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. D723,772 S (“the ’772 patent,” Ex. 1001).
`IPR2017-00617, Paper 1 (“Pet.”). Petitioner also filed a Petition requesting
`inter partes review of U.S. Patent No. D725,356 S (“the ’356 patent”),
`IPR2017-00619, Paper 1, and a Petition requesting inter partes review of
`U.S. Patent No. D725,359 S (“the ’359 patent”), IPR2017-00623, Paper 1.2
`Each Petition challenges the patentability of the sole claim of the respective
`patent on the grounds of obviousness under 35 U.S.C. § 103. Nike, Inc.
`(“Patent Owner”) filed in each case a Preliminary Response to the Petition.
`See, e.g., IPR2017-00617, 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 claim of
`the ’772 patent, the challenged claim of the ’356 patent, or the challenged
`claim of the ’359 patent.
`
`
`2 For clarity and expediency, we treat IPR2017-00617 as representative of
`IPR2017-00617, IPR2017-00619, and IPR2017-00623. Unless indicated
`otherwise, all citations are to papers filed in IPR2017-00617.
`
`2
`
`
`
`IPR2017-00617 (Patent D723,772 S)
`IPR2017-00619 (Patent D725,356 S)
`IPR2017-00623 (Patent D725,359 S)
`
`
`B. Related Proceedings
`One or both parties identify, as matters involving or related to the
`
`’772 patent, the ’356 patent, or the ’359 patent: Nike, Inc. v. Skechers
`U.S.A., Inc., No. 3:16-cv-00007-PK (D. Or.) and several related inter partes
`review cases, including IPR-2016-00870 (the ’356 patent), IPR-2016-00871
`(the ’359 patent), and IPR-2016-00872 (the ’772 patent). Pet. 3; Paper 3, 2.
`
`C. The ’772 Patent, the ’356 Patent, the ’359 Patent, and the Claims
`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 ’772 patent, the ’356 patent, and the ’359 patent each are titled
`“Shoe Sole,” and the claim of each patent recites “[t]he ornamental design
`for a shoe sole, as shown and described.” E.g., IPR2017-00617, Ex. 1001
`(54), (57). The drawings of the claim of the ’772 patent and of the claim of
`
`3
`
`
`
`IPR2017-00617 (Patent D723,772 S)
`IPR2017-00619 (Patent D725,356 S)
`IPR2017-00623 (Patent D725,359 S)
`
`the ’356 patent depict a shoe with the shoe “upper” and “outsole” (the
`bottom of the shoe) illustrated as unclaimed by broken lines, and the
`“midsole” as being claimed. See id. at 1 (“The broken lines showing the
`remainder of the shoe are for environmental purposes only and form no part
`of the claimed design.”). The ’772 patent contains six figures. Figures 2, 4,
`and 5 are reproduced below.
`
`Figure 2 is a lateral side view of a shoe sole, and Figures 4 and 5,
`respectively, are front and rear views thereof. Id.
`
`The ’356 patent contains six figures. Figures 2, 4, and 5 are
`reproduced below.
`
`
`
`
`
`Figure 2 is a lateral side view of a shoe sole, and Figures 4 and 5,
`respectively, are front and rear views thereof. IPR2017-00619, Ex. 1001, 1.
`
`4
`
`
`
`IPR2017-00617 (Patent D723,772 S)
`IPR2017-00619 (Patent D725,356 S)
`IPR2017-00623 (Patent D725,359 S)
`
`The claimed design of the ’359 patent, which contains seven figures,
`
`includes certain aspects of the “outsole” as well as the midsole. Figures 2, 4,
`5, and 7 are reproduced below.
`
`
`Figure 2 is a lateral side view of a shoe sole, and Figures 4 and 5,
`respectively, are front and rear views thereof. IPR2017-00623, Ex. 1001, 1.
`Figure 7 is a bottom view of the outsole illustrating certain heel portions of
`the bottom surface as claimed and the rest of the outsole illustrated as
`unclaimed by broken lines. See IPR2017-00623, Ex. 1001, 1.
`
`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. Common features
`among the three subject patents that contribute to the overall appearance of
`the claimed designs—and specifically the midsole—include that which
`
`5
`
`
`
`IPR2017-00617 (Patent D723,772 S)
`IPR2017-00619 (Patent D725,356 S)
`IPR2017-00623 (Patent D725,359 S)
`
`Petitioner calls “vertical sipes (or cracks),”3 “vertical grooves,” and a
`“curved rand stripe.”4 Pet. 42. Patent Owner argues that Petitioner’s
`“description of the claimed design in the present Petition ignores features of
`the claimed design and largely relies on general design concepts used to
`draw incomplete and misleading comparisons with the asserted prior art.”
`IPR2017-00617, Prelim. Resp. 29 (citation omitted); see also
`IPR2017-00619, Prelim. Resp. 29 (similar); IPR2017-00623, Prelim.
`Resp. 29 (similar).
`
`Petitioner provides the following demonstrative exhibits to visually
`identify its referenced features:
`
`
`
`
`3 Sipes are described in one of Petitioner’s exhibits: “[M]any conventional
`boat shoes are siped, a fairly archaic term derived from early automotive tire
`traction techniques which refers specifically to tread structure. As the term
`applies to shoes, siped shoe soles are provided with parallel slits or channels
`through portions of the shoe sole bottom, to increase traction for the
`otherwise typically smooth rubber sole bottom.” Ex. 1006 (the ’945
`patent), 1:33–39.
`4 For purposes of this decision, we need not reach the features discussed by
`Petitioner and shown in the additional figure of the ’359 patent depicting the
`bottom of the claimed shoe sole. See, e.g., IPR2017-00623, Pet. 10.
`
`6
`
`
`
`IPR2017-00617 (Patent D723,772 S)
`IPR2017-00619 (Patent D725,356 S)
`IPR2017-00623 (Patent D725,359 S)
`
`
`
`
`
`Pet. 42, 45, 46. Three figures above are Petitioner’s annotated versions of
`Figure 2, the lateral side view, of the claimed design of the ’772 patent, and
`one is Petitioner’s annotated version of Figure 5, the rear view of the same
`claimed design. See id.; Ex. 1001, 1. Two features—the “rand stripe” and
`the “sipes,” specifically the heel sipes shown in Figure 5—are particularly
`important relative to the relied-upon prior art.
`
`Petitioner refers, in its claim construction discussion, to the rand stripe
`as “a curved decorative rand stripe above the midsole.” Pet. 46. While we
`recognize that the illustration, rather than a verbal description, is the better
`representation of the claimed design, Egyptian Goddess, Inc., 543 F.3d
`
`7
`
`
`
`IPR2017-00617 (Patent D723,772 S)
`IPR2017-00619 (Patent D725,356 S)
`IPR2017-00623 (Patent D725,359 S)
`
`at 679, Petitioner’s verbal description in these cases does not go far enough.
`We observe that the rand stripe has a pronounced height change along the
`length resulting from the top and bottom stripe boarders having different
`curvatures. The rand stripe has an appearance reminiscent of the
`cross-section of a gentle wave. We further note that the same or similar
`stripe is shown in both side views of the claimed designs. See Ex. 1001,
`Figs. 2, 3.
`
`Petitioner describes the heel sipes, in the claim construction section of
`the Petition, as “two sipes in the midsole when viewed from the rear (heel
`region).” Pet. 44 (footnote omitted). As with the rand stripe, Petitioner’s
`verbal description does not go far enough. Earlier in its Petition and when
`arguing that Patent Owner is not entitled to a particular earlier priority date,5
`Petitioner emphasizes that the claimed designs contain, at the heel, “two
`wide notched sipes.” Pet. 12 (emphasis in original). We agree with
`Petitioner that the heel sipes of the claimed designs have a wide notched
`appearance, and further note that each of the sipes is in the shape of an
`inverted-V and is relatively short, extending less than half the height of the
`midsole and terminating at or below the bottom of the adjacent grooves.
`This appearance of the heel sipes is in contrast to that of the sipes of the side
`views, which are relatively narrow and tall, reaching almost to the top of the
`midsole and terminating at or near the top of the adjacent “grooves.” As
`
`
`5 Petitioner argues that the exhibits attached to the Miner Declaration in the
`prosecution history fail to evidence that the claimed design was conceived of
`or reduced to practice on or before June 22, 2011. Pet. 11–16 (citing
`Ex. 1012, 60–70). We need not and do not reach that issue in this decision.
`
`8
`
`
`
`IPR2017-00617 (Patent D723,772 S)
`IPR2017-00619 (Patent D725,356 S)
`IPR2017-00623 (Patent D725,359 S)
`
`such, the heel sipes do not have an appearance as if the particular sipe design
`characteristics of the side had been extended around the periphery of the
`shoe to the heel.
`
`The rear view of each of the respective subject patents depicting the
`heel sipes is shown below.
`
`
`The three figures above depict the rear view of the claimed shoe sole design
`of, respectively, the ’772 patent, the ’356 patent, and the ’359 patent.
`
`Reference
`
`D. Applied References
`
`Registration and Extract from the Register for Registered
`Community Design No. 000120449-0018, registered
`November 4, 2013 (“RCD 0018”)
`Registration and Extract from the Register for Registered
`Community Design No. 000827613-0007, registered October
`31, 2007 (“RCD 0007”)
`Registration and Extract from the Register for Registered
`Community Design No. 001874165-0005, registered June 7,
`2011 (“RCD 0005”).
`Registration and Extract from the Register for Registered
`Community Design No. 000725247-0012, registered April 20,
`2007 (“RCD 0012”)
`
`Exhibit
`No.
`Ex. 1002
`
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`9
`
`
`
`IPR2017-00617 (Patent D723,772 S)
`IPR2017-00619 (Patent D725,356 S)
`IPR2017-00623 (Patent D725,359 S)
`
`
`Reference
`
`U.S. Patent No. 6,115,945, Frampton E. Ellis, III, filed Dec. 3,
`1993, issued Sept. 12, 2000 (“the ’945 patent”)
`U.S. Patent No. D447,853 S, Jean Paul Merceron, filed Jan.
`28, 2000, issued September 18, 2001 (“the ’853 patent”)
`U.S. Patent No. D520,725 S, Gary Duclos, filed Feb. 4, 2005,
`issued May 16, 2006 (“the ’725 patent”)
`China Design Registration No. CN 301711388 S, application
`date June 25, 2011 (“CN1388”)
`Petitioner also relies on the Declaration of Robert John Anders, dated
`
`January 6, 2017, (Ex. 1013) in support of its arguments.
`
`Exhibit
`No.
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`
`
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`Ground References
`Basis
`1
`RCD 0018, RCD 0012, and the ’945 patent
`§ 103(a)
`2
`RCD 0018, RCD 0012, the ’945 patent, and
`§ 103(a)
`the ’853 Patent
`RCD 0018, RCD 0012, the ’945 patent, and
`the ’725 Patent
`RCD 0018, RCD 0012, the ’945 patent, and
`CN1388
`RCD 0018, RCD 0012, the ’945 patent, and
`RCD 0005
`RCD 0007, RCD 0012, and the ’945 patent
`RCD 0007, RCD 0012, the ’945 patent, and
`the ’853 Patent
`RCD 0007, RCD 0012, the ’945 patent, and
`the ’725 Patent
`RCD 0007, RCD 0012, the ’945 patent, and
`CN1388
`RCD 0007, RCD 0012, the ’945 patent, and
`RCD 0005
`
`3
`
`4
`
`5
`
`6
`7
`
`8
`
`9
`
`10
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`10
`
`
`
`IPR2017-00617 (Patent D723,772 S)
`IPR2017-00619 (Patent D725,356 S)
`IPR2017-00623 (Patent D725,359 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)).
`
`11
`
`
`
`IPR2017-00617 (Patent D723,772 S)
`IPR2017-00619 (Patent D725,356 S)
`IPR2017-00623 (Patent D725,359 S)
`
`When evaluating prior art references for purposes of determining
`
`patentability of ornamental designs, the focus must be on actual appearances
`and specific design characteristics rather than design concepts. In re
`Harvey, 12 F.3d 1061, 1064 (Fed. Cir. 1993).
`
`B. The Grounds of Alleged Obviousness of the Claims Based on
`RCD 0018 as the Primary Reference
`Petitioner’s first five grounds (Grounds 1 through 5) all utilize
`
`RCD 0018 as the primary reference. Petitioner argues RCD 0018 provides
`basically the same visual impression as the claimed designs. Pet. 50–53.
`Patent Owner argues that Petitioner relies on an incomplete description of
`the claimed designs, and “improperly focuses on abstract ‘design concepts’
`rather than ‘actual appearances’” in asserting that RCD 0018 is an
`acceptable primary reference. Prelim. Resp. 31. We find Patent Owner’s
`position to be persuasive.
`
`Reproduced below are Figures 2 and 5 of the RCD 0018 reference.
`
`
`
`Figure 2, on the left above, depicts a side view of a shoe from RCD 0018,
`and Figure 5, on the right above, and depicts a rear view of the same shoe.
`Ex. 1002, 5, 6.
`
`12
`
`
`
`IPR2017-00617 (Patent D723,772 S)
`IPR2017-00619 (Patent D725,356 S)
`IPR2017-00623 (Patent D725,359 S)
`
`Petitioner, in support of its argument that RCD 0018 is a proper
`
`primary reference, asserts:
`RCD0018 provides “basically the same visual impression” as the
`design claimed in the [respective] patent because it discloses the
`following key elements of the design claimed in the [respective]
`patent: (a) vertical sipes (or cracks) along the midsole;
`(b) vertical grooves between the sipes along the midsole; and
`(c) a curved rand stripe above the midsole.”
`Pet. 50.6 We do not find Petitioner’s arguments persuasive because
`Petitioner focuses on design concepts rather than actual appearances and
`specific design characteristics. See In re Harvey, 12 F.3d at 1064.
`
`To assist in a comparison of the appearance of the heel sipe(s) of the
`claimed designs and of the proposed primary reference, the rear views of the
`three subject claimed designs and that of the proposed primary reference
`RCD 0018 are shown below.
`
`
`Above are, from left to right, the rear view, Figure 5, of each of the ’772
`patent, the ’356 patent, and the ’359 patent, and the rear view of RCD 0018.
`As is readily apparent and as identified by Petitioner as a difference,
`
`
`6 The same or similar arguments are made in each of the three subject cases,
`with Petitioner additionally addressing the heel area of the outsole in
`IPR2017-00623 on pages 53–54 of the Petition in that case.
`
`13
`
`
`
`IPR2017-00617 (Patent D723,772 S)
`IPR2017-00619 (Patent D725,356 S)
`IPR2017-00623 (Patent D725,359 S)
`
`RCD 0018 has, when viewed from the rear, one sipe as compared to the two
`sipes of the claimed designs. See Pet. 52, 54. Petitioner, in attempting to
`break the chain of priority, emphasizes that the claimed designs contain, at
`the heel, “two wide notched sipes,” and argues that this constitutes a
`“notable difference[]” when compared to the designs shown in the priority
`documents. Id. at 12 (emphasis in original). Petitioner, however, in
`comparing the claimed designs to RCD 0018, fails to address adequately the
`differences in appearance concerning the wide notches in the rear view of
`the claimed designs. See Pet. 57; cf. id. at 58 (Petitioner arguing that
`widening of the sipes in the lateral and medial views (i.e. the side views)
`would have been a de minimis change and an “obvious design choice”).
`Further, Petitioner does not address adequately the differences in appearance
`due to the heights of the heel sipes. The two heel sipes of the claimed
`designs are relatively short, extending less than half the height of the
`midsole and terminating at or below the bottom of the adjacent grooves,
`whereas the single, relatively narrow sipe of RCD 0018 is tall, extending to
`that feature identified by Petitioner as the rand stripe. See Pet. 53.
`
`Additionally, Patent Owner argues, and we agree, that Petitioner
`focuses on the general design concept of a “rand stripe” and “fails to discuss
`the actual appearance of the alleged prior art ‘rand stripe’ as compared to the
`claimed design[s].” Prelim. Resp. 34. Petitioner’s argument effectively is
`that the claimed designs and that of RCD 0018 are similar in that they all
`
`14
`
`
`
`IPR2017-00617 (Patent D723,772 S)
`IPR2017-00619 (Patent D725,356 S)
`IPR2017-00623 (Patent D725,359 S)
`
`have rand stripes. See Pet. 53.7 Petitioner, at most, impliedly addresses the
`appearances by offering a visual comparison by placing the corresponding
`figures side-by-side. Pet. 53. A portion of Petitioner’s demonstrative figure
`depicting the two sets of side view figures is below.
`
`
`
`Pet. 53. The figure above is an annotated collection of Figures 2 and 3 of
`the ’772 patent next to corresponding Figures 2 and 3 of RCD 0018. As
`noted above in the discussion of claim construction, the claimed designs
`have the same or similar rand stripe on both sides. We observe that
`RCD 0018 lacks this apparent symmetry, with Figure 2 of RCD 0018 (the
`upper, right figure above) depicting a stripe having an upper boarder much
`
`
`7 In IPR2017-00617, Petitioner also mentions the alleged obviousness of
`shading modifications thereby impliedly arguing that rand stripe shading
`constitutes a difference between RCD 0018 and the claimed design of the
`’772 patent. See IPR2017-00617, Pet. 46 (proposed claim construction), 60–
`61; contra id. at 53–54 (failing to explicitly identify shading as a difference).
`
`15
`
`
`
`IPR2017-00617 (Patent D723,772 S)
`IPR2017-00619 (Patent D725,356 S)
`IPR2017-00623 (Patent D725,359 S)
`
`less curved and less pronounced compared to that of Figure 3 (the lower,
`right figure above).
`
`The particular heel sipes and rand stripe of each of the claimed
`designs contribute to the overall visual impression of the respective claimed
`design. We are not persuaded that RCD 0018 is “a single reference that
`creates basically the same visual impression [as any of the claimed
`designs].” High Point Design, 730 F.3d at 1312. Petitioner has not
`established that RCD 0018 is an appropriate primary reference and,
`therefore, Petitioner has not demonstrated that there is a reasonable
`likelihood that it would prevail in showing that the challenged claims are
`rendered obvious under any of Grounds 1 through 5, each of which utilizes
`RCD 0018 as the primary reference.
`
`C. The Grounds of Alleged Obviousness of the Claims Based on
`RCD 0007 as the Primary Reference
`Petitioner’s second five grounds (Grounds 6 through 10) all utilize
`
`RCD 0007 as the primary reference. Petitioner argues RCD 0007 provides
`basically the same visual impression as the claimed designs. Pet. 75–79.
`Patent Owner, as it did in the context of the other primary reference, argues
`that Petitioner relies on an incomplete description of the claimed designs,
`and “improperly focuses on abstract ‘design concepts’ rather than ‘actual
`appearances’” in asserting that RCD 0007 is an acceptable primary
`reference. Prelim. Resp. 31. We again find Patent Owner’s arguments to be
`persuasive.
`
`16
`
`
`
`IPR2017-00617 (Patent D723,772 S)
`IPR2017-00619 (Patent D725,356 S)
`IPR2017-00623 (Patent D725,359 S)
`
`
`
`Reproduced below are Figures 3 and 5 of the RCD 0007 reference.
`
`
`
`Figure 3, on the left above, depicts a side view of a shoe from RCD 0007,
`and Figure 5, on the right above, and depicts a rear view of the same shoe.
`Ex. 1003, 4, 5.
`
`Petitioner, in support of its argument that RCD 0007 is a proper
`primary reference, asserts:
`RCD0007 provides “basically the same visual impression” as the
`design claimed in the [respective] patent because it discloses the
`following key elements of the design claimed in the [respective]
`patent: (a) vertical sipes (or cracks) along the midsole; (b) in the
`medial view, vertical grooves along the center of the midsole
`between the sipes; and (c) a curved rand stripe above the
`midsole[.]
`Pet. 75.8 We again do not find Petitioner’s arguments persuasive because
`Petitioner focuses on design concepts rather than actual appearances and
`specific design characteristics.
`
`
`8 The same or similar arguments are made in each of the three subject cases,
`with Petitioner additionally addressing the rand stripe shading in
`IPR2017-0617 on page 75 of the Petition in that case, and additionally
`addressing the heel area of the outsole in IPR2017-00623 on page 79 of the
`Petition in that case.
`
`17
`
`
`
`IPR2017-00617 (Patent D723,772 S)
`IPR2017-00619 (Patent D725,356 S)
`IPR2017-00623 (Patent D725,359 S)
`
`To assist in a comparison of the appearance of the heel sipe(s) of the
`
`claimed designs and of the proposed primary reference, the rear views of the
`three subject claimed designs and that of the proposed primary reference
`RCD 0007 shown below.
`
`
`Above are, from left to right, the rear view, Figure 5, of each of the ’772
`patent, the ’356 patent, and the ’359 patent, and the rear view of RCD 0007.
`As with the first proposed primary reference discussed above, a difference
`readily apparent and identified by Petitioner is that the claimed designs,
`when viewed from the rear, have two sipes while RCD 0007 has one. See
`Pet. 77, 29–80. Petitioner again fails to address adequately the differences in
`appearance concerning the width and height of the heel sipes. See id. at 77
`(Petitioner arguing that the difference in heel sipe quantity is de minimis), 80
`(Petitioner arguing that any differences are de minimis and incorporating by
`reference its arguments made in the context of the first proposed primary
`reference regarding the purported obviousness of the differences).
`
`Petitioner does not identify the rand stripe appearance as a difference
`between the claimed designs and RCD 0007. See Pet. 79–80. Rather,
`Petitioner argues that RCD 0007 yields basically the same visual impression
`as the claimed designs because they both have a curved rand stripe above the
`
`18
`
`
`
`IPR2017-00617 (Patent D723,772 S)
`IPR2017-00619 (Patent D725,356 S)
`IPR2017-00623 (Patent D725,359 S)
`
`midsole. Id. at 78. Patent Owner is correct in its argument that Petitioner
`improperly focuses on general design concepts rather than actual
`appearances. See Prelim. Resp. 34. The differences in appearance are
`evident in Petitioner’s demonstrative figure, a portion thereof is shown
`below depicting the two sets of side view figures.
`
`
`
`Pet. 79. The figure above is an annotated collection of Figures 2 and 3 of
`the ’772 patent next to corresponding Figures 2 and 3 of RCD 0007. These
`figures, particularly the lower set, show an apparent difference between the
`pronounced, varying height of the claimed designs’ rand stripe and the
`nearly constant height of the stripe of RCD 0007. Petitioner fails to address
`adequately this difference in appearance.
`
`We are not persuaded that RCD 0007 is “a single reference that
`creates basically the same visual impression [as any of the claimed
`designs].” High Point Design, 730 F.3d at 1312. Petitioner has not
`established that RCD 0007 is an appropriate primary reference and,
`therefore, Petitioner has not demonstrated that there is a reasonable
`likelihood that it would prevail in showing that the challenged claims are
`
`19
`
`
`
`IPR2017-00617 (Patent D723,772 S)
`IPR2017-00619 (Patent D725,356 S)
`IPR2017-00623 (Patent D725,359 S)
`
`rendered obvious under any of Grounds 6 through 10, each of which utilizes
`RCD 0007 as the primary reference.
`
`III. CONCLUSION
`Petitioner has not demonstrated that there is a reasonable likelihood of
`
`establishing the unpatentability of the sole claim of the ’772 patent, the sole
`claim of the ’356 patent, or the sole claim of the ’359 patent.
`
`IV. ORDER
`For the foregoing reasons, it is
`
`ORDERED that the Petition is denied as to the challenged claim of
`
`each respective subject patent, and no trials are instituted.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`20
`
`
`
`IPR2017-00617 (Patent D723,772 S)
`IPR2017-00619 (Patent D725,356 S)
`IPR2017-00623 (Patent D725,359 S)
`
`For PETITIONER:
`
`Samuel K. Lu
`Michael R. Fleming
`Morgan Chu
`Talin Gordnia
`IRELL & MANELLA LLP
`slu@irell.com
`mfleming@irell.com
`mchu@irell.com
`tgordnia@irell.com
`SkechersNikeIPR@irell.com
`
`
`
`For PATENT OWNER:
`
`Christopher J. Renk
`Erik S. Maurer
`Banner & Witcoff, LTD.
`crenk@bannerwitcoff.com
`emaurer@bannerwitcoff.com
`
`
`21
`
`
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