`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`
`SKECHERS U.S.A., INC.,
`
`Petitioner,
`
`v.
`
`NIKE, INC.,
`
`Patent Owner
`___________
`
`U.S. Patent No. D723,783 S
`
`Issued: March 10, 2015
`
`Named Inventor: Mark C. Miner
`
`Title: Shoe Sole
`___________
`
`
`DECLARATION OF ROBERT JOHN ANDERS IN SUPPORT OF
`SKECHERS U.S.A., INC.'S SECOND PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. D723,783 S
`
`
`
`
`
`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`10112166
`
`
`
`
`Skechers Ex 1013-p. 1
`Skechers v Nike
`
`
`
`IPR Case No. Unassigned
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`
`
`
`
` U.S. Patent No. D723,783 S
`
` Petition 2
`
`
`
`I.
`
`I, Robert John Anders, declare as follows:
`
`INTRODUCTION
`1.
`
`I have been retained by Skechers U.S.A., Inc. ("Skechers") as an
`
`independent expert consultant in this proceeding before the United States Patent
`
`and Trademark Office (the "Board"), which I understand involves U.S. Patent No.
`
`D723,783 S ("the '783 patent"), assigned on its face to Nike, Inc. ("Nike").
`
`Although I am being compensated at my usual rate of $425 per hour for the time I
`
`spend on this matter, no part of my compensation is dependent on the outcome of
`
`this proceeding, and I have no other interest in this proceeding.
`
`2.
`
`I understand that this proceeding involves the '783 patent, the
`
`application for which was filed on May 31, 2014, as U.S. Patent Application
`
`No. 29/492,575 (the "'575 Application"), and issued on March 10, 2015. I further
`
`understand that Skechers is filing a petition for inter partes review ("the Petition")
`
`contemporaneously with this Declaration. In the Petition, it is my understanding
`
`that Skechers argues that the '783 patent is invalid based on ten grounds, each
`
`relying on a single primary reference and secondary references.
`
`3.
`
`I have been asked to consider and opine on the obviousness of the
`
`'783 patent.
`
`4. My opinions are set forth below.
`
`
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`- 1 -
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`Skechers Ex 1013-p. 2
`Skechers v Nike
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`IPR Case No. Unassigned
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` U.S. Patent No. D723,783 S
`
` Petition 2
`
`II. QUALIFICATIONS
`I have been an industrial designer for more than fifty years, have a
`5.
`
`Bachelor of Industrial Design from Pratt Institute, and have experience in both the
`
`practical and academic areas of the industrial design field. The details of my fifty
`
`years of experience are set forth in my curriculum vitae, submitted as Ex. 1014
`
`concurrently with the Petition and this Declaration.
`
`6.
`
`In August of 2000, I retired as a tenured Professor of Industrial
`
`Design from Pratt Institute, my alma mater and one of the largest and most
`
`prestigious schools of Art, Design, and Architecture in the United States. I had
`
`been a faculty member at Pratt since 1988. Throughout my teaching career, I
`
`developed a wide variety of course materials related to industrial design. Among
`
`the many courses I taught were those involving consumer product design and
`
`ergonomics, i.e., the relationship of people to products and environments. An
`
`important lesson that I taught in my classes is that when industrial designers design
`
`products, we do so with the ordinary observer/user in mind.
`
`7.
`
`I have authored nineteen papers pertaining to industrial design that
`
`were published and/or presented to professional societies and organizations. A
`
`complete listing of my publications is contained in Ex. 1014.
`
`8.
`
`I studied, practiced, and taught three separate computer design
`
`software programs often described as CAD (Computer Aided Design), CADD
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`- 2 -
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`Skechers Ex 1013-p. 3
`Skechers v Nike
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`
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`IPR Case No. Unassigned
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` U.S. Patent No. D723,783 S
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` Petition 2
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`(Computer Aided Drafting Design), and CAID (Computer Aided Industrial
`
`Design) in courses I developed for both undergraduate and graduate industrial
`
`design students utilizing the following programs:
`
`• CATIA (Computer Aided Three-dimensional Interactive Application),
`
`a powerful three-dimensional design software program that ran on a
`
`high-end IBM 5080 workstation. This software was used by the
`
`Boeing Corporation to design the Boeing 777 airplane. IBM hired me
`
`to write a User Manual for CATIA for industrial designers, which was
`
`published by Pratt Institute.
`
`• ALIAS, another three-dimensional software program that ran on high-
`
`end Silicon Graphics workstations. The software was utilized in the
`
`creation of the Hollywood movie Terminator 2: Judgment Day.
`
`• CADKEY, a three dimensional program that ran on a personal
`
`computer (PC) platform.
`
`9.
`
`During my long career as a designer, I have headed my own
`
`consultancies as well as served as a senior design executive at two major
`
`corporations, Bristol-Myers Company and Revlon, Inc.
`
`10. During my career, I have personally produced hundreds of technical
`
`drawings as well as supervised, reviewed, checked, and approved thousands of
`
`
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`- 3 -
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`Skechers Ex 1013-p. 4
`Skechers v Nike
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`
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`IPR Case No. Unassigned
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` U.S. Patent No. D723,783 S
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` Petition 2
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`technical drawings produced by others under my direction concerning the design of
`
`consumer products, displays, exhibits, and interior environments.
`
`11. Such technical drawings are an international language of
`
`communicating how to manufacture and/or fabricate objects, from simple, single-
`
`component products, such as a bottle, to highly complex and sophisticated
`
`products. During my long career as an industrial designer, my drawings have been
`
`used to fabricate and manufacture numerous components in geographic locations
`
`around the world.
`
`12.
`
`In addition to my expertise as an industrial designer, I also have
`
`expertise in photography. In 1953, I graduated as an aerial photographer from the
`
`U.S. Naval School of Photography, Pensacola, Florida, where I was trained to
`
`perform detailed analysis of aerial photographic images, among other photographic
`
`documentation. I subsequently spent the rest of my four-year enlistment as an
`
`aerial, land, and underwater photographer. Additionally, while I served as Director
`
`of Staff Design at Bristol-Myers, I created a photographic facility and laboratory
`
`which processed color films up to 20 X 24 inches. While a faculty member of the
`
`Industrial Design Department at Pratt Institute, I designed and purchased all of the
`
`photographic studio equipment to furnish a fully functioning professional
`
`photography studio for use by the students. For the past twenty-five years, in
`
`numerous design patent cases in which I have been retained as an expert witness, I
`
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`- 4 -
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`Skechers Ex 1013-p. 5
`Skechers v Nike
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`
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`IPR Case No. Unassigned
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`
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` U.S. Patent No. D723,783 S
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` Petition 2
`
`have also been personally involved in the detailed photographic replication of
`
`products from the same points of view as depicted in design patents.
`
`13. During my career, I have acquired substantial knowledge and
`
`experience concerning design patents from many sources.
`
`14. My initial exposure to design patents was in my senior Industrial
`
`Design undergraduate class titled Professional Practices at Pratt Institute, taught
`
`by Professor Lee Epstein. Professor Epstein authored a book widely used by
`
`designers titled Legal Forms for Designers.
`
`15. Thirty years later, I was asked to teach the same course at Pratt
`
`Institute. I designed the syllabus to include two guest lectures by intellectual
`
`property attorneys, from whom the students and I learned about design patent law.
`
`16. The Commissioner of the United States Patent and Trademark Office
`
`(USPTO), in response to my written request, sent Mr. Wallace R. Burke, a Primary
`
`Examiner of Design Patents, to lecture to my class for two consecutive years.
`
`17. On October 23, 1996, I attended the National Conference on Industrial
`
`Design Protection, sponsored by the American Intellectual Property Law
`
`Association (AIPLA), the Industrial Designers Society of America (IDSA), and the
`
`University of Baltimore, School of Law. I also obtained a copy and have read
`
`Symposium on Industrial Design Law and Practice, University of Baltimore Law
`
`Review, Volume Nineteen, Numbers One/Two.
`
`
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`- 5 -
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`Skechers Ex 1013-p. 6
`Skechers v Nike
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`
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`IPR Case No. Unassigned
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`
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` U.S. Patent No. D723,783 S
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` Petition 2
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`18. Most recently, in 2009, I attended "Design Day" at the USPTO to
`
`further my knowledge of design patents.
`
`19. Since 1990, I have served as an expert witness in 70 design patent
`
`cases. Several of these cases concerned the design of shoes. These cases are listed
`
`below, with italics used to indicate the party that retained me in the action:
`
`• Grendene S.A. v. Wanted Shoes, Inc., United States District Court for
`
`the District of New Jersey; and
`
`• LIVJO, Inc. et al. v. Deckers Outdoor Corporation, et al., United
`
`States District Court for the Central District of California.
`
`20.
`
`I was also retained by Wanted Shoes, Inc. in 1993 to redesign the
`
`ornamental design of an existing athletic shoe.
`
`21.
`
`I have served as an industrial design expert in 26 cases concerning
`
`utility patents. Of those cases, 5 cases concerned both design and utility patents.
`
`From these cases and my role as an expert witness in design patent cases, I have
`
`also become familiar with utility patents and how they interplay with design
`
`patents.
`
`22.
`
`I am a member of the Industrial Designers Society of America;
`
`Human Factors and Ergonomics Society; and National Association of Naval
`
`Photography.
`
`
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`- 6 -
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`Skechers Ex 1013-p. 7
`Skechers v Nike
`
`
`
`IPR Case No. Unassigned
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`
`
`
`
` U.S. Patent No. D723,783 S
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` Petition 2
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`23.
`
`I am not an attorney and offer no legal opinions. Through the course
`
`of working as a designer and managing teams of designers, I have gained an
`
`understanding of the training, knowledge, skills, and abilities of a person skilled in
`
`the art of industrial design, and I use this understanding to opine on how a designer
`
`having ordinary skill in the art ("DHOSITA") would answer questions raised in the
`
`examination of design patents and design patent claims.
`
`III. RELEVANT LEGAL PRINCIPLES
`24. During my career, I have acquired familiarity with design patents
`
`from many sources. Ex. 1014 also provides additional information regarding this
`
`work and lists the cases in which I have offered testimony as an expert in industrial
`
`design over the past four years.
`
`25.
`
`In formulating my opinions and conclusions in connection with this
`
`Declaration, and in connection with my previous expert work on design patent
`
`cases, I have gained an understanding of the prevailing principles of U.S. design
`
`patent law that govern the issues of design patent validity.
`
`26.
`
`It is my understanding that the sole claim of a design patent is set
`
`forth in the patent drawings and that the patent specification provides a description
`
`of the claimed invention.
`
`
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`- 7 -
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`Skechers Ex 1013-p. 8
`Skechers v Nike
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`
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`IPR Case No. Unassigned
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`
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` U.S. Patent No. D723,783 S
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` Petition 2
`
`27.
`
`I understand that design patents have only one claim, which must refer
`
`to the ornamental design for the article, specifying the type of article, which is
`
`shown or described in the drawings of the patent.
`
`28.
`
`I understand that in an IPR proceeding, a claim receives the broadest
`
`reasonable interpretation in light of the specification of the patent in which the
`
`claim appears. For design patents, I understand that the scope of the patent is
`
`informed by the solid lines depicted in the figures of the patent in conjunction with
`
`the figure descriptions. I also understand that photographic images of a claimed
`
`ornamental design may be substituted for line drawings.
`
`29.
`
`I understand that features of a claimed design that serve a functional
`
`purpose may be construed as narrowing the scope of the overall design claim in
`
`view of the functionality of those elements but may not be entirely disregarded.
`
`30.
`
`I understand that to be valid, a design patent must not be obvious in
`
`light of the prior art. I further understand that the prior art may include both
`
`designs of similar articles and sufficiently similar articles that a person of ordinary
`
`skill would look to for their designs. I further understand that the obviousness
`
`inquiry requires considering whether the claimed design would have been obvious
`
`to the relevant DHOSITA.
`
`31.
`
`I understand that the test for patent obviousness involves two steps:
`
`first, the identification of a single primary reference, which creates "basically the
`
`
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`- 8 -
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`Skechers Ex 1013-p. 9
`Skechers v Nike
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`
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`IPR Case No. Unassigned
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`
`
`
`
` U.S. Patent No. D723,783 S
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` Petition 2
`
`same visual impression" as the claimed design, and secondary references that are
`
`used to modify the primary reference, if necessary; and second, the comparison of
`
`a hypothetical design created from the primary reference (and secondary references
`
`as appropriate) to determine whether the hypothetical design has the "same overall
`
`visual appearance" as the claimed design. I understand that the "same overall
`
`visual appearance" determination involves an assessment from the point of view of
`
`the DHOSITA.
`
`32.
`
`It is my understanding that if, through the eyes of a DHOSITA, the
`
`patented design, as a whole, appears substantially similar to the prior art
`
`reference(s) (as described above), it is obvious under 35 U.S.C. § 103. I
`
`understand that differences between the patented design and the prior art do not
`
`preclude a conclusion that a prior art combination has the same overall visual
`
`appearance as the patented design. I further understand that ornamental features
`
`may even be absent from the prior art if the addition of said ornamental features
`
`would have been minor and within the skillset of the ordinary designer.
`
`33.
`
`I understand that drawings in a utility patent can anticipate or make
`
`obvious the claimed invention of a design patent. Drawings in utility patents must
`
`be evaluated for what they reasonably disclose and suggest to a DHOSITA.
`
`
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`- 9 -
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`Skechers Ex 1013-p. 10
`Skechers v Nike
`
`
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`IPR Case No. Unassigned
`
`
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` U.S. Patent No. D723,783 S
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` Petition 2
`
`IV. SUMMARY OF OPINIONS
`34. All of my opinions offered herein are based on documents I reviewed,
`
`as well as my knowledge, experience, and professional judgment. In forming these
`
`opinions, I have drawn on my experience and knowledge of industrial design. I
`
`also considered the following documents in forming these opinions:
`
`a)
`
`b)
`
`the prosecution file history of the '783 patent;
`
`the '783 patent itself;
`
`c) RCD0018;
`
`d) RCD0007;
`
`e) RCD0005;
`
`f) RCD0012;
`
`g)
`
`h)
`
`i)
`
`the '945 patent;
`
`the '853 patent;
`
`the '725 patent; and
`
`j) CN1388.
`
`35.
`
`I have previously submitted a declaration in connection with an earlier
`
`petition by Skechers relating to the '783 patent ("Petition 1"). It is my
`
`understanding that the Board declined to institute an IPR based on Petition 1. See
`
`IPR2016-00875 Decision Denying Institution of Inter Partes Review 37 C.F.R.
`
`
`
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`- 10 -
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`Skechers Ex 1013-p. 11
`Skechers v Nike
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`
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`IPR Case No. Unassigned
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`
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`
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` U.S. Patent No. D723,783 S
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` Petition 2
`
`§ 42.108. In forming my opinion in connection with this Declaration, I have also
`
`considered the Board's decision on Petition 1.
`
`36.
`
`In forming my opinions contained herein, I have relied on the
`
`assumption that RCD0018; RCD0007; RCD0005; RCD0012; and CN1388 qualify
`
`as prior art printed publications and that the '945 patent; the '853 patent; and the
`
`'725 patent qualify as prior art patents for purposes of my obviousness analysis.
`
`37. At the time of filing the '783 patent, a DHOSITA would generally
`
`have had either (i) a degree in Industrial Design and two years of work experience
`
`as an industrial designer or (ii) two years of direct experience creating footwear
`
`designs.
`
`38. Based on my experience and expertise, it is my opinion that the design
`
`claimed in the '783 patent is obvious over:
`
`a) RCD0018 In View Of RCD0012;
`
`b) RCD0018 In View Of RCD0012 And The '853 Patent;
`
`c) RCD0018 In View Of RCD0012 And The '725 Patent;
`
`d) RCD0018 In View Of RCD0012 And CN1388;
`
`e) RCD0018 In View Of RCD0012 And RCD0005;
`
`f) RCD0007 In View Of RCD0012;
`
`g) RCD0007 In View Of RCD0012 And The '853 Patent;
`
`h) RCD0007 In View Of RCD0012 And The '725 Patent;
`
`
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`- 11 -
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`Skechers Ex 1013-p. 12
`Skechers v Nike
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`
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`IPR Case No. Unassigned
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`
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` U.S. Patent No. D723,783 S
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` Petition 2
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`i) RCD0007 In View Of RCD0012 And CN1388; and
`
`j) RCD0007 In View Of RCD0012 And RCD0005.
`
`39.
`
`It is my opinion that a DHOSITA would have recognized these
`
`reference combinations as relevant to determining the obviousness of the claimed
`
`design.
`
`V. THE '783 PATENT
`40. The '783 patent claims the ornamental design of a portion of an
`
`athletic shoe sole, specifically, the midsole portion residing generally between the
`
`unclaimed upper of the shoe and the unclaimed outsole (or bottom) of the shoe.
`
`The design, when viewed as a whole, comprises (a) vertical sipes (or cracks) along
`
`the midsole; (b) vertical grooves along the midsole between the sipes; and (d) a
`
`portion of the heel area of the outsole with a grid-like pattern of pads. These key
`
`features are labeled in the demonstrative below. I am using the label element "(c)"
`
`to identify the rand stripe in concurrently filing IPRs for the following patents:
`
`D723,772; D723,781; D723,783; D725,356; and D725,783. The rand stripe is not
`
`claimed in D723,783. Therefore, to avoid confusion, I am not using the element
`
`(c) label in this Petition, and is instead using the element (d) label for the claimed
`
`portion of the heel area of the outsole with a grid-like pattern of pads.
`
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`- 12 -
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`Skechers Ex 1013-p. 13
`Skechers v Nike
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`
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`IPR Case No. Unassigned
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`
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`
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` U.S. Patent No. D723,783 S
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` Petition 2
`
`
`
`See Ex. 1001, Fig. 3 (annotated).
`
`41. However, it is my opinion that this claimed design was obvious to a
`
`designer having ordinary skill in the art ("DHOSITA") in view of the fact that
`
`others, including Nike, had previously disclosed (and registered in the European
`
`Union) midsole and outsole designs that create basically the same visual
`
`impression as the claimed design. In each ground below, I have identified a
`
`primary reference, the design characteristics of which are basically the same as the
`
`claimed design of the '783 patent. That is, each of the primary references
`
`comprises, a segment of the midsole and outsole located on the lateral side of the
`
`shoe near the heel region with (a) vertical sipes (or cracks) along the midsole;
`
`(b) vertical grooves along the midsole between the sipes; and (d) a portion of the
`
`heel area of the outsole with a grid-like pattern of pads. As further set forth below,
`
`
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`- 13 -
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`Skechers Ex 1013-p. 14
`Skechers v Nike
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`IPR Case No. Unassigned
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` U.S. Patent No. D723,783 S
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` Petition 2
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`any differences between the claimed design and the primary references are
`
`insubstantial. Alternatively, I have identified secondary references that are so
`
`similar and related in appearance to the primary references that a DHOSITA would
`
`have been motivated to combine the primary and secondary references to create a
`
`design having the same overall visual appearance as the '783 patent. Thus, it is my
`
`opinion that the '783 patent is invalid as obvious.
`
`42. The '783 patent is titled "Shoe Sole" and claims "[t]he ornamental
`
`design for a shoe sole, as shown and described." Id. The '783 patent incudes three
`
`figures depicting an angled lateral side view (i.e., outward-facing), a lateral side
`
`view, and an outsole (i.e., bottom facing) view of a shoe midsole and outsole
`
`design. These figures are reproduced below:
`
`
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`
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`- 14 -
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`Skechers Ex 1013-p. 15
`Skechers v Nike
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`IPR Case No. Unassigned
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`
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` U.S. Patent No. D723,783 S
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` Petition 2
`
`
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`
`
`Ex. 1001, Figs. 1-3.
`
`43.
`
`It is my understanding that what is claimed in the '783 patent is not
`
`the entire shoe sole. Per the Description in the '783 patent, "[t]he broken lines
`
`showing the remainder of the shoe are for environmental purposes only and form
`
`no part of the claimed design." Id. at Description. Figure 1 depicts a full view of
`
`the outsole (i.e., the bottom facing portion that directly contacts the surface being
`
`
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`- 15 -
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`Skechers Ex 1013-p. 16
`Skechers v Nike
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`IPR Case No. Unassigned
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`
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`
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` U.S. Patent No. D723,783 S
`
` Petition 2
`
`walked on). Id. Some portions of the heel region are drawn in solid line and are
`
`claimed. The portions of the outsole that are drawn in broken lines are not
`
`claimed. Also, small portions of the outsole are shown in Figures 2 and 3 (i.e., the
`
`"pads" protruding out from the bottom of the shoe). The portions drawn in broken
`
`lines are not claimed. The portions drawn in solid lines are claimed. In addition,
`
`a portion of the midsole near is claimed, whereas most of the midsole is drawn in
`
`broken lines and is not claimed. Finally, the upper of the shoe is also drawn in
`
`broken lines and is therefore not claimed. Id.
`
`44. The sole claim of the '783 patent is discussed in detail in Section VII,
`
`Claim Construction.
`
`A. The Prosecution Of The '783 Patent
`It is my understanding that none of the prior art references relied upon
`45.
`
`in this Petition were expressly disclosed by Nike or cited by the Examiner during
`
`prosecution. See n.3, above. When assessing the patentability of the claimed
`
`design, the Examiner never addressed the prior art relied upon in this Petition. The
`
`Examiner accordingly never considered the arguments or the prior art
`
`combinations that Skechers presents in this Second Petition.
`
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`- 16 -
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`Skechers Ex 1013-p. 17
`Skechers v Nike
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`
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`IPR Case No. Unassigned
`
`
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`
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` U.S. Patent No. D723,783 S
`
` Petition 2
`
`VI. THE PRIOR ART
`A. RCD0018
`46. Under "Indication of the products," RCD0018 identifies the products
`
`as "shoes." Ex. 1002. RCD0018 includes what appear to be photographic images
`
`of a shoe design, reproduced below. Like the '783 patent, RCD0018 includes
`
`images of the lateral, medial, front, rear, and top views of the midsole. RCD0018
`
`also includes images of the outsole.
`
`Fig. 1
`
`
`
`Fig. 2
`
`Fig. 3
`
`Fig. 4
`
`Fig. 5
`
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`- 17 -
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`Skechers Ex 1013-p. 18
`Skechers v Nike
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`IPR Case No. Unassigned
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` U.S. Patent No. D723,783 S
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` Petition 2
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`Fig. 7
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`
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`Fig. 6
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`Ex. 1002, Figs. 1-7.
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`47. The relevant portions of the midsole depicted in RCD0018 comprise
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`(a) vertical sipes (or cracks) along the midsole; (b) vertical grooves between the
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`sipes along the midsole; and (d) a portion of the heel area of the outsole with a
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`grid-like pattern of pads. Demonstratives showing where elements (a), (b), and (d)
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`are located in RCD0018 are provided below.
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`- 18 -
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`Skechers Ex 1013-p. 19
`Skechers v Nike
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`IPR Case No. Unassigned
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` U.S. Patent No. D723,783 S
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` Petition 2
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`
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`See Ex. 1002, Figs. 2, 3, 7 (annotated);
`
`B. RCD0007
`48. Under "Indication of the products," RCD0007 identifies the products
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`as "footwear." Ex. 1003. RCD0007 includes what appear to be photographic
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`images of a shoe design, reproduced below and on the following pages. Like the
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`'783 patent, RCD0007 includes images of the lateral, medial, front, rear, and top
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`views of the midsole. RCD0007 also includes images of the outsole.
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`Fig. 1
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`- 19 -
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`Fig. 2
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`Skechers Ex 1013-p. 20
`Skechers v Nike
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`IPR Case No. Unassigned
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` U.S. Patent No. D723,783 S
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` Petition 2
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`Fig. 3
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`Fig. 6
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`Fig. 4
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`Fig. 5
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`Ex. 1003, Figs. 1-7.
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`Fig. 7
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`49. The relevant portions of the midsole depicted in RCD0007 comprise
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`(a) vertical sipes (or cracks) along the midsole; (b) in the medial view, vertical
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`grooves along the center of the midsole between the sipes; and (d) a portion of the
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`heel area of the outsole with a grid-like pattern of pads. Demonstratives showing
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`where elements (a), (b), and (d) are located in RCD0007 are provided below.
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`- 20 -
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`Skechers Ex 1013-p. 21
`Skechers v Nike
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`IPR Case No. Unassigned
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` U.S. Patent No. D723,783 S
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` Petition 2
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`- 21 -
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`Skechers Ex 1013-p. 22
`Skechers v Nike
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`IPR Case No. Unassigned
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` U.S. Patent No. D723,783 S
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` Petition 2
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`See Ex. 1003, Figs. 2, 3, 5, 7 (annotated);
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`C. RCD0012
`50. Under "Indication of the products," RCD0012 identifies the products
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`as "footwear." Ex. 1005. RCD0012 includes what appear to be photographic
`
`images of a shoe design, reproduced below and on the following pages. Like the
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`'783 patent, RCD0012 includes images of the lateral, medial, front, rear, and top
`
`views of the midsole. RCD0012 also includes images of the outsole.
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`- 22 -
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`Skechers Ex 1013-p. 23
`Skechers v Nike
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`IPR Case No. Unassigned
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` U.S. Patent No. D723,783 S
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` Petition 2
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`Fig. 1
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`Fig. 2
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`Fig. 3
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`Fig. 5
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`Fig. 4
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`Fig. 6
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`Ex. 1005, Figs. 1-7.
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`Fig. 7
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`- 23 -
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`Skechers Ex 1013-p. 24
`Skechers v Nike
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`IPR Case No. Unassigned
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` U.S. Patent No. D723,783 S
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` Petition 2
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`51. The relevant portions of the midsole depicted in RCD0012 comprise
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`(a) vertical sipes (or cracks) along the midsole, including two sipes at the heel;
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`(b) horizontal grooves in the heel region of the midsole; and (d) a portion of the
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`heel area of the outsole with a grid-like pattern of pads. Demonstratives showing
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`where elements (a), (b), and (d) are located in RCD0012 are provided below.
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`- 24 -
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`Skechers Ex 1013-p. 25
`Skechers v Nike
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`IPR Case No. Unassigned
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` U.S. Patent No. D723,783 S
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` Petition 2
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`See Ex. 1005, Figs 2, 3, 5, 7 (annotated);
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`52. Note that there are two sipes at the rear heel of the shoe that
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`correspond to two sipes in the outsole pattern running up and down the shoe.
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`53.
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`It should be noted that the outsole pads at the heel of the outsole are
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`also visible in the rear view, as shown below in Fig, 5 of RCD0012. ;
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`- 25 -
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`Skechers Ex 1013-p. 26
`Skechers v Nike
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`IPR Case No. Unassigned
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` U.S. Patent No. D723,783 S
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` Petition 2
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`
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`See Ex. 1005, Fig. 5 (annotated);
`
`D. The '853 Patent (Vertical Lines)
`54. The '853 patent includes line drawings of an "ornamental design for a
`
`shoe sole." Ex. 1007. The '853 patent includes images of the lateral, medial, front,
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`and rear views of the midsole. The '853 patent also includes images of the outsole.
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`- 26 -
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`Skechers Ex 1013-p. 27
`Skechers v Nike
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`IPR Case No. Unassigned
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` U.S. Patent No. D723,783 S
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` Petition 2
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`Ex. 1007, Figs. 1-6.
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`55. The relevant portions of the midsole depicted in the '853 patent
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`comprise (b) vertical lines along the entire periphery of the midsole and (c) a rand
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`stripe above the midsole. Demonstratives showing where elements (b) and (c) are
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`located in the '853 patent are provided below.
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`See Ex. 1007, Figs. 3, 4 (annotated).
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`- 27 -
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`Skechers Ex 1013-p. 28
`Skechers v Nike
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`IPR Case No. Unassigned
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` U.S. Patent No. D723,783 S
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` Petition 2
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`E.
`The '725 Patent (Vertical Grooves)
`56. The '725 patent includes line drawings of an "ornamental design for a
`
`portion of a shoe." Ex. 1008. The '725 patent includes images of the lateral,
`
`medial, front, and rear views of the midsole.
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`
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`
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`Ex. 1008, Figs. 1-4.
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`57. The relevant portions of the midsole depicted in the '725 patent
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`comprise (b) vertical grooves along the entire periphery of the midsole and (c) a
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`rand stripe above the midsole. Demonstratives showing where elements (b) and (c)
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`are located in the '725 patent are provided below.
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`- 28 -
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`Skechers Ex 1013-p. 29
`Skechers v Nike
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`IPR Case No. Unassigned
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` U.S. Patent No. D723,783 S
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` Petition 2
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`
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`
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`See Ex. 1008, Figs. 1, 2 (annotated);
`
`F. CN1388 (Sipes And Vertical Grooves)
`58. CN1388 includes what appear to be photographic images of a shoe
`
`design, reproduced below and on the following pages. Like the '783 patent,
`
`CN1388 includes images of the lateral, medial, front, rear, and top views of the
`
`midsole. CN1388 also includes images of the outsole.
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`- 29 -
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`Skechers Ex 1013-p. 30
`Skechers v Nike
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`IPR Case No. Unassigned
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` U.S. Patent No. D723,783 S
`
` Petition 2
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`Ex. 1009, Figs. 1-7.
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`59. The relevant portions of the midsole depicted in CN1388 comprise
`
`(a) vertical sipes (or cracks) along the midsole; and (b) vertical grooves between
`
`the sipes along the midsole. Demonstratives showing where elements (a) and (b)
`
`are located in CN1388 are provided below.
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`
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`- 30 -
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`Skechers Ex 1013-p. 31
`Skechers v Nike
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`
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`IPR Case No. Unassigned
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` U.S. Patent No. D723,783 S
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` Petition 2
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`See Ex. 1009, front, back, and left view (annotated).
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`- 31 -
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`Skechers Ex 1013-p. 32
`Skechers v Nike
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`IPR Case No. Unassigned
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`
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` U.S. Patent No. D723,783 S
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` Petition 2
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`G. RCD0005 (Sipes, Rand, Vertical Grooves)
`60. Under "Indication of the products," RCD0005 identifies the products
`
`as "footwear." Ex. 1004. RCD0005 includes what appear to be photographic
`
`images of a shoe design, reproduced below and on the following pages. Like the
`
`'783 patent, RCD0005 includes images of the lateral, medial, front, rear, and top
`
`views of the midsole. RCD0005 also includes images of the outsole.
`
`Fig. 1
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`Fig. 3
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`Fig. 4
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`Fig. 6
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`- 32 -
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`Fig. 2
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`Fig. 5
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`Fig. 7
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`Skechers Ex 1013-p. 33
`Skechers v Nike
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`
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`IPR Case No. Unassigned
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`
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` U.S. Patent No. D723,783 S
`
` Petition 2
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`Ex. 1004, Figs. 1-7
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`61. The relevant portions of the midsole depicted in RCD0005 comprise
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`(a) vertical sipes (or cracks) along the midsole; (b) vertical grooves along the
`
`midsole between the sipes; and (d) a portion of the heel area of the outsole with a
`
`grid-like pattern of pads. Demonstratives showing where elements (a), (b), and (d)
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`are located in RCD0005 are provided below.
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`
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`- 33 -
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`Skechers Ex 1013-p. 34
`Skechers v Nike
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`IPR Case No. Unassigned
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`
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` U.S. Patent No. D723,783 S
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` Petition 2
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`- 34 -
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`Skechers Ex 1013-p. 35
`Skechers v Nike
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`IPR Case No. Unassigned
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` U.S. Patent No. D723,783 S
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` Petition 2
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`
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`See Ex 1004, Figs. 1-3, 6 (annotated);
`
`H. Background Reference The '945 Patent (Sipes)
`62. The '945 Patent is directed to the structure of athletic shoe soles. Ex.
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`1006 at Abstract. The "invention relates to shoe soles that conform to the natural
`
`shape of the foot sole, including the bottom and the sides, when the foot sole
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`deforms naturally during locomotion in order to provide a stable support base for
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`the foot and ankle." Id. The '945 Patent teaches using "deformation slits" or
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`"sipes" in the shoe sole to provide the shoe sole with "sufficient flexibility to
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`deform in parallel with the natural deformation of the foot." Id. at 5:5-12.
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`63. The '945 Patent teaches that the number and spacing of the sipes can
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`vary, and that "obviously the more slits are used, the more closely can the surface
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`of the shoe sole coincide naturally with the surface of the sole of the foot and
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`deform in parallel with it." Id. at 5:13-24. In addition, the '945 Patent teaches that
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`"[t]he deformation slits can be enlarged to channels also known as sipes." Id. at
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`- 35 -
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`Skechers Ex 1013-p.
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