Trials@uspto.gov
`571-272-7822
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`Paper 78
`Entered: June 28, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SKECHERS U.S.A., INC.,
`Petitioner,
`
`v.
`
`NIKE, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00621
`Patent D723,781 S
`____________
`
`
`
`Before KEN B. BARRETT, GRACE KARAFFA OBERMANN, and
`SCOTT A. DANIELS, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`
`
`
`571-272-7822
`
`
`
`
`Paper 78
`Entered: June 28, 2018
`
`
`
`
`
`
`
`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 IPR2017-00621
`Patent D723,781 S
`____________
`
`
`
`Before KEN B. BARRETT, GRACE KARAFFA OBERMANN, and
`SCOTT A. DANIELS, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`
`
`
`
`IPR2017-00621
`Patent D723,781 S
`
`
`I. INTRODUCTION
`Pursuant to 35 U.S.C. § 318, we determine in this inter partes review
`that Petitioner fails to carry its burden of showing by a preponderance of the
`evidence that the challenged claim of U.S. Patent No. D723,781 S
`(Ex. 1001, “the ’781 patent”) is unpatentable.
`
`A. Procedural History and Asserted Challenges
`On January 6, 2017, Petitioner filed a Petition (Paper 1, “Pet.”)
`requesting an inter partes review of the claim of the ’781 patent. The
`patented design relates to ornamental features located on the side and bottom
`surfaces of a shoe sole. Ex. 1001, Figs. 1–3. On April 12, 2017, Patent
`Owner filed a Preliminary Response. Paper 12 (“Resp.”).
`The Petition asserts ten (10) grounds of unpatentability against the
`claim. Pet. 7–8. On July 6, 2017, pursuant to 35 U.S.C. § 314, we instituted
`review of the claim (Paper 13, “Dec.”) based on obviousness over:
`
`1.
`RCD 00071 in view of RCD 00122;
`
`2.
`RCD 0007 in view of RCD 0012 and CN13883; and
`
`3.
`RCD 0007 in view of RCD 0012 and RCD 00054.
`Paper 13, 37.
`
`
`1 Certified Registration and Extract from the Register for Registered
`Community Design No. 000827613-0007 (Ex. 1003, “RCD0007”).
`2 Certified Registration and Extract from the Register for Registered
`Community Design No. 000725247-0012 (Ex. 1005, “RCD0012”).
`3 China Design Registration No. CN 301711388 S (Ex. 1009, “CN1388”)
`4 Certified Registration and Extract from the Register for Registered
`Community Design No. 001874165-0005 (Ex. 1004, “RCD0005”).
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`Patent D723,781 S
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`On October 26, 2017, Patent Owner filed a Response. Paper 41 (filed
`under seal); Paper 56 (“Resp.”) (public version filed February 15, 2018). On
`February 1, 2018, Petitioner filed a Reply. Paper 51 (“Reply”). We held a
`consolidated final oral hearing5 on April 12, 2018. Paper 76 (“Tr.”).
`On May 3, 2018, we entered an Order that added to the review each
`additional ground of unpatentability asserted in the Petition. Paper 75, 1
`(citing SAS Inst., Inc. v. Iancu, 138 S.Ct. 1348, 1359–1360 (U.S. Apr. 24,
`2018)). Accordingly, we resolve in this decision seven (7) additional
`grounds of obviousness (identified as grounds (4) through (10) below):
`
`4.
`RCD00186 in view of RCD0012;
`
`5.
`RCD0018 in view of RCD0012 and the ’853 patent7;
`
`6.
`RCD0018 in view of RCD0012 and the ’725 patent8;
`
`7.
`RCD0018 in view of RCD0012 and CN1388;
`
`8.
`RCD0018 in view of RCD0012 and RCD0005;
`
`
`
`
`5 The hearing was consolidated with IPR2017–00620 (“IPR620”), which
`involves the same parties and a related design patent. Concurrently
`herewith, we issue a Final Written Decision in IPR620. The parties aver
`also that the ’781 patent is at issue in Nike, Inc. v. Skechers U.S.A., Inc.,
`Case No. 3:16-cv-00007-PK (D. Or.). Pet. 3; Paper 4, 2. Further, in
`IPR2016-00874 (“IPR874”), the Board denied institution of the inter partes
`review request by Petitioner. See Skechers U.S.A., Inc. v. Nike, Inc., Case
`IPR2016-00874, slip. op. 28–29 (PTAB Sept. 29, 2016) (Paper 11).
`6 Certified Registration and Extract from the Register for Registered
`Community Design No. 000120449-0018 (Ex. 1002, “RCD0018").
`7 U.S. Patent No. D447,853 S (Ex. 1007, “the ’853 patent”).
`8 U.S. Patent No. D520,725 S (Ex. 1008, “the ’725 patent”).
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`Patent D723,781 S
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`RCD0007 in view of RCD0012 and the ’853 patent;
`9.
`
`10. RCD0007 in view of RCD0012 and the ’725 patent.
`
`Paper 76, 1.9
`
`On May 10, 2018, the parties jointly advised the Board that the
`addition of the above seven (7) grounds to the proceeding necessitated no
`changes to the schedule or additional briefing. Paper 77, 1. Accordingly,
`we assess the challenges asserted in the Petition based on the record
`developed during trial.
`
`B. Declaration Evidence
`Petitioner relies on declaration testimony provided by Mr. Robert
`John Anders (Ex. 1013; Ex. 1029). Patent Owner relies on declaration
`testimony provided by Mr. Allan Ball (Ex. 2039). Based on their curricula
`vitae and statements of qualifications, we find that Mr. Anders and Mr. Ball
`both are qualified to opine about the perspective of an ordinarily skilled
`designer. See Ex. 1013 §§ 5–23 (Mr. Anders’ statement of qualifications);
`Ex. 1014 (Mr. Anders’ curriculum vitae); Ex. 2039 §§ 12–20 (Mr. Ball’s
`statement of qualifications); Ex. 2040 (Mr. Ball’s curriculum vitae).
`
`The Designer of Ordinary Skill
`C.
`As we did in our institution decision, we find that a designer of
`ordinary skill in the art would have had either (1) a degree in Industrial
`Design combined with some work experience as a designer of footwear
`designs; or (2) two years of direct experience creating footwear designs.
`
`9 The Petition asserts U.S. Patent No. 6,115,945 (Ex. 1006, “the ’945
`patent”) as a background reference. See, e.g., Pet. 5, 34.
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`Dec. 7. That definition is consistent with Petitioner’s proposed definition.
`Pet. 36 (Petitioner’s definition); Reply 2 (Petitioner, reasserting that
`definition). Patent Owner, for its part, raises no persuasive information
`tending to establish a different definition. Resp. 2 (Patent Owner, essentially
`acquiescing to Petitioner’s definition). That definition also is consistent with
`the disclosures reflected in the asserted prior art references. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect
`the appropriate level of ordinary skill in the art).
`
`D. Claim Construction
`The claim of the ’781 patent does not require express construction for
`the purposes of this decision. On that point, we observe that Figures 1–3 of
`the ’781 patent (Ex. 1001) reflect the scope of the patented design. To the
`extent any explanation of that scope is necessary to our decision, we provide
`it below in our analysis of the asserted challenge. Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir.
`2017) (“we need only construe terms ‘that are in controversy, and only to the
`extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`
`
`
`II. DISCUSSION
`“In determining the patentability of a design, it is the overall
`appearance, the visual effect as a whole of the design, which must be taken
`into consideration.” See In re Rosen, 673 F.2d 388, 390 (CCPA 1982). The
`proper standard is whether the design would have been obvious to a designer
`of ordinary skill who designs articles of the type involved, which, in this
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`Patent D723,781 S
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`case, are shoe soles. See In re Nalbandian, 661 F.2d 1214, 1217 (CCPA
`1981); Ex. 1001, Title, Fig. 1 (illustrating ornamental features on the bottom
`surface of a shoe sole); Figs. 2–3 (illustrating ornamental features on the
`lateral side surface of a shoe sole). For reasons that follow, we determine
`that Petitioner fails to carry its burden of identifying a Rosen reference. See
`Rosen, 673 F.2d at 391. As a consequence, Petitioner fails also to establish
`that the challenged claim is unpatentable.
`As a starting point, to make out a successful obviousness challenge,
`Petitioner must identify “a reference, a something in existence, the design
`characteristics of which are basically the same as the claimed design in order
`to support a holding of obviousness. Such a reference is necessary whether
`the holding is based on the basic reference alone or on the basic reference in
`view of modifications suggested by secondary references.” Rosen, 673 F.2d
`at 391. Accordingly, “the first step in an obviousness analysis for a design
`patent requires a search of the prior art for a primary reference,” which
`requires the tribunal “to: (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.” Durling v.
`Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996).
`We address the two prongs of the Durling test in turn below.
`
`A. The Visual Impression of the Patented Design as a Whole
`The subject matter of the patented design is reflected in Figures 1–3 of
`
`the ’781 patent. Taken together, Figures 1–3 define the visual impression of
`the patented design as a whole.
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`The Bottom Surface of the Patented Design (Fig. 1)
`The patented design includes ornamental features located on the
`bottom surface of the shoe sole, as illustrated in Figure 1, which is
`reproduced below.
`
`
`
`
`Ex. 1001, Fig. 1. Figure 1 is a view of the bottom surface of a shoe sole
`with ornamental features illustrated as solid lines in the heel region and
`unclaimed features illustrated by broken lines. See Ex. 1001, 1, Description
`(“The broken lines showing the remainder of the shoe are for environmental
`purposes only and form no part of the claimed design.”).
`Figure 1 of the ’781 patent includes an ornamental feature depicted as
`an elongated region, of relatively darker shading, superimposed over about
`two thirds of a sipe that bisects the claimed heel region. Ex. 1001, Fig. 1.
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`We, similar to the parties in their briefs, refer to that feature in this decision
`as “the channel element.”10 E.g., Resp. 14–15, Reply 7–8; Tr. 12:5–8
`(Petitioner’s counsel, admitting that “there’s a sipe” and “there is some
`shading” in the claimed region of Figure 1 of the ’781 patent), 53:5–6
`(Petitioner’s counsel, referring to “a zoomed-in view of the [’]781” patent,
`stating “there’s something there here, it’s shading; its coloring”), 54:23–24
`(Petitioner’s counsel, positing that “these darker colors that we see in the
`center of the claim, in the [’]781” patent, could be “just shading;” “a
`channel;” or “a channel or a sipe in this region”).
`
`
`The Side Surface of the Patented Design (Figs. 2–3)
`The patented design also includes ornamental features located on the
`lateral (outward facing during normal wear) side surface of the shoe sole.
`Those features are illustrated in Figure 2, reproduced below.
`
`
`10 By assigning that label to the feature, we make no conclusions as to its
`scope. For reasons that follow, we need not and do not provide a textual
`explanation of the scope of that claimed feature, except to observe that the
`scope is defined by Figure 1 and illustrated as an elongated region, of
`relatively darker shading, superimposed over about two thirds of a sipe that
`bisects the claimed heel region.
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`Id. at Fig. 2. Figure 2 is a front perspective view of the lateral side surface
`of a shoe sole, with claimed features indicated in solid lines on the heel area
`and an unclaimed remainder of the shoe indicated in broken lines.
`
`Another aspect of the patented design is shown in Figure 3,
`reproduced below.
`
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`Patent D723,781 S
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`Id. at Fig. 3. Figure 3 is a lateral side view of the claimed heel portions of
`the shoe sole in solid lines and unclaimed remainder of the shoe.
`
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`Patent D723,781 S
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`
`The Petition’s Lack of Analysis of the Channel Element
`The Petition identifies three ornamental features as “key elements of
`
`the design claimed in the ’781 patent.” Pet. 44, 65. When discussing the
`visual impression created by the patented design as a whole, Petitioner
`focuses on (1) “vertical sipes (or cracks)” located on the lateral “midsole”
`side surface (Pet. 44, 65; see Ex. 1001, Figs. 2–3); (2) “vertical grooves” that
`are located “between” those sipes (Pet. 44, 65; see Ex. 1001, Figs. 2–3); and
`(3) a portion of the heel on the bottom surface of the shoe sole having “a
`grid-like pattern of pads” (Pet. 44, 65; see Ex. 1001, Fig. 1). Patent Owner
`asserts that a “visually evident” ornamental feature is overlooked in the
`Petition—that is, the channel element. Resp. 17; see id. at 23 (including
`Illustration 11, prepared by Patent Owner’s declarant, Mr. Ball, identifying
`the channel element as a “[w]ide rounded channel”).
`In that regard, we agree with Patent Owner that the Petition does not
`identify the channel element, much less explain adequately the impact, if
`any, of the channel element on the overall visual impression created by the
`patented design. See generally Pet. Petitioner’s declarant, Mr. Anders,
`readily acknowledges that he did not take account of the channel element
`when he formed his opinion that the subject matter of the patented design
`would have been obvious over the asserted prior art references. Resp. 31–32
`(quoting Ex. 2048, 203:3–8; 204:13–17); see Ex. 1013 ¶ 66 (Mr. Anders,
`asserting in his first declaration that three features “comprise the overall
`appearance of the design claimed in the ’781 patent as they relate to the prior
`art”—none of which corresponds to the channel element); Ex. 1029 ¶¶ 16–
`18 (Mr. Anders, asserting in his second declaration that the channel element
`is an “unclaimed” feature of the patented design); but see Ex. 1029 ¶¶ 28–29
`
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`Patent D723,781 S
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`(admitting that Figure 1 “shows some shading in the center of the claimed
`region”); see also Resp. 26–27 (citing Ex. 2048, 109:19–110:6).
`
`
`The Analysis of the Channel Element Presented in the Response
`The channel element was identified in this proceeding for the first
`time by Patent Owner in the Response. Resp. 11–23. Patent Owner asserts
`that “the Petition ignored visually evident features of the claimed design”
`(id. at 11), including the channel element (id. at 16–17).11 Patent Owner
`directs us to Mr. Ball’s testimony that “[t]he bottom view of the claimed
`design has a wide channel, which runs through the center of the shoe and
`through the claimed portion of the outsole.” Ex. 2039 ¶ 41; Resp. 16.
`Patent Owner argues, with support from Mr. Ball, that there exists in the
`patented design a channel element having “edges that terminate mostly
`within the claimed area before reaching the rearmost latitudinal sipe of the
`claimed portion.” Resp. 16–17 (citing Ex. 2039 ¶ 41). We agree with that
`assertion, which is supported by Figure 1 of the ’781 patent (Ex. 1001).
`
`
`11 Petitioner was afforded a full and fair opportunity to address those
`arguments in the Reply, but elected instead to stand behind the preliminary
`claim construction set forth in our institution decision, which did not in our
`textual description mention explicitly the channel element. Reply 2–19;
`Dec. 7–11 (preliminary claim construction); see Egyptian Goddess, Inc. v.
`Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (en banc) (With regard to
`design patents, it is well-settled that a design is represented better by an
`illustration than a description.). In the interests of reaching a fair result in
`this case, we granted Petitioner’s counsel leeway, at the final oral hearing, to
`address the visual impact of the channel element on the overall design, even
`though that issue was not addressed at all in the Petition, or adequately in the
`Reply. See, e.g., Tr. 7:11–10:4; 13:18–22:23.
`
`12
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`IPR2017-00621
`Patent D723,781 S
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`
`We are persuaded that Figure 1 of the ’781 patent depicts the channel
`element by use of relatively darker shading and, thereby, indicates that the
`feature impacts the visual impression of the patented design as a whole.
`Ex. 1001, Fig. 1 (including an elongated region, of relatively darker shading,
`superimposed over about two thirds of a sipe that bisects the claimed heel
`region). We further are persuaded that Illustration 11, prepared by Mr. Ball,
`may be helpful to the reader in visualizing the relative placement and size of
`the channel element that is illustrated in Figure 1 of the ’781 patent.
`Resp. 23 (reproducing Illustration 11). We reproduce Illustration 11 below.
`
`
`Resp. 23 (Illustration 11). Illustration 11 is a three-dimensional illustration
`of a shoe sole that identifies, among other features, an element near the
`center bottom surface of the shoe sole that is labelled “[w]ide rounded
`channel.” We emphasize that the scope of the challenged claim, however, is
`based on Figures 1–3 of the ’783 patent and not Illustration 11. Compare
`Ex. 1001, Figs. 1–3, with Resp. 23 (Illustration 11).
`
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`IPR2017-00621
`Patent D723,781 S
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`The Analysis of the Channel Element Presented in the Reply
`We take note of the itemized list of reasons why, in Petitioner’s view,
`Illustration 11 “differs from the claimed design.” Reply 3–7. For example,
`Petitioner argues that the channel element illustrated in Figure 1 of the ’781
`patent is not necessarily “wide” or “rounded” in the patented design. Id.
`at 4. We agree. Nonetheless, there is no genuine dispute surrounding the
`question whether the patented design includes a feature that is defined in
`Figure 1 by an elongated region, of relatively darker shading, superimposed
`over about two thirds of a sipe that bisects the claimed heel region.
`Ex. 1001, Fig. 1.
`On that point, Petitioner, in the Reply, advances four figures that
`represent interpretations of the “shading in the center of the claimed region”
`that defines the channel element in Figure 1, each of which is illustrated in
`the Reply as a prominent ornamental feature. Reply 8; see id. at 12–15
`(asserting four possible interpretations of the shading reflected in Figure 1,
`all of which demonstrate the prominent visual impact of all of those
`possibilities).
`Petitioner does not meaningfully dispute that the “shading in the
`center of the claimed region” in Figure 1 denotes a channel element that is
`part of the patented design.12 Reply 8 (Figure 1 “shows some shading in the
`
`
`12 Petitioner’s counsel acknowledged, during the final oral hearing, that the
`channel element is a feature of the claimed design. Tr. 12:5–8 (Petitioner’s
`counsel, admitting that “there’s a sipe” and “there is some shading” in the
`claimed region of Figure 1 of the ’781 patent), 53:5–6 (Petitioner’s counsel,
`referring to “a zoomed-in view of the [’]781” patent, stating “there’s
`something there here, it’s shading; its coloring”); 54:23–24 (Petitioner’s
`14
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`IPR2017-00621
`Patent D723,781 S
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`center of the claimed region”). As such, the channel element contributes to
`the overall visual impression created by the patented design as a whole.
`Ex. 1001, Figs. 1–3. Even if we accept that the “shading” (Reply 8) in
`Figure 1 may represent any one of the four configurations proposed by
`Petitioner, that does not undercut the fact that the feature is prominent (that
`is, it impacts the visual impression of the patented design as a whole). Reply
`12–16 (proposing four possible interpretations of the channel element, all of
`which appear, even in Petitioner’s illustrations, as prominent features of the
`patented design).
`By way of example, we reproduce below the first of the four figures
`proposed by Petitioner (Reply 13) as a possible interpretation of the
`“shading” (id. at 8) that defines the channel element in Figure 1 of the ’781
`patent.
`
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`
`
`counsel, positing that “these darker colors that we see in the center of the
`claim, in the [’]781” patent, could be “just shading;” “a channel;” or “a
`channel or a sipe in this region”).
`
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`Reply 13. The above figure contains two different views of the heel area of
`a bottom surface of a shoe sole wherein the heel area is bisected in the mid-
`heel region by a convex channel element.
`
`
`Findings Regarding the Channel Element
`The Petition does not identify the channel element and the Reply does
`not effectively explain its impact on the overall visual impression of the
`patented design. Instead, in the Reply, Petitioner advances argument that the
`Board should not consider the channel element as a feature of the patented
`design. See Pet. 36–40 (limiting claim construction analysis to three
`features, and ignoring the channel element); Reply 2–3, 7–12 (advancing
`argument that the channel element should not be interpreted as a feature of
`the patented design).
`Petitioner’s own asserted renderings of the channel element make
`plain that the feature impacts the visual impression of the patented design as
`a whole. Reply 12–15 (advancing four visual interpretations of Figure 1 of
`the ’781 patent). We conclude that the channel element is a feature of the
`patented design and, moreover, it impacts the visual impression created by
`the design as a whole. Ex. 1001, Fig. 1 (depicting an elongated region, of
`relatively darker shading, superimposed over about two thirds of a sipe that
`bisects the claimed heel region); see Resp. 16 (citing Ex. 2039 ¶ 41) (Mr.
`Ball, providing persuasive opinion testimony regarding the placement and
`size of the channel element in the patented design). Petitioner’s own
`illustrations depict the channel element as a prominent feature that impacts
`the overall visual impression of the patented design. Reply 12–15
`(advancing four figures that, in Petitioner’s view, are possible interpretations
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`of the “shading in the center of the claimed region” (id. at 8) in Figure 1 of
`the ’781 patent, which defines the channel element).
`Arguably, the least visually significant interpretation of the channel
`element proposed by Petitioner is a feature wherein “the shading simply
`represent[s] a darker shade than the surrounding areas in the claimed
`region”—but, even in Petitioner’s rendering of that interpretation, the
`channel element contributes to the overall impression of the patented design.
`Reply 14. We reproduce that illustration below.
`
`
`
`Id. The above figure is a photograph of a bottom surface of a shoe sole
`wherein the heel area is bisected in the mid-heel region by a shaded channel
`element.
`We are persuaded on this record that a preponderance of the evidence
`shows that the channel element represents an ornamental feature of the
`patented design that contributes toward “the correct visual impression
`created by the patented design as a whole.” Durling, 101 F.3d at 103. We
`are persuaded also that a discussion of the channel element is necessary to
`any meaningful assessment of the overall visual impression of the patented
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`design. It is a feature that bisects the claimed heel portion of the shoe sole,
`even in Petitioner’s view. Compare Reply 13–14 (Petitioner’s proposed
`renderings of the channel element), with Ex. 1001, Fig. 1 (depicting an
`elongated region, of relatively darker shading, superimposed over about two
`thirds of a sipe that bisects the claimed heel region). Under the
`circumstances, for reasons explained in the next section, Petitioner should
`have identified and discussed the channel element in the Petition.
`
`Additional Observations on the Dispute Surrounding the Channel Element
`Petitioner bears “the burden of proving a proposition of
`unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e).
`Our rules require a successful petition to include “a detailed explanation of
`the significance of the evidence including material facts.” 37 C.F.R.
`§ 42.22(a)(2)). An issue bearing on the challenge is whether and how the
`claimed channel element impacts the “visual impression created by the
`patented design as a whole.” Durling, 101 F.3d at 103; see Ex. 1001, Fig. 1
`(depicting an elongated region, of relatively darker shading, superimposed
`over about two thirds of a sipe that bisects the claimed heel region).
`We are mindful of the dispute surrounding whether the elongated
`region, of relatively darker shading, that defines the channel element in
`Figure 1 of the ’781 patent represents, for example, a depression, a raised
`ornamental feature, a flat region surrounded by sipes, or simply a two-
`dimensional pattern consisting of a shaded design on a flat surface. See
`Ex. 1001, Fig. 1 (showing solid lines that define and claim that feature);
`Reply 12–16 (exploring four possible interpretations of the shading that
`represents the channel element in Figure 1 of the ’783 patent). We are
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`unpersuaded that resolution of that dispute is necessary to our analysis. It is
`enough for us to observe that the channel element is part of, and impacts the
`overall impression of, the claimed design. Tr. 8:1–10:3, 50:3–52:18
`(discussing the dispute and confirming the parties’ agreement that the
`channel element is part of the claimed design).
`The Petition does not address the impact of the channel element on the
`overall visual impression of the claimed design. See generally Pet. And the
`Reply adheres to the preliminary claim construction that we provided in our
`institution decision, which was based on a preliminary record that did not
`identify explicitly the channel element. Reply 2–19; Dec. 7–11.
`In the Reply, however, Petitioner for the first time acknowledges the
`elongated region, of relatively darker shading, that represents the channel
`element in Figure 1 of the ’781 patent. Reply 8 (referring to “some shading
`in the center of the claimed region”). But, in the Reply, Petitioner does not
`explain adequately whether or how that feature impacts “the correct visual
`impression created by the patented design as a whole.” Durling, 101 F.3d
`at 103. Instead, as explained above, Petitioner asserts that the shading
`apparent in Figure 1 “can represent many features,” then proceeds to
`advance no less than four possible interpretations, without explaining how
`any of them would fail to impact the overall visual impression of the
`patented design. Reply 12–15. Given these particular facts and
`circumstances, we determine that Petitioner fails to provide “a detailed
`explanation of the significance of the evidence” bearing on the extent to
`which the channel element contributes to the overall impression of the
`patented design. 37 C.F.R. § 42.22(a)(2)); see supra n.10 (explaining that
`we afforded Petitioner’s counsel leeway at the final oral hearing to address
`
`19
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`IPR2017-00621
`Patent D723,781 S
`
`that issue); cf. Tr. 23:1–26:16 (Petitioner’s counsel discussing de minimus
`changes in the context of a Rosen reference).
`Petitioner also does not identify adequately “[h]ow the challenged
`claim is to be construed.” 37 C.F.R. § 42.104(b)(3). The Petition nowhere
`mentions the channel element, and the Reply advances at least four possible
`interpretations of the channel element, without advancing any particular
`interpretation. Reply 12–15. On this record, we find that Petitioner fails to
`carry its “burden from the onset to show with particularity why the patent it
`challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d
`1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter
`partes review petitions to identify “with particularity” by reference to the
`record “the evidence that supports the grounds for the challenge to each
`claim”)). That burden of persuasion, moreover, never shifts to Patent
`Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d
`1375, 1378 (Fed. Cir. 2015) (discussing the burdens in our administrative
`review process).
`
`
`Conclusions Regarding the First Prong of the Durling Test
`A preponderance of the evidence supports a conclusion that Petitioner
`fails to take account adequately of the channel element of the patented
`design and, therefore, fails also to identify “the correct visual impression
`created by the patented design as a whole”—a required first step in
`identifying a Rosen reference. Durling, 101 F.3d at 103. That failure,
`standing alone, justifies our conclusion that Petitioner fails also to prove by a
`preponderance of the evidence that the challenged claim of the ’781 patent is
`unpatentable.
`
`20
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`
`We next turn to the second prong of the Durling test, which presents
`an independent basis for concluding that Petitioner fails to carry its burden
`of proving that the challenged claim is unpatentable.
`
`
`B. Petitioner Fails to Identify a Single Reference that
`Creates Basically the Same Visual Impression as the Patented Design
`In order to prevail, Petitioner must identify “a reference, a something
`in existence, the design characteristics of which are basically the same as the
`claimed design in order to support a holding of obviousness.” Rosen, 673
`F.2d at 391. The Durling test emphasizes that a Rosen reference is “a single
`reference that creates ‘basically the same’ visual impression” as the patented
`design. Durling, 101 F.3d at 103.
`The Petition asserts that RCD0007 and RCD0018 qualify as Rosen
`references. Pet. 44–47, 65–69; Reply 18–21 (additional arguments
`pertaining to RCD0007). We address each in turn below.
`
`
`RCD0007 (Ex. 1003)
`Petitioner asserts that RCD0007 qualifies as a Rosen reference
`because it discloses three “key elements” that are present in the patented
`design: (1) vertical sipes along the midsole side surface of the shoe; (2) in
`the medial view, vertical grooves along the center of the midsole between
`the sipes; and (3) a portion of the heel area on the bottom surface having a
`grid-like pattern of pads. Pet. 65–66. Petitioner does not account for the
`channel element of the patented design. Id. at 65–69.
`We reproduce below a side-by-side comparison of RCD0007 and the
`patented design that is advanced in the Petition. Pet. 67.
`
`21
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`
`
`
`Id. The above figure is an annotated composite illustration that compares
`ornamental features identified as grooves located on a side surface of the
`patented design (Ex. 1001, Fig. 3 (annotated)) to ornamental features
`described as grooves located on a side surface design of RCD0007 (Ex.
`1003, Fig. 3 (annotated)).
`We reproduce below Petitioner’s figure that compares the heel regions
`of the respective designs.
`
`22
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`IPR2017-00621
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`
`
`
`Pet. 68. The above figure is a composite illustration that compares the
`ornamental features located on the bottom surface of the patented design
`(Ex. 1001, Fig. 1 (annotated)) to the ornamental features located on the
`bottom surface of RCD0007 (Ex. 1002, Fig. 7 (annotated)).
`Petitioner does not establish that RCD007 “creates ‘basically the
`same’ visual impression” as the patented design, which includes the channel
`element. Durling, 101 F.3d at 103. Neither the Petition nor the Reply
`adequately accounts for the channel element, which is undeniably a feature
`of the patented design. Tr. 12:5–8 (Petitioner’s counsel, admitting that
`“there’s a sipe” and “there is some shading” in the claimed region of
`
`23
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`IPR2017-00621
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`Figure 1 of the ’781 patent), 53:5–6 (Petitioner’s counsel, referring to “a
`zoomed-in view of the [’]781” patent, stating “there’s something there here,
`it’s shading; its coloring”), 54:23–24 (Petitioner’s counsel, positing that
`“these darker colors that we see in the center of the claim, in the [’]781”
`patent, could be “just shading;” “a channel;” or “a channel or a sipe in this
`region”). As a result, the record contains no information from which we
`reasonably can conclude that RCD0007 qualifies as a Rosen reference by
`creating “basically the same” impression as the patented design as a whole,
`including the channel element. Durling, 101 F.3d at 103. The Petition
`should have raised and discussed the channel element as part of Petitioner’s
`case-in-chief. See Ex. 1001, Fig. 1 (depicting an elongated region, of
`relatively dar
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