Trials@uspto.gov
`571.272.7822
`
`Paper No. 38
`Filed: January 9, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ELITE PERFORMANCE FOOTWEAR, LLC,
`Petitioner,
`
`v.
`
`REEBOK INTERNATIONAL LIMITED,
`Patent Owner.
`____________
`
`Case IPR2017-01676
`Patent 7,637,035 B1
`____________
`
`
`
`Before MEREDITH C. PETRAVICK, KEVIN W. CHERRY, and
`JAMES A. WORTH, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
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`
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`571.272.7822
`
`Paper No. 38
`Filed: January 9, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ELITE PERFORMANCE FOOTWEAR, LLC,
`Petitioner,
`
`v.
`
`REEBOK INTERNATIONAL LIMITED,
`Patent Owner.
`____________
`
`Case IPR2017-01676
`Patent 7,637,035 B1
`____________
`
`
`
`Before MEREDITH C. PETRAVICK, KEVIN W. CHERRY, and
`JAMES A. WORTH, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`
`
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`IPR2017-01676
`Patent 7,637,035 B1
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`
`Elite Performance Footwear, LLC (“Petitioner”) filed a Petition
`
`requesting an inter partes review of claims 1–4, 9–15, 18, 19, and 23–27 of
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`U.S. Patent No. 7,637,035 B1 (Ex. 1001, “the ’035 patent”). Paper 2
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`(“Petition” or “Pet.”). Reebok International Limited (“Patent Owner”) filed
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`a Preliminary Response to the Petition. Paper 6 (“Preliminary Response” or
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`“Prelim. Resp.”).
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`Pursuant to 35 U.S.C. § 314(a), we determined the Petition showed a
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`reasonable likelihood that Petitioner would prevail in establishing the
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`unpatentability of claims 1–4, 9–15, 18, 19, and 23–27, and instituted an
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`inter partes review of these claims on one of a number of asserted grounds
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`of unpatentability. Paper 7 (“Institution Decision” or “Inst. Dec.”). On
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`April 24, 2018, the Supreme Court held that a decision to institute under
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`35 U.S.C. § 318(a) may not institute on less than all claims challenged in the
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`petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018). Following
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`the Supreme Court’s decision in SAS, the Office issued guidance that the
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`Board would now institute on all challenges and would supplement any
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`institution decision that had not instituted on all grounds to institute on all
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`grounds. See April 26, 2018, Guidance on the Impact of SAS on AIA Trial
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`Proceedings.1 Accordingly, on May 1, 2018, we issued an order instituting
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`on the other grounds of unpatentability asserted in the Petition that we had
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`not originally instituted review on. See Paper 16.
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`Patent Owner filed a Patent Owner Response. Paper 20 (“PO Resp.”).
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`Petitioner filed a Reply to Patent Owner’s Response. Paper 22 (“Pet.
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`
`1 Available at https://www.uspto.gov/patents-application-process/patent-
`trial-and-appeal-board/trials/guidance-impact-sas-aia-trial.
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`
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`2
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`IPR2017-01676
`Patent 7,637,035 B1
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`Reply”). Pursuant to our authorization, Patent Owner also filed a Sur-Reply.
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`Paper 27 (“Sur-Reply”).
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`Patent Owner filed a Contingent Motion to Amend. Paper 21.
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`Petitioner filed an opposition to Patent Owner’s Motion to Amend. Paper
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`23. Patent Owner filed a Reply to Petitioner’s Opposition to the Motion to
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`Amend. Paper 28. Petitioner filed a Sur-Reply to Patent Owner’s Motion to
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`Amend. Paper 32.
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`Petitioner also filed a Motion to Exclude certain evidence. Paper 34.
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`Patent Owner filed an Opposition to Petitioner’s Motion to Exclude. Paper
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`36.
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`An oral hearing was held on October 25, 2018. Paper 37 (“Tr.”).
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`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
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`and 37 C.F.R. § 42.73. For the reasons that follow, we determine Petitioner
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`has not proven by a preponderance of the evidence that claims 1–4, 9–15,
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`18, 19, and 23–27 of the ’035 patent are unpatentable. See 35 U.S.C.
`
`§ 316(e). We dismiss Patent Owner’s Contingent Motion to Amend and
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`Petitioner’s Motion to Exclude as moot.
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`
`
`I. BACKGROUND
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`A. RELATED PROCEEDINGS
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`Patent Owner has asserted infringement of the ’035 patent in Reebok
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`International Ltd. v. TRB Acquisitions LLC, Case No. 16-cv-1618 (D.
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`Oregon). Paper 4, 1; Pet. 69. The ’035 patent is one of a number of related
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`issued patents some of which are also subject to pending petitions for inter
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`partes review. See Paper 4, 1. The ’035 patent was also the subject of In the
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`3
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`IPR2017-01676
`Patent 7,637,035 B1
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`Matter of Certain Athletic Footwear, Inv. No. 337-TA-1018 (2016) in the
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`United States International Trade Commission. Pet. 10; Paper 4, 1.
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`B. THE ’035 PATENT
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`The ’035 patent is titled “Collapsible Shoe” and issued on December
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`29, 2009. Ex. 1001, (45), (54). The ’035 patent discloses a shoe that has an
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`upper and a sole formed of a lightweight, flexible material. Id. at 2:6–11.
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`“The flexible sole and upper allows the article of footwear to be rolled,
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`folded or collapsed on itself so that the article of footwear may be easily
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`stored, packed or distributed.” Id. at 2:13–16. Figure 3 of the ’035 patent is
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`reproduced below.
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`
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`Figure 3 depicts sole 102 having flexure lines 301, 305 and sole plates 320.
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`Id. at 5:23–26. Flexure lines 301, 305 “allow sole [102] to flex and curve,”
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`“allow shoe 100 to be folded,” and “provides additional comfort while the
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`foot is in motion.” Id. at 4:62–63, 5:24–25, 5:40–41. “[S]ole [102] has a
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`larger portion 360 generally located in forefoot area 106, a narrower portion
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`340 generally located in arch area 104 . . . , and a mid-sized portion 380
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`generally located in heel area 102.” Id. at 5:58–62.
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`4
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`IPR2017-01676
`Patent 7,637,035 B1
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`
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`The sole “is preferably made of a flexible, lightweight and durable
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`foam material,” for example, “a mixture of ethyl vinyl acetate (EVA), rubber
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`and other compounds, such as the 3D Ultralite material.” Id. at 4:23–31.
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`The upper “may be made of any suitable, breathable and stretchable
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`materials, such as spandex, cotton, or the like.” Id. at 3:19–22.
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`Figure 4 of the ’035 patent is reproduced below.
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`Figure 4 depicts the article of footwear in a partially collapsed state. Id. at
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`2:39–40, 5:10–13. In this configuration, the “[l]acing 108 and flexible upper
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`110 are collapsed upon each other, such that flexible sole 120 envelopes the
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`upper 110 and lacing 108.” Id. at 5:2–4. “As shoe 100 is rolled, each
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`flexure line 301 allows sole plates 320 to move apart from each other around
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`the outside of the collapsed shoe, as seen at flexure points 404 of FIG. 4,
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`providing more flexibility in sole 120 and a more compact collapsed state
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`for shoe 100.” Id. at 5:4–8.
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`5
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`IPR2017-01676
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`C. ILLUSTRATIVE CLAIM
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`Claims 1 and 18 are independent. Claims 2–4, 9–15, and 27 depend
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`from claim 1, and claims 19 and 23–26 depend from claim 18. Claim 1 is
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`illustrative and reproduced below.
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`1. An article of footwear comprising:
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`an upper; and
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`a flexible unitary sole fixed to said upper and having a forefoot area, a
`heel area and an arch area, and further having a length and a
`width, wherein said sole includes:
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`a first flexure line that extends through at least a portion of the length
`of said sole and divides said sole at said arch area into first and
`second sole plates, the first sole plate extending from a lateral
`side of said sole to said flexure line and the second sole plate
`extending from said flexure line to a medial side of said sole,
`wherein a widest portion of the second sole plate is wider than a
`widest portion of the first sole plate, and wherein the first and
`second sole plates have a ground contracting surface, and a
`second flexure line that extends through at least a portion of the
`length of said sole along at least a portion of said forefoot area,
`wherein said first flexure line extends longitudinally through at
`least a portion of said forefoot area, said second flexure line
`being disposed between said first flexure line and the medial side
`of said sole,
`
`wherein said first and second flexure lines dived said sole at the portion
`of said forefoot area into third, fourth and fifth sole plates that
`extend the width of said sole, each of the third, fourth and fifth
`sole plates being undivided by a flexure line,
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`wherein the third sole plate extends from the lateral side to said first
`flexure line,
`
`wherein the fourth sole plate extends from said first flexure line to said
`second flexure line, and
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`wherein the fifth sole plate extends from said second flexure line to the
`medial side of said sole.
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`
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`6
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`IPR2017-01676
`Patent 7,637,035 B1
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`Ex. 1001, 7:52–8:16.
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`D. ASSERTED GROUNDS AND EVIDENCE RELIED UPON
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`Petitioner asserts the following grounds of unpatentability:
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`No. Ground Claims
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`Prior Art
`
`1
`
`2
`
`3
`
`4
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`5
`
`6
`
`7
`
`8
`
`9
`
`§ 103(a) 1–4, 9–15, 18, 19,
`and 23–27
`§ 103(a) 9 and 23
`
`§ 103(a) 1–4, 9–15, 18, 19,
`and 23–27
`§ 103(a) 1–4, 9–15, 18, 19,
`and 23–27
`§ 103(a) 1–4, 9–15, 18, 19,
`and 23–27
`§ 103(a) 1–4, 9–15, 18, 19,
`and 23–27
`§ 103(a) 1–4, 9–15, 18, 19,
`and 23–27
`§ 103(a) 1–4, 9–15, 18, 19,
`and 23–27
`§ 103(a) 1–4, 9–15, 18, 19,
`and 23–27
`
`Reebok 20002
`
`Reebok 2000, Nike S19973, and
`Mastroianni4
`Reebok 2000 and Hall5
`
`Reebok 2000 and Nike H19956
`
`Reebok 2000 and Nike S1997
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`Reebok 2000 and Byong-Ryol7
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`Reebok 2000 and Mastroianni
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`Reebok 2000 and FILA 19988
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`Reebok 2000 and Lucarelli9
`
`Petitioner relies upon the Declaration of David Ulan, dated June 20,
`
`2017. Ex. 1018. Petitioner further relies on the Second Declaration of
`
`David Ulan, dated August 22, 2018. Ex. 1019.
`
`
`2 Reebok Footwear Q4 Catalog. Ex. 1009.
`3 Nike Footwear Spring 1997 Catalog. Ex. 1011.
`4 U.S. Patent No. D439,729 S (Apr. 3, 2001). Ex. 1015.
`5 U.S. Patent No. 500,385 (June 27, 1893). Ex. 1013.
`6 Nike Men’s, Women’s, and Kid’s Holiday Footwear 1995 Catalog.
`Ex. 1010.
`7 UK Patent App. GB2113072 A (published Aug. 3, 1983). Ex. 1016.
`8 Fila Footwear Spring 1998 Catalog. Ex. 1012.
`9 U.S. Patent No. D266,797 (issued Nov. 9, 1982). Ex. 1014.
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`
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`7
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`Patent 7,637,035 B1
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`Patent Owner relies on the Declaration of William McInnis
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`(Ex. 2005), the first Declaration of Dr. Darren Stefanyshyn in Support of
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`Patent Owner’s Response (Ex. 2003), the second Declaration of Dr. Darren
`
`Stefanyshyn in Support of Patent Owner’s Response (Ex. 2011), the first
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`Declaration of Dr. Darren Stefanyshyn in Support of Patent Owner’s Motion
`
`to Amend (Ex. 2008), the second Declaration of Dr. Darren Stefanyshyn in
`
`Support of Patent Owner’s Motion to Amend (Ex. 2015), and the
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`Declaration of Dr. Darren Stefanyshyn in Support of Patent Owner’s Reply
`
`in Support of its Motion to Amend (Ex. 2028).
`
`
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`II. ANALYSIS
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`A. CLAIM CONSTRUCTION
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`In an inter partes review filed before November 13, 201810, the Board
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`construes claim terms in an unexpired patent according to the broadest
`
`reasonable construction in light of the specification of the patent in which
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`they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136
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`S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable
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`interpretation approach). Under that standard, and absent any special
`
`definitions, we give claim terms their ordinary and customary meaning, as
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`they would be understood by one of ordinary skill in the art at the time of the
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`invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
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`2007). Any special definitions for claim terms must be set forth with
`
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`10 Changes to the Claim Construction Standard for Interpreting Claims in
`Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
`51340 (Oct. 11, 2018).
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`
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`8
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`Patent 7,637,035 B1
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`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
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`1475, 1480 (Fed. Cir. 1994).
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`In the Petition, Petitioner proposes constructions for multiple claim
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`elements. See Pet. 9–14. In the Institution Decision, we determined that
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`only the term “flexure line” needs explicit claim constructions in order to
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`resolve the issues before us. Inst. Dec. 7; see, e.g., Wellman, Inc. v.
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`Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms
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`need only be construed ‘to the extent necessary to resolve the
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`controversy.’”) (quotation omitted). Patent Owner agrees and states, “the
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`term ‘flexure line’ is the only term the Board must construe in this
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`proceeding.” PO Resp. 8.
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`
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`In the Petition, Petitioner proposed, “flexure line” means “a line that
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`divides the sole into a plurality of sole plates” because Patent Owner put
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`forth this construction in the previous ITC investigation and this
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`construction is consistent with the specification of the ’035 patent. Pet.
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`10–11 (citing Ex. 1001, 4:65–66). In the Preliminary Response, Patent
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`Owner argued that Petitioner’s proposed construction was unreasonably
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`broad because it does not account for the functionality of the flexure lines
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`(i.e., bending or curving) disclosed in the ’035 patent and required by the
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`ordinary and customary meaning of the word “flexure.” See Prelim. Resp.
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`9–27. Patent Owner did not propose explicitly an alternate construction of
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`“flexure line” but argued that any reasonable construction “must include the
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`basic meaning of flexure—the functionality of bending or curving.” Id. at
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`13 (citing Ex. 2001, dictionary definition of flexure as “turn, bend, fold”).
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` In our Institution Decision, we determined that Petitioner’s proposed
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`construction was unreasonably broad and after considering the ordinary and
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`
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`9
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`IPR2017-01676
`Patent 7,637,035 B1
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`customary meaning of “flexure,” the plain language of the claims, and the
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`disclosure of the ’035 patent we determined that:
`
`the
`light of
`in
`[T]he broadest reasonable construction,
`specification of the ’035 patent, of “flexure line” is a line that
`divides the sole into a plurality of sole plates and allows the sole
`to bend or curve. The broadest reasonable construction,
`however, does not require a specific degree of bending or
`curving, such as to allow the sole to collapse or roll onto itself.
`
`Inst. Dec. 10.
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`In its Response, Patent Owner argues that our construction is still “too
`
`broad because it does not reflect the full extent of which flexure lines allow
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`the sole of the shoe to substantially bend or curve, which far exceeds the
`
`inherent amount of flexibility present in shoes incorporating flexible
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`materials, such that the shoe can at least be folded.” PO Resp. 9; see also id.
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`at 6–16, PO Sur-Reply 2–8. According to Patent Owner, “fold” means to
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`bend over or double up so that one part lies on another part and a shoe is
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`folded if similar to what is shown in Figure 4 of the ’035 patent. PO Sur-
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`Reply 8 (citing Ex. 2027, 38:20–39:13); Tr. 38:7–17. Patent Owner
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`proposes that “flexure line” should be further narrowed to mean “a groove in
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`a shoe sole that allows the sole to substantially bend or curve enough for the
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`shoe to be folded and divides the sole into a plurality of sole plates.” PO
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`Resp. 9–10 (emphasis added). According to Patent Owner, “[a]ny broader
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`construction of the term ‘flexure line’ is disavowed.” PO Resp. 12.
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`
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`Patent Owner does not persuade us to modify our construction of
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`“flexure line” to require the degree of bending or curving be substantial
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`enough for the shoe to be folded. The plain language of the challenged
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`claims does not explicitly require shoes that fold or flexure lines that allow
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`for substantial bending or curving of a sole so that a shoe can fold. For
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`10
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`IPR2017-01676
`Patent 7,637,035 B1
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`example, independent claim 1 recites an article of footwear (i.e., a shoe)
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`comprising a flexible sole having “a first flexure line” and “a second flexure
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`line. See Ex. 1001, 7:52–8:16. The ordinary and customary meaning of
`
`“flexure” requires bending or curving but does not require substantial
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`bending or curving of a sole so that a shoe can fold. See Ex. 2001, 472
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`(dictionary definition of “flexure”). Claim 1 does not explicitly recite the
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`word “fold” or otherwise require the article of footwear to fold. This is in
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`contrast to unchallenged dependent claims 5 and 20. Claims 5 and 20
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`explicitly require the sole to have a natural state and a collapsed state, where
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`the sole is rolled onto itself with the forefoot area disposed adjacent, the heal
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`area and the sole enveloping the upper. Id. at 8:24–35, 10:4–14. Thus,
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`nothing in the plain language of the claims or the ordinary and customary
`
`meaning of “flexure line” requires substantial bending or curving of a sole
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`so that a shoe can fold.
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`Our construction of “flexure line” is consistent with the ’035 patent’s
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`specification, which discloses and teaches lateral flexure lines 301, diagonal
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`flexure line 305, and unnumbered longitudinal flexure lines functioning to
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`provide flexibility. The ’035 patent depicts and describes a number of
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`flexure lines in the preferred embodiments. A preferred embodiment is
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`shown in Fig. 3 of the ’035 patent, and Fig. 3, with annotations, is
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`reproduced below.
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`11
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`Annotated Fig. 3 shows longitudinal flexure lines (unnumbered) in red,
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`lateral flexure lines 301 in green, and larger diagonal flexure line 305 in
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`yellow. The ’035 patent describes one function of lateral flexure lines 301,
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`in conjunction with other elements, such as a flexible upper and a flexible
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`sole material, as allowing the shoe to fold. See e.g. Ex. 1001, Abstract,
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`2:13–16, 3:10–12, 4:26–45, 4:62–63. The ’035 patent, however, describes
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`that lateral flexure lines 301 also function to allow the sole to flex. For
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`example, the ’035 patent states: “As seen in FIG. 3, sole 120 has a plurality
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`of flexure lines 301, which allow sole 120 to flex and curve.” Id. at 4:62–63
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`(emphasis added). Further, the ’035 patent’s Figs. 4 and 5 depict folded or
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`collapsed shoes where a number of flexure lines 301 do not appear to bend
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`or curve, such as flexure line 301 closest to the toes in Fig. 4. See id. at
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`5:8–10 (describing only sole plates 320 at flexure points 404 as being
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`affected); Pet. Reply 6.
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`Likewise, the ’035 patent describes larger flexure line 305 providing
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`flexibility for a foot in motion, as well as allowing the forefoot area to
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`collapse even deeper.
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`12
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`The ’035 patent states:
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`Further, FIG. 3 shows a larger flexure line 305 located diagonally
`across the width of sole 120, generally where a user’s toes bend
`at the end of a typical gait cycle. The larger flexure line 305
`provides additional flexibility at this point to provide additional
`comfort while the foot is in motion. Further, when shoe 100 is
`rolled or folded starting with the forefoot area 106, the larger
`flexure line 305 allows the forefoot area to collapse even deeper
`into the role of sole 120.
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`Id. at 5:37–44 (emphasis added).
`
`The ’035 patent is silent as to the function of the unnumbered
`
`longitudinal flexure lines. See generally Ex. 1001; Pet. Reply 6. According
`
`to Patent Owner’s declarant Dr. Stefanyshyn, “[a] person of ordinary skill in
`
`the art would understand that the longitudinal flexure lines disclosed and
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`claimed in the ’035 patent would be of sufficient depth to permit such
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`substantial bending or curving in the longitudinal direction.” PO Sur-Reply
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`6–7 (quoting Ex. 2011 ¶ 73). Dr. Stefanyshyn’s testimony is unpersuasive
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`because it relies upon a statement from the ’035 patent concerning lateral
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`flexure lines 301 and not the unnumbered longitudinal flexure lines. See Ex.
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`2011 ¶ 73. The ’035 patent does not describe the shoe bending, curving, or
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`folding in the longitudinal direction. See generally Ex. 1001. In any event,
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`other testimony by Dr. Stefanyshyn indicates that the longitudinal flexure
`
`function to provide flexibility on uneven surfaces. See Pet. Reply 6; see also
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`Ex. 2011 ¶¶ 70 (“I agree that flexure lines allow the sole to bend or curve . .
`
`.”), 75–76.
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`
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`Patent Owner argues that the ’035 patent “expressly limits flexure
`
`lines to lines that permit a shoe to fold by stating that ‘[s]ole 120 may
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`comprise one flexure line 301 or more, provided that such flexure line(s)
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`13
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`301 allow shoe 100 to be folded.’” PO Sur-Reply 3 (quoting Ex. 1001,
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`5:23–27, emphasis added in quotation); see also id. at 3–5. According to
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`Patent Owner, “[t]his unequivocal statement conveys to a POSITA that a
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`flexure line must allow the sole to substantially bend or curve enough for the
`
`shoe to be folded.” PO Resp. 12 (citing Ex. 2011 ¶ 7111).
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`“While we read claims in view of the specification, of which they are
`
`a part, we do not read limitations from the embodiments in the specification
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`into the claims.” Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371
`
`(Fed. Cir. 2014). Indeed, “[e]ven when the specification describes only a
`
`single embodiment, the claims of the patent will not be read restrictively
`
`unless the patentee has demonstrated a clear intention to limit the claim
`
`scope using ‘words of expressions of manifest exclusion or restriction.”’
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`Liebel-Flarsheim Co. v. Medrad, Inc.¸358 F.3d 898, 906 (Fed. Cir. 2004)
`
`(quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed.
`
`Cir. 2002)). We may “depart from the plain and ordinary meaning of claim
`
`terms based on the specification in only two instances: lexicography and
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`disavowal.” Hill-Rom Servs., 755 F.3d at 1371. Otherwise, we must be
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`careful not to read a particular embodiment appearing in the written
`
`description into the claim if the claim language is broader than the
`
`embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`
`
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`Patent Owner relies upon the following passage of the ’035 patent:
`
`Sole 120 may comprise one flexure line 301 or more, provided
`that such flexure line(s) 301 allow shoe 100 to be folded. The
`more flexure lines that divide sole 120 and the more plates 320
`that are created, the more compact sole 120 can become when
`
`
`11 Patent Owner citation to ¶ 71 of Exhibit 2011 appears to be a
`typographical error, and the citation should have been to ¶ 70.
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`rolled or folded. For example, one embodiment may have a first
`flexure point formed from a first flexure line and a second flexure
`point formed from a second flexure line, so that shoe 100 can be
`rolled or folded roughly into thirds, similar to the shoe 100 shown
`in FIG. 5. However, preferably, a greater number of flexure lines
`301 are utilized, as seen in FIG 3.
`
`Ex. 1001, 5:23–33; PO Resp. 12; Pet. Sur-Reply 3. The passage when read
`
`in context, however, does not expressly limit flexure lines to lines that
`
`permit a shoe to fold. As can be seen from the above, the passage discusses
`
`flexure lines 301, as opposed to flexure line 305 or the unnumbered
`
`longitudinal flexure lines, and concerns the required number (one or more)
`
`of flexure lines 301 needed to allow sole 120 of the preferred embodiments
`
`to fold. Further, we are not persuaded by Dr. Stefanyshyn’s testimony that
`
`this passage unequivocally conveys that a flexure line must allow the sole to
`
`substantially bend or curve for the shoe to be folded, because his testimony
`
`does not sufficiently address the other disclosures of the ’035 patent related
`
`to flexibility. See Ex. 2011 ¶ 70. We are not persuaded that this passage of
`
`the ’035 patent expressly limits flexure lines to lines that permit a shoe to
`
`fold and disavows flexure lines that allow for a lesser degree of bending or
`
`curving.
`
`
`
`Patent Owner also argues that our construction is unreasonable broad
`
`because it encompasses prior art shoes expressly distinguished in the ’035
`
`patent. See PO Resp. 1–13 (citing Ex. 1001, 4:63–67); PO Sur-Reply 3–4
`
`(citing Ex. 1001, 1:32–41). Patent Owner’s argument is unpersuasive. The
`
`’035 patent indicates that shoes with flexure lines are more flexible than
`
`prior art shoes made with flexible material (e.g., those with a flexible sole
`
`but no flexure lines). Ex. 1001, 1:32–41, 4:63–67. The claims of the ’035
`
`
`
`15
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`IPR2017-01676
`Patent 7,637,035 B1
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`patent require “flexure lines,” even under our construction, and, thus, do not
`
`encompass shoes with a flexible sole material without flexure lines.
`
`For these reasons, we are not persuaded to modify our construction of
`
`“flexure line” from the Institution Decision to require the degree of bending
`
`or curving be substantial enough for the shoe to be folded. The broadest
`
`reasonable construction, in light of the specification of the ’035 patent, of
`
`“flexure line” is a line that divides the sole into a plurality of sole plates and
`
`allows the sole to bend or curve. The broadest reasonable construction,
`
`however, does not require a specific degree of bending or curving, such as to
`
`allow the sole to collapse or roll onto itself.
`
`
`
`B.
`
`LEVEL OF SKILL IN THE ART
`
`Petitioner asserts that a person of ordinary skill in the art (“POSITA”),
`
`at the time of the effective filing date of the ’035 patent, “would have an
`
`undergraduate degree in consumer product design or engineering, industrial
`
`design, or a related field, or equivalent work experience, and at least two (2)
`
`years of relevant work experience in the footwear industry or an equivalent
`
`education in a field related to footwear development, marketing, and/or
`
`manufacturing.” Pet. 9 n.3 (citing Ex. 1018 ¶ 13). Petitioner also contends
`
`that a “POSITA would typically have a broad understanding of the product
`
`cycle, marketing and manufacturing of footwear and shoemaking in general,
`
`in view of the iterative nature of product development and focus on
`
`consumer trends in this area.” Id. at 9–10 n.3 (citing Ex. 1018 ¶ 13).
`
`Petitioner further contends that a “POSITA would also have an
`
`understanding of construction processes and materials used to manufacture
`
`consumer footwear, as well as functional aspects of the components and
`
`
`
`16
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`IPR2017-01676
`Patent 7,637,035 B1
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`designs used in the shoemaking industry.” Id. at 10 n.2 (citing Ex. 1018
`
`¶ 13). Patent Owner’s declarant, Dr. Darren Stefanyshyn, generally agrees
`
`with this definition with one main exception. Ex. 2003 ¶ 63. Dr.
`
`Stefanyshyn contends that the POSITA’s experience should not just be in
`
`footwear, but that experience should be in the field of athletic footwear
`
`design and development. Id. Dr. Stefanyshyn testifies, “[a] person having
`
`only experience with other types of footwear, such as leather shoes or boots,
`
`may not have sufficient exposure to the materials, construction techniques,
`
`functional demands, and intended applications for athletic footwear.” Id.
`
`We disagree with Patent Owner that the level of skill in the art is so
`
`narrowly limited. We understand Petitioner’s level of skill as including all
`
`types of footwear, so such a person would have knowledge of athletic
`
`footwear as well. Regardless, none of the issues in this case turn on the
`
`definition of a POSITA and the prior art of record provides ample evidence
`
`of the level of skill in the art. See In re GPAC Inc., 57 F.3d 1573, 1579
`
`(Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences
`
`did not err in concluding that the level of ordinary skill was best determined
`
`by the references of record); see also Okajima v. Bourdeau, 261 F.3d 1350,
`
`1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of
`
`skill in the art does not give rise to reversible error ‘where the prior art itself
`
`reflects an appropriate level and a need for testimony is not shown”’). Thus,
`
`we apply Petitioner’s definition of a person of ordinary skill in the art for our
`
`analysis.
`
`C. GROUND 1
`
`Petitioner contends that claims 1–4, 9–15, 18, 19, and 23–27 would
`
`have been unpatentable under 35 U.S.C. § 103(a) as obvious over Reebok
`
`
`
`17
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`IPR2017-01676
`Patent 7,637,035 B1
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`2000. Pet. 25–42. To support its contention, Petitioner provides a detailed
`
`mapping of limitations of claims 1–4 and 11–20 to structures of Reebok
`
`2000. Id.
`
`1. Reebok 2000 (Ex. 1009)
`
`Reebok 2000 is a footwear catalog illustrating various shoes and
`
`accessories available for purchase from Reebok. See Ex. 1009. Reebok
`
`2000 discloses various casual and athletic sneakers, such as the “Classic
`
`Sovereign” running shoe. Id. at 68. Reebok 2000 also discloses various
`
`materials that may be used to construct a casual or athletic shoe. For
`
`example, Reebok 2000 discloses various casual and athletic sneakers which
`
`feature a leather or mesh upper and an “EVA” midsole or outsole. See id. at
`
`67 (EVA midsole); id. at 68 (leather upper); id. at 78 (mesh upper); id. at 83
`
`(a “single unit EVA outsole.”).
`
`2. Analysis
`
`With respect to the independent claims, Petitioner contends, “[t]he
`
`‘Classic Sovereign’ shoe disclosed in Reebok 2000 expressly teaches every
`
`limitation of claim 1 [and claim 18] except for the limitation that ‘a widest
`
`portion of the second sole plate is wider than a widest portion of the first
`
`sole plate.’” See e.g. Pet. 28. For the claimed flexible sole having first and
`
`second flexure lines, Petitioner provides an annotated image from page 68 of
`
`Reebok 2000, depicting the Classic Sovereign’s sole and annotated by
`
`Petitioner to show the claimed flexure lines and sole plates. See Ex. 1009,
`
`68, Pet. 26.
`
`
`
`18
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`
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`Patent 7,637,035 B1
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`
`
`
`The annotated image depicts the sole with longitudinal flexure lines labeled
`
`in red, lateral flexure lines labeled in blue, and sole plates indicted by green
`
`dots. Pet. 26. “Petitioner notes that Reebok 2000 does not explicitly
`
`disclose the materials used to fabricate the ‘Classic Sovereign’” shoe, but
`
`argues that based on other examples of footwear within Reebok 2000, it
`
`would have been obvious to use flexible materials. Id. at 29–30 (citing Ex.
`
`1009, 67, 81 (disclosing an ethyl vinyl acetate (“EVA”) sole)).
`
`Patent Owner asserts that the Petitioner has failed to offer sufficient
`
`evidence to show that “the Classic Sovereign shoe meets even the Board’s
`
`initial functional construction of the term ‘flexure line’.” PO Resp. 22.
`
`Patent Owner argues that Petitioners has merely offered a picture of a shoe
`
`with a limited description of its structure and materials and that Petitioner’s
`
`evidence and analysis is insufficient to show that the surface features of the
`
`Classic Sovereign show allow the sole to bend or curve. Id.
`
`In its Reply, Petitioner argues that
`
`As explained in the Petition, each of the asserted grounds results
`in one of ordinary skill in the art arriving at a shoe with an upper
`and sole constructed from flexible materials and an arrangement
`
`
`
`19
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`IPR2017-01676
`Patent 7,637,035 B1
`
`
`of flexure lines (e.g., grooves) on the sole as required by the
`challenged claims. Theses flexure lines would necessarily allow
`some degree of bending or curvature of the sole.
`
`Pet. Reply 1–2.
`
`We agree with Patent Owner that Petitioner has failed to account
`
`adequately for “flexure line,” as we have construed it. As we explained
`
`above, the broadest reasonable construction of “flexure line” is “a line that
`
`divides the sole into a plurality of sole plates and allows the sole to bend or
`
`curve.” See supra Section II.A. Reebok 2000 is a catalogue and is
`
`completely silent as to the functional characteristics of the lines shown on its
`
`Classic Sovereign shoe sole. See e.g., Ex. 1009, 68. Patent Owner,
`
`supported by the testimony of its declarant Dr. Stefanyshyn, contends that
`
`the interior structure of the Classic Sovereign shoe, which not shown by
`
`Reebok 2000, and differences in sole thickness could affect the soles
`
`flexibility and function of the flexure lines. See PO Resp. 24–29 (citing Ex.
`
`2011 ¶¶ 23–28, 41). Petitioner has not offered sufficient evidence that
`
`would support a finding that the lines on the Classic Sovereign shoe sole
`
`allow the sole to bend or curve, as required by our construction. Petitioner’s
`
`declarant testifies generally that a shoe sole constructed from a flexible
`
`material with tend to increasingly bend along a groove as stress is applied to
`
`a shoes (Ex. 1019 ¶ 19), but this does not sufficiently address whether
`
`Reebok 2000’s Classic Sovereign shoe sole will bend or curve at the
`
`identified lines. Without sufficient evidence t
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