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 IPR2017-01680
`Patent 8,505,221 B2
`____________
`
`
`Before MEREDITH C. PETRAVICK, KEVIN W. CHERRY, and
`JAMES A. WORTH, Administrative Patent Judges.
`
`CHERRY, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`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 IPR2017-01680
`Patent 8,505,221 B2
`____________
`
`
`Before MEREDITH C. PETRAVICK, KEVIN W. CHERRY, and
`JAMES A. WORTH, Administrative Patent Judges.
`
`CHERRY, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`
`IPR2017-01680
`Patent 8,505,221 B2
`
`
`Elite Performance Footwear, LLC (“Petitioner”) filed a Petition
`requesting an inter partes review of claims 1–6 and 11–20 of U.S. Patent
`No. 8,505,221 B2 (Ex. 1001, “the ’221 patent”). Paper 2 (“Petition” or
`“Pet.”). Patent Owner filed a Preliminary Response (Paper 6, “Prelim.
`Resp.”). Pursuant to 35 U.S.C. § 314(a), we determined the Petition showed
`a reasonable likelihood that Petitioner would prevail in establishing the
`unpatentability of claims 1, 2, 5, 6, and 11–15, and instituted an inter partes
`review of these claims on one of the seven asserted grounds of
`unpatentability. Paper 7 (“Institution Decision” or “Inst. Dec.”). On April
`24, 2018, the Supreme Court held that a decision to institute under 35 U.S.C.
`§ 318(a) may not institute on fewer than all claims challenged in the petition.
`SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018). Following the
`Supreme Court’s decision in SAS, the Office issued guidance that the Board
`would now institute on all challenges and would supplement any institution
`decision that had not instituted on all grounds to institute. See U.S. Patent
`and Trademark Office, Guidance on the Impact of SAS on AIA Trial
`Proceedings (Apr. 26, 2018).1 Accordingly, on May 1, 2018, we issued an
`order instituting on the seven claims and six other grounds of unpatentability
`asserted in the Petition on which we had not originally instituted review.
`See Paper 16.
`Patent Owner Reebok International Limited (“Reebok” or “Patent
`Owner”) filed a Patent Owner Response. Paper 20 (“PO Resp.”). Petitioner
`filed a Reply to Patent Owner’s Response. Paper 22 (“Pet. Reply”).
`
`
`1 Available at https://www.uspto.gov/patents-application-process/patent-
`trial-and-appeal-board/trials/guidance-impact-sas-aia-trial.
`
`
`
`2
`
`
`
`IPR2017-01680
`Patent 8,505,221 B2
`
`Pursuant to our authorization, Patent Owner also filed a Sur-Reply.
`Paper 27 (“PO Sur-Reply”).
`Patent Owner filed a Contingent Motion to Amend. Paper 22 (“PO
`Mot. Amend”). Petitioner filed an opposition to Patent Owner’s Motion to
`Amend. Paper 23 (“Pet. Opp. Mot. Amend”). Patent Owner filed a reply to
`Petitioner’s Opposition to the Motion to Amend. Paper 28 (“PO Reply Mot.
`Amend”). Petitioner filed a sur-reply to Patent Owner’s Motion to Amend.
`Paper 32 (“Pet. Sur-Reply Mot. Amend”).
`Petitioner also filed a Motion to Exclude certain evidence. Paper 34
`(“Pet. Mot. Exclude”). Patent Owner filed an Opposition to Petitioner’s
`Motion to Exclude. Paper 36 (“PO Opp.”). An oral hearing was held on
`October 25, 2018. Paper 37 (“Tr.”).
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons that follow, we determine Petitioner
`has not proven by a preponderance of the evidence that claims 1–6 and
`11–20 of the ’221 patent are unpatentable. See 35 U.S.C. § 316(e). We
`dismiss Patent Owner’s Contingent Motion to Amend and Petitioner’s
`Motion to Exclude as moot.
`
`I. BACKGROUND
`A. RELATED PROCEEDINGS
`Patent Owner has asserted infringement of the ’221 patent in Reebok
`International Ltd. v. TRB Acquisitions LLC, Case No. 3:16-cv-1618 (D.
`Oregon). Paper 4, 1; Pet. 76. The ’221 patent is one of a number of related
`issued patents some of which are also subject to pending petitions for inter
`partes review. See Paper 4, 1. The ’221 patent was also the subject of In the
`Matter of Certain Athletic Footwear, Inv. No. 337-TA-1018 (2016), (“the
`
`
`
`3
`
`
`
`IPR2017-01680
`Patent 8,505,221 B2
`
`previous ITC case”) in the United States International Trade Commission.
`Pet. 10; Paper 4, 1.
`
`B. THE ’221 PATENT
`The ’221 patent is directed to articles of footwear with a flexible
`upper portion and a sole composed of flexible material which can be rolled,
`folded, or collapsed onto itself to reduce the dimensions of the footwear.
`Ex. 1001, Abstract. Figure 3 is reproduced below:
`
`
`Figure 3 shows the outsole of an article of footwear of the preferred
`embodiment of the ’221 patent in an uncollapsed state. Id. at 2:37–38, 2:46–
`47. Sole 120 of Figure 3 has a plurality of flexure lines 301, which allow
`sole 120 to flex and curve. Id. at 5:4–5. “The flexible material of sole 120
`allows sole 120 to roll to some extent on its own, but the flexure lines 301
`divide the sole into a plurality of sole plates 320 which individually curve
`around the outside of shoe 100 when in a collapsed state.” Id. at 5:5–9.
`“FIG. 3 shows a larger flexure line 305 located diagonally across the width
`of sole 120 . . . The larger flexure line 305 provides additional flexibility.”
`Id. at 5:46–49. Various sole plates 320 are shown arrayed across the face of
`the exemplary outsole depicted by Figure 3, which also provides guidance
`
`
`
`4
`
`
`
`IPR2017-01680
`Patent 8,505,221 B2
`
`regarding the general position of the forefoot area 360, arch area 340, and
`heel area 380 of the outsole. Id. at 5:7–8, 5:67–6:4. Figure 4 is illustrated
`below:
`
`
`Figure 4 shows the article of footwear in a partially collapsed state. Id. at
`2:48–49, 5:10. In this configuration, the “[l]acing 108 and flexible upper
`110 are collapsed upon each other, such that flexible sole 120 envelopes the
`upper 110 and lacing 108.” Id. at 5:11–13. “As shoe 100 is rolled, each
`flexure line 301 allows sole plates 320 to move apart from each other around
`the outside of the collapsed shoe, as seen at flexure points 404 of FIG. 4,
`providing more flexibility in sole 120 and a more compact collapsed state
`for shoe 100.” Id. at 5:13–17.
`
`
`C. ILLUSTRATIVE CLAIM
`Claims 1 and 16, both article claims, are the only independent claims
`of the ’221 patent. Claims 2–15 each depend from claim 1. Claims 17–20
`each depend from claim 16. Claim 1 is illustrative of the subject matter in
`this proceeding, and is reproduced below.
`
`
`
`5
`
`
`
`IPR2017-01680
`Patent 8,505,221 B2
`
`
`1. An article of footwear comprising:
`an upper; and
`a flexible sole fixed to said upper and having a heel area, wherein
`said sole includes:
`a first and second flexure line that extends through at least a
`portion of a length of said sole along at least a portion of said
`heel area, wherein said second flexure line is disposed
`between said first flexure line and a medial side of said sole,
`wherein said first and second flexure lines divide said sole at the
`portion of said heel area into first, second and third sole plates,
`each of the first, second and third sole plates being undivided
`by a flexure line,
`wherein the first sole plate extends from a lateral side of said sole
`to said first flexure line,
`wherein the second sole plate extends from said first flexure line
`to said second flexure line, and
`wherein the third sole plate extends from said second flexure line
`to the medial side of said sole.
`Id. at 7:62–8:13.
`
`
`D. EVIDENCE RELIED UPON
`Petitioner relies upon the following prior art references.
`Ex. 1012
`Lucarelli
`
`US D266,797
`Nov. 9, 1982
`
`Ex. 1013
`Featherston
`US D378,241
`Mar. 4, 1997
`
`Ex. 1014
`Merceron
`
`US D397,546
`Sept. 1, 1998
`
`Ex. 1015
`Novy
`
`US D340,571
`Oct. 26, 1993
`
`Ex. 1016
`Byong-Ryol
`GB2113072 A
`Aug. 3, 1983
`
`Reebok Footwear Q4 2000 Catalog (“Reebok 2000”). Ex. 1009.
`Nike Men’s, Women’s, and Kid’s Holiday Footwear 1995 Catalog
`(“Nike H1995”). Ex. 1010.
`
`
`
`6
`
`
`
`IPR2017-01680
`Patent 8,505,221 B2
`
`
`Nike Footwear Spring 1997 Catalog (“Nike S1997”). Ex. 1011.
`Petitioner also relies upon the Declaration of David Ulan, dated June
`20, 2017 (“Ulan Decl.”). Ex. 1018. Petitioner further relies on the Second
`Declaration of David Ulan, dated August 22, 2018 (“Second Ulan Decl.”).
`Ex. 1019.
`Patent Owner relies on the Declaration of William McInnis
`(Ex. 2005), the Declaration of Dr. Darren Stefanyshyn in Support of Patent
`Owner’s Response (“First Stefanyshyn Decl.,” Ex. 2003), the Declaration of
`Dr. Darren Stefanyshyn in Support of Patent Owner’s Response (“Second
`Stefanyshyn Decl.,” Ex. 2011), the Declaration of Dr. Darren Stefanyshyn in
`Support of Patent Owner’s Motion to Amend (“Stefanyshyn Amend Decl.,”
`Ex. 2015), and the Declaration of Dr. Darren Stefanyshyn in Support of
`Patent Owner’s Reply in Support of its Motion to Amend (“Stefanyshyn
`Amend Reply Decl.,” Ex. 2028).
`E. INSTITUTED GROUNDS OF UNPATENTABILITY
`
`
`
`
`
`
`
`
`Reference(s)
`Featherston in view of Reebok
`2000, Nike H1995, or Nike S1997
`Merceron in view of Reebok 2000,
`Nike H1995, or Nike S1997
`Byong-Ryol in view of Reebok
`2000, Nike H1995, or Nike S1997
`Lucarelli in view of Reebok 2000,
`Nike H1995, or Nike S1997
`Novy in view of Reebok 2000,
`Nike H1995, or Nike S1997
`Reebok 2000
`Nike S1997
`
`Basis
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`Challenged Claims
`1–4 and 11–20
`1, 2, 4–6, 11–16, and
`18–20
`1, 2, 5, 6, and 11–15
`
`§ 103(a)
`
`1, 2, 5, 6, and 11–15
`
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`1, 2, 5, 6, and 11–15
`16 and 18–20
`16 and 18–20
`
`7
`
`
`
`IPR2017-01680
`Patent 8,505,221 B2
`
`
`II. ANALYSIS
`A. CLAIM CONSTRUCTION
`In an inter partes review filed before November 13, 20182, the Board
`construes claim terms in an unexpired patent according to the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. 37 C.F.R. § 42.100(b) (2016); Cuozzo Speed Techs., LLC v.
`Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard). Under that standard, and absent any
`special definitions, we give claim terms their ordinary and customary
`meaning, as they would be understood by one of ordinary skill in the art at
`the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`(Fed. Cir. 2007). Any special definitions for claim terms must be set forth
`with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`In the Petition, Petitioner proposes constructions for multiple claim
`terms. See Pet. 6–10. In the Institution Decision, we determined that only
`the term “flexure line” needs explicit claim constructions to resolve the
`issues before us. Inst. Dec. 6–10; see, e.g., Wellman, Inc. v. Eastman Chem.
`Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be
`construed ‘to the extent necessary to resolve the controversy.’”) (quotation
`omitted). Patent Owner agrees and states, “the term ‘flexure line’ is the only
`term the Board must construe in this proceeding.” PO Resp. 8.
`
`
`2 Changes to the Claim Construction Standard for Interpreting Claims in
`Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
`51,340 (Oct. 11, 2018) (to be codified in 37 C.F.R. pt. 42).
`
`
`
`8
`
`
`
`IPR2017-01680
`Patent 8,505,221 B2
`
`In the Petition, Petitioner proposed a construction of, “flexure line” as
`
`meaning “a line that divides the sole into a plurality of sole plates” because
`Patent Owner put forth this construction in the previous ITC investigation
`and this construction is consistent with the specification of the ’221 patent.
`Pet. 7–9 (citing Ex. 1001, 5:7–9). In the Preliminary Response, Patent
`Owner argued that Petitioner’s proposed construction was unreasonably
`broad because it does not account for the functionality of the flexure lines
`(i.e., bending or curving) disclosed in the ’221 patent and required by the
`ordinary and customary meaning of the word “flexure.” See Prelim. Resp.
`9–27. Patent Owner did not propose explicitly an alternative construction of
`“flexure line” but argued that any reasonable construction “must include the
`basic meaning of flexure—the functionality of bending or curving.” Id. at
`12 (citing Ex. 2001, dictionary definition of flexure as “turn, bend, fold”).
`In our Institution Decision, we determined that Petitioner’s proposed
`construction was unreasonably broad and after considering the ordinary and
`customary meaning of “flexure,” the plain language of the claims, and the
`disclosure of the ’221 patent, we determined that:
`the
`light of
`in
`[T]he broadest reasonable construction,
`specification of the ’221 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.
`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
`the sole of the shoe to substantially bend or curve, which far exceeds the
`inherent amount of flexibility present in shoes incorporating flexible
`
`
`
`9
`
`
`
`IPR2017-01680
`Patent 8,505,221 B2
`
`materials, such that the shoe can at least be folded.” PO Resp. 10; see also
`id. at 7–17, PO Sur-Reply 2–7. According to Patent Owner, “fold” means to
`bend over or double up so that one part lies on another part and a shoe is
`folded similarly to what is shown in Figure 4 of the ’221 patent. PO Sur-
`Reply 7–8 (citing Ex. 2027, 38:20–39:13); Tr. 38:7–17. Patent Owner
`proposes that “flexure line” should be further narrowed to mean “a groove in
`a shoe sole that allows the sole to substantially bend or curve enough for the
`shoe to be folded and divides the sole into a plurality of sole plates.” PO
`Resp. 10 (emphasis added). According to Patent Owner, “[a]ny broader
`construction of the term ‘flexure line’ is disavowed.” Id. at 13.
`
`Patent Owner does not persuade us to modify our construction of
`“flexure line” to require the degree of bending or curving be substantial
`enough for the shoe to be folded. The plain language of the claims does not
`explicitly require shoes that fold or flexure lines that allow for substantial
`bending or curving of a sole so that a shoe can fold. For example,
`independent claim 1 recites an article of footwear (i.e., a shoe) comprising a
`sole having “a first and second flexure lines.” See Ex. 1001, 7:60–8:15. The
`ordinary and customary meaning of “flexure” requires bending or curving
`but does not require substantial bending or curving of a sole so that a shoe
`can fold. See Ex. 2001, 472 (dictionary definition of “flexure”). Claim 1
`does not explicitly recite the word “fold” or otherwise require the article of
`footwear to fold. In contrast to claim 1, dependent claim 7 explicitly require
`the sole to have a natural state and a collapsed state, where the sole is rolled
`onto itself with the forefoot area disposed adjacent, the heal area and the sole
`enveloping the upper. Id. at 9:54–63. Thus, nothing in the plain language of
`
`
`
`10
`
`
`
`IPR2017-01680
`Patent 8,505,221 B2
`
`the claims or the ordinary and customary meaning of “flexure line” requires
`substantial bending or curving of a sole so that a shoe can fold.
`Our construction of “flexure line” is consistent with the ’221 patent’s
`specification, which discloses and teaches lateral flexure lines 301, diagonal
`flexure line 305, and unnumbered longitudinal flexure lines functioning to
`provide flexibility. The ’221 patent depicts and describes a number of
`flexure lines in the preferred embodiments. A preferred embodiment is
`shown in Fig. 3 of the ’221 patent, and Fig. 3, with Petitioner’s annotations,
`is reproduced below.
`
`
`Annotated Figure 3 shows longitudinal flexure lines (unnumbered) in red,
`lateral flexure lines 301 in green, and larger diagonal flexure line 305 in
`yellow. The ’221 patent describes one function of lateral flexure lines 301,
`in conjunction with other elements, such as a flexible upper and a flexible
`sole material, is allowing the shoe to fold. See e.g. Ex. 1001, Abstract, 2:22–
`25, 3:18–20, 4:36–54, 5:4–9. The ’221 patent, however, describes that
`lateral flexure lines 301 also function to allow the sole to flex. For example,
`the ’221 patent states: “As seen in FIG. 3, sole 120 has a plurality of flexure
`
`
`
`11
`
`
`
`IPR2017-01680
`Patent 8,505,221 B2
`
`lines 301, which allow sole 120 to flex and curve.” Id. at 5:4–5 (emphasis
`added). Further, the ’221 patent’s Figures. 4 and 5 depict folded or
`collapsed shoes where a number of flexure lines 301 do not appear to bend
`or curve, such as flexure line 301 closest to the toes in Figure 4. See id. at
`5:17–19 (describing only sole plates 320 at flexure points 404 as being
`affected); Pet. Reply 6.
`Likewise, the ’221 patent describes larger flexure line 305 providing
`flexibility for a foot in motion, as well as allowing the forefoot area to
`collapse even deeper. The ’221 patent states:
`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.
`Id. at 5:46–53 (emphasis added).
`The ’221 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
`claimed in the ’221 patent would be of sufficient depth to permit such
`substantial bending or curving in the longitudinal direction.” PO Sur-
`Reply 7 (quoting Ex. 2011 ¶ 73). Dr. Stefanyshyn’s testimony is
`unpersuasive because it relies upon a statement from the ’221 patent
`concerning lateral flexure lines 301 and not the unnumbered longitudinal
`flexure lines. See Ex. 2011 ¶ 73. The ’221 patent does not describe the shoe
`
`
`
`12
`
`
`
`IPR2017-01680
`Patent 8,505,221 B2
`
`bending, curving, or folding in the longitudinal direction. See generally
`Ex. 1001. In any event, other testimony by Dr. Stefanyshyn indicates that
`the longitudinal flexure lines function to provide flexibility on uneven
`surfaces. See Pet. Reply 6 (citing Ex. 2003 ¶¶ 72–73); see also Ex. 2011
`¶ 70 (“I agree that flexure lines allow the sole to bend or curve . . . .”).
`
`Patent Owner argues that the ’221 patent “expressly limits flexure
`lines to lines that permit a shoe to fold by stating that “‘[s]ole 120 may
`comprise one flexure line 301 or more, provided that such flexure line(s)
`301 allow shoe 100 to be folded.’” PO Sur-Reply 3 (quoting Ex. 1001,
`5:32–36, emphasis added in quotation); see also id. at 3–7. According to
`Patent Owner, “[t]his unequivocal statement conveys to a POSITA that a
`flexure line must allow the sole to substantially bend or curve enough for the
`shoe to be folded.” PO Resp. 13 (citing Ex. 2011 ¶ 713).
`“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
`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.’”
`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
`
`
`3 The Patent Owner’s Response citation to ¶ 70 of Exhibit 2011 appears to
`be a typographical error. The citations should have been to ¶ 71.
`
`
`
`13
`
`
`
`IPR2017-01680
`Patent 8,505,221 B2
`
`disavowal.” Hill-Rom Servs., 755 F.3d at 1371. Otherwise, we must be
`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).
`
`Patent Owner relies upon the following passage of the ’221 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
`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, 5:32–42; PO Resp. 12–13; Pet. Sur-Reply 3. The passage, when
`read in context does not expressly limits flexure lines to lines that permit a
`shoe to fold. As can be seen 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 ’221 patent related to flexibility. See Ex. 2011
`¶ 71. We are not persuaded that this passage of the ’221 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.
`
`
`
`14
`
`
`
`IPR2017-01680
`Patent 8,505,221 B2
`
`Patent Owner also argues that our construction is unreasonable broad
`
`because it encompasses prior art shoes expressly distinguished in the ’221
`patent. See PO Resp. 1–15 (citing Ex. 1001, 5:5–9); PO Sur-Reply 3–4
`(citing Ex. 1001, 1:43–51). Patent Owner’s argument is unpersuasive. The
`’221 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, 1:43–51, 5:5–9. The claims of the ’221
`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 ’221 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 ’221 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. 6 n.2 (citing Ex. 1018 ¶ 13). Petitioner also contends
`that a “POSITA would typically have a broad understanding of the product
`
`
`
`15
`
`
`
`IPR2017-01680
`Patent 8,505,221 B2
`
`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 6–7 n.2 (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
`designs used in the shoemaking industry.” Id. at 7 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 that “[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 experience with 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
`
`
`
`16
`
`
`
`IPR2017-01680
`Patent 8,505,221 B2
`
`‘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. ASSERTED OBVIOUSNESS OVER FEATHERSTON IN VIEW
`OF REEBOK 2000, NIKE H1995, OR NIKE S1997
`Petitioner contends that claims 1–4 and 11–20 would have been
`unpatentable under 35 U.S.C. § 103(a) as obvious over Featherston in view
`of Reebok 2000, Nike H1995, or Nike S1997. Pet. 20–41. To support its
`contention, Petitioner provides a detailed mapping of limitations of claims
`1–4 and 11–20 to structures described by Featherston in view of Reebok
`2000, Nike H1995, or Nike S1997. Id.
`1. Featherston (Ex. 1013)
`Featherston, titled “Shoe Sole,” is a design patent related to a design
`for a shoe sole. Ex. 1013, at [54], [57]. Figure 1 of Featherston is
`reproduced below:
`
`Figure 1 shows the shoe sole design of Featherston.
`Figure 2 of Featherston is reproduced below:
`
`
`
`
`
`17
`
`
`
`IPR2017-01680
`Patent 8,505,221 B2
`
`
`
`
`
`
` Figure 2 of Featherston illustrates the claimed sole design
`incorporated into a shoe.
`2. Reebok 2000 (Ex. 1009)
`Reebok 2000 is a footwear catalog that illustrates various shoes and
`accessories then 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 that
`feature a leather or mesh upper and an ethylene-vinyl acetate “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”).
`3. Nike H1995 (Ex. 1010)
`Nike H1995 is a catalog that illustrates various shoes and accessories
`then available for purchase from Nike. See Ex. 1010. Nike H1995 identifies
`various materials suitable for construction of casual and athletic shoes, such
`as the use of rubber, EVA, or Phylon to construct the midsole or outsole of a
`casual or athletic shoe. See id. at 7, 9, 43, 69, 72, 96. Nike H1995 discloses
`
`
`
`18
`
`
`
`IPR2017-01680
`Patent 8,505,221 B2
`
`that an athletic shoe may include a leather or mesh upper and a sole
`constructed from a different flexible material such as EVA, rubber, or
`Phylon. See id. at 13 (the “Decade” shoe has a mesh and leather upper); id.
`at 16 (the “Air Ascend” shoe has a Phylon midsole); id. at 75 (the “Duration
`A.S.” shoe has a leather upper).
`4. Nike S1997 (Ex. 1011)
`Nike S1997 is a catalog that illustrates various shoes and accessories
`then available for purchase from Nike. See Ex. 1011. Nike S1997 discloses
`various materials that may be used to construct an athletic sneaker. For
`example, Nike S1997 discloses that an athletic sneaker may be constructed
`from a leather and/or mesh upper and a Phylon sole. See id. at 26 (Phylon is
`a spongy foam material derived from EVA).
`5. Analysis
`With respect to the independent claims, Petitioner relies on
`Featherston for all of the claim limitations except for the flexible sole. See
`Pet. 22–28, 36–38. For the flexible sole, Petitioner relies on the various shoe
`catalogs—Reebok 2000, Nike H1995, and Nike S1997—for their teachings
`of the flexible materials that can be used for athletic shoe construction. See
`id. In particular, Petitioner relies on an annotated version of Figure 1 of
`Featherston to demonstrate that Featherston describes the claimed “flexure
`lines.” See id. Petitioner’s annotated version of Figure 1 is reproduced
`below.
`
`
`
`19
`
`
`
`IPR2017-01680
`Patent 8,505,221 B2
`
`
`
`
`Id. at 20. The annotated Figure 1 of Featherston labels the forefoot, arch,
`and heel areas of the shoe sole of Featherston and the lines that Petitioner
`asserts are the claimed flexure lines. Id.
`Patent Owner argues that Petitioner, relying on its faulty ornamental
`construction of “flexure line,” only provides an annotated picture of
`Featherston to account for the independent claims’ recitation of the claimed
`“flexure line.” PO Resp. 35–37. Patent Owner asserts that the Petition
`provides no explanation, analysis, or argument, other than superimposed red
`lines (shown in the annotated version of Figure 1 above), as to why the
`delineated structure discloses the functional claim limitation of “flexure
`line” as recited by claim 1 under any reasonable construction of the term. Id.
`at 36. Patent Owner submits that Petitioner has failed to carry its burden of
`showing that the challenged claims would have been obvious in view of the
`combinations based on Featherston. Id. at 37–38.
`We agree with Patent Owner that Petitioner has failed to adequately
`account 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.”
`
`
`
`20
`
`
`
`IPR2017-01680
`Patent 8,505,221 B2
`
`See supra Section II.A. As Petitioner concedes, Featherston is a design
`patent and is completely silent as to the functional characteristics of the lines
`shown on its shoe sole design. See Pet. 21 (“Featherston is silent as to the
`flexibility of the sole featured on the disclosed shoe design.”). Nor does
`Petitioner’s declarant, Mr. Ulan, in the First Declaration, provide any
`analysis as to the functional characteristics of the features of Featherston that
`he contends teach or suggest the “flexure line” limitation. See Ex. 1018
`¶¶ 36, 52–54. In its Reply, Petitioner argues that
`While it is true that Petitioner’s analysis applied an analysis
`which did not account for the bending or flexing requirement
`added to the Board’s construction of the term “flexure line,”
`Petitioner’s proposed ground leads
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
