Trials@uspto.gov
`571.272.7822
`
`Paper No. 37
`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 IPR2017-01689
`Patent 8,020,320 B2
`____________
`
`
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`571.272.7822
`
`Paper No. 37
`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 IPR2017-01689
`Patent 8,020,320 B2
`____________
`
`
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-01689
`Patent 8,020,320 B2
`
`
`Elite Performance Footwear, LLC (“Petitioner”) filed a Petition
`
`requesting an inter partes review of claims 1–20 of U.S. Patent
`
`No. 8,020,320 B2 (Ex. 1001, “the ’320 patent”). Paper 2 (“Petition” or
`
`“Pet.”). Reebok International Limited (“Patent Owner”) filed a Patent
`
`Owner 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 1–20, and instituted an inter partes review of these
`
`claims on one of a number of asserted grounds of unpatentability. Paper 7
`
`(“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 less 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 on all grounds. See April 26, 2018, Guidance on the Impact of SAS
`
`on AIA Trial Proceedings.1 Accordingly, on May 1, 2018, we issued an
`
`order instituting on all claims and all grounds of unpatentability asserted in
`
`the Petition that we had not originally instituted review on. See Paper 16.
`
`Patent Owner filed a Patent Owner Response. Paper 19 (“PO Resp.”).
`
`Petitioner filed a Reply to Patent Owner’s Response. Paper 21 (“Pet.
`
`Reply”). Pursuant to our authorization, Patent Owner also filed a Sur-Reply.
`
`Paper 26 (“Sur-Reply”).
`
`
`1 Available at https://www.uspto.gov/patents-application-process/patent-
`trial-and-appeal-board/trials/guidance-impact-sas-aia-trial.
`
`
`
`2
`
`
`
`IPR2017-01689
`Patent 8,020,320 B2
`
`
`Patent Owner filed a Contingent Motion to Amend. Paper 20 (“PO
`
`Mot. Amend”). Petitioner filed an opposition to Patent Owner’s Motion to
`
`Amend. Paper 22. Patent Owner filed a reply to Petitioner’s Opposition to
`
`the Motion to Amend. Paper 27. Petitioner filed a Sur-Reply to Patent
`
`Owner’s Motion to Amend. Paper 31.
`
`Petitioner also filed a Motion to Exclude certain evidence. Paper 33.
`
`Patent Owner filed an Opposition to Petitioner’s Motion to Exclude. Paper
`
`35.
`
`An oral hearing was held on October 25, 2018. Paper 36 (“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 1–20 of the
`
`’320 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 ’320 patent in Reebok
`
`International Ltd. v. TRB Acquisitions LLC, Case No. 16-cv-1618 (D.
`
`Oregon). Paper 4, 1; Pet. 70. The ’320 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 ’320 patent was also the subject of In the
`
`Matter of Certain Athletic Footwear, Inv. No. 337-TA-1018 (2016), in the
`
`United States International Trade Commission. Pet. 1; Paper 4, 1.
`
`
`
`
`
`3
`
`
`
`IPR2017-01689
`Patent 8,020,320 B2
`
`
`B. THE ’320 PATENT
`
`The ’320 patent is titled “Collapsible Shoe” and issued on September
`
`20, 2011. Ex. 1001, (45), (54). The ’320 patent discloses a shoe that has an
`
`upper and a sole formed of a lightweight, flexible material. Id. at 2:12–17.
`
`“The flexible sole and upper allows the article of footwear to be rolled,
`
`folded or collapsed on itself so that the article of footwear may be easily
`
`stored, packed or distributed.” Id. at 2:19–22. Figure 3 of the ’320 patent is
`
`reproduced below.
`
`
`
`Figure 3 depicts sole 102 having flexure lines 301, 305 and sole plates 320.
`
`Id. at 5:29–32. Flexure lines 301, 305 “allow sole [102] to flex and curve,”
`
`“allow shoe 100 to be folded,” and “provide additional comfort while the
`
`foot is in motion.” Id. at 4:66–67, 5:29–30, 5:46. “[S]ole [102] has a larger
`
`portion 360 generally located in forefoot area 106, a narrower portion 340
`
`generally located in arch area 104 . . . , and a mid-sized portion 380
`
`generally located in heel area 102.” Id. at 5:63–67.
`
`
`
`The sole “is preferably made of a flexible, lightweight and durable
`
`foam material,” for example, “a mixture of ethyl vinyl acetate (EVA), rubber
`
`
`
`4
`
`
`
`IPR2017-01689
`Patent 8,020,320 B2
`
`and other compounds, such as the 3D Ultralite material.” Id. at 4:31–35.
`
`The upper “may be made of any suitable, breathable and stretchable
`
`materials, such as spandex, cotton, or the like.” Id. at 3:24–26.
`
`Figure 4 of the ’320 patent is reproduced below.
`
`
`Figure 4 depicts the article of footwear in a partially collapsed state. Id. at
`
`2:45–46, 5:12–13. 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 5:6–8. “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 5:8–12.
`
`
`
`C. ILLUSTRATIVE CLAIM
`
`Claims 1 and 16, both article claims, are the only independent claims
`
`of the ’320 patent. Claims 2–15 each depend from claim 1, and claims
`
`17–20 depend from claim 16. Claim 1 is illustrative of the subject matter in
`
`this proceeding, and is reproduced below.
`
`
`
`5
`
`
`
`IPR2017-01689
`Patent 8,020,320 B2
`
`
`1. An article of footwear comprising:
`
`an upper adapted to substantially cover a user’s foot and
`comprising a first flexible material; and
`
`a flexible sole fixed to said upper, wherein said sole includes:
`
`a second flexible material different from said first flexible
`material, wherein said second flexible material is a
`foam material, and
`
`a plurality of laterally extending flexure lines that extend
`across a width of said sole so as to divide said sole into
`a plurality of sole plates that flex with respect to one
`another,
`
`wherein said sole includes an arch area, wherein at least
`one of said laterally extending flexure lines divide said
`sole at said arch area, the at least one of said laterally
`extending flexure lines defining two sole plates at said
`arch area which flex with respect to one another,
`wherein at least one of said two sole plates extends the
`width of said sole and is undivided by a flexure line,
`wherein the one of said two sole plates extends from a
`lateral side of said sole to a medial side of said sole.
`
`Id. at 7:60–8:15.
`
`
`
`D. ASSERTED GROUNDS AND EVIDENCE
`
`Petitioner asserts the following grounds of unpatentability:
`
`No. Ground Claims Prior Art
`
`1
`
`§ 103(a) 1–20
`
`Le2 and Reebok 20003, Nike H19954, or Nike
`S19975
`
`
`2 U.S. Patent No. Des. 294, 537 (issued Mar. 8, 1988). Ex. 1012.
`3 Reebok Footwear Q4 Catalog. Ex. 1009.
`4 Nike Men’s, Women’s, and Kid’s Holiday Footwear 1995 Catalog. Ex.
`1010.
`5 Nike Footwear Spring 1997 Catalog. Ex. 1011.
`
`
`
`6
`
`
`
`IPR2017-01689
`Patent 8,020,320 B2
`
`
`No. Ground Claims Prior Art
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`§ 103(a) 1–20 Yonkers6 and Reebok 2000, Nike H1995, or
`Nike S1997
`§ 103(a) 1–20 Merceron ’2417 and Reebok 2000, Nike H1995,
`or Nike S1997
`§ 103(a) 1–20 Merceron ’5468 and Reebok 2000, Nike H1995,
`or Nike S1997
`§ 103(a) 1–20 Gregg9 and Reebok 2000, Nike H1995, or Nike
`S1997
`Sink10 and Reebok 2000, Nike H1995, or Nike
`S1997
`Sironi11 and Reebok 2000, Nike H1995, or Nike
`S1997
`
`§ 103(a) 1–20
`
`§ 103(a) 1–20
`
`Petitioner also relies upon the Declaration of David Ulan, dated June
`
`20, 2017. Ex. 1020. Petitioner further relies on the Second Declaration of
`
`David Ulan, dated August 22, 2018. Ex. 1021.
`
`Patent Owner relies on the Declaration of William McInnis
`
`(Ex. 2005), the first Declaration of Dr. Darren Stefanyshyn in Support of
`
`Patent Owner’s Response (Ex. 2003), the second Declaration of Dr. Darren
`
`Stefanyshyn in Support of Patent Owner’s Response (Ex. 2011), the first
`
`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
`
`Declaration of Dr. Darren Stefanyshyn in Support of Patent Owner’s Reply
`
`in Support of its Motion to Amend (Ex. 2028).
`
`
`6 U.S. Patent No. 4,364,190 (issued Dec. 21, 1982). Ex. 1013.
`7 U.S. Patent No. Des. 388,241 (issued Dec. 30, 1997). Ex. 1014.
`8 U.S. Patent No. Des. 397,546 (issued Sep. 1, 1998). Ex. 1015.
`9 U.S. Patent No. Des 133, 176 (issued July 28, 1942). Ex. 1016.
`10 U.S. Patent No. 4,241,524 (issued Dec. 30, 1980). Ex. 1017.
`11 U.S. Patent No. Des. 287, 185 (issued Dec. 16, 1986). Ex. 1018.
`
`
`
`7
`
`
`
`IPR2017-01689
`Patent 8,020,320 B2
`
`
`
`Both Petitioner and Patent Owner cited to versions the first and
`
`second Declarations of Dr. Darren Stefanyshyn in Support of Patent
`
`Owner’s Response from related case IPR2017-01680. Those declarations
`
`contain additional testimony and different paragraph numbering than
`
`versions of Dr. Stefanyshyn’s Declarations of record in this proceeding. For
`
`example, Patent Owner cites to Exhibit 2011 ¶ 73 for the location of quoted
`
`testimony of Dr. Stefanyshyn. See PO Sur-Reply 8. Exhibit 2011 ¶ 73 in
`
`this record, however, does not contain the quoted testimony. The quoted
`
`testimony, however, appears in ¶ 73 of Exhibit 2011 in related IPR2017-
`
`01680. As another example, Petitioner cites to pages 41 to 42 of Exhibit
`
`2003 for the location of the relied upon evidence. See Pet. Reply 6. Exhibit
`
`2003’s pages 41 to 42, however, does not contain the relied upon evidence.
`
`The relied upon evidence, however, appears in ¶¶ 72, 73 (i.e., page 41) of
`
`Exhibit 2003 in related IPR2017-001680. In the interest of justice and
`
`judicial efficiency, we enter versions the first and second Declaration of Dr.
`
`Darren Stefanyshyn in Support of Patent Owner’s Response from related
`
`case IPR2017-01680 into the record here as Exhibits 3002 and 3001,
`
`respectively.
`
`
`
`II. ANALYSIS
`
`A. CLAIM CONSTRUCTION
`
`In an inter partes review filed before November 13, 201812, the Board
`
`construes claim terms in an unexpired patent according to the broadest
`
`
`12 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).
`
`
`
`8
`
`
`
`IPR2017-01689
`Patent 8,020,320 B2
`
`reasonable construction in light of the specification of the patent in which
`
`they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136
`
`S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable
`
`interpretation approach). 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
`
`elements. See Pet. 7–11. In the Institution Decision, we determined that
`
`only the term “flexure line” needs explicit claim constructions in order to
`
`resolve the issues before us. 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, “[t]he term ‘flexure line’ is the
`
`only term the Board must construe in this proceeding.” PO Resp. 8.
`
`
`
`In the Petition, Petitioner proposed, “flexure line” means “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 ’320 patent. Pet. 8–9
`
`(citing Ex. 1001, 5:2–3). 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 ’320 patent and required by the ordinary and
`
`
`
`9
`
`
`
`IPR2017-01689
`Patent 8,020,320 B2
`
`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 13
`
`(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 ’320 patent, we determined that:
`
`the
`light of
`in
`[T]he broadest reasonable construction,
`specification of the ’320 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. 9.
`
`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
`
`materials, such that the shoe can at least be folded.” PO Resp. 9; see also id.
`
`at 6–16, PO Sur-Reply 2–8. 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 if similar to what is shown in Figure 4 of the ’320 patent. PO Sur-
`
`Reply 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
`
`
`
`10
`
`
`
`IPR2017-01689
`Patent 8,020,320 B2
`
`Resp. 9–10 (emphasis added). According to Patent Owner, “[a]ny broader
`
`construction of the term ‘flexure line’ is disavowed.” Id. at 12.
`
`
`
`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 challenged
`
`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 flexible sole having “a plurality of laterally extending flexure
`
`lines” and “at least one of said laterally extending flexure lines defining two
`
`sole plates at said arch area which flex with respect to one another.” 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. Indeed, consistent with
`
`our construction, as opposed to Patent Owner’s, claim 1 explicitly requires
`
`the sole plates defined by the flexure line to “flex.” Id. This is in contrast to
`
`dependent claims 10 and 15. Claims 10 and 15 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 8:34–38, 8:54–58. Thus, 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 so that a shoe can fold.
`
`Our construction of “flexure line” is consistent with the ’320 patent’s
`
`specification, which disclose and teaches lateral flexure lines 301, diagonal
`
`
`
`11
`
`
`
`IPR2017-01689
`Patent 8,020,320 B2
`
`flexure line 305, and unnumbered longitudinal flexure lines functioning to
`
`provide flexibility. The ’320 patent depicts and describes a number of
`
`flexure lines in the preferred embodiments. A preferred embodiment is
`
`shown in Fig. 3 of the ’320 patent, and Fig. 3, with 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 ’320 patent describes one function of the lateral flexure lines
`
`301, in conjunction with other elements, such as a flexible upper and a
`
`flexible sole material, as allowing the shoe to fold. See e.g. Ex. 1001,
`
`Abstract, 2:19–21, 3:15–17, 4:31–51, 4:67–68. The ’320 patent, however,
`
`describes that lateral flexure lines 301 also function to allow the sole to flex.
`
`For example, the ’320 patent states: “As seen in FIG. 3, sole 120 has a
`
`plurality of flexure lines 301, which allow sole 120 to flex and curve.” Id. at
`
`4:66–67 (emphasis added). Further, the ’320 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
`
`
`
`12
`
`
`
`IPR2017-01689
`Patent 8,020,320 B2
`
`id. at 5:12–15 (describing only sole plates 320 at flexure points 404 as being
`
`affected); Pet. Reply 6.
`
`Likewise, the ’320 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 ’320 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 5:42–49 (emphasis added).
`
`The ’320 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 ’320 patent would be of sufficient depth to permit such
`
`substantial bending or curving in the longitudinal direction.” PO Sur-Reply
`
`7–8 (quoting Ex. 3001 ¶ 73). Dr. Stefanyshyn’s testimony is unpersuasive
`
`because it relies upon a statement from the ’320 patent concerning lateral
`
`flexure lines 301 and not the unnumbered longitudinal flexure lines. See
`
`Ex. 3001 ¶ 73. The ’320 patent does not describe the shoe 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 function to provide flexibility on uneven surfaces. See Pet. Reply 6
`
`
`
`13
`
`
`
`IPR2017-01689
`Patent 8,020,320 B2
`
`(citing Ex. 3002 ¶¶ 72–73); see also Ex. 3001 ¶ 70 (“I agree that flexure
`
`lines allow the sole to bend or curve . . . .”).
`
`
`
`Patent Owner argues that the ’320 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,
`
`5:28–30, emphasis added in quotation); see also id. at 3–5. 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. 12 (citing Ex. 3001 ¶ 70).
`
`“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 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).
`
`
`
`14
`
`
`
`IPR2017-01689
`Patent 8,020,320 B2
`
`
`
`Patent Owner relies upon the following passage of the ’320 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, 5:28–38; PO Resp. 12; Pet. Sur-Reply 3. When read in context,
`
`however, the passage does not expressly limit 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 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 disclosure of the ’320 patent related to
`
`flexibility. See Ex. 3001 ¶ 70. We are not persuaded that this passage of the
`
`’320 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 ’320
`
`patent. See PO Resp. 1–13 (citing Ex. 1001, 4:67–5:4); PO Sur-Reply 4
`
`(citing Ex. 1001, 1:40–48). Patent Owner’s argument is unpersuasive. The
`
`
`
`15
`
`
`
`IPR2017-01689
`Patent 8,020,320 B2
`
`’320 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, 1:40–48, 4:67–5:4. The claims of the ’320
`
`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 ’320 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 ’320 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. 7 n.2 (citing Ex. 1020 ¶ 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. (citing Ex. 1020 ¶ 13). Petitioner further
`
`
`
`16
`
`
`
`IPR2017-01689
`Patent 8,020,320 B2
`
`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. (citing Ex. 1020 ¶ 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.
`
`
`
`17
`
`
`
`IPR2017-01689
`Patent 8,020,320 B2
`
`
`C. GROUNDS 1 AND 3–7
`
`Petitioner contends that claims 1–20 are unpatentable as obvious
`
`based on the combinations of Le in view of Reebok 2000, Nike, H1995, or
`
`Nike S1997, Merceron ’241 in view of Reebok 2000, Nike H1995, or Nike
`
`S1997 and Merceron ’546 in view of Reebok 2000, Nike H1995, or Nike
`
`S1997, Gregg in view of Reebok 2000, Nike H1995, or Nike S1997, Sink in
`
`view of Reebok 2000, Nike H1995, or Nike S1997, and Sironi in view of
`
`Reebok 2000, Nike H1995, or Nike S1997. Pet. 29–41, 54–69. Le,
`
`Merceron ’241, Merceron ’546, Gregg, and Sironi are all design patents and
`
`include no discussion or disclosure of the purpose or function of the lines
`
`identified by Petitioner as the claimed “flexure lines.” See id.
`
`Petitioner’s analysis for the Merceron ’241 ground is representative.
`
`See id. at 54–57. Petitioner’s analysis for this ground consists of a drawing
`
`annotated with what it contends are lateral “flexure lines,” and the statement
`
`The combination of Merceron ’241 and Reebok
`2000, Nike H1995, or Nike S1997 renders all of the
`claims in the ’320 Patent obvious. See Merceron
`’241, Ex. 1014 at Figs. 2 and 4, which illustrate a
`plurality of lateral flexure lines which span the arch
`area, defining multiple sole plates which span the
`entirety of the width of the shoe in this area and
`which would be capable of flexing independent of
`each other if the design were featured on a sole
`constructed from a flexible material. Merceron
`’241 therefore discloses a shoe sole having an array
`of flexure lines and sole plates as required by the
`independent claims of the ’320 Patent.
`
`Id. at 56–57.
`
`
`
`18
`
`
`
`IPR2017-01689
`Patent 8,020,320 B2
`
`
`Petitioner offers a similar analysis for the Le, Merceron ’546, Gregg,
`
`Sink, and Sironi-based grounds. See id. at 57–63, 65–69. In its Reply,
`
`Petitioner states
`
`Patent Owner’s cursory arguments regarding
`Grounds 1 and 3-5 do not overcome the prima facie
`case set forth in the Petition. As there is no
`substance to Patent Owner’s arguments regarding
`these grounds, the Board should affirm for the
`reasons set forth in the Petition.
`
`Pet. Reply 14.
`
`However, Petitioner’s analysis fails entirely to articulate why these
`
`design patents disclose flexure lines under our construction of that term.
`
`The references themselves either consist only of drawings with no
`
`description of the function or purpose of the lines identified by Petitioner as
`
`the claimed “flexure lines” or Petitioner provides insufficient citations and
`
`explanation for the particular reference. Moreover, Petitioner’s case for
`
`these grounds—particularly, as it relates to “flexure lines”—consists entirely
`
`of conclusory statements. “To satisfy its burden of proving obviousness, a
`
`petitioner cannot employ mere conclusory statements.” In re Magnum Oil
`
`Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Instead, “[t]he
`
`petitioner must instead articulate specific reasoning, based on evidence of
`
`record, to support the legal conclusion of obviousness.” Id. (citing KSR Int’l
`
`Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). We find that the Petition’s
`
`presentation of the grounds based on Le, Merceron ’241, Merceron ’546,
`
`Gregg, Sink, and Sironi consist entirely of conclusory statements devoid of
`
`any analysis. In particular, there is no evidence cited in support of these
`
`grounds that would show that Petitioner has established that these references
`
`teach or suggest the claimed flexure lines, under our construction of that
`
`
`
`19
`
`
`
`IPR2017-01689
`Patent 8,020,320 B2
`
`term. Therefore, we conclude that Petitioner has failed to show by a
`
`preponderance of the evidence that claims 1–20 are unpatentable as obvious
`
`based on the combinations of Le in view of Reebok
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
