Paper 7
`Trials@uspto.gov
`571-272-7822
` Date Entered: January 12, 2018
`
`
`
`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.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
` Date Entered: January 12, 2018
`
`
`
`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.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-01689
`Patent 8,020,320 B2
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`I. INTRODUCTION
`
`
`
`
`
`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”) under 35 U.S.C. §§ 311–
`
`319. Paper 2 (“Pet.”). Reebok International Limited. (“Patent Owner”) filed
`
`a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`
`Section 314(a) of Title 35 of the United States Code provides that an
`
`inter partes review may not be instituted “unless . . . the information
`
`presented in the petition . . . shows that there is a reasonable likelihood that
`
`the petitioner would prevail with respect to at least 1 of the claims
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`challenged in the petition.” 35 U.S.C. § 314(a). We determine that the
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`Petition shows a reasonable likelihood that Petitioner would prevail with
`
`respect to at least one of the challenged claims. We institute an inter partes
`
`review of claims 1–20 of the ’320 patent.
`
`We base our findings and conclusions at this stage of the proceeding on
`
`the evidentiary record developed thus far. This is not a final decision as to the
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`patentability of claims for which inter partes review is instituted. We will
`
`base our final decision on the record as fully developed during trial.
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`
`
`A. Related Proceedings
`
`The parties indicate that the ’320 patent is the subject of Reebok
`
`International LTD v. TRB Acquisitions LLC, Case No. 3:16-cv-01618-SI in
`
`the United States District Court for the District of Oregon. Pet. 70; Paper 4,
`
`1. The ’320 patent was also the subject In the Matter of Certain Athletic
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`Footwear, Inv. No. 337-TA-1018 (2016) (“the previous ITC case”) in the
`
`United States International Trade Commission. Pet. 1.
`
`2
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`Patent 8,020,320 B2
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`
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`U.S. Patent No. 7,637,035 and U.S. Patent No. 8,505,221 are related
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`to the ’320 patent and are the subject of IPR2017-01676 and IPR2017-
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`001680, respectively. Paper 4, 1.
`
`
`
`B. The ’320 Patent
`
`
`
`The ’320 patent is titled “Collapsible Shoe” and issued on September
`
`20, 2011. Ex. 1001, (45), (54). The ’320 patent issued from an application
`
`that claims priority to an application filed on July 18, 2002. Id. at (63). The
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`’320 patent discloses a shoe that has an upper and a sole formed of a
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`lightweight, flexible material. Id. at 2:12–17. “The flexible sole and upper
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`allows the article of footwear to be rolled, folded or collapsed on itself so
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`that the article of footwear may be easily stored, packed or distributed.” Id.
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`at 2:19–22. Figure 3 of the ’320 patent is reproduced below.
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`
`
`
`
`
`
`3
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`Figure 3 depicts sole 102 having flexure lines 301, 305 and sole plates 320.
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`
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`Id. at 5:29–32. Flexure lines 301, 305 “allow sole [102] to flex and curve,”
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`“allow shoe 100 to be folded,” and “provide additional comfort while the
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`foot is in motion.” Id. at 4:66–67, 5:29–30, 5:46. “[S]ole [102] has a larger
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`portion 360 generally located in forefoot area 106, a narrower portion 340
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`generally located in arch area 104 . . . , and a mid-sized portion 380
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`generally located in heel area 102.” Id. at 5:63–67.
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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 4:31–35.
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`The upper “may be made of any suitable, breathable and stretchable
`
`materials, such as spandex, cotton, or the like.” Id. at 3:24–26.
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`
`
`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–
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`20 depend from claim 16. Claim 1 is illustrative and is reproduced below.
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`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
`
`4
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`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.
`
`
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability:
`
`No. Ground Claims
`
`Prior Art
`
`1
`
`2
`
`3
`
`4
`
`5
`
`§ 103(a) 1–20
`
`Le1 and Reebok 20002, Nike H19953, or Nike
`S19974
`§ 103(a) 1–20 Yonkers5 and Reebok 2000, Nike H1995, or
`Nike S1997
`§ 103(a) 1–20 Merceron ’2416 and Reebok 2000, Nike H1995,
`or Nike S1997
`§ 103(a) 1–20 Merceron ’5467 and Reebok 2000, Nike H1995,
`or Nike S1997
`§ 103(a) 1–20 Gregg8 and Reebok 2000, Nike H1995, or Nike
`S1997
`
`
`1 U.S. Patent No. Des. 294, 537 (issued Mar. 8, 1988). Ex. 1012.
`2 Reebok Footwear Q4 Catalog. Ex. 1009.
`3 Nike Men’s, Women’s, and Kid’s Holiday Footwear 1995 Catalog. Ex.
`1010.
`4 Nike Footwear Spring 1997 Catalog. Ex. 1011.
`5 U.S. Patent No. 4,364,190 (issued Dec. 21, 1982). Ex. 1013.
`6 U.S. Patent No. Des. 388,241 (issued Dec. 30, 1997). Ex. 1014.
`7 U.S. Patent No. Des. 397,546 (issued Sep. 1, 1998). Ex. 1015.
`8 U.S. Patent No. Des 133, 176 (issued July 28, 1942). Ex. 1016.
`
`5
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`No. Ground Claims
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`Prior Art
`
`6
`
`7
`
`§ 103(a) 1–20
`
`§ 103(a) 1–20
`
`Sink9 and Reebok 2000, Nike H1995, or Nike
`S1997
`Sironi10 and Reebok 2000, Nike H1995, or Nike
`S1997
`
`
`
`Petitioner proffers a Declaration of David Ulan (Ex. 1020) to support its
`
`patentability analysis.
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, the Board interprets 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); 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).
`
`Petitioner proposes constructions for multiple claim elements. See
`
`Pet. 8–11. For the purposes of this Decision, we determine that only the
`
`term below needs explicit claim constructions in order to resolve the issues
`
`
`9 U.S. Patent No. 4,241,524 (issued Dec. 30, 1980). Ex. 1017.
`10 U.S. Patent No. Des. 287, 185 (issued Dec. 16, 1986). Ex. 1018.
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`6
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`before us. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355,
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`
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`1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent
`
`necessary to resolve the controversy.’”) (quotation omitted).
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`“flexure line”
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`
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`Petitioner proposes that “flexure line” means “a line that divides the
`
`sole into a plurality of sole plates” because Patent Owner put forth this
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`construction in the previous ITC investigation and this construction is
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`consistent with the specification of the ’320 patent. Pet. 8–9 (citing Ex.
`
`1001, 5:2–3). Petitioner acknowledges that the ’320 patent discloses flexure
`
`lines that may allow the sole to flex and curve or to enter a collapsed state,
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`but argues that “[i]n the broadest sense, flexure lines simply define the
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`boundaries of sole plates, providing ornamentation rather than
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`functionality.” Pet. 9 (citing Ex. 1020 ¶ 20). Petitioner contends that
`
`“‘flexure line’ should not require any functional limitations pertaining to
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`flexibility or collapsibility” because “this functionality is provided by
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`multiple elements operating in conjunction (e.g., a flexible sole and a
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`flexible upper) and not a function specifically performed by the individual
`
`flexure lines.” Pet. 9.
`
`
`
`Patent Owner disputes that Petitioner’s proposed construction is the
`
`broadest reasonable construction. Prelim. Resp. 9–27. According to Patent
`
`Owner, Petitioner’s proposed construction is 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
`
`customary meaning of the word “flexure.” See id. Patent Owner does not
`
`propose explicitly an alternate construction of “flexure line” but argues that
`
`any reasonable construction “must include the basic meaning of flexure—the
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`7
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`functionality of bending or curving.” Id. at 13. Further, Patent Owner
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`
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`argues that it proposed construction during the previous ITC investigation is
`
`not binding because “that was never formally submitted to any tribunal or
`
`adopted as an actual construction by the [ITC].” Id. at 20–21.
`
`At this stage in the proceeding, we agree with Patent Owner that
`
`Petitioner’s proposed construction is unreasonably broad because it does not
`
`account for the ordinary and customary meaning of the word “flexure” and
`
`is unreasonable in light of the specification of the ’320 patent. See Microsoft
`
`Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (stating that
`
`although claim terms must be given their broadest reasonable interpretation,
`
`the interpretation must still be reasonable). The claims recite that the lines
`
`are “flexure lines” (see e.g., Ex. 1001, 8:1) and the ordinary and customary
`
`meaning of “flexure” is to “turn, bend, fold” (Ex. 2001, 472). Petitioner’s
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`proposed construction does not require any turning, bending, or folding at
`
`the flexure line and, thus, essentially reads the term “flexure” out of the
`
`claims. See Merck & Co., Inc. v. Teva Pharmaceuticals USA, Inc., 395 F.3d
`
`1364, 1372 (Fed. Cir.2005 (“A claim construction that gives meaning to all
`
`the terms of the claim is preferred over one that does not do so.”). Further,
`
`Petitioner’s proposed construction is unreasonable in light of the
`
`specification of the ’320 patent. For example, the ’320 patent discloses that
`
`the sole “has a plurality of flexure lines 301, which allow the sole to flex and
`
`curve.” Ex. 1001, 4:63–67; see also id. at Figs. 3–4. At this stage of the
`
`proceeding, we determine that any construction that does not require the
`
`flexure lines to allow for bending or curving is unreasonably broad.
`
`Patent Owner’s arguments seems to suggest that a flexure line must
`
`allow the sole to bend or curve to such a degree that the sole may be rolled,
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`8
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`folded, or collapsed onto itself, as show, for example in Figure 4 of the ’320
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`
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`patent. See e.g., Prelim. Resp. 11–27. We do not agree that such a degree of
`
`bending or curving is required under the broadest reasonable construction.
`
`Although the ’035 patent discloses that flexure lines 301, 305 allow the sole
`
`to roll or fold (Ex. 1001, 4:66–5:5, 5:8–12, 5:28–49), the ’320 patent also
`
`discloses that flexure lines 305 provides flexibility for a foot in motion. The
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`’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.
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`Id. at 5:42–46. This indicates that flexure lines also allow for a lesser degree
`
`of bending or curving. The claims of the ’320 patent also indicate such. For
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`example, independent claim 1 does not require that the flexure lines allow
`
`the sole to collapse or roll onto itself. See id. at 7:60–8:15. Claim 10,
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`however, which depends from claim 1, requires that the sole have collapsed
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`state in which the sole rolls onto itself. Id. at 8:34–38.
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`
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`We determine that 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
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`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. Our determination is based on the record before us at this stage
`
`of the proceeding and for the purpose of our institution decision. We invite
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`the parties to further address the proper construction of “flexure lines”
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`during trial.
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`9
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`We acknowledge that our construction is different than the
`
`
`
`construction Patent Owner proposed in the previous ITC investigation. We
`
`are “not generally bound by a prior judicial construction of a claim term.”
`
`Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1326 (Fed. Cir. 2015). As
`
`Patent Owner, points out it never formally submit the construction to the
`
`ITC and the ITC did not adopt the construction. Prelim. Resp. 20. For the
`
`reason discussed above, we are not persuaded that the construction is the
`
`broadest reasonable construction, in light of the specification of the ’320
`
`patent.
`
`
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`B. Obviousness
`
`Section 103(a) forbids issuance of a patent when “the differences
`
`between the subject matter sought to be patented and the prior art are such
`
`that the subject matter as a whole would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which said
`
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The ultimate determination of obviousness under § 103 is a question
`
`of law based on underlying factual findings. In re Baxter Int’l, Inc., 678
`
`F.3d 1357, 1362 (Fed. Cir. 2012) (citing Graham v. John Deere Co., 383
`
`U.S. 1, 17–18 (1996)). These underlying factual considerations consist of:
`
`(1) the “level of ordinary skill in the pertinent art,”11 (2) the “scope and
`
`
`11 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. Petitioner also contends that a “POSITA would
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`content of the prior art,” (3) the “differences between the prior art and the
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`
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`claims at issue,” and (4) “secondary considerations” of non-obviousness
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`such as “commercial success, long-felt but unsolved needs, failure of others,
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`etc.”12 KSR, 550 U.S. at 406 (quoting Graham, 338 U.S. at 17–18).
`
`Ground 1— Le and Reebok 2000, Nike H1995, or Nike S1997
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`Petitioner contends that claims 1–20 would have been unpatentable
`
`under 35 U.S.C. § 103(a) as obvious over Le in view of Reebok 2000, Nike
`
`H1995, and Nike S1997. Pet. 29–41. To support its contention, Petitioner
`
`provides a mapping of limitations of claims 1–20 to structures described by
`
`Le in view of Reebok 2000, Nike H1995, or Nike S1997. Id.
`
`
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`Le, titled “Shoe Sole,” is a design patent for an ornamental design for
`
`a shoe sole. Ex. 1012, [57]. Figure 1 of Le is reproduced below.
`
`
`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 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 has not yet taken a position on the
`definition of a POSITA. On this record, we apply Petitioner’s definition of a
`person of ordinary skill in the art for our analysis.
`12 At this stage of the proceeding, the record contains no evidence of
`secondary considerations.
`
`11
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`Figure 1 depicts the bottom of the shoe sole.
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`With respect to the independent claims, Petitioner relies on Le for all
`
`of the claim limitations except for an upper or the sole being flexible. Pet.
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`29. For the upper and 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
`
`Pet. 29–31. In particular, Petitioner relies on an annotated version of Figure
`
`1 of Le to demonstrate that Le describes the claimed “flexure lines.” Pet. 24,
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`33. Petitioner’s annotated version of Figure 1 is reproduced below.
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`12
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`The annotated version of Figure 1 depicts Le’s sole with the forefoot area,
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`
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`arch area, heal area, and alleged laterally extending flexure lines annotated.
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`Id.
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`Patent Owner argues that Petitioner, relying on its faulty ornamental
`
`construction of “flexure line,” only provides an annotated picture of Le to
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`account for the independent claims’ recitation of the claimed “flexure line.”
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`See Prelim. Resp. 32.
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`
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`We agree with Patent Owner that Petitioner has failed to adequately
`
`account for “flexure line,” as we have construed it. As we explained above,
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`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.
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`Le is a design patent and “is silent as to the flexibility of the disclosed shoe
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`sole” (Pet. 32). Ex. 1012. Moreover, Petitioner has not offered any
`
`evidence or argument that would support a finding that the lines disclosed in
`
`Figure 1 allow the sole to bend or curve, as required by our construction.
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`Without evidence or argument that would allow us to determine from the
`
`evidence offered that features identified by Petitioner as “flexure lines”
`
`account for the functional limitations of our construction of “flexure line,”
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`we cannot conclude that Petitioner has a reasonable likelihood of prevailing
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`on its ground that claims 1–20 would have been unpatentable under
`
`35 U.S.C. § 103(a) as obvious over Le and Reebok 2000, Nike H1995, or
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`Nike S1997.
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`Ground 2— Yonkers and Reebok 2000, Nike H1995, or Nike S1997
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` Petitioner contends that claims 1–20 would have been unpatentable
`
`under 35 U.S.C. § 103(a) as obvious over Yonkers Reebok 2000, Nike
`
`H1995, or Nike S1997. Pet. 41–54. To support its contention, Petitioner
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`13
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`provides a detailed mapping of limitations of claims 1–20 to structures
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`
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`described by Yonkers, Reebok 2000, Nike H1995, and Nike S1997. Id.
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`Overview of the Prior Art
`
`Yonkers
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`
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`Yonkers is a U.S. patent titled “Outer sole for Athletic Shoe” and issued
`
`on December 21, 1982. Ex. 1013, [45], [54]. Yonkers disclose an outer sole
`
`for an athletic shoe. Id. at Abstract. The sole is made of a flexible material.
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`Id. at 3:17–22. Figure 2 of Yonkers is reproduced below.
`
`
`
` Figure 2 depicts the bottom of the sole. Id. at 3:1–2.
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`
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`14
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`Reebok 2000
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`
`
`Reebok 2000 is a footwear catalog which illustrates various shoes and
`
`accessories available for purchase from Reebok. See Ex. 1009. Reebok
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`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
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`67 (EVA midsole); id. at 68 (leather upper); id. at 78 (mesh upper); id. at 83
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`(a “single unit EVA outsole.”).
`
`Nike H1995
`
`Nike H1995 is a catalog which illustrates various shoes and
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`accessories 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, ethylene-vinyl acetate (often abbreviated as
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`“EVA” or referred to as “foam rubber”) or Phylon (a flexible foam derived
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`from EVA) to construct the midsole or outsole of a casual or athletic shoe.
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`See id. at 7, 9, 43, 69, 72, 96. Nike H1995 discloses that an athletic shoe
`
`may include a leather or mesh upper and a sole constructed from a different
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`flexible material such as EVA, rubber, or Phylon. See id. at 12 (the
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`“Decade” shoe has a mesh and leather upper); id. at 16 (the “Air Ascend”
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`shoe has a Phylon midsole); id. at 76 (the “Duration A.S.” shoe has a leather
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`upper).
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`Nike S1997
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`Nike S1997 is a catalog which illustrates various shoes and
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`accessories available for purchase from Nike. See Ex. 1011. Nike S1997
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`15
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`IPR2017-01689
`Patent 8,020,320 B2
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`discloses various materials that may be used to construct an athletic sneaker.
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`
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`For example, Nike S1997 discloses that an athletic sneaker may be
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`constructed from a leather and/or mesh upper and a Phylon sole. See id. at
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`24, 26 (Phylon is a spongy foam material derived from EVA).
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`Analysis—Independent Claims 1 and 16
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`Petitioner contends that Yonkers discloses a shoe having an upper and
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`a flexible sole with laterally extending flexure lines, as required by
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`independent claims 1 and 16. Pet. 15–17, 43–54. Petitioner’s annotated
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`version of Figure 2 of Yonkers is reproduced below.
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`
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`The annotated version of Figure 2 depicts the laterally extending flexure
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`lines as blue lines.
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`
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`Petitioner argues that Yonkers “does not suggest materials suitable for
`
`constructing the disclosed shoe” and cites to Reebok 2000, Nike H1995, and
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`Nike S1997 as disclosing suitable materials. Pet. 43–44. Specifically,
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`Petitioner submits that Yonkers describes that it an athletic shoe that is made
`
`of flexible materials, and Reebok 2000, Nike H1995, or Nike S1997
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`16
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`IPR2017-01689
`Patent 8,020,320 B2
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`describe the well-known materials for making such shoes that would have
`
`
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`been within the level of skill in the art at the time of the claimed invention.
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`Id. at 25–29, 43–44.
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`
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`Given the above and on this record, we determine that Petitioner’s
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`evidence and analysis shows claims 1 and 18 are unpatentable over Reebok
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`2000.
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`
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`Patent Owner raises several arguments why this ground should be
`
`denied. First, Patent Owner argues that the “Petition fails to present any
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`functional analysis or argument as to how the blue lines in the [annotated
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`image from Le (reproduced above)] provide the depicted shoe with any
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`added flexibility, let alone the amount of flexibility needed for the shoe to
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`fold as shown in Figure 4 [of the ’221 patent].” Prelim. Resp. 34; see id. at
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`38. Second, Patent Owner argues that Petitioner failed to provide adequate
`
`citation to the references and failed to identify the particular evidence
`
`forming the basis of the challenge, “instead relying on wholesale citation to
`
`Exhibit 1020 with no analysis within the Petition.” Id. at 45–46.
`
`We do not agree with Patent Owner that Petitioner has not adequately
`
`set forth this ground of unpatentability. First, although Petitioner relied on
`
`its broader definition of “flexure line” the record contains significant
`
`evidence that the features identified by Petitioner are “line[s] that divides the
`
`sole into a plurality of sole plates and allows the sole to bend or curve,” as
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`required by our claim construction. Indeed, Yonkers explains that the
`
`protrusions, which are created by the lines Petitioner asserts are the “flexure
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`lines” recited in the claims, enhance “flexibility” of the shoe in the
`
`lengthwise direction. Ex. 1013, 2:24–30; 46–48. Thus, we determine that
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`17
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`Patent 8,020,320 B2
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`there is evidence to demonstrate that the features identified by Petitioner in
`
`
`
`Le as “flexure lines” meet our construction of the term.
`
`Further, we are not persuaded by Patent Owner’s contention that the
`
`Petitioner failed to provide adequate citation to the references and failed to
`
`identify the particular evidence forming the basis of the challenge in the
`
`Petition, “instead relying on wholesale citation to Exhibit 1020 [Declaration
`
`of Mr. Ulan] with no analysis within the Petition.” Prelim. Resp. 45–46.
`
`We determine that Petitioner has provided a sufficiently detailed mapping of
`
`limitations of claims 1–20 to structures described by Yonkers, Reebok 2000,
`
`Nike H1995, and Nike S1997 in the Petition, itself. The Petition identifies
`
`what it is contending accounts for each element in its annotated figures. See
`
`Pet. 41–54. Although the citations could be more detailed, we determine
`
`that the citations provided together with the claim charts and other
`
`explanation are sufficient, at this stage, to satisfy the requirements of our
`
`rules.
`
`Thus, on the current record, we determine that Petitioner has shown a
`
`reasonable likelihood of prevailing in showing that claims 1–20 would have
`
`been unpatentable under 35 U.S.C. § 103(a) as obvious over Yonkers and
`
`Reebok 2000, Nike H1995, or Nike S1997.
`
`Analysis —Dependent Claims
`
`
`
`Claims 2–15 depend from claim 1, and claims 17–20 depend from
`
`claim 16. Petitioner contends that the dependent claims are unpatentable
`
`over Yonkers and Reebok 2000, Nike H1995, or Nike S1997. Pet. 47–51,
`
`53–54. Petitioner’s contentions are support by the testimony of Mr. Ulan.
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`Ex. 1018 ¶¶ 110–127, 136–139. Upon review of Petitioner’s evidence and
`
`analysis, we determine that the Petition shows a reasonable likelihood that
`
`18
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`IPR2017-01689
`Patent 8,020,320 B2
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`claims 2–15 and 17–20 are unpatentable over Yonkers and Reebok 2000,
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`
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`Nike H1995, or Nike S1997. Patent Owner makes no arguments directed to
`
`the additional limitations recited by these claims.
`
`Remaining Grounds
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`A petition for inter partes review must “identif[y], in writing and with
`
`particularity, each claim challenged, the grounds on which the challenge to
`
`each claim is based, and the evidence that supports the grounds for the
`
`challenge to each claim.” 35 U.S.C. § 312(a)(3). According to 37 C.F.R.
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`§ 42.104(b)(4), a petition for inter partes review “must identify how the
`
`construed claim is unpatentable under the statutory grounds on which the
`
`petitioner challenges the claims, and must specify where each element of the
`
`claim is found in the prior art patents or printed publications relied upon,”
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`and 37 C.F.R. § 42.104(b)(5) adds that the Petition must “identify[ ] specific
`
`portions of the evidence that support the challenge,” 37 C.F.R.
`
`§ 42.104(b)(5) (emphasis added). Similarly, 37 C.F.R. § 42.22(a)(2) states
`
`that each petition must include “[a] full statement of the reasons for the relief
`
`requested, including a detailed explanation of the significance of the
`
`evidence including material facts, and the governing law, rules, and
`
`precedent.”
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`For these grounds, the Petition fails to follow these requirements
`
`arising from the statute and rules governing inter partes review. In
`
`particular, we determine that these grounds fail to identify “in writing and
`
`with particularity” the basis for the challenge. For instance, there is no
`
`specific mapping to the claims for these grounds. For example, Petitioner’s
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`analysis for the Merceron ’241 ground consists of drawings annotated with
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`lateral flexure lines, and broad argument that the combination of Merceron
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`19
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`’241 and Reebok 2000, Nike H1995, or Nike S1997 would have been
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`
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`obvious. Pet. 54–57. With respect to the dependent claims, Petitioner
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`merely asserts that “the dependent claims of the ’320 Patent would be
`
`obvious for the same reasons as discussed above in the analysis of Le and
`
`Yonkers.” Id. at 57. Petitioner offers a similar analysis for grounds based on
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`Merceron ’546, Gregg, Sink, and Sironi. See id. at 57–69. We find that the
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`Petition’s presentation of the grounds based on Merceron ’241, Merceron
`
`’546, Gregg, Sink, and Sironi fails to satisfy the statutory and rule
`
`requirements for inter partes review and deny these grounds on that basis.
`
`
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that the information
`
`presented in the Petition establishes a reasonable likelihood that Petitioner
`
`would prevail in showing that claims 1–20 of the ’320 patent are
`
`unpatentable. At this stage of the proceeding, the Board has not made a final
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`determination with respect to the patentability of the challenged claims.
`
`
`
`IV. ORDER
`
`In consideration of the foregoing, it is
`
`ORDERED that an inter partes review is instituted on the basis that
`
`Petitioner has shown a reasonable likelihood that claims 1–20 of the
`
`’320 patent would have been unpatentable as obvious under 35 U.S.C.
`
`§ 103(a) over Yonkers and Reebok 2000, Nike H1995, or Nike.
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`FURTHER ORDERED, that no other ground of unpatentability, with
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`respect to any claim, is instituted for trial; and
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`20
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`IPR2017-01689
`Patent 8,020,320 B2
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
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`
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`partes review of the ’320 patent is instituted with trial commencing on the
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`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
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`§ 42.4, notice is given of the institution of the trial.
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`
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`For Petitioner:
`
`Richard LaCava
`richard.lacava@arentfox.com
`Michael Scarpati
`michael.scarpati@arentfox.com
`ARENT FOX, LLP
`
`For Patent Owner:
`
`Mitchell Stockwell
`mstockwell@kilpatricktownsend.com
`Matias Ferrario
`mferrario@kilpatricktownsend.com
`KILPATRICK TOWNSEND & STOCKTON LLP
`
`
`21
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