Elite Performance Footwear, LLC v. Reebok International Limited
`IPR2017-01676, -01680, -01689
`U.S. Patent Nos. 7,637,035; 8,505,221; and 8,020,320
`
`Petitioner’s Demonstratives
`October 25, 2018
`9:00 am
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`1
`
`
`IPR2017-01676, -01680, -01689
`U.S. Patent Nos. 7,637,035; 8,505,221; and 8,020,320
`
`Petitioner’s Demonstratives
`October 25, 2018
`9:00 am
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`1
`
`
`
`Table of Contents
`
`Content
`Slide(s)
`Background of the ‘035, ‘221 and ‘320 Patents
`3-6
`Challenged Claims and Grounds
`7-10
`Claim Construction – “Flexure Line”
`11-20
`Prior Art Overview
`21-39
`40-49 Motivation to Combine/Modify the Prior Art
`All Instituted Grounds Result in Flexible Footwear
`Capable of Rolling, Folding or Collapsing
`The Independent Claims of the Challenged Patents
`The Dependent Claims of the Challenged Patents
`Patent Owner’s Alleged Evidence of Secondary
`Considerations
`Response to Patent Owner’s Motion to Amend
`
`50-51
`
`52-79
`80-81
`
`82-83
`
`84-99
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`2
`
`
`
`Background of the ‘035, ‘221 and ‘320 Patents
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`3
`
`
`
`Background of the ‘035, ‘221 and ‘320 Patents
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`4
`
`
`
`Background of the ‘035, ‘221 and ‘320 Patents
`
`#
`102
`104
`106
`301
`305
`315
`
`320
`
`Element
`“heel area”
`“arch area”
`“forefoot area”
`“flexure line”
`“larger flexure line”
`“cut-away portion
`[of the sole]”
`“sole plate”
`
`IPR2017-01676, Ex. 1001, Fig. 3 (annotated).
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`5
`
`
`
`Background of the ‘035, ‘221 and ‘320 Patents
`
`“FIG. 4 is a side view of the shoe of FIG.
`1 shown partially collapsed.” IPR2017-
`01676, Ex. 1001 at 2:39-40.
`
`“FIG. 5 is a top view of a storage container
`according to the present invention with a shoe of
`the present invention shown collapsed and stored
`therein.” IPR2017-01676, Ex. 1001 at 2:41-43.
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`6
`
`
`
`Challenged Claims and Grounds
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`7
`
`
`
`Challenged Claims and Grounds
`The ‘035 Patent
`
`Ground
`#1
`#2
`#3
`#4
`#5
`#6
`#7
`#8
`#9
`
`IPR2017-01676 (the ‘035 Patent)
`Challenged Claims
`Reference(s)
`Basis
`Reebok 2000
`§ 103 1–4, 9–15, 18, 19, and 23–27
`Reebok 2000 in view of Nike S1997
`§ 103 9, 23
`or Mastroianni.
`Reebok 2000 in view of Hall
`§ 103 1–4, 9–15, 18, 19, and 23–27
`Reebok 2000 in view of Nike H1995
`§ 103 1–4, 9–15, 18, 19, and 23–27
`Reebok 2000 in view of Nike S1997 § 103 1–4, 9–15, 18, 19, and 23–27
`Reebok 2000 in view of Byong-Ryol
`§ 103 1–4, 9–15, 18, 19, and 23–27
`Reebok 2000 in view of Mastroianni
`§ 103 1–4, 9–15, 18, 19, and 23–27
`Reebok 2000 in view of FILA 1998
`§ 103 1–4, 9–15, 18, 19, and 23–27
`Reebok 2000 in view of Lucarelli
`§ 103 1–4, 9–15, 18, 19, and 23–27
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`8
`
`
`
`Challenged Claims and Grounds
`The ‘221 Patent
`
`Ground
`#1
`
`#2
`
`#3
`
`#4
`
`#5
`#6
`#7
`
`§ 103 1, 2, 4–6, 11–16, and 18–20
`
`§ 103 1, 2, 5, 6, and 11–15
`
`§ 103 1, 2, 5, 6, and 11–15
`
`IPR2017-01680 (the ‘221 Patent)
`Challenged Claims
`Reference(s)
`Basis
`Featherston in view of Reebok 2000,
`§ 103 1–4 and 11–20
`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
`
`§ 103 1, 2, 5, and 6
`§ 103 16 and 18–20
`§ 103 16 and 18–20
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`9
`
`
`
`Challenged Claims and Grounds
`The ‘320 Patent
`
`Ground
`#1
`
`#2
`
`#3
`
`#4
`
`#5
`
`#6
`
`#7
`
`IPR2017-01689 (the ‘320 Patent)
`Reference(s)
`Basis Challenged Claims
`Le in view of Reebok 2000, Nike H1995
`§ 103
`1–20
`or Nike H1997
`Yonkers in view of Reebok 2000, Nike
`H1995 or Nike H1997
`Merceron ’241 in view of Reebok 2000,
`Nike H1995 or Nike H1997
`Merceron ’546 in view of Reebok 2000,
`Nike H1995 or Nike H1997
`Gregg in view of Reebok 2000, Nike
`H1995 or Nike H1997
`Sink in view of Reebok 2000, Nike
`H1995 or Nike H1997
`Sironi in view of Reebok 2000, Nike
`H1995 or Nike H1997
`
`§ 103
`
`1–20
`
`§ 103
`
`1–20
`
`§ 103
`
`1–20
`
`§ 103
`
`1–20
`
`§ 103
`
`1–20
`
`§ 103
`
`1–20
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`10
`
`
`
`Claim Construction – “Flexure Line”
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`11
`
`
`
`Claim Construction – “Flexure Line”
`
`Petitioner’s Initial
`Proposed Construction
`“A line that divides the sole
`into a plurality of sole plates.”
`IPR2017-01676, Paper 2 at 10.
`
`(Petitioner later agreed to
`adopt the Board’s construction
`of this term. See IPR2017-
`01676, Paper 22 at 1.)
`
`The Board’s Construction
`at Institution
`“[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.” IPR2017-01676,
`Paper 7 at 10.
`
`Patent Owner’s Proposed
`Construction
`“[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.” IPR2017-01676, Paper
`20 at 10.
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`12
`
`
`
`Claim Construction – “Flexure Line”
`The Board’s Construction is Correct and the Broadest
`Reasonable Interpretation in View of the Specification of the
`Challenged Patents
`• The common specification of the challenged patents discloses a sole which
`“has a plurality of flexure lines 301, which allow the sole to flex and curve.”
`IPR2017-01676, Ex. 1001 at 4:62-63.
`• However, the Board correctly recognized that “[a]lthough the ’035 patent
`discloses that flexure lines 301, 305 allow the sole to roll or fold (Ex. 1001,
`4:62–67, 5:4–6, 5:23–45), the ’035 patent also discloses that flexure lines 305
`provides flexibility for a foot in motion.” IPR2017-01676, Paper 7 at 9.
`• The Board further observed that the description of Fig. 3’s flexure line 305
`“indicates that flexure lines also allow for a lesser degree of bending or
`curving.” Id. (quoting 5:37-41 of the ‘035 Patent).
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`13
`
`
`
`Claim Construction – “Flexure Line”
`The Board’s Construction is Consistent with the Claims of the
`Challenged Patents
`• The independent claims of the challenged patents fail to recite functional
`limitations requiring any degree of bending or curvature, and more specifically
`fail to require flexure lines that allow a sole to roll, fold or collapse.
`• This is because Patent Owner chose to include such functional limitations in
`dependent claims. See e.g., claim 5 of the ‘035 Patent (which required a
`“collapsed state” produced by rolling).
`• Moreover, the Board further recognized at institution that the disclosure of the
`challenged patents “is not clear as to the differing functionality, if any, of the
`longitudinally extending flexure lines.” IPR2017-01676, Paper 7 at 10.
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`14
`
`
`
`Claim Construction – “Flexure Line”
`Patent Owner’s Proposed Construction is Unreasonably Narrow
`• Patent Owner’s proposal requires that each flexure line must “allow[]
`the sole to substantially bend or curve enough for the shoe to be
`folded.”
`• This narrow construction ignores the fact that the disclosure of the
`challenged patents describes flexure lines that provide a lesser degree
`of flexibility:
`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.
`IPR2017-01676, Ex. 1001 at 5:37–41.
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`15
`
`
`
`Claim Construction – “Flexure Line”
`Patent Owner’s Proposed Construction is Unreasonably Narrow
`• Fig. 4 of challenged patents “shows sole 120 partially rolled or folded onto
`itself.” IPR2017-01678, Ex. 1001 at 5:1. However, in this “folded” state
`several of the flexure lines (301) on the sole are not bent or curved.
`• This provides further evidence that the broadest reasonable interpretation of
`the term “flexure line” cannot be limited solely to grooves which must allow
`a shoe to substantially bend or curve enough for the shoe to be folded.
`
`IPR2017-01678, Paper 22,
`Petitioner’s Reply, at 6.
`
`IPR2017-01678, Ex. 1001, Fig. 4 (annotated)
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`16
`
`
`
`Claim Construction – “Flexure Line”
`Patent Owner’s Disavowal Argument Fails as a Matter of Law
`The common specification of the challenged patents contains no evidence
`of the “clear and unmistakable” intent to disavow claims to shoes with
`grooved soles which provide a lesser degree of flexibility. Thorner v. Sony
`Computer Entm’t Am. LLC, 669 F.3d 1362, 1367-68 (Fed. Cir. 2012).
`• See Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009)
`(holding that even a direct criticism of a particular technique known in the prior art did
`not rise to the level of clear disavowal).
`• Patent Owner’s reliance on In re Man Machine Interface Technologies LLC, 822 F. 3d
`1282 (Fed. Cir. 2016) is misplaced. In that case “the specification expressly
`distinguishes the remote control device from a desk-bound device like the one
`disclosed in [the prior art].” See id. at 1286 (emphasis added).
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`17
`
`
`
`Claim Construction – “Flexure Line”
`Patent Owner’s Proposed Construction Cannot Be Adopted Because
`It Is Indefinite
`• Patent Owner’s proposal requires that each flexure line must “allow[] the sole
`to substantially bend or curve enough for the shoe to be folded.”
`• Under what level of force?
`Patent Owner has proposed that the level of force applied is limited to hand folding “based on the
`normal range of strength of human adults.” IPR2017-01676, Paper 27 at 11. However, the claims
`fail to recite this limitation and the specification provides no support for this limitation.
`Furthermore, hand folding strength will presumably vary based upon age, gender and other
`factors.
`• At what point is a shoe sole “substantially” bent or curved, or “folded?”
`The specification of the challenged patents fails to provide any objective criteria which would
`allow a POSITA to be reasonably certain as to the boundaries of these limitations. For example, at
`what point does “bent” turn into “folded?”
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`18
`
`
`
`Claim Construction – “Flexure Line”
`Patent Owner’s Proposed
`Construction is Inconsistent
`• Patent Owner’s proposal requires construing
`this term as: “a groove in a shoe sole that
`allows the sole to substantially bend or
`curve enough for the shoe to be folded.”
`Note the reference to “a groove” (singular).
`• However, Patent Owner’s briefing and
`expert declarations applied a different
`construction wherein multiple grooves can
`be joined to form a single alleged flexure
`line. See e.g. IPR2017-01676, Paper 27 at 7;
`IPR2017-01680, Paper 21 at 11-12, Ex.
`2015 at ¶¶ 42-43.
`• Patent Owner’s arguments and expert
`opinions based on this defective
`construction should be disregarded.
`
`IPR2017-01676, Ex. 2011 at Appendix A
`(analysis of limitation [1e])
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`19
`
`
`
`Claim Construction – “Flexure Line”
`Petitioner believes that the Board’s construction is correct. However, the
`challenged claims are also invalid under Patent Owner’s construction.
`As explained in Petitioner’s briefing, the asserted prior art leads a POSITA to arrive at
`footwear which has a flexible upper and sole with an arrangement of flexure lines required
`by the challenged claims. See e.g., IPR2017-01676, Paper 22 at 14-15.
`• The flexure lines on the shoe soles resulting from the modifications to the prior art set forth in the
`Petitions would thus necessarily allow a degree of bending or curvature as required by the Board’s
`construction.
`Furthermore, the flexure lines on the resulting shoes would allow the shoe to bend or curve
`enough to roll, fold or collapse under Patent Owner’s (flawed) construction. See e.g.,
`IPR2017-01676, Paper 22 at 12-13.
`• The asserted prior art combinations result in a shoe constructed from the same preferred materials
`identified in the challenged Patents (e.g., 3D Ultralite and EVA).
`• Also, the claims do not require a minimum or maximum level of force. The resulting shoes will
`inevitably fold under some level of force.
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`20
`
`
`
`Prior Art Overview
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`21
`
`
`
`Prior Art Overview
`“Reebok 2000” is a footwear catalog which illustrates various shoes available for
`purchase from Reebok in or around Q4 2000, and flexible materials routinely used
`in the construction of casual and athletic footwear
`
`IPR2017-01676, Ex. 1009 at 68.
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`22
`
`
`
`Prior Art Overview
`In particular, “Reebok 2000” discloses the Classic Sovereign shoe (shown below)
`and flexible materials such as 3D Ultralite, EVA and EVA derivatives.
`
`IPR2017-01676, Ex. 1009 at 68.
`
`IPR2017-01676, Ex. 1009 at 68 (annotated).
`
`= Longitudinal Flexure Lines
`
`= Lateral Flexure Lines
`
`= Sole Plates
`
`IPR2017-01676, Paper 2 at 26.
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`23
`
`
`
`Prior Art Overview
`“Reebok 2000” also discloses the LX8500 shoe.
`
`IPR2017-01676, Ex. 1009 at 73 (annotated – left, original – right)
`
`= Longitudinal Flexure Lines
`
`= Lateral Flexure Lines
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`24
`
`
`
`Prior Art Overview
`“Nike H1995” is a footwear catalog which illustrates various shoes available for
`purchase from Nike in or around Winter 1995, and flexible materials routinely used
`in the construction of casual and athletic footwear.
`
`•
`In particular, “Nike H1995” discloses
`the Air Footscape shoe (shown to the
`right). Note the larger “Metaflex groove”
`in the forefoot area, as well as various
`longitudinal and lateral “flex grooves.”
`• “Nike H1995” further teaches that
`the inclusion of “flex grooves” on an
`athletic shoe sole improves performance
`(i.e., by increasing flexibility). See, e.g.,
`IPR2017-01676, Ex. 1010 at 15 (the Air
`Flight One shoe has “[f]lex grooves in
`the midsole and outsole for flexibility”).
`
`IPR2017-01676, Ex. 1010 at 7 (annotated)
`
`= Longitudinal Flexure Lines
`
`= Lateral Flexure Lines
`
`= Sole Plates
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`25
`
`
`
`Prior Art Overview
`“Nike S1997” is a footwear catalog which illustrates various shoes available for
`purchase from Nike in or around Spring 1997, and flexible materials routinely used
`in the construction of casual and athletic footwear.
`• In particular, “Nike S1997” discloses the Air Cronus shoe (shown to the left),
`which has 9 lateral flexure lines, and the Wicked Trainer shoe (shown to the right).
`
`IPR2017-01676, Ex. 1011 at 20 (annotated).
`
`IPR2017-01676, Ex. 1011 at 177 (annotated).
`
`= Longitudinal Flexure Lines
`
`= Lateral Flexure Lines
`
`= Sole Plates
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`26
`
`
`
`Prior Art Overview
`“Hall” is a U.S. utility patent directed to a “Shoe” which issued on June 27, 1893.
`
`IPR2017-01676, Ex. 1013, Figs. 1-2 (annotated).
`
`= Longitudinal Flexure Lines
`
`= Lateral Flexure Lines
`
`= Sole Plates
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`27
`
`
`
`Prior Art Overview
`“Byong-Ryol” is a UK patent application directed to “[a] flexible sole for use with
`hiking, running, or walking shoes [which] comprises flexible protrusions 3
`extending from a support portion,” which published on August 3, 1983.
`
`IPR2017-01680, Ex. 1016, Fig. 1 (annotated), Fig. 2.
`
`= Longitudinal Flexure Lines
`
`= Lateral Flexure Lines
`
`= Sole Plates
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`28
`
`
`
`Prior Art Overview
`“Mastroianni” is a U.S. design patent directed to a “Shoe” which issued on
`April 3, 2001.
`
`IPR2017-01680, Ex. 1015, Figs. 2, 4 (annotated).
`
`= Longitudinal Flexure Lines
`
`= Lateral Flexure Lines
`
`= Sole Plates
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`29
`
`
`
`Prior Art Overview
`“Lucarelli” is a U.S. design patent directed to a “Shoe Sole” which issued on
`November 9, 1982
`
`IPR2017-01680, Ex. 1014, Fig. 1
`(with two excerpts shown and annotated).
`
`= Longitudinal Flexure Lines
`
`= Lateral Flexure Lines
`
`= Sole Plates
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`30
`
`
`
`Prior Art Overview
`“Featherston” is a U.S. design patent directed to a “Shoe Sole” which issued on
`March 4, 1997.
`
`IPR2017-01680, Ex. 1013, Figs. 1, 5 (annotated).
`
`= Longitudinal Flexure Lines
`
`= Lateral Flexure Lines
`
`= Sole Plates
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`31
`
`
`
`Prior Art Overview
`“Merceron ‘546” is a U.S. design patent directed to a “Shoe sole” which
`issued on September 1, 1998.
`
`IPR2017-01680, Ex. 1014, Figs. 1, 2 (annotated).
`
`= Longitudinal Flexure Lines
`
`= Lateral Flexure Lines
`
`= Sole Plates
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`32
`
`
`
`Prior Art Overview
`“Novy” is a U.S. design patent directed to a “Tread surface and periphery of a footwear
`unit sole” which issued on October 26, 1993.
`
`IPR2017-01680, Ex. 1015, Figs. 1, 2 (annotated).
`
`= Longitudinal Flexure Lines
`
`= Lateral Flexure Lines
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`33
`
`
`
`Prior Art Overview
`“Yonkers” is a U.S. utility patent directed to an “Outer Sole for Athletic Shoe”
`which issued on December 21, 1982.
`• “Yonkers” expressly teaches that laterally extending flexure lines improve performance by
`enhancing flexibility. “Flexibility is enhanced by the disposition of the bars transverse to the
`lengthwise direction of the base member which permit flexing of the shoe in the lengthwise
`direction of the sole.”
`
`IPR2017-01689, Ex. 1013, Figs. 1, 2 (annotated).
`
`= Longitudinal Flexure Lines
`
`= Lateral Flexure Lines
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`34
`
`
`
`Prior Art Overview
`“Le” is a U.S. design patent directed to a “Shoe sole” which issued on March 8, 1988.
`
`IPR2017-01689, Ex. 1012, Figs. 1, 3 (annotated).
`
`= Longitudinal Flexure Lines
`
`= Lateral Flexure Lines
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`35
`
`
`
`Prior Art Overview
`“Merceron ‘241” is a U.S. design patent directed to a “Shoe Sole” which issued
`on December 30, 1997.
`
`IPR2017-01689, Ex. 1014, Figs. 2, 4 (annotated).
`
`= Longitudinal Flexure Lines
`
`= Lateral Flexure Lines
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`36
`
`
`
`Prior Art Overview
`“Gregg” is a U.S. design patent directed to a “Shoe Sole” which issued on July
`28, 1942.
`
`IPR2017-01689, Ex. 1016, Figs. 1, 2 (annotated).
`
`= Lateral Flexure Lines
`
`= Longitudinal Flexure Lines
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`37
`
`
`
`Prior Art Overview
`“Sink” is a U.S. utility patent directed to an “Athletic Shoe with Flexible Sole”
`which issued on December 30, 1980.
`
`IPR2017-01689, Ex. 1017, Figs. 3, 5 (annotated).
`
`= Longitudinal Flexure Lines
`
`= Lateral Flexure Lines
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`38
`
`
`
`Prior Art Overview
`“Sironi” is a U.S. design patent directed to a “Shoe Sole” which issued on
`December 16, 1986.
`
`IPR2017-01689, Ex. 1018, Figs. 1, 2 (annotated).
`
`= Longitudinal Flexure Lines
`
`= Lateral Flexure Lines
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`39
`
`
`
`Motivation to Combine/Modify the Prior Art
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`40
`
`
`
`Motivation to Combine/Modify the Prior Art
`• A POSITA interested in constructing a flexible shoe disclosed in a utility patent (e.g.,
`“Byong-Ryol” or “Yonkers”) would naturally look to examples of flexible materials that
`are routinely used in flexible shoes (e.g., casual and athletic footwear). See IPR2017-
`01680, Ex. 1018 at ¶ 166; IPR2017-01689, Ex. 1020 at ¶ 103.
`
`• Similarly, a POSITA interested in constructing a shoe according to a design disclosed in a
`design patent would be motivated to select flexible sole and upper materials known in the
`art which are routinely used in footwear. See e.g., IPR2017-01680, Ex. 1018 at ¶ 112.
`
`• “Reebok 2000,” “Nike H1995” and “Nike S1997” each provide numerous examples of
`flexible materials (e.g., 3D Ultralite and EVA foam rubber derivatives) that were
`commonly used to construct casual and athletic footwear prior to the effective filing date
`of the challenged patents. See e.g., IPR2017-01689, Ex. 1020 at ¶ 102-103.
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`41
`
`
`
`Motivation to Combine/Modify the Prior Art
`• Flexible Upper and Sole Materials – “Reebok 2000”
`
`IPR2017-01676, Ex. 1018 at ¶¶ 37, 69 (annotated).
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`42
`
`
`
`Motivation to Combine/Modify the Prior Art
`• Flexible Upper and Sole Materials – “Reebok 2000”
`
`IPR2017-01680, Ex. 1018 at ¶ 41 (annotated).
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`43
`
`
`
`Motivation to Combine/Modify the Prior Art
`• Flexible Upper and Sole Materials – “Nike H1995”
`
`IPR2017-01680, Ex. 1018 at ¶ 44 (annotated).
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`44
`
`
`
`Motivation to Combine/Modify the Prior Art
`Example #1: A POSITA familiar with “Reebok 2000” would have been
`motivated to select flexible upper and sole materials when constructing a shoe
`based on the design of the Classic Sovereign.
`
`• “Reebok 2000” discloses that the Classic Sovereign has a leather upper and a sole
`constructed from 3D Ultralite material, which as the Board noted is a preferred flexible
`material disclosed in the ʼ035 Patent. See IPR2017-01676, Paper 7 at 12.
`
`• When deciding on materials for this project, the POSITA would naturally consider using
`3D Ultralite and leather in view of “Reebok 2000” calling attention to these materials in
`the description of the Classic Sovereign. See IPR2017-01676, Paper 22 at 14-15.
`
`• Moreover, “Reebok 2000” discloses “numerous examples of casual and athletic sneakers
`and flexible materials used to construct these types of shoes, including . . . sole materials
`(e.g., EVA, rubber, rubber composites) and other flexible upper materials (e.g., mesh).”
`IPR2017-01676, Paper 22 at 15 (citing Paper 2 at 30).
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`45
`
`
`
`Motivation to Combine/Modify the Prior Art
`• Example #2: A POSITA would have been motivated to construct a shoe based
`on “Byong-Ryol” using the flexible materials taught by “Reebok 2000,”
`“Nike H1995” or “Nike S1997,” arriving at a flexible shoe.
`
`IPR2017-01680, Ex. 1018 at ¶ 190 (annotated).
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`46
`
`
`
`Motivation to Combine/Modify the Prior Art
`• Example #2: A POSITA would have been motivated to construct a shoe based
`on “Byong-Ryol” using the flexible materials taught by “Reebok 2000,”
`“Nike H1995” or “Nike S1997,” arriving at a flexible shoe.
`
`IPR2017-01680, Ex. 1018 at ¶ 191 (annotated).
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`47
`
`
`
`Motivation to Combine/Modify the Prior Art
`• Example #3: A POSITA would have been motivated to construct a shoe based
`on “Yonkers” using the flexible materials taught by “Reebok 2000,” “Nike
`H1995” or “Nike S1997,” arriving at a flexible shoe.
`
`IPR2017-01689, Ex. 1020 at ¶ 95 (annotated).
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`48
`
`
`
`Motivation to Combine/Modify the Prior Art
`As explained in the Petitions and expert declarations submitted in support,
`when designing shoes based upon the prior art a POSITA would consider
`similar alternative configurations as part of the design process.
`• A designer would routinely consider varying the width, number, or arrangement of
`flexure lines and sole plates on the sole of shoe. See IPR2017-01676, Paper 2 at 28-
`30, 51-52, 56; IPR2017-01676, Ex. 1018 at ¶¶ 25-34.
`• A designer would have routinely experiment with different combinations of repeating
`elements or patterns when developing new shoe designs inspired by examples of
`previous market trend (e.g., by extending rows of repeating elements). See IPR2017-
`01676, Paper 2 at 46-47; IPR2017-01676, Ex. 1018 at ¶¶ 25-34.
`• For example, a POSITA developing a shoe based on the Classic Sovereign shown in
`“Reebok 2000” (which has 6 lateral flexure lines) would have considered variants
`with 9 laterally extending flexure lines as required by claims 9 and 23 of the ‘035
`Patent. See IPR2017-01676, Ex. 1018 at ¶¶ 61-64, 85-87, 95-100.
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`49
`
`
`
`All Instituted Grounds Result in Flexible Footwear
`Capable of Rolling, Folding or Collapsing
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`50
`
`
`
`All Instituted Grounds Result in Flexible Footwear
`Capable of Rolling, Folding or Collapsing
`All of the instituted grounds result in a POSITA constructing a shoe that has a flexible
`upper and sole, with a pattern of flexure lines required by the challenged claims.
`The resulting shoes would further be capable of rolling, folding or collapsing. As explained
`by Petitioner’s expert:
`As a general rule, the addition of a groove to a flexible solid material will
`concentrate stress applied to the surface of the solid material, creating a point at
`which bending or curvature will occur after a given threshold of force is exerted
`upon the flexible solid material.
`IPR2017-01678, Ex. 1019 at ¶19.
`Accordingly, a shoe sole constructed from a flexible material having a single
`flexure line as required by the challenged claims will tend to increasingly bend
`along the flexure line (e.g., along the groove) as increasing stress is applied to the
`shoe sole. . . . In the case of a shoe having multiple flexure lines arranged in
`parallel across the whole sole or a section thereof, such flexure lines would be
`expected to gradually bend as force is applied, with the amount of force
`distributed across multiple flexure lines.
`
`Id.
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`51
`
`
`
`The Independent Claims of the Challenged Patents
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`52
`
`
`
`The Independent Claims of the Challenged Patents
`• Claim 1 of the ‘035 Patent:
`
`Claim charts are excerpted from the Petition. See IPR2017-01676, Paper 2.
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`53
`
`
`
`The Independent Claims of the Challenged Patents
`• Claim 1 of the ‘035 Patent:
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`54
`
`
`
`The Independent Claims of the Challenged Patents
`• Claim 1 of the ‘035 Patent:
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`55
`
`
`
`The Independent Claims of the Challenged Patents
`• Claim 1 of the ‘035 Patent:
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`56
`
`
`
`The Independent Claims of the Challenged Patents
`• Claim 1 of the ‘035 Patent:
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`57
`
`
`
`The Independent Claims of the Challenged Patents
`• Claim 1 of the ‘035 Patent:
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`58
`
`
`
`The Independent Claims of the Challenged Patents
`• Claim 1 of the ‘035 Patent:
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`59
`
`
`
`The Independent Claims of the Challenged Patents
`• Claim 1 of the ‘035 Patent:
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`60
`
`
`
`The Independent Claims of the Challenged Patents
`• Claim 1 of the ‘035 Patent:
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`61
`
`
`
`The Independent Claims of the Challenged Patents
`• Claim 1 of the ‘035 Patent:
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`62
`
`
`
`The Independent Claims of the Challenged Patents
`• Claim 1 of the ‘035 Patent:
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`63
`
`
`
`The Independent Claims of the Challenged Patents
`• Claim 1 of the ‘035 Patent:
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`64
`
`
`
`The Independent Claims of the Challenged Patents
`• Claim 18 of the ‘035 Patent:
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`65
`
`
`
`The Independent Claims of the Challenged Patents
`• Claim 18 of the ‘035 Patent:
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`66
`
`
`
`The Independent Claims of the Challenged Patents
`• Claim 18 of the ‘035 Patent:
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`67
`
`
`
`The Independent Claims of the Challenged Patents
`• Claim 18 of the ‘035 Patent:
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`68
`
`
`
`The Independent Claims of the Challenged Patents
`• Claim 18 of the ‘035 Patent:
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`69
`
`
`
`The Independent Claims of the Challenged Patents
`• Claim 1 of the ‘221 Patent:
`
`Claim charts are excerpted from the Petition. See IPR2017-01680, Paper 2.
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`70
`
`
`
`The Independent Claims of the Challenged Patents
`• Claim 1 of the ‘221 Patent:
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`71
`
`
`
`The Independent Claims of the Challenged Patents
`• Claim 1 of the ‘221 Patent:
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`72
`
`
`
`The Independent Claims of the Challenged Patents
`• Claim 1 of the ‘221 Patent:
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`73
`
`
`
`The Independent Claims of the Challenged Patents
`• Claim 1 of the ‘320 Patent:
`
`Claim charts are excerpted from the Petition. See IPR2017-01689, Paper 2.
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`74
`
`
`
`The Independent Claims of the Challenged Patents
`• Claim 1 of the ‘320 Patent:
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`75
`
`
`
`The Independent Claims of the Challenged Patents
`• Claim 1 of the ‘320 Patent:
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`76
`
`
`
`The Independent Claims of the Challenged Patents
`• Claim 1 of the ‘320 Patent:
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`77
`
`
`
`The Independent Claims of the Challenged Patents
`• Claim 1 of the ‘320 Patent:
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`78
`
`
`
`The Independent Claims of the Challenged Patents
`• Claim 1 of the ‘320 Patent:
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`79
`
`
`
`The Dependent Claims of the Challenged Patents
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`80
`
`
`
`The Dependent Claims of the Challenged Patents
`
`The additional limitations of the dependent claims fail to confer
`patentability over the prior art.
`• The specific upper and sole materials required by the dependent claims are
`disclosed by “Reebok 2000,” “Nike H1995” and/or “Nike S1997.”
`• Additional structural components required by several of the dependent
`claims (e.g., additional rows of three sole plates spanning the forefoot or
`heel area) are also expressly disclosed by multiple references, as explained
`in Petitioner’s briefing.
`• The specific dimensions, ratios and numbers of elements required by
`several of the dependent claims are taught by the asserted prior art, a mere
`design choice and/or subject to routine optimization.
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`81
`
`
`
`Patent Owner’s Alleged Evidence of
`Secondary Considerations
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`82
`
`
`
`Patent Owner’s “Commercial Success” Argument
`Should Be Rejected
`
`Patent Owner has failed to establish a nexus between the challenged claims and
`sales of the shoes cited as alleged evidence of commercial success.
`Previous decisions by the Board and the Federal Circuit are clear that absolute
`sales figures are normally entitled to little if any weight without market share
`data. For example:
`•
`In re Baxter Travenol Labs, 952 F.2d 388, 392 (Fed. Cir. 1991) (“information
`solely on numbers of units sold is insufficient to establish commercial success”).
`In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (declining to find evidence of
`commercial success because “[a]lthough [the inventor’s] affidavit certainly
`indicates that many units have been sold, it provides no indication of whether this
`represents a substantial quantity in this market.”).
`Patent Owner has failed to provide context for the absolute sales numbers
`which it has relied upon. Accordingly, the probative value of this alleged
`evidence is negligible.
`
`•
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`83
`
`
`
`Response to Patent Owner’s Motion to Amend
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`84
`
`
`
`Response to Patent Owner’s Motion to Amend
`IPR2017-01676 (‘035 Patent)
`• The additional limitations of substitute claims 28-30 require laterally-
`extending flexure lines which allow the article of footwear to roll, fold or
`collapse.
`• As explained above, each of the asserted grounds of invalidity result in
`flexible footwear capable of satisfying this functional limitation. As such,
`substitute claims 28-30 are obvious over the prior art of record in this
`proceeding.
`• Furthermore, the metes and bounds of the terms “roll/rolling,” “fold/folding”
`and “collapse” are indefinite as discussed at length in Petitioner’s brief in
`opposition to Patent Owner’s contingent motion to amend.
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`85
`
`
`
`Response to Patent Owner’s Motion to Amend
`IPR2017-01676 (‘035 Patent)
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`86
`
`
`
`Response to Patent Owner’s Motion to Amend
`IPR2017-01676 (‘035 Patent)
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`87
`
`
`
`Response to Patent Owner’s Motion to Amend
`IPR2017-01676 (‘035 Patent)
`
`EX. 1023 – PETITIONER’S DEMONSTRATIVES
`
`88
`
`
`
`Response to Patent Owner’s Motion to Amend
`IPR2017-01680 (‘221 Patent)
`Patent Owner seeks to add substitute claims 21-26. As explained in Petitioner’s
`briefing:
`• Substitute claims 21-23 are rendered obvious by the combination of “Byong-Ryol”
`with “Reebok 2000,” “Nike H1995” or “Nike S1997.”
`• Subst
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