IPR2019-01042
`U.S. PATENT NO. 9,314,065
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PUMA NORTH AMERICA, INC.,
`
`Petitioner,
`
`v.
`
`NIKE, INC.,
`
`Patent Owner.
`
`
`U.S. Patent No. 9,314,065
`Issue Date: April 19, 2016
`Title: ARTICLE OF FOOTWEAR WITH BASE PLATE
`HAVING STRUCTURE AND STUDS
`
`Case Number: IPR2019-01042
`
`
`
`
`
`PETITIONER’S BRIEF RESPONDING TO PATENT OWNER’S
`ARGUMENTS REGARDING 35 U.S.C. § 314(a) AND 35 U.S.C. § 325(d)
`
`
`U.S. PATENT NO. 9,314,065
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PUMA NORTH AMERICA, INC.,
`
`Petitioner,
`
`v.
`
`NIKE, INC.,
`
`Patent Owner.
`
`
`U.S. Patent No. 9,314,065
`Issue Date: April 19, 2016
`Title: ARTICLE OF FOOTWEAR WITH BASE PLATE
`HAVING STRUCTURE AND STUDS
`
`Case Number: IPR2019-01042
`
`
`
`
`
`PETITIONER’S BRIEF RESPONDING TO PATENT OWNER’S
`ARGUMENTS REGARDING 35 U.S.C. § 314(a) AND 35 U.S.C. § 325(d)
`
`
`
`IPR2019-01042
`U.S. PATENT NO. 9,314,065
`TABLE OF CONTENTS
`
`Page
`
`INSTITUTION SHOULD NOT BE DENIED UNDER § 314(A) ................. 1
`
`INSTITUTION SHOULD NOT BE DENIED UNDER § 325(D) ................. 3
`
`I.
`
`II.
`
`
`
`i
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`
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`IPR2019-01042
`U.S. PATENT NO. 9,314,065
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`
`
`Cases
`
`ABT Sys., LLC v. Emerson Elec. Co.,
`797 F.3d 1350 (Fed. Cir. 2015) ............................................................................ 3
`
`Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) ................................................. 3
`
`E-One, Inc. v. Oshkosh Corp.,
`IPR2019-00162, Paper 16 (PTAB June 5, 2019) ................................................. 2
`
`NHK Spring Co. Ltd. v. Intri-Plex Techs. Inc.,
`IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) ................................................. 2
`
`Polygroup Ltd. MCO v. Willis Elec. Co., Ltd.,
`No. 2018-2137, 2019 WL 2723165 (Fed. Cir. July 1, 2019) ............................... 5
`
`Semiconductor Components Indus., LLC v. Power Integrations, Inc.,
`IPR2018-01811, Paper 11 (PTAB May 13, 2019) ............................................... 1
`
`Statutes
`
`35 U.S.C. § 314 ...................................................................................................... 1, 2
`
`35 U.S.C. § 325 .......................................................................................................... 3
`
`
`
`ii
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`
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`IPR2019-01042
`U.S. PATENT NO. 9,314,065
`LIST OF EXHIBITS
`
`Number
`
`Description of the Exhibit
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`U.S. Patent No. 9,314,065 (the “’065 Patent”)
`
`U.S. Patent Application No. 13/524,044 (the “’044 Application”)
`
`The ’065 Patent File History
`
`U.S. Patent No. 5,461,801 (“Anderton”)
`
`U.S. Patent Pub. No. 2009/0293315 (“Auger”)
`
`Declaration by Darren J. Stefanyshyn, Ph.D, P.Eng
`
`Curriculum vitae of Darren J. Stefanyshyn, Ph.D, P.Eng
`
`Benno M. Nigg, Biomechanics of Running Shoes (1986)
`
`Results of Docket Navigator’s Time to Milestones Search for Hon.
`Leo T. Sorokin, U.S. District Court Judge for the District of
`Massachusetts
`
`Defendant PUMA North America, Inc.’s Motion to Stay Pending
`Inter Partes Review and Memorandum of Reasons in Support, filed
`as Dkt. Nos. 84–85 in NIKE, Inc. v. PUMA North America, Inc.,
`Case No. 1:18-cv-10876 (D. Mass. May 16, 2019)
`
`NIKE, Inc.’s Opposition to PUMA North America, Inc.’s Motion to
`Stay Pending Inter Partes Review, filed as Dkt. No. 88 in NIKE, Inc.
`v. PUMA North America, Inc., Case No. 1:18-cv-10876 (D. Mass.
`May 30, 2019)
`
`iii
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`
`
`IPR2019-01042
`U.S. PATENT NO. 9,314,065
`INSTITUTION SHOULD NOT BE DENIED UNDER § 314(A)
`
`I.
`
`Institution should not be denied under 35 U.S.C. § 314(a) because the
`
`pending District Court litigation is not at a late stage, there is no scheduled trial
`
`date, and a decision by this Board will greatly simplify the issues to be tried.
`
`Document production by both sides is ongoing; fact witness depositions have not
`
`begun; the fact discovery deadline is April 10, 2020; expert reports are not due
`
`until May 8, 2020 and expert discovery does not end until July 8, 2020.1 The
`
`Markman hearing is scheduled for October 17, 2019, so the Board will likely
`
`decide whether to institute before the Court renders its claim constructions. Even if
`
`those constructions are rendered sooner, denial of institution is not required. See
`
`Semiconductor Components Indus., LLC v. Power Integrations, Inc., IPR2018-
`
`01811, Paper 11 at 14, 36 (PTAB May 13, 2019) (adopting district court’s claim
`
`constructions issued after filing of petition). Dispositive motions will not be fully
`
`briefed until August 20, 2020 and a ruling is unlikely prior to this Board’s final
`
`written decision which would be rendered by November 2020.
`
`Despite Patent Owner’s (“PO”) speculation that trial will take place in
`
`October 2020 (Paper 6 at 38, 40), no trial date has yet been set. (Exs. 2004, 2013).
`
`The average time between filing of the complaint and jury trial in a patent
`
`1 The parties have not yet disclosed testifying experts or exchanged expert reports.
`
`PO’s statements regarding Dr. Stefanyshyn are pure speculation. Paper 6 at 39.
`
`
`
`
`
`IPR2019-01042
`U.S. PATENT NO. 9,314,065
`infringement case before the District Court Judge is almost 4 years, not 2 as PO
`
`suggests based on the Local Rule. (Ex. 1009.) PO amended its complaint twice,
`
`most recently in February 2019 (Ex. 2005), which could delay trial further. Based
`
`on the original May 2018 filing date, trial may not take place until early 2022.
`
`(Ex. 1009.) A Final Written Decision will have issued long before then and will
`
`reduce the number of issues for the jury when the case is tried. The present
`
`situation is very different from that in E-One, Inc. v. Oshkosh Corp., IPR2019-
`
`00162, Paper 16 at 12–13 (PTAB June 5, 2019). There, the Board denied
`
`institution pursuant to § 314(a), inter alia, because all of the issues in the Petition
`
`would have been decided by the district court before the IPR concluded. Id. at 20.
`
`Likewise, in NHK Spring Co. Ltd. v. Intri-Plex Techs. Inc., IPR2018-00752,
`
`Paper 8 at 19–20 (PTAB Sept. 12, 2018), the Board denied institution where expert
`
`discovery was nearing its end and trial would surely conclude before any final
`
`written decision. Here, trial will very likely not take place before a final written
`
`decision issues. Because the District Court, the parties, and the experts have not yet
`
`invested substantial resources in the litigation to address issues raised in the
`
`Petition, the Board should not deny institution.
`
`PO should not be permitted to use the institution of this proceeding as both a
`
`shield and a sword. Petitioner filed IPR petitions for 7 of the 10 patents asserted in
`
`the litigation and moved to stay the case pending their resolution. (Ex. 1010.) PO
`
`2
`
`
`
`IPR2019-01042
`U.S. PATENT NO. 9,314,065
`argued against the stay based on the IPRs having not yet been instituted (Ex. 1011
`
`at 4–5). The Court denied the stay motion, without prejudice, for this very reason.2
`
`(Ex. 2011.) PO now argues that this IPR should not be instituted because the
`
`litigation is pending and will resolve the same issues. PO cannot have it both ways.
`
`II.
`
`INSTITUTION SHOULD NOT BE DENIED UNDER § 325(D)
`
`The factors in Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`
`IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential), weigh
`
`against denying institution under 35 U.S.C. § 325(d). Petitioner has presented
`
`different arguments and new evidence not before the Examiners and has shown
`
`how the Examiners erred in their evaluation of that prior art. PO challenges
`
`whether a POSITA would be motivated to combine Auger’s disclosed medial
`
`midfoot bar with Anderton’s reinforcement structure. Paper 6 at 29–31. Petitioner
`
`does not merely “disagree” with the Examiners’ decision to allow the challenged
`
`claims (Paper 6 at 32), but explains that Anderton and Auger both disclose the
`
`goals of increasing traction, imparting stability, providing maneuverability, and
`
`controlling foot motion. Paper 1 at 21–24, 32–33, 36. See, e.g., ABT Sys., LLC v.
`
`Emerson Elec. Co., 797 F.3d 1350, 1360 (Fed. Cir. 2015) (“motivation to combine
`
`prior art references [may be found] in the nature of the problem to be solved”
`
`which “is particularly relevant with simpler mechanical technologies”). During
`
`2 If some or all of the Petitions are instituted, Petitioner will renew its stay motion.
`
`3
`
`
`
`IPR2019-01042
`U.S. PATENT NO. 9,314,065
`examination, PO argued that “Anderton provides a configuration designed to
`
`provide reinforcement while minimizing the amount of bulk added to the sole.”
`
`(Ex. 1003 at 479.) PO failed to explain, then or now, how adding a second
`
`reinforcement rib, i.e., the medial midfoot bar, would add bulk such that
`
`Anderton’s performance characteristics would be sacrificed. See id. at 478–80;
`
`Paper 6 at 31. The Petition relies on new evidence—Dr. Stefanyshyn’s explanation
`
`that a POSITA would know how to vary the molded dimensions of Anderton’s
`
`reinforcement structures to add Auger’s medial midfoot bar to “increase the
`
`strength and stability of [the] sole without excessively increasing its weight.”
`
`(Paper 1 at 25.)
`
`PO argues that Petitioner fails to explain why Anderton’s disclosure of
`
`integrally molding the cleats and reinforcements would suggest to a POSITA to
`
`vary the dimensions of these structures. (Paper 6 at 32.) However, the Petition
`
`explains that “adding the medial midfoot bar of Auger at a position generally
`
`parallel to the lateral midfoot bar of Anderton would be understood [by a POSITA]
`
`to improve the strength, maneuverability, and overall stopping, starting, and
`
`turning ability of the shoe.” Paper 1 at 26. The fact that Anderton and Auger
`
`address the same problems is sufficient motivation to combine these references.
`
`As to Petitioner’s assertion that the “spaced from” limitations are a mere
`
`4
`
`
`
`IPR2019-01042
`U.S. PATENT NO. 9,314,065
`design choice,3 PO merely states that the “Examiners already considered this
`
`combination during prosecution.” (Paper 6 at 33.) However, the Examiners did not
`
`reject any of the “spaced from” claims for lacking novelty (or utility), provide any
`
`remarks to that effect, or entertain arguments to the contrary. See generally
`
`Ex. 1003. Regarding Becton Dickinson factor (f), PO argues that Dr. Stefanyshyn’s
`
`opinions are conclusory and lack rational underpinnings, but Dr. Stefanyshyn
`
`provides facts and explains why the “spaced from” feature amounts to a design
`
`choice, including that, as a matter of design, a POSITA would provide the claimed
`
`space without impacting sole mechanics, the amount of space is undefined and
`
`could be varied without effect, and the ’065 Patent does not articulate a reason for
`
`having a space, nor does it even mention “space.” (Paper 1 at 26–27.)
`
`Dr. Stefanyshyn’s education, knowledge, and experience form the basis for these
`
`opinions. See Polygroup Ltd. MCO v. Willis Elec. Co., Ltd., No. 2018-2137, 2019
`
`WL 2723165, at *4 (Fed. Cir. July 1, 2019) (“[E]vidence of a motivation to
`
`combine need not be found in the prior art references themselves, but rather may
`
`be found in ‘the knowledge of one of ordinary skill in the art . . . .’”). Petitioner has
`
`presented new arguments and evidence and has identified how the Examiners erred
`
`in allowing claim 1 of the ’065 Patent.
`
`3 PO discusses “spaced from” under factors (a)–(c). Petitioner has presented new
`
`arguments as the Examiners did not consider that they are a design choice.
`
`5
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`
`
`Dated: August 30, 2019
`
`
`
`
`
`IPR2019-01042
`U.S. PATENT NO. 9,314,065
`Respectfully submitted,
`
`/Vincent J. Rubino, III/
`
`Vincent J. Rubino, III (Reg. No. 68,504)
`BROWN RUDNICK LLP
`7 Times Square
`New York, New York 10036
`t: (212) 209-4800
`f: (212) 209-4801
`vrubino@brownrudnick.com
`
`COUNSEL FOR PETITIONER
`PUMA NORTH AMERICA, INC.
`
`6
`
`
`
`IPR2019-01042
`U.S. PATENT NO. 9,314,065
`CERTIFICATE OF SERVICE
`
`Copies of PETITIONER’S BRIEF RESPONDING TO PATENT
`
`OWNER’S ARGUMENTS REGARDING 35 U.S.C. § 314(A) AND 35 U.S.C.
`
`§ 325(D) and Exhibits 1009–1011 have been served by electronic service to the
`
`following counsel of record for Patent Owner:
`
`Christopher J. Renk
`Michael J. Harris
`BANNER & WITCOFF, LTD.
`crenk@bannerwitcoff.com
`mharris@bannerwitcoff.com
`bwlitdocket@bannerwitcoff.com
`
`Dated: August 30, 2019
`
`
`
`
`/Vincent J. Rubino, III/
`
`Vincent J. Rubino, III (Reg. No. 68,504)
`BROWN RUDNICK LLP
`7 Times Square
`New York, New York 10036
`t: (212) 209-4800
`f: (212) 209-4801
`vrubino@brownrudnick.com
`
`7
`
`
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