Trials@uspto.gov
`571-272-7822
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` Paper No. 10
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` Entered: October 31, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PUMA NORTH AMERICA, INC.,
`Petitioner,
`
`v.
`
`NIKE, INC.,
`Patent Owner.
`____________
`
`Case IPR2019-01042
`Patent 9,314,065 B2
`____________
`
`
`
`Before MITCHELL G. WEATHERLY, AMANDA F. WIEKER, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`

`

`IPR2019-01042
`Patent 9,314,065 B2
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`
`PUMA North America, Inc. (“Petitioner”) filed a Petition requesting
`
`an inter partes review of claims 1–6 (“challenged claims”) of U.S. Patent
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`No. 9,314,065 B2 (Ex. 1001, “the ’065 patent”). Paper 1 (“Pet.”). NIKE,
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`Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim.
`
`Resp.”). With our authorization, see Paper 7, Petitioner filed a Reply
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`addressing 35 U.S.C. §§ 314(a) and 325(d), and Patent Owner filed a Sur-
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`Reply. Paper 8 (“Reply”); Paper 9 (“Sur-Reply”).
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`We have authority to determine whether to institute an inter partes
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`review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. For the reasons
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`provided below, we do not institute an inter partes review.
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`B. Related Proceeding
`
`The parties identify the following matter related to the ’065 patent
`
`(Pet. 54; Paper 4, 2):
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`NIKE, Inc. v. PUMA North America, Inc., No. 1:18-cv-10876
`(D. Mass.).
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`C. The ’065 Patent
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`
`
`The ’065 patent is titled “Article of Footwear with Base Plate Having
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`Structure and Studs” and issued on April 19, 2016, from U.S. Application
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`No. 13/524,044 (“the ’044 application”), filed June 15, 2012. Ex. 1001, at
`
`codes (21), (22), (45), (54).
`
`
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`The ’065 patent discloses an article of footwear, e.g., a cleated soccer
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`shoe, designed to “optimize propulsion during the first step of sprinting and
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`provide stability and responsiveness while also moderating stud pressure
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`during quick directional changes.” Id. at 1:6–17, 3:65–67, Fig. 1.
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`2
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`

`

`IPR2019-01042
`Patent 9,314,065 B2
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`
`
`Figure 5 of the ’065 patent is reproduced below.
`
`Figure 5 depicts a plane view of the bottom
`surface of an exemplary shoe. Id. at 3:53–54.
`
`
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`The shoe includes base plate 102, which includes forefoot region 107,
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`midfoot region 109, and heel region 111. Id. at 4:27–47. Base plate 102
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`“may be a carrier plate for a structure 118,” which acts as a frame or brace.
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`Id. at 5:3–4.
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`
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`As shown in Figure 5, the base plate includes various features to
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`improve performance of the shoe, including various:
`
`- pads (first medial forefoot pad 120, second medial forefoot pad 122,
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`first lateral forefoot pad 124, second lateral forefoot pad 126, medial
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`heel pad 154, first lateral heel pad 156, second lateral heel pad 158),
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`- bars (medial forefoot bar 128, lateral forefoot bar 130, medial midfoot
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`bar 150, lateral midfoot bar 152),
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`- ribs (first diagonal rib 146, second diagonal rib 148, heel rib 166), and
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`- studs (first medial forefoot stud 132, first lateral forefoot stud 136,
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`second medial forefoot stud 134, second lateral forefoot stud 138,
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`third lateral forefoot stud 140, first center stud 142, second center stud
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`3
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`IPR2019-01042
`Patent 9,314,065 B2
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`144, medial heel stud 160, first lateral heel stud 162, second lateral
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`heel stud 164).
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`Id. at 5:50–60, 6:20–23, 7:3–8, 7:59–60, 8:9–10, 8:32, 8:54, 10:11–15,
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`11:3–4. For example, “[t]ogether, medial midfoot bar 150 and lateral
`
`midfoot bar 152 may provide base plate 102 with torsional stiffness resisting
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`twisting in midfoot region 109.” Id. at 12:47–49.
`
`D.
`
`Illustrative Claim
`
`The ’065 patent includes twelve claims, six of which are challenged.
`
`Claim 1 is the sole challenged independent claim. Claim 1 is illustrative and
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`is reproduced below, with bracketed paragraph letters added.
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`1. An article of footwear comprising:
`
`[a] a base plate including a forefoot region, a heel region,
`a midfoot portion disposed between the forefoot region and the
`heel region, a longitudinal axis extending through the forefoot
`region and heel region, a forward edge, a rearward edge, a medial
`edge, and a lateral edge;
`
`[b] a structure disposed on the base plate, the structure
`including a medial forefoot pad disposed on the forefoot region
`proximate the midfoot portion and the medial edge, a lateral
`forefoot pad disposed on the forefoot region proximate the
`midfoot portion and the lateral edge, a medial heel pad disposed
`on the heel region proximate the medial edge, a first lateral heel
`pad disposed on the heel region proximate the lateral edge, a first
`diagonal rib extending from the medial forefoot pad to the first
`lateral heel pad, a second diagonal rib extending from the lateral
`forefoot pad to the medial heel pad, a medial midfoot bar
`substantially parallel to the longitudinal axis and disposed
`proximate the medial edge, and a lateral midfoot bar substantially
`parallel to the longitudinal axis and disposed proximate the
`lateral edge;
`
`[c] a medial forefoot stud disposed on the medial forefoot
`
`pad;
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`4
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`IPR2019-01042
`Patent 9,314,065 B2
`
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`[d] a medial heel stud disposed on the medial heel pad;
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`[e] a first lateral forefoot stud disposed on the lateral
`forefoot pad; and
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`[f] a first lateral heel stud disposed on the first lateral heel
`
`pad;
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`[g] the first diagonal rib having a first lateral edge
`intersecting with the first lateral heel pad;
`
`[h] the second diagonal rib having a second lateral edge
`intersecting with the first lateral forefoot pad;
`
`[i] the lateral midfoot bar having a third lateral edge;
`
`[j] wherein the medial midfoot bar extends from a first
`point on the first diagonal rib to a second point on the second
`diagonal rib; and
`
`[k] wherein the third lateral edge of the lateral midfoot bar
`intersects with, and terminates at, a third point on the second
`diagonal rib at a forward end of the lateral midfoot bar;
`
`[l] wherein the third lateral edge of the lateral midfoot bar
`intersects with, and terminates at, a fourth point on the first
`diagonal rib at a rearward end of the lateral midfoot bar;
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`[m] wherein the third point is spaced from the lateral
`forefoot pad; and
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`[n] wherein the fourth point is spaced from the first lateral
`heel pad.
`
`Ex. 1001, 12:60–13:39 (emphasis added and elements labeled [a]–[n] to aid
`
`discussion).
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`5
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`IPR2019-01042
`Patent 9,314,065 B2
`
`
`E. Applied References
`
`Petitioner relies upon the following references:
`
`Anderton, U.S. Patent No. 5,461,801, filed August 18,
`1993, issued October 31, 1995 (Ex. 1004, “Anderton”); and
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`Auger et al., U.S. Patent No. 8,056,267 B2, filed May 30,
`2008, issued November 15, 2011 (Ex. 1005, “Auger”).
`
`Pet. 18. Petitioner also relies upon the Declaration of Darren J. Stefanyshyn,
`
`Ph.D., P.Eng. Ex. 1006. Patent Owner supports its Preliminary Response
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`with a Declaration of Kim B. Blair, Ph.D. Ex. 2001.
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`F. Asserted Grounds of Unpatentability
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`Petitioner challenges the patentability of claims 1–6 of the ’065 patent
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`based on the following ground. Pet. 18.
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`Claims Challenged
`1–6
`
`Statutory Basis
`§ 103
`
`Reference(s)
`Anderton and Auger
`
`II. DISCUSSION
`
`A. Claim Construction
`
`For petitions filed on or after November 13, 2018, a claim shall be
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`construed using the same claim construction standard that would be used to
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`construe the claim in a civil action under 35 U.S.C. § 282(b), including
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`construing the claim in accordance with the ordinary and customary
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`meaning of such claim as understood by one of ordinary skill in the art and
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`the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b)
`
`(2018).
`
`Petitioner filed its Petition on May 3, 2019. Paper 1. Thus, we apply
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`the claim construction standard as set forth in Phillips v. AWH Corp., 415
`
`F.3d 1303 (Fed. Cir. 2005) (en banc).
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`Patent 9,314,065 B2
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`
`Only those claim terms that are in controversy need to be construed,
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`and only to the extent necessary to resolve the controversy. Nidec Motor
`
`Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017
`
`(Fed. Cir. 2017); Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
`
`(Fed. Cir. 2011); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`
`803 (Fed. Cir. 1999). We determine that no claim term requires express
`
`construction for purposes of this Decision.
`
`B. Principles of Law
`
`A claim is unpatentable under 35 U.S.C. § 103 if “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 question of obviousness is resolved on the basis of underlying
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`factual determinations, including (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
`
`(3) the level of skill in the art; and (4) objective evidence of non-
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`obviousness.1 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). When
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`evaluating a combination of teachings, we must also “determine whether
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`there was an apparent reason to combine the known elements in the fashion
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`claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn,
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`441, F.3d 977, 988 (Fed. Cir. 2006)). Whether a combination of prior art
`
`
`1 At this stage of the proceeding, Patent Owner has not presented objective
`evidence of non-obviousness.
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`IPR2019-01042
`Patent 9,314,065 B2
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`elements would have produced a predictable result weighs in the ultimate
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`determination of obviousness. Id. at 416–417.
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`“Both anticipation under § 102 and obviousness under § 103 are two-
`
`step inquiries. The first step in both analyses is a proper construction of the
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`claims. . . . The second step in the analyses requires a comparison of the
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`properly construed claim to the prior art.” Medichem, S.A. v. Rolabo, S.L.,
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`353 F.3d 928, 933 (Fed. Cir. 2003). In the context of claims that invoke
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`35 U.S.C. § 112 ¶ 6, “a challenger who seeks to demonstrate that a means-
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`plus-function limitation was present in the prior art must prove that the
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`corresponding structure—or an equivalent—was present in the prior art.”
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`Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299–1300 (Fed.
`
`Cir. 2009) (citing Donaldson Company, Inc., 16 F.3d 1189, 1193 (Fed. Cir.
`
`1994)). “[I]t is firmly established . . . that a structural analysis is
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`required . . . [and] a functional analysis alone will not suffice.” Id.
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`In an inter partes review, the petitioner must show with particularity
`
`why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech.,
`
`Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The
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`burden of persuasion never shifts to Patent Owner. Dynamic Drinkware,
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`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
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`We analyze the challenges presented in the Petition in accordance
`
`with the above-stated principles.
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`C. Level of Ordinary Skill in the Art
`
`Petitioner contends that a person of ordinary skill in the art at the
`
`relevant time would have had “at least an undergraduate degree in consumer
`
`or industrial product design, engineering, or a related field, or at least around
`
`2–4 years of practical work experience in the design and development of
`
`8
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`IPR2019-01042
`Patent 9,314,065 B2
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`athletic footwear.” Pet. 14 (citing Ex. 1006 ¶ 17). Petitioner further
`
`contends that such a person “would have at least a general understanding of
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`functional requirements of cleated footwear as well as general construction
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`processes and materials used in the manufacturing process of cleated
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`footwear.” Id.
`
`Patent Owner does not offer an assessment of the appropriate level of
`
`skill in the art, although Patent Owner’s declarant, Dr. Blair, accepts the
`
`assessment offered by Petitioner. See generally Prelim. Resp.; Ex. 2001
`
`¶¶ 30–31.
`
`For purposes of this Decision, we apply Petitioner’s assessment,
`
`which is consistent with Dr. Stefanyshyn’s testimony. Ex. 1006 ¶ 17.
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`D. 35 U.S.C. § 325(d)
`
`The Director has discretion to deny a petition when “the same or
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`substantially the same prior art or arguments previously were presented to
`
`the Office.” 35 U.S.C. § 325(d).
`
`In evaluating whether to exercise our discretion under § 325(d), we
`
`consider several non-exclusive factors (herein, the “Becton Dickinson
`
`factors”) including:
`
`(a) the similarities and material differences between the asserted
`art and the prior art involved during examination;
`
`(b) the cumulative nature of the asserted art and the prior art
`evaluated during examination;
`
`(c) the extent to which the asserted art was evaluated during
`examination, including whether the prior art was the basis for
`rejection;
`
`(d) the extent of the overlap between the arguments made
`during examination and the manner in which Petitioner relies
`on the prior art or Patent Owner distinguishes the prior art;
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`IPR2019-01042
`Patent 9,314,065 B2
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`
`(e) whether Petitioner has pointed out sufficiently how the
`Examiner erred in its evaluation of the asserted prior art; and
`
`(f) the extent to which additional evidence and facts presented
`in the Petition warrant reconsideration of the prior art or
`arguments.
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`Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586,
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`Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential in relevant part).
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`Patent Owner requests that we deny institution of inter partes review
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`under § 325(d) “because the Petition relies on the same combination of prior
`
`art (Anderton and Auger) that the Examiner applied in the original
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`prosecution.” See, e.g., Prelim. Resp. 1. Although Petitioner acknowledges
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`that the Examiner considered the same prior art offered in the Petition,
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`Petitioner contends that it “provides new evidence and argument” that
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`warrant consideration. See, e.g., Pet. 6–11, 24–27.
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`Upon review of the relevant prosecution history and the parties’
`
`arguments, we find that the Becton Dickinson factors, when considered as a
`
`whole, weigh in favor of exercising our discretion under 35 U.S.C. § 325(d)
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`to deny institution of an inter partes review.
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`1. Becton Dickinson Factor (a)
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`Becton Dickinson factor (a) considers “the similarities and material
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`differences between the asserted art and the prior art involved during
`
`examination.” Becton Dickinson, Paper 8 at 17.
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`The parties agree that the prior art asserted in the Petition is identical
`
`to that involved during examination. Pet. 6, 18; Prelim. Resp. 27.
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`Accordingly, this factor weighs in favor of exercising discretion to
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`deny institution.
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`10
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`IPR2019-01042
`Patent 9,314,065 B2
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`2. Becton Dickinson Factor (b)
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`Becton Dickinson factor (b) considers “the cumulative nature of the
`
`asserted art and the prior art evaluated during examination.” Becton
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`Dickinson, Paper 8 at 17.
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`Because the asserted prior art is identical to that involved during
`
`examination, we need not consider Becton Dickinson factor (b). See NHK
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`Spring Co., Ltd. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 13
`
`(PTAB Sept. 12, 2018) (precedential).
`
`Accordingly, this factor is neutral.
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`3. Becton Dickinson Factor (c)
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`Becton Dickinson factor (c) considers “the extent to which the
`
`asserted art was evaluated during examination, including whether the prior
`
`art was the basis for rejection.” Becton Dickinson, Paper 8 at 17.
`
`The parties agree that the Examiner twice rejected claims 1–6 as
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`obvious over the combined teachings of Anderton and Auger, under
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`35 U.S.C. § 103, which is the same ground of unpatentability asserted in the
`
`Petition. Compare Pet. 18, with, e.g., Ex. 1003, 194–196 (Non-Final
`
`Rejection, including claims 1–6), 442–444 (Final Rejection, including
`
`claims 1–6); Pet. 6–11; Prelim. Resp. 7–12, 27.
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`Accordingly, this factor weighs in favor of exercising discretion to
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`deny institution.
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`4. Becton Dickinson Factor (d)
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`Becton Dickinson factor (d) considers “the extent of the overlap
`
`between the arguments made during examination and the manner in which
`
`Petitioner relies on the prior art or Patent Owner distinguishes the prior art.”
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`11
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`IPR2019-01042
`Patent 9,314,065 B2
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`Becton Dickinson, Paper 8 at 17–18. Therefore, we compare the Examiner’s
`
`application of the prior art with the Petitioner’s application of the prior art in
`
`the Petition.
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`In a Non-Final Rejection, the Examiner relied upon Anderton as
`
`teaching every limitation of challenged claims 1–6, except the “medial
`
`midfoot bar.” Ex. 1003, 194–196. For this limitation, the Examiner relied
`
`upon Auger’s teachings. Id. at 195. The Examiner determined that “[i]t
`
`would have been obvious to one of ordinary skill in the art at the time of the
`
`invention to have provided a medial midfoot bar, as taught by Auger, to the
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`base plate of Anderton in order to provide[] increased support to the medial
`
`midfoot portion.” Id. In response, the applicant amended the claims. Id.
`
`at 224–231. Following the amendment, the Examiner entered a Final
`
`Rejection, again relying upon Auger for the “medial midfoot bar” limitation.
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`Id. at 442–444 (same reasoning of “increased support”).
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`In an After-Final amendment, the applicant further amended the
`
`claims, by adding the “spaced apart” limitations. Id. at 466–474; see supra
`
`Section I.D (claim 1, limitations [m] and [n]). In distinguishing the amended
`
`claims, the applicant argued:
`
`Applicant’s claimed configuration of lateral midfoot bar (152)
`intersecting the diagonal ribs (146 and 148) spaced from (and
`therefore medially of) the lateral forefoot stud and the lateral heel
`stud, Applicant’s lateral midfoot bar provides a relatively less
`significant degree of reinforcement. However, Applicant
`provides a second midfoot bar (i.e., medial midfoot bar 150), and
`thus, lateral midfoot bar 152 need not be as robust as the
`reinforcement rib 18 of Anderton, which must supplement the
`reinforcement of ribs 12 and 13 all by itself. Applicant’s claimed
`configuration opts to use two midfoot bars, one on each side of
`the shoe, in order to provide a more symmetrical reinforcement
`of the midfoot region.
`
`12
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`

`IPR2019-01042
`Patent 9,314,065 B2
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`
`Anderton provides a configuration designed to provide
`reinforcement while minimizing the amount of bulk added to the
`sole. Accordingly, Anderton opts to use a single, robust
`reinforcement rib 18 to supplement the support provided by ribs
`12 and 13.
`
`Ex. 1003, 479 (paragraph break added). After this amendment, the applicant
`
`and the Examiner participated in an interview, in which “[d]ifferences
`
`between the instant application and the prior art of record were discussed,
`
`including the intersection of the midfoot bars with the diagonal ribs (outer
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`edge of bar intersects diagonal rib, portion of diagonal rib extending past
`
`intersection), and the distinction between the pads and the studs.” Id.
`
`at 515–517. Following the interview, the Examiner allowed, inter alia,
`
`claims 1–6. Id. at 518–528.
`
`As in prosecution before the Examiner, Petitioner also contends that
`
`Anderton teaches every limitation of the challenged claims, except the
`
`“medial midfoot bar,” for which Petitioner also relies upon Auger. See, e.g.,
`
`Pet. 22–24 (summarizing Auger’s teachings regarding a medial midfoot bar),
`
`25–26 (summarizing Dr. Stefanyshyn’s opinion that “adding the medial
`
`midfoot bar of Auger to . . . Anderton would not materially alter the
`
`fundamental operating principle”), 27–54; see also Prelim. Resp. 28–29
`
`(comparing the Examiner’s mapping to Petitioner’s mapping).
`
`During prosecution, the Examiner determined that it would have been
`
`obvious to incorporate Auger’s medial midfoot bar into Anderton to provide
`
`“increased support” in the midfoot region. See, e.g., Ex. 1003, 195.
`
`Similarly, in the Petition, Petitioner contends that this same modification
`
`would have been obvious “to provide a structural reinforcement at the
`
`medial midfoot region to improve the pronation control and stability of the
`
`13
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`IPR2019-01042
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`cleated shoe.” Pet. 37 (citing Ex. 1006 ¶ 37); see also id. at 32 (“to improve
`
`traction”), 34 (to provide “improved stability and responsiveness”), 36 (to
`
`provide “pronation control”). We agree with Patent Owner that Petitioner’s
`
`reasoning is substantially the same as the Examiner’s, albeit with slightly
`
`different wording. Prelim. Resp. 30; Sur-Reply 1–2.
`
`Thus, there is a high degree of overlap between the arguments made
`
`during examination and the manner in which Petitioner relies upon the prior
`
`art. Specifically, the Examiner and Petitioner rely upon the same references,
`
`for the same claim limitations. Indeed, the Examiner and Petitioner propose
`
`the same modification of those references, i.e., incorporating Auger’s medial
`
`midfoot bar into Anderton. Moreover, the Examiner and Petitioner provide
`
`substantially the same rationale for this modification—to provide the
`
`midfoot region with either “increased support,” or with increased “structural
`
`reinforcement,” “traction,” and “stability.”
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`Accordingly, this factor weighs in favor of exercising discretion to
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`deny institution.
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`5. Becton Dickinson Factor (e)
`
`Becton Dickinson factor (e) considers “whether Petitioner has pointed
`
`out sufficiently how the Examiner erred in its evaluation of the asserted prior
`
`art.” Becton Dickinson, Paper 8 at 18.
`
`The Petition identifies two purported errors in the Examiner’s
`
`evaluation of Anderton and Auger. Pet. 24–27. First, Petitioner contends,
`
`the Examiner erred by allowing the Challenged Claims because
`a person of ordinary skill would integrally mold the medial
`midfoot bar of Auger, as an additional reinforcement structure,
`with the lateral midfoot bar and diagonal ribs of Anderton to
`improve traction, and could vary the molded dimensions of the
`
`14
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`IPR2019-01042
`Patent 9,314,065 B2
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`
`reinforcement structures to control the cumulative weight of such
`structures.
`
`Id. at 26; see also Reply 4 (same argument). Second, Petitioner contends
`
`that “the Examiner erred because the ‘spaced from’ limitations added to
`
`claim 1 during prosecution were design choices known to persons of skill in
`
`the art that do not confer novelty and do not make the Challenged Claims
`
`non-obvious.” Pet. 27. We address these allegations of error in turn.
`
`First, we have considered Petitioner’s argument that a skilled artisan
`
`would have varied the dimensions of the reinforcement structures to control
`
`for the added weight of Auger’s medial midfoot bar. Id. at 26. However,
`
`this does not identify error on the Examiner’s part. Whether a skilled artisan
`
`would have known how to implement a modification does not address the
`
`question of whether the modification would have been obvious in the first
`
`place. In other words, that a skilled artisan could have successfully
`
`controlled for the weight associated with adding Auger’s medial midfoot bar
`
`to Anderton’s device does not speak to why such an artisan would have had
`
`reason to add the bar to begin with. See Belden Inc. v. Berk-Tek LLC, 805
`
`F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a
`
`skilled artisan not only could have made but would have been motivated to
`
`make the combinations or modifications of prior art to arrive at the claimed
`
`inventions.”); Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993
`
`(Fed. Cir. 2017) (stating that “it is not enough” to show that “a skilled
`
`artisan, once presented with the two references, would have understood that
`
`they could be combined”); see also Sur-Reply 2. As discussed above, the
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`Examiner considered whether it would have been obvious to incorporate
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`Auger’s medial midfoot bar into Anderton, for the reason of increased
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`support, as also suggested by Petitioner. Nonetheless, the Examiner
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`determined that the claims as a whole would not have been obvious over this
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`exact combination of prior art references, regardless of this reasoning.
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`Petitioner disagrees with that determination, but has not articulated how or
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`why the Examiner erred.
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`In its Reply, Petitioner argues that it “does not merely ‘disagree’ with
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`the Examiners’ decision to allow the challenged claims, but explains that
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`Anderton and Auger both disclose the goals of increasing traction, imparting
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`stability, providing maneuverability, and controlling foot motion.” Reply 3
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`(citing Prelim. Resp. 32). According to Petitioner, “[t]he fact that Anderton
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`and Auger address the same problems is sufficient motivation to combine
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`these references.” Id. at 3–4.2
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`We disagree. This fact bears more on the question of whether the
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`references are analogous than whether there would have been reason to
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`combine them. Demonstrating that references are analogous and relevant to
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`the problem being solved is not sufficient to establish that a skilled artisan
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`would have had reason to combine them in the manner set forth in the claim.
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`See Securus Techs., Inc. v. Global Tel*Link Corp., 701 Fed. App’x 971, 977
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`(Fed. Cir. 2017) (unpublished) (“[A] broad characterization of [two prior art
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`references] as both falling within the same alleged field . . . without more, is
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`not enough for [Petitioner] to meet its burden of presenting a sufficient
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`rationale to support an obviousness conclusion.”); Microsoft Corp. v. Enfish,
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`LLC, 662 Fed. App’x 981, 990 (Fed. Cir. 2016) (unpublished) (“[The] Board
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`correctly concluded that [the petitioner] did not articulate a sufficient
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`2 This rationale was not presented in the Petition. See 37 C.F.R. § 41.23(b).
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`motivation to combine. With respect to [certain challenged claims], [the
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`petitioner] gave no reason for the motivation of a person of ordinary skill to
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`combine [the two references] except that the references were directed to the
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`same art or same techniques.”). As such, this does not demonstrate error in
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`the Examiner’s evaluation of the prior art.
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`
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`Second, we have considered Petitioner’s argument that a skilled
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`artisan would have recognized that the “spaced from” limitations “were
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`design choices known to persons of skill in the art that do not confer novelty
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`and do not make the Challenged Claims non-obvious.” Pet. 27. Petitioner
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`relies upon Dr. Stefanyshyn’s testimony that such spacing was a matter of
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`“aesthetic design choice,” and that the ’065 patent does not define the
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`quantity of space required. Ex. 1006 ¶¶ 46–47. As such, Dr. Stefanyshyn
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`opines that a skilled artisan may provide any spacing when integrally
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`molding the base plate, wherein such spacing would not affect mechanics of
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`the sole. Ex. 1006 ¶ 47. Petitioner also states that “Dr. Stefanyshyn notes
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`that the ’044 Application does not articulate any description of or reason for
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`having a space, and in fact, is devoid of the term ‘space.’” Pet. 27 (citing
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`Ex. 1006 ¶ 47; Ex. 1002).
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`We are not persuaded that the Examiner erred as alleged by Petitioner.
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`First, we disagree with Petitioner’s suggestion that the prosecution history
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`“does not articulate any description of or reason for having a space.” Id.
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`This is not supported by the cited testimony of Dr. Stefanyshyn. Ex. 1006
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`¶¶ 46–48. Moreover, as discussed above, the applicant explained the reason
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`for the claimed spacing, when amending the claims.
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`Applicant’s claimed configuration of lateral midfoot bar (152)
`intersecting the diagonal ribs (146 and 148) spaced from (and
`therefore medially of) the lateral forefoot stud and the lateral heel
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`stud, Applicant’s lateral midfoot bar provides a relatively less
`significant degree of reinforcement. However, Applicant
`provides a second midfoot bar (i.e., medial midfoot bar 150), and
`thus, lateral midfoot bar 152 need not be as robust as the
`reinforcement rib 18 of Anderton, which must supplement the
`reinforcement of ribs 12 and 13 all by itself. Applicant’s claimed
`configuration opts to use two midfoot bars, one on each side of
`the shoe, in order to provide a more symmetrical reinforcement
`of the midfoot region.
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`Ex. 1003, 479 (emphasis added). Thus, the applicant explained that the
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`claimed spacing results in “a relatively less significant degree of
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`reinforcement” at the lateral midfoot bar, which is accounted for by the
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`inclusion of a medial midfoot bar, and wherein the two bars together provide
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`“more symmetrical reinforcement of the midfoot region.” Id.
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`The Examiner considered this argument regarding the impact of the
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`spacing on the necessity for, and operation of, the lateral and medial support
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`bars, as contrasted to the operation of Anderton’s single bar arrangement,
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`and allowed the claims. Id. at 515–517 (Examiner’s statement that
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`“[d]ifferences between the instant application and the prior art of record
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`were discussed, including the intersection of the midfoot bars with the
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`diagonal ribs,” where the intersections occur at the claimed third and fourth
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`points, as recited in the “spaced from” limitations); see also id. at 476 (the
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`applicant stating, “[a]s acknowledged by the Examiner during the interview,
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`Anderton does not teach that the midfoot bars, particularly the lateral
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`midfoot bar, intersects the diagonal ribs some distance from the midfoot
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`studs/pads and some distance from the heel studs/pads”); contra Reply 5.
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`Despite citing this portion of the prosecution history, neither Petitioner nor
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`Dr. Stefanyshyn address this discussion of the claimed spacing. Pet. 45
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`(citing Ex. 1003, 217–243, 463–482, 515–517, 527–529), 46 (same);
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`Ex. 1006 ¶¶ 46–48. Accordingly, the prosecution history casts doubt on
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`Petitioner’s contention that the “spaced from” limitations were obvious
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`design choices, and that the Examiner erred in failing to so recognize.
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`Moreover, neither Petitioner nor Dr. Stefanyshyn sufficiently support
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`the argument that the “spaced from” limitations were merely a matter of
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`aesthetic design choice. Pet. 26–27, 43–47; Ex. 1006 ¶¶ 46–47.
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`Dr. Stefanyshyn testifies that this spacing was an obvious aesthetic design
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`choice, and that a skilled artisan “may provide at least some minimal
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`spacing,” and that doing so would not harm sole mechanics. Ex. 1006 ¶ 47.
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`However, Dr. Stefanyshyn fails to identify any fact-based reasoning to
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`support this statement, and fails to offer any affirmative reason why a skilled
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`artisan would have made the specific design choice reflected in the claims.
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`That the modification would not be detrimental to sole mechanics is not
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`sufficient to demonstrate why a skilled artisan would have been motivated to
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`make this purported “design choice.” See Cutsforth, Inc. v. Motivepower,
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`Inc., 636 Fed. App’x 575, 578 (Fed. Cir. 2016) (unpublished) (“Merely
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`stating that a particular placement of an element is a design choice does not
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`make it obvious. The Board must offer a reason for why a person of
`
`ordinary skill in the art would have made the specific design choice to locate
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`the spring on the mounting block.”) (emphasis added); Prelim. Resp. 35–36;
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`contra Reply 5.
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`Accordingly, this factor weighs in favor of exercising discretion to
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`deny institution.
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`6. Becton Dickinson Factor (f)
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`Becton Dickinson factor (f) considers “the extent to which additional
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`evidence and facts presented in the Petition warrant reconsideration of the
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`prior art or arguments.” Becton Dickinson, Paper 8 at 18.
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`The parties agree that Dr. Stefanyshyn’s declaration is additional
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`evidence that was not before the Examiner. Pet. 24–27; Prelim. Resp. 33.
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`However, as discussed in our evaluation of Becton Dickinson factor (e),
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`Dr. Stefanyshyn’s testimony that a skilled artisan would have known how to
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`control for the weight associated with Auger’s medial midfoot bar is
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`irrelevant to why such an artisan would have d