IPR2021-00159
`Patent No. 10,098,412
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`Skechers U.S.A., Inc.,
`
`Petitioner,
`
`v.
`
`Nike, Inc.,
`
`Patent Owner.
`_______________
`
`Case IPR2021-00159
`Patent No. 10,098,412
`_______________
`
`DECLARATION OF KIM B. BLAIR, PHD IN SUPPORT OF PATENT
`OWNER NIKE, INC.’S PRELIMINARY RESPONSE TO PETITIONER
`SKECHERS U.S.A., INC.’S PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 10,098,412
`
`Skechers U.S.A., Inc. v. Nike, Inc.
`IPR2021-00159
`Patent No. 10,098,412
`Ex. 2001
`
`EX. 2001 - Page 1
`
`
`Patent No. 10,098,412
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`Skechers U.S.A., Inc.,
`
`Petitioner,
`
`v.
`
`Nike, Inc.,
`
`Patent Owner.
`_______________
`
`Case IPR2021-00159
`Patent No. 10,098,412
`_______________
`
`DECLARATION OF KIM B. BLAIR, PHD IN SUPPORT OF PATENT
`OWNER NIKE, INC.’S PRELIMINARY RESPONSE TO PETITIONER
`SKECHERS U.S.A., INC.’S PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 10,098,412
`
`Skechers U.S.A., Inc. v. Nike, Inc.
`IPR2021-00159
`Patent No. 10,098,412
`Ex. 2001
`
`EX. 2001 - Page 1
`
`
`
`TABLE OF CONTENTS
`
`IPR2021-00159
`Patent No. 10,098,412
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`SUMMARY OF OPINIONS ........................................................................... 2
`
`III. QUALIFICATIONS ........................................................................................ 2
`
`IV. RELEVANT LEGAL PRINCIPLES .............................................................. 7
`
`V. MATERIALS CONSIDERED ........................................................................ 9
`
`VI.
`
`PERSON OF ORDINARY SKILL IN THE ART .......................................... 9
`
`VII. THE ’412 PATENT ....................................................................................... 10
`
`A.
`
`Description of the ’412 Patent ............................................................. 10
`
`VIII. CLAIM CONSTRUCTION .......................................................................... 13
`
`A.
`
`“Progressively decrease in height from the first protrusion to
`
`the forward-most edge of the article of footwear” (Claims 3, 21) ...... 13
`
`B.
`
`“Offset” (Claim 15) ............................................................................. 14
`
`IX. ASSERTED PRIOR ART ............................................................................. 16
`
`A.
`
`B.
`
`Feshbach .............................................................................................. 16
`
`Lee ....................................................................................................... 18
`
`C. Whiteman ............................................................................................ 19
`
`X.
`
`ANALYSIS OF ALLEGED OBVIOUSNESS OVER FESHBACH IN
`
`VIEW OF WHITEMAN ............................................................................... 21
`
`i
`
`EX. 2001 - Page 2
`
`
`
`IPR2021-00159
`Patent No. 10,098,412
`A POSITA Would Not Have Been Motivated to Combine
`
`A.
`
`Feshbach and Whiteman ..................................................................... 21
`
`B.
`
`The Combination of Feshbach and Whiteman Does Not
`
`Disclose Material Claim Limitations in the Challenged Claims ........ 27
`
`1.
`
`2.
`
`Claims 1 and 15......................................................................... 27
`
`Claim 15 .................................................................................... 31
`
`XI. ANALYSIS OF ALLEGED OBVIOUSNESS OVER LEE IN VIEW
`
`OF WHITEMAN ........................................................................................... 33
`
`A.
`
`A POSITA Would Not Have Been Motivated to Combine Lee
`
`and Whiteman ...................................................................................... 33
`
`B.
`
`The Combination of Lee and Whiteman Does Not Disclose
`
`Material Claim Limitations in the Challenged Claims ....................... 39
`
`1.
`
`Claim 3 ...................................................................................... 39
`
`XII. CONCLUSION .............................................................................................. 42
`
`ii
`
`EX. 2001 - Page 3
`
`
`
`IPR2021-00159
`Patent No. 10,098,412
`
`I, Kim B. Blair, PhD declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained by Nike (“Patent Owner”) as an independent
`
`expert in this inter partes review (“IPR”) proceeding before the Patent Trial and
`
`Appeal Board (“PTAB”), which I understand involves U.S. Patent No. 10,098,412
`
`(the “’412 Patent”). I am being compensated at my usual consulting rate of $400
`
`per hour for my work associated with this matter. No part of my compensation is
`
`dependent on the outcome of this proceeding, and I have no other interest in this
`
`proceeding.
`
`2.
`
`I understand that this proceeding involves the ’412 Patent. I further
`
`understand that the Petitioner, Skechers U.S.A., Inc. (“Petitioner”), raises two
`
`grounds in the Petition for Inter Partes Review. I understand the raised grounds
`
`relate to the following references:
`
`EX1005 U.S. Patent Application Publication No. 2014/0230272 (“Feshbach”)
`
`EX1006 Korean Patent No. 100848718B1 (“Lee”)
`
`EX1007 U.S. Patent No. 9,930,928 (“Whiteman”)
`
`3.
`
`I have been asked to provide my opinions in response to the
`
`Petitioner’s assertion that claims 1-21 of the ’412 Patent would have been rendered
`
`obvious to a person of ordinary skill in the art (“POSITA”) at the time of the
`
`-1-
`
`EX. 2001 - Page 4
`
`
`
`IPR2021-00159
`Patent No. 10,098,412
`invention by Feshbach in view of Whiteman, and that claims 1-7 of the ’412 Patent
`
`would have been rendered obvious to a POSITA at the time of the invention by
`
`Lee in view of Whiteman. My opinions are set forth below.
`
`II.
`
`SUMMARY OF OPINIONS
`
`4.
`
`It is my opinion that the challenged claims 1-21 of the ’412 Patent
`
`would not have been obvious to a POSITA at the time of the invention over
`
`Feshbach in view of Whiteman.
`
`5.
`
`It is my opinion that the challenged claims 1-7 of the ’412 Patent
`
`would not have been obvious to a POSITA at the time of the invention over Lee in
`
`view of Whiteman.
`
`6.
`
`It is my opinion that the obviousness analysis of Petitioner and
`
`Petitioner’s expert, Mr. Grant Delgatty, are flawed.
`
`III. QUALIFICATIONS
`
`7.
`
`With respect to enabling innovation at the intersection of technology
`
`and sports, I have extensive experience utilizing advanced technologies to enhance
`
`all aspects of the sporting experience. As the Founder of STI&E Consulting and
`
`Partnering Lead at Cooper Perkins, Inc., and previously as Senior Manager of
`
`Exponent, Inc., as the Vice President of Business Development and Operations and
`
`the Manager of the Sports Engineering Practice at Cooper Perkins, Inc., and as the
`
`Founding Director of the Sports Innovation Program at MIT (now MIT Sports
`
`-2-
`
`EX. 2001 - Page 5
`
`
`
`IPR2021-00159
`Patent No. 10,098,412
`Tech), I lead the development of new products as well as technologies for sport
`
`performance analyses from early formulation of product concepts to final
`
`prototype design and testing.
`
`8.
`
`Many of my projects have won awards, including MIT departmental
`
`awards, conference best paper awards, and international ispo Academic Challenge
`
`design awards.
`
`9.
`
`My work enjoys extensive media coverage, including features in
`
`Forbes, The Boston Globe, Outside Magazine, and GQ, and programs by CNN,
`
`The NewsHour, The Discovery Channel, NPR, and local network affiliates.
`
`10.
`
`I provide a wide variety of consulting services to the sports industry,
`
`including leading product development projects, conducting performance testing of
`
`existing and prototype products, and creating innovative concepts aimed at
`
`enhancing the experience for sports spectators.
`
`11.
`
`Of particular relevance to this case, I led a number of student capstone
`
`footwear development projects while at MIT. The results of two of these projects
`
`were commercialized by the project sponsor. I am also a co-inventor of a wearable
`
`device for assessing running form (U.S. Patent No. 9,642,415).
`
`12.
`
`In addition, as a member of the board of advisors for emerging
`
`companies, I provide expertise on business and strategic planning, technology
`
`assessment and development, strategic alliances, and raising capital.
`
`-3-
`
`EX. 2001 - Page 6
`
`
`
`IPR2021-00159
`Patent No. 10,098,412
`A recognized expert in innovation and sport technology, I have
`
`13.
`
`spoken at the Lemelson Foundation, the Boston Museum of Science, IDEAS
`
`Boston 2004, the International Congress on Technological and Social Innovation in
`
`Sport (Spain), the University of Nebraska, Purdue University, the University of
`
`Illinois, Rutgers University, Rensselaer Polytechnic Institute, the University of
`
`London, Loughborough University (UK), the SGMA International Business
`
`Intelligence, Tufts University, the MIT Center for Innovation and Product
`
`Development, and the Massachusetts Defense Lawyer’s Association.
`
`14.
`
`I have served as a technical advisor for the United States Olympic
`
`Committee, on the advisory board for the SGMA Sport + Technology
`
`Convergence Conference, and as a member of the Golf Digest Academic Advisory
`
`Panel.
`
`15.
`
`Prior to my work at Exponent, founding STI&E, and my work with
`
`Cooper Perkins, I was the President and Founder of Sports Innovation Group LLC,
`
`a lecturer in the MIT Aeronautics and Astronautics Department, serving as the lead
`
`instructor for a capstone experimental projects course, co-developer of a junior
`
`level advanced dynamics course, and instructor in a graduate structural dynamics
`
`and vibrations course.
`
`16.
`
`Previously, I was a senior scientist and management team member at
`
`Moldyn, Inc., an organization applying aerospace analysis techniques to the fields
`
`-4-
`
`EX. 2001 - Page 7
`
`
`
`IPR2021-00159
`Patent No. 10,098,412
`of biomechanics and computational chemistry. I also served as an aerospace
`
`engineer at the NASA Johnson Space Center.
`
`17.
`
`My professional affiliations include previously serving as Secretary,
`
`President, and Past-President and currently serving as Director: Senior Advisor of
`
`the International Sports Engineering Association. I received an Outstanding
`
`Service Award for recognition of my contributions to the society while serving as
`
`President from 2010-2014. I have served as a member of the editorial board for
`
`the Journal of Sports Engineering and Technology and am currently a reviewer for
`
`the Journal of Sports Engineering.
`
`18.
`
`I have served on the scientific committees for several editions of The
`
`Engineering of Sport Conference and the Asia Pacific Conference on Sports
`
`Technology. In addition, I have served as a Session Chair for the 11th International
`
`Conference on Engineering of Sport.
`
`19.
`
`I am also a lead user of sports and fitness products having trained for
`
`and competed in more than 100 endurance events, including the US National
`
`Triathlon Championships, World Triathlon Championship Qualifier, the Hawaii
`
`Ironman World Championships, and Ironman Austria. I am the current president
`
`and board member of Team Psycho, a New England-based elite triathlon team.
`
`20.
`
`Born and raised in Nebraska, I earned a BA in Psychology and a BS
`
`in Mechanical Engineering at the University of Nebraska. At Purdue University, I
`
`-5-
`
`EX. 2001 - Page 8
`
`
`
`IPR2021-00159
`Patent No. 10,098,412
`earned a MS in Mechanical Engineering and a PhD in Aeronautics and
`
`Astronautics. In 2005, the University of Nebraska awarded me an Alumni
`
`Achievement Award.
`
`21.
`
`I am generally familiar with patents and review patent disclosures
`
`regularly.
`
`22.
`
`My curriculum vitae is attached as Exhibit 1. It includes a listing of all
`
`publications I have authored or co-authored during my career.
`
`23.
`
`I am being compensated at my usual consulting rate of $400 per hour
`
`for my work associated with this matter. My compensation is not contingent in
`
`any way on the opinions I express in this report or the outcome of this matter. I
`
`have no financial interest in the outcome of this matter.
`
`24.
`
`I am not an attorney and offer no legal opinions. In the course of my
`
`work as an engineer and working with or managing teams of engineers, designers
`
`and product developers, I have gained an understanding of the training, knowledge,
`
`skills and abilities of a person skilled in the art of sports product innovation,
`
`engineering, design, and development, and I use this understanding to form my
`
`opinions in this proceeding.
`
`-6-
`
`EX. 2001 - Page 9
`
`
`
`IPR2021-00159
`Patent No. 10,098,412
`
`IV. RELEVANT LEGAL PRINCIPLES
`
`25.
`
`From my experience in product design, as a named inventor on a
`
`patent, and as an expert consultant on several cases involving patent cases, I have
`
`become familiar with legal principles governing U.S. patent law.
`
`26.
`
`I understand that, in this inter partes review, the Petitioner has the
`
`burden of proving that each challenged claim is unpatentable by a preponderance
`
`of the evidence.
`
`27.
`
`I understand that a patent claim is unpatentable if, at the time of the
`
`invention, it would have been obvious to a POSITA to combine the teachings of
`
`the prior art to yield the patent claim. I also understand that it is not required
`
`(although it is acceptable) that each element/limitation of a patent claim be found
`
`in a single reference in order to find a patent claim obvious. Rather, for a patent
`
`claim to be found obvious, all the elements/limitations of the patent claim must be
`
`found in teachings of one or more references that could be combined by a POSITA
`
`with a reasonable expectation of success. I understand that a proper analysis of
`
`whether an invention is unpatentable for obviousness includes a review of the
`
`scope and content of the prior art, the differences between the patent claims at
`
`issue and the prior art, the level of ordinary skill in the field of the invention at the
`
`time of the invention, and other objective considerations.
`
`-7-
`
`EX. 2001 - Page 10
`
`
`
`IPR2021-00159
`Patent No. 10,098,412
`I understand that a showing of obviousness requires some articulated
`
`28.
`
`reasoning with a rational underpinning to support the combination of the
`
`references. I understand that in consideration of the issue of obviousness it is
`
`important to identify whether a reason existed at the time of the invention that
`
`would have led a POSITA to combine elements of the references in a way that
`
`yielded the claimed invention.
`
`29.
`
`I understand that a claim may be considered unpatentable for
`
`obviousness for various reasons. I have been informed that the following
`
`exemplary rationales may support a finding of obviousness:
`
`(cid:120) combining prior art elements according to known methods to yield
`
`predictable results;
`
`(cid:120) simply substituting one known element for another to obtain predictable
`
`results;
`
`(cid:120) use of a known technique to improve similar devices in the same way;
`
`(cid:120) applying a known technique to a known device ready for improvement to
`
`yield predictable results;
`
`(cid:120) choosing from a finite number of identified, predictable solutions with a
`
`reasonable expectation of success;
`
`(cid:120) known work in a field that prompts variations in the work in the same or a
`
`different field that leads to predictable results; and
`
`-8-
`
`EX. 2001 - Page 11
`
`
`
`IPR2021-00159
`Patent No. 10,098,412
`(cid:120) some teaching, suggestion, or motivation in the prior art that would have led
`
`a POSITA to modify a prior art reference or combine multiple prior art
`
`references or teachings to arrive at the claimed invention.
`
`V. MATERIALS CONSIDERED
`
`30.
`
`All of my opinions are based on my knowledge and professional
`
`judgment, and the following documents that I considered:
`
`(cid:120) Petitioner’s Petition for Inter Partes Review of U.S. Patent No. 10,098,412
`
`in IPR2021-00159;
`
`(cid:120) Exhibits 1001-1012; and
`
`(cid:120) other materials discussed herein.
`
`VI. PERSON OF ORDINARY SKILL IN THE ART
`
`31.
`
`In the Petition, Petitioner Skechers U.S.A., Inc. claims that a POSITA
`
`relevant to the ’412 Patent 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
`
`footwear. Such a person of ordinary skill would have at least a general
`
`understanding of functional requirements of footwear as well as general
`
`construction processes and materials used in the manufacturing process of
`
`footwear. See Petition at 18.
`
`-9-
`
`EX. 2001 - Page 12
`
`
`
`IPR2021-00159
`Patent No. 10,098,412
`For purposes of this declaration, I am accepting Petitioner’s
`
`32.
`
`description of a POSITA.
`
`33.
`
`In view of my experience and qualifications noted above, I am well
`
`positioned to opine as to what a POSITA at the time of the invention would
`
`understand and do.
`
`34.
`
`My opinions contained herein are from the perspective of a POSITA.
`
`My opinions reflect how a POSITA would have interpreted the claims, the prior
`
`art, and any available evidence.
`
`VII. THE ’412 PATENT
`
`A.
`
`Description of the ’412 Patent
`
`35.
`
`The ’412 Patent, entitled “Particulate Foam with Other Cushioning,”
`
`is directed to an article of footwear having particulate foam incorporated with other
`
`cushioning. EX1001, Title, 1:23-24.
`
`36.
`
`The ’412 Patent discloses that articles of footwear conventionally
`
`include an upper structure to receive and secure the foot and a sole structure, which
`
`attaches to the bottom portion of the upper and generally includes a layer
`
`arrangement extending between the ground surface and the upper. Id., 1:30-38.
`
`One layer of the sole structure is the outsole, which provides abrasion-resistance
`
`and traction with the ground surface. Id., 1:38-40. Another layer of the sole
`
`structure is the midsole, which is located between the upper and the outsole and is
`
`-10-
`
`EX. 2001 - Page 13
`
`
`
`IPR2021-00159
`Patent No. 10,098,412
`used to provide cushioning for the foot. Id., 1:43-62. The ’412 Patent discloses
`
`that previous midsoles were generally configured as a single slab of polymer foam
`
`materials. However, “creating a single slab of polymer foam that loads in a
`
`gradient manner from soft to responsive is difficult to achieve.” Id., 1:67-2:6.
`
`Polymer foams that provided very soft cushioning suffered from decreased
`
`compressibility and ability of the midsole to attenuate ground-reaction forces after
`
`repeated compressions. Id., 1:62-65. On the other hand, polymer foams that were
`
`very responsive as the slab compresses under gradient loads were too hard and
`
`uncomfortable. Id., 1:65-67.
`
`37.
`
`The invention of the ’412 Patent solved this problem by utilizing a
`
`combination of projections and particulate matter disposed within the cavity to
`
`provide enhanced functioning and cushioning than a conventional midsole. Id.,
`
`8:42-48.
`
`38.
`
`Figures 2 and 3 of the ’412 Patent show an exemplary article of
`
`footwear in accordance with the invention. In this embodiment, the article of
`
`footwear 10 includes an upper 100, outsole 210, and midsole 220. The midsole
`
`220 provides a degree of cushioning to the foot during use of the shoe. Id., 8:32-
`
`35. In addition, the article of footwear 10 includes projections 300 formed from
`
`one or more polymer foam materials “to provide resilient compressibility under an
`
`applied load to attenuate ground-reaction forces.” Id., 8:48-52. The projections
`
`-11-
`
`EX. 2001 - Page 14
`
`
`
`IPR2021-00159
`Patent No. 10,098,412
`300 extend into the cavity 240 located between the outsole 210 and the midsole
`
`220. Id., 8:42-45. The cavity 240 also contains particulate matter 350 which may
`
`comprise spherical foam beads. Id., 8:42-45, 8:52-58. The ’412 Patent discloses
`
`that in some embodiments, the projections 30 may be arranged in repeating rows
`
`with each projection 300 equally spaced from other adjacent projections, while in
`
`other embodiments, the projections 300 “are arranged in alternating repeating rows
`
`to restrict movement or migration of the particulate matter 300.” Id., 9:43-48.
`
`39.
`
`The ’412 Patent discloses that “the geometry (e.g., height, tapering,
`
`cross-sectional area) and the arrangement of the first and second projections 310,
`
`320 extending into the cavity 240 effectuates the dispersion of particulate matter
`
`350 and allows for cushioning from soft to responsive during gradient loading for
`
`the sole structure 200, such as during a walking or a running movement.” Id.,
`
`11:53-59. For instance, tapering the outer surface of the projections and
`
`decreasing the cross-sectional area of the projections controls compressibility and
`
`dictates the responsiveness of the cushioning. Id., 10:39-45. With a smaller cross-
`
`sectional area at the tips of the projections, smaller loads applied to the tip of the
`
`projections will more easily compress. Id., 10:45-49. The remainder of the
`
`projections will only compress when a greater load is applied, thereby creating a
`
`gradient cushioning effect. Id., 10:49-54.
`
`-12-
`
`EX. 2001 - Page 15
`
`
`
`IPR2021-00159
`Patent No. 10,098,412
`Similarly, the ’412 Patent discloses that the height of the protrusions
`
`40.
`
`affects the level of cushioning of the sole structure. Id., 11:53-59. For example, a
`
`greater height (that is, the distal ends of the protrusions extending further from the
`
`inner surface 214 of the outsole 210) allow a higher ratio of particulate matter 350
`
`to reside at the heel portion 16, which provides greater soft cushioning at the heel
`
`during the initial impact. Id., 11:59-12:3. The ’412 Patent specification discloses
`
`that “[w]hile the examples herein show the height being uniform for each of the
`
`first series of projections 310 and the corresponding height being uniform for each
`
`of the second series of projections 320, in some configurations, the heights of
`
`individual ones of either of the series of projections 310, 320 may vary.” Id.,
`
`11:47-52.
`
`VIII. CLAIM CONSTRUCTION
`
`A.
`
`“Progressively decrease in height from the first protrusion to the
`forward-most edge of the article of footwear” (Claims 3, 21)
`
`41.
`
`Petitioner has not expressly proposed a construction for this
`
`limitation, but implicitly suggests that the claim language be construed to
`
`encompass prior art where the height of the protrusions decreases from the first
`
`protrusion to a portion of the shoe between the first protrusion and the forward-
`
`most edge of the article of footwear. I disagree with Petitioner’s claim
`
`construction, as it contradicts the express claim language, which requires that the
`
`-13-
`
`EX. 2001 - Page 16
`
`
`
`IPR2021-00159
`Patent No. 10,098,412
`protrusions progressively decrease in height from the first protrusion to the
`
`forward-most edge of the article of footwear.
`
`42.
`
`I understand that Patent Owner argues that the ordinary and customary
`
`construction of this claim limitation at the time of the invention is “continually
`
`decreasing in height in an incremental manner from the first protrusion to the
`
`forward-most edge of the article of footwear.” This is consistent with what I, as a
`
`POSITA, would understand the term to mean in the context of the ’412 Patent and
`
`based on the ordinary and customary meaning of the term. I have applied this
`
`construction in my analyses set forth in this declaration.
`
`B.
`
`“Offset” (Claim 15)
`
`43.
`
`I understand that Patent Owner argues that the ordinary and customary
`
`construction of “offset” at the time of the invention is “spaced apart in a staggered
`
`configuration such that the protrusions in adjacent rows are not aligned in a parallel
`
`orientation.” This is consistent with what I, as a POSITA, would understand the
`
`term to mean in the context of the ’412 Patent and based on the ordinary and
`
`customary meaning of the term.
`
`44.
`
`Petitioner has proposed that the term “offset” is equivalent to merely
`
`being “spaced apart.” Petition, 58. I disagree with Petitioner’s claim construction.
`
`45.
`
`First, the ’412 Patent specification is consistent with Patent Owner’s
`
`proposed construction. The ’412 Patent describes that “[i]n some examples, the
`
`-14-
`
`EX. 2001 - Page 17
`
`
`
`IPR2021-00159
`Patent No. 10,098,412
`projections 300 are arranged in repeating rows and each projection 300 is equally
`
`spaced from adjacent projections 300. In other examples, the projections 300 are
`
`arranged in alternating repeating rows to restrict movement or migration of the
`
`particulate matter 300.” EX1001, 9:43-48 (emphasis added). This language in the
`
`specification reinforces that the patentee knew how to claim projections that were
`
`merely spaced from adjacent projections, and indeed claimed projections “being
`
`[sp]aced apart from one another along a longitudinal axis of the article of footwear
`
`within the forefoot region” in Claim 1. The patentee deliberately chose not to do
`
`so with respect to the plurality of protrusions “being offset from each other within
`
`the cavity” as recited in Claim 15. A POSITA would understand that having offset
`
`projections, as opposed to projections that were only spaced apart in parallel rows,
`
`would provide the additional benefit of restricting movement of the particulate
`
`matter 350.
`
`46.
`
`Second, Patent Owner’s proposed construction is consistent with the
`
`ordinary and customary meaning of “offset.” Dictionaries at the time of the
`
`invention defined “offset” as placing something out of line, off center, or at an
`
`angle. EX2006, 1009 (defining “offset” as “place out of line”); EX2007, 1503
`
`(defining “offset” as “set at an angle”); EX2008, 854 (defining “offset” as “placed
`
`away from a center line; off center” and “placed at an angle to something”);
`
`EX2009, 398 (defining “offset” as “[a]brupt change in alignment or dimension,
`
`-15-
`
`EX. 2001 - Page 18
`
`
`
`IPR2021-00159
`Patent No. 10,098,412
`either horizontally or vertically”). Thus, a POSITA would have understood that
`
`“offset” requires more than an object being spaced from another item. The
`
`ordinary and customary meaning of offset requires that the object be spaced apart
`
`in a staggered configuration such that adjacent rows are not aligned in a parallel
`
`orientation.
`
`47.
`
`Accordingly, a POSITA would understand “offset” to mean “spaced
`
`apart in a staggered configuration such that the protrusions in adjacent rows are not
`
`aligned in a parallel orientation.” I have applied this construction in my analyses
`
`set forth in this declaration.
`
`IX. ASSERTED PRIOR ART
`
`A.
`
`Feshbach
`
`48.
`
`Feshbach is titled “Cushioned Sole with Air Chamber and Resistance
`
`Protrusions.” EX1005, Title. Feshbach explains that prior shoes were too heavy,
`
`which could cause discomfort when walking and running. Id., ¶ 0003. Some
`
`studies found that “carrying a certain amount of weight on the foot required about
`
`5 to 6 times more energy to carry that same weight on that back.” Id.
`
`49.
`
`Feshbach addresses this problem by “creating air chambers
`
`underneath the insole, preferably in between the outsole and the midsole.” Id., ¶¶
`
`0004, 0013. The air chamber takes the place of much of the material that would
`
`have been occupied by the outsole 106 or the midsole 104, thereby allowing the
`
`-16-
`
`EX. 2001 - Page 19
`
`
`
`IPR2021-00159
`Patent No. 10,098,412
`shoe to be much lighter. Id., ¶ 0020. In addition, Feshbach discloses that “[t]o
`
`maintain lightness, the arch support may be made form a rigid sheet of material.”
`
`Id., ¶ 0019.
`
`50.
`
`Feshbach acknowledged that the air chamber 108, 110 alone could
`
`collapse. Id., ¶ 0023. To prevent the collapse of the air chamber, Feshbach further
`
`discloses that in some embodiments, the air chamber 108, 110 may be lined with
`
`an airtight lining. Alternatively, in other embodiments, “the midsole 104 itself
`
`may be constructed in the form of a sealed bladder with the chamber 108, 110
`
`inside the midsole 104. In other words, the bladder defines the air chamber 108,
`
`110.” Id., ¶ 0021.
`
`51.
`
`Feshbach also discloses a plurality of protrusions 114 that project up
`
`from the outsole 100 into the air chamber 108, 110 to add stability and support
`
`under the heel and the ball of the feet where most pressure is applied. Id., ¶ 0022.
`
`Feshbach discloses that “the heights of each individual protrusion 114 may vary
`
`accordingly so as to maintain a constant gap between the top of the protrusion 114
`
`and the midsole 104 in its natural state, meaning when no weight is applied to the
`
`midsole.” Id., ¶ 0024. The protrusions preferably have a sufficiently thick
`
`diameter so they will not bend or have the longitudinal axis deviate from its normal
`
`direction when pressure is applied. Instead, the protrusions 114 will create “an
`
`internal spring or recoil when pressure is applied along the longitudinal axis”
`
`-17-
`
`EX. 2001 - Page 20
`
`
`
`IPR2021-00159
`Patent No. 10,098,412
`which “prevents the midsole 104 from collapsing into the void created by the air
`
`chambers 108, 110.” Id., ¶ 0026.
`
`52.
`
`Thus, Feshbach discloses that “[t]he combination of a sealed air
`
`chamber 108, 110 and protrusions 114 creates superior comfort and stability while
`
`minimizing the weight of the shoe.” Id., ¶ 0023.
`
`53.
`
`Feshbach does not expressly disclose any problems with shear force in
`
`prior art shoes. Nor would a POSITA have had any reason to modify Feshbach’s
`
`shoe to further help control shear forces.
`
`B.
`
`Lee
`
`54.
`
`Lee is titled “Multifunctional Shoe Sole.” EX1006, Title. Lee
`
`explains that prior art shoe soles had a midsole with a dual structure comprising a
`
`hard upper layer and a soft lower layer. In such prior art shoe soles, “a more active
`
`and effective acupressure effect cannot be obtained” and “the effect of inducing
`
`correct walking cannot be obtained at all.” Id., ¶¶ 6-7.
`
`55.
`
`Lee solves this problem and provides a superior shoe sole by
`
`inventing a midsole composed of a first midsole layer 200a attached to the outsole
`
`that is constructed of a hard material and a second upper midsole layer 200b
`
`constructed of a soft material. Id., ¶ 16. This allows the acupressure effect of the
`
`protrusions to be transmitted to the sole of the foot through the second soft
`
`midsole. Id., ¶ 8.
`
`-18-
`
`EX. 2001 - Page 21
`
`
`
`IPR2021-00159
`Patent No. 10,098,412
`Lee also discloses a plurality of acupressure protrusions 220 that are
`
`56.
`
`provided in the cavity 210 formed on the upper surface of the first midsole 200a.
`
`Id., ¶ 17. Figure 4 shows the relative height of the acupressure protrusions. Id. As
`
`seen in Figure 4, the outer acupressure protrusions are configured to have a lower
`
`height than the inner acupressure protrusions in the portion corresponding to the
`
`arch portion of the sole. Id., ¶ 9. This configuration of the protrusions enables
`
`correct walking, as it will direct the movement of force when walking from the
`
`center portion of the heel to the outer portion of the foot at the arch portion. Id., ¶¶
`
`25, 26.
`
`57.
`
` Furthermore, Lee discloses that in a preferred embodiment, the
`
`second midsole 200b also has a plurality of auxiliary acupressure protrusions 240
`
`formed to be protruding on the upper surface. Id., ¶¶ 11, 22. The auxiliary
`
`acupressure protrusions will enhance the impact absorption function. Id., ¶ 23.
`
`C. Whiteman
`
`58.
`
`U.S. Patent No. 9,930,928 (“Whiteman”) is titled “Sole for a Shoe.”
`
`EX1007, Title. The ’928 Patent was invented by John Whiteman, a Senior
`
`Innovation Designer with the Adidas Innovation Team, and assigned to Adidas
`
`AG. EX.1007; EX2013.
`
`59.
`
`Whiteman is directed towards “reduc[ing] the shearing motions in a
`
`first region of the cushioning element compared to shearing motions in a second
`
`-19-
`
`EX. 2001 - Page 22
`
`
`
`IPR2021-00159
`Patent No. 10,098,412
`region of the cushioning element.” EX1007, Abstract. The embodiments depicted
`
`in Figures 16a, 16b, and 17 are exemplary. The outsole is a control element 1620,
`
`which includes protrusions 1622 and recesses/depressions 1628. Id., 8:27-30. As
`
`shown in Figure 16b, when the shoe touches the ground, the protrusions 1622 press
`
`into the midsole 1630 which comprises randomly arranged particles 1635 of an
`
`expanded material. Id., 8:21-27, 8:42-48. The particles of expanded material 1635
`
`located above the protrusions 1622 are compressed more than the particles of
`
`expanded material 1635 located above the recesses/depressions 1628 of the
`
`outsole. Id., 8:49-53. Thus, the different degree of compression affects the
`
`stretching or shear capacity of the midsole material. Id., 8:53-56.
`
`60.
`
`Although not expressly disclosed in the specification, a POSITA
`
`would have understood that the particles of expanded material that form the
`
`midsole are bonded together into a single integral structure. Notably, Figures 16a,
`
`16b, and 17 do not show any container that is used to hold loose particles of
`
`expanded material. Furthermore, Whiteman discloses that in prior
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
