Morgan Chu
`mchu@irell.com
`Samuel K. Lu
`slu@irell.com
`C. Maclain Wells
`mwells@irell.com
`Thomas C. Werner
`twerner@irell.com
`Jonathan Lindsay
`jlindsay@irell.com
`Conor Tucker
`ctucker@irell.com
`IRELL & MANELLA LLP
`1800 Avenue Of The Stars, Suite 900
`Los Angeles, CA 90067
`Telephone: (310) 277-1010
`Facsimile: (310) 203-7199
`Attorneys for Defendant
`and Counterclaim-Plaintiff
`Skechers U.S.A, Inc.
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`NIKE, INC.,
`
`Case No. 19-cv-09230-MWF(JDEx)
`
`Plaintiff,
`
`vs.
`
`SKECHERS U.S.A., INC.,
`
`Defendant.
`
`SKECHERS’ PRELIMINARY
`INVALIDITY CONTENTIONS
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`Skechers U.S.A., Inc. v. Nike, Inc.
`IPR2021-00159
`Patent No. 10,098,412
`Ex. 2012
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`TABLE OF CONTENTS
`
`B.
`
`C.
`
`D.
`
`Page
`INTRODUCTION...........................................................................................1
`PRIORITY DATE OF THE ASSERTED PATENTS AND
`CLAIMS..........................................................................................................1
`’420 PATENT .................................................................................................2
`A.
`Prior Art References..............................................................................2
`1.
`Prior Art Patents and Publications..............................................2
`2.
`Prior Art Products.......................................................................3
`Invalidity Under 35 U.S.C. §§ 102 and 103 .........................................4
`1.
`Anticipation ................................................................................5
`2.
`Obviousness................................................................................6
`Charts Identifying Disclosure in Prior Art Invalidating
`Asserted Claims ..................................................................................11
`Invalidity Under 35 U.S.C. § 112 .......................................................12
`1.
`Legal Background Regarding The Indefiniteness,
`Enablement, And Written Description Requirements..............12
`Invalidity Grounds Under 35 U.S.C. § 112..............................13
`a.
`Lack of Enablement And Written Description
`Under 35 U.S.C. § 112 ¶ 1 .............................................14
`Indefiniteness Under 35 U.S.C. § 112 ¶ 2......................15
`b.
`’412 PATENT ...............................................................................................16
`A.
`Prior Art References............................................................................16
`1.
`Prior Art Patents and Publications............................................16
`2.
`Prior Art Products.....................................................................18
`Invalidity Under 35 U.S.C. §§ 102 and 103 .......................................19
`1.
`Anticipation ..............................................................................21
`2.
`Obviousness..............................................................................21
`
`2.
`
`B.
`
`I.
`II.
`
`III.
`
`IV.
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`C.
`
`D.
`
`Page
`
`Charts Identifying Disclosure in Prior Art Invalidating
`Asserted Claims ..................................................................................26
`Invalidity Under 35 U.S.C. § 112 .......................................................27
`1.
`Legal Background Regarding The Indefiniteness,
`Enablement, And Written Description Requirements..............27
`Invalidity Grounds Under 35 U.S.C. § 112..............................28
`a.
`Lack of Enablement And Written Description
`Under 35 U.S.C. § 112 ¶ 1 .............................................29
`Indefiniteness Under 35 U.S.C. § 112 ¶ 2......................30
`b.
`DOCUMENT PRODUCTION ACCOMPANYING
`PRELIMINARY INVALIDITY CONTENTIONS ......................................31
`VI. OTHER RESERVATIONS AND EXPLANATIONS .................................32
`
`2.
`
`V.
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`I.
`
`INTRODUCTION
`Pursuant to Patent L.R. 3-3 and 3-4, as adopted by the Court’s Order Setting
`Pretrial Deadlines (ECF No. 47), and in accordance with the Court’s Order on
`Skechers U.S.A., Inc.’s Ex Parte Third Request for Extension of Time (ECF No.
`63), Defendant Skechers U.S.A., Inc. (“Skechers” or “Defendant”) provides these
`Preliminary Invalidity Contentions to Plaintiff Nike, Inc. (“Nike” or “Plaintiff”) for
`the following patents (collectively, the “Asserted Patents”) and claims (collectively,
`the “Asserted Claims”) identified as asserted in Nike’s Disclosure of Asserted
`Claims and Infringement Contentions served on October 5, 2020 (the “Infringement
`Contentions”):
`! U.S. Patent No. 7,401,420 (“the ’420 Patent”) — Claims 14-17 (the “’420
`Asserted Claims”)
`! U.S. Patent No. 10,098,412 (“the ’412 Patent”) — Claims 1-7 (the “’412
`Asserted Claims”)
`Skechers addresses the invalidity of the Asserted Claims below and concludes
`with a description of the accompanying document production and identification of
`additional reservations and explanations. These Preliminary Invalidity Contentions
`use the acronym “POSITA” to refer to a person having ordinary skill in the art to
`which the claimed inventions pertain.
`II.
`PRIORITY DATE OF THE ASSERTED PATENTS AND CLAIMS
`Nike asserts the following priority dates for all Asserted Claims in its
`Infringement Contentions:
`! The ’420 Patent is entitled to a priority date of December 23, 2003.
`! The ’412 Patent is entitled to a priority date of September 24, 2015.
`It is Nike’s burden to show entitlement to its asserted priority dates, and
`Skechers asserts that Nike has failed to meet that burden.
`For example, the ’412 Patent claims priority to Provisional Application Nos.
`62/222,816, 62/222,873, 62/222,832, 62/222,581, 62/222,842, and 62/222,882, each
`
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`filed on September 24, 2015, but Nike has not shown that the ’412 Asserted Claims
`are supported by those application.
`Moreover, the ’420 Patent claims priority to Provisional Application No.
`60/531,674, filed on December 23, 2003, but Nike has not shown that the ’420
`Asserted Claims are supported by that application.
`III.
`’420 PATENT
`Prior Art References1
`A.
`Skechers identifies the following prior art presently known to Skechers to
`anticipate the ’420 Asserted Claims under at least 35 U.S.C. §§ 102(a), (b), (e),
`and/or (g), either expressly or inherently as understood by a POSITA, and/or to
`render obvious under 35 U.S.C. § 103, either alone or in combination.
`1.
`Prior Art Patents and Publications2
`Date of Issue
`or Publication
`Mar. 17, 2004
`Aug. 27, 2002
`2005
`
`Effective
`Filing Date
`Sep. 13, 2002
`Feb. 20, 2001
`
`Prior Art
`
`EP 1 397 972 A1
`JP2002238613 A
`Wood, Simon. Sneaker Freaker: The Book:
`2002-05. Berkeley Publishing Group, 2005
`U.S. Patent No. 900,867
`U.S. Patent No. 4,183,156
`U.S. Patent No. 5,092,060
`U.S. Patent No. 5,155,927
`U.S. Patent No. 5,220,737
`U.S. Patent No. 5,287,638
`U.S. Patent No. 5,313,717
`
`1 To the extent one or more prior art patents, publications, or products are
`identified in the claim charts attached hereto but are not included in the tables and
`lists below, those prior art patents, publications, or products should also be considered
`as prior art to the ’420 Patent.
`2 Skechers incorporates by reference all prior art references cited in the patents
`and publications listed herein and/or their file histories.
`
`June 24, 1907
`Oct. 13, 1908
`Jan. 14, 1977
`Jan. 15, 1980
`Mar. 3, 1992 May 24, 1989
`Oct. 20, 1992
`Feb. 20, 1991
`Jun. 22, 1993
`Sep. 27, 1991
`Feb. 22, 1994
`Jan. 28, 1992
`May 24, 1994 Dec. 20, 1991
`
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`Prior Art
`U.S. Patent No. 5,363,570
`U.S. Patent No. 5,575,088
`U.S. Patent No. 5,595,004
`U.S. Patent No. 6,127,010
`U.S. Patent No. 6,158,149
`U.S. Patent No. 6,508,017
`U.S. Patent No. 6,665,958
`U.S. Patent No. 6,754,982
`U.S. Patent No. 6,918,198
`U.S. Patent No. 7,254,906
`U.S. Patent App. Pub. No. 2011/0271553 A1
`Int'l Pub. No. WO 99/26504
`
`Effective
`Date of Issue
`Filing Date
`or Publication
`Feb. 4, 1993
`Nov. 15, 1994
`Sep. 27, 1991
`Nov. 19, 1996
`Jan. 21, 1997 Mar. 30, 1994
`Oct. 3, 2000
`Aug. 18, 1995
`Dec. 12, 2000 Nov. 28, 1994
`Jan. 21, 2003 Aug. 20, 1998
`Dec. 23, 2003
`Sep. 17, 2001
`Jun. 29, 2004 Nov. 30, 2001
`Jul. 19, 2005 Aug. 18, 2003
`Aug. 14, 2007
`Feb. 24, 2003
`Nov. 10, 2011 May 7, 2010
`Jun. 3, 1999
`Nov. 25, 1997
`
`Skechers additionally identifies and relies on patent or publication references
`that describe or are otherwise related to the prior art products identified below.
`2.
`Prior Art Products
`Skechers also contends that the asserted claims of the ’420 Patent are invalid
`based on public knowledge and uses and/or offers for sale or sales of products that
`are prior art under 35 U.S.C. § 102(a) and/or (b); and/or prior inventions made in the
`United States by other inventors who had not abandoned, suppressed, or concealed
`them under 35 U.S.C. § 102(g), and that anticipate or render obvious under 35
`U.S.C. § 103 the asserted claims.
`The following lists prior art products that invalidate under 35 U.S.C. § 102(a),
`(b) and/or (g) or render obvious under 35 U.S.C. § 103 the asserted claims by the
`name of the item, and Skechers may rely on all versions of the following prior art
`products commercially sold, publicly known or used before the priority date of the
`’420 Patent, including documents describing the same:
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`Prior Art Product
`Nike Air Max 97
`Nike Air Max 98
`Nike Air Max 98 TL
`Nike Air Max Deluxe
`Nike Air Tuned Max
`Nike Air Max 2000
`Nike Air Max 2003
`
`Date of Public
`Use
`1997
`1998
`1998
`1999
`1999
`2000
`2003
`
`Skechers’ positions with respect to these references are stated on information
`and belief, and are supported by the information and documents that will be
`produced by Skechers, Nike, and/or third parties. As discovery is not complete,
`Skechers continues to investigate these products and other relevant products,
`including those used, sold, and/or offered for sale by Nike, third parties, and
`Skechers.
`Invalidity Under 35 U.S.C. §§ 102 and 103
`B.
`Nike asserts claims 14-17 of the ’420 Patent. All of those claims are invalid
`because they fail to meet one or more of the requirements for patentability. The
`individual bases for invalidity are provided below and in the attached claim charts.
`Each of the foregoing listed prior art documents, the underlying work, and/or the
`underlying apparatus or method qualifies as prior art under one or more sections of
`35 U.S.C. § 102 and/or 35 U.S.C. § 103.
`Although Skechers has identified at least one citation per limitation for each
`reference, each and every disclosure of the same limitation in the same reference is
`not necessarily identified. Rather, in an effort to focus the issues, Skechers has
`generally cited representative portions of identified references, even where a
`reference may contain additional support for a particular claim element. In addition,
`POSITAs generally read a prior art reference as a whole and in the context of other
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`publications and literature. Thus, to understand and interpret any specific statement
`or disclosure within a prior art reference, such persons would rely on other
`information within the reference, along with other publications and their general
`scientific knowledge. Skechers may rely upon uncited portions of the prior art
`references and on other publications and expert testimony to provide context, and as
`aids to understanding and interpreting the portions that are cited. Skechers may also
`rely on the prior art of record for any permissible purpose, including prior art
`discussed in the ’420 Patent specification itself, including to show that the ’420
`Patent is anticipated or obvious, show the state of the art, show motivation to
`combine a reference with one or more other references, and to show the proper
`scope of the claims. Skechers may also rely on uncited portions of the prior art
`references, other disclosed publications, and the testimony of experts to establish
`that a POSITA would have been motivated to modify or combine certain of the cited
`references so as to render the claims obvious.
`Skechers incorporates in these Preliminary Invalidity Contentions, in full, its
`petition, the prior art identified in the petition, the accompanying charts, and the
`supporting declarations from the inter partes review filed by Skechers with respect
`to the ’420 Patent (IPR2021-00160).
`1.
`Anticipation
`Some or all of the asserted claims of the ’420 Patent are invalid as anticipated
`under 35 U.S.C. § 102 based on each of the prior art references identified above and
`in the included claim charts, which identify specific examples of where each
`limitation of the asserted claims is found in the prior art references, either expressly
`or inherently. As explained above, the cited portions of prior art references
`identified in the attached claim charts are exemplary only and representative of the
`content and teaching of the prior art references, and should be understood in the
`context of the reference as a whole and as they would be understood by a POSITA.
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`Obviousness
`2.
`To the extent any limitation is deemed not to be exactly met by an item of
`prior art, any purported differences are such that the claimed subject matter as a
`whole would have been obvious to a POSITA at the time of the alleged invention,
`based on the state of the art and knowledge of those skilled in the art. The item of
`prior art would, therefore, render the relevant claims invalid for obviousness under
`35 U.S.C. § 103.
`In addition, the references identified above render one or more asserted
`claims of the ’420 Patent obvious when the references are read in combination with
`each other by a POSITA. Each and every reference identified is also relevant to the
`state of the art at the time of the alleged invention. Any of the references disclosed
`above may be combined to render obvious (and therefore invalid) each of Nike’s
`asserted claims. Skechers may rely upon a subset of the above identified references
`or all of the references identified above for purposes of obviousness depending on
`the Court’s claim construction, positions taken by Nike during this litigation, and
`further investigation and discovery. Skechers may rely on combinations with any
`reference in the attached claim charts and any of the other references disclosed
`herein with respect to the ’420 Patent, including combinations with any of the
`patents, publications or products identified herein as prior art to the ’420 Patent.
`Moreover, to the extent the foregoing references are found not to anticipate
`the asserted claims, the foregoing references render the asserted claims obvious
`either alone or in combination with one or more of the other references identified
`above. As explained herein and/or in the accompanying charts, it would have been
`obvious to a POSITA at the time of the alleged invention of the asserted claims of
`the ’420 Patent to combine the various references cited herein so as to practice the
`asserted claims.
`Motivations to combine the above items of prior art are present in the
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`references themselves, the common knowledge of a POSITA, the prior art as a
`whole, or the nature of the problems allegedly addressed by the ’420 Patent.
`Combining the references identified in the accompanying claim charts would have
`been obvious, as the references identify and address the same technical issues and
`suggest very similar solutions to those issues. Skechers reserves the right to amend
`or supplement these invalidity contentions to identify additional reasons that
`combining the references would be obvious to a POSITA.
`In addition to the specific combinations of prior art and the specific
`combinations of groups of prior art disclosed, Skechers reserves the right to rely on
`any other combination of any prior art references disclosed herein. Skechers further
`reserves the right to rely upon combinations disclosed within the prosecution history
`of the references cited herein.
`The obviousness combinations set forth in these contentions reflect Skechers’
`present understanding of the potential scope of the claims that Nike appears to be
`advocating and should not be seen as Skechers’ acquiescence to Nike’s
`interpretation of the patent claims. Skechers reserves the right to amend or
`supplement these contentions regarding anticipation or obviousness of the asserted
`claims based on further information from Nike, the Court, or any other source,
`including any changes Nike makes to its Infringement Contentions, information
`discovered during discovery, arguments made and positions taken by Nike in
`connection with the petition for inter partes review filed by Skechers for the ’420
`Patent, or a claim construction ruling by the Court. Skechers reserves the right to
`amend or supplement these contentions to assert different support for each asserted
`limitation, to cite different portions of each reference in support of any invalidity
`theory, to assert different combinations, or to identify different references, as
`necessary. Nike has not identified what elements or combinations it alleges were not
`known to a POSITA. Therefore, for any claim limitation that Nike alleges is not
`disclosed in a particular prior art reference, Skechers reserves the right to assert that
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`any such limitation is either inherent in the disclosed reference or obvious to a
`POSITA at the time in light of the same, or that the limitation is disclosed in another
`of the references disclosed above and, in combination, would have rendered the
`asserted claim obvious.
`Each of these combinations was obvious to try for a POSITA. In the field of
`the ’420 Patent, there was a design need or market pressure to solve a problem and
`there were a finite number of identified, predictable solutions. A POSITA had good
`reason to pursue the known options within his or her technical grasp including
`combinations of the disclosures in the accompanying claim charts. Each of these
`combinations is also the combination of familiar elements according to known
`methods and yields predictable results. In the field of the ’420 Patent, a great deal of
`prior research and product designs were available and design incentives and other
`market forces would prompt variations of it. Further reasons to combine the
`references identified in the accompanying claim charts include the nature of the
`problem being solved, the express, implied, and inherent teachings of the prior art,
`and the knowledge of a POSITA that such combinations would have yielded
`predictable results, and that such combinations would have represented known
`alternatives to a POSITA. For each combination, there is a teaching, suggestion, and
`motivation to combine both in the references to be combined themselves, as well as
`in the art generally that was known to a POSITA. In any event, each limitation of
`the ’420 Patent is, and would have been at the time of the alleged invention, a
`simple design choice representing a predictable variation within the skill of a
`POSITA. Moreover, each limitation of the ’420 Patent was well known in the art,
`including well-known to POSITAs.
`Additional prior art references rendering the asserted claims obvious, alone or
`in combination with other references, including identification of combinations
`showing obviousness, are identified in the accompanying claim charts, which
`include exemplary citations for the ’420 Asserted Claims showing specifically
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`where in each reference or combinations of references each asserted claim is found,
`and an explanation of why the prior art renders the asserted claim obvious.
`No showing of a specific motivation to combine prior art is required to
`combine the references disclosed for any asserted patent in this document and in the
`attached charts, as each combination of art would have yielded expected results and
`at most would simply represent a known alternative to one of skill in the art. See
`Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1058 (Fed. Cir. 2016);
`Intercontinental Great Brands LLC v. Kellogg N. Am. Co., 869 F.3d 1336, 1344
`(Fed. Cir. 2017); KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1739-40 (2007)
`(rejecting the Federal Circuit’s “rigid” application of the teaching, suggestion, or
`motivation to combine test, and instead applying an “expansive and flexible”
`approach). Indeed, the Supreme Court held that a POSITA is “a person of ordinary
`creativity, not an automaton” and “in many cases a POSITA will be able to fit the
`teachings of multiple patents together like pieces of a puzzle.” KSR, 127 S.Ct. at
`1742. Nevertheless, in addition to the information contained in the obviousness
`sections of this document and elsewhere in these contentions, Skechers hereby
`identify motivations and reasons to combine.
`One or more combinations of the prior art references identified above would
`have been obvious because these references would have been combined using:
`known methods to yield predictable results; known techniques in the same way; a
`simple substitution of one known, equivalent element for another to obtain
`predictable results; and/or a teaching, suggestion, or motivation in the prior art
`generally. See Apple, 839 F.3d at 1077; Intercontinental Great Brands, 869 F.3d at
`1344. In addition, it would have been obvious to try combining the prior art
`references identified above because there were only a finite number of predictable
`solutions and/or because known work in one field of endeavor prompted variations
`based on predictable design incentives and/or market forces either in the same field
`or a different one. See ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1367
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`(Fed. Cir. 2016); Sanofi-Aventis Deutschland GmbH v. Glenmark Pharms. Inc.,
`USA, 748 F.3d 1354, 1360 (Fed. Cir. 2014); Bayer Pharma AG v. Watson Labs.,
`Inc., 874 F.3d 1316, 1329 (Fed. Cir. 2017); KSR, 127 S. Ct. at 1742. Further, the
`combinations of the prior art references identified above and in the claim charts
`would have been obvious because the combinations represent known potential
`options with a reasonable expectation of success. See InTouch Techs., Inc. v. VGo
`Comms., Inc., 751 F.3d 1327, 1347 (Fed. Cir. 2014).
`Additional evidence that there would have been a motivation to combine the
`prior art references identified above includes the interrelated teachings of multiple
`prior art references; the effects of demands known to the design community or
`present in the marketplace; the existence of a known problem for which there was an
`obvious solution encompassed by the ’420 Asserted Claims; the existence of a
`known need or problem in the field of the endeavor at the time of the alleged
`inventions; and the background knowledge that would have been possessed by a
`POSITA. See Arctic Cat Inc. v. Bombardier Recreational Prod. Inc., 876 F.3d
`1350, 1359 (Fed. Cir. 2017); Intercontinental Great Brands, 869 F.3d at 1344;
`Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1003 (Fed. Cir. 2016); Norgren
`Inc. v. Int’l Trade Comm’n, 699 F.3d 1317, 1322-23 (Fed. Cir. 2012).
`The motivation to combine the teachings of the prior art references disclosed
`herein is also found in the references themselves and in: (1) the nature of the
`problem being solved; (2) the express, implied and inherent teachings of the prior
`art; (3) the knowledge of POSITAs; (4) the predictable results obtained in
`combining the different elements of the prior art; (5) the predictable results obtained
`in simple substitution of one known element for another; (6) the use of a known
`technique to improve similar devices, methods, or products in the same way; (7) the
`predictable results obtained in applying a known technique to a known device,
`method, or product ready for improvement; (8) the finite number of identified
`predictable solutions that had a reasonable expectation of success; and (9) known
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`work in various technological fields that could be applied to the same or different
`technological fields based on design incentives or other market forces. See above
`for legal background regarding obviousness combinations and M.P.E.P. § 2143.
`Charts Identifying Disclosure in Prior Art Invalidating Asserted
`C.
`Claims
`Skechers submits the following charts identifying specific locations in each
`alleged item of prior art where each limitation of each asserted claim is found as
`attached Exhibits 420-1 through 420-8. The contents of Exhibits 420-1 through 420-
`8, in combination with the foregoing patents, publications, and products, anticipate
`and/or render obvious the ’420 Asserted Claims under 35 U.S.C. § 102, either
`expressly or inherently, and under § 103, in each case, as understood by a POSITA.
`Exhibit
`(claim chart explaining bases for invalidity of ’420 Patent)
`Chi - U.S. Patent No. 6,918,1983
`Rudy - U.S. Patent No. 6,158,149
`Lyden - U.S. Patent No. 5,595,004
`Allen – U.S. Patent No. 5,575,088
`Reed – U.S. Patent No. 6,754,982
`Morris – U.S. Patent No. 7,254,906
`Aizawa – JP2002238613 A
`Nike Prior Art Products – identified in Section III.A.2
`
`Exhibit No.
`420-1
`420-2
`420-3
`420-4
`420-5
`420-6
`420-7
`420-8
`
`
`3 An identification of a prior art reference for purposes of identifying an exhibit
`should be understood to mean that the chart discloses not only bases for invalidity
`based on that reference, but also that reference in combination with other references
`identified or referred to in the chart.
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`D.
`
`Invalidity Under 35 U.S.C. § 112
`1.
`Legal Background Regarding The Indefiniteness,
`Enablement, And Written Description Requirements
`Section 112, ¶ 2 includes a definiteness requirement: “[T]he specification
`shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.” 35 U.S.C.
`§ 112, ¶ 2. “[A] patent is invalid for indefiniteness if its claims, read in light of the
`patent’s specification and prosecution history, fail to inform, with reasonable
`certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v.
`Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014).
`The definiteness requirement requires that the claim must set forth what the
`applicant regards as the invention, and do so with sufficient particularity and
`definiteness. Allen Eng’g Corp. v. Bartell Indus., 299 F.3d 1336, 1348 (Fed. Cir.
`2002). Where it would be apparent to one of skill in the art, based on the patent
`specification, that the “invention” set forth in a claim is not what the patent
`applicant regarded as the invention, the claim is invalid. Id.
`35 U.S.C. § 112 further includes an enablement requirement: “The
`specification shall contain a written description . . . of the manner and process of
`making and using [the invention] in such full, clear, concise and exact terms as to
`enable any person skilled in the art to which it pertains, or with which it is most
`nearly connected, to make and use the same.” 35 U.S.C. § 112, ¶ 1. To satisfy the
`enablement requirement, the disclosure “must teach those skilled in the art how to
`make and use the full scope of the claimed invention without ‘undue
`experimentation.’” Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1366 (Fed.
`Cir. 1997); MagSil Corp. v. Hitachi Glob. Storage Techs., Inc., 687 F.3d 1377, 1381
`(Fed. Cir. 2012); Sitrick v. Dreamworks, LLC, 516 F.3d 993, 999 (Fed. Cir. 2008).
`If a specification teaches away from a substantial portion of the claim or does not
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`enable the full scope of the claim, there is no enablement. AK Steel Corp. v. Sollac,
`344 F.3d 1234 (Fed. Cir. 2003); see also MagSil Corp., 687 F.3d at 1383-84.
`35 U.S.C. § 112 further includes a written description requirement: “The
`specification shall contain a written description of the invention . . . .” 35 U.S.C.
`§ 112, ¶ 1. “To satisfy the written description requirement, a patent applicant must
`convey with reasonable clarity to those skilled in the art that, as of the filing date
`sought, he or she was in possession of the invention.” ICU Medical Inc. v. Alaris
`Medical Systems, Inc., 558 F.3d 1368, 1377 (Fed. Cir. 2009) (internal quotation
`marks and citations omitted); see also Synthes USA, LLC v. Spinal Kinetics, Inc.,
`734 F.3d 1332, 1340 (Fed. Cir. 2013). “The test [for written description support]
`requires an objective inquiry into the four corners of the specification from the
`perspective of a POSITA. Based on that inquiry, the specification must describe an
`invention understandable to that skilled artisan and show that the inventor actually
`invented the invention claimed.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
`1336, 1351 (Fed. Cir. 2010) (en banc).
`The specification must describe the claimed invention in sufficient detail so
`that a POSITA can recognize what is claimed. “The appearance of mere indistinct
`words in a specification or a claim, even an original claim, does not necessarily
`satisfy that requirement.” Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916,
`923 (Fed. Cir. 2004) (internal quotation marks and citations omitted).
`2.
`Invalidity Grounds Under 35 U.S.C. § 112
`The grounds identified below both individually and collectively render the
`’420 Asserted Claims invalid under the statutory requirements of § 112. By
`identifying certain claim language below, Skechers does not imply that such
`language is entitled to any patentable weight when comparing the claim as a whole
`to the prior art. Skec