Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Date: May 17, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SKECHERS U.S.A., INC.,
`Petitioner,
`v.
`NIKE, INC.,
`Patent Owner.
`
`IPR2021-00159
`Patent 10,098,412 B2
`
`
`
`
`
`
`
`
`
`Before KEN B. BARRETT, SCOTT A. DANIELS, and
`GEORGE R. HOSKINS, Administrative Patent Judges.
`DANIELS, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 9
`Date: May 17, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SKECHERS U.S.A., INC.,
`Petitioner,
`v.
`NIKE, INC.,
`Patent Owner.
`
`IPR2021-00159
`Patent 10,098,412 B2
`
`
`
`
`
`
`
`
`
`Before KEN B. BARRETT, SCOTT A. DANIELS, and
`GEORGE R. HOSKINS, Administrative Patent Judges.
`DANIELS, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2021-00159
`Patent 10,098,412 B2
`
`I. INTRODUCTION
`Skechers U.S.A., Inc., (“Petitioner” or “Skechers”) filed a Petition to
`institute an inter partes review of claims 1–21 of U.S. Patent No. 10,098,412
`B2 (“the ’412 patent”). Paper 1 (“Pet.”). Nike Inc., (“Patent Owner” or
`“Nike”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`“unless . . . there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” Upon
`consideration of the arguments and evidence presented by Petitioner and
`Patent Owner, we are persuaded that Petitioner has demonstrated, under
`35 U.S.C. § 314(a), a reasonable likelihood that it would prevail in showing
`the unpatentability of at least one of the challenged claims. Accordingly, we
`institute an inter partes review of the challenged claims.
`A. Real Parties in Interest
`Petitioner states that the real party-in-interest is Skechers U.S.A., Inc.
`Pet. 85.
`Patent Owner states that Nike, Inc. is the real party-in-interest in this
`proceeding. Paper 4, 2.
`B. Additional Proceedings
`The parties indicate that the ’412 patent is asserted against Petitioner
`in Nike, Inc. v. Skechers, U.S.A., Inc., No. 2:19-cv-09230 (C.D. Cal.), (the
`“California action”). Pet. 85–86; Paper 4, 2.
`C. The ’412 Patent
`The ’412 patent describes an article of footwear, i.e., a shoe, including
`an upper, and a sole comprising an outsole and a midsole. Ex. 1001, 1:30–
`55. Figure 1, reproduced below, shows an article of footwear. Id. at 2:13–
`14.
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`Patent 10,098,412 B2
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`As shown in Figure 1 above, article of footwear 10 has upper 100 attached to
`sole 200. Id. at 7:56–58. Sole 200 includes outsole 210, midsole 220, and
`sidewall 230 separating the midsole and outsole. Id. at 8:40–42. Figure 2 of
`the ’412 patent is reproduced below.
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`IPR2021-00159
`Patent 10,098,412 B2
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`Figure 2, above, is an exploded view of article of footwear 10 “showing
`projections extending from an inner surface of an outsole toward a bottom
`surface of a midsole.” Id. at 2:15–17. Projections 300 extend into cavity
`240 formed between midsole 200 and inner surface 214 of outsole 210. Id.
`at 8:40–45. Also within cavity 240, “particulate matter 350 interact[s] with
`the profile of the bottom surface of the foot during gradient loading of the
`sole structure 200.” Id. The ’412 patent explains that “[t]he projections
`300 and the particulate matter 350 disposed within the cavity may cooperate
`to enhance functionality and cushioning [more than] a conventional midsole
`provides.” Id. at 8:45–48.
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`IPR2021-00159
`Patent 10,098,412 B2
`D. Illustrative Claims
`As noted previously, Petitioner challenges claims 1–21. Of the
`challenged claims, claims 1, 8, and 15 are independent. Each of dependent
`claims 2–7, 9–14, and 16–21 depend from claims 1, 8, and 15 respectively.
`Claims 1–3 are reproduced below with certain limitations of interest
`highlighted:
`1. An article of footwear comprising:
`an upper;
`an outsole secured to the upper;
`a cavity disposed between the upper and the outsole;
`a plurality of protrusions extending within the cavity
`toward the upper from a base end disposed adjacent to the outsole
`to a distal end disposed within the cavity, the plurality of
`protrusions (i) extending from a forefoot region proximate to a
`forward-most edge of the article of footwear to a midfoot region
`of the article of footwear, (ii) being [sp]aced apart from one
`another along a longitudinal axis of the article of footwear within
`the forefoot region, and (iii) including a first protrusion located
`proximate to the midfoot region and having a height that is
`greater than a height of the other protrusions of the plurality of
`protrusions disposed between the first protrusion and the
`forward-most edge of the article of footwear; and
`a plurality of foam beads disposed in the cavity, at least a
`portion of the plurality of foam beads being disposed at a base of
`the first protrusion.
`2. The article of footwear of claim 1, wherein the first protrusion
`is located closer to a heel region of the article of footwear than
`the other protrusions of the plurality of protrusions.
`3. The article of footwear of claim 1, wherein the plurality of
`protrusions progressively decrease in height from the first
`protrusion to the forward-most edge of the article of footwear.
`Ex. 1001, 37:39–67 (emphases added).
`
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`IPR2021-00159
`Patent 10,098,412 B2
`E. Prior Art and Asserted Challenges
`Petitioner contends that the challenged claims are unpatentable over
`the following specific challenges.1
`Claim(s) Challenged
`35 U.S.C. §
`1–21
`103
`1–7
`103
`
`Reference(s)/Basis
`Feshbach,2 Whiteman3
`Lee4, Whiteman
`
`
`
`II. ANALYSIS
`A. Discretion under 35 U.S.C. § 314(a)
`Patent Owner argues that the California action necessitates denial of
`the Petition under the Board’s precedent. Prelim. Resp. 23 (citing Apple Inc.
`v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020)
`(precedential) (“Fintiv”)).
`1. Legal Standards
`Institution of inter partes review is discretionary. See Harmonic Inc.
`v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is
`permitted, but never compelled, to institute an IPR proceeding.”); 35 U.S.C.
`§ 314(a). The Board has held that the advanced state of a parallel district
`court action is a factor that may weigh in favor of denying a petition under
`§ 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752,
`Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential); Patent Trial and Appeal
`Board, Consolidated Trial Practice Guide, 58 & n.2 (Nov. 2019) (“Trial
`
`
`1 Petitioner supports its challenge with the opinion testimony of Grant
`Delgatty (Ex. 1003). Patent Owner relies upon the opinion testimony of
`Kim B. Blair, Ph.D. (Ex. 2001).
`2 Ex. 1005, US Patent Application Pub. No. 2014/0230272 A1 (Aug. 21,
`2014).
`3 Ex. 1007, US Patent 9,930,928 Β2 (April 3, 2018).
`4 Ex. 1006, KR Registration No. 10-0848718 (July 21, 2008).
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`IPR2021-00159
`Patent 10,098,412 B2
`Practice Guide”), available at
`https://www.uspto.gov/TrialPracticeGuideConsolidated. We consider the
`following factors to assess “whether efficiency, fairness, and the merits
`support the exercise of authority to deny institution in view of an earlier trial
`date in the parallel proceeding:”
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the parallel
`proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Fintiv, Paper 11 at 5–6. In evaluating these factors, we “take[] a holistic
`view of whether efficiency and integrity of the system are best served by
`denying or instituting review.” Id. at 6. Upon consideration of the pertinent
`facts and circumstances under the Fintiv factors and the parties’ arguments
`as described below, we decline to exercise our discretion to deny the
`Petition.
`2. Facts
`As noted above in Section I.B., there is a parallel district court
`proceeding, the California action, between Petitioner and Patent Owner, that
`involves the ’412 patent. At a point in that proceeding, the parties agreed
`that Patent Owner would not oppose Petitioner’s pandemic related request
`for extensions of time in the California action as long as Petitioner agreed
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`not to continue to work on preparation and filing of any IPR challenging
`Nike’s asserted patents. See Ex. 1016, 7 (Petitioner stating “Skechers
`confirmed it has not and will not work on such patentability challenges until
`the parties are also able to move forward with this lawsuit.”). Petitioner
`represented that it had not worked on preparing an IPR petition since
`May 22, 2020. Id. When work resumed, and when Petitioner eventually
`filed its Petition on October 30, 2020, discovery in the California action was
`underway, although no trial date was set. Ex. 2002. Based on its IPR filing,
`Petitioner moved for a stay of the California action. Ex. 1019. The District
`Court denied Petitioner’s Motion to Stay on December 30, 2020. Ex. 2002.
`On the same date, a new judge was assigned to the California action.
`Ex. 1013, 1.
`As it stands now, Petitioner’s preliminary invalidity contentions have
`been filed and served, and include the same prior art, Feshbach, Whiteman,
`and Lee as asserted in this proceeding. Ex. 1004; Ex. 2011; Ex. 2012. In a
`March 5, 2021 email to Patent Owner’s counsel, Petitioner’s counsel
`stipulated that if the Board grants institution, Petitioner will not pursue
`invalidity in the California action based on Feshbach, Lee, and Whiteman.
`Ex. 1017. Also, the parties have completed their claim construction briefing
`and the District Court had scheduled a Markman hearing for April 12, 2021.
`Ex. 1004. Neither party has informed the Board whether in fact a Markman
`hearing has occurred or that the District Court has entered a claim
`construction order or determined a date for pre-trial conference or trial.
`Looking further down the road, the District Court has scheduled non-
`expert discovery cut-off for September 10, 2021, and a last date to conduct
`settlement conference for October 11, 2021. Ex. 1004. The Board has not
`been informed by the parties that dates have been set by the District Court
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`IPR2021-00159
`Patent 10,098,412 B2
`for any post-discovery motion practice, a pre-trial hearing, or a trial. The
`Board expects it will issue a final written decision in this proceeding by the
`end of May 2022.
`3. Whether the court granted, or will grant, a stay and the proximity
`of the court’s trial date to the Board’s final written decision
`We address the first two Fintiv factors together as they bear some
`relationship to one another in terms of the current schedule in the California
`action.
`Fintiv states that, in previous Board decisions, the existence of a
`district court stay pending Board resolution of an inter partes review has
`weighed strongly against discretionary denial, while a denial of such a stay
`request sometimes weighs in favor of discretionary denial. Fintiv, Paper 11
`at 6–8. Also, the proximity factor in Fintiv, on its face, asks us to evaluate
`our discretion in light of a trial date that has been set in a parallel litigation.
`See Fintiv, Paper 11 at 3, 5 (“NHK applies to the situation where the district
`court has set a trial date to occur earlier than the Board’s deadline to issue a
`final written decision in an instituted proceeding.”) (citing NHK, Paper 8
`(footnote omitted)).
`Patent Owner argues that we should exercise our discretion to deny
`institution because the District Court has denied Petitioner’s motion for a
`stay. See Prelim. Resp. 24 (“The district court denied the motion to stay on
`December 30, 2020”) (citing Ex. 2002). Patent Owner argues that the
`District Court is also unlikely to entertain another motion for a stay in light
`of Petitioner’s filing of the IPR “almost a year after it was served with the
`Complaint” and because “significant activity has occurred and will shortly
`occur.” Id. at 24–25 (quoting Ex. 2002 (internal quotation marks omitted)).
`Patent Owner also argues that the District Court stated in its Order denying
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`IPR2021-00159
`Patent 10,098,412 B2
`Petitioner’s Motion to Stay “that ‘[e]ven if the PTAB institutes IPR
`proceedings, this action will likely be ready for trial before the PTAB issues
`a final decision.’” Id. at 25 (quoting Ex. 2002, 2).
`Petitioner argues that despite denial of its first motion to stay, the
`factors considered by the District Court in granting a stay make it likely that
`“a stay would be appropriate if an IPR is instituted.” See Pet. 8 (Petitioner
`stating that “the Central District of California considers three factors:
`“(1) whether discovery is complete and whether a trial date has been set;
`(2) whether a stay will simplify the issues in question and trial of the case;
`and (3) whether a stay would unduly prejudice or present a clear tactical
`disadvantage to the nonmoving party.”) (quoting Weserve Drone, LLC v. SZ
`DJI Technology Co., Ltd., 2020 WL 4373365 at 1 (C.D. Cal. March 3,
`2020)).
`Despite the previous denial, we will not speculate on the potential of
`Petitioner to file a motion to stay or for the District Court to grant such a
`motion following our present Decision. However, based on the statutory due
`date in May 2022 for a final written decision in this IPR proceeding and
`because there is no trial date set in the California action it is unclear that the
`District Court will decide invalidity before our final written decision would
`issue. Apart from the District Court’s statement that trial is “likely” to occur
`before our final written decision, without a trial date we cannot objectively
`determine that the District Court will address validity issues before our final
`written decision. Ex. 2002, 2. In the end, we are left with no trial date set in
`the District Court and a statutory one-year deadline in this IPR. See Sand
`Revolution II, LLC v. Continental Intermodal Grp.—Trucking LLC,
`IPR2019-01393, Paper No. 24 at 9 (PTAB June 16, 2020) (informative)
`(“[G]enerally, barring exceptional circumstances, the Board adheres to a
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`Patent 10,098,412 B2
`one-year statutory deadline prescribed by 35 U.S.C. § 316(a)(11) for entry of
`final decisions in instituted inter partes reviews.”).
`Considering these facts and circumstances before us as a whole we
`determine that overall the first two Fintiv factors weigh against the Board
`exercising discretion.
`4. Investment in the parallel proceeding by the court and the parties
`If, at the time of the institution decision, the district court has issued
`substantive orders related to the challenged patent, such as a claim
`construction order, this fact weighs in favor of denial. See Fintiv, Paper 11
`at 9–10. On the other hand, if the district court has not issued such orders,
`this fact weighs against discretionary denial. Id. at 10.
`Patent Owner argues that the parties are heavily invested in the
`California action where fact discovery is underway and that “the parties have
`already exchanged infringement contentions, invalidity contentions, written
`discovery responses, and document production. The parties are actively
`engaged in continued fact discovery and claim construction proceedings.”
`Prelim. Resp. 26. Petitioner argues to the contrary that no Markman hearing
`has occurred, no claim construction order has issued, and that the California
`action “is in its early stages, and investment by the parties and the court has
`been minimal.” Pet. 9. Petitioner argues further that there has been no
`substantial investment by the parties and District Court as to the merits of
`the invalidity positions. Pet. Reply 4.
`As to the investment factor, the issue is whether the parties and the
`District Court have “invested substantially in the merits of the invalidity
`petitions.” Sand Revolution, IPR2019-01393, Paper 24, 10. In Sand
`Revolution, this factor weighed only marginally in favor of denial, despite
`the district court having held a Markman hearing and issued a claim
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`construction order, because “much work remain[ed] in the district court case
`as it relate[d] to invalidity: fact discovery [was] still ongoing, expert reports
`[were] not yet due, and substantive motion practice [was] yet to come.” Id.
`at 10–11.
`The California action is underway and although the parties are
`engaged in fact discovery and have submitted claim construction briefing to
`the court, neither party has informed us that the District Court has
`undertaken a Markman hearing or entered a claim construction order. Here,
`the California action is not as far along as the district court case in Sand
`Revolution. Because the California action is not past the claim construction
`phase, and substantive discovery and post-discovery motion practice remain,
`we determine that there is not yet a high level of investment. Thus, this
`factor weighs against exercising our discretion.
`5. Overlap between issues raised in the petition and in the parallel
`proceeding
`“[I]f the petition includes the same or substantially the same claims,
`grounds, arguments, and evidence as presented in the parallel proceeding,
`this fact has favored denial.” Fintiv, Paper 11 at 12. “Conversely, if the
`petition includes materially different grounds, arguments, and/or evidence
`than those presented in the district court, this fact has tended to weigh
`against exercising discretion to deny institution under NHK.” Id. at 12–13.
`Petitioner has stipulated that if the Board institutes this IPR, it will not
`pursue invalidity challenges based on Feshbach, Whiteman, and Lee in the
`California action. Pet. Reply 6. Petitioner does not specifically dispute the
`overlap, but argues that the stipulation it has made weighs in favor of
`institution. Id.
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`Patent Owner argues that Petitioner’s stipulation does not “entirely
`eliminate potential overlap” of issues. PO Sur-reply 6. Patent Owner
`specifically argues that “Petitioner’s stipulation does not eliminate potential
`overlap if Petitioner pursues nearly identical theories in the district court
`litigation based on physical products that embody the prior art references
`asserted in the IPR.” Id. Patent Owner admits, though, that Petitioner has
`not identified such physical products. Id. We find Patent Owner’s
`hypothetical situation too speculative, and we decline to reach the issue as to
`whether the use of a physical product in, for example, an on-sale bar theory,
`would be “nearly identical” to an issue before us in this inter partes review.
`Cf. 35 U.S.C. § 311(b) (“A petitioner in an inter partes review may request
`to cancel as unpatentable 1 or more claims of a patent . . . only on the basis
`of prior art consisting of patents or printed publications.”).
`Because Petitioner’s stipulation minimizes to some extent the overlap
`between this proceeding and the litigation, we determine that this factor
`marginally weighs against exercising discretion.
`6. Whether the petitioner and defendant in the parallel proceeding are
`the same party
`Petitioner is a named party in the California action. It is at least
`likely, if not more than likely, that the Board would address the patentability
`of the challenged patent before a trial in California. We determine that this
`factor does not weigh against exercising our discretion.
`7. Other circumstances that impact the Board’s exercise of discretion,
`including the merits.
`Patent Owner raises two additional issues that we consider in light of
`the California action. Prelim. Resp. 30–31. First, Patent Owner argues that
`the merits of the Petition are weak, specifically that the prior art “Feshbach
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`does not disclose a first protrusion having a greater height than the other
`protrusions disposed between the first protrusion and the forward-most edge
`of the article of footwear.” Id. at 30. For the reasons set forth in our
`analysis in Sections II.B–F., below, and considering the challenges based on
`Feshbach, Whiteman, and Lee, we determine that Petitioner has shown a
`reasonable likelihood, including persuasive reasons, evidence, and
`motivation, that a person of ordinary skill in the art would have combined
`the asserted prior art references for purposes of institution.
`Second, Patent Owner argues that Petitioner waited until the one-year
`deadline to file the IPR. Patent Owner asserts that “[t]here was no reason for
`waiting until the deadline, other than intentional delay and gamesmanship.”
`Id. at 31. This argument, however, fails to acknowledge the parties’
`agreement that Petitioner suspend preparation of the IPR for over four
`months while Petitioner was granted extensions of time in the California
`action due to issues arising from the pandemic. See Ex. 1016, 7–8; see also
`Pet. Reply 5; PO Sur-reply 4–5. During this time, Petitioner’s statutory time
`clock for filing continued to tick. Petitioner filed this IPR on October 30,
`2020, only 30 days after work resumed and just 25 days after Patent Owner
`served its infringement contentions in the California action. Pet. Reply 5;
`see PO Sur-reply 4–5. Based on the circumstances and the parties’
`agreement, we are not persuaded that Petitioner’s timing of the filing of this
`IPR was a purposeful scheme to benefit its litigation positions. Indeed, apart
`from asserting that it should not be “penalized,” Patent Owner has not
`explained how the parties’ agreement to delay the IPR was in any way
`prejudicial. See PO Sur-reply 5 (Patent Owner arguing that it “should not be
`penalized now for its cooperation with Petitioner’s request for an extension
`of time in the district court litigation.”).
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`Overall, we are not persuaded that these additional arguments lend
`weight to a determination that we should exercise our discretion to deny
`institution.
`8. Holistic assessment of factors.
`When considering the facts and evidence in this proceeding and in the
`California action, the Fintiv factors on the whole weigh against the Board
`exercising discretion.
`B. Legal Standards of Obviousness
`Section 103(a) forbids issuance of a patent when “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
`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 ordinary skill in the art; and (4) when available, evidence
`such as commercial success, long-felt but unsolved needs, and failure of
`others. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); see KSR, 550
`U.S. at 407 (“While the sequence of these questions might be reordered in
`any particular case, the [Graham] factors continue to define the inquiry that
`controls.”). The Court in Graham explained that these factual inquiries
`promote “uniformity and definiteness,” for “[w]hat is obvious is not a
`question upon which there is likely to be uniformity of thought in every
`given factual context.” Graham, 383 U.S. at 18.
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`The Supreme Court made clear that we apply “an expansive and
`flexible approach” to the question of obviousness. KSR, 550 U.S. at 415.
`Whether a patent claiming the combination of prior art elements would have
`been obvious is determined by whether the improvement is more than the
`predictable use of prior art elements according to their established functions.
`Id. at 417. To reach this conclusion, however, it is not enough to show
`merely that the prior art includes separate references covering each separate
`limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655
`F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness additionally requires
`that a person of ordinary skill at the time of the invention “would have
`selected and combined those prior art elements in the normal course of
`research and development to yield the claimed invention.” Id.
`A claimed invention may be obvious even when the prior art does not
`teach each claim limitation, so long as the record contains some reason why
`one of skill in the art would modify the prior art to obtain the claimed
`invention. See Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1307
`(Fed. Cir. 2006). And, as a factfinder, we also must be aware “of the
`distortion caused by hindsight bias and must be cautious of arguments reliant
`upon ex post reasoning.” KSR, 550 U.S. at 421. This does not deny us,
`however, “recourse to common sense” or to that which the prior art teaches.
`Id.
`C. Level of Ordinary Skill in the Art
`Factors pertinent to a determination of the level of ordinary skill in the
`art include: (1) educational level of the inventor; (2) type of problems
`encountered in the art: (3) prior art solutions to those problems; (4) rapidity
`with which innovations are made; (5) sophistication of the technology, and
`(6) educational level of workers active in the field. Envtl. Designs, Ltd. v.
`
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`Union Oil Co., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing Orthopedic
`Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82
`(Fed. Cir. 1983)). Not all such factors may be present in every case, and one
`or more of these or other factors may predominate in a particular case.
`Id. Moreover, these factors are not exhaustive but are merely a guide to
`determining the level of ordinary skill in the art. Daiichi Sankyo Co. Ltd.,
`Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).
`In determining a level of ordinary skill, we also may look to the prior
`art, which may reflect an appropriate skill level. Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001). Additionally, the Supreme Court informs
`us that “[a] person of ordinary skill is also a person of ordinary creativity,
`not an automaton.” KSR, 550 U.S. at 421.
`Petitioner, supported by the testimony of Mr. Delgatty, argues that a
`person of ordinary skill in the art “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,” and that “[s]uch 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.” Pet. 18 (citing Ex. 1003 ¶¶ 28–30).
`Patent Owner states “Patent Owner has used Petitioner’s proposed definition
`of a person of ordinary skill in the art” and does not dispute or offer an
`alternative level of skill in the art at this time. Prelim. Resp. 6.
`On this record, the parties do not expressly disagree as to Petitioner’s
`proposed level of ordinary skill in the art, which is also consistent with our
`review and understanding of the technology and descriptions in the ’412
`patent and the prior art references teaching relevant shoe technology. For
`
`17
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`
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`IPR2021-00159
`Patent 10,098,412 B2
`purposes of this Decision, we rely on Petitioner’s proposed level of ordinary
`skill in the art.
`D. Claim Construction
`We interpret a claim “using the same claim construction standard that
`would be used to construe the claim in a civil action under 35 U.S.C.
`282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe the claim
`“in accordance with the ordinary and customary meaning of such claim as
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent.” Id. Furthermore, at this stage in the proceeding,
`we expressly construe the claims only to the extent necessary to determine
`whether to institute inter partes review. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir.
`2017) (“[W]e need only construe terms ‘that are in controversy, and only to
`the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc.
`v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`Petitioner asserted that there are no issues requiring construction of
`any claim term. Pet. 18. Patent Owner proffers that two terms, in claims 3,
`15, and 21, should be construed. We address each in turn below.
`“progressively decrease in height from the first protrusion
`to the forward-most edge of the article of footwear”
`Patent Owner argues that this limitation recited in claim 3, and a
`similar limitation in claim 21, “should be construed according to its ordinary
`and customary meaning as ‘continually decreasing in height in an
`incremental manner from the first protrusion to the forward-most edge of the
`article of footwear.’” Prelim. Resp. 8. Patent Owner argues that Petitioner’s
`implicit construction, reads out the “to the forward-most edge of the article
`of footwear” limitation. Id.
`
`18
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`
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`IPR2021-00159
`Patent 10,098,412 B2
`We find this limitation to be clear on its face and does not require a
`specific construction. We agree with Patent Owner that this limitation
`should be given its plain and ordinary meaning. However, we do not find
`that Patent Owner’s interpretation which, inter alia, adds the prepositional
`phrase “in an incremental manner,” is helpful in assessing the ordinary
`meaning of the claim language.
`At this early stage of the preceding, and from a plain reading of the
`claim language, we understand that the progressive decrease in height of the
`plurality of protrusions occurs “from the first protrusion to the forward-most
`edge of the article of footwear” as recited in claims 3 and 21.
`“offset”
`Patent Owner argues that a person of ordinary skill in the art “would
`have understood that the term ‘offset’ recited in Claim 15 should be
`construed as ‘spaced apart in a staggered configuration such that the
`protrusions in adjacent rows are not aligned in a parallel orientation.’”
`Prelim. Resp. 9. Patent Owner argues that this construction is consistent
`with the specification which describes “[i]n some examples, the 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.” Ex. 1001, 9:43–48.
`Petitioner’s interpretation appears to be that “offset” means “spaced
`apart.” See Pet. 58 (claim chart element 15(f)). Based on a reasonable
`reading of the specification in context it is not clear that “offset” means
`simply “spaced apart,” as Petitioner asserts.
`Patent Owner’s construction introduces the terms “staggered” and
`“parallel orientation.” Arguably, “staggered” may be a reasonable
`
`19
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`
`
`IPR2021-00159
`Patent 10,098,412 B2
`equivalent to “offset,” but a concern with this construction is that even if
`protrusions in adjacent rows are staggered or offset in one direction, the
`protrusions still form a row of protrusions parallel to an adjacent row. At
`this early stage of the proceeding the clearest interpretation appears to be
`that from the specification itself—that “offset” means “the projections 300
`are arranged in alternating repeating rows.” Ex. 1001, 9:43–48
`In view of the challenges we address below and because our Decision
`does not turn on express interpretation of any claim term, we determine that
`it is not necessary to expressly construe any claim term at this time. The
`parties are free to develop these claim construction issues during trial.
`E. Claims 1–21 — Alleged Obviousness over Feshbach and Whiteman
`Petitioner argues that claims 1–21 of the ’412 patent are obvious over
`Feshbach and Whiteman. As discussed below, and having reviewed the
`information and evidence provided by Petitioner and Patent Owner,
`including the relevant portions of the testimony of Mr. Delgatty (Ex. 1003),
`and
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