UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`LULULEMON USA INC.,
`Petitioner,
`
`v.
`
`NIKE, INC.,
`Patent Owner.
`
`Case IPR2024-00460
`Patent 8,266,749
`
`DECLARATION OF DR. DAVID S. BROOKSTEIN IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT 8,266,749
`
`lululemon Ex. 1003
`IPR Petition - USP 8,266,749
`
`
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`LULULEMON USA INC.,
`Petitioner,
`
`v.
`
`NIKE, INC.,
`Patent Owner.
`
`Case IPR2024-00460
`Patent 8,266,749
`
`DECLARATION OF DR. DAVID S. BROOKSTEIN IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT 8,266,749
`
`lululemon Ex. 1003
`IPR Petition - USP 8,266,749
`
`
`
`TABLE OF CONTENTS
`
`Page No.
`
`
`I. INTRODUCTION ........................................................................................... 1
`
`II. BACKGROUND AND QUALIFICATIONS ............................................... 2
`
`III. LEGAL PRINCIPLES ................................................................................. 5
`
`A.
`
`Prior Art .......................................................................................... 6
`
`B.
`
`Anticipation .................................................................................... 6
`
`C.
`
`Obviousness .................................................................................... 6
`
`IV. THE ’749 PATENT ...................................................................................... 9
`
`A. Overview of the ’749 Patent ........................................................... 9
`
`B.
`
`Claims of the ’749 Patent ............................................................. 15
`
`C.
`
`Prosecution History of the ’749 Patent ........................................ 16
`
`D. Adidas IPR ................................................................................... 18
`
`V. LEVEL OF A PERSON OF ORDINARY SKILL IN THE ART
`(POSA).................................................................................................... 19
`
`VI. CLAIM CONSTRUCTION ....................................................................... 20
`
`A.
`
`“unitary construction” (Claims 11 and 21) .................................. 21
`
`B.
`
`“a first area and a second area with a unitary construction”
`(Claims 11 and 21) ....................................................................... 21
`
`C.
`
`“wide-tube circular knitting machine” (Claims 9 and 19) ........... 22
`
`D.
`
`“impart” (Claims 11 and 21) ........................................................ 22
`
`i
`
`lululemon Ex. 1003
`IPR Petition - USP 8,266,749
`
`
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`E.
`
`F.
`
`“texture” (Claims 8, 11, and 21) .................................................. 22
`
`Other Terms .................................................................................. 23
`
`VII. TECHNOLOGY BACKGROUND .......................................................... 23
`
`VIII. OVERVIEW OF GROUNDS ................................................................. 38
`
`IX. GROUND 1: NISHIDA ANTICIPATES CLAIMS 1-8 AND 12-18 ........ 40
`
`A.
`
`Summary of Nishida (Ex.1004/1005) .......................................... 40
`
`B.
`
`Nishida Anticipates Claim 1 ........................................................ 44
`
`1.
`
`2.
`
`3.
`
`4.
`
`Preamble of Claim 1 .......................................................... 45
`
`Limitation 1[a]: “simultaneously knitting a textile
`element with a surrounding textile structure, the
`knitted textile element having at least one knitted
`texture that differs from a knitted texture in the
`surrounding knitted textile structure” ................................ 45
`
`Limitation 1[b]: “removing the knitted textile
`element from the surrounding knitted textile
`structure” ............................................................................ 51
`
`Limitation 1[c]: “incorporating the knitted textile
`element into the article of footwear” ................................. 51
`
`C.
`
`Nishida Anticipates Claim 2 ........................................................ 52
`
`D. Nishida Anticipates Claim 3 ........................................................ 55
`
`E.
`
`F.
`
`Nishida Anticipates Claim 4 ........................................................ 57
`
`Nishida Anticipates Claim 5 ........................................................ 58
`
`ii
`
`lululemon Ex. 1003
`IPR Petition - USP 8,266,749
`
`
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`G. Nishida Anticipates Claim 6 ........................................................ 59
`
`H. Nishida Anticipates Claim 7 ........................................................ 63
`
`I.
`
`J.
`
`Nishida Anticipates Claim 8 ........................................................ 64
`
`Nishida Anticipates Claim 12 ...................................................... 65
`
`K. Nishida Anticipates Claim 13 ...................................................... 66
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Preamble ............................................................................. 66
`
`Limitation 13[a]: “knitting a first textile element and
`a second textile element simultaneously with knitting
`a surrounding textile structure, the first knitted textile
`element located within a first portion of the knitted
`textile structure, the second knitted textile element
`located within a second portion of the knitted textile
`structure” ............................................................................ 66
`
`Limitation 13[b]: “varying at least one of the types of
`stitches or the types of yarns in the knitted textile
`structure to impart a texture to the first and second
`knitted textile elements different from a texture of the
`knitted textile structure extending between the first
`and second portions” .......................................................... 67
`
`Limitation 13[c]: “removing the first and second
`knitted textile elements from the knitted textile
`structure” ............................................................................ 69
`
`Limitation 13[d]: “incorporating at least one of the
`first and second knitted textile elements into the
`article of footwear” ............................................................ 69
`
`iii
`
`lululemon Ex. 1003
`IPR Petition - USP 8,266,749
`
`
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`L.
`
`Nishida Anticipates Claim 14 ...................................................... 70
`
`M. Nishida Anticipates Claim 15 ...................................................... 70
`
`N. Nishida Anticipates Claim 16 ...................................................... 71
`
`O. Nishida Anticipates Claim 17 ...................................................... 71
`
`P.
`
`Nishida Anticipates Claim 18 ...................................................... 71
`
`X. GROUND 2: NISHIDA IN VIEW OF A POSA’S GENERAL
`KNOWLEDGE RENDERS OBVIOUS CLAIMS 9-10 AND 19-
`20 ............................................................................................................ 72
`
`XI. GROUND 3: ZUCKERMAN ANTICIPATES CLAIMS 1-3, 5-8,
`11, 13-17, AND 21 ................................................................................. 78
`
`A.
`
`Summary of Zuckerman (Ex.1008) .............................................. 78
`
`B.
`
`Zuckerman Anticipates Claim 1 ................................................... 81
`
`1.
`
`2.
`
`3.
`
`4.
`
`Preamble of Claim 1 .......................................................... 81
`
`Limitation 1[a]: “simultaneously knitting a textile
`element with a surrounding textile structure, the
`knitted textile element having at least one knitted
`texture that differs from a knitted texture in the
`surrounding knitted textile structure” ................................ 81
`
`Limitation 1[b] “removing the knitted textile element
`from the surrounding knitted textile structure” ................. 87
`
`Limitation 1[c]: “incorporating the knitted textile
`element into the article of footwear” ................................. 87
`
`C.
`
`Zuckerman Anticipates Claim 2 ................................................... 88
`
`iv
`
`lululemon Ex. 1003
`IPR Petition - USP 8,266,749
`
`
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`D.
`
`Zuckerman Anticipates Claim 3 ................................................... 89
`
`E.
`
`F.
`
`Zuckerman Anticipates Claim 5 ................................................... 90
`
`Zuckerman Anticipates Claim 6 ................................................... 91
`
`G.
`
`Zuckerman Anticipates Claim 7 ................................................... 92
`
`H.
`
`Zuckerman Anticipates Claim 8 ................................................... 93
`
`I.
`
`J.
`
`Zuckerman Anticipates Claim 11 ................................................. 94
`
`Zuckerman Anticipates Claim 13 ................................................. 95
`
`1.
`
`2.
`
`3.
`
`4.
`
`Preamble ............................................................................. 95
`
`Limitation 13[a]: “knitting a first textile element and
`a second textile element simultaneously with knitting
`a surrounding textile structure, the first knitted textile
`element located within a first portion of the knitted
`textile structure, the second knitted textile element
`located within a second portion of the knitted textile
`structure” ............................................................................ 95
`
`Limitation 13[b]: “varying at least one of the types of
`stitches or the types of yarns in the knitted textile
`structure to impart a texture to the first and second
`knitted textile elements different from a texture of the
`knitted textile structure extending between the first
`and second portions” .......................................................... 97
`
`Limitation 13[c]: “removing the first and second
`knitted textile elements from the knitted textile
`structure” ............................................................................ 99
`
`v
`
`lululemon Ex. 1003
`IPR Petition - USP 8,266,749
`
`
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`5.
`
`Limitation 13[d]: “incorporating at least one of the
`first and second knitted textile elements into the
`article of footwear” ............................................................ 99
`
`K.
`
`Zuckerman Anticipates Claim 14 ................................................. 99
`
`L.
`
`Zuckerman Anticipates Claim 15 ............................................... 100
`
`M.
`
`Zuckerman Anticipates Claim 16 ............................................... 101
`
`N.
`
`Zuckerman Anticipates Claim 17 ............................................... 101
`
`O.
`
`Zuckerman Anticipates Claim 21 ............................................... 101
`
`XII. GROUND 4: ZUCKERMAN IN VIEW OF A POSA’S GENERAL
`KNOWLEDGE RENDERS OBVIOUS CLAIMS 3, 9-10, 14,
`AND 19-20 ........................................................................................... 102
`
`A.
`
`Claims 3 and 14 .......................................................................... 102
`
`B.
`
`Claims 9-10 and 19-20 ............................................................... 105
`
`XIII. GROUND 5: ZUCKERMAN IN VIEW OF DOUGHTY
`RENDERS OBVIOUS CLAIM 12 ...................................................... 107
`
`A.
`
`Summary of Doughty (Ex.1017) ................................................ 107
`
`B.
`
`Claim 12 ..................................................................................... 108
`
`XIV. GROUND 6: NISHIDA IN VIEW OF ZUCKERMAN RENDERS
`OBVIOUS CLAIMS 11 AND 21 ......................................................... 112
`
`XV. SECONDARY CONSIDERATIONS ..................................................... 116
`
`XVI. CONCLUSION...................................................................................... 117
`
`vi
`
`lululemon Ex. 1003
`IPR Petition - USP 8,266,749
`
`
`
`
`
`I. INTRODUCTION
`
`1.
`
`I, Dr. David S. Brookstein, submit this declaration on behalf of
`
`lululemon usa inc. (“Petitioner”). I understand that this declaration will be submitted
`
`as Exhibit 1003 in support of a Petition for Inter Partes Review (“IPR”) of U.S.
`
`Patent No. 8,266,749 (“the ’749 patent”) along with the exhibits listed in the table
`
`below.
`
`Exhibit No.
`
`Description
`
`1001
`
`U.S. Patent No. 8,266,749 to Dua, et al.
`
`1002
`
`Excerpts of Prosecution History for U.S. Patent No. 8,266,749
`
`1004
`
`International Patent Publication No. WO 92/22223 to Nishida
`(“Nishida”)
`
`1005
`
`English Translation of Nishida (Ex.1005)
`
`1006
`
`U.S. Patent No. 1,803,554 to Knilans (“Knilans”)
`
`1007
`
`U.S. Patent No. 2,147,197 to Glidden (“Glidden”)
`
`1008
`
`U.S. Patent No. 2,047,724 to Zuckerman (“Zuckerman”)
`
`1009
`
`Spencer, Knitting Technology: A Comprehensive Handbook and
`Practical Guide, Chapters 2-3, 6-9, 12-13, 16-18, 20, 24, and 28-29,
`Third Edition, 2001 (“Spencer”)
`
`1010
`
`Excerpts of Man-Made Fiber and Textile Dictionary, Fourth
`Edition, Issued 1978, Reprinted 1983
`
`1011
`
`JP 2002-65303A to Tani, et al. (“Tani”)
`
`1012
`
`English Translation of Tani (Ex.1011)
`
`1013
`
`U.S. Patent No. 5,345,638 to Nishida (“Nishida-US”)
`
`1
`
`lululemon Ex. 1003
`IPR Petition - USP 8,266,749
`
`
`
`
`
`
`
`Exhibit No.
`
`Description
`
`1014
`
`Curriculum Vitae of Dr. David S. Brookstein
`
`1015
`
`1016
`
`Joint Disputed Claim Terms Chart, Nike, Inc. v. lululemon usa inc.,
`C.A. No. 1:23-cv-00771-AS (S.D.N.Y.)
`
`Lewis, et al., A Machine Knitter’s Guide to Creating Fabrics, Part
`1: Chapters 1-2 and Part 2: Chapters 1, 4, 6, and 13, 1986
`
`1017
`
`U.S. Patent No. 2,675,631 to Doughty (“Doughty”)
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`Adidas AG v. Nike, Inc., IPR2016-00922, Paper 2 (Petition for Inter
`Partes Review) (P.T.A.B. Apr. 19, 2016)
`
`Adidas AG v. Nike, Inc., IPR2016-00922, Paper 6 (Institution
`Decision) (P.T.A.B. Oct. 10, 2016)
`
`Adidas AG v. Nike, Inc., IPR2016-00922, Paper 9 (Patent Owner
`Response) (P.T.A.B. Jan. 23, 2017)
`
`Adidas AG v. Nike, Inc., IPR2016-00922, Paper 21 (Final Written
`Decision) (P.T.A.B. Oct. 19, 2017)
`
`Adidas AG v. Nike, Inc., IPR2016-00922, Paper 31 (Decision on
`Remand) (P.T.A.B. Feb. 19, 2019)
`
`1023 Wingate, Excerpts of Fairchild’s Dictionary of Textiles, Sixth
`Edition, 1979
`
`2.
`
`This declaration is provided after my review and analysis of the ’749
`
`patent, the prior art, relevant background technology, and is also based on my
`
`education and experience, as well as additional materials identified herein.
`
`II. BACKGROUND AND QUALIFICATIONS
`
`3.
`
`I am qualified to testify as an expert in this case. I was awarded a
`
`Bachelor of Textile Engineering degree from the Georgia Institute of Technology
`
`2
`
`lululemon Ex. 1003
`IPR Petition - USP 8,266,749
`
`
`
`
`
`(“Georgia Tech”) in 1971, a Master of Science degree in Textile Technology from
`
`the Massachusetts Institute of Technology (“MIT”) in 1973, and a Doctor of Science
`
`degree in the field of mechanical engineering from MIT in 1976.
`
`4.
`
`I was a professor of Textile Engineering at Georgia Tech from 1975-
`
`1980. I was Associate Director of Albany International Research Co. (formerly
`
`Fabric Research Laboratories) from 1980-1994. I was Dean of the School of
`
`Engineering and Textiles and Executive Director of Research at Philadelphia
`
`University (formerly Philadelphia College of Textiles and Science) from 1994 to
`
`2010. In 2010, I was appointed Executive Dean for University Research at
`
`Philadelphia University and served in that position through June 2012. In July 2012,
`
`I resigned from Philadelphia University to become Dean of the Science, Technology,
`
`Engineering, and Mathematics Division of Montgomery County Community
`
`College in Pennsylvania. In August 2014, I was appointed Professor of Mechanical
`
`Engineering and Director of Undergraduate Affairs at the Temple University
`
`College of Engineering, and in July 2017 I was promoted to Senior Associate Dean
`
`for Undergraduate Studies at the Temple University College of Engineering. I retain
`
`my rank of Professor of Mechanical Engineering and I am responsible for the
`
`capstone senior design course required of all engineering graduates. In 1995 I was
`
`elected by my peers as a Fellow of the American Society of Mechanical Engineers,
`
`which is an honorific awarded to only about 1% of its members. In 1992 I was
`
`3
`
`lululemon Ex. 1003
`IPR Petition - USP 8,266,749
`
`
`
`
`
`elected by my peers as a Fellow of The Textile Institute (United Kingdom). In 1998
`
`I was awarded the ASTM Harold Dewitt Smith Award for textile fiber utilization.
`
`In 1993 I was awarded the Techtextil Innovation Prize (Germany). I have conducted
`
`research on knitting when I was employed at the Albany International Research Co.
`
`(formerly Fabric Research laboratories, Inc.). I taught courses in knitting technology
`
`during my period as an assistant professor of textile engineering at Georgia Tech and
`
`as Dean of Engineering and Textiles at Philadelphia University (formerly
`
`Philadelphia College of Textiles and Science).
`
`5.
`
`I am the named inventor on 13 U.S. patents, all of which relate to the
`
`to the field of structures made using the principles of textile engineering and science.
`
`6.
`
`I attended the 12th International Textile Machinery Exhibition (ITMA
`
`95) in 1995 held in Milan, Italy, where I saw the Shima Seiki WHOLEGARMENT®
`
`flat weft knitting machine and learned about its capabilities.
`
`7.
`
`A copy of my curriculum vitae, provided as Exhibit 1014, contains
`
`further details concerning my education, experience, publications, patents, and other
`
`qualifications to render an expert opinion in this matter.
`
`8.
`
`I am being compensated for my work in this matter at my standard
`
`hourly rate for consulting services. My compensation in no way depends on the
`
`outcome of this proceeding. I have no personal or financial stake or interest in the
`
`outcome of this proceeding.
`
`4
`
`lululemon Ex. 1003
`IPR Petition - USP 8,266,749
`
`
`
`
`
`9.
`
`I understand that Petitioner will cite and rely on significant portions of
`
`my testimony and analysis set forth in this declaration in support of its Petition
`
`challenging the patentability of the ’749 patent. I have not been provided or
`
`reviewed the Petition or any drafts of the Petition, and, thus, the Petition or drafts of
`
`the Petition have not influenced my testimony or analysis set forth in this declaration.
`
`10. Between now and such time that I may be asked to testify, I expect to
`
`continue my review, evaluation, and analysis of evidence presented before and/or at
`
`the hearing. I expect to review the declarations and other evidence submitted by
`
`Nike’s experts. I reserve the right to amend or supplement this declaration, as
`
`appropriate, after considering any opinions set forth by Nike’s experts. In the event
`
`that additional relevant information becomes available to me, I also reserve the right
`
`to review and consider that information in further developing or refining my
`
`opinions.
`
`III. LEGAL PRINCIPLES
`
`11.
`
`I am not an attorney or patent agent. Therefore, in formulating my
`
`opinions and conclusions in this proceeding, I have been provided with an
`
`understanding of the relevant aspects of U.S. patent law that govern the issues of
`
`patent validity by counsel for the Petitioner.
`
`5
`
`lululemon Ex. 1003
`IPR Petition - USP 8,266,749
`
`
`
`
`
`A.
`
`Prior Art
`
`12.
`
`I understand that, in this IPR proceeding, the prior art to the ʼ749 patent
`
`includes patents and printed publications in the relevant field(s) that predate the ʼ749
`
`patent’s priority date.
`
`B. Anticipation
`
`13.
`
`I understand that a person cannot obtain a patent if someone else
`
`already made an identical invention, which is referred to as “anticipation.” I
`
`understand that to anticipate a claim, each and every element in the claim must be,
`
`as properly construed, present in a prior art reference either expressly and/or
`
`inherently.
`
`C. Obviousness
`
`14.
`
`I understand that a claim of a patent may be obvious to a person of
`
`ordinary skill in the art if the differences between the subject matter set forth in the
`
`patent claim and the prior art are such that the claimed subject matter as a whole
`
`would have been obvious at the time of the invention.
`
`15.
`
`I understand that obviousness is a determination of law based on
`
`various underlying determinations of fact. In particular, these underlying factual
`
`determinations include (1) the scope and content of the prior art; (2) the level of
`
`ordinary skill in the art at the time the claimed invention was made; (3) the
`
`differences between the claimed invention and the prior art; and (4) the extent of any
`
`6
`
`lululemon Ex. 1003
`IPR Petition - USP 8,266,749
`
`
`
`
`
`proffered objective “indicia” of non-obviousness. I understand that the objective
`
`indicia, also known as secondary considerations, which may be considered in such
`
`an analysis include, among other factors: the commercial success of the patented
`
`invention (including evidence of industry recognition or awards), the existence of a
`
`long-felt but unmet need in the field satisfied by the invention, the failure of others
`
`to arrive at the invention, industry acquiescence and recognition of the invention,
`
`initial skepticism of the invention by others in the field, the extent to which the
`
`inventors proceeded in a direction contrary to the accepted wisdom of those of
`
`ordinary skill in the art, and licensing of the patent.
`
`16.
`
`In determining the scope and content of the prior art, I understand a
`
`reference is considered prior art for the obviousness analysis if it falls within the
`
`inventors’ field of endeavor. Additionally, a reference is prior art for the
`
`obviousness analysis, even if from a different field of endeavor, if it is reasonably
`
`pertinent to the particular problem for which the invention was made. A reference
`
`is reasonably pertinent if it is something a person of ordinary skill in the art would
`
`have looked to when attempting to solve the problem addressed by the patent at
`
`issue.
`
`17. While multiple prior art references or elements may be combined to
`
`render a patent claim obvious, I understand that a patent claim composed of several
`
`elements is not proven obvious merely by demonstrating that each of its elements
`
`7
`
`lululemon Ex. 1003
`IPR Petition - USP 8,266,749
`
`
`
`
`
`was, independently, known in the prior art. I understand that I should consider
`
`whether there is an “apparent reason” or motivation to combine the prior art
`
`references or elements in the way the patent claims. It is my further understanding
`
`that the law recognizes several rationales for combining references or modifying a
`
`reference to show obviousness of claimed subject matter. Some of these rationales
`
`include: combining prior art elements according to known methods to yield
`
`predictable results; simple substitution of one known element for another to obtain
`
`predictable results; a predictable use of prior art elements according to their
`
`established functions; applying a known technique to a known method or product
`
`ready for improvement; and choosing from a finite number of identified, predictable
`
`solutions, with a reasonable expectation of success.
`
`18.
`
`I understand the obviousness analysis must be performed from the
`
`perspective of a person of ordinary skill in the art at the time of the alleged invention.
`
`This is to avoid using impermissible hindsight in the analysis. The claims of the
`
`patent must not be used to provide a road map for obviousness; instead, the claims
`
`would have been obvious if a person of ordinary skill in the art would have been
`
`motivated to combine the teachings of the prior art to arrive at the claimed invention
`
`and had a reasonable expectation of success in doing so.
`
`19. An obviousness analysis also must consider whether there are
`
`additional factors that would indicate that the invention would not have been
`
`8
`
`lululemon Ex. 1003
`IPR Petition - USP 8,266,749
`
`
`
`
`
`obvious. These factors include whether there was: (i) a long-felt need in the industry;
`
`(ii) any unexpected results; (iii) skepticism of the invention; (iv) a teaching away
`
`from the invention; (v) commercial success; (vi) praise by others for the invention;
`
`and (vii) copying by others. I am not aware of any evidence that would suggest that
`
`claims 1-21 (“challenged claims”) of the ’749 patent would have been non-obvious
`
`based on these additional factors.
`
`IV. THE ’749 PATENT
`
`A. Overview of the ’749 Patent
`
`20. The ’749 patent provides that it discloses an article of footwear with an
`
`upper which incorporates a knitted textile element. Ex.1001, 3:27-39. According to
`
`the ’749 patent, the knitted textile element “may be formed as part of a larger textile
`
`element” (id., 5:45-46), such as a textile element 60 with multiple knitted textile
`
`elements 40 (colored green) and a surrounding structure (colored purple) as shown
`
`in Figure 9 below. Id., 7:53-60.
`
`9
`
`lululemon Ex. 1003
`IPR Petition - USP 8,266,749
`
`
`
`
`
`
`
`Id., Fig. 9 (annotated). Figure 9 shows textile structure 60 “exhibit[ing] a generally
`
`cylindrical configuration” because textile structure 60 was knit on a “wide-tube
`
`circular knitting machine.” Id., 7:38-40, 11:15-18. A POSA would have known that
`
`this type of knitting machine produces a weft knit fabric.
`
`21. The ’749 patent discloses the following about a circular knitting
`
`machine:
`
`A wide-tube circular knitting machine, as produced by Santoni S.p.A.,
`forms a generally cylindrical textile structure and is capable of forming
`various types of stitches within a single textile structure. In general, the
`wide-tube circular knitting machine may be programmed to alter the
`design on the textile structure through needle selection. That is, the type
`of stitch that is formed at each location on the textile structure may be
`selected by programming the wide-tube circular knitting machine such
`that specific needles either accept or do not accept yarn at each stitch
`location. In this manner, various patterns, textures, or designs may be
`selectively and purposefully imparted to the textile structure.
`
`Id. 7:26-37.
`
`10
`
`lululemon Ex. 1003
`IPR Petition - USP 8,266,749
`
`
`
`
`
`22. The ’749 patent provides that “[e]ach textile element 40 is then
`
`removed from textile structure 60 with a die-cutting, laser-cutting, or other
`
`conventional cutting operation.” Id., 8:4-6. Textile element 40 that has been
`
`removed from textile structure 60 is shown in Figure 8 of the ’749 patent.
`
`
`
`Id., Fig. 8. According to the ’749 patent, “[i]n order to join edges 41a and 41b to
`
`form seam 51, textile element 40 is folded or otherwise overlapped such that edge
`
`41a is placed adjacent to edge 41b.” Id., 6:9-11. “Stitching, an adhesive, or heat
`
`bonding, for example, is then utilized to secure edge 41a and edge 41b.” Id., 6:11-
`
`13. This is shown in Figure 7 of the ’749 patent.
`
`11
`
`lululemon Ex. 1003
`IPR Petition - USP 8,266,749
`
`
`
`
`
`
`
`Id., Fig. 7 (annotated, partially magnified). The ’749 patent discloses that “[o]nce
`
`textile element 40 is removed from textile structure 60, seams 51-54 may be formed
`
`[as shown in Figures 2 and 3 below] and textile element 40 may be incorporated into
`
`footwear 10 [as shown in Figure 1 below].” Id., 8:6-8.
`
`
`
`
`
`
`
`12
`
`lululemon Ex. 1003
`IPR Petition - USP 8,266,749
`
`
`
`
`
`Id., Figs. 1-3.
`
`23. The ’749 patent discloses other implementations in which textile
`
`structure 60 is “formed with the jacquard double needle-bar raschel,” which results
`
`in “a flat configuration” rather than the cylindrical configuration shown in Figure 9.
`
`Id., 11:15-18. A POSA would have known that a raschel knitting machine produces
`
`a warp knit fabric.
`
`24. The ’749 patent states that textile materials for footwear may be
`
`selected for the properties of wear-resistance, flexibility, and air-permeability, as
`
`well as moisture wicking which removes perspiration from the foot. Id., 10:40-48.
`
`25. The ’749 patent provides that different textures may be included in
`
`different areas of the knitted textile element. Id., 9:18-28. Such different textures
`
`exhibit “aesthetic differences” or “structural” differences like varying stretch, wear
`
`resistance, or air-permeability. Id., 9:42-46. The ’749 patent discloses that such
`
`different textures may be formed by varying “stitch configuration” and “yarn type.”
`
`Id., 9:58-10:7, 3:33-37. Figures 10 and 11 illustrate uppers with multiple textures,
`
`with the textures being designated with the reference numbers 46’-47’ and 46”-48”.
`
`Id., 9:18-57.
`
`13
`
`lululemon Ex. 1003
`IPR Petition - USP 8,266,749
`
`
`
`
`
`
`
`
`
`Id., Figs. 10-11. For example, textile element 40” includes three areas that each have
`
`a different texture, where texture 46” is generally smooth, texture 47” is generally
`
`rough in comparison with first texture 46”, and texture 48” corresponds to an instep
`
`region (i.e., the part of the upper which covers a top of the foot) and is formed to
`
`include a plurality of apertures that extend through textile element 40”. Id., 9:31-
`
`49. The ’749 patent also provides that one texture in the knitted textile element can
`
`vary from one texture in the surrounding area of a larger textile element from which
`
`the knitted textile element is removed. Id., Claim 1.
`
`26. The ’749 patent acknowledges that knitting machines for constructing
`
`the textile elements disclosed were known. Id., 7:9-25, 8:61-9:4. The ’749 patent
`
`does not provide that any modifications were required to the conventional operation
`
`of such known knitting machines to implement the disclosed methods.
`
`14
`
`lululemon Ex. 1003
`IPR Petition - USP 8,266,749
`
`
`
`
`
`B. Claims of the ’749 Patent
`
`27.
`
`I have included independent claim 1 below with bracketed labels added
`
`for convenient referencing to the claim limitations.
`
`Claim 1
`
`1[pre]
`
`1[a]
`
`A method of manufacturing an article of footwear, the method
`comprising:
`
`simultaneously knitting a textile element with a surrounding textile
`structure, the knitted textile element having at least one knitted
`texture that differs from a knitted texture in the surrounding
`knitted textile structure;
`
`1[b]
`
`removing the knitted textile element from the surrounding knitted
`textile structure;
`
`1[c]
`
`incorporating the knitted textile element into an article of footwear.
`
`
`
`15
`
`lululemon Ex. 1003
`IPR Petition - USP 8,266,749
`
`
`
`
`
`28.
`
`I have included independent claim 13 of the ’749 patent below with
`
`bracketed labels added for reference:
`
`Claim 13
`
`13[pre]
`
`A method of manufacturing an article of footwear, the method
`comprising:
`
`13[a]
`
`13[b]
`
`13[c]
`
`13[d]
`
`knitting a first textile element and a second textile element
`simultaneously with knitting a surrounding textile structure, the
`first knitted textile element located within a first portion of the
`knitted textile structure, the second knitted textile element
`located within a second portion of the knitted textile structure,
`
`varying at least one of the types of stitches or the types of yarns in
`the knitted textile structure to impart a texture to the first and
`second knitted textile elements different from a texture of the
`knitted textile structure extending between the first and second
`portions;
`
`removing the first and second knitted textile elements from the
`knitted textile structure;
`
`incorporating at least one of the first and second knitted textile
`elements into the article of footwear.
`
`
`C.
`
`Prosecution History of the ’749 Patent
`
`29.
`
`I have reviewed the prosecution history of the application that led to the
`
`’749 patent. During prosecution of the ’749 patent, the Examiner issued two
`
`substantive office actions. Ex.1002, 40-45, 22-27. The office actions rejected
`
`claims 1-8, 11-18, and 21, which are the same as issued claims 1-8, 11-18, and 21,
`
`as being anticipated by U.S. Patent No. 5,345,638 (Nishida-US – Ex.1013). Id.
`
`Nishida-US is a U.S. national phase of a reference, the Nishida PCT application
`
`16
`
`lululemon Ex. 1003
`IPR Petition - USP 8,266,749
`
`
`
`
`
`(Nishida – Ex.1004/Ex.1005), which is relied on in grounds of my analysis. In
`
`addition, the office actions indicated claims 9, 10, 19, and 20 include allowable
`
`subject matter. Id. Claims 9, 10, 19, and 20 recite types of knitting machines (i.e.,
`
`claims 9 and 19 recite that the article of footwear is produced on “a wide-tube
`
`circular knitting machine” and claims 10 and 19 recite that the article of footwear is
`
`produced on “a jacquard double needle-bar raschel knitting machine”) and are the
`
`same as issued claims 9, 10, 19, and 20.
`
`30.
`
`In reply to the first office action, Patent Owner asserted that Nishida-
`
`US does not disclose “a knitted textile element simultaneously formed with a knitted
`
`textile structure during a knitting process.” Id., 35. Patent Owner specifically stated
`
`that Nishida-US discloses knitting a backing material and later knitting layouts onto
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
