Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 6
`Entered: October 21, 2016
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`adidas AG,
`Petitioner,
`
`v.
`
`NIKE, Inc.,
`Patent Owner.
`____________
`
`Case IPR2016-00922
`Patent 8,266,749 B2
`____________
`
`
`Before JOSIAH C. COCKS, MICHAEL J. FITZPATRICK, and
`JAMES B. ARPIN, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`Patent 8,266,749 B2
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`adidas AG (“Petitioner”) filed a Petition pursuant to 35 U.S.C.
`§§ 311–19 to institute an inter partes review of claims 1–9, 11–19, and 21of
`U.S. Patent No. 8,266,749 B2 (Ex. 1001, “the ’749 patent”).1 Paper 2
`(“Pet.”). Nike, Inc. (“Patent Owner”) did not file a Preliminary Response.2
`Applying the standard set forth in 35 U.S.C. § 314(a), which requires
`demonstration of a reasonable likelihood that Petitioner would prevail with
`respect to at least one challenged claim, we institute an inter partes review
`of claims 1–9, 11–19, and 21 of the ’749 patent.
`
`I. BACKGROUND
`
`A. The ’749 Patent
`The ’749 patent claims priority from U.S. Patent Application No.
`10/791,289, filed on March 3, 2004, now issued as U.S. Patent No.
`7,347,011 B2 (“the ’011 patent”) (Ex. 1001 at (60)) and relates to articles of
`footwear incorporating an upper that is at least partially formed from a
`textile material (id. at col. 1, ll. 20–23). Conventional articles of athletic
`footwear may include two primary elements: an upper and a sole structure.
`Id. at col. 1, ll. 25–28. The upper may form a void in the interior of the
`footwear for receiving a wearer’s foot, and the upper may extend over the
`instep and toe areas, along the medial and lateral sides, and around the heel
`area of the wearer’s foot. Id. at col. 1, ll. 42–47.
`In particular, the Specification describes articles of footwear having
`an upper incorporating a knitted textile element and having a sole structure
`secured to the upper. Id. at col. 3, ll. 27–33. Methods for manufacturing an
`
`1 Petitioner identifies adidas International B.V.; adidas North America, Inc.;
`adidas America, Inc.; and adidas International, Inc., as real parties-in-
`interest. Pet. 1.
`2 Patent Owner identifies only itself, as a real party-in-interest. Paper 5, 2.
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`article of footwear include “mechanically-manipulating a yarn with a
`circular knitting machine, for example, to form a cylindrical textile structure.
`In addition, the method involves removing at least one textile element from
`the textile structure, and incorporating the textile element into an upper of
`the article of footwear.” Id. at col. 3, ll. 41–46.
`Figure 9 of the ’749 patent is reproduced below.
`
`
`
`Figure 9 depicts textile structure 60 formed on a circular knitting
`machine. Id. at col. 7, ll. 38–39. For example,
`[a] suitable knitting machine for forming textile element 40 is a
`wide-tube circular knitting machine that is produced in the
`Lonati Group by Santoni S.p.A. of Italy under the SM8 TOP1
`model number. This Santoni S.p.A. wide-tube circular knitting
`machine may form a textile structure having a diameter that
`ranges from 10 inches to 20 inches, with 8 feeds for each
`diameter.
`Id. at col. 7, ll. 14–20. As discussed below, the types of stitches that form
`textile structure 60 may be varied to form an outline of one or more textile
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`elements 40 on textile structure 60. Id. at col. 7, l. 64–col. 8, l. 3. In
`particular, as depicted in Figure 9, the outlines for at least two textile
`elements 40 maybe formed on textile structure 60. Id. at col. 7, ll. 53–54.
`Figure 8 of the ’749 patent is reproduced below.
`
`
`Figure 8 depicts an embodiment of an upper according to the ’749
`
`patent. Id. at col. 5, l. 59–col. 6, l. 64. “Textile element 40 is a single
`material element that is formed to exhibit a unitary (i.e., one-piece)
`construction, and textile element 40 is formed or otherwise shaped to extend
`around the foot.” Id. at col. 5, ll. 40–43; see also id. at Figs. 10 (depicting
`textile element 40ʹ), 11 (depicting textile element 40ʺ). Consequently,
`textile element 40 is formed, such that portions of the textile element are not
`joined together with seams or other connections. Id. at col. 5, ll. 40–43.
`Edges 41a–44d are joined together as shown in Figures 3–5 to form seams
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`51–54, thereby forming at least a portion of a void for receiving the foot. Id.
`at col. 6, ll. 41–50. In contrast, lateral region 31, medial region 32, instep
`region 33, lower regions 34, and heel regions 35 together have a unitary
`construction without seams (id. at col. 5, ll. 46–58; col. 6, ll. 47–50).
`Figure 11 of the ’749 patent is reproduced below.
`
`
`Figure 11 depicts another embodiment of an upper according to the
`
`’749 patent. Id. at col. 9, l. 29–col. 10, l. 7. Textile element 40ʺ includes
`three different areas with three different textures. Id. at col. 9, ll. 31–32.
`First texture 46ʺ is generally smooth and extends in strips across lateral
`region 31, medial region 32, and instep region 33 of the upper. Id. at col. 9,
`ll. 32–35. In addition, textile element 40ʺ includes second texture 47ʺ and
`third texture 48ʺ. Id. at col. 9, ll. 35–39. Moreover, the Specification of the
`’749 patent describes that:
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`The different textures 46ʺ-48ʺ are formed by merely varying the
`type of stitch formed by the wide-tube circular knitting machine
`at each location of textile element 40ʺ. Textures 46ʺ-48ʺ may
`exhibit aesthetic differences, or the differences may be
`structural. . . . The air-permeability of textile element 40ʺ may
`also vary in the different areas.
`Id. at col. 9, ll. 39–47 (emphasis added).
`
`
`
`B. Illustrative Claim
`Claims 1 and 13 are independent, method claims. Claims 2–9, 11, and
`12 depend directly or indirectly from claim 1, and claims 14–19 and 21
`depend directly or indirectly from claim 13. Claim 1 is illustrative of the
`claims at issue and is reproduced below:
`1. 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;
`textile element from
`removing
`the knitted
`surrounding knitted textile structure;
`incorporating the knitted textile element into the
`article of footwear.
`Id. at col. 11, ll. 43–52.
`
`the
`
`
`
`C. Related Proceedings
`Neither party identifies any related litigation. Pet. 1, Paper 5, 2. As
`discussed above, the ’749 patent claims priority from the application that
`issued as the ’011 patent, which is the subject of IPR2013-00067. Pet. 1. In
`that case, the Board instituted inter partes review of claims 1–46 of the ’011
`patent, and Patent Owner requested cancellation of claims 1–46 and
`
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`proposed substitute claims 47–50 in a Motion to Amend. This panel granted
`Patent Owner’s request to cancel claims 1–46, but denied Patent Owner’s
`request as to the substitute claims. Patent Owner appealed the Board’s
`decision to the U.S. Court of Appeals for the Federal Circuit (the “Federal
`Circuit”). The Federal Circuit issued a decision in Patent Owner’s appeal on
`February 11, 2016, which affirmed-in-part and vacated-in-part the Board’s
`decision, and remanded the case to the Board for further proceedings
`regarding the status of the substitute claims. In addition, Petitioner has
`requested inter partes review of claims of related patents in IPR2016-00920
`(U.S. Patent No. 8,042,288 B2) and IPR2016-00921 (U.S. Patent No.
`7,814,598 B2). Paper 5, 2.
`
`D. Applied References and Declaration
`Petitioner relies on the following references and declaration in support
`of its asserted grounds of unpatentability:
`
`Exhibit
`1003
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1012
`
`Pet. iv.
`
`
`
`References and Declaration
`Declaration of Mr. Lenny M. Holden
`U.S. Patent No. 3,985,003 to Reed, issued Oct. 12, 1976
`(“Reed”)
`U.S. Patent No. 4,038,840 to Castello, issued Aug. 2, 1977
`(“Castello”)
`U.S. Patent No. 6,330,814 B1 to Fujiwara, issued Dec. 18,
`2001 (“Fujiwara”)
`U.S. Patent No. 5,345,638 to Nishida, issued Sep. 13, 1994
`(“Nishida”)
`David J. Spencer, Knitting technology: a comprehensive
`handbook and practical guide, 1–413 (2001) (3rd Ed.,
`Woodhead Publ. Ltd.) (“Spencer”)
`International Standard, Textile machinery — Knitting
`machines — Nominal diameters of circular machines, 1–6
`(2003) (2nd Ed., ISO 8117:2003(E)) (“ISO 8117”)
`
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`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`References
`Basis
`Challenged Claims
`Reed and Nishida
`35 U.S.C. § 103(a)
`1–9, 11–19, and 21
`Castello, Fujiwara, and
`35 U.S.C. § 103(a)
`1–9, 11–19, and 21
`Nishida
`Pet. 7.
`
`II. ANALYSIS
`
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`construed according to their broadest reasonable interpretation in light of the
`specification of the patent in which they appear. See 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2144–46 (2016). Under
`that standard, claim terms are given their ordinary and customary meaning,
`as would be understood by one of ordinary skill in the art3 in the context of
`the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`(Fed. Cir. 2007). In its Petition, Petitioner proposes constructions for the
`following two claim terms.
`
`
`3 Petitioner argues that a person of ordinary skill in the relevant art would
`have at least a few years of experience in the footwear industry, a broad
`understanding of shoemaking, and an understanding of (1) the product cycle
`for the process of designing, developing and bringing a new product to
`market; (2) milestones for reviewing upper material designs; (3) the
`available and varied ranges of typical construction methods within a product
`cycle; and (4) the functional requirements of footwear and the range of
`material choices available. Pet. 8 (citing Ex. 1003 ¶ 34). For purposes of
`this Decision and to the extent necessary, we adopt Petitioner’s assessment
`of a person of ordinary skill in the relevant art.
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`1. “a first area and a second area with a unitary construction”
`(Claims 11 and 21)
`Petitioner argues that the term “a first area and a second area with a
`unitary construction” means “a textile element having a unitary construction
`and having a first area and a second area.” Pet. 6. As Petitioner notes, this
`is the construction that this panel gave to the same term appearing in the
`substitute claims of the ’011 patent. adidas AG v. Nike, Inc., Case IPR2013-
`00067, 2013 WL 8595550, at *7 (PTAB May 17, 2013) (Paper 60). The
`’011 patent and the ’749 patent share the same Specification, neither party
`contested our construction of this term in the appeal of our decision in the
`inter partes review of the claims of the ’011 patent, and, at this time, Patent
`Owner does not contest Petitioner’s proposed construction of this term in
`this case. Therefore, on this record and to the extent necessary for this
`Decision, we adopt Petitioner’s proposed construction for this term.
`
`2. “wide-tube circular knitting machine” (Claims 9 and 19)
`Petitioner argues that the term “wide-tube circular knitting machine”
`means “a circular knitting machine with a nominal diameter of 7 inches or
`larger.” Pet. 6. The Specification of the ’749 patent identifies a wide-tube
`circular knitting machine, such as that produced in the Lonati Group by
`Santoni S.p.A., Italy, as a suitable example of the wide-tube circular knitting
`machine recited in the claims. See Ex. 1001, col. 7, ll. 12–37. In particular,
`the Specification of the ’749 patent indicates that such knitting machines
`“may form a textile structure having a diameter that ranges from 10 inches to
`20 inches, with 8 feeds for each diameter. The machine exhibits a maximum
`140 revolutions per minute for 10 inch diameters, and a maximum 120
`revolutions per minute for 13 inch diameters.” Id. at col. 7, ll. 17–23.
`
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`Nevertheless, the Specification does not limit suitable, wide-tube circular
`knitting machines to this particular embodiment or to these particular
`diameters, and, as Petitioner acknowledges, the Specification “provides no
`other definition or explanation for what is meant by ‘wide-tube circular
`knitting machine.’” Pet. 6. Instead, the Specification describes a wide-tube
`circular knitting machine functionally as one capable of knitting “body
`garment” sized textile tubes. Ex. 1001, col. 7, ll. 6–8.
`Citing to the teachings of ISO 8117 (Ex. 1012) and the testimony of
`Petitioner’s declarant, Mr. Holden (Ex. 1003 ¶ 97), Petitioner argues that
`“any circular knitting machine with a nominal diameter of 178 mm (7
`inches) or larger is categorized as a large (or wide-tube) circular knitting
`machine.” Pet. 6–7 (emphasis added). ISO 8117 describes “Large circular
`knitting machines” as having a nominal diameter of at least 178 mm (7
`inches), but does not equate the terms “large” and “wide,” or even use the
`term “wide.” Ex. 1012, 6 (Table 1). Although Mr. Holden’s testimony that
`“[t]he skilled person would also have understood that a circular knitting
`machine having a circumference of at least 22 inches (i.e., a nominal
`diameter of at least 7 inches) is a wide-tube circular knitting machine” is
`some evidence that ISO 8117 teaches that a wide-tube circular knitting
`machine has a nominal diameter of 178 mm (7 inches) or larger, the
`references relied upon by Petitioner to teach the wide-tube circular knitting
`machine arguably teach diameters larger even than those of the exemplary
`machine disclosed in the Specification of the ’749 patent. Pet. 29–31 (citing
`Ex. 1003 ¶ 97); see Ex. 1001, col. 7, ll. 12–37.
`Nevertheless, for purposes of this Decision, it is not necessary for us
`to construe this term to define a minimum diameter for a wide-tube circular
`
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`knitting machine. Therefore, on this record, we construe the term “wide-
`tube circular knitting machine” to mean “a circular knitting machine forming
`body garment sized, tubular textile structures, including those having a
`diameter that ranges from 10 inches to 20 inches.”
`
`3. Other Claim Terms
`For purposes of this Decision, we discern no other claim terms that
`require express interpretation.
`
`B. Obviousness over Reed and Nishida
`1. Overview
`Petitioner argues that claims 1–9, 11–19, and 21 are unpatentable
`under 35 U.S.C. § 103(a) as obvious over Reed and Nishida. See supra
`Section I.E. To support its arguments, Petitioner provides a detailed
`mapping of limitations of challenged claims to Reed and Nishida and to
`Castello, Fujiwara, and Nishida. Pet. 9–32 (Reed and Nishida), 33–56
`(Castello, Fujiwara, and Nishida). Petitioner also cites Mr. Holden’s
`Declaration for support. See Ex. 1003 ¶¶ 92–130, 145–200.
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter 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)
`
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`the level of skill in the art;4 and (4) objective evidence of nonobviousness,
`i.e., secondary considerations.5 Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966). On this record and for the reasons set forth below, we are
`persuaded that Petitioner demonstrates a reasonable likelihood of prevailing
`in this challenge to claims 1–13 of the ’749 patent.
`
`2. Reed (Ex. 1006)
`Reed is directed to a method of manufacturing a wearable item, which
`includes, among other things, mechanically manipulating a yarn with a
`circular-knitting machine to form a cylindrical textile structure (Ex. 1006,
`col. 2, ll. 22–25), textile elements located in different portions of the textile
`structure (id. at col. 2, ll. 29–31), removing the textile elements from the
`textile structure ((id. at col. 3, ll. 12–19, col. 5, l. 67–col. 6, l. 5), and
`incorporating the textile element(s) “to form all types of garments worn by
`men, women and children” (id. at col. 1, ll. 33–35, col. 5, ll. 56–58).
`Reed’s Figure 1 is reproduced below.
`
`
`4 See supra 8 n.3; see also Ex. 1003 ¶ 36 (“Based on my experience, I have
`an understanding of the capabilities of the skilled person in this field, and
`my opinions are provided from the perspective of such a person.”).
`5 The current record lacks evidence of secondary considerations. See Pet.
`47–49; Medtronic Inc. v. NuVasive Inc., Case IPR2014-00087, at 21 (PTAB
`Apr. 3, 2015) (Paper 44).
`
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`Figure 1 depicts tubular knitted structure 10, such as that produced by a
`circular knitting machine. Id. at col. 2, l. 66–col. 3, l. 1. Knitted structure 10
`comprises inner tube 12 and outer tube 14, and
`[a]round the circumference of the knitted structure 10 are
`illustrated three garments which, for example, may be skirts 16,
`18 and 20.6 The garments 16, 18 and 20 arc outlined by a
`plurality of interconnecting knitted stitches 22 and 24. The
`interconnecting knitting 22 not only forms the outline of the
`garments 16, 18 and 20, but joins the inner tube 12 to the outer
`tube 14 so as to create a seam. The interconnecting knitting 24
`
`
`6 On this record, we are persuaded that “skirts” are “body garments.” See
`Ex. 1003 ¶ 97:
`That fact alone would inform a skilled person at least as of
`March 3, 2004, that the circumference of the circular knitted
`tube must be at least large enough to accommodate the width of
`three skirts, and would certainly require a circumference larger
`than 22 inches, as each skirt (even sized for a child) would
`require more than 7 inches of space around the circumference
`of the knitted tube.
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`is merely to define the lower outline of the skirt upon which the
`pattern may be cut.
`Id. at col. 3, ll. 1–15.
`Reed explains that the use of circular knitting machines in the garment
`industry was historically limited to making tubular, knitted garments, such
`as ladies stockings, sweaters, and other garments, wherein the entire knitted
`fabric was used as a unit to form one surface of a finished garment. Pet. 10–
`11 (citing Ex. 1006, col. 1, ll. 33–44; Ex. 1003 ¶ 94). Reed teaches that,
`with the introduction of computer pattern preparation equipment, “an era of
`unlimited pattern potential began.” Ex. 1006, col. 1, ll. 45–48; see Ex. 1003
`¶ 95. “Computer electronic knitting brought about the possibilities of
`making patterns and designs of up to three million stitches (previously
`approximately 50,000 was maximum). With this system, patterns and
`designs are possible that before could not be made.” Ex. 1006, col. 1, ll. 50–
`55; see Ex. 1003 ¶ 95. Reed further explains that its method uses “an
`electronic circular double knitting machine” and that an “object of the
`[Reed] invention is to provide a method of reducing the cost of
`manufacturing of garments by using the versatility of a computerized
`electronic knitting machine.” Ex. 1006, col. 1, ll. 58–59, col. 2, ll. 23–25;
`Figs 1–6; see Ex. 1003 ¶ 95.
`
`3. Nishida (Ex. 1009)
`Nishida is directed to the production of a shoe upper by (1) cutting out
`a layout in the form of the shoe upper from a web of material and
`(2) shaping the shoe upper by connecting material parts of the layout by the
`formation of seams. See generally Nishida, Abstract. By the disclosed
`process, such shoe uppers allegedly may be produced efficiently and in
`
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`reduced time despite the many individual parts present or to be made visible.
`Id.
`
`Figure 2 of Nishida is reproduced below.
`
`
`Figure 2 illustrates an embodiment of the upper layout according to Nishida.
`Id. at col. 3, ll. 6–12. Web of material 1 may include one or a plurality of
`layouts 2. Further, web of material 1 includes backing 4 that may be a
`knitted material, and different areas of layouts 2 may be formed by knitting
`different yarns or fibers on backing 4. Id. at col. 3, ll. 15–26; col. 5, l. 63–
`col. 6, l. 2.
`Consequently, web of material 1 may be used to produce layouts 2 by
`different production measures, such as different styles, yarn material, color,
`material thickness, number of layers of material, or the like, simultaneously
`with the production of web of material 1. Id.; see id. at Figs. 1, 2. Each
`layout 2, including a sole part, may be cut from web of material 1 as a unit
`
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`and processed into an upper. Id. Nishida describes the manufacture of an
`article of footwear incorporating such an upper. Id. at col. 3, ll. 9–12; Fig. 3.
`
`4. Limitations of the Challenged Claims
`Petitioner argues that Reed and Nishida teaches or suggests all of the
`limitations of claims 1–9, 11–19, and 21 of the ’749 patent. Pet. 9–32. In
`particular, Petitioner argues that Reed and Nishida teaches or suggests all of
`the limitations of each of independent claims 1 and 13. Id. at 13–19
`(claim 1), 20–21 (claim 13). Although Petitioner appears to identify a
`disclosure from Nishida in its claim charts (id. at 13–21) as teaching each of
`the limitations of claims 1 and 13, Petitioner does not assert expressly that
`Nishida alone renders claim 1 or claim 13 unpatentable. Therefore, although
`Petitioner may argue and present evidence that Nishida alone renders claim
`1 or claim 13 unpatentable, we decline to institute grounds not expressly
`asserted by Petitioner. See supra Section I.E.
`a. Independent Claims 1 and 13
`Initially, independent claim 1 recites “[a] method of manufacturing an
`article of footwear.” Ex. 1001, col. 11, l. 43; see also id. at col. 12, l. 27
`(claim 13). Reed teaches that its circular knitting methods may be used to
`manufacture “all types of garments.” Ex. 1006, col. 5, ll. 56–57. Although
`Reed specifically identifies stockings and hosiery (id. at col. 1, ll. 33–35,
`col. 5, ll. 57–58) as garments manufactured by circular kitting, Reed does
`not describe shoes as “garments.” Nevertheless, Nishida teaches that the
`web of material depicted in its Figures 1 and 2 is “produced by a
`conventional textile process.” Ex. 1009, col. 3, ll. 6–7 (emphasis added).
`Thus, on this record, we are persuaded that Petitioner has shown that Reed
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`and Nishida teach or suggest a method of manufacturing an article of
`footwear.
`The method of claim 1 further comprises the step of “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.” Ex. 1001, col. 11, ll.
`45–48; see also id. at col. 12, ll. 29–39 (claim 13 reciting “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”). Reed
`clearly teaches simultaneously knitting a textile element, including
`producing body garments, such as skirts (see id. at Fig. 2), shirts and pants
`(see id. at Fig. 3), and dresses (see id. at Fig. 6), for men, women, and
`children (id. at col. 5, ll. 56–57) with a surrounding textile structure.
`Nishida also clearly supplies this limitation. Pet. 14–15. Nishida’s Figure 2,
`reproduced above (see supra Section II.B.3.) depicts textile elements, such
`as layouts 2, with a surrounding textile structure, such as web of material 1.
`Pet. 15–16: see Ex. 1009, col. 3, ll. 15–26. Thus, we determine that either
`Reed or Nishida teaches or suggests “simultaneously knitting a textile
`element with a surrounding textile structure” and “the first knitted textile
`element located within a first portion of the knitted textile structure,” as
`recited in independent claims 1 and 13, respectively.
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`With regard to the second part of this limitation of claims 1 and 13,
`which Petitioner refers to as limitations 1C and 13C, Petitioner argues that
`Reed describes using different types of stitches or yarns to
`impart a knitted texture to the textile element(s) that is different
`from a knitted texture in the surrounding textile structure. For
`example, Reed describes that the edges of the garments 16, 18,
`20 are formed by interknitted stitches, whereas the remainder of
`the garments 16, 18, 20 are formed by non-interknitted stitches.
`. . . Because the interknitted stitches are part of the garments
`16, 18, 20, they form a texture in the garments that is different
`from the texture in the surrounding textile structure.
`Pet. 16 (emphasis added; citing Ex. 1006, col. 5, ll. 3–18; Ex. 1003 ¶¶ 108,
`109). Similarly, Petitioner argues that Nishida teaches that
`“only just those parts of the web of material are produced in the
`necessary quality, thickness, multilayers or the like which
`correspond to the pattern or to an area of a pattern of the shoe
`upper or the related shoe part. The remaining area of the web
`of material in contrast can consist of a simple, lightweight or
`inexpensive material quality, which holds together only the
`patterns or areas of such patterns in the web of material after
`their completion.”
`Id. at 17 (emphasis added; quoting Ex. 1009, col. 2, ll. 12–20; citing
`Ex. 1003 ¶¶ 110–111). Thus, on this record, we determine that either
`Reed or Nishida supplies this limitation of independent claims 1 and
`13.
`
`The method of claim 1 further comprises the step of “removing the
`knitted textile element from the surrounding knitted textile structure.” Ex.
`1001, col. 11, ll. 49–50; see also id. at col. 12, ll. 40–41 (claim 13 recites
`“removing the first and second knitted textile element from the knitted
`textile structure”). Like with respect to the previous limitation, we are
`persuaded that Petitioner has shown that either Reed or Nishida teaches or
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`suggests this limitation of the independent claims. Pet. 18 (claim 1; citing,
`e.g., Ex. 1006, col. 3, ll. 12–19; Ex. 1009, col. 1, ll. 10–18); id. at 21 (claim
`13); see Ex. 1003 ¶¶ 103–104.
`Finally, the method of claim 1 further comprises the step of
`“incorporating the textile element into an upper of the article of footwear.”
`Ex. 1001, col. 11, ll. 51–52; see also id. at col. 12, ll. 42–43 (claim 13).
`Petitioner relies solely on Nishida to supply this limitation, and we are
`persuaded, on this record, that Petitioner has shown that Nishida teaches or
`suggested this limitation of the independent claims. Pet. 16 (claim 1), 20
`(claim 13); see Ex. 1003 ¶ 126.
`Petitioner argues that a person of ordinary skill in the art would have
`had reason to combine the identified teachings of Reed and Nishida to
`achieve the methods recited in independent claims 1 and 13. Pet. 11–13. In
`particular, Petitioner argues that, because Reed teaches that its methods are
`applicable to “all types of garments” (Ex. 1006, col. 5, ll. 56–57 (emphasis
`added); see Ex. 1003 ¶ 131), a person of ordinary skill in the art would have
`had reason to apply the teachings of Reed to the processes and shoe parts of
`Nishida. Pet. 13 (citing Ex. 1003 ¶ 133). Further, Petitioner argues that,
`because both Reed and Nishida teach the advantages of reducing cost
`through the use of computer-controlled knitting machines, a person of
`ordinary skill in the art would have had reason to combine their teachings.
`Pet. 13 (citing Ex. 1003 ¶¶ 134–135). Finally, Petitioner argues that a
`person of ordinary skill in the art would have had reason to apply Reed’s
`methods for producing textile elements, from which to produce garments, to
`produce Nishida’s shoe upper patterns. Id.; see KSR, 550 U.S. at 417 (“[I]f a
`technique has been used to improve one device, and a person of ordinary
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`skill in the art would recognize that it would improve similar devices in the
`same way, using the technique is obvious unless its actual application is
`beyond his or her skill.”). Thus, we are persuaded that Petitioner has set
`forth sufficient reason at this initial stage of the proceeding for a person of
`ordinary skill in the relevant art to have combined the teachings of Reed and
`Nishida to achieve the recited methods of manufacturing an article of
`footwear.
`
`b. Dependent Claims 2–9, 11, 12, 14–19, and 21
`Petitioner argues that Reed teaches or suggests the additional
`limitations recited in claims 9 and 19 (id. at 29–31; see supra Section
`II.A.2.); that Nishida teaches or suggests the additional limitations recited in
`claims 7, 12, 17, and 18 (Pet. 25, 31–32); and that that Reed and/or Nishida
`teaches or suggests the additional limitations recited in claims 2–6, 8, 11,
`14–16, and 21 (id. at 19, 21–29, 31; see supra Section II.A.1.). Petitioner
`provides a detailed mapping of the limitations of each of these dependent
`claims onto the teachings of Reed and/or Nishida. We find these mappings
`persuasive. Moreover, we are persuaded that, on this record, a person of
`ordinary skill in the relevant art would have had at least the same reason to
`combine the teachings of Reed and Nishida to achieve the methods recited in
`these dependent claims, as that given for combining the teachings of Reed
`and Nishida to achieve the recited methods of the independent claims. See
`id. at 11–13.
`Although we have highlighted specific evidence and arguments for
`emphasis, we have reviewed the entirety of Petitioner’s analysis for
`independent claims 1 and 13, as well as the supporting testimony of Mr.
`Holden. Based on our review of the arguments and evidence, we conclude
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`that Petitioner has established a reasonable likelihood of prevailing on its
`challenge to independent claims 1 and 13 as rendered obvious by Reed and
`Nishida. Moreover, because Petitioner’s arguments for the obviousness of
`dependent claims 2–9, 11, 12, 14–19, and 21 over Reed and Nishida, rely on
`the arguments and evidence presented with respect to independent claims 1
`and 13, we also conclude that Petitioner has established a reasonable
`likelihood of prevailing on its challenge to the dependent claims.
`
`5. Obviousness over Castello, Fujiwara, and Nishida
`Petitioner argues that claims 1–9, 11–19, and 21 are unpatentable
`under 35 U.S.C. § 103(a) as obvious over C