UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`adidas AG
`Petitioner,
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`v.
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`NIKE, Inc.
`Patent Owner
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`
`
`
`
`
`
`Case IPR2016-00922
`Patent No. 8,266,749
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`
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`
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`PATENT OWNER RESPONSE UNDER 37 C.F.R. § 42.120
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`Skechers EX1016
`Skechers v Nike
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`Patent No. 8,266,749
`IPR2016-00922
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`I.
`II.
`
`III.
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`B.
`
`C.
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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1 
`OVERVIEW OF THE ’749 PATENT ............................................................ 5 
`A.
`THE INVENTION IS DIRECTED TO A METHOD OF MANUFACTURING AN
`ARTICLE OF FOOTWEAR USING KNITTING TECHNOLOGY .......................... 5 
`THE INVENTION ADDRESSED INEFFICIENCIES WITH CONVENTIONAL
`METHODS OF MANUFACTURING THAT USED MULTIPLE MATERIALS TO
`CREATE FOOTWEAR UPPERS .................................................................... 5 
`DURING PROSECUTION, THE EXAMINER CONSIDERED THE PRIOR ART
`THAT PETITIONER NOW RELIES ON IN ITS CHALLENGE ........................... 10 
`PETITIONER FAILS TO CARRY ITS BURDEN OF PROVING THAT
`CLAIMS 1-9, 11-19, AND 21 ARE UNPATENTABLE ............................. 16 
`A.
`LEGAL STANDARD ................................................................................. 16 
`B.
`PETITIONER CONCEDES THE LEVEL OF ORDINARY SKILL IN THE ART AT
`THE TIME OF THE INVENTION WAS LOW ................................................. 17 
`PETITIONER’S EXPERT DECLARATION SHOULD BE GIVEN NO WEIGHT .... 19 
`PETITIONER FAILS TO PROPERLY ANALYZE THE FULL SCOPE AND
`CONTENT OF THE PRIOR ART ................................................................. 23 
`1.
`Reed teaches using a circular double knitting machine to knit
`two juxtaposed panels of a garment and to seam them together
`during the knitting process ........................................................ 24 
`Nishida teaches printing or producing layouts for footwear
`uppers and related sole parts on a preexisting backing of
`material ...................................................................................... 28 
`PETITIONER FAILS TO SHOW THAT A PERSON OF ORDINARY SKILL IN THE
`ART WOULD HAVE BEEN MOTIVATED TO COMBINE THE PRIOR ART ........ 31 
`1.
`Petitioner fails to show a person of ordinary skill in the art
`would even have been aware of the problem the ’749 patent
`addressed ................................................................................... 32 
`
`C.
`D.
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`E.
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`2.
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`2. 
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`3. 
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`4. 
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`5. 
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`2. 
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`F. 
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`Patent No. 8,266,749
`IPR2016-00922
`Petitioner fails to show that Reed is “analogous art” for
`purposes of an obviousness challenge ...................................... 34 
`Petitioner fails to show why a person of ordinary skill in the art
`would have been motivated to combine Reed and Nishida ...... 36 
`Petitioner fails to show how a person of ordinary skill in the art
`would have combined Reed and Nishida .................................. 39 
`The combination of Reed and Nishida would render Reed
`inoperable for its intended purpose ........................................... 41 
`Reed teaches away from combining it with Nishida ................ 46 
`6. 
`PETITIONER FAILS TO PROPERLY ANALYZE THE DIFFERENCES BETWEEN
`THE CLAIMED SUBJECT MATTER AND THE PRIOR ART ............................ 48 
`1. 
`Reed and Nishida do not disclose the claim limitation of
`simultaneously knitting a textile element and a surrounding
`textile structure where the knitted textile element has a texture
`that differs from a texture in the surrounding knitted textile
`structure ..................................................................................... 50 
`Reed and Nishida do not disclose the claim limitation of first
`and second areas with a unitary construction formed of different
`stitch configurations to impart different textures ...................... 55 
`PETITIONER’S OBVIOUSNESS ARGUMENTS ARE IMPROPERLY TAINTED BY
`HINDSIGHT ............................................................................................ 58 
`IV.  CONCLUSION .............................................................................................. 60 
`
`G. 
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`Patent No. 8,266,749
`IPR2016-00922
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`EXHIBIT LIST
`Transcript of the Deposition of Lenny M. Holden (January 10, 2017)
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`Ex. 2004
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`Patent No. 8,266,749
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`Patent Owner NIKE, Inc. submits this response to the petition by adidas AG
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`seeking an IPR of claims 1-9, 11-19, and 21 of U.S. Patent No. 8,266,749 (Ex.
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`1001) as obvious over Reed (Ex. 1006) and Nishida (Ex. 1009).
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`I.
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`INTRODUCTION
`NIKE is a worldwide leader in the design and development of athletic
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`footwear. Its foundational purpose is simple: to innovate. True to that purpose,
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`NIKE spent years designing and developing the technology in the ’749 patent and
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`its family – technology that has revolutionized the footwear industry.
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`The ’749 patent at issue here is directed to a method of manufacturing
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`footwear. An article of footwear typically has two primary elements, an upper and
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`a sole structure. The upper covers the foot. The sole structure is below the upper
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`between the foot and the ground.
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`Before the ’749 patent, footwear manufacturers made uppers by piecing
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`together multiple different materials to impart different properties to different areas
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`of the upper. This process often required sourcing materials from multiple
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`suppliers, operating multiple machines, and coordinating multiple assembly line
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`techniques, manufacturing steps, and individuals.
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`NIKE recognized that conventional method of making uppers was
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`inefficient, and NIKE addressed those inefficiencies in the ’749 patent and its
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`family. The patent recites, among other things, simultaneously knitting a textile
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`Patent No. 8,266,749
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`element (e.g., an upper) and a surrounding textile structure where the textile
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`element has at least one texture that differs from the texture in the surrounding
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`structure. The textile element (e.g., an upper) may also have different areas formed
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`of different stitch configurations to impart varying textures. The textile element
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`(e.g., an upper) is removed from the surrounding structure and incorporated into an
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`article of footwear. In this way, the textile element (e.g., an upper) is formed of a
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`single knitted material, but may have different textures or properties in different
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`areas like a conventional upper made from multiple materials.
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`Instead of innovating like NIKE, Petitioner seeks a shortcut by challenging
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`NIKE’s patents. Petitioner does not dispute that the claims of the ’749 patent are
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`novel and not anticipated. Petitioner instead contends NIKE’s claims would have
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`been obvious to a person of ordinary skill.
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`Petitioner bases its obviousness challenge on the combination of two
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`references that are very different from NIKE’s invention. Reed is not directed to
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`footwear, but rather to a specific type of garment made on a specific type of
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`machine; namely, a garment made of two juxtaposed panels that are formed and
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`seamed together during the knitting process on a circular double knitting machine.
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`These garments include skirts, shirts, and dresses. Nishida is directed to a
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`conventional method of making footwear uppers and related sole parts using
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`multiple materials. The examiner analyzed Nishida during prosecution and
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`Patent No. 8,266,749
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`allowed the claims of the ’749 patent.
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`Because of the many differences between NIKE’s claims and the prior art,
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`Petitioner fails to carry its burden of proving unpatentability. First, Petitioner
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`concedes the level of ordinary skill in the art at the time of the invention was low.
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`Petitioner contends a person of ordinary skill had only “a few years of experience”
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`in the footwear industry and did not have knitting experience, let alone experience
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`using knitting technologies to create uppers. This low level of skill precludes
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`Petitioner from proving obviousness in this case.
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`Second, Petitioner fails to properly analyze the full scope and content of the
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`prior art. Petitioner ignores relevant disclosure in Reed and Nishida that is critical
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`to the obviousness analysis. For example, Petitioner ignores that Reed is directed
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`to preseamed garments and that Nishida is directed to printing or producing layouts
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`of footwear uppers and related sole parts on a preexisting backing.
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`Third, Petitioner fails to show that a person of ordinary skill in the art would
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`have been aware of the problem the ’749 recognized and addressed. Petitioner’s
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`failure to provide any evidence on this point is underscored by the age of Reed and
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`Nishida, and the passage of time between that prior art and the invention.
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`Fourth, Petitioner fails to shown that Reed is “analogous art” for purposes of
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`its obviousness challenge. That is, even if a person of ordinary skill had been
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`aware of the problem the ’749 patent recognized and addressed, Petitioner has not
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`Patent No. 8,266,749
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`shown that the person of ordinary skill would have looked to knitting technologies
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`in other industries, such as Reed, to solve the problem.
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`Fifth, Petitioner fails to establish why a person of ordinary skill in the art
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`would have been motivated to combine Reed and Nishida to derive the claimed
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`subject matter with a reasonable expectation of success. Petitioner instead
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`provides conclusory, and incorrect, arguments that Reed and Nishida are analogous
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`art and directed to solving similar problems. But, even if that were true, it is not
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`enough to establish a motivation to combine.
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`Sixth, Petitioner fails to show how a person of ordinary skill in the art would
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`have combined Reed and Nishida. That is significant here because combining the
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`teachings of Reed and Nishida would render Reed inoperable for its intended
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`purpose of creating preseamed garments. Reed also teaches away from the
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`combination. For these reasons, Petitioner cannot establish that a person of
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`ordinary skill in the art would have been motivated to combine Reed and Nishida.
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`Seventh, Petitioner fails to address the differences between the prior art and
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`the challenged claims. That is, even if a person of ordinary skill would have been
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`motivated to combine Reed and Nishida, which is not the case, neither reference
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`discloses certain limitations in all of the challenged claims.
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`In sum, Petitioner fails at carry its burden. NIKE requests that the Board
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`enter a final written decision affirming the patentability of the challenged claims.
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`Patent No. 8,266,749
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`II. OVERVIEW OF THE ’749 PATENT
`A. THE INVENTION IS DIRECTED TO A METHOD OF MANUFACTURING AN
`ARTICLE OF FOOTWEAR USING KNITTING TECHNOLOGY
`The challenged claims are directed to methods of manufacturing an article of
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`footwear. (Ex. 1001, 11:43-14:5.) Claim 1 is illustrative:
`
`Claim 1 of the ’749 Patent
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`
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`
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`B.
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`THE INVENTION ADDRESSED INEFFICIENCIES WITH CONVENTIONAL
`METHODS OF MANUFACTURING THAT USED MULTIPLE MATERIALS TO
`CREATE FOOTWEAR UPPERS
`Conventional methods of manufacturing footwear involve creating uppers
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`out of multiple materials to impart different properties to different areas of the
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`upper. (Ex. 1001, 1:55-3:3.) For example, the “toe area and the heel area [of the
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`upper] may be formed of leather, synthetic leather, or a rubber material to impart a
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`relatively high degree of wear-resistance.” (Id., 1:62-64.) The areas of the upper
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`between the toe and heel areas “may be formed from a synthetic or natural textile”
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`to impart “flexibility” or “air-permeability” to those areas. (Id., 1:64-2:4.)
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`From the perspective of manufacturing, “utilizing multiple materials to
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`Patent No. 8,266,749
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`impart different properties to an article of footwear may be an inefficient practice.”
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`(Ex. 1001, 3:4-6.) For example, the “various materials utilized in a conventional
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`upper are not generally obtained from a single supplier.” (Id., 3:6-8.) A
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`manufacturer, therefore, “must coordinate the receipt of specific quantities of
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`materials with multiple suppliers that may have distinct business practices or may
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`be located in different regions or countries.” (Id., 3:8-12.) The materials “may
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`also require additional machinery or different assembly line techniques to cut or
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`otherwise prepare the material for incorporation into the footwear,” and
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`“incorporating separate materials into an upper may involve a plurality of distinct
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`manufacturing steps requiring multiple individuals.” (Id., 3:12-17.)
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`The ’749 patent recognized and addressed these inefficiencies. (Ex. 1001,
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`11:43-14:5.) Figure 9 of the patent, reproduced below, shows an example of
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`knitted textile elements and a surrounding knitted textile structure that have been
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`simultaneously knitted in accordance with the invention. (Id., 4:13-14.)
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`The knitted textile elements are labeled 40 and the surrounding knitted
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`textile structure is labeled 60. (Ex. 1001, 7:38-8:8.) The “textile structure 60 has a
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`Patent No. 8,266,749
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`generally cylindrical configuration” because it was knitted on a circular knitting
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`machine. (Id., 7:40-41.) During the knitting process, the types of stitches may be
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`varied throughout the textile structure “so that a pattern is formed with the outline
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`of textile element 40.” (Id., 7:41-43.) The “differences in the stitches within
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`textile structure 60 form an outline with the shape and proportions of textile
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`element 40.” (Id., 7:43-45.) The knitted textile elements may also have a texture
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`that differs from a texture in the surrounding knitted textile structure. (Id.)
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`After the circular knitting machine is finished knitting the textile elements
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`and surrounding textile structure, the entire structure is removed from the machine.
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`(Ex. 1001, 8:4-8.) Each textile element is then cut from the surrounding textile
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`structure “with a die-cutting,
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`laser-cutting, or other conventional cutting
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`operation.” (Id.) Figure 8 of the ’749 patent, reproduced below, shows what a
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`knitted textile element may look like after it has been knitted on the knitting
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`machine and then cut from the surrounding textile structure. (Id., 5:59-60.)
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`The “textile element 40 is a single material element that is formed to exhibit
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`a unitary (i.e., one-piece) construction, and textile element 40 is formed or
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`otherwise shaped to extend around the foot.” (Ex. 1001, 5:40-43.) The area of
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`textile element labeled 32 is the lateral region of the upper, the area labeled 32 is
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`the medial region, the area labeled 33 is the instep region, the area labeled 34 is the
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`bottom surface, and the area labeled 35 is the heel region. (Id., 5:21-36.)
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`The textile element may have a “generally planar configuration” after it is
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`removed from the surrounding textile structure. (Ex. 1001, 6:13-14.) That is, the
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`knitting machine does not fold or seam the edges of the textile element, labeled
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`41a-44d in Figure 8 above, to form an upper during the knitting process. (Id.,
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`5:40-43.) Rather, after the textile element is removed from the surrounding textile
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`structure, the edges of the generally planar textile element must then be folded and
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`seamed to form an upper. (Id., 5:59-6:29.) In the example shown in Figure 8,
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`edges 41a and 41b are folded or otherwise overlapped so that 41a is placed
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`adjacent to 41b. (Id., 6:9-11.) The edges 41a and 41b are then seamed together by,
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`for example, “stitching, an adhesive, or heat bonding.” (Id., 6:11-13.) Similarly,
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`edges 42a and 42b are folded and seamed together, edges 43a and 43b are folded
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`and seamed together, edges 43c and 43d are folded and seamed together, edges 44a
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`and 44b are folded and seamed together, and edges 44c and 44d are folded and
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`seamed together. (Id., 5:64-6:29.) Folding and joining these edges forms seams
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`51-54, which are shown in Figures 2-5 of the ’749 patent reproduced below. (Id.,
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`5:59-62.)
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`
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`The knitted textile element, or upper, may also have different areas with
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`different textures that may be formed by varying the type of stitch during the
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`knitting process. (Ex. 1001, 9:29-10:7.) Additionally, the knitted textile element
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`may have areas with apertures that are formed by omitting stitches at specific
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`locations during the knitting process. (Id.) For example, Figure 11 of the ’749
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`patent, reproduced below, shows a knitted textile element with at least three
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`different areas with three different textures. (Id., 9:31-32.) They include a first
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`area with a first texture 46ꞌꞌ that is generally smooth, a second area with a second
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`texture 47ꞌꞌ that is generally rough, and a third area with a third texture 48ꞌꞌ that is
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`different that the first and second textures. (Id., 9:29-57.) The third texture also
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`includes a plurality of apertures that extend through the upper. (Id., 9:47-53.)
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`The manufacturing of the upper is essentially complete after the knitted
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`textile element is removed from the surrounding textile structure and then seamed
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`as described above. (Ex. 1001, 6:30-31.) The upper is formed of a single material
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`but may still have different properties in different areas. (Id.) The upper may then
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`be secured to a sole structure to complete the article of footwear. (Id., 6:33-34.)
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`C. DURING PROSECUTION, THE EXAMINER CONSIDERED THE PRIOR ART
`THAT PETITIONER NOW RELIES ON IN ITS CHALLENGE
`The examiner analyzed Nishida during prosecution of the ’749 patent. (Ex.
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`1002, 237.) Petitioner acknowledges this fact at least three times in its petition.
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`(Pet. 4-5, 11-12, 59-60.) Petitioner does not attempt to dispute, challenge, or rebut
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`the examiner’s findings regarding Nishida’s disclosure. (Id.) Instead, Petitioner
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`argues the examiner did not consider Nishida in combination with Reed. (Id.)
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`That is technically true, but the examiner considered prior art knitting machines
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`like Reed. The specification of the ’749 patent itself describes prior art circular
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`knitting machines. (Ex. 1001, 7:46-63.)
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`The examiner initially rejected claims 1-8, 11-18, and 21 as anticipated by
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`Nishida. (Ex. 1002, 237.) The examiner based this rejection on her incorrect
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`belief (which she later corrected) that Nishida discloses simultaneously knitting a
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`textile element and a surrounding structure. (Id.) The examiner stated that
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`“Nishida shows a process for producing a shoe comprising simultaneously knitting
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`a textile element (3) with a surrounding textile structure (1 and 4), the elements are
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`removed from the surrounding textile and the longitudinal edges that are joined
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`together (7 and 8) and a sole attached thereto (see figure 3) as claimed.” (Id.)
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`In response, NIKE corrected the examiner’s misunderstanding of Nishida.
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`(Ex. 1002, 258-260.) NIKE explained that “Nishida fails to disclose a knitted
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`textile element simultaneously formed with a knitted textile structure during a
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`knitting process.” (Id., 259 (emphasis in original).) Instead, “Nishida discloses
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`that layouts 2 are printed, embroidered, woven, or knitted onto a pre-existing
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`backing material 4.” (Id. (emphasis in original).) Specifically, NIKE continued,
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`“Nishida discloses that layouts 2 are produced by ‘a fabric printing process ... on
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`the web of material and/or by a textile production process inside the web of
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`material.’” (Id. (citing Nishida at 2:50-56).) Because Nishida teaches that layouts
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`2 may be produced by a ‘fabric printing process ... on the web of material,’ Nishida
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`necessarily teaches that the backing material for the web of material must be
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`formed prior to the production of the layouts.” (Id.) In other words, NIKE
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`continued, “the formation of Nishida’s backing material must precede the printing
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`of the layouts thereupon.” (Id.)
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`With respect to the “backing material,” NIKE explained that “Nishida
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`further discloses that ‘the web of material has a backing 4 that can be a
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`conventionally used material ...’ and that ‘the web of material 1 is produced so that
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`its surface areas 1.1, in which no layout(s) 2 or tongue(s) 40 are provided, consist
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`of a lightweight material quality that is a simple and economical as possible.” (Id.
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`(citing Nishida at 3:13-15).) NIKE explained Nishida provides that “these surface
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`areas 1.1 can be produced like a gauze or with low to very low warp and/or filling
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`gauge and/or, for example, by being thin-spun or the like.” (Id. (citing Nishida at
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`5:45-52).) This means “Nishida discloses that the backing material 4, which
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`includes the surface area 1.1 outside the layouts, is formed separately from the
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`layouts 2 themselves.” (Id.)
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`NIKE also explained the portion of Nishida that states the “layouts 2 may be
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`produced ‘by a textile production process inside the web of material.’” (Id.) NIKE
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`explained that portion is “not a disclosure that the layouts and the area surrounding
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`the layouts are simultaneously formed.” (Id.) For example, NIKE continued,
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`“embroidery, which could be considered a prime example of a ‘textile production
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`process inside the web of material,’ is specifically listed by Nishida as a process
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`for forming a layout.” (Id., 259-60 (citing Nishida at 5:27-31).) NIKE explained
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`that “embroidery is produced as a subsequent operation onto an existing backing
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`material.” (Id., 260.)
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`For all these reasons, NIKE explained to the examiner that “Nishida fails to
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`disclose that the layouts are simultaneously formed with the backing material or the
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`surrounding surface areas.” (Ex. 1002, 260 (emphasis in original).) Even further,
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`NIKE continued, “Nishida fails to disclose that the layouts are simultaneously
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`knitted with the backing material.” (Id. (emphasis in original).) That is, NIKE
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`explained, “although Nishida discloses that the backing material can be ‘a knitted
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`fabric’ and that the layouts may be ‘knitted,’ Nishida fails to disclose that these
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`two processes occur simultaneously.” (Id. (citing Nishida as 3:13-15).) NIKE
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`further noted that “processes that involve ‘knitting through’ or ‘stitching through’ a
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`backing material, such as disclosed in US 4,144,727 to Duhl et al., titled ‘Knitted
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`Malimo Type Fabric,’ were known at the time of Nishida’s application.” (Id.)
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`Thus, NIKE continued, “it is entirely in keeping with Nishida’s disclosure for a
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`layout (knitted or otherwise) to be subsequently produced on an existing backing
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`material (knitted or otherwise) using a Malimo-type process.” (Id.)
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`The examiner and NIKE thereafter conducted an interview to discuss
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`Nishida. (Ex. 1002, 278.) During the interview, the examiner acknowledged that
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`her initial understanding of Nishida was incorrect. (Id.) The examiner stated in an
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`interview summary, “[a]fter further consideration and arguments it was clarified
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`that Nishida may disclose a web of material having different textures, but there is
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`no clear disclosure of the textures differing such that the textile element has a
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`texture which is different than the texture of the surrounding textile structure and
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`that the textile element and the surround structure are simultaneously knitted.”
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`(Id.) The examiner further agreed that “Nishida does not provide any clear
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`disclosure of where the differing textures are located.” (Id.) The examiner asked
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`NIKE to “clarify” this corrected understanding of Nishida in a request for
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`reconsideration. (Id.)
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`NIKE submitted a request for reconsideration as directed. (Ex. 1002, 285-
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`286.) NIKE first again explained that “Nishida discloses that the backing 4 for the
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`web of material 1 must be formed prior to the production of the layouts,” and thus,
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`“Nishida fails to disclose a knitted textile element simultaneously formed with a
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`knitted textile structure, having a differing texture, during a knitting process.” (Id.,
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`286 (emphasis in original).)
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`NIKE then addressed an excerpt of Nishida that had initially confused the
`
`examiner; namely, the excerpt of Nishida that reads: “[a]s already indicated, the
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`webs of material being used can be produced by program-controlled web material
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`production devices whose programs can be matched almost at will according to the
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`corresponding basic setting with deviations in size of the layouts of the individual
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`shoe uppers or with changes of the type of weave or knit of individual areas or
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`contours, the type of fiber or yarn and/or the color.” (Ex. 1002, 286 (citing Nishida
`
`at 5:63-6:2.) NIKE explained that even if, arguendo, the disclosure “changes of
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`the type of weave or knit of individual areas” refers to the backing of Nishida, that
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`disclosure “fails to disclose that the type of weave or knit is associated with any
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`specificity to any particular area of Nishida’s backing.” (Id.) In other words,
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`NIKE continued, “Nishida simply fails to disclose that its backing material has a
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`first texture in an area associated with a textile element and a differing texture in an
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`area surrounding the textile element.” (Id.) Thus, NIKE explained, “Nishida fails
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`to disclose differing textures of any simultaneously knitted textile element and its
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`simultaneously knitted surrounding textile structure.” (Id.)
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`The examiner agreed with NIKE that Nishida fails to disclose at least these
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`two limitations of the claims: (i) a textile element and a surrounding structure that
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`are simultaneously knitted, and (ii) a textile element that has a texture different
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`than the surrounding textile structure. (Ex. 1002, 278 and 295-296.) The examiner
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`withdrew her rejection and allowed claims 1-8, 11-18 and 21 (and she had
`
`previously allowed claims 9, 10, 19, and 20). (Id., 295-296.)
`
`15
`
`Skechers EX1016
`Skechers v Nike
`
`

`

`Patent No. 8,266,749
`IPR2016-00922
`III. PETITIONER FAILS TO CARRY ITS BURDEN OF PROVING
`THAT CLAIMS 1-9, 11-19, AND 21 ARE UNPATENTABLE
`Petitioner has “the burden of proving a proposition of unpatentability by a
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`preponderance of the evidence.” 35 U.S.C. § 316(e). There are two distinct
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`burdens of proof: a burden of persuasion and a burden of production. In re
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`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375-77 (Fed. Cir. 2016). Both
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`burdens are on Petitioner and never shift to NIKE. Id. at 1376 (rejecting argument
`
`that burdens shift to patent owner once Board institutes IPR).
`
`A.
`LEGAL STANDARD
`A claim is obvious only “if the differences between the subject matter
`
`sought to be patented and the prior art are such that the subject matter as a whole
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`would have been obvious at the time the invention was made to a person having
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`ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a)
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`(pre-AIA); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The ultimate
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`determination is a question of law, but it is based on underlying factual findings.
`
`In re Nuvasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016). The facts include (1)
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`“the scope and content of the prior art,” (2) “differences between the prior art and
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`the claims at issue,” (3) “the level of ordinary skill in the pertinent art,” and (4) the
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`presence of secondary considerations of nonobviousness. Graham v. John Deere
`
`Co., 383 U.S. 1, 17–18 (1966). Petitioner’s arguments fail as to all of the Graham
`
`factors at issue here.
`
`16
`
`Skechers EX1016
`Skechers v Nike
`
`

`

`B.
`
`Patent No. 8,266,749
`IPR2016-00922
`PETITIONER CONCEDES THE LEVEL OF ORDINARY SKILL IN THE ART
`AT THE TIME OF THE INVENTION WAS LOW
`A determination of obviousness requires a finding of the level of ordinary
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`skill in the art at the time of the invention. Graham, 383 U.S. at 17. The “level of
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`skill in the art is a prism or lens through which … the Board views the prior art and
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`the claimed invention.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
`
`2001). This reference point prevents a factfinder from using its “own insight or,
`
`worse yet, hindsight, to gauge obviousness.” Id.
`
`To determine the level of ordinary skill, the Board considers various factors,
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`including “1) the types of problems encountered in the art; 2) the prior art solutions
`
`to those problems; 3) the rapidity with which innovations are made; 4) the
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`sophistication of the technology; and 5) the educational level of active workers in
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`the field.” Ruiz v. A.B. Chance Co., 234 F.3d 654, 666–67 (Fed. Cir. 2000); Wangs
`
`Alliance Corp. v. Koninklijke Philips N.V., IPR2015-01290, Paper 63, 13-16 (Nov.
`
`23, 2016). It is more difficult to establish obviousness under a lower level of
`
`ordinary skill. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342,
`
`1366 (Fed. Cir. 2012).
`
`Petitioner fails to analyze the Board’s factors or any other factors for
`
`determining the level of ordinary skill. (Pet. 8.) Petitioner instead provides a
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`conclusory description of what it contends is the level of ordinary skill. (Id.; Ex.
`
`1003 at ¶ 34.) In doing so, Petitioner concedes the level of ordinary skill was low,
`
`17
`
`Skechers EX1016
`Skechers v Nike
`
`

`

`Patent No. 8,266,749
`IPR2016-00922
`stating that a person of ordinary skill would have only “a few years of experience
`
`in the footwear industry.” (Id.)
`
`Petitioner describes the skills it contends a person with “a few years of
`
`experience” would possess, including an “understanding” of the product cycle for
`
`bringing a product to market, an “understanding that there are some key review
`
`milestones” during the product cycle when “upper material designs are reviewed,”
`
`an “understanding” of “typical” construction methods, and an “understanding” of
`
`the “material choices” and “construction techniques and processes” used to create
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`conventional shoes. (Id.) Absent from Petitioner’s description is any knitting
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`experience, let alone experience using knitting technologies to create knitted
`
`footwear uppers. (Id.)
`
`Petitioner’s alleged footwear expert, Mr. Holden, confirmed during his
`
`cross-examination that a person with just “a few years of experience in the
`
`footwear industry” would have no knitting experience. Mr. Holden, who has
`
`nearly forty years of experience in the footwear industry and who Petitioner
`
`contends has extraordinary skill in the art, testified that even today – thirteen years
`
`after the invention of the ’749 patent – he has no meaningful knitting experience.
`
`For example, Mr. Holden admitted that he has never used knitting technologies to
`
`design or create knitted footwear uppers. (Ex. 2004, 60:16-22, 71:22-73:3, 73:23-
`
`74:14.) He admitted he has never operated or programmed a knitting machine.
`
`18
`
`Skechers EX1016
`Skechers v Nike
`
`

`

`Patent No. 8,266,749
`IPR2016-00922
`(Ex. 2004, 70:19-71-15.) He admitted he has never removed a knitted upper from
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`a web of material and processed it into a shoe. (Ex. 2004, 73:4-18.) In fact, Mr.
`
`Holden testified he never would have been allowed to do any of those things
`
`because it would have been too “dangerous.” (Ex. 2004, 71:25-72:25, 74:3-75:9.)
`
`If it was too “dangerous” for Mr. Holden with his nearly forty years of experience,
`
`a person with just a “few years of experience” would not have had any knitting
`
`experience, let alone experience using knitting technologies to create uppers.
`
`In sum, the level of ordinary skill in the art at the time of the ’749 patent was
`
`low. It is more difficult, therefore, for Petitioner to establish obviousness, a