Trials@uspto.gov
`571-272-7822
`
`Paper 21
`Entered: October 19, 2017
`
`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.
`
`Opinion for the Board filed by Administrative Patent Judge ARPIN.
`Opinion Concurring by Administrative Patent Judge FITZPATRICK.
`
`ARPIN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`IPR2016-00922
`Patent 8,266,749 B2
`
`
`BACKGROUND
`I.
`adidas AG (“Petitioner”) filed a Petition pursuant to 35 U.S.C.
`§§ 311–319 to institute an inter partes review of claims 1–9, 11–19, and 21
`of 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 instituted an inter partes review
`of claims 1–9, 11–19, and 21 of the ’749 patent. Paper 6 (“Inst. Dec.”), 23.
`After institution, Patent Owner filed a Patent Owner Response to the
`Petition (Paper 9 (“PO Resp.”)), and Petitioner replied (Paper 10
`(“Reply”)).3 Each party requested an oral hearing (Papers 15 and 16); and
`
`
`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.
`3 Patent Owner filed objections to the admissibility of some of Petitioner’s
`evidence. Paper 12. Petitioner served – and improperly filed –
`supplemental evidence in response to Patent Owner’s objections. Paper 13;
`Ex. 1015; 37 C.F.R. § 42.64(c); see 37 C.F.R. § 42.64(b)(2) (“The party
`relying on evidence to which an objection is timely served may respond to
`the objection by serving supplemental evidence within ten business days of
`service of the objection.” (emphasis added)); GoPro, Inc. v. Contour IP
`Holding LLC, Case IPR2015-01078, slip op. at 2–3 (PTAB Apr. 7, 2016)
`(Paper 40) (“If the supplemental evidence does not cure the objection and
`the opposing party files a motion to exclude, the submitting party may file
`the supplemental evidence with its opposition to the motion to exclude.”).
`Ultimately, Patent Owner did not file a motion to exclude, and, therefore,
`Patent Owner did not preserve its objections. 37 C.F.R. § 42.64(c).
`Regardless, Exhibit 1015 is expunged because we did not authorize its filing.
`2
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`we held a consolidated oral hearing with Case IPR2016-00921 on July 12,
`2017. A transcript of that hearing is of record in this case. Paper 20 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6, and this Final Written
`Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73,
`addresses issues and arguments raised during the review. For the reasons
`discussed below, we determine that Petitioner has not met its burden to
`prove, by a preponderance of the evidence, that claims 1–9, 11–19, and 21 of
`the ’749 patent are unpatentable on the ground upon which we instituted
`inter partes review.
`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 1:20–23). Conventional articles of athletic footwear
`may include two primary elements: an upper and a sole structure. Id. at
`1:25–28. 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 1:42–47.
`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 3:27–33. Methods for manufacturing an 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
`
`
`
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`textile structure, and incorporating the textile element into an upper of the
`article of footwear.” Id. at 3:41–46.
`Figure 9 of the ’749 patent is reproduced below.
`
`
`
`Figure 9 depicts textile structure 60 formed on a circular knitting
`machine. Id. at 7:38–39. 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 7:14–20. As discussed below, the types of stitches that form textile
`structure 60 may be varied to form an outline of one or more textile
`elements 40 on textile structure 60. Id. at 7:64–8:3. In particular, as
`depicted in Figure 9, the outlines for at least two textile elements 40 may be
`formed on textile structure 60. Id. at 7:53–54.
`4
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`
`Figure 8 of the ’749 patent is reproduced below.
`
`
`Figure 8 depicts an embodiment of an upper according to the ’749
`
`patent. Id. at 5:59–6:64. “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
`5:40–43; see also id. at Figs. 10 (depicting textile element 40ʹ), 11 (depicting
`textile element 40ʺ). In particular,
`Textile element 40 is a single material element with a
`unitary construction, as discussed above. As defined for
`purposes of the present invention, unitary construction is
`intended to express a configuration wherein portions of a textile
`element are not joined together by seams or other connections,
`as depicted with textile element 40 in FIG. 8. Although the
`various edges 41a-44d are joined together to form seams 51-54,
`
`
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`
`the various portions of textile element 40 are formed as [a]
`unitary element without seams . . . .
`Id. at 6:41–50 (emphases added). Consequently, textile element 40 is
`formed, such that portions of the textile element are not joined together with
`seams or other connections. Id. at 5:40–43. Edges 41a–44d are joined
`together as shown in Figures 3–5 to form seams 51–54, thereby forming at
`least a portion of a void for receiving the foot. Id. at 6:41–50. 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
`5:46–58, 6:47–50). Referring to Figure 9,
`a first textile element 40 and a second textile element 40 may be
`simultaneously formed in a single textile structure 60. As the
`diameter of textile element 60 is increased or the width of
`textile element 40 decreases, however, an even greater number
`of textile elements 40 may be outlined on textile structure 60.
`Id. at 7:58–63 (emphasis added).
`Figure 11 of the ’749 patent is reproduced below.
`
`
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`
`
`Figure 11 depicts another embodiment of an upper according to the
`
`’749 patent. Id. at 9:29–10:7. Textile element 40ʺ includes three different
`areas with three different textures. Id. at 9:31–32. 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 9:32–35. In addition,
`textile element 40ʺ includes second texture 47ʺ and third texture 48ʺ. Id. at
`9:32–35. Moreover, the Specification of the ’749 patent describes that:
`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 9:39–47 (emphasis added).
`
`
`
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`Patent 8,266,749 B2
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`
`
`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. Claims 1 and 11 are illustrative
`of the claims at issue and are 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;
`removing the knitted textile element from the surrounding
`knitted textile structure;
`incorporating the knitted textile element into the article of
`footwear.
`11. The method of claim 1, wherein simultaneously knitting
`a textile element with a surrounding textile structure includes
`forming the knitted textile element to include a first area and a
`second area with a unitary construction, the first area being
`formed of a first stitch configuration, and the second area being
`formed of a second stitch configuration that is different from
`the first stitch configuration to impart varying textures to a
`surface of the knitted textile element.
`Id. at 11:43–52 (claim 1), 12:14–21 (claim 11).
`
`
`
`C. Related Proceedings
`
`Neither party identifies any related litigation. Pet. 1; Paper 5, 2. As
`discussed above, the ’749 patent is a continuation of the application that
`issued as the ’011 patent, which is the subject of IPR2013-00067. Pet. 1. In
`that case, the panel 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. The 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. Nike, Inc. v. adidas AG, 812
`F.3d 1326, 1329 (Fed. Cir. 2016). The Federal Circuit issued its mandate in
`that case on April 4, 2016. In addition, Petitioner has requested inter partes
`review of claims of related patents in IPR2016-00920 (U.S. Patent No.
`8,042,288 B2), institution denied, and IPR2016-00921 (U.S. Patent No.
`8,266,749 B2), institution granted. Paper 5, 2.
`
`D. Applied References and Declaration
`Petitioner relies on the following references and declaration in support
`of its asserted ground of unpatentability:
`
`Exhibit
`1003
`1006
`
`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. 5,345,638 to Nishida, issued Sept. 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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`IPR2016-00922
`Patent 8,266,749 B2
`
`
`E. Instituted Ground of Unpatentability
`
`We instituted review on the following ground of unpatentability:
`References
`Basis
`Challenged Claims
`Reed and Nishida
`35 U.S.C. § 103(a)
`1–9, 11–19, and 21
`Pet. 7.
`
`II. ANALYSIS
`A. Person of Ordinary Skill in the Art
`
`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). Patent Owner
`contests Petitioner’s assessment of the level of ordinary skill in the relevant
`art, but does not propose an alternative assessment. PO Resp. 17–19.
`Initially, Patent Owner contends that Petitioner has failed to consider
`appropriate factors identified by our reviewing court and utilized by other
`panels to assess the level of ordinary skill in the art. Id. at 17–18. We agree
`with Petitioner that it is not necessary to consider every factor or to weigh
`the factors equally in order to assess the level of ordinary skill in the art.
`Reply 2 (quoting In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)).
`Here, we may rely on Petitioner’s declarant’s testimony (Ex. 1003 ¶ 34) and
`the teachings of the prior art to evaluate Petitioner’s assessment of the level
`
`
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`of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001). In particular, Reed and Nishida identify the types of problems
`encountered in the art prior art solutions to these problems, and the
`sophistication of the technology. E.g., Ex. 1006, 1:13–55; Ex. 1009, 1:10–
`36; see, e.g., Ex. 1007, 1:8–32, 2:12–64; Ex. 1008, 1:11–54; Ex. 1010, 145–
`160; see also Ex. 1010, Preface (“The aim of this book is to combine in a
`single volume the fundamental principles of weft and warp knitting in such a
`manner that its contents are useful to readers in education, industry or
`commerce. It thus [fulfills] the long felt need for a comprehensive up-to-
`date textbook explaining this important sector of textile technology.”).
`Patent Owner contends that the level of ordinary skill in the art is
`“low” (PO Resp. 17–18), but it is not clear whether Patent Owner further
`contends that Petitioner’s assessment is deficient because Petitioner fails to
`argue that a person possessing such a “low” level of ordinary skill in the art
`also would have “experience using knitting technologies to create knitted
`footwear uppers” (id. at 18–19) or whether the inclusion of such skill would
`raise the “low” level of skill in the art (id. at 19). Alternatively, Patent
`Owner may merely be contending that Petitioner’s declarant fails to qualify
`as a person of ordinary skill in the art. Id. at 19 (“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.”); see Tr.
`62:17–22. Patent Owner is not required to help us assess the level of
`ordinary skill in the art and does not do so here. See PO Resp. 22
`(“Petitioner may criticize NIKE for not submitting an expert declaration.
`
`
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`But it is Petitioner’s burden to prove unpatentability; it is not NIKE’s burden
`to prove patentability.”).
`In response to Patent Owner’s contentions, Petitioner argues that the
`level of ordinary skill in the art is not low and that hands-on knitting
`experience is not required. Reply 2–3. Petitioner further argues Patent
`Owner has not required knitting experience in its previous assessment with
`respect to a related patent of the level of ordinary skill in the art. Id. at 2
`(citing IPR2013-00067, Ex. 2010 ¶ 52). Based on the record before us and
`to the extent necessary, we again adopt Petitioner’s assessment of a person
`of ordinary skill in the relevant art. Inst. Dec. 8 n.3.
`
`B. 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. 37 C.F.R. § 42.100(b).
`Under that standard, claim terms are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007). The following four claim terms are at issue in this
`proceeding.
`
`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-
`
`
`
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`00067, slip op. at 16–17 (PTAB Apr. 28, 2014) (Paper 60). We further note
`that the ’749 patent’s Specification provides that “[a]s defined for purposes
`of the present invention, unitary construction is intended to express a
`configuration wherein portions of a textile element are not joined together
`by seams or other connections, as depicted with textile element 40 in FIG.
`8.” Ex. 1001, 6:42–46 (emphasis added); see IPR2013-00067, Ex. 1002,
`6:41–46 (identical disclosure). The ’011 patent and the ’749 patent share the
`same Specification (apart from their claims), 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 Patent Owner does not contest
`Petitioner’s proposed construction of this term in this proceeding.
`Therefore, in view of the express definition of the phrase “unitary
`construction” in the Specification of the ’749 patent, we adopt Petitioner’s
`proposed construction as the broadest reasonable interpretation for this term.
`See Tr. 20:5–13, 37:11–17.
`
`2. “wide-tube circular knitting machine” (Claims 9 and 19)
`
`We determine that the broadest reasonable interpretation of the term
`“wide-tube circular knitting machine” is “a circular knitting machine
`forming body garment sized, tubular textile structures, including those
`having a diameter that ranges from 10 inches to 20 inches.” See Inst. Dec.
`9–11. Neither party contests this construction. See Tr. 20:5–13, 37:11–17.
`
`3. “impart” (claims 11 and 21) and “texture” (claims 8, 11,
`and 21)
`During the course of the review, the parties raised issues regarding the
`construction of two additional terms that appear only in the challenged
`dependent claims. First, Petitioner argues that the term “impart” means “to
`
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`give, convey, or grant from.” Reply 24 (citing Ex. 1014).4 Further,
`Petitioner argues that this definition is consistent with the use of the word
`“impart” in the Specification of the ’749 patent. E.g., Ex. 1001, Abstract,
`1:30–35, 1:60–63, 1:65–2:3, 3:33–37, 7:35–37; see Tr. 21:4–14. Patent
`Owner does not propose an alternative construction for the term “impart.”
`Further, neither party argues that the term “impart” carries special meaning
`in the relevant art. In fact, we find Spencer’s use of the word “impart” in the
`handbook on knitting technology consistent with Petitioner’s dictionary
`definition and the word’s use in the Specification of the ’749 patent. See
`Ex. 1010, 189. Thus, to the extent any construction of this term is necessary,
`we find that the broadest reasonable interpretation of the term “impart” is “to
`give, convey, or grant from.” See Summit 6, LLC v. Samsung Elecs. Co.,
`802 F.3d 1283, 1291 (Fed. Cir. 2015) (“[E]ach [term] is used in common
`parlance and has no special meaning in the art. Because the plain and
`ordinary meaning of the disputed claim language is clear, the district court
`did not err by declining to construe the claim term.”).
`Second, although Petitioner does not provide an express interpretation
`for the term “texture,”5 Petitioner’s declarant testifies “texture” “generally
`
`4 Petitioner relies on a definition of “impart” from a current, on-line
`dictionary rather than from a dictionary contemporaneous with the effective
`filing date of the ’749 patent. However, the record contains no suggestion
`that the relevant definition of “impart” has changed since the effective filing
`date of the ’749 patent, and we determine that it has not. See RANDOM
`HOUSE WEBSTER’S COLLEGE DICTIONARY, 659 (2nd ed. 1999) (Ex. 3001)
`(“impart” means “to give; bestow”).
`5 A relevant dictionary definition of the word “texture” is “the characteristic
`structure of the threads, fibers, etc., that make up a textile fabric: course
`texture,” “a rough or grainy surface quality,” or “anything produced by
`weaving; woven fabric.” Ex. 3001, 1351.
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`could be an actual texture or a perceived texture based on the arrangement of
`colors in a pattern.” Reply 4–5 (citing Ex. 2004, 178:20–24; see also id. at
`177:1–178:19, 178:25–184:11). Patent Owner disputes Mr. Holden’s
`interpretation of “texture,” which appears inconsistent with Spencer’s
`discussion of texture. See Ex. 2004, 80:24–81:8. In particular, according to
`Spencer, “[c]olour is one of the five ingredients of fashion, the other four
`being style, silhouette, texture and pattern.” Ex. 1010, 127 (emphasis
`added). Thus, Spencer appears to distinguish between color and texture.
`The Specification of the ’749 patent does not define “texture,” but
`contrasts between “smooth” and “textured” areas of a textile element.
`Ex. 1001, 9:23–24. Moreover, with respect to Figure 11, the Specification
`of the ’749 patent explains that:
`The different textures 46"-48" are formed by merely varying
`the type of stitch formed by the wide-tube circular knitting
`machine at each location of textile element 40". Textures 46"-
`48" may exhibit aesthetic differences, or the differences may be
`structural. For example, the degree of stretch in areas with
`textures 46"-48" may be different, or the wear resistance of the
`areas may vary depending upon the stitch utilized. The air-
`permeability of textile element 40" may also vary in the
`different areas. Third texture 48" is formed to include a
`plurality of apertures that extend through textile element 40".
`The apertures may be formed by omitting stitches at specific
`locations during the wide-tube circular knitting process, and the
`apertures facilitate the transfer of air between the void within
`upper 20 and the area outside of upper 20. Accordingly, the
`various stitches formed in textile element 40", or one of textile
`elements 40 or 40', may be utilized to vary the texture, physical
`properties, or aesthetics of footwear 10 within a single, unitary
`element of material.
`Id. at 9:39–57 (emphasis added). From this explanation, we understand that
`“texture,” as used in the ’749 patent, is distinguishable from the physical and
`
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`aesthetic properties of a textile element. According to the recitations of
`claims 11 and 21, “texture” is produced as part of the step recited in claims 1
`and 13 of “simultaneously knitting a textile element with a surrounding
`textile structure.” See Ex. 1001, 11:45–46. Thus, to the extent any
`construction of this term is necessary, we find that the broadest reasonable
`interpretation of the term “texture” in the context of claims 11 and 21 is “a
`non-smooth surface formed while simultaneously knitting a textile element
`with a surrounding textile structure.” Such a surface may be created by
`“varying the type of stitch formed by the wide-tube circular knitting machine
`at each location of textile element.” Id. at 9:39–42.
`
`4. Other Claim Terms
`
`For purposes of this Final Written Decision, we discern no other claim
`terms that require express interpretation.
`
`C. 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 the combined teachings of Reed
`and Nishida. To support its arguments, Petitioner provides a detailed
`mapping of limitations of the challenged claims to Reed and Nishida.
`Pet. 13–32. Petitioner also cites Mr. Holden’s Declaration for support. See
`Ex. 1003 ¶¶ 91–138.
`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
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`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art;6 and (4) objective evidence of
`nonobviousness, i.e., secondary considerations.7 See Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966). On this record and for the reasons set forth
`below, we are not persuaded that Petitioner demonstrates by a
`preponderance of the evidence that claims 1–9, 11–19, and 21 of the ’749
`patent are unpatentable as rendered obvious over the combined teachings of
`Reed and Nishida.
`
`2. Reed (Ex. 1006)
`
`Reed is directed to a method of manufacturing a wearable item, which
`includes, among other things, simultaneously knitting two concentric tubes
`with a circular-knitting machine to form a cylindrical textile structure
`(Ex. 1006, Abstract, 1:58–64, 2:22–25, 3:3–5), textile elements located in
`different portions of the textile structure (id. at 2:29–31), removing the
`textile elements from the textile structure (id. at 3:12–19, 5:67–6:5), and
`incorporating the textile element(s) “to form all types of garments worn by
`men, women and children” (id. at 5:56–58 (emphasis added); see id. at 1:33–
`
`
`6 See supra Section II.A.; 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.”).
`7 The record lacks arguments or evidence of secondary considerations. See
`generally PO Resp.
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`35).8 In particular, Reed describes methods of making preseamed garments
`(id. at 3:8–21) or preseamed sections of a garment, which sections may be
`seamed together “by standard practices” to form a garment (id. at 6:10–17).
`As Reed explains,
`From the preceding description of the preferred embodiments,
`it is evident that the objects of the invention are obtained to
`produce a preformed and preseamed fabric on a circular
`knitting machine so as to reduce time, cost and labor involved
`in making garments. The types of program used to form the
`final product is to be varied with the imagination of the
`programmer, as well as the type of product which may be
`formed. The essence of the present invention is a garment
`formed of juxtaposed sections of simultaneously knitted,
`concentric tubes interconnected by knitting.
`Id. at 6:18–28 (emphasis added).
`Reed’s Figure 1 is reproduced below.
`
`
`8 Patent Owner contends that Reed is not analogous art. PO Resp. 34–36. In
`particular, Patent Owner contends that Reed is not from the same field of
`endeavor as the challenged claims and that Reed’s teachings are not
`reasonably pertinent to the particular problem with which the recited
`methods are involved. Id. at 34–35. Because Reed is directed to the
`manufacture of all types of garments, including footwear (Reply 12–13; see
`Ex. 1006, 1:33–44), and Reed is related directly to preparation of garments
`layouts from a knitted textile structure (Reply 14–15; see Ex. 1006, 2:29–
`35), we are persuaded that Reed is analogous art to the challenged claims.
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`Figure 1 depicts tubular knitted structure 10, such as that produced by a
`circular knitting machine. Id. at 2:66–3:1. 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.[9]
`The garments 16, 18 and 20 are 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 is merely to
`define the lower outline of the skirt upon which the pattern may
`be cut.
`Id. at 3:1–15 (emphasis added).
`Reed explains that the use of circular knitting machines in the garment
`industry historically was limited to making tubular, knitted garments, such
`
`9 We are persuaded that “skirts” are “body garments.” See Ex. 1003 ¶ 97.
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`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, 1:33–44; Ex. 1003 ¶ 94); see supra Section II.C.1.
`(note 6). Reed further teaches that “[c]omputer 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, 1:50–55; see Ex. 1003 ¶ 95. Reed states 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, 1:58–59, 2:22–25, Figs 1–6; see
`Ex. 1003 ¶ 95. Further, Reed teaches that:
`If the present process is used to preform an exterior
`decorative fabric having a lining or inner-lining or interfacing
`attached thereto, the severed sections must be assembled and
`seamed by standard practices. By providing the lining or
`interfacing already attached to the section, a substantial amount
`of time is saved in measuring, marking and cutting the original
`fabric and lining or interlining as well as stitching them
`together.
`Ex. 1006, 6:10–17 (emphasis added).
`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 Ex. 1009, Abstract. By this process, such shoe
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