Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 31
`Entered: February 19, 2019
`
`
`
`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, JAMES B. ARPIN, and SCOTT A. DANIELS,
`Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`
`DECISION ON REMAND
`35 U.S.C. § 144 and 37 C.F.R. § 42.5(a)
`
`Skechers EX1019
`Skechers v Nike
`
`

`

`IPR2016-00922
`Patent 8,266,749 B2
`
`I.
`
`BACKGROUND
`
`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 as allegedly rendered
`
`obvious over the combined teachings of Reed and Nishida. 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,
`
`2
`
`Skechers EX1019
`Skechers v Nike
`
`

`

`IPR2016-00922
`Patent 8,266,749 B2
`
`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.”).
`
`On October 19, 2017, the panel issued its initial Final Written
`
`Decision determining that Petitioner had failed to demonstrate that any of
`
`the challenged claims in IPR2016-00922 were unpatentable. Paper 21 (“1st
`
`FWD”). Petitioner appealed that Final Written Decision to the U.S. Court of
`
`Appeals for the Federal Circuit (“the Federal Circuit”) (Paper 22), and the
`
`Federal Circuit subsequently remanded that decision, so that the panel could
`
`consider an uninstituted ground for unpatentability, pursuant to SAS Inst.,
`
`Inc. v. Iancu, 138 S. Ct. 1348, 1354 (2018), and “directed [the Board] to
`
`promptly issue a final written decision as to all grounds raised in Adidas’s
`
`petitions.” See Paper 23, 3–4 (citing Adidas AG v. Nike, Inc., 894 F.3d
`
`1256, 1257–58 (Fed. Cir. 2018)). The Federal Circuit issued the order and
`
`mandate simultaneously.
`
`The panel modified its Institution Decision and instituted review on
`
`all of the challenged claims and on all of the grounds asserted in the Petition.
`
`Id. at 4. The panel granted additional briefing limited to: (1) addressing
`
`issues discussed in the Institution Decision with respect to the newly
`
`instituted ground (Inst. Dec. 20–22), including directing the panel to
`
`information in the record that it overlooked or misunderstood regarding
`
`Petitioner’s challenge to claim 1–9, 11–19, and 21 based on the combined
`
`teachings of Castello, Fujiwara, and Nishida; and (2) addressing what
`
`impact, if any, arises from the Institution Decision’s determination that
`
`Petitioner had not identified “with particularity,” as required by 35 U.S.C.
`
`
`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.
`
`
`
`3
`
`Skechers EX1019
`Skechers v Nike
`
`

`

`IPR2016-00922
`Patent 8,266,749 B2
`
`§ 312(a)(3), the arguments and evidence that supported its challenge to
`
`claims 1–9, 11–19, and 21 based on the combined teachings of Castello,
`
`Fujiwara, and Nishida. Id. at 11. Petitioner was prohibited from introducing
`
`new argument or evidence with its additional briefing, with the exception of
`
`deposition testimony identified during the conference call and already
`
`existing in the record that Petitioner believes is relevant to the sufficiency of
`
`its arguments in the Petition regarding its challenge to claims 1–9, 11–19,
`
`and 21 based on the combined teachings of Castello, Fujiwara, and Nishida.
`
`Id. Each party filed additional briefing. Papers 24 (“Pet. Supp. Br.”) and 25
`
`(PO Supp. Br.”). Petitioner requested a supplemental hearing. Paper 24, 10.
`
`The panel granted a telephonic, supplemental hearing (Paper 27, 7), and a
`
`transcript of that supplemental hearing is of record in this case. Paper 30
`
`(“Supp. 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 grounds upon which we have
`
`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, (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
`
`
`
`4
`
`Skechers EX1019
`Skechers v Nike
`
`

`

`IPR2016-00922
`Patent 8,266,749 B2
`
`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, 47–48. 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 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.
`
`
`
`5
`
`
`
`Skechers EX1019
`Skechers v Nike
`
`

`

`IPR2016-00922
`Patent 8,266,749 B2
`
`Figure 9 depicts textile structure 60 formed on a circular knitting machine.
`
`Id. at 7:38–41. 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.
`
`Figure 8 of the ’749 patent is reproduced below.
`
`
`
`6
`
`Skechers EX1019
`Skechers v Nike
`
`

`

`IPR2016-00922
`Patent 8,266,749 B2
`
`
`
`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,
`the various portions of textile element 40 are formed as [a]
`unitary element without seams . . . .
`
`
`
`7
`
`Skechers EX1019
`Skechers v Nike
`
`

`

`IPR2016-00922
`Patent 8,266,749 B2
`
`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.
`
`Figures 4 and 5 of the ’749 patent are reproduced below.
`
`
`
`Figures 4 and 5 depict edges 41a–44d, depicted in Figure 8, are joined
`
`together to form seams 51–54, depicted in Figures 4 and 5, thereby forming
`
`at least a portion of a void for receiving the foot. Id. at 5:59–6:50; see id.,
`
`Fig. 3. 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.
`
`
`
`8
`
`Skechers EX1019
`Skechers v Nike
`
`

`

`IPR2016-00922
`Patent 8,266,749 B2
`
`Id. at 7:58–63 (emphasis added).
`
`Figure 11 of the ’749 patent is reproduced below.
`
`
`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.
`
`
`
`9
`
`Skechers EX1019
`Skechers v Nike
`
`

`

`IPR2016-00922
`Patent 8,266,749 B2
`
`Id. at 9:39–47 (emphasis added).
`
`
`
`B. Illustrative Claims
`
`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 4, 1. 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
`
`
`
`10
`
`Skechers EX1019
`Skechers v Nike
`
`

`

`IPR2016-00922
`Patent 8,266,749 B2
`
`’011 patent, and Patent Owner requested cancellation of claims 1–46 and
`
`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 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. On September 18, 2018,
`
`the panel again denied Patent Owner’s motion as to the substitute claims.
`
`IPR2013-00067, Paper 69. Patent Owner again appealed the Board’s
`
`decision to the Federal Circuit. IPR2013-00067, Paper 70.
`
`In addition, Petitioner requested inter partes review of claims of
`
`related patents in IPR2016-00920 (U.S. Patent No. 8,042,288 B2),
`
`institution denied (IPR2016-00920, Paper 6, 2), and IPR2016-00921 (U.S.
`
`Patent No. 7,814,598 B2), institution granted (IPR2016-00921, Paper 6, 2).
`
`On October 19, 2017, the panel issued a Final Written Decision determining
`
`that Petitioner had failed to demonstrate that any of the challenged claims in
`
`IPR2016-00921 was unpatentable. IPR2016-00921, Paper 21. Petitioner
`
`appealed that Final Written Decision to the Federal Circuit (IPR2016-00921,
`
`Paper 22), and the Federal Circuit subsequently remanded that decision, so
`
`that the panel could consider an uninstituted ground for unpatentability,
`
`pursuant to SAS, 138 S. Ct. at 1354. See IPR2016-00921, Paper 23, 3–4.
`
`
`
`11
`
`Skechers EX1019
`Skechers v Nike
`
`

`

`IPR2016-00922
`Patent 8,266,749 B2
`
`
`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 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”)
`
`
`
`12
`
`Skechers EX1019
`Skechers v Nike
`
`

`

`IPR2016-00922
`Patent 8,266,749 B2
`
`
`E. Instituted Grounds of Unpatentability
`
`We instituted review on the following ground of unpatentability:
`
`References
`
`Basis
`
`Challenged Claims
`
`Reed and Nishida
`Castello, Fujiwara, and
`Nishida
`
`Pet. 7; see Paper 23, 4.
`
`35 U.S.C. § 103(a)
`
`1–9, 11–19, and 21
`
`35 U.S.C. § 103(a)
`
`1–9, 11–19, and 21
`
`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) (emphasis
`
`added). 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)).
`
`
`
`13
`
`Skechers EX1019
`Skechers v Nike
`
`

`

`IPR2016-00922
`Patent 8,266,749 B2
`
`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
`
`of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`
`Cir. 2001). In particular, Reed, Castello, Fujiwara, and Nishida identify the
`
`types of problems encountered in the prior art solutions to these problems,
`
`and the sophistication of the technology. E.g., Ex. 1006, 1:13–55; Ex. 1007,
`
`1:8–32, 2:12–64; Ex. 1008, 1:11–54; Ex. 1009, 1:10–36; see, e.g., 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
`
`
`
`14
`
`Skechers EX1019
`Skechers v Nike
`
`

`

`IPR2016-00922
`Patent 8,266,749 B2
`
`(“Petitioner may criticize NIKE for not submitting an expert declaration.
`
`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). The parties do not attempt to argue
`
`the level of ordinary skill further in their supplemental briefing. See Pet.
`
`Supp. Br. 4–5; PO Supp. Br. 4 n.1. 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. 1st FWD 11 (citing 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. 1st FWD 11–15.
`
`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
`
`
`
`15
`
`Skechers EX1019
`Skechers v Nike
`
`

`

`IPR2016-00922
`Patent 8,266,749 B2
`
`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, slip op. at 16–17 (PTAB Apr. 28, 2014) (Paper 60); see adidas AG v.
`
`Nike, Inc., Case IPR2013-00067, slip op. at 11–12 (PTAB Sept. 18, 2018)
`
`(Paper 69). 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.
`
`
`
`16
`
`Skechers EX1019
`Skechers v Nike
`
`

`

`IPR2016-00922
`Patent 8,266,749 B2
`
`
`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
`
`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, 184, 216. 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.”).
`
`
`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”).
`
`
`
`17
`
`Skechers EX1019
`Skechers v Nike
`
`

`

`IPR2016-00922
`Patent 8,266,749 B2
`
`
`Second, although Petitioner does not provide an express interpretation
`
`for the term “texture,”5 Petitioner’s declarant testifies “texture” “generally
`
`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 distinguishes 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, 9:20–21. 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
`
`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.
`
`
`
`18
`
`Skechers EX1019
`Skechers v Nike
`
`

`

`IPR2016-00922
`Patent 8,266,749 B2
`
`
`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
`
`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 40".” 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. See Nidec Motor Corp. v.
`
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`
`(explaining that claim terms need to be construed “only to the extent
`
`necessary to resolve the controversy” (quoting Vivid Techs., Inc. v. Am. Sci.
`
`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`
`
`
`19
`
`Skechers EX1019
`Skechers v Nike
`
`

`

`IPR2016-00922
`Patent 8,266,749 B2
`
`
`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
`
`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
`
`
`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.; Pet. Supp. Br. 4–5.
`
`
`
`20
`
`Skechers EX1019
`Skechers v Nike
`
`

`

`IPR2016-00922
`Patent 8,266,749 B2
`
`Reed and Nishida. We begin our analysis with a summary of the applied
`
`references.
`
`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 circu