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Nike, Inc. v. Adidas AG, 812 F.3d 1326, 117 U.S.P.Q.2d 1967

Facts

This case involves an inter partes review (IPR) of U.S. Patent No. 7,347,011 owned by Nike, Inc., which pertains to a method of manufacturing footwear with a textile upper. Adidas AG filed a petition challenging the patentability of claims 1-46 of the patent. The Patent Trial and Appeal Board (Board) granted Nike's motion to cancel these claims but denied its motion to enter proposed substitute claims 47-50, leading to Nike's appeal. The Board found that Nike did not meet its burden of proving the patentability of the substitute claims over prior art.

Issue

Did the Patent Trial and Appeal Board err in denying Nike's motion to enter substitute claims 47-50 based on the failure to establish their patentability over prior art?

Did the Patent Trial and Appeal Board err in denying Nike's motion to enter substitute claims 47-50 based on the failure to establish their patentability over prior art?

Rule

In inter partes review proceedings, the patent owner has the burden of proving that proposed substitute claims are patentable over prior art, including both record and non-record references. The determination of obviousness is a question of law based on factual findings, which include the level of ordinary skill in the art, the scope and content of prior art, differences between the prior art and the claims, and secondary considerations of non-obviousness.

In inter partes review proceedings, the patent owner has the burden of proving that proposed substitute claims are patentable over prior art, including both record and non-record references. The determination of obviousness is a question of law based on factual findings, which include the level of ordinary skill in the art, the scope and content of prior art, differences between the prior art and the claims, and secondary considerations of non-obviousness.

Analysis

The Board concluded that Nike failed to demonstrate that the proposed substitute claims were patentable over the prior art, specifically citing the need for substantial evidence to support the claims' distinctiveness. The Board's analysis included a review of prior art references and determined that a person of ordinary skill in the art would have reason to modify existing references to arrive at the claimed invention. The Board also noted that secondary considerations were not adequately addressed by Nike.

The Board concluded that Nike failed to demonstrate that the proposed substitute claims were patentable over the prior art, specifically citing the need for substantial evidence to support the claims' distinctiveness. The Board's analysis included a review of prior art references and determined that a person of ordinary skill in the art would have reason to modify existing references to arrive at the claimed invention. The Board also noted that secondary considerations were not adequately addressed by Nike.

Conclusion

The court affirmed the Board's decision in part, vacated it in part, and remanded the case for further proceedings, particularly regarding the Board's failure to consider secondary factors in its obviousness analysis.

The court affirmed the Board's decision in part, vacated it in part, and remanded the case for further proceedings, particularly regarding the Board's failure to consider secondary factors in its obviousness analysis.

Who won?

The prevailing party in this case is Adidas AG, as the Board's decision to deny Nike's motion to enter substitute claims was upheld. The Board found that Nike did not meet its burden of proving the patentability of the proposed claims over the prior art, which included substantial evidence supporting the conclusion that a person of skill in the art would have reason to modify existing references to achieve the claimed invention.

The prevailing party in this case is Adidas AG, as the Board's decision to deny Nike's motion to enter substitute claims was upheld. The Board found that Nike did not meet its burden of proving the patentability of the proposed claims over the prior art, which included substantial evidence supporting the conclusion that a person of skill in the art would have reason to modify existing references to achieve the claimed invention.

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