petition for ipr d423

8/16/2019 Petition for IPR D423

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UNITED STATES PATENT AND TRADEMARK OFFICE ______________________________________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

______________________________________________

SKECHERS U.S.A., INC.,Petitioner,

v.

NIKE, INC.,Patent Owner.

Case No. ______

PETITION FOR INTER PARTES REVIEWOF U.S. PATENT NO. D700,423 UNDER 35 U.S.C. §§ 311-319


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U.S. Patent No. D700,423Petition for Inter Partes Review

TABLE OF CONTENTS

Page

ii

I. INTRODUCTION .......................................................................................... 1

II.

GROUNDS FOR STANDING AND FEE AUTHORIZATION ................... 3

III. MANDATORY NOTICES (37 C.F.R. § 42.8) .............................................. 3

IV. SUMMARY OF CHALLENGE .................................................................... 4

V. STATEMENT OF MATERIAL FACTS ....................................................... 5

A. Prosecution of the ’423 Patent ............................................................. 5

B. History of Knitting: Footwear .............................................................. 9

C. Knit Patterns and Designs: Space Dyeing and Missoni ..................... 15

D.

The Prior Art ...................................................................................... 21

1. RCD 0015 Qualifies as a Prior Art Printed Publicationand Patent ................................................................................. 22

2. Collezioni Accessori 60 Qualifies as a Prior Art PrintedPublication ............................................................................... 28

3. Close-up Knitwear Man 9 Qualifies as a Prior Art PrintedPublication ............................................................................... 32

4. Close-up Runway 2 Qualifies as a Prior Art Printed

Publication ............................................................................... 34

E. Level of Ordinary Skill in the Art ...................................................... 37

VI. CLAIM CONSTRUCTION ......................................................................... 37

VII. THE SOLE CLAIM OF THE ’423 PATENT IS INVALID ASOBVIOUS ..................................................................................................... 50

A. The Prior Art Suggests and Teaches Modification of RCD 0015with Secondary References ................................................................ 52

B. The ’423 Patent Is Unpatentable Based on Three

Noncumulative Grounds for Obviousness ......................................... 56

1. Ground 1: The ’423 Patent is obvious under § 103 overRCD 0015 in view of Collezioni Accessori 60 aloneand/or in further combination with Close-up Knitwear Man 9 ....................................................................................... 56


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TABLE OF CONTENTS

(continued)

Page

iii

2. Ground 2: The ’423 Patent is obvious under § 103 overRCD 0015 in view of Close-up Knitwear Man 9 aloneand/or in further combination with Collezioni Accessori60 .............................................................................................. 63

3. Ground 3: The ’423 Patent is obvious under § 103 overRCD 0015 in view of Close-up Runway 2 alone and/or infurther combination with Collezioni Accessori 60 .................. 67

VIII. REDUNDANCY .......................................................................................... 71

IX. CONCLUSION............................................................................................. 72


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TABLE OF AUTHORITIES

Page(s)

iv

Cases

Durling v. Spectrum Furniture Co.,101 F.3d 100 (Fed. Cir. 1996) ..........................................................................2, 51

Egyptian Goddess, Inc. v. Swisa, Inc.,543 F.3d 665 (Fed. Cir. 2008) ..............................................................................38

Ethicon Endo-Surgery, Inc. v. Covidien, Inc.,796 F.3d 1312 (Fed. Cir. 2015) .................................................................... passim

High Point Design LLC v. Buyers Direct, Inc.,730 F.3d 1301 (Fed. Cir. 2013) .................................................................... passim

In re Borden,90 F.3d 1570 (Fed. Cir. 1996) ........................................................... 51, 52, 55, 56

In re Carter ,673 F.2d 1378 (C.C.P.A. 1982) .............................................................. 62, 66, 70

In re Cuozzo Speed Techs.,793 F.3d 1297 (Fed. Cir. 2015) ............................................................................38

In re Lamb,286 F.2d 610 (C.C.P.A. 1961) .............................................................................52

MRC Innovations, Inc. v. Hunter Mfg., LLP ,747 F.3d 1326 (Fed. Cir. 2014) ......................................................... 52, 62, 66, 70

Nat’l Steel Car, Ltd. v. Can. Pac. Ry., Ltd.,357 F.3d 1319 (Fed. Cir. 2004) ............................................................................53

OddzOn Prods., Inc. v. Just Toys, Inc.,122 F.3d 1396 (Fed. Cir. 1997) ............................................................................38

Richardson v. Stanley Works, Inc.,597 F.3d 1288 (Fed. Cir. 2010) ............................................................................37


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TABLE OF AUTHORITIES

(continued)

Page(s)

v

Sensio, Inc. v. Select Brands, Inc.,Case No. IPR2013-00500, 2015 WL 5440721 (P.T.A.B. Feb. 9, 2015) .............28

Sport Dimension, Inc. v. Coleman Co.,Case No. 2015-1553, 2016 WL 1567151 (Fed. Cir. Apr. 19, 2016) ...... 39, 44, 48

Suffolk Techs., LLC v. AOL Inc.,752 F.3d 1358 (Fed. Cir. 2014) ......................................................... 22, 32, 34, 36

Statutes

37 C.F.R. § 42.100(b) ..............................................................................................38

Other Authorities

MPEP § 1504.02 ......................................................................................................28

MPEP § 2127 ...........................................................................................................28


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LIST OF EXHIBITS

vi

Skechers 1001 ……… U.S. Patent No. D700,423 (“the ’423 Patent”)

Skechers 10021 ……… File History, including the Supplemental Content drawings,

for U.S. Patent Application No. 29/465,827(“the ’827 Application”), which ultimately issued as U.S.Patent No. D700,423

Skechers 1003 ……… Certified Registration and Extract from the Register forRegistered Community Design No. 002049825-0015(“RCD 0015”)

Skechers 1004 ……… Selected Pages from Collezioni Accessori, Issue 60,July/September 2010 (“Collezioni Accessori 60”)

Skechers 1005 ……… Selected Pages from Close-up Knitwear Man, Issue 9,July 2013 (“Close-up Knitwear Man 9”)

Skechers 1006 ……… Selected Pages from Close-up Runway, Issue 2, March 2010(“Close-up Runway 2”)

Skechers 1007 ……… Complaint, Nike, Inc. v. Skechers U.S.A., Inc.,Case No. 3:16-cv-00007-PK (D. Or.)

Skechers 1008 ……… Council Regulation 6/2002

Skechers 1009 ……… Certified Registration and Extract from the Register forRegistered Community Design No. 002074443-0003(“RCD 0003”)

Skechers 1010 ……… Declaration of Gretchen Hoffman in Support of SkechersU.S.A., Inc.’s Petition for Inter Partes Review of U.S.Patent No. D700,423

1 For ease of reference, Skechers has added consecutive page numbers to the

bottom of each page of exhibits that lack consecutive page numbering, such as

Skechers 1002.


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LIST OF EXHIBITS

(continued)

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Skechers 1011 ……… Curriculum Vitae of Gretchen Hoffman

Skechers 1012 ……… FIT Library Acquisitions Database Record forCollezioni Accessori 60

Skechers 1013 ……… FIT Library Acquisitions Database Record forClose-up Knitwear Man 9

Skechers 1014 ……… FIT Library Acquisitions Database Record forClose-up Runway 2

Skechers 1015 ……… Declaration of Deborah Young in Support of Skechers

U.S.A., Inc.’s Petition for Inter Partes Review of U.S.Patent No. D700,423

Skechers 1016 ……… Curriculum Vitae of Deborah Young

Skechers 1017 ……… Declaration of Robert John Anders in Support of SkechersU.S.A., Inc.’s Petition for Inter Partes Review of U.S.Patent No. D700,423

Skechers 1018 ……… Curriculum Vitae of Robert John Anders

Skechers 1019 ……… Declaration of Brian M. Berliner in Support of SkechersU.S.A., Inc.’s Petition for Inter Partes Review of U.S.Patent No. D700,423

Skechers 1020 ……… Archived copy of Nike Flyknit Racer and Trainer , July 25,2012, http://insider.nike.com/us/shoes/nike-flyknit-racer-and-trainer-3813 from the Internet Archive WaybackMachine (“Wayback Machine Printout”)

Skechers 1021 ……… Selected Pages from Marie Claire, Volume 17, Issue 9,

September 2010 (“Converse-Missoni 2010”)

Skechers 1022 ……… U.S. Patent App. Pub. No. 2012/0233882 A1 (“Huffa ’882”)

Skechers 1023 ……… U.S. Patent App. Pub. No. 2012/0234052 A1 (“Huffa ’052”)

Skechers 1024 ……… U.S. Patent A pp. Pub. No. 2010/0154256 A1 (“Dua ’256”)


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I. INTRODUCTION

Petitioner Skechers U.S.A., Inc. (“Skechers”) seeks inter partes review of

the sole claim of U.S. Patent No. D700,423 (“the ’423 Patent”). The ’423 Patent is

invalid under 35 U.S.C. § 103 based on Registered Community Design No.

002049825-0015 (“RCD 0015”) in combination with any one of Issue 60 of

fashion magazine Collezioni Accessori (“Collezioni Accessori 60”), Issue 9 of

fashion magazine Close-up Knitwear Man (“Close-up Knitwear Man 9”), or Issue

2 of fashion magazine Close-up Runway (“Close-up Runway 2”).

The ’423 Patent claims the ornamental design of an athletic shoe upper

incorporating a conventional knit pattern recognized by designers of ordinary skill

in the art as one resembling the uneven stripes commonly associated with a knit

fabric using space-dyed yarn. The use of knit materials for an athletic shoe upper

was already well known in the art before the filing of the ’423 Patent; indeed,

Nike’s own prior art utility patents taught the desirability of this very

combination.2 Fashion designer Missoni had long promoted the use of space-dye

patterns (i.e., those patterns actually knit with space-dyed yarn as well as those

2 As used herein, “Nike” refers to Patent Owner Nike, Inc., as well as counsel

representing Nike, Inc. in prosecution of the ’423 Patent and the inventor who

made patent prosecution submissions while under the employment of Nike, Inc.


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visually imitating the use of space-dyed yarn) in its knit articles such as sweaters,

skirts, and most notably, footwear, and Missoni’s collaborations with Converse,

Inc. — an athletic shoe manufacturer owned by Nike — were publicized in the art.

In the ’423 Patent, Nike simply placed a knit design giving the appearance of a

space-dye pattern onto the upper of a known athletic shoe design. The claimed

design was therefore obvious to designers of ordinary skill in the art considering

that: (1) Nike had previously disclosed (and registered in the European Union) a

strikingly similar footwear design composed of a “one- piece knit upper[]”; (2) the

ordinary designer knew that any known knit pattern could have been applied to the

“one- piece knit upper[],” including the use of space-dye patterns of the type

popularized by Missoni; and (3) the designer would have been motivated to apply

to athletic shoes preexisting knit patterns and designs, especially designs from

Missoni, in order to achieve the known benefits of comfort, elasticity, and

fashionable style.

Thus, Nike has done no more than exert routine skill in applying a

conventional knit pattern and process to its own prior art athletic shoe design.

Because a designer of ordinary skill would have combined teachings of the prior

art in the identical workmanlike manner to create a design having the same overall

visual appearance as the ’423 Patent, the ’423 Patent is invalid as obvious. See

Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996).


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Because there is at least a reasonable likelihood that Skechers will prevail in

this challenge to the ’423 Patent, Skechers respectfully requests that the Board

grant Skechers’ Petition and institute inter partes review of the ’423 Patent.

II. GROUNDS FOR STANDING AND FEE AUTHORIZATION

Pursuant to 37 C.F.R. § 42.104(a), Skechers certifies that the ’423 Patent is

available for inter partes review and that Skechers is not barred or estopped from

requesting inter partes review on the ground identified herein.

Pursuant to 37 C.F.R. § 42.103(a), the Office is authorized to charge the sum

of $23,000 to Deposit Account No. 50-0639 for the fee set forth in 37 C.F.R.

§ 42.15(a), and any additional fees that might be due.

III. MANDATORY NOTICES (37 C.F.R. § 42.8)

Real Party-in-Interest: The real party-in-interest is Skechers U.S.A., Inc., a

Delaware corporation having a principal place of business at 228 Manhattan Beach

Boulevard, Manhattan Beach, California 90266.

Notice of Related Matters: Nike has asserted the ’423 Patent against Skechers in

Nike, Inc. v. Skechers U.S.A., Inc., Case No. 3:16-cv-00007-PK, which was filed

on January 4, 2016, and is currently pending in the United States District Court for

the District of Oregon. See generally Skechers 1007.


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Petitioner’s Lead and Backup Counsel:

Lead Counsel: Brian M. Berliner (Reg. No. 34,549), O’Melveny & Myer s LLP,

400 S. Hope Street, Los Angeles, CA 90071. (Telephone: 213-430-6000; Fax:

213-430-6407; Email: [email protected].)

Backup Counsel: Xin-Yi Zhou (Reg. No. 63,366), O’Melveny & Myers LLP, 400

S. Hope Street, Los Angeles, CA 90071. (Telephone: 213-430-6000; Fax: 213-

430-6407; Email: [email protected].)

Service Information: Service of all documents may be made to the lead counsel

and backup counsel at O’Melveny & Myers LLP, 400 S. Hope Street, Los Angeles,

CA 90071, with courtesy copies to the following email addresses:

[email protected], [email protected], [email protected].

Skechers’ counsel may also be reached by telephone at 213-430-6000 and by

facsimile at 213-430-6407.

IV. SUMMARY OF CHALLENGE

Skechers seeks inter partes review on the following grounds of

unpatentability:

Ground References

1 Obvious under § 103 over RCD 0015 in view of Collezioni

Accessori 60 alone and/or in further combination with

Close-up Knitwear Man 9.


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Ground References

2 Obvious under § 103 over RCD 0015 in view of Close-up

Knitwear Man 9 alone and/or in further combination with

Collezioni Accessori 60.

3 Obvious under § 103 over RCD 0015 in view of Close-up

Runway 2 alone and/or in further combination with

Collezioni Accessori 60.

V.

STATEMENT OF MATERIAL FACTS

A. Prosecution of the ’423 Patent

On August 30, 2013, Nike filed U.S. Patent Application No. 29/465,827

(“the ’827 Application”), the application that matured to the ’423 Patent. See

Skechers 1002 (’827 File) at 7. The ’827 Application was titled “Shoe Upper .” Id.

The ’827 Application was filed with three black-and-white line drawings overlaid

with black-and-white photographs depicting the lateral (i.e., outward-facing) side

of a single shoe upper design, reproduced below:


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’423 Patent

Figure 1

Figure 2


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’423 Patent

Figure 3

Id . at 9-11. The ’423 Patent issued on March 4, 2014 — fewer than seven months

after Nike filed the ’827 Application. Id . at 88.

Nike identified 22 U.S. patent references in the ’827 Application and

submitted 10 non-patent literature documents. Id. at 16-20. The tenth non-patent

literature document (“NPL No. 10”), which appears to have been originally

published by Nike on its website on July 25, 2012, disclosed the following

footwear design described as having a “one- piece knit upper[]”:


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NPL No. 10 (’827 Application File)

NPL No. 10 (Wayback Machine Printout)

Skechers 1002 at 82-83; Skechers 1020 at 2-3. This design appears to be the same

as the footwear design disclosed and registered by Nike in RCD 0015. Compare

Skechers 1002 at 82 with Skechers 1003 at 6; see also Skechers 1015 ¶ 66.

Absent from Nike’s information disclosure statement are its various

registered community designs incorporating similar shoe upper designs, including

RCD 0015, as well as any non-patent literature documents depicting third-party


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designs. Skechers 1002 at 16-20, 67-87; see Skechers 1003 at 4-10. The examiner

did not identify any other third- party designs during examination of the ’827

Application; the examiner cited only prior design patents owned by Nike and

considered no foreign patent documents or non-patent literature owned or

disclosed by Nike or any third party. Skechers 1002 at 46.

Therefore, the examiner never considered Collezioni Accessori 60, Close-up

Knitwear Man 9, Close-up Runway 2, or any other Missoni prior art when

assessing the patentability of the claimed design. See id. at 16-20, 46. Moreover,

even assuming the examiner could discern the same design depicted in RCD 0015

from the purportedly color version of NPL No. 10 that Nike submitted with its

information disclosure statement, the examiner never considered the prior art

combinations incorporating that design that Skechers presents in this Petition. See

id.

B. History of Knitting: Footwear

In the past ten years, the market for products made from knit fabrics has

grown exponentially. Skechers 1015 ¶ 29. Modern methods for creating such

fabrics have now made it possible for virtually any type of textile product —

whether it be upholstery, clothing, or footwear — to be manufactured through a

knitting process. Id.


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Although knit fabrics date as far back as 250 A.D., it was not until circular-

knitting and warp-knitting machines were developed in the 18th Century that the

mass production of knit textile fabrics became a reality. Id . ¶ 22. Modern knitting

machines rely on computer-aided design systems that control every aspect of the

knitting process and allow for extremely efficient and versatile knitting. Id. ¶ 26.

As a result of such machines and modern knitting techniques, knit counterparts

now exist for many historically woven fabrics (e.g., denim jersey). Id. ¶ 27. Knit

textiles offer many advantages over other fabrics, including comfort, elasticity, and

style. Id. ¶ 28.

Because of the advantages afforded by knit fabrics, designers have sought to

create knit footwear that would be as comfortable, flexible, and breathable as knit

socks. Id. ¶ 41. Footwear company Arcopédico claims to have invented the

“original knit shoe” as early as 1966. Id. ¶ 42. Another company — Reliable of

Milwaukee — has sold for decades a similar knit footwear product named

“MukLuks” that essentially comprises a knit sock attached to a vinyl shoe sole. Id.

¶ 43. Knit footwear became a fashion staple in 2010 when high-end fashion

designers Dolce & Gabbana and Missoni debuted several knit footwear styles in

their fall 2010 collections. Id. ¶¶ 44-45. Below is a visual collection of knit

footwear from these designers:


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Arcopédico Reliable of Milwaukee

Dolce & Gabbana Missoni

Id. ¶¶ 42-45.

Beginning in the early 2000s, designers and manufacturers of athletic

footwear realized that advancements in knitting technology made knit uppers of

unitary construction an attractive alternative to shoes manufactured with more

conventional materials like leather, rubber, and woven textiles. Id. ¶ 46.

Specifically, use of a knit upper obviated the manufacturer’s need to employ


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various machinery and assembly line techniques to use and combine multiple

materials to create the upper of a shoe. Id.

In designing and manufacturing a knit upper, the orientation of the knit plays

a critical role in the elasticity and stability of the upper. Id. ¶ 36. A knit fabric will

provide maximum elasticity in the direction of the courses (i.e., the horizontal

rows, in green in the image below) and maximum stability in the direction of the

wales (i.e., the vertical columns, in blue in the image below):

Knit Fabric Detail

Id. ¶¶ 23,36. Accordingly, designers assembling knit products align the courses in

the direction in which elasticity will be most advantageous. Id. ¶ 36. For a knit

upper, the courses typically will be oriented to extend from the sole of the shoe

toward the laces of the shoe, allowing for maximum elasticity at the points where

the foot bends and flexes. Id. ¶¶ 36, 57.

Nike, adidas, Puma, Reebok, and Under Armour are among the athletic

footwear companies that have begun applying knitting techniques to their footwear


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products to harness the benefits of knit fabrics. Id. ¶ 47. In designing such knit

footwear, designers at these companies routinely look to techniques and patterns

used to design and manufacture other knit products — a common practice among

fashion designers. Id. ¶ 48 (noting reports that Nike’s designers tried “to mimic

how a sock is made” when creating Nike’s first “Flyknit” shoe, which has a knit

upper).

Not surprisingly, knit patterns and designs are common across different knit

product types. Id. ¶ 51. Indeed, both Nike and adidas reportedly create their knit

footwear with the same computerized knitting machines used to knit sweaters,

socks, and other traditionally knit textile products. Id. ¶¶ 48-49. Below are a few

examples of these cross-product commonalities:

Vince Camuto Ribbed

Chevron Sweater

Under Armour Flow Herringbone

with Chevron Knit


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Knit Zebra Print Dress Nike Roshe Knit Jacquard Shoe

Argyle Sweater Vest Argyle Dress Socks

Id. ¶ 51.


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C. Knit Patterns and Designs: Space Dyeing and Missoni

Perhaps the most well-known source of high-end knit designs is Italian

fashion design house Missoni. Id. ¶ 38. Missoni has become famous for its use of

space-dyed yarn — a process in which yarn is dyed in multiple colors or shades

before being woven into a fabric — across multiple product lines to create

everything from dresses to footwear to home decor. Id. Examples of Missoni

products featuring its signature space-dye knit designs follow below:

Missoni Space-Dye Knit Designs


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Id.


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The appearance of a knit fabric — such as a fabric knit with space-dyed

yarn — varies based on a number of elements, including the type of fiber used, the

knitting method applied, and the colorization method applied. Id. ¶ 30.

Colorization varies depending on when the dye is applied. Id. ¶ 31. No matter the

knit product, the same basic dye processes can be applied to the knit materials

employed. Id.

These basic dyeing processes include stock dyeing, piece dyeing, and yarn

dyeing. Id. ¶¶ 32-34. Stock dyeing takes place before fibers are constructed into

yarn and involves applying the dye to the loose fibers. Id. ¶ 32. Piece dyeing

involves the dyeing of an entire bolt of fabric after it is knit and results in a solid-

color fabric. Id. ¶ 33. This process is less expensive and less thorough than stock

dyeing. Id. Yarn dyeing is a middle road between these processes, involving the

dyeing of fiber after it has been spun into yarn. Id. ¶ 34.

Space dyeing is a specific subset of yarn dyeing that involves the dyeing of a

skein or hank of yarn (i.e., a loose coil of yarn before it is wound onto a spool) two

or more colors that will repeat throughout the length of the yarn to create a multi-

colored effect. Id. ¶ 35. When space-dyed yarn is knit into fabric, the resulting

fabric contains a pattern of uneven stripes; the thickness of those stripes depends

on the thickness of the yarn used, and the length of those stripes depends on the

dye of the yarn. Id. Such stripes will typically follow the direction of the courses


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Space-Dyed Yarn and Fabric

Id. ¶ 37.

These space-dye stripes have become a mainstay in the fashion world as a

result of Missoni’s adoption and popular use of space-dye patterns (i.e., those

patterns actually knit with space-dye yarn as well as those visually imitating the

use of space-dye yarn) in season after season of its knit products. Id. ¶¶ 38-39.

D.

The Prior Art

Not only has Missoni’s popularization of space-dye stripes and knit patterns

caught the eye of the world of high-end fashion, space-dye knit patterns serve as a

natural source of inspiration for designers looking to incorporate existing knit

designs and patterns into athletic footwear products. Id. ¶ 53. Indeed, such

designers looking at an existing knit footwear upper design like RCD 0015 would

logically turn to Missoni for examples of space-dye knit patterns and designs.

Skechers 1017 ¶¶ 50, 52-53. Skechers accordingly raises herein three


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combinations of Missoni prior art knit patterns — the publication of which predate

the August 30, 2013 filing date of the ’423 Patent, Skechers 1001 at 1 — with the

existing footwear upper design Nike disclosed in RCD 0015.

Whether a document qualifies as a prior art printed publication depends on

when the document was disseminated and whether the document was publicly

accessible to designers of ordinary skill in the art. Suffolk Techs., LLC v. AOL Inc.,

752 F.3d 1358, 1364 (Fed. Cir. 2014). As the Federal Circuit has explained:

[P]ublic accessibility has been called the touchstone in determining

whether a reference constitutes a printed publication bar . . . . A given

reference is publicly accessible upon a satisfactory showing that such

document has been disseminated or otherwise made available to the

extent that persons interested and ordinarily skilled in the subject

matter or art exercising reasonable diligence, can locate it.

Id. (internal punctuation and citations omitted).

Here, RCD 0015, Collezioni Accessori 60, Close-up Knitwear Man 9, and

Close-up Runway 2 all qualify as prior art printed publications based on their

dissemination and public accessibility.

1.

RCD 0015 Qualifies as a Prior Art Printed Publication and

Patent

Given the August 30, 2013 filing date of the ’423 Patent, to qualify as prior

art, third-party printed publications must be dated on or before August 29, 2013

pursuant to 35 U.S.C. § 102(a)(1). In the case of RCD 0015, which is Nike’s own


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disclosure, the printed publication date must be on or before August 29, 2012 to

allow for the one-year grace period provided by 35 U.S.C. § 102(b)(1). RCD 0015

qualifies as prior art because it was published and publicly accessible more than

one year before Nike filed the ’827 Application (i.e., before August 29, 2012) and,

furthermore, it is a foreign patent equivalent. Skechers 1003 at 2-3, 12.

Nike Innovate C.V. filed RCD 0015 on May 30, 2012, identifying “shoes”

as “Indication of the products” and including seven photographs of a shoe design

that are set forth below. Id . at 12-13, 15-16.

RCD 0015

Representation 0015.1


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RCD 0015




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RCD 0015




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RCD 0015




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Nike has described the footwear design disclosed in RCD 0015 as having a

“one- piece knit upper[].” See Skechers 1003 at 82-83; Skechers 1020 at 3; see also

Skechers 1015 ¶¶ 65-66. The knit upper depicted in RCD 0015 features four

dashed line peaks with a loop at the apex of each peak that functions as (or

provides additional support for) an eyelet through which the shoe can be laced.

Skechers 1017 ¶ 46. The toe of the registered design contains knit stripes

terminating at different heights from the sole of the shoe in a somewhat jagged

fashion; these same stripes appear within the two foremost dashed line peaks. Id.

The knit pattern visible in the areas between the peaks instead resembles a mesh

knit characterized by rows of small holes through the upper. Id. The pattern

between the two rearmost dashed line peaks appears as a solid piece of knit fabric

lacking ornamentation; this pattern continues from the left of the rearmost dashed

line peak to the rear end of the upper. Id.

RCD 0015 registered on June 1, 2012 and published in Community Designs

Bulletin 2012/105 on June 5, 2012. Skechers 1003 at 12; see also Council

Regulation 6/2002, arts. 73-74, 2002 O.J. (L 3) 28, 29 (EC) (“This Office shall

periodically publish a Community Design Bulletin containing entries open to

public inspection in the register . . . . Subsequent to the publication of the

registered Community design, the file may be inspected on request.”) (attached as

Skechers 1008). Accordingly, RCD 0015 is sufficiently accessible to constitute a


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publication under 35 U.S.C. § 102(a)(1). See MPEP § 2127 (“When the

specification is . . . announced in an official journal and anyone can inspect or

obtain copies, it is sufficiently accessible to the public to constitute a

‘publication.’”). RCD 0015 also constitutes a foreign patent equivalent. See, e.g.,

Sensio, Inc. v. Select Brands, Inc., Case No. IPR2013-00500, 2015 WL 5440721,

at *8 (P.T.A.B. Feb. 9, 2015) (finding primary prior art references in Chinese

patents covering prototype of owner’s invention). Cf. MPEP § 1504.02.

RCD 0015 therefore qualifies as a prior art patent and printed publication to

the ’423 Patent for purposes of 35 U.S.C. § 103.

2. Collezioni Accessori 60 Qualifies as a Prior Art Printed

Publication

Fashion magazine Collezioni Accessori 60 is prior art because it was

published and publicly accessible in 2010, more than three years before Nike filed

the ’827 Application.

Collezioni Accessori 60 comprises photographs of women’s fashion shows

from the Autumn/Winter 2010-11 fashion season. Skechers 1004 at 2, 4-5. Pages

96 and 97 of the magazine depict photographs of a collection of designs from

Missoni that include knit footwear. Id. at 4-5. Two close-up photographs of those

knit footwear designs from Collezioni Accessori 60 are set forth below. Id.


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Collezioni Accessori 60

Image from Page 96


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Image from Page 97

Both Missoni knit footwear designs appear to be constructed from space-

dyed yarns discernible from the discontinuous stripes conforming to the anatomy

of the foot. Skechers 1015 ¶¶ 56-57. The stripes — and thus the courses of the

knit — wrap around the ankle of the foot horizontally; on the lower portion of the

footwear, the stripes extend at a forty-five degree angle from the sole of the


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footwear across the foot creating maximum elasticity where the foot bends and

flexes. Id . ¶ 57. The footwear depicted on page 96 of Collezioni Accessori 60

appears to have been knit with yarn space-dyed with at least four colors and the

footwear depicted on page 97 appears to have been knit with a similar number of

colors. Id. ¶ 56. Both designs appear to have been knit densely to allow the

footwear enough structure to hold the shape of the foot when worn. Id.

In July 2010, Logos Publishing S.r.l. published and circulated Collezioni

Accessori 60. Skechers 1004 at 1. The cover of Collezioni Accessori 60 states

“July/September 2010,” and the State University of New York - Fashion Institute

of Technology (“FIT”) in New York entered a copy of Collezioni Accessori 60 into

its Gladys Marcus Library (the “FIT Library”) collection on July 29, 2010. Id. at

1; Skechers 1010 ¶ 17. The FIT Library allows access to non-FIT-affiliated

visitors (including unaffiliated researchers and fashion industry professionals)

through a research appointment request system wherein visitors can access the

library during its normal hours. Skechers 1010 ¶¶ 14-15. Further, FIT’s full

collection of its semiannual subscription copies of Collezioni Accessori is publicly

searchable through FIT’s online library catalog. Id. ¶ 17.

Accordingly, Collezioni Accessori 60 was both disseminated to magazine

subscribers in July/September 2010 and also made publicly available by July 29,

2010 when the FIT Library incorporated the magazine into its collection. A


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designer of ordinary skill in the art therefore would have had access to the

magazine after reasonable diligence in online or library research. See Suffolk

Techs., 752 F.3d at 1364; Skechers 1010 ¶ 17.

3. Close-up Knitwear Man 9 Qualifies as a Prior Art Printed

Publication

Close-up Knitwear Man 9 also qualifies as prior art because it was published

and publicly accessible by at least early August 2013, before Nike filed the ’827

Application.

Close-up Knitwear Man 9 comprises photographs of men’s knitwear for the

Spring/Summer 2014 fashion season. Skechers 1005 at 1-4. Pages 72 and 73 of

the magazine depict various photographs of a collection of knit designs from

Missoni that included a knit cardigan. Id. at 3-4. A photograph of the front view

of that knit cardigan design from Close-up Knitwear Man 9 is set forth below

along with a cropped view of the cardigan’s relevant pattern. Id. at 4.


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Close-up Knitwear Man 9

Partial Image and Image from Page 73

The Missoni knit cardigan appears to have been knit with controlled space-

dye knit techniques (i.e., controlled techniques that emulate the discontinuous

striping of patterns knit with space-dyed yarn). Skechers 1015 ¶ 60. Of particular

interest is the lower portion of the front of the cardigan on the left (i.e., the portion

appearing in the cropped image above); that section of the cardigan displays a

jagged pattern emulating a spaced-dye knit in which thin stripes transition to a

different color at differing heights. Id. Those visually jagged stripes gently grow


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shorter and then longer from the bottom of that section of the cardigan to where the

next pattern begins. Id.

On its face, Close-up Knitwear Man 9 identifies its publication date as “July

2013.” Skechers 1005 at 5. FIT entered a copy of Close-up Knitwear Man 9 into

its library collection on August 7, 2013. Skechers 1010 ¶ 21. As explained above,

FIT Library allows access to non-FIT-affiliated visitors through a research

appointment request system wherein visitors can access the library during its

normal hours. Id . ¶¶ 14-15. Further, FIT’s full collection of its semiannual

subscription copies of Close-up Knitwear Man is publicly searchable through

FIT’s online library catalog. Id. ¶ 21.

Accordingly, Close-up Knitwear Man 9 was both disseminated to magazine

subscribers in July 2013 and also made publicly available by at least August 7,





4. Close-up Runway 2 Qualifies as a Prior Art Printed

Publication

Close-up Runway 2 likewise qualifies as prior art because it was published

and publicly accessible by at least September 2010, more than three years before

Nike filed the ’827 Application.


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Close-up Runway 2 comprises photographs taken from all of the Milan

women’s runway shows for the Fall/Winter 2010-11 fashion season. Skechers

1006 at 1, 3-4. Page 371 of the magazine depicts various photographs of a

collection of knit designs from Missoni that include a knit skirt. Id. at 4. A

photograph of that knit skirt design from Close-up Runway 2 is set forth below. Id.

Close-up Runway 2

Image from Page 371

The Missoni knit skirt appears to have been created using a controlled space-

dye knit technique; in particular, the pattern on the front panel of the skirt appears

to emulate a space-dye knit design of stripes of uneven and differing lengths and

widths. Skechers 1010 ¶ 63.


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On its face, Close-up Runway 2 identifies its publication date as “March

2010.” Skechers 1006 at 3. FIT entered a copy of Close-up Runway 2 into its

library collection on September 16, 2010. Skechers 1010 ¶ 19. As explained

above, FIT Library allows access to non-FIT-affiliated visitors through a research

appointment request system wherein visitors can access the library during its

normal hours. Id . ¶¶ 14-15. Further, FIT’s full collection of its copies of Close-up

Runway is publicly searchable through FIT’s online library catalog. Id. ¶ 19.

Accordingly, Close-up Runway 2 was both disseminated to magazine

subscribers in March 2010 and also made publicly available by September 16,





* * *

As these prior art references were all sufficiently available to designers of

ordinary skill in the art, the references would have served as a natural source of

inspiration for contemporaneous knit footwear designs. And since the ’423 Patent

merely depicts a conventional knit shoe upper incorporating a design plainly

inspired by Missoni’s space-dye textiles and patterns, the above prior art references

viewed in combination render the claimed design obvious.


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E. Level of Ordinary Skill in the Art

A person of ordinary skill in the art tasked with designing a knit upper for an

athletic shoe would have researched relevant textiles or sought the advice of

someone knowledgeable about textiles. Skechers 1017 ¶ 34. As a result of that

research or conversations with someone capable of advising on materials-related

issues, a designer of ordinary skill would recognize the interchangeability of knit

patterns on a knit upper and would be familiar with space-dye knit designs and

patterns. Id. For qualifications, the person of ordinary skill in the art of the ’423

Patent would have at least (1) a degree in Industrial Design and two years of work

experience as an industrial designer or (2) two years of direct experience creating

footwear designs. Id.

VI. CLAIM CONSTRUCTION

Skechers herein identifies three distinct elements of the claimed design

relevant to the obviousness of the ’423 Patent. Because two of those elements are

at least in part dictated by function, the scope of the sole claim of the ’423 Patent

must be “limited to the ornamental aspects of the design” and cannot “extend to the

broader general design concept.” See Ethicon Endo-Surgery, Inc. v. Covidien, Inc.,

796 F.3d 1312, 1333 (Fed. Cir. 2015); see also Richardson v. Stanley Works, Inc.,

597 F.3d 1288, 1293 (Fed. Cir. 2010) (“Where a design contains both functional

and non-functional elements, the scope of the claim must be construed in order to


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identify the non-functional aspects of the design as shown in the patent.”) (quoting

OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997)). But

even if the claimed design is not construed narrowly to address the functionality of

those elements, the ’423 Patent is still invalid as obvious under the broadest

reasonable construction of the patent.

A patent claim subject to inter partes review receives the “broadest

reasonable construction in light of the specification of the patent in which it

appears.”3

37 C.F.R. § 42.100(b). Although courts and this Board ordinarily do

not “‘construe’ a design patent claim by providing a detailed verbal description of

the claimed design,” the Federal Circuit has noted that it may be “helpful to point

out . . . various features of the claimed design as they relate to the . . . prior art.”

Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679-80 (Fed. Cir. 2008).

Specifically, claim construction of a design patent may benefit from such verbal

3 Because the “broadest reasonable interpretation” standard is distinct from the

claim construction standard applied by district courts, see In re Cuozzo Speed

Techs., 793 F.3d 1297, 1298 (Fed. Cir. 2015) (per curiam) (Dyk, J., concurring),

Skechers reserves the right to pursue different constructions in a district court.

Skechers also reserves the right to raise in other proceedings issues of

functionality.


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description to assist in distinguishing between “features of the claimed design that

are ornamental and those that are purely functional.” Ethicon, 796 F.3d at 1333.

While elements of a shoe design may serve a functional purpose within the

overall design, they cannot be removed entirely during claim construction; the

scope of the overall design claim may, however, be narrowed in view of the

functionality of those elements. See Sport Dimension, Inc. v. Coleman Co., Case

No. 2015-1553, 2016 WL 1567151, at *5 (Fed. Cir. Apr. 19, 2016). This narrowed

scope must consider only the ornamental aspects of the claimed design and not

“the broader general design concept.” Ethicon, 796 F.3d at 1333.

Below, Skechers points out and names the three distinct elements of the

claimed design and addresses the functional purpose integral to the first two of

those features.


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1. “ Inlaid Strands .”

’423 Patent

Fig. 1 (annotated; see Skechers 1017 ¶ 38)



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As highlighted in Figures 1 through 3 above, the ’423 Patent claims an upper

design with a series of five peaks constructed out of dashed lines that extend from

the sole of the shoe design (i.e., the bottom unclaimed boundary line) to the eyerow

(i.e., the row of eyelets through which the shoe would be laced above the top

unclaimed boundary line), converging in acute angles. Skechers herein uses the

term “sole boundary line” to refer to the bottom unclaimed boundary line and

“eyerow boundary line” to refer to the top unclaimed boundary line. Skechers

1017 ¶ 38. From left to right, each peak appears shorter than its predecessor as the

eyerow boundary line grows nearer to the sole boundary line.


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This ornamentation corresponds to a physical feature of the commercial

embodiment of the claimed design depicted below, namely, an inlaid strand guided

through the knit upper of the shoe:

Nike Flyknit Air Max Shoe

Skechers 1015 ¶ 67. Skechers herein uses the term “inlaid strands” to refer to the

corresponding ornamentation depicted in the claimed design, i.e., the five peaks.

Skechers 1017 ¶ 38.

Nike’s utility patent publications relating to footwear incorporating a knit

component elucidate the primarily functional purpose of these inlaid strands; in

particular, the publications note that the advantages of the inlaid strands include

“providing support, stability, and structure.” Skechers 1022 (U.S. Patent App.

Pub. No. 2012/0233882 A1 (“Huffa ’882”)) at 50; Skechers 1023 (U.S. Patent

App. Pub. No. 2012/0234052 A1 (“Huffa ’052”)) at 50; see also Skechers 1024


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(U.S. Patent App. Pub. No. 2010/0154256 A1 (“Dua ’256”)) at 19 (“In the absence

of strands 43, other portions of knitted component 40 would bear the tension and

resulting stresses from tying lace 32. The presence of strands 43, however,

provides a separate element to bear the tension and stresses.”). In addition, these

Nike patent publications explain that inclusion of an inlaid strand at various points

on the upper “assists with securing [the] upper . . . around the foot, limits

deformation in areas of [the] upper . . . (e.g., imparts stretch-resistance) and

operates in connection with [the] lace . . . to enhance the fit of [the] footwear.”

Skechers 1022 at 50; Skechers 1023 at 50. Further, the inlaid strands add greater

stretch-resistance to the knit upper:

That is, inlaid strand 132 may stretch less than knit element 131. . . .

[I]nlaid strand 132 imparts stretch-resistance to the portion of upper

120 between the throat area and the lower area. Moreover, placing

tension upon lace 122 may impart tension to inlaid strand 132, thereby

inducing the portion of upper 120 between the throat area and the

lower area to lay against the foot.

Skechers 1022 at 51; Skechers 1023 at 53.

In light of Nike’s characterization of the inlaid strands, the claimed design

must be construed narrowly to focus only on the ornamental nature of the inlaid

strands as part of the whole ornamental design separate from the admitted


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functional purpose of the strands. Skechers 1017 ¶¶ 40-41, 44; see Sport

Dimension, 2016 WL 1567151, at *5; Ethicon, 796 F.3d at 1333.

2. “ Space-Dye Pattern”

As highlighted in Figures 1 through 3 below, the ’423 Patent also claims an

upper design with a number of textured lines of various heights extending upward

from the sole boundary line to form a jagged pattern. The lines appear speckled or

otherwise nonuniform in shading and decrease in angle as the lines approach the

toe of the shoe, seeming to follow the curvature of the upper. The uneven and

unsolid stripes give the appearance of the design having been knit with space-dyed

yarn. Skechers 1017 ¶ 38. Skechers accordingly uses the term “space-dye

pattern” herein to refer to the visual appearance of the striped section of the

claimed upper design separate from any residual ornamentation of the inlaid

strands. Id.


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’423 Patent




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This space-dye pattern corresponds to a physical feature of the commercial

embodiment of the claimed design depicted below, namely, the knit stripes of the

upper:

Nike Flyknit Air Max Shoe


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Skechers 1015 ¶ 67. Notably, these stripes appear to follow the direction of the

courses of the knit pattern, extending from the sole boundary line toward the

eyerow boundary line. Skechers 1017 ¶ 42. Function dictates that space-dye

stripes follow the direction of the courses of the knit, and the desired elasticity for

an article of footwear dictates that the courses be oriented upward from the sole of

the shoe (rather than parallel with the sole) to provide maximum elasticity where

the foot bends and flexes. See Skechers 1015 ¶ 36 (“A weft-knit fabric typically

will provide maximum stability in the direction of the wales and maximum

elasticity in the direction of the courses. For this reason, a designer assembling a

product will orient the courses — and thus the space-dye pattern — in the direction in

which elasticity is most advantageous.”). Nike’s utility patent publications

describe this directionality: “[C]ourses of the knit structure generally extend in the

same direction as inlaid strands 132. That is, courses may extend in the direction

extending between the throat area and the lower area [of the shoe].” Skechers

1022 at 50; Skechers 1023 at 50.

Because the orientation of the stripes in the space-dye pattern is primarily

dictated by function, the claimed design must be construed narrowly to focus only

on the residual ornamental nature of the space-dye pattern as part of the whole

ornamental design separate from the admittedly functional directionality of the


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stripes comprising the space-dye pattern. Skechers 1017 ¶¶ 42-44; see Sport

Dimension, 2016 WL 1567151, at *5; Ethicon, 796 F.3d at 1333.

3. “ Contrasting Element ”

As highlighted in Figures 1 through 3 below, the remainder of the claimed

bounded area of the shoe upper in the ’423 Patent (i.e., the portion not identified

above as the inlaid strands or space-dye pattern) appears to be shaded in a dark

solid and quasi-solid manner and represents a distinct third ornamental feature of

the claimed design. Skechers 1017 ¶ 38. The knit pattern visible in the dark areas

between the inlaid strands and along the eyerow boundary line resembles a mesh

knit of small holes through the upper. Id. The dark pattern to the left of the

rearmost inlaid strand instead appears as a solid piece of knit fabric lacking

ornamentation. Id. This dark design element adds contrast to the lightly shaded

stripes of the space-dye pattern. Id. Skechers herein uses the term “contrasting

element” to refer to this third design element. Id.


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’423 Patent

Fig. 1 (annotated; see Skechers 1017 ¶ 38



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* * *

The obviousness combinations Skechers presents below must be considered

against a construction of the claimed design limited to the ornamental aspects of

the inlaid strands, space-dye pattern, and contrasting element, not “the broader

general design concept” of the claimed shoe upper. Skechers 1017 ¶ 44; see

Ethicon, 796 F.3d at 1333. But even without such limiting claim construction, the

’423 Patent is still invalid as obvious.

VII. THE SOLE CLAIM OF THE ’423 PATENT IS INVALID AS

OBVIOUS

The ’423 Patent is invalid as obvious under 35 U.S.C. § 103 on at least three

grounds. The combinations of prior art references cited herein disclose ornamental


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features that were not considered by the USPTO during prosecution of the ’423

Patent but that a designer of ordinary skill in the art would have considered

obvious: it would have been a routine matter for an ordinary designer to select a

suitable space-dye pattern to complement Nike’s existing knit athletic footwear

design in RCD 0015. Skechers 1017 ¶¶ 53-54. As such, the routine application of

such a conventional pattern to the knit upper in the claimed design does not merit

design patent protection.

The test for obviousness of a design patent under 35 U.S.C. § 103 is

“whether the claimed design would have been obvious to a designer of ordinary

skill who designs articles of the type involved.” Durling , 101 F.3d at 103 (citation

omitted). In assessing obviousness, the Board “must both (1) discern the correct

visual impression created by the patented design as a whole; and (2) determine

whether there is a single reference that creates basically the same visual

impression.” High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1312

(Fed. Cir. 2013) (internal quotations omitted). “[O]ther references may be used to

modify [the primary reference] to create a design that has the same overall visual

appearance as the claimed design.” Id. at 1311. Secondary references may be used

to modify the primary reference if the two are “so related that the appearance of

certain ornamental features in one would suggest the application of those features

to the other.” In re Borden, 90 F.3d 1570, 1575 (Fed. Cir. 1996) (citations


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omitted); see also In re Lamb, 286 F.2d 610, 611 (C.C.P.A. 1961) (“[T]he mere

fact that there are differences over the prior art structures is not alone sufficient to

justify a holding that the design is patentable.”).

Here, RCD 0015 when combined with any of Collezioni Accessori 60,

Close-up Knitwear Man 9, or Close-up Runway 2 presents the same overall visual

appearance as the claimed design, rendering the ’423 Patent invalid as obvious.

A. The Prior Art Suggests and Teaches Modification of RCD 0015

with Secondary References

As a preliminary matter, a designer of ordinary skill in the art would be

primed and motivated to apply existing knit designs — especially Missoni designs

like those depicted in Collezioni Accessori 60, Close-up Knitwear Man 9, and

Close-up Runway 2 — to athletic shoes. Skechers 1017 ¶ 54. See In re Borden, 90

F.3d at 1575 (“[T]here must be some suggestion in the prior art to modify the basic

design with features from the secondary references.”); see also MRC Innovations,

Inc. v. Hunter Mfg., LLP , 747 F.3d 1326, 1334-35 (Fed. Cir. 2014) (finding that a

skilled designer would have been motivated to combine features from apparel

products with striking similarity in appearance). Such motivation to combine is

present here for three reasons.

First, a designer of ordinary skill in the art would have known that knit

footwear like RCD 0015 could be constructed from the same knit patterns and

techniques previously used in the manufacture of other traditionally knit products


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and that more than one knit pattern or technique could be interchangeably applied

to the same knit article of footwear. Skechers 1017 ¶ 51; see also Skechers 1015 ¶

51. Huffa ’882 (which published on September 20, 2012), Huffa ’052 (which

published on September 20, 2012), and Dua ’256 (which published on June 24,

2010) teach as much.4 Skechers 1022 at 53; Skechers 1023 at 53; Skechers 1024 at

19. For example, Huffa ’882 describes a knitting process for forming knit

components for footwear that “may also be utilized to form a variety of knitted

components,” including components to be used in “other types of apparel (e.g .,

shirts, pants, socks, jackets, undergarments), athletic equipment (e.g., golf bags,

baseball and football gloves, soccer ball restriction structures), containers (e.g.,

backpacks, bags), and upholstery for furniture (e.g., chairs, couches, car seats).”

Skechers 1022 at 59. Huffa ’882 also teaches that use of a number of different knit

structures, and therefore patterns, on a knit upper can “impart specific properties

and advantages to different areas of [the] knitted component.” Id. at 53.

Moreover, Huffa ’882, Huffa ’052, and Dua ’256 are all assigned to Nike,

4 Even if these disclosures do not qualify as prior art under 35 U.S.C. § 102(b)(2),

they can still “be used to demonstrate a motivation to combine implicit in the

knowledge of one of ordinary skill in the art.” Nat’l Steel Car, Ltd. v. Can. Pac.

Ry., Ltd., 357 F.3d 1319, 1337-38 (Fed. Cir. 2004).


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demonstrating that Nike’s own designers were acutely aware of these teachings at

the time of the filing of the ’423 Patent. Skechers 1022 at 1; Skechers 1023 at 1;

Skechers 1024 at 1.

Second, a designer of ordinary skill in the art would have known to look to

cutting-edge knit designs, including Missoni designs, as a source of possible

patterns and ornamentation with which to modify knit footwear. Skechers 1017 ¶

52; see also Skechers 1015 ¶ 53. In particular, Converse began a series of

collaborations with Missoni in 2010 that demonstrated that athletic footwear

designers were aware of Missoni and its products, and recognized the ornamental

value of applying Missoni’s knit designs to footwear. See, e.g., Skechers 1021

(Converse-Missoni 2010) at 1; Skechers 1015 ¶ 53; Skechers 1017 ¶ 52. Nike’s

registered community designs, including RCD 0015, likewise teach the ornamental

value of applying knit designs similar in appearance to Missoni knit products to

athletic footwear. See Skechers 1003 at 6; Skechers 1009 (RCD 002074443-0003)

at 4; Skechers 1017 ¶ 52. Indeed, as visualized below, the toecap of Nike’s

registered footwear designs share a striking similarity to Missoni’s knit footwear as

well as to one Converse-Missoni collaboration from 2010. Skechers 1017 ¶ 52.


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Collezioni Accessori 60 RCD 0003

Image from Page 96, detailRepresentation 0003.1, detail

Converse-Missoni 2010 RCD 0015

Image from Page 62, detail Representation 0015.3, detail

Id. Because Collezioni Accessori 60, Close-up Knitwear Man 9, and Close-up

Runway 2 depict similar Missoni knit designs, they are “so related” to RCD 0015

that the knit features depicted in those references “would suggest the application of

those features” to RCD 0015. See In re Borden, 90 F.3d at 1575.

Third, the ordinary designer would recognize the combinations identified

below as being technically feasible (in light of the teachings of Huffa ’882, Huffa

’052, and Dua ’256) and likely to yield acceptable results. Skechers 1017 ¶ 53. It

would have required only routine skill and little additional effort in terms of time,


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expense, or resources for the designer of ordinary skill in the art to apply any other

knit design to the knit upper of an article of athletic footwear. Id.

A designer of ordinary skill in the art would have, therefore, found

suggestion and motivation in the art and from his or her own knowledge as a

skilled artisan to modify the base footwear design depicted in RCD 0015 with one

or more of the Missoni knit patterns depicted in Collezioni Accessori 60, Close-up

Knitwear Man 9, and Close-up Runway 2. Id. ¶ 54; see In re Borden, 90 F.3d at

1575.

B. The ’423 Patent Is Unpatentable Based on Three Noncumulative

Grounds for Obviousness

1. Ground 1: The ’423 Patent is obvious under § 103 over

RCD 0015 in view of Collezioni Accessori 60 alone and/or in

further combination with Close-up Knitwear Man 9

RCD 0015 in view of Collezioni Accessori 60 discloses the same overall

visual appearance as the claimed design of the ’423 Patent. As explained supra

Sections V.D and VII.A, RCD 0015 and Collezioni Accessori 60 are prior art

printed publications under 35 U.S.C. § 102(a), and a designer of ordinary skill in

the art would have had the knowledge and motivation to incorporate the knit

ornamentation depicted in Collezioni Accessori 60 to the base footwear design

disclosed in RCD 0015.

RCD 0015 serves as a suitable primary reference because the registration

creates “ basically the same visual impression” as the claimed design, under the


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broadest reasonable interpretation of the ’423 Patent. Skechers 1017 ¶ 47; see

High Point Design, 730 F.3d at 1312. A comparison of RCD 0015 and the ’423

Patent design confirms this same visual impression:

RCD 0015


’423 Patent

Figure 2


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Skechers 1017 ¶ 47. Although Nike disclaimed large portions of the footwear

design appearing in the ’423 Patent (i.e., the entirety of the shoe apart from the

bounded area of the upper), RCD 0015 still creates basically the same visual

impression as the claimed design. Id. Specifically, RCD 0015, like the claimed

design, discloses an athletic shoe with a knit upper containing four dashed line

peaks positioned and angled nearly identically to the four rearmost inlaid strands

claimed in the ’423 Patent and having the same visually distinct appearance from

the remainder of the pattern of the knit upper. Id. RCD 0015 also discloses

portions of a footwear upper design displaying stripes terminating at different

heights from the sole of the shoe in a jagged pattern just like the space-dye pattern

claimed in the ’423 Patent but limited in the pattern’s coverage of the knit upper.

Id. Moreover, the dark portions of RCD 0015 to the left of the rearmost dashed

line peak and contained within the top of the peak match up with the contrasting

element of the claimed design. Id.

The only noteworthy differences between RCD 0015 and the claimed design

are the number of inlaid strands and the particular knit pattern(s) used to

complement the inlaid strands. Id. ¶ 48. With regard to the first difference, the

addition of a fifth dashed line peak to RCD 0015 would have been well within the

skill of a designer of ordinary skill in the art, especially given the primarily

functional purpose served by the inlaid strands underlying that ornamental feature.


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Id . ¶ 49; see also Skechers 1022 at 50; Skechers 1023 at 50; Skechers 1024 at 19.

A designer of ordinary skill in the art would have understood from RCD 0015 that

a fifth inlaid strand could be added to support the toemost eyelet if such function

(i.e., tension support and fit enhancement) or ornamentation (i.e., another visual

dashed line peak) was desired.5 Skechers 1017 ¶ 49.

With regard to the second difference, RCD 0015 teaches the use of a

background knit pattern to complement the inlaid strands displayed on the side of

the upper. Id. ¶ 50. Although RCD 0015 depicts a mesh knit pattern characterized

by small holes between the inlaid strands and a jagged stripe pattern within the

upper area enclosed by the inlaid strands, Collezioni Accessori 60 teaches use of a

space-dye pattern (i.e., uneven stripes) visually similar to the ’423 Patent’s space-

dye pattern that when substituted as the background knit pattern for RCD 0015

5 Indeed, other contemporaneous registered community designs filed by Nike, such

as RCD 0003 (registered July 18, 2012 and published July 19, 2012), disclose as

many as six separate inlaid strands supporting or acting as eyelets for the disclosed

knit footwear. See, e.g., Skechers 1009 at 4. If necessary, RCD 0003 could serve

as an additional secondary reference to all three prior art combinations Skechers

identifies herein to demonstrate the obviousness of modifying RCD 0015 with

additional inlaid strands. Skechers 1017 ¶ 49.


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creates the same overall visual appearance as the claimed design. Id. ¶¶ 56-57; see

High Point Design, 730 F.3d at 1311. Below is a comparison of Collezioni

Accessori 60 and the claimed design:


Image from Page 96, detail ’423 Patent

Figure 2


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Image from Page 97, detail

’423 Patent

Figure 2


In particular, the knit stripes on the footwear designs depicted in Collezioni

Accessori 60 share the same angle and direction as the stripes comprising the


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space-dye pattern in the ’423 Patent, namely, the knit pattern is oriented so that the

stripes (i.e., the courses of the knit) follow the contour of the shape of the foot. Id.

The nonuniform and discontinuous nature of the stripes in the ’423 Patent is also

visible in the stripes on the footwear designs depicted in Collezioni Accessori 60:

the stripes have irregular lengths that seem to alternate between light and dark

shades in a controlled yet seemingly random manner. Id.

Any perceived differences between RCD 0015 in view of Collezioni

Accessori 60 and the claimed design are de minimis and insufficient to justify a

finding that the claimed design is patentable. See MRC Innovations, 747 F.3d at

1335 (“[O]n numerous occasions we have invalidated design patents despite the

inclusion of ornamental features that were entirely absent from prior art designs.”);

see also In re Carter , 673 F.2d 1378, 1380 (C.C.P.A. 1982) (finding modifications

to an infant garment “de minimis changes which would be well within the skill of

an ordinary designer in the art”). Accordingly, the claimed design, which is

merely a combination of Collezioni Accessori 60 projected onto RCD 0015, is not

patentable under § 103.

If the contrasting element of the claimed design is perceived as a difference

between this prior art combination and the claimed design (despite the presence of

corresponding dark areas in RCD 0015), the design depicted in Close-up Knitwear

Man 9 could serve as an additional secondary reference to this prior art


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combination to further modify the combination to include a more controlled and

jagged transition from light to dark in the stripes of the background knit pattern.

See Skechers 1005 at 4; Skechers 1017 ¶ 58. Skechers therefore asserts this three

reference obviousness combination as an alternative ground for unpatentability of

the claimed design.


RCD 0015 in view of Close-up Knitwear Man 9 alone and/or

in further combination with Collezioni Accessori 60

RCD 0015 in view of Close-up Knitwear Man 9 likewise discloses the same

overall visual appearance as the claimed design of the ’423 Patent. As explained

supra Sections V.D and VII.A, RCD 0015 and Close-up Knitwear Man 9 are prior

art printed publications under 35 U.S.C. § 102(a), and a designer of ordinary skill

in the art would have had the knowledge and motivation to incorporate the knit

ornamentation depicted in Close-up Knitwear Man 9 to the base footwear design


As with the first ground for unpatentability, RCD 0015 serves as a suitable

primary reference because the registration creates “ basically the same visual

impression” as the claimed design, under the broadest reasonable interpretation of

the ’423 Patent. Skechers 1017 ¶ 47; see High Point Design, 730 F.3d at 1312.

The only difference between RCD 0015 and the claimed design to be filled by a


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secondary prior art reference is the particular knit pattern(s) used to complement

the inlaid strands.6 Skechers 1017 ¶ 48.

With regard to this difference, RCD 0015 teaches use of background knit

patterns to complement the inlaid strands displayed on the side of the upper. Id. ¶

50. Although RCD 0015 depicts a mesh knit pattern characterized by small holes

between the inlaid strands and a jagged stripe pattern within the upper area

enclosed by the inlaid strands, Close-up Knitwear Man 9 teaches use of a space-

dye emulating knit pattern (i.e., controlled jagged stripes) visually similar to the

’423 Patent’s space-dye pattern that when substituted as a background knit pattern

for RCD 0015 creates the same overall visual appearance as the claimed design.

Id. ¶¶ 60-61; see High Point Design, 730 F.3d at 1311. Below is a comparison of

Close-up Knitwear Man 9 and the claimed design:

6 The obviousness of adding a fifth inlaid strand to RCD 0015 for functional or

ornamental reasons has been previously addressed supra Section VII.B.1.


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Close-up Knitwear Man 9

Image from Page 73, partial

’423 Patent

Figure 2


Specifically, the jagged and uneven heights of the knit stripes on the

cardigan design depicted in Close-up Knitwear Man 9 match those visible in the

space-dye pattern in the ’423 Patent. Id. If the knit pattern from the cardigan

design were oriented in the manner a knit upper is arranged to match the structure

of a foot, the stripes from the cardigan pattern (i.e., the courses of the knit pattern)


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would angle as they wrapped around the foot in the same manner as the stripes in

the claimed design. Id. Further, the uneven, yet controlled, transition of the stripes

from light to dark in Close-up Knitwear Man 9 mirrors the stark color change from

the space-dye pattern to the contrasting element claimed in the ’423 Patent. Id.

Any perceived differences between RCD 0015 in view of Close-up Knitwear

Man 9 and the claimed design are de minimis and insufficient to justify a finding

that the claimed design is patentable. See MRC Innovations, 747 F.3d at 1335; see

also In re Carter , 673 F.2d at 1380. Accordingly, the claimed design, which is

merely a combination of Close-up Knitwear Man 9 projected onto RCD 0015, is

not patentable under § 103.

To the extent the nonuniform and discontinuous nature of the stripes in the

claimed design is perceived as a difference between this prior art combination and

the claimed design, the design depicted in Collezioni Accessori 60 could serve as

an additional secondary reference to this prior art combination to further modify

the combination to include a more visible discontinuity in the stripes of the

background knit pattern. See Skechers 1004 at 4-5; Skechers 1017 ¶ 62. Skechers

therefore asserts this three reference obviousness combination as an alternative

ground for unpatentability of the claimed design.


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RCD 0015 in view of Close-up Runway 2 alone and/or in

further combination with Collezioni Accessori 60

RCD 0015 in view of Close-up Runway 2 also discloses the same overall

visual appearance as the claimed design of the ’423 Patent. As explained supra

Sections V.D and VII.A, RCD 0015 and Close-up Runway 2 are prior art printed

publications under 35 U.S.C. § 102(a), and a designer of ordinary skill in the art

would have had the knowledge and motivation to incorporate the knit

ornamentation depicted in Close-up Runway 2 to the base footwear design


As with the first and second grounds for unpatentability, RCD 0015 serves

as a suitable primary reference because the registration creates “ basically the same

visual impression” as the claimed design, under the broadest reasonable

inter pretation of the ’423 Patent. Skechers 1017 ¶ 47; see High Point Design, 730

F.3d at 1312. The only difference between RCD 0015 and the claimed design to

be filled by a secondary prior art reference is the knit pattern(s) used to

complement the inlaid strands.7 Skechers 1017 ¶ 48.

7 The obviousness of adding a fifth inlaid strand to RCD 0015 for functional or

ornamental reasons has been previously addressed supra Section VII.B.1.


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With regard to this difference, RCD 0015 teaches use of background knit

patterns to complement the inlaid strands displayed on the side of the upper. Id. ¶

50. Although RCD 0015 depicts a mesh knit pattern characterized by small holes

between the inlaid strands and a jagged stripe pattern within the upper area

enclosed by the inlaid strands, Close-up Runway 2 teaches use of a space-dye

emulating knit pattern (i.e., stripes of uneven and differing lengths) visually similar

to the ’423 Patent’s space-dye pattern that when substituted as a background knit

pattern for RCD 0015 creates the same overall visual appearance as the claimed

design. Id. ¶¶ 64-65; see High Point Design, 730 F.3d at 1311. Below is a

comparison of Close-up Runway 2 and the claimed design:


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Close-up Runway 2

Image from Page 371, partial

’423 Patent

Figure 2


Specifically, the uneven heights of the knit stripes and grouped nature of

stripes on the skirt design depicted in Close-up Runway 2 give the same

appearance as those visible in the space-dye pattern in the ’423 Patent. Id. If the


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knit pattern from the skirt design were oriented in the manner a knit upper is

arranged to match the structure of a foot, the stripes from the skirt pattern (i.e., the

courses of the knit pattern) would angle as they wrapped around the foot in the

same manner as the stripes in the claimed design. Id. Further, the uneven, yet

controlled, transition of the stripes from dark to light in Close-up Runway 2

resembles an inverse of the color change from the space-dye pattern to the

contrasting element claimed in the ’423 Patent. Id.

Any perceived differences between RCD 0015 in view of Close-up Runway

2 and the claimed design are de minimis and insufficient to justify a finding that the

claimed design is patentable. See MRC Innovations, 747 F.3d at 1335; see also In

re Carter , 673 F.2d at 1380. Accordingly, the claimed design, which is merely a

combination of Close-up Runway 2 projected onto RCD 0015, is not patentable

under § 103.

To the extent the nonuniform and discontinuous nature of the stripes in the

claimed design is perceived as a difference between this prior art combination and

the claimed design, the design depicted in Collezioni Accessori 60 could serve as

an additional secondary reference to this prior art combination to further modify

the combination to include a more visible discontinuity in the stripes of the

background knit pattern. See Skechers 1004 at 4-5; Skechers 1017 ¶ 66. Skechers


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therefore asserts this three reference obviousness combination as an alternative

ground for unpatentability of the claimed design.

VIII. REDUNDANCY

Skechers has presented only a limited number of grounds for invalidity,

yet in doing so, has demonstrated how various teachings of the art address the

sole claim of the ’423 Patent divergently. Each ground for invalidity and the

references supporting that ground are not cumulative to each other given the

distinct disclosures identified as prior art references in support of each ground.

The first ground for invalidity relies on a combination of a knit shoe base

strikingly similar to the claimed design and the knit pattern from space-dye knit

footwear designs (i.e., Collezioni Accessori 60) that features nonuniform and

discontinuous stripes along the courses of the knit. The second ground for

invalidity combines that knit shoe base with a pattern from a knit cardigan (i.e.,

Close-up Knitwear Man 9) produced by a knit technique that emulates the

jagged striping of knit space-dyed yarn but in a more controlled pattern of

transitions from light to dark coloration. And the third ground combines the

knit shoe base with a pattern from a knit skirt (i.e., Close-up Runway 2) that

emulates a controlled space-dye knit pattern with stripes of differing widths or

thicknesses that clump together in batches of color.


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Accordingly, Skechers respectfully requests that the Board institute IPR

proceedings on all three grounds present

petition for ipr d423

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