adidas AG v NIKE, Inc.

Patent Trial and Appeal Board

Apr 28, 2014

10791289 (P.T.A.B. Apr. 28, 2014)

Trials@uspto.gov Paper 60
571-272-7822 Entered: April 28, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

adidas AG
Petitioner

v.

NIKE, Inc.
Patent Owner
____________

Case IPR2013-00067
Patent 7,347,011 B2
____________

Before JOSIAH C. COCKS, MICHAEL J. FITZPATRICK, and
JAMES B. ARPIN, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
On December 10, 2012, adidas AG (“Petitioner”) filed a revised
petition (Paper 7) challenging claims 1-46 of Patent No. US 7,347,011 B2
(Ex. 1002, “the ’011 Patent”). Petitioner relied upon the following prior art
references:
Glidden US 2,147,197 Feb. 14, 1939 (Ex. 1007)
McDonald US 2,314,098 Mar. 16, 1943 (Ex. 1008)
Whiting US 2,641,004 June 9, 1953 (Ex. 1009)
Shiomura US 4,785,558 Nov. 22, 1988 (Ex. 1011)
Curley WO 90/03744 Apr. 19, 1990 (Ex. 1010)
Osamu JP H06-113905 Apr. 26, 1994 (Ex. 1006)
Nishida US 5,345,638 Sep. 13, 1994 (Ex. 1005)
On February 28, 2013, Nike, Inc. (“Patent Owner”) filed a patent owner
preliminary response (Paper 12). In a decision to institute (Paper 18) issued
May 17, 2013, we
1
instituted inter partes review of all of the challenged
claims as to the following grounds for review:
claims 1-16, 19-34, 36, and 39-46 as anticipated by Nishida;
claims 16-18 as anticipated by Glidden;
claims 1-16 and 19-46 as obvious over Nishida; and
claims 16-18 as obvious over Glidden.
On August 18, 2013, Patent Owner filed a motion to amend (Paper
31), accompanied by certain testimony of Patent Owner’s expert, Dr. Tonkel

1
After issuance of the decision to institute, Judge Cocks replaced Judge
Tierney as the administrative patent judge managing this proceeding. Paper
30.
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(Ex. 2010), but elected not to file a patent owner response. In the scheduling
order (Paper 19, 2-3), Patent Owner had been cautioned that any arguments
for patentability not raised in the patent owner response are deemed waived.
On November 12, 2013, Petitioner filed an opposition (Paper 37) to the
motion to amend, including three additional exhibits: declaration of Sabit
Adanur Ph.D. (Ex. 1016) and Patent Nos. US 2,178,941 (Ex. 1020,
“Schuessler I”) and US 2,150,730 (Ex. 1021, “Schuessler II”). On
December 11, 2013, Patent Owner filed a reply (Paper 44) to Petitioner’s
opposition to the motion to amend.
On January 7, 2014, Petitioner filed a motion to exclude evidence
(Paper 49). Specifically, Petitioner moved to exclude (1) certain testimony
elicited on cross-examination of Petitioner’s expert, Dr. Frederick (Ex. 2009
(deposition testimony of Dr. Frederick)), as allegedly beyond the scope of
Dr. Frederick’s direct testimony (Ex. 1001 (declaration of Dr. Frederick));
and (2) certain testimony of Patent Owner’s expert, Dr. Tonkel, which
allegedly relied on the challenged, cross-examination testimony of Dr.
Frederick. On January 21, 2014, Patent Owner filed Patent Owner’s
opposition (Paper 51) to Petitioner’s motion to exclude evidence; and, on
January 28, 2014, Petitioner filed Petitioner’s reply (Paper 54) to Patent
Owner’s opposition to Petitioner’s motion to exclude evidence.
Both parties requested oral argument. Papers 47 and 48. In the trial
hearing order (Paper 50), we gave each party thirty (30) minutes to argue its
case. Because Patent Owner did not file a patent owner response, we
ordered (1) that the parties would not present arguments regarding whether
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original claims 1-46 are unpatentable based on the instituted grounds and (2)
that Patent Owner, rather than Petitioner, would argue first. Paper 50, 2.
The oral hearing was conducted on February 10, 2014.
2

We have jurisdiction under 35 U.S.C. § 6(c). This final written
decision is entered pursuant to 35 U.S.C. § 318(a).
For the reasons that follow, the portion of Patent Owner’s motion to
amend requesting cancellation of claims 1-46
3
is granted; however, the
portion of the motion requesting entry of substitute claims 47-50 is denied.
Petitioner’s motion to exclude evidence is dismissed as moot.
A. Related Proceedings
Petitioner does not identify related proceedings. Paper 7, 1. Patent
Owner identifies three related patents, identified by Patent Nos. US
7,814,598 B2; US 8,042,288 B2, and US 8,266,749 B2; and one related U.S.
patent application, identified by U.S. Patent Application No. 13/413,233.
Paper 9, 2.
B. The ’011 Patent
The ’011 Patent relates to articles of footwear having a textile
“upper.” Ex. 1002, col. 1, ll. 7-10. In particular, the patent describes articles
of footwear having an upper incorporating a knitted textile element and
having a sole structure secured to the upper. Id. at col. 3, ll. 20-47.

2
A transcript of the hearing is included in the record as Paper 59.
3
See Paper 31, 1.
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Conventional articles of athletic footwear may include two primary
elements: an upper and a sole structure. Id. at col. 1, ll. 12-15. The upper
may form a void on 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 ll. 30-35.
The upper may be formed of multiple layers of materials, which may be
selected for properties of wear resistance, flexibility, and air permeability.
Id. at ll. 43-50. Thus, different areas of the exterior layer of the upper may
be formed of different materials with differing properties. Id. at ll. 51-60. In
that regard, the ’011 Patent explains that:
A textile may be defined as any manufacture from fibers,
filaments, or yarns characterized by flexibility, fineness, and a
high ratio of length to thickness. Textiles generally fall into two
categories. The first category includes textiles produced
directly from webs of filaments or fibers by randomly
interlocking to construct non-woven fabrics and felts. The
second category includes textiles formed through a mechanical
manipulation of yarn, thereby producing a woven fabric, for
example.

Id. at col. 2, ll. 6-14 (emphasis added). Techniques for the mechanical
manipulation of yarn into a textile include weaving (e.g., producing a woven
material) and knitting (e.g., producing a knitted material). Id. at ll. 36-46.
Further, textiles for uppers may be formed of weft or warp, woven or knitted
materials. Id. at ll. 40-41; see also id. at col. 3, ll. 30-32 (describing weft
knitted and warp knitted “textile elements”).
Figure 8 of the ’011 Patent is reproduced below.
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Figure 8 illustrates an embodiment of an upper according to the ’011
Patent. Id. at col. 5, l. 58-col. 6, l. 65. Textile element 40 is a single
material element with a unitary (i.e., one-piece) construction. Id. at col. 5,
ll. 38-41; see also id. at figs. 10 (depicting textile element 40ʹ) and 11
(depicting textile element 40ʺ). Consequently, textile element 40 is
configured, such that portions of the textile element are not joined together
with seams or other connections. Id. at col. 5, ll. 38-41; col. 6, ll. 41-46.
Edges 41a-44d, which are free in Figure 8, are joined together as shown in
Figures 3-5 to form seams 51-54, thereby forming at least a portion of a void
for receiving the foot. In contrast, lateral region 31, medial region 32, instep
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region 33, lower regions 34, and heel regions 35 together have a unitary
construction without seams (id. at col. 5, ll. 44-57; col. 6, ll. 47-50).
Figure 11 of the ’011 Patent is reproduced below.

Figure 11 illustrates another embodiment of an upper according to the
’011 Patent. Id. at col. 9, l. 36-col. 10, l. 14. Textile element 40ʺ includes
three different areas with three different textures. Id. at col. 9, ll. 38-39.
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 ll. 39-
42. In addition, textile element 40ʺ includes second texture 47ʺ and third
texture 48ʺ. Id. at ll. 42-46. Moreover, the ’011 Patent describes that:
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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. For example, the degree of stretch in areas with
textures 46ʺ-48ʺ may be different, or the wear resistance of the
areas may vary depending upon the stitch utilized. The air-
permeability of textile element 40ʺ' may also vary in the
different areas.

Id. at ll. 46-54 (emphases added). Similarly, the type of yarn used in
different areas may impart different properties to each area. Id. at col. 9, l.
65-col. 10, l. 14. Thus, the textures and properties of different areas of the
upper may be varied by altering the stitching or yarn used in those areas.
C. Status of the Claims
Of the challenged claims, claims 1, 16, 24, 36, and 44 are
independent. Independent claims 1, 24, and 36 recite similar limitations
describing the formation of a void to receive the foot, and independent
claims 16 and 44 recite similar limitations describing the unitary
construction of the textile element. As to the dependent claims, claims 2-15
depend from claim 1, claims 17-23 depend from claim 16, claims 25-35
depend from claim 24, claims 37-43 depend from claim 36, and claims 45
and 46 depend from claim 44. In its motion to amend, Patent Owner states
that “[i]ssued claims 1-46 are cancelled” (Paper 31, 1), and proposes four (4)
substitute claims, claims 47-50, based on original claims 16, 19, and 20 (id.
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at 1-2) . The substitute claims are reproduced below:
4

Claim 47. (Substitute for independent claim 16) An
article of footwear comprising
an upper incorporating a [weft-knitted] flat knit textile
element, the flat knit textile element
(1) having flat knit edges free of surrounding
textile structure such that the flat knit edges are not
surrounded by textile structure from which the textile
element must be removed, some of the flat knit edges
joined together to form an ankle opening in the upper for
receiving a foot, the ankle opening having an edge
comprised of one of the flat knit edges; and
(2) having 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 properties to
the textile element; and
a sole structure secured to the upper.

Claim 48. (Substitute for dependent claim 19) The article
of footwear recited in claim [16] 47, wherein at least one of the
first stitch configuration and the second stitch configuration
forms an aperture in the [weft-knitted] flat knit textile element
and the joined edges shape the flat knit textile element to form a
lateral region, a medial region, an instep region and a heel
region of the upper.

Claim 49. (Second substitute for dependent claim 19)
The article of footwear recited in claim [16] 47, wherein at least
one of the first stitch configuration and the second stitch
configuration forms [an aperture] a plurality of apertures in the

4
Subject matter deleted from original claims 16, 19, and 20 is enclosed by
brackets; subject matter added to those claims is underlined.
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[weft-knitted] flat knit textile element, the apertures formed by
omitting stitches in the flat knit textile element and positioned
in the upper for receiving laces.

Claim 50. (Substitute for dependent claim 20) The article
of footwear recited in claim [16] 47, wherein the [weft-knitted]
flat knit textile element is one of an exterior layer, an
intermediate layer, and an interior layer of the upper, and the
joined edges shape the flat knit textile element to form a lateral
region, a medial region, an instep region and a heel region of
the upper.

Paper 31, 1-2. Thus, Patent Owner proposes amending original claim 16 to
recite one of two sub-types of a weft-knitted textile element, namely a flat
knit textile element. Paper 31, 1. Further, substitute claim 47 recites a
negative limitation regarding the flat knit edges in terms of their method of
manufacture. See Paper 37, 4; Paper 59, 20-21 and 23-25. Specifically, the
“flat knit edges” are themselves flat knit and not cut from a flat knit textile.
Paper 37, 9. Thus, the upper is recited as “having flat knit edges free of
surrounding textile structure such that the flat knit edges are not surrounded
by textile structure from which the textile element must be removed”
(emphases added). Finally, some of the “flat knit edges” of the upper are
joined to form an ankle opening. Id. at 10.
II. DISCUSSION
Because Patent Owner did not file a response to the petition, we focus
our discussion on Patent Owner’s motion to amend. As noted above, in the
motion to amend, Patent Owner requests the cancellation of claims 1-46 and
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the entry of one independent substitute claim, claim 47, and three dependent
substitute claims, claims 48-50. Paper 31, 1-2. In support of its motion,
Patent Owner filed a declaration of Dr. Tonkel (Ex. 2010).
An inter partes review is more adjudicatory than examinational, in
nature. See Abbott Labs. v. Cordis Corp., 710 F.3d 1318, 1326 (Fed. Cir.
2013). A motion to amend in an inter partes review is not itself an
amendment. As the moving party, Patent Owner bears the burden of
establishing that it is entitled to the relief requested. 37 C.F.R. § 42.20(c).
Thus, Patent Owner’s proposed substitute claims are not entered
automatically, but may be entered upon Patent Owner’s having
demonstrated the patentability of the substitute claims.
A. Claim Construction
Claim construction is an important step in a patentability
determination. Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir.
2003) (“Both anticipation under § 102 and obviousness under § 103 are two-
step inquiries. The first step in both analyses is a proper construction of the
claims. . . . The second step in the analyses requires a comparison of the
properly construed claim to the prior art.” (internal citations omitted)).
Thus, a motion to amend must identify how the proposed substitute claims
are to be construed, especially when the proposed substitute claims introduce
new claim terms or features. See Research in Motion Corp. v. MobileMedia
Ideas LLC, IPR2013-00016, Paper 32, 6. The motion to amend also must
explain how the construed claim is distinguishable over the art.
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Neither Patent Owner nor Petitioner challenges our interpretation of
certain terms of claim 16, as set forth in the decision to institute, which
terms also appear in substitute claims 47-50. Paper 18, 10-17. The
interpretations of those terms are adopted for purposes of this final decision.
In particular, in the decision to institute, we construed expressly the claim
terms: a “weft-knitted textile element,” a “flat-knitted textile element,” and
“unitary construction.” Paper 18, 11-15. Although the original claims are
no longer at issue, the interpretation of terms in the decision to institute is
relevant to the interpretation of those terms in the substitute claims.
1. A Single Type of Textile
Independent claims 1, 24, and 36 recite that a textile element
incorporates “a single type of textile.” In its petition, Petitioner pointed out
that “[t]extile element 40 is primarily formed from one or more yarns that
are mechanically-manipulated through either an interweaving, intertwining
and twisting, or interlooping process.” Paper 7, 10 (quoting ’011 Patent, col.
6, ll. 51-54). “A single type of textile” is not defined expressly in the
Specification of the ’011 Patent. Nevertheless, we noted that a pertinent
definition of the term “textile” is “any cloth or goods produced by weaving,
knitting, or felting.” RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY
1351 (2nd Random House ed. 1996) (Ex. 3001); cf. Ex. 1002, col. 2, ll. 6-14
(defining “textiles”). In addition, the term “textile” is defined more broadly
as “[a] material made of natural or artificial fibers and used for the
manufacture of items such as clothing or furniture fittings.” MCGRAW-HILL
DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS 1911 (4th ed. 1989)
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(Ex. 3002). As noted above, the ’011 Patent states that textiles generally fall
into two categories: fabrics formed of randomly locked filaments or fibers,
such as felts; and fabrics formed of mechanically manipulated yarn, such as
woven or knitted fabrics. Ex. 1002, col. 2, ll. 9-14.
The ’011 Patent describes various techniques for mechanically
manipulating yarn into woven fabrics or textiles, including interweaving
(e.g., weaving), intertwining and twisting (e.g., braiding and knotting), and
interlooping (e.g., knitting). Id. at ll. 36-46. In the decision to institute, we
noted that claim 16 recites that the “textile element” is “knitted” and, in
particular, “weft-knitted.” Paper 18, 11-13.
2. Weft-Knitted Textile Element and Flat-Knitted Textile Element
According to Patent Owner, substitute claim 47 incorporates the
limitations of challenged, independent claim 16. Paper 31, 1. In its petition,
Petitioner argued that the terms “weft-knitted” and “flat-knitted” are well-
known in the art. Paper 7, 10. We agreed.
As noted above, the Specification of the ’011 Patent describes that
various textile types (e.g., weft knitting textiles) and sub-types (e.g., circular
and flat knitted) may be used to manufacture textile elements for
incorporation into the uppers of the claimed articles of footwear. Ex. 1002,
col. 6, l. 66-col. 7, l. 10. In the “Detailed Description of the Invention”
portion of the Specification, the ’011 Patent further describes that:
A variety of mechanical processes have been developed to
manufacture a textile. In general, the mechanical processes
may be classified as either warp knitting or weft knitting. With
regard to warp knitting, various specific sub-types that may be
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utilized to manufacture a textile include tricot, raschel, and
double needle-bar raschel (which further includes jacquard
double needle-bar raschel). With regard to weft knitting,
various specific sub-types that may be utilized to manufacture a
textile include circular knitting and flat knitting. Various types
of circular knitting include sock knitting (narrow tube), body
garment (seamless or wide tube), and jacquard.

Id. at col. 6, l. 66-col. 7, l. 10 (emphases added).
Although the ’011 Patent does not include a definition of either the
term “weft knitting” or “warp knitting,” a pertinent definition of “weft
knitting” is “[a] knitting process in which a continuous yarn is carried in
crosswise rows.” MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND
TECHNICAL TERMS at 2054 (Ex. 3002; emphases added); see also Ex. 1001
¶ 56 (reproducing H. Eberle et al., CLOTHING TECHNOLOGY, Sec. 3.3.1 (3rd
English ed. 2002) (weft knitted fabric “[m]ay be made from a single yarn”)).
By comparison, a pertinent definition of the term “warp knitting” is “[a]
knitting process in which a group of yarns form rows running lengthwise by
an interlocking process.” MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND
TECHNICAL TERMS at 2045 (Ex. 3002; emphasis added). Similarly, flat
knitting is described in the ’011 Patent as a sub-type of weft knitting, in
which the textile is knit as a sheet or flat piece of textile (Ex. 1002, col. 7,
ll. 5-8), in contrast to, for example, circular knitting, which is another sub-
type of weft knitting (see Ex. 1002, fig. 9).
In its opposition to the motion to amend, Petitioner argues that,
although flat knitting may be a sub-type of weft knitting, flat knitting is
broader than that and describes any “knitted textile that is knit in a flat
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form,” and necessarily includes other types of knitted textiles, including
warp knit textiles. Paper 37, 1-2. In the context of this Specification, we are
not persuaded that flat knitting should be construed so broadly.
In construing the term “flat knitting,” we apply the broadest
reasonable interpretation of the words in their ordinary usage, as those words
would be understood by one of ordinary skill in the art, taking into account
any definitions supplied by the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997). The Specification of the ’011 Patent expressly
describes flat knitting as a sub-type of weft knitting. Ex. 1002, col. 7, ll. 5-8.
Ultimately, “[t]he construction that stays true to the claim language and most
naturally aligns with the patent’s description of the invention will be . . . the
correct construction.” Renishaw PLC v. Marposs Societa’ per Azioni, 158
F.3d 1243, 1250 (Fed. Cir. 1998).
Further, Patent Owner presents evidence that a person of ordinary
skill in the art would understand flat knitting to describe a sub-type of weft
knitting. Paper 44, 1 (quoting a textile dictionary (Ex. 2011, 6) to state that
“the trade uses the term flat knit fabric to refer to weft knit fabrics made on a
flat machine, rather than warp-knit fabrics”); see also Ex 2017, 5; Ex. 2018,
6. Despite its argument, Petitioner identifies no portion of the Specification
of the ’011 Patent that describes flat knitting with respect to warp knitting or
any other type of knitting, beyond weft-knitting. See Paper 37, 2-3. In
addition, before the filing date of the motion to amend, Dr. Frederick,
Petitioner’s expert, testified that “[f]lat knitting would be another type of
weft knitting that would involve an end result that was . . . on a curved
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surface, but more or less flat.” Ex. 2009, 89, ll. 6-11. Therefore, we
determine that the term “weft knitting” describes a type of knitting in which
a continuous yarn is carried in crosswise rows, and we construe the term
“flat knit” to recite a sub-type of weft knitting, in which the weft knit textile
is produced as a sheet of more or less flat material.
5

3. The Textile Element Having First and Second Areas
In its petition, Petitioner argued that the phrase “the textile element
having a first area and a second area with a unitary construction” in original
claim 16 should be construed to require a textile element (1) having a unitary
construction and (2) having a first area and a second area, each area having
stitching that imparts different properties to its area. Paper 7, 11-12
(emphasis added). Thus, Petitioner argued that the textile element has a
single unitary construction containing different areas. Petitioner also argued,
however, that separate unitary constructions in different areas of the textile
element would be inconsistent with the invention, as described in the
Specification. Id. at 12.
The ’011 Patent expressly defines the term “unitary construction.”
Ex. 1002, col. 6, ll. 41-46. The ’011 Patent states 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

5
Although not dispositive for purposes of our construction of this term, we
are mindful that Patent Owner proposed the replacement of “weft-knitted”
with “flat knit” in original claim 16 in order to narrow the scope of substitute
claim 47 in a manner consistent with the language of the Specification.
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by seams or other connections, as depicted with textile element 40 in FIG.
8.” Id. (emphases added); see Paper 18, 10-11 (citing In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994)). Consequently, we construe the phrase “the
textile element having a first area and a second area with a unitary
construction” to require a textile element having a unitary construction and
having a first area and a second area.
4. Flat Knit Edges Free Of Surrounding Textile Structure Such That
The Flat Knit Edges Are Not Surrounded By Textile Structure
From Which The Textile Element Must Be Removed

Patent Owner proposes adding these limitations to original claim 16 in
substitute claim 47 in order to distinguish the substitute claims over the
references cited by Petitioner in its petition and over other references known
to Patent Owner. Paper 31, 3. The Specification of the ’011 Patent
describes a textile element with “edges” (e.g., Ex. 1002, Abstract; col. 6, ll.
47-50 (describing edges 41a-44d of textile element 40)), and such edges
were recited in the challenged claims (see id. at Claims 1, 3, 4, 6, 24, 36, and
39-41). In substitute claim 47, however, Patent Owner proposes to limit
further those edges as (1) “flat knit” edges and (2) edges “free of
surrounding textile structure such that the flat knit edges are not surrounded
by textile structure from which the textile element must be removed.” We
address the construction of each of these limitations in turn.
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a. Flat Knit Edges
Patent Owner argues that “flat knit edges” are edges that are
themselves “flat knit,” as opposed to edges that are formed by cutting a
textile element from a textile structure that has been created by flat knitting.
Paper 31, 7-8. In particular, Patent Owner argues that cutting a textile
element from a larger textile structure, such as is taught by Nishida (see Ex.
1005, col. 2, ll. 1-10), requires that the stitches at the textile element edges
are broken, e.g., by a knife, die cutter, or other cutting technique, in order to
separate the textile element from the surrounding textile structure. Paper 31,
7-8 (citing Ex. 2010 ¶¶ 101-105). Moreover, Patent Owner argues that, if
untreated, such cut edges are subject to fraying or unraveling. Id.; see also
Ex. 2010 ¶ 46 (citing Ex. 1007, 2, col. 1, ll. 56-63; Ex. 1009, col. 3, l. 68-col.
4, l. 16). Conversely, if the edges, like the textile of the flat knit textile
element, are flat knit, Patent Owner argues that such edges inherently have a
stable configuration in which the yarn of stitches at the edges of the textile
element is unbroken and joined from one row to the next row. Id. at 8
(citing Ex. 2010 ¶ 105); see also MCGRAW-HILL DICTIONARY OF SCIENTIFIC
AND TECHNICAL TERMS at 2054 (Ex. 3002); Ex. 1001 ¶ 56. Thus, Patent
Owner argues that the yarns forming the flat knit edges of the flat knit textile
element, as recited in substitute claim 47, retain their integrity, e.g., are
unbroken and remain joined between rows. See Ex. 2010 ¶ 105. Therefore,
according to Patent Owner, a flat knit edge of a flat knit textile element is
structurally different from a cut edge of a flat knit textile element.
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Petitioner contends that the term “flat knit edges” has two plausible
meanings. First, flat knit edges may be edges created when a textile element
is cut from a larger flat knit textile structure. Second, flat knit edges may be
edges created when a flat knit textile element is knit to shape. In an absolute
sense, we agree. Nevertheless, we must determine what the term means in
the context of this claim (including surrounding claim language) and in the
context of the Specification of this patent. Here, we construe a flat knit edge
to be an edge of a flat knit textile element, which is itself flat knit, e.g.,
which is not formed by cutting from a flat knit textile element.
b. Edges Free Of Surrounding Textile Structure Such That The
Flat Knit Edges Are Not Surrounded By Textile Structure
From Which The Textile Element Must Be Removed

Figures 8, 10, and 11 of the Specification of the ’011 Patent depict
textile elements 40, 40ʹ, and 40ʺ, respectively, without any textile structure
surrounding the textile elements. Patent Owner argues that these figures
depict a flat knit textile element with flat knit edges and without any textile
structure surrounding the textile elements, as recited in substitute claim 47.
Paper 31, 3-4; see, e.g., Ex. 1002, col. 6, ll. 41-50 (describing the unitary
construction of textile element 40). In contrast, Figure 9 of the Specification
depicts an embodiment of the disclosed invention in which a plurality of
textile elements 40 is cut from a circular knit textile structure 60. Ex. 1002,
col. 7, ll. 41-48. Thus, as noted above, Patent Owner argues that, unlike the
cut out textile elements depicted in Figure 9, flat knit textile elements having
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flat knit edges are depicted in and disclosed by Figures 8, 10, and 11. Paper
31, 4 (citing Ex. 2010 ¶¶ 36, 37, 40-41, and 62-67).
Petitioner argues that this limitation of substitute claim 47 properly is
construed as a negative limitation and that the negative limitation lacks
sufficient written description. Paper 37, 4. As the U.S. Court of Appeals for
the Federal Circuit explained,
[t]he test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the artisan
that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal
support in the specification for the claim language . . . The
content of the drawings may also be considered in determining
compliance with the written description requirement.

In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983) (emphasis added;
citations omitted). To the extent that the language of substitute claim 47
recites a negative limitation, we conclude that this negative limitation is
supported by the positive disclosure of the various forms of the textile
element, including a flat knit textile element, with “edges free of
surrounding textile structure such that the flat knit edges are not surrounded
by textile structure from which the textile element must be removed,” in
Figures 8, 10, and 11 of the ’011 Patent. See Santarus, Inc. v. Par Pharm.,
Inc., 694 F.3d 1344, 1351 (2012) (“it is possible for the patentee to support
both the inclusion and exclusion of the same material.”). In view of the
positive disclosure of this feature, the Specification need not disclose a
reason to exclude. Ex Parte Lazaridis and Brown, Appeal No. 2010-
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005137, 2013 WL 1331529 (2013) (discussing an alternative basis for
excluding a limitation in the absence of a positive recitation). Thus, we are
persuaded that the Specification discloses flat knit edges free of surrounding
material, as recited in substitute claim 47.
The language added to substitute claim 47 arguably recites the
claimed invention in terms of the manner in which it is made, i.e., as a
product-by-process limitation. During the oral hearing, the parties disagreed
as to whether the added language is a product-by-process limitation. Paper
59, 10-11 and 20. We determined above that the process of creating a flat
knit textile element with flat knit edges having no surrounding material
creates an edge that is structurally different from a cut edge. Therefore,
because the described process imparts structural differences to the textile
element and, hence, to the claimed article of footwear, this limitation may be
used to distinguish substitute claim 47 over the prior art. See Greenliant
Sys., Inc. v. Xicor LLC, 692 F.3d 1261, 1265 (2012) (“[T]he process
limitations in product-by-process claims . . . cannot be used to distinguish
prior art unless the process imparts structural differences to the product.”
(emphasis added)).
As noted above, we construe the claims in view of the Specification.
The Specification need not present every embodiment or permutation of the
invention, and the claims are not limited to a preferred embodiment of the
invention. See Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182,
1186 (Fed. Cir. 1998). The claims, however, may not enlarge the scope of
what is patented beyond what the inventor has described as the invention.
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Claim construction is the judicial statement of what is and is not covered by
the technical terms and other words of the claims. See United States
Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). Here,
the Specification broadly discloses the structure of the textile elements, e.g.,
textile elements 40, 40ʹ, and 40ʺ, from which a shoe upper may be formed.
Moreover, the Specification describes an embodiment of a method for
cutting a plurality of textile elements from a weft knit, and, in particular, a
circular knit, textile structure (see Ex. 1002, fig. 9), but the disclosed
invention is not limited to textile elements manufactured according to this
embodiment. The Specification teaches that textile structure 60, from which
textile elements 40, 40ʹ, or 40ʺ may be cut, “may be formed” according to
the embodiment depicted in Figure 9, but we conclude that those textile
elements also may be made according to other embodiments. Ex. 1002, col.
8, ll. 1-14.
For example, Patent Owner’s expert, Mr. Tonkel, testifies that, based
on his reading of the Specification, textile elements 40, 40ʹ, and 40ʺ may be
made by the flat knitting of yarn by the known process of “knit[ting] to
shape.” Ex 2010 ¶¶ 36, 37, 40-42, and 62-67. Petitioner’s expert does not
disagree. Ex. 1001 ¶ 28 (“The ’011 Patent describes that the textile element
may be formed any number of ways with one or more yarns that are
mechanically manipulated using a variety of existing processes . . .”
(emphases added)); see also Ex. 1001 ¶ 53 (“Significantly, the ’011 Patent
states that the textile element may be formed through any of the mechanical
processes discussed in the specification.” (emphasis added)). Thus, we
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conclude that this language of substitute claim 47 is construed properly to
describe a knit to shape textile element formed by flat knitting, having flat
knit edges. Such flat knit edges are knit, such that the yarns and fibers
forming the flat knit edges of the flat knit textile element, as recited in
substitute claim 47, are unbroken and remain joined between rows forming
the edges.
5. Remaining Claim Terms or Phrases
All remaining claim terms and phrases recited in substitute claims 47-
50 are given their ordinary and customary meaning, consistent with the
Specification, as would be understood by one with ordinary skill in the art.
B. A Reasonable Number Of Substitute Claims
Under 35 U.S.C. § 316(d)(1), a patent owner may, for each challenged
claim, propose a reasonable number of substitute claims in a motion to
amend. Each proposed claim should be traceable to an original, challenged
claim as a proposed substitute claim for that challenged claim. Absent
special circumstances, a challenged claim can be replaced by only one claim.
The presumption is that only one substitute claim would be needed to
replace each challenged claim, although the presumption may be rebutted by
a demonstration of need. 37 C.F.R. § 42.121(a)(3).
In its motion to amend, Patent Owner proposes substitute,
independent claim 47 for original, independent claim 16; two, substitute,
dependent claims, claims 48 and 49, for original, dependent claim 19; and
substitute, dependent claim 50 for original, dependent claim 20. Paper 31, 2.
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Thus, Patent Owner has proposed more than one substitute claim for original
claim 19.
In the order acknowledging that Patent Owner complied with the
requirement of 37 C.F.R. § 42.121(a) to confer with us prior to filing a
motion to amend, we noted that, if more than one substitute claim is
proposed for a challenged claim, for each proposed substitute claim, the
patent owner is expected to make a showing of patentable distinction over
all other proposed substitute claims for the same challenged claim. Paper
29, 2-3 (quoting Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027,
Paper 26, 8-9 (emphasis added)).
If more than one substitute claim is proposed for the same challenged
claim, the motion to amend must show that these multiple substitute claims
are patentably distinct from each other. If shown to be patentably distinct
from each other, the multiple claims are likely not unreasonable in number.
Paper 29, 2-3. If, however, no such patentable distinction is shown in the
motion, then we, in our discretion, may deny entry of the excess claims or
group the multiple substitute claims together for common treatment over the
prior art. Id. at 3.
Patent Owner argues that dependent claims 48 and 49, each of which
is a substitute for claim 19, are patentably distinct from each other. Paper
31, 15 (citing Ex. 2010 ¶¶ 169-176). According to Patent Owner, “[c]laim
49 does not teach or suggest ‘joined edges [that] shape the flat knit textile
element to form a lateral region, a medial region, an instep region and a heel
region of the upper,’” as recited in claim 48. Paper 31, 15 (citing Ex. 2010
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¶ 174). Similarly, Patent Owner argues that “[c]laim 48 does not teach or
suggest ‘apertures formed by omitting stitches in the flat knit textile element
and positioned in the upper for receiving laces,’” as recited in claim 49. Id.
(citing Ex. 2010 ¶176).
Initially, we note that each of claims 48 and 49 depends directly from
independent claim 47 and incorporates the limitations of claim 47 and
original claim 19. With respect to the additional limitations of claim 48,
Nishida describes joining the edges of the layout to form various portions of
the upper, as recited. Ex. 1002, col. 2, ll. 6-10; col. 3, ll. 27-42; fig. 3; see
also Paper 18, 20-25 (discussing original claims 3, 4, 6, 24, 39-41); Paper
37, 14-15 (claim chart for claim 48). With respect to the additional
limitations of claim 49, Nishida describes forming lacing areas by
knitting. Ex. 1002, col. 3, l. 66-col. 4, l. 5; see also Paper 18, 24-25
(discussing original claim 26); Paper 37, 15 (claim chart for claim 49).
Further, the Specification of the ’011 Patent describes the omission of
stitches, as recited in claim 49, to provide air permeability to the upper. Ex.
1002, col. 9, ll. 57-62; cf. Ex. 1005, col. 3, ll. 43-52 (“This type of
production can, additionally, insure that the toe area 14 has a good air
exchange capability. For example, this can be achieved by a net-like woven
or knitted structure.”).
In view of limitations of claim 47 and original claim 19 shared by
claims 48 and 49 and the teachings of Nishida, Patent Owner has not shown
that claims 48 and 49 would not be obvious over each other, and Patent
Owner does not persuade us that claims 48 and 49 are patentably distinct
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from each other. Thus, Patent Owner has failed to demonstrate that it
proposes a reasonable number of substitute claims for original claim 19 in
accordance with 37 C.F.R. § 42.121(a)(3). Nevertheless, in our discretion,
we do not deny entry of claims 48 and 49 on this basis, but instead group
claim 49 with claim 48, for patentability purposes. Further, we determine
that Patent Owner does not argue separately that the limitations of claims 48
and 50 render them patentable over the prior art. See Paper 31, 6-
10. Consequently, we group claims 48-50 with claim 47 for purposes of
considering their patentability over prior art.
C. Scope of Motion to Amend
Pursuant to 37 C.F.R. § 42.121(a)(2), a motion to amend may be
denied if: (1) the amendments seek to enlarge the scope of the original
claims; (2) the amendments introduce new subject matter; or (3) the
amendments do not respond to a ground of unpatentability, upon which trial
was instituted. For the reasons discussed below, we determine that the
substitute claims presented in Patent Owner’s motion to amend are definite
and narrow the scope of the original claims and do not introduce new subject
matter. Further, we conclude that the substitute claims presented in Patent
Owner’s motion to amend respond to grounds of unpatentability, upon
which trial was instituted, especially, anticipation by and obviousness over
Nishida. See Paper 18, 37. Nevertheless, because, as set forth below, we
deny Patent Owner’s motion to amend for other reasons, we do not discuss
further Patent Owner’s arguments regarding the patentability of the
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substitute claims over Nishida alone or Petitioner’s opposition to those
arguments. See Paper 31, 6-10; Paper 37, 8-10.
1. Narrowing Amendments
With respect to substitute claim 47, Patent Owner proposes to replace
the term “weft knit” with the term “flat knit” in original claim 16 and to add
certain additional limitations to original claim 16. Paper 31, 1. Specifically,
Patent Owner argues that “flat knitting” is a sub-type of “weft knitting.” Id.
at 3; Paper 44, 1-2. As noted above, we construe the term “flat knit textile
element” in substitute claim 47 to mean a “flat weft knit textile element.”
Hence, it is narrower than the corresponding limitation of claim 16. Further,
the additional limitations of substitute claim 47, reciting (1) “flat knit edges”
and (2) the manner in which such edges are not formed, together provide
structural limitations that were not present in original claim 16.
For the foregoing reasons, we determine that Patent Owner’s proposed
substitute claims 47-50 comply with 37 C.F.R. § 42.121(a)(2).
2. Written Description for Substitute Claims
The purpose of the written description requirement is to convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
applicant was in possession of the invention as now claimed. Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). We note that “the
written description requirement is satisfied by the patentee’s disclosure of
‘such descriptive means as words, structures, figures, diagrams, formulas,
etc., that fully set forth the claimed invention.’” Enzo Biochem, Inc. v. Gen-
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Probe Inc., 323 F.3d 956, 969 (Fed. Cir. 2002) (quoting Lockwood v.
American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)). Patent
Owner argues that the additional limitations of substitute claim 47 are
supported by the disclosure of the patent application, U.S. Patent
Application No. 10/791,289 (“the ’289 Application”), from which the ’011
Patent issued. Paper 31, 3-4 (citing Ex. 1003, 168-9, 173-5, 179, 181, and
184). We agree.
a. Flat Knit Textile Element
Patent Owner argues that, as with the ’011 Patent, the ’289
Application discloses that “weft knitting . . . include[s] circular knitting and
flat knitting.” Id. at 3 (citing Ex. 1003, 168); cf. Ex. 1002, col. 7, ll. 5-8.
Further, claim 65 of the ’289 Application recites that “an upper
incorporating a textile element [is] formed through a flat knitting process”
(emphasis added). Id. (citing Ex. 1003, 184); see also Ex. 1003, 179, 181
(claims 19 and 38 of the ’289 Application recite “flat knitting”). It is well
established that subject matter recited in a claim and embraced in an
application, as originally filed, is itself a part of the disclosure, even though
it may not be defined in the specification. Application of Frey, 166 F.2d
572, 575 (CCPA 1948).
Petitioner contends that “[t]he Board has yet to provide a construction
of ‘flat knitting,’ and [that] the Board’s construction of ‘weft knitting’ and
‘warp knitting’ does not indicate that ‘flat knit’ is exclusively a sub-type of
‘weft knitting.’” Paper 37, 2 (emphasis added). Initially, we note that we
provide a construction of the term “flat knitting” above. Specifically, in the
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context of this Specification, flat knitting is a sub-type of weft knitting, in
which the textile is weft knit as a sheet or flat piece of textile. Ex. 1002, col.
7, ll. 5-8; see also Ex. 2010 ¶ 60 (“[I]n flat knitting a fabric is produced on a
machine in generally flat form, with yarn alternating back and forth across
the fabric. [E.g., Ex. 2011, 8.] Moreover, a flat knit fabric is a fabric that
has been knit on a flat knitting machine. [E.g., id. at 6.]”); Ex. 1001 ¶ 56
(“weft knits may be made with flat or circular machines” (emphasis added)).
Therefore, we conclude that Patent Owner has demonstrated support for the
term “flat knit textile element” in the application from which the ’011 Patent
claims benefit, and that, as both Patent Owner’s and Petitioner’s experts
agree, the meaning of flat knitting, as construed herein, was well-known at
the time of the invention. See Ex. 2010 ¶¶ 49-50; Ex. 1001 ¶ 54.
b. Edges Free Of Surrounding Textile Structure Such That The
Flat Knit Edges Are Not Surrounded By Textile Structure
From Which The Textile Element Must Be Removed

Patent Owner argues that, as with the ’011 Patent, the ’289
Application discloses that “flat knit edges [are] free of surrounding textile
structure such that the flat knit edges are not surrounded by textile structure
from which the textile element must be removed.” Paper 31, 4. In
particular, Patent Owner argues that Figures 8, 10, and 11 depict textile
elements 40, 40ʹ, and 40ʺ, respectively, “free of surrounding textile structure
such that the flat knit edges are not surrounded by textile structure from
which the textile element must be removed.” Id. In contrast, Patent Owner
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argues that Figure 9 depicts a different embodiment of the invention than
that recited in the substitute claims. Id.
Figure 9 depicts “a perspective view of a textile structure that
incorporates two of the textile elements.” Ex. 1003, 164 (’289 Application
¶ 24). In particular, the Specification of the ’289 Application describes that:
An example of a textile structure 60 that may be formed with a
wide-tube circular knitting machine is depicted in Figure 9.
Textile structure 60 has a generally cylindrical configuration,
and the types of stitches vary throughout textile structure 60 so
that a pattern is formed with the outline of textile element 40.
That is, differences in the stitches within textile structure 60
form an outline with the shape and proportions of textile
element 40.

Id. at 169 (’289 Application ¶ 45 (emphasis added)). Thus, Patent Owner
argues that the embodiment depicted in Figure 9 does not limit the textile
elements depicted in Figures 8, 10, and 11 to those manufactured according
to the process of Figure 9 and that a textile element may or may not be
formed by removing it from a larger textile structure, such as textile
structure 60. Paper 31, 4. Further, referring to Figures 8, 10, and 11, Dr.
Tonkel opines that the ’289 Application “illustrates multiple examples in
which the textile element is shown in its final shape and is not described as
being formed as part of a larger textile structure from which it must be
removed.” Ex. 2010 ¶ 63; see also Ex. 2010 ¶ 37. Moreover, Dr. Tonkel
asserts that his opinions are from the perspective of a person of ordinary skill
in the art. Ex. 2010 ¶¶ 52-53.
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Petitioner disagrees and argues that Patent Owner’s contention that
this limitation is described sufficiently in the ’289 Application rests on a
single phrase, and, perhaps, on a single word in that phrase, that textile
element 40 “may be formed as a part of a larger textile element.” Paper 37,
3-4 (citing Paper 31, 4; Ex. 2010 63 (emphasis added)). According to
Petitioner, Patent Owner argues that, based on this disclosure, textile
element 40 may be formed as part of a larger textile structure or may be knit
to shape. Id. In view of the depiction of the textile element, without
surrounding material, in Figures 8, 10, and 11 of the ’289 Application and
the non-limiting language used with respect to the embodiment, with
surrounding material, depicted in Figure 9, we are persuaded that the
Specification of the ’289 Application adequately supports the language
added to original claim 16 in substitute claim 47.
3. Definiteness of Substitute Claims
Petitioner argues that the substitute claims are indefinite. Paper 37, 6-
8. The test for definiteness under 35 U.S.C. § 112, ¶ 2, is whether “those
skilled in the art would understand what is claimed when the claim is read in
light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). More specifically,
“if a claim is amenable to two or more plausible claim constructions, the
USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim
unpatentable under 35 U.S.C. § 112, [¶ 2], as indefinite.” Ex parte
Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). Citing
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Miyazaki, Petitioner contends that the substitute claims, in particular,
substitute claim 47, are “amenable to two or more plausible claim
constructions.” Paper 37, 6-8. We disagree.
Petitioner contends that the limitations added to original claim 16
reciting that “flat knit edges free of surrounding textile structure such that
the flat knit edges are not surrounded by textile structure from which the
textile element must be removed” have two plausible claim constructions.
Id. at 6. First, Petitioner contends that this language may be construed to
recite a flat knit textile element having flat knit edges, which has been
removed from a surrounding textile structure. Id. Second, Petitioner
contends that this language may be construed to recite a flat knit textile
element having flat knit edges, which has been knit to shape. Id. at 6-7; see
also Ex. 1015, 68-98 (transcript of deposition of Dr. Tonkel).
Petitioner contends that only the first construction is supported by the
disclosure of the Specification of the ’011 Patent. Id. at 6. We disagree,
and, for the reasons set forth above, we determine that the second
construction is supported. Figure 9 of the ’011 Patent depicts a single
embodiment of a process for forming textile elements, in which a pair of
textile elements 40 is cut from circular knit textile structure 60. See Ex.
1002, col. 7, ll. 41-48. Although circular knitting, like flat knitting, is a type
of weft knitting, circular knitting is not the same as flat knitting. Moreover,
as depicted in Figure 9, the process is intended to produce multiple textile
elements from a single textile structure. Id. at ll. 56-58. Petitioner fails to
identify any disclosure in the Specification of the ’011 Patent that would
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limit the formation of textile elements 40, 40ʹ, and 40ʺ of Figures 8, 10, and
11, respectively, solely to the process of Figure 9. Although the substitute
claims are interpreted in light of the Specification, limitations from the
Specification are not read into the substitute claims. In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993). Thus, we are not persuaded that the
disclosure of the textile elements of Figures 8, 10, and 11 should be limited
by the process embodiment depicted in Figure 9.
Petitioner notes that its textile expert, Dr. Adanur, opines that a person
of ordinary skill in the art at the time of the priority date of the ’011 Patent
would understand that, under the broadest reasonable interpretation, “flat
knit edges” means “edges of a knitted textile that are knit in flat form,”
whether or not knit to shape. Paper 37, 7-8 (citing Ex. 1016 ¶ 38). This also
does not demonstrate that the claim language of the substitute claims may be
construed to recite both that the textile element is removed from a larger
textile structure and that the textile element is knit to shape. Therefore,
construing the language of the substitute claims in accordance with the
disclosure of the Specification, we determine that the substitute claims recite
a flat knit textile element having flat knit edges, which has been knit to
shape, and that the substitute claims are not susceptible to two plausible
constructions. Thus, the substitute claims are not indefinite for the reasons
proposed by Petitioner.
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D. Patentability over Prior Art
An inter partes review is neither a patent examination proceeding nor
a patent reexamination proceeding. The substitute claims proposed in a
motion to amend are not entered automatically and then subjected to
examination. Rather, the proposed substitute claims will be added directly
to the patent, without examination, if the patent owner’s motion to amend
claims is granted. In a motion to amend, the patent owner is not rebutting a
rejection in an office action, as though this proceeding were a patent
examination or a reexamination. Instead, the patent owner, as the movant,
bears the burden of establishing the patentability of the proposed substitute
claims over the prior art of record and also other prior art known to Patent
Owner. We deny the motion to amend because (1) Patent Owner has not
met this burden and (2) Petitioner has shown that the substitute claims would
have been rendered obvious over the combination of the teachings of
Nishida and Schuessler I and II.
1. Patentability Over Other Art Known To Patent Owner
In the motion to amend, Patent Owner states that:
The proposed claims are patentable over the prior art, including
prior art identified by the Board in its Decision on whether to
institute a trial and other prior art known to NIKE.
Paper 31, 3 (emphasis added). Such a conclusory statement that the
proposed claims are patentable over “other prior art known to [Patent
Owner]” is facially inadequate. Patent Owner’s motion does not discuss (1)
the level of ordinary skill in the art, explaining the basic knowledge and skill
set already possessed by one of ordinary skill in the art, with respect to the
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new claim features or (2) the other known prior art. Moreover, failing to
identify the “other prior art” and limiting the discussion to the references
relied upon in the petition or raised in Petitioner’s opposition to the motion
to amend does not provide a meaningful analysis of such art.
In a prior order (Paper 22), we directed Patent Owner to Idle Free,
IPR2012-00027, Paper 26, dated June 11, 2013, as providing guidance on
motions to amend. Paper 22, 2-3. In Idle Free, the Board advised the patent
owner that, in a motion to amend:
A patent owner should identify specifically the feature or
features added to each substitute claim, as compared to the
challenged claim it replaces, and come forward with technical
facts and reasoning about those feature(s), including
construction of new claim terms, sufficient to persuade the
Board that the proposed substitute claim is patentable over the
prior art of record, and over prior art not of record but known
to the patent owner. The burden is not on the petitioner to show
unpatentability, but on the patent owner to show patentable
distinction over the prior art of record and also prior art known
to the patent owner. Some representation should be made about
the specific technical disclosure of the closest prior art known
to the patent owner, and not just a conclusory remark that no
prior art known to the patent owner renders obvious the
proposed substitute claims.
A showing of patentable distinction can rely on
declaration testimony of a technical expert about the
significance and usefulness of the feature(s) added by the
proposed substitute claim, from the perspective of one with
ordinary skill in the art, and also on the level of ordinary skill,
in terms of ordinary creativity and the basic skill set. A mere
conclusory statement by counsel, in the motion to amend, to the
effect that one or more added features are not described in any
prior art, and would not have been suggested or rendered
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obvious by prior art, is on its face inadequate.

Idle Free, IPR2012-00027, Paper 26, 7-8 (emphasis added); see also Idle
Free, IPR2012-00027, Paper 66, 33-38 (denying motion to amend in final
written decision). Yet, in its motion to amend, Patent Owner addresses only
the references asserted in the petition and in the opposition to the motion to
amend. Paper 31, 6-15; see also Paper 44, 4-5. As the Board explained,
“[d]istinguishing the proposed substitute claims only from the prior art
references applied to the original patent claims, however, is insufficient to
demonstrate general patentability over prior art.” Idle Free, IPR2012-
00027, Paper 66, 33. Consequently, the portion of Patent Owner’s motion to
amend requesting entry of substitute claims 47-50 is denied.
2. Obviousness over Nishida and Schuessler I and II
For the reasons below, we also are not persuaded that Patent Owner
has demonstrated the patentability of the proposed substitute claims over a
ground of unpatentability presented by Petitioner, in particular, the ground
involving Nishida and Schuessler I and II. As noted above, we instituted
inter partes review of claims 16, 19, and 20 because we determined that
Petitioner had demonstrated a reasonable likelihood of showing that these
claims were rendered obvious by Nishida. Paper 18, 31. Petitioner now
argues that substitute claims 47-50 are unpatentable as rendered obvious by
Nishida in view of the additional teachings of Schuessler I and II. Paper 37,
10-11. Moreover, because Patent Owner did not file a patent owner
response to the petition, in this final decision, we accept as unchallenged that
Nishida teaches or suggests all of the limitations of original claims 16, 19,
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and 20. See Paper 19, 2-3 (“The patent owner is cautioned that any
arguments for patentability not raised in the response will be deemed
waived.”). Thus, we now consider only whether Schuessler I and II teach or
suggest the limitations added in substitute claims 47-50 and whether
Petitioner has shown some reasoning supported by a rational underpinning
for combining the teachings of Nishida with those of Schuessler I and II to
achieve the invention recited in the substitute claims. For the reasons set
forth below, we are persuaded that Nishida and Schuessler I and II render
substitute claims 47-50 obvious.
Petitioner argues that Schuessler I and II teach or suggest “flat knit
edges free of surrounding textile structure such that the flat knit edges are
not surrounded by textile structure from which the textile element must be
removed.” Paper 37, 11. In particular, Schuessler I teaches a method of
producing a knitted helmet, e.g., a knitted cap. Ex. 1020, col. 1, ll. 15-22.
The knitted helmet may be formed from a swatch knit on a flat knitting
machine, such as that described in Schuessler II (Ex. 1021, col. 1, ll. 39-42),
“as knitted without requiring cutting” (Ex. 1020, col. 1, ll. 25-26 (emphasis
added); see also Ex. 1020, col. 1, ll. 17-18). See Paper 37, 10. The swatch
is a two-dimensional shape the edges of which may be joined to form a
three-dimensional shape, including an opening to receive the helmet
wearer’s head. Paper 37, 10-11 (citing Ex. 1020, col. 2, ll. 41-45); see also
Ex. 1020, col. 1, ll. 32-36; fig. 2 (depicting a finished helmet). Thus,
Schuessler I teaches or suggests knitting the swatch to shape. Ex. 1020,
col. 1, l. 48-col. 2, l. 2.
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Petitioner contends that Nishida and Schuessler I are in similar fields
and address the same problem, namely the formation of two-dimensional
textile elements having edges that are joined to form three-dimensional,
wearable items. Paper 37, 11; cf. Ex. 1005, figs. 1 (two-dimensional layout
2) and 3 (three-dimensional, shoe upper 3); Ex. 1020, figs. 1 (two-
dimensional helmet swatch) and 2 (three-dimensional helmet). Further,
Schuessler II teaches that the two-dimensional helmet swatch of Figure 1 of
Schuessler I may be knit to shape on a flat knitting machine. Paper 37, 11
(citing Ex. 1023 ¶ 15). Petitioner contends, therefore, that a person of
ordinary skill in the art would have reason to combine the teachings of these
three references to achieve the invention recited in substitute claim 47. Id.
Patent Owner does not argue Petitioner’s assessment of the teachings
of these references. Patent Owner also does not dispute that all of the
limitations of the claims are taught in the prior art. Instead, Patent Owner
argues that Petitioner’s contention that a person of ordinary skill in the art
would combine Nishida’s teaching regarding the reduction of waste by
placing layouts in adjoining positions and Schuessler I’s teaching regarding
knitting textile elements to shape is illogical. Paper 44, 5. Specifically,
Patent Owner argues that Petitioner’s reason for combining these teachings
is somehow flawed because “after they are combined the elements of each
reference serve the same purpose.” Id. As the U.S. Supreme Court
explained, however, “if a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
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39
unless its actual application is beyond his or her skill.” KSR Int’l Co. v.
Teleflex Inc., 555 U.S. 398, 417 (2007). In this case, that the elements of the
prior art references would “serve the same purpose” when combined is a
factor in favor of an obviousness determination, and not a suggestion of non-
obviousness, as urged by Patent Owner.
Because we are persuaded that Petitioner has demonstrated that the
teachings of Nishida and Schuessler I and II teach or suggest all of the
limitations of substitute claim 47 and that a person of ordinary skill in the art
would have had reason to combine the teachings of these references to
achieve the recited article of footwear, we determine that Patent Owner fails
to meet its burden of showing that it is entitled to the relief requested in its
motion to amend. Because we group substitute claims 48-50 with claim 47
for purposes of assessing patentability, we also determine that Patent Owner
fails to meet its burden of showing that it is entitled to the relief requested in
its motion to amend with respect to substitute claims 48-50. Consequently,
the portion of Patent Owner’s motion to amend requesting entry of substitute
claims 47-50 also is denied for failing to demonstrate that the substitute
claims are patentable over Nishida and Schuessler I and II.
E. Petitioner’s Motion to Exclude
Petitioner has filed a motion seeking to exclude the following evidence:
(1) certain portions of the transcript of the cross-examination of Dr.
Frederick (Ex. 2009, pg. 116, ll. 3-25); and (2) references to this testimony
by Patent Owner’s expert, Dr. Tonkel (Ex. 2010 ¶ 65). Paper 44, 3-5. As
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Patent 7,347,011 B2
40
the movant, Petitioner has the burden of establishing that it is entitled to the
requested relief. 37 C.F.R. § 42.20(c).
Petitioner seeks to exclude certain portions of the testimonial evidence
obtained by Patent Owner during the cross-examination of Petitioner’s
expert, Dr. Frederick. Paper 49, 1. In particular, Petitioner argues that,
contrary to the requirements of 37 C.F.R. § 42.53(d)(5)(ii), Patent Owner’s
cross-examination of Dr. Frederick exceeded the scope of Dr. Frederick’s
direct testimony (Ex. 1001), which was limited to the construction of terms
of original claims 1-46 and to the unpatentability of those original claims in
view of grounds identified by Petitioner. Paper 49, 1. Petitioner argues that
Patent Owner questioned Dr. Frederick regarding “flat knit edges,” a term
that did not appear in original claims 1-46, but which Patent Owner included
in the substitute claims of its motion to amend. Id.; see also Paper 54, 3-4.
Although Petitioner argues that Patent Owner’s questioning of Dr.
Frederick exceeded the scope of his direct testimony, Petitioner only
objected to one of several questions in the testimony that it seeks to exclude,
and Petitioner stated an “[o]bjection to form” with respect to that question,
not an objection that the question or any of the preceding questions sought
testimony that was beyond the scope of the Dr. Frederick’s direct testimony.
Ex. 2009, pg. 116, l. 24 (emphasis added); see Paper 54, 2-3.
Moreover, Petitioner requests that we grant its motion to exclude the
portions of the transcript of the cross-examination of Dr. Frederick
preceding the question that was the subject of Petitioner’s objection. Id. at
5-6 (citing Ex. 2009, pg. 116, ll. 3-25). As a result of the grant of this
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41
motion, references to this challenged testimony by Patent Owner’s expert,
Dr. Tonkel, (Ex. 2010 ¶ 65) also presumably would be excluded.
Patent Owner opposes Petitioner’s motion to exclude. In particular,
Parent Owner argues that: (1) Petitioner did not object to most of the
questions or testimony that it now seeks to exclude, objecting only to a
single question; (2) the elicited testimony related to aspects of Dr.
Frederick’s direct testimony; (3) the elicited testimony pertained to Dr.
Frederick’s credibility as an expert witness regarding the patented
technology; and (4) Patent Owner elicited the testimony without the use of
leading questions, i.e., in the proper form. Paper 51, 1.
The current situation does not require us to assess the merits of
Petitioner’s motion to exclude. As discussed above, even without relying
upon the aforementioned portions of the cross-examination testimony of Dr.
Frederick, we have concluded that Patent Owner has demonstrated that the
term “flat knit edges” of substitute claims 47-50 is supported by the
disclosure of the ’289 Application. Accordingly, Petitioner’s motion to
exclude evidence is dismissed as moot.
III. CONCLUSION
For the reasons set forth above, we grant the portion of Patent
Owner’s motion to amend requesting cancellation of claims 1-46 of the ’011
Patent. In its motion to amend, Patent Owner has not met its burden of
establishing the patentability of substitute claims 47-50. Therefore, we deny
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Patent 7,347,011 B2
42
the portion of Patent Owner’s motion to amend requesting entry of substitute
claims 47-50.
This is a final decision. Parties to the proceeding seeking judicial
review of the decision must comply with the notice and service requirements
of 37 C.F.R. § 90.2.
IV. ORDER
In consideration of the foregoing, it is
ORDERED that the portion of Patent Owner’s motion to amend
requesting cancellation of claims 1-46 of the ’011 Patent is granted;
FURTHER ORDERED that the portion of Patent Owner’s motion to
amend requesting entry of substitute claims 47-50 is denied; and
FURTHER ORDERED that Petitioner’s motion to exclude evidence
is dismissed as moot.

Case IPR2013-00067
Patent 7,347,011 B2
43
PETITIONER:
Mitchell G. Stockwell
Theodore G. Brown III
Vaibhav P. Kadaba
Tiffany L. Williams
Kilpatrick Townsend & Stockton LLP
mstockwell@kilpatricktownsend.com
tbrown@kilpatricktownsend.com
wkabada@kilpatricktownsend.com
twilliams@kilpatricktownsend.com

PATENT OWNER:
Jonathan van Es
Thomas Pratt
Joseph M. Skerpon
H. Wayne Porter
Banner & Witcoff, Ltd.
pvanes@bannerwitcoff.com
tpratt@bannerwitcoff.com
jskerpon@bannerwitcoff.com
wporter@bannerwitcoff.com