Docket No. 2014-1719 (IPR2013-00067)
CHEN, MAYER, STOLL
February 11, 2016
Brief Summary: Board decision denying Nike’s motion to amend claims affirmed because it “failed to meet its burden of establishing patentability of substitute claims 47-50”; obviousness decision vacated since “Board should have explicitly acknowledged and evaluated Nike’s secondary considerations evidence”.
Summary: Nike appealed PTAB denial of its motion to amend its claims during IPR of US 7,347,011 relating to the “upper” part of a shoe “incorporating a flat knit textile element” (vs. the sole) because it “failed to meet its burden of establishing patentability of substitute claims 47-50” (Board decision, Idle Free Sys., Inc. v. Bergstrom, IPR 2012-00027 (patent owner must “persuade the Board that the proposed substituted claim is patentable over the prior art of the record, and over prior art not of record but known to the patent owner” and that burden is not on the petitioner; Microsoft Corp. v. Proxyconn, Inc., FC 2015 (“once the PTO grants a patentee’s motion to amend, the substituted claims are not subject to further examination…If the patentee were not required to establish patentability of substitute claims over the prior art of record, an amended patent could issue despite the PTO having before it prior art that undermines patentability.”); Master Image 3D, IPR2015-00040 (patent owner must submit necessary information to comply with its duty of candor)), or because it “failed to establish that the substitute claims were patentable over the Nishida and Schuessler references.” Nike argued the burden regarding proposed amendments should be on the petitioner under 35 USC § 316(e) but the FC panel disagreed, finding that interpretation “in tension with Congress’s direction that the PTO ‘shall prescribe regulations’ ‘setting forth standards and procedures for allowing the patent owner to move to amend.’” Thus, the Board decision not to enter Nike’s proposed amendment was affirmed. Nike also argued the Board incorrectly determined Nike had not shown the claims would not have been obvious. The opinion explained that “[a] claimed invention may be obvious even when the prior art does not teach each claim limitations, so long as the record contains some reason why one of skill in the art would modify the prior art to obtain the claimed invention” (Ormco, FC 2006) and that “an obviousness inquiry requires an ‘expansive and flexible approach” as well as “examination of all four Graham factors” (Kinetic Concepts, FC 2012). “The Board found that one of skill in the art would have reason to combine Nishida and Schuessler References because these references are in similar fields and address the same problem.” Nike disagreed, arguing “Nishida discloses a ‘subtractive’ process, which requires [an] additional step” and “bears no resemblance to the ‘additive’ process in the Schuessler references”. The FC panel “agree[d] with the Board that the prior art references ‘serve the same purpose’ of efficiently creating knitted articles” and the skilled artisan would have been motivated to combine the same (citing KSR). It also addressed Nike’s arguments based on Leo Pharmaceuticals (FC 2013) (the age of a reference can highlight the fact that no one in the art understood the problem to be solved)), explaining that “[h]ere, there is no question that skilled artisans knew of the desire to reduce waste”. The FC panel did “conclude the Board should have explicitly acknowledged and evaluated Nike’s secondary considerations evidence” (Stratoflex, FC 1983; Loctite, FC 1985). The FC panel also found the Board did not treat another set of claims “consistent with the rule set out in” Idel Free and its “statements are insufficient to support” its conclusion of obviousness for the same (“the Board did not articulate these findings”). And it agreed with the Board’s construction of the term “flat knit edges” and conclusions on written description (not a negative limitation (Santarus, FC 2012; Inphi, FC 2015 (“Negative limitations are adequately supported when the specification describes a reason to exclude the relevant limitations…Santarus did not create a heightended standard for written description support of negative limitations”)).