Skechers U.S.A., Inc. v. Nike, Inc.

Trials@uspto.gov Paper: 17 571-272-7822 Date: June 9, 2025

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

SKECHERS U.S.A., INC.,

Petitioner,

v.

NIKE, INC.,

Patent Owner. ____________ IPR2025-00150 Patent 9,060,562 B2 ____________

Before KEN B. BARRETT, MICHAEL J. FITZPATRICK, and MATTHEW S. MEYERS, Administrative Patent Judges. BARRETT, Administrative Patent Judge.

DECISION

Denying Institution of Inter Partes Review

35 U.S.C. § 314

1

I. INTRODUCTION

A. Background and Summary Skechers U.S.A., Inc. ("Petitioner")¹filed a Petition requesting inter partes review of U.S. Patent No. 9,060,562 B2 ("the '562 patent,"

Ex. 1001). Paper 1 ("Pet."). The Petition challenges the patentability of claims 1-23 of the '562 patent. Nike, Inc. ("Patent Owner")²filed a Preliminary Response to the Petition. Paper 6 ("Prelim. Resp."). With our authorization, Petitioner filed a Reply to Patent Owner's Preliminary Response (Paper 10, "Pet. Prelim. Reply") and Patent Owner filed a Sur-reply (Paper 12, "PO Prelim. Sur-reply").

An inter partes review may not be instituted "unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition." 35 U.S.C. § 314(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the '562 patent. Accordingly, we do not institute an inter partes review of the challenged claims.

B. Related Proceedings

Both parties identify, as matters involving or related to the '562 patent, Nike, Inc. v. Skechers U.S.A., Inc., No. 2:23-cv-09346-AB-PVC

2

(C.D. Cal.), and Nike, Inc. v. New Balance Athletics, Inc., No. 1:23-cv- 12666-JEK (D. Mass). Pet. 118; Paper 3, 2; Paper 8, 2. C. The '562 Patent

The '562 patent "relates generally to methods of manufacturing articles of footwear, and, in particular, to a knitting process for a knitted component with an integral knit tongue for an article of footwear."

Ex. 1001, 1:16-19.

Figure 1 of the '562 patent is reproduced below.

Figure 1 "is an isometric view of an exemplary embodiment of an article of footwear." Id. at 3:34-35. The '562 patent explains that:

Many conventional footwear uppers are formed from multiple material elements (e.g., textiles, polymer foam, polymer sheets, leather, synthetic leather) that are joined through stitching or bonding, for example. In contrast, a

3

majority of upper 120 is formed from a knitted component 130, which extends through each of forefoot region 101, midfoot region 102, and heel region 103, along both lateral side 104 and medial side 105, over forefoot region 101, and around heel region 103. . . . In some configurations, knitted component 130 may also extend under the foot.

Id. at 6:51-64. The '562 patent further states that, "[i]n some embodiments, a throat area 123 extends from ankle opening 121 in heel region 103 over an area corresponding to an instep of the foot to an area adjacent to forefoot region 101." Id. at 6:28-31. "In an exemplary embodiment, an integral knit tongue 140 is formed of unitary knit construction with upper 120 and extends through throat area 123 of upper 120 between lateral side 104 and medial side 105." Id. at 6:31-35.

D. Illustrative Claim

Of the challenged claims of the '562 patent, claims 1, 8, and 16 are independent claims. Claim 1, reproduced below with bracketed annotations³ inserted, is illustrative.

1. [1Pre] A method of manufacturing a knitted component for an article of footwear, the method comprising:

[1a] knitting a portion of the knitted component defining an upper with a knitting machine, [1b] the upper including a portion of at least one of an exterior surface of the knitted component and an opposite interior surface of the knitted component; and

[1c] knitting an integral knit tongue that is of unitary knit construction with the upper with the knitting machine, the

4

integral knit tongue extending through a throat area of the knitted component; and

[1d] wherein the integral knit tongue is joined by knitting with the knitting machine to: (1) a forward portion of the throat area, and (2) at least along a portion of both of a lateral side and a medial side of the throat area of the knitted component extending through a portion of a length of the throat area in a longitudinal direction from the forward portion to an ankle opening of the upper.

Ex. 1001, 24:35-52.

E. Evidence

Petitioner relies on the following references:

Petitioner also relies on the Declaration of Dr. Sabit Adanur

(Ex. 1002) and the Declaration of Grant Delgatty (Ex. 1003) in support of its

arguments. The parties also rely on other exhibits as discussed below.

F. Asserted Grounds of Unpatentability

Petitioner asserts that the challenged claims are unpatentable on the

following grounds:

4 Petitioner, for Horii, also cites Exhibit 1031, which includes a translator's certification along with a document in Japanese and a translation. Pet. 20. We are unable to locate any other citations to that exhibit in the Petition. Like Petitioner, we cite herein to Exhibit 1017 for Horii.

5

II. ANALYSIS

A. Principles of Law

"A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987); see also Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008) (to anticipate a patent claim under 35 U.S.C. § 102, "a single prior art reference must expressly or inherently disclose each claim limitation"). Moreover, "[b]ecause the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those

5 The application that issued as the '562 patent was filed before the effective date of the Leahy Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) ("AIA"), and we apply the pre-AIA versions of 35 U.S.C. §§ 102 and 103.

6

elements 'arranged as in the claim.'" Net MoneyIN, Inc. v. VeriSign, Inc.,

545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Whether a reference anticipates is assessed from the perspective of one of ordinary skill in the art. See Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368-69 (Fed. Cir. 2003) ("'[T]he dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference's] teaching' that every claim element was disclosed in that single reference." (second and third alterations in original) (quoting In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991))). Additionally, "[u]nder the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates." MEHL/Biophile Int'l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999); see In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349-50 (Fed. Cir. 2002).

A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art;

(2) any differences between the claimed subject matter and the prior art;

(3) the level of skill in the art; and (4) if present, any objective evidence of obviousness or non-obviousness. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).

7

B. The Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors may be considered, including the "type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field." In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quoting Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)).

Petitioner contends that:

A person of ordinary skill in the art ("POSITA") in the field of the '562 patent in February 2012 would have been someone with at least a few years of experience in knit materials and knitting methods and machines that can be used in making footwear, or a bachelor's degree in textile-related sciences, engineering, or industrial product design, or equivalent academic or work experience, including in the footwear industry. EX1002, ¶68. Such a person of ordinary skill would have at least a general understanding of general construction processes and materials used in the manufacturing process of fabric-based articles. For individuals with a lower educational level, a person could still be of ordinary skill in the art provided that person's working experience compensates for any such lower educational level, or vice versa. See id.

Pet. 22. Patent Owner states that, "[f]or the purposes of this Preliminary Response only, Nike applies Petitioner's proposed level of skill in the art."

Prelim. Resp. 15.

Petitioner's definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may

8

reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner's definition of the person of ordinary skill in the art. C. Claim Construction

We apply the same claim construction standard used in district court actions under 35 U.S.C. § 282(b), namely that articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). In applying that standard, claim terms generally are given their ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312-13. "In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence." DePuy Spine, Inc.

v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312-17). "[W]hile extrinsic evidence can shed useful light on the relevant art, . . . it is less significant than the intrinsic record in determining the legally operative meaning of claim language."

Phillips, 415 F.3d at 1317 (internal quotation marks omitted). Petitioner states that, "[h]ere, Petitioner believes that no terms require express construction for purposes of resolving the issues raised in the Petition because the claims are invalid under either parties' claim construction position." Pet. 23. Petitioner further states that "this Petition includes challenges to the claims based on Patent Owner's reading of the claims onto the accused shoes in the parallel litigation," and "[t]he Petition also challenges the claims under Petitioner's constructions." Id. at 23-24.

9

Patent Owner states that, "[f]or purposes of this IPR, [Patent Owner] Nike contends that no terms require construction," and asserts that "[a]ll terms and phrases in the '562 Patent claims have their ordinary and customary meanings, which are readily apparent, and no further construction is required." Prelim. Resp. 16.

Despite the parties stating they offer no express constructions, they nonetheless present us with three different claim constructions for the term

"integral knit tongue" in discussing the disputed issues of whether the prior art references disclose that tongue. See Pet. 28-30, 73-74; Prelim. Resp. 39-40. The parties identify positions each argued or purportedly implicitly argued in the District Court, but offer little or no claim construction analysis in this inter partes review. See Pet. 28-30, 73-74; Prelim. Resp. 39-40; cf. Phillips, 415 F.3d at 1314 ("Because the meaning of a claim term as understood by persons of skill in the art is often not immediately apparent, and because patentees frequently use terms idiosyncratically, the [tribunal] looks to 'those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean.' Those sources include 'the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.'" (citations omitted)). We do not agree with the parties' proposed constructions, which we discuss further below, and we need not simply adopt one party's proposed construction. Cf. Exxon Chem. Pats., Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555 (Fed. Cir. 1995) ("The duty of the trial judge is to determine the meaning of the claims at issue, and to instruct the jury accordingly. In the exercise of that duty, the trial judge has an

10

independent obligation to determine the meaning of the claims, notwithstanding the views asserted by the adversary parties." (citation omitted)).

A proper claim construction analysis begins with the words of the claims. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) ("First, we look to the words of the claims themselves, both asserted and nonasserted, to define the scope of the patented invention."). All of the challenged independent claims recite an "integral knit tongue."

See Ex. 1001, 24:46 (independent claim 1), 25:48 (independent claim 8), 26:59 (independent claim 16). Independent claim 1, for example, recites:

[1c] knitting an integral knit tongue that is of unitary knit construction with the upper with the knitting machine, the integral knit tongue extending through a throat area of the knitted component; and

[1d] wherein the integral knit tongue is joined by knitting with the knitting machine to: (1) a forward portion of the throat area, and (2) at least along a portion of both of a lateral side and a medial side of the throat area of the knitted component extending through a portion of a length of the throat area in a longitudinal direction from the forward portion to an ankle opening of the upper.

Id. at 24:42-52 (emphasis added).

Claim 1 further recites, in a separate limitation, an "upper." Id. at 24:37-38 (limitation 1a: "knitting a portion of the knitted component defining an upper with a knitting machine"). "Where a claim lists elements separately, 'the clear implication of the claim language' is that those elements are 'distinct component[s]' of the patented invention." Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed.

11

Cir. 2004)) (alteration in original). Thus, the claim language suggests that the "integral knit tongue" is a component distinct, at least to some degree, from the "upper." See also Ex. 1001, 2:23-25 (the Specification stating that

"[a] knitted component including the upper and an integral knit tongue is incorporated into the article of footwear."). Limitation 1d reinforces this understanding by requiring the tongue to be joined to a portion of the throat area of the upper. See id. at 6:31-35 (the Specification indicating that the

"throat area" is an area of the upper); cf. Ex. 2014, 18-19 (defining

"Throat": "The main opening of a shoe extending from the vamp [(the front part of a shoe upper that covers the toes and part of the foot)] to the ankle."). In addition to suggesting that the tongue is a component distinct from the upper, the claim language indicates that the integral knit tongue extends through a throat area. See Ex. 1001, 24:43-45 (limitation 1c: "the integral knit tongue extending through a throat area of the knitted component"). With that context, we turn to the parties' arguments. Petitioner begins by discussing what it characterizes as Patent Owner's purported implied construction in the District Court of "integral knit tongue." Pet. 28-30. Petitioner asserts that "[Patent Owner] Nike's infringement contentions, portions of which are reproduced [in the Petition], indicate that Nike's apparent understanding of 'integral knit tongue' is that it generally refers to the material within the throat area." Id. at 28-29 (citing Ex. 1002 ¶ 99); see also id. at 28 (Petitioner stating that it, in the District Court, "proposed that the term 'throat area' in the context of the '562 patent means 'an area of the upper that extends from an ankle opening over the instep to an area adjacent to the forefoot region.'" (citing, inter alia, Ex. 1002 ¶ 98)). Petitioner presumably does not agree with this purported

12

construction and, not unsurprisingly, does not discuss in the Petition how any intrinsic or extrinsic evidence would support such a construction. See id. at 28-30 (merely reproducing annotated photographs of allegedly infringing footwear).⁶

On the present record, we do not agree with this construction offered by Petitioner—that "integral knit tongue" "generally refers to the material within the throat area." Pet. 28-29. Such a construction, particularly as applied to the prior art, seemingly gives no weight to, and possibly reads-out, the recited structure of a tongue extending through the throat area of the separately recited "upper." See, e.g., Pet. 33. More specifically, Petitioner impliedly asserts that the tongue limitations of claim 1 are satisfied if the prior art discloses an upper having upper material over the area of the instep of the foot, notwithstanding that the claim recites both an upper and a tongue. See id.

Additionally, Petitioner, in asking us to evaluate patentability under this construction—for which neither party contends is correct and which may never be adopted by any tribunal—requests, in effect, that we set aside the challenged patent and instead compare the accused footwear against that of the prior art references. However, that is not a proper analysis. "Both anticipation under § 102 and obviousness under § 103 are two-step

13

inquiries." Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003). "The first step in both analyses is a proper construction of the claims . . . [and t]he second step in the analyses requires a comparison of the properly construed claim to the prior art." Id. Although an explicit claim construction analysis by a petitioner is not required in every case, a petition nonetheless must identify how the challenged claims are to be construed and how, as so construed, they are unpatentable under the statutory grounds asserted. 37 C.F.R. § 42.104(b)(3)-(4). And, being part of a prima facia case, such an analysis is part of Petitioner's burden to demonstrate a reasonable likelihood of prevailing on its patentability challenges. Petitioner has failed to satisfy the threshold burden for every ground based on this construction.

Petitioner, in discussing the alternative construction for which it does advocate, states:

In the district court, [Petitioner] Skechers proposed that the term "integral knit tongue" corresponds to the throat area between overhanging portions of the upper or adjacent to one or more raised elements. EX1008, 5-12. Skechers further

proposed that that "raised element" means "a flap or

overhanging portion that extends outward away from the

surface of the upper and along the length of the side of the tongue." Id., 5; EX1002, ¶177.

Pet. 73-74. The Petition does not contain a discussion of any intrinsic or extrinsic evidence that supports Petitioner's position. See id.⁷

14

We do not agree with this proposed construction. First, although the Specification describes embodiments having raised elements, the independent claims do not recite overhanging portions or a raised element, and we decline to read into the claims such a limitation. See, e.g., Ex. 1001, 6:36-37 (The Specification stating: "A lace 122 extends through various lace apertures 143 in raised elements 142 of integral knit tongue 140 . . . ."); Phillips, 415 F.3d at 1323 ("[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments."). Second, this construction, somewhat like Petitioner's first alternative construction, purports to define a throat area of the upper rather than a distinct structure of an "integral knit tongue." Petitioner does not explain how the addition of overhanging elements or raised elements to an otherwise tongueless upper would change the character of the upper within the throat area or create a distinct tongue element extending through that throat area. Third, Petitioner's proposed construction, at least as to the raised element aspect, appears to be circular in that it first defines the tongue in terms of raised elements, and then defines the raised elements in terms of the tongue (i.e., a raised element extending along the length of the side of the tongue that purportedly is created by the location of the raised elements). Lastly, by simply stating its position taken in the District Court, Petitioner again fails to provide an adequate claim construction analysis to support a threshold showing of unpatentability.

that in the district court, Skechers proposed that the term 'integral knit tongue' corresponds to . . . .").

15

Patent Owner asserts that Petitioner mischaracterizes Patent Owner's position in the District Court, and that Patent Owner does not contend that

"integral knit tongue" refers generally to knitted material within the throat area. Prelim. Resp. 39 (citing Pet. 29). Rather, Patent Owner states that it articulated to the District Court that "the tongue is 'integrally knitted' with the upper, but still has distinctive features of a conventional tongue." Id. (quoting Ex. 2014 (Nike's supplemental claim construction brief in the District Court), 1); see also id. at 40 (Patent Owner referring to "this proper reading" of the term). According to Patent Owner, "[i]n conventional articles of footwear, the tongue is a separate component stitched into the upper," and that "[t]he '562 Patent provides various non-limiting examples of an 'integral knit tongue.'" Id. at 39. Patent Owner then catalogs certain admittedly-exemplary integral tongue embodiments in the Specification, including those: 1) having a portion that extends into the ankle opening, 2) having a free portion that provides an enlarged ankle opening, and 3) being made from a different yarn than the surrounding upper. Id. at 39-40 (citing Ex. 1001, 11:37-41, 13:13-21, 13:57-66, 17:42-47, Figs. 8,

10). According to Patent Owner, in the first two examples, "the integral knit tongue is identifiable by its upper boundary which extends beyond the adjacent periphery of the ankle opening," and, in the third example, "the integral knit tongue may be visually and structurally distinct from the surrounding upper." Id. Patent Owner, as a fourth example, asserts that "the integral knit tongue may have raised elements that may or may not incorporate lace apertures." Id. at 40 (citing Ex. 1001, 10:63-11:10). We do not find Patent Owner's proposed construction to be sufficient. At least some of Patent Owner's purportedly distinctive features do not

16

affect the character of the throat area such that a tongue distinct from the upper is discernable. For example, Patent Owner asserts that an extension into the ankle opening identifies a tongue, but that speaks only to the area of the ankle opening, and Patent Owner does not explain adequately how a distinctive "integral knit tongue extending through a throat area," as recited in the independent claims, can be identified.⁸

In summary, for purposes of resolving the disputed issues before us, we construe "integral knit tongue" as a component distinct, at least to some degree, from the "upper" and that extends through the throat area. For purposes of addressing the dispositive issues in this case, we need not and do not reach the degree or substance of distinctiveness necessary to render an integral knit tongue a distinct element of the overall "knitted component" of the preamble of the independent claims.

D. The Alleged Anticipation of Claims 1-4 by Dua-592 (Ground 1A) Petitioner alleges that claims 1-4 are anticipated by Dua-592 under what Petitioner characterizes as Patent Owner's "apparent construction of

17

'integral knit tongue.'" Pet. 21; see id. at 24-38 (addressing independent claim 1). Patent Owner argues that Dua-592 does not disclose "an integral knit tongue," as recited in the independent claims. Prelim. Resp. 38-40. For the reasons discussed below, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that Dua-592 discloses the recited "integral knit tongue."

1. Dua-592 (Ex. 1014) Dua-592 discloses "an upper for an article of footwear, the upper incorporating a textile element formed with a knitting machine, for example." Ex. 1014 ¶ 13. "[T]he textile element has edges that are joined together to define at least a portion of a void for receiving a foot." Id.

18

Figure 8 of Dua-592 is reproduced below. Figure 8 "is a plan view of a textile element that forms at least a portion of the upper." Id. ¶ 25.

19

Figure 3 of Dua-592 is reproduced below. Figure 3 "is a top plan view of the upper." Id. ¶ 20. "Upper 30 is at least partially formed from textile element 40, which forms regions 31-35, and may also include laces or other elements associated with a conventional upper for footwear." Id. ¶ 37.

2. Discussion As mentioned, the dispute as to this ground is whether Dua-592 discloses an integrated knit tongue. Petitioner contends that:

At least under Nike's apparent constructions, each of Dua-592's embodiments have an integral knit tongue formed with the upper and extending through a throat area of the knitted component, for example in the form of the area of the upper comprising the third texture 48" of Embodiment #3, outlined in red below.

20

Pet. 30-31 (citing Ex. 1014, Fig. 11; Ex. 1002 ¶ 100). Above is Figure 11 of Dua-592—a plan view of a textile element having different textures—with Petitioner's annotations in the form of a red oval around much of instep region of the assembled upper, and a red text box labeling the oval as

"Integral knit tongue extending through throat area." Ex. 1014 ¶¶ 28, 36, 55. Petitioner, also referring to Figure 11, contends that:

[T]o the extent that the term "integral knit tongue" requires at least one distinguishing feature from certain other parts of the upper (unlike Nike's apparent construction), Dua-592 satisfies such a requirement because it discloses that "the degree of stretch in areas with textures 46"-48" may be different, or the wear resistance of the areas may vary depending upon the stitch utilized."

Pet. 32 (citing Ex. 1014 ¶ 55). According to Petitioner,

21

In that context, Dua-592 expressly discloses an 'integral knit tongue' having at least one distinguishing feature from other parts of the upper by virtue of disclosing that the area of the upper knitted with texture 48" extends through the throat area, and that such area would have different properties from other parts of the shoe upper that do not have texture 48".

Id. at 33 (citing Ex. 1002 ¶ 102).

Petitioner further contends that:

Moreover, Embodiment #1 [of Dua-592] also comprises an integral knit tongue extending through a throat area under Nike's apparent construction, as shown below. Id. at 33 (citing Ex. 1014, Fig. 8; Ex. 1002 ¶ 103). Above is Figure 8 of Dua-592—a plan view of another textile element—with Petitioner's annotations in the form of a red oval and red text box similar to that for annotated Figure 11 above. Ex. 1014 ¶ 25.

22

We do not find Petitioner's contentions regarding the two annotated figures to be persuasive. First, those contentions, and the cited opinions of Dr. Adanur, are based on a claim construction that, as discussed above, we reject and for which neither party advocates. Second, Petitioner does not explain adequately why a person of ordinary skill in the art would discern, even with Petitioner's added red ovals, a tongue distinct from the upper and tongue extending through the throat area.

We also do not find persuasive Petitioner's contentions regarding differing textures. See Pet. 32-33. Even if differing textures could rise to the level of distinguishing an integral knit tongue from the upper, the purported tongue texture 48" is not confined to the area identified by Petitioner as the tongue. See Pet. 31 (annotated Figure 11, reproduced above). For example, texture 48" outside of Petitioner's oval appears to wrap approximately halfway around the ankle opening, which is not argued to be consistent with an ordinary artisan's understanding of a tongue. Or, put another way, there is no indication that the portion of the 48" texture within Petitioner's red oval, which purportedly represents the tongue, is distinguishable from the remaining portion of the 48" texture outside of the red oval. We are not persuaded that Petitioner has demonstrated a reasonable likelihood of proving that a person of ordinary skill in the art would consider the relatively large area depicted as having texture 48" to be an "integral knit tongue."

In light of the above, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge to independent claim 1 and its dependent claims 2-4 as anticipated by Dua-592.

23

E. The Alleged Obviousness of Claims 8-14 and 16-23 over Dua-592 (Ground 1B)

Petitioner alleges that claims 8-14 and 16-23 would have been obvious over Dua-592 under what Petitioner characterizes as Patent Owner's

"apparent construction of 'integral knit tongue.'" Pet. 21; see id. at 41-46 (addressing independent claim 8). Patent Owner reiterates its argument, made for Ground 1A, that Dua-592 lacks an "integral knit tongue," which is recited in independent claims 8 and 16. See Prelim. Resp. 41. Of the claims challenged in this ground, claims 8 and 16 are independent. For the "integral knit tongue" limitations 8c and 16c, Petitioner relies on the same unpersuasive contentions made for limitation 1c (Ground 1A). See Pet. 44-46, 53-54. Petitioner also refers to "those portions of the tongue area knitted with a different texture (e.g., texture 47" . . .)." Id. at 46. In Petitioner's annotated version of Figure 11, the areas having texture 47" are along the sides of the shoe and are all completely outside of Petitioner's annotated oval designating the purported tongue. See id. at 45 (an annotated version of Figure 11 having a red oval similar to that in the annotated figure reproduced above). Thus, we are not persuaded that Petitioner has explained adequately why the areas having texture 47" would be considered a tongue.

Petitioner has not demonstrated a reasonable likelihood of prevailing in its challenge to dependent claim 7, which depends from independent claim 1 (discussed above regarding Ground 1A), and to independent claims 8 and 16 and their respective dependent claims 9-14 and 17-23 as being obvious over Dua-592.

24

F. The Alleged Obviousness of Claims 5-7 and 15 over Dua-592 alone or in combination with McDonald or Horii (Ground 1C)

Petitioner alleges that dependent claims 5-7 and 15 would have been obvious "over Dua-592 alone, or in combination with McDonald or Horii"

under what Petitioner characterizes as Patent Owner's "apparent construction of 'integral knit tongue.'" Pet. 21 (ground listing); but see id. at 57 (section heading using "and/or" rather than "or" between McDonald and Horii); see id. at 57-73 (discussion of the ground). Dependent claims 5 and 15 recite "the integral knit tongue comprises a partially integral portion and a free portion." Ex. 1001, 24:63-65, 26:31-

33. Claims 6 and 7 depend from claim 5. Petitioner contends, via annotated versions of Figures 8 and 11 of Dua-592, that the reference discloses a tongue with a partially integral portion (the area in the red oval previously mapped to the integral knit tongue) and a free portion (an added green circle around the small triangular shape in the ankle opening). See Pet. 58-61. Petitioner additionally contends that "[a] POSITA would have been motivated to learn from McDonald and/or Horii and to incorporate a more pronounced free portion, i.e., a tab, into Dua-592's integral tongue." Id. at 64. For the reasons discussed above, we reject the proposed construction used in the ground and determine that Petitioner has not established adequately for institution that Dua-956 has an integral knit tongue. Accordingly, it has not been shown adequately that the asserted prior art teaches or renders obvious "the integral knit tongue compris[ing] a partially integral portion and a free portion," as recited in claims 5 and 15.

25

Petitioner has not demonstrated a reasonable likelihood of prevailing in its challenge to claim 5-7 and 15 as being obvious over Dua-592 alone or in combination with McDonald or Horii.

G. The Alleged Obviousness of Claims 1-23 "for the reasons articulated in Grounds 1A-1C in further view of Calderone" (Ground 1D) Petitioner alleges that claims 1-23 would have been obvious "for the reasons articulated in Grounds 1A-1C in further view of Calderone under [Petitioner] Skechers' construction of 'integral knit tongue.'" Pet. 21; see id. at 73-78 (discussing the ground).

1. Calderone (Ex. 1018 Calderone discloses "[a] construction of an oxford type, lace up athleisure shoe [that] enables the shoe to be slipped on the wearers foot and held securely on the foot without the need for lacing on the shoe." Ex. 1018, code (57) (Abstract). According to Calderone, "[t]his provides the shoe with the appearance of a lace up shoe that is worn without lacing." Id. Reproduced below is Petitioner's annotated version of Figure 1 of Calderone.

26

Pet. 74. Depicted above is a perspective view of a shoe with Petitioner's annotations in the form of orange shading of upper left side edge 48 and upper right side edge 52 upon which eyelet lacing openings 62, 68 are arranged. See Ex. 1018, 2:6, 3:16-18. At least a portion of band 92 is constructed of an elastic material, and "[t]he elastic feature of the band 92 enables the forefoot opening 54 of the shoe 12 to be enlarged when inserting the 65 foot into the shoe." Id. at 3:59-66. "The elastic band 92 extending across the forefoot area of the shoe wearers foot just forward of the ankle holds the shoe 12 securely to the foot without the need for lacing." Id. at 4:6-9.

2. Discussion In this ground, Petitioner applies its proposed construction of "integral knit tongue" as corresponding to the throat area between overhanging portions of the upper or adjacent to one or more raised elements. Pet. 73. Petitioner proposes to modify the shoe of Dua-592 to have "Calderon's raised flaps with lace openings." Id. at 75-76. Although not expressly stated, we understand Petitioner to contend that, once raised flaps are added, a throat area is defined and, by extension, an integral knit tongue appears. See id. at 73-78 (Petitioner setting out its proposed claim construction and then discussing only the purported obviousness of adding lace flaps). For the reasons discussed above, we reject the proposed construction used in this ground. Even if modified as Petitioner proposes, Petitioner has not demonstrated adequately that the character of the throat area changes. In other words, Petitioner has not shown adequately that a distinct tongue is created in the throat area simply by the addition of lace flaps to define that throat area.

27

Petitioner has not demonstrated a reasonable likelihood of prevailing in its challenge to claims 1-23 as being obvious "for the reasons articulated in Grounds 1A-1C in further view of Calderone under Skechers' construction of 'integral knit tongue.'" Pet. 21 (identification of the ground).

H. The Alleged Anticipation of Claims 1-4 by Okamoto (Ground 2A) Petitioner alleges that claims 1-4 are anticipated by Okamoto under what Petitioner characterizes as Patent Owner's "apparent construction of 'integral knit tongue.'" Pet. 21; see id. at 80-88 (addressing claim 1). Patent Owner argues, inter alia, that Okamoto does not disclose "an integral knit tongue," as recited in the independent claims. Prelim. Resp. 46. For the reasons discussed below, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that Okamoto discloses the recited "integral knit tongue."

1. Okamoto (Ex. 1015) Okamoto "relates to knitting of a three-dimensional article having a bottom face and side face, and particularly to knitting of the bottom face of the three-dimensional article." Ex. 1015 ¶ 1. Okamoto's Figure 8 is reproduced below.

28

Figure 8 is a perspective view schematically showing seamlessly knitted footwear 80. Id. ¶¶ 15, 31.

Reference numeral 81 represents a stitch start line. For example, a bottom face 82 is knitted on the toe side, and then side faces 83 to 86 are knitted into cylinders. A surface 87 and other three surfaces are knitted individually in the middle of the cylinders. A surface 85 is knitted to have more stitch courses than surfaces 84, 86, to knit a heel 88, and then the surface 85 is joined with the surfaces 84, 86, whereby the footwear 80 is obtained.

Id. ¶ 31. Okamoto also explains that, "[i]n Fig. 8, the toe side is provided with the stitch start line 81 and the bottom face 82, but the surface 85, for example, may be knitted as the bottom face." Id.

2. Discussion For "integral knit tongue" limitation 1A, Petitioner contends:

29

Okamoto's footwear includes a knitted upper 80 with an integrally knitted tongue in the form of surfaces 83 and 87 together (i.e., 83+87). At least surface 83 forms an integral knit tongue that "extend[s] through a throat area of the knitted component" (the upper), as shown in orange below. Pet. 82-84 (citing Ex. 1015, Fig. 8; Ex. 1002 ¶¶ 188-189) (alteration in original). Above is Okamoto's Figure 8 (showing seamlessly knitted footwear 80 (Ex. 1015 ¶ 31)), with Petitioner's annotations in the form of orange shading on side face 83 and surface 87, and Petitioner's labels of

"forefoot region," "integral knit tongue," and "ankle opening," with the latter pointing to a red circle in the area to the right of surface 87. We do not find Petitioner's contentions persuasive. First, those contentions, and the cited opinions of Dr. Adanur, are based on a claim construction that, as discussed above, we reject and for which neither party advocates. See Pet. 82 (Petitioner beginning its discussion of the limitation

30

by setting forth what it characterizes as "Nike's apparent constructions of the limitation of an integral knit tongue extending through a throat area."); Ex. 1002 ¶ 188 (Dr. Adanur opining that "Okamoto discloses the features recited in Element 1[c] under Nike's constructions."). Second, Petitioner does not explain adequately why a person of ordinary skill in the art would discern, even with Petitioner's added orange shading, a tongue distinct from the upper with the tongue extending through the throat area. We are not persuaded that Petitioner demonstrates a reasonable likelihood of success in prevailing in its implied assertion that a person of ordinary skill in the art would understand the entire top surface⁹of Okamoto's footwear to be a tongue.

Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge to independent claim 1 and its dependent claims 2-4 as anticipated by Okamoto.

I. The Alleged Obviousness of Claims 5-23 over Okamoto and Dua-592 (Ground 2B)

Petitioner alleges that claims 5-23 would have been obvious over Okamoto and Dua-592 under what Petitioner characterizes as Patent Owner's "apparent construction of 'integral knit tongue.'" Pet. 21; see id. at 91-114 (discussing the ground). Patent Owner argues that Okamoto does not disclose an integral knit tongue and that "Petitioner does not look to

31

Dua-592 to fill the 'integral knit tongue' gap in Okamoto." Prelim. Resp. 46-47.

Of the claims challenged in this ground, claims 8 and 16 are independent. For the "integral knit tongue" limitation of independent claims 8 and 16, Petitioner also appears to rely on its unpersuasive contentions made for Ground 2A except with the modification of utilizing, for the throat area, a texture 48" of the Figure 11 embodiment of Dua-592 as asserted for Grounds 1A and 1B. See Pet. 94 ("[A] POSITA would have been motivated to utilize a more elastic yarn (e.g., corresponding to texture 48") for Okamoto's integral knit tongue (surface 83 or 83+87), for example, in order to provide additional expansion through the throat area for inserting a foot, which is a basic feature of shoe design."); id. at 106 ("When Okamoto's 'integral knit tongue' (e.g., surface 83 or 83+87) is constructed using the texture/yarn pattern of Dua-592, as would be obvious to do . . ., Element 8[c] is satisfied for the reasons described for Ground 1B."); id. at 111-112 ("When Okamoto's upper 80 is constructed using the texture/yarn pattern of Dua-592 as proposed . . ., the combination of Okamoto and Dua-592 renders Element 16[c] obvious for the reasons that Dua-592 renders Element 16[c] obvious.")

We do not agree with Petitioner's contentions regarding the purported integral knit tongue of Okamoto for the reasons discussed for Ground 2A (supra Section II.H.2), or regarding the purported integral knit tongue of Dua-592 for the reasons discussed above for Grounds 1A and 1B (supra Sections II.D.2, II.E). Additionally, Petitioner does not explain adequately how adding a texture to Okamoto's footwear results in a distinct tongue.

32

Petitioner has not demonstrated a reasonable likelihood of prevailing in its challenge to dependent claims 5-7, which depend from independent claim 1 (discussed above regarding Ground 2A), and to independent claims 8 and 16 and their respective dependent claims 9-15 and 17-23 as being obvious over Okamoto and Dua-592.

J. The Alleged Obviousness of Claims 1-23 "for the reasons articulated in Grounds 2A-2B in further view of Calderone" (Ground 2C) Petitioner alleges that claims 1-23 would have been obvious "for the reasons articulated in Grounds 2A-2B in further view of Calderone under [Petitioner] Skechers' construction of 'integral knit tongue.'" Pet. 21; see id. at 114-117 (discussing the ground).

In this ground, Petitioner applies its proposed construction of "integral knit tongue" "which requires raised elements in the form of a flap or overhanging portion that extends outward away from the surface of the upper and along the length of the side of the tongue." Pet. 114. Petitioner contends that, "for the same reason that a POSITA would have modified Dua-592 to incorporate Calderone's raised elements . . ., it would have similarly been obvious to modify the Okamoto and Dua-592 combination to incorporate Calderone's raised elements." Id. at 115 (citing Ex. 1002 ¶ 258). Petitioner's proposed combination is depicted in an annotated version of Okamoto's Figure 8, which is reproduced below.

33

Id. at 116. Above is Okamoto's Figure 8 "annotated to show [the] modified Okamoto shoe with Calderone's raised elements [in orange] and lace openings." Id.

For the reasons discussed above, we reject the proposed construction used in this ground. Even if modified as Petitioner proposes, Petitioner has not demonstrated adequately that the character of the throat area changes. In other words, Petitioner has not shown adequately that a distinct tongue is created in the throat area simply by the addition of lace flaps to define that throat area.

Petitioner has not demonstrated a reasonable likelihood of prevailing in its challenge to claims 1-23 as being obvious "for the reasons articulated in Grounds 2A-2B in further view of Calderone under Skechers' construction of 'integral knit tongue.'" Pet. 22 (identification of the ground).

III. CONCLUSION

Petitioner has not demonstrated that there is a reasonable likelihood of establishing the unpatentability of any of claims 1-23 of the '562 patent.

34