Nike v Adidas patent dispute revived
Nike and Adidas will head back to the Patent Trial and Appeal Board (PTAB) after the US Court of Appeals for the Federal Circuit ruled that Nike’s motion to amend a challenged patent was not correctly examined.
The dispute centres on a Nike patent that covers the textile upper in a shoe. An upper is the term used in the fashion industry to cover the shape of a shoe sole.
Adidas challenged the patent, US number 7,347,011 and called “Article of footwear having a textile upper”, in an inter partes review (IPR) petition filed in 2012.
It challenged claims 1-46. After the IPR was filed, Nike filed a motion to substitute claims 1-46 with four new claims.
The PTAB rejected Nike’s substituted claims on the grounds that it had failed to establish that they were patentable, prompting Nike to appeal against the decision at the federal circuit.
In a decision handed down yesterday, February 11, a three-judge panel said the PTAB had not correctly considered all of Nike’s arguments.
In Nike’s appeal it said the combination of prior art it cited in the dispute was not obvious and that the PTAB also failed to review its “secondary consideration[s]”.
The federal circuit ruled against Nike on the prior art claims but agreed that the PTAB failed to take account of Nike’s secondary consideration argument that the patent covers a need to reduce waste in the industry.
Secondary considerations consider the commercial success of patented technology and if a party can demonstrate that the patent is not obvious because it answers “long-felt, but unsolved needs”.
Writing the opinion, Judge Raymond Chen said: “We conclude that the PTAB should have explicitly acknowledged and evaluated Nike’s secondary consideration.”
But where the federal circuit agreed with PTAB was on the question of where the burden of proof lay in proving the patentability of substituted claims.
Despite Nike’s challenge, Chen said that “placing the burden on the patent owner ensures that proposed substitute claims are critically analysed before they are entered as claims that are part of the issued patent.”
The court affirmed the PTAB’s decision on this count.
The case has been sent back to the PTAB.
