All Stitched Up: A Decade Later, Nike Loses to Adidas on Obviousness
When is a technique obvious enough to invalidate a patent? Adidas and Nike finally got the answer after over ten years of litigation. In 2012, Adidas filed for inter partes review by the United States Patent and Trademark Office challenging the validity of Nike’s Patent No. 7,347,011 (hereinafter the ‘011 Patent) directed to “footwear with a knitted textile upper and sole structure secured to the upper.”[1] Over the next eight years, the patent’s claims were invalidated and amended through a series of remands and appeals.[2] Finally, in 2022, the US Court of Appeals for the Federal Circuit dealt the final blow by affirming the Patent Trial and Appeal Board’s (Board) invalidation of the ‘011 patent.[3]
What is obvious? Is it common sense? Is it common practice? According to the Court, the ultimate determination of obviousness under 35 U.S.C. § 103 involves a factual analysis of: “(1) the level of ordinary skill in the pertinent art, (2) the scope and content of the prior art, (3) the differences between the prior art and the claims at issue, and (4) secondary considerations of non-obviousness, if any(such as commercial success, long-felt but unsolved needs, failure of others, etc.).”[4] The only ‘011 patent claim that was still at issue in 2022 was a substitute claim directed to a method to form apertures, or holes, in knitted material.[5] The use of empty needles to produce apertures was determined to be obvious over prior art, which included textbooks for skilled artisans.[6]
Nike unsuccessfully argued that a knitting textbook by David J. Spencer did not teach the claimed method of skipping stitches.[7] However, the Court disagreed and found that a “reasonable mind” could interpret the Spencer textbook description of “empty needles” and “loop displacement” as omitting stitches.[8]
Next, Nike tried to refute the Board’s determination that a skilled artisan might be motivated by minimizing waste and thus, want to utilize the Spencer textbook teachings with other prior art.[9] Adidas successfully argued a skilled artisan would be motivated to reduce waste and would have reason to find a method to achieve that goal, here, omitting stitches to create apertures rather than punch out openings.[10] In the end, the court sided with Adidas and the Board, convinced by their arguments that a skilled artisan would want to reduce waste and seek out methods like that in the Spencer textbook, which explained how to create apertures by omitting stitches to avoid punching out material and cut down on waste.[11]
Nike further contested the Board’s obviousness analysis, arguing that the Board’s determinations were not supported by substantial evidence and common sense could not be reason to establish motivations such as reducing waste and increasing efficiency.[12] Indeed, common sense cannot be the sole factor in a determination of obviousness.[13] However, the Board may consider common sense to support a motivation to combine rationale because common sense is often invoked when suggesting and promoting “improvements” that combine references to make something “stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient.”[14] Considering the prior art, the Board determined that a skilled artisan “would have understood that the introduction of empty needles, as taught in Spencer, ‘causes the omission of stitches, and that the creation of apertures in this manner was a well-known technique at the time of invention” of Nike’s ‘011 patent and the desire for efficiency and reducing waste was valid.[15] In the end, the Court disagreed with all of Nike’s contentions and affirmed the Board’s determinations, finally ending the Nike and Adidas stitch omittance saga.[16]
Footnotes
