Taking a Second Look: Patent Trial and Appeal Board to Reconsider Denial of Nike’s Motion to Amend Footwear Patent

In a significant decision by the Federal Circuit, the Patent Trial and Appeal Board was ordered on Thursday, February 11, 2016, to reconsider its decision denying apparel giant Nike’s motion to amend a footwear patent. Thursday’s decision represents the first time that the Federal Circuit has not affirmed such a denial by the PTAB.

The patent at issue is one for a technology used in Nike’s “Flyknit” running shoe, specifically pertaining to the manner in which the upper portion of the shoe is manufactured. The upper portion of Nike’s Flyknits are knit-to-form, whereas the upper portions of most shoes are cut from larger webs of material. Nike originally sued apparel giant Adidas in 2012, claiming Adidas’ “Primeknit” shoe technology infringed on Nike’s patent. In response, Adidas argued that Nike’s patent for “footwear having a textile upper” was invalid on the grounds that Nike was attempting to patent technology that already existed.

For a patent to be valid, certain requirements must be met. Patent claims must “embody patent eligible subject matter, demonstrate a useful invention, cover a novel invention, and [be] non-obvious[1] in light of the prior art.” Generally, the term “prior art” refers to any and all evidence that the technology or invention at issue was already known.

The PTAB initially denied Nike’s motion to amend on the grounds that the technology was obvious in light of the combination of textile patents “Nishida” and “Schuessler” and therefore improper subject matter for a patent. The Federal Circuit ordered the PTAB to revisit the issue however, on the grounds that the PTAB apparently failed to consider Nike’s secondary contention that there was a “long-felt need in the industry to cut down on material waste with a special form of knitting.”

[1] See, Graham v. John Deere Co. of Kan. City, 383 U.S. 1 (1966); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).

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