Shoe Wars - Taking the Battle to the Patent Trial and Appeal Board
Patent infringement lawsuits related to athletic shoes are not new. Athletic shoe companies regularly sue each other for patent infringement and challenge the validity of each other’s patents, typically in the federal courts. Now, athletic shoe companies including Nike, Adidas, and Skechers have taken the patent invalidity battle to the Patent Trial and Appeal Board, which is part of the U.S. Patent and Trademark Office (USPTO), challenging each other’s patents in proceedings known as inter partes review.
Patent inter partes review provides a method to challenge the validity of an issued patent at the USPTO. A patent may be challenged on the grounds of anticipation and/or obviousness based on patents or printed publications. These proceedings are intended to be similar to validity challenges that ordinarily take place in the federal courts, but these proceedings generally reach a conclusion much faster than lawsuits do in the federal courts. Once inter partes review is instituted, the proceedings are to be concluded within 1 year, and no more than 18 months, if any extensions are granted.
Filing petitions seeking inter partes review is not unusual particularly when parties are already battling each other in the federal courts, but it has not been that common in the shoe wars until recently. And now it almost appears commonplace. In fact, since the beginning of 2016, Skechers already has filed 8 different requests for inter partes review, while Adidas has filed 3 requests. Nike has not filed any requests itself so far in 2016, but it has had 11 of its patents challenged through requests for 11 different petitions for inter partes review filed by Adidas and Skechers.
Interestingly, Adidas has challenged Nike’s utility patents, while Skechers has challenged Nike’s design patents. And their reasons for challenging Nike’s patents are different.
On the one hand, Adidas appears to have filed its recent petitions seeking inter partes review to address other patents in the same patent family as the parent patent (U.S. Patent No. 7,347,011) effectively seeking to wipe out the entire patent family. The parent patent previously had the majority of its claims cancelled through inter partes review (IPR2013-00067), also filed by Adidas, and after the Federal Circuit on appeal decided that the Patent Trial and Appeal Board had to consider one claim of the parent patent further along with secondary considerations of non-obviousness, Adidas wasted no time filing these new requests for inter partes review.
On the other hand, Nike has sued Skechers for patent infringement based on its design patents in Nike, Inc. v. Skechers U.S.A., Inc., Case No. 3:16-cv-00007-PK, which was filed on January 4, 2016, and is currently pending in the United States District Court for the District of Oregon. Skechers has now turned around and challenged the design patents at issue in the Oregon lawsuit through petitions for inter partes review. All of these challenges are based on obviousness, combining one or more Nike European design registrations with disclosures from several fashion magazines.
Since all of these petitions have been filed recently, the Patent Trial and Appeal Board has not yet had to decide whether to institute inter partes review as to any of the Nike utility or design patents. Stay tuned for more updates on the shoe wars as they rage on at the Patent Trial and Appeal Board.
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