Adidas AG v. Patent of Lyden

• Decision Date: 01 February 2016
• Docket Number: Appeal 2015-004776
• Parties: ADIDAS AG Respondent, Cross-Appellant, Requester v. Patent of ROBERT MICHAEL LYDEN Appellant, Patent Owner Inter Partes Reexamination Control 95/002, 094 Patent No. U.S. 8, 209, 883 B2 Technology Center 3900
• Court: Patent Trial and Appeal Board

ADIDAS AG Respondent, Cross-Appellant, Requester
v.
Patent of ROBERT MICHAEL LYDEN Appellant, Patent Owner

Inter Partes Reexamination Control 95/002, 094 Patent No. U.S. 8, 209, 883 B2^[1] Technology Center 3900

Appeal No. 2015-004776

United States Patent and Trademark Office, Patent Trial and Appeal Board

February 1, 2016

Filing Date 08/21/2012

Before STEVEN D.A. McCARTHY, DANIEL S. SONG and BRETT C. MARTIN, Administrative Patent Judges.

DECISION ON APPEAL

McCARTHY, Administrative Patent Judge.

STATEMENT OF THE CASE

The Patent Owner, acting pro se, appeals from the Examiner's decision rejecting claims 1-42 of the '883 patent. ("Patent Owner's Notice of Appeal, " dated May 1, 2014). We have jurisdiction of the appeal under 35 U.S.C. § 134(b) andpre-AIA 35 U.S.C. § 315(a). The Requester cross-appeals from the Examiner's decision not to adopt rejections proposed in the "Request for Inter Partes Reexamination of U.S. Patent No. 8, 209, 883 B2 under 35 U.S.C. §311 and37C.F.R. §§ 1.913, 1.915, " dated August 21, 2012 ("Request"). ("Third Part Requester's Notice of Cross Appeal, " dated May 15, 2014). We have jurisdiction of the cross-appeal under pre-AIA 35 U.S.C. § 134(c).

The '883 patent teaches customized articles of footwear and methods for making such footwear. ('883 patent, col. 1, ll. 34-36). Examples of such articles of footwear have uppers fabricated from knit material elements, including elements fabricated using three-dimensional or circular knitting. Examples depicted in Figures 570-75 of the '883 patent include dorsal, collar, vamp, quarter and tip sections fabricated from knits having different elongation characteristics to perform various functions to enhance the comfort and protection of the wearer's foot while improving the wear characteristics of the footwear. (See generally '883 patent, col. 199, 1. 64 -col. 202, 1. 14).

A correct copy of claims 1-42 as entered by the Examiner in this proceeding may be found in the "Claims Appendix" at pages 16-22 of the "Third Party Requester's Respondent Brief on Appeal Under 37 CFR § 41.68, " dated July 29, 2015 ("Respondent Brief or "Resp. Br. Req'r"); and in an "Amendment and Response to First Office Action" filed in this proceeding by the Patent Owner, dated November 13, 2012 ("November 2012 Amendment"). Independent claims 1, 41 and 42 are reproduced (albeit in modified format) on pages 9-10, 15 and 18-19, infra, respectively.

DISPOSITION

We AFFIRM the Examiner's decision to reject claims 21 and 41 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Nishida (US 5, 345, 638, issue Sept. 13, 1994) and McDonald (US 2, 314, 098, issued Mar. 16, 1943) ("Right of Appeal Notice, " mailed April 1, 2014 ("RAN")^[2], at 6, citing Request 116). We do not reach the rejection of claim 41 under § 102(b) as being anticipated by Nishida (RAN 3-4, citing Request 62-92).

We find that claims 36 and 42 are entitled only to the priority of Appl. 12/803, 891, filed July 8, 2010. As such, Dua (US 6, 931, 762 B1, issued August 23, 2005 from Appl. 10/323, 608, filed Dec. 18, 2002) is prior art to claims 36 and 42 under pre-AIA 35 U.S.C. § 102(b). We AFFIRM the Examiner's decision rejecting claim 42 under § 103(a) as being unpatentable over Dua (RAN 7, citing Request 308-10); and the rejection of claim 36 under § 103(a) as being unpatentable over Dua and Glidden (US 2, 147, 197, issued Feb. 14, 1939) (RAN 7; see also Request 310-17). We do not reach the rejection of claim 42 under § 102(b) as being anticipated by Nishida (RAN 3-4, citing Request 62-92).

We REVERSE the Examiner's decision to reject claims 1-7, 9, 11, 14, 15, 17, 19-24, 26-29, 31, 34, 35 and 37-40 under § 102(b) as being anticipated by Nishida (RAN 3-4, citing Request 62-92); to reject claims 8 and 25 under § 103(a) as being unpatentable over Nishida and Cass (US 6, 029, 376, issued Feb. 29, 2000) (RAN 4-5, citing Request 95-103); and to reject claim 37 under pre-AIA 35 U.S.C. §103(a) as being unpatentable over Nishida and Shiomura (US 4, 785, 558, issued Nov. 22, 1988) (RAN 6, citing Request 127).

Pursuant to our authority under 37 C.F.R. § 41.77(b), we enter NEW GROUNDS OF REJECTION against claims 1-7, 9, 11, 14, 19, 20, 22-24, 26-29, 31, 34, 35 and 38-40 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Nishida; against claims 8 and 25 under § 103(a) as being unpatentable over Nishida, Cass and McDonald; against claims 15 and 37 under § 103(a) as being unpatentable over Nishida and McDonald; and against claim 16 under § 103(a) as being unpatentable over Nishida, McDonald and Glidden.

We AFFIRM the Examiner's decision to reject claim 17 under § 103(a) as being unpatentable over Nishida (RAN 4); claims 12, 13 and 18 under § 103(a) as being unpatentable over Nishida and Cass (RAN 4-5); and claims 10, 30, 32 and 33 under § 103(a) as being unpatentable over Nishida and Glidden (RAN 5, citing Request 110). Because our decision to affirm these rejections rests on reasoning that differs from the reasoning adopted or articulated by the Examiner, we designate our affirmance as NEW GROUNDS OF REJECTION of these claims.

We find that claims 1-35 and 37-41 are entitled to the priority of Appl. 10/279, 626, filed October 24, 2002. Based on this finding, we conclude that the Examiner and the Requester have not shown that Dua (US 6, 931, 762 B1, issued August 23, 2005 from Appl. 10/323, 608, filed Dec. 18, 2002) is prior art to any of claims 1-41 under any paragraph of pre-AIA 35 U.S.C. § 102. For this reason, we specifically REVERSE the rejection of claims 1-8, 10, 14, 15, 17, 21-33 and 39-41 under § 103(a) as being unpatentable over Dua (RAN 7, citing Request 282-310); the rejection of claims 9, 11, 16, 34 and 35 under § 103(a) as being unpatentable over Dua and Glidden (RAN 7; see also Request 310-17); the rejection of claims 12, 13 and 18 under § 103(a) as being unpatentable over Dua and Cass (RAN 8; see also Request 317-20); the rejection of claims 19, 20 and 38 under § 103(a) as being unpatentable over Dua and Nishida (RAN 9; see also Request 320-23); and the rejection of claim 37 under § 103(a) as being unpatentable over Dua and Shiomura (RAN 9; see also Request 324-26).

The affirmed rejections and the new grounds of rejection entered in this appeal are dispositive of the appeal. Therefore, we do not reach any of the proposed grounds of rejection advanced in the cross-appeal.

We deny the Patent Owner's "Request for Constructive Steps and Assistance, " appearing at page 21 of "Patent Owner's Rebuttal Brief, " dated September 22, 2014 ("Rebuttal Brief or "Reb. Br. PO"). Our rejection of claims 1-7, 9-14, 17-24, 26-35, 37-40 and 42 under new grounds of rejection, and our entry of new grounds of rejection against claims 8, 15, 16, 25 and 36, may provide the Patent Owner a limited opportunity to amend the claims or to present additional evidence. See 37 C.F.R. § 41.77(b)(1). We encourage the Patent Owner to retain legal counsel to frame any such amendments, evidence or additional arguments so as to preserve those rights, if any, to which the Patent Owner may be entitled.

THE RECORD ON APPEAL

The Patent Owner included a proposed amendment with a response to the "Action Closing Prosecution, " mailed July 10, 2013 ("ACP"). The Examiner denied entry of this amendment on page 3 of the RAN. See 37 C.F.R. § 1.951(a) (citing 37 C.F.R. § 1.116(b)). The Patent Owner also included a proposed amendment with attached evidentiary exhibits in a response to the RAN filed concurrently with the "Patent Owner's Notice of Appeal." The Patent Owner did not offer a persuasive explanation why the amendment or the exhibits could not have been presented earlier. The proposed amendment and exhibits have not been entered. See 37 C.F.R. § 1.953(c); see also 37 C.F.R. § 41.67(c)(2) (citing 37 C.F.R. § 1.116(b)).

The Examiner's findings and conclusions are stated in the RAN and the ACP. In the appeal, the Patent Owner relies on an "Appeal Brief, " dated June 30, 2014 ("Patent Owner's Appeal Brief or "App. Br. PO"), and on pages 11-20 of the Rebuttal Brief.^[3] The Requester relies on the Respondent Brief. The Respondent Brief is accompanied by sixteen exhibits, including a "Declaration of Daniel Richard under 37 C.F.R. § 1.132, " dated December 12, 2012 ("Richard Decl."); and a "Declaration of Dr. Joseph Hamill under 37 C.F.R. § 1.132, " dated December 10, 2012 ("Hamill Decl").

Only issues and findings of fact contested by the Patent Owner in the body of the Patent Owner's Appeal Brief or the body of the Rebuttal Brief have been considered. See 37 C.F.R. § 41.67(c)(l)(vii); In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). The Patent Owner has not shown good cause to consider arguments appearing only in exhibits to the Rebuttal Brief. See 37 C.F.R. § 41.67(c)(l)(vii). Exhibits submitted by the Patent Owner for the first time concurrently with the "Patent Owner's Notice of Appeal" and subsequently attached to the Rebuttal Brief will not be considered in this appeal. See 37 C.F.R. § 41.67(c)(2) (citing 37 C.F.R. § 1.116(b)).

THE EFFECTIVE FILING DATES OF CLAIMS 1, 41 AND 42 AND THE STATUS OF DUA AS PRIOR ART

Dua was granted on August 23, 2005, based on Appl. 10/323, 608, filed December 18, 2002. (Dua, cover page). The '883 patent issued from Appl. 12/803, 891, filed July 8, 2011. Were the claims of the '883 patent entitled to a priority no earlier than the July 8, 2011, filing date of Appl. 12/803, 891, Dua might be prior art under either pre-AIA 35 U.S.C. § 102(b), based on the date one year after to Dua's issue date of August 23, 2005; or pre-AIA 35 U.S.C. § 102(e), based on the December 18, 2002 filing date of Appl. 10/323, 608. (See Resp. Br. Req'r 13-14; Request 44). Because claims 1-35 and 37-41 are entitled to the priority of Appl. 11/519, 166, filed September 11, 2006, and Appl. 10/279, 626, filed October 24, 2002, Dua is not prior art under either §...