Nike, Inc. v. Adidas AG
| Decision Date | 26 September 2012 |
| Docket Number | APPEAL 2012-009052 |
| Parties | NIKE, INC., Patent Owner, Appellant, and Cross-Respondent v. ADIDAS AG, Requester, Respondent, and Cross-Appellant Reexamination Control No. 95/001, 275 United States Patent 6, 493, 652 Technology Center 3900 |
| Court | United States Patent and Trademark Office. United States Patent and Trademark Office, Patent Trial and Appeal Board |
Before JOHN C. MARTIN, KEVIN F. TURNER, and THOMAS L. GIANNETTI Administrative Patent Judges.
MARTIN, ADMINISTRATIVE PATENT JUDGE.
Patent Owner Nike, Inc. (hereinafter "Patent Owner"[1]) appeals under 35 U.S.C. §§ 134(b) and 315(a) from the Examiner's rejections of claims 1-12, 14, 35, 37, 38, 40-52, 54-56, 77, 79, 80, 86-89 92, and 93 of U.S. Patent 6, 493, 652 ("the '652 patent").[2] Third Party Requester adidas AG (hereinafter "Requester"[3]) cross-appeals under 35 U.S.C. §§ 134(c) and 315(b) from the Examiner's refusal to adopt proposed rejections of claims 1-9, 41-49, and 86-89 under 35 U.S.C. § 103(a) for obviousness over Vock[4]and under 35 U.S.C. § 112, first and second paragraphs.
We have jurisdiction under 35 U.S.C. §§ 134 and 315.
We affirm-in-part the Examiner's decision that the rejected claims are unpatentable over the prior art and affirm the Examiner's determinations not to enter the proposed rejections under 35 U.S.C. § 103(a) based on Vock and under 35 U.S.C. § 112, first and second paragraphs.
1. This proceeding arose from a December 2, 2009, "Request for Inter Partes Reexamination Under 37 C.F.R. § 1.913" (hereinafter "Request").[5] The Request proposed rejections (identified therein as Issues A-J) of claims 1-14, 35, 37-56, 77, and 79-103 of the '652 patent based on Willemsen, [6] Ebeling, [7] Fyfe, [8] Levi, [9] Richardson, [10] and Whalen.[11] Request i-ii. Reexamination of claims 15-34, 36, 57-76, and 78 was not requested.
2. The Request was granted with respect to all of the proposed rejections in a January 15, 2010, "Order Granting/Denying Request for Inter Partes Reexamination."
3. In a March 26, 2010, non-final first Office Action (hereinafter "first Office action"), the Examiner (at 7-12) adopted all of the proposed rejections, incorporating by reference the arguments made in the Request.
4. In a May 26, 2010, "Response to Office Action in Inter Partes Reexamination" (hereinafter "First Response"), Patent Owner:
This response was accompanied by an Information Disclosure Statement (IDS) listing the Vock patent as document 24.
5. "Comments by Third Party Requester to Patent Owner's Response in Inter Partes Reexamination under 37 C.F.R. § 1.947" (hereinafter "First Comments") were filed on June 24, 2010, accompanied by a (the "Greenwald Declaration"). In addition to defending the Examiner's rejections, Requester asserted: (a) that the claims reciting "a minimum degree of smoothness" are indefinite and therefore unpatentable under the first and second paragraphs of35 U.S.C. § 112 ); and (b) that "Vock discloses identifying that an acceleration signal has experienced a minimum degree of smoothness for at least a given time period indicative of a foot being airborne." Id. at 17.
6. In a September 30, 2010, Action Closing Prosecution ("ACP"), the Examiner, after acknowledging (at 2) the cancelation of claims 13, 53, 84, 85, 90, 91, and 96-103 and the amendment of claims 1, 10, 41, 50, and 86, repeated the previously entered rejections with respect to the rejected claims that had not been canceled. ACP 8-14.u Regarding the 35 U.S.C. § 112 issue raised in the First Comments, the Examiner stated that "this is an issue that is not within the scope of reexamination proceedings." Id. at 22. Regarding the Vock patent, also discussed in those comments, the Examiner stated:
[T]he suggested rejection is not adopted since Requester only made general comments such as "Vock discloses the features of the '652 patent claims that recite a [']minimum degree of smoothness['] or [']one of ordinary skill in the art would appreciate that the methods disclosed . . . could be used in connection with a footstep taken by a user['"] (p. 17 [of First Comments] or Dr. Greenwald Decl. at 36)[.] Requester fails to provide a detailed explanation of the pertinency and manner of applying the cited prior art.
ACP 22 (emphasis omitted).
7. In an October 29, 2010, "Response to Office Action in Inter Partes Reexamination" (hereinafter "Second Response"), Patent Owner (at 22) proposed canceling claims 39, 81-83, 94, and 95 and argued the patentability over the prior art of the remaining rejected claims. Second Response 22-43.
8. "Comments by Third Party Requester Following Patent Owner's Response to Action Closing Prosecution in Inter Partes Reexamination Under 35 U.S.C. § 314(b)(2) and 37 C.F.R. § 1.951(b)" (hereinafter "Second Comments") were filed on November 29, 2010. Requester, inter alia, addressed 35 U.S.C. § 112 as follows: Second Comments 2 n.l. Regarding Vock, Requester explained (id. at 12-13) why Vock raises a substantial new question of patentability and provided claim charts (id. at 14-35) allegedly demonstrating that "claims 1-9, 41-49, and 86-[8]9 are obvious over Vock." Id. at 13.
9. In a March 1, 2011, Right of Appeal Notice ("RAN"), the Examiner, after indicating (at 2) entry of the proposed amendment canceling claims 39, 81-83, 94, and 95, repeated the rejections of the claims that had not been canceled. RAN 5-11, [13] The Examiner also explained why the proposed rejection based on Vock was being refused entry (id. at 21) but did not mention the proposed rejections under 35 U.S.C. § 112.
10. Notices of Appeal and Cross-Appeal were filed by Patent Owner and Requester, respectively, on March 31, 2011, and April 12, 2011.
11. Patent Owner's appeal brief, filed on June 6, 2011, (hereinafter "P.O. Br.") addresses (at 27-29) Requester's cross-appeal issues as well as expressing disagreement with the rejections entered by the Examiner.
12. Requester's brief on cross-appeal ) was filed on June 13, 2011.
13. "Third-Party Requester's Respondent Brief on Appeal Under 37 C.F.R. § 41.68" ) was filed on July 6, 2011. 14. Patent Owner did not file a respondent brief addressing Requester's cross-appeal brief.
15. In the Answer, dated February 9, 2012, the Right of Appeal Notice is incorporated by reference without any further comments.
16. On March 8, 2012, a "Third-Party Requester's Rebuttal Brief Under 37 C.F.R. § 41.71" was filed, as acknowledged in a June 1, 2012, communication by the Examiner.
The '652 patent states that "[t]he present invention relates to the monitoring of the activity of a user in locomotion on foot." '652 patent specification 1:18-19.
Figure 1 of the '652 patent is reproduced below.
(image omitted)
Figure 1 is an illustration of various components of an activity monitoring system mounted to a user's body in accordance with one embodiment of the by Ebeling. RAN 6 (Issue C) invention. Id. at 17:13-15. As shown in this figure, the system includes a foot-mounted unit 102, a wrist-mounted unit 104, and a chest-mounted unit 106, all attached to a user 112 in locomotion (i.e., walking or running) on a surface 108. Id. at 20:4-8. The foot-mounted unit 102 can include a sensor for sensing motion of a foot 114 of the user 112, such as a solid-state accelerometer that senses acceleration along an acceleration sensing axis 110. Id at 20:8-10, 14-17.
Figure 6 is reproduced below.
(Image omitted)
Figure 6 shows a partial-schematic, partial-block diagram of an example embodiment ofa sensor 418 and a processor 422. Id. at 28:5-7. Sensor circuit 418 includes an accelerometer 502 and an amplifier 504. Id. at 27:58-60. As shown in this figure, processor input 604 receives a voltage generated by voltage divider resistors R3 and R4 in amplifier 504, which are depicted as connected in series between voltage supply node VCC and ground. The samples taken at processor input 602, on the other hand, fluctuate in accordance with the voltage generated by the accelerometer 502 in response to acceleration thereof. Id. at 29:8-11.
Figure 7 of the '652 patent is reproduced below.
(Imaga omitted)
Figure 7 shows an example of signals 712 and 710 provided by the sensor 418 of Figure 6 to processor inputs 602 and 604 respectively, when the user is in locomotion on foot. Id. at 29:20-23. Signal 710 has a constant digital value of approximately “128” on the scale labeled “0” to “256.” Id. at 29:23-25. When the level of the signal 712 is greater than the level of the signal 710, this indicates that the accelerometer is sensing a positive...
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