Nike v Adidas

Nike, Inc. v. Adidas AG

No. 2019-1262 Fed. Cir. April 9, 2020 Before Circuit Judges Lourie, Chen, and Stoll.

Nike appealed the Patent Trial and Appeal Board’s decision on remand denying its request to enter substitute claims 47–50 of U.S. Patent No. 7,347,011 on the ground that those claims are unpatentable under 35 U.S.C. § 103. Nike further asserted that the Board violated the notice provisions of the APA by finding that a limitation of substitute claim 49 was well-known in the art based on a prior art reference that was in the record, but was never cited by Adidas for disclosing that limitation. The Court held that substantial evidence supported the Board’s finding that Nike failed to establish a long-felt need for substitute claims 47–50. The Court determined that the prior art revealed existing solutions to reducing waste during shoe production, which was the long felt need Nike argued that it had solved.

The Court stated that the Board “must base its decision on arguments that were advanced by a party, and to which the opposing party was given a chance to respond.”

The Court agreed with Nike that no notice was provided for the Board’s theory of unpatentability for substitute claim 49 and vacated the Board’s decision in order to provide the parties an opportunity to respond. Adidas included the reference relied on by the Board as an attachment to its petition and both parties’ experts relied on the reference’s teachings in their declarations. However, Adidas did not rely on the reference in its asserted ground for unpatentability of substitute claim 49 in either its opposition to Nike’s motion to amend or its briefing on remand. The Court stated that the Board “must base its decision on arguments that were advanced by a party, and to which the opposing party was given a chance to respond.” Nike was afforded the opportunity to address the reference before the Board on remand.

Read more: Federal Bar member attorneys may access the full case summary by registered patent attorney B.C. “Bill” Killough in the April 2020 issue of Federal Circuit Case Digest

B.C. Killough is a registered patent attorney based in Charleston, SC. On behalf of his clients, Bill has obtained more than 300 United States patents, participated in prosecuting more than 100 foreign patent applications and he has filed more than 1000 trademark applications with the US Patent and Trademark Offices.