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Nike, Inc. v. Adidas AG

United States Court of Appeals for the Federal Circuit

April 9, 2020, Decided



 [*47]  Stoll, Circuit Judge.

This case requires this court to once again consider the notice provisions of the Administrative Procedure Act. Nike, Inc. appeals 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. Specifically, Nike asserts 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, while in the record, was never cited by adidas AG ("Adidas") for disclosing that limitation. Nike also challenges the Board's finding that Nike's evidence of long-felt [**2]  but unmet need was insufficient to establish the nonobviousness of substitute claims 47-50. We conclude that substantial evidence supports the Board's finding that Nike failed to establish a long-felt need for substitute claims 47-50. Because no notice was provided for the Board's theory of unpatentability for substitute claim 49, however, we vacate the Board's decision as to substitute claim 49 and remand for the Board to determine whether that claim is unpatentable as obvious after providing the parties with an opportunity to respond.


This inter partes review proceeding returns from a prior appeal in which we affirmed-in-part and vacated-in-part the Board's decision denying Nike's motion to amend, and remanded for the Board to address certain errors underlying its conclusion that Nike's proposed substitute claims 47-50 were unpatentable for obviousness. See generally Nike, Inc. v. Adidas AG, 812 F.3d 1326 (Fed. Cir. 2016) (Nike I), overruled on other grounds by Aqua Prods., Inc. v. Matal, 872 F.3d 1290 [*48]  (Fed. Cir. 2017) (en banc). Nike now appeals the Board's decision on remand, in which the Board once again denied Nike's motion to enter substitute claims 47-50.

The '011 patent discloses articles of footwear having a textile "upper," which is made from a knitted textile using any number of warp [**3]  knitting or weft knitting processes. '011 patent col. 3 ll. 20-32. Weft knitting includes "flat knitting," where the textile is knit as a sheet or flat piece of textile. Id. at col. 7 ll. 5-8.

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955 F.3d 45 *; 2020 U.S. App. LEXIS 11172 **; 2020 U.S.P.Q.2D (BNA) 10314

NIKE, INC., Appellant v. ADIDAS AG, Appellee

Prior History:  [**1] Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2013-00067.

Nike, Inc. v. Adidas AG, 812 F.3d 1326, 2016 U.S. App. LEXIS 2376 (Fed. Cir., Feb. 11, 2016)



patentability, knit, notice, textile, prior art, unpatentable, stitches, parties, flat, references, apertures, upper, motion to amend, long-felt, Adidas, well-known, opportunity to respond, recited, region, edges, skill, configuration, teachings, proceedings, disclosure, invention, written decision, original claim, sua sponte, disclose

Civil Procedure, Appeals, Standards of Review, Questions of Fact & Law, Patent Law, Jurisdiction & Review, De Novo Review, Nonobviousness, Elements & Tests, Substantial Evidence, US Patent & Trademark Office Proceedings, Interference Proceedings, Patentability & Priority Determinations, Examinations, Amendments & New Matter, Administrative Law, Hearings, Right to Hearing, Due Process