The Fashion Law Exclusive - Leading up to the London Olympics in 2012, Nike and Adidas released their first knitted running shoes: the Flyknit for Nike and the Primeknit for Adidas. Nike announced the debut of its shoe in February, touting its lightweight, knitted construction, which — by being sewn together in one piece — reduces production waste. Germany-based Adidas unveiled its knitted footwear in July 2012, hailing the product, which is stitched together without seams, making it lighter and less waste-producing, as "a first-of-its-kind running shoe." James Carnes, Adidas's head of sport performance design, said at the time that the Primeknit had been three years in the making. The Adidas debut was followed up with a lawsuit from Nike, which alleged that Adidas's Primeknit was a nearly identical copy of its patent-protected Flyknit sneaker. Unsurprisingly, a rather heated battle ensued and we currently have another one on our hands.
In 2012, Nike filed a patent infringement claim in a District Court in Nuremberg, Germany, seeking to prohibit Adidas from making and selling the Primeknit in Germany for the duration of the litigation and depending on the outcome of the case, permanently thereafter. (Nike spokeswoman Mary Remuzzi said the case was filed in and limited to Germany because it's the only place where Adidas was making and distributing the Primeknit at the time). In August 2012, the court granted Nike's injunction, ordering that Adidas halt the sale and production of its knitted sneaker. In return, Adidas moved to challenge the validity of Nike's European patent (no. EP 1 571 938 B1) a few months later.
So, while it appeared, given the court's granting of Nike's injunction, that the case was initially looking quite favorable for Nike, the court ended up ruling in Adidas's favor on the grounds that the technology involved in making both the shoe's knitted upper has been around since the 1940s (thereby failing to meet the novelty element required for patentability). As a result, the injunction was set aside, Nike's patent was deemed invalid, and Adidas is free to manufacture shoes bearing the knitted elements. But it doesn't end there.
Since then, both Nike and Adidas have started selling their respective knitted footwear in the U.S. -- giving rise to the question: Is Nike's patent in the U.S., specifically patent no. 7,347,011 (a patent that relates to footwear having a textile upper), still good? Well, not surprisingly, given the outcome of the German case, Adidas filed to challenge the validity of Nike's patent in late 2012, in an attempt to prevent Nike from filing suit in order to stop Adidas from selling the shoe. Adidas is arguing that Nike's patent is invalid based on another party's patent application from 1991, which discloses a process for creating uppers that are cut from a web of textile material and then shaped and connected to a sole -- thereby, making Nike's patent obvious (non-obviousness is an necessary element in order to achieve patentability).
That case is still ongoing and things are not looking so great for Nike, as the governing body in the U.S., Patent Trial and Appeal Board, ruled in Adidas's favor, holding that Nike's patent is, in fact, invalid. In December, Nike appealed that decision, filing a 118-page brief with the Court of Appeals for the Federal Circuit, stating that it "invented" the "novel" knitted technology, that the knit is recognized as a “quantum leap in the field," and that "it satisfied a long-felt need for an athletic shoe that could be more efficiently manufactured." (Another fun fact from its appeal brief, Nike has been awarded over 4,500 patents by the U.S. Patent and Trademark Office).
While we wait for the court to decide on the validity of Nike's patent, Adidas is certainly not wasting any time. As of this past weekend, the German sportswear giant introduced its latest iteration of knitted footwear: the adidas Originals ZX Flux Engineered Mesh shoe, a style that will surely outrage Nike even further given that it uses that exact term.
You may recall that back in 2012, Nike debuted "a new textile called Engineered Mesh," which it applied to classic styles like the Air Max 1 and Air Max 95. What Nike refers to as an "innovative fabrication," the term, Engineered Mesh, may actually be fair game for two key reasons. One: Nike has not filed to federally register the term as a trademark, and two: while Nike seems to be the brand pushing the term the hardest, it isn't the only one using it. In fact, Los Angeles-based sportswear brand, BrandBlack; clothing brand, Vince; tennis company, Wilson; and even Alexander Wang have used the term to describe their wares. Thereby, suggesting that this is actually a descriptive term (and not a easily trademark-able one).
Still, given the history between Nike and Adidas, this seems like another shot that will certainly not go unnoticed. More to come …