Nike and Skechers have been going head-to-head in legal proceedings almost non-stop since Nike filed a patent infringement suit against Los Angeles-based Skechers in January 2016. In its suit, Nike alleged that Skechers’ “Burst, Women’s Flex Appeal, Men’s Flex Advantage, Girl’s Skech Appeal, and Boy’s Flex Advantage” shoe styles infringe at least eight of its design patents, all of which relate to Nike’s best-selling Flyknit shoes.
The sportswear giant further alleged that the "overall appearance of the designs of [its] patents and the corresponding designs of Skechers' infringing shoes are substantially the same.”
Beginning in April 2016, Skechers began heavily retaliating against the Portland-based sportswear giant by filing a number of petitions with the U.S. Patent Trial and Appeal Board (“PTAB”) to invalidate a handful of Nike’s design patents, many of which are central to the lawsuit. In fact, Skechers has been devoting significant efforts to dismantling Nike’s arsenal of design patents in connection with the Flyknit design.
It unsuccessfully attempted to invalidate five of Nike design patents (Nos. D723781, D723772, D725356, D725359, and D723783) – which protect the shoe sole of a sneaker – by way of Inter Partes Review ("IPR") proceedings.
For the uninitiated, IPR is a procedure to challenge the validity of patent claims based on existing patents and printed publications. In short: a party may seek to invalidate a patent based on allegations that it does not meet the requirements of novelty and/or non-obviousness.
The PTAB – which has the ability to refuse to institute an IPR proceeding if it finds that the challenger’s request lacks substantive merit – refused to hear Skechers’ five IPR petitions, thereby handing victories to Nike in each of those instances.
Skechers, however, followed up by filing another three IPR petitions in May 2016 in connection with additional design patents (Nos. D707032, D700423, and D696853) covering the “upper” element of Nike’s Flyknit shoe designs. These petitions were similarly denied by the PTAB.
Still not deterred, Skeckers is yet again seeking to invalidate a bunch of Nike’s design patents, this time filing IPR petitions against the individual “inventors,” as opposed to naming Nike, itself, in the proceedings. As such, Skechers has initiated two new IPR proceedings against Angela Martin, Senior Footwear Designer for Nike Sportswear, who is listed as the inventor of the woven “upper” of two Flyknit-related Nike patents (D696853 and D707032), which Skechers previously contested before the PTAB.
Skechers has also named five additional design patents (Nos. D725356, D723772, D723783, D723781, and D725359), on which Marc Miner, the Senior Global Footwear Designer at Nike, is listed as the inventor. Miner’s name should sound familiar, as he was one of the three ex-Nike designers who jumped to adidias and was subsequently named in a strongly-worded trade secret misappropriation suit filed by Nike in late 2014.
Given that the lawsuit that Nike filed against Skechers is still underway, it seems that Skechers is desperate to invalidate at least some of the patents at issue in order to avoid liability in connection with Nike’s patent infringement claims.