Skechers is not going down without a fight in the patent infringement suit that Nike filed against it early last year. This month, the Southern California-based footwear brand filed a petition with the Patent Trial and Appeal Board (“PTAB”) seeking to invalidate two of Nike’s design patents, which are central to the lawsuit the Oregon-based sportswear giant filed against Skechers.
You may recall that in January 2016, Nike filed suit against Skechers alleging that its “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 Nike’s design patents. The sportswear giant further alleged that the "overall appearance of the designs of the Nike patents and the corresponding designs of Skechers' infringing shoes are substantially the same.” Namely, Nike asserted that they resemble its Flyknit design.
Since then, Skechers has been devoting its efforts to dismantling Nike’s arsenal of design patents in connection with the Flyknit design. In June Skechers attempted to invalidate a Nike design patent (no. D696,853) - which protected the woven upper of a sneaker - by way of an Inter Partes Review proceeding. For the uninitiated, Inter Partes Review is a procedure to challenge the validity of patent claims based on existing patents and printed publications.
The existing patent that Skechers identified in the proceeding is a European Community Design registration (“RCD0015”) for the woven upper of a shoe. In refusing to grant the Inter Partes Review petition (and thereby ruling in Nike's favor), the PTAB identified differences between the RCD0015 design and the allegedly invalid Nike design patent. The court also found differences between the secondary references that Skechers cited (including some of Missoni’s zig-zag print designs) and the allegedly invalid Nike design patent.
Seemingly undeterred, Skechers has petitioned the PTAB for Inter Partes Review – again – this time seeking to invalidate two of Nike’s design patents in connection with the Flyknit design (no. D696,853 and D707,032) – both of which extend to the ornamental design of a “Shoe Upper.”
In order to be patentable, an invention must be new, useful, and non-obvious, and Skechers alleges that Nike’s patent-protected designs are obvious based on the designs set forth in a number of design patent applications previously filed by Nike, namely, the RCD0015 design and two U.S. utility patent applications (US2010/0154256 and US2011/0192058).
As such, Skechers alleges that the designs at hand should not be protected by design patents. Such a finding by the PTAB would, in effect, enable Skechers to beat Nike’s separate design patent infringement lawsuit.
Given that Skechers is relying, at least in part, on the same primary reference – the RCD0015 shoe design for which Nike maintains design registration with the European Union Intellectual Property Office – that it cited on its previous (and unsuccessful) Inter Partes Review petition, it seems somewhat unlikely that the PTAB will side with them this time around. As noted by Peter Law, Jason J. Jardine and Loni Morrow of Knobbe Martens, the PTAB “has shown reluctance in the past to allow a petitioner a second bite at the apple, particularly where the petitioner relies on the same prior art that was raised in a prior petition.”
They continue on to note: “It will be interesting to see if Skechers can convince the [PTAB] that it erred in finding [that the RCD0015 design] does not ‘create basically the same visual impression’” as the design of the Nike sneakers protected by the design patents at issue (no. D696,853 and D707,032).