PTAB / Federal Circuit

Motions to Amend – The Federal Circuit discusses the Who (has the Burden), What (Prior Art needs to be distinguished), and How (does the PTAB need to address secondary considerations)

Published February 20, 2016

In Nike, Inc. v. Adidas AG, decided February 11, 2016, the Federal Circuit clarified the requirements for proposing substitute claims in IPR proceedings. In the IPR proceeding subject to the appeal, the PTAB granted Nike’s motion to cancel claims 1-46, but denied its motion to substitute claims 47-50 finding that Nike failed to establish patentabilty of those claims.  Nike challenged several aspects of the Board’s finding, including the three questions discussed below.

Who … Has the Burden to Prove Patentability?; Answer:  The Patentee

In IPR proceedings, the petitioner has the burden of proving unpatentability (Section 316(e)); thus, Nike argued that it was improper to require it to prove patentabilty. Although the Federal Circuit acknowledged this argument had “some merit” it held that the Board did not err because (1) the evidentiary standard of Section 316(e) does not apply to “new” claims not present during institution and (2) the promulgated rules provide that a moving party carries the burden of proof (37 CFR 42.20).

What … Prior Art Must be Distinguished?;  Answer:  All of Record and All Known, But Only if Material

The Board also found that Nike failed to show patentable distinction over “prior art not of record but known to the patent owner.” The Federal Circuit disagreed.  Although Nike specifically distinguished only the prior art of record, it stated that its proposed claims were patentable over prior art known but not of record.  Absent an allegation that Nike violated its duty of candor by not identifying other known, material prior art (and there was no such allegation), Nike’s non-specific statement about the other prior art is sufficient.

How … Does the Board Need to Address Secondary Considerations?;  Answer:  Directly, not in passing or implicitly

Nike presented evidence of secondary considerations, including a long-felt need in the shoe industry to reduce waste in the manufacture of knit textile uppers.  The Federal Circuit held that the Board did not properly consider these arguments.  And the Board’s statements describing the prior art do not amount to an implicit rejection of Nike’s argument. On this issue, the Federal Circuit remanded for the Board to consider Nike’s evidence of long-felt need.

Nike v. Adidas – Federal Circuit


Posted on 02/20/2016 by Deakin T. Lauer