Nike Stomps Out Patent Office Attack on Shoe Sole Design

Skechers USA Inc. lost its administrative challenge to a Nike Inc. design patent.

The Patent Trial and Appeal Board said Skechers failed in its bid to kill Nike’s patent on a shoe sole, because Skechers failed to consider one of the design’s features.

The board’s final written decision June 28 is notable because Skechers had filed for an inter partes review, a procedure often used to challenge invention patents but rarely used against design patents.

Design patents cover the ornamental and nonfunctional designs on an item. In the case of Nike’s shoe sole, that means U.S. Patent No. D723,783 only covers parts that don’t contribute to the shoe’s performance.

Skechers argued that Nike’s design patent was obvious when compared to an earlier design. To win its case, Skechers first had to identify the “correct visual impression” created by the design as a whole. It then had to prove Nike’s design had basically the same visual impact as an earlier design.

The U.S. Court of Appeals for the Federal Circuit laid out the two-step analysis in Durling v. Spectrum Furniture.

Skechers’ case failed at the first step because it didn’t account for a groove that ran down the middle of the sole, which the board referred to as a channel element.

The board concluded that the channel element affected the design’s overall visual impact. But Skechers didn’t mention the channel element in its opening petition, and discussed it only in its brief reply to Nike’s counterarguments. The reply brief discussed nine possible ways of analyzing the visual impact of the channel element but didn’t settle on any particular one.

As a result, Skechers failed to properly identify the Nike design’s visual impact, dooming its case. Even if Skechers had accounted for the channel element, Skechers would still have lost because of the visual differences between Nike’s sole and the cited earlier design, the board said.

Administrative Patent Judge Grace Karaffa Obermann wrote the decision, and was joined by Administrative Patent Judges Ken B. Barrett and Scott A. Daniels.

Banner & Witcoff Ltd. represented Nike. Irell & Manella LLP represented Skechers.

The case is Skechers U.S.A. Inc. v. Nike, Inc., P.T.A.B., No. IPR2017-00620, 6/28/18.

To contact the reporter on this story: Peter Leung in Washington at pleung@bloomberglaw.com

To contact the editor responsible for this story: Rebecca Baker at rbaker@bloomberglaw.com