Adidas Ag v. Nike, Inc.
963 F.3d 1355
Fed. Cir.2020Background
- Nike owns U.S. Pat. Nos. 7,814,598 and 8,266,749 (Flyknit‑related); Adidas petitioned for inter partes review of multiple claims of those patents.
- Challenged claims recite making a cylindrical knitted textile, removing a textile element, and incorporating it into a shoe upper; some dependent claims require a "unitary construction" (single material element with differing stitch/textures and no seams).
- PTAB grounds: (1) Reed + Nishida and (2) Nishida + Castello + Fujiwara. The Board found Adidas failed to prove obviousness on both grounds. Adidas appealed.
- Nike had previously accused Adidas’ Primeknit products of infringing Flyknit patents, refused to grant a covenant not to sue, and has asserted the ’749 patent against a third party—facts the court relied on for standing.
- The Board’s central factual findings: Reed and the other references use different seaming/pre‑seaming approaches; those fundamental differences undermined a motivation to combine. The Federal Circuit reviewed legal issues de novo and factual findings for substantial evidence.
Issues
| Issue | Adidas' Argument | Nike's Argument | Held |
|---|---|---|---|
| Article III standing to appeal PTAB decision | Adidas argued it has concrete plans and commercial activity (Primeknit) that create a substantial risk of suit; Nike’s lack of suit is irrelevant | Nike argued no injury in fact because it had not sued or threatened Adidas over these patents | Court: Adidas has standing—competitive history, prior accusations, and Nike’s refusal to covenant not to sue make injury concrete |
| Obviousness — Ground 1 (motivation to combine Reed + Nishida) | Reed and Nishida are compatible (both multi‑layer knitting); a skilled artisan would combine them to reduce waste/cost | Fundamental differences in seaming (Reed pre‑seams; Nishida seams after cutting) would discourage combination and could render Reed inoperable for its purpose | Court: Substantial evidence supports PTAB that a person of ordinary skill would not be motivated to combine due to seaming differences; affirmed |
| Obviousness — Ground 2 (motivation to combine Nishida + Castello + Fujiwara and particularity) | A skilled artisan would modify Castello with Fujiwara/Nishida features to reduce cost/waste and adapt knitting methods for uppers | Castello does not teach pre‑seaming; Fujiwara’s focus on producing pre‑seamed, finished garments conflicts with Castello’s operation and the petition lacked adequate mapping of claim limitations to references | Court: Substantial evidence supports PTAB’s lack of motivation to combine; also PTAB reasonably found Adidas failed to identify which references disclose each limitation |
Key Cases Cited
- Amerigen Pharm. Ltd. v. UCB Pharma GmBH, 913 F.3d 1076 (Fed. Cir. 2019) (standing requirement for appeals from PTAB decisions)
- Lujan v. Defenders of Wildlife, 504 U.S. 555 (U.S. 1992) (constitutional minimum of standing)
- Spokeo, Inc. v. Robins, 136 S. Ct. 1540 (U.S. 2016) (injury‑in‑fact standing elements)
- E.I. DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996 (Fed. Cir. 2018) (standing in PTAB appeals where appellant has concrete plans creating substantial risk of suit)
- Grit Energy Sols., LLC v. Oren Techs., LLC, 957 F.3d 1309 (Fed. Cir. 2020) (activity that would give rise to potential infringement suit suffices for standing)
- In re Van Os, 844 F.3d 1359 (Fed. Cir. 2017) (standard of review: legal determinations de novo; factual findings for substantial evidence)
- Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350 (Fed. Cir. 2017) (obviousness is a legal conclusion based on underlying facts)
- InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327 (Fed. Cir. 2014) (motivation to combine is required in obviousness analysis)
- SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (U.S. 2018) (requirement to decide all instituted grounds on remand)