Nike, Inc. v. New Balance Athletics, Inc.
1:23-cv-12666
D. Mass.Jun 6, 2025Background
- Nike sued New Balance alleging infringement of nine patents related to Nike's Flyknit footwear technology.
- New Balance, as well as third parties Skechers and lululemon, filed petitions for inter partes review (IPR) of six of these patents with the Patent Trial and Appeal Board (PTAB).
- The PTAB has already found claims of one patent ('484) unpatentable and will decide on the institution or final decisions for several others by August 9, 2025.
- Nike opposed New Balance’s motion to stay the litigation until PTAB's upcoming IPR decisions, arguing continued prejudice and lack of sufficient simplification from third-party IPRs.
- At the time of the stay motion, the case was still in early discovery; no trial date or depositions had been set, and substantial fact and expert discovery remained.
- The district court granted a temporary stay of all proceedings until August 9, 2025, when the PTAB will have issued critical IPR decisions.
Issues
| Issue | Plaintiff’s Argument | Defendant’s Argument | Held |
|---|---|---|---|
| Appropriateness of Stay | Stay not warranted; patents not all in IPR, will cause undue prejudice and let some patents languish. | Stay appropriate; litigation is in early stage, IPR may simplify issues or moot claims. | Stay granted until Aug 9, 2025. |
| Stage of Litigation | Significant discovery underway. | Early stage; most burdensome work lies ahead. | Early stage; favors stay. |
| Potential Simplification | Uncertain; only some patents in IPR, risk of piecemeal litigation. | Strong chance; PTAB decisions imminently may invalidate or narrow many claims. | Favors stay; PTAB likely to simplify. |
| Undue Prejudice or Advantage | Claims competitive harm, market loss, and evidence risk. | No undue prejudice; any harm compensable, stay brief, and will safeguard evidence. | No undue prejudice; stay warranted. |
Key Cases Cited
- Murata Mach. USA v. Daifuku Co., Ltd., 830 F.3d 1357 (Fed. Cir. 2016) (standard for district court discretion to stay litigation pending IPR)
- Fresenius USA, Inc. v. Baxter Int’l, Inc., 721 F.3d 1330 (Fed. Cir. 2013) (patentees lose litigation cause of action if claims canceled by PTAB)
- Cuozzo Speed Techs. v. Lee, 579 U.S. 261 (2016) (scope and effect of PTAB authority in IPR)
- TEK Glob., S.R.L. v. Sealant Sys. Int’l, Inc., 920 F.3d 777 (Fed. Cir. 2019) (standards for showing undue prejudice in patent stays)