- Skechers U.S.A., Inc. v. Nike, Inc.Institution deniedPTAB · Jun 10, 2025 · IPR2025-00141 · APJ Ken B Barrett · IPR · Institution
The Board denied institution on all challenged claims under §325(d), finding the petition relied on previously presented art and did not show material error by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“single §102 rejection based solely on Nishida.” Pet. § 325(d) Reply 3 (emphasis omitted). Specifically, Petitioner argues that: The examiner seemingly failed to consider how it would have been obvious to combine Nishida (or any other reference of record, such as Orei) with knowledge in the art, including the fact that it was “well known to use double needle-bar raschel machines . . . to knit textile elements simultaneously with surrounding textile structures” (Pet., 37–38), and that simultaneous knitting would be obvious because it would “increase yield and reduce manufacturing steps,” as explained in the Petition and supporting evidence. See Pet., 42–44. Id. (alterations in original); see also id. at 4 (Petitioner arguing that the Examiner clearly erred for “failing to seemingly even consider if it would 10 We quote here, to give context to “otherwise,” both aspects that a petitioner must demonstrate in order to meet its burden. In order to determine whether Petitioner has met its overall burden, we need not and do not reach the issue of whether “the previously presented art [Nishida] teaches the limitations of the challenged claims.” Ecto World, Paper 13 at 6. have been obvious to combine Nishida with other prior art, or to implement Nishida using well-known techniques for simultaneously knitting textile elements and surrounding structures having differing textures.”). We do not find this argument persuasive. The cited portion of the Petition is the contention that Orei—not Nishida—would render obvious claim 1. See Pet. 37–38, 42–44 (Ground 1A). Thus, Petitioner has not shown persuasively that the Examiner erred in not making an obviousness rejection based on Nishida because the disputed limitation was purportedly well-known. Additionally, Petitioner’s support for the assertion that this limitation is well-known is not persuasive. The Petition parenthetically quotes from a source stating that plural “articles . . . can be simultaneously knitted side-by-side,” not that an article (a textile element) and surrounding textile structure are known to be simultaneously knitted. See Pet. 38 (quoting Ex. 1050, 201) (emphasis added); see also Pet. § 325(d) Reply 3 (Petitioner quoting its own argument and characterizing it as a “fact” (“The examiner seemingly failed to consider . . . the fact that it was ‘well known . . . “)).” slip op. at 21
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,266,749 - Adidas AG v. Nike, Inc.Rehearing deniedPTAB · Jul 20, 2017 · IPR2017-00264 · APJ James B Arpin · IPR · Rehearing
The Board denied adidas’s rehearing requests and maintained its denial of institution because the petitions relied on the same or substantially the same prior art previously presented to the Office.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“B. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” “An abuse of discretion occurs if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000)). The request must identify, with specificity, all matters that the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). Nevertheless, [a] request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. It is not an abuse of discretion to have performed an analysis or reached a conclusion with which Petitioner disagrees, and mere disagreement with the Board’s analysis or conclusion is not a proper basis for rehearing.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“Board’s finding that the art and arguments presented in the [Petitions of the above captioned cases] are substantially the same as those in the ‘920 IPR petition. To the contrary, the arguments are materially different with respect to the primary references and the obviousness combinations presented.” ’263 Req. 8 (emphasis added); ’264 Req. 8. Nevertheless, our invocation of § 325(d) did not require that we determine that the same or substantially the same prior art and arguments presented in the instant Petitions previously were presented to the Office, but rather that the same or substantially the same prior art or arguments previously were presented to the Office. Thus, our exercise of discretion in denying of institution under 35 U.S.C. § 325(d) is warranted by our finding that the same or substantially the same prior art had previously been presented to the Office. b. The Same or Substantially the Same Prior Art and Arguments Petitioner’s identification of “primary” and “secondary” references and its application of the teachings of these references to the challenged claims are arguments. In particular, Petitioner argues that “by beginning with Reed as the primary reference instead of Nishida, the [person of ordinary skill in the art’s (POSA’s)] motivation to combine the references is presented differently.” ’263 Req. 11 (emphasis added); ’264 Req. 10. As noted above, it was not necessary for us to determine whether those arguments also were the same or substantially the same as arguments previously presented to the Office. Nevertheless, to the extent that Petitioner contends that these arguments are not the same or substantially the same as its previous arguments because Petitioner relied on a different primary reference, the Board previously has held that the order in which art is applied in a utility application is not necessarily material. See In re Bush, 296 F.2d 491, 496 (CCPA 1961) (“where a rejection is predicated on two references each containing pertinent disclosure which has been pointed out to the applicant, we deem it to be of no significance, but merely a matter of exposition, that the rejection is stated to be on A in view of B instead of on B in view of A, or to term one reference primary and the other secondary.”).” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“[we] may not authorize an inter partes review to be instituted unless [we] determine[] that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. 35 U.S.C. § 314(a). Thus, we evaluate Petitioner’s reasonable likelihood of prevailing in showing the unpatentability of challenged claims on a claim– by-claim basis, upon consideration of the arguments and evidence presented in the Petitions. A petitioner’s arguments and evidence presented in other petitions with respect to other challenged claims of other patents is largely irrelevant to the institution decision in a different petition presenting different arguments and evidence for similar limitations in different challenged claims of a different patent.” slip op. at 8
Discretionary denialPatents in suitUS 8,042,288 - Adidas AG v. Nike, Inc.Rehearing deniedPTAB · Jul 20, 2017 · IPR2017-00263 · APJ James B Arpin · IPR · Rehearing
The Board denied adidas’s rehearing requests and maintained its denial of institution under § 325(d) because the petitions presented the same or substantially the same prior art and arguments previously presented.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“a panel will review the decision for an abuse of discretion.” “An abuse of discretion occurs if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000)). The request must identify, with specificity, all matters that the requesting party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). Nevertheless, [a] request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. It is not an abuse of discretion to have performed an analysis or reached a conclusion with which Petitioner disagrees, and mere disagreement with the Board’s analysis or conclusion is not a proper basis for rehearing.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for patent owner
“Board’s finding that the art and arguments presented in the [Petitions of the above captioned cases] are substantially the same as those in the ‘920 IPR petition. To the contrary, the arguments are materially different with respect to the primary references and the obviousness combinations presented.” ’263 Req. 8 (emphasis added); ’264 Req. 8. Nevertheless, our invocation of § 325(d) did not require that we determine that the same or substantially the same prior art and arguments presented in the instant Petitions previously were presented to the Office, but rather that the same or substantially the same prior art or arguments previously were presented to the Office. Thus, our exercise of discretion in denying of institution under 35 U.S.C. § 325(d) is warranted by our finding that the same or substantially the same prior art had previously been presented to the Office.” slip op. at 4
Discretionary denialPatents in suitUS 8,042,288
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.