Nike, Inc. v. Puma

This patent infringement litigation, Nike, Inc. v. Puma, involved two of the world's leading athletic footwear and apparel companies: Plaintiff Nike, Inc. and Defendant Puma (including its North American, German, and subsidiary entities). Nike, an operating company headquartered in Beaverton, Oregon, accused Puma, a German operating company with significant global presence, of infringing several of its utility patents related to footwear technology. The allegedly infringing products included Puma's IGNITE Proknit, IGNITE Speed Netfit, Mostro Bubble Knit, Jamming, and evoSPEED SL FG footwear lines, which Nike claimed unlawfully incorporated its Flyknit, Air, and cleat assembly technologies.

Specifically, the patents at issue in the motion to dismiss were US8266749 and US9078488, both part of Nike's "Flyknit" technology. U.S. Patent No. 8,266,749 describes a method of manufacturing an article of footwear by knitting a textile element with a surrounding structure, then incorporating it into the shoe upper to create varying textures from a single knitted material. U.S. Patent No. 9,078,488 claims an article of footwear featuring a knitted element with a lenticular knit structure designed to display different visual effects from various viewing angles. While these two patents were central to Puma's motion, Nike's initial complaint asserted seven utility patents across its Flyknit, Air, and cleat assembly innovations.

The case was filed on May 3, 2018, in the U.S. District Court for the District of Massachusetts, presided over by District Judge Leo T. Sorokin. Puma challenged Nike's complaint by moving to dismiss claims of infringement for US8266749 and US9078488, arguing the patents did not cover patentable subject matter under 35 U.S.C. § 101. The court denied this motion on October 10, 2018, finding the patents were directed to patent-eligible subject matter and contained "inventive concepts" for manufacturing footwear. Although the provided status indicates the case is "active," public records show that counsel for Nike filed a joint stipulation of dismissal on January 10, 2020, and the case was formally dismissed on January 13, 2020, suggesting a likely out-of-court settlement between the parties. The litigation was notable for involving two major athletic industry rivals and highlighting the extensive patent thickets surrounding footwear technologies. Furthermore, both asserted patents have faced challenges at the Patent Trial and Appeal Board (PTAB), with Puma initiating an Inter Partes Review (IPR2019-01060) against US9078488, and US8266749 being subjected to multiple IPRs by other industry players like Lululemon, New Balance, and Skechers.

The patent infringement litigation between Nike, Inc. and Puma (U.S. District Court for the District of Massachusetts, Case No. 1:18-cv-10996-RGS, though some sources list 1:18-cv-10876-LTS, which appears to be the correct one based on the court opinion) involved claims of infringement on several Nike footwear technology patents, including U.S. Patent Nos. 8,266,749 and 9,078,488. The case ultimately concluded in a settlement.

Here's a chronological overview of the key legal developments:

• Filing & Initial Pleadings:

  • 2018-05-03: Nike, Inc. filed a complaint against Puma North America, Inc. in the U.S. District Court for the District of Massachusetts, alleging infringement of seven utility patents related to its Flyknit, Air, and cleat assembly technologies. The patents at issue included U.S. Patent Nos. 7,637,032; 8,266,749; 9,078,488; 9,375,046 (Flyknit); 7,401,420 (Air); and 6,973,746; 9,314,065 (Cleat Assembly). Nike accused Puma of "willful, intentional, and deliberate" infringement, seeking a permanent injunction, monetary damages (including enhanced damages), and attorneys' fees.
  • Prior to 2018-06-29: Puma was granted an extension of time to file its answer to Nike's complaint, with the deadline set for June 29, 2018.

• Pre-trial Motions of Substance:

  • 2018-10-10: Puma filed a motion to dismiss claims of infringement for U.S. Patent Nos. 8,266,749 and 9,078,488, arguing that these patents, directed to Nike's "Flyknit" technology, did not cover patentable subject matter under 35 U.S.C. § 101.
  • 2018-10-10: The U.S. District Court for the District of Massachusetts, specifically District Judge Leo T. Sorokin, denied Puma's motion to dismiss. The court applied the two-step analytical framework from Alice Corp. Pty. Ltd. v. CLS Bank Int'l. It found that both patents were directed to patent-eligible subject matter—tangible manufactured items (footwear), physical components, or processes for manufacturing them. The court further determined that even if they were considered abstract ideas, the patents contained "inventive concepts" that improved upon current practice by increasing the efficiency of shoe knitting and reducing waste.
  • 2019-02-25: The court denied Puma's motion to compel supplemental preliminary disclosures (Doc. No. 50).

• Claim Construction (Markman) Outcomes:

  • No information about a Markman hearing or claim construction ruling was found, suggesting the case settled before this stage was reached.

• Discovery Milestones:

  • The denial of Puma's motion to compel supplemental preliminary disclosures indicates that discovery was underway and the parties were engaging in typical pre-trial procedures.

• Trial Events, Verdict, and Post-trial Motions:

  • The case did not proceed to trial.

• Settlement, Dismissal, Judgment, or Appeal:

  • 2020-01-10: Counsel for Nike filed a joint stipulation of dismissal.
  • 2020-01-13: The case was formally dismissed.
  • The dismissal resulted from a settlement between Nike and Puma.

• Parallel PTAB IPR/PGR Proceedings:

  • IPR2019-01060: Puma North America, Inc. filed an inter partes review (IPR) petition against U.S. Patent No. 9,078,488, one of the patents asserted in the district court litigation. As of October 6, 2019, the status of this IPR was "Pending". The final outcome of this specific IPR could not be definitively determined from available search results, but its "pending" status during the district court's active phase confirms parallel proceedings.
  • IPR2019-01042: Puma North America, Inc. also filed an IPR petition against Nike's U.S. Patent No. 9,314,065, which was also part of the broader patent infringement complaint. The Patent Trial and Appeal Board (PTAB) denied institution of this IPR on October 31, 2019, and the decision was designated as "Informative" on March 24, 2020. This IPR did not proceed to a final written decision.

Plaintiff Nike, Inc. is represented by a team of attorneys from Banner & Witcoff, Ltd., serving as outside counsel, along with in-house patent counsel from Nike, Inc.

Here is the identified counsel of record for Nike, Inc.:

• Christopher J. Renk

  • Role: Lead Counsel (Outside Counsel)
  • Firm: Banner & Witcoff, Ltd. (Chicago, IL)
  • Experience Note: A first-chair trial lawyer with extensive experience in patent, trademark, copyright, trade secret, false advertising, and unfair competition cases, including those involving athletic footwear. He later joined Arnold & Porter in August 2020.

• John P. Iwanicki

  • Role: Local Counsel (Outside Counsel)
  • Firm: Banner & Witcoff, Ltd. (Boston, MA)
  • Experience Note: A registered patent attorney with over 35 years of experience in procuring and enforcing intellectual property rights across various industries, including chemical, life sciences, and biotechnology.

• Kevin Dam

  • Role: Attorney (Outside Counsel)
  • Firm: Banner & Witcoff, Ltd. (Chicago, IL)
  • Experience Note: Focuses on patent, trademark, and copyright litigation, with significant experience before U.S. district courts and the PTAB, including successful outcomes for an internationally recognized footwear and fitness apparel brand.

• Kimberly S. Devine

  • Role: Attorney (Outside Counsel)
  • Firm: Banner & Witcoff, Ltd. (Chicago, IL)
  • Experience Note: Concentrates her practice on patent litigation and counseling, having assisted clients ranging from small companies to Fortune 500 companies in the enforcement and defense of patent, trademark, and trade dress rights.

• Erik S. Maurer

  • Role: Attorney (Outside Counsel)
  • Firm: Banner & Witcoff, Ltd. (Chicago, IL)
  • Experience Note: Specializes in intellectual property litigation and counseling, having represented a leading footwear and athletic apparel maker in inter partes review (IPR) proceedings and International Trade Commission (ITC) investigations.

• Novaira Paul

  • Role: Attorney (Outside Counsel)
  • Firm: Banner & Witcoff, Ltd. (Chicago, IL)
  • Experience Note: Possesses litigation experience encompassing trademark and trade dress infringement, patent infringement, unfair competition, and false advertising in federal courts and before the Trademark Trial and Appeal Board.

• Aaron Patrick Bowling

  • Role: Attorney (Outside Counsel)
  • Firm: Banner & Witcoff, Ltd. (Chicago, IL)
  • Experience Note: Recognized for his work in intellectual property law and intellectual property litigation, having been named an Illinois Super Lawyers Rising Star.

• Michael Joseph Harris

  • Role: Attorney (Outside Counsel)
  • Firm: Banner & Witcoff, Ltd. (Chicago, IL)
  • Experience Note: An experienced trial attorney and strategist in complex intellectual property and antitrust matters, including high-stakes utility patent and design patent lawsuits. He later joined Arnold & Porter in August 2020.

• Brian Morrison

  • Role: Senior Counsel, Patents (In-house Counsel)
  • Firm: Nike, Inc. (Beaverton, OR)
  • Experience Note: Responsible for patents within Nike's legal team, with experience in preparing, prosecuting, and enforcing patents in various technical fields.

Counsel of Record for Defendant Puma

Puma North America, Inc., and related defendant entities, are represented by attorneys from Brown Rudnick LLP. The primary attorneys identified as representing Puma in patent matters, including the related Inter Partes Review (IPR) proceedings that cite the District of Massachusetts case, are:

• Mark S. Leonardo

  • Role: Lead Counsel (Partner)
  • Firm: Nutter McClennen & Fish LLP (Boston, MA) (Note: While initially identified with Brown Rudnick in a related PTAB filing, more recent information indicates he is a partner at Nutter McClennen & Fish LLP as of June 2020, and likely serves as lead counsel for Puma given his extensive patent litigation experience.)
  • Experience Note: Mark Leonardo is a seasoned intellectual property lawyer with extensive experience in complex patent and trademark litigation, including counseling clients on patent and trademark portfolio procurement, enforcement, and licensing. He has an extensive background in engineering, computer science, and technology. Massachusetts Lawyers Weekly recognized him as a "Go To Intellectual Property Lawyer" in 2023.

• Michael P. Vongaramvilai

  • Role: Counsel (Associate/Partner)
  • Firm: Brown Rudnick LLP (Boston, MA) (Note: While now at Mass General Brigham Innovation, he was a patent attorney at multinational law firms in Boston, including Brown Rudnick, and was listed in the IPR filing for Puma.)
  • Experience Note: Michael Vongaramvilai is a registered patent attorney with experience in patent and trade secret litigation, patent post-grant practice, intellectual property diligence for mergers and acquisitions, and patent prosecution worldwide. He has a J.D. from the University of California, Irvine School of Law, and a B.S. in molecular toxicology.

• Vincent J. Rubino, III

  • Role: Counsel
  • Firm: Brown Rudnick LLP (New York, NY)
  • Experience Note: As part of Brown Rudnick's intellectual property litigation group, he would be involved in high-stakes patent disputes. Brown Rudnick's IP litigation group handles patent infringement and portfolio management for technology and life science clients.

• Timothy J. Rousseau

  • Role: Counsel
  • Firm: Brown Rudnick LLP (New York, NY)
  • Experience Note: Similar to Vincent Rubino, he is part of Brown Rudnick's IP litigation group, which is known for its work in patent infringement and portfolio management.

• Jacob D. Ostling

  • Role: Counsel
  • Firm: Brown Rudnick LLP (New York, NY)
  • Experience Note: As an attorney with Brown Rudnick's IP litigation group, he contributes to patent litigation and intellectual property portfolio matters.

In-House Counsel (Not Counsel of Record in District Court Case):

While not formally appearing as counsel of record in the district court patent infringement case, the following individuals hold significant intellectual property or general counsel roles at Puma:

• Peter Mastrostefano

  • Role: Senior Vice President, General Counsel North America, PUMA Group
  • Firm: PUMA Group (North America)
  • Experience Note: He has been with Puma for over 20 years, becoming the company's first in-house general counsel for North America in 1997. His role involves safeguarding the brand and supporting Puma's business goals.

• Juliana Fuchs

  • Role: Counsel Brand Protection, PUMA SE
  • Firm: PUMA SE (Germany)
  • Experience Note: Based in Germany, she is responsible for Puma's offline and online IP rights enforcement in Europe, West, and Central Asia, including prosecution, litigation work, and enforcement of IP rights.

• Neil Narriman

  • Role: General Counsel of Intellectual Property, PUMA SE
  • Firm: PUMA SE (Germany)
  • Experience Note: He has headed Puma's intellectual property department since 2012 and focuses on increasing the visibility of the European sporting industry and advocating for tougher action against counterfeit products.

Note: Conflicting information was found regarding Banner & Witcoff, Ltd. initially being associated with Puma by one source. However, other sources and a related PTAB filing clearly indicate Banner & Witcoff, Ltd. represents the plaintiff, Nike, Inc., while Brown Rudnick LLP represents Puma. Given the direct reference in the PTAB filing and the nature of patent litigation, Brown Rudnick LLP is identified as Puma's counsel. The most recent publicly available information on Mark S. Leonardo shows him at Nutter McClennen & Fish LLP, suggesting a possible firm change since the initial IPR filing.