US 10051917

I'll search for authoritative information on this specific patent number, including any 2026 court activity.

Let me check for litigation and any 2026 appellate activity.

Let me pin down the exact claim set and any recent litigation/appellate outcome.

US Patent 10,051,917 B2 — Analyst Summary

Important note on scope of search: I searched for this exact number (10051917). I found no Federal Circuit 2026 docket activity involving this patent, and no 2026 appellate litigation of any kind. The only contentious proceedings on record are a 2018–2019 district court case and a 2019 PTAB inter partes review that terminated by settlement (details below). If 2026 CAFC activity exists, it is not reflected in the sources I could retrieve; treat the "no 2026 docket" point as an absence of evidence, not proof of absence — PACER/CAFC docket confirmation would be needed.

Bibliographic data (from the patent front page and Google Patents)

Note the front page prints the issue date as "*Aug. 21, 2018" — the asterisk flags that the term is affected by terminal disclaimer and/or PTA, consistent with the adjusted 2029-12-07 expiration.

Family / prosecution chain (as recited literally in the specification): This application is a continuation of Ser. No. 14/036,381 (filed Sep. 25, 2013), which is a divisional of Ser. No. 13/250,941 (filed Sep. 30, 2011, now U.S. Pat. No. 8,572,866), which is a continuation of Ser. No. 13/029,502 (filed Feb. 17, 2011, now abandoned), which is a CIP of Ser. No. 12/603,494 (filed Oct. 21, 2009, now U.S. Pat. No. 8,429,835) and of Ser. No. 12/603,498 (filed Oct. 21, 2009, now U.S. Pat. No. 8,321,984). The application is also a CIP of Ser. No. 13/608,122 (filed Sep. 10, 2012), stated in the text as "now allowed U.S. Pat. No. 8,578,535," itself a continuation of Ser. No. 12/603,498. Later family members recorded on the Google Patents page include US 10,595,591 B2 (from Ser. No. 16/045,661) and US 11,311,080 B2 (from Ser. No. 16/813,659).

Abstract (verbatim)

"A bonded mesh composite panel can be used to form a three-dimensional upper shell that includes extensions used for double-lasting and/or to otherwise provide a shelf to support foam padding. The foam padding may be, e.g., a foam midsole. The extensions of the upper shell may be located in a lower portion of the shell and may be bonded to the foam midsole in a heel, midfoot and/or forefoot regions."

Claim set — scope and uncertainty

The patent has 14 claims. The record I retrieved gives reliable text for the independent upper claim (claim 1) but I could not retrieve the full verbatim set of all 14 claims, so I cannot rule out a second independent claim. Given the title ("...and method of making same"), a method independent claim would be plausible, but I have no authoritative confirmation of that, and I will not assert it.

Independent claim 1 (an upper for an article of footwear) — plain language:

1. The upper is built from multiple panels assembled into one composite panel.
2. The composite includes three material panels:
   • a substrate material panel (the structural/support layer);
   • a mesh material panel whose first side faces away from the substrate and whose second side faces the substrate — i.e., the mesh sits outboard of the substrate in the finished upper;
   • a skin material panel also oriented with one side away from and one side toward the substrate.
3. Where the mesh overlaps the substrate, that is a mesh/substrate overlap area; where the skin overlaps both the mesh and the substrate, that is a skin/mesh/substrate overlap area.
4. Across the entire skin/mesh/substrate overlap area, the skin panel is bonded to both the mesh panel and the substrate panel, with the mesh captured (sandwiched) between the skin and the substrate.
5. Outside that overlap area, at least somewhere on the composite panel, the mesh is not captured between the skin and the substrate (i.e., the mesh may be exposed, unbonded, or covered by nothing).
6. The skin panel conforms to the mesh and reveals a surface texture corresponding to the mesh in the skin/mesh/substrate overlap area — i.e., the mesh pattern shows through the skin as a surface contour, not just as a printed pattern.

Supporting disclosure for the claim elements: substrate mesh/skin layers 27/28/36a–36d, ventilation holes 31–34, tongue opening 26; the hot-melt bond layers 39/40; the silicone compression pad that creates the conforming surface texture; and the double-lasting extensions bonded to foam midsole 610 (FIGS. 15A–15B, 16).

Claim construction on record (relevant to claim 1): In the D. Mass. litigation, PUMA proposed construing "the skin material panel conforms to the mesh material panel and reveals a surface texture corresponding to the mesh material panel in the skin/mesh/substrate overlap area" to require the exterior surface to reveal mesh protrusions "generally perpendicular to the surface of the skin material panel." The court rejected that as "unnecessarily complicated and difficult to follow" and unsupported by the specification, and adopted the ordinary and customary meaning, noting that it is the view — not any claimed limitation — that the specification describes as perpendicular. Source: Nike, Inc. v. PUMA North America, Inc., No. 1:18-cv-10876 (D. Mass.) claim construction opinion, https://www.courtlistener.com/opinion/[9731541](/patent/9731541)/nike-inc-v-puma-north-america-inc/

Procedural history (verified)

• IPR2019-01058 — Petitioner PUMA North America, Inc. v. NIKE, Inc. (Patent Owner), challenging claims 1–14 of US 10,051,917. Filed May 3, 2019; institution granted Oct. 31, 2019 on all challenged claims/grounds (grounds included Vattes in view of an Adidas reference). The Board found a reasonable likelihood that at least one claim was unpatentable. The proceeding terminated by joint motion and settlement on Dec. 3, 2019 (termination decision document), with the settlement agreement filed under seal. Status: Terminated–Settled. No final written decision issued.
  • Board decision: https://www.docketalarm.com/cases/PTAB/IPR2019-01058/Inter_Partes_Review_of_U.S._Pat._10051917/docs/10-31-2019-Board/Decision_Granting_Institution-10-Trial_Instituted_Document.pdf
  • Case profile: https://ipverse.greyb.com/ptab-web/cases/case-details/IPR2019-01058
• Related district court litigation: NIKE, Inc. v. PUMA North America, Inc., No. 1:18-cv-10876 (D. Mass.) — the matter identified as related to the '917 patent in the IPR institution decision. The '917 patent was one of approximately 10 Nike patents asserted against PUMA; PUMA filed IPR petitions on 7 of them and moved to stay, which the court denied without prejudice at that stage.
• Note on the Google Patents banner: the page's "Family has litigation" entry names "Unified Patents PTAB Data" — that is the data source licensing attribution, not the petitioner. The actual petitioner of record in IPR2019-01058 was PUMA North America, Inc.

What I could not confirm

• No 2026 CAFC docket: I found no Federal Circuit appeal in 2026 (or any year) involving 10,051,917. A settlement-terminated IPR generally produces no appealable final decision, and I found no district-court appeal reference.
• Full verbatim text of all 14 claims, and whether the patent contains a second independent claim (e.g., a method claim). My description of the independent claim is grounded in the PTAB institution decision, the prosecution-history amendment (proposed claim 19, later renumbered), and the D. Mass. claim construction opinion, all of which quote the operative language.
• Exact issue-date "legal status" nuance: the front page carries both a terminal disclaimer and a 47-day PTA, and the Google Patents legal-status field lists an adjusted expiration of 2029-12-07. Legal status labels are explicitly disclaimed as assumptions by the source.

Key URLs cited

• Google Patents (authoritative full text): https://patents.google.com/patent/US10051917/en
• Justia patent record: https://patents.justia.com/patent/10051917
• PTAB institution decision (PDF, Docket Alarm): https://www.docketalarm.com/cases/PTAB/IPR2019-01058/Inter_Partes_Review_of_U.S._Pat._10051917/docs/10-31-2019-Board/Decision_Granting_Institution-10-Trial_Instituted_Document.pdf
• PTAB termination/settlement documents: https://www.docketalarm.com/cases/PTAB/IPR2019-01058/ (Dec. 2–3, 2019 papers 12, 14, 15)
• D. Mass. claim construction opinion: https://www.courtlistener.com/opinion/9731541/nike-inc-v-puma-north-america-inc/

I'll research litigation involving US patent 10051917 specifically.

Let me dig deeper into the specific proceedings and any district court cases.

Let me verify the district court case details and search for additional proceedings.

Caveat on scope and sourcing

I was able to run only a limited number of searches before hitting my tool-call limit, so I did not complete exhaustive checks of PACER/CAFC dockets or the Unified Patents litigation portal. Everything below is grounded in the sources I did retrieve, with URLs. Where I could not confirm something, I say so.

One important disambiguation up front: a search hit for a Sandoz declaratory-judgment counterclaim referencing a "'617 patent" (https://paragraphfour.com/wp-content/uploads/2024/03/njdc24cv8855A.pdf) is not US 10,051,917. That document concerns an ANDA/pharmaceutical patent invalidity dispute (asserting obviousness over "Mates" and "Vanover"). I flag it so it is not conflated with the footwear patent at issue here.

Known proceedings involving US Patent 10,051,917

1. District court infringement action — NIKE, Inc. v. PUMA North America, Inc.

How the '917 patent fits in: The original May 3, 2018 complaint asserted seven patents — US 6,973,746; 7,401,420; 7,637,032; 8,266,749; 9,314,065; 9,375,046; and 9,078,488 (see the AO-120 "Report on the Filing of an Action" at https://www.docketalarm.com/cases/PTAB/IPR2019-01043/...Exhibit_1003.pdf and the Massachusetts litigation coverage at https://ipwatchdog.com/2018/05/25/nike-sues-puma-infringement-patents-covering-nikes-flyknit-air-cleat-technologies/). Because the '917 patent did not issue until August 21, 2018, it could not have been in that original complaint. It was added later: PUMA's supplemental Local Rule 16.6(d)(4) disclosures respond to "NIKE's March 22, 2019 'Corrected' LR 16.6(d)(1)(A) Preliminary Infringement Claim Charts for U.S. Patent No. 10,051,917," accusing PUMA's IGNITE Speed (source: https://www.docketalarm.com/cases/PTAB/IPR2019-01043/PUMA_North_America_Inc._v._NIKE_Inc/docs/08-09-2019-Patent_Owner/Exhibit-2009-EX_2009.pdf).

Confidence note: I confirmed the '917 patent was asserted in and charted in the Massachusetts case, and that the case terminated in January 2020. I did not independently confirm whether a formal amended complaint adding the '917 patent was filed versus assertion solely via infringement contentions, nor did I retrieve the actual dismissal order. The PAE-style database entry reporting the dismissal appears at https://www.ip-navi.or.kr/disputenews/disputenewsIpDetail.navi?news_seq=[178303](/patent/178303)&national=US.

2. PTAB inter partes review — PUMA North America, Inc. v. NIKE, Inc.

Sources: Board's Decision Granting Institution (https://www.docketalarm.com/cases/PTAB/IPR2019-01058/Inter_Partes_Review_of_U.S._Pat._10051917/docs/10-31-2019-Board/Decision_Granting_Institution-10-Trial_Instituted_Document.pdf); Joint Motion to Keep Confidential and Separate (https://www.docketalarm.com/cases/PTAB/IPR2019-01058/.../Motion-14-Joint_Motion_to_Keep_Confidential_and_Separate/); docket index (https://www.docketalarm.com/search/?q=patent:(10051917)); case summary (https://ipverse.greyb.com/ptab-web/cases/case-details/IPR2019-01058).

Notes worth flagging: (a) PUMA filed IPR petitions against roughly half of the patents asserted in the Massachusetts case and moved to stay, which the district court denied without prejudice while the petitions were un-instituted (see https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1525861](/patent/1525861)/download-documents...); (b) the petition relied in part on an Adidas reference plus Vattes, and PUMA argued against § 314(a) and § 325(d) discretionary denial; (c) the case terminated by joint motion under 35 U.S.C. § 317(b) with the settlement agreement filed as confidential Exhibit 1012.

Things I could not confirm

• No CAFC appeal involving the '917 patent appeared in any source I retrieved. Given the December 2019 settlement and January 2020 dismissal, an appeal would be unlikely, but I did not confirm this.
• Other PTAB proceedings: The Board's institution decision frames IPR2019-01058 as directed to the '917 patent; related PUMA petitions (e.g., IPR2019-01043) targeted different patents ('746). I did not complete a search for any additional IPR/PGR petition against the '917 patent.
• Foreign litigation: The Google Patents page for US 10,051,917 carries a Darts-ip "First worldwide family litigation filed" flag for family 45816438 (https://patents.darts-ip.com/?family=45816438...), which indicates litigation activity somewhere in that patent family, but I could not retrieve the Darts-ip record or identify specific foreign suits (e.g., Germany) naming this patent. Treat the existence of non-US litigation as unverified.
• Other US district court suits: Docket Alarm's patent-specific search for patent:(10051917) returned only IPR2019-01058. I did not complete parallel checks of PACER, the Unified Patents litigation case list, or CourtListener for the '917 patent specifically, so I cannot rule out an additional suit in which the patent was asserted in a different caption.

Bottom line: The only two contested proceedings I can confirm that specifically involve US 10,051,917 are (1) NIKE, Inc. v. PUMA North America, Inc., No. 1:18-cv-10876-LTS (D. Mass., filed May 3, 2018; dismissed Jan. 13, 2020), where the patent was asserted against PUMA's IGNITE Speed; and (2) PUMA North America, Inc. v. NIKE, Inc., IPR2019-01058 (PTAB, filed May 3, 2019; instituted Oct. 31, 2019; terminated by settlement Dec. 3, 2019).

I'll reconcile the structured "PTAB proceedings on file" block against what I already have on record, then verify panel and ground-level details.

Let me verify the grounds, and check for any second petition or Federal Circuit appeal.

⚠️ Source conflict flagged up front. The structured "PTAB proceedings on file" block in this prompt states: "The USPTO ODP API returns no AIA trial proceedings for this patent as of the most recent ingest." That is contradicted by the verified public record. IPR2019-01058 was filed against, and instituted on, US 10,051,917. The block's default ("no PTAB activity on file") would be materially wrong for a defendant. I attribute the discrepancy to the ODP AIA ingest apparently not carrying terminated-by-settlement trials (the proceeding ended 24 days after the FWD-ready clock started and produced no Final Written Decision), but I cannot confirm the cause. I am treating the structured block as incomplete/stale, not authoritative, and grounding this analysis in the Board papers themselves. Do not tell a client "no PTAB activity exists on this patent."

Proceedings overview

One (1) AIA trial proceeding has been filed against US 10,051,917: IPR2019-01058, instituted on all 14 claims and then terminated by joint settlement before any Final Written Decision — so zero claims canceled, zero claims sustained, and all 14 claims remain UNTESTED at the PTAB.

Because the trial settled post-institution but pre-FWD, there is no invalidity outcome to lean on and no § 315(e)(2) estoppel to hide behind. Defensively, that cuts both ways for a defendant: you cannot point to any adjudicated cancellation of claims 1–14, but you can freely re-run PUMA's ground — the Board's own institution decision tells you the panel thought PUMA had shown a "reasonable likelihood" of prevailing on claims 1–14 over Vattes in view of Adidas. This patent is neither "hardened" nor "dead"; it is untried.

IPR2019-01058 — PUMA North America, Inc. v. NIKE, Inc.

• Type: Inter Partes Review (35 U.S.C. § 311 et seq.)
• Filed: 2019-05-03 (Notice of Accord Filing Date 2019-05-15, Paper 3)
• Status: Terminated – Settled (USPTO ODP / PTAB index); plain English: trial was instituted, then dismissed on the parties' joint motion 24 days later pursuant to 35 U.S.C. § 317(b), before any Final Written Decision issued.
• Judge panel: Mitchell G. Weatherly, Amanda F. Wieker, and Stephen E. Belisle, Administrative Patent Judges; opinion authored by APJ Belisle.
• Petition grounds: Claims 1–14 challenged on a single ground — obviousness under 35 U.S.C. § 103(a) over US Patent Pub. No. 2007/0199210 ("Vattes", Ex. 1004) in view of DE 2,812,760 ("Adidas", Ex. 1005), supported by the declaration of Dr. Darren J. Stefanyshyn (Ex. 1007). No § 102 anticipation ground and no § 112 ground was instituted. Notably, PUMA's own reply zeroes in on the limitation Nike added by amendment to get the claims allowed: "wherein the skin material panel conforms to the mesh material panel and reveals a surface texture corresponding to the mesh material panel in the skin/mesh/substrate overlap area" — PUMA used the Adidas reference (Exs. 1005, 1006) to attack exactly that element. Sources: Institution Decision, Paper 10 (2019-10-31); Petitioner's Reply, Paper 8 (2019-09-03).
• Institution decision: Instituted on all challenged claims (1–14) and on all grounds, 2019-10-31. Reasoning: the panel determined "that Petitioner has established a reasonable likelihood of success in proving that at least one claim of the '917 patent is unpatentable," and, institution on all claims and all grounds (i.e., the Board did not partially institute). Separately, the panel rejected Nike's discretionary-denial arguments under § 314(a) (parallel D. Mass. litigation) and § 325(d) (art already before the Examiner) — PUMA argued its Adidas reference was not cumulative of Nike's cited Sokolowski (Ex. 2013) and Dojan (Ex. 2014), and that it was presenting new evidence and new arguments not before the examiners. The Board instituted rather than exercising discretion to deny.
• Final Written Decision: NONE ISSUED. This is the single most important fact for a defendant. No claim was canceled, no claim was held patentable, and no claim-level patentability ruling exists. Any statement that "claims 1–5 were canceled" or that "the patent survived IPRs" would be false as to this patent.
• Settlement / termination: The parties filed a Joint Motion to Dismiss the Petition and Terminate the Proceeding (Paper 12) and a Joint Motion to Keep Confidential and Separate (Paper 14) on 2019-12-02; the Board entered the Termination Decision Document (Paper 15) on 2019-12-03. The Confidential Settlement Agreement is Exhibit 1012, filed under seal and kept separate from the patent file under § 317(b) and 37 C.F.R. § 42.74(c) — its terms are not public. The settlement was part of a global resolution: PUMA's nearly-identical joint motions terminated companion IPRs on six other Nike patents ('488 IPR2019-01060; '046 IPR2019-01059; '065 IPR2019-01042; '679 IPR2019-01190; '411 IPR2019-01342; and '746 IPR2019-01043), and the parallel D. Mass. action was later dismissed. Source: Joint Motion to Keep Confidential and Separate (2019-12-02); docket index.
• Appeal: None, and none possible on the merits. A § 317(b) settlement-terminated IPR produces no appealable Final Written Decision, so there is no Federal Circuit docket, no CAFC opinion, and no Supreme Court petition arising from this proceeding. (Do not confuse this with the Adidas AG v. Nike Flyknit-line appeals — IPR2013-00067, Nike v. Adidas, 955 F.3d 45 (Fed. Cir. 2020), etc. — those involve different Nike patents, not the '917 patent. Any 2026 appellate activity in the Nike/PUMA or Nike/adidas footwear wars should be checked against this specific patent number before it's cited.)
• Defensive value: High-upside, no-downside reference material — but no estoppel shield. Because no FWD issued, (i) claims 1–14 are wholly untested at the PTAB, and (ii) § 315(e)(2) estoppel never attached, so a current defendant is free to raise the Vattes+Adidas § 103 ground, or anything else. The institution decision is a published, citable indication that the panel viewed claims 1–14 as reasonably likely obvious over that combination, and it flags the "reveals a surface texture" limitation as the claim-saving amendment. Caveat: a "reasonable likelihood" institution finding is not a merits win, and a 2019 panel's preliminary view is not binding on a 2026 panel or a jury. Also note the D. Mass. claim construction went against the patent challenger's reading — the court rejected PUMA's proposed narrowing of the "conforms to… reveals a surface texture" phrase and gave it its ordinary and customary meaning (CourtListener, D. Mass. Markman opinion). So don't assume that claim-construction ruling helps the defense.

Strategic summary

Claim status of US 10,051,917. CANCELED: none. SUSTAINED: none. UNTESTED: all of claims 1–14. The only AIA trial ever filed against this patent was instituted on the full claim set and then settled out before the Board could rule. Every claim — independent claim 1 and dependents 2–14 — sits exactly where it left prosecution. (Claim 1's text is confirmed verbatim in the D. Mass. Markman opinion, which quotes it: an upper comprising a substrate material panel, a mesh material panel, and a skin material panel, with the skin bonded to both the mesh and substrate throughout the entire skin/mesh/substrate overlap area, the mesh captured between skin and substrate, the mesh not captured outside that area, and the skin panel conforming to the mesh and revealing a surface texture corresponding to it.) Because that "conforms/reveals" element is precisely the amendment that got the claims allowed, it is the natural locus of both validity and infringement fights — and it is the element a challenger must attack head-on.

Estoppel landscape. No statutory estoppel exists. Section 315(e)(2) estoppel arises only after a Final Written Decision; here the trial terminated under § 317(b) with no FWD, so PUMA (and its privies) are not barred from re-asserting any ground in district court or the PTAB. The only constraints on PUMA are contractual, arising from the confidential settlement agreement (Ex. 1012) — which is sealed, so its scope (license, covenant not to sue, or both) is unknowable from the public record and must be assumed to exist. Practical consequence for a new defendant: the entire prior-art space is open, including Vattes, Adidas (DE 2,812,760), Sokolowski, and the Dojan publication, with no § 315(e) trap. There is also a realistic risk of follow-on IPR by others given the patent's family (Nike's composite/mesh-upper and Flyknit lineage) is actively policing the market, but no second petition against the '917 has been filed on the record I could retrieve.

Pattern signals. The same petitioner (PUMA) filed a coordinated cluster of seven IPRs against the asserted Nike patents — IPR2019-01042 ('065), -01043 ('746), -01058 ('917), -01059 ('046), -01060 ('488), -01190 ('679), -01342 ('411) — which is a standard "file IPRs on the whole asserted set, then move to stay" strategy. The Board denied institution in IPR2019-01042 ('065) but granted it in IPR2019-01058 ('917) — meaning the '917 challenge was among the stronger ones PUMA mounted, not a weak throwaway petition. All seven were then terminated by the same joint motions in December 2019. No defensive aggregator (e.g., Unified Patents) was the petitioner here — the "Unified Patents PTAB Data" label on the Google Patents page is a data-source attribution, not a party. Nike also has not been the party appealing an adverse PTAB result on this patent (there was no adverse result to appeal); Nike's CAFC activity in this technology space involves other patents.

Recommended next steps

1. Do not rely on the "no PTAB activity" default. The structured ODP block is inconsistent with the public record; flag the data gap to whoever generated it, because for this patent the ODP ingest is missing a real, instituted trial.
2. Pull the institution decision (Paper 10) and the petitioner's reply (Paper 8) as a validity roadmap. They are the best free starting point for a § 103 attack, and there is no estoppel preventing you from running the same or a better ground: Paper 10 — Decision Granting Institution (2019-10-31). The Board's disposition was: instituted as to all challenged claims (1–14) and all grounds raised (Vattes + Adidas, § 103) — not a final invalidity holding.
3. Set filing/timing expectations correctly if you file. Institution here took ~6 months (filed 2019-05-03, decided 2019-10-31); a new petition would be subject to the current § 314(b)/§ 314(a)/§ 325(d) regime and the Board's current Fintiv-style discretionary practice, which is materially different from 2019. Trial-stage milestones to calendar once instituted: institution decision within 6 months of the accord date (§ 314(b)), FWD within 12 months of institution (§ 316(a)(11)), extendable only for good cause.
4. Treat the settlement's scope as an unknown, not as absent. The confidential agreement (Ex. 1012) could contain a license or covenant that binds PUMA and its privies. If you are advising PUMA or a party in privity, get the document; if you are a third-party defendant, assume no rights flow to you.
5. Check claim 4/5 dependents specifically if your product places mesh only in certain regions — dependent claims 4 and 5 (quoted in the Board record as covering mesh at toe/top/lateral/medial forefoot/midfoot/hindfoot regions and a skin overlap area spanning toe and lateral/medial forefoot regions) were part of the challenged set and were never construed or adjudicated by the Board.

Confidence and gaps. Confirmed with high confidence: proceeding number, parties, filing date, statute, panel, sole ground (Vattes + Adidas, § 103, claims 1–14), institution on all claims, settlement date, absence of any FWD, and absence of any appeal. Not verified: the terms of the confidential settlement agreement (sealed); whether any post-2019 IPR/PGR petition against the '917 patent was filed and not indexed (my Docket Alarm patent-specific search returned only IPR2019-01058); and the exact per-claim institution rationale for every dependent claim, since the institution decision is lengthy and I did not retrieve it in full. The structured ODP "no proceedings" flag remains unexplained.

I'll research the assignment record for this patent. Let me start with searches.

Let me dig into the specific assignment record and reel/frame details.

Let me try to locate the specific reel/frame record and the assignment document.

I hit the tool-call limit before I could query the USPTO Assignment Center directly (assignmentcenter.uspto.gov / assignment.uspto.gov), so the reel/frame number and correspondent below are flagged as not retrieved. Everything I did confirm comes from the USPTO-mirrored legal-events record on Google Patents for this patent and from the PTAB/docket records. I have not fabricated any recording.

Inventors

Source: patent front page as reproduced in the IPR2019-01058 Exhibit 1001 ((72) Inventors: Frederick J. Dojan, Vancouver, WA (US); Daniel A. Johnson, Beaverton, OR (US); Shane S. Kohatsu, Portland, OR (US); Chin-Chen Huang, Beaverton, OR (US)), and the patent's own front-page data. The application was filed with NIKE, Inc. as applicant ((71) Applicant: NIKE, Inc., Beaverton, OR), consistent with an employer-owned invention.

Departure / fire-sale pattern: Not present. All four inventors remained associated with Nike through issuance and beyond. Dojan, Kohatsu and Huang appear as co-inventors on later Nike family members (e.g., US 10,595,591 B2, issued 2020-03-24, and US 11,311,080 B2) and on numerous other Nike filings, so there is no mass-inventor-departure signal. See the Chin-Chen Huang patent list at https://www.patentleaderboard.com/nike/chin-chen-huang/[126488](/patent/126488) (lists 10051917 and 10595591 among ~40 Nike patents).

Original assignee

NIKE, Inc. (One Bowerman Drive, Beaverton, OR 97005-6453), an Oregon corporation, publicly traded (NYSE: NKE).

• Primary line of business: Athletic footwear and apparel.
• Product embodying the claims: Yes. The asserted commercial embodiment was Nike's composite/mesh-upper footwear; Nike charted PUMA's IGNITE Speed as infringing the '917 patent in the Massachusetts action (see NIKE's "Corrected" LR 16.6(d)(1)(A) charts referenced in PUMA's supplemental disclosures, https://www.docketalarm.com/cases/PTAB/IPR2019-01043/PUMA_North_America_Inc._v._NIKE_Inc/docs/08-09-2019-Patent_Owner/Exhibit-2009-EX_2009.pdf). Nike's own Flyknit / bonded-composite upper lines are the corresponding Nike products.
• Current status: Operating, solvent, never in bankruptcy. No Chapter 7/11 event.

Assignment timeline

One recorded assignment appears in the USPTO-mirrored record for this patent (application 15/395,110):

• Executed date: not retrieved / recorded 2018-10-16 — Reel NNNNNN/NNNN (reel and frame not retrieved)
  • Conveyance: ASSIGNMENT OF ASSIGNORS' INTEREST (the record is indexed under Google Patents' legal-events category "Assigned to NIKE, INC. — reassignment")
  • Assignor: Shane S. Kohatsu; Chin-Chen Huang; Daniel A. Johnson; Frederick J. Dojan (all four named inventors)
  • Assignee: NIKE, Inc.
  • Correspondent: not retrieved. (Note: the attorney/agent firm of record on the prosecution of this patent is Klarquist Sparkman, LLP, and the power of attorney runs to Customer Number 115726 — see the patent face (74) Attorney, Agent, or Firm — Klarquist Sparkman, LLP and the ADS summary in IPR2019-01058 Exhibit 1003. That is the prosecution correspondent, not confirmed as the assignment-recording correspondent. I could not verify the assignment record's correspondent field.)
  • Context: Confirmatory / employment-rights assignment — the inventors executed a post-issuance assignment back to their employer, Nike, the entity that was already named as applicant on the file. This is routine hygiene, not a transfer of ownership to a third party.

No other recordings were found. Specifically, I found no security agreement, no license recordation, no merger/change-of-name, no release, and no transfer to any Nike affiliate (e.g., NIKE Innovate C.V. or any holding LLC). Nike remained the sole owner through the 2019 assertion and remains the listed current assignee. Duration of ownership: ~9 years single-owner chain (2009 priority → present).

Caveat: Because I could not complete a direct Assignment Center query, I cannot positively exclude a latent recording (e.g., an unindexed release). The above reflects the records surfaced in the retrieved sources.

Timeline diagram

timeline
    title Ownership of US 10051917
    2009 : Earliest priority date claimed
    2016 : Application 15395110 filed by Nike
    2018 : Patent issued to NIKE Inc
         : Confirmatory assignment recorded
    2019 : PUMA files IPR
         : IPR terminated by settlement
    2020 : District court case dismissed

NPE / troll-pattern signals

1. Shell-entity transfer — not present. The only assignee is NIKE, Inc., an operating Oregon corporation at One Bowerman Drive, Beaverton, OR — Nike's real headquarters, not a registered-agent service address. No "IP/Holdings/Ventures" LLC appears anywhere in the chain (recorded 2018-10-16; no subsequent recordings).

2. Known asserter in the chain — not present. Neither Nike nor any Nike entity appears on RPX, Unified Patents, or other maintained high-frequency-plaintiff/NPE lists. Nike is the target of the NPE-side filings here — PUMA (a competitor) filed IPR2019-01058 against Nike, not the reverse.

3. Repeat correspondent across the chain — not applicable / no finding. With a single recorded assignment there is no recurrence to test. For completeness: the prosecution firm of record is Klarquist Sparkman, LLP (patent face, (74)), and the POA customer number is 115726; Klarquist Sparkman is a Portland-based general-practice IP firm that handles both prosecution and litigation for operating companies. A single appearance is expressly not a signal, and it is not corroborated by the assignment record (correspondent field not retrieved).

4. Cascading transfers — not present. One assignment over ~9 years. No chained LLC hops, no common-correspondent-address cluster, no sub-24-month cascade.

5. Pre-litigation transfer — not present. The assignment (recorded 2018-10-16) is a confirmatory inventor→employer assignment. The litigation-assertion actor (Nike) is the same entity that already owned the patent pre-assignment. There is no assignment to a third-party asserter within 6 months (or any window) before the May 3, 2018 / March 22, 2019 assertion activity — indeed the '917 issued Aug. 21, 2018, after the original complaint, so it could only have been charted later by its existing owner.

6. Bankruptcy fire-sale — not present. Nike has never been in bankruptcy; no Chapter 7/11 and no Kodak/Nortel/Polaroid-style patent auction exists in this chain.

7. Privateering — not present. There is no transfer from an operating company to a separate NPE asserting on its behalf. Nike sued PUMA in its own name: NIKE, Inc. v. PUMA North America, Inc., No. 1:18-cv-10876-LTS (D. Mass., filed May 3, 2018; dismissed Jan. 13, 2020). No SEC 8-K/10-K discloses a patent divestiture or monetization vehicle for this asset.

8. Defensive aggregator — not present. The chain does not terminate at RPX, AST, LOT, Unified Patents, or OIN. The final owner is an operating competitor-asserting company, so the patent is not neutralized.

Verdict

Operating-company assertion.

Justification: The sole recorded assignment is the four named inventors → NIKE, Inc. (recorded 2018-10-16, conveyance "ASSIGNMENT OF ASSIGNORS' INTEREST"; reel/frame not retrieved), i.e., a routine confirmatory employment assignment to the entity already named as applicant on the file — the opposite of a shell-entity or pre-litigation transfer. Nike is an operating footwear manufacturer that ships the claimed composite-upper products and asserted the '917 patent in its own name against a real competitor (PUMA, D. Mass. 1:18-cv-10876; IGNITE Speed accused). No shell LLC, no known NPE, no cascading transfers, no bankruptcy sale, no defensive-aggregator endpoint appears anywhere in the chain, so none of the eight NPE signals is present.

Verification link: USPTO Patent Assignment Search — https://assignmentcenter.uspto.gov/ (search by patent number 10051917; mirrored record at https://patents.google.com/patent/[US10051917](/patent/US10051917)/en under "Legal Events"). Confirm the reel/frame and recorded correspondent there, since I could not retrieve those two fields before exhausting my search budget.

Cross-check note / possible contradiction to flag: The previously-generated sections described the front-page status as "Active; adjusted expiration 2029-12-07" and noted a terminal disclaimer plus 47-day PTA. That is corroborated by the patent's own face (( * ) Notice: Subject to any disclaimer, the term of this patent is extended or adjusted under 35 U.S.C. 154(b) by 47 days. This patent is subject to a terminal disclaimer.). This affects term length only and does not alter the ownership conclusion — a terminal disclaimer is a prosecution/term mechanism, not an assignment.

I'll research the prior-art citations of record for US 10,051,917. Let me search.

Let me pull the citation lists from patent databases and the IPR petition.

Prior Art of Record for US 10,051,917 B2

Scope note before the analysis

I was able to retrieve the identity and content of the prior art that was actually applied against the '917 claims and the art PUMA relied on in IPR2019-01058, plus a substantial part of the citation list on the patent's face. I could not retrieve the complete verbatim "U.S. Patent Documents" block from the front page (the Google Patents text supplied in the prompt omits the citations table entirely). So Section C below is a partial list — I say explicitly where it is incomplete rather than filling gaps. No patent number or identifier below has been normalized or auto-corrected; each is reproduced as it appears in the source.

A. The single most relevant reference: Vattes (US 2007/0199210 A1)

Description (from the retrieved text): Vattes discloses an article of footwear whose upper is built from a first foam layer, a second foam layer, and a middle layer interposed between them — the middle layer "preferably a mesh textile material" — adhesively affixed and integrally formed (preferably compression molded) into a unitary layered blank, then seamed into a foot-receiving cavity. It expressly describes "a unitary piece of layered material having a first seam and a second seam" with substantially seamless medial and lateral portions, a protective feature in the toe region, and a supportive feature in the ankle region. This is directly parallel to the '917's layered substrate/mesh composite concept, which is why both the Examiner and PUMA anchored on it.

§102 analysis:

• Vattes is a US pre-grant publication filed Feb. 24, 2006 (published Aug. 30, 2007) — squarely before the '917's Oct. 21, 2009 earliest priority date, so it is available as art.
• §102(e) (pre-AIA) / §102(a)(2)-equivalent: available as a U.S. patent-application publication effectively filed before the '917's priority date.
• Claims it potentially anticipates (1–14): only if one accepts PUMA's reading. PUMA's Ground 1 was not pure anticipation — it was §103(a), "rendered obvious by U.S. Patent Pub. No. 2007/0199210 ("Vattes") (Ex. 1004) and German Patent No. DE2812760 ("Adidas") (Ex. 1005)."
• Why Vattes alone likely does not anticipate claims 1–14: NIKE's POPR argued that "Vattes Does Not Disclose 'a skin material panel…' as Recited in All Challenged Claims," and separately that Vattes lacks the recited regional coverage (claim 4) and the "toe region, and lateral and medial forefoot regions" skin-overlap (claim 5). The prosecution history confirms the point: per PUMA's own reply brief, "The Challenged Claims only issued when PO amended them to add the limitation, 'wherein the skin material panel conforms to the mesh material panel and reveals a surface texture corresponding to the mesh material panel in the skin/mesh/substrate overlap area.'" A reference that drove a rejection before that amendment is the natural §102 candidate for the pre-amendment claims — but the issued claims each carry the amendment, so Vattes is best characterized as a §103 primary reference, not a §102 anticipation, against claims 1–14 as issued.

Disambiguation flag (do not conflate): my search also surfaced US 7,370,438 B2, "Removable or Reversible Lining for Footwear," Vattes et al., The Timberland Company, issued May 13, 2008. That is a different Vattes/Timberland document and I found no evidence it is cited in the '917 record. The "Vattes" reference of record for the '917 is the 2007/0199210 publication.

B. The secondary reference PUMA combined with Vattes

§102 analysis: DE 2812760, if it published before Oct. 21, 2009 (it almost certainly did, if the 1978 numbering is accurate), is a §102(b) foreign printed publication and could itself anticipate a claim only if it disclosed the entire claimed combination. PUMA used it as a §103 secondary teaching, not as an anticipatory reference — notably because NIKE contended the Adidas art was cumulative of Sokolowski (Ex. 2013) and Dojan (Ex. 2014) and that the petition therefore failed under §325(d).

C. Citations appearing on the face of US 10,051,917 — partial list

The following are drawn from the Justia citation listing for US 10,051,917. This is a partial list: the retrieved fragment begins mid-way through the "U.S. Patent Documents" sequence (at the 2010 publications), so earlier patent entries and earlier publications are not reproduced here, and I have not reconstructed them by inference.

C.1 U.S. patent application publications cited

C.2 Other items cited (as listed)

• 18 photographs of a Mavic® "Huez" shoe — "date of first US sale or offer for sale believed to be prior to Aug. 1, 2009." This is the one cited item that is unambiguously §102(a)/(b) art of the public-use / on-sale type (and, as a printed/photographic publication, §102(a)/(b) printed publication art): a third-party commercial cycling shoe predating the Oct. 21, 2009 priority date. It is a genuinely independent prior-art item, unlike the NIKE self-citations around it.
• Co-pending U.S. applications, cited by number and filing date: 12/180,235 (Jul. 25, 2008); 12/419,987 (Apr. 7, 2009); 12/419,985 (Apr. 7, 2009); 12/505,740 (Jul. 20, 2009); 12/546,017 (Aug. 24, 2009); 12/546,019 (Aug. 24, 2009); 12/546,022 (Aug. 24, 2009); 12/603,498 (Oct. 21, 2009); 12/603,494 (Oct. 21, 2009). The last two are the '917's own priority parents — not prior art.
• International Search Reports / Written Opinions for PCT/US2010/052214 (Feb. 25, 2011), PCT/US2010/052645 (Jan. 12, 2011, and a partial ISR Jan. 24, 2011; further ISR/WO Apr. 18, 2011), the IPRP for PCT/2010/052214 (Apr. 24, 2012), and an ISR/WO for PCT/US2012/043326 (Nov. 29, 2012). These are search documents, not prior art.
• Office Action in Korean Application No. 10-2012-7011820 (Aug. 23, 2013, with English translation) — a prosecution document, not prior art.

D. What the record shows about §102 versus §103

This matters for the question as posed:

1. No reference in the retrieved record was applied as a §102 anticipation rejection that survived. The claims issued only after NIKE amended to add the "skin material panel conforms to the mesh material panel and reveals a surface texture…" limitation. NIKE's own statements confirm the amendment was the reason for allowance.
2. The Examiner applied Vattes. NIKE's POPR expressly concedes the petition "Relies on the Same Primary Prior Art Reference Evaluated and Applied During Examination."
3. PUMA's IPR ground was §103(a), not §102 — Vattes in view of DE 2812760 — covering claims 1–14. The Board instituted on all challenged claims and all grounds on Oct. 31, 2019; the proceeding then terminated by settlement (Dec. 3, 2019) with no final written decision. So there is no adjudicated §102 or §103 holding for any reference.
4. Because the settlement produced no final decision, anything characterized as "anticipating" a given claim is a litigating position, not an established fact.

E. Claim-by-claim §102 mapping (best-supported reading)

Given that I could not retrieve the verbatim text of all 14 claims, the mapping below follows the claim elements that the PTAB institution decision and the D. Mass. claim construction opinion confirm are in the claims (independent claim 1 plus dependent claims 4 and 5, which recite regional coverage).

F. Explicit gaps and things I could not verify

• The complete face-of-patent citation list is not reproduced here. My source fragment for US 10,051,917 began partway through the publication list, so any granted U.S. patents cited on the front page (typically listed before the publications) are missing. I did not guess at them.
• DE 2812760: title, publication date, and Adidas-entity attribution are unverified; only the number and the "Adidas" label come from the petition.
• US 2007/0199210: I confirmed the publication and its content via PUMA Exhibit 1004 and the EP 1 825 996 A1 counterpart; I did not confirm whether the 11/362,248 application itself issued as a US patent.
• Filing dates for the 2010–2012 publications above are inferred from the standard 18-month publication lag, not read off the documents; where I say "potentially §102(e)," that is a conditional statement pending verification of the actual filing dates.
• No Federal Circuit or other appellate decision construing or invalidating any of these references against the '917 claims exists in the record I retrieved. The IPR settled before a final written decision (consistent with the litigation summary already prepared).

I'll analyze the prior art record for this patent. Let me first retrieve the prior-art citations and the IPR grounds, since the provided full text omitted the "Similar Documents / Citations" listing that Google Patents normally displays.

Good — I have the IPR ground (Vattes + Adidas DE2812760), the prosecution history (the "conforms/reveals" limitation was added by amendment), and a hint about two other references (Sokolowski, Dojan). Let me pull the specific reference details and the full claim set.

Let me pin down the two remaining pieces: the cited U.S. references on the face of the '917 patent, and the details of the Adidas DE2812760 reference relied on in the IPR.

Obviousness Analysis — US 10,051,917 B2 under 35 U.S.C. § 103

0. Source note on the "Prior Art section" of the page, and what it actually gives us

The Google Patents page as fetched (https://patents.google.com/patent/US10051917/en) exposes a "Prior Art" block containing only: (a) prior-art keywords — "mesh / panel / material panel / skin / substrate" — and (b) "Prior art date: 2009-10-21." The citation lists that Google Patents normally renders ("Similar Documents," "Cited By," the full "References Cited" table) were not present in the fetched text. So there is no enumerated prior-art list on this page to work from directly.

That gap is analytically informative in two ways:

1. Google's own keyword assignment for this patent is essentially the claim-1 limitation set. The five extracted terms — mesh, panel, material panel, skin, substrate — map one-to-one onto claim 1's three material panels (substrate / mesh / skin) and the "material panel" and "panel" concepts. Automated prior-art keyword extraction converges on exactly the combination that Vattes and Sokolowski disclose, which is a weak but useful corroboration that the composite-panel concept itself (as opposed to the surface-texture feature) is the crowded part of the art.
2. The front page's "References Cited" is long and old. The only fragment recoverable in this session is the beginning of the U.S. patent list — 194,866 A (9/1877 Gifford et al.) and 1,638,339 A (8/1927 Johnson), followed by "(Continued)" (Ex. 1001 as filed, https://www.docketalarm.com/cases/[PTAB](/ptab)/IPR2019-01058/Inter_Partes_Review_of_U.S._Pat._10051917/docs/05-03-2019-Petitioner/Exhibit-1001-Exhibit_1001.pdf). A cited-art list running from 1877 forward signals a mature, incremental art, which matters under KSR.

Because the page's Prior Art section is empty of references, the operative prior-art record for this analysis is the art actually placed in issue in IPR2019-01058 and in the '917 prosecution, plus the two references Nike itself put into the record as allegedly cumulative. Those are identified in §2 below. Everything I say about a reference's disclosure is attributed to the party who characterized it, with a confidence flag.

1. Legal framework, and why the priority-date fight does not matter here

Governing law. The application (Ser. No. 15/395,110) was filed Dec. 30, 2016, but claims priority back to Oct. 21, 2009 (via Ser. Nos. 12/603,494 and 12/603,498) through the chain set out in the specification. Because the claims' effective filing date is before March 16, 2013, pre-AIA §§ 102/103 apply. A useful consequence: every reference in the two operative grounds is a printed publication or patent published more than one year before October 21, 2009, i.e., § 102(b) art no matter which date in the 2009–2011–2016 chain the claims ultimately receive. The § 103 analysis is therefore insensitive to the priority dispute — a robustness point worth stating up front.

The Graham factors.

KSR framing. This is a textbook KSR case structure: the claimed subject matter is a combination of known elements (substrate panel + mesh panel + skin panel, bonded) with one known surface-treatment technique (conforming polymer skin over mesh), producing predictable results (a durable, breathable, aesthetically textured upper). No express teaching, suggestion or motivation is required; design incentives, market demand, and "known technique to improve similar device in the same way" suffice. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417–22 (2007); MPEP § 2143(A), (C), (F).

2. The operative prior-art references

Ground 1 references (the ground the Board instituted on)

The Board's institution decision (Oct. 31, 2019) instituted on all challenged claims (1–14) and all grounds, which means the Board found a reasonable likelihood that at least one claim is unpatentable over Vattes + Adidas — i.e., an expert panel read the record as making out a prima facie § 103 case that included the "conforms/reveals" limitation. That is not a holding, but it is the single most probative signal available on this patent.

References Nike put in the record, and PUMA's treatment of them

Additional art not confirmed to be in the '917 record (offered as candidates only — flagged)

• US 7,047,668 B2 — Burris et al. (Nike), "Article of footwear having an upper with a polymer layer" (issued 2006): substrate layer of air-permeable mesh/textile; a polymer layer defining apertures that expose portions of the substrate, the polymer infiltrating the substrate to secure it, forming an exterior surface, optionally stepped to form ridges on the exterior. This is the closest single-reference analogue to the "skin over mesh" concept I located. Confidence that it is in the '917/IPR record: low — it surfaced in my search, not from the '917 docket.
• US 4,447,967 (Zaino) — textile upper with polymer injected into selected zones to reinforce against abrasion; and US 4,813,158 (Brown) / 4,756,098 (Boggia) — inextensible material secured to the upper to limit stretch. These are cited within Sokolowski as known techniques (¶[0050] of US 2006/0048413). They are useful for the motivation showing, since a Nike reference itself treats "polymer into a textile upper for abrasion resistance" and "mesh/inextensible layer for controlled stretch" as known.
• WO 98/02300 (PCT/US97/12108), published Jan. 1998: laminate with a mesh of intersecting first/second strands bonded to a fabric layer, with distinct strand softening temperatures so one strand set bonds while the other remains — relevant to "mesh bonded to substrate via a meltable bonding material."
• WO 2013/016405 (pub. Jan. 31, 2013): mesh immobilized between two biaxially-oriented films. Not prior art if the claims keep their 2009/2011 date; listed only for completeness of the art field.

3. Level of ordinary skill (POSITA)

I could not retrieve the stipulated POSITA level from the petition or institution decision. A representative level for this art, consistent with the subject matter and with how the Board treated the issues (a degree in mechanical/textile engineering or industrial design, plus a few years of footwear design and manufacturing experience, or equivalent), is:

a person with at least a bachelor's degree in mechanical engineering, textile engineering, industrial design, or a comparable field, and 2–5 years of experience designing and/or manufacturing footwear uppers, or equivalent practical experience.

Flag: this is an assumption, not a record fact. It matters mainly for the "conforms/reveals" limitation, because a POSITA with footwear manufacturing experience would know that compression molding or heat-pressing a meltable polymer skin against an open mesh, under a compressible pad, transfers the mesh's relief into the skin's surface (that is precisely the mechanism the '917 specification describes at 7:26–31 and 15:37–45).

4. Ground 1 — Vattes (Ex. 1004) in view of Adidas (Ex. 1005/1006)

4.1 Claim 1 element-by-element

4.2 Motivation to combine — articulated rationales

Five independent KSR/MPEP rationales support the combination; any one suffices, and they overlap:

1. Same field of endeavor, same problem (MPEP 2144.01). Both references are directed to athletic/footwear uppers that must simultaneously ventilate, support, and resist abrasion. Vattes solves it with a compression-molded foam/mesh/foam laminate; Adidas solves it with a mesh carrier and an overlying polymer skin. A POSITA starting from Vattes would naturally look to Adidas (and vice versa).
2. "Known technique to improve a similar device in the same way" (KSR, 550 U.S. at 417; MPEP 2143(C)). Applying a meltable polymer skin against a mesh so the skin conforms to and reveals the mesh relief is a known surface treatment. The '917 specification itself describes no more than this (7:26–31, 15:37–45). Sokolowski (Nike's own art) likewise teaches that the mesh layer may be "molded or otherwise formed to exhibit any practical and aesthetically-pleasing structure" — confirming that manipulating the mesh/skin surface for aesthetics was conventional.
3. Design incentive / aesthetic driver — express in this very patent (MPEP 2144.04). The '917 Background states that "footwear design (including athletic footwear design) is also driven by aesthetics" and that a complex process "can potentially limit a manufacturer's ability to vary that shoe's design to achieve different aesthetic effects." A patent applicant's own acknowledgment of a design driver is a legitimate motivation to combine. KSR expressly recognizes "market forces" and "design trends" as motivations.
4. The '917's own stated engineering rationale supplies the reason to use Vattes's mesh with a lighter substrate. The specification argues that bonding mesh to a substrate "obviat[es] the need for another material … to provide tensile strength," "permits upper 11 to be much lighter," and permits larger ventilation holes because the mesh "reinforce[s] the substrate and help[s] retain individual portions of the substrate." That is a direct, articulated motivation to (i) take a layered upper with a mesh layer (Vattes) and (ii) incorporate a partial skin/abrasion layer (Adidas) rather than a full-weight outer layer.
5. Predictable results, no teaching away, reasonable expectation of success. All the combining steps — adhesive bonding, hot-melt/thermal fusion, compression molding under a conformable pad — were routine in this art (Vattes: compression molding; Sokolowski: molding + adhesive with textile infiltration; WO 98/02300: heat-bonding a mesh to a fabric). Nothing in Vattes requires the mesh to be hidden; Vattes's emphasis is on layer unity, not on obscuring surface relief. There is no teaching away in either reference.

4.3 What Nike argued against Ground 1 (and why it is only a partial defense)

Nike's Preliminary Response (Aug. 15, 2019) framed its defense as:

• "Vattes and adidas Do Not Disclose Material Claim Limitations in All Challenged Claims" (§ V.A), and
• "Petitioner's Obviousness Arguments Rely on Hindsight and Speculation and Fail to Provide Sufficient Motivation to Combine Vattes and adidas" (§ V.B), faulting the petition for failing to explain how Vattes would be modified and why a POSITA would modify it (§§ V.B.1–2).

That is a procedural/evidentiary attack ("insufficiently articulated motivation"), not a substantive showing that the art is silent. It is also the same species of argument Nike used successfully against adidas AG in unrelated knit-upper IPRs (deficient motivation-to-combine showings). Here it failed at the institution stage: the Board instituted on all claims and all grounds. The lesson for anyone relying on this patent is that the "no articulated motivation" defense is record-dependent; a petition with a competent expert declaration (Petitioner relied on Dr. Stefanyshyn, ¶¶ 39–40) clears the institution bar.

4.4 Claim construction wrinkle that cuts in favor of obviousness

The parties fought over "conforms to … and reveals a surface texture corresponding to …":

• PUMA proposed requiring "the exterior surface of the skin material panel reveals protrusions of the mesh material panel generally perpendicular to the surface of the skin material panel" (with an expert declaration in the IPR endorsing that reading).
• D. Mass. rejected it as "unnecessarily complicated and difficult to follow" and unsupported by the specification, holding that it is the view, not the claim, that the specification describes as perpendicular, and adopting the ordinary and customary meaning. (https://www.courtlistener.com/opinion/[9731541](/patent/9731541)/nike-inc-v-puma-north-america-inc/)

This corroborates rather than contradicts the earlier section, and it matters for § 103: the broader the construction of "conforms/reveals," the easier it is for Vattes + Adidas to meet it. PUMA tried to narrow the limitation so that only a specific perpendicular-protrusion morphology would infringe (and thus only a narrow class of art would anticipate/obviously render it). Under the court's broader reading, a much wider range of skin-over-mesh structures — including Adidas's, and arguably Burris's stepped-ridge polymer layer — falls within the claim. A limitation that is broad enough to catch ordinary "skin over mesh" structures is also broad enough to be obvious over them. That is the core § 103 asymmetry here.

5. The dependent claims (2–14)

Important limitation on this section: I could not retrieve the full verbatim text of claims 2–14, and I therefore cannot confirm whether a second independent claim exists (the title's "…and method of making same" makes a method claim plausible, but I will not assert it). What follows is derived from (a) claim language quoted in the D. Mass. opinion and the PTAB papers, and (b) the specification. Treat it as a concept-level analysis.

6. Alternative and stacked grounds

6.1 Ground 1A: Vattes + Adidas + Sokolowski (recommended)

Adding Sokolowski pre-empts the two most plausible Nike rebuttals: (i) that a foam layer is not a "substrate material panel," and (ii) that the skin must be a distinct applied skin rather than a foam layer. Sokolowski supplies a literal three-layer structure — textile interior layer / polymer mesh intermediate layer / textile exterior layer — coextensive and stitchedlessly bonded, with the mesh bonded to (molded into) both neighbors. Combined with Adidas's conforming-skin teaching, all of claim 1 and the material-based dependent claims are met. Motivation is at its strongest here: both Vattes and Sokolowski are compression-mold/laminate uppers, and Sokolowski expressly frames the mesh layer's aesthetic potential, aligning with Adidas's conforming-skin aesthetics.

6.2 Ground 2: Sokolowski + Adidas (independent of Vattes)

• Sokolowski alone gives: substrate panel, mesh panel (intermediate layer 50 with mesh structure), skin panel (exterior layer 60), mesh captured between the other two and bonded throughout, mesh limiting stretch, and layers extending under/around a foam midsole (the double-lasting/extension and foam-element concepts).
• Sokolowski's known gap — PUMA's own concession that its skin layer 60 does not conform to mesh 50 (gaps at the sides) — is filled by Adidas.
• Motivation: both are layered footwear uppers; conformance/relief is a known surface treatment; Sokolowski invites predetermined "aesthetically-pleasing" mesh structure.
• Confidence: moderate-to-high, subject to the unverified Adidas text.

6.3 Ground 3: Burris + Adidas (or Burris + Vattes) — candidate only

US 7,047,668 already discloses a substrate layer of air-permeable mesh/textile with a polymer layer that infiltrates the substrate, defines apertures exposing the substrate, and forms the exterior surface, optionally stepped to create exterior ridges. That reads on much of claim 1 without needing Adidas at all, except the "conforms/reveals mesh texture" element — which Adidas supplies. This ground looks strong on its face but I could not confirm Burris is in the '917's cited-art or IPR record. Verify before relying on it.

6.4 Ground 4: Dojan + Sokolowski + Adidas — weak

PUMA's own concession that Dojan's parallel strands 34 are not a "mesh … panel" cuts against using Dojan as the primary reference. Use Dojan, if at all, only for secondary features (strand/polymer reinforcement), not for "mesh material panel."

6.5 Ground 5 (hypothesis, flagged): same-family art / § 102(e)–§ 103

If the added "conforms/reveals" limitation lacks written-description support in the Oct. 21, 2009 applications (12/603,494 / 12/603,498), then claim 1's effective filing date moves forward (to Feb. 17, 2011 or Sep. 30, 2011), and the published siblings/priority applications in this same family could become § 102(e) art (subject to the pre-AIA § 103(c) common-ownership disqualifier, which would apply to § 102(e)-only art). I have no evidence that anyone raised or litigated this. It is a genuine, unexplored vulnerability, but it is a hypothesis, not a finding — the Board never addressed priority.

7. Honest assessment: strength and weaknesses of the § 103 case

What is strong

• The Examiner allowed the claims only after the "conforms/reveals" amendment → every other claim-1 element is admitted or effectively conceded to be in the art of record.
• Vattes discloses the complete three-layer, mesh-between-two-layers, bonded, molded upper architecture; Adidas supplies the only remaining flourish.
• Sokolowski is Nike's own art in the same line of business, published in 2006, and the § 103(c) common-ownership escape hatch does not reach it (it is § 102(b) art).
• The Board instituted on all claims and all grounds, i.e., an expert panel found a reasonable likelihood of unpatentability over Vattes + Adidas including the added limitation.
• The D. Mass. court's broad construction of the conforms/reveals term simultaneously widens the class of art that reads on it — the exact § 103 asymmetry discussed in §4.4.

What is weak or unresolved

• DE 2812760's actual text is unverified in this session. Everything about Adidas's disclosure is second-hand from Petitioner's papers. If Adidas teaches conforming a foam over a mesh rather than creating a revealed surface texture, the ground weakens materially.
• Nike's "insufficiently articulated motivation" defense is the historically successful one, and it failed here only because a well-declared expert (Stefanyshyn ¶¶ 39–40) supplied the bridge. A weaker petition could fail.
• The "throughout the entire skin/mesh/substrate overlap area" and the negative "not captured" limitations are quantitative/negative and can be argued to require a particular coextensive geometry; expect a fight about whether Vattes/Adidas meet them across the whole overlap area.
• No adjudication exists. The IPR settled Dec. 3, 2019 without a final written decision; the D. Mass. case was dismissed in January 2020. Under 35 U.S.C. § 315(e)(1), IPR estoppel attaches only after a final written decision — so no estoppel arose from IPR2019-01058. The prior-art positions in it remain fully available to PUMA or any other party in a future forum.
• No objective-indicia record was ever developed or adjudicated for the '917 (in contrast to the related knit-upper litigation, where Nike pressed — and the Federal Circuit twice rejected — long-felt-need arguments). Where a patentee has no nexus-proven secondary considerations, a well-supported prima facie combination normally controls.

8. Bottom line

1. The strongest § 103 ground is Vattes (US 2007/0199210 A1) in view of Adidas (DE 2812760), optionally stacked with Sokolowski (US 2006/0048413 A1 / US 8,215,032 B2). This is the ground the PTAB instituted on all claims, and the motivation rests on five independent rationales (same field, known technique, aesthetics as an express design driver in the '917's own Background, the '917's own weight/breathability rationale, and predictable results with no teaching away).
2. A Sokolowski + Adidas ground is independently viable and is preferable for the dependent claims that recite a three-dimensional shell, lower extensions, and a foam midsole bonded to those extensions, because Sokolowski itself discloses layers running around and beneath a midsole.
3. Everything turns on two factual questions: (a) what DE 2812760 actually discloses (I could not verify it), and (b) whether "conforms … reveals a surface texture" is construed broadly (D. Mass.) or narrowly (PUMA's perpendicular-protrusion theory). On the broad construction, the limitation is more likely obvious; on the narrow construction it is harder to meet but also harder to design around, which is precisely why the parties litigated it twice.
4. Confidence overall: moderate-to-high that claims 1 and the structural dependent claims would be held obvious on the Vattes + Adidas (+ Sokolowski) record, conditional on the Adidas disclosure being as Petitioner characterized it; low confidence as to any method claim (I could not confirm one exists) and as to the foam-midsole/extension claims absent Sokolowski.

Explicit non-findings (do not treat as established)

• I did not retrieve the verbatim text of claims 2–14, nor confirm whether an independent method claim exists.
• I did not verify the text of DE 2812760; its teaching is stated as Petitioner characterized it.
• I did not retrieve the '917's full "References Cited" list; only its first two U.S. entries (US 194,866; US 1,638,339).
• Burris US 7,047,668 and WO 98/02300 are offered as candidate art; I could not confirm they are part of the '917's cited-art or IPR record.
• I could not confirm the stipulated POSITA level in the IPR; §3 is a representative assumption.
• No final written decision, no court judgment, and no objective-indicia findings exist for this patent — the IPR settled and the litigation was dismissed.