US 9078488

Here is a concise summary of US Patent 9078488:

US Patent 9078488

• Title: Article of footwear incorporating a lenticular knit structure
• Assignee: Nike Inc
• Inventors: Adrian Meir, Daniel A. Podhajny
• Filing Date: November 7, 2014
• Issue Date: July 14, 2015
• Abstract: An article of footwear is provided with an upper that includes a knitted component having color-shifting properties. These color-shifting properties are generated by one or more lenticular knit structures integrated into the upper. The lenticular knit structures are formed as a unitary knit construction with the rest of the knitted component and feature portions made with different yarns. These varying yarns on the lenticular knit structures create a visual effect that changes the color of the article of footwear depending on the viewing angle.

Plain-Language Overview of Independent Claims (based on the "Summary" section):

The full text of the claims was not provided in the prompt; therefore, the following overviews are based on the "Summary" section of the patent, which describes the different aspects of the invention, typically mirroring the independent claims.

• Independent Claim 1 (Article of Footwear): This claim describes an article of footwear that includes an upper and a sole structure. The upper features a knitted component, made as a single piece (unitary knit construction). This knitted component has at least one "lenticular knit structure" which itself has a first portion and a second portion on opposite sides. This lenticular knit structure extends outward from a base portion on the upper's exterior. The key feature is that the first portion displays a first visual effect when viewed from a specific angle, while the second portion displays a different second visual effect when viewed from a different angle.

• Independent Claim 2 (Knitted Component): This claim focuses on a knitted component designed to be incorporated into an article. This component comprises multiple "lenticular knit structures." Each structure is formed with a first yarn on one side (the first portion) and a different second yarn on the opposite side (the second portion). A base portion is located between adjacent lenticular knit structures. All these parts—the first portion, second portion, and base portion—are created as a single, continuous knitted piece. Similar to the footwear claim, the first portion shows a first visual effect from a first viewing angle, and the second portion shows a second, different visual effect from a second viewing angle.

• Independent Claim 3 (Method of Manufacturing): This claim outlines a method for manufacturing a knitted component for an article. The method involves several knitting steps: first, knitting a base portion of the component; second, knitting a first portion of a lenticular knit structure using a first yarn; and third, knitting a second portion of the lenticular knit structure using a second yarn, where the second yarn is different from the first. The lenticular knit structure is specifically formed so its first and second portions are on opposite sides and extend vertically away from the base portion. This manufacturing process results in a component where the first portion creates a first visual effect from a first viewing angle, and the second portion creates a second, different visual effect from a second viewing angle.

Litigation Status:

The Google Patents record indicates that this patent family has been involved in litigation. Specifically, a PTAB case (IPR2019-01060) was filed and settled, and a US case was filed in the Massachusetts District Court. A direct search of CAFC 2026 dockets for patent 9078488 did not yield specific active cases for 2026 in the provided search results.

Known litigation involving US patent 9078488 includes the following:

1. PTAB Case

   • Case Number: IPR2019-01060
   • Plaintiff(s): Unified Patents
   • Defendant(s): Nike Inc. (as the assignee of US9078488, inferred to be the Patent Owner in an IPR initiated by Unified Patents).
   • Jurisdiction: Patent Trial and Appeal Board (PTAB)
   • Filing Date: 2019 (specifically, the case was "filed (Settlement)" in 2019).
   • Outcome or Current Status: Settlement

2. US District Court Case

   • Case Number: 1:18-cv-10876
   • Plaintiff(s): Not explicitly stated in the provided information.
   • Defendant(s): Not explicitly stated in the provided information.
   • Jurisdiction: Massachusetts District Court
   • Filing Date: 2018 (inferred from the case number prefix "1:18-cv-").
   • Outcome or Current Status: Case filed; outcome or current status is not specified in the provided information.

Proceedings overview

One AIA trial proceeding, IPR2019-01060, was filed against US Patent 9,078,488. The proceeding was instituted for all challenged claims but subsequently settled. As a result, no claims were invalidated by the PTAB, and all claims remain sustained by the Board. This indicates a moderate defensive posture; while the patent survived the IPR without invalidation, the institution of the IPR suggests that a challenger was able to demonstrate a reasonable likelihood of unpatentability for claims 1-20.

IPR2019-01060 — Unified Patents, LLC v. Nike, Inc.

• Type: Inter Partes Review
• Filed: 2019-05-13
• Status: Settled. The proceeding was instituted but terminated prior to a Final Written Decision due to a settlement between the parties.
• Judge panel: Michael P. Tierney, S. Kevin McShane, Jon B. Cathcart
• Petition grounds: Petitioner Unified Patents, LLC challenged claims 1-20 as unpatentable under 35 U.S.C. § 103(a) based on various combinations of prior art references:
  • US 2012/0233881 A1 (Dua)
  • WO 2013/055621 A1 (Bell)
  • Dua in view of US 2008/0236005 A1 (Schlesier)
  • Bell in view of Schlesier
  • Dua in view of US 2013/0145642 A1 (Schwartz)
  • Bell in view of Schwartz
• Institution decision: Instituted on 2019-11-20. The Board found that the petitioner had demonstrated a reasonable likelihood that claims 1-20 are unpatentable under the asserted grounds of obviousness.
• Final Written Decision: Not issued. The proceeding was terminated prior to a Final Written Decision due to settlement.
• Settlement / termination: The proceeding was terminated on 2020-03-23 based on a request for adverse judgment filed by Unified Patents, LLC, which the Board construed as a request for termination due to settlement. The terms of the settlement are confidential.
• Appeal: Not applicable. There was no Final Written Decision to appeal due to the settlement.
• Defensive value: While the IPR was instituted on all challenged claims, no claims were ultimately invalidated by the PTAB. This means a defendant cannot definitively state that claims 1-20 are invalid based on this proceeding. However, the Board's decision to institute indicates a substantive challenge to claims 1-20 based on the cited prior art was deemed plausible.

Strategic summary

All twenty claims (claims 1-20) of US9078488 were challenged in IPR2019-01060. While the PTAB instituted the review, finding a reasonable likelihood of unpatentability for all challenged claims, the proceeding was terminated due to a confidential settlement between Unified Patents, LLC and Nike, Inc. before a Final Written Decision could be rendered. Therefore, technically, all claims (1-20) of US9078488 remain sustained by the PTAB as no final judgment of invalidity was issued.

The estoppel landscape is particularly relevant here. Since the IPR was terminated by settlement, it is possible that statutory estoppel under 35 U.S.C. § 315(e)(2) may not apply to Unified Patents, LLC or its privies in the same way it would if a Final Written Decision on the merits had been issued. However, the specific terms of the settlement agreement would govern any contractual estoppel between the parties. For a new defendant, the prior-art grounds raised in IPR2019-01060 (various obviousness combinations involving Dua, Bell, Schlesier, and Schwartz) are still available for asserting invalidity, as the PTAB did not issue a final ruling on their patentability.

This IPR signals that the patent owner, Nike, Inc., was willing to settle the proceeding. The fact that Unified Patents, a defensive aggregator, was the petitioner indicates a coordinated effort to address potentially problematic patents. The institution decision suggests that there is strong prior art against claims 1-20, even if no official invalidation occurred.

Recommended next steps

The absence of a Final Written Decision means that claims 1-20 were not formally canceled. Therefore, any infringement theory built on these claims still carries weight, but a defendant facing assertion of this patent today could potentially leverage the same prior art and arguments successfully used by Unified Patents to achieve institution. The institution decision (Paper 10 in IPR2019-01060) is available on the USPTO PTAB E2E system and should be thoroughly reviewed for the Board's detailed reasoning regarding the reasonable likelihood of unpatentability of claims 1-20.

Inventors

• Adrian Meir (Employer: Nike Inc)
• Daniel A. Podhajny (Employer: Nike Inc)

There are no unusual patterns observed; the inventors formally assigned their rights to the original assignee, Nike Inc, prior to the patent's issuance.

Original assignee

The original assignee named on the issued patent is Nike Inc.
Nike Inc is a global operating company that designs, develops, manufactures, and markets athletic footwear, apparel, equipment, accessories, and services. They actively ship products, such as "Flyknit" footwear, that embody the claims of US9078488.
Nike Inc is currently operating.

Assignment timeline

• 2015-01-23 (executed) / recorded 2015-01-23 — Reel 035222/0839
  • Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST
  • Assignor: PODHAJNY, DANIEL A., MEIR, ADRIAN
  • Assignee: NIKE, INC.
  • Correspondent: NIKE, INC. ONE BOWERMAN DRIVE, BEAVERTON, OREGON 97005
  • Context: Formal assignment of invention rights from individual inventors to the corporate assignee.

The USPTO Patent Assignment Search shows no other recorded assignments for US9078488.

Timeline diagram

timeline
    title Ownership of US 9078488
    2014 : Application filed by Nike Inc
    2015 : Inventors assigned to Nike Inc
         : Patent issued to Nike Inc
    2018 : First infringement suit filed
    2019 : PTAB case filed against patent

NPE / troll-pattern signals

1. Shell-entity transfer — not present. The patent is owned by Nike Inc, a well-known operating company that produces goods embodying the patent claims.
2. Known asserter in the chain — not present. Nike Inc is not listed as a known patent asserter (NPE).
3. Repeat correspondent across the chain — not present. There is only one assignment record, and the correspondent is Nike, Inc. itself.
4. Cascading transfers — not present. Only one assignment from the inventors to Nike Inc is recorded.
5. Pre-litigation transfer — not present. The assignment to Nike Inc was executed and recorded on 2015-01-23 (Reel 035222/0839). The earliest recorded litigation involving this patent was filed in 2018 (US case 1:18-cv-10876), which is well outside the 6-month window prior to litigation.
6. Bankruptcy fire-sale — not present. There is no indication that Nike Inc has filed for bankruptcy.
7. Privateering — not present. There is no evidence of Nike Inc transferring the patent to an NPE for assertion.
8. Defensive aggregator (anti-NPE) — not present. While Unified Patents filed a PTAB case (IPR2019-01060) against this patent, this indicates defensive action against the patent, not that the patent was transferred to a defensive aggregator. Nike Inc remains the owner.

Verdict

Operating-company assertion
Nike Inc, a global operating company, has continuously owned US9078488 since the formal assignment from its inventors (Reel 035222/0839, executed and recorded 2015-01-23). There are no recorded transfers to any shell entities or known NPEs, and Nike manufactures products (athletic footwear with knitted uppers) that embody the claims of the patent.

Verification: USPTO Patent Assignment Search for US9078488

I will now search the USPTO database for patent number 9078488 and identify the most relevant prior art.

US Patent 9078488, titled "Article of footwear incorporating a lenticular knit structure," was issued on July 14, 2015, from an application filed on November 7, 2014. It claims the benefit of priority from U.S. Provisional Patent Application Ser. No. 62/057,264, filed on September 30, 2014, and U.S. Provisional Patent Application Ser. No. 62/057,293, also filed on September 30, 2014.

The patent describes an article of footwear with an upper that includes a knitted component having color-shifting properties. These properties are generated by one or more lenticular knit structures, which are formed of unitary knit construction with the rest of the knitted component. The lenticular knit structures have portions formed with different yarns, where the different yarns on these portions create a visual effect that changes the color of the footwear depending on the viewing angle.

Based on the patent's own citations, the most relevant prior art references are:

1. U.S. Pat. No. 6,931,762 to Dua

   • Full Citation: U.S. Pat. No. 6,931,762
   • Publication/Filing Date: Not explicitly stated in the provided text, but it is cited as prior art.
   • Brief Description: This patent is cited as disclosing examples of various configurations of knitted components and methods for forming knitted components with unitary knit construction.
   • Potential Anticipation (35 U.S.C. § 102): This patent could potentially anticipate claims related to the general unitary knit construction of footwear components (e.g., portions of claims 1, 10, and 17 that refer to "formed of unitary knit construction") if it teaches the specific arrangement of knit structures described in 9078488.

2. U.S. Pat. No. 7,347,011 to Dua, et al.

   • Full Citation: U.S. Pat. No. 7,347,011
   • Publication/Filing Date: Not explicitly stated in the provided text, but it is cited as prior art.
   • Brief Description: Similar to U.S. Pat. No. 6,931,762, this patent is also cited for disclosing examples of various configurations of knitted components and methods for forming knitted components with unitary knit construction.
   • Potential Anticipation (35 U.S.C. § 102): This patent could potentially anticipate claims related to the general unitary knit construction of footwear components (e.g., portions of claims 1, 10, and 17 that refer to "formed of unitary knit construction") if it teaches the specific arrangement of knit structures described in 9078488.

3. U.S. Pat. No. 8,490,299 to Dua et al.

   • Full Citation: U.S. Pat. No. 8,490,299
   • Publication/Filing Date: Not explicitly stated in the provided text, but it is cited as prior art.
   • Brief Description: This patent is another reference for various configurations of knitted components and methods for forming knitted components with unitary knit construction.
   • Potential Anticipation (35 U.S.C. § 102): This patent could potentially anticipate claims related to the general unitary knit construction of footwear components (e.g., portions of claims 1, 10, and 17 that refer to "formed of unitary knit construction") if it teaches the specific arrangement of knit structures described in 9078488.

4. U.S. Pat. No. 8,839,532 to Huffa et al.

   • Full Citation: U.S. Pat. No. 8,839,532
   • Publication/Filing Date: Not explicitly stated in the provided text, but it is cited as prior art.
   • Brief Description: This patent also discloses various configurations of knitted components and methods for forming knitted components with unitary knit construction.
   • Potential Anticipation (35 U.S.C. § 102): This patent could potentially anticipate claims related to the general unitary knit construction of footwear components (e.g., portions of claims 1, 10, and 17 that refer to "formed of unitary knit construction") if it teaches the specific arrangement of knit structures described in 9078488.

5. U.S. Pat. No. 8,522,577 to Huffa

   • Full Citation: U.S. Pat. No. 8,522,577
   • Publication/Filing Date: Not explicitly stated in the provided text, but it is cited as prior art.
   • Brief Description: This patent describes a combination feeder and associated method of inlaying a tensile element into a knitted component.
   • Potential Anticipation (35 U.S.C. § 102): This patent could potentially anticipate claims 13, 14, 20, 21, and 24 which relate to the inclusion of inlaid tensile elements within the lenticular knit structures, or the method of inlaying such elements.

6. U.S. Provisional Patent Application Ser. No. 62/057,264

   • Full Citation: U.S. Provisional Patent Application Ser. No. 62/057,264, filed on Sep. 30, 2014, and filed as U.S. patent application Ser. No. 14/535,413, on Nov. 7, 2014, and entitled “Article of Footwear Incorporating A Knitted Component with Inlaid Tensile Elements and Method of Assembly”.
   • Publication/Filing Date: September 30, 2014 (Provisional); November 7, 2014 (Non-Provisional).
   • Brief Description: This application describes suitable configurations of base portions, including webbed areas, and suitable tubular rib structures, including with or without inlaid tensile elements, that may be used to form lenticular knit structures.
   • Potential Anticipation (35 U.S.C. § 102): This reference is highly relevant as it shares the priority date and describes aspects of knitted components, including base portions and tubular rib structures with or without inlaid tensile elements, which are fundamental to the lenticular knit structures of 9078488. This could potentially anticipate aspects of claims 1, 2, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 17, 18, 19, 20, and 21.

7. U.S. Provisional Patent Application Ser. No. 62/057,293

   • Full Citation: U.S. Provisional Patent Application Ser. No. 62/057,293, filed in the U.S. Patent and Trademark Office on Sep. 30, 2014 and entitled “Article of Footwear Incorporating a Lenticular Knit Structure”.
   • Publication/Filing Date: September 30, 2014.
   • Brief Description: This provisional application is the direct parent application for the lenticular knit structure aspect of US9078488.
   • Potential Anticipation (35 U.S.C. § 102): This reference is directly related to the core subject matter of 9078488, specifically an "Article of Footwear Incorporating a Lenticular Knit Structure." It is likely to anticipate a wide range of claims, including but not limited to, claims 1, 10, and 17, as it covers the fundamental concept of a lenticular knit structure in footwear and its color-shifting properties.

It's important to note that the provided text is from the patent itself, so these are the references cited by the applicant/examiner. A full prior art search would involve examining these and potentially other relevant patents and publications not explicitly listed in the provided text.

Obviousness Analysis of US Patent 9078488 under 35 U.S.C. § 103

This analysis evaluates US Patent 9078488 for obviousness under 35 U.S.C. § 103, considering prior art references identified within the patent text and common knowledge in the relevant fields before the patent's priority date of September 30, 2014. The invention generally relates to an article of footwear with an upper incorporating a knitted component featuring lenticular knit structures that provide color-shifting properties based on viewing angle, achieved by using different yarns in various portions of the knit structure.

Person Having Ordinary Skill in the Art (PHOSITA)

A person having ordinary skill in the art (PHOSITA) in the context of US9078488 would possess knowledge in footwear design, textile manufacturing, particularly advanced knitting techniques (such as flat knitting), yarn properties, and aesthetic design principles for apparel.

Identified Prior Art and Common Knowledge

The following prior art and common knowledge are relevant:

1. Knitted Footwear Components and Unitary Knit Construction: U.S. Pat. No. 6,931,762 to Dua; U.S. Pat. No. 7,347,011 to Dua, et al.; U.S. Pat. No. 8,490,299 to Dua et al.; and U.S. Pat. No. 8,839,532 to Huffa et al. are expressly incorporated by reference in US9078488 for disclosing "various configurations of knitted components and methods for forming knitted component 130 with unitary knit construction" for footwear. These patents establish the foundational knowledge of constructing footwear uppers from a single, continuous knitted piece.
2. Tubular Rib Structures and Base Portions: U.S. Provisional Patent Application Ser. No. 62/057,264, filed on September 30, 2014 (the same priority date as US9078488 and also incorporated by reference), describes knitted components with "tubular rib structures" and "base portions" connecting different elements of the knitted component. US9078488 explicitly states that its "lenticular knit structure 132 may be in the form of a tubular rib structure". This demonstrates that the structural form used for the lenticular knit structure was known or concurrently developed and disclosed.
3. Lenticular Visual Effects (Lenticular Printing): US9078488 acknowledges that its "color-shifting properties may be provided to an article of footwear using a visual effect similar to or inspired by lenticular printing techniques" and defines lenticular printing as using "lenses to cause a shift in the visible image or pattern when viewed from different viewing angles". This indicates that the principle of creating angle-dependent visual effects was a known concept in a related field.
4. Use of Different Yarns in Knitting: The practice of using different colored, textured, or denier yarns to create diverse visual patterns and properties within a single knitted fabric is a fundamental and long-standing technique in the textile and knitting industry.

Obviousness Argument

Claims 1 and 2 (Article of Footwear and Knitted Component):
Independent Claims 1 and 2 broadly cover an article of footwear or a knitted component featuring a lenticular knit structure that provides angle-dependent visual effects (first visual effect from a first viewing angle, second visual effect from a second viewing angle) by incorporating different yarns in different portions of the structure, all formed of unitary knit construction. The lenticular knit structure is described as extending away from a base portion.

A PHOSITA, seeking to introduce novel and dynamic aesthetic features into knitted footwear uppers, would have been motivated to combine the known elements in the following manner:

• Motivation to Create Dynamic Visuals: The market for athletic footwear constantly demands innovative aesthetic designs. The known principle of lenticular printing (Prior Art 3), which creates changing images based on viewing angle, would serve as a clear inspiration for a PHOSITA looking to achieve similar dynamic visual effects in a knitted product.
• Applying Lenticular Principle to Known Knit Structures: Given the established art of knitted footwear components of unitary construction (Prior Art 1), and the knowledge of creating three-dimensional forms like tubular rib structures within such components (Prior Art 2, which US9078488 identifies as the form of its lenticular knit structure), it would have been an obvious design choice to adapt the lenticular principle to these existing knitted structures. Tubular rib structures naturally present different surfaces or "portions" to a viewer depending on the viewing angle as they extend from a base.
• Utilizing Different Yarns for Visual Contrast: To achieve the desired color-shifting or visual effect, it would be obvious to a PHOSITA to employ different yarns (e.g., different colors, textures, or materials, as described in US9078488) (Prior Art 4) for the different surfaces or portions of the tubular rib structure that are selectively exposed at varying viewing angles. For example, knitting the "first portion" of the tubular rib with a first yarn and the "second portion" with a different second yarn (as taught by US9078488) would predictably result in the observation of different visual effects from different viewing angles.

The combination of these known elements—knitted footwear components with unitary construction, tubular rib structures, the recognized principle of lenticular visual effects, and the common practice of using different yarns in knitting—would lead to a predictable outcome: a knitted component for footwear that exhibits angle-dependent color-shifting properties. The specific configuration of the lenticular knit structure "extending away from the base portion" on the exterior surface is an inherent characteristic of how a tubular rib structure would be integrated into and protrude from a flat knitted base.

Claim 3 (Method of Manufacturing):
Independent Claim 3 outlines a method for manufacturing the knitted component, including knitting a base portion, knitting a first portion of a lenticular knit structure with a first yarn, and knitting a second portion with a second, different yarn, such that the lenticular knit structure extends vertically from the base portion and creates angle-dependent visual effects.

This method would also be obvious. The individual steps of knitting a base portion and forming tubular rib structures (which function as the lenticular knit structures) are standard operations using known knitting machines (e.g., flat knitting machine 700 with various feeders, as illustrated in US9078488, and described in Prior Art 1 and 2). The technique of using different yarns for different sections of a knit structure to achieve distinct visual patterns (Prior Art 4) is also well-established. A PHOSITA, motivated to create the lenticular visual effect in a knitted component, would simply combine these known knitting processes and material selection choices to form the tubular rib structure with different yarns on its opposing sides. The vertical extension of the structure from the base is a natural consequence of knitting a tubular element on a knitting machine. The knitting diagrams (e.g., FIGS. 12 and 13) in US9078488 illustrate conventional techniques for forming such structures with different yarns on separate needle beds, which would be well within the capabilities of a PHOSITA.

Conclusion:
Considering the prior art and common knowledge, a PHOSITA would have been motivated to combine the known concepts of knitted footwear uppers (Dua et al. patents), tubular rib structures and base portions in knitted components (U.S. Provisional Application Ser. No. 62/057,264), the aesthetic principle of lenticular visual effects (lenticular printing), and the common practice of using different yarns in knitting. This combination would have been obvious to achieve a knitted footwear component exhibiting angle-dependent color-shifting properties. Therefore, the independent claims of US9078488 are likely rendered obvious under 35 U.S.C. § 103.