## Facts

- Adidas petitioned for inter partes review (IPR) of all 46 claims of Nike’s U.S. Patent No. 7,347,011, directed to footwear uppers made from knitted textile elements, including flat-knitted components knit to shape with edges free of surrounding textile.
- The PTAB found certain original claims unpatentable as obvious.
- Nike moved to cancel all original claims and substitute four new claims (claims 47–50) under 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121.
- The PTAB denied the motion to amend, placing on Nike the burden to prove substitute-claim patentability over prior art, including prior art “known to Nike,” even if not in the IPR record; the PTAB also found substitute claims obvious and raised written-description concerns.
- Nike appealed, challenging (i) burden allocation for motions to amend, (ii) the requirement to address non-record prior art “known” to the patent owner, and (iii) the PTAB’s obviousness and written-description determinations for the substitute claims.

## Issues

1. In an IPR motion to amend, may the PTAB place on the patent owner the burden to prove the patentability of proposed substitute claims?
2. May the PTAB require, as a condition of amendment, that the patent owner show patentability over prior art not of record but “known to” the patent owner?
3. Was substantial evidence presented to support the PTAB’s determination that substitute claims 47–50 would have been obvious over the asserted combinations of prior art?
4. Did the PTAB err in finding inadequate written-description support for aspects of the proposed substitute claims?

## Decision

- The Federal Circuit affirmed in part, vacated in part, and remanded.
- The court upheld (under the regulatory framework applied at the time) placing on Nike a burden to show substitute-claim patentability in a motion to amend.
- The court vacated the PTAB’s requirement that Nike address non-record prior art merely because it was “known to” Nike as a condition for amendment.
- The court affirmed the PTAB’s obviousness determination for substitute claims based on substantial evidence supporting the asserted prior-art combinations and motivation to combine.
- The court reversed in part the PTAB’s written-description analysis, holding that the specification adequately described the “unitary, flat-knitted” textile upper concept with knit-to-shape edges, and remanded for further proceedings consistent with that conclusion.

## Legal Principles

- In IPR amendment practice, the PTAB may require a patent owner to make a patentability showing for proposed substitute claims under the governing regulations as then applied.
- The PTAB may require the patent owner to address patentability over the prior art of record, but it may not condition amendment on addressing unspecified, non-record prior art solely because it is “known” to the patent owner.
- A PTAB obviousness determination is upheld on appeal if supported by substantial evidence, including evidence supporting a reason to combine references directed to similar problems and methods.
- Written description is satisfied when the specification, including figures and narrative, reasonably conveys possession of the claimed subject matter, such as a flat-knitted component knit to shape with defined edges rather than cut from a larger web.

## Conclusion

The Federal Circuit held that, while the PTAB could require a patent owner to justify substitute claims in an IPR, it could not demand discussion of non-record prior art as a prerequisite to amendment; the court largely sustained the PTAB’s obviousness findings for Nike’s substitute claims but corrected the PTAB’s written-description analysis and remanded.


Nike, Inc. v. Adidas AG, 812 F.3d 1326 (Fed. Cir. 2016)