K-Swiss Inc. v. Glide'n Lock Gmbh , 567 F. App'x 906 ( 2014 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
K-SWISS INC.,
Appellant,
v.
GLIDE N LOCK GMBH
(now known as On Clouds GmbH),
Cross Appellant.
______________________
2013-1316, -1317
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Reexami-
nation No. 95/001,320.
______________________
Decided: April 23, 2014
______________________
STEVEN P. WEIHROUCH, Rothwell, Figg, Ernst &
Manbeck, P.C. of Washington, DC, argued for appellant.
With him on the brief were JEFFREY R. FOUGERE and
JENNIFER P. NOCK.
HENRY A. PETRI, JR., Novak Druce Connolly Bove +
Quigg, LLP, of Washington, DC, argued for cross appel-
lant. With him on the brief were MICHAEL W. O’NEILL
and DANIEL P. MULLARKEY.
2 K-SWISS INC. v. GLIDE'N LOCK GMBH
______________________
Before LOURIE, DYK, and WALLACH, Circuit Judges.
DYK, Circuit Judge.
Appellant K-Swiss Inc. (K-Swiss) appeals from a deci-
sion of the Patent Trial and Appeal Board (Board). On
Clouds GmbH (formerly Glide’n Lock GmbH) (On Clouds),
the patent owner, cross-appeals. With respect to the
cross-appeal, we affirm the Board’s decision rejecting
claims 1, 2, and 8–10 of U.S. Patent No. 7,181,866 (the
’866 patent) as anticipated by International Patent Appli-
cation No. WO 90/00021 (Szentes) and claims 3–5 as
anticipated by Japanese Patent Application Publication
No. H07-284403 (Okabe). With respect to K-Swiss’s
appeal, we reverse the Board’s decision upholding claims
6, 7, and 11 as nonobvious over Szentes in view of UK
Patent Application No. GB 2001843 (Pagani), Japanese
Unexamined Utility Model Application No. S49-96158
(Takahashi), and US Patent No. 4,523,393 (Inohara)
(respectively). We do not address K-Swiss’s alternate
arguments for invalidity.
BACKGROUND
The ’866 patent recognizes that air or gel cushions
were well known in the prior art to absorb shocks on a
runner. However, they suffered from two problems. If
such cushions were “relatively rigid in the horizontal or
tangential direction,” they did “not yield sufficiently if the
runner’s foot contacts the ground obliquely,” and did not
absorb shocks from the oblique direction. ’866 patent col.
1 ll. 32–35. However, when the prior art could absorb
shocks in the oblique direction, this deformation could
have a destabilizing effect. Therefore, prior art outsoles
that were capable of deformation suffered from a “floating
effect” that “negatively influence[d] the stability of the
runner.” ’866 patent col. 1 ll. 36–45.
K-SWISS INC. v. GLIDE'N LOCK GMBH 3
The ’866 patent seeks to address these twin problems.
The patent is directed at a variation of a shoe outsole with
a resilient member that allows relative motion between
the upper and lower portions in the “unloaded state” to
absorb oblique shoe loads, but compresses and engages to
prevent relative motion in the “loaded state”—i.e., when
pressure is applied to the outsole. Representative claim 1
reads as follows:
1. An outsole for a shoe, the shoe disposed along a
longitudinal axis in a longitudinal direction paral-
lel to a ground surface in use, the outsole compris-
ing:
a resilient member having an inner sur-
face, an outer surface and, with respect to
a direction perpendicular to the longitudi-
nal direction, an upper portion and a low-
er portion, the outer surface of the lower
portion proximate the ground surface in
use,
the resilient member having first and sec-
ond configurations, the first configuration
[i.e., the unloaded state] having the inner
surface of the upper portion spaced from
the inner surface of the lower portion, the
resilient member elastically absorbs shoe
loads oblique to the perpendicular direc-
tion by relative motion in the longitudinal
direction between the upper portion and
the lower portion in the first configura-
tion, the second configuration [i.e., the
loaded state] having the inner surface of
the upper portion engaged with the inner
surface of the lower portion due to ab-
sorbed shoe loads, the engagement sub-
stantially preventing relative motion in
4 K-SWISS INC. v. GLIDE'N LOCK GMBH
the longitudinal direction between the up-
per portion and the lower portion.
’866 patent col. 6 ll. 2–21. Figures 6a and 6b below show
the resilient member of the outsole (8) in the two claimed
configurations, the first, unloaded configuration (6a) and
the second, loaded configuration (6b). ’866 patent Figs.
6a, 6b.
In the second, loaded configuration, the resilient member
compresses or collapses such that the upper layer of the
resilient member is engaged with the lower layer of the
resilient member.
The claims dependent on claim 1 specify a “plurality”
of resilient members (claim 3), the type of connection
between the resilient members (claims 4–5), the type of
engagement between the upper and lower layers (friction-
al, claim 2; positive, claim 8), the percentages by which
the resilient members deform in the loaded state (claims
6–7), and “a resilient member [that] comprises a profile
like hollow element that contains a tubular part” (claim
11). Figure 1a of the ’866 patent below shows an embod-
iment with a plurality of resilient members. The figure
also shows the “hollow” and “tubular” shape claimed in
claim 11. ’866 patent Fig. 1a. Figure 7 shows an embod-
iment with positive engagement (notching or ribbing)
between the upper and lower layers, as in claim 8, rather
K-SWISS INC. v. GLIDE'N LOCK GMBH 5
than the frictional engagement of claim 2 seen in the
other figures. ’866 patent Fig. 7.
The second independent claim, claim 9, specifies that
the type of outsole described in claim 1 would be used
with a “member adapted to grasp the foot.” ’866 patent
col. 6 l. 41. Dependent claim 10 specifies that such a
member is a shoe.
On March 3, 2010, K-Swiss filed a request for inter
partes reexamination. In April 2010, finding that K-
Swiss’s submitted references raised a substantial new
question of patentability, the PTO ordered reexamination
for claims 1–10 of the ’866 patent, and the patent examin-
er rejected all ten claims. In its response to the April
2010 Office Action, On Clouds added new claim 11, which
the examiner rejected.
On appeal, the Board affirmed the examiner’s antici-
pation rejections of claims 1–5 and 8–10. The Board
reversed the examiner’s rejections of claims 6 and 7 for
obviousness. The Board reversed the examiner’s rejection
of claim 11 for indefiniteness and obviousness.
K-Swiss appeals the Board’s decision reversing the
examiner’s obviousness rejection of claims 6, 7, and 11.
On Clouds cross-appeals the Board’s decision affirming
the examiner’s anticipation rejections of claims 1–5 and
8–10. We have jurisdiction under 35 U.S.C. § 141(c) and
28 U.S.C. § 1295(a)(4)(A). We review the Board’s legal
determinations de novo, and its factual findings for sub-
6 K-SWISS INC. v. GLIDE'N LOCK GMBH
stantial evidence. In re Enhanced Sec. Research, LLC,
739 F.3d 1347, 1351 (Fed. Cir. 2014).
DISCUSSION
I. Anticipation of Claims 1-5 and 8-10
We first address the Board’s decision affirming the re-
jection of claims 1–5 and 8–10 as anticipated by Okabe
and Szentes.
“Determining whether claims are anticipated in-
volves a two-step analysis . . . . The first step in-
volves construction of the claims of the patent at
issue, . . . a question of law reviewed de no-
vo . . . . The second step of an anticipation analysis
involves comparing the claims to the prior
art, . . . a question of fact reviewed for substantial
evidence.”
In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012)
(internal citations and quotation marks omitted). During
examination, claims “are to be given their broadest rea-
sonable interpretation consistent with the specification.”
Id.
We first address the Board’s determination that
claims 1, 2, and 8–10 are anticipated by Szentes. As with
the ’866 patent, Szentes describes efforts to cushion
runners by creating a “sole . . . made of some elastic
material” where “a closed cavity is formed between two
elastic materials.” J.A. 1730 (Szentes) (p. 2 ll. 29–31);
J.A. 1731 (p. 3 ll. 17–19). Szentes implicitly recognizes
the “floating” problem as well, indicating that such a
hollow cavity has “[t]he drawback . . . in that walking
becomes instable.” J.A. 1731 (p. 3 ll. 21–31); see also J.A.
1733 (p. 5 ll. 19–22) (“Another deficiency lies in, in so far
as surficial parts of the two layers facing each other are
sliding easily on one another on effect of sliding force
components, as a consequence, the person using the
K-SWISS INC. v. GLIDE'N LOCK GMBH 7
footwear has the sense of uncertainty.”). Szentes recom-
mends addressing this problem by having ribbing and
notching between the upper and lower layers, which
prevents the instability through positive engagement.
Figure 2 of Szentes, below, shows the design in the un-
loaded state. J.A. 1745.
On Clouds ar-
gues that the Board’s
decision that Szentes
anticipates claims 1
and 9 is not support-
ed by substantial
evidence because
Szentes does not
disclose the limita-
tion in the first,
unloaded configura-
tion—the resilient member that elastically absorbs
oblique shoe loads using the relative motion between the
upper and lower layers. We disagree. Because the
Szentes sole is made of an elastically resilient material, it
absorbs oblique shoe loads in the unloaded state, the first
configuration, through the movement of the elastic mate-
rials. It is undisputed that the ribbing in Szentes antici-
pates the second, loaded configuration.
On Clouds also argues that the Board’s finding that
Szentes describes the “positive engagement” required by
claim 8 is not supported by substantial evidence. But
even On Clouds concedes that the Szentes text discloses
that the ribs fit into notches between the upper and lower
layers of the resilient cavity, arguing only that this disclo-
sure is not illustrated in a figure or further described.
This objection is not sufficient to show that the Board’s
findings are not supported by substantial evidence.
Szentes also clearly teaches that frictional engagement
8 K-SWISS INC. v. GLIDE'N LOCK GMBH
would address the instability issue and that the claimed
outsole would be used with a shoe, thereby anticipating
claims 2 (frictional engagement) and 10 (claimed grasping
member of claim 9 is a shoe). In any case, On Clouds does
not separately argue the patentability of claims 2 and 10.
Therefore, we conclude that the Board’s finding that
Szentes anticipates claims 1–2 and 8–10 is supported by
substantial evidence.
The Board did not rely on Szentes as anticipating
claims 3–5, which specify that the outsole may comprise a
“plurality” of resilient members, and the type of connec-
tion between those members. The Board held that claims
3–5 are anticipated by Okabe. 1 Okabe discloses an im-
proved footwear outsole. Okabe also recognized the
“floating” problem created by increased cushioning in
shoes in the prior art, describing the “problem to be solved
by the invention” as the “inadequate support in the hori-
zontal direction produc[ing] a feeling of instability as if
stepping on an air cushion.” J.A. 1750 (Okabe) ¶ 0006.
Okabe addresses the floating issue by putting rubber pins
on the lower layer of the cavity that pressed against the
upper layer when the outsole is in a loaded state. Figure
3 of Okabe, below, shows the unloaded state of one of the
resilient members described in the claims. J.A. 1752.
1 The Board also held that claims 1, 2, 9, and 10 are
anticipated by Okabe. Since we hold that the Board did
not err in concluding that these claims are anticipated by
Szentes, we need not address whether claims 2, 9 and 10
are anticipated by Okabe.
K-SWISS INC. v. GLIDE'N LOCK GMBH 9
Even though we
hold that Szentes
anticipates claim 1,
in order to deter-
mine whether
Okabe anticipates
dependent claims
3–5, which incorpo-
rate the limitations
of claim 1, we must
first determine
whether Okabe also
anticipates independent claim 1. On Clouds argues that
substantial evidence does not support the Board’s conclu-
sion that Okabe anticipates claim 1 because Okabe does
not meet the limitation in the second configuration (the
loaded state) that the upper and lower layer of the resili-
ent member engage to “substantially prevent” relative
motion. On Clouds’s contention is incorrect. Okabe
teaches that rubber pins would frictionally engage with
the upper layer in the loaded state, thereby preventing
relative motion between the two layers. J.A. 1751 ¶ 0022
(“[E]ach of the rubber pins [] works together with the air
cushion effect, and the characteristic instability experi-
enced with the air cushion effect alone is improved as a
result.”).
With respect to claim 3, Okabe describes an embodi-
ment with “multiple long and narrow cavities arranged in
a row,” thereby anticipating the plurality of resilient
members. J.A. 1751 ¶ 0022. Regarding claims 4–5, a
lower layer extends between the cavities or resilient
members, as shown in Figure 1. J.A. 1752. Therefore,
the Board’s finding that Okabe anticipates claims 3–5 is
supported by substantial evidence.
10 K-SWISS INC. v. GLIDE'N LOCK GMBH
II. Obviousness Rejections of Claims 6, 7, and 11
We next address the Board’s decision declining to re-
ject claims 6, 7, and 11 as obvious over Pagani, Takahashi
or Inohara in view of Szentes. A determination of obvi-
ousness under 35 U.S.C. § 103 is a question of law based
on underlying findings of fact. Graham v. John Deere Co.,
383 U.S. 1, 17–18 (1966). The differences between the
claimed invention and the prior art as well as what the
references actually teach are questions of fact. Enhanced,
739 F.3d at 1351.
Claims 6 and 7 depend on claim 2 (which we hold was
anticipated), and specify the amount by which the resili-
ent member deforms in the loaded configuration, with
claim 6 claiming greater than 20% deformation and claim
7 claiming greater than 50% deformation. ’866 patent col.
6 ll. 32–37. Claim 11 describes a variation of the outsole
where “the resilient member comprises a profile like
hollow element that contains a tubular part.” J.A. 461.
We first address the question of whether claim 11
should have been found obvious. Pagani, Takahashi, and
Inohara each teach an outsole comprising a plurality of
tubular resilient members. Figure 1 of Pagani, figure 3 of
Takahashi, and figure 13 of Inohara, below, each show the
tubular hollow elements in the outsoles described in those
references, respectively. J.A. 1722 (Pagani); J.A. 1720
(Takahashi); J.A. 1713 (Inohara).
K-SWISS INC. v. GLIDE'N LOCK GMBH 11
Szentes teaches
the use of ribbing or
notching between the
upper and lower
layers to provide
increased stability.
Pagani, Takahashi,
or Inohara, when
combined with
Szentes, would
render obvious claim
11. However, the
Board held, and On
Clouds argues, that a person having ordinary skill in the
art would not have combined Szentes with any of these
references because Szentes disparaged the use of small
channels like those in Pagani, Takahashi and Inohara.
We disagree. Szentes does not disparage the use of small
channels, but uses them as another example of the float-
ing problem that it was attempting to solve—“[an outsole
with multiple small cavities] shows the same deficien-
cies[] as the previous one [i.e., a large hollow cavity],
wearing results in an unsure and wobbling walk.” J.A.
1731–32 (Szentes) (p. 3 l. 36 to p. 4 l. 3). Szentes de-
scribes a solution to this floating problem in a large
cavity. It would be logical to apply Szentes’s solution for a
large cavity to the small channels of Pagani, Takahashi
and Inohara.
The Board also found that to meet the engagement
limitation of claim 1, on which claim 11 depends, “there
must be contact between the upper and lower layers.”
12 K-SWISS INC. v. GLIDE'N LOCK GMBH
J.A. 488. 2 Correspondingly, the Board found that “chan-
nels of Pagani [and presumably also Takahashi and
Inohara] would [not] necessarily be compressed to the
extent wherein the upper and lower portions are ‘en-
gaged.’” J.A. 488. Although we agree with the Board’s
construction of claim 1, it is not necessary that Pagani
alone teach engagement of the upper and lower layers.
Szentes teaches engagement to prevent the floating effect.
When Pagani is combined with Szentes, given that Pagani
describes its resilient members as “especially resiliently
yieldable” and “yield[ing] under the wearer’s weight,” J.A.
1725 (Pagani) ll. 67–75, it would have been obvious to one
skilled in the art to create engagement of the ribs or pins
in the loaded state to prevent the floating effect.
Takahashi and Inohara also teach plural round tubular
cavities and that such an arrangement is yieldable. 3
Therefore, we find that substantial evidence does not
support the Board’s finding that claim 11 would not have
been prima facie obvious over Szentes in view of Pagani,
Takahashi, or Inohara.
As for claims 6 and 7, which specify the percentage
the outsole deforms in the loaded position, the specific
percentages are not explicitly disclosed in Pagani,
Takahashi or Inohara. Although the Board rejected
combining these references with Szentes to find the ’866
patent claims obvious, the Board never individually
2 Contrary to K-Swiss’s argument, we agree with
On Clouds that the Board did not find that the claims
require the cavities to completely collapse.
3 See, e.g., J.A. 1719 (Takahashi) (describing “the
elasticity of shoe sole material”); J.A. 1714 (Inohara) U.S.
Patent No. 4,523,393 col. 2 ll. 40–44 (“[t]he shoe sole C is
made of rubbery material in which . . . the interlayer body
[i.e., the layer with the tubular cavities] consist[s] of soft
rubber, polyurethane, sponge, and the like.”).
K-SWISS INC. v. GLIDE'N LOCK GMBH 13
considered claims 6 and 7. We find claims 6 and 7 invalid
for two main reasons. First, the percentages in claims 6
and 7 are inherently disclosed by Pagani, Takahashi, or
Inohara. 4 Second, as the patent examiner found, it would
have been obvious to one having ordinary skill in the art
at the time to construct resilient members that achieve
this deformation percentage, since “where the general
conditions of a claim are disclosed in the prior art,” as
here, “it is not inventive to discover the optimum or
workable ranges by routine experimentation.” In re Aller,
220 F.2d 454, 456 (CCPA 1955); see generally Randall
Mfg. v. Rea, 733 F.3d 1355, 1362–63 (Fed. Cir. 2013).
Therefore, we find that substantial evidence does not
support the Board’s finding that claims 6 and 7 would not
have been prima facie obvious in light of Szentes, Pagani,
Takahashi, or Inohara.
Finally, On Clouds contends that in the event we find
claims 6, 7, and 11 to have been prima facie obvious, we
should remand to the Board to consider On Clouds’s
4 See, e.g., J.A. 1725 (Pagani) ll. 9–11 (“[A]n article
of footwear, which is made from a preferably compressibly
resilient polymeric material such as rubber or synthetic
plastic[].”); J.A. 856–57 (Frederick Decl.) ¶¶ 89–90
(“Based on my independent evaluation of the structure
and material properties described in Pagani and in view
of the materials typically available for purposes of shoe
construction, it is my opinion that Pagani discloses de-
formation that would be more than 50% when a wearer
undertakes vigorous activity.”); J.A. 1718 (Takahashi);
J.A. 859–60 (Frederick Decl.) ¶¶ 105–06; J.A. 1714 (Ino-
hara) U.S. Patent No. 4,523,393 col. 2 ll. 40–44 (“[t]he
shoe sole C is made of rubbery material in which . . . the
interlayer body [i.e., the layer with the tubular cavities]
consist[s] of soft rubber, polyurethane, sponge, and the
like.”); J.A. 862–63 (Frederick Decl.) ¶¶ 119–20.
14 K-SWISS INC. v. GLIDE'N LOCK GMBH
declarations concerning secondary considerations of
nonobviousness. The Board did not reach this issue after
deciding that the claims were not obvious. But the decla-
rations did not connect the statements of praise, the only
alleged secondary consideration, with the claimed fea-
tures of the ’866 patent. In addition, before the Board, On
Clouds argued only that the declarations established
secondary considerations with respect to claim 8 and the
“positive engagement” limitation. It did not argue that
the declarations established secondary considerations
with respect to claims 6, 7, and 11. Therefore, these
declarations are insufficient to overcome the prima facie
case of obviousness.
We conclude that claims 6, 7, and 11 should have been
rejected as obvious, and remand to the Board for entry of
an appropriate order.
AFFIRMED-IN-PART, REVERSED-IN-PART,
AND REMANDED
Costs to K-Swiss.