A federal judge has granted a motion for summary judgment filed by Nike and Converse, effectively dismissing the patents’ infringement lawsuit.
In siding with the corporate giants, the court found that the product “was commercially offered and ready for patenting more than one year before plaintiffs applied for their patent.”
The disputed patent was a “lateral foot stabilizer — essentially a small outgrowth on the side of a shoe that widens the sole in order to provide greater foot and ankle stability for athletes.”
In 1998 and early 1999, Nike designed, developed, and began marketing the Air Jordan XV athletic shoe (AJXV) as part of its Holiday 1999 line. Gentry Humphrey, who was involved in designing the AJXV, testified at his deposition that the AJXV design, since its inception in about May 1998, included a feature referred to as an “outrigger.”
According to Humphrey, an outrigger “is basically a portion of the shoe that’s placed near the forefoot and used for lateral support on the outsole and midsole.” While the design of the AJXV changed over time, every iteration of the shoe contained an outrigger, according to the court.
In early March 1999, Nike held its United States sales meeting, during which it prepared and educated its sales force to sell the AJXV. After that sales meeting, Nike sales people began offering the AJXV to buyers. In June 1999, Nike Inc. sold 18 pairs of sample AJXV shoes to several Nike USA Inc. sales representatives and showrooms. From June 22, 1999, through July 2, 1999, Nike issued firm purchase orders to factories in Asia for at least 86,000 pairs of AJXV shoes. Under the terms of pre-existing supply contracts between the factories and Nike, Nike’s placement of firm orders for the AJXV obligated the factories to manufacture the shoes and sell them to Nike, and Nike was obligated to purchase them.
The court next turned to the scenario, where product manufactured by a competing company is marketed and sold prior to a patent being filed.
“The Federal Circuit confronted such circumstances in Vanmoor v. Wal-Mart Stores Inc. The plaintiff, Vanmoor, held a patent for a specially-designed cartridge used to dispense caulking compound, and he accused various retailers and manufacturers of infringing the patent. In granting summary judgment to the defendants and invalidating the patent, the district court concluded that Vanmoor had not raised a genuine issue of material fact that the accused products were not on sale prior to the critical date and that the defendants had shown by clear and convincing evidence that the accused products were for sale and in public use prior to the critical date.” The Federal Circuit affirmed.
Turning to the instant case, the court wrote that “because Nike’s AJXV anticipated the invention asserted in claims 5 and 6 of the ‘215 Patent and predates plaintiffs’ original patent application by more than one year, claims 5 and 6 are invalid under the statutory ‘on-sale bar’ codified at section 102(b) of title 35 of the United States Code,” wrote the court. “Accordingly, defendants’ motion is granted.”
William G. Cummings and Jay G. Levine v. Adidas USA, et al.; S.D.N.Y.; 08 Civ. 9860 (SAS); 2010 U.S. Dist. LEXIS 51284; 5/24/10
Attorneys of Record: (for plaintiffs) Ira Scot Meyerowitz, Esq., Jon Damon Jekielek, Esq., Meyerowitz Jekielek, PLLC, New York, New York. (for defendants) Milton Springut, Esq., Tal S. Benschar, Esq., Kalow & Springut LLP, New York, New York; B. Trent Webb, Esq., Jonathan N. Zerger, Esq., Angel Mitchell, Esq., Shook, Hardy, & Bacon LLP, Kansas City, Missouri.
