Shoe Wars: Nike’s Use of Utility Patents Against PumaAugust 22, 2018

The athletic shoe industry has seen many legal disputes. Intellectual property fights have included trademarks, copyrights, and design patents; all of which protect some aspect of the appearance of the shoes or the logos on the shoes.

What is interesting about the recently filed Nike Inc. v. Puma North America Inc., Case No.1:18-cv-10876, in the U.S. District Court for the District of Massachusetts is that it relates solely to utility patents. Utility patents cover some structural aspect of the shoe and its function (“utility”), as opposed to its ornamental appearance (“design”—e.g. whether it simply looks good). Also, Nike has aggressively asserted that Puma has willfully infringed, which puts more at risk for Puma.

What is Covered by the Utility Patents?

Nike Shoe Upper Patent

One Nike patent covers the shoe upper of the Nike Flyknit® brand shoe. One reason the lawsuit is important is that Nike alleges that shoe design has, to date, resulted in over $1B in gross sales!  Also of note is Nike’s allegation that they have obtained over 300 patents on Flyknit® design!

Nike advertises that the Flyknit® upper is a high strength fiber, seamless sock-like upper that is “scientifically tuned to provide areas of support, flexibility, and breathability where athletes need them most”. The images below show it in assembled form (left) but before assembly (right):

It essentially is a flexible, breathable fabric originally cut out in one piece and then assembled into a sock-like shoe upper that is stitched to a sole.

Below is Nike’s example of the allegedly infringing Puma IGNITE® ProKnit™ shoe, juxtaposed next to the patent claim Nike says that shoe infringes:

The claim (above) defines what the Nike patent covers. Note how the claim includes words like “knitted textile material”, “a first region having stability ribs”, “a junction between the upper member and the sole”. To infringe, Puma’s shoe has to have all of those things. Nike alleges Puma copied all features of that claim, and that those features tie into the allegation that the patent does indeed advance athletic shoe technology because it does “provide areas of support, flexibility, and breathability where athletes need them most”.

Nike Shoe Sole Patent

A second Nike patent relates to shoe soles, in particular, the famous Nike Air® sole. Nike describes this feature as “tough but flexible bags” filled with gas or fluid in a sole which absorbs shock but is lighter than the foam most competitors use. Nike alleges it “absorbs impact forces that would otherwise be exerted on the athlete’s muscles, joints and tendons, protecting the body against fatigue and stress. After impact, NIKE Air units return to their original shape, ready for the next impact force.”

A Nike drawing (below) illustrates how the sole is pre-formed with reinforcing structural features to receive the bags:

Nike chart showing the patent claim next to Puma’s accused shoe is below:

Note how the Nike patent claim includes clauses like “fluid-filled bladder”, “a reinforcing structure secured to the bladder”, and “an inclined surface…located over the bladder”. Nike alleges Puma has all these things in its “THE JAMMING™” shoe.


1. Functional Aspects of Apparel Can Be Patented

Although sometimes subtle, utility patents can be pursued to try to protect quite functional aspects of products. Puma argues in its answer to the Nike complaint that the Nike claims are hopelessly broad, ambiguous, or lacking in novelty. But Nike only has to prove that Puma’s shoes have each of the claimed combinations of features. Therefore, if you have products of this nature, at least seek out counsel on the possibility of utility patent protection.

2. Once Patented, the Patent is Difficult to Attack

Puma bears the burden in court to show those claims are too broad or not new. Thus, once obtained from the U.S. Patent Office, the patents are presumed valid and can be asserted. They can be a powerful tool in a company’s intellectual property arsenal. Thus, even if you believe someone else’s patent should not have been granted, get legal counsel because they are presumed valid.

3. Why is the Allegation of Willful Infringement Important?

If willfulness can be proved by Nike, it allows them to then request trebled damages (i.e. the Court multiples any monetary award by 3!). It also allows the court to award Nike its attorneys’ fees (Puma pays not only its attorneys to defend, but also Nike’s attorneys!). These are powerful remedies. The public policy is to deter intentional, unjustified infringement or egregious conduct. This will be Nike’s burden to prove up. But it is a little known part of patent law that can be quite devastating to defendants.  

  • The Law has recently changed making willfulness easier to prove.

In 2007, the In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007) case provided some relief. Whether or not you got a legal opinion was not the touchstone. Rather an “objective recklessness” standard was adopted. This made willful infringement almost impossible to prove. If you had a plausible explanation for why you, as a layperson, believed you either did not infringe or that the patent was not valid, it was difficult for the patent owner to prove willfulness.

However, the pendulum has swung part way back. Recently the U.S. Supreme Court in Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S. Ct. 1923 (2016) changed from “objective recklessness” to “subjective recklessness”. It puts more weight on how reasonable the defendant’s knowledge and beliefs are at the time a decision is made to start selling the accused product. In short, a defendant cannot have just a “plausible” belief in non-infringement, there must be a good faith state-of-mind that supports the belief. This brings back into play the importance of getting a competent and complete attorney opinion. Although not always required, it is the best way to avoid the risk of willfulness. This is shown by two recent lower court cases. 

  • Once you get an infringement notice, do not ignore it.

In Dominion Res. Inc. v. Alstom Grid Inc., No. CV 15-224, 2016 WL 5674713 (E.D. Pa. Oct. 3, 2016) the Court held the defendant was willful. The defendant argued it got an attorney’s opinion over one year after starting the product. The court found that opinion letters obtained so long after infringement began was willful infringement under the subjective recklessness standard.

  • A legal opinion is not necessarily required, but you need legal advice to decide that.

Since the 2016 Halo decision, findings of willfulness have jumped dramatically:

The “subjective recklessness” case does not say a legal opinion is required. There are certainly times when it is not. For example, if an asserted patent is so clearly irrelevant to your product, you can have sufficient good faith state-of-mind to avoid willfulness. But the point is that you should at least get legal advice as to what the patent might cover to allow you to demonstrate some reasonable basis for your position and why you could feel comfortable not getting the full legal opinion.

In the Nike v. Puma complaint, Nike alleges that Puma’s conclusory answers to Nike’s notification letters about its patents meets the subjective recklessness standard. This seems to push willfulness farther. Puma had attorneys’ opinions. Nike is focusing on the “state of mind” of Puma, arguing that even with attorney’s opinions, if Puma does not provide to Nike more than vague denials, it indicates lack of good faith and even subjective belief in non-infringement. This will have to be played out in court.

Mark D. Hansing is an Intellectual Property Attorney at McKee, Voorhees & Sease PLC specializing in mechanical, electrical, and business method patents. Mark is a Member of the Firm and has been serving clients for over 30 years.

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