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Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2013-00067.
MARK CHRISTOPHER FLEMING, Wilmer Cutler Pickering Hale and Dorr LLP, Boston, MA, argued for appellant. Also represented by WILLIAM F. LEE, KEVIN GOLDMAN; ANDREA WEISS JEFFRIES, Los Angeles, CA.
MITCHELL G. STOCKWELL, Kilpatrick Townsend & Stockton LLP, Atlanta, GA, argued for appellee. Also represented by VAIBHAV P. KADABA, TIFFANY L. WILLIAMS.
MICHAEL SUMNER FORMAN, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for intervenor Michelle K. Lee. Also represented by NATHAN K. KELLEY, THOMAS W. KRAUSE, SCOTT WEIDENFELLER.
Before CHEN, MAYER, and STOLL, Circuit Judges.
Chen, Circuit Judge
This appeal arises from the inter partes review (IPR) of U.S. Patent No. 7,347,011 (the '011 patent) owned by Nike, Inc. (Nike). The United States Patent and Trademark Office, Patent Trial and Appeal Board (Board) granted the IPR petition filed by adidas AG (Adidas) and instituted inter partes review of claims 1-46 of the '011 patent. Nike then filed a motion to amend in which it requested cancellation of claims 1-46 and proposed substitute claims 47-50. The Board granted Nike's motion to cancel claims 1-46, but denied the motion as to the substitute claims because Nike failed to meet its burden of establishing patentability of substitute claims 47-50.
Nike now appeals the Board's denial of its motion to amend, and the Director of the United States Patent and Trademark Office (Director) intervened to defend the Board's decision. For the reasons stated below, we affirm-in-part, vacate-in-part, and remand for further proceedings consistent with this opinion.
Articles of footwear generally consist of two primary components: a sole structure and an " upper." The '011 patent, entitled " Article of footwear having a textile upper," relates to the " upper" component, which has the general shape of a foot and forms a void for receiving the foot ...