Public utility patents and the sneaker war: Nike alleges multibillion dollar technology infringement | White and Williams LLP


On May 3, 2018, Nike sued Puma alleging infringement of seven utility patents relating to its Flyknit, Air and studded assembly technologies.1. In its complaint, Nike claims that it has “invested heavily in research, design and development” and that Puma has “given up on innovation and instead uses Nike technologies without permission.” While Nike has not been shy about claiming its patents against competing products, this case is unusual in that Nike has claimed utility and not design patents. This is the first time that Nike has claimed these utility patents, although it has been involved in an earlier litigation over its Flyknit technology.

Utility patents are issued to cover a new and useful process, machine, manufacture or composition of matter. A utility patent protects the functional aspects of a useful invention and gives the patent holder 20 years of exclusivity. Utility patents are common in textile technology, covering inventions such as weaving techniques and fabric treatments (flame, water, or wrinkle resistance), but are rarer in fashion products. downstream, whose ornamental designs are not eligible for utility patents. Instead, fashion items, such as shoes, bags, or other clothing items, can be covered by a design patent. A design patent protects the aesthetic characteristics of a product and only offers 15 years of exclusivity. Design patents only protect the ornamental design (the appearance of a product) and it is prohibited to protect any functionality (how the product works). To be eligible for design patent protection, the design must be new and not obvious from the earlier designs. Well-known fashion models like the classic Crocs clog and the Birkenstock sandal are covered by design patents in an attempt to stop imitators.

Nike introduced its Flyknit technology in 2012, which was considered a “quantum leap” in the industry, using variations of yarns and fabrics to design a “lightweight, fitted and virtually seamless upper.” Nike has grossed over $ 1 billion using Flyknit technology. Nike’s Air technology has also been a staple and very lucrative product. Although it introduced Air in 1987, Nike states that it “continued to innovate over the next three decades” and that Air is “an important part of its strategy and an integral part of Nike’s success”. Finally, its crampon technology has been a pillar for more than 50 years.

Nike claims it holds more than 300 utility patents for its Flyknit technology and more than 800 utility patents for its Air technology. Nike has a whole arsenal, if it chooses to deploy its utility patents.

While Nike complains that industry commentators have pointed out the similarities between Nike’s Flyknit and Puma’s IGNITE Proknit, because Nike claimed its utility patents, appearances don’t matter. . What matters is whether Puma uses Nike’s patented process to create the upper knitted on Puma’s IGNITE Proknit. Observers should keep in mind that for utility patents, infringement occurs when the offending product has all the elements of a claim of a claimed patent. Therefore, the court will not consider whether the accused Puma products resemble the claimed Nike products, as they would in a design patent case. Nike has sought a permanent injunction to prevent Puma from infringing its patents, monetary damages and increased damages due to Puma’s willful infringement. Time will tell if utility patents are the next front for Nike in its quest to protect its multi-billion dollar Flyknit, Air, and stud technology.

1 The case is Nike, Inc. v. Puma North America, Inc., 1: 18-cf-10876 pending before Judge Leo T. Sorokin of the United States District Court for the District of Massachusetts.


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