This morning the Federal Circuit released a nonprecedential opinion in a patent case appealed from the Patent Trial and Appeal Board. In the opinion, the court explains that it affirms both the Board’s finding that a substitute claim is unpatentable as obvious and the Board’s denial of a motion to amend. Here is the introduction to the opinion.

Nike, Inc. v. Adidas AG (Nonprecedential)

This is an appeal from a third final written decision by the Patent Trial and Appeal Board (Board) in an inter partes review instituted in 2012. On two prior occasions, we affirmed-in-part, vacated-in-part, and remanded to the Board. See generally Nike, Inc. v. Adidas AG, 812 F.3d 1326 (Fed. Cir. 2016) (Nike I), overruled on other grounds by Aqua Prods., Inc. v. Matal, 872 F.3d 1290, 1296 n.1 (Fed. Cir. 2017) (en banc); Nike, Inc. v. Adidas AG, 955 F.3d 45 (Fed. Cir. 2020) (Nike II).

Nike, Inc. (Nike) now appeals the Board’s determination that proposed substitute claim 49 of U.S. Patent No. 7,347,011 (’011 patent) is unpatentable under 35 U.S.C. § 103. Nike argues: (1) that the Board erred in finding that the Board, rather than the petitioner, bears the burden of persuasion for unpatentability challenges to proposed substitute claims raised sua sponte by the Board; (2) that the Board in this case effectively placed the burden of persuasion on Nike; and (3) that the Board’s obviousness analysis is unsupported by substantial evidence and violates the Administrative Procedure Act (APA). We need not address Nike’s first argument because both the Board and adidas AG (Adidas) met the burden of persuasion in this case. As a result, the Board did not improperly place the burden on Nike. Finally, substantial evidence supports the Board’s obviousness analysis and Nike’s APA-based argument lacks merit. We therefore affirm.