Nike, Inc. v. Adidas AG


Question(s) Presented

“The America Invents Act created inter partes review, an adversarial proceeding before the Patent Trial and Appeal Board in which third parties may challenge the patentability of an existing patent claim on the basis of prior art. In response to the petitioner’s challenge, the patent-holder may amend the patent by offering substitute claims. The Act provides that ‘[i]n an inter partes review instituted under this chapter, the petitioner [has] the burden of proving a proposition of unpatentability.’ 35 U.S.C. § 316(e).”

“The question presented is:”

“Whether, in inter partes review, the Patent Trial and Appeal Board may raise sua sponte a new ground of unpatentability—including prior art that the petitioner neither cited nor relied upon—and whether the Board may rely on that new ground to reject a patent-holder’s substitute claim as unpatentable.”

Posts About this Case

Proceedings and Orders
January 25, 2023
Application (22A668) granted by The Chief Justice extending the time to file until March 21, 2023.
April 12, 2023
DISTRIBUTED for Conference of 4/28/2023.
April 18, 2023
Response Requested. (Due May 18, 2023)
May 9, 2023
Motion of United States for an extension of time not accepted for filing. (May 10, 2023 - corrected letter submitted)
May 11, 2023
Motion to extend the time to file a response is granted and the time is extended to and including May 23, 2023.
June 6, 2023
DISTRIBUTED for Conference of 6/22/2023.
June 26, 2023
Petition DENIED.