No Notice, No Decision

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John P. Isacson

Nike, Inc. v. Adidas AG, Appeal No. 2019-1262 (Fed. Cir., April 9, 2020)

The PTAB has never shown an affinity for permitting amendments in IPRs. This appeal marks the second time that a proposed amendment in an IPR was before the Federal Circuit for review.

In IPR2013-00067, Nike sought to have proposed claims 47-50 substitute for claims 1-46 in U.S. Patent No. 7,347,011, which relates to footwear having textile uppers made by certain knitting processes. The PTAB reviewed the proposed claims and cited the Spencer reference, which was of record but not relied upon by either party. The PTAB used the Spencer reference to determine that proposed claim 49 was not patentable.

Nike appealed on the ground that it never had notice that the PTAB would rely on the Spencer reference. The Federal Circuit agreed with Nike and vacated the PTAB judgment against claim 49. The Federal Circuit reasoned that the PTAB may sua sponte identify patentability issues, but must give the parties notice and an opportunity to respond before rendering a decision in order to satisfy the Administrative Procedure Act.