In Shoes by Firebug LLC v. Stride Rite Children's Group, LLC, Nos. 2019-1622, -1623 (Fed. Cir. June 25, 2020), the Federal Circuit affirmed the PTAB's decisions in two IPRs, holding the challenged claims of U.S. Patent Nos. 8,992,038 and 9,301,574 unpatentable as obvious.

Shoes by Firebug LLC (“Firebug”) owns the challenged patents relating to illumination systems for footwear. Stride Rite Children's Group, LLC (“Stride Rite”) filed IPRs challenging the two patents after Firebug sued for infringement. In its final written decisions, the Board held all challenged claims of both patents unpatentable as obvious. Firebug appealed.

On appeal, the Federal Circuit affirmed. For the '038 patent, the Court agreed with the Board's conclusion that the preamble did not limit the claims because the claim body recited a “structurally complete article.” The Court explained that the elements in the preamble were “independently recited in the body of the claim” and that the preamble's “textile material” was not necessary for the invention. Thus, the Court held that  the preamble did not limit the scope. For the '547 patent, the Court agreed with Firebug that the preamble limited the claims because the claim body “require[d] that the illumination system be housed in the textile footwear recited in the preamble,” but also agreed with the Board's ultimate conclusion of obviousness under the proper claim scope. 

The Court rejected Firebug's arguments related to secondary considerations, and specifically whether the Board failed to consider two license agreements and related testimony. The Court explained that the license agreements included a trademark and additional patents and did not establish the requisite nexus. The Court also agreed with the Board to accord limited weight to Firebug's declaration testimony. Weighing the secondary considerations evidence in totality, the Court found no error in the Board's conclusion and affirmed the obviousness determinations.

Originally published by Finnegan, July 2020

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