IP Law Daily, PATENT—D. Mass.: Edge case: Construction over scope of Nike’s ‘Flyknit’ footwear patents will have to wait another day, (Aug 14, 2024)

By Matthew Hersh, J.D.

Patents for shoes with “flat knit edges” are at issue.

New Balance will have to wait until the claim construction phase of the case to determine whether its method of making footwear infringed on a method claim by Nike, the federal court for Boston has held. The court, in denying New Balance’s motion to dismiss, found it unnecessary to resolve at this early stage of the case whether Nike’s claim to shoes made with “flat knit edges” was limited to shoes made only with such edges or covered shoes with some edges that were flat knit and others that were not (Nike, Inc. v. New Balance Athletics, Inc., No. 1:23-cv-12666-JEK (D. Mass. Aug. 13, 2024)).

The dispute involves a patented method of manufacturing footwear. Nike holds three patents on its so-called “Flyknit” method of making shoes—U.S. Patent Nos. 9,907,350; 9,918,511; and 9,924,758. Many footwear manufacturers create the upper part of their shoe by cutting out a preformed shape from a large swatch of knitted material and molding it into the right form. But this “knit to cut” method, as it is called, wastes some of the material surrounding the cutout. Nike’s innovation was to knit the upper part of the shoe into the right shape from the very beginning—a method called “knit to shape.” That saved material, Nike claimed, and reduced cost.

Nike came to believe that New Balance was infringing on its method of making shoe uppers, so it sued for patent infringement. New Balance moved to dismiss.

Motion to dismiss. The court denied the motion to dismiss. The gist of the dispute was the following. Nike’s patents claimed footwear with uppers made of “flat knit edges free of surrounding textile structure.” That’s another way of saying that that the uppers contained edges that were knit to shape, not knit to cut. (That was one of the specific holdings of a Federal Circuit opinion on the same patents in another case.) But what if some of the edges of the upper were knit to shape and other parts of the upper were knit to cut? Was Nike’s patent limited to shoes that were entirely knit to shape? Or did the patent cover shoes that were partially knit to shape and partially knit to cut?

In the end, the court found, there was no need to resolve that issue now. New Balance contended in its motion to dismiss that its products contained some edges that were knit to cut and some edges that were knit to shape. But what mattered here was not the facts alleged in New Balance’s motion but the facts alleged in Nike’s complaint, the court held. And nothing in that complaint, the court noted, specifically alleged that New Balance’s shoes were made up of a mix of knit to cut and knit to shape edges. “Construing the well-pleaded facts in the light most favorable to Nike, as this Court must on a motion to dismiss,” the court found, “the complaint plausibly alleges that all of the flat knit edges of New Balance’s uppers are knit to shape.” That was enough, the court reasoned, “to place New Balance on notice of what activity is being accused of infringement.” Claim construction would have to wait for another day.

The Case is No. 1:23-cv-12666-JEK.

Judge: Kobick, J.

Attorneys: Aaron Patrick Bowling (Arnold & Porter Kaye Scholer LLP) for Nike, Inc. Jenevieve N. Nutovits (Goodwin Procter LLP) for New Balance Athletics, Inc.

Companies: Nike, Inc.; New Balance Athletics, Inc.

Cases: Patent MassachusettsNews