IP Law Daily, PATENT—Fed. Cir.: PTAB’s obviousness rejection of cleated athletic shoe patent application affirmed, (Mar 6, 2026)

By Ravindra Kumar Singh, B.L.

PTAB correctly found that prior-art references taught the claimed shoe structure and that combining them to allow forefoot flexibility during exercise would have been obvious.

In a non-precedential disposition, the U.S. Court of Appeals for the Federal Circuit affirmed a decision of the Patent Trial and Appeal Board (PTAB) upholding a patent examiner’s rejection of claims in a footwear technology patent application filed by HBN Shoe, LLC. The appellate court concluded that the Board correctly determined that the claimed cleated athletic shoe design would have been obvious in view of prior art references and that the Board’s factual findings were supported by substantial evidence. The court also rejected the appellant’s arguments concerning claim construction, expert testimony, hindsight reasoning, and alleged structural differences from the prior art (In re HBN Shoe, LLC, No. 25-1672 (Fed. Cir. Mar. 6, 2026)).

Background. HBN Shoe, LLC, the appellant, is a footwear company that sought patent protection for a specialized cleated athletic shoe designed to improve foot mechanics during weight-bearing exercise.

The case concerned U.S. Patent Application No. 18/117,309 (the ’309 application), filed on March 3, 2023. The application claimed a cleated athletic shoe containing two cleat plates—one in the forefoot and one in the heel. The forefoot plate included a concave depression positioned beneath the wearer’s first metatarsal head, allowing the foot to plantarflex and evert while under load during activities such as running or other weight-bearing exercise.

The dispute arose after a patent examiner rejected claims 1, 3–7, 10, 11, and 13–19 of the application as obvious under 35 U.S.C. § 103. The examiner determined that the structure claimed in representative claim 1 was disclosed by a combination of two prior-art references—U.S. Patent Application Publication No. 2012/0180343 (Auger) and U.S. Patent Application Publication No. 2018/0343979 (Yoshida). According to the examiner, Auger disclosed most of the structural elements of the claimed shoe, including a concave depression in the sole, whereas Yoshida taught positioning such a depression beneath the first metatarsal head to permit flexion of the forefoot during exercise. The examiner concluded that a person of ordinary skill in the art would have found it obvious to combine these references to enhance ground-gripping capability while allowing the joints of the forefoot to bend flexibly during exercise. The PTAB affirmed the examiner’s rejection in February 2025, prompting HBN to appeal to the Federal Circuit.

Obviousness analysis. The Federal Circuit held that substantial evidence supported the Board’s determination that claim 1 would have been obvious over Auger and Yoshida. The Board found that Auger disclosed the structural components of the cleated shoe, while Yoshida taught locating a depression beneath the first metatarsal head to permit forefoot flexibility. The appellate court agreed that a skilled artisan would have had a reason to combine the two references to produce a shoe capable of gripping the ground while allowing the forefoot joints to flex during exercise. In reviewing the decision, the court applied the established standard that obviousness is a legal question based on underlying factual findings, citing St. Jude Medical, LLC v. Snyders Heart Valve LLC, 977 F.3d 1232, 1238 (Fed. Cir. 2020).

Claim construction. HBN argued that the Board misinterpreted the claim language “configured to permit the head of the first metatarsal bone of the wearer to plantarflex and evert while under load.” The company relied on Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335 (Fed. Cir. 2012), contending that the phrase required a design specifically intended to perform the stated function rather than merely a structure capable of doing so. The Federal Circuit rejected that argument, explaining that HBN had not presented such a claim-construction request to the Board. Instead, the company argued that the prior-art structures were incapable of performing the claimed function. The court therefore found no claim construction error in the Board’s reasoning.

Evaluation of expert declaration. The court also rejected HBN’s argument that the Board improperly disregarded a declaration from Dr. Howard Dananberg, one of the named inventors. The Board considered the declaration but gave it little weight because it conflicted with Dr. Dananberg’s earlier published work describing the effect of a small depression beneath the first metatarsal head. The Federal Circuit deferred to the Board’s credibility assessment, citing Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010), which instructs appellate courts to defer to the Board’s evaluation of expert testimony.

Prior-art functionality. HBN further contended that Yoshida disclosed rigid material that would prevent the claimed plantarflexion and eversion of the foot. The court concluded that the Board had already addressed and rejected that assertion by citing disclosures indicating that Yoshida’s shoe components were made of deformable soft resin that allowed the metatarsophalangeal joints to bend during exercise. The Board’s interpretation of the reference was therefore supported by substantial evidence.

Hindsight reconstruction. Finally, the Federal Circuit rejected HBN’s claim that the Board relied on impermissible hindsight in combining the prior-art references. The court held that the Board properly identified a motivation grounded in the prior art itself—to enhance outsole grip while enabling forefoot flexibility during exercise. The court also dismissed HBN’s argument that the combination would require extensive redesign, noting that claim 1 imposed no limitation on the size of the depression beneath the metatarsal head.

Having found no reversible error, the Federal Circuit affirmed the Board’s decision sustaining the examiner’s obviousness rejection of the claims in the ’309 application.

The Case is No. 25-1672.

Judge: Taranto, R.

Attorneys: Norman P. Soloway (Hayes Soloway PC) for HBN Shoe, LLC. Monica Barnes Lateef, U.S. Patent and Trademark Office, for John A. Squires.

Companies: HBN Shoe, LLC

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