Herbert Townsend

Patent Trials and Appeals Board

May 17, 2021

IPR2018-00577 (P.T.A.B. May. 17, 2021)

Trials@uspto.gov Paper 39
571-272-7822 Date: May 17, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

BROOKS SPORTS, INC.,
Petitioner,
v.
HERBERT E. TOWNSEND,
Patent Owner.

IPR2018-00577
Patent 7,490,416 B2

Before MEREDITH C. PETRAVICK, HYUN J. JUNG, and
SCOTT A. DANIELS, Administrative Patent Judges.
JUNG, Administrative Patent Judge.
DECISION
Granting in Part Patent Owner’s Request for Rehearing of
Final Written Decision of Inter Partes Review
37 C.F.R. § 42.71(d)

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I. INTRODUCTION
A. Background and Summary
Brooks Sports, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
requesting institution of an inter partes review of claims 1 and 6 of U.S.
Patent No. 7,490,416 B2 (Ex. 1001, “the ’416 patent”). Petitioner contended
that claim 1 was anticipated under 35 U.S.C. § 102 by Izumi1
(“challenge 1”).2 Pet. 2. Petitioner also challenged claim 1 under 35 U.S.C.
§ 103 as unpatentable over (1) Izumi (“challenge 2”), (2) Rudy3 and Plant4
(“challenge 4”), (3) Christensen5 and Ito6 (“challenge 6”), and (4) applicant
admitted prior art and Izumi (“challenge 8”). Id. at 2–3. Petitioner
challenged claim 6 under 35 U.S.C. § 103 as unpatentable over (1) Izumi
and Chang7 (“challenge 3”), (2) Rudy, Plant, and Chang (“challenge 5”),
(3) Christensen, Ito, and Chang (“challenge 7”), and (4) applicant admitted
prior art, Izumi, and Chang (“challenge 9”).
After we issued a Decision to Institute an inter partes review of the
challenged claims (Paper 6, 22), Herbert E. Townsend (“Patent Owner”)
filed a Patent Owner’s Response (Paper 16, “PO Resp.”), to which Petitioner

1 JP H7-9105, published February 10, 1995. Exs. 1002, 1003.
2 Patent Owner refers to Petitioner’s challenges as challenge 1, challenge 2,
challenge 3, etc. in its Request for Rehearing. We use the same labeling in
this Decision.
3 U.S. Patent No. 6,158,149 B1, issued December 12, 2000. Ex. 1005.
4 GB 2 349 798 A, published November 15, 2000. Ex. 1006.
5 U.S. Patent Application Publication No. US 2003/0120353 A1, filed
February 5, 2003, published June 26, 2003. Ex. 1008.
6 U.S. Patent No. 4,768,295, issued September 6, 1988. Ex. 1007.
7 U.S. Patent No. 4,918,838, issued April 24, 1990. Ex. 1004.
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Patent 7,490,416 B2
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replied (Paper 28, “Pet. Reply”8). Patent Owner also filed a Sur-Reply
(Paper 27, “PO Sur-reply”9). Oral argument was conducted thereafter. See
Paper 31.
We entered our Final Written Decision, in which we determined that
Petitioner had shown by a preponderance of the evidence that claims 1 and 6
of the ’416 patent were unpatentable over certain combinations of cited art.
Paper 32, 71–72 (“Final Dec.”). Specifically, we determined that Petitioner
did not show by a preponderance of the evidence that claim 1 is anticipated
by Izumi (challenge 1). Id. at 35. We also determined that the combinations
based on Christensen and Ito do not teach or suggest all the limitations of
claims 1 and 6 (challenges 6 and 7). Id. at 72. We determined, however,
that claim 1 is unpatentable over (1) Izumi (challenge 2) and (2) Rudy and
Plant (challenge 4) and that claim 6 is unpatentable over (1) Izumi and
Chang (challenge 3) and (2) Rudy, Plant, and Chang (challenge 5). Id. at
71–72. We did not reach the other challenges of claims 1 and 6 (challenges
8 and 9). Id. at 71.
Patent Owner timely filed a Request for Rehearing in which it asks
that we modify the Final Written Decision to reject challenges 3 and 8, to
disregard the testimony of Petitioner’s expert, and to provide a ruling and
grounds for denying Patent Owner’s request to disregard Petitioner’s
testimony. Paper 34, 1–8 (“Request,” or “Req. Reh’g”).
For the reasons set forth below, Patent Owner’s rehearing request is
granted in part.

8 We refer hereinafter to Petitioner’s Corrected Reply (Paper 28) which
replaced Petitioner’s earlier-filed Reply (Paper 18).
9 We refer hereinafter to Patent Owner’s Corrected Sur-Reply (Paper 27)
which replaced Patent Owner’s earlier-filed Sur-Reply (Paper 20).
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II. ANALYSIS
A. Legal Standards
37 C.F.R. § 42.71(d) sets forth, in relevant part that:
A party dissatisfied with a decision may file a single request for
rehearing without prior authorization from the Board. The
burden of showing a decision should be modified lies with the
party challenging the decision. The request must specifically
identify all matters the party believes the Board misapprehended
or overlooked, and the place where each matter was previously
addressed in a motion, an opposition, or a reply.
See also Req. Reh’g 1 (quoting, in part, 37 C.F.R. § 42.71(d)).
B. Whether the Decision should be modified to reject challenge 8 to
claim 1 because it is based on challenge 1 of claim 1 that the Board
denied
Patent Owner contends that the Final Written Decision overlooked
Petitioner’s challenge 8’s reliance on challenge 1 (see Pet. 3), which
challenges claim 1 as being unpatentable over applicant admitted prior art
(“AAPA”) and Izumi. Req. Reh’g 4 (citing Final Dec. 70–71). Patent
Owner argues that this challenge relied on Petitioner’s assertion that Izumi
discloses “material consisting essentially of a dilatant compound.” Id.
Patent Owner further argues that, because the Final Written Decision
rejected this assertion in Petitioner’s challenge 1 (anticipation of claim 1
over Izumi; see Pet. 2), the Decision necessarily must reject challenge 8 as
well. Id.; see also id. at 1–3 (citing Dec. 34; Pet. 67). Patent Owner
requests that the Decision be modified to reflect this. Id. at 4.
For challenge 8, Petitioner asserted that “Izumi also discloses use of a
silicone bouncing putty equivalent to the claimed dilatant compound” and
thus discloses the limitation of claim 1, “said at least one cavity filled with
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material consisting essentially of a dilatant compound.” Pet. 67. Petitioner
relied on AAPA for limitations of claim 1 other than a “material consisting
essentially of a dilatant compound.” See id. at 65–67. For challenge 9,
Petitioner argued that dependent claim 6 is unpatentable over AAPA, Izumi,
and Chang. Id. at 68–69.
In our Final Written Decision, with respect to challenge 1, we were
“not persuaded by a preponderance of the evidence that Izumi discloses that
its putty is the claimed material,” i.e., a “material consisting essentially of a
dilatant compound.” Final Dec. 34. We did not reach challenges 8 and 9
because Petitioner showed by a preponderance of the evidence that claims 1
and 6 were unpatentable based on challenges 2–5. Id. at 70–71. However,
because challenges 8 and 9 rely on Izumi for “material consisting essentially
of a dilatant compound,” Petitioner did not show by a preponderance of the
evidence that claim 1 is unpatentable over AAPA and Izumi and that
dependent claim 6 is unpatentable over AAPA, Izumi, and Chang.
As such, Patent Owner’s request that we modify the Final Written
Decision by determining that Petitioner failed to meet its burden on
challenge 8, in addition to challenge 1, is granted. We also modify the Final
Written Decision to determine that Petitioner failed to meet its burden on
challenge 9.
C. Whether the Decision should be modified to reject challenge 3 to
claim 6 to the extent that it is based on challenge 1
Patent Owner contends that Petitioner’s challenge 3 (see Pet. 2), the
challenge of claim 6 as being unpatentable over Izumi and Chang, relied
upon either challenge 1 (see id.) or challenge 2 (see id.). Req. Reh’g 5
(citing Pet. 42). Patent Owner argues that, because the Final Written
Decision held that Petitioner did not show by a preponderance of the
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evidence that claim 1 is anticipated by Izumi (challenge 1), the Final Written
Decision necessarily must reject challenge 3 to the extent that it relied on
challenge 1. Id. (citing Dec. 34–35). Patent Owner requests that the
Decision be modified to reflect this. Id.
For challenge 3, Petitioner asserted for claim 6, which depends from
claim 1, that “[a]ll of the limitations of claim 1 are disclosed by or obvious
in view of Izumi.” Pet. 42 (emphasis added). Thus, challenge 3 relies upon
challenge 1, which is the anticipation of claim 1 by Izumi, or upon challenge
2, which is the obviousness of claim 1 over Izumi. As discussed above, we
were not persuaded by Petitioner’s challenge 1. Final Dec. 34. As such,
we grant Patent Owner’s request that we modify the Final Written Decision
by determining that Petitioner did not show by a preponderance of the
evidence that claim 6 is unpatentable over Izumi and Chang to the extent
that this challenge relied upon the anticipation challenge of claim 1 by
Izumi.
D. Whether the Decision should be modified to set out the Board’s
decision and reasoning on Patent Owner’s request that the testimony
of Petitioner’s expert’s be disregarded
Patent Owner contends that in its Sur-Reply, Patent Owner asked the
Board to “disregard Petitioner’s Expert’s testimony as lacking credibility in
view of his relationship to Petitioner and his failure to correct testimony
even though he acknowledged that he knew that prior testimony was
wrong.” Req. Reh’g 6 (citing PO Sur-reply 5–10). According to Patent
Owner, the Final Written Decision “makes clear that Patent Owner’s request
that Petitioner’s Expert’s testimony be disregarded was denied” but “[t]he
Decision does not set out any ruling on Patent Owner’s request nor any
grounds for that ruling.” Id. (citing Dec. 22, 46, 49, 51, 53, 62, 63). Patent
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Owner requests that the Final Written Decision be modified to set out the
Board’s decision on Patent Owner’s request that Petitioner’s Expert’s
testimony be disregarded and the grounds for that decision. Id. at 6–7.
In its Sur-reply, Patent Owner pointed out that Petitioner’s Expert, Dr.
Shorten, “testified that he and his company began working for Brooks
[(Petitioner)] in 2005 testing shoes that Brooks provided.” PO Sur-reply 5.
Patent Owner contended that Dr. Shorten first testified that he had never
seen a running shoe that had a dilatant compound in the sole. Id. at 7.
Patent Owner argued that in a second declaration, “Dr. Shorten stated that he
tested dilatant compound (‘Silly Putty’) inserts in a shoe midsole” in 1985,
and pointed out that he also tested a “Power Bounce shoe” from “Brooks”
around 2005. Id. at 8–9. Patent Owner further argued that “Dr. Shorten
plainly knew that his testimony at his first deposition concerning the Power
Bounce shoe was flatly wrong when the second deposition began” but “[h]e
refused to correct that testimony.” Id. at 10. Patent Owner stated that “[t]he
Board has discretion to determine the credibility of and the weight to give
testimony” and contended that “Dr. Shorten’s long relationship with Brooks,
convoluted positions, and failure to tell the truth render his testimony not
credible.” Id. at 10.
Patent Owner does not point to where it asked the Board to disregard
Dr. Shorten’s testimonies entirely. Nonetheless, in the Final Written
Decision, in addressing Patent Owner’s arguments concerning the relevant
art and level of ordinary skill in the art, we stated that the parties’ arguments
“address what weight we should give to the testimony of the parties’
declarants” and “[f]or the reasons addressed below, the parties’ declarants
both provide relevant testimony on issues being assessed dependent on the
declarant’s particular background and expertise.” Final Dec. 13. We, thus,
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did not disregard any of the declarants’ testimonies in their entireties.
Rather, we assessed portions of the testimonies and how much weight
should be given to them. In doing so, we considered Dr. Shorten’s
relationship with Petitioner and the alleged conflicting testimony. Such
matters go to credibility of the witness, but do not justify disregarding the
testimony altogether as requested by Patent Owner.
Even if there were conflicting testimonies as to whether Dr. Shorten
ever tested a running shoe that has a dilatant compound in the sole, Dr.
Shorten effectively corrected such discrepancy in his second declaration by
testifying that his employee tested the Power Bounce shoe. See PO Sur-
Reply 9. These two matters raised by Patent Owner did not rise to the level
that Dr. Shorten’s entire testimony should be disregarded.
Thus, the request that the Final Written Decision be modified to
indicate that the testimony of Petitioner’s expert, Dr. Shorten, be
disregarded, is denied. To the extent that Patent Owner requests the Final
Written Decision be modified to provide grounds or explanations in regard
to the denial of Patent Owner’s request that Petitioner’s expert testimony be
disregarded, that request is granted as shown by our additional reasoning
provided above.
E. Whether the Decision should be modified to set out the grounds for
the Board’s decision to disregard the conclusion of Petitioner’s
Expert that dilatant compound does not work in a shoe midsole
Patent Owner contends that in its Response, “Patent Owner argued
that Petitioner’s Expert’s testimony represented a failure to create the
claimed shoe and that failure was a secondary consideration that supported
nonobviousness of claim 1 of the 416 Patent.” Req. Reh’g 7 (citing PO
Resp. 61). Patent Owner argues that, however, “[t]he Decision does not
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identify any grounds for disregarding Petitioner’s Expert’s original specific
testimony as to his conclusion in 1985.” Id. at 8 (citing Final Dec. 70;
Ex. 2009, 149:25–150:9). Thus, “Patent Owner requests that the Decision
be modified to set out the grounds for the Panel’s decision not to credit
Petitioner’s Expert’s deposition testimony as to his conclusions in 1985
concerning use of ‘Silly Putty’ in a shoe in favor of his later and different
testimony.” Id.
In its Response in regard to secondary considerations, Patent Owner
argued that “Petitioner’s expert tried and failed in 1985 to create shoes that
had a dilatant compound in the sole.” PO Resp. 61. Petitioner replied that
“Dr. Shorten explains there was not a failed attempt, but a reasonable
decision to not to try because better materials were available.” Pet. Reply 27
(citing Ex. 1071 at ¶¶ 164–170). In his Reply Declaration, Dr. Shorten
testified that Silly Putty in a shoe component “does not perform better than
EVA [(ethyl vinyl acetate)],” that “it performed worse,” and that “[g]iven
the additional cost and weight compared to EVA, Silly Putty does not
provide a better option.” Ex. 1071 ¶ 170.
We stated in the Final Written Decision that Petitioner replied that its
declarant “explains there was not a failed attempt, but a reasonable decision
to not to try because better materials were available.” Final Dec. 70 (citing
Pet. Reply 27). Also, as pointed out in the Final Written Decision, Dr.
Shorten testified that “Silly Putty is heavy and costly compared to EVA, a
benchmark material,” “[g]iven the additional cost and weight compared to
EVA, Silly Putty does not provide a better option,” and “I don’t think it has
any -- in the form we see it in, you know, the patent referenced in the
Townsend, I don’t think there’s any commercial value there personally.” Id.
(citing Ex. 1071 (Shorten Reply Dec.) ¶¶ 164, 170; Ex. 2009 (Shorten
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Deposition), 150:14–17). The Final Written Decision explained that
“[b]ased on the record, a preponderance of the evidence persuades us that
others tried but decided for economic reasons that using a dilatant compound
in a shoe was an unattractive option.” Final Dec. 70. Thus, the Final
Written Decision provided grounds for disregarding Petitioner’s Expert’s
testimony with respect to his conclusion in 1985 to the extent that it conflicts
with the later testimony. The fact that Dr. Shorten clarified or corrected his
earlier testimony does not mean that we should disregard his later testimony,
because there is nothing in the record to hold against the veracity of later
testimonies, other than that earlier inconsistent testimony itself.
Consequently, the request to modify the Final Written Decision to set
out the Board’s decision and reasoning on Patent Owner’s request that the
testimony of Petitioner’s expert’s be disregarded, is granted as shown by our
additional reasoning provided above.

III. CONCLUSION
For the forgoing reasons, Patent Owner has shown that:
(1) Petitioner did not show by a preponderance of the evidence that
claim 1 is unpatentable over AAPA and Izumi (challenge 8), and we thus
grant Patent Owner’s request to modify the Final Written Decision to reflect
this and that Petitioner did not show by a preponderance of the evidence that
claim 6 is unpatentable over AAPA, Izumi, and Chang (challenge 9);
(2) Petitioner did not show by a preponderance of the evidence that
claim 6 is unpatentable over Izumi and Chang (challenge 3) to the extent that
it relied upon the anticipation of claim 1 by Izumi (challenge 1), and we
thus grant Patent Owner’s request to modify the Final Written Decision to
reflect this;
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Patent 7,490,416 B2
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(3) to the extent that the Final Written Decision did not provide
grounds or explanations for denial of Patent Owner’s request that
Petitioner’s expert testimony be disregarded, we grant Patent Owner’s
request to modify the Final Written Decision by providing the grounds or
explanations set forth above; and
(4) to the extent that the Final Written Decision did not provide
grounds or explanations for denial of Patent Owner’s request that the
conclusion of Petitioner’s expert that dilatant compound does not work in a
midsole, we grant Patent Owner’s request to modify the Final Written
Decision by providing the grounds or explanations set forth above.
However, Patent Owner has not shown that the relationship between
Petitioner’s expert and Petitioner and the conflicting testimonies of
Petitioner’s expert rise to the level that Dr. Shorten’s entire testimony should
be disregarded, and we thus we deny Patent Owner’s request to modify the
Final Written Decision to reflect this.
Accordingly, Patent Owner’s Request for Rehearing is granted in part.
Outcome of Decision on Rehearing:
Claim 35 U.S.C. § Reference(s)/Basis Denied Granted
6 103 Izumi, Chang 610
1 103 Applicant admitted
prior art, Izumi
1
6 103 Applicant admitted
prior art, Izumi, Chang
6
Overall
Outcome
1, 6

10 As discussed above, the request is granted only to the extent that this
challenge to claim 6 as unpatentable over Izumi and Chang relies on Izumi
anticipating claim 1.
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Final Outcome of Final Written Decision after Rehearing:
Claim 35
U.S.C.
§
Reference(s)/Basis Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1 102 Izumi 1
1 103 Izumi 1
6 103 Izumi, Chang 6
1 103 Rudy, Plant 1
6 103 Rudy, Plant, Chang 6
1 103 Christensen, Ito 1
6 103 Christensen, Ito,
Chang
6
1 103 Applicant admitted
prior art, Izumi
1
6 103 Applicant admitted
prior art, Izumi,
Chang
6
Overall
Outcome
1, 6

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Patent Owner’s Request for Rehearing Pursuant to
37 C.F.R. § 42.71(d) (Paper 34) is granted in part.

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For PETITIONER:

Darren E. Donnelly
Kevin Davis
POLSINELLI LLP
ddonnelly@polsinelli.com
kdavis@polsinelli.com

For PATENT OWNER:
Steven J. Hampton
Gregory C. Schodde
MCANDREWS, HELD & MALLOY, LTD
shampton@mcandrews-ip.com
gschodde@mcandrews-ip.com