Skechers IPR Still Kicking After Director Review

by | Sep 11, 2025 | PTAB News, Trial Institution

By Adam Cook and Matt Johnson –

In a Director Review, the Acting Director reversed a panel decision to discretionarily deny an IPR under § 325(d).  The Acting Director held that the PTAB’s own findings in two previous IPRs sufficiently proved Examiner error during prosecution.  See Skechers U.S.A., Inc. v. Nike, Inc., No. IPR2025-00141, Paper 23 (P.T.A.B. Aug. 21, 2025).

In November 2024, Skechers filed a petition seeking IPR of U.S. Patent No. 8,266,749 (the “’749 Patent”), which claims several methods of manufacturing footwear by simultaneous knitting.  In the petition, Skechers argued that U.S. Patent No. 5,345,638 (“Nishida”) anticipated several claims of the ’749 Patent.  However, during the ’749 Patent’s prosecution, Nike successfully convinced the Examiner that Nishida did not disclose the claimed simultaneous knitting.

In its petition, Skechers argued that the Examiner had erred regarding Nishida and pointed to two prior IPR decisions in cases against the ’749 Patent in which the PTAB found that “Nishida [taught] simultaneously knitting[.]”  Id., Paper 1 (citing adidas AG v. Nike, Inc., No. IPR2016-00922, Paper 31 (P.T.A.B. Feb. 19, 2019).  In response, Nike raced to contend that the Examiner correctly considered Nishida during prosecution and that Skechers’ petition should be denied based on § 325(d).  See id., Paper 6; 35 U.S.C. § 325(d) (“[T]he Director may . . . reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.”)

After more briefing on the subject, the PTAB sided with Nike and stomped out Skechers’ petition under § 325(d).  The PTAB held that Skechers failed to prove that the Examiner materially erred during prosecution, specifically stating that Skechers merely cited the prior IPRs as evidence of Examiner error and did not assert its own grounds in its briefings.  See Skechers, No. IPR2025-00141, Paper 20 (“Petitioner, however, does not identify, in its § 325(d) analysis, what teachings purportedly were misapprehended or overlooked [by the Examiner].”).  Skechers filed a request for Director Review arguing that the PTAB’s discretionary denial was a misstep because it explicitly contradicted the findings of two prior panels.  See id., Paper 21.

The Acting Director sided with Skechers holding, “The Board . . . abused its discretion in failing to reach Petitioner’s arguments that Nishida teaches the limitations of the challenged claims.”  Id., Paper 23.  To the Acting Director, Skechers’ citation to the two prior IPRs was sufficient to meet its burden to affirmatively assert Examiner error.  Thus, the Acting Director reversed the PTAB’s denial and remanded the case for consideration with Nishida’s alleged anticipation as the sole ground.

This decision emphasizes the importance of a challenged patent’s prosecution and post-grant histories to an IPR analysis.  Prior PTAB findings addressing whether the asserted prior art discloses elements of the challenged patent’s claims will be considered by future panels, not only in § 325(d) determinations, but also in substantive invalidity decisions to boot.  Here, Skechers’ citation to prior PTAB findings that the Examiner had erred during prosecution was enough to prove that error as required by § 325(d).

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Matthew Johnson

Partner at Jones Day
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.