The beginning of November 2023 saw Nike file lawsuits in the Federal courts of Massachusetts and Los Angeles against Skechers and New Balance for the improper use of Nike’s patented Flyknit technology intended for running, football and basketball shoes.
On their website, Nike provides a simple definition of their Flyknit technology as ‘a material made up of strong yet lightweight strands of yarn that have been woven into a one-piece upper, securing an athlete’s foot to the shoe platform’. Without sounding like an advertisement, the essence of Nike’s Flyknit technology for high performance sports shoes boils down to the use of high tensile strength Rayon cotton and polyester fabric to enhance durability, support and breathability. The use of these materials also allows for reduced waste due to its inclusion of recycled polyester.
Why is Nike Suing?
The core of Nike’s argument is that its rival brands copied their manufacturing processes, design features and key functionalities into their products. For the record, Nike has over 300 patents associated with Flyknit, and less than 10 are in dispute. Specifically, Nike alleges that Skechers have used Flyknit technology in their Ultra Flex and Glide Step models while New Balance has been accused of using Flyknit in their Fresh Foam and Fuel Cell shoes.
This isn’t Nike’s first rodeo when it comes to patent infringement allegations. Nike has had previous dealings with rival shoe companies Puma and Adidas for similar alleged infringements of their Flyknit patent, although both suits were settled outside of court. Nike is also in the process of suing Lululemon for alleged infringements on the Flyknit patent.
Nike has requested in the Skechers and New Balance cases that the presiding court impose injunctions to prevent further manufacturing and sales of shoes containing the contested Flyknit material. Damages have also been requested, although a dollar amount remains unspecified.
What qualifies as a protected patent in the US?
United States patent law is administered by the United States Patent and Trademark Office (USPTO) and allows a registered patent to provide express rights to the filing company to “exclude others from making, using, offering for sale, or selling” an invention in the US. Subsequently, companies with registered patents such as Nike can instigate actions to stop the sale or use of its invention by other companies.
So, what will Nike have to do to prove to the courts that Skechers and New Balance are guilty of patent infringement? To obtain patent protection and subsequently enforce their legal right in the US, Nike must be able to prove the following requirements set out in Title 35 Part II Chapter 10 of the United States Code:
- The invention must be able to be used and not just a mere theory;
- A clear description of how to make and use the invention must be identifiable;
- The invention must be new or novel (something which has not been created nor used before);
- It must not be an obvious recreation or deviation from an already patented invention.
But, the multi-million dollar question then arises: Does Flyknit technology meet these requirements? While that decision isn’t up to us, we can theorize the arguments that Skechers and New Balance will bring to the table.
To break things down, element 1 and 2 will not be contentious. Flyknit is a physical product, a material, and the practicality of it is clear. That leaves the parties to battle out element 3 and 4.
Skechers have already made their plan of attack clear. They appear to be honing in on element 3; they’re arguing Nike’s Flyknit material isn’t a new invention, because Skechers has been using a similar material for a prolonged period of time. In a statement made on their website on November 16th, a spokesperson said:
“We believe that this lawsuit is baseless. Many brands have been making shoes using knit uppers for years. Skechers has been designing shoes using various forms of knit uppers for close to a decade.”
However, this isn’t the only issue Skechers has with the Nike lawsuit. Their spokesperson continued:
“Skechers believes that this lawsuit is an example of how Nike uses its vast financial resources to stifle competition rather than compete in the marketplace. Skechers also believes that Nike uses its market power in an attempt to monopolize the footwear and sports apparel industries.”
Don’t get us wrong, we love Air Jordans as much as the next guy, but there is truth behind Skechers’ statement. Nike’s request to the courts of a permanent cease on all sales of the Skechers Ultra Flex and Glide Step would likely leave Skechers out of hundreds of millions of dollars of revenue, allowing Nike to further their market domination. For legal news consumers, the long line of patent lawsuits Nike is instigating may remind you of a certain set of golden arches (our apologies to Ronald McDonald). Regardless, their commentary furthers the discussion on an interesting (although concerning) insight: the corporate world is not necessarily about who brings forward the best players, but who swings the bigger bat.
New Balance appears to have tailored their response towards element 4; Flyknit technology is an “obvious recreation” of other patents. In a statement made to CBS, a spokesperson from New Balance argued that using Rayon cotton and polyester fibers for the upper part of a sports shoe is not a new concept, and actually predates the registration of Nike’s Flyknit technology. This perspective resembles that of Adidas in its long term dispute with Nike over the Flyknit patent, in which Adidas nominated their own registered knitted shoe upper patent from 1991.
Why should I care?
Intellectual property and patent law is becoming more important now than ever. New inventions, designs and creations are being patented every day, all across the world and in all sorts of jurisdictions. As a business or product owner, it is crucial that you are aware of how to best protect what is yours.
This article was written by Chris Downes | Paralegal and Nick Tsanaktsidis | Intern Paralegal
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