On December 28, 2023, District Judge Subramanian (S.D.N.Y.) issued claim construction rulings in Nike, Inc. v. Lululemon USA Inc. on four disputed terms. The Court resolved two of the disputed terms in favor of Nike, Inc. (“Nike”); adopted a modified form of Lululemon USA Inc. (“lululemon”)’s construction in one instance; and rejected both parties’ construction as to a fourth term. In sum, a mixed bag for the parties.
Background
We have reported previously on the dispute between Nike and lululemon wherein Nike claims that lululemon’s shoes infringe claims in three of Nike’s Flyknit patents: the ’749, the ’046, and the ’484. Recently, the Court held a claim construction hearing where it resolved certain disputes and decided the remaining claim construction issues in the linked opinion. See Nike, Inc. v. Lululemon USA Inc., No. 23-cv-771 (AS), 2023 WL 9003708 (S.D.N.Y. Dec. 28, 2023) (“Order”).
The Four Terms
- “incorporating [the knitted element/at least one of the first and second textile elements] into the article of footwear”
As to the first disputed term, the Court promptly rejected lululemon’s construction. Judge Subramanian noted that lululemon’s proposal included words that appeared in the disputed claim term— “incorporat[ed],” “knitted textile element,” and “article of footwear”—which, per the Court, was “telltale evidence that those terms do not require construction.” Order at *2 (emphasis added). The additional limitation proposed by lululemon—"without the addition of other non-knitted textile elements prior to its incorporation”—was without support in the claim language, the specification, or the intrinsic record. As Nike had argued, no further construction of the term was needed.
- “tubular structure”
The Court then turned its focus to the term “tubular structure” as referenced in the ’046 Patent. Here, the core dispute between the parties was whether such a structure must be hollow. And though lululemon’s position did not ultimately carry the day, it did not ring totally hollow with the Court. First, lululemon proffered various sources, such as the 2014 Webster's New World College Dictionary and the 2013 American Heritage Desk Dictionary, which indicated that a “tubular structure” will generally be hollow. Second, Judge Subramanian noted that several district courts had “construed the plain and ordinary meaning of ‘tubular’ or ’tube’ to require a hollow structure.” See id. at *3 (citing seven cases). Lastly, the Court noted that the ’046 Patent specification referred to “tubular structures” as being hollow in various places.
Even so, the Court was unable to get past one issue with lululemon’s proposed construction: “A tube need not always be hollow. Tubes can be filled (mail tubes, toothpaste tubes, etc.) and yet they don't suddenly lose their tubular nature.” Id. at *4 (emphasis in original). This tracked with the specification for the ’046 patent which also recognized this reality. For this reason, the Court adopted Nike’s proposed construction.
- “flat knitting process”
The term “flat knitting process” appears in multiple claims of the ’484 Patent. Nike proposed that a flat knitting process can include the use of both weft knitting and warp knitting processes, so long as the resulting material is flat. lululemon, on the other hand, proposed that a flat knitting process is one of two subtypes of weft knitting alone.
The Court first acknowledged that the ’484 Patent does not provide a clear resolution to this entanglement. See id. at *5-7. For its part, Nike offered statements from its expert, who described how flat textiles can be made from both weft and warp knitting. As the Court pointed out, however, that same expert acknowledged that “at least for some individuals, flat knitting as a process refers to a brand of weft knitting.” Id. at *5. Moreover, that same expert, in the context of an International Trade Commission (“ITC”) proceeding, had previously indicated that “all flat knitting is flat weft knitting.” Id. at *6. (And in further support of lululemon’s construction, the inventors of the ’484 Patent—who had also testified in that ITC proceeding—provided that flat knitting is not warp knitting.)
In the end, the Court determined that the intrinsic and extrinsic evidence in the record made clear that “a person of skill in the art would have understood ‘flat knitting process’ to refer to a subtype of weft knitting, rather than any knitting process that yields a flat material.” Id. The Court adopted a modified form of lululemon’s construction, construing “flat-knitting process” to mean “flat weft-knitting process.”
- “flat-knitted element”
Judge Subramanian’s Order ended with a seemingly seamless finding. Nike and lululemon disputed the meaning of “flat-knitted element,” which appears the ’484 Patent. The Court proposed that “the flat-knitted element including a first layer ...” be construed as “the formed flat-knitted element including a first layer ...” Id. at *7 (emphasis added). Both parties agreed to this construction and, so, it became part of the fabric of the Order.
The case is Nike, Inc. v. Lululemon USA Inc., No. 23-cv-771 (AS) (S.D.N.Y.).
