July 3, 2018

Adidas and Nike Race Back to PTAB to Address Non-Instituted Grounds

By Bryan K. Wheelock, Principal

In Adidas AG v. Nike, Inc., [2018-1180, 2018-1181] (July 2, 2018), the Federal Circuit granted Adidas’ motion to remand the appeal back to the Patent Trial and Appeal Board (PTAB) to consider the non-instituted grounds in Adidas’ Petitions for Inter Partes Review against Nike’s U.S. Patent Nos. 7,814,598 and 8,266,749.

The PTAB’s final written decision found that Nike’s patents were not unpatentable on the instituted grounds, but did not reach a second, non-instituted grounds.  After the Supreme Court’s decision in SAS, Adidas promptly moved to remand for the Board to consider the non-instituted ground.  The Federal Circuit agreed, as it had in several other cases, that remand was appropriate without first deciding the appeal of the claims and grounds already before it.