Fox Factory, Inc. v. SRAM, LLC
Docket No. 2019-1544 (IPR2017-01440)
NEWMAN, O’MALLEY, TARANTO
May 18, 2020
Brief Summary: Board IPR obviousness FWD affirmed based on SRAM’s secondary evidence (e.g., “industry skepticism and subsequent praise and long-felt need”).
Summary: Fox appealed Board IPR final written decision (FWD) holding claims 1-26 of SRAM’s US 9,291,250 directed to the arrangement of teeth that engage a bicycle chainring set-up (“X-Sync chainring”) were not shown to be unpatentable for obviousness. The ‘250 patent states a wherein clause including an “axial fill limitation” requiring “widened teeth” that “‘fill at least 80 percent of [the width of] the outer link spaces’ at the midpoint of the tooth”. A parent patent (US 9,182,027) not including the “maximum axial width” limitation was previously disputed and the FWD and remanded to the Board (not at issue here (Fox, FC 2019)). In this IPR, the Board concluded that the axial fill limitation was “unmet by any of Fox Factory’s evidence” and that SRAM’s evidence of secondary considerations overcame Fox’s arguments that modifying the “chainring’s teeth to meet the axial fill limitation” would have nevertheless been obvious. Fox argued “that the Board’s conclusion of nonobviousness is in error because the only difference between the prior art and the claimed invention is the degree to which the widened teeth should fill the outer chain link spaces, measured halfway up the tooth”, “misapplied our precedent on secondary consideration, erroneously granting SRAM a presumption of nexus between the claimed invention and evidence of the success of the X-Sync chainring”, and “that various unclaimed aspects of the X-Sync chainring, such as its tall, asymmetric, and hooked teeth, were the real driver of its success.” While the FC panel agreed with Fox that “‘a mere change in proportion…involve[s] no more than mechanical skill,’ rather than the level of invention required by 35 U.S.C. 103” (Powers-Kennedy, US 1930), it also agreed with the Board’s conclusion that “SRAM’s optimization…displayed significant invention” based on SRAM’s secondary consideration evidence (e.g., “industry skepticism and subsequent praise and long-felt need to solve chain retention problem”; “such evidence defeated…contention of routine optimization”). The FC panel also agreed with the Board’s “determination of nexus, based on its finding that the X-Sync chainring’s success is largely due to its teeth profile, which is ‘essentially the claimed invention’”. The Board decision was therefore affirmed.