Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 70
`Date: February 25, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FOX FACTORY, INC.,
`Petitioner,
`v.
`SRAM, LLC,
`Patent Owner.
`
`IPR2017-00118
`Patent 9,182,027 B2
`
`
`
`
`
`
`
`
`
`Before MICHAEL W. KIM, Vice Chief Administrative Patent Judge,
`FRANCES L. IPPOLITO, and KEVIN W. CHERRY,
`Administrative Patent Judges.
`CHERRY, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision on Remand
`Determining All Challenged Claims Unpatentable
`35 U.S.C. §§ 144, 318
`
`
`
`
`Tel: 571-272-7822
`
`Paper 70
`Date: February 25, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FOX FACTORY, INC.,
`Petitioner,
`v.
`SRAM, LLC,
`Patent Owner.
`
`IPR2017-00118
`Patent 9,182,027 B2
`
`
`
`
`
`
`
`
`
`Before MICHAEL W. KIM, Vice Chief Administrative Patent Judge,
`FRANCES L. IPPOLITO, and KEVIN W. CHERRY,
`Administrative Patent Judges.
`CHERRY, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision on Remand
`Determining All Challenged Claims Unpatentable
`35 U.S.C. §§ 144, 318
`
`
`
`
`
`IPR2017-00118
`Patent 9,182,027 B2
`
`I.
`
`INTRODUCTION
`
`A. BACKGROUND
`1.
`Original Proceedings Before the Board
`
`Fox Factory, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting institution of inter partes review of claims 7–12 and 20–26 (“the
`challenged claims”) of U.S. Patent No. 9,182,027 B2 (Ex. 1001, “the ’027
`patent”) on eight asserted grounds for unpatentability:
`References
`35 U.S.C. §
`Claims Challenged
`Thompson1, JP-Shimano2
`7, 8, 11, 12, 20–22, 25,
`103(a)3
`26
`103(a)
`9, 10, 23, 24
`103(a)
`7, 8, 11, 20–22, 25
`103(a)
`9, 10, 12, 23, 24, 26
`7, 8, 11, 12, 20–22, 25,
`103(a)
`26
`103(a)
`9, 10, 23, 24
`103(a)
`7, 8, 11, 20–22, 25
`
`Thompson, JP-Shimano, Hattan4
`Dake5, Martin6
`Dake, Martin, Hattan
`Thompson, Martin
`
`Thompson, Martin, Hattan
`Dake, JP-Shimano
`
`
`1 U.S. Patent No. 6,273,836 B1, issued Aug. 14, 2001 (Ex. 1019).
`2 Japanese Utility Model Application Kokai Publication No. JP S56-42489,
`published Apr. 18, 1981 (Ex. 1006). Exhibit 1006 includes both the
`published Japanese Patent Application (pages 1–10) and an English
`translation (pages 11–18). We refer exclusively to the English translation.
`3 Because the claims at issue have an effective filing date prior to
`March 16, 2013, the effective date of the applicable provisions of the Leahy-
`Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011)
`(“AIA”), we apply the pre-AIA version of 35 U.S.C. § 103 in this Decision.
`4 U.S. Patent No. 3,375,022, issued Mar. 26, 1968 (Ex. 1004).
`5 U.S. Patent No. 556,254, issued Mar. 10, 1896 (Ex. 1009).
`6 U.S. Patent No. 4,174,642, issued Nov. 20, 1979 (Ex. 1005).
`
`2
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`IPR2017-00118
`Patent 9,182,027 B2
`
`Dake, JP-Shimano, Hattan
`
`103(a)
`
`9, 10, 12, 23, 24,
`26
`
`
`Pet. 15, 45, 57, 80, 91. SRAM, LLC (“SRAM” or “Patent Owner”) filed a
`Preliminary Response (Paper 5, “Prelim. Resp.”).
`Pursuant to 35 U.S.C. § 314, we instituted inter partes review
`(“Decision to Institute”) of the ’027 patent as to (1) claims 7, 8, 11, 12, 20–
`22, 25, and 26 under 35 U.S.C. § 103(a) as unpatentable over Thompson and
`JP-Shimano; and (2) claims 9, 10, 23, and 24 under 35 U.S.C. § 103(a) as
`unpatentable over Thompson, JP-Shimano, and Hattan. Paper 8 (“Dec.”),
`27. We did not institute inter partes review on any of the other grounds set
`forth in the Petition. See id.
`After institution, Patent Owner filed a Patent Owner Response to the
`Petition, addressing only the instituted grounds (Paper 13 (“PO Resp.”)), and
`Petitioner filed a similarly limited Reply (Paper 32 (“Reply”)). Patent
`Owner was also permitted to file a Sur-Reply (Paper 38 (“Sur-Reply”)). We
`held a consolidated oral hearing with IPR2016-01876 and IPR2017-00472
`on January 12, 2018. A transcript of the oral hearing has been entered into
`the record. Paper 58 (“Tr.”).
`Petitioner relies on the testimony of Richard R. Neptune, Ph.D.
`(Ex. 1023 and Ex. 1050) in support of its contentions. Patent Owner relies
`on the testimony of Robert H. Sturges, Ph.D. (Ex. 2002 and Ex. 2074) and
`Ron Ritzler (Ex. 2004 and Ex. 2076) in support of its contentions.
`Petitioner also filed a Motion to Exclude certain evidence. Paper 45
`(“Pet. Mot. Exclude”). Patent Owner filed an Opposition to Petitioner’s
`Motion to Exclude. Paper 51 (“PO Opp.”). Petitioner also filed a Reply in
`support of its Motion to Exclude. Paper 53 (“Pet. Mot. Reply”). Patent
`
`3
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`IPR2017-00118
`Patent 9,182,027 B2
`Owner also filed a Motion to Exclude certain evidence. Paper 46 (“PO Mot.
`Exclude”). Petitioner filed an Opposition to Patent Owner’s Motion to
`Exclude. Paper 50 (“Pet. Opp.”). Patent Owner filed a Reply in support of
`its Motion to Exclude. Paper 52 (“PO Mot. Reply”).
`Patent Owner also filed Observations on Cross Examination. Paper
`41 (“Obs.”). Petitioner filed a Response to Patent Owner’s Observations on
`Cross Examination. Paper 48 (“Response Obs.”). We considered Patent
`Owner’s observations and Petitioner’s response in arriving at our Final
`Written Decision in this case.
`On April 2, 2018, we issued a Final Written Decision. See Paper 59
`(“Final Written Decision” or “Final Dec.”). We determined that Petitioner
`failed to demonstrate by a preponderance of the evidence that claims 7–12
`and 20–26 of the ’027 patent were unpatentable as rendered obvious by the
`combined teachings of Thompson and JP-Shimano, and Thompson, JP-
`Shimano, and Hattan.7 Id. at 64. On April 24, 2018, the U.S. Supreme
`Court held that a decision to institute under 35 U.S.C. § 314 may not
`institute on fewer than all of the claims challenged in the Petition. SAS Inst.,
`Inc. v. Iancu, 138 S. Ct. 1348, 1354 (2018). Although the panel instituted
`review on all of the challenged claims, the panel had not instituted review on
`all of the asserted grounds. Petitioner appealed our Final Written Decision
`to the U.S. Court of Appeals for the Federal Circuit. See Paper 61.
`
`
`7 We also denied-in-part and dismissed-as-moot in part the parties’ Motions
`to Exclude. Final Dec. 64. Neither party challenges the portion of our
`ruling denying their Motions. Furthermore, we have not relied on any of the
`exhibits for which we dismissed the Motions as moot. Accordingly, we do
`not revisit our determinations on the Motions to Exclude.
`
`4
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`IPR2017-00118
`Patent 9,182,027 B2
`
`2.
`
`Federal Circuit Decision
`
`On December 18, 2019, the Federal Circuit issued a decision vacating
`the obviousness determination in our Final Written Decision and remanding
`this case to “reevaluate the import of the evidence of secondary
`considerations with the burden of proving nexus placed on the correct
`party.” Fox Factory v. SRAM, LLC, 944 F.3d 1366, 1380 (Fed. Cir. 2019)
`cert. denied No. 20-158, 2020 WL 5883383 (Mem. Oct. 5, 2020) (also in the
`record as Ex. 3001). The Federal Circuit also remanded this case for us to
`“consider the non-instituted grounds” in accordance with SAS Institute. Id.
`
`3.
`
`Remand Proceedings
`
`On April 15, 2020, we conferred with the parties to discuss the
`procedure for the remand. Paper 62, 4. Regarding the evidence of
`secondary considerations, the parties agreed that no new evidence was
`necessary, but that additional briefing was necessary. Id. at 5. Regarding
`the non-instituted grounds, Petitioner notified us that it did not intend to
`pursue the non-instituted grounds and would request partial adverse
`judgment on those grounds. Id. at 4–6.
`On April 24, 2020, we authorized additional briefing on the narrow
`issue of “the import of the evidence of secondary considerations with the
`burden of proving nexus placed on the correct party.” Paper 62, 7. We also
`modified the Decision to Institute to include review of all challenged claims
`and all grounds presented in the Petition. Id. at 6.
`On April 30, 2020, Petitioner requested partial adverse judgment
`under 37 C.F.R. § 42.73(b) on the grounds for which we did not originally
`institute inter partes review in this proceeding. Paper 63, 2. Patent Owner
`did not oppose the request, which we address below.
`
`5
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`IPR2017-00118
`Patent 9,182,027 B2
`Patent Owner filed an opening Brief on Remand (Paper 65, “PO Br.”),
`Petitioner filed a Response Brief on Remand (Paper 66, “Pet. Br.”), Patent
`Owner filed a Reply Brief on Remand (Paper 68, “Remand Reply”), and
`Petitioner filed a Sur-Reply Brief on Remand (Paper 69, “Remand Sur-
`Reply”).
`We have jurisdiction under 35 U.S.C. §§ 6(b) and 144(b). This
`Decision is a final written decision under 35 U.S.C. § 318(a) as to the
`patentability of the challenged claims. We determine that Petitioner has
`shown, by a preponderance of the evidence, that claims 7–12 and 20–26 are
`unpatentable.
`
`B. RELATED PROCEEDINGS
`
`Patent Owner asserted infringement of the ’027 patent in SRAM, LLC
`v. Race Face Performance Products, Case No. 1:15-cv-11362-JHL (N.D.
`Ill.). Paper 4, 3; Pet. 92.
`The ’027 patent is one of a number of related, issued patents and
`pending applications. See Paper 4, 1. The ’027 patent is also at issue in the
`following post-grant proceedings: (1) FOX Factory, Inc. v. SRAM, LLC,
`IPR2016-01876 and (2) FOX Factory, Inc. v. SRAM, LLC, IPR2017-00472.
`Paper 7, 2. An ex parte reexamination proceeding for the ’027 under
`Reexamination Control No. 90/013,715 was initiated on June 2, 2016. Id.
`We stayed this reexamination on April 3, 2017. See Paper 7.
`
`C. THE ’027 PATENT
`
`The ’027 patent relates generally to chainrings, and more particularly
`to a solitary chainring for use with a conventional chain in a bicycle
`drivetrain system that includes a bicycle crank. Ex. 1001, 1:5–7. Bicycles
`
`6
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`
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`IPR2017-00118
`Patent 9,182,027 B2
`and other chain-driven vehicles typically employ one or more chainrings and
`a set of rear hub-mounted sprockets connected by a chain. Id. at 1:8–10.
`According to the ’027 patent, the management of chain and chainring
`engagement in bicycles is important, and various mechanisms are used to
`maintain the chain on the chainring and the sprockets, including chain
`guards, chain tensioners, chain catchers, and derailleur configurations,
`among others. Id. at 1:10–13. The ’027 patent explains that managing the
`connection between the chain and the chainring is particularly difficult in
`geared bicycles, which can experience severe changes in chain tension and
`energy motion of the chain, especially when riding over rough terrain. Id. at
`1:14–20. Specifically, the ’027 patent asserts that it is directed to a solution
`for the problem of chain management, especially for a bicycle that can
`successfully and reliably be ridden over challenging and rough terrain. Id. at
`1:27–29.
`Figure 3 of the ’027 patent illustrates a drive chain and chainring, and
`is reproduced below:
`
`
`Figure 3, reproduced above, is an isometric view of a combined drive chain
`and chainring, according to the purported invention, engaged by a drivetrain.
`
`7
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`IPR2017-00118
`Patent 9,182,027 B2
`Id. at 2:21–22. Figure 3 shows chainring 50 and conventional chain 10. Id.
`at 3:44–45. Crank or crank arm 48 attaches to chainring 50. Id. at 3:47–49.
`Force applied to crank arm 48 (typically, in a downward direction) causes
`rotation of chainring 50 in a like direction (clockwise). Id. at 3:55–57. The
`rotation of chainring 50 causes chain 10 to be drawn over and advanced
`about chainring 50. Id. at 3:57–59.
`As is illustrated in Figure 3, chainring 50 includes a plurality of teeth,
`including first group of teeth 58 and second group of teeth 60. Id. at 3:60–
`67. Drive chain 10 includes outer chain links 12 and inner chain links 14.
`Id. at 2:63–65. First group of teeth 58 is configured to be received by, and
`fitted into, the outer link spaces of drive chain 10, and second group of
`teeth 60 is configured to be received by, and fitted into, the inner link spaces.
`Id. at 3:66–4:3. Each tooth can have an optional tip portion that protrudes
`forwardly from a line drawn where rollers in the chain contact the tooth. Id.
`at 5:33–48. The ’027 patent explains that this protruding tip portion
`“functions to engage a chain link earlier than a chain lacking the tip portion
`and provides better guiding of the chain.” Id. at 5:48–51.
`D. ILLUSTRATIVE CLAIM
`Claims 7 and 20, both apparatus claims, are the only independent
`claims of the ’027 patent challenged in the Petition. Claims 8–12 each
`depend from claim 7. Claims 21–26 each depend from claim 20. Claim 7 is
`illustrative of the subject matter in this proceeding and is reproduced below.
`
`8
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`
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`IPR2017-00118
`Patent 9,182,027 B2
`7. A bicycle chainring for engagement with a drive chain,
`comprising:
`a plurality of teeth formed about a periphery of the
`chainring,
`the plurality of teeth including a first group of
`teeth and a second group of teeth,
`each of the first group of teeth wider than each of
`the second group of teeth and at least some of
`the second group of teeth arranged alternatingly
`and adjacently between the first group of teeth,
`wherein each of the plurality of teeth includes a
`tooth tip;
`wherein a plane bisects the chainring into an outboard
`side and an inboard side opposite the outboard side;
`and
`wherein at least the majority of the tooth tip of at least
`one of each of the first and second groups of teeth is
`offset from the plane in a direction toward the inboard
`side of the chainring.
`Id. at 7:32–46.
`
`II. ANALYSIS
`A. PARTIAL ADVERSE JUDGMENT
`As discussed in § I.A, supra, we initially instituted inter partes review
`to determine the patentability of all of the claims challenged in the Petition
`on only a subset of the grounds raised in the Petition. Dec. 17–27. We
`subsequently modified our Decision to Institute to review all of the
`challenged claims on all of the challenged grounds. Paper 62, 6.
`Petitioner requested partial adverse judgment on those claims and
`grounds for which we did not initially institute inter partes review. Paper
`63, 2. In particular, Petitioner requested adverse judgment on the following
`claims and grounds:
`
`9
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`IPR2017-00118
`Patent 9,182,027 B2
`
`References
`Dake, Martin
`Dake, Martin, Hattan
`Thompson, Martin
`Thompson, Martin, Hattan
`Dake, JP-Shimano
`Dake, JP-Shimano, Hattan
`
`35 U.S.C. §
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`
`Claims Challenged
`7, 8, 11, 20–22, 25
`9, 10, 12, 23, 24, 26
`7, 8, 11, 12, 20–22, 25, 26
`9, 10, 23, 24
`7, 8, 11, 20–22, 25
`9, 10, 12, 23, 24,
`26
`
`
`Id. Patent Owner did not oppose Petitioner’s request. As a result, we find
`that Petitioner has failed to show by a preponderance of evidence that:
`1. Claims 7, 8, 11, 20–22, and 25 are unpatentable as obvious over Dake
`and Martin;
`2. Claims 9, 10, 12, 23, 24, and 26 are unpatentable as obvious over
`Dake, Martin, and Hattan;
`3. Claims 7, 8, 11, 12, 20–22, 25, and 26 are unpatentable as obvious
`over Thompson and Martin;
`4. Claims 9, 10, 23, and 24 are unpatentable as obvious over Thompson,
`Martin, and Hattan;
`5. Claims 7, 8, 11, 20–22, and 25 are unpatentable as obvious over Dake
`and JP-Shimano; and
`6. Claims 9, 10, 12, 23, 24, and 26 are unpatentable as obvious over
`Dake, JP-Shimano, and Hattan.
`In view of our granting Petitioner’s request for partial adverse
`judgment, the remaining grounds in the Petition for consideration are:
`References
`35 U.S.C. §
`Claims Challenged
`Thompson, JP-Shimano
`7, 8, 11, 12, 20–22, 25,
`103(a)
`26
`
`10
`
`
`
`IPR2017-00118
`Patent 9,182,027 B2
`
`Thompson, JP-Shimano, Hattan
`
`103(a)
`
`9, 10, 23, 24
`
`
`
`B. OBVIOUSNESS OF CLAIMS 7, 8, 11, 12, 20–22, 25, AND 26
`As discussed above, the Federal Circuit remanded on the issue of
`“reevaluat[ing] the import of the evidence of secondary considerations with
`the burden of proving nexus placed on the correct party.” Fox Factory, 944
`F.3d at 1380. Before addressing the evidence of secondary considerations,
`we briefly summarize our findings regarding the undisputed aspects of
`Petitioner’s obviousness challenges to claims 7, 8, 11, 12, 20–22, 25, and 26
`on remand.
`
`Differences Between the Prior Art and the Claimed
`1.
`Invention
`In the Petition, Petitioner maps each of the limitations of claims 7, 8,
`11, 12, 20–22, 25, and 26 to teachings in Thompson and JP-Shimano.
`Pet. 24–45; see Pet. 16–22. Patent Owner did not dispute that the references
`disclosed any of these limitations. See generally PO Resp. In the Final
`Written Decision, we were persuaded that Petitioner showed sufficiently that
`the references taught each of the limitations of the claims. See Final Dec.
`12–13, 47.
`
`2. Motivation to Combine
`In the Final Written Decision, we determined that Petitioner provided
`a sufficient rationale to combine the teachings of the references. Final Dec.
`13–17, 47. In particular, we were persuaded by Petitioner’s evidence that
`“Thompson would have been improved by adding the wide-narrow teeth of
`JP-Shimano in certain situations when the chain approaches the chairing
`from the rear gears at an angle.” Final Dec. 15 (citing Ex. 1050 ¶¶ 12–14;
`Ex. 1006, 15:73–75). Additionally, on appeal, the Federal Circuit
`
`11
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`IPR2017-00118
`Patent 9,182,027 B2
`determined that any challenge by Petitioner to the motivation findings made
`in the Final Written Decision was waived or, alternatively, that the findings
`were supported by substantial evidence. See Fox Factory, 944 F.3d at 1378–
`79.”
`
`Objective Indicia of Non-Obviousness
`3.
`In the Final Written Decision, we determined that Patent Owner was
`entitled to a presumption of nexus between its objective evidence of non-
`obviousness (so called “secondary considerations”) tied to the X-Sync
`chainring and the invention recited in the challenged claims. Final Dec. 19–
`29. On appeal, the Federal Circuit determined that we “erroneously
`presumed nexus between the evidence of secondary considerations and the
`independent claims.” Fox Factory, 944 F.3d at 1378. However, the Federal
`Circuit explained that “[a] finding that a presumption of nexus is
`inappropriate does not end the inquiry into secondary considerations,” as
`Patent Owner still has the opportunity to “prove nexus by showing that the
`evidence of secondary considerations is the ‘direct result of the unique
`characteristics of the claimed invention.’” Id. at 1373–74. Specifically, the
`Federal Circuit explained that Patent Owner “bear[s] the burden of proving
`that the evidence of secondary considerations is attributable to the claimed
`combination of wide and narrow teeth with inboard or outboard offset teeth,
`as opposed to, for example, prior art features in isolation or unclaimed
`features.” Id. at 1378 (citing Ethicon Endo-Surgery, Inc. v. Covidien LP,
`812 F.3d 1023, 1034 (Fed. Cir. 2016)).
`
`12
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`IPR2017-00118
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`On remand, Patent Owner presents evidence of long-felt need,
`licensing, and copying.8 PO Br. 6–15. The only dispute is whether Patent
`Owner establishes a nexus between its evidence of secondary considerations
`and the claimed combination of inboard-offset, wide and narrow teeth. We
`have considered Patent Owner’s evidence on remand in light of the Federal
`Circuit’s decision, and address the nexus for the evidence of long-felt need,
`licensing, and copying in turn. For the reasons below, despite our findings
`regarding Patent Owner’s evidence of secondary considerations, we
`determine those findings are entitled to little or no weight because Patent
`Owner has failed to establish a nexus between that evidence and the claimed
`invention.
`
`Nexus for Evidence of Long-Felt Need
`a)
`Patent Owner asserts that there is a nexus between its evidence of
`long-felt need and the claimed combination of inboard-offset, wide and
`narrow teeth. PO Br. 10–12; Remand Reply 5–8. To support its nexus
`argument, Patent Owner relies on testimony from Dr. Sturges. PO Br. 10–
`12 (citing Ex. 2074 ¶¶ 80, 83–85); Remand Reply 5–8.
`Petitioner argues that Patent Owner’s nexus evidence as to long-felt
`need fails to prove that the combination of the X-Sync’s inboard-offset,
`narrow-wide teeth met the asserted long-felt need. Pet. Br. 3–8; Remand
`Sur-Reply 4–8. According to Petitioner, Dr. Sturges’s testimony as to long-
`
`
`8 In its Patent Owner Response, Patent Owner also presented evidence of
`commercial success, industry praise, and skepticism. See PO Resp. 17–44.
`Patent Owner has not presented any argument for a nexus under the
`clarifications provided by the Federal Circuit’s opinion in this case.
`Accordingly, we do not consider those categories of secondary
`considerations.
`
`13
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`IPR2017-00118
`Patent 9,182,027 B2
`felt need refers to the X-Sync chainring overall, which cannot be attributed
`to the ’027 patent because the X-Sync contains critical features that are
`unclaimed in the ’027 patent. Pet. Br. 3–7; Remand Sur-Reply 4–5.
`Petitioner asserts that Dr. Sturges’s statements regarding specific features of
`the X-Sync do not address the claimed combination of inboard-offset, wide
`and narrow teeth. Pet. Br. 7. Further, Petitioner argues that Dr. Sturges’s
`testimony is conclusory. Pet. Br. 5, 8; Remand Sur-Reply 5–6.
`Having reviewed Patent Owner’s evidence, we determine that, at best,
`Patent Owner shows a weak nexus between the evidence of long-felt need
`and the claimed combination of inboard-offset, wide and narrow teeth.
`Patent Owner does not dispute that Dr. Sturges’s testimony directed to the
`X-Sync chainring overall does not establish a nexus. Remand Reply 5–8.
`Thus, we consider Dr. Sturges’s testimony to the extent it discusses the ’027
`patent and specific features of the X-Sync products.
`Dr. Sturges’s testimony includes some statements addressing the ’027
`patent and the claimed invention as a whole. See Ex. 2074 ¶ 80 (“It is my
`opinion that the claimed invention solves a long-felt need in the industry and
`succeeds where others have failed.”); id. ¶ 83 (“SRAM was able to eliminate
`these problems, along with the problem of chain drop, with their X-Sync
`chainrings and the features of the challenged claims.”); id. ¶ 84 (“No one
`else thought to combine narrow and wide teeth with asymmetric offsets in a
`chainring before the ‘027 patent.”); id. ¶ 85 (“[T]he claimed invention
`addressed the long-felt need . . . for a chainring that could maintain a chain
`through specific tooth profiles and gap-filling dimensions compared to the
`chain link spaces (along with additional claimed features) without the
`additional chain-retaining mechanisms utilized over the last century.”).
`
`14
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`IPR2017-00118
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`These general statements provide, at best, a weak link between Dr. Sturges’s
`testimony of long-felt need and the claims of the ’027 patent. They are not
`enough to prove that the evidence of long-felt need “is attributable to the
`claimed combination of wide and narrow teeth with inboard or outboard
`offset teeth, as opposed to, for example, prior art features in isolation or
`unclaimed features.” See Fox Factory, 944 F.3d at 1378.
`To the extent that Dr. Sturges’s cited testimony mentions specific
`features of the X-Sync product, it does not establish a long-felt need that is
`met by the claimed combination of inboard-offset, wide and narrow teeth.
`See Ex. 2074 ¶ 84 (“No one else thought to combine narrow and wide teeth
`with asymmetric offsets in a chainring before the ‘027 patent.”); id. ¶ 85
`(“the claimed invention addressed the long-felt need . . . for a chainring that
`could maintain a chain through specific tooth profiles and gap-filling
`dimensions compared to the chain link spaces”). Indeed, Dr. Sturges’s long-
`felt need testimony is silent as to any inboard offset. See id. ¶¶ 80–85.
`Dr. Sturges’s statements generally discussing the X-Sync and the
`challenged claims, as well as the absence of evidence specific to the claimed
`combination of inboard-offset, wide and narrow teeth, leads us to conclude
`that, at best, the nexus between the evidence of long-felt need and the
`combination of the inboard-offset, narrow-wide teeth is weak. We therefore
`accord Patent Owner’s evidence of long-felt need little weight.
`b)
`Nexus for Evidence of Licensing and Commercial
`Acquiescence
`Patent Owner also asserts that there is a nexus between its evidence of
`licensing and commercial acquiescence and the claimed combination of
`inboard-offset, wide and narrow teeth. PO Br. 13; Remand Reply 8. Patent
`Owner relies on seven licenses that are “affirmative evidence of nexus”
`
`15
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`because they are “specifically tied to the ’027 patent.” PO Br. 12–13 (citing
`Exs. 2091–2106).
`Petitioner disputes that the evidence shows the licenses were a “direct
`result” of the claimed combination inboard-offset, wide and narrow teeth.
`Pet. Br. 11–13; Remand Sur-Reply 8–9. Petitioner argues that the licenses
`in Exhibits 2102 and 2104 identify other patents in addition to the ’027
`patent. Pet. Br. 12. Petitioner asserts that Patent Owner’s remaining
`licenses (Exs. 2092, 2094, 2096, 2098, and 2100) do not mention the ’027
`patent, and also cover at least nine U.S. patents and applications. Id.
`Patent Owner responds that it “only ‘retains the burden of proving the
`degree to which evidence of secondary considerations tied to a product is
`attributable to a particular claimed invention.’” Remand Reply 8 (quoting
`Fox Factory, 944 F.3d at 1378).
`We determine that, at best, Patent Owner shows a weak nexus for two
`of its licenses. The only two licenses that explicitly mention the ’027 patent
`are the licenses with Saris Cycling Group (Ex. 2102) and White Industries
`(Ex. 2104). As such, these licenses are linked to the claims of the ’027
`patent. Nonetheless, such references to the ’027 patent generally are not
`enough to prove that the licenses are attributable to the claimed combination
`of inboard-offset, wide and narrow teeth. Moreover, the licenses with Saris
`Cycling Group (Ex. 2102) and White Industries (Ex. 2104) are not limited to
`just the ’027 patent and include related patents and other patents. Thus, the
`link to the claimed combination of inboard-offset, wide and narrow teeth is
`weak, at best.
`Patent Owner does not dispute that its remaining licenses (Exs. 2092,
`2094, 2096, 2098, 2100) do not mention the ’027 patent. See Pet. Br. 12;
`
`16
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`IPR2017-00118
`Patent 9,182,027 B2
`Remand Reply 8–9. Because Patent Owner’s remaining five licenses (Exs.
`2092, 2094, 2096, 2098, 2100) do not mention the ’027 patent, we are not
`persuaded that Patent Owner shows sufficiently that the remaining licenses
`are attributable to the claimed inboard offset, wide-narrow teeth. Even if
`Patent Owner correctly states that its burden is only to prove the degree to
`which evidence of secondary considerations is attributable to a particular
`claimed invention (Remand Reply 8), Patent Owner has not shown that the
`licenses in Exhibits 2092, 2094, 2096, 2098, and 2100 are attributable to the
`’027 patent to any degree.
`Accordingly, we determine that, at best, there is a weak nexus with
`respect to the licenses to Saris Cycling Group (Ex. 2102) and White
`Industries (Ex. 2104), and no nexus with respect to the remaining licenses
`(Exs. 2092, 2094, 2096, 2098, 2100). We therefore accord Patent Owner’s
`licensing evidence little weight.
`c)
`Nexus for Evidence of Copying
`Patent Owner asserts that there is a nexus between its evidence of
`copying and the claimed combination of inboard-offset, wide and narrow
`teeth. PO Br. 14–15; Remand Reply 10. Patent Owner relies on the
`testimony of Dr. Sturges and Ron Ritzler. PO Br. 14–15 (citing Ex. 2074
`¶¶ 76–77, 79; Ex. 2076 ¶¶ 40–41, 45–49); Remand Reply 10.
`Petitioner argues that Patent Owner’s evidence is insufficient because
`it fails to show that the allegedly novel combination of the ’027 patent is
`what led to the alleged copying. Pet. Br. 13–15; Remand Sur-Reply 9–10.
`Having reviewed Patent Owner’s evidence, we are not persuaded that
`Patent Owner shows a nexus for its copying evidence. Dr. Sturges testifies
`that Race Face chainring includes every limitation of the challenged claims,
`
`17
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`IPR2017-00118
`Patent 9,182,027 B2
`including the inboard offset and alternating wide and narrow teeth, as well as
`other features of the X-Sync chainrings. See Ex. 2074 ¶¶ 76–77, 79.
`Similarly, Mr. Ritzler’s testifies that other companies copied the features of
`the ’027 patent, including the asymmetric offset and narrow-wide teeth, and
`other features of the X-Sync chainrings. See Ex. 2076 ¶¶ 40–41, 45. Mr.
`Ritzler further testifies that companies had access to Patent Owner’s X-Sync
`through the advertised benefits of the technology claimed in the ’027 patent
`and praise and accolades the features of the ’027 patent has received. At
`best, Patent Owner’s evidence suggests that there may be competitors’
`products that are covered by the claims. However, none of Patent Owner’s
`evidence establishes that the inboard-offset, wide and narrow teeth led to
`“copying.”
`Based on the record before us, we find that Patent Owner fails to
`establish a nexus between the evidence of copying and the inboard-offset,
`wide and narrow teeth. We therefore accord Patent Owner’s copying
`evidence no weight.
`4.
`Conclusion of Obviousness for Claims 7, 8, 11, 12, 20–
`22, 25, and 26
`As discussed above, we find that Petitioner has shown sufficiently that
`the references teach each limitation of claims 7, 8, 11, 12, 20–22, 25, and 26.
`See supra § II.B.1. We also find that Petitioner has shown there would have
`been a rationale to combine the references. See supra § II.B.2.
`
`Although Patent Owner presents evidence of secondary
`considerations, we find that Patent Owner establishes, at best, a weak nexus
`for its evidence of long-felt need and licensing, and accord that evidence
`some, but only little weight. We further find that Patent Owner does not
`establish a nexus for its copying evidence, and accord that evidence no
`
`18
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`IPR2017-00118
`Patent 9,182,027 B2
`weight. This weak showing of objective indicia does not outweigh
`Petitioner’s sufficient showing of obviousness. See Intercontinental Great
`Brands LLC v. Kellogg North Am. Co., 869 F.3d 1336, 1347 (Fed. Cir.
`2017) (finding secondary considerations insufficient to outweigh showing of
`obviousness based on the teachings of the art and the motivation to
`combine); Western Union Co. v. MoneyGram Payment Sys., Inc., 626 F.3d
`1361, 1373 (Fed. Cir. 2010) (“weak secondary considerations generally do
`not overcome a strong prima facie case of obviousness”).
`
`Accordingly, weighing all four Graham factors, we find that
`Petitioner has shown by a preponderance of the evidence that claims 7, 8,
`11, 12, 20–22, 25, and 26 would have been obvious over the combination of
`Thompson and JP-Shimano.
`C. OBVIOUSNESS OF CLAIMS 9, 10, 23, AND 24
`1.
`Differences Between the Prior Art and the Claimed
`Invention
`Claim 9 depends from claim 7 recites, in relevant part, that “wherein
`each of the first group of teeth fills at least 75 percent of an axial distance
`defined by the outer link spaces.” Ex. 1001, 7:58–60. Claim 23 depends
`from 20 and recites similar limitations to claim 9. Claim 10 depends from
`claim 7 and recites, in relevant part, that “wherein each of the second group
`of teeth fills at least 75 percent of an axial distance defined by the inner link
`spaces.” Ex. 1001, 8:1–3. Claim 24 depends from claim 20 and recites
`similar limitations as claim 10.
`Petitioner contends that Thompson, JP-Shimano, and Hattan disclose
`each limitation of claim 9. Specifically, Petitioner contends that Thompson
`discloses a bicycle chainring “for engagement with a roller drive chain
`having alternating outer and inner chain links defining outer and inner link
`
`19
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`IPR2017-00118
`Patent 9,182,027 B2
`spaces, respectively.” Pet 51–52. Petitioner asserts that Thompson discloses
`a chainring for engaging with a chain, and that one of ordinary skill in the art
`“would understand that the chain could be a conventional bicycle roller
`chain with alternating outer and inner chain links defining outer and inner
`link spaces.” Pet. 51–52 (citing Ex. 1001, 1:5–29, 2:61–67; Ex. 1004, 4:32–
`40; Ex. 1006, 15:69–86, 16:99–117; Ex. 1019, 2:38–67; Ex. 1023 ¶ 90).
`Petitioner also contends that JP-Shimano teaches “wherein each of the
`first group of teeth is sized and shaped to fit within one of the outer link
`spaces and each of the second group of teeth is sized and shaped to fit within
`one of the inner link spaces.” Pet. 53 (citing Ex. 1006 at 15:73–86, 16:99–
`117, Fig. 2; Ex. 1023 ¶ 92).
`Petitioner further relies on Hattan’s disclosure for the limitation
`“wherein each of the first group of teeth fills at least 75 percent of an axial
`distance.” Pet. 54–56; see Pet. 45–47. Petitioner asserts that Hattan
`discloses “a standard 3/32 of an inch chain”
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