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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
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`FOX Factory, Inc.,
`Petitioner,
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`v.
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`SRAM, LLC,
`Patent Owner.
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`__________________
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`Case IPR2017-00118
`U.S. Patent No. 9,182,027
`__________________
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`PETITIONER’S RESPONSE TO
`PATENT OWNER’S OPENING BRIEF ON REMAND
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`Case IPR2017-00118
`U.S. Patent No. 9,182,027
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`TABLE OF CONTENTS
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`Introduction ...................................................................................................... 1
`I.
`Background ...................................................................................................... 2
`II.
`III. Argument ......................................................................................................... 3
`A.
`SRAM Has Not Proven that the Claimed Combination, as
`Opposed to Other Unclaimed X-Sync Features, Met the
`Asserted Long-Felt Need ...................................................................... 3
`SRAM’s Additional Arguments Do Not Cure Its Failure to
`Prove Nexus for Long-Felt Need .......................................................... 9
`SRAM Cannot Prove a Nexus for Licenses (or Commercial
`Acquiescence) ..................................................................................... 11
`SRAM Has Failed to Prove a Nexus for Alleged Copying................. 13
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`D.
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`B.
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`C.
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`i
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`TABLE OF AUTHORITIES
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` Page(s)
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`Federal Cases
`In re Cree, Inc.,
`818 F.3d 694 (Fed. Cir. 2016) .............................................................................. 8
`Echolochem, Inc. v. S. Cal. Edison Co.,
`227 F.3d 1361 (Fed. Cir. 2000) .......................................................................... 15
`Ethicon Endo-Surgery, Inc. v. Covidien LP,
`812 F.3d 1023 (Fed. Cir. 2016) .......................................................................... 10
`EWP Corp. v. Reliance Universal Inc.,
`755 F.2d 898 (Fed. Cir. 1985) ............................................................................ 13
`FOX Factory, Inc. v. SRAM, LLC,
`944 F.3d 1366 (Fed. Cir. 2019) ...................................................................passim
`George M. Martin Co. v. Alliance Mach. Sys. Int’l LLC,
`618 F.3d 1294 (Fed. Cir. 2010) ............................................................................ 8
`In re GPAC, Inc.,
`57 F.3d 1573 (Fed. Cir. 1995) ............................................................................ 13
`In re Huang,
`100 F.3d 135 (Fed. Cir. 1996) .............................................................................. 8
`Iron Grip Barbell Co. v. USA Sports, Inc.,
`392 F.3d 1317 (Fed. Cir. 2004) .......................................................................... 11
`Leo Pharm. Prods. v. Rea,
`726 F.3d 1346 (Fed. Cir. 2013) .................................................................... 10-11
`Perfect Web Techs., Inc. v. InfoUSA, Inc.,
`587 F.3d 1324 (Fed. Cir. 2009) ........................................................................ 3, 8
`Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC,
`No. 2019-1622 (Fed. Cir. June 25, 2020) ........................................................... 13
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`ii
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`Standard Havens Prods., Inc. v. Gencor Indus., Inc.,
`897 F.2d 511 (Fed. Cir. 1990) .............................................................................. 4
`Tokai Corp. v. Easton Enters., Inc.,
`632 F.3d 1358 (Fed. Cir. 2011) .......................................................................... 10
`Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC,
`683 F.3d 1356 (Fed. Cir. 2012) .......................................................................... 14
`PTAB Cases
`Celltrion, Inc. v. Genentech, Inc.,
`IPR2017-01121, Paper 90 (PTAB Oct. 3, 2018) .................................................. 4
`Federal Rules
`Fed. R. Evid. 201 ....................................................................................................... 4
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`iii
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`I.
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`Introduction
`The Federal Circuit’s remand is clear: SRAM’s asserted secondary
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`considerations evidence for its X-Sync chainring is not relevant to the Board’s
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`obviousness determination unless SRAM can meet its burden to prove the evidence
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`is the “‘direct result of the unique characteristics of the claimed invention,’” the
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`combination of inboard-offset, narrow-wide teeth. FOX Factory, Inc. v. SRAM, LLC,
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`944 F.3d 1366, 1373-74, 1378 (Fed. Cir. 2019) (emphasis added). SRAM has not
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`and cannot meet this burden. SRAM has presented no evidence focusing on the
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`effect, impact, or desirability of the inboard-offset, narrow-wide teeth feature of the
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`X-Sync chainring. Nor has SRAM performed any testing to demonstrate the relative
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`utility, significance, or specific contribution of that feature to the X-Sync’s
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`performance, as opposed to the many other chain-retention features of the X-Sync.
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`Instead, SRAM’s evidence addresses the chain-retention abilities or
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`“technology” of the X-Sync as a whole. But the Federal Circuit rejected that
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`approach because the X-Sync includes many chain-retention features not claimed in
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`the ’027 patent. FOX, 944 F.3d at 1374-76. Accordingly, the Federal Circuit
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`specifically required SRAM to prove “that the evidence of secondary considerations
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`is attributable to the claimed combination of wide and narrow teeth with inboard . . .
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`offset teeth, as opposed to, for example, prior art features in isolation or unclaimed
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`features.” Id. at 1378. SRAM has failed to meet that burden.
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`1
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`As a result, the Board should find that the challenged claims are unpatentable
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`based on the Board’s previous finding that a skilled artisan would have been
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`motivated to combine the cited references to arrive at the claimed combination.
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`II. Background
`SRAM previously asserted secondary considerations for the ’027 patent based
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`on alleged commercial success, praise, skepticism, long-felt but unresolved need,
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`licensing, and copying. The Board, at SRAM’s urging, presumed a nexus between
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`the claimed invention and the secondary considerations evidence for the X-Sync as
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`a whole, and found that SRAM had made “very strong showings” on (i) praise, (ii)
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`skepticism, and (iii) long-felt need; a “strong showing” on (iv) commercial success
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`(for certain claims); and “weak showings” on (v) licensing and (vi) copying. Paper
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`59 (Final Written Decision) at 47. The Federal Circuit reversed the Board, holding
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`that a nexus cannot be presumed because the X-Sync chainring is not “essentially
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`the same invention” as claimed in the ’027 patent. FOX, 944 F.3d at 1374, 1377-78.
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`Now that SRAM must prove a nexus between its asserted evidence and the inboard-
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`offset, narrow-wide teeth combination, SRAM has dropped everything except (iii)
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`long-felt but unresolved need, (v) licensing, and (vi) copying.
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`2
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`III. Argument
`SRAM Has Not Proven that the Claimed Combination, as
`A.
`Opposed to Other Unclaimed X-Sync Features, Met the
`Asserted Long-Felt Need
`SRAM asserts there was a long-felt need to improve chain retention without
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`increasing complexity, weight, and/or drivetrain friction. This alleged need is
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`relevant, however, only if SRAM can prove it was satisfied by the inboard-offset,
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`narrow-wide teeth claimed in the ’027 patent as opposed to some other chain-
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`retention feature(s) of the X-Sync. See FOX, 944 F.3d at 1378 (“SRAM will bear
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`the burden of proving that the evidence of secondary considerations is attributable
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`to the claimed combination of wide and narrow teeth with inboard . . . offset teeth,
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`as opposed to, for example, prior art features in isolation or unclaimed features.”)
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`(emphasis added); see also Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324,
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`1332-33 (Fed. Cir. 2009) (finding patentee failed to prove the claimed invention
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`satisfied the alleged long-felt need).
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`SRAM, however, has not even attempted to make that showing. It submitted
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`no testing and no testimony—expert or otherwise—to prove that the X-Sync’s
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`inboard-offset, narrow-wide teeth combination met the asserted long-felt need.
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`SRAM cannot simply say the X-Sync solved the asserted problem because the X-
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`Sync includes many unclaimed chain-retention features. For example, the ’027
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`patent does not claim what SRAM calls the “critical” and “enabling technology” for
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`3
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`the X-Sync,1 the >80% “gap-filling” feature (at a point about halfway between the
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`root circle and top land of the teeth) that is instead claimed in SRAM’s U.S. Patent
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`No. 9,291,250. See FOX, 944 F.3d at 1375 (“[B]ecause the independent claims [of
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`the ’027 patent] do not include the >80% gap filling feature, we cannot say that the
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`X-Sync chainrings are the invention claimed by the independent claims”). FOX also
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`presented undisputed evidence that the X-Sync includes additional chain-retention
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`features—protruding tooth tips, hooks, mud-clearing recesses, chamfers, and tall,
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`square teeth—that are disclosed in the specification and touted in SRAM’s X-Sync
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`1 FOX, IPR2017-01440, Paper 6 at 22-23 (“critical gap-filling limitation”);
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`IPR2017-01440, Paper 31 at 6 (characterizing “gap filling” feature as “the enabling
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`technology of the X-Sync chainring”). It is appropriate for the Board to take official
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`notice of SRAM’s filings in the IPR proceedings for the ’250 patent, as did the
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`Federal Circuit in FOX, 944 F.3d at 1375-76. See, e.g., Celltrion, Inc. v. Genentech,
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`Inc., IPR2017-01121, Paper 90 at 50 (PTAB Oct. 3, 2018) (“Exhibit 1060 is Patent
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`Owner’s response submitted in another inter partes review . . . [w]e, thus, may take
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`judicial notice of it.”); Fed. R. Evid. 201(b); Standard Havens Prods., Inc. v. Gencor
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`Indus., Inc., 897 F.2d 511, 514 n.3 (Fed. Cir. 1990).
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`4
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`advertisements but not claimed in the ’027 patent.2 See id. at 1375-76; Ex. 1050 ¶38,
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`Appx. A; Exs. 1038, 1054. SRAM tries to rely on expert testimony, but its expert
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`fails to distinguish the inboard-offset, narrow-wide teeth combination claimed in
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`the ’027 patent from the many other chain-retention features that are included in the
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`X-Sync. For example, SRAM cites the first sentence from paragraph 80 of its
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`expert’s declaration, a bare, unsupported assertion that “the claimed invention solves
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`a long-felt need in the industry and succeeds where others have failed.” Paper 65
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`(SRAM Opening Br.) at 11 (citing Ex. 2074 ¶80). Although one might assume that
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`the expert will next elaborate on how or why the claimed combination of offset,
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`narrow-wide teeth supposedly met that long-felt need, he never does. Instead, as the
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`other paragraphs of the declaration SRAM cites make clear, the expert discusses the
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`performance of the X-Sync as a whole, rather than the claimed combination.
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`Specifically, paragraphs 83 and 84 of the declaration (cited by SRAM) state:
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`2 SRAM erroneously argues that FOX’s reliance on SRAM’s descriptions of
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`X-Sync chain-retention features in the ’027 patent specification and SRAM’s
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`advertising materials are mere attorney argument or conjecture. But SRAM’s
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`statements are admissible, non-hearsay, party admissions under Federal Rule of
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`Evidence 801(d)(2). They are also highly probative and undisputed, and were relied
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`on by the Federal Circuit. FOX, 944 F.3d at 1375-76.
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`5
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`83. The X-Sync chainring, on the other hand, moves the location of
`the chain retention device to the chainring, away from the bicycle
`frame. . . . The X-Sync chainring allows a bicycle to be reliably driven
`over rough terrain, and it allows a rider to do so without any extraneous
`chain retention device. . . . Others had attempted to reduce the
`complexity, weight, and/or drivetrain friction added by chain retention
`systems, but they were unable to do so. 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.
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`. . . The long-felt need in the art that was first met by SRAM’s
`84.
`X-Sync chainrings after such a long period of wanting. Accordingly,
`the challenged claims cannot be obvious.
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`Ex. 2074 ¶¶83-84 (emphases added). In these paragraphs the expert speaks about the
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`X-Sync generally without distinguishing the performance or effect of the claimed
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`inboard-offset, narrow-wide teeth from the other chain-retention features in the X-
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`Sync. This is resoundingly clear when one notes that SRAM pasted these same three
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`paragraphs essentially verbatim into its expert’s opinion for the IPR directed to
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`SRAM’s ’250 patent. Compare Ex. 2074 ¶¶80, 83-84 with FOX Factory, Inc. v.
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`SRAM, LLC, IPR2017-01440, Ex. 2141 ¶¶167, 170-71. Indeed, the same is true for
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`all seven of the expert’s paragraphs on long-felt need: they are substantially identical
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`for both the ’027 and ’250 patents. Compare Ex. 2074 ¶¶80-86 with FOX, IPR2017-
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`01440, Ex. 2141 ¶¶167-73.
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`6
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`SRAM’s expert concludes his opinion on long-felt need in paragraph 85, from
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`which SRAM quotes in its remand brief, but that paragraph also fails to explain
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`whether or how the claimed combination of the ’027 patent—as opposed to the X-
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`Sync as a whole—met the alleged long-felt need. Ex. 2074, ¶85. Significantly, the
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`only structure mentioned is a generic reference to unspecified “tooth profiles and
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`gap-filling dimensions” in the X-Sync, rather than the inboard-offset, narrow-wide
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`teeth feature claimed in the ’027 patent. This is undeniable given that the same
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`concluding paragraph appears verbatim in SRAM’s expert’s opinion on long-felt
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`need for the ’250 patent. Compare id. with FOX, IPR2017-01440, Ex. 2141 ¶172.
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`SRAM contends that paragraph 85 satisfies its burden because it says that “the
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`claimed invention addressed the long-felt need,” but again, the discussion before and
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`after that sentence says nothing about the effect of the ’027 patent’s claimed inboard-
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`offset, narrow-wide teeth combination (or any dependent claims) to distinguish it
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`from the other chain-retention features of the X-Sync. SRAM’s expert’s generic
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`statements fail to meet the Federal Circuit’s requirement that SRAM prove its
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`evidence of secondary considerations is the “direct result” of the claimed
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`combination of offset, narrow-wide teeth, “as opposed to, for example, prior art
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`features in isolation or unclaimed features.” FOX, 944 F.3d at 1378 (emphasis
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`added).
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`7
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`These assertions by SRAM’s expert should also be disregarded because they
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`are merely conclusory allegations and not reasoned, supported opinions. See In re
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`Cree, Inc., 818 F.3d 694, 703 (Fed. Cir. 2016) (rejecting expert’s conclusory opinion
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`on nexus for commercial success because the opinion “is nothing more than an
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`allegation or a conclusory statement.”); Perfect Web, 587 F.3d at 1332-33 (holding
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`conclusory expert testimony insufficient to establish the claimed invention had
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`satisfied the alleged long-felt need). Similarly, in In re Huang, 100 F.3d 135, 139-
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`40 (Fed. Cir. 1996), the inventor’s opinion that the patented product was purchased
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`because of the claimed invention was ruled insufficient to demonstrate the nexus
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`between the claimed invention and alleged commercial success. In the absence of
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`evidence to support that bare opinion, such as “an affidavit from the purchaser
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`explaining that the product was purchased due to the claimed features,” the inventor
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`“simply has not carried his burden to prove that a nexus existed between any
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`commercial success and the novel features claimed in the application.” Id. at 140.
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`Finally, as noted in George M. Martin Co. v. Alliance Mach. Sys. Int’l LLC,
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`618 F.3d 1294, 1304 (Fed. Cir. 2010), “[w]here the differences between the prior art
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`and the claimed invention are as minimal as they are here . . . it cannot be said that
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`any long-felt need was unsolved.” Because the differences between JP-Shimano and
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`the claimed invention are also minimal (and are provided by Thompson or Hattan),
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`it cannot be said that the alleged long-felt need was unmet until the ’027 patent. Id.
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`8
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`B.
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`SRAM’s Additional Arguments Do Not Cure Its Failure to
`Prove Nexus for Long-Felt Need
`SRAM raises several non-issues to disguise its failure to prove nexus for long-
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`felt need. For example, SRAM points out that, after the Board gave SRAM a
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`presumption of nexus, the Board found the X-Sync as a whole satisfied the asserted
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`long-felt need. Paper 65 at 8. But the Federal Circuit specifically rejected the idea
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`that the ’027 patent can be treated as synonymous with the X-Sync. FOX, 944 F.3d
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`at 1375 (“[W]e cannot say that the X-Sync chainrings are the invention claimed by
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`the independent claims [of the ’027 patent].”). That is precisely why SRAM must
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`now prove that the claimed inboard-offset, narrow-wide teeth of the ’027 patent—
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`and not some other feature(s) of the X-Sync—met the asserted long-felt need. For
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`the same reason, SRAM cannot conflate the issues by pointing to the articles it cited
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`as praise for the X-Sync. Paper 65 at 8. Moreover, SRAM dropped its argument that
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`the praise in these articles proves nexus for the ’027 patent. So it cannot be said these
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`articles show the ’027 patent solved any problems described in them, either.
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`SRAM attempts to make much of the fact that Shimano—the owner of the
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`prior art JP-Shimano utility application for a bicycle chainring having narrow-wide
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`teeth (Ex. 1006)—did not immediately commercialize a narrow-wide chainring. But
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`SRAM’s arguments actually undermine its position on long-felt need. Although
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`SRAM points out that Shimano’s chainring had narrow-wide teeth (which were
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`9
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`known in the prior art), Shimano’s chainring did not have the claimed offset. See Ex.
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`2115.3 This supports FOX’s position that offset teeth, and the combination of offset
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`with narrow-wide teeth, had nothing to do with resolving SRAM’s alleged long-felt
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`need, and SRAM has failed to prove nexus. See Tokai Corp. v. Easton Enters., Inc.,
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`632 F.3d 1358, 1369 (Fed. Cir. 2011) (“If commercial success is due to an element
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`in the prior art, no nexus exists.”); Ethicon Endo-Surgery, Inc. v. Covidien LP, 812
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`F.3d 1023, 1035 (Fed. Cir. 2016) (marketing brochure touting only a prior art feature
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`did not demonstrate a long-felt need for the claimed combination).
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`SRAM’s citation to Leo Pharm. Prods. v. Rea, 726 F.3d 1346 (Fed. Cir.
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`2013), is also unavailing. In Leo, the commercial product was the claimed invention
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`and nexus was presumed. Id. at 1358 (“[T]he commercial success of Leo
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`3 Exhibit 2115, which contains a description and drawings of Shimano’s
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`Dynamic Chain Engagement+ at pages 2-3, shows narrow-wide teeth but no
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`asymmetric offset. Furthermore, no SRAM witness testified it had any offset.
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`Indeed, SRAM’s technical expert said nothing about it. SRAM’s employee, Ron
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`Ritzler, called out the chainring’s narrow-wide teeth, but tried to gloss over its lack
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`of the offset with vague wording in his declaration. Ex. 2076 ¶ 70 (stating Shimano
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`“changed the Dynamic Chain Engagement chainrings to include the features of the
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`invention of the ‘Claims, including narrow and wide teeth. Ex. 2115.”).
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`10
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`Pharmaceutical's Taclonex® ointment is a testament to the improved properties of
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`the ’013 patent's claimed invention”). Here, however, the Federal Circuit has
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`specifically rejected the idea that that “the X-Sync chainrings are the invention
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`claimed by the independent claims” of the ’027 patent and stated that a nexus may
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`not be presumed. FOX, 944 F.3d at 1375. Moreover, absent a showing of nexus for
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`long-felt need or the failure of others, the mere passage of time between the prior art
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`and the filing of the ’027 patent is not evidence of non-obviousness. Iron Grip
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`Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004).
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`C.
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`SRAM Cannot Prove a Nexus for Licenses (or Commercial
`Acquiescence)
`The Board previously gave “some, but not significant weight” to SRAM’s
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`licenses when the Board presumed a nexus. Paper 59 (Final Written Decision) at 42.
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`On remand, however, the licenses should be given no weight because SRAM has no
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`evidence that its licenses were the “direct result” of the claimed combination of
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`inboard-offset, narrow-wide teeth. FOX, 944 F.3d at 1373-74. Specifically, SRAM
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`has no evidence that any of its licensees took a license because of the offset, narrow-
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`wide teeth claimed in the ’027 patent. To the contrary, SRAM relied on the same
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`eight licenses to argue non-obviousness for its ’250 patent, which does not claim any
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`offset, and SRAM’s expert’s opinion on licensing in the ’250 IPR is essentially a cut
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`and paste of his licensing opinion in this proceeding. See FOX, IPR2017-01440,
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`11
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`Paper 24 at 56-57; compare Ex. 2074 ¶¶72-74 with FOX, IPR2017-01440, Ex. 2141
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`¶¶159-161.
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`A review of the licenses proves that SRAM has failed to meet its burden. Even
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`SRAM says its licenses are for the “X-Sync technology,” and not specifically for the
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`offset, narrow-wide teeth claimed in the ’027 patent. Ex. 2076 ¶30; Ex. 1060. Five
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`out of the eight licenses are to SRAM’s German utility model and corresponding
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`patents/applications. Exs. 2092, 2094, 2096, 2098, 2100. But those licenses do not
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`even mention the ’027 patent, and none of the German utility model’s claims recites
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`any offset. See Ex. 1067 (machine translation); see also FOX, IPR2017-01440, Ex.
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`2116 (SRAM’s certified translation). Although SRAM argues that “the ’027 patent
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`is within the scope of each of these five licenses” (Paper 65 at 13), every other
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`SRAM patent related to the German utility model is also within the scope of the
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`licenses. At SRAM’s last reported count, that included at least nine U.S. patents and
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`applications other than the ’027 patent. Paper 13 at 63-64. And although the licenses
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`in Exhibits 2102 and 2104 identify the ’027 patent, they also specifically identify (1)
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`U.S. Patent No. 9,062,758, which is a continuation-in-part of the ’027 patent and
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`includes additional chain-retention features such as “clearance chamfers” that are
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`not disclosed in the ’027 patent, and (2) all the continuations, foreign counterparts,
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`etc. that the ’758 and ’027 patents claim priority to. Id. SRAM needs to show,
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`however, that of all these different patents and applications, it was the claimed
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`12
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`combination of offset, narrow-wide teeth of the ’027 patent that drove the licensees
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`to enter into the licenses. See In re GPAC, Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995)
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`(giving “little weight” to licenses as evidence of non-obviousness due to patentee’s
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`failure to demonstrate a nexus); Shoes by Firebug LLC v. Stride Rite Children’s
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`Grp., LLC, No. 2019-1622, slip op. at 17 (Fed. Cir. June 25, 2020) (holding that
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`licenses encompassing “numerous intellectual property rights . . . on their face do
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`not establish a nexus between the commercial interest in Firebug’s product and the
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`claims.”). Accordingly, SRAM’s licenses should be given no weight.
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` SRAM’s license with Wolf Tooth (Ex. 2106) should also be given no weight,
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`not only because SRAM has no evidence that it was the “direct result” of the claimed
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`combination, but also because it was entered to resolve a lawsuit. EWP Corp. v.
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`Reliance Universal Inc., 755 F.2d 898, 907-908 (Fed. Cir. 1985) (explaining that it
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`can be “cheaper to take licenses than to defend infringement suits, or for other
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`reasons unrelated to the unobviousness of the licensed subject matter.”). At bottom,
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`SRAM has not proven nexus between the asserted licenses to the X-Sync technology
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`and the claimed invention of the ’027 patent, so the evidence of licensing should not
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`be given any weight in the obviousness analysis.
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`SRAM Has Failed to Prove a Nexus for Alleged Copying
`D.
`The Board previously found that SRAM’s copying allegations were entitled
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`to only “some weight,” in part because SRAM’s evidence was “not very detailed.”
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`13
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`Paper 59 (Final Written Decision) at 46. On remand, SRAM’s copying allegation
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`Case IPR2017-00118
`U.S. Patent No. 9,182,027
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`should be given no weight because SRAM has failed to show that the allegedly
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`“novel combination” of the ’027 patent “is what led” to the alleged copying. Wm.
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`Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364 (Fed. Cir. 2012).
`
`FOX has identified many distinctions between the Race Face chainring and
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`the X-Sync and denies SRAM’s copying allegations. See, e.g., Paper 32 (Petitioner’s
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`Reply) at 34-39. But even taking SRAM’s allegations at face value, SRAM has
`
`failed to prove a nexus for the same reasons as in Wrigley. In Wrigley, the Federal
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`Circuit held that patentee Wrigley failed to demonstrate a nexus for copying because
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`it “had not shown evidence suggesting that ‘the novel combination of WS-23 and
`
`menthol is what led Cadbury to copy Wrigley’s chewing gums.’” Wrigley, 683 F.3d
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`at 1364 (emphasis added). The Court found that, as a result, Wrigley failed to
`
`establish the requisite nexus between “Cadbury’s copying and the merits of the
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`claimed invention.” Id. Here, as in Wrigley, SRAM has no evidence that the offset,
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`narrow-wide teeth combination is what “led to” the asserted copying.
`
`In Wrigley, the patentee’s attempt to prove nexus was further undermined by
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`the defendant’s copying of other features beyond the novel features of the claims.
`
`Id. (“Besides the absence of evidence of a nexus between Cadbury’s copying and
`
`Wrigley’s claimed invention, there is evidence suggesting the contrary. In particular,
`
`the evidence shows that in the market for chewing gum the parties have a practice
`
`14
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`
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`of marketing very similar products.”). Here, SRAM has asserted that in addition to
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`Case IPR2017-00118
`U.S. Patent No. 9,182,027
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`the inboard-offset, narrow-wide teeth claimed in the ’027 patent, there are a number
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`of additional chain-retention features in the Race Face chainring that were copied
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`from the X-Sync. For example, SRAM has also accused the Race Face chainring
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`(and others) of infringing/copying the ’250 patent.4 SRAM has also accused the Race
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`Face chainring of copying the X-Sync’s U-shaped recesses, chamfers, square- and
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`cross-shaped cross sections, and “decorative cutouts” that “move dirt through the
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`system.” Ex. 2074 ¶77. As in Wrigley, these allegations of large-scale copying
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`between the X-Sync and Race Face chainrings further dispel any assertion that
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`the ’027 patent is what “led to” the alleged copying. Wrigley, 683 F.3d at 1364.
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`
`
`Because SRAM has not made the necessary showing that the inboard-offset,
`
`narrow-wide teeth is what “led to” the alleged copying, the alleged copying evidence
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`should not be given any weight in the obviousness analysis. Id. But even if the Board
`
`finds that SRAM demonstrated a nexus for alleged copying (which it should not), “a
`
`showing of copying is only equivocal evidence of non-obviousness in the absence
`
`of more compelling objective indicia of other secondary considerations,” which
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`SRAM has failed to make here. Echolochem, Inc. v. S. Cal. Edison Co., 227 F.3d
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`1361, 1380 (Fed. Cir. 2000).
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`
`
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`4 See, e.g., FOX, IPR2017-01440, Ex. 2141 ¶ 162.
`
`15
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`
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`Dated: June 25, 2020
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`Case IPR2017-00118
`U.S. Patent No. 9,182,027
`
`Respectfully submitted,
`
` By: /Joshua L. Goldberg/
`Joshua L. Goldberg, Reg. No. 59,369
`
`
`
`16
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`Case IPR2017-00118
`U.S. Patent No. 9,182,027
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the foregoing Petitioner’s Response to
`
`Patent Owner’s Opening Brief on Remand was served electronically via email
`
`on June 25, 2020, in its entirety on the following:
`
`Michael J. Hickey
`Kirk A. Damman
`Benjamin J. Siders
`Richard B. Walsh, Jr.
`Lewis Rice, LLC
`600 Washington Avenue, Suite 2500
`St. Louis, MO 63101
`mhickey@lewisrice.com
`kdamman@lewisrice.com
`bsiders@lewisrice.com
`rwalsh@lewisrice.com
`
`
`
`Patent Owner has consented to service by email.
`
`
`Date: June 25, 2020
`
`
`
`
`
`By: /William Esper/
`William Esper
`Legal Assistant
`
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`
`
`
`
`
`
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