Case No. IPR2017-00118
`United States Patent No. 9,182,027
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`
`
`FOX Factory, Inc.
`Petitioner
`
`v.
`
`SRAM, LLC
`Patent Owner
`_________________
`
`Case No. IPR2017-00118
`U.S. Patent No. 9,182,027
`_________________
`
`PATENT OWNER’S REPLY BRIEF ON REMAND
`
`
`
`
`
`
`
`
`
`
`
`
`
`United States Patent No. 9,182,027
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`
`
`FOX Factory, Inc.
`Petitioner
`
`v.
`
`SRAM, LLC
`Patent Owner
`_________________
`
`Case No. IPR2017-00118
`U.S. Patent No. 9,182,027
`_________________
`
`PATENT OWNER’S REPLY BRIEF ON REMAND
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2017-00118
`United States Patent No. 9,182,027
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`SRAM’S OBJECTIVE EVIDENCE OF NONOBVIOUSNESS
`CONFIRMS THE CHALLENGED CLAIMS’ PATENTABILITY. ............. 1
`
`A.
`
`Burden of Proof Regarding Direct Nexus ............................................. 1
`
`B.
`
`Objective Evidence of Long Felt but Unsolved Need, Failure of
`Others to Solve the Problem, and Passage of Time .............................. 3
`
`C.
`
`Objective Evidence of Licenses and Commercial Acquiescence ......... 8
`
`D. Objective Evidence of Copying ..........................................................10
`
`
`
`
`
`
`
`
`
`i
`
`
`
`Case No. IPR2017-00118
`United States Patent No. 9,182,027
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Ethicon Endo-Surgery, Inc. v. Covidien LP, 812 F.3d 1023 (Fed. Cir. 2016) .......... 2
`
`Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366 (Fed. Cir. 2019) .......................2, 8
`
`In re Cree, Inc., 818 F.3d 694 (Fed. Cir. 2016) ......................................................... 7
`
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent
`Litig., 676 F.3d 1063 (Fed. Cir. 2012) .........................................................5, 8
`
`In re GPAC, Inc., 57 F.3d 1573 (Fed. Cir. 1995) ...................................................... 9
`
`In re Huang, 100 F.3d 135 (Fed. Cir. 1996) .............................................................. 7
`
`In re Piasecki, 745 F.2d 1468, 1475 (Fed. Cir. 1984) ............................................... 8
`
`Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317 (Fed. Cir. 2004) ...........10
`
`Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346 (Fed. Cir. 2013) ............................. 4
`
`Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 132 (Fed. Cir. 2009) ............... 7
`
`Pro-Mold & Tool Co. v. Great Lakes Plastics, 75 F.3d 1568 (Fed. Cir. 1996) ........ 2
`
`Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 2020 WL 3455801
`(Fed. Cir. June 25, 2020) ................................................................................. 9
`
`WBIP, LLC v. Kohler Co., 829 F.3d 1317 (Fed. Cir. 2016) ..................................2, 5
`
`Wyers v. Master Lock Co., 616 F.3d 1231 (Fed. Cir. 2010) ....................................10
`
`
`
`ii
`
`
`
`Case No. IPR2017-00118
`United States Patent No. 9,182,027
`
`I.
`
`INTRODUCTION
`
`FOX’s response on remand mimics its position at trial: replete with
`
`unsupported attorney conjecture, but lacking actual admissible evidence needed to
`
`rebut SRAM’s direct nexus evidence linking the Challenged Claims of U.S. Patent
`
`No. 9,182,027 (“the ‘027 patent”) and the objective evidence of long-felt need,
`
`failure of others, passage of time, licensing, and copying. Rather than put forward
`
`supportable, admissible evidence to counter SRAM’s nexus evidence, FOX attempts
`
`to distract the Board, ignores and misrepresents the actual evidence at trial, and
`
`misstates the applicable law. The Board should reject FOX’s diversions and again
`
`uphold the Challenged Claims’ patentability, because substantial objective evidence
`
`clearly outweighs the “adequate” rationale to combine Thompson and JP-Shimano.
`
`II.
`
`SRAM’S OBJECTIVE EVIDENCE OF NONOBVIOUSNESS
`CONFIRMS THE CHALLENGED CLAIMS’ PATENTABILITY.
`
`A. Burden of Proof Regarding Direct Nexus
`
`
`
`FOX tries to obfuscate the nexus burden, inaccurately arguing that SRAM had
`
`to provide testing data or expert testimony on “how” and “why” the Challenged
`
`Claims met the industry’s long-felt need. See Paper 66 (FOX’s Br.) at 1, 3, 5.
`
`
`
`In truth, SRAM 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.” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1378 (Fed.
`
`
`
`
`1
`
`
`
`Case No. IPR2017-00118
`United States Patent No. 9,182,027
`
`Cir. 2019) (emphasis added). SRAM does not have to prove a negative or that the
`
`objective evidence is “tied exclusively to claim elements that are not disclosed in a
`
`particular prior art reference in order for that evidence to carry substantial weight.”
`
`WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1331 (Fed. Cir. 2016). SRAM proves
`
`nexus when objective evidence is attributable to “the combination of the two prior
`
`art features … that is the purportedly inventive aspect of the [challenged] patent”.
`
`Ethicon Endo-Surgery, Inc. v. Covidien LP, 812 F.3d 1023, 1035 (Fed. Cir. 2016).
`
`
`
`Contrary to FOX’s implications, there is no required way or manner of
`
`meeting this burden. “Questions of nexus are highly fact-dependent and, as such are
`
`not resolvable by appellate-created categorical rules and hierarchies as to the relative
`
`weight or significance of proffered evidence.” WBIP, 829 F.3d at 1331. As the fact
`
`finder, this Board’s role is “to resolve these factual disputes regarding whether a
`
`nexus exists between [the objective evidence and the] patented features, and to
`
`determine the probative value” of that evidence as part of the overall analysis. Pro-
`
`Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1574 (Fed. Cir. 1996).
`
`
`
`Here, SRAM submitted sworn testimony from three witnesses, the admissions
`
`of FOX’s own technical expert, and substantial documentary evidence supporting a
`
`direct nexus between this evidence and the claimed invention of the ‘027 patent.
`
`SRAM has satisfied its burden of proof, and, at trial and in its brief, FOX failed to
`
`submit any bona fide evidence contravening SRAM’s proven objective evidence.
`
`
`
`2
`
`
`
`Case No. IPR2017-00118
`United States Patent No. 9,182,027
`
`B. Objective Evidence of Long Felt but Unsolved Need, Failure of
`Others to Solve the Problem, and Passage of Time
`
`SRAM’s evidence directly ties the invention of the Challenged Claims to the
`
`industry’s 100-year long felt but unsolved need for improved chain retention, the
`
`failure of others in the industry to solve that problem, and the lengthy passage of
`
`time between the cited prior art references and SRAM’s novel invention. Just one
`
`of these objective indicia is sufficient to overcome FOX’s tenuous combination of
`
`Thompson and JP-Shimano and confirm nonobviousness.
`
`As part of its unsuccessful efforts to detract from SRAM’s substantial
`
`objective evidence, FOX challenges the Board’s prior factual finding of a long-felt
`
`but unsolved need, repeatedly referring to it as an “alleged” or “asserted” need.
`
`Paper 66 (FOX’s Br.) at 3, 7-10. FOX even contends that the differences between
`
`the prior art and the claimed invention as so “minimal” that “it cannot be said that
`
`the alleged long-felt need was unmet until the ‘027 patent.” Id. at 8. The undisputed
`
`evidence, however, found by the Board is that (1) there was a long felt but unsolved
`
`need in the bicycle industry for improved chain retention that did not increase the
`
`known problems of complexity, weight, and/or drivetrain friction; and (2) skilled
`
`artisans in the bicycle arts tried but failed to solve this problem for more than 100
`
`years. See Final Written Decision (“Decision”), Paper 59, at 37-39. FOX’s expert
`
`even “conceded that there was a long-felt need for ‘a multi-geared bicycle that could
`
`
`
`3
`
`
`
`Case No. IPR2017-00118
`United States Patent No. 9,182,027
`
`be reliably ridden over rough terrain without the aid of a chain retention device
`
`external to the chainring[,]’” id. at 38 (quoting Ex. 2129, 78:12-17), notwithstanding
`
`FOX’s attempts to discredit its own expert. See Paper 58 (Hearing Tr.), 59:8-60:9.
`
`As this Board knows, the length of intervening time between the publication
`
`dates of the prior art and the claimed invention “speaks volumes” to the question of
`
`non-obviousness when there is a showing of long-felt but unmet need and/or the
`
`failure of others. See Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346, 1359 (Fed.
`
`Cir. 2013). It was undisputed at trial that more than 10 years passed between the
`
`potential combination of Thompson and JP-Shimano (and 30 years after JP-
`
`Shimano) before the filing of the ‘027 patent. During those decades, even Shimano
`
`– the world’s largest bicycle component manufacturer with hundreds of bicycle
`
`engineers and owner of JP-Shimano – did not combine.1 See Ex. 2076, ¶ 68.
`
`All of these undisputed facts are critical because of the well-established law
`
`regarding these types of objective evidence. “Evidence that others tried but failed
`
`to develop a claimed invention may carry significant weight in an obviousness
`
`inquiry.” In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent
`
`
`1 The undisputed fact that Shimano argued against narrow-wide chainrings
`
`(let alone with the claimed offset) before ultimately adopting them, see Ex. 2076,
`
`¶¶ 69-70, further confirms the nonobviousness of the Challenged Claims.
`
`
`
`4
`
`
`
`Case No. IPR2017-00118
`United States Patent No. 9,182,027
`
`Litig., 676 F.3d 1063, 1081 (Fed. Cir. 2012). Evidence regarding the closely related
`
`factor of long-felt but unresolved need “tends to show non-obviousness because it is
`
`reasonable to infer that the need would have not persisted had the solution been
`
`obvious.” WBIP, 829 F.3d at 1332.
`
`Given these undisputed facts and this controlling law, the only remaining
`
`inquiry is the degree to which SRAM’s evidence is attributable to the combination
`
`of features in the Challenged Claims. FOX openly misstates that SRAM has
`
`submitted “no testimony—expert or otherwise—to prove that the X-Sync’s inboard-
`
`offset, narrow-wide teeth combination met the asserted long-felt need.” Paper 66
`
`(FOX’s Br.) at 3. Incredibly, FOX misleadingly takes out-of-context quotes from
`
`SRAM’s evidence and asserts that, in paragraphs 83 and 84 of his Declaration,
`
`SRAM’s technical expert (Dr. Sturges) only “speaks about the X-Sync generally”
`
`without discussing the claimed features’ importance. Id. at 6 (emphasis in original).
`
`In truth, paragraph 83 of the Sturges Declaration specifically links the long-
`
`felt but unmet need to the features of the Challenged Claims:
`
`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.
`
`
`
`5
`
`
`
`Case No. IPR2017-00118
`United States Patent No. 9,182,027
`
`Ex. 2074, ¶ 83 (emphasis added). FOX omits the language from Paragraph 84 of
`
`the Sturges Declaration further tying the novel features to the objective evidence:
`
`
`
`84. No one else thought to combine narrow and wide teeth
`
`with asymmetric offsets in a chainring before the ‘027 patent. In view
`
`of the long-felt need and failure of others that I just discussed, the
`
`long time between the publication of the cited references in this matter
`
`and the filing of the application for the ‘027 patent indicates that the
`
`claims were nonobvious. Thompson and JP-Shimano were published
`
`in 2001 and 1981, respectively. This is approximately 10 years before
`
`SRAM filed the application that matured into the ‘027 patent in 2011.
`
`That is a long amount of time to give POSITAs a chance to come up
`
`with the supposedly obvious combination. This is because FOX’s
`
`combination of Thompson and JP-Shimano was not obvious to a
`
`POSITA.
`
`Id., ¶ 84 (emphasis added and in original).
`
`
`
`Dr. Sturges thereafter definitively attributes this objective evidence of long-
`
`felt but unmet need, failure of others, and passage of time to the claimed invention:
`
`
`
`[T]he claimed invention addressed the long-felt need – in this
`
`case, for nearly 100 years – 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. Thus, the inventors of the ‘027 patent succeeded where others
`
`failed, as shown above.
`
`Ex. 2074, ¶ 85.
`
`
`
`6
`
`
`
`Case No. IPR2017-00118
`United States Patent No. 9,182,027
`
`
`
`FOX dismisses Dr. Sturges’ testimony for not including testing data regarding
`
`the claimed features and argues his testimony as “merely conclusory allegations and
`
`not reasoned, supported opinions.” Paper 66 (FOX’s Br.) at 8. FOX ignores that
`
`this Board has already made the factual finding that the very same testimony from
`
`Dr. Sturges was “reasoned and persuasive” and gave it “substantial weight.”
`
`Decision at 38. In contrast, the cases cited by FOX involved truly conclusory
`
`opinions, without sufficient factual support. See In re Cree, Inc., 818 F.3d 694, 703
`
`(Fed. Cir. 2016) (declaration testimony regarding commercial success was not
`
`supported by sales information specifically tied to the claimed invention); Perfect
`
`Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1332-33 (Fed. Cir. 2009)
`
`(declaration testimony regarding long-felt need “provided no evidence to explain
`
`how long this need was felt, or when the problem first arose,” or that the patent at
`
`issue “met any such ‘need’”); In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996)
`
`(inventor affidavit regarding commercial success was supported by unit sales only,
`
`which were insufficient to show market penetration or whether consumers were
`
`buying due to the claimed feature). The Court’s factual findings regarding Dr.
`
`Sturges’ “reasoned and persuasive” testimony explain how long the need was felt,
`
`when the problem first arose, and how the ‘027 patent met this need with the claimed
`
`features of inboard-offset, narrow-wide teeth and eliminated the problems added by
`
`prior art chain retention systems. Decision at 38.
`
`
`
`7
`
`
`
`Case No. IPR2017-00118
`United States Patent No. 9,182,027
`
`
`
`The evidence here more closely matches cases stressing the importance of
`
`long-felt but unmet need and failure of others. For example, in Cyclobenzaprine,
`
`the combination of evidence on long-felt need and the failure of others “strongly
`
`support[ed] a conclusion of nonobviousness” over the cited prior art combinations.
`
`676 F.3d at 1080. Similarly, in In re Piasecki, evidence showing a failure of other
`
`to provide a feasible solution to a long-standing problem solved by the patent-in-suit
`
`confirmed nonobviousness. 745 F.2d 1468, 1475 (Fed. Cir. 1984). SRAM likewise
`
`proved a nexus between the Challenged Claims and the objective evidence of long-
`
`felt need, failure of others, and passage of time, which evidence alone readily
`
`overcomes the tenuous combination of Thompson and JP-Shimano, ignored for
`
`decades even by the world’s largest bicycle component manufacturer.
`
`C. Objective Evidence of Licenses and Commercial Acquiescence
`
`FOX takes the extreme and unsupported position that, simply because
`
`SRAM’s licenses to the ‘027 patent include other patents to the X-Sync technology,
`
`SRAM failed to show that its licensing program is attributable to the Challenged
`
`Claims. Paper 66 (FOX’s Br.) at 11. In fact, SRAM 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.” Fox, 944 F.3d at 1378.
`
`This Board previously found, “while we agree with [FOX] that the fact that
`
`the licenses cover a number of patents affects the weight they should receive, we do
`
`
`
`8
`
`
`
`Case No. IPR2017-00118
`United States Patent No. 9,182,027
`
`not agree that the fact that the licenses cover more than just the ’027 patent means
`
`that they are entitled to no weight.” Decision at 41. Because two of SRAM’s
`
`licenses called out the ‘027 patent and another five clearly included the ‘027 patent
`
`within its scope, the Board determined that seven of SRAM’s eight licenses were
`
`entitled to weight in the analysis. Id. at 41-42. Nothing has changed since the trial.
`
`Even the two cases cited by FOX, which had less compelling evidence than
`
`submitted here, accorded at least some weight to the licenses. See Shoes by Firebug
`
`LLC v. Stride Rite Children’s Grp., LLC, No. 2019-1622, 2020 WL 3455801, at *8
`
`(Fed. Cir. June 25, 2020) (characterizing licensing evidence as “weak” but declining
`
`to rule on nexus issue where two license agreements included eight different patents,
`
`two patent applications, and a trademark)2; In re GPAC, Inc., 57 F.3d 1573, 1580
`
`(Fed. Cir. 1995) (“little weight” given to licensing evidence because patent owner
`
`failed to establish which patent claims were licensed). FOX offered no factual or
`
`legal reason why this Board should reverse its prior findings tying the ‘027 patent
`
`invention to the licensing evidence and accord this evidence at least some weight.
`
`
`2 The Firebug licenses and patents (publicly available on the Federal Circuit’s
`
`and USPTO’s website, such that the Board can take judicial notice) include six
`
`patents and one patent application unrelated to the two patents-in-suit, whereas
`
`SRAM’s licenses are for the ‘027 patent and related patents. See Decision at 41-42.
`
`
`
`9
`
`
`
`Case No. IPR2017-00118
`United States Patent No. 9,182,027
`
`D. Objective Evidence of Copying
`
`At trial, SRAM showed a direct link of FOX’s (and other companies’) copying
`
`the Challenged Claims, as well as the X-Sync chainring product as a whole. SRAM
`
`showed “evidence of efforts to replicate a specific product,” Wyers v. Master Lock
`
`Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010), and “demonstrated” through “access to,
`
`and substantial similarity to, the patented product (as opposed to the patent)[.]” Iron
`
`Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004).
`
`As defined by the Federal Circuit, copying evidence “requires the replication
`
`of a specific product” and therefore must necessarily include more than just the
`
`patented features themselves. Id. FOX erroneously asserts that this copying of
`
`other features obviates the linkage between the copying evidence and the Challenged
`
`Claims. Paper 66 (FOX’s Br.) at 14-15. The opposite is true – copying more than
`
`the patent claims is required to have any significance in the obviousness analysis.
`
`Here, SRAM has provided the necessary linkage between the copying
`
`evidence and the Challenged Claims, through the testimony of Ron Ritzler and Dr.
`
`Sturges. As this Board found, FOX offered “no evidence to rebut this testimony,”
`
`Decision at 45-46, such as from an internal FOX engineer denying copying. FOX
`
`even specifically instructed its paid expert not to analyze this copying evidence. See
`
`Ex. 2129, 73:14-75:15; id., 74:22-75:1; id., 81:23-82:4.
`
`
`
`10
`
`
`
`Date: July 9, 2020
`
`
`
`
`
`
`
`
`
`Case No. IPR2017-00118
`United States Patent No. 9,182,027
`
`Respectfully submitted,
`
`LEWIS RICE LLC
`
`By:
`
`
`
`
`Michael J. Hickey, Reg. No. 51,801
`Richard B. Walsh, Jr., pro hac vice
`600 Washington Ave., Suite 2500
`St. Louis, MO 63101
`Telephone: (314) 444-7600
`Facsimile: (314) 241-6056
`mhickey@lewisrice.com
`rwalsh@lewisrice.com
`
`Attorneys for Patent Owner SRAM, LLC
`
`
`
`11
`
`
`
`Case No. IPR2017-00118
`United States Patent No. 9,182,027
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned certifies that the foregoing Patent Owner’s Opening Brief on
`
`Remand was served on July 9, 2020, by email at the following address of record for
`
`Petitioner’s counsel:
`
`Joshua L. Goldberg
`Daniel F. Klodowski
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Ave., NW
`Washington, DC 20001
`joshua.goldberg@finnegan.com
`daniel.klodowski@finnegan.com
`
`Robert F. McCauley III
`Arpita Bhattacharyya
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`Stanford Research Park
`3300 Hillview Avenue, 2nd Floor
`Palo Alto, CA 94304-1203
`robert.mccauley@finnegan.com
`arpita.bhattacharyya@finnegan.com
`
`
`
`
`
`
`
`2385386
`
`By:
`
`
`Michael J. Hickey, Reg. No. 51,801
`
`Attorneys for Patent Owner SRAM, LLC
`
`
`
`12
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
