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`Case No. IPR2017-01440
`United States Patent No. 9,291,250
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
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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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`Case No. IPR2017-01440
`U.S. Patent No. 9,291,250
`_________________
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`PATENT OWNER’S REQUEST TO LIFT STAY
`ON EX PARTE REEXAMINATION CONTROL NO. 90/013,831
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`
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`Case No. IPR2017-01440
`United States Patent No. 9,291,250
`Patent Owner SRAM, LLC respectfully requests that the Board lift the stay
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`imposed on Ex Parte Reexamination Control No. 90/013,831 (“the ‘831
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`reexamination”).
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`The ‘831 reexamination was previously identified as a co-pending ex parte
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`reexamination of U.S. Patent No. 9,291,250 C1 (“the ‘250 patent”), the same patent
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`involved in this inter partes review proceeding. On June 4, 2018, after instituting
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`trial in this proceeding, the Board imposed a stay on the ‘831 reexamination until
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`completion of this proceeding. See Paper 32.
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`On December 6, 2018, the Board issued a Final Written Decision determining
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`that claims 1-26 of the ‘250 patent had not been proven unpatentable in view of the
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`proposed combinations of JP-Shimano in view of Hattan and, alternatively, Hattan
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`in view of JP-Shimano, and further taking into account the JIS reference. See
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`Paper 62, at 8, 87.
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`On May 18, 2020, the United States Court of Appeals for the Federal Circuit
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`affirmed the Board’s Final Written Decision “[b]ecause the Board’s fact findings are
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`supported by substantial evidence and its conclusion of nonobviousness is correct[.]”
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`FOX Factory, Inc. v. SRAM, LLC, 813 Fed. Appx. 539, 540 (Fed. Cir. 2020).
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`In view of the Federal Circuit’s affirmance of the Board’s Final Written
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`Decision, this proceeding has finally concluded and therefore the Board should lift
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`1
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`Case No. IPR2017-01440
`United States Patent No. 9,291,250
`the stay previously imposed on the ‘831 reexamination. SRAM respectfully requests
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`the Board to lift this reexamination stay.
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`Date: September 14, 2022
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`Respectfully submitted,
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`LEWIS RICE LLC
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`By:
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`
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`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
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`Attorneys for Patent Owner SRAM, LLC
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`Case No. IPR2017-01440
`United States Patent No. 9,291,250
`CERTIFICATE OF SERVICE
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`
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`The undersigned certifies that the foregoing Patent Owner’s Request to Lift
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`Stay on Ex Parte Reexamination Control No. 90/013,831 was served on
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`September 14, 2022, by email at the following address of record for Petitioner’s
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`counsel:
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`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
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`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
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`By:
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`4895-7097-3491
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`Michael J. Hickey, Reg. No. 51,801
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`Attorneys for Patent Owner SRAM, LLC
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`3
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