`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FOX FACTORY, INC.,
`Petitioner,
`
`v.
`
`SRAM, LLC.,
`Patent Owner.
`____________
`
`Case IPR2017-01440
`Patent 9,291,290 C1
`____________
`
`Record of Oral Hearing
`Held: September 11, 2018
`____________
`
`
`
`
`Before MICHAEL W. KIM, FRANCES L. IPPOLITO, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`Case IPR2017-01440
`Patent 9,291,290 C1
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`JOSHUA GOLDBERG, ESQUIRE
`ARPITA BHATTACHARYYA, ESQUIRE
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, N.W.
`Washington, D.C. 20001-4413
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`MICHAEL HICKEY, ESQUIRE
`RICHARD B. WALSH, JR., ESQUIRE
`KIRK DAMMON, ESQUIRE
`BENJAMIN SIDERS, ESQUIRE
`Lewis Rice, LLC
`600 Washington Avenue,
`Suite 2500
`St. Louis, MO 63101
`
`
`
`The above-entitled matter came on for hearing on Tuesday, September
`11, 2018, commencing at 12:59 p.m., at the U.S. Patent and Trademark
`Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`2
`
`
`
`Case IPR2017-01440
`Patent 9,291,290 C1
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE CHERRY: Good afternoon. Please be seated. We are here
`for the hearing in IPR 2017-01440, Fox Factory, Inc., v. SRAM, LLC. Will
`the parties please make their appearances. For Petitioner.
`MR. GOLDBERG: Good afternoon, Your Honor. Joshua Goldberg
`for Petitioner, and with me I have my colleague, Arpita Bhattacharyya.
`JUDGE CHERRY: Good afternoon, Mr. Goldberg. Patent Owner.
`MR. WALSH: Rick Walsh on behalf of SRAM, LLC and with me is
`my partner, Michael Hickey.
`JUDGE CHERRY: Thank you, Mr. Walsh. So, Mr. Goldberg, you
`go first. How much time would you like to reserve for rebuttal?
`MR. GOLDBERG: Twenty minutes, Your Honor.
`JUDGE CHERRY: Right, and whenever you're ready.
`MR. GOLDBERG: Are we going to be using the clock today?
`JUDGE CHERRY: Yes, yes. I have a clock here. It doesn't show to
`the parties.
`MR. GOLDBERG: Okay.
`JUDGE CHERRY: And Judge Ippolito is remote, so please identify
`the slide when you're talking about slides so that way she knows what you're
`talking about.
`MR. GOLDBERG: Okay. Ready to go?
`JUDGE CHERRY: Yes, whenever you're ready.
`MR. GOLDBERG: Okay. So for Judge Ippolito I'm on slide 2 right
`now. So, Your Honors, good afternoon again. Before we get into the
`substance I want to make clear that this case is very different from the 027
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`3
`
`
`
`Case IPR2017-01440
`Patent 9,291,290 C1
`
`cases we discussed a few months ago as SRAM wants to rehash those 027
`cases but we're dealing with different claims here and we have a much
`stronger prima facie case of obviousness.
`So instead of talking about those old arguments from the 027 cases,
`I'd like to focus on what's new. First, how the 250 claims came to exist and
`then on a completely new JP-Shimano in view of Hatten ground, and then
`I'll turn it over to my colleague, Ms. Bhattacharyya, to address secondary
`considerations.
`So going to slide 3. The 250 patent was repeatedly rejected during
`prosecution based on a narrow wide reference called Martin and the Patent
`Owner, they put in alleged evidence of secondary considerations but it was
`rejected every time by the examiner because it failed to demonstrate a nexus.
`Now turning to slide 5. The only way that the claims were eventually
`allowed is the Applicant amended them to recite wherein a maximum axial
`width about half way between a root circle and a top land of the first group
`of teeth fills at least 80 percent of an axial distance defined by the outer link
`spaces and that's the limitation that we're going to be talking about today,
`and I want to note that as we mentioned last time SRAM's technical expert,
`Dr. Sturges, again conceded that this is a very simple technology that we're
`talking about here. On slide 6 we have several quotes from him. He agrees
`that the major force factors at work in a bicycle chain drive system are
`understandable and appropriate to teach at a high school level physics class.
`Now going to slide 7. There's three main disputes today. The first
`one is claim construction of the last limitation wherein a maximum axial
`width about halfway between a root circle and a top land. Second is whether
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`4
`
`
`
`Case IPR2017-01440
`Patent 9,291,290 C1
`
`the art renders obvious that claimed axial width limitation and then
`secondary considerations.
`So I want to now turn to slide 11. SRAM makes a big deal in its
`slides of us supposedly being the ones who first brought up claim
`construction. That is not the case. SRAM is the one who, in its Patent
`Owner response, started to talk about what this last limitation meant and
`tried to add some limitations to it. Fox's position has always been that the
`last limitation, all it does is define an axial fill at the halfway point. In
`contrast, SRAM wants to require that the widest point of the tooth, the whole
`tooth, be at that halfway point.
`But that's not what the claims actually say and if we go to slide 12 we
`have testimony from our technical expert, Mr. Ganaja, and this is at Exhibit
`1031, paragraph 16, that the claims recite only the width at the recited
`halfway point and we have opened the possibility of the thickest part of the
`teeth being at some other location than the halfway point.
`Now SRAM accuses us of trying to get rid of the maximum language
`in the claim but if we turn to slide 13 we can see here that this maximum
`language tracks what's in the specification because the specification
`describes a shape, and this is shown in figure 15, that has multiple different
`widths at the halfway point. So by putting the word maximum into the claim
`it's showing that what we're looking at when we evaluate this percentage is
`the widest part of that shape, the W04, as opposed to the narrower part
`between the two W1s at the bottom of figure 15.
`So the claims themselves, they're not limiting the invention the way
`that SRAM argues that they are and in fact if we turn to slide 14 it seems
`like SRAM is trying to use their claim construction to get rid of the type of
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`5
`
`
`
`Case IPR2017-01440
`Patent 9,291,290 C1
`
`shape that's shown in JP-Shimano but the reality is we have testimony again
`from our technical expert Mr. Ganaja at 1031, paragraph 17. The plain
`language of the limitation is met by tapered chainring teeth such as those of
`JP-Shimano and he actually did a CAD analysis to show us that you can
`have tapered teeth and still have the axial fill at the halfway point be above
`80 percent, even above 85 percent, if you divide the 3.98 millimeters by 4.63
`millimeters in this drawing here you actually get 86 percent.
`So now I want to move on to the obviousness ground itself, slide 18.
`SRAM is not disputing that JP-Shimano teaches narrow wide teeth and it's
`also not disputing the patent in JIS teach inner link axial fill ratios above 85
`percent. The only thing that it's disputing is whether the outer link axial fill
`above 80 percent at the halfway point was obvious. Now if we go to slide --
`JUDGE CHERRY: Is it fair, Mr. Goldberg, to say that you're
`focusing now on what I think the petition calls ground one that JP-Shimano
`in view of Hatten and we're starting with JP-Shimano and modifying it in
`view of the teaching about width?
`MR. GOLDBERG: Yes. Given the limited time available today for
`oral argument that's where we're focusing.
`JUDGE CHERRY: Great. Thank you.
`MR. GOLDBERG: So we have the figures that you all are familiar
`with on slide 19 showing the wide teeth in green and the narrow teeth in
`orange from JP-Shimano but there seems to be some disagreement. Now
`SRAM continues to argue, and we have on slide 20, that JP-Shimano is not
`actually disclosing that the wide teeth are wider that the inner link surface
`spaces. But every version of JP-Shimano in this case, all three translations,
`specifically state this. Just looking at the first translation, Exhibit 1006, lines
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`6
`
`
`
`Case IPR2017-01440
`Patent 9,291,290 C1
`
`108 to 113, it says according to the device illustrated in the drawings the
`thickness of the teeth 22 is greater than the inner surface spaces of the inner
`link plates 31. That shows in all the translations.
`So why is this wideness important? Well if we turn to slide 21, and
`this is going all the way back to our petition, these are not new arguments
`that first started showing up in the reply. We have Dr. Neptune recognizing,
`and this is at Exhibit 1023, paragraph 53,
`"That reducing the axial gap between the tooth and the adjacent links
`helps to reduce the sideways, i.e., axial displacement of the chain which in
`turn reduces the likelihood of chain disengagement."
`Now SRAM tries to say that this is something Dr. Neptune is just
`making up, there's no support for it anywhere. But if we turn to the very
`next slide, slide 22, toward the middle there's actually quoted language from
`JP-Shimano indicating that the teeth can be set to conform to the spaces
`between the outer link plates 32 so that the chain does not drop when the
`outer link plates engage with the teeth even if the chain line is displaced. So
`this is that teaching of you go wider, that prevents displacement.
`So what's left? Well we need to figure out exactly how wide do you
`go, what are the exact numbers because JP-Shimano doesn't disclose the
`exact dimensions that it's going to use and if we go to slide 23 we have again
`testimony from Dr. Neptune at paragraph 55 talking about how one of
`ordinary skill in the art would have sought to determine the optimum axial
`gap or optimum axial filler ratio based on the disclosures of the prior art.
`If we turn to slide 24, paragraph 63 from Dr. Neptune's testimony, the
`reason that we're doing that is in order to improve chain retention, and we're
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`7
`
`
`
`Case IPR2017-01440
`Patent 9,291,290 C1
`
`just using this as a starting point. So you're going to start by looking at the
`axial fill ratios that in the prior art and we can see those.
`If we turn to slide 27, Dr. Neptune going through patent and also JIS
`on slide 28 and showing how the 96 percent came to be, how the 88 percent
`in JIS came to be, so those are the dimensions that you start with and then
`you optimize them.
`If we turn to slide 29. At bottom what this comes down to is axial fill
`is just a result effective variable that' within the grasp of a person of ordinary
`skill in the art, and getting to that 85 percent would have resulted through
`nothing more than routine experimentation. If we go to slide --
`JUDGE CHERRY: I guess --
`MR. GOLDBERG: Sorry, go ahead.
`JUDGE CHERRY: -- I guess one question I had is I believe it's the
`Boesch case that teaches us that the art has to recognize it as a result
`effective variable. Where is the recognition in the art that it is a result
`effective variable?
`MR. GOLDBERG: Yes. So let me actually turn to slide 30 here and
`this is various portions of our petition itself and you'll see there citations to
`Exhibit 1006, that's JP-Shimano at lines 78 to 86, and that is where it is
`demonstrating that it is --
`JUDGE CHERRY: So you're relying on the conform to the outer
`links spacing -- that portion of JP-Shimano that you quoted earlier about
`with the wider teeth need to conform to the outer link spacing. Is that --
`MR. GOLDBERG: That, and also -- just let me get my copy of JP-
`Shimano out, those lines there are actually some other lines. So if Your
`Honors could go to page 15 of JP-Shimano which is Exhibit 1006 and I'm
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`8
`
`
`
`Case IPR2017-01440
`Patent 9,291,290 C1
`
`talking about page 15 that was added to the document at the bottom left
`corner. The entire paragraph starting at line 78 starts saying,
`"The present device focuses on the fact that the spaces between the
`outer link plates in the chain become wider than the spaces between the
`inner link plates and the present device is configured to eliminate dropping
`of the chain from between the outer link plates and also to enhance
`durability. The present device accomplishes this by setting one specific
`tooth as a standard from among the plurality of teeth provided
`circumferentially on the outer periphery of the gear main body and by
`forming the thickness of the even number teeth smaller than the spaces
`between the outer link plates of the chain but greater than the other teeth that
`engage between the inner link plates so that the teeth with the greater
`thicknesses engage between the outer link plates."
`So two places that we're pointing to for that, and this is something that
`SRAM actually has never disputed until maybe today in their slides they
`have some discussion about result effective variable but it's never come up
`before and if we look at the slide toward the bottom it says -- this is the In re
`Applied Materials case, quoting from that,
`"A recognition in the prior art that a property is affected by the
`variable is sufficient to find the variable result effective."
`That's what we have in JP-Shimano and then if we go up and we look
`at the top quote, this is still on slide 30,
`"The determination of the optimum or workable ranges of a result
`effective variable is within the grasp of a person of ordinary skill in the art."
`If we go to slide 31 and we have here Dr. Neptune all the way back in
`the petition, paragraph 69, testifying that the axial fill is not a product of
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`9
`
`
`
`Case IPR2017-01440
`Patent 9,291,290 C1
`
`innovation but is simply a matter of routine experimentation and
`optimization, and even if we look at the inventors themselves -- this is
`coming from SRAM's Patent Owner response -- all that was required to get
`to these ratios in the claims was "some testing" and with that unless Your
`Honors have any questions, I'll pass it to my colleague to address secondary
`considerations.
`JUDGE CHERRY: I did have one question about in terms of I see
`what you're saying about that disclosure but in terms of the -- because
`they're claiming the specific location within the midpoint of the two between
`the -- I'm not going to quote the language but you know what I mean.
`MR. GOLDBERG: Yes.
`JUDGE CHERRY: They're quoting a specific spot on the tooth where
`they're optimizing it. Why would that have been obvious?
`MR. GOLDBERG: So the reason that that would have been obvious
`is because when you're doing the optimization your starting point is going to
`be the sum of the axial fill percentages that are well known in the art from
`Hatten and from JIS. Both of those references at the halfway point and in
`that area show the very high axial fills at 96 percent and at 88 percent, so
`one of ordinary skill in the art when they are doing their optimization that's
`going to be one of the things that they're looking at and they're going to go
`up and go down as needed and eventually they're going to get to where they
`need to be and would end up with that at the halfway point.
`JUDGE CHERRY: Okay.
`MS. BHATTACHARYYA: Good afternoon, Your Honors. Arpita
`Bhattacharyya for Fox Factory. Your Honors, in the 027 IPRs Petitioner's
`reply as well as the oral hearing focused a lot on why SRAM is not entitled
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`10
`
`
`
`Case IPR2017-01440
`Patent 9,291,290 C1
`
`to a presumption of nexus. In this 250 IPR proceeding Fox is focusing more
`on why any presumption of nexus is rebutted regardless of whether the
`Board grants SRAM a presumption or not.
`Going to slide 42. SRAM asserts that its secondary considerations
`evidence outweighs Fox's prima facie obviousness showing, but much of
`SRAM's secondary considerations are legally and factually deficient,
`specifically these five categories of secondary considerations that are shown
`on slide 42 fail on the merits regardless of whether the Board grants SRAM
`a presumption or not and moreover, all of SRAM's evidence for unexpected
`result skepticism, long felt but unmet need, copying and licensing, they are
`tied to SRAM's X-Sync chainring. SRAM has not presented any evidence
`that is commensurate with the scope of the crankset and the drivetrain
`claims.
`Therefore, even if the Board finds that SRAM's evidence for these
`five secondary considerations deserves some merit, the weight should be
`limited to the chainring claims and not extend to the crankset and drivetrain
`claims and this is because the Federal Circuit has explained in the Polaris
`case that there can be no presumption of Nexus between a claimed invention
`and evidence that is tied to a component of the claimed invention and here
`there is no doubt that the X-Sync is a component of SRAM's crankset and
`drivetrains and so there can be no presumption of nexus between X-Sync
`evidence and the crankset and drivetrain claims.
`Slide 42. Slide 42 summarizes Fox's position on SRAM's evidence
`for the five categories that are shown in the red box on this slide. For the
`chainring claims these five categories of secondary considerations fail on the
`merits because SRAM's evidence is legally and factually deficient and
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`11
`
`
`
`Case IPR2017-01440
`Patent 9,291,290 C1
`
`moreover, the little evidence that SRAM has put in it is not commensurate
`with the scope of the crankset and drivetrain claims.
`Slide 44. Even though there is some evidence of commercial success
`of SRAM's drivetrains and praise for the X-Sync chainring any presumption
`of nexus is rebutted by SRAM's -- I apologize -- presumption of nexus
`rebutted by Fox's counter evidence and as the Federal Circuit has explained
`in WBIP, Ormco and several other cases a presumption of nexus is rebutted
`if the secondary consideration is caused by prior art or unclaimed features
`and here SRAM's commercial success and praise is driven by unclaimed
`features like the type 2 rear derailleur or the asymmetric teeth of the X-Sync,
`as well as prior art features like the narrow and wide feature and the wide
`range rear cassette.
`Now in the 027 IPRs, the panel had found that even though they're
`unclaimed features in the X-Sync SRAM is still entitled to a presumption of
`nexus. That finding is not inconsistent with what I'm saying here today.
`The presence of these unclaimed features in the X-Sync chainring rebuts any
`presumption of nexus.
`JUDGE KIM: Is it so definitive?
`MS. BHATTACHARYYA: Your Honor, the Federal Circuit case law
`said that the presumption of nexus can be rebutted by showing that the
`secondary consideration is due to unclaimed features or non-novel features.
`JUDGE KIM: But I mean there's got to be a spectrum right, because
`if you have a partial unclaimed features that's minor, that's one thing. If you
`have it one percent of a car, that's different, right?
`MS. BHATTACHARYYA: Absolutely, Your Honor. The rebuttal of
`the presumption of nexus, it's not a binary decision. Evidence on both sides
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`12
`
`
`
`Case IPR2017-01440
`Patent 9,291,290 C1
`
`of the equation have to be taken into consideration to assign weight to the
`secondary consideration. So even if the panel finds that Fox's evidence does
`not fully rebut Fox's evidence has to be taken into consideration in assigning
`due weight to SRAM's secondary considerations.
`Slide 45. This slide summarizes SRAM's evidence for praise and
`commercial success. For the chainring claims SRAM has shown praise for
`the X-Sync but the presumption of nexus between the praise and the
`chainring claims has been rebutted by SRAM's evidence. Similarly for the
`drivetrain claims --
`JUDGE CHERRY: You mean Fox's evidence?
`MS. BHATTACHARYYA: Yes, Your Honor, Fox's evidence.
`Similarly, for the drivetrain claims there is evidence of commercial success
`for SRAM's drivetrains but the presumption of nexus has been rebutted by
`Fox's evidence.
`Slide 46. SRAM has argued that somehow avoidance of chain-suck at
`about 86 percent axial fill is an unexpected result, but SRAM has not
`presented any prior art shown that chain-suck would have been expected at
`over 80 percent axial fill and neither does the 250 patent. The 250 patent
`does not discuss chain-suck, it does not say that chain-suck would have been
`expected at over 80 percent axial fill and if SRAM had believed this to be an
`unexpected result, the specification would have said that but it does not
`mention anything about it. Now Federal Circuit case law requires SRAM to
`show that the result would have been unexpected over the closest prior art
`but SRAM has not shown that. Moreover --
`JUDGE CHERRY: Would you say the closest prior art is JP-
`Shimano?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`13
`
`
`
`Case IPR2017-01440
`Patent 9,291,290 C1
`
`
`MS. BHATTACHARYYA: I would say that on the record the closest
`prior art is JP-Shimano but SRAM has not done any comparative testing to
`show that chain-suck would have been expected with JP-Shimano's device.
`Another big flaw with SRAM's showing of unexpected results is that
`chain-suck would not be avoided throughout the claimed range. Fox's
`expert, Mr. Scott Ganaja, has testified that there will be chain-suck at near
`100 percent axial fill and SRAM's showing of unexpected results fails as a
`matter of law because chain-suck would not be unexpected throughout the
`claimed range.
`Slide 47. SRAM's evidence of unexpected result is the self-serving
`testimony of one of the inventors, Mr. Henry Braedt, who after just some
`testing realized that chain-suck above 80 percent axial fill was a phantom
`problem. Except for near 100 percent axial fill, chain-suck would not be
`expected by a POSITA because axial fill is not a primary cause of chain-
`suck. As Mr. Ganaja has testified, chain-suck is primarily caused by worn
`and bent teeth that cause the snagging of the chain an a POSITA would have
`known that. Slide 48.
`JUDGE CHERRY: What does Mr. Ganaja -- does he have any
`evidence to support that, that that's what causes chain-suck?
`MS. BHATTACHARYYA: Your Honor, he's relying on his own
`experience as he's very well versed in bicycle technology. He is an avid
`bicyclist himself and I believe he has also read about it so he's relying on his
`personal knowledge of how chain-suck works based on his experience of
`bicycle technology as well him being a bicyclist himself.
`JUDGE CHERRY: Okay. Thank you.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`14
`
`
`
`Case IPR2017-01440
`Patent 9,291,290 C1
`
`
`JUDGE KIM: Counsel, how do the burdens work here because at the
`end of the day we're kind of having a battle of experts on this issue? So
`secondary considerations it would seem that Patent Owner meets the
`presumption of nexus then the burden shifts to you to rebut it, correct?
`MS. BHATTACHARYYA: Yes, Your Honor. But here we are
`talking about a threshold evidence of these five secondary considerations.
`Patent Owner has two separate burdens. First Patent Owner has to put
`forward sufficient evidence to show that there is unexpected result or there is
`commercial success, there is praise, and then they have to show entitlement
`to a presumption of nexus. What we are saying is that for the five categories
`of secondary considerations that were on slide 42, Patent Owner does not
`even meet that threshold showing because the evidence that they have put
`forward is legally and factually deficient. We don't even have to go to the
`point of rebuttal of a nexus because for unexpected results, for instance, they
`were required to show under the law, it was their burden to show that
`unexpected result would be over the closest prior art. They have not shown
`that. They have self-serving testimony from one of the inventors saying that
`avoidance of chain-suck is an unexpected result but they have not shown
`that it would be unexpected over the closest prior art and they have not
`shown that it would be unexpected throughout the claimed range and In re
`Peterson specifically says that for an unexpected result has to be throughout
`the range that the Patent Owner is claiming. So SRAM's evidence fails on
`the merits without even reaching the question of whether we have fully
`rebutted it or not.
`JUDGE CHERRY: So the declarant, what you're saying is they don't
`even get the presumption at all that the threshold is high enough --
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`15
`
`
`
`Case IPR2017-01440
`Patent 9,291,290 C1
`
`
`MS. BHATTACHARYYA: Yes.
`JUDGE CHERRY: -- they didn't need it.
`MS. BHATTACHARYYA: And just to clarify what we are saying is
`that for praise and for commercial success SRAM's evidence does meet that
`threshold and even if the Board then grants SRAM presumption of nexus,
`Fox's counter evidence rebuts that presumption of nexus.
`JUDGE CHERRY: Thank you.
`MS. BHATTACHARYYA: Moving to slide 48. More importantly,
`a POSITA would not have been dissuaded by chain-suck from optimizing
`the axial fill to come up with an axial fill range where chain-suck would
`have been minimized and chain retention would have been maximized, and
`this is because Hatten and JIS, they all teach high axial fill and a POSITA
`would have known that they can look to those prior art teachings and that
`optimize to routine experimentation to come up with an optimum range
`where chain-suck is minimized while still maximizing chain retention.
`Slide 49. SRAM argues that somehow axial fill is the bigger problem
`in outer link spaces than in inner link spaces but they have not provided any
`logical explanation for that. Fox's expert, Mr. Ganaja, has testified that if
`chain-suck is caused at all axial fill it would be due to lateral friction with
`the inner link plates and it would work the same way, whether in the outer
`link space or in the inner link space and a POSITA would have known that.
`Slide 50. Your Honor, SRAM conflates the evidence of praise and
`skepticism. While post-invention praise is okay, skepticism much like
`teaching away has to be expressed before the invention and this is because
`post-invention skepticism does not demonstrate that an inventor at the time
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`16
`
`
`
`Case IPR2017-01440
`Patent 9,291,290 C1
`
`of the invention would have been dissuaded from combining or modifying
`references to come up with the claimed invention.
`SRAM has now shown any post-invention skepticism. Moreover,
`there is no evidence that the magazine authors who have expressed the post-
`invention skepticism where POSITAs -- Your Honor, I might have earlier
`said that SRAM has not shown post-invention skepticism. I want to clarify
`this. SRAM has not shown any pre-invention skepticism. All of their
`evidence on skepticism was expressed post-invention.
`JUDGE CHERRY: But doesn't the skepticism inform -- I mean the
`fact that people saw it and were skeptical that it wouldn't work, doesn't that
`inform the state of the art? Doesn't that say that people would have thought
`that this wouldn't work before the date of the invention?
`MS. BHATTACHARYYA: But, Your Honor, the post-invention
`skepticism does not show that the inventor would have been dissuaded. If
`the inventor didn't know that other experts and POSITAs taught that that
`invention wouldn't work, so the inventor would have gone ahead and made
`the invention anyway because there was no skepticism expressed anywhere
`in the prior art.
`Moreover, Your Honor, there is no evidence that the magazine authors
`who have expressed the skepticism are POSITAs. If they were POSITAs
`they would have been --
`JUDGE CHERRY: There's really no one that is a POSITA, right? It's
`a hypothetical construct, so the fact that someone isn't this hypothetical
`person but is experienced in the field, doesn't that kind of skepticism also
`weigh into the equation?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`17
`
`
`
`Case IPR2017-01440
`Patent 9,291,290 C1
`
`
`MS. BHATTACHARYYA: Your Honor, the case law requires the
`skepticism to be from experts who are POSITAs and there is no evidence
`that the magazine authors are either. We do not know any of the
`qualifications of the magazine authors and reviewers, and the underlying
`point is that if they are considered POSITAs they would have known about
`JP-Shimano and if the magazine authors had known that Shimano has a
`reference that teaches narrow wide teeth and the narrow wide teeth improved
`chain retention they would not have been so skeptical.
`JUDGE CHERRY: But I'm not so certain that the person has to know
`about the prior art reference to be able to express -- some prior art references
`that's a laid open Japanese patent publication from the early 1980s. I mean I
`think that's a pretty high standard to expect that people would have to know
`about all the prior art and then express skepticism.
`MS. BHATTACHARYYA: Your Honor, a POSITA -- I know it's a
`hypothetical person but a POSITA is expected to know all the prior art,
`although in real life we know that the POSITA doesn't but the definition of a
`POSITA in patent law is the POSITA is expected to know all the prior art.
`But under the case law, even if the POSITA does not know about the prior
`art the case law says that the POSITAs and experts should express the
`skepticism before the invention.
`JUDGE CHERRY: Okay.
`MS. BHATTACHARYYA: Moving to slide 51. SRAM asserts that
`there has been a long felt need to improve chain retention without
`extraneous devices, but again SRAM has not shown any prior art evidence
`of that asserted need and the Federal Circuit case law again requires SRAM
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`18
`
`
`
`Case IPR2017-01440
`Patent 9,291,290 C1
`
`to show that the asserted long felt need was art recognized and SRAM has
`not done that.
`JUDGE CHERRY: Well didn't Dr. Neptune testify in the last -- I
`know he's changed his testimony -- but didn't he in the last case testify that
`there was a long felt need?
`MS. BHATTACHARYYA: Your Honor, in the 027 IPR Dr. Neptune
`did testify that there was a long need to maintain a chain on the chainring but
`then SRAM did not ask him the right question. They did not ask him if the
`long felt need was unmet and in his deposition in the 250 IPR he clarified
`that even though there was a need the need had been met a long time ago
`and, Your Honor, while we are on that --
`JUDGE CHERRY: I think if you read his testimony though from the
`027 cases it's not that clear. When was his deposition in this case?
`MS. BHATTACHARYYA: It was I believe in November of 2017 I
`believe, Your Honor.
`JUDGE CHERRY: So was that after our hearing in this case, in the
`other cases?
`MS. BHATTACHARYYA: Yes, Your Honor.
`JUDGE CHERRY: So after you heard that that was a problem, then
`you instructed him to change his testimony?
`MS. BHATTACHARYYA: No, Your Honor, we did not instruct him
`to change his testimony. We talked to him like why he thought that was a
`long felt need and was it met and he said no, no, I never testified that the
`need was unmet. The need has been solved a long time ago and SRAM did
`not ask him that question and in his deposition in the --
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`19
`
`
`
`Case IPR2017-01440
`Patent 9,291,290 C1
`
`
`JUDGE CHERRY: Actually it's like very -- I'm very skeptical of
`what you're telling me and I'm very skeptical of Dr. Neptune's testimony and
`him changing his testimony.
`MS. BHATTACH
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
