throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper No. 9
`Date: April 3, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FOX FACTORY, INC.,
`Petitioner,
`
`v.
`
`SRAM, LLC,
`Patent Owner.
`_________
`
`Case PGR2016-00043
`Patent 9,291,250 C1
`____________
`
`
`Before MICHAEL W. KIM, FRANCES L. IPPOLITO, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`CHERRY, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`37 C.F.R. § 42.208
`
`
`
`
`
`

`

`PGR2016-00043
`Patent 9,291,250 C1
`
`
`I.
`
`INTRODUCTION
`
`FOX Factory, Inc. (“Petitioner”) filed a Petition (“Pet.”) for post-grant
`
`review of claims 1–26 of U.S. Patent No. 9,291,250 C1 (Ex. 1001, “the ’250
`
`patent”) pursuant to 35 U.S.C. §§ 321–329. Paper 2. SRAM, LLC (“Patent
`
`Owner”) filed a Preliminary Response (“Prelim. Resp.”). Paper 5. Under
`
`35 U.S.C. § 324, a post-grant review may be instituted only if “the information
`
`presented in the petition . . . demonstrate[s] that it is more likely than not that at
`
`least 1 of the claims challenged in the petition is unpatentable.”
`
`Petitioner challenges the patentability of claims 1–26 of the ’250 patent
`
`under 35 U.S.C. §§ 112 and 103. After considering the Petition and the
`
`Preliminary Response, as well as all supporting evidence, we determine that the
`
`Petition fails to demonstrate that it is more likely than not that the ’250 patent is
`
`eligible for post-grant review. Accordingly, we deny the Petition.
`
`
`
`A.
`
`The ’250 patent
`
`The ’250 patent relates generally to chainrings, and more particularly, to a
`
`solitary chainring for use with a conventional chain in a bicycle drivetrain system
`
`that includes a bicycle crank. Ex. 1001, 1:8–10. Bicycles and other chain-driven
`
`vehicles typically employ one or more chainrings and set of rear hub-mounted
`
`sprockets connected by a chain. Id. at 1:11–13. According to the ’250 patent, the
`
`management of chain and chainring engagement in bicycles is important, and
`
`various mechanisms are used to maintain the chain on the chainring and the
`
`sprockets, including chain guards, chain tensioners, chain catchers, and derailleur
`
`configurations, among others. Id. at 1:13–19.
`
`The ’250 patent explains that managing the connection between the chain
`
`and the chainring is particularly difficult in geared bicycles, which can experience
`
`2
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`

`

`PGR2016-00043
`Patent 9,291,250 C1
`
`severe changes in chain tension and energy motion of the chain, especially when
`
`riding over rough terrain. Id. at 1:17–23. Thus, the ’250 patent asserts, more
`
`specifically, that it is directed to a solution for the problem of chain management
`
`especially for a bicycle that can successfully and reliably be ridden over
`
`challenging and rough terrain. Id. at 1:30–32.
`
`Figure 3 of the ’250 patent illustrates a drive chain and chainring and is
`
`reproduced below.
`
`
`
`Figure 3, reproduced above, is an isometric view of a combined drive chain and
`
`chainring according to the invention engaged by a drivetrain. Id. at 2:24–25.
`
`Figure 3 shows chainring 50 and conventional chain 10. Id. at 3:45–46. Crank or
`
`crank arm 48 attaches to chainring 50. Id. at 3:48–50. Force applied to crank
`
`arm 48 (typically, in a downward direction) causes rotation of chainring 50 in a
`
`direction (clockwise). Id. at 3:56–58. The rotation of chainring 50 causes chain 10
`
`to be drawn over and advanced about the chainring. Id. at 3:58–60.
`
`As is illustrated in Figure 3, chainring 50 includes a plurality of teeth,
`
`including first group of teeth 58 and second group of teeth 60. Id. at 3:61–67.
`
`3
`
`

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`PGR2016-00043
`Patent 9,291,250 C1
`
`Drive chain 10 includes outer chain links 12 and inner chain links 14. Id. at 2:65–
`
`67. First group of teeth 58 is configured to be received by and fitted into the outer
`
`link spaces of drive chain 10 and second group of teeth 60 is configured to be
`
`received by and fitted into the inner link spaces. Id. at 3:67–4:4. The engagement
`
`of first group of teeth 58 with the outer link spaces and of second group of teeth
`
`with the inner link spaces is illustrated in Figure 6, reproduced below.
`
`
`
`
`
`
`
`Figure 6 shows a side view of the combined drive chain and chainring engaged by
`
`a drive chain with the outer link plates removed. Id. at 2:29–31. The ’250 patent
`
`explains:
`
`In use, the chain 10 is installed with each of the outer chain links 12 on
`one of the first group of teeth 58 and each of the inner chain links 14 on
`one of the second group of teeth 60. As the chainring 50 is rotated by
`the crank 48, the chain 10 is drawn about the chainring, and the outer
`chain links 12 and the inner chain links 14 are sequentially engaged
`with respective first and second ones of the groups of teeth 58, 60. As
`detailed above, the various features of the chainring 50 function to
`guide and maintain the chain 10 thereon.
`
`Id. at 6:32–41.
`
`4
`
`

`

`PGR2016-00043
`Patent 9,291,250 C1
`
`
`B.
`
`Related Matters
`
`Petitioner and Patent Owner identify the following related district court
`
`proceedings: (1) SRAM, LLC v. Race Face Performance Products & RFE Holding
`
`(Canada) Corp., Case No. 1:16-cv-05262-JHL (N.D. Ill.) and (2) SRAM, LLC v.
`
`Race Face Performance Products & RFE Holding (Canada) Corp., Case No. 1:16-
`
`cv-11362-JHL (N.D. Ill.). Pet. 83–84; Paper 7, 3. The ’250 patent was subject
`
`previously to an ex parte reexamination proceeding (Reexamination Control
`
`No. 90/013,747). Paper 7, 2. The ’250 is subject currently to a second ex parte
`
`reexamination filed on October 7, 2016 (Reexamination Control No. 90/013,831).
`
`Id. A related patent, U.S. Patent. No. 9,182,027 B2, is currently subject to several
`
`pending petitions for inter partes review and an ex parte reexamination. Id.
`
`
`
`C.
`
`Illustrative Claim
`
`Claims 1–26 are pending and challenged, of which claims 1 and 14 are
`
`independent. Independent claim 1, which is representative, is reproduced below:
`
`1. A bicycle chainring of a bicycle crankset for engagement
`with a drive chain, comprising:
`
`a plurality of teeth extending from a periphery of the chainring
`wherein roots of the plurality of teeth are disposed
`adjacent the periphery of the chainring;
`
`the plurality of teeth including a first group of teeth and a
`second group of teeth, each of the first group of teeth wider
`than each of the second group of teeth; and
`
`at least some of the second group of teeth arranged
`alternatingly and adjacently between the first group of
`teeth,
`
`wherein the drive chain is a roller drive chain including
`alternating outer and inner chain links defining outer and
`inner link spaces, respectively;
`
`5
`
`

`

`PGR2016-00043
`Patent 9,291,250 C1
`
`
`wherein each of the first group of teeth is sized and shaped to
`fit within one of the outer link spaces and each of the
`second group of teeth is sized and shaped to fit within one
`of the inner link spaces; and
`
`wherein a maximum axial width about halfway 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.
`
`Ex. 1001, 6:51–7:4.
`
`
`
`D.
`
`The Alleged Grounds of Unpatentability
`
`The information presented in the Petition sets forth Petitioner’s contentions
`
`of unpatentability of claims 1–26 of the ’250 patent based on the following specific
`
`grounds (Pet. 30–83):
`
`References
`
`JP-Shimano1 and
`Hattan2
`
`
`
`
`
`
`Basis
`
`§ 103
`
`§ 112(a) (written description)
`
`§ 112(a) (enablement)
`
`§ 112(b) (indefiniteness)
`
`Challenged
`Claims
`
`1–26
`
`1–26
`
`1–26
`
`1–26
`
`Petitioner also cites the Declaration of Richard R. Neptune, Ph.D. (Ex. 1002;
`
`“the Neptune Dec.”).
`
`Patent Owner cites the Declaration of Robert H. Sturges, Ph.D. (Ex. 2002;
`
`“the Sturges Dec.”).
`
`
`
`
`1 Japanese Utility Model Kokai No. S56-42489, published April 18, 1981
`(Ex. 1006).
`2 U.S. Patent No. 3,375,022, issued March 26, 1968 (Ex. 1004).
`
`6
`
`

`

`PGR2016-00043
`Patent 9,291,250 C1
`
`
`II. ANALYSIS
`
`A. Post-Grant Review Eligibility
`
`The post-grant review provisions set forth in Section 6(d) of the AIA3 apply
`
`only to patents subject to the first-inventor-to-file provisions of the AIA. See AIA
`
`§ 6(f)(2)(A) (“The amendments made by subsection (d) . . . shall apply only to
`
`patents described in section 3(n)(1).”). The first-inventor-to-file provisions apply
`
`to any application for a patent, and to any patent issuing thereon, that contains or
`
`contained at any time a claim to a claimed invention that has an effective filing
`
`date on or after March 16, 2013. See AIA § 3(n)(1). Petitioner has the burden of
`
`demonstrating eligibility for post-grant review. See Mylan Pharms. Inc. v. Yeda
`
`Res. & Dev. Co., Case PGR2016-00010, slip op. at 10 (PTAB Aug. 15, 2016)
`
`(Paper 9).
`
`B. Petitioner’s Contentions Regarding Post-Grant Review Eligibility
`
`The ’250 patent is titled “Chainring,” and issued from U.S. Application
`
`No. 14/102,013 (“the ’013 application”), which was filed on December 10, 2013.
`
`Ex. 1001, at [54], [22]. The ’013 application claims priority to U.S. Application
`
`No. 13/311,735 (“the ’735 application”) filed on December 6, 2011. Id. at [63].
`
`Petitioner contends that, when it was filed, the ’013 application contained at least
`
`one claim that was not supported by the disclosure ’735 application, and, thus,
`
`cannot claim priority to the December 6, 2011 filing date of the ’735 application.
`
`Pet. 16. Specifically, Petitioner asserts that original application claim 17 of the
`
`’013 application, which was later cancelled, lacks written description support and
`
`
`3 Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011)
`(“AIA”).
`
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`PGR2016-00043
`Patent 9,291,250 C1
`
`was not enabled by the ’735 application.4 Id. at 17. Thus, Petitioner asserts that
`
`original application claim 17 of the ’013 application had an effective filing date
`
`after the effective date of the AIA first-inventor-to-file provisions. Id.
`
`Original application claim 17 is reproduced below:
`
`17. A bicycle chainring of a bicycle crankset for
`engagement with a drive chain, comprising:
`
`a plurality of teeth formed about a periphery of the
`chainring;
`
`the plurality of teeth including a first group of teeth and a
`second group of teeth, each of the first group of teeth
`wider than each of the second group of teeth; and
`
`at least some of the second group of teeth arranged
`alternatingly and adjacently between the first group of
`teeth.
`
`Ex. 1010, 26–27. Petitioner contends that the last limitation “at least some of the
`
`second group of teeth arranged alternatively and adjacently between the first group
`
`of teeth” lacks written description and enablement under 35 U.S.C. § 112(a).
`
`Pet. 16–29.
`
`C. Level of Skill in the Art
`
`Petitioner asserts that a person of ordinary skill in the art at the time of the
`
`effective filing date of the ’250 patent “would have had a skill level of at least a
`
`bachelor’s degree in mechanical engineering and/or at least three to five years’
`
`experience in the development and design of chain drive systems and components
`
`thereof.” Pet. 7 (citing Ex. 1002 ¶ 19). Patent Owner contends that a person of
`
`
`4 Petitioner asserts in a footnote that issued claim 1 is also not entitled to the filing
`date of the ’735 application for the same reasons as claim 17. Pet. 16 n.6.
`However, because Petitioner asserts the same limitation is not supported and offers
`no separate arguments for claim 1, we consider original application claim 17 to be
`representative and, thus, limit our analysis to that claim.
`
`8
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`PGR2016-00043
`Patent 9,291,250 C1
`
`ordinary skill would have a bachelor’s degree in mechanical engineering and at
`
`least one year of design experience with chainrings or related technologies.
`
`Prelim. Resp. 10 n.1 (citing Ex. 2002 ¶ 21). Any differences between these two
`
`definitions is insignificant to this analysis. On this record, and viewing the
`
`competing testimonial evidence in a “light most favorable to the petitioner,” we
`
`apply Petitioner’s definition of a person of ordinary skill in the art for our analysis.
`
`See 37 C.F.R. § 42.208(c).
`
`
`
`D. Written Description for Original Application Claim 17
`
`To satisfy the written description requirement under 35 U.S.C. § 112(a), the
`
`specification “must clearly allow persons of ordinary skill in the art to recognize
`
`that the inventor invented what is claimed.” Ariad Pharm., Inc. v. Eli Lilly & Co.,
`
`598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (internal quotation marks and
`
`alterations omitted). This test requires “an objective inquiry into the four corners
`
`of the specification from the perspective of a person of ordinary skill in the art” to
`
`determine whether the specification shows that “the inventor actually invented the
`
`invention claimed.” Id. In other words, a patent applicant must “convey with
`
`reasonable clarity to those skilled in the art that, as of the filing date sought, he or
`
`she was in possession of the invention. The invention is, for purposes of the
`
`‘written description’ inquiry, whatever is now claimed.” Vas-Cath Inc. v.
`
`Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991). “Such description need not
`
`recite the claimed invention in haec verba but must do more than merely disclose
`
`that which would render the claimed invention obvious.” ICU Med., Inc. v. Alaris
`
`Med. Sys., Inc., 558 F.3d 1368, 1377 (Fed. Cir. 2009).
`
`We are persuaded by Patent Owner’s arguments that Petitioner has failed to
`
`show sufficiently that original application claim 17 lacks written description
`
`9
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`PGR2016-00043
`Patent 9,291,250 C1
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`support in the ’735 application. See Prelim. Resp. 14–22. Petitioner argues that
`
`the disclosure of the ’735 application is limited to a single arrangement of teeth.
`
`See Pet. 18–20. However, “that a claim may be broader than the specific
`
`embodiment disclosed in a specification is in itself of no moment.” In re
`
`Rasmussen, 650 F.2d 1212, 1215 (CCPA 1981). Indeed, “[t]here is no special rule
`
`for supporting a genus by the disclosure of a species; so long as disclosure of the
`
`species is sufficient to convey to one skilled in the art that the inventor possessed
`
`the subject matter of the genus, the genus will be supported by an adequate written
`
`description.” Hynix Semiconductor Inc. v. Rambus Inc., 645 F.3d 1336, 1352 (Fed.
`
`Cir. 2011) (citing Ariad, 598 F.3d at 1351). Instead, “[w]hether the genus is
`
`supported vel non depends upon the state of the art and the nature and breadth of
`
`the genus.” Id. As Patent Owner explains, based on this framework, Petitioner’s
`
`showing fails to establish that original application claim 17 lacks written
`
`description support.
`
`Here, the evidence presented demonstrates that the state of the art in the field
`
`of bicycle chainrings was well-developed and predictable. See Ex. 2002 ¶¶ 7–16.
`
`As Patent Owner’s Declarant, Dr. Sturges, explains, a bicycle chainring is “a
`
`relatively simple mechanical device with no moving parts” and “[b]icycle
`
`chainrings have been in use since as early as the 1880s and are a very old
`
`technology.” Id. ¶ 7. He continues by testifying that:
`
`The basic mechanics of bicycle chain drive operation are simple,
`intuitive, and readily understandable, even to a person who does not
`have an advanced degree in physics or engineering. By junior high
`school, most children understand these basic mechanics well enough to
`be able reseat a dropped bicycle chain without adult supervision, and
`the major force vectors at work in a bicycle chain drive system are
`understandable and appropriate to teach in a high school level physics
`class. A bicycle chainring is a mechanical device. Mechanical devices
`generally operate on principles of physics. Mechanical inventions at
`
`10
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`

`

`PGR2016-00043
`Patent 9,291,250 C1
`
`
`the human-observable scale are generally more intuitive and easier to
`understand than inventions in other fields[.]
`
`Id. ¶ 12. This is consistent with the general understanding that the mechanical arts
`
`are a predictable field. See Bilstad v. Wakalopulos, 386 F.3d 1116, 1126 (Fed. Cir.
`
`2004). Petitioner offers no evidence or argument that the field is unpredictable.
`
`As for the “nature and breadth of the genus,” Petitioner and Dr. Neptune
`
`contend that there are “a wide range,” “a considerable number,” and “many” of
`
`species within the genus. Pet. 20–22; Ex. 1002 ¶ 31. Neither Petitioner nor
`
`Dr. Neptune, however, makes any effort to quantify or explain exactly how large a
`
`number this is. There is evidence suggesting, however, that, even if the number is
`
`large, it is bounded.
`
`For instance, Dr. Sturges testifies that “the genus is well-defined, bounded
`
`and finite.” Ex. 2002 ¶ 61. Indeed, Petitioner and Dr. Neptune acknowledge that
`
`there is a “spectrum” of embodiments and identifies the two ends of that
`
`“spectrum.” Pet. 20–21; Ex. 1002 ¶ 31. Thus, regardless of the breadth, the
`
`undisputed evidence shows that the set of embodiments is not unlimited.
`
`In addition, we are not persuaded by Petitioner’s contentions that the
`
`specification somehow limits itself only to one embodiment. See Pet. 19. As
`
`Patent Owner and Dr. Sturges points out, the specification of the ’735 application
`
`contains open-ended language and contains a detailed description of how the
`
`invention operates. See Prelim. Resp. 25–26; Ex. 2002 ¶ 58. Given the
`
`predictability of the art and nature and breadth of the genus, we agree with Patent
`
`Owner that Petitioner has not shown sufficiently that the specification of the ’735
`
`application does not convey a broader array of arrangements of teeth than the
`
`embodiments expressly shown. See In re Smythe, 480 F.2d 1376, 1383–84 (CCPA
`
`1973) (finding genus in predictable art described by a species); see also Lampi
`
`Corp. v. Am. Power Prods., Inc., 228 F.3d 1365, 1377–78 (Fed. Cir. 2000)
`
`11
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`PGR2016-00043
`Patent 9,291,250 C1
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`(affirming the district court’s finding that disclosure of only identical half-shells
`
`was sufficient written description support for a claim encompassing both identical
`
`and non-identical halfshells).
`
`Petitioner’s reliance on Tronzo v. Biomet, Inc., 156 F.3d 1154 (Fed.
`
`Cir. 1998), LizardTech, Inc. v. Earth Resource Mapping, 424 F.3d 1336, 1344–45
`
`(Fed. Cir. 2005), and ICU Medical is similarly misplaced. In each of those cases,
`
`the specification unambiguously limited the scope of the invention. In Tronzo, the
`
`patentee, in a later-filed application, asserted claims covering cup implants that
`
`were generic as to shape—despite the fact that the specification only discussed
`
`conical shaped cups, characterized the conical shape as being “an extremely
`
`important aspect” of the invention, and only mentioned other shapes in specifically
`
`distinguishing the prior art as inferior. Tronzo, 156 F.3d at 1159. The ’250 patent
`
`nowhere disparages teeth arrangements where the wide and narrow teeth are not all
`
`alternating and adjacent.
`
`In LizardTech, the claims at issue were invalidated on both written
`
`description and enablement grounds because the specification disclosed only one
`
`specific method for solving one particular problem—creating “seamless” discrete
`
`wavelet transforms (DWTs) for use in electronic image data compression. 424
`
`F.3d at 1345. Furthermore, the prior art described in the LizardTech specification,
`
`created only “non-seamless” DWTs, and there was no indication that a person of
`
`ordinary skill in the art would have known how to create a seamless DWT using
`
`any method other than that taught in the specification. 424 F.3d at 1343, 1345.
`
`Thus, LizardTech does not dictate the result here.
`
`Finally, in ICU Medical, the specification at issue was clear that having a
`
`spike within the medical valve was necessary to the use of the claimed invention.
`
`558 F.3d at 1378–79. Again, the ’250 patent contains no such limiting language.
`
`12
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`Patent 9,291,250 C1
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`In fact, the specification makes clear that the chainring merely has to “include” a
`
`first and second group of teeth, which leaves open other configurations. See
`
`Ex. 2002 ¶¶ 50–52.
`
`Accordingly, we determine that Petitioner has failed to show sufficiently that
`
`original application claim 17 lacks support in the ’735 application, and therefore, is
`
`not entitled to the filing date of the ’735 application.
`
`
`
`E. Enablement for Original Application Claim 17
`
`Under 35 U.S.C. § 112(a), enablement is separate and distinct from the
`
`written-description requirement. Ariad, 598 F.3d at 1344. “The test of enablement
`
`is whether one reasonably skilled in the art could make or use the invention from
`
`the disclosures in the patent coupled with information known in the art without
`
`undue experimentation.” United States v. Telectronics, Inc., 857 F.2d 778, 785
`
`(Fed. Cir. 1988). “[A] patent specification complies with the statute even if a
`
`‘reasonable’ amount of routine experimentation is required in order to practice a
`
`claimed invention.” Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1371
`
`(Fed. Cir. 1999). Whether undue experimentation is needed is not a single, simple
`
`factual determination, but rather is a conclusion reached by weighing many factual
`
`considerations. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). These factors,
`
`referred to as the Wands factors, include, for example, the nature of the invention,
`
`the state of the prior art, the level of one of ordinary skill, the level of predictability
`
`in the art, and the amount of direction provided by the inventor. Id.
`
`Petitioner argues that “[a]lthough the specification may have enabled one
`
`disclosed embodiment of the claimed invention, the full scope original claim 17
`
`includes additional, broader embodiments that are not described at all in the
`
`specification or drawings of the [’735 application].” Pet. 26. Petitioner submits
`
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`PGR2016-00043
`Patent 9,291,250 C1
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`that a person of ordinary skill in the art “could not ‘make and use’ all claimed
`
`chainring embodiments within the full scope of original claim 17 without ‘undue
`
`experimentation’ because the disclosure does not teach how some but not all of the
`
`‘second group of teeth’ (i.e., the narrow teeth) may be arranged alternatingly and
`
`adjacently between the ‘first group of teeth’ (i.e., the wide teeth), or what the
`
`arrangement of the remaining narrow and/or wide teeth would be.” Id. at 27.
`
`Petitioner further argues that Patent Owner “has not demonstrated that the
`
`various embodiments covered by the scope of original claim 17 would work for the
`
`intended purpose of improving chain retention on the chainring.” Id. Petitioner
`
`asserts that this failure “violates the enablement requirement of § 112(a), which
`
`mandates a showing that ‘the invention will work for its intended purpose.’” Id.
`
`(quoting Rasmusson v. SmithKline Beecham Corp., 413 F.3d 1318, 1325 (Fed. Cir.
`
`2005)). Petitioner contends that even if a person of ordinary skill in the art “would
`
`know how to ‘make and use’ the many undisclosed embodiments within the scope
`
`of original claim 17, the enablement requirement would still not be satisfied
`
`because a [person ordinary skill] would not know, without undue experimentation,
`
`which embodiment, if any at all, would work for the intended purpose of
`
`improving chain retention on the chainring.” Id. at 28. Finally, Petitioner argues
`
`that it is not sufficient that the ’250 patent enables its preferred embodiment.
`
`Instead, Petitioner asserts that there must be “reasonable enablement of the scope
`
`and range.” Id. at 27–28.
`
`
`
`Patent Owner submits that Petitioner has failed to show that application
`
`claim 17 is not enabled. Prelim. Resp. 22–32.
`
`
`
`We agree with Patent Owner that Petitioner has failed to demonstrate
`
`sufficiently that the original application claim 17 is not enabled. Petitioner’s
`
`enablement contentions rest on the conclusory testimony of Dr. Neptune that
`
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`PGR2016-00043
`Patent 9,291,250 C1
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`making or using the invention of original application claim 17 would require
`
`“undue” experimentation. Dr. Neptune provides no analysis, however, of the
`
`Wands factors, and no account of what kinds of experimentation would be
`
`necessary or how much. Given the conclusory nature of Dr. Neptune’s testimony
`
`regarding the enablement of original application claim 17, and the lack of analysis
`
`underlying its opinions, we give it no weight. See 37 C.F.R. § 42.65 (“Expert
`
`testimony that does not disclose the underlying facts or data on which the opinion
`
`is based is entitled to little or no weight.”). Thus, we determine that this evidence,
`
`even if unrebutted, would be insufficient to meet Petitioner’s burden.
`
`Even though we are already persuaded, based on the above analysis alone,
`
`that Petitioner has not met its burden with respect to this enablement argument, we
`
`note that Patent Owner has offered competing testimony and evidence analyzing
`
`the Wands factors, and concluding that the manufacture and using a bicycle
`
`chainring as claimed in original application claim 17 would be well within the
`
`level of skill in the art at the time of the invention. See Ex. 2002 ¶¶ 55–59. We
`
`find this testimony to be well-reasoned and supported by sufficient evidence and
`
`explanation. Thus, we find it persuasive and give it substantial weight. In
`
`particular, Dr. Sturges explains that the manufacture and design of chainrings was
`
`well-known. Id. ¶¶ 55–57. Dr. Sturges further explains that the operation of
`
`chainrings was also well-known, and that a person of ordinary skill would have
`
`understood, from reviewing the specification of the ’735 application, that the
`
`chainring of the claimed invention should be seated on the gear such that the first
`
`(wider) group of teeth engage the bigger, outer link spaces, and the second
`
`(narrow) group of teeth engage the smaller inner link spaces. Id. ¶ 58. Dr. Sturges
`
`also testifies that a person of ordinary skill would have understood that narrow and
`
`wide teeth should be arranged so that the thick teeth do not engage with inner link
`
`15
`
`

`

`PGR2016-00043
`Patent 9,291,250 C1
`
`spaces. Id. Dr. Sturges concludes that it would be “readily apparent” to a person
`
`of ordinary skill that “whatever the arrangement of the teeth, wide teeth should not
`
`be positioned so as to engage with the narrow link spaces, because the wider tooth
`
`structure may increase the risk of chain drop.” Id. ¶ 60 (citing Ex. 1001, Figs. 6, 8,
`
`11). This testimony is detailed and well-reasoned, and further demonstrates that
`
`Petitioner has not met its burden, even at this preliminary stage of the proceeding
`
`and viewing the competing testimonial evidence in a “light most favorable to the
`
`petitioner,” to show that original application claim 17 is not enabled.
`
`To the extent Petitioner’s argument is that because there is no written
`
`description support, there is no enablement, Petitioner has failed in showing there
`
`is no written description support. Thus, we are unpersuaded that argument
`
`demonstrates sufficiently that there is no enablement of original application
`
`claim 17.
`
` We also note that Petitioner’s reliance on Automotive Technologies
`
`International, Inc. v. BMW of North America, Inc., 501 F.3d 1274 (Fed. Cir. 2007),
`
`is misplaced. Automotive Technology involved means-plus-function claims
`
`directed to “crash sensing devices” for use with, among other things, airbags. Id.
`
`at 1276–77. After finding that the claim included both mechanical and electronic
`
`crash detection sensors, the court found that a short paragraph, that provided no
`
`detail of how the electronic sensor operates, was non-enabling. Id. at 1282. More
`
`specifically, the court found that “side impact sensing is a new field” with limited
`
`prior art literature, and “there were no electronic sensors in existence that would
`
`detect side impacts and provide details of its construction.” Id. at 1281, 1284.
`
`Moreover, expert testimony was provided that identified specific problems in
`
`developing an electronic sensor that would require a great deal of experimentation
`
`to solve. Id. In contrast, this case involves a well-developed and predictable field.
`
`16
`
`

`

`PGR2016-00043
`Patent 9,291,250 C1
`
`See Ex. 2002 ¶¶ 7–12. Petitioner identifies no specific problems that would cause
`
`a person of ordinary skill difficulty in making or using the claimed invention.
`
`Thus, Automotive Technologies does not inform the result of this case.
`
` Finally, as for Petitioner’s contention that Patent Owner must demonstrate
`
`that the various embodiments covered by the scope of application claim 17 would
`
`work for the intended purpose of improving chain retention on the chainring, we
`
`do not agree. “Even if some of the claimed combinations were inoperative, the
`
`claims are not necessarily invalid.” Atlas Powder Co. v. E.I. du Pont De Nemours
`
`& Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984). Indeed, a “considerable amount of
`
`experimentation is permissible, if it is merely routine . . . .” PPG Indus., Inc. v.
`
`Guardian Indus. Corp., 75 F.3d 1558, 1564 (Fed. Cir. 1996). Petitioner has
`
`provided no persuasive evidence that would allow us to determine exactly what
`
`kind of experimentation would be necessary, whether it would be routine, or
`
`whether it would be extensive, and if so, how much. Without such persuasive
`
`evidence, we determine Petitioner’s contentions are lacking.
`
`In sum, we conclude that Petitioner has failed to show sufficiently, even at
`
`this preliminary stage, that original application claim 17 would not be enabled.
`
`
`
`F.
`
`Summary
`
`For the foregoing reasons, we determine that the Petitioner has not
`
`demonstrated that original application claim 17 lacks § 112 support in the
`
`originally filed ’735 application. Thus, Petitioner has failed to show that the
`
`effective filing date of original application claim 17 is after the effective date of the
`
`AIA.
`
`
`
`17
`
`

`

`PGR2016-00043
`Patent 9,291,250 C1
`
`
`III. CONCLUSION
`
`We determine that the Petition has failed to demonstrate that the ’250 patent
`
`is eligible for post-grant review, because Petitioner has failed to show that the
`
`effective filing date of the ’250 patent is after the effective date of the AIA.
`
`Therefore, we cannot institute a post-grant review of the ’250 patent.
`
`
`
`After due consideration of the record before us, and for the foregoing
`
`IV. ORDER
`
`reasons, it is:
`
`ORDERED that the Petition for post-grant review is denied.
`
`18
`
`

`

`19
`
`PGR2016-00043
`Patent 9,291,250 C1
`
`PETITIONER:
`
`
`Joshua Goldberg
`Joshua.goldberg@finnegan.com
`
`Arpita Bhattacharyya
`Arpita.bhattacharyya@finnegan.com
`
`
`
`PATENT OWNER:
`
`Michael Hickey
`mhickey@lewisrice.com
`
`Kirk Damman
`kdamman@lewisrice.com
`
`Benjamin Siders
`bsiders@lewisrice.com
`
`
`

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