Trials@uspto.gov
`571.272.7822
`
`Paper No. 62
`Filed: December 6, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FOX FACTORY,INC.,
`Petitioner,
`
`Vv.
`
`SRAM, LLC,
`Patent Owner.
`
`Case IPR2017-01440
`Patent 9,291,250 Cl
`
`Before MICHAEL W. KIM, FRANCES L. IPPOLITO, and
`KEVIN W. CHERRY,Administrative Patent Judges.
`
`CHERRY,Administrative Patent Judge.
`
`__.
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`571.272.7822
`
`Paper No. 62
`Filed: December 6, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FOX FACTORY,INC.,
`Petitioner,
`
`Vv.
`
`SRAM, LLC,
`Patent Owner.
`
`Case IPR2017-01440
`Patent 9,291,250 Cl
`
`Before MICHAEL W. KIM, FRANCES L. IPPOLITO, and
`KEVIN W. CHERRY,Administrative Patent Judges.
`
`CHERRY,Administrative Patent Judge.
`
`__.
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`IPR2017-01440
`Patent 9,291,250 Cl
`
`Fox Factory, Inc. (“Petitioner”) filed a Petition requesting an inter
`partes review ofclaims 1-26 of U.S. Patent No. 9,291,250 Cl (Ex. 1001,
`“the ’250 patent”). Paper 2 (‘‘Petition” or “Pet.””). Pursuant to 35 U.S.C.
`§ 314(a), we determined the Petition showed a reasonablelikelihoodthat
`Petitioner would prevail in establishing the unpatentability of claims 1-26,
`
`and instituted an inter partes review ofthese claims on one of the two
`
`asserted groundsof unpatentability. Paper 8 (“Inst. Dec.”). On April 24,
`2018, the Supreme Court held that a decisionto institute under 35 U.S.C.
`§ 318(a) may notinstitute on less than all claims challengedin the petition.
`SAS Inst., Inc. v. lancu, 138 S. Ct. 1348, 1355 (2018). Following the
`
`Supreme Court’s decision in SAS, the Office issued guidance that the Board
`would nowinstitute on all challenges and would supplement anyinstitution
`
`decision that had notinstituted on all groundsto institute on all grounds. See
`April 26, 2018, Guidance on the Impact ofSAS on AIA Trial Proceedings.!
`Accordingly, on May 4, 2018, we issued an orderinstituting on the one
`groundof unpatentability asserted in the Petition that we had not originally
`instituted review on. See Paper 29.
`Patent Owner SRAM, LLC (“SRAM”or“Patent Owner”) filed a
`Patent Owner Response. Paper 31 (“PO Resp.”)*. Petitioner filed a Reply to
`
`| Available at https://www.uspto.gov/patents-application-process/patent-
`trial-and-appeal-board/trials/guidance-impact-sas-aia-trial.
`2 On April 2, 2018, Patent Ownerfiled a Patent Owner Response addressing
`the one ground on which wehadoriginally instituted review. See Paper 24.
`By agreementofthe parties, Patent Owner submitted a substitute Patent
`OwnerResponse on May23, 2018, which includedall of the argumentsin
`the original Patent Owner Response,but also added arguments addressing
`the newly instituted ground of unpatentability. See Paper 30. All citations
`are to the substitute Patent Owner Response.
`
`2
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`
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`IPR2017-01440
`Patent 9,291,250 Cl
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`Patent Owner’s Response. Paper 38 (‘‘Pet. Reply”). Pursuant to our
`
`authorization, Patent Owneralso filed a Sur-Reply. Paper 40 (“Sur-Reply”).
`
`Patent Ownerfiled Observations on Cross Examination. Paper 50
`
`(“Obs.”). Petitioner filed a Response to Patent Owner’s Observations on
`Cross Examination. Paper 54 (“Response Obs.”). We have consideredfully
`
`both the Observations and Response to Observations in reachingthis Final
`
`Written Decision.
`
`Petitioner also filed a Motion to Exclude certain evidence. Paper 47
`
`(Pet. Mot. Exclude”). Patent Ownerfiled an Opposition to Petitioner’s
`Motion to Exclude. Paper 52 (“PO Opp.”). Petitioner also filed a Reply in
`support of its Motion to Exclude. Paper 56 (“Pet. Mot. Reply”). Patent
`Owneralso filed a Motion to Exclude certain evidence. Paper 46 (“PO Mot.
`
`Exclude”). Petitioner filed an Opposition to Patent Owner’s Motionto
`Exclude. Paper 53 (“Pet. Opp.”). Patent Ownerfiled a Reply in support of
`its Motion to Exclude. Paper 55 (“PO Mot. Reply”). An oral hearing was
`
`held on September 11, 2018. Paper 60 (“Tr.”).
`Weissue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons that follow, we determine Petitioner
`has not proven by a preponderanceofthe evidence that claims 1-26 of the
`’250 patent are unpatentable. See 35 U.S.C. § 316(€).
`
`I. BACKGROUND
`
`A. RELATED PROCEEDINGS
`
`Patent Ownerhasasserted infringementof the *250 patent in SRAM,
`LLC v. Race Face Performance Products et al., Case No. 1:16-cv-05262-
`JHL (N.D. Ill.). Paper 3, 4; Pet. 79. The ’250 patent was previously the
`subject of PGR2016-00043, which was denied. Paper3, 3; Pet. 80. The
`
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`’250 patent was subject to ex parte reexamination under Reexamination
`Control No. 90/013,747 (“the ’747 Reexamination’’), which resulted in the
`
`confirmation of patentability of original claims 1-13 and new claims 14-26.
`Paper3, 3; Pet. 80. The ’250 patent is currently undergoing ex parte
`reexamination proceedings under Reexamination Control No. 90/013,831
`(‘the ’831 Reexamination”), which wasinitiated on December 22, 2016.
`Paper 3, 3-4; Pet. 80. We stayed this reexamination on June4, 2018. See
`
`Paper32.
`The ’250 patent is one of a numberofrelated issued patents and
`pending applications. See Paper 3, 2. Oneof the related patents is US.
`Patent No. 9,182,027 B2 (“the 027 patent’’). The ’027 patent was subject to
`several interpartes reviews— (1) FOXFactory, Inc. v. SRAM, LLC, Case
`IPR2016-01876, (2) FOX Factory, Inc. v. SRAM, LLC, Case IPR2017-
`00118, and (3) FOX Factory, Inc. v. SRAM, LLC, Case IPR2017-00472
`(collectively, “the Related IPRs”)—where the Board instituted trial and
`issued final written decisions finding that the claims had. not been shownto
`
`be unpatentable. See Exs. 2150, 2151, 2152.
`
`B. 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
`a set of rear hub-mounted sprockets connected by a chain. Jd. at 1:11—13.
`According to the ’250 patent, the managementof chain and chainring
`engagementin bicycles is important, and various mechanismsare used to
`maintain the chain on the chainring and the sprockets, including chain
`
`
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`IPR2017-01440
`Patent 9,291,250 Cl
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`guards, chain tensioners, chain catchers, and derailleur configurations,
`
`among others.
`
`/d. 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 severe changes in chain tension and energy motion ofthe chain,
`
`especially when riding over rough terrain. Jd. at 1:17-23. Thus, the ’250
`
`patent asserts, more specifically, that it is directed to a solution for the
`problem of chain managementespecially for a bicycle that can successfully
`
`and reliably be ridden over challenging and roughterrain. Jd. at 1:30-32.
`
`Figure 3 of the ’250 patentillustrates a drive chain and chainring and
`
`is reproduced below.
`
`FIG. 3
`Figure 3, reproduced above,is an isometric view of a combineddrive
`
`chain and chainring accordingto the invention engaged bya drivetrain. Jd.
`at 2:24-25. Figure 3 showschainring 50 and conventional chain 10. Jd. at
`
`3:45-46. Crank or crank arm 48 attaches to chainring 50. Jd. at 3:48—-50.
`
`Force applied to crank arm 48 (typically, in a downwarddirection) causes
`
`
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`IPR2017-01440
`Patent 9,291,250 Cl
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`rotation of chainring 50 in a direction (clockwise). Jd. at 3:56-58. The
`rotation of chainring 50 causes chain 10 to be drawn over and advanced
`about the chainring. Jd. at 3:58-60.
`
`Asis illustrated in Figure 3, chainring 50 includesa plurality of teeth,
`
`includingfirst group of teeth 58 and second group ofteeth 60. Jd. at 3:61—
`
`67. Drive chain 10 includes outer chain links 12 and inner chain links 14.
`
`Id. at 2:65-67. First group ofteeth 58 is configured to be received by and
`fitted into the outer link spaces of drive chain 10, and second groupofteeth
`
`60 is configured to be received by andfitted into the innerlink spaces. Jd. at
`
`3:67-4:4. The engagementoffirst group of teeth 58 with the outer link
`spaces and of second group ofteeth with the inner link spacesis illustrated
`
`in Figure 6, reproduced below.
`
`
`
`FIG. 6
`Figure 6 showsa side view of the combined drive chain and chainring
`engaged by a drive chain with the outer link plates removed. Jd. at 2:29-31.
`
`The ’250 patent explains:
`
`
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`IPR2017-01440
`Patent 9,291,250 Cl
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`Eachofthe first group of teeth 58 may fill over about 75% ofthe
`distance D2 of a corresponding spacein the chain 10. Preferably,
`each ofthe first group of teeth 58 mayfill over about 80% of D2
`of a corresponding space in the chain 10. More preferably, each
`of the first group of teeth 58 mayfill over about 85% of D2 of a
`corresponding spacein the chain 10.
`
`Id. at 4:36-42.
`
`C. ILLUSTRATIVE CLAIM
`
`Claims 1 and 14, both apparatus claims, are the only independent
`
`claims of the ’250 patent. Claims 2-13 each depend from claim 1.
`
`Claims 15-26 each depend from claim 14. Claim1is illustrative ofthe
`
`for
`
`subject matter in this proceeding and is reproduced below.
`1. A bicycle chainring of a bicycle crankset
`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 adjacentthe periphery of the chainring;
`the plurality of teeth including a first group of teeth and
`a second groupofteeth, each ofthe 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 betweenthe first group of
`teeth,
`wherein the drive chain is a roller drive chain including
`alternating outer and.inner chain links defining outer
`and innerlink spaces, respectively;
`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 groupofteeth 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 ofthe first group of teeth
`
`
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`IPR2017-01440
`Patent 9,291,250 Cl
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`fills at least 80 percent of an axial distance defined by
`the outer link spaces.
`
`Td. at 6:51-7:4.
`D. INSTITUTED GROUNDS OF UNPATENTABILITY AND EVIDENCE RELIED UPON
`Weinstituted an inter partes review of the ’250 patentonall of the
`
`groundsof unpatentability asserted in the Petition. Inst. Dec, 23-24;
`
`Paper 29, 2.
`
`
`References|Basis__| Challenged Claims
`
`
`JP-Shimano? in view of Hattan*
`§ 103(a)
`
`
`Hattan in view of JP-Shimano
`§ 103(a)
`
`
`Petitioner also relies on Japanese Industrial Standard: Bicycles—
`Chainwheels and Cranks, D 9415-1993; Bicycles—Chains, D 9417-1993
`
`(Ex. 1025, collectively, “JIS”).
`Petitioner further relies upon the Declaration of Richard R. Neptune,
`Ph.D., dated May 16, 2017 (Ex. 1023, “Neptune Dec.”), the Declaration of
`Scott Ganaja, dated July 12, 2018 (“Ganaja Declaration,” Ex. 1031), and the
`Supplemental Declaration of Scott Ganaja, dated August 3, 2018
`
`(“Supplemental Ganaja Declaration,” Ex. 1054).
`Patent Ownerrelies upon the Declaration of Robert H. Sturges, Ph.D.,
`dated September 14, 2017 (Ex. 2002, “Sturges Declaration”), the Second
`Declaration of Robert H. Sturges, Ph.D., dated April 2, 2018 (“Second
`
`Sturges Declaration,” Ex. 2141), and the Third Declaration of Robert H.
`
`3 JP $56-42489, laid open Apr. 18, 1981 (Ex. 1006, “JP-Shimano”).
`Exhibit 1006 includes a foreign language document(pp. 1-10) anda
`certified English language translation of that document(pp. 11-18). We rely
`only on thelatter portion.
`4 U.S. Patent No. 3,375,022, iss. Mar. 26, 1968 (Ex. 1004, “Hattan”).
`
`8
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`IPR2017-01440
`Patent 9,291,250 Cl
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`Sturges, Ph.D., dated May 23, 2018 (“Third Sturges Declaration,” Ex. 2149).
`
`Patent Owneralso provides the Declaration of Ron Ritzler, dated September
`
`14, 2017 (‘First Ritzler Declaration,” Ex. 2004), the Declaration of Kevin F.
`
`Wesling, dated September 13, 2017 (“First Wesling Declaration,” Ex. 2118),
`
`the Declaration of Henrik Braedt, dated March 29, 2018 (“Braedt
`
`Declaration,” Ex. 2131), the Second Declaration of Kevin Wesling, dated
`
`March 29, 2018 (“Second Wesling Declaration,” Ex. 2139), and the Second
`
`Declaration of Ron Ritzler, dated March 29, 2018 (“Second Ritzler
`
`Declaration,” Ex. 2140).
`
`A.|CLAIM CONSTRUCTION
`
`Il. ANALYSIS
`
`Weinterpret claims in an unexpired patent using the “broadest
`
`reasonable construction in light of the specification of the patent in which
`
`[they] appear[ ].” 37 C.F.R. § 42.100(b). Anyspecial definition for a claim
`term mustbe set forth with reasonable clarity, deliberateness, and precision.
`
`In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). “Under a broadest
`
`reasonable interpretation, words of the claim must be given their plain
`
`meaning, unless such meaningis inconsistent with the specification and
`
`prosecution history.” Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062
`
`(Fed. Cir. 2016).
`
`Only those terms which are in controversy need be construed, and
`
`only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v.
`
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
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`“a maximum axial width about halfway between a rootcircle and a
`
`top land”
`
`Theparties’ dispute regarding this phrase centers on whetherthe
`
`phrase requires that the “maximum axial width”for the entire tooth be
`
`“halfway between a root circle and a top land,” or whether the “maximum
`
`axial width” is simply the maximum widthatthe pointidentified (“about
`
`half-way’) and not necessarily the maximum axial width for the entire tooth.
`
`See PO Resp. 33-34; Pet. Reply 8-11.
`
`Weagree with Petitioner that the disputed phrase does not define the
`
`maximum axial width for the entire tooth, but merely the maximum axial
`
`widthat the point indicated, i.e., “halfway betweena root circuit and a top
`
`land.” Beginning with the language ofthe claims, the plain language does
`not require that the “maximum axial width”at the halfway point on the tooth
`be the maximum width for the entire tooth. It simply indicates that the
`
`maximum atthe point indicated must meet a certain axial fill range. See
`
`Ex. 1001, 7:14. The Specification of the ’250 patent supports this reading.
`
`The discussion ofaxial fill in the Specification does not indicate whetherit
`
`must be the maximum overall, but simply describes the measurements at a
`
`certain point (the halfway point in the tooth). See id. at 4:13-31. Indeed, the
`Specification seemsto indicate that the shape at the base can bedifferent
`than the shape as you approachthe top, which suggests that the axial fill may
`
`not be consistent across the entire height of the tooth. See id. at 4:13-15
`(“each of the second group of teeth 60 has a shape whichin a cross sectional
`view is generally rectangular, particularly at or near the base or rootof the
`tooth”). Thus, we agree with Petitioner that this term indicates merely the
`maximumatthe halfway point, not the maximumfor the tooth overall.
`
`10
`
`
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`IPR2017-01440
`Patent 9,291,250 Cl
`
`Remaining Terms
`
`Wedeterminethat no other terms require express construction for
`
`purposesof this Final Written Decision.
`
`B.|LEVEL OF SKILL IN THE ART
`
`Petitioner asserts that a person of ordinary skill in theart, at the time
`
`of the effective filing date of the ’250 patent, “would have a skill level ofat
`least a bachelor’s degree in mechanical engineering and/orat least three to
`
`five years’ experience in the development and design of chain drive systems
`and componentsthereof.” Pet. 6 (citing Ex. 1023 { 15). Patent Owner
`contends that a person ofordinary skill would have a bachelor’s degree in
`mechanical engineering andat least one year of design experience with
`chainringsor related technologies. PO Resp. 10 n.3 (citing Ex. 2141
`{7 22, 23). Any difference between these two definitionsis insignificant to
`this analysis. On this record, however, we find Patent Owner’s definition of
`a person ofordinary skill in the art to be more persuasive given the well-
`developed,relatively simple nature ofthe art, and apply it for our analysis.
`C.|SCOPE AND CONTENT OF THE PRIOR ART
`
`Theinstituted grounds alleges that claims 1-26 of the ’250 patent are
`unpatentable as obvious over the combinations of Hattan in view of JP-
`Shimano and/or JP-Shimanoin view of Hattan. Pet. 10-79; Inst. Dec. 12—
`
`23; Paper 29, 2.
`
`1.
`
`Hattan (Ex. 1004)
`
`Hattan,titled “Drives for Bicycles,”relates to an improved pedal
`
`actuated drive for bicycles. Ex. 1004, 1:20—21. In particular, Hattan
`describesan elliptical main pedal driven sprocket wheel(i.e., chainring)
`carrying a correspondingly elliptical, and slightly oversized, deflectorat the
`
`il
`
`
`
`IPR2017-01440
`Patent 9,291,250 Cl
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`outer side of the sprocket wheel, with the teeth of the sprocket wheel having
`cammingsurfaces for camming an engaged chain laterally outwardly, while
`the deflector has a camming surface for deflecting the chain in an opposite
`
`laterally inward direction. Jd. at Abstract. Hattan explains that a “major
`object” of its inventionis to “provide improved and simplified meansfor
`preventing the chain from jumpingoff of the forward oblong sprocket wheel
`under any operating conditions.” Jd. at 1:64-67. Hattan further explains
`
`that “the cam surfaces on the deflector structure and the teeth will function
`
`together to compensate for any outof line condition.” Jd. at 2:25-26.
`Hattanstates that its sprocket wheel “will prevent the chain from ever
`
`jumpingoff the sprocket wheel.” Jd. at 2:34-35. Figure 2 of Hattan,
`reproduced below, showsthe sprocket wheel of Hattan.
`
` 3 .
`
`.coalVv
`
`12S223%
`
`Figure 2 is an enlargedside view ofthe oblong sprocket wheel and deflector
`element of Hattan’s invention, with the deflector elementpartially broken
`
`awayto revealthe teeth of the sprocket wheel. Jd. at 2:47-51. Hattan’s
`sprocket wheel includesa plurality of teeth (labeled 25 in Figure 2) formed
`
`12
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`
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`IPR2017-01440
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`aboutthe periphery of the sprocket wheel structure (labeled 21 in Figure 2).
`
`Id. at 3:15—23. Hattan explains that the shape ofthe teeth, on the sprocket
`
`wheel and the deflector structure, act to keep the chain in proper engagement
`
`with the sprocket wheel, regardless of the angle at which the chain
`
`approachesthe sprocket wheel. Jd. at 2:25-35. A side view ofthe sprocket
`
`wheel of Hattan, showing the teeth and deflector structure, is shown in
`
`Petitioner’s annotated version of Figure 4 of Hattan, reproduced below.
`
`Halfway Point
`
`Root Circle 4
`
`Pet. 63. Figure 4 of Hattan is an enlarged fragmentary section taken online
`4-4 of Figure 2, and this figure has been annotated by Petitioner to show a
`sprocket tooth in yellow and the deflector structure in blue. Jd. at 2:53—54.
`Hattan describes the shape of teeth 25 formed about the periphery ofthe
`
`sprocket wheel 21 as having a “‘short directly axially extending surface 38 at
`its outer extremity” and camming surfaces 37 designed to deflect the bicycle
`
`chain “outwardly” (i.e., away from the bicycle). Jd. at 2:18-35, 3:59-4:2.
`
`Hattan also discloses a “deflector” positioned farther from the bicycle than
`
`the sprocket wheel, and formed with camming surfaces designedto deflect
`the chain “inwardly”(i.e., toward the bicycle). Id. at 2:5—24, 3:24-37, 4:3—
`
`31.
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`Hattan describes preferred tooth dimensions for use with a 3/32 inch
`
`chain. Id. at 7:52-66. In particular, Hattan discloses that, for “‘a standard
`
`3/32 of an inch chain,” which corresponds to the spacing between the inner
`
`links of the chain (Ex. 1023 { 138), it is “preferred” that the axial thickness
`
`of the sprocketteeth “be between about..070 inch and .090 inch, desirably
`about .080 inch.” Ex. 1004, 7:52-66. Based on Hattan’s description ofits
`preferred thicknesses, the filled axial distance defined by the inner link
`
`spaces(i.e., “axial fill’) for an inner link space of 3/32 (0.09375) inches
`
`would be between 74.6% (dividing 0.070 by 0.09375) and 96% (dividing
`
`0.090 by 0.09375). Ex. 1023 J 138-142. Hattan’s “desirabl[e]” tooth
`width of 0.08 inches correspondsto an [axialfill] of about 85.3% (dividing
`
`0.08 by 0.09375). Ex. 1023 Ff 28, 138.
`
`2. JP-Shimano (Ex. 1006)
`JP-Shimanois a Japanese Utility Model Application, titled “Chain
`
`Gear for a Bicycle,” and describes a chain gear for a bicycle designed to
`reduce chain drop. Ex. 1006, 15:49-60, 15:78-86. JP-Shimanodiscloses a
`
`chainring for a bicycle with alternating wide and narrow teeth. Jd. at 15:55—
`
`60, 15:78-86, 15:108-115, Figs 1-2. JP-Shimanodescribes a chainring
`
`having “a plurality of teeth provided circumferentially on an outer periphery
`of the gear main body.” Jd. at 15:64-67. Figure 1 of JP-Shimano,as
`
`annotated by the Petitioner, is reproduced below.
`
`14
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`Neat
`
`First Group 10.1
`
`op oma Second Group
`
`Pet. 61. Figure 1, as annotated by Petitioner, shows an embodimentofthe
`
`chainring of JP-Shimano.
`
`/d. at 16:134-135. Figure 1 showsalternating
`
`wide and narrow teeth (teeth 22 and 23 respectively (labeled first group and
`
`second group byPetitioner)). Jd. at 16:99-106. Figure 2 of JP-Shimano,as
`
`annotated by the Petitioner, is reproduced below.
`
`Second Group
`FIG. 2
`First Group
`
`.
`
`OuterLink Space
`
`Inner Link Space
`P
`
`Pet. 62. Figure 2, as annotated by Petitioner, shows teeth 22 and 23
`engaging the bicycle chain. Jd. JP-Shimanonotes that wider teeth 22 may
`be wider than or equal to the space betweeninnerlink plates 31, and the
`
`thickness of wider teeth 22 is greater than narrower teeth 23, such that wider
`
`teeth 22 engage the chain betweenouter chain link plates 32.
`
`Id. at 16:99-115. JP-Shimano summarizesits device as:
`
`15
`
`
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`IPR2017-01440
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`The present device focuses on the fact that spaces between the
`outer link plates in the chain become wider than the spaces
`between the innerlink plates, and .
`.
`. is configured to eliminate
`dropping ofthe chain from betweentheouterlink plates, and also
`to enhance durability. The present device accomplishes this by
`setting one specific tooth as a standard, from amongtheplurality
`of teeth provided circumferentially on the outer periphery ofthe
`gear main body, and by forming the thickness of the even-
`numbered teeth smaller than the spaces between the outer link
`plates of the chain, but greater than other teeth that engage
`between the inner link plates, so that the teeth with the greater
`thickness engage betweenthe outerlink plates.
`
`Ex. 1006, 15:78-86.
`
`3. JIS (Ex. 1025)
`
`JIS is a Japanese Industrial Standard for chainwheels and cranks used
`
`mainly for bicycles for general use and bicycles for young children.
`Ex. 1025, 1.° JIS describes the dimensions of a chainwheel,i.e., chainring,
`
`and the teeth of the chainwheel for a 3/32 inch chain. Ex. 1025, 6.
`
`Specifically, JIS describes a chainwheel with a tooth thickness of 2.1 mm for
`a 3/32 inch chain. Jd. at 6. Figure 4 ofJIS is reproducedbelow.
`
`> JIS is not part of any oftheinstituted grounds, butis relied on by Petitioner
`as evidenceofaxialfills in the art. Becauseit is helpful in understanding
`Petitioner’s arguments to describe the disclosure of JIS, we do so here.
`® Wecite to the numbersPetitioner provides on Exhibit 1025, notto the
`numbersoriginally providedin JIS.
`
`16
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`IPR2017-01440
`Patent 9,291,250 Cl
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`Attached Wig. 4. Dimensions of chainwheet
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`(a) Teeth
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`Uniti vam
`(b} Tooth thickness
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`fifeaonnenen arnt SLBmenemngth
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`Tooth thickens==
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`Figure 4 of JIS showsthe configuration and dimensions for a chainwheelfor
`use with a 3/32 inch chain. Jd. at 6. JIS explains the “[i]nside width of
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`inside link” (the innerlink space) of a 3/32 inch chain as 2.38 mm. Jd.at 7;
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`Ex. 1023 § 29. Theratio of the disclosed tooth width to the inner link space
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`of a 3/32 inch chain, 2.1/2.38, yields an axialfill of 88%. Ex. 1023 4 29.
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`D.
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`DIFFERENCES BETWEEN THE PRIOR ART AND THE CLAIMED INVENTION
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`1. Hattan in view ofJP-Shimano
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`a. Claim Limitations
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`With respect to independentclaim 1, Petitioner contends that Hattan
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`discloses: (1) “[a] bicycle chainring of a bicycle crankset for engagement
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`with a drive train, comprising,” Pet. 56 (citing Ex. 1004, Abstract, 2:65—
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`3:23, 4:32-46, 7:67-8:17, Figs. 14a; Ex. 1023 § 123); (2) “a plurality of
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`teeth extending from a periphery of the chainring wherein roots of the
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`17
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`IPR2017-01440
`Patent 9,291,250 Cl
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`plurality of teeth are disposed adjacent the periphery of the chainring,”id. at
`56-57 (citing Ex. 1004, Abstract, 2:9-24, 2:47-50, 3:10-23, 7:67-8:17,
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`Figs. 1, 2, 4; Ex. 1023 JJ 124, 125); and (3) “wherein the drive chain is a
`roller drive chain including alternating outer and inner chain links defining
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`outer and inner link spaces, respectively,” id. at 60 (citing Ex. 1004,
`Abstract, 2:9-41, 2:65—3:9, 4:32-61, Figs. 1, 4, 6; Ex. 1023 { 130).
`Petitioner further asserts that JP-Shimanoaccountsfor (1) “the
`
`plurality of teeth includingafirst group of teeth and a second group of
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`teeth,” id. at 57-58 (citing Ex. 1006, 15:55-60, 15:78-86, 16:99-117;
`Ex. 1023 4 126); (2) “each of thefirst group of teeth wider than eachofthe
`second group ofteeth,” id. at 58 (citing Ex. 1006, 15:31—-86, 16:99-117,
`Figs. 1-2; Ex. 1023 { 127); (3) “at least some of the second group ofteeth
`arranged alternatingly and adjacently between thefirst group of teeth,”id. at
`58-59 (citing Ex. 1006, 16:99-117, Figs. 1-2; Ex. 1023 {J 128, 129); (4)
`“wherein the drive chain is a roller drive chain including alternating outer
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`and inner chain links defining outer and inner link spaces, respectively,”id.
`at 60 (citing Ex. 1006, 16:99-106; Ex. 1023 § 131); and (5) “wherein each
`of the first group of teeth is sized and shaped tofit within one of the outer
`link spaces and each of the second groupofteeth is sized and shapedto fit
`within one of the inner link spaces,” id. at 61 (citing Ex. 1006, 15:55-60,
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`15:78-86, 16:99-108, Figs. 1, 2; Ex. 1023 fj 132, 133). Petitioner also
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`asserts that JP-Shimanoalso discloses a chainring being used witharoller
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`drive train. See Pet. 60 (citing Ex. 1006, 16:99-106; Ex. 1023 4 131).
`
`Petitioner also argues that that the combined teachings of Hattan in
`
`view of JP-Shimano would have accounted forthe limitation “wherein a
`maximum axial width about halfway betweena rootcircle and a top land of
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`18
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`IPR2017-01440
`Patent 9,291,250 Cl
`
`the first group of teeth fills at least 80 percent of an axial distance defined by
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`the outer link spaces.” Pet. 62-68 (citing Ex. 1004, 1:10—-17, 2:18-35, 3:59-
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`4:2, 7:52-66, Fig. 4; Ex. 1006, 16:108-115; Ex. 1023 4] 134-149;
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`Ex. 1025, 6, 7).
`
`Petitioner asserts that “[m]odifying Hattan’s chainring to have the
`
`narrow/wide teeth profile of JP-Shimano wouldyield [axial fill] ratios for
`the first group ofteeth (i.e., wide teeth) above 85% ofthe outer link spaces,
`thereby rendering obvious[this] claim limitation.” Jd. at 62. In particular,
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`Petitioner contends that given Hattan’s and JIS’s teachings regarding their
`
`preferred chain size, and axial thicknessofits sprocket teeth, that a person of
`
`ordinary skill would understand that “[i]t would have been obviousto a
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`POSITAto maintain this same [axialfill] teaching for J/P-Shimano’s wide
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`teeth fitting into the outer link spaces in order to improve chain retention on
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`the chainring.” /d. (citing Ex. 1023 J 138, 141, 142). Further, Petitioner
`
`explains why a personofordinary skill would have understoodthat Hattan’s
`teachings apply at the half-way point of the tooth, as required by the claim
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`language.
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`/d. at 62-64 (citing Ex. 1023 4 139, 140, 143). ‘Petitioner also .
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`cites JIS as demonstrating that such an axialfill for chainring teeth was
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`knownin the art. See id. at 64-65 (citing Ex. 1023 ff 141, 142, 144, 145).
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`Petitioner also argues that the determination of optimum or workable
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`ranges ofa result-effective variable is within the grasp of a POSITA. Jd. at
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`66. Petitioner submits that because Hattan discloses an overlapping range
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`(of about 74.6% to about 96%), and becauseaxialfill is a result-effective
`variable, further optimization to arrive at the “at least 85 percent” valueis a
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`matter of routine experimentation, not innovation.
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`/d. Moreover, Petitioner
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`argues that the ’250 patent does notdisclose that the at least 85% axialfill
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`19
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`IPR2017-01440
`Patent 9,291,250 Cl .
`
`measured halfway between the rootcircle and the top landis “critical” or
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`that it produces “unexpectedresults.” Instead, Petitioner asserts thatit
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`would have been obvious to a POSITAto use the same “at least 85 percent”
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`axialfill for the outer link spaces to similarly improve chain retention. Id.
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`(citing Ex. 1023 4 147).
`Additionally, Petitioner identifies disclosure, in JP-Shimano,thatit is
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`important for the first group of teeth to fill the outer link spaces. Jd. at 66—
`67 (citing Ex. 1006, 15:108-113; Ex. 1023 {] 137, 147). Thus, Petitioner
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`submits that “a POSITA would understand that JP-Shimano’s wideteeth 22
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`should be wide enough to match or conform to the axial width of the outer
`link spaces, which would include a tooth thickness Ofat least 85% of the
`outer link space.” Jd. at 67 (citing Ex. 1023 4 137, 147).
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`Petitioner further asserts that Hattan in view of JP-Shimano accounts
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`for the limitations of claims 2-26. Pet. 62-79.
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`The only limitation that Patent Ownerdisputes is whether Hattan or
`JP-Shimanoteach or suggest the claimedaxialfill for the first group of
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`teeth. PO Resp. 11-31. However,the parties agree that neither Hattan nor
`JP-Shimanoindividually teach this limitation. See Pet. 62-68. Instead,
`Petitioner relies on the combination as modified as teaching or suggesting
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`this limitation. Jd. Patent Owner’s arguments attack the reasoningfor this
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`combination, not whether the combination accounts for the limitation, so we
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`determinethat Petitioner’s reasoning, if accepted, would adequately account
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`for the limitation, and address Patent Owner’s arguments below in our
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`discussion of the motivation to combine and reasons to modify.
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`20
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`IPR2017-01440
`Patent 9,291,250 Cl
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`b. Motivation to Combine and Reasons to Modify
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`Petitioner presents several arguments for why a person of ordinary
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`skill would have combined Hattan and JP-Shimanoin the asserted manner.
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`Id. at 52-55, 65-68. Petitioner asserts that a person of ordinary skill would
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`have been motivated to ensure that the chain remained engaged with the
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`chainringat all time—a motivation that both JP-Shimano and Hattan teach.
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`Id. at 52-53 (citing Ex. 1023 { 103; Ex. 1004, 1:64-67, 2:25—35, 5:69-6:2;
`Ex. 1006, 15:73-86, 16:122—130). In particular, Petitioner contendsthat a
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`person ofordinary skill in the art would have combinedthe offset-teeth
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`sprocket wheel/deflector of Hattan with the alternating narrow and wide
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`teeth of JP-Shimanoin order to “improve chain engagementandretention to
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`the maximum extent possible, particularly for a solitary front chainring such
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`as in Hattan....” Id. at 53 (citing Ex. 1023 fj 104-109, 111-115).
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`Petitioner arguesthat “[s]uch a combination would provide the chain
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`engagementandretention benefits offered by both devices, and would not
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`require modifying the structure of the Hattan apparatus beyond merely
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`configuring its angled, offset sprocket wheel teeth to alternate between
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`narrow and wideprofiles.” Jd. at 54 (citing Ex. 1023 4 109). Petitioner
`contends that such a modification would have merely been the combination
`of familiar elements according to known methods to do no morethanyield
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`predictable results. Jd. at 55 (citing KSR Int’] Co. v. Teleflex Inc., 550 U.S.
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`398, 416 (2007)).
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`Patent Ownerraises several arguments. First, Patent Owner argues
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`that a person ofordinary skill would not have applied the dimensions of
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`Hattan to outer link spaces, as Petitioner contends. PO Resp. 11—23. Patent
`Ownerfurther argues that a person of ordinary skill would not have been
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`21
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`IPR2017-01440
`Patent 9,291,250 Cl
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`motivated to modify Hattan’s teeth to include alternating wide and narrow
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`teeth, because such an alteration would have adversely affected the operation
`of Hattan’s device. Jd. at 18-19. Patent Ownerarguesthat in view of such
`detrimental effects, Dr. Neptune’s conclusory testimony cannotsatisfy
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`Petitioner’s burden of showingthat a person of ordinary skill would have
`been motivated to modify Hattan to have alternating wide and narrow teeth
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`of the dimensions claimed. Jd. at 22-26.
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`Weagree with Patent Ownerthat Petitioner has failed to show
`sufficiently that a person ofordinary skill would have been motivated to
`modify Hattan in view of JP-Shimanoin the manner suggested. Petitioner's
`reasoning to modify Hattan in view of JP-Shimano, to have alternating wide
`and narrow teeth, consists of the contention that a person of ordinary skill
`would have sought to improve chain engagementandretention by
`combining known methodsof doing so to improve chain engagement and
`retention to the maximum extentpossible. Pet. 19, 53; Ex. 1023 ff 104—
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`115. However, neither Petitioner nor Dr. Neptune provide any support
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