`
`Paper No.
`Filed: February 7, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`a
`
`SS &
`0 7 Sy
`
`
`
`~ 2
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`
`FOX FACTORY,INC.,
`Petitioner,
`
`V.
`
`SRAM, LLC,
`Patent Owncr.
`
`Case IPR2017-01440
`U.S. Patent No. 9,291,250
`
`re
`
`PETITIONER’S NOTICE OF APPEAL
`
`via E2E
`Patent Trial and Appeal Board
`
`via Hand Delivery
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel, 10B20
`Madison Building East
`600 Dulany Street
`Alexandria, VA 22314
`
`via CM/ECF
`United States Court of Appeals for the Federal Circuit
`
`
`
`Case IPR2017-01440
`Patent 9,291,250
`
`Pursuant to 35 U.S.C. §§ 141 and 142, and 37 C-F.R. §§ 90.2 and 90.3,
`
`Petitioner FOX Factory, Inc., hereby provides notice that it appeals to the United
`States Court of Appeals for the Federal Circuit from the Final Written Decision
`
`entered December 6, 2018 (Paper 62) and from all underlying orders, decisions,
`
`rulings, and opinions regarding U.S. Patent No. 9,291,250 (‘the ’250 patent’’) in
`
`IPR2017-01440.
`
`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), the issues on appeal include,
`
`but are not limited to: the Board’s failure to find that claims 1-26 of the ’250 patent
`
`are unpatentable under 35 U.S.C. § 103 as obvious over the combination of JP-
`
`Shimano in view of Hattan, or the combination of Hattan in view of JP-Shimano,
`including and without limitation: (1) the Board’s misapplication of the law of
`
`presumption of nexus
`
`for
`
`secondary considerations and grant of such a
`
`presumption to the claimed invention;
`
`(2) the Board’s misapplication of the
`
`standard for rebuttal of a presumption of nexus andits finding (under an incorrect
`
`standard) that Petitioner has not sutticiently rebutted the presumption of nexus; (3)
`
`the Board’s failure to balance the merits of Petitioner’s prima facie obviousness
`
`showing with the findings of secondary considerations and giving undue weight to
`the secondary considerations findings; (4) the Board’s misapplication ofthe law of
`routine experimentation and optimization and its failure to find prima facie
`
`obviousness;
`
`(5)
`
`the Board’s failure to give appropriate weight
`
`to evidence,
`
`2
`
`
`
`Case IPR2017-01440
`Patent 9,291,250
`arguments, and/or theories articulated in Petitioner’s Reply in violation of the
`
`Administrative Procedure Act; and 6) any finding or determination supporting or
`
`relating to the issues identified in points (1)-(5), as well as all other issues decided
`adversely to FOX Factory, Inc. in any order, decision, ruling, or opinion by the
`
`Patent Trial and Appeal Board in IPR2017-01440.
`
`Pursuant to 35 U.S.C. § 142 and 37 C.F.R. § 90.2(a), this Notice is being
`
`filed with the Director of the United States Patent and Trademark Office, and a
`
`copy of this Notice is being concurrently filed with the Patent Trial and Appeal
`
`Board.In addition, a copy ofthis Notice along with the required docketing fees are
`
`being filed with the Clerk’s Office for the United States Court of Appeals for the
`
`Federal Circuit via CM/ECF.
`
`Date: February 7, 2019
`
`Respectfully submitted,
`
`/Joshua L. Goldberg/
`Joshua L. Goldberg,
`Reg. No. 59,369
`
`Counselfor FOX Factory, Inc.
`
`
`
`CERTIFICATE OF SERVICE
`
`Case IPR2017-01440
`Patent 9,291,250
`
`I hereby certify that on this 7 day of February, 2019, a true and correct
`
`copy of the foregoing “PETITIONER’S NOTICE OF APPEAL”wasfiled by
`
`hand with the Director of the United States Patent and Trademark Office, at the
`
`following address:
`
`Director of the United States Patent and
`Trademark Office
`c/o Office of the General Counsel, 10B20
`Madison Building East
`600 Dulany Street
`Alexandria, VA 22314
`
`I also hereby certify that on this 7" day of February, 2019, a true and correct
`
`copy of the foregoing “PETITIONER’S NOTICE OF APPEAL,”andthe filing
`
`fee, were filed with the Clerk’s Office of the United States Court of Appeals for
`
`the Federal Circuit, via CM/ECF.
`
`1 also hereby certify that a true and correct copy of the foregoing
`
`“PETITIONER’S NOTICE OF APPEAL”wasservedby electronic mail on this
`
`7* day of February, 201Y, on counsel ofrecord tor the Patent Owneras follows:
`
`Michael J. Hickey
`Kirk A. Damman
`Renjamin J. Siders
`Richard B. Walsh,Jr.
`Email: mhickey@lewisrice.com
`Email: kdamman@lewisricc.com
`Email: bsiders@lewisrice.com
`Email: rwalsh@lewisrice.com
`
`
`
`Case IPR2017-01440
`Patent 9,291,250
`
`Patent Ownerhas agreedto electronic service.
`
`Dated: February 7, 2019
`
`By: /Lauren K. Young/
`Lauren K. Young
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`
`
`
`Trials@uspto.gov
`571.272.7822
`
`Paper No. 62
`Filed: December6, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FOX FACTORY,INC.,
`Petitioner,
`
`Vv.
`
`SRAM,LLC,
`Patent Owner.
`
`Case [PR2017-01440
`Patent 9,291,250 Cl
`
`Before MICHAEL W. KIM, FRANCESL. IPPOLITO, and
`KEVIN W. CHERRY,Administrative Patent Judges.
`
`CHERRY, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 CER. § 42.73
`
`
`
`IPR2017-01440
`Patent 9,291,250 Cl
`
`Fox Factory, Inc. (“Petitioner”) filed a Petition requesting an inter
`
`partes review of claims 1—26 of U.S. Patent No. 9,291,250 C1 (Ex. 1001,
`
`“the ?250 patent”). Paper 2 (“‘Petition” or “Pet.”). Pursuant to 35 U.S.C.
`
`§ 314(a), we determined the Petition showed a reasonable likelihood that
`
`Petitioner would prevail in establishing the unpatentability of claims 1-26,
`
`andinstituted an inter partes review of these claims on oneof the two
`
`asserted grounds of unpatentability. Paper 8 (“Inst. Dec.”). On April 24,
`
`2018, the Supreme Court held that a decision to institute under 35 U.S.C.
`
`§ 318(a) maynotinstitute on less than all claims challengedin the petition.
`
`SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018). Following the
`
`Supreme Court’s decision in SAS, the Office issued guidance that the Board
`
`would now institute on all challenges and would supplementanyinstitution
`
`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
`
`ground of unpatentability asserted in the Petition that we had notoriginally
`
`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.
`* 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 arguments in
`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
`
`
`
`IPR2017-01440
`Patent 9,291,250 Cl
`
`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 considered fully
`both the Observations and Response to Observations in reaching this 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
`Owneralsofiled a Motion to Exclude certain evidence. Paper 46 (“PO Mot.
`
`Exclude”). Petitioner filed an Opposition to Patent Owner’s Motion to
`
`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(e).
`
`I. BACKGROUND
`
`A. RELATED PROCEEDINGS
`
`Patent Ownerhasasserted infringement of the ’250 patent in SRAM,
`LLC y. Race Face Performance Products et al.,Case No. 1:16-cv-05262-
`
`JHL (N.D. UL.). Paper 3, 4; Pet. 79. The ’250 patent was previously the
`
`subject of PGR2016-00043, which was denied. Paper 3, 3; Pet. 80. The
`
`
`
`IPR2017-01440
`Patent 9,291,250 Cl
`
`’250 patent was subject to ex parte reexamination under Recxamination
`
`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.
`
`Paper 3, 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 December22, 2016.
`
`Paper 3, 3-4; Pet. 80. Westayed this reexamination on June 4, 2018. See
`
`Paper 32.
`
`The ’250 patent is one of a numberofrelated issued patents and
`
`pending applications. See Paper 3, 2. One ofthe related patents is U.S.
`
`Patent No. 9,182,027 B2 (“the *°027 patent”). The ’027 patent was subject to
`
`several inter partes reviews— (1) FOXFactory, Inc. v. SRAM, LLC, Case
`IPR2016-01876, (2) FiOXFactory, Inc. v. SRAM, LLC, Case IPR2017-
`
`00118, and (3) FOX Factory, Inc. v. SRAM, LLC, Case IPR2017-00472
`
`(collectively, “the Related IPRs”)}—where the Boardinstituted 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 moreparticularly,
`
`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.
`/d. at 1:11—13.
`According to the ’250 patent, the management of chain and chainring
`
`engagementin bicycles is important, and various mechanismsare used to
`
`maintain the chain on the chainring andthe sprockets, including chain
`
`
`
`IPR2017-01440
`Patent 9,291,250 Cl
`
`guards, chain tensioners, chain catchers, and derailleur configurations,
`
`amongothers. Jd. at 1:13-19.
`
`The ’250 patent explains that managing the connection between the
`
`chain and the chainringis particularly difficult in geared bicycles, which can
`
`experience severe changes in chain tension and energy motion of the chain,
`
`especially when riding over rough terrain.
`
`/d. 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 combined drive
`
`chain and chainring accordingto the invention engagedbyadrivetrain. Jd.
`at 2:24-25. Figure 3 shows chainring 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 downward direction) causes
`
`
`
`IPR2017-01440
`Patent 9,291,250 Cl
`
`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.
`
`Asisillustrated in Figure 3, chainring 50 includesa plurality of teeth,
`
`includingfirst group of teeth 58 and second group of teeth 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 of teeth 58 is configured to be received by and
`
`fitted into the outer link spaces of drive chain 10, and second group ofteeth
`
`60 is configured to be received by andfitted into the innerlink spaces. Id. 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 combineddrive chain and chainring
`
`engaged bya drive chain with the outer link plates removed. Jd. at 2:29-31.
`
`The *250 patent explains:
`
`
`
`IPR2017-01440
`Patent 9,291,250 Cl
`
`Eachofthefirst group of teeth 58 may fill over about 75% ofthe
`distance D2 of a corresponding space in the chain 10. Preferably,
`each ofthe first group of teeth 58 may fill 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 space in the chain 10.
`
`Id. at 4:36—42.
`
`C. ILLUSTRATIVE CLAIM
`Claims | 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 of the
`
`subject matter in this proceeding andis reproduced below.
`
`{. A bicycle chainring of a bicycle crankset
`engagementwith a drive chain, comprising:
`
`for
`
`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 groupofteeth, each ofthe first group of teeth
`wider than each of the second groupof teeth; and
`
`at
`
`least some of the second group of teeth arranged.
`alternatingly and adjacently betweenthefirst 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
`
`
`
`IPR2017-01440
`Patent 9,291,250 Cl
`
`fills at least 80 percent of an axial distance defined by
`the outer link spaces.
`
`.
`
`Id. at 6:51—7:4.
`
`D. INSTITUTED GROUNDS OF UNPATENTABILITY AND EVIDENCE RELIED UPON
`
`Weinstituted an inter partes review of the ’250 patent onall 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) and a
`certified English languagetranslation of that document(pp. 11-18). Werely
`only on the latter portion.
`* U.S. Patent No. 3,375,022,iss. Mar. 26, 1968 (Ex. 1004, “Hattan”).
`
`8
`
`
`
`IPR2017-01440
`Patent 9,291,250 Cl
`
`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).
`|
`
`3
`
`Il. ANALYSIS
`
`A.
`
`CLAIM CONSTRUCTION
`
`Weinterpret claims in an unexpired patent using the “broadest
`reasonable construction in light ofthe specification ofthe patent in which
`[they] appear[ ].” 37 C.F.R. § 42.100(b). Any special definition for a claim
`
`term must be set forth with reasonable clarity, deliberateness, and precision.
`
`Inre Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). “Under a broadest
`
`reasonable interpretation, words of the claim must be giventheir 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).
`
`
`
`IPR2017-01440
`Patent 9,291,250 Cl
`
`“a maximum axial width about halfway between a rootcircle and a
`
`top land”’
`
`The parties’ 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 widthat the point identified (“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
`
`width at the point indicated, i.e., “halfway between a 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 at the 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 be different
`
`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 ofteeth 60 has a shape which in a crosssectional
`
`view is generally rectangular, particularly at or near the base or root of the
`
`tooth”). Thus, we agree with Petitioner that this term, indicates merely the
`
`maximum at the halfway point, not the maximum for the tooth overall.
`
`10
`
`
`
`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 the art, at the time
`of the effective filing date of the ’250 patent, “would have a skill level of at
`
`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 components thereof.” Pet. 6 (citing Ex. 1023 4 15). Patent Owner
`contends that a person of ordinary skill would have a bachelor’s degree in
`mechanical engineering and at least one year of design experience with
`
`chainringsor related technologies. PO Resp. 10 n.3 (citing Ex. 2141
`
`J 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 of ordinary skill in the art to be more persuasive given the well-
`developed, relatively simple nature of the art, and apply it for our analysis.
`
`C.|SCOPE AND CONTENTOF THE PRIOR ART
`
`The instituted 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
`describes an elliptical main pedal driven sprocket wheel(i.e., chainring)
`carrying a correspondinglyelliptical, and slightly oversized, deflector at the
`
`11
`
`
`
`IPR2017-01440
`Patent 9,291,250 Cl
`
`outerside of the sprocket wheel, with the teeth of the sprocket wheel having
`
`camming surfaces for camming an engagedchain 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 invention is 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 out of line condition.” Jd. at 2:25—26.
`
`Hattan states that its sprocket wheel “will prevent the chain from ever
`
`jumping off the sprocket wheel.” Jd. at 2:34-35. Figure 2 of Hattan,
`
`reproduced below, showsthe sprocket wheel of Hattan.
`
`Figure 2 is an enlarged side view of the oblong sprocket wheel and deflector
`
`element of Hattan’s invention, with the deflector elementpartially broken
`
`away to reveal the 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
`
`
`
`IPR2017-01440
`Patent 9,291,250 Cl
`
`about the periphery of the sprocket whcelstructure (labeled 21 in Figure 2).
`
`Id. at 3:15—23. Hattan explains that the shape of the 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. Id. 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
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`Pet. 63. Figure 4 of Hattan is an enlarged fragmentary section taken on line
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`4-4 of Figure 2, and this figure has been annotated by Petitioner to show a
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`sprocket tooth in yellow andthe deflector structure in blue. Jd. at 2:53-54.
`Hattan describes the shapeofteeth 25 formed aboutthe periphery of the
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`sprocket wheel 21 as having a “short directly axially extending surface 38 at
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`its outer extremity” and camming surfaces 37 designed to deflect the bicycle
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`chain “outwardly”(i.e., away from the bicycle). Jd. at 2:18-35, 3:59-4:2.
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`Hattan also discloses a “deflector” positioned farther from the bicycle than
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`the sprocket wheel, and formed with cammingsurfaces designed to deflect
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`the chain “inwardly”(i.e., toward the bicycle). Jd. at 2:5—24, 3:24-37, 4:3—
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`31.
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`13
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`IPR2017-01440
`Patent 9,291,250 Cl
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`Hattan describes preferred tooth dimensionsfor use with a 3/32 inch
`chain. Jd. at 7:52-66. In particular, Hattan discloses that, for “a standard
`3/32 of an inch chain,” which correspondsto the spacing between the inner
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`links of the chain (Ex. 1023 § 138),it is “preferred” that the axial thickness
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`of the sprocket teeth “be between about .070 inch and .090 inch, desirably
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`about .080 inch.” Ex. 1004, 7:52-66. Based on Hattan’s description ofits
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`preferred thicknesses,the filled axial distance defined by the innerlink
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`spaces(i.e., “axial fill’) for an inner link space of 3/32 (0.09375) inches
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`would be between 74.6% (dividing 0.070 by 0.09375) and 96% (dividing
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`0.090 by 0.09375). Ex. 1023 J 138-142. Hattan’s “desirabl[e]” tooth
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`width of 0.08 inches correspondsto an [axial fill] of about 85.3% (dividing
`
`0.08 by 0.09375). Ex. 1023 ff 28, 138.
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`2. JP-Shimano (Ex. 1006)
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`JP-Shimanois a Japanese Utility Model Application,titled “Chain
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`Gear for a Bicycle,” and describes a chain gear for a bicycle designed to
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`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
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`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.
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`14
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`IPR2017-01440
`Patent 9,291,250 Cl
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`|
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`NX
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`.
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`|
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`>
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`First Group F641
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`Pet. 61. Figure 1, as annotated by Petitioner, shows an embodimentofthe
`
`chainring of JP-Shimano. 7d. at 16:134—-135. Figure 1 showsalternating
`
`wide and narrow teeth (teeth 22 and 23 respectively (labeled first group and
`second group by Petitioner)). Jd. at 16:99-106. Figure 2 of JP-Shimano,as
`annotated by the Petitioner, is reproduced below.
`
`FIG. 2
`First Group
`
`Second Group
`
`;
`
`Outer Link Space
`
`inner Link Space
`
`Pet. 62. Figure 2, as annotated by Petitioner, shows teeth 22 and 23
`
`engaging the bicycle chain. Jd. JP-Shimanonotesthat wider teeth 22 may
`
`be wider thanor equal to the space between innerlink plates 31, and the
`
`thickness of widerteeth 22 is greater than narrower teeth 23, such that wider
`
`teeth 22 engage the chain between outer chain link plates 32.
`
`Id. at 16:99-115. JP-Shimano summarizes its device as:
`
`15
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`IPR2017-01440
`Patent 9,291,250 Cl
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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 of the chain from betweenthe outerlink plates, and also
`to enhance durability. The present device accomplishes this by
`setting one specific tooth as a standard, from amongthe plurality
`of teeth provided circumferentially on the outer periphery of the
`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, 1.6 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.
`
`/d. at 6. Figure 4 of JIS is reproduced below.
`
`° JIS is not part of any ofthe instituted grounds, butis relied on by Petitioner
`as evidenceofaxial fills 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, not to the
`numbersoriginally provided in JIS.
`
`16
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`IPR2017-01440
`Patent 9,291,250 Cl
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`Attached Fig. 4. Uluensions af chainwheel
`
`Unit; mm
`
`(a) Teeth
`
`tb} Looth thicknoss
`
`
`Tolh thick ars
`dusiynation
`
`
`
`Figure 4 of JIS shows the configuration and dimensionsfor a chainwheel for
`
`use with a 3/32 inch chain. Jd. at 6. JIS explains the “[i]nside width of
`
`inside link” (the inner link space) of a 3/32 inch chain as 2.38 mm.
`
`/d. at 7;
`
`Ex. 1023 ¢ 29. The ratio of the disclosed tooth width to the inner link space
`of a 3/32 inch chain, 2.1/2.38, yields an axial fill of 88%. Ex. 1023
`29.
`
`D.
`
`DIFFERENCES BETWEEN THE PRIOR ART AND THE CLAIMED INVENTION
`
`|
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`1. Hattan in view ofJP-Shimano
`
`a. Claim Limitations
`
`With respect to independent claim 1, Petitioner contends that Hattan
`
`discloses: (1) “[a] bicycle chainring of a bicycle crankset for engagement
`
`with a drive train, comprising,” Pet. 56 (citing Ex. 1004, Abstract, 2:65—
`
`3:23, 4:32-46, 7:67-8:17, Figs. 14a; Ex. 1023 § 123); (2) “a plurality of
`
`teeth extending from a periphery of the chainring wherein roots of the
`
`‘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,
`
`Figs. 1, 2, 4; Ex. 1023 JJ 124, 125); and (3) “wherein the drive chain is a
`
`roller drive chain includingalternating outer and inner chain links defining
`
`outer and innerlink 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-Shimano accounts for (1) “the
`
`plurality of teeth including a first group of teeth and a second group of
`
`teeth,” id. at 57-58 (citing Ex. 1006, 15:55-60, 15:78-86, 16:99-117;
`
`Ex. 1023 ¥ 126); (2) “each ofthe first group of teeth wider than each ofthe
`
`second group of teeth,” id. at 58 (citing Ex. 1006, 15:81-86, 16:99-117,
`
`Figs. 1-2; Ex. 1023
`
`127); (3) “at least some of the second groupofteeth
`
`arranged alternatingly and adjacently betweenthe first group of teeth,” id. at
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`58-59 (citing Ex. 1006, 16:99-117, Figs. 1-2; Ex. 1023 Jf 128, 129); (4)
`
`“wherein the drive chain is a roller drive chain including alternating outer
`
`and inner chain links defining outer and innerlink 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 shapedto fit within one of the outer
`
`link spaces and each of the second groupofteeth is sized and shapedtofit
`
`within one of the innerlink spaces,” id. at 61 (citing Ex. 1006, 15:55—60,
`
`15:78-86, 16:99-108, Figs. 1, 2; Ex. 1023 9 132, 133). Petitioner also
`
`asserts that JP-Shimanoalso discloses a chainring being used witharoller
`
`drive train. See Pet. 60 (citing Ex. 1006, 16:99-106; Ex. 1023
`
`131).
`
`Petitioner also argues that that the combined teachings of Hattan in
`
`view of JP-Shimano would have accounted for the limitation “wherein a
`
`maximum axial width about halfway between a root circle and a top land of
`
`18
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`IPR2017-01440
`Patent 9,291,250 Cl
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`the first group ofteeth fills at least 80 percent of an axial distance defined by
`
`the outer link spaces.” Pet. 62-68 (citing Ex. 1004, 1:10—-17, 2:18—35, 3:59-
`
`4:2, 7:52-66, Fig. 4; Ex. 1006, 16:108-115; Ex. 1023 9¥ 134-149;
`
`Ex. 1025, 6, 7).
`
`Petitioner asserts that “[m]odifying Hattan’s chainring to have the
`
`narrow/wideteeth profile of JP-Shimano wouldyield [axialfill] 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,
`
`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
`POSITAto maintain this same [axial fill] teaching for JP-Shimano’s wide
`
`teeth fitting into the outer link spaces in order to improve chain retention on
`
`the chainring.” /d. (citing Ex. 1023 ff 138, 141, 142). Further, Petitioner
`
`explains why a person ofordinary skill would have understood that Hattan’s
`
`teachings apply at the half-way point of the tooth, as required by the claim
`
`language. Id. at 62-64 (citing Ex. 1023 JJ 139, 140, 143). Petitioner also
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`cites JIS as demonstrating that such an axialfill for chainring teeth was
`
`knownin the art. See id. at 64-65 (citing Ex. 1023 Ff 141, 142, 144, 145).
`
`Petitioner also argues that the determination of optimum or workable
`
`ranges of a result-effective variable is within the grasp of a POSITA. Jd. at
`
`66. Petitioner submits that because Hattan discloses an overlapping range
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`(of about 74.6% to about 96%), and because axial fill is a result-effective
`
`variable, further optimization to arrive at the “at least 85 percent” value is a
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`matter of routine experimentation, not innovation. Jd. Moreover, Petitioner
`
`argues that the ’250 patent does not disclose that the at least 85% axialfill
`
`19
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`IPR2017-01440
`Patent 9,291,250 Cl
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`measured halfway betweenthe root circle and the top landis “critical”or
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`that it produces “unexpected results.” Instead, Petitioner ass
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