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FOX Factory, Inc. v. SRAM, LLC

United States Court of Appeals, Federal Circuit

December 18, 2019

FOX FACTORY, INC., Appellant
v.
SRAM, LLC, Appellee

          Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2017-00118, IPR2017-00472.

          Erik R. Puknys, Finnegan, Henderson, Farabow, Gar-rett & Dunner, LLP, Palo Alto, CA, argued for appellant. Also represented by Arpita Bhattacharyya, Robert F. McCauley; Joshua Goldberg, Daniel Francis Klodowski, Washington, DC.

          Richard Bennett Walsh, Jr., Lewis Rice LLC, St. Louis, MO, argued for appellee. Also represented by Michael Henry Durbin, Michael John Hickey.

          Before Prost, Chief Judge, Wallach and Hughes, Circuit Judges.

          PROST, CHIEF JUDGE

         Appellant FOX Factory, Inc. ("FOX") appeals the decisions of the Patent Trial and Appeal Board ("Board") in two inter partes reviews ("IPRs") of claims 1-6 and 13-19 ("the challenged claims") of U.S. Patent No. 9, 182, 027 ("the '027 patent"). The Board found that the prior art references asserted by FOX disclose all the limitations of the '027 patent's independent claims and that a skilled artisan would have been motivated to combine the asserted prior art. The Board nevertheless concluded, based on its analysis of secondary considerations, that FOX had not shown that the challenged claims would have been obvious. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A) (2012). For the reasons below, we vacate and remand for further proceedings.

         I

         A

         Bicycle chainrings are the toothed disks to which the bicycle crankarms are attached, collectively forming the crankset. Pedaling the crankarms rotates the chainring, which engages with and rotates the chain. Chains can be susceptible to disengaging from the chainring. This problem is especially prevalent with geared bicycles, which can experience severe changes in chain tension and energy motion of the chain, particularly when riding over rough terrain. Bicycles have employed extraneous structures, such as chain guides, to improve chain retention.

         SRAM, LLC ("SRAM") owns the '027 patent, which generally covers an improved chainring structure that better maintains the chain, obviating the need for extraneous structures. For instance, the '027 patent discloses a chain-ring with alternating narrow and wide tooth tips, which allegedly improves chain retention because the narrow and wide teeth better fit inside the inner and outer chain links, respectively. In addition, the '027 patent discloses teeth offset from the center of the chainring, which also purportedly improves chain retention by providing "better guiding of the chain to one side of the chainring." Appellee's Br. 8 (quoting '027 patent col. 6 ll. 8-13).

         The independent claims of the '027 patent-claims 1, 7, 13, and 20-recite a chainring with alternating narrow and wide tooth tips and teeth offset from the center of the chainring. Claims 7-12 and 20-26 generally cover tooth tips offset toward the body of the bicycle ("inboard offsets"), and claims 1-6 and 13-19 require teeth offset away from the body of the bicycle ("outboard offsets"). Claim 1 is representative of the "outboard offset" independent claims:

1. A bicycle chainring for engagement with a drivetrain, 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, wherein each of the plurality of teeth includes a tooth tip;
wherein a plane bisects the chainring into an outboard side and an inboard side opposite the outboard side; and
wherein at least the majority of the tooth tip of at least one of each of the first and second groups of teeth is offset from the plane in a direction toward the outboard side of the chainring.
'027 patent claim 1. Claim 7 is representative of the "inboard offset" independent claims:
7. A bicycle chainring 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, wherein each of the plurality of teeth includes a tooth tip;
wherein a plane bisects the chainring into an outboard side and an inboard side opposite the outboard side; and
wherein at least the majority of the tooth tip of at least one of each of the first and second groups of teeth is offset from the plane in a direction toward the inboard side of the chainring.

Id. at claim 7.

         The '027 patent specification discloses additional chainring features that are not recited by the independent claims. Like the features claimed, each of the disclosed but non-claimed features contribute to improving chain retention. For example, the specification discloses forwardly protruding tip portions that "function[] to engage a chain link earlier than a chain lacking the tip portion and pro-vide[] better guiding of the chain." '027 patent col. 5 ll. 47- 51; see also id. at fig.5. The specification also discloses a "hook feature 78 . . . that may be formed on the rear flank 70 of each" tooth and "may cooperate with the tip portion 76 to provide better guiding of the chain." Id. at col. 5 ll. 52-55; see also id. at fig.5. The specification further discloses "inner link-receiving recesses." Id. at col. 5 ll. 26-44; see also id. at figs.5, 7. Furthermore, the '027 patent explains that the narrow and wide teeth preferably fill at least 80% of the axial distance of the corresponding space in the chain link (">80% gap filling"). Id. at col. 4 ll. 19-41.

         SRAM also owns U.S. Patent 9, 291, 250 ("the '250 patent"), which is a continuation of the '027 patent and includes claims reciting a chainring with alternating narrow and wide teeth and wide teeth with >80% gap filling. '250 patent claim 1; see also J.A. 5270, 5282. In separate IPR proceedings, SRAM stated that this "combination of features" claimed in the '250 patent, "amongst several others disclosed in the '250 patent, leads to a chainring that will retain a chain in even the worst conditions." J.A. 5282-83. SRAM also explained that the >80% gap filling feature "allows the inventive chainring to better retain the chain under many conditions and amounts to the 'heart' of the challenged '250 patent claims combined with the narrow and wide tooth configuration." J.A. 5284. SRAM further described the >80% gap filling limitation as "critical." J.A. 5289.

         SRAM sells thirteen different versions of its "X-Sync" chainrings. It is undisputed that twelve of the thirteen versions embody the inboard offset claims and the thirteenth ...


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