Case No. PGR2016-00043 United States Patent No. 9,291,250 … · 2017. 5. 17. · Exhibit 2021: “2014 Editors’ Choice Award – X01 Groupset”, DirtRag Magazine. 20 Nov. 2014

Case No. PGR2016-00043 United States Patent No. 9,291,250

UNITED STATES PATENT AND TRADEMARK OFFICE ________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

_________________

FOX Factory, Inc. Petitioner

v.

SRAM, LLC Patent Owner

_________________

Case No. PGR2016-00043 U.S. Patent No. 9,291,250

_________________

PRELIMINARY RESPONSE BY PATENT OWNER PURSUANT TO 37 C.F.R. § 42.207

Page 1 of 87 FOX FACTORY EXHIBIT 1028


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TABLE OF CONTENTS

I. INTRODUCTION ........................................................................................... 1

II. ‘250 PATENT BACKGROUND AND PROSECUTION HISTORY ........... 2

III. CLAIM CONSTRUCTION ............................................................................ 7

A. Bicycle Chainring .................................................................................. 8

B. Root Circle .......................................................................................... 11

IV. THE ‘250 PATENT IS INELIGIBLE FOR PGR. ........................................ 12

A. The ‘735 Application Satisfies the Written Description Requirement of 35 U.S.C. § 112, ¶1. .................................................. 14

B. The ‘735 Application Satisfies the Enablement Requirement of 35 U.S.C. § 112, ¶1. ............................................................................ 22

V. THERE IS NO REASONABLE LIKELIHOOD FOX CAN ESTABLISH THAT THERE IS NO WRITTEN DESCRIPTION FOR “BICYCLE CHAINRING” UNDER 35 U.S.C. § 112, ¶1 (FOX GROUND 1). ................................................................................................. 31

VI. THERE IS NO REASONABLE LIKELIHOOD FOX CAN ESTABLISH THAT INDEPENDENT CLAIMS 1 AND 14 ARE NOT ENABLED UNDER 35 U.S.C. § 112, ¶1 (FOX GROUND 2). ................... 32

VII. THERE IS NO REASONABLE LIKELIHOOD FOX CAN ESTABLISH THAT INDEPENDENT CLAIMS 1 AND 14 ARE INDEFINITE UNDER 35 U.S.C. § 112 ¶2 (FOX GROUND 3). ................. 32

VIII. THERE IS NO REASONABLE LIKELIHOOD FOX CAN ESTABLISH THAT CLAIMS 1-26 ARE UNPATENTABLE UNDER 35 U.S.C. § 103 AS OBVIOUS OVER JP-SHIMANO IN VIEW OF HATTAN (FOX GROUND 4)........................................................................ 37

A. The Prior Art ....................................................................................... 39

B. Neither JP-Shimano nor Hattan, Alone or in Combination, Teach or Suggest the Axial Width Limitation of Claim 1 and 14. ............................................................................................................. 42

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IX. THE BOARD SHOULD EXERCISE ITS DISCRETION UNDER 35 U.S.C. § 325(d) TO DENY INSTITUTION ON GROUNDS THAT THE OFFICE HAS ALREADY CONSIDERED AND REJECTED FOX’S ARGUMENTS. ................................................................................. 67

X. THE BOARD SHOULD AFFORD NO WEIGHT TO THE NEPTUNE DECLARATION. .......................................................................................... 70

XI. CERTIFICATION UNDER 37 § C.F.R. 42.24(D) ....................................... 74

XII. CONCLUSION .............................................................................................. 74

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TABLE OF AUTHORITIES

Cases

Alcon Research Ltd. v. Barr Laboratories, Inc., 745 F.3d 1180 (Fed. Cir. 2014) ................................................................................................................. 24

Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) ..................................................................................................... 14, 15, 17, 72

Auto. Techs. Int’l, Inc. v. BMW of N. Am., Inc., 501 Fed. 3rd 1274 (Fed. Cir. 2007) .................................................................................................... 27, 28, 29

Bilstad v. Wakalopulos, 386 F.3d 1116 (Fed. Cir. 2004) ................................ passim

CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333 (Fed. Cir 2003) .................... 46

Crown Packaging Tech., Inc. v. Ball Metal Beverage Container Corp., 635 F.3d 1373 (Fed. Cir. 2011) ................................................................................ 21

Cuozzo Speed Tech., LLC v. Lee, 136 S. Ct. 2131 (2016) ......................................... 7

Dell Inc., v. Elecs. & Telecommunications Research Inst., IPR2014-00152, 2014 WL 2090667 (PTAB May 16, 2014) .................................................. 71

Halliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244 (Fed. Cir. 2008) ..................................................................................................... 34, 35, 36, 37

Hynix Semiconductor Inc. v. Rambus Inc., 645 F.3d 1336 (Fed. Cir. 2011) ................................................................................................................. 15, 22

ICU Medical, 558 F.3d 1368 (Fed. Cir. 2009) ..................................... 19, 20, 21, 22

In re Herschler, 591 F.2d 693 (CCPA 1979) .......................................................... 15

In re Rasmussen, 650 F.2d 1212 (CCPA, 1981) ...................................................... 18

In re Smythe, 480 F.2d 1376 (CCPA 1973) ............................................................ 18

In re Soni, 54 F.3d 746 (Fed. Cir. 1995) .................................................................. 64

In re Vaeck, 947 F.2d 488 (Fed. Cir. 1991) ...................................................... 24, 29

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In re Wands, 858 F.2d 731 (Fed. Cir. 1988) ......................................... 23, 24, 25, 26

Johns Hopkins Univ. v. Cellpro, Inc., 152 F.3d 1342 (Fed.Cir.1998) ..................... 23

Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452 (Fed. Cir. 1984) ................................................................................ 24, 25

LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336 (Fed. Cir. 2005) ................................................................................................................. 21, 22

Minerals Separation Ltd. v. Hyde, 242 U.S. 261 (1916) ......................................... 23

Nat’l Recovery Techs. v. Magnetic Separation Sys., Inc., 166 F.3d 1190 (Fed.Cir.1999) .......................................................................................................... 23

Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) .......................... 33

Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565 (Fed. Cir. 1986) .............................................................................................. 33, 34, 36, 37

Streck, Inc. v. Research & Diagnostic Sys., Inc., 665 F.3d 1269 (Fed. Cir. 2012) ................................................................................................................. 29

Tronzo v. Biomet, Inc., 156 F.3d 1154 (Fed. Cir. 1998) ....................... 19, 20, 21, 22

Statutes

35 U.S.C. § 103 ........................................................................................................ 37

35 U.S.C. § 112 ................................................................................................ passim

35 U.S.C. § 120 ................................................................................................... 2, 12

35 U.S.C. § 325(d) ...................................................................................... 67, 69, 70

AIA § 6 ..................................................................................................................... 12

AIA § 6(d) ................................................................................................................ 12

AIA §3(n)(1) ............................................................................................................ 12

Leahy-Smith America Invents Act ............................................................................ 1

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Other Authorities

Ex Parte H. Joseph Engel, Appeal No. 98-0344, 1998 WL 1735605 (BPAI Sept. 16, 1998) .............................................................................................. 72

Fed. Reg. 48756 ....................................................................................................... 12

Monsanto Co., v. Pioneer Hi-Bred Int’l, Inc., IPR2013-00022, Paper 43 (PTAB Apr. 11, 2013) ............................................................................................. 70

MPEP 2111.03 ......................................................................................................... 15

Mylan Pharmaceuticals Inc. v. Yeda Research & Dev. Co. Ltd., PGR2016-0010, Paper 9 (PTAB Aug. 15, 2016) .................................................... 13

Prism Pharma Co., v. Choogwae Pharma Corp., IPR2014-00315 (Paper 14) at *7 (PTAB July 8, 2014) ..................................................................... 69

Toshiba Corporation v. Intellectual Ventures II LLC, IPR2014-00201, Paper 9 (PTAB May 21, 2014) ................................................................................ 71

Zimmer Biomet Holdings, Inc. v. Four Mile Bay, LLC, IPR2016-00011, Paper 8 (PTAB Apr. 1, 2016) .................................................................................. 70

Regulations

37 C.F.R. § 42.200(b) ................................................................................................ 7

37 C.F.R. § 42.204(b)(4) .......................................................................................... 42

37 C.F.R. § 42.207(b) ................................................................................................ 1

37 C.F.R. § 42.65(a) ................................................................................................. 70

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LIST OF EXHIBITS

Exhibit 2001: Listing of Claims 1-26 of U.S. Patent No. 9,291,250 Exhibit 2002: Declaration of Robert H. Sturges, Ph.D. Exhibit 2003: Declaration of Benjamin J. Siders Exhibit 2004: Declaration of Ron Ritzler Exhibit 2005: “Tested: Ten Months on SRAM XX1”, Bike Magazine,

28 Nov. 2013. Exhibit 2006: “Test Ride: XX1: SRAM’s Single-Ring Group – Could this be

the end of the front derailleur?” Bike Magazine, 18 Sept. 2002. Exhibit 2007: Felton, Vernon. “First Impressions: SRAM XX1”, Bike

Magazine, 15 Aug. 2012. Exhibit 2008: Huang, James. “SRAM XX1 – First ride review”,

Bikeradar.com, 16 Aug. 2012. Exhibit 2009: “SRAM XX1 1X11 Drivetrain – First Ride Impressions & Tech

Breakdown”, Bike Rumor, 17 Aug. 2012. Exhibit 2010: “SRAM XX1 – is it any good?”, ChopMTB, 30 Aug. 2012. Exhibit 2011: “First Ride: SRAM XX1”, Freehub Magazine. Exhibit 2012: “SRAM XX1 Eleven Speed Group – First Ride”, PinkBike.com,

17 Aug. 2012. Exhibit 2013: Felton, Vernon. “Preview: The XX1 Hack”, Bike Magazine,

23 Jan. 2014. Exhibit 2014: “SRAM XX1 Review”, Freehub Magazine. Exhibit 2015: Felton, Vernon. “SRAM Unveils 1x11 Group”, Bike Magazine,

25 May 2012.

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Exhibit 2016: “1x11 for the masses”, Mountain Biking UK, Oct. 2014. Exhibit 2017: “MBUK Wrecked & Rated Group Test: Trail Cranksets”,

Mountain Biking UK, July 2014. Exhibit 2018: “SRAM Eagle XX1 Drivetrain,” Singletrack, Oct. 2016. Exhibit 2019: Cunningham, Richard. “Pinkbike Industry Awards – The

Winners, SRAM X-Sync Narrow-Wide Chainring”, PinkBike Innovation Award.

Exhibit 2020: “2013 Design and Innovation Award - SRAM XX1 drivetrain”

Enduro Mountainbike Magazine, 11 June 2013. Exhibit 2021: “2014 Editors’ Choice Award – X01 Groupset”, DirtRag

Magazine. 20 Nov. 2014. Exhibit 2022: “2014 Gear of the Year Award – SRAM X1 Transmission”,

What Mountain Bike Magazine. Exhibit 2023: “Best Products of 2014 – SRAM XX1”, Dirt Magazine. Exhibit 2024: “Best of 2016 Award”, Mtbr.com, 27 Dec. 2016. Exhibit 2025: “Most Wanted – SRAM GX1400 drivetrain,” Mountain Biking

UK, May 2016. Exhibit 2026: “Most Wanted – SRAM NX 11-speed transmission,” Mountain

Biking UK, Sept. 2016. Exhibit 2027: “2016 Gear of the Year – SRAM Eagle,” Mbr, Dec. 2016 Exhibit 2028: “Ultimate Gear Award 2016 – SRAM X01 Eagle,” Mountain

Biking UK, Dec. 2016. Exhibit 2029: “Gear of the Year 2016 – SRAM NX Gears,” What Mountain

Bike Magazine, Jan. 2017.

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Exhibit 2030: “Gear of the Year 2016 – SRAM Eagle XX1,” What Mountain Bike Magazine, Jan. 2017.

Exhibit 2031: Race Face Performance Products Chainring Exhibit 2032: e*thirteen Chainring Exhibit 2033: Wolf Tooth Cycling Chainring Exhibit 2034: North Shore Billet Chainring Exhibit 2035: Hope Chainring Exhibit 2036: X.K.M. Chainring Exhibit 2037: Aerozine Chainring Exhibit 2038: Blackspire Chainring Exhibit 2039: Absolute Black Chainring Exhibit 2040: Carbon-Ti Chainring Exhibit 2041: Extralite Chainring Exhibit 2042: Shimano Chainring Exhibit 2043: One UP Chainring Exhibit 2044: Superstar Components Chainring Exhibit 2045: FSA Chainring Exhibit 2046: White Industries Chainring Exhibit 2047: Leonardi Chainring Exhibit 2048: U.S. Patent No. 877,820 to Badger Exhibit 2049: U.S. Patent No. 1,181,175 to Shapiro

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Exhibit 2050: U. S. Patent No. 1,535,114 to Edmunds Exhibit 2051: U.S. Patent No. 3,402,942 to Shimano et al. Exhibit 2052: U.S. Patent No. 3,448,628 to Shimano et al. Exhibit 2053: U.S. Patent No. 3,477,303 to Brilando Exhibit 2054: U.S. Patent No. 3,785,219 to Anthamatten Exhibit 2055: U.S. Patent No. 3,835,729 to Tarutani Exhibit 2056: U. S. Patent No. 4,044,621 to McGregor, Sr. et al. Exhibit 2057: U.S. Patent No. 4,237,743 to Nagano Exhibit 2058: U.S. Patent No. 4,832,667 to Wren Exhibit 2059: U.S. Patent No. 5,397,275 to McJunkin, Jr. Exhibit 2060: U.S. Patent No. 5,725,450 to Huskey Exhibit 2061: U.S. Patent No. 5,782,714 to Osgood Exhibit 2062: U.S. Patent No. 6,045,470 to Wilcox et al. Exhibit 2063: Declaration of Henrik Braedt (filed Nov. 4, 2015, In re Reiter, et

al., Appln. No. 14/102,013) Exhibit 2064: File History of Ex Parte Reexamination of ‘250 Patent, Control

No. 90/013,747 Exhibit 2065: Defendant’s Initial Non-Infringement, Unenforceability, and

Invalidity Contentions, dated July 12, 2016, SRAM, LLC v. Race Face Performance Products, et al., Case No. 1:16-cv-05262-JHL (N.D. Ill.), including Appendix C thereto (JP-Shimano in view of Hattan)

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Exhibit 2066: Plaintiff SRAM, LLC’s Initial Response to Defendant Race Face Performance Products’ Initial Invalidity Contentions, dated July 26, 2016, Exhibit 2 (JP-Shimano in view of Hattan), SRAM, LLC v. Race Face Performance Products, et al., Case No. 1:16-cv-05262-JHL (N.D. Ill.)

Exhibit 2067: Defendant’s Final Unenforceability and Invalidity Contentions,

dated December 6, 2016, SRAM, LLC v. Race Face Performance Products, et al., Case No. 1:16-cv-05262-JHL (N.D. Ill.)

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I. INTRODUCTION

This case presents a threshold question of jurisdiction. The Board cannot

grant a petition for post-grant review (“PGR”) of U.S. Patent No. 9,291,250 (“the

‘250 patent”) because the ‘250 patent has an effective filing date of December 6,

2011, prior to the March 16, 2013 effective date of the Leahy-Smith America Invents

Act (“AIA”) authorizing such PGR proceedings. Petitioner FOX Factory, Inc.

(“FOX”) attempts to circumvent this fatal defect by improperly arguing that the

underlying continuation application is not entitled to the priority date of its parent

and is only entitled to a filing date of December 11, 2013.

The Board cannot consider any issue raised in the Petition unless the Board

determines the ‘250 patent has an effective filing date on or after March 16, 2013.

This turns on only one issue: whether the parent application contains support under

35 U.S.C. § 112, ¶1 for claims filed in the continuation. If the Board finds, as it

must, that the requirements of 35 U.S.C. § 112, ¶1 are met, the Board cannot

consider any other issue in the Petition and must deny institution.

For the reasons set forth in this Preliminary Response, timely filed under

37 C.F.R. § 42.207(b), the requirements of 35 U.S.C. § 112, ¶1 are satisfied and the

Board should deny institution for want of jurisdiction. In the unlikely event the

Board does find jurisdiction, FOX’s claims fail on their merits.

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II. ‘250 PATENT BACKGROUND AND PROSECUTION HISTORY

The ‘250 patent issued on March 22, 2016, with Markus Reiter, Raymond

Florczyk, and Henrik Braedt as the listed co-inventors. Ex. 1001 (‘250 patent), (45),

(72), (75). The ‘250 patent issued from Application No. 14/102,013 (“the ‘013

application”), filed December 10, 2013. Id., (21), (22). The ‘013 application was a

continuation of Application No. 13/311,735, filed December 6, 2011 (“the ‘735

application”). Id., (63); Ex. 1010, p. 6. Pursuant to 35 U.S.C. § 120, the effective

filing date of the ‘013 application (and therefore of the ‘250 patent) is the same as

the effective filing date of the ‘735 application: December 6, 2011.

The bicycle world has broadly recognized that the ‘250 patent and the

technology disclosed therein represent a stunning leap forward in the design of

bicycle chainrings. As set forth in the ‘250 patent itself, as well as the considerable

evidence submitted during the initial prosecution of the ‘250 patent and herewith,

the inventors of the ‘250 patent conceived of a novel structure for a bicycle chainring

of a bicycle crankset that overcame significant problems that had perplexed bicycle

designers for many decades, such as the chainring dropping the chain over rough

terrain or experiencing chain-suck, where the chain fails to disengage from the

bottom teeth of the chainring.

Bicycles typically employ one or more chainrings and a set of rear hub

mounted sprockets connected by a chain. Ex. 1001, 1:11-13. In the past, various

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additional mechanisms were used to keep the chain from disengaging the chainring

and sprockets, such as chain guards, chain tensioners, chain catchers, derailleur

configurations, and so on. Id., 1:13-16. Management of the chain and chainring

engagement is particularly important to safe and effective propulsion of the bicycle

during riding. Id., 1:17-19. However, keeping the chain engaged with the chainring

can be difficult, especially for geared bicycles that experience severe changes in

chain tension and energetic motion of the chain, and especially from riding over

rough terrain. Id., col. 1:20-23. Moreover, a bicycle chainring can potentially touch

the chain stay of a bicycle frame when the crank is in a position where high loads

are applied by the rider, causing elastic deformation of the bicycle frame and the

crankset, leading to damage to the frame and chainring, as well as causing other

problems. Id., col. 1:24-29. This includes the chainring problem of “chain-suck,”

where the chain fails to disengage from the bottom teeth on a chainring, with the

teeth snagging the chain, carrying it up and around the rear circumference of the

chainring, winding the chain back onto itself, and then jamming the chain between

the chainring and the chainstay of the bicycle frame. Ex. 2002 (Sturges Decl.), ¶¶14-

15.

The ‘250 patent provides for a novel bicycle chainring of a bicycle crankset

that solves the above problems without the need of an added mechanism and thereby

provides for enhanced drive chain management, especially for a bicycle that can

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successfully and reliably be ridden over rough and challenging terrain. Ex. 1001,

1:30-32; Ex. 2002, ¶17. As set forth in the claims through a combination of unique

structural features, the ‘250 patent discloses a particular arrangement of alternating

wide and narrow teeth on the chainring, which teeth are designed to “fill” axial

distances defined by the outer and inner link spaces of the chain. Ex. 1001, 6:48-

8:28; id. at 17, 1:13-2:48. These claimed features clearly set the ‘250 patent

invention apart from the prior art of record, as discussed further below, and in a

manner that has been lauded in the bicycle industry as “revolutionary.” Ex. 2002,

¶17.

FOX challenges all 26 claims of the ‘250 patent. Claims 1 and 14 are

independent. Claim 1 is illustrative and is reproduced below, with the remaining

claims listed in Exhibit 2001 hereto:

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,

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wherein the drive chain is a roller drive chain including

alternating outer and inner chain links defining outer and inner link

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 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, 6:49-7:4. The claimed structural features are described in detail in the

‘250 patent, such that the “narrow” and “wide” teeth can respectively engage with

inner and outer link spaces on the drive chain. Id., 4:8-11. The dependent claims

add further limitations regarding the percentage fill required for the outer and inner

link spaces, among other features.

During prosecution and reexamination of the ‘250 patent, claims 1-26 were

allowed over prior art relied upon by FOX for this PGR Request. SRAM initially

overcame rejections made by the Examiner that included U.S. Patent No. 4,174,642

to Martin et al. (“Martin”) in view of a variety of references drawn more specifically

to bicycle chainrings, with original claims 1-13 issuing. Ex. 1010 (‘250 patent file

history), pp. 98-109 (rejection including Martin), 293-305 (same), 701-13 (same),

789-800 (same), 821-25 (Notice of Allowance). As part of this prosecution, the

Examiner considered but did not rely upon the principal reference now cited by

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FOX, namely, Japanese Utility Model Kokai No. S56-42489 to Shimano (“JP-

Shimano”). Id., pp. 46-56 (JP-Shimano), 307 (signed information disclosure

statement). However, during reexamination, JP-Shimano was considered at length,

initially used as a grounds for rejection of claims 1-13, but ultimately found not to

anticipate or render claims 1-26 obvious. Ex. 2064 (‘250 patent reexamination file

history), pp. 1069-76 (rejection including JP-Shimano); 1850-56 (Notice of Intent

to Issue Ex Parte Reexamination Certificate); 1875-76 (Reexamination Certificate).

Likewise, FOX’s secondary reference, U.S. Patent No. 3,375,022 to Hattan

(“Hattan”), was considered during the reexamination of the ‘250 patent, but was not

relied upon by the reexamination Examiner. Id., 1858 (signed information

disclosure statement identifying U.S. Patent No. 3,375,022). Rather, the

reexamination Examiner confirmed the patentability of claims 1-13 and new claims

14-26 even after considering both JP-Shimano and Hattan. Notably, FOX makes

no mention of the fact that both references were considered during the reexamination

of the ‘250 patent, and instead pretends that wholly new issues are now before the

Board.

Although the ‘250 patent claims have now been twice confirmed by the Patent

Office, SRAM agrees that the Examiner erroneously disregarded the substantial

objective evidence of non-obviousness, which is more than sufficient to demonstrate

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nonobviousness and which has the necessary nexus to the claimed features, as set

forth in more detail below.

Notably, soon after issuance, SRAM asserted the ‘250 patent in federal court

against FOX’s subsidiaries, Race Face Performance Products and RFE Holding

(Canada) Corp. SRAM, LLC v. Race Face Performance Products, et al., Case No.

1:16-cv-05262-JHL (N.D. Ill.). Some six months later and advancing grounds

duplicative of those already before the district court and considered during

prosecution and reexamination of the ‘250 patent, FOX filed its petition for PGR

against the ‘250 patent.

III. CLAIM CONSTRUCTION

In a PGR, “[a] claim in an unexpired patent shall be given its broadest

reasonable construction in light of the specification of the patent in which it

appears.” 37 C.F.R. § 42.200(b); Cuozzo Speed Tech., LLC v. Lee, 579 U.S. __, 136

S. Ct. 2131, 2144-45 (2016). Under that construction, claim terms are presumed to

have their ordinary and customary meaning, as would be understood by one of

ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech.,

Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). In the instant matter, there are no claim

terms which require express construction for purposes of the Board’s decision on

institution. See, e.g., Ex. 2002, ¶¶30-39; Wellman, Inc. v. Eastman Chem. Co., 642

F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the

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extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci.

& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).

A. Bicycle Chainring

FOX contends that “bicycle chainring” should be construed to mean “solitary

bicycle chainring.” However, this only raises a new claim construction question:

what does “solitary bicycle chainring” mean? FOX avoids addressing this directly,

likely because FOX’s position is that “chainring” does not mean “chainring,” but

rather means “crankset.” Pet. 9 (“The term ‘bicycle chainring’ broadly includes

within its scope solitary chainrings and multiple chainrings, i.e., cranksets having

double or triple chainrings.”) (emphasis added); id. at 31. By redefining

“chainring” to mean “crankset,” FOX erects a rickety framework to advance the

argument that a “solitary” chainring cannot be used in a crankset with other

chainrings because it is no longer “solitary.” However, this framework crumbles

under scrutiny because, in the first of many self-defeating tactics, the evidence FOX

supplies contradicts its position.

First, FOX offers no evidence that “chainring” should mean “crankset.” FOX

merely asserts, through its expert, that this is the “ordinary” meaning of the term.

Pet. 31 (“‘bicycle chainring’ ordinarily includes within its scope … cranksets having

double or triple chainrings”); Ex. 1002, ¶40. FOX also provides excerpts of Sheldon

Brown’s Bicycle Glossary (the “Brown Glossary”) to establish that “chainring”

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means the same thing as “sprocket wheel” or “chain gear.” Pet. 1; Exs. 1015-16.

However, in so doing, FOX, apparently unintentionally, supplies an industry

definition of “chainring” that flatly contradicts FOX’s construction. Ex. 2002, ¶¶32-

36. The Brown Glossary clearly distinguishes the chainring from the rest of the

crankset, defining it as “a front sprocket, specifically of the type that would attach

to the crank by being bolted on to a spider.” Ex. 1015. A “sprocket” is in turn

defined as “a toothed wheel or gear that is part of a chain drive.” Ex. 1016. Thus,

according to FOX’s evidence, at “bicycle chainring” means a “front toothed wheel

or gear, specifically of the type that would attach to a bicycle crank by being bolted

on to a spider.” This is starkly at odds with FOX’s assertion that “chainring”

includes a multi-geared crankset within its scope, and the Board should disregard

FOX’s construction. Ex. 2002, ¶¶38.

To the extent FOX fixates on the term “solitary” in the specification, FOX

fails to offer any analysis or interpretation of this term. FOX simply assumes,

without explanation, that “solitary” distinguishes a single-gear crankset from a

multi-gear crankset, but it is clear from the specification that the term “solitary” is

intended to establish that the independent claims are drawn to a chainring only, not

including the rest of the crankset. This usage is evident in the very first paragraph,

which provides that the invention is “a solitary chainring … for use with a

conventional chain in a bicycle drivetrain system including a bicycle crank.” Ex.

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1009, ¶1; accord Ex. 1015 (a “chainring” is separate from a spider and a crank); see

also Ex. 2002, ¶¶32-38.

This is obviously a drafting technique to align the claim scope with the novel

features of the invention. Because these features are on the chainring itself, there is

no reason to recite any other element of the crankset (including other chainrings) in

the independent claims. Otherwise, accused infringers like FOX would simply sell

the chainring independently of the crankset and claim not to have infringed. Thus,

the claims recite a single chainring, by itself, and then later recite the chainring as

part of a crankset. The recitation of a chainring, even a “solitary” chainring, would

not be understood by a person of ordinary skill in the art at the time of the invention

(“POSITA”)1 to imply that the bicycle crankset to which the “solitary” chainring is

later added cannot include other chainrings. Ex. 2002, ¶32-38.

1 SRAM submits that a POSITA would have a skill level of at least a

bachelor’s degree in mechanical engineering and at least one year of design

experience with chainrings or related technologies. Ex. 2002, ¶21. SRAM’s

technical expert, Dr. Robert Sturges, a professor of Mechanical Engineering at

Virginia Tech with a Ph.D. in Mechanical Engineering from Carnegie Mellon

University clearly meets this standard. Id., ¶22.

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In any event, “bicycle chainring” needs no further construction and should be

given its plain and ordinary meaning as would be understood by a POSITA. Id.,

¶32-35.

B. Root Circle

FOX contends “root circle” means “a circle drawn through the bottoms/roots

of the teeth of a chainring,” Pet. 14 (emphasis added), based on the American

National Standard Gear Nomenclature, Definitions of Terms with Symbols. Pet. 14;

Ex. 1019, p. 4. FOX represents to the Board that “Fig. 3-36 … and the associated

text explain that the root circle coincides with the bottom of the gear teeth.” Pet. 14

(emphasis added). However, this is wrong, as the reference actually states that “[t]he

Root Circle coincides with the bottoms of the tooth spaces (see Figs 3-36 and 3-

54).” Ex. 1019, p. 4 (emphasis added); see also Ex. 2002, ¶39.

FOX fails to explain why FOX did not adopt the actual definition from the

text, changing “tooth spaces” to “teeth,” nor why FOX felt the need to inaccurately

paraphrase an eight-word definition.2 In SRAM’s view, no construction of the term

“root circle” is needed in the first place, given that it has a plain and ordinary

meaning to a POSITA, but to the extent any construction is needed, there is no reason

2 FOX also failed to provide a copy of Fig. 3-56, referenced in the definition,

with FOX’s submitted Exhibit 1019.

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to vary from the written definition, such that the proper claim construction of “root

circle” is a circle coinciding with the bottoms of the tooth spaces. Id.

IV. THE ‘250 PATENT IS INELIGIBLE FOR PGR.

The AIA established the PGR proceeding sought by FOX. AIA § 6; 77 Fed.

Reg. 48,756 (Aug. 14, 2012). PGR is only available for patents with an effective

filing date on or after March 16, 2013. AIA §§ 6(d), 3(n)(1). Because the effective

filing date of the ‘250 patent is December 6, 2011, the ‘250 patent is ineligible for

PGR.

FOX relies exclusively on the specious argument that the ‘013 application

does not comport with 35 U.S.C. § 112, first paragraph, and thus is not entitled to

the December 6, 2011 effective filing date of the ‘735 application under 35 U.S.C.

§ 120. FOX asserts that this is because a limitation in original claim 17 of the ‘013

application (“Original Claim 17”) is not described or enabled by the ‘735

application. Original Claim 17 recited the following limitations:

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.

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Ex. 1010, pp. 26-27. FOX’s argument hinges on the “at least some” language in the

final element. FOX falsely claims that the ‘735 application only describes

exemplary embodiments in which “each and every” tooth in the second group is

arranged alternatingly and adjacently between the first group of teeth, and summarily

asserts that a POSITA would not understand the specification to describe or enable

embodiments in which at least some of the second group of teeth are arranged

alternatingly and adjacently between the first group of teeth. Pet. 18-19.

FOX bears the burden of demonstrating that the ‘250 patent is eligible for

PGR. Mylan Pharmaceuticals Inc. v. Yeda Research & Dev. Co. Ltd., PGR2016-

0010, Paper 9 (PTAB Aug. 15, 2016) (“[T]he ultimate burden of persuasion remains

with Petitioner, [who] has not demonstrated that it is more likely than not that the …

patent has at least one claim having an effective filing date on or after March 16,

2013.”). If the Board finds that FOX has not met this burden, the Board cannot

institute trial. This further means that in the unlikely event that the Board finds FOX

more likely than not to prevail on any other issue in the Petition, the PGR still may

not be instituted if the written description and enablement requirements are met. As

set forth herein, those written description and enablement requirements plainly are

met. Ex. 2002, ¶43.

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A. The ‘735 Application Satisfies the Written Description Requirement of 35 U.S.C. § 112, ¶1.

The test of whether an application satisfies the written description requirement

is articulated as “whether the disclosure of the application relied upon reasonably

conveys to those skilled in the art that the inventor had possession of the claimed

subject matter as of the filing date.” Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co.,

598 F.3d 1336, 1351 (Fed. Cir. 2010). “The term ‘possession’ … has never been

very enlightening,” so the Federal Circuit “requires an objective inquiry into the four

corners of the specification from the perspective of a person of ordinary skill in the

art.” Id. “[D]etermining whether a patent complies with the written description

requirement will necessarily vary depending on the context. Specifically, the level

of detail required to satisfy the written description requirement varies depending on

the nature and scope of the claims and on the complexity and predictability of the

relevant technology.” Id. The mechanical arts are a “fairly predictable” field. See,

e.g., Bilstad v. Wakalopulos, 386 F.3d 1116, 1126 (Fed. Cir. 2004).

FOX essentially contends that Original Claim 17 recites a genus but the

specification only describes a species. See, e.g., Pet. 2-3, 18-19. The “general rule

[is] that disclosure of a species provides sufficient written description support for a

later-filed claim directed to the genus.” Bilstad, 386 F.3d at 1125. The specification

may disclose “either a representative number of species falling within the scope of

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the genus or [the] structural features common to the members of the genus so that

one of skill in the art can visualize or recognize the members of the genus.” Hynix

Semiconductor Inc. v. Rambus Inc., 645 F.3d 1336, 1352 (Fed. Cir. 2011); Bilstad,

386 F.3d at 1124; Reagents of the Univ. of Cal. v. Eli Lilly, 119 F.3d 1559, 1568-69

(Fed. Cir. 1997). A single described species can support a genus. See, e.g., In re

Rasmussen, 650 F.2d 1212, 1215 (C.C.P.A., 1981); In re Herschler, 591 F.2d 693,

701-02 (C.C.P.A. 1979); In re Smythe, 480 F.2d 1376, 1383 (C.C.P.A. 1973).

The Abstract of the ‘735 application describes a chainring “including a

plurality of teeth formed about a periphery of the chainring” which plurality

“includes a first group of teeth and a second group of teeth arranged alternatingly

between the first group of teeth.” Ex. 1009, ¶¶7, 24. This description does not

provide any specific quantity of teeth in the first or second group. Ex. 2002, ¶¶50-

52. The term “includes” is open-ended, and does not exclude additional, unrecited

elements. See, e.g., MPEP § 2111.03.

This phrasing conveys to a POSITA that the plurality of teeth may include

additional teeth which are part of neither the first group nor the second group of

teeth. Such additional teeth have unspecified configuration, and thus may be in the

same configuration as the first group, the same configuration as the second group,

or neither. Ex. 2002, ¶¶50-52.

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Additionally, this phrasing uses the term “alternatingly” but omits the term

“adjacently.” The term “alternatingly” has no special meaning in the art and is given

its plain and ordinary meaning of “interchanged repeatedly.” As applied to the ‘735

application, a POSITA would understand this description as encompassing

embodiments in which the second group of teeth are interchanged repeatedly

between the first group of teeth, but not necessarily adjacently to the first group of

teeth. This in turn means that other teeth may be disposed in between. Id.

This language describes a limitless variety of tooth configurations and

arrangements. For example, a POSITA could conceive a chainring having a plurality

of teeth totaling twenty teeth, with six teeth in the first group, six teeth in the second

group, and the teeth in the second group disposed alternatingly (but not necessarily

adjacently) between the first group. A POSITA would understand that the remaining

eight teeth, of unspecified configuration, are arranged along the periphery in

unspecified fashion. In fact, each of the supposedly “after-arising” embodiments

envisioned by FOX’s expert is encompassed by this description. Pet. 21; Ex. 1002,

p. 17; Ex. 2002, ¶50-52.

Original Claim 17 is also clearly encompassed by this disclosure. The plain

and ordinary meaning of the language of Original Claim 17 – “at least some” of the

second group of teeth arranged alternatingly and adjacently between the first group

– is understood by a POSITA as meaning that some (possibly all) of the second

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group of teeth are both alternatingly and adjacently arranged between the first group

of teeth. Conversely, this means that some (but not all) of the second group of teeth

may be either not alternatingly or not adjacently arranged between the first group of

teeth. While written in slightly different terminology, the scope of the claimed genus

is nearly identical to the scope of the description set forth in the Abstract of the ‘735

application. Id.; accord Ariad, 598 F.3d at 1352 (“the description requirement does

not demand any particular form of disclosure, [n]or that the specification recite the

claimed invention in haec verba”).

FOX arrives at a contrary conclusion only by ignoring the distinction between

teeth being both alternatingly and adjacently arranged, and merely alternatingly (but

not necessarily adjacently) arranged, between the first group of teeth.3 Tellingly,

both FOX and its expert avoid any substantive examination of the specification.

They merely state that, because Original Claim 17 claims a genus and the

3 FOX and its expert also take other clearly incorrect liberties, such as making

assumptions about what is not said or shown in the ‘735 specification to force the

disclosure to fit their argument. In just one example, both FOX and Dr. Neptune

claim that, in Figs. 3-11, “each and every” tooth in the second group is shown as

disposed between the wider teeth. However, in Figs. 4-11, not all of the teeth are

shown in the drawings, and FOX is merely making assumptions.

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specification describes a species, written description is not satisfied. This is not the

law. See, e.g., Rasmussen, 650 F.2d at 1215 (“that a claim may be broader than the

specific embodiment disclosed in a specification is in itself of no moment”); Smythe,

480 F.2d at 1382 (“We cannot agree with the broad proposition … that in every case

where the description of the invention in the specification is narrower than that in

the claim there has been a failure to fulfill the description requirement.”).

In Bilstad v. Wakalopulos, the applicant’s claims were directed to a

sterilization apparatus having a moveable member manipulating objects in a

plurality of directions. Bilstad, 386 F.3d at 1119. The predecessor Board found

those claims lacked written description support because the term “plurality” read on

a large multitude with no upward bound, but the specification described movement

only “in a small number of directions.” Id. at 1121-23. The Federal Circuit reversed,

noting the “general rule that disclosure of a species provides sufficient written

description support for a later filed claim directed to the genus” and “[i]n the

mechanical world—a fairly predictable field—it is wholly conceivable that

manipulation in a small number of directions may convey to one skilled in the art

that Bilstad indeed described manipulation in a ‘plurality’ of directions.” Id. at 1125-

26.

Here, there is an even stronger case than Bilstad. Whereas the Federal Circuit

in Bilstad found that a specification teaching only a “small number” of directions

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19

provided adequate written description for an unlimited “plurality” of directions, the

specification here does not contain a limiting qualifier such as “a small number.”

Also, the art here is, like in Bilstad, a “fairly predictable” field. In view of Bilstad,

it is clear to a POSITA that the ‘735 application provides more than adequate support

for the claimed genus. Ex. 2002, ¶¶53, 61.

FOX’s contrary position is based on two cases, Tronzo and ICU Medical, both

involving different facts and different technologies. Tronzo concerned a prosthesis

with implants adapted for insertion into the hip bone. Tronzo v. Biomet, Inc., 156

F.3d 1154, 1156 (Fed. Cir. 1998). The claims recited that the prosthesis was in the

shape of a “cup.” Id. at 1156. An accused infringer asserted that the specification

described only a “trapezoid” shape and did not encompass the broader “cup”

limitation of the claims. Id. at 1158-59. The Federal Circuit agreed because the only

mention in the specification of other shapes was in the description of the prior art,

which the specification disparaged as inferior, while simultaneously touting the

advantages of the conical shape. Id. at 1159-60.

Tronzo does not apply here because the key factor in Tronzo was that the

claimed genus was disparaged in the specification as inferior prior art. The ‘735

application simply does not disparage the rest of the genus as did the specification

in Tronzo, nor does FOX introduce any evidence from Dr. Neptune or otherwise to

suggest that the ‘735 application does so. Additionally, the Federal Circuit has also

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20

distinguished Tronzo as an “exception” and criticized the predecessor Board for

“fail[ing] to recognize how Tronzo fits the spectrum of cases involving written

description support for a genus when only one or more species are disclosed.”

Bilstad, 286 F.3d at 1125-26. The instant case is like Bilstad, not Tronzo.

FOX next offers ICU Medical, Inc. v. Alaris Medical System, Inc., a case

concerning medical valves used in the transmission of fluids to or from a medical

patient. ICU Medical, 558 F.3d 1368, 1372 (Fed. Cir. 2009). The valve included a

spike for piercing a seal to allow fluid transmission, which the specification

indicated was a required component. Id. at 1371-73. A set of later-added claims

recited a valve without a spike, which the district court found invalid for lack of

written description. Id. at 1372-73, 1376-78. The Federal Circuit affirmed, finding

that “these spikeless claims … refer to medical valves generically [but] the

specification describes only medical valves with spikes. We reject [the] contention

that the figures and descriptions that include spikes somehow demonstrate that the

inventor possessed a medical valve that operated without a spike.” Id. at 1378

(emphasis added).

ICU Medical is irrelevant because the issue there was that the claims failed to

recite a necessary structure, but FOX identifies no such necessary structure here.

Nothing in the ‘735 application indicates that all teeth in the second group must be

both alternatingly and adjacently between the first group for the chainring to work.

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Ex. 2002, ¶¶46-52. To the contrary, a POSITA would recognize from the disclosure

that not all teeth need be arranged alternatingly and adjacently. Id. So long as even

one tooth has the wide, gap-filling structure, the chainring works with respect to that

one tooth. Id., ¶52. Also, like Tronzo, ICU Medical has been distinguished as

particular to its facts. See, e.g., Crown Packaging Tech., Inc. v. Ball Metal Beverage

Container Corp., 635 F.3d 1373, 1382 (Fed. Cir. 2011) (“[I]n 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. Crown makes no such narrow

disclosure here.”).

FOX gives passing mention to LizardTech, a case involving wavelet

transforms which allow digital images to be compressed with very little loss of

information by filtering out irrelevant and redundant data. LizardTech, Inc. v. Earth

Res. Mapping, Inc., 424 F.3d 1336, 1337 (Fed. Cir. 2005). That case involved a

method claim to computer software and an underlying algorithm, which the

specification only recited as generating a “seamless” set of discrete wavelet

transform coefficients, but a claim omitted the “seamless” qualifier, effectively

claiming a method that resulted in nonseamless discrete wavelet transform

coefficients not described in the specification. Id. at 1343-44. LizardTech, like ICU

Medical, concerns a claim that omits a required component, which does not apply

here. Moreover, the present case does not involve complex computer software

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22

algorithms, nor method claims, and there are no facts in LizardTech that bear on the

knowledge of one of ordinary skill in the mechanical arts.

Neither FOX nor Dr. Neptune offer any facts suggesting that Tronzo or ICU

Medical are applicable here. To the contrary, Dr. Neptune contradicts FOX’s

argument, as Dr. Neptune is clearly able to understand the structural features

common to the members of the genus sufficiently to visualize or recognize the

members of the genus. Ex. 1002, p. 17; Pet. 21; accord Hynix, 645 F.3d at 1352. In

fact, Dr. Neptune helpfully supplies four drawings of chainrings in the genus,

conceived in view of the ‘735 application, which have the structural features

described in the ‘735 application, and he acknowledges he can think of more.

Ex. 1002 at 17. Dr. Neptune thus demonstrates that a POSITA can visualize and

recognize the genus based on the description of the structural elements in the ‘735

application, proving that the written description requirement is satisfied. Accord

Hynix, 645 F.3d at 1352 (written description satisfied where specification discloses

the “structural features common to the members of the genus so that one of skill in

the art can visualize or recognize the members of the genus”).

B. The ‘735 Application Satisfies the Enablement Requirement of 35 U.S.C. § 112, ¶1.

The test of enablement is whether a POSITA can make and use the full

claimed scope of the invention without undue experimentation. Minerals Separation

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Ltd. v. Hyde, 242 U.S. 261, 270 (1916); In re Wands, 858 F.2d 731, 737 (Fed. Cir.

1988). The “enablement requirement is met if the description enables any mode of

making and using the invention.” Johns Hopkins Univ. v. Cellpro, Inc., 152 F.3d

1342, 1361 (Fed. Cir. 1998) (working examples in specification need not enable the

entire claimed range). Patents are written to enable a POSITA to practice the

invention, and need not disclose what is well known. Wands, 858 F.2d at 735. The

scope of enablement is that which is disclosed in the specification plus the scope of

what would be known to one of ordinary skill in the art without undue

experimentation. Nat’l Recovery Techs. v. Magnetic Separation Sys., Inc., 166 F.3d

1190, 1196-97 (Fed. Cir. 1999).

Enablement does not preclude experimentation. “The key word is ‘undue,’

not ‘experimentation.’” Wands, 858 F.2d at 735. “The determination of what

constitutes undue experimentation in a given case requires the application of a

standard of reasonableness, having due regard for the nature of the invention and the

state of the art.” Id. at 737.

The Federal Circuit generally considers eight illustrative factors in

determining whether a disclosure would require undue experimentation: (1) the

quantity of experimentation necessary; (2) the amount of direction or guidance

presented; (3) the presence or absence of working examples; (4) the nature of the

invention; (5) the state of the prior art; (6) the relative skill of those in the art; (7) the

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predictability or unpredictability of the art; and (8) the breadth of the claims. Id.

The Wands factors are not a generalized test of enablement, however; they come into

play only after FOX has shown that at least some experimentation is required to

practice the claimed invention. See, e.g., Alcon Research Ltd. v. Barr Laboratories,

Inc., 745 F.3d 1180, 1188–89 (Fed. Cir. 2014). FOX’s failure to make this threshold

showing is fatal. Id.

For a genus to be enabled, “the disclosure must adequately guide the art

worker to determine, without undue experimentation, which species among all those

encompassed by the claimed genus possess the disclosed utility.” In re Vaeck, 947

F.2d 488, 496 (Fed. Cir. 1991). The required level of disclosure is generally less for

“predictable” arts, such as mechanical elements, than for inventions having “diverse

and relatively poorly understood” elements. Id. (enablement of claim drawn to

group of microorganisms requires higher amount of disclosure than mechanical

arts); see also Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730

F.2d 1452, 1463 (Fed. Cir. 1984) (enablement satisfied where absent enablement

disclosure covered elements whose selection and connection would be well known

to a POSITA).

FOX offers no real evidence that any amount of experimentation is required

to make the invention. This failure alone is fatal to FOX’s enablement argument.

Further, it is clear that no experimentation is required to make and use the claimed

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genus of Original Claim 17, much less “undue” experimentation. Ex. 2002, ¶¶56,

57, 59. Chainrings have been in use on bicycles for at least one hundred and thirty

years. Id., ¶55. While there have been many improvements over the years (including

the ‘250 patent), making a bicycle chainring is well within the knowledge of a

POSITA. Id., ¶56, 57, 59; accord Wands, 858 F.2d at 735; Lindemann, 730 F.2d at

1463. FOX does not contend otherwise.

The manner of using the claimed chainring is both known to a POSITA and

fully explained in the original disclosure of the ‘735 application. SRAM’s claimed

bicycle chainring is used by assembling the chainring into a crankset, attaching the

crankset to a bicycle, and engaging spaces in the chain with the teeth of the chainring.

Ex. 2002, ¶58. Further, the ‘735 application provides an extensive description of the

use of the chainring, describing a “conventional roller drive chain for a bicycle” as

having “outer chain links and inner chain links which are pivotally mounted on and

connected to the outer chain links” and the “outer chain links are alternatingly

interleaved with the inner chain links.” Ex. 1009, ¶26. This structure “creates

corresponding alternating outer link spaces and inner link spaces” where the outer

link spaces are “generally in the shape of a ‘cross’ or … ‘plus’” whereas the inner

link spaces are “generally rectangular.” Id., ¶¶28-30. The chainring is described as

having a first group of teeth arranged in an alternating fashion with a second group

of teeth, the first group configured to fit into the “cross” or “plus”-shaped outer link

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spaces, and the second group configured to fit into the rectangular inner link spaces.

Id., ¶34. The ‘735 specification further states that, “[i]n use, the chain is installed

with each of the outer chain links on one of the first [cross-shaped] group of teeth

and each of the inner chain links on one of the second [rectangular] group of teeth.

As the chainring is rotated by the crank, the chain is drawn about the chainring, and

the outer chain links and the inner chain links are sequentially engaged with

respective first and second ones of the groups of teeth.” Id., ¶54.

It goes without saying that a POSITA understands how a chain is drawn

around a chainring, and it is self-evident that the chain should be situated on the

chainring so that the larger, cross-shaped teeth will engage the larger, cross-shaped

link spaces, and the smaller, rectangular teeth engage the smaller, rectangular link

spaces. Ex. 2002, ¶58-60. In the highly improbable event that the knowledge of a

POSITA is insufficient, this description is more than enough for a POSITA to

understand how to use the chain. Id. A POSITA, having read the ‘735 application,

would require no experimentation at all in determining how to arrange the teeth, and

FOX has introduced no real evidence to the contrary. Id. FOX has failed to meet

its evidentiary burden to show that the ‘735 application does not enable Original

Claim 17.

In the unlikely event the Board finds that FOX has met the threshold burden

of establishing at least some experimentation would be required, all eight Wands

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27

factors weigh in favor of enablement. As to the first factor (the quantity of

experimentation necessary), little or no experimentation is required, as it is clearly

evident from the specification how to arrange at least some of the second teeth

between the first set of teeth. Id., ¶61. For the second factor (the amount of direction

or guidance presented), the specification clearly explains in detail how the teeth

interact with the drive chain. Id. Regarding the third factor (the presence or absence

of working examples), FOX acknowledges that the specification contains a working

example. Id. As to the fourth factor (the nature of the invention), the invention is a

bicycle chainring for engagement with a roller drive chain, a venerable technology

that a POSITA would be able to understand, make, and use. Id. For the fifth factor

(the state of the prior art), the technology of bicycle chain drives is well over 100

years old and would be well-understood by a POSITA. Id. Regarding the sixth

factor (the relative skill of those in the art), a mechanical engineering degree is more

than adequate to understand how to arrange the second set of teeth. Id. With respect

to the seventh factor (the predictability or unpredictability of the art), the art in

question is a mechanical art pertaining to bicycles, recognized to be a fairly

predictable field. Id. As to the eighth factor (the breadth of the claims), the breadth

of the genus is bounded and finite. Id.

FOX relies on Automotive Technologies International, Inc. v. BMW of North

America, Inc., for the proposition that Original Claim 17 is not enabled because the

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disclosure does not provide any guidance to enable supposedly after-arising

embodiments within its scope. However, Automotive Technologies involved “crash

sensing devices for deployment in an occupant protection apparatus, such as an

airbag” and the claim at issue was a means-plus-function claim in which the parties

disagreed as to the structure corresponding to the claimed function. Auto. Techs.

Int’l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1276-77 (Fed. Cir. 2007). That

court noted that the means-plus-function claim scope included both mechanical and

electrical sensors and, while the application included two full columns and five

figures of detail on mechanical sensors, it had only one short paragraph and a general

figure on electronic sensors, providing no detail of how the electronic sensor

operates. Id. at 1282. Further, because “side impact sensing is a new field” with

limited prior art literature, and “there were no electronic sensors in existence that

would detect side impact crashes,” the court concluded that it “was especially

important for the specification to discuss how an electronic sensor would operate to

detect side impacts and to provide details of its construction.” Id. Further, expert

testimony was provided indicating that a great deal of experimentation would have

been required due to specific problems in developing an electronic sensor. Id. at

1284. The court concluded that the application did not enable electric side-impact

sensors. Id. at 1284-85.

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None of the Automotive Technologies factors are present here. Original

Claim 17 is not a means-plus-function claim, and there is no missing detail on the

inner workings of the chainring needed to make or use it. Further, in the instant case,

all embodiments within the genus operate in the exact same fashion as the exemplary

embodiments provided in the specification, whereas the electric sensor of

Automotive Technologies required a completely different structure, and, unlike in

Automotive Technologies, FOX has provided no evidence of a problem that must be

overcome by experimentation to make and use the chainring. See, e.g., Streck, Inc.

v. Research & Diagnostic Sys., Inc., 665 F.3d 1269, 1289 (Fed. Cir. 2012) (“Unlike

the situation in Automotive Technologies, where the electronic sensors differed in

structure and operation from mechanical sensors, here, there was unrebutted

evidence that true reticulocytes and Ryan’s reticulocyte analogs ‘work in exactly the

same way in a hematology control, and are virtually indistinguishable, even to one

skilled in the art.’”); Vaeck, 947 F.2d at 496.

FOX also attempts to bootstrap a utility argument, contending that a person

of ordinary skill would not know without undue experimentation which

embodiments in a genus would work for the intended purpose of improving chain

retention. However, the ‘735 application identifies multiple structures responsible

for improving chain retention, including, but not limited to, the axial fill width and

the tooth protrusions. For example, “[i]t will be understood that the various

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configurations of the teeth include protrusions that are positioned along the side or

sides of each tooth in a position where they effectively function to assist in

positioning the chain on the chainring.” Ex. 1009, ¶43. These protrusions “help

maintain the chain on the chainring.” Ex. 1009, ¶40.

Further, a POSITA would understand that prior art bicycle chainrings with

uniformly sized teeth engaged with both the smaller and larger link spaces in a roller

drive chain. Thus, it is well-known by a POSITA that the smaller, rectangular teeth

described in the ‘735 application may fit into either the inner or outer link spaces.

However, the larger, thicker teeth, configured to fit within the larger, plus- or cross-

shaped outer link spaces, may not engage the smaller, rectangular inner link spaces.

As such, teeth should be arranged so that thick teeth do not engage with inner link

spaces. This is readily apparent in the ‘735 application and requires little more than

a basic grasp of elementary geometry. Further, FOX’s expert admits that such an

arrangement would be understood by a POSITA, contradicting his claim that the

‘735 application lacks enabling disclosure. Ex. 1002, ¶105; Ex. 2002, ¶58.

Because the ‘735 application makes clear which structures provide utility and

guides a POSITA to easily determine which species among the claim genus possess

the disclosed utility, no undue experimentation is required to make or use the genus

claimed in Original Claim 17. The enablement requirement is met.

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Accordingly, all requirements of 35 U.S.C. § 112, ¶1 are met as to Original

Claim 17 and the ‘250 patent clearly has an effective filing date prior to March 16,

2013. The ‘250 patent is thus ineligible for post-grant review and the Board must

deny institution as to all issues raised in the Petition. This ends the inquiry.

V. THERE IS NO REASONABLE LIKELIHOOD FOX CAN ESTABLISH THAT THERE IS NO WRITTEN DESCRIPTION FOR “BICYCLE CHAINRING” UNDER 35 U.S.C. § 112, ¶1 (FOX GROUND 1).4

Piggybacking on its claim construction argument, FOX contends that “bicycle

chainring” should be construed as “solitary bicycle chainring,” and any other

construction lacks written description support. However, as discussed above, FOX

disguises its true position that “chainring” means “crankset,” and “bicycle

chainring” means a crankset having one, and only one, chainring. FOX offers no

reason for this, but rather states it as a given. As explained in Section III, FOX’s

construction is untenable and contradicted by its own evidence. The term should be

given its plain and ordinary meaning, or, if a construction is required, should be

understood as meaning a toothed gear configured to engage a drive chain and attach

to a bicycle crankset, comports with the plain and ordinary meaning of the term, and

4 Regardless of the likelihood of success, the Board may not institute trial on

this ground if the Board finds that the ‘250 patent is entitled to the filing date of its

parent. See Section IV.

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is fully supported by the specification, as explained in Section III. FOX has no

reasonable likelihood of prevailing on this ground.

VI. THERE IS NO REASONABLE LIKELIHOOD FOX CAN ESTABLISH THAT INDEPENDENT CLAIMS 1 AND 14 ARE NOT ENABLED UNDER 35 U.S.C. § 112, ¶1 (FOX GROUND 2).5

FOX next asserts that independent claims 1 and 14 are not enabled for the

same reason FOX argued that Original Claim 17 was not enabled. As explained in

Section IV above, this is not the law, and SRAM refers the Board to SRAM’s

arguments in Section IV, which equally apply to this ground. FOX has no

reasonable likelihood of prevailing on this ground.

VII. THERE IS NO REASONABLE LIKELIHOOD FOX CAN ESTABLISH THAT INDEPENDENT CLAIMS 1 AND 14 ARE INDEFINITE UNDER 35 U.S.C. § 112 ¶2 (FOX GROUND 3).6

In perhaps the most perplexing of FOX’s arguments, FOX contends that the

claim term 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, appearing in independent claims 1 and 14, is indefinite

under 35 U.S.C. § 112, ¶2 because it requires a separate infringement determination

for every circumstance in which the claimed invention is used.

5 See supra note 4.

6 See supra note 4.

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FOX again demonstrates poor comprehension of basic patent law principles,

confusing “indefiniteness” with “infringement,” and, bizarrely, FOX attempts to

prove its case by having Dr. Neptune conclusively demonstrate that the claims are

definite by showing exactly how the claim scope can be determined with certainty.

This incongruity appears to result from FOX’s misunderstanding of the definiteness

requirement. FOX treats definiteness as requiring that the claims recite all possible

circumstances that could constitute infringement. This is, of course, not the law,

which requires only that the claim scope be reasonably certain to a POSITA.

“[A] patent is invalid for indefiniteness if its claims, read in light of the

specification delineating the patent, and the prosecution history, fail to inform, with

reasonable certainty, those skilled in the art about the scope of the invention.”

Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. __, 134 S. Ct. 2120, 2124 (2014).

Where claims involve dimensions that depend upon particular uses, the law requires

nothing more than that a POSITA can obtain the needed dimensions. Orthokinetics,

Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986).

Here, the “axial width” limitation is written with respect to the percentage

width of the link spaces of a drive chain filled by the claimed tooth structure. These

facts are similar to Orthokinetics, in which components of a travel wheelchair were

claimed as “so dimensioned as to be insertable through the space between the

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doorframe of an automobile and one of the seats thereof.” Orthokinetics, 806 F.2d

at 1568. The Federal Circuit found such language definite.

The claims were intended to cover the use of the invention with various

types of automobiles. That a particular chair on which the claims read

may fit within some automobiles and not others is of no moment. The

phrase ‘so dimensioned’ is as accurate as the subject matter permits,

automobiles being of various sizes. As long as those of ordinary skill

in the art realized that the dimensions could be easily obtained, [the

law] requires nothing more. The patent law does not require that all

possible lengths corresponding to the spaces in hundreds of different

automobiles be listed in the patent, let alone that they be listed in the

claims.

Id. at 1576.

The present case is analogous, and FOX demonstrates that the axial width

metric can be easily determined, as Dr. Neptune has measured the link width to a

precision of thousandths of an inch using a “standard” instrument and determined

the percentage of axial fill to within a tenth of a percentage point. Ex. 1002, ¶¶54-

56. Dr. Neptune is capable of easily obtaining the measurements with far more than

“reasonable certainty,” proving that the claims are definite.

FOX nevertheless misrepresents that Halliburton Energy v. M-I LLC stands

for the proposition that “the Federal Circuit has found that a claim is indefinite if it

requires a POSITA to make separate infringement determination [sic] for every

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possible circumstance in which the claimed invention may be used, and when such

determinations are likely to result in different outcomes.” Pet. 35. However, this

was not the holding of Halliburton, and Halliburton does not apply to this case, as

the critical inquiry is not whether a separate analysis is required, but rather whether

such an analysis can determine with reasonable certainty that a given use infringes.

The issue in Halliburton was the scope of the term “fragile gel,” which

Halliburton defined by functional characteristics, such as “easily transitions to a

liquid state upon the introduction of force” and “capable of suspending drill cuttings

and weighting materials[.]” Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d

1244, 1250 (Fed. Cir. 2008). The Federal Circuit found “that the term ‘fragile gel’

is not sufficiently definite … because a [POSITA] could not determine how quickly

the gel must transition to a liquid when force is applied and how quickly it must

return to a gel when the force is removed.” Id. at 1254. Similarly, “an artisan would

not know from one well to the next whether a certain drilling fluid was within the

scope of the claims because a wide variety of factors could affect adequacy

(formation geology, wellbore size, depth, angle, etc.).” Id. at 1254-55.

Importantly, the Federal Circuit noted that these ambiguities could have been

“resolved by using a quantitative metric (e.g., numeric limitation as to a physical

property) rather than a qualitative functional feature,” but Halliburton instead

defined its invention by the functional characteristics of a “fragile gel,” which “does

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not adequately distinguish the fragileness of the invention from disclosed prior art,

… is ambiguous as to whether an upper bound of fragileness is contemplated, and

… is ambiguous as to its requisite ability to suspend drill cuttings.” Id. at 1255-56.

Halliburton has no applicability here. First, the present case involves

mechanical, not chemical, claims. Second, the axial width limitation is not written

functionally, as was the “fragile gel” of Halliburton, but is a quantitative metric (i.e.

80 percent), which the Federal Circuit expressly recognized in Halliburton as being

a way to eliminate ambiguity. Ex. 2002, ¶64. Unlike in Halliburton, where the

infringement analysis varied from case to case based on a large variety of factors,

many of which were not quantifiable and would be difficult or impossible to

determine, the infringement analysis here is simple and requires only basic math, as

demonstrated by Dr. Neptune. See Orthokinetics, 806 F.2d at 1568 (“As long as

those of ordinary skill in the art realized that the dimensions could be easily obtained,

[the law] requires nothing more.”).

FOX throws two other cases at the wall, but neither is applicable. See Dow

Chem. Co. v. Nova Chem. Corp., 803 F.3d 620, 633-35 (Fed. Cir. 2015); Teva

Pharmaceuticals USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1345 (Fed. Cir. 2015).

In Dow, there were four different ways to measure the “slope of strain hardening,”

but that issue is not present here, as FOX introduces no evidence that a POSITA

would not know how to measure the width of the space between the link plates. To

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the contrary, FOX’s own expert measures these distances with ease and complains

of no confusion or uncertainty concerning the process, and SRAM’s expert agrees.

Ex. 2002, ¶¶63-65. The issue in Teva was essentially the same and Teva is also

inapplicable.

This case is like Orthokinetics, not Halliburton, and FOX is unlikely to prevail

on this point.

VIII. THERE IS NO REASONABLE LIKELIHOOD FOX CAN ESTABLISH THAT CLAIMS 1-26 ARE UNPATENTABLE UNDER 35 U.S.C. § 103 AS OBVIOUS OVER JP-SHIMANO IN VIEW OF HATTAN (FOX GROUND 4).7

FOX contends that all claims of the ‘250 patent are obvious over JP-Shimano

in view of Hattan. However, none of the prior art references, alone or in

combination, teach the limitation 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 (the “Axial Width Limitation”). This

limitation appears in independent claims 1 and 14, and was the limitation that clearly

overcame the prior art in both the original prosecution and reexamination.8

7 See supra note 4.

8 As SRAM has consistently maintained, there are additional reasons for

patentability beyond this specific limitation.

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FOX tacitly admits that this element is not found in JP-Shimano or Hattan

and attempts to conjure it from whole cloth through a number of deceptive tactics.

FOX’s entire argument is premised on Dr. Neptune’s unjustified assumption that the

drawings in Hattan are to scale, but Federal Circuit case law clearly finds this

assumption improper here. Alarmingly, as discussed more below, the record further

provides reason to suspect that FOX knew about, but hid, this case law from its own

expert.

Regardless, even if the drawings of Hattan were to scale (they are not), they

still would not show the Axial Width Limitation. FOX nevertheless urges the Board

to find the absent element itself to be obvious, using logical leaps for which FOX

provides no real evidence or support. Moreover, both Hattan and JP-Shimano have

already been considered by the Office, and FOX itself apparently has so little faith

in this argument that FOX felt the need to supplement it in the District Court

proceedings. Finally, even if the Board found that Dr. Neptune’s interpretation of

Hattan is accurate (it is not), and even if the Board found that, although Hattan does

not show the Axial Width Limitation, that limitation could simply be assumed to

exist (it cannot), the objective indicia in this case overwhelmingly demonstrate that

the combination is not obvious.

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A. The Prior Art

1. JP-Shimano

JP-Shimano describes a “chain gear for a bicycle” in which the “thickness of

the even-numbered teeth is formed smaller than the spaces between the outer link

plates of the chain, but greater than other teeth that engagement between the inner

link plates, so that the teeth with the greater thickness engage between the outer link

spaces.” Ex. 1006, p. 15:55-60. The thickness of the even-numbered (thicker) teeth

is “set to conform to the spaces between the outer link plates,” meaning they are

“approximately the same thickness as the inner surface spaces of the inner link

plates.” Id., p. 16:111-115. A POSITA would understand this to mean the wide

teeth of JP-Shimano are about as wide as the inner (not outer) link spaces. Ex. 2002,

¶66-67. JP-Shimano teaches that a gear having this tooth structure may be used in

both front and rear sprockets and can prevent chain drop even in multi-chainring

configurations. Ex. 1006, p. 16:125-126. JP-Shimano contains no teaching

concerning the percentage of the axial fill of the outer link spaces by the wide teeth

at the midpoint between the root circle and top land, as admitted by FOX. Ex. 2002.

¶¶66-67.

FOX relies on JP-Shimano as teaching alternating narrow-wide tooth

configurations on a bicycle chainring, but a POSITA would not understand JP-

Shimano to provide any teaching of any percentage of axial fill of the outer chain

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links, other than that the wider teeth are about as wide as the width of the inner chain

links. Id.

2. Hattan

Hattan describes a bicycle chain drive having an elliptical front sprocket

wheel carrying an oversized deflector that deflects a chain engaged with the sprocket

wheel laterally outward. Ex. 1004, 1:10-16 (Abstract). This is the structure of

Hattan chiefly responsible for chain retention. Id. at 1:67-2:9 (describing the

“primary apparatus for preventing such jumping of the chain” to be the deflector).

Additionally, the teeth of the sprocket wheel include a camming surface that forces

the engaged chain laterally inward. Id., 1:10-16, 2:18-24. Hattan makes clear that

these elements “function together” to “prevent the chain from ever jumping off of

the sprocket wheel.” Id., 2:26-35. Hattan does not teach alternating narrow-wide

teeth and, like JP-Shimano, is silent on percentage of axial fill of the outer link

spaces. Ex. 2002, ¶68.

The width of the teeth in Hattan is not selected to achieve a percentage of

axial fill, but rather to achieve, in combination with the deflector, a particular groove

width in the deflector that accommodates both the inner and outer link plates on the

outboard side of the chain. This is so that, when the chain slides down the camming

surface of the tooth, it is captured in the groove between the tooth and deflector.

Hattan explains with respect to Fig. 4:

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In order to enable the chain to interfit with the forward sprocket wheel

and deflector element [the] groove formed between the sprocket wheel

and deflector element must of course have an axial width w … large

enough to accept … the inner and outer rows of side plates … plus the

… pins. This groove width w must also be small enough to permit the

second series of side plates to clear the outer extremities of the sprocket

teeth when the chain slides down [the] cam surface. To achieve this

result, I design the parts in the FIG. 4 arrangement so that the dimension

designated s, representing the combined axial thickness of the

peripheral groove plus sprocket teeth … is not greater than, and

preferably slightly less than, the axial spacing between the innermost

surfaces of side plates [on the inboard side of the chain] and the

outermost surfaces of the opposed side plates [on the outboard side of

the chain].

Ex. 1004, 6:17-38 (emphasis added). The dimensions FOX relies upon are not

chosen in Hattan for the purpose of achieving a particular percentage of axial fill,

but rather to create an empty space of a particular width. Id., 7:52-65 (describing

chain and tooth dimensions which result in the desired axial groove dimensions for

a chain having a 3/32 axial width between the inner link plates). Ex. 2002, ¶68-69.

FOX essentially relies on Hattan as teaching that the tooth may fill 80% or

more of the axial width between the inner link spaces, not the outer link plates

described in the Axial Width Limitation. FOX contends it would be obvious to a

POSITA to also fill more than 80% of the axial width between the inner link spaces

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of JP-Shimano, which in turn would render it obvious to further fill more than 80%

of the axial width between the outer link spaces of JP-Shimano. However, Hattan

contains no disclosure suggesting any specific percentage of axial fill is desirable,

and a POSITA would avoid wide teeth with greater axial fill because it would be

expected to increase the incidence of chain-suck.

B. Neither JP-Shimano nor Hattan, Alone or in Combination, Teach or Suggest the Axial Width Limitation of Claim 1 and 14.

To meet its burden to demonstrate a reasonable likelihood that at least one

claim of the ‘250 patent would have been obvious in view of the references cited in

the Petition, FOX “must specify where each element of the claim is found in the

prior art.” 37 C.F.R. § 42.204(b)(4). Both independent claims 1 and 14 recite the

Axial Width Limitation: 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.

This limitation is not found in either JP-Shimano or Hattan, and FOX does

not contend otherwise. JP-Shimano contains no disclosure at all concerning the

percentage of axial fill, and Hattan contains dimensions related only to the inner

link plates, not the outer link plates. FOX argues that the missing element is obvious

through a succession of unwarranted logical leaps. See, e.g., Pet. 46-48, 55-56.

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1. The Drawings of Hattan Are Not to Scale.

FOX’s entire argument is premised on a completely unexplained and legally

improper assumption that Fig. 4 of Hattan is to scale. Dr. Neptune states, without

any explanation whatsoever, that Fig. 4 of Hattan shows “teeth of uniform width

from the root circle up to at least the midpoint of the length of the teeth,” and

provides a drawing identifying the root circle and top land, with a “midpoint” clearly

located closer to the bottom than the top. Ex. 1002, ¶83. Dr. Neptune provides no

explanation of how or why he identified the “root circle” and “top land” where he

did, how he determined the halfway point as he did, or how he prepared the annotated

Fig. 4.

Dr. Neptune’s annotations require an unstated assumption that Fig. 4 is to

scale. However, this assumption is not proper unless the disclosure of the prior art

reference itself indicates that its drawings were drawn to scale. See, e.g., Nystrom

v. TREX Co., Inc., 424 F.3d 1136, 1149 (Fed. Cir. 2005) (“speculative modeling

premised on unstated assumptions in prior art patent drawings cannot be the basis

for challenging the validity of claims reciting specific dimensions not disclosed

directly in such prior art.”); White v. H.J. Heinz Co., 640 Fed. Appx. 930, 934-35

(Fed. Cir. 2016) (rejecting arguments based on relative drawing proportions because

“we have consistently found ‘patent drawings do not define the precise proportions

of the elements and may not be relied on to show particular sizes if the specification

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is completely silent on the issue’”); In re Olson, 212 F.2d 590, 592 (C.C.P.A. 1954)

(“drawings which accompany an application for a patent are merely illustrative of

the principles embodied in the alleged invention claimed therein and do not define

the precise proportions of elements relied upon … It is well known that Patent Office

drawings are not normally drawn to scale”). Hattan does not indicate that its

drawings are to scale, and does not provide sufficient information on the dimensions

of the structures in question to determine the “midpoint” of the tooth of Hattan,

much less the percentage of axial fill at that midpoint. For this reason alone, FOX’s

position fails. Ex. 2002, ¶69.

Moreover, SRAM raised this exact issue with respect to different prior art

cited in the reexamination of the ‘250 patent. FOX is aware of this, because FOX

included with its Petition a copy of SRAM’s response in the reexamination

proceeding, which set forth this argument and the accompanying case law. Ex. 1011,

36-37, 58-61. FOX also clearly read SRAM’s response, and the Examiner’s reasons

for allowance, because FOX provides a summary of both in the Petition. Pet. 6-7.

However, FOX omits that the Examiner validated the claims in reexamination for

the exact reason that prior art drawings cannot be assumed to be to scale. Most

alarmingly, FOX appears to have kept this information from Dr. Neptune (and

thereby attempts to hide it from the Board), as SRAM’s reexamination response is

among the very few Exhibits omitted from the list of materials Dr. Neptune reviewed

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in making his Declaration, Ex. 1002, Exhibit B (omitting Ex. 1011), and FOX’s

Petition avoids any mention of this outcome in characterizing the outcome of the

reexamination. See, e.g., Pet., p. 4-7.

FOX’s omissions are further highlighted by comparing this case to the related

inter partes review of the ‘027 patent, No. IPR2016-01876. In the IPR, Dr. Neptune

did review a similar response submitted by SRAM during the reexamination of the

‘027 patent. Like in the reexamination of the ‘250 patent, that response argued

(among other things) that the prior art combination did not render the ‘027 patent

obvious because the prior art drawings cannot be assumed to be to scale. Dr.

Neptune is thus aware of this position. However, whereas the reexamination of the

‘027 patent has not yet been decided, the Office has already agreed with SRAM that

the ‘250 patent is not obvious due to this fatal flaw in the prior art. FOX omits any

mention of this finding as it submits an almost identical argument from its expert.9

For this reason alone, Hattan does not show the “axial width” limitation with

respect to the inner link plates, much less the outer link plates, and FOX has no

reasonable likelihood of success on this ground.

9 A second ex parte reexamination has since been initiated against the ‘250

patent.

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2. No Reference of Record Teaches the Axial Width Limitation.

Even assuming the Board is willing to indulge FOX’s misleading tactics with

respect to Fig. 4, Hattan does not contain any teaching or suggestion of the Axial

Width Limitation because that limitation is written with respect to the outer link

plates. Hattan, by contrast, only provides dimensions pertaining to the inner link

plates. FOX contends that the missing element is “obvious” through various leaps

of logic. Pet. 34-37, 70-72. However, this is improper, as a showing of obviousness

must include at least a suggestion from the prior art of each claimed limitation. See

CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (internal

citation omitted); In re Royka, 490 F.2d 981, 985 (C.C.P.A. 1974) (there can be no

finding of obviousness where element “is still missing” from the proposed

combination); see also Asustek Computer Inc. v. Exotablet Ltd., IPR2015-00046,

2015 WL 1927415, at *6 (PTAB April 23, 2015) (“To establish obviousness of a

claimed invention, all the claim limitations must be taught or suggested by the prior

art.”); see also Arendi, S.A.R.L. v. Apple, Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016).

3. The Axial Width Limitation Is Not Obvious.

An examination of JP-Shimano and Hattan shows that the missing Axial

Width Limitation is not “obvious.” JP-Shimano already provides a preferred width

of the wider teeth as being the same as the width of the inner link spaces, which JP-

Shimano teaches to be adequate to achieve chain retention, and there is no teaching

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or suggestion in Hattan that an even wider axial width would better achieve chain

retention. To the contrary, the axial width of the teeth of Hattan is selected to create

a groove in the deflector wide enough to accommodate the combined thickness of

the inner and outer link plates on one side of the chain, and Hattan contains no

teaching that the axial fill percentage is responsible for chain retention. Ex. 2002,

¶¶68-69.

FOX argues to the contrary via rhetorical tricks that obscure FOX’s

unexplained assumptions. FOX contends that a POSITA would recognize that the

preferred axial fill of Hattan would improve chain retention. Pet. 57. However,

FOX provides no justification for this, claiming FOX “discussed” this in Section

VII.A.4 of its brief. However, in that section, FOX stated only that improving chain

retention is the purpose of the apparatus of both JP-Shimano and Hattan, not the

purpose of the specific structure of Hattan (axial tooth width) relied upon. Dr.

Neptune likewise simply states this as a given, providing no explanation, analysis,

or support for this conclusion. Ex. 1002, ¶55. However, as discussed, Hattan does

not teach that the axial tooth width itself improves chain retention, but rather that the

width of the groove in the deflector, formed in part by the tooth, does so. Ex. 2002,

¶71.

Next, FOX contends that it would be obvious to modify the narrow teeth of

JP-Shimano to have the axial fill width of Hattan, but this again proceeds from the

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unsupported assumption that a POSITA would understand the axial fill width of

Hattan to be responsible for chain retention, when Hattan says no such thing.

Finally, FOX compounds this error once more by concluding that it would have been

further obvious to also modify the wide teeth of JP-Shimano to the same fill

percentage, but FOX does not explain why that specific fill percentage would be

used. Id., ¶¶68-71.

Further, increasing the axial width is not obvious because a POSITA would

expect wider teeth to be more likely to experience chain-suck. Ex. 2002, ¶70. As

Dr. Neptune himself points out, “chain-suck is primarily caused by [among other

things] dirt/grit buildup on the chain or chainring.” Ex. 1002, ¶24. A POSITA would

understand that dirt/grit buildup on the chain or chainring causes chain-suck because

the chain sticks to the chainring. This in turn is caused by increased friction between

the chain and chainring imparted by the presence of debris in the spaces when the

teeth and chain engage. Increasing the axial fill width would be expected to increase

chain-suck caused by debris, because the wider teeth result in smaller spaces that are

more quickly and easily filled by smaller amounts of debris. Ex. 2002, ¶70.

None of the references provide any reason to modify JP-Shimano to use wider

teeth, and JP-Shimano would be understood by a POSITA as providing reasons to

avoid teeth wider than the inner link plates. Id., ¶¶42, 70. Dr. Neptune’s

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unsupported ipse dixit does nothing to fill this gap. FOX has no reasonable

likelihood of prevailing on this ground.10

4. The Objective Indicia Support the Conclusion of Non-Obviousness.

Objective indicia of non-obviousness are part of the overall obviousness

analysis, not just an afterthought. In re Cyclobenzaprine Hydrochloride Extended-

Release Capsule Patent Litigation, 676 F.3d 1063, 1075-76 (Fed. Cir. 2012) (noting

10 FOX, through Race Face, advanced this combination of references in the

pending district court litigation between the parties, in initial invalidity contentions.

Ex. 2065, 6-7. After SRAM provided a response, Ex. 2066, Race Face then changed

this assertion, adding a number of additional references in Race Face’s Final

Invalidity Contentions. Ex. 2067, 4-5. Those Final Invalidity Contentions were

served in the district court litigation after FOX filed the instant Petition to institute

PGR. Id., 14. FOX represents to the Board that this is the best combination of prior

art references (while hiding the fact that both references were already considered

during the ‘250 patent reexamination), yet FOX apparently has so little faith in its

position that FOX felt compelled to bolster this argument before the district court.

with yet more cumulative art, none of which was compelling enough to raise in this

PGR.

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that a fact finder “may not defer examination of the objective considerations until

after the fact finder makes an obviousness finding”). Objective indicia of non-

obviousness play a critical role because they are “not just a cumulative or

confirmatory part of the obviousness calculus but constitute[] independent evidence

of nonobviousness.” Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d

1358, 1365 (Fed. Cir. 2008). Objective indicia “can be the most probative evidence

of non-obviousness in the record, and enables the . . . court to avert the trap of

hindsight.” Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1310 (Fed. Cir.

2010); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983)

(objective evidence of non-obviousness “may often be the most probative and cogent

evidence in the record”). Such objective evidence must be considered in deciding

whether or not a claimed invention is obvious. In re Huang, 100 F.3d 135, 139-40

(Fed. Cir. 1996).

Obviousness is a question of law based on underlying findings of fact. An

analysis of obviousness must be based on several factual inquiries: (1) the scope and

content of the prior art; (2) the differences between the prior art and the claims at

issue; (3) the level of ordinary skill in the art at the time the invention was made;

and (4) objective evidence of non-obviousness, if any. In re Kubin, 561 F.3d 1351,

1355 (Fed. Cir. 2009); see also Graham v. John Deere Co., 383 U.S. 1, 17–18

(1966). Objective evidence of non-obviousness includes: (1) commercial success,

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Huang, 100 F.3d at 139–40; (2) professional approval and praise by others, Corning

Glass Works v. Sumitomo Elec. USA Inc., 671 F. Supp. 1369, 1398 (S.D.N.Y. 1987),

aff’d, 868 F.2d 1251 (Fed. Cir. 1989), as well as expressions of disbelief and

skepticism of those skilled in the art upon learning of the invention, In re Dow Chem.

Co., 837 F.2d 469, 473 (Fed. Cir. 1988); (3) licenses showing industry respect and

commercial acquiescence to the invention, Arkie Lures, Inc. v. Gene Larew Tackle,

Inc., 119 F.3d 953, 957 (Fed. Cir. 1997); Pentec, Inc. v. Graphic Controls Corp.,

776 F.2d 309, 316 (Fed. Cir. 1985); (4) copying, Graham, 383 U.S. at 17–18;

(5) long felt but unsolved need, and failure of others to solve the problem, id.;

(6) passage of time between publication of the prior art and the invention, Leo

Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346, 1357-58 (Fed. Cir. 2013); and

(7) unexpected results, In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir.

2012).

In the instant case, the objective indicia overwhelmingly weigh in favor of the

non-obviousness of the instant claims of the ‘250 patent. Ex. 2002, ¶90. During

prosecution of the ‘250 patent and again during reexamination, SRAM submitted

substantial evidence that the claimed invention exhibits objective indicia of non-

obviousness. However, the Examiner improperly dismissed this evidence as failing

to “overcome the strong case of obviousness in this case.” Ex. 1010, p. 712; see also

Ex. 2064, p. 1854. This mode of analysis – that objective indicia must “overcome”

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an obviousness rejection – is improper, as the objective criteria are part of the

obviousness analysis and may not be simply disregarded once a conclusion of

obviousness is reached. Cyclobenzaprine, 676 F.3d at 1075-76 (a fact finder “may

not defer examination of the objective considerations until after the fact finder makes

an obviousness finding”).

In Leo Pharm., the Board initially upheld an obviousness rejection, issued on

grounds that “the strong case of obviousness outweighs” the objective indicia

supplied by the applicant. Id. at 1357. However, the Federal Circuit reversed,

finding that “the objective indicia, in concert with the entire obviousness analysis,

present[s] a compelling case of non-obviousness. In fact, the objective indicia of

non-obviousness highlight that the Board’s analysis . . . was colored by hindsight.”

Id. In particular, the Federal Circuit re-affirmed that “objective indicia of non-

obviousness are crucial in avoiding the trap of hindsight when reviewing, what

otherwise seems like, a combination of known elements.” Id. at 1358; see also id.

at 1357-58 (“Objective indicia of non-obviousness play a critical role in the

obviousness analysis [and] can be the most probative evidence of non-obviousness

in the record”) (emphasis added).

As such, SRAM respectfully submits that the voluminous objective indicia of

non-obviousness, some of which was previously presented in prosecution, and some

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of which is new to this Preliminary Response to FOX’s Petition, conclusively

demonstrate non-obviousness.

a) Commercial Success of the Claimed Invention

Commercial success has been repeatedly recognized as highly relevant

objective evidence of non-obviousness. See, e.g., Rambus Inc. v. Rea, 731 F.3d

1248, 1257 (Fed. Cir. 2013); Leo Pharm., 726 F.3d at 1358. SRAM respectfully

submits that the claimed invention exhibits commercial success directly resulting

from after-arising incorporation of the claimed invention.

SRAM has sold bicycle cranksets with single and multiple chainrings since

2005. SRAM’s prior chainrings were not covered by any of the challenged claims.

Ex. 2004 (Ritzler Decl.), ¶¶4, 7. In early 2012, SRAM began marketing chainrings

covered by the challenged claims to bicycle original equipment manufacturers or

OEMs. This new chainring was known as the “X-Sync” chainring. In or about July

2012, SRAM began selling the X-Sync chainring directly to the bicycle aftermarket.

Ex. 2004, ¶6. SRAM’s sales of the X-Sync chainrings have been nothing short of

stunning. Ex. 2002, ¶¶72-74.

SRAM’s commercial success for its X-Sync chainrings is perhaps best

measured by its sales as a percentage of overall chainring sales. In 2011, SRAM

sold no chainrings covered by the pending claims. That year, SRAM sold 85,716

bicycle cranks sold with either single or multiple chainrings. Of those total sales for

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2011, SRAM only sold 2,174 bicycle cranks with single chainrings, or 2.5% of the

year’s total. Ex. 2004, ¶¶5, 7.

In 2012, during which SRAM started selling X-Sync chainrings mid-year,

sales of bicycle cranks with single chainrings rose to 11,071 units, which amounted

to 11.7% of a total 94,676 bicycle cranks sold with either single or multiple

chainrings. In 2013, when the only single chainrings sold by SRAM were X-Sync

chainrings, sales of bicycle cranks with the X-Sync chainrings rose to 64,896 units.

This represented a leap to 62.7% of total chainring sales, which were 103,573 units.

In 2014, SRAM’s total sales of X- Sync chainring sales, alone or as part of a

crankset, were equal to 227,819 units. In 2015, SRAM’s total sales of X-Sync

chainrings, alone or as part of a crankset, rose to 337,892 units. In 2016, SRAM’s

sales of X-Sync chainrings, alone or as part of a crankset, amount to 427,185 units.

In 2017, SRAM is projecting that this trend will continue, with anticipated growth

of thirty percent (30%) in 2017. Id., ¶¶8-13.

SRAM’s sales of single chainrings (which now include the claimed features

of the present invention) have increased by a factor of 19,650%, or 196 times the

original single chainring sales during that same time period (from 2,174 units in 2011

to 427,185 units in 2016). In fact, in just a single year, sales of single chainrings

jumped from just over 11% to nearly 63% of SRAM’s total chainring sales, a more

than five-fold increase in one year. Id., ¶¶8-9, 13.

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If anything, SRAM’s X-Sync technology has been so innovative and

successful that it has cannibalized SRAM’s multi-chainring sales. In just the few

years of sales, SRAM's multi-chainring sales dropped from 88% of its total chainring

sales to just 37%, with actual unit sales of multi-chainrings dropping from 83,605 in

2012 to 38,677 in 2013. Id., ¶¶8-9. This cannibalization of sales itself is evidence

of the tremendous commercial success exhibited by the X-Sync chainrings.

Medtronic, Inc. v. Daig Corp., 789 F.2d 903, 907 (Fed. Cir. 1986) (claimed

invention exhibited commercial success where it cannibalized company's sales of

existing product). In fact, in an article designating the X-Sync chainring the 2013

Innovation of the Year Award, PinkBike anticipated this very cannibalization,

stating that, “[i]n the future, we may well mark [the X-Sync chainring’s] debut as

the silver bullet that killed the front derailleur.” Ex. 2019.

Contrary to FOX’s assertions, the nexus between the claimed invention and

SRAM’s commercial success is clearly established. Here, SRAM’s marketed

product – chainrings incorporating X-Sync technology – “embodies the claimed

features.” Ex. 2002, ¶¶72-74; Brown & Williamson Tobacco Corp. v. Philip Morris

Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000). If a patent owner makes this showing,

“then a nexus is presumed and the burden shifts to the party asserting obviousness

to present evidence to rebut the presumed nexus.” Id.; see also J. T. Eaton & Co. v.

Atlantic Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997) (“When a patentee

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can demonstrate commercial success, usually shown by significant sales in a relevant

market, and that the successful product is the invention disclosed and claimed in the

patent, it is presumed that the commercial success is due to the patented invention.”).

Here FOX has come forward with no evidence to rebut the presumption of a nexus

between the challenged claims and the incredible success of SRAM’s commercial

embodiments of the claimed invention.

Thus, the after-arising incorporation of the claimed invention into SRAM’s

products directly resulted in commercial success, as shown above. Accordingly, the

Board should deny Ground 4 of FOX’s Petition.

b) Professional Approval and Praise by Others / Expressions of Disbelief and Skepticism of Those Skilled in the Art

Praise in the industry for an invention tends to indicate that the invention was

not obvious. Allen Archery, Inc. v. Browning Mfg. Co., 819 F.2d 1087, 1092 (Fed.

Cir. 1987). Further, “[e]xpressions of disbelief by experts constitute strong evidence

of non-obviousness.” Environmental Designs, Ltd. v. Union Oil Co. of Cal., 713

F.2d 693, 697-98 (Fed. Cir. 1983); see also Burlington Indus. Inc. v. Quigg, 822

F.2d 1581, 1583-84 (Fed. Cir. 1987) (evidence that the invention met with initial

incredulity and skepticism of experts was sufficient to rebut the prima facie case of

obviousness based on the prior art). Here, the praise of SRAM’s claimed invention

– including the critical nature of how the chainring is uniquely designed with specific

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dimensions such as the teeth filling the spaces of the chain links, and thereby

preventing conditions like chain drop – confirms the patentability and non-

obviousness of the pending claims. Ex. 2002, ¶¶75-80.

Praise accorded to the claimed invention is replete in the cycling industry, as

shown in numerous magazine and web site articles, in which industry experts

expressed skepticism and doubt about the performance of SRAM’s invention, noted

how strange it appeared compared to prior devices, and, after testing, ultimately

hailed SRAM’s invention as “revolutionary.” Ex. 2005-2016; see also Ex. 2017

(“SRAM’s X-Sync design has revolutionized single-ring chain security and runs

smoother than the competition.”) (emphasis added); Ex. 2022 (“SRAM’s XX1

groupset is nothing short of revolutionary . . . because of the combination of a clutch

style rear mech and a cleverly profiled chainring there’s also no need for any kind

of a chain guide. It sounds too good to be true, but it really does work and once

you’ve ridden a bike with XX1 you’ll really feel like you’re stepping backwards if

you have to ride anything else.”) (emphasis added).

On top of the considerable praise of SRAM’s unique X-Sync chainring

technology, the claimed invention has also received numerous industry awards for

its design and for products incorporating those designs. Ex. 2019-2030; see also Ex.

2019 (naming X-Sync chainring as the “Innovation of the Year” for 2013 and noting

“the entire concept can be related in a single phrase: ‘The chainring’s teeth are

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shaped to match the widths of the chain links’ - almost as exciting of a read as a

three-page paper on rubber compounds. However insignificant it may seem,

SRAM’s innovation - the adaptation of the narrow-wide chainring tooth profile as

a method to guide the chain to and from the front sprocket from a wide variety of

angles - proved to be the missing piece in the single-chainring drivetrain puzzle.”).

These objective indicia support the conclusion that the claimed invention is

nonobvious. Ex. 2002, ¶¶75-80. Accordingly, the Board should deny Ground 4 of

FOX’s Petition.

c) Licenses and Commercial Acquiescence

Acquiescence by a number of relevant market players to the validity of a

patent – generally through acceptance of a license – has often been regarded as

strong evidence supporting patentability. See, e.g., Minnesota Mining & Mfg. Co.

v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1575 (Fed. Cir. 1992)

(noting that, where patent owner licensed invention to major market player, “such

real world considerations provide a colorful picture of the state of the art, what was

known by those in the art, and a solid evidentiary foundation on which to rest a non-

obviousness determination.”); see also Metabolite Labs., Inc. v. Lab. Corp. of Am.

Holdings, 370 F.3d 1354, 1368 (Fed. Cir. 2004) (fact that patent owner “has licensed

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the invention to eight companies” constituted substantial evidence supporting jury

verdict of non-obviousness).

As owner and assignee of the ‘250 patent, SRAM has already licensed its

proprietary technology to at least eight different companies, some of whom are

major market players, further evidencing the importance of the claimed invention

and industry acceptance of the invention by license. SRAM initially licensed its X-

Sync technology (as disclosed in the ‘250 patent and claimed in the challenged

claims, as well as other patents and pending patent applications) to Chromag Bikes,

a Canadian high-end bicycle component manufacturer, and Accell Group N.V., an

international bicycle and bicycle component provider that is considered a market

leader in Europe and ranks among the top five players in North America, with well-

known brands including Raleigh and Diamondback. SRAM has since licensed the

claimed X-Sync technology and associated intellectual property to (1) KCNC

International, a Taiwanese bicycle component manufacturer; (2) Quality Bicycle

Products, Inc., one of the largest wholesale distributors in the world, serving more

than 5,000 independent bike dealers; (3) Cannondale Bicycle, one of the most well-

known bicycle providers in the world; (4) Saris Cycling Group (PowerTap), a

Wisconsin-based manufacturer of bicycle accessories and chainrings; (5) White

Industries, a California-based manufacturer of bicycle components; and (6) Wolf

Tooth Components, a Minnesota-based manufacturer of bicycle chainrings. Ex.

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2004, ¶16. Such licenses to a range of players, from smaller bicycle component

manufacturers to some of the largest wholesalers and original equipment

manufacturers in the world, demonstrate significant industry recognition and

acquiescence to the value of the claimed invention and, by extension, its non-

obviousness. Ex. 2002, ¶81-82.

In sum, this industry recognition and commercial acquiescence shown

through licensing of the claimed invention, as shown above, represents strong

objective indicia of non-obviousness. Accordingly, the Board should deny Ground 4

of FOX’s Petition.

d) Copying by Others

“[C]opying the claimed invention, rather than one within the public domain,

is indicative of non-obviousness.” Windsurfing Int’l, Inc. v. AMF Inc., 782 F.2d

995, 1000 (Fed. Cir. 1986); see also Power-One, Inc. v. Artesyn Tech., Inc., 599 F.3d

1343, 1352 (Fed. Cir. 2010).

Here, SRAM is aware of at least seventeen (17) different companies who have

copied its patented technology, including as set forth in the challenged claims. Ex.

2004, ¶17. These companies have copied the features disclosed and/or claimed in

the ‘250 patent, some down to the very same level of detail shown in the drawings

of the ‘250 patent. These copyists have included in their bicycle chainrings the very

same features claimed in the challenged claims, including, but not limited to,

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alternating wide and narrow groups of teeth, an overall configuration of the

chainring to guide and maintain the chain on the chainring, and/or the specific gap-

filling features with respect to the chain link spaces compared to the chainring teeth.

Ex. 2002, ¶83-85. Examples of these copying companies and their copied chainrings

are found in Exs. 2031 to 2047. To SRAM’s knowledge, all such copying has

occurred after SRAM introduced its X-Sync chainring technology to the market.

Clearly, these copyists were not inspired by the references cited by FOX, but rather

by SRAM’s commercial success with its unique X-Sync technology. Moreover, to

SRAM’s knowledge, at least one of the seventeen (17) copycat companies was

actually founded simply to produce copycat X-Sync chainrings. Therefore, SRAM’s

highly innovative X-Sync technology has not only spurred copying but incorporation

and copying, a far higher standard of competitor copying. Notably, at least three of

the identified companies (Chromag, Accell, and Wolf Tooth) have now taken

licenses from SRAM for the X-Sync technology. Ex. 2004, ¶17.

Even independent industry reviews have recognized the rampant copying of

SRAM’s unique chainring design. For example, Mountain Biking UK magazine

described the “narrow wide” chainring as the “much copied SRAM-developed single

chainring design that uses alternating fat and thin teeth to sync with the alternating

wider and narrower links in the chain and provide increased chain security.” Ex.

2017 (also awarding SRAM’s X1 crankset the overall group test winner where its

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“X-Sync teeth use a more complicated design than most narrow wide alternatives

and performance is noticeably smoother and quieter as a result”) (emphasis added).

In view of such extensive copying of SRAM’s claimed design, this is yet

another strong indicator of non-obviousness, as shown above. Accordingly, the

Board should deny Ground 4 of FOX’s Petition.

e) Long Felt but Unsolved Need / Failure of Others to Solve the Problem / Passage of Time Between Publication of the Prior Art and the Invention

“The existence of an enduring, unmet need is strong evidence that the

invention is novel, not obvious, and not anticipated. If people are clamoring for a

solution, and the best minds do not find it for years, that is practical evidence – the

kind that can’t be bought from a hired expert, the kind that does not depend on

fallible memories or doubtful inferences – of the state of knowledge.” In re

Mahurkar Patent Litigation, 831 F. Supp. 1354, 1378 (N.D. Ill. 1993), aff'd, 71 F.3d

1573 (7th Cir. 1995). Further, the length of the intervening time between the

publication dates of the cited references and the claimed invention “speaks volumes

to the non-obviousness” of the claimed invention. See Leo Pharm., 726 F.3d at 1359.

In this case, the claimed invention solves a long-felt need in the industry and

succeeds where others have failed, as detailed in the ‘250 patent. Ex. 1001, 1:13-

29. Examples of chain guards, chain tensioners, chain catchers, and other devices

and configurations for maintaining the chain on the chainring go back more than one

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hundred years. Exs. 2048 to 2062; Ex. 2004, ¶18. Clearly, those of skill in the art

at the time of this invention were well-aware of the various approaches to the chain

retention problem and did not arrive at the solution shown in the challenged claims.

This length of time between the publication dates of the cited references and

the claimed invention itself “speaks volumes” as to non-obviousness. See Leo

Pharm., 726 F.3d at 1359 (finding a twenty-two-year gap between the prior art

reference and the filing of the patent-in-suit persuasive evidence of non-

obviousness). Hattan was filed with the USPTO in 1965 while the other reference,

JP-Shimano was filed with its respective Patent Office in 1979, and apparently no

one sought to combine these references as FOX has proposed. Those dates are

comparable to, or older than, the prior art references cited in Leo Pharm. The patent

application from which the ‘250 patent draws its priority was filed in 2011, more

than thirty (30) years after the publication of the primary reference, JP-Shimano, and

the secondary reference was more than a decade older. The fact that even the later

of these cited references was a matter of public knowledge for thirty (30) years (from

1979 until 2011) before there was any asserted attempt to combine these teachings

is strongly probative of non-obviousness. “If these discoveries and advances were

routine and relatively easy, the record would undoubtedly have shown that some

ordinary artisan would have achieved this invention within months . . . Instead this

invention does not appear for” thirty-two (32) years. Leo Pharm., 726 F.3d at 1354.

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Clearly, the claimed invention addressed the long-felt need for a chainring

that could maintain a chain through the structure of the chainring itself – here,

specific tooth profiles and gap-filling dimensions compared to the chain link spaces,

and other claimed features – without the additional chain-retaining mechanisms

utilized over the last century. Ex. 2002, ¶¶86-90. Thus, the inventors of the ‘250

patent succeeded where others failed, as shown above.

f) Unexpected Results

Finally, “[e]vidence that the variables interacted in an unpredictable or

unexpected way could render the combination nonobvious.” Applied Materials, 692

F.3d at 1298; see also In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995) (unexpected

results are useful to show that the “improved properties provided by the claimed

compositions are much greater than would have been predicted”). The unique gap-

filling dimensions of the claimed bicycle chainring of a bicycle crankset had the

unexpected result of improving chain maintenance and overall chainring

performance. Ex. 2063 (Braedt Decl.), ¶¶5-7. As one of ordinary skill in the art,

inventor Braedt was aware of certain concerns relating to axial fill of chain links. In

particular, prior to the development of a chainring having teeth of different widths

as claimed in the pending patent application, those of skill in the art like inventor

Braedt focused their concerns about axial fill of chain links on the interaction of the

chainring teeth with the inner chain links. This was because this interaction was the

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principal limiting factor in the design of chainrings having a common tooth width.

Id., ¶5; Ex. 2002, ¶77-78.

More specifically, experience in various bicycle operational environments had

indicated to inventor Braedt that an axial fill of more than eighty percent (80%) of

inner chain links by chainring teeth could cause significant issues with the chain not

releasing from the chainring, a problem more generally known as “chain-suck.” In

a chain-suck situation, the chain typically fails to disengage from the bottom teeth

on a chainring, with the teeth snagging the chain, carrying it up and around the rear

circumference of the chainring, winding the chain back onto itself, and then jamming

the chain between the chainring and the chainstay, if a stay is in place. Inventor

Braedt and his fellow inventors on the ‘250 patent initially anticipated facing a

similar chain-suck problem as they began their design of chainrings having teeth of

differing widths. Ex. 2063, ¶6; Ex. 2002, ¶77-78.

However, in their development of a chainring having teeth of differing widths,

the inventors of the ‘250 patent configured the chainring teeth with wider widths to

interface with outer chain links. Surprisingly, when these teeth were configured to

interface with outer chain links at a greater than 80% axial fill, this resulted in the

unexpected benefit of avoiding the previously understood chain-suck issues, while

achieving greater overall functional chain retention on the chainring in aggressive

bicycle environments. Ex. 2063, ¶7.

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This type of unexpected result that gives rise to the claimed invention in

question is exactly the type of objective indicia of non-obviousness that conclusively

demonstrates the patentability of the claimed subject matter. In Leo Pharm., the

Federal Circuit was faced with similar evidence of unexpected results that, in

combination with evidence of commercial success and a long-felt need in the art,

resulted in the reversal of the Board’s finding of obviousness.

In the instant case, all of the objective indicia point to a conclusion of non-

obviousness. Ex. 2002, ¶90. These objective indicia – taken in sum – are the “most

probative evidence of non-obviousness” and should enable the Board “to avert the

trap of hindsight.” Crocs, 598 F.3d at 1310; see also Stratoflex, 713 F.2d at 1538;

Leo Pharm., 726 F.3d at 1358. Indeed, it is difficult to imagine a stronger case of

non-obviousness, given all of the objective evidence in favor of the Patent Owner

here. This powerful evidence, in conjunction with the conclusory reasoning

provided in FOX’s Petition, clearly shows that SRAM’s challenged claims are not

obvious, and the Board should deny Ground 4.

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IX. THE BOARD SHOULD EXERCISE ITS DISCRETION UNDER 35 U.S.C. § 325(d) TO DENY INSTITUTION ON GROUNDS THAT THE OFFICE HAS ALREADY CONSIDERED AND REJECTED FOX’S ARGUMENTS.11

FOX provided a copy and summary of the initial prosecution history, but

omitted any mention that Original Claim 17 was considered by the primary examiner

during prosecution of the ‘250 patent on three separate occasions, and not once did

the examiner issue a rejection under 35 U.S.C. § 112. Ex. 1010, pp. 98-108 (Non-

Final Rejection on January 15, 2014), 293-305 (Final Rejection on May 22, 2014),

701-713 (Non-Final Rejection on June 4, 2015).

Further, the ‘250 patent has been through an ex parte reexamination in which

the validity and patentability of all claims was reviewed and upheld by a different

primary examiner in conference with two other examiners. Ex. 2064, pp. 1069-76

(Non-Final Rejection on June 7, 2016); 1850-56 (Notice of Intent to Issue Ex Parte

Reexamination Certificate on August 19, 2016). FOX attached an uncertified copy

of SRAM’s response in that proceeding, but omitted any other part of the

reexamination prosecution. Thus, FOX did not inform the Board that FOX has

advanced substantially the same invalidity contentions under 35 U.S.C. § 112 in the

pending district court proceedings, and SRAM provided a copy of FOX’s invalidity

contentions to the reexamination examiner via an information disclosure statement

11 See supra note 4.

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before the reexamination certificate issued. Ex. 2064, pp. 1857-63 (Information

Disclosure Statement filed August 8, 2016), 1296-1308 (Defendant’s Initial Non-

Infringement, Unenforceability, and Invalidity Contentions). The reexamination

examiner thus had these same arguments available in reexamination and considered

them, but did not issue any rejections of new claims 13-26 (which contain limitations

identical to those complained of by FOX) under 35 U.S.C. § 112. See 37 C.F.R.

¶ 1.552(a) (new claims to be examined in view of 35 U.S.C. § 112 requirements as

well as patents and printed publications). Instead, the reexamination examiner, in

conference with two other examiners, affirmed all claims and certified the case for

reissuance. Ex. 2004, pp. 1850-56, 1876.

Additionally, JP-Shimano was considered by both the primary examiner and

reexamination examiners. See, e.g., Ex. 1010, pp. 246-56 (JP-Shimano), 307 (signed

information disclosure statement); Ex. 2064, pp. 1069-76 (rejection including JP-

Shimano); 1850-56 (Notice of Intent to Issue Ex Parte Reexamination Certificate);

1875-76 (Reexamination Certificate). In fact, during the reexamination, the

examiner specifically considered JP-Shimano in one of the principal grounds of

rejection. See, e.g., id. In each case, SRAM overcame the rejections, and the claims

were found patentable over JP-Shimano. The examiner also expressly considered

Hattan, which SRAM also provided in an information disclosure statement. Id. at

1858. Additionally, the Examiner also considered other prior art having narrow and

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wide teeth, namely, Martin (U.S. Patent No. 4,174,642), at length during

prosecution. In fact, Martin was the primary reference asserted for each rejection of

the claims during prosecution. See Ex. 1010, pp. 98-109 (rejection including

Martin), 293-305 (same), 701-13 (same), 789-800 (same). Both JP-Shimano and

Martin have similar disclosures regarding narrow and wide teeth. Further, neither

JP-Shimano nor Martin disclose any axial fill percentage for inner or outer links.

Thus, JP-Shimano is cumulative of the issues directly before the Examiner during

examination of the ‘250 patent.

This alone is grounds to deny the Petition. 35 U.S.C. § 325(d) (“In

determining whether to institute or order a proceeding under this chapter … the

Director may take into account whether, and reject the Petition or request because,

the same or substantially the same … arguments previously were presented to the

Office.”). The Board has previously denied institution on this ground. In Prism

Pharma Co., v. Choogwae Pharma Corp., the Petitioner submitted a Declaration to

the Patent Owner claiming that certain claims lacked written description support.

Prism Pharma Co., v. Choogwae Pharma Corp., IPR2014-00315, Paper 14, at *7

(July 8, 2014). The case had already been allowed and the issue fee paid, but Patent

Owner pulled the case from issuance, submitted the Declaration in an IDS, and filed

an RCE. Id. at *9. The Examiner issued a written description rejection, which the

Patent Owner overcame, and the claims were allowed. Id. at *9-11. The Petitioner

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later filed a Petition for inter partes review, on the basis that the written description

requirement was not met, making certain materials applicable prior art. Exercising

its discretion under 35 U.S.C. § 325(d), the Board denied the Petition, noting “[t]he

same art … and arguments substantially the same as Petitioner’s current contention

… were presented previously to the Office.” Id. at *12-13 (denying institution under

35 U.S.C. § 325(d)).

Here, the Petition merely repackages arguments and art already presented to

the Patent Office, and the Board should deny institution as to all grounds under

35 U.S.C. § 325(d).

X. THE BOARD SHOULD AFFORD NO WEIGHT TO THE NEPTUNE DECLARATION.

“Expert testimony that does not disclose the underlying facts or data on which

the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). The

Board has repeatedly disregarded the opinions of expert declarants who merely

provide an ipse dixit instead of substantive analysis based on evidence and

underlying facts. See, e.g., Zimmer Biomet Holdings, Inc. v. Four Mile Bay, LLC,

IPR2016-00011, Paper 8 (PTAB Apr. 1, 2016) (disregarding conclusory expert

opinion); Monsanto Co., v. Pioneer Hi-Bred Int’l, Inc., IPR2013-00022, Paper 43

(PTAB Apr. 11, 2013) (affording little weight to expert witness who withheld data

and underlying calculations); Toshiba Corp. v. Intellectual Ventures II LLC,

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IPR2014-00201, Paper 9 (PTAB May 21, 2014) (expert opinion unsupported by

evidentiary basis is “entitled to little weight”); Dell Inc., v. Elecs. & Telecommns.

Research Inst., IPR2014-00152, Paper 12 (PTAB May 16, 2014) (expert declaration

“not supported by underlying facts or data is not persuasive”). Dr. Neptune’s

declaration should be afforded no weight because his opinions are conclusory and

not supported by substantial evidence or facts.

On written description, Dr. Neptune’s entire opinion can be boiled down to

one simple (incorrect) statement: the ‘735 application describes a species12 (all teeth

are alternatingly and adjacently narrow/wide), Original Claim 1713 recites a genus

(at least some teeth are alternatingly narrow/wide), and a POSITA would therefore

not understand the inventors to have invented the genus. See, e.g., Ex. 1002, ¶28

12 As explained in Section IV, Dr. Neptune falsely misrepresents the scope of

the disclosure of the ‘735 application, which describes a broad range of

embodiments. This further demonstrates that Dr. Neptune has failed to conduct any

kind of critical analysis of the claim terms or application language, or how they

would be understood by a POSITA.

13 In the unlikely event that the Board finds jurisdiction, Dr. Neptune’s

remarks should also be disregarded with respect to FOX’s Ground 1, purporting lack

of enablement of claim 1 and 14.

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(alleging “each and every tooth of the second (narrow) group of teeth—not ‘at least

some’-is arranged alternatingly and adjacently”); ¶29 (same); ¶30 (alleging original

claims do not disclose “at least some” limitation); ¶31 (explaining other

embodiments included in the genus); ¶32 (same); ¶33 (concluding that because the

genus claimed in Claim 17 includes embodiments not described in the original

specification, a POSITA would not conclude that the inventors possessed the genus

at the time of filing). This is an unsupported legal conclusion and should be

disregarded. See, e.g., Ex Parte H. Joseph Engel, Appeal No. 98-0344, 1998 WL

1735605, at *6 (BPAI Sept. 16, 1998) (“[H]owever technically competent these

declarants may be, [declarations] are meant to present facts. They are not meant, nor

are they persuasive, to present legal conclusions.”).

Tellingly, the sole guidance provided to Dr. Neptune by FOX’s attorneys is

the “possession” articulation, which the Federal Circuit has criticized as having

“never been very enlightening.” Ariad, 598 F.3d at 1351. Further, the only real

evidence offered by Dr. Neptune is the disclosure of the ‘735 application, but the

Board is perfectly capable of reading the ‘735 application, and learns nothing from

Dr. Neptune’s ipse dixit. Although Dr. Neptune provides examples of additional

embodiments encompassed by the language of Original Claim 17, nowhere does

Dr. Neptune explain why a POSITA would not understand the specification to

disclose those embodiments. Moreover, there is plentiful Federal Circuit case law

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holding that a species can and does describe a broader genus, particularly in the

mechanical arts.

Dr. Neptune’s remarks with respect to enablement similarly add nothing to

these proceedings. Dr. Neptune again offers little more than a book report on the

contents of the ‘735 application, followed by a legal conclusion that the claims are

not enabled. Id. ¶¶35-37. Dr. Neptune does not explain, for example, how a prior

art bicycle chainring is made or why those techniques could not be used to make the

claimed chainring (they can), nor what structures or features of the claimed chainring

could not be made by a POSITA, nor how a chainring is used, much less why a

POSITA would not be able to use the claimed chainring. He attempts to tie

enablement to utility, but does not explain what additional information is required

to make and use the invention, but missing from the ‘735 specification and not

otherwise within the skill and knowledge of a POSITA. His declaration does no

more than say Original Claim 17 is not enabled because the specification does not

enable it.14

14 Dr. Neptune’s remarks on lack of enablement of similar language in

claims 1 and 14 of the ‘250 patent are similarly deficient, as they parrot the same

conclusory observations. See, e.g., Ex. 1002, ¶¶49-51.

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The Declaration is merely his ipse dixit, largely devoid of any substantive

facts, data, or analysis, and the Board should therefore afford the Neptune

Declaration little or no weight.

XI. CERTIFICATION UNDER 37 § C.F.R. 42.24(D)

This Preliminary Response complies with 37 C.F.R. § 42.24(b)(1). As

calculated by the “Word Count” feature of Microsoft Word 2010, it contains 17,501

words, excluding the words contained in the following: Table of Contents, Table of

Authorities, List of Exhibits, Certification Under 37 C.F.R. § 42.24(d), and

Certificate of Service.

XII. CONCLUSION

All claims of the ‘250 patent have adequate written description support and

are entitled to the filing date of the parent application, rendering the ‘250 patent

ineligible for post-grant review. Further, all claims are patentable and nonobvious

over the submitted art, which is merely cumulative and duplicative of art already

considered by the Office. The Board should deny institution of this PGR review.

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Date: January 9, 2017 Respectfully submitted, LEWIS RICE LLC By:

Michael J. Hickey, Reg. No. 51,801 Kirk A. Damman, Reg. No. 42,461 Benjamin J. Siders, Reg. No. 70,411 600 Washington Ave., Suite 2500 St. Louis, MO 63101 Telephone: (314) 444-7600 Facsimile: (314) 241-6056 [email protected] [email protected] [email protected] Attorneys for Patent Owner, SRAM, LLC

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CERTIFICATE OF SERVICE

The undersigned certifies that the foregoing Preliminary Response by Patent

Owner, and Exhibits 2001 through 2067 were served on January 9, 2016, by Federal

Express at the following address of record for Lead Counsel for Petitioner. Joshua L. Goldberg Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 901 New York Avenue, N.W. Washington, DC 20001-4413 By:

Michael J. Hickey, Reg. No. 51,801

Attorneys for Patent Owner, SRAM, LLC

Page 87 of 87

Documents

Case No. PGR2016-00043 United States Patent No. 9,291,250 … · 2017. 5. 17. · Exhibit 2021: “2014 Editors’ Choice Award – X01 Groupset”, DirtRag Magazine. 20 Nov. 2014