Fox Factory, Inc. v. Sram, LLC
944 F.3d 1366
| Fed. Cir. | 2019Background:
- SRAM owns U.S. Patent No. 9,182,027 (the '027 patent) claiming chainrings with alternating narrow/wide teeth and teeth offset inboard or outboard; independent claims at issue recite those combinations without certain other features disclosed in the specification.
- SRAM also owns U.S. Patent No. 9,291,250 (the '250 patent), a continuation claiming the narrow/wide teeth plus a >80% gap-filling limitation that SRAM described as “critical” and the “heart” of the ’250 claims.
- SRAM markets X‑Sync chainrings; those products embody the asserted offset claims but also include unclaimed features (e.g., >80% gap filling, forward‑protruding tips, hooks, mud‑clearing recesses) that SRAM’s own materials and the ’027/'250 specifications link to improved chain retention.
- FOX petitioned for two IPRs challenging claims of the ’027 patent; the PTAB found asserted prior art (JP‑Shimano and Parachinni) disclosed the claimed features and that a skilled artisan would be motivated to combine them, but the Board concluded secondary considerations rebutted obviousness after presuming nexus to SRAM’s X‑Sync evidence.
- The Federal Circuit held the Board erred in presuming a nexus between SRAM’s X‑Sync evidence and the ’027 independent claims because the products are not coextensive with those claims (they include material, unclaimed features, including the >80% gap‑filling claimed in the ’250 patent).
- The court vacated and remanded the obviousness decisions (and remanded one IPR for consideration of non‑instituted grounds under SAS), placing the burden on SRAM to prove nexus; the court nevertheless affirmed the Board’s motivation‑to‑combine finding.
Issues:
| Issue | FOX's Argument | SRAM's Argument | Held |
|---|---|---|---|
| Whether a presumption of nexus to secondary considerations was proper | Board applied wrong, overly permissive coextensiveness standard; X‑Sync products are not coextensive with ’027 claims because they include material unclaimed features | Nexus presumption appropriate because the claims broadly cover the product; unclaimed features are rebuttal evidence only | Court: vacated Board. Nexus presumption improper because products are not coextensive; SRAM must prove nexus on remand |
| Whether unclaimed features (including >80% gap filling) prevent presumption of nexus | These unclaimed features are ‘‘critical’’ and materially affect functionality; presence of separate ’250 patent claiming >80% gap filling shows lack of coextensiveness | Existence of unclaimed features does not automatically preclude presuming nexus; mere claim‑drafting differences should not control | Court: unclaimed, material features (esp. >80% gap filling) defeat coextensiveness; Board erred in presuming nexus |
| Whether a skilled artisan would be motivated to combine JP‑Shimano and Parachinni | FOX disputed motivation | FOX’s expert declarations and Board found motivation to combine because combination better addresses chain drop | Court: affirmed Board—substantial evidence supports motivation‑to‑combine finding |
| Whether remand is required under SAS for non‑instituted grounds | FOX moved to remand after SAS decision | SRAM argued FOX waived SAS objection | Court: remand IPR2017‑00118 for Board to consider non‑instituted grounds; FOX did not waive SAS objection |
Key Cases Cited
- Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387 (Fed. Cir. 1988) (presumption of nexus requires product "is the invention disclosed and claimed"; coextensiveness requirement)
- Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1289 (Fed. Cir. 2010) (related‑patent considerations in nexus analysis; product embodying multiple patented inventions affects presumption)
- Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056 (Fed. Cir. 2018) (describing when product ‘‘embodies’’ and is coextensive with claimed features for nexus presumption)
- Graham v. John Deere Co. of Kan. City, 383 U.S. 1 (1966) (framework for obviousness analysis)
- WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339 (Fed. Cir. 1999) (patentee bears burden to show nexus between evidence and claim scope)
- Ethicon Endo‑Surgery, Inc. v. Covidien LP, 812 F.3d 1023 (Fed. Cir. 2016) (for combination claims, patentee must tie secondary considerations to the claimed combination)
- PPC Broadband, Inc. v. Corning Optical Communications RF, LLC, 815 F.3d 734 (Fed. Cir. 2016) (discussed by Board/SRAM re: relevance of unclaimed features but court here declined to adopt overly broad approach)