Case: 19-1544 Document: 51 Page: 1 Filed: 05/18/2020
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
FOX FACTORY, INC.,
Appellant
v.
SRAM, LLC,
Appellee
______________________
2019-1544
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2017-
01440.
______________________
Decided: May 18, 2020
______________________
ERIK R. PUKNYS, Finnegan, Henderson, Farabow, Gar-
rett & Dunner, LLP, Palo Alto, CA, for appellant. Also rep-
resented by ARPITA BHATTACHARYYA, ROBERT F.
MCCAULEY; JOSHUA GOLDBERG, DANIEL FRANCIS
KLODOWSKI, Washington, DC.
RICHARD BENNETT WALSH, JR., Lewis Rice LLC, St.
Louis, MO, for appellee. Also represented by MICHAEL
HENRY DURBIN, MICHAEL JOHN HICKEY.
______________________
Case: 19-1544 Document: 51 Page: 2 Filed: 05/18/2020
2 FOX FACTORY, INC. v. SRAM, LLC
Before LOURIE, MAYER, and WALLACH, Circuit Judges.
LOURIE, Circuit Judge.
Fox Factory, Inc., appeals from a final written decision
of the Patent Trial and Appeal Board (the “Board”), holding
claims 1–26 of U.S. Patent 9,291,250 (the “’250 patent”) not
unpatentable as obvious. Fox Factory, Inc. v. SRAM, LLC,
No. IPR2017-01440, (P.T.A.B. Dec. 6, 2018), Paper 62 (“De-
cision”). Because the Board’s fact findings are supported
by substantial evidence and its conclusion of nonobvious-
ness is correct, we affirm.
BACKGROUND
The parties to this appeal, Fox Factory and SRAM,
LLC, are competitors in the bicycle market. Over the past
decade, SRAM has introduced several improvements in bi-
cycle design that have enabled it to market bicycles with a
solitary chainring (the “X-Sync chainring”), a set-up previ-
ously thought to be too arduous for all but a few bicyclists.
The solitary chainring set-up does not require the roller
chain to switch between chainrings when the rider shifts
gears, so the chainring can be optimized to fit snugly into
the roller chain. In particular, a conventional roller chain
has chain links that are alternatingly narrow and wide, so
SRAM designed a chainring to have a standard set of teeth
and a widened set to fit into the link spaces. SRAM’s X-
Sync chainring has been extensively praised for its chain
retention even in trying conditions. J.A. 5682–83.
SRAM has received numerous patents for its inven-
tions relating to bicycles. The ’250 patent discloses that the
standard bicycle chain has alternating inner and outer
links, and the outer links have a much wider space in the
center. Yet conventional chainrings have teeth that are the
same size; thus, the teeth fit too loosely into the outer link
spaces. The ’250 patent proposes a single chainring with
alternating teeth, one conventional set that fits the inner
Case: 19-1544 Document: 51 Page: 3 Filed: 05/18/2020
FOX FACTORY, INC. v. SRAM, LLC 3
chain links and one widened set that fits the outer chain
links—specifically disclosing that the widened set should
fill 75% or more of the width of the outer chain links. Claim
1 is illustrative:
1. A bicycle chainring of a bicycle crankset for en-
gagement 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 chain-
ring;
the plurality of teeth including a first group of teeth
and a second group of teeth, each of the first group
of teeth wider than each of the second group of
teeth; and
at least some of the second group of teeth arranged
alternatingly and adjacently between the first
group of teeth,
wherein the drive chain is a roller drive chain in-
cluding alternating outer and inner chain links de-
fining 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 be-
tween 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.
’250 patent col. 6 l. 50–col. 7 l. 4.
SRAM asserted the ’250 patent, along with its parent,
U.S. Patent 9,182,027 (the “’027 patent”), against Fox Fac-
tory and its subsidiary, Race Face Performance Products,
in the United States District Court for the Northern Dis-
trict of Illinois. See SRAM, LLC v. Race Face Performance
Case: 19-1544 Document: 51 Page: 4 Filed: 05/18/2020
4 FOX FACTORY, INC. v. SRAM, LLC
Prods., No. 1-15-cv-11362 (N.D. Ill. Dec. 17, 2015), ECF No.
1; SRAM, LLC v. Race Face Performance Prods., No. 1-16-
cv-05262 (N.D. Ill. Dec. 17, 2015), ECF No. 1. The ’027 pa-
tent also claims a bicycle chainring where every other tooth
is widened, but the claims do not specify the degree to
which these teeth are widened, and they also require the
teeth to be offset.
Fox Factory petitioned for inter partes review of the
’250 and ’027 patents on the ground of obviousness. In the
’250 patent IPR, Fox Factory cited a Japanese patent pub-
lication, JP S56-42489 (“Shimano”), and U.S. Patent
3,375,022 (“Hattan”). Shimano was laid open in 1981 and
teaches a bicycle chainring with widened teeth to fit into
the outer chain links of a conventional roller chain. J.A.
951–52. Hattan describes an elliptical chainring and dis-
closes that the chainring’s teeth should fill between 74.6%
and 96% of the inner chain link space.
Id. col. 7 ll. 52–65.
Fox Factory contended that the ’250 patent claims would
have been obvious because a skilled artisan would have
seen the utility in designing a chainring with widened
teeth to improve chain retention, as taught by Shimano,
and he would have looked to Hattan’s teaching that the
chainring teeth should fill between 74.6% and 96% of the
chain link space.
In the ’027 patent IPR, the Board held the challenged
claims not unpatentable as obvious. Fox Factory, Inc. v.
SRAM, LLC,
2018 WL 1889561, at *21 (P.T.A.B. Apr. 18,
2018). We vacated the Board’s decision because it applied
the wrong legal standard for evaluating the relevance of
secondary considerations to obviousness. Fox Factory, Inc.
v. SRAM, LLC,
944 F.3d 1366, 1373–78 (Fed. Cir. 2019).
We noted the inconsistency of SRAM’s arguing, in the ’027
and ’250 patent IPRs, for the nonobviousness of each pa-
tent based upon the same secondary considerations evi-
dence. See
id. at 1378 (“The same evidence of secondary
considerations cannot be presumed to be attributable to
two different combinations of features.” (citing Therasense,
Case: 19-1544 Document: 51 Page: 5 Filed: 05/18/2020
FOX FACTORY, INC. v. SRAM, LLC 5
Inc. v. Becton, Dickinson & Co.,
593 F.3d 1289, 1299 (Fed.
Cir. 2010))).
Meanwhile, in the ’250 patent IPR, the Board rejected
Fox Factory’s obviousness challenge, finding the claimed
invention’s “axial fill limitation”—that the widened teeth
“fill[] at least 80 percent of [the width of] the outer link
spaces” at the midpoint of the tooth—unmet by any of Fox
Factory’s evidence. The Board found instead that Hattan
only taught filling between 74.6% and 96% of the width at
the bottom of the tooth. Decision, slip op. at 34. The Board
then found, after a thorough review of SRAM’s evidence of
secondary considerations, that SRAM’s showing rebutted
Fox Factory’s argument that a skilled artisan nevertheless
would have found it obvious to modify the chainring’s teeth
to meet the axial fill limitation.
Id., slip op. at 68–71.
Fox Factory timely appealed. We have jurisdiction
pursuant to 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
We review the Board’s legal determinations de novo, In
re Elsner,
381 F.3d 1125, 1127 (Fed. Cir. 2004), but we re-
view the Board’s factual findings underlying those deter-
minations for substantial evidence, In re Gartside,
203 F.3d
1305, 1316 (Fed. Cir. 2000). A finding is supported by sub-
stantial evidence if a reasonable mind might accept the ev-
idence as adequate to support the finding. Consol. Edison
Co. v. NLRB,
305 U.S. 197, 229 (1938).
The sole issue presented in this appeal is obviousness.
Obviousness is a question of law that “lends itself to several
basic factual inquiries,” Graham v. John Deere Co.,
383
U.S. 1, 17–18 (1966) (citing Great Atl. & Pac. Tea Co. v.
Supermarket Equip. Corp.,
340 U.S. 147, 155 (1950)), in-
cluding the scope and content of the prior art, the level of
ordinary skill in the art, differences between the prior art
and the claimed invention, and any relevant secondary con-
siderations.
Id. The Supreme Court has held that “a
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6 FOX FACTORY, INC. v. SRAM, LLC
patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, in-
dependently, known in the prior art.” KSR Int’l Co. v. Te-
leflex Inc.,
550 U.S. 398, 418 (2007). Instead, there must
have been “an apparent reason to combine the known ele-
ments in the fashion claimed by the patent at issue.”
Id. at
417–18. Such a reason exists if the claimed invention
“‘simply arranges old elements with each performing the
same function it had been known to perform’ and yields no
more than one would expect from such an arrangement.”
Id. (quoting Sakraida v. Ag-Pro, Inc.,
425 U.S. 273, 285
(1976)).
Fox Factory argues that the Board’s conclusion of non-
obviousness is in error because the only difference between
the prior art and the claimed invention is the degree to
which the widened teeth should fill the outer chain link
spaces, measured halfway up the tooth. Fox Factory fur-
ther maintains that the Board misapplied our precedent on
secondary considerations, erroneously granting SRAM a
presumption of nexus between the claimed invention and
evidence of the success of the X-Sync chainring. In partic-
ular, Fox Factory argues that various unclaimed aspects of
the X-Sync chainring, such as its tall, asymmetric, and
hooked teeth, were the real driver of its success.
SRAM responds that Fox Factory failed to provide any
prior art that rendered the axial fill limitation obvious to a
skilled artisan. It further contends that the Board cor-
rectly credited its evidence of secondary considerations be-
cause it found that the X-Sync chainring’s widened teeth
were responsible for its success, and that is the novel fea-
ture of the claimed chainring.
We agree with SRAM. While Fox Factory is correct
that “a mere change in proportion . . . involve[s] no more
than mechanical skill,” rather than the level of invention
required by 35 U.S.C. § 103, Powers-Kennedy Contracting
Corp. v. Conveying Co.,
282 U.S. 175, 185 (1930), the Board
Case: 19-1544 Document: 51 Page: 7 Filed: 05/18/2020
FOX FACTORY, INC. v. SRAM, LLC 7
found that SRAM’s optimization of the X-Sync chainring’s
teeth, as claimed in the ’250 patent, displayed significant
invention. It based its conclusion on secondary considera-
tions that strongly indicated that the X-Sync chainring’s
success surprised skilled artisans. Decision, slip op. at 51–
59 (discussing industry skepticism and subsequent praise,
and long-felt need to solve chain retention problem); see
also J.A. 5682 (awarding “Innovation of the Year” to SRAM
for the X-Sync chainring and noting that “the entire con-
cept can be related in a single phrase—[t]he chainring’s
teeth are shaped to match the widths of the chain links”).
The Board did not err in concluding that such evidence de-
feated SRAM’s contention of routine optimization.
We further reject Fox Factory’s argument that our pre-
vious decision on the ’027 patent necessarily requires vaca-
tur here. In that case, this court held that the Board
misapplied the legal requirement, incumbent upon patent
owners, of showing a nexus between evidence of secondary
considerations and the obviousness of the claims of that
that patent—in particular, the requirement that the prod-
uct from which the secondary considerations arose is “co-
extensive” with the claimed invention. Fox
Factory, 944
F.3d at 1373–78. Contrary to the Board’s view, we reaf-
firmed in that case that a product is not coextensive with a
claimed invention simply because it falls within the scope
of the claim.
In this IPR, SRAM argued to the Board that the >80%
gap-filling aspect of the X-Sync chainring was crucial to its
success. Given that concession, we concluded in our previ-
ous Fox Factory opinion—on the ’027 patent—that no rea-
sonable factfinder could decide that the X-Sync chainring
was coextensive with a claim that made no mention of that
feature.
Id. at 1374 (“[B]ecause the independent claims of
the ’027 patent do not recite this >80% gap filling feature,
the independent claims are not coextensive with the X-
Sync chainrings.”). Thus, we vacated the Board’s decision
in the ’027 patent IPR and remanded for the Board to
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8 FOX FACTORY, INC. v. SRAM, LLC
address obviousness consistent with the law we have set
forth on the presumption of nexus.
Id. at 1380.
But the critical facts differ in this case—most obviously
in that the ’250 patent claims recite the >80% axial fill lim-
itation. The unclaimed features that Fox Factory alleges
contributed to the X-Sync chainring’s success—the general
concept of narrow-wide teeth that existed in the art and the
hooks and protrusions of the teeth on the X-Sync chain-
ring—are to some extent incorporated into the >80% axial
fill limitation. See, e.g., Decision, slip op. at 43–44, 54. Fox
Factory also does not attach any particular significance to
the teeth offset feature claimed in the ’027 patent, and the
record does not reflect that it was significant.
We conclude that, whether or not the Board properly
allocated the burden of showing or rebutting nexus, sub-
stantial evidence supports its findings on secondary consid-
erations, particularly the skepticism and later praise of
industry and long-felt need. We also conclude that sub-
stantial evidence supports the Board’s determination of
nexus, based on its finding that the X-Sync chainring’s suc-
cess is largely due to its teeth profile, which is “essentially
the claimed invention,” see Fox
Factory, 944 F.3d at 1374,
of the ’250 patent. On this record, it makes no difference
that the patent owner chose to claim those innovations in
terms of how much of the outer chain link space is filled by
the widened teeth. In view of the Board’s findings on sec-
ondary considerations, we agree with its conclusion that
the ’250 patent claims would not have been obvious.
CONCLUSION
We have considered the parties’ remaining arguments
but find them unpersuasive. For the foregoing reasons, the
decision of the Board is
AFFIRMED
