In FOX Factory, Inc. v. SRAM, LLC, Case Nos. 2018-2024, 2018-2025 (Fed. Cir. December 18, 2019), the Federal Circuit determined that the Board erroneously presumed a nexus between evidence of secondary considerations and the challenged independent claims. Petitioner FOX appealed the decisions of the Board in two inter partes reviews. While the Board had found that the prior art references asserted by FOX discloses all the limitations of the challenged patent's independent claims, and that a skilled artisan would have been motivated to combine the asserted prior art, the Board nevertheless concluded, based on its analysis of secondary considerations, that FOX had not shown that the challenged claims would have been obvious. In light of its determination, the Federal Circuit vacated the Board's nonobviousness determination and remanded for further proceedings.
The challenged patent was directed to improvements in bicycle chainrings. Chainrings are the toothed disks to which the bicycle crankarms are attached. Pedaling the crankarms rotates the chainring, which engages with and rotates the chain. Chains can be susceptible to disengaging from the chainring, a problem especially prevalent with geared bicycles which experience severe changes in chain tension and energy motion of the chain. Bicycles have employed extraneous structures, such as chain guides, to improve chain retention.
The challenged claims were generally directed to an improved chainring structure that better maintains the chain, obviating the need for extraneous structures. The patent discloses a chainring with alternating narrow and wide tooth tips, which allegedly improves chain retention because the narrow and wide teeth better fit inside the inner and outer chain links, respectively. In addition, the patent discloses teeth offset from the center of the chainring, which also purportedly improves chain retention by providing "better guiding of the chain to one side of the chainring."
Patent Owner, SRAM, submitted secondary considerations evidence pertaining to products alleged to embody the patented features. The Board determined that SRAM was entitled to a presumption of nexus between the challenged outboard offset claims and secondary considerations evidence. On appeal, FOX contends that the Board applied the wrong standard for determining whether SRAM was entitled to a presumption of nexus between the challenged claims and SRAM's evidence of secondary considerations.
FOX asserted that the SRAM products included unclaimed features and, as such, were not coextensive with the challenged claims. The Federal Circuit agreed. The Federal Circuit noted that a presumption of a nexus is appropriate only where the product is essentially the claimed invention. Ultimately, the degree of correspondence between a product and a patent claim falls on a spectrum. Here. The Federal Circuit concluded that no reasonable trier of fact could have found that the products were coextensive with the patent claims, noting that SRAM's own assertion concerning its products emphasized as "critical" features not found in the challenged claims.
Specifically, the Federal Circuit noted that the same product purportedly embodied the technology claimed in a continuation of the challenged patent. This continuation separately patented refinements of the design recited in the challenged claims. As such, the Federal Circuit concluded that the claims of each patent did not cover the "same invention."
Although we do not require the patentee to prove perfect correspondence to meet the coextensiveness requirement, what we do require is that the patentee demonstrate that the product is essentially the claimed invention.
The Federal Circuit cautioned that its decision should not be interpreted as a holding that the mere existence in a commercial product of unclaimed features precludes a presumption of a nexus. However, in the case before it, the Federal Circuit noted the these unclaimed features "materially impact[ed]" the functionality of those products—an impact that could not be ignored.
The Federal Circuits decision highlights for Patent Owner's the importance of laying a solid, evidentiary foundation for any alleged secondary factors evidence.
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