FOX FACTORY, INC. v. SRAM, LLC
- Dec 18 2019 |
- Category: CAFC Updates
FOX appeals the decisions of the Patent Trial and Appeal Board (“Board”) in two inter partes reviews (“IPRs”) of certain claims of U.S. Patent No. 9,182,027 relating to improved bicycle chainring structures. The Board found that the prior art references asserted by FOX disclose all the limitations of the ’027 patent’s independent claims and that a skilled artisan would have been motivated to combine the asserted prior art. The Board nevertheless concluded, based on its analysis of secondary considerations, that FOX had not shown that the challenged claims would have been obvious. The CAFC finds that the Board erred in presuming nexus between the independent claims of the ’027 patent and secondary considerations evidence pertaining to SRAM’s X-Sync chainrings, noting that the lack of coextensiveness between the independent claims of the ’027 patent and SRAM’s X-Sync prior art chainrings appears to extend far beyond the gap filling feature to additional unclaimed features. On remand, SRAM will have the opportunity to prove nexus be-tween the challenged independent claims and the evidence of secondary considerations. Thus, the CAFC vacates the Board’s obviousness determinations, and remands for the Board to reevaluate the import of the evidence of secondary considerations with the burden of proving nexus placed on the correct party and to consider the non-instituted grounds.