DCT
2:22-cv-04805
Fox Factory Inc v. SRAM LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Fox Factory, Inc. (California)
- Defendant: SRAM, LLC (Delaware)
- Plaintiff’s Counsel: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
- Case Identification: 2:22-cv-04805, C.D. Cal., 11/30/2022
- Venue Allegations: Venue is alleged based on Defendant SRAM’s regular and established place of business in San Luis Obispo, California, within the district, where it engages in product development, testing, and marketing, and where it sells the accused products.
- Core Dispute: Plaintiff alleges that Defendant’s high-performance bicycle suspension forks and rear shocks infringe patents related to an air pressure equalization system and an adjustable, position-sensitive damping mechanism.
- Technical Context: The technology concerns advanced suspension systems for vehicles, particularly mountain bikes, where managing internal air pressure changes due to elevation and controlling end-of-stroke damping are critical for performance and ride quality.
- Key Procedural History: The complaint alleges that Plaintiff Fox Factory began marking its products covered by the '331 patent at least as early as July 17, 2020. It further alleges that Defendant SRAM was aware of both patents-in-suit before offering its accused products for sale and copied the invention of the '331 patent following the commercial success of Plaintiff’s products.
Case Timeline
| Date | Event |
|---|---|
| 2008-05-09 | U.S. Patent No. 8,550,223 Priority Date |
| 2012-05-09 | U.S. Patent No. 9,739,331 Priority Date |
| 2013-10-08 | U.S. Patent No. 8,550,223 Issued |
| 2017-08-22 | U.S. Patent No. 9,739,331 Issued |
| 2020-07-17 | Plaintiff began marking products under '331 patent |
| 2022-11-30 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,739,331 - Method and Apparatus for an Adjustable Damper
Issued August 22, 2017
The Invention Explained
- Problem Addressed: The patent describes how a suspension fork assembled at one elevation (e.g., sea level) traps air inside. When the fork is taken to a higher elevation, the lower external ambient pressure creates a pressure differential. This differential pressure increases the load on the fork's seals, which in turn "creates significantly higher axial friction in the telescoping suspension fork," degrading performance (Compl. ¶14; ’331 Patent, col. 1:46-54).
- The Patented Solution: The invention is an "air bleed assembly" integrated into the lower fork tube. This assembly features a manually operable valve that, when activated by the user, creates a temporary passage between the fork's interior and the exterior. This allows the trapped internal air pressure to equalize with the local ambient pressure, restoring the fork to a lower-friction state. The assembly is positioned specifically to avoid the expulsion of the fork's internal oil bath lubrication during this process (’331 Patent, Abstract; col. 4:3-13).
- Technical Importance: This technology allows a rider to easily "restore a lower-friction fork" on-the-fly, counteracting performance degradation caused by changes in altitude and improving suspension responsiveness (’331 Patent, col. 4:63-65).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶24).
- Essential elements of independent claim 1 include:
- A lower fork tube configured for telescopic engagement with an upper fork tube.
- A lower leg seal at the outermost edge of the lower fork tube.
- An upper bushing positioned adjacent to the lower leg seal.
- An air bleed assembly on the lower fork tube, which itself comprises:
- a fluid passage between the interior and exterior of the lower fork.
- a manually operable valve that can open and close this passage.
- The valve is specifically disposed "between said lower leg seal and said first end of said lower fork" and "at a distance from an oil bath lubrication" so that most, if not all, of the oil remains inside when the valve is operated.
- The complaint reserves the right to assert additional claims (Compl. p. 17, ¶A).
U.S. Patent No. 8,550,223 - Methods and Apparatus for Position Sensitive Suspension Dampening
Issued October 8, 2013
The Invention Explained
- Problem Addressed: Vehicle suspension systems must prevent "bottom out," a condition where the suspension fully compresses, causing a harsh impact. However, solutions that simply increase overall damping can make the ride harsh and unresponsive. The patent notes a need for a system that can be adjusted by the user "on the fly" to mitigate bottom out, especially as damping fluid changes viscosity with temperature (’223 Patent, col. 1:50-64; col. 2:28-33).
- The Patented Solution: The patent discloses a damper containing a "bottom out cup" at the end of the compression chamber. As a piston enters this cup near the end of the compression stroke, the flow of damping fluid is restricted, creating additional, position-sensitive damping. The core of the solution is an "adjustable fluid meter" or valve that controls a fluid flow path leading out of this cup. This allows a user to externally adjust the amount of bottom-out damping without affecting the suspension's behavior during the rest of its travel (’223 Patent, Abstract; col. 2:48-56).
- Technical Importance: The invention provides a "readily accessible and user adjustable secondary dampening arrangement" that gives riders control over the end-of-stroke performance to prevent harsh impacts (’223 Patent, col. 2:33-35).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶42).
- Essential elements of independent claim 1 include:
- A damper chamber divided by a piston and shaft into compression and rebound portions.
- A "bottom out cup" formed at an end of the compression portion.
- A "fluid flow path formed in the bottom out cup" that provides fluid communication from the cup to the compression portion during a compression stroke.
- The capacity of this fluid flow path is "adjustable."
- The complaint reserves the right to assert additional claims (Compl. p. 17, ¶B).
III. The Accused Instrumentality
Product Identification
- The "Accused Forks": SRAM's RockShox Lyrik, Pike, and ZEB series of bicycle suspension forks (Compl. ¶17).
- The "Accused Shocks": SRAM's Super Deluxe Coil series of rear shocks (Compl. ¶22).
Functionality and Market Context
- The Accused Forks are high-performance front suspension components for mountain bikes. The complaint alleges they incorporate "Pressure Relief Valves (PRV)" which function as an air bleed assembly on the lower fork tube to equalize pressure (Compl. ¶¶ 14, 28-29). An exemplary photo from SRAM's materials shows the installation of these optional PRVs on certain fork models (Compl. p. 7).
- The Accused Shocks are high-performance rear suspension components. The complaint alleges they include an "adjustable hydraulic bottom out mechanism" that allows a user to adjust the damping characteristics at the end of the compression stroke (Compl. ¶¶ 21, 46). The complaint includes a photograph illustrating a "Needle and Cam to adjust fluid flow capacity" as the allegedly infringing adjustable feature (Compl. p. 15).
- The complaint positions Fox and SRAM as direct competitors and alleges that SRAM only introduced forks with an air bleed assembly after observing the commercial success of Fox's patented products (Compl. ¶¶ 15-16).
IV. Analysis of Infringement Allegations
'331 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a lower fork... configured to have a first end coupled to a vehicle wheel, and a second end configured to be telescopically engaged with a first end of an upper fork... | The RockShox Lyrik Ultimate fork has a lower fork tube that connects to a wheel and telescopically engages an upper fork tube. | ¶25 | col. 8:41-48 |
| a lower leg seal located at an outermost edge of said second end of said lower fork tube, said lower leg seal configured for sealing closed a gap... | The accused fork includes a lower leg seal at the top of the lower fork tube to seal the gap with the upper tube and prevent oil leakage. | ¶26 | col. 8:45-53 |
| an upper bushing attached to and positioned adjacent to said lower leg seal | The accused fork includes an upper bushing positioned inside the lower fork tube, adjacent to the seal. An image with a callout identifies the "Upper bushing (inside accused product)" (Compl. p. 9). | ¶27 | col. 8:53-55 |
| an air bleed assembly disposed on said lower fork tube, said air bleed assembly configured for equalizing ambient pressure within said lower fork... | The accused fork includes an air bleed assembly, referred to as a Pressure Relief Valve (PRV), on the lower fork tube for equalizing pressure. | ¶28 | col. 8:56-59 |
| a fluid passage disposed between an interior of said lower fork and an exterior of said lower fork | The air bleed assembly includes a fluid passage connecting the interior and exterior of the fork. | ¶29 | col. 8:61-63 |
| a manually operable valve... having a first position substantially closing said fluid passage and a second position allowing a fluid to flow... | The assembly has a manually operable valve (push button) with closed and open positions. A photo shows a finger pressing the button to operate the valve (Compl. p. 10). | ¶¶ 30-31 | col. 8:63-65 |
| said manually operable valve disposed between said lower leg seal and said first end of said lower fork, and wherein said fluid passage and said manually operable valve are located at a distance from an oil bath lubrication... | The valve is allegedly located away from the internal oil bath lubrication, such that when operated, trapped air is relieved while "most, if not all" of the oil remains inside. | ¶32 | col. 5:1-18 |
Identified Points of Contention
- Technical Question: A key factual question will be whether the accused PRV system meets the specific positional limitations of claim 1. The court will examine evidence regarding the valve's location relative to both the "lower leg seal" and the internal "oil bath lubrication" to determine if, during operation, "most, if not all" of the lubrication remains within the fork as required by the claim.
- Scope Question: Does the term "air bleed assembly" as claimed, which includes precise locational and functional limitations, read on the accused "Pressure Relief Valves"? The analysis may focus on whether there are any operational or structural distinctions that place the accused product outside the literal scope of the claim.
'223 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a damper chamber divided by a piston and shaft into a compression and rebound portions | The accused shock includes a damper chamber divided by a piston and shaft. A photo shows the disassembled damper components (Compl. p. 14). | ¶43 | col. 7:41-43 |
| a bottom out cup formed at an end of the compression portion | The accused shock includes a bottom out cup at the end of the compression portion of the damper. | ¶44 | col. 7:44-45 |
| a fluid flow path formed in the bottom out cup for providing fluid communication from the cup to the compression portion of the chamber during a compression stroke of the damper | The accused shock has a fluid flow path in the bottom out cup for fluid to move to the compression portion. An annotated photo purports to show this "Fluid Path" (Compl. p. 15). | ¶45 | col. 7:46-49 |
| wherein the capacity of the fluid flow path is adjustable | The capacity of the fluid flow path is adjustable via a "Needle and Cam" mechanism. | ¶46 | col. 7:50-52 |
Identified Points of Contention
- Scope Question: The claim requires the "fluid flow path" to be "formed in the bottom out cup." A central dispute may be whether the accused shock's adjustable flow path is structurally "in" the cup itself, or if it is located elsewhere in the assembly in a way that might fall outside the claim's literal language.
- Technical Question: Does the accused "Needle and Cam" mechanism (Compl. p. 15) actually adjust the "capacity" of the specific "fluid flow path" that provides communication from the cup to the compression chamber, or does it control a different fluid circuit or operate in a manner technically distinct from that required by the claim?
V. Key Claim Terms for Construction
For the '331 Patent
- The Term: "disposed between said lower leg seal and said first end of said lower fork"
- Context and Importance: This term defines the physical location of the claimed valve. Its construction is critical because infringement requires the accused valve to be located in this specific zone of the fork lower. Practitioners may focus on this term because it is a precise spatial limitation that could be a point of non-infringement if the accused valve is located elsewhere, for example, above the lower leg seal.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint does not provide a basis for a broad interpretation, as the language is spatially specific. Parties might argue about the exact boundaries of the "first end," but the claim is facially limiting.
- Evidence for a Narrower Interpretation: The claim language itself is highly specific. Furthermore, the patent's description and figures (e.g., FIG. 4) explicitly show the air bleed assembly (300) located on the lower fork tube (118), well below the lower leg seal (135), to ensure that the oil bath (140) is not expelled when the valve is operated (’331 Patent, col. 4:3-13).
For the '223 Patent
- The Term: "fluid flow path formed in the bottom out cup"
- Context and Importance: This term dictates the structural relationship between the adjustable flow path and the bottom out cup. The infringement analysis depends on whether the accused product's adjustable circuit is physically "formed in" the cup. Practitioners may focus on this term as it ties the adjustable function directly to a specific component, creating a potential path to argue non-infringement if the accused adjustable mechanism is a separate component that merely communicates with the cup.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue "formed in" does not require the path to be monolithically integrated, but rather that it be part of the functional assembly that constitutes the "bottom out cup." The specification states the cup and piston operate with "various dampening devices including a pressure relief or 'blow off' valve and a user-adjustable metering valve" (’223 Patent, col. 3:45-48), which might suggest these are components of the overall cup system.
- Evidence for a Narrower Interpretation: The plain language of the claim suggests the path is a physical feature of the cup itself. The patent's figures appear to support this, showing flow paths (301, 302) originating from within the body of the bottom out cup component (275) (’223 Patent, FIG. 3A-3C; col. 4:30-41).
VI. Other Allegations
- Indirect Infringement: For both the '331 and '223 patents, the complaint alleges induced infringement based on SRAM's alleged pre-suit knowledge of the patents and affirmative acts of encouragement, such as providing user manuals, marketing materials, and instructions for use to distributors and end-users (Compl. ¶¶ 34, 48). For the '331 patent, inducement is also alleged based on the sale of "upgrade kits" with instructions for end-users to modify their forks to perform the infringing combination (Compl. ¶35). Contributory infringement is alleged on the basis that the Accused Forks, Shocks, and upgrade kits are not staple articles of commerce and lack substantial non-infringing uses (Compl. ¶¶ 36, 37, 49).
- Willful Infringement: Willfulness is alleged for both patents based on SRAM's purported pre-suit knowledge of the patents and of the infringing nature of its products (Compl. ¶¶ 38, 50). The allegation that SRAM "copied FOX's patented invention" for the '331 patent after observing its commercial success is a key factual assertion supporting the willfulness claim (Compl. ¶15).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural limitation: For the '331 patent, does the accused "Pressure Relief Valve" meet the claim's precise spatial requirement of being "disposed between said lower leg seal and said first end of said lower fork"? For the '223 patent, is the accused adjustable flow path "formed in the bottom out cup" itself, or is it a separate component that merely communicates with the cup?
- A key evidentiary question will be one of causation and intent: Can Fox Factory substantiate its allegation that SRAM willfully infringed, particularly the claim that SRAM copied the '331 invention after observing its market success? The answer will heavily influence the potential for enhanced damages.
- Finally, the case may turn on a question of technical operation: Does the evidence show that the accused products function in the specific manner required by the claims? For example, does operating the '331 patent's accused valve leave "most, if not all" of the oil inside the fork, and does the '223 patent's accused mechanism adjust the "capacity" of the claimed fluid path?