DCT
1:23-cv-00313
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: Plaintiff alleges venue is proper in the Central District of California because Defendant maintains a regular and established place of business in San Luis Obispo, where it conducts product development, testing, and marketing, and because it sells the accused products in the district through numerous authorized dealers.
- Core Dispute: Plaintiff alleges that Defendant’s high-performance bicycle suspension forks and rear shocks infringe two patents related to, respectively, an air pressure equalization system and an adjustable position-sensitive damping mechanism.
- Technical Context: The technology concerns advanced suspension systems for high-performance bicycles, a market where precise, user-adjustable control over damping and spring characteristics is critical to performance.
- Key Procedural History: The complaint alleges Defendant was aware of the patents-in-suit and launched the accused products after observing the commercial success of Plaintiff's patented products. Plaintiff alleges it began providing notice via virtual patent marking for its '331 patent-related products on July 17, 2020.
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. 8550223 Issues |
| 2017-08-22 | U.S. Patent No. 9739331 Issues |
| 2020-07-17 | Plaintiff allegedly began virtual marking for '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: In telescoping suspension forks, air pressure sealed inside the lower fork leg during assembly can create a pressure differential when the bicycle is ridden at a higher elevation where ambient pressure is lower. This differential increases pressure on the fork seals, creating "significantly higher axial friction" that degrades suspension performance (Compl. ¶14; ’331 Patent, col. 2:48-58).
- The Patented Solution: The invention is an "air bleed assembly" integrated into the lower fork leg. This assembly includes a manually operable valve that allows a user to open a fluid passage between the interior and exterior of the fork, equalizing the internal pressure with the local ambient pressure. The system is designed such that its location prevents the fork's internal oil bath lubrication from leaking out when the valve is operated ('331 Patent, Abstract; col. 4:1-13).
- Technical Importance: This technology allows a rider to maintain consistent, low-friction suspension performance across varying altitudes and temperatures, which is a significant factor in competitive and high-end cycling (Compl. ¶14).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶24).
- The key elements of independent claim 1 include:
- A lower fork and air bleed assembly combination.
- The lower fork has a first end for a wheel and a second end telescopically engaging an upper fork.
- A "lower leg seal" at the outermost edge of the second end and an adjacent "upper bushing".
- An "air bleed assembly" on the lower fork tube for equalizing ambient pressure.
- This assembly comprises a "fluid passage" between the interior and exterior and a "manually operable valve" with open and closed positions.
- The valve is specifically located "between said lower leg seal and said first end of said lower fork" and "at a distance from an oil bath lubrication" to prevent leakage when operated.
- The complaint reserves the right to assert additional claims (Prayer for Relief ¶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: High-performance shock absorbers can "bottom out," or fully compress, during large impacts. The effectiveness of systems designed to prevent this can be compromised as damping fluid heats up and becomes less viscous during use. The patent notes a need for a system that can be easily adjusted by the user to account for these changing conditions ('223 Patent, col. 1:49-65).
- The Patented Solution: The invention provides a position-sensitive damping system. As the shock approaches full compression, a "bottom out piston" enters a "bottom out cup," creating a secondary compression chamber. Fluid can only escape this cup through a dedicated fluid flow path whose capacity is adjustable by the user, providing tunable end-of-stroke damping control ('223 Patent, Abstract; col. 2:40-56).
- Technical Importance: The invention gives riders the ability to adjust end-stroke damping resistance, a feature the patent describes as being readily accessible and usable "on the fly," allowing for fine-tuning to specific terrains or riding styles (Compl. ¶21; ’223 Patent, col. 1:28-35).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶42).
- The key elements of independent claim 1 include:
- A damper for a shock absorber.
- A "damper chamber" divided by a piston into compression and rebound portions.
- A "bottom out cup" formed at the end of the compression portion.
- A "fluid flow path formed in the bottom out cup" for fluid communication to the compression portion during a compression stroke.
- The "capacity of the fluid flow path is adjustable".
- The complaint reserves the right to assert additional claims (Prayer for Relief ¶B).
III. The Accused Instrumentality
Product Identification
- The complaint identifies two categories of accused products:
- "Accused Forks": SRAM LLC’s RockShox Lyrik, Pike, and ZEB series of suspension forks, including various models and associated "upgrade kits" (Compl. ¶¶17-18).
- "Accused Shocks": SRAM’s Super Deluxe Coil series of rear shocks, including various models (Compl. ¶22).
Functionality and Market Context
- The Accused Forks are alleged to include a "Pressure Relief Valve (PRV)" mechanism, which the complaint describes as an "air bleed assembly" for equalizing pressure within the lower fork leg (Compl. ¶¶24, 28). The complaint includes a visual from an installation guide for an optional PRV upgrade. An image in the complaint from SRAM's documentation shows instructions for installing these Pressure Relief Valves (PRV) on certain fork models (Compl. p. 7).
- The Accused Shocks are alleged to include a "user adjustable system for position sensitive damping" that adjusts the fluid flow path from a "bottom out cup" (Compl. ¶¶21, 44-46). The complaint contains an annotated photograph identifying a "Needle and Cam" mechanism as the means to "adjust fluid flow capacity" in the Accused Shocks (Compl. p. 15).
- The complaint alleges that Plaintiff's products embodying the patented technologies enjoyed commercial success and industry praise prior to Defendant’s introduction of the accused products (Compl. ¶15).
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 with a first end for a wheel and a second end for telescopic engagement with an upper fork tube. | ¶25 | col. 8:41-45 |
| 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 outermost edge of the second end of the lower fork tube to seal the gap with the upper fork tube. | ¶26 | col. 8:46-54 |
| an upper bushing attached to and positioned adjacent to said lower leg seal | The accused fork includes an upper bushing attached to and positioned adjacent to the lower leg seal. A photograph in the complaint points to the "Upper bushing (inside accused product)" (Compl. p. 9). | ¶27 | col. 8:55-56 |
| 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 on the lower leg fork tube configured to equalize ambient pressure. | ¶28 | col. 8:57-61 |
| a fluid passage disposed between an interior of said lower fork tube and an exterior of said lower fork tube | The accused fork's air bleed assembly has a fluid passage between the interior and exterior of the lower fork tube. A close-up photograph shows the port for the valve (Compl. p. 9). | ¶29 | col. 8:62-64 |
| a manually operable valve... having a first position substantially closing said fluid passage and a second position allowing a fluid to flow... | The accused fork includes a manually operable valve with a closed position and an open position that allows fluid flow. Photographs illustrate a user pressing the valve to operate it (Compl. p. 10). | ¶¶30-31 | col. 8:65-col. 9:4 |
| 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 within said lower fork... | The valve is located between the lower leg seal and the wheel-end of the fork, and is positioned at a distance from the oil bath lubrication such that trapped air can be relieved while most, if not all, of the oil remains within the fork. | ¶32 | col. 9:1-13 |
- Identified Points of Contention:
- Scope Questions: The case may turn on the precise interpretation of the locational limitations in claim 1. A key question is whether the accused valve is "disposed between said lower leg seal and said first end of said lower fork" and "at a distance from an oil bath lubrication" in a manner that literally meets the claim.
- Technical Questions: The complaint asserts that different versions of the accused forks are "functionally the same with respect to claim 1" even if not "identical" (Compl. ¶24). This raises the question of whether there are operational differences between the accused PRV system and the claimed invention that might allow Defendant to argue non-infringement, potentially forcing an analysis under the doctrine of equivalents.
'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 Rockshox Super Deluxe Coil Ultimate includes a damper chamber divided by a piston and shaft into compression and rebound portions. | ¶43 | col. 10:41-42 |
| 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. | ¶44 | col. 10:43-44 |
| a fluid flow path formed in the bottom out cup for providing fluid communication from the cup to the compression portion... during a compression stroke... | The accused shock has a fluid flow path in the bottom out cup for fluid communication to the compression portion. An annotated image shows the alleged "Fluid Path" within the accused device (Compl. p. 15). | ¶45 | col. 10:45-48 |
| wherein the capacity of the fluid flow path is adjustable. | The capacity of the accused shock's fluid flow path is adjustable via a "Needle and Cam" mechanism. A series of images depicts this mechanism and its adjustment function (Compl. p. 15). | ¶46 | col. 10:49 |
- Identified Points of Contention:
- Scope Questions: A central dispute may arise over the term "formed in the bottom out cup". The infringement analysis will question whether the accused shock's fluid path, which the complaint shows involves a "Needle and Cam" (Compl. p. 15), is structurally "formed in" the cup itself, or if it is formed by the interaction of separate components in a way that falls outside the claim's literal scope.
- Technical Questions: What evidence demonstrates that the accused "adjustable" mechanism controls the "capacity" of the fluid path in the manner claimed? The court will need to examine the precise operation of the accused needle and cam system and compare it to the function described in the '223 patent.
V. Key Claim Terms for Construction
For the '331 Patent:
- The Term: "at a distance from an oil bath lubrication"
- Context and Importance: This term is critical for infringement, as it defines a key functional requirement of the valve's location: it must be able to bleed air without venting the fork's essential lubricating oil. Practitioners may focus on this term because infringement depends on proving the accused valve is positioned to achieve this specific outcome.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language does not specify a minimum distance, which might support an argument that any location not directly submerged in the oil bath meets the limitation.
- Evidence for a Narrower Interpretation: The specification emphasizes that "a substantial portion (most of the oil bath 140), if not all, of the oil bath 140 remains within the lower leg" when the valve is used ('331 Patent, col. 4:8-11). This suggests the "distance" must be sufficient to reliably achieve this non-leakage result, potentially narrowing the term to a location demonstrably above the typical oil level during operation.
For the '223 Patent:
- The Term: "a fluid flow path formed in the bottom out cup"
- Context and Importance: The construction of this term is central to the infringement analysis. It appears to require the flow path to be an integral or structural feature of the cup component. Practitioners may focus on this term because the defendant could argue its flow path is formed by a combination of separate parts interacting with the cup, rather than being "formed in" it.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue "formed in" should be read functionally, meaning the path is created within the assembly of the bottom out cup, even if it involves multiple interacting components.
- Evidence for a Narrower Interpretation: The plain language suggests the path is a physical channel, bore, or orifice that is part of the cup itself. Figures 3A-3C of the patent show flow paths (301, 302) that are in communication with the cup (275) but appear to be located within the larger damper housing cap, not necessarily machined into the cup component itself. This could support an argument that the claim requires a more integrated structure than what is alleged to be in the accused product.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for both patents. The inducement claims are based on allegations that SRAM provides user manuals, installation guides for upgrade kits, and other instructions that encourage and direct customers and distributors to use the accused products in an infringing manner (Compl. ¶¶34, 35, 48). The contributory infringement claims allege the accused products are not staple articles of commerce and have no substantial non-infringing uses (Compl. ¶¶36, 37, 49).
- Willful Infringement: For both patents, the complaint alleges that SRAM had pre-suit knowledge of the patents and either knew its actions constituted infringement or was willfully blind to the risk of infringement. The complaint specifically alleges that SRAM employees involved in the design of the Accused Forks were aware of the '331 patent during development (Compl. ¶19, 38, 50).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural and locational interpretation: Can the term "at a distance from an oil bath lubrication" in the ’331 patent be construed to read on the specific placement of SRAM's "Pressure Relief Valve"? Similarly, for the ’223 patent, does the accused shock's adjustment mechanism meet the literal requirement of a "fluid flow path formed in the bottom out cup"?
- A second key question will be one of evidence of intent: What specific evidence will be presented to substantiate the allegation that SRAM had pre-suit knowledge of the patents and acted with willful blindness? The outcome of this question is critical to the claims for willful infringement and potential enhanced damages.
- A final question relates to functional operation: Given the complaint’s assertion that different accused models are "functionally the same" even if not "identical," a factual dispute may arise over whether the accused devices operate in substantially the same way to achieve the same result as the claimed inventions, bringing the doctrine of equivalents into focus if literal infringement is not found.