DCT
9:21-cv-80581
SRAM LLC v. Princeton Carbon Works Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: SRAM, LLC (Delaware)
- Defendant: Princeton Carbon Works Inc. (Florida)
- Plaintiff’s Counsel: Shutts & Bowen LLP; Lewis Rice LLC
- Case Identification: 9:21-cv-80581, S.D. Fla., 03/19/2021
- Venue Allegations: Venue is alleged to be proper in the Southern District of Florida because Defendant resides in the district, conducts business activities there, and infringement events, including the development and testing of the accused products, occurred within the district.
- Core Dispute: Plaintiff alleges that Defendant’s high-performance bicycle wheels infringe two patents related to aerodynamic rim designs featuring an undulating profile.
- Technical Context: The technology concerns the aerodynamic optimization of bicycle wheel rims, a critical area for gaining competitive advantages in professional and high-end consumer cycling by reducing drag and improving stability.
- Key Procedural History: The '188 Patent is a continuation of the application that resulted in the '800 Patent. Plaintiff alleges that it provided Defendant with actual notice of the '800 Patent via a letter on May 29, 2018, nearly three years prior to filing the complaint.
Case Timeline
| Date | Event |
|---|---|
| 2011-09-01 | Priority Date for '800 and '188 Patents |
| 2017-04-04 | U.S. Patent No. 9,610,800 Issues |
| 2018-05-29 | SRAM alleges sending notice letter to PCW re: '800 Patent |
| 2020-04-07 | U.S. Patent No. 10,611,188 Issues |
| 2021-03-19 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,610,800 - "BICYCLE WHEELS," issued April 4, 2017 (’800 Patent)
The Invention Explained
- Problem Addressed: The patent’s background section states that conventional bicycle wheel rims, which have a constant depth around their perimeter, suffer from aerodynamic drag and are susceptible to transverse forces from crosswinds (non-zero yaw angles), creating a steering moment that can destabilize the bicycle ('800 Patent, col. 1:24-49).
- The Patented Solution: The invention proposes a wheel rim with an "undulating configuration" along its radially inner edge, creating a profile of alternating peaks and troughs ('800 Patent, Abstract; col. 2:1-5). This design, illustrated in figures such as Figure 1, is described as providing aerodynamic advantages, including reduced drag across a range of yaw angles, by altering how air flows over the rim ('800 Patent, col. 1:50-54; col. 8:36-48).
- Technical Importance: This design aims to reduce aerodynamic drag while also mitigating the steering forces caused by crosswinds, an important factor for improving speed and handling in competitive cycling ('800 Patent, col. 2:12-18).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶40).
- Independent Claim 1:
- A wheel for use with a bicycle, comprising a hub, a rim, and spokes.
- At least part of the rim’s radially inner edge has an undulating configuration.
- The radial distance of this edge continuously varies between adjacent peaks and troughs.
- Each peak has a convex exterior profile in the plane of the wheel.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 10,611,188 - "BICYCLE WHEELS," issued April 7, 2020 (’188 Patent)
The Invention Explained
- Problem Addressed: As a continuation of the '800 Patent's application, the '188 Patent addresses the same problem of aerodynamic drag and instability in conventional bicycle wheels ('188 Patent, col. 1:29-52).
- The Patented Solution: The '188 Patent also claims a solution based on a variable-depth rim profile, but describes it using slightly different terminology as an "undulating curve configuration" with "convex profiles in convex regions" that include the peaks ('188 Patent, col. 11:10-18). Computational Fluid Dynamics (CFD) data presented in the specification is used to demonstrate that this configuration reduces drag compared to conventional rims ('188 Patent, col. 10:35-54).
- Technical Importance: The invention provides an alternative claimed embodiment of an aerodynamically optimized wheel rim intended to enhance cyclist performance ('188 Patent, col. 2:12-15).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶46).
- Independent Claim 1:
- A wheel for use with a bicycle, comprising a hub, a rim, and spokes.
- At least part of the rim's radially inner edge has an "undulating curve configuration" with peaks and troughs.
- The radially inner edge has "convex profiles in convex regions of the rim," with the convex regions including the peaks.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are the "PCW Wake 6560" and "PCW Grit 4540" bicycle wheels (Compl. ¶8).
Functionality and Market Context
- The complaint identifies the accused products as high-performance bicycle wheels that are manufactured, marketed, sold, and imported in the United States (Compl. ¶¶6, 8, 11-13). The complaint includes a photograph of the PCW Wake 6560 wheel, illustrating its overall structure (Compl. ¶9). It is alleged that these wheels are in direct competition with the plaintiff's products (Compl. ¶18). A close-up photograph of the Wake 6560 wheel rim shows a distinct, wave-like profile on its inner circumference (Compl. p.3).
IV. Analysis of Infringement Allegations
’800 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A wheel for use with a bicycle, the wheel comprising: a hub for mounting the wheel to a bicycle; a rim about which a tire is mountable; and a plurality of spokes extending between the hub and the rim, | The PCW Wheels are described as being wheels for use with a bicycle, each having a hub, a rim, and a plurality of spokes. | ¶25-28 | col. 1:59-62 |
| wherein the rim has a radially inner edge, and wherein at least part of the radially inner edge has an undulating configuration and a radial distance that continuously varies between adjacent peaks and troughs of the undulating configuration, | At least part of the radially inner edge of the PCW Wheels is alleged to have an undulating configuration with a radial distance that continuously varies. | ¶29-30 | col. 2:6-11 |
| each peak of the undulating configuration having a convex exterior profile in a plane of the wheel. | Each peak of the undulating configuration on the PCW Wheels is alleged to have a convex exterior profile in the plane of the wheel. | ¶31 | col. 2:19-22 |
’188 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A wheel for use with a bicycle, the wheel comprising: a hub for mounting the wheel to a bicycle; a rim about which a tire is mountable; and a plurality of spokes extending between the hub and the rim, | The PCW Wheels are described as being wheels for use with a bicycle, each having a hub, a rim, and a plurality of spokes. | ¶25-28 | col. 11:2-9 |
| wherein at least part of a radially inner edge of the rim has an undulating curve configuration, the undulating curve configuration having peaks and troughs, | At least part of the radially inner edge of the PCW Wheels is alleged to have an undulating curve configuration with peaks and troughs. | ¶32 | col. 11:10-13 |
| and wherein the radially inner edge has convex profiles in convex regions of the rim, the convex regions including the peaks. | The radially inner edge of the PCW Wheels is alleged to have convex profiles in convex regions, which include the peaks. | ¶33 | col. 11:14-18 |
Identified Points of Contention
- Scope Questions: A central question will be how the terms "undulating configuration" ('800 Patent) and "undulating curve configuration" ('188 Patent) are construed. The defense may argue for a narrow construction tied to the specific embodiments and CFD-tested profiles in the patents, while the plaintiff may advocate for a broader definition that covers any functionally similar wavy rim profile.
- Technical Questions: The complaint relies on visual representations of the accused wheels. A key factual dispute will be whether the specific geometry of the PCW wheels—their exact curve shapes, peak/trough depths, and profile characteristics—satisfies the precise limitations of the asserted claims as construed. The allegation that the radial distance "continuously varies" may be scrutinized to determine if the accused products meet this functional requirement.
V. Key Claim Terms for Construction
Term 1
- The Term: "undulating configuration" ('800 Patent, Claim 1)
- Context and Importance: This term is the central inventive concept of the '800 Patent. Its scope will likely determine the outcome of the infringement analysis for this patent, as the dispute centers on whether the defendant's specific wavy rim shape falls within this definition.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states the "undulating configuration may be smooth in form" and "may be substantially devoid of angular transitions," but also allows for the possibility of such transitions, suggesting the term is not limited to a purely sinusoidal or smooth curve ('800 Patent, col. 2:4-8).
- Evidence for a Narrower Interpretation: The specific embodiments illustrated, such as in Figure 1 and Figure 9, show distinct, regular wave patterns. A party might argue the term should be limited to such disclosed patterns, especially those for which beneficial CFD data is provided ('800 Patent, col. 9:8-15).
Term 2
- The Term: "undulating curve configuration" ('188 Patent, Claim 1)
- Context and Importance: Practitioners may focus on this term because its distinction from "undulating configuration" in the parent patent will be a critical issue. The addition of the word "curve" could be argued to narrow the scope, a key focus will be on the defendant’s conduct since that date. The court will need to determine if that conduct rises to the level of willfulness, which could expose the defendant to enhanced damages if infringement is found.