DCT
1:23-cv-00492
SRAM, LLC v. Fox Factory, Inc.
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: SRAM, LLC (Delaware)
- Defendant: Fox Factory, Inc. (California)
- Plaintiff’s Counsel: King & Spalding LLP
- Case Identification: 1:23-cv-00492, N.D. Ga., 02/01/2023
- Venue Allegations: Venue is alleged to be proper in the Northern District of Georgia because Defendant Fox Factory, Inc. maintains its principal place of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s high-performance bicycle suspension components—specifically certain adjustable rear shocks and front forks—infringe patents related to adjustable damping mechanisms and steerer tubes with variable stiffness.
- Technical Context: The technology concerns advanced bicycle suspension systems, a competitive market where manufacturers seek to optimize performance characteristics like damping, stiffness, and weight for demanding off-road conditions.
- Key Procedural History: The complaint alleges that Defendant had pre-suit knowledge of both asserted patents and the alleged infringement since at least 2022, when Plaintiff SRAM purportedly informed Defendant Fox of its infringement. This allegation forms the basis for the willfulness claims.
Case Timeline
| Date | Event |
|---|---|
| 2004-11-04 | U.S. Patent No. 7,147,207 Priority Date |
| 2006-12-12 | U.S. Patent No. 7,147,207 Issued |
| 2014-12-30 | U.S. Patent No. 10,328,993 Priority Date |
| 2019-06-25 | U.S. Patent No. 10,328,993 Issued |
| 2022-01-01 | Approximate date Defendant allegedly knew of infringement ('207 & '993 Patents) |
| 2023-02-01 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,147,207 - ACTUATOR APPARATUS FOR CONTROLLING A VALVE MECHANISM OF A SUSPENSION SYSTEM, issued December 12, 2006
The Invention Explained
- Problem Addressed: Prior to the invention, suspension systems for bicycles lacked sufficient adjustability, which "limits the ability of the rider to customize the damping characteristics of the suspension system to suit the terrain or the rider's particular riding style" (Compl. ¶32; ’207 Patent, col. 1:40-43).
- The Patented Solution: The patent describes an actuator apparatus that separates the selection of primary suspension modes (e.g., open, lockout) from the fine-tuning of damping within one of those modes. It achieves this with a valve actuating assembly (like a camshaft) for selecting the primary mode and a distinct adjuster assembly that can alter the damping characteristics for at least one mode "independently of the damping characteristics corresponding to another position" (’207 Patent, col. 8:56-60; Compl. ¶¶33, 40). This allows a rider to set a general mode and then separately fine-tune the feel of that mode without affecting the others.
- Technical Importance: This approach provides riders with a more granular level of control, allowing for both macro-level adjustments between distinct riding modes and micro-level tuning within a specific mode to match conditions or preference.
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶66).
- Independent Claim 1: The essential elements include:
- A valve actuating assembly with a camshaft rotatable between at least two positions to adjust a valve mechanism.
- An adjuster assembly operatively connected to the valve actuating assembly.
- The adjuster assembly is for "adjusting the damping characteristics corresponding to at least one of the positions... independently of the damping characteristics corresponding to another position."
- The complaint reserves the right to assert other claims (Compl. ¶66).
U.S. Patent No. 10,328,993 - BICYCLE STEERER TUBE WITH VARIANT STIFFNESS, issued June 25, 2019
The Invention Explained
- Problem Addressed: Traditional bicycle steerer tubes, being circularly cylindrical with uniform wall thickness, exhibit uniform stiffness in all directions. This design does not account for the fact that forces on a steerer tube are different fore-and-aft (in the direction of travel) versus side-to-side, leading to a suboptimal balance of stiffness, weight, and comfort (Compl. ¶48; ’993 Patent, col. 1:34-42).
- The Patented Solution: The patent discloses a steerer tube with a non-uniform wall thickness. The thickness varies around its circumference, with the wall being thickest in the plane of travel to maximize fore-and-aft stiffness and thinner in other areas to save weight (’993 Patent, col. 1:55-59; Compl. ¶49). Critically, the outer surfaces of the tube remain circular in cross-section, while the inner surface may be shaped as an ellipse to achieve the variable thickness profile (’993 Patent, col. 2:60-65).
- Technical Importance: This design allows for a steerer tube that is stiffer and stronger in the direction of the greatest loads (fore-and-aft) while remaining lighter than a uniformly thick tube, thereby optimizing the strength-to-weight ratio.
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶72).
- Independent Claim 1: The essential elements include:
- An elongate hollow steerer tube body with upper and lower sections.
- The outer surfaces of the upper and lower sections are "circular in cross section."
- The wall thickness at any point in the lower section "varying as a function of the cross-sectional angle... relative to the plane of travel."
- The wall thickness is "at a maximum in the plane of travel of the bicycle."
- The complaint reserves the right to assert other claims (Compl. ¶72).
III. The Accused Instrumentality
Product Identification
The complaint identifies two categories of accused products:
- "Dual Adjust Shocks": These include bicycle rear suspension shocks from Defendant's "Factory Series" and "Performance Elite Series," such as the Float DPS and DPX2 models (Compl. ¶11).
- "Oval Steerer Forks": These include bicycle front suspension forks, such as the Fox 38 line (including Performance Elite, Performance, Etuned, and Factory models), that feature an "internally elliptical" steerer tube (Compl. ¶¶20-22).
Functionality and Market Context
- Dual Adjust Shocks: These shocks are alleged to feature multiple damping modes. The complaint highlights an "Open Mode Adjust" feature, which allows for "additional fine tuning adjustments for the OPEN mode" (Compl. ¶12). A diagram from a Fox tuning guide shows a dial for making these adjustments separately from the main 3-position mode lever (Compl., p. 6). This dual-adjustment capability is presented as a key performance feature (Compl. ¶13).
- Oval Steerer Forks: These forks are alleged to contain a steerer tube that is "1.5 Taper – internally elliptical" (Compl. ¶21). The complaint includes a screenshot from Defendant's website specifying this feature for the "FOX 38 PERFORMANCE ELITE SPECS" (Compl., p. 10). The complaint alleges these products are sold for use in the United States and compete with SRAM's products (Compl. ¶¶23, 29).
IV. Analysis of Infringement Allegations
’207 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a valve actuating assembly operatively connected to the valve mechanism, the valve actuating assembly including a camshaft rotatable between at least two positions to adjust the valve mechanism between various suspension settings; | The Dual Adjust Shocks include a valve actuating assembly with a camshaft that is rotatable to adjust between suspension settings (e.g., Open, Medium, Firm modes). | ¶¶36, 37 | col. 4:26-33 |
| an adjuster assembly operatively connected to the valve actuating assembly for adjusting the damping characteristics corresponding to at least one of the positions of the valve actuating assembly... | The Dual Adjust Shocks include an "Open Mode Adjust" feature that functions as an adjuster assembly to modify damping characteristics when the shock is in its "open mode." | ¶¶38, 39 | col. 4:38-44 |
| ...independently of the damping characteristics corresponding to another position of the valve actuating assembly. | The adjuster assembly in the accused shocks is alleged to adjust damping in one mode (e.g., "Open") independently of the damping in another mode (e.g., "Firm" or "Medium"). | ¶40 | col. 8:56-60 |
- Identified Points of Contention:
- Technical Question: A central question will be whether the "Open Mode Adjust" feature on the accused shocks adjusts damping characteristics in a manner that is truly "independently of" the characteristics of the other primary modes (e.g., Medium, Firm). The court may need to examine the precise hydraulic and mechanical operation to determine if an adjustment to the open mode circuit has any collateral effect on other circuits.
’993 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an elongate hollow body arranged around a steering axis... the body having upper and lower sections... | The Oval Steerer Forks include an elongate, hollow bicycle steerer tube with upper and lower sections. | ¶¶51, 52, 53 | col. 2:46-54 |
| outer surfaces of the upper and lower sections of the body being circular in cross section, and | The accused forks are alleged to have outer surfaces that are circular in cross section. | ¶54 | col. 2:60-62 |
| a thickness of the wall at any point in the lower section of the body varying as a function of the cross-sectional angle of the point relative to the plane of travel, | The accused forks' steerer tubes are "internally elliptical," which allegedly results in a wall thickness that varies around the circumference of the tube. | ¶¶21, 55, 59 | col. 1:55-59 |
| the wall thickness being at a maximum in the plane of travel of the bicycle. | The varying wall thickness of the accused steerer tube is alleged to be at its maximum in the fore-and-aft direction, corresponding to the plane of travel. | ¶55 | col. 1:58-59 |
- Identified Points of Contention:
- Evidentiary Question: Does the "internally elliptical" design of the accused steerer tubes, as manufactured, actually result in the wall thickness being "at a maximum in the plane of travel"? The infringement analysis will likely depend on expert testimony and empirical measurements of the accused products' geometry.
- Scope Question: How is the limitation "outer surfaces of the... lower sections... being circular in cross section" to be interpreted for a tapered steerer tube? The question may arise whether the entire tapered outer surface qualifies as "circular in cross section" for claim purposes.
V. Key Claim Terms for Construction
For the ’207 Patent
- The Term: "independently of"
- Context and Importance: This term is the crux of the invention. Its definition will determine whether the accused dual-adjustment system infringes. If "independently of" requires absolute, complete mechanical and hydraulic separation with zero crossover effect, the infringement case may be more difficult to prove. If it allows for minor or incidental effects, the case may be stronger. Practitioners may focus on this term because it defines the required degree of separation between the adjustable modes.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not explicitly define the term, which may support giving it its plain and ordinary meaning, potentially allowing for functionally insignificant crossover.
- Evidence for a Narrower Interpretation: The specification describes adjusting the adjustable position "without affecting the damping characteristics of the other two positions" (’207 Patent, col. 2:30-34), which suggests a high degree of, if not complete, independence.
For the ’993 Patent
- The Term: "wall thickness being at a maximum in the plane of travel of the bicycle"
- Context and Importance: This term specifies the precise orientation of the variable stiffness. Infringement hinges on whether the thickest part of the accused steerer tube wall aligns with the bicycle's plane of travel. Defendant may argue that manufacturing tolerances or an alternative design places the maximum thickness slightly off-axis, thereby avoiding literal infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification's focus is on the functional goal of increasing fore-and-aft stiffness (’993 Patent, col. 2:4-9). A court could interpret "at a maximum in the plane of travel" to include minor deviations that do not materially alter the stated function.
- Evidence for a Narrower Interpretation: The claim language is specific and geometric. The abstract states the wall thickness is "at a maximum in the plane of travel" (’993 Patent, Abstract). Figures like Fig. 3, showing plane P bisecting the thickest portions of the wall, could be used to argue for a strict, geometrically precise interpretation.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement and contributory infringement for both patents. The allegations are based on Defendant Fox making, selling, and importing the accused components, which are intended for assembly into bicycles, and providing marketing materials and tuning guides that instruct on their use (Compl. ¶¶ 12, 19, 27, 66, 72).
- Willful Infringement: The complaint alleges that Defendant’s infringement has been and continues to be willful. This is based on the allegation that "SRAM informed Defendant Fox of the [patents] and of Defendant Fox's infringement thereof" at least as early as 2022, prior to the lawsuit's filing (Compl. ¶¶ 68, 74).
VII. Analyst’s Conclusion: Key Questions for the Case
- A question of functional independence: For the ’207 patent, the central issue is whether the accused "Dual Adjust Shocks" provide damping adjustments in one mode that are truly "independently of" the other modes, as required by the claim. The case may turn on technical evidence demonstrating the degree of hydraulic and mechanical separation between the shock's different adjustment circuits.
- A question of geometric precision: For the ’993 patent, the dispute will likely focus on an evidentiary question: does Defendant's "internally elliptical" steerer tube design result in a "wall thickness being at a maximum in the plane of travel," as the claim language precisely requires? This may involve a detailed factual analysis of the accused products' physical construction.
- A question of knowledge and intent: The allegations of pre-suit notice in 2022 directly place Defendant's state of mind at issue. A key question for the willfulness claim will be what actions, if any, Defendant took after being notified of the alleged infringement by SRAM.