PTAB

IPR2013-00174

HBPSi Hong Kong Ltd v. SRam LLC

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1. Case Identification

2. Patent Overview

  • Title: BICYCLE SUSPENSION SYSTEM WITH SPRING PRELOAD ADJUSTER AND HYDRAULIC LOCKOUT DEVICE
  • Brief Description: The ’049 patent describes a hydraulic lockout mechanism for a bicycle suspension fork. The system allows a user to selectively convert the fork from an energy-absorbing suspension to a relatively rigid system by inhibiting fluid flow between two chambers, with a blow-off valve included to permit limited fluid flow during large impacts to prevent damage.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 16, 17, and 18 by Shimokura

  • Prior Art Relied Upon: Shimokura (Patent 4,337,850).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Shimokura, which discloses a damping adjustment device for a motorcycle shock, teaches every element of the challenged claims. Shimokura describes a damper with telescoping tubes, a fluid circulation control unit with "on" (inhibited flow) and "off" (permitted flow) positions, and a pressure relief/blow-off valve. Petitioner contended that Shimokura’s method of adjusting compressibility anticipates method claims 17 and 18, and its externally accessible adjusting knob anticipates the actuator limitation of claim 18. This argument relies on the petitioner's proposed claim construction that preamble terms like "bicycle suspension" are not limiting.
    • Key Aspects: This ground challenges the claims using prior art from the analogous field of motorcycle suspensions, asserting that the claimed invention was not novel even in a broader context.

Ground 2: Anticipation of Claims 16, 17, and 18 by Gonzalez

  • Prior Art Relied Upon: Gonzalez (Patent 5,848,675).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Gonzalez, which was not cited during the prosecution of the ’049 patent, discloses an adjustable damping device specifically for a bicycle suspension fork that anticipates all challenged claims. Gonzalez allegedly teaches a lockout mechanism that converts the fork to a rigid system, first and second fluid chambers, a fluid circulation control unit (needle valve) with on/off positions, and a blow-off valve (shim stack). Petitioner further argued that Gonzalez’s adjustable nature anticipates method claim 17, and its external actuator for user adjustment anticipates dependent claim 18.
    • Key Aspects: This ground uses a prior art reference from the same field (bicycle suspensions) that was not before the Examiner, arguing that the claimed invention was already known in its entirety.

Ground 3: Claims 16, 17, and 18 are obvious over Browning in view of Gonzalez

  • Prior Art Relied Upon: Browning (Patent 5,308,099) and Gonzalez (Patent 5,848,675).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that during prosecution of the ’049 patent, the examiner rejected a parent claim as anticipated by Browning. The patent owner then amended the claim to add the "blow-off valve" limitation to secure allowance. Petitioner contended that Browning teaches every element of the challenged claims except for the blow-off valve. The secondary reference, Gonzalez, is cited for its explicit disclosure of a blow-off valve (a shim stack) in a bicycle suspension fork.
    • Motivation to Combine: A POSITA would combine the lockout system of Browning with the blow-off valve of Gonzalez to create a more durable and robust lockout mechanism. Adding a pressure relief valve to a hydraulic system to prevent damage from unexpected pressure spikes (e.g., hitting a large bump while locked out) was a well-known and predictable design solution to a known problem.
    • Expectation of Success: A POSITA would have had a high expectation of success in incorporating Gonzalez’s shim stack into Browning’s hydraulic circuit, as it was a straightforward addition of a known component to serve its conventional purpose.

  • Additional Grounds: Petitioner asserted numerous additional anticipation and obviousness challenges against claims 16-18. These included anticipation by Bradbury (Patent 5,509,677) and various obviousness combinations of Shimokura, Gonzalez, Bradbury, and Browning, all relying on similar arguments that the claimed features were individually known and combining them would have been a simple and predictable design choice for a POSITA.

4. Key Claim Construction Positions

  • "bicycle suspension" and "lockout" (Preamble Terms): Petitioner argued that the preamble terms "bicycle suspension" (in claims 16 and 17) and "lockout" (in claim 16) should be given no patentable weight.
    • The phrase "bicycle suspension" was argued to be merely a statement of intended use, not a structural limitation, particularly because the ’049 patent specification itself suggests the invention could be used in "other suspension assembly instead." This construction would allow prior art from analogous fields, such as motorcycle dampers (e.g., Shimokura), to be applied.
    • The term "lockout" was argued to be superfluous and in conflict with the body of the claim, which only requires that fluid flow and fork compression be "inhibited," not completely blocked or made rigid. Petitioner contended "lockout" is simply a relative term for the "on" position of the control unit.

5. Key Technical Contentions (Beyond Claim Construction)

  • Applicability of Motorcycle Art: A central technical contention underpinning multiple grounds was that a person of ordinary skill in the art would readily look to technology from motorcycle and other vehicle suspension systems to solve problems in bicycle suspensions. Petitioner cited several patents, including some assigned to the patent owner's predecessor, that explicitly state motorcycle suspension technology can be brought over and/or altered to meet the needs of a bicycle suspension system. This argument was used to justify combining motorcycle damper art (like Shimokura) with bicycle fork art (like Gonzalez or Bradbury).

6. Relief Requested

  • Petitioner requested that the Board institute an inter partes review and cancel claims 16-18 of the ’049 patent as unpatentable under 35 U.S.C. §102 and §103.