HBPSi Hong Kong Ltd v. SRam LLC

1. Case Identification

• Case #: IPR2013-00174
• Patent #: 6,217,049
• Petitioner(s): HBPSI - Hong Kong Limited
• Patent Owner(s): SRAM, LLC
• Challenged Claims: 16-18

2. Patent Overview

• Title: Bicycle Suspension System with Spring Preload Adjuster and Hydraulic Lockout Device
• Brief Description: The ’049 patent describes a bicycle suspension fork featuring a hydraulic lockout mechanism. The mechanism allows a user to selectively convert the fork from a standard energy-absorbing suspension system to a relatively rigid system by inhibiting the flow of damping fluid, and includes a blow-off valve to permit limited fluid flow under high compression forces to prevent damage.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 16-18 - Claims 16, 17, and 18 are anticipated under 35 U.S.C. §102 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 or auto shock, teaches every limitation of the challenged claims. Specifically, Shimokura discloses a lockout mechanism for telescoping tubes that selectively converts the damper from energy-absorbing to relatively rigid. It includes a fluid circulation control unit (valve portion 17) positionable between an "off" (OPEN) position and an "on" (CLOSE) position that inhibits fluid flow. Crucially, Shimokura also discloses a pressure relief/blow-off valve (valve disc 22) that permits limited fluid flow when the control unit is in the "on" position. Petitioner asserted that these teachings directly map to the apparatus limitations of claim 16, the method steps of claim 17, and the external actuator of claim 18.

Ground 2: Obviousness over Motorcycle Damper and Bicycle Fork - Claims 16, 17, and 18 are obvious over Shimokura in view of Gonzalez.

• Prior Art Relied Upon: Shimokura (Patent 4,337,850), Gonzalez (Patent 5,848,675).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that even if the preamble term "bicycle suspension" is given patentable weight, rendering Shimokura (a motorcycle/auto damper) non-anticipatory, it would have been obvious to apply Shimokura’s advanced lockout and blow-off valve technology to a conventional bicycle suspension fork as taught by Gonzalez. Shimokura provided the complete lockout mechanism with all its components, while Gonzalez provided the specific application environment of a bicycle suspension fork.
  • Motivation to Combine: A POSITA would combine Shimokura's vehicle damper with Gonzalez's bicycle fork to provide an adjustable bicycle suspension that could be made rigid. This feature was desirable for performance benefits when riding on smooth surfaces, sprinting, or climbing, allowing the fork to mimic the characteristics of a conventional rigid fork.
  • Expectation of Success: A POSITA would have a high expectation of success, as the principles of hydraulic damping and pressure-relief valves were well-understood and readily transferable between vehicle types.

Ground 3: Obviousness over Prosecuted Art and Bicycle Fork - Claims 16, 17, and 18 are obvious over Browning in view of Gonzalez.

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

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner emphasized that during the original prosecution, a claim similar to claim 16 was rejected over Browning, a reference that disclosed a lockout mechanism for a bicycle suspension. Petitioner contended that the Patent Owner acquiesced that Browning taught all limitations of claim 16 except for the "blow-off valve." Petitioner argued Gonzalez explicitly teaches this missing element in the form of a shim stack (158) configured as a pressure relief valve.
  • Motivation to Combine: A POSITA would be motivated to incorporate the blow-off valve from Gonzalez into the lockout suspension of Browning for the known purpose of improving durability. Adding a pressure relief mechanism would allow the locked-out fork to safely handle unexpected large impacts, preventing damage to the hydraulic components, which was a simple and predictable design improvement.
  • Expectation of Success: The combination involved applying a known solution (a pressure relief valve) to solve a known problem (potential damage from impacts in a locked hydraulic system), ensuring a high expectation of success.

• Additional Grounds: Petitioner asserted numerous additional obviousness challenges against claims 16-18 based on various combinations of Shimokura, Gonzalez, Bradbury (Patent 5,509,677), and Browning, but relied on similar technical rationales and motivations to combine.

4. Key Claim Construction Positions

• "lockout" and "bicycle suspension": Petitioner argued that these phrases, which appear only in the preamble of claim 16, should be given no patentable weight.
  • Petitioner contended "bicycle suspension" merely states an intended use and is not a structural limitation, pointing to the patent’s own specification which suggests the invention could be used in "other suspension assembly instead."
  • Petitioner argued "lockout" is superfluous to, and potentially in conflict with, the body of the claim, which describes fluid flow as being "inhibited," not completely stopped. If given weight, Petitioner argued it should be construed simply as a device that locks and unlocks, not one that achieves complete rigidity.
• Impact on Unpatentability: These proposed constructions were central to Petitioner’s strategy, as they sought to broaden the claim scope to encompass prior art from non-bicycle fields (like Shimokura) and to prevent the Patent Owner from arguing that prior art dampers were not "completely rigid."

5. Key Technical Contentions (Beyond Claim Construction)

• Transferability of Suspension Technology: A central technical premise of the petition was that a person of ordinary skill in the art (POSITA) would readily look to and apply suspension technology from other fields, particularly motorcycles, to the design of bicycle suspensions. To support this, Petitioner cited several patents assigned to the ’049 patent’s applicant that explicitly state that motorcycle suspension technology can be brought over and altered for bicycle systems. This contention underpinned the motivation to combine arguments in multiple obviousness grounds, particularly those involving Shimokura.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 16-18 of the ’049 patent as unpatentable.