Princeton Carbon Works Inc v. MeTron IP Ltd

1. Case Identification

• Case #: IPR2022-00078
• Patent #: 9,610,800
• Filed: October 21, 2021
• Petitioner(s): Princeton Carbon Works Inc.
• Patent Owner(s): Metron IP Limited
• Challenged Claims: 1-6, 9-12, 14-19, and 21-22

2. Patent Overview

• Title: Bicycle Wheel
• Brief Description: The ’800 patent discloses a bicycle wheel rim designed for improved aerodynamic performance. The invention focuses on a rim with a radially inner edge that features an undulating configuration of alternating peaks and troughs.

3. Grounds for Unpatentability

Ground 1: Obviousness over Herting in view of Zibkoff - Claims 1-6, 9-12, 14-19, and 21-22 are obvious over Herting in view of Zibkoff.

• Prior Art Relied Upon: Herting (Patent 6,425,641) and Zibkoff (Application # 2009/0236902).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Herting discloses a lightweight bicycle wheel rim with inwardly extending flanges of a "scalloped configuration" that form alternating peaks and valleys along the rim's inner circumference specifically to reduce aerodynamic drag. Petitioner asserted that Zibkoff teaches improving the aerodynamics of bicycle components, such as spokes, by adding "scallop-shaped" protrusions to their leading and trailing edges, a design inspired by the tubercles on humpback whale flippers. The combination, Petitioner contended, results in a rim with an undulating inner edge having convex peaks, as claimed.
  • Motivation to Combine: Petitioner argued that a person of ordinary skill in the art (POSITA) would be motivated to combine these references to further improve aerodynamic performance. Both Herting and Zibkoff are in the same field of endeavor—bicycle wheel improvements—and address the identical problem of reducing aerodynamic drag using scalloped or undulating surfaces. A POSITA would find it obvious to apply the known aerodynamic protrusion shape from Zibkoff to the analogous, already-scalloped inner rim structure of Herting, as both components face similar aerodynamic forces.
  • Expectation of Success: Petitioner asserted that a POSITA would have had a high expectation of success. The proposed modification was presented as a straightforward application of Zibkoff’s known aerodynamic shapes to Herting’s compatible structure, requiring only rounding the upper portion of Herting’s flanges. Such a modification would not have resulted in unpredictable outcomes.

Ground 2: Obviousness over Carlson in view of Zibkoff - Claims 1-6, 9-12, 14-19, and 21-22 are obvious over Carlson in view of Zibkoff.

• Prior Art Relied Upon: Carlson (Application # 2005/0242658) and Zibkoff (Application # 2009/0236902).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Carlson discloses a bicycle rim with an undulating inner edge formed by a series of spoke mounts configured "close together" to create a "smooth aerodynamic transition." The valleys between these spoke mounts create a profile of peaks and troughs. As in Ground 1, Zibkoff teaches using scallop-shaped aerodynamic protrusions on bicycle components to reduce drag. Petitioner contended that applying Zibkoff's protrusion shape to Carlson's spoke mounts would result in the claimed undulating configuration with convex peaks.
  • Motivation to Combine: The motivation to combine was argued to be the shared goal of improving aerodynamics. A POSITA seeking to enhance the "smooth aerodynamic transition" taught by Carlson would naturally look to known aerodynamic shapes, such as the scallop-shaped protrusions in Zibkoff. Petitioner asserted it would have been an obvious design choice to incorporate Zibkoff's proven aerodynamic feature onto the undulating spoke mounts of Carlson to further reduce drag and turbulence.
  • Expectation of Success: Petitioner claimed a reasonable expectation of success because the combination involved applying a known element (Zibkoff's protrusion shape) to a similar device (Carlson's wheel rim) to achieve a predictable improvement in a known property (aerodynamics). The modification was portrayed as a simple, logical step for a POSITA.

4. Arguments Regarding Discretionary Denial

• Petitioner argued extensively that the Board should not exercise discretionary denial under 35 U.S.C. §314(a) or §325(d).
• Fintiv Factors: Petitioner contended that the Fintiv factors weighed in favor of institution. It argued that the parallel district court case was in its early stages with minimal investment, a stay was likely to be granted, and the trial date was uncertain as no Markman hearing had been scheduled. Furthermore, Petitioner stipulated that if the IPR was instituted, it would not pursue the same invalidity grounds in the district court, eliminating overlap.
• §325(d) Factors: Petitioner asserted that denial under §325(d) would be improper because the prior art and arguments were not substantively considered during prosecution. It noted that Carlson was never cited by the Examiner, and while Herting and Zibkoff were listed in an Information Disclosure Statement, they were never applied in a rejection or otherwise discussed on the record.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-6, 9-12, 14-19, and 21-22 of the ’800 patent as unpatentable.