Princeton Carbon Works Inc v. MeTron IP Ltd

1. Case Identification

• Case #: IPR2022-00082
• Patent #: 10,611,188
• Filed: October 21, 2021
• Petitioner(s): Princeton Carbon Works Inc.
• Patent Owner(s): Metron IP Limited
• Challenged Claims: 1-8, 10-13

2. Patent Overview

• Title: Bicycle Wheel Improvements
• Brief Description: The ’188 patent discloses a bicycle wheel with a rim having an undulating configuration on its radially inner edge. This configuration, comprising peaks and troughs, is intended to improve the wheel's aerodynamic performance by reducing drag.

3. Grounds for Unpatentability

Ground I: Obviousness over Herting and Zibkoff - Claims 1-8 and 10-13 are obvious over Herting in view of Zibkoff and/or general knowledge in the art.

• 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 disclosed a bicycle wheel rim with radially extending flanges of varying height, creating a "scalloped configuration" of alternating peaks and valleys on the inner edge to reduce aerodynamic drag. This structure met the "undulating configuration" limitation of independent claim 1. Zibkoff disclosed applying rounded, scallop-shaped aerodynamic protrusions, which mimic whale fin tubercles, to the leading and trailing edges of bicycle spokes to improve aerodynamics. The combination of Herting’s scalloped flanges with Zibkoff's rounded protrusions would result in the claimed "undulating curve configuration" having convex profiles at the peaks.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Herting and Zibkoff to further improve the aerodynamic performance of the wheel. Both references were in the same field, addressed the same problem of reducing drag, and used analogous scalloped configurations. Petitioner contended it would have been a simple and obvious design choice to apply the known aerodynamic shape from Zibkoff’s spokes to the analogous inner rim flanges of Herting’s wheel.
  • Expectation of Success: A POSITA would have had a high expectation of success because the modification was a straightforward application of a known aerodynamic principle (Zibkoff's protrusions) to a known structure (Herting's rim). The combination involved predictable results and did not require undue experimentation.

Ground II: Anticipation by Carlson or Obviousness over Carlson and Zibkoff - Claims 1-8 and 10-13 are anticipated by Carlson, or at least obvious over Carlson in view of Zibkoff and/or common general knowledge in the art.

• Prior Art Relied Upon: Carlson (Application # 2005/0242658) and Zibkoff (Application # 2009/0236902).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Carlson disclosed a bicycle wheel rim with a series of spoke mounts arranged along its radially inner edge, creating an undulating surface with peaks (at the mounts) and valleys (between the mounts). This structure, intended to create a "smooth aerodynamic transition," allegedly anticipated every element of claim 1. Alternatively, if Carlson’s spoke mounts were not considered to have a sufficiently "curved" or "convex" profile, it would have been obvious to modify them according to the teachings of Zibkoff. Applying Zibkoff’s rounded, aerodynamic protrusions to the peaks of Carlson's spoke mounts would achieve the claimed configuration.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Carlson and Zibkoff to enhance the aerodynamic benefits of the wheel. Carlson explicitly sought a "smooth aerodynamic transition," and Zibkoff taught that its scallop-shaped protrusions provided an "aerodynamic benefit." A POSITA would have recognized that applying Zibkoff's proven aerodynamic shape to Carlson's spoke mounts was a predictable way to improve upon Carlson's design.
  • Expectation of Success (for §103 grounds): The proposed modification was a simple substitution of one known aerodynamic feature for another to achieve an expected improvement in performance. The combination was well within the skill of a POSITA with a reasonable expectation of success.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under either 35 U.S.C. §314(a) or §325(d) would be inappropriate.
• Fintiv (§314(a)): Petitioner asserted that the Fintiv factors weighed in favor of institution. Key arguments included that a stay of the parallel district court litigation was likely, the court’s trial schedule was uncertain and lacked a Markman hearing, and minimal work had been completed in that case. Critically, Petitioner stipulated that it would not pursue the same invalidity grounds in the district court if the IPR were instituted, thus avoiding duplicative efforts.
• §325(d): Petitioner contended that the petition raised new issues not considered during prosecution. The primary reference Carlson was never before the Examiner. While Zibkoff was cited in an Information Disclosure Statement (IDS), it was never substantively analyzed or used in a rejection. Herting was previously used only as a secondary reference for a narrow feature, whereas the petition used it as a primary reference in a new combination not previously considered by the Examiner. Therefore, the arguments and art presented were not cumulative to those reviewed during prosecution.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-8 and 10-13 of the ’188 patent as unpatentable.