SRam LLC v. Fox Factory Inc

1. Case Identification

• Case #: IPR2024-00216
• Patent #: 8,550,223
• Filed: November 30, 2023
• Petitioner(s): SRAM, LLC
• Patent Owner(s): FOX Factory, Inc.
• Challenged Claims: 1-9, 11-15, and 19

2. Patent Overview

• Title: Methods and Apparatus for Position Sensitive Suspension Dampening
• Brief Description: The ’223 patent relates to dampers for shock absorbers, particularly for vehicle suspensions. The technology involves adding a "bottom out cup" at the end of the compression portion of a damper chamber, which interacts with a "bottom out piston" to provide additional damping resistance as the shock nears full compression, with the key feature being the adjustability of fluid flow paths associated with this mechanism.

3. Grounds for Unpatentability

Ground 1: Anticipation and Obviousness over Nakaya - Claims 1-9, 11-15, and 19 are anticipated by Nakaya or obvious over Nakaya alone or in view of Kodama.

• Prior Art Relied Upon: Nakaya (Patent 6,558,430) and Kodama (Patent 5,405,407).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Nakaya, which was not considered during prosecution, discloses all elements of the challenged claims. Nakaya allegedly teaches a shock absorber damper with a "bottom out cup" (enlarged-diameter hole 1125), a "bottom out piston" (projection 1140b) that sealingly engages the cup, and multiple fluid flow paths between the cup and the compression and rebound portions. Petitioner asserted that Nakaya's fluid flow path 823 is adjustable via an externally accessible screw-type needle valve 824, directly mapping to the adjustability limitations of independent claims 1, 11, and 19.
  • Motivation to Combine (for §103 grounds): In the alternative, Petitioner argued that even if Nakaya did not explicitly disclose certain features like a fully closed valve position (claim 4) or user-adjustability of the rebound path (claim 8), it would have been obvious to a person of ordinary skill in the art (POSITA) to make such modifications. A POSITA would combine Nakaya with Kodama’s teaching of an adjustable throttle valve in a piston shaft to provide a greater range of damping characteristics and create a more versatile device.
  • Expectation of Success (for §103 grounds): A POSITA would expect success in combining these known mechanical elements, as it involved applying a known technique (adjustable flow path from Kodama) to a known device (Nakaya's damper) to achieve predictable results.

Ground 2: Anticipation and Obviousness over Chen - Claims 1-9, 11-15, and 19 are anticipated by Chen or obvious over Chen alone or in view of Deferme.

• Prior Art Relied Upon: Chen (UK Patent Application No. GB2377254A) and Deferme (Application # 2006/0283676).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Chen, another reference not considered during prosecution, anticipates the claims. Chen allegedly discloses a damper with an "accommodating cavity" (84) that functions as the claimed "bottom out cup" and a "projecting post" (821) that acts as the claimed "bottom out piston." Petitioner asserted that Chen discloses an adjustable fluid flow path (86) between the cup and the compression chamber, which is controlled by an externally accessible needle valve, meeting the limitations of the independent claims.
  • Motivation to Combine (for §103 grounds): As an alternative obviousness argument, Petitioner asserted a POSITA would readily modify Chen’s piston to incorporate the adjustable one-way valve system taught by Deferme. This modification would provide additional means of adjusting damping characteristics, allowing for a more versatile device with a wider range of performance, a common goal in shock absorber design.
  • Expectation of Success (for §103 grounds): The substitution of one known adjustable piston system (Deferme's) into another known damper (Chen's) was argued to be a simple, predictable modification within the skill of a POSITA.

Ground 3: Obviousness over Fox ‘751 and Chen - Claims 1-5, 9, 11-15, and 19 are obvious over Fox ‘751 in view of Chen.

• Prior Art Relied Upon: Fox ‘751 (Patent 6,604,751) and Chen (UK Patent Application No. GB2377254A).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Fox ‘751 discloses a conventional, basic shock absorber damper that is ripe for improvement, as it lacks any specialized bottom-out resistance beyond a simple bumper. Chen, by contrast, teaches a well-known bottom-out control system with a bottom out cup, piston, and associated fluid passageways.
  • Motivation to Combine (for §103 grounds): A POSITA would be motivated to improve the basic damper of Fox ‘751 by incorporating the known and advantageous bottom-out resistance system from Chen. This combination would add a desirable performance feature (adjustable bottom-out control) to a standard shock absorber, which Petitioner characterized as a simple substitution of one known element for another to achieve a predictable improvement.
  • Expectation of Success (for §103 grounds): A POSITA would expect the combination to yield predictable results, as each element would function as intended to provide adjustable bottom-out resistance in the Fox ‘751 damper.

• Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 5-9 based on Fox ‘751 in view of Chen and further in view of Nakaya and/or Kodama. Petitioner also asserted anticipation and obviousness challenges against claims 1-5, 9, and 19 based on Gartner (Patent 8,162,112) alone or in view of Kodama.

4. Key Claim Construction Positions

• Petitioner stated that no special claim constructions were necessary for the inter partes review (IPR). However, to preemptively address positions taken by the Patent Owner in a parallel district court case, Petitioner applied the Patent Owner’s alleged constructions for the purposes of its invalidity analysis.
• Specifically, Petitioner argued that the prior art meets the Patent Owner's apparent requirement for a specific direction of fluid flow from the bottom out cup to the compression portion.
• Petitioner also applied the Patent Owner’s asserted construction that "sealingly engaging" (recited in claims 11 and 12) can mean merely "slide," arguing that Chen’s piston meets this broader interpretation even without a traditional seal.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv is unwarranted. It asserted that the parallel district court proceeding is in its early stages, with no trial date set, claim construction ongoing, and no substantive analysis of prior art invalidity issues having occurred.
• Petitioner also argued that denial under §325(d) would be improper because the prior art references relied upon in the petition (Nakaya, Kodama, Chen, Deferme, Fox ‘751, and Gartner) were neither cited nor considered during the original prosecution of the ’223 patent. Therefore, the arguments presented in the IPR are not the same as or substantially similar to those previously considered by the USPTO.

6. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-9, 11-15, and 19 of Patent 8,550,223 as unpatentable.