PTAB

IPR2024-00491

Fox Factory Inc v. SRam LLC

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1. Case Identification

2. Patent Overview

  • Title: Bicycle Steerer Tube
  • Brief Description: The ’993 patent relates to a bicycle steerer tube featuring a non-uniform wall thickness designed to enhance strength and stiffness while minimizing weight. The invention achieves this by using a circular outer cross-section combined with an elliptical inner cross-section in the lower portion of the tube, which concentrates material to provide maximum thickness and strength in the bicycle’s primary plane of travel.

3. Grounds for Unpatentability

Ground 1: Obviousness over Denk and Moechnig

Claims 1-4, 6, 8, 10, 12, 14-18, 20, 22, 24, 26-29, 33-38, 40, 42, 44, 46-49, 53, and 56-63 are obvious over Denk in view of Moechnig.

  • Prior Art Relied Upon: Denk (German Application # DE19629740A1), Moechnig (Application # 2010/0259028A1).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Denk disclosed all key features of the claimed steerer tube, including a lightweight tubular component for a bicycle frame with varying wall thickness. Denk achieved this with a circular outer contour and an elliptical inner contour to provide maximum thickness and load-bearing capacity in the primary load direction. Moechnig was presented as teaching a conventional bicycle steerer tube assembly, including its connection to the handlebar at its upper end and the fork crown at its lower end. Petitioner contended that implementing Denk’s advanced tube as a steerer tube in the conventional manner taught by Moechnig would meet the limitations of independent claims 1 and 61, such as the varying wall thickness being at a maximum in the plane of travel.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references to improve the performance of a standard bicycle. Denk expressly stated its lightweight component was suitable for all tubular components of a bicycle frame. A POSITA would therefore have been motivated to use Denk’s stronger and lighter tube design as a steerer tube, a known application, and mount it in the conventional manner shown by Moechnig to achieve the dual benefits of reduced weight and increased strength.
    • Expectation of Success: The combination would have yielded the predictable result of an improved steerer tube. Mounting a tubular component onto a bicycle frame, connecting it to a handlebar and fork crown as taught by Moechnig, was a well-known process requiring only ordinary skill and basic knowledge of bicycle hardware.

Ground 2: Obviousness over Valat, Moechnig, and Denk

Claims 1-4, 6, 8, 10, 12, 14-18, 20, 22, 24, 26-29, 33-38, 40, 42, 44, 46-49, 53, and 56-63 are obvious over Valat in view of Moechnig and Denk.

  • Prior Art Relied Upon: Valat (British Application # GB287452A), Moechnig (Application # 2010/0259028A1), and Denk (German Application # DE19629740A1).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Valat disclosed a bicycle steerer tube with varying wall thickness, which it achieved through internal reinforcement ribs. The core of the argument was that a POSITA would modify Valat’s design by replacing its internal ribs with Denk’s more advanced elliptical inner contour. This modification would result in a steerer tube with wall thickness that varies smoothly as a function of the cross-sectional angle, meeting the limitations of the claims. Moechnig again provided the context for how such a steerer tube would be conventionally mounted on a bicycle.
    • Motivation to Combine: A POSITA would be motivated to improve Valat's rudimentary design to create a more efficient and robust component. Replacing Valat's ribs with Denk's elliptical inner contour would allow the wall thickness to transition smoothly, reducing stress concentrations and potential failure points. This modification would also be easier to manufacture while providing the recognized benefits of improved strength and reduced weight described in both Valat and Denk.
    • Expectation of Success: A POSITA would have reasonably expected success because incorporating Denk's elliptical contour into Valat's tube involved conventional manufacturing techniques (e.g., machining, tube rolling). The combination of these known elements for their established functions would predictably result in a superior lightweight steerer tube.
  • Additional Grounds: Petitioner asserted further obviousness challenges against claims 31, 51, and 64 by adding Schroeder (Patent 7,503,576) to the Denk/Moechnig and Valat/Moechnig/Denk combinations. Schroeder taught forming a steerer tube and fork crown from different materials to improve durability and shock absorption, motivating a POSITA to apply this known technique to the primary combinations.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under 35 U.S.C. §314(a) based on Fintiv factors would be inappropriate. The parallel district court litigation was stayed indefinitely at a very early stage, with no trial date set and minimal investment by the court or the parties, weighing heavily against denial.
  • Petitioner also contended that denial under 35 U.S.C. §325(d) was unwarranted because the primary prior art references, Denk and Valat, were never cited or considered by the Examiner during prosecution. This raised substantial new questions of patentability that were not before the U.S. Patent and Trademark Office previously.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-4, 6, 8, 10, 12, 14-18, 20, 22, 24, 26-29, 31, 33-38, 40, 42, 44, 46-49, 51, 53, and 56-64 of the ’993 patent as unpatentable.