WASHINGTON (BRAIN) — A U.S. Patent and Trademark Office board has sided with Fox Factory and invalidated parts of a key SRAM patent on its X-Sync wide-narrow chainrings. The board’s decision could lead to a resolution of several long-running patent-related suits between SRAM and Fox.
The dispute dates to 2015, when SRAM sued RaceFace (which Fox had acquired in 2014) for infringing on two of its chainring patents. Several other brands offering similar chainrings had agreed to license the X-Sync technology from SRAM, but RaceFace took it to court.
Separately, in 2016 Fox sued SRAM, which owns RockShox, for infringing on several Fox-owned suspension patents. That case, to be heard in Colorado, appears to be on hold because of COVID-19 restrictions on civil trials. Fox and SRAM, via their various brands, are competitors for OE spec in drivetrain, suspension, wheels and cockpit components.
In 2017 the chainring suit, which was filed in Illinois, was essentially put on hold while Fox asked the U.S. Patent Trial and Appeal Board to review two patents, a process that is often lengthy and expensive.
The litigation has cost both companies millions in legal fees. In its most recent quarterly and full-year results, released Thursday, Fox Factory noted it spent $1.96 million in patent-related litigation in 2020, down from $4.4 million the year before. The reduction may have been a result of the COVID-19 delays and the pending patent review.
The board upheld the patents in 2018. Although it agreed with Fox that SRAM’s patent claims combined features shown in prior art, including some unpatented Shimano technology from the 1980s, the board said secondary considerations suggested the technology was far from obvious — and therefore patentable. Those secondary considerations included evidence that the chainrings sold well, were praised by the industry and media, appeared to fulfill a long unmet need, and were being licensed or copied by competitors.
Fox appealed the board’s decisions on both patents to the Court of Appeals for the Federal Circuit. In December 2019 the appeals court sided with Fox on one patent (#9,182,027), sending it back to the review board to reconsider. In June 2020, the appeals court upheld the board’s decision on the other patent (#9,182,025) Fox had challenged.
The latest decision by the board, announced Thursday, involves the so-called ‘027 patent that the appeals court ordered the board to review. On its second look in light of the appeals court ruling, the board invalidated SRAM’s patent claims that Fox had challenged.
The patent claims specifically relate to the combination of two separate chain-retaining features: alternating wide-narrow teeth and teeth that are offset to the left (or “inboard”). Both features may have been seen before, but SRAM claimed that combining them constituted a new invention. In its decision, the board noted that it wasn’t clear that those combined features were related to the secondary considerations it had cited in its 2018 decision. For example, while SRAM showed that competitors were copying and licensing its X-Sync chainrings, the board said it wasn’t clear that they were specifically copying the combined wide-narrow/inboard-offset claims in the patent. The board ruling noted that some of SRAM’s X-Sync licensing agreements — which were presented as evidence of secondary considerations — did not specifically cite the patent in dispute.
Reached on Friday, representatives from SRAM and Fox Factory said they would have no comment.