The PTAB’s Erroneous Presumption

Photo of John P. Isacson
John P. Isacson

Fox Factory, Inc. v. SRAM, LLC, Appeal Nos. 2018-2024, -2025 (Fed. Cir. December 18, 2019)

SRAM owned two patents pertaining to bicycle chainrings, which are toothed disks that engage bicycle chains. Fox filed inter partes reviews (IPR) against the patents. The Patent Trial and Appeal Board (PTAB) determined that Fox had shown that the SRAM claims were prima facie obvious over the prior art, but secondary consideration existed that allowed SRAM to overcome the obviousness attack. The secondary considerations asserted by SRAM in defense of the patents were commercial success of a product, licensing, copying, praise by others and long-felt but unmet need.

There must be a nexus demonstrated between the asserted secondary considerations and the patented invention. For example, the patentee must show that patented invention is the reason for commercial success of a product. There is a presumption of nexus, however, where the product possesses the claimed features and is coextensive with the claims. The PTAB determined that a claim that broadly covers the product would meet the coextensiveness requirement.

The Federal Circuit disagreed, vacated the PTAB decision, and remanded the IPRs back to the PTAB for further proceedings.. The Federal Circuit determined that the SRAM chainring product had wide teeth with a >80% gap filling, which was covered in another patent, but not in the challenged patent claims before the PTAB. Therefore, the challenged claims were not coextensive with the chainring product and the presumption of nexus was not available. SRAM would need to prove nexus before the PTAB in order to overcome Fox’s obviousness attack.