It is finally spring, and along with the nice weather comes more opportunity for outdoor recreation. May brings us National Bike Month and the Bike More Challenge, so we are highlighting a recent intellectual property matter relating to bicycles.
International bike part company SRAM holds a patent (herein referred to as the ‘250 patent) to a chainring that provides enhanced chain and chainring engagement, particularly during rides over rough terrain. As replaceable bike parts are a particularly lucrative market, SRAM’s ‘250 patent underwent a challenge by rival company FOX Factory in a process called post-grant review (PGR). Therein, a third party (here, FOX) is able to file a petition asserting that at least one claim of an issued patent is invalid, after which point the patent claim(s) may be invalidated if the Patent Trademark and Appeals Board agrees. However, for an issued patent to be valid for undergoing a PGR, the patent must have issued from an application subject to first-inventor-to-file provisions of the AIA (thus filed after March 15, 2013). In the present case, SRAM’s ‘250 patent had an effective filing date of December 6, 2011, due to a priority chain to an earlier-filed application (referred to as the ‘027 patent), which would predate the first-to-file provision of the AIA and make it ineligible for PGR.
In an interesting strategy, FOX attempted to break the priority chain to the earlier filed ‘027 patent in order to make the ‘250 patent qualify for PGR. FOX attempted to show that an originally filed (and subsequently cancelled) claim of the ‘250 patent lacked written description support and was therefore not enabled. According to the petition, FOX asserted that the claim was not enabled “because the claim broadly covers a wide range of different, after-arising embodiments that are not disclosed or enabled by the ‘027 patent.” While the strategy was not successful for FOX due to expert testimony that established chainrings and chains are predictable art, such an approach highlights the options that may be available for enabling a challenge to a patent that would otherwise not be possible. This also serves as a reminder for patent drafters that even cancelled claims can be used against you, and thus it is always good practice to ensure each claim is fully enabled.