WASHINGTON (BRAIN) — A federal appeals court has given Fox a small victory in its long running chainring patent legal battle with SRAM, but the case appears still far from over.
In a ruling Wednesday, the United States Court of Appeals for the Federal Circuit vacated a 2017 decision by the U.S. Patent and Trademark Office board. After a review requested by Fox, the board had upheld SRAM's patent for a chainring with chain retention features. The appeals court sent the case back to the board to reconsider.
In 2015, SRAM had called out RaceFace, which is owned by Fox, for offering a chainring with chain retention features without licensing SRAM's patent as other brands have done. SRAM sued RaceFace in Illinois for patent infringement, a case that is on hold pending the patent board review.
The case involves patent #9,182,027.
In a 2017 decision that at least a few legal observers found noteworthy, the board found that SRAM's patent claims combined features shown in prior art, including some unpatented Shimano technology from the 1980s. On those grounds the technology might have been considered obvious and unpatentable. However, the board upheld the patent in part because secondary considerations suggested the technology was far from obvious. Namely, the chainrings sold well, were praised by the industry and media, and appeared to fulfill a long unmet need.
In the patent board trial and the appeal, Fox had argued that SRAM chainring's market success resulted from SRAM's bundling the chainrings with a wide-range cassette, rather than the chainring patent. It also argued the success was partly due to other chainring features not specifically tied to the patent.
The appeals court, in Wednesday's decision, sided with Fox on the secondary concerns and other issues and remanded the case to the USPTO board, where SRAM will have to prove that the secondary issues outweigh the obviousness of the technology.
The chainring license dispute has cost Fox, which is publicly traded, millions in legal fees, according to filings.
Separately, Fox is suing SRAM, which owns RockShox, in a Colorado court alleging infringement on Fox's suspension patents.
