Not So Secondary: Overcoming Obviousness With Objective Indicia

On April 2, 2018, the PTAB issued a final written decision in Fox Factory finding that the petitioner failed to carry its burden in showing the instituted claims were unpatentable as obvious. Fox Factory, Inc. v. SRAM, LLC, IPR2016-01876, slip op. at 51-52 (P.T.A.B. Apr. 2, 2018) (Paper 59). The decision is noteworthy, because petitioner presented prior art that taught the claimed features and provided a sufficient motivation to combine, yet this evidence was heavily outweighed by Patent Owner's evidence of objective indicia of non-obviousness. Id.

The challenged '027 patent relates generally to bicycle chainrings, and more particularly to a solitary chainring for use with a conventional chain in bicycle crankset and drivetrain systems that include a multispeed rear gear cassette. Id. at 3. The instituted claims included a first group of claims directed to a new chainring, while a second group of claims was directed to crankset and drivetrain systems that include the