Paper Date: 12 August 2013 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

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1 Paper Date: 12 August 2013 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD HBPSI HONG KONG LIMITED Petitioner v. SRAM, LLC Patent Owner Case IPR (JSB) Before JOSIAH C. COCKS, JENNIFER S. BISK, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. COCKS, Administrative Patent Judge. DECISION Institution of Inter Partes Review 37 C.F.R

2 I. INTRODUCTION Petitioner HBPSI-Hong Kong Limited ( HBPSI ) requests inter partes review of claims of US ( 049 Patent ) pursuant to 35 U.S.C. 311 et seq. 1 Patent Owner SRAM, LLC ( SRAM ) filed a preliminary response under 37 C.F.R (b) ( Prelim. Resp. ) (Paper 14). We have jurisdiction under 35 U.S.C The standard for instituting an inter partes review is set forth in 35 U.S.C. 314(a), which provides as follows: THRESHOLD -- The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. For the reasons set forth infra, the Board has determined not to institute an inter partes review. A. Related Matters HBPSI indicates that the 049 Patent was the subject of the following three lawsuits for patent infringement: SRAM v. Answer filed in the N.D. Illinois (1:03- cv-03165); SRAM v. Fox filed in the N.D. Illinois (1:04-cv-02162); and SRAM v. X-Fusion filed in the N.D. Illinois (1:11-cv-04035). (Pet. 1.) HBPSI also indicates that the 049 Patent is currently the subject of the following lawsuit for patent infringement which was filed May 11, 2012: SRAM v. Hayes Bicycle Group, Inc. filed in the N.D. Illinois (1:12-cv-03629). (Id.) 1 See Petition for Inter Partes Review of U.S. Under 35 U.S.C filed March 4, 2013 ( Pet. ) (Paper 1) and Corrected Petition for Inter Partes Review of U.S. Under 35 U.S.C filed March 28, 2013 ( Cor. Pet. ) (Paper 12). 2

3 B. The 049 Patent (Exhibit 1001) The 049 Patent is directed to a suspension fork for a bicycle. (Ex. 1001, Abstract.) Figure 1 of the 049 Patent illustrates an embodiment according to the invention and is reproduced on the right. As shown in the figure, bicycle suspension fork 10 is composed of two legs or telescoping fork tubes 12, 14, each of which includes an inner tube 16 and an outer tube 18. (Id. at col. 3, ll ) The inner and outer tubes are biased apart by one of more biasing elements 20, 21, and 54, such as coil springs. (Id. at col. 3, ll ) Disposed in leg 14 is a component 40 termed a preload adjuster (id. at col. 3, ll ), which is operable to adjust the preload of the springs (id. at col. 4, ll ) Associated with leg 12 is hydraulic lockout device 100. (Id. at col. 3, ll. 67-4:1.) Lockout device 100 permits a user to selectively turn on or off the suspension capabilities of fork 10. (Id. at col. 6, ll ) Figure 8 (reproduced below on left) illustrates a cross-sectional view of the lockout device of Figure 1 in the off position. (Id. at col. 3, ll ) The 049 Patent further explains the operation of the lockout device as follows: 3

4 Lockout device 100 permits the rider to adjust the suspension characteristics of fork 10 by turning lockout device 100 on by positioning actuator 114 in an on position. When adjuster pin 156 of actuator 114 is moved to the on position, adjuster shaft 140 is rotated from the off to the on position. This off to on movement preferably is less than 180º and most preferably is no more than about 60º. Once control unit 120 is on, circulation ports 134 are substantially closed off. Thus, fluid flow from chamber 113 into chamber 115 is substantially prevented such that telescoping tubes 12, 14 are substantially prevented from compressing and fork 10 acts like a rigid fork. (Id. at col. 7, l. 65- col. 8, l. 9.) Thus, by operation of the lockout system, the energy absorption of the suspension system may, in effect, be eliminated such that the suspension fork becomes a component regarded as rigid. Claims 16 and 17 are the independent claims involved in this request for inter partes review and are reproduced below: 16. A lockout mechanism for a bicycle suspension fork having a pair of legs, each leg having first and second telescoping fork tubes, said fork undergoing compression when said fork tubes telescope together and expansion when said fork tubes telescope apart, said lockout mechanism selectively converting said bicycle suspension fork from an energy absorbing suspension system permitting compression of said fork to a relatively rigid system inhibiting compression of said fork, said lockout mechanism comprising: 4

5 first and second fluid chambers in fluid communication; a fluid circulation control unit positioned between and controlling fluid flow between said first and second fluid chambers; wherein: said fluid circulation control unit is positionable between an off position in which fluid flows between said first and second chambers such that compression and rebound of said fork are permitted, and an on position in which fluid flow between said first and second chambers is inhibited such that compression of said fork is inhibited; and a blow-off valve positioned between said first and second fluid chambers and permitting limited fluid flow from said first fluid chamber to said second fluid chamber even when said fluid circulation control unit is in said on position. 17. A method of adjusting the compressibility of a bicycle suspension fork having a pair of telescoping fork tubes, said fork undergoing compression when said fork tubes telescope together and expansion when said fork tubes telescope apart, such that the suspension fork is adjusted from being compressible to being substantially rigid and capable of undergoing substantially no compression, said method comprising the steps of: providing at least one fork tube with first and second fluid chambers in fluid communication; providing a fluid circulation control unit between said first and second fluid chambers, said fluid circulation control unit being positionable between an off position in which fluid flows between said first and second chambers such that compression and rebound of said fork are permitted, and an on position in which fluid flow between said first and second chambers is inhibited such that compression of said fork is substantially inhibited; and 5

6 adjusting said fluid circulation control unit to modify the degree to which said first and second fluid chambers are in fluid communication, thereby adjusting the compressibility of said suspension fork. (Ex. 1001, col. 13, l. 34-col. 14, l. 16.) C. The Prior Art HBPSI challenges the patentability of claims on the basis of the following prior art: Shimokura 4,337,850 Jul. 6, 1982 Ex Gonzalez 5,848,675 Dec. 15, 1998 Ex Bradbury 5,509,677 Apr. 23, 1996 Ex Browning 5,308,099 May 3, 1994 Ex D. The Alleged Grounds of Unpatentability HBPSI challenges claims on the following grounds: a. Claims are unpatentable under 35 U.S.C. 102 as anticipated by Shimokura. b. Claims are unpatentable under 35 U.S.C. 102 as anticipated by Gonzalez. c. Claims are unpatentable under 35 U.S.C. 102 as anticipated by Bradbury. d. Claims are unpatentable under 35 U.S.C. 103 as obvious over Shimokura and Gonzalez. e. Claims are unpatentable under 35 U.S.C. 103 as obvious over Shimokura and Bradbury. f. Claims are unpatentable under 35 U.S.C. 103 as obvious over Gonzalez and Shimokura. 6

7 g. Claim 16 is unpatentable under 35 U.S.C. 103 as obvious over Gonzalez and Browning. h. Claim 16 is unpatentable under 35 U.S.C. 103 as obvious over Bradbury and Shimokura. i. Claim 16 is unpatentable under 35 U.S.C. 103 as obvious over Bradbury and Gonzalez. j. Claim 16 is unpatentable under 35 U.S.C. 103 as obvious over Browning and Gonzalez. k. Claim 16 is unpatentable under 35 U.S.C. 103 as obvious over Browning and Shimokura. l. Claim 16 is unpatentable under 35 U.S.C. 103 as obvious over Browning and Bradbury. m. Claims 17 and 18 are unpatentable under 35 U.S.C. 102 as anticipated by Browning. II. ANALYSIS A. HBPSI s Corrected Petition On March 4, 2013, HBPSI submitted its Petition seeking inter partes review of the 049 Patent. Thereafter, on March 28, 2013, HBPSI submitted a Corrected Petition and explanatory cover letter (Paper 12). According to the cover letter, the Petition as originally filed contained a mistake in connection with the Declaration of Edward Kwaterski (Ex. 1012) involving incorrect citations in that Declaration pertaining to the Bradbury reference. (Paper 12, p. 1.) According 7

8 to HBPSI, the Corrected Petition and an accompanying Corrected Declaration of Edward Kwaterski (Ex. 1014) are intended to correct the mistakes. (Id. at 2.) In reviewing the Corrected Declaration, we observe that the changes from the original Declaration cannot be characterized as minor or insubstantial in extent. Rather, comparison of the original Declaration and the Corrected Declaration reveals wholesale substitutions of all cited reference characters and referenced Figures. (Compare Ex. 1012, pp with Ex. 1014, pp ) The Corrected Declaration also includes additional analysis of the disclosure of the Bradbury reference. (E.g., Ex. 1014, p. 10, item f.) Furthermore, there is substantial variance in the discussion and analysis of Bradbury presented in HBPSI s original Petition as compared with its Corrected Petition. (Compare Pet., pp with Cor. Pet., pp ) A petition seeking inter partes review should be complete at the time it is filed in connection with the asserted grounds of unpatentability and the evidence and analysis offered in support thereof. See 35 U.S.C. 312(a)(3); see also 37 C.F.R (b). We note that a petitioner may, via motion, seek to correct a clerical or typographical mistake in the petition. 37 C.F.R (c). Rule 104(c), however, does not give a petitioner recourse to make substantial alterations to the substance of a proposed ground of unpatentability, as HBPSI has done here, under a theory of correction. In that regard, HPBSI s Corrected Petition effectively alleges a new ground of unpatentability. That is not proper. Accordingly, in this decision we have not relied upon the Corrected Petition or Corrected Declaration. Instead, we have evaluated HBPSI s original Petition (Paper 1) and the original Kwaterski Declaration (Ex. 1012) in determining whether to institute inter partes review, and not the Corrected Petition (Paper 12) and Corrected Kwaterski Declaration (Ex. 1014). 8

9 B. Claim Construction 1. Claim terms HPBSI directs our attention to a Claim Construction Order (Exhibit 1007) offering construction of terms of claims of the 049 Patent. (Pet. 8, ) HBPSI urges that the Court s construction should apply in this inter partes review proceeding and that any remaining terms be given their plain and ordinary meaning. (Id.) The Board construes a claim in an inter partes review using the broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R (b); see Office Patent Trial Practice Guide, 77 Fed. Reg , (Aug. 14, 2012). That construction must be consistent with the specification and the claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). In applying such construction here, we do not discern that any term of claims should be interpreted in a manner that departs from its ordinary and accustomed meaning as would be understood by one of ordinary skill in the art. Indeed, we also observe that it is not apparent that any term discussed in the above-noted Order was considered to have a special meaning. We, however, take this opportunity to make explicit the ordinary meaning of the claim term inhibited in the context of claims 16 and 17, each of which includes the term. 2 The pertinent portion of claim 16 is reproduced below: said fluid circulation control unit is positionable between an off position in which fluid flows between said first and second chambers such that compression and rebound of said fork are permitted, and an on position in which fluid flow between said first and second chambers is inhibited such that compression of said fork is inhibited. 2 Claim 18 depends from claim 17 and thus also includes the term. 9

10 (Ex. 1001, col. 13, ll ) (emphasis added). Claim 17 includes a similar clause setting forth that such a fluid circulation control unit is provided and requiring that flow between two chambers is inhibited. Claim 17 slightly differs from claim 16 in specifying that the resulting compression of the fork is substantially inhibited. (Id. at col. 14, ll ) The ordinary meaning of the term inhibit is hinder, restrain, or prevent (an action or process). 3 In connection with claims 16 and 17, the fluid circulation control unit includes an operable on position in which fluid flow between chambers, and subsequent compression of the fork, is hindered, restrained, or prevented, versus an off position in which fluid flow is allowed and compression is permitted. The 049 Patent describes embodiments of the invention in which fluid flow is substantially inhibited. (E.g., Ex. 1001, col. 6, l. 63- col. 7, l. 2.) Indeed, as noted above, claim 17, also qualifies the term inhibited with the term substantially in connection with the compression of the fork. However, each of claims 16 and 17 uses the sole term inhibited unqualified by any term such as substantially in describing control of fluid flow in the on position. While fluid flow that is substantially inhibited may signify that some flow is still permitted, the absence of a term such as substantially in that context indicates that the operation of the control unit when in its on position precludes any fluid flow. Thus, in such a position no flow of fluid is permitted between the chambers. We note that claim 16 includes recitation of an additional blow-off valve component that allows fluid flow in a particular limited circumstance even when the control unit is in its on position. As explained in the 049 Patent, the blow- 3 Oxford Dictionaries, (last accessed July 26, 2013). 10

11 off valve is separate from the fluid circulation control unit and acts as a pressure relief valve to ensure that the bicycle suspension fork will not fail in the event of harsh or sudden impacts applied to the fork, but is not engaged under normal impact conditions. (Ex. 1001, col. 8, ll ) Thus, when the control unit is in the on position, fluid flow is not permitted between chambers of the fork unless operation of the blow-off valve is triggered. (Id. at col. 8, ll ) When not triggered, the fork is in a state characterized as hydraulically locked against lower impacts thereto. (Id. at col. 8, ll ) In other words, although in an extreme circumstance the operation of the blow-off valve effectively overrides the flow inhibition provided by the fluid circulation, under normal conditions no fluid flow is permitted between the chambers. The presence of the blow-off valve in claim 16 does not operate to imbue the term inhibited with a meaning that is not its ordinary one, which, in pertaining to fluid flow, means that such flow between chambers of the fork does not occur. Accordingly, each of claims requires a fluid circulation control unit that has some position, i.e., an on position, in which fluid flow between two chambers is inhibited such that no flow occurs between those chambers. 2. Effect of Preamble We note that there is disagreement between HBPSI and SRAM in connection with the limiting effect of terms appearing in the preamble of each of claims 16 and 17. [A] claim preamble has the import that the claim as a whole suggests for it. Bell Commc ns Research, Inc. v. Vitalink Commc ns Corp., 55 F.3d 615, 620 (Fed. Cir. 1995). A preamble does not limit a claim where it is simply an introduction to the general field of the claim. On Demand Machine Corp. v. Ingram Indus., Inc., 442 F.3d 1331, 1343 (Fed. Cir. 2006). However, [i]f the claim preamble, when read in the context of the entire claim, recites limitations 11

12 of the claim, or, if the claim preamble is necessary to give life, meaning, and vitality to the claim, then the claim preamble should be construed as if in the balance of the claim. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). a. Claim 16 Preamble As noted above, claim 16 is directed to a lockout mechanism for a bicycle suspension fork.... (Ex. 1001, col. 13, ll ) According to HBPSI, the terms lockout and bicycle suspension appearing in the preamble of claim 16 should be given no patentable weight. (Pet ) SRAM urges that those terms give meaning to claim 16 as a whole and should be given patentable weight. (Prelim. Resp ) For the reasons that follow, we agree with SRAM. i. lockout The term lockout characterizes the operation of the mechanism that is recited in claim 16. There is no dispute that the ordinary meaning of lockout mechanism is a device that performs a locking function. (E.g., see Pet.10; Prelim. Resp. 25.) In that regard, as further set forth in claim 16, the lockout mechanism is one that converts a bicycle suspension fork from an energy absorbing suspension system permitting compression of said fork to a relatively rigid system inhibiting compression of said fork. (Ex. 1001, col. 13, ll ) The body of claim 16 provides further guidance as to the nature of the operation of the lockout mechanism in expressing that compression is permitted when a fluid circulation control unit is in an off position allowing fluid flow whereas compression is inhibited when the control unit is in an on position prohibiting fluid flow. (Id. at col. 13, ll ) The term lockout provides context for the on and off nature of the fluid circulation control unit that is part of the locking mechanism. 12

13 The locking mechanism is in a state that is locked when the control unit is on and in a state that is unlocked when the control unit is off. We thus conclude that the term lockout is not a general introduction to the field of claim 16 but instead gives life and meaning to the claim. That is, the term lockout provides a necessary context for the meaning of the recited mechanism as one that performs a particular locking and unlocking function. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1306 (Fed. Cir. 1999). Accordingly, we share SRAM s view that the term lockout should be given weight in determining what is required by claim 16. ii. bicycle suspension The term bicycle suspension describes the type of component that incorporates the lockout mechanism introduced in claim 16. In that regard, the feature at issue is not simply bicycle suspension but is instead bicycle suspension fork. That is, the term bicycle suspension qualifies the type of fork that is a component of claim 16. We observe also that the bicycle suspension fork introduced in the preamble of claim 16 is referenced positively in the body of the claim through repeated recitation to said fork. (Ex. 1001, col. 13, ll. 52 and 55.) When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention. Eaton Corp. v. Rockwell Intern. Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). We conclude that such is the case here. It is clear that it is a bicycle suspension fork that is the subject of claim 16 and which undergoes changes in its compressibility. HBPSI s argument that the term bicycle suspension should carry no weight because the 049 Patent states that the lockout mechanism described therein may have use in connection with a bicycle or other suspension assembly is 13

14 misplaced. (Pet. 11) (emphasis in original). That the 049 Patent generally recognizes some other potential use for a lockout mechanism does not somehow negate the content of claim 16 in specifically limiting the type of fork which employs the lockout mechanism to one that is a bicycle suspension fork. Accordingly, we reject HBPSI s contention that the term bicycle suspension should be given no patentable weight and instead regard the term bicycle suspension fork as a required limitation of claim 16. b. Claim 17 Preamble As with claim 16, claim 17 also includes recitation of the term bicycle suspension fork as a part of the preamble. That preamble further recites that the suspension fork is adjusted to be substantially rigid and capable of undergoing substantially no compression. HBPSI contends that the above-quoted terms should be given no patentable weight. (Pet ) i. bicycle suspension For essentially the same reasons discussed above in connection with claim 16, we reject HBPSI s contention that the term bicycle suspension in conjunction with the recited bicycle suspension fork should be disregarded. Indeed, similar to claim 16, claim 17 introduces a bicycle suspension fork in its preamble and refers to said fork and said suspension fork throughout the body of the claim. (Ex. 1001, col. 13, l. 60 col. 14, l. 16.) We conclude that the component of a bicycle suspension fork is also a required feature of claim

15 ii. substantially rigid and capable of undergoing substantially no compression We are also of the view that the above-quoted feature is one that breathes life into the meaning of claim 17. Claim 17 is a method claim drawn to adjustment of the compressibility of a bicycle suspension fork. The preamble of claim 17 sets forth that the adjustment includes rendering the suspension fork into a condition that is substantially rigid and which undergoes substantially no compression. The body of the claim provides further context for the nature of that substantially rigid state in expressing that compression of the fork is substantially inhibited when fluid flow between first and second chambers of the fork is inhibited. (Ex. 1001, col. 14, ll ) Thus, inhibition of fluid flow substantially inhibits compression of the bicycle suspension fork rendering it substantially rigid. HBPSI does not explain why the above-noted feature of claim 17 should not be accorded patentable weight. Indeed, HBPSI s contention in that regard is merely a speculative statement that the phrase substantially rigid somehow renders superfluous or is in conflict with the body of the claims. (Pet ) HPBSI, however, does not provide any persuasive rationale for that statement. As discussed above, rather than being superfluous or conflicting, the content of the preamble operates in conjunction with the body of the claim to explain how compressibility of the suspension fork is adjusted. For the foregoing reasons, we conclude that the preamble recitation substantially rigid and capable of undergoing substantially no compression provides necessary meaning to claim 17 as a whole and should, therefore, be construed as if in the balance of the claim. 15

16 C. Discussion HBPSI alleges thirteen ground of unpatentability in connection with claims of the 049 Patent. Those grounds are based on the following references: (1) Shimokura; (2) Browning; (3) Gonzalez; and (4) Bradbury. 1. The Grounds Based on Shimokura HBPSI contends that claims are anticipated by Shimokura or that those claims are unpatentable when that reference is combined with either Gonzalez or Bradbury. As discussed above, each of claims requires that a bicycle suspension fork has its compressibility adjusted through control of the flow of fluid within the fork. Shimokura is directed generally to a hydraulic damper. (Ex. 1009, Title.) That damper is disclosed as being formed by a single cylinder in which oil may flow to control damping characteristics. (Id. at Abstract.) The damper is not characterized reasonably as a fork, much less a bicycle suspension fork. Yet, a bicycle suspension fork is required by each of the involved claims. Accordingly, because Shimokura lacks disclosure of a structure that is a bicycle suspension fork, it does not anticipate claims HBPSI also has not explained suitably how or why one with ordinary skill in the art would have modified Shimokura based on Gonzalez or Bradbury to meet the feature of a bicycle suspension fork or to otherwise incorporate Shimokura s damper within a bicycle suspension fork. We observe that HBPSI points to the testimony of Dr. Kwaterski in asserting that claims are rendered obvious in connection with Shimokura. (Pet citing Ex at 7e and 11c.) The noted paragraphs of Dr. Kwaterski s testimony, however, are directed to the content of Browning as well as an 16

17 additional reference, Farris, 4 that HBPSI does not rely upon in any of its alleged grounds of unpatentability. Indeed, it is apparent that Dr. Kwaterski s testimony relies on both the disclosures of Browning and Farris in his assessment of the content of the prior art, yet those references do not form a part of the grounds of unpatentability involving Shimokura on which HBPSI seeks inter partes review. We have considered Dr. Kwaterski s testimony but are not persuaded that it provides suitable underlying support for HBPSI s asserted grounds of unpatentability of claims based on Shimokura combined with either Gonzalez or Bradbury. For the foregoing reasons, we are not persuaded that HBPSI has demonstrated a reasonable likelihood that it will prevail in its contention that claims of the 049 Patent are anticipated by Shimokura or rendered unpatentable when that reference is taken with either Gonzalez or Bradbury. 2. The Grounds Based on Browning HPBSI contends that claim 16 is unpatentable over Browning combined with any of Shimokura, Gonzalez, and Bradbury. HPBSI also contends that claims 17 and 18 are anticipated by Browning. Browning discloses a bicycle suspension system. (Ex. 1002, Abstract.) Browning explains that its disclosed suspension system is located in the head tube at the front of a bicycle frame. (Id.) Review of Browning reveals that head tube 7 is a component that is distinct from front fork 6 of Browning s bicycle frame. (E.g., Id. at col. 3, ll. 1-3; Fig. 1) In that regard, head tube 7 is a vertical tubular member located between front fork 6 and handlebars 5. (Id.) In Browning, the distinct component that is the head tube is the structure that undergoes 4 Evidently, Farris refers to U.S. Patent No. 5,494,

18 compression, not the front fork. Claims 16-18, however, require that it is the bicycle suspension fork that is rendered more compressible or more rigid based on control of the rate of fluid flow within the fork. HBPSI does not explain how the adjustment of compression characteristics of Browning s head tube satisfies that requirement of claims Indeed, HBPSI s allegations of unpatentability involving Browning are offered under the theory that Browning s fork undergoes compression. (E.g., Pet. 30.) However, as discussed above, that is not an accurate assessment of what Browning discloses. Accordingly, we are not persuaded that HBPSI has demonstrated a reasonable likelihood that it will prevail in its contention that claims of the 049 Patent are unpatentable based on the teachings of Browning. 3. The Grounds Based on Gonzalez HBPSI asserts that claims are anticipated by Gonzalez. HBPSI also asserts that claims are unpatentable over Gonzalez and Shimokura. Lastly, HBPSI contends that claim 16 is unpatentable over Gonzalez with Browning. Gonzalez is titled Damping Apparatus for Bicycle Forks. Gonzalez describes that pistons within the legs of a fork may be adjusted to control the compression and rebound functions of the fork legs. (Ex. 1010, col. 1, ll ) Compression piston 134 includes chambers in which oil 42 flows through apertures between the chambers, including a central aperture 124, peripheral apertures 126, dual apertures 127, and angled apertures 148. (Id. at col. 5, ll ; col. 6, ll ) A compression piston unit 38 operates in conjunction with the compression piston to adjust the stiffness of bicycle fork 12. (Id. at col. 7, ll ) The adjustment is achieved by turning a knob 178 that selectively controls the positioning of a needle to control the flow diameter of oil flow aperture 124 and thus the ability of oil 42 to flow through the piston. (Id. at col. 7, ll ) 18

19 During that adjustment process, while the size of oil flow aperture 124 is varied, oil flow apertures 148 are described as remain[ing] open in the event that the damping apparatus is subjected to large bumps. (Id. at col. 7, 63-col. 8, l. 4.) SRAM contends that because oil flow apertures 148 are described as remaining open during the fork stiffening process, Gonzalez does not disclose a control unit with an on position in which flow is inhibited and corresponding compression of the fork is inhibited. (Prelim. Resp ) We agree. Although HBPSI in its Petition points to the above-discussed portions of Gonzalez in urging the unpatentability of the claims, absent from HBPSI s analysis is any mention or recognition of the open status of oil flow apertures 148. Because oil flow apertures 148 always remain open, any control unit of Gonzalez is not operating to achieve an on position in which fluid flow between chambers of a suspension fork is inhibited. That Gonzalez s configuration may be one that functions partially, or even substantially, to inhibit fluid flow when stiffening the fork does not mean that no flow occurs such that flow is inhibited as is required by each of claims We also observe that HBPSI, in urging that Gonzalez discloses a lockout mechanism, characterizes a locked state as being one in which needle 170 [is] relatively closed. (Pet ) HBPSI, however, does not explain why the configuration of a needle which is relatively closed sets forth a mechanism that is locked so as to constitute the lockout mechanism required by claims Furthermore, HBPSI also does not explain why the needle being only relatively closed establishes the above-described on position representing a locked state of the lockout mechanism in which flow is inhibited. Furthermore, with respect to claim 16, HBPSI contends that the required blow-off valve is met by Gonzalez s shim stack (158). (E.g., Pet. 14.) In 19

20 support of that contention, HBPSI directs us to Gonzalez s column 7 lines 63-67, column 8, lines 1-4, and paragraph 9d of the Kwaterski Declaration. The cited portions of columns 7 and 8, however, make no mention of a shim stack (158) and instead, as discussed above, describe that oil flow apertures 148 remain open. Moreover, paragraph 9d of the Kwaterski Declaration refers to a shim stack (159) as forming a pressure relief valve and also cites to the same portions of columns 7 and 8 noted above which make no mention of a shim stack (159). We note that the Kwaterski Declaration also directs us to column 2, lines in its discussion of a pressure relief valve. That portion of column 2 does refer generally to a blow-off valve means. It also, however, refers to a separate shim component that is, evidently, not the blow-off valve means. It is not apparent what component of Gonzalez constitutes the blow-off valve means referenced in column 2. Neither is it apparent how either a shim stack (158) or a shim stack (159) in Gonzalez forms the required blow-off valve of claim 16. Accordingly, we have considered the record before us, but we are unpersuaded that HBPSI has demonstrated that it is likely to prevail on any of its assertions as to unpatentability of claims of the 049 Patent based on Gonzalez. 4. The Grounds Based on Bradbury HBPSI contends that claims are anticipated by Bradbury. HPBSI also alternatively alleges that claim 16 is unpatentable over Bradley combined with either Shimokura or Gonzalez. Bradbury is directed to a suspension fork for a bicycle including fluid-based dampers. (Ex. 1011, Title.) Bradbury discloses that a damping mechanism within the suspension fork may be adjusted without disassembling the fork to vary the damping characteristics as desired. (Ex. 1011, Abstract.) Bradbury 20

21 describes that a fork 10" incorporates a damping mechanism 200b" with a lower port 252a" that provides minimum compressive damping when that port is totally exposed and maximum compressive damping when the port is substantially obstructed. (Id. at col. 13, ll ) HBPSI relies on the abovereferenced portions of Bradbury as setting forth disclosure of a lockout mechanism. HPBSI also points to content of Bradbury at columns 11, lines and Figure 19A as disclosing a fluid circulation control unit (254b") that is said to be positionable between an off position when upper port 252b" [is] completely open and an on position in which flow through upper port 252b" is allegedly inhibited. (Pet ) HBPSI further relies on testimony of Dr. Kwaterski as characterizing that when upper portion 252b" is substantially obstructed then flow through that port is inhibited. (Kwaterski Decl., 10.) HBPSI also maintains that Bradbury discloses a mechanical device that can be unlocked (port 252b" unblocked) and locked (port 252b" blocked). (Pet. 16.) SRAM contends that Bradbury does not satisfy the requirements of claims In particular, SRAM contends that Bradbury s damping mechanism 200b" adjusts the degree of damping provided by the fork but does not constitute a lockout mechanism in which the fork is relatively rigid and compression of the fork is inhibited. (Prelim. Resp ) In that regard, SRAM argues that although the Bradbury fork can be stiffened by reducing the flow of fluid, compression of the fork can never be inhibited because upper port 252 always remains open. (Prelim. Resp. 44.) In reviewing HBPSI s Petition and the Kwaterski Declaration, it is evident that those documents rely on an amalgamation of the structural and operational configuration of embodiments of Bradbury s invention presented in each of Figure 13 (A and B) and Figure 19 (A and B). Those figures, however, describe two 21

22 separate embodiments. In that regard, Figure 13 is described as an adjustable valve of a damped fork ultimately illustrated in Figure 9 which is characterized as another embodiment of a bicycle fork which utilizes fluid-based damping. (Ex. 1011, col. 3, ll ) Figure 19 is described as one embodiment of a fork with a damper in each of the left and right fork legs during compression and expansion respectively. (Id. at col. 3, ll ) The hallmark of anticipation is prior invention, which means that to anticipate under 35 U.S.C. 102, a prior art reference must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements arranged as in the claim. Net MoneyIn, Inc. v. VeriSign Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). HBPSI s petition does not explain why the combination of features of multiple embodiments of a reference establishes that the reference discloses the elements in a manner recognized as arranged as in claims of the 049 Patent. Moreover, we also observe that the portions of Bradbury cited by HBPSI describe the characteristics of fluid flow through two different ports, i.e., lower port 252a" and upper port 252b", and not flow through a single upper port as is suggested by HBPSI. HBPSI s reliance on the teachings of Shimokura or Gonzalez does not remedy the above-discussed deficiencies of Bradbury. HBPSI points to the declaration testimony of Dr. Kwaterski in asserting the obviousness of claim 16 based on Bradbury and Shimokura. (Pet ) That testimony, however, is based on the teachings of not just Bradbury and Shimokura, but also Browning and Farris. None of HBPSI s proposed grounds of unpatentability based on Bradbury includes Browning or Farris. Furthermore, HBPSI s assertion that claim 16 is unpatentable over Bradbury and Gonzalez relies on disclosure in Gonzalez of a shim stack (158) as forming the blow-off valve of claim 16. (Pet. 28.) As 22

23 discussed above, we are not persuaded on this record that shim stack (158) constitutes the required blow-off valve. Accordingly, for the foregoing reasons, we are not persuaded that HBPSI has demonstrated a reasonable likelihood that it will prevail in its assertion that claims are anticipated by Bradbury or that claim 16 is unpatentable over Bradbury taken with Shimokura or Gonzalez. 5. Additional Matters SRAM also requests that the Board deny HBPSI s petition for inter partes review on the theories that: (1) the Petitioner has not complied with the statutory and regulatory requirements set forth in 35 U.S.C. 312(a)(2) and 37 C.F.R to identify the real party-in-interest; and (2) the Petitioner is prohibited from seeking inter partes review because Hayes Bicycle Group, Inc. Petitioner s real party-in-interest and privy, is estopped under 37 C.F.R (c) and applicable law from challenging the claims of U.S. Patent No. 6,217,049 ( the 049 patent ) on the grounds identified in the Petition. (Prelim. Resp. 1.) Because we conclude that HBPSI has not shown a reasonable likelihood that it will prevail in its contention that claims are unpatentable based on the grounds advanced in the petition, we need not reach the above issues. III. CONCLUSION For the foregoing reasons, we determine that HBPSI s petition does not establish that there is a reasonable likelihood that HBPSI will prevail with respect to its challenges to claims of the 049 Patent. IV. ORDER After due consideration of the record before us, it is: 23

24 ORDERED that HBPSI s petition is denied as to all challenged claims, and no trial based on HBPSI s petition is instituted. For PETITIONER: Kevin Moran kpmoran@michaelbest.com Gilberto Espinoza geespinoza@michaelbest.com For PATENT OWNER: Michael Hickey mhickey@lewisrice.com 24