United States: Not So Secondary: Overcoming Obviousness With Objective Indicia

Last Updated: April 16 2018
Article by David B. Cochran and Richard A. Graham Jr.
Most Read Contributor in United States, September 2019

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 new chainring. Id. at 29-30. The Board instituted on all petitioned claims based on a combination of Hattan and Shimano. Id. at 2, 6.

The Prior Art

The Board first conducted a standard obviousness analysis. Examining the scope and content of the prior art and then searching for any differences between the prior art and the claimed invention, the Board found that the Hattan and Shimano devices disclosed all of the claim features of the challenged claims, albeit in two systems that operate based on different principles. Fox Factory, IPR2016-01876, slip op. at 13-18. While the Board ultimately found that there was a sufficient motivation to combine, the Board credited Patent Owner's argument that the different principles of operation were a weakness in petitioner's obviousness position. Id. at 17-18.

By highlighting discrepancies in petitioner's arguments and evidence that included suspicious changes in position by petitioner's expert, Patent Owner was able to convince the Board that these identified weaknesses cast doubt on petitioner's positions. See id. at 18-21 ("In sum, ... the evidence does suggest that modifying Hattan in the way proposed could have negatively affected its operation in some ways, which weighs slightly against the likelihood of a person of ordinary skill making the proposed modification."); see also id. at 22 ("[G]iven the problems identified above, ... we determine that Petitioner has only shown, at best, that the evidence weighs slightly in favor of making the above modification of Hattan in view of [Shimano].")

Objective Indicia of Non-Obviousness

Patent Owner argued in its reply that the success and industry reception of Patent Owner's family of X-Sync products weighed against petitioner's prior art based arguments. Patent Owner's objective indicia of non-obviousness included evidence of commercial success, licensing, copying, praise by others, and long-felt, unresolved need. Fox Factory, IPR2016-01876, slip op. at 21. To support these positions, Patent Owner presented evidence that the challenged claims covered all of the twelve families of products, and therefore Patent Owner was entitled to a presumption of a nexus. Id. The Board credited these positions, as follows, tipping the scales in favor of patentability.

Patent Owner's Nexus

"To be relevant, evidence of non-obviousness must be commensurate in scope with the claimed invention," thus, "to be accorded substantial weight, there must be a nexus between the merits of the claimed invention and the evidence of secondary considerations." Id. at 23-24.i A nexus is presumed when a marked product embodies claimed features, and is coextensive with them. Id.ii Once established the burden shifts to the other party to present evidence rebutting the presumed nexus. Id. Here, Patent owner demonstrated that each product of the X-Sync families practiced each element of one or more of the challenged claims. Id. at 24.

Petitioner did not dispute that the claims covered the X-Sync products, and instead argued that the X-Sync products were "not coextensive," because the products include "hundreds of features ... not claimed in the '027 patent," including features covered by other patents. Id. at 24-25. In reply, Petitioner argued that the X-Sync products include numerous features unrelated to the claimed chainring, including elements of the rear cassette and the drivetrain generally. Id.iii

The Board, nevertheless, found that Patent Owner was entitled to a presumption of nexus and that Petitioner failed to rebut that presumption. Id. at 30, 34. Petitioner's counter-arguments were not persuasive, because petitioner failed to present evidence that "the [objective evidence of non-obviousness] was due to "extraneous factors" including "additional unclaimed features," "other patents," or that the "merits of the claimed invention were readily available in the prior art." Id. at 25-34 (cataloging substantial evidence and testimony by the parties).iv And, even though certain X-Sync products were entire drivetrain systems, the two groups of claims, discussed above, together broadly encompassed all additional features in the X-Sync systems. Id. at 29. To this point, the Board specifically credited Patent Owner's evidence that it was the chainring itself that enabled the unclaimed features of the X-Sync products, including any additional noteworthy elements. Id. at 31, 38-39.

Having established a nexus, the Board considered Patent Owner's object evidence of non-obviousness. Id. at 35-51.

Commercial Success

The Board found "substantial commercial success within the single chainring market," demonstrated by Patent Owner's sales and marketing evidence showed "large growth in market share and sales volume, and resulting large market share in the single chainring market, to be indicative of commercial success." Id. at 35. Petitioner argued that that Patent Owner failed to show market share, because Patent Owner's sales "cannibalized" its own multi-chainring sales. But, "cannibalization does not preclude commercial success," and moreover, Patent Owner "achieved this large market share, in the single-chainring market, while charging between two and eight times the prices of its competitors" in that market. Id. at 36.v

Industry Praise and Skepticism

The Board also considered Patent Owner's evidence regarding industry praise and skepticism. "Praise from industry participants, especially competitors, is probative as to obviousness." Id.vi at 36. The Board cataloged at least 16 sources of industry praise and credited the evidence as tying the praise directly to the X-Sync chainring. Id. at 37-40. In particular, the Board credited praise that patent owners invention, embodied in the X-Sync, was "the missing piece in the single-chain drivetrain puzzle." Id. at 39-40 (emphasis added). Thus, the Board gave significant weight to this evidence. Id. at 40.

Patent Owner also introduced multiple sources of evidence of the industry's skepticism, including an industry article noting "more than a few editors on site were concerned about the lack of a chain guide on our test bikes" and "that one editor insisted that [Patent Owner] had embedded high-power magnets into the CNC-machined aluminum chainring (alas, there were none)." Id. at 40-41 (internal quotes omitted). Explaining that "evidence of industry skepticism weights in favor of non-obviousness," the Board gave significant weight to this evidence. Id.vii

Long Felt Need

"Evidence of a long felt but unsolved need that is met by the claimed invention is further evidence of non-obviousness." Id.viii To this point, the Board strongly credited Patent Owner's position that "the problem of maintaining a chain on a chainring has existed for more than 100 years," and that "prior art attempts ... failed to address several issues" including those solved by the challenged claims: increased complexity, weight, and friction. Id.

Prior to Patent Owner's invention, bicycle drivechain systems included complex guides, guards, and rollers to prevent chain-dropping when traversing rough terrain. See Fox Factory, IPR2016-01876, slip op. at 9-12, 31-32, 35-36, 41-43. These additional features were necessary, because the angle at which a bicycle chain approaches the chainring has substantial variability as a chain traversed the gears of the rear gear speed cassette. Id. As the angle of approach increased, the risk that the chain would be dropped also increased. Id. The Board thus found "strong evidence that a long-felt need existed," including testimony supported by 16 exhibits showing that that the "X-Sync chainring met this need," entitling this factor to significant weight. Id. at 41, 43-44.

Licensing and Copying

Patent Owner also introduced evidence relating copying of its products, and evidence regarding eight licensees, "some of whom are major industry players." Id at 45. But in each case the Board only credited these arguments with "some weight." Id. at 47, 51. As to the licensing evidence, Patent Owner's positions were weakened in some cases, because the licensees were licenses to a German family member patent, and in other cases "because it is often cheaper to take a license than to defend infringement suit." Id. at 44-47.ix As to the evidence of copying, Patent Owner claimed "at least seventeen (17) different companies who have copied its patented technology." Id. at 47-48.x But, Patent Owner's arguments were based primarily on "access to, and substantial similarity to" the patented products. Id. at 49. While petitioner did not rebut the evidence of access, the Board agreed with petitioner that the evidence provided was "not very detailed," and so was only "entitled to some weight, but not significant weight." Id. at 51.

The Boards Conclusion

While the Board acknowledges that "petitioner has, at best, shown that there would be some weak motivation to combine the references," the Board ultimately found that "Patent Owner has made an extremely strong overall showing of objective indicia of non-obviousness." Id. This showing included "very strong showings on industry praise, skepticism, and long felt need, a strong showing on commercial success, and a weak showing on licensing and copying." Id. Thus, weighing all four Graham factors, the Board concluded that Petitioner failed to carry its burden to show that the challenged claims would have been obvious over the combination of Hattan and Shimano. In so doing, the Board noted that:

"[T]his is not a case as in Intercontinental Great Brands LLC v. Kellogg North America Co., 869 F.3d 1336, 1342-47 (Fed. Cir. 2017), where the strong case of obviousness outweighs the objective indicia of non-obviousness. On the contrary, we find that the case of obviousness here is easily outweighed by the objective evidence of non-obviousness."

Id. at 51-52. Also, with respect to each category of objective evidence, petitioner essentially argued a lack of nexus. Other than with respect to Licensing and Copying, the petitioner did not present evidence to negate Patent Owner's evidence, instead merely arguing in each case that the evidence was not tied to the claimed features. But, having established the nexus, the Board gave little credence to petitioner's repeated arguments to this effect. See, id. at 39, 40, 42, 44, 50.


This case provides numerous lessons about preparing and defending a case of obviousness. Patent Owners sensing a weakness in petitioner's grounds should endeavor to develop and present rigorously supported evidence of secondary considerations to tip the scales in favor of a finding of non-obviousness. And when confronted with well supported objective evidence of non-obviousness, petitioners should ensure they attack each category directly so that petitioner's position in each case does not simply fall with the question of nexus.


i Citing In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011); In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995).

ii Citing Teva Pharms. USA, Inc. v. Sandoz, Inc., 723 F.3d 1363, 1372 (Fed. Cir. 2013); Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000).

iii Citing WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1335 (Fed. Cir. 2016); PPC Broadband, Inc. v. Corning Optical Commc'ns RF, LLC, 815 F.3d 734, 747 (Fed. Cir. 2016).

iv Citing Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072-73 (Fed. Cir. 2018) ("[The challenged claims] broadly cover the entire vehicle. Rather than 'only a component of a commercially successful machine." and "to rebut the presumption of nexus the patent challenger must 'present[] evidence to show that the [objective evidence] was due to extraneous factors other than the claimed invention.").

v Citing Medtronic, Inc. v. Daig Corp., 789 F.2d 903, 907 (Fed Cir. 1986) (cannibalization does not preclude commercial success).

vi Citing Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1053 (Fed. Cir. 2016) (en banc).

vii Citing WBIP, 829 F.3d at 1335 ("If industry participants or skilled artisans are skeptical about whether or how a problem could be solved or the workability of the claimed solution, it favors non-obviousness.").

viii Citing Millennium Pharms., Inc. v. Sandoz Inc., 862 F.3d 1356, 1369 (Fed. Cir. 2017).

ix Citing Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2004).

x Citing Crocs, Inc. v. Int'l Trade Comm'n, 598 F.3d 1294, 1311 (Fed. Cir. 2010) ("Copying may indeed be another form of flattering praise for inventive features."); Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) (copying "requires evidence of efforts to replicate a specific product.")

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions