## Facts

- SRAM owned U.S. Patent No. 9,182,027 covering bicycle chainrings with (1) alternating narrow and wide tooth tips and (2) teeth offset from the chainring center (inboard or outboard).
- FOX sought inter partes review of claims 1–6 and 13–19, asserting obviousness based on two prior-art references.
- The PTAB found the prior art disclosed all limitations of the challenged independent claims and found a motivation to combine.
- SRAM relied on evidence tied to its commercial X-Sync chainrings (commercial success, industry praise, and copying) as objective indicia of nonobviousness.
- The PTAB treated X-Sync as coextensive with the challenged claims and applied a presumption that the secondary-considerations evidence had a nexus to the claims, concluding the claims were not unpatentable.
- FOX appealed the final written decisions.

## Issues

1. Whether the PTAB erred by applying a presumption of nexus between SRAM’s secondary-considerations evidence and the challenged claims based on SRAM’s X-Sync product.
2. If no presumption applied, whether the PTAB adequately evaluated whether SRAM proved a nexus in fact between the evidence and the claimed invention (rather than prior-art or unclaimed features).

## Decision

- The Federal Circuit vacated the PTAB’s final written decisions and remanded.
- The court held the PTAB erred in presuming nexus because the record did not show X-Sync was coextensive with the full scope of the challenged claims.
- The court directed the PTAB on remand to assess whether SRAM could establish a nexus in fact between the secondary-considerations evidence and the claimed combination.
- The court left undisturbed the PTAB’s findings that the prior art disclosed the claim limitations and that a skilled artisan would have been motivated to combine the references.

## Legal Principles

- Secondary considerations can be given substantial weight in an obviousness analysis only if there is a legally and factually sufficient connection (nexus) between the evidence and the claimed invention.
- A presumption of nexus applies only when the patentee shows the commercial product is essentially the claimed invention; the presumption is inappropriate where the product includes significant unclaimed features, where the product reflects only one embodiment within a broader claim scope, or where other patented or prior-art features may explain the evidence.
- Without a presumption, the patentee must prove nexus in fact by showing the evidence is attributable to the claimed combination, not to prior-art elements in isolation or to unclaimed aspects of the product.
- When a product is associated with multiple patents or multiple potentially inventive features, the factfinder must separate which features drive commercial success or praise and tie that showing to the specific claim elements at issue.

## Conclusion

The Federal Circuit held that the PTAB improperly presumed a nexus between SRAM’s objective indicia and the challenged claims because the commercial product was not shown to be coextensive with the claims and could reflect other features; the court vacated and remanded for a proper nexus analysis.


FOX Factory, Inc. v. SRAM, LLC, 944 F.3d 1366 (Fed. Cir. 2019)