SRAM, LLC v. Princeton Carbon Works Inc.

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF FLORIDA

CASE NO. 21-80581-CIV-ALTMAN/Reinhart

SRAM, LLC,

Plaintiff,

v.

PRINCETON CARBON WORKS,

INC.,

Defendant.

________________________________/

ORDER

Our parties sell expensive bicycle wheels. In this lawsuit, SRAM (our Plaintiff) alleges that

Princeton (our Defendant) has infringed on the designs of its ‘188 and ‘800 patents.1 After some

protracted litigation, the parties filed cross-motions for summary judgment, which we now resolve.

See SRAM’s Motion for Partial Summary Judgment (“SRAM’s MSJ”) [ECF No. 101]; Princeton’s

Motion for Summary Judgement (“Princeton’s MSJ”) [ECF No. 106].2

In its MSJ, SRAM advances along two fronts. First, it asks for summary judgment on

Princeton’s invalidity defenses3 under 35 U.S.C. §§ 102–03, because (SRAM says) “the USPTO has

already found that Princeton’s prior art submissions were insufficient to satisfy the [Patent Trial and

Appeal Board’s (“PTAB’s”)] much lower standard of proof[.]” SRAM’s MSJ at 5. Princeton (SRAM

1 (officially referred to as U.S. Patent Nos. 10,611,188 and 9,610,800, respectively).

2 The MSJs are fully briefed and ripe for adjudication. See Princeton’s Response in Opposition to

SRAM’s Motion for Partial Summary Judgment (“Princeton’s Response”) [ECF No. 120]; SRAM’s

Reply in Support of its Motion for Partial Summary Judgment (“SRAM’s Reply”) [ECF No. 132];

SRAM’s Response in Opposition to Princeton’s Motion for Summary Judgment (“SRAM’s

Response”) [ECF No. 117]; Princeton’s Reply in Support of its Motion for Summary Judgment

(“Princeton’s Reply”) [ECF No. 134].

3 Actually, they’re one affirmative defense and two counterclaims.

contends) thus “cannot sustain its heavy burden of proof on the same or similar references here.” Ibid.

As we’ll explain in a moment, though, we disagree with SRAM’s view of the relevance of the PTAB

proceedings. Second, SRAM argues that “Princeton has effectively conceded on its invalidity defense

under 35 U.S.C. § 112 with respect to indefiniteness, written description, and enablement,” id. at 3,

such that “there is no genuine dispute of material fact that the claims of the ‘800 and ‘188 Patents

have sufficient written description, are enabled, and are definite per the requirements of the Patent

Act,” id. at 20. Princeton doesn’t contest this second argument—likely because it long ago abandoned

its § 112 defenses.

Princeton, meanwhile, seeks “summary judgment of non-infringement for all asserted claims”

because (in its view) the “established facts do not allow SRAM to prove that [Princeton’s] products

infringe the asserted patent, either literally or under the doctrine of equivalents.” Princeton’s MSJ at

1. This is so, Princeton insists, for at least three reasons. First, Princeton maintains that its wheels don’t

“literally” infringe upon either the “convex exterior profile” or “convex profile” limitations of SRAM’s

‘800 and ‘188 patents or the “continuously varies” limitation of SRAM’s ‘800 patent, because “none

of [Princeton’s] accused products have ‘convex’ profiles,” id. at 9, and because “none of [Princeton’s]

accused products have a ‘radial distance’ that ‘continuously varies,’” ibid. Second, pointing to the

doctrine of equivalents, Princeton says that its products don’t infringe the ‘800 or ‘188 patents because,

as Princeton sees things, “SRAM’s ‘close enough’ infringement theory is precluded as a matter of

settled Supreme Court and Federal Circuit precedent.” Id. at 12. Third, as to the ‘188 patent specifically,

Princeton insists that SRAM is precluded from relying on the only definition of “convex exterior

profile” that (in Princeton’s view) might have supported a claim of infringement by equivalence. Id. at

17, 19.

After careful review, and for the reasons set out below, we GRANT in part and DENY in

part SRAM’s MSJ, DENY Princeton’s MSJ, and (for reasons we’ll get into later) DENY as moot

Princeton’s Motion to Strike [ECF No. 133].

THE LAW

“The court shall grant summary judgment if the movant shows that there is no genuine dispute

as to any material fact and the movant is entitled to judgment as a matter of law.” FED. R. CIV. P.

56(a). In determining whether to grant summary judgment, the Court must consider “particular parts

of materials in the records, including depositions, documents, electronically stored information,

affidavits or declarations, stipulations (including those made for purposes of the motion only),

admissions, interrogatory answers, or other materials.” FED. R. CIV. P. 56(c). “By its very terms, [the

summary judgment] standard provides that the mere existence of some alleged factual dispute between

the parties will not defeat an otherwise properly supported motion for summary judgment; the

requirement is that there be no genuine issue of material fact.” Anderson v. Liberty Lobby, Inc., 477 U.S.

242, 247–48 (1986). An issue of fact is “material” if it might affect the outcome of the case under the

governing law. Id. at 248. A dispute about a material fact is “genuine” if the evidence could lead a

reasonable jury to find for the non-moving party. Ibid. “The mere existence of a scintilla of evidence

in support of the plaintiff’s position will be insufficient; there must be evidence on which the jury

could reasonably find for the plaintiff.” Id. at 252.

“[A] party seeking summary judgment always bears the initial responsibility of informing the

district court of the basis for its motion and identifying those portions of the [record] which it believes

demonstrate the absence of a genuine [dispute] of material fact.” Glaverbel Societe Anonyme v. Northlake

Mktg. & Supply, Inc., 45 F.3d 1550, 1560 (Fed. Cir. 1995) (cleaned up) (quoting Celotex Corp. v. Catrett,

477 U.S. 317, 323 (1986)). If the movant succeeds at this first step, the burden then shifts to the

nonmovant to “point to some evidence in the record sufficient to suggest that his view of the issue

might be adopted by a reasonable factfinder.” Id. at 1560–61; see also FED. R. CIV. P. 56(e).

When ruling on a motion for summary judgment, the Court “need consider only the cited

materials, but it may consider other materials in the record.” FED. R. CIV. P. 56(c)(3). “In considering

whether summary judgment should [be] granted, we view the evidence in a light most favorable to the

non-movant and draw all reasonable inferences in its favor.” McKay v. United States, 199 F.3d 1376,

1380 (Fed. Cir. 1999). And, “[w]hen both parties move for summary judgment, each party’s motion

must be evaluated on its own merits and all reasonable inferences must be resolved against the party

whose motion is under consideration.” Ibid. (citing Mingus Constrs., Inc. v. United States, 812 F.2d 1387,

1390 (Fed. Cir. 1987). Of course, “assessments of credibility—no less than the weighing of evidence—

are fact questions not susceptible of disposition at summary judgment.” Obremski v. Armor Corr. Health

Servs., Inc., 467 F. Supp. 3d 1265, 1275 (S.D. Fla. Apr. 7, 2020) (Altman, J.).

“[I]f there are any genuine issues of material fact, the Court must deny summary judgment and

proceed to trial.” Torres v. Wal-Mart Stores E., LP, 555 F. Supp. 3d 1276, 1282 (S.D. Fla. Aug. 17, 2021)

(Altman, J.). The Court, on the other hand, must grant summary judgment if a party “has failed to

make a sufficient showing on an essential element of [its] case.” Celotex, 477 U.S. at 323; see also McKay,

199 F.3d at 1380 (“A motion for summary judgment is properly granted only if there is no genuine

issue as to any material fact, and the moving party is entitled to judgment as a matter of law.”).

“In rendering a decision on a motion for summary judgment, a court must ‘view the evidence

presented through the prism of the substantive evidentiary burden’ that would inhere at trial.” Monarch

Knitting Mach. Corp. v. Sulzer Morat Gmbh, 139 F.3d 877, 880 (Fed. Cir. 1998) (quoting Anderson, 477

U.S. at 254). “Summary judgment of invalidity, therefore, must be predicated on facts established by

clear and convincing evidence.” Apple Computer, Inc. v. Articulate Sys., Inc., 234 F.3d 14, 20 (Fed. Cir.

2000) (citing Rockwell Int’l Corp. v. United States, 147 F.3d 1358, 1362 (Fed. Cir. 1998)).

ANALYSIS

I. SRAM’s MSJ on Princeton’s § 112 Defenses and Counterclaims

We’ll start with the easy one: Princeton has abandoned its position that SRAM’s patents are

invalid under § 112. In its Third Affirmative Defense (and again in Counterclaims III & IV), Princeton

alleged that SRAM’s ‘800 and ‘188 patents are invalid under § 112 “because the full scope of those

claims is not adequately supported by a written description, is not enabled, and is indefinite.”

Princeton’s Answer, Affirmative Defenses, and Counterclaim (“Princeton’s Answer”) [ECF No. 16]

at 9, 17–19. SRAM has now moved for summary judgment on the first two of these “based on [an]

utter lack of evidence[.]” SRAM’s MSJ at 18. In SRAM’s view, “Princeton cannot, as a matter of law,

assert lack of written description or enablement as grounds for invalidity of the ‘800 and ‘188 Patent

claims.” Ibid. And, as to the third of these, SRAM argues that Princeton has abandoned its claim that

SRAM’s patents are indefinite. See id. at 18–19. As SRAM rightly points out, in the weeks after our

first Markman hearing, Princeton conceded that the word “convex” can be construed. Id. at 19; see also

Joint Stipulation Regarding Claim Construction [ECF No. 93] at 1 (outlining Princeton’s proposed

constructions for the terms “convex interior profile,” “convex profile,” and “convex region”).4

Either way, Princeton never contested SRAM’s § 112 arguments in its Response. See generally

Princeton’s Response (failing to address SRAM’s § 112 contentions). It’s thus waived any arguments

it might’ve made to save this affirmative defense (and these counterclaims). See, e.g., In re Apple Inc.,

979 F.3d 1332, 1337 (Fed. Cir. 2020) (“Ordinarily, an appellant waives issues or arguments not

4 It’s true, of course, that Princeton’s proposed constructions for these terms differed to some degree

from SRAM’s. But that’s neither here nor there. A claim is indefinite, after all, only when it “fail[s] to

inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus,

Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014) (emphasis added). “The definiteness requirement

thus ‘mandates clarity, while recognizing that absolute precision is unattainable.’” Niazi Licensing Corp.

v. St. Jude Med. S.C., Inc., 30 F.4th 1339, 1347 (Fed. Cir. 2022) (quoting Nautilus, 572 U.S. at 910). By

agreeing, in other words, that these terms can be construed, Princeton has conceded that they’re not

indefinite.

properly raised in its opening brief.”); Novosteel SA v. United States, 284 F.3d 1261, 1274 (Fed. Cir. 2002)

(“[A] party waives arguments based on what [does not] appear[ ] in its brief.”).

We therefore GRANT SRAM’s MSJ as to Princeton’s § 112 defenses as they appear in

Princeton’s Third Affirmative Defense and in its Third and Fourth Counterclaims.

II. SRAM’s MSJ on Princeton’s invalidity defense and counterclaims under 34

U.S.C. §§ 102–03

On the other hand, when we view the evidence (as we must) in the light most favorable to

Princeton,5 we think a reasonable jury could side with Princeton on a separate part of its Third

Affirmative Defense (and its Third and Fourth Counterclaims)—namely, where Princeton asserted

that SRAM’s patents are invalid because they were anticipated or rendered obvious by some prior art.

See Princeton’s Answer at 9, 17–19. In these defenses (and counterclaims), Princeton pointed to eleven

prior patents for its view that the ‘188 and ‘800 patents should never have been issued. See Princeton’s

Response at 17 (“Eight of [Princeton’s] eleven anticipation invalidity theories have never been

previously considered by the PTO, the PTAB, or by a jury.”). In its MSJ, SRAM asks us to ignore all

these prior-art references for two reasons. One, SRAM says that the PTAB already rejected a similar

argument Princeton advanced in its petitions for inter partes review—which (SRAM acknowledges)

were based on just three of the eleven prior-art references at issue here.6 See SRAM’s MSJ at 7. Since

the standard on inter partes review is somewhat lower than it is here, SRAM asks us to follow the PTAB

and disregard this prior art. Id. at 9. Two, SRAM claims that Princeton has adduced no evidence for its

view that any of the prior-art references either “anticipated” or “rendered obvious” the ‘188 and ‘800

patents. Id. at 12. In saying so, SRAM maintains that each of these prior-art references is cumulative

5 Cf. Dairyland Power Co-op. v. United States, 16 F.3d 1197, 1202 (Fed. Cir. 1994) (“Furthermore, all

evidence must be viewed in the light most favorable to the nonmoving party, and all reasonable factual

inferences should be drawn in favor of the nonmoving party.”).

6 For those scoring at home, the three prior arts were Carlson, Herting, and Zibkoff. See SRAM’s MSJ

at 7.

of the three the PTAB has already rejected. Ibid. We disagree.

To begin with, SRAM’s reliance on the PTAB’s refusal to initiate inter partes review is

misplaced. Princeton (it’s true) went to the PTAB “contending that both patents-in-suit were invalid.”

SRAM’s MSJ at 2. And (SRAM’s right) the PTAB “found Princeton’s prior art references were

insufficient under the PTAB’s significantly lower standard of proof.” Ibid. But, for three reasons,

SRAM’s just wrong to suggest that, “[b]ecause Princeton could not succeed with its purportedly best

references before the PTAB, Princeton cannot sustain its heavy burden of proof on the same or similar

references here.” Id. at 5 (emphasis added).7

First, as Princeton points out, “the fact remains that denial of an IPR petition is simply not an

adjudication of an invalidity contention.” Milwaukee Elec. Tool Corp. v. Snap-On Inc., 271 F. Supp. 3d

990, 1028 (E.D. Wis. 2017); see also Oil-Dri Corp. of Am. v. Nestle Purina Petcare Co., 2017 WL 3278915,

at *4 (N.D. Ill. Aug. 2, 2017) (“A denial of a petition for IPR is not a final decision rejecting an

invalidity contention.”). SRAM does nothing to rebut this well-settled legal principle.

Second, the PTAB’s refusal to initiate inter partes review isn’t binding because it doesn’t result in

the issuance of a written decision. As Congress has explained, “[t]he petitioner in an inter partes review

of a claim in a patent under this chapter that results in a final written decision under section 318(a) . . . may

not assert [ ] in a civil action . . . that the claim is invalid on any ground that the petitioner raised or

reasonably could have raised during that inter partes review.” 35 U.S.C. § 315(e)(2) (emphasis added).

In our case (both sides agree), the PTAB neither reviewed nor issued a “final written decision” on

Princeton’s claim. See Joint Statement of Undisputed Facts (the “JSOF”) [ECF No. 103] ¶ 9 (“On

7 In its Reply, SRAM softens this language and concedes that the results of the PTAB process are

merely “persuasive,” not binding. See SRAM’s Reply at 2 (“In fact, SRAM expressly stated that it was

not claiming statutory estoppel, but instead identifying, as courts have noted, the instructive, persuasive

reasoning of the PTAB’s confirmation of the validity of all asserted claims of the ‘800 and ‘188

patents.”). But its opening brief sang something of a different tune, as the emphasized “cannot” in the

quoted sentence above implies.

April 20, 2022, the PTAB issued a Decision Denying Institution of Inter Partes Review in IPR2022-

00078[.]”); id. ¶ 31 (“On April 20, 2022, the PTAB issued a Decision Denying Institution of Inter Partes

Review in IPR2022-00082[.]”).

And the Federal Circuit has repeatedly said that “[t]he validity of claims for which the Board

did not institute inter partes review can still be litigated in district court.” Symopsys, Inc. v. Mentor Graphics

Corp., 814 F.3d 1309, 1316 (Fed. Cir. 2016), overruled on other grounds by Aqua Prods., Inc. v. Matal, 872

F.3d 1290 (Fed. Cir. 2017); see also Cal. Inst. of Tech. v. Broadcom Ltd., 25 F.4th 976, 990 (Fed. Cir. 2022)

(“Congress could not have intended to bar later litigation of the issues that the PTAB declined to

consider.”); Shaw Indus. Grp., Inc. v. Auto. Creek Sys., Inc., 817 F.3d 1293, 1300 (Fed. Cir. 2016) (“We

agree with the PTO that § 315(e) would not estop Shaw from bringing its Payne-based arguments in

either the PTO or the district courts. . . . The PTO denied the [IPR] petition as to that ground, thus

no IPR was instituted on that ground. The IPR does not begin until it is instituted . . . . The plain

language of the statute prohibits the application of estoppel under these circumstances.”); cf. Credit

Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1052 (Fed. Cir. 2017) (“Because a final written

decision does not determine the patentability of non-instituted claims, it follows that estoppel does

not apply to those non-instituted claims[.]”).

Third, two of the three cases SRAM relies on for its view that the PTAB’s decision should

“instruct[ ]” us here are totally different from our case—and the third actually undermines SRAM’s

position. See SRAM’s MSJ at 7–8 (citing Precision Fabrics Grp., Inc. v Tietex Int’l, Ltd., 2016 WL 6839394

(M.D.N.C. Nov. 21, 2016); then Procter & Gamble Co. v. Team Techs., Inc., 2014 WL 12656554 (S.D.

Ohio July 3, 2014); and then Ultratec, Inc. v. Sorenson Commc’ns, Inc., 2015 WL 5330284 (W.D. Wis. Sept.

11, 2015)).

The first case, Precision Fabrics, is completely unhelpful to SRAM. The plaintiff there moved

for summary judgment on (among other things) the defendant’s invalidity counterclaims. See Precision

Fabrics, 2016 WL 6839394, at *1. In its counterclaims, the defendant (TieTex) had sought “a

declaration that [the plaintiff’s] ‘639 and ‘162 patents are invalid pursuant to one or more of the

provisions of 35 U.S.C. §§ 102, 103, and/or 112.” Id. at *9 (cleaned up). Unlike our case, though, the

PTAB in Precision Fabrics had instituted an inter partes review of TieTex’s petition (as it related to the

‘639 patent), and it had issued a final decision on TieTex’s validity challenge. See ibid. (“By the time

TieTex filed its response brief, the PTAB had rendered its final decision, rejecting every challenge by

[Precision Fabrics] to the ‘639 patent.”). Noting that the PTAB had issued a final decision, the court

found that “35 U.S.C. § 315(e)(2) estop[ped] TieTex from asserting that the ‘639 patent is invalid not

only on grounds raised during the inter partes review, but also on grounds that reasonably could have

been raised during the inter partes review.” Ibid. (quoting 35 U.S.C. § 315(e)(2) (cleaned up)). Given

this clear statutory mandate, the court precluded TieTex from relying on both the prior-art references

it had invoked before the PTAB (which the PTAB had rejected) and “three other references . . . [that]

the PTAB did not address . . . in its final decision,” because TieTex “reasonably could have raised”

those challenges during inter partes review. Ibid.

As we’ve suggested, Precision Fabrics is inapposite here. The PTAB in our case never granted inter

partes review of Princeton’s invalidity claim and never issued a final written decision. See JSOF ¶ 9 (“On

April 20, 2022, the PTAB issued a Decision Denying Institution of Inter Partes Review in IPR2022-

00078[.]”); id. ¶ 31 (“On April 20, 2022, the PTAB issued a Decision Denying Institution of Inter Partes

Review in IPR2022-00082[.]”). In fact, in a part of Precision Fabrics SRAM conveniently ignores, the

district court held that TieTex could challenge the plaintiff’s ‘162 patent—which the PTAB had not

reviewed—because “the estoppel provisions of 35 U.S.C. § 315(e)(2) do not apply to a denial of an

inter partes review.” Precision Fabrics, 2016 WL 6839394, at *9. And that makes sense. As Judge St. Eve

(now on the Seventh Circuit) once explained, “[i]f a mere denial of an IPR petition gave rise to

estoppel, it would deprive the petitioner of a full opportunity to be heard on the estopped ground to

no fault of the petitioner, who properly raised the invalidity contention with the PTAB.” Oil-Dri Corp.,

2017 WL 3278915, at *4.8

SRAM’s reliance on Procter & Gamble fares no better. The defense expert in that case

“condede[d] that none of the references cited in his expert report explicitly disclose the [disputed

limitations]; rather [he alleged] that each of [the prior-art references] inherently discloses the [disputed

limitations].” Procter & Gamble, 2014 WL 12656554, at *6. But, to bolster that inherent-disclosure

opinion, the expert had “provided no evidence supporting his conclusion[.]” Id. at 7. His report—and,

by extension, the defendant’s claim of invalidity—thus “f[e]ll well short of clear and convincing

evidence.” Ibid. Again, our case is completely different: Princeton has appended the lengthy analysis

of its expert, Dr. Hanson, who’s explained, in painstaking detail, his opinion that Princeton’s prior-art

references fully anticipated (or else rendered obvious) SRAM’s patents. See generally Hanson Invalidity

Report. And, while Procter & Gamble did “[take] judicial notice of the fact of the PTAB’s decision

rejecting Clio’s petition for IPR of the claims containing HOM Limitations,” Procter & Gamble, 2014

WL 12656554, at 10 n.4, the court never said (and its 38-page order never suggested) that it relied on

the PTAB’s decision in any way.

8 Precision Fabrics is inapposite for yet another reason. Even as to the non-precluded claim (on the

supposed invalidity of patent ‘162), the defendant failed to disclose an expert who could testify to the

central issues in dispute—namely, the obviousness of certain fire-retardant treatments. Precision Fabrics,

2016 WL 6839394, at *10. In a last-ditch effort to save its invalidity case at summary judgment, the

defendant asked the court to rely on its PTAB submission, which had attached an expert affidavit—

an underhanded move the court rightly refused to countenance. Ibid. (“If the court were to construe

Horrocks’ affidavit as an expert disclosure, its lateness after discovery has closed would constitute

surprise to PFG that will be very difficult to cure without retaining a further expert to rebut it. This

would require reopening discovery and delay the proceedings.”). Since the defendant thus had no

expert who could opine on the salient issues surrounding the (alleged) invalidity of the ‘162 patent,

the court had little choice but to find that “[the defendant ha[d] not made a showing from which the

court could find liability [as to the ‘162 patent] by clear and convincing evidence.” Ibid. That’s just not

our case. Princeton has submitted the expert report of Dr. Hanson, in which he opines, in dozens of

detailed paragraphs, that Princeton’s prior-art references did anticipate and did render obvious SRAM’s

patents. See generally Hanson Invalidity Report [ECF No. 104-14].

The third case, Ultratec, actually undermines SRAM’s position. The defendant there had

petitioned the PTAB to open an inter partes review based on certain prior-art references that (the

defendant claimed) rendered the plaintiff’s invention obvious. See Ultratec, 2015 WL 5330284, at *14.

As here, the PTAB refused to initiate that review. See ibid. (“CaptionCall presented its obviousness

case based on the first three of these references (plus one other) to the Patent Trial and Appeal Board

(PTAB), which declined to initiate an inter partes review[.]”). Despite referring to that declination as

“persuasive” on the question of obviousness, the district court denied the plaintiff’s summary-

judgment motion, finding (based largely on the competing experts’ views) “that the facts relating to

whether the ‘398 patent is obvious are sharply disputed.” Ibid.

We come out as Ultratec did—holding that, even if the PTAB’s decision not to grant Princeton’s

request for inter partes review were relevant to our analysis, “the facts relating to whether” the ‘188 and

‘800 patents were obvious—like the facts on the extent to which the prior art anticipated those

patents—are, as they were in Ultratec, “sharply disputed.” Indeed, the Federal Circuit has repeatedly

said that “[a]nticipation is a question of fact, and the question whether a claim limitation is inherent

in a prior art reference is a factual issue on which evidence may be introduced.” In re Schreiber, 128

F.3d 1473, 1477 (Fed. Cir. 1997); see also Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1346 (Fed. Cir.

1999) (“Anticipation is a question of fact, including whether or not an element is inherent in the prior

art.”). Similarly, “[t]he presence or absence of a motivation to combine references in an obviousness

determination is a pure question of fact.” Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1289 (Fed. Cir.

2006) (quoting In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000)); see also PAR Pharm., Inc. v. TWI

Pharm., Inc., 773 F.3d 1186, 1196–97 (Fed. Cir. 2014) (“What a reference teaches and whether it

teaches toward or away from the claimed invention [i.e., whether it meets the legal definition of

obviousness] are questions of fact.” (quoting Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349

(Fed. Cir. 2000))).

Princeton—through its expert, Dr. Hanson—has created a genuine dispute of material fact

on the questions of obviousness and anticipation. So, for instance, Dr. Hanson says that, “as of 2011,

there was a well-established body of art regarding use of aerodynamic protrusions and channels along

the rim of a bicycle wheel.” Hanson Invalidity Report at 18. And, he adds, “[t]he Asserted Claims are

anticipated and/or obvious in view of at least the following prior art, alone or in combination.” Ibid.

Dr. Hanson then analyzes each of the prior-art references (Chen, Alex, Mizuno, Mercat, Herting,

Okajima, Carlson, Urbani, and Zibkoff) that, to his mind, anticipated SRAM’s patents. We won’t

belabor these here because the arguments on either side surrounding each reference proceed along

similar lines and because it’s sufficient for our purposes today to find a genuine dispute about the

extent to which just one such reference anticipated SRAM’s patents. After all, if one prior reference

anticipated (or rendered obvious) the ‘800 and ‘188 patents, then those patents are invalid and the case

is over. We’ll therefore focus our attention on Herting as a kind of emblematic example of the debates

surrounding each of the alleged prior-art references.

“Herting,” Dr. Hanson contends, “discloses a number of different related bicycle wheel

embodiments,” each of which “has a wheel rim and wheel with flanges that ‘extend radially inwardly

toward the center of the rim and wheel.’” Id. at 19. SRAM’s expert, Dr. Howle, disagrees and insists

that “the Asserted Claims of the ‘800 and ‘188 patents are valid and neither anticipated nor rendered

obvious in view of U.S. Patent No. 6,425,641 to Herting (‘Herting’), either alone or in combination

with U.S. Patent Pub. No. 2009/0236902 to Zibkoff (‘Zibkoff’).” Howle Validity Rebuttal Report [ECF

No. 104-37] at 3. Of the Herting configuration, Dr. Howle says: “The scalloped configuration results

in spoke attachment regions on the inside surface of the hub that are purely concave. Stated differently,

a person of ordinary skill in the art would clearly understand that there is no convex region for the

attachment of spokes.” Id. at 36–37. Drs. Hanson and Howle thus disagree about a central question

in this case—viz., whether the inner regions of the wheel rim “extend radially inwardly” or “are purely

concave.”9 As we’ve said, the remaining prior-art references triggered similar debates. Compare Hanson

Invalidity Report ¶¶ 127–290, 293–315 (articulating Hanson’s view that each of the eleven prior-art

references, either alone or in combination with the Zibkoff wheel, anticipated or rendered obvious

the ‘800 and ‘188 patents), with Howle Validity Rebuttal Report ¶¶ 87–125, 134–72, 180–217, 224–62,

267–307, 314–52, 357–95, 401–39, 443–81, 484–522, 526–64 (explaining Howle’s opinion that none

of Princeton’s prior-art references anticipated or rendered obvious SRAM’s ‘800 and ‘188 patents,

either alone or in combination with Zibkoff).

Recognizing the well-established rule that obviousness and anticipation raise quintessential

“question[s] of fact,” Apple Computer, 234 F.3d at 20 (anticipation); Alza Corp., 464 F.3d at 1289 (“The

presence or absence of a motivation to combine references in an obviousness determination is a pure

question of fact.”)—and given the sharply disputed factual record in this case, which includes the

detailed opinions of opposing (and qualified) experts—we DENY SRAM’s MSJ as to this aspect of

(1) Princeton’s Third Affirmative Defense and (2) Princeton’s Third and Fourth Counterclaims.

III. Princeton’s MSJ

For similar reasons, we deny Princeton’s MSJ. Princeton asks us to find that its products don’t

infringe the “convex exterior profile,” “convex profile,” and “continuously varies” limitations of

SRAM’s patents—either literally or under the doctrine of equivalents. See Princeton’s MSJ at 8–19. But

SRAM disputes each of these assertions with competent evidence—much of it from its expert, Dr.

9 In its Reply, SRAM dismisses “42 of the 46 cited paragraphs from Dr. Hanson’s expert report” as

“identical or virtually identical in all substance to corresponding paragraphs of his IPR declarations.”

SRAM’s Reply at 7. And, SRAM adds, “[o]f the only four cited paragraphs from Dr. Hanson’s expert

report not appearing verbatim in his IPR declarations, two paragraphs are short, conclusory statements

about alleged prior art advantages, while the other two paragraphs are repeats.” Id. at 8. But that’s only

relevant if we accept SRAM’s invitation to strike Princeton’s defenses solely because the PTAB

declined to initiate inter partes review. As we’ve explained, however, we can’t do that. Since we won’t

disregard Dr. Hanson’s report because of the PTAB’s refusal to review his contentions, we have an

obligation to review those contentions and decide (for ourselves) whether they raise a genuine dispute

of material fact on the questions of obviousness and anticipation. And, for all the reasons we’ve given,

they do.

Howle, whose expertise in the field of mechanical engineering is hard to quibble with. See Lars Howle

Resumé [ECF No. 104-37] at 258. So, for example, Princeton claims (relying on its own expert’s

diagrams) that its Wake 6560, Grit 4540, and Peak 4550 wheels don’t present “convex profiles” because

there’s a “concave profile at every one of its alleged ‘peaks.’” Princeton’s MSJ at 9 (emphasis in original);

Princeton’s Statement of Material Facts (“Princeton’s SOF”) [ECF No. 109] ¶ 17; Dr. Hanson’s

Supplemental Expert Report Regarding Non-Infringement [ECF No. 107-15] ¶¶ 46, 65. But, as SRAM

notes, this expert opinion appears to contradict Princeton’s own marketing materials, which boast of

“symmetric, sinusoidal oscillations” and “convex point[s.]” SRAM’s Response at 6 (emphasis in

original); SRAM’s Response Statement of Material Facts (“SRAM’s Response SOF”) [ECF No. 118]

¶¶ 49–51; Bradley Werntz Deposition [ECF No. 119-12] at 193:10–15 (“So generally speaking, if you

measure from one point of 60-millimeter depth to another point of 60-millimeter depth, there is an

overall convex shape between those two points, which we previously referred to as a hump.”);

Princeton Webpage [ECF No. 119-7] at PWC_0002334 (“A ‘sinusoid’ is a mathematical curve that

describes a smooth and repetitive oscillation. The WAKE 6560 has 24 such waves molded into its

carbon fiber. . . . Mechanically, the dynamic cross-section variability—WAKE—puts spoke tension at

a point symmetrically convex section of carbon, vs concave (typical when), carbon is pulled in tension

bs pushed into compression.” (errors in original)); Princeton Sale Sheet [ECF No. 119-6] at

PCW_0000832 (“Each nipple is at an [sic] convex point (apex) in the oscillation.”). When we draw (as

we must) all reasonable inferences in SRAM’s favor, we don’t think this one’s all that close: The

conflict between Dr. Hanson’s Supplemental Report (on the one hand) and Princeton’s webpage and

sale sheet (on the other) creates a genuine dispute of material fact that precludes summary judgment.

We come out the same way on Princeton’s claim that the radial distance of its wheels does not

“continuously var[y.]” See Princeton’s MSJ at 10 (“[E]ach Accused Product includes regions of

constant radial distance at each alleged ‘trough.’”); Princeton’s SOF ¶¶ 24–25 (describing how its

expert “demonstrate[s] the presence of constant radial distance regions”); Rebuttal Expert Report of

Dr. Hanson Regarding Non-Infringement [ECF No. 107-20] ¶ 101 (“My analysis shows that Dr.

Howle’s conclusion that the video demonstrates a constantly varying radial distance is incorrect.

Rather, the analysis shows there is a region of unchanging radial distance.”); id. ¶¶ 102–10, 164–73.

Although Princeton mostly ignores him, SRAM’s expert (Dr. Howle) “opined that [his own video

data] and his further infringement analysis confirm the continuously varying radial distance for the

WAKE 6560 bicycle wheels[.]” SRAM’s Response SOF ¶ 24; Dr. Howle’s Expert Report Regarding

Infringement [ECF No. 119-2] ¶ 46 (“As the video in Exhibit J clearly shows, the radial distance

between the hub and the radially inner edge continuously varies between adjacent peaks and

continuously varies between adjacent troughs.”); id. ¶¶ 38–40, 44–45. We won’t weigh in on which of

these two experts is right—or on which is telling the truth—because that’s what juries are for.

Finally, we’re unpersuaded by Princeton’s claim that SRAM is “impermissibly vitiat[ing] the

meaning of the ‘convex’ and ‘continuously varying’ claim terms.” Princeton’s MSJ at 2–3. As SRAM

points out, “placing a flagpole at the top of a hill does not change the convex profile of the hill simply

because there is a whole on the hilltop in which the flagpole is inserted.” SRAM’s Response at 10 n.5.

Dr. Hanson (it’s true) disagrees. In his view, “the profile of all the alleged ‘peaks’ of [Princeton’s]

wheels include portions of concavity that bulge away from the center of the wheel.” Dr. Hanson’s

Supplemental Report ¶ 45. As a result, he says, “they [Princeton’s wheels] cannot infringe under the

doctrine of equivalents.” Ibid. But, according to Dr. Howle, “Dr. Hanson relies entirely upon the fact

that a very slight spoke hold support is created in the middle of the peak of a size that he does not

even purport to measure but attempts to describe as concave.” Dr. Howle’s Supplemental Report

[ECF No. 107-13] ¶ 32. In Dr. Howle’s expert opinion, “[s]uch a small region of purported concavity

is not significant from an equivalents standpoint[.]” Ibid. We’ll allow Princeton to re-raise this

argument once all the evidence is in. Perhaps Princeton’s right that, with a bit more context—and

with the evidence properly weighed—SRAM has this all wrong.10 But, for now, we think this is a

dispute of fact we’ll need a jury to handle.

Whether Princeton’s wheels reveal a concave profile or a continuously varying radial

distance—either literally or “closely enough” to be equivalent—are material facts at the heart of

SRAM’s infringement claim. Since “there are . . . genuine issues of material fact,” we “must deny

summary judgment and proceed to trial.” Torres, 555 F. Supp. 3d at 1282.

IV. Princeton’s Motion to Strike

We also deny as moot Princeton’s Motion to Strike the Declaration of Dr. Howle and the

Declaration of Mr. Wesling [ECF No. 133]—both of which SRAM submitted as exhibits in support

of its Response to Princeton’s MSJ. We share Princeton’s concern that SRAM may have used these

declarations to introduce some (extremely) untimely expert opinions. But we found no occasion to

consider these declarations in resolving Princeton’s MSJ—which wasn’t a close call in any case—so

we deny the Motion to Strike as moot.

* * *

This case presents us with a proverbial battle of experts. And, as we’ve said in a slightly

different context, “we think it beyond cavil that the task of resolving [factual] disputes rests squarely

with a jury of laymen, not a panel of (unelected) judges.” Torres, 555 F. Supp. 3d at 1288 (citing Parklane

Hosiery Co. v. Shore, 439 U.S. 322, 343–44 (1979) (Rehnquist, J., dissenting) (“Trial by a jury of laymen

rather than by the sovereign’s judges was important to the founders because juries represent the

layman’s common sense, the ‘passional elements in our nature,’ and thus keep the administration of

law in accord with the wishes and feelings of the community[.]”)).

After careful review, therefore, we ORDER AND ADJUDGE as follows:

10 As we’ve said, “assessments of credibility—no less than the weighing of evidence—are fact

questions not susceptible of disposition at summary judgment.” Obremski, 467 F. Supp. 3d at 1275

(citing Strickland v. Norfolk S. Ry. Co., 692 F.3d 1151, 1154 (11th Cir. 2012)).

1. SRAM’s Partial MSJ [ECF No. 101] is GRANTED in part and DENIED in part.

SRAM’s MSJ is GRANTED as to Princeton’s § 112 defenses and counterclaims and

DENIED in all other respects.

2. Princeton’s MSJ [ECF No. 106] is DENIED.

3. Princeton’s Motion to Strike [ECF No. 133] is DENIED as moot.

DONE AND ORDERED in the Southern District of Florida on January 13, 2023.

ROYK.ALTMAN ———w

UNITED STATES DISTRICT JUDGE

ce: counsel of record

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