Whether it’s up French alpine passes or on a Yorkshire World Championships course, the sight of riders battling each other while using Zipp or Princeton Carbon Works wheels is familiar to cycling fans. Now, with the news last week that SRAM’s (Zipp’s owner) patent infringement proceedings are progressing, these battles will be moving to a new and less predictable testing ground – a US jury trial.
As reported in the press previously, SRAM are suing Princeton Carbon Works for patent infringement in relation to their Wake 6560 wheels which ‘feature a revolutionary shaped rim varying between 60 and 65mm deep.’
Without expertise in patent law, one may be tempted to simply compare a figure from one of SRAM’s patents (like the figure in road.cc’s article) to Princeton Carbon Works’ allegedly infringing wheel to consider if wheel is indeed infringing. However, it is worth bearing in mind that the scope of protection granted to SRAM is defined by the scope of the claims of the patent involved. For example, claim 1 of US9610800B2 recites:
“1. A wheel for use with a bicycle, the wheel comprising:
a hub for mounting the wheel to a bicycle;
a rim about which a tire is mountable; and
a plurality of spokes extending between the hub and the rim,
wherein the rim has a radially inner edge, and wherein at least part of the radially inner edge has an undulating configuration and a radial distance that continuously varies between adjacent peaks and troughs of the undulating configuration, each peak of the undulating configuration having a convex exterior profile in a plane of the wheel.”
For SRAM to bring successful infringement proceedings (for primary infringement), they must convince the jury that Princeton Carbon Works’ wheel fulfils every feature of the claim. In other words, a product looking similar to a figure in a granted patent doesn’t necessarily mean the product is infringing the patent.
As a patent attorney, I am familiar with how different patent offices examine patent applications. While there are some differences (e.g. the European Patent Office’s problem and solution approach to assessing inventive step compared with the UK IPO’s windsurfing / Pozzoli approach), patent offices are generally similar in their approach to examination of patent application. This case is a reminder of how litigation, and in particular, infringement proceedings, can also vary in different jurisdictions. For example, in the UK, patent infringement cases are typically heard at Intellectual Property and Enterprise Court (IPEC, a specialist part of the High Court) or the High Court itself. In either of these courts, a judge would decide the case.
In contrast, the SRAM v Princeton Carbon Works case will now be in front of, and decided by, a jury. Rather than trying to convince a specialist judge as to the merits of their case, SRAM and Princeton Carbon Works will be putting their case to a jury.
As reported in the article, the trial is set to last for two weeks starting 13th February, giving cycling fans another prospect to watch in the long wait for the cycling season to properly restart with Omloop Het Nieuwsblad.
The scope of protection granted ... is defined by the scope of the claims of the patent