Split Pivot, Inc. v. Trek Bicycle Corporation

Filing 219

ORDER denying 113 Motion for Summary Judgment. ; granting in part and denying in part 124 Motion for Summary Judgment. ; granting 199 Stipulation of Dismissal. The clerk of court is directed to enter judgment closing this case. Signed by District Judge William M. Conley on 12/13/13. (rep)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN

SPLIT PIVOT, INC.,
Plaintiff,

OPINION & ORDER

v.
12-cv-639-wmc
TREK BICYCLE CORPORATION,
Defendant.

In this patent lawsuit, plaintiff Split Pivot, Inc. alleges that defendant Trek Bicycle
Corporation (“Trek”) infringes claims in two of its patents, both of which involve
suspension systems for bicycles. As is common in patent cases, the parties have filed crossmotions for summary judgment. Split Pivot seeks summary judgment of infringement on
claim 22 of U.S. Patent No. 7,717,212 (“the „212 patent”). Trek seeks summary judgment
of non-infringement on all asserted claims of the „212 patent, as well as summary judgment
for invalidity based on inadequate written descriptions in various claims of the „212 patent.
Trek also seeks summary judgment of non-infringement and invalidity due to anticipation
on all asserted claims of Split Pivot‟s other patent, U.S. Patent No. 8,002,301 (“the „301
patent”). As part of these motions, the parties also ask the court to construe various terms
shared by the patents in suit. For the reasons set forth below, the court will deny Split
Pivot‟s motion for summary judgment of infringement and will grant Trek‟s motion for
summary judgment of non-infringement of both patents.

BASIC ALLEGATIONS OF FACT1
I. The Parties
Plaintiff Split Pivot, Inc. is a Massachusetts corporation engaged in the business of
holding patents. Its owner and sole employee is David Weagle, the putative inventor of the
„212 patent and the „301 patent.
Defendant Trek Bicycle Corporation is a privately-held Wisconsin company with its
principle place of business in Waterloo, Wisconsin. Trek designs, manufactures and sells
bicycles, including road bikes, mountain bikes, town bikes and specialty bikes. Within the
mountain bike category, Trek designs, manufactures and sells mountain bikes with and
without rear suspensions.

II. The Technology and Patents in Suit
The technology at issue in the patents in suit involves rear suspension systems for
vehicles generally, though the patents‟ specifications depict only rear suspension systems for
bicycles. Bicycles without rear suspension systems usually consist of a frame made up of
tubes that are welded or otherwise integrally connected to one another. A bicycle with a rear
suspension system uses instead a set of links that are pivotally connected to one another
and that support the rear wheel. Those links are generally connected to some form of shock
absorber. The end result of using a rear suspension system on a bicycle is that the rear
wheel is capable of moving up and down as it encounters rough terrain, increasing rider
comfort and control.

1

The court lays out only the most basic facts here. More specific facts will be introduced
and discussed where relevant to the specific issues in this case.
2

(Pictured: Figure 1 of the „212 patent, which features a bicycle design with a rear suspension
system. The shock absorber is located at 12; the links are located at 1, 2 and 3.)
The distance a rear wheel can move up and down in a bicycle with shock absorbers is
known as the “compressible wheel suspension travel distance,” with the beginning travel
point being where the suspension is completely uncompressed, such that it cannot extend
further, and the end travel point where the suspension is completely compressed, such that
it cannot compress further. At the beginning travel point, the shock absorber is necessarily
in the state of least compression, so it is relatively easy to compress the suspension.
Measuring the travel distances of both the wheel and the shock absorber allows for
calculation of the “leverage ratio” (also called “leverage rate”), which is the ratio of the
compressive wheel travel change to the measured length change in the shock absorber over
the same wheel travel distance. As the suspended wheel moves compressively -- that is, as it
moves closer to the end travel point -- the shock absorber force at the wheel changes in
relation to shock absorber force multiplied by that leverage ratio.

3

The leverage ratio does not necessarily remain the same throughout the wheel travel
distance. A “leverage ratio curve,” also known as a “leverage rate curve,” is a graphical
representation of leverage ratio versus wheel travel, plotted on a Cartesian graph, where the
leverage ratio (as defined above) is shown on the Y axis, and vertical wheel travel is shown
on the X axis:

(Pictured: Figure 18 of the „301 patent, showing the leverage ratio curve of certain
embodiments of the invented suspension system. The curve itself is labeled 35.)
To graph a leverage ratio curve, as the wheel is compressed, incremental vertical
compression distance measurements of the wheel are taken. At each one of those points,
the length of the shock absorber is also measured. The leverage ratio can then be calculated
at each point in the suspension system‟s compression and graphed as shown above.
Leverage ratios can be manipulated to achieve a desired force output at the wheel.
This is because shock absorber length, which serves as the denominator of the leverage ratio,
can be changed by the movement of wheel, brake and/or control links as the suspension
4

compresses. Thus, while every suspension system inherently has a leverage ratio -- and
therefore inherently has a leverage ratio curve – different suspension systems may be
designed to have particular leverage ratio curves.
While suspension systems increase rider comfort and control over rough terrain, a
side effect is that acceleration or deceleration forces may cause a suspension system to react
in unwanted ways. According to the patents, systems exist to reduce unwanted suspension
movement during acceleration or deceleration, but those systems are both complex and
correspondingly expensive. Less expensive systems, in contrast, are more cost-effective but
do not allow for the separation of acceleration forces under powered acceleration and
braking. Weagle claims “suspension systems that can provide separated acceleration and
deceleration responses while remaining cost effective to produce.” („212 patent, 1:48-50;
„301 patent, 1:52-54.)2

A. The „212 Patent
The application that resulted in the „212 patent was filed on August 25, 2006, and
the „212 patent itself issued on May 18, 2010. The abstract of the „212 patent states that
the invention relates to “suspension systems comprising, in certain embodiments, a pivoting
means concentric to a wheel rotation axis so that braking forces can be controlled by
placement of an instant force center, and so that acceleration forces can be controlled by a
swinging wheel link.”

2

For ease of citation, and in keeping with general practice, the number preceding the colon
will denote the patent‟s column number, while the number following the colon refers to the
line number or numbers cited.
5

Split Pivot asserts infringement of claims 1, 3, 4, 5, 6, 12, 14, 21, 22, 24, 25, 26, 32,
34, 41, 42, 43, 44 and 64 of the „212 patent. Claims 1, 22 and 43 are independent; the
other claims at issue depend from those claims.
Claim 1 provides:
A suspension system for a vehicle comprising
a wheel link floating pivot, a control link fixed pivot, a wheel
rotation axis, a wheel link, a brake link and a shock absorber,
wherein said wheel link floating pivot is concentric with said
wheel rotation axis;
wherein said shock absorber is mounted to a link selected from
the group consisting of a brake link, a control link, and a wheel
link;
wherein said shock absorber is selected from the group
consisting of a compression gas spring, a leaf spring, a coil
spring, and a fluid;
and wherein force that compresses said shock absorber is
transmitted through said brake link;
and wherein said brake link passes on two sides of a frame
member.
(„212 patent, 19:64-20:8.)
Claim 22 provides:
A suspension system for a vehicle comprising
a wheel link floating pivot, a control link fixed pivot, a wheel
rotation axis, a wheel link, a brake link, a control link and a
shock absorber,
wherein said wheel link floating pivot is concentric with said
wheel rotation axis
and where said wheel link and said control link are arranged so
that an instant center of the suspension system is located below
the control link when the suspension is uncompressed and the
vehicle is on even ground;
6

wherein said shock absorber is mounted to a link selected from
the group consisting of a brake link, a control link, and a wheel
link;
wherein force that compresses said shock absorber is transmitted
through said brake link;
wherein said shock absorber is selected from the group
consisting of a compression gas spring, a leaf spring, a coil
spring, and a fluid;
and wherein said suspension system further comprises a wheel
link fixed pivot, a control link floating pivot and a control link
fixed pivot.
(„212 patent, 21:22-38.)
Claim 43 provides:
A suspension system for a vehicle comprising
a wheel link floating pivot, a control link fixed pivot, a wheel
rotation axis, a wheel link, a brake link, and a shock absorber,
wherein said wheel link floating pivot is concentric with said
wheel rotation axis;
wherein said shock absorber is selected from the group
consisting of a compression gas spring, a leaf spring, a coil
spring, and a fluid;
and wherein force is transmitted to said shock absorber through
said brake link;
wherein said brake link passes on two sides of a frame member.
(„212 patent, 22:54-62.)
Split Pivot has moved for summary judgment of infringement on claim 22 of the
„212 patent. It alleges that Trek‟s Fuel EX and Superfly 100 products infringe this claim
literally and under the doctrine of equivalents. (See dkt. #114.)
Trek has cross-moved for summary judgment of non-infringement on all the
independent claims of the „212 patent (which necessarily includes the dependent claims as
7

well, since a dependent claim is “construed to incorporate by reference all the limitations of
the claim to which it refers,” 35 U.S.C. § 112).

Trek also argues that it is entitled to

summary judgment based on inadequate written descriptions under 35 U.S.C. § 112 in
independent claims 1 and 22, as well as those that are dependent on them.

B. The „301 Patent
The „301 patent is a continuation in part of the „212 patent. 3 Filed on August 23,
2007, and issued on August 23, 2011, the „301 patent claims certain suspension systems for
vehicles; its abstract reads that the “invention relates to suspension systems comprising, in
certain embodiments, a pivoting means concentric to a wheel rotation axis so that braking
forces can be controlled by placement of an instant force center, and so that acceleration
forces can be controlled by a swinging wheel link.” („301 patent, abstract.)
Split Pivot asserts infringement of claims 29, 30, 31, 37, 38, 39 and 43 of the „301
patent. Claims 29 and 37 are independent; the other claims depend from those two claims.
Claim 29 reads:
A suspension system for a vehicle comprising
a wheel link floating pivot, a wheel rotation axis, a wheel link, a
control link, a brake link, a control link floating pivot, a control
link fixed pivot, and a shock absorber;
wherein the distance between said wheel link floating pivot and
control link floating pivot is greater than the distance between
said control link fixed pivot and control link floating pivot;
wherein said wheel link is pivotally connected to said brake link;
3

A “continuation in part” application “is a continuing application containing a portion or
all of the disclosure of an earlier application together with added matter not present in that
earlier application.” Transco Prods. Inc. v. Performance Contracting, Inc., 38 F.3d 551, 555
(Fed. Cir. 1994) (citing The Manual of Patent Examining Procedure, § 201.08 (1988)).
8

wherein said brake link is pivotally connected to said control
link;
wherein said wheel link floating pivot is concentric with said
wheel rotation axis;
wherein said shock absorber is selected from the group
consisting of a damper, a compression gas spring, a leaf spring, a
coil spring, and a fluid;
wherein force is transmitted to said shock absorber through an
element selected from the group consisting of the brake link, the
control link, a wheel link fixed pivot, the control link floating
pivot and the control link fixed pivot;
wherein said suspension system further comprises a compressible
wheel suspension travel distance that features a beginning travel
point where the suspension is completely uncompressed to a
point where no further suspension extension can take place, and
an end travel point where a suspension is completely compressed
to a point where no further suspension compression can take
place;
and wherein a leverage ratio curve of said suspension system has
a negative or a positive slope in the beginning 1/3 (third) and in
the end 1/3 (third), and a change in slope value in the middle
1/3 (third).
(„301 patent, 36:60-37:19.)
Claim 37 reads:
A suspension system for a vehicle comprising
a wheel link floating pivot, a wheel rotation axis, a wheel link, a
control link, a control link fixed pivot, a brake link, a shock
absorber, and a removable pivot axle;
wherein said wheel link floating pivot is concentric with said
wheel rotation axis;
wherein said brake link is pivotally connected to said control
link;
wherein said removable pivot axle has a feature for positioning a
rear hub in relation to said wheel rotation axis;
9

wherein said removable pivot axle can receive a thru axle
selected from the group consisting of a solid axle, a thru axle, a
hollow axle, a quick release, a skewer, a quick release skewer,
and a through bolt;
wherein said shock absorber is selected from the group
consisting of a damper, a compression gas spring, a leaf spring, a
coil spring, and a fluid;
wherein force is transmitted to said shock absorber through said
brake link;
and wherein a leverage ratio curve of said suspension system has
a negative or a positive slope in the beginning 1/3 (third) and in
the end 1/3 (third), and a change in slope value in the middle
1/3 (third).
(„301 patent, 37:56-38:7.)
Trek also seeks summary judgment of non-infringement and invalidity due to
anticipation on all asserted claims of the „301 patent.

III. Trek‟s Allegedly Infringing Products
Trek markets and sells a wide variety of bicycles with rear suspension systems. The
allegedly infringing products fall into two basic categories: (1) those with what Trek calls
“Active Brake Pivot” (“ABP”); and (2) those with both ABP and what Trek calls “Full
Floater.”
ABP refers to the ability of the rear suspension to remain active while the brake is
applied.

ABP bicycles include, among other features, some pivotal connection that is

concentric with the rear wheel rotation axis. Bicycles with ABP only have a shock absorber
that is mounted parallel to the top tube and connected on one side to the frame. They are
sometimes called “swing link” bikes, which refers to the short link hanging from the top

10

tube of the frame. ABP bicycles include Trek‟s Superfly 100, HiFi, Rumblefish and Roscoe.
The 2010 Superfly 100 is pictured below:

Bicycles including ABP and Full Floater include Trek‟s Fuel EX, Scratch (including
Scratch Air), Top Fuel, Session, Slash, Lush and Remedy.

“Full Floater” is so named

because a bicycle including Full Floater has a generally vertically mounted shock absorber
connected to two moving links; the shock absorber “floats” between the two links instead of
being fixed to the frame on one side. The 2010 Fuel EX 9.9 is pictured below:

11

PROCEDURAL MATTER
Split Pivot asks the court to strike as untimely (1) Trek‟s construction of “wherein
said shock absorber is selected from the group consisting of a compression gas spring, a leaf
spring, a coil spring, and a fluid” (“the „212 Shock Absorber Element”); and (2) Trek‟s
related contention that this element is a missing limitation from its accused bicycles. Trek
argues its disclosure was timely and that Split Pivot has not been prejudiced in any event.
The current dispute began when Split Pivot served Trek with untimely supplemental
claim charts on January 4 and January 24, 2013. The January 24 charts were served in
response to Trek‟s production of previously undisclosed drawings of some of its accused
bicycles on December 5 and 10, 2012, and added assertions of infringement of three claims
upon which Split Pivot had not previously relied: claims 43, 44 and 64 of the „212 patent.
Trek moved to strike the January 24 supplemental claim chart on February 1, 2013.
(Dkt. #46.) On May 2, 2013, the court denied the motion, finding that while Split Pivot‟s
supplement was untimely, Split Pivot had acted with reasonable diligence in responding
within a month and a half to Trek‟s newly-disclosed drawings; that the supplement
appeared to be a direct response to these newly-disclosed drawings; and that the new
contentions were unlikely to prejudice Trek materially. (Opinion & Order (dkt. #90) 5-6.)
To ameliorate any arguable prejudice, the court also gave Trek 28 days to supplement its
own infringement and invalidity contentions, “provided any newly asserted disclosures
respond[ed] directly to the supplemental infringement claim charts served on January 24,
2013.” (Id. at 8.)
On May 30, 2013, within the court-imposed 28 day deadline, Trek responded to
Split Pivot‟s supplemental infringement contentions. The response included, among other
12

things asserted, a missing limitation not previously disclosed: the „212 Shock Absorber
Element.

On June 3, 2013, Trek served a supplemental claim construction as to this

limitation.
It is undisputed that the „212 Shock Absorber Element appears in independent claim
43, and accordingly in claims 44 and 64, which depend from it. To that extent, it does
directly respond to Split Pivot‟s newly asserted claims.

Split Pivot points out that the

Shock Absorber Element also appears in independent claim 1 („212 patent, 20:3-5) and
independent claim 22 („212 patent, 21:34-36), as well as in all claims that depend from
them -- in essence, in every claim of the „212 patent that Trek has allegedly infringed. (See
Def.‟s Br. in Support of Summ. J. Exh. A (dkt. #133-1).) The allegedly infringed claims of
the „301 patent -- claims 29 and 37, and certain claims that depend from them -- also
include a version of the Shock Absorber Element (“the „301 Shock Absorber Element”),
which simply adds “a damper” to the enumerated list of possible shock absorbers.4 (See
„301 patent, 37:3-6; 37:67-38:2.)
At this point, the court will not preclude Trek from arguing for non-infringement
based on the Shock Absorber Element. While Trek could have asserted non-infringement
based on this element earlier, the court recognized in allowing Split Pivot‟s untimely
assertions of infringement that Trek might choose to “rethink its strategy,” just as
apparently had Split Pivot.

(Opinion & Order (dkt. #90) 7.)

Moreover, the Shock

Absorber Element is directly responsive to the newly asserted claims, insofar as it appears in

4

Trek has moved for non-infringement of the Shock Absorber Element in both patents
based on shared claim language that indicates a Markush group, discussed in more detail
below. Thus, while the Shock Absorber Element is not identical between the „212 patent
and the „301 patent, Trek‟s non-infringement argument is.
13

all three of them.

Finally, the court is not inclined to disallow one of Trek‟s principal

defenses when Split Pivot has been aware of that defense since May, choosing (likely
tactically) to lie in the weeds until filing a motion for summary judgment in August. If Split
Pivot was prejudiced -- which it does not even argue – the proper time to bring it to the
court‟s attention was not at summary judgment but at the time of the allegedly prejudicial
event. Split Pivot‟s motion to strike is, therefore, denied.

OPINION
I. Overview of Issues
Analysis of patent infringement is a two-step process: “first, the scope of the claims
are determined as a matter of law, and second, the properly construed claims are compared
to the allegedly infringing device to determine, as a matter of fact, whether all of the
limitations of at least one claim are present, either literally or by a substantial equivalent, in
the accused device.” Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1323 (Fed. Cir.
2002). Invalidity of the patent in suit serves as a defense to infringement. 35 U.S.C. § 282.

II. Claims Construction
The court begins its claim construction analysis, “as always, with the words of the
claim.” Teleflex, Inc. 299 F.3d at 1324. The claims “define the scope of the right to exclude;
the claim construction inquiry, therefore, begins and ends in all cases with the actual words
of the claim.” Id. (quoting Renishaw PLC v. Marposs Societa per Azioni, 158 F.3d 1243, 1248
(Fed. Cir. 1998)). In order to interpret the words of the claims, courts look to “the intrinsic
evidence of record, including the written description, the drawings, and the prosecution
14

history, if in evidence.” Id. (citing Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d
1323, 1331 (Fed. Cir. 2001)). Generally speaking, “all terms in a patent claim are to be
given their plain, ordinary and accustomed meaning to one of ordinary skill in the relevant
art.” Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001). There are
exceptions to this general rule, however.

For example, patent law does “permit[] the

patentee to choose to be his or her own lexicographer by clearly setting forth an explicit
definition for a claim term that could differ in scope from that which would be afforded by
its ordinary meaning.” Id.
Once the court has ascertained the plain meaning of a term to the person of ordinary
skill in the art, “the next step is to examine the written description and the drawings to
confirm that the patentee‟s use of the disputed terms is consistent with the meaning given
to it by the court.” Id. In this step, the court seeks to determine whether the patentee has
expressed a different meaning for the language; whether the preferred embodiment is
consistent with the court‟s initial interpretation; and whether the inventor has explicitly
disclaimed subject matter or limited the scope of the claims. Id. at 1342-43. Although
claims must be construed in light of the specification for these reasons, Markman v. Westview
Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), “limitations from the
specification are not to be read into the claims,” Golight, Inc. v. Wal-Mart Stores, Inc., 355
F.3d 1327, 1331 (Fed. Cir. 2004). Regardless, the specification is the “single best guide to
the meaning of a disputed term.” Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir.
2005).
“After examining the written description and the drawings, the same confirmatory
measure must be taken with the prosecution history.” Rexnord Corp., 274 F.3d at 1343.
15

This is because “a patentee may limit the meaning of a claim term by making a clear and
unmistakable disavowal of scope during prosecution.” Computer Docking Station Corp. v. Dell,
Inc., 519 F.3d 1366, 1374 (Fed. Cir. 2008) (quoting Purdue Pharma L.P. v. Endo Pharms.,
Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006)); see also Cross Med. Prods., Inc. v. Medtronic
Sofamor Danek, Inc., 480 F.3d 1335, 1341 (Fed. Cir. 2007) (“Prosecution history estoppel
prevents a patentee from recapturing under the doctrine of equivalents subject matter
surrendered during prosecution to obtain a patent.”). Such a limitation might arise, for
instance, if the patentee “clearly characteriz[es] the invention in a way to try to overcome
rejections based on prior art.” Computer Docking Station Corp., 519 F.3d at 1374. Even if the
patent prosecutor does not rely on the patentee‟s statements in subsequently approving a
patent, the patentee may nevertheless “be held to what he declares during the prosecution
of his patent.” Springs Window Fashions LP v. Novo Indus., L.P., 323 F.3d 989, 995 (Fed. Cir.
2003); see also Desper Prods., Inc. v. QSound Labs, Inc., 157 F.3d 1325, 1336 (Fed. Cir. 1998)
(“That the prosecution shifted to a different focus does not blunt the impact of those
remarks made to overcome the prior rejection.”).
District courts may also rely on extrinsic evidence in claim construction, such as
expert and inventor testimony, dictionaries and learned treatises.
1317.

Phillips, 415 F.3d at

Extrinsic evidence “can shed useful light on the relevant art,” but it is “less

significant than the intrinsic record in determining the legally operative meaning of claim
language.” Id. (quoting C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir.
2004)). “In sum, extrinsic evidence may be useful to the court, but it is unlikely to result in
a reliable interpretation of patent claim scope unless considered in the context of the
intrinsic evidence.” Id. at 1319.
16

A. Wheel Link Floating Pivot
The parties agree that the term “wheel link floating pivot” is one for which Weagle
served as his own lexicographer, rather than a term of art to which the court may ascribe an
ordinary and customary meaning. “[T]erms coined by the inventor are best understood by
reference to the specification,” 3M Innovative Properties Co. v. Tredegar Corp., 725 F.3d 1315,
1321 (Fed. Cir. 2013), though the rule that “limitations discussed in the specification may
not be read into the claims” remains in effect.”

Id.

The parties offer the following

constructions of “wheel link floating pivot”:
Split Pivot

Trek

“a pivot that changes its vertical and
horizontal position relative to the frame of
the vehicle when the rear suspension is
compressed, is concentric with a rear wheel
rotation axis of the vehicle, and pivotally
connects to the brake link”

“a pivot axle connected to the wheel link
that allows a link to rotate about the pivot
axle and changes its position relative to a
frame member when the suspension is
compressed”

Split Pivot asserts that its construction is correct because it incorporates language
“nearly verbatim” from the specification. (Pl.‟s Br. for Summ. J. (dkt. #114) 8.) First, the
specification notes that “a floating pivot changes its position relative to the frame when the
suspension is compressed.” („212 patent, 4:6-8.) Additionally, the specification provides
that a wheel link floating pivot “is concentric with a wheel rotation axis of the vehicle,
preferably the wheel rotation axis of a driven wheel, a rear wheel, a front wheel, or a
suspended wheel of a vehicle.” („212 patent, 11:15-19.) Finally, the specification indicates
that the “wheel link floating pivot pivotally connects the wheel link to the brake link.”
(„212 patent, 4:65-66.)

These portions of the specification, Split Pivot asserts, clearly
17

demonstrate how Weagle, as the inventor, intended to define the term “wheel link floating
pivot,” and so its construction makes use of those descriptors while adding additional detail
to correspond to this particular invention (i.e., the “vertical and horizontal” nature of the
movement of the floating pivot, and the focus on the “rear” suspension and wheel).
Trek includes the general language from the specification defining “floating pivot” in
its construction. Trek also asks the court to construe “wheel link floating pivot” as requiring
a pivot axle.

In support, Trek argues that a person of ordinary skill in the art would

understand the term “pivot” to require a pivot axle, bolstering this argument with citations
to multiple dictionaries. (Def.‟s Resp. (dkt. #149) 7 (citing to definitions of a pivot as a
“short shaft or pin,” “an axle on which a wheel turns,” “a fixed pin or short axis,” etc.).)
Additionally, Trek construes “wheel link floating pivot” as being “connected to the wheel
link.” As support for that interpretation, Trek points to a portion of the specification,
which states that “[p]ivots of a suspension system of the invention are named after a
component that connects with the pivot.”

(„212 patent, 4:2-4.)

By this logic, then, a

“wheel link floating pivot” must be connected to the wheel link.
Taking the last argument first, the court agrees with Trek insofar as a floating pivot
without any connection to the wheel link could not be a “wheel link floating pivot.”
Nothing in the patent, however, suggests that a wheel link floating pivot may not have
multiple connections; indeed, even the sentence that Trek identifies states that pivots are
named after a component that connects with them, which leaves open the possibility for a
pivot to be connected to multiple components but named after just one. In addition, the
specification unambiguously contemplates a wheel link floating pivot serving as the
“connection point” between the wheel link and the brake link. In describing the preferred
18

embodiments of the invention, for example, the specification states that “[t]he wheel
floating link pivot (sic) 6 pivotally connects the wheel link 1 to a brake link 2.” (See „212
patent, 4:65-67 (figure 1); 5:59-61 (figure 2); 7:14-15 (figure 5).) Thus, the context of the
specification makes clear that a wheel link floating pivot serves as a “connecting point”
between the wheel link and the brake link.
Rather than dispute this fact, Trek takes a different tack by arguing that a pivot can
only be “connected” to a component when it is permanently fastened to that component,
meaning that a link which merely “rotates about” the pivot is not connected to it.

In

essence, without disputing that the wheel link floating pivot is pivotally connected to the
wheel link and brake link, Trek argues that within this connection, the pivot itself may only
be fastened to the wheel link.
Thus, Trek‟s construction, which states that the wheel link floating pivot is
“connected to the wheel link,” would support only arrangements in which the pivot is
fastened to the wheel link:

19

It would exclude any arrangement in which the pivot is fastened to the brake link:

The court sees no reason, and Trek offers none, to limit an interpretation of
“connected” to mean “permanently” or “immovably fastened.”

Moreover, the detailed

description of the invention contradicts Trek‟s proposed interpretation: “[a] wheel link, in
certain embodiments, is connected to a wheel link floating pivot and/or a wheel link fixed
pivot” („212 patent, 8:37-39) (emphasis added), and “[a] brake link, in certain embodiments,
is connected to a wheel link floating pivot, a control link floating pivot and/or a first shock
pivot” („212 patent, 9:10-12) (emphasis added). Thus, Weagle described a wheel link and a
brake link as “connected to” a wheel link floating pivot. („212 patent, 8:37-38; 9:10-11.)
Nowhere did Weagle suggest that the nature of these connections need vary between the
wheel link and the brake link. Rather, he used exactly the same term to describe the wheel
link floating pivot‟s relationship to the wheel link as he did to describe its relationship to
the brake link. While the overall connection of the wheel link to the brake link must be
pivotal, the patent simply does not evince an intention to limit the definition of “wheel link
20

floating pivot” to arrangements wherein the wheel link floating pivot is immovably fastened
to the wheel link, with the brake link turning around it.
Trek points out that the drawings of Figures 7 and 8 show only embodiments in
which the wheel link floating pivot is fastened to the wheel link, with the brake link able to
turn around it.5 (See Def.‟s Br. for Summ. J. (dkt. #125) 16-17.) Figure 7 shows “a threedimensional cutaway view of a wheel link floating pivot 6 as shown in FIG. 2, 4, 5 and FIG.
6.” („212 patent, 7:63-64.) Turning to the description of Figure 5, Trek is correct that the
wheel link floating pivot of that particular embodiment “comprises a pair of clevis[es] that .
. . are structural components of wheel link 1, and a pair of hitches to be received by the
clevises, where the hitches are structural components of the brake link 2.” („212 patent,
7:16-19.) This would allow the brake link to turn, while the wheel link remains stationary.
While Trek accurately describes the construction of the wheel link floating pivot of
Figures 7 and 8, “limitations from parts of the written description, such as the details of the
preferred embodiment, cannot be read into the claims absent a clear intention by the
patentee to do so.” MySpace, Inc. v. GraphOn Corp., 672 F.3d 1250, 1256 (Fed. Cir. 2012).
In light of the detailed description, which expressly contemplates that a wheel link floating
pivot may be “connected” to a wheel link in certain embodiments and a brake link in
certain embodiments, the court finds no “clear intention” to limit the definition to the
embodiment of Figures 7 and 8, even if it did find that the word “connect” mandated an
immovable connection (which it does not).
The court likewise rejects Trek‟s contention that the court must construe the word
“pivot” to mean “pivot axle.” As a preliminary matter, the court declines to isolate and
5

Figure 8 does not appear in the „212 patent, but does appear in the „301 patent.
21

construe a single word to limit a claim, when that word is indisputably part of a term for
which Weagle served as his own lexicographer. Additionally, the specification never hints at
an intent by Weagle to limit a wheel link floating pivot to a single pivot axle. Rather, the
detailed description of Figure 7 indicates that “[c]ertain embodiments of the wheel link
floating pivot 6 can comprise a pivot bearing 20.”

(„212 patent, 8:4-5.)

While the

description goes on to note that “[a] pivot axle 21 acts as a bearing surface for the pivot
bearing 20” („212 patent, 8:14-15), this simply states that certain embodiments of the
wheel link floating pivot may contain a pivot axle, not that the pivot itself must be a pivot
axle and nothing else.6
Despite rejecting Trek‟s proposed construction, the court also declines to adopt Split
Pivot‟s construction in two respects. First, Split Pivot asks that the court construe “wheel
link floating pivot” to include the requirement that it be “concentric with a rear wheel
rotation axis of the vehicle.”

As Trek points out, every independent claim of the „212

patent includes not only the phrase “wheel link floating pivot” but also a separate
requirement that “said wheel link floating pivot is concentric with said wheel rotation axis.”
(See, e.g., „212 patent, 19:64-20:1.)

To hold that the wheel link floating pivot must

inherently be concentric with the wheel rotation axis would render this element of the claims
meaningless. Claims construction standards do not generally allow for such a result. See,
e.g., Merck & Co., Inc. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A
claim construction that gives meaning to all the terms of the claim is preferred over one that
does not do so.”); cf. Phillips, 415 F.3d at 1314 (“To take a simple example, the claim in this
There is a secondary dispute between the parties as to whether a “pivot” can be a “point”
or if it has to be a mechanical part. Because it does not affect the outcome, the court
devotes no energy to resolving the issue.
22
6

case refers to „steel baffles,‟ which strongly implies that the term „baffles‟ does not inherently
mean objects made of steel.”). Trek also points to the specification, which describes a wheel
link floating pivot as concentric with the wheel rotation axis “in certain embodiments,” and
“nearly concentric” “[i]n certain other embodiments.” („212 patent, 11:14-21.) Thus, like
the language in the claims themselves, the specification contradicts any notion that “wheel
link floating pivot” should be construed to require a “concentric with a rear wheel rotation
axis of the vehicle.”
Second, Split Pivot asks the court to construe “wheel link floating pivot” as
“pivotally connect[ed] to the brake link.” While Split Pivot claims this language has been
taken “nearly verbatim” from the specification, the referenced language actually requires
that the “wheel link floating pivot 6 pivotally connect[] the wheel link 1 to a brake link 2.”
(„212 patent, 4:65-67 (emphasis added).) This does not mean the same thing as construing
the “wheel link floating pivot” itself to be pivotally connected to the brake link. Such a
construction would be essentially the same as Trek‟s erroneous contention that the pivot
must be fastened to the wheel link, with the brake link able to pivot around it. As already
discussed, the specification provides no support for that limited construction.
Thus, the court rejects both parties‟ proposed constructions of “wheel link floating
pivot.” Instead, the court construes that term to mean “a pivot that changes its position
relative to a frame member when the suspension is compressed and pivotally connects the
wheel link to a brake link.”

23

B. Brake Link Passes on Two Sides of a Frame Member
The parties also ask the court to construe the limitation “wherein said brake link
passes on two sides of a frame member.” This limitation is present in claims 1 and 43 of the
„212 patent and their respective dependent claims. Trek contends this limitation is missing
from all but a small subset of its accused bicycle models.7
The parties offer the following construction for this element:
Split Pivot

Trek

“brake link that moves next to or beyond “brake link extends beyond both lateral
two sides of a physical boundary of a frame sides of a structural support for
member”
components of a suspension system”
The parties agree that the term “passes” should be given its plain and ordinary
meaning, but disagree on what that meaning is, citing to various definitions in support their
own interpretation. (See Def.‟s Br. for Summ. J. (dkt. #125) 28-29 (citing definitions such
as “to go by: proceed or extend beyond”; and “to go by, beyond, over, through, or the like;
to proceed from one side to the other of”); Pl.‟s Resp. (dkt. #153) 26 (citing definitions
such as “to move in a particular direction or to a particular place or position”; “to go past
something or someone or move in relation to it or them”; and “to go onwards or move by or
past”).)
Split Pivot argues that “passes” is “susceptible to multiple meanings,” and that a
person of ordinary skill in the art would read it in this context to require only that the brake
link “move to occupy a particular place next to the frame member or beyond it.” (Pl.‟s
Resp. (dkt. #153) 26.) Split Pivot‟s central support for its construction is the specification,
7

Trek apparently concede that its 2010-2013 Superfly 100, 2010-2013 Rumblefish, 2010
HiFi and 2010 Roscoe contain a “brake link [that] passes on two sides of a frame member.”
(See Resp. to PPFOF (dkt. #178) ¶¶ 116-122.)
24

but its arguments are muddled at best. While the specification sheds no light on the word
“passes” as it relates to the brake link passing on two sides of a frame member, Split Pivot
points out that the specification also uses “passes” in a similar context. For example, the
description of Figure 2 states that “[t]he brake link 2 can consist of a single sided strut that
passes next to only one side of a rear wheel 17 or a double sided strut that passes next to
both sides of a rear wheel.” („212 patent, 6:2-5.) If Trek‟s construction of “passes” were
applied to that portion of the specification, Split Pivot argues, the brake link would have to
extend “both above and in front of and below and behind the entire[t]y of the rear wheel as
illustrated below:”

(Pl.‟s Resp. (dkt. #153) 27-28.)
While consistent use of a term in the written description can inform claims
construction,8 Split Pivot appears to fundamentally misinterpret Trek‟s proposed
construction. Trek‟s construction of “passes,” if applied to this portion of the specification,

Cf. Nystrom v. TREX Co., Inc., 424 F.3d 1136, 1143-44 (Fed. Cir. 2005) (limiting “board”
to wood cut from a log where “[t]hroughout the written description, Nystrom consistently
used the term „board‟ to describe wood decking material cut from a log”).
25
8

would require only that the brake link extend beyond the left and right lateral sides of the
wheel at the front, not that it extend beyond both front and back ends of the wheel. The
context of the specification supports this interpretation, since the specification itself
contemplates a brake link that can pass next to one or both “sides” of the rear wheel. If
“sides” meant the front and back ends of the wheel, then Split Pivot‟s own patent would
contemplate the above arrangement, which its expert has called “unorthdox, unnecessary,
and counterproductive.”

(Expert Report of Tony Foale (dkt. #111) ¶ 85.)

Split Pivot

cannot ask the court to construe “passes” consistently throughout the patent while asking it
to construe “sides” differently -- at least not without reason, and it offers none.
Insofar as the portion of the specification Split Pivot identifies helps either party, it
helps Trek. The drawings in the „212 patent contain a brake link that not only “moves next
to” the rear wheel but also extends entirely beyond it on both lateral sides of the wheel at
the front end. This is to say, the drawings are at least consistent with Trek‟s narrower
interpretation.

On the other hand, the drawings are also consistent with Split Pivot‟s

broader construction.

Thus, these drawings do not definitively resolve the parties‟

disagreement, and the specification provides no further context for how “passes” should be
interpreted.
While acknowledging the term “passes” is susceptible to multiple meanings in general,
Trek argues that definitions of the transitive form of “passes” support its interpretation.
Unfortunately, like Split Pivot‟s arguments, Trek‟s attack suffers from its own flaw: Trek
contends that Split Pivot relies on an “intransitive form of „passes,‟” while the claims at issue
“use „passes‟ in its transitive form‟” (def.‟s Reply (dkt. #176) 9-10), but this is not quite
grammatically correct. A transitive verb takes a direct object, and the claim here has none,
26

at least technically. Rather, “frame member” is the object of the preposition “of,” part of an
adjectival, prepositional phrase that modifies “sides.”
Even though Trek‟s reasoning is flawed, the court finds its construction persuasive
based on the ordinary meaning of the word “pass.” Even definitions of the intransitive form
of “pass” -- indeed, even some of the definitions Split Pivot cites -- carry with them the
sense of proceeding beyond, or leaving something behind. See, e.g., The American Heritage
Dictionary of the English Language 1284 (4th ed. 2000) (defining the intransitive form of
“pass” as “to move on or ahead; proceed,” “to extend; run,” “to move by,” “to move past
another vehicle”) (emphasis added); see also Pl.‟s Resp. (dkt. #153) 26 (citing definitions
including “to go past something” and “to go onwards or move by or past”). A person of
ordinary skill in the art, confronted with this element, would read it to require that the
brake link pass -- that is, go past -- on two sides of a frame member.
Trek also argues that this limitation must be present in all states of compression; that
is, the brake link must extend beyond a frame member on both sides regardless of how
much the suspension has been compressed. As support, Trek points out that claims 1 and
43, in which the limitation appears, are silent as to the state of compression. In contrast,
some of the other claims in the „212 patent specify the state of compression of the
suspension.

(See, e.g., „212 patent, 20:15-18 (“The suspension system of claim 3, said

suspension system further comprising an instant center that is below the shock absorber
when the suspension is uncompressed”); 20:31-33 (“The suspension of claim 7, wherein the
second perpendicular distance of the instant center to the ground is measured when the
suspension is 50 percent compressed”).) Thus, Trek argues, Weagle obviously knew how to
provide for specific states of compression in his claims, and the court should not construe
27

this limitation to include embodiments in which the brake link “moves into” position upon
compression.
Trek‟s claim differentiation argument is superficially appealing, but the implications
are troubling: to hold that the brake link must pass on two sides of a frame member in all
states of compression based on the dependent claims would be to narrow the claim by virtue
of the absence of an additional limitation. This strikes the court as problematic, particularly
since the case to which Trek cites in support not only observes that differences among
claims can help guide a court in construing particular terms, but also that “the presence of a
dependent claim that adds a particular limitation gives rise to a presumption that the
limitation in question is not present in the independent claim.” Phillips, 415 F.3d at 1315
(emphasis added); cf. Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (“The
juxtaposition of independent claims lacking any reference to a pressure jacket with
dependent claims that add a pressure jacket limitation provides strong support for Liebel‟s
argument that the independent claims were not intended to require the presence of a
pressure jacket.”). Trek seems to be arguing the opposite: that is, since some dependent
claims recite different states of compression, the independent claim necessarily incorporates
all of those limitations.
While an uncompressed shock absorber may well have been what the inventor
contemplated for purposes of this limitation, nothing in the patent language dictates or even
provides context for this reading. The specification is silent as to the shock absorber‟s state
of compression in regard to this element. More importantly, the claim itself is silent as to the
state of compression. Ultimately, Trek is inviting the court to read in additional limitations

28

and further narrow the scope of Split Pivot‟s claims where nothing in the patent supports
those limitations.
This does not end the court‟s construction of this element, however, since there is
also a dispute as to what constitutes a “frame member.” The central disagreement between
the parties is whether components of the suspension system are considered “frame
members” for the purposes of this limitation. Split Pivot argues that “frame member” need
not be construed, and that its plain meaning can include the links that make up the
suspension system. Trek contends that frame members are separate from components of
the suspension, and draws upon language from the specification defining the “frame” to
offer a proposed construction of “frame member” as “structural support for components of a
suspension system,” presumably intended to exclude the components of the suspension
system itself.
Split Pivot argues that, should the court adopt Trek‟s construction of “frame
member,” the wheel link, brake link and control link nevertheless are “frame members”
since they provide structural support for one another and, thus, for other “components of a
suspension system.”

The court agrees, at least insofar as Trek‟s proposed construction

would introduce ambiguity into the term “frame member” that is not supported by the
specification. Determining the ordinary meaning of “frame member,” as understood in the
context of the entire patent by a person of ordinary skill in the art, avoids the questions that
would arise under Trek‟s proposed construction. Therefore, what remains for this court to
decide is whether the ordinary meaning of “frame member” includes links of the suspension
system.

29

As a starting point, the court notes that the specification does not suggest that the
wheel, brake or control links are part of the “frame” as Weagle used that term. In fact, the
specification consistently differentiates the frame and the links. For example, in describing
one of the preferred embodiments, the specification states that “[a] frame 11 provides the
structure for the vehicle. . . . The frame 11 provides a support or mounting location for
powertrain components such as[:] engines, gears, transmissions, and fuel tanks; suspension
parts such as forks, rear suspension and front suspension; operator interfaces such as handlebars
and seats; and accessories such as water bottles and batteries for lights.” („212 patent, 4:4553 (emphasis added).) It goes on to specify that in that embodiment, “[a] wheel link 1 is
mounted to the frame 11” („212 patent, 4:53-54) and “the brake link 2 will transmit force
to the frame 11 via the control link 3 and wheel link 1.” („212 patent, 5:5-7.) Similarly, a
“control link 3 is attached to the frame 11” („212 patent, 4:11-12), and “[t]he shock
absorber 12 is mounted to the frame 11” („212 patent, 4:18-19). This language is repeated
in the description of the other preferred embodiment. (See „212 patent, 4:39, 42-47, 47-48,
66-67, 5:5-6, 12-13.) The consistent differentiation of the “frame” from the components of
the rear suspension system throughout the specification strongly suggests that those
suspension components are not part of the “frame,” and thus they would not be “frame
members” as a person of ordinary skill in the art would understand that term in context.
Still, as Split Pivot points out, the specification states that “[a] frame, in certain
embodiments, may be comprised of . . . seatstays, chainstays, a seatstay, [and] a chainstay.”
(„212 patent, 17:23, 59.) The court agrees that in light of this explicit definition, seatstays
and chainstays would be considered “frame members,” since they are specifically listed as
components of which a frame may be comprised. Even so, this does not prove, as Split
30

Pivot further contends, that wheel links and brake links are “frame members,” because the
court does not read “seatstay” and “chainstay” to be synonymous with “brake link” and
“wheel link.” As Trek‟s expert explained:
While non-suspension bicycles include chainstays and seat stays,
these frame parts are replaced by links in rear suspension
bicycles. While it is common to continue to refer to these links
as chainstays and seat stays for convenience, it is my opinion
that one of ordinary skill in the art reading the above list in the
context of the specification would not understand the listed
“chainstay(s)” and “seatstay(s) to refer to a “wheel link,” a
“brake link,” or any other link specifically named in the patent.
(Expert Report of Edward M. Caulfield (dkt. #139) ¶ 49.)
Certainly, in some contexts, a person of ordinary skill in the art would read
“seatstay” and “chainstay” to refer to the components in a suspension bicycle.

Indeed,

Caulfield indicates that it is “common” to do so, but what is important for claims
construction purposes is what a person of ordinary skill in the art would have understood
those terms to mean in light of the context of the entire patent. The „212 patent never uses the
word “seatstay” or “chainstay” in connection with the brake link and wheel link,
respectively. Rather, Weagle clearly identifies the suspension components in his invention
as links, consistently refers to them as such, and never equates “links” to “stays.” Given this
context, the court does not believe a person of ordinary skill in the art would then read the
terms “seatstay” and “chainstay” to mean the same thing as “brake link” and “wheel link,”
respectively.

On the contrary, the terms are neither explicitly equated, nor implicitly

associated with one another, in this context.
The remainder of the specification provides further support for this interpretation.
For example, in describing further embodiments of the invention, the patent provides an
31

extensive list of components that can comprise “[a] moving suspension component of a
suspension system of the invention.” („212 patent, 17:63-18:32.) Nowhere in the list does
the patent identify a “seatstay” or “chainstay” as a moving suspension component.
Likewise, the specification states that “[a] vehicle using a suspension of the invention may,
in certain embodiments, comprise . . . a frame, [and] a moving suspension component.”
(„212 patent, 15:65-16:2.) Ultimately, the court finds no support for Split Pivot‟s argument
that a “frame member” includes the components of the suspension system itself, and so in
finding that “frame member” takes its ordinary and customary meaning, the court proceeds
with this distinction in mind.

C. Markush Group Limitations
Some of the claims the court has been asked to construe contain so-called Markush
groups. “A Markush group is a listing of specified alternatives of a group in a patent claim,
typically expressed in the form: a member selected from the group consisting of A, B, and
C.” Abbott Labs. v. Baxter Pharm. Prods., Inc., 334 F.3d 1274, 1280 (Fed. Cir. 2003). By the
use of this traditional “consisting of” language, “members of the Markush group are used
singly.”

Id. at 1280-81 (quoting Meeting Held to Promote Uniform Practice In Chemical

Divisions, 28 J. Pat. & Trademark Off. Soc‟y 849, 852 (1946)). Thus, while typically an
indefinite article such as „a‟ or „an‟ carries the meaning of “one or more,” “such an indefinite
article used in conjunction with a Markush grouping does not receive such latitude because a
proper Markush group is limited by the closed language term „consisting of.‟” Id. at 1281
(emphasis added). “If a patentee desires mixtures or combinations of the members of the
Markush group, the patentee would need to add qualifying language while drafting the
32

claim.” Id. Without such express language, “a patentee does not claim anything other than
the plain reading of the closed claim language.” Id.
The „212 patent contains two different Markush groups.

One is present in

independent claims 1 and 22, which requires that the “shock absorber is mounted to a link
selected from the group consisting of a brake link, a control link, and a wheel link” („212
patent, 20:1-3; 21:30-32) (“the Mounting Element”). The other is present in independent
claims 1, 22 and 43 of the „212 patent, which requires that “said shock absorber is selected
from the group consisting of a compression gas spring, a leaf spring, a coil spring, and a
fluid” („212 patent, 20:3-5; 21:34-36; 22:58-60) (“the Shock Absorber Element”).

The

court will address the requirements of these Markush groups in turn.

i.

The Mounting Element

The parties offer the following construction of the element “wherein said shock
absorber is mounted to a link selected from the group consisting of a brake link, a control
link, and a wheel link”:
Split Pivot

Trek

“wherein said shock absorber is mounted to
one or more links selected from the group
consisting of a brake link, a control link,
and a wheel link”

“wherein said shock absorber is mounted to
one and only one link, and no other link,
selected from the group consisting of a
brake link, a control link, and a wheel link”

Split Pivot contends that regardless of the patent‟s invocation of the Markush group
language, the court should construe “a link selected from the group consisting of” to read “a
link or links selected from the group consisting of.” Split Pivot argues that no rigid rules of
construction apply to Markush groups, and that in claims construction, the indefinite article
33

“a” is generally construed as meaning “one or more.” Although Split Pivot recognizes that
the word “a” used with the closed language “consisting of” generally means “only one
member of a Markush group,” Abbott Labs., 334 F.3d at 1281, it seizes on language in
Norian Corp. v. Stryker Corp., 432 F.3d 1356, 1359 (Fed. Cir. 2005), in which the Federal
Circuit noted that “the claim language „consisting of . . . a sodium phosphate,‟ on its own,
suggests the use of a single sodium phosphate.” Id. (emphasis changed). Split Pivot also
points out that the Norian court went on to analyze the specification and prosecution
history of the patent at issue. In Split Pivot‟s view, this broader analysis when coupled with
the court‟s use of the word “suggests,” indicates that (1) Markush group language alone
does not conclude the analysis of the claim scope and (2) this court must ensure a closed
construction is “consistent with the specification and the history” of the patent at issue.
(Pl‟s Opp‟n to Def.‟s Mot. for Summ. J. (dkt. #153) 40.) Not surprisingly, in Split Pivot‟s
view, the specification here makes clear in two separate places that the „212 patent
contemplates shock absorbers mounted to more than one link from the list.
In contrast, Trek contends that, having admitted the subject limitation is drafted in
the form of a Markush group, Split Pivot cannot ignore its legal effect on the claim
language. In Trek‟s view, Norian does not make the effect of the use of Markush group
language a mere “suggestion”; in fact, Norian did not involve a traditional Markush group at
all (because it lacked the “selected from a group consisting of” language); and if anything
Norian reaffirmed the Federal Circuit‟s holding of Abbott Laboratories by citing it approvingly
to support the relevant term‟s ultimate construction. Trek argues that (1) the law remains
unchanged: Markush groups claim “one and only one” of their listed alternatives, and (2)
the intrinsic evidence here supports adherence to the accepted legal analysis of Markush
34

groups. Split Pivot‟s reliance on “scraps” in the specification, Trek argues, does not salvage
a construction already in conflict with the legal effect of the language of the claims
themselves.
The court finds Trek‟s construction more persuasive. Cases like Abbott Laboratories
have unambiguously held that Markush groups are limited by the closed term “consisting
of.” See Abbott Labs., 334 F.3d at 1280-81. They have also held that while a patentee may
claim combinations of the elements listed in a Markush group, such a claim is not the
default: “the patentee would need to add qualifying language while drafting the claim” in
order to get that result. Id. at 1281 (quoting Meeting Held to Promote Uniform Practice In
Chemical Divisions, supra, which provides qualifying language examples such as “and mixtures
thereof” and “at least one member of the group”).
No such qualifying language is present here. The mounting element in the „212
patent claims a classic Markush group and, thus, it has “not claim[ed] anything other than
the plain reading of the closed claim language.”9 Id.; see also 3 Donald S. Chisum, Chisum on
Patents § 8.06[2], at 8-488 (2010) (“A trap for the unwary claim drafter using Markush
group language is the severely closed nature of a Markush group.”).

9

Split Pivot also argues that because the language claims “said” shock absorber, rather than
“a” shock absorber, it does not represent a Markush group. (Pl.‟s Resp. (dkt. #153) 53-54.)
The court disagrees. As Trek accurately points out, the antecedent of “said shock absorber”
is “a shock absorber.” (See „212 patent, 19:66, 20:3.) Additionally, it is not “the single
article „a‟ that would theoretically trigger” the Markush group language, as Split Pivot
contends. The Federal Circuit in Abbott Laboratories clearly stated that “a proper Markush
group is limited by the closed language term „consisting of.‟” Abbott Labs., 334 F.3d at
1281. In fact, Split Pivot‟s argument that the failure to use the word “a” necessitates a
broader construction makes little sense, given that the word “a” is what traditionally carries
the breadth of “one or more.”
35

Split Pivot cites to two district court cases in which courts have found that Markush
groups allow for the presence of multiple members: Teva Pharmaceuticals USA, Inc. v. Amgen,
Inc., No. 09-5675, 2010 WL 3620203 (E.D. Pa. Sept. 10, 2010), and Bristol-Myers Squibb
Co. v. Apotex, Inc., No. 10-5810(MLC), 2013 WL 1314733 (D.N.J. Mar. 28, 2013). In Teva
Pharmaceuticals, the district court construed the claim language “having an amino acid
sequence from the group consisting of” to allow for the presence of more than one amino
acid sequence. Teva Pharm., 2010 WL 3620203, at *7. It distinguished Abbott Laboratories
on the grounds that Abbott Laboratories involved a claim for a Lewis acid inhibitor in an
amount sufficient to prevent degradation. The mixture of two Lewis acid inhibitors to reach the
efficacy level was therefore not what the patentee had claimed. See id. (interpreting Abbott
Laboratories.). Thus, the Teva Pharmaceuticals court held that “[a]lthough Amgen‟s patents
must have an effective amount of one of the versions of the patented polypeptide present in
the product, it does not mean that only one of the patented versions may be present.” Id.
As an initial matter, this court notes that the Federal Circuit has not yet endorsed
the view of the Teva Pharmaceuticals court. As a result, this court remains bound by Abbott
Laboratories, which states unambiguously enough that members of a Markush group, absent
express qualifying language, are used singly.

See Abbott Labs., 334 F.3d at 1281.

Additionally, to the extent that the Teva Pharmaceuticals court‟s reasoning is applicable, it is
for the proposition that a Markush group indicates a single member of the group carries out
the given function. See Teva Pharm., 2010 WL 3620203, at *7. This is consistent with the
long-standing purpose of Markush groups, which recite members that are “alternatively
useable for the purposes of the invention.” Abbott Labs., 334 F.3d at 1280 (quoting In re
Driscoll, 562 F.2d 1245, 1249 (C.C.P.A. 1977) (emphasis added)). Applying the reasoning
36

of Teva Pharmaceuticals in light of the purpose of Markush group language in this case, the
drafter here chose language indicating that the claimed suspension system requires the
shock absorber to be mounted to a link; any one of the three enumerated links would be
“alternatively useable” for the system‟s purposes. Id. Two or more links serving that same
function, in contrast, is not what the inventor claimed.10
Though the plain language claims only suspension systems with a shock absorber
mounted to one and only one of the listed links, Split Pivot contends that two places in the
specification indicate that “a link selected from the group” must be construed as “one or
more links selected from the group.” First, a general statement in the specification reads,
“Throughout this application the singular includes the plural and the plural includes the
singular, unless indicated otherwise.” („212 patent, 19:59-61.) This statement does not
help Split Pivot, since the Markush group language itself and the closed nature of
“consisting of” represents just such an indication to limit “a” to its singular sense.

Cf.

Norian Corp., 432 F.3d at 1359 (noting that though generally the word “a” means “one or
more,” the general rule does not apply “when, as in this case, it has been used in
conjunction with the closed transitional phrase „consisting of‟”). Second, Split Pivot points

10

Perhaps recognizing this problem with its argument, Split Pivot asks the court to construe
only the words “a link selected from the group,” stating that construction of the word
“mounted” is “unnecessary” and that “[i]f the words „mounted to‟ are left out of the
language being construed, the claim, as written, will not preclude the shock absorber from
being connected to just one of „a brake link, a control link, and a wheel link‟ at a first end
and also being connected at its second end to some other structure, including one of the
remaining two enumerated links.” (Pl.‟s Resp. (dkt. #153) 43). Split Pivot offers no
authority for the proposition that the court can or should selectively construe only a portion
of a claim‟s language in order to alter that claim‟s construction, nor does the court find a
good reason to do so -- particularly since interpreting claim language requires reading the
claim term “not only in the context of the particular claim in which the disputed term
appears, but in the context of the entire patent.” Phillips, 415 F.3d at 1313.
37

to another statement in the specification, which reads, “In certain embodiments, a shock
absorber is mounted to a brake link and/or a control link in a pivotal manner.” („212
patent, 2:34-36.) The use of “and,” Split Pivot contends, would make clear to a person of
ordinary skill in the art that a shock absorber could be mounted to more than one link.
Even if the court were to take this as true, “[s]pecifications teach. Claims claim.” Oak Tech.,
Inc. v. Int’l Trade Comm’n, 248 F.3d 1316, 1329 (Fed. Cir. 2001). The language chosen by
the patentee is closed language, and just as the court cannot read limitations from the
specification into the claims, neither can it broaden the claims beyond the language used in
them based on a disclosure in the specification that does not fall within that claim. See
Autogiro Co. of Am., 384 F.2d at 396 (“Courts can neither broaden nor narrow the claims to
give the patentee something different than what he has set forth.”).
Had Split Pivot wished, it could have claimed a shock absorber mounted to “at least
one link selected from the group.” Split Pivot‟s failure to qualify its claim, however, has
limited the invention to systems in which the shock absorber is mounted to one of the three
listed links, each of which are usable in the alternative. The court declines to read out that
language.
Contrary to Split Pivot‟s selective quotation, the specification is also generally
consistent with a narrow interpretation of this element. While the description of “Shock
Absorbers of Suspension Systems of the Invention” is silent as to where the shock absorber
is mounted („212 patent, 13:9-31), none of the drawings in the „212 patent features a
suspension system in which the shock absorber is mounted to both the control link and the
brake link, such that the narrow construction would exclude “preferred embodiments” or
run afoul of general rules of claims construction in some other way. Rather, in figures 1 and
38

3, the shock absorber is mounted to the brake link on one side and the frame on the other;
in figures 2, 4, 5 and 6, the shock absorber is mounted to the control link on one side and
the frame on the other. The detailed description confirms this understanding. (See „212
patent, 5:18-20 (“The shock absorber 12 is mounted to the frame 11 via a second shock
pivot 9.”); 6:12-14 (same).)

The court cannot read that limitation into the claims, see

Golight, Inc., 355 F.3d at 1331, but in this case, the limitation is “imposed by the claim
language itself, and the written description simply confirms this understanding.”11

Oak

Tech., Inc., 248 F.3d at 1328-29.
Finally, Split Pivot proffers expert testimony to demonstrate that a person of
ordinary skill in the art would read the claim language to allow for the shock absorber to be
mounted on two links from the list. Such testimony, as extrinsic evidence, is less helpful in
claims construction than the intrinsic evidence of the claim language, the specification and
the prosecution history. Phillips, 415 F.3d at 1317. Thus, it must be considered in the
context of the intrinsic evidence to be reliable. Id. at 1319.
Split Pivot‟s expert, Tony Foale, opined in his expert report that “[a] person of
ordinary skill in the art . . . would have known that a shock absorber has two mounting

It is true that the „301 patent is a continuation in part of the „212 patent, and the „301
patent discloses one embodiment in which the shock absorber is mounted to the wheel link
and the control link. (See „301 patent, Figure 11.) Generally, identical or indisputably
interchangeable claim terms that share a common ancestry should be construed
consistently. See AbTox, Inc. v. Exitron Corp., 131 F.3d 1009, 1010 (Fed. Cir. 1997). The
court is aware of no case law suggesting that the claims of a parent patent should be
construed in light of the drawings of the child continuation-in-part, particularly since
continuations in part allow for the addition of new matter. Because claims with common
ancestry should generally be construed consistently, and because the language surrounding
the Mounting Element is identical between the „212 and „301 patents, the court concludes
that the embodiment disclosed in Figure 11 is an embodiment “disclosed but not claimed.”
Johnson & Johnson Assocs. Inc. v. R.E. Serv. Co. Inc., 285 F.3d 1046, 1051 (Fed. Cir. 2002).
39
11

points and thus of necessity it must be mounted to two components.” (Foale Report (dkt.
#111) ¶ 75.) While this may be true, Foale himself admits that it could be mounted either
to another link or to the bicycle‟s frame. (Id.) Given that the specification only describes
embodiments and includes drawings in which the shock absorber is mounted to one link
and to the frame, Foale‟s assertion that a person of ordinary skill in the art would have read
“a link” to read “one or more links” is unconvincing. Stated another way, while the court
does not quarrel with Foale‟s assertion that a person of ordinary skill in the art would know
that a shock absorber needs two mounting points, there is no indication that such a person
would read this language, in light of the specification and the Federal Circuit‟s construction
of a Markush Group, to claim not only configurations wherein the shock absorber was
mounted to one link and the frame, but also configurations wherein the shock absorber was
mounted to two links.
Therefore, the court construes the Mounting Element “wherein said shock absorber is
mounted to a link selected from the group consisting of a brake link, a control link, and a
wheel link” to mean “wherein said shock absorber is mounted to one, and only one, link
selected from the group consisting of a brake link, a control link, and a wheel link.”

ii.

The Shock Absorber Element

The parties offer the following construction of the element “wherein said shock
absorber is selected from the group consisting of a compression gas spring, a leaf spring, a
coil spring, and a fluid”:
Split Pivot

Trek

“wherein said shock absorber consists of “wherein said shock absorber consists of
40

one, or more, of a compression gas spring, one, and only one, of the following: a
leaf spring, a coil spring, and a fluid”
compression gas spring, a leaf spring, a coil
spring, and a fluid”
A version of this element also appears in the „301 patent and reads, “wherein said shock
absorber is selected from the group consisting of a damper, a compression gas spring, a leaf
spring, a coil spring, and a fluid.” The parties‟ proposed constructions of this version of the
term do not materially differ from the „212 patent version: Split Pivot asks the court to
construe the language to encompass one or more of the listed elements; Trek argues that
Split Pivot should be limited to one, and only one, of the elements listed.
Split Pivot‟s argument differs in one material respect, however, contending that the
plain and ordinary meaning of the term “shock absorber” necessarily encompasses both a
spring and a damper, and that it cannot be held to a narrower meaning without “specific
expressions of manifest exclusion or restriction.” (Pl.‟s Resp. (dkt. #153) 57.) As support,
Split Pivot again proffers the testimony of its expert, Foale, who opined that “[a]t the time
of the invention, a person of ordinary skill in the art would have understood a shock
absorber to necessarily include a springing medium like a gas spring or a coil spring, and a
fluid for damping. . . . Considering the colloquial language of the art, it is inconceivable that
anyone of ordinary skill in the art would assume that describing a shock absorber by its
springing method only would mean that it was without a fluid damping system. Such a
construction would render the Trek version of a shock absorber something other than a
shock absorber.” (Expert Report of Tony Foale (dkt. #111) ¶ 69.) Split Pivot argues that
the specification makes clear that the patents intended to claim the plain and ordinary
meaning of “shock absorber,” rather than an embodiment that contains just one of the

41

listed elements and thus falls outside that scope. (See „212 patent, 18:53-19:7 (listing items
that may comprise a “motion control device” of the invented suspension system).)
Trek does not dispute that “combination” shock absorbers -- those made from both a
spring and a fluid damper -- were “well known in the art” at the time of the patent
application was made. (Def.‟s Reply (dkt. #176) 19.) Additionally, Trek “agrees that the
recitation in the specifications of the patents in suit of a general „shock absorber,‟ could refer
to such a combination shock absorber.” (Id.) Trek relies instead on the rules governing the
use of Markush group language to argue that -- even assuming combination shock absorbers
were well-known in the art -- the patents exclude combination shock absorbers from what is
claimed.
As above with the Mounting Element, Split Pivot has claimed a classic Markush
group. Per Abbott Laboratories, this means that it has claimed suspension systems wherein
the shock absorber is made from one and only one of the listed equivalents, any one of
which would be “alternatively usable” for the purposes of the claimed suspension system.
Without express language allowing for combinations of the elements listed to accomplish
that same function, the plain language of the claims simply does not encompass
combination shock absorbers.
Even the specification lists the claimed elements in alternative form: the summary of
the invention states that “[a] shock absorber, in certain embodiments, may be a damper, a
spring, a compression gas spring, a leaf spring, a coil spring, or a fluid.” („212 patent, 2:2830.) The description of “Shock Absorbers of Suspension Systems of the Invention” likewise
employs the disjunctive.

(See „212 patent, 13:13-15.)

“The disjunctive „or‟ plainly

designates that a series describes alternatives.” SkinMedica, Inc. v. Histogen Inc., 727 F.3d
42

1187, 1199 (Fed. Cir. 2013) (citing Kustom Signals, Inc. v. Applied Concepts, Inc., 264 F.3d
1326, 1331 (Fed. Cir. 2001)).
Additionally, the prosecution history suggests a narrower interpretation may be
appropriate. Initially, the patents claimed only a “shock absorber”; the Shock Absorber
Element was not present in any of the claims. (See „212 file history (dkt. #158-29) SP
0000163-172.) The claims were allowed in this state, subject to certain amendments that
did not include the Shock Absorber Element. (See id. at SP 0000181-185.) Thereafter, the
applicant submitted his own amendments adding the Shock Absorber Element to each
independent claim, using the Markush group format. (See id. at SP 0000199-208.) In his
remarks, the applicant indicated that the claims were “amended to more particularly point
out and more distinctly claim the subject invention.” (Id. at SP 0000209.) While this is
not an instance in which the applicant necessarily amended claims to avoid a rejection, he at
the least intentionally restricted the scope of his invention and intended only to claim
systems including a shock absorber selected from that particular group -- despite the
presence of a far broader list of possible “motion control devices” in the specification. 12 (See
„212 patent, 18:53-19:7.)
The court‟s decision to adopt Trek‟s construction of the Markush group terms with
respect to shock absorbers may seem unduly restrictive, particularly in light of Trek‟s

12

The court notes that the specification at one point states that “[a] suspension system of the
current invention, in certain embodiments, comprises a shock absorber, or two, three, four, five
or more shock absorbers.” („212 patent, 13:11-13.) Given the court‟s construction of “shock
absorber” as one, and only one, of the listed elements, the specification would seem to support
arrangements in which the presence of both a single “shock absorber” (for example, a spring) and
a second “shock absorber” (for example, a fluid) would not defeat infringement. Split Pivot
does not, however, make this argument. Perhaps more importantly, crediting this interpretation
would provide a “back door” around the closed Markush group language that the patentee
actually chose.
43

concession that combination shock absorbers are well-known in the art.

But such a

restrictive interpretation is in keeping with the “severely closed nature” of the language
chosen by the patentee, which has been described as a “trap for the unwary drafter.” 3
Donald S. Chisum, Chisum on Patents § 8.06[2], at 8-488 (2010).

As the law currently

stands, Abbott Laboratories states that without express language claiming combinations of
Markush group members, a patentee has claimed embodiments featuring one, and only one,
member. The applicant made the decision to employ this language, and the court will not
and cannot read it out of these claims.
D. Force “Transmitted Through Said Brake Link”
The parties also dispute the proper construction of the limitation, present in all
asserted claims of the „212 patent and in claim 37 of the „301 patent, that the force that
compresses the shock absorber be “transmitted through” the brake link (“the Transmission
Element”).13 The parties offer the following constructions:
Split Pivot

Trek

“the force that compresses said shock “the force that compresses said shock
absorber is transmitted directly or absorber is provided by the brake link to
indirectly through said brake link”
the shock absorber”

The court agrees with Split Pivot that the ordinary meaning of the word “transmit” is
not limited to direct transmissions. The word does not itself require that any transmission of
force be direct, and even Trek admits that, at least in some contexts, “transmit” “could
13

The wording of this limitation differs very slightly between claims 1 and 22, which state
that “force that compresses said shock absorber is transmitted through said brake link,” and
claim 43, which states that “force is transmitted to said shock absorber through the brake
link.” For the most part, the parties treat this language the same across all three claims. To
the extent they do attempt to draw a distinction, that will be discussed in this section.
44

include an indirect transmission.” (Def.‟s Reply (dkt. #176) 23.) While Trek does qualify
this concession by arguing that “transmit” is ambiguous when read alone and that “in some
contexts it requires a direct transmission,” (Def.‟s Reply (dkt. #176) 23), Trek offers no
support for its narrow plain-meaning construction and no reason why such a limited
definition would be appropriate in this case. As Split Pivot points out, a patentee “is free to
choose a broad term and expect to obtain the full scope of its plain and ordinary meaning
unless the patentee explicitly redefines the term or disavows its full scope.” Thorner v. Sony
Computer Entertainment Am., LLC, 669 F.3d 1362, 1367 (Fed. Cir. 2012). Given the broad
meaning of the term “transmit,” the court finds Split Pivot‟s construction better reflects the
plain meaning of the language as read by a person of ordinary skill in the art.14
Certainly, as Trek points out, a person of ordinary skill in the art is “deemed to read
the claim term . . . in the context of the entire patent, including the specification.” Phillips,
415 F.3d at 1313. The court finds, however, that the specification actually provides further
support for Split Pivot’s construction of the Transmission Element.

For instance, the

description of Figure 1 uses variations of the term “transmit” to refer to indirect
transmissions. (E.g., „212 Patent, 5:5-8 (“[T]he brake link 2 will transmit force to the frame
11 via the control link 3 and wheel link 1. Force is transmitted through the links via the link fixed
and floating pivots 4, 5, 6, and 7.”).) If the meaning of the word “transmit” was limited to
direct transmissions, then it would be impossible for the brake link to “transmit” force to the
frame via other components. These descriptions are not limited to Figure 1; the description
14

Indeed, the Federal Circuit has previously construed the word “transmit” in the context of
satellites, finding that because “[n]either the claim language nor the patent specification
requires that the . . . transmission be direct,” the term was properly construed as
“encompassing . . . „transmitting, whether direct or indirect.‟” SiRF Tech., Inc. v. Int’l Trade
Comm’n, 601 F.3d 1319, 1330 (Fed. Cir. 2010).
45

of Figure 2 likewise states that “the brake link 2 will transmit force to the frame 11 via the
control link 3 and wheel link 1.” („212 Patent, 5:66-6:1.) Far from “explicitly redefin[ing] the
term” or “disavow[ing] its full scope,” Split Pivot has used the term through the
specification in a manner consistent with the ordinary, broad definition of the word
“transmit.”

See Autogiro Co. of Am. v. United States, 384 F.2d 391, 397 (Ct. Cl. 1967)

(“[T]he specification aids in ascertaining the scope and meaning of the language employed
in the claims inasmuch as words must be used in the same way in both the claims and the
specification.”).
Trek finds support for its narrow construction of the Transmission Element from a
different portion of the specification, which states that “[i]n certain embodiments, a shock
absorber is mounted to a brake link and/or a control link in a pivotal manner, and
preferably so that a force that compresses or extends the shock absorber is transmitted
through a brake link or a control link.” („212 patent, 2:34-38) (emphasis added). Trek
emphasizes the word “or” as indicating that the patent discloses just two possibilities: one in
which the shock absorber is directly connected to the brake link and another in which it is
directly connected to the control link. Trek further argues that Figure 3 embodies the first
possibility, with the brake link directly connected to the shock absorber, and that Figure 4
embodies the second possibility, with a control link directly connected to the shock
absorber. To read otherwise, Trek contends, would destroy the difference between the two
embodiments, since both possibilities would have a brake link that “transmits” force to the
shock absorber (Figure 3 directly, and Figure 4 indirectly). The word “or” would thus be
rendered meaningless.

46

One flaw in Trek‟s argument is that the descriptions in Figures 3 and 4 (or Figures 1
and 2, on which they are based) have no limiting language indicating that only Figure 3 has
a brake link that “transmits” force to the shock absorber and that Figure 4 lacks a brake link
that “transmits” force to the shock absorber. In fact, as discussed above, the descriptions of
Figures 1 and 2 both use the word “transmit” to encompass indirect transmission in other
contexts. The court finds further support for this interpretation by the juxtaposition of the
broader “transmit,” which allows for transmission via different components, with the
description‟s other requirement that “[f]orce from the brake will be transferred directly into
the brake link 2.” („212 patent, 5:4-5, 65-66.) Even were the court to ignore this more
compelling language in the descriptions, Trek‟s construction ultimately proposes to limit the
plain meaning of the term “transmit” based on a portion of the specification when, as
previously explained, it is axiomatic that “limitations from the specification are not to be
read into the claims,” Golight, Inc., 355 F.3d at 1331.
Furthermore, Split Pivot points out that to construe “transmit” to encompass only
direct transmission would effectively exclude numerous disclosed embodiments of the
invention -- namely, figures 2, 4, 5, and 6, which do not feature a direct connection between
the brake link and the shock absorber, but instead include an intervening control link. (Pl.‟s
Br. in Support of Mot. for Summ. J. (dkt. #114) 17.) Both Split Pivot‟s and Trek‟s experts
agree that Trek‟s construction would exclude these embodiments from the scope of the
claims.15 (See Caulfield Report (dkt. #104) 16; Foale Report (dkt. #111) 35.) Courts
“normally do not interpret claim terms in a way that excludes disclosed examples in the

15

All of the claims of the „212 patent contain the limitation that force be “transmitted
through” the brake link. (See dkt. #133-1.)
47

specification.” ArcelorMittal France v. AK Steel Corp., 700 F.3d 1314, 1321 (Fed. Cir. 2012)
(quoting Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1305 (Fed. Cir.
2007)).

Given the breadth of the term‟s ordinary meaning, and the fact that the

specification uses the word “transmits” to encompass indirect transmission, the court finds
no basis to interpret it in a way that excludes four of the seven disclosed embodiments.
Trek also argues that Weagle disclaimed indirect transmission during the patent‟s
prosecution. Specifically, Trek notes that the examiner rejected claims over U.S. Patent
Publication No. 2003/0038450 (“the Lam reference”) during prosecution of the „212
patent, which had a configuration wherein the shock absorber was connected to the control
link, rather than directly to the brake link. Trek argues that in thereafter amending his
claims to include the requirement that “force that compresses said shock absorber is
transmitted through said brake link,” Weagle surrendered any indirect transmission of force
to the shock absorber.
The prosecution history does not ultimately help Trek. While Trek is correct in that
many of the „212 patent‟s claims were initially rejected over Lam, as Split Pivot points out,
following a telephone conference, “[i]t was agreed that the prior art references used in the
previous office action [including Lam] do not read on the claims, as the art does not disclose
a wheel link floating pivot which is concentric with the wheel rotation axis.” („212 file
history (dkt. #158-29) SP 0000162.) Thus, it is not at all clear that by accepting the
examiner‟s eventual amendment to include the Transmission Element in additional claims,
Weagle was disavowing embodiments involving an indirect transmission of force in order to
overcome a rejection over prior art.

48

In addition, the court actually finds some support for Split Pivot‟s interpretation in
the prosecution history. “[P]rosecution history provides evidence of how the PTO and the
inventor understood the patent.” Phillips, 415 F.3d at 1317. Here, that history suggests
that both the PTO and Weagle understood the element “wherein force is transmitted to
said shock absorber through said brake link” to encompass both direct and indirect
transmission. For example, as Trek points out, the Lam reference discloses a configuration
that is very similar to figures 2 and 4 of the „212 patent, involving a brake link attached to a
control link, which attaches to a shock absorber.
(Left “Figure 1”: Lam reference; Right “Figure 5”: „212 patent)

49

In his original rejection of the „212 patent over Lam, the patent examiner noted that
Lam “discloses . . . a control link (26) . . . wherein force is transmitted to the shock absorber
through the brake link (via 26).” („212 file history (dkt. #158-29) SP 0000153-54.) This
strongly suggests that the patent examiner viewed the element requiring the brake link to
transmit force to the shock absorber to encompass embodiments in which the transmission
was indirect, by means of the intervening control link.

While less important than the

language and specification, this provides further support for a broad construction of the
Transmission Element.
It is not clear to the court whether Trek intends to draw a distinction between the
element “force that compresses said shock absorber is transmitted through said brake link,”
which appears in claims 1 and 22 of the „212 patent, and the slightly simpler “force is
transmitted to said shock absorber through the brake link” of claim 43. Indeed, it offers
essentially the same construction for both terms. (See Def.‟s Br. in Support of Summ. J.
(dkt. #125) 44 (construing both elements to require force to be “provided by the brake link
to the shock absorber”). To the extent that Trek draws a distinction between the two, the
court does not. To the simpler formulation of claim 43, claims 1 and 22 simply add the
subordinate clause “that compresses said shock absorber,” which further describes the type
of force in question. Trek argues that through this addition, Weagle “disclaimed a broader
construction of this limitation that would allow for the shock absorber to be compressed by
components other than the brake link.”
misinterprets the claim language.

(Id. at 47.)

This argument fundamentally

The subordinate clause “that compresses said shock

absorber” modifies the word “force,” not the word “brake link.” Thus, the shock absorber

50

must be compressed by “force,” and that force must be “transmitted through” the brake
link. Nothing in that language requires the brake link itself to compress the shock absorber.
Thus, based on the plain meaning of “transmits” to a person of ordinary skill in the
art and the supporting context of the specification and prosecution history, the court adopts
Split Pivot‟s proposed construction and construes “transmits” to encompass both direct and
indirect transmissions.

E. Leverage Ratio Curve Element
Each asserted claim of the „301 patent contains a limitation that is directed toward
“leverage ratio curves” achieved by the claimed suspension systems; these limitations are not
present in the „212 patent claims. Specifically, the claims cover suspension systems wherein
the leverage ratio curve “has a negative or a positive slope in the beginning 1/3 (third) [of
the leverage ratio curve] and in the end 1/3 (third), and a change in slope value in the
middle 1/3 (third).”16 („301 patent, 34:18-21.)
i.

“Has a Negative or a Positive Slope”

First, the parties disagree on the correct construction of the phrase “has a negative or
a positive slope”:
Split Pivot

Trek

“has a negative and/or a positive slope, and “has only a negative or a positive slope, and
may include a zero slope”
does not include both a negative and a
positive slope or a zero slope”

16

The slope of a line, in purely mathematical terms, is the ratio of the projection on the yaxis (vertical) of a segment of a graph to its projection on the x-axis (horizontal); that is, its
vertical “rise” over the horizontal “run.”
51

In support of its construction, Trek argues that the plain meaning of the word “or”
does not embrace the meaning of “and”; that is, the claim language covers one possibility or
the other, but not both. Thus, even though the specification discloses embodiments in
which the beginning one-third and the end one-third of the leverage ratio curve have some
combination of negative, positive, and zero slope, the plain language claims only
embodiments in which the beginning and end thirds have a solely positive or solely negative
slope.

Trek also argues that Weagle disclaimed embodiments with a zero slope in the

beginning or end thirds of the curve during prosecution, which also means he disclaimed
any embodiments in which the slope changes from positive to negative or vice versa in those
thirds (since a change from positive to negative requires a point at which the slope is zero).
Split Pivot argues that the plain meaning of the word “or” can embrace the
possibility of both options, such that “or” means “either or both.”

In support for this

interpretation, Split Pivot points out that the specification discloses embodiments having
both a negative and positive slope in the same one-third of the leverage ratio curve:
In certain embodiments, a beginning ⅓ can comprise a positive
slope, zero slope, and or a negative slope.
In certain
embodiments, a middle ⅓ can comprise a positive slope, zero
slope, and or a negative slope. In certain embodiments, an end
⅓ can comprise a positive slope, zero slope, and or a negative
slope. . . . Certain preferred embodiments can comprise a
beginning ⅓ with a positive and negative slope, a middle ⅓ with
negative and zero slope, and an end ⅓ with a positive slope.
Certain preferred embodiments can comprise a beginning ⅓ with
a positive and negative slope, a middle ⅓ with negative and zero
slope, and an end ⅓ with a more negative slope.
(„301 patent, 33:31-48.)

Thus, read in context, Split Pivot contends that the claim

language contemplates curves with any combination of negative, positive and zero slopes in
the beginning and end thirds.

Split Pivot also argues that since there is no “clear and
52

unmistakable” disavowal of claim scope in the prosecution history, the claim language must
be construed broadly.
As both Split Pivot and Trek recognize, the specification discloses embodiments in
which the beginning and end thirds of the leverage ratio curve are not limited to either
positive or negative slopes.

“[A] claim construction that would exclude the preferred

embodiment „is rarely, if ever, correct and would require highly persuasive evidentiary
support.‟” Rexnord Corp., 274 F.3d at 1342 (quoting Vitronics Corp. v. Conceptronic, Inc., 90
F.3d 1576, 1583 (Fed. Cir. 1996)). Such a construction may nevertheless be correct if the
unambiguous language of a claim that was amended to overcome a rejection compels an
interpretation that excludes the preferred embodiment. See Elekta Instrument S.A. v. O.U.R.
Scientific Intern., Inc., 214 F.3d 1302, 1308 (Fed. Cir. 2000).
Here, as Trek points out, Split Pivot originally submitted claims that stated the
disputed element as:
…wherein said leverage ratio is exemplified as a curve, said curve
having a slope. and said slope in a beginning 1/3 selected from
the group consisting of a positive slope, a zero slope, and a
negative slope, said slope in a middle 1/3 selected from the
group consisting of a positive slope, a zero slope, and a negative
slope, and said slope in an end 1/3 selected from the group
consisting of a positive slope, a zero slope, and a negative slope.
(„301 patent file history (dkt. #158-32) SP 0000497.)
The examiner rejected the claims containing this element over Miyakoshi, noting:
It is well-known in the art that the shock absorber force at the
wheel is related to the shock absorber force multiplied by the
leverage ratio. Accordingly, any graph can be broken down into
three equal parts and, because lines on a graph must have a
positive, negative, or zero slope, the Miyakoshi reads in each of the
selected groups provided for in claims 98, 106 and 114.
53

(„301 patent file history (dkt. #158-32) SP 0000512.) Thereafter, Split Pivot submitted
amended claims in which the original language was replaced by the current language, which
requires the first and last thirds of the curve to have “a negative or a positive slope.” (See
„301 patent file history (dkt. #158-32) SP 0000525-0000549.)
Based on the foregoing exchange, Trek argues, prosecution history estoppel precludes
Split Pivot from claiming suspension systems with curves that have a zero slope in the first
and last thirds -- and thus precludes Split Pivot from claiming curves with a change from
negative to positive or vice versa in the first and last thirds as well, since such a change
requires the curve to have a zero slope at some point.
Prosecution history estoppel “requires that the claims of a patent be interpreted in
light of the proceedings in the PTO during the application process.” Festo Corp. v. Shoketsu
Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 733 (2002). When a claim has been rejected,
that rejection indicates that the patent examiner did not believe it could be patented in its
original form. Id. at 734. “While the patentee has the right to appeal, his decision to forgo
an appeal and submit an amended claim is taken as a concession that the invention as
patented does not reach as far as the original claim.” Id.
Here, the court agrees with Trek that, having chosen to amend the claims to remove
the possibility of a zero slope in the curve‟s first and last thirds to overcome the examiner‟s
rejection, Split Pivot cannot now claim embodiments that may include a zero slope in the
curve‟s first and last thirds. Moreover, because a line in which the slope changes from
positive to negative or negative to positive has a zero slope at the point of change, Split
Pivot conceded by amendment to limit its claims to only those suspension systems with

54

leverage ratio curves that have only a positive or negative slope in the first and last thirds.17
While recognizing that constructions excluding preferred embodiments are disfavored, this
appears that “rare case” where Split Pivot‟s decision to amend its claims compels such an
interpretation. Cf. Elekta Instrument S.A., 214 F.3d at 1308 (adopting construction that
excluded the “preferred and only embodiment disclosed in the specification” where
prosecution history made clear that applicant had changed claim language to overcome
obviousness rejection).
Split Pivot‟s only argument against a finding of prosecution history estoppel with
respect to this amendment is that the „301 patent does not include “clear and
unmistakable” language disavowing claim scope. Plantronics, Inc. v. Aliph, Inc., 724 F.3d
1343, 1350 (Fed. Cir. 2013). Split Pivot‟s apparent contention that Trek must point to
particular language, however, is misplaced. Even the case Split Pivot cites does not require
particular language for prosecution history estoppel to apply. See id. (“[W]hen the patentee
unequivocally and unambiguously disavows a certain meaning to obtain a patent, the
doctrine of prosecution history disclaimer narrows the meaning of the claim consistent with
the scope of the claim surrendered.”). Here, the court finds that Split Pivot‟s decision to
amend its claim language to remove the possibility of a zero slope is unmistakably an effort
to overcome the examiner‟s rejection, which was predicated on a finding that all lines must
have either a positive, negative or zero slope.18

Mathematically, it is certainly possible for a line to change from positive to negative slope
(or vice versa) without the line having a zero slope at any point. The parties have agreed
here (perhaps as a practical matter given the curves in question) that it is impossible to have
both a positive and negative slope without going through a zero slope. (See Reply to
DPFOF (dkt. #177) ¶ 154.)
18
The fact that the remarks that accompanied the amendments state that they are made
55
17

Additionally, the court finds additional support for Trek‟s construction in the realm
of common sense. Split Pivot asks the court to read “a negative or a positive slope” as
“negative, positive and/or zero.”

As the examiner initially pointed out, under this

construction, all leverage ratio curves, without exception, would meet this “limitation,” since
lines can only have some combination of positive, negative and zero slope.

(See Expert

Report of Edward M. Caulfield (dkt. #139) ¶ 59 (“[T]he patent specification describes the
full set of potential leverage ratio curves achievable in any suspension.” (emphasis added).)
Split Pivot‟s construction would therefore render the limitation “meaninglessly empty.”
Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1578. In this sense, Split
Pivot‟s argument “proves too much,” id., or, at least, Split Pivot was willing to concede as
much rather than fight this examiner‟s reasoning on this point. Split Pivot must now accept
the consequences of that choice. Accordingly, the court adopts Trek‟s construction.

ii.

“Change in Slope Value”

The parties also disagree on the proper construction of “change in slope value,”
which the „301 patent requires in the middle third of the leverage ratio curve of a
suspension system:
Split Pivot

Trek

“change in the slope of a curve plotted on a “change between positive, negative, or zero
Cartesian graph where slope is the change slope”
in Y value divided by the change in X value
“[w]ithout acquiescing in the rejections or the grounds therefor, and solely to expedite
prosecution” („301 patent prosecution history (dkt. #158-32) SP 0000549), does not
change the court‟s analysis. If overcoming prosecution history estoppel were as simple as
including such boilerplate language with each amendment, the doctrine would be
eviscerated.
56

over an identical and correlating small
incremental wheel travel distance”

Trek argues that one of ordinary skill in the art would understand the term “slope
value” to refer to a positive, negative or zero slope. It points out that the leverage ratio
curve limitations describe only two potential “values” for the first and last thirds of the
curve: positive and negative. Thus, a person of ordinary skill in the art would understand
that the “change in slope value” in the middle third meant a change between those two
values -- that is, a change from positive to negative slope, or vice versa.
Split Pivot argues that Trek‟s construction “confuses the concepts of slope sign and
slope steepness.” (Pl.‟s Resp. (dkt. #153) 69.) By slope value, is meant to refer to the
calculated magnitude or steepness (i.e., the rise over the run) of the curve‟s slope, and
supports its proposed construction by pointing out that the specification describes an
embodiment in which the middle third of the curve has “a less positive slope” („301 patent,
33:38), and that another embodiment describes a curve whose end third has a “more
negative slope” („301 patent, 33:47-48).

If slope value meant slope sign, Split Pivot

contends, then there could be no such thing as a “less positive” or “more negative” slope.
Read in the context of the full patent, the court agrees with Trek that in the context
of the „301 patent, a person of ordinary skill in the art would read “change in slope value”
to refer to a change in slope sign, rather than any mathematical change at all in the
steepness of the slope.
construction.

The context provided by the dependent claims supports this

For instance, asserted independent claim 29 uses the general language

requiring a “negative or a positive slope” in the beginning and end thirds of the curve, with

57

a “change in slope value” in the middle third. Claim 35, which depends from claim 29 and
adds an additional leverage curve limitation, reads:
The suspension system of claim 29, wherein said leverage ratio
curve of said suspension system has a negative slope in the
beginning ⅓ (third) and a positive slope in the end ⅓ (third),
and a change in slope value in the middle ⅓ (third).
(„301 patent, 37:48-51.) Claim 36, which also depends from claim 29 and is the only other
one of claim 29‟s dependent claims to add a leverage curve limitation, reads:
The suspension system of claim 29, wherein said leverage ratio
curve of said suspension system has a positive slope in the
beginning ⅓ (third) and a negative slope in the end ⅓ (third),
and a change in slope value in the middle ⅓ (third).
(„301 patent, 37:52-55.) This context suggests that the “change in slope value” refers to the
change from negative to positive, in claim 35, and positive to negative, in claim 36. Claim
37, another asserted independent claim, provides the same context: dependent claim 44
specifies a negative-to-positive leverage curve, and dependent claim 45 specifies a positiveto-negative leverage curve. (See „301 patent, 38:35-42.) In fact, all of the claims follow this
same pattern.

(See, e.g., „301 patent, 39:33-40; 40:34-41; 41:20-27; 42:14-21, 57-64;

44:12-19.) Read in context, “change in slope value” appears to mean a change in the slope
sign, rather than any possible change in slope.
Still, as Split Pivot points out, the specification refers to embodiments in which the
slope of a leverage ratio curve is “less positive” or “more negative.” The specification does
not, however, state that the slope value is “less positive” or “more negative.” Indeed, as Trek
points out, the term “slope value” does not appear in the specification at all. It is therefore
reasonable that a person of ordinary skill in the art, reading the entirety of the patent,
would understand that “slope,” as the result of a mathematical calculation, can be “less
58

positive” or “more negative,” but that a “change in slope value” means a change from
positive to negative or vice versa. The court, therefore, adopts Trek‟s construction of this
element.
III. Infringement and Non-Infringement
“Infringement, whether literal or under the doctrine of equivalents, is a question of
fact.” Absolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121, 1129-30 (Fed. Cir. 2011)
(citing Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998)). As plaintiff, Split
Pivot bears the burden of proving infringement by a preponderance of the evidence.
Laitram Corp. v. Rexnord Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991).
analysis involves two steps.

An infringement

First, the claim must be properly construed, as per the

standards set forth above, to determine its scope and meaning.

Second, the claim as

properly construed must be compared to the accused device or process. Absolute Software,
Inc., 659 F.3d at 1129.
“Literal infringement requires that each and every limitation set forth in a claim
appear in an accused product.” V-Formation, Inc. v. Benetton Grp. SpA, 401 F.3d 1307, 1312
(Fed. Cir. 2005). “If any claim limitation is absent from the accused device, there is no
literal infringement as a matter of law.” Bayer AG v. Elan Pharm. Research Corp., 212 F.3d
1241, 1247 (Fed. Cir. 2000).
A product that does not literally infringe may nevertheless infringe a patent under
the doctrine of equivalents. “Infringement under the doctrine of equivalents requires that
the accused product contain each limitation of the claim or its equivalent.” AquaTex Indus.,
Inc. v. Techniche Solutions, 419 F.3d 1374, 1382 (Fed. Cir. 2005) (emphasis added). “An

59

element of an accused product is equivalent to a claim limitation if the differences between
the two are insubstantial, a question that turns on whether the element of the accused
product „performs substantially the same function in substantially the same way to obtain
the same result‟ as the claim limitation.”

Absolute Software, Inc., 659 F.3d at 1139-40

(quoting AquaTex Indus., Inc., 419 F.3d at 1382).
As previously noted, both literal infringement and infringement under the doctrine of
equivalents are questions of fact. Id. at 1129-30. Summary judgment may nevertheless be
appropriate “when no reasonable jury could find that every limitation recited in a properly
construed claim either is or is not found in the accused device either literally or under the
doctrine of equivalents.” U.S. Philips Corp. v. Iwasaki Elec. Co., 505 F.3d 1371, 1374-75
(Fed. Cir. 2007) (quoting PC Connector Solutions LLC v. SmartDisk Corp., 406 F.3d 1359,
1364 (Fed. Cir. 2005)).

A. The „212 Patent
Split Pivot has moved for summary judgment on claim 22 of the „212 patent only.
(Joint Summ. J. Charts (dkt. #190).) The accused products are the Trek Fuel EX and
Superfly 100 bicycles. (Id.) Trek has moved for summary judgment of non-infringement on
all asserted claims for all asserted Trek products. (Id.)

i.

Literal Infringement

Literal infringement requires that each element of a claim be literally present in the
accused product. If any element is missing, then Trek is entitled to summary judgment of
no literal infringement as to that claim as a matter of law.
60

Based on this court‟s foregoing claims construction and the undisputed facts, neither
the Fuel EX bicycles nor the Superfly 100 bicycles, to which Split Pivot‟s motion is limited,
can literally infringe claim 22 of the „212 patent. The Fuel EX bicycles, which fall into the
category of Full Floater products, indisputably have a shock absorber that is mounted to two
links -- the control link and the wheel link -- as opposed to a shock absorber mounted to a
single link selected from the listed Markush group.

(See Reply to DPFOF (dkt. #178)

¶ 122.) Under this court‟s construction of the term, no reasonable jury could find that the
Fuel EX bicycles literally include this element. Likewise, though the Superfly 100 bicycles
do not have Full Floater, they cannot literally infringe because they have Fox RP2, Fox
RP23, Fox RP3 or Fox CTD shocks, which are “air springs with internal fluid dampers.”
(Expert Report of Edward M. Caulfield (dkt. #139) ¶¶ 222.) Split Pivot‟s expert also states,
more generally, that “[a]ll accused Trek models use shock absorbers which use either
compressed gas or metal coil springs for the springing medium built around a body
containing a fluid damper.” (Expert Report of Tony Foale (dkt. #111) ¶ 275.) The parties
thus agree that the shock absorbers on the Superfly 100 bicycles contain a combination of
the elements in the patent‟s Markush group. Since the construction this court has adopted
does not allow for combinations, the Superfly 100 bicycles cannot literally infringe claim
22.
In fact, given this court‟s construction of the Shock Absorber Element, and the fact
that all Trek bicycles employ shock absorbers that feature a combination of a spring and
fluid damper, Trek is entitled to summary judgment of no literal infringement on claims 1,
22 and 43, and all their asserted dependent claims, since all of these claims require a shock

61

absorber “selected from the group consisting of a compression gas spring, a leaf spring, a coil
spring, and a fluid.”

ii.

Infringement under Doctrine of Equivalents

Split Pivot also asserts that the Fuel EX products and the Superfly 100 products
infringe the „212 patent under the doctrine of equivalents.

Under the doctrine of

equivalents, a product may infringe a patent even if not every limitation is literally present.
The question is “whether an omitted part is supplied by an equivalent device or
instrumentality.” Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1356 (Fed. Cir. 2012)
(quoting Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 32 (1997)). Under
one test, a device is “equivalent” when it “matches the function, way, and result of the
claimed element.” Id. (quoting Warner-Jenkinson, 520 U.S. at 40). Alternatively, a device
may be “equivalent” when the differences between the claimed element and that device are
“insubstantial.”

Warner-Jenkinson, 520 U.S. at 40.

“If no reasonable jury could find

equivalence, then the court must grant summary judgment of no infringement under the
doctrine of equivalents.” Id.
Taking the Mounting Element first, Split Pivot relies on the function-way-result test
and argues that “it is easily possible to achieve the same suspension performance as Trek
alleges to possess in its „fully floating‟ designs with a non-„fully floating‟ design.” Foale,
Split Pivot‟s expert, opined in his report that “for a given wheel displacement[,] the shock
absorber displacement will be greater” when a shock absorber is fixed to the frame, rather
than being mounted to two links in a “fully floating” design. (Expert Report of Tony Foale
(dkt. #111) ¶ 198.) Foale went on to “create a non-floating design that gives suspension
62

characteristics that are for all practical purposes identical to the Trek floating designs” by
(1) altering the 2013 Trek Fuel EX and 2012 Session, (2) changing the distance on the
control link between the pivot and shock absorber mounting and (3) using a cloning feature
to select a mounting location on the frame. (Id. at ¶¶ 197, 199.) The result of that redesign
yields motion ratio curves that closely track one another.19 (See id. Exh. X.) In essence,
Split Pivot‟s argument is that Trek‟s Full Floater bicycles could achieve the same practical
results with a non-Full Floater arrangement, if other features of their design were altered.
As Trek points out, however, “[t]he relevant question for this Court is not whether
an infringing bike if redesigned could resemble Trek‟s bike. It is whether Trek‟s bike as
designed performs the same function, in the same way, to achieve the same results as the
limitation in claim 22.” (Def.‟s Resp. (dkt. #149) 39.) Split Pivot has not proposed any
facts suggesting that Trek‟s Full Floater bicycles, with shock absorbers mounted to two
links, achieve substantially the same results in substantially the same way as the suspension
system of the claimed invention. Furthermore, Split Pivot‟s argument focuses entirely on the
results the suspension system would yield: “[t]he fact that the two devices achieve
substantially the same result creates no presumption that they do so in substantially the
same way.” Universal Gym Equip. v. ERWA Exercise Equip., 827 F.2d 1542, 1548 (Fed. Cir.
1987).

Split Pivot has proposed no facts that establish the way in which Full Floater

products achieve those results, nor has it argued that the way Full Floater products achieve
results is substantially the same as the way the bicycles of the claimed invention do. (See
Pl.‟s Mot. Summ. J. (dkt. #114) 28-29; Pl.‟s Resp. (dkt. #153) 49-50; PPFF (dkt. #171)
¶¶ 68-71.)
19

“Motion ratio” is another term for “leverage ratio.” („301 Patent, 18:63-67.)
63

Summary judgment is the “„put up or shut up‟ moment in a lawsuit, when a party
must show what evidence it has that would convince a trier of fact to accept its version of
events.” Koszola v. Bd. of Educ. of City of Chi., 385 F.3d 1104, 1111 (7th Cir. 2004). Here,
Split Pivot has generally alleged infringement on the basis of the doctrine of equivalents but
has proposed no facts demonstrating that Trek‟s Full Floater arrangement achieves
substantially the same results in substantially the same way as the suspension systems of the
claimed invention. The only evidence offered is Foale‟s expert report, which contains only
Foale‟s assertion that he could theoretically alter a Trek bicycle to yield the same suspension
performance even without Full Floater.
Split Pivot has, therefore, “fail[ed] to make a showing sufficient to establish the
existence of an element essential to [its] case, and on which [Split Pivot would] bear the
burden of proof at trial.” Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). This “complete
failure of proof” means that Trek is “entitled to a judgment as a matter of law.”
Accordingly, the court will therefore grant summary judgment of non-infringement for Trek
on all Full Floater products, because no reasonable jury could find on the evidence provided
that a shock absorber mounted to two links infringes the requirement of claims 1 and 22 of
the „212 patent in the same way as one mounted to a single link selected from the Markush
group.20
Next, the court considers whether, as Split Pivot contends, Trek‟s products infringe
the Shock Absorber Element under the doctrine of equivalents. Split Pivot again relies on

Even if Split Pivot had provided evidence of the similarities in the way Trek‟s shock
absorbers are configured to that taught in the „212 patent, the court would be disinclined to
stretch the doctrine of equivalents to reach beyond the obvious differences in a field so full
of patents differentiated principally by the way essentially the same function is achieved.
64
20

Foale‟s report, in which he states that “[e]ach of the accused Trek models include[s] a shock
absorber that provides both a spring force to absorb impact and facilitate suspension
movement, and a damping capability to dissipate suspension movement or oscillation.”
(Expert Report of Tony Foale (dkt. #111) ¶ 213.) Foale goes on to state:
By employing a gas spring or coil spring, in combination with a
damping capability, the shock absorbers used on Trek‟s accused
Evo-Link equipped bike models perform the same function, i.e.,
absorbing impact[s], supporting a load, and maintaining contact
between the tyre and the ground), in the [same] way, i.e.,
through a combination of spring force and damping capabilities,
to achieve the same result, i.e., impact absorption, load support
and suspension facilitation, as the shock absorber claimed in
claims 1, 22, and 43[,] which is made up of an element or
elements from the group of compression gas springs, leaf springs,
coil springs, and fluids.
(Id.; see also id. at ¶ 236 (incorporating by reference the above opinion in analyzing the nonEvo Link bicycles).)
Foale‟s report, and thus Split Pivot‟s argument, suffers from a critical flaw: Foale
assumes, for the purposes of his doctrine of equivalents analysis, that Split Pivot‟s patents
claim an invention in which a shock absorber may have “an element or elements from the
group of compression gas springs, leaf springs, coil springs, and fluids.” (Id. at ¶ 213.) His
analysis distinguishes between the role of the spring and the role of the fluid dampener and
states that Trek, in employing the two in combination, achieves the same thing in the same
way as the shock absorber of the claims. The problem is that this court has construed the
Shock Absorber Element to cover only embodiments in which the shock absorber is just one
of the listed elements -- that is, either a spring or a fluid, but not both. Split Pivot has
offered no evidence that Trek‟s bicycles include shock absorbers that achieve substantially
the same results in substantially the same way as the single-element shock absorbers that its
65

patents claim. Indeed, Foale‟s report, with its emphasis on the combination of a spring and
dampener to achieve the desired results, establishes the opposite is true.
Split Pivot has again neither produced any evidence suggesting that the difference
between combination shock absorbers and single-element shock absorbers is “insubstantial,”
nor that they would accomplish substantially the same function in substantially the same
way to achieve substantially the same result. To the contrary, the only evidence it has
offered on that question suggests that combination shock absorbers make use of both
elements in combination to achieve their function, which would make a single-element
shock absorber significantly different. Given the dearth of evidence suggesting that the shock
absorbers are not substantially different, the court finds that no reasonable jury could find
equivalence on this record. Because all the asserted claims of the „212 patent include this
element, and none of Trek‟s products includes either the literal element or an equivalent,
Trek is entitled to summary judgment of non-infringement on every asserted claim. See
Kustom Signals, Inc., 264 F.3d at 1333 (“The all-elements rule is that an accused device must
contain every claimed element of the invention or the equivalent of every claimed
element.”).21

B. The „301 Patent
Trek also moves for summary judgment of non-infringement on the „301 patent.
Generally, identical or indisputably interchangeable terms in patents that share common
ancestry should be construed consistently across the patents. See AbTox, Inc. v. Exitron Corp.,
The court need not, therefore, reach the questions of whether Trek‟s products include, as
properly construed, a “wheel link floating pivot,” a brake link that “passes on two sides of a
frame member,” and force “transmitted through” the brake link.
66
21

131 F.3d 1009, 1010 (Fed. Cir. 1997) (“Although these claims have since issued in separate
patents, it would be improper to construe this term differently in one patent than another,
given their common ancestry.”). While there can be exceptions, neither party has suggested
it would be proper to construe any of the identical terms the „212 and „301 patents share
differently across the two patents, and so the court will construe them consistently with one
another. As a result, Trek is entitled to summary judgment of non-infringement based on
the fact that its products do not infringe the Shock Absorber Element either literally or
under the doctrine of equivalents.
Additionally, as the court noted above, the element “and wherein a leverage ratio
curve of said suspension system has a negative or a positive slope in the beginning 1/3
(third) and in the end 1/3 (third), and a change in slope value in the middle 1/3 (third),”
which is present in each of the asserted claims of the „301 patent, excludes bicycles with
suspension systems that have a zero slope in the first or last third of the leverage ratio curve.
Similarly, bicycles that do not feature a change from negative to positive or positive to
negative in the middle third of the leverage ratio curve would be excluded from this element
of the asserted „301 claims.
The parties‟ experts have produced leverage ratio curves for Trek‟s accused bicycles
that are nearly identical to one another, such that the infringement analysis under Trek‟s
proposed construction is the same using either Caulfield‟s curve or Foale‟s curve.

(See

Expert Report of Edward M. Caulfield (dkt. #139) ¶¶ 69-70.) Foale‟s calculations appear in
chart form, as organized by Split Pivot, below:

67

First Third

Middle Third

Last Third

EX 2010

Negative

-0.0053 to -0.0035

Negative

EX 5 2010

Negative

-0.0050 to -0.0033

Negative

EX 7 2010

Negative

-0.0053 to -0.0035

Negative

EX 8-9.9 2010

Negative

-0.0043 to -0.0025

Both

EX 2013

Negative

-0.0029 to -0.0017

Both

EX 4 2013

Negative

-0.0055 to -0.0039

Negative

Top Fuel 8 2010

Negative

-0.0021 to -0.00034

Both

Session 2010

Negative

-0.0048 to -0.0036

Negative

Session 2012

Both

-0.0040 to -0.0029

Both

Session 88 2011

Both

-0.0042 to -0.0033

Both

Lush 2012

Negative

-0.0041 to -0.0022

Both

Lush 2013 29

Negative

-0.0042 to -0.0034

Negative

Remedy 2010

Negative

-0.0039 to -0.0019

Both

Scratch 2010

Both

-0.0032 to -0.0020

Both

Scratch Air 2010

Both

-0.0021 to -0.0011

Both

Negative

-0.0038 to -0.0024

Both

Superfly 100 2010

Both

-0.00053 to -0.0040

Negative

Superfly 100 2013

Both

-0.0023 to -0.0028

Both

HiFi 2010

Both

-0.00056 to -0.0049

Negative

Rumblefish 2010

Both

-0.00028 to -0.0038

Negative

Rumblefish 2012

Both

-0.00046 to -0.0038

Negative

Slash 2012

68

Roscoe 2009/10
Roscoe 2012

Positive

0.00073 to -0.0019

Both

Both

-0.0012 to -0.0023

Negative

Of the accused products, therefore, only the 2010 Roscoe meets the limitations as
construed.22 The EX 8-9.9 2010, EX 2013, Top Fuel 8 2010, Session 2012, Session 88
2911, Lush 2012, Remedy 2010, Scratch 2010, Scratch Air 2010, Slash 2012, Superfly 100
2010, Superfly 100 2013, HiFi 2010, Rumblefish 2010, Rumblefish 2012 and Roscoe 2012
all include negative, positive and zero slopes within the first and/or last thirds of the
leverage ratio curve of the suspension system. Of those remaining, the EX 2010, EX 5
2010, EX 7 2010, EX 4 2013, Session 2010 and Lush 2013 29 all fail to include a “change
in slope value” in the middle third of the leverage ratio curve.
The Leverage Ratio Curve Element also appears in every allegedly infringed claim of
the „301 patent. Split Pivot‟s only argument regarding those claims was dependent on this
court adopting its construction of that element. Since the court has in fact adopted Trek‟s
construction, none of the accused Trek products can literally infringe the „301 patent as a
matter of law, with the possible exception of the 2010 Roscoe.

Thus, subject to that

exception, Trek is entitled to summary judgment on these grounds as well.23

22

Trek appears to have conceded that the 2010 Roscoe contains the Leverage Ratio Curve
Element under the court‟s (and its own) construction. The court is not clear as to why this
is, given that the chart lists the Roscoe 2009/10 as having both a positive and negative slope
in the final third of the leverage ratio curve, which would necessitate a zero slope when the
curve changes from positive to negative or negative to positive. The court will, however,
defer to the parties on this question.
23
Split Pivot does not argue that the Trek products have the leverage ratio curve element
under the doctrine of equivalents.
69

IV. Invalidity and Willful Infringement
Patents are presumed to be valid. 35 U.S.C. § 282. Invalidity of the patent or any
claim in suit may, however, be raised as a defense in an action involving patent
infringement. Id. “[A] moving party seeking to invalidate a patent at summary judgment
must submit such clear and convincing evidence of facts underlying invalidity that no
reasonable jury could find otherwise.” TriMed, Inc. v. Stryker Corp., 608 F.3d 1333, 1340
(Fed. Cir. 2010); see also Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 2251 (2011)
(reaffirming the “clear and convincing” standard of proof”).
Trek has moved for summary judgment on the basis of invalidity for various claims
of the „212 patent based on insufficient written description, pursuant to 35 U.S.C. § 112.
Trek also argues that the asserted claims of the „301 patent are invalid as anticipated by
Trek‟s own 2008 Trek Fuel EX under 35 U.S.C. § 102.

The Court of Appeals for the

Federal Circuit has held that a district court has the discretion to dismiss invalidity
counterclaims upon a grant of summary judgment of non-infringement. Phonometrics, Inc. v.
Northern Telecom Inc., 133 F.3d 1459, 1468 (Fed. Cir. 1998); Cardinal Chemical Co. v. Morton
Int’l, Inc., 508 U.S. 83, 95 (1993) (in addressing motion for declaratory judgment district
court has discretion to decide whether to exercise jurisdiction even when established).
Exercising this discretion is particularly appropriate when non-infringement is clear and
invalidity is not plainly evident. Phonometrics, Inc., 133 F.3d at 1468 (citing Leesona Corp. v.
United States, 530 F.2d 896, 906 n.9 (Ct. Cl. 1976)).
Here, the court has found as a matter of law that Trek has not infringed any of the
asserted claims of the „212 and „301 patents.

Accordingly, the court will exercise its

discretion to dismiss Trek‟s invalidity counterclaims without prejudice at this time.
70

Finally, Trek also seeks summary judgment as to Split Pivot‟s claim of willful
infringement.

Under 35 U.S.C. § 284, a court may increase the damages assessed for

infringement by “up to three times the amount found or assessed.” Though the statute
itself does not provide any standard for awarding such enhanced damages, the Federal
Circuit has held that “an award of enhanced damages requires a showing of willful
infringement.” In re Seagate Tech., LLC, 497 F.3d 1360, 1368 (Fed. Cir. 2007). To establish
willful infringement, “a patentee must show by clear and convincing evidence that the
infringer acted despite an objectively high likelihood that its actions constituted
infringement of a valid patent.”

Id. at 1371.

Since willful infringement requires an

underlying finding of infringement, Trek is also entitled to summary judgment on Split
Pivot‟s claim of willful infringement.
Accordingly,
ORDER
IT IS ORDERED that:
1) plaintiff Split Pivot‟s motion for summary judgment of infringement (dkt. #113)
is DENIED;
2) defendant Trek‟s motion for summary judgment of non-infringement and no
willful infringement (dkt. #124) is GRANTED;
3) defendant Trek‟s motion for summary judgment of invalidation (dkt. #124) is
DENIED and Trek‟s invalidity counterclaims are DISMISSED without prejudice;
and

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4) the parties‟ stipulation for dismissal of counts 3 and 4 of the first amended
complaint (dkt. #199) is GRANTED and the clerk of court shall enter judgment
as set forth above and close the case.
Entered this 13th day of December, 2013.
BY THE COURT:
/s/
________________________________________
WILLIAM M. CONLEY
District Judge

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