Paper 7
`Entered: June 7, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JOHN CRANE, INC.,
`JOHN CRANE PRODUCTION SOLUTIONS, INC. &
`JOHN CRANE GROUP CORP.,
`Petitioner,
`
`v.
`
`FINALROD IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00521
`Patent 8,851,162 B2
`____________
`
`Before SALLY C. MEDLEY, LYNNE E. PETTIGREW, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`Entered: June 7, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JOHN CRANE, INC.,
`JOHN CRANE PRODUCTION SOLUTIONS, INC. &
`JOHN CRANE GROUP CORP.,
`Petitioner,
`
`v.
`
`FINALROD IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00521
`Patent 8,851,162 B2
`____________
`
`Before SALLY C. MEDLEY, LYNNE E. PETTIGREW, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`Case IPR2016-00521
`Patent 8,851,162 B2
`
`
`I. INTRODUCTION
`John Crane, Inc., John Crane Production Solutions, Inc., and John
`Crane Group Corp. (collectively, “Petitioner”), filed a Petition requesting an
`inter partes review of claims 1–40 of U.S. Patent No. 8,851,162 B2
`(Ex. 1001, “the ’162 patent”). Paper 2 (“Pet.”). In response, Patent Owner,
`Finalrod IP, LLC, filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314, which provides that an inter
`partes review may not be instituted “unless . . . the information presented in
`the petition . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.”
`For the reasons set forth below, we deny institution of an inter partes
`review of the ’162 patent.
`
`A. Related Matter
`According to Petitioner, the ’162 patent is involved in the following
`lawsuit: Finalrod IP, LLC v. John Crane, Inc., et al., Case No. 7-15-cv-
`00097 (W.D. Tex. 2015). Pet. 1.
`B. The ’162 Patent
`The ’162 patent relates to connectors for oil well sucker rods.
`Ex. 1001, 1:5–8. Specifically, the ’162 patent discloses that fiberglass or
`fiber composite rods 200 may be connected together with end fittings 100, to
`form a string 24 of connected sucker rods 10. See id. at 2:33–44, 2:49–58,
`Fig. 1. Sucker rod string 24 conveys pumping action from above-ground
`pumping unit 20 to downhole pump 26, to extract oil from a well. Id. at
`1:63–2:3, 2:33–37, Fig. 1.
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`Case IPR2016-00521
`Patent 8,851,162 B2
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`
`Figure 2 of the ’162 patent is reproduced below.
`
`
`Figure 2 depicts a cross-sectional view of a rod and associated end fitting.
`Id. at 1:21–22. End fitting 100 includes interior surface 108, which
`comprises wedge system 110. Id. at 2:58–60. Wedge system 110 defines
`cavity 112 having, for example, three wedge-shaped portions 114A–114C.
`Id. at 2:60–66. The ’162 patent discloses that “[e]ach wedged-shaped
`portion 114 has an apex 116, a leading edge 118 and a trailing edge 120
`extending from the apex 116. Each apex 116 forms a perimeter 122 within
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`Case IPR2016-00521
`Patent 8,851,162 B2
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`the cavity 112 that is the narrowest part of the cavity 112 associated with
`each wedge shaped portion 114.” Id. at 2:66–3:4; see also id. at 7:19–25.
`
`The ’162 patent discloses that this arrangement of wedge-shaped
`portions creates a “force differential” and “force transfer continuum” that
`ensures “constant effectiveness between the end fitting 100 and the fiber
`composite rod 200.” Id. at 3:8–41.
`
`C. Illustrative Claim
`Claims 1, 11, 20, and 31 are independent claims. Claims 2–10 depend
`directly or indirectly from claim 1; claims 12–19 depend directly or
`indirectly from claim 11; claims 21–30 depend directly or indirectly from
`claim 20; and claims 32–40 depend directly or indirectly from claim 31.
`Claim 1, reproduced below, is illustrative:
`
`1.
`An end fitting for a sucker rod comprising:
`an exterior surface, a closed end, an open end, and an
`interior surface,
`the interior surface comprising a wedge system defining
`a cavity, wherein the wedge system comprises three wedge
`shaped portions having an apex, a leading edge and a trailing
`edge, each apex forming a perimeter of equal dimension within
`the cavity that is the narrowest part of the cavity associated with
`each wedge shaped portion such that the leading edge is longer
`than the trailing edge with the leading edge facing the open end
`and the trailing edge facing the closed end with respect to each
`wedge shaped portion,
`wherein the leading edge is shorter at the closed end and
`increases progressively from the closed end to the open end
`thereby compensating for a compression of the sucker rod in
`the end fitting, the trailing edge is shorter at the closed end and
`increases progressively from the closed end to the open end
`thereby compensating for a back pressure associated with the
`sucker rod in the end fitting,
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`Case IPR2016-00521
`Patent 8,851,162 B2
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`
`wherein the first wedge shaped portion is proximate to
`the closed end and receives compressive forces that are greater
`than the compressive forces which the second wedge shaped
`portion receives, and wherein the second wedge shaped portion
`receives compressive
`forces
`that are greater
`than
`the
`compressive forces which the third wedge shaped portion
`receives, such that the compressive forces create a force
`differential along the wedge system greater at the closed end of
`the fitting and decreasing toward the open end of the fitting.
`Ex. 1001, 8:33–63; see also Pet. 21–22 (“[C]laim 1 is representative
`of all elements of the independent claims other than elements [31.4]
`and [31.5].”).
`
`D. Prior Art Relied Upon
`Petitioner relies upon the following prior art references:
`
`Rutledge ’431
`US 6,193,431 B1
`
`Feb. 27, 2001
`Strandberg
`
`US 4,475,839
`
`Oct. 9, 1984
`Morrow
`
`US 4,662,774
`
`May 5, 1987
`Iwasaki
`
`US 4,822,201
`
`Apr. 18, 1989
`Rutledge ’560
`US 4,919,560
`
`Apr. 24, 1990
`
`
`(Ex. 1003)
`(Ex. 1004)
`(Ex. 1005)
`(Ex. 1007)
`(Ex. 1008)
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`References
`Basis
`Challenged Claim(s)
`Rutledge ’431 and Strandberg § 103(a)
`1, 6–11, 16–20, 25–28, 30, and
`31
`
`2–5, 12–15, 21–24, 32–38
`
`§ 103(a)
`
`§ 103(a)
`
`29 and 39
`
`5
`
`Rutledge ’431, Strandberg,
`and Morrow
`
`Rutledge ’431, Strandberg,
`and Iwasaki
`
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`Case IPR2016-00521
`Patent 8,851,162 B2
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`Rutledge ’431, Strandberg,
`and Rutledge ’560
`
`
`
`
`§ 103(a)
`
`40
`
`II. ANALYSIS
`A. Claim Interpretation
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); see In re Cuozzo Speed
`Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted sub
`nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890 (2016) (mem.).
`Under the broadest reasonable interpretation standard, claim terms are given
`their ordinary and customary meaning as would be understood by one of
`ordinary skill in the art in the context of the entire disclosure. In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Petitioner proposes constructions for “the compressive forces create a
`force differential along the wedge system greater at the closed end of the
`fitting and decreasing toward the open end of the fitting” and “the maximum
`thickness is substantially constant and the minimum thickness is
`substantially constant.” Pet. 13–16. Patent Owner disagrees with
`Petitioner’s constructions, proposes its own constructions, and also proposes
`constructions for “apex” and “an angle associated with the apex between the
`leading edge and the trailing edge.” Prelim. Resp. 11–20.
`On the record before us, we need not construe explicitly these terms
`and phrases in reaching our Decision. See Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Accordingly, we provide
`the terms and phrases their ordinary and customary meaning as understood
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`Case IPR2016-00521
`Patent 8,851,162 B2
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`by a person of ordinary skill in the art in light of the ’162 patent
`Specification.
`
`B. Asserted Grounds of Obviousness
`over Rutledge ’431 and Strandberg
`Petitioner contends that claims 1, 6–11, 16–20, 25–28, 30, and 31 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Rutledge ’431 and
`Strandberg. Pet. 4. Petitioner contends also that dependent claims 2–5, 12–
`15, 21–24, 29 and 32–40 are unpatentable under 35 U.S.C. § 103(a) as
`obvious over Rutledge ’431 and Strandberg, in further combination with
`Morrow, Iwasaki, or Rutledge ’560. Id. To support these contentions,
`Petitioner provides explanations and claim charts specifying how claim
`limitations are disclosed or suggested purportedly in the references and why
`one skilled in the art would have found it obvious to combine the references.
`Id. at 17–60. Petitioner also cites the Declaration of Gary R. Wooley
`(Ex. 1010) in support. Id. Patent Owner challenges Petitioner’s contentions.
`Prelim. Resp. 21–60.
`For the reasons that follow, we determine that the information
`presented in the Petition fails to establish a reasonable likelihood that any of
`the challenged claims are unpatentable under 35 U.S.C. § 103(a) over
`Rutledge ’431 and Strandberg, together or in further combination with other
`cited prior art references.
`
`1. Rutledge ’431
`Rutledge ’431 discloses a connector for connecting together fiberglass
`sucker rods. Ex. 1003, Abstract. Figure 25 is reproduced below.
`
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`Case IPR2016-00521
`Patent 8,851,162 B2
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`Figure 25 presents a cross-sectional view of a sucker rod and connector. Id.
`at 7:39–40, 44–46. As shown, connector 10 includes axial receptacle 12 for
`receiving sucker rod 14, wherein the receptacle includes a plurality of
`wedge-shaped annuluses 24, 26. Id. at 7:48–55.
`2. Strandberg
`Strandberg discloses a fitting for connecting together fiberglass sucker
`rods. Ex. 1004, Abstract, 2:45–46. Figure 2 is reproduced below.
`
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`Case IPR2016-00521
`Patent 8,851,162 B2
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`Figure 2 presents a side view of a fitting. Id. at 2:40–41. As shown, fitting 5
`includes central bore 15 for receiving a sucker rod, wherein central bore 15
`comprises various sections 17, 19, 21, 23, 25, 27, 29, 31 of various
`diameters D, which together define bore 15. Id. at 3:11–60.
`3. The Challenged Claims
`a. Claims 1, 6–11, 16–20, 25–28, 30, and 31
`Independent claims 1, 11, 20, and 31 each recite, in substantially
`similar language, that:
`the wedge system comprises three wedge shaped portions
`having an apex, a leading edge and a trailing edge, each apex
`forming a perimeter of equal dimension within the cavity that is
`the narrowest part of the cavity associated with each wedge
`shaped portion such that the leading edge is longer than the
`trailing edge with the leading edge facing the open end and the
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`Case IPR2016-00521
`Patent 8,851,162 B2
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`trailing edge facing the closed end with respect to each wedge
`shaped portion.
`Ex. 1001, 8:37–45 (emphasis added); see also id. at 9:38–46, 10:37–48,
`11:43–54. In other words, each independent claim requires that, for each
`wedge-shaped portion, the perimeter formed by that portion’s apex impacts
`the lengths of the leading edge and the trailing edge, such that the leading
`edge is longer than the trailing edge. Id. at 8:39–43 (“. . . each apex forming
`a perimeter . . . that is the narrowest part of the cavity associated with each
`wedge shaped portion such that the leading edge is longer than the trailing
`edge . . . .”) (emphasis added).
`Petitioner contends that Rutledge ’431 discloses a wedge system
`comprising at least two wedges 24, 26. Pet. 26. Regarding the claimed
`leading edges and trailing edges, Petitioner provides a colored and annotated
`version of Figure 25 of Rutledge ’431, which is reproduced below.
`
`
`Id. at 26. These annotations identify the claimed leading edges as elements
`15, 17 and identify the claimed trailing edges as elements 16, 18. Id. at 26–
`
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`Patent 8,851,162 B2
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`27; see also id. at 22–23. Petitioner contends that a person of ordinary skill
`in the art “would understand Figure 25 to confirm that the Rutledge ’431
`Patent’s leading edges are longer than the trailing edges.” Id. at 27 (citing
`Ex. 1010 ¶ 107).
`Regarding the claimed apexes, Petitioner contends that a person of
`ordinary skill in the art “would understand the Rutledge ’431 Patent’s
`description to form ‘similar’ wave-shaped ‘transition surfaces’ between the
`wedges [24, 26] to disclose apexes of equal dimension.” Pet. 27 (citing
`Ex. 1003, 5:46–55;1 Ex. 1010 ¶ 109) (emphasis omitted). Petitioner also
`contends that “Strandberg discloses a similar wedge design where all three
`wedges have ‘the same inner diameter D at [their] narrowest part.’” Id.
`(citing Ex. 1004, 3:17–44); see also id. at 22–23.
`The Petition includes the following colored and annotated figure:
`
`
`Id. at 28. This figure compares Figure 2 of the ’162 patent with Figure 25 of
`Rutledge ’431 and Figure 2 of Strandberg. The figure’s annotations identify
`the apexes in Rutledge ’431 and Strandberg as the topmost parts of each
`wedge-shaped portion, i.e., located between adjacent wedge-shaped portions
`and located at the narrowest points on the wedge systems. Id. at 27–28; see
`
`1 The Petition cites Ex. 1004, which appears to be in error. Pet. 27.
`11
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`Case IPR2016-00521
`Patent 8,851,162 B2
`
`also id. at 52–53 (“[T]he ‘apex’ in each of these claims is the ‘narrowest’
`part of the cavity, between two wedge shaped portions.”). Petitioner
`contends that a person of ordinary skill in the art “would find the
`combination of the Rutledge ’431 and Strandberg patents to disclose ‘each
`apex forming a perimeter of equal dimension within the cavity that is the
`narrowest part of the cavity associated with each wedge shaped portion.’”
`Id. at 28 (citing Ex. 1010 ¶¶ 109–112).
`Although the Petition identifies prior art elements that correspond
`purportedly to the claimed apexes, leading edges, and trailing edges, the
`Petition does not address whether these elements are arranged as required by
`the claims. Specifically, the Petition does not address the claim language
`requiring that, for each wedge-shaped portion, “each apex form[s] a
`perimeter . . . that is the narrowest part of the cavity associated with each
`wedge shaped portion such that the leading edge is longer than the trailing
`edge.” See, e.g., Ex. 1001, 8:39–43 (emphasis added). It is not sufficient to
`merely identify where these structures are shown purportedly in the prior art.
`The claimed relationship between the structures must be shown also.
`The Petition does not show sufficiently that the apexes taught by the
`combination of Rutledge ’431 and Strandberg form perimeters that impact
`the lengths of the leading and trailing edges such that the leading edge is
`longer than the trailing edge. Rather, the Petition contends that each apex is
`located at the topmost part of a wedge-shaped portion, e.g., between adjacent
`wedge-shaped portions, and does not show sufficiently that an apex at this
`location forms a perimeter such that the leading edge is longer than the
`trailing edge. Therefore, the Petition fails to establish a reasonable
`
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`Case IPR2016-00521
`Patent 8,851,162 B2
`
`likelihood that the prior art renders obvious this aspect of claims 1, 11, 20,
`and 31.
`
`For these reasons, we determine that the information presented in the
`Petition fails to establish a reasonable likelihood that it would prevail in
`showing that independent claims 1, 11, 20, and 31 are unpatentable over
`Rutledge ’431 and Strandberg. Likewise, and for the same reasons, we
`determine that the information presented in the Petition fails to establish a
`reasonable likelihood that it would prevail in showing that dependent claims
`6–10, 16–19, 25–28, and 30 are unpatentable over Rutledge ’431 and
`Strandberg.
`
`b. Claims 2–5, 12–15, 21–24, 29, and 32–40
`Petitioner does not contend that Morrow, Iwasaki, or Rutledge ’560
`cures the deficiencies noted above with respect to independent claims 1, 11,
`20, and 31. Pet. 47–60. Therefore, for the same reasons discussed above
`with respect to those claims, we determine that the information presented in
`the Petition fails to establish a reasonable likelihood that it would prevail in
`showing that dependent claims 2–5, 12–15, 21–24, 29, and 32–40 are
`unpatentable over Rutledge ’431 and Strandberg, in further combination
`with Morrow, Iwasaki, or Rutledge ’560.
`III. CONCLUSION
`For the foregoing reasons, we conclude that there is not a reasonable
`
`likelihood that Petitioner would prevail in showing that claims 1–40 of
`the ’162 patent are unpatentable.
`
`13
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`Case IPR2016-00521
`Patent 8,851,162 B2
`
`
`IV. ORDER
`Upon consideration of the record before us, it is:
`ORDERED that the Petition is denied as to all challenged claims, and
`no trial is instituted.
`
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`Case IPR2016-00521
`Patent 8,851,162 B2
`
`PETITIONER:
`
`Dion M. Bregman
`Jason C. White
`Ryan B. McBeth
`Nicholas A. Restauri
`Matthew C. Lee
`Nicholaus E. Floyd
`MORGAN LEWIS & BOCKIUS LLP
`dbregman@morganlewis.com
`jwhite@morganlewis.com
`rmcbeth@morganlewis.com
`nicholas.restauri@morganlewis.com
`matthew.lee@morganlewis.com
`nfloyd@morganlewis.com
`
`
`
`PATENT OWNER:
`
`John D. Holman
`Josh Shamburger
`Holly Barnes
`MATTHEWS, LAWSON, MCCUTCHEON & JOSEPH, PLLC
`jholman@matthewsfirm.com
`jshamburger@matthewsfirm.com
`hbarnes@matthewsfirm.com
`
`
`
`15
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