`
` Paper 7
`Entered: January 31, 2017
`
`
`
`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 IPR2016-01786
`Patent 9,045,951 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
`
`
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`Case IPR2016-01786
`Patent 9,045,951 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 4, 6–8, 14, 15, 17, 21, 22, 35, 47, 50, 52, 57,
`59, and 65–68 of U.S. Patent No. 9,045,951 B2 (Ex. 1001, “the ’951
`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 ’951 patent.
`
`A. Related Matter
`According to the parties, the ’951 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; Paper 5, 2. The ’951 patent is also the
`subject of PTAB proceeding IPR2016-01827. Pet. 1; Paper 5, 3.
`The ’951 patent claims benefit to issued U.S. Patent No. 8,851,162
`B2, which was the subject of PTAB proceeding IPR2016-00521
`(terminated). Pet. 1 (misstating proceeding number); Paper 5, 2–3.
`B. The ’951 Patent
`The ’951 patent relates to end fitting connectors for oil well sucker
`rods. Ex. 1001, 1:15–20. Specifically, the ’951 patent discloses that
`fiberglass sucker rods may be connected together with end fittings to form a
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`string that connects a down hole pump to an above-ground pump drive,
`which is used to extract oil from a well. Id. at 1:15–20, 25:7–35, Fig. 12.
`Figure 1 of the ’951 patent is reproduced below.
`
`
`Figure 1 depicts a cross-sectional view of a rod and associated end
`fitting. Id. at 6:4–6. End fitting 10 includes open end 16, for receiving
`sucker rod 32, and closed end 18. Id. at 6:66–7:2. The interior surface of
`the end fitting includes wedge system 13, having outer 20, intermediate 22,
`and inner 24 wedges. Id. at 7:5–7. Each wedge includes a leading edge
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`Case IPR2016-01786
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`(26A, 26B, 26C), a trailing edge (28A, 28B, 28C), and an angle between
`those edges (30A, 30B, 30C). Id. at 7:13–24.
`A securing material such as resin is provided between rod 32 and
`fitting 10, wherein the resin cures and forms wedge sections 29A, 29B, 29C
`that protrude from the rod and fixedly secure the rod in the fitting. Id. at
`7:7–12, 7:28–35. The ’951 patent explains that contact between the
`protruding wedges of resin and the leading or trailing edges of the fitting
`distributes tensile and axial compressive forces at each of the wedge
`portions. Id. at 7:43–54. Further,
`[t]he amount of each compressive force applied to each
`respective wedge portion can vary depending on the length of
`the leading edge, or trailing edge against which the protruding
`wedge of cured epoxy/resin material is urged by the axial force
`from reciprocation of the sucker rod string. The size of the
`angles influences the angle at which each of the edges extends
`relative to the corresponding protruding wedge of resin material
`and therefore also influences the force applied to each wedge
`portion.
`Id. at 7:54–64 (reference numerals omitted). The ’951 patent further
`explains that the lengths of the leading edges, trailing edges, and/or the size
`of the angles can be arranged to create a desired force distribution profile
`along the length of the end fitting, including to provide a profile in which
`compressive load at the outer wedge portion exceeds that at the inner wedge
`portion. Id. at 3:21–51.
`
`C. Illustrative Claim
`Challenged claims 4, 7, 14, and 21 are independent claims. Ex. 1001,
`27:5–52, 27:57–28:39, 28:62–29:27, 29:44–30:28. Challenged claims 6 and
`65 depend directly from claim 4. Id. at 27:55–56, 34:12–22. Challenged
`claims 8 and 66 depend directly from claim 7. Id. at 28:40–42, 34:23–33.
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`Challenged claims 15, 17, and 67 depend directly or indirectly from claim
`14. Id. at 29:28–32, 29:35–36, 34:34–44. Challenged claims 22, 35, 50, 52,
`57, 59, and 68 depend directly from claim 21. Id. at 30:29–31, 31:7–9,
`31:59–61, 31:65–67, 32:12–14, 32:18–20, 34:45–55.
`Claim 4, reproduced below, is illustrative:
`
`4.
`An end fitting for a sucker rod, the end fitting
`comprising:
`a body having an interior, a closed end, an open end, and
`a wedge system formed in the interior, wherein the wedge
`system comprises:
`an outer wedge portion formed in the interior
`proximate to the open end, wherein the outer wedge
`portion comprises a first leading edge, a first trailing
`edge, and a first angle between the first leading edge and
`the first trailing edge, wherein the first leading edge faces
`the open end and the first trailing edge faces the closed
`end, and wherein the length of the first leading edge, the
`length of the first trailing edge, and the size of the first
`angle define a first distribution of force in the outer
`wedge portion;
`an intermediate wedge portion formed in the
`interior between the outer wedge portion and the closed
`end, wherein the intermediate wedge portion comprises a
`second leading edge, a second trailing edge, and a second
`angle between the second leading edge and the second
`trailing edge, wherein the second leading edge faces the
`open end and the second trailing edge faces the closed
`end, and wherein the length of the second leading edge,
`the length of the second trailing edge, and the size of the
`second angle define a second distribution of force in the
`intermediate wedge portion; and
`an inner wedge portion formed in the interior
`between the intermediate wedge portion and the closed
`end, proximate to the closed end, wherein the inner
`wedge portion comprises a third leading edge, a third
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`trailing edge, and a third angle first angle between the
`third leading edge and the second third edge, wherein the
`third leading edge faces the open end and the third
`trailing edge faces the closed end, and wherein the length
`of the third leading edge, the length of the third trailing
`edge, and the size of the third angle define a third
`distribution of force in the inner wedge portion,
`wherein at least two of the first angle, the second
`angle, and the third angle differ in size such that during
`use a compressive load applied to the sucker rod at the
`inner wedge portion is greater than a compressive load
`applied to the sucker rod at the outer wedge portion, such
`that compressive forces applied to the sucker rod at the
`closed end of the body exceed compressive forces at the
`open end of the body, and
`wherein the second angle is equal to one of the
`first angle or the third angle.
`Ex. 1001, 27:5–52; see also Pet. 12–18.
`D. Prior Art Relied Upon
`Petitioner relies upon the following prior art references. Pet. 3.
`
`Rutledge ’431
`U.S. 6,193,431 B1
`Feb. 27, 2001
`(Ex. 1003)
`Iwasaki
`
`U.S. 4,822,201
`
`Apr. 18, 1989
`(Ex. 1007)
`McKay
`
`U.S. 4,401,396
`
`Aug. 30, 1983
`(Ex. 1012)
`Anderson
`
`U.S. 4,653,953
`
`Mar. 31, 1987
`(Ex. 1018)
`
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability. Pet. 3.
`References
`Basis
`Challenged Claims
`Rutledge ’431, Iwasaki, and
`§ 103(a)
`4, 6–8, 14, 15, 17, 21, 22, 35,
`McKay
`47, 52, 65–68
`Rutledge ’431, Iwasaki,
`50, 57, 59
`McKay, and Anderson
`
`
`§ 103(a)
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`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); Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under that standard, claim
`terms are generally given their ordinary and customary meaning as would be
`understood by a person 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 phrases “define a
`[first/second/third] distribution of force” and “such that.” Pet. 20–25.
`Patent Owner disagrees with Petitioner’s constructions and proposes its own.
`Prelim. Resp. 18–22.
`On the record before us, we need not construe explicitly these phrases
`in reaching our Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999).
`B. Asserted Ground of Obviousness
`over Rutledge ’431, Iwasaki, and McKay
`Petitioner contends that claims 4, 6–8, 14, 15, 17, 21, 22, 35, 47, 52,
`65–68 are unpatentable under 35 U.S.C. § 103(a) as obvious over Rutledge
`’431, Iwasaki, and McKay. Pet. 25. To support this contention, Petitioner
`explains how it believes the references disclose or suggest each claim
`limitation, and why one skilled in the art would have found it obvious to
`combine the references. Id. at 25–50. Petitioner also relies upon the
`Declaration of Gary R. Wooley (Ex. 1010, the “Wooley Declaration”) in
`support. Id. Patent Owner counters that Petitioner fails to satisfy its burden
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`of presenting a proper case of obviousness in accordance with Graham v.
`John Deere1 and, further, that the cited prior art fails to disclose or suggest
`all claim limitations. Prelim. Resp. 22–52.
`We have reviewed the parties’ contentions and supporting evidence.
`Given the evidence of record, we determine that the information presented in
`the Petition fails to establish a reasonable likelihood that challenged claims
`4, 6–8, 14, 15, 17, 21, 22, 35, 47, 52, 65–68 are unpatentable under 35
`U.S.C. § 103(a) over Rutledge ’431, Iwasaki, and McKay. We begin our
`analysis with the principles of law that generally apply to a ground based on
`obviousness, followed by a brief summary of the asserted prior art, and then
`we address the parties’ contentions.
`1.
`Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art; (3)
`the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham, 383 U.S. at 17–18. We analyze this ground
`based on obviousness in accordance with the above-stated principles.
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`1 383 U.S. 1 (1966).
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`2. Overview of Rutledge ’431 (Ex. 1003)
`Rutledge ’431 discloses a connector for connecting together fiberglass
`sucker rods. Ex. 1003, Abstract. Figure 25 is reproduced below.
`
`
`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.
`3. Overview of Iwasaki (Ex. 1007)
`Iwasaki discloses a coupling pin for connecting together sucker rods.
`Ex. 1007, 1:17–21, 2:14. Figure 1 is reproduced below.
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`Figure 1 presents a sectional view of coupling pin 12 with sucker rod
`10 inserted into the pin. Id. at 2:31–33, 2:51–53. As shown, coupling pin 12
`includes hole 14 with an inner wall having annular depressions 26, 28, 30.
`Id. at 2:49–54.
`4.
`Overview of McKay (Ex. 1012)
`McKay discloses a fitting for connecting together fiberglass sucker
`rods. Ex. 1012, Abstract. Figure 2 is reproduced below.
`
`
`Figure 2 presents a sectional view of a sucker rod and fitting. Id. at
`2:36–42. As shown, fitting 12 includes opening 15 for receiving sucker rod
`10, wherein the opening includes tapered pockets 23A, 23B, 23C, 23D. Id.
`at 2:49–64.
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`5. Discussion
`The Petition contends that the challenged claims would have been
`obvious over Rutledge ’431, Iwasaki, and McKay, and concludes that “[it]
`would have been obvious to a POSITA to employ the Rutledge ’431 Patent’s
`teachings with the teachings of Iwasaki and McKay given that each
`reference describes a potential means for addressing sucker rod fatigue by
`reducing stress concentrations within the wedge system.” Pet. 25–27.
`We have reviewed Petitioner’s contentions and, for the reasons that
`follow, are not satisfied that the Petition provides adequate explanation or is
`appropriately precise and specific in articulating the basis of the proposed
`ground to warrant institution of an inter partes review. See, e.g., Prelim.
`Resp. 22–28.
`The question of obviousness is resolved on the basis of underlying
`factual determinations set forth in Graham v. John Deere. Namely, the
`“scope and content of the prior art are to be determined; differences between
`the prior art and the claims at issue are to be ascertained; and the level of
`ordinary skill in the pertinent art resolved. Against this background, the
`obviousness or nonobviousness of the subject matter is determined.”
`Graham, 383 U.S. at 17–18; see supra Section II(B)(1). In this case, the
`Petition fails to identify sufficiently or precisely the differences between the
`prior art and claims, and fails even to identify the specific prior art teachings
`upon which Petitioner relies, preventing proper evaluation of this asserted
`ground of unpatentability.
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`For example, in treating the first three limitations of the independent
`claims (termed X.1, X.2, and X.3 in the Petition),2 the Petition contends that
`each of “[t]he Rutledge ’431, Iwasaki, and McKay patents teach end
`fittings” as claimed. Pet. 27–28. From this contention, it is unclear which
`reference Petitioner relies upon to teach these limitations, or whether
`Petitioner relies upon an unarticulated combination of the references.
`Petitioner does not explain why it cites all three references, and does not
`explain if the references’ teachings are equivalent, duplicative, or meant to
`address a feature missing in another reference. See also id. at 28–30
`(similarly treating limitations X.4a–c, X.5a–c, X.6a–c).
`With respect to the limitations of the independent claims drawn to
`wedge characteristics that “define a [first/second/third] distribution of force”
`(termed X.4d, X.5d, X.6d), the Petition again presents imprecise
`contentions. First, the Petition contends, “[t]hese limitations are obvious.”
`Id. at 30 (emphasis added). The Petition then states, however, that each of
`“the Rutledge ’431, Iwasaki, and McKay patents disclose that the shape of a
`wedge . . . necessarily ‘defines’ or impacts a distribution of force by
`contributing to the distribution of forces acting on that wedge. Accordingly,
`a POSITA would find that the Rutledge ’431, Iwasaki, and McKay patents
`disclose these limitations.” Id. at 31–33 (emphases added, citations
`omitted). On this record, it is unclear whether Petitioner contends that these
`limitations would have been obvious (id. at 30) or are disclosed inherently
`by the prior art (id. at 33), and by which references—Rutledge ’431,
`Iwasaki, McKay, or an unarticulated combination of the references.
`
`
`2 See Pet. 13–18 (charting independent claims 4, 7, 14, and 21 and assigning
`designators, e.g., “X.1,” to each claim limitation).
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`Finally, with respect to the limitations of the independent claims
`drawn to compressive loads applied to different wedges of the wedge system
`(termed X.7b, X.8), the Petition again presents imprecise contentions. First,
`the Petition contends, “these limitations are obvious.” Id. at 38 (emphasis
`added). The Petition then states, however, that each of “the Rutledge ’431,
`Iwasaki, and McKay [patents] disclose wedge systems” as claimed because,
`“[d]ue to the interior wedge’s proximity to the closed end . . . [it] naturally
`receives a greater amount of compressive forces,” such that “a POSITA
`would have found the natural result of the Rutledge ’431, Iwasaki, and
`McKay patents’ end fitting designs to satisfy the claims’ requirement.” Id.
`at 38–40 (emphases added, citations omitted). Finally, the Petition states
`that “[a] POSITA would have found it obvious that the wedge systems
`disclosed by the Iwasaki, McKay, and the Rutledge ’431 patents . . . results
`in greater compressive forces being applied to the interior wedges proximate
`the closed end of the end fitting.” Id. at 40. Again, on this record, it is
`unclear whether Petitioner contends that these limitations would have been
`obvious (id. at 38, 40) or are disclosed inherently by the prior art (id. at 38–
`40), and by which references—Rutledge ’431, Iwasaki, McKay, or an
`unarticulated combination of the references.
`On this record, it is impossible to decipher what Petitioner asserts to
`be its alleged combination because Petitioner fails to identify adequately the
`specific teachings of the references upon which Petitioner relies. See Prelim.
`Resp. 23, 27. Merely identifying where limitations may be found in several
`prior art references is not sufficient to demonstrate a reasonable likelihood of
`success in showing the obviousness of the claims, without articulating how
`and why specific teachings of the references would have been combined. It
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`is Petitioner’s responsibility “to explain specific evidence that support[s] its
`arguments, not the Board’s responsibility to search the record and piece
`together what may support Petitioner’s arguments.” Dominion Dealer
`Solutions, LLC v. Autoalert, Inc., Case IPR2013-00225, slip op. at 4 (PTAB
`Oct. 10, 2013) (Paper 15). Further, the lack of clarity in Petitioner’s
`presentation deprives Patent Owner of an appropriate opportunity to respond
`to the Petition, and does not lend itself to informed evaluation by the panel.
`See Prelim. Resp. 23.
`Accordingly, we do not institute an inter partes review on this ground.
`C. Asserted Ground of Obviousness
`over Rutledge ’431, Iwasaki, McKay, and Anderson
`Petitioner contends that dependent claims 50, 57, and 59 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Rutledge ’431,
`Iwasaki, McKay, and Anderson. Pet. 50–57. Petitioner’s reliance on
`Anderson to render obvious the limitations of dependent claims 50, 57, and
`59 does not cure the deficiencies noted above with respect to independent
`claim 21, from which these claims depend. Pet. 50–57. Therefore, for the
`same reasons discussed above, we determine that the information presented
`in the Petition fails to establish a reasonable likelihood that Petitioner would
`prevail in showing that dependent claims 50, 57, and 59 are unpatentable
`over Rutledge ’431, Iwasaki, McKay, and Anderson.
`III. CONCLUSION
`For the foregoing reasons, we conclude that there is not a reasonable
`
`likelihood that Petitioner would prevail in showing that claims 4, 6–8, 14,
`15, 17, 21, 22, 35, 47, 50, 52, 57, 59, and 65–68 of the ’951 patent are
`unpatentable.
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`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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`PETITIONER:
`
`Dion M. Bregman
`Jason C. White
`Ryan B. McBeth
`Nicholas A. Restauri
`Nicholaus E. Floyd
`MORGAN, LEWIS & BOCKIUS LLP
`dion.bregman@morganlewis.com
`jason.white@morganlewis.com
`ryan.mcbeth@morganlewis.com
`nicholas.restauri@morganlewis.com
`nicholaus.floyd@morganlewis.com
`
`PATENT OWNER:
`
`John D. Holman
`Josh Shamburger
`MATTHEWS, LAWSON, MCCUTCHEON & JOSEPH, PLLC
`jholman@matthewsfirm.com
`jshamburger@matthewsfirm.com
`
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