`
` Paper 6
`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 IPR2016-01827
`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
`
`

`

`Case IPR2016-01827
`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 60–63 and 69 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 5 (“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 4, 2. The ’951 patent is also the
`subject of PTAB proceeding IPR2016-01786. Pet. 1; Paper 4, 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 4, 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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`Case IPR2016-01827
`Patent 9,045,951 B2
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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 IPR2016-01827
`Patent 9,045,951 B2
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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 claim 60 is an independent claim. Ex. 1001, 32:22–33:3.
`Challenged claims 61–63 and 69 depend directly or indirectly from claim
`60. Id. at 33:4–66, 34:55–65.
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`Case IPR2016-01827
`Patent 9,045,951 B2
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`Claim 60, reproduced below, is illustrative:
`
`60. An end fitting for a fiber composite 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;
`the wedge system comprising an outer wedge portion
`formed in the interior proximate the open end, the outer wedge
`portion configured to distribute compressive force in the sucker
`rod proximate the open end, the outer wedge portion in cross-
`section having
`a
`respective outer wedge
`triangular
`configuration,
`the outer wedge
`triangular configuration
`comprising an outer leading edge extending between the open
`end and an outer trailing edge, the outer leading edge
`intersecting the outer trailing edge at a respective outer vertex
`characterized by a respective outer vertex angle, the outer
`wedge triangular configuration comprising an imaginary outer
`triangle base opposite the outer vertex, the outer wedge
`triangular configuration determining distribution by the outer
`wedge portion of compressive force in the sucker rod proximate
`the open end;
`the wedge system comprising an inner wedge portion
`formed in the interior proximate the closed end, the inner
`wedge portion configured to distribute compressive force in the
`sucker rod proximate the closed end, the inner wedge portion in
`cross-section having a respective inner wedge triangular
`configuration,
`the
`inner wedge
`triangular configuration
`comprising an inner leading edge extending between the closed
`end and an inner trailing edge, the inner leading edge
`intersecting the inner trailing edge at a respective inner vertex
`characterized by a respective inner vertex angle, the inner
`wedge triangular configuration comprising an imaginary inner
`triangle base opposite the inner vertex, the inner wedge
`triangular configuration determining distribution by the inner
`wedge portion of compressive force in the sucker rod proximate
`the closed end; and
`the inner wedge triangular configuration differing from
`the outer wedge triangular configuration to bias distribution of
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`Case IPR2016-01827
`Patent 9,045,951 B2
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`compressive force in the sucker rod at the end fitting during
`use, the outer wedge triangular configuration confining the
`outer wedge portion to distribute relatively less compressive
`force in the sucker rod proximate the open end than distributed
`by the inner wedge portion in the sucker rod proximate the
`closed end, the inner wedge geometric configuration confining
`the
`inner wedge portion
`to distribute
`relatively more
`compressive force in the sucker rod proximate the closed end
`than distributed by the outer wedge portion in the sucker rod
`proximate the open end.
`Ex. 1001, 32:22–33:3; see also Pet. 12–13.
`D. Prior Art Relied Upon
`Petitioner relies upon the following prior art references. Pet. 2–3.
`
`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)
`
`
`E. Asserted Ground of Unpatentability
`Petitioner asserts the following ground of unpatentability. Pet. 2–3.
`References
`Basis
`Challenged Claims
`Rutledge ’431, Iwasaki, and
`§ 103(a)
`60–63 and 69
`McKay
`
`
`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
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`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`Petitioner proposes constructions for the phrases “determining
`distribution . . . of compressive force,” “to bias distribution of compressive
`force,” and “confining . . . to distribute.” Pet. 14–19. Patent Owner
`disagrees with Petitioner’s constructions and proposes its own. Prelim.
`Resp. 14–23.
`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 60–63 and 69 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Rutledge ’431, Iwasaki, and McKay.
`Pet. 19. 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 19–53.
`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 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.
`23–54.
`We have reviewed the parties’ contentions and supporting evidence.
`Given the evidence of record, we determine that the information presented in
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`1 383 U.S. 1 (1966).
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`the Petition fails to establish a reasonable likelihood that challenged claims
`60–63 and 69 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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`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. 19–21.
`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. 23–28.
`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 independent
`claim 60 (termed 60.1, 60.2, and 60.3 in the Petition),2 the Petition contends
`that each of “the Rutledge ’431, Iwasaki, and McKay patents disclose end
`fittings” as claimed. Pet. 21–22. From this contention, it is unclear which
`prior art reference Petitioner relies upon to teach these limitations, or
`whether Petitioner relies upon an unarticulated combination of the prior art
`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 22–
`26 (similarly treating limitations IW1, OW1, OW3, IW3, OW6, IW6, IW4,
`OW4, OW5, and IW5).
`With respect to the limitations of independent claim 60 drawn to the
`distribution of compressive force (termed OW2, OW7, IW2, and IW7), the
`Petition again presents imprecise contentions. The Petition contends that “a
`POSITA would understand that the outer and inner wedge portion
`necessarily receive and ‘distribute’ compressive force” and, therefore, “as
`soon as Rutledge ’431, Iwasaki, and McKay’s end fittings are used as part of
`a sucker rod string, their inner and outer wedge portions will begin to
`distribute compressive forces . . . as required by claim 60.” Pet. 28–29.
`Thus, according to Petitioner, “the Rutledge ’431, Iwasaki, and McKay
`patents disclose that the shape of a wedge (which is made up of its leading
`and trailing edge lengths, and angle between them) necessarily ‘determines’
`or impacts a distribution of force by contributing to the distribution of forces
`acting on that wedge.” Id. at 30–31 (emphases added). On this record, it is
`
`
`2 See Pet. 12–13 (charting independent claim 60 and assigning designators to
`each claim limitation, e.g., “60.1,” “IW1,” “OW1,” etc.).
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`again unclear which prior art reference Petitioner relies upon to teach these
`limitations, or whether Petitioner relies upon an unarticulated combination
`of the prior art references. Petitioner does not explain why it cites all three
`references, and does not explain if their teachings are equivalent,
`duplicative, or meant to address a feature missing in another reference. See
`also id. at 31–33 (similarly treating limitation 60.6).
`Finally, with respect to the limitations of independent claim 60 drawn
`to the relative distribution of force in different wedges (termed 60.7 and
`60.8), the Petition again presents imprecise contentions. First, the Petition
`contends that each of “the Rutledge ’431, Iwasaki, and McKay patents . . .
`would necessarily ‘confine’ the respective wedge to distribute an amount of
`force” such that “the natural result of [these] end fitting designs [would]
`satisfy” these limitations. Pet. 34–36 (emphasis added). The Petition then
`states, however, 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 36–37 (emphasis
`added). On this record, it is unclear whether Petitioner contends that these
`limitations would have been obvious (id. at 36–37) or are disclosed
`inherently by the prior art (id. at 34–36), 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. 23–25, 28. Merely identifying where limitations may be found in
`several prior art references is not sufficient to demonstrate a reasonable
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`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 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. 24–25.
`Accordingly, we do not institute an inter partes review on this ground.
`III. CONCLUSION
`For the foregoing reasons, we conclude that there is not a reasonable
`
`likelihood that Petitioner would prevail in showing that claims 60–63 and 69
`of the ’951 patent are unpatentable.
`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 IPR2016-01827
`Patent 9,045,951 B2
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`PETITIONER:
`
`Dion Bregman
`dion.bregman@morganlewis.com
`
`Jason White
`jason.white@morganlewis.com
`
`Ryan McBeth
`ryan.mcbeth@morganlewis.com
`
`Nicholas Restauri
`nicholas.restauri@morganlewis.com
`
`Nicholaus Floyd
`nicholaus.floyd@morganlewis.com
`
`
`
`PATENT OWNER:
`
`John Holman
`jholman@matthewsfirm.com
`
`Joshua Shamburger
`jshamburger@matthewsfirm.com
`
`
`
`
`
`