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.,
`
`Petitioners,
`
`v.
`
`FINALROD IP, LLC,
`Patent Owner.
`
`
`
`—————————————
`
`IPR2016-01827
`U.S. Patent No. 9,045,951
`Issued June 2, 2015
`
`—————————————
`
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-318 & 37 C.F.R. 42.100 et. seq.
`
`
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`
`

`
`Petition for Inter Partes Review
`of U.S. Patent No. 9,045,951
`
`Table of Contents
`
`
`I.  MANDATORY NOTICES (37 C.F.R. § 42.8) ................................................. 1 
`A.  Real Party-In Interest (37 C.F.R. § 42.8(b)(1) .............................................. 1 
`B.  Related Matters (37 C.F.R. § 42.8(b)(2)) ...................................................... 1 
`C.  Counsel & Service Information (37 C.F.R. §§ 42.8(b)(3)-(4)) ..................... 1 
`II.  CERTIFICATION AND FEES ......................................................................... 2 
`III.  IDENTIFICATION OF CHALLENGE (37 C.F.R. § 42.104(b)) & RELIEF
`REQUESTED (37 C.F.R. § 42.22(a)(1)) ................................................................... 2 
`IV.  BACKGROUND INFORMATION FOR THE ’951 PATENT ........................ 3 
`A. 
`Introduction ................................................................................................... 3 
`B.  Background of Field of Art ........................................................................... 4 
`C.  Overview of the ’951 Patent .......................................................................... 8 
`D.  Prosecution History of the ’951 Patent ......................................................... 9 
`V.  THE CLAIMS OF THE ’951 PATENT ARE UNPATENTABLE ................ 11 
`A.  Relevant Field of Art and Level of Ordinary Skill ..................................... 11 
`B. 
`Independent Claims Listing ........................................................................ 11 
`C.  Claim Constructions .................................................................................... 14 
`(a)  “define a [first/second/third] distribution of force” (claims 4, 7, 14, and
`21) & “determining distribution … of compressive force” (Claims 60 and 63)
`
`14 
`(b)  “such that” (Claims 4, 7, 14-15, 21) ....... Error! Bookmark not defined. 
`(c)  “to bias distribution of compressive force” (Claims 60-63) .................... 16 
`(d)  “confining … to distribute” (Claims 60-63) ........................................... 17 
`D.  Ground 1: Claims 4, 6-8, 14-15, 17, 21-22, 35, 47, 52, 60-63, and 65-69
`are unpatentable under 35 U.S.C. §103 as obvious over the Rutledge ’431 Patent
`in view of Iwasaki & McKay ............................................................................... 19 
`(a)  Overview of Rutledge ’431, Iwasaki, and McKay Patents ...................... 19 
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,045,951
`(b)  Reasons and Motivation to Combine ....................................................... 20 
`(c)  Independent Claims 4, 7, 14, and 21 ........................................................ 21 
`(d)  Claims 6 and 52 ....................................... Error! Bookmark not defined. 
`(e)  Claims 8 and 35 ....................................... Error! Bookmark not defined. 
`(f)  Claims 15 and 22 ..................................... Error! Bookmark not defined. 
`(g)  Claim 17 .................................................. Error! Bookmark not defined. 
`(h)  Independent Claims 60 ............................ Error! Bookmark not defined. 
`(i)  Claims 61 and 62 ...................................................................................... 37 
`(j)  Claim 63 ................................................................................................... 41 
`(k)  Claims 65-69............................................................................................. 52 
`E.  Ground 2: Claims 50, 57, and 59 are unpatentable under 35 U.S.C. §103 as
`obvious over the Rutledge ’431, Iwasaki, and McKay Patents further in view of
`Anderson ............................................................. Error! Bookmark not defined. 
`(a)  Reasons and Motivation to Combine ...... Error! Bookmark not defined. 
`(b)  Claim 50 .................................................. Error! Bookmark not defined. 
`(c)  Claim 57 .................................................. Error! Bookmark not defined. 
`(d)  Claim 59 .................................................. Error! Bookmark not defined. 
`VI.  CONCLUSION ................................................................................................ 53 
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,045,951
`
`EXHIBIT LIST
`
`Case No. IPR2014-01827
`U.S. Patent No. 9,045,951 (“’951 Patent”)
`U.S. Patent No. 9,045,951 File History
`U.S. Patent No. 6,193,431 (“Rutledge ’431 Patent”)
`U.S. Patent No. 4,475,839 (“Strandberg”)
`U.S. Patent No. 4,662,774 (“Morrow”)
`U.S. Patent No. 8,113,277 (“Rutledge ’277 Patent”)
`U.S. Patent No. 4,822,201 (“Iwasaki”)
`U.S. Patent No. 4,919,560 (“Rutledge ’560 Patent”)
`U.S. Patent No. 5,253,946 (“Watkins”)
`Declaration of Gary R. Wooley
`Side-by-Side Comparison of the ’951 Patent claims
`U.S. Patent No. 4,401,396 (“McKay”)
`U.S. Reissue Patent No. RE32,865 (“Rutledge ’865 Patent”)
`U.S. Patent No. 7,730,938 (“Rutledge ’938 Patent”)
`Edward L. Hoffman, Finite Element Analysis of Sucker Rod
`Couplings with Guidelines for Improving Fatigue Life, Sandia
`National Laboratories, (Jul. 11, 1997) (“Hoffman Article”).
`U.S. Patent No. 8,062,463 (“Rutledge ’463 Patent”)
`U.S. Patent No. 6,886,484 (“Thomas”)
`U.S. Patent No. 4,653,953 (“Anderson”)
`Printout of Fiberod History from “https://superod.com/about-us/”
`Press Release for Smith’s purchase of Fiberod (March 19, 2008)
`Asset Purchase Agreement Between Smiths and Fiberod (March
`2008)
`Intellectual Property Disclosure Schedule from Asset Purchase
`Agreement
`U.S. Patent No. 8,851,162 (“Rutledge ’162 Patent”)
`U.S. Patent No. 9,181,757 (“Rutledge ’757 Patent”)
`Case No. 7:15-cv-00097 (W.D. Tex.), September 15, 2015, First
`Amended Complaint
`
`Exhibit
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`
`1016
`1017
`1018
`1019
`1020
`1021
`
`1022
`
`1023
`1024
`1025
`
`
`
`
`
`
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`iii
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`

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`Petition for Inter Partes Review
`of U.S. Patent No. 9,045,951
`Petitioners, John Crane, Inc., John Crane Production Solutions, Inc., and
`
`John Crane Group Corp. (“John Crane”), respectfully request Inter Partes Review
`
`(“IPR”) of claims 60-63 and 69 (“Challenged Claims”) of U.S. Patent No.
`
`9,045,951 (“the ’951 Patent”, Exhibit 1001), believed to be currently assigned to
`
`Finalrod IP, LLC (“Finalrod” or “Patent Owner”).1
`
`I. MANDATORY NOTICES (37 C.F.R. § 42.8)
`A. Real Party-In Interest (37 C.F.R. § 42.8(b)(1)
`Petitioners, John Crane, Inc., John Crane Production Solutions, Inc., and
`
`John Crane Group Corp., are the real parties-in-interest.
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`The ’951 Patent is also currently the subject of the following litigations:
`
`Finalrod IP, LLC, et al. v. John Crane, Inc., et al., Case No. 7-15-cv-00097 (W.D.
`
`Tex. 2015). Petitioners are filing an additional IPR of claims 4, 6-8, 14-15, 17, 21-
`
`22, 35, 50, 52, 57, 59, and 65-68 concurrently herewith as IPR2016-01786. The
`
`’951 Patent is a continuation-in-part of U.S. Patent No. 8,851,162 (the “’162
`
`Patent”), which was the subject of IPR2016-00232 (terminated).
`
`C. Counsel & Service Information (37 C.F.R. §§ 42.8(b)(3)-(4))
`Lead Counsel: Dion M. Bregman (Reg. No. 45,645); Back-Up Counsel:
`
`1 While no assignment data has been recorded at the U.S.P.T.O., Finalrod
`
`represented in District Court that it is the owner of the ’951 Patent. See
`
`Exhibit 1025, ¶ 13.
`
`
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`1
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`

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`Petition for Inter Partes Review
`of U.S. Patent No. 9,045,951
`Jason C. White (Reg. No. 42,223), Ryan B. McBeth (Reg. No. 69,817), Nicholas
`
`A. Restauri (Reg. No. 71,783), and Nicholaus E. Floyd (Reg. No. 74,438).
`
`Service Information: Service of any documents may be made at Morgan,
`
`Lewis & Bockius LLP, 1400 Page Mill Road, Palo Alto, CA, 94304 (Telephone:
`
`650.843.4000; Fax: 650.843.4001).
`
`Petitioners
`
`consents
`
`to
`
`e-mail
`
`service
`
`at:
`
`JohnCrane-
`
`FinalrodIPRs@morganlewis.com.
`
`II. CERTIFICATION AND FEES
`Petitioners certify that the ’951 Patent is available for IPR and that
`
`Petitioners are neither barred nor estopped from requesting this IPR on the grounds
`
`identified herein.
`
`Petitioners authorize the USPTO to charge Deposit Account No. 50-0310
`
`(Order No. 015304-21-5001) for the fees set in 37 C.F.R. § 42.15(b) for this
`
`Petition, and further authorizes payment for any additional fees to be charged to
`
`this Deposit Account.
`
`III.
`
`IDENTIFICATION OF CHALLENGE (37 C.F.R. § 42.104(b)) &
`RELIEF REQUESTED (37 C.F.R. § 42.22(a)(1))
`
`Petitioners ask the Board to find the Challenged Claims unpatentable based
`
`on the following grounds:
`
`Ground 1: Claims 60-63 and 69 are unpatentable under 35 U.S.C. §103 as
`
`obvious over U.S. Patent No. 6,193,431 (“Rutledge ’431 Patent”; Ex. 1003) in
`
`
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`2
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,045,951
`view of U.S. Patent No. 4,822,201 (“Iwasaki”; Ex. 1007) and further in view of
`
`U.S. Patent No. 4,401,396 (“McKay”; Ex. 1012).
`
`The ’951 Patent (Ex. 1001) was filed on December 18, 2013. The ’951
`
`Patent is a continuation-in-part of U.S. Patent No. 9,181,757 (Ex. 1024), filed on
`
`Feb. 17, 2012, which is a continuation-in-part of U.S. Patent No. 8,851,162 (“’162
`
`Patent”; Ex. 1023), filed August 9, 2011. However, the ’951 Patent specification is
`
`distinct from those of the earlier two patents, the ’951 Patent’s Application Data
`
`Sheet acknowledges that the ’951 Patent contains claims that are not entitled to a
`
`priority earlier than December 18, 2013, and the application was examined under
`
`the AIA. Ex. 1002, at 6, 125. Even so, prior art Exhibits 1003-09 and 1011-18
`
`indisputably qualify as prior art as each reference issued or was published more
`
`than a year prior the earliest possible priority date of August 9, 2011.
`
`IV. BACKGROUND INFORMATION FOR THE ’951 PATENT
`A.
`Introduction
`In 2008, Petitioners, John Crane, acquired The Fiber Composite Company,
`
`Inc. (“Fiberod”), a company formed by one of the ’951 Patent inventors, Russ
`
`Rutledge. See Exs. 1019, 1021. As part of this acquisition, Petitioners purchased
`
`several Rutledge patents from Fiberod, including, among others, the prior art
`
`Rutledge ’431 Patent (Ex. 1003), Rutledge ’277 Patent (Ex. 1007), Rutledge ’865
`
`Patent (Ex. 1013), Rutledge ’938 Patent (Ex. 1014), and Rutledge ’463 Patent (Ex.
`
`1016) (“the prior Rutledge patents”). See Ex. 1020; Ex; 1021; Ex. 1022. Under
`
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,045,951
`the purchase agreement, Mr. Rutledge agreed not to compete with John Crane for
`
`three years, i.e., until 2011. See Ex. 1021. On August 9, 2011, shortly after the
`
`expiration of the agreement, Mr. Rutledge filed a U.S. patent application which
`
`ultimately issued into the ’162 Patent (Ex. 1023), the parent of the ’951 Patent
`
`challenged by this Petition. Ex. 1001.
`
`On June 29, 2015, Finalrod, Mr. Rutledge’s new company, sued John Crane
`
`in W.D. Texas alleging infringement of the ’162 Patent. On September 15, 2015,
`
`Finalrod added the ’951 Patent to the lawsuit. As set forth in detail herein, the
`
`’951 Patents claim a device having similar features as disclosed by the prior
`
`Rutledge patents that Mr. Rutledge sold to John Crane in 2008.
`
`B.
`Background of Field of Art
`A sucker rod pump is an oil extracting
`
`device that operates to bring below-ground oil to
`
`the earth’s surface. See Ex. 1015, at 9, Figure 1
`
`(shown below with coloring added). Generally,
`
`in order to recover oil from deep oil wellbores, a
`
`bore is drilled into the ground and a casing and
`
`tubing (yellow) is inserted into the bore. A
`
`reciprocating pump, such as a horse head pump
`
`(green), is used to actuate the pump to recover
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,045,951
`oil from the reservoir. A sucker rod (blue) is connected to the reciprocating pump
`
`at one end and is connected at its end to a travelling valve that reciprocates within
`
`a standing valve that is secured within the wellbore. “Typically, a series of sucker
`
`rods are connected end to end to form a sucker rod string, which extends from the
`
`pump drive....” Ex 1006, 1:61 – 2:17.
`
`
`
`The ’951 Patent is directed to an end fitting designed to be used in
`
`connection with oil sucker rod strings. Ex. 1001, Abstract. End fittings, such as
`
`those claimed by the ’951 Patent, are commonly used in the oil industry to connect
`
`two fiberglass sucker rods to each other end-to-end in order to form a string of
`
`sucker rods that may be used for oil extraction. Ex. 1010, ¶¶ 13-16; Ex. 1001, Fig.
`
`1. Given that the string of sucker rods can, at times, exceed a thousand feet in
`
`length, a well-known and common understanding in the industry is that end fittings
`
`must withstand “mechanical forces acting on the rod/adhesive/metal interface…
`
`compressive forces, such as during a stroke of the pump either up or down, and
`
`negative load forces.” Ex. 1006, 7:51-54 (emphasis added throughout unless
`
`otherwise noted); see also Ex. 1010, ¶¶ 13-18.
`
`For decades, the industry standard has been to use fiberglass sucker rods to
`
`reduce the weight associated with traditional steel sucker rods. Ex. 1008, 1:21-24;
`
`Ex. 1010, ¶¶ 16-18. However, one problem to be solved is that “[f]iberglass is just
`
`difficult to grab a hold of and hold securely and it is very important that the
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`Petition for Inter Partes Review
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`structure have such integrity as to substantially eliminate fiberglass rod-to-end
`
`fitting parting....” Ex. 1012, 1:51-54. In addition, it was well-understood that
`
`“[d]amaging stress concentrations in the area of rod entry into a fitting and within
`
`the rod end fittings must be minimized....” Id. at 1:56-58; see also Ex. 1010, ¶¶
`
`18-35 (providing overview of force concentrations encountered during use). It was
`
`also well recognized that “any attempt to minimize the destructive forces leading
`
`to catastrophic failure must be focused on the fiberglass/adhesive/metal
`
`interface,” i.e., the wedge system formed in the end fitting interior. Ex. 1003,
`
`4:42-44.
`
`One of the earliest concepts for “gripping” a sucker rod while still
`
`minimizing stress concentrations was to use a wedge design, wherein wedge-
`
`shaped gaps (yellow in the portion of Figure
`
`25 of Ex. 1003 shown above) are formed
`
`between the inner wall of the steel end fitting
`
`(blue) and the fiberglass sucker rod (green).
`
`Ex. 1003, Fig. 25 (references omitted and
`
`coloring added). The wedges are filled with an
`
`epoxy, such that when the epoxy hardens, “the
`
`angle of the taper of the respective pockets []
`
`relieve stress on the epoxy ... filling space
`
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`Petition for Inter Partes Review
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`between the rod 11 and each fitting 12.” Ex. 1012, 2:63 – 3:1; Ex. 1010, ¶¶ 36-43.
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`Thus, it was well-known in the industry that parameters defining the geometric
`
`shape of the wedges, such as the angle at which the leading and trailing edges of
`
`each wedge taper, the overall wedge length, and the geometry of the wedge cross-
`
`section, as well as many other features of the wedge, can all be varied to affect the
`
`distribution of forces on each wedge-shaped portion. See Ex. 1012, at 3:1-14
`
`(describing embodiments having various angles of taper); Ex. 1010, ¶¶ 38-43
`
`(collecting background art).
`
`Accordingly, a principal motive in wedge design is to vary these wedge
`
`parameters in order to manipulate the distribution of compressive stress to avoid
`
`spiking of compressive stresses at any one location, which can lead to premature
`
`failure. See Ex. 1010, ¶¶ 40-43 (describing that it was general knowledge to a
`
`person of ordinary skill in the art at the time of the invention (“POSITA”) to
`
`modify various wedge design features to distribute compressive forces). A
`
`POSITA would have been aware of these general design considerations and the
`
`common types of problems that must be addressed in any end fitting design that
`
`utilizes wedges. See Ex. 1010, ¶¶ 36-39 (discussing problems to address during
`
`sucker rod use, including “decrease the severity of the stress concentrations”), ¶¶
`
`40-43 (discussing factors that lead to stress concentration), ¶¶ 44-46 (discussing
`
`the naturally uneven distribution of forces on a wedge system), ¶¶ 47-49
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,045,951
`(discussing well-known principles of wedge design to alter wedge shape and direct
`
`forces).
`
`C. Overview of the ’951 Patent
`The ’951 Patent issued as a continuation-in-part from the earlier ’162 Patent.
`
`
`
`Ex. 1023. The ’162 and ’951 Patents are two of about a dozen patent applications
`
`relating to end fittings and wedge designs filed by members of the Rutledge family
`
`over the last 30 years. The ’951 Patent is directed to a wedge design for sucker rod
`
`end fittings. Ex. 1001, Abstract. As discussed below, the ’951 Patent claims
`
`combinations of well-known and obvious design patterns that were previously
`
`disclosed in the prior Rutledge patents, as well as other end fitting prior art. Ex.
`
`1010, ¶¶ 36-49.
`
`
`
`The independent claims of the ’951 Patent each recite a wedge system
`
`formed in the interior surface of a sucker rod end fitting. As explained in further
`
`detail below, the independent claims recite that the force distribution on the inner
`
`wedge is greater than that on any intermediate wedge, which is in turn greater on
`
`any outer wedge – i.e., the forces on the wedges progressively increase towards the
`
`closed end of the end fitting (similar to the “force differential” limitation of the
`
`’162 Patent). Each independent claim recites one or more design parameters that
`
`help give the wedges their “triangular configuration,” including combinations of
`
`(1) leading edge length, (2) trailing edge length, and/or (3) the size of the angle
`
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,045,951
`formed between the two edges (shown on the two annotated portions of Ex. 1001,
`
`Fig. 10 below).
`
`
`
`The dependent claims all recite certain relationships between edge lengths and
`
`angle sizes chosen from the various possible permutations of how these three
`
`parameters can relate to each other (e.g., claim 4 reciting two angles having same
`
`size and one being different). The ’951 Patent doesn’t describe any benefit
`
`associated with each recited permutation, and in fact, different dependent claims
`
`recite opposite configurations from each other.
`
`D.
`Prosecution History of the ’951 Patent
`The ’951 Patent was filed on December 18, 2013, over 34 years after Mr.
`
`
`
`Rutledge’s first application (Ex. 1013) that related to end fittings. Ex. 1002, at 1.
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,045,951
`In the first non-final Office Action, the Examiner rejected the majority of the
`
`claims as being anticipated and obvious over the Morrow reference (Ex. 1005).
`
`Ex. 1002, at 126. In rejecting the claims, the Examiner stated that Morrow (Ex.
`
`1005, 2:20-39) disclosed all of the limitations of the independent claims, including
`
`the recited force distributions on each wedge and forces that were greater toward
`
`the end fitting’s closed end. Ex. 1002, at 126-28.
`
`The Examiner also indicated that claims 2, 4 - 7, 10 - 21, 24, 25, 27 - 32, 34,
`
`36 - 37, 40 - 57, 59 - 64, 66 - 77, 15 - 21 and 88 - 91 were allowable. Ex. 1002, at
`
`130. No reason(s) for allowance were provided, but each of the allowed claims
`
`recited a specific relationship between two or more edges and/or two or more
`
`angles within the wedge system.
`
`
`
`Subsequently, independent claim 4 was allowed after adding the limitations
`
`that “at least two” of the angles differ in size and that the second angle is equal to
`
`either the first or the third angle. Independent claim 14 was allowed after adding
`
`the limitation that the first trailing edge length and second trailing edge length
`
`differ. Independent claim 21 was allowed after adding the limitation that at least
`
`two of the trailing edge lengths vary. See Ex. 1002, at 151-67. Independent claims
`
`7 and 60 were allowed without any amendments.
`
`
`
`Thus, the claims were allowed after the particular relationships between the
`
`leading edges and/or angles were added to the independent claims. As explained
`
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`Petition for Inter Partes Review
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`below, these relationships were simple design choices chosen from a known
`
`limited set of possible configurations and do not make the claims patentable.
`
`There was nothing novel about each of these configurations at the time of the
`
`purported invention, and in fact, the allowed claims recite many configurations that
`
`are directly opposite to each other and none of these configurations change the
`
`force distribution profiles recited by the independent claims (i.e., the inner
`
`wedge receives the most compressive force regardless of the recited configurations
`
`of edges and/or angles).
`
`V. THE CLAIMS OF THE ’951 PATENT ARE UNPATENTABLE
`A. Relevant Field of Art and Level of Ordinary Skill
`The ’951 Patent is directed to wedge designs for sucker rod end fittings. The
`
`relevant field of art therefore relates to the end fitting designs for sucker rods. See
`
`Ex. 1010, ¶¶ 74-75. One of ordinary skill in the art for the ’951 Patent would have
`
`had at least 4 years of educational training in Mechanical Engineering or other
`
`similar fields, such as Civil Engineering or Petroleum Engineering, or equivalent
`
`field experience, plus at least two years’ experience in the design, development,
`
`and use of sucker rods and end fittings. Ex. 1010, ¶¶ 76-78.
`
`B.
`Independent Claims Listing
`The Rutledge ’951 Patent has six independent claims, all directed to end
`
`fitting designs for sucker rods. Independent claims 1, 4, 7, 14, and 21 are
`
`addressed in a petition being filed concurrently herewith in IPR2016-01786. As
`
`
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,045,951
`explained in that petition, claims 1, 4, 7, 14, and 21 all recite a forming a “wedge
`
`system” in the interior end of the end fitting having either two “wedge portions”
`
`(claim 14) or three “wedge portions” (claims 1, 4, 7, and 21) formed in the end
`
`fitting’s interior wall. Claim 60 recites similar to structure as claims 1, 4, 7, 14,
`
`and 21 but uses different language than was used in the other claims, as shown
`
`below:
`
`Claim 60 Claim Listing
`
`Section
`#
`V.D.(c).1 [60.1] An end fitting for a fiber composite sucker rod, the end fitting
`comprising:
`V.D.(c).1 [60.2] a body having an interior, a closed end, an open end, and
`V.D.(c).1 [60.3] a wedge system formed in the interior;
`V.D.(c).2
`[60.4]the wedge system comprising [OW1] an outer wedge portion
`& 3 & 4
`formed in the interior proximate the open end,
`[OW2] the outer wedge portion configured to distribute
`compressive force in the sucker rod proximate the open end,
`[OW3] the outer wedge portion in cross-section having a
`respective outer wedge triangular configuration,
`[OW4]
`the outer wedge
`triangular configuration
`comprising an outer leading edge extending between the open
`end and an outer trailing edge,
`[OW5] the outer leading edge intersecting the outer
`trailing edge at a respective outer vertex characterized by a
`respective outer vertex angle,
`[OW6]
`triangular configuration
`the outer wedge
`comprising an imaginary outer triangle base opposite the outer
`vertex,
`[OW7]
`triangular configuration
`the outer wedge
`determining distribution by
`the outer wedge portion of
`compressive force in the sucker rod proximate the open end;
`[60.5] the wedge system comprising [IW1] an inner wedge portion
`formed in the interior proximate the closed end,
`
`V.D.(c).2
`& 3
`
`
`
`
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,045,951
`[IW2] the inner wedge portion configured to distribute
`compressive force in the sucker rod proximate the closed end,
`[IW3] the inner wedge portion in cross-section having a
`respective inner wedge triangular configuration,
`[IW4]
`configuration
`the
`inner wedge
`triangular
`comprising an inner leading edge extending between the closed
`end and an inner trailing edge,
`[IW5] the inner leading edge intersecting the inner trailing
`edge at a respective inner vertex characterized by a respective
`inner vertex angle,
`[IW6]
`configuration
`triangular
`inner wedge
`the
`comprising an imaginary inner triangle base opposite the inner
`vertex,
`[IW7]
`configuration
`triangular
`inner wedge
`the
`inner wedge portion of
`determining distribution by
`the
`compressive force in the sucker rod proximate the closed end;
`V.D.(c).5 [60.6] and the inner wedge triangular configuration differing from the
`outer wedge
`triangular configuration
`to bias distribution of
`compressive force in the sucker rod at the end fitting during use,
`V.D.(c).6 [60.7] 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,
`V.D.(c).6 [60.8] 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.
`As can be seen with reference to the above claim listing, claim 60 recites a
`
`2-wedge system comprising an “outer wedge portion” (element [60.4]) and an
`
`“inner wedge portion” (element [60.5]). Claim 60 recites that the “inner” and
`
`“outer” wedge portions “distribute compressive force.” Claim 60 also recites that
`
`the “cross-section” of the wedge shaped portion is triangular and made up of a
`
`leading edge, trailing edge, a “vertex angle” between the two edges, and an
`
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,045,951
`“imaginary” triangle base opposite the vertex. Whereas claims 1, 4, 7, 14, and 21
`
`recite that the wedges “define” distributions of force, claim 60 recites that the
`
`triangle configuration of the wedges “determin[es] distribution” by the wedge “of
`
`compressive force in the sucker rod proximate” the wedge’s location.
`
`C. Claim Constructions
`Claims are given their broadest reasonable interpretation (“BRI”) in light of
`
`the specification. Petitioner proposes the following constructions for this IPR and
`
`reserves the right to argue alternative constructions in other forums.
`
`(a)
`
`“determining distribution … of compressive force” (Claims
`60 and 63)
`As discussed above, claims 60 and 63 recite that the wedges’ “triangular
`
`configuration” “determin[es] distribution…of compressive force” by the respective
`
`wedge portion. Ex. 1010, ¶¶ 84-88. Based on the disclosure of the ’951 Patent, a
`
`POSITA would understand that the BRI of these terms is that the shapes of the
`
`wedges “impact the distribution of forces.”
`
`The ’951 patent states that certain edge lengths and angle sizes can be varied
`
`to affect the “‘force distribution profile’ of the end fitting with respect to the resin
`
`material and, ultimately, with respect to the rod segment installed therein.” Ex.
`
`1001, 3:33-38. However, the ’951 patent specification does not provide guidance
`
`on how the particular lengths of the edges or size of the angles are actually chosen
`
`to “define” or “determine” a desired distribution of force, other than to parrot the
`
`
`
`
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,045,951
`claim language. See, e.g., id., 3:7-20. Moreover, the ’951 patent states that the
`
`“lengths of the respective leading edges of the outer, intermediate and inner wedge
`
`portions can, of themselves, provide the end fitting with a force distribution
`
`profile....” Ex. 1001, 3:33-44. However, the ’951 patent also describes that the
`
`angles and/or edges can be “sized and/or arranged in a configuration that,
`
`considered alone, does not provide such a force distribution,” but that the other
`
`edges and angles are “sized and/or arranged in respective configurations ... to
`
`provide or contribute to the desired force distribution profile of the end fitting.”
`
`Id., 3:44-51. The ’951 patent does not describe which angle/edge
`
`configurations fall under either scenario. Thus, the ’951 patent is equivocal
`
`whether the recited angle/edge configurations themselves provide a distribution
`
`profile or simply “contribute to the desired force distribution profile.” Id., 3:44-51.
`
`A POSITA would understand that the actual forces acting on a particular
`
`wedge will depend upon several factors, including the complex interaction between
`
`axial, radial, and circumferential forces encountered during use. Ex. 1010, ¶¶ 86-
`
`87. The lengths of the edges and the sizes of the angle (which make up the
`
`“triangular configuration” of the wedge) will necessarily contribute to force
`
`distribution on a particular wedge, but they do not alone determine the distribution
`
`of force on that wedge, as, for example, the force distribution is also dependent on
`
`other factors, such as material properties of the end fitting and epoxy used to form
`
`
`
`
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,045,951
`the wedges, pressure and temperature, the forces and stresses being placed on the
`
`end fitting by the reciprocating pump, friction with the surrounding oil, etc. Ex.
`
`1010, ¶¶ 86-88.
`
`Thus, the BRI of this term is “impact the distribution of forces.”
`
`(b)
`“to bias distribution of compressive force” (Claims 60-63)
`Limitation [60.6] recites that “the inner wedge triangular configuration
`
`differing from the outer wedge triangular configuration to bias distribution of
`
`compressive force in the sucker rod at the end fitting during use.” Claims 61 and
`
`62 repeat this identical limitation and claim 63 contains similar limitation of
`
`“intermediate wedge triangular configuration differing from the inner wedge
`
`triangular configuration to bias distribution of compressive force in the sucker rod
`
`at the end fitting during use.” Based on the disclosure of the ’951 Patent, a
`
`POSITA would understand that the BRI of “to bias distribution of compressive
`
`force” to be that the respective wedge triangular configuration “impacts
`
`distribution of compressive force.”
`
`“Bias” refers generally to deviating from some initial point of reference. Ex.
`
`1010, ¶¶ 95-97. The claims do not provide guidance on how the respective wedge
`
`configurations “differ” to “bias” distribution of compressive forces. For example,
`
`the claims and specification provide no guidance on whether a particular wedge
`
`configuration is “biasing” to cause a positive or negative deviation from the
`
`
`
`
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,045,951
`starting compressive forces. Ex. 1010, ¶¶ 96. The ’951 patent specification is
`
`silent on this issue and parrots the claim language. See Ex. 1001, 21:9-14, 21:24-
`
`28, 21:38-42, 22:6-9. Thus, to the extent these claims are capable of construction,
`
`a POSITA would understand that they are not limited to any particular type of
`
`biasing. Ex. 1010, ¶¶ 95-97. Accordingly, a POSITA would find the BRI of these
`
`terms to be that the respective wedge triangular configuration “impacts distribution
`
`of compressive force.” Ex. 1010, ¶¶ 97.
`
`(c)
`“confining … to distribute” (Claims 60-63)
`Claim 60 recites that “the outer wedge triangular configuration confining
`
`the outer wedge portion to distribute relatively less compressive force … than
`
`distributed by the inner wedge portion,” and the “inner wedge geometric
`
`configuration confining the inner wedge portion to distribute relatively more
`
`compressive force … than distributed by the outer wedge portion.” Claim 61
`
`contains similar limitations but remove the word “relatively.” Claim 63 recites
`
`similar