Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 13
`Date: February 10, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LEE SPECIALTIES, INC.,
`Petitioner,
`
`v.
`
`FHE USA LLC,
`Patent Owner.
`
`____________
`
`IPR2019-01366
`Patent 10,030,461 B2
`____________
`
`
`
`
`Before JAMES A. TARTAL, MICHAEL L. WOODS, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`O’HANLON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 13
`Date: February 10, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LEE SPECIALTIES, INC.,
`Petitioner,
`
`v.
`
`FHE USA LLC,
`Patent Owner.
`
`____________
`
`IPR2019-01366
`Patent 10,030,461 B2
`____________
`
`
`
`
`Before JAMES A. TARTAL, MICHAEL L. WOODS, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`O’HANLON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`IPR2019-01366
`Patent 10,030,461 B2
`
`
`I. INTRODUCTION
`
`A. Background
`Lee Specialties, Inc. (“Petitioner”) filed a Petition for inter partes
`
`review of claims 1–3, 5–8, and 10 (“the challenged claims”) of U.S. Patent
`No. 10,030,461 B2 (Ex. 1001, “the ’461 patent”). Paper 2 (“Pet.”), 1. FHE
`USA LLC (“Patent Owner”) filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”).
`
`On November 21, 2019, we held a conference call with the parties
`during which we authorized the parties to submit additional papers regarding
`the district court litigation involving the ’461 patent. See generally Paper 7.
`Petitioner subsequently filed a Reply to Patent Owner’s Preliminary
`Response (Paper 8, “Pet. Reply”), and Patent Owner filed a Sur-Reply to
`Petitioner’s Reply to Patent Owner’s Preliminary Response (Paper 9,
`“PO Sur-Reply”).
`
`Institution of an inter partes review is authorized by statute only when
`“the information presented in the petition . . . and any response . . . 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.” 35 U.S.C.
`§ 314(a) (2018). For the reasons set forth below, upon considering the
`Petition, Preliminary Response, and evidence of record, we conclude the
`information presented shows there is a reasonable likelihood that Petitioner
`would prevail in establishing the unpatentability of a least one of the
`challenged claims.
`
`2
`
`
`
`IPR2019-01366
`Patent 10,030,461 B2
`
`
`B. Real Parties-in-Interest
`The statute governing inter partes review proceedings sets forth
`
`certain requirements for a petition for inter partes review, including that “the
`petition identif[y] all real parties in interest.” 35 U.S.C. § 312(a)(2) (2018);
`see also 37 C.F.R. § 42.8(b)(1) (2019) (requiring identification of real
`parties-in-interest in mandatory notices). Each party asserts that it is the sole
`real party-in-interest. Pet. 4; Paper 4, 1.
`
`C. Related Matters
`The parties indicate that the ’461 patent is the subject of the following
`
`litigation:
`FHE USA LLC v. Express Supply & Rental LLC, No. 6-18-cv-
`00913 (W.D. La. filed July 12, 2018) (“the Louisiana
`litigation”), and
`FHE USA LLC v. Lee Specialties Inc., No. 5-18-cv-00715
`(W.D. Tex. filed July 12, 2018) (“the Texas litigation”).
`Pet. 4; Paper 4, 1.
`
`D. The Challenged Patent
`The ’461 patent discloses pressure control apparatus for use at a
`
`wellhead. Ex. 1001, 1:28–37. Figures 23A and 23B illustrate a wedge seal
`design of the pressure control apparatus and are reproduced below:
`
`3
`
`
`
`IPR2019-01366
`Patent 10,030,461 B2
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Figures 23A and 23B are partial section views of a lower end of a first
`wedge seal embodiment in an unlocked position and a locked position,
`respectively. Id. at 10:6–8. Wedge seal assembly 800 includes adapter 850,
`lower wedge 840, and lower wedge receptacle 845. Id. at 21:17–34. The
`wedge seal assembly is used to create a high pressure seal between the
`adapter and receptacle 860. Id. at 20:63–21:11; see also id. at 13:8–30
`(discussing the high pressure seal).
`
`In use, a first end of the adapter is connected to pressure control
`equipment and the second end of the adapter is lowered into engagement
`with the receptacle. Ex. 1001, 11:21–27, 21:18–19, 22:40–43. Hydraulic
`fluid under pressure is introduced into chamber 831, causing the lower
`
`4
`
`
`
`IPR2019-01366
`Patent 10,030,461 B2
`
`wedge receptacle to move upward. Id. at 21:24–29, Fig. 23B. This upward
`movement of the lower wedge receptacle in turn causes the lower wedge to
`move radially inward, compressing the adapter and the receptacle together.
`Id. at 21:29–32. Lower wedge top rib 843 locks over lower adapter rib 852,
`and lower wedge bottom rib 844 locks into wedge groove 865 provided in
`the receptacle. Id. at 21:32–34. A high pressure seal is formed between the
`adapter and receptacle. Id. at 13:8–30, 22:46–50.
`
`The adapter is separated from the receptacle by introducing
`pressurized hydraulic fluid into chamber 833, causing the lower wedge
`receptacle to move downward. Ex. 1001, 21:35–47, Fig. 23A. This
`downward movement of the lower wedge receptacle releases the lower
`wedge from engagement with the adapter, releasing the high pressure seal.
`Id. at 21:47–52, Figs. 23A, 24 (illustrating lower wedge separator
`springs 841).
`
`In a second embodiment of the wedge seal, movement of the lower
`wedge receptacle is effected via hydraulically-actuated pistons. Ex. 1001,
`25:11–15, 25:26–30, Figs. 27A, 27B.
`
`E. The Challenged Claims
`Petitioner challenges claims 1–3, 5–8, and 10 of the ’461 patent.
`
`Pet. 1, 21. Claims 1 and 6 are independent. Claim 1 is illustrative of the
`challenged claims and is reproduced below:1
`1.
`A pressure-retaining seal, comprising:
`
`a generally t[u]bular adapter having first and second
`adapter ends, the first adapter end configured to mate with
`
`1 The parties agree that “tabular” in the second line of claim 1 should be
`interpreted as “tubular.” See Ex. 1017, 1.
`
`5
`
`
`
`IPR2019-01366
`Patent 10,030,461 B2
`
`
`pressure-retaining equipment, the second adapter end providing
`an external adapter rib, the adapter rib providing an adapter
`sloped surface formed thereon;
`
`a generally tubular pressure seal assembly having first
`and second assembly ends and a longitudinal centerline, the
`centerline defining (a) an axial direction parallel to the
`centerline and (b) radial directions perpendicular to the
`centerline;
`
`the first assembly end providing a seal receptacle for
`receiving the second adapter end, the second adapter end and
`the seal receptacle further each providing cooperating abutment
`surfaces, the cooperating abutment surfaces forming a pressure
`seal between the second adapter end and the seal receptacle
`when the second adapter end is received into the seal
`receptacle; and
`
`a wedge assembly, the wedge assembly configured to
`engage both the second adapter end and the first assembly end
`when the second adapter end is received into the seal
`receptacle, the wedge assembly including at least one wedge
`surface for engagement with the adapter sloped surface;
`
`wherein, when the second adapter end is received into the
`seal receptacle, constriction of the wedge assembly towards the
`centerline engages the at least one wedge surface onto the
`adapter sloped surface so as to restrain the adapter from axial
`displacement relative to the seal receptacle.
`Ex. 1001, 29:5–35.
`
`
`
`F. Asserted Grounds of Unpatentability
`The Petition relies on the following prior art references:
`Name
`Reference
`Ahlstone
`US 3,096,999, issued July 9, 1963
`McGuire
`US 7,159,652 B2, issued Jan. 9, 2007
`Baugh
`US 8,272,444 B2, issued Sept. 25, 2012
`API 16A
`Specification for Drill-through Equipment,
`ANSI/API Specification 16A (3rd ed., 2004)
`
`Exhibit
`1005
`1006
`1007
`1009
`
`6
`
`
`
`IPR2019-01366
`Patent 10,030,461 B2
`
`
`
`Petitioner asserts the following grounds of unpatentability:
`Claims Challenged
`35 U.S.C. §
`References
`1, 2, 6, 7
`1032
`Ahlstone, McGuire
`2, 3, 7, 8
`103
`Ahlstone, McGuire, Baugh
`5, 10
`103
`Ahlstone, McGuire, API 16A
`
`Pet. 21. Petitioner submits a declaration of Benton Frederick Baugh, Ph.D.,
`P.E. (Ex. 1003, “the Baugh Declaration”) in support of its contentions.
`
`II. DISCRETIONARY DENIAL
`Institution of an inter partes review is discretionary. 35 U.S.C.
`
`§ 314(a) (2018); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2140 (2016) (“[T]he agency’s decision to deny a petition is a matter
`committed to the Patent Office’s discretion.”). “[T]he PTO is permitted, but
`never compelled, to institute an IPR proceeding.” Harmonic Inc. v. Avid
`Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016).
`
`Patent Owner argues that we should exercise our discretion under
`§ 314(a) to deny institution based on the Texas and Louisiana litigations.
`Prelim. Resp. 2–12. Patent Owner argues that Petitioner asserted each of
`Ahlstone, McGuire, Baugh, and API 16A in the Texas litigation. Id. at 6–8.
`Patent Owner argues that both the Texas and Louisiana litigations are in
`their late stages. Id. at 9–11. Patent Owner argues that Petitioner has
`
`
`2 The ’461 patent was filed on February 22, 2018, and claims benefit of
`priority to as early as December 7, 2015. The ’461 patent, therefore, is
`subject to the Leahy-Smith American Invents Act’s (“AIA”), Pub. L. No.
`112–29, 125 Stat. 284 (2011), revisions to 35 U.S.C. § 100 et seq.
`
`7
`
`
`
`IPR2019-01366
`Patent 10,030,461 B2
`
`engaged in gamesmanship by asserting positions here that are inconsistent
`with its positions in the Texas litigation. Id. at 11–12.
`
`Petitioner replies by arguing that the Texas litigation “remains in its
`early stages,” asserting that a trial date has not been set, a claim construction
`hearing has not been held, discovery is ongoing, and the parties have not
`served final infringement and invalidity contentions. Pet. Reply 1–2. In
`view of post-trial motions and proceedings, Petitioner argues that “a final
`judgment will likely issue no sooner than several months after the Board’s
`final written decision.” Id. at 2. Regarding the Louisiana litigation,
`Petitioner notes that “a Joint Motion to Amend Schedule was filed
`October 7, 2019 delaying the litigation for ‘meaningful settlement
`discussions.’” Id. (citing Ex. 1031, 1). Petitioner argues that the Board has
`declined to exercise its discretion to deny institution in similar cases. Id. at
`3–6. Petitioner denies that it has engaged in improper gamesmanship. Id. at
`6–8.
`Patent Owner replies by reiterating its position that a trial in the Texas
`
`litigation is likely to conclude prior to the date on which our Final Decision
`would be due. PO Sur-Reply 3–4. Patent Owner presents arguments
`distinguishing certain Board decisions cited by Petitioner. Id. at 4–7. Patent
`Owner reiterates its gamesmanship arguments. Id. at 7–8.
`
`The discretionary decision whether to deny institution under § 314(a)
`is based on “a balanced assessment of all relevant circumstances in the case,
`including the merits.” Patent Trial and Appeal Board Consolidated Trial
`Practice Guide 58 (Nov. 2019).3 Those circumstances include “events in
`
`
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`8
`
`
`
`IPR2019-01366
`Patent 10,030,461 B2
`
`other proceedings related to the same patent, either at the Office, in district
`courts, or the ITC.” Id. In deciding whether to deny institution based on a
`parallel district court case between the parties, the Board has analyzed
`several considerations, which we will summarize and then assess in the
`context of this case. For the reasons discussed below, we determine that the
`circumstances of this case do not warrant denial of institution under
`§ 314(a).
`
`1. Overlap of the Issues
`Board decisions considering § 314(a) discretionary denial weigh
`
`whether the same evidence and arguments are presented in the petition as in
`the district court. See NHK Spring Co., LTD. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (designated
`precedential); Mylan Pharm., Inc. v. Bayer Intellectual Property GmbH,
`IPR2018-01143, Paper 13 at 13–14 (PTAB Dec. 3, 2018) (finding that it
`would be an inefficient use of Board resources to institute trial due, in part,
`to the “extensive overlap of the asserted prior art, expert testimony, and
`claim construction” in the co-pending district court case); E-One, Inc. v.
`Oshkosh Corp., IPR2019-00161, Paper 16 at 7 (PTAB May 15, 2019)
`(observing that “[t]he issues, evidence, and argument presented in the
`Petition essentially duplicate what has been and continues to be litigated in
`the Parallel District Court Case”); cf. Uniden Am. Corp. v. Escort, Inc.,
`IPR2019-00724, Paper 6 at 9–10 (PTAB Sept. 17, 2019) (determining that
`uncertainty as to the arguments, evidence, and prior art that will be asserted
`in the parallel district court case weighed against discretionary denial).
`
`Also relevant to the analysis are similarities or disparities in the
`claims being challenged in the district court versus the petition. Facebook,
`
`9
`
`
`
`IPR2019-01366
`Patent 10,030,461 B2
`
`Inc. v. Blackberry Ltd., IPR2019-00899, Paper 15 at 12 (Oct. 8, 2019)
`(discretionary denial disfavored when the petition challenged additional
`claims beyond those reviewed by the district court); Huawei Device Co. v.
`Optis Wireless Tech., LLC, IPR2018-00653, Paper 27 at 11–12 (PTAB Mar.
`13, 2019) (same); Puma North Am., Inc. v. Nike, Inc., IPR2019-01043,
`Paper 8 at 9–10 (PTAB Oct. 31, 2019) (same).
`
`Here, Patent Owner cites to Petitioner’s responses to interrogatories
`(Exs. 2007, 2009, 2010) and its answers to the amended complaint
`(Ex. 2008) and the second amended complaint (Ex. 2011), and argues that
`“the Petition contains prior art invalidity questions that are duplicative of
`those raised in the Texas litigation.” Prelim. Resp. 7–8. However, no
`formal invalidity contentions are of record. Moreover, Patent Owner
`appears to overstate the contents of the Texas litigation papers. For
`example, in Petitioner’s response to the first set of interrogatories, Petitioner
`primarily relies on references to Brown, Johnson, and Knox, which are not
`of record here. See Ex. 2007. Petitioner relies on other references, including
`McGuire, as alternative secondary teachings regarding “an abutment-surface
`‘pressure seal.’” See id. at 7. Petitioner also appears to allege invalidity
`based on API 16A, but in a manner unlike how the reference is used in the
`Petition. See Ex. 2009, 4–7. We additionally note that although Petitioner
`identifies and summarizes the Petition references in certain Texas litigation
`papers (see Ex. 2008, 19, 26, 37–38; Ex. 2010, 37–40; Ex. 2011, 14, 21,
`28–29, 31, 43), the record evidence fails to identify any invalidity
`contentions based on these references. Thus, the amount of overlap, if any,
`between Petitioner’s challenges in the Petition and the Texas litigation is, at
`best, uncertain.
`
`10
`
`
`
`IPR2019-01366
`Patent 10,030,461 B2
`
`In its second amended complaint in the Texas litigation, Patent Owner
`
`asserts that claims 1–10 of the ’461 patent are infringed by Petitioner.
`Ex. 1029, 7. However, the record does not contain any detailed
`infringement contentions. Thus, it is uncertain whether the same claims as
`challenged in the Petition will ultimately be considered in the Texas
`litigation.
`
`Accordingly, because the existence of any overlap of issues presented
`in the Petition and in the Texas litigation is uncertain, this factor weighs
`against discretionary denial.
`
`2. Stage of the Litigation
`A further fact favoring discretionary denial of institution is when the
`
`courts have already invested substantial resources adjudicating the same
`issues as are presented in a Board proceeding, or when trial in the parallel
`district court case has already occurred or is reasonably imminent. See, e.g.,
`NHK Spring, Paper 8 at 20 (finding that the advanced state of the district
`court case, which was set to go to trial approximately six months before the
`Board’s final decision would be due, weighed in favor of denial); E-One,
`Paper 16 at 6–9 (denying institution where district court case was scheduled
`to conclude before a final decision from the Board would be due and the
`district court had already invested substantial resources deciding the claim
`construction and obviousness issues presented in the Petition); Mylan,
`Paper 13 at 13–14 (noting that the district court had already construed the
`claims and trial was scheduled for more than eight months before the
`Board’s final decision would be due); Thermo Fisher Sci., Inc. v. Regents of
`Univ. of Cal., IPR2018-01370, Paper 11 at 26–27 (PTAB Feb. 7, 2019)
`(advanced stage of district court case favored denying institution where the
`
`11
`
`
`
`IPR2019-01366
`Patent 10,030,461 B2
`
`district court had already construed the claims and the petitioner proposed
`using the district court’s constructions in the IPR, and the district court’s
`trial was scheduled to occur three months after the institution decision).
`
`Conversely, when the district court has not yet expended resources on
`a case or the court’s resolution of issues raised in a petition is distant,
`discretionary denial is disfavored. Amazon.com, Inc. v. CustomPlay, LLC,
`IPR2018-01496, Paper 12 at 8–9 (PTAB Mar. 7, 2019) (disagreeing that a
`parallel district court case was at an advanced stage sufficient to warrant
`denial when the court had not yet construed the claims and, although trial
`was scheduled to occur before the Board’s final decision would be due, the
`court had already extended some of the deadlines in the case schedule);
`Abbott Vascular, Inc. v. FlexStent, LLC, IPR2019-00882, Paper 11 at 30–31
`(PTAB Oct. 7, 2019) (determining that the “early stage of the district court
`litigation” weighed against discretionary denial despite a trial date four
`months later, because summary judgment briefing and claim construction
`had not yet occurred).
`
`Regarding the Texas litigation, we agree with Petitioner that the
`litigation is in its early stages. See Pet. Reply 1–2. Although the parties
`appear to have submitted briefs regarding claim construction, the court has
`not conducted a claim construction hearing—indeed, the court recently
`canceled the previously scheduled hearing. See Ex. 1037. Nor have fact and
`expert discovery been completed or a trial date set. See Ex. 2006, 3. As the
`deadlines for completion of discovery, submission of dispositive motions,
`and setting a trial date are based, directly or indirectly, on the date of the
`court’s claim construction order (see id.), it remains uncertain when these
`deadlines will be set or the underlying actions performed. Thus, Patent
`
`12
`
`
`
`IPR2019-01366
`Patent 10,030,461 B2
`
`Owner’s contention that, should we institute review, our Final Written
`Decision “could very well issue after a verdict in the Texas litigation”
`(Prelim. Resp. 10) is speculative at best.
`
`Regarding the Louisiana litigation, we note that “[a]ll claims and
`counterclaims in the Action [have been] dismissed with prejudice.”
`Ex. 1036, 1. Thus, the Louisiana court will not issue any determinations
`regarding the validity of the ’461 patent claims, and the Louisiana litigation
`does not serve as a basis for denying institution.
`
`Accordingly, the status of the related litigation weighs against
`discretionary denial.
`
`3. Other Facts Affecting Discretionary Denial
`The Board’s assessment of the merits of a petitioner’s challenges can
`
`also affect the discretionary denial decision under § 314(a). E.g., Comcast
`Cable Commc’ns, LLC v. Rovi Guides, Inc., IPR2019-00231, Paper 14 at 11
`(PTAB May 20, 2019) (determining that the merits of the petitioner’s
`proposed ground were sufficiently strong to weigh against discretionary
`denial); Thermo Fisher, Paper 11 at 27 (denying institution due in part to an
`imminent trial in the parallel district court case, but also assessing that the
`merits of the petition were weak and did not establish a reasonable
`likelihood of prevailing on any challenged claim). As to the merits of
`Petitioner’s asserted ground, we do not assess the challenge to be weak for
`the reasons discussed in section III below.
`
`Additionally, although Patent Owner asserts that the as yet
`undetermined discovery and dispositive motion deadlines and trial date in
`the Texas litigation have been delayed due to Petitioner’s request (Prelim.
`Resp. 10 n.10), it appears that the delay is due at least in part to Patent
`
`13
`
`
`
`IPR2019-01366
`Patent 10,030,461 B2
`
`Owner filing multiple amended complaints. See Ex. 1035 (Patent Owner’s
`Unopposed Motion for Leave to File Second Amended Complaint and to
`Amend Schedule).
`
`Nor do we discern any gamesmanship on the part of Petitioner as
`asserted by Patent Owner. See Prelim. Resp. 11–12. Patent Owner’s
`arguments stem from the fact that Petitioner asserted in the Texas litigation
`that “pressure seal” and “wedge assembly,” as recited in the claims, are
`indefinite and proposed definitions for these terms in the Petition. Id. (citing
`Pet. 1–2, 19–20; Ex. 2003, 16–19, 23–28, 31–32). Initially, we note that a
`petition cannot include invalidity arguments based on invalidity. See
`35 U.S.C. § 311(b) (2018) (“A petitioner in an inter partes review may
`request to cancel as unpatentable 1 or more claims of a patent only on a
`ground that could be raised under section 102 or 103 and only on the basis of
`prior art consisting of patents or printed publications.”). In the Petition,
`Petitioner appears to interpret “pressure seal” in the manner it asserts is done
`in the art. See Pet. 38–41; see also Ex. 2003, 17 (“In the art, ‘pressure seal’
`denotes a seal that is useful at a specified pressure and for a specified
`fluid.”). Regarding the wedge assembly, Petitioner appears to argue that
`unless “wedge assembly” is construed under 112(f), the term is indefinite.
`See Ex. 2003, 24 (“the ‘wedge assembly’ terms . . . are either governed by
`§ 112(f) or they lack reasonably certain meaning.”), 28 (“Failure to apply
`§ 112(f) to the ‘wedge assembly’ limitations would thus render the claims
`indefinite.”).
`
`4. Conclusion
`After considering all of the circumstances the parties have presented
`
`that are relevant to the § 314(a) discretionary denial inquiry, we determine
`
`14
`
`
`
`IPR2019-01366
`Patent 10,030,461 B2
`
`that the facts of this case do not warrant discretionary denial. The early
`status of the Texas litigation, the dismissal of the Louisiana litigation, and
`the uncertainty regarding any overlapping issues between the Petition and
`the Texas litigation all weigh against discretionary denial. Thus, we do not
`exercise discretion to deny institution.
`
`III. ANALYSIS
`
`A. Principles of Law
`Petitioner bears the burden of persuasion to prove unpatentability, by
`
`a preponderance of the evidence, of the claims challenged in the Petition.
`35 U.S.C. § 316(e) (2018). This burden never shifts to Patent Owner.
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`(Fed. Cir. 2015). The Board may authorize an inter partes review if we
`determine that the information presented in the Petition and Patent Owner’s
`Preliminary Response shows that there is a reasonable likelihood that
`Petitioner will prevail with respect to at least one of the claims challenged in
`the petition. 35 U.S.C. § 314(a) (2018).
`
`A patent claim is unpatentable under 35 U.S.C. § 103 (2018) 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 the
`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;
`
`15
`
`
`
`IPR2019-01366
`Patent 10,030,461 B2
`
`(3) the level of skill in the art; and (4) any objective evidence of non-
`obviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`B. Level of Ordinary Skill in the Art
`Citing its declarant, Petitioner contends that a person having ordinary
`
`skill in the art at the time of the invention (“POSITA”) “would have had at
`least a bachelor’s degree in mechanical engineering, or a closely related
`field, and at least five years of experience in the design, development, or
`testing of seals for wellhead pressure-control applications.” Pet. 6 (citing
`Ex. 1003 ¶¶ 34–36). Patent Owner does not contest Petitioner’s proffered
`definition or offer one of its own. See generally Prelim. Resp.
`
`Based on the arguments presented and the cited references, we find
`Petitioner’s definition of the level of ordinary skill reasonable and for
`purposes of this Decision adopt it as our own.
`
`C. Claim Construction
`For petitions filed on or after November 13, 2018, such as this one, a
`
`claim shall be construed using the same claim construction standard that
`would be used to construe the claim in a civil action under 35 U.S.C.
`§ 282(b), including construing the claim in accordance with the ordinary and
`customary meaning of such claim as understood by one of ordinary skill in
`the art and the prosecution history pertaining to the patent. 37 C.F.R.
`§ 42.100(b) (2019). Thus, we apply the claim construction standard as set
`forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
`
`Claim terms are generally given their ordinary and customary
`meaning as would be understood by one with ordinary skill in the art in the
`
`16
`
`
`
`IPR2019-01366
`Patent 10,030,461 B2
`
`context of the specification, the prosecution history, other claims, and even
`extrinsic evidence including expert and inventor testimony, dictionaries, and
`learned treatises, although extrinsic evidence is less significant than the
`intrinsic record. Phillips, 415 F.3d at 1312–17. Usually, the specification is
`dispositive, and it is the single best guide to the meaning of a disputed term.
`Id. at 1315.
`
`When a claim term does not include the word “means,” a rebuttable
`presumption that the term is not drafted in means-plus-function language can
`be overcome “if the challenger demonstrates that the claim term fails to
`recite sufficiently definite structure or else recites function without reciting
`sufficient structure for performing that function.” Williamson v. Citrix
`Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc in relevant part)
`(quotation marks and internal citations omitted). If the presumption is
`overcome, “[a]pplication of § 112[(f)] requires identification of the structure
`in the specification which performs the recited function,” but does not
`permit “incorporation of structure from the written description beyond that
`necessary to perform the claimed function.” Micro Chem., Inc. v. Great
`Plains Chem. Co., 194 F.3d 1250, 1257–58 (Fed. Cir. 1999).
`
`Only those terms that are in controversy need be construed, and only
`to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).
`
`“Petitioner submits that three claim terms require construction:
`(1) ‘cooperating abutment surfaces,’ (2) the ‘wedge assembly’ of claim 1,
`and (3) the ‘wedge assembly’ of claim 6.” Pet. 9. Patent Owner does not
`
`17
`
`
`
`IPR2019-01366
`Patent 10,030,461 B2
`
`contest Petitioner’s proffered definitions or offer any of its own. See
`generally Prelim. Resp.
`
`Regarding the recited “cooperating abutment surfaces,” Petitioner
`argues that the term requires that “a surface of the adapter cooperate with a
`corresponding surface of the receptacle to form a seal by . . . directly
`touch[ing] each other.” Pet. 10 (citing Ex. 1003 ¶ 61). Petitioner argues that
`this interpretation is “consistent with the plain and ordinary meaning of the
`claim language.” Id. (citing Ex. 1003 ¶¶ 62–68; Ex. 1020, 4).
`
`Regarding the recited “wedge assembly,” Petitioner argues that
`“wedge assembly” is a nonce term that should be construed according to
`35 U.S.C. § 112(f) (2018). Pet. 10–11. Petitioner interprets the structure of
`the wedge assembly to be wedge 840 and wedge receptacle 845 for the
`embodiment illustrated in Figures 21–24 and wedge 940 and wedge
`receptacle 945 for the embodiment illustrated in Figures 25–28. Id. at 17
`(citing Ex. 1003 ¶ 93), 20 (citing Ex. 1003 ¶ 112). For claim 1, Petitioner
`interprets the function this structure performs to be “restraining the adapter
`from axial displacement relative to the seal receptacle when constriction of
`the wedge assembly radially towards the centerline engages the at least one
`surface of a wedge onto the adapter sloped surface.” Id. at 17–18 (citing
`Ex. 1003 ¶ 86). For claim 6, Petitioner interprets the function this structure
`performs to be “compressing the cooperating abutment surfaces together
`when constriction of the wedge assembly radially towards the centerline
`engages the at least one surface of a wedge onto the adapter sloped surface.”
`Id. at 20 (citing Ex. 1003 ¶ 103).
`
`For purposes of this Decision, and based on the record before us, we
`determine that no construction of any term is necessary. Although Petitioner
`
`18
`
`
`
`IPR2019-01366
`Patent 10,030,461 B2
`
`argues that “wedge assembly,” as recited in independent claims 1 and 6,
`should be interpreted under § 112(f), we need not resolve the issue because,
`for the reasons provided below, we find that Petitioner has sufficiently
`shown for purposes of this Decision that the asserted prior art teaches the
`limitation. We note that this determination does not preclude the parties
`from arguing their proposed constructions of the claims during trial. Indeed,
`the parties are hereby give notice that claim construction, in general, is an
`issue to be addressed at trial. A final determination as to claim construction
`will be made at the close of the proceeding, after any hearing, based on all
`the evidence of record. The parties are expected to assert all of their claim
`construction arguments and evidence in the Petition, Patent Owner’s
`Response, Petitioner’s Reply, or otherwise during trial, as permitted by our
`rules.
`
`D. Overview of the Prior Art
`
`1. Ahlstone
`Ahlstone discloses pipe couplings for use with underwater wellheads.
`
`Ex. 1005, 1:9–16. Figures 2A and 3A illustrate components of the coupling
`and are reproduced below:
`
`19
`
`
`
`IPR2019-01366
`Patent 10,030,461 B2
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Figures 2A and 3A are partial section views of the coupling in an unlocked
`position and a locked position, respectively. Id. at 3:9–20.
`
`One end of second conduit 11 is connected to a piece of equipment,
`such as a blowout preventer, and the other end of the second conduit is
`lowered into connection with first conduit 18. Ex. 1005, 3:21–25, 3:66–70.
`A plurality of dogs 34 are retained between the second conduit and ring 28.
`Id. at 4:9–12. The upper ends of the dogs are provided with upper lands 35
`for seating upon shoulder 36 on the second conduit. Id. at 4:13–17. The
`lower ends of the dogs are provided with lower lands 37 that, in the locked
`position, are seated on shoulder 38 of the first conduit. Id. at 4:17–21.
`
`With the second conduit lowered such that its end surface 39 matingly
`engages first conduit end surface 40, the dogs are moved into the locked
`position by sliding the ring downward over outer surface 41 of the dogs.
`Ex. 1005, 4:32–42, Fig. 3A. The weight of the ring forces the dog lower
`lands beneath the first conduit shoulder. Id. at 4:42–46. Annular seal
`ring 46 provides a sealing engagement between the first and second
`conduits. Id. at 5:23–27. The metal-to-metal contact between the mating
`
`20
`
`
`
`IPR2019-01366
`Patent 10,030,461 B2
`
`end surfaces of the conduits “will always be tight enough to provide a
`backup for the seal ring as well as to prevent the admission of well fluids to
`such ring.” Id. at 5:30–34. The conduits are unlocked by sliding the ring
`upward such that its surface 42 abuts toe 43 of the dog, swinging the dog
`land from beneath the first conduit shoulder. Id. at 4:46–54.
`
`2. McGuire
`McGuire discloses wellhead assemblies. Ex. 1006, 1:18–21. Figure 1
`
`illustrates a wellhead assembly and is reproduced below:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Figure 1 is a secti
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
