IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`In re patent of Frazier
`
`U.S. Patent No. 8,079,413
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`Issued: December 20, 2011
`
`Title: BOTTOM SET
`
`DOWNHOLE PLUG
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`48629.6
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`Petition for Inter Partes Review
`
`Attorney Docket No.:
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`Customer No.:
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`Real Party in Interest: McClinton
` Energy Group L.L.C.
`
`
`
`27683
`
`PETITION FOR INTER PARTES REVIEW
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`
`
`Mail Stop Inter Partes Review
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Pursuant to the provisions of 35 U.S.C. §§ 311-319, McClinton Energy
`
`Group L.L.C. (“Petitioner” or “MEGCO”) hereby petitions the Patent Trials and
`
`Appeals Board to institute an Inter Partes Review of claims 1-20 (all claims) of
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`United States Patent No. 8,079,413 (“the ’413 Patent,” Exhibit 1001), which issued
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`on December 20, 2011, to W. Lynn Frazier, resulting from Patent Application No.
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`13/194,871 filed on July 29, 2011. According to USPTO records, the ’413 Patent
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`is assigned to Magnum Oil Tools International LLC.
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`Petition for Inter Partes Review of U.S. 8,079,413
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`TABLE OF CONTENTS
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`I. Mandatory Notices ............................................................................................... 1
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`A. Real Party-in-Interest................................................................................. 1
`
`B. Related matters .......................................................................................... 1
`
`C. Lead and Back-up Counsel and Service Information ............................... 1
`
`II. Grounds for Standing ........................................................................................... 2
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`III. Relief Requested .................................................................................................. 2
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`IV. Reasons for the Requested Relief ........................................................................ 2
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`A. Summary of Petition .................................................................................. 2
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`1. Background of Technology ....................................................................... 3
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`a. Overview of Fracking ............................................................................. 3
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`b. Basic plug configuration ......................................................................... 4
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`c. Standard Prior Art Method For Setting Plugs ......................................... 6
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`d. Standard Prior Art Method For Using Plugs .......................................... 8
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`e. Removing Frac Plugs (Anti-Rotation Features) ..................................... 9
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`2.
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`Summary Of The ’413 Patent ..................................................................10
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`a. The Disclosure Of The ’413 Patent ......................................................10
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`b. The Claims Of The ’413 Patent ............................................................12
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`c. The Prosecution History Of The ’413 Patent ........................................13
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`B. Claim Construction ..................................................................................15
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`1.
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`“first end” and “second end” ...................................................................17
`
`“the first and second ends of the body each comprise anti-rotation
`2.
`features formed thereon” ..................................................................................19
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`“shearable threads” and “the insert comprises one or more shearable
`3.
`threads disposed on an inner surface thereof” .................................................21
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`C. Prior Art ...................................................................................................22
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`–ii–
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`Petition for Inter Partes Review of U.S. 8,079,413
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`D.
`
`Identification of Challenges ....................................................................26
`
`1. Claims 1-20 are obvious in view of the teachings of Alpha as a base
`reference ...........................................................................................................27
`
`a. CHALLENGE #1: Claims 1, 2, 4-8, and 13 are obvious over Alpha in
`view of Cockrell in view of Kristiansen ......................................................27
`
`b. CHALLENGE #2: Claims 3 and 12 are obvious over Alpha in view of
`Cockrell in view of Kristiansen in view of Lehr .........................................36
`
`c. CHALLENGE #3: Claims 9, 10, 11 are obvious over Alpha in view of
`Cockrell in view of Kristiansen in view of Slup ..........................................38
`
`d. CHALLENGE #4: Claims 14 and 16 are obvious over Alpha in view
`of Cockrell in view of Kristiansen in view of Streich .................................40
`
`e. CHALLENGE #5: Claim 15 obvious over Alpha in view of Cockrell in
`view of Kristiansen in view of Streich in view of McKeachnie ..................41
`
`f. CHALLENGE #6: Claims 17-19 are obvious over Alpha in view of
`Cockrell in view of Kristiansen in view of Slup in view of Streich in view
`of Lehr ..........................................................................................................42
`
`g. CHALLENGE #7: Claim 20 is obvious over Alpha in view of
`Cockrell in view of Kristiansen in view of Slup in view of Streich in view
`of Lehr in view of McKeachnie ...................................................................44
`
`2. Claims 1-20 are obvious in view of the teachings of Lehr as a base
`reference ...........................................................................................................44
`
`a. CHALLENGE #8: Claims 1-3, 5-8, 12, and 13 are obvious over Lehr
`in view of Cockrell .......................................................................................44
`
`b. CHALLENGE #9: Claims 4, 9, 10, 11 are obvious over Lehr in view
`of Cockrell in view of Slup ..........................................................................49
`
`c. CHALLENGE #10: Claims 14 and 16 are obvious over Lehr in view
`of Cockrell in view of Streich ......................................................................51
`
`d. CHALLENGE #11: Claim 15 obvious over Lehr in view of Cockrell
`in view of Streich in view of McKeachnie ..................................................52
`
`e. CHALLENGE #12: Claims 17-19 are obvious over Lehr in view of
`Cockrell in view of Slup in view of Streich ................................................52
`
`f. CHALLENGE #13: Claim 20 is obvious over Lehr in view of
`Cockrell in view of Slup in view of Streich in view of McKeachnie ..........54
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`–iii–
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`Petition for Inter Partes Review of U.S. 8,079,413
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`3. Claims 3, 12, and 14-20 are obvious in view of the teachings of the
`Frazier ’497 application as a base reference ....................................................54
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`a. CHALLENGE #14: Claims 17 and 18 are obvious over the Frazier
`’497 application in view of Lehr in view of Streich ....................................55
`
`b. CHALLENGE #15: Claim 19 is obvious over the Frazier ’497
`application in view of Streich in view of Lehr in view of Cockrell ............57
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`c. CHALLENGE #16: Claim 20 is obvious over the Frazier ’497
`application in view of Lehr, in view of Streich in view of McKeachnie ....57
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`d. CHALLENGE #17: Claim 3 is obvious over the Frazier ’497
`application in view of Lehr ..........................................................................57
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`e. CHALLENGE #18: Claim 12 is obvious over the Frazier ’497
`application in view of Lehr in view of Cockrell ..........................................58
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`f. CHALLENGE #19: Claims 14 and 16 are obvious over the Frazier
`’497 application in view of Cockrell in view of Streich ..............................59
`
`g. CHALLENGE #20: Claim 15 obvious over the Frazier ’497
`application in view of Cockrell in view of Streich in view of McKeachnie
`
`60
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`V. Conclusion .........................................................................................................60
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`
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`–iv–
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`Petition for Inter Partes Review of U.S. 8,079,413
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`
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`I. Mandatory Notices
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`A. Real Party-in-Interest
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`The parties in interest for Petitioner are the McClinton Energy Group LLC,
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`Jaycar Energy Group LLC, SurfFrac Wellhead Equipment Co., Motor Mills
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`Snubbing LLC, and Tony D. McClinton.
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`B. Related matters
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`The ’413 patent was asserted against the parties-in-interest in Magnum Oil
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`Tools Int’l LLC v. Tony D. McClinton et al., Case No. 2:12-cv-00099 (S.D. Tex).
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`Stan Keeling, an employee of Jaycar, is also a defendant in the Magnum lawsuit.
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`This petition also has bearing on at least three pending patent applications,
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`U.S. Patent Application Nos. 12/317,497, filed December 23, 2008, 13/329,077,
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`filed December 16, 2011 and 13/329,096, filed December 16, 2011.
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`C. Lead and Back-up Counsel and Service Information
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`Lead Counsel
`
`
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`John Russell Emerson
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Back-up Counsel
`
`Dustin Johnson
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`
`
`Phone: 214-651-5328
`Fax: 214-200-0884
`russ.emerson@haynesboone.com
`USPTO Reg. No. 44,098
`
`
`
`Phone: 972-739-6969
`Fax: 972-692-9080
`ipr.thomas.king@haynesboone.com
`USPTO Reg. No. 47,684
`
`
`
`–1–
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`

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`
`
`Thomas B. King
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`II. Grounds for Standing
`
`Petition for Inter Partes Review of U.S. 8,079,413
`
`Phone: (949) 202-3059
`Fax: (949) 202-3159
`ipr.thomas.king@haynesboone.com
`USPTO Reg. No. 69,721
`
`
`Petitioner certifies that it is not estopped or barred from requesting inter
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`partes review of the ’413 Patent. Petitioner and the other parties-in-interest were
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`served with a complaint asserting infringement of the ’413 patent on April 3, 2012,
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`which is less than one year before the filing of this Petition. Petitioner has not
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`initiated a civil action challenging the validity of any claim of the ’413 patent.
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`Petitioner also certifies that the ’413 patent is eligible for Inter Partes Review.
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`III. Relief Requested
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`Petitioner asks that the Board review the accompanying prior art and
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`analysis, institute a trial for Inter Partes Review of claims 1-20 of the ’413 Patent,
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`and cancel those claims as invalid under 35 U.S.C. § 103.
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`IV. Reasons for the Requested Relief
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`A.
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`Summary of Petition
`
`Claims 1-20 of the ’413 patent cover nothing more than obvious
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`combinations of garden-variety frac plug and mechanical features. Claims 3, 12,
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`and 14-20 of the’413 patent are additionally obvious because they do not properly
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`claim priority to the parent patent application, which makes additional prior art
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`available including the published parent application itself.
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`
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`–2–
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`Petition for Inter Partes Review of U.S. 8,079,413
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`1.
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`Background of Technology
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`The ’413 patent describes a plug used in drilling for oil or natural gas. Ex.
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`1001 (cited herein as “the ’413 patent”). For decades, drillers have used plugs with
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`oil and natural gas wells. Recently, drillers have used plugs during the “fracking”
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`processes that underlie the ongoing boom in oil and natural gas extraction.
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`a. Overview of Fracking
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`The fracking process starts with a wellbore drilled deep into the earth to
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`reach hydrocarbons trapped in shale formations. Ex. 1025. 1 A “perforating” gun
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`or other device is used to create small holes in the wellbore wall. Id. These holes
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`are then exposed to high pressure hydraulics that create large fractures in the shale
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`formations, thus unlocking the oil or natural gas trapped within. Id.
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`To fracture a wellbore, drillers divide it into separate zones. Drillers fracture
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`the bottom-most zone first, using the process described above. Wooley ¶ 12. The
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`driller next inserts a frac plug at the top/uphole side of the fracked zone. Ex. 1025
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`A frac plug can stop fluid flow in one or both directions. The plug isolates the
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`already-fracked lower zone from the next zone in the wellbore, ensuring that the
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`hydraulic pressure is applied to the unfracked zone and not previously-fracked
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`
`1 The fracking process is described in good detail in a 2010 video prepared by
`Baker Hughes, available at http://www.youtube.com/watch?v=oPgZnZqp87k, and
`attached to this Petition as Ex. 1025. This video is representative of the state of the
`art in 2007-2008. See Declaration of Dr. Gary R. Wooley, (“Wooley”) Exhibit
`1020 ¶ 12.
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`–3–
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`Petition for Inter Partes Review of U.S. 8,079,413
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`zone. Wooley ¶ 12. This process of plugging and fracking continues until the
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`entire production area of the wellbore is fracked and plugged. Id. This potentially
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`involves a dozen or more frac plugs per wellbore. ’413 patent at 1:46-58.
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`b.
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`Basic plug configuration
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`Most plugs used in drilling, including the frac plugs described in the ’413
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`patent, have the same basic components and function in the same basic way. The
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`following figure from the ’413 patent highlights the standard components of a plug
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`Slip (240)
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`Slip (245)
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`Body (210)
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`Conical
`member (230)
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`Malleable
`element (250)
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`Conical
`member (235)
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`Head Member
`(270)
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`
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`See Wooley ¶ 15; ’413 patent Fig. 2A. As shown above, the ’413 plug has a
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`standard cylindrical body providing support for outer components. These outer
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`components include “slips” (which keep the plug fixed in the wellbore) and a
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`–4–
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`Petition for Inter Partes Review of U.S. 8,079,413
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`malleable element that expands to seal the wellbore, thus preventing materials such
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`as water or gas from passing around the plug. The plug also includes additional
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`elements around the body, including conical elements near the slips as well as a
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`head member at the bottom of the tool. See Wooley ¶ 15.
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`This arrangement was not invented by Frazier, and in fact is a standard
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`arrangement in the art as shown below:
`
`A
`
`B
`
`C
`
`D
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`C
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`B
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`E
`
`A
`
`B
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`C
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`D
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`C
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`B
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`E
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`Alpha Standard Lehr (2007) McKeachnie Streich
`Frac Plug (1996) (2004) (1992)
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`Each of these prior art plugs has the same basic plug elements as the ’413 patent,
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`including a body [A], upper and lower slips [B], upper and lower conical elements
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`[C], a sealing/malleable element [D], and a head member [E].
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`
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`–5–
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`Petition for Inter Partes Review of U.S. 8,079,413
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`c.
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`Standard Prior Art Method For Setting Plugs
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`The slip and seal components of a frac plug expand to engage wellbore
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`sidewalls and create a barrier separating upper and lower regions of the wellbore.
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`The process of expanding the plug is called “setting,” and involves pulling
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`upwards on the body of the plug with a setting tool while pushing downward on
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`the slip / seal (malleable element) assembly with a “setting sleeve.” ’413 patent at
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`8:63-9:12; Ex. 1025. This axial compression causes the slips to move outward
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`along the conical element, thus radially expanding them into contact with the
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`wellbore sidewalls. Id. Once the plug sets, the slips prevent the plug from slipping
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`along the wellbore. Id. The setting pressure also causes the malleable sealing
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`element (usually made from rubber) to expand outward against the well casing.
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`This seal prevents liquid or gas from passing around the plug. Id. Wooley ¶ 12.
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`The following image shows a plug before and after it is expanded:
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` Unexpanded Plug Expanded Plug
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`
`
`
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`Ex. 1025. This plug (manufactured by non-party Baker Hughes) has the same
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`basic components as the ’413 plug—a cylindrical body, slips, a malleable / sealing
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`element and a conical element.
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`The device on the left of these images that provides the upward and
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`–6–
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`Petition for Inter Partes Review of U.S. 8,079,413
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`downward pressure on the plug is called a “setting tool.” The following image is
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`an example of a prior art setting tool.
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`
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`Exh. 1004 at 24. The left side of the setting tool faces uphole and connects to the
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`wire that lowers equipment down the wellbore. The right hand side is connected to
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`the plug. For some plugs (called top-set plugs), the setting tool connects near the
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`top of the plug. For “bottom-set” plugs, the setting tool fits inside a passageway
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`within the body of the plug and connects near the bottom of the tool.
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`After firing, the setting tool must be removed from the plug. In a typical
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`plug, the opposing upward/downward forces that set the plug are also sufficient to
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`shear the setting tool free from the plug. ’413 patent at 8:63-9:12; Ex. 1025. A
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`variety of different shearing or release mechanisms are known in the art for
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`ensuring that the setting tool pulls free when the plug is set. For example, many
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`plugs use shear rings, shear studs, shear screws, etc. to release the setting tool from
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`the plug. Wooley ¶ 34. The release mechanism in the ’413 patent uses shearable
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`threads, another common prior art shearing mechanism that the examiner of the
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`’413 patent recognized as equivalent to other shear mechanisms. Ex. 1002 at p. 28
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`[Notice of Allowance p. 7] (“[I]t would have been considered obvious to replace
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`the shear pin of Bonner with shearable threads, as this would have amounted to
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`
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`–7–
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`Petition for Inter Partes Review of U.S. 8,079,413
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`simple substitution of well-known equivalent shear release mechanisms.”).
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`d.
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`Standard Prior Art Method For Using Plugs
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`Frequently, frac plugs have passageways that allow fluid to flow from one
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`side of a plug to the other. These passages must be sealed before the application of
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`hydraulic pressure. This is typically done by dropping a ball from the top of the
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`wellbore that seats on the top of the plug, creating a one-way flow valve. Wooley
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`¶ 84. The ball prevents fluid above the plug from flowing through the plug, but
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`allows fluid to flow upward through the plug. These plugs are called “ball drop”
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`plugs. The Alpha standard frac plug is an example of a ball drop plug:
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`Ex. 1004. “Cage ball” plugs have a ball locked into the device. McKeachnie
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`shows a prior art cage ball plug that actually has two balls inside of the plug.
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`
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`Ex. 1009 (explaining that the lower ball decomposes over time); Wooley Rpt. ¶ 63.
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`
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`–8–
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`Petition for Inter Partes Review of U.S. 8,079,413
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`e.
`
`Removing Frac Plugs (Anti-Rotation Features)
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`Drillers must remove the frac plugs to allow oil and gas to move towards the
`
`surface. To do this, drillers typically use a tool to drill through the plug. The
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`following picture of the Baker Hughes plug shows a tool cutting through the plug:
`
`
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`Ex. 1025. This milling (or drilling) process works well so long as the slips anchor
`
`the plug inside the wellbore. Id. After the tool cuts through the slips, however, the
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`remaining head member is free to move through the well casing and is difficult, if
`
`not impossible, to drill/mill by itself. Id. As a result, the tool pushes the head
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`down the well casing until it runs into the next plug, as illustrated below:
`
`
`
`
`
`Ex. 1025. The picture on the left shows that after the mill cuts through the slips, it
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`pushes the plug head further down the wellbore towards the next plug. The picture
`
`on the right shows the head member engaged with the top of the next plug. The
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`lower plug holds the upper head member in place so that the milling process can
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`
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`–9–
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`Petition for Inter Partes Review of U.S. 8,079,413
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`continue. Id. The coupling between the two plugs is called an “anti-rotation”
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`feature, because, without that coupling, the head from the upper plug would rotate
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`on top of the lower plug in response to the action of the drill bit. Preventing
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`rotation is important because the milling tool cannot effectively cut through a
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`rotating plug head. As shown below, anti-rotation features were well-known in the
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`prior art in 2007/2008.
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`2.
`
`Summary Of The ’413 Patent
`
`The ’413 patent claims priority as a continuation-in-part of U.S. Patent App.
`
`No. 12/317,497 (filed December 23, 2008) (“the ’497 application”). The ’497
`
`application and the ’413 patent both name W. Lynn Frazier as the sole inventor.
`
`The ’413 patent issued on December 20, 2011 with 20 claims. Claims 1, 7, and 17
`
`are independent claims.
`
`a.
`
`The Disclosure Of The ’413 Patent
`
`The ’497 application and the ’413 patent have only a little description and no
`
`figures in common. The applications disclose some similar concepts, as well as
`
`many different ones. Fig. 1 of the ’497 application and Figure 2A of the ’413
`
`patent illustrate the basic claimed frac plug:
`
`Ex. 1003 (’497 Application (2008))
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`–10–
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`Petition for Inter Partes Review of U.S. 8,079,413
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`Ex. 1001 (’413 Patent (2011))
`
`
`
`These figures reflect the same basic frac plug design, except that the ’413 patent
`
`includes an “anti-rotation feature” (the taper 295 on the top) that was not disclosed
`
`in the ’497 application, as discussed below.
`
`The ’413 patent and ’497 application both describe an “insert” or “setting
`
`device 64” component, shown at the bottom of bottom of Figs. 1 and 2A above.
`
`Larger drawings of these inserts are shown below:
`
`
`
`’497 Application (2008)
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`
`
`
`
`
`
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`’413 Application (2011)
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`These inserts connect the setting tool to the plug via threads that deform in
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`response to force, thus releasing the setting tool from the plug:
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`“The plug can include one or more lower shear or shearable
`
`mechanisms for connecting to a setting tool. . . . The lower shear or
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`shearable mechanism is adapted to engage a setting tool and release
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`
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`–11–
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`Petition for Inter Partes Review of U.S. 8,079,413
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`the setting tool when exposed to a predetermined stress that is
`
`sufficient to deform the shearable threads to release the setting tool
`
`but is less than a stress sufficient to break the plug body. ”
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`’413 Patent at 2:54-63. The setting tools screw into the inner surface of the insert.
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`’413 Patent at 5:36-39. To set the plug, the setting tool pulls up on the insert while
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`pushing down on the plug body, causing the seal to expand and the slips to lock the
`
`plug in place. ’413 Patent at 8:62-9:13. This refers to one of the embodiments
`
`described in the ’413 patent.
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`b.
`
`The Claims Of The ’413 Patent
`
`Claim 1 of the ’497 patent is representative of the basic design described
`
`above:
`
`A plug for isolating a wellbore, comprising:
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`a body having a first end and a second end;
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`at least one malleable element disposed about the body;
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`at least one slip disposed about the body;
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`at least one conical member disposed about the body;
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`and an insert screwed into an inner surface of the body proximate the
`second end of the body and adapted to receive a setting tool that
`enters the body through the first end thereof, wherein:
`
`the insert comprises one or more shearable threads disposed on
`an inner surface thereof; the insert has a passageway extending
`therethrough;
`
`the one or more shearable threads are adapted to engage the
`setting tool; and
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`the one or more shearable threads are adapted to deform to
`release the setting tool when exposed to a predetermined axial
`force, thereby providing a flow passage through the insert and
`the body.
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`
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`–12–
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`Petition for Inter Partes Review of U.S. 8,079,413
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`Ex. 1001. Claim 1 covers the standard plug design described above having a body,
`
`slip, conical member, and malleable / sealing element. Claim 1 also requires an
`
`“insert” that is “adapted to receive a setting tool,” and that has shearable threads
`
`that release the setting tool when exposed to a predetermined force.
`
`Other claims of the ’413 patent add minor / known variations to this basic
`
`claim. For example, claim 2 requires that the outer surface of the insert have a
`
`shoulder (as seen above in the insert from the prior art Alpha plug). Claims 3, 12,
`
`and 17 require anti-rotation features (as seen above in the prior art Lehr reference).
`
`Other claimed variations include a ball drop plug (claim 4) a cage ball plug (claims
`
`14-17, 20) a frac plug (claims 6, 13), plugs and inserts made from various common
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`materials (claims 8-11, 17), dissolving cage balls (15, 20), and the unsurprising
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`notion that that different elements have different shear strengths (claims 5, 7, 19).
`
`c.
`
`The Prosecution History Of The ’413 Patent
`
`As noted above, the ’413 patent claims priority to the ’497 application (filed
`
`in 2008). Although these applications describe some overlapping concepts, the
`
`’497 application and the ’413 patent have very different language and drawings;
`
`indeed, there appears to be little overlap between the description and figures used
`
`in the ’497 application and the description and figures used in the ’413 patent.
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`As of the filing date of this petition, the ’497 application is still pending at
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`the USPTO. Many of the pending claims are similar in at least some respects to
`
`
`
`–13–
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`

`

`
`
`Petition for Inter Partes Review of U.S. 8,079,413
`
`the issued claims of the ’413 patent. The USPTO has rejected these claims (which
`
`have an earlier priority date than the ’413 patent) as being obvious in view of the
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`prior art. Ex. 1021 [Non-final rejection in ’497 application]
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`The ’871 application, which matured into the ’413 patent was filed in July
`
`2011. At least some claims issued in the ’413 patent are not supported by the ’497
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`application. For example, anti-rotation features and an insert having an
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`impediment inside of the flow passage are both not supported by the original ’497
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`application. The ’871 application was filed with a preexamination document and a
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`petition for accelerated examination.
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`The examination focused on prior art identified in the preexamination
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`document. The examiner found that all but two limitations were present in the
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`prior art Bonner reference: (1) shearable threads in the insert; and (2) the insert
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`being screwed into the body. Ex. 1021 at 7. As to the first element, the examiner
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`found that “it would have been considered obvious to replace the shear pin of
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`Bonner with shearable threads, as this would have amounted to simple substitution
`
`of well known equivalent shear release mechanisms.” Id. The examiner also
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`found that Bonner did not teach or suggest that the insert was screwed into the
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`body. Id. On the basis of the lack of an insert screwed into the body, the USPTO
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`allowed the claims, and the ’413 patent issued on December 20, 2011.
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`
`
`–14–
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`

`

`
`
`Petition for Inter Partes Review of U.S. 8,079,413
`
`There are two continuation applications pending from the application that
`
`resulted in the ’413 patent, U.S. Application No. 13/329,077 and 13/329,096. As
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`of the filing of this Petition, the USPTO has issued final rejections under §§102 or
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`103 for all remaining claims in these applications. Ex. 1022 [January 22, 2013
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`Final Rejection in ’077 application]; Ex. 1023 [January 24, 2013 Final Rejection in
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`’096 application].
`
`B. Claim Construction
`
`In connection with the pending district court litigation, the parties agreed to
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`the constructions for most terms in the ’413 patent. The agreed constructions are:
`
`Claim Term
`
`Agreed Construction
`
`"body"
`
`"the insert has a passageway
`extending therethrough"
`
`"a flow passage"
`
`"the first end of the body, the
`second end of the body, or both
`ends comprise an anti-rotation
`feature formed thereon"
`
`A centralized support member, made of one
`or more components or parts, for one or
`more outer components to be disposed
`thereon or thereabout.
`
`The insert has an opening that extends all the
`way through the insert and that permits fluid
`flow in one or both directions.
`
`An opening that permits fluid flow in one or
`both directions.
`
`An anti-rotation feature is present on one or
`both ends of the body.
`
`"decomposable at a predetermined
`temperature, pressure, pH, or a
`combination thereof"
`
`Subject to decomposing, degrading,
`degenerating, or otherwise falling apart at
`predetermined conditions that are likely to
`
`
`
`–15–
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`

`

`
`
`Petition for Inter Partes Review of U.S. 8,079,413
`
`Claim Term
`
`Agreed Construction
`
`exist in a wellbore environment.
`
`"axial force"
`
`A force in the direction of the wellbore axis.
`
`"the one or more shearable
`threads are adapted to deform to
`release the setting tool when
`exposed to a predetermined axial
`force, thereby providing a flow
`passage through the insert and the
`body"
`
`An axial force that is known in advance
`deforms the shearable threads to release the
`connection with the setting tool. Once
`released, the absence of the setting tool
`provides a flow passage through the insert
`and the body.
`
`"the passageway of the insert is
`adapted to receive an impediment
`that restricts fluid flow in at least
`one direction through the body"
`
`The passageway of the insert is configured to
`receive an impediment that restricts fluid
`flow in at least one direction through the
`body.
`
`"anti-rotation feature"
`
`A feature that is designed to engage, connect,
`or otherwise contact another plug, whether
`above or below, to prevent or greatly reduce
`rotation therebetween.
`
`Under 37 C.F.R. § 42.100(b), “[a] claim in an unexpired patent shall be
`
`given its broadest reasonable construction in light of the specification of the patent
`
`in which it appears.” Petitioner submits that these agreed constructions should be
`
`accepted by the Board as the broadest reasonable construction for these claim
`
`terms. The Petition applies these constructions to the prior art as set forth below.
`
`The parties also disagree on the proper construction of several claim terms.
`
`As of the filing of this Petition, the district court has not yet resolved the parties’
`
`
`
`–16–
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`

`

`
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`Petition for Inter Partes Review of U.S. 8,079,413
`
`disputes for these claim terms. Petitioner submits that its proposed constructions
`
`represent the broadest reasonable construction and that the constructions proposed
`
`by the Patent Owner during litigation are unreasonable or unduly narrow.
`
`1.
`
`“first end” and “second end”
`
`Claim Term Petitioner’s Proposal
`"first end"
`Upper End.
`Claims 1-20
`"second end"
`Claims 1-20
`
`Lower End.
`
`Patent Owner’s Proposal
`At or adjacent to a first extremity.
`
`At or adjacent to a second extremity.
`
`The specification and prosecution history of the ‘413 patent support
`
`Petitioner’s construction of “first end” and “second end” as meaning “upper end”
`
`and “lower end,” respectively.
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`Claim-construction law recognizes that “[a]n applicant is entitled to be his or
`
`her own lexicographer and may rebut the presumption that claim terms are to be
`
`given their ordinary and customary meaning by clearly setting forth a definition of
`
`the term that is different from its ordinary and customary meaning(s).” MPEP
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`2111.01. Here, the specification defines “first end” to mean “upper end” and
`
`“second end” to mean “lower end” when it states: “The plug 200 can include a
`
`mandrel or body 210 having a first or upper end 207 and a second or lower end
`
`208.” ’413 patent at 5:24-26. Read in context, the phrases “a first or upper end”
`
`and “a second or lower end” are definitional—in other words, this passage states
`
`
`
`–17–
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`

`

`
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`Petition for Inter Partes Review of U.S. 8,079,413
`
`that, in the ’413 patent, “first end” is equivalent to “upper end” and “second end” is
`
`equivalent to “lower end.”
`
`This understanding is the only one that makes sense out of the claims.
`
`Claims 1 and 7 require a setting tool to “enter[] the body through the first end
`
`thereof.” ’413 patent at 13:64-65, 14:33-34 (emphasis added). A setting tool, by
`
`necessity, enters a plug from the upper end since the lower end faces downhole and
`
`is thus inaccessible to the setting tool. Thus, the “first end” in the context of
`
`claims 1 and 7 necessarily refers to the “upper end” of the plug.
`
`At the district court, the Patent Owner proposed a construction in which the
`
`phrases “first end” and “second end” have their abstract meanings of “at or
`
`adjacent to a first [or second] extremity.” Patent Owner bases its construction on
`
`statements in the specification regarding the words “up” and “down,” “upward”
`
`and “downward,” etc. These statements explain that in the context of the ’413
`
`patent, the words “up” and “down,” etc. refer to “relative positions,” because