IPR2013-00231
`U.S. PATENT NO. 8,079,413
`
`TRIAL HEARING
`MAY 8, 2014
`
`UNITED STATES PATENT
`TRIAL AND APPEAL BOARD
`
`Patent Owner Magnum Oil Tools International, Ltd’s
`1
`Demonstrative Exhibits
`
`
`U.S. PATENT NO. 8,079,413
`
`TRIAL HEARING
`MAY 8, 2014
`
`UNITED STATES PATENT
`TRIAL AND APPEAL BOARD
`
`Patent Owner Magnum Oil Tools International, Ltd’s
`1
`Demonstrative Exhibits
`
`
`
`Petitioner's Cited Prior Art
`
`• U.S. Patent Publication 2007/0151722 ("Lehr")
`
`• U.S. Patent No. 4,437,516 ("Cockrell")
`
`• U.S. Patent No. 4,595,052 ("Kristiansen")
`
`• U.S. Patent No. 6,708,768 ("Slup")
`
`• U.S. Patent No. 5,224,540 ("Streich")
`
`• U.S. Patent No. 7,350,582 ("McKeachnie")
`
`Source: Petition for Inter Partes Review, Paper 3 at p. 44-54
`
`2
`
`
`
`Instituted Grounds of Review
`
`A. Claims 1-3, 5-8, 12, and 13 as unpatenable over the combination of
`Lehr, Cockrell, and Kristiansen
`B. Claims 4 and 9-11 as unpatenable over the combination of Lehr,
`Cockrell, Kristiansen, and Slup
`C. Claims 14 and 16 as unpatentable over the combination of Lehr,
`Cockrell, Kristiansen, and Streich
`D. Claim 15 as unpatenable over the cominbation of Lehr, Cockrell,
`Kristiansen, Streich, and McKeachnie
`E. Claims 17-19 as unpatenable over the combination of Lehr,
`Cockrell, Kristiansen, Slup, and Streich
`F. Claim 20 as unpatentable over the combination of Lehr, Cockrell,
`Kristiansen, Slup, Streich, and McKeachnie
`
`Source: Decision, Paper 16 at p. 26
`
`3
`
`
`
`U.S. Patent No. 8,079,413 ("'413 Patent")
`
`BOTTOM SET DOWNHOLE PLUG
`
`Date of Patent: *Dec. 20, 2011
`
`Inventor: W. Lynn Frazier, Corpus
`Christi, TX (US)
`
`Filed:
`
` Jul. 29, 2011
`
`Continuation-in-part of application
`No. 12/317,497, filed on Dec. 23, 2008
`
`Source: Ex. MOTI[3001], U.S. Patent No. 8,079,413 at p. 1
`4
`
`
`
`Lehr, Cockrell, and Kristiansen
`
`– Base claims 1 and 7 are patentable over the
`combination of Lehr, Cockrell, and Kristiansen
`
`5
`
`
`
`Lehr, Cockrell, and Kristiansen
` - No prima facie case of obviousness
`
`INDEPENDENT CLAIM 1:
`
`Source: Ex. MOTI[3001], U.S. Patent No. 8,079,413 at p. 17
`6
`
`
`
`Lehr, Cockrell, and Kristiansen
` - No prima facie case of obviousness
`
`INDEPENDENT CLAIM 7:
`
`Source: Ex. MOTI[3001], U.S. Patent No. 8,079,413 at p. 17
`7
`
`
`
`Lehr, Cockrell, and Kristiansen
` - No prima facie case of obviousness
`
`Elements Undisputedly Missing From Lehr:
`1. an insert screwed into the 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,
`2. wherein the insert comprises one or more shearable threads
`disposed on an inner surface thereof;
`the one or more shearable threads are adapted to engage the
`setting tool;
`and 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.
`
`6.
`
`5.
`
`Source: Petition for Inter Partes Review, Paper 3 at p. 46-47
`8
`
`
`
`Lehr, Cockrell, and Kristiansen
` - No prima facie case of obviousness
`
`Lehr:
`
`Cockrell:
`
`Kristiansen:
`
`Source: Ex. MOTI [3003], Lehr at 2, 3, and 7; Petitioner for Inter Partes Review, Paper 3 at p. 29 and p. 32
`9
`
`
`
`Lehr, Cockrell, and Kristiansen
` - No prima facie case of obviousness
`
`Source: Ex. MOTI [3004], Declaration of Expert Kevin Trahan, at ¶ 22
`10
`
`
`
`Lehr, Cockrell, and Kristiansen
`
`The combination of Lehr, Cockrell, and Kristiansen
`fails to disclose or suggest every limitation of base claims 1, 7, and 17:
`
`Source: Ex. MOTI [3004], Declaration of Expert Kevin Trahan at ¶ 21
`11
`
`
`
`PHOSITA would not have found it obvious to combine Lehr and Cockrell
`
`Combining Lehr and Cockrell would not have been a simple substitution:
`
`Source: Ex. MOTI [3004], Declaration of Expert Kevin Trahan at ¶¶ 23, 24
`
`12
`
`
`
`PHOSITA would not have found it obvious to combine Lehr and Cockrell
`
`Combining Lehr and Cockrell would require a major redesign of Lehr:
`
`Source: Ex. MOTI [3004], Declaration of Expert Kevin Trahan at ¶¶ 26, 27
`13
`
`
`
`PHOSITA would not have found it obvious to combine Lehr and Cockrell
`
`Combining Lehr and Cockrell would require a major redesign of Lehr:
`
`Source: Ex. MEGCO [1026], Deposition Transcript of Kevin Trahan at 41:19-24
`14
`
`
`
`PHOSITA would not have found it obvious to combine Lehr and Cockrell
`
`Combining Lehr and Cockrell would require a major redesign of Lehr:
`
`Source: Ex. MEGCO [1026], Deposition Transcript of Kevin Trahan at 44:9-24
`15
`
`
`
`PHOSITA would not have found it obvious to combine Lehr and Cockrell
`
`Source: Ex. MOTI [3004], Declaration of Expert Kevin Trahan at ¶¶ 27, 28
`16
`
`
`
`PHOSITA would not have found it obvious to combine Lehr and Cockrell
`
`The proposed modification of Lehr provides no expectation of success –
`Petition's only rationale for combining Lehr and Cockrell is inapplicable:
`
`Source: Petition for Inter Partes Review, Paper 3 at p. 30, 47
`17
`
`
`
`PHOSITA would not have found it obvious to combine Lehr and Cockrell with
`Kristiansen
`The proposed modification of Lehr provides no expectation of success –
`Petition's rationale for combining Lehr with Kristiansen is equally inapplicable:
`
`Source: Petition for Inter Partes Review, Paper 3 at p. 32
`18
`
`
`
`PHOSITA would not have found it obvious to combine Lehr and Cockrell
`
`The proposed modification of Lehr provides no expectation of success –
`Petition's only rationale for combining Lehr and Cockrell is inapplicable:
`
`Source: Ex. MOTI [3004], Declaration of Expert Kevin Trahan at ¶ 32
`19
`
`
`
`PHOSITA would not have found it obvious to combine Lehr and Cockrell
`
`The proposed modification of Lehr provides no expectation of success –
`Petition's only rationale for combining Lehr and Cockrell is disclosed by Lehr:
`
`Source: Ex. MOTI [3003], Lehr at ¶ 13
`20
`
`
`
`PHOSITA would not have found it obvious to combine Lehr and Cockrell
`
`No articulated reasoning to combine Lehr and Cockrell –
`Not a simple substitution of one known element for another:
`
`Source: Ex. MOTI [3004], Declaration of Expert Kevin Trahan at ¶ 29
`21
`
`
`
`PHOSITA would not have found it obvious to combine Lehr and Cockrell with
`Kristiansen
`No articulated reasoning to combine Lehr and Cockrell with Kristiansen:
`
`Source: Ex. MOTI [3004], Declaration of Expert Kevin Trahan at ¶¶ 32, 33
`22
`
`
`
`PHOSITA would not have found it obvious to combine Lehr and Cockrell with
`Kristiansen
`
`The proposed modification of Lehr provides no expectation of success –
`Petition's rationale for combining Lehr with Kristiansen is equally inapplicable:
`
`Source: Ex. MOTI [3004], Declaration of Expert Kevin Trahan at ¶¶ 30, 31
`23
`
`
`
`PHOSITA would not have found it obvious to combine Lehr and Cockrell with
`Kristiansen
`
`The proposed modification of Lehr provides no expectation of success –
`Petition's rationale for combining Lehr with Kristiansen is disclosed by Lehr:
`
`Source: Ex. MOTI [3003], Lehr at ¶ 13
`24
`
`
`
`PHOSITA would not have found it obvious to combine Lehr and Cockrell with
`Kristiansen
`The proposed modification of Lehr provides no expectation of success –
`Petition's rationale for combining Lehr with Kristiansen is equally inapplicable:
`
`Source: Ex. MOTI [3004], Declaration of Expert Kevin Trahan at ¶ 32
`25
`
`
`
`PHOSITA would not have found it obvious to combine Lehr and Cockrell with
`Kristiansen
`
`The Proposed modifications to Lehr are beyond one of ordinary skill in the art:
`
`Source: Ex. MOTI [3004], Declaration of Expert Kevin Trahan at ¶ 34
`26
`
`
`
`PHOSITA would not have found it obvious to combine Lehr, Cockrell, Kristiansen,
`Slup, and Streich
`
`Secondary Indicia of Non-obviousness weighs in favor of patentability:
`
`Source: Patent Owner's Response, Paper 20 at p. 29
`27
`
`
`
`PHOSITA would not have found it obvious to combine Lehr, Cockrell, Kristiansen,
`Slup, and Streich
`
`Secondary Indicia of Non-obviousness weighs in favor of patentability:
`
`Source: Patent Owner's Response, Paper 20 at p. 30
`28
`
`
`
`PHOSITA would not have found it obvious to combine Lehr, Cockrell, Kristiansen,
`Slup, and Streich
`
`Secondary Indicia of Non-obviousness weighs in favor of patentability:
`
`Source: Patent Owner's Response, Paper 20 at p. 30
`29
`
`
`
`Lehr, Cockrell, Slup, and Streich
`
`– Claims 17 is patentable over the
`combination of Lehr, Cockrell, Kristiansen,
`Slup, and Streich
`
`30
`
`
`
`Lehr, Cockrell, Slup, and Streich
`
`INDEPENDENT CLAIM 17:
`
`Source: Ex. MOTI[3001], U.S. Patent No. 8,079,413 at p. 18
`31
`
`
`
`PHOSITA would not have found it obvious to combine Lehr and Cockrell with
`Kristiansen
`
`The Proposed modifications to Lehr are based on impermissible hindsight:
`
`Source: Preliminary Response, Paper 14 at p. 11
`32
`
`
`
`Petitioner has failed to present a prima facie case of obviousness based on the
`asserted prior art
`
`Source: Patent Owner's Response, Paper 20 at p. 8
`33
`
`
`
`For at least the foregoing reasons, Claims 1-20 of the '413
`Patent are patentable over Lehr, Cockrell, Kristiansen, Slup,
`Streich, and McKeachnie
`
`34
`
`
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