Trial@uspto.gov
`571-272-7822
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` Paper 33
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` Entered: October 29, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`McCLINTON ENERGY GROUP, LLC,
`Petitioner,
`
`v.
`
`MAGNUM OIL TOOLS INTERNATIONAL, LTD.,
`Patent Owner.
`____________
`
`Case IPR2013-00231
`Patent 8,079,413 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`DECISION
`Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`571-272-7822
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` Paper 33
`
`
`
`
` Entered: October 29, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`McCLINTON ENERGY GROUP, LLC,
`Petitioner,
`
`v.
`
`MAGNUM OIL TOOLS INTERNATIONAL, LTD.,
`Patent Owner.
`____________
`
`Case IPR2013-00231
`Patent 8,079,413 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`DECISION
`Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`IPR2013-00231
`Patent 8,079,413 B2
`
`I. INTRODUCTION
`Patent Owner, Magnum Oil Tools International, Ltd. (“Magnum”), timely
`filed a Request for Rehearing under 37 C.F.R. § 42.71(d) on October 2, 2014.
`Paper 32, “Req. Reh’g.” Magnum’s Request for Rehearing seeks reconsideration
`of the Final Decision (Paper 31, “Dec.”) entered on September 2, 2014, in which
`we determined that claims 1–20 (“the challenged claims”) of U.S. Patent No.
`8,079,413 B2 (“the ’413 patent”) are unpatentable under 35 U.S.C. § 103(a). In its
`Request for Rehearing, Magnum presents the following arguments: (1) the Final
`Decision was based on a new ground of unpatentability that was not presented by
`McClinton Energy Group, LLC (“McClinton”) in its Petition, and Magnum was
`denied an opportunity to respond to that ground; (2) the Final Decision was based
`on facts that were not of record; (3) we misapprehended or overlooked whether the
`cited prior art teaches a particular claim limitation—namely, “an insert . . . adapted
`to receive a setting tool that enters the body through the first end thereof,” as
`recited in independent claims 1 and 7; and (4) the factual findings in the Final
`Decision were not supported by the evidence of record, much less substantial
`evidence. Req. Reh’g. 3–12. For the reasons discussed below, we have
`reconsidered the Final Decision, but we decline to modify the Final Decision.
`
`
`II. STANDARD OF REVIEW
`A request for rehearing must identify specifically all matters the party
`believes we misapprehended or overlooked, and the place where each matter was
`addressed previously in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d);
`see also 37 C.F.R. § 42.120(a) (stating that a patent owner response is filed as an
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`IPR2013-00231
`Patent 8,079,413 B2
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`opposition). With this in mind, we will address the arguments presented by
`Magnum in turn.
`
`
`III. ANALYSIS
`A. The Final Decision Does Not Include a New Ground of Unpatentability
`Magnum contends that the Final Decision includes a new ground of
`unpatentability that was not presented by McClinton in its Petition. Req. Reh’g. 3.
`In particular, Magnum argues that neither the Petition nor supporting evidence
`includes the conclusion that “‘the simple substitution of shearable threads, as
`taught by Cockrell (Ex. 1005, 5:43–47, 54–60), for retaining pins 31 that
`secure . . . deformable release device 30, as taught by Lehr (Ex. 1007 ¶ 44),
`would . . . yield a predictable result.’” Id. (quoting Dec. 23). Rather, Magnum
`argues that the position taken by McClinton in its Petition is based on a statement
`made by McClinton’s expert, Dr. Gary R. Wooley—namely, that ‘“[i]t would have
`been obvious to substitute the device with shearable threads of Cockrell for the
`deformable release device of Lehr . . . .”’ Id. at 4 (quoting Ex. 1020 ¶ 75)
`(emphasis omitted). Magnum then asserts that it was not provided an opportunity
`to respond to this purported, new rationale to combine. Id.
`
`We disagree with Magnum that the Final Decision includes a new ground of
`unpatentability. We instituted an inter partes review of the challenged claims
`based on six grounds of unpatentability asserted by McClinton, each of which is
`based, in part, on the combination of Lehr, Cockrell and Kristiansen. Paper 16, 26.
`As we explained in the Final Decision, McClinton proposed numerous grounds of
`unpatentability based, in part, on Alpha in its Petition. Dec. 20, n. 2 (citing Pet.
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`IPR2013-00231
`Patent 8,079,413 B2
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`27–44). We did not institute an inter partes review as to those grounds of
`unpatentability. Notwithstanding this, to support its argument that one with
`ordinary skill in the art would have combined the teachings of Lehr, Cockrell, and
`Kristiansen, McClinton refers back to its discussion on how one with ordinary skill
`in the art would have combined the teachings of Alpha, Cockrell, and Kristiansen.
`Id. at 23 (citing Pet. 47 (“[The grounds of unpatentability based, in part, on Alpha]
`also explain[] why it was obvious to a person of skill to combine Cockrell and
`Kristiansen with other downhole plug prior art. The same analysis applies to
`combinations using Lehr as a base reference . . . .”).
`
`When asserting the grounds of unpatentability based on the combination of
`Alpha, Cockrell and Kristiansen, McClinton supports its conclusion of obviousness
`by suggesting that it is nothing more than the simple substitution of one known
`element for another to obtain a predictable result—namely, the substitution of
`Cockrell’s shearable threads for the Alpha’s shear ring. Dec. 23 (quoting Pet. 30).
`Based on the guidance provided by McClinton in its Petition, we applied
`essentially the same rationale to combine in the Decision on Institution (Paper 16,
`20–21), and again in our Final Decision to support the conclusion that the
`combination of Lehr, Cockrell and Kristiansen, either standing alone or in
`combination with other cited prior art, renders the challenged claims unpatentable.
`Dec. 22–24.
`
`We disagree then that Magnum was denied due process. The Decision on
`Institution included essentially the same rationale to combine the teaching of Lehr,
`Cockrell, and Kristiansen articulated by McClinton in its Petition. Compare Pet.
`30, 47, with Paper 16, 20–21. Magnum’s Patent Owner Response, which came
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`IPR2013-00231
`Patent 8,079,413 B2
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`after the filing of those papers, also addresses this rationale to combine. Paper 20,
`“PO Resp.” 22–24. We considered this argument presented in Magnum’s Patent
`Owner Response, but we were not persuaded. As such, Magnum had a fair
`opportunity to respond, and did respond, to this rationale to combine in its Patent
`Owner Response. Our determination to adopt this rationale to combine the
`teaching of Lehr, Cockrell, and Kristiansen in the Final Decision did not change
`the thrust of grounds of unpatentability proposed by McClinton in its Petition.
`B. The Conclusion of Obviousness Set Forth in the Final Decision is Based on
`Sufficient Evidence Presented by McClinton in its Petition
`
`Magnum contends that the conclusion of obviousness set forth in the Final
`Decision is based on facts that are not of record. Req. Reh’g. 5. In particular,
`Magnum argues that there is no evidence in the record to support the conclusion
`that “‘the simple substitution of shearable threads, as taught by Cockrell (Ex. 1005,
`5:43–47, 54–60), for retaining pins 31 that secure . . . deformable release device
`30, as taught by Lehr (Ex. 1007 ¶ 44), would . . . yield a predictable result.’” Id.
`(quoting Dec. 23).
`For essentially the same reasons discussed above, we are not persuaded by
`Magnum’s argument that the conclusion of obviousness set forth above is not
`based on the record before us. Moreover, we note that this rationale to combine
`the teachings of Lehr, Cockrell, and Kristiansen indeed is supported by sufficient
`evidence because it includes citations to both Cockrell and Lehr that were provided
`by McClinton in its Petition. See, e.g., Pet. 44–47 (citing Ex. 1007, fig. 1
`(described in more detail in ¶ 44); Ex. 1020 ¶¶ 71–80 (citing Ex. 1005, 5:43–47,
`54–60)).
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`IPR2013-00231
`Patent 8,079,413 B2
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`C. We Did Not Overlook or Misapprehend Whether the Cited Prior Art Teaches
`a Particular Claim Limitation, Especially One that was Presented as a
`Separate Patentability Argument in the Patent Owner Response
`
`Magnum contends that, when determining that the cited prior art renders the
`challenged claims of the ’413 patent unpatentable, we misapprehended or
`overlooked a particular claim limitation. Req. Reh’g. 7. In particular, Magnum
`argues that the combination of Lehr, Cockrell, and Kristiansen does not teach an
`“insert . . . adapted to receive a setting tool that enters the body through the first
`end thereof,” as recited in independent claims 1 and 7. Id. at 7–10. Magnum
`alleges that it presented the same argument in its Patent Owner Response. Id. at 10
`(citing PO Resp. 17, 19–20, 22).
`We do not agree with Magnum that we misapprehended or overlooked
`whether the cited prior art teaches an insert that may be adapted to receive a setting
`tool that enters the body through the first end, as required by independent claims 1
`and 7. In its Patent Owner Response, Magnum simply reiterates this disputed
`claim limitation and generally alleges that the combination of Lehr, Cockrell, and
`Kristiansen does not teach the claimed subject matter recited therein. See, e.g., PO
`Resp. 17, 19–22. Magnum, however, did not provide substantive analysis that
`explains why the collective teachings of Lehr, Cockrell, and Kristiansen relied
`upon by McClinton in its Petition do not teach this disputed claim limitation.
`Instead, the argument presented by Magnum in its Patent Owner Response was
`predicated on whether Lehr’s deformable release device 30 is located within an
`inner surface of the plug body, or otherwise made to attach or secure to the inner
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`Patent 8,079,413 B2
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`surface of the plug body. Id. at 21. We considered this argument presented in
`Magnum’s Patent Owner Response, but we were not persuaded.
`In its Request for Rehearing, Magnum directs us to portions of Lehr,
`Cockrell, and Kristiansen that were not presented in its Patent Owner Response.
`Compare PO Resp. 17, 19–22 (citing Ex. 1007, figs. 3A, 8A; Ex. 3004 ¶¶ 26–28),
`with Req. Reh’g. 8–9 (citing Ex. 1007, ¶¶ 44, 46, and 48, fig. 3B; Ex. 1005; Ex.
`1010, 8:34–36, fig. 1). A request for rehearing is not an opportunity to present new
`arguments or evidence that could have been presented and developed in the Patent
`Owner Response. In other words, we could not have overlooked or
`misapprehended arguments or evidence not presented and developed by Magnum
`in the first instance in its Patent Owner Response. We, therefore, maintain our
`position that McClinton presents sufficient evidence in its Petition to support a
`finding that the combination of Lehr, Cockrell, and Kristiansen teaches an insert
`that may be adapted to receive a setting tool that enters the body through the first
`end, as required by independent claims 1 and 7. Dec. 12 (citing Pet. 44–49;
`Ex. 1020 ¶¶ 71–80).
`D. The Factual Findings Provided by McClinton in its Petition, and Relied
`Upon by Us in the Final Decision, are Supported by a
`Preponderance of the Evidence
`
`Magnum contends that the factual findings in the Final Decision are not
`
`supported by the evidence of record, much less substantial evidence. Req. Reh’g.
`11. In particular, Magnum argues that the evidence of record does not support the
`conclusion that “‘the simple substitution of shearable threads, as taught by
`Cockrell (Ex. 1005, 5:43–47, 54–60), for retaining pins 31 that secure . . .
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`IPR2013-00231
`Patent 8,079,413 B2
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`deformable release device 30, as taught by Lehr (Ex. 1007 ¶ 44), would . . . yield a
`predictable result.’” Id. (quoting Dec. 23). Magnum also argues that the evidence
`of record does not support a finding that the combination of Lehr, Cockrell, and
`Kristiansen teaches each claim limitation recited in the independent claims 1 and 7
`of the ’413 patent, as well as the claims that depend therefrom. Id.
`We understand Magnum’s position to be that the factual findings provided
`by McClinton it its Petition, and relied upon by us in the Final Decision, are not
`supported by a preponderance of the evidence. We do not agree. In an inter partes
`review, the petitioner has the burden of proving a proposition of unpatentability by
`a preponderance of the evidence. 35 U.S.C. § 316(e). As we concluded in the
`Final Decision, McClinton has demonstrated by a preponderance of the evidence
`that the challenged claims of the ’413 patent are unpatentable. Dec. 35.
`For instance, as we explained previously, the rationale to combine the
`teachings of Lehr, Cockrell, Kristiansen set forth in the Final Decision indeed is
`supported by sufficient evidence because it includes citations to both Cockrell and
`Lehr that were provided by McClinton in its Petition. See, e.g., Pet. 44–47 (citing
`Ex. 1007, fig. 1 (described in more detail in ¶ 44); Ex. 1020 ¶¶ 71–80 (citing
`Ex. 1005, 5:43–47, 54–60)). We also maintain our position that McClinton
`presents sufficient evidence in its Petition to support a finding that the combination
`of Lehr, Cockrell, and Kristiansen, standing alone or in combination with other
`cited prior art, teaches each claim limitation recited in independent claims 1 and 7
`of the ’413 patent, as well as the claims that depend therefrom. See generally Dec.
`12–35.
`
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`IPR2013-00231
`Patent 8,079,413 B2
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`IV. CONCLUSION
`For the foregoing reasons, Magnum has not demonstrated that we
`misapprehended or overlooked any matter in determining that the challenged
`claims of the ’413 patent are unpatentable under 35 U.S.C. § 103(a). Accordingly,
`Magnum’s Request for Rehearing is DENIED.
`
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`IPR2013-00231
`Patent 8,079,413 B2
`
`For PETITIONER:
`Jason A. Engel
`Robert M. Barrett
`K&L Gates LLP
`jason.engel.ptab@klgates.com
`robert.barrett.ptab@klgates.com
`
`
`
`For PATENT OWNER:
`Robb D. Edmonds
`N. Alexander Nolte
`John D. Holman
`EDMONDS & NOLTE, P.C.
`redmonds@edmondsnolte.com
`anolte@edmondsnolte.com
`jholman@edmondsnolte.com
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