Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 31
`
`
` Entered: September 2, 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.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`MOTI Ex. [2002] p. 1
`
`
`571-272-7822
`
`
`
`
`Paper 31
`
`
` Entered: September 2, 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.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`MOTI Ex. [2002] p. 1
`
`
`
`IPR2013-00231
`Patent 8,079,413 B2
`
`
`I. BACKGROUND
`McClinton Energy Group, LLC (“McClinton”) filed a Petition on
`
`April 2, 2013, requesting an inter partes review of claims 1–20 (“the
`challenged claims”) of U.S. Patent No. 8,079,413 B2 (Ex. 1001, “the
`’413 patent”). Paper 3 (“Pet.”). Magnum Oil Tools International, Ltd.
`(“Magnum”) timely filed a Preliminary Response. Paper 14 (“Prelim.
`Resp.”). Taking into account the information presented in McClinton’s
`Petition, as well as the arguments presented in Magnum’s Preliminary
`Response, the Board determined that the information presented in the
`Petition demonstrated that there was a reasonable likelihood that McClinton
`would prevail in challenging claims 1–20 as unpatentable under 35 U.S.C.
`§ 103(a). Pursuant to 35 U.S.C. § 314, the Board instituted this proceeding
`on September 23, 2013, as to all of the challenged claims of the ’413 patent.
`Paper 16 (“Dec.”).
`During this proceeding, Magnum timely filed a Patent Owner
`Response (Paper 20, “PO Resp.”), and McClinton timely filed a Reply to the
`Patent Owner Response (Paper 22, “Pet. Reply”). An oral hearing was held
`on May 8, 2014. Paper 30 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(c). This decision is a final
`written decision under 35 U.S.C. § 318(a) as to the patentability of the
`challenged claims. Based on the record before us, McClinton has
`demonstrated by a preponderance of the evidence that claims 1–20 are
`unpatentable.
`
`A. The ’413 Patent
`The ’413 patent relates to downhole tools that are set within a
`wellbore with a lower shear mechanism. Ex. 1001, 1:13–15. The ’413
`
`2
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`MOTI Ex. [2002] p. 2
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`patent discloses that bridge plugs, packers, and fracking (“frac”) plugs are
`downhole tools that typically are used to permanently, or temporarily, isolate
`one wellbore zone from another. Id. at 1:17–19. Such isolation is often
`necessary to pressure test, perforate, frac, or simulate a zone of the wellbore,
`without impacting or communicating with other zones within the wellbore.
`Id. at 1:19–22. Plugs typically are removed, or otherwise compromised, in
`order to reopen or restore fluid communication through the wellbore. Id. at
`1:22–24.
`The ’413 patent discloses that the process of removing permanent,
`non-retrievable plugs, or packers, typically includes drilling or milling.
`Ex. 1001, 1:25–26. However, problems sometimes occur during the
`removal or drilling of such non-retrievable plugs. Id. at 1:29–31. For
`instance, the non-retrievable plug components can bind upon the drill bit and
`rotate within the casing string, thereby resulting in extremely long drill-out
`times, excessive casing wear, or both. Id. at 1:31–34.
`The ’413 patent also discloses that certain completion or production
`activities may require several plugs or plug types that run in series.
`Ex. 1001, 1:46–48. However, the uncertainty in the number and types of
`plugs that may be required typically leads to the over-purchase, or under-
`purchase, of the appropriate number and types of plugs, thereby resulting in
`fiscal inefficiencies or field delays. Id. at 1:54–58. The ’413 patent solves
`these problems by providing a downhole tool that performs the following
`functions: (1) seals the wellbore at wellbore conditions effectively; (2) may
`be removed from the wellbore quickly, easily, or reliably; and (3) is capable
`of being configured in the field to perform one or more functions. Id. at
`1:59–62.
`
`3
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`MOTI Ex. [2002] p. 3
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`
`Figure 1B of the ’413 patent, reproduced below, illustrates a partial
`sectional view of an insert that may be threaded to, or disposed within, a
`plug. Ex. 1001, 2:8–10; 3:33–35.
`
`
`Figure 1B illustrates a partial sectional view of
`shearable insert 100B for a plug.
`
`The ’413 patent discloses that one or more shearable threads 130 can be
`disposed or formed on the inner surface of body 102. Ex. 1001, 3:47–48.
`Shearable threads 130 can be used to couple insert 100B to another insert
`100 (illustrated in Figure 1A) or 100B, setting tool, tubing string, plug, or
`other tool. Id. at 3:48–51.
`
`Figure 2A of the ’413 patent, reproduced below, illustrates a partial
`sectional view of a plug configured with the insert 100 or 100B. Ex. 1001,
`2:11–13; 5:21–24.
`
`4
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`MOTI Ex. [2002] p. 4
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`Patent 8,079,413 B2
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`
`
`Figure 2A illustrates a partial sectional view of plug 200
`configured with insert 100 or 100B.
`
`The ’413 patent discloses that plug 200 includes mandrel or body 210
`having first or upper end 207 and second or lower end 208. Id. at 5:24–26.
`Insert 100B can be threaded to, or otherwise disposed within, plug 200 at
`lower end 208 of body 210. Id. at 5:34–35. A setting tool, tubing string,
`plug, or other tool can enter bore 255 through first end 207 of body 210 and
`can be threaded to, coupled to, or disposed within insert 100 or 100B. Id. at
`5:36–39. Shearable threads 130 on insert 100 or 100B can be sheared,
`fractured, or otherwise deformed, thereby releasing the setting tool, tubing
`string, plug, or other tool from plug 200. Id. at 5:39–42.
`B. Illustrative Claim
`Of the challenged claims, claims 1, 7, and 17 are independent claims.
`
`Claims 2–6 directly depend from independent claim 1, claims 8–16 directly
`
`5
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`MOTI Ex. [2002] p. 5
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`Patent 8,079,413 B2
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`or indirectly depend from independent claim 7, and claims 18–20 directly or
`indirectly depend from independent claim 17. Independent claim 1 is
`illustrative of the invention of the ’413 patent and is reproduced below:
`
`extending
`
`A plug for isolating a wellbore, comprising:
`1.
`
`a body having a first end and a second end;
`
`at least one malleable element disposed about the body;
`
`at least one slip disposed about the body;
`
`at least one conical member disposed about the body; and
`
`an insert screwed into an inner surface of the body
`
`proximate [to] 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
`
`
`
`therethrough;
`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.
`
`Ex. 1001, 13:56–14:7 (emphases added).
`C. Related Proceedings
`McClinton indicates that the ’413 patent was asserted against it in
`
`Magnum Oil Tools Int’l LLC v. Tony D. McClinton, No. 2:12-cv-00099
`(S.D. Tex.). Pet. 1. Both parties indicate that the ’413 patent is related to
`the following three patent applications, two of which already have issued as
`patents: (1) U.S. Patent Application No. 12/317,497, filed December 23,
`2008—now U.S. Patent No. 8,496,052; (2) U.S. Patent Application No.
`13/329,077, filed December 16, 2011—now U.S. Patent No. 8,459,346; and
`
`6
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`MOTI Ex. [2002] p. 6
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`(3) U.S. Patent Application No. 13/329,096, filed December 16, 2011.
`Pet. 1; Prelim. Resp. 5.
`
`
`
`D. Prior Art Relied Upon
`McClinton relies upon the following prior art references:
`Cockrell
`US 4,437,516
`
`Mar. 20, 1984
`Slup
`
`US 6,708,768 B2
`
`Mar. 23, 2004
`Lehr
`
`US 2007/0151722 A1
`July 5, 2007
`Streich
`
`US 5,224,540
`
`July 6, 1993
`McKeachnie US 7,350,582 B2
`
`Apr. 1, 2008
`Kristiansen
`US 4,595,052
`
`June 17, 1986
`
`
`Ex. 1005
`Ex. 1006
`Ex. 1007
`Ex. 1008
`Ex. 1009
`Ex. 1010
`
`E. Grounds of Unpatentability
`We instituted this proceeding based on the grounds of unpatentability
`set forth in the table below.
`
`7
`
`MOTI Ex. [2002] p. 7
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`
`15
`
`17–19
`
`References1
`Challenged Claims Basis
`1–3, 5–8, 12, and 13 § 103(a) Lehr, Cockrell, and Kristiansen
`4 and 9–11
`§ 103(a) Lehr, Cockrell, Kristiansen, and Slup
`14 and 16
`§ 103(a) Lehr, Cockrell, Kristiansen, and Streich
`§ 103(a) Lehr, Cockrell, Kristiansen, Streich, and
`McKeachnie
`§ 103(a) Lehr, Cockrell, Kristiansen, Slup and
`Streich
`§ 103(a) Lehr, Cockrell, Kristiansen, Slup,
`Streich, and McKeachnie
`
`20
`
`
`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, we construe a claim by applying the
`
`broadest reasonable interpretation in light of the specification of the patent in
`which it appears. 37 C.F.R. § 42.100(b); see Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`1. Claim Phrases Previously Construed
`In its Petition, McClinton provided a construction for each of the
`
`following claim phrases: (1) “first end” and “second end”; (2) “shearable
`
`1 For each of the grounds of unpatentability instituted in this proceeding,
`Kristiansen was omitted inadvertently from the statement of the ground of
`unpatentability, yet nonetheless included in the corresponding analysis. See,
`e.g., Pet. 44, 46–47. In the Decision to Institute, we treated each incorrect
`statement of the ground of unpatentability as mere harmless error and
`presumed that McClinton intended to assert that claims 1–20 are
`unpatentable under 35 U.S.C. § 103(a) based, in whole or in part, on the
`combination of Lehr, Cockrell, and Kristiansen. Accord Prelim. Resp. 20–
`21 (confirming that the grounds of unpatentability asserted by McClinton
`were based, in whole or in part, on the combination of Lehr, Cockrell, and
`Kristiansen).
`
`8
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`MOTI Ex. [2002] p. 8
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`threads”; and (3) “the first and second ends of the body each comprise anti-
`rotation features formed thereon.” Pet. 17–22. In its Preliminary Response,
`Magnum only contested McClinton’s claim constructions with respect to
`“shearable threads” and “the first and second ends of the body each
`comprise anti-rotation features formed thereon.” Prelim Resp. 7–9. In the
`Decision to Institute, we construed each claim phrase identified by
`McClinton. Dec. 9–14.
`
`During trial, McClinton and Magnum did not dispute our claim
`constructions for the claim phrases identified above. We discern no reason
`to alter our claim construction for each claim phrase set forth in the Decision
`to Institute in this Final Written Decision. For convenience, each claim
`phrase we construed in the Decision to Institute is reproduced in the table
`below.
`Claim Phrase(s)
`“first end” and “second
`“end” (claims 1, 3, 7,
`12, and 17)
`“shearable threads”
`(claims 1, 7, 17, and 19)
`
`Claim Construction in the Decision to Institute
`“a first end of a downhole tool relative to a
`second end of the downhole tool”
`
`“spiral ridges that are designed to shear, fracture,
`break, or otherwise deform thereby releasing two
`or more engaged components, parts, or things”
`“the anti-rotation features are formed on the first
`and second ends of the body”
`
`“the first and second
`ends of the body each
`comprise anti-rotation
`features formed
`thereon” (claims 3 and
`12)
`
`2. “Setting tool” (claims 1–20)
`In its Patent Owner Response, Magnum contends that, since
`McClinton filed its Petition, a dispute has arisen between the parties in the
`
`9
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`MOTI Ex. [2002] p. 9
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`related district court case regarding the claim term “setting tool.”
`PO Resp. 10. Magnum alleges that, in the related district court case,
`McClinton proposed a narrow claim construction for the claim term “setting
`tool” that was not accepted by the court, and should not be accepted for
`purposes of this proceeding, because it is not the broadest reasonable
`interpretation. Id. at 11. Magnum argues that the broadest reasonable
`interpretation of the claim term “setting tool” is “any device used in the
`installation process of the plug within the wellbore, and includes any outer
`cylinder, adapter rod, and/or extender.” Id. at 13. To support its claim
`construction, Magnum directs us to various portions of the Specification of
`the ’413 patent, as well as the prosecution history of the ’413 patent. Id. at
`11–12 (citing Ex. 1001, 8:35–38, 46–52, 62–67; Ex. 3002).
`In response, McClinton acknowledges that the court overseeing the
`related case accepted Magnum’s claim construction for the claim term
`“setting tool.” Pet. Reply 14. McClinton then urges us to apply that claim
`construction in this proceeding because it is the broadest reasonable
`interpretation. Id. In addition, upon inquiry during oral argument,
`McClinton agrees that Magnum’s proposed claim construction for the claim
`term “setting tool” is the broadest reasonable interpretation for purposes of
`this proceeding. Tr. 6:24–7:25.
`
`Upon reviewing the Specification of the ’413 patent, we do not find
`an explicit definition for the claim term “setting tool.” Therefore, we refer
`to its ordinary and customary meaning, as would be understood by one of
`ordinary skill in the art in the context of the entire disclosure. In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). For purposes
`of this proceeding, we adopt Magnum’s claim construction because it is
`
`10
`
`MOTI Ex. [2002] p. 10
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`consistent with the ordinary and customary meaning of a “setting tool,” as
`would be understood by one with ordinary skill in the art in light of the
`Specification of the ’413 patent.
`3. “The outer surface of the insert” (claim 2)
`Dependent claim 2 recites “the outer surface of the insert has a larger
`
`diameter and a small diameter forming a shoulder therebetween, the
`shoulder adapted to anchor the insert within the body.” Ex. 1001, 14:8–11
`(emphasis added). Neither McClinton nor Magnum provides an explicit
`construction for this claim phrase. As a first step in our analysis, we must
`ascertain its scope and meaning. Upon reviewing the Specification of the
`’413 patent, we note the following disclosure:
`[t]he outer surface of the insert 100, 100B can have a
`constant diameter, or its diameter can vary, as depicted in FIGS.
`1A and 1B. For example, the outer surface can include a small
`first diameter portion or area 140 that transitions to a larger,
`second diameter portion or area 142, forming a ledge or
`shoulder 144 therebetween.
`
`Ex. 1001, 4:41–46. This cited disclosure does not define explicitly the claim
`phrase “the outer surface of the insert.” Despite the lack of an explicit
`definition, however, this claim phrase is relatively simple to understand.
`Applying the broadest reasonable interpretation standard in light of the
`Specification of the ’413 patent, we construe the claim phrase “the outer
`surface of the insert” to be “any surface located on the outside of the insert,
`including the top, bottom, and sides.”
`B. The Level of Ordinary Skill in the Art
`In determining the level of one with ordinary skill in the art, various
`factors may be considered, including “type of problems encountered in the
`
`11
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`MOTI Ex. [2002] p. 11
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`art; prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955,
`962 (Fed. Cir. 1986)). There is uncontested evidence in the record before us
`that reflects the knowledge level of a person with ordinary skill in the art.
`McClinton’s expert, Dr. Gary R. Wooley, attests that a person with ordinary
`skill in the art would be an individual with a bachelor’s degree in an
`engineering discipline, such as mechanical engineering, who possesses two
`years of work experience with frac plugs used in the fracture simulation of
`oil and gas wells. Ex. 1020 ¶ 9; see PO Resp. 28; Ex. 3004 ¶ 34.
`C. 35 U.S.C. § 103(a) Grounds of Unpatentability Based
`on Lehr, Cockrell, and Kristiansen
`McClinton contends that claims 1–3, 5–8, 12, and 13 are unpatentable
`under § 103(a) over the combination of Lehr, Cockrell, and Kristiansen.
`Pet. 44–49. In support of this alleged ground of unpatentability, McClinton
`provides explanations as to how the proffered combination teaches each
`claim limitation. Id. McClinton also submits the Declaration of Dr. Wooley
`(Ex. 1020 ¶¶ 71–80) to support its positions. Upon reviewing McClinton’s
`Petition and supporting evidence, as well as Magnum’s Patent Owner
`Response and supporting evidence, we determine that McClinton has
`demonstrated by a preponderance of the evidence that claims 1–3, 5–8, 12,
`and 13 are unpatentable over the combination of Lehr, Cockrell, and
`Kristiansen.
`
`We begin our analysis with the principles of law that generally apply
`to a ground of unpatentability based on obviousness, followed by brief
`
`12
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`MOTI Ex. [2002] p. 12
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`discussions of Lehr, Cockrell, and Kristiansen, and then we turn to the
`arguments presented by both McClinton and Magnum that are directed
`towards each challenged claim.
`1. Principles of law
`A patent claim is unpatentable under § 103(a) 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 said 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; (3) the level
`of skill in the art; and (4) where in evidence, so-called secondary
`considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We
`also recognize that prior art references must be “considered together with the
`knowledge of one of ordinary skill in the pertinent art.” In re Paulsen,
`30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562
`(CCPA 1978)). We analyze the ground of unpatentability based on the
`combination of Lehr, Cockrell, and Kristiansen with the principles identified
`above in mind.
`
`2. Lehr
`Lehr generally relates to a release device that may be used with
`
`downhole setting tools. Ex. 1007 ¶ 3. In particular, Lehr discloses that the
`release device deforms to provide a releasable detachment mechanism for a
`setting tool used to set a downhole tool, such as a frac plug. Id.
`
`13
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`MOTI Ex. [2002] p. 13
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`Figure 1 of Lehr, reproduced below, illustrates a cross-sectional view
`
`of a setting tool, adapter kit, and packer, wherein the packer is retained on
`the adapter kit by the deformable release device. Ex. 1007 ¶¶ 25, 38.
`
`
`
`Figure 1 illustrates a cross-sectional view of
`a setting tool, adapter kit, and packer.
`
`Lehr discloses wireline adapter kit 20 that includes adapter sleeve 40 and
`release stinger 50. Ex. 1007 ¶ 39. Adapter sleeve 40 is threaded onto
`wireline pressure setting assembly 10 and extends down to packer assembly
`70, e.g., frac plug. Id. Plunger 80 is threaded onto the downhole end of
`release stinger 50. Id.
`
`Lehr discloses that packer assembly 70 includes upper cap 71, upper
`slip 72, upper cone 73, elastomeric packing element 74, lower cone 75,
`lower slip 76, lower cap 77, and mandrel 78. Ex. 1007 ¶ 40. Mandrel 78
`provides general support for each of the components of packer assembly 70.
`Id. During the process of setting packer assembly 70, deformable release
`device 30 retains the packer assembly on release stinger 50. Id. ¶ 44.
`Deformable release device 30 contacts protruding section 83 of plunger 80,
`which is attached to the lower end of release stinger 50. Id. Retaining pins
`31 secure deformable release device 30 to mandrel 78 of packer assembly
`70. Id. According to one embodiment disclosed in Lehr, when a
`
`14
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`MOTI Ex. [2002] p. 14
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`predetermined upward force is applied to plunger 80, protruding portion 83
`of plunger 80 deforms beveled portion 32 of deformable release device 30,
`allowing for release of plunger 80. Id. ¶ 50.
`3. Cockrell
`Cockrell relates to downhole tools that are used in the development of
`
`oil and gas wells for providing an annular seal and/or anchoring means
`between one conduit disposed in another. Ex. 1005, 1:7–10. In particular,
`the invention disclosed in Cockrell pertains to a combination shear type and
`rotational type release mechanism for downhole tools. Id. at 1:10–13.
`
`Figure 1C of Cockrell, reproduced below, illustrates a vertical
`elevation view, in a central longitudinal section, of a downhole well
`apparatus that includes the combination shear type and rotational type
`release mechanism. Ex. 1005, 2:63–66, 3:37–40.
`
`
`Figure 1C illustrates packer 10 that is characterized by elongated inner
`tubular member or mandrel 12, which includes threads 134 adapted to
`engage frangible release member 136.
`
`15
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`MOTI Ex. [2002] p. 15
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`
`
`Cockrell discloses that mandrel 12 includes threads 134 extending
`
`over a portion of the outer cylindrical surface of the mandrel in the vicinity
`of nut member 126. Ex. 1005, 5:40–42. Mandrel 12 is engaged by frangible
`release member 136, which comprises a cylindrical sleeve that includes
`respective external and internal threads 138 and 140 adapted to cooperate,
`respectively, with threads 128 and 134. Id. at 5:43–47. Depending on the
`number of cooperating threads 134–140 in engagement, it is possible to
`determine the axial force necessary to effect shearing of threads 140 in order
`to permit relative upward axial movement of mandrel 12 with respect to nut
`member 126 when the latter is engaged with head 56 through resilient collar
`116. Id. at 5:54–60.
`
`4. Kristiansen
`Kristiansen generally relates to a bridge plug that is used for sealing,
`
`in transitory or permanent form, the perforations lined with pipes or tubes of
`insulation, particularly those that are used in oil wells or the like. Ex. 1010,
`1:6–10. Figure 13a of Kristiansen, reproduced below, illustrates the cross-
`sectional view of a converter plug. Id. at 5:4–5, 30–31.
`
`
`Figure 13a illustrates a converter plug.
`Kristiansen discloses threading converter plug 4 in body 6 of the
`
`bridge plug (illustrated in Figure 1). Ex. 1010, 5:30–31. Another
`embodiment, shown in Figure 17 of Kristiansen, reproduced below,
`
`16
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`MOTI Ex. [2002] p. 16
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`illustrates a cross-sectional view of converter plug 4' as a calibrated element.
`Id. at 5:13–14, 7:13–16.
`
`
`Figure 17 illustrates converter plug 4' threaded into the body of plug 6.
`5. Claims 1 and 7
`As an initial matter, Magnum states in its Patent Owner Response that
`
`it incorporates by reference all the arguments presented in its Preliminary
`Response. PO Resp. 19. In its Reply, McClinton contends that our rules
`strictly prohibit incorporating arguments by reference. Pet. Reply 12 (citing
`37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference
`from one document into another document. Combined motions, oppositions,
`replies, or other combined documents are not permitted.”)). We agree with
`McClinton. Pursuant to 37 C.F.R. § 42.6(a)(3), a party involved in a
`proceeding before us is forbidden from incorporating arguments from one
`document—in this case, the Preliminary Response—into another
`document—namely, the Patent Owner Response. Therefore, we will only
`consider the arguments developed and presented in the Patent Owner
`Response, itself.
`
`17
`
`MOTI Ex. [2002] p. 17
`
`
`
`IPR2013-00231
`Patent 8,079,413 B2
`
`
`a. The Combination of Lehr, Cockrell, and Kristiansen
`Properly Accounts for Each Limitation Recited in
` Independent Claims 1 and 7
`
`Independent claim 1 recites, in relevant parts, “an insert screwed into
`an inner surface of the body . . . adapted to receive a setting tool,” “the insert
`comprises one or more shearable threads disposed on an inner surface,” “the
`insert has a passageway,” “the one or more shearable threads are adapted to
`deform to release the setting tool . . . thereby providing a flow passage
`through the insert and the body.” Ex. 1001, 13:56–14:7. Independent claim
`7 recites similar claim limitations. Id. at 14:26–49.
`In its Petition, McClinton contends that the collective teachings of
`Lehr, Cockrell, and Kristiansen render obvious the claim limitations
`identified above. Pet. 44–49. In particular, McClinton argues that Lehr’s
`disclosure of a setting tool that connects to an insert, i.e., deformable release
`device 30, in a downhole plug, i.e., packer assembly 70 or frac plug, teaches
`all the claim limitations recited in independent claim 1, and similarly recited
`in independent claim 7, except: “(1) the requirement . . . of threads that
`shear in response to a predetermined axial force; and (2) the requirement . . .
`of threads on the outside of the insert that screw into the inner surface of the
`plug body.” Id. at 45–47. McClinton relies upon Cockrell’s shearable
`threads 134, 138, and 140 to teach threads that shear in response to a
`predetermined axial force, as well as Kristiansen’s insert 4 that is threaded
`into the body of plug 6 to teach threads on the outside of the insert that
`screw into the inner surface of the plug body. See, e.g., id. at 29–33, 46–47
`(citing Ex. 1005, 5:43–47, 54–60, fig. 1C; Ex. 1010, 5:30–31, figs. 13 and
`17).
`
`18
`
`MOTI Ex. [2002] p. 18
`
`
`
`IPR2013-00231
`Patent 8,079,413 B2
`
`
`In its Patent Owner Response, Magnum contends that Lehr’s
`deformable release device 30 is not located within an inner surface of the
`plug body, or otherwise made to attach or secure to the inner surface of the
`plug body. PO Resp. 21 (citing Ex. 1005, figs. 3A and 8A; Ex. 3004 ¶¶ 26–
`28). Magnum then argues that McClinton improperly relied upon Lehr’s
`deformable release device 30 to teach the “insert,” as recited in independent
`claims 1 and 7. Id. at 21–22. Magnum also argues that neither Cockrell nor
`Kristiansen cure the deficiency identified above in Lehr. Id. at 22.
`In its Reply, McClinton asserts that Magnum’s argument that Lehr’s
`deformable release device 30 is not located within the inner surface of the
`plug body ignores Figures 1, 4A, and 4B of Lehr, all of which illustrate
`deformable release device 30 located within the body of the plug.
`Pet. Reply. 4 (citing Ex. 1007, figs. 1, 4A, and 4B). McClinton argues that
`its expert, Dr. Wooley, corroborated its position by providing citations to
`relevant passages and figures in Lehr. Id. (citing Ex. 1020 ¶ 80—
`specifically, pages 59–60). McClinton also argues that Magnum’s expert,
`Kevin Trahan, conceded during cross-examination that Lehr’s deformable
`release device 30 may be located within the body of the plug. Id. at 4–5
`(citing Ex. 1026, 40:17–41:4). We agree with McClinton that Lehr discloses
`at least one embodiment where deformable release device 30 is located
`within the body of the plug.
`Figure 4A of Lehr, an annotated version of the relevant portion of
`which is reproduced below, illustrates one embodiment of packer assembly
`70, e.g., frac plug, being run into the wellbore using wireline adapter kit 20
`and deformable release device 30. Ex. 1007 ¶¶ 30, 51.
`
`19
`
`MOTI Ex. [2002] p. 19
`
`
`
`IPR2013-00231
`Patent 8,079,413 B2
`
`
`
`As shown in the relevant portion of Figure 4A of Lehr, deformable
`
`release device 30 is located within lower cap 77 of packer assembly 70 (the
`red shaded area). See Ex. 1007 ¶¶ 39 (“packer assembly 70, such as a
`Python Frac Plug Assembly”), 41 (“packer assembly 70 (i.e., lower cap 77,
`lower cone 75, and lower slip 76)”). Based on the embodiment illustrated in
`Figure 4A of Lehr, as well as the related description of packer assembly 70,
`we are persuaded that McClinton has presented sufficient evidence to
`support a finding that Lehr’s deformable release device 30 may be located
`within the body of the frac plug.
`b. McClinton Provides Sufficient Rationales to Combine
`Lehr, Cockrell, and Kristiansen
`
`In its Patent Owner Response, Magnum contends that McClinton
`improperly asserts that Alpha’s shear insert ring2 is similar to Lehr’s
`deformable release device 30. PO Resp. 22–23. Magnum directs us to the
`
`2 In its Petition, McClinton proposes numerous grounds of unpatentability
`based, in part, on Alpha. Pet. 27–44. We did not institute an inter partes
`review as to those grounds of unpatentability. Notwithstanding, 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 30, 47.
`
`20
`
`MOTI Ex. [2002] p. 20
`
`
`
`IPR2013-00231
`Patent 8,079,413 B2
`
`Declaration of Mr. Trahan to supports its arguement that Alpha and Lehr
`disclose completely different plugs with different components, structures,
`and methods of operation. Id. at 23 (citing Ex. 1004, figure of Alpha’s shear
`insert ring; Ex. 1007, fig. 8A; Ex. 3004 ¶ 23). Based on those differences,
`Magnum asserts that simply referring to how one of ordinary skill in the art
`would combine the teachings of Alpha, Cockrell, and Kristiansen does not,
`in any way, describe how one of ordinary skill in the art would combine the
`teachings of Lehr, Cockrell, and Kristiansen. Id. at 23–24. Along the same
`lines, Magnum contends that McClinton fails to establish a reasonable
`expectation of success for combining the teachings of Lehr, Cockrell, and
`Kristiansen to arrive at the claimed invention. Id. at 25–26. Magnum also
`generally alleges that modifying Lehr with the teachings of Cockrell and
`Kristiansen is beyond the level of an ordinarily skilled artisan. Id. at 27–28.
`In its Reply, McClinton contends that the Petition, along with the
`corroborating testimony of Dr. Wooley, explains why one with ordinary skill
`in the art would combine the teachings of Lehr, Cockrell, and Kristiansen.
`Pet. Reply 9–10 (citing Pet. 44–47; Ex. 1020 ¶¶ 71–80). McClinton
`recognizes that Magnum directs us to the Declaration of Mr. Trahan to
`demonstrate the differences between Alpha and Lehr, but asserts that
`Mr. Trahan simply offers conclusory statements in that regard. Id. at 10.
`McClinton then provides a number of examples where Mr. Trahan admitted
`during cross-examination that Alpha and Lehr disclose similar features—
`namely, frac plugs that have a body, malleable element, slip, conical
`member, inserts that are bottom-set, etc. Id. at 10–11. Based on those
`alleged similarities, McClinton argues that Mr. Trahan’s cross-examination
`testimony supports combining the teachings of Lehr, Cockrell, and
`
`21
`
`MOTI Ex. [2002] p. 21
`
`
`
`IPR2013-00231
`Patent 8,079,413 B2
`
`Kristiansen in the same manner as combining the teachings of Alpha,
`Cockrell, and Kristiansen. Id. at 11.
`We do not credit Mr. Trahan’s testimony concerning the differences
`between Alpha and Lehr because it is conclusory in nature. According to
`37 C.F.R. § 42.65(a), “[e]xpert testimony that does not disclose the
`underlying facts or data on which the opinion is based is entitled to little or
`no weight.” See Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
`776 F.2d 281, 294 (Fed. Cir. 1985) (stating a lack of objective support for
`expert opinion “may render the testimony of little probative value in [a
`patentability] determination”). In his Declaration, Mr. Trahan testifies that:
`the deformable
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