`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`McCLINTON ENERGY GROUP, LLC, JAYCAR ENERGY GROUP LLC,
`SURF FRAC WELLHEAD EQUIPMENT CO., MOTOR MILLS SNUBBING
`LLC, STAN KEELING, AND TONY D. McCLINTON
`Petitioners
`
`v.
`
`MAGNUM OIL TOOLS INTERNATIONAL, LTD.
`Patent Owner
`
`
`
`Inter Partes Review No. IPR2014-00993
`Patent No. 8,459,346
`
`PATENT OWNER'S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
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`IPR2014-00993
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`TABLE OF CONTENTS
`
`1.0   Introduction ................................................................................................... 1  
`1.1   Related Proceedings ............................................................................. 1  
`1.2   Patent Owner is not estopped from defending the patentability of the
`'346 Patent in this proceeding under 37 C.F.R. § 42.73(d)(3) .......... 2  
`2.0   Summary of the Petition ............................................................................... 4  
`3.0   Summary of the '346 Patent .......................................................................... 5  
`4.0   Claim Interpretation for the ‘346 Patent ....................................................... 8  
`4.1   District Court's Claim Construction Order .......................................... 8  
`4.2   The Petition argues contrary to the Court's Claim Construction Order
`and the ‘346 Patent Specification .................................................... 11  
`5.0   The Petition improperly incorporates by reference from another document
`to support Challenges 1-10 ....................................................................... 13  
`6.0   Challenge Nos. 1-10 should be further denied because the Petition fails to
`thereof, as required in every claim ........................................................... 15  
`7.0   Challenge No. 1 should be further denied because Lehr does not anticipate
`Claims 1-3, 5-21, 23-35, 37, and 38 ......................................................... 18  
`7.1   Lehr does not disclose "shearable threads" on an inner surface of an
`insert ................................................................................................ 20  
`7.2   Lehr does not disclose one or more threads on an outer surface of an
`insert ................................................................................................ 22  
`7.3   Lehr does not disclose shearable threads made of composite material
` 23  
`
`establish the prior art discloses the claim limitation: an insert adapted to
`receive or engage a setting tool that enters the body through the first end
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`IPR2014-00993
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`therethrough or a blocked passageway that restricts fluid flow in
`
`release the setting tool when exposed to a predetermined axial force
`
`7.4   Lehr does not disclose a body adapted to receive a ball that restricts
`fluid flow in at least one direction through the body ...................... 24  
`7.5   Lehr does not disclose an insert having a bore only partially formed
`opposing axial direction therethrough ............................................. 24  
`7.6   Lehr does not disclose the one or more shearable threads are disposed
`proximate the second end of the body ............................................. 25  
`7.7   Lehr does not disclose one or more shearable threads adapted to
`that is less than an axial force required to break the body .............. 26  
`7.8   Lehr does not disclose an insert comprising brass ............................. 27  
`8.0   The Petition should be further denied because the claims are not obvious in
`view of Lehr alone or in combination with the other asserted references 28  
`8.1   Challenge No. 2: Claims 1-38 are not obvious over Lehr ................ 28  
`8.2   Challenge No. 3: Claims 1-38 are not obvious over Lehr in view of
`Slup .................................................................................................. 32  
`8.3   Challenge No. 4: Claims 1-38 are not obvious over Lehr in view of
`Cockrell ........................................................................................... 33  
`8.4   Challenge No. 5: Claims 1-38 are not obvious over Lehr in view of
`Cockrell and Slup ............................................................................ 36  
`8.5   Challenge No. 6: Claims 16, 17, 21-24, 33, 34, 36, and 37 are not
`obvious over Lehr in view of Kristiansen ....................................... 38  
`8.6   Challenge No. 7: Claims 1-38 are not obvious over Lehr in view of
`Cockrell and Kristiansen ................................................................. 40  
`8.7   Challenge No. 8: Claim 1-38 are not obvious over Lehr in view of
`Cockrell, Kristiansen, and Slup ....................................................... 42  
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`8.8   Challenge No. 9: Claim 4 is not obvious over Lehr in view of
`Cockrell, Slup, and McKeachnie ..................................................... 45  
`8.9   Challenge No. 10: Claims 21, 22, 36, and 37 are not obvious over
`Lehr in view of Cockrell, Slup, Kristiansen, and Streich ................ 46  
`9.0   Challenge Nos. 11-15: Alpha is not Prior Art ............................................. 48  
`10.0   Challenges 16-18: Kristiansen does not render any of Claims 1-38
`McKeachnie, and/or Streich ..................................................................... 50  
`10.1   Challenge No. 16: Claims 1-38 are not obvious over Kristiansen in
`view of Cockrell and Slup ............................................................... 50  
`10.2   Challenge No. 17: Claim 4 is not obvious over Kristiansen in view
`of Cockrell, Slup, and McKeachnie ................................................. 56  
`10.3   Challenge No. 18: Claims 21, 22, 36, and 37 are not obvious over
`Kristiansen in view of Cockrell, Slup, and Streich ......................... 57  
`11.0   Conclusion ................................................................................................ 58  
`
`obvious, whether alone or
`
`in combination with Cockrell, Slup,
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`PATENT OWNER'S PRELIMINARY RESPONSE
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`IPR2014-00993
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`TABLE OF AUTHORITIES
`
`Cases
`Agilent Tech., Inc v. Affymetrix, Inc.,
`
`567 F.3d 1366 (Fed. Cir. 2009) ................................................................ 20
`
`Avia Group International, Inc. v. L.A. Gear Cal., Inc.,
`
`853 F.2d 1557 (Fed. Cir. 1988) ................................................................ 35
`
`Bear Archery, Inc. v. AMS, LLC,
`
`IPR2014-00700, Paper No. 9 (August 15, 2014) ..................................... 31
`
`Becton, Dickinson, and Co. v. One StockDuq Holdings, LLC,
`
`IPR2013-00235, Paper No. 10 (October 1, 2013) .................................... 20
`
`Bettcher Industries, Inc. v. Bunzl USA, Inc.,
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`661 F.3d 629 (Fed. Cir. 2011) .................................................................... 3
`
`Cisco Systems, Inc. v. C-Cation Technologies, LLC,
`
`IPR2014-00454, Paper No. 12 ................................................................. 13
`
`Cooper Techs. Co. v. Dudas, 536 F.3d 1330 (Fed. Cir. 2008) ............................. 3
`
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`
`567 F.3d 1314 (Fed. Cir. 2009) ................................................................ 35
`
`Hitzeman v. Rutter, 243 F.3d 1345 (Fed. Cir. 2001) .......................................... 19
`
`In re Gordon, 733 F.2d 900 (Fed. Cir. 1984) ..................................................... 56
`
`In re Montgomery, 677 F.3d 1375 (Fed. Cir. 2012) ........................................... 19
`
`In re Robertson, 169 F.3d 743 (Fed. Cir. 1999) ................................................. 19
`
`In re Suitco Surface, Inc., 603 F.3d 1255 (Fed. Cir. 2010) .................................. 8
`
`iOnroad Ltd. v. MobileEye Technologies, Ltd.,
`
`IPR2013-00227, Paper No. 17 (August 27, 2013) ................................... 49
`
`Magnum Oil Tools International, Ltd., v. McClinton, et al, 2:12-cv-99, U.S.
`District Court, Southern District of Texas – Corpus Christi Division ....... 8
`PATENT OWNER'S PRELIMINARY RESPONSE
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`Northern Telecom, Inc. v. Datapoint Corp.,
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`908 F.2d 931 (Fed. Cir. 1990) .................................................................. 49
`
`Panasonic Corp. v. Optical Devices, LLC,
`
`IPR2014-00302, Paper No. 9 (July 11, 2014) .......................................... 29
`
`Safeway, Inc. v. Kroy IP Holdings, LLC,
`
`IPR2014-00685, Paper No. 11 (September 11, 2014) .............................. 30
`
`Samsung Electronics Co., Ltd., et al. v. Rembrandt Wireless Technologies, LP,
`IPR2014-00514, Paper No. 18 (September 9, 2014) ................................ 49
`
`
`Verizon Servs. Corp. v. Cox Fibernet Va., Inc.,
`
`602 F.3d 1325 (Fed. Cir. 2010) ................................................................ 19
`
`Vibrant Media, Inc. v. General Electric Co.,
`
`IPR2013-00172, Paper No. 50 ............................................................................ 35
`
`Winner Intern. Royalty Corp. v. Wang,
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`202 F.3d 1340 (Fed. Cir. 2000) ................................................................ 36
`
`Zerto, Inc. v. EMC Israel Development Center, Ltd.,
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`IPR2013-00458, Paper No. 12 (January 16, 2014) .................................. 48
`
`
`Statutes
`
`35 U.S.C. § 102 .................................................................................................. 19
`35 U.S.C. § 311(b) .............................................................................................. 48
`35 U.S.C. § 313 .................................................................................................... 1
`35 U.S.C. § 314(a) ................................................................................................ 1
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`IPR2014-00993
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`Other Authorities
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`MPEP § 2112 ...................................................................................................... 19
`MPEP 2143.01 .................................................................................................... 56
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012) .......... 1
`
`
`
`Rules
`
`37 C.F.R. § 42.100(b) ........................................................................................... 8
`37 C.F.R. § 42.104(b)(4) .................................................................................... 57
`37 C.F.R. § 42.107 ................................................................................................ 1
`37 C.F.R. § 42.108(c) ........................................................................................... 1
`37 C.F.R. § 42.6(a)(3) ........................................................................................ 13
`37 C.F.R. § 42.65(a) ........................................................................................... 47
`37 C.F.R. § 42.73(d)(3) ........................................................................................ 3
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`IPR2014-00993
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`EXHIBIT NO.
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`
`[2001]
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`[2002]
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`[2003]
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`[2004]
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`[2005]
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`[2006]
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`TABLE OF EXHIBITS
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`
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`DESCRIPTION
`
`
`U.S. Patent No. 8,459,346 to Frazier
`
`
`Final Written Decision, IPR2013-00231, Paper No. 31
`
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`Prosecution File History of the '346 Patent
`
`
`Claim Construction Order, Dkt. No. 249, Magnum Oil
`Tools International, Ltd., v. McClinton, et al, 2:12-cv-99,
`U.S. District Court, Southern District of Texas – Corpus
`Christi Division.
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`
`U.S. Publication No. 2007/0151722 to Lehr
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`U.S. Patent No. 4,595,052 to Kristiansen
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`1.0
`
`Introduction
`
`Patent Owner Magnum Oil Tools International, Ltd. (hereafter, "Patent
`
`Owner") hereby respectfully submits this Preliminary Response to the Petition
`
`seeking inter partes review of U.S. Patent No. 8,459,346 ("the '346 Patent"). This
`
`filing is timely under 35 U.S.C. § 313 and 37 C.F.R. § 42.107, as it is being filed
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`within three months of the June 30, 2014 mailing date of the Notice granting the
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`Petition a filing date of June 19, 2014 (hereafter, "Petition").
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`Under 35 U.S.C. § 314(a), the Board may institute an inter partes review
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`only when "the information presented in the petition…and any response…shows
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`that there is a reasonable likelihood that petitioner would prevail with respect to at
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`least one of the claims challenged in the petition." See also 37 C.F.R. § 42.108(c).
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`The Petitioner has the burden of showing that this statutory threshold has been met.
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`See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012).
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`For reasons set forth herein, a trial should not be instituted in this matter
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`because the Petition fails to establish there is a reasonable likelihood that at least
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`one of the claims challenged in unpatentable.
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`1.1 Related Proceedings
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`The '346 Patent is a continuation of Application No. 13/194,871 filed on
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`July 29, 2011, which is now U.S. Patent No. 8,079,413 ("the '413 Patent"), which
`
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`IPR2014-00993
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`is a continuation-in-part of Application No. 12/317,497 that was filed on December
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`23, 2008, which is now U.S. Patent No. 8,496,052 ("the '052 Patent").
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`The '413 Patent is the subject of Inter Partes Review No. IPR2013-00231
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`filed on April 2, 2013, by the same Petitioner as the present case. The Board
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`recently issued a Final Written Decision finding Claims 1-20 of the '413 Patent
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`unpatentable on September 2, 2014.1 Patent Owner will be filing a motion for
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`rehearing within the appropriate time period on the basis that the Board erred in its
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`decision because, among other reasons, the Final Written Decision was based on
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`grounds not asserted by the Petitioner and not contained in the record of the
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`proceeding.
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`1.2 Patent Owner is not estopped from defending the patentability of
`the '346 Patent in this proceeding under 37 C.F.R. § 42.73(d)(3)
`
`Patent Owner is not estopped from defending the patentability of the '346
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`Patent in this proceeding under 37 C.F.R. § 42.73(d)(3). Patent Owner is not
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`estopped for at least the following reasons: (i) the time to appeal the Final Written
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`1 A copy of the Final Written Decision in IPR2014-00231 is attached hereto as
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`Exhibit [2002].
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`Decision on the '413 Patent has not passed,2 (ii) at least claims 2-38 have been
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`determined by the USPTO to be patentability distinct from claims 1-20 of the '413
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`Patent,3 (iii) Patent Owner is not taking an action inconsistent with an adverse
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`judgment, (iv) Patent Owner is not attempting to obtain a "claim that is not
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`patentably distinct from a canceled claim" (no claims have been canceled), and (v)
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`Patent Owner is not attempting to obtain an amendment of a specification or of a
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`drawing that was denied during the trial proceeding." Therefore, the estoppel
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`provisions of 37 C.F.R. § 42.73(d)(3) are not applicable, and Patent Owner is not
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`estopped from defending the patentability of the '346 Patent in this proceeding.
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`2 See e.g., Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 646 (Fed. Cir.
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`2011) (estoppel provision does not apply "[i]f there remains any time for an
`
`appeal") (quoting Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336 (Fed. Cir.
`
`2008)).
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`3 The '346 Patent is terminally disclaimed to the '413 Patent. However, only claim
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`1 of the '346 Patent was the subject of a provisional obviousness-type double
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`patenting rejection, prompting the terminal disclaimer. Claims 2-38 of the '346
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`Patent were found to be patently distinct from the '413 Patent. See Ex. [2003] at
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`p. 10.
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`2.0 Summary of the Petition
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`The Petition challenges claims 1-38 of the '346 Patent in view of three
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`primary references: U.S. Application No. 2007/0151722 to Lehr (hereafter,
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`"Lehr"), Alpha Oil Tools Catalog (hereafter, "Alpha"), and U.S. Patent No.
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`4,595,052 to Kristiansen (hereafter, "Kristiansen"). Petition at p. 17-18. In
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`addition to these primary references, U.S. Patent No. 4,437,516 to Cockrell
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`(hereafter, "Cockrell"), U.S. Patent No. 6,708,768 to Slup (hereafter, "Slup"), U.S.
`
`Patent No. 7,350,582 to McKeachnie (hereafter, "McKeachnie"), and U.S. Patent
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`No. 5,224,540 to Streich (hereafter, "Streich") are asserted in various challenges as
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`secondary references.
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`The Petition contains 18 challenges as follows:
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`Challenge
`No.
`1
`2
`3
`4
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`5
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`6
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`7
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`8
`9
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`Claims Challenged
`1-3, 5-21, 23-35, 37-38
`1-38
`1-38
`1-38
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`1-38
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`16, 17, 21-24, 33, 34, 36, 37
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`1-38
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`1-38
`4
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`PATENT OWNER'S PRELIMINARY RESPONSE
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`Grounds of Challenge
`Anticipated by Lehr
`Obvious over Lehr
`Obvious over Lehr in view of Slup
`Obvious over Lehr in view of
`Cockrell
`Obvious over Lehr in view of
`Cockrell and Slup
`Obvious over Lehr in view of
`Kristiansen
`Obvious over Lehr in view of
`Cockrell and Kristiansen
`Obvious over Lehr in view of
`Cockrell, Kristiansen, and Slup
`Obvious over Lehr in view of
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`IPR2014-00993
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`10
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`11
`12
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`13
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`14
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`15
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`16
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`17
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`18
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`21, 22, 36, 37
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`1-38
`1-38
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`16, 17, 21-24, 33, 34, 36, 37
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`21, 22, 36, 37
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`4
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`1-38
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`4
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`21, 22, 36, 37
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`3.0 Summary of the '346 Patent
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`Cockrell, Slup, and McKeachnie
`Obvious over Lehr in view of
`Cockrell, Kristiansen, Slup, and
`Streich
`Obvious over Alpha
`Obvious over Alpha in view of
`Cockrell and Slup
`Obvious over Alpha in view of
`Cockrell, Slup, and Kristiansen
`Obvious over Alpha in view of
`Cockrell, Slup, Kristiansen, and
`Streich
`Obvious over Alpha in view of
`Cockrell, Slup, and McKeachnie
`Obvious over Kristiansen in view of
`Cockrell and Slup
`Obvious over Kristiansen in view of
`Cockrell, Slup, and McKeachnie
`Obvious over Kristiansen in view of
`Cockrell, Slup, and Streich
`
`The '346 Patent generally relates to downhole tools, such as bridge plugs,
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`packers, and frac plugs that are typically used to permanently or temporarily isolate
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`one wellbore zone from another. Ex. [2001] at Col. 1, ll. 15-22. More particularly,
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`the '346 Patent describes a plug that is set within a wellbore using a shear
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`mechanism that is located in the lower end of the tool. Id.
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`As described in the '346 Patent, the plug can include one or more lower
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`shear or shearable mechanisms for connecting to a setting tool. Id. at Col. 2, ll. 61-
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`67. The lower shear mechanism can be located on a separate component or insert
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`that is placed within the body of the plug. Id. The insert is located at the bottom
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`end of the plug, and is adapted to engage a setting tool and release the setting tool
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`when exposed to a predetermined stress that is sufficient to deform shearable
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`threads to release the setting tool but is less that a stress sufficient to break the plug
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`body. Id. at Col. 3, ll. 1-3.
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`The insert can have a body that includes a first or upper end and a second or
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`lower end, a passageway or bore completely or at least partially formed through
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`the body, and one or more threads can be disposed of formed on an outer surface of
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`the body. Id. at Col. 3, ll. 27-39. The insert can further include one or more
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`shearable threads disposed or formed on an inner surface of the body to engage the
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`setting tool. Id. at Col. 3, ll. 54-57. The insert can be threaded or otherwise
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`disposed within the plug at a lower end of the plug body. A setting tool can enter
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`the bore of the plug body through the first end of the body and can be threaded to
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`the insert. Id. at Col. 5, ll. 42-47. The component engaged with the shearable
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`threads of the insert will typically be a rod or extender from a setting tool used to
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`install the plug within a wellbore. Id. at Col. 8, ll. 43-46.
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`During the setting process, an outer cylinder of the setting tool exerts an
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`axial force against the outer upper end of the plug in a downward direction that is
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`matched by the adapter rod of the setting tool exerting an equal and opposite force
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`from the lower end of the plug in an upward direction. Id. at Col. 9, ll. 3-8. After
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`actuation or installation of the plug, the setting tool can be released from the
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`shearable threads, or insert, by continuing to apply the opposing, axial forces on
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`the body via the adapter rod and the outer cylinder. Id. at Col. 9, ll. 22-36. The
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`force or stress is focused on the shearable threads, which will eventually shear,
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`break, or otherwise deform at a predetermined amount, releasing the adapter rod
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`therefrom. Id. The predetermined axial force sufficient to deform the shearable
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`threads and/or to release the setting tool is less than an axial force sufficient to
`
`break the body. Id.
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`Once actuated and released from the setting tool, the plug is left in the
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`wellbore to serve it purpose. Id. at Col. 9, ll. 55-56. To remove the plug from the
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`wellbore, the plug can be drill-out, milled, or otherwise compromised. Id. at Col.
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`10, ll. 44-45.
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`Using a lower set insert allows the plug to be squeezed from opposing ends.
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`Id. at Col. 9, ll. 37-54. This provides a more balanced and efficient translation of
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`force to moveable components about the body, and reduces the stress directly
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`applied to the body itself. Id. As such, the body of the plug and a majority of the
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`outer components of the plug can be made of a softer, drillable material, such as a
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`composite material, since the stress being asserted thereon during the setting
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`process is reduced. Id. Conventional cast iron and other metallic plugs are set
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`from the upper end of the plug, which translates all of the force needed to squeeze
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`IPR2014-00993
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`and actuate the plug on the plug body itself. Id. As such, the plug body had to be
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`constructed of a more rigid material capable of withstanding such stresses and
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`torque. Id. The lower set insert alleviates the torque and stress on the plug body,
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`allowing the plug body to be made of lighter, more easily drillable, non-metallic
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`materials. Id.
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`4.0 Claim Interpretation for the ‘346 Patent
`In an inter partes review, "[a] claim in an unexpired patent shall be given its
`
`broadest reasonable construction in light of the specification of the patent in which
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`it appears." 37 C.F.R. § 42.100(b). Pursuant to this standard, the claim language
`
`should be read in light of the specification, as it would be interpreted by one of
`
`ordinary skill in the art. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir.
`
`2010).
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`4.1 District Court's Claim Construction Order
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`On June 2, 2014, the district court in the co-pending litigation issued its
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`Claim Construction Order for the '346 Patent adopting the parties' agreed
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`constructions and construing the terms in dispute by the parties.4 Patent Owner
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`4 See Exhibit [2004], Claim Construction Order, Dkt. No. 249, Magnum Oil Tools
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`International, Ltd., v. McClinton, et al, 2:12-cv-99, U.S. District Court, Southern
`
`District of Texas – Corpus Christi Division.
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`IPR2014-00993
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`submits these agreed constructions are consistent with the broadest reasonable
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`interpretation as one of ordinary skill would understand the terms in light of the
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`specification of the '346 Patent. 37 C.F.R. § 42.100(b), as presented below:
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`Claim Terms
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`…body…
`
`#
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`1
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`2
`3
`4
`5
`6
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`7
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`8
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`9
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`10
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`Court's Construction
`A centralized support member,
`made of one or more components
`or parts, for one or more outer
`components to be disposed thereon
`or thereabout.
`…first end…
`Upper end
`…second end…
`Lower end
`An element capable of being
`…malleable element…
`extended or shaped
`…disposed about the body… Surrounding the body.
`…an insert at least partially
`At least part of the insert is located
`disposed in the body…
`inside the body.
`…the insert is adapted to
`receive an impediment that
`restricts fluid flow in at least
`one direction through the
`insert…
`…the body is adapted to
`receive an impediment that
`restricts fluid flow in at least
`one direction through the
`body…
`…the anti-rotation feature
`proximate the second end of
`the body is formed on a
`separate component
`disposed on the body…
`…the body is adapted to
`receive a ball that restricts
`fluid flow in at least one
`direction through the body…
`
`The insert receives an impediment
`that obstructs fluid flow in at least
`one direction through the insert.
`
`The body receives an impediment
`that obstructs fluid flow in at least
`one direction through the body.
`
`The anti-rotation feature at the
`second end of the body is formed
`on a separate component that is
`located on the body.
`
`that
`The body receives a ball
`obstructs fluid flow in at least one
`direction through the body.
`
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`IPR2014-00993
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`11
`
`12
`
`13
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`
`14
`
`15
`
`16
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`17
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`18
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`…the insert has a bore only
`partially formed
`therethrough so that there is
`no fluid flow through the
`bore…
`…the insert has a blocked
`passageway that restricts
`fluid flow in opposing axial
`directions…
`…the insert has a bore
`formed therethrough to
`allow biaxial flow through
`the insert…
`…the insert comprises an
`impediment that restricts
`fluid flow in at least one
`direction through the bore…
`…the impediment is
`degradable at a
`predetermined temperature,
`pressure, pH, or a
`combination thereof…
`…the insert adapted to
`receive a setting tool…
`
`…shearable threads…
`
`…setting tool…
`
`The insert has a bore that does not
`extend all the way through the
`insert, so that no fluid can flow
`through the bore.
`blocked
`a
`The
`insert
`has
`passageway
`that obstructs fluid
`flow in the direction between the
`first and second ends of the plug.
`The insert has a bore that extends
`all the way through the insert to
`allow biaxial flow
`through
`the
`insert.
`an
`comprises
`insert
`The
`impediment
`that obstructs fluid
`flow
`in at
`least one direction
`through the insert
`Subject to decomposing, degrading,
`degenerating, or otherwise falling
`apart at predetermined conditions
`that are likely to exist in a wellbore
`environment.
`The insert receives a setting tool.
`Spiral ridges that are designed to
`shear, fracture, break, or otherwise
`deform thereby releasing two or
`more engaged components, parts,
`or things.
`Any device used in the installation
`process of the plug within the
`wellbore, and includes any outer
`cylinder,
`adapter
`rod,
`and/or
`extender.
`
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`19
`
`...mandrel…
`
`A cylindrical bar, spindle, or shaft
`that acts as a centralized support
`member,
`around which outer
`components are positioned about or
`attached thereto.
`
`The anti-rotation feature proximate
`the first end of a plug is configured
`to engage the anti—rotation feature
`on the second end of another plug,
`preventing
`relative
`rotation
`between the two plugs.
`
`…the anti-rotation features
`proximate the first and
`second ends of the body are
`complementary and adapted
`to engage each other,
`preventing relative rotation
`therebetween…
`
`
`20
`
`21
`
`
`
`…shoe…
`
`
`A component, separate from the
`body, that is attached to the body at
`the second end.
`
`4.2 The Petition argues contrary to the Court's Claim Construction
`Order and the ‘346 Patent Specification
`
`Despite the district court's ruling, the Petition urges the Board to construe
`
`the term "shoe" to mean "a component, separate from the body or part of the body,
`
`located at the second end of the body." Petition at p. 15. The broadest reasonable
`
`interpretation in light of the specification standard does not support the Petition's
`
`position that the "shoe" is part of the body. To the contrary, the specification of the
`
`'346 Patent describes the term "shoe" as a separate component that is screwed or
`
`otherwise connected to or positioned about the body. Indeed, the specification of
`
`the '346 Patent explicitly states just that. The specifications reads, "Each anti-
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`rotation feature 270 can be screwed onto or otherwise connected to or positioned
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`about a shoe, nose, cap, or other separate component, which can be made of
`
`composite, that is screwed onto threads, or otherwise connected to or positioned
`
`about the body 210." Ex. [2001] at Col. 7, ll. 7-9 (emphasis added). And every
`
`drawing of the 346 Patents further depicts a "shoe" as a separate component that is
`
`screwed or otherwise connected to or positioned about the body. See, e.g., Ex.
`
`[2001] at Figures 2A, 2B, 2C, 3A, 3B, 3C, and 3D.
`
`Moreover, Claims 32-38 read as follows: "…a shoe at least partially
`
`disposed about the second end of the body..." Ex. [2001] at Col. 16, ll. 4-45.
`
`Accordingly, the Court reasoned that "the use of the term 'disposed about the
`
`second end of the body' indicates a separate component that is to be attached, like
`
`other components, at particular locations relative to the body rather than being a
`
`permanently integrated feature of the body." Ex. [2004] at p. 9.
`
`Therefore, the broadest reasonable interpretation in light of the specification
`
`for the term "shoe" is "a component, separate from the body that is attached to the
`
`body at the second end", and such claim interpretation should be adopted for this
`
`proceeding.
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`5.0 The Petition improperly incorporates by reference from another
`document to support Challenges 1-10
`
`The Petition specifically cites to the claim chart of another document – Dr.
`
`Wooley's declaration [Ex. 1026] – to support Challenge Nos. 1-10. The practice of
`
`citing to other claim charts in another document amounts to incorporation by
`
`reference. Cisco Systems, Inc. v. C-Cation Technologies, LLC, IPR2014-00454,
`
`Paper No. 12 at p. 9 (where "the claim charts in the Petition cite to other claim
`
`charts included in [expert's] Declaration," the claim charts in the declaration are
`
`improperly incorporated by reference). Incorporation by reference is improper in
`
`an IPR proceeding. See, 37 C.F.R. § 42.6(a)(3). According to Cisco, the Board
`
`"will not consider arguments that are not made in the Petition, but are instead
`
`incorporated by reference to the cited paragraphs and claims charts of [expert's]
`
`Declaration." Id. at p. 10.
`
`The Petition here is no different than Cisco's. The claim chart of claim 1 in
`
`the Petition fails to identify where each and every claim limitation is met by the
`
`asserted prior art reference, Lehr. Id. at p. 19. Rather, the single page claim chart
`
`cites to a 10 page claim chart in Dr. Wooley's declaration. Id.; see also Ex. [1026]
`
`at pp. 30-40. The Petition relies on the analysis provided in Dr. Wooley's claim
`
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`chart to support its assertion that claim 1 is anticipated by Lehr.5 Id. Because
`
`citing to other claim charts in another document amounts to incorporation by
`
`reference as held in Cisco, the Board should address anticipation of claim 1 in view
`
`of Lehr based only on the evidence contained in the Petition itself. Cisco,
`
`IPR2014-00454, Paper No. 12 at p. 9.
`
`Considering only the evidence contained in the Petition itself, the Petition
`
`does not support the assertion that claim 1 is anticipated by Lehr. The Petition
`
`contains unsupported conclusory statements and fails to identify how Lehr
`
`discloses several limitations of claim 1. At the very least, the Petition fails to
`
`support its assertion that Lehr discloses the following limitations of claim 1: (i) an
`
`insert at least partially disposed in the body proximate the second end of the body,
`
`the insert adapted to receive a setting tool that e