Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 14
`Filed: December 1, 2014
`
`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,
`Petitioner,
`
`v.
`
`MAGNUM OIL TOOLS INTERNATIONAL, LTD.,
`Patent Owner.
`_______________
`
`Case IPR2014-00993
`Patent 8,459,346 B1
`_______________
`
`Before SALLY C. MEDLEY, MICHAEL R. ZECHER, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`571.272.7822
`
`
`Paper No. 14
`Filed: December 1, 2014
`
`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,
`Petitioner,
`
`v.
`
`MAGNUM OIL TOOLS INTERNATIONAL, LTD.,
`Patent Owner.
`_______________
`
`Case IPR2014-00993
`Patent 8,459,346 B1
`_______________
`
`Before SALLY C. MEDLEY, MICHAEL R. ZECHER, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`IPR2014-00993
`Patent 8,459,346 B1
`
`
`A. Background
`
`I.
`
`INTRODUCTION
`
`McClinton Energy Group, LLC, Jaycar Energy Group LLC, Surf Frac
`
`Wellhead Equipment Co., Motor Mills Snubbing LLC, Stan Keeling, and
`
`Tony D. McClinton (collectively, “Petitioner”) filed a Petition (Paper 1,
`
`“Pet.”) requesting an inter partes review of claims 1–38 of U.S. Patent No.
`
`8,459,346 B1 (Ex. 1001, issued June 11, 2013, “the ’346 patent”). Magnum
`
`Oil Tools International, Ltd. (“Patent Owner”) timely filed a Preliminary
`
`Response (Paper 11, “Prelim. Resp.”). We have jurisdiction under 35
`
`U.S.C. § 314, which provides that an inter partes review may not be
`
`instituted “unless . . . there is a reasonable likelihood that the petitioner
`
`would prevail with respect to at least 1 of the claims challenged in the
`
`petition.”
`
`Upon consideration of the Petition and Patent Owner’s Preliminary
`
`Response, we conclude Petitioner has established a reasonable likelihood it
`
`would prevail with respect to at least one of the challenged claims. For the
`
`reasons that follow, we institute an inter partes review of claims 1–38 of the
`
`’346 patent.
`
`B. Related Proceedings
`
`Petitioner informs us that the ’346 patent is asserted in federal district
`
`court case in Magnum Oil Tools Int’l LLC v. Tony D. McClinton, No. 2:13-
`
`cv-00163 (S.D. Tex.). Pet. 1. In addition, related U.S. Patent No. 8,079,413
`
`(“the ’413 patent”) was the subject of instituted inter partes review
`
`McClinton Energy Group, LLC v. Magnum Oil Tools International, Ltd.,
`
`Case IPR2013-00231 (PTAB) (“IPR2013-00231”). Id. at 2. A final
`
`decision issued in IPR2013-00231 finding challenged claims 1–20 of the
`
`2
`
`
`
`IPR2014-00993
`Patent 8,459,346 B1
`
`’413 patent unpatentable. See IPR2013-00231, slip op. at 35 (PTAB Sept. 2,
`
`2014) (Paper 31).
`
`C. The ’346 Patent
`
`The ’346 patent relates to downhole tools that are set within a
`
`wellbore with a lower shear mechanism. Ex. 1001, 1:15–19. The ’346
`
`patent discloses that bridge plugs, packers, and fracking (“frac”) plugs are
`
`downhole tools that typically are used to isolate, permanently or temporarily,
`
`one wellbore zone from another. Id. at 1:21–23. 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 1:23–26. Plugs typically are removed, or otherwise compromised, in
`
`order to reopen or restore fluid communication through the wellbore. Id. at
`
`1:26–28.
`
`The ’346 patent discloses that the process of removing permanent,
`
`non-retrievable plugs, or packers, typically includes drilling or milling. Id.
`
`at 1:29–30. Problems sometimes occur, however, during the removal or
`
`drilling of such non-retrievable plugs. Id. at 1:33–35. 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 1:35–39.
`
`The ’346 patent also discloses that certain completion or production
`
`activities may require several plugs or plug types that can run in series. Id.
`
`at 1:52–55. The uncertainty regarding the number and types of plugs that
`
`may be required typically leads to over-purchasing, or under-purchasing, of
`
`the appropriate number and types of plugs, thereby resulting in fiscal waste
`
`or field delays. Id. at 1:61–65. The ’346 patent indicates that it solves these
`
`3
`
`
`
`IPR2014-00993
`Patent 8,459,346 B1
`
`problems by providing a downhole tool that functions as a shearable plug for
`
`isolating a wellbore that: (1) seals the wellbore at wellbore conditions
`
`effectively; (2) may be removed from the wellbore quickly, easily, and/or
`
`reliably; and (3) is capable of being configured in the field to perform one or
`
`more functions. Id. at 1:66–2:2.
`
`Figure 2A of the ’346 patent, reproduced below, illustrates a partial
`
`sectional view of a plug configured with shearable insert 100. Id. at 2:18–
`
`20, 5:29–32.
`
`Figure 2A illustrates a partial sectional view of plug 200
`configured with insert 100.
`
`
`
`4
`
`
`
`IPR2014-00993
`Patent 8,459,346 B1
`
`The ’346 patent discloses that plug 200 includes mandrel or body 210
`
`having first end 207 and second end 208. Id. at 5:32–34. Insert 100 can be
`
`threaded or otherwise disposed within plug 200 at second end 208 of body
`
`210. Id. at 5:42–43. 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. Id. at 5:44–47; see id. at Figs. 1A,
`
`1B. Figure 1A of the ’346 patent, reproduced below, illustrates insert 100.
`
`Id. at 3:12–14, 3:27–29.
`
`Figure 1A illustrates a partial sectional view of insert 100
`configured for use with plug 200.
`
`Shearable threads 130 on insert 100 can be sheared, fractured, or
`
`
`
`otherwise deformed, thereby releasing the setting tool, tubing string, plug, or
`
`other tool from plug 200. Id. at 5:47–50.
`
`D. Illustrative Claim
`
`As noted above, Petitioner challenges claims 1–38 of the ’346 patent,
`
`of which claims 1, 18, and 32 are the only independent claims. Claims 2–17
`
`directly or indirectly depend from independent claim 1, claims 19–31
`
`directly or indirectly depend from independent claim 18, and claims 33–38
`
`directly or indirectly depend from independent claim 32. Claim 1 is
`
`illustrative of the challenged claims and is reproduced below:
`
`5
`
`
`
`IPR2014-00993
`Patent 8,459,346 B1
`
`1. A plug for use in a wellbore, comprising:
`a body having a first end and a second end, wherein the body is
`formed from one or more composite materials;
`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 at least partially disposed in the body proximate [to]
`the second end of the body, the insert 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 one or more shearable threads are disposed proximate [to]
`the second end of the body and 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 that is less than an axial force required to break
`the body.
`Ex. 1001, 13:64–14:16.
`
`
`E. The Evidence of Record
`
`Petitioner relies upon the following references, as well as the
`
`Declaration of Gary R. Wooley, Ph.D. (Ex. 1026):
`
`
`Reference
`Lehr
`
`Alpha
`
`Kristiansen
`Cockrell
`Slup
`McKeachnie
`Streich
`
`Patent/Printed Publication
`U.S. Patent Application Pub. No.
`2007/0151722 A1
`Alpha Oil Tools Catalog, Alpha Oil
`Tools
`U.S. Patent No. 4,595,052
`U.S. Patent No. 4,437,516
`U.S. Patent No. 6,708,768 B2
`U.S. Patent No. 7,350,582 B2
`U.S. Patent No. 5,224,540
`
`Date
`July 5, 2007
`
`Exhibit
`1006
`
`Jan. 1, 1996
`
`1007
`
`June 17, 1986
`Mar. 20, 1984
`Mar. 23, 2004
`Apr. 1, 2008
`July 6, 1993
`
`1011
`1012
`1013
`1014
`1015
`
`6
`
`
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`IPR2014-00993
`Patent 8,459,346 B1
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`F. The Asserted Grounds of Unpatentability
`
`Petitioner challenges the patentability of claims 1–38 of the ’346
`
`patent based on the following grounds:
`
`
`
`References
`
`Lehr
`Lehr
`Lehr and Slup
`Lehr and Cockrell
`Lehr, Cockrell, and Slup
`
`Lehr and Kristiansen
`
`Basis
`§ 102(b)
`§ 103
`§ 103
`§ 103
`§ 103
`
`§ 103
`
`Lehr, Cockrell, and Kristiansen
`
`§ 103
`
`Claims Challenged
`1–3, 5–21, 23–35, 37, 38
`1–38
`1–38
`1–38
`1–38
`
`16, 17, 21–24, 33, 34,
`36, 37
`1–38
`
`Lehr, Cockrell, Slup, and Kristiansen
`
`§ 103
`
`1–38
`
`Lehr, Cockrell, Slup, and McKeachnie § 103
`
`4
`
`Lehr, Cockrell, Slup, Kristiansen, and
`Streich
`Alpha
`
`§ 103
`
`21, 22, 36, 37
`
`§ 103
`
`1–38
`
`Alpha, Cockrell, and Slup
`
`§ 103
`
`1–38
`
`Alpha, Cockrell, Slup, and Kristiansen § 103
`
`Alpha, Cockrell, Slup, Kristiansen, and
`Streich
`Alpha, Cockrell, Slup, and
`McKeachnie
`Kristiansen, Cockrell, and Slup
`
`Kristiansen, Cockrell, Slup, and
`McKeachnie
`Kristiansen, Cockrell, Slup, and
`Streich
`
`7
`
`16, 17, 21–24, 33, 34,
`36, 37
`21, 22, 36, 37
`
`§ 103
`
`§ 103
`
`4
`
`§ 103
`
`1–38
`
`§ 103
`
`4
`
`§ 103
`
`21, 22, 36, 37
`
`
`
`IPR2014-00993
`Patent 8,459,346 B1
`
`
`II. DISCUSSION
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
`
`2012). Under that standard, and absent any special definitions, we give
`
`claim terms their ordinary and customary meaning as would be understood
`
`by one of ordinary skill in the art at the time of the invention. In re
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`1. “First end” and “second end”
`
`Independent claims 1, 18, and 32, as well as dependent claims 5, 6, 8,
`
`9, 16, 18, 24–27, 31, and 33, each recite “first end” and “second end.”
`
`Petitioner asserts that the parties have agreed that the claim terms “first end”
`
`and “second end” should be construed as follows: (1) “first end” means
`
`“upper end”; and (2) “second end” means “lower end.” Pet. 14–15. Patent
`
`Owner states that the district court in the co-pending litigation adopted the
`
`parties’ agreed upon construction with respect to the claim terms “first end”
`
`and “second end.” Prelim. Resp. 8–9.
`
`Even though a district court has adopted the parties’ agreed upon
`
`constructions, we must be cognizant to (i) accord claims their broadest
`
`reasonable construction in an inter partes review, and (ii) not limit
`
`inappropriately the claims by incorporating embodiments from the
`
`specification into the claim if the claim language is broader than the
`
`embodiment. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`
`8
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`
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`IPR2014-00993
`Patent 8,459,346 B1
`
`In related IPR2013-00231, we analyzed the claim terms “first end”
`
`and “second end,” and we were unpersuaded by the parties’ arguments that
`
`“first end” should be construed as “upper end” and “second end” should be
`
`construed as “lower end.” See IPR2013-00231, Paper 16, Paper 31.
`
`Specifically, we declined to adopt Petitioner’s claim construction as it would
`
`import limitations improperly from the specification of the related ’413
`
`patent into the claims. Instead, given the disclosure of the ’413 patent, we
`
`determined the claim limitations “first end” and “second end” only refer to
`
`relative positions with respect to one another—not a particular spatial
`
`orientation such as upper/lower (vertical drilling) or left/right (horizontal
`
`drilling). Accordingly, applying the broadest reasonable interpretation
`
`consistent with the specification of the ’413 patent, we construed the claim
`
`terms “first end” and “second end” as “a first end of a downhole tool relative
`
`to a second end of the downhole tool.”
`
`There is at least one additional consideration that further supports
`
`applying this construction here, as well. Because the ’346 patent is a
`
`continuation of the ’413 patent (Ex. 1001, at [63]), the disclosure in the ’346
`
`patent is essentially the same as the disclosure in the ’413 patent regarding
`
`the claim limitations “first end” and “second end.” Thus, we discern no
`
`reason to alter the construction as set forth in IPR2013-00231 (see Papers
`
`16, 31), construing claim terms “first end” and “second end” as “a first end
`
`of a downhole tool relative to a second end of the downhole tool.” See
`
`Omega Eng., Inc. v. Raytek Corp., 334 F.3d 1314, 1333–34 (Fed. Cir. 2003)
`
`(citing Fin Control Sys. Pty. Ltd. v. OAM, Inc., 265 F.3d 1311, 1318 (Fed.
`
`Cir. 2001)) (holding that there is a presumption that “unless otherwise
`
`9
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`IPR2014-00993
`Patent 8,459,346 B1
`
`compelled . . . the same claim term in the same patent or related patents
`
`carries the same construed meaning”).
`
`2. “Shearable threads”
`
`Independent claims 1, 18, and 32, as well as dependent claims 2 and
`
`31, each recite “shearable threads.” Petitioner asserts that the parties have
`
`agreed that the claim term “shearable threads” should be construed as “spiral
`
`ridges that are designed to shear, fracture, break, or otherwise deform
`
`thereby releasing two or more engaged components, parts, or things.” Pet.
`
`15. Patent Owner states that the district court in the co-pending litigation
`
`adopted the parties’ agreed upon construction with respect to the claim term
`
`“shearable threads.” Prelim. Resp. 8–9.
`
`The Specification of the ’346 patent defines explicitly the term
`
`“shear” as “to fracture, break, or otherwise deform thereby releasing two or
`
`more engaged . . . components/pieces.” Ex. 1001, 3:11–15. The special
`
`definition of the term “shear” in the Specification of the ’346 patent supports
`
`the parties’ agreed upon construction for the claim term “shearable threads.”
`
`Accordingly, we adopt the parties’ agreed upon claim construction of the
`
`claim term “shearable threads,” because it is consistent with the definition of
`
`the term “shear” in the Specification of the ’346 patent.
`
`3. “Setting tool”
`
`Independent claims 1, 18, and 32 each recite “setting tool.” Petitioner
`
`asserts that the parties have agreed that the claim term “setting tool” should
`
`be construed as “any device used in the installation process of the plug
`
`within the wellbore, and includes any outer cylinder, adapter rod, and/or
`
`extender.” Pet. 15. Patent Owner states that the district court in the co-
`
`10
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`IPR2014-00993
`Patent 8,459,346 B1
`
`pending litigation adopted the parties’ agreed upon construction with respect
`
`to the claim term “setting tool.” Prelim. Resp. 8–9.
`
`The Specification of the ’346 patent does not define explicitly the
`
`term “setting tool.” Ex. 1001, 2:63. 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
`
`the parties’ agreed upon construction of the claim term “setting tool,”
`
`because it is consistent with the ordinary and customary meaning of a
`
`“setting tool” as would be understood by one of ordinary skill in the art in
`
`light of the ’346 patent. Thus, we construe “setting tool” as “any device
`
`used in the installation process of the plug within the wellbore, and includes
`
`any outer cylinder, adapter rod, and/or extender.”
`
`4. “Mandrel”
`
`Dependent claims 15 and 30 both recite “wherein the body is a
`
`mandrel.” Petitioner contends the claim term “mandrel” should be construed
`
`as “centralized support member, around which outer components are
`
`positioned about or attached thereto.” Pet. 15. To support its contention,
`
`Petitioner argues only that the ’346 patent does not limit “mandrel” to a
`
`“cylindrical” configuration. Id. Patent Owner does not address Petitioner’s
`
`proposed construction for “mandrel,” but states that the district court in the
`
`co-pending litigation construed the term as “a cylindrical bar, spindle, or
`
`shaft that acts as a centralized support member, around which outer
`
`components are positioned about or attached thereto.” Prelim. Resp. 11.
`
`Although the Specification of the ’346 patent does not define
`
`explicitly the term “mandrel,” at least one embodiment in the ’346 patent
`
`11
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`
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`IPR2014-00993
`Patent 8,459,346 B1
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`uses the term “mandrel” in reference to a body that serves as a centralized
`
`support member. Ex. 1001, 5:32–41. We, however, must be careful not to
`
`read a particular embodiment appearing in the written description into the
`
`claim if the claim language is broader than the embodiment. Van Geuns,
`
`988 F.2d at 1184. Accordingly, 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. Translogic, 504 F.3d at 1257. A technical
`
`dictionary, Schlumberger Oilfield Glossary1, defines “mandrel” as “a bar,
`
`shaft or spindle around which other components are arranged or assembled.”
`
`Ex. 3001, 1. n. [Well Completions]. Thus, one of ordinary skill in the art
`
`would understand that a mandrel is not limited in shape to being cylindrical,
`
`nor is it limited to being centralized within the wellbore.
`
`Given the disclosure in the ’346 patent and the ordinary meaning of
`
`the term “mandrel,” as would be understood by one of ordinary skill in the
`
`art, based on the record before us, we find the broadest reasonable
`
`construction, in light of the Specification, of “mandrel” to be “a bar, shaft or
`
`spindle around which other components are arranged or assembled.”
`
`5. “Shoe”
`
`Independent claim 32 recites “a shoe at least partially disposed about
`
`the second end of the body.” Petitioner contends the claim term “shoe”
`
`should be construed as a “distinct portion of the body that begins at the
`
`lower end of the body and extends at least partially toward the upper end of
`
`the body.” Pet. 15. Petitioner provides no support for its contention. Id.
`
`
`1 Schlumberger Oilfield Glossary,
`http://www.glossary.oilfield.slb.com/en/Terms/m/mandrel.aspx (2006).
`
`12
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`IPR2014-00993
`Patent 8,459,346 B1
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`Rather, Petitioner simply states that its proposed construction encompasses
`
`the Patent Owner’s proposed construction. Id.
`
`Patent Owner contests Petitioner’s proposed construction for “shoe,”
`
`arguing that the broadest reasonable interpretation of the term in light of the
`
`Specification is that the “shoe” is not limited to being a part of the body.
`
`Prelim. Resp. 11. Patent Owner cites to the ’346 patent, which discloses that
`
`“anti-rotation feature 270 can be screwed onto or otherwise connected to or
`
`positioned 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.” Id. at 11–12 (citing Ex. 2001,2 7:7–9).
`
`According to Patent Owner, every drawing in the ’346 patent depicts a
`
`“shoe” as a separate component that is screwed or otherwise connected to or
`
`positioned about the body. Id. at 12 (citing Ex. 2001, Figs. 2A, 2B, 2C, 3A,
`
`3B, 3C, 3D).
`
`Patent Owner’s citations to the ’346 patent are correct. Yet, we must
`
`be cognizant of not reading a particular embodiment appearing in the written
`
`description into the claim if the claim language is broader than the
`
`embodiment. Van Geuns, 988 F.2d at 1184. We note there is nothing in the
`
`Specification requiring that a “shoe” be a separate component from the
`
`body, nor is there a requirement that it be a part of the body, only an
`
`embodiment where the shoe is connected to the body in some form or
`
`fashion. See, e.g., Ex. 1001, 7:7–9. Therefore, given the disclosure in the
`
`’346 patent, we find the broadest reasonable construction, in light of the
`
`
`2 Exhibit 2001, submitted by Patent Owner, is a copy of the ’346 patent and
`is the same as Exhibit 1001.
`
`13
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`
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`IPR2014-00993
`Patent 8,459,346 B1
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`Specification, of “shoe” to be “a component that is screwed or otherwise
`
`connected to, positioned around, or a part of the body.”
`
`6. Other Claim Terms
`
`For purposes of this decision and based on the record before us, we
`
`need not provide express constructions for any other claim terms at this
`
`stage of the proceeding.
`
`B. Level of Ordinary Skill in the Art
`
`In determining whether an invention would have been obvious at the
`
`time it was made, 35 U.S.C. § 103 requires us to determine the level of
`
`ordinary skill in the pertinent art at the time of the invention. Graham v.
`
`John Deere, 383 U.S. 1, 17 (1966). According to Petitioner’s witness, Dr.
`
`Gary R. Wooley, a person of ordinary skill in the art relevant to the ’346
`
`patent “would have a bachelor’s degree in an engineering discipline, such as
`
`mechanical engineering . . . [and have] two years of work experience with
`
`frac plugs used in the fracture simulation of oil and gas wells.” Ex. 1026
`
`¶ 9.
`
`Patent Owner does not disagree with Petitioner’s assertions regarding
`
`the level of skill in the art, nor does Patent Owner offer at this time any
`
`contrary explanation regarding who would qualify as a person of ordinary
`
`skill in the art relevant to the ’346 patent. Based on our review of the ’346
`
`patent, the types of problems and solutions described in the ’346 patent, the
`
`cited prior art, and the testimony of Petitioner’s declarant, we conclude
`
`preliminarily, based on the record before us, that a person of ordinary skill in
`
`the art at the time of the claimed invention would have had a degree in an
`
`engineering discipline, such as mechanical engineering, and have at least
`
`14
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`IPR2014-00993
`Patent 8,459,346 B1
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`two years of experience using frac plugs in the fracture simulation of oil and
`
`gas wells.
`
`C. Asserted Obviousness of Claims 1–38 by Lehr
`
`Petitioner contends claims 1–38 of the ’346 patent are unpatentable
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`under 35 U.S.C. § 103 in view of Lehr. Pet. 28–31. For reasons that follow,
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`we determine Petitioner has demonstrated a reasonable likelihood of
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`prevailing on its assertion that claims 1–38 would have been obvious over
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`Lehr.
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`1. Overview of Lehr
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`Lehr generally relates to a release device that may be used with
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`downhole setting tools. Ex. 1006 ¶ 3. In particular, Lehr discloses that the
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`release device deforms to provide a releasable detachment mechanism for a
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`setting tool used to set a downhole tool, such as a frac plug. Id. Figure 1 of
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`Lehr, reproduced below, illustrates a cross-sectional view of a setting tool,
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`adapter kit, and packer, wherein the packer is retained on the adapter kit by
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`the deformable release device. Id. ¶¶ 25, 38.
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`
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`Figure 1 illustrates a cross-sectional view of a
`setting tool, adapter kit, and packer.
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`Lehr discloses wireline adapter kit 20 that includes adapter sleeve 40 and
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`release stinger 50. Id. ¶ 39. Adapter sleeve 40 is threaded onto wireline
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`pressure setting assembly 10 and extends down to packer assembly 70, e.g.,
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`frac plug. Id. Plunger 80 is threaded onto the downhole end of release
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`stinger 50. Id. Lehr discloses that packer assembly 70 includes upper cap
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`71, upper slip 72, upper cone 73, elastomeric packing element 74, lower
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`cone 75, lower slip 76, lower cap 77, and mandrel 78. Id. ¶ 40. Mandrel 78
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`provides general support for each of the components of packer assembly 70.
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`Id. During the process of setting packer assembly 70, deformable release
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`device 30 retains the packer assembly on release stinger 50. Id. ¶ 44.
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`
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`Figures 3B and 3C of Lehr, reproduced below, illustrate deformable
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`release device 30 interactions with plunger 80.
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` Figure 3B
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` Figure 3C
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`
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`Figures 3B and 3C illustrate cross-sectional views of
`deformable release device 30 connecting to plunger 80.
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`Deformable release device 30 contacts protruding section 83 of plunger 80,
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`which is attached to one end of release stinger 50. Id. ¶ 44. Retaining pins
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`31 secure deformable release device 30 to mandrel 78 of packer assembly
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`70. Id. According to one embodiment disclosed in Lehr, when a
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`predetermined upward force is applied to plunger 80, protruding portion 83
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`of plunger 80 deforms beveled portion 32 of deformable release device 30,
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`allowing for release of plunger 80. Id. ¶ 50.
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`2. Analysis
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`Petitioner contends Lehr, as summarized above, teaches or suggests
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`each limitation of claims 1–38 of the ’346 patent. Petitioner argues that
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`Lehr discloses a downhole frac plug with an insert (“deformable release
`
`device 30”) disposed in the body proximate to the second end of the body.
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`Pet. 20 (citing Ex. 1006, 0016, Figs. 1, 3A–C, 4A–C); Ex. 1026 ¶¶ 70–75,
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`78. Petitioner specifically argues that insert 30 of Lehr is at least partially
`
`disposed in body 78. Id. Petitioner explains that additional highlight on
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`Lehr’s Figure 3C, reproduced below with annotations added by Petitioner,
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`indicates the portions of insert 30 (highlighted in red) that are partially inside
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`body 78, which ends at the plane represented by blue dashed lines. Id. at 20.
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`
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`Figure 3C illustrates the placement of deformable release device 30 relative
`to mandrel body 78.
`
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`Petitioner further supports its position with the declaration of Dr.
`
`Wooley, who relies on Figure 4B when testifying that Lehr teaches or
`
`suggests “an insert at least partially disposed in the body proximate [to] the
`
`second end of the body.” Ex. 1026 ¶ 78. Figure 4B of Lehr, reproduced
`
`below, illustrates the position of deformable device 30 (highlighted green)
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`relative to body 78 (highlighted yellow).
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`Figure 4B illustrates the placement of deformable release device 30
`relative to mandrel body 78.
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`
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`Figure 4B depicts an embodiment of plug 70 with deformable release device
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`30 located within the lower cap of packer assembly 70 and enclosed by
`
`mandrel body 78.
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`Patent Owner disagrees with Petitioner’s conclusion that Lehr renders
`
`the challenged claims obvious.3 Prelim. Resp. 28–32. Patent Owner recites
`
`
`3 We acknowledge Patent Owner’s contention that we should reject the
`Petition because it improperly incorporates information by reference.
`Prelim. Resp. 13–15 (citing Cisco Systems, Inc. v. C-Cation Technologies,
`LLC, Case IPR2014-00454 (PTAB Aug. 29, 2014) (Paper 12). We note that
`Patent Owner has not shown a persuasive reason for denying this Petition in
`its entirety due to improper incorporation by reference and we decline to do
`so here. Those portions of Dr. Wooley’s Declaration, however, that include
`the claim charts cited by Patent Owner as improperly incorporated into the
`Petition were not relied upon for our analysis unless the information was
`readily ascertainable when reviewing the cited prior art.
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`a litany of elements it contends are not obvious based on the disclosure of
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`Lehr (id. at 28–29), and specifically argues that Lehr fails to teach an insert
`
`adapted to receive or engage a setting tool that enters the body through the
`
`first end thereof (id. at 15).
`
`i.
`
`“an insert adapted to receive or engage a setting tool
`that enters the body through the first end thereof”
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`According to Patent Owner, plunger 80, which is part of the setting
`
`tool in Lehr, does not and cannot enter from the first end of the body
`
`because of protruding portion 83. Id. at 16. Instead, Patent Owner contends
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`that “plunger 80 is assembled to the deformable release device 30, and is
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`then inserted through the second end of the mandrel.” Id. (citing Ex. 1006
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`¶¶ 0044, 0046, 0048). Patent Owner then explains that once assembled, the
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`deformable release device 30 having a cross section well in excess of the
`
`opening of the mandrel 78 is able to be pinned against the second end of the
`
`mandrel 78 using the retaining pins 31. Id. at 16. Patent Owner concludes
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`plunger 80 does not and cannot enter mandrel 78 through the first end. Id.
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`
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`Based on the record before us currently, we are persuaded Petitioner
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`has made a sufficient showing that Lehr teaches or suggests an insert that is
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`(i) partially disposed in the body proximate to the second end of the body,
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`and (ii) adapted to receive or engage a setting tool that enters the body
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`through the first end thereof.
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`First, we are persuaded that Lehr teaches an insert that is partially
`
`disposed in the body proximate to the second end of the body. Figures 1A–
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`4B of Lehr illustrate the parts of plug assembly 70, including lower cap 77
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`and mandrel 78, and show plunger 80 disposed within lower cap 77 and
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`mandrel 78. Ex. 1006, Figures 1A–4B. The portion of plug assembly 70
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`that includes lower cap 77 and mandrel 78 can be considered the second end
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`of the body. See Section II.A.1.
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`Second, we are persuaded that Lehr teaches a setting tool that enters
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`the body through the first end thereof. As illustrated in Figures 4A and 4B,
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`setting tool 10 enters plug assembly 70 proximate to valve 130. Id. The
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`portion of plug assembly 70 that includes valve 130 can be considered the
`
`first end of the body. Such assignment of “first end” and “second end” are
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`consistent with our construction of these terms as discussed above. See
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`Section II.A.1.
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`Finally, we are persuaded that Lehr teaches an insert that is adapted to
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`receive or engage a setting tool that enters the body through the first end
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`thereof. Lehr teaches that plunger 80 contacts deformable device 30
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`proximate to lower cap 77, as shown in Figures 4A and 4B of Lehr. Id.
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`¶ 0044. Plunger 80 is part of setting tool 10 via adapter sleeve 40. Id.
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`¶ 0053, Figs. 4A, 4B. Patent Owner agrees plunger 80 is part of setting tool
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`10. Prelim. Resp. 16. Thus, we are persuaded that deformable device 30
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`receives setting tool 10 via plunger 80 at the second end of the body
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`although setting tool 10 enters the body through the first end.
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`ii.
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`“one or more shearable threads”
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`Patent Owner further argues that Lehr does not teach or suggest
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`shearable threads. Prelim. Resp. 29. Every claim at issue broadly recites
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`“one or more shearable threads.” According to Petitioner, the inserts in
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`Figures 5–9 of Lehr are nothing more than a variety of single shearable
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`threads and the shear rings of Lehr constitute “one shearable thread.” Pet.
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`22 (citing Lehr, Figs. 5–9; Ex. 1026 ¶¶ 32–41, 73, 78). Petitioner argues that
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`based on Lehr’s disclosure and Lehr’s invitation to one of skill in the art to
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`modify its insert, a skilled artisan would have known to make the simple
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`substitution of shearable threads for the deformable release device of Lehr.
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`Pet. 29 (citing Ex. 1026 ¶¶ 32–41, 121, 128).
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`Patent Owner disagrees with Petitioner’s contention that it would be
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`obvious to modify the insert in Lehr to create a shearable thread. Prelim.
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`Resp. 29–31. According to Patent Owner, Petitioner fails to provide
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`evidentiary support for its contention and merely offers conclusory
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`statements by Dr. Wooley that should not be considered by the Board. Id. at
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`30 (citing Ex. 1026 ¶¶ 120–121). We are unpersuaded by Patent Owner’s
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`position because Dr. Wooley’s testimony appears to be more than
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`conclusory statements. For example, Dr. Wooley explains that “shearable
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`threads [were] well known and would have been a preferred substitution
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`because the shearable threads would enable the plug to leave minimal debris
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`downhole.” See Ex. 1026 ¶ 121.
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`Based on the record before us, we are persuaded at this stage of the
`
`proceeding that Petitioner has demonstrated a reasonable likelihood it would
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`prevail on its challenge that claims 1–38 would have been obvious given the
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`disclosure of Lehr.
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`D. Asserted Obviousness of Claims 1–38 in view of Lehr and Cockrell
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`Petitioner contends claims 1–38 of the ’346 patent are unpatentable
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`under 35 U.S.C. § 103 in view of Lehr and Cockrell. Pet. 33–34. For
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`reasons that follow, we determine Petitioner has demonstrated a reasonable
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`likelihood of prevailing on its assertion that claims 1–38 would have been
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`obvious over Lehr and Cockrell.
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`IPR201
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