UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
`
`
`
`JOHN CRANE, INC., JOHN CRANE
`PRODUCTION SOLUTIONS, INC. &
`JOHN CRANE GROUP CORP.,
`Petitioner,
`
`v.
`
`
`
`FINALROD IP, LLC,
`Patent Owner.
`
`
`
`________________________
`
`Case IPR2016-00521
`TITLE: SUCKER ROD APPARATUS AND METHOD
`Patent 8,851,162 B2
`________________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`UNDER 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`

`
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ................................................................................................. 1
`
`II. OVERVIEW OF U.S. PATENT NO. 8,851,162 ..................................................... 2
`
`III. THE ASSERTED GROUNDS ................................................................................ 8
`
`IV. CLAIM CONSTRUCTION .................................................................................... 8
`
`A.
`
`B.
`
`Definition of A Person Having Ordinary Skill In the Art ..................10
`
`“the compressive forces create a force differential along the wedge
`
`system greater at the closed end of the fitting and decreasing toward the
`
`open end of the fitting” ............................................................................11
`
`C.
`
`“the maximum thickness is substantially constant and the minimum
`
`D.
`
`E.
`
`thickness is substantially constant” ........................................................14
`
`“apex” ......................................................................................................16
`
`“an angle associated with the apex between the leading edge and the
`
`trailing edge” ...........................................................................................18
`
`V. TRIAL SHOULD NOT BE INSTITUTED BECAUSE PETITIONER FAILED TO
`
`SHOW A REASONABLE LIKELIHOOD THE PETITIONER WOULD PREVAIL ...20
`
`A.
`
`The Petition Should Be Denied Because the Same Prior Art Asserted
`
`in the Petition Were Previously Presented to the USPTO ..................21
`
`B.
`
`The Rutledge ‘431 Patent Discloses the Structural Antithesis of the
`
`Subject Matter Described and Claimed in the ‘162 Patent ................24
`
`C.
`
`The Rutledge ‘431 Patent Discloses the Functional Antithesis of the
`
`End Fitting Described and Claimed in the ‘162 Patent ......................26
`
`D.
`
`Petitioner Fails to Provide a Rationale to Combine the Asserted
`
`References ................................................................................................29
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`IPR2016-00521
`U.S. Patent No. 8,851,162
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`1. Petitioner Fails to Identify Any Differences Between the Asserted Prior
`
`Art and the Claimed Invention of the ‘162 Patent ...................................30
`
`2. Petitioner Failed to Provide a Substantive Analysis of Why or How a
`
`Person of Ordinary Skill in the Art Would Have Modified the Asserted
`
`Prior Art to Render the Claims of the ‘162 Patent Obvious ....................31
`
`E.
`
`Claims 1, 6-11, 16-20, 25-28, 30 and 31 Are Not Rendered Obvious
`
`Over The Rutledge ‘431 Patent In View Of The Strandberg ‘839
`
`Patent As Asserted In Ground 1 ...........................................................43
`
`1. The Combination of Rutledge ‘431 and Strandberg ‘839 Fail to Disclose,
`
`Suggest, or Teach At Least the Following Claim Limitations: ................43
`
`a. “Apex”..................................................................................................43
`
`b. “the trailing edge is shorter at the closed end and increases
`
`progressively from the closed end to the open end” ...........................47
`
`c. “each apex forming a perimeter of equal dimension within the cavity
`
`that is the narrowest part of the cavity associated with each wedge
`
`shaped portion” ....................................................................................48
`
`d. “the compressive forces create a force differential along the wedge
`
`system greater at the closed end of the end fitting and decreasing
`
`toward the open end of the fitting”......................................................50
`
`F. Claims 2-5, 12-15, 21-24, and 32-38 Are Not Rendered Obvious Over
`
`The ‘431 Patent In View Of The ‘839 Patent and The ‘774 Patent As
`
`Asserted In Ground 2 .............................................................................52
`
`G.
`
`Claims 29 and 39 Are Not Rendered Obvious Over The ‘431 Patent
`
`In View Of The ‘839 Patent and The ‘201 Patent As Asserted In
`
`Ground 3 ..................................................................................................55
`
`H.
`
`Claim 40 Is Not Rendered Obvious Over The ‘431 Patent In View Of
`
`The ‘839 Patent and The ‘560 Patent As Asserted In Ground 4 .......56
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`IPR2016-00521
`U.S. Patent No. 8,851,162
`
`F.
`
`Rutledge ‘431 Teaches Away From the Claim Invention of the ‘162
`
`Patent .......................................................................................................58
`
`VI. CONCLUSION AND RELIEF REQUESTED .........................................................60
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`iii
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`

`
`TABLE OF AUTHORITIES
`
`
`
`Cases
`
`Agilent Tech., Inc v. Affymetrix, Inc., 567 F.3d 1366 (Fed. Cir. 2009) ...................51
`
`Becton, Dickinson, and Co. v. One StockDuq Holdings, LLC, IPR2013-00235,
`
`Paper No. 10 ..........................................................................................................51
`
`Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629 (Fed. Cir. 2011) ................51
`
`Cisco Systems, Inc. v. C-Cation Technologies, LLC, IPR2014-00454, Paper No. 12
`
` ...............................................................................................................................32
`
`Depuy Spine, Inc. v. Medtronic Sofamor Danel, Inc., 567 F.3d 1314 (Fed. Cir.
`
`2009) .....................................................................................................................58
`
`Front Row Technologies, LLC v. MLB Advanced Media, L.P., IPR2015-01932,
`
`Paper No. 7 ............................................................................................................21
`
`Graham v. John Deere Co., 383 U.S. 1 (1966) .......................................................29
`
`Hitzeman v. Rutter, 243 F.3d 1345 (Fed. Cir. 2001) ...............................................51
`
`In re Cuozzo Speed Techs., 793 F.3d 1268 (Fed. Cir. 2015) ..................................... 9
`
`In re Fulton, 391 F.3d 1195 (Fed. Cir. 2004) ..........................................................58
`
`In re Gurley, 27 F.3d 551 (Fed. Cir. 1994) ..............................................................59
`
`In re Robertson, 169 F.3d 743 (Fed. Cir. 1999) ......................................................48
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ................................................29
`
`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015) ....................... 9
`
`Runway Safe LLC v. Engineered Arresting Systems, IPR2015-01921, Paper No. 9
`
` ...............................................................................................................................33
`
`Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352 (Fed. Cir. 2011) ......................30
`
`
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`IPR2016-00521
`U.S. Patent No. 8,851,162
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`Statutes
`
`35 U.S.C § 103 .........................................................................................................31
`
`35 U.S.C. § 314 .......................................................................................................... 1
`
`Other Authorities
`
`77 Fed. Reg. 48756, 48763-64 (Aug. 14, 2012) ........................................................ 9
`
`MPEP § 2112 ...........................................................................................................48
`
`Rules
`
`37 C.F.R. § 42.100(b) ................................................................................................ 9
`
`37 C.F.R. § 42.104(b)(3) ............................................................................................ 9
`
`37 C.F.R. § 42.104(b)(4) ............................................................................................ 1
`
`37 C.F.R. § 42.24(d) ................................................................................................61
`
`37 C.F.R. § 42.4(a) ..................................................................................................... 1
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`IPR2016-00521
`U.S. Patent No. 8,851,162
`
`I.
`
`INTRODUCTION
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`An inter partes review may not be instituted unless the information
`
`presented in the Petition “shows that there is a reasonable likelihood that the
`
`petitioner would prevail with respect to at least 1 of the claims challenged in the
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`petition.” See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The Board should not institute
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`inter partes review of U.S. Patent No. 8,851,162 ("the '162 Patent") because the
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`Petition is based on improper claim interpretations, ignores readily apparent
`
`structural and functional distinctions between the claimed invention of the '162
`
`Patent and the asserted prior art, and fails to meet Petitioner's burden of showing
`
`obviousness. Thus, there is no reasonable likelihood that the Petitioner would
`
`prevail with respect to any of the challenged claims.
`
`Specifically, the entire Petition and supporting evidence, including the
`
`Declaration of Petitioner’s Expert, Dr. Wooley, is based on a construction of the
`
`term "apex" that is unsupported by the intrinsic and extrinsic evidence, and
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`contradicts the meaning of the term as described in the specification and as
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`depicted in Figures 2, 2A, and 10 of the '162 Patent. The Petition fails to provide
`
`any analysis of the claims of the '162 Patent as properly construed, and fails to
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`identify in the prior art a material element that exists in every claim of the '162
`
`Patent. Therefore, the Petition fails to address each and every element of the
`
`claimed invention as required by 37 C.F.R. § 42.104(b)(4).
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`IPR2016-00521
`U.S. Patent No. 8,851,162
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`In addition, the primary reference asserted in each ground of unpatentability
`
`shows the structural antithesis of the subject matter described and claimed in the
`
`'162 Patent. Despite this unmistakable visual distinction, Petitioner asserts that the
`
`structures are "similar" in showing a side-by-side comparison. As shown in the
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`Petitioner’s comparison of the asserted prior and the subject matter of the '162
`
`Patent, and further described in detail herein, the asserted prior art and the claimed
`
`invention of the '162 Patent are structurally and functionally different. The cited
`
`prior art cannot support a conclusion of obviousness based on any combination of
`
`prior art asserted in the Petition.
`
`Consequently, Petitioner has not met the threshold statutory requirement of
`
`showing that there is a reasonable likelihood that it would prevail with respect to at
`
`least one of the claims challenged in the Petition. See 35 U.S.C. § 314(a).
`
`II. OVERVIEW OF U.S. PATENT NO. 8,851,162
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`In many oil wells, the pressure in the oil reservoir is not sufficient to lift the
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`oil to the surface. In such cases, it is conventional to use a sub-surface pump to
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`force the oil from the well. A pumping unit located at the surface drives the sub-
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`surface pump. The pumping unit is connected to the sub-surface pump by a string
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`of sucker rods. The pumping unit moves the sucker rod string up and down to drive
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`the sub-surface pump. See Exhibit [1001] at Col. 1, ll. 63-65 – Col. 2, ll. 1-3.
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`FIG. 1 of the ‘162 Patent illustrates a generic pumping system 20. The
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`pumping system 20 includes a pump drive 22, which is a conventional beam pump,
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`or pump jack and is connected to a downhole pump 26 through a sucker rod string
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`24 inserted into wellbore 28. A sucker rod string 24, comprised of a series of
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`connected sucker rods 10, a series of conventional length rods connected together,
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`or any combination thereof, extends from the downhole pump 26 to the pumping
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`system 20. The pump drive 22 includes a horsehead 22A, a beam 22B, a gearbox
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`22C and a motor 22D. Preferably, the sucker rod 10 is a fiberglass or composite
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`rod. Id. at Col. 2, ll. 33-44; see also Figure 1.
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`
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`Originally, a sucker rod was a steel pumping rod is used to make up the
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`mechanical assembly between the surface and the downhole components of a rod
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`U.S. Patent No. 8,851,162
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`pumping system. Several sucker rods were screwed together to make up the
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`mechanical link, or sucker rod string, from a beam-pumping unit on the surface to
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`the subsurface pump at the bottom of a well. The sucker rods were threaded on
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`each end and manufactured to dimension standards and metal specifications set by
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`the petroleum industry. Typically, sucker rods have been in the lengths of 25 or 30
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`feet (7.6 or 9.1 meters), and the diameter varies from 1/2 to 1 1/8 inches (12 to 30
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`millimeters). Id. at Col. 2, ll. 4-15.
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`Thus, sucker rod pumping is a method of artificial lift in which a subsurface
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`pump located at or near the bottom of the well and connected to a string of sucker
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`rods is used to lift the well fluid to the surface. The weight of the rod string and
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`fluid is counterbalanced by weights attached to a reciprocating beam or to the
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`crank member of a beam-pumping unit or by air pressure in a cylinder attached to
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`the beam. Id. at Col. 2, ll. 16-22.
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`Due to the heavy weight of the steel sucker rods, large pumping units were
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`required and pumping depths were limited. It is now preferable to use sucker rods
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`made of fiberglass with steel connectors. The fiberglass sucker rods provide
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`sufficient strength, and weigh substantially less than steel rods. Id. at Col. 2, ll. 23-
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`28.
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`Since the development of the fiberglass sucker rod, there have been
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`continued efforts to improve the sucker rod, and particularly, the relationship
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`U.S. Patent No. 8,851,162
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`between the steel connectors and the successive rods. Id. at Col. 2, ll. 29-32.
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`The ’162 Patent relates generally to a novel design for a fiberglass sucker
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`rod. The ’162 patent discloses a fiberglass rod with connectors on each end that is
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`an improvement over prior designs and methods. Specifically, each connector has a
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`rod-receiving receptacle with an open end, a closed end, and axially spaced annular
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`wedge shaped surfaces, such that the shape of the wedged surfaces define the
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`compressive forces between the rod and the respective connector, wherein the
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`compressive forces create a force differential along the wedge system greater at the
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`closed end of the fitting and decreasing toward the open end of the fitting. See
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`Exhibit [1001], Figure 2, depicted below.
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`U.S. Patent No. 8,851,162
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`The end fitting 100 comprises an exterior surface 102, a closed end 104, an
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`open end 106, and an interior surface 108. The interior surface 108 comprises a
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`wedge system 110. The present disclosure provides that the wedge system 110 can
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`have any number of wedges with three wedges preferred. The wedge system 110
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`defines a cavity 112 in the end fitting 100. Id. at Col. 2, ll. 58-64.
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`As shown in FIG. 2A below, the wedge system 110 comprises a plurality of
`
`wedged-shaped portions 114. Each wedged-shaped portion 114 has an apex 116, a
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`leading edge 118 and a trailing edge 120 extending from the apex 116. Each apex
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`116 forms a perimeter 122 within the cavity 112 that is the narrowest part of the
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`cavity 112 associated with each wedge shaped portion 114. The leading edge 118
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`is longer than the trailing edge 120 with the leading edge 118 facing the open end
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`106 and the trailing edge 120 facing the closed end 104 with respect to each wedge
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`shaped portion 114. Id. at Col. 2, ll. 65-67 – Col. 3, ll. 1-7.
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`U.S. Patent No. 8,851,162
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`As depicted in FIG. 2A, the apex of the cavity of the wedge shaped portion
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`is located between the leading edge 118B and the trailing edge 120B. Further, the
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`apex 116 is defined by angle A, which is “associated with each wedge-shaped
`
`portion 114B of the wedge system 110.” Id. at Col. 3, ll. 64-65 (emphasis added).
`
`The following Claim 1 is an illustrative claim of the ’162 Patent:
`
`1.
`
`An end fitting for a sucker rod comprising:
`
`an exterior surface, a closed end, an open end, and an interior
`
`surface,
`
`the interior surface comprising a wedge system defining a
`
`cavity, wherein the wedge system comprises three wedge shaped
`
`portions having an apex, a leading edge and a trailing edge, each apex
`
`forming a perimeter of equal dimension within the cavity that is the
`
`narrowest part of the cavity associated with each wedge shaped
`
`portion such that the leading edge is longer than the trailing edge with
`
`the leading edge facing the open end and the trailing edge facing the
`
`closed end with respect to each wedge shaped portion,
`
`wherein the leading edge is shorter at the closed end and
`
`increases progressively from the closed end to the open end thereby
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`compensating for the compression of the sucker rod in the end fitting,
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`the trailing edge is shorter at the closed end a increases progressively
`
`from the closed end to the open end thereby compensating for the
`
`back pressure associated with the sucker rod in the end fitting,
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`wherein the first wedge shaped portion is proximate to the
`
`closed end and receives compressive forces that are greater than the
`
`compressive forces for which the second wedge shaped portion
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`IPR2016-00521
`U.S. Patent No. 8,851,162
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`receives, and wherein the second wedge shaped portion receives
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`compressive forces that are greater than the compressive forces which
`
`the third wedge shaped portion receives, such that the compressive
`
`forces create a force differential along the wedge system greater at the
`
`closed end of the fitting and decreasing toward the open end of the
`
`fitting.
`
`Id. at Col. 8, ll. 33-63.
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`III. THE ASSERTED GROUNDS
`
`Petitioner challenges Claims 1-40 of the ’162 Patent on the following
`
`grounds:
`
`Claim Challenged
`1, 6-11, 16-20, 25-28, 30-31
`
`Basis
`§ 103(a)
`
`2-5, 12-15, 21-24, 32-38
`
`§ 103(a)
`
`29, 39
`
`§ 103(a)
`
`40
`
`§ 103(a)
`
`
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`IV. CLAIM CONSTRUCTION
`
`References
`U.S. Patent No. 6,193,431
`(“Rutledge ‘431”);
`U.S. Patent No. 4,475,839
`(“Strandberg ‘839”)
`Rutledge ‘431;
`Strandberg ‘839;
`U.S. Patent No. 4,662,774
`(“Morrow ‘774”)
`Rutledge ‘431;
`Strandberg ‘839;
`U.S. Patent No. 4,822,201
`(“Iwasaki ‘201”)
`Rutledge ‘431;
`Strandberg ‘839;
`U.S. Patent No. 4,919,560
`(“Rutledge ‘560”)
`
`Patent claims in an inter partes review must be given their broadest
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`IPR2016-00521
`U.S. Patent No. 8,851,162
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`reasonable construction to one having ordinary skill in the art. 37 C.F.R. §
`
`42.100(b); In re Cuozzo Speed Techs., 793 F.3d 1268, 1278 (Fed. Cir. 2015) (“We
`
`conclude that Congress implicitly approved the broadest reasonable interpretation
`
`standard in enacting the AIA”). However, constructions under the broadest
`
`reasonable interpretation standard “cannot be divorced from the specification” and
`
`prosecution history and “must be consistent with the one that those skilled in the
`
`art would reach.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed.
`
`Cir. 2015) (internal quotation marks and citations omitted). “A construction that is
`
`unreasonably broad and which does not reasonably reflect the plain language and
`
`disclosure will not pass muster” under the broadest reasonable interpretation
`
`standard. Id. (internal quotation marks and citation omitted).1
`
`The Petition is required to identify “[h]ow the challenged claim is to be
`
`construed.” 37 C.F.R. § 42.104(b)(3); see Trial Practice Guide, 77 Fed. Reg.
`
`48756, 48763-64 (Aug. 14, 2012). Patent Owner disagrees with Petitioner’s
`
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`1 The broadest reasonable interpretation standard applicable in an IPR is different
`
`from
`
`the claim construction standards applicable
`
`in other proceedings.
`
`Accordingly, Finalrod expressly reserves the right to advocate different claim
`
`constructions under the applicable standards in other proceedings involving the
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`‘162 Patent, including district court proceedings currently pending between the
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`parties.
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`IPR2016-00521
`U.S. Patent No. 8,851,162
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`proposed constructions, including Petitioner’s constructions of “the compressive
`
`forces create a force differential along the wedge system greater at the closed end
`
`of the fitting and decreasing toward the open end of the fitting,” and “the
`
`maximum thickness is substantially constant and the minimum thickness is
`
`substantially constant.” Patent Owner further believes that the proper construction
`
`of the distinct terms “apex” and “the compressive forces create a force differential
`
`along the wedge system greater at the closed end of the fitting and decreasing
`
`toward the open end of the fitting” renders Petitioner’s entire analysis of the
`
`asserted prior art moot, or in the very least deficient.
`
`A. Definition of A Person Having Ordinary Skill In the Art
`
`A person of ordinary skill in the art for the subject matter of the ‘162 Patent
`
`at the time of the invention would have had a Bachelor’s degree in an engineering
`
`discipline, such as mechanical or petroleum engineering, and at least four years
`
`experience in the design, development, testing, and use of fiberglass sucker rods
`
`and end fittings. Alternatively to formal education, a person of ordinary skill in the
`
`art for the ‘162 Patent would have had at least 10 years of experience in the design,
`
`development, testing, and use of fiberglass sucker rods and end fittings.
`
`Accordingly, this definition of the level of skill in the art should be adopted in this
`
`proceeding.
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`IPR2016-00521
`U.S. Patent No. 8,851,162
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`The Petition’s proffered definition of a skilled artisan includes individuals
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`with no experience in designing, developing, and using fiberglass sucker rods.
`
`Petitioner’s definition fails to account for the significant distinctions between
`
`fiberglass sucker rods, and sucker rods in general, such as steel sucker rods. Design
`
`considerations and constraints of end fittings for fiberglass sucker rods are
`
`significantly different in that steel sucker rods do not suffer the same problems as
`
`fiberglass sucker rods, such as the concern of distributing forces to prevent a build
`
`up of compressive force that pinch the rod off the end fitting.
`
`B. “the compressive forces create a force differential along the wedge system
`greater at the closed end of the fitting and decreasing toward the open end
`of the fitting”
`
`Petitioner argues that the term “the compressive forces create a force
`
`differential along the wedge system greater at the closed end of the fitting and
`
`decreasing toward the open end of the fitting” should be construed to mean “the
`
`radial compressive forces are greater toward the closed end of the end fitting and
`
`decrease toward the open end of the end fitting.” Petition, Paper No. 2 as p. 13.
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`Patent Owner disagrees.
`
`Petitioner’s proposed construction is improper because it reads out the
`
`explicit limitation that compressive forces create a “force differential.” Petitioner
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`construes “force differential” to only apply to the first and third wedge shaped
`
`portions, rather than to the entire wedge system, as claimed. Specifically, Petitioner
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`U.S. Patent No. 8,851,162
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`argues that “the term ‘force differential’ would then refer to the difference in radial
`
`compressive forces at the top of the wedge system (near the closed end of the end
`
`fitting) and at the bottom of the wedge system (near the open end of the end
`
`fitting).” Petition, Paper No. 2 at p. 14. Petitioner’s proposed construction ignores
`
`the structure and function of the claimed wedge system. That is, to create a force
`
`differential along the entire wedge system, rather than simply have a different force
`
`applied at each end of the end fitting.
`
`The proper construction of this term, as one of ordinary skill in the art would
`
`understand, is “the compressive forces applied to each wedge shaped portion is
`
`different, with the greater force being applied to the wedge shaped portion nearer
`
`the closed end of the end fitting and incrementally decreasing the force that is
`
`applied to each wedge shaped portion along the wedge system towards the open
`
`end of the end fitting.” This construction is supported by the intrinsic evidence,
`
`including the claims, specification, figures, and file history of the ‘162 Patent.
`
`The claim language itself supports Patent Owner’s construction in claiming
`
`“wherein the first wedge shaped portion is proximate to the closed end and
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`receives compressive forces that are greater than the compressive forces which the
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`second wedge shaped portion receives, and wherein the second wedge shaped
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`portion receives compressive forces that are greater than the compressive forces
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`which the third wedge shaped portion receives.” See Exhibit [1001] at Col. 8, ll.
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`54-60.
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`In addition, the specification of the ‘162 Patent states, “the first wedged-
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`shaped portion 114A receives greater compressive forces than the compressive
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`forces for which a second wedge shaped portion 114B receives that is proximate to
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`the first wedged-shaped portion 114. A third wedge shaped portion 114C between
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`the second wedge shaped portions 114B and the open end 106 receives
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`compressive forces that are less than the compressive forces associated with the
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`first and second wedge shaped portions 114A, 114C. Therefore, the compressive
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`forces create a force differential along each wedge shaped portion 114 greater at
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`the closed end 104 of the end fitting 100 and decreasing toward the open end 106
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`of the end fitting 100.” Id. at Col. 3, ll. 11-23.
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`The specification further states, “As the compressive forces associated with
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`the first wedged-shaped portion 114A deteriorate the structural integrity of the first
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`wedged-shaped portion 114A, then, it has been found that the uncompensated for
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`compressive forces of the first wedged-shaped portion 114A are transferred to and
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`accepted by
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`the second wedged-shaped portion 114B. Similarly, as
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`the
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`compressive forces associated with the second wedged-shaped portion 114B
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`deteriorate the structural integrity of the second wedged-shaped portion 114B, then
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`it has been found that the uncompensated for compressive forces of the second
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`wedged-shaped portion 114B are transferred to and accepted by the third wedged-
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`shaped portion 114C,” and “[t]hus, a force transfer continuum is created by the
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`wedge system 110. The force transfer continuum provides for a constant
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`effectiveness between the end fitting 100 and the fiber composite rod 200 as the
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`wedge system 110 deteriorates from one wedged-shaped portion 114 to the next
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`wedged-shaped portion 114 of the wedge system 110.” Id. at Col. 3, ll. 24-41.
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`Accordingly, the specification is unambiguous in describing the force
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`differential, or continuum, created by the wedge system. Therefore, the proper
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`construction of the term “the compressive forces create a force differential along
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`the wedge system greater at the closed end of the fitting and decreasing toward the
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`open end of the fitting” is “the compressive forces applied to each wedge shaped
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`portion is different, with the greater force being applied to the wedge shaped
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`portion nearer the closed end of the end fitting and incrementally decreasing the
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`force that is applied to each wedge shaped portion along the wedge system towards
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`the open end of the end fitting.” Patent Owner respectfully urges the Board to
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`adopt this construction.
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`C. “the maximum thickness is substantially constant and the minimum
`thickness is substantially constant”
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`Petitioner argues that the term “the maximum thickness is substantially
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`constant and the minimum thickness is substantially constant” should be construed
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`to mean “the maximum and minimum radial clearances (gaps or epoxy thickness)
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`between the fiberglass rod and the interior end fitting for each of the wedge shaped
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`portions may vary slightly from wedge-to-wedge.” Petition, Paper No. 2 at p. 15-
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`16. Patent Owner disagrees.
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`Petitioner’s construction is improper in that it assumes the gap between the
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`fiber composite rod and the wedge portion is the same as the thickness of the
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`epoxy. This assumption is not supported by the specification of the ‘162 Patent.
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`Petitioner even equates “gaps” and “epoxy thickness” in its proposed construction.
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`Furthermore, the portion of the specification of the ‘162 Patent referenced to
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`support Petitioner’s proposed construction does not mention the term “epoxy.” Id.
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`at Col. 4, ll. 12-54. Therefore, the specification of the ‘162 Patent does not support
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`Petitioner’s construction.
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`The proper construction of this term, as one of ordinary skill in the art would
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`understand, is “the maximum and minimum thickness of the epoxy may vary
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`slightly from the maximum and minimum thickness of the gap between the fiber
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`composite rod and wedge shaped portions.” This construction is supported by the
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`intrinsic evidence, including the claims, specification, figures, and file history of
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`the ‘162 Patent.
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`The language of the claims supports Patent Owner’s construction. Claims 9,
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`18, 27, and 31 address the thickness of the epoxy that is located between the wedge
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`shaped portion and the fiber composite rod. For example, Claim 9 of the ‘162
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`Patent states, in its entirety, “9. The end fitting of claim 8 wherein the epoxy is
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`uniform in thickness between the wedge shaped portion and the fiber composite
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`rod such that the maximum thickness is substantially constant and the minimum
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`thickness is substantially constant.” See Exhibit [1001] at Col. 9, ll. 21-25
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`(emphasis added).
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`Accordingly, the specification is unambiguous in describing the thickness of
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`the epoxy. Therefore, the proper construction of the term “the maximum thickness
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`is substantially constant and the minimum thickness is substantially constant” is
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`“the maximum and minimum thickness of the epoxy may vary slightly from the
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`maximum and minimum thickness of the gap between the fiber composite rod and
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`wedge shaped portions.” Patent Owner respectfully urges the Board to adopt this
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`construction.
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`D. “apex”
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`Claims 1-40 of the ‘162 Patent recite that the end fitting comprises three
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`wedge shaped portions having an “apex,” such that “each apex form[s] a perimeter
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`of equal dimension within the cavity.” e.g., Id. at Col. 8, ll. 37-40. The Petition
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`does not propose a construction for the term “apex” and misidentifies the “apex” of
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`the cavity in the ‘162 Patent, as well as in the Petition’s analysis of all asserted
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`prior art. However, the specification of the ‘162 Patent unambiguously describes
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`and depicts the apex of the cavity as being “the point where the leading edge and
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`trailing edge of a wedge-shaped portion intersect.” This construction is supported
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`by the intrinsic evidence, including the specification, drawings, and file history of
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`the ‘162 Patent.
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`For example, as depicted above in FIG. 2A, the term “apex” as used in