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.,
`
`Petitioners,
`
`v.
`
`FINALROD IP, LLC,
`Patent Owner.
`
`
`
`—————————————
`
`IPR No. IPR2016-00521
`U.S. Patent No. 8,851,162
`
`—————————————
`
`
`
`PETITIONERS’ REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(d)
`
`
`
`
`

`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS
`
`INTRODUCTION .......................................................................................... ..1
`
`LEGAL STANDARDS .................................................................................. ..4
`
`INTRODUCTION ............................................................................................ 1
`I.
`II. LEGAL STANDARDS .................................................................................... 4
`III. ARGUMENT .................................................................................................... 4
`A. The Board Misapprehended That the “Such That” Language Requires the
`A. The Board Misapprehended That the “Such That” Language Requires the
`Apex to Impact the Lengths of the Edges .................................................... 4
`Apex to Impact the Lengths of the Edges .................................................. ..4
`i. The Apex is a Defined Location Between Two Wedges ....................... 4
`i. The Apex is a Defined Location Between Two Wedges ..................... ..4
`ii. The “Such That” Does Not Require the “Apex” Location to Directly
`ii. The “Such That” Does Not Require the “Apex” Location to Directly
`Impact or Control the Edge Lengths ...................................................... 7
`Impact or Control the Edge Lengths .................................................... ..7
`B. The Board Overlooked Evidence Addressing the “Impact” of the Apex on
`B. The Board Overlooked Evidence Addressing the “Impact” of the Apex on
`the Size and Shape of the Wedge .............................................................. 10
`the Size and Shape of the Wedge ............................................................ ..10
`IV. CONCLUSION ............................................................................................... 14
`
`III.
`
`ARGUMENT .................................................................................................. ..4
`
`IV.
`
`CONCLUSION ............................................................................................. .. 14
`
`i
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`

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`TABLE OF AUTHORITIES
`
`
`CASES
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) .................................................................... 11, 12
`
`Page(s)
`
`MStar Semiconductor, Inc. v. Int'l Trade Comm’n,
`183 F. App’x 957 (Fed. Cir. 2006) ............................................................... 11, 12
`
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`134 S. Ct. 2120 (2014) ........................................................................................ 13
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.71(d) .................................................................................................. 7
`
`37 C.F.R. § 42.108(c) ............................................................................................. 7, 8
`
`
`
`ii
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`

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`I.
`
`INTRODUCTION
`On June 7, 2016, the Board issued a Decision (Paper 7, “Decision”) Denying
`
`Institution of Inter Partes Review of claims 1-40 of U.S. Patent No. 8,851,162
`
`(“the ’162 Patent”). Pursuant to 37 C.F.R. § 42.71(d), Petitioners respectfully
`
`request rehearing of the Board’s Decision.
`
`The Board’s Decision seemingly agreed with Petitioners that the “apex” is a
`
`location at narrowest part of the cavity between adjacent wedges. Decision at 11-
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`12. This is indisputably correct because the claims explicitly require the apex to be
`
`a location at narrowest part of the cavity. The Board’s decision also seemingly
`
`agreed that Petitioners accurately identified the locations of the apexes in the prior
`
`art and the ’162 Patent. Id. However, Petitioners respectfully submit that the
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`Board: (1) misapprehended that the “such that” claim language requires the apex
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`(which is nothing more than a location between adjacent wedges) alone
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`“impact[s]” the lengths of the leading and trailing edges of the same wedge; and
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`(2) overlooked evidence presented in the Petition that clearly discussed how the
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`edge lengths were formed “such that” the leading edge is longer than the trailing
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`edge, consistent with the apex’s identified location. Moreover, to the extent that
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`the “such that” language requires that the apex location itself impacts the lengths of
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`the leading and trailing edge, then the Petition also clearly discussed how the apex
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`and the angles of inclination from the apex impact the edge lengths.
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`
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`

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`In particular, the Board’s Decision found that “[t]he Petition does not show
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`sufficiently that the apexes taught by the combination of Rutledge ’431 and
`
`Strandberg form perimeters that impact the lengths of the leading and trailing
`
`edges . . . .” Decision at 12 (emphases added throughout unless otherwise
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`indicated). However, the ’162 Patent’s claims and specification make clear that
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`the apexes are definite and fixed locations in each wedge, i.e., the apex is the
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`location at the “narrowest part of the cavity.” See, e.g., Ex. 1001, 3:1-5; Fig. 2.
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`Figures 2-8 of the ’162 Patent unambiguously confirm that the narrowest part of
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`each cavity is located in between two adjacent wedges. Thus, there can be no
`
`doubt that Petitioners correctly identified the apex’s location.
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`Despite
`
`this evidence,
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`it
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`is respectfully submitted
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`that
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`the Board
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`misapprehended that the “such that” language in the claims somehow requires the
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`apex alone to “impact” the lengths of the leading and trailing edges of the same
`
`wedge. Petitioners respectfully submit this is error. First, Federal Circuit case law
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`makes clear that “such that” is not a term that requires a direct causal connection,
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`and must be interpreted in the context of the specification and patent at issue.
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`Here, the claimed apex is nothing more than a fixed location at the narrowest part
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`of the cavity, and a fixed location in an apparatus cannot control the lengths of the
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`leading and trailing edges. Moreover, there is no support in the ’162 Patent’s
`
`specification for construing the “such that” language to require that the location of
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`2
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`

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`the apex impacts the lengths of the leading and trailing edges. Regardless of its
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`location, the “apex” will always be only one of three vertices that make up the
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`wedge’s triangle configuration, and, therefore, the shape of the wedge and the
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`lengths of the leading and trailing edges can vary independently of the location of
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`the apex. Therefore, the only requirements of the “such that” limitation are that:
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`(a) the apexes be defined locations “of equal dimension” at the narrowest point
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`between a leading edge of one wedge and a trailing edge of an adjacent wedge, and
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`(b) the wedges also have leading edges that are longer than their trailing edges.
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`Further, if the claims actually require that the apex somehow affects or
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`impacts the leading and trailing edges lengths, Petitioners respectfully submit that
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`the Board overlooked important points presented in the Petition that directly
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`addressed both the location of the apex and how the angles of inclination from this
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`location affect the lengths of the leading and trailing edges. Petitioners presented
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`evidence on this point in at least four locations, as discussed below. While the
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`Board focused almost exclusively on Petitioners’ prose discussion of the prior art,
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`this discussion was not an isolated, standalone argument, but contained further
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`explanations of the prior art that added to Petitioners’ evidence in its claim chart
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`and background discussion of how wedge systems are formed in sucker rod end
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`fittings. The Board failed to address this evidence.
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`Accordingly, Petitioners respectfully request reconsideration of
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`this
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`3
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`

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`evidence and the Board’s Decision denying review.
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`II. LEGAL STANDARDS
`Under 37 C.F.R. § 42.71(d), a party requesting rehearing of a decision must
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`(1) identify all matters the party believes the Board misapprehended or
`
`overlooked, and (2) the place where each matter was previously addressed in a
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`motion, an opposition, or a reply. To institute review, Petitioners only need
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`demonstrate “a reasonable likelihood that at least one of the claims challenged in
`
`the petition is unpatentable.” 37 C.F.R. § 42.108(c).
`
`III. ARGUMENT
`A. The Board Misapprehended That the “Such That” Language
`Requires the Apex to Impact the Lengths of the Edges
`i.
`The Apex is a Defined Location Between Two Wedges
`While declining to issue a formal construction for the term “apex,”1 the
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`Board’s Decision found that Petitioners’ identification of the apex as “located at
`
`the topmost part of a wedge-shaped portion” did not “show sufficiently that an
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`apex at this location forms a perimeter such that the leading edge is longer than the
`
`
`1 Petitioner did not provide a construction for “apex” as its meaning is set forth
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`unambiguously in the claims. To muddy the waters, Patent Owner provided a
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`nonsensical construction. Paper 6 at 16-17. Patent Owner’s construction,
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`however, contradicts the plain language of the claims and the specification
`
`describing the apex as the “narrowest part of the cavity 112.” Ex. 1001, 3:1-3.
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`4
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`

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`trailing edge.” Decision at 12. On this basis, the Board found that “[t]he Petition
`
`does not show sufficiently that the apexes taught by the combination of Rutledge
`
`’431 and Strandberg form perimeters that impact the lengths of the leading and
`
`trailing edges such that the leading edge is longer than the trailing edge.” Id. With
`
`all due respect, the Board misapprehended that the claims themselves define the
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`“apex” as a location at “the narrowest part of the cavity associated with each
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`wedge shaped portion,” and, therefore, Petitioners correctly explained that the
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`“‘apex’ [] is the narrowest point between a leading edge of one wedge, and a
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`trailing edge of the adjacent wedge.” Petition at 53. In other words, the “apex” is
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`nothing more than a defined location at the narrowest point between a leading edge
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`of one wedge and a trailing edge of the adjacent
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`wedge.
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`One doesn’t need to look any further than
`
`the
`
`figures
`
`to
`
`immediately
`
`recognize
`
`that
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`Petitioners correctly identified the only possible
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`location of the claimed “apex” in both the ’162
`
`Patent and the prior art.
`
` The claims and
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`specification state that “[e]ach apex 116 forms a
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`perimeter 122 within the cavity 112 that is the
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`narrowest part of the cavity 112 associated with
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`5
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`

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`each wedge shaped portion 114.” Ex. 1001, 3:1-5. Fig. 2 shows these elements
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`and depicts both the apex and perimeter at the narrowest part of the cavity between
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`adjacent wedges. Ex. 1001, Fig. 2 (shown to right with other ref. numerals
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`removed for clarity).
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`Because the apex is nothing more than a location at the narrowest part of the
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`cavity, Petitioners correctly provided annotated figures highlighting the same
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`cavities in yellow and identified the narrowest parts of the cavity that correspond to
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`the same apexes described by the ’162 Patent:
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`Petition at 27-28.2 Petitioners also explained how the apexes at this location
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`2 The Petition at 15 provided further support in the form of colored and annotated
`Figs. 3-8, which correspond to cross-sectional views of each wedge shaped portion
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`at the narrowest parts (Figs. 3, 5, and 7) and the widest parts (Figs. 4, 6, and 8), and
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`6
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`

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`formed perimeters of “equal dimension.” Id. Thus, Petitioners correctly identified
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`the apexes in both the ’162 Patent’s and the prior art as locations at the narrowest
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`part of each wedge and explained how they were formed to have equal dimension.
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`ii.
`
`The “Such That” Does Not Require the “Apex” Location to
`Directly Impact or Control the Edge Lengths
`The Board’s Decision seemingly agreed with Petitioners that the apex is a
`
`location at the narrowest part of the cavity associated with each wedge. Decision
`
`at 11-12. As shown above, there can be no dispute that this is correct. The
`
`Board’s Decision also seemingly agreed that Petitioners correctly identified the
`
`apexes in the prior art and the ’162 Patent. Id. However, the Board found that the
`
`Petition did not sufficiently show that the location of the apex “impact[s] the
`
`lengths of the leading and trailing edges such that the leading edge is longer than
`
`the trailing edge.” Restated differently, the Board’s Decision seemed to be that if
`
`the apex is located “between adjacent wedge-shaped portions,” then there is no
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`indication “that an apex at this location forms a perimeter such that the leading
`
`edge is longer than the trailing edge.” Decision at 12 (emphasis in original).
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`
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`With Petitioners’ evidence of the apex’s location in mind, Petitioners
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`respectfully submit that the Board misapprehended that it is not possible for the
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`claimed apex alone to directly impact the lengths of the leading and trailing edges.
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`further confirm that the narrowest part of the cavities 112 (shown in those figures
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`as elements G3, G5, and G7) are at the topmost portion of each wedge.
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`7
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`

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`While the Board is correct that the claims use the language “such that the leading
`
`edge is longer than the trailing edge,” the Federal Circuit has found that “such that”
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`must be interpreted consistently with the specification and that it is not a restrictive
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`phrase that always requires an exact cause-and-effect relationship between two
`
`elements. See MStar Semiconductor, Inc. v. Int'l Trade Comm’n, 183 F. App’x
`
`957, 962 (Fed. Cir. 2006) (finding that the claim’s use of “such that” required only
`
`that the first element “be consistent with” or have “a logical relationship of some
`
`sort” to the second element). In MStar, the Federal Circuit cited Merriam-
`
`Webster’s dictionary definition of “such that” as “having a quality to a degree to be
`
`indicated” when rejecting the argument that an “exact” relationship was required.
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`Id. at 961. As recognized in MStar, the “degree to be indicated” by “such that”
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`must be construed in the context of the ’162 Patent and its disclosure. This is
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`especially true under the broadest reasonable interpretation standard, which
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`“cannot be divorced from the specification . . . 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) (“A construction that . . . does not reasonably
`
`reflect the plain language and disclosure will not pass muster.”).
`
`
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`Given the location of the apex, as noted above, a requirement that the apex
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`has a direct causal connection to the lengths of the leading and trailing edges is
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`inconsistent with the claim language reciting the apex as forming a perimeter that
`
`8
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`

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`is the narrowest part of the cavity. Under MStar, the requirement that the apex
`
`alone “impact” the lengths of the leading and trailing edges simply cannot hold.
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`Moreover, the ’162 Patent’s specification contains only one instance using
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`“such that” in a way similar to the claim limitation at issue. See Ex. 1001, 7:20-45.
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`Tellingly, this passage merely parrots back the claim language and does not
`
`support the strict requirement of a causal connection between the apex and the
`
`respective length of the edges. Other passages describe the location of the apex at
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`the narrowest part of the cavity, and similarly do not mention any relationship to
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`the length of the wedges. See, e.g., id. at 2:66 – 3:7. Accordingly, the only
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`requirements of the apex supported by the specification are: (1) that the apex be the
`
`location at the narrowest part of the cavity, and (2) that the apex be consistent with
`
`a wedge shape where the leading edge is longer than the trailing edge. These
`
`requirements are inherently satisfied by the apexes identified in the Petition,
`
`because these apexes are the locations between adjacent wedges, and the Petition
`
`explained how each wedge has a longer leading edge than trailing edge. Pet. at 27.
`
`
`
`This interpretation is also “consistent with the one that those skilled in the
`
`art [“POSITA”] would reach,” as required by the Federal Circuit. Microsoft Corp,
`
`789 F.3d at 1298. Conceptually, each wedge has a triangular configuration.
`
`Regardless of where the apex is located, the apex is but one of three vertices that,
`
`together with their respective angles, collectively make up the shape of the
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`9
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`

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`triangle. Dr. Wooley - the only testimony from a POSITA presented to the Board -
`
`explained that more than one angle is needed to actually “determine” wedge shape:
`
`“a POSITA at the time of the ’162 Patent would have found it to be
`well-known and obvious that the both [1] the angle at the apex and [2]
`the angle between the leading edge and the trailing edge of the same
`wedge determine the wedged shaped portion.”
`Ex. 1010, ¶ 184 (emphases added) (explained at Petition at 52-54). Thus, the apex
`
`alone cannot control the lengths of the edges, and the lengths of the edges may
`
`vary completely independently of the apex.3 Petitioners respectfully submit that
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`the Board’s requirement to show an “impact” of the apex alone on the length of the
`
`leading and trailing edges misapprehends the requirements of the claims.
`
`B.
`
`The Board Overlooked Evidence Addressing the “Impact” of the
`Apex on the Size and Shape of the Wedge
`Petitioners respectfully submit that the Board also overlooked important
`
`points presented in the Petition that address the impact of the apex (as well as the
`
`angle at the apex) on the overall shape of the wedge. The Petition addressed this
`
`relationship in at least four different locations: (1) the Background of the Field of
`
`
`3 If the Board is interpreting the claims to require some greater “impact” than is
`
`supported by the patent itself, then the “claims, read in light of the specification . .
`
`. , fail to inform, with reasonable certainty, those skilled in the art about the scope
`
`of the invention,” (i.e., what else is required) and are indefinite. Nautilus, Inc. v.
`
`Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014).
`
`10
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`

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`Art (see Pet. at 6-8); (2) claim charts for Claim Element [1.3] identifying express
`
`disclosures from the prior art (see Pet. at 22-23); (3) Petitioners’ prose discussion
`
`of further obviousness positions based on the express disclosure of the prior art
`
`(see Pet. at 26-28); and (4) cited portions of Dr. Wooley’s declaration (Ex. 1010).4
`
`As discussed above, when properly interpreted in the context of the ’162
`
`Patent, the “apex” recited by the claims is nothing more than a defined location at
`
`the narrowest point between adjacent wedges. Petitioners respectfully submit that
`
`the Petition demonstrated that it’s more likely than not that the prior art taught this
`
`element of the claims by providing a colored and annotated figure (shown, supra,
`
`at 7) identifying this location in the prior art and explaining how Strandberg
`
`disclosed forming these locations to be perimeters of “equal dimension.” Petition
`
`at 27-28. Moreover, the Petition directly explained how the prior art also taught
`
`forming leading edges that are longer than trailing edges consistent with this apex
`
`location. See Pet. at 27 (“[T]he Rutledge ’431 Patent also teaches that each wedge
`
`
`4 Petitioners respectfully submit that the evidence presented in the Petition should
`be considered as a whole. Petitioners provided a Background of the Field Art that
`
`framed the entire obviousness analysis and general knowledge of a POSITA.
`
`Petitioners also used claim charts to identify express disclosure from the prior art,
`
`and then placed further obviousness analysis in prose underneath the claim charts
`
`because of the Board’s policy against any analysis in the claim charts themselves.
`
`11
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`

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`should be ‘tapered to be of decreasing diameter toward said open end,’ Ex. 1003,
`
`6:58-65, and a POSITA would understand Figure 25 to confirm that the Rutledge
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`’431 Patent’s leading edges are longer than the trailing edges. Ex. 1010, ¶ 107”).
`
`Petitioners respectfully submit this evidence directly addresses both: (1) the
`
`location of the apex, and (2) how the wedges are formed “such that” the leading
`
`edge is longer than the trailing edge.
`
`
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`Moreover, to the extent the Board is interpreting “such that” to require more
`
`than the consistency with the two features shown above, Petitioners also
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`respectfully submit that the Board overlooked additional evidence discussing how
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`various factors contribute to the shape of the wedges, including the apex, the angle
`
`of the inclination of the edges extending from the apex, and the edge lengths. As
`
`part of the Petition’s “Background of the Field of the Art” section, Petitioners set
`
`forth important information relating to the use of sucker rod end fittings having
`
`wedge systems that helped frame the subsequent obviousness analysis, including a
`
`discussion of how wedge shapes are altered to affect the distribution of forces. Pet.
`
`at 6-8 (citing Ex. 1010, ¶¶ 36-49). This section directly addressed how the angles
`
`of taper at the apex affect the length of leading and trailing edges:
`
`“[I]t was well-known in the industry that the angle of the taper of the
`leading and trailing edges of each wedge, which affects wedge
`length, as well as many other features of the wedge, could be varied
`to affect the distribution of force on each wedge-shaped portion.”
`
`12
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`

`
`Petition at 8 (citing Ex. 1012, 3:1-14; Ex. 1010, ¶¶ 38-43). The angle of taper of
`
`the leading and trailing edges is the angle beginning at the apex and the Petition
`
`explained how altering this angle can affect wedge length. See id. at 8 (describing
`
`design considerations, “to alter wedge shape and direct compressive forces” (citing
`
`Dr. Wooley’s Declaration, Ex. 1010, ¶¶ 47-49)).
`
`
`
`Additionally, Petitioners’ claim charts for Element [1.3] quoted prior art
`
`passages discussing how wedge shape is determined by width of the wedge and the
`
`length of each edge. The very first quotation for Element [1.3] explained:
`
`“[T]he shape (or shapes) of the wedge (or wedges) is/are determined
`by the diameter of the fiberglass rod, the diameter of the pocket
`(receptacle) of the end fitting, and the length of each wedge section.”
`Pet. at 22 (quoting Ex. 1003, 4:54-49) (emphasis added). This quoted passage
`
`from the prior art contains more detail than present in the ’162 Patent and explains
`
`that the wedge shape is actually a product of a number of factors, including the
`
`diameter of the pocket (i.e., the width of the cavity) and the length of each section.
`
`It was this disclosure quoted in the claim charts that Petitioners alleged could be
`
`combined with Strandberg’s teaching of having the “same inner diameter D at its
`
`narrowest part” to teach Element [1.3]. See Pet. at 22-23 (claim charts).
`
`
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`Finally, Petitioners set forth further discussion of their obviousness
`
`arguments for Element [1.3] in prose underneath their claim charts. See Petition at
`
`26-28 (setting forth obviousness argument for modifying the disclosure in claim
`
`13
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`

`
`charts based on Strandberg). While the Board focused almost exclusively on the
`
`passages relating to the apex, these passages were not isolated, standalone
`
`discussions, but additional obviousness arguments and rationale that expanded on
`
`the evidence set forth in Petitioners’ claim charts.
`
`In conclusion, the apex is only one feature that plays a limited role in the
`
`shape of a wedge. The apex alone does not control the shape of the wedge, nor
`
`does it control the length the edges. When Petitioners’ colored and annotated
`
`figures are properly viewed in conjunction with their background discussion of
`
`wedge shape and the teachings of the prior art set forth in their claim charts, there
`
`can be no doubt that Petitioners demonstrated that the claims were more likely than
`
`not unpatentable over the ’431 and Strandberg patents.
`
`IV. CONCLUSION
`For
`the
`reasons discussed above, Petitioners
`
`respectfully
`
`request
`
`reconsideration of the Board’s Decision denying review of the ’162 Patent.
`
`July 7, 2016
`
`Respectfully submitted,
`
`Morgan, Lewis & Bockius LLP
`
`
`
`By / Dion M. Bregman /
`Dion M. Bregman (Reg. No. 45,645)
`Jason C. White (Reg. No. 42,223)
`Ryan B. McBeth (Reg. No. 69,817)
`Nicholas A. Restauri (Reg. No. 71,783)
`Matthew C. Lee (Reg. No. 58,189)
`Nicholaus E. Floyd (Reg. No. 74,438)
`Morgan, Lewis & Bockius LLP
`Attorneys for Petitioners
`
`14
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6, I hereby certify that on this 7th day of July
`
`2016, the foregoing Petitioner’s Request for Rehearing was served by email on the
`
`following counsel of record for the Petitioner.
`
`John D. Holman
`Josh Shamburger
`Holly Barnes
`Matthews, Lawson, McCutcheon & Joseph, PLLC
`2000 Bering Dr., Suite 700
`Houston, TX 77057
`Tel: 713-355-4200
`Fax: 713-355-9689
`jholman@matthewsfirm.com
`jshamburger@matthewsfirm.com
`hbarnes@matthewsfirm.com
`
`
`
`Dated: July 7, 2016
`
` /Dion M Bregman/
`Dion M. Bregman, Esq.
`Registration No. 45,645
`Attorneys for Petitioners
`
`15