iTakeaway: Pursuant to 37 C.F.R. § 42.6(a)(3), a party involved in a proceeding before the Board is forbidden from incorporating arguments from one document (e.g., a Preliminary Response) into another document (such as the Patent Owner Response).
In its Final Written Decision, the Board held that Petitioner had shown by a preponderance of the evidence that claims 1-20 of the ’413 patent were unpatentable.
Petitioner had requested inter partes review of claims 1-20 of the ‘413 patent, which relates to “downhole tools that are set within a wellbore with a lower shear mechanism.” Claims 1-20 were challenged as being obvious under 35 U.S.C. § 103 in view of various combinations involving Slup, Lehr, Streich, McKeachnie, and Kristiansen.
The Board began by noting that it had previously provided, in its Decision to Institute, a construction for each of “first end,” “second end,” “shearable threads,” and “the first and second ends of the body each comprise antirotation features formed thereon.” The parties did not dispute the Board’s initial constructions during trial. Thus, the Board did not alter its initial constructions of these claim terms.
As for obviousness, the Board found that “McClinton provides sufficient rationales for combining the teachings of Lehr, Cockrell, and Kristiansen” and that “when [Petitioner discussed] the alleged ground of unpatentability based on the combination of Alpha, Cockrell, and Kristiansen in its Petition, [Petitioner indicated] why it would have been obvious to one with ordinary skill in the art to combine Cockrell and Kristiansen with other prior art directed to downhole plugs.” According to the Board, “the same analysis applies to the combinations using Lehr as the base reference.”
The Board then addressed other arguments by Patent Owner, including a “teaching away” argument and secondary considerations. This latter argument was based on a “copying” rationale.
In the end, the Board concluded that the challenged claims were shown to be unpatentable in view of the following grounds: McClinton has demonstrated by a preponderance of the evidence that claims 1-3, 5-8, 12, and 13 as obvious under § 103(a) in view of Lehr, Cockrell, and Kristiansen; claims 4 and 9-11 as obvious under § 103(a) in view of Lehr, Cockrell, Kristiansen, and Slup; claims 14 and 16 as obvious under § 103(a) in view of Lehr, Cockrell, Kristiansen, and Streich; claim 15 as obvious under § 103(a) in view of Lehr, Cockrell, Kristiansen, Streich, and McKeachnie; claims 17–19 as obvious under § 103(a) in view of Lehr, Cockrell, Kristiansen, Slup, and Streich; and claim 20 as obvious under § 103(a) in view of Lehr, Cockrell, and Kristiansen, Slup, Streich, and McKeachnie.
McClinton Energy Group, LLC v. Magnum Oil Tools International, Ltd., IPR2013-00231
Paper 31: Final Written Decision
Dated: September 2, 2014
Patent: 8,079,413 B2
Before: Sally C. Medley, Meredith C. Petravick, and Michael R. Zecher
Written by: Zecher
Related Proceeding: Magnum Oil Tools Int’l LLC v. Tony D. McClinton, No. 2:12-cv-00099 (S.D. Tex.)
