Moore Rod & Pipe, LLCv.Wagon Trail Ventures, Inc.

Patent Trial and Appeal Board

Dec 4, 2014

09069646 (P.T.A.B. Dec. 4, 2014)

Trials@uspto.gov Paper 40
571-272-7822 Entered: December 4, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MOORE ROD & PIPE, LLC.,
Petitioner,

v.

WAGON TRAIL VENTURES, INC.,
Patent Owner.

Case IPR2013-00418
Patent RE 36,362

Before JENNIFER S. BISK, GEORGIANNA W. BRADEN, and
MATTHEW R. CLEMENTS, Administrative Patent Judges.

CLEMENTS, Administrative Patent Judge.

DECISION
Request for Rehearing
37 C.F.R. § 42.71(d)

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Patent RE 36,362

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I. SUMMARY
Wagon Trail Ventures, Inc. (“Patent Owner”) requests rehearing of
our Final Decision (Paper 38 (“Decision”)) holding unpatentable claims 1–
20 of U.S. Patent No. RE 36,362 patent (Ex. 1001, “the ’362 patent”)
entered October 2, 2014. Paper 39 (“Req. Reh’g”). For the reasons that
follow, Patent Owner’s request is denied.
II. DISCUSSION
The applicable standard for a request for rehearing is set forth in 37
C.F.R. § 42.71(d), which provides in relevant part:
A party dissatisfied with a decision may file a request for
rehearing, without prior authorization from the Board. The
burden of showing a decision should be modified lies with the
party challenging the decision. The request must specifically
identify all matters the party believes the Board
misapprehended or overlooked, and the place where each
matter was previously addressed in a motion, opposition, or a
reply.
Patent Owner argues that the we overlooked or misapprehended the
applicable legal standard and supporting evidence relating to Patent Owner’s
evidence of secondary considerations, specifically: (1) long-felt, but
unsolved need; (2) failure of others; and (3) commercial success. Req.
Reh’g 1.
Long-felt, but Unsolved Need
Patent Owner contends that we accurately identified the “need” as
“more effectively reduc[ing] wear and failure of the metal tubing, sucker
rods, and rod couplings in a rod-pumped well,” but that we misapprehended
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the time at which a need must be unmet, because “whether the devices
disclosed in any portion of the earlier patents (claims and/or disclosures)
more effectively reduced wear than ‘their predecessors’ has no legal or
logical bearing on whether the method(s) claimed in the ‘362 patent more
effectively reduced wear than its predecessors.” Req. Reh’g 2–3 (emphasis
original).
We did not misapprehend Patent Owner’s position. The relevance of
long-felt need to the issue of obviousness depends on several factors. First,
the need must have been a persistent one that was recognized by those of
ordinary skill in the art. In re Gershon, 372 F.2d 535, 539, 152 USPQ 602,
605 (CCPA 1967). Second, the long-felt need must not have been satisfied
by another before the invention by applicant. Newell Companies v. Kenney
Mfg. Co., 864 F.2d 757, 768, 9 USPQ2d 1417, 1426 (Fed. Cir. 1988). Third,
the invention must, in fact, satisfy the long-felt need. In re Cavanagh, 436
F.2d 491, 168 USPQ 466 (CCPA 1971).
There is insufficient evidence that the need was (1) persistent; (2) not
satisfied by another; and (3) satisfied by the alleged invention of the ’362
patent. In determining whether the need was persistent and not satisfied by
another, the relevant inquiry is whether one of the predecessor devices
“more effectively reduced wear and failure of the metal tubing, sucker rods,
and rod couplings in a rod-pumped well.” There is not sufficient evidence
that the devices described in the earlier patents did not do so—i.e., did not
“more effectively reduce wear and failure” than their predecessors, or did not
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“reduce wear and failure” period. Thus, as we explained, we are not
persuaded that the alleged need was unmet.
Even if, as Patent Owner contends, the earlier patents directed to the
same problem are evidence that the need was unmet at the time the ’362
patent was filed, we are not persuaded that the need was satisfied by the
alleged invention of the ’362 patent. If we accept Patent Owner’s contention
that patents directed to this problem qualify as evidence that the need is
unmet, then efforts to patent inventions directed to this problem should have
ceased after the ’362 patent issued. Patent Owner, however, makes no such
showing. The only evidence that the need was satisfied by the alleged
invention of the ’362 patent is a conclusory sentence in the Patent Owner
Response citing the testimony of Mr. Robert H. Davis, Executive Vice
President and Chief Technology Officer for Western Falcon, the exclusive
licensee of the ’362 patent, which in turn cites two articles authored by Mr.
Davis. PO Resp. 21 (citing Ex. 2009 ¶ 22). Thus, even if we were
persuaded that the need was unmet at the time of the ’362 patent, we still
would not be persuaded that the need was satisfied by the alleged invention
of the ’362 patent.
Failure of Others
Patent Owner contends that we misapprehended the legal standard
governing the failure of other consideration by analyzing whether others had
failed to develop, produce, or use products that fell within the scope of the
claims of the ’362 patent. Req. Reh’g 5–6. According to Patent Owner, to
show a failure of others, the evidence must merely establish that others
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skilled in the art tried and failed to find a solution solved by the inventor. Id
(citing Ex Parte Robert Garrett, No. 2009-007766, 2011 WL 661920 at *4
(Bd. Pat. App. & Interf., Feb. 22, 2011)). Patent Owner acknowledges,
however, that failed attempts by others to develop subject matter covered by
the claims is only one way to prove failure of others. Req. Reh’g 5, n.2.
In Ex Parte Robert Garrett, we stated:
Evidence of a long felt need must show that the problem solved
by Appellant’s invention was known but not solved prior to the
invention. See In re Gershon, 372 F.2d 535, 538-39 (CCPA
1967). To show a failure of others, the evidence must establish
that others skilled in the art tried and failed to find a solution for
the problem solved by Appellant. Id.; Stratoflex, Inc. v.
Aeroquip Corp., 713 F.2d 1530, 1540 (Fed. Cir. 1983).
Ex Parte Robert Garrett, 2011 WL661920 at *4. The decision in Ex Parte
Robert Garrett does not purport to redefine the law of secondary
considerations of nonobviousness. As we noted in our Decision, “[t]o be
relevant, evidence of nonobviousness must be commensurate in scope with
the claimed invention. In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011)
(citing In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)); In re Hiniker Co., 150
F.3d 1362, 1369 (Fed. Cir. 1998). Decision 11. Support for that proposition
is also found in the cases cited in Ex Parte Robert Garrett. See, e.g.,
Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d at 1540 (“A nexus is required
between the merits of the claimed invention and the evidence offered, if that
evidence is to be given substantial weight enroute to conclusion on the
obviousness issue.”) (citing Solder Removal Co. v. USITC, 582 F.2d 628,
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637, (CCPA 1978)). Thus, we are not persuaded that we used an incorrect
legal standard.
Even if we adopted the standard urged by Patent Owner, and
determined only whether the evidence establishes that others skilled in the
art tried and failed to find a solution solved by the inventor, Patent Owner
has not presented persuasive evidence of this consideration for the same
reasons discussed above with respect to long-felt need. Specifically, the
existence of the earlier patents directed to the same problem is not
persuasive evidence that the inventions described in those patents failed to
reduce wear or failure of metal tubing in rod-pumped wells, or failed to do
so “more effectively” than their predecessors.
Patent Owner also submits that we overlooked or misapprehended its
detailed explanation of how others failed to solve the problem of wear that
was later solved by the ’362 patent. Req. Reh’g 6 (citing PO Resp. 22–26).
To the contrary, we addressed this explanation and found it unpersuasive.
Decision 13.
Commercial Success
Patent Owner contends that we overlooked or misapprehended the
legal standard governing commercial success by misapplying In re Huang.
Req. Reh’g 8–9. Specifically, Patent Owner contends that “the Board did
not identify any evidence in the present proceeding that the substantial
revenues earned by Western Falcon were the direct result of ‘other economic
and commercial factors unrelated to the quality of the patented subject
matter.’” Id. (quoting In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)).
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To the contrary, we explicitly addressed other economic and
commercial factors unrelated to the patented subject matter:
Moreover, Mr. Davis’s testimony that the president of MPI
(maker of the Shur-Flo product) “possessed the information on
how to make the liner products” (Ex. 2009 ¶ 33, n.2), suggests
that the commercial success depended upon something more—
e.g., “the composition and molecular weight of the polyethylene
used to make the liner” (Ex. 2009 ¶ 37), the dimensions of the
liners (id.), or the specifics of “the formulation, the
manufacture, the installation” (Ex. 1027, 126:21–127:2)—than
the products being “tubing sections having polymer liners
disposed within,” as recited in the independent claims.
Thus, consistent with In re Huang, we determined that there is insufficient
proof that the sales were the direct result of being “tubing sections having
polymer liners disposed within”—as opposed to other economic and
commercial factors unrelated to subject matter of the ’362 patent. As a
result, the evidence of record is not sufficient to establish a nexus between
the commercial success and the claimed invention. For the same reason, the
evidence is not sufficient to establish a presumption of nexus, as Patent
Owner contends (Req. Reh’g 9-13).
Patent Owner also contends that we misapprehended the true amount
of the revenue at issue—$140 million, not $1.4 million—and failed to
include the revenue from sales in Canada. Req. Reh’g 7–8. We
acknowledge that our Decision misquotes the amount of revenue at issue.
Dec. 13 (reciting “$1.4 million” instead of $140 million). Mr. Davis
testified to sales of “over $140,000,000 in the U.S. and over $70,000,000 in
Canada.” Ex. 2009 ¶ 30. Even with 50% of $210 million in sales, however,
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we are still not persuaded that such success weighs in favor of
nonobviousness, because Patent Owner failed to establish a sufficient nexus
between those sales and the claimed invention.
III. CONCLUSION
For the foregoing reasons, Patent Owner has not shown that the Board
misapprehended the applicable legal standard or overlooked Patent Owner’s
supporting evidence relating to secondary considerations. Therefore, Patent
Owner has not carried its burden of demonstrating it is entitled to the
requested relief.
IV. ORDER
It is hereby
ORDERED that Petitioner’s request for rehearing is denied.

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For PETITIONER:

George E. Quillin, Esq.
Gerald F. Swiss, Esq.
Debra D. Nye, Esq.
Foley & Lardner LLP
gquillin@foley.com
gswiss@foley.com
dnye@foley.com

For PATENT OWNER

Douglas H. Elliott, Esq.
Sarah Kelly, Esq.
Eric Adams, Esq.
The Elliott Law Firm, PLLC
rmattox@elliottiplaw.com
skelly@elliottiplaw.com
eric@elliottiplaw.com