OMRON OILFIELD & MARINE, INC.v.MD/TOTCO, A DIVISION OF VARCO, L.P.

Patent Trial and Appeal Board

Feb 13, 2014

08050527 (P.T.A.B. Feb. 13, 2014)

Trials@uspto.gov Paper 14
Tel: 571-272-7822 Entered: February 13, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

OMRON OILFIELD & MARINE, INC.
Petitioner

v.

MD/TOTCO, A DIVISION OF VARCO, L.P.
Patent Owner
____________

Case IPR2013-00265
Patent 5,474,142
____________

Before THOMAS L. GIANNETTI, BRYAN F. MOORE, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

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

Case IPR2013-00265
Patent 5,474,142

2

SUMMARY
Omron Oilfield & Marine, Inc. (Petitioner) requests rehearing of the Board’s
Decision (Paper 11) not to institute an inter partes review of U.S. Patent 5,474,142
(Ex. 1001) (the “’142 patent”). Paper 12 (“Rehearing Req.”).
1
Petitioner does not
seek rehearing of the Board’s decision not to institute trial on anticipation. The
rehearing request is limited to the Board’s decision not to institute trial on
obviousness. Rehearing Req. 1. For the reasons that follow, Petitioner’s request
for rehearing is denied.
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.
Petitioner argues that the Decision misapprehends: (1) alleged
inadmissibility of Patent Owner’s evidence of secondary considerations;
(2) Petitioner’s inability to rebut Patent Owner’s evidence of secondary
considerations; (3) the sufficiency of Patent Owner’s evidence of secondary
considerations; and (4) the strength of Petitioner’s prior art. Rehearing Req. 1-3.
The arguments are unpersuasive.

1
Patent Owner filed a response to the Petitioner’s request for rehearing. Paper 13.
This paper was not authorized by the Board and, thus, will not be considered and
will be expunged.
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“In determining whether to institute or order a proceeding under . . .
chapter 31 [Inter Partes Review], the Director may take into account whether, and
reject the petition or request because, the same or substantially the same prior art or
arguments previously were presented to the Office.” 35 U.S.C. § 325(d). We
concluded that the combinations of references cited in the Petition were not
substantially different from the references before the Office in a prior ex parte
reexamination in which the patentability of the challenged claims was confirmed.
The Examiner there relied on evidence of commercial success in allowing the
claims. See Ex. 1020 (Office Action in Reexamination Control No. 90/010,615).
Based on this determination, the Board determined that Petitioner had not shown a
reasonable likelihood of prevailing, especially in light of the strong evidence of
secondary considerations of non-obviousness that were not addressed in the
Petition. Decision 12-16. In other words, we concluded that the Petition presented
the same, or substantially the same, prior art and arguments to the Office as those
overcome in the reexamination. See 35 U.S.C. § 325(d); Decision 12-13 (“We have
reviewed the examiner’s findings and the supporting evidence, and we agree that
the patent owner’s evidence of secondary considerations is persuasive.”).
We note that, in its Petition, Petitioner acknowledged its awareness that
Patent Owner presented evidence of secondary considerations in the
reexamination. Pet. 10. Petitioner had the opportunity to address this evidence,
but failed to do so in its Petition. Rather, Petitioner argued simply that “[t]he
Patent Owner’s evidence of secondary considerations will be unable to overcome
the strong showing of obviousness set forth in this Petition.” Pet. 10. We
determined otherwise and, therefore, denied the Petition. Decision 16.
As to the obviousness challenge based on the combination of Lindstad and
Crake, Petitioner argues specifically that the board “misapprehended Lindstad as
Case IPR2013-00265
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disclosing a mere drilling fluid pressure sensor.” Rehearing Req. 11-12. Thus,
Petitioner argues, the Board did not appreciate the strength of this combination for
the purpose of overcoming a showing of secondary considerations of non-
obviousness. Id. The Board considered all the relevant teachings in Lindstad, and
not simply the fluid pressure sensor. Specifically, the Board acknowledged that
Lindstad teaches “a blasthole drilling system that automatically regulates the
downward drive of the drill string . . . .” Decision 9. The Board made an
evaluation of whether Petitioner had demonstrated a reasonable likelihood of
prevailing on obviousness, and determined that it did not. Decision 10-12. The
Board determined that the record was similar to that presented in the
reexamination, which the Office determined did not overcome the showing of
secondary conditions of obviousness. Decision 16. Therefore, we are not
persuaded by Petitioner’s argument regarding Lindstad.
2

In the end, Petitioner chose not to present in its Petition the arguments
presented in its rehearing request (Rehearing Req. 5-10) addressing the evidence
supporting the finding of secondary considerations in the reexamination. Petitioner
also did not distinguish the combinations of references presented in the Petition
from the references cited in the reexamination. Accordingly, we did not
misapprehend or overlook Petitioner’s arguments because they were not previously
presented. A request for rehearing is not an opportunity to submit new arguments.
For the above reasons, we are not persuaded by Petitioner’s new arguments
regarding the merits or admissibility of the evidence of secondary considerations.

2
As to the remaining challenges, based on Lindstad and Brooks, Warren and
Brooks, Le Compte and Crake, and Miller and Crake, Petitioner simply reargues
the points made in its Petition, without explaining how the Board misapprehended
those arguments. Therefore, we are not persuaded by Petitioner’s arguments
regarding these challenges.
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ORDER
Accordingly, it is
ORDERED that Petitioner’s Request for Rehearing is DENIED; and
FURTHER ORDERED that the paper filed by Patent Owner on
January 2, 2014 (Paper 13) is dismissed as unauthorized and expunged from the
record of the instant proceeding.

PETITIONER:

Matthew B. Lowrie
Kimberly K. Dodd
Foley & Lardner, LLP
mlowrie@foley.com
kdodd@foley.com

PATENT OWNER:

Robert M. Bowick
Bradford T. Laney
Raley & Bowic, L.P.
rbowick@raleybowick.com
blaney@raleybowick.com