In a final written decision issued on October 2, 2014, the Patent Trial and Appeal Board held that all challenged claims of a patent relating to the use of wear-reducing polymer liners in oil field production equipment were unpatentable. Petitioner, Moore Rod & Pipe, LLC, asserted that 20 claims of the patent-at-issue were unpatentable under 35 U.S.C. § 103(a) as obvious. The prior art at issue included “admitted prior art,” which was described and illustrated in the patent. After analyzing the prior art and considering the patent owner’s argument that a person of ordinary skill in the art would not have been motivated to combine the references, the PTAB concluded that the Petitioner had provided “strong evidence of obviousness.”

The PTAB then considered the patent owner’s evidence of secondary considerations of non-obviousness and concluded that it was “weak.” First the PTAB considered the patent owner’s allegation of long felt need. In conducting this analysis, the PTAB applied the patent owner’s own relative definition of “need,” which was simply “to more effectively reduce wear.” The PTAB determined that the patent owner did not provide “credible evidence” that the prior art failed to meet the alleged “need,” as defined by the patent owner. Next the PTAB considered the alleged failure of others, and determined that the patent owner presented insufficient evidence. In particular, the PTAB faulted the patent owner for not submitting evidence that another company attempted to produce equipment that would infringe any of the independent claims, or that another company tried and failed to produce such equipment. The PTAB then considered the patent owner’s allegation that the claimed invention had achieved commercial success, and concluded that the patent owner had failed to establish the necessary nexus. The PTAB characterized the patent owner’s evidence of a nexus—that consumers buy certain products from the exclusive licensee—as demonstrating commercial success, but not a nexus. The PTAB stated that “[i]f all that was necessary to prove a nexus was to show that customers bought more of the identified product than other products, a nexus would exist for every product that exhibits success in the marketplace.” Finally, the PTAB concluded that the patent owner lacked sufficient evidence for its allegation that copying evidenced non-obviousness. According to the PTAB, the only evidence of copying was testimony of the patent owner’s declarant asserting that the petitioner’s product embodies the claims of the patent. The PTAB stated that it “do[es] not determine infringement in inter partes review,” and concluded that the evidence was insufficient to show copying.

After weighing the evidence, the PTAB concluded that the patent owner’s “weak” evidence of secondary considerations did not overcome the petitioner’s “strong” evidence of obviousness. The PTAB, therefore, found that all of the challenged claims were unpatentable.

The patent-at-issue was also asserted against the petitioner in Western Falcon, Inc. v. Moore Rod & Pipe, LLC, 4:13-cv-02963, in the District Court for the Southern District of Texas.

Moore Rod & Pipe, LLC v. Wagon Trail Ventures, Inc., Case IPR2013-00418 (PTAB Oct. 2, 2014).