Cizion LLC v. Kerr Machine Co

1. Case Identification

• Case #: PGR2021-00052
• Patent #: 10,914,171
• Filed: February 11, 2021
• Petitioner(s): CIZION, LLC d/b/a VULCAN INDUSTRIAL MANUFACTURING
• Patent Owner(s): Kerr Machine Co.
• Challenged Claims: 1-10

2. Patent Overview

• Title: Modular Gland Arrangements For A Fluid End Assembly
• Brief Description: The ’171 patent discloses systems for sealing fluid passages within the fluid end of a reciprocating plunger pump. The invention centers on a "closure element" body featuring at least two circumferential grooves, which allows a single annular seal to be relocated between the grooves to extend the component's service life as wear occurs.

3. Grounds for Unpatentability

Ground 1: Claims 1, 3-5 are anticipated by Stanton or Utex under 35 U.S.C. § 102

• Prior Art Relied Upon: Stanton (Patent 8,100,407) or Utex (a 2013 product manual).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Stanton discloses every limitation of independent claim 1. Specifically, Stanton’s "first element 710" was identified as a closure element having a body with at least two axially spaced and circumferential grooves (e.g., "groove 759b" and the groove of "lantern ring 772"). Stanton also disclosed that this element contains only one annular seal ("o-ring seal 758b") positioned within one of those grooves, directly corresponding to the limitations of claim 1. Petitioner asserted that Utex, a product manual, similarly discloses a "lantern ring/seal carrier" that meets all limitations. The dependent claims were argued to be anticipated as Stanton’s element is a tubular sleeve (claim 3) that receives a plunger (claim 4), and its grooves comprise two sidewalls and a base (claim 5).

Ground 2: Claims 6, 8-10 are anticipated by MSI QI-1000 or Utex under 35 U.S.C. § 102

• Prior Art Relied Upon: MSI QI-1000 (a 2014 technical manual) or Utex (a 2013 product manual).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targeted the "fluid end kit" claims, including independent claim 6. Petitioner asserted that the MSI QI-1000 manual discloses a closure element ("adapter, stuffing box 3") with a body having a "stairstep profile" formed by at least two axially spaced, circumferential structural features. The manual also showed at least one annular seal ("O-ring" 9 and 10) that is positionable around any of these structural features, thus anticipating claim 6. Petitioner contended that Utex’s "spool, seal carrier 8" likewise discloses these features. For dependent claims, MSI’s adapter was argued to be a tubular sleeve (claim 8), and its structural features were shown to have footprints and boundaries that anticipate claims 9 and 10.

Ground 3: Claim 7 is obvious over Graham ’137 in view of Graham ’951 under 35 U.S.C. § 103

• Prior Art Relied Upon: Graham ’137 (Patent 10,082,137) and Graham ’951 (Application # 2017/0218951).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Graham ’137 discloses all elements of claim 6, from which claim 7 depends. Claim 7 adds the limitation that the closure element is a "plug." Graham ’137 discloses a "relief valve assembly 500" that functions as a plug under normal operating conditions. To the extent this relief valve assembly is not considered a plug, Petitioner asserted that Graham ’951, from the same inventor, discloses a simple "plug 58" for the same purpose in a nearly identical fluid end assembly.
  • Motivation to Combine: A POSITA would combine the references to implement a predictable design variation. Graham ’137 teaches a system that requires sealing a compression chamber, and a finite number of known options, including plugs with and without relief valves, existed for this purpose. A POSITA would have been motivated to substitute the simple, non-relief plug from Graham ’951 into the assembly of Graham ’137 as an obvious alternative for applications not requiring pressure relief.
  • Expectation of Success: A POSITA would have a high expectation of success, as the combination involved substituting a known component (a simple plug) for another (a relief-valve plug) in an analogous system where both components perform the same sealing function.

• Additional Grounds: Petitioner asserted numerous other anticipation grounds against claims 1-5 and 6-10 based on individual prior art references, including Kretzinger, Chandrasekaran, Hamid, Bayyouk, Wagner, Kerr Classic, and Graham ’137. Petitioner also challenged claim 5 as indefinite under §112 and claim 9 for lacking written description support under §112.

4. Key Claim Construction Positions

• "closure element": Petitioner proposed construing this term as "a component that is positioned within a housing to block fluid flow." This broad construction was argued to be supported by the specification’s inclusion of plugs, sleeves, valves, and valve seats as examples, and was deemed critical to applying various prior art references that disclose different types of sealing components.
• "groove" / "recess": Petitioner argued these terms were used interchangeably in the patent and should be construed to mean "a channel or ledge." This construction was based on the specification showing embodiments with both three-boundary channels and two-boundary ledges, and the prosecution history where the Examiner appeared to treat ledge-like structures (with a "stairstep profile") as having "grooves."

5. Key Technical Contentions (Beyond Claim Construction)

• Lack of Written Description for "Axial Footprint": Petitioner contended that claim 9 is invalid under §112 for lacking written description of the requirement that an "axial footprint" of a first structural feature "fully surround" the axial footprint of a second. Petitioner argued the patent provides no disclosure for this limitation and that, based on the ordinary meaning of "axial footprint" in the art (a view along the body's longitudinal axis), the feature is impossible to achieve with the patent's disclosed geometries, which show parallel, non-surrounding features.

6. Arguments Regarding Discretionary Denial

• Against §325(d) Denial: Petitioner argued denial would be improper because the prior art presented in the petition is not the same or substantially the same as that considered during prosecution. Only one of eleven references (Stanton) was related to a reference cited by the Examiner (Stanton Pub.), and the Examiner’s reliance on it was for a non-statutory double patenting rejection, was cursory, and overlooked the most relevant teachings and figures (e.g., Fig. 9) that Petitioner relied upon for its anticipation argument.
• Against Fintiv Denial: Petitioner argued that the Fintiv factors weigh against discretionary denial. The petition was filed expeditiously, just two days after the patent issued. The parallel district court litigation was filed only one day prior to the petition, meaning it was in the earliest possible stage with no trial date set, no significant investment by the parties, and no substantive arguments yet developed. Further, the strength of the petition's grounds, which rely heavily on direct anticipation under §102, was argued to favor institution.

7. Relief Requested

• Petitioner requests institution of post-grant review and cancellation of claims 1-10 of the ’171 patent as unpatentable.