In re: Magnum Oil Tools Int'l, Ltd., No. 15-1300 (Fed. Cir. 2016)
Annotate this CaseMagnum’s 413 patent is directed to the use of hydraulic fracturing (fracking) to extract natural gas and oil from natural shale formations. During fracking, a “wellbore” is drilled; a fluid mixture is injected down the wellbore into the shale at high pressure to release the gas or oil. Downhole plugs, put in place by a setting tool, divide the wellbore into separate sections. The 413 patent describes a mechanism for releasing the setting tool from the downhole plug by use of an insert having a “lower shear or shearable mechanism.” On inter partes review, the Patent Trial and Appeal Board found all challenged claims of the 413 patent obvious under 35 U.S.C. 103. The Federal Circuit reversed. The Board erred in shifting the burden of proof on obviousness from the petitioner to the patent owner and failed to articulate a sufficient rationale for why a skilled artisan would have sought to combine the asserted prior art to achieve the claimed invention. The Board’s factual findings regarding the alleged motivation to combine lacked substantial evidence.
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