UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FLOTEK INDUSTRIES, INC., and TURBECO, INC. (d/b/a SPIDLE TURBECO,
`d/b/a GALLEON TURBECO and d/b/a CAVO DRILLING MOTORS) and
`TELEDRIFT COMPANY (d/b/a SPIDLE TURBECO),
`Petitioner,
`
`v.
`
`NATIONAL OILWELL DHT, L.P.,
`
`Patent Owner
`
`
`Case IPR2015-01210
`
`
`
`Patent 6,431,294
`
`
`
`DECLARATION OF DR. JOHN EDWARD AKIN
`
`
`
`
`
`
`NOV
`Exhibit 2005
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`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FLOTEK INDUSTRIES, INC., and TURBECO, INC. (d/b/a SPIDLE TURBECO,
`d/b/a GALLEON TURBECO and d/b/a CAVO DRILLING MOTORS) and
`TELEDRIFT COMPANY (d/b/a SPIDLE TURBECO),
`Petitioner,
`
`v.
`
`NATIONAL OILWELL DHT, L.P.,
`
`Patent Owner
`
`
`Case IPR2015-01210
`
`
`
`Patent 6,431,294
`
`
`
`DECLARATION OF DR. JOHN EDWARD AKIN
`
`
`
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`
`
`NOV
`Exhibit 2005
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`TABLE OF CONTENTS
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`IPR2015-01210
`Patent 6,431,294 B1
`
`
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`
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`I.
`
`INTRODUCTION ............................................................................................... 3
`
`II. DOCUMENTS REVIEWED .............................................................................. 8
`
`III. PERSON OF ORDINARY SKILL IN THE ART ........................................... 9
`
`IV. LEGAL STANDARDS ..................................................................................11
`
`V. OVERVIEW OF THE ‘294 PATENT ..............................................................13
`
`VI. THE CLAIMS OF THE ‘294 PATENT AT ISSUE ARE NOT OBVIOUS
`OVER BIELSTEIN..................................................................................................14
`
`A. Overview of Bielstein. ..............................................................................14
`
`B. Claim 4 – rotating valve is provided separately of the means for
`creating a fluid pressure force on said mass. ................................................. 15
`
`C. Claims 1-20 - valve motor for driving said valve. ....................................18
`
`VII. CONCLUSIONS ............................................................................................20
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`2
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`NOV
`Exhibit 2005
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`IPR2015-01210
`Patent 6,431,294 B1
`
`INTRODUCTION
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`I am over 18 years of age. I have personal knowledge of the facts and
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`
`
`I.
`
`1.
`
`opinions stated in this Declaration and could testify competently to them if asked
`
`to do so.
`
`2.
`
`I hold degrees in Engineering Mechanics including a Ph.D. from Virginia
`
`Polytechnic Institute (1968), an M.S. from Tennessee Technological University
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`(1966), and a B.S. from Tennessee Polytechnic Institute (1964). I am a registered
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`Professional Engineer in the States of Texas (No. 59330), Arkansas (No. 9768),
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`and Tennessee (No. 6819).
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`3.
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`Currently, I am employed as Professor of Mechanical Engineering in the
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`Department of Mechanical Engineering at Rice University in Houston, Texas. I
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`served as Chair of the department for six years. I have also served as the Speaker
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`of the Faculty (the official head of the entire Rice University faculty) and as
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`Deputy Speaker of the Faculty. I am a Fellow of the American Society of
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`Mechanical Engineers and a member of the Society of Petroleum Engineers and
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`other international technical societies. In my four decades of academic service I
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`have taught courses related to the technology in the patent at issue. I have held the
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`positions as a visiting scholar at the University of Texas at Austin, Texas Institute
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`for Computational Mechanics in Austin, TX (1998), adjunct professor of surgery at
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`
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`3
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`NOV
`Exhibit 2005
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`IPR2015-01210
`Patent 6,431,294 B1
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`
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`the University of Texas Medical School Health Science Center in Houston, Texas
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`(1988-97), adjunct professor at the University of Tennessee Department of
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`Engineering Science and Mechanics in Knoxville, TN (1968-83), visiting professor
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`at the California Institute of Technology in Pasadena, California (1978), Science
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`Research Counsel Senior Visiting Fellow at Brunel University Institute of
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`Computational Mathematics in Middlesex, England (1978), national science
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`foundation visiting scholar at the University of Texas at Austin, Tx (1977), and
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`teaching assistant at Virginia Polytechnic Institute Department of Engineering
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`Mechanics (1966-67).
`
`4.
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`I am the author of eight (8) books, including, Finite Element Analysis
`
`Concepts, World Scientific Publishing Ltd, Singapore, (2010); Finite Element
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`Analysis with Error Estimators, Elsevier, New York (2005); Object-Oriented
`
`Programming Via Fortran 90, Cambridge University Press, (2003); Finite Elements
`
`for Analysis and Design, Academic Press, London (1994); Computer Assisted
`
`Mechanical Design, Prentice-Hall (1989); Finite Element Analysis for
`
`Undergraduates, Academic Press, London (1987); Applications and
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`Implementation of Finite Element Methods, Academic Press, London (1982); and
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`Computational Methods in Fusion Energy Research, ASME Special Publication,
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`
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`4
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`NOV
`Exhibit 2005
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`
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`IPR2015-01210
`Patent 6,431,294 B1
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`
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`PVP-PB-032, New York (1978). I have also authored or co-authored 138 refereed
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`journal or conference papers. I am an inventor on seven (7) U.S. patents.
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`5. My research and teaching interests include the development of finite element
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`methods for simulation-based design, machine design, structural mechanics,
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`inverse analyses and computational biomechanics with a focus on design
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`sensitivity analysis, multidisciplinary analysis and optimization, and reliability-
`
`based design. Applications include polymer and composites processing, fiber
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`orientation modeling, additive manufacturing, structural optimization, and thermo-
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`mechanical response of lasers and electromagnetic launchers; and include
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`theoretical development, computer implementation and industrial application. My
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`research has been funded by the National Science Foundation, the US Department
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`of Education, the Office of Naval Research, the Air Force Research Laboratory,
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`Leggett and Platt, Inc., Zimmer Corporation, Ameren Corporation, and Sandia
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`National Labs.
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`6.
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`I have been active in the study and design of downhole tools for twenty
`
`years. I have been a member of the Society of Petroleum Engineers (SPE) for the
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`same period. I have visited numerous drilling sites while they were in operation.
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`Almost every year I visit the Oil Technology Conference (OTC) to study the
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`development of new oil field tools and the improvements in designs of positive
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`
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`5
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`NOV
`Exhibit 2005
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`
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`IPR2015-01210
`Patent 6,431,294 B1
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`
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`displacement motors and turbines. I have attended and made technical
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`presentations at international SPE conferences.
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`7.
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`The majority of my experience has focused on the flow of drilling muds
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`through tools, and the use of that flow to activate and terminate actions within
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`tools. I have taken part in physical experiments to visualize such flows in
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`transparent full scale plastic models and I have conducted advanced computational
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`fluid dynamics studies of such flows.
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`8.
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`I have been the co-designer of a downhole tool that uses drilling mud flow to
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`activate, in sequence, two actions of the tool. That design also required stress
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`analysis and vibration simulations of the tool.
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`9.
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`In 2006, I conducted a design review for Sandvik of its Mission air-hammer
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`drilling tool. Its operation employs air flowing through the hammer to control the
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`operations of setting and firing its internal hammer, and to remove cut rock
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`particles.
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`10.
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`In 2012, I was commissioned by the Research Partnership to Secure Energy
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`for America (RPSEA) to co-develop a new design of a sub-sea safety valve for the
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`extra harsh environment of high pressure and high temperature deep production
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`wells. That safety device for production wells involved closing of oil flows in an
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`emergency and was controlled by other fluid flows.
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`
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`6
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`NOV
`Exhibit 2005
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`IPR2015-01210
`Patent 6,431,294 B1
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`
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`11.
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`I have reviewed numerous designs of ‘mud sirens’ that use flow through
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`drilling mud to rotate the components so as to transmit telemetry data to the
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`surface.
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`12.
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`I continue to be active in the area of the design and use of downhole tools
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`and I am currently working on possible new tool designs.
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`13. Based on my work in the area of downhole tools, I have personal knowledge
`
`of the level of skill of those working in that field.
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`14. Exhibit 2007 is my curriculum vitae with a more detailed description of my
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`background.
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`15.
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`I have been asked by the Patent Owner to provide my opinions about the
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`technical issues addressed below. I am being compensated for my time spent on
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`this matter at my standard hourly consulting rate of $450/hour, but I have no
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`financial interest in the outcome of this or any related proceeding. My
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`compensation is not dependent upon the opinions that I am providing in this
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`declaration.
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`16.
`
`In connection with my opinions, I have reviewed (among other items listed
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`below) the U.S. Patent No. 6,431,294 to Eddison et al., entitled “Percussive Tool”
`
`(“the ‘294 patent”), the Petition (Paper 1), the Preliminary Response (Paper 10),
`
`and the Decision (Paper 11).
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`
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`7
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`NOV
`Exhibit 2005
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`IPR2015-01210
`Patent 6,431,294 B1
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`
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`II. DOCUMENTS REVIEWED
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`17.
`
`In conducting my analysis and formulating my opinions in connection with
`
`this declaration, I have reviewed at least the following documents:
`
`Exhibit
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`Description
`
`1001
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`1006
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`1010
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`2007
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`2008
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`2009
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`2010
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`2011
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`2012
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`2013
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`2014
`
`3001
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`
`
`U.S. Patent No. 6,431,294 (issued August 13, 2002), Percussive
`Tool (hereinafter “the `294 patent”)
`U.S. Patent No. 2,738,956 (issued March 20, 1956), Rotary
`Percussion Drilling Device to Bielstein (hereinafter “Bielstein
``956”)
`U.S. Patent No. 3,270,822 (issued September 6, 1966),
`Percussive Unit for Earth Drilling to Cleary (hereinafter
`“Cleary”)
`U.S. Patent No. 3,654,961 (issued April 11, 1972), “Rotary
`Percussion Drill Having a Hydraulically Actuated Percussion
`Device”
`U.S. Patent No. 4,478,248 (issued October 23, 1984), “Rotary
`Valve”
`U.S. Patent No. 5,415,240 (issued May 16, 1995), “Drilling
`Device for a Rock Drill”
`GB No. 2,108,594 (issued March 12, 1986), “A Hydraulic
`Reciprocating Device”
`WO 97/44565 (Published November 27, 1997), “Downhole
`Apparatus”
`
`Merriam Webster’s Collegiate Dictionary, 10th ed., 760 (1995)
`(“Webster’s Dictionary”) (definition of motor)
`Webster’s Dictionary at 354 (definition of driver)
`
`PEH: Drilling Problems & Solutions, Society of Petroleum
`Engineers, available at http://petrowiki.org/PEH%3ADrilling
`Problems and Solutions, (last visited January 27, 2016)
`
`WEBSTER’S 3D NEW INT’L DICTIONARY 1475 (2002)
`(defining “motor” as “one that imparts motion: a source of
`mechanical power”)
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`8
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`NOV
`Exhibit 2005
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`IPR2015-01210
`Patent 6,431,294 B1
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`
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`III. PERSON OF ORDINARY SKILL IN THE ART
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`18.
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`I understand that a person of ordinary skill in the art is a hypothetical person
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`who is presumed to have known the relevant art at the time of the invention. I
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`further understand that the relevant time frame for assessing the ‘294 patent is prior
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`to December 11, 1997, the date on which the first patent application in the family
`
`of patent applications that ultimately resulted in the ‘294 patent was filed in the
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`United Kingdom.
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`19. The ‘294 patent is in the field of downhole drilling operations and devices.
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`All of the art cited by the Patent and Trademark Office during the prosecution of
`
`the application that issued as the ‘294 Patent (Exhibits 2007-2011) was in this
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`field.
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`20. This field involves the use of complex mechanical and electro-mechanical
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`devices used in extremely harsh and challenging conditions. Downhole drilling
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`tools are typically subject to high tensile, compressive, and torque forces as they
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`are impacted repeatedly against subsurface formations. Downhole tools are
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`typically deployed thousands of feet to drill into rock, sand, and/or other geological
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`formations. Downhole equipment is expected to have the durability to operate in
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`such conditions without failure to prevent loss of downtime at the wellsite. Fluids
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`
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`9
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`NOV
`Exhibit 2005
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`
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`IPR2015-01210
`Patent 6,431,294 B1
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`
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`are routinely passed through the downhole tools under high pressure, high
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`temperature, and corrosive conditions.
`
`21. Downhole tools are typically operated using drilling fluid. Drilling Fluid is
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`typically pumped from a mud pit, through the downhole tool, and out the bit to
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`lubricate the bit and carry away cuttings as the drill bit drills into the earth. Fluid
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`is passed under pressure from the drill bit and up through an annulus between the
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`downhole tool and a wall of the wellbore back to the mud pit. Understanding such
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`conditions requires more than mere classroom experience or textbook review for
`
`an understanding of downhole applications. As such, it is my opinion that mere
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`classroom experience is insufficient to render a person one of ordinary skill in this
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`field.
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`22. A person of ordinary skill in the art in the field of the ‘294 patent, as of the
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`1997 timeframe, was a person who, through formal education or extensive
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`practical experience, has the equivalent of a Bachelor’s Degree in Mechanical
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`Engineering and 2-3 years of experience in designing, using or making downhole
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`tools having various applications.
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`23. Given my experience in the fields of mechanical engineering and design and
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`in the designing, using, and making of downhole tools, I can provide opinions
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`10
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`NOV
`Exhibit 2005
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`
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`IPR2015-01210
`Patent 6,431,294 B1
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`
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`about the understanding and qualifications of a person of ordinary skill in the art
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`concerning the technology at issue in this proceeding.
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`IV. LEGAL STANDARDS
`
`24.
`
`I understand that a person of ordinary skill in the art is a hypothetical person
`
`who is presumed to have known the relevant art at the time of the invention. I
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`further understand that the relevant time frame for assessing the ‘294 patent is prior
`
`to December 11, 1997, the date on which the first patent application in the family
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`of patent applications that ultimately resulted in the ‘294 patent was filed in the
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`United Kingdom.
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`25.
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`I understand that a patentability analysis is performed in two steps. First, the
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`patent claims are interpreted to ascertain their scope. Second, the interpreted claims
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`are compared to the prior art references.
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`26.
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`I understand that during an inter partes review the Patent & Trademark
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`Office (PTO) gives patent claims their broadest reasonable interpretation in light of
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`the specification. I also understand that this interpretation is from the vantage of
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`one of ordinary skill in the art at the time of the patent’s effective filing date
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`27.
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`I understand that the claims in an issued patent are not presumed to be valid
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`during an inter partes review, and that the petitioner has the burden to show that a
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`patent claim is not patentable by the preponderance of the evidence.
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`
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`11
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`NOV
`Exhibit 2005
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`IPR2015-01210
`Patent 6,431,294 B1
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`28.
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`I understand that for a patented invention to be obvious under section 103 of
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`the patent law, the challenger must identify prior art references that alone or in
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`combination would have rendered the claimed invention obvious to one of ordinary
`
`skill in the art at the time of the invention. For a claim to be found obvious, every
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`claim limitation must be found present in the combination of the prior art
`
`references before the obviousness analysis proceeds.
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`29.
`
`I understand that the factors that should be assessed in the obviousness
`
`analysis include at least: (1) the scope and content of the prior art; (2) the
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`differences between the prior art and the claim at issue; (3) the level of ordinary
`
`skill in the art; and (4) objective evidence as indicia of nonobviousness. I further
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`understand that the obviousness inquiry must guard against slipping into use of
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`hindsight and resist the temptation to read into the prior art the teachings of the
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`invention at issue. Isolated elements from the prior art should not be picked and
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`chosen and then combined using the invention as a blueprint if such a combination
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`would not have been obvious at the time of the invention.
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`30.
`
`I understand that prior references as a whole need to be considered,
`
`including aspects that teach away from a claimed invention which may rebut
`
`showing of obviousness. In addition, I understand the obviousness analysis cannot
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`discount at the time of invention, the inventor’s insights, and willingness to
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`12
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`NOV
`Exhibit 2005
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`
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`IPR2015-01210
`Patent 6,431,294 B1
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`
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`confront and overcome obstacles, and even serendipity where the pathway to the
`
`invention seems to follow the logical steps to produce these patented properties.
`
`V. OVERVIEW OF THE ‘294 PATENT
`
`31. NOV’s ‘294 Patent relates to a percussive tool for use in drilling. The ‘294
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`Patent discloses four embodiments, each including a valve comprising a rotating
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`upper plate and fixed lower plate with respective ports that vary flow through the
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`tool/fluid pressure force on the mass. Changes in alignment of the respective
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`slots/ports in the plates varies the flow of drilling fluid through the tool which
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`varies the drilling fluid pressure force acting on the mass thereby causing the mass
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`to push against a spring and impact on the drill bit support to provide a percussive
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`action at the drill bit.
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`32.
`
`I have reviewed the Claim Constructions provided in the Decision (Paper
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`11), and apply those constructions herein. With respect to the means, I have
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`applied the construction of the “means for creating a fluid pressure force on the
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`mass” as proposed by Flotek as set forth in the Decision (Paper 11).
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`13
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`NOV
`Exhibit 2005
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`IPR2015-01210
`Patent 6,431,294 B1
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`VI. THE CLAIMS OF THE ‘294 PATENT AT ISSUE ARE NOT
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`OBVIOUS OVER BIELSTEIN
`
`A. Overview of Bielstein.
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`33. United States Patent No. 2,738,956 to Bielstein, entitled “Rotary Percussion
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`Drilling Device” issued on March 20, 1956 (Ex. 1006) (“Bielstein”). Bielstein
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`relates to a device for drilling a well. Bielstein at 1:15-18.
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`34. Bielstein’s valve includes a rotatable element 52 embedded within valve
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`piston 50 (Bielstein at 2:63-65) to open and close ports 65 of the valve piston 50
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`(id. at 3:51-61).
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`35. The valve is used to interrupt the flow of drilling fluid through the apparatus
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`which causes the hammer to hit the anvil and transmit a jar to the drill bit. Bielstein
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`at 1:40-45. The rotatable element is an hourglass shaped member that rotates
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`between a closed position and an open position to interrupt the flow of the drilling
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`fluid. Id. In the closed position, blades of the rotatable element 52 align with
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`openings in the valve piston 52 to block flow, except through passageways 20. Id.
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`at 3:51-55. In the open position, the blades of the rotatable element 52 move away
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`from the openings to a location under the valve piston 52 to allow fluid to pass
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`freely through the openings. Id. at 3:55-61.
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`14
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`NOV
`Exhibit 2005
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`IPR2015-01210
`Patent 6,431,294 B1
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`36.
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`In each embodiment shown, Bielstein provides a ‘self-driven’ valve. In a
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`first embodiment shown (Figs. 1-7), the flow of drilling fluid against the slanting
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`surfaces 33 causes the rotatable valve element 28 to rotate. Id. at 3:14-21. In the
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`second embodiment (Figs. 8-11), fluid force against the piston 50 drives the piston
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`down which moves the helical vane 57 through plate 58, and thereby moves the
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`rotatable member 52 to an open position to permit flow through ports 65. Id. at 48-
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`61. The rotatable member 52 is returned to the closed position to block flow
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`through ports 65 by upward movement of the hammer 21, which pulls the helical
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`vane 57 through plate 58, and thereby moves the rotatable member 52. Id.
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`B. Claim 4 – rotating valve is provided separately of the means for
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`creating a fluid pressure force on said mass.
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`37. Claim 1 includes: (i) a “mass movable relative to the body for impacting on
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`the drill bit support”; (ii) a “means associated with the mass for creating a fluid
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`pressure force on the mass” and (iii) a rotating valve . . . for controlling flow of
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`fluid through the body to provide a varying fluid pressure force on the mass and
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`induce acceleration on the mass.” Claim 4 adds the further limitation that the
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`“rotating valve is provided separately of the means for creating a fluid pressure
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`force on the mass.”
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`15
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`NOV
`Exhibit 2005
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`
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`IPR2015-01210
`Patent 6,431,294 B1
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`38. Figures 2 and 3 of the ‘294 Patent show that the rotating valve is provided
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`separately of the means for creating a fluid pressure force on the mass. ‘294 Patent
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`(Ex. 1001) at 4:7-10 and 4:25-30. These figures show a tubular body and a mass
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`(62 – FIG. 2, 92 – FIG. 3) within the body that is capable of movement. These
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`embodiments also includes a rotating valve (64- FIG. 2, 96 – FIG. 3), separate
`
`from the movable mass that does not move with the movable mass. The rotating
`
`valve controls the flow of fluid through the body such that fluid contacting the
`
`upper surface of the movable mass (and therefore the fluid pressures created on the
`
`mass as a result of the controlled fluid) are controlled. ‘294 Patent (Ex. 1001) at
`
`4:14-24 and 4:57-68. Because the rotating valve of these figures is separate from
`
`and does not move with the movable mass, the rotating valve is clearly “separate
`
`of” the movable mass and the means for creating a fluid pressure force on the
`
`movable mass. ‘294 Patent (Ex. 1001) at 4:7-10.
`
`39. One of skill in the art would understand that a valve requires at least two
`
`structural parts, at least one of which moves relative to the other to regulate flow
`
`through a passage. One of skill in the art would also understand that Bielstein’s
`
`Elements 50 and 52 are both part of Bielstein’s rotating valve.
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`40. One of ordinary skill in the arty would understand that in Bielstein,
`
`structures 50 and 52 each have a surface upon which fluid pressure acts to create a
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`16
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`NOV
`Exhibit 2005
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`
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`IPR2015-01210
`Patent 6,431,294 B1
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`
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`downward force on the mass such that both structures are part of the “means for
`
`creating a fluid pressure force on the mass.”
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`41.
`
`It is clear that the rotating valve of Bielstein is, in all embodiments, part of
`
`the “means for creating a fluid pressure force on the mass”. It would be clear to a
`
`person of ordinary skill in the art, in 1998, that the Bielstein hammer mass 21 is
`
`not provided separately of the means for creating a fluid pressure force. By virtue
`
`of elements 21, 26 and 50 and/or elements 28 and 52, Bielstein cannot disclose or
`
`teach the subject matter of claim 4 which requires that the rotating valve be
`
`provided “separately of” the means for creating. It is, therefore, my opinion that
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`Bielstein does not teach the rotating valve is provided separately of the “means for
`
`creating a fluid pressure force on the mass”.
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`42. Flotek’s Petition does not advance any argument or evidence suggesting
`
`how or why one of ordinary skill in the art would be motivated to redesign and
`
`modify the structure of Bielstein to have the rotating valve provided separately of
`
`the means for creating the fluid pressure force on the mass. Further, is unclear
`
`whether the structures disclosed by Bielstein could even be so modified.
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`17
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`NOV
`Exhibit 2005
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`
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`IPR2015-01210
`Patent 6,431,294 B1
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`C. Claims 1-20 - valve motor for driving said valve.
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`43.
`
`Independent claims 1 and 19 (and the claims dependent thereon) require
`
`both “a rotating valve” and “a valve motor for driving said [rotating] valve.” These
`
`claims provide the rotating valve and the valve motor as separate elements.
`
`44. The specification also shows the rotating valve and the valve motor as
`
`separate components. According to the specification, the valve motor is
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`consistently described and depicted as a motor with a shaft coupled to the valve to
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`rotate the valve as shown in Figures 1 and 2 of the ‘294 Patent. See, ‘294 Patent at
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`Figs. 1-3 and 3:41-43. The Specification also shows the rotating valve and the
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`valve motor as separate components. The Specification states that means for
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`driving the valve may be a valve motor, and most preferably a drilling fluid driven
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`positive displacement motor (“PDM”). ‘294 Patent, 2:31-33. Figure 1 shows the
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`motor is a PDM with a transmission shaft 45 that is coupled to the valve plate 36
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`by telescoping drive shaft 44. See, ‘294 Patent, 3:41-43. Figure 2 shows the
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`transmission shaft of the PDM is coupled to the rotating valve plate 70 without the
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`telescoping drive shaft 44. See, id., 4:41-43.In Figure 2, the transmission shaft of
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`the PDM is coupled to the rotating plate 70 without the telescoping drive shaft.
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`45. The ‘294 Patent shows the valve motor as a separate component from the
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`valve. The valve motor serves as the driver generating the motion imparted to the
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`18
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`NOV
`Exhibit 2005
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`IPR2015-01210
`Patent 6,431,294 B1
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`valve. See, ‘294 Patent at Figs. 1-3. The valve does not act as the driver that is
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`imparting such motion to the valve. Movement of the rotational member 52
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`originates from fluid pressure force against the valve (e.g., rotational member 52),
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`rather than the helical vane 57. The helical vane merely transfers linear motion of
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`the valve into rotational motion. Thus, it is the rotational member 52 of the valve
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`itself, not the helical vane, that acts as the source of the motion and thereby
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`qualifies as the driver.
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`46. One of skill in the art would understand “a valve motor driving a valve” to
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`mean that the valve motor is a component that imparts motion to the valve, and
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`that the valve motor and the valve are different components. One of skill in the art
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`would also understand that, in order to impart force to the valve, the valve motor
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`must impart motion from the valve motor and to the valve.
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`47.
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`In the field of downhole drilling tools, the term “motor” is a component,
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`such as a positive displacement motor or a turbine, that is coupled to a component
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`(e.g., by a shaft) to drive such component. One of skill in the art would understand
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`that the valve motor must be a separate component for driving the valve, and
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`cannot include the same valve that the valve motor is driving.
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`48. According to Flotek’s expert, the helical vane in Figure 8 of Bielstein 956
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`is part of the valve motor because it moves in a manner that causes the valve to
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`19
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`NOV
`Exhibit 2005
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`IPR2015-01210
`Patent 6,431,294 B1
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`
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`rotate. Smith Depo. (Ex. 2004) at 29:16-21. Under this proposed construction, a
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`screwdriver would qualify as a motor because it rotates a screw. However, a
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`screwdriver requires a separate driver (e.g., a person) to impart motion to the
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`screwdriver to rotate the screw. In the same way the screwdriver is driven by a
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`person to rotate the screw, the helical vane merely transfers the motion from the
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`actual driver (e.g., the valve motor) to the part being rotated (e.g., the rotating
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`valve). One of skill in the art would not consider Bielstein’s device, including the
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`helical vane, to be a motor.
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`VII. CONCLUSIONS
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`49. Therefore, as detailed above, one of ordinary skill in the art would find that
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`claims 1-4, 6, 7, 9-13, 15-16 and 18-20 of the `294 patent are NOT rendered
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`obvious by the Bielstein patent.
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`20
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`NOV
`Exhibit 2005
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`IPR2015-01210
`Patent 6,431,294 B1
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`STATEMENT UNDER 18 U.S.C. § 1001
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`50.
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`I declare under penalty of perjury under the law of the United States that all
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`statements made herein are of my own knowledge are true and that all statements
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`made on information ad believe are believed to be true; and further that these
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`statements were made with the knowledge that willful false statements and the like
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`so made are punishable by fine or imprisonment, or both, under Section 1001 of
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`Title 18 of the United States Code.
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`Executed this 28 Day of January, 2016.
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`Respectfully,
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`John Edward Akin, Ph.D. P.E.
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`21
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`NOV
`Exhibit 2005
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