UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`Flotek Industries, Inc. et al.
`Petitioners,
`
`v.
`
`Andergauge Limited,
`Patent Owner.
`
`
`
`
`
`Patent No. 6,431,294
`
`Issue Date: August 13, 2002
`
`Title: Percussive Tool
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT 6,431,294 UNDER
`35 U.S.C. §§ 311-319 AND 37 C.F.R. §§ 42.100 ET SEQ.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`TABLE OF CONTENTS
`
`
`
`I.
`
`COMPLIANCE WITH REQUIREMENTS FOR A PETITION
`FOR INTER PARTES REVIEW.............................................................. 1
`
`A. Notice of Real Party in Interest .................................................................... 1
`
`B.
`
`Notice of Related Matters ............................................................................. 1
`
`C. Notice of Lead and Backup Counsel ........................................................... 1
`
`D.
`
`Service Information ........................................................................................ 2
`
`E. Grounds for Standing .................................................................................... 2
`
`F.
`
`Statement of Precise Relief Requested ........................................................ 2
`
`II. RELEVANT INFORMATION CONCERNING THE
`CONTESTED PATENT .......................................................................... 3
`
`A.
`
`B.
`
`Person of Ordinary Skill in the Art .............................................................. 3
`
`Claim Construction ........................................................................................ 3
`
`III. OVERVIEW OF THE `294 PATENT ...................................................... 8
`
`A. Overview of Exemplary Prior Art ................................................................ 8
`
`B.
`
`C.
`
`Brief Description of the `294 Patent ......................................................... 10
`
`Prosecution History of the `294 Patent ..................................................... 10
`
`IV.
`
`SPECIFIC GROUNDS FOR PETITION .............................................. 11
`
`A.
`
`Bielstein Renders Obvious Claims 1-7, 9-13, 15-16 and 18-24 of
`the `294 Patent .............................................................................................. 11
`
`B.
`
`Cleary Renders Obvious Claims 1, 5 and 8 of the `294 Patent .............. 40
`
`CONCLUSION ........................................................................................ 59
`
`
`
`
`
`i
`
`V.
`
`
`
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`
`
`

`
`Patent No. 6,431,294
`
`
` Petition Requesting Inter Partes Review
`
`
`
`TABLE OF AUTHORITIES
`
`
`Cases
`
`In re ICON Health and Fitness, Inc. 496 F.3d 1374, 1379 (Fed. Cir. 2007) ............ 3
`
`Statutes
`
`35 U.S.C. § 102(b) ............................................................................................ 11, 40
`
`35 U.S.C. § 103 .......................................................................................................... 2
`
`35 U.S.C. § 318(b) ...................................................................................................59
`
`Other Authorities
`
`37 C.F.R. § 42.10(a) ................................................................................................... 1
`
`37 C.F.R. § 42.100(b) ................................................................................................ 3
`
`37 C.F.R. § 42.100(b)(5) ..........................................................................................11
`
`37 C.F.R. § 42.104(a) ................................................................................................. 2
`
`37 C.F.R. § 42.104(b)(4) ..........................................................................................11
`
`37 C.F.R. § 42.8(b)(1) ................................................................................................ 1
`
`37 C.F.R. § 42.8(b)(4) ................................................................................................ 1
`
`37 C.F.R. §§ 42.8(b) .................................................................................................. 1
`
`MPEP § 2125 ...........................................................................................................29
`
`
`
`ii
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`
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`
`
`

`
` Petition Requesting Inter Partes Review
`
`TABLE OF EXHIBITS
`
`Patent No. 6,431,294
`
`
`
`
`Exhibit
`1001
`
`Description
`U.S. Patent No. 6,431,294 (issued August 13, 2002), Percussive
`Tool (hereinafter “the `294 patent”)
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`Declaration of Dr. Douglas Smith
`
`Curriculum Vitae of Dr. Douglas Smith
`
`U.S. Patent No. 1,132,063 (issued March 16, 1915), Impact
`Tool to Bardeen (hereinafter “Bardeen”)
`
`U.S. Patent No. 2,250,912 (issued July 29, 1941), Well
`Drilling System to Hudson (hereinafter “Hudson”)
`
`U.S. Patent No. 2,738,956 (issued March 20, 1956), Rotary
`Percussion Drilling Device
`to Bielstein
`(hereinafter
`“Bielstein”)
`
`U.S. Patent No. 2,743,083 (issued April 24, 1956), Apparatus
`to Impart Vibrating Motion to a Rotary Drill Bit to Zublin
`(hereinafter “Zublin”)
`
`U.S. Patent No. 2,780,438 (issued February 5, 1957), Device
`for Drilling Wells to Bielstein (hereinafter “Bielstein `438”)
`
`U.S. Patent No. 3,216,514 (issued Nov. 9, 1965), Rotary
`Drilling Apparatus to Nelson (hereinafter “Nelson”)
`
`U.S. Patent No. 3,270,822 (issued September 6, 1966),
`Percussive Unit for Earth Drilling to Cleary (hereinafter
`“Cleary”
`
`U.S. Patent No. 4,080,115 (issued March 21, 1978),
`Progressive Cavity Drive Train to Sims et al. (hereinafter
`“Sims”)
`
`
`
`iii
`
`

`
`Patent No. 6,431,294
`
`
` Petition Requesting Inter Partes Review
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`U.S. Patent No. 5,139,400 (issued August 18, 1992),
`Progressive Cavity Drive Train to Ide (hereinafter “Ide”)
`
`U.S. Patent No.2,028,407 (issued January 1, 1936), Gear
`Mechanism to Moineau (hereinafter “Moineau”)
`
`Amended Complaint in National Oilwell DHT, L.P. v. Flotek
`Industries, Inc., Case No. 2:14-CV-01056, Docket No. 18,
`filed March 4, 2015 in the United States District Court for the
`Eastern District of Texas, Marshall Division.
`
`File History of U.S. Patent No. 6,431,294 (Ex. 1001)
`
`American Heritage Dictionary (1997), Definition of “Slot”
`and “Spline”
`
`
`
`iv
`
`

`
`
`I.
`
`COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW
`
`A. Notice of Real Party in Interest
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), notice is hereby given that the real parties-
`
`in-interest in this petition are Flotek Industries, Inc. as well as 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) (collectively “Petitioners”).
`
`B. Notice of Related Matters
`
`The `294 patent is the subject of a related litigation as set forth in the
`
`“Amended Complaint” filed in National Oilwell DHT, L.P. v. Flotek Industries, Inc.,
`
`Case No. 2:14-CV-01056, Docket No. 18, filed March 4, 2015 (E.D.Tx.). [Ex. 1014,
`
`Amended Complaint]. In addition, the `294 patent is asserted in National Oilwell
`
`DHT, L.P. v. Amega West Services, LLC, 2:14-CV-01020 filed November 7, 2014
`
`(E.D.Tx.).
`
`C. Notice of Lead and Backup Counsel
`
`Pursuant to 37 C.F.R. §§ 42.8(b)(3), 42.8(b)(4), and 42.10(a), Petitioner
`
`designates the following lead and backup counsel:
`
`Lead Counsel
`
`Backup Counsel
`
`James Murphy (Reg. No. 55,474)
`james.murphy@novakdruce.com
`Flotek-IPR@novakdruce.com
`
`
`Andrew Weaver (Reg. No. 56,468)
`andrew.weaver@novakdruce.com
`Flotek-IPR@novakdruce.com
`
`
`
`
`1
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`

`
`Patent No. 6,431,294
`
`
` Petition Requesting Inter Partes Review
`
`NOVAK DRUCE CONNOLLY
`BOVE + QUIGG LLP
`1000 Louisiana Street
`Fifty-Third Floor
`Houston, TX 77002
`Telephone: 713.571.3400
`Fax: 713.456.2836
`
`Service Information
`D.
`Petitioners consent to service by e-mail at Flotek-IPR@novakdruce.com.
`
`NOVAK DRUCE CONNOLLY
`BOVE + QUIGG LLP
`1000 Louisiana Street
`Fifty-Third Floor
`Houston, TX 77002
`Telephone: 713.571.3400
`Fax: 713.456.2836
`
`E. Grounds for Standing
`
`Petitioners certify under 37 C.F.R. § 42.104(a) that the patent for which
`
`review is requested is available for inter partes review and that Petitioners are not
`
`barred or estopped from requesting an inter partes review challenging the patent
`
`claims on the grounds identified in the petition.
`
`F.
`
`Statement of Precise Relief Requested
`
`Petitioners respectfully request that claims 1-13, 15-16 and 18-24 of U.S.
`
`Patent No. 6,431,294 (“the `294 patent”) (Ex. 1001) be cancelled based on the
`
`following grounds of unpatentability, explained in detail below.
`
`Ground 1 – Claims 1-7, 9-13, 15-16 and 18-24 are rendered obvious under §
`
`103 by U.S. Patent No. 2,738,956 to Bielstein. [Ex. 1006, Bielstein].
`
`Ground 2 – Claims 1, 5 and 8 are rendered obvious under § 103 by U.S.
`
`Patent No. 3,270,922 to Cleary. [Ex. 1010, Cleary].
`
`
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`2
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`

`
`Patent No. 6,431,294
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`II. RELEVANT INFORMATION CONCERNING THE CONTESTED
`PATENT
`
` Petition Requesting Inter Partes Review
`
`A.
`
`Person of Ordinary Skill in the Art
`
`A person of ordinary skill in the art in the field of the `294 patent is a person
`
`who has, through formal education or extensive practical experience has the
`
`equivalent of a Bachelor’s Degree in Mechanical Engineering or 2 to 3 years of
`
`experience in the design, use or making of downhole tools. [Ex. 1002, Declaration
`
`of Dr. Douglas E. Smith at ¶¶ 9-11, hereinafter “Ex. 1002, Smith Dec. at ¶ __”].
`
`B. Claim Construction
`
`A claim in inter partes review is given the “broadest reasonable construction
`
`in light of the specification.” See 37 C.F.R. § 42.100(b); see also In re ICON Health
`
`and Fitness, Inc. 496 F.3d 1374, 1379 (Fed. Cir. 2007). For the purposes of this
`
`proceeding, the claim terms are presumed to take on their broadest reasonable
`
`interpretation in light of the specification. Petitioners provide a more detailed
`
`explanation of the broadest reasonable interpretation of certain terms present in the
`
`challenged claims in the subsections below. The constructions set forth below are
`
`provided for the purposes of this inter partes review only and may be different from
`
`constructions proposed in litigation forums using a different standard.
`
`“Means Associated with the Mass for Creating a Fluid Pressure Force on
`
`Said Mass”:
`
`
`
`3
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`

`
`Patent No. 6,431,294
`
`
` Petition Requesting Inter Partes Review
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`Claims 1 and 21 each recite a limitation directed to a “means associated with
`
`the mass for creating a fluid pressure force on said mass.” [Ex. 1001, `294 patent].
`
`Given the lack of recited structure and its use of “means for …” language, this claim
`
`would be understood by one of ordinary skill in the art as written in means-plus-
`
`function format. [Ex. 1002, Smith Dec., at ¶ 28]. The function of the “means
`
`associated with the mass …” limitation is “creating a fluid pressure force on said
`
`mass.” [Ex. 1002, Smith Dec., at ¶ 30; Ex. 1001, `294 patent].
`
`Those of ordinary skill in the art would understand that the structures
`
`corresponding to the “means associated with the mass …” are those surface areas
`
`disclosed in the `294 patent associated with the mass – whether integral or provided
`
`separately from the mass – that are subjected to fluid pressure. [Ex. 1002, Smith
`
`Dec., at ¶¶ 31-32]. These include the upward facing surfaces and the downward
`
`facing surfaces of the mass. [Id. at ¶¶ 32-35; Ex. 1001, `294 patent, Fig. 1, 3:44-61,
`
`Fig. 2, 4:15-23, Fig. 3, 4:38-46]. Whether the mass is moved upwardly or
`
`downwardly by the fluid pressure depends on the net fluid pressure force acting on
`
`the mass. [Id.].
`
`The `294 patent provides for “a means associated with the mass …” in a first
`
`embodiment as shown in Figure 1. [Ex. 1002, Smith Dec., at ¶¶ 32-33; Ex. 1001,
`
``294 patent, Fig. 1, 3:44-61]. Specifically, the `294 patent discloses that a restriction
`
`in the flow passageway formed by rotating valve 32, mounted on the upper end of
`
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`4
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`Patent No. 6,431,294
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`mass 28, includes a valve plate 34 fixed to mass 28 and a valve plate 36 which rotates
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` Petition Requesting Inter Partes Review
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`relative to mass 28 to increase the pressure in the inlet to the tubular body 14 which
`
`is adjacent to and above valve 32. [Id.]. The increased pressure creates a force that
`
`is exerted downwardly on the valve plate 36 and any upwardly facing areas of mass
`
`28. [Id.]. Downwardly facing areas on mass 28 below rotating valve 32 are
`
`subjected to a lower pressure due to the pressure drop in said valve. The net effect is
`
`a pressure force acting downward along the longitudinal axis motion of mass 28.
`
`[Id.].
`
`The `294 patent also provides for “a means associated with the mass …” in an
`
`alternate second embodiment as shown in Figure 2. [Ex. 1002, Smith Dec., at ¶ 34;
`
`Ex. 1001, `294 patent, Fig. 2, 4:15-23]. In this embodiment, a restriction in the flow
`
`passageway formed by rotating valve 64, fixed within the drill body 68, includes a
`
`stationary valve plate 66 and a rotating valve plate 70, which rotates relative to drill
`
`body 68 to increase the pressure in the fluid passageway just beneath rotating valve
`
`64 and above mass 62. [Id.]. The increased pressure creates a force exerted
`
`downwardly on the upward facing area on the top surface of mass 62. [Id.].
`
`Downwardly facing areas associated with mass 62 are below nozzle 74, which
`
`provides for a pressure drop such that said downward facing areas are subjected to a
`
`lower fluid pressure than the upward facing area on the top surface of mass 62. [Id.].
`
`The net effect is a pressure force acting downward along the longitudinal axis motion
`
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`5
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`

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`Patent No. 6,431,294
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`of mass 62. [Id.]. Here, the rotating valve 64 is also separate from “a means
`
` Petition Requesting Inter Partes Review
`
`associated with the mass for creating a fluid pressure force on said mass.” [Id.].
`
`The `294 patent further provides for an alternate third embodiment as shown
`
`in Figure 3. [Ex. 1002, Smith Dec., at ¶ 35; Ex. 1001, `294 patent, Fig. 3, 4:38-46].
`
`Here, a restriction in the flow passageway is formed by rotating valve 96, fixed
`
`within the tubular drill body 98, includes a stationary diverter valve plate 97 and a
`
`rotating diverter valve plate 99 which rotates relative to tubular drill body 98 to
`
`increase pressure in the fluid passageway just beneath rotating valve 96 and above
`
`reciprocating mass 92. [Id.]. The increased pressure creates a force exerted
`
`downwardly on the top surface of reciprocating mass 92. [Id.]. Downwardly facing
`
`areas associated with reciprocating mass 92 are below nozzle 94, which provides for
`
`a pressure drop such that said downward facing areas are subjected to a lower fluid
`
`pressure than the upward facing area on the top surface of reciprocating mass 92.
`
`[Id.]. The net effect is a pressure force acting downward along the longitudinal axis
`
`motion of reciprocating mass 92. [Id.]. Again, the rotating valve 96 is separate from
`
`“a means associated with the mass …,” which is the increased fluid pressure on the
`
`upwardly facing area on the top surface of reciprocating mass 92. [Id.].
`
`“Slot”:
`
`Claim 7 of the `294 patent recites that “fluid ports are in the form of slots on
`
`a common axis.” While the term “slot” appears in various locations in the
`
`
`
`6
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`

`
`Patent No. 6,431,294
`
`specification, the specification does not provide any special meaning for the term.
`
` Petition Requesting Inter Partes Review
`
`For example, the specification states “[e]ach plate 34, 36 defines a slot 38, 40
`
`positioned on the drill longitudinal axis 42, such that rotation of the valve plate 36
`
`moves the slots 38, 40 into and out of alignment to vary the flow area defined
`
`thereby.” [Ex. 1001, `294 patent, 3:34-38; Ex. 1002 at ¶ 36]. Similarly, the Figures
`
`of the `294 patent only show the valve ports from the side, which obscures their
`
`nature. [Ex. 1001, `294 patent, Figures 1-3; Ex. 1002 at ¶ 36]. Likewise, the term
`
`does not appear to be the basis of any discussion in the file history. [Ex. 1015; Ex.
`
`1002 at ¶ 36].
`
`Accordingly, one of ordinary skill in the art would understand those terms
`
`according to their ordinary and accustomed meaning. [Ex. 1002, Smith Dec., at ¶
`
`37]. The American Heritage Dictionary (1997) defines “slot” as follows: “1. A
`
`narrow opening; a groove or slit.” [Ex. 1016, American Heritage Dictionary (1997),
`
`definition of “Slot”; Ex. 1002, Smith Dec. at ¶ 37]. Accordingly, “slot” means “a
`
`narrow opening, groove, or slit.” [Ex. 1002, Smith Dec., at ¶ 38].
`
`“Spline”:
`
`Claim 15 of the `294 recites: “wherein said drill bit support is splined to said
`
`body.” [Ex. 1006, Bielstein, Claim 15; Ex. 1002, Smith Dec. at ¶ 39]. The `294
`
`patent does not use the word “spline” in any special manner, nor is the word “spline”
`
`the basis for any discussion in the file history. [Ex. 1002, Smith Dec. at ¶ 39; Ex.
`
`
`
`7
`
`

`
`Patent No. 6,431,294
`
`1001, `294 patent; Ex. 1016]. Accordingly, one of ordinary skill in the art would
`
` Petition Requesting Inter Partes Review
`
`understand the term “spline” according to its ordinary and accustomed meaning. [Id.
`
`at ¶ 39]. The American Heritage Dictionary (1997) defines “spline” as follows: “1.a
`
`[a]ny of a series of projections on a shaft that fits into slot on a corresponding shaft,
`
`enabling both to rotate together.” [Ex. 1016, American Heritage Dictionary (1997),
`
`definition of “Spline”; Ex. 1002, Smith Dec. at ¶ 39]. Accordingly, “spline” means
`
`“any of a series of projections on a shaft that fit into slots on a corresponding shaft
`
`enabling both to rotate together.” [Ex. 1002, Smith Dec. at ¶ 40].
`
`III. OVERVIEW OF THE `294 PATENT
`
`A. Overview of Exemplary Prior Art
`
`The `294 patent is entitled “Percussive Tool” and is in the field of earth-
`
`drilling downhole devices. [Ex. 1001]. Some patents in this crowded field date back
`
`at least a century and many prior art patents disclose one or more of the claimed
`
`features. [Ex. 1002, Smith Dec. at ¶ 12]. For example, U.S. Patent No. 1,132,063
`
`to Bardeen dates back to 1915 and discloses a hammer drill that relies on a rotating
`
`valve to create fluid pressure forces that cause a hammer to strike a hammer. [Ex.
`
`1002, Smith Dec. at ¶ 13; Ex. 1004, Bardeen]. U.S. Patent No. 2,250,912 to Hudson
`
`dates to 1941 and discloses the use of a Moineau-type fluid motor to create drill bit
`
`rotation. [Ex. 1002, Smith Dec., ¶ 14; Ex. 1005, Hudson; Ex. 1013, Moineau]. U.S.
`
`Patent No. 2,743,083 to Zublin, issued in 1954, discloses turbine driven valves to
`
`
`
`8
`
`

`
`Patent No. 6,431,294
`
`create water hammer effects. [Ex. 1002, Smith Dec. at ¶ 15; Ex. 1007, Zublin].
`
` Petition Requesting Inter Partes Review
`
`Importantly, Zublin also teaches the usefulness of continuous flow in the device and
`
`the use of bypass pathways for tailoring fluid flow and fluid pulsing for different
`
`operating conditions. [Id. at ¶ 15; Ex. 1007, Zublin, 2:68-3:6].
`
`U.S. Patent No. 2,780,438 to Bielstein issued in 1957 (“Bielstein `438”).
`
`Bielstein `438 discloses a valve that uses a rotating valve plate driven by a helical
`
`vane that rotates from a fully open position of maximum flow, to a closed position
`
`of minimum flow, thus creating fluid pressure pulses. [Id. at ¶ 17; Ex. 1008,
`
`Bielstein `438]. In a design with many similar features, U.S. Patent No. 3,216,514
`
`to Nelson (which issued in 1962) discloses arcuate slots that come into and out of
`
`alignment periodically varying fluid flow and pressure. [Id. at ¶ 18; Ex. 1009,
`
`Nelson]. Nelson also discloses that completely closing off the flow through the
`
`device is not necessary. [Id. at ¶ 18; Ex. 1009, Nelson 1:58-62, 2:14-23, 4:69-75].
`
`U.S. Patent No. 4,080,115 to Sims, issued in 1978, discloses another
`
`Moineau-type device with a planetary gear system internal to the tubular housing to
`
`avoid using a double universal joint. [Id. at ¶ 19; Ex. 1011, Sims]. Similarly, U.S.
`
`Patent No. 5,139,400 to Ide, issued in 1992, discloses offset lugs for converting the
`
`complex motion of a Moineau-type motor into simple rotation. [Id. at ¶ 20; Ex.
`
`1012, Ide].
`
`
`
`9
`
`

`
`Patent No. 6,431,294
`
`
` Petition Requesting Inter Partes Review
`
`B.
`
`Brief Description of the `294 Patent
`
`The `294 patent is directed to a percussion drill including a tubular fluid
`
`transmitting body with a drill bit mounted on a drill bit support. The drill bit support
`
`is mounted in the body via a spring and splines. A mass is spring mounted in the
`
`body and is movable to impact on a face of the drill bit support. [Ex. 1001, `294
`
`patent, Abstract; Ex. 1002, Smith Dec. at ¶ 21]. A rotating valve fixed to the mass
`
`includes valve plates with respective slots. As the valve plates are rotated, the slots
`
`move in and out of alignment to vary the flow of fluid. Restricted fluid flow creates
`
`a pressure differential across the valve, which causes the mass to move down and
`
`compress a spring. When the valve is opened, the pressure differential is decreased,
`
`and the mass is pushed upward by the spring. [Ex. 1001, `294 patent, 3:32-61].
`
`Continuous rotation of the valve thus causes the mass to reciprocate within the body,
`
`providing a percussive action at the drill bit. [Ex. 1001, `294 patent, 3:63-67].
`
`C.
`
`Prosecution History of the `294 Patent
`
`The `294 Patent was filed on June 5, 2000, as a national stage entry of
`
`PCT/GB98/03710 (filed on December 11, 1998), and claiming foreign priority to
`
`GB 9726204.2 (filed December 11, 1997). In the first Office Action mailed August
`
`9, 2001, claims 1-20 were rejected under 35 U.S.C. 103(a) for being unpatentable
`
`over U.S. Patent No. 3,654,961 to Phillips in view of U.S. Patent No. 4,478,248 to
`
`DeVall et al. [Ex. 1015, Office Action of August 9, 2001 at 3]. In a Response, on
`
`
`
`10
`
`

`
`Patent No. 6,431,294
`
`January 9, 2002, the applicant amended claims 1 and 18-20; and added new
`
` Petition Requesting Inter Partes Review
`
`dependent claims 21-24. [Id., Amendment of February 6, 2001 at 2-3]. The
`
`amended claims added language directed to the drill bit support being coupled or
`
`mounted to the body and the rotating valve being located in the body. Applicant
`
`argued that the valves creating pressure pulsing were not located in the housing. [Id.,
`
`Amendment of February 6, 2001 at 4]. Applicant further argued that “even if a rotary
`
`valve, such as the one taught by DeVall et al., could be substituted for the timing
`
`device pump combination 146 of the Phillips drill, there is no suggestion that the
`
`rotary valve could be ‘located in the body’ of the drill as required by Claim 1.” [Id.
`
`at 4-5]. On March 15, 2002, the Office mailed a Notice of Allowance, stating all the
`
`claims were allowed. [Id., Notice of Allowability].
`
`IV. SPECIFIC GROUNDS FOR PETITION
`
`The challenged claims are unpatentable for the reasons set forth in detail
`
`below, per 37 C.F.R. § 42.104(b)(4)–(5).
`
`A. Bielstein Renders Obvious Claims 1-7, 9-13, 15-16 and 18-24 of the `294
`Patent
`
`United States Patent No. 2,738,956 to Bielstein, entitled “Rotary Percussion
`
`Drilling Device” issued on May 23, 1952 (“Bielstein”). [Ex. 1006, Bielstein]. As a
`
`result, the Bielstein patent is prior art pursuant to 35 U.S.C. § 102(b).
`
`As shown in Figure 1 of the Bielstein patent, Bielstein generally discloses a
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`device comprising a hollow drill stem wherein drilling fluid flows, a drill bit attached
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`Patent No. 6,431,294
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`at its lower end, an anvil that is coupled to the drill bit, a hammer that longitudinally
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`moves up and down to strike the anvil, a spring to bias the hammer in an upward
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`direction and a valve piston that contains a rotating valve plate. [Ex. 1002, Smith
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`Dec. at ¶ 46; Ex. 1006, Bielstein, 1:23-59, Fig. 1-7]. The rotation of the valve causes
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`passageways to open and close to “interrupt” the flow of drilling fluid to create
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`pressure pulses that causes the valve piston to push the hammer against the anvil.
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`[Id.]. In the Figure 8 embodiment, discussed below in more detail, a helical vane on
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`which a slidable plate is mounted in the tubular member drives the opening and
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`closing of the valve. [Id.; Ex. 1006, Bielstein 1:23-59; Figure 8].
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`Claim 1
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`[1a] A percussion drill comprising:
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`Bielstein discloses a percussion drill that “transmits a jar to the drill bit” or
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`“causing jars or vibrations on a drill bit.” [Ex. 1002, Smith Dec., at ¶ 48; Ex. 1006,
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`Bielstein 1:45, 1:18-22]. More specifically, Bielstein discloses the percussion effect
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`that is created by the striking of hammer 21 against the anvil 14 which is attached to
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`drill bit 19 directly or with sub 18 (attached with mating threads 17 and 18a) which
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`may be considered an integral part of the drill bit 19. [Id. at ¶ 50; Ex. 1006, Bielstein,
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`2:53-55]. The hammer 21 communicates jars and vibrations through sub 18 to drill
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`bit 19. [Id. at ¶ 50; Ex. 1006, Bielstein, 3:27-29, Figure 1]. Thus, the bit penetrates
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`formations more readily than without percussion. [Id. at ¶¶ 50-51; Ex. 1006,
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`Bielstein, 3:40-45, 4:21-24, Claims 1-5].
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` [1b] a fluid transmission body;
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`Bielstein discloses a fluid transmission body. Fluid is transmitted from an
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`inlet at said the upper end to an exit at the drill bit at the lower end. [Ex. 1002, Smith
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`Dec. at ¶ 52; Ex. 1006, Bielstein, 1:38-40, Claims 1-5, Figure 1]. With respect to
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`the Figure 1 embodiment, Bielstein discloses that the valve piston 26 is provided
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`with ports 34 through which drilling fluid passes and that anvil 14, the sub 18 and
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`the drill bit 19 also define a passageway 35 which permits drilling fluid to pass
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`through the drill stem. [Id. at ¶ 53; Ex. 1006, Bielstein, 2:44-50, Figure 1].
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`Likewise, with respect to the Figure 8 embodiment, Bielstein discloses “a
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`valve piston 50 is slidably arranged by way of keys and keyways within a sleeve 51
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`which, in turn, is fixed in the tubular member 11. The valve piston 50 is attached to
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`the hammer, with its lower end in contact with the upper end of the hammer 21 as in
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`the embodiment of Figs. 1 to 7. Arranged within the valve piston 50 is a rotatable
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`valve element 52 which is provide with a plurality of ports 53.” [Id. at ¶ 53; Ex.
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`1006, Bielstein, 2:56-65; Figure 8]. Further, “velocity ports 53 in the member 52
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`are designed to sustain circulation while the valve 52 is in the closed to position and
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`to allow the apparatus to be started. After the piston 50 has travelled downwardly,
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`the hammer 21 has struck the anvil 14 and the valve 52 is rotated to the open
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`position.” [Id. at ¶ 53; Ex. 1006, Bielstein, 4:7-13].
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`Bielstein also discloses a passageway for transmitting fluid through the body
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`that is never entirely cut off but is only “partially interrupted.” [Id. at ¶ 54; Ex. 1006,
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`Bielstein, 3:23-25 (“In the closed position the flow of drilling fluid is at least partially
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`interrupted”), 4:25-29 (“It is to be understood in the description taken with the
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`several figures of the drawing that the flow of drilling fluid is never entirely cut off
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`but is only interrupted.”), 4:7-11 (“The velocity ports 53 in the member 52 are
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`designed to sustain circulation while the valve 52 is in the closed position.”)].
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` [1c] a drill bit support coupled to the body;
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`Bielstein discloses a drill bit support, disclosed as sub 18, attached by threads
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`18a to drill bit 19. The sub 18 is coupled to tubular member 11 at its lower end near
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`its attachment to drill bit 19 as shown in Figure 1 by ways of keys 13 and keyways
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`30. [Ex. 1002, Smith Dec., at ¶ 55; Ex. 1006, Bielstein, 2:13-24, Figures 1, 7].
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`[1d] a mass movable relative to the body for impacting on the drill bit
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`support;
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`Bielstein discloses a mass, which is hammer 21 in Figures 1, 2 and 8, that
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`moves longitudinally within and relative to tubular member 11, the body of the
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`rotary percussion drilling device, and also impacts the anvil 14. [Ex. 1002, Smith
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`Dec. ¶ 56; Ex. 1006, Bielstein, 1:30-34; 2:56-63, Claims 1-5 (“a hammer arranged
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`Patent No. 6,431,294
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`longitudinally within said member for downward movement against said anvil.”)].
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`Bielstein further discloses a valve in the fluid flow passageway that creates a flow
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`restriction when the valve is in the closed position providing for a partial interruption
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`of the flow. The flow “interruption” causes a downward force on piston 50 and then
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`on hammer 21, which strikes anvil 14 to create a jar on drill bit 19 through sub 18
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`(the drill bit support). [Id. at Dec. ¶ 57; Ex. 1006, Bielstein, 3:23-36, Figure 1, 8].
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`Bielstein discloses the percussion effect that is created by the striking of
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`hammer against the anvil 14 which is attached to drill bit 19 directly, or with sub 18
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`(attached with mating threads 17 and 18a), which may be considered an integral part
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`of the drill bit 19. [Ex. 1002, Smith Dec. at ¶ 58; Ex. 1006, Bielstein, 2:53-55]. The
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`hammer 21 communicates jars and vibrations through sub 18 to drill bit 19. [Id.; Ex.
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`1006, Bielstein, 3:27-29, 3:61-4:24, Figure 1, 8]. One of ordinary skill in the art
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`would recognize that the hammer 21 striking against anvil 14 to transmit jars or
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`vibrations to drill bit 19 through sub 18 would provide the same if anvil 14 and sub
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`18 were considered collectively as the drill bit support. [Id.].
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`[1e] means associated with the mass for creating a fluid pressure force on
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`said mass;
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`Bielstein discloses a “means associated with the mass for creating a fluid
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`pressure force on said mass” in accordance with the construction provided above.
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`Bielstein discloses a restriction in the flow passageway formed by the valve element
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`52 and ports 65 increases the inlet pressure in tubular housing 11, adjacent to and
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`above the top service of piston 50. [Ex. 1002, Smith Dec. at ¶ 59; Ex. 1006,
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`Bielstein, 3:46-4:24 (“… As pressure is applied to the drill stem, the piston 50 is
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`forced downwardly …”)]. The increased pressure creates a downward force along
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`the longitudinal housing 11 that is exerted on the piston 50 that is attached to the
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`upper end of the hammer 21, and as such, is associated with the hammer 21. [Id.;
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`Ex. 1006, Bielstein, 3:61-4:24]. A downward force along the longitudinal axis of
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`the tubular housing 11 is applied to the piston 50 and the hammer 21. [Id.; Ex. 1006,
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`Bielstein 3:61-4:24 (“After the piston 50 has travelled downwardly, the hammer has
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`struck the anvil 14 and the valve is rotated to the open position.”)]. Bielstein Figure
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`10 shows this upward facing area of the piston 50 as a circular area having arcuate
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`ports 64. [Id.; Ex. 1006, Bielstein, Figure 10].
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`[1f] a rotating valve located in the body for controlling flow of fluid
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`through the body to produce a varying fluid pressure force on the mass
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`and induce acceleration of the mass; and
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`Bielstein discloses a rotating valve appearing in Figures 8 through 10 within
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`a valve piston or piston 50 positioned to move longitudinally within tubular member
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`11. [Ex. 1002, Smith Dec. at ¶ 60; Ex. 1006, Bielstein, 2:56-63, Figures 8-10]. The
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`valve includes passageways or ports formed by the ports 65 in the valve piston 50
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`and includes one or more ports or passageways 53 in addition to the arcuate openings
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`provided by valve element 52, which rotates on bearings with shaft 54. [Id.; Ex.
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`1006, Bielstein, 3:46-4:24]. Flow through the valve varies between a maximum flow
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`“open position,” occurring when the ports 65 align with the arcuate openings in valve
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`element 52 and a minimum (but non-zero) flow “closed position,” when the valve
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`element 52 is rotated with respect to valve piston 50 such that the main segments in
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`valve element 52 mostly cover openings 65 in valve piston 50. [Id.; Ex. 1006,
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`Bielstein 3:61-4:24]. One of ordinary skill in the art would recognize that fluid flow
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`continues even in the closed position, due to “velocity ports 53,” which provide for
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`an open flow passageway when aligned with openings 65 in piston 50. [Id.; Ex.
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`1006, Bielstein 3:61-4:24 (“… The velocity ports 53 in the member 52 are desi