`Petitioner Dynamic Air Inc.’s
`Demonstrative Exhibits
`
`IPR Nos. 2016-256, 2016-259,
`2016-260, 2016-262, 2016-263,
`2016-264
`
`DYNAMIC AIR INC.
`EXHIBIT 1116
`
`
`
`Prior Art Equipment
`
` Ciaffone
`
` Denseveyor
`
`
`
` Brown
`
`
`
`
`
`Ex 1006 at Fig. 2; Ex. 1007 at Fig. 5; Ex. 1048 at 348; IPR2016-00256, Paper 41 at 14; -00259, Paper 42
`at 15; -00260, Paper 41 at 14; -00262, Paper 42 at 14; -00263, Paper 42 at 14; -00264, Paper 41 at 14.
`
`2
`
`
`
`Claimed Equipment
`
`• Patent relies on “standard” equipment
`
`
`
`
`
`
`
`
`
`(Ex 1001 at 3:60-62, 6:32-5)
`• Patent identifies no new structure
`
`IPR2016-00256, Paper 41 at 14; -00259, Paper 42 at 14-15; -00260, Paper 41 at 14; -00262, Paper 42 at 14;
`-00263, Paper 42 at 13-14; -00264, Paper 41 at 14-15.
`
`3
`
`
`
`P.O. Admits Equipment Is Old
`
`• 2001 Article (MI-2026 at 2)
`
`
`
`• 2003 M-I Brochure (DAI-1113 at 3)
`
`IPR2016-00256, Paper 41 at 24; -00259, Paper 42 at 6, 15, 25; -00260, Paper 41 at 14, 16-17, 25; -00262,
`Paper 42 at 6, 14, 25; -00263, Paper 42 at 6, 14, 16, 25; -00264, Paper 41 at 5-6, 15, 26.
`
`
`4
`
`
`
`Drill Cuttings
`
`Ex. 1040; IPR2016-00256, Paper 1 at 12; -00259, Paper 1 at 12; -00260, Paper 1 at 12; -00262, Paper 1
`at 12; -00263, Paper 1 at 12; -00264, Paper 1 at 12.
`
`5
`
`
`
`Materials Conveyed by Prior Art: Ciaffone
`
`
`
`Conveys “sludges,” “digestive
`scum in sewage waste,” and
`“animal waste” (Ex. 1006 at 1:8-15,
`1:49-52)
`
`Materials are difficult to convey
`“in view of the bulk of the waste
`solids and their wet condition”
`(Ex. 1006 at 1:30-33)
`
`“[T]he basic approach consists of
`conveying the waste by air
`pressure . . .” (Ex. 1006 at 1:74-2:1)
`
`
`
`IPR2016-00256, Paper 41 at 9; -00259, Paper 42 at 8; -00260, Paper 41 at 8; -00262, Paper 42 at 8; -
`00263, Paper 42 at 8; -00264, Paper 41 at 7-8.
`
`6
`
`
`
`Materials Conveyed by Prior Art: Ciaffone II
`
`Exhibit 1112
`Same coned-bottom
`pressure vessel
`Conveys sludge from
`water-treatment plant
`Describes sludge as
`“gelatinous precipitate”
`
`
`
`Ex. 1112 at 1:5-47; IPR2016-00256, Paper 41 at 9; -00259, Paper 42 at 9; -00260, Paper 41 at 8; -00262,
`Paper 42 at 8; -00263, Paper 42 at 8; -00264, Paper 41 at 8.
`
`7
`
`
`
`Prosecution history: paste = sludge
`
`Examiner rejected “paste” claims over reference
`discussing “sludge”
`Examiner instructed applicant to identify any
`disagreement with this interpretation
`
`
`
`
`
`
`
`Applicant did not distinguish (Ex. 2017 at 223)
`
`8
`
`
`
`IPR2016-00256, Paper 41 at 9; -00259, Paper 42 at 8; -00260, Paper 41 at 7; -00262, Paper 42 at 7; -
`
`
`
`
`
`00263, Paper 42 at 7; -00264, Paper 41 at 7.
`
`
`
`Materials Conveyed by Prior Art: Denseveyor
`
`
`
`•
`
`Pneumatic Conveying Book: “Blow
`vessel designed for materials with ‘bad’
`flow characteristics” (Ex. 1009 at 281)
`
`• Macawber I: Conveys “cohesive” and
`“high moisture content materials”
`including several paste-like substances
`(Ex. 1007 at 2)
`
`• Macawber Coal Ship: Conveys coal
`that “[i]n some cases may be
`represented by clays, which when
`coupled to high moisture contents, form
`a sticky, difficult-to-handle material that
`blocks the pneumatic pipeline” (Ex. 1008
`at 21)
`
`• Dr. Brown: “The Macawber references
`are the Denseveyor.” (Ex. 1109 at 357)
`
`IPR2016-00256, Paper 41 at 7; -00259, Paper 42 at 6-7; -00260, Paper 41 at 6-7; -00262, Paper 42 at 6; -
`
`00263, Paper 42 at 6-7; -00264, Paper 41 at 6-7.
`
`9
`
`
`
`Materials Conveyed by Prior Art: Brown
`
`• Conveying concrete “from a conical pressure
`vessel by the action of compressed air” (Ex. 1048 at 338)
`
`IPR2016-00256, Paper 41 at 7; -00259, Paper 42 at 7; -00260, Paper 41 at 7; -00262, Paper 42 at 6-7; -
`00263, Paper 42 at 7; -00264, Paper 41 at 6-7.
`
`10
`
`
`
`Dr. John Carson
`
`PhD in Mechanical Engineering from MIT
`President of Jenike & Johanson, Inc., a specialized
`engineering firm for materials handling
`Author of over 140 publications directed to reliable flow
`behavior of materials, including pneumatic conveyance
`
`Ex. 1035
`
`11
`
`
`
`Dr. Carson: Patents Obvious over the Denseveyor
`References and Ciaffone
`
`The Denseveyor References and Ciaffone “separately and
`collectively confirms that persons of ordinary skill would have had
`a strong expectation that the Macawber system would convey drill
`cuttings, including in the form of a paste or sludge.” (Ex. 1044 at ¶ 139;
`IPR2016-00263, Paper 1 at 39)
`“Whether viewed separately or together, [the Denseveyor
`References and Ciaffone] would have provided those of ordinary
`skill with an even greater expectation of success that drill cuttings,
`including in the form of a paste or sludge, could be conveyed using
`a conical-shaped pressure vessel and compressed conveyance gas
`as the sole means for inducing movement. For these reasons, I
`believe [the claim] would have been obvious over Pneumatic
`Conveying in view of Macawber, Macawber Coal Ship, and/or
`Ciaffone.” (Ex. 1031 at ¶ 114; IPR2016-00264, Paper 1 at 29.)
`
`
`12
`
`
`
`Industry Practice: Test using in-house facilities
`
`“If the material you want to convey is untried in
`pneumatic systems . . . We will put it to the test in one of
`the most sophisticated, computerized testing facilities in
`the industry.” –Macawber I (Ex. 1023 at 3)
`“Customers are encouraged to have their materials
`tested in this modern facility.” –Cyclonaire Brochure (Ex.
`1024 at 10)
`“A number of systems will be installed in this facility to
`prove materials and to demonstrate the flexibility of
`pneumatic handling to potential customers.” –1978
`Article (Ex. 1041 at 3)
`
`13
`
`
`
`IPR2016-00256, Paper 41 at 10-11; -00259, Paper 42 at 9-10; -00260, Paper 41 at 9; -00262, Paper 42 at
`8-9; -00263, Paper 42 at 8-9; -00264, Paper 41 at 9-10.
`
`
`
`
`Industry Practice: Test using in-house facilities
`
`
`
`“Virtually all companies . . . have in-house pilot plants they
`use to show prospective customers that their equipment
`can convey the customer’s materials.” (Ex. 1030 at ¶ 119)
`“It is a simple, routine matter to load the material and show
`how the equipment performs. Conveying new materials is
`not unique, it is the nature of the business.” (Ex. 1030 at ¶ 119)
`
`– Dr. John Carson
`
`
`14
`
`
`
`IPR2016-00256, Paper 41 at 10-11; -00259, Paper 42 at 9-10; -00260, Paper 41 at 9; -00262, Paper 42 at
`8-9; -00263, Paper 42 at 8-9; -00264, Paper 41 at 9-10.
`
`
`
`
`Patents are obvious over Dietzen I in view of
`positive pressure references
`
`Dietzen I: Uses only pneumatics—negative pressure
`differential—to convey cuttings from trough to container
`
`IPR2016-00256, Paper 1 at 37-50; -00259, Paper 1 at 27-42; -00260, Paper 1 at 44-59; -00262, Paper 42 at
`48-59; -00263, Paper 1 at 45-58; -00264, Paper 1 at 47-59.
`
`15
`
`
`
`Dr. Carson: In View of Dietzen, Obvious to Use
`Positive Pressure System
`
`“Armed with the teachings of Dietzen I, people of ordinary skill in
`the art of materials handling would know that a positive pressure
`system would also work.” (Ex. 1032 at ¶ 168)
`“Both negative and positive pressure systems function by creating
`a pressure differential. It is a simple matter of physics that a
`positive pressure system can create a larger pressure differential
`than a negative pressure system—a negative pressure system is
`limited to a pressure differential of 1 bar (atmospheric pressure).”
`(Ex. 1032 at ¶ 168)
`“In view of this known advantage of positive pressure pneumatic
`conveyance systems, [POSITA] would have known that positive
`pressure systems would also be effective, and likely superior, to the
`Dietzen I approach.” (Ex. 1032 at ¶ 168.)
`
`IPR2016-00256, Paper 1 at 45.
`
`
`16
`
`
`
`Dr. Brown Not A Pneumatic Conveying Expert
`
`Never designed a system
`Never published in pneumatic conveying field
`Unable to identify anyone he considered a leading expert
`Unable to identify a single manufacturer
`Never spoke with someone who designs equipment
`Never talked to an employee of a pneumatic conveying company
`Never learned how companies decide what can be conveyed
`Never learned about conception & development of alleged invention
`
`
`
`
`
`IPR2016-00256, Paper 41 at 2-3; -00259, Paper 42 at 1-2; -00260, Paper 41 at 1-3; -00262, Paper 42 at 1-
`3; -00263, Paper 42 at 1-3; -00264, Paper 41 at 1-3.
`
`
`17
`
`
`
`Missing Evidence
`
`IPR2016-00256, Paper 41 at 13; -00259, Paper 42 at 14; -00260, Paper 41 at 13-14; -00262, Paper 42 at
`13; -00263, Paper 42 at 13; -00264, Paper 41 at 14
`
`
`18
`
`
`
`Dr. Brown’s Theory: Fluidization Required
`
`“[F]luidization is the way granular solids are conveyed pneumatically, by
`blowing them along in the air stream. Basic texts on pneumatic conveying
`of solids have large sections and chapters dedicated to fluidization and gas
`flow for this reason—the particles suspended in gas provide the means of
`conveying. Pastes on the other hand are not pressure-sensitive and cannot
`be moved in this way.” (internal citations omitted) (Ex. 2056 at ¶ 35)
`“I believe dense-phase conveyance requires fluidization.” (Ex. 1109 at 267)
`“Q: You’re saying that it wouldn’t be obvious to use those prior art
`systems because you can’t fluidize non-free-flowing drill cuttings; is that
`correct? A: That’s Correct.” (Ex. 1109 at 268)
`
`IPR2016-00256, Paper 41 at 3-4; -00259, Paper 42 at 3-4; -00260, Paper 41 at 3; -00262, Paper 42 at 3; -
`00263, Paper 42 at 3; -00264, Paper 41 at 3.
`
`
`19
`
`
`
`Wrong About Equipment Requiring Fluidization
`
`Ex. 1023 at 5; IPR2016-00256, Paper 41 at 5; -00259, Paper 42 at 5; -00260, Paper 41 at 4; -00262, Paper
`42 at 4; -00263, Paper 42 at 4; -00264, Paper 41 at 4.
`
`
`20
`
`
`
`Other Documents Confirm Fluidization is Not
`Necessary
`
`Macawber Coal Ship: Material is “’squeezed’ [into the
`pipe] as the compressed air expands [inside] the
`pressure vessel” and “a slug of material . . . moves at
`slow speed along the pipeline, with . . . compressed air
`pushing it.” (Ex. 1008 at 22)
`Pneumatic Conveying: “the solids completely pack the
`pipe and move as a continuous dense plug . . .” (Ex. 1009, 10)
`Mills: “In recent years a number of different systems
`have been developed to extend the range of materials
`which can be conveyed in low velocity plugs” (Ex. 1015, 37)
`
`IPR2016-00256, Paper 41 at 5; -00259, Paper 42 at 5; -00260, Paper 41 at 5; -00262, Paper 42 at 4-5; -
`00263, Paper 42 at 5; -00264, Paper 41 at 4-5.
`
`
`21
`
`
`
`Dr. Carson: Dense Phase Conveying Does Not
`Require Fluidization
`
`Ex. 2021 at 122-123; IPR2016-00256, Paper 41 at 6; -00259, Paper 42 at 5; -00260, Paper 41 at 5; -00262,
`Paper 42 at 5; -00263, Paper 42 at 5; -00264, Paper 41 at 5.
`
`
`22
`
`
`
`Claimed Implementation for Pneumatic
`Conveyance of Drill Cuttings
`
`Exs. 1001-1005 at Fig. 1
`
`
`23
`
`
`
`Dietzen II Already Described Snowdon’s Process to
`Get Cuttings to Shore
`
`Dietzen II
`
`Snowdon
`
`Ex. 1012; Ex. 1001; IPR2016-00256, Paper 1 at 23, 46-48; -00259, Paper 1 at 23, 34-36; -00260, Paper 1
`at 54-56; -00262, Paper 1 at 23, 32-34; -00263, Paper 1 at 24, 53-55; -00264 Paper 1 at 31-33
`
`24
`
`
`
`IPR2016-00260: Patent Number 7,033,124
`
`Instituted Grounds:
`– Ground 1: Claims 1, 3-5, 7-9, and 12-16 are anticipated
`by Ciaffone
`– Ground 3: Claims 1-20 are obvious over Macawber,
`Macawber Coal ship, Pneumatic Conveying, and
`Ciaffone
`– Ground 4: Claims 1-20 are obvious over Dietzen I,
`Dietzen II, Ciaffone, Laster, and Pneumatic Conveying
`
`IPR2016-00260, Paper 7 at 24
`
`25
`
`
`
`’124 Patent Claims Anticipated by Ciaffone
`
`1.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`An apparatus adapted for use on an
`oil well drilling rig for conveying non-
`free flowing drill cuttings
`comprising:
`
`
`a first pressure vessel for receiving
`said non-free flowing drill cuttings;
`said first pressure vessel being
`adapted to allow a compressed
`conveyance gas to be introduced
`therein as the sole means for
`inducing movement of said non-free
`flowing drill cuttings in said vessel
`whereby at least a portion of said
`non-free flowing drill cuttings is
`discharged from the vessel.
`
`Discharge conduit
`
`Air inlet
`
`Conically shaped
`pressure vessel
`
`Ex. 1006 at Fig 2; IPR2016-00260, Paper 1 at 15, 25-28; -00263, Paper 1 at 15, 26-29; see -00256, Paper
`1 at 14; -00259, Paper 1 at 14; -00262, Paper 1 at 14; -00264, Paper 1 at 14
`
`26
`
`
`
`“Adapted To”
`
`Broadest reasonable construction: vessel is
`capable of conveying drill cuttings
`This is consistent with specification and P.O.’s
`statement that equipment is old
`P.O. interpretation is narrow: “designed to” or
`“configured to” (IPR2016-00260, Paper 31 at 18-20)
`
`IPR2016-00260, Paper 1 at 10, 25-28, Paper 31 at 18-20, Paper 41 at 16-17; -00263, Paper 1 at 10, 25-29,
`Paper 31 at 16-19, Paper 42 at 15-17.
`
`27
`
`
`
`Ciaffone is Capable of Conveying Drill Cuttings
`
`Carson: “The Ciaffone system would be every bit as
`capable of conveying screened drill cuttings from an oil
`rig . . . as the system . . . in the ’124 patent.” (Ex. 1032 at ¶ 120)
`In re Schreiber: burden shifts to P.O. to show prior art
`lacks claimed functionality
`Brown: does not try to rebut
`No missing structure identified by P.O.
`
`
`
`IPR2016-00260, Paper 1 at 10, 25-28, Paper 41 at 16-17; -00256, Paper 42 at 14; -00259, Paper 42 at 14-
`15; -00262, Paper 42 at 13-14; -00263, Paper 1 at 10, 26-30, Paper 42 at 15-18; -00264, Paper 41 at 14-
`15.
`
`28
`
`
`
`Screened Drill Cuttings
`
`Patent directed to screened drill cuttings generally
`
`
`
`No statements in patent that invention limited to only
`some types of screened drill cuttings
`
`
`
`
`
`
`
`Ex. 1003 at 1:42-46; 3:59-62; 6:13-16; IPR-00256, Paper 1 at 11; -00259, Paper 42 at 10-13; -00260,
`
`Paper 41 at 10-12; -00262, Paper 42 at 9-13; -00263, Paper 42 at 10-13; -00264, Paper 41 at 10-13
`
`29
`
`
`
`Description of the Screened Drill Cuttings
`
`“The cuttings . . . are . . . in the form of thick
`heavy paste.” Ex. 1003, 1:44-46.
`“thick heavy paste material (e.g. drill cuttings) . .
`.” Ex. 1003, 1:63-65.
` “The non-free flowing paste may be a thick
`and/or heavy paste or clay like material, e.g. oil
`rig drill cuttings.” Ex. 1003, 2:10-11
`
`
`IPR2016-00256, Paper 42 at12; -00259, Paper 42 at 10-11; -00260, Paper 41 at 10; -00262, Paper 42 at
`10; -00263, Paper 42 at 10; -00264, Paper 41 at 10
`
`30
`
`
`
`Non-Free Flowing Drill Cuttings
`
`P.O.’s construction: “Does not generally flow
`freely by gravitational force”
`P.O.’s gravity-based construction unsupported
`– No support in intrinsic record
`– No support in literature
`– Only support is expert with no relevant experience
`
`IPR-00256, Paper 1 at 11; -00259, Paper 42 at 10-13; -00260, Paper 41 at 10-12; -00262, Paper 42 at 9-
`13; -00263, Paper 42 at 10-13; -00264, Paper 41 at 10-13
`
`
`31
`
`
`
`Non-Free Flowing Drill Cuttings
`
`P.O.’s construction is indefinite
`– “There's a gray area where you could describe as free flowing or
`non-free flowing, because it's—it's not—it's not really free, free
`flowing and it's not really non-flowing, you know.” (DAI-1111 (Lauder)
`at 20)
`– “I mean, you're really trying to tie something down that even
`someone with years of experience can't tie down, because it's
`different for every material. It's a generic term which is loosely
`used on a lot of things.” (DAI-1110 (Lauder) at 161-162)
`– “Q. And then it's a subjective test in your mind, you would say
`some things are free flowing and some things are aren't? A.
`Yeah.” (DAI-1110 at 161)
`
`IPR2016-00259, Paper 42 at 12; -00260, Paper 41 at 11-12; -00262, Paper 42 at 11-12; -00263, Paper 42
`at 11; -00264, Paper 41 at 12
`
`32
`
`
`
`Non-Free Flowing Drill Cuttings
`
`Prior art also moved difficult materials
`– Ciaffone: conveyance of wet, waste sludges
`– Laster: conveyance of contaminated drilling mud that had to be
`removed by shovel
`– Denseveyor references: “cohesive” materials with “bad flow”
`properties
`If you didn’t know, you tested it
`No changes to equipment needed to convey drill
`cuttings
`No evidence of failures
`
`IPR2016-00256, Paper 1 at 28-30, Paper 42 at 6-11, 13-14; -00259, Paper1 at 46-49, Paper 42 at 6-10,
`14-16; -00260, Paper 1 at 36-38, 49, 52, Paper 41 at 6-9, 16; -00262, Paper 1 at 27-31, Paper 42 at 6-9,
`13-14; -00263, Paper 1 at 37-40, Paper 42 at 6-9, 13-14; -00264, Paper 1 at 27-31, Paper 41 at 6-9,14-15.
`
`33
`
`
`
`34
`
`Drill Cuttings
`
`Dietzen is also directed to screened drill cuttings
`Dietzen I confirms drill cuttings can flow by gravity
`following storage and transport (Ex. 1012 at 2:48-53, 4:2-5)
`
`
`
`Dietzen I = cited prior art = intrinsic evidence for claim
`construction
`
`IPR2016-00259, Paper 42 at 12-13; -00260, Paper 41 at 12-13; -00256, Paper 41 at 12; -00262, Paper 42
`at 12-13; -00263, Paper 42 at 12; -00264, Paper 41 at 8-9, 13; Ex. 1003 at pg. 2
`
`
`
`
`
`Non-Free Flowing Drill Cuttings
`
`P.O. chooses extreme examples
`– Samples never conveyed
`– Brown: doesn’t think examples can be conveyed
`• Cannot convey using conventional equipment (DAI-1108 at 94-95)
`• Unable to identify any differences b/w conventional and
`claimed equipment (DAI-1108 at 97-100)
`P.O. has access to samples that had been
`conveyed, but offers none
`
`
`IPR2016-00256, Paper 42 at 12-13; -00259, Paper 42 at 11-12;-00260, Paper 41 at 10-11; -00262, Paper
`42 at 10-11; -00263, Paper 42 at 10-11; -00264, Paper 41 at 11.
`
`35
`
`
`
`’124 Patent Claims Anticipated by Ciaffone
`
`Additional claims anticipated by Ciaffone
`– Conduit (claims 3, 7)
`– Pressure vessel capable of withstanding 4-8 bar (claims 8-9):
`Ciaffone teaches between .03 and 6.89 bar. (Ex. 1032, ¶ 124)
`
`IPR2016-00260, Paper 1 at 29-32; -00263, Paper 1 at 26-29, Paper 42 at 13-14; see also -00259, Paper 1
`at 53; -00262, Paper 1 at 36; -00264, Paper 1 at 33-34
`
`36
`
`
`
`Use of Second Pressure Vessel Anticipated and
`Obvious
`
`– Using multiple pressure vessels taught by Ciaffone
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`(Ex. 1006 at 4:19-23)
`
`
`
`– Carson (Ex. 1031 at ¶ 119-24)
`• Multiple vessels frequently used, and was a routine decision made by those
`involved with the design of materials handling systems.
`• Common sense to convey from pressure vessel on rig to pressure vessel on
`rig for storage while supply ship was in transit and/or to pressure vessels on
`ship for storage during transit to shore
`– Dietzen II used pressure vessels on rig and ship
`
`37
`
`
`IPR2016-00256, Paper 1 at 15, 33-35, 46-49; -00259, Paper 1 at 15, 34-36, 42-43; -00260, Paper 1 at 15,
`29-31, 39-40, 45, 54-56; -00262, Paper 1 at 15, 32-34, 41, 58; -00263, Paper 1 at 31, 40-41, 53-55; -
`00264, Paper 1 at 15, 31-33, 40-41, 45-46, 53-55
`
`
`
`
`
`’124 Claims Obvious
`
`Claims obvious over equipment taught by Ciaffone and
`Denseveyor References (Macawber I, Macawber Coal
`Ship, Pneumatic Conveying)
`
`IPR2016-00256, Paper 1 at 25-37, -00259, Paper 1 at 43-56; -00260, Paper 1 at 36-43; -00262, Paper 1 at
`26-48; -00263, Paper 1 at 37-40; -00264, Paper 1 at 25-47
`
`38
`
`
`
`Dependent Claims Reciting Mass Flow are Obvious
`
`Claim 2: The apparatus of claim 1 wherein the first
`vessel has a conical portion defining a cone angle
`selected to enable mass flow of said non-free flowing
`drill cuttings in said first vessel.
`
`
`
`Specification:
`Never identifies any cone angles
`Confirms selection of cone angle is within skill of POSITA:
`“It is well known that the critical cone angle will vary depending upon
`the material as such would be well understood by those skilled in the
`art.”
`
`IPR2016-00256, Paper 1 at 8-9, 26-27, 45-46, Paper 41 at 17-18, -00259, Paper 42 at 20-21, Paper 1 at 8,
`41, 52-53; -00260, Paper 1 at 8, 38-39, 53; Paper 41 at 20-21; -00262, Paper 42 at 18-19, Paper 1 at 8, 34-
`35; -00263, Paper 1 at 41-42, Paper 42 at 18-20; -00264, Paper 41 at 19-20, Paper 1 at 8, 35
`
`
`39
`
`
`
`Dependent Claims Reciting Mass Flow are Obvious
`
`
`Pneumatic Conveying: Contrasts mass
`flow and funnel flow
`Funnel flow has “disadvantages” such as
`consolidation and incomplete discharge of “dead
`zones”
`Mass flow provides steady and uniform discharge
`
`
`Pneumatic Conveying explains how to
`calculate cone angle to achieve mass flow
`
`
`Ex. 1009 at 411, Fig. 11.2; IPR2016-00256, Paper 1 at 8-9, 26-27, 45-46, Paper 41 at 17-18, -00259, Paper
`42 at 20-21, Paper 1 at 8, 41, 52-53; -00260, Paper 1 at 8, 38-39, 53; Paper 41 at 20-21; -00262, Paper 42
`at 18-19, Paper 1 at 8, 34-35; -00263, Paper 1 at 41-42, Paper 42 at 18-20; -00264, Paper 41 at 19-20,
`Paper 1 at 8, 35
`
`
`40
`
`
`
`Obvious to have “means for transporting the []
`vessel”
`
`Implementation for getting cuttings from rig to shore
`– Common sense: Dr. Carson
`• Need arose to bring cuttings to shore
`• Finite number of ways to do this: lifting a container or conveying to a
`container on the boat
`• Need storage on rig when ship not there
`• Need storage for cuttings while ship moves to shore
`• “Pressure vessels are routinely transported during operations.” (Carson, Ex.
`1032 at ¶ 190.)
`– Known: Dietzen I and II
`
`IPR2016-00260, Paper 1 at 42-43, 54-56, 58-59; Paper 41 at 21-22; -00263, Paper 1 at 43-44, 46-48, 57-
`58; Paper 42 at 21-22
`
`41
`
`
`
`Dietzen II Already Described Snowdon’s Process to
`Get Cuttings to Shore
`
`Dietzen II
`
`Snowdon
`
`Ex. 1012; Ex. 1001; IPR2016-00256, Paper 1 at 23, 46-48; -00259, Paper 1 at 23, 34-36; -00260, Paper 1
`at 54-56; -00262, Paper 1 at 23, 32-34; -00263, Paper 1 at 24, 53-55; -00264 Paper 1 at 31-33
`
`42
`
`
`
`Dietzen II
`
`Ex. 1012 at Fig. 3; 2016-00259, paper 32 at 23; -00262, paper 31 at 23; -00263, paper 31 at 29; -00260,
`paper 31 at 49; -00264, paper 31 at 48; -00256, paper 31 at 17
`
`
`43
`
`
`
`Dietzen II: Function of auger
`
`Auger only serves to move
`materials “to discharge 32”
`to be sucked out (Ex. 1013 at 5:41-42;
`Ex. 2021 at 153-159)
`Tank is horizontally
`oriented, and auger helps
`achieve complete removal
`of cuttings from bottom of
`tank
`
`
`IPR2016-00256, Paper 41 at 15; -00259, Paper 42 at 15-16; -00260, Paper 41 at 15; -00262, Paper 42 at
`14-15; -00263, Paper 42 at 14-15; -00264, Paper 41 at 15
`
`44
`
`(Ex. 2021 at 153-159)
`
`
`
`Dietzen II: Auger is optional
`
`Dietzen II relies on vacuum to
`transport cuttings
`Auger is optional
`– “[C]an be used”
`
`(Ex. 1013 at 5:41-42)
`
`(MI-2021 at 154)
`
`IPR2016-00256, Paper 41 at 15; -00259, Paper 42 at 15-16; -00260, Paper 41 at 15; -00262, Paper 42 at
`14-15; -00263, Paper 42 at 14-15; -00264, Paper 41 at 15
`
`45
`
`
`
`IPR2016-00263: Patent Number 7,186,062, Claims
`30-49
`
`Instituted Grounds:
`– Ground 1: Claims 30, 32-34, 36-38, and 41-45 are
`anticipated by Ciaffone
`– Ground 3: Claims 30-49 are obvious over Macawber,
`Macawber Coal ship, Pneumatic Conveying, Ciaffone,
`Laster, Dietzen I, and Dietzen II
`– Ground 4: Claims 30-49 are obvious over Dietzen I,
`Dietzen II, Ciaffone, Macawber, Macawber Coal Ship,
`Laster, and Pneumatic Conveying
`IPR2016-00263 raises no issues not also at
`issue in IPR2016-00260
`
`46
`
`
`
`IPR2016-00263, Paper 7 at 18
`
`
`
`‘062 Method Claims (IPR2016-00262)
`
`Grounds for institution of IPR
`– Ground 1: Claims 1-29 obvious over Pneumatic
`Conveying, Macawber, Macawber Coal Ship,
`Ciaffone, Laster, Dietzen I, Dietzen II and Toth
`– Ground 2: Claims 1-20 obvious over Dietzen I,
`Caffone, Macawber, Macawber Coal Ship, Pneumatic
`Conveying, Laster, and Dietzen II
`
`IPR2016-262, Paper 7 at 16-17
`
`47
`
`
`
`‘O62 Method Claims (|PR2016-00262)
`‘062 Method Claims (IPR2016-00262)
`
`0 Claim 1:
`
`Claim 1:
`
`
`
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`|."!'Il]L|'|Fi!§i[l;i_£:
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`
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`.-::1id nm1»'-.:n1::n:'.
`::1m:|
`u1':-an ;1m'-.-i.-:im1u-1'1l1-: I:-:JI:n;m.'-.-‘.2:-:::| wn.-:- ::|i.-:::h:1r_u'uu2 nl ]::.':.-::
`u pr.-rllun nJ':..=J1'-:| m:uI:-|]'-.'::J]u1.I.-'iJ:|; -:.1ri|]
`-:L:IlliJ1g.-i 1':-..1L1J
`IJ'u:
`'.'-:.-'.=.-.:]-
`
`
`
`Ex. 1004
`
`EX. 1004
`
`48
`48
`
`
`
`‘062 Method Claims (IPR2016-00262)
`
`“New” elements at issue
`– “adapted to fit within an ISO container frame” (Claim
`11)
`– “storing said non-free flowing drill cuttings in said
`second vessel” (Claims 23, 28)
`– “transporting the vessel [to a discharge station]
`before applying said compressed gas” (Claims 14,
`18, 24, 29)
`– transporting the vessel “in a substantially horizontal
`position” and “rotat[ing] [it] through at least 90
`degrees such that the vessel is in a substantially
`vertical position when the drill cuttings are
`discharged” (Claims 12-13)
`
`Ex. 1004, claims 11-14, 18, 20, 23-24, 28-29
`
`
`49
`
`
`
`‘062 Method Claims (IPR2016-00262)
`
`“wherein the vessel is adapted to fit within an ISO
`container frame” (Claim 11)
`– P.O. doesn’t dispute that “[u]sing ISO container sized
`structure is, and has been standard practice for decades”
`(Ex. 1033 at ¶ 138)
`– Lauder: Use of non-ISO-sized vessel can “cost[] you three
`times the money” (Ex. 1111 at 46)
`– Toth: It is necessary to comply with ISO requirements “in
`order to be commercially acceptable” (Ex. 1017 at 1:28-32)
`
`50
`
`
`
`IPR2016-00262, Paper 1 at 42-43; IPR2016-00262, Paper 42 at 19-20; Ex. 1004; Ex. 1033 at ¶ 138, Ex.
`1111 at 46
`
`
`
`
`‘062 Method Claims (IPR2016-00262)
`
`“storing said non-free flowing drill cuttings in said
`second vessel” (Claims 23, 28)
`– No recited storage time or volume
`– No novel features for “storage” vessels
`– Ciaffone teaches storage
`– Carson:
`• Pressure vessels made in all sizes and commonly used for storage
`• Common sense: Need to store cuttings on rig and ship
`– Dietzen II shows to store drill cuttings in pressure vessels on
`rig and ship
`
`51
`
`
`IPR2016-00262, Paper 1at 15, 41-42; IPR2016-00262, Paper 42 at 21-22; Ex.,1006 at 4:19-23; Ex. 1007
`at 3, 5; Ex. 1009 at 284; Ex. 1011 at 1; Ex. 1013; Ex. 1019 at 2-4; Ex. 1024 at 12-13; Ex. 1033 at ¶¶ 51,
`136-137
`
`
`
`
`
`‘062 Method Claims (IPR2016-00262)
`
`“transporting the vessel before applying said
`compressed gas” (Claims 14, 18, 24, 29)
`– Undisputed that drill cuttings had to be moved by
`ship to land for discharge
`– Undisputed that pressurized vessels used on ships
`– Dietzen II
`
`
`
`
`52
`
`
`
`IPR2016-00262, Paper 1 at 44-48; IPR2016-00262, Paper 42 at 20-21; Ex. 1004 at 1:45-47; Ex. 1008, at
`21-23; Ex. 1013; Ex. 1033 at ¶¶ 143-147
`
`
`
`
`‘062 Method Claims (IPR2016-00262)
`
`Transporting the vessel “in a substantially
`horizontal position” (Claim 12)
`– Undisputed that Dietzen I and Dietzen II transport
`vessels in horizontal position
`– Routine design choice
`– Can transport more if in horizontal position (Ex. 1111 at
`41)
`– Lauder: “It all comes down to economics at the end
`of the day, really.” (DAI-1111 (Lauder) at 41)
`
`53
`
`
`
`IPR2016-00262, Paper 1 at 43-44; IPR2016-00262, Paper 42 at 20; Ex. 1004 at claim 12; Ex. 1012; Ex.
`1013; Ex. 1033 at ¶ 140, Ex. 1111 at 41
`
`
`
`‘062 Method Claims (IPR2016-00262)
`
`“rotat[ing] [the vessel from] a substantially
`horizontal position through at least 90 degrees
`such that the vessel is in a substantially
`vertical position when the drill cuttings are
`discharged” (Claim 13)
`– Vertical discharge is the norm
`
`
`
`
`IPR2016-00262, Paper 1 at 43-44; IPR2016-00262, Paper 42 at 20; Ex. 1004 at claim 13; Ex. 1006, FIG.
`2; Ex. 1007 at 3, 5; Ex. 1009 at 274, 276, 28-281; Ex. 1033 at ¶ 140
`
`54
`
`
`
`‘018 Claims (IPR2016-00259)
`
`Grounds for institution of IPR
`– Ground 1: Claims 1-9 would obvious over Dietzen I,
`Dietzen II, Ciaffone, Laster, Pneumatic Conveying,
`and Toth
`– Ground 2: Claims 1-9 obvious over Pneumatic
`Conveying, Macawber, Macawber Coal Ship,
`Ciaffone, Dietzen I, Dietzen II, and Toth
`
`
`
`
`
`
`
`IPR2016-00259, Paper 8 at 18
`
`55
`
`
`
`‘018 Claims (IPR2016-00259)
`
`“New” element at issue
`– Use of storage vessel on rig that “is a pressure
`vessel adapted” to convey drill cuttings using
`conveyance gas (claim 4)
`
`
`
`
`
`
`
` IPR2016-259, Paper 32 at 45, 60; Ex. 1005
`
`56
`
`
`
`‘018 Claims (IPR2016-00259)
`
`Known:
`– Use storage vessel on rig (Dietzen I
`and II)
`– Transfer drill cuttings from rig-
`based vessel to ship-based vessel
`(Dietzen II)
`– Use pressure vessel for storage
`and discharge to second pressure
`vessel (Ciaffone, Pneumatic
`Conveying)
`Common Sense
`
`
`
`IPR2016-259, Paper 1 at 35-36, 40, 42, 44-46, 52-54; IPR2016-259, Paper 42 at 20; Ex. 1006 at 4:19-23;
`Ex. 1012; Ex. 1013 ; Ex. 1024 at 12-13; Ex. 1034 at ¶¶ 128-129, 133-135, 146
`
`57
`
`
`
`IPR2016-00256: Patent Number 6,702,539
`
`Instituted Grounds:
`– Ground 1: Claims 1–9 obvious over Pneumatic
`Conveying, Macawber, Macawber Coal Ship, Ciaffone,
`Dietzen I, and Dietzen II
`– Ground 2: Claims 1-9 obvious over Dietzen I,
`Ciaffone, Laster, Dietzen II, and Pneumatic Conveying
`IPR2016-00256 raises no new issues
`
`
`
`
`
`IPR2016-256, Paper 7 at 14-15
`
`58
`
`
`
`IPR2016-00264: Patent Number 6,709,217
`
`Instituted Grounds:
`– Ground 1: All claims obvious over Pneumatic
`Conveying, Macawber, Macawber Coal Ship, and
`Ciaffone
`– Ground 2: All claims obvious over Dietzen I, Ciaffone,
`Macawber, Macawber Coal Ship, Pneumatic
`Conveying, Toth, Laster, and Dietzen II
`Claimed description of materials doesn’t change
`analysis—claims covers screened drill cuttings
`IPR2016-00264 raises no new issues
`
`59
`
`
`
`IPR2016-00264, Paper 1 at 10-12; IPR2016-00264, Paper 7 at 17; IPR 2016-00264, Paper 10
`
`
`
`Commercial Success: No Nexus to Claims
`
`P.O. bears burden to demonstrate nexus to
`claims
`P.O. ignores elements of claims
`– Sales figures encompass every installation,
`including single vessel fixed on stationary rig
`– No nexus to claims requiring 2 or more pressure
`vessels, pressure vessel on a boat, transport of
`vessel
`
`IPR2016-00256, Paper 42 at 22; -00259, Paper 42 at 22; -260, Paper 41 at 22-23; -00262, Paper 42 at 22;
`-00263, Paper 42 at 22; -00264, Paper 41 at 22, 24.
`
`60
`
`
`
`Commercial Success: P.O. Doesn’t Practice Invention
`
`Claims amended: conveyance gas is “sole
`means” for inducing movement of cuttings
`Examiner:
`– Amendment precludes aerating, fluidizing, chopping
`up cuttings
`
`
`
`– Distinguishes b/w conveyance gas and
`fluidization/aeration agents
`
`
`Ex. 1025 at 3; IPR2016-00256, Paper 42 at 22-23, Paper 31 at 26; -00259, Paper 42 at 22, Paper 32 at
`
`31; -260, Paper 41 at 23; -00262, Paper 42 at 23, Paper 31 at 33-34; -00263, Paper 42 at 23, Paper 31 at
`38-39; -00264, Paper 41 at 23-24, Paper 31 at 26.
`
`
`
`61
`
`
`
`Commercial Success: P.O. Doesn’t Practice Invention
`
`P.O. agrees this exchange informs meaning of
`claims of all 5 patents
`“It is well supported that the prosecution history of a related case
`provides guidance as to the scope of the claims. Here, the
`prosecution history is important because the Applicant
`distinguished systems that used air to convey solids, where air
`was the fluidizing agent . . . . The Examiner confirmed.”
`
`
`
`
`
`
`
`
`
`
`IPR2016-00256, Paper 31 at 26 (internal citations omitted); -00259, Paper 32 at 31; -260, Paper 31 at 33;
`-00262, 31 at 33-34; -00263, Paper 31 at 38-39; -00264, Paper 31 at 26.
`
`62
`
`
`
`Commercial Success: P.O. Doesn’t Practice Invention
`
`All CleanCut vessels have pulsed “aeration” nozzles
`that inject air into cone of vessel
`
` ISO-PUMP
`
`
`
` CCB
`
`
`
`Ex. 2024 at 12-13, 15-16; MI-2025 at 45; IPR2016-00256, Paper 42 at 22-23; -00259, Paper 42 at 23; -
`260, Paper 41 at 23; -00262, Paper 42 at 23-24; -00263, Paper 42 at 23-24; -00264, Paper 41 at 23-24.
`
`63
`
`
`
`Commercial Success: P.O. Doesn’t Practice Invention
`
`All CleanCut vessels have pulsed “aeration” nozzles
`that inject air into cone of vessel
`
` ISO-PUMP
`
`
`
` CCB
`
`
`
`Conveying air is different than pulsed air injections in
`cone of vessel
`
`Ex. 2024 at 12-13, 15-16; Ex. 2025 at 45; IPR2016-00256, Paper 42 at 22-23; -00259, Paper 42 at 23; -
`260, Paper 41 at 23-24; -00262, Paper 42 at 23-24; -00263, Paper 42 at 23-24; -00264, Paper 41 at 23-24.
`
`64
`
`
`
`Commercial Success: P.O. Doesn’t Practice Invention
`
`Lauder: Nozzles perform same function in
`both CCB and ISO-Pump (DAI-1110 at 209)
`ISO-Pump manual: (MI-2025 at 17, 60)
`– Aeration nozzles “break up / fluidise” cuttings
`
`
`
`– Also describes us
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