Case 4:16-cv-00051 Document 136 Filed in TXSD on 06/17/16 Page 1 of 2
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVISION
`
`
`
`
`
`Civil Action No. 4-16-cv-00051
`
`
`§
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`
`ONESUBSEA IP UK LIMITED &
`ONESUBSEA UK LIMITED,
`
`
`Plaintiffs/Counterclaim
`Defendants,
`and
`
`ONESUBSEA LLC & CAMERON
`INTERNATIONAL CORPORATION,
`
`
`Counterclaim Defendants,
`
`
`vs.
`
`FMC TECHNOLOGIES, INC.,
`
`
`Defendant/Counterclaimant.
`
`
`
`NOTICE OF FILING OF JOINT CLAIM CONSTRUCTION CHART
`
`Attached is a copy of the parties’ Joint Claim Construction Statement as served on the
`
`Court’s case manager via email on June 16, 2016, with copies to counsel of record for the parties.
`
`
`
`Dated: June 17, 2016
`
`Respectfully submitted,
`
`/s/ Truman H. Fenton
`Bruce W. Slayden II (attorney-in-charge)
`TX Bar No. 18496695
`S.D. Texas Bar No. 21067
`bslayden@sgbfirm.com
`Truman H. Fenton (of counsel)
`TX Bar No. 24059742
`tfenton@sgbfirm.com
`SLAYDEN GRUBERT BEARD PLLC
`401 Congress Avenue, Suite 1900
`Austin, TX 78701
`t: 512.402.3550
`
`OSS Exhibit 2009, pg. 1
`FMC vs. OSS
`IPR2016-00467
`
`

`
`Case 4:16-cv-00051 Document 136 Filed in TXSD on 06/17/16 Page 2 of 2
`
`f: 512.402.6865
`
`
`
`Attorney for Plaintiffs and Counterclaim
`Defendants
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the foregoing document was filed electronically in
`
`compliance with Local Rule CV-5(a). As such, this motion was served on all counsel who have
`
`consented to electronic service, Local Rule CV-5(a), on this the 17th day of June, 2016.
`
`
`
`/s/ Truman H. Fenton
`Truman H. Fenton
`
`
`
`OSS Exhibit 2009, pg. 2
`FMC vs. OSS
`IPR2016-00467
`
`

`
`Case 4:16-cv-00051 Document 136-1 Filed in TXSD on 06/17/16 Page 1 of 21
`
`JOINT CLAIM CONSTRUCTION CHART
`OneSubsea IP UK Limited & OneSubsea UK Limited v. FMC Technologies, Inc.
`Civil Action No. 4-16-cv-00051 (S.D. Tex.)
`
`The parties hereby submit their Joint Claim Construction Chart pursuant to P.R. 4-5(b). At present the parties only have claim construction disputes as to the
`
`following patents asserted by OneSubsea IP UK Limited and OneSubsea UK Limited (collectively, “OneSubsea”) against FMC Technologies, Inc. (“FMCTI”): U.S.
`
`Patent Nos. 6,637,514; 7,111,687; 8,122,948; 8,272,435; 8,540,018; 8,573,306; 8,746,332 and 8,776,893. The claims listed here are the claims that include disputed
`
`terms. Some of the listed claims are not asserted in the case, but are independent claims from which asserted claims depend. In other words, this document does not
`
`alter the list of claims asserted in the case.
`
`Row
`1
`
`“tree”
`
`Claim Term
`
`2
`
`3
`
`4
`
`5
`6
`
`“flowline”
`
`“production flowline”
`
`“export line”
`
`“production line”
`“choke body”
`
`Agreed Construction
`“an assembly of pipes, valves and fittings installed between
`the wellhead and the flowline”
`“a pipeline extending outboard of the terminus of a subsea
`tree”
`“a pipeline extending outboard of the terminus of a subsea
`tree”
`“a pipeline extending outboard of the terminus of a subsea
`tree”
`“a passage for flowing fluids recovered from the well”
`“a housing of a choke”
`
`Court’s Construction
`“an assembly of pipes, valves and fittings installed between
`the wellhead and the flowline”
`“a pipeline extending outboard of the terminus of a subsea
`tree”
`“a pipeline extending outboard of the terminus of a subsea
`tree”
`“a pipeline extending outboard of the terminus of a subsea
`tree”
`“a passage for flowing fluids recovered from the well”
`“a housing of a choke”
`
`1
`
`OSS Exhibit 2009, pg. 3
`FMC vs. OSS
`IPR2016-00467
`
`

`
`Case 4:16-cv-00051 Document 136-1 Filed in TXSD on 06/17/16 Page 2 of 21
`
`Row
`7
`
`Disputed Claim Terms
`’514 Patent, Claim 1
`
`Plaintiffs’ Construction
`Term: “diverting”
`
`Defendant’s Construction
`Term: “diverting”
`
`Court’s Construction
`Term: “diverting”
`
`No construction necessary. If
`construed: “directing”
`
`“directing to an alternate passage”
`
`Term: “diverter assembly”
`
`Term: “diverter assembly”
`
`Term: “diverter assembly”
`
`No construction necessary. If
`construed: “a multipart device for
`directing”
`
`“a multipart device for directing
`flow to an alternate passage”
`
`8
`
`1. A method of recovering production fluids
`from a well having a christmas tree, the
`christmas tree having a first flowpath which
`has an outlet, and a second flowpath, the
`method comprising diverting fluids from a
`first portion of the first flowpath to the second
`flowpath, and diverting the fluids from the
`second flowpath back to a second portion of
`the first flowpath, and thereafter recovering
`fluids from the outlet of the first flowpath.
`’687 Patent, Claim 1
`
`1. A tree for a well, having: a first flowpath; a
`second flowpath; and a flow diverter assembly
`providing a flow diverter means to divert
`fluids from a first portion of a first flowpath to
`the second flowpath, and means to divert
`fluids returned from the second flowpath to a
`second portion of the first flowpath for
`recovery therefrom via an outlet of the first
`flowpath, wherein the first portion of the first
`flowpath, the second flowpath and the second
`portion of the first flowpath form a conduit for
`continuous passage of fluid; wherein the flow
`diverter assembly is located in the first
`flowpath and separates the first portion of the
`first flowpath from the second portion of the
`
`2
`
`OSS Exhibit 2009, pg. 4
`FMC vs. OSS
`IPR2016-00467
`
`

`
`Case 4:16-cv-00051 Document 136-1 Filed in TXSD on 06/17/16 Page 3 of 21
`
`Row
`
`9
`
`Disputed Claim Terms
`first flowpath.
`’948 Patent, Claim 7
`
`Plaintiffs’ Construction
`
`Defendant’s Construction
`
`Court’s Construction
`
`Term: “diverter assembly”
`
`Term: “diverter assembly”
`
`Term: “diverter assembly”
`
`7. A diverter assembly for a tree of an oil or
`gas well, comprising: a lateral branch having
`first and second branch bores with the first
`branch bore having a first port and the second
`branch bore having a second port, the first
`branch bore forming part of a first flowpath to
`and from a production bore of the tree and the
`second branch bore forming part of a second
`flowpath to and from an export line; a diverter
`having first and second internal passages, the
`first internal passage communicating with the
`first port and the second passage
`communicating with the second port; a
`processing apparatus having first and second
`passageways, the first passageway
`communicating with the first internal passage
`and the second passageway communicating
`with the second internal passage; and the
`diverter and processing apparatus
`communicating the first flowpath with the
`second flowpath.
`’435 Patent, Claims 1–5.
`
`1. A system, comprising: a branch of a
`mineral extraction tubing, wherein the branch
`comprises a branch outlet; and a diverter
`
`10
`
`No construction necessary. If
`construed: “a multipart device for
`directing”
`
`“a multipart device for directing
`flow to an alternate passage”
`
`Term: “branch”
`
`Term: “branch”
`
`Term: “branch”
`
`“other than the production bore of
`the tree”
`
`No construction necessary.
`
`Term: “diverter”
`
`Term: “diverter”
`
`Term: “diverter”
`
`No construction necessary. If
`construed: “a device for directing”
`
`“a device for directing flow to an
`alternate passage”
`
`Term: “diverter assembly”
`
`Term: “diverter assembly”
`
`Term: “diverter assembly”
`
`No construction necessary. If
`construed: “a multipart device for
`
`“a multipart device for directing
`flow to an alternate passage”
`
`3
`
`OSS Exhibit 2009, pg. 5
`FMC vs. OSS
`IPR2016-00467
`
`

`
`Case 4:16-cv-00051 Document 136-1 Filed in TXSD on 06/17/16 Page 4 of 21
`
`Row
`
`Disputed Claim Terms
`assembly coupled to the branch, wherein the
`diverter comprises a first fluid path to a
`diverter outlet and a second fluid path from a
`diverter inlet to the branch outlet.
`
`Plaintiffs’ Construction
`directing”
`
`Term: “branch”
`
`2. The system of claim 1, wherein the mineral
`extraction tubing includes a manifold with the
`branch; and wherein the first fluid path is in a
`first direction to divert flow of a fluid, and the
`second fluid path is in a second direction to
`return flow of the fluid.
`
`3. The system of claim 2, wherein an internal
`passage of the diverter assembly is in
`communication with an interior of the branch.
`
`4. The system of claim 2, wherein an internal
`passage of the diverter assembly is in fluid
`communication with the branch outlet of the
`branch.
`
`5. The system of claim 2, the diverter
`assembly comprises a barrier to separate the
`branch inlet from the branch outlet.
`
`11
`
`’018 Patent, Claims 37 and 38.
`
`“other than the production bore of
`the tree”
`
`Term: “diverter”
`
`No construction necessary. If
`construed: “a device for directing”
`
`Term: “diverter inlet”
`
`No construction necessary.
`
`Term: “diverter outlet”
`
`No construction necessary.
`
`Term: “divert”
`
`No construction necessary. If
`construed: “direct”
`Term: “hub”
`No construction necessary. If
`
`4
`
`Defendant’s Construction
`
`Court’s Construction
`
`Term: “branch”
`
`Term: “branch”
`
`No construction necessary.
`
`Term: “diverter”
`
`Term: “diverter”
`
`“a device for directing flow to an
`alternate passage”
`
`Term: “diverter inlet”
`
`Term: “diverter inlet”
`
`“an inlet of a ‘diverter’”
`
`Term: “diverter outlet”
`
`Term: “diverter outlet”
`
`“an outlet of a ‘diverter”’
`
`Term: “divert”
`
`Term: “divert”
`
`“direct to an alternate passage”
`
`Term: “hub”
`
`Term: “hub”
`
`OSS Exhibit 2009, pg. 6
`FMC vs. OSS
`IPR2016-00467
`
`

`
`Case 4:16-cv-00051 Document 136-1 Filed in TXSD on 06/17/16 Page 5 of 21
`
`Plaintiffs’ Construction
`construed: “a component that a
`‘connector’ joins or attaches to”
`
`Defendant’s Construction
`“a component that a ‘connector’
`attaches around”
`
`Court’s Construction
`
`Term: “connector”
`
`Term: “connector”
`
`Term: “connector”
`
`No construction necessary. If
`construed “a device that joins or
`attached things together”
`
`“a device that attaches things
`together”
`
`Row
`
`Disputed Claim Terms
`34. A subsea tree assembly to provide a fluid
`communication between a subsea tree having
`a hub and a production flowline having a hub,
`the assembly comprising: a first connector for
`connecting to the subsea tree hub and a
`second connector for connecting to the
`production flowline hub; a choke for
`controlling fluids flowing through the
`connectors; and a flow measuring device; the
`assembly, when installed, forming a fluid flow
`passageway which connects the subsea tree
`and the production flowline and extends
`through the choke and flow measuring device;
`wherein the subsea tree hub is laterally spaced
`apart from the production flowline.
`
`37. The subsea assembly of claim 34 wherein
`the subsea tree and flowline have hubs for
`connecting to the two connectors.
`
`38. A subsea tree assembly to provide a fluid
`communication between a subsea tree having
`a hub and a production flowline having a hub,
`the assembly comprising: a first connector for
`connecting to the subsea tree hub and a
`second connector for connecting to the
`production flowline hub; a choke for
`controlling fluids flowing through the
`connectors; and a flow measuring device; the
`
`5
`
`OSS Exhibit 2009, pg. 7
`FMC vs. OSS
`IPR2016-00467
`
`

`
`Case 4:16-cv-00051 Document 136-1 Filed in TXSD on 06/17/16 Page 6 of 21
`
`Row
`
`12
`
`Disputed Claim Terms
`assembly, when installed, forming a fluid flow
`passageway which connects the subsea tree
`and the production flowline and extends
`through the choke and flow measuring device
`and provides the only fluid communication
`between the subsea tree and flowline; wherein
`the subsea tree hub is laterally spaced apart
`from the production flowline.
`’306 Patent, Claims 11 and 17.
`
`11. A christmas tree of an oil and gas well,
`the christmas tree having a production bore,
`comprising: a branch connected to the
`production bore and to a flowline and
`comprising a first internal passage to flow a
`fluid between the production bore and
`flowline; and a diverter assembly comprising
`a housing having a second internal passage,
`wherein the diverter assembly is coupled to
`the branch, and wherein the diverter assembly
`comprises a first flow path in a first direction
`through the branch to divert flow of the fluid,
`and a second flow path in a second direction
`through the branch to return flow of the fluid,
`the diverter assembly forming a passage from
`the first internal passage to the flowline
`without passing through the production bore.
`
`17. The christmas tree of claim 11, wherein
`
`Plaintiffs’ Construction
`
`Defendant’s Construction
`
`Court’s Construction
`
`Term: “branch”
`
`Term: “branch”
`
`Term: “branch”
`
`“other than the production bore of
`the tree”
`
`No construction necessary.
`
`Term: “diverter assembly”
`
`Term: “diverter assembly”
`
`Term: “diverter assembly”
`
`No construction necessary. If
`construed: “a multipart device for
`directing”
`
`“a multipart device for directing
`flow to an alternate passage”
`
`Term: “divert”
`No construction necessary. If
`construed: “direct”
`
`Term: “divert”
`“direct to an alternate passage”
`
`Term: “divert”
`
`6
`
`OSS Exhibit 2009, pg. 8
`FMC vs. OSS
`IPR2016-00467
`
`

`
`Case 4:16-cv-00051 Document 136-1 Filed in TXSD on 06/17/16 Page 7 of 21
`
`Plaintiffs’ Construction
`
`Defendant’s Construction
`
`Court’s Construction
`
`Row
`
`13
`
`Disputed Claim Terms
`the branch has an inlet and an outlet, and the
`diverter assembly comprises a barrier to
`separate the branch inlet from the branch
`outlet.
`’306 Patent, Claims 18, 26, 28, and 32.
`
`18. The christmas tree of claim 11, wherein a
`part of the diverter assembly is sealed inside
`the branch to block fluid communication
`between two separate regions of the diverter
`assembly.
`
`Term: “branch”
`“other than the production bore of
`the tree”
`
`Term: “diverter assembly”
`No construction necessary. If
`construed: “a multipart device for
`directing”
`
`Term: “inside the branch”
`No construction necessary.
`
`Term: “branch”
`No construction necessary.
`
`Term: “branch”
`
`Term: “diverter assembly”
`“a multipart device for directing
`flow to an alternate passage”
`
`Term: “diverter assembly”
`
`Term: “inside the branch”
`“inside the interior of the branch”
`Term: “branch”
`
`Term: “inside the branch”
`
`Term: “branch”
`
`14
`
`’306 Patent, Claims 22, 25, 26, 28.
`
`Term: “branch”
`
`22. A system, comprising: a manifold
`comprising a production bore communicating
`with a branch having a branch inlet and a
`branch outlet; and a diverter assembly
`disposed on the branch between the branch
`inlet and branch outlet, wherein the diverter
`assembly comprises a first path in a first
`direction to divert flow of a fluid from the
`branch inlet or from the branch outlet, and a
`second path in a second direction to return
`
`“other than the production bore of
`the tree”
`
`Term: “diverter assembly”
`No construction necessary. If
`construed: “a multipart device for
`directing”
`
`No construction necessary.
`
`Term: “diverter assembly”
`“a multipart device for directing
`flow to an alternate passage”
`
`7
`
`Term: “diverter assembly”
`
`OSS Exhibit 2009, pg. 9
`FMC vs. OSS
`IPR2016-00467
`
`

`
`Case 4:16-cv-00051 Document 136-1 Filed in TXSD on 06/17/16 Page 8 of 21
`
`Row
`
`Disputed Claim Terms
`flow of the fluid to the other of the branch
`inlet or branch outlet, the diverter assembly
`forming a passage between the branch inlet
`and the branch outlet without passing through
`the production bore.
`
`25. The system of claim 22, wherein the
`diverter assembly comprises a barrier in the
`branch to separate the branch inlet from the
`branch outlet.
`
`26. The system of claim 22, wherein a part of
`the diverter assembly is sealed inside the
`branch to block fluid communication between
`two separate regions of the diverter assembly.
`
`28. The system of claim 22, wherein the
`manifold is connected to a processing
`apparatus via the diverter assembly external to
`the manifold.
`’306 Patent, Claim 32.
`
`15
`
`32. A system for a christmas tree of an oil and
`gas well, the christmas tree having a
`production bore, comprising: a branch on the
`christmas tree comprising a first bore
`communicating with the production bore and a
`second bore communicating with a flowline; a
`diverter assembly coupled to the branch
`
`Plaintiffs’ Construction
`Term: “divert”
`No construction necessary. If
`construed: “direct”
`
`Term: “in the branch”
`No construction necessary
`
`Term: “inside the branch”
`No construction necessary.
`
`Defendant’s Construction
`Term: “divert”
`“direct to an alternate passage”
`
`Court’s Construction
`Term: “divert”
`
`Term: “in the branch”
`“in the interior of the branch”
`
`Term: “in the branch”
`
`Term: “inside the branch”
`“inside the interior of the branch”
`
`Term: “inside the branch”
`
`Term: “branch”
`
`Term: “branch”
`
`Term: “branch”
`
`“other than the production bore of
`the tree”
`
`No construction necessary.
`
`Term: “diverter assembly”
`No construction necessary. If
`construed: “a multipart device for
`
`Term: “diverter assembly”
`“a multipart device for directing
`flow to an alternate passage”
`
`Term: “diverter assembly”
`
`8
`
`OSS Exhibit 2009, pg. 10
`FMC vs. OSS
`IPR2016-00467
`
`

`
`Case 4:16-cv-00051 Document 136-1 Filed in TXSD on 06/17/16 Page 9 of 21
`
`Row
`
`16
`
`Disputed Claim Terms
`between the first and second bores wherein
`the diverter assembly comprises a first path
`communicating with the first bore and a
`second path communicating with the second
`bore, the diverter assembly forming a passage
`between the first and second bores without
`passing through the production bore; and a
`choke communicating with the first and
`second paths.
`’306 Patent, Claim 35.
`
`35. The system of claim 33 wherein a
`connector connects the diverter assembly to
`the branch.
`
`17
`
`’332 Patent, Claim 11.
`
`Plaintiffs’ Construction
`directing”
`
`Defendant’s Construction
`
`Court’s Construction
`
`Term: “branch”
`
`Term: “branch”
`
`Term: “branch”
`
`“other than the production bore of
`the tree”
`
`Term: “diverter assembly”
`No construction necessary. If
`construed: “a multipart device for
`directing”
`
`Term: “connector”
`No construction necessary. If
`construed “a device that joins or
`attached things together”
`
`No construction necessary.
`
`Term: “diverter assembly”
`“a multipart device for directing
`flow to an alternate passage”
`
`Term: “diverter assembly”
`
`Term: “connector”
` “a device that attaches things
`together”
`
`Term: “connector”
`
`11. An assembly for a well having a tree with
`a production bore, comprising: a first flowpath
`comprising an outlet; a flow diverter
`
`Term: “divert”
`No construction necessary. If
`
`Term: “divert”
`“direct to an alternate passage”
`
`Term: “divert”
`
`9
`
`OSS Exhibit 2009, pg. 11
`FMC vs. OSS
`IPR2016-00467
`
`

`
`Case 4:16-cv-00051 Document 136-1 Filed in TXSD on 06/17/16 Page 10 of 21
`
`Row
`
`18
`
`Disputed Claim Terms
`comprising a second flowpath, the flow
`diverter to divert fluids from a first portion of
`the first flowpath to the second flowpath, and
`to divert fluids from the second flowpath to a
`second portion of the first flowpath, wherein
`the first portion of the first flowpath, the
`second flowpath, and the second portion of the
`first flowpath form a continuous passageway
`for fluid; and wherein the flow diverter is
`located in the first flowpath and separates the
`first portion of the first flowpath from the
`second portion of the first flowpath; wherein
`the fluids are directed to a treatment apparatus
`that is selected from the group consisting of
`pressure boosting apparatus, injection
`apparatus, materials injection apparatus, gas
`injection apparatus, chemical injection
`apparatus, chemical treatment apparatus, and
`measurement apparatus.
`’332 Patent, Claim 19.
`
`19. An assembly for a well having a tree with
`a production bore and a branch, comprising: a
`branch flowpath having an inlet portion
`extending from the production bore and into
`the branch and an outlet portion extending
`from the branch to a branch outlet; a flow
`diverter disposed on the branch and including
`a diverter flowpath to divert fluids from the
`
`Plaintiffs’ Construction
`construed: “direct”
`
`Term: “diverter”
`No construction necessary. If
`construed: “a device for directing”
`
`Defendant’s Construction
`
`Court’s Construction
`
`Term: “diverter”
`“a device for directing flow to an
`alternate passage”
`
`Term: “diverter”
`
`Term: “branch”
`
`Term: “branch”
`
`Term: “branch”
`
`“other than the production bore of
`the tree”
`
`No construction necessary.
`
`Term: “diverter”
`
`Term: “diverter”
`
`Term: “diverter”
`
`No construction necessary. If
`construed: “a device for directing”
`
`“a device for directing flow to an
`alternate passage”
`
`10
`
`OSS Exhibit 2009, pg. 12
`FMC vs. OSS
`IPR2016-00467
`
`

`
`Case 4:16-cv-00051 Document 136-1 Filed in TXSD on 06/17/16 Page 11 of 21
`
`Plaintiffs’ Construction
`Term: “divert”
`
`Defendant’s Construction
`Term: “divert”
`
`Court’s Construction
`Term: “divert”
`
`No construction necessary. If
`construed: “direct”
`
`Term: “in the branch”
`
`No construction necessary.
`
`“direct to an alternate passage”
`
`Term: “in the branch”
`
`Term: “in the branch”
`
`“in the interior of the branch”
`
`Term: “branch”
`
`Term: “branch”
`
`Term: “branch”
`
`“other than the production bore of
`the tree”
`
`No construction necessary.
`
`Term: “connector”
`
`Term: “connector”
`
`Term: “connector”
`
`No construction necessary. If
`construed “a device that joins or
`attached things together”
`
`“a device that attaches things
`together”
`
`Row
`
`19
`
`Disputed Claim Terms
`inlet portion of the branch flowpath to the
`outlet portion of the branch flowpath, wherein
`the inlet portion of the branch flowpath, the
`diverter flowpath, and the outlet portion of the
`branch flowpath form a continuous
`passageway for fluid; and wherein at least a
`portion of the flow diverter is located in the
`branch and separates the inlet portion of the
`branch flowpath from the outlet portion of the
`branch flowpath at an intersection of the inlet
`and outlet portions.
`’893 Patent, Claims 1, 5, 8
`
`1. An assembly mountable to a subsea tree
`and a subsea production flowline, the subsea
`tree including a production line, comprising: a
`module comprising a production line
`connector and a production flowline
`connector, the production line connector
`being disposed on a lateral branch of the
`subsea tree, operable for connection and fluid
`communication with said subsea tree and with
`said production flow line, respectfully, said
`module defining a fluid flow passageway
`therein, whereby said subsea tree is in fluid
`communication with said production flowline
`only through said module and only after said
`module is connected to said subsea tree and
`said production flowline.
`
`11
`
`OSS Exhibit 2009, pg. 13
`FMC vs. OSS
`IPR2016-00467
`
`

`
`Case 4:16-cv-00051 Document 136-1 Filed in TXSD on 06/17/16 Page 12 of 21
`
`Row
`
`Disputed Claim Terms
`’893 Patent at 10:65–11:10.
`
`Plaintiffs’ Construction
`
`Defendant’s Construction
`
`Court’s Construction
`
`5. An assembly mountable to a subsea tree
`and a subsea production flowline, the subsea
`tree including a production line, comprising: a
`module comprising a production line
`connector and a production flowline
`connector, the production line connector
`being disposed on a lateral branch of the
`subsea tree, operable for connection and fluid
`communication with said subsea tree and with
`said production flow line, respectfully, said
`module defining a fluid flow passageway
`therein, whereby said subsea tree is in fluid
`communication with said production flowline
`only through said module and only after said
`module is connected to said subsea tree and
`said production flowline; wherein said module
`includes a flow measuring device without a
`production wing valve on the module.
`
`8. A module to provide the only fluid
`communication between a subsea installation
`comprising a subsea tree and a production
`flowline, said module comprising a first
`connector for connecting to said subsea
`installation and a second connector for
`connecting to said production flowline, said
`module, when installed, forming a fluid flow
`
`12
`
`OSS Exhibit 2009, pg. 14
`FMC vs. OSS
`IPR2016-00467
`
`

`
`Case 4:16-cv-00051 Document 136-1 Filed in TXSD on 06/17/16 Page 13 of 21
`
`Plaintiffs’ Construction
`
`Defendant’s Construction
`
`Court’s Construction
`
`Term: “hub”
`No construction necessary. If
`construed: “a component that a
`‘connector’ joins or attaches to”
`
`Term: “connector”
`No construction necessary. If
`construed “a device that joins or
`attached things together”
`
`Term: “hub”
`“a component that a ‘connector’
`attaches around”
`
`Term: “hub”
`
`Term: “connector”
`“a device that attaches things
`together”
`
`Term: “Connector”
`
`Row
`
`Disputed Claim Terms
`passageway which connects between said
`subsea tree and said production flowline,
`wherein said first connector is disposed on a
`lateral branch of said subsea tree.
`
`20
`
`’893 Patent, Claims 15, 18, 19.
`
`15. A module for fluidly connecting a
`production line in a subsea tree and a
`production flowline to a processing device,
`said module comprising at least two
`connectors one for connecting to said
`production line in said subsea tree and another
`for connecting to said production flowline,
`said module, when installed, defining a fluid
`flow passageway which connects between
`said production line and said production
`flowline, and a choke to control fluid flow
`through said fluid flow passageway, wherein
`said choke and a production wing valve are
`disposed on the subsea tree.
`’893 Patent at 12:20–29.
`
`18. The module of claim 15 wherein the
`subsea tree and flowline have hubs for
`connecting to said two connectors.
`
`19. A module for fluidly connecting a
`production line in a subsea tree and a
`
`13
`
`OSS Exhibit 2009, pg. 15
`FMC vs. OSS
`IPR2016-00467
`
`

`
`Case 4:16-cv-00051 Document 136-1 Filed in TXSD on 06/17/16 Page 14 of 21
`
`Plaintiffs’ Construction
`
`Defendant’s Construction
`
`Court’s Construction
`
`Row
`
`Disputed Claim Terms
`production flowline to a processing device,
`said module comprising at least two
`connectors one for connecting to said
`production line in said subsea tree and another
`for connecting to said production flowline,
`said module, when installed, defining a fluid
`flow passageway which connects between
`said production line and said production
`flowline, and a choke to control fluid flow
`through said fluid flow passageway, wherein
`said choke and a production wing valve are
`disposed on the subsea tree; wherein a choke
`controls fluids flowing within said fluid flow
`passageway and the module includes a flow
`measuring apparatus without a production
`wing valve on the module.
`
`14
`
`OSS Exhibit 2009, pg. 16
`FMC vs. OSS
`IPR2016-00467
`
`

`
`Case 4:16-cv-00051 Document 136-1 Filed in TXSD on 06/17/16 Page 15 of 21
`
`Claim Elements Governed by 35 U.S.C. § 112, ¶ 6
`PLAINTIFFS
`
`Row
`
`Proposed Means-
`Plus-Function
`Element
`
`21
`
`’687 Patent, Claim 1
`
`1. A tree for a well,
`having: a first
`flowpath; a second
`flowpath; and a flow
`diverter assembly
`providing a flow
`diverter means to
`divert fluids from a
`first portion of a first
`flowpath to the second
`flowpath, and means to
`divert fluids returned
`from the second
`flowpath to a second
`portion of the first
`flowpath for recovery
`therefrom via an outlet
`of the first flowpath,
`wherein the first
`portion of the first
`flowpath, the second
`
`Locations in
`Specification
`
`Structure: “a seal”
`8:8–15
`
`Structure: “a
`production bore
`straddle having
`seals”
`7:16–23
`
`Structure: “a conduit
`with metal, inflatable
`or resilient seals”:
`2:30–35
`2:24–26
`3:54–61
`5:34–40
`6:28–38
`7:61–8:2
`8:56–64
`15:57–16:12
`16:53–63
`
`Structure: “an open
`crossover valve, an
`open production swab
`
`15
`
`Structures, acts, or materials
`corresponding to each claim element
`governed by 35 U.S.C. § 112, ¶ 6
`(1) a seal;
`(2) a production bore straddle
`having seals; and
`(3) a conduit with metal, inflatable
`or resilient seals. The seals in
`all three embodiments can be
`optionally o-ring, inflatable,
`elastomeric or metal to metal
`seals.
`
`Locations in
`Specification
`
`Structure: “a seal”
`Fig. 4b
`8:11–20
`
`Structure: “a production
`bore straddle having
`seals”
`Fig. 3b
`7:16–23
`
`Structure: “a conduit
`with metal, inflatable or
`resilient seals”:
`Fig. 2
`Fig. 24
`5:34–40
`6:9–18
`6:28–51
`15:50–16:12
`
`DEFENDANTS
`Structures, acts, or materials
`corresponding to each claim
`element governed by 35 U.S.C.
`§ 112, ¶ 6
`(1) an open crossover valve, an
`open production swab
`valve, and a seal configured
`to seal an inside wall of and
`completely plug a bore;
`(2) an open crossover valve, an
`open production swab
`valve, and a production
`bore straddle having a tube
`with seals at opposing ends
`configured to seal the
`outside ends of the tube to
`the inside walls of the bore;
`and
`(3) a conduit with metal,
`inflatable or resilient seals
`on its outside configured to
`seal the outside of the
`conduit against the inside
`walls of a bore.
`
`OSS Exhibit 2009, pg. 17
`FMC vs. OSS
`IPR2016-00467
`
`

`
`Case 4:16-cv-00051 Document 136-1 Filed in TXSD on 06/17/16 Page 16 of 21
`
`Row
`
`Proposed Means-
`Plus-Function
`Element
`
`PLAINTIFFS
`
`Locations in
`Specification
`
`Structures, acts, or materials
`corresponding to each claim element
`governed by 35 U.S.C. § 112, ¶ 6
`
`Locations in
`Specification
`
`DEFENDANTS
`Structures, acts, or materials
`corresponding to each claim
`element governed by 35 U.S.C.
`§ 112, ¶ 6
`
`valve”
`Fig. 2
`Fig. 3b
`Fig. 4b
`5:6–16
`6:9–23
`7:15–29
`8:11–27
`
`flowpath and the
`second portion of the
`first flowpath form a
`conduit for continuous
`passage of fluid;
`wherein the flow
`diverter assembly is
`located in the first
`flowpath and separates
`the first portion of the
`first flowpath from the
`second portion of the
`first flowpath.
`
`Function: to divert
`fluids from a first
`portion of a first
`flowpath to the second
`flowpath.
`’687 Patent, Claim 1
`
`22
`
`1. A tree for a well,
`having: a first
`flowpath; a second
`
`(same as above)
`
`(same as above)
`
`(same as above)
`
`Structure: “a seal”
`8:15–21
`
`Structure: “a
`production bore
`
`16
`
`OSS Exhibit 2009, pg. 18
`FMC vs. OSS
`IPR2016-00467
`
`

`
`Case 4:16-cv-00051 Document 136-1 Filed in TXSD on 06/17/16 Page 17 of 21
`
`PLAINTIFFS
`
`Structures, acts, or materials
`corresponding to each claim element
`governed by 35 U.S.C. § 112, ¶ 6
`
`Locations in
`Specification
`
`DEFENDANTS
`Structures, acts, or materials
`corresponding to each claim
`element governed by 35 U.S.C.
`§ 112, ¶ 6
`
`Locations in
`Specification
`
`straddle having
`seals”
`7:23–29
`
`Structure: “a conduit
`with metal, inflatable
`or resilient seals”:
`6:9–18
`7:61–8:7
`9:14–19
`16:14–18
`16:53–63
`
`Row
`
`Proposed Means-
`Plus-Function
`Element
`
`flowpath; and a flow
`diverter assembly
`providing a flow
`diverter means to
`divert fluids from a
`first portion of a first
`flowpath to the second
`flowpath, and means to
`divert fluids returned
`from the second
`flowpath to a second
`portion of the first
`flowpath for recovery
`therefrom via an outlet
`of the first flowpath,
`wherein the first
`portion of the first
`flowpath, the second
`flowpath and the
`second portion of the
`first flowpath form a
`conduit for continuous
`passage of fluid;
`wherein the flow
`
`17
`
`OSS Exhibit 2009, pg. 19
`FMC vs. OSS
`IPR2016-00467
`
`

`
`Case 4:16-cv-00051 Document 136-1 Filed in TXSD on 06/17/16 Page 18 of 21
`
`PLAINTIFFS
`
`Locations in
`Specification
`
`Structures, acts, or materials
`corresponding to each claim element
`governed by 35 U.S.C. § 112, ¶ 6
`
`Locations in
`Specification
`
`DEFENDANTS
`Structures, acts, or materials
`corresponding to each claim
`element governed by 35 U.S.C.
`§ 112, ¶ 6
`
`Row
`
`Proposed Means-
`Plus-Function
`Element
`
`diverter assembly is
`located in the first
`flowpath and separates
`the first portion of the
`first flowpath from the
`second portion of the
`first flowpath.
`
`Function: to divert
`fluids returned from
`the second flowpath to
`a second portion of the
`first flowpath.
`
`18
`
`OSS Exhibit 2009, pg. 20
`FMC vs. OSS
`IPR2016-00467
`
`

`
`Case 4:16-cv-00051 Document 136-1 Filed in TXSD on 06/17/16 Page 19 of 21
`
`Dated: June 16, 2016
`
`Respectfully submitted,
`
`/s/ Truman H. Fenton
`Bruce W. Slayden II
`Attorney-in-Charge
`S.D. Texas Bar No. 21067
`TX Bar No. 18496695
`bslayden@sgbfirm.com
`Truman H. Fenton (of counsel)
`TX Bar No. 24059742
`tfenton@sgbfirm.com
`Brian C. Banner (of counsel)
`TX Bar No. 24059416
`bbanner@sgbfirm.com
`SLAYDEN GRUBERT BEARD PLLC
`401 Congress Avenue, Suite 1900
`Austin, TX 78701
`t: 512.402.3550
`f: 512.402.6865
`
`Attorney for Plaintiffs/Counterclaim Defendants OneSubsea IP UK Limited and OneSubsea UK Limited,
`and for Counterclaim Defendants OneSubsea LLC and Cameron International Corporation
`
`By:
`/s/ Katrina G. Eash
`Bret T. Winterle
`TX Bar No. 24084249
`winterle@fr.com
`Katrina G. Eash
`TX Bar No. 24074636
`eash@fr.com
`FISH & RICHARDSON P.C.
`1717 Main Street Suite 5000
`
`19
`
`OSS Exhibit 2009, pg. 21
`FMC vs. OSS
`IPR2016-00467
`
`

`
`Case 4:16-cv-00051 Document 136-1 Filed in TXSD on 06/17/16 Page 20 of 21
`
`Dallas, TX 75201
`Telephone: (214) 747-5070
`
`Ruffin B. Cordell
`TX Bar No. 04820550
`cordell@fr.com
`Indranil Mukerji
`MA Bar No. 644059
`mukerji@fr.com
`Brian Livedalen
`VA Bar No. 78755
`livedalen@fr.com
`Adam Shartzer
`GA Bar No. 118008
`shartzer@fr.com
`FISH & RICHARDSON P.C.
`1425 K Street, NW, Suite 1100
`Washington, DC 20005
`Telephone: (202) 783-5070
`Facsimile: (202) 783-2331
`Benjamin C.