IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Ian Donald, et al.
`In re Patent of:
`8,540,018 Attorney Docket No.: 29188-0024IP1
`U.S. Patent No.:
`September 24, 2013
`
`Issue Date:
`Appl. Serial No.: 13/536,433
`
`Filing Date:
`June 28, 2012
`
`Title:
`APPARATUS AND METHOD FOR RECOVERING
`FLUIDS FROM A WELL AND/OR INJECTING FLUIDS
`INTO A WELL
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 8,540,018 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`OSS Exhibit 2021, pg. 1
`FMC vs. OSS
`IPR2016-00467
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`

`
`Attorney Docket No. 29188-0024IP1
`IPR of U.S. Patent No. 8,540,018
`
`
`TABLE OF CONTENTS
`
`I.  MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ....................... 2 
`A.  Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ................................ 2 
`B.  Related Matters Under 37 C.F.R. § 42.8(b)(2) ......................................... 2 
`C.  Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ..................... 3 
`D.  Service Information .................................................................................. 3 
`PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................ 3 
`II. 
`III.  REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ....................... 3 
`A.  Grounds for Standing Under 37 C.F.R. § 42.104(a)................................. 3 
`B.  Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested ............... 4 
`C.  Claim Construction under 37 C.F.R. §§ 42.104(b)(3) .............................. 6 
`IV.  MANNER OF APPLYING CITED PRIOR ART TO EVERY CLAIM
`FOR WHICH AN IPR IS REQUESTED, THUS ESTABLISHING A
`REASONABLE LIKELIHOOD THAT AT LEAST ONE CLAIM OF
`THE ‘018 PATENT IS UNPATENTABLE ................................................ 7 
`A.  [GROUND 1] – Claims 1-6, 9 and 14 are anticipated by Kelly. .............. 7 
`B.  [GROUND 2] – Claims 1, 7, 9, 14 and 34-38 are obvious over Kelly in
`view of Fenton. ....................................................................................... 19 
`C.  [GROUND 3] – Claims 1-6, 9 and 14 are obvious over Kelly in view of
`Bednar ..................................................................................................... 27 
`D.  [GROUND 4] – Claims 1, 7, 9 and 14 are obvious over Kelly in view of
`Bednar and Fenton .................................................................................. 35 
`E.  [GROUND 5] – Claims 1-6, 8, 9 and 14 are anticipated by Bednar ...... 35 
`F. 
`[GROUND 6] – Claims 1, 7, 8, 9, 14 and 34-38 are obvious over Bednar
`in view of Fenton .................................................................................... 43 
`G.  [GROUND 7] – Claims 34-38 are obvious over Gatherar and Fisher ... 51 
`V.  CONCLUSION ............................................................................................ 59 
`
`
`i
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`OSS Exhibit 2021, pg. 2
`FMC vs. OSS
`IPR2016-00467
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`

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`Attorney Docket No. 29188-0024IP1
`IPR of U.S. Patent No. 8,540,018
`
`
`EXHIBITS
`
`U.S. Patent No. 8,540,018 to Donald, et al. (“the ‘018
`Patent”)
`
`Excerpts from the Prosecution History of the ‘018
`Patent (“the Prosecution History”)
`
`Declaration of Robert Herrmann (“Herrmann Dec.”)
`
`U.S. Pat. No. 4,589,493 to Kelly
`
`U.S. Pat. Pub. No. 2002/0070026 to Fenton
`
`U.S. Pat. No. 6,481,504 to Gatherar
`
`U.S. Pat. No. 5,010,956 to Bednar
`
`U.S. Pat. No. 4,190,114 to Fisher
`
`Exhibit 11 to Patent Owner’s Disclosure of Asserted
`Claims and Infringement Contentions for U.S. Patent
`No. 8,540,018, served by Patent Owner in Civil Action
`No. 2-15-cv-445-JRG, filed March 30, 2015 in E.D.
`Tex.
`
`U.S. Pat. No. 8,776,893 to Donald
`
`U.S. Pat. No. 2,638,917 to Clair
`
`U.S. Pat. No. 6,782,949 to Cove
`
`FMC-1001
`
`FMC-1002
`
`FMC-1003
`
`FMC-1004
`
`FMC-1005
`
`FMC-1006
`
`FMC-1007
`
`FMC-1008
`
`FMC-1009
`
`FMC-1010
`
`FMC-1011
`
`FMC-1012
`
`
`
`ii
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`OSS Exhibit 2021, pg. 3
`FMC vs. OSS
`IPR2016-00467
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`

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`FMC Technologies, Inc. (“Petitioner” or “FMC”) petitions for Inter Partes
`
`Attorney Docket No. 29188-0024IP1
`IPR of U.S. Patent No. 8,540,018
`
`
`Review (“IPR”) under 35 U.S.C. §§ 311–319 and 37 C.F.R. § 42 of claims 1-9, 14
`
`and 34-38 (“the Challenged Claims”) of U.S. Patent No. 8,540,018 (“the ‘018
`
`Patent”).
`
`The ’018 Patent describes a subsea Christmas tree system where fluids are
`
`diverted away from, and back to, a branch of the tree. While the ’018 Patent
`
`describes a number of specific embodiments, in the co-pending litigation
`
`(mentioned below), the Patent Owner is broadly reading the ’018 Patent to cover
`
`an accused product that is very different from the embodiments in the ‘018 Patent.
`
`Moreover, as shown in the embedded images here and discussed throughout, the
`
`accused product is quite similar to a prior art patent to Kelly (FMC-1004).
`
`The Patent Owner’s attempt to broadly read the claims of the ‘018 Patent,
`
`one of fourteen patents and two currently pending applications from the same
`
`1
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`OSS Exhibit 2021, pg. 4
`FMC vs. OSS
`IPR2016-00467
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`

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`Attorney Docket No. 29188-0024IP1
`IPR of U.S. Patent No. 8,540,018
`
`
`original application, only serves to highlight the
`
`fact that the claims of the ’018 Patent are not
`
`new, and not worthy of a patent. To the
`
`contrary, claims 1-9, 14 and 34-38 were
`
`improperly granted without full consideration to the wide body of applicable prior
`
`art, such as Kelly and the other prior art publications cited herein. If the Office had
`
`considered these prior art publications, claims 1-9, 14 and 34-38 of the ’018 Patent
`
`never would have issued. FMC respectfully submits that an IPR should be
`
`instituted, and claims 1-9, 14 and 34-38 should be canceled as unpatentable.
`
`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1)
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Petitioner, FMC Technologies, Inc. is the real party-in-interest.
`
`
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`Petitioner is not aware of any disclaimers, reexamination certificates or
`
`petitions for inter partes review for the ’018 Patent. The ’018 Patent is the subject
`
`of OneSubsea IP UK Ltd. et al. v. FMC Technologies, Inc., Civil Action No. 2-15-
`
`2
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`OSS Exhibit 2021, pg. 5
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`IPR2016-00467
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`cv-445-JRG, filed March 30, 2015 in the Eastern District of Texas.
`
`Attorney Docket No. 29188-0024IP1
`IPR of U.S. Patent No. 8,540,018
`
`
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`FMC provides the following designation of counsel.
`
`Lead Counsel
`Joshua A. Griswold, Reg. No. 46,310
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 214-292-4034
`F: 877-769-7945
`Email: IPR29188-0024IP1@fr.com
`D.
`Service Information
`Please address all correspondence and service to the address listed above.
`
`Backup Counsel
`Craig A. Deutsch, Reg. No. 69,264
`T: 612-278-4514 / F: 877-769-7945
`Email: PTABInbound@fr.com
`
`Kenneth W. Darby, Jr., Reg. No. 65,068
`T: 214-292-4034 / F: 877-769-7945
`Email: PTABInbound@fr.com
`
`Petitioner consents to electronic service by email at IPR29188-0024IP1@fr.com
`
`(referencing No. 29188-0024IP1 and cc’ing PTABInbound@fr.com,
`
`griswold@fr.com, deutsch@fr.com and kdarby@fr.com.
`
`II. PAYMENT OF FEES – 37 C.F.R. § 42.103
`FMC authorizes the Patent and Trademark Office to charge Deposit Account
`
`No. 06-1050 for the fee set in 37 C.F.R. § 42.15(a) for this Petition and further
`
`authorizes payment for any additional fees to be charged to this Deposit Account.
`
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`FMC certifies that the ‘018 Patent is available for IPR. The present petition
`
`is being filed within one year of service of a complaint against FMC in Civil
`
`3
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`OSS Exhibit 2021, pg. 6
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`IPR2016-00467
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`Action No. 2-15-cv-445-JRG, filed March 30, 2015 in the Eastern District of
`
`Attorney Docket No. 29188-0024IP1
`IPR of U.S. Patent No. 8,540,018
`
`
`Texas. FMC is not barred or estopped from requesting this review challenging the
`
`Challenged Claims on the below-identified grounds.
`
`B. Challenge Under 37 C.F.R. § 42.104(b) and Relief
`
`Requested
`
`FMC requests an IPR of the Challenged Claims on the grounds set forth in
`
`the table shown below, and requests that each of the Challenged Claims be found
`
`unpatentable. An explanation of how these claims are unpatentable under the
`
`statutory grounds identified below is provided in the form of detailed description
`
`that follow, indicating where each element can be found in the cited prior art, and
`
`the relevance of that prior art. Additional explanation and support for each ground
`
`of rejection is set forth in Exhibit FMC-1003, the Declaration of Robert Herrmann
`
`(“Herrmann Dec.”), referenced throughout this Petition.
`
`Basis for Rejection
`‘018 Patent Claims
`Ground
`1-6, 9, 14
`Ground 1
`Anticipated by Kelly
`1, 7, 9, 14, 34-38
`Ground 2
`Obvious over Kelly in view of Fenton
`1-6, 9, 14
`Ground 3
`Obvious over Kelly in view of Bednar
`1, 7, 9, and 14
`Ground 4
`Obvious over Kelly, Bednar and Fenton
`1-6, 8, 9 and 14
`Ground 5
`Anticipated by Bednar
`1, 7, 8, 9, 14, 34-38 Obvious over Bednar in view of Fenton
`Ground 6
`34-38
`Ground 7
`Obvious over Gatherar in view of Fisher
`The ‘018 Patent issued from U.S. Application No. 13/536,433, filed June 28,
`
`2012, which is a divisional application of U.S. Application No. 12/541,934 filed on
`
`4
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`OSS Exhibit 2021, pg. 7
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`Attorney Docket No. 29188-0024IP1
`IPR of U.S. Patent No. 8,540,018
`
`August 15, 2009, which is a divisional of U.S. Application No. 10/558,593 filed on
`
`November 29, 2005, which is a national stage entry under 371 (c) of
`
`PCT/GB2004/002329, filed on June 1, 2004, which claims priority to U.S.
`
`Provisional Application No. 60/548,727 filed on February 26, 2004 and U.S.
`
`Application No. 10/651,703, filed on August 29, 2003, Great Britain App. No.
`
`0312543.2 filed on May 31, 2003, Great Britain App. No. 0405471.4 filed on Mar.
`
`11, 2004, and Great Britain Application No. 0405454.0 filed on Mar. 11, 2004.
`
`FMC-1002, p. 499-500. Petitioner explicitly reserves the right to argue the priority
`
`date in this proceeding or other proceedings involving the ’018 Patent.
`
`Kelly (U.S. Pat. No. 4,589,493, Ex. 1004) issued on May 20, 1986, more
`
`than one year before the filing of U.S. App. No. 10/651,703. Therefore, Kelly
`
`qualifies as prior art at least under 35 U.S.C. § 102(b).
`
`Fenton (U.S. Pat. Pub. No. 2002/0070026, Ex. 1005) published on June 13,
`
`2002, more than one year before the filing of U.S. App. No. 10/651,703. Therefore,
`
`Fenton qualifies as prior art at least under 35 U.S.C. § 102(b).
`
`Gatherar (U.S. Pat. No. 6,481,504, Ex. 1006) was filed on Jun. 29, 2000,
`
`claiming priority to GB 9915227 filed on Jun. 29, 1999, and published on Nov. 19,
`
`2002. Therefore, Gatherar qualifies as prior art at least under 35 U.S.C. §§ 102(a)
`
`and 102(e).
`
`Bednar (U.S. Pat. No. 5,010,956, Ex. 1007) issued on April 30, 1991, more
`
`5
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`OSS Exhibit 2021, pg. 8
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`than one year before the filing of U.S. App. No. 10/651,703. Therefore, Bednar
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`Attorney Docket No. 29188-0024IP1
`IPR of U.S. Patent No. 8,540,018
`
`
`qualifies as prior art at least under 35 U.S.C. § 102(b).
`
`Fisher (U.S. Pat. No. 4,190,114, Ex. 1008) issued on Feb. 26, 1980, more
`
`than one year before the filing of U.S. App. No. 10/651,703. Therefore, Fisher
`
`qualifies as prior art at least under 35 U.S.C. § 102(b).
`
`C. Claim Construction under 37 C.F.R. §§ 42.104(b)(3)
`In accordance with 37 C.F.R. § 42.100(b), claims in an unexpired patent are
`
`given their broadest reasonable construction in light of the specification of the
`
`patent in which it appears. Thus, the broadest reasonable construction is applied to
`
`all terms herein, and further details of how the claims are being interpreted are
`
`discussed in the relevant sections below.
`
`Notably, some interpretations discussed herein are guided by the Patent
`
`Owner’s own interpretation of the claims in the co-pending litigation. The Patent
`
`Owner’s infringement contentions from the co-pending litigation are cited in
`
`relevant sections for the Board’s reference in understanding the Patent Owner’s
`
`interpretation.
`
`Petitioner expressly reserves the right to advance different constructions in
`
`the matter now pending in the district court, as the applicable claim construction
`
`standard for that proceeding (“ordinary and customary meaning”) is different than
`
`the broadest reasonable interpretation standard applied in IPR. Further, due to the
`
`6
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`OSS Exhibit 2021, pg. 9
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`different claim construction standards in the proceedings, Petitioner identifying
`
`Attorney Docket No. 29188-0024IP1
`IPR of U.S. Patent No. 8,540,018
`
`
`any feature in the cited references as teaching a claim term of the ‘018 Patent is not
`
`an admission by Petitioner that that claim term is met by any feature for
`
`infringement purposes, or that the claim term is enabled or meets the requirements
`
`for written description.
`
`IV. MANNER OF APPLYING CITED PRIOR ART TO EVERY
`CLAIM FOR WHICH AN IPR IS REQUESTED, THUS ESTABLISHING A
`REASONABLE LIKELIHOOD THAT AT LEAST ONE CLAIM OF THE
`‘018 PATENT IS UNPATENTABLE
`
`As detailed below, this request shows a reasonable likelihood that the
`
`Requester will prevail with respect to the Challenged Claims of the ‘018 Patent.
`
`As an initial matter, Kelly, Fenton and Bednar were cited in the ’018 Patent,
`
`but not applied or even substantively discussed during prosecution of the ’018
`
`Patent. Indeed, Kelly, Fenton and Bednar were buried in over 250 cited documents
`
`with no effort to draw the examiner’s attention to Kelly, Fenton or Bednar. Thus,
`
`the patentability of the Challenged Claims has not been substantively considered in
`
`view of the disclosures of any reference discussed below.
`
`[GROUND 1] – Claims 1-6, 9 and 14 are anticipated by Kelly.
`
`A.
`Kelly discloses each and every element of claims 1-6, 9 and 14, and thus
`
`claims 1-6, 9 and 14 are anticipated by Kelly, as set forth herein.
`
`Claim 1 – [1.0]: “A subsea system, comprising:”
`
`Kelly teaches a “subsea wellhead production apparatus including a
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`7
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`OSS Exhibit 2021, pg. 10
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`retrievable subsea choke.” Kelly, Abstract. The subsea choke “may be lowered,
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`Attorney Docket No. 29188-0024IP1
`IPR of U.S. Patent No. 8,540,018
`
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`landed and installed on a subsea wellhead and also may be independently
`
`retrievable from such subsea wellhead.” See Kelly, 1:63-65; 2:16-46; 2:58-65.
`
`Under the broadest reasonable interpretation, the preamble is not typically a
`
`limitation. However, to the extent that the preamble of claim 1 is considered
`
`limiting, Kelly’s subsea wellhead production apparatus discloses a “subsea
`
`system.”
`
`[1.1]: “a manifold configured to communicate with a well bore, wherein the
`manifold comprises a branch;”
`
`Kelly discloses that its subsea wellhead production apparatus includes a manifold
`
`configured to communicate with a well bore; the
`
`manifold provided at least in part by “Christmas tree
`
`18” and “line 24.” The ’018 Patent indicates that a
`
`“manifold may comprise a Christmas tree.” ’018
`
`Patent, 2:58-62; see also Herrmann Dec., ¶ 14-15;
`
`see also Kelly at 2:16-29.
`
`The horizontal tubing extending from a
`
`vertical portion of “Christmas tree 18” together with “line 24” extend like a branch
`
`of a tree to the production flowline (at the terminus of line 24). See Kelly at 2:21-
`
`25; see also Herrmann Dec. ¶ 15; ’018 Patent, 2:63-64; Ground 1, [1.2], FIG. 1
`
`8
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`OSS Exhibit 2021, pg. 11
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`(annotated), infra. Accordingly, the “Christmas tree 18,” including its horizontal
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`Attorney Docket No. 29188-0024IP1
`IPR of U.S. Patent No. 8,540,018
`
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`tubing, and “line 24,” as taught by Kelly, disclose “a manifold configured to
`
`communicate with a well bore, wherein the manifold comprises a branch,” as
`
`recited by the claim.
`
` [1.2]: “a diverter assembly directly coupled to the branch; and”
`
`Kelly teaches a diverter assembly, provided by at least part of “line 20” and
`
`“collet body 22,” that is directly coupled to the branch such that fluid flowing in
`
`the branch enters and exits the diverter assembly on the branch. See FMC-1009, p.
`
`2. “Line 20,” although partially obscured in
`
`FIG. 1, connects at the horizontal tubing
`
`extending from the vertical portion of
`
`“Christmas tree 18.” Kelly explains that
`
`“Line 20 connects from the well production
`
`string to production flowline body or collet
`
`body 22,” and the “subsea choke assembly 26 . . . is connected to collet body 22.”
`
`Kelly, 2:22-27. “Line 20” and “collet body 22” direct fluid flowing through the
`
`branch into “subsea choke assembly 26” before returning the fluid to the branch at
`
`“line 24.” That is, fluids flow upwardly from the well through “well casing 12,”
`
`into “Christmas tree 18,” and into “line 20.” Id. Rather than flowing directly from
`
`the “Christmas tree 18” to the outlet of “line 24,” the flow of fluids is turned, i.e.,
`
`9
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`diverted, by “line 20” and “collet body 22” to flow into “subsea choke assembly
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`Attorney Docket No. 29188-0024IP1
`IPR of U.S. Patent No. 8,540,018
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`26,” and fluids exiting “subsea choke assembly 26” are returned by “collet body
`
`22” to the branch at “line 24.” Accordingly, fluids flowing through the branch are
`
`directed, i.e. diverted, away from the branch by “line 20” and “collet body 22”
`
`such that the fluids must pass through “subsea choke assembly 26” before fluids
`
`are returned to the branch at “line 24” through “collet body 22.” See Herrmann
`
`Dec. ¶ 16.
`
`Even though “line 20” and “collet body 22” do not divert fluids away from
`
`an established path directly between the well bore and the outlet of Kelly’s system
`
`(because Kelly’s system does not include a path for fluids to flow directly to the
`
`outlet of “line 24” without passing through “subsea choke assembly 26,” for
`
`example), “line 20” and “collet body 22” provide a “diverter assembly” under the
`
`broadest reasonable interpretation standard.
`
`Moreover, this interpretation is consistent with how the Patent Owner is
`
`asserting the term in the co-
`
`pending litigation. The hub
`
`accused by the Patent Owner
`
`of being a diverter assembly
`
`(circled in the embedded excerpt from Patent Owner’s Infringement Contentions)
`
`is the functional equivalent of “line 20” and “collet body 22” of Kelly. Like
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`10
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`OSS Exhibit 2021, pg. 13
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`Kelly’s “collet body 22,” a module is connectable via a connector to a profile on
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`Attorney Docket No. 29188-0024IP1
`IPR of U.S. Patent No. 8,540,018
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`the top portion of the accused hub. FMC-1009, p. 2. The accused hub receives
`
`flow through a side port and, like Kelly’s “line 20” and “collet body 22,” turns the
`
`flow upward to enter the module. Id. The accused hub does not redirect flow from
`
`an alternative path to the branch outlet, because there is no other path. The fluids
`
`must through the module. Id. Accordingly, “collet body 22” and “line 20,” as
`
`taught by Kelly, disclose “a diverter assembly directly coupled to the branch,” as
`
`recited in the claim.
`
`[1.3]: “a bypass conduit coupled to the
`diverter assembly, wherein the bypass
`conduit is configured to couple to the
`well bore whilst bypassing at least a part
`of the branch;”
`
`Kelly discloses a bypass conduit
`
`provided by the passages through “subsea
`
`choke assembly 26” including “inlet 68,”
`
`“passage 94,” “passage 74,” and “outlet
`
`70.” See Kelly, 2:58-3:11; 3:20-28; see also
`
`Herrmann Dec. ¶16. Fluids flow from
`
`“passage 64” of “collet body 22” into “inlet 68” of body 30 and through “passage
`
`94,” “passage 74,” and “outlet 70.” Id. The bypass conduit provides a flow path
`
`that is not a part of the branch and that is positioned between first and second
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`OSS Exhibit 2021, pg. 14
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`portions of the branch.
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`Attorney Docket No. 29188-0024IP1
`IPR of U.S. Patent No. 8,540,018
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`Even though fluids flow through the
`
`entire length of the branch between
`
`“Christmas tree 18” and the branch outlet
`
`(because Kelly’s branch does not include an
`
`alternative to the flowpath through its “choke
`
`assembly 26”), the passages of “body 30”
`
`provide a “bypass conduit” that “bypasses a portion of the branch” under the
`
`broadest reasonable interpretation standard and the interpretation asserted by
`
`Patent Owner. See FMC-1009, p.3. Indeed, Patent Owner asserts a similar flow
`
`path in the accused system is a bypass conduit, despite not bypassing an alternate
`
`flowpath. See FMC-1009, p. 3. Accordingly, “body 30” of “subsea choke assembly
`
`26,” including “inlet 68,” “passage 94,” “passage 74,” and “outlet 70,” as taught by
`
`Kelly, disclose “a bypass conduit coupled to the diverter assembly, wherein the
`
`bypass conduit is configured to couple to the well bore whilst bypassing at least a
`
`part of the branch,” as recited in the claim.
`
`[1.4]: “wherein the manifold is connected to a processing apparatus via the
`bypass conduit.”
`
`Kelly discloses that “Christmas tree 18” is connected to a processing
`
`apparatus provided by “subsea choke assembly 26.” Fluid flows through Kelly’s
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`OSS Exhibit 2021, pg. 15
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`apparatus from the wellhead to a manifold provided at least in part by “Christmas
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`Attorney Docket No. 29188-0024IP1
`IPR of U.S. Patent No. 8,540,018
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`tree 18” before being directed to “inlet 68” of the bypass conduit. See Ground 1,
`
`[1.3], supra. “Subsea choke assembly 26” includes a “[v]alve member 80” that is
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`“mounted in body 30 . . . for movement toward and away from valve seat 78 to
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`control the flow of production fluids therethrough.” See Kelly, Abstract; 1:43-59;
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`2:66-3:9. “Subsea choke assembly 26” is thus a processing apparatus that
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`processes fluid by affecting fluid flow and pressure. Herrmann Dec., ¶ 17. The
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`inventors admitted that a “processing apparatus” includes a “pressure regulation
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`apparatus” in U.S. Pat. No. 8,776,893 – a patent also directed to subsea Christmas
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`trees with processing apparatuses, listing the same two inventors and owned by the
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`same entity as the ‘018 Patent. “Valve member 80,” having the primary function of
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`regulating pressure of fluids, is certainly a “pressure regulation apparatus,” and as
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`the inventors admit, a “processing apparatus.”
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`Additionally, Kelly’s choke assembly 26 operates as a fluid separator and
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`fluid heater. Kelly describes its choke assembly 26 in the context of reducing the
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`pressure of high pressure hydrocarbon fluids recovered from a well. Kelly at 1:7-
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`54; see also Herrmann Dec., ¶ 17. Well fluids are multiphase, gas and liquid, and
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`the pressure and temperature change imposed by the choke flashes the fluid
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`changing its gas to liquid ratio. Herrmann Dec., ¶ 17. Furthermore, in Kelly’s
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`choke assembly 26, the high pressure, high temperature incoming fluid passes near
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`13
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`to the fluid downstream of the “choke valve 80,” heating the exiting fluid. Id.
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`Attorney Docket No. 29188-0024IP1
`IPR of U.S. Patent No. 8,540,018
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`Thus, Kelly’s choke assembly 26 not only processes the production fluid by
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`reducing its flow and pressure, but also processes the fluid by changing its gas to
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`liquid ratio and re-heating the fluid. Gas separation apparatus and hydrocarbon
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`separation apparatus are expressly enumerated as being processing apparatus in
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`dependent claim 7 of the ‘018 Patent. See ’018 Patent, claim 7 and 37 C.F.R. §
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`1.75.
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`Accordingly, “subsea choke assembly 26,” as taught by Kelly, discloses
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`“wherein the manifold is connected to a processing apparatus via the bypass
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`conduit,” as recited by the claim.
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`Claim 2 – [2.0]: “The system of claim 1, wherein an internal passage of the
`diverter assembly extends within an interior of the branch.”
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`Kelly discloses that an internal passage of the
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`diverter assembly provided by “line 20” and “collet
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`body 22” extends within an interior of the branch.
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`Fluids flowing through the branch from the vertical
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`piping of “Christmas tree 18” are directed through
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`internal passages of “line 20” and “collet body 22”
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`into the bypass conduit. See Ground 1, [1.2]-[1.4], supra. “Line 20” and “line 24”
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`thus include internal passages that extend within an interior of the branch such that
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`fluid communication is provided between the diverter assembly and an interior of
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`Attorney Docket No. 29188-0024IP1
`IPR of U.S. Patent No. 8,540,018
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`the branch. Herrmann Dec. ¶¶ 15; 16; 18. Here again, the hub accused by the
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`Patent Owner is substantially identical to Kelly with respect to limitation [2.0]:
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`Accordingly, “collet body 22,” alone or together with “line 20,” as taught by Kelly,
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`disclose “wherein an internal passage of the diverter assembly extends within an
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`interior of the branch.”
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`Claim 3 – [3.0]: “The system of claim 1, wherein an internal passage of the
`bypass conduit is in fluid communication with a branch outlet of the branch.”
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`The bypass conduit provided by “subsea choke assembly 26” includes an
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`internal passage that allows fluid flow from the diverter assembly to “line 24” to
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`the branch outlet at the end of “line 24.” See Kelly, 2:22-25; Ground 1, [1.3],
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`supra; Herrmann Dec. ¶¶ 18-19. Accordingly, internal passages of “subsea choke
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`assembly 26” and the interface between “line 24” and the “flowline,” as taught by
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`Kelly, disclose “wherein an internal passage of the bypass conduit is in fluid
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`communication with a branch outlet of the branch,” as recited by the claim.
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`Claim 4 – [4.0]: “The system of claim 1, wherein the branch has an inlet and
`an outlet, and the diverter assembly comprises a barrier to separate the
`branch inlet from the branch outlet.”
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`15
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`Attorney Docket No. 29188-0024IP1
`IPR of U.S. Patent No. 8,540,018
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`Kelly describes a barrier provided at
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`least in part by “collet body 22,” and
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`particularly solid material of “collet body 22”
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`defining passages 64 and 66. The barrier
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`separates a branch inlet at an interface
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`between vertical piping of “Christmas tree 18”
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`and the horizontal
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`branch, and a branch outlet at an interface between
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`“line 24” and the “flowline.” See Ground 1, [1.3];
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`[3.0], supra. Herrmann Dec., ¶ 20. Accordingly,
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`“collet body 22,” and the branch inlet and outlet, as
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`taught by Kelly, discloses “wherein the branch has an
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`inlet and an outlet, and the diverter assembly comprises a barrier to separate the
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`branch inlet from the branch outlet,” as recited by the claim.
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`Claim 5 – [5.0]: “The system of claim 1, wherein a part of the diverter
`assembly is sealed inside the branch to block fluid communication between
`two separate regions of the branch.”
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`Kelly discloses a diverter assembly sealed inside the branch to block fluid
`
`communication between two separate regions of the branch. The branch includes a
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`first region between a branch inlet and the diverter assembly, and a second region
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`between the diverter assembly and the branch outlet. See, e.g., Ground 1, [4.0],
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`16
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`supra; Herrmann Dec., ¶ 21. The diverter assembly, provided by “line 20” and
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`Attorney Docket No. 29188-0024IP1
`IPR of U.S. Patent No. 8,540,018
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`“collet body 22,” is sealed inside the branch, i.e. sealed between the first and
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`second regions, such
`
`that the diverter
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`assembly blocks
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`direct fluid
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`communication
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`between the first and
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`second regions. Fluids passing from the first region are directed away from the first
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`region of the branch to “subsea choke assembly 26” before returning to the second
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`region of the branch.
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`Additionally, the hub accused by the Patent Owner is substantially identical
`
`to Kelly with respect to limitation [5.0]. “Line 20” and “collet body 22,” like the
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`accused hub, are similarly “sealed inside the branch to block fluid communication
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`directly between two separate regions of the branch.” Accordingly, “line 20” and
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`“collet body 22,” as taught by Kelly, disclose “wherein a part of the diverter
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`assembly is sealed inside the branch to block fluid communication between two
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`separate regions of the branch,” as recited by the claim.
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`Claim 6 – [6.0]: “The system of claim 5, wherein the two separate regions are
`separated by an insert of the diverter assembly.”
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`17
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`During construction of Kelly’s system, “line 20” and “collet body 22” are
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`Attorney Docket No. 29188-0024IP1
`IPR of U.S. Patent No. 8,540,018
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`inserted into the branch flow path, and thus constitute an “insert.” Herrmann Dec.,
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`¶ 22. Further, the two separate regions of Kelly necessarily are separated by an
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`insert because, as Patent Owner asserts with respect to the accused hub, fluid
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`would otherwise flow directly from the first region to “line 24” if not directed into
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`“subsea choke assembly 26” by “collet body 22.” See FMC-1009, p. 6.
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`Accordingly, “line 20” and “collet body 22,” as taught by Kelly, disclose “wherein
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`the two separate regions are separated by an insert of the diverter assembly,” as
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`recited in the claim.
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`
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`Claim 9 – [9.0]: See Ground 1, [1.2]; [1.4], supra.
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`Claim 14 – [14.0]: “The system of claim 1, wherein the bypass conduit
`communicates a processing apparatus with the well bore and a flowline.”
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`Kelly discloses that the bypass conduit communicates a processing apparatus
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`with the well bore and a flowline. Fluids flowing through Kelly’s subsea apparatus
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`are directed by “line 20” and “collet body 22” away from the branch and into the
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`bypass conduit provided by “subsea choke assembly 26,” and returned to the
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`branch at “line 24” through “collet body 22,” before proceeding to the flowline
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`connected to the branch outlet. See Ground 1, [1.2]-[1.4], supra. The bypass
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`conduit within “subsea choke assembly 26” thus provides fluid communication
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`between the well bore, processing apparatus and flowline. Herrmann Dec., ¶ 15,
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`18
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`16, 18. Accordingly, “subsea choke assembly 26,” as taught by Kelly, discloses
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`Attorney Docket No. 29188-0024IP1
`IPR of U.S. Patent No. 8,540,018
`
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`“wherein the bypass conduit communicates a processing apparatus with the well
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`bore and a flowline,” as recited in the claim.
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`B. [GROUND 2] – Claims 1, 7, 9, 14 and 34-38 are obvious over Kelly in
`view of Fenton.
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`Claims 1, 7, 9, 14, and 34-38 are obvious over Kelly in view of Fenton,
`
`which disclose each and every element of these claims, as set forth herein.
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` [1.0] – [1.3]: See Ground 1, [1.0]-[1.3], supra.
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`[1.4]: “wherein the manifold is connected to a processing apparatus via the
`bypass conduit.”
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`Even if the processing apparatus of claim 1 is narrowly interpreted such that
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`Kelly is considered to not expressly disclose this element as set forth in Ground 1,
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`[1.4], it would have been obvious to employ a processing apparatuses in Kelly, as
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`they were commonly used in subsea wellhead installations. For example, Fenton
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`describes a “choke assembly 77” including one or more temperature and pressure
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`measurement devices (sensors) to monitor fluid flow such that the choke could be
`
`appropriately adjusted. Herrmann Dec., ¶ 23. One of skill in the art would have
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`modified “subsea choke assembly 26” of Kelly to include one or more of a
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`pressure sensor, temperature sensor or flow sensor, or to substitute “subsea choke
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`assembly 26” with “production module 61,” as taught by Fenton.
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`Reasons to combine Kelly and Fenton
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`OSS Exhibit 2021, pg. 22
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`One of skill in the art would have modified “subsea choke assembly 26” of
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`Attorney Docket No. 29188-0024IP1
`IPR of U.S. Patent No. 8,540,018
`
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`Kelly to include one or more of a pressure sensor, temperature sensor or flow
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`sensor, or to substitute “subsea choke assembly 26” with “production module 61,”
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`as taught by Fenton, because such a combination amounts to an obvious
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`combination of prior art elements according to known methods to yield predictable
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`results. See KSR v. Teleflex, 550 U.S. 398, 416 (2007); MPEP § 2143 I(A).
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`Fenton describes a “production module 61