Trials@uspto.gov
`571-272-7822
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`
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`Paper 13
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`Entered: August 24, 2016
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BAKER HUGHES INCORPORATED and
`BAKER HUGHES OILFIELD OPERATIONS, INC.,
`Petitioner,
`
`v.
`
`PACKERS PLUS ENERGY SERVICES, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00596
`Patent 7,134,505 B2
`____________
`
`
`
`Before SCOTT A. DANIELS, NEIL T. POWELL and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`DECISION TO INSTITUTE
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
`
`Paper 13
`
`Entered: August 24, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BAKER HUGHES INCORPORATED and
`BAKER HUGHES OILFIELD OPERATIONS, INC.,
`Petitioner,
`
`v.
`
`PACKERS PLUS ENERGY SERVICES, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00596
`Patent 7,134,505 B2
`____________
`
`
`
`Before SCOTT A. DANIELS, NEIL T. POWELL and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`DECISION TO INSTITUTE
`37 C.F.R. § 42.108
`
`
`
`IPR2016-00596
`Patent 7,134,505 B2
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`
`I. INTRODUCTION
`This is a preliminary proceeding to decide whether inter partes review
`
`of U.S. Patent No. 7,134,505 B2 (“the ’505 patent”) should be instituted
`under 35 U.S.C. § 314(a). Packers Plus Energy Services Inc. (“Packers
`Plus”) is the owner of the ’505 patent. Baker Hughes Incorporated and
`Baker Hughes Oilfield Operations, Inc. (“Baker Hughes”) filed a Petition
`(“Pet.”) challenging claims 1–7, 11, and 14–27 of the ’505 patent. Rapid
`Completions LLC, the exclusive licensee of the ’505 patent, filed a
`Preliminary Response (“Prelim. Resp.”). After considering the Petition and
`Preliminary Response, we institute inter partes review on all of the
`challenged claims.
`
`II. BACKGROUND
`
`A.
`
`The ’505 Patent
`The ’505 patent describes a tubing string for treating a particular
`segment of a wellbore, while sealing off other segments. Ex. 1001, Abstract.
`Typically, a tubing string is run into a wellbore as a conduit for oil and gas
`products to flow to the surface. Id. at 1:23–43. But when natural formation
`pressure is insufficient, a well “stimulation” technique is employed, which
`involves injecting fracturing fluids into the formation to enlarge existing
`channels and thereby improve inflow into the wellbore. Id. at 1:30–34.
`As described in the ’505 patent, the tubing string includes a series of
`ports along its length, with a ball-actuated sliding sleeve mounted over each
`port, for selectively permitting the release of fluid from certain segments of
`the tubing string. Id. at 2:35–62, 6:41–7:36. Special sealing devices, called
`“solid body packers,” are mounted along the length of the tubing string
`downhole and uphole of each port. Id. at 2:35–62, 6:8–40. The solid body
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`packers are disposed about the tubing string and seal the annulus between
`the tubing string and the wellbore wall, thereby dividing the wellbore into a
`series of isolated segments. Id. at 6:22–28. When the sliding sleeve over a
`particular port is activated to an open position, fluid can pass into one
`segment of the wellbore but is prevented from passing into adjacent
`segments by the packers positioned on either side of the port. Id. at 6:46–61.
`B.
`The Related District Court Action
`The ’505 patent is involved in a concurrent district court action, Rapid
`
`Completions LLC v. Baker Hughes Incorporated, No. 6:15-cv-00724 (E.D.
`Tex.), which was filed July 31, 2015. Paper 5.
`C.
`The Challenged Claims
`
`Of the challenged claims, claims 1, 19, and 24 are independent.
`Claim 1 is illustrative, and is reproduced below.
`1. An apparatus for fluid treatment of a borehole,
`the apparatus comprising a tubing string having a long axis,
`a first port opened through the wall of the tubing string,
`a second port opened through the wall of the tubing string,
`the second port offset from the first port along the long axis of the
`tubing string,
`a first packer operable to seal about the tubing string and mounted on
`the tubing string to act in a position offset from the first port along the
`long axis of the tubing string,
`a second packer operable to seal about the tubing string and mounted
`on the tubing string to act in a position between the first port and the
`second port along the long axis of the tubing string;
`a third packer operable to seal about the tubing string and mounted on
`the tubing string to act in a position offset from the second port along
`the long axis of the tubing string and on a side of the second port
`opposite the second packer,
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`at least one of the first, second and third packer being a solid body
`packer each including multiple packing elements and a hydraulically
`actuated setting mechanism for at least one of the first, second and
`third packers to act on fluid pressure communicated to the mechanism
`from within the apparatus;
`a first sleeve positioned relative to the first port, the first sleeve being
`moveable relative to the first port between a closed port position and a
`position permitting fluid flow through the first port from the tubing
`string inner bore and a second sleeve being moveable relative to the
`second port between a closed port position and a position permitting
`fluid flow through the second port from the tubing string inner bore;
`and a sleeve shifting means for moving the second sleeve from the
`closed port position to the position permitting fluid flow,
`the means for moving the second sleeve selected to create a seal in the
`tubing string against fluid flow past the second sleeve through the
`tubing string inner bore.
`Ex. 1001, 14:12–44 (line breaks added).
`
`D.
`
`The Asserted Grounds
`Baker Hughes contends that claims 1–7, 11, and 14–27 of the ’505
`patent are unpatentable under 35 U.S.C. §§ 102 and/or 103 based on the
`following grounds (Pet. 3–4):
`Ground
`Reference(s)
`§ 102
`Thomson1
`§ 103
`Thomson and Hartley2
`§ 103
`Thomson and Ellsworth3
`
`Challenged Claims
`1–7, 11, 14–22, and 24–26
`15
`23 and 27
`
`
`1 D.W. Thomson et al., Design and Installation of a Cost-Effective
`Completion System for Horizontal Chalk Wells Where Multiple Zones
`Require Acid Stimulation, SPE (Society for Petroleum Engineering) 37482
`(1997) (“Thomson”) (Ex. 1002).
`2 U.S. Patent No. 5,449,039 5,449,039, iss. Sep. 12, 1995 (“Hartley”) (Ex.
`1003).
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`Ground
`§ 103
`§ 103
`§ 103
`
`§ 103
`
`§ 103
`
`Reference(s)
`Thomson and Echols4
`Thomson and Brown5
`Thomson, Hartley, and
`Brown
`Thomson, Ellsworth, and
`Brown
`Thomson, Echols, and
`Brown
`As further support, Baker Hughes proffers the Declaration of Ali
`Daneshy, Ph.D. (Ex. 1005).
`
`Challenged Claims
`11
`1–7, 11, 14–22, and 24–26
`15
`
`23 and 27
`
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`III. ANALYSIS
`In this preliminary proceeding, we determine whether Bakes Hughes
`has demonstrated a reasonable likelihood that “at least 1 of the claims
`challenged in the petition” is unpatentable. 35 U.S.C. § 314(a). As always,
`our goal is “the just, speedy, and inexpensive resolution” of the validity of
`the challenged claims. 37 C.F.R. § 42.1(b).
`A.
`Claim Construction
`In the Petition, Baker Hughes proposes a construction for certain
`claim terms. Pet. 21–27. Packers Plus, in turn, states that it “disagrees” with
`Baker Hughes’s proposed constructions and “intends to dispute them,” but
`offers no construction of its own, except to say “there is no need for the
`Board to address these disputes now.” Prelim. Resp. 18. We recognize that
`a patent owner is under no obligation to respond to the petition in a
`preliminary proceeding. Nonetheless, construing the claims at this stage
`
`3 B. Ellsworth et al., Production Control of Horizontal Wells in a Carbonate
`Reef Structure, 1999 Canadian Institute of Mining, Metallurgy, and
`Petroleum Horizontal Well Conference (1999) (“Ellsworth”) (Ex. 1004).
`4 U.S. Patent No. 5,375,662 iss. Dec. 27, 1994 (“Echols”) (Ex. 1005).
`5 U.S. Patent No. 4,018,272 iss. Apr. 19, 1977 (“Brown”) (Ex. 1006).
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`may be necessary to determining whether to institute in the first instance and
`may also benefit the parties by serving as a road map for trial. That said,
`however, construing the claims without hearing first from the patent owner
`poses a risk because, at the trial stage, the patent owner may very well
`dispute that initial construction in its patent owner response, thereby forcing
`the Board to revisit the issue and possibly adopt a new construction after
`interpreting the claims differently in the preliminary proceeding. See SAS
`Institute, Inc. v. ComplementSoft, LLC, Nos. 2015-1346, 1347, 2016 WL
`3213103, at *7 (Fed. Cir. June 10, 2016) (“What concerns us is not that the
`Board adopted a construction in its final written decision, as the Board is
`free to do, but that the Board ‘change[d] theories in midstream.’” (quoting
`Belden Inc. v. Berk-Tec LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015)). So as
`to avoid the claim terms from becoming moving targets, we think a better
`approach in this case is to defer the issue of claim construction until we hear
`first from both parties. We can measure the reasonable likelihood of proving
`unpatentability of the challenged claims without making an express
`construction at this time.
`B.
`The Challenges As Premised on Thomson or Thomson in
`Combination with Brown
`Our analysis focuses on the challenges against independent claims 1,
`19, and 24 as anticipated by Thomson and obvious over Thomson in
`combination with Brown. The remaining challenges stem from those
`foundational premises. Baker Hughes asserts that Thomson discloses all of
`the limitations of independent claims 1, 19, and 24. Pet. 29–36, 41–45. In
`an annotated version of Figure 3 of Thomson, depicted below, Baker Hughes
`identifies components of Thomson’s system allegedly corresponding to the
`claimed invention.
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`Thomson, Fig. 3 (annotated)
`As shown, annotated Figure 3 depicts a tubing string within a
`wellbore. Pet. 27–28. The tubing string is equipped with packers (shown in
`red) on each side of a so-called “MSAF tool” (shown in blue), which
`Thomson expressly calls a “sliding sleeve.” Ex. 1002, at 1, 2. Although
`Figure 3 shows only a single sliding sleeve between two packers, Thomson
`states that “[u]p to 9 MSAF tools can be run in the [tubing system] with
`isolation of each zone being achieved by hydraulic-set retrievable packers
`that are positioned on each side of an MSAF tool.” Id. at 1 (“Abstract”); see
`also id. at 4.
`Petitioner asserts that Thomson also discloses the limitation of
`at least one of the first, second and third packer being a
`solid body packer each including multiple packing
`elements and a hydraulically actuated setting mechanism
`for at least one of the first, second and third packers to
`act on fluid pressure communicated to the mechanism
`from within the apparatus.
`Pet. 32–34. Petitioner asserts that Thomson shows such packers in Figures 3
`and 4 and discusses such packers in its disclosure. Id. (citing Ex. 1002, 2–3;
`Ex. 1007 ¶¶ 70–73; Ex. 1016, 3:62–65, Figs. 1, 2).
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`With respect to the “sleeve shifting means for moving the second
`sleeve from the closed port position to the position permitting fluid flow,”
`Thomson states that the sliding sleeve “allow[s] communication between the
`tubing and the annulus once the sleeve is moved to the open position.” Ex.
`1002, 2. An annotation of Figure 5 of Thomson depicts operation of the
`sliding sleeve from a closed to an open position.
`
`
`
`
`
`Thomson, Fig. 5 (annotated)
`According to Thomson, “[a] ball seat is threaded on the bore of [the]
`sleeve, and when the correct size ball lands on the ball seat, applied pressure
`from above moves the sleeve to the down/open position.” Id. at 2.
`Furthermore, each “ball and seat form a seal that prevents pumped fluid
`from entering lower zones” of the tubing string. Id.
`Insofar as the initial record indicates, Thomson appears to disclose the
`“port,” “sleeve,” ”packer,” and “sleeve shifting means” limitations of claims
`1, 19, and 24. Based on the record before us, Baker Hughes has
`demonstrated a reasonable likelihood of establishing that Thomson discloses
`each and every element of claims 1, 19, and 24.
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` In its challenges of claims 1, 19, and 24 as obvious over Thomson in
`combination with Brown, Baker Hughes asserts that “[t]o the extent [Packers
`Plus] may dispute that Thomson fails to disclose, or fails to disclose in
`sufficient detail, the packer-related elements of the Challenged Claims, it
`would have been obvious to use the retrievable packer of Brown . . . in place
`of Thomson’s retrievable packers.” Pet. 53. Baker Hughes notes that
`Brown shows in Figures 1 and 2 a “retrievable, hydraulically set well
`packer.” Id. Baker Hughes provides annotated versions of Brown’s Figures
`1 and 2, which are reproduced below. Id. at 53–54.
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`Brown, Figs. 1 and 2 (annotated)
`Annotated Figures 1 and 2 of Brown show a hydraulically set well
`packer. Id. at 53–55. Baker Hughes asserts that a person of ordinary skill in
`the art would have been motivated to replace Thomson’s packers with
`Brown’s “for several independent reasons,” including “to provide redundant
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`seals and structural stability,” “to provide a seal that is independent of any
`pressure differential across the packer,” and “to provide a packer with slip
`elements that are isolated from fluid and debris in the wellbore.” Id. at 55–
`57. Baker Hughes asserts that combining Thomson and Brown in the
`proposed manner involves combining prior art elements according to known
`methods, and yields only predictable results. Id. at 57.
`On this record, we are persuaded that Baker Hughes’s evidence and
`arguments demonstrate a reasonable likelihood of establishing that it would
`have been obvious to combine the teachings of Thomson and Brown in the
`proposed manner. Additionally, we are persuaded that Baker Hughes’s
`evidence and arguments demonstrate a reasonable likelihood of establishing
`that the proposed combination of Thomson and Brown meets each limitation
`of independent claims 1, 19, and 24.
`Packers Plus raises several arguments in response to Baker Hughes’s
`challenges of independent claims 1, 19, and 24. None of Packers Plus’s
`arguments persuades us that Baker Hughes has not demonstrated a
`reasonable likelihood of prevailing.
`First, we are not persuaded by the contention that Thomson is not a
`printed publication. Prelim. Resp. 18–23. Based on our initial review,
`Thomson has multiple indicators of public dissemination before the earliest
`possible priority date of November 19, 2001 of the ’505 patent. For
`instance, Thomson includes a copyright notice of 1997 and states “[t]his
`paper was prepared for presentation at the 1997 SPE Production Operations
`Symposium, held in Oklahoma City, Oklahoma, 9–11 March 1997.” Ex.
`1002, 1. It also includes contact information for obtaining permission to
`reproduce the paper. Id. Finally, it includes the authors’ acknowledgement
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`of various oil and gas companies for “their support . . . and permission to
`publish this paper.” Id. at 5. At this stage, that evidence, on the face of the
`document itself, persuades us that Baker Hughes has demonstrated a
`reasonable likelihood of establishing Thomson’s publication before the
`priority date of the ’505 patent.6
`Additionally, Packers Plus asserts that Baker Hughes does not show
`that Thomson anticipates claims 1, 19, and 24, arguing that Baker Hughes
`does not show that Thomson discloses a “solid body packer,” as recited in
`those claims. Prelim. Resp. 33–37. Packers Plus argues that Baker Hughes
`bases its assertion that Thomson discloses a solid body packer on
`speculation and conclusory statements. Id. at 33. We find the evidence and
`explanation provided by Baker Hughes sufficient to demonstrate a
`reasonable likelihood of showing that Thomson discloses a solid body
`packer. For example, Baker Hughes and Dr. Daneshy explain that
`Thomson’s Figures 3 and 4 show a non-inflatable packer with three distinct
`packing elements separated by spacer rings, and that compressing the
`packing elements causes them to extrude out. Pet. 32, 34; Ex. 1007 ¶¶ 70–
`73. Baker Hughes and Dr. Daneshy explain that this was a common way to
`promote desirable extrusion of rubber packing elements. Pet. 34 (citing Ex.
`1002, 3; Ex. 1007 ¶ 71; Ex. 1016, 3:62–65, Figs. 1, 2); Ex. 1007 ¶ 72. Dr.
`Daneshy also explains how certain other aspects of Thomson’s figures and
`
`6 Nonetheless, we recognize that the evidence of publication, as it stands
`now, may be hearsay or lack authentication. In that regard, we direct the
`parties to 37 C.F.R. § 42.64(b)(1), which addresses the time for objecting to
`evidence submitted during a preliminary proceeding once trial has been
`instituted. Additionally, we direct the parties to 37 C.F.R. § 42.123, which
`addresses the time for submitting supplemental information relevant to a
`challenge on which trial has been instituted.
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`disclosure indicate that Thomson’s packers are solid body packers. Ex. 1007
`¶¶ 70–73.
`Regarding the challenge of claims 1, 19, and 24 as allegedly obvious
`over Thomson and Brown, Packers Plus argues that Baker Hughes does not
`adequately explain how the combined teachings of Thomson and Brown
`allegedly meet all of the limitations of the claims. Prelim. Resp. 45–46.
`According to Packers Plus, in the challenge of claims 1, 19, and 24 as
`obvious over Thomson and Brown, Baker Hughes only addresses how
`Brown allegedly teaches certain packer features, leaving us to “guess how
`exactly the particular Thomson-Brown combination discloses or suggests
`each claim element.” Id. at 46. We find this argument unpersuasive. Baker
`Hughes introduces the challenge of claims 1, 19, and 24 as obvious over
`Thomson and Brown by stating that these claims are “invalid under § 103(a)
`based on Thomson (Ex. 1002), as in Ground 1, and on Brown (Ex. 1006).”
`Pet. 4 (emphasis added). After explaining how Thomson allegedly discloses
`every limitation of claims 1, 19, and 24 (id. at 27–36, 41–45), Baker Hughes
`explains in the obviousness challenge of claims 1, 19, and 24 that:
`To the extent [Packers Plus] may dispute that Thomson
`fails to disclose, or fails to disclose in sufficient detail,
`the packer-related elements of the Challenged Claims, it
`would have been obvious to use the retrievable packer of
`Brown (Ex. 1006) in place of Thomson’s retrievable
`packers in each of Grounds 1-4.”
`Id. at 53. Thus, the obviousness challenge relies on those disclosures of
`Brown outlined at pages 53–59 of the Petition as teaching certain packers
`limitations. For all other limitations of claims 1, 19, and 24, the obviousness
`challenge relies on the disclosures of Thomson, as outlined on pages 27–36
`and 41–45 of the Petition.
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`Packers Plus also argues that it would not have been obvious to
`combine the teachings of Brown with those of Thomson. Prelim. Resp. 47–
`51. Packers Plus contends that Thomson teaches away from employing
`packers with a movable mandrel, and that Brown’s packers have a movable
`mandrel. Id. At this stage, this argument does not negate our determination,
`as noted above, that Baker Hughes has demonstrated a reasonable likelihood
`of establishing that it would have been obvious to combine the teachings of
`Thomson and Brown in the manner alleged by Baker Hughes. Packers
`Plus’s unilateral attorney argument does not necessarily persuade us that
`Thomson teaches away from using the type of packers disclosed by Brown.
`Moreover, even if Thomson does disclose disadvantages to using packers
`like those disclosed in Brown, Baker Hughes provides evidence of
`countervailing advantages of using such packers, alleging that such
`advantages would have motivated the combination. See, e.g., Pet. 55–57
`(citing Ex. 1006, 5:7–9, 5:9–17, Ex. 1007 ¶¶ 85–93). The existence of
`tradeoffs in combining the teachings of references does not negate the
`existence of a motivation to combine the teachings. See, e.g., Medichem,
`S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (noting “a given
`course of action often has simultaneous advantages and disadvantages, and
`this does not necessarily obviate motivation to combine.”).
`At this stage, we determine that Baker Hughes has demonstrated a
`reasonable likelihood of proving that at least independent claims 1, 19, and
`24 of the ’505 patent are anticipated by Thomson and would have been
`obvious over Thomson and Brown. Having decided that Thomson and
`Ellsworth evince a reasonable likelihood that at least one of the claims
`challenged in the Petition is unpatentable, we exercise our discretion under
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`37 C.F.R. § 42.108 to have the review proceed on all of the challenged
`claims on which Thomson alone or in combination with Brown serves as the
`basis for unpatentability. These claims include 1–7, 11, 14–22, and 24–26.
`In doing so, we seek to achieve finality of review at the Board and avoid
`parallel or serial review at the district court, at least with respect to Baker
`Hughes and the grounds in which Thomson and Ellsworth are proffered. See
`Intex Recreation Corp. v. Bestway Inflatables & Material Corp., IPR2016-
`00180, Paper 13, at 8–11 (PTAB Jun. 6, 2016); see also Synopsys, Inc. v.
`Mentor Graphics Corp., 814 F.3d 1309, 1316 (Fed. Cir. 2016) (stating that
`“[t]he validity of claims for which the Board did not institute inter partes
`review can still be litigated in district court”).
`Also, Baker Hughes asserts alternative grounds premised on Thomson
`or Thomson and Brown in combination with one or more other references to
`address certain limitations in certain dependent claims. For example, Baker
`Hughes combines Thomson with Hartley, and also combines Thomson and
`Brown with Hartley, citing Hartley as teaching the “plug” element of claim
`15. Pet. 4, 45–46. Additionally, Baker Hughes combines Thomson with
`Echols, and combines Thomson and Brown with Echols, citing Echols as
`teaching limitations of claim 11. Id. at 4, 49–53. We view these grounds as
`simply extensions of the grounds premised on Thomson or Thomson and
`Brown, and thus exercise our discretion to have the review proceed on these
`alternative grounds as well.
`C.
`The Challenges of Claims 23 and 27 As Premised on Thomson
`in Combination with Ellsworth or Thomson and Brown in Combination with
`Ellsworth
`
`Baker Hughes asserts that claims 23 and 27 would have been obvious
`in view of Thomson and Ellsworth. Pet. 4, 46–49. Claim 23 recites “the
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`method of claim 19 wherein when in a desired position the apparatus is
`adjacent an open hole section of the wellbore and the packers are set to seal
`the annulus between the apparatus and the wellbore wall.” Claim 27
`depends from claim 24 and recites the same limitation. Baker Hughes
`asserts that it would have been obvious to use the Thomson system in an
`open hole section of a well bore, with the packers sealing the annulus
`between the tubing string and the wellbore, in any formation having
`adequate structural integrity to maintain a circular wellbore without casing.
`Pet. 46–47.
`An issue exists about whether Thomson’s tubing string is capable of
`being run into an “open” and “uncased” wellbore, as claim 1 requires. See
`Pet. 47–49; Prelim. Resp. 30–31. To that end, Baker Hughes proffers
`Ellsworth for teaching that a tubing string for cased holes, like that of
`Thomson, can also be used effectively in open, uncased holes. Pet. 47–49.
`Figure 5 of Ellsworth depicts a solid body packer and sliding sleeve
`arrangement similar to that of Thomson, only within an open, uncased hole.
`Ex. 1004 at 4, Fig. 5. Notably, Ellsworth explains that “solid body packers
`(SBP’s) (see Figure 4) have been used to establish open hole isolation” and
`that such packers “provide a long-term solution to open hole isolation
`without the aid of cemented liners.” Id. at 3 (emphases added). Baker
`Hughes’s declarant testifies that a skilled artisan would have been motivated
`to use Thomson’s tubing string in an open, uncased section in order to
`“minimize the time and expense of completing a well.” Ex. 1007 ¶ 75.
`Based on the record before us, Baker Hughes has demonstrated a reasonable
`likelihood of establishing that claims 23 and 27 would have been obvious
`over Thomson and Ellsworth.
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`Also, Baker Hughes asserts an alternative challenge to claims 23 and
`27 premised on Thomson and Brown in combination with Ellsworth. Pet. 4,
`53–57. We view this ground as simply an extension of the ground premised
`on Thomson and Ellsworth, and thus exercise our discretion to have the
`review proceed on this alternative ground as well.
`IV. CONCLUSION
`After considering the evidence and arguments presented in the
`Petition and Preliminary Response, we determine that Baker Hughes has
`demonstrated a reasonable likelihood of success in proving that at least
`independent claims 1, 19, and 24 of the ’505 patent are unpatentable. And,
`in keeping with our mission of resolving patent validity disputes in a just,
`speedy, and inexpensive manner, we exercise our discretion to institute inter
`partes review on all of the challenged claims and on all of the asserted
`grounds, as raised in the Petition.
`V. ORDER
`Accordingly, it is hereby:
`
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review of claims 1–7, 11, and 14–27 of the ’505 patent is instituted on the
`following grounds:
`claims 1–7, 11, 14–22, and 24–26 as allegedly anticipated by
`Thomson;
`claim 15 as allegedly obvious over Thomson and Hartley;
`claims 23 and 27 as allegedly obvious over Thomson and Ellsworth;
`claim 11 as allegedly obvious over Thomson and Echols;
`claims 1–7, 11, 14–22, and 24–26 as allegedly obvious over Thomson
`and Brown;
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`claim 15 as allegedly obvious over Thomson, Hartley, and Brown;
`claims 23 and 27 as allegedly obvious over Thomson, Ellsworth, and
`Brown; and
`claim 11 as allegedly obvious over Thomson, Echols, and Brown; and
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4(b), inter partes review of the ’505 patent shall commence
`on the entry date of this Order, and notice is hereby given of the institution
`of a trial.
`
`FOR PETITIONER:
`Mark T. Garrett
`Eagle H. Robinson
`NORTON ROSE FULBRIGHT US LLP
`mark.garrett@nortonrosefulbright.com
`eagle.robinson@nortonrosefulbright.com
`
`
`
`
`
`FOR PATENT OWNER:
`Michael B. Ray
`Lori A. Gordon
`Kyle Conklin
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`mray-PTAB@skgf.com
`lgordon-PTAB@skgf.com
`kconklin-PTAB@skgf.com
`ptab@skgf.com
`
`
`18
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