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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________
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` BAKER HUGHES INCORPORATED
`and
`BAKER HUGHES OILFIELD OPERATIONS, INC,
`Petitioners
`
`v.
`
`PACKERS PLUS ENERGY SERVICES INC.,
`Patent Owner
`
`
`
`Case IPR2016-005961
`Patent 7,134,505 B2
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`EXCLUSIVE LICENSEE’S NOTICE OF APPEAL
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`1 IPR2016-01496 was joined to IPR2016-00596.
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`Pursuant to 35 U.S.C. §§ 141 and 142 and 37 C.F.R. §§ 90.2(a), 90.3 and
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`104.2, Exclusive Licensee, Rapid Completions LLC, (“Rapid Completions”)
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`hereby provides notice of its appeal to the United States Court of Appeals for the
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`Federal Circuit for review of the Final Written Decision of the United States Patent
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`and Trademark Office (“USPTO”) Patent Trial and Appeals Board (“PTAB”) in
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`Inter Partes Review 2016-00596, concerning U.S. Patent 7,134,505 B2 (“the ’505
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`patent”), entered on September 26, 2018, attached hereto as Appendix A.
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`
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`ISSUES TO BE ADDRESSED ON APPEAL
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`A. Whether the PTAB erred in finding that claims 1–7, 14–22, and 24–26
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`are unpatentable as anticipated by Thomson;
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`B. Whether the PTAB erred in concluding that claim 15 is unpatentable as
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`obvious over Thomson and Hartley;
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`C. Whether the PTAB erred in concluding that claims 23 and 27 are
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`unpatentable as obvious over Thomson and Ellsworth;
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`D. Whether the PTAB erred in concluding that claims 1–7, 14–22, and 24–
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`26 are unpatentable as obvious over Thomson and Brown;
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`E. Whether the PTAB erred in concluding that claim 15 is unpatentable as
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`obvious over Thomson, Hartley, and Brown;
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`F. Whether the PTAB erred in concluding that claims 23 and 27 are
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` 2
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`unpatentable as obvious over Thomson, Ellsworth, and Brown;
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`G. Whether the PTAB erred in concluding that claims 1–7 and 14–27 are
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`unpatentable as obvious over Lane-Wells and Ellsworth;
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`H. Whether the PTAB erred in concluding that claim 15 is unpatentable as
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`obvious over Lane-Wells, Ellsworth, and Hartley;
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`I. Whether the PTAB erred in concluding that claim 11 is unpatentable as
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`obvious over Lane-Wells, Ellsworth, and Echols?
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`J. Whether the PTAB erred in giving insufficient weight to Patent Owner’s
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`secondary considerations of non-obviousness?
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`K. Whether the PTAB erred in concluding that a person of ordinary skill in
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`the art would have been motivated to combine the teachings of the prior
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`art and would have achieved the claimed inveniton with a reasonable
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`expectation of success?
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`Rapid Completions reserves the right to challenge any finding or
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`determination supporting or related to the issues listed above, and to challenge any
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`other issues decided adversely to Rapid Completions in the Final Written Decision
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`and/or any orders, decisions or rulings underlying the Final Written Decision.
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`Simultaneous with submission of this Notice of Appeal to the Director of the
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`United States Patent and Trademark Office, this Notice of Appeal is being filed
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`with the Patent Trial and Appeal Board. In addition, this Notice of Appeal, along
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`with the required docketing fees, is being filed with the United States Court of
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`Appeals for the Federal Circuit.
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`Dated: November 26, 2018
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`Respectfully submitted,
`/Gregory J. Gonsalves/
`Dr. Gregory Gonsalves
`Reg. No. 43,639
`2216 Beacon Lane
`Falls Church, Virginia 22043
`(571) 419-7252
`gonsalves@gonsalveslawfirm.com
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that in addition to being filed electronically
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`through the Patent Trial and Appeal Board’s E2E system the foregoing NOTICE
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`OF APPEAL was served on the Director of the United States Patent and
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`Trademark Office, at the following address (in accordance with 37 C.F.R. §§
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`90.2(a), 104.2):
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`Director of the United States Patent and Trademark Office
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`c/o Office of the General Counsel
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`United States Patent and Trademark Office
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`P.O. Box 1450 Alexandria, Virginia 22313-1450
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`CERTIFICATE OF FILING
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`The undersigned certifies that on November 26, 2018, a true and correct
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`copy of the foregoing NOTICE OF APPEAL was filed electronically with the
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`Clerk’s Office of the United States Court of Appeals for the Federal Circuit at the
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`following address:
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`Clerk of Court
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`United States Court of Appeals for the Federal Circuit
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`717 Madison Place NW
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`Washington, DC 20005
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing NOTICE OF
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`APPEAL was served on November 26, 2018, by filing this document though the
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`PTAB’s E2E system as well as by delivering a copy via electronic mail to the
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`attorneys of record for the Petitioners as follows:
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`Mark T. Garrett (Lead Counsel)
`Eagle H. Robinson (Back-up Counsel)
`NORTON ROSE FULBRIGHT US LLP
`mark.garrett@nortonrosefulbright.com
`eagle.robinson@nortonrosefulbright.com
`
`
`Dated: November 26, 2018
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`
`
`
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`
`
`/Gregory J. Gonsalves/
`Dr. Gregory Gonsalves
`Reg. No. 43,639
`2216 Beacon Lane
`Falls Church, Virginia 22043
`(571) 419-7252
`gonsalves@gonsalveslawfirm.com
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`Appendix A
`Appendix A
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` 7
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`Trials@uspto.gov
`571-272-7822
`
`PUBLIC VERSION – REDACTED
` Paper 89
`Entered: November 13, 2018
`
`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 IPR2016-005961
`Patent 7,134,505 B2
`____________
`
`Before SCOTT A. DANIELS, NEIL T. POWELL, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`1 IPR2016-01496 has been joined with IPR2016-00596.
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`PUBLIC VERSION – REDACTED
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`IPR2016-00596
`Patent 7,134,505 B2
`
`I. INTRODUCTION
`Packers Plus Energy Services Inc. (“Patent Owner”) is the owner of
`Patent No. 7,134,505 B2 (“the ’505 patent”). Baker Hughes Incorporated
`and Baker Hughes Oilfield Operations, Inc. (collectively, “Petitioner”) filed
`a Petition challenging claims 1–7, 11, and 14–27 of the ’505 patent.
`IPR2016-00596, Paper 10 (“596 Pet.”). Rapid Completions LLC, the
`exclusive licensee of the ’505 patent, filed a Preliminary Response.
`IPR2016-00596, Paper 12 (“596 Prelim. Resp.”). In view of those
`submissions, we instituted an inter partes review of claims 1–7, 11, and 14–
`27 of the ’505 patent. IPR2016-00596, Paper 12 (“596 Dec. on Inst.”).
`Subsequent filings related to the grounds presented in the IPR2016-00596
`Petition include a Patent Owner Response (IPR2016-00596, Papers 31, 322,
`“596 PO Resp.”), a Petitioner Reply (IPR2016-00596, Paper 38, “596 Pet.
`Reply”), a Patent Owner Surreply (IPR2016-00596, Paper 45, “596 PO
`Surreply”), and a Petitioner Sur-surreply (IPR2016-00596, Paper 47, “596
`Sur-surreply”).
`In IPR2016-01496, Petitioner asserted different grounds of
`unpatentability of claims 1–7, 11, and 14–27 of the ’505 patent in another
`Petition. IPR2016-01496, Paper 1 (“1496 Pet.”). Rapid Completions LLC
`filed a Preliminary Response. IPR2016-01496, Paper 17 (“1496 Prelim.
`Resp.”). In view of those submissions, we instituted an inter partes review
`of claims 1–7, 11, and 14–27 of the ’505 patent. IPR2016-01496, Paper 19
`(“1496 Dec. on Inst.”). Additionally, we granted Petitioner’s motion to join
`
`2 Paper 31 is a private, unredacted version of the Patent Owner Response,
`and Paper 32 is a public, redacted version of the Patent Owner Response.
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`PUBLIC VERSION – REDACTED
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`IPR2016-00596
`Patent 7,134,505 B2
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`IPR2016-01496 with IPR2016-00596. IPR2016-01496, Paper 30.
`Subsequent filings addressing the grounds presented in the Petition for
`IPR2016-01496 include a Patent Owner Response (IPR2016-00596,3 Papers
`55, 564, “1496 PO Resp.” 5), and a Petitioner Reply (IPR2016-00596,6 Paper
`65, “1496 Pet. Reply”). All of the grounds presented in the Petition for
`IPR2016-00596 and all of the grounds presented in the Petition for IPR2016-
`01496 are pending in this inter partes review.
`We have jurisdiction over this proceeding under 35 U.S.C. § 6(b).
`After considering the evidence and arguments of the parties, we determine
`that Petitioner has proven by a preponderance of the evidence that claims 1–
`7, 11, and 14–27 of the ’505 patent are unpatentable. See 35 U.S.C.
`§ 316(e). We issue this Final Written Decision pursuant to 35 U.S.C.
`§ 318(a).
`
`
`3 This paper appears in the record of IPR2016-00596 because it was filed
`after the cases were joined.
`4 Paper 55 is a private, unredacted version of the Patent Owner Response,
`and Paper 56 is a public, redacted version of the Patent Owner Response.
`5 Because the substance of this paper addresses the grounds originally
`presented in the Petition for IPR2016-01496, subsequent citations use
`“1496” to identify this paper, notwithstanding that it appears in the record of
`IPR2016-00596. We apply the same convention with respect to other papers
`and exhibits that relate to the grounds originally presented in IPR2016-
`01496, but were filed in the record of IPR2016-00597 after joinder of the
`two cases.
`6 This paper (and each subsequent paper) appears in the record of IPR2016-
`00596 because it was filed after the cases were joined.
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`
`II. BACKGROUND
`
`A.
`
`The ’505 Patent
`The ’505 patent discloses an apparatus and method for fluid treatment
`of a wellbore. Ex. 1001, 1:16–19. The ’505 patent discloses that many prior
`systems required inserting a tubing string into a bore hole “with the ports or
`perforations already opened.” Id. at 2:10–12. The ’505 patent states that
`this “can hinder the running operation and limit usefulness of the tubing
`string.” Id. at 2:15–17. The ’505 patent addresses this problem, disclosing
`that its “method and apparatus provide for the running in of a fluid treatment
`string, the fluid treatment string having ports substantially closed against the
`passage of fluid therethrough, but which are openable when desired to
`permit fluid flow into the wellbore.” Id. at 2:26–30. Regarding applications
`for its system, the ’505 patent discloses that “[t]he apparatus and methods of
`the present invention can be used in various borehole conditions including
`open holes, cased holes, vertical holes, horizontal holes, straight holes or
`deviated holes.” Id. at 2:31–34.
`The ’505 patent shows details of a wellbore fluid treatment assembly
`in Figure 1b. Id. at 6:8–9. Figure 1b is reproduced below.
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`Figure 1b shows a wellbore fluid treatment assembly, including tubing
`string 14 disposed inside wellbore 12 of formation 10. Id. at 6:8–13.
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`
`Packers 20d, 20e, and 20f mount at different positions along the axis
`of tubing string 14. See id. at 6:17–19; Fig. 1b. The packers used are solid-
`body type packers having at least one extrudable packing element. Id. at
`6:33–34. At ported intervals 16c, 16d, and 16e, ports 17 (not labeled in
`Figure 1b) open through tubing string 14. Id. at 6:13–16. Ported interval
`16c sits above packer 20d, ported interval 16d sits between packers 20d and
`20e, and ported interval 16e sits between packers 20e and 20f. See id. at
`6:17–19, Fig. 1b.
`Sliding sleeves 26c, 26d, and 26e are positioned inside tubing
`string 14 to regulate opening of ports 17. Id. at 6:41–42. Sliding sleeves
`26c, 26d, and 26e mount over ports 17 of ported intervals 16c, 16d, and 16e,
`respectively, to close the ports 17. See id. at 6:42–44. Each of sliding
`sleeves 26c, 26d, and 26e can be moved to a position away from the
`associated ports 17 to open them. Id. at 6:46–53. In one embodiment, a ball
`or plug may actuate a sliding sleeve from the closed state to an open state.
`Ball 24e can travel through tubing string 14 and seat in sleeve 22e. Id. at
`6:65–7:18. For example, ball 24e can travel through tubing string 14 and
`seat in sliding sleeve 26e. Id. at 6:65–7:11. Subsequently, pressure applied
`inside tubing string 14 can move ball 24e and sliding sleeve 26e to open
`ports 17 of ported interval 16e, as shown in Figure 1b. Id. at 7:2–15. This
`allows fluid flow between the inside and the outside of tubing string 14
`through ports 17. Id. at 7:15–18. Other balls can be used to move the other
`sliding sleeves in sequence, so as to allow sequential treatment of different
`zones within wellbore 12. Id. at 8:1–35. To facilitate sequential treatment,
`the ’505 patent discloses that
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`
`Each of the plurality of sliding sleeves has a different diameter
`seat and therefore each accept different sized balls. In
`particular, the lower-most sliding sleeve 22e has the smallest
`diameter D1 seat and accepts the smallest sized ball 24e and
`each sleeve that is progressively closer to surface has a larger
`seat.
`Id. at 7:19–24.
`Related Matters
`B.
`
`The ’505 patent is involved in a concurrent district court action, Rapid
`Completions LLC v. Baker Hughes Inc., No. 6:15-cv-00724 (E.D. Tex.),
`which was filed July 31, 2015. IPR2016-00596, Paper 5. Additionally, the
`’505 patent has been challenged in IPR2016-01517.
`
`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).
`The Pending Grounds
`D.
`Claims 1–7, 11, and 14–27 of the ’505 patent are challenged as
`allegedly unpatentable based on the following pending grounds (596 Dec. on
`Inst. 17–18; 1496 Dec. on Inst. 19):
`Ground
`References
`§ 102
`Thomson7
`§ 103
`Thomson and Hartley8
`§ 103
`Thomson and Ellsworth9
`
`7 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).
`8 U.S. Patent No. 5,449,039, iss. Sep. 12, 1995 (“Hartley”) (Ex. 1003).
`9 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).
`8
`PUBLIC VERSION – REDACTED
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`Challenged Claim
`1–7, 11, 14–22, and 24–26
`15
`23 and 27
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`PUBLIC VERSION – REDACTED
`
`IPR2016-00596
`Patent 7,134,505 B2
`
`Challenged Claim
`11
`1–7, 11, 14–22, and 24–26
`15
`
`Ground
`§ 103
`§ 103
`§ 103
`
`§ 103
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`§ 103
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`§ 103
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`§ 103
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`§ 103
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`§ 103
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`References
`Thomson and Echols10
`Thomson and Brown11
`Thomson, Hartley, and
`Brown
`Thomson, Ellsworth, and
`Brown
`Thomson, Echols, and
`Brown
`Lane-Wells12 and
`Ellsworth13
`Lane-Wells, Ellsworth and
`Hartley14
`Lane-Wells, Ellsworth, and
`Echols15
`Lane-Wells, Ellsworth, and
`“based on the knowledge of
`a person of ordinary skill in
`the art.”16
`As further support, Petitioner proffers Declarations of Ali Daneshy,
`Ph.D.18 (596 Ex. 1007; 596 Ex. 1031; 1496 Ex. 1007). Patent Owner
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`23 and 27
`
`11
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`1–7 and 14–27
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`15
`
`11
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`7 and 1917
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`10 U.S. Patent No. 5,375,662 iss. Dec. 27, 1994 (“Echols”) (Ex. 1005).
`11 U.S. Patent No. 4,018,272 iss. Apr. 19, 1977 (“Brown”) (Ex. 1006).
`12 Composite Catalog of Oil Field and Pipe Line Equipment 21st 1955–56
`Edition, World Oil, The Gulf Publishing Company (1496 Ex. 1002).
`13 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”) (1496
`Ex. 1004).
`14 U.S. Patent No. 5,449,039 iss. Sept. 12, 1995 (“Hartley”) (1496 Ex. 1003).
`15 U.S. Patent No. 5,375,662 iss. Dec. 27, 1994 (“Echols”) (1496 Ex. 1005).
`16 1496 Pet. 6.
`17 We do not view this ground as differing from Petitioner’s challenge of
`claims 7 and 19 as obvious over Lane-Wells and Ellsworth.
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`Patent 7,134,505 B2
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`proffers Declarations of Harold E. McGowen III, PE. (596 Ex. 2034; 596
`Ex. 2036; 1496 Ex. 2050; 1496 Ex. 2051; 1496 Ex. 2081).
`III. ANALYSIS
`Claim Construction
`A.
`In an inter partes review, the Board interprets claim terms in an
`unexpired patent according to the broadest reasonable construction in light
`of the specification of the patent in which they appear. 37 C.F.R.
`§ 42.100(b); see In re Cuozzo Speed Techs., LLC, 136 S. Ct. 2131, 2142–46
`(2016). Under that standard, and absent any special definitions, we give
`claim terms their ordinary and customary meaning, as would be understood
`by one of ordinary skill in the art at the time of the invention. See In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special
`definitions for claim terms must be set forth with reasonable clarity,
`deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed.
`Cir. 1994).
`Petitioner proposes constructions for certain claim terms. 596 Pet.
`21–27; 1496 Pet. 25–30. Patent Owner also addresses the meaning of
`certain claim language. 596 PO Resp. 3–7; 1496 PO Resp. 2–4. For
`purposes of this decision, we need only construe certain claim language, as
`discussed in detail immediately below. Vivid Techs., Inc. v. Am. Sci. &
`
`
`18 Patent Owner criticizes Dr. Daneshy’s testimony, arguing that Dr.
`Daneshy did not know certain legal criteria associated with determining
`obviousness of the claimed invention. 596 PO Resp. 43–46; 1496 PO Resp.
`30–33. We have given Dr. Daneshy’s testimony appropriate weight in view
`of Patent Owner’s arguments. For example, in our analysis, we do not rely
`on Dr. Daneshy’s ultimate conclusions regarding obviousness, and we afford
`his testimony on underlying factual issues appropriate weight.
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`
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be
`construed that are in controversy, and only to the extent necessary to resolve
`the controversy.”).
`1. Claim 11—has engaged and moved
`Claim 11 recites “wherein the first port has mounted thereover a
`sliding sleeve and in the position permitting fluid flow, the first sleeve has
`engaged and moved the sliding sleeve away from . . . the first port.”
`Petitioner proffers a construction for claim 11’s recitation of “has engaged
`and moved.” 596 Pet. 24–26.
`Specifically, Petitioner argues that the “[broadest reasonable
`interpretation] of ‘has engaged and moved’ requires a process of two events
`that are temporally linked: the physical relationship between the first sleeve
`and the sliding sleeve changes to one of engagement, and the first sleeve
`moves the sliding sleeve.” Id. at 24. Petitioner asserts that claim language
`requires that “engaged” and “moved” occur in a linked manner. Id.
`Petitioner also argues that, logically, if the first sleeve “has engaged and
`moved” the sliding sleeve to an open position, the first sleeve had not
`engaged the sliding sleeve before the first sleeve moved the sliding sleeve to
`the open position. Id. at 25–26. Petitioner asserts that the Specification of
`the ’505 patent comports with its proffered claim construction, noting that in
`the example described in connection with Figure 8, sleeve 322 first engages
`and then moves sleeve 325. Id. at 25 (citing Ex. 1001, 12:32–39, 12:52–62,
`3:28–31). Patent Owner does not dispute Petitioner’s proposed construction
`or reasoning. See 596 PO Resp. 7. Petitioner persuades us that the broadest
`reasonable interpretation of “has engaged and moved” requires a process of
`
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`
`two events that are temporally linked—first, the physical relationship
`between the first sleeve and the sliding sleeve changes to one of
`engagement, and second, the first sleeve moves the sliding sleeve.
`B. Alleged Anticipation of Claims 1–7, 11, 14–22, and 24–26 by
`Thomson
`Petitioner explains how it believes Thomson discloses every limitation
`of claims 1–7, 11, 14–22, and 24–26. 596 Pet. 27–45; 596 Pet. Reply 1–2.
`Patent Owner argues that Thomson fails to disclose certain limitations of
`these claims. 596 PO Resp. 50–53. Having reviewed Petitioner’s arguments
`and evidence, as well as Patent Owner’s counterarguments and evidence, we
`find that Petitioner has demonstrated by a preponderance of the evidence
`that Thomson anticipates claims 1–7, 14–22, and 24–26. Because we find it
`persuasive, we adopt as our own Petitioner’s explanation of how Thomson
`anticipates claims 1–7, 14–22, and 24–26. 596 Pet. 27–45; 596 Pet.
`Reply 1–2. We find, however, that Petitioner has not demonstrated by a
`preponderance of the evidence that claim 11 is anticipated by Thomson.
`In the sections that follow, we discuss in greater detail certain salient
`aspects of the evidence and contentions regarding the alleged anticipation of
`claims 1–7, 11, 14–22, and 24–26 by Thomson. Section III.B.1 summarizes
`Thomson’s disclosure. Section III.B.2 discusses Patent Owner’s argument
`that Petitioner does not demonstrate that Thomson discloses a solid body
`packer with multiple packing elements. 596 PO Resp. 50–53. Patent Owner
`does not dispute Thomson’s disclosure of any other element of claims 1–7,
`11, 14–22, and 24–26. In view of our conclusion regarding the broadest
`reasonable interpretation of claim 11 (see Section III.A.1, supra), Section
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`III.B.3 discusses Petitioner’s assertion of anticipation of claim 11 by
`Thomson.
`1. Thomson
`Thomson discloses a “completion design that allows multiple acid
`fracs to be performed in horizontal subsea chalk-formation wells with a
`single trip into the wellbore.” Ex. 1002, 1. Thomson’s “project was
`initiated to develop a system that would allow multiple acid stimulations to
`be efficiently performed in the shortest possible time.” Id. “The key
`element” of Thomson’s system “is a multi-stage acid frac tool (MSAF) that
`is similar to a sliding sleeve circulating device and is run in the closed
`position.” Id. Thomson’s Figure 5, below, depicts the MSAF tool in cross-
`section.
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`Thomson’s Figure 5, reproduced above, depicts in the upper illustration
`labeled “Closed Position,” the MSAF tool having a sliding sleeve covering
`fluid ports in the closed position, and in the lower illustration, labeled “Open
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`Position,” the sliding sleeve having been moved by a ball into an open
`position uncovering the fluid ports. Id. at 2, 12.
`Thomson discloses that hydraulic-set retrievable packers may be
`positioned on each side of an MSAF tool. Id. at 1. Thomson shows an
`MSAF tool disposed between two packers in Figure 3, which is reproduced
`below.
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`Thomson’s Figure 3 shows “a [s]chematic of a [t]ypical Joanne
`[c]ompletion.” Id. at 2. Figure 3 shows one MSAF tool disposed between
`two packers. Id. at 2, Fig. 3. Thomson discloses that more MSAF tools can
`be used, stating that “[u]p to 9 MSAF tools can be run in the completion
`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. To
`illustrate an example of Thomson’s disclosure of using multiple MSAF
`tools, each isolated in a zone by adjacent hydraulic-set retrievable packers,
`Petitioner provides the following modified, annotated version of Thomson’s
`Figure 3. 596 Pet. 28
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`
`
`Petitioner’s modified, annotated version of Figure 3 shows three MSAF
`tools and three packers mounted in alternating positions along a tubing
`string. Id. Apparently using the dimensions from table 1 of Thomson, the
`annotated, modified Figure 3 identifies the first (leftmost) MSAF tool as
`having a 2” dimension, the next MSAF tool as having a 1.75” dimension,
`and the next MSAF tool as having a 1.5” dimension. Id. This comports
`with Thomson’s disclosure that “[e]ach sleeve contains a threaded ball seat
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`with the smallest ball seat in the lowest sleeve and the largest ball seat in the
`highest sleeve.” Ex. 1002, 1; 596 Pet. 38.
`For each well, Thomson discloses running its apparatus into the well
`in one trip, after perforating the well with tubing-conveyed perforating guns.
`Id. at 3. Thomson discloses subsequently setting the packers of the
`apparatus and stimulating the well. Id. Thomson discloses that
`[w]ith this system, stimulation of 10 separate zones is
`accomplished in 12–18 hours by a unique procedure that
`lubricates varying sized low-specific gravity balls into the
`tubing and then pumps them to a mating seat in the appropriate
`MSAF, thus sealing off the stimulated zone and allowing
`stimulation of the next zone which is made accessible by
`opening the sleeve.
`Id. at 1. Based on these express disclosures, we find that Thomson teaches
`multistage fracturing of a wellbore.
`2. Whether Thomson Teaches a Solid Body Packer with Multiple
`Packing Element—Claims 1–7, 11, and 14–22, and 24–26
`Each of independent claims 1, 19, and 24 recites “at least one of the
`first, second and third packer being a solid body packer each including
`multiple packing elements.” Ex. 1001, 14:27–29, 15:62–64, 16:51–53.
`Petitioner asserts that Thomson discloses using multiple retrievable packers
`corresponding to the first, second, and third packers recited in independent
`claims 1, 19, and 24. 596 Pet. 31–34. Petitioner further argues that each of
`Thomson’s retrievable packers includes multiple packing elements. Id. at
`32–34. Petitioner asserts, and Dr. Daneshy testifies, that Thomson’s
`retrievable packers are shown with multiple packing elements in both
`Figures 3 and 4. 596 Pet. 31–34; Ex. 1007 ¶¶ 70–73. Dr. Daneshy and
`Petitioner provide excerpts from Thomson’s Figures 3 and 4 with
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`annotations identifying where they contend the figures show multiple
`packing elements in a retrievable packer. These excerpts from Figures 3 and
`4 are reproduced below.
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`The excerpt from Figure 3 and the excerpt from Figure 4 each shows a
`retrievable packer with annotations showing the structures Petitioner and Dr.
`Daneshy identify as multiple packing elements. Dr. Daneshy testifies that
`Figures 3 and 4 show a retrievable packer with multiple packing elements
`and spacer rings between them. Ex. 1007 ¶ 72. Dr. Daneshy further testifies
`that this type of solid-body packer commonly used multiple packing
`elements separated by spacer rings to constrain the packing elements and
`ensure proper extrusion. Id. (citing Ex. 1016, 3:62–65; Figs. 1, 2). We find
`Dr. Daneshy’s testimony credible and persuasive.
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`Patent Owner asserts that Petitioner fails to demonstrate Thomson
`discloses a solid body packer with multiple packing elements, asserting that
`Thomson is ambiguous regarding the number of packing elements in its
`packers. 596 PO Resp. 50–53. Patent Owner argues that Thomson does not
`include enough detail to support Petitioner’s assertions. Id. at 50. Patent
`Owner argues that the text of Thomson suggests its permanent and
`retrievable packers each have the same number of packing elements,
`whereas in Figure 3 “[o]ne packer appears to have a single element and the
`other packer appears to have multiple elements.” Id. at 50–51. Given this,
`Patent Owner argues that a person of ordinary skill in the art would likely
`look to Figure 4 to figure out whether Thomson’s packers have multiple
`packing elements. Id. at 51. Patent Owner therefore concludes that
`Petitioner has not established that Thomson’s Figure 4 shows multiple
`packing elements. As for Dr. Daneshy’s testimony, Patent Owner argues
`that it warrants no weight because he has not designed a packer, is not an
`expert on packers, and is not an expert on image analysis. Id. at 52–53.
`Petitioner responds that Thomson’s Figure 3 clearly identifies the
`“retrievable packer” as the one shown with multiple packing elements. 596
`Pet. Reply 1. Regarding Patent Owner’s attack on Dr. Daneshy’s testimony,
`Petitioner argues that Dr. Daneshy need not design a packer to competently
`testify that Figure 4 shows multiple packing elements, further noting that
`Mr. McGowen did not disagree with Dr. Daneshy’s testimony. Id. at 1–2.
`We find it compelling that Mr. McGowen did not disagree with Dr.
`Danseshy.
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`We find that the preponderance of the evidence shows that Thomson
`discloses using multiple retrievable packers, each of which includes multiple
`packing elements. Figure 3 of Thomson undisputedly shows the retrievable
`packer having multiple packing elements. See 596 PO Resp. 51 (“the other
`packer appears to have multiple elements”). Although the image quality of
`Figure 4 is lower than the image quality of Figure 3, Figure 4 also
`reasonably shows multiple packing elements with indentations in the outer
`surface where Petitioner asserts that spacers separate the multiple packing
`elements. Additionally, t