UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`HALLIBURTON ENERGY SERVICES, INC.
`Petitioner
`
`v.
`
`U.S. WELL SERVICES, LLC
`Patent Owner
`____________
`
`Case No. IPR2021-01538
`
`Patent 10,408,031
`____________
`
`
`DECLARATION OF DR. L. BRUN HILBERT, Jr., P.E.
`
`
`
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`HALLIBURTON EXHIBIT 1003, Page 1
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`
`
`Declaration of Dr. Brun Hilbert
`IPR of USP 10,408,031
`
`TABLE OF CONTENTS
`
`V.
`
`Page
`INTRODUCTION ........................................................................................... 1
`I.
`EXPERIENCE AND QUALIFICATIONS ..................................................... 1
`II.
`III. TASK SUMMARY AND MATERIALS REVIEWED ................................. 7
`IV. SUMMARY OF CONCLUSIONS AND GROUNDS FOR
`CHALLENGE ................................................................................................. 8
`LEGAL STANDARDS ................................................................................... 8
`A.
`Level of Ordinary Skill in the Art ......................................................... 8
`B.
`Legal Standard for Claim Construction .............................................. 10
`C.
`Anticipation ......................................................................................... 11
`D. Obviousness ......................................................................................... 12
`E.
`Legal Standard for Priority Date ......................................................... 15
`VI. OVERVIEW OF THE CHALLENGED PATENT ....................................... 17
`A.
`Subject Matter ..................................................................................... 17
`B.
`Prosecution History ............................................................................. 19
`C.
`Priority Date ........................................................................................ 22
`D.
`Comparison of Asserted References to Prior Art Discussed
`During Prosecution .............................................................................. 23
`VII. SUMMARY OF PRIOR ART ....................................................................... 23
`A. Dykstra ................................................................................................ 23
`B.
`Omont .................................................................................................. 26
`VIII. CLAIM CONSTRUCTION .......................................................................... 29
`IX. A REASONABLE LIKELIHOOD EXISTS THAT THE
`CHALLENGED CLAIMS ARE UNPATENTABLE .................................. 29
`A. Ground 1: Claims 1-3 and 5-8 are anticipated by Dykstra ................. 29
`
`i
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`HALLIBURTON EXHIBIT 1003, Page 2
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`
`
`X.
`
`
`
`B.
`
`Declaration of Dr. Brun Hilbert
`IPR of USP 10,408,031
`1.
`Claim 1 ...................................................................................... 29
`Claim 2 ...................................................................................... 55
`2.
`Claim 3 ...................................................................................... 58
`3.
`Claim 5 ...................................................................................... 63
`4.
`Claim 6 ...................................................................................... 66
`5.
`Claim 7 ...................................................................................... 67
`6.
`Claim 8 ...................................................................................... 68
`7.
`Ground 2: Claims 1-3 and 5-8 are obvious over Dykstra ................... 71
`1.
`Claims 1-3 and 5-8 .................................................................... 72
`2.
`Claim 2 ...................................................................................... 73
`3.
`Claim 3 ...................................................................................... 75
`Ground 3: Claims 2, 3, and 4 in view of Dykstra and Omont ............. 77
`1.
`One of skill in the art would be motivated to combine the
`references .................................................................................. 77
`Claim 2 ...................................................................................... 80
`2.
`Claim 3 ...................................................................................... 82
`3.
`Claim 4 ...................................................................................... 86
`4.
`CONCLUSION .............................................................................................. 88
`
`C.
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`
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`ii
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`HALLIBURTON EXHIBIT 1003, Page 3
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`

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`Declaration of Dr. Brun Hilbert
`IPR of USP 10,408,031
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`LIST OF EXHIBITS
`
`U.S. Patent No. 10,408,031, Jared Oehring et al., “Automated
`Fracturing System and Method” (the “’031 Patent”), filed October 15,
`2018, issued September 10, 2019.
`
`File History for U.S. Patent No. 10,408,031
`
`Declaration of Dr. Brun Hilbert
`U.S. Patent Publication No. 2008/0236818, Jason D. Dykstra,
`“Method and Apparatus for Controlling the Manufacture of Well
`Treatment Fluid” (“Dykstra”), filed March 27, 2007, published
`October 11, 2012.
`U.S. Patent Publication No. 2017/00226842, Gregoire Omont et al.,
`“Monitoring Health of Additive Systems” (“Omont”), filed July 31,
`2015, published February 4, 2016.
`Ogata, Katsuhiko, Modern Control Engineering, Upper Saddle River,
`N.J: Prentice Hall, 1997.
`Maxwell James Clerk 1868, On Governors, Proc. R. Soc. Lond.,
`pp. 16270–283.
`
`
`
`
`
`
`1001
`
`1002
`
`1003
`1004
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`1005
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`1006
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`1007
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`iii
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`HALLIBURTON EXHIBIT 1003, Page 4
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`I.
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`INTRODUCTION
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`Declaration of Dr. L. Brun Hilbert, Jr., P.E.
`IPR of USP 10,408,031
`
`1. My name is Dr. L. Brun Hilbert, Jr. I make this declaration based
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`upon my own personal knowledge and, if called upon to testify, would testify
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`competently to the matters contained herein.
`
`2.
`
`I have been asked to provide technical assistance in the inter partes
`
`review of U.S. Patent No. 10,408,031 (“the ’031 Patent” or “the Challenged
`
`Patent”). This declaration is a statement of my opinions on issues related to the
`
`unpatentability of claims and of the ’031 Patent. I am being compensated at my
`
`normal rate of $510 per hour for my analysis, plus reimbursement for expenses.
`
`My compensation does not depend on the content of my opinions or the outcome
`
`of this proceeding.
`
`II. EXPERIENCE AND QUALIFICATIONS
`
`3.
`
`In formulating my opinions, I have relied upon my knowledge,
`
`training, and experience in the relevant art. My qualifications are stated more fully
`
`in my curriculum vitae, which has been provided as Appendix A. Here, I provide a
`
`brief summary of my qualifications.
`
`4.
`
`I am a Principal Engineer at Exponent, Inc. (“Exponent”). I hold a
`
`Ph.D. degree in Materials Science and Minerals Engineering from the University
`
`of California, Berkeley. I hold a B.S. degree in Mathematics and an M.S. degree in
`
`Mechanical Engineering from the University of New Orleans. I am a licensed
`
`1
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`HALLIBURTON EXHIBIT 1003, Page 5
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`Declaration of Dr. L. Brun Hilbert, Jr., P.E.
`
`IPR of USP 10,408,031
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`Professional Mechanical Engineer in California, a licensed Mechanical and
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`Petroleum Engineer in Texas, and a licensed Mechanical Engineer in New Mexico.
`
`5.
`
`I have experience and have worked and testified on matters involving
`
`hydraulic fracturing operations, well stimulation design, well design and
`
`construction, drilling, completions, and production.
`
`6.
`
`I was a consulting expert on the Deepwater Horizon Macondo well
`
`blowout in 2010, including detailed analysis of the failures of the subsea blowout
`
`prevention (“BOP”) and wellhead equipment. I have worked on several matters
`
`involving onshore and offshore blowouts and loss of well control. As a result of the
`
`Deepwater Horizon tragedy, I worked with a major oil and gas corporation to
`
`develop supplemental blowout mitigation equipment, located in the riser between
`
`the BOP and the floating platform.
`
`7.
`
`I was appointed to the National Academy of Engineering (NAE)
`
`Committee on Connector Reliability for Offshore Oil and Natural Gas Operations
`
`in 2017. This committee was assembled to investigate the causes and prevention of
`
`the premature failure of critical bolts on subsea BOPs and wellheads.
`
`8.
`
`I was a Society of Petroleum Engineers (SPE) Distinguished Lecturer
`
`for 2015-2016. I lectured on the topic Well Design and Integrity: Importance, Risk,
`
`and Scientific Certainty.
`
`2
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`Declaration of Dr. L. Brun Hilbert, Jr., P.E.
`IPR of USP 10,408,031
`Over the past four decades, I have developed expertise in oil and gas
`
`9.
`
`well drilling, completion, and design, well production and wellhead equipment,
`
`well stability and sand production, well stimulation and hydraulic fracturing,
`
`drilling mechanics, petroleum rock mechanics, reservoir geomechanics, fixed and
`
`floating offshore platforms, and the structural integrity and leak resistance of the
`
`threaded connections.
`
`10. From 1981 through 1992, I was employed in the Drilling and
`
`Completions Division of Exxon Production Research Company in Houston, Texas.
`
`While at Exxon Production Research Company, I conducted research and field-
`
`specific applications in well design and construction for wells both onshore and
`
`offshore, both in the United States and internationally. I taught courses to Exxon
`
`and affiliate engineers in Well Completions and Workovers in the Middle East,
`
`Southeast Asia, Australia, Malaysia, and North America. I performed applied
`
`research and development in the areas of tubing and casing string design, well
`
`design, well completion design, and workovers, and well stimulation design.
`
`11. During my career at Exxon, I worked with domestic and international
`
`Exxon Affiliates and their partners on site-specific well designs for challenging
`
`fields. While at Exxon Production Research Company, I consulted with Saudi
`
`Aramco, Esso Malaysia, and Esso Australia in drilling operations, drill string
`
`mechanics, well design, casing and tubing design, cementing design and
`
`3
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`HALLIBURTON EXHIBIT 1003, Page 7
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`Declaration of Dr. L. Brun Hilbert, Jr., P.E.
`
`IPR of USP 10,408,031
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`operations, production and well stimulation, and well abandonment. The
`
`applications included High Pressure-High Temperature (“HPHT”) wells in the
`
`United States offshore in the Gulf of Mexico and onshore in, for example,
`
`Louisiana, Texas, Oklahoma, and Wyoming. I performed applied research for
`
`permafrost thaw loading of casing strings in Prudhoe Bay, Alaska.
`
`12.
`
`In 1992, I left Exxon Production Research Company to pursue
`
`doctoral studies at the University of California at Berkeley. I obtained a Ph.D.
`
`degree from the Department of Minerals Engineering and Material Science in
`
`1995. My dissertation work involved the application of solid mechanics to rock
`
`engineering computations, also referred to as geomechanics. I also performed
`
`laboratory work on the micromechanics of wave propagation in sandstone rock,
`
`which is important in the interpretation of wellbore formation logging.
`
`13.
`
`In 1996, I was hired by Exponent, Inc. (formerly Failure Analysis
`
`Associates, Inc.) in Menlo Park, California, where I have developed a consulting
`
`practice in the areas of Petroleum and Mechanical Engineering. With specific
`
`focus consulting to the oil and gas industry, I have performed the following:
`
`a.
`
`Failure analysis of wells due to mechanical failure, human
`
`factors, and geomechanical deformation mechanisms.
`
`b.
`
`I have performed expert work and litigation support involving
`
`onshore and offshore well design and integrity; failure of tubing and casing
`
`4
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`HALLIBURTON EXHIBIT 1003, Page 8
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`Declaration of Dr. L. Brun Hilbert, Jr., P.E.
`IPR of USP 10,408,031
`due to corrosive environments and overloading; analysis of casing and
`
`tubing materials and metallurgy; hydraulically fractured wells; abandonment
`
`of wells; well control events; blowouts; well site accidents involving injuries
`
`and fatalities; and performance of oil and gas wells.
`
`14.
`
`I have published over 100 technical journal articles, reports, and
`
`presentations during my career. I have written book chapters on computational
`
`geomechanics and underground gas storage. I have taught courses for preparation
`
`of taking the professional engineering license examination in Civil Engineering.
`
`15.
`
`I believe that my extensive industry experience and educational
`
`background qualify me as an expert in the relevant field of oil and gas well
`
`drilling, completion, and design, well production and wellhead equipment. I am
`
`knowledgeable of the relevant skill set that would have been possessed by a
`
`hypothetical person of ordinary skill in the art at the time of the invention of the
`
`Challenged Patents, which I have been instructed is October 15, 2015, for purposes
`
`of this proceeding.
`
`16. The following are a sample of my publications and presentations, and
`
`lectures in the field.
`
` Owens ZC, Smyth BJ, Ames NA, Pye JD, Hilbert LB,
`
`Brooks B, “Development of a Casing-Integrated Well
`
`5
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`HALLIBURTON EXHIBIT 1003, Page 9
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`
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`Declaration of Dr. L. Brun Hilbert, Jr., P.E.
`IPR of USP 10,408,031
`Technology Conference,
`
`Tool,” Offshore
`
`Control
`
`doi:10.4043/28644-MS, April 30, 2018.
`
` Owens ZC, Smyth BJ, Ames NA, Pye JD, Hilbert LB,
`
`Brooks B, Taber RM, Mendez H, “Casing-integrated,
`
`surface-activated well control tool supplements BOP in
`
`uncontrolled blowout scenarios,” Drilling Contractor 2017
`
`July/Aug; 73(4).”
`
` Hilbert LB, Liu Z, Cook NGW, “On the use of substructuring
`
`and domain decomposition techniques in discontinuum
`
`mechanics,” Proceedings, 32nd Annual Technical Meeting
`
`Society of Engineering Science, New Orleans, LA, October
`
`1995.
`
` Hilbert LB, Janna WS, “The feasibility of electric power
`
`generation by the wind,” University of New Orleans,
`
`Proceedings, ASME Energy Sources Technology Conference
`
`and Exhibition, 82-PET-1, New Orleans, LA, March 1982.
`
` Hilbert LB, Saba T, “Recent developments in hydraulic
`
`fracturing,” Presented at: A Whole New Ballgame: Oil and
`
`Gas in the Trump Administration. A Seminar by Husch
`
`Blackwell, LLP. Denver, CO, April 27, 2017.
`
`6
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`HALLIBURTON EXHIBIT 1003, Page 10
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`
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`Declaration of Dr. L. Brun Hilbert, Jr., P.E.
`IPR of USP 10,408,031
`
` Hilbert LB, Schell JD, Meyer AA, “Considerations of risk in
`
`hydraulic
`
`fracturing,” ASME Silicon Valley Section
`
`Technical Dinner Talk, February 27, 2014.
`
` Hilbert LB, Mosher GE, Schell JD, “Hydraulic fracturing:
`
`Myths and realities,” Exponent Webinar, May 14, 2013.
`
` Hilbert LB, Saba T, Mohsen F, “Hydraulic fracturing: What
`
`are the key engineering and environmental issues?” Exponent
`
`Webinar, May 25, 2011.
`
`17. Therefore, based on my education, professional experience of forty
`
`years, and scholarly books and publications, I am an expert in the relevant field of
`
`the ’031 Patent at issue here and have been an expert in this field since before the
`
`’031 Patent were filed with the United States Patent and Trademark Office
`
`(“USPTO”). I am intimately familiar with how a person having ordinary skill in
`
`the art would have understood and used the terminology found in the ’031 Patents
`
`at the time of its filing.
`
`III. TASK SUMMARY AND MATERIALS REVIEWED
`
`18.
`
`I have been asked to review the Challenged Patent and their
`
`prosecution histories, to provide an understanding of the technology relevant to the
`
`Challenged Patent, to review certain prior-art references, and analyze whether
`
`those references disclose or teach limitations of claims from The Challenged
`
`7
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`HALLIBURTON EXHIBIT 1003, Page 11
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`Declaration of Dr. L. Brun Hilbert, Jr., P.E.
`
`IPR of USP 10,408,031
`
`Patent. The opinions stated in this declaration are from the perspective of a person
`
`of ordinary skill in the art (POSITA).
`
`19.
`
`In forming my opinions, I have reviewed The Challenged Patent, their
`
`prosecution histories, the materials cited in the List of Exhibits, and the materials
`
`cited throughout my declaration.
`
`IV. SUMMARY OF CONCLUSIONS AND GROUNDS FOR
`CHALLENGE
`
`20. After reviewing the materials identified in the List of Exhibits, I have
`
`concluded that each of the Challenged Claims of the Challenged Patent would have
`
`been obvious to a person of ordinary skill in the art, based on the following
`
`grounds.
`
`Ground Statutory Basis
`
`Claims
`
`Prior Art
`
`1
`
`2
`
`3
`
`35 U.S.C. § 102
`
`1-3 and 5-8
`
`Dykstra
`
`35 U.S.C. § 103
`
`1-3 and 5-8
`
`Dykstra
`
`35 U.S.C. § 103
`
`2-4
`
`Dykstra in view of Omont
`
`
`V. LEGAL STANDARDS
`A. Level of Ordinary Skill in the Art
`21. When interpreting a patent, I understand that it is important to identify
`
`the relevant art pertaining to the patent-in-suit as well as the level of ordinary skill
`
`8
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`Declaration of Dr. L. Brun Hilbert, Jr., P.E.
`
`IPR of USP 10,408,031
`
`in that art at the time of the claimed invention. The “art” is the field of technology
`
`to which the patent is related.
`
`22.
`
`I am informed and understand that the person having ordinary skill in
`
`the art (“POSITA”) is a hypothetical person who is presumed to know the relevant
`
`prior art. I understand that the actual inventor’s skill is not determinative of the
`
`level of ordinary skill. I further understand that factors that may be considered in
`
`determining level of skill include: (i) type of problems encountered in art; (ii) prior
`
`art solutions to those problems; (iii) rapidity with which innovations are made;
`
`(iv) sophistication of the technology; and (v) educational level of active workers in
`
`the field. I understand that not all such factors may be present in every case, and
`
`one or more of them may predominate. In a given case, every factor may not be
`
`present, and one or more factors may predominate.
`
`23. As of the time of the claimed invention, a POSITA would have either
`
`(1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering,
`
`Petroleum Engineering or an equivalent field as well as at least 2 years of
`
`academic or industry experience in the oil and gas industry, including well drilling,
`
`completion, or production, or (2) at least four years of industry experience in the
`
`oil and gas industry including well drilling, completion, or production.
`
`9
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`Declaration of Dr. L. Brun Hilbert, Jr., P.E.
`IPR of USP 10,408,031
`
`B.
`24.
`
`Legal Standard for Claim Construction
`I understand that the first step in determining whether a patent claim
`
`would have been anticipated or obvious is to ascertain how a POSITA would have
`
`understood the claim terms.
`
`25.
`
`I have been instructed by counsel on the law regarding claim
`
`construction and patent claims, and I understand that a patent may include two
`
`types of claims: independent claims and dependent claims. An independent claim
`
`stands alone and includes only the limitations it recites. A dependent claim can
`
`depend from an independent claim, or it can further depend from another
`
`dependent claim. I understand that a dependent claim includes all the limitations
`
`that it recites, in addition to all the limitations recited in the claim(s) from which it
`
`depends.
`
`26.
`
`It is my understanding that in proceedings before the USPTO, the
`
`claims of a patent are to be construed under what is referred to as the “Phillips
`
`standard.” I understand that this means that claim terms of a patent are given the
`
`meaning the terms would have to a POSITA, in view of the description provided in
`
`the patent itself and the patent’s file history.
`
`27.
`
`I understand that to determine how a person of ordinary skill would
`
`understand a claim term, one should look to those sources available that show what
`
`a person of skill in the art would have understood the disputed claim language to
`
`10
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`Declaration of Dr. L. Brun Hilbert, Jr., P.E.
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`IPR of USP 10,408,031
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`mean. Such sources include the words of the claims themselves, the remainder of
`
`the patent’s description, the prosecution history of the patent (all considered
`
`“intrinsic” evidence), and “extrinsic” evidence concerning relevant scientific
`
`principles, the meaning of technical terms, the technical literature on established
`
`and emerging relevant technologies, and the state of the art at the time of the
`
`invention.
`
`28.
`
`I understand that words or terms should be given their ordinary and
`
`accepted meaning unless it appears that the inventors were using them to mean
`
`something else. In making this determination, the claims, the remainder of the
`
`patent, and the prosecution history are of paramount importance. Additionally, the
`
`patent and its prosecution history must be consulted to confirm whether the
`
`patentee has acted as its own lexicographer (i.e., provided its own special meaning
`
`to any disputed terms), or intentionally disclaimed, disavowed, or surrendered any
`
`claim scope.
`
`29.
`
`In comparing the claims of the Challenged Patent to the prior art, I
`
`have considered the Challenged Patent and its file history in light of the
`
`understanding of a person of skill at the time of the alleged invention.
`
`C. Anticipation
`30.
`It is my understanding that the claims of a patent are anticipated by a
`
`prior art reference if each and every element of the claim is found either explicitly
`
`11
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`Declaration of Dr. L. Brun Hilbert, Jr., P.E.
`
`IPR of USP 10,408,031
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`or inherently in a single prior art reference or system. I understand that inherency
`
`requires a showing that the missing descriptive matter in the claim is necessarily or
`
`implicitly present in the allegedly anticipating reference, and that it would have
`
`been so recognized by a POSITA. In addition, I understand that an enabling
`
`disclosure is a disclosure that allows a POSITA to make the invention without
`
`undue experimentation. Although anticipation typically involves the analysis of a
`
`single prior art reference, I understand that additional references may be used to
`
`show that the primary reference has enabling disclosure, to explain the meaning of
`
`a term used in the primary reference, and/or to show that a characteristic is inherent
`
`in the primary reference.
`
`D. Obviousness
`31.
`I understand that the prior art may render a patent claim “obvious.” I
`
`understand that two or more prior art references (e.g., prior art articles, patents, or
`
`publications) that each disclose fewer than all elements of a patent claim may
`
`nevertheless be combined to render a patent claim obvious if the combination of
`
`the prior art collectively discloses all elements of the claim and one of ordinary
`
`skill in the art at the time would have been motivated to combine the prior art in
`
`such a way. I understand that this motivation to combine need not be explicit in
`
`any of the prior art but may be inferred from the knowledge of one of ordinary skill
`
`in the art at the time the patent was filed. I also understand that one of ordinary
`
`12
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`Declaration of Dr. L. Brun Hilbert, Jr., P.E.
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`IPR of USP 10,408,031
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`skill in the art is not an automaton, but is a person having ordinary creativity. I
`
`further understand that one or more prior art references, articles, patents or
`
`publications that disclose fewer than all of the elements of a patent claim may
`
`render a patent claim obvious if including the missing element would have been
`
`obvious to one of skill in the art (e.g., the missing element represents only an
`
`insubstantial difference over the prior art or a reconfiguration of a known system).
`
`32.
`
`I understand that under the doctrine of obviousness, a claim may be
`
`invalid if the differences between the invention and the prior art are such that the
`
`subject matter as a whole would have been obvious at the time the invention was
`
`made to a POSITA to which the subject matter pertains.
`
`33. To assess obviousness, I understand that I am to consider the scope
`
`and content of the prior art, the differences between the prior art and the claim, the
`
`level of ordinary skill in the art, and any secondary considerations to the extent
`
`they exist.
`
`34.
`
`I understand that any evidence of secondary indicia of non-
`
`obviousness should be considered when evaluating whether a claimed invention
`
`would have been obvious to one of ordinary skill at the time of invention. These
`
`secondary indicia of non-obviousness may include, for example:
`
`
`
`a long felt but unmet need in the prior art that was satisfied by the
`
`claimed invention;
`
`13
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`Declaration of Dr. L. Brun Hilbert, Jr., P.E.
`IPR of USP 10,408,031
`
`
`
`
`
`
`
`
`
`
`
`commercial success of processes claimed by the patent;
`
`unexpected results achieved by the invention;
`
`praise of the invention by others skilled in the art;
`
`the taking of licenses under the patent by others; and
`
`deliberate copying of the invention.
`
`35.
`
`I understand that there must be a nexus between any such secondary
`
`indicia and the claimed invention.
`
`36.
`
`It is also my understanding that there are additional considerations
`
`that may be used as further guidance as to when the above factors will result in a
`
`finding that a claim is obvious, including the following:
`
`
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`
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`the claimed subject matter is simply a combination of prior art
`elements according to known methods to yield predictable results;
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`the claimed subject matter is a simple substitution of one known
`element for another to obtain predictable results;
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`the claimed subject matter uses known techniques to improve similar
`devices or methods in the same way;
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`the claimed subject matter applies a known technique to a known
`device or method that is ready for improvement to yield predictable
`results;
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`Declaration of Dr. L. Brun Hilbert, Jr., P.E.
`IPR of USP 10,408,031
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`the claimed subject matter would have been “obvious to try” choosing
`from a finite number of identified, predictable solutions, with a
`reasonable expectation of success;
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`there is known work in one field of endeavor that may prompt
`variations of it for use in either the same field or a different one based
`on design incentives or other market forces if the variations would
`have been predictable to a POSITA;
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`there existed at the time of conception and reduction to practice a
`known problem for which there was an obvious solution encompassed
`by the patent’s claims; and
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`there is some teaching, suggestion, or motivation in the prior art that
`would have led a POSITA to modify the prior art reference or to
`combine prior art reference teachings to arrive at the claimed subject
`matter.
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`37. Finally, I understand that a claim may be deemed invalid for obviousness
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`in light of a single prior art reference, without the need to combine references, if the
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`elements of the claim that are not found in the reference can be supplied by the
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`knowledge or common sense of one of ordinary skill in the relevant art.
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`E.
`38.
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`Legal Standard for Priority Date
`I understand that, subject to the next paragraph, the asserted “priority
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`date” of a patent is the earlier of: (a) the date on which a patent application is filed;
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`Declaration of Dr. L. Brun Hilbert, Jr., P.E.
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`IPR of USP 10,408,031
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`or (b) the date on which an earlier-filed patent application is filed if the patentee
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`claims the benefit of priority to that earlier-filed patent application.
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`39.
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`I understand that it is not enough for a patent to merely claim the
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`benefit of an earlier-filed application, but that additional criteria must be met. In
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`particular, the prior application itself must describe the claimed invention, and
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`must do so in sufficient detail that one skilled in the art can clearly conclude that
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`the inventor invented the claimed invention as of the filing date sought. First, I
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`understand that a priority-date analysis is on a claim-by-claim basis. Second, I
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`understand that, in order for a patent claim to be entitled to the filing date of an
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`earlier patent application, a “Section 112 analysis” must be conducted. I am
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`informed that a “Section 112” analysis encompasses looking to the earlier patent
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`application, and ascertaining that earlier patent application meets both the written-
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`description and enablement requirements as of the filing date of the earlier
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`application. It is not enough that the claim would have been obvious from the
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`earlier application, that application itself must describe the claimed invention.
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`40.
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`I understand
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`that
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`in order
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`to satisfy
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`the written description
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`requirement the earlier application must reasonably convey to those skilled in the
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`art that the inventors had possession of the subject matter of the patent as of the
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`filing date of the earlier application. I have been informed that it is the disclosures
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`of the earlier patent application that counts, and that while the meaning of terms,
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`Declaration of Dr. L. Brun Hilbert, Jr., P.E.
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`IPR of USP 10,408,031
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`phrases, or diagrams in the earlier patent application must be interpreted from the
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`vantage point of one skilled in the art, all of the claimed limitations must appear in
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`the specification. The descriptive means such as words, structures, figures,
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`diagrams, formulas, etc. must fully set forth the claimed invention. In particular, all
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`claimed limitations must be set forth in the specification. Further, I understand that
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`this analysis is not a question of whether one skilled in the art might be able to
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`construct the claimed invention from the teachings of the disclosure. The question
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`is not whether a claimed invention is an obvious variant of that which is disclosed
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`in the specification; rather, an earlier application must itself describe each of the
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`claim limitations.
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`41.
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`I also understand that in order to satisfy the enablement requirement,
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`the earlier application must enable a person of ordinary skill in the art to practice
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`the claimed invention without undue experimentation.
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`VI. OVERVIEW OF THE CHALLENGED PATENT
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`42.
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`I have reviewed the Challenged Patent entitled “Automated Fracturing
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`System and Method.” Ex. 1001, 1. I understand that the ’031 Patent was filed on
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`October 15, 2018 and issued on September 10, 2019. Ex. 1001, 1.
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`A.
`Subject Matter
`43. The ’031 Patent describes an automated hydraulic fracturing system,
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`including a pump system, a blender configured to form the fracturing fluid, a
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`Declaration of Dr. L. Brun Hilbert, Jr., P.E.
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`IPR of USP 10,408,031
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`proppant storage and delivery system, a hydration unit configured to mix an
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`additive into a fluid to form the fluid mixture and provide the fluid mixture to the
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`blender, a fluid storage and delivery system, an additive storage and delivery
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`system, and an automated control system. Ex. 1001, Abstract. The automated
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`control system includes a plurality of sensing devices and a plurality of control
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`devices integrated into the pump system, the blender system, the proppant storage
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`and delivery system, the fluid storage and delivery system, and the additive storage
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`and delivery system. Id. The automated control system is configured to monitor
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`parameters of the automated hydraulic fracturing system via the plurality of
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`sensing devices and transmit control instructions for one or more of the plurality of
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`control devices to control an aspect of the automated hydraulic fracturing system.
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`Id.
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`44. The ’031 Patent acknowledges that “hydraulic fracturing systems [at
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`the time of the filing of the ’031 Patent] usually include[d] pumps that injected
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`fracturing fluid down the wellbore, blenders that mix proppant into the fluid down
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`the wellbore, blenders that mix proppant into the fluid, cranes, wireline units, and
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`many other components that all must perform different functions to carry out
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`fracturing operations.” Ex. 1001, 1:25-33. And “these components or systems of
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`components [were] generally
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`independent systems
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`that [were]
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`individually
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`controlled by operators.” Ex. 1001, 1:31-33. While the ’031 Patent applicant alleged
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`Declaration of Dr. L. Brun Hilbert, Jr., P.E.
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`IPR of USP 10,408,031
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`that automating certain aspe