UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KERR MACHINE CO.
`Petitioner,
`v.
`SPM OIL & GAS, INC.
`Patent Owner
`____________
`
`Patent No. 9,879,659
` Case No. IPR2022-00882
`
`PETITION FOR INTER PARTES REVIEW
`
`

`

`Petition for Inter Partes Review
`
`
`
`Pat. No. 9,879,659
`
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS ......................................................................................... II
`EXHIBIT LIST ....................................................................................................... IV
`MANDATORY NOTICES (37 C.F.R. § 42.8) ..................................................... VII
`I.
`INTRODUCTION .................................................................................... 1
`II.
`STANDING (37 C.F.R. §§ 42.101 & 42.104(A)) .................................... 1
`III.
`FEES (37 C.F.R. § 42.103) ....................................................................... 1
`IV.
`THE ’659 PATENT .................................................................................. 2
`A. EFFECTIVE FILING DATE ....................................................................... 2
`B. TECHNOLOGICAL BACKGROUND ....................................................... 2
`1. Basics of Reciprocating Pumps ................................................................. 2
`2. High-Pressure Pump Assemblies .............................................................. 4
`3. Power End Crankshaft Bearing Journals and Support
`Components .............................................................................................. 5
`4. Pump Skids and Structural Elements ........................................................ 8
`5. Pump Mounting and Shaft Alignment .................................................... 17
`C. CLAIM CONSTRUCTION ........................................................................ 23
`V.
`CHALLENGE AND RELIEF REQUESTED (37 C.F.R. § 42.104(B)) 23
`A. § 42.104(b)(1),(b)(2) Statement of Requested Relief ................................. 23
`B. § 42.104(b)(4): Unpatentability .................................................................. 24
`C. § 42.104(b)(5): Supporting Evidence ......................................................... 24
`VI.
`OVERVIEW OF ASSERTED GROUNDS AND REFERENCES ....... 25
`A. The Asserted References are Analogous Prior Art ..................................... 25
`1. The Field of the ’659 Patent and Problems Faced by the
`Inventor. .................................................................................................. 25
`2. Maverick .................................................................................................. 25
`3. Rambin .................................................................................................... 27
`4. Marran ..................................................................................................... 28
`5. Ojalvo ...................................................................................................... 29
`B. Brief Overview of Asserted Grounds ......................................................... 30
`
`ii
`
`

`

`
`
`Petition for Inter Partes Review
`
`Pat. No. 9,879,659
`
`THE CHALLENGED CLAIMS ARE UNPATENTABLE ................... 31
`VII.
`A. Level of Ordinary Skill Applicable to § 103 Grounds ............................... 31
`B. Application of the Asserted References to the Challenged Claims ............ 31
`C. Secondary Considerations .......................................................................... 75
`VIII.
`CONCLUSION ....................................................................................... 75
`
`
`
`iii
`
`

`

`Petition for Inter Partes Review
`
`
`
`Pat. No. 9,879,659
`
`
`EXHIBIT LIST
`Description
`
`U.S. Patent No. 9,879,659 (“the ’659 Patent”)
`
`Declaration of Steven Tipton, P.E., Ph.D.
`
`Exhibit
`No.
`1001
`
`1002
`
`1003
`
`
`Gardner Denver Drilling Pump Model Maverick Parts List 400TLS997
`Rev F June 2013 © 2012 (“Maverick”)
`
`1004 U.S. Patent No. 4,341,508 (“Rambin”)
`
`1005 U.S. Patent No. 3,493,201 (“Marran”)
`
`U.S. Patent No. 4,129,974 (“Ojalvo”)
`
`1006
`
`1007
`
`
`
`May 31, 2014 Youtube Video available at
`https://youtu.be/OQl62MDDmeY, “Gardner Denver Maverick Power
`End by Goldmark Diesel” (screenshots of video)
`
`1008 Declaration of Ryan Volkerink
`
`Maverick Invoices
`
`1009
`
`1010
`
`
`Gardner Denver Drilling Pump Model Maverick Operating and
`Service Manual 400TLS996 Rev B August 2013
`
`1011 Goldmark System Photographs of Maverick Model Pump Assembly
`
`1012 Machinery’s Handbook, 28th Ed., E. Oberg et al., 2008 Industrial
`Press, Inc. New York New York
`
`RESERVED
`
`
`1013
`
`iv
`
`

`

`Petition for Inter Partes Review
`
`
`
`Pat. No. 9,879,659
`
`
`Exhibit
`No.
`1014
`
`Description
`
`SPM Oil & Gas Inc. and S.P.M. Flow Control, Inc.’s Disclosure of
`Asserted Claims and Infringement Contentions with Exhibits 1-4,
`Kerr Machine Co. v. SPM Oil & Gas Inc. et al., C. A. No. 4:21-cv-
`01191-O (N.D. Tex.) (served March 18, 2022).
`
`1015 U.S. Patent No. 5,249,600 to Blume
`
`1016 U.S. Patent Application Publication No. US 2014/0219824 A1
`
`1017 U.S. Patent No. 8,662, 865 to Bayyouk et al.
`
`1018 U.S. Patent Application Publication No. US 2014/0196570 A1
`
`1019 U.S. Patent No. 9,500,195 to Blume
`
`1020 U.S. Patent No. 8,701,546 to Pacht
`
`1021 U.S. Patent No. 8,186,900 to Riley
`
`1022 U.S. Patent No. 4,553,298 to Grable
`
`1023 U.S. Patent No. 2,828,931 to Harvey
`
`1024 U.S. Patent No. 1,893,699 to Dunning
`
`1025 U.S. Patent No. 6,405,992 to Palmer
`
`Steel Construction Manual, American Institute of Steel Construction,
`Thirteenth Edition, 2005
`
`Behavior of Shear Link of WF Section with Diagonal Web Stiffener of
`Eccentrically Braced Frame (EBF) of Steel Structure. ITB Journal of
`Engineering Science. 42. 103-128. 10.5614/itbj.eng.sci.2010.42.2.1.,
`Yurisman et al. (2010)
`
`
`1026
`
`1027
`
`v
`
`

`

`Petition for Inter Partes Review
`
`
`
`Pat. No. 9,879,659
`
`
`Description
`Exhibit
`
`No.
`1028 Optimized Skid Design for Compressor Packages, Beta Machinery
`Analysis, Harper et al., presented at Gas Machinery Conference Oct.
`7-10, 2013, Albuquerque, NM, available at https://www.
`betamachinery.com/knowledge-center/technical-articles/ as of April
`15, 2022
`
`1029 Analysis Guide for Variable Frequency Drive Operated Centrifugal
`Pumps, Kaiser, Thomas F. et al. (2008) Texas A&M University.
`Turbomachinery Laboratories. (Available electronically from https:
`//hdl.handle.net/1969.1/163916 as of April 15, 2022)
`
`Reciprocating Plunger Pumps, Installation, Care and Operation
`Manual, National Oilwell Varco (Revised August 27, 2010) (available
`electronically from https://calroc.ca/equipment/media/Reciprocating-
`Plunger-Pumps-Installation-Care-and-Operation-Manual.pdf as of
`April 15, 2022)
`
`
`1030
`
`
`
`
`
`
`vi
`
`

`

`Petition for Inter Partes Review
`
`
`
`Pat. No. 9,879,659
`
`
`MANDATORY NOTICES (37 C.F.R. § 42.8)
`42.8(b)(1)-RPI
`
`
`The real party in interest is Kerr Machine Co. (“Kerr”).
`
`42.8(b)(2)–Related Matters
`
`Kerr is aware of the following judicial or administrative matters that would
`
`affect, or be affected by, a decision in this proceeding:
`
`(a) Kerr Machine Co. v. SPM Oil & Gas Inc. et al., C. A. No. 4:21-cv-01191-
`
`O (N.D. Tex.);
`
`(b) U.S. Patent Application S/N 17/321,483, filed on May 16, 2021, claims
`
`the benefit of U.S. Patent Application S/N 14/808,654 (the application
`
`from which the ’659 Patent issued).
`
`(c) Kerr Machine Co. v. SPM Oil & Gas Inc. et al., IPR2022-______ (PTAB)
`
`(PGR filed on same day as this proceeding seeking review of U.S. Patent
`
`No. 11,204,030;
`
`(d) Kerr Machine Co. v. SPM Oil & Gas Inc. et al., IPR2022-______ (PTAB)
`
`(IPR filed on same day as this proceeding seeking review of U.S. Patent
`
`No. 10,520,037.
`
`
`
`vii
`
`

`

`Petition for Inter Partes Review
`
`
`
`Pat. No. 9,879,659
`
`
`42.8(b)(3)-Counsel
`
`Lead Counsel
`
`Back-up Counsel
`
`Back-up Counsel
`
`James H. Hall
`Reg. No. 66,317
`James@CHZFirm.com
`(832) 631-9990
`
`Stephen Zinda
`Reg. No. 67,272
`Stephen@CHZFirm.com
`(832) 631-9990
`
`J. David Cabello
`Reg. No. 31,455
`David@CHZFirm.com
`(832) 631-9990
`
`
`Kerr is filing a Power of Attorney concurrently with this petition.
`
`42.8(b)(4)-Service
`
`
`
`Service of any documents via mail or hand-delivery may be made on Kerr at:
`
`Cabello Hall Zinda, PLLC 801 Travis Suite 1610, Houston, Texas 77002. The fax
`
`number for Kerr’s counsel is (832) 631-9991. Kerr consents to electronic service
`
`by e-mail provided all counsel of record are served. Proof of service of this petition
`
`and exhibits is provided in the attached certificate of service.
`
`
`
`viii
`
`

`

`Petition for Inter Partes Review
`
`
`
`Pat. No. 9,879,659
`
`
`I.
`
`INTRODUCTION
`The ’659 Patent claims the invention of a reciprocating pump assembly. But
`
`the purported invention is merely the combination of various conventional and long-
`
`known components. They include a power end assembly having multiple “plates”—
`
`but these plates are merely conventional crankshaft bearing support elements. The
`
`patent claims a novel invention by combining this old technology by mounting it on
`
`a skid—a structural steel frame long used for supporting reciprocating pumps and
`
`similar machines. Not even the asserted combination is novel. Pumps having the
`
`same components mounted on skids were known long before the effective filing
`
`date. All challenged claims of the ’659 Patent are unpatentable.
`
`STANDING (37 C.F.R. §§ 42.101 & 42.104(A))
`II.
`Kerr certifies that the ’659 Patent is available for IPR and Kerr is not barred
`
`or estopped from requesting inter partes review of any of the challenged claims on
`
`the identified grounds.
`
`III. FEES (37 C.F.R. § 42.103)
`Kerr requests review of seventeen (17) claims. The undersigned authorizes
`
`the Commissioner to charge the fee specified by 37 C.F.R. § 42.15(a) to Deposit
`
`Acct. No. 603139, referencing attorney docket number 147-104. Any additional fees
`
`which may be required or credits for overpayment may be deducted or added to the
`
`same account.
`
`1
`
`

`

`Petition for Inter Partes Review
`
`
`
`IV. THE ’659 Patent
`A. EFFECTIVE FILING DATE
`
`Pat. No. 9,879,659
`
`
`The ’659 Patent is entitled to an effective filing date no earlier than July 25,
`
`2014, the filing date of the earliest provisional application to which it claims priority,
`
`and is therefore subject to the first inventor-to-file amendments of the AIA. Ex-1001
`
`at 2; Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29, § 3(n)(1) 125
`
`Stat. 284 (2011) (codified as amended in 35 U.S.C.).
`
`B.
`
`TECHNOLOGICAL BACKGROUND
`
`The ‘659 Patent is directed toward a reciprocal pump housing and skid for
`
`supporting the housing. The basic operation of reciprocating pumps and the design
`
`of their housings and skids before July 25, 2014 are discussed below.
`
`Basics of Reciprocating Pumps
`1.
`A reciprocating pump is generally understood as any machine using
`
`reciprocating motion to cause fluid to be moved from one location to another. Ex-
`
`1002 ¶ 46. Reciprocating pumps are a form of positive displacement pumps. Id.
`
`These pumps encase a fixed fluid volume in a rigid enclosure and displace a
`
`cylindrical volumetric portion of it via a plunger (also referred to as a piston). Id.
`
`Such pumps have long been used to meet high pressure pumping requirements. For
`
`example, these pumps are often used as drilling or “mud pumps,” which are used to
`
`circulate drilling fluids and cuttings (drilling mud) during drilling of oil or gas wells.
`
`See, e.g., Ex-1015, 1:15-22. They are also used in hydraulic fracturing, which
`
`2
`
`

`

`Petition for Inter Partes Review
`
`Pat. No. 9,879,659
`
`involves pumping fluid at high pressures to create fractures in hydrocarbon-bearing
`
`
`
`formations. See Ex-1016 ¶ 2; Ex-1002 ¶ 46.
`
`These pumps have two primary sections. The “fluid end” receives relatively
`
`low pressure fluid and, via a number of plungers, pressurizes the fluid to a relatively
`
`higher pressure. Ex-1016 ¶ 2. The plungers are driven by a crankshaft in the “power
`
`end” which is attached to a power source or prime mover, such as a diesel engine or
`
`electric motor. See id. In the figure below, the fluid end (116) includes everything in
`
`the purple housing, and the power end (100) includes everything in the green
`
`housing. Id. ¶ 20; Ex-1002 ¶ 47.
`
`
`
`
`
`The power end includes crankshaft 134 (orange) coupled to piston/plunger
`
`
`
`146 (blue) via connecting rod 144 (pink). Ex-1016 ¶ 20. The engine (not shown)
`
`3
`
`

`

`Petition for Inter Partes Review
`
`Pat. No. 9,879,659
`
`rotates the crankshaft, causing the piston to reciprocate between a suction stroke
`
`
`
`away from the fluid end and a power stroke toward the fluid end, as indicated by the
`
`dashed red arrow. Ex-1002 ¶ 48. This causes fluid to be drawn into the fluid end via
`
`an inlet and out of the fluid end via an outlet, as indicated by the blue arrow. Id.; Ex-
`
`1016 ¶ 20.
`
`When the plunger moves back on the suction stroke, suction valve 154 opens
`
`and fluid is drawn from suction inlet 166 into passage 158. Ex-1016 ¶ 20. The suction
`
`valve closes at the end of the stroke. Id. The plunger re-enters the chamber on its
`
`forward power stroke, forcing the fixed volume of fluid in passage 158 through the
`
`output valve 156. Id.; Ex-1002 ¶ 49.
`
`2. High-Pressure Pump Assemblies
`It was common for reciprocating pumps to use multiple plungers and
`
`corresponding fluid end assemblies. Such pumps are generally referred to as
`
`“multiplex” pumps, such as “triplex” (three plungers) and “quintuplex” (five
`
`plungers) pumps. Ex-1017, 3:28-38; Ex-1002 ¶ 50.
`
`An example of a “triplex” pump assembly is depicted below, having a set of
`
`three cylinders 16 in respective plunger bores. Ex-1017, 4:43-64. It has a power end
`
`13 (green) with three plungers and a fluid end 15 (purple) having three corresponding
`
`plunger bores. Id. A single crankshaft reciprocates all three plungers, causing fluid
`
`in the suction manifold 19 to be drawn into the suction inlet (not depicted) of each
`
`4
`
`

`

`Petition for Inter Partes Review
`
`Pat. No. 9,879,659
`
`fluid assembly and pumped out of discharge outlet 21. See id., 5:2-11; Ex-1002 ¶ 51.
`
`
`
`
`
`3.
`
`
`Power End Crankshaft Bearing Journals and Support
`Components
`U.S. Patent Application Publication No. 2014/0196570 to Small et al. (Ex-
`
`
`
`1018, “Small”) describes an arrangement of certain components representative of
`
`typical multiplex power ends. Ex-1002 ¶ 52. Small discloses a triplex pump having
`
`crankshaft 300 and four main bearing journals 302. The main bearing journals have
`
`a bearing face 304 upon which roller bearings 602 are installed. Ex-1018 ¶¶ 26, 32,
`
`Fig. 6 (reproduced below). The roller bearings feature an inner bearing race that
`
`contacts the main bearing journal face 304. Id. ¶ 32; Ex-1002 ¶ 53.
`
`
`
`5
`
`

`

`Petition for Inter Partes Review
`
`
`
`Pat. No. 9,879,659
`
`
`
`
`The crankshaft 300 is located inside pump housing 702. Id. ¶ 33, Fig. 7
`
`
`
`(reproduced below). The main bearings 602 which roll within outer bearing races
`
`706, which are mounted within bores through the main bearing webs 704 (green).
`
`Id.; Ex-1002 ¶ 54. The webs of the ’659 Patent are referred to therein as “plate
`
`segments” or simply “segments” and differentiated as to whether they are “end
`
`[plate] segments” or “middle [plate] segments.” See, e.g., Ex-1001, 3:47-60
`
`(referencing Figures 14-20), 9:55-62. The claims simply refer to them as “plates.”
`
`Id., 21:37-22:59.
`
`6
`
`

`

`Petition for Inter Partes Review
`
`
`
`Pat. No. 9,879,659
`
`
`
`The webs provide positional support for the crankshaft and help dissipate the
`
`tremendous force and vibration generated within and by the frac pump during
`
`operation. Ex-1018 ¶ 33. The bearing face 304 supports the forces exhibited on the
`
`crankshaft by the reciprocating connecting rod/piston/plunger arrangement by
`
`transferring the compressive forces encountered from the rod bearing journal 308,
`
`through the main bearing journal bearing face 304, the roller bearings 602, the outer
`
`bearing races 706, into the support webs 704, and ultimately to the power end
`
`housing where the forces are dissipated. Id.; Ex-1002 ¶ 55.
`
`It was common for multiplex pumps to have supports of some type to support
`
`the crankshaft and its bearings. Ex-1002 ¶ 56. For example, before the effective
`
`filing date, Kerr sold the QWS1000S fracturing pump. As shown below, the power
`
`7
`
`

`

`Petition for Inter Partes Review
`
`Pat. No. 9,879,659
`
`end housing includes such supports, comprising circular end and middle “plates” as
`
`
`
`shown.1 The crankshaft would extend through and be supported by such
`
`components, as was common practice at the time. Id.
`
`
`
`
`
`Pump Skids and Structural Elements
`4.
`It is common to mount machinery such as pumps and motors to “skids” for
`
`transport and/or ease of placement. See, e.g., Ex-1017, 1:26-29, 4:67-5:2; Ex-1022,
`
`6:45-57; Ex-1002 ¶ 57. “Skid” is simply a term used to refer to the framework used
`
`
`1 Available at https://www.youtube.com/watch?v=678NKpSpL9I as of April 18,
`
`2014.
`
`8
`
`

`

`Petition for Inter Partes Review
`
`
`
`Pat. No. 9,879,659
`
`
`to support such machines. Ex-1023, 1:19-21; Ex-1002 ¶ 57.
`
`Many applications require transportation of pumps to various locations. Ex-
`
`1002 ¶ 58. For example, for fracturing operations a pump truck typically needs to
`
`fracture wells at different well sites. Id. The power end housings of these pumps are
`
`designed to be mounted to a skid for transport to or from a wellsite (e.g., by truck).
`
`Ex-1017, 1:26-29.
`
`Skids typically have a frame formed from multiple, intersecting beams or
`
`tubulars for mounting very heavy machinery, such as the pump assemblies discussed
`
`above. Ex-1002 ¶ 59. Reciprocating pumps have been mounted to such skids for
`
`transport for many decades. Id.
`
`For example U.S. Patent 4,553,298 (Ex-1022) discloses a power end housing
`
`that is integral with a support skid. In reference to Figure 2, the skid “is constructed
`
`in accordance with oilfield equipment practices” and includes parallel beams 102
`
`and 104 (green) that are interconnected at their opposite ends by transverse steel
`
`tubular sections 106 and 108 (red). Ex-1022, 6:45-57; Ex-1002 ¶ 60. The beams 102
`
`and 104 can be I or H beams. Id.
`
`
`
`9
`
`

`

`Petition for Inter Partes Review
`
`
`
`Pat. No. 9,879,659
`
`
`U.S. Patent 4,341,508 (Ex-1004) also discloses a skid assembly for multiple
`
`
`
`reciprocating pumps. Ex-1004, 1:42-54, 3:8-14, 6:53-60, Fig. 4; Ex-1002 ¶ 61. The
`
`skid includes parallel “I-beam type structural elements”—longitudinal members 120
`
`and 122 and transverse members 124. Id., 9:27-33, Figs. 9, 10. These skid segments
`
`connect together using bolt flanges and locking elements. Id., 9:33-47.
`
`
`
`10
`
`

`

`Petition for Inter Partes Review
`
`
`
`Pat. No. 9,879,659
`
`
`
`
`Skids are typically comprised of at least two longer longitudinal or side
`
`
`
`members, and any number of transverse members. Ex-1002 ¶ 62. The particular
`
`arrangement and number of longitudinal members and transverse members is a
`
`design choice based on the desired orientation and load of the equipment mounted
`
`thereon. Id. The primary prerequisite in the skid design is that the skid adequately
`
`support the mounted equipment while performing its intended function of providing
`
`a stable base for transportation and operation. Id.; see also, e.g., Ex-1030 at 21
`
`(explaining that a skid must be of sufficient strength, size, and design to prevent the
`
`equipment from flexing and free of strain).
`
`For example, the skid of Exhibit 1022 referenced above is oriented such that
`
`its two longitudinal or side members 102 and 104 are perpendicular to its crankshaft
`
`20 and parallel to the power end’s bearing support plate members 50,52, 54, and 56.
`
`Ex-1022, 4:56-62, 5:24-34, Fig. 2; Ex-1002 ¶ 63.
`
`11
`
`

`

`Petition for Inter Partes Review
`
`
`
`Pat. No. 9,879,659
`
`
`
`
`In Exhibit 1004, when considering the overall skid base of Fig. 9, the
`
`
`
`longitudinal members 120 are parallel to the driveshafts 60, 68, 90 (which turn the
`
`pump crankshafts and are in alignment with them), and are thus perpendicular to the
`
`bearing support webs or plates. Ex-1004, 6:53-60, 7:41-55, Figs. 1, 9. Fig. 1 is
`
`reproduced below with the underlying skid base of Figure 9 imposed for reference.
`
`Ex-1002 ¶ 64; Ex-1004, Figs. 1, 9 (members 120 and 122 in rose, members 124 in
`
`turquoise). When considering the individual pump skid modules, the longitudinal
`
`members are actually the members 124, which run perpendicular to the shafts and
`
`thus parallel to the bearing support members. See, e.g. Ex-1004, 5:3-6, Fig. 4
`
`(showing side elevation view of skid for pumps); Ex-1002 ¶ 64. In the overall skid
`
`design, the designer also included a third, shorter longitudinal segment 122 between
`
`skid modules A and B to support the engines mounted on those modules. Ex-1002 ¶
`
`12
`
`

`

`Petition for Inter Partes Review
`
`
`
`Pat. No. 9,879,659
`
`
`64.
`
`
`Skid design for machinery (including motors and pumps) must also balance
`
`stiffness, mass, and cost. Ex-1028 at 2; Ex-1002 ¶ 65. High stiffness will help avoid
`
`alignment problems due to skid deflection during transportation and installation. Ex-
`
`1028 at 2. Optimizing a skid design often focuses on limiting vibration of the skid
`
`members, in order to limit vibration of the equipment and piping that is attached to
`
`it. Ex-1028 at 4. If a skid member has inadequate stiffness, it may have high
`
`vibrations, resulting in high vibrations for the attached components. Id.; Ex-1002 ¶
`
`65.
`
`As noted above, machinery skids are usually constructed from so-called “I
`
`beams” or “H beams” or similar components. Ex-1002 ¶ 66. These terms generically
`
`reference types of structural steel members having an “H” or “I” shape. Modern
`
`13
`
`

`

`Petition for Inter Partes Review
`
`Pat. No. 9,879,659
`
`construction references typically refer to four types: W-shapes, M-shapes, S-shapes,
`
`
`
`and HP-shapes. Ex-1026 at 4. These types all have a similar shape but vary with
`
`respect to certain dimensions, such as the thicknesses of the web (the vertical
`
`member) and the flanges (the horizontal members).
`
`
`See, e.g. Ex-1026 at 11-17 (tables providing dimensions for different shapes); Ex-
`
`
`
`1002 ¶ 66. Another difference in shape is the flange slope. Ex-1002 ¶ 66. A W-shape
`
`has essentially parallel inner and outer flange surfaces, while an S-shape (also known
`
`as an American standard beam) has a slope of approximately 162/3 percent on the
`
`inner flange surfaces. Ex-1026 at 4.
`
`A structural channel is another type of steel member which differs from the
`
`foregoing members in that it has flanges only on one side, as shown below:
`
`14
`
`

`

`Petition for Inter Partes Review
`
`
`
`Pat. No. 9,879,659
`
`
`
`
`
`Ex-1002 ¶ 67. One type of channel is a “C-shape”, also known as an American
`
`
`
`standard channel. Ex-1026 at 5. C-shapes, like S-shapes, have a approximate 162/3
`
`percent slope on the inner flange surfaces. Id.; see also id. at 19-20 (table providing
`
`C shapes dimensions and properties).
`
`It was well known that such channels and beams have various limitations
`
`depending on how they are loaded. See, e.g., Ex-1006, 1:5-17; Ex-1002 ¶ 68. To
`
`address such issues, “stiffeners”—structural elements such as angles or plates—were
`
`attached to the member to distribute the load, transfer shear, and prevent buckling.
`
`Ex-1026 at 25. A “transverse stiffener” is a type of web stiffener: “a web stiffener
`
`oriented perpendicular to the flanges, attached to the web.” Id. at 27; see also id. at
`
`23-24. Web stiffeners can be single plates, channels, angles, or troughs which are
`
`connected to one or both flanges. See, e.g., id. at 24; Ex-1006 at 2:34-41, Figs. 1a-
`
`1e, 2; Ex-1002 ¶ 68. Various types of web stiffeners were known, including diagonal
`
`web stiffeners and combinations. See generally Ex-1027; id. at 8.
`
`15
`
`

`

`Petition for Inter Partes Review
`
`
`
`Pat. No. 9,879,659
`
`
`
`
`The use of such web stiffeners in the design of machinery supports, including
`
`
`
`pump and compressor skids, was also well known. See, e.g., Ex-1028 at 6, Fig. 4
`
`(recommending use of a transverse web stiffener when the load is not in the plane of
`
`the web); Ex-1029 at 12, Fig. 23 (detailing design modifications including the
`
`addition of a triangular web stiffener); Ex-1002 ¶ 69.
`
`The more general term “gusset” can be used to refer to web stiffeners. See Ex-
`
`1028 at 6, Fig. 4 (referring to and depicting web stiffener as a gusset); Ex-1029 at
`
`12, Fig. 23 (same); Ex-1002 ¶ 70. The ’659 Patent uses “gusset” to refer to different
`
`structural components, all sharing the same general design and function of a
`
`connecting strut or plate used to “provide additional strength and stability” to the
`
`assembly. See Ex-1001 at 9:32-35 (referencing gussets 22 in Fig. 2B extending
`
`between end and middle plate segments 42, 44, 46); 16:53-58 (referencing gussets
`
`620 in Figures 51-54); 18:21-31 (referencing gussets 540 in Figure 57 that are
`
`16
`
`

`

`Petition for Inter Partes Review
`
`Pat. No. 9,879,659
`
`secured to skid segments 504, 506, 508 “to increase the stiffness of the skid 500 to
`
`
`
`resist bending and torsional loading”); 19:17-32 (referencing vertical gussets 840
`
`and “angularly disposed” gussets 842 in Figures 58-59 which “provide additional
`
`support and rigidity to the skid 800”). A POSITA would understand the gussets
`
`described for use in the skid segments to be web stiffeners because they have the
`
`same shapes, construction, and attachments as prior art web stiffeners. Cf. Ex-1001,
`
`18:21-31 (gussets 540) and 19:17-32 (gussets 840, 842) with, e.g., Ex-1006, 2:49-
`
`3:9, Fig. 1a-1e, 2; Ex-1027 at 8, Fig. 6; Ex-1002 ¶ 70. Moreover, both the skid
`
`“gussets” of the ’659 Patent and prior art web stiffeners are provided to increase
`
`torsional rigidity and resist bending and buckling. See Ex-1006, 1:54-2:10; Ex-1001,
`
`18:21-25, 19:31-32; Ex-1002 ¶ 70.
`
`Pump Mounting and Shaft Alignment
`5.
`Of course, a machine such as a reciprocating pump must be properly secured
`
`or attached to its skid or base, for operation, transport, or both. Ex-1002 ¶ 71. A
`
`common mounting arrangement for power ends involves one or more “feet” under
`
`the power end to support and attach the power end to the transport platform. Id.
`
`Several examples are discussed below.
`
`In the first example, the power end housing has a pair of feet (orange) attached
`
`to the front and back corner of each end segment or web (green). See Ex-1019, Figs.
`
`1, 2A; Ex-1002 ¶ 72. A hole for attaching (e.g., bolting) the power end to a transport
`
`17
`
`

`

`Petition for Inter Partes Review
`
`Pat. No. 9,879,659
`
`platform, such as a skid or trailer, is apparent in the perspective view. Ex-1002 ¶ 72.
`
`
`
`
`
`
`
`
`
`
`18
`
`

`

`Petition for Inter Partes Review
`
`Pat. No. 9,879,659
`
`Another similar example is depicted below, showing feet at the power end
`
`
`
`corners. Ex-1020, Fig. 3; Ex-1002 ¶ 73.
`
`In the example below, there are at least two feet having multiple bolts
`
`attaching the power end to a skid. See Ex-1021 Fig. 1; Ex-1002 ¶ 74.
`
`
`
`19
`
`

`

`Petition for Inter Partes Review
`
`
`
`Pat. No. 9,879,659
`
`
`
`
`In multiplex pumps, it was also known to place the feet underneath each end
`
`
`
`and middle web (or plate segment) of the power end. Ex-1002 ¶ 75. Such an
`
`arrangement is shown in the image below of a Gardner Denver Maverick drilling
`
`pump power end. Id. There, the feet (circled in red) are bolted to the support skid.
`
`See Ex-1007 at 27 (https://youtu.be/OQl62MDDmeY); Ex-1002 ¶ 75.
`
`
`
`20
`
`

`

`Petition for Inter Partes Review
`
`
`
`Pat. No. 9,879,659
`
`
`
`
`When mounting a reciprocating pump and its prime mover (motor or engine)
`
`
`
`on a skid, it is important that the prime mover’s rotating output shaft be in alignment
`
`with the power end’s drive shaft. Ex-1002 ¶ 76. This is simply called “shaft
`
`alignment.” See, e.g., Ex-1012 at 5 (“Shaft alignment is the positioning of the
`
`rotational centers of two or more shafts so that the shafts are co-linear when the
`
`machines are operating.”). Shaft alignment increases the operating life span of
`
`rotating machinery and increases motor efficiency. Id. Misalignment can cause
`
`excessive vibration; high temperature in casing, bearings, or lubricant; loose, broken
`
`or missing coupling bolts or foundation bolts; cracks in shafts; and excessive
`
`amounts of lubricant leakage. Id. Misalignment can be angular or offset. Id. There
`
`21
`
`

`

`Petition for Inter Partes Review
`
`Pat. No. 9,879,659
`
`are four different alignment parameters that must be measured and corrected:
`
`
`
`vertical angularity, vertical offset, horizontal angularity, and horizontal offset. Id.;
`
`Ex-1002 ¶ 76.
`
`To achieve the precise height control necessary for axial alignment when
`
`mounting two units such as a motor and pump, it has long been known to provide
`
`pads corresponding to the legs or feet of the units. See, e.g., Ex-1005, 3:26-34; Ex-
`
`1024, 1:11-19; Ex-1002 ¶ 77. These mounting pads are precisely machined to help
`
`ensure proper alignment between the shafts. Ex-1025, 1:27-34; Ex-1002 ¶ 77.
`
`Vertically aligning the shafts often requires machining the pads of the pump to a
`
`different plane than the pads of the motor. Ex-1024, 1:19-29. This is because the
`
`distance between the feet and the shaft of the motor may be different than the
`
`distance between the feet and shaft of the pump. Id. The pads include threaded holes
`
`machined to accept mounting bolts that secure the pump and motor to the base. Ex-
`
`1025, 1:27-34; Ex-1002 ¶ 77.
`
`In order to align the shafts, typically one of the machines is fixed in position
`
`while the second is moved into approximate alignment in preparation for
`
`measurements that will determine the magnitude and direction of moves required to
`
`put it into final alignment with the fixed machine. Ex-1012 at 6. It is the movable
`
`machine whose shaft will be aligned with the shaft of the fixed machine. Id. The
`
`position of the movable machine is adjusted vertically by adding and/or removing
`
`22
`
`

`

`Petition for Inter Partes Review
`
`Pat. No. 9,879,659
`
`shims from under its feet, and horizontally by making small lateral moves as required
`
`
`
`until satisfactory alignment is obtained. Id.; Ex-1002 ¶ 78.
`
`C. CLAIM CONSTRUCTION
`
`Claim construction is governed by 37 C.F.R. § 42.100(b). Kerr does not
`
`believe any terms needs to be construed to resolve the prior art issues presented in
`
`this Petition. Kerr reserves the right to respond to any purported claim construction
`
`issues identified by SPM in this proceeding or to raise and respond to claim
`
`construction issues that may be relevant in related litigation.
`
`V. CHALLENGE AND RELIEF REQUESTED (37 C.F.R. § 42.104(B))
`§ 42.104(b)(1),(b)(2) Statement of Requested Relief
`A.
`
`Kerr requests institution of trial and cancellation of claims 1-8, 10-15, 17-18,
`
`and 20 of the ’659 Patent in view of Grounds 1-2 below. A brief explanation of the
`
`reason for each Ground is provided below. Because the earliest possible priority date
`
`of the ’659 Patent is July 25, 2014, all references are prior art under post-AIA §
`
`102(a)(1).
`
`Ground 1: Claims 1-8, 11-15, 18, and 20 were obvious under 35 U.S.C. § 103
`
`over Maverick (Ex-1003) in view of Rambin (Ex-1004), further in view of Marran
`
`(Ex-1005). Maverick discloses a skid-mountable reciprocating pump having a power
`
`end assembly with end plates and multiple middle plates, with a pair of feet attached
`
`to each plate. Rambin discloses a modular skid base for supporting reciprocating
`
`23
`
`

`

`Petition for Inter Partes Review
`
`Pat. No. 9,879,659
`
`pumps such as Maverick’s. Marran discloses pads for mounting a pump to a base
`
`
`
`such as in Rambin. It was obvious to mount the feet of Maverick’s pump to a skid
`
`such as in Rambin using Marran’s pads.
`
`Ground 2: Claims 10 and 17 were obvious under § 103 over Maverick in
`
`view of Rambin, further in view of Marran, further in view of Ojalvo (Ex-1006).
`
`Ojalvo suggests the use of web stiffeners or “gussets” to stiffen structural steel
`
`members such as skid segments. It was obvious to mount the feet of Maverick’s
`
`pump to a skid as suggested by Rambin, modified with web stiffeners or gussets as
`
`suggested by Ojalvo, using Marran’s pads.
`
`B.
`
`§ 42.104(b)(4): Unpatentability
`
`Claims 1-8, 10-15, 17-18, and 20 are unpatentable as detailed in Sections IV.-
`
`VII.
`
`C.
`
`§ 42.104(b)(5): Supporting Evidence
`
`