us to. 0V
`Trials
`571-272-7822
`
`Paper 45
`Entered: August 29, 2017
`
`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 IPR2016-00656
`
`Patent 8,657,009 B2
`
`Before SCOTT A. DANIELS, NEIL T. POWELL, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`
`35 US. C. § 318(a) and 37 CFR. § 42. 73
`
`
`Trials
`571-272-7822
`
`Paper 45
`Entered: August 29, 2017
`
`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 IPR2016-00656
`
`Patent 8,657,009 B2
`
`Before SCOTT A. DANIELS, NEIL T. POWELL, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`
`35 US. C. § 318(a) and 37 CFR. § 42. 73
`
`
`
`IPR2016-00656
`
`Patent 8,657,009 B2
`
`1. INTRODUCTION
`
`Petitioner filed a Petition challenging claims 1—13 of US. Patent
`
`8,657,009 B2 (“the ’009 patent”). Paper 1 (“Pet”). Patent Owner filed a
`
`Preliminary Response. Paper 7 (“Prelim ReSp.”). On September 1, 2016,
`
`we instituted inter partes review with an Institution Decision. Paper 9 (Inst.
`
`Dec.). Subsequently, Patent Owner filed a Patent Owner Response (Paper
`
`25, “PO Resp”), and Petitioner filed a Reply (Paper 30, “Reply”).
`
`We have jurisdiction over these proceedings 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—
`
`13 of the ’009 patent are unpatentable. See 35 U.S.C. § 316(e). We issue
`
`this Final Written Decision pursuant to 35 U.S.C. § 318(a).
`
`II. BACKGROUND
`
`A.
`
`The ’009 Patent
`
`The ’009 patent describes a method and apparatus for selective control
`
`of flow to a wellbore for fluid treatment. Ex. 1001, 1:21—24. Typically, a
`
`tubing string is run into a wellbore as a conduit for oil and gas products to
`
`flow to the surface. Id. at 1:28—48. But when natural formation pressure is
`
`insufficient, a well “stimulation” technique is employed, which involves
`
`injecting fracturing fluids into the formation surrounding the wellbore to
`
`enlarge existing channels and thereby improve inflow into the wellbore. Id.
`
`at 1:35—39. To inject fluid into the formation, a tubing string disposed in the
`
`wellbore may have ports that discharge treatment fluid into the wellbore.
`
`See id. at 1:57—64.
`
`The ’009 patent shows an apparatus for wellbore fluid treatment in
`
`Figure 6, reproduced below.
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`
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`IPR2016-00656
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`Patent 8,657,009 B2
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`317a'
`
`
`
`
`314 329 325 353a350 317b’353b
`
`
`324
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`
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`FIG. 6
`
`Figure 6 shows tubing string 314, which has normally closed ports 317a,
`
`317a’, 317b, 317b’. Id. at 9:45—48. Port-closing sleeve 325 is covering
`
`ports 317a, 317a’. Id. at 9:59—60. Port-closing sleeve 325b is covering ports
`
`317b, 317b’. Id. at 9:60—61. In this state, port-closing sleeves 325, 325b
`
`seal against fluid flow through ports 317a, 317a’, 317b, 317b’. Id. at 9:59—
`
`63.
`
`Sleeve 322 is initially mounted inside tubing string 314 by shear 350.
`
`Id. at 9:54—55. ‘When plug 324 seats inside sleeve 322, fluid pressure can
`
`cause shear 350 to shear, allowing sleeve 322 to be driven along tubing
`
`string 314. Id. at 9:55—58. Sleeve 322 includes outwardly biased dogs 351.
`
`Id. at 10:21—22. As sleeve 322 travels along tubing string 314, it engages
`
`and moves port-closing sleeves 325, 325b. Id. at 10:17—20. Specifically,
`
`when sleeve 322 travels through tubing string 314, sleeve 322 and its dogs
`
`351 engage sleeve 325 and move it away from ports 317a, 317a’. See id. at
`
`10:17—31. Then, continued application of pressure causes dogs 351 to
`
`collapse, allowing sleeve 322 to move out of engagement with port-closing
`
`sleeve 325 and on to port-closing sleeve 325b. See id. at 10:31—38.
`
`
`
`IPR2016-00656
`
`Patent 8,657,009 B2
`
`B.
`
`The Related District Court Action
`
`The ’009 patent is involved in a concurrent district court action, Rapid
`
`Completions LLC v. Baker Hughes Incorporated, No. 6: 1 5-cv-00724 (ED.
`
`Tex.), which was filed July 31, 2015. Paper 5.
`
`C.
`
`The Challenged Claims
`
`Of the challenged claims, claims 1—5, 9, 10, and 13 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 and a wall defining an inner
`bore and an outer surface of the tubing string; and
`
`a plurality of sleeve closures accessible in the inner bore of the tubing
`string, each of the plurality of sleeve closures being actuatable by a
`first plug moveable through the tubing sting, each of the plurality of
`sleeve closures being actuatable from a covering position over a port
`through the wall to an open position exposing the port, the covering
`position preventing fluid communication through h port between the
`inner bore and the outer surface and the open position permitting fluid
`communication through the port between the inner bore and the outer
`surface, and each of the plurality of sleeve closures in the open
`position allowing the first plug to pass therethrough, wherein the first
`plug comprises a ball.
`
`Ex. 1001, 11:33—49.
`
`D.
`
`The Pending Grounds
`
`The pending grounds in this inter partes review are (Inst. Dec. 30):
`
`
`
`
`
`
`
`1—13
`
`1 U.S. Patent No. 7,108,067 B2, iss. Sept. 19, 2006 (“Themig”) (Ex. 1002).
`2 U.S. Patent No. 8,215,411 B2, iss. July 10, 2012 (“Flores”) (Ex. 1003).
`
`4
`
`
`
`IPR2016-00656
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`Patent 8,657,009 B2
`
`
`
`
`
`
`
`
`
`
`As further support, Petitioner proffers Declarations of Ali Daneshy,
`
`
`
`
`
`
`
`Ph.D. (Exs. 1006, 1024). Patent Owner relies on a Declaration of Harold E.
`
`McGowen, 111 (EX. 2006).
`
`III. ANALYSIS
`
`A.
`
`Claim Construction
`
`We interpret claims of an unexpired patent using the broadest
`
`reasonable construction in light of the specification of the patent in which
`
`they appear. 37 C.F.R. § 42.100(b). We presume a claim term carries its
`
`“ordinary and customary meaning,” which is “the meaning that the term
`
`would have to a person of ordinary skill in the art in question” at the time of
`
`the invention. In re Translogic Tech, Inc, 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007) (citation and quotations omitted). This presumption, however, is
`
`rebutted when the patentee acts as his own lexicographer by giving the term
`
`a particular meaning in the specification with “reasonable clarity,
`
`deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`
`1994).
`
`3 U.S. Patent No. 6,006,838, iss. Dec. 28, 1999 (“Whiteley”) (Ex. 1012).
`4 U.S. Patent No. 5,375,662 iss. Dec. 27, 1994 (“Echols”) (Ex. 1004).
`5 D.W. Thomson et a1., Design and Installation ofa Cost Effective
`Completion System for Horizontal Chalk Wells Where Multiple Zones
`Require Acid Stimulation, SPE (Society for Petroleum Engineering) 37482
`(1997) (“Thomson”) (Ex. 1005).
`
`
`
`IPR2016-00656
`
`Patent 8,657,009 B2
`
`In the Petition, Petitioner proposed constructions for certain claim
`
`terms. Pet. 13—18. In its Preliminary Response, Patent Owner also proposed
`
`constructions for certain claim terms. Prelim. Resp. 7—13.
`
`In our Institution Decision, we determined that each of independent
`
`claims 1—5, 9, 10, and 13 requires an apparatus or method with a sleeve (or
`
`multiple sleeves) actuatable or opened by a plug, where the sleeve (or
`
`multiple sleeves) allows the plug to pass through the sleeve in the open
`
`position. Inst. Dec. 5-6. As we explained, each of independent claims 1—5
`
`recites “each of the plurality of sleeve closures being actuatable by a first
`
`plug moveable through the tubing string” and “each of the plurality of sleeve
`
`closures in the open position allowing the first plug to pass therethrough.”
`
`Claim 13 recites very similar language. The plain meaning of this language
`
`is that multiple sleeve closures are actuatable by a single plug, i.e., the “first
`
`plug,” and that those sleeve closures allow that plug to pass through them in
`
`the open position. Each of independent claims 9 and 10 recites “changing
`
`the first sliding sleeve to an open position .
`
`.
`
`. by engaging the first plug on
`
`the first sliding sleeve” and “passing the first plug through the first sliding
`
`sleeve in the open position to the second sliding sleeve.” The plain meaning
`
`of this language requires a single plug, i.e., “the first plug” to open a first
`
`sliding sleeve, as well as 1) engage on the first sliding sleeve and change it
`
`to the open position, and 2) pass through the first sliding sleeve in its open
`
`position to the second sliding sleeve.
`
`As we also explained in the Institution Decision, the plain meaning of
`
`the claims is consistent with the Specification. In the example disclosed in
`
`connection with Figure 6, sleeves 325 and 325b are actuatable by plug 324
`
`seated in sleeve 322; sleeve 325 in its open position allows plug 324 seated
`
`
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`IPR2016-00656
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`Patent 8,657,009 B2
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`in sleeve 322 to pass through sleeve 325 to sleeve 325b; and sleeve 325b in
`
`its open position also allows plug 324 seated in sleeve 322 to pass through.
`
`Ex. 1001, 9:55—58, 10:9—38.
`
`As we explained in the Institution Decision, no other claim
`
`constructions were necessary to determine whether to institute trial. Inst.
`
`Dec. 5. Subsequent to the Institution Decision, neither Patent Owner’s
`
`Response nor Petitioner’s Reply present claim-construction arguments. See
`
`PO Resp. 5—6; Reply 1—15. Accordingly, we maintain our interpretation of
`
`claims l—5, 9, 10, and 13 as requiring an apparatus or method with a sleeve
`
`(or multiple sleeves) actuatable or opened by a plug, where the sleeve (or
`
`multiple sleeves) allows the plug to pass through the sleeve in the open
`
`position. No further claim constructions are necessary to resolve the
`
`disputes presented by the parties.
`
`B.
`
`The Efi’ective Filing Date of the Challenged Claims
`
`The ’009 patent claims priority to a number of earlier applications,
`
`including US. Patent Application 12/830,412 (hereafter, “the
`
`’412 application”), US. Patent Application 12/208,463 (hereafter, “the
`
`’463 application”), US. Patent Application 11/403,957 (hereafter, “the
`
`’957 application”), US. Patent Application 10/604,807 (hereafter, “the
`
`’807 application”), and US. Patent Application 60/404,783.
`
`Petitioner argues that the claims of the ’009 patent are not entitled to a
`
`priority date earlier than the July 5, 2010 filing date of the ’412 application.
`
`Pet. 18—24. Petitioner asserts that the ’807 application does not provide
`
`written description support for the challenged claims. Id. at 22—24. Patent
`
`Owner argues that the claims are entitled to the August 19, 2003 filing date
`
`
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`IPR2016-00656
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`Patent 8,657,009 B2
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`of the ’807 application, which matured into US. Patent No. 7,108,067
`
`(hereafter, “the ’067 patent”). PO Resp. 12—21.
`
`Petitioner asserts that the embodiment shown in Figure 6 is the only
`
`disclosure in the ’009 patent that meets the challenged claims of the ’009
`
`patent. Pet. 11. Petitioner notes that this embodiment involves plug 324
`
`engaging sleeve 322 to move port-closing sleeves 325, 325b. Id. at 11—12.
`
`Petitioner refers to sleeve 322 as “port-opening sleeve 322.” Id. at 14. In
`
`the case of such an embodiment, where plug 324 engages sleeve 322 to
`
`move sleeves 325, 325b, Petitioner refers to the operation as “indirect
`
`actuation” of sleeves 325, 325b by plug 324. See id. at 1, 14—15. Petitioner
`
`indicates that, like the disclosure in the ’009 patent, the only disclosure in
`
`the ’807 application that meets the challenged claims is an embodiment that
`
`includes a port-opening sleeve. See id. at 21—22 (noting only “Port-Opening
`
`Sleeve Embodiment” disclosed in any application before the ’412
`
`application).6 Thus, Petitioner advances, the only disclosures in the
`
`’009 patent and the ’807 application that fall within the claims include a
`
`port-opening sleeve. Additionally, Petitioner notes that the original claims
`
`of the ’807 application all require a “port-opening sleeve.” Id. at 22
`
`(“[E]very claim ever filed in these earlier applications required a port-
`
`opening sleeve”).
`
`In contrast, Petitioner notes that none of the challenged claims of the
`
`’009 patent recites a port—opening sleeve. Id. at 21. Instead, Petitioner notes
`
`that the challenged claims all encompass systems with or without a port-
`
`6 Petitioner notes that the ’412 application discloses embodiments—the
`“Yieldable Ball and Seat Embodiments”——that meet the claims without a
`
`port-opening sleeve. Pet. 21—22.
`
`
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`IPR2016-00656
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`Patent 8,657,009 B2
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`opening sleeve. Id. Petitioner likens this case to [CU Medical Inc. v. Alaris
`
`Medical Sys., Inc, 558 F.3d 1368 (Fed. Cir. 2009). Pet. 18, 22—24. There,
`
`the specification of a patent describing only medical valves with spikes did
`
`not provide written description support for claims that did not recite the
`
`spike but encompassed medical valves with or without a spike. ICU
`
`Medical, 558 F.3d at 1378—1379. In other words, Petitioner asserts that, like
`
`the facts in ICU Medical, the narrow disclosure of a system with a port-
`
`opening sleeve in the ’807 application does not provide written description
`
`support for the broader claims of the ’009 patent, which encompass a system
`
`with or without a port-opening sleeve.
`
`Patent Owner disagrees, noting that even Petitioner acknowledges the
`
`challenged claims cover the Figure 6 embodiment, which is disclosed in
`
`both the ’009 patent and the ’807 application. PO Resp. 12. Patent Owner
`
`also contends that “[a]dditional written description support for the claims is
`
`provided by figures 1, 4, and 7 and the corresponding descriptions of those
`
`figures .
`
`.
`
`.
`
`, which describe the invention more generally.” Id. at 12, n2.
`
`Patent Owner further argues that “[t]he invention of the ’009 patent is
`
`not limited to the specific preferred embodiment of figure 6.” ‘PO Resp. 13.
`
`Patent Owner asserts that the ’009 patent associates the port-opening sleeve
`
`and its locking dogs with the function of catching a plug to open a sleeve
`
`closure, and subsequently releasing the plug to allow it actuate another
`
`sleeve closure. Id. at 15. Patent Owner asserts that a person of ordinary
`
`skill in the art would not think it critical to use any particular mechanism to
`
`catch or release the plug. Id. at 14. Instead, Patent Owner contends, a
`
`person of ordinary skill in the art would recognize the possibility of making
`
`various design changes without compromising the function. Id. at 13—14.
`
`
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`IPR2016-00656
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`Patent 8,657,009 B2
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`Patent Owner also argues that ICU Medical does not apply here.
`
`Id. at 16—20. Citing ICU Medical and Crown Packaging Tech., Inc. v. Ball
`
`Metal Beverage Container Corp. , 635 F.3d 1373, 1381 (Fed. Cir. 2011),
`
`Patent Owner elaborates that the court in ICU Medical rested its “decision
`
`on the unambiguous disclosure in the specification that a spike within the
`
`medical valve was necessary to the use of the claimed invention.” Id. at 16.
`
`Patent Owner argues Petitioner has not shown such a disclosure here. Id.
`
`Patent Owner adds that Petitioner’s reference to “indirectly” actuating sleeve
`
`closures fails “to identify any allegedly missing limitation that is analogous
`
`to the ‘spike’ limitation of ICU Medical.” Id. at 17—20.
`
`Patent Owner also indicates that the disclosure in the ’412 application
`
`has no bearing on the issue at hand—whether the ’807 application provides
`
`written description support for the challenged claims of the ’009 patent.
`
`Id. at 20—21. Patent Owner cites Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
`
`1566 (Fed. Cir. 1991) as support.
`
`The written description requirement of 35 U.S.C. § 112, first
`
`paragraph, requires that “the disclosure of the application relied upon
`
`reasonably convey[] to those skilled in the art that the inventor had
`
`possession of the claimed subject matter as of the filing date.” Ariad
`
`Pharm, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). One
`
`shows “possession” by descriptive means such as words, structures, figures,
`
`diagrams, and formulas that set forth fully the claimed invention. Lockwood
`
`v. American Airlines, Inc, 107 F.3d 1565, 1572 (Fed. Cir. 1997). It is not
`
`sufficient for purposes of the written description requirement that “the
`
`disclosure, when combined with the knowledge in the art, would lead one to
`
`speculate as to modifications that the inventor might have envisioned, but
`
`10
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`IPR2016-00656
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`Patent 8,657,009 B2
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`failed to disclose.” Id. “One shows that one is ‘in possession’ of the
`
`invention by describing the invention, with all its claimed limitations, not
`
`that which makes it obvious.” Id. “[T]he hallmark of written description is
`
`disclosure. .
`
`.
`
`. [T]he test requires an objective inquiry into the four corners
`
`of the specification from the perspective of a person of ordinary skill in the
`
`art.” Ariad, 598 F.3d at 1351. Also, the claimed invention does not have to
`
`be described in ipsis verbis in the specification to satisfy the written
`
`description requirement. Union Oil Co. ofCalifornia v. Atlantic Richfield
`
`Ca, 208 F.3d 989, 1000 (ch. Cir. 2000).
`
`Petitioner persuades us that the ’807 application does not provide
`
`written description support for the challenged claims of the ’009 patent.
`
`Aside from the Figure 6 embodiment of the ’009 patent and ’807
`
`application, no other disclosed embodiment falls within the scope of the
`
`challenged claims. As noted in our Institution Decision and in Section III.A
`
`above, each of the challenged claims requires an apparatus or method with a
`
`sleeve (or multiple sleeves) actuatable or opened by a plug, where the sleeve
`
`(or multiple sleeves) allows the plug to pass through the sleeve in the open
`
`position. Inst. Dec. 5—6. Aside from the Figure 6 embodiment, we do not
`
`find (and Patent Owner does not argue) that any of the other embodiments
`
`teaches a sleeve or sleeves that allow a plug to pass through in the open
`
`position of the sleeve or sleeves. In view of this, Petitioner persuades us that
`
`none of the disclosed embodiments other than Figure 6 of the ’807
`
`application could potentially provide written description support for the
`
`challenged claims of the ’009 patent.
`
`Petitioner also persuades us that the ’807 application does not provide
`
`written description support for claims that omit a port—opening sleeve.
`
`11
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`IPR2016-00656
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`Patent 8,657,009 B2
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`Although the Specifications of the ’009 patent and the ’807 patent do not use
`
`the word “necessary,” we are persuaded that, just as a person of ordinary
`
`skill in the art would have understood that the spike was necessary in [C U
`
`Medical, a person of ordinary skill in the art would have understood that the
`
`port opening sleeve (i.e., sleeve 322) is necessary here. See ICU Medical,
`
`558 F.3d at 1378; see also LizardTech. Inc. v. Earth Res. Mapping, Inc., 424
`
`F.3d 1336, 1344—45 (Fed. Cir. 2005) (The disclosure of only one way to
`
`create a seamless DWT—by maintaining updated sums—did not provide
`
`written description support for claims that did not recite maintaining updated
`
`sums.). As Petitioner explains, the original claims of the ’807 application all
`
`require a “port-opening sleeve,” as recited in independent claims 1 and 15.
`
`Ex. 1019, 39—42; Pet. 22. Similarly, the Abstract of the ’807 application
`
`describes a tubing string assembly that includes closures, in which “[t]he
`
`closures are openable by a sleeve drivable through the tubing string inner
`
`bore.” Ex. 1019, 43. These disclosures would have strongly suggested to a
`
`person of ordinary skill in the art that a port-opening sleeve was a necessary
`
`component in the invention. See ICU Medical, 558 F.3d at 1378 (noting
`
`claims omitting spike recitation not filed with original application, but added
`
`years later during prosecution).
`
`Consistent with this, Petitioner persuades us that the only way the
`
`’807 application teaches the claimed requirement of allowing a plug to open
`
`and then pass through a sleeve or sleeves is by using a port-opening sleeve,
`
`such as sleeve 322. Pet. 24; Reply 7. Petitioner argues that the Figure 6
`
`embodiment cannot function without the port-opening sleeve. Pet. 24.
`
`Petitioner explains that port-closure sleeves 325a, 325b “have an inner
`
`diameter that ‘is generally equal’ to the inner diameter of the tubing string,
`
`12
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`IPR2016—00656
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`Patent 8,657,009 B2
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`meaning that any ball or plug that can traverse the tubing string will—in the
`
`absence of an intermediate port-opening sleeve—necessarily also pass
`
`through the port-closure sleeves [without opening them].” Id. (citing Ex.
`
`1001, 1021—6, Fig. 6); see also Ex. 1019, 34 (Disclosing that “sleeve 325a is
`
`selected to have an inner diameter that is generally equal to the tubing string
`
`inner diameter.”).
`We find unpersuasive Patent Owner’s reliance on Crown Packaging.
`See PO Resp. 16. In Crown Packaging, the specification disclosed two ways
`
`to save metal in a can: 1) incrcasing the slope of the chuck wall on the can
`
`end, and 2) “limiting the width of the anti peaking bead” on the can end. Id.
`
`at 1375. The specification also discussed two ways of driving the can with a
`
`chuck engaged to the end of the can. The specification noted that in the
`
`prior art, cans had been driven with the chuck engaged inside the anti
`
`peaking bead. Id. at 1376, 1382. The specification also explained that the
`
`chuck could engage the can end outside of the peaking bead. Id. at 1376.
`
`The specification indicated that engaging the can outside the anti peaking
`
`bead would avoid damage to a narrowed anti peaking bead. Id. at 1377—
`
`1378. The independent claims did not recite a particular dimension for the
`
`anti peaking bead or engaging the chuck outside the anti peaking bead. Id.
`
`at 1378—1379. Thus, the claims covered a chuck engaged either inside or
`
`outside of the anti peaking bead. Id.
`
`Crown Packaging overturned the district court’s determination that
`
`the specification only provided written description support for a chuck
`
`driving the can outside of the anti peaking bead. Id. at 1379—1382. Noting
`
`that the specification disclosed two independent ways to save metal, the
`
`court held that the claims need not recite both of them. Id. at 1381. The
`
`13
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`IPR2016-00656
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`Patent 8,657,009 B2
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`court observed that Crown’s original claims clearly showed the applicants
`
`were claiming an increased slope of the chuck wall, without necessarily
`
`limiting the anti peaking bead or where the chuck engages the can. Id.
`
`Noting that the specification’s discussion of the prior art showed a chuck
`
`engaged inside an anti peaking bead, the court also observed that it was not
`
`necessary for the chuck to engage the can outside of the anti peaking bead.
`
`Id. at 1382.
`
`We find the facts of this case differ significantly from those in Crown
`
`Packaging. In contrast to Crown Packaging, the original claims of the ’807
`
`application strongly suggest that the applicants believed the port-opening
`
`sleeve to be a necessary component of the invention. Additionally, whereas
`
`Crown’s specification disclosed multiple ways to achieve metal savings and
`
`to engage a chuck to a can end, the ’807 application discloses only one way
`
`to achieve the function recited in the challenged claims— with a port-opening
`
`sleeve.
`
`We also find unpersuasive Patent Owner’s arguments that a person of
`
`ordinary skill in the art would have recognized the possibility of making
`
`various design changes. See PO Resp. 13—16. Patent Owner rests this
`
`argument on the testimony on page 12 of Mr. McGowen’s declaration,
`
`where he opines about various design changes that could be made. See id.
`
`We afford this particular testimony little weight because Mr. McGowen does
`
`not cite any underpinning evidence for his assertions about the possible
`
`variations. See Ex. 2006, 12; 37 C.F.R. § 42.65 (“Expert testimony that
`
`does not disclose the underlying facts or data on which the opinion is based
`
`is entitled to little or no weight”). We also note that this testimony
`
`discusses a number of possible variations, but does not discuss omitting the
`
`14
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`IPR2016-00656
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`Patent 8,657,009 B2
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`port-opening sleeve as a possible variation. See id. Thus, even if we credit
`
`Mr. McGowen’s testimony, it provides limited support for the proposition
`
`that the ’807 application demonstrates possession of a system without a port—
`
`opening sleeve. Moreover, as Petitioner notes, Mr. McGowen indicated the
`
`variations he discussed would have been “obvious,” which is not enough to
`
`establish written description support. See ICU Medical, 558 F.3d at 1378—
`
`1379.
`
`The ’957 application is a continuation of the ’807 application,
`
`containing the same disclosure as the ’807 application. See Ex. 1001, 1;
`Ex. 1018. Similarly, the ’463 application is a continuation of the ’957
`
`application, containing the same disclosure as the ’957 application and the
`
`’807 application. See Ex. 1001, 1; Ex. 1017. Accordingly, we are persuaded
`
`.
`
`that the ’957 application and the ’463 application also lack written
`
`description support for the challenged claims of the ’009 patent. Thus, we
`
`are persuaded that the effective filing date of the challenged claims of the
`
`’009 patent is not before the July 5, 2010 filing date of the ’412 application.
`
`C.
`
`Alleged Anticipation of Claims 1—13 by Themig
`
`Given its assertion that the challenged claims are not entitled to an
`
`effective filing date earlier than July 5, 2010, Petitioner asserts that Themig
`
`constitutes prior art to the challenged claims under 35 U.S.C. § 102(b). Pet.
`
`3. Petitioner asserts that Themig discloses all of the limitations of claims 1—
`
`13. Pet. 24—33.
`
`Themig discloses a tubing string in Figure 6, reproduced below.
`
`15
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`IPR2016-00656
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`Patent 8,657,009 B2
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`317a'
`
`329 325
`317b'
`
`324
`350
`314
`353a
`353b
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`Figure 6 of Themig shows tubing string 314, which includes moveable
`
`sleeve 322, as well as port-closing sleeves 325 and 325b. Ex. 1002, 9:44—
`
`60. In the state shown in Figure 6, port-closing sleeve 325 covers ports 317a
`
`and 317a’, and port-closing sleeve 325b covers ports 317b and 317b’.
`
`Id. at 9:58—60. With plug 324 seated in sleeve 322, fluid pressure can move
`
`sleeve 322 through tubing string 314. Id. at 9:53—57. As plug 324 and
`
`sleeve 322 move through tubing string 314, they move sleeve 325 to uncover
`
`ports 317a, 317a’, and plug 324 and sleeve 322 pass through sleeve 325 to
`
`sleeve 325b. Id. at 9:53—57, 10:16—37. Plug 324 and sleeve 322 then move
`
`sleeve 325b to uncover ports 317b, 317b’, and plug 324 and sleeve 322 pass
`
`through sleeve 325b. Id.
`
`Petitioner’s assertions and evidence persuade us that Themig
`
`anticipates each of claims 1—13. Pet. 24—33. Patent Owner’s sole argument
`
`that Themig does not anticipate claims 1—13 is that the claims are entitled to
`
`the filing date of the ’807 application, such that Themig is not prior art to
`
`claims 1—13. PO Resp. 21. For the reasons, explained above in Section
`
`III.B, we find this argument unpersuasive.
`
`16
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`IPR2016-00656
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`Patent 8,657,009 B2
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`D.
`
`Alleged Anticipation of Claims 1—13 by Flores
`
`Given its assertion that the challenged claims are not entitled to an
`
`effective filing date any earlier than July 5, 2010, Petitioner asserts that
`
`Flores constitutes prior art to the challenged claims under 35 U.S.C.
`
`§ 102(e). Pet. 3. In connection with annotated versions of Figures 5A and
`
`5B of Flores, depicted below, Petitioner discusses aspects of Flores’s
`
`disclosure that allegedly meet the limitations of the challenged claims.
`
`Pet. 33—35.
`
`17
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`
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`IPR2016-00656
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`Figures 5A and 5B of Flores show tubing string 12 with cluster sleeves 100
`
`and isolation sleeves 50. Ex. 1003, 4:42—46. A first zone A includes
`
`isolation sleeve 50A, cluster sleeve 100A-1, and cluster sleeve 100A—2. 1d.
`
`18
`
`
`
`
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`IPR2016-00656
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`Patent 8,657,009 B2
`
`at 4:51—53. At the stage shown in Figure 5A ball 130A has opened cluster
`
`sleeves 100A-1, 100A—2 and moved to isolation sleeve 50A. Id. at 4:60—63.
`
`Fluid can flow out ofports 106. Id. at 4:63—65.
`
`Petitioner’s assertions and evidence persuade us that Flores anticipates
`
`each of claims 1—13. Patent Owner’s sole argument that Flores does not
`
`anticipate claims 1—13 is that the claims are entitled to the filing date of the
`
`’807 application, such that Flores is not prior art to claims 1—13. PO
`
`Resp. 21. For the reasons, explained above in Section III.B, we find this
`
`argument unpersuasive.
`
`E.
`
`Alleged Obviousness of Claims 4, 8, 9, and 13 over Flores
`
`In addition to its assertion that these claims are anticipated by Flores,
`
`Petitioner asserts that certain limitations of these claims would have been
`
`obvious over Flores. Pet. 43—44. Because Petitioner persuades us that
`
`Flores anticipates these claims, we are persuaded that these claims would
`
`have been obvious over Flores. See In re McDaniel, 293 F.3d 1379, 1385
`
`(Fed. Cir. 2002) (“It is well settled that ‘anticipation is the epitome of
`
`obviousness’”).7 We also find persuasive Petitioner’s alternative reasons for
`
`asserting that certain limitations of claims 4, 8, 9, and 13 would have been
`obvious over Flores. See Pet. 43—44; Ex. 1006 1111 40, 66—67. Aside from
`
`asserting that Flores does not constitute prior art to the challenged claims,
`
`Patent Owner does not dispute Petitioner’s assertions that claims 4, 8, 9, and
`
`13 would have been obvious over Flores.
`
`7 We note the record does not contain evidence of objective indicia of
`nonobviousness.
`'
`
`19
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`IPR2016—00656
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`Patent 8,657,009 B2
`
`F.
`Whiteley
`
`Alleged Obviousness of Claims 4, 8, 9, and 13 over Flores and
`
`In addition to its assertion that these claims are anticipated by Flores,
`
`Petitioner asserts that certain limitations of these claims would have been
`
`obvious over Flores and Whiteley. Pet. 43—44. Because Petitioner
`
`persuades us that Flores anticipates these claims, we are persuaded that these
`
`claims would have been obvious over Flores and Whiteley. See In re
`McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (“It is well settled that
`
`‘anticipation is the epitome of obviousness’”).8 We also find persuasive
`
`Petitioner’s alternative reasons for asserting that certain limitations of claims
`
`4, 8, 9, and 13 would have been obvious over Flores and Whiteley. See Pet.
`
`43—44; Ex. 1006 111] 40, 66—67; Ex. 1012, 5:43—47. Aside from asserting that
`
`Flores does not constitute prior art to the challenged claims, Patent Owner
`
`does not dispute Petitioner’s assertions that claims 4, 8, 9, and 13 would
`
`have been obvious over Flores and Whiteley.
`
`G.
`
`Alleged Obviousness of Claims [—13 over Echols and Thomson
`
`Petitioner also asserts that claims 1—13 are unpatentable for
`
`obviousness over Echols and Thomson. Pet. 44—59. More specifically,
`
`Petitioner argues that Echols discloses a sliding sleeve arrangement allowing
`
`for one plug to actuate multiple sliding sleeves. Pet. 44—46. Petitioner
`
`discusses this in connection with annotated versions of Echols’s Figures 7
`
`and 8, depicted below. Id.
`
`8 We note the record does not contain evidence of objective indicia of
`nonobviousness.
`
`20
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`IPR2016-00656‘
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`Patent 8,657,009 132
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`
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`Excerpts of Figures 7 & 8
`(annotated)
`
`Figures 7 and 8 of Echols show set
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