UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`WEATHERFORD INTERNATIONAL, LLC
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`Petitioner,
`v.
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`BAKER HUGHES OILFIELD OPERATIONS, LLC
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`Patent Owner.
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`Case IPR2019-00708
`Patent RE46,137
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`PETITIONER’S REPLY TO PATENT OWNER’S
`RESPONSE TO PETITION FOR INTER PARTES REVIEW
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`WEATHERFORD INTERNATIONAL, LLC
`
`Petitioner,
`v.
`
`BAKER HUGHES OILFIELD OPERATIONS, LLC
`
`Patent Owner.
`
`Case IPR2019-00708
`Patent RE46,137
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`RESPONSE TO PETITION FOR INTER PARTES REVIEW
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00708
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`TABLE OF CONTENTS
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`Page No.
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`I.
`
`II.
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`INTRODUCTION .......................................................................................... 1
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`GROUND 1 – GIROUX’S PREFERRED EMBODIMENT
`ANTICIPATES CLAIM 1 ............................................................................. 1
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`III. GROUND 1 – GIROUX’S ALTERNATIVE EMBODIMENT
`ANTICIPATES CLAIMS 1, 16, 17, 31, 34, 41, AND 42 .............................. 5
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`A. Giroux Anticipates Claims 1 and 34 Under Either Construction ......... 5
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`B.
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`Giroux Anticipates Claims 16, 17, 31, 41, and 42 ............................... 9
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`1.
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`2.
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`Giroux Discloses Urging ............................................................ 9
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`Piston 110 Is the Same in Both of Giroux’s Embodiments ..... 14
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`IV. GROUND 2 – CLAIMS 1, 8-11, 16, 17, 31, 34, 41, AND 42 ARE
`OBVIOUS OVER GIROUX IN VIEW OF A POSITA’S
`KNOWLEDGE AND THE ADMITTED PRIOR ART .............................. 16
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`A. A POSITA Would Have Been Motivated to Use Giroux as a
`Toe Sleeve .......................................................................................... 17
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`B.
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`It Would Have Been Obvious to Add Biasing (If Necessary)
`To Giroux’s Sleeves ........................................................................... 21
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`1.
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`2.
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`A POSITA Was Aware of Urged Sleeves ............................... 21
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`A POSITA Was Concerned with Premature Actuation of
`Sliding Sleeves ......................................................................... 23
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`V. GROUND 3 – PO DOES NOT RESPOND ................................................. 26
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`VI. CONCLUSION ............................................................................................ 26
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`Patent No. RE46,137 - IPR2019-00708
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`TABLE OF AUTHORITIES
`
`Page No(s).
`
`3M Innovative Props. Co. v. Avery Dennison Corp.,
`350 F.3d 1365 (Fed. Cir. 2003) ....................................................................... 2, 3
`
`Amgen Inc. v. Hoechst Marion Roussel, Inc.,
`314 F.3d 1313 (Fed. Cir. 2003) ........................................................................... 8
`
`Applera Corp. v. Micromass UK Ltd.,
`186 F. Supp. 2d 487 (D. Del. 2002) .................................................................... 2
`
`In re Aslanian,
`590 F.2d 911 (C.C.P.A. 1979). .......................................................................... 10
`
`In re Baum,
`374 F.2d 1004 (C.C.P.A. 1967) ......................................................................... 10
`
`Ex parte Bjorn,
`2018-001567, 2019 WL 6173305 (P.T.A.B. Oct. 16, 2019) ............................. 12
`
`In re Daniel,
`34 F.2d 995 (C.C.P.A. 1929) ............................................................................. 14
`
`Ex parte Elder,
`2016-004536, 2018 WL 2318043 (P.T.A.B. May 14, 2018) ............................ 13
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`Free Motion Fitness, Inc. v. Cybex Int’l, Inc.,
`423 F.3d 1343 (Fed. Cir. 2005) ........................................................................... 2
`
`Genentech, Inc. v. Chiron Corp.,
`112 F.3d 495 (Fed. Cir. 1997) ............................................................................. 8
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`Hockerson-Halberstadt, Inc. v. Avia Group International,
`222 F.3d 951 (Fed. Cir. 2000) ..................................................................... 11, 12
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`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .................................................................................... 18, 19
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`TABLE OF AUTHORITIES
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`Page No(s).
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`Ex parte Nguyen,
`Appeal 2018-001801, 2018 WL 5821695 (P.T.A.B. Oct. 19, 2018) ................ 13
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`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ....................................................................... 2, 3
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`Plas-Pak Industries, Inc. v. Sulzer Mixpac AG,
`600 F. App’x 755 (Fed. Cir. 2015) .................................................................... 20
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`Presidio Components Inc. v. Am. Tech. Ceramics Corp.,
`IPR2015-01330, 2015 WL 9599180 (P.T.A.B. Dec. 3, 2015) .......................... 12
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`Ex parte Roth,
`Appeal 2010-009869, 2012 WL 359969 (B.P.A.I. Feb. 1, 2012) ............... 13, 14
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`Techtronic Industries Co. Ltd. v. International Trade Commission,
`944 F.3d 901 (Fed. Cir. 2019) ............................................................................. 3
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`Thorner v. Sony Comput. Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) ........................................................................... 3
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`Univ. of Maryland Biotech. Inst. v. Presens Precision Sensing GmbH,
`711 F. App’x 1007 (Fed. Cir. 2017) .................................................................. 20
`
`In re Wolfensperger,
`302 F.2d 950 (C.C.P.A. 1962) ........................................................................... 13
`
`Yeda Research v. Mylan Pharm. Inc.,
`906 F.3d 1031 (Fed. Cir. 2018) ......................................................................... 19
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`OTHER AUTHORITIES
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`37 C.F.R. § 42.65 ...................................................................................................... 8
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00708
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`INTRODUCTION
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`I.
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`The Petition showed that Giroux anticipates claims 1-2, 4-7, 12-25, 31-35,
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`and 41-44, and that Giroux in combination with a POSITA’s knowledge, the
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`admitted prior art, and/or Patel ’853 renders claims 1-44 obvious. In the face of
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`these assertions on February 19, 2020, Patent Owner (“PO”) disclaimed claims 2-7,
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`12-15, 18-30, 32, 33, 35-40, 43, and 44. Paper 19 at 1. That leaves only claims 1,
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`16, 17, 31, 34, 41, and 42 at issue in Ground 1 and claims 1, 8-11, 16, 17, 31, 34, 41,
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`and 42 at issue in Grounds 2 and 3. Notably, PO’s apparent concession that claims
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`2 and 35 are invalid necessarily means that independent claims 1 and 34 from which
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`2 and 35 depend, respectively, are also invalid.
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`II. GROUND 1 – GIROUX’S PREFERRED EMBODIMENT
`ANTICIPATES CLAIM 1
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`PO’s only argument that remaining claim 1 is not anticipated by Giroux’s
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`Preferred Embodiment is that the claim requires an initially-closed sleeve. PO
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`Response (Paper 16) (“Resp.”) 15. PO’s reasons for such a construction fail. Resp.
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`3-15.
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`First, PO claims that without a temporal limitation, “first” and “second”
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`would be superfluous because the two positions are already defined by other
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`characteristics. Resp. 4. That is false. Claim 1 uses “first” and “second” as
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`shorthand labels for closed and partially-open positions, just like claims 8 and 16.
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`“First” is therefore not superfluous, and there is no language in the claim supporting
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`a temporal limitation. Claim 1’s usage is no different than claim 6’s usage of “first”
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`and “second” to distinguish sides of a piston. EX1001 4:62-65. Like claim 6, claim
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`1’s use of “first” and “second” to distinguish the positions of the sleeve “is a common
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`patent-law convention to distinguish between repeated instances of an element or
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`limitation.” See Free Motion Fitness, Inc. v. Cybex Int’l, Inc., 423 F.3d 1343, 1348
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`(Fed. Cir. 2005) (reversing a construction of “first pivot point” as “the first
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`chronological point about which the arm turns”).
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`Second, PO’s reliance on a dictionary definition of “first” and its expert
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`quoting the same dictionary (EX2001 ¶23) is misplaced. Resp. 5-6. PO’s assertion
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`that the definition requires imposition of a sequential time or order contradicts Free
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`Motion Fitness. 423 F.3d at 1348; see also 3M Innovative Props. Co. v. Avery
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`Dennison Corp., 350 F.3d 1365, 1371 (Fed. Cir. 2003); Applera Corp. v. Micromass
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`UK Ltd., 186 F. Supp. 2d 487, 505 (D. Del. 2002) (“Nowhere in the claims
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`themselves is it stated that ‘first’ must mean ‘preceding all other[s] in the path of ion
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`travel,’ as opposed to, for example, ‘preceding all others in importance.’”).
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`Moreover, extrinsic evidence, such as a dictionary or unsupported expert testimony,
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`is afforded less weight than claim language. Phillips v. AWH Corp., 415 F.3d 1303,
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`1318 (Fed. Cir. 2005).
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`Third, PO’s reliance on the preferred embodiment (Resp. 6-9) ignores
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`precedent against limiting claims to the preferred embodiment without any “clear
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`and unmistakable disclaimer” or definitional statement. See Thorner v. Sony
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`Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012); 3M Innovative
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`Props., 350 F.3d at 1372; see also Phillips, 415 F.3d at 1310, 1324-27. PO points
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`to no disclaimer or disavowal of initially-open sleeves, rendering its reliance on
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`Techtronic Industries Co. Ltd. v. International Trade Commission, 944 F.3d 901
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`(Fed. Cir. 2019), misplaced.
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`Finally, PO’s proposed interpretation of claim 20 defies the plain meaning of
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`the claim language. After PO spent three pages arguing that claim 1 must be limited
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`to being initially closed because of the preferred embodiment (Resp. 6-9), PO asserts
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`that “Petitioner’s/Mr. Chambers’s claim 20 argument fails because it’s grounded in
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`features of the preferred embodiment that aren’t recited in claim 20” (Resp. 10). PO
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`cannot have it both ways.
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`Both the Petition and Mr. Chambers relied upon the opposite configurations
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`recited in claims 15 and 20. Claim 15 recites that “movement of said sleeve toward
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`said second position reduces the volume of said closed chamber.” EX1001 5:27-28
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`(emphasis added); Pet. 23; EX1005 ¶79. Claim 20 depends from claim 19, which
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`recites a second chamber opposite the closed chamber. EX1001 5:52-56. Claim 20
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`then adds that “said second chamber … decreases in volume with movement of said
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`sleeve toward said second position.” Id. 5:58-60 (emphasis added); Pet. 23; EX1005
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`¶80. The difference in claims 15 and 20 shows that in claim 15, expansion of the
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`second chamber due to selective exposure opens the sleeve whereas in claim 20,
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`expansion of the second chamber due to selective exposure closes the sleeve.
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`Neither PO nor Dr. Fleckenstein ever addresses claim 15 and the difference in
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`language compared to claim 20.
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`To escape the obvious difference in claim language, PO concocts a scheme in
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`which the closed chamber could have a higher pressure than the passage pressure.
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`Resp. 12-13. PO justifies its contortion by asserting that a “POSITA would’ve
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`understood that claim 20’s valve was initially closed, not initially-open….” Id. 11;
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`EX1045 (Fleckenstein Depo.) 25:15-26:14. But PO’s logic is circular—assuming
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`that claim 20 is initially closed to prove that it should be construed to be initially
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`closed. Moreover, as noted supra, its assumption contradicts precedent precluding
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`reading a limitation from the preferred embodiment into the claim.
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`Additionally, PO’s new actuation mechanism contradicts the very things it
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`claims to be honoring—the field of the invention, the summary of the invention, and
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`the purpose of the invention—because they all state that tubing pressure on one side
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`of the piston pushing against low pressure on the back side is what actuates the tool.
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`EX1001 1:14-20, 2:3-5, 2:18-25. PO’s new actuation technique requiring high
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`pressure on the back side of the piston contradicts all of these. PO’s own expert had
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`no explanation for how these specification passages could be reconciled with his
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`hypothetical. EX1045 42:10-44:5, 53:17-56:6, 56:7-57:19. Thus, by PO’s own
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`standard, its interpretation of claim 20 cannot be correct.
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`Finally, even if PO were correct that its interpretation of claim 20 were
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`plausible, which it is not, PO has shown at most that claim 20 could include its
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`initially-closed interpretation as well as Petitioner’s initially-open interpretation.
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`PO’s assertion that claim 20 excludes Petitioner’s interpretation because “it’s
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`grounded in features of the preferred embodiment” undermines its own
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`interpretation and cannot be a basis for choosing PO’s over Petitioner’s. Resp. 10-
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`11. Under this broad interpretation of claim 20, claim 19 (and claim 1 with the same
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`language) cannot be construed narrowly to exclude Petitioner’s initially-open
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`interpretation without rendering claim 20 improperly dependent.
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`Without its proposed construction of independent claim 1 as requiring an
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`initially-closed sleeve, Giroux’s Preferred Embodiment anticipates claim 1.
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`III. GROUND 1 – GIROUX’S ALTERNATIVE EMBODIMENT
`ANTICIPATES CLAIMS 1, 16, 17, 31, 34, 41, AND 42
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`A. Giroux Anticipates Claims 1 and 34 Under Either Construction
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`Claims 1 and 34 are anticipated under either party’s construction because
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`Giroux’s Alternative Embodiment discloses the relevant features of the initially-
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`closed version of the Preferred Embodiment. See, e.g., Pet. 31 & n.3. PO admits
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`Giroux discloses an initially-closed sleeve at 7:22-35, but argues that tool is not the
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`Alternative Embodiment shown in Figures 6-7. Resp. 29. PO’s argument is directly
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`contradicted by Giroux’s specification.
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`Giroux first describes the Alternative Embodiment in terms of the Preferred
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`Embodiment shown in Figures 3-4:
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`FIG. 6 is a partial section view of an electrically operated single
`operation tool. In this embodiment, the tool 100 is remotely shifted to
`a closed position due to the response of an electric signal. As with the
`preferred embodiment described above, this tool goes in the hole in an
`open position.
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`EX1003 6:36-41 (emphases added). The “tool 100” is the same “tool of the present
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`invention 100” in Figures 1-5. Id. 4:52, 5:26-27. Giroux further explains that Figure
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`7 shifts piston 110 “in the same manner” as the Preferred Embodiment (of Figures
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`3-4):
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`As shown in FIG. 7 … [w]ellbore fluid is then allowed to make
`contact with the piston 110 and in the same manner as that described
`above, the piston 110 is forced downward and the bypass ports (not
`shown) are sealed.
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`Id. 7:14-21 (emphasis added).
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`After initially introducing the Alternative Embodiment as a “single operation
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`tool,” Giroux then explains that the embodiment shown in Figures 6-7 “may also”
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`be segmented for repeated operations:
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`This embodiment may also be segmented such that a series of
`the tool described immediately above would be connected together,
`thus allowing for multiple or repeatable closings and openings.
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`Id. 7:22-25 (emphasis added). The description of the Alternative Embodiment
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`continues through column 7, line 21. EX1045 83:18-85:3. Thus, when Giroux refers
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`to “[t]his embodiment … a series of the tool described immediately above” at line
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`22, it necessarily is referring to the Alternative Embodiment described “immediately
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`above.” EX1003 7:22-25. PO’s expert’s refusal to agree with this plain language
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`shows that his opinions are not credible. EX1045 85:6-86:20, 91:24-92:6.
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`PO’s and Dr. Fleckenstein’s assertion that Mr. Chambers’ conceded that
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`Giroux’s series tool described at 7:22-35 does not necessarily use piston 110 as
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`shown in Figures 6-7 also fails. Resp. 27. Mr. Chambers’ deposition confirmed his
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`declaration testimony (EX1005 ¶¶64, 87-88) that Giroux expressly discloses the use
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`of the tool in Figures 6-7 in the initially-closed position in the passage at 7:22-35.
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`EX2004 49:18-50:5. Mr. Chambers never testified that Giroux’s tool described at
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`7:22-35 does not necessarily use piston 110. His testimony, therefore, does not help
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`PO.
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`PO next argues that in Giroux’s initially-closed alternative at 7:27-32, Giroux
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`discloses cooperability between the second and third pistons and that “cooperability
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`with another piston isn’t required of piston 110 of FIGs. 6 and 7.” Resp. 27. But
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`adding functionality does not avoid anticipation in comprising claims, such as claims
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`1 and 34. Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997)
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`(“[O]ther elements may be added and still form a construct within the scope of the
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`claim.”).
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`PO then asserts that “the segmented tool’s bore, its bypass ports, and its lower
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`atmospheric chamber are also different from (or are at least not necessarily the same
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`as) those of the FIGs. 6 and 7 tool due to the cooperation” but offers nothing more
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`than an almost verbatim paragraph of Dr. Fleckenstein’s declaration in support.
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`Resp. 28 (citing EX2001 ¶100). Dr. Fleckenstein’s declaration provides no
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`additional explanation and thus should be accorded little or no weight. EX2001
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`¶100; 37 C.F.R. § 42.65(a); see also EX1045 91:24-92:6 (admitting that he does not
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`understand that passage of Giroux). PO has not shown that the cooperation Giroux
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`discloses requires changing any of the features it asserts are different. Moreover,
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`“prior art patents are presumed enabled ….” Amgen Inc. v. Hoechst Marion Roussel,
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`Inc., 314 F.3d 1313, 1354 (Fed. Cir. 2003).
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`Even if PO could show that these features had to be changed, Giroux
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`discloses, “Additional opening and closing segments could be mated together in
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`order to satisfy the needs of the operators.” EX1003 7:33-35. These segments do
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`not require any cooperability. PO’s assertion that this passage “most likely refers to
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`segments” like “the second and third pistons in 7:27-32 of Giroux” is entirely
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`without a basis in Giroux. Resp. 28-29. PO ignores Giroux’s next statement that
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`“[a]dvantageous to this system is its repeatability, its ability to open or close the
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`bypass fluid path more than once.” EX1003 7:34-35. Giroux discloses a tool that
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`anticipates claims 1 and 34. Giroux discloses that the tool can be used initially
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`closed or initially open “to satisfy the needs of the operators.” Nothing more is
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`required.
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`B. Giroux Anticipates Claims 16, 17, 31, 41, and 42
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`PO additionally argues Giroux does not anticipate claims 16, 17, 31, 41, 42
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`because Giroux does not disclose sleeves as being urged to an initially-closed
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`position. Resp. 32-49. But Giroux discloses that piston 110 in both the Preferred
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`and Alternative Embodiments is urged toward its initial position. PO admits that
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`Giroux discloses urging but contends that a POSITA would not recognize the
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`disclosure. Id. 43-44. As shown below, PO is both legally and factually wrong.
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`Thus, Giroux’s Alternative Embodiment, which is initially closed, anticipates these
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`claims. Further, Giroux’s Preferred Embodiment also anticipates claims 16-17
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`because those claims do not require initially-closed sleeves for the reasons explained
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`in Section II.
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`1. Giroux Discloses Urging
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`Petitioner has shown that a POSITA would understand Giroux’s piston 110 to
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`be urged (or biased) toward its initial position. Pet. 40-42; EX1005 ¶¶112-13. Patent
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`drawings are evaluated and applied “‘on the basis of what they reasonably disclose
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`and suggest to one skilled in the art.’” In re Aslanian, 590 F.2d 911, 914 (C.C.P.A.
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`1979) (quoting In re Baum, 374 F.2d 1004, 1009 (C.C.P.A. 1967)). Giroux’s
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`consistent disclosure of urged pistons in multiple figures reasonably conveyed to a
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`POSITA that its piston was urged.
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`Mr. Chambers testified that “persons of skill in the art are high-pressure
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`plumbers; and this is what they live with every day, cross-sectional area and
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`pressure.” EX2004 81:16-18; see also EX2001 ¶33 (Dr. Fleckenstein agreeing); see
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`also EX1045 100:2-10. Dr. Fleckenstein agreed that a POSITA in early 2011 knew
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`that “any difference in opposed surface areas exposed to the same pressure” would
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`create a force. EX1045 100:11-21, 101:9-102:9. Thus, a POSITA looking at
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`Giroux’s drawings knew that any difference in diameter on opposed ends of a piston
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`exposed to the same pressure would create a force on the piston. Id. 101:9-18.
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`That difference in diameters and cross-sectional areas is exactly what Giroux
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`repeatedly shows. EX1005 ¶¶112-13. PO acknowledges the difference in its own
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`annotated drawing on page 44 of its Response, reproduced below. PO’s expert
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`agrees. EX2001 ¶¶108-10 (including two figures depicting the area difference).
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`Moreover, Dr. Fleckenstein testified that this area difference is perceptible “to the
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`naked eye.” EX1045 176:2-177:7.
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`PO relies heavily on Hockerson-Halberstadt, Inc. v. Avia Group International
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`for the proposition that “patent drawings do not define the precise proportions of the
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`elements and may not be relied on to show particular sizes.” Resp. 38 (quoting 222
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`F.3d 951, 956 (Fed. Cir. 2000)). Petitioner, however, is not relying on any precise
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`proportions of the elements in Giroux’s figures or any particular sizes. Indeed, no
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`claim of the ’137 Patent recites any particular proportions or sizes. Any amount of
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`urging is sufficient to satisfy the urging claims. E.g., ’137 Patent claim 16 (sleeve
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`configured to respond “by being urged toward said first position”). As Dr.
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`Fleckenstein admitted, a POSITA in early 2011 knew that “any difference in
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`opposed surface areas exposed to the same pressure ... would create” a force.
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`EX1045 100:11-21, 101:9-102:9. The magnitude of that difference affects only the
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`size of the force, not the existence of the force. See id. 107:8-108:3.
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`In Ex parte Bjorn, the Board sustained the rejection of a claim based on a
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`patent drawing’s disclosure of a claimed feature. 2018-001567, 2019 WL 6173305
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`(P.T.A.B. Oct. 16, 2019). There, the Board distinguished Hockerson because the
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`limitation reciting “an exterior surface diameter that is ‘less than or substantially
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`equal to the maximum thread diameter of the male screw section of the bone
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`fixture’” required “[n]o particular dimensions or proportions” and the prior art
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`“clearly disclose[s] to a skilled artisan” that an abutment in a drawing had that
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`feature. Id. *10. Giroux clearly discloses biasing in multiple figures.
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`Both Mr. Chambers and Dr. Fleckenstein agree that Giroux discloses biasing.
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`EX1005 ¶¶112-13; EX1045 100:11-21 (admitting any difference in opposed areas
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`exposed to common pressure creates a force), 101:9-102:9, 176:2-177:7 (admitting
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`area difference in Giroux’s piston is perceptible to the naked eye). PO cannot
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`disregard that clear disclosure in the figures simply because Giroux does not mention
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`biasing in its text. Ex parte Bjorn, 2019 WL 6173305, at *10; see also Presidio
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`Components Inc. v. Am. Tech. Ceramics Corp., IPR2015-01330, 2015 WL 9599180,
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`at *6 (P.T.A.B. Dec. 3, 2015) (“the claims here do not require particular dimensions
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00708
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`or proportions” and “a skilled artisan would glean all these features from simply
`
`viewing Figures 3 and 5 of Horie”); Ex parte Elder, 2016-004536, 2018 WL
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`2318043, at *4-5 (P.T.A.B. May 14, 2018) (sustaining rejection of claim based on
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`disclosure of “radial clearance portion” in figure despite no discussion of the feature
`
`in the text); Ex parte Roth, Appeal 2010-009869, 2012 WL 359969, at *4 (B.P.A.I.
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`Feb. 1, 2012) (“the issue here is shape, not scale”). Dr. Fleckenstein offers the same
`
`rejected reasons for discounting Giroux’s disclosure, rendering his opinion
`
`unreliable. EX1045 178:3-17.
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`PO also attempts to overcome this clear disclosure by asserting that “Giroux
`
`doesn’t depict piston 110 accurately.” Resp. 38. However, PO’s alleged
`
`inaccuracies in Giroux’s drawings only highlight the consistent disclosure of a
`
`biased piston in all of the drawings. PO focuses on the length of piston 110 changing
`
`from Figure 3 to Figure 4. Resp. 39-44. But Dr. Fleckenstein admitted that Figure
`
`4 discloses the same biased piston as Figure 3. EX1045 182:9-12 (“Still looks like
`
`seals 108 at the bottom of the piston 110 in Giroux 4 are larger in diameter than the
`
`seals at the top left of piston 110, correct? Yes ….”). In fact, Dr. Fleckenstein
`
`admitted to reviewing Figures 5, 8, and 9, which also depict piston 110, but he
`
`offered no opinion on them. Id. 184:7-23. That’s because those figures depict a
`
`biased piston 110 despite changing other features of the tool. EX1003 Figs. 5, 8, 9;
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`see also In re Wolfensperger, 302 F.2d 950, 959 (C.C.P.A. 1962) (“We find nothing
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00708
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`therein, however, which raises a presumption that drawings such as those here are
`
`not drawn to scale with reasonable accuracy or that four enlarged detailed figures
`
`consistently showing the same relative proportions must be ignored.” (emphasis
`
`added)). Even the pistons 900 and 910 depicted in Giroux Figures 10, 11, and 12
`
`are drawn as biased toward their initial position. EX1003 Figs. 10-12. A POSITA
`
`who was a “high pressure plumber” well-versed in pressure and cross-sectional area
`
`would consider a consistent disclosure of a difference in diameters in multiple
`
`figures important in a piston and not a drawing error.
`
`PO’s cases are also distinguishable. Ex parte Nguyen, Appeal 2018-001801,
`
`2018 WL 5821695 (P.T.A.B. Oct. 19, 2018), involved determination of whether a
`
`drawing provided written description support for a later claim. The case did not
`
`involve the repeated clear depiction of the same feature in multiple figures of the
`
`application, like Giroux here. In re Daniel, 34 F.2d 995, 999 (C.C.P.A. 1929),
`
`involved a feature whose insertion in the patent disclosure during reissue “was
`
`accidental and put there by mistake.” Giroux, by contrast, repeatedly disclosed the
`
`same biased piston even while changing other features, precluding any assertion of
`
`mistake. See Ex parte Roth, 2012 WL 359969, at *4.
`
`2.
`
`Piston 110 Is the Same in Both of Giroux’s Embodiments
`
`PO also claims that a POSITA would not recognize that piston 110 in Figures
`
`3 and 4 is the same piston 110 in Figure 6 (the Alternative Embodiment), because
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00708
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`“Giroux doesn’t explicitly state” so. Resp. 32-33. However, neither PO nor its
`
`expert provide any argument, justification, or theory why the piston 110 of tool 100
`
`in Figures 6-7 is different than the piston 110 of tool 100 in Figures 3-4. See Resp.
`
`33; EX2001 ¶113.
`
`A POSITA would understand that Figures 6-7 are close-ups of Figures 3-4,
`
`used
`
`to highlight
`
`the only differences
`
`in
`
`the Preferred and Alternative
`
`embodiments—replacing rupture disc 120 of the Preferred Embodiment with the
`
`small piston 180 and wire 185 of the Alternative Embodiment. These differences
`
`have no relation to urging or otherwise changing the cross-sectional areas of the
`
`piston:
`
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00708
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`Moreover, when discussing Figure 6, Giroux explicitly states that “[a]s in the
`
`preferred embodiment [of Figures 3-4], the hydrostatic head overcomes the force of
`
`the piston set pin 125 and causes the piston 110 to move downward and seal the
`
`bypass ports (not shown).” EX1003 7:6-9. Thus, contrary to PO’s arguments, a
`
`POSITA would “at once envisage” that the same dimensional properties of piston
`
`110, which results in piston 110 being biased as shown in Figure 4, would also exist
`
`in the same piston 110 of Figure 6.
`
`Because Giroux discloses Preferred and Alternative Embodiments that
`
`include an urged piston 110, Giroux anticipates claims 16, 17, 31, 41, and 42.
`
`IV. GROUND 2 – CLAIMS 1, 8-11, 16, 17, 31, 34, 41, AND 42 ARE
`OBVIOUS OVER GIROUX IN VIEW OF A POSITA’S
`KNOWLEDGE AND THE ADMITTED PRIOR ART
`
`Under Ground 2, all claims would have been obvious over Giroux in view of
`
`the knowledge of a POSITA and the admitted prior art (“APA”). Pet. 56-71. PO
`
`argues that: (1) a POSITA would not have been motivated to modify Giroux’s
`
`sleeves to be initially-closed (Resp. 15-24, 29-31); (2) Giroux does not disclose
`
`urging (Resp. 33-49); and (3) there was no disclosure or motivation for urging (Resp.
`
`49-60). PO does not dispute that a POSITA had a motivation to use a hydraulically
`
`actuated sliding sleeve, like Giroux, as a toe sleeve and that doing so would require
`
`the sleeve to be initially closed. As discussed in Section III.B, Giroux discloses
`
`urging. Even if Giroux did not disclose it, a POSITA would have been motivated to
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00708
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`use urging to address a known concern with premature actuation. Thus, PO’s
`
`arguments against obviousness are meritless.
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`A. A POSITA Would Have Been Motivated to Use Giroux as
`a Toe Sleeve
`
`PO argues that a POSITA would not have been motivated to use Giroux as a
`
`“toe sleeve”—an initially-closed sliding sleeve for replacing perforations in
`
`fracturing operations. Resp. 16-18, 29-31. PO’s own expert, Dr. Fleckenstein,
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`disagrees, testifying as follows:
`
`• A POSITA knew in 2009 that perforations at the toe of a cemented
`
`multi-stage fracturing completion could be successfully replaced with
`
`hydraulically actuated sliding sleeves. EX1045 76:10-20.
`
`• A POSITA knew in 2009 that to replace such perforations, “the
`
`hydraulically actuated sliding sleeve had to run in closed and be
`
`actuated to open.” Id. 76:21-25.
`
`• A POSITA in 2009 “had a motivation to develop a hydraulically
`
`actuated sliding sleeve for use in a cemented multi-stage fracturing
`
`completion to replace perforations at the toe of the well.” Id. 78:16-23.
`
`• “Giroux’s preferred and alternative embodiments relied upon by Mr.
`
`Chambers are hydraulically actuated sliding sleeves.” Id. 73:4-7.
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00708
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`PO’s contention that a POSITA would not have been motivated to use Giroux as a
`
`toe sleeve is entirely without merit.
`
`Mr. Chambers explains why a POSITA knew to use sliding sleeves as toe
`
`sleeves. EX1005 ¶¶41-52; see also Pet. 7-8. PO does not dispute or address any of
`
`these statements when considering Giroux. Giroux discloses sliding sleeves with
`
`the same features discussed, for example, in the prior art paper SPE 125365—the
`
`use of an atmospheric chamber on one side of the piston along with a rupture disc
`
`and shear pin on the other side. EX1009 3; EX1003 3:17-21, 5:54-6:18. For those
`
`reasons, which PO does not challenge, Mr. Chambers concludes that a POSITA
`
`would have looked to Giroux for use as a toe sleeve. EX1005 ¶¶151-159.
`
`PO’s contention that “Giroux’s tool is nothing like what Petitioner’s
`
`motivation requires” (Resp. 17) is contradicted by Dr. Fleckenstein’s testimony
`
`(discussed above), Mr. Chambers’ testimony (EX1005 ¶¶151-159), and the
`
`overwhelming evidence that a POSITA knew to use a hydraulically actuated sliding
`
`sleeve, like Giroux, in this application (EX1005 ¶¶41-52). PO asserts that it was not
`
`obvious to use Giroux because it is a surge pressure reduction tool that required
`
`being initially open when run in the well. Resp. 17. But a POSITA “is also a person
`
`of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`
`398, 421 (2007). Even
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