UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`WEATHERFORD INTERNATIONAL, LLC,
`Petitioner,
`v.
`BAKER HUGHES OILFIELD OPERATIONS, LLC,
`Patent Owner.
`______________
`Case IPR2019-00708
`Patent RE46,137
`______________
`
`PATENT OWNER’S SUR-REPLY
`
`
`______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`WEATHERFORD INTERNATIONAL, LLC,
`Petitioner,
`v.
`BAKER HUGHES OILFIELD OPERATIONS, LLC,
`Patent Owner.
`______________
`Case IPR2019-00708
`Patent RE46,137
`______________
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`PATENT OWNER’S EXHIBIT LIST
`
`Case IPR2019-00708
`Patent RE46,137
`
`Shorthand
`Fleckenstein
`
`Chambers2
`
`Dictionary
`
`ChambersDepo.
`
`Description
`Declaration of William W. Fleckenstein, Ph.D,
`PE (CA#1666)
`Declaration of Michael Chambers, filed in
`IPR2019-00768 as EX1022
`Dictionary Definitions from Random House
`Webster’s Unabridged Dictionary, 2d Ed.
`(1998)
`Transcript of Michael Chambers’s November
`21, 2019 Deposition
`Pub. No. US 2012/0103628 A1 to Stout
`Stout
`Stout Provisional U.S. Provisional Patent App. No. 61/408,780 to
`Stout
`U.S. Patent No. 8,783,353 B2 to Saheta et al.
`Pub. No. US 2009/0078427 A1 to Patel
`(EX1021 from IPR2019-00768
`U.S. Patent No. 4,105,044 to Davitt
`U.S. Patent No. 5,558,153 to Holcombe et al.
`(EX1023 from IPR2019-00768)
`U.S. Patent No. 7,703,510 B2 to Xu (EX1025
`from IPR2019-00768)
`U.S. Patent No. 6,659,186 B2 to Patel (EX1026
`from IPR2019-00768)
`ChambersDepo2 Transcript of Michael Chambers’s April 7,
`2020 Deposition
`Transcript of William Mark Richards’s April 9,
`2020 Deposition
`
`
`Saheta
`Patel ’427
`
`Davitt
`Holcombe
`
`Xu
`
`Patel ’186
`
`RichardsDepo.
`
`Exhibit
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`2006
`
`2007
`2008
`
`2009
`2010
`
`2011
`
`2012
`
`2013
`
`2014
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`- i -
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`Case IPR2019-00708
`Patent RE46,137
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`III.
`
`I.
`II.
`
`TABLE OF CONTENTS
`Petitioner’s Claim Construction Arguments Fail ............................................ 1
`Giroux’s Alternative Embodiment Does Not Anticipate ................................ 6
`A.
`It Is Not a Closed-to-Open Tool ............................................................ 6
`B.
`It Is Not an Urged-Closed Tool ............................................................. 8
`It Was Not Obvious To Use Giroux as a Toe Sleeve ...................................... 9
`A.
`There Was No Logical Reason To Turn to Giroux ............................... 9
`B.
`Petitioner’s Remaining Arguments About
`POR Sections IV.B and VI Fail ..........................................................11
`IV. Giroux Does Not Disclose Urging.................................................................13
`V.
`Petitioner Did Not Overcome Its Urging Failure ..........................................22
`VI. Petitioner’s New Tools Are Improper ...........................................................24
`A.
`The New Tools Cannot Fill the Gap in Petitioner’s Challenges .........24
`B. Moreover, the New Tools Are Not Printed Publications ....................25
`C.
`Petitioner Failed To Show the New Tools
`Prevent Premature Actuation ..............................................................27
`
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`TABLE OF AUTHORITIES
`
`Case IPR2019-00708
`Patent RE46,137
`
` Page(s)
`
`Cases
`3M Innovative Props. Co. v. Avery Dennison Corp.,
`350 F.3d 1365 (Fed. Cir. 2003) ........................................................................ 2, 3
`Applera Corp. v. Micromass UK Ltd.,
`186 F. Supp. 2d 487 (D. Del. 2002).................................................................. 2, 3
`Ex parte Bjorn,
`Appeal 2018-001567, slip op. (P.T.A.B. Oct. 16, 2019) ........................ 14, 15, 19
`Dexcom, Inc. v. Waveform Techs., Inc.,
`IPR2016-01679, Paper 53 (P.T.A.B. Feb. 28, 2018) .......................................... 24
`Ex parte Elder,
`Appeal 2016-004536, slip op. (P.T.A.B. May 16, 2018) ................................... 14
`Free Motion Fitness, Inc. v. Cybex Int’l, Inc.,
`423 F.3d 1343 (Fed. Cir. 2005) ............................................................................ 2
`Gemtron Corp. v. Saint-Gobain Corp.,
`572 F.3d 1371 (Fed. Cir. 2009) .......................................................................... 12
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 10, 11
`In re Meng,
`492 F.2d 843 (C.C.P.A. 1974) ............................................................................ 17
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) ........................................................................ 7, 8
`Ex parte Nguyen,
`Appeal 2018-001801, slip op. (P.T.A.B. Oct. 22, 2018) ........................ 16, 17, 19
`In re NuVasive, Inc.,
`842 F.3d 1376 (Fed. Cir. 2016) .................................................................... 22, 23
`Poly-America, L.P. v. API Indus., Inc.,
`839 F.3d 1131 (Fed. Cir. 2016) ........................................................................ 3, 5
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`Presidio Components Inc. v. Am. Tech. Ceramics Corp.,
`IPR2015-01330, Paper 11 (P.T.A.B. Dec. 3, 2015) ............................... 14, 15, 16
`Redline Detection, LLC v. Star Envirotech, Inc.,
`811 F.3d 435 (Fed. Cir. 2015) ............................................................................ 24
`Ex parte Roth,
`Appeal 2010-009869, slip op. (B.P.A.I. Feb. 1, 2012) ....................................... 14
`In re Seid,
`161 F.2d 229 (C.C.P.A. 1947) ............................................................................ 14
`Univ. of Maryland Biotech. Inst. v. Presens Precision Sensing GmbH,
`711 F. App’x 1007 (Fed. Cir. 2017) ................................................................... 12
`WBIP, LLC v. Kohler Co.,
`829 F.3d 1317 (Fed. Cir. 2016) ............................................................................ 9
`In re Wolfensperger,
`302 F.2d 950 (C.C.P.A. 1962) ................................................................ 13, 17, 20
`Yeda Research v. Mylan Pharmaceuticals Inc.,
`906 F.3d 1031 (Fed. Cir. 2018) .......................................................................... 11
`Rules and Regulations
`37 C.F.R. § 42.23(b) ................................................................................................ 20
`37 C.F.R. § 42.65(a) ................................................................................................. 27
`77 Fed. Reg. 48,756 ................................................................................................. 24
`
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`I.
`
`Petitioner’s Claim Construction Arguments Fail
`Petitioner contends claim 1 uses “‘first’ and ‘second’ as shorthand labels for
`
`closed and partially-open positions” because claims 8 and 16 do. Reply, 1. But
`
`shorthanding each position in the dependent claims using one of its two claim 1-
`
`recited characteristics did not eliminate that characteristic’s meaning in claim 1.
`
`Petitioner then contends “[c]laim 1’s usage is no different than claim 6’s usage
`
`of ‘first’ and ‘second’ to distinguish sides of a piston.” Reply, 2. This new argument
`
`should be ignored (compare Pet., 22-23) but is also wrong. Unlike claim 6’s first
`
`and second sides, claim 1’s first and second positions aren’t coexistent—one must
`
`come before the other in the claimed movement capability. See Fleckenstein, ¶24
`
`(cited in POR, 4).
`
`PO’s dictionary definitions of “first” and “second” (EX2003) and Dr.
`
`Fleckenstein’s testimony applying them to claim 1’s positions (Fleckenstein, ¶¶23-
`
`24) should not be “afforded less weight than claim language” (Reply, 2) because
`
`“first position” and “second position” are claim language.
`
`Petitioner treats Free Motion’s holding that “‘the use of the terms ‘first’ and
`
`‘second’ is a common patent-law convention to distinguish between repeated
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`instances of an element or limitation’”1 as governing all patent-uses of “first” and
`
`“second.” Reply, 2. But that holding is context-dependent. See Free Motion, 423
`
`F.3d at 1348 (“In this case … ‘[f]irst’ does not denote special location,” which the
`
`parties conceded (emphasis added)2); see also 3M, 350 F.3d at 1371 (“In the context
`
`of claim 1, ….”). Even taken alone, claim 1’s context differs. Unlike Free Motion’s
`
`first and second pivot points and 3M’s first and second patterns, claim 1’s first and
`
`second positions are not coexistent.
`
`Petitioner’s Applera case (Reply, 2) makes explicit such patent-law
`
`convention is not absolute. Applera found “cases and treatises demonstrat[ing] that
`
`patent drafters use the terms ‘first’ and ‘second’ to identify separate elements”
`
`unhelpful because “[n]one of [them]”—like Free Motion and 3M—“state that ‘first’
`
`and ‘second’ are only identifiers and that they [don’t] also explain the position of
`
`elements.” Applera Corp. v. Micromass UK Ltd., 186 F. Supp. 2d 487, 505 (D. Del.
`
`2002). Applera then found “first” and “second” do more than distinguish elements:
`
`
`1 Free Motion Fitness, Inc. v. Cybex Int’l, Inc., 423 F.3d 1343, 1348 (Fed. Cir. 2005)
`
`(quoting 3M Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365, 1371
`
`(Fed. Cir. 2003)).
`
`2 Hereafter, all quotation underlining is added.
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`“they define the position, in the path of the ion travel, of the elements in the
`
`invention.” Id., 508.
`
`Applera made that finding based on all intrinsic evidence, id.; see also 3M,
`
`350 F.3d at 1371-74 (same, after stating Petitioner’s patent-law convention), as did
`
`PO here, POR, 7-9. Construing the sleeve’s “first [closed] position” as coming
`
`before the sleeve’s “second [open] position” in claim 1’s recited movement
`
`capability is necessary for claim 1 to: capture the ’137 Patent’s explicitly stated
`
`invention: “[w]hat is needed and provided by the present invention is an actuation
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`technique for a sliding sleeve to open a port that responds to tubing pressure” (’137
`
`Patent, 1:59-63; POR, 7); lie within the ’137 Patent’s field of invention (POR, 7-8);
`
`and achieve the ’137 Patent’s purpose (POR, 8-9).
`
`Petitioner mischaracterizes these statements of the invention as mere
`
`statements of the preferred embodiment. Reply, 3. Petitioner next asserts that “PO
`
`points to no disclaimer or disavowal of initially-open sleeves.” Id. But the
`
`statements of the invention are the allegedly missing disavowal because “[a]n
`
`inventor may disavow claims lacking a particular feature when the specification
`
`describes ‘the present invention’ as having that feature.” Poly-America, L.P. v. API
`
`Indus., Inc., 839 F.3d 1131, 1136 (Fed. Cir. 2016).
`
`For claim 20, Petitioner attempts to justify Mr. Chambers’s reliance on the
`
`preferred embodiment’s upper atmospheric (openable) chamber enlarging during
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`actuation to add the same to that claim. Reply, 3 (citing POR, 10). But that feature
`
`is not required by the ’137 Patent’s statement of its invention (’137 Patent, 1:59-63),
`
`its field of invention (id., 1:11-20), or that invention’s purpose (id., 2:6-10). It’s
`
`therefore unlike PO’s reliance on the ’137 Patent’s closed-to-open sleeve invention
`
`to construe claim 1 as-written to require closed-to-open sleeve movement capability.
`
`Reply, 3 (citing POR, 6-9).
`
`Petitioner’s next argument makes its improper reliance on claim 20’s second
`
`(openable) chamber enlarging during actuation explicit: “in claim 20, expansion of
`
`the second chamber due to selective exposure closes the sleeve.” Reply, 3-4.
`
`Petitioner cannot import this feature from claim 15 any more than from the preferred
`
`embodiment. See id.
`
`Petitioner criticizes Dr. Fleckenstein’s claim 20 explanation as based on the
`
`“assump[tion] that claim 20 is initially closed.” Reply, 4. But that is the ’137
`
`Patent’s invention. Dr. Fleckenstein’s claim 20 explanation is otherwise unrebutted.
`
`Next, Petitioner alleges PO’s claim 20 interpretation contradicts the field,
`
`summary, and purpose of the invention “because they all state [that] … low pressure
`
`on the back side is what actuates the tool.” Reply, 4. For the field, Petitioner relies
`
`on its narrower description of “a sleeve associated with a piston … referenced to a
`
`low pressure chamber” as illogically supplanting its broader description that does
`
`not: “a pressure actuated sleeve … that is responsive to tubing pressure to open a
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`port.” ’137 Patent, 1:14-20; Reply, 4. Rather than having “no explanation” (Reply,
`
`4-5) for the narrower description, Dr. Fleckenstein testified it does not override the
`
`broader one. EX1045, 43:2-13.
`
`For the summary, Petitioner identifies one background sentence (’137 Patent,
`
`2:3-5) and two summary sentences (id., 2:18-25) referencing a “low pressure
`
`chamber.” Reply, 4. But Petitioner does not explain how those sentences justify
`
`reading a low-pressure chamber into claim 20 or how “PO’s own standard” requires
`
`that. See id. And Petitioner never questioned Dr. Fleckenstein about how to
`
`“reconcile[ them] with his [claim 20] hypothetical” (Reply, 4; see EX1045, 53:17-
`
`57:19), let alone about his testimony that the ’137 Patent’s claims “cover [closed]
`
`chambers having higher-than-hydrostatic pressures” (Fleckenstein, ¶¶37-39 (cited in
`
`POR, 13)).
`
`The invention’s purpose is undisputedly to “open [a] port or ports for annulus
`
`access” (’137 Patent, 2:6-10; Chambers1, ¶50; Fleckenstein, ¶27; POR, 8), not to do
`
`so using a low-pressure chamber.
`
`Petitioner asserts claim 20 could cover PO’s and Petitioner’s interpretations.
`
`Reply, 5. Wrong—Petitioner’s initially-open interpretation contravenes the ’137
`
`Patent’s invention. Petitioner’s one-sentence claim differentiation argument fails,
`
`too. Poly-America, 839 F.3d at 1137.
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`II. Giroux’s Alternative Embodiment Does Not Anticipate
`It Is Not a Closed-to-Open Tool
`A.
`Petitioner contends Giroux’s 7:22-35 (the “Giroux Passage”) describes
`
`Giroux’s Alternative Embodiment because it begins with “[t]his embodiment may
`
`also be segmented such that a series of the tool described immediately above would
`
`be connected together.” Reply, 7. But that does not mean the opening-and-closing
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`segment (“O/C Segment”) it later describes is the Alternative Embodiment. That’s
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`one reason Dr. Fleckenstein disagreed with Petitioner’s interpretation. EX1045,
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`85:22-86:5 (“it sounds like you’re stacking other tools on top of [the Alternative
`
`Embodiment]”); see also id., 87:2-14 (“[the Alternative Embodiment] is [] single-
`
`action”).
`
`Mr. Chambers also does not agree with Petitioner, testifying the O/C
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`Segment is not the Alternative Embodiment. POR, 26-28; ChambersDepo., 49:8-17
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`(Giroux “doesn’t have a depiction … of the [Giroux Passage] multi-segment tool,”
`
`and the Giroux Passage “does not refer to Figures 6 or 7”); see also id., 50:6-10,
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`50:11-51:2. Ignoring this testimony, Petitioner asserts Mr. Chambers elsewhere
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`testified “Giroux expressly discloses the use of the tool in Figures 6-7 in the initially-
`
`closed position in the” Giroux Passage. Reply, 7 (citing ChambersDepo., 49:18-
`
`50:5, Chambers, ¶¶64, 87-88). He didn’t. The cited deposition testimony is Giroux
`
`Passage discloses that “sleeves … in the industry … can be set to open,” which Mr.
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`Chambers immediately refused to extend specifically to Giroux’s FIGs. 6 and 7.
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`ChambersDepo., 49:18-50:10; see also id., 50:11-51:3. Cited paragraph 64
`
`discusses the Giroux Passage but does not link its structures to the Alternative
`
`Embodiment’s. Chambers, ¶34 (“Giroux is disclosing that a piston ….”); compare
`
`id., ¶¶62-63 (“piston 110”). It also treats the Giroux Passage as a general teaching
`
`from which “a POSITA would understand … that the Alternative Embodiment …
`
`could be set to move … from … closed to open.” Id., ¶64. Cited paragraphs 87-88
`
`don’t cite the Giroux Passage.
`
`When Mr. Chambers conceded the O/C Segment is not the Alternative
`
`Embodiment, he conceded the former doesn’t necessarily use the latter’s piston 110.
`
`Reply, 7. And PO’s showing that the O/C Segment’s piston, ports, atmospheric
`
`chamber, and bore aren’t necessarily the same as the Alternative Embodiment’s
`
`underscores (1) they’re different embodiments (fatal) and (2) Petitioner’s failure to
`
`show Giroux discloses “all of the limitations arranged or combined in the same way”
`
`as claimed (independently fatal). Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d
`
`1359, 1371 (Fed. Cir. 2008); POR, 26-29. Petitioner cannot shift its burden, and its
`
`problem is disclosure, not enablement. See Reply, 8.
`
`Petitioner’s argument that piston-cooperability cannot prevent the O/C
`
`Segment from anticipating PO’s claims misses. Reply, 7-8. The Petition relies on
`
`the Alternative Embodiment, not the O/C Segment. Petition, 12-14. And even if
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`Petitioner had an O/C Segment-based anticipation challenge, it would fail because
`
`the O/C Segment’s structure is unexplained. See, e.g., ChambersDepo.,53:11-23
`
`(“So I don’t know exactly how he envisioned to do it.”); Net MoneyIN, 545 F.3d at
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`1371.
`
`Petitioner incorrectly argues Giroux’s description that its “opening and
`
`closing segments … mated together … have the ability to open or close the bypass
`
`fluid path more than once” (Giroux, 7:33-36) discloses open-only segments. Reply,
`
`8-9. There’s only one bypass fluid path there, made clear by Giroux referring to “the
`
`bypass fluid path” and associating it with each of the opening-and-closing segments.
`
`Giroux, 7:33-36. Once Petitioner’s open-only segment opened that path, it couldn’t
`
`be closed so it could be “open[d] … more than once.” Id.
`
`It Is Not an Urged-Closed Tool
`B.
`Petitioner contends piston 110 in FIGs. 6-7 has the same alleged biased-to-its-
`
`initial-position geometry as FIG. 3’s; thus Giroux anticipates some Urging Claims.
`
`Reply, 14-16. Petitioner’s argument fails because Giroux’s figures don’t qualify as
`
`a disclosure of an urged sleeve, and even Petitioner’s expert admitted the piston
`
`configuration “might have changed.” ChambersDepo., 9:9-19.
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`Independently, the Alternative Embodiment is initially open, meaning the
`
`biasing Petitioner alleges would urge piston 110 to the open position, not the claimed
`
`closed position. See Giroux, 6:35-41. Any Petitioner-reliance on the O/C Segment’s
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`second piston fails because Petitioner hasn’t explained what it looks like, let alone
`
`how it has a biased-geometry.
`
`III.
`
`It Was Not Obvious To Use Giroux as a Toe Sleeve
`A. There Was No Logical Reason To Turn to Giroux
`Petitioner never established why a POSITA concerned with Petitioner’s stated
`
`motivation would’ve turned to Giroux. POR, Secs. IV.A, VI; WBIP, LLC v. Kohler
`
`Co., 829 F.3d 1317, 1337 (Fed. Cir. 2016). Petitioner just started discussing
`
`modifications to Giroux’s surge-pressure reduction tool. Pet., Sec. VIII.B.2.
`
`Petitioner contends Dr. Fleckenstein admitted a POSITA would’ve been
`
`motivated to use Giroux’s tool as a toe sleeve to replace perforations in a multi-stage
`
`fracturing completion. Reply, 17. But the points Dr. Fleckenstein agreed to don’t
`
`equal such an admission, as reflected by him sticking to his opinion that a POSITA
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`wouldn’t have used Giroux’s tools “for something similar to what the ’137 is used
`
`for.” EX1045, 72:16-73:3. Moreover, those points don’t address, much less
`
`contradict (see Reply, 18), the shortcomings of Petitioner’s position (see POR 17).
`
`Next, Petitioner argues Mr. Chambers “explains why a POSITA knew to use
`
`sliding sleeves as toe sleeves,” citing EX1005 ¶¶41-52 and Pet. 7-8, and contends
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`“PO [doesn’t] dispute or address any of these statements when considering Giroux.”
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`Reply, 18. But Giroux’s tool is not discussed in those declaration and petition
`
`sections. Moreover, those sections don’t explain Petitioner’s transition from its
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`motivation to Giroux’s tool, which Mr. Chambers admitted was for a different
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`purpose that would’ve been unachievable if modified/used to meet Petitioner’s
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`motivation. See POR, 17. Petitioner’s argument that a POSITA would’ve looked to
`
`Giroux to fulfill Petitioner’s motivation because Giroux’s sliding sleeves shared
`
`certain features with EX1009’s: (1) is not reflected in cited EX1005 ¶¶151-159, and
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`(2) doesn’t address the shortcomings of Petitioner’s position (see POR 17). EX1005
`
`¶¶151-159 also fail to address those shortcomings. See Reply, 18.
`
`Petitioner argues a POSITA knew to use a hydraulically-actuated sliding
`
`sleeve as a toe sleeve while citing EX1005, ¶¶41-52 as support (Reply, 18). But that
`
`argument (EX1005, ¶52) is based on EX1009 (id., ¶¶49-52), not Giroux.
`
`Petitioner starts to address POR 17 near the bottom of Reply 18 but doesn’t
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`dispute PO’s cited evidence, including Mr. Chambers’s admissions. Its KSR
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`‘ordinary-creativity’ cite is inapposite because adding a sensor to Asano’s pedal
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`wouldn’t have rendered Asano’s pedal inoperative for its intended purpose, KSR
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`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 408-09, 412-15, 420-22 (2007), in contrast
`
`to the disputed modifications, POR 17. Petitioner argues Dr. Fleckenstein “offered
`
`no response” to Mr. Chambers’s testimony that “[a] POSITA motivated to use an
`
`initially closed position would find a finite number of identified, predictable
`
`solutions, with a reasonable expectation of success” (Reply, 19), but that testimony
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`is conclusory and doesn’t apply to Giroux, which wasn’t discussed in the
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`“background of the art” “discussion” on which he bases that testimony (see EX1005,
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`¶¶41-52, 151).
`
`B.
`
`Petitioner’s Remaining Arguments About POR Sections IV.B and
`VI Fail
`Even had a POSITA turned to Giroux, they would’ve realized modifying
`
`Giroux’s tools and using them to fulfill Petitioner’s motivation would’ve rendered
`
`them inoperative for their intended purpose and changed their principle of operation.
`
`POR, Secs. IV.B, VI. Petitioner doesn’t challenge Dr. Fleckenstein’s testimony or
`
`address its expert’s concessions on these points. Instead, it cites again to Dr.
`
`Fleckenstein’s agreement-points and block cites to EX1005 ¶¶151-159 (addressed
`
`above) and stresses certain KSR language. Reply, 19. But that KSR language doesn’t
`
`help Petitioner because the Court didn’t address an argument that mounting a sensor
`
`to Asano’s pedal would’ve rendered the pedal inoperative for its intended purpose
`
`or changed the pedal’s principle of operation. KSR, 550 U.S. at 408-09, 412-15,
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`420-22. Petitioner’s apparent attempt to liken Giroux to the Pinchasi reference in
`
`Yeda also fails. Reply, 19. Pinchasi disclosed an RRMS treatment regimen almost
`
`identical to the claimed RRMS treatment regimen. Yeda Research v. Mylan
`
`Pharmaceuticals Inc., 906 F.3d 1031, 1035-37, 1044 (Fed. Cir. 2018). That alone
`
`distinguishes Pinchasi from Giroux, and thus the cited portion of Yeda. Moreover,
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`Pinchasi’s suitability as the primary reference was waived. Id., 1044.
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`Petitioner’s attempt to distinguish Plas-Pak also fails. Reply, 20. First,
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`Petitioner has no answer for the similarity between Gordon, which controls over
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`Plas-Pak, and this case. Second, Petitioner’s contention that Plas-Pak is inapposite
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`because “it is undisputed that a POSITA had a motivation to use a sliding sleeve,
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`like Giroux’s, initially closed for the same purpose described in the ’137 Patent” is
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`incorrect. PO consistently disputed Giroux’s sliding sleeves are suited for satisfying
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`Petitioner’s motivation. What’s undisputed is modifying Giroux’s tools and using
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`them to satisfy Petitioner’s motivation would’ve rendered them inoperative for their
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`intended purpose and changed their principle of operation. Petitioner’s Presens
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`reliance fails because the Weigl reference was not the subject of a modification that
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`changed its principle of operation. Univ. of Maryland Biotech. Inst. v. Presens
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`Precision Sensing GmbH, 711 F. App’x 1007, 1010 (Fed. Cir. 2017).
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`Petitioner’s attorney argument about the meaning of Giroux’s “needs of the
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`operators” statement cannot rebut Dr. Fleckenstein’s explanation of that phrase. See
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`POR 28-29 (citing Fleckenstein, ¶101; Giroux, 6:18-26, 7:14-21, 7:27-32); Gemtron
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`Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009). Petitioner’s
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`attorney argument about EX1032 also merits no weight. Petitioner hasn’t shown
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`EX1032 is prior art, e.g., through a Dynamic Drinkware analysis. Second,
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`Petitioner fails to explain how any tool in EX1032 is similar to any Giroux tool and
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`thus how any EX1032 statement is inconsistent with any Dr. Fleckenstein opinion.
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`- 12 -
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`Case IPR2019-00708
`Patent RE46,137
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`IV. Giroux Does Not Disclose Urging
`Petitioner, relying on Giroux’s figures, asserts that “Giroux discloses that
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`piston 110 … is urged toward its initial position” and contends that PO and
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`Dr. Fleckenstein admit the same. Reply, 9, 12. That’s incorrect.
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`PO and Dr. Fleckenstein established that Giroux’s FIG. 3 isn’t disclosure of
`
`an urged-to-its-initial-position sleeve. POR, Section VII.B.1(b); Fleckenstein,
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`Section X.B.2. And despite Petitioner’s contention that “PO is both legally and
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`factually wrong” (Reply, 9), PO and Dr. Fleckenstein did so under the framework
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`from Petitioner’s cases: “[t]he practical, legitimate enquiry … is what the drawing
`
`in fact discloses to [a POSITA]” and a drawing’s “disclosure is limited to what it
`
`teaches or fairly suggests.” In re Aslanian, 590 F.2d 911, 914 (C.C.P.A. 1979); In
`
`re Wolfensperger, 302 F.2d 950, 955 (C.C.P.A. 1962); POR, Section VII.B.1(b)
`
`(assessing a POSITA’s understanding of Giroux’s FIG. 3); Fleckenstein, Section
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`X.B.2 (same).
`
`Petitioner mischaracterizes PO’s arguments as “rel[ying] heavily on
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`Hockerson-Halberstadt” and “disregard[ing] [Giroux]’s clear disclosure in the
`
`figures simply because Giroux does not mention biasing in its text.” Reply, 11-13.
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`PO, relying in part on Hockerson-Halberstadt, first established that Giroux’s FIG. 3
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`cannot be relied on as a disclosure of every size difference depicted therein because
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`it isn’t drawn to scale. POR, 38-43; Fleckenstein, ¶¶116-120. Then, rather than
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`- 13 -
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`Case IPR2019-00708
`Patent RE46,137
`disregarding FIG. 3, PO established that the size difference Petitioner relies on for
`
`its urging arguments isn’t sufficiently clear to be a disclosure. POR, 43-49;
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`Fleckenstein, ¶¶121-124. This is the approach Petitioner’s cases endorse and Dr.
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`Fleckenstein followed, undermining Petitioner’s argument that “Dr. Fleckenstein
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`offers … rejected reasons for discounting Giroux’s disclosure.” Reply, 12-13;
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`EX1045, 178:3-17; Ex parte Bjorn, Appeal 2018-001567, slip op. (“Bjorn”), 16-17
`
`(P.T.A.B. Oct. 16, 2019) (only “things shown clearly in patent drawings are not to
`
`be disregarded”); Ex parte Elder, Appeal 2016-004536, slip op. (“Elder”), 10-11
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`(P.T.A.B. May 16, 2018) (same); In re Seid, 161 F.2d 229, 231 (C.C.P.A. 1947) (“an
`
`accidental disclosure, if clearly made in a drawing, is available as a reference”).
`
`Petitioner’s reliance on Bjorn, Presidio, Elder, and Roth (Reply, 12-13) fails
`
`because in those cases the disputed features were depicted clearly and/or
`
`corroborated by written disclosure. Bjorn, 16-17 (depicted “clearly”); Presidio
`
`Components Inc. v. Am. Tech. Ceramics Corp., IPR2015-01330, Paper 11
`
`(“Presidio”), 10-12 (P.T.A.B. Dec. 3, 2015) (corroborated by written disclosure);
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`Elder, 9-11 (“sufficient particularity”); Ex parte Roth, Appeal 2010-009869, slip op.,
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`4-5, 8 (B.P.A.I. Feb. 1, 2012) (depicted “clearly”). For example, as shown below,
`
`the Bjorn Board’s finding that the outer diameter of abutment 82 [blue] is
`
`“substantially equal to” the “maximum thread diameter” of the bone fixture [green]
`
`- 14 -
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`
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`Case IPR2019-00708
`Patent RE46,137
`was necessitated by the exterior surfaces clearly “appear[ing] even/flush.” Bjorn,
`
`16-17.
`
`Bjorn, 16-17 (annotated)
`
`
`
`Similarly in Presidio, the figures-at-issue clearly showed that the first and
`
`second ends of the electrode layer [green] were “aligned with” and “spaced inwardly
`
`from” the first and second ends, respectively, of the dielectric layer [blue] and thus
`
`- 15 -
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`
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`Case IPR2019-00708
`Patent RE46,137
`constituted a disclosure thereof. Presidio, 9-10 (discussing mapping), 12 (finding
`
`disclosure).
`
`Spaced-Apart
`Second Ends
`
`Aligned
`First Ends
`
`Presidio, 9-10 (annotated)
`
`
`
`Here, as in Nguyen, Giroux’s FIG. 3 “would not have conveyed that” the upper
`
`and lower exposed portions of piston 110 span different distances as Petitioner
`
`contends because “[t]he difference …, if any, as depicted in [Giroux’s FIG. 3] is so
`
`slight as to be barely perceptible.” Ex parte Nguyen, Appeal 2018-001801, slip op.
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`(“Nguyen”), 5-6 (P.T.A.B. Oct. 22, 2018); Fleckenstein, ¶¶121-122; compare U.S.
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`Pat. App. No. 13/975,329, FIG. 31 (cited in Nguyen, 5-6) with Dr. Fleckenstein’s
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`“annotated1.” And unlike the figures in Petitioner’s cases and Nguyen, Giroux’s
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`- 16 -
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`
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`Case IPR2019-00708
`Patent RE46,137
`FIG. 3 contains errors that are significantly larger than the size difference Petitioner
`
`relies on, underscoring that—even more so than in Nguyen—FIG. 3 isn’t fairly a
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`disclosure thereof. Fleckenstein, ¶124. Petitioner’s attempt to distinguish Nguyen
`
`as limited to the assessment of written description support (Reply, 14) fails because
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`a figure is assessed in the same manner for written description and prior art
`
`disclosure. Compare Wolfensperger, 302 F.2d at 955 with In re Meng, 492 F.2d
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`843, 845, 847 (C.C.P.A. 1974).
`
`- 17 -
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`Case IPR2019-00708
`Patent RE46,137
`
`Small Difference
`
`Nguyen Figure
`(annotated)
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`- 18 -
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`Case IPR2019-00708
`Patent RE46,137
`
`Upper Exposed Area
`
`Small Difference
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`Housing 130
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`Lower Exposed Area
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`annotated1
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`
`
`Petitioner argues its position is supported by Dr. Fleckenstein’s statement,
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`made in reference to annotated1, that the difference in piston 110’s exposed areas is
`
`visible “to the naked eye.” Reply, 10, 12; EX1045, 176:2-178:2. But as Dr.
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`Fleckenstein explained, the issue isn’t whether the difference is visually perceptible,
`
`but the extent to which it is perceptible. Fleckenstein, ¶121 (not a disclosure when
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`“the size difference is difficult to identify upon visible inspection and, practically
`
`speaking, can only be detected using measurements); see also Bjorn, 16-17; Nguyen,
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`5-6 (size difference visible but “barely perceptible”). Dr. Fleckenstein’s use of
`
`computer-aided annotations to render the difference identifiable confirms, rather
`
`than undermines, his opinions. Fleckenstein, ¶¶108, 121-124.
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`- 19 -
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`
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`Case IPR2019-00708
`Patent RE46,137
`Petitioner next attempts to discount the errors in Giroux’s FIG. 3 based on
`
`Wolfensperger, asserting that Giroux’s FIGs. 4-5 and 8-12 provide “consistent
`
`disclosure of a biased piston” and implicitly criticizing Dr. Fleckenstein for
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`“offer[ing] no opinion” on FIGs. 5, 8, and 9. Reply, 13-14. But FIG. 3 was the only
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`portion of Giroux Petitioner relied on for its urging-claim grounds, Pet., 40-42, 62,
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`and Petitioner cannot properly rely on newly-cited portions of Giroux, 37 C.F.R.
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`§ 42.23(b). Regardless, Petitioner doesn’t explain why the newly-cited figures
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`disclose biased sleeves.
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`Giroux’s consistently inaccurate and “cartoonish” figures don’t meet the
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`Wolfensperger standard Petitioner relies on, which was premised on the drawings-
`
`at-issue being “detailed,” “not in the least sketchy or diagrammatic in character,”
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`and “carefully drawn” with “reasonable accuracy” such that the drawings could be
`
`measured (as shown in the court’s annotated figure below) to establish that the
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`groove width was 1-1/8" based on the 7/8" groove depth disclosed in the
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`specification. Wolfensperger, 302 F.2d at 957-59; Fleckenstein, ¶¶123-124;
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`ChambersDepo., 11:2-11. Notably, Wolfensperger distinguished its facts over a
`
`prior case in which—like here—the depicted dimensions could not be relied on
`
`because they were “so close that any difference in the minimum diameters … could
`
`be attributable to a draftsman’s error.” Wolfensperger, 302 F.2d at 957.
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`- 20 -
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