Weatherford International, LLC
`v.
`Baker Hughes Oilfield Operations, LLC
`
`IPRs2019-00708 and -00768
`U.S. Patent No. RE46,137
`
`Patent Owner’s Demonstratives Baker Hughes Ex. 2015
`
`Weatherford v. Baker Hughes
`IPR2019-00708
`
`
`v.
`Baker Hughes Oilfield Operations, LLC
`
`IPRs2019-00708 and -00768
`U.S. Patent No. RE46,137
`
`Patent Owner’s Demonstratives Baker Hughes Ex. 2015
`
`Weatherford v. Baker Hughes
`IPR2019-00708
`
`
`
`’708 IPR
`(Giroux)
`
`2
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Claim Construction | Claim 1
`Claim 1 “requires that the sleeve be capable of moving from the [first,] closed
`position to the [second,] open position in response to the piston’s exposure to
`passage pressure.” EX2001, ¶22 (cited in ’708 POR 5).
`1. The “first [,closed] position is the
`initial position with respect to the
`recited sleeve movement”
`capability. Id.
`2. UNCONTESTED: That sleeve
`movement capability is “connected
`… with that provided by the piston
`‘for moving said sleeve’ once it was
`exposed to ‘passage pressure.’”
`Id.; see also ’708 POR 6-7.
`
`3
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Claim Construction | PO: Ordinary Meaning in Context
`
`EX2003, 4
`
`EX2003, 5
`“Applying these meanings, the ‘first’ position is before the second position with
`respect to order, necessitating that the sleeve be capable of being in the first
`position before moving to the second position.” EX2001, ¶23 (cited in ’708
`POR 5-6).
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`4
`
`
`
`Claim Construction | Petitioner: Convention out of Context
`
`“[C]laim 1’s use of ‘first’ and ‘second’ to distinguish the positions of the sleeve
`‘is a common patent-law convention to distinguish repeated instances of an
`element or limitation.’” ’708 Reply 2 (quoting Free Motion Fitness).
`
`“Reciting a first position and a second position ‘should not in and of itself
`impose a serial or temporal limitation.’” ’708 Petition 22-23 (quoting 3M).
`
`“But [these] holding[s are] context dependent.” ’708 SR 1-2.
`
`5
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Claim Construction | Claim 1
`Unlike Free Motion’s first and second pivot points, 3M’s first and second
`patterns, and 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.” ’708 SR 1-2 (citing EX2001, ¶24).
`
`to
`for ‘first’ and ‘second’
`illogical
`“And a POSITA would have found it
`superfluously distinguish the positions. This is particularly true considering
`that the ordinary meanings of ‘first’ and ‘second’ supply otherwise
`missing information: which of the positions is the starting position with
`respect to the claimed capability of movement.” EX2001, ¶24.
`
`6
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Claim Construction | Specification
`
`EX1001, 1:59-63 (cited in ’708 POR 7)
`Interpreting “claim 1 to cover a sleeve without the capability to move from the
`closed position to the open position in response to the associated piston’s
`passage pressure exposure [would contravene] … the ’137 Patent’s explicitly
`stated invention.” EX2001, ¶26 (cited in ’708 POR 7).
`
`7
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Claim Construction | Specification
`
`EX1001, 1:11-20 (cited in ’708 POR 7-8)
`
`“[A] sleeve without the capability to move from the closed position to the open position in
`response to the associated piston’s passage pressure exposure … would have even
`fallen outside of the broadest statement of the ’137 Patent’s ‘FIELD OF INVENTION.’”
`EX2001, ¶26 (cited in ’708 POR 7-8).
`
`8
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Claim Construction | Specification
`
`Dr. Fleckenstein: This is “the
`purpose of
`the ’137 Patent’s
`invention,” and it
`“would not
`have been achievable if the ’137
`Patent’s … sleeve did not move
`from closed to open when
`actuated.” EX2001, ¶27 (cited
`in ’708 POR 8-9).
`Mr. Chambers:
`• “[P]roviding a flow path that enabled the initiation of the interventionless
`process” is “the problem addressed by the ’137 Patent.” EX1005, ¶50 (cited
`in ’708 POR 8).
`• “A POSITA knew that to replace perforating, the sliding sleeves had to be
`initially closed and then opened.”
`Id., ¶48; see also id.,¶¶78, 151 (each
`cited in ’708 POR 8-9).
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`EX1001, 2:6-10 (cited in ’708 POR 8)
`
`9
`
`
`
`Claim Construction | Specification
`
`on
`
`Poly-America (cited in ’708 SR 3)
`
`10 DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`’708 Reply 3:
`• “PO[]
`rel[ies]
`embodiment ….”
`or
`disclaimer
`no
`• “PO points
`to
`disavowal of initially-open sleeves ….”
`
`the
`
`preferred
`
`
`
`Claim Construction | Claim 20
`
`’708 Petition
`“Thus, the sleeve is initially open
`because actuating the sleeve
`downhole
`(applying
`passage
`pressure to expand the second
`chamber) would move
`the
`sleeve away from the second
`(open) position and toward the
`first
`(closed) position.”
`’708
`Petition 23-24.
`
`11 DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`Mr. Chambers
`
`EX2004, 38:1-3 (cited in ’708 POR 10)
`Dr. Fleckenstein
`“[T]he only movement recited in claim
`20 is ‘toward said second [open]
`position.’” EX2001, ¶32 (cited in ’708
`POR 10).
`
`
`
`Claim Construction | Claim 20
`Petitioner: Claim 20 requires a low-pressure closed chamber.
`’708 Petition
`initially open
`the sleeve is
`“Thus,
`the
`sleeve
`actuating
`because
`pressure
`to
`(applying
`downhole
`expand the second chamber) would
`move the sleeve away from the second
`(open) position and toward the first
`(closed) position.” ’708 Petition 23-24.
`’708 Reply
`“[I]n claim 20, expansion of the second
`chamber due to selective exposure
`closes the sleeve.” ’708 Reply 4.
`
`12 DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Claim Construction | Claim 20
`Patent Owner: Claim 20’s valve is initially-closed.
`
`illogically
`have
`not
`“A POSITA would
`interpreted claim 20 to recite an initially-
`open sleeve that is explicitly not the ’137
`Patent’s invention, falls outside of its Field
`of Invention, and cannot fulfill its purpose.”
`EX2001, ¶33 (cited in ’708 Reply 10).
`pistons,
`“Bringing
`their
`experience with
`pressures, and cross-sectional areas to bear, a
`POSITA would have understood that all
`this
`requires is that the pressure-area force in the
`second chamber be less than the pressure-
`area force in the closed chamber.” Id.
`
`13 DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`EX2001, ¶35 (cited in ’708 POR 12-13)
`
`
`
`Claim Construction | Claim 20
`
`’708 SR 4-5
`14 DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`EX1045, 43:2-13
`
`
`
`Claim Construction | Claim 20
`Dr. Fleckenstein
`An atmospheric chamber:
`• “is not included in the ’137 Patent’s statement of its invention.”
`• “is not recited in any of the ’137 Patent’s independent claims.”
`• “is neither a necessary aspect of nor how the ’137 Patent addresses [the]
`flexing or bending problem” identified in its statement of the invention, because
`that problem “would have been present for sleeves that used … high-pressure
`chambers,” and the ’137 Patent’s solution to it “can be applied with or without
`an atmospheric chamber.”
`
`“Claims 9 and 14 recite chambers having lower-than-hydrostatic pressures, [so]
`the claims from which they depend—claims 8 and 13—cover chambers having
`higher-than-hydrostatic pressures.”
`
`EX2001, ¶¶37-39 (cited in ’708 POR 13)
`
`15 DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Claim Construction | Claim 20
`Petitioner
`“[C]laim 19 (and claim 1 with the same language) cannot be construed narrowly
`to exclude Petitioner’s initially-open interpretation without rendering claim 20
`improperly dependent.” ’708 Reply 5.
`
`“But claim differentiation does not serve to broaden claims beyond their
`meaning in light of the patent as a whole, and it cannot override clear
`statements of claim scope found in the specification and prosecution history.”
`Poly-America (cited in ’708 SR 5).
`
`16 DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Claim Construction | Claim 20
`
`Low-Pressure Chamber
`The Preferred Embodiment
`
`Initially-Closed
`The Invention
`
`The Field of the Invention
`
`The Purpose of the Invention
`
`The Preferred Embodiment
`
`17 DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Ground 1 | Alternative Embodiment Is Not Initially Closed
`’708 Petition
`
`’708 Petition 12-13
`18
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Ground 1 | Alternative Embodiment Is Not Initially Closed
`
`Giroux Passage
`
`“[T]he Alternative Embodiment[]
`goes in the hole in an open
`position.” ’708 Petition 13 (citing
`Giroux, 6:39-41)
`
`But Giroux at 7:22-35 (the “Giroux
`Passage”) “discloses setting the
`Alternative Embodiment
`to an
`initially closed position.”
`’ 708
`Petition 13-14 (citing the Giroux
`Passage and EX1005, ¶64).
`
`19 DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Ground 1 | Alternative Embodiment Is Not Initially Closed
`Mr. Chambers
`
`EX2004, 49:8-17, 50:6-10, and 50:17-51:3
`(each cited in ’708 POR 26)
`
`20 DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Ground 1 | Alternative Embodiment Is Not Initially Closed
`’708 Reply 7: “Mr. Chambers’ deposition confirmed his declaration testimony (EX1005 ¶¶64,
`87-88) that Giroux expressly discloses the use of the tool in Figures 6-7 in the initially-closed
`position in the passage at 7:22-35. EX2004 49:18-50:5.”
`
`21 DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`EX2004, 49:18-50:10; EX1005, ¶64
`
`
`
`Ground 1 | Alternative Embodiment Is Not Initially Closed
`Dr. Fleckenstein
`
`22 DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`EX2001, ¶99 (cited in ’708 POR 26-27)
`
`
`
`Ground 1 | Alternative Embodiment Is Not Initially Closed
`’708 Reply 6-7
`
`Giroux Passage
`
`EX1045, 85:22-86:5 (cited in ’708 SR 6)
`
`23 DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Ground 1 | Alternative Embodiment Is Not Initially Closed
`Reply 8-9
`
`Giroux Passage
`
`To “open … the bypass fluid path more
`than once” precludes open-only
`segments. ’708 SR 8.
`
`24 DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Ground 1 | Alternative Embodiment – The O/C Segment?
`
`Dr. Fleckenstein
`
`Mr. Chambers
`
`EX2001, ¶100 (cited in ’708 POR 27-28)
`25 DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`EX2004, 53:11-54:4
`(cited in ’708 POR 28)
`
`
`
`Ground 1 | Alternative Embodiment – The O/C Segment?
`
`’708 Reply
`• The added “functionality [of the O/C Segment] does not avoid anticipation in
`comprising claims.” ’708 Reply 7-8.
`• “Moreover, ‘prior art patents are presumed enabled ….’” ’708 Reply 8.
`
`’708 SR
`
`• “The Petition relies on the Alternative Embodiment, not the O/C Segment.”
`’708 SR 7.
`• “[E]ven if Petitioner had an O/C Segment-based anticipation challenge, it
`would fail because the O/C Segment’s structure is unexplained.” ’708 SR 7-8.
`
`26 DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Ground 1 | Petitioner’s Anticipating “Urging” Challenge Fails
`• Petitioner’s anticipation challenge to the Urging Claims based on
`Giroux’s Alternative Embodiment fails:
`• Giroux’s piston 110 is not, or at least does not necessarily have the same
`configuration as, the second piston of the O/C Segment described in the
`Giroux Passage (7:22-35). ’708 POR Secs. VII.A and V (citing, e.g., Net
`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008));
`EX2004, 49:8-17, 50:6-10, 50:11-51:3, 53:11-20; Giroux, 7:22-35;
`EX2001, ¶¶100, 114.
`
`27
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | No Reason To Select Giroux
`• Petitioner’s starting point: a POSITA would have been motivated
`to avoid perforating the first zone of a cased and cemented
`wellbore at the beginning of a multistage fracturing job. ’708 POR
`16, 30.
`
`• What Petitioner’s motivation required:
`•
`run tool into the hole closed,
`•
`cement tool to the wellbore,
`•
`actuate the tool to open. ’708 POR 16-17, 30.
`
`28
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 – No Reason To Select Giroux
`Grounds 2 and 3 | No Reason To Select Giroux
`• Giroux undisputedly does not disclose such a tool:
`
`Petitioner requires the tool:
`runs into the hole closed
`is cemented to
`the wellbore
`actuates to open
`
`Giroux’s tool
`runs into the hole open
`is not cemented to
`the wellbore
`actuates to close
`’708 POR 17, 30; ’708 SR 10.
`• Thus, Petitioner’s hindsight-based reliance on Giroux fails. ’708
`POR 17-18, 30.
`
`29
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | Inoperative for Its Intended Purpose
`• Giroux’s tool’s undisputed intended purpose: surge pressure
`reduction. ’708 POR 18-20, 30-31; ’708 SR 11.
`
`• Testimony from both experts shows that modifying Giroux’s tool to
`be run into the hole closed would have rendered it inoperative for
`its intended purpose. ’708 POR 22-24, 30-31.
`
`• Thus, Petitioner’s challenges fail. ’708 POR 22-23 (citing In re
`Gordon, 733 F.2d 900, 901-02 (Fed. Cir. 1984); Plas-Pak Indus.,
`Inc. v. Sulzer Mixpac AG, 600 F. App’x 755, 757-58 (Fed. Cir. 2015)
`(non-precedential)), 30-31.
`
`30
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | Petitioner’s Reply Arguments Fail
`
`• Dr. Fleckenstein agreed Giroux
`discloses hydraulically-actuated
`sliding sleeves. ’708 Reply 17.
`
`• But Dr. Fleckenstein did not change
`his opinion that a POSITA would not
`have been motivated to use a
`Giroux tool to satisfy Petitioner’s
`motivation. ’708 SR 9.
`
`31
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | Petitioner’s Reply Arguments Fail
`• Mr. Chambers did not allege in EX1005 ¶¶151-159 that a POSITA would have
`looked to Giroux because it disclosed sliding sleeves with the same features
`(an atmospheric chamber on one side of the piston along with a rupture disc
`and a shear pin on the other side) discussed in EX1009. ’708 SR 10; ’708
`Reply 18.
`
`• Mr. Chambers did not allege in EX1005 ¶¶41-52 that a POSITA knew to use
`Giroux to satisfy Petitioner’s motivation; Mr. Chambers’ argument was based
`on EX1009. ’708 SR 10; ’708 Reply 18.
`
`• Mr. Chambers’ conclusory EX1005 ¶152 testimony about a POSITA finding a
`“finite number of identified, predictable solutions, with a reasonable expectation
`of success” did not apply to Giroux. ’708 SR 10-11; ’708 Reply 19.
`
`32
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | Petitioner’s Reply Arguments Fail
`•
`In KSR, the Court did not address an argument that mounting a sensor to
`Asano’s pedal would have rendered the pedal inoperative for its intended
`purpose. ’708 SR 11; ’708 Reply 19.
`
`•
`
`In Yeda, the Pinchasi reference’s RRMS treatment regimen was almost identical
`to the claimed RRMS treatment regimen, and Pinchasi’s suitability as the primary
`reference was waived. ’708 SR 11; ’708 Reply 19.
`
`• Petitioner has no answer for the similarity between this case and Gordon. ’708 SR
`12.
`
`•
`
`In Presens, the Weigl reference was not the subject of a modification that
`changed its principle of operation. ’708 SR 12; ’708 Reply 20.
`
`33
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | Petitioner’s Reply Arguments Fail
`• Petitioner’s attorney arguments are inadequate:
`
`•
`
`•
`
`Dr. Fleckenstein explained how a
`POSITA would interpret Giroux’s
`teaching that “[a]dditional opening
`and closing segments could be
`mated together in order to satisfy
`the needs of the operators.”
`’708 POR 28-29; ’708 SR 12;
`’708 Reply 20.
`
`Petitioner’s attorney argument about the meaning of the same phrase cannot
`overcome Dr. Fleckenstein’s explanation. ’708 SR 12 (citing Gemtron Corp. v.
`Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009)); ’708 Reply 20.
`
`34
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | Petitioner’s Reply Arguments Fail
`• Petitioner’s attorney arguments are inadequate (cont’d):
`
`• Petitioner did not demonstrate EX1032 (a Dr. Fleckenstein patent)
`is prior art.
`
`• Petitioner did not explain how any tool in EX1032 is similar to any
`Giroux tool.
`
`• Petitioner did not explain how any EX1032 statement is
`inconsistent with any Dr. Fleckenstein opinion. ’708 SR 12; ’708
`Reply 20.
`
`35
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | Petitioner’s “Urging” Challenge Fails
`• Petitioner did not establish a POSITA would view Giroux’s piston 110
`as biased:
`•
`Inaccurate: Giroux does not depict piston 110 accurately. ’708 POR Sec.
`VII.B.1.(b).
`
`36
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | Petitioner’s “Urging” Challenge Fails
`• Petitioner did not establish a POSITA would view Giroux’s piston 110
`as biased:
`
`•
`
`•
`
`Inconsistent: Giroux depicted the
`tool inconsistently.
`’708 POR Sec. VII.B.1.(b).
`
`Inaccurate + inconsistent =
`unreliable. ’708 POR 42-43
`(citing EX2001, ¶¶119-120).
`
`37
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | Petitioner’s “Urging” Challenge Fails
`•
`Petitioner did not establish a POSITA
`would view Giroux’s piston 110 as biased:
`•
`The small size difference lacks the
`clarity required to constitute the
`alleged teaching to a POSITA. ’708 POR
`43-49; ’708 SR 16-19.
`
`38
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | Petitioner’s “Urging” Challenge Fails
`• Petitioner did not establish a POSITA would view Giroux’s piston 110
`as biased:
`• Dr. Fleckenstein examined the depiction of piston 110 across the Giroux figures
`on which Petitioner relied. EX2001, ¶¶115-124 (cited in ’708 POR Sec.
`VII.B.1.(b).
`
`• Mr. Chambers did not:
`
`39
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`EX2004, 9:8-24 (cited
`in ’708 POR 49).
`
`
`
`Grounds 2 and 3 | Petitioner’s “Urging” Reply Arguments Fail
`• Patent Owner used the approach endorses by Petitioner’s cases to
`show that the size difference on which Petitioner relies is not
`sufficiently clear to be a disclosure to a POSITA. ’708 SR 13-14 (citing
`’708 POR 43-49; EX2001, ¶¶121-124).
`
`• Petitioner’s cases do not help it:
`
`•
`
`In Bjorn, Presidio, Elder, and Roth, the disputed features were depicted clearly
`and/or corroborated by written disclosure, unlike this case. ’708 SR 14-16.
`
`• Nguyen cannot be distinguished on the basis that the issue was written
`description support. ’708 SR 17; ’708 Reply 14.
`
`40
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | Petitioner’s “Urging” Reply Arguments Fail
`• Petitioner’s cases do not help it (cont’d):
`• Giroux’s consistently inaccurate and “cartoonish” figures do not meet the
`Wolfensperger standard stressed by Petitioner, which was premised on the
`drawings being:
`•
`“detailed”
`•
`“not in the least sketchy or diagrammatic in character,” and
`•
`“carefully drawn” with “reasonable accuracy” such that the drawings could
`be measured to establish that the groove width was 1-1/8" based on the
`7/8" groove depth disclosed in the specification.
`’708 SR 20; ’708 Reply 13-14.
`
`41
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | Petitioner’s “Urging” via Obviousness Fails
`• No disclosure: Petitioner fails to present a prior art reference that
`explicitly teaches biasing a sleeve such that passage pressure urges
`the sleeve toward its initial position. ’708 POR 50.
`
`• Petitioner’s reliance on the background discussion in the ’137 Patent fails
`because that sleeve is biased toward the actuated, not initial, position. Id.
`
`•
`
`Improper to extrapolate the urged-closed limitations from the broader
`concept of “[u]sing … differential force” without objective documentary
`evidence. Id., 51 (citing Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355,
`1361-62, 1365-66 (Fed. Cir. 2016)).
`
`42
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | Petitioner’s “Urging” via Obviousness Fails
`• Petitioner’s “combine prior art elements to yield a predictable results”
`rationale fails. ’708 POR 51-52.
`
`• Repurposing the actuation technique disclosed in the background of the ’137
`Patent would have been more than more than simply incorporating a design
`feature from prior tools to work in the same way. Id., 51-52 (citing EX2001,
`¶127).
`
`• Petitioner’s failure to provide one prior art example is fatal to this KSR
`rationale because the established function on which it relies (sleeve
`actuation) is different from the function it seeks to establish (helping maintain
`the sleeve in its initial position). Id., 52 (citing and quoting KSR and
`Nautilus).
`
`43
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | Petitioner’s “Urging” via Obviousness Fails
`• Hindsight: Petitioner’s citation to the ’137 Patent and assertion that a
`POSITA would have urged Giroux’s sleeves to their initial position “to
`address the same ‘need’ identified by the patentee” is legally
`inadequate hindsight. ’708 POR 53 (citing and quoting Interconnect
`Planning and citing W.L. Gore).
`
`44
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | Petitioner’s “Urging” via Obviousness Fails
`• No showing of a premature actuation concern: Petitioner fails to
`adequately explain why Giroux’s piston 110 is at risk of premature
`actuation, let alone due to undefined “pressure events.” ’708 POR 53-
`54 (citing and quoting Nuvasive), 55-58.
`
`• EX1005 ¶163 makes no mention of “pressure events.” Id., 54.
`
`• Uncited EX1005 ¶160 alludes to an “unforeseen pressure spike,” but does
`not define it or explain how it would prematurely shift Giroux’s piston 110. Id.
`
`• A passage pressure surge would not shift an unbiased piston 110. Id.
`
`45
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | Petitioner’s “Urging” via Obviousness Fails
`• No showing of a premature actuation concern (cont’d):
`
`• Piston 110 is already designed to resist premature actuation because
`otherwise it would not work as intended. Id., 54-55.
`
`1) There is already a rupture disc 120. Id., 55 (citing EX2004, 86:1-3).
`
`EX1009 3 considered rupture discs a suitable alternative to shear pins to
`address “[a]ccuracy of actuation.” Id., 55.
`
`46
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | Petitioner’s “Urging” via Obviousness Fails
`• No showing of a premature actuation concern (cont’d):
`
`• Piston 110 is already designed to resist premature actuation (cont’d):
`
`2) Piston 110 is already held in place by a shear pin 125 and does not
`move until the pin is sheared (id., 55 (citing EX2004, 58:9-59:11, 64:14-
`66:22)), providing a backup to premature rupture disc failure (id., 55
`(citing EX2004, 63:13-15, 64:14-66:22)).
`
`47
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | Petitioner’s “Urging” via Obviousness Fails
`• No showing of a premature actuation concern (cont’d):
`
`•
`
`Piston 110 is already designed to resist premature actuation (cont’d):
`
`3) Giroux’s chambers 109 and 113 are both atmospheric, leaving little
`motivation—considering shear pin 125—for biasing. ’708 POR 57 (citing
`EX2004, 94:24-95:23).
`
`4) And seal friction would also have held piston 110 in place. Id., 57 (citing
`EX2004, 59:2-7, 71:15-19).
`
`48
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | Petitioner’s “Urging” via Obviousness Fails
`
`• A POSITA would not have used sleeve biasing regardless: Petitioner’s
`evidence shows a POSITA would have used shear pins. ’708 POR 58-
`60 (citing Par Pharm., Inc. v. Novartis AG, Case IPR2016-00084, Paper
`73 at 23-25 (Jan. 11, 2018)).
`
`• Petitioner has no evidence indicating biasing was a known option for
`preventing premature shifting of sliding sleeves. Id., 58.
`
`49
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | Petitioner’s “Urging” via Obviousness Fails
`
`• A POSITA would not have used sleeve biasing regardless (cont’d):
`
`•
`
`Petitioner’s expert testified shear pins were “[v]ery common in the industry” and
`“known to work” to “prevent[] premature shifting.” Id. (citing EX2004, 84:11-
`85:4).
`
`50
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | Petitioner’s “Urging” via Obviousness Fails
`
`• A POSITA would not have used sleeve biasing regardless (cont’d):
`
`•
`
`The evidence on which Petitioner and Mr. Chambers rely reflect that a
`POSITA would have used shear pins. ’708 POR 58.
`
`• Giroux, 5:60-64 (set pin 125 holds piston 110)
`• EX1009, 3 (uses shear pins)
`• EX1010 (Hofman), 2:39-49 (uses shear pins, springs, and seals)
`• EX2010 (’768 IPR EX1023; Holcombe), 5:26-31 (shear pin)
`• EX2011 (’768 IPR EX1025; Xu), 2:5-11 (shear screw or collet)
`• EX2012 (’768 IPR EX1026; Patel ’186), 10:38-45 (shear pins)
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`51
`
`
`
`Grounds 2 and 3 | Petitioner’s “Urging” via Obviousness Fails
`
`• A POSITA would not have used sleeve biasing regardless (cont’d):
`
`• Shear pins were simple, reliable, and readily adjustable. ’708 POR 59.
`
`• A pressure surge that prematurely ruptured Giroux’s disc 120 would not
`have motivated a POSITA to bias piston 110 to the initial position because,
`once that disc ruptured, there would no longer have been a net force acting
`to prevent piston 110 from shifting. Id. (citing EX2004, 93:19-94:7 and
`EX2001, ¶161).
`
`• By contrast, a shear pin would have continued to resist sleeve movement
`until it broke. Id. (citing EX2001, ¶¶161-62).
`
`52
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | Petitioner’s “Urging” via Obviousness Fails
`
`• Petitioner’s obvious-to-try rationale is defective: because there is no
`evidence of a known sleeve that was “biased toward the initial
`position,” Petitioner’s argument fails. ’708 POR 60.
`
`53
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | Petitioner’s “Urging” via Obviousness Fails
`
`• Dr. Fleckenstein’s testimony did not cure Petitioner’s shortcomings.
`’708 SR 22-23.
`
`• Dr. Fleckenstein testified that it was known that a malfunction resulting in
`premature actuation was probably going to add cost. EX1045, 109:6-13.
`
`• But that testimony did not relieve Petitioner of its burden to provide a
`reasoned explanation why a POSITA would have:
`
`1) understood Giroux’s tool to be at risk of such a malfunction; and
`
`2) used biasing to address that. ’708 SR 22 (citing Nuvasive).
`
`54
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | Petitioner’s “Urging” via Obviousness Fails
`
`• Dr. Fleckenstein’s testimony did not cure Petitioner’s shortcomings
`(cont’d):
`• Patent Owner demonstrated the deficiencies of Petitioner’s “pressure
`events” and shear-pin-failure rationales (Pet., 64; ’708 POR 53-60).
`’708 SR 22.
`• And Petitioner’s reliance on EX1009 hurts Petitioner because it addressed
`inaccurate actuation of an annulus-referenced tool with a passage-
`referenced tool. ’708 SR 22 (citing EX1009, 2-3; EX2001, ¶144).
`
`55
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | Petitioner’s “Urging” via Obviousness Fails
`
`• Dr. Fleckenstein’s testimony did not cure Petitioner’s shortcomings
`(cont’d):
`
`• Dr. Fleckenstein’s testimony that biasing “will help to … hold[ the sleeve]
`closed” was about the ’137 Patent’s teachings. ’708 SR 23 (citing EX1045,
`108:4-109:5; EX2001, ¶105).
`
`56
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | Petitioner’s “Urging” via Obviousness Fails
`
`• Petitioner’s new shear pin evidence does not cure its shear-pin-failure
`rationale. ’708 SR 23.
`
`• Petitioner’s shear-pin-failure rationale
`should be given little weight in view
`of Mr. Chamber’s admission that he
`“do[es]n’t really know exactly how
`shear pins fail” and “does not have
`that experience.” ’708 SR 23 (citing
`EX2002, 78:25-79:16).
`
`57
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`[1/8"]
`
`
`
`Grounds 2 and 3 | Petitioner’s “Urging” via Obviousness Fails
`
`• Petitioner’s new shear pin evidence does not cure its shear-pin-
`failure rationale (cont’d):
`•
`EX1034 concerns premature shear pin failure caused by actuation forces, a
`concern applicable to Giroux only when its barrier ruptures and therefore is not
`curable by biasing. ’708 SR 23 (citing EX2001, ¶161).
`EX1035 states shear pins work “reasonably well” in “many situations” and uses
`dogs, like in EX1036, to mitigate shear pin failure because—in its particular
`application—the string is lowered and brought to an abrupt stop.
`•
`Petitioner does not attempt to show Giroux’s tool faces the same issue.
`•
`And Giroux’s consistent concern about a failure to actuate indicates it does
`not. ’708 SR 23.
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`•
`
`58
`
`
`
`Grounds 2 and 3 | The New Tools Are Improper New Evidence
`
`’708 POR 50: “Petitioner fails to present a single prior art reference that explicitly
`teaches biasing a sleeve such that passage pressure urges the sleeve toward its
`initial position.”
`
`’708 Reply 21: “But even if a POSITA would not have recognized Giroux’s
`disclosure, PO itself publicly disclosed urged-closed sleeves on its tools in the
`late 1990s.”
`
`59 DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | New Tools Not Biased to Prevent
`Premature Actuation
`
`’708 POR 59-60: “With no objective evidence that biasing was an accepted
`solution for premature actuation, and consistent recognition shear pins were,
`Petitioner’s allegation that biasing would have been obvious should fail.”
`
`’708 Reply 24: “PO included urged pistons on its own tools that also included
`rupture discs and shear pins, completely undermining its assertion that a POSITA
`would not have done so.”
`
`’708 SR 27: “Petitioner failed to show [the New Tools’] biased sleeves
`prevent premature actuation.”
`
`60 DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | New Tools Not Biased to Prevent
`Premature Actuation
`
`Mr. Chambers Reply Declaration Testimony …
`
`EX1046, ¶13; see also id., ¶¶20 and 27 (each cited in ’708 Reply 24)
`
`61 DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | New Tools Not Biased to Prevent
`Premature Actuation
`
`… Is Unsupported
`
`EX2013, 22:19-23:22 (cited in ’708 SR 27)
`
`62 DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | New Tools Not Biased to Prevent
`Premature Actuation
`
`… Is Unsupported
`
`EX2013, 79:11-16 (cited in ’708 SR 27)
`
`“[B]ut it also depends on the well condition” and “it is very much a function of what the application
`of these tools are[;]” “a POSITA would need to look at the specific circumstances which they’re
`going to be run.” Id., 25:16-26:12 (cited in ’708 SR 27).
`
`63
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | New Tools Not Biased to Prevent
`Premature Actuation
`
`… Is Unsupported
`
`Id., 25:22-26:3 (cited in ’708 SR 28)
`
`EX2013, 6:24-7:10 (cited in ’708 SR 28)
`
`64
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | New Tools Not Biased to Prevent
`Premature Actuation
`
`… Is Unsupported
`
`Doesn’t address pressure spikes or
`shear pin failures (’708 IPR)
`
`Doesn’t address pressure surges,
`momentum changes, vibrational
`changes, or frictional changes (’768
`IPR)
`
`65
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`EX2013, 22:2-10 and 39:4-10 (cited in ’708 SR 28)
`
`
`
`Grounds 2 and 3 | New Tools Not Biased to Prevent
`Premature Actuation
`Mr. Chambers’s “Premature Rupture Disc Failure” Fails
`
`With salt water in the annulus and passage (’708 SR 28-29) …
`
`66
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | New Tools Not Biased to Prevent
`Premature Actuation
`Mr. Chambers’s “Premature Rupture Disc Failure” Fails
`
`EX1027, 7; see also EX1029, 6.
`
`“[T]he shear pins and friction provide about 6,700 lbf and 7,240 lbf of
`resistance for EX1027 and 1029, respectively, short of that required for the
`New Tools’ biasing to prevent premature actuation.” ’708 SR 31-32.
`
`67
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | New Tools Are Not Printed Publications
`• The New Tools are not printed publications. ’708 SR 25-26.
`
`• Mr. Richards’ declaration contention: “Baker Hughes was handing out [an
`ElecTech CD] to all conference attendees who wanted one” at May 1998
`OTC. EX1037, ¶¶5-7; ’708 Reply 21.
`
`• Mr. Richards’ deposition testimony:
`
`•
`•
`•
`
`only personal knowledge of himself receiving CD
`he asked for a “new” version of it specifically
`he was a then-BH customer representative and received CD from someone
`who knew same
`
`68
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Grounds 2 and 3 | New Tools Are Not Printed Publications
`• The New Tools are not printed publications (cont’d):
`
`• Mr. Richards’ deposition testimony (cont’d):
`
`•
`•
`
`his then employer would have treated BH’s confidential info with care
`in contrast to being able to pick up all the product sheets he wanted, “you
`needed to ask for” the CD
`EXS1027-1029 were “tech units” never handed out individually at any OTC
`•
`• EXS1027-1029 are marked confidential
`
`• EXS1027-1029 contain information absent from the closest public material
`Mr. Richards could find
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`69
`
`
`
`Grounds 2 and 3 | New Tools Are Not Printed Publications
`• The New Tools are not printed publications (cont’d):
`
`•
`
`EXS1027-1029:
`
`•
`
`•
`•
`
`are marked confidential
`contain information absent from the closest public material Mr. Richards
`could find
`are just like the tech units and binder the CD replaced that Mr. Richards:
`•
`received and treated (and understood others to treat) as confidential
`during his time working at Baker Oil Tools, and turned in when he quit,
`prior to the 1998 OTC
`• Mr. Richards never disclosed any tech unit to anyone prior to now.
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`70
`
`
`
`’768 IPR
`(Patel ’427)
`
`71 DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
`Ground 1 | Anticipation Was Not Conceded
`
`’768 POR 2-3 (citing
`EX2004, 96:2-97:17
`(discussing ’137 Patent
`FIG. 1)).
`
`72
`
`DEMONSTRATIVE EXHIBITS – NOT EVIDENCE
`
`
`
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