Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 8
`Entered: September 5, 2019
`
`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 E
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, JON B. TORNQUIST, and
`RYAN H. FLAX, Administrative Patent Judges.
`WEATHERLY, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`I.
`
`INTRODUCTION
`
`A. BACKGROUND
`Weatherford International, LLC (“Petitioner”) filed a petition
`(Paper 2, “Pet.”) to institute an inter partes review of claims 1–44 (the
`“challenged claims”) of U.S. Patent No. RE46,137 E (Ex. 1001, “the
`’137 patent”). 35 U.S.C. § 311. Baker Hughes Oilfield Operations, LLC
`
`
`Tel: 571-272-7822
`
`Paper 8
`Entered: September 5, 2019
`
`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 E
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, JON B. TORNQUIST, and
`RYAN H. FLAX, Administrative Patent Judges.
`WEATHERLY, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`I.
`
`INTRODUCTION
`
`A. BACKGROUND
`Weatherford International, LLC (“Petitioner”) filed a petition
`(Paper 2, “Pet.”) to institute an inter partes review of claims 1–44 (the
`“challenged claims”) of U.S. Patent No. RE46,137 E (Ex. 1001, “the
`’137 patent”). 35 U.S.C. § 311. Baker Hughes Oilfield Operations, LLC
`
`
`
`IPR2019-00708
`Patent RE46,137 E
`(“Patent Owner”) did not file a Preliminary Response. Institution of an inter
`partes review is authorized by statute when “the information presented in the
`petition filed under section 311 and any response filed under section 313
`shows that there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`§ 314(a). Based on our review of the record, we conclude that Petitioner is
`reasonably likely to prevail with respect to at least one of the challenged
`claims.
`Petitioner contends that the challenged claims are unpatentable under
`35 U.S.C. §§ 102 and/or 103 based on the following grounds (Pet. 25–75):
`
`Reference(s)
`
`Giroux1
`
`Claims challenged
`Basis
`§ 102(b) 1, 2, 4–7, 12–25, 31–35, and
`41–44
`
`Giroux and AAPA2
`
`§ 103
`
`Giroux, Patel ’853,3 and AAPA § 103
`
`1–44
`
`1–44
`
`On April 24, 2018, the Supreme Court held that, under 35 U.S.C.
`§ 314, the Office may not institute review of fewer than all claims
`challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60
`(2018). For the reasons expressed below, we determine that Petitioner has
`demonstrated a reasonable likelihood of establishing that at least
`independent claims 1, 19, and 21 are unpatentable. In accordance with the
`
`
`1 U.S. Patent No. 6,834,726 B2 (Ex. 1003, “Giroux”).
`2 Applicant admitted prior art (“AAPA”).
`3 U.S. Patent No. 5,819,853 (Ex. 1004, “Patel ’853”).
`
`2
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`IPR2019-00708
`Patent RE46,137 E
`SAS decision and Office guidance,4 we institute an inter partes review of all
`challenged claims of the ’137 patent on all grounds alleged by Petitioner.
`B. RELATED PROCEEDINGS
`Petitioner has identified as a related proceeding the co-pending district
`court proceeding of Baker Hughes Oilfield Operations, LLC v. Weatherford
`International, LLC, Civil Action No. 4:18-cv-4797 (S.D. Tex. 2018). Pet. 4.
`Petitioner has also identified as a related matter its petition for inter partes
`review of the ’137 patent in IPR2019-00768. See id.
`C. THE ’137 PATENT
`The ’137 patent is a reissued version of U.S. Patent No. 8,555,960 B2,
`and claims priority to an application filed July 29, 2011. Ex. 1001, cover
`page. The ’137 patent is directed to “a pressure actuated sleeve used in a
`cementing assembly that is responsive to tubing pressure to open a port.” Id.
`at 1:14–16. Petitioner’s annotated and colorized versions of Figures 1 and 2,
`reproduced below, illustrate the manner in which the sleeve operates.
`
`
`4 “Guidance on the impact of SAS on AIA trial proceedings” (Apr. 26,
`2018), accessible at https://www.uspto.gov/patents-application-
`process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial
`(last accessed Oct. 2, 2018) (“At this time, if the PTAB institutes a trial, the
`PTAB will institute on all challenges raised in the petition,” and “for
`pending trials . . . the panel may issue an order supplementing the institution
`decision to institute on all challenges raised in the petition.”).
`
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`IPR2019-00708
`Patent RE46,137 E
`
`
`
`Annotated Figure 2 is a cross-
`Annotated Figure 1 is a cross-
`sectional view of the sleeve
`sectional view of the sleeve
`illustrating open ports 6. Id.
`illustrating closed ports 6. Id.
`at 2:35–36.
`at 2:33–34.
`The embodiment illustrated above includes movable sleeve 3 (green)
`with integrated piston 16 (purple) that is exposed to two atmospheric
`chambers (upper chamber 12 (yellow) and lower chamber 19 (light blue)).
`Burst disk 15 (red), while intact, isolates upper chamber 12 (yellow) from
`pressure in the central bore of sleeve 3 (green). Id. at 3:51–53, Figure 1.
`When pressure within that bore rises above a predetermined threshold, burst
`
`4
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`IPR2019-00708
`Patent RE46,137 E
`disk 15 (red) ruptures and high pressure enters chamber 12 (yellow) such
`that the pressure in upper chamber 12 (yellow) becomes greater than the
`pressure within lower chamber 19 (light blue). Id. at 3:59–4:2. This
`difference in pressure results in net force being applied to the upper surface
`of piston 16, which drives sleeve 3 downward until the lower surface of
`piston 16 contacts lock ring retainer 20. Id. at 4:2–7. When sleeve 3 is in
`this position, ports 6 in sleeve 3 and housing 2 align so that fluid from within
`the bore can impinge upon the casing to perforate the casing without
`requiring a perforating gun. Id. at 2:6–10.
`Claims 1, 19, 21, 23, and 34 are the independent claims of the
`’137 patent. Id. at 4:42–7:4. Claim 1, which is illustrative, recites:
`1. A valve for subterranean use, comprising:
`[a] a housing having a passage therethrough and a port in a wall
`thereof;
`[b] a sleeve having a flow path therethrough movably mounted
`in said passage of said housing between a first position where
`said port is closed and a second position where said port is at
`least in part open;
`[c] a piston associated with said sleeve for moving said sleeve,
`said piston selectively isolated from passage pressure until a
`predetermined pressure is reached.
`Id. at 4:42–51 (with letters [a]–[c] added to aid discussion).
`II. ANALYSIS
`A. CLAIM INTERPRETATION
`For petitions filed after November 13, 2018, such as the one in this
`case, we interpret claims in the same manner used in a civil action under
`35 U.S.C. § 282(b) “including construing the claim in accordance with the
`ordinary and customary meaning of such claim as understood by one of
`
`5
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`IPR2019-00708
`Patent RE46,137 E
`ordinary skill in the art and the prosecution history pertaining to the patent.”
`37 C.F.R. § 42.100(b) (2018).5 Only terms that are in controversy need to
`be construed, and then only to the extent necessary to resolve the
`controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868
`F.3d 1013, 1017 (Fed. Cir. 2017).
`Petitioner contends that the phrase “a first position where said port is
`closed and a second position where said port is at least in part open” as
`recited in claims 1–22 does not include a “temporal limitation” in which the
`valve must be in the closed (first) position before the valve is actuated and in
`the open (second) position after the valve is actuated. Pet. 22–25. For the
`purposes of this Decision, we agree with Petitioner and analyze claims 1–22
`in view of the prior art accordingly. However, the interpretation of this
`phrase remains an open issue for trial.
`B. LEGAL STANDARDS
`Petitioner challenges the patentability of claims 1–44 on the grounds
`that the claims are either anticipated or obvious in light of the following
`references: Giroux alone or in combination with Patel ’853 and AAPA. Pet.
`25–75. “A claim is anticipated only if each and every element as set forth in
`the claim is found, either expressly or inherently described, in a single prior
`art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
`631 (Fed. Cir. 1987). The Supreme Court in KSR International Co. v.
`
`
`5 On October 11, 2018, the USPTO revised its rules to harmonize the
`Board’s claim construction standard with that used in federal district court.
`Changes to the Claim Construction Standard for Interpreting Claims in Trial
`Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340
`(Oct. 11, 2018) (to be codified at 37 C.F.R. pt. 42). This rule change applies
`to petitions filed on or after November 13, 2018. Id.
`
`6
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`IPR2019-00708
`Patent RE46,137 E
`Teleflex Inc., 550 U.S. 398 (2007), reaffirmed the framework for
`determining obviousness as set forth in Graham v. John Deere Co., 383 U.S.
`1 (1966). The KSR Court summarized the four factual inquiries set forth in
`Graham that we apply in determining whether a claim is reasonably likely to
`be unpatentable as obvious under 35 U.S.C. § 103(a) as follows:
`(1) determining the scope and content of the prior art, (2) ascertaining the
`differences between the prior art and the claims at issue, (3) resolving the
`level of ordinary skill in the pertinent art, and (4) considering objective
`evidence indicating obviousness or nonobviousness. KSR, 550 U.S. at 406.
`C. ANTICIPATION BY GIROUX
`1. Independent Claim 1
`Petitioner identifies in detail the manner in which Giroux describes
`every element of claim 1 and supplements its showing with testimony from
`Michael R. Chambers (Ex. 1005). Pet. 26–34. Petitioner relies upon the
`annotated and colorized versions of Giroux’s Figures 3 and 4, reproduced
`below, which use the same coloring scheme that Petitioner applied to
`Figures 1 and 2, above, of the ’137 patent to illustrate which components of
`Giroux correspond to components recited in claim 1.
`
`7
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`IPR2019-00708
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`
`
`
`Figure 4 is a cross-section view
`Figure 3 is a cross-section view
`illustrating tool 100 after actuation
`illustrating tool 100 before actuation
`with ports 122 closed. Id.
`with ports 122 open. Ex. 1003,
`at 3:66–4:2.
`3:61–65.
`Petitioner identifies Giroux’s piston 110 (purple and green) as the
`recited piston (purple) and sleeve (green).6 Pet. 29–33 (citing Ex. 1005
`
`6 Although claim 1 recites a sleeve and piston as separate components,
`Ex. 1001, 4:45–51, dependent claim 2, which depends directly from claim 1,
`
`8
`
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`IPR2019-00708
`Patent RE46,137 E
`¶¶ 85–90). Before actuation of Giroux’s tool 100, the top surface of
`piston 110 (purple) is exposed to atmospheric pressure in upper chamber 113
`(yellow) via flow path 150 (yellow). Id. at 32 (citing Ex. 1003, Figure 3).
`At all times, the bottom surface of Giroux’s piston 110 (purple) is exposed
`to atmospheric pressure in lower chamber 109. Id. at 10–11 (citing
`Ex. 1003, 5:54–57, Figures 2–4; Ex. 1005 ¶¶ 60–61).
`Rupture disk 120 isolates Giroux’s upper chamber 113 and thus
`piston/sleeve 110 from pressure in bore 124 until the bore pressure reaches a
`predetermined level and disk 120 bursts, which exposes chamber 113 to the
`higher bore pressure. Id. at 33 (citing Ex. 1003, 5:54–6:18; Ex. 1005 ¶ 91).
`The higher bore pressure forces Giroux’s integral piston/sleeve 110
`(purple/green) to slide downward from the open position of Figure 3 to the
`closed position of Figure 4. Id. at 33 (citing Ex. 1003, 5:54–6:18; Ex. 1005
`¶ 91). In the closed position, the lower portion of Giroux’s
`piston/sleeve 110 (green) obstructs ports 122. Id. at 31 (citing Ex. 1003,
`4:1–2, Figure 4).
`Based upon our review of the current record, we conclude that
`Petitioner has demonstrated a reasonable likelihood of establishing that
`Giroux anticipates claim 1.
`2. Independent Claim 19
`Petitioner contends that Giroux anticipates independent claim 19,
`which is similar to claim 1 except that it further recites that the “piston has a
`
`
`recites that the “piston is integral to said sleeve,” id. at 4:52–53. The
`Specification also notes that the “piston (16) can be integral to the sleeve (3)
`or a separate structure.” Id. at 4:30–31. Accordingly, we consider claim 1
`to encompass an integral piston and sleeve.
`
`9
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`IPR2019-00708
`Patent RE46,137 E
`first side that is selectively exposed to passage pressure and a second side
`opposite said first side exposed to a closed chamber in said housing; said
`first side of said piston is exposed to a second chamber in said housing.”7
`See id. at 45–46 (cross-referencing showings for similar limitations recited
`in dependent claims 6 and 12 at pages 36–37 of the Petition).
`Petitioner persuasively
`contends that the top of Giroux’s
`piston 110 (purple) constitutes the
`“first side” and that the bottom of
`piston 110 (purple) constitutes the
`“second side.” Petitioner’s
`contentions are illustrated in the
`annotated portion of Giroux’s
`Figure 3 reproduced at right. Id.
`at 36. Petitioner persuasively
`contends that chamber 113 constitutes
`the “second chamber” and chamber 109 constitutes the “closed chamber.”
`Id. at 45–46.
`Based upon our review of the current record, we conclude that
`Petitioner has demonstrated a reasonable likelihood of establishing that
`Giroux anticipates independent claim 19.
`3. Independent Claim 21
`Claim 21 differs from claim 1 by reciting a final limitation that “said
`sleeve is retained with a selectively defeated retainer until such time as said
`
`
`7 Ex. 1001, 5:42–56.
`
`10
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`IPR2019-00708
`Patent RE46,137 E
`piston is no longer isolated from passage pressure” instead of the final
`limitation of claim 1, which recites that the piston is “selectively isolated
`from passage pressure until a predetermined pressure is reached.” Compare
`Ex. 1001, 4:42–51 (claim 1), with id. at 5:61–6:6. Petitioner persuasively
`contends that Giroux’s piston set pin 125, which holds sleeve 3 in the open
`position but shears when piston 110 is exposed to sufficient bore pressure,
`constitutes the “selectively defeated retainer” of claim 21. Pet. 49 (citing
`Ex. 1003, 5:60–62, 6:12–14, 7:6–9; Ex. 1005 ¶ 124).
`Based on our review of the current record, we conclude that Petitioner
`has demonstrated a reasonable likelihood of establishing that Giroux
`anticipates independent claim 21.
`III. CONCLUSION
`For the reasons expressed above, we determine that Petitioner has
`demonstrated a reasonable likelihood of showing that Giroux anticipates at
`least independent claims 1, 19, and 21 of the ’137 patent. Petitioner
`contends that all remaining claims are unpatentable as either anticipated or
`obvious or both as set forth in the table in Part I.A above. Petitioner has
`supported all challenges to the claims with detailed argument and evidence.
`Pet. 25–75. Patent Owner, which did not file a Preliminary Response, has
`not yet advanced any arguments in response to Petitioner’s contentions.
`Based on Petitioner’s arguments and evidence and the lack of any response
`from the Patent Owner, we conclude that Petitioner has demonstrated that a
`trial of all challenges to all claims is appropriate. Accordingly, we institute
`an inter partes review of all challenged claims of the ’137 patent on all
`grounds alleged by Petitioner.
`
`11
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`IPR2019-00708
`Patent RE46,137 E
`We note that this Decision does not reflect a final determination on
`the patentability of any claim, and that the burden remains on Petitioner to
`prove unpatentability of each challenged claim. Dynamic Drinkware,
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
`IV. ORDER
`For the reasons given, it is:
`ORDERED that inter partes review is instituted of claims 1–44 with
`respect to all grounds of unpatentability set forth in the Petition; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ’137 patent is instituted commencing on the entry date
`of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4,
`notice is given of the institution of a trial.
`
`12
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`IPR2019-00708
`Patent RE46,137 E
`PETITIONER:
`Douglas R. Wilson
`ARMOND WILSON, LLP
`doug.wilson@armondwilson.com
`
`J. Boone Baxter
`HEIM PAYNE & CHORUSH, LLP
`bbaxter@hpcllp.com
`
`PATENT OWNER:
`Mark T. Garrett
`Eagle H. Robinson
`Jeremy Albright
`Michael Pohl
`NORTON ROSE FULBRIGHT US LLP
`mark.garrett@nortonrosefullbright.com
`eagle.robinson@nortonrosefullbright.com
`jeremy.albright@nortonrosefullbright.com
`michael.pohl@nortonrosefullbright.com
`
`13
`
`
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