`
`
`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 RESPONSE
`
`
`
`
`

`

`PATENT OWNER’S EXHIBIT LIST
`
`Case IPR2019-00708
`Patent RE46,137
`
`Exhibit
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`2006
`
`2007
`2008
`
`2009
`2010
`
`2011
`
`2012
`
`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 Chamber’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)
`
`
`Saheta
`Patel ’427
`
`Davitt
`Holcombe
`
`Xu
`
`Patel ’186
`
`
`
`
`
`i
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`

`

`TABLE OF CONTENTS
`
`Case IPR2019-00708
`Patent RE46,137
`
`B.
`C.
`
`B.
`
`I.
`II.
`
`V.
`
`INTRODUCTION ........................................................................................... 1
`PETITIONER’S CONSTRUCTION OF CLAIMS 1, 19,
`AND 21 IS INCORRECT ............................................................................... 3
`A.
`“First” and “Second” Have More Meaning
`Than Petitioner Asserts ......................................................................... 4
`Petitioner’s Construction Ignores the Invention ................................... 7
`Claim 20 Does Not Help Petitioner ...................................................... 9
`1.
`Claim 20 Isn’t Limited as Petitioner Proposes .......................... 9
`2.
`Claim 20 Covers an Initially-Closed Valve ............................. 11
`III. PETITIONER FAILS TO SHOW THAT GIROUX’S PREFERRED
`EMBODIMENT ANTICIPATES ANY CLAIM .......................................... 15
`IV. PETITIONER FAILS TO SHOW THAT IT WOULD HAVE BEEN
`OBVIOUS FOR ANY REASON TO MODIFY GIROUX’S
`PREFERRED EMBODIMENT TO BE INITIALLY CLOSED .................. 15
`A.
`Petitioner’s Motivation Would Not Have Led
`a POSITA to Giroux ............................................................................ 16
`Even If a POSITA Turned to Giroux, They Wouldn’t
`Have Been Motivated to Modify the Preferred Embodiment
`to Be Initially Closed ........................................................................... 18
`1.
`The Intended Purpose and Principle of Operation of
`Giroux’s Preferred Embodiments ............................................ 18
`2. Modifying Giroux’s Preferred Embodiment to Be
`Initially Closed Would’ve Rendered It Inoperative for Its
`Intended Purpose and
`Changed Its Principle of Operation ......................................... 22
`PETITIONER FAILS TO SHOW THAT GIROUX DISCLOSES
`THE ALTERNATIVE EMBODIMENT INITIALLY CLOSED ................. 25
`VI. PETITIONER FAILS TO SHOW THAT IT WOULD HAVE BEEN
`OBVIOUS FOR ANY REASON TO MODIFY GIROUX’S
`ALTERNATIVE EMBODIMENT TO BE INITIALLY CLOSED ............. 29
`VII. PETITIONER FAILS TO ESTABLISH THE ANTICIPATION OR
`OBVIOUSNESS OF ANY “URGING” CLAIM .......................................... 31
`
`
`
`ii
`
`

`

`A.
`B.
`
`(b)
`
`2.
`
`Case IPR2019-00708
`Patent RE46,137
`Petitioner’s Anticipation Challenge Fails ........................................... 32
`Petitioner’s Obviousness Challenge Fails ........................................... 33
`1.
`Giroux’s FIG. 3 Does Not Amount to a Disclosure of a
`Sleeve Urged to Its Initial Position .......................................... 33
`(a)
`Petitioner/Mr. Chambers’s Assertions About the
`Configuration of Piston 110 .......................................... 34
`Petitioner Hasn’t Established a POSITA Would
`View Giroux’s Piston 110 as Contended....................... 38
`Petitioner’s Remaining Obviousness Challenges to the
`Urging Claims Are Defective .................................................. 49
`(a) The Prior Art Does Not Teach a Biased-Closed
`Sleeve ............................................................................. 50
`Petitioner’s “Combine Prior Art Elements to Yield
`a Predictable Result” Argument Fails ........................... 51
`Petitioner Impermissibly Relies on Hindsight ............... 53
`Petitioner Fails to Establish That a POSITA Would
`Have Been Motivated by a Concern with
`Premature Actuation of Giroux’s Piston ....................... 53
`(e) A POSITA Concerned with Premature Actuation
`Would Not Have Used Sleeve Biasing .......................... 58
`Petitioner’s Obvious-to-Try Rationale Is Defective ...... 60
`(f)
`VIII. PETITIONER’S ALLEGED SIMULTANEOUS INVENTION
`EVIDENCE CANNOT SAVE ITS OBVIOUSNESS CHALLENGES ....... 60
`
`(b)
`
`(c)
`(d)
`
`
`
`- iii -
`
`

`

`TABLE OF AUTHORITIES
`
`Case IPR2019-00708
`Patent RE46,137
`
` Page(s)
`
`Cases
`In re Am. Acad. of Sci. Tech Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) .......................................................................... 54
`Amgen Inc. v. Hoechst Marion Roussel,
`314 F.3d 1313 (Fed. Cir. 2003) .......................................................................... 57
`In re Bush,
`296 F.2d 491 (C.C.P.A. 1961) ................................................................ 18, 19, 20
`In re Daniel,
`17 C.C.P.A. 605 (C.C.P.A. 1929) ..................................................... 45, 46, 47, 48
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) .................................................................... 13, 60
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ............................................................................ 23
`Hockerson-Halberstadt, Inc. v. Avia Group Int’l,
`222 F.3d 951 (Fed. Cir. 2000) ...................................................................... 38, 43
`Interconnect Planning Corp v. Feil,
`774 F.3d 1132 (Fed. Cir. 1985) .......................................................................... 53
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ...................................................................... 18, 58
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 52, 60
`Luminara Worldwide, LLC v. Liown Elecs. Co.,
`814 F.3d 1343 (Fed. Cir. 2016) ............................................................................ 7
`Microsoft Corp. v. Biscotti, Inc.,
`878 F.3d 1052 (Fed. Cir. 2017) .......................................................................... 33
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012) .......................................................................... 18
`
`
`
`iv
`
`

`

`Case IPR2019-00708
`Patent RE46,137
`
`In re Mraz,
`59 C.C.P.A. 866 (C.C.P.A. 1972) ....................................................................... 45
`Nautilus, Inc. v. Icon Health & Fitness, Inc.,
`Case IPR2017-01408, Paper 51 (Dec. 3, 2018) .................................................. 52
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) .............................................................. 29, 32, 33
`Ex parte Nguyen,
`Appeal 2018-001801, slip op. (P.T.A.B. Oct. 22, 2018) ........................ 44, 46, 49
`In re Nuvasive, Inc.,
`842 F.3d 1376 (Fed. Cir. 2016) .......................................................................... 53
`Nystrom v. Trex Co.,
`424 F.3d 1136 (Fed. Cir. 2005) .......................................................................... 38
`Pacific Market Int’l, LLC v. Ignite USA, LLC,
`Case IPR2016-01875, Paper 32 (March 27, 2018) ............................................. 57
`Par Pharm., Inc. v. Novartis AG,
`Case IPR2016-00084, Paper 73 (Jan. 11, 2018) ................................................. 60
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ........................................................ 7, 9
`Plas-Pak Indus., Inc. v. Sulzer Mixpac AG,
`600 F. App’x 755 (Fed. Cir. 2015) ......................................................... 20, 21, 23
`Poly-America, L.P. v. API Indus., Inc.,
`839 F.3d 1131 (Fed. Cir. 2016) ...................................................................... 7, 10
`Techtronic Indus. Co. Ltd. v. Int’l Trade Comm’n,
`Appeal No. 2018-2191, slip op. (Dec. 12, 2019) .................................................. 9
`Vickery v. Barnhart,
`118 F.2d 578 (C.C.P.A. 1941) ................................................................ 45, 46, 49
`W.L. Gore & Assocs. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983) .......................................................................... 53
`
`
`
`- v -
`
`

`

`Case IPR2019-00708
`Patent RE46,137
`
`In re Wolfensperger,
`302 F.2d 950 (C.C.P.A. 1962) ................................................................ 45, 46, 49
`In re Wright,
`569 F.2d 1124 (CCPA 1976) .................................................................. 38, 41, 47
`Rules and Statutes
`35 U.S.C. § 312(a)(3) ............................................................................................... 60
`37 C.F.R. § 42.104(b)(5) .................................................................................... 54, 60
`
`
`
`
`
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`- vi -
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`

`IPR2019-00708
`Patent RE46,137
`
`I.
`
`INTRODUCTION
`Petitioner has failed to establish unpatentability of any of the claims based on
`
`any of the asserted grounds.
`
`First, Petitioner has not shown that the proper construction of independent
`
`claims 1, 19, and 21 covers a valve that is incapable of shifting from a position that
`
`is closed to a position that is open after passage pressure exposure, like Giroux’s
`
`surge pressure reduction tool. For many reasons, not the least of which is the
`
`disclosure of the ’137 Patent itself, the invention of these claims is limited to an
`
`initially-closed valve that shifts open. The only support Petitioner has for its position
`
`is claim 20, which Petitioner’s expert contends is limited to an initially-open valve.
`
`But Mr. Chambers bases his position on limitations that aren’t in claim 20. And as
`
`Patent Owner’s expert, Dr. Fleckenstein, illustrates, when claim 20 is interpreted as
`
`a POSITA would, it covers an initially-closed valve. As a result, Giroux’s Preferred
`
`Embodiment fails to anticipate any claim.
`
`Second, Petitioner’s argument that it would have been obvious to modify (for
`
`any reason) either Giroux’s Preferred Embodiment or its Alternative Embodiment
`
`to be initially closed fails for multiple reasons, including because doing so, as even
`
`Mr. Chambers admitted, would have rendered those tools inoperative for their
`
`intended purpose: surge pressure reduction. See ChambersDepo., 116:6-9 (“Q.
`
`
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`IPR2019-00708
`Patent RE46,137
`Well, but at that point you’ve changed its function as a tool. It’s no longer going to
`
`be a surge reduction tool, correct? A. That is correct.”).
`
`Third, Petitioner’s anticipation challenges that depend on its argument that
`
`lines 22-35 of column 7 of Giroux is a disclosure of the piston of the Alternative
`
`Embodiment in an initially-closed position fail. The tool in 7:22-35 is a segmented
`
`tool, the construction of which, as Mr. Chambers conceded, Giroux doesn’t disclose.
`
`ChambersDepo., 49:8-11 (“Q. Right. [Giroux] doesn’t have a depiction of the
`
`description of the multi-segment tool that he describes in column 7, lines 22 to 35,
`
`right? A. That’s correct.”), 53:11-54 (it’s not clear “exactly how [Giroux]
`
`envisioned to” make that tool because “he did not provide a figure” and it would
`
`take “some time” to “come up with a method to do what Giroux describes”).
`
`Finally, Petitioner failed to prove anticipation or obviousness of any of the
`
`“Urging Claims” (8-11, 16, 17, 31, 41, and 42) for additional, independent reasons.
`
`In particular, Petitioner’s contention that a POSITA would have interpreted Giroux’s
`
`piston 110 as biased is unsupported by Giroux’s FIGs. 3 and 4, which are not to
`
`scale, contain errors that are actually larger than the small dimensional difference on
`
`which Petitioner relies, and were “cartoonishly” drawn. ChambersDepo. at 11:2-9.
`
`Furthermore, Petitioner’s back-up arguments that a POSITA would nonetheless
`
`have been motivated to modify Giroux’s piston to be biased initially closed also fail.
`
`For example, Petitioner’s reliance on the ’137 Patent’s discussion of the Halliburton
`
`
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`IPR2019-00708
`Patent RE46,137
`Initiator Sleeve’s operation is misplaced because that sleeve was biased to the
`
`actuated, open position, not the initial, closed position, leaving Petitioner without
`
`any prior art disclosure of a sleeve biased to its initial position. And Petitioner’s
`
`alleged unexpected “pressure event” motivation is inadequately-developed and
`
`illogical.
`
`II.
`
`PETITIONER’S CONSTRUCTION OF CLAIMS 1, 19, AND 21 IS
`INCORRECT
`Petitioner proposes construing “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” to
`
`encompass a structure that is capable of moving from closed to open or open to
`
`closed. Pet., 22; EX1005, ¶77. Mr. Chambers and Petitioner make clear that this
`
`proposed construction covers sleeves that neither asserted are capable of moving
`
`from closed to open. See Pet., 29-31; EX1005, ¶¶85-86, 88 (admitting that Giroux’s
`
`Preferred Embodiment does not start closed); Fleckenstein, ¶20. Petitioner is
`
`incorrect. Below is a brief explanation why Petitioner’s proposed construction
`
`should be rejected, followed by an explanation of the proper construction for 1[b]
`
`and 1[c] together, which applies equally to the same language in claims 19 and 21
`
`and which reflects the balance of reasons why Patent Owner’s proposed construction
`
`should be adopted and Petitioner’s rejected. See Fleckenstein, ¶19.
`
`
`
`- 3 -
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`

`

`IPR2019-00708
`Patent RE46,137
`“First” and “Second” Have More Meaning Than Petitioner Asserts
`A.
`Petitioner’s lead argument is that “first” and “second” do nothing but
`
`distinguish between instances of positions. Pet., 22-23; EX1005, ¶¶77-78; see also
`
`ChambersDepo., 11:20-12:17 (“first” and “second” are just like A and B). But that
`
`ignores that the positions have already been distinguished in the claim language
`
`using the port: “a [] position where said port is closed and a [] position where said
`
`port is at least in part open.” ’137 Patent, claims 1, 19, 21 (emphasis added);
`
`Fleckenstein, ¶24. Therefore, and contrary to Petitioner’s assertion, a POSITA
`
`wouldn’t have found the already distinctly-recited positions to be “repeated
`
`instances of an element or limitation” (Pet., 22-23) in need of a superfluous
`
`distinction with “first” and “second.” Fleckenstein, ¶24. For this reason alone,
`
`Petitioner’s proposed construction should be rejected. Moreover, and importantly,
`
`the ordinary meanings of “first” and “second” supply otherwise missing
`
`information: they designate which of the positions is the starting position with
`
`respect to the claimed capability of movement (id.), as explained further below.
`
`Mr. Chambers’s testimony does not help Petitioner. Apart from his reliance
`
`on claim 20, addressed below, he supports his interpretation of the claim language
`
`as not requiring movement in any particular direction by pointing out that the sleeve
`
`limitation “is a structural limitation” that only requires “the capability of
`
`movement.” EX1005, ¶78; Fleckenstein, ¶21. But as Dr. Fleckenstein explains,
`
`
`
`- 4 -
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`

`

`IPR2019-00708
`Patent RE46,137
`while actual movement is not required, Mr. Chambers erred in ignoring the order of
`
`the “first” and “second” positions, which limits the recited capability of
`
`movement: the sleeve must be capable of moving from the first position to the
`
`second position. Fleckenstein, ¶21.
`
`Claim 1[b] and 1[c] together require that the sleeve be capable of moving from
`
`the closed position to the open position in response to the piston’s exposure to
`
`passage pressure.1 Fleckenstein, ¶22. This is because a POSITA would have: (1)
`
`understood that the “first,” closed position is the initial position with respect to the
`
`claim 1[b] sleeve movement such that the sleeve needed to be movable from the
`
`closed position to the open position; and (2) connected that necessary sleeve
`
`movement with that provided by the claim 1[c] piston “for moving said sleeve” once
`
`the piston was exposed to “passage pressure.” Fleckenstein, ¶22.
`
`More specifically with respect to (1), a POSITA would have understood that
`
`the “first” position is occupied before the “second” position is occupied because of
`
`the plain and ordinary meaning of those terms (Fleckenstein, ¶23), which don’t have
`
`a special meaning in the oilfield services industry (ChambersDepo., 13:25-15:10 (at
`
`15:8-9: “First and second isn’t a big oilfield term, probably not in the oilfield
`
`
`1 Patent Owner’s references to “initially-closed”/“initially closed” are short-hand
`
`references to what this construction requires.
`
`
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`

`IPR2019-00708
`Patent RE46,137
`dictionary.”)). Thus, to a POSITA, the ordinary and customary meaning of “first”
`
`is “being before all others with respect to time, order, rank, importance, etc”
`
`(Dictionary, 4), and the ordinary and customary meaning of “second” is “next after
`
`the first” (id., 5). Fleckenstein, ¶23. Thus, 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, and the “second” position is next
`
`after the first position, meaning that the sleeve is capable of moving from the first
`
`position to the second position. Fleckenstein, ¶23.
`
`And with respect to (2), antecedent basis provides the connection. In
`
`particular, “said sleeve” in claim 1[c] draws antecedent basis from “a sleeve” in
`
`claim 1[b], which means the sleeve movement in claim 1[c] is logically referring to
`
`the sleeve movement (“movably mounted in said passage”) in claim 1[b].
`
`Regardless, though, a POSITA would have recognized that the only sleeve
`
`movement the ’137 Patent contemplates is in response to the piston’s passage
`
`pressure exposure. See, e.g., ’137 Patent, 1:14-20 (the “pressure actuated sleeve …
`
`is responsive to tubing pressure to open a port”), 1:59-60 (the present invention is
`
`“an actuation technique for a sliding sleeve to open a port that responds to tubing
`
`pressure”), 2:3-10 (in response to pressure, “[t]he sleeve can then move to open the
`
`port or ports”), 3:17-19 (“The inner shifting sleeve (3) has several diameters that
`
`create piston areas that generate shifting forces to open the valve.”), and 3:61-4:2
`
`
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`

`IPR2019-00708
`Patent RE46,137
`(“Once the burst pressure is reached … pressure … drives the inner shifting sleeve
`
`(3) down … opening the fluid communication ports (6).”); Fleckenstein, ¶25.
`
`Petitioner’s Construction Ignores the Invention
`B.
`Taking (1) and (2), and contrary to Petitioner’s position that claim 1 should
`
`be interpreted broadly enough to encompass Giroux’s Preferred Embodiment, a
`
`POSITA wouldn’t have interpreted 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 because that capability is the ’137 Patent’s
`
`explicitly stated invention: “[w]hat is needed and provided by the present invention
`
`is an actuation technique for a sliding sleeve to open a port that responds to tubing
`
`pressure.” ’137 Patent, 1:59-63 (emphasis added); EX1005, ¶74 (recognizing this
`
`as a description of the ’137 Patent’s invention); Fleckenstein, ¶26; see Poly-America,
`
`L.P. v. API Indus., Inc., 839 F.3d 1131, 1136 (Fed. Cir. 2016) (“[A]n inventor may
`
`disavow claims lacking a particular feature when the specification describes ‘the
`
`present invention’ as having that feature.” (citing Luminara Worldwide, LLC v.
`
`Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016)); Phillips v. AWH Corp.,
`
`415 F.3d 1303, 1323-24 (Fed. Cir. 2005) (en banc) (the purpose of claim
`
`construction is to capture the scope of the actual invention in the context of the
`
`particular patent). As a POSITA would have recognized, such a sleeve would have
`
`even fallen outside of the broadest statement of the ’137 Patent’s “FIELD OF
`
`
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`

`IPR2019-00708
`Patent RE46,137
`INVENTION,” which is “a pressure actuated sleeve used in a cementing assembly
`
`that is responsive to tubing pressure to open a port.” ’137 Patent, 1:11-20; EX1005,
`
`¶73 (acknowledging and using to his advantage this field of invention); Fleckenstein,
`
`¶26.
`
`Furthermore, Patent Owner’s construction is supported by the purpose of the
`
`’137 Patent’s invention, which is “to open [a] port or ports for annulus access so that
`
`tools can be pumped down with flow without having to perforate the casing” (’137
`
`Patent, 2:6-10; EX1005, ¶50 (characterizing “providing a flow path that enabled the
`
`initiation of the interventionless [(e.g., perforation-free))] process” as “the problem
`
`addressed by the ’137 Patent”); Fleckenstein, ¶27) and which even Mr. Chambers
`
`recognizes wouldn’t have been achievable if the ’137 Patent’s hydraulically-
`
`actuated sleeve didn’t move from closed to open when actuated (EX1005, ¶¶48
`
`(discussing EX1008’s hydraulically-actuated sliding sleeves: “[a] POSITA knew
`
`that to replace perforating, the sliding sleeves had to be initially closed and then
`
`opened”), 78 (“the specification describes the use of the preferred embodiment as a
`
`toe sleeve to avoid perforating (’137 Patent, 2:6-10), which would indicate that when
`
`used the preferred embodiment should move from closed to open”), 151 (discussing
`
`various hydraulically-actuated sliding sleeves: use of “sliding sleeves with the
`
`various claimed features as a toe sleeve in multistage fracturing operation …
`
`
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`- 8 -
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`

`IPR2019-00708
`Patent RE46,137
`required the sleeve to be initially closed and actuated to open.”); Fleckenstein, ¶27;
`
`Phillips, 415 F.3d at 1323-24).
`
`Finally, the preferred and only depicted embodiment of the ’137 Patent is
`
`initially closed and moves open in response to passage pressure. See, e.g., ’137
`
`Patent, 3:60-4:7, FIGs. 1-2; EX1005, ¶¶78 (“the preferred embodiment should move
`
`from closed to open”), 79 (“That is like the preferred embodiment described in the
`
`’137 Patent, applying pressure to move from closed to open.”); Fleckenstein, ¶28;
`
`Phillips, 415 F.3d at 1323-24.
`
`Considered together, the ’137 Patent’s “present invention” explanation, its
`
`purpose and field, and its consistent explanation of the preferred (and only)
`
`embodiment’s operation compels adoption of Patent Owner’s construction and
`
`rejection of Petitioner’s. See Techtronic Indus. Co. Ltd. v. Int’l Trade Comm’n,
`
`Appeal No. 2018-2191, slip op. at 10-12 (Dec. 12, 2019) (finding disavowal of
`
`coverage of wall consoles lacking a passive infrared detector through consistent
`
`presentation of the invention as including wall consoles with such detectors).
`
`C. Claim 20 Does Not Help Petitioner
`Claim 20 Isn’t Limited as Petitioner Proposes
`1.
`Petitioner’s and Mr. Chambers’s argument that claim 20 precludes an
`
`initially-closed sleeve
`
`isn’t persuasive.
`
` Pet., 23-24; EX1005, ¶¶79-80;
`
`ChambersDepo., 13:2-24 (not identifying anything beyond claim 20 as supporting
`
`
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`IPR2019-00708
`Patent RE46,137
`his position that the ’137 Patent’s claims cover a sleeve that moves from open to
`
`closed); Fleckenstein, ¶29. As a threshold matter, Petitioner’s claim differentiation
`
`argument fails because claim differentiation cannot “broaden claims beyond their
`
`meaning in light of the patent as a whole.” Poly-America, 839 F.3d at 1137.
`
`Moreover, Petitioner’s/Mr. Chambers’s claim 20 argument fails because it’s
`
`grounded in features of the preferred embodiment that aren’t recited in claim 20.
`
`Fleckenstein, ¶¶30-31; ChambersDepo. at 34:19-24, 35:11-21 (explained in
`
`Fleckenstein, ¶31). Mr. Chambers isn’t correct that, because the preferred
`
`embodiment’s upper atmospheric chamber increases in volume during actuation, so
`
`too must claim 20’s second chamber, meaning claim 20’s second position—
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`movement toward which instead decreases the volume of the second chamber—must
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`be “the unactuated position.” EX1005, ¶80; Fleckenstein, ¶¶30-31. As Mr.
`
`Chambers conceded, claim 20 doesn’t recite that the second position is the
`
`unactuated position (ChambersDepo., 37:11-38:3 (“Q. But claim 20 doesn’t say that
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`the second position is the unactuated position, does it? A. No. It just says that the
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`sleeve is moving.”)), and the only movement recited in claim 20 is “toward said
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`second [open] position” (’137 Patent, claim 20 (emphasis added); ChambersDepo.,
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`36:20-37:10 (“And that sleeve moving up [(toward the open position)], that’s the
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`only movement of the sleeve that appears in the language of claim 20, right …? A.
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`Yes.”); Fleckenstein, ¶32). As Dr. Fleckenstein explains, a POSITA would’ve
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`understood that movement to be toward the actuated position, given that the only
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`movement the ’137 Patent contemplates is to open the valve during actuation.
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`Fleckenstein, ¶¶32, 25.
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`Claim 20 Covers an Initially-Closed Valve
`2.
`A POSITA would’ve understood that claim 20’s valve was initially closed,
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`not initially-open, which is explicitly not the ’137 Patent’s invention, falls outside
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`of its Field of the Invention, and cannot fulfill its purpose. Fleckenstein, ¶¶33, 26-
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`27. This interpretation is also consistent with claim 20’s “second chamber …
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`decreas[ing] in volume with movement of said sleeve toward said second [(open)]
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`position” because, as a POSITA would’ve understood, it only requires that the
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`pressure-area force in the second chamber be less than the pressure-area force in the
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`closed chamber on the opposite side of the piston. See ChambersDepo., 81:11-18
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`(“So persons of skill in the art are high-pressure plumbers; and this is what they deal
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`with every day, cross-sectional area and pressure”); Fleckenstein, ¶33. Mr.
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`Chambers didn’t take issue with the feasibility of such a configuration, testifying
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`that “[i]f the pressures in chamber 19 are greater than the pressures in 12 once it’s in
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`communication with the tubular, then it would want to move up” (ChambersDepo.,
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`32:7-17) or contend that implementing it would have exceeded a POSITA’s skills
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`(id., 32:18-25 (“Q. It wouldn’t have been beyond the level of ordinary skill in the
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`art to achieve that kind of a setup, right? A. I believe you can pressure those
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`chambers to whatever you want to.”); Fleckenstein, ¶34.
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`Below is Dr. Fleckenstein’s depiction of an exemplary claim 20 configuration
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`with reference to an annotated version of FIG. 1:
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`Second Side
`
`Piston
`
`First Side
`
`Port
`
`Housing
`
`Closed Chamber
`
`Piston
`Sleeve
`
`Second Chamber
`
`’137 Patent FIG. 1 and Enlarged
`Excerpt Thereof (annotated)
`
`
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`Fleckenstein, ¶35. As Dr. Fleckenstein explains, this configuration is essentially the
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`same as the ’137 Patent’s preferred embodiment, except its lower chamber is the one
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`selectively exposed to passage pressure, and the upper chamber is longer, which is
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`consistent with claim 20. Id., ¶¶35, 45. The valve begins closed with its closed and
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`second chambers pressurized, then, once the predetermined pressure is reached, the
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`second chamber is exposed to passage pressure and equalizes with the same. Id.,
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`¶36. High pressure remaining in the closed chamber then shifts the valve to the open
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`position. Id. An atmospheric chamber is not required by claim 20 or the ’137 Patent
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`more generally. See Fleckenstein, ¶¶37-39 (including discussion of select portions
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`of the Background and certain dependent claims).
`
`As Dr. Fleckenstein explains, this understanding of claim 20 would have been
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`reinforced by a POSITA’s knowledge of tools—including sliding sleeves—that
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`were actuated using such pre-charged, high-pressure chambers. Fleckenstein, ¶¶40
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`(depicting and describing Stout (including ¶¶[0032], [0034], [0037], [0039]-[0040],
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`FIGs. 2-3)), 41-42 (performing a Dynamic Drinkware analysis for Stout
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`Provisional), 43-44 (depicting and describing Saheta (including at 3:1-3, FIG. 3A,
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`1:24-28, 3:64-4:2, 4:62-65, 5:32-52, 6:6-13, 6:20-25)).
`
`Despite Mr. Chambers’s concession that the feasibility of a pressured-up-
`
`chamber configuration was within a POSITA’s skill level (ChambersDepo., 32:18-
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`25), Dr. Fleckenstein provided an even more detailed explanation of how a POSTIA
`
`could have implemented the claim 20 configuration shown above, with reference to
`
`the relationships that would have governed such a valve, selections for the
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`parameters (e.g., piston stroke length, port length, initial pressure and volume of the
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`closed chamber, the closed chamber’s final pressure and volume, minimum force
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`supplied by the piston, exposed piston areas, passage pressure) of those relationships
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`a POSITA would have found reasonable (including for reasons based on some of
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`Petitioner’s own evidence, such as EX1008-EX1009), and the reasonable
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`assumptions (e.g., about temperature) a POSITA would have made during the design
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`process. See Fleckenstein, ¶¶45-69.
`
`Furthermore, he explains that claim 20 doesn’t require any specific structure
`
`for selectively isolating the piston from passage pressure until a predetermined
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`pressure is reached. Id., ¶64; ’137 Patent, claim 19. And as part of an explanation
`
`why hydrostatic pressure would be a suitable passage pressure, he also explains that
`
`a POSITA would’ve understood that such structure was not limited to one that was
`
`activated by the predetermined pressure; it could also be one that was activated—
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`even exclusively—in other ways at the predetermined pressure (or at a
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`predetermined depth), based on testimony by Mr. Chambers and the patent itself.
`
`See Fleckenstein, ¶¶64-66 (explaining Mr. Chamber’s reliance on Patel ’427’s E-
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`trigger (Patel ’427, ¶[0025]) in Chambers2, ¶100 and additional ’137 Patent option
`
`of a chemically-responsive barrier (e.g., a dissolvable barrier)), 67-68 (explaining
`
`why hydrostatic pressure could be the predetermined pressure, including with
`
`reference to Chambers2, ¶100 and ChambersDepo., 27-18-28:3).
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`Finally, he explains why a POSITA could also have used a completely
`
`pressure-responsive structure for selectively isolating the piston, such as the pressure
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`regulation valve in Davitt. Fleckenstein, ¶¶70-71 (explaining Davit’s FIG. 1 valve
`
`and 4:19-24, and its consistency with the ’137 Patent’s “pressure regulation valve”
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`(’137 Patent, 4:11-12)).
`
`III. PETITIONER FAILS TO SHOW THAT GIROUX’S PREFERRED
`EMBODIMENT ANTICIPATES ANY CLAIM
`It is undisputed that Giroux’s Preferred Embodiment does not move from
`
`closed to open in response to its piston’s exposure to passage pressure. See Pet., 31
`
`(discussing 1[b]), including n.3. Thus, Petitioners’ contention in Ground 1 that
`
`Giroux’s Preferred Embodiment anticipates any claim fails. See Pet., Section
`
`VIII.A.
`
`IV. PETITIONER FAILS TO SHOW THAT IT WOULD HAVE BEEN
`OBVIOUS FOR ANY REASON TO MODIFY GIROUX’S
`PREFERRED EMBODIMENT TO BE INITIALLY CLOSED
`In Grounds 2 and 3, Petitioner attempts to establish the obviousness of every
`
`claim based in part on its assertion that it would have been obvious to modify
`
`Giroux’s Preferred Embodiment to be initially closed. See Pet., Section VIII.B. The
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`motivation is alleged in Petition Section VIII.B.2 (Grounds 2 and 3), and, for a
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`disclosure of an initially-closed sleeve, Petitioner relies on: (1) Giroux as disclosing
`
`the Alternative Embodiment (of FIGs. 6-7) in an initiall