UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`WEATHERFORD INTERNATIONAL, LLC
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`Petitioner,
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`v.
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`BAKER HUGHES OILFIELD OPERATIONS, LLC
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`Patent Owner.
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`Case IPR2019-00768
`Patent RE46,137
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`PETITIONER’S REPLY TO PATENT OWNER’S
`RESPONSE TO PETITION FOR INTER PARTES REVIEW
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`WEATHERFORD INTERNATIONAL, LLC
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`Petitioner,
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`v.
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`BAKER HUGHES OILFIELD OPERATIONS, LLC
`
`Patent Owner.
`
`Case IPR2019-00768
`Patent RE46,137
`
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`PETITIONER’S REPLY TO PATENT OWNER’S
`RESPONSE TO PETITION FOR INTER PARTES REVIEW
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00768
`TABLE OF CONTENTS
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`Page No.
`INTRODUCTION .......................................................................................... 1
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`PATENT OWNER CONCEDES ANTICIPATION IN GROUND 1 ........... 2
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`I.
`
`II.
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`III. THE REMAINING CLAIMS ARE OBVIOUS UNDER
`GROUNDS 2-3 .............................................................................................. 3
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`A. Giroux Discloses a Sleeve Urged Toward Its Initial Position .............. 4
`
`B.
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`A POSITA Would Have Been Motivated to Modify Patel ’427
`with Giroux ........................................................................................ 12
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`IV. PO’S REMAINING ARGUMENTS FAIL .................................................. 15
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`A. A POSITA Was Aware of Urged Sleeves .......................................... 15
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`B.
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`A POSITA Was Concerned with Premature Actuation of
`Sliding Sleeves ................................................................................... 18
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`C.
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`Urging Was a Known Option for Sliding Sleeves Before 2011 ........ 23
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`D. Mr. Chambers Did Not Concede That There Was No
`Motivation for Urging if a Shear Pin Is Used .................................... 23
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`V.
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`CONCLUSION ............................................................................................ 25
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`Patent No. RE46,137 - IPR2019-00768
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`In re Aslanian,
`590 F.2d 911 (C.C.P.A. 1979). .................................................................... 4, 6, 9
`
`In re Baum,
`374 F.2d 1004 (C.C.P.A. 1967) ........................................................................... 4
`
`Ex parte Bjorn,
`2018-001567, 2019 WL 6173305 (P.T.A.B. Oct. 16, 2019) ............................... 8
`
`In re Daniel,
`34 F.2d 995 (C.C.P.A. 1929) ............................................................................. 11
`
`Ex parte Elder,
`2016-004536, 2018 WL 2318043 (P.T.A.B. May 14, 2018) .............................. 9
`
`In re Fulton,
`391 F.3d 1195 (Fed. Cir. 2004) ......................................................................... 13
`
`Hockerson-Halberstadt, Inc. v. Avia Group International,
`222 F.3d 951 (Fed. Cir. 2000) ......................................................................... 7, 8
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .................................................................................... 13, 14
`
`In re Meng,
`492 F.2d 843 (C.C.P.A. 1974) ............................................................................. 9
`
`Ex parte Nguyen,
`Appeal 2018-001801, 2018 WL 5821695 (P.T.A.B. Oct. 19, 2018) ................ 11
`
`Presidio Components Inc. v. Am. Tech. Ceramics Corp.,
`IPR2015-01330, 2015 WL 9599180 (P.T.A.B. Dec. 3, 2015) ........................ 8, 9
`
`Ex parte Roth,
`Appeal 2010-009869, 2012 WL 359969 (B.P.A.I. Feb. 1, 2012) ................. 9, 11
`
`
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`-ii-
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00768
`TABLE OF AUTHORITIES
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`In re Wolfensperger,
`302 F.2d 950 (C.C.P.A. 1962) ........................................................................... 10
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`Page No(s).
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00768
`I.
`INTRODUCTION
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`Petitioner explained with supporting evidence in its Ground 1 how Patel ’427
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`anticipates claims 1, 2, 4-7, 12-15, 18-20, 23-30, 32-40, 43, and 44 of the ’137
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`Patent. Patent Owner (“PO”) offers no challenge to Ground 1. See, e.g., PO
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`Response (“Resp.”) (Paper 16) at 2-3 (PO asserting that it “does not acquiesce to
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`Petitioner’s other challenges,” but offering no rebuttal on the merits). Instead of
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`challenging the Petition, PO disclaimed all claims challenged in Ground 1 other than
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`claims 1 and 34. EX2005. PO only retained those claims in an ill-advised strategy
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`to keep its reexamination alive. E.g., Paper 23 at 4 (asserting that only claims 1 and
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`34 overlap with the reexamination). Claims 1 and 34 do not recite “urging,” which
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`is PO’s only remaining validity argument, as discussed below for Grounds 2 and 3.
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`PO’s concession that claims that depend from claims 1 and 34 are invalid necessarily
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`concedes that claims 1 and 34 are invalid. PO’s weak passing assertion that
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`Petitioner cannot meet its burden to prove anticipation of claim 1 because its expert,
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`Mr. Chambers, allegedly offered a narrow interpretation of “at least in part open,”
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`relies on a false characterization of Mr. Chambers’ testimony and a claim
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`construction position PO does not adopt. Claims 1 and 34 are invalid.
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`With respect to Grounds 2 and 3, which assert obviousness based on Patel
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`’427 in view of Giroux for Ground 2 as well as the Admitted Prior Art and
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`knowledge of a POSITA for Ground 3, PO offers two primary arguments: (1) no
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`Patent No. RE46,137 - IPR2019-00768
`prior art discloses urging toward an initial position; and (2) a POSITA would not
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`have been motivated to use Giroux in a toe sleeve application. PO’s expert concedes
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`that Giroux discloses urging and that a POSITA was motivated to use a hydraulically
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`actuated sliding sleeve, which includes Giroux, as a toe sleeve in 2009. Thus, all
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`remaining claims after the disclaimer (1, 8-11, 16, 17, 31, 34, 41, and 42) would
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`have been obvious.
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`II.
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`PATENT OWNER CONCEDES ANTICIPATION IN GROUND 1
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`Instead of responding on the merits, PO mentions in passing Mr. Chambers’
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`testimony regarding the phrase “at least in part open” in claim 1. Resp. 2-3. PO
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`cites Mr. Chambers’ statement that “based on his ‘first thought’” Mr. Chambers
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`would not consider a port to be “‘at least in part open,’ as recited in claims 1-22,
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`when a structure other than the valve’s sleeve was blocking the port.” Resp. 3 (citing
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`EX2004 96:2-97:17). PO then asserts that “[w]ith its screens 160 and/or back flow
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`check valves 155 that block any otherwise open portions of its ports, Patel ’427’s
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`sliding sleeve 5 is just such a valve.” Id. PO is unwilling to take the position itself
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`that Patel ’427’s sliding sleeve is not “at least in part open.” Even if it did, such an
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`argument is meritless.
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`First, PO’s characterization of Mr. Chambers’ testimony is false. Mr.
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`Chambers interpreted “at least in part open” to mean “open sufficient to allow
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`communication across [the ports].” EX2004 96:14-19. In fact, PO’s counsel
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`acknowledged that interpretation in the next question: “So explain how you think a
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`POSITA would come to the conclusion that open effectively means fluid
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`communication?” Id. 96:20-22. No one asserts that Patel ’427’s ports do not allow
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`fluid communication. See, e.g., Petition (Paper 2) (“Pet.”) at 24-26 (showing that
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`movement of actuator mandrel 110 aligns “‘inflow chamber 150 with injection
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`pressure communication port 140 and thereby commence[s] the liquid 70 injection
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`into cement 100 causing fractures 95 in cement 100 and formation 75’” (quoting
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`EX1021 [0029])).
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`Second, the Petition’s quoted passage from Patel ’427 describing “liquid
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`injection” through injection pressure communication port 140 also refutes PO’s
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`implication/assertion that screens and back flow check valves “block any otherwise
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`open portions” of Patel ’427’s ports. Resp. 3.
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`Claims 1 and 34 are anticipated by Patel ’427.
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`III. THE REMAINING CLAIMS ARE OBVIOUS UNDER GROUNDS 2-3
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`PO challenges Grounds 2 and 3 on only two bases: (1) the prior art allegedly
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`does not teach or motivate a POSITA to use the urging limitations of claims 8-11,
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`16, 17, 31, 41, and 42 (Resp. 6-40); and (2) a POSITA allegedly would not have
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`been motivated to use Giroux when other, better prior art was available (Resp. 3-6).
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`Because neither of these arguments has any merit, claims 1, 8-11, 16, 17, 31, 34, 41,
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`and 42 would have been obvious based on Patel ’427 in view of Giroux as asserted
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`in Ground 2 and with the addition of the Admitted Prior Art and the knowledge of a
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`POSITA as asserted in Ground 3.
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`A. Giroux Discloses a Sleeve Urged Toward Its Initial Position
`PO admits that Giroux discloses urging but contends that a POSITA would
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`not recognize the disclosure. Resp. 7-23. PO is both legally and factually wrong.
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`Petitioner has shown that a POSITA would understand Giroux’s piston 110 to be
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`biased toward its initial position. Pet. 52-53; EX1022 ¶¶146-47. Patent drawings
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`are evaluated and applied “‘on the basis of what they reasonably disclose and suggest
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`to one skilled in the art.’” In re Aslanian, 590 F.2d 911, 914 (C.C.P.A. 1979)
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`(quoting In re Baum, 374 F.2d 1004, 1009 (C.C.P.A. 1967)). It is undisputed that a
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`POSITA understood how pressure and cross-sectional area were used in sliding
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`sleeves at least as early as 2011. Any difference in cross-sectional area on a sliding
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`sleeve exposed to pressure creates a biasing or urging force. No claim in the ’137
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`Patent requires any particular quantity or amount of difference in cross-sectional
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`area or biasing force. Thus, a POSITA viewing Giroux’s Figures 3 and 4 would
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`readily see that the piston 110 is biased because the figures plainly and consistently
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`depict a difference in cross-sectional areas on the piston 110. That difference is
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`visible to the naked eye and does not require any measurement to be readily apparent.
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`Thus, PO’s attempt to undermine Giroux’s teaching by resorting to cases that deal
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`Patent No. RE46,137 - IPR2019-00768
`with precise measurements and changes in other parts of Giroux’s figures should be
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`rejected.
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`Mr. Chambers testified that “persons of skill in the art are high-pressure
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`plumbers; and this is what they live with every day, cross-sectional area and
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`pressure.” EX2004 81:16-18. PO’s expert agreed with this testimony and added
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`that a POSITA in 2011 had “experience with pistons, pressures, and cross-sectional
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`areas.” EX2001 ¶33; see also EX1045 100:2-10. Dr. Fleckenstein further agreed
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`that a POSITA in early 2011 knew that “any difference in opposed surface areas
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`exposed to the same pressure” would create a force. EX1045 100:11-21, 101:9-
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`102:9. Thus, a POSITA looking at Giroux’s drawings knew that any difference in
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`diameter on opposed ends of a piston exposed to the same pressure would create a
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`force on the piston. Id. 101:9-18.
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`That difference in diameters and cross-sectional areas is exactly what Giroux
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`shows. EX1022 ¶¶146-47. Mr. Chambers’ annotated Figure 3 is reproduced below.
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`Mr. Chambers explained that “[b]ecause Giroux has a larger cross-sectional area
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`(with respect to passage pressure) on the bottom of piston 110 than on the top, piston
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`110 is urged towards its initial position.” Id. ¶146.
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`PO and its expert agree that Giroux depicts this difference in area. PO shows
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`the difference in its own annotated drawing on page 18 of its Response, reproduced
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`below. EX2001 ¶¶108-10 (including two figures depicting the area difference).
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`Moreover, Dr. Fleckenstein testified that this area difference is perceptible “to the
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`naked eye.” EX1045 176:2-177:7. But Dr. Fleckenstein admitted that he discounts
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`the clear disclosure of biasing in the figures “because Giroux doesn’t expressly
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`discuss it in the text.” Id. 178:3-17. Dr. Fleckenstein violates binding precedent in
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`failing to acknowledge what the drawings “‘reasonably disclose and suggest to one
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`skilled in the art.’” In re Aslanian, 590 F.2d at 914 (citation omitted).
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`PO relies heavily on Hockerson-Halberstadt, Inc. v. Avia Group International
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`for the proposition that “patent drawings do not define the precise proportions of the
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`elements and may not be relied on to show particular sizes.” Resp. 12 (quoting 222
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`F.3d 951, 956 (Fed. Cir. 2000)). Petitioner, however, is not relying on any precise
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`proportions of the elements in Giroux’s figures or any particular sizes. Indeed, no
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`claim of the ’137 Patent recites any particular proportions or sizes. Any amount of
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`urging is sufficient to satisfy the urging claims. E.g., ’137 Patent claim 8 (sleeve
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`configured to respond “by being urged toward said first position”). As Dr.
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`Fleckenstein admitted, a POSITA in early 2011 knew that “any difference in
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`opposed surface areas exposed to the same pressure would create” a force. EX1045
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`100:11-21, 101:9-102:9. The magnitude of that difference affects only the size of
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`the force, not the existence of the force. See id. 107:8-108:3.
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`In Ex parte Bjorn, the Board sustained the rejection of a claim based on a
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`patent drawing’s disclosure of a claimed feature. 2018-001567, 2019 WL 6173305
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`(P.T.A.B. Oct. 16, 2019). There, the Board distinguished Hockerson because the
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`limitation requiring “the abutment to have an exterior surface diameter that is ‘less
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`than or substantially equal to the maximum thread diameter of the male screw section
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`of the bone fixture’” required “[n]o particular dimensions or proportions” and the
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`drawings of a prior art reference “clearly disclose to a skilled artisan” that an
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`abutment in a drawing had that feature. Id. at *10. The same is true in this case.
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`The ’137 claims require no particular area difference or quantity of urging.
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`Any urging is enough. Both Mr. Chambers and Dr. Fleckenstein agree that Giroux
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`discloses urging. EX1022 ¶¶146-47; EX1045 100:11-21 (admitting any difference
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`in opposed areas exposed to common pressure creates a force), 101:9-102:9, 176:2-
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`177:7 (admitting area difference in Giroux’s piston is perceptible to the naked eye).
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`PO cannot disregard that clear disclosure because Giroux does not mention its urging
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`in the text of the patent. Ex parte Bjorn, 2019 WL 6173305, at *10; see also
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`Presidio Components Inc. v. Am. Tech. Ceramics Corp., IPR2015-01330, 2015 WL
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`Patent No. RE46,137 - IPR2019-00768
`9599180, at *6 (P.T.A.B. Dec. 3, 2015) (finding claim anticipated based in part on
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`drawing because although reciting dielectric layers with co-extensive length and
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`width and various other physical constraints, “the claims here do not require
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`particular dimensions or proportions” and “a skilled artisan would glean all these
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`features from simply viewing Figures 3 and 5 of Horie”); Ex parte Elder, 2016-
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`004536, 2018 WL 2318043, at *4-5 (P.T.A.B. May 14, 2018) (sustaining rejection
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`of claim based on disclosure of “radial clearance portion” in figure despite no
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`discussion of the feature in the text and rejecting arguments that disclosure was a
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`“drawing aberration”); Ex parte Roth, Appeal 2010-009869, 2012 WL 359969, at
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`*4 (B.P.A.I. Feb. 1, 2012) (“the issue here is shape, not scale”). Dr. Fleckenstein
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`offers the same rejected reasons for discounting Giroux’s disclosure, rendering his
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`opinion unreliable. EX1045 178:3-17.
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`Additionally, Dr. Fleckenstein’s unwillingness to credit the urging in Giroux’s
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`figures because of his concern as to whether it was intentional or an artifact (EX1045
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`177:4-178:2) is also legally flawed because even “unintended or unexplained” prior
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`art disclosures may be cited against claims. Ex parte Roth, 2012 WL 359969, at *4
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`(quoting Aslanian, 590 F.2d at 914; In re Meng, 492 F.2d 843, 847 (C.C.P.A. 1974)).
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`PO also attempts to overcome this clear disclosure by asserting that a POSITA
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`would not have relied upon Giroux’s drawings because “Giroux doesn’t depict
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`piston 110 accurately.” Resp. at 12. However, PO’s alleged inaccuracies in
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`Giroux’s drawings only highlight the consistent disclosure of an urged piston in all
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`of the drawings. PO focuses on the length of piston 110 changing from Figure 3 to
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`Figure 4. Resp. 13-17. But Dr. Fleckenstein admitted that Figure 4 discloses the
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`same urged piston as Figure 3. EX1045 182:9-12 (“Still looks like seals 108 at the
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`bottom of the piston 110 in Giroux 4 are larger in diameter than the seals at the top
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`left of piston 110, correct? Yes ….”).
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`In fact, Dr. Fleckenstein admitted that when preparing his declaration, he also
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`looked at Figures 5, 8, and 9, which also depict piston 110, but he offered no opinion
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`on whether they depicted the same urged piston as Figures 3 and 4. Id. 184:7-23.
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`Figures 5, 8, and 9 also consistently depict an urged piston 110 despite changing
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`other facets of the tool and even piston 110. EX1003 Figs. 5, 8, 9; see In re
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`Wolfensperger, 302 F.2d 950, 959 (C.C.P.A. 1962) (“We find nothing therein,
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`however, which raises a presumption that drawings such as those here are not drawn
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`to scale with reasonable accuracy or that four enlarged detailed figures consistently
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`showing the same relative proportions must be ignored.” (emphasis added)). Even
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`the pistons 900 and 910 depicted in Giroux Figures 10, 11, and 12 are drawn as urged
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`toward their initial position. EX1003 Figs. 10-12. A POSITA would understand
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`that something depicted consistently in different figures of a patent is an intentional
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`disclosure. A POSITA who was a “high pressure plumber” well-versed in pressure
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`and cross-sectional area would consider a difference in diameters important in a
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`piston. Moreover, as discussed below, a POSITA in 2011 was very familiar with
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`urged sliding sleeves and therefore would have recognized them.1
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`PO’s cases are also distinguishable. Ex parte Nguyen, Appeal 2018-001801,
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`2018 WL 5821695 (P.T.A.B. Oct. 19, 2018), involved a determination of whether a
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`drawing provided written description support for a later claim. Neither PO nor the
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`opinion reproduces the drawing, preventing any comparison to this case. Moreover,
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`it did not involve the repeated clear depiction of the same feature in multiple figures
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`of the application, like Giroux here. In re Daniel, 34 F.2d 995, 999 (C.C.P.A.
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`1929), involved a prior art patent in which a figure inserted during a reissue of the
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`prior art patent contained a feature having nothing to do with the claimed invention
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`and for which the court concluded that the insertion of the figure “was accidental
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`and put there by mistake.” Giroux, by contrast, repeatedly disclosed the same urged
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`piston even while changing other features, precluding any assertion of mistake,
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`which would be insufficient to discount Giroux’s figures regardless. See Ex parte
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`Roth, 2012 WL 359969, at *4.
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`1 The level of urging shown in Giroux’s Figure 3 is just as—if not more—
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`visible than the urging shown in the figures of the challenged ’137 Patent.
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`B. A POSITA Would Have Been Motivated to Modify Patel ’427 with
`Giroux
` The Petition explained that a POSITA before 2011 was aware that
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`hydraulically actuated sliding sleeves should be used to replace toe sleeves in
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`multistage fracturing operations like those described in the ’137 Patent. Pet. 8-9
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`(describing SPE 100572 (EX1008) and SPE 125365 (EX1009), both of which
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`explain why it was beneficial to use hydraulically actuated sliding sleeves as toe
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`sleeves to replace perforations in fracturing operations); see also EX1022 ¶¶40-51
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`(describing these papers). Even PO’s expert, Dr. Fleckenstein, agrees that it was
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`known in 2009 to use hydraulically actuated sliding sleeves to replace perforations
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`in multistage fracturing operations. EX1045 76:10-15. Dr. Fleckenstein further
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`testified that a POSITA had motivation to do so:
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`Q. A person of ordinary skill of [sic] the art in 2009 had a
`motivation to develop a hydraulically actuated sliding sleeve for use in
`a cemented multi-stage fracturing completion to replace perforations at
`the toe of the well, correct?
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`THE WITNESS: Yes, I would say that would be a reasonable
`motivation at that time.
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`Id. 78:16-23 (objection omitted).
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`Dr. Fleckenstein also admitted that Giroux’s preferred and alternative
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`embodiments, relied upon by Petitioner and Mr. Chambers, are hydraulically
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`actuated sliding sleeves. Id. 73:4-7. Thus, PO’s own expert agrees that Giroux
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`discloses the very tool a POSITA would have known to use and been motivated to
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`use in the implementation described in the ’137 Patent. Based on these undisputed
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`facts, it would have been obvious to modify Patel ’427 with features of Giroux. Pet.
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`46-48 (asserting “it would have been obvious for a POSITA to incorporate [the
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`features (1)-(5) disclosed in Giroux] in the sleeves of Patel ’427”); EX1022 ¶¶135-
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`37.
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`PO first attempts to refute this overwhelming obviousness case by asserting
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`that there are other prior art tools “like EX1009 [SPE 125365]” that would allegedly
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`be an even better starting point for modification than Giroux. Resp. 4-5. But “mere
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`disclosure of alternative designs does not teach away.” In re Fulton, 391 F.3d 1195,
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`1201 (Fed. Cir. 2004).
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`Moreover, there is no requirement that a particular combination be “preferred,
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`or ‘optimal,’ for the combination to be obvious.” Id. at 1201-02. As the Supreme
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`Court has acknowledged, “[w]hen a work is available in one field of endeavor,
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`design incentives and other market forces can prompt variations of it, either in the
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`same field or a different one. If a person of ordinary skill can implement a
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`predictable variation, § 103 likely bars its patentability.” KSR Int’l Co. v. Teleflex
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`Inc., 550 U.S. 398, 417 (2007). PO cannot defeat an obviousness combination by
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`pointing to a different obviousness combination that would allegedly be preferable
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`in some way. The undisputed facts show there was motivation to combine Patel
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`’427 with Giroux: PO’s own expert admitted that a POSITA knew in 2006 that
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`sliding sleeves could successfully replace perforations in cementing completions and
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`that to do so the sliding sleeve would have to start closed and be actuated to open.
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`EX1045 74:5-13. PO asserts no difficulty or unexpected results from such
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`modifications. KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve
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`one device, and a person of ordinary skill in the art would recognize that it would
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`improve similar devices in the same way, using the technique is obvious unless its
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`actual application is beyond his or her skill.”). Modifying Giroux to work similarly
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`was nothing more than a predictable variation—and PO’s attempt to discount that
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`motivation by pointing to allegedly better prior art combinations does not show that
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`using Giroux would not have been obvious.
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`Mr. Chambers opined that a POSITA would be motivated to modify Patel
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`’427 in view of Giroux because “Giroux and Patel ’427 are pressure actuated sliding
`
`sleeves that use rupture disks, integrated pistons, upper and lower chambers, and
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`downhole pressure for actuation.” EX1022 ¶¶135-37. PO offers no response to
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`these assertions, aside from its factually irrelevant and legally wrong argument that
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`a POSITA would not be motivated to modify Patel ’427 with Giroux. Instead, PO
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`asserts that a POSITA would not have been motivated to use Giroux as a toe sleeve
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`because Giroux is a surge pressure reduction tool that is “run into the wellbore with
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`its bypass ports open” and is “not cemented into the wellbore as Petitioner’s
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00768
`motivation requires.” Resp. 5. PO’s argument misses Petitioner’s obviousness case
`
`because Petitioner is asserting that it would have been obvious to add features of
`
`Giroux to Patel ’427. Pet. at 46-48 (asserting “it would have been obvious for a
`
`POSITA to incorporate [the features (1)-(5) disclosed in Giroux] in the sleeves of
`
`Patel ’427”); EX1022 ¶¶135-37. Rather, as Mr. Chambers noted and as Dr.
`
`Fleckenstein conceded, Giroux is a hydraulically actuated sliding sleeve, which a
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`POSITA knew to use as a toe sleeve, that shared many design features with Patel
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`’427. EX1022 ¶¶135-37; EX1045 73:4-7, 76:10-15, 78:16-23. Thus, it would have
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`been obvious to use Giroux’s features in Patel ’427’s sliding sleeves.
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`Although Dr. Fleckenstein opined that a POSITA would not have known that
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`Giroux could be used as a toe sleeve for fracturing, he stated in his own patent filed
`
`in 2011 that his stimulation valve could be used for any purpose that involved
`
`diversion of flow. EX1032 3:28-31; EX1045 72:4-20. Thus, Dr. Fleckenstein’s
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`opinion that a POSITA would have viewed Giroux’s ability to function as a flow-
`
`diverting valve so narrowly is not credible.
`
`IV. PO’S REMAINING ARGUMENTS FAIL
`
`A. A POSITA Was Aware of Urged Sleeves
`In attacking Ground 3, PO baselessly asserts that a POSITA would not have
`
`been aware of an urged-closed sliding sleeve. Resp. 23-25. The ’137 Patent
`
`Background concedes the use of different cross-sectional areas to push a piston was
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`Patent No. RE46,137 - IPR2019-00768
`known, and Giroux discloses the same bias toward an initial position disclosed in
`
`the ’137 Patent. Pet. 67-69. Because it is undisputed that a POSITA could readily
`
`modify Giroux’s sleeves to be initially closed, PO’s argument collapses.
`
`Additionally, PO is making an argument it knows is false: PO itself had urged-
`
`closed sleeves available in the late 1990s. PO freely handed out data sheets on its
`
`tools to professionals in the oilfield industry at an Offshore Technology Conference
`
`in 1998, making each of these data sheets printed publications in May 1998. EX1037
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`¶¶5-7. EX1027 shows a Baker Hughes Model “B” Annulus Operated Reversing
`
`Valve with Rupture Disc that is the same tool as the ’137 Patent preferred
`
`embodiment except that it is actuated by annular pressure instead of passage (or
`
`tubing) internal pressure. Page 3 of EX1027 shows the internals of the tool and
`
`shows that o-ring 3 on the left of the tool is larger than o-ring 2 on the right. EX1046
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`(Chamber Reply Dec.) ¶¶8-12.
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`EX1027 3 (annotated).
`
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`Patent No. RE46,137 - IPR2019-00768
`The o-ring part numbers show that they are standard sizes, and 336 is an o-
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`ring that is smaller than 337. EX1046 ¶¶10-11; EX1047 (AS568) 4; EX1033 6;
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`EX1045 144:8-145:17. This necessarily means that the sliding sleeve mandrel (16)
`
`is biased (or urged) toward its initial, closed position. EX1046 ¶12. The same can
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`readily be seen in PO’s Model “A” Sampler (EX1028), which shows o-ring 5 is
`
`bigger than o-ring 4, indicating that the tool is urged toward its initial position.
`
`EX1046 ¶¶17-19; EX1045 148:22-149:24. And the same can readily be seen in
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`PO’s Model “C” Annulus Operated Reversing Valve (EX1029), which shows o-ring
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`3 is bigger than o-ring 2. EX1046 ¶¶24-26; EX1045 163:15-164:9.
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`When confronted with these examples, Dr. Fleckenstein agreed that
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`“normally” the difference in o-ring sizes indicates a difference in diameter. EX1045
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`145:7-9. Thus, these tools are urged toward their initial position. The ’137 Patent
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`itself confirms Dr. Fleckenstein’s opinion that different o-ring sizes normally
`
`indicate urging because it attributes the urging force to different-sized o-rings.
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`EX1001 2:25-29, 4:24-25 (explaining the different-sized seals (o-rings) 27 and 4
`
`create differential piston areas); EX1045 156:11-14. Thus, PO knew its own prior
`
`art tools were urged closed in the 1990s, yet it advanced this false position to the
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`Board while withholding contrary evidence. These examples only further support
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`Petitioner’s contention that a POSITA knew how to use cross-sectional areas to push
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`Patent No. RE46,137 - IPR2019-00768
`a piston one way or another as needed for a given design, as disclosed in Giroux and
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`as the ’137 Patent concedes in its Background.
`
`Giroux’s disclosure of an initially-urged piston as well as PO’s own prior art
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`publications (EX1027, EX1028, and EX1029) also refute PO’s argument that the
`
`urging limitations provide something more than a predictable result because they
`
`both disclose this feature. Resp. 25-26. In fact, PO’s expert concedes that a POSITA
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`would have been familiar with cross-sectional areas and pressures and how to use
`
`them. EX1045 100:2-10; EX2001 ¶33; EX2004 81:16-18. It is untenable that a
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`“high pressure plumber” could have predicted that an urging force could be used to
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`push a piston one way but not the other. Using a difference in cross-sectional area
`
`exposed to a common pressure to push a piston is the same feature whether the
`
`difference is pushing the piston toward or away from actuation.
`
`B. A POSITA Was Concerned with Premature Actuation of Sliding
`Sleeves
`Dr. Fleckenstein admits that a POSITA knew about and was concerned with
`
`premature actuation of sliding sleeves before 2011. EX1045 109:6-13. The prior
`
`art expressly taught that this was a concern. Pet. 56; EX1009 3. Dr. Fleckenstein
`
`admits that urging a sleeve toward its initial position helps prevent premature
`
`actuation. EX1045 108:16-109:5. PO’s expert, therefore, concedes that urging a
`
`sleeve satisfies a known concern in the art before 2011. Thus, its argument that a
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00768
`POSITA would not have been motivated to add urging (Resp. 26-34) is refuted by
`
`its own expert.
`
`PO attacks Petitioner’s reliance on some specific mechanisms of premature
`
`actuation. Resp. 26-34. But PO’s attacks on specific concerns do not undermine its
`
`expert’s agreement that premature actuation of sliding sleeves was a known concern
`
`that urging helped alleviate, which is sufficient in itself to motivate the addition of
`
`urging to Patel ’427’s sleeves. Pet. 52-56. Mr. Chambers explains that “[m]aking
`
`the sleeve biased towards its initial position (as shown in Giroux) would help prevent
`
`downhole events (such as pressure surges, vibrational, frictional, or other
`
`momentum changes) from shifting the sleeve prematurely.” EX1022 ¶150. As PO
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`admits, there is nothing holding Patel ’427’s sleeve in its position other than a rupture
`
`disc 15, which prevents pressure from acting on the piston 125 until it is ruptured.
`
`EX1021 [0025] (“[P]ressure control valve 15 controls the pressure communication
`
`from tubing bore 165 … to sliding sleeve 5.”); Resp. 28 (“Petitioner hasn’t asserted
`
`it would’ve been obvious to have modified Patel ’427’s tool with a shear pin except
`
`with respect to Urging Claims 11 and 42.”). Simply moving the tool around could
`
`potentially move the actuator mandrel 110, opening the ports. Thus, vibrational or
`
`momentum changes could easily motivate a POSITA to want something more to
`
`hold actuator mandrel 110 in position until it is ready to be opened.
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00768
`PO included urged pistons on its own tools that also included rupture discs
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`and shear pins, completely undermining Dr. Fleckenstein’s testimony that a POSITA
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`would not have done so. As discussed above, PO’s tools shown in EX1027,
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`EX1028, and EX1029 are all urged. EX1046 ¶¶12, 19, 26; EX1045 1
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