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 IPR2019-00768
`Patent RE46,137
`______________
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`WEATHERFORD INTERNATIONAL, LLC,
`Petitioner,
`v.
`BAKER HUGHES OILFIELD OPERATIONS, LLC,
`Patent Owner.
`______________
`Case IPR2019-00768
`Patent RE46,137
`______________
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`Exhibit No.
`2001
`
`2002
`
`2003
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
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`PATENT OWNER’S EXHIBIT LIST
`
`Case IPR2019-00768
`Patent RE46,137
`
`Shorthand
`Fleckenstein
`
`Chambers1
`
`N/A
`
`Answer
`
`Chambers’s
`
`Description
`Declaration of William W. Fleckenstein,
`Ph.D, PE (CA#1666)
`Declaration of Michael Chambers, filed in
`IPR2019-00708 as EX1005
`Not used
`
`of Michael
`ChambersDepo. Transcript
`November 21, 2019 Deposition
`Disclaimer Filed
`in U.S. Patent No.
`RE46,137 on February 19, 2020
`Weatherford International, LLC’s Answer,
`Affirmative Defenses, and Counterclaims to
`Plaintiff’s Original Complaint (Dkt. 9 in
`Civil Action No. 4:18-cv-4797 (S.D. Tex.))
`January 30, 2020 – February 18, 2020 E-mail
`Correspondence Between Board and Parties
`Regarding Petitioner’s Renewed Request to
`File Motion
`to Terminate and/or Stay
`Reexam Under Section 315(d)
`Reexamination Operational Statistics from
`the U.S. Patent and Trademark Office
`(updated
`Dec.
`2017),
`https://www.uspto.gov/sites/default/files/do
`cuments/Website_Operational_Statistics.pdf
`ChambersDepo2 Transcript of Michael Chambers’s April 7,
`2020 Deposition
`RichardsDepo. Transcript of William Mark Richards’s April
`9, 2020 Deposition
`
`
`N/A
`
`N/A
`
`
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`Case IPR2019-00768
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`TABLE OF CONTENTS
`I. PO Did Not Concede Anticipation ...................................................................... 1
`II. Giroux Does Not Disclose Urging ....................................................................... 2
`III. Petitioner Did Not Provide a Logical Reason To Turn To Giroux ...................13
`IV. Petitioner Did Not Overcome Its Urging Failure ..............................................16
`A.
`Petitioner’s Premature Actuation Rationale Is Not Cured ..................16
`B.
`Petitioner Has Not Shown a POSITA Would Have Added Urging
`With Shear Pins ...................................................................................19
`Petitioner’s Combine-Prior-Art-Elements-To-Yield-a-Predictable-
`Result and Obvious-To-Try Rationales Remain Uncured ..................21
`V. Petitioner’s New Tools Are Improper ...............................................................21
`A.
`The New Tools Cannot Fill the Gap in Petitioner’s Challenges .........21
`B. Moreover, the New Tools Are Not Printed Publications ....................22
`C.
`Petitioner Failed To Show the New Tools Prevent Premature
`Actuation .............................................................................................24
`
`C.
`
`
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`TABLE OF AUTHORITIES
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`Case IPR2019-00768
`Patent RE46,137
`
` Page(s)
`
`Cases
`In re Aslanian,
`590 F.2d 911 (C.C.P.A. 1979) .............................................................................. 3
`Ex parte Bjorn,
`Appeal 2018-001567, slip op. (P.T.A.B. Oct. 16, 2019) ............................ 3, 5, 10
`In re Daniel,
`17 C.C.P.A. 605 (C.C.P.A. 1929) ..................................................................... 4, 5
`Dexcom, Inc. v. Waveform Techs., Inc.,
`IPR2016-01679, Paper 53 (P.T.A.B. Feb. 28, 2018) .......................................... 22
`Ex parte Elder,
`Appeal 2016-004536, slip op. (P.T.A.B. May 16, 2018) ................................. 4, 5
`In re Fulton,
`391 F.3d 1195 (Fed. Cir. 2004) .................................................................... 13, 14
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 14, 15
`In re Meng,
`492 F.2d 843 (C.C.P.A. 1974) .......................................................................... 4, 8
`In re Mraz,
`455 F.2d 1069 (C.C.P.A. 1972) ............................................................................ 4
`Ex parte Nguyen,
`Appeal 2018-001801, slip op. (P.T.A.B. Oct. 22, 2018) ............................ 7, 8, 10
`In re NuVasive, Inc.,
`842 F.3d 1376 (Fed. Cir. 2016) .............................................................. 16, 17, 18
`Presidio Components Inc. v. Am. Tech. Ceramics Corp.,
`IPR2015-01330, Paper 11 (P.T.A.B. Dec. 3, 2015) ......................................... 5, 6
`Redline Detection, LLC v. Star Envirotech, Inc.,
`811 F.3d 435 (Fed. Cir. 2015) ............................................................................ 22
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`Ex parte Roth,
`Appeal 2010-009869, slip op. (B.P.A.I. Feb. 1, 2012) ......................................... 5
`In re Seid,
`161 F.2d 229 (C.C.P.A. 1947) .............................................................................. 4
`TieTex Int’l, Ltd. v. Precision Fabrics Group, Inc.,
`IPR2015-01671, Paper 7 (P.T.A.B. Feb. 11, 2016) ............................................ 15
`In re Wolfensperger,
`302 F.2d 950 (C.C.P.A. 1962) .......................................................... 3, 4, 8, 11, 12
`Rules and Regulations
`37 C.F.R. § 42.6(e) ................................................................................................... 33
`37 C.F.R. § 42.23(b) ................................................................................................ 11
`37 C.F.R. § 42.24(c)-(d) ........................................................................................... 32
`37 C.F.R. § 42.65(a) ................................................................................................. 25
`77 Fed. Reg. 48,756 ................................................................................................ 22
`
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`
`I.
`
`PO Did Not Concede Anticipation
`PO’s characterization of Mr. Chambers’s testimony was not “false” as
`
`Petitioner contends. Reply, 2. Mr. Chambers was asked whether he interpreted “at
`
`least in part open” in claim 1 to mean that the ports in the housing are only partially
`
`covered by the sleeve. ChambersDepo., 96:2-16. He replied that he believed a
`
`POSITA would interpret that language to mean that “it is open sufficient to allow
`
`communication across that, at least in part open.” Id., 96:17-19. He was then asked
`
`to “explain how [he thought] a POSITA would come to the conclusion that open
`
`effectively means fluid communication.” Id., 96:20-22. He referred to port 6 in ’137
`
`Patent Figure 1 and explained that “the sleeve has moved sufficient so that the top
`
`of the sleeve that was right there around 32 is now at a position that is slightly – at
`
`least partly into this port where it could – where you could allow communication
`
`where it would allow fluid from inside the passage to flow outside.” Id., 96:23-97:5.
`
`He was then asked to confirm that “there’s nothing else that’s blocking the port when
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`it’s at least in part open besides possibly the sleeve.” Id., 97:6-8. After referring to
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`“[c]ement, debris, whatever is on the outside of the port” in reply, id., 97:9-10, he
`
`was asked to confirm that “no other structure that’s part of the tool” was blocking
`
`the port, id., 97:11-12, to which he replied he “believed that would be correct[,]” id.,
`
`97:13. Finally, he was asked to confirm that “that’s how a POSITA would
`
`understand the scope of that phrase ‘at least in part open,’” id., 97:14-15, to which
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`he replied, “I would have to think about it, but my first thought is that’s how they
`
`would think about it[,]” id., 97:16-17.
`
`As reflected in Patel ’427 FIGs. 8 and 6, screens 160 and check valves 155
`
`block injection pressure communication port 140 when that port is allegedly at least
`
`in part open because they are not moved out of the way of port 140 as was sleeve
`
`top 32 relative to port 6 as Mr. Chambers explained in the ’137 Patent figures he
`
`referenced. ChambersDepo., 96:20-97:17. Furthermore, Petitioner has not
`
`explained why a POSITA would not have viewed a screen 160 or a check valve 155
`
`as a structure other than actuator mandrel 110, which it mapped to the claimed
`
`sleeve. Reply, Sec. II.
`
`II. Giroux Does Not Disclose Urging
`Petitioner, relying on Giroux’s figures, asserts that “Giroux discloses urging”
`
`and contends that PO and Dr. Fleckenstein admit the same. Reply, 4, 8. That’s
`
`incorrect.
`
`PO and Dr. Fleckenstein established that Giroux’s FIG. 3 is not a disclosure
`
`of an urged-to-its-initial-position sleeve. POR, Section II.B.1(a)(ii); Fleckenstein,
`
`Section X.B.2. And despite Petitioner’s contentions that “PO is both legally and
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`factually wrong” (Reply, 4) and Dr. Fleckenstein “violates binding precedent”
`
`(Reply, 6), PO and Dr. Fleckenstein did so under the framework from Petitioner’s
`
`cases: “[t]he practical, legitimate enquiry … is what the drawing in fact discloses to
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`one skilled in the art” and a drawing’s “disclosure is limited to what it teaches or
`
`fairly suggests.” In re Aslanian, 590 F.2d 911, 914 (C.C.P.A. 1979) (emphasis
`
`added); In re Wolfensperger, 302 F.2d 950, 955 (C.C.P.A. 1962); POR, Section
`
`II.B.1(a)(ii) (assessing a POSITA’s understanding of Giroux’s FIG. 3); Fleckenstein,
`
`Section X.B.2 (same).
`
`Petitioner mischaracterizes PO’s arguments as “rel[ying] heavily on
`
`Hockerson-Halberstadt” and “disregard[ing] [Giroux]’s clear disclosure in the
`
`figures simply because Giroux does not mention biasing in its text.” Reply, 7-8.1
`
`PO, relying in part on Hockerson-Halberstadt, first established that Giroux’s FIG. 3
`
`cannot be relied on as a disclosure of every size difference depicted therein because
`
`it is not drawn to scale. POR, 12-17; Fleckenstein, ¶¶116-120. Then, rather than
`
`disregarding FIG. 3, PO established that the size difference Petitioner relies on for
`
`its urging arguments is not sufficiently clear to be a disclosure. POR, 17-23;
`
`Fleckenstein, ¶¶121-124. This is the approach that Petitioner’s cases endorse and
`
`Dr. Fleckenstein
`
`followed, undermining Petitioner’s argument
`
`that “Dr.
`
`Fleckenstein offers … rejected reasons for discounting Giroux’s disclosure” (Reply
`
`6, 8-9). EX1045, 178:3-17; Ex parte Bjorn, Appeal 2018-001567, slip op.
`
`
`1 PO did not assert the Urging Claims require a particular amount of biasing,
`
`rendering Petitioner’s arguments regarding the same (Reply, 5-8) inapposite.
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`(“Bjorn”), 16-17 (P.T.A.B. Oct. 16, 2019) (only “things shown clearly in patent
`
`drawings are not to be disregarded” (emphasis added)); Ex parte Elder, Appeal
`
`2016-004536, slip op. (“Elder”), 10-11 (P.T.A.B. May 16, 2018) (same).
`
`Moreover, “unintended or unexplained” disclosures being available as prior
`
`art does not upset Dr. Fleckenstein’s testimony (Reply, 9) because such availability
`
`is premised on the depicted feature being clear enough to constitute a disclosure. In
`
`re Seid, 161 F.2d 229, 231 (C.C.P.A. 1947) (“an accidental disclosure, if clearly
`
`made in a drawing, is available as a reference” (emphasis added)); In re Meng, 492
`
`F.2d 843, 847-48 (C.C.P.A. 1974) (while acknowledging that a drawing is available
`
`as a reference “whether the drawing disclosure [is] accidental or intentional,”
`
`refusing to find “the extremely limited offset shown would teach or suggest the
`
`[claimed] ‘gripping portion’”). Dr. Fleckenstein explained the drawing artifact
`
`possibility as part of this threshold clarity determination, which is consistent with
`
`prior decisions. See EX1045, 177:8-178:17; Fleckenstein, ¶¶121-122; In re Mraz,
`
`455 F.2d 1069, 1072 (C.C.P.A. 1972) (cannot rely on “a greatly enlarged section of
`
`a small drawing obvious never intended to show the dimensions of anything”
`
`(emphasis added)); Wolfensperger, 302 F.2d at 957 (no disclosure when “[t]he
`
`dimensions in the drawing are so close that any difference in the minimum diameters
`
`… could be attributable to a draftsman’s error” (citation omitted)); In re Daniel, 17
`
`C.C.P.A. 605, 610-11 (C.C.P.A. 1929) (it’s “ineffective … to urge that the [claimed
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`feature] is disclosed … where by an error of the draftsman … the [feature] is
`
`apparently [shown]” but “no one reading the patent would get any idea of it”)2.
`
`Petitioner’s reliance on Bjorn, Presidio, Elder, and Roth (Reply, 8-9) fails
`
`because in those cases the disputed features were depicted clearly and/or
`
`corroborated by written disclosure. Bjorn, 16-17 (depicted “clearly”); Presidio
`
`Components Inc. v. Am. Tech. Ceramics Corp., IPR2015-01330, Paper 11
`
`(“Presidio”), 10-12 (P.T.A.B. Dec. 3, 2015) (corroborated by written disclosure)
`
`Elder, 9-11 (“sufficient particularity”); Ex parte Roth, Appeal 2010-009869, slip op.,
`
`4-5, 8 (B.P.A.I. Feb. 1, 2012) (depicted “clearly”). For example, as shown below,
`
`the Bjorn Board’s finding that the outer diameter of abutment 82 [blue]
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`“substantially equal to” the “maximum thread diameter” of the bone fixture [green]
`
`was necessitated by the exterior surfaces clearly “appear[ing] even/flush.” Bjorn,
`
`16-17.
`
`
`2 Petitioner’s attempt to distinguish Daniel (Reply, 11) fails because the draftsman’s-
`
`error issues it covers (Daniel, 17 C.C.P.A. at 610-12) aren’t limited to accidental
`
`figure insertion.
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`Bjorn, 16-17 (annotated)
`
`
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`Similarly in Presidio, the figures-at-issue clearly showed that the first and
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`second ends of the electrode layer [green] were “aligned with” and “spaced inwardly
`
`from” the first and second ends, respectively, of the dielectric layer [blue] and thus
`
`constituted a disclosure thereof. Presidio, 9-10 (discussing mapping), 12 (finding
`
`disclosure).
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`Spaced-Apart
`Second Ends
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`Aligned
`First Ends
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`Presidio, 9-10 (annotated)
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`
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`Here, as in Nguyen, Giroux’s FIG. 3 “would not have conveyed that” the upper
`
`and lower exposed portions of piston 110 span different distances as Petitioner
`
`contends because “[t]he difference …, if any, as depicted in [Giroux’s FIG. 3] is so
`
`slight as to be barely perceptible.” Ex parte Nguyen, Appeal 2018-001801, slip op.
`
`(“Nguyen”), 5-6 (P.T.A.B. Oct. 22, 2018); Fleckenstein, ¶¶121-122; compare U.S.
`
`Pat. App. No. 13/975,329, FIG. 31 (cited in Nguyen, 5-6) with Dr. Fleckenstein’s
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`“annotated1” (below). And unlike the figures in Petitioner’s cases and Nguyen,
`
`Giroux’s FIG. 3 contains errors that are significantly larger than the size difference
`
`Petitioner relies on, underscoring that—even more so than in Nguyen—FIG. 3 is not
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`fairly a disclosure thereof. Fleckenstein, ¶124. Petitioner’s attempt to distinguish
`
`Nguyen as limited to the assessment of written description support (Reply, 11) fails
`
`because a figure is assessed in the same manner for written description and prior art
`
`disclosure. Compare Wolfensperger, 302 F.2d at 951, 955 with Meng, 492 F.2d at
`
`845, 847.
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`Small Difference
`
`Nguyen Figure
`(annotated)
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`Upper Exposed Area
`
`Small Difference
`
`Housing 130
`
`Giroux FIG. 3
`(annotated1)
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`Lower Exposed Area
`
`
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`Petitioner argues its position is supported by Dr. Fleckenstein’s statement,
`
`made in reference to his annotated1, that the difference in piston 110’s exposed areas
`
`is visible “to the naked eye.” Reply, 4, 6, 8; EX1045, 176:2-178:2. But as Dr.
`
`Fleckenstein explained, the issue is not whether the difference is visually
`
`perceptible, but the extent to which it is perceptible. Fleckenstein, ¶121 (not a
`
`disclosure when “the size difference is difficult to identify upon visible inspection
`
`and, practically speaking, can only be detected using measurements” (emphasis
`
`added)); see also Bjorn, 16-17 (the issue is whether the feature is “shown clearly”);
`
`Nguyen, 5-6 (size difference was visible but “barely perceptible”).
`
` Dr.
`
`Fleckenstein’s use of computer-aided annotations to render the difference
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`identifiable confirms, rather than undermines, his opinions. Fleckenstein, ¶¶108,
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`121-24.
`
`Petitioner next attempts to discount the errors in Giroux’s FIG. 3 based on
`
`Wolfensperger, asserting that Giroux’s FIGs. 4-5 and 8-12 provide “consistent
`
`disclosure of an urged piston” and implicitly criticizing Dr. Fleckenstein for
`
`“offer[ing] no opinion” on FIGs. 5, 8, and 9. Reply, 9-11. But FIG. 3 was the only
`
`portion of Giroux Petitioner relied on for its urging-claim grounds, Pet., 51-53, 68;
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`Fleckenstein, ¶15, and Petitioner cannot properly rely on newly-cited portions of
`
`Giroux. 37 C.F.R. § 42.23(b). Regardless, Petitioner does not explain why the
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`newly-cited figures disclose biased sleeves.
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`Giroux’s consistently inaccurate and “cartoonish” figures do not meet the
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`Wolfensperger standard Petitioner relies on, which was premised on the drawings-
`
`at-issue being “detailed,” “not in the least sketchy or diagrammatic in character,”
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`and “carefully drawn” with “reasonable accuracy” such that the drawings could be
`
`measured (as shown in the court’s annotated figure below) to establish that the
`
`groove width was 1-1/8" based on the 7/8" groove depth disclosed in the
`
`specification. Wolfensperger, 302 F.2d at 957-59 (emphasis added); Fleckenstein,
`
`¶¶123-124; ChambersDepo., 11:2-11. Notably, Wolfensperger distinguished its
`
`facts over a prior case in which—like here—the depicted dimensions could not be
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`relied on because they were “so close that any difference in the minimum diameters
`
`… could be attributable to a draftsman’s error.” Wolfensperger, 302 F.2d at 957.
`
`Measured 1-1/8"
`width based on
`7/8" depth
`
`Wolfensperger Figure
`(annotated)
`
`
`
`Petitioner’s final argument that a POSITA would have assumed the depicted
`
`“difference in diameters” is accurate because it’s “important in a piston” also fails.
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`Reply, 10-11. That argument is both unsupported by evidence and undermined by
`
`Giroux’s failure to “even take the care to accurately draw piston 110 such that it
`
`achieves its explicitly contemplated function that is essential to the operation of the
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`tool.” Fleckenstein, ¶124. And Petitioner’s comparison between the ’137 Patent’s
`
`figures and Giroux’s FIG. 3 is inapposite (Reply, 11 n.1) because the ’137 Patent
`
`includes the textual corroboration Giroux lacks. ’137 Patent, 1:63-23.
`
`III. Petitioner Did Not Provide a Logical Reason To Turn To Giroux
`Petitioner does not dispute Dr. Fleckenstein’s explanation of Giroux’s surge-
`
`pressure reduction tool, how it functions, and how it’s used. See POR, 5 (citing
`
`Fleckenstein ¶76); Reply Sec. III.B. Nor does Petitioner dispute that Giroux’s tool
`
`is nothing like what Petitioner’s stated motivation requires. See POR, 5 (citing
`
`Fleckenstein ¶77); Reply Sec. III.B.
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`Instead, Petitioner attempts to turn Dr. Fleckenstein’s acknowledgement that
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`Petitioner’s stated motivation is reflected in EX1009 and that Giroux discloses a
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`hydraulically-actuated sliding sleeve into an “agree[ment] that Giroux discloses the
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`very tool a POSITA would have known to use and been motivated to use in the
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`implementation described in the ’137 Patent[.]” Reply, 12-13. But Dr. Fleckenstein
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`provided no such agreement, standing firm that a POSITA would not have used
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`Giroux’s tools “for something similar to what the ’137 is used for.” EX1045, 72:16-
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`73:3.
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`Petitioner relies on Fulton to argue that it’s irrelevant that EX1009 discloses
`
`an “allegedly … even better starting point for modification than Giroux” because
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`“mere disclosure of alternative designs does not teach away.” Reply, 13 (citing In
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`re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Petitioner also cites Fulton to
`
`argue “there is no requirement that a particular combination be preferred, or optimal
`
`for the combination to be obvious.” Reply, 13 (citing Fulton, 391 F.3d at 1201-02
`
`(cleaned up)). But PO did not argue EX1009 “taught away” from Giroux. Instead,
`
`PO explained why a POSITA would never have turned to Giroux to address
`
`Petitioner’s motivation. And in Fulton, unlike here, there was no dispute about
`
`whether a POSITA would have turned to Pope to begin with. Fulton, 391 F.3d at
`
`1200-02.
`
`Petitioner’s reliance on KSR’s discussion of the potential impact of “design
`
`incentives and other market forces” is also misplaced. Reply, 13. That such
`
`incentives and forces may exist in certain circumstances and may impact POSITA
`
`behavior is irrelevant. The issue is whether they exist in this case – they do not.
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`Moreover, in its discussion of past precedents, the Court was not examining whether
`
`a particular “design incentive” or “market force” would logically have prompted a
`
`POSITA to examine “a work … available in one field of endeavor.” KSR Int’l Co.
`
`v. Teleflex Inc., 550 U.S. 398, 417 (2007). Petitioner’s reliance on KSR’s other
`
`quoted statement is also misplaced because Petitioner failed to show a POSITA
`
`would have recognized Giroux’s tools as useful for achieving Petitioner’s
`
`motivation. See Reply, 14.
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`Petitioner argues that its expert opined that the reason a POSITA would have
`
`turned to Giroux to modify Patel ’427 was “because ‘Giroux and Patel ’427 are
`
`pressure actuated sliding sleeves that use rupture disks, integrated pistons, upper and
`
`lower chambers, and downhole pressure for actuation.’ EX1022 ¶¶135-37.”
`
`Reply, 14. But characterizing two references as having similar features does not
`
`suffice as a motivation to combine. See TieTex Int’l, Ltd. v. Precision Fabrics
`
`Group, Inc., IPR2015-01671, Paper 7 at 12-13 (P.T.A.B. Feb. 11, 2016). Moreover,
`
`what its expert actually said was that “[b]ecause Giroux discloses these [five
`
`claimed] features [listed in ¶136], a POSITA who wanted information on how to
`
`change the sleeve disclosed in Patel ’427 would have naturally looked to the similar
`
`designs in Giroux.” EX1022, ¶137. And merely allegedly identifying claimed
`
`features in a secondary reference is not a motivation to turn to that secondary
`
`reference. KSR, 550 U.S. at 418; TieTex, 14.
`
`Petitioner argues that PO’s uncontested arguments and evidence about
`
`Giroux’s surge-pressure reduction tool “miss[] Petitioner’s obviousness case
`
`because Petitioner is asserting that it would have been obvious to add features of
`
`Giroux to Patel ’427.” Reply, 14-15. This appears to be an attempt to characterize
`
`PO’s position as directed to reasons for not modifying Giroux itself. But that’s not
`
`a position PO took, as reflected in POR Sec. II.A.
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`Case IPR2019-00768
`Patent RE46,137
`Finally, Petitioner’s attorney argument about EX1032 (Reply, 15) merits no
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`weight for several independent reasons. First, Petitioner has not shown EX1032 is
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`prior art, e.g., through a Dynamic Drinkware analysis. Second, Petitioner fails to
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`explain how any tool in EX1032 is similar to any Giroux tool and thus how any
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`EX1032 statement is inconsistent with any Dr. Fleckenstein opinion.
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`IV. Petitioner Did Not Overcome Its Urging Failure
`Petitioner’s Premature Actuation Rationale Is Not Cured
`A.
`Petitioner mischaracterizes Dr. Fleckenstein’s testimony to assert that the
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`“premature actuation” rationale it offered as motivating the addition of urging to
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`Patel ’427 can survive even if Petitioner’s limited explanation thereof fails. Reply,
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`18-24 (“PO’s attacks on specific concerns do not undermine its expert’s agreement
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`that premature actuation of sliding sleeves was a known concern that urging helped
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`alleviate, which is sufficient in itself to motivate the addition of urging.” (emphasis
`
`added)). Wrong.
`
`Dr. Fleckenstein explained that premature actuation is undesirable because “if
`
`a sleeve for whatever reason actuates beforehand[,] malfunctions[,] that i[s] going to
`
`cause probably an additional cost.” EX1045, 109:6-13 (emphasis added).
`
`Petitioner’s rationale requires a “reasoned explanation” why a POSITA would have
`
`(1) understood Patel ’427’s tool to be at risk of such a malfunction and (2) used
`
`biasing to address that. In re NuVasive, Inc., 842 F.3d 1376, 1383-84 (Fed. Cir.
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`- 16 -
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`Case IPR2019-00768
`Patent RE46,137
`2016). Petitioner offered “pressure surges,” “momentum changes,” and shear pin
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`failure (Pet., 56) and Mr. Chambers offered “vibrational” and “frictional” changes
`
`(Chambers1, ¶150, not mentioned in the Petition). Those mechanisms were
`
`unexplained and PO established that they would not have motivated biasing in Patel
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`’427. POR, 26-34. Petitioner’s new premature-actuation-caused-by-something
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`rationale fairs no better. And Petitioner’s reliance on EX1009 (Reply, 18) hurts
`
`Petitioner because it addressed inaccurate actuation of annulus-referenced tools with
`
`a passage-referenced tool like Patel ’427’s. EX1009, 2-3; Fleckenstein, ¶144.
`
`Furthermore, Dr. Fleckenstein’s testimony that biasing “will help to … hold[
`
`the sleeve] closed” was about the ’137 Patent’s teachings and is not usable to
`
`establish what a POSITA would have done. EX1045, 108:4-109:5; Fleckenstein,
`
`¶105; Nuvasive, 842 F.3d at 1384 (cannot consider statements “made in reference to
`
`benefits recognized after the priority date”).
`
`Petitioner contends that “PO admits[] there is nothing holding Patel ’427’s
`
`sleeve in its position other than a rupture disc.” Reply, 19. But PO established that
`
`friction and cover sleeve 145 afford adequate protection against PO’s premature
`
`actuation mechanisms. POR 32-33. Petitioner’s assertion that “[s]imply moving the
`
`tool around could potentially move the actuator mandrel 110 [to] open[] the ports”
`
`because it does not have shear pins (Reply, 19) is unsupported despite Petitioner’s
`
`contrary assertion (id., 20). Dr. Fleckenstein explained and Petitioner does not
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`- 17 -
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`Case IPR2019-00768
`Patent RE46,137
`contest that inertia from tool stoppage would keep actuator mandrel 110 in
`
`sleeve 145 rather than prematurely actuate it. Fleckenstein, ¶¶138, 152, 156. It was
`
`not unreasonable for Dr. Fleckenstein to assume that this was the type of momentum
`
`change Petitioner and Mr. Chambers alluded to (Reply, 20-21) because it was what
`
`Mr. Chambers offered when asked to explain “what [he] meant by momentum
`
`changes.” ChambersDepo., 128:22-129:7; Fleckenstein, ¶138.
`
`Petitioner’s new argument that premature actuation due to “pull[ing Patel
`
`’427] back out” would have motivated biasing (Reply, 21) fails because it offers no
`
`evidence that a POSITA would have understood such an operation to pose an
`
`appreciable risk thereof. See Fleckenstein Depo., 111:15-113:25 (not discussing
`
`whether the sleeve would actuate). Petitioner cannot shift its burden to provide such
`
`evidence as it attempts to do. Reply, 21; NuVasive, 842 F.3d at 1383-84. And Dr.
`
`Fleckenstein explained that Petitioner’s scenario is uncommon and typically
`
`addressed by “try[ing] to circulate” rather than “back[ing] up and then run[ning]
`
`into” a blockage. EX1045, 112:7-23. Petitioner’s reliance on EX1036 (Reply, 21)
`
`is inapposite because it does not establish that Petitioner’s new type of momentum
`
`changes would have risked actuating the sleeve. EX1036, 3:8-20. Rather, EX1035
`
`indicates that the actuating risk EX1036’s dogs address is from when “the string is
`
`lowered and brought to an abrupt stop” (EX1035, 1:29-53, 2:3-14 (discussing use of
`
`- 18 -
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`Case IPR2019-00768
`Patent RE46,137
`dogs)), which is not an issue for Patel ’427’s actuator mandrel 110 (Fleckenstein,
`
`¶¶138, 152, 156).
`
`Petitioner’s “vibrational … change[]” rationale (Reply, 19) similarly fails
`
`because its expert (1) could not identify a downhole vibrational change (where
`
`biasing with tubing pressure would have mattered) that would have prematurely
`
`actuated actuator mandrel 110 and (2) offered shear pins, rather than biasing, as the
`
`mechanism to address his actuating-during-assembly concern. ChambersDepo.,
`
`117:8-24.
`
`B.
`
`Petitioner Has Not Shown a POSITA Would Have Added Urging
`With Shear Pins
`Urging Claims 11 and 42 require both urging and a shear pin. PO established
`
`that a POSITA would not have added both to Patel ’427. POR, 28-30, 37-40. PO’s
`
`decision not to specifically address Petitioner’s shear pin rationales (Reply, 20) does
`
`not disrupt PO’s arguments because PO does not concede their adequacy.
`
`Petitioner contends that Giroux evidences “a belief in the art that” both shear
`
`pins and urging were warranted for “additional premature actuation prevention.”
`
`Reply, 20. 24-25. That contention fails because Giroux’s piston 110 is not urged
`
`and Giroux expresses a consistent concern about a failure to actuate. Giroux, 8:38-
`
`56, 9:39-60.
`
`Petitioner’s new shear pin evidence does not cure its shear-pin-failure
`
`rationale, which should be given little weight due to Mr. Chambers’s admission that
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`Case IPR2019-00768
`Patent RE46,137
`he “do[es]n’t really know exactly how shear pins fail” and does not “have that
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`experience.” Reply, 21-23; ChambersDepo2, 78:25-79:16. EX1034 concerns
`
`premature shear pin failure caused by pressure forces during actuation, a concern
`
`that’s applicable only when Patel ’427’s barrier ruptures and thus is not curable by
`
`pre-barrier-rupture biasing. EX1034, 1:14-42; Fleckenstein, ¶161. EX1035
`
`emphasizes that shear pins work “reasonably well” in “many situations” and uses
`
`dogs—like in EX1036—to mitigate shear pin failure because, in its particular
`
`application, “the string is lowered and brought to an abrupt stop,” which “cause[s]
`
`the outer sleeve to stress the shear pins.” EX1035, 1:17-25, 1:29-53, 2:3-14;
`
`EX1036, 3:8-20. Patel ’427’s tool does not face the same abrupt-stop-shear-pin-
`
`failure susceptibility because it rests in cover sleeve 145.
`
`Finally, Petitioner’s expert’s admission that there is not a motivation to bias
`
`when a tool uses shear pins and atmospheric chambers undercuts Petitioner’s
`
`assertion that a POSITA would have used both in Patel ’427, whose actuation
`
`chamber is atmospheric. Patel ’427, ¶¶[0026], [0029]; Fleckenstein, ¶¶147-150;
`
`ChambersDepo., 94:24-95:23. Petitioner tries to limit Mr. Chambers’s admission
`
`because he “was asked to assume away any concern about shear pin failures or the
`
`inadvertent absence of the shear pins.” Reply, 23-24. But he was not
`
`(ChambersDepo., 94:24-95:23) and his conclusory omitted-shear–pin concern is not
`
`credible because, as he testified, “normally tools are assembled very slowly” and
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`- 20 -
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`Case IPR2019-00768
`Patent RE46,137
`“the engineer would be there the whole time they are assembling all the tools”
`
`(ChambersDepo2, 44:5-15; ChambersDepo., 119:9-24; Fleckenstein, ¶136). See
`
`also EXS1027-1028 (providing detailed assembly instructions, including when and
`
`where to put the shear pins). Mr. Chambers’s cross-examination testimony
`
`contradicting his declaration testimony casts doubt on the latter, not the former as
`
`Petitioner contends. Reply, 23-24. And Petitioner premising its motivation on the
`
`omission of a claimed feature only highlights the deficiency thereof.
`
`C.
`
`Petitioner’s Combine-Prior-Art-Elements-To-Yield-a-Predictable-
`Result and Obvious-To-Try Rationales Remain Uncured
`PO established
`that Petitioner’s combine-prior-art-elements-to-yield-a-
`
`predictable-result and obvious-to-try rationales fail because Giroux does not disclose
`
`biasing and the allegedly admitted prior art (“APA”) would not operate according to
`
`its “established function” in the proposed combination. POR, 23-26, 37. Petitioner
`
`does not contest that its APA-based argument fails (Reply, 18, 23) and its improper,
`
`non-responsive use of new references to supplant the APA (id.) does not cure the
`
`deficiencies thereof (infra Section V).
`
`V.
`
`Petitioner’s New Tools Are Improper
`A. The New Tools Cannot Fill the Gap in Petitioner’s Challenges
`Petitioner mischaracterizes PO’s argument that “Petitioner[] fail[ed] to offer
`
`a prior art r
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