Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 8
`Entered: September 5, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`WEATHERFORD INTERNATIONAL, LLC,
`Petitioner,
`v.
`BAKER HUGHES OILFIELD OPERATIONS, LLC,
`Patent Owner.
`
`Case IPR2019-00768
`Patent RE46,137 E
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, JON B. TORNQUIST, and
`RYAN H. FLAX, Administrative Patent Judges.
`WEATHERLY, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`I.
`
`INTRODUCTION
`
`A. BACKGROUND
`Weatherford International, LLC (“Petitioner”) filed a petition
`(Paper 2, “Pet.”) to institute an inter partes review of claims 1–44 (the
`“challenged claims”) of U.S. Patent No. RE46,137 E (Ex. 1001, “the
`’137 patent”). 35 U.S.C. § 311. Baker Hughes Oilfield Operations, LLC
`
`
`Tel: 571-272-7822
`
`Paper 8
`Entered: September 5, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`WEATHERFORD INTERNATIONAL, LLC,
`Petitioner,
`v.
`BAKER HUGHES OILFIELD OPERATIONS, LLC,
`Patent Owner.
`
`Case IPR2019-00768
`Patent RE46,137 E
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, JON B. TORNQUIST, and
`RYAN H. FLAX, Administrative Patent Judges.
`WEATHERLY, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`I.
`
`INTRODUCTION
`
`A. BACKGROUND
`Weatherford International, LLC (“Petitioner”) filed a petition
`(Paper 2, “Pet.”) to institute an inter partes review of claims 1–44 (the
`“challenged claims”) of U.S. Patent No. RE46,137 E (Ex. 1001, “the
`’137 patent”). 35 U.S.C. § 311. Baker Hughes Oilfield Operations, LLC
`
`
`
`IPR2019-00768
`Patent RE46,137 E
`(“Patent Owner”) did not file a Preliminary Response. Institution of an inter
`partes review is authorized by statute when “the information presented in the
`petition filed under section 311 and any response filed under section 313
`shows that there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`§ 314(a). Based on our review of the record, we conclude that Petitioner is
`reasonably likely to prevail with respect to at least one of the challenged
`claims.
`Petitioner contends that the challenged claims are unpatentable under
`35 U.S.C. §§ 102 and/or 103 based on the following grounds (Pet. 21–71):
`
`Reference(s)
`Patel ’4271
`
`Claims challenged
`Basis
`§ 102(b) 1, 2, 4–7, 12–15, 18-20,
`23–30, 32–40, 43, and 44
`
`Patel ’427 and Giroux2
`
`§ 103
`
`Patel ’427, Giroux, and AAPA3 § 103
`
`1–44
`
`1–44
`
`On April 24, 2018, the Supreme Court held that, under 35 U.S.C.
`§ 314, the Office may not institute review of fewer than all claims
`challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60
`(2018). For the reasons expressed below, we determine that Petitioner has
`demonstrated a reasonable likelihood of establishing that at least
`independent claims 1, 19, 23, and 34 are unpatentable. In accordance with
`
`
`1 U.S. Published Patent Application No. 2009/0078427 (Ex. 1021,
`“Patel ’427”).
`2 U.S. Patent No. 6,834,726 B2 (Ex. 1003, “Giroux”).
`3 Applicant admitted prior art (“AAPA”).
`
`2
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`IPR2019-00768
`Patent RE46,137 E
`the SAS decision and Office guidance,4 we institute an inter partes review of
`all challenged claims of the ’137 patent on all grounds alleged by Petitioner.
`B. RELATED PROCEEDINGS
`Petitioner has identified as a related proceeding the co-pending district
`court proceeding of Baker Hughes Oilfield Operations, LLC v. Weatherford
`International, LLC, Civil Action No. 4:18-cv-4797 (S.D. Tex. 2018). Pet. 4.
`Petitioner has also identified as a related matter its petition for inter partes
`review of the ’137 patent in IPR2019-00708. See id.
`C. THE ’137 PATENT
`The ’137 patent is a reissued version of U.S. Patent No. 8,555,960 B2,
`and claims priority to an application filed July 29, 2011. Ex. 1001, cover
`page. The ’137 patent is directed to “a pressure actuated sleeve used in a
`cementing assembly that is responsive to tubing pressure to open a port.” Id.
`at 1:14–16. Petitioner’s annotated and colorized versions of Figures 1 and 2
`of the ’137 patent, reproduced below, illustrate the manner in which the
`sleeve operates.
`
`
`4 “Guidance on the impact of SAS on AIA trial proceedings” (Apr. 26,
`2018), accessible at https://www.uspto.gov/patents-application-
`process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial
`(last accessed Oct. 2, 2018) (“At this time, if the PTAB institutes a trial, the
`PTAB will institute on all challenges raised in the petition,” and “for
`pending trials . . . the panel may issue an order supplementing the institution
`decision to institute on all challenges raised in the petition.”).
`
`3
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`IPR2019-00768
`Patent RE46,137 E
`
`
`
`Annotated Figure 2 is a cross-
`Annotated Figure 1 is a cross-
`sectional view of the sleeve
`sectional view of the sleeve
`illustrating open ports 6. Id.
`illustrating closed ports 6. Id.
`at 2:35–36.
`at 2:33–34.
`The embodiment illustrated above includes movable sleeve 3 (green)
`with integrated piston 16 (purple) that is exposed to two atmospheric
`chambers (upper chamber 12 (yellow) and lower chamber 19 (light blue)).
`Burst disk 15 (red), while intact, isolates upper chamber 12 (yellow) from
`pressure in the central bore of sleeve 3 (green). Id. at 3:51–53, Figure 1.
`When pressure within that bore rises above a predetermined threshold, burst
`
`4
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`IPR2019-00768
`Patent RE46,137 E
`disk 15 (red) ruptures and high pressure enters chamber 12 (yellow) such
`that the pressure in upper chamber 12 (yellow) becomes greater than the
`pressure within lower chamber 19 (light blue). Id. at 3:59–4:2. This
`difference in pressure results in net force being applied to the upper surface
`of piston 16, which drives sleeve 3 downward until the lower surface of
`piston 16 contacts lock ring retainer 20. Id. at 4:2–7. When sleeve 3 is in
`this position, ports 6 in sleeve 3 and housing 2 align so that fluid from within
`the bore can impinge upon the casing to perforate the casing without
`requiring a perforating gun. Id. at 2:6–10.
`Claims 1, 19, 21, 23, and 34 are the independent claims of the
`’137 patent. Id. at 4:42–7:4. Claim 1, which is illustrative, recites:
`1. A valve for subterranean use, comprising:
`[a] a housing having a passage therethrough and a port in a wall
`thereof;
`[b] a sleeve having a flow path therethrough movably mounted
`in said passage of said housing between a first position where
`said port is closed and a second position where said port is at
`least in part open;
`[c] a piston associated with said sleeve for moving said sleeve,
`said piston selectively isolated from passage pressure until a
`predetermined pressure is reached.
`Id. at 4:42–51 (with letters [a]–[c] added to aid discussion).
`II. ANALYSIS
`A. CLAIM INTERPRETATION
`For petitions filed after November 13, 2018, such as the one presented
`in this case, we interpret claims in the same manner used in a civil action
`under 35 U.S.C. § 282(b) “including construing the claim in accordance with
`the ordinary and customary meaning of such claim as understood by one of
`
`5
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`IPR2019-00768
`Patent RE46,137 E
`ordinary skill in the art and the prosecution history pertaining to the patent.”
`37 C.F.R. § 42.100(b) (2018).5 Only terms that are in controversy need to
`be construed, and then only to the extent necessary to resolve the
`controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868
`F.3d 1013, 1017 (Fed. Cir. 2017).
`Petitioner contends that the phrase “a first position where said port is
`closed and a second position where said port is at least in part open” as
`recited in claims 1–22 does not include a “temporal limitation” in which the
`valve must be in the closed (first) position before the valve is actuated and in
`the open (second) position after the valve is actuated. Pet. 20–21. Based on
`our review of Patel ’427, which describes open and closed positions that
`meet a “temporal limitation,” we need not resolve whether claims 1–22
`include such a limitation for purposes of this Decision.
`B. LEGAL STANDARDS
`Petitioner challenges the patentability of claims 1–44 on the grounds
`that the claims are either anticipated or obvious in light of the following
`references: Patel ’427 alone or in combination with Giroux and AAPA.
`Pet. 21–71. “A claim is anticipated only if each and every element as set
`forth in the claim is found, either expressly or inherently described, in a
`single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal.,
`814 F.2d 628, 631 (Fed. Cir. 1987). The Supreme Court in KSR
`
`
`5 On October 11, 2018, the USPTO revised its rules to harmonize the
`Board’s claim construction standard with that used in federal district court.
`Changes to the Claim Construction Standard for Interpreting Claims in Trial
`Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340
`(Oct. 11, 2018) (to be codified at 37 C.F.R. pt. 42). This rule change applies
`to petitions filed on or after November 13, 2018. Id.
`
`6
`
`
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`IPR2019-00768
`Patent RE46,137 E
`International Co. v. Teleflex Inc., 550 U.S. 398 (2007), reaffirmed the
`framework for determining obviousness as set forth in Graham v. John
`Deere Co., 383 U.S. 1 (1966). The KSR Court summarized the four factual
`inquiries set forth in Graham that we apply in determining whether a claim
`is reasonably likely to be unpatentable as obvious under 35 U.S.C. § 103(a)
`as follows: (1) determining the scope and content of the prior art,
`(2) ascertaining the differences between the prior art and the claims at issue,
`(3) resolving the level of ordinary skill in the pertinent art, and
`(4) considering objective evidence indicating obviousness or
`nonobviousness. KSR, 550 U.S. at 406.
`C. ANTICIPATION BY PATEL ’427
`1. Independent Claim 1
`Petitioner identifies in detail the manner in which Patel ’427 describes
`every element of claim 1 and supplements its showing with testimony from
`Michael R. Chambers (Ex. 1022). Pet. 21–46. Petitioner relies upon the
`annotated and colorized versions of Patel ’427’s Figures 4 and 6 that we
`discuss below, which use mostly the same coloring scheme6 that Petitioner
`applied to Figures 1 and 2 of the ’137 patent (above) to illustrate which
`components of Patel ’427 correspond to components of claim 1.
`
`
`6 Petitioner applies yellow and light blue to the two pressure chambers
`adjacent piston 125 in Patel ’427’s Figures 4 and 6 in a manner that appears
`to be opposite to the way that those colors are applied to Figures 1 and 2 of
`the ’137 patent.
`
`7
`
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`IPR2019-00768
`Patent RE46,137 E
`Petitioner’s annotated and colorized version of Patel ’427’s Figure 4 is
`reproduced below.
`
`
`
`Patel ’427’s Figure 4 is a cross section view illustrating a sliding
`sleeve in the pre-actuation, closed position. Ex. 1021 ¶ 12.
`Petitioner identifies Patel ’427’s piston 125 (purple) as the recited
`piston. Pet. 26–27 (citing Ex. 1021 ¶¶ 25, 26, Figures 4, 6; Ex. 1022 ¶ 88).
`Before actuation of Patel ’427’s sliding sleeve 5, the right-hand surface of
`piston 125 (purple) is exposed to pressure in the unnumbered
`chamber (yellow). Id. at 10 (citing Ex. 1021 ¶ 26, Figure 3). Before
`actuation, the left-hand surface of piston 125 is exposed to atmospheric
`pressure in chamber 115 (light blue), which is linked via flow path 105 to
`rupture disk 15 (red). Id. at 27–28 (citing Ex. 1021 ¶ 29, Figures 4, 6;
`Ex. 1022 ¶ 89).
`
`8
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`IPR2019-00768
`Patent RE46,137 E
`Petitioner’s annotated and colorized version of Patel ’427’s Figure 6 is
`reproduced below.
`
`
`
`Patel ’427’s Figure 6 is a cross section view illustrating a sliding
`sleeve in the post-actuation, open position. Ex. 1021 ¶ 14.
`Rupture disk 15 isolates Patel ’427’s chamber 115 and thus the left-
`hand surface of piston 125 from high pressure in bore 165 until that pressure
`reaches a predetermined level and disk 15 bursts to expose chamber 115 to
`the higher pressure in bore 165. Id. (citing Ex. 1021 ¶ 29; Ex. 1022 ¶ 89);
`see also Ex. 1022 ¶ 91 (regarding predetermined nature of set pressure of
`rupture disc). The higher bore pressure forces Patel ’427’s integral
`piston 125 (purple) and actuation mandrel 110 (green) of sliding sleeve 5 to
`slide to the right from the closed position of Figure 4 to the open position of
`Figure 6. Pet. 28 (citing Ex. 1021 ¶ 29, Figures 4, 6; Ex. 1022 ¶ 89). In the
`open position, Patel ’427’s inflow chamber 150 (blue) and port 140 (blue)
`are aligned in fluid communication so that liquid 70 can pass through
`port 140 and cause fractures 95 in cement 100 and formation 75. Id. at 23–
`24 (citing Ex. 1021 ¶¶ 25, 26, 29, Figure 6; Ex. 1022 ¶¶ 84, 85).
`
`9
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`IPR2019-00768
`Patent RE46,137 E
`Based upon our review of the current record, we conclude that
`Petitioner has demonstrated a reasonable likelihood of establishing that
`Patel ’427 anticipates claim 1.
`2. Independent Claim 19
`Petitioner contends that Patel ’427 anticipates independent claim 19,
`which is similar to claim 1 except that it further recites that the “piston has a
`first side that is selectively exposed to passage pressure and a second side
`opposite said first side exposed to a closed chamber in said housing; said
`first side of said piston is exposed to a second chamber in said housing.”7
`See id. at 33–34 (cross-referencing showings for similar limitations recited
`in dependent claims 6 and 12 at pages 29 and 30 of the Petition).
`Petitioner persuasively
`contends that the left-hand surface
`of Patel ’427’s piston 125 (purple)
`constitutes the “first side” and that
`the right-hand surface of piston 125
`(purple) constitutes the “second
`side.” Petitioner’s contentions are
`illustrated in the annotated pertinent
`portion of Patel ’427’s Figure 4 reproduced at right. Id. at 36. Petitioner
`persuasively contends that chamber 115 constitutes the “second chamber”
`and the yellow chamber constitutes the “closed chamber.” Id. at 33–34.
`
`
`7 Ex. 1001, 5:42–56.
`
`10
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`IPR2019-00768
`Patent RE46,137 E
`Based upon our review of the current record, we conclude that
`Petitioner has demonstrated a reasonable likelihood of establishing that
`Patel ’427 anticipates independent claim 19.
`3. Independent Claim 23
`Claim 23 is directed to a “valve for use in a cementable open-hole
`well.” Ex. 1001, 6:9–10. The housing of element 23a is similar to the
`housing of element 1a except that element 23a further recites that the port in
`the housing provides “access from an interior of said housing to an exterior
`of said housing.” Compare id. at 6:11–14 (housing of claim 23), with id.
`at 4:43–44 (housing of claim 1). Petitioner persuasively demonstrates that
`Patel ’427’s port 140 in sliding sleeve 5, which aligns with inflow
`chamber 150, meets this additional requirement of element 23a. Pet. 36–37
`(citing Ex. 1021 ¶29, Figure 6; Ex. 1022 ¶ 108).
`The sleeve of element 23b is similar to the sleeve of element 1b
`except that element 23b requires that the sleeve be “movable from an initial
`closed position to an open position.” Compare Ex. 1001, 6:14–17 (sleeve of
`claim 23), with id. at 4:45–48 (sleeve of claim 1). As discussed above in
`connection with our analysis of claim 1 and for the reasons expressed by
`Petitioner specifically in connection with element 23b, Petitioner has
`demonstrated that Patel ’427’s sliding sleeve 5 works precisely this way.
`Part II.C.1 above; Pet. 37 (citing Ex. 1021 ¶¶ 25, 29, Figures 4 and 6;
`Ex. 1022 ¶¶ 105, 109, 110).
`Element 23c refers to the following portion of claim 23: “wherein
`when said sleeve is in said closed position the interior of said housing is
`isolated from the exterior of said housing and wherein when said sleeve is in
`said open position the port provides access from the interior of the housing
`
`11
`
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`IPR2019-00768
`Patent RE46,137 E
`to the exterior of the housing.” Pet. 37; Ex. 1001, 6:19–23. Petitioner
`persuasively contends that Patel ’427’s Figure 4 illustrates the claimed
`closed position and that Figure 6 illustrates the claimed open position.
`Pet. 37–38 (citing Ex. 1021, Figures 4, 6; Ex. 1022 ¶ 111); see also Part
`II.C.1 above (analyzing first and second positions of claim 1 as being closed
`and open positions of Patel ’427’s sliding sleeve 5 respectively).
`The piston of element 23d is similar to the piston of element 1c except
`that the piston of element 23d is “for moving said sleeve from the initial
`closed position to the open position.” Ex. 1001, 6:24–28. Petitioner
`persuasively contends that Patel ’427’s Figure 4 illustrates the claimed
`closed position and that Figure 6 illustrates the claimed open position.
`Pet. 38 (cross-referencing argument and evidence relating to element 1c and
`citing Ex. 1022 ¶ 112); see also Part II.C.1 above (analyzing first and second
`positions of claim 1 as being closed and open positions of Patel ’427’s
`sliding sleeve 5 respectively).
`Based on our review of the current record, we conclude that Petitioner
`has demonstrated a reasonable likelihood of establishing that Patel ’427
`anticipates independent claim 23.
`4. Independent Claim 34
`Claim 34 is directed to a “method of temporarily isolating the inside
`of a valve from an open-hole well.” Ex. 1001, 6:58–59. The method
`includes three steps: “running a valve” with a specific configuration
`(step 34a); “exposing the sleeve” of the valve to passage pressure (step 34b);
`and “moving the sleeve from the initial closed position to the open position”
`(step 34c). Id. at 6:60–7:4; see also Pet. 42–44 (enumerating three steps of
`the claimed method as 34a-34c).
`
`12
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`IPR2019-00768
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`Petitioner contends, and we agree, that its showing for elements
`23a–23c suffices to establish that Patel ’427 describes most of the structural
`limitations for the valve recited in step 34a. Petitioner further explains how
`Patel ’427 describes additional requirements in step 34a that are underlined
`in the following passage:
`running a valve connected to casing into an open-hole well, the
`valve including a housing having a passage therethrough and a
`port in a wall of the housing, and a sleeve positioned within the
`passage and movable upon exposure to a predetermined passage
`pressure from an initial closed position that covers the port to an
`open position that uncovers at least a portion of the port.
`Pet. 42.
`Petitioner persuasively contends that Patel ’427 describes “running a
`valve connected to casing into an open-hole well” when Patel ’427 states
`that “sliding sleeve 5 is run into wellbore 20 with casing 35 and cemented by
`a cement composition 60 in wellbore 20 with casing 35.” Id. at 43 (quoting
`Ex. 1021 ¶ 23; and citing Ex. 1022 ¶ 124). Petitioner also persuasively
`contends that Patel ’427’s actuator mandrel 110 is a sleeve that is “moveable
`upon exposure to a predetermined passage pressure” to uncover “at least a
`portion of” the port. Id. (citing Ex. 1021 ¶ 29; Ex. 1022 ¶ 124). Petitioner
`also persuasively contends that its showing relating to element 23d
`demonstrates that Patel ’427 describes steps 34b and 34c. Pet. 43 (cross-
`referencing showing for element 23d and citing Ex. 1022 ¶¶ 125, 126).
`Based on our review of the current record, we conclude that Petitioner
`has demonstrated a reasonable likelihood of establishing that Patel ’427
`anticipates independent claim 34.
`
`13
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`IPR2019-00768
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`
`III. CONCLUSION
`For the reasons expressed above, we determine that Petitioner has
`demonstrated a reasonable likelihood of showing that Patel ’427 anticipates
`at least independent claims 1, 19, 23, and 34 of the ’137 patent. Petitioner
`contends that all remaining claims are unpatentable as either anticipated or
`obvious, or both, with Patel ’427 being the primary reference underlying all
`challenges as set forth in the table in Part I.A above. Petitioner has
`supported all challenges to the claims with detailed argument and evidence.
`Pet. 21–71. Patent Owner, which did not file a Preliminary Response, has
`not yet advanced any arguments in response to Petitioner’s contentions.
`Based on Petitioner’s arguments and evidence and the lack of any response
`from the Patent Owner, we conclude that Petitioner has demonstrated that a
`trial of all challenges to all claims is appropriate. Accordingly, we institute
`an inter partes review of all challenged claims of the ’137 patent on all
`grounds alleged by Petitioner.
`We note that this Decision does not reflect a final determination on
`the patentability of any claim, and that the burden remains on Petitioner to
`prove unpatentability of each challenged claim. Dynamic Drinkware,
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
`IV. ORDER
`For the reasons given, it is:
`ORDERED that inter partes review is instituted of claims 1–44 with
`respect to all grounds of unpatentability set forth in the Petition; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ’137 patent is instituted commencing on the entry date
`
`14
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`IPR2019-00768
`Patent RE46,137 E
`of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4,
`notice is given of the institution of a trial.
`
`15
`
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`IPR2019-00768
`Patent RE46,137 E
`PETITIONER:
`Douglas R. Wilson
`ARMOND WILSON, LLP
`doug.wilson@armondwilson.com
`
`J. Boone Baxter
`HEIM PAYNE & CHORUSH, LLP
`bbaxter@hpcllp.com
`
`PATENT OWNER:
`Mark T. Garrett
`Eagle H. Robinson
`Jeremy Albright
`Michael Pohl
`NORTON ROSE FULBRIGHT US LLP
`mark.garrett@nortonrosefullbright.com
`eagle.robinson@nortonrosefullbright.com
`jeremy.albright@nortonrosefullbright.com
`michael.pohl@nortonrosefullbright.com
`
`16
`
`
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