`
`
`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 RESPONSE
`
`
`
`
`
`
`PATENT OWNER’S EXHIBIT LIST
`
`Case IPR2019-00768
`Patent RE46,137
`
`Exhibit
`2001
`
`Shorthand
`Fleckenstein
`
`2002
`
`Chambers1
`
`2003
`2004
`
`
`ChambersDepo.
`
`Description
`Declaration of William W. Fleckenstein, Ph.D,
`PE (CA#1666)
`Declaration of Michael Chambers, filed in
`IPR2019-00708 as EX1005
`Not used
`Transcript of Michael Chamber’s November
`21, 2019 Deposition
`
`
`
`
`
`
`i
`
`
`
`I.
`II.
`
`TABLE OF CONTENTS
`
`Case IPR2019-00768
`Patent RE46,137
`
`(ii)
`
`INTRODUCTION ........................................................................................... 1
`PETITIONER’S GROUND 2 AND 3 OBVIOUSNESS
`CHALLENGES REQUIRING GIROUX FAIL ............................................. 1
`A.
`Petitioner’s Motivation Would Not Have Led a POSITA to Giroux.... 3
`B.
`The “Urging” Claims: 8-11, 16, 17, 31, 41, and 42 ............................. 6
`1.
`The Prior Art Does Not Teach a Biased-Closed Sleeve ............ 7
`(a) Grounds 2 and 3: Giroux’s FIG. 3 Does Not
`Amount to a Disclosure of a Sleeve Urged to Its
`Initial Position .................................................................. 7
`Petitioner/Mr. Chambers’ Assertions About
`(i)
`the Configuration of Piston 110 ............................ 8
`Petitioner Hasn’t Established a POSITA
`Would View Giroux’s Piston 110 as
`Contended ............................................................ 11
`(b) Ground 3: An Urged-Closed Sleeve Is Neither
`Admitted Prior Art Nor Within the General
`Knowledge of a POSITA ............................................... 23
`(c) Grounds 2 and 3: Petitioner’s Other Obviousness
`Rationales Fail ............................................................... 25
`Petitioner’s “Combine Prior Art Elements to
`(i)
`Yield a Predictable Result” Argument Fails ....... 25
`Petitioner Fails to Establish That a POSITA
`Would Have Been Motivated by a Concern
`with Premature Movement of Patel ’427’s
`Actuator Mandrel ................................................ 26
`(iii) A POSITA Concerned with Premature
`Actuation Would Not Have Used Sleeve
`Biasing ................................................................. 34
`
`(ii)
`
`
`
`ii
`
`
`
`Case IPR2019-00768
`Patent RE46,137
`(iv) Petitioner’s Obvious-to-Try Rationale Is
`Defective ............................................................. 37
`(d) Grounds 2 and 3: There Is No Motivation for
`Biasing the Claims Requiring Biasing and a Shear
`Pin/Structure Given Mr. Chambers’s Admission .......... 37
`III. PETITIONER’S ALLEGED SIMULTANEOUS INVENTION
`EVIDENCE CANNOT SAVE ITS OBVIOUSNESS CHALLENGES ....... 40
`
`
`
`
`- iii -
`
`
`
`TABLE OF AUTHORITIES
`
`Case IPR2019-00768
`Patent RE46,137
`
` Page(s)
`
`Cases
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) .................................................................... 24, 25
`In re Daniel,
`17 C.C.P.A. 605 (C.C.P.A. 1929) ........................................................... 19, 20, 21
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) .......................................................................... 40
`Hockerson-Halberstadt, Inc. v. Avia Group Int’l,
`222 F.3d 951 (Fed. Cir. 2000) ...................................................................... 12, 17
`K/S HIMPP v. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed. Cir. 2014) .......................................................................... 24
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ........................................................................ 6, 34
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 26, 37
`In re Mraz,
`59 C.C.P.A. 866 (C.C.P.A. 1972) ....................................................................... 19
`Nautilus, Inc. v. Icon Health & Fitness, Inc.,
`Case IPR2017-01408, Paper 51 (Dec. 3, 2018) .................................................. 26
`Ex parte Nguyen,
`Appeal 2018-001801, slip op. (P.T.A.B. Oct. 22, 2018) ............18, 20, 21, 22, 23
`Nystrom v. Trex Co.,
`424 F.3d 1136 (Fed. Cir. 2005) .......................................................................... 12
`Pacific Market Int’l, LLC v. Ignite USA, LLC,
`Case IPR2016-01875, Paper 32 (March 27, 2018) ............................................. 34
`Par Pharm., Inc. v. Novartis AG,
`Case IPR2016-00084, Paper 73 (Jan. 11, 2018) ................................................. 36
`
`
`
`iv
`
`
`
`Case IPR2019-00768
`Patent RE46,137
`
`Vickery v. Barnhart,
`118 F.2d 578 (C.C.P.A. 1941) ................................................................ 19, 20, 23
`In re Wolfensperger,
`302 F.2d 950 (C.C.P.A. 1962) ................................................................ 19, 20, 23
`In re Wright,
`569 F.2d 1124 (CCPA 1976) .................................................................. 12, 15, 21
`Rules and Statutes
`35 U.S.C. § 312(a)(3) ......................................................................................... 30, 40
`37 C.F.R. § 42.104(b)(5) .............................................................................. 30, 31, 40
`
`
`
`
`
`- v -
`
`
`
`IPR2019-00768
`Patent RE46,137
`
`I.
`
`INTRODUCTION
`Petitioner has failed to establish the unpatentability of any of the Urging
`
`Claims (8-11, 16, 17, 31, 41, and 42) for multiple reasons.
`
`First, and with respect to all of Petitioner’s obviousness challenges, Petitioner
`
`has not established a logical reason for a POSITA—concerned with creating a flow
`
`path at the toe of a cased and cemented well at the beginning of a multistage
`
`fracturing operation—would have looked to Giroux (EX1003). Giroux discloses a
`
`surge pressure reduction tool, not a toe sleeve for a fracking operation. Petitioner’s
`
`reliance on Giroux is driven purely by hindsight, not the perspective of a POSITA
`
`faced with the motivation Petitioner asserts.
`
`Second, and with particular respect to the Urging Claims, Petitioner’s
`
`challenges also fail because they rely on Giroux’s alleged disclosure of a biased
`
`sleeve (FIG. 3’s piston 110). But a POSITA wouldn’t have interpreted the small
`
`dimensional difference in certain features of that piston as indicating the piston was
`
`biased, as Petitioner and Mr. Chambers attempt to do. Mr. Chambers admitted the
`
`piston was “cartoonishly” depicted, Giroux’s depiction of the piston includes errors
`
`that are actually larger than the dimensional difference, and Giroux’s text does not
`
`indicate the piston is biased or provide the dimensions of that piston. Petitioner
`
`attempts to address this deficiency by also suggesting that the ’137 Patent discloses
`
`
`
`- 1 -
`
`
`
`IPR2019-00768
`Patent RE46,137
`a biased sleeve, but that sleeve was biased to the actuated, open position, not the
`
`initial, closed position.
`
`Third, setting aside whether the prior art teaches a biased-closed sleeve,
`
`Petitioner’s rationales for why a POSITA would have been motivated to modify
`
`Patel ’427’s actuator mandrel to be biased closed are not persuasive. Petitioner’s
`
`“pressure surges” and “momentum changes” aren’t explained in any detail in the
`
`Petition and, as Dr. Fleckenstein explains, wouldn’t have motivated a POSITA
`
`anyway. For example, the momentum change Mr. Chambers came up with in his
`
`deposition would actually tend to keep Patel ’427’s actuator mandrel in its closed
`
`position, which plainly wouldn’t motivate a POSITA to bias it in that same position.
`
`Finally, Petitioner’s challenges to Urging Claims 11 and 42, which it alleges
`
`are met by a biased-closed sleeve with a shear pin, are defeated by Mr. Chambers’s
`
`deposition testimony. Specifically, he conceded that, in Patel ’427, if the chambers
`
`surrounding the actuator mandrel 110’s piston are atmospheric, there probably isn’t
`
`a reason to bias the sleeve closed. Patent Owner cannot find a contention in the
`
`relevant portions of the Petition or Mr. Chambers’s declaration for setting those
`
`chambers to a pressure other than atmospheric.
`
`Patent Owner does not acquiesce to Petitioner’s other challenges, which the
`
`Board can only accept if it determines that Petitioner has met its burden of proof.
`
`And the Board must consider those other challenges in light of Mr. Chambers’s
`
`
`
`- 2 -
`
`
`
`IPR2019-00768
`Patent RE46,137
`deposition testimony that a POSITA would not (based on his “first thought”)
`
`consider a valve to have a port that was “at least in part open,” as recited in claims
`
`1-22, when a structure other than the valve’s sleeve was blocking the port.
`
`ChambersDepo., 96:2-97:17. With its screens 160 and/or back flow check
`
`valves 155 that block any otherwise open portions of its ports, Patel ’427’s sliding
`
`sleeve 5 is just such a valve. See Patel ’427, ¶[0026], FIGs. 3-4.
`
`II.
`
`PETITIONER’S GROUND 2 AND 3 OBVIOUSNESS CHALLENGES
`REQUIRING GIROUX FAIL
`In Grounds 2 and 3, Petitioner asserts that Giroux discloses “features (1)-(5),”
`
`which correspond to the limitations in claims 3, 8-11, 16, 17, 20, 21, 22, 31, 41, 42,
`
`and 43. Pet., 46-47 (Ground 2), 66-67 (Ground 3, though listed in a different order).
`
`The “urging” feature is found in claims 8-11, 16, 17, 31, 41, and 42 (the “Urging
`
`Claims”), and, of these, claims 11 and 42 also require a shear pin or shearable device.
`
`See Pet., 46, 66.
`
`Petitioner’s obviousness challenges in Grounds 2 and 3 involving Giroux fail
`
`for multiple, independent reasons.
`
`Petitioner’s Motivation Would Not Have Led a POSITA to Giroux
`A.
`The starting point for Petitioner’s Ground 2 obviousness positions involving
`
`Giroux is that a POSITA would have been motivated to replace a perforation in a
`
`cased and cemented wellbore at the beginning of a multistage fracturing job. See
`
`Pet., 47 (referencing Petition Sections V.A and V.B and citing EX1022, ¶¶51, 137).
`
`
`
`- 3 -
`
`
`
`IPR2019-00768
`Patent RE46,137
`In particular, Petitioner asserts on Petition page 47 that a POSITA understood it was
`
`desirable to use sliding sleeves “in the precise application disclosed in the ’137
`
`Patent,” which is discussed in the cited-to Section V.B of the Petition where
`
`Petitioner explains that EX1009 “described the use of a hydraulically actuated toe
`
`sleeve in a multistage fracturing operation like the ’137 Patent.” Pet., 9. Section
`
`V.B also cites to EX1022, ¶48, where Mr. Chambers characterizes the problem
`
`addressed by the ’137 Patent as that addressed in EX1009: “the need to increase
`
`efficiency of plug and perf fracturing [which occurs in cased and cemented wells]
`
`and that installing a hydraulically-actuated sliding sleeve at the toe of the well was
`
`a successful solution to that problem.” EX1022, ¶48. Petitioner-cited paragraph 51
`
`of EX1022 is in accord, alleging that a POSITA’s knowledge that “hydraulically
`
`actuated sliding sleeves were desirable in cemented completions for fracturing
`
`because they reduced the time and cost of perforating and other inventions.”
`
`Petitioner summarizes this on Petition page 47 with reference to “[a] POSITA
`
`looking at replacing a perforation with a sliding sleeve as known in the art or other
`
`applications,” and then contends the POSITA would have had a reason to
`
`incorporate Giroux’s “features (1)-(5)”—including urging of a sleeve—as a result.
`
`But Petitioner is incorrect.
`
`A POSITA addressing Petitioner’s motivation—perforation replacement at
`
`the toe of a cased and cemented wellbore—would never have looked to Giroux,
`
`
`
`- 4 -
`
`
`
`IPR2019-00768
`Patent RE46,137
`especially considering the existence (as Petitioner points out) of prior art solutions
`
`like EX1009, which discloses a tool designed for Petitioner’s motivation. See
`
`Fleckenstein, ¶¶72-75 (discussing the same motivation from the ’708 Proceeding),
`
`78-81 (explaining why Mr. Chambers did not have a reasonable answer for why a
`
`POSITA faced with Petitioner’s motivation would have looked to Giroux instead of
`
`EX1009); ChambersDepo., 97:18-98:10, 101:13-103:6; EX1009, 1-3, 5 (including
`
`as discussed in EX1022, ¶¶48-50).
`
`This is because Giroux’s tool is a surge pressure reduction tool designed to
`
`help lower a liner string to be cemented into a wellbore. Fleckenstein, ¶76. It
`
`reduces the surge pressure that could otherwise result from lowering a liner string
`
`because it’s run into the wellbore with its bypass ports open. Id. Giroux’s tool is
`
`designed to be released from the liner string after the liner string is cemented—not
`
`cemented into the wellbore as Petitioner’s motivation requires (Giroux, 3:12-14,
`
`3:21-23, 4:47-64, FIG. 1)—and pulled (or tripped) out of the wellbore before the
`
`type of flow path Petitioner’s motivation requires is formed. Fleckenstein, ¶76.
`
`Thus, Giroux’s tool is nothing like what Petitioner’s motivation requires, and a
`
`POSITA wouldn’t have turned to Giroux to address Petitioner’s motivation as a
`
`result. Id., ¶77; see also id., ¶¶78-81.
`
`
`
`- 5 -
`
`
`
`IPR2019-00768
`Patent RE46,137
`Because Petitioner has failed to establish a logical rationale for turning to
`
`Giroux, all of its Ground 2 challenges based on using any of Giroux’s features fail.
`
`See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
`
`For the same reason, Petitioner’s Ground 3 challenges based on using any of
`
`Giroux’s features also fail (id.), given that Petitioner carried over its Ground 2
`
`motivation to Ground 3 (Pet., 66 (“For the same reasons as explained in Section
`
`VIII.B., various claim limitations are taught by Patel ’427 in view of Giroux. All of
`
`those reasons set forth above in Ground 2, … are incorporated for this Ground 3.
`
`EX1022 ¶173.”)). Petitioner does not offer alternative motivations that are clearly
`
`asserted to alone, separate from its Ground 2 motivation, be sufficient to establish
`
`the obviousness of the claims for which it uses Giroux in Ground 2. Pet., 66-67
`
`(“For the same reasons as explained in Ground 2, and for the additional reasons set
`
`forth below, a POSITA would have been motivated to [use features (1)-(5) from
`
`Giroux].”).
`
`The “Urging” Claims: 8-11, 16, 17, 31, 41, and 42
`B.
`Claims 8-11, 16, 17, 31, 41, and 42 each requires the sleeve to be configured
`
`such that passage pressure, when below the pressure at which the piston is exposed
`
`thereto, urges the sleeve toward its initial closed position (i.e., a biased-closed
`
`sleeve). See Pet., 67; Fleckenstein, ¶103. In Grounds 2 and 3, Petitioner contends
`
`that the Urging Claims would have been obvious in view of (1) Patel ’427 and
`
`
`
`- 6 -
`
`
`
`IPR2019-00768
`Patent RE46,137
`Giroux, for Ground 2, and (2) Patel ’427, Giroux, a POSITA’s knowledge, and
`
`admitted prior art, for Ground 3. Pet., 46-49, 66-69. Both challenges fail.
`
`The Prior Art Does Not Teach a Biased-Closed Sleeve
`1.
`Petitioner acknowledges that Patel ’427’s alleged sleeve—actuator mandrel
`
`110—is not biased closed. Pet., 46; EX1022, ¶136. Nevertheless, Petitioner asserts
`
`that such sleeve biasing was “a known prior art element” that would have been
`
`obvious “to incorporate … in the sleeves of Patel ’427.” Pet., 46-47, 69. To support
`
`that contention in both of its challenges, Petitioner relies on the depicted dimensions
`
`of piston 110 in Giroux’s FIG. 3 as disclosure of a sleeve that is “urge[d] … to its
`
`initial position.” Pet., 51-53, 68-69; EX1022, ¶¶146-147, 176; ChambersDepo.,
`
`59:12-21, 55:18-57:25, 60:3-18. In Ground 3, Petitioner further relies on the ’137
`
`Patent’s discussion of prior sleeves as indicating “a POSITA would have been
`
`familiar with biased sleeve designs.” Pet., 67-69; EX1022, ¶¶ 175, 177. But the
`
`evidence Petitioner relies on does not establish that the urged-closed limitation was
`
`a known prior art element.
`
`(a) Grounds 2 and 3: Giroux’s FIG. 3 Does Not Amount
`to a Disclosure of a Sleeve Urged to Its Initial Position
`As Mr. Chambers acknowledges, Giroux doesn’t state that its piston 110 is
`
`biased toward an initial, closed position. See Giroux, 5:26-6:25 (not mentioned in
`
`the description of the Preferred Embodiment), 6:35-7:35 (not mentioned in the
`
`description of the Alternative Embodiment); EX1022, ¶¶66-67; Pet., 13-16;
`
`
`
`- 7 -
`
`
`
`IPR2019-00768
`Patent RE46,137
`ChambersDepo., 58:1-8 (“there’s no textual description of” passage pressure
`
`“urg[ing] piston 110 to the initial position”); Fleckenstein, ¶107. Instead, “piston
`
`set pin 125”—not passage pressure acting on piston 110—provides the “force
`
`holding the piston 110 to the flow housing 130” before the piston is actuated.
`
`Giroux, 5:60-64, 7:6-9; EX1022, ¶66; Fleckenstein, ¶107.
`
`Absent textual support, Petitioner and Mr. Chambers rely on the depicted
`
`dimensions of piston 110 as teaching a sleeve biased to its initial position. Pet., 52-
`
`53, 68; EX1022, ¶¶146, 176. But Giroux’s depiction of piston 110 is insufficient to
`
`support their contentions.
`
`(i)
`
`Petitioner/Mr. Chambers’ Assertions About the
`Configuration of Piston 110
`As shown below on an excerpt from Giroux’s FIG. 3, piston 110 includes
`
`upper [red] and lower [green] portions that are exposed to passage pressure before
`
`the piston is actuated. Fleckenstein, ¶108. As a result, an upward pressure force
`
`acts on the lower exposed portion and a downward pressure force acts on the upper
`
`exposed portion. See EX1022, ¶¶146, 176 (illustrating pressure forces with blue
`
`arrows); Pet., 53, 68; Fleckenstein, ¶108. Petitioner and Mr. Chambers assert that
`
`the upward force acting on the lower exposed portion is larger than the downward
`
`force acting on the upper exposed portion to yield a net upward force that urges
`
`piston 110 toward its initial position. See Pet., 52-53, 68; EX1022, ¶¶146, 176
`
`(illustrating pressure forces with blue arrows); Fleckenstein, ¶108. This is because,
`
`
`
`- 8 -
`
`
`
`IPR2019-00768
`Patent RE46,137
`according to them, the “effective” area of the lower exposed portion is larger than
`
`the “effective” area of the upper exposed portion. See Pet., 52-53, 68; EX1022,
`
`¶¶146, 176; ChambersDepo., 56:16-25, 59:12-21; Fleckenstein, ¶108.
`
`Upper Exposed Area
`
`Small Difference
`
`Housing 130
`
`Giroux FIG. 3
`(annotated1)
`
`Lower Exposed Area
`
`
`
`Fleckenstein, ¶108.
`
`As explained by Dr. Fleckenstein and depicted below, the alluded-to
`
`“effective” area is the “component of the total area that would yield an upward or
`
`downward force in FIG. 3.” See, e.g., text in “Annotated Fig. 3” on Pet. 53 and
`
`EX1022, ¶146; Fleckenstein, ¶109.
`
`
`
`- 9 -
`
`
`
`IPR2019-00768
`Patent RE46,137
`
`Total Area
`
`“Effective” Area
`
`Giroux FIG. 3
`(annotated2)
`
`
`
`Fleckenstein, ¶109.
`
`Petitioner’s and Mr. Chambers’ contention that piston 110’s upper and lower
`
`exposed portions have different effective areas that bias the piston is therefore
`
`premised on those portions spanning different horizontal distances along the piston’s
`
`thickness in FIG. 3. See Pet., 52-53, 68; EX1022, ¶¶146, 176; Fleckenstein, ¶110.
`
`As they describe, and with reference to Figure annotated1 above, the sizes of the
`
`uppermost and lowermost o-rings on piston 110 at least partially delineate those
`
`distances: “[t]aken in the horizontal direction, the upper portion [red] spans from an
`
`
`
`- 10 -
`
`
`
`IPR2019-00768
`Patent RE46,137
`inner wall [purple] of piston 110 to where the uppermost o-rings on the piston engage
`
`housing 130 and the lower portion [green] spans from the inner wall to where
`
`lowermost o-rings 108 engage lower sub 106.” Pet., 52-53, 68 (difference in o-ring
`
`diameters “creates a larger cross section area (with respect to passage pressure) on
`
`the bottom of piston 110 than on the top”); EX1022, ¶¶ 146, 176; ChambersDepo.,
`
`57:1-21 (“It would not be the size of the O-ring. It would be the actual surface
`
`area.”); Fleckenstein, ¶110. As labeled in Figure annotated1 above, when measured,
`
`there is a barely perceptible difference between those distances, which is the basis
`
`for Petitioner’s and Mr. Chambers’ assertions that the upper and lower exposed
`
`portions have different effective areas. See ChambersDepo., 60:14-18 (“I looked at
`
`these drawings as Giroux drew it, and I took a straight edge and measured that.”);
`
`Fleckenstein, ¶110. But, as a POSITA would have noted, there is no description in
`
`Giroux of the dimensions, or dimension differences, on which Mr. Chambers and
`
`Petitioner rely. See Giroux, 5:26-6:18; ChambersDepo., 59:22-24; Fleckenstein,
`
`¶108.
`
`(ii) Petitioner Hasn’t Established a POSITA Would
`View Giroux’s Piston 110 as Contended
`Contrary to Petitioner’s contention, “FIG. 3 would not have conveyed to a
`
`POSITA that the upper and lower exposed portions of piston 110 have different
`
`effective areas that bias the piston to its initial position.” Fleckenstein, ¶115.
`
`
`
`- 11 -
`
`
`
`IPR2019-00768
`Patent RE46,137
`First, Giroux’s figures are not drawn to scale. Id., ¶116. As Mr. Chambers
`
`acknowledges, “a POSITA would believe that [FIGs. 3 and 4] are somewhat
`
`cartoonish in trying to depict what is going on.” See ChambersDepo., 11:2-9, 62:4-
`
`24; Giroux, 3:41-4:44 (does not say figures are drawn to scale), 5:26-6:18 (in
`
`discussion of FIG. 3, no mention of the figure being drawn to scale); Fleckenstein,
`
`¶116. Because Giroux’s “specification is completely silent on” the scale of its
`
`drawings and the relative sizes of the top and bottom exposed portions of piston 110,
`
`Giroux’s “drawings do not define the precise proportions of th[ose] elements and
`
`may not be relied on to show [their] particular sizes.” Hockerson-Halberstadt, Inc.
`
`v. Avia Group Int’l, 222 F.3d 951, 956 (Fed. Cir. 2000); see also Nystrom v. Trex
`
`Co., 424 F.3d 1136, 1148-49 (Fed. Cir. 2005) (applying Hockerson-Halberstadt to
`
`anticipation analysis); In re Wright, 569 F.2d 1124, 1127 (CCPA 1976) (“arguments
`
`based on measurement of a drawing are of little value” when the reference “does not
`
`disclose that [its] drawings are to scale”); Fleckenstein, ¶121.
`
`Furthermore, Giroux doesn’t depict piston 110 accurately. In particular, its
`
`not-to-scale nature is confirmed by inaccuracies and inconsistencies in its
`
`dimensions in Giroux’s figures. Fleckenstein, ¶117. For piston 110 to fulfill its
`
`purpose of closing bypass ports 122, it must “move[] downward until its shoulder
`
`140 comes to rest against” and “bumper ring 107 … contact[s] the lower sub 106,”
`
`at which point “o-rings 108 dis[p]osed thereon effectively seal[] the bypass ports
`
`
`
`- 12 -
`
`
`
`IPR2019-00768
`Patent RE46,137
`122.” Giroux, 5:54-6:4; Fleckenstein, ¶117. But piston 110 is not drawn in a way
`
`that it could do this. Fleckenstein, ¶117.
`
`As Dr. Fleckenstein illustrates in “Annotated Excerpts of Giroux FIG. 3”
`
`(shown below), when Giroux’s FIG. 3 piston 110 is shifted downward from its
`
`initial, open position (left figure) to the “closed” position (middle figure) in which
`
`shoulder 140 rests on and bumper ring 107 contacts lower sub 106, o-rings 108 do
`
`not fully engage lower sub 106 to seal bypass ports 122. See Giroux, 5:64-6:1, 6:18-
`
`21, FIG. 4 (showing how two o-rings 108 should be on each side of bypass ports 122
`
`to seal the ports); Fleckenstein, ¶117.
`
`Not Sealed
`
`Giroux FIG. 3
`(Open)
`
`Giroux FIG. 3
`(“Closed”)
`
`Giroux FIG. 3
`(“Closed”
`No Ring Displacement)
`
`Annotated Excerpts of Giroux FIG. 3
`
`
`
`Dr. Fleckenstein also shifted piston 110 downward farther (right figure) to see what
`
`would happen when ignoring the displacement caused by bumper ring 107 as Giroux
`
`does in FIG. 4. Fleckenstein, ¶117. Contrary to a POSITA’s expectations, at least
`
`
`
`- 13 -
`
`
`
`IPR2019-00768
`Patent RE46,137
`one of the two lowermost o-rings 108 still does not work to “seal[] the bypass ports
`
`122.” See Giroux, 6:1-4, FIG. 4; Fleckenstein, ¶117.
`
`Piston 110 is depicted inaccurately in other figures as well, such as in FIG. 4,
`
`which depicts the same tool as FIG. 3 with the piston in the closed position. Giroux,
`
`6:18-22; Fleckenstein, ¶118. For example, as Dr. Fleckenstein illustrates in
`
`“Annotated Excerpts of Giroux’s FIG. 4”—shown below—piston 110 still covers
`
`bypass ports 122 when the piston is shifted upward from the closed position (right
`
`figure) back to its initial, open position (left figure). Fleckenstein, ¶118. A POSITA
`
`would have understood this as inconsistent with those ports being “open” to “allow
`
`a portion of the fluid entering the tool 100 to be diverted into an annulus between
`
`the drill string and casing.” Giroux, 4:58-62, FIG. 3 (showing ports 122
`
`unobstructed when piston 110 is in the open position); Fleckenstein, ¶118.
`
`Still Covered
`
`Giroux FIG. 4 (“Open”)
`
`Giroux FIG. 4 (Closed)
`
`Annotated Excerpts of Giroux FIG. 4
`
`
`
`
`
`- 14 -
`
`
`
`IPR2019-00768
`Patent RE46,137
`As Dr. Fleckenstein shows, it is also apparent—comparing annotated versions
`
`of Giroux’s FIGs. 3 and 4 side-by-side (below in “Annotated Giroux FIGs. 3 and
`
`4”)—that Giroux depicted the tool inconsistently. Fleckenstein, ¶119. Differences
`
`include different piston dimensions (e.g., different lengths and different thicknesses
`
`in shoulder 140); different separations between o-rings 108; and different port
`
`positioning. Id.
`
`
`
`- 15 -
`
`
`
`IPR2019-00768
`Patent RE46,137
`
`Shorter
`Piston
`
`Thicker
`Shoulder
`
`Ports Not
`Aligned
`
`Different O-
`Ring Spacing
`
`Longer
`Piston
`
`Annotated Giroux FIGs. 3 and 4
`
`
`
`Underscoring that FIG. 3 is not drawn to scale, these inaccuracies and
`
`inconsistencies confirm that it would have been unreasonable for a POSITA to rely
`
`on measurements of the distances spanned by piston 110’s upper and lower exposed
`
`
`
`- 16 -
`
`
`
`IPR2019-00768
`Patent RE46,137
`portions—as Mr. Chambers did—as a teaching that those portions have different
`
`effective areas. Fleckenstein, ¶¶ 119-120; Hockerson-Halberstadt, 222 F.3d at 956.
`
`Second, while a not-to-scale figure could convey general size differences that
`
`are clearly shown—such as “piston 110 being smaller than the rest of the tool,” per
`
`Dr. Fleckenstein—the size difference between the upper and lower exposed portions
`
`of piston 110 is not depicted with the clarity required to be a teaching to a POSITA.
`
`Fleckenstein, ¶¶121-122. As Dr. Fleckenstein illustrates below in “annotated3,” an
`
`excerpt of FIG. 3, the difference in size between the upper and lower exposed
`
`portions of piston 110—labeled “Small Difference”—is barely perceptible and can
`
`only be detected with “something like a straight edge,” which is how Mr. Chambers
`
`identified the difference. Fleckenstein, ¶¶121-122; ChambersDepo. 58:1-8, 50:22-
`
`60:2, 60:14-18.
`
`
`
`- 17 -
`
`
`
`IPR2019-00768
`Patent RE46,137
`
`Small Difference
`
`Error: Additional
`Piston Length
`Required for Both
`Lower O-Rings to
`Engage Sub 106
`
`Giroux FIG. 3
`(“Closed”)
`(annotated3)
`
`
`That small difference is important because, as Dr. Fleckenstein explains and
`
`as reflected in prior cases, when dealing with figures that aren’t to scale, “the less
`
`perceptible any size difference is, the less likely a POSITA would have understood
`
`the figure as teaching that the size difference is actually a feature of the tool.”
`
`Fleckenstein, ¶121; see, e.g., Ex parte Nguyen, Appeal 2018-001801, slip op. at 7
`
`(P.T.A.B. Oct. 22, 2018) (“The originally filed drawings would not have conveyed
`
`that the first recess has a greater depth than the second recess to a person of ordinary
`
`
`
`- 18 -
`
`
`
`IPR2019-00768
`Patent RE46,137
`skill in the art” because “[t]he difference in depths of these recesses, if any, as
`
`depicted … is so slight as to be barely perceptible.”). This is because a POSITA
`
`would have looked to the “intent” of the figure—an accidental depiction does not
`
`constitute a disclosure to a POSITA, particularly when the figure includes errors.
`
`See Fleckenstein, ¶¶121, 123; ChambersDepo., 11:6-9; In re Mraz, 59 C.C.P.A. 866,
`
`871 (C.C.P.A. 1972) (while “things patent drawings show clearly are [not] to be
`
`disregarded,” a portion of a drawing “obviously never intended to show the
`
`dimensions of anything” is not a disclosure (emphasis added)); In re Daniel, 17
`
`C.C.P.A. 605, 610-13 (C.C.P.A. 1929) (discussing effect of draftsman’s errors).
`
`In particular, a POSITA would have understood that small size differences in
`
`not-to-scale drawings “where the draftsman did not necessarily expend the effort to
`
`ensure size accuracy” could “easily be drawing artifacts, unintentional, and/or the
`
`result of a draftsman’s error.” Fleckenstein, ¶121; In re Wolfensperger, 302 F.2d
`
`950, 957 (C.C.P.A. 1962) (depicted dimensions are not a disclosure when they “are
`
`so close that any difference in the minimum diameters [as claimed] could be
`
`attributable to a draftsman’s error” (quoting Vickery v. Barnhart, 118 F.2d 578
`
`(C.C.P.A. 1941)). This is especially so when the size difference “can only
`
`[practically] be detected using measurements” because a POSITA only “would have
`
`relied on such measurements [] when the figure” has the “guarantee of precision” of
`
`a drawn-to-scale figure. Fleckenstein, ¶121. Without that “guarantee of precision,”
`
`
`
`- 19 -
`
`
`
`IPR2019-00768
`Patent RE46,137
`a POSITA would have understood it unreasonable to attempt to discern a small size
`
`difference “as a feature of the tool versus something that is merely a drawing artifact,
`
`unintentional, and/or the result of a draftsman’s error.” See Fleckenstein, ¶¶121-
`
`122; Daniel, 17 C.C.P.A at 610 (it is “ineffective … to urge that the [claimed feature]
`
`is disclosed by the [prior art], where by an error of the draftsman in one of the figures
`
`the [feature] is apparently” shown and the prior art “had no such conception, and no
`
`one reading the [prior art] would get any idea of it”).
`
`Because, as illustrated above, the distances spanned by the upper and lower
`
`exposed portions of piston 110 on which Petitioner relies “are so close that any
`
`difference [purple] in the [distances] … could be attributable to a draftsman’s error,”
`
`FIG. 3 wouldn’t have conveyed to a POSITA that the portions have different
`
`effective areas. See Fleckenstein, ¶122; Wolfensperger, 302 F.2d at 957 (quoting
`
`Vickery, 118 F.2d at 578); Nguyen, slip op. at 7 (“[t]he difference in depths of these
`
`recesses, if any, as depicted” does not constitute a disclosure because it “is so slight
`
`as to be barely perceptible”). This is particularly true here because, as Mr. Chambers
`
`admits, (1) Giroux’s FIGs. 3 and 4 are “cartoonish” and not drawn to scale, rendering
`
`“arguments based on measurement of [the] drawing”—particularly of elements that
`
`are close in size—“of little value” and (2) Giroux provides no indication that
`
`piston 110 is biased or that its exposed upper and lower portions have different
`
`effective areas, indicating it “had no such conception” of its piston being configured
`
`
`
`- 20 -
`
`
`
`IPR2019-00768
`Patent RE46,137
`that way. Fleckenstein, ¶¶108, 122; Giroux, 5:25-6:18 (silent on relied on FIG. 3
`
`dimensions); ChambersDepo., 11:2-9, 58:1-8, 59:22-24, 62:4-24; Wright, 569 F.2d
`
`at 1127; Daniel, 17 C.C.P.A at 610; Nguyen, slip op. at 7. As Dr. Fleckenstein
`
`explains, to a POSITA, Giroux’s FIG. 3 “would have lacked the precision required
`
`to reasonably discern the small size difference as a feature of the tool versus
`
`something that is merely a drawing artifact, unintentional, and/or the result of a
`
`draftsman’s error.” Fleckenstein, ¶122.
`
`This is underscored by the above-described inaccuracies and inconsistencies
`
`in Giroux’s depiction of piston 110. Fleckenstein, ¶¶123-124. At the outset, the
`
`inaccuracies in FIG. 3 would have left a POSITA skeptical of the depicted
`
`dimensions of piston 110, in contrast to Mr. Chambers, who relied on the piston
`
`being drawn accurately. See id., ¶123 (“a POSITA would have been hesitant to rely
`
`solely on the depicted dimensions [of piston 110] as a teaching”); ChambersDepo.,
`
`60:14-18 (“Q. So your opinions depend on the accuracy of the depiction of the
`
`dimensions of piston 110 in those drawings, right? A. … [Y]es.”).
`
`Furthermore, the difference in the horizontal distances spanned by
`
`piston 110’s upper and lower exposed portions that Petitioner and Mr. Chambers
`
`rely on is significantly smaller than the errors in Giroux’s depiction of the piston.
`
`Fleckenstein, ¶124
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
