Paper No. 1 58123191.1 UNITED STATES PATENT AND TRADEMARK OFFICE ______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ______________ AMERIFORGE GROUP INC. Petitioner v. WORLDWIDE OILFIELD MACHINE, INC. Patent Owner ______________ Inter Partes Review No. IPR2015-00233 Patent 6,601,650 ______________ PETITION FOR INTER PARTES REVIEW UNDER 35 U.S.C. § 312
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Paper No. 1
58123191.1
UNITED STATES PATENT AND TRADEMARK OFFICE
______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD ______________
AMERIFORGE GROUP INC. Petitioner
v.
WORLDWIDE OILFIELD MACHINE, INC. Patent Owner
______________
Inter Partes Review No. IPR2015-00233
Patent 6,601,650 ______________
PETITION FOR INTER PARTES REVIEW UNDER 35 U.S.C. § 312
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Petitioner’s Exhibit List
Exhibit Description
1001 U.S. Patent No. 6,601,650 (the “’650 Patent”)
1002 U.S. Patent No. 4,997,162 (“Baker”)
1003 U.S. Patent No. 4,215,749 (“Dare”)
1004 U.S. Patent No. 7,013,970 (“Collie”)
1005 The Design of a Coiled Tubing Cutter for Use In Subsea Oil Drilling Applications, Masters Thesis, Massachusetts Institute of Technology, 1999 (“Schlegelmilch”)
1006 MIT Libraries Catalog webpage for Ex. 1005
1007 U.S. Patent No. 4,671,312 (“Bruton”)
1008 U.S. Patent No. 5,803,431 (“Hoang”)
1009 Excerpts of Prosecution History of the ’650 Patent
1010 Joint Claim Construction and Prehearing Statement, Worldwide Oilfield Machine, Inc. v. Ameriforge Group, Inc. d/b/a AFGlobal Corp., Civil Action No. 4:13-cv-3123 (S.D. Tex.) (filed Aug. 15, 2014)
1011 Declaration of Glen Stevick (“Stevick”)
1012 Excerpts from McGraw-Hill Dictionary of Mechanical and Design Engineering (1984).
1013 “Coiled Tubing: The next Generation,” by Ali Chareuf Aphgoul, et. al., Oilfield Review, Spring 2004.
1014 U.S. Patent No. 5,845,708 (“Burge”)
1015 Excerpts from Coiled Tubing Handbook, 3rd Ed., 1998
1016 U.S. Patent No. 4,081,027 (“Nguyen”)
1017 NORSOK Standard D-002, Rev. 1 “System Requirements Well Intervention Equipment” (October 2000)
1018 Excerpts of American Petroleum Institute (API) Specification 16A, Spec. for Drill-Through Equipment, § 4.7.2.4 Shear Ram Test (1997)
1019 U.S. Patent No. 6,457,370 (“Okano”)
1020 U.S. Patent No. 4,590,823 (“Neves”)
1021 WO 2014/039622 (“Jaffrey”)
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I. INTRODUCTION
Pursuant to 35 U.S.C. § 312 and 37 C.F.R. § 42.100 et seq., Ameriforge
Group, Inc. (“Petitioner”) requests inter partes review of claims 1, 2, 4-10, 12-14,
16, 18, and 19 (the “Challenged Claims”) of U.S. Patent No. 6,601,650 (“the ’650
Patent,” Ex. 1001), which issued on August 5, 2003. The Board is authorized to
deduct all required fees associated with this petition from Fulbright & Jaworski
Deposit Account No. 50-1212/11316752.
II. MANDATORY NOTICES
A. Real Party in Interest (37 C.F.R. § 42.8(b)(1))
Ameriforge Group, Inc. (“Petitioner”) is the real party-in-interest.
B. Related Matters (37 C.F.R. § 42.8(b)(2))
The following matter may effect, or be effected by, a decision in this
proceeding: Worldwide Oilfield Machine, Inc. v. Ameriforge Group, Inc. d/b/a
AFGlobal Corp., Civil Action No. 4:13-cv-3123 (S.D. Tex.) (the “Litigation”).
C. Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
Lead counsel: Eagle H. Robinson (Reg. No. 61,361)
Back-up counsel: Mark T. Garrett (Reg. No. 44,699)
The parties proposed constructions in the Litigation (see Ex. 1010), several
of which offered by Patent Owner are indicative of the narrowest possible BRI of
certain terms. Although a different standard applies in litigation, Patent Owner’s
proposals are relevant to the BRI. During AIA debate, Senator Kyl stated:
This [district court] information should help the Office understand and construe the key claims of a patent. It should also allow the Office to identify inconsistent statements made about claim scope—for
1 Other forums, such as district courts, apply different standards of proof and claim
interpretation. Any interpretation, construction, or application of the Challenged
Claims in this Petition (whether implicit or explicit) are specific to the BRI
standard. Petitioner reserves the right to revise or depart from its interpretation,
construction, or application of the Challenged Claims under any other standard.
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example, cases where a patent owner successfully advocated a claim scope in district court that is broader than the “broadest reasonable construction” that he now urges in an inter partes review.
157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011)2; see also Sterner Lighting, Inc. v.
Cir. 2001). Here, the ’650 Patent and prior art demonstrate that a person of
ordinary skill would have known of various hydraulic actuators for subsea
applications, and would have been able to implement shearing gate valves in any
of multiple known subsea applications. Ex. 1011 at ¶ 23.
D. The Challenged Claims Are Invalid Under §§ 102(b) or 103(a)
1. Ground 1 – Anticipation by Baker
Baker discloses a “shearing gate valve” that is “capable of shearing a wire
line or small pipe extending through its bore.” Ex. 1002 at Title, 1:13-15.
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Baker discloses a “structure in which there is a single shearing of the wire
line or cable and a configuration to allow the lower portion of the sheared cable
element to fall from the interior of the gate and the valve into the well without any
short section being sheared from its upper end.” Ex. 1002 at 5:5-10, 5:43-62, FIG.
7. As shown in the annotated version of FIG. 9 above, gate 202 is “positioned
between seat rings 204 and 206.” Id. at 6:2-4. A sleeve 210 is positioned in the
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gate and “includes [an] outlet bore 212 [defining a minimum inner diameter and
cutting edge adjacent seat ring 204] and an inlet tapered [or inclined] surface 214
which diverges outwardly toward seat ring 206 [at a maximum inner diameter
opposite the cutting edge].” Id. at 6:10-12. “Seat ring 206 includes [a] tapered [or
inclined, conical] surface 215 . . . which mates with the diameter of the inlet end of
tapered surface 214 and reduces the bore in seat ring 206 . . . .” Id. at 6:12-15.
Baker also repeatedly states that its gate valve is “used on a well.” Id. at
4:56-59 (“present invention is used on a well”); 6:28-34 (referring to FIGS. 9-11:
“allow the sheared cable element to fall into the well”). To be used on a well as
explicitly taught by Baker, the valve inherently must be directly or indirectly
connected to a well casing, and Baker’s valve body 12 includes flanges for such a
connection. See Ex. 1002 at FIG. 12; Ex. 1011 at ¶ 63. Baker’s valve is also fully
capable of being closed independently of a BOP that may also be connected to a
well casing, and is thus capable of controlling fluid in place of a BOP or being
utilized without using a B.O.P. Ex. 1011 at ¶ 64.
a. Baker anticipates claims 1, 2, 4-7, 9, 12-14, 16, 18, and 19
Baker (Ex. 1002)
Claim 1
1[p][i] A method for a gate valve mountable onto a wellbore casing,
FIG. 2 (see mounting flanges on either side of valve body 12); FIGs. 9-11; 4:56-59 (“invention is used on a well”). Ex. 1011 at ¶ 63.
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Baker (Ex. 1002)
1[p][ii] said gate valve being operable for controlling fluid and cutting tubing, comprising:
6:25-28 (“gate 202 . . . at the completion of shearing the cable element (FIG. 10) and in its closed position of sealing”); 6:35-41 (“gate valve which can shear a wire line or tubular . . . without . . . interfering with the sealing”); 1:13-15 (“capable of shearing wire line or small pipe”).
1[a] mounting said gate valve on said well casing for controlling fluid flow in place of at least one BOP on said well casing;
6:25-28 (referring to FIG. 11: “in its closed position of sealing against seat ring 204.”); 6:28-34 (referring to FIGS. 9-11: “allow the sheared cable element to fall into the well”); 2:42-45 (“Pat. Nos. 4,081,027 and 4,341,264 disclose ram type blowout preventers”). Ex. 1011 at ¶ 63-65.
1[b] mounting a slidable gate within said gate valve, said slidable gate having a first side and a second side opposite said first side;
FIGs. 9-11 (first side nearest seat ring 204; second side nearest seat ring 206).
1[c] providing first and second seats for said slidable gate;
6:2-4 (“Gate 202 . . . is positioned between seat rings 204 and 206.”).
1[d] positioning said slidable gate between said first and second seats such that said first side of said gate is adjacent said first seat and said second side of said gate is adjacent said second seat;
FIG. 9 (first side nearest seat ring 204; second side nearest seat ring 206); 6:11-13 (“Seat ring 206 includes tapered surface 215 . . . which mates with . . . the inlet end of tapered surface 214 . . . .”); 6:16-17 (“side 220 of seat ring 204 which engages gate 202”).
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1[e] providing that said first and second seats each have different internal diameters adjacent said slidable gate;
FIG. 9 (see seat ring 204 with smaller inner diameter adjacent gate 202 than seat ring 206).
1[f] forming an aperture through said slidable gate;
FIG. 9; 6:9-11 (“Sleeve 210 includes outlet bore 212 and inlet tapered surface 214 which diverges outwardly toward seat ring 206.”).
1[g] providing a cutting edge on said slidable gate of said gate valve within said aperture such that said cutting edge defines at least a portion of said aperture.
FIGs. 9-10 (square edge at right of outlet bore 212 and adjoining surface of outlet bore 212); 6:25-27 (“gate 202. . . at the completion of shearing of the cable element (FIG. 10)”).
Claim 2
2. The method of claim 1, further comprising: mounting said gate valve in a subsea installation.
2:42-45 (Patent No. 4,081,027 discloses a subsea BOP); Ex. 1011 at ¶ 66.
Claim 4
4. The method of claim 1, further comprising: providing that said aperture has a minimum size at said first side of said slidable gate.
FIGs. 9-10 (square edge at right of outlet bore 212 and adjoining surface of bore 212).
Claim 5
5. The method of claim 1, further comprising: providing a single inclined surface defining aperture which is angled with respect to an axis through said aperture from about three degrees to about twenty-five degrees.
FIG. 9; 5:54-58 (“it is preferred that the diverging taper on the tapered bore 106 . . . have angles of taper which are preferred to be in the range of 10 to 12 degrees”); 5:67-68 (“Valve 200 is similar in structure to valve 10 . . . .”).
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Claim 6
6. A method for determining force needed on a gate to cut a tubular disposed within a gate valve, said gate valve being mountable on a wellbore casing such that said tubular is positional within said wellbore casing, said method comprising:
See claim elements 1[p][i]-[ii], 1[a].
6[a] providing a test body for slidably supporting a test gate, said test gate comprising dimensions related to said gate;
See claim element 1[a].
6[b] inserting a test pipe through said test body and said test gate, said test pipe comprising a dimension related to said tubular;
See claim element 1[p][ii].
6[c] applying force to said test gate until said pipe is cut by said test gate; and
See claim element 1[p[ii].
6[d] measuring said force on said test gate required for cutting said test pipe by sliding movement of said gate.
6:47-53 (“the use of the forms of the present invention which provide the single shearing of the cable element require less force to complete the shearing of the cable element that the form of the present invention which provides the dual shearing of the cable element.”). Ex. 1011 at ¶ 75.
Claim 7
The method of claim 6, further comprising: designing an actuator for said gate such that said actuator is capable of producing said force.
3:13-20 (“[A]ctuator 22 which is shown as a simply pneumatic actuator having piston chamber 24 with piston 26 slidable therein and spring 28 urging piston 26 upward as shown. Connecting rod 30 extends from piston 26 through bonnet 20 into engagement with gate
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32 for moving gate 32 within chamber 18 to open or close flow therethrough between inlet 14 and outlet 16.”).
Claim 9
9[p] A method for cutting a pipe within a wellbore utilizing a gate valve such that said pipe is pushed away from a gate within said gate valve, said gate defining an aperture therethrough, said method comprising:
FIG. 9 (see tapered surface 214); 6:35-42 (“the present invention provides a gate valve which can shear a wire line or other tubular member”). Ex. 1011 at ¶ 67.
9[a] providing said gate valve with a cutting edge on one side of said gate along said aperture through the gate;
See claim element 1[g].
9[b] providing a single inclined surface on said aperture through said gate such that said aperture opens from a minimum size adjacent said cutting edge to a maximum size distal said cutting edge, said single inclined surface extending from said minimum size to said maximum size of said aperture;
FIG. 9 (tapered surface 214); 6:9-11 (“Sleeve 210 includes outlet bore 212 and inlet tapered surface 214 which diverges outwardly toward seat ring 206.”).
9[c] inserting said pipe into said wellbore through said gate valve;
FIG 2; 6:35-42 (“a gate valve which can shear a wire line or other tubular member extending therethrough”).
9[d] closing said gate within said gate valve; and
6:25-27 (“gate 202 . . . at the completion of shearing of the cable element (FIG. 10)”).
9[e] cutting said pipe as said gate closes such that said inclined surface produces a force on said pipe to move said pipe away from said gate.
FIG. 10; 6:9-11 (“Sleeve 210 includes outlet bore 212 and inlet tapered surface 214 which diverges outwardly toward seat ring 206.”). Ex. 1011 at ¶ 67.
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Claim 12
12. The method of claim 9, further comprising: utilizing said gate valve on a wellbore without using a B.O.P.
2:42-45 (“Pat. Nos. 4,081,027 and 4,341,264 disclose ram type blowout preventers”). Ex. 1011 at ¶ 64.
Claim 13
13. The method of claim 9, further comprising: providing that said inclined surface is angled with respect to an axis through said aperture of said gate within said gate valve in a range of from three degrees to twenty-five degrees.
See claim 5.
Claim 14
14[p][i] A gate valve for a subsea riser package installation, said gate valve comprising a valve body defining a flow passageway therethough, said gate valve being operable for cutting a tubular extending through said gate valve and said subsea riser package,
FIGS. 9-11. See claim element 1[p][ii].
14[p][ii] said subsea riser package installation being operable for replacement of a B.O.P,
See claim element 1[a]. Ex. 1011 at ¶¶ 64-66.
14[p][iii] said subsea riser package being connectable to a wellbore casing, said subsea riser package installation further comprising:
See claim element 1[p][i]. Ex. 1011 at ¶¶ 64-66.
14[a] a sliding gate within said gate valve; See claim element 1[b].
14[b] a cutting edge mounted on one side of said sliding gate;
See claim element 1[g].
14[c] an inclined surface adjacent said cutting edge such that said cutting edge and said inclined surface define at least a portion of aperture through said sliding gate;
See claim element 9[b].
14[d] a hydraulic actuator for said gate valve operable to apply sufficient force to said sliding gate to cut said tubular; and
FIG. 2; 3:13-14 (“actuator 22 which is shown as a simply pneumatic actuator . . . .”); 2:42-45 (Patent No. 4,081,027
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discloses a BOP with hydraulic actuator). Ex. 1011 at ¶¶ 68-69.
14[e] a first seat on a first side of said sliding gate and a second seat on a second side of said sliding gate, at least one of said first seat of said second seat defining an interior passageway with an axial seat length wherein said interior passageway comprises a conical surface extending along a substantial portion of said axial seat length.
See claim element 1[e]. 6:11-14 (“Seat ring 206 includes tapered surface 215 on its interior which . . . reduces the bore in seat ring 206 to the flow diameter through the valve passages.”).
Claim 16
16. The gate valve of claim 14, wherein said inclined surface is angled with respect to an axis through said aperture by from three degrees to twenty degrees.
See claim 5.
Claim 18
18[p][i] A gate valve for a subsea riser package installation, said gate valve comprising a valve body defining a flow passageway therethough,
See claim element 14[p][i].
18[p][ii] said subsea riser package being sized for carrying a tubular therein having a diameter greater than two and one-half inches,
4:33-35 (“Testing of a 2 9/16 inch . . . model of the improved design shearing gate valve . . . .”). Ex. 1011 at ¶¶ 70-73.
18[p][iii] said subsea riser package being connectable to a wellbore casing, said subsea riser package installation further comprising:
See claim element 14[p][iii].
18[a] a sliding gate within said gate valve mounted for transverse movement with respect to said flow passageway;
See claim element 14[a].
18[b] a cutting edge mounted on said sliding gate;
See claim element 14[b].
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18[c] a first inclined surface adjacent said cutting edge such that said cutting edge and said first inclined surface define at least a portion of an aperture through said sliding gate;
See claim element 14[c].
18[d] a hydraulic actuator for said gate valve operable to apply sufficient force to said sliding gate to cut through said diameter of said tubular; and
See claim element 14[d].
18[e] a valve seat adjacent said sliding gate, said valve seat having an axial seat length, said valve seat defining an interior wall with second inclined inner surface, said second inclined surface defining an inner diameter which decreases with respect to axial distance away from said sliding gate.
See claim element 14[e].
Claim 19
19. The gate valve of claim 18, wherein said second inclined inner surface extends along at least a substantial portion of said axial seat at length.
See claim element 14[d].
2. Ground 2 – Obvious over Baker and Dare
Dare discloses “a gate valve which may be forcefully closed to shut in a well
and to shear off any tubing, cables, wires, or other suspension members that are
suspended in the flowline of the well.” Ex. 1003 at 1:35-38. Dare teaches the use
of its valve in a “a subsea wellhead and Christmas tree assembly,” as shown in
FIG. 1 (inset below). Id. at 2:42-45. “The wellhead assembly includes a casing
head 12 from which one or more strings of well casing (not shown) extend
downwardly into the wellbore.” Id. at 2:45-48. The Christmas tree assembly
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extends upward from the casing head 12 and, at its upper end, includes a hydraulic
connector 30 that “receives the gate valve 10.” Id. at 2:65-68. “A riser assembly
32 extends upwardly from gate valve 10 to the surface . . . .” Ex. 1003 at 4:68-5:1.
A person of ordinary skill would have recognized this use of Dare’s shearing gate
valve 10 as part of a lower riser package. Id. at 4:54-56 (“In use, valve body 34 is
carried on the lower end of the riser assembly 32 and is coupled with the top of
hydraulic connector 30.”); see also Ex. 1011 at ¶ 76. A person of ordinary skill
would have also recognized that, in the absence of Dare’s shearing gate valve, the
type of riser package disclosed by Dare would include a BOP. Ex. 1011 at ¶ 78.
Dare’s valve 10 includes a gate 42 that is actuated by a pair of hydraulic
cylinders 52 and 54. Ex. 1003 at 3:44-45. Gate 42 includes a single cutting edge
90 and two inclined surfaces defining an undercut portion 96 and undercut area
100 to “permit the sheared suspension member to freely fall downwardly through
port 44 . . . into the well without jamming gate 42.” Id. at 5:24-29, FIG. 5.
Claims 1, 2, 4-10, 12-14, 16, 18, and 19 are obvious over Baker and Dare.
To the extent Patent Owner may contend that Baker does not disclose or
suggest using its gate valve with a hydraulic actuator (claims 14d, 18d), in a subsea
installation or subsea riser package (claim elements 2, 14p[i]-[iii], 18p[i]-[iii]), or
in place of or without also using a BOP (claim elements 1[a], 12, 14[p][ii]), it
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would have been obvious to do so in view of Dare.3 For example, it would have
been obvious to use Baker’s shearing gate valve in a subsea riser package of the
type disclosed by Dare, and/or to use the hydraulic actuator disclosed by Dare to
actuate Baker’s valve. Ex. 1011 at ¶¶ 68-69, 80. Similarly, it would also have
been obvious to modify Dare’s subsea riser package to include the gate/seat
structure of Baker, which would necessarily also include Dare’s hydraulic actuator
mechanism. Ex. 1011 at ¶ 80.4 Motivations for such combinations include:
Improved Flow Characteristics: A person of ordinary skill would have been
motivated to use Baker’s gate/seat configuration instead of that of Dare to achieve
improved flow characteristics through the valve. Ex. 1011 at ¶ 81-82. For
example, Baker teaches that “it is preferred that the diverging taper on the tapered
bore” through the gate and the tapered valve seat are inclined “in the range of 10 to
12 degrees and at most 15 degrees or less so that there is a minimum of disturbance
to the flow therethrough and still provide the opening through which the lower
3 For clarity, all of the remarks herein related to obviousness (e.g., motivations) are
from the perspective of a person of ordinary skill in the art as of August 9, 2001.
4 As noted above, Patent Owner did not dispute the Examiner’s assertion during
prosecution that “[Dare’s] gate valves are mounted to casing for controlling fluid
flow without the use of a BOP,” and did not argue that Dare’s subsea riser package
is not “operable for replacement of a B.O.P.” Ex. 1009 at 13, 3.
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sheared portion of the cable element can drop from the gate bore before the gate
completely closes.” Ex. 1002 at 5:54-58. Dare’s structure includes a constant-
diameter upstream valve seat 48 and a gate with a first inclined surface 98 angled
at 10-25 degrees (preferably 17-18 degrees), and a second inclined surface 102
angled at 30-60 degrees (preferably 45 degrees). Ex. 1003 at FIGs. 2, 5; 4:39-53.
As a result, Dare’s valve would suffer from increased flow disturbances in its open
configuration due to the abrupt change in the shape (and increase in size) of the
flowpath between seat 48 and undercut portion 100. Ex. 1011 at 79.
Increased flow disturbances (i.e., turbulence) are undesirable because, for
example, turbulence can increase erosion of sealing surfaces of the seats adjoining
the gate. Ex. 1011 at ¶ 82. For example, when Dare’s gate 46 is in the open
position, a large portion of the sealing surface of seat 50 is exposed to flow and
susceptible to erosion. Id.; see also Ex. 1003 at FIG. 6. In contrast, when Baker’s
gate is in the open position, the sealing surfaces of seats 204, 206 are covered and
protected by Baker’s gate. Ex. 1011 at ¶ 82; see also Ex. 1002 at FIG. 9. As such,
in addition to including the more-desirable bore angles through its gate, Baker’s
design better protects against erosion of seals. Ex. 1011 at ¶ 82.
Manufacturability & Cost Minimization: A person of ordinary skill would
have been motivated to use Baker’s gate/seat configuration instead of Dare’s to
improve ease of manufacture and reduce the cost of manufacturing. Ex. 1011 at
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¶ 83. Baker’s gate bore is circular and symmetrical around its axis, which such a
person would have recognized to be easier and less-expensive to manufacture than
Dare’s asymmetrical bore. Ex. 1011 at ¶ 83. In particular, a radially symmetrical
bore can be manufactured with a “king mill” or boring tool rather than a more-
complex computer-numerically controlled (CNC) machining systems. Ex. 1011 at
¶ 83. In contrast, Dare’s gate bore is asymmetrical and would require more-
complex and more-expensive equipment and processes. Ex. 1011 at ¶ 83.
Combining Prior Art Elements According to Known Methods to Yield
Predictable Results: As explained above, Baker and Dare provide alternative
gate/seat structures for achieving similar results in a gate valve: (1) shearing a
wire line or tubular in only a single place at one side of the gate, and (2) providing
sufficient space at the opposite side of the gate to permit the sheared wire line or
tubular to exit the gate before it fully closes. A person of ordinary skill could have
modified Dare’s gate/seat configuration to include Baker’s alternative gate/seat
configuration by at least August 8, 2001. Such a modification would have been a
straightforward task for such a person at that time (Ex. 1011 at ¶ 84), and the
combination would have yielded nothing more than predictable results to that
person (e.g., a shearing gate valve with the functions identified immediately above
as possessed by both designs (Ex. 1011 at ¶ 84)), thus rendering the combination
obvious. See KSR Int’l Co. v Teleflex Inc., 550 U.S. 398, 416 (2007).
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Further, to the extent Patent Owner may contend that Baker’s gate valve is
not sufficiently large to be used in place of or without using a BOP, it would have
been obvious to also simply increase the size of Baker’s gate valve to do so. See,
e.g., Powers-Kennedy Contracting Corp. v. Concrete Mixing & Conveying Co.,
282 U.S. 175, 185 (1930); Maulsby v. Minn. Casket Co., 84 F.2d 107, 110 (8th Cir.
1936). For example, various sizes of casing, risers, and tubing were known in the
art as of August 9, 2001, and it would have been obvious to size of Baker’s gate
valve for use with any known size of casing, riser, or tubing, including those larger
than 2 ½ inches in diameter. Ex. 1011 at ¶¶ 70-72, 79. For example, Dare
discloses that tubing with which its shearing gate valve may be used “is normally
one inch in diameter or less, [and] it is sometimes considerably larger such as two
inches in diameter with a wall thickness of about 1/8 inch.” Ex. 1003 at 1:25-28.
A person of ordinary skill would have recognized the “macaroni tubing” discussed
in Dare was known to range in diameter up to 3 ½ inches. Ex. 1011 at ¶ 44. Such
a person thus would have understood that Dare’s shearing gate valve and similar
types of shearing gate valves could be sized to shear macaroni tubing with such
larger diameters, and that it would have been desirable to do so to be usable with
various known sizes of tubing. Ex. 1011 at ¶ 79.
Dependent claim 8 recites “utilizing a hydraulic press which is not utilized
for controlling a gate valve for applying said force to said test gate,” and dependent
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claim 10 recites “determining said force for cutting said pipe utilizing a hydraulic
press prior to said step of cutting, wherein said hydraulic press of a type not
utilized for controlling a valve for said wellbore.” It would have been obvious for
a person of ordinary skill in the art to have tested the force required to shear a
tubular with Baker’s gate valve using a single fail-safe hydraulic actuator similar to
actuator 22 shown in Baker, for example, prior to incorporating Baker’s gate/seat
structure into Dare’s system. Ex. 1011 at ¶ 86. Alternatively, it would have been
obvious to test Baker’s valve using a hydraulic shop press of the type well known
in the art and included in nearly all, if not all, fabrication shops of the type that
have manufactured such valves. Id. at ¶ 87. Such testing would have required no
more than the application of force to Baker’s gate using a known hydraulic
actuator or hydraulic shop press, which would have been different than the type of
hydraulic actuator mechanism in Dare’s system, which includes dual hydraulic
cylinders and no return spring. Id. at ¶¶ 86-87. Such a person would have been
motivated to perform these types of tests on Baker’s valve to determine the amount
of force that would be needed to shear tubulars, and/or to avoid the time and
expense of manufacturing an actuator prior to testing the valve. Id.
3. Ground 3 – Obvious over Baker and Collie
Collie discloses a subsea lower riser package 128 that is connectable to a
wellbore via wellhead 10, and that includes “large bore gate valves” 138, 140 “at
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least one of which may, if required in an emergency, be used to shear the coiled
tubing string.” Ex. 1004 at 6:55-59; 2:55-56 (“subsea christmas tree”).
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Collie teaches that its large bore shearing gate valve is used on a wellbore
without a BOP. As shown in the annotated version below, “FIG. 12 shows a
modification . . . for which the installation process is similar to a conventional
christmas tree, in that a BOP stack is not used on the tree.” Ex. 1004 at 6:36-38.
Collie also teaches that its shearing valve is operable to cut tubing and control fluid
flow in place of at least one BOP, and that its lower riser package is operable for
replacement of a BOP: “The BOP stack and marine riser are removed from the
wellhead 10 prior to tree installation and a lower riser package 128, emergency
disconnect package 130 and an open water riser 132 are used for the coiled tubing
hanger installation . . . Installation and recovery of the coiled tubing string may be
carried out . . ., without the use of a BOP.” Id. at 6:39-55 (emphasis added).
Collie’s large bore gate valves are sufficiently large to carry a tubular having
a diameter greater than 2 ½ inches. Ex. 1011 at ¶ 91-92. Collie’s gate valves are
for use with casing initial section 100, the bore diameter of which can range from 6
inches up to at least 9 5/8 inches. Ex. 1004 at 12:56-58, 13:30. Collie further
teaches that the BOP stack replaced by lower riser package 128 has a diameter of
up to 18 ¾” and no less than 6”. Id. at Table 1, col. 10 (“18’ ¾” system or smaller
6” minimum ID”). Collie also teaches that its coiled tubing hanger 12 can be
delivered and removed through gate valves 122, 124, which necessitates gate
valve sizes significantly in excess of 2 ½ inches. Id. at 6:53-59; Ex. 1011 at ¶ 92.
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Collie thus inherently discloses a shearing gate valve that is sufficiently large to
carry a tubular with a diameter greater than 2 ½ inches. Ex. 1011 at ¶¶ 91-92.
a. Collie is not cumulative of Dare
Dare and Collie take different approaches to their respective shearing gate
valves and disclose different sizes and types of tubing known to be sheared with
such gate valves. Dare discloses a particular design for a shearing gate valve in a
wellbore Christmas tree that is suitable for shearing “macaroni” or straight tubing
that may be larger than one inch in diameter (e.g., two inches), but does not specify
any particular size for its valve or Christmas tree. Collie, on the other hand,
generically discloses using a large bore shearing gate valve to shear coiled tubing
in place of a BOP. Additionally, Dare is prior art under § 102(b), whereas Collie is
prior art under § 102(e) and could potentially be sworn behind by Patent Owner.
Both Dare and Collie are therefore necessary to fully present the state of the art as
of the earliest priority date to which the Challenged Claims may be entitled.
b. Combining Baker and Collie was obvious
Claims 1, 2, 4-7, 9, 12-14, 16, 18, and 19 are obvious over Baker and Collie.
To the extent Patent Owner may contend that Baker and Collie do not
disclose or suggest a hydraulic actuator (claim elements 14[d], 18[d]), it would
have been obvious in view of Collie to use a hydraulic actuator for Baker’s valve.
Collie includes a hydraulic actuator for a valve. Ex. 1004 at 5:20-22. Hydraulic
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actuators were also known for shearing gate valves (Ex. 1011 at ¶ 68-69), and a
person of ordinary skill could have used one with predictable results (id. at ¶ 23).
It would have been obvious to use Baker’s shearing gate valve for at least
one of Collie’s large bore gate valves 122, 124 for at least each of:
Combining Prior Art Elements According to Known Methods to Yield
Predictable Results: Collie does not specify the particulars of its large bore gate
valves, other than at least one can shear coiled tubing. Ex. 1004 at 6:55-59. Baker
is a known option for such a shearing gate valve, with known benefits relative to
other known valves: (1) shearing a wire line or tubular in only a single place at
one side of the gate, and (2) providing sufficient space at the opposite side of the
gate to permit the sheared wire line or tubular to exit the gate before it fully closes.
Ex. 1011 at ¶ 94. A person of ordinary skill would have been able to use Baker’s
gate valve in Collie’s system (id. at ¶ 94), and the combination would have yielded
nothing more than predictable results to that person (id. at ¶ 94)); thus, and in view
of any of the foregoing potential benefits that would have motivated the use of
Baker’s valve, rendering the combination obvious. See KSR, 550 U.S. at 416.
Further, to the extent Patent Owner may contend that neither Baker nor
Collie inherently discloses a shearing gate valve sized to carry a tubular with a
diameter greater than 2 ½ inches, it would have been obvious to simply scale
Collie’s lower riser package and valve to accommodate a tubular having a diameter
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greater than 2 ½ inches. See, e.g., Powers-Kennedy Contracting Corp., 282 U.S. at
185; Maulsby, 84 F.2d at 110. A person of ordinary skill would have recognized
that the “coiled tubing” discussed in Collie was known to have diameters up to 4 ½
inches. Ex. 1011 at ¶ 41. Therefore, such a person would have recognized that
Collie’s shearing gate valve could be sized to shear coiled tubing with such larger
diameters, and that it would have been desirable to do so. Ex. 1011 at ¶¶ 91-92.
4. Ground 4 – Obvious over Baker and Schlegelmilch
Schlegelmilch describes an “[e]xperimental setup for static cutting blade
design tests” that used a “hydraulic compression machine” manufactured by Tinius
Olsen with an “acquisition device [that] would record the time, load, and
displacement.” Ex. 1006 at p. 38, Fig. 4.5; p. 33, § 4.1.2; p. 32, Fig. 4.1.
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Schlegelmilch’s “experimental setup” includes all elements of claim 6. The
“Test Fixture” corresponds to the claimed test body and slidably supports the
“Cutting Blade,” which corresponds to the claimed test gate and comprises
dimensions corresponding to Baker’s gate. For example, the radius and width of
each of the “round 45” and “round 60” blades shown in Schlegelmilch’s Figure 4.4
are similar to the radius and width of at least one version of Baker’s gate. The
“Coiled Tubing” corresponds to the claimed “test pipe,” and Schlegelmilch cuts
the tubing and measures the required force. Ex. 1006 at Fig. 4.10.
For claim 7, Schlegelmilch designs an actuator that is capable of producing
the required force. See Ex. 1006 at pp. 76-78, Chap. 7 Mock-up Cutter Design.
For claims 8 and 10, Schlegelmilch uses a hydraulic press (“Tinius Olsen” in
Fig. 4.5), which is not used and is not of the type used to control Baker’s valve, to
determine the force necessary to cut the pipe. Ex. 1011.
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a. Baker-Schlegelmilch is not cumulative of Baker-Dare
The Baker-Dare combination and the Baker-Schlegelmilch combination
represent two different approaches to the asserted testing claims for determining
the force needed to shear a tubular. The combination of Baker and Dare suggests
using Baker’s valve itself for testing to determine the force. In contrast, and to the
extent Patent Owner may contend that the “test body” and “test gate” of claim 6
cannot be met by the body and gate of Baker’s valve, Schlegelmilch discloses a
separate, guillotine-style test system that is structurally and functionally identical
to that of the ’650 Patent.
b. Combining Baker and Schlegelmilch was obvious
Claims 6-8 and 10 are obvious over Baker and Collie.
To the extent Patent Owner may contend that any of these elements are
lacking, it would have been obvious to combine Baker and Schlegelmilch. For
example, Schlegelmilch’s blade designs correspond in both shape and size to the
cutting blades under consideration for its coiled tubing cutter. Ex. 1006 at p. 37,
Fig. 4.4. A person of ordinary skill in the art would have recognized the potential
benefits of performing the tests contemplated by Schlegelmilch using a test fixture
and cutting blade with dimensions corresponding to Baker’s valve. Ex. 1011 at
¶ 96. For example, such testing could have reduced the time and expense of
designing an actuator by permitting real-world testing of the valve design prior to
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designing and manufacturing an actuator that might need to be changed if such
testing were performed after the actuator were first completed. Id. at ¶ 96. The
fabrication of such a test system would have been a straightforward task for such a
person as of August 9, 2001 (Ex. 1011 at ¶ 96); and the combination would have
yielded nothing more than predictable results (Ex. 1011 at ¶ 96)); thus, and in view
of any of the foregoing potential benefits that would have motivated the change,
rendering the combination obvious. See KSR, 550 U.S. at 416.
5. Ground 5 – Anticipation by Bruton
Bruton discloses a “wireline cutting . . . valve.” Ex. 1007 at Abstract.
As shown in the annotated versions of Figures 5 and 6 above, the bore of
Bruton’s gate is tapered so that “wire 47 shears at one point between downstream
seat 27 and gate 35” and “wire 47 is cut through completely before it is contacted
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by portions 29 and 43.” Id. at 4:14-21. Bruton teaches that “the tension on wire 47
will be such that when wire 47 is cut initially, the tension will pull the upstream
portion of wire 47 clear so that the wire is cut only once.” Id. at 4:21-24. “Bore 37
is stepped and includes a first portion 41 having a diameter substantially equal to
that of down stream seat 27 and a second portion 43 having a diameter
substantially equal to that of enlarged diameter portion 29 of upstream seat 25.”
Id. at 3:44-48. Preferably, “first portion 41 and second portion 43 are connected
together by a frustoconical portion 45.” Id. at 3:48-50.
Bruton teaches that its valve is used on a well. For example, “[s]urface
safety systems, which include valve and actuator combinations, are commonly
used in well heads or christmas trees through which wireline operations are
conducted.” Id. at 1:34-37. Bruton’s valve therefore must be directly or indirectly
connected to a well casing, and Bruton’s valve body 12 includes flanges for such a
connection. See id. at FIG. 1; Ex. 1011 at ¶ 98. Further, Bruton’s valve is fully
capable of being closed independently of any BOP that may also be connected to a
well casing, and is thus capable of controlling fluid in place of a BOP or being
utilized without using a BOP. Ex. 1011 at ¶ 99.
a. Bruton is not cumulative of Baker
Baker and Bruton include shearing surfaces of different sizes relative to their
bores. To the extent that Patent Owner may contend that “cutting edge” requires a
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surface that is limited by its width relative to its length (e.g., “narrow surface” as
proposed by Patent Owner in the litigation), Bruton’s FIG. 5 depicts a shearing
surface with a width that is roughly 25 percent of its smallest bore diameter (which
is related to the length of the shearing surface by the equation: circumference =
2пr). In contrast, Baker’s FIG. 9 depicts a shearing surface with a width that is
roughly 5 percent of its smallest bore diameter, much smaller than that of Baker.
b. Bruton anticipates claims 1, 2, 4-7, 9, 12-14, 16, 18, and 19
Bruton (Ex. 1007)
Claim 1
1[p][i] A method for a gate valve mountable onto a wellbore casing,
FIG. 1 (see mounting flanges on either side of valve body 17); 1:35-36 (“valve[s] . . . are commonly used in well heads or christmas trees”). Ex. 1011 at ¶ 98.
1[p][ii] said gate valve being operable for controlling fluid and cutting tubing, comprising:
FIGs. 5-6; 2:35-40 (“the gate being movable . . . between a valve closed position wherein the imperforate position is positioned between and in sealing engagement with at least one of the seats”); 4:18-19 (“wire 47 shears at one point between downstream seat 27 and gate 35”). Ex. 1011 at ¶¶ 97, 102.
1[a] mounting said gate valve on said well casing for controlling fluid flow in place of at least one BOP on said well casing;
1:35-36 (“valve[s] . . . are commonly used in well heads or christmas trees”). Ex. 1011 at ¶¶ 98-99.
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Bruton (Ex. 1007)
1[b] mounting a slidable gate within said gate valve, said slidable gate having a first side and a second side opposite said first side;
FIGs. 5-6 (first side at seat 27; second side at seat 25).
1[c] providing first and second seats for said slidable gate;
3:36-37 (“Valve 13 includes a gate 35 mounted within valve body 17 between seats 25 and 27.”).
1[d] positioning said slidable gate between said first and second seats such that said first side of said gate is adjacent said first seat and said second side of said gate is adjacent said second seat;
FIGs. 5-6 (first side nearest seat 27; second side nearest seat 25); 4:40-41 (“Gate 35 is reciprocable in valve body 17 . . . .”).
1[e] providing that said first and second seats each have different internal diameters adjacent said slidable gate;
FIGs. 5-6 (see seat 25 with smaller internal diameter adjacent gate 35 than seat 27).
1[f] forming an aperture through said slidable gate;
FIGs. 5-6; 4:37-38 (“Gate 35 includes a bore 37 and an imperforate portion 39.”).
1[g] providing a cutting edge on said slidable gate of said gate valve within said aperture such that said cutting edge defines at least a portion of said aperture.
FIGs. 5-6 (square edge at left of portion 41 of seat 35 and adjoining surface of portion 41); 4:17-19 (“wire 47 shears at one point between downstream seat 27 and gate 35.”).
Claim 2
2. The method of claim 1, further comprising: mounting said gate valve in a subsea installation.
1:34-36 (“Surface safety systems, which include valve and actuator combinations, are commonly used in well heads or christmas trees through which wireline operations are conducted”). Ex. 1011 at ¶ 101.
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Claim 4
4. The method of claim 1, further comprising: providing that said aperture has a minimum size at said first side of said slidable gate.
FIGs. 5-6 (square edge at left of portion 41 and adjoining surface of portion 41);
Claim 5
5. The method of claim 1, further comprising: providing a single inclined surface defining aperture which is angled with respect to an axis through said aperture from about three degrees to about twenty-five degrees.
FIGs. 5-6; 3:49-50 (“first portion 41 and second portion 43 are connected together by a frustoconical portion 45.”).
Claim 6
6. A method for determining force needed on a gate to cut a tubular disposed within a gate valve, said gate valve being mountable on a wellbore casing such that said tubular is positional within said wellbore casing, said method comprising:
See claim elements 1[p][i]-[ii], 1[a].
6[a] providing a test body for slidably supporting a test gate, said test gate comprising dimensions related to said gate;
See claim element 1[a].
6[b] inserting a test pipe through said test body and said test gate, said test pipe comprising a dimension related to said tubular;
See claim element 1[p][ii].
6[c] applying force to said test gate until said pipe is cut by said test gate; and
See claim element 1[p[ii].
6[d] measuring said force on said test gate required for cutting said test pipe by sliding movement of said gate.
2:22-25 (“It is a further object of the present invention to provide a valve that reduces the force necessary to cut a wireline and which prevents the formation of wire fragments within the valve body.”). Ex. 1011 at ¶ 106.
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Claim 7
The method of claim 6, further comprising: designing an actuator for said gate such that said actuator is capable of producing said force.
4:66-5:3 (“The number and size of Bellville washers 65 is selected so as to provide sufficient stroke to move actuator shaft 49 and gate 35 from the open position, . . . to the closed position, and to provide sufficient force to shear a wireline even in the absence of valve body pressure.”).
Claim 9
9[p] A method for cutting a pipe within a wellbore utilizing a gate valve such that said pipe is pushed away from a gate within said gate valve, said gate defining an aperture therethrough, said method comprising:
FIGs. 5-6 (see frustoconical portion 45); 4:18-19 (“wire 47 shears at one point between downstream seat 27 and gate 35”). Ex. 1011 at ¶ 103.
9[a] providing said gate valve with a cutting edge on one side of said gate along said aperture through the gate;
See claim element 1[g].
9[b] providing a single inclined surface on said aperture through said gate such that said aperture opens from a minimum size adjacent said cutting edge to a maximum size distal said cutting edge, said single inclined surface extending from said minimum size to said maximum size of said aperture;
FIGs. 5-6; 3:49-50 (“first portion 41 and second portion 43 are connected together by a frustoconical portion 45.”).
9[c] inserting said pipe into said wellbore through said gate valve;
FIGs. 5-6. Ex. 1011 at ¶ 102.
9[d] closing said gate within said gate valve; and
4:18-19 (“wire 47 shears at one point between downstream seat 27 and gate 35”).
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9[e] cutting said pipe as said gate closes such that said inclined surface produces a force on said pipe to move said pipe away from said gate.
FIGs. 5-6; 3:49-50 (“first portion 41 and second portion 43 are connected together by a frustoconical portion 45.”). Ex. 1011 at ¶ 103.
Claim 12
12. The method of claim 9, further comprising: utilizing said gate valve on a wellbore without using a B.O.P.
1:15-18 (“[V]alve and actuator combinations are a primary component of surface safety systems used in the control of oil or gas production.”). Ex. 1011 at ¶ 98-99.
Claim 13
13. The method of claim 9, further comprising: providing that said inclined surface is angled with respect to an axis through said aperture of said gate within said gate valve in a range of from three degrees to twenty-five degrees.
See claim 5.
Claim 14
14[p][i] A gate valve for a subsea riser package installation, said gate valve comprising a valve body defining a flow passageway therethough, said gate valve being operable for cutting a tubular extending through said gate valve and said subsea riser package,
FIGs. 1, 5-6. See claim element 1[p][ii].
14[p][ii] said subsea riser package installation being operable for replacement of a B.O.P,
See claim element 1[a]; Ex. 1011 at ¶ 98-100.
14[p][iii] said subsea riser package being connectable to a wellbore casing, said subsea riser package installation further comprising:
See claim element 1[p][i]. Ex. 1011 at ¶¶ 98-100.
14[a] a sliding gate within said gate valve; See claim element 1[b].
14[b] a cutting edge mounted on one side of said sliding gate;
See claim element 1[g].
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14[c] an inclined surface adjacent said cutting edge such that said cutting edge and said inclined surface define at least a portion of aperture through said sliding gate;
See claim element 9[b].
14[d] a hydraulic actuator for said gate valve operable to apply sufficient force to said sliding gate to cut said tubular; and
FIG. 1; 5:38-39 (“force is supplied by hydraulic . . . pressure acting on piston 77.”). Ex. 1011 at ¶¶ 97, 102.
14[e] a first seat on a first side of said sliding gate and a second seat on a second side of said sliding gate, at least one of said first seat of said second seat defining an interior passageway with an axial seat length wherein said interior passageway comprises a conical surface extending along a substantial portion of said axial seat length.
See claim element 1[e]. 3:31-35 (“upstream seat 25 . . . includes an enlarged diameter portion 29 and a reduced diameter portion 31 with a frustoconical portion 33 therebetween.”).
Claim 16
16. The gate valve of claim 14, wherein said inclined surface is angled with respect to an axis through said aperture by from three degrees to twenty degrees.
See claim 5.
Claim 18
18[p][i] A gate valve for a subsea riser package installation, said gate valve comprising a valve body defining a flow passageway therethough,
See claim element 14[p][i].
18[p][ii] said subsea riser package being sized for carrying a tubular therein having a diameter greater than two and one-half inches,
FIG. 1; 1:58-61 (“presently existing actuator designs require normally the length of the actuator for clearance from 30 inches to 50 inches”). Ex. 1011 at ¶¶ 104-105.
18[p][iii] said subsea riser package being connectable to a wellbore casing, said subsea riser package installation further comprising:
See claim element 14[p][iii].
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18[a] a sliding gate within said gate valve mounted for transverse movement with respect to said flow passageway;
See claim element 14[a].
18[b] a cutting edge mounted on said sliding gate;
See claim element 14[b].
18[c] a first inclined surface adjacent said cutting edge such that said cutting edge and said first inclined surface define at least a portion of an aperture through said sliding gate;
See claim element 14[c].
18[d] a hydraulic actuator for said gate valve operable to apply sufficient force to said sliding gate to cut through said diameter of said tubular; and
See claim element 14[d].
18[e] a valve seat adjacent said sliding gate, said valve seat having an axial seat length, said valve seat defining an interior wall with second inclined inner surface, said second inclined surface defining an inner diameter which decreases with respect to axial distance away from said sliding gate.
See claim element 14[e].
Claim 19
19. The gate valve of claim 18, wherein said second inclined inner surface extends along at least a substantial portion of said axial seat at length.
See claim element 14[d].
6. Ground 6 – Obviousness over Bruton and Dare
Claims 1, 2, 4-10, 12-14, 16, 18, and 19 are obvious over Bruton and Dare.
To the extent Patent Owner may contend that Bruton does not disclose or
suggest using its gate valve with a hydraulic actuator (claims 14d, 18d), in a subsea
installation or subsea riser package (claim elements 2, 14p[i]-[iii], 18p[i]-[iii]), or
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in place of or without also using a BOP (claim elements 1[a], 12, 14[p][ii]), it
would have been obvious to do so in view of Dare. For example, it would have
been obvious to use Bruton’s valve in a subsea riser package of the type disclosed
by Dare. Id. at ¶ 108. By way of further example, it would have been obvious to
modify Dare’s subsea riser package to include the gate/seat structure of Bruton. Id.
Motivations for such combinations include:
Improved Flow Characteristics: A person of ordinary skill would have been
motivated to use Bruton’s gate/seat configuration instead of that of Dare to achieve
improved flow characteristics through the valve. Id. at ¶ 109. For example, such a
person would have recognized that the larger angles in Dare’s bore would result in
increased flow disturbances.” Id. More particularly, Dare’s maximum gate angle
of 30-60 degrees (Ex. 1003 at FIGs. 2, 5; 4:39-53) would result in increased and
undesirable turbulence. Ex. 1011 at ¶ 109. Additionally, when in its open
configuration, Dare’s valve includes a rapid change in cross-sectional area of the
flowpath between seat 48 and undercut portion 100 of its gate that would further
magnify the turbulence in the flow. Id. ¶ 110 Inferior flow characteristics are
undesirable, for example, because turbulence can increase corrosion of sealing
surfaces of seats adjoining the gate. Id. Additionally, when Dare’s gate 46 is in
the open position, a large portion of the sealing surface of seat 50 is exposed and
susceptible to corrosion caused by any fluid and/or suspended particles flowing
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through the valve. Id.; see also Ex. 1003 at FIG. 6. In contrast, Bruton’s gate
includes a single inclined surface with a smaller angle than that of Dare and, when
Bruton’s gate is in the open position, the sealing surfaces of seats 25, 27 are
covered and protected by the gate itself. Id.; see also Ex. 1002 at FIG. 9.
Manufacturability & Cost Minimization: A person of ordinary skill would
have been motivated to use Bruton’s gate/seat configuration instead of that of Dare
to improve ease of manufacture and reduce cost of manufacturing. Ex. 1011 at
¶ 111. Bruton’s gate aperture has a circular shape that is symmetrical about a
central axis, which a person of ordinary skill would have recognized to be easier
and less-expensive to manufacture than Dare’s asymmetrical bore. Id. In
particular, a radially symmetrical bore such as that of Bruton’s design can be
readily manufactured with a “king mill” or boring tool rather than a computer-
numerically controlled (CNC) machine. Id.
Combining Prior Art Elements According to Known Methods to Yield
Predictable Results: As explained above, Bruton and Dare provide two alternative
gate/seat structures for achieving the similar results in a shearing gate valve:
(1) shearing a wire line or tubular in only a single place at one side of the gate, and
(2) providing sufficient space at the opposite side of the gate to permit the sheared
wire line or tubular to exit the gate before it fully closes. A person of ordinary skill
could have modified Dare’s gate/seat configuration to include Bruton’s alternative
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gate/seat configuration by at least August 8, 2001. Such a modification would
have been a straightforward task for such a person at that time (Ex. 1011 at ¶ 112),
and the combination would have yielded nothing more than predictable results to
that person (e.g., a shearing gate valve with the functions identified immediately
above as possessed by both designs (id.)), thus rendering the combination obvious.
See KSR, 550 U.S. at 416.
Further, to the extent Patent Owner may contend that Bruton’s gate valve is
not sufficiently large to be used in place of or without using a BOP, it would have
been obvious to also simply increase the size of Bruton’s gate valve to do so. See,
e.g., Powers-Kennedy Contracting Corp., 282 U.S. at 185; Maulsby, 84 F.2d at
110. For example, various sizes of casing, risers, and tubing were known in the art
as of the filing date of the earliest priority date of the ’650 Patent, and it would
have been obvious to increase the size of Bruton’s gate valve to be used with any
known size of casing, riser, or tubular, including those larger than 2 ½ inches in
diameter. Ex. 1011 at ¶¶ 104-105. For example, Dare discloses that the tubing
with which its shearing gate valve may be used “is normally one inch in diameter
or less, [and] it is sometimes considerably larger such as two inches in diameter
with a wall thickness of about 1/8 inch.” Ex. 1003 at 1:25-28.
For dependent claims 8 and 10, it would have been obvious for a person of
ordinary skill in the art to have tested the force required to shear a tubular with
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Bruton’s gate valve using the hydraulic actuator shown in Bruton, for example,
prior to incorporating Bruton’s gate/seat structure into Dare’s system. Ex. 1011 at
¶ 114. Alternatively, it would have been obvious to test Baker’s valve using a
hydraulic shop press of the type well known in the art and included in nearly all, if
not all, fabrication shops of the type that have manufactured such valves. Id. at
¶ 115. Such testing would have required no more than the application of force to
Baker’s gate using a known hydraulic actuator or hydraulic shop press, which
would have been different than the type of hydraulic actuator mechanism in Dare’s
system, which includes dual hydraulic cylinders and no return spring. Id. at ¶ 114-
115. Such a person would have been motivated to perform these types of tests on
Baker’s valve to determine the amount of force that would be needed to shear
tubulars, and/or to avoid the time and expense of manufacturing an actuator prior
to testing the valve. Id.
7. Ground 7 – Obviousness over Bruton and Collie
It would have been obvious to use Baker’s shearing gate valve configuration
as one of Collie’s large bore gate valves 122, 124 for at least each of:
Combining Prior Art Elements According to Known Methods to Yield
Predictable Results: Collie does not specify the particulars of its gate valves, other
than to note that they have a large diameter bore, and at least one is capable of
shearing coiled tubing. Ex. 1004 at 6:55-59. Bruton provides a known option for
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such a shearing gate valve with known benefits relative to other types of shearing
gate valves: (1) shearing a wire line or tubular in only a single place at one side of
the gate, and (2) providing sufficient space at the opposite side of the gate to
permit the sheared wire line or tubular to fall or be pushed out of the gate before
the gate fully closes. Ex. 1011 at ¶¶ 116-117. A person of ordinary skill could
have used Baker’s gate valve by at least August 8, 2001. Such a use of Baker’s
valve would have been a straightforward task for such a person at that time (id. at
¶ 116), and the combination would have yielded nothing more than predictable
results to that person (id.)), thus rendering the combination obvious. See KSR, 550
U.S. at 416.
Further, to the extent Patent Owner may contend that neither Baker nor
Collie inherently discloses a shearing gate valve sized to carry a tubular with a
diameter greater than 2 ½ inches, it would have been obvious to simply scale
Collie’s lower riser package and valve to accommodate a tubular having a diameter
greater than 2 ½ inches. See, e.g., Powers-Kennedy Contracting Corp., 282 U.S. at
185; Maulsby, 84 F.2d at 110. A person of ordinary skill would have recognized
the “coiled tubing” discussed in Collie was known to have ranged in diameter up to
4 ½ inches. Ex. 1011 at ¶ 41. Such a person would therefore have recognized that
Collie’s shearing gate valve could be sized to shear coiled tubing with such larger
diameters, and that it would have been desirable to do so. Ex. 1011 at ¶ 91-92.
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8. Ground 8 – Obviousness over Bruton and Schlegelmilch
As explained above for Ground 4, Schlegelmilch discloses all elements of
claims 6-8 and 10. To the extent Patent Owner may contend that any of these
elements are lacking, it would have been obvious to combine Bruton and
Schlegelmilch. For example, Schlegelmilch’s blade designs correspond in both
shape and size to the cutting blades under consideration for its coiled tubing cutter.
Id. at p. 37, Fig. 4.4. A person of ordinary skill in the art would have recognized
the potential benefits of performing the tests contemplated by Schlegelmilch using
a test fixture and cutting blade with dimensions corresponding to Baker’s valve.
Ex. 1011 at ¶ 118. For example, such testing could have reduced the time and
expense of designing an actuator by permitting real-world testing of the valve
design prior to designing and manufacturing an actuator that might need to be
changed if such testing were performed after the actuator were first completed. Id..
The fabrication of such a test system would have been a straightforward task for
such a person as of August 9, 2001 (id.), and the combination would have yielded
nothing more than predictable results to that person (id.)), thus rendering the
combination obvious. See KSR, 550 U.S. at 416.
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VI. CONCLUSION
For the reasons set forth above, claims 1, 2, 4-10, 12-14, 16, 18, and 19 of
the ’650 Patent are unpatentable under 35 U.S.C. §§ 102(b) and/or 103(a).
Petitioner therefore respectfully requests that the Board institute the requested inter
partes review of the ’650 Patent.
Dated: November 5, 2014 Respectfully submitted,
/Eagle H. Robinson/ Eagle H. Robinson (Reg. No. 61,361) FULBRIGHT & JAWORSKI LLP 98 San Jacinto Boulevard, Suite 1100 Austin, TX 78701 Tel: 512.536.3083 Fax: 512.536.4598 [email protected]
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CERTIFICATE OF SERVICE
Pursuant to 37 C.F.R. § 42.6(e) and 37 C.F.R. § 42.105(a), the undersigned
certifies that on November 5, 2014, a complete copy of this Petition for Inter
Partes Review and all exhibits were served on Patent Owner at the correspondence
addresses of record listed below by EXPRESS MAIL®.