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)

D. Service Information (37 C.F.R. § 42.8(b)(4))

Email: eagle.robinson@nortonrosefulbright.com

Post: Eagle H. Robinson, Fulbright & Jaworski LLP, 98 San Jacinto

Boulevard, Suite 1100, Austin, TX 78701

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Phone: 512.536.3083 Fax: 512.536.4598

Petitioner consents to electronic service.

III. GROUNDS FOR STANDING

Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the ’650 Patent is

available for inter partes review, and that Petitioner is not barred or estopped from

requesting an inter partes review challenging the Challenged Claims on the

grounds identified in this Petition. The ’650 Patent has not been subject to a

previous estoppel-based proceeding of the AIA, and Petitioner was served with the

original complaint in the above-referenced Litigation within the last 12 months.

IV. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH CLAIM CHALLENGED

A. Claims for which Review is Requested (37 C.F.R. § 42.104(b)(1))

Petitioner requests the review and cancellation as invalid of claims 1, 2, 4-

10, 12-14, 16, 18, and 19 of the ’650 Patent. Of these, claims 1, 2, 4-5, 9, 12-14,

16, 18, and 19 address methods of using and systems including the cutting gate

valve of the ’650 Patent (the “Valve Claims”), and claims 6-8 and 10 address

methods of determining the force needed on a gate to cut a tubular within a gate

valve (the “Testing Claims”). As explained in detail below, Patent Owner’s claim

construction positions in the Litigation result in the Testing Claims and Valve

Claims allegedly covering use of the same structures. As such, proposed grounds

for the Testing Claims build upon those for the Valve Claims.

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B. Statutory Grounds of Challenge (37 C.F.R. § 42.104(b)(2))

For the reasons presented below, Petitioner seeks the following relief:

Ground 1: Invalidation of claims 1, 2, 4-7, 9, 12, 14, 16, 18, and 19 under

35 U.S.C. § 102(b) based on Baker (U.S. Patent No. 4,997,162 – Ex. 1002). Baker

issued March 5, 1991, rendering it prior art to the ’650 Patent (which was filed

November 6, 2001, and claims priority to August 9, 2001) under at least § 102(b).

Ground 2: Invalidation of claims 1, 2, 4-10, 12-14, 16, 18, and 19 under

§ 103(a) based on Baker (Ex. 1002) and Dare (U.S. Patent No. 4,215,749 – Ex.

1003). Dare issued August 5, 1980, rendering it prior art under at least § 102(b).

Ground 3: Invalidation of claims 1, 2, 4-7, 9, 12-14, 16, 18, and 19 under

§ 103(a) based on Baker (Ex. 1002) and Collie (U.S. Patent No. 7,013,970 – Ex.

1004). Collie issued March 21, 2006 but is a national-stage entry of a PCT

application filed April 12, 2001, rendering it prior art under at least § 102(e).

Ground 4: Invalidation of claims 6-8 and 10 under § 103(a) based on Baker

(Ex. 1002) and Schlegelmilch (“The Design of a Coiled Tubing Cutter for Use In

Subsea Oil Drilling Applications” – Ex. 1005). Schlegelmilch published in 1999

(Ex. 1006), rendering it prior art under at least § 102(b).

Ground 5: Invalidation of claims 1, 2, 4-7, 9, 12-14, 16, 18, and 19 under

§ 102(b) based on Bruton (U.S. Patent No. 4,671,312 – Ex. 1007). Bruton issued

June 9, 1987, rendering it prior art under at least § 102(b).

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Ground 6: Invalidation of claims 1, 2, 4-10, 12-14, 16, 18, and 19 under

§ 103(a) based on Bruton (Ex. 1007) and Dare (Ex. 1003).

Ground 7: Invalidation of claims 1, 2, 4-7, 9, 12-14, 16, 18, and 19 under

§ 103(a) based on Bruton (Ex. 1007) and Collie (Ex. 1004).

Ground 8: Invalidation of claims 6-8 and 10 under § 103(a) based on

Bruton (Ex. 1007) as well as Schlegelmilch (Ex. 1005).

As explained in detail below, these grounds are not cumulative of each other

and all are required to fully explain the invalidity of the challenged claims.

V. REASONS FOR THE RELIEF REQUESTED UNDER 37 C.F.R. §§ 42.22(a)(2) AND 42.104(b)(4)

A. Background

1. The ’650 Patent

As the BACKGROUND OF THE INVENTION section reflects, “Blowout

Preventor (B.O.P.) stacks [we]re frequently utilized in oilfield wellbore Christmas

trees such as, for instance, lower riser packages in offshore wells,” and “may

include a first set of rams for sealing off the wellbore and a second set of rams for

cutting pipe such as tubing and/or cutting wireline.” Ex. 1001 at 1:18-23. But

B.O.P. stacks were known to have numerous “undesirable features,” including that

they were “quite bulky and heavy” and “expensive for initial installation,” that

“maintenance costs for replacing such B.O.P. stacks [could] be many times the

original installation costs,” and that B.O.P.s “frequently require[d] maintenance

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after cutting pipe” because, “[f]or instance, the cut pipe may become stuck within

the B.O.P. stack blocking other operations.” Id. at 1:23-32. “[G]ate valves with

various types of cutters ha[d] [also] been developed including gate valves with one

or more cutting edges for cutting wireline,” but the inventor believed they were

smaller and “ha[d] not been utilized to replace B.O.P. stacks.” Id. at 1:33-40.

The inventor thus believed his invention related at least in part to using

larger gate valves to replace B.O.P. stacks in way that “addresses the above

problems.” Id. at 1:41-42. The “Field of the Invention” section thus explains that

the “present invention relates generally to gate valves and, more particularly, to a

large I.D. [inner diameter] gate valve with a cutter operable for repeatable cutting

pipe and/or wireline so as to be especially suitable for replacing an entire BOP

stack in a lower riser package.” Id. at 1:12-16. However, as the prior art discussed

below reveals, such gate valves had already been used in place of B.O.P.s in the

exact types of subsea Christmas trees discussed in the ’650 Patent.

The ’650 Patent is entitled “Method and apparatus for replacing BOP with

gate valve,” and describes “a gate valve capable of reliably cutting tubing utilizing

a cutting edge with an inclined surface that wedges the cut portion of the tubing out

of the gave valve body.” Id. at Abstract. The figures of the ’650 Patent depict

only a single embodiment. As shown in the annotated version below, Figure 2

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shows gate valve 100 with a length of tubing 122 extending through gate 102 from

left to right. In use, bore 104 and tubing 122 would typically be vertical.

As annotated here, Figure 3 shows gate 102 closing and starting to cut tubing 122.

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As shown in these figures, gate 102 includes a single “inclined, sloping surface

124” that defines an aperture 128 with a diameter that “is at a maximum on the

edge of the gate at 110 and at a minimum on the edge at 106.” Ex. 1001 at 7:21-

22; 7:30-32. A valve seat 108 is adjacent to side 106 of the gate, and a seat 112 is

adjacent to side 110 of the gate. Id. at 7:10-15. As shown, seat 108 has a constant

inner diameter, whereas the diameter of seat 112 tapers from a maximum adjacent

surface 110 to a minimum that is spaced apart from the gate 102. Id. at 7:55-60.

The taper of the gate aperture 128 and the taper in seat 112 are intended to

permit valve 100 to cut a tubular 122 in a single piece, thereby preventing any

small pieces of tubing from becoming stuck in the valve. See, e.g., id. at 7:66-8:3.

Some prior art gate valves included a non-tapered gate aperture that resulted in a

gate with dual cutting edges that would simultaneously cut at both sides of the

gate, thereby cutting free a length of wireline roughly equal to the thickness of the

gate. See, e.g., Ex. 1008 at FIG. 2 (U.S. Patent No. 5,803,431 – “Hoang”; cited by

Patent Owner during prosecution of ’650 Patent). In contrast, the tapered aperture

(128) of the ’650 Patent results in only a single cutting edge (at side 106), and the

tapered seat 112 is intended to ensure that a tubular or wireline can exit the gate

aperture 128 without being pinched by the opposite edge (at side 110), thereby

permitting gate 102 to close and seal the passage. See Ex. 1001 at 7:63-8:5. The

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angled surface (124) defining the gate aperture (128) can also impart a force (to the

left in Figure 3) “to push the pipe 106 out of valve 100.” Id. at 7:66-8:1.

The ’650 Patent teaches that testing can determine the amount of force

needed to close the gate (102) to cut a tubular (122). See, e.g., id. at Abstract,

8:28-34. As shown in the annotated version below, FIG. 4 depicts a test system:

Test system (150) includes a test gate 152 that “has the same dimensions as”

gate 102, and “[t]ubing 158 [that] has the same dimensions as tubing 122.” Ex.

1001 at 8:13-14. A “test housing 151 slidably engages gate 152 by providing an

aperture of the same general type as the gate valve housing would support gate

102.” Id. at 8:20-22. “Test housing is also suitably supported by some means such

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as the earth 154 to thereby provide a suitable mounting against which large forces

may be applied such as in a machine shop,” in which a “[h]ydraulic press 156 or

other suitable means may then be utilized to apply a known, measurable, and

selected amount of force or pressure to gate 152 until pipe 158 is cut.” Id. at 8:22-

28. The ’650 Patent explains that “[i]t is difficult to calculate the required force on

gate 102 to cut tubing 122 due to the many variables involved” and “the preferred

method of determining the amount of pressure or force on gate 152 is best made

empirically by utilizing test system 150.” Ex. 1001 at 8:14-20.

2. Prosecution History

Of the Challenged Gate Valve Claims, claims 1, 2, 9, 10, 12-14, and 16 were

rejected under § 102(b) as anticipated by Dare (Ex. 1003). Ex. 1009 at 3. The

Examiner specifically noted that “[t]he gate valves [of Dare] are mounted to casing

for controlling fluid flow without the use of a BOP.” Id.

Independent Claim 1 is directed to a “method for a gate valve mountable

onto a wellbore casing,” and recites a number of steps for making and mounting a

cutting gate valve on a wellbore casing. Id. at 15. Patent Owner amended claim 1

to recite “mounting said gate valve on said well casing for controlling fluid flow

without also utilizing a in place of at least one BOP on said well casing . . .;

providing that said first and second seats each have different internal diameters

adjacent said slidable gate,” and argued that “Dare does not disclose seat elements

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with different internal diameters adjacent the gate . . . .” Id. at 15, 13. Patent

Owner did not dispute the Examiner’s statement that “[t]he gate valves [of Dare]

are mounted to casing for controlling fluid flow without the use of a BOP,” and did

not argue that Dare’s gate valve is not mounted on a well casing for controlling

fluid flow in place of at least one BOP on the well casing. Id. at 13, 3.

Independent Claim 9 is directed to 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,” and recites a number of features of the gate valve itself.

Ex. 1009 at 17. Patent Owner amended claim 9 to recite: “providing [[an]] a

single inclined surface on said aperture . . . said single inclined surface extending

from said minimum size to said maximum size of said aperture,” and argued that

the claimed single inclined surface is superior to Dare’s two inclined surfaces:

Dare does not disclose a single inclined space as per claim 9. It will

be noted that Dare discloses only use of two differently inclined

surfaces on the gate. It is not clear the Dare gate valve would operate

without two differently inclined surfaces on the gate (See Dare Col. 1,

lines 55-62). Applicant believes a single inclined surface in the gate

which cooperates by wedging action with the inclined surface in the

seat is much more effective to prevent sticking pipe than the Dare

design with two differently inclined surfaces. The Dare embodiment

is likely to have pipe stick at the sharp edge provided by the seat.

Id. at 17, 13.

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Independent Claim 14 is directed to a “gate valve for a subsea riser

package installation” that is “operable for replacement of a BOP,” and recites that

the “subsea riser package installation further compris[es]” a number of features of

the gate valve itself. Patent Owner amended claim 14 to recite: “said subsea riser

package installation having no being operable for replacement of a B.O.P., . . . 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 or 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,” and argued that “Dare does not disclose . . . one or more seats having a

conical interior . . . .” Ex. 1009 at 13. Patent Owner did not dispute the

Examiner’s statement that “[t]he gate valves [of Dare] 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.” Id. at 13, 3.

Independent claim 18, which is similar to claim 14, was added in the

response and recites that the “subsea riser package [is] sized for carrying a tubular

therein having a diameter greater than two and one-half inches,” and “said valve

seat defining an interior wall with a second inclined inner surface, said second

inclined surface defining an inner diameter which decreases with respect to axial

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distance away from said sliding gate.” Id. at 8-9. Patent Owner argued “Dare does

not disclose one or more seats having inclined surfaces . . . .” Id. at 13.

B. Claim Construction (37 C.F.R. § 42.104(b)(3))

In an inter partes review, a claim in an unexpired patent is given the

“broadest reasonable construction in light of the specification of the patent in

which it appears.” 37 C.F.R. § 42.100(b). 1 Petitioner therefore requests that the

claim terms be given their broadest reasonable interpretation (BRI), as understood

by one of ordinary skill in the art and consistent with the disclosure. See Office

Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48764 (Aug. 14, 2012).

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.

Allied Elec. Supply, Inc., 431 F.2d 539, 544 (5th Cir. 1970) (citation omitted) (“A

patent may not, like a ‘nose of wax,’ be twisted one way to avoid anticipation and

another to find infringement.”).

1. “on said well casing” / “[on/to] a wellbore casing”

Claim 1 recites “mounting said gate valve on said well casing,” claim 6

recites “said gate valve being mountable on a wellbore casing,” and claims 14 and

18 recite “said subsea riser package being connectable to a wellbore casing.” The

’650 Patent does not explicitly define these phrases. In the Litigation, Patent

Owner asserted that “on [said] well casing” should be construed to mean “directly

to said well casing or indirectly with other equipment such as a BOP stack, lower

marine riser package or emergency disconnect package.” Ex. 1010 at 6. As such,

“on said well casing,” “on a wellbore casing,” and “to a wellbore casing” should be

construed for purposes of this proceeding as: “directly or indirectly to the

well[bore] casing.”

2 As considered in relation to the BRI standard in SAP America, Inc. v. Versata

Dev. Group, Inc., CBM2012-000001, Paper 70 at 16, n. 13 (Jun. 11, 2013).

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2. “cutting edge”

Independent claims 1, 9, 14, and 18 each recites a “cutting edge” on the gate.

Certain prior art cited during prosecution of the ’650 Patent used “cutting edge” to

include a square edge defined by two surfaces meeting at a 90-degree angle. For

example, Hoang’s shearing gate valve includes a “cutting edge” 90 that is square:

Ex. 1008 at 4:32-34 (“A 90° corner is machined on weld overlay material 80

forming an annular cutting edge 90 at each mouth of opening 46.”).

Patent Owner asserted in the Litigation that “cutting edge” includes more

than just a vertex of two surfaces, and instead includes a “narrow surface or wedge

that performs a cutting function.” Ex. 1010 at 6. A “narrow surface” includes a

surface between two vertices, and a “wedge” includes a vertex and the adjoining

surfaces. Certain prior art cited during prosecution also used “cutting edge” for a

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shearing surface. Dare includes a “cutting edge” 90 having a “thickness” of 1/8–

5/8 inch for shearing tubing:

See Ex. 1003 at FIG. 5, 4:22-32, 5:55-60.

Given Patent Owner’s position in the Litigation and the prior art uses of

“cutting edge” in the context of cutting and shearing gate valves, “cutting edge”

should be construed for purposes of this proceeding as: “an acute or square edge

and any surface adjoining the edge that contacts an item to be cut or sheared.”

3. “test body for slidably supporting a test gate”

Independent claim 6 recites “a test body for slidably supporting a test gate.”

The ’650 Patent depicts a single embodiment of its test body (151). Ex. 1001 at

FIG. 4. “[T]est housing 151 slidably engages gate 152 by providing an aperture of

the same general type as the gate valve housing would support gate 102.” Id. at

8:14-37. Patent Owner asserted in the Litigation that Petitioner’s proposed

construction of “a body, other than that of a gate valve, . . .” was too narrow, and

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proposed a competing construction of any “housing that limits the test gate to one

degree of freedom such that it can slide along one axis.” Ex. 1010 at 8 (emphasis

added). While portions of Patent Owner’s proposed construction are narrower than

what is required by the plain language of the claim, it illustrates that the BRI need

not exclude the body of a gate valve itself. Therefore, “test body for slidably

supporting a test gate” should be construed for purposes of this proceeding as: “a

housing that slidably receives a test gate for cutting a test pipe.”

4. “test gate comprising dimensions related to said gate”

Independent claim 6 recites “test gate comprising dimensions related to said

gate.” The ’650 Patent depicts a single embodiment of a test gate (152) that “has

the same dimension” as gate 102. Ex. 1001 at FIG. 4, 8:14-37. Notably, the test

gate (152) is not depicted as including a bore or aperture. Ex. 1011 at ¶ 61. Patent

Owner’s Litigation position for “test body” (addressed above) makes clear that, for

the BRI, the word “test” need not exclude the gate of a valve. Patent Owner also

asserted that “dimension[s] related to” means “dimension similar to, the same as,

or proportional with.” Ex. 1010 at 8. As such, “test gate comprising dimensions

related to said gate” should be construed for purposes of this proceeding as: “a

gate for cutting a test pipe, the gate having dimensions that are similar, identical, or

proportional to dimensions of the valve gate.”

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5. “hydraulic press”

Claims 8 and 10 recite using a “hydraulic press” to determine a force for

cutting a pipe. The ’650 Patent does not define the term, and the dictionary

definition of “press” is quite broad: “[a]ny of various machines by which pressure

is applied to a workpiece . . . .” See Ex. 1012. Further, qualifying phrases in

claims 8 and 10 confirm that “hydraulic press” could include a hydraulic actuator

similar to one used for a shearing gate valve: “hydraulic press which is not

utilized for controlling a gate valve for applying said force to said test gate” and

“hydraulic press of a type not utilized for controlling a valve for said wellbore.”

Ex. 1001 at Cl. 8, 10 (emphasis added). For purposes of this proceeding,

“hydraulic press” should therefore be construed as: “a hydraulic machine by

which pressure is applied to a workpiece.”

6. “subsea riser package”

Independent claims 14 and 18 recite a “gate valve for a subsea riser package

installation.” The ’650 Patent takes a broad view of “riser package,” noting the use

of BOP stacks in “oilfield wellbore Christmas trees such as, for instance, lower

riser packages in offshore wells.” Ex. 1001 at 1:18-23. As such, for purposes of

this proceeding, “subsea riser package installation” should be construed

consistently with Patent Owner’s Litigation position to mean a “lower marine riser

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package, lower riser package emergency disconnect package, workover riser

system, BOP stack, or subsea wireline lubricator system.” (Ex. 1010 at 7).

C. Level of Ordinary Skill in the Art

A person of ordinary skill would have been generally familiar with the use

of shearing gate valves for cutting wirelines, and “macaroni” and coiled tubing in

oil and gas wells, such as during drilling and/or workover operations of wells.

Such a person would have also recognized that the functionality of shearing

tubulars with gate valves is largely governed by the same principles that govern the

shearing of tubulars in shearing-ram blowout preventers. Ex. 1011 at ¶¶ 21-22.

This level of ordinary skill is also evidenced by prior art and the ’650 Patent

itself. See Ex. 1011 at ¶ 23; Chore-Time Equip., Inc. v. Cumberland Corp., 713

F.2d 774, 779 (Fed. Cir. 1983); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.

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 eagle.robinson@nortonrosefulbright.com

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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®.

Matthews, Lawson, McCutcheon & Joseph, PLLC 600 BERING DRIVE HOUSTON, TX 77057

Kenneth Nash, Esq. P.O. BOX 680106 HOUSTON, TX 77268

Additionally, 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’s below-listed counsel of record in the co-pending litigation

Worldwide Oilfield Machine, Inc. v. Ameriforge Group, Inc. d/b/a AFGlobal

Corporation, Civil Action No. 4:13-cv-3123 (S.D. Tex.) at the address listed below

by EXPRESS MAIL®:

Hirsch & Westheimer P.C. 1415 Louisiana Street, 36th Floor Houston, Texas 77002

/Eagle H. Robinson/ Eagle H. Robinson (Reg. No. 61,361) Attorney for Petitioner Ameriforge Group, Inc.