Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`IPR2016-00213, Paper 47
`IPR2016-00295, Paper 39
`Entered: May 24, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FPUSA, LLC,
`Petitioner,
`
`v.
`
`M-I LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00213 (Patent 9,004,288 B2)
`Case IPR2016-00295 (Patent 9,074,440 B2)
`____________
`
`
`Before JAMES A. TARTAL, CARL M. DEFRANCO, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`GOODSON, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`571-272-7822
`
`
`
`
`
`
`
`IPR2016-00213, Paper 47
`IPR2016-00295, Paper 39
`Entered: May 24, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FPUSA, LLC,
`Petitioner,
`
`v.
`
`M-I LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00213 (Patent 9,004,288 B2)
`Case IPR2016-00295 (Patent 9,074,440 B2)
`____________
`
`
`Before JAMES A. TARTAL, CARL M. DEFRANCO, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`GOODSON, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`IPR2016-00213 (Patent 9,004,288 B2)
`IPR2016-00295 (Patent 9,074,440 B2)
`
`
`I.
`INTRODUCTION
`FPUSA, LLC (“Petitioner”) filed a Petition in IPR2016-00213 (“213
`IPR”) requesting inter partes review of claims 1, 3–6, 8–12, and 14–18 of
`U.S. Patent No. 9,004,288 (“the ’288 patent”). See 213 IPR, Paper 6 (“213
`Pet.”). Petitioner also filed a Petition in IPR2016-00295 (“295 IPR”)
`requesting inter partes review of claims 1, 3–6, 8–12, and 14–18 of U.S.
`Patent No. 9,074,440 (“the ’440 patent”). See 295 IPR, Paper 1 (“295 Pet.”).
`M-I LLC (“Patent Owner”) did not file a preliminary response in either
`proceeding. We instituted trial in both proceedings. See 213 IPR, Paper 14
`(“213 Dec. on Inst.”); 295 IPR, Paper 9 (“295 Dec. on Inst.”).
`After institution of trial, Patent Owner filed a Patent Owner Response
`in each proceeding. See 213 IPR, Paper 38 (“213 PO Resp.”); 295 IPR,
`Paper 30 (“295 PO Resp.”). Thereafter, Petitioner filed a Reply in each
`proceeding. See 213 IPR, Paper 41 (“213 Pet. Reply”); 295 IPR, Paper 33
`(“295 Pet. Reply”). The parties presented oral argument in both the 213 IPR
`and the 295 IPR at a hearing held on April 24, 2017. 213 IPR, Paper 46
`(“Tr.”).
`We have jurisdiction over these proceedings under 35 U.S.C. § 6.
`This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37
`C.F.R. § 42.73. Because of the significant overlap in issues, arguments, and
`evidence between these proceedings, we address both proceedings in this
`single Final Written Decision. Unless indicated otherwise, citations to the
`record in this Decision refer to the papers and exhibits in the 213 IPR.
`For the reasons explained below, after consideration of the evidence
`and arguments of the parties, we determine that Petitioner has shown by a
`preponderance of the evidence that claims 1, 3–6, 8–10, 14, and 15 of the
`
`
`
`
`2
`
`
`
`IPR2016-00213 (Patent 9,004,288 B2)
`IPR2016-00295 (Patent 9,074,440 B2)
`
`’288 patent and claims 1, 3–6, 8–10, and 14–18 of the ’440 patent are
`unpatentable. See 35 U.S.C. § 316(e). We further determine that Petitioner
`has not shown by a preponderance of the evidence that any of claims 11, 12,
`and 16–18 of the ’288 patent or either of claims 11 and 12 of the ’440 patent
`are unpatentable. See id.
`
`A. Related Matters
`Patent Owner is asserting the ’288 and ’440 patents against Petitioner
`in a civil action in the U.S. District Court for the Western District of Texas,
`M-I LLC v. FPUSA, LLC, Case No. 5:15-cv-00406 (DAE) (“Parallel District
`Court Litigation”). See 295 IPR, Ex. 1028. In the Parallel District Court
`Litigation, the District Court granted M-I’s motion for a preliminary
`injunction. See Ex. 1018. In FPUSA’s appeal of that preliminary injunction
`ruling, the Federal Circuit affirmed in part, vacated in part, and remanded.
`See M-I LLC v. FPUSA, LLC, 626 Fed. Appx. 995, 996–97 (Fed. Cir. 2015).
`B. Summary of the Challenged Patents
`The ’288 Patent
`The ’288 patent describes a system and method for separating
`components in a slurry of drilling fluid and drill cuttings using pulse-vacuum
`assisted screening. Ex. 1001, at [57], 1:17–19.
`In the Background section, the ’288 patent explains that drilling fluid
`serves several purposes in oilfield applications, including lubricating drill
`bits, carrying cuttings away from the drill bit, and preventing blowouts by
`maintaining hydrostatic pressure within the well. Id. at 1:22–25, 31–33, 52–
`53. The drilling fluid is pumped from the surface downhole to the drill bit,
`and the spent drilling fluid then returns back to the surface. Id. at 1:25–30.
`The fluid exiting the borehole includes cuttings, which must be removed
`
`1.
`
`
`
`
`3
`
`
`
`IPR2016-00213 (Patent 9,004,288 B2)
`IPR2016-00295 (Patent 9,074,440 B2)
`
`before the fluid can be recycled. Id. at 1:59–61. Recycling the drilling fluid
`is desirable because it is expensive and time consuming to mix, as it must be
`formulated specifically for the characteristics of the formation being drilled.
`Id. at 1:40–51.
`The Background section further explains that a “shale shaker, also
`known as a vibratory separator,” was a known apparatus for removing
`cuttings from drilling fluid. Id. at 1:62–65. This device included an angled
`table with a screen bottom, and the slurry is deposited at the top of the
`incline. Id. at 1:65–2:3. The Background explains the operation of known
`shale shakers as follows:
`As the drilling mud travels down the incline toward the lower
`end, the fluid falls through the perforations to a reservoir below
`thereby leaving the solid particulate material behind. The
`combination of the angle of inclination with the vibrating action
`of the shale shaker table enables the solid particles left behind to
`flow until they fall off the lower end of the shaker table.
`Id. at 2:3–9. A drawback of known shale shakers, according to the ’288
`patent, is that the separation of drilling fluid from drill cuttings is often
`incomplete, necessitating additional equipment and processes to further dry
`the cuttings and recover drilling fluid. Id. at 3:7–15. The ’288 patent seeks
`to “improve the rate and efficiency at which shakers remove liquid from
`cuttings or other solids.” Id. at 3:23–24.
`One additional known system described in the Background of the ’288
`patent is a shaker that includes an air pump to develop a vacuum beneath the
`screens, thereby increasing the flow rate of drilling mud through the screens.
`Id. at 3:30–37. “However, applying a continuous vacuum beneath a screen
`to draw fluid through the screen may result in solids sticking to the screen.”
`Id. at 3:37–39.
`
`
`
`
`4
`
`
`
`IPR2016-00213 (Patent 9,004,288 B2)
`IPR2016-00295 (Patent 9,074,440 B2)
`
`
`Figures 1 and 2 of the ’288 patent are reproduced below:
`
`
`
`Figures 1 and 2 are side and cross-sectional views, respectively, of
`vibratory screen separator 5. Id. at 4:61–64. Separator 5 includes “separator
`frame or basket 24,” which has sidewalls 26 and 28 and back wall 30. Id. at
`5:36–38. The separator also includes screen 42 and sump 50 to receive
`material that passes through screen 42. Id. at 5:49–51, 55–56. Inlet 52 is
`positioned at back wall 30 and outlet 54 receives material from sump 50 for
`discharge. Id. at 5:56–59. Rotary eccentric vibrators 56 and 58 are attached
`to sidewalls 26 and 28. Id. at 5:63–65.
`The ’288 patent describes that “[a] pressure differential device (not
`shown) may be provided to create a pressure differential between the vapor
`space above screen 42 and the vapor space between screen 42 and sump 50.”
`Id. at 6:3–6. The pressure differential may be pulsed or toggled, which
`avoids solids accumulating or sticking on the screen. Id. at 6:34–35, 54–58.
`The ’288 patent also describes that in some embodiments, the
`separator may include two or more screens, and “[o]ne or more sumps may
`be located under the screens such that a pressure differential may be
`provided across less than all of the two or more shaker screens.” Id. at 7:8–
`13.
`
`
`
`
`5
`
`
`
`IPR2016-00213 (Patent 9,004,288 B2)
`IPR2016-00295 (Patent 9,074,440 B2)
`
`
`Figure 4 is reproduced below.
`
`
`Figure 4 shows a separator having four screens 92. Id. at 8:26. An
`inlet proximate back wall 80 deposits drilling mud on the first screen 92A.
`Id. at 8:24–27. Sump 96 is provided under the first two screens 92A, 92B.
`“One or more pressure differential devices . . . may be provided to generate a
`pressure differential across screens 92A, 92B.” Id. at 8:30–32.
`The instituted grounds in the 213 IPR include challenges to claims 1,
`3–6, 8–12, and 14–18. Of those, claims 1, 10, and 16 are independent. Each
`of these independent claims is reproduced below:
`1. A method comprising:
`introducing a slurry to a shaker having a first screen and a second
`screen;
`flowing the slurry1 over the first screen;
`applying a first pressure differential to the first screen and not
`applying the first pressure differential across the second
`screen; and
`
`
`1 This word appears as “shiny” in the ’288 patent at column 11, line 46, but
`was corrected to “slurry” in a Certificate of Correction. Ex. 1001, 16. The
`same Certificate of Correction included various other corrections to the
`claims, which changes are reflected in the claims as reproduced herein. Id.
`
`6
`
`
`
`
`IPR2016-00213 (Patent 9,004,288 B2)
`IPR2016-00295 (Patent 9,074,440 B2)
`
`
`controlling air flow under at least a portion of the first screen to
`prevent stalling of the slurry on the first screen.
`Id. at 11:43–51.
`10. A method comprising:
`delivering a slurry to a shaker to flow over a first screen and a
`second screen of the shaker, the slurry having a drilling
`fluid component and a solids component;
`generating first pressure differential between an area above the
`first screen and an area below the first screen thereby
`pulling air or vapor and the drilling fluid component
`through the first screen wherein the pressure differential is
`created by a device external to the shaker;
`applying a second pressure differential to the second screen
`wherein the first pressure differential is different than the
`second pressure differential;
`conveying together all the air or vapor and all of the drilling fluid
`component pulled through the first screen due to the first
`pressure differential from the shaker to a chamber external
`to the shaker; and
`separating the air or vapor from the drilling fluid component in
`the chamber external to the shaker.
`Id. at 12:13–38.
`16. A system comprising:
`a first screen having an upper side and a lower side for separating
`drill cuttings and drilling fluid within a shaker;
`a pressure differential generator configured to pull air or vapor
`through the first screen to enhance the flow of drilling
`fluid through the first screen with respect to a second
`screen within the shaker in which the pressure differential
`generator does not create a pressure differential between
`an area above and an area below the second screen;
`a sump located below the first screen and configured to collect
`the air or vapor and the drilling fluid that passes through
`the first screen; and
`
`
`
`
`7
`
`
`
`IPR2016-00213 (Patent 9,004,288 B2)
`IPR2016-00295 (Patent 9,074,440 B2)
`
`
`a degassing chamber in fluid communication with the pressure
`differential generator and the sump and located external to
`the shaker for collecting all of the air or vapor and the
`drilling fluid in the sump and removing air or vapor from
`the drilling fluid.
`Id. at 12:47–65.
`2.
`The ’440 Patent
`The ’440 patent states that it is a continuation of the application that
`issued as the ’288 patent. 295 IPR, Ex. 1001, at [63]. The disclosure of the
`’440 patent’s specification is substantially the same as the ’288 patent. The
`instituted grounds in the 295 IPR include challenges to claims 1, 3–6, 8–12,
`and 14–18. Of those, claims 1, 10, and 16 are independent. Each of these
`independent claims is reproduced below:
`1. A method comprising:
`introducing a slurry to a shaker having a first screen and a second
`screen;
`flowing the slurry over the first screen;
`applying a first pressure differential with a pressure differential
`device to at least a portion of the first screen to separate a
`solids component from a liquid component of the slurry;
`and
`pulling the liquid component and air or vapor together through a
`flow line in fluid communication with the pressure
`differential device into a degassing chamber while
`maintaining the first pressure differential across the first
`screen.
`Id. at 11:45–57.
`10. A method comprising:
`delivering a slurry to a shaker to flow over a first screen and a
`second screen of the shaker, the slurry having a drilling
`fluid component and a solids component;
`
`
`
`
`8
`
`
`
`IPR2016-00213 (Patent 9,004,288 B2)
`IPR2016-00295 (Patent 9,074,440 B2)
`
`
`generating a first pressure differential between an area above a
`portion of the first screen and an area below the portion of
`the first screen inside the shaker, wherein the pressure
`differential is created by a device external to the shaker;
`and
`pulling air or vapor and substantially all of the drilling fluid
`component together from the area below the first screen
`inside the shaker into a degassing chamber external to the
`shaker while maintaining the first pressure differential.
`Id. at 12:19–32.
`16. A system comprising:
`a first screen having an upper side and a lower side for separating
`drill cuttings and drilling fluid within a shaker;
`a pressure differential generator configured to pull air or vapor
`through at least a portion of the first screen to enhance a
`flow of drilling fluid through the first screen with respect
`to a second screen within the shaker in which the pressure
`differential generator does not create a pressure
`differential between an area above and an area below the
`second screen;
`a sump disposed below the first screen and configured to receive
`the flow of drilling fluid through the first screen; and
`a chamber in fluid communication with the pressure differential
`generator and located external to the shaker for collecting
`the air or vapor and the drilling fluid from the sump while
`the pressure differential generator is configured to apply a
`pressure differential across the first screen.
`Id. at 12:48–67.
`
`C. References Relied Upon
`The Petitions in the 213 IPR and the 295 IPR relied on the same six
`references in the asserted grounds of unpatentability:
`Derrick
`US 2005/0082236 A1
`Apr. 21, 2005
`Vasshus
`US 8,746,460 B2
`June 10, 2014
`Ennis
`US 3,929,642
`Dec. 30, 1975
`
`Ex. 1004
`Ex. 1005
`Ex. 1006
`
`
`
`
`9
`
`
`
`IPR2016-00213 (Patent 9,004,288 B2)
`IPR2016-00295 (Patent 9,074,440 B2)
`
`Logue
`Riedel
`Lee
`
`
`US 2,462,878
`US 2,663,427
`US 5,259,952
`
`Mar. 1, 1949
`Dec. 22, 1953
`Nov. 9, 1993
`
`Ex. 1007
`Ex. 1008
`Ex. 1009
`
`D. Instituted Grounds of Unpatentability
`In the 213 IPR, we instituted trial as to claims 1, 3–6, 8–12, and 14–18
`of the ’288 patent on the following grounds:
`
`References
`
`Basis
`
`’288 Patent Claims
`
`Derrick
`
`Vasshus
`
`Ennis in view of Logue, Riedel,
`or Lee
`
`§ 102
`
`1, 3–6, 8, and 9
`
`§ 102
`
`10 and 14–17
`
`§ 103
`
`1, 4–6, and 8
`
`Ennis in view of Logue
`
`§ 103
`
`3, 9–12, and 14–18
`
`See 213 Dec. on Inst. 29.
`In the 295 IPR, we instituted trial as to claims 1, 3–6, 8–12, and 14–18
`of the ’440 patent on the following grounds:
`
`References
`
`Basis
`
`’440 Patent Claims
`
`Derrick
`
`Vasshus
`
`§ 102
`
`1, 3–6, 8, 9, and 16–18
`
`§ 102
`
`1, 3, 8, 10, and 14–17
`
`Ennis in view of Logue
`
`§ 103
`
`1, 3–6, 8–12, and 14–18
`
`Ennis in view of Logue in
`further view of Riedel or Lee
`
`§ 103
`
`9 and 18
`
`See 295 Dec. on Inst. 29.
`II.
`TIMELINESS OF PETITION IN 295 IPR
`Under the rules governing inter partes review proceedings, the
`timeliness of a petition depends on whether the patent it challenges is subject
`
`10
`
`
`
`
`IPR2016-00213 (Patent 9,004,288 B2)
`IPR2016-00295 (Patent 9,074,440 B2)
`
`to the “first-inventor-to-file” provisions of the AIA.2 A petition for inter
`partes review of a “first-inventor-to-file” patent (i.e., a patent described in
`section 3(n)(1) of the AIA) may not be filed until after at least “the date that
`is nine months after the date of the grant of the patent.” 37 C.F.R.
`§ 42.102(a)(1).3 By contrast, a petition for inter partes review of a “first-to-
`invent” patent (i.e., a patent not described in section 3(n)(1) of the AIA) may
`be filed at any time after “the date of the grant of the patent.” 37 C.F.R.
`§ 42.102(a)(2). Under section 3(n)(1), the first-inventor-to-file provisions
`apply to any application for patent, and to any patent issuing thereon, that
`contains or contained at any time a claim to a claimed invention that has an
`effective filing date on or after March 16, 2013. See AIA § 3(n)(1).
`
`In the 295 IPR, the Petition was filed on December 8, 2015, less than
`nine months after the ’440 patent issued on July 7, 2015. 295 IPR, Ex. 1001,
`at [45]. Accordingly, the Petition in the 295 IPR is timely under 37 C.F.R.
`§ 42.102(a) only if the ’440 patent is a “first-to-invent” patent,
`notwithstanding the July 31, 2014, filing date of the application that issued
`as the ’440 patent. Id. at [22].
`Petitioner contends that the ’440 patent is a “first-to-invent” patent
`because, by virtue of its priority claims, it does not contain a claim having an
`effective filing date on or after March 16, 2013. 295 Pet. 2. In our Decision
`on Institution in the 295 IPR, we outlined the analysis that led to our
`preliminary determination that Petitioner had sufficiently shown that the
`
`
`2 Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”).
`3 If a post-grant review of such a patent is instituted, a petition for inter
`partes review is not timely until after the termination of the post-grant
`review. 37 C.F.R. § 42.102(a)(3).
`
`
`
`11
`
`
`
`IPR2016-00213 (Patent 9,004,288 B2)
`IPR2016-00295 (Patent 9,074,440 B2)
`
`’440 patent is a “first-to-invent” patent and, therefore, the Petition in the 295
`IPR was timely. See 295 Dec. on Inst. 8–11. We also noted that “Patent
`Owner has the opportunity to present contrary evidence after institution.”
`Id. at 11. Patent Owner did not present any argument or evidence on this
`issue in its Patent Owner Response in the 295 IPR. At the hearing, Patent
`Owner stated that it does not dispute that the Petition in the 295 IPR was
`timely filed. See Tr. 73:22–74:5. Therefore, for the reasons discussed in our
`Decision on Institution, we determine that the Petition in the 295 IPR was
`timely.
`
`III. CLAIM CONSTRUCTION
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed
`Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of
`the broadest reasonable interpretation standard). Under that standard, claim
`terms are given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). The Board’s construction under the broadest reasonable
`interpretation standard “cannot be divorced from the specification and the
`record evidence.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298
`(Fed. Cir. 2015) (quoting In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir.
`2011)).
`The parties’ claim construction proposals, and the arguments and
`evidence they offer in support thereof, are substantially similar, if not
`identical, in the 213 IPR as in the 295 IPR. Compare 213 Pet. 9–14 with
`
`
`
`
`12
`
`
`
`IPR2016-00213 (Patent 9,004,288 B2)
`IPR2016-00295 (Patent 9,074,440 B2)
`
`295 Pet. 10–15; compare 213 PO Resp. 22–25 with 295 PO Resp. 24–27;
`compare 213 Pet. Reply 3–5 with 295 Pet. Reply 4–6. Given the
`commonality of the parties’ arguments and the relationship of the ’288 and
`’440 patents, we adopt the same construction for like terms in both patents.
`See Trustees of Columbia University v. Symantec Corp., 811 F.3d 1359,
`1369 (Fed. Cir. 2016) (“[W]here multiple patents ‘derive from the same
`parent application and share many common terms, we must interpret the
`claims consistently across all asserted patents.’”) (quoting NTP, Inc. v.
`Research in Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005)).
`A. “first” and “second” screens
`Each of the independent claims of the ’288 and ’440 patents recites a
`shaker having “a first screen” and “a second screen.” In our Decisions on
`Institution in these proceedings, we adopted Petitioner’s proposal that the
`modifiers “first” and “second” do not denote spatial location relative to the
`shaker’s inlet. See 213 Dec. on Inst. 8–9; 295 Dec. on Inst. 12. That
`construction was the same as the District Court’s construction in its
`preliminary injunction ruling in the Parallel District Court Litigation, which
`the Federal Circuit held was “proper in light of the claim language and the
`specification.” M-I LLC, 626 Fed. Appx. at 997; Ex. 1018, 13–14. After
`institution, Patent Owner indicated its agreement with the construction in our
`Decisions on Institution. 213 PO Resp. 22 n.1; 295 PO Resp. 24 n.1.
`Accordingly, we maintain the construction set forth in our Decisions on
`Institution.
`
`B. The “controlling” step
`The phrase “controlling air flow under at least a portion of the first
`screen to prevent stalling of the slurry on the screen” appears in claim 1 of
`
`
`
`
`13
`
`
`
`IPR2016-00213 (Patent 9,004,288 B2)
`IPR2016-00295 (Patent 9,074,440 B2)
`
`the ’288 patent. Similarly, claim 9 of the ’440 patent recites “controlling air
`flow under the screen to prevent stalling of the slurry on the screen.”
`Petitioner argues that these phrases “include[] adjusting a pressure
`differential across a screen to allow solids to be conveyed along the screen
`unhindered and to allow fluid to flow through the screen.” 213 Pet. 11–12;
`295 Pet. 13–14. In support of this construction, Petitioner points to the
`specification’s disclosure that “[b]y toggling the pressure4 between vacuum
`and static, conveyance of the solids across the screen may proceed
`unhindered, thereby avoiding solids accumulating or sticking on the screen,
`and thus not preventing fluid flow through the screen.” 213 Pet. 11 (quoting
`Ex. 1001, 6:54–58); 295 Pet. 13.
`Patent Owner argues that the claim phrases mean “the effective
`volume of air pulled through the screen is adjustable to prevent the slurry
`from not moving relative to the screen with the objective of avoiding
`cuttings build-up on the screen.” 213 PO Resp. 24; 295 PO Resp. 26–27.
`Patent Owner supports its proposal through citation to the declaration of its
`expert, Mr. Robert Palmer. Id. (citing Ex. 2015 ¶¶ 24–25, 48). Patent
`Owner also cites the testimony of Petitioner’s expert, Mr. Peter Matthews, in
`which Mr. Matthews agreed that preventing stalling means that solids are
`allowed to be conveyed along the screen unhindered. Id. at 24–25 (citing
`Ex. 1013 ¶ 24; Ex. 2017, 17:7–10).
`
`
`4 The specification includes the following explanation of what it means to
`toggle the pressure: “Toggling or pulsing of the pressure differential, as used
`herein, refers to the changing of the pressure differential from static (a zero
`pressure differential across the screen) to at least a partial vacuum below the
`screen.” Ex. 1001, 6:35–39.
`
`
`
`14
`
`
`
`IPR2016-00213 (Patent 9,004,288 B2)
`IPR2016-00295 (Patent 9,074,440 B2)
`
`
`We note that the parties’ experts are in agreement that “preventing
`stalling” means avoiding clogging the screen with solids. Ex. 1013 ¶ 24;
`Ex. 2015 ¶¶ 49–50; Ex. 2017, 28:8–14. The specification supports this
`understanding of what it means to prevent stalling. See Ex. 1001, 3:37–42,
`47–49, 6:34–39, 54–58. Further, both parties’ proposed constructions reflect
`this understanding of what it means to prevent stalling. In this respect, the
`parties’ proposals are similar. The parties capture that concept using slightly
`different wording. In our view, Petitioner’s construction hews more closely
`to the description in the specification. See id.
`Therefore, we adopt Petitioner’s proposed construction that
`“controlling air flow under at least a portion of the first screen to prevent
`stalling of the slurry on the screen” in claim 1 of the ’288 patent and
`“controlling air flow under the screen to prevent stalling of the slurry on the
`screen” in claim 9 of the ’440 patent include adjusting a pressure differential
`across a screen to allow solids to be conveyed along the screen unhindered
`and to allow fluid to flow through the screen.
`C. “slurry”
`Claims 1 and 10 of both the ’288 and ’440 patents recite a “slurry.”
`Patent Owner proposes that this term should be construed to mean “a
`mixture of drilling fluid and drill cuttings.” 213 PO Resp. 25. Patent Owner
`notes that the parties stipulated to this construction in the Parallel District
`Court Litigation. Id. (citing Ex. 2018). In the claim construction section of
`Petitioner’s Reply, Petitioner does not respond to Patent Owner’s proposal
`or propose a different construction of this term. See 213 Pet. Reply 3–5.
`The specification supports Patent Owner’s proposal because it sets forth the
`proposed construction as an express definition of the term. See Ex. 1001,
`
`
`
`
`15
`
`
`
`IPR2016-00213 (Patent 9,004,288 B2)
`IPR2016-00295 (Patent 9,074,440 B2)
`
`5:20–21 (“As used herein, a slurry refers to a mixture of drilling fluid and
`drill cuttings.”). Therefore, we adopt Patent Owner’s proposal that “slurry”
`means “a mixture of drilling fluid and drill cuttings.”
`D. “shaker”
`Each of the independent claims of the ’288 and ’440 patents recites a
`“shaker.” Patent Owner proposes that this term means “a vibratory separator
`used to remove cuttings and other solid particles from drilling fluid used in
`the oil and gas industry.” 213 PO Resp. 22. Patent Owner’s proposal is
`based on the description in the specification of a shale shaker, coupled with
`the deposition testimony of Petitioner’s expert indicating his agreement that
`“shaker” in claim 1 of the ’288 patent refers to a shale shaker. Id. at 22–24
`(citing Ex. 1001, 1:63–2:9; Ex. 2017, 11:8–15).
`Petitioner counters that Patent Owner’s proposal improperly imports
`limitations from the specification into the claims, and “is inconsistent with
`the general concept of a ‘shaker,’ which has applicability in multiple
`industries, including those referenced in the prior art.” 213 Pet. Reply 4. In
`its Reply, Petitioner did not propose its own construction for this term.
`However, during the hearing, Petitioner agreed that “shaker” should be
`construed to require a vibratory separator. See Tr. 9:14–25.
`We agree with Petitioner that Patent Owner’s proposal improperly
`equates the description of a “shale shaker” in the specification with the
`broader term “shaker” used in the claims. Although the specification
`focuses heavily on shale shakers that are used in the oil and gas industry,
`Patent Owner did not use the word “shale shaker” in its claims and instead
`chose the broader term “shaker.” See In re Am. Acad. of Sci. Tech Ctr., 367
`F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading
`
`
`
`
`16
`
`
`
`IPR2016-00213 (Patent 9,004,288 B2)
`IPR2016-00295 (Patent 9,074,440 B2)
`
`limitations into a claim from the preferred embodiment described in the
`specification, even if it is the only embodiment described, absent clear
`disclaimer in the specification.”). The deposition testimony of Petitioner’s
`expert cited by Patent Owner does not persuade us that a “shaker” means
`only a “shale shaker” and cannot include any other type of vibratory
`separator because Mr. Matthews was not asked that question; he was only
`asked the more ambiguous question of whether the term shaker “refers to” a
`shale shaker. Ex. 2017, 11:8–15. Therefore, we adopt only the parties’
`agreed-upon portion of Patent Owner’s construction and interpret “shaker”
`to mean “a vibratory separator.”5
`E. “degassing chamber”
`Claims 9 and 16 of the ’288 patent and claims 1 and 10 of the ’440
`patent recite a “degassing chamber.” Petitioner argues that this term
`“include[s] any chamber under at least a partial vacuum which separates gas
`from liquids.” Pet. 13–14 (citing Ex. 1001, 9:17–43). When asked at the
`hearing about the “under at least a partial vacuum” portion of its proposed
`construction, Petitioner indicated that its presence in the proposal was a
`result of the Parallel District Court Litigation and that a degassing chamber
`need not actually be under a partial vacuum. See Tr. 10:13–19.
`Nevertheless, Petitioner argued that this portion of its proposal is immaterial
`to the issues in these proceedings because the degassing chambers in the
`cited references all operate under at least a partial vacuum. See id. at 10:23–
`25, 11:11–15.
`
`5 We note that the dispute over the meaning of “shaker” is not dispositive
`because the independent claims of both the ’288 and ’440 patents all require
`drilling fluid, either by expressly reciting drilling fluid or by virtue of the
`construction of “slurry” that we have adopted.
`
`17
`
`
`
`
`IPR2016-00213 (Patent 9,004,288 B2)
`IPR2016-00295 (Patent 9,074,440 B2)
`
`
`In the claim construction section of its Response, Patent Owner does
`not respond to Petitioner’s proposed construction of this term or propose a
`different construction. See 213 PO Resp. 21–25; 295 PO Resp. 24–27.
`However, during the hearing, Patent Owner stated that it does not agree with
`Petitioner’s proposal. Tr. 64:6–18. In rebutting one of Petitioner’s
`anticipation challenges, Patent Owner argues that “a degassing chamber
`removes gas or vapor from a liquid” as distinct from a device that separates
`liquid from an air stream. 295 PO Resp. 33. In other words, Patent Owner’s
`position is that a chamber into which a predominantly gaseous mixture of
`gas and liquid enters and the gas and liquid are separated therein is not a
`degassing chamber. Patent Owner relies on its expert, Mr. Palmer, in
`support of that understanding of a degassing chamber. Id. (citing Ex. 2015
`¶ 56).
`The parties do not point us to, and we do not find, any express
`definition of “degassing chamber” in the specification. The specification
`appears to use that term in accordance with its plain and ordinary meaning of
`a chamber in which gas and liquid are separated. Specifically, the
`specification describes that both liquids and vapors are pulled into a
`degassing chamber, and vapors collecting therein can be recovered via one
`flow line while fluids collecting in the degassing chamber can be recovered
`via a different flow line. See Ex. 1001, 9:22–27.
`Patent Owner does not provide adequate support for its narrower
`interpretation that a degassing chamber requires that gas or vapor must be
`removed from a liquid. The testimony of Mr. Palmer on which Patent
`Owner relies merely repeats the assertion in the Patent Owner Response and
`does not cite any underlying evidence in support thereof. 295 IPR, Ex. 2015
`
`
`
`
`18
`
`
`
`IPR2016-00213 (Patent 9,004,288 B2)
`IPR2016-00295 (Patent 9,074,440 B2)
`
`¶ 56. Accordingly, this testimony does not persuade us that a skilled artisan
`reviewing the specification would understand a “degassing chamber” to have
`the narrower meaning that Patent Owner advocates. See 37 C.F.R.
`§ 42.65(a) (“Expert testimony that does not disclose the underlying facts or
`data on which the opinion is based is entitled to little or no weight.”); In re
`Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he
`Board is entitled to weigh the declarations and conclude that the lack of
`factual corroboration warrants discounting the opinions expressed in the
`declarations.”).
`Moreover, Patent Owner’s contentions regarding the meaning of
`“degassing chamber” in these proceedings appear to be narrower than the
`District Court’s understanding of that term in the Parallel District Court
`Litigation. See Power Integrations, Inc. v. Lee, 797 F.3d 1318, 3126 (Fed.
`Cir. 2015) (holding that the Board should consider a previous judicial
`interpretation of a disputed claim term and assess whether it is consistent
`with the broadest reasonable construction of the term). In its preliminary
`injunction ruling, the District Court did not expressly construe this term, but
`as part of its infringement analysis, it agreed with Patent Owner that the
`limitation was met by a system by which the drilling fluid is separated from
`residual air or gas. Ex. 1018, 21. This finding was upheld by the Federal
`Circuit. M-I, 626 Fe
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
