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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`VRG Controls, LLC
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`Petitioner
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`v.
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`Dresser, LLC
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`Patent Owner
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`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,141,843
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`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`TABLE OF CONTENTS
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`Petitioner’s Exhibit List…………………………………………………….. v
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`Table of Authorities………………………………………………………… vi
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`I.
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`INTRODUCTION …………………………………………………… 9
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`II.
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`COMPLIANCE WITH REQUIREMENTS FOR INTER PARTES
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`REVIEW……………………………………………………………… 9
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`A. Mandatory Notices……………………………………………. 9
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`1.
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`Real Party-In-Interest…………………………………… 9
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`2.
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`Related Matters…………………………………………. 9
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`3.
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`Lead and Back-Up Counsel and Service Information…... 10
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`B.
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`Fees for Inter Partes Review…………………………………... 10
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`C. Grounds for Standing…………………………………………. 10
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`III.
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`IDENTIFICATION OF CHALLENGE……………………………... 11
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`IV. STATEMENT OF THE REASONS FOR THE PRECISE RELIEF
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`REQUESTED………………………………………………………... 12
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`A. General State of the Prior Art…………………………………. 12
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`B. Overview of the ’843 Patent…………………………………... 14
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`ii
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`1.
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`Claims of the ’843 Patent………………………………. 17
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`2.
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`Prosecution of the ‘843 Patent…………………………. 17
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`C.
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`The Level of Ordinary Skill in the Art………………………… 18
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`D.
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`Claim Construction……………………………………………. 19
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`E. Scope and Content of the Prior Art……………………………. 23
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`1.
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`U.S. Patent No. 5,070,909 to Davenport (“Davenport”) ... 23
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`2.
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`European Patent Application No. EP 0889269 A1
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`(EP ‘269)………………………………………………… 24
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`3.
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`U.S. Patent No. 5,437,305 to Leinen (“Leinen”)……….. 25
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`4.
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`U.S. Patent No. 6,039,304 to Carslon (“Carlson”)……… 25
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`5.
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`Neles Q-Ball Publication (“Neles Q-Ball”)…………….. 26
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`6.
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`The DurcoTrim Publication (“Durco”) …………………. 26
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`7.
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`U.S. Patent Application Publication 2007/0034267
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`(“Partridge”)……………………………………………. 27
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`V.
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`REASONABLE LIKELIHOOD THAT CLAIMS 1, 2, 4, 6, 11, 17-21 AND
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`23-25 ARE UNPATENTABLE 20
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`A.
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`Legal Standards for Invalidity………………………………… 28
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`iii
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`1.
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`Ground 1: Claims 1, 2, 4, 6, 11, 17-18 and 23-25 are
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`Unpatentable as Anticipated by Davenport……………. 28
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` a.
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`Independent Claims 1, 17 and 24………………… 28
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` b. Dependent Claims 2, 4-8, 11, 15-18, 23 and 25…. 46
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`2.
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`Ground 2: Claims 19-21 are Unpatentable as Obvious in view
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`of Davenport over Partridge……………………………. 55
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`3.
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`Ground 3: Claims 1, 2, 4, 6, 11, 17-21, 23 and 25 are
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`Unpatentable as Obvious over EP’269 in view of Leinen, Durco
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`and/or Carlson………………………………………….. 59
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`a.
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`Independent Claims 1, 17 and 24………………... 59
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`b.
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`Dependent Claims 2, 4, 6, 11, 18-21, 23 and 25… 75
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`CERTIFICATION UNDER 37 C.F.R. § 42.24(d)………………………….. 88
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`CONCLUSION……………………………………………………………… 89
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`CERTIFICATE OF SERVICE……………………………………………… 90
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`iv
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`Exhibit No.
`1001
`1002
`1003
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`1004
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`1005
`1006
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`1007a
`1007b
`1008
`1009
`1010
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`1011
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`1012
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`PETITIONER’S EXHIBIT LIST
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`Description
`U.S. Patent No. 8,141,843 to Rimboym
`Declaration of Arthur R. Yeary
`“Peering Inside the Low-noise Valve” by Hans D. Baumann,
`CHEMICAL ENGINEERING, September 2002, pp. 91-93
`File History of U.S. Patent Application No. 12/347,051 which
`issued as the ‘843 Patent
`U.S. Patent No. 5,070, 909 to Davenport
`U.S. Patent Application Publication 2007/0034267 to
`Partridge
`European Patent Application No. 0 889 269 A1
`Certified Translation of European Patent Appl. 0 889 269
`U.S. Patent No. 5,437,305 to Leinen
`U.S. Patent No. 6,039,304 to Carlson
`Neles Q-Ball publication, “Trim Alternatives” published May
`1986
`DurcoTrim publication, “Soundtrim Modulating Low Noise
`Control Plug Valve”, Durco Brochure Bulletin V-37,
`published in June 1987.
`U.S. Patent No. 5,180,139 to Gethmann et al.
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`v
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`TABLE OF AUTHORITIES
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`Cases Pages
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`Aventis Pharm. S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012) .........20
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`Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966) ............................................28
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`Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir.
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`2008) .....................................................................................................................21
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`Interactive Gift Express, Inc. Compuserve, Inc., 256 F.3d 1323, 1331 (Fed. Cir.
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`2001) .....................................................................................................................20
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) ........................................28
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`Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) aff’d,
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`517 U.S. 370 (1996) ..............................................................................................20
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`Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005) ...........19
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`Middleton, Inc. v. Minn. Mining & Mfg. Co., 311 F.3d 1384, 1387
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`(Fed. Cir. 2002) ........................................................................................................20
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`Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) ...............................19
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`Schering Corp. v. Geneva Pharms., Inc., 339 F. 3d 1373, 1378 (Fed. Cir. 2003) ..28
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`Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1324 (Fed. Cir. 2002) ........19
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`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) ..........20
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`vi
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`
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`Statutes
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`35 U.S.C. (Pre-AIA) §102(b) ........................................................................... passim
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`35 U.S.C. (Pre-AIA) §112 .......................................................................................21
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`35 U.S.C. § 102 ........................................................................................................28
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`35 U.S.C. § 103(a) ...................................................................................................28
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`35 U.S.C. §§102-103................................................................................................11
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`35 U.S.C. §§311-319.................................................................................................. 9
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`35 U.S.C. §315 .........................................................................................................10
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`Other Authorities
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`37 C.F.R. § 42 ............................................................................................................ 9
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`37 C.F.R. § 42.10(b) .................................................................................................10
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`37 C.F.R. § 42.15(a) .................................................................................................10
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`37 C.F.R. § 42.24(a) .................................................................................................88
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`37 C.F.R. § 42.24(a)(1)(i) ........................................................................................88
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`37 C.F.R. § 42.24(d) ................................................................................................88
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`37 C.F.R. § 42.6(c) ...................................................................................................11
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`37 C.F.R. § 42.8(a)(1) ................................................................................................ 9
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`37 C.F.R. § 42.8(b) ..................................................................................................... 9
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`
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`vii
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`U.S. Dept. of Labor, Occupational Noise Exposure, OSHA Regulations, Federal
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`Register, CFR 48(46) 1983, Washington, D.C., May 29, 1972) ……………...13
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`
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`viii
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`I.
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`INTRODUCTION
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`Pursuant to 35 U.S.C. §§ 311–319 and 37 C.F.R. § 42, VRG Controls, LLC
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`(“Petitioner”) respectfully petitions for inter partes review (“IPR”) of claims 1, 2,
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`4, 6, 11, 17-21 and 23-25 of U.S. Patent No. 8,141,843 issued to Rimboym et al.,
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`titled “Fluid Control Valve” (the “‘843 patent” or “EX1001”).
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`II. COMPLIANCE WITH REQUIREMENTS FOR INTER PARTES
`REVIEW
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`A. Mandatory Notices
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`Pursuant to 37 C.F.R. § 42.8(a)(1), the mandatory notices identified in 37
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`C.F.R. § 42.8(b) are provided below as part of this Petition.
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`1.
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`Real Party-In-Interest
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`VRG Controls, LLC is the real party-in-interest filing this Petition.
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`2.
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`Related Matters
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`The ‘843 patent is being asserted in the following patent infringement
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`lawsuit in the Northern District of Illinois: Dresser, LLC v. VRG Controls, LLC
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`Case No. 1:18-cv-01957. This case may affect, or be affected by, decisions in
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`this proceeding. The ‘843 patent has not been the subject of any other district
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`court litigation.
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`9
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`3.
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`Lead and Back-Up Counsel and Service Information
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`Lead Counsel
`Robert W. Diehl (Reg. No. 35,118)
`1475 E. Woodfield Road, Suite 800
`Schaumburg, IL 60173
`Direct: 847-925-9641
`Main: 847-969-9123
`Fax: 847-969-9124
`rdiehl@bdl-iplaw.com
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`Backup Counsel
`Edward L. Bishop (Reg. No. 39,110)
`1475 E. Woodfield Road, Suite 800
`Schaumburg, IL 60173
`Direct: 847-925-9637
`Main: 847-969-9123
`Fax: 847-969-9124
`ebishop@bdl-iplaw.com
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`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney accompanies this
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`Petition. Petitioner consents to service by e-mail. Please send all
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`correspondence to lead and back-up counsel at the addresses provided above.
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`B.
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`Fees for Inter Partes Review
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`The undersigned authorizes the Patent and Trademark Office (“PTO”) to
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`charge the fees set forth in 37 C.F.R. § 42.15(a) for this Petition to Deposit
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`Account No. 50-4487. Review of 13 claims is requested. The undersigned also
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`authorizes payment for any additional fees that may be due in connection with
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`this Petition to be charged to the above-referenced Deposit Account.
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`C. Grounds for Standing
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`Petitioner certifies that the ’843 patent is available for inter partes review
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`under 35 U.S.C. §315 and that (i) Petitioner does not own the ‘843 patent; (ii)
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`Petitioner is the real party-in-interest and has not filed a civil action challenging
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`10
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`the validity of a claim in the ‘843 patent prior to the filing of this Petition; (iii) this
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`Petition has been filed less than one year after the date on which Petitioner, the
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`real-party-in-interest, or a privy of Petitioner, was served with a complaint alleging
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`infringement of the ’843 patent; and (iv) the Petitioner is not barred or estopped
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`from requesting inter partes review on the grounds identified herein.
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`III.
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`IDENTIFICATION OF CHALLENGE
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`Petitioner requests inter partes review and cancellation of claims 1, 2, 4, 6,
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`11, 17-21 and 23-25 of the ’843 patent under 35 U.S.C. §§102-103 on the
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`grounds below. This petition presents evidence of unpatentability and establishes
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`a reasonable likelihood that the Petitioner will prevail in establishing all the
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`claims of the ‘843 patent are unpatentable.
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`Ground 1: Claims 1, 2, 4, 6, 11, 17-18 and 23-25 are Unpatentable as
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`Anticipated by Davenport.
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`Ground 2: Claims 19-21 are Unpatentable as Obvious in view of
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`Davenport over Partridge.
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`Ground 3: Claims 1, 2, 4, 6, 11, 17-21, 23-25 are Unpatentable as
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`Obvious over EP’269 in view of Leinen, Durco, Carlson, and/or Neles Q-
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`Ball.
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`Petitioner’s statement of the reasons for the relief requested is set forth
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`below. In accordance with 37 C.F.R. § 42.6(c), copies of the exhibits are filed
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`11
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`herewith. In addition, this Petition is accompanied by the Declaration of
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`Arthur R. Yeary. (“EX1002”)
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`IV. STATEMENT OF THE REASONS FOR THE PRECISE
`RELIEF REQUESTED
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`A. General State of the Prior Art
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`
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`Prior to the ‘843 patent, control valves comprising the claimed
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`throttling ball and shoe member were disclosed in the prior art and even
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`patented. The use of such control valves to regulate fluid flow in systems
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`were disclosed in the prior art. The alleged advances set forth in the ‘843
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`patent are two-fold: 1) the claimed ball valve has a ball plate which acts as an
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`initial secondary gas outlet to reduce fluid pressure; and 2) the claimed shoe
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`member provides a smooth flow of gas through the valve to lessen pressure
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`drops and provide laminar flow. But as will be discussed, all the limitations
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`in the claims, were either disclosed, explicitly or implicitly, in the prior art,
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`thus rendering the ‘843 patent claims invalid as anticipated and/or obvious.
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`Ball flow control valves include a body having an inlet and an outlet and a
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`valve element between. The inlet, outlet, and valve element have a bore for
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`allowing flow through the valve. At a high flow rate through the valve, the bore in
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`the valve element may be completely aligned with the bores of the valve body inlet
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`and outlet. At a reduced flow rate, the bore in the valve element is moved out of
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`alignment with the bores in the valve inlet and valve outlet so as to restrict flow
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`12
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`through the valve. In this misaligned condition, the valve is in a throttling position
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`restricting flow through the valve, which may introduce a loss of fluid pressure
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`(i.e., pressure drops) to the fluid being throttled. (EX1001, Col. 1:25-40)
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`Pressure drops may cause vibration and noise problems in gas flows. One
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`problem associated with the throttling of pipeline flows with valves is the
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`occurrence of “noise, which is caused by vibration in the valve and pipe caused by
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`valve induced shear turbulence and vortices formed in the fluid passing through the
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`valve. (EX1001, Col. 1:40-45)
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`As noted in Baumann, noise attenuation for gas flow systems has been at the
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`forefront of valve design since noise restrictions for facilities took effect in 1972
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`(citing U.S. Dept. of Labor, Occupational Noise Exposure, OSHA Regulations,
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`Federal Register, CFR 48(46) 1983, Washington, D.C., May 29, 1972). (EX1003,
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`p. 91). Baumann also points out that in 1995 a fundamentals-based, international
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`standard for predicting aerodynamic valve noise, known as the International
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`Electrotechnical Commission (IEC), was published. (EX1003, p. 91).
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`Between 1972 and 2002, valve designers took three general approaches to
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`addressing the issue of aerodynamic noise in gas flow systems: (1) pressure drops
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`were accomplished in stages instead of all at once; (2) multiple parallel flow
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`orifices were used; and (3) multiple combinations of staged pressure drops and
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`parallel flows were used. (EX1003, p.91)
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`13
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`These general approaches led to the design and use of unique valve plugs or
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`cages. The plugs/cages were used with drilled plates to divide gas flows and create
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`sharp turns in the flows to cause pressure drops. (EX1003, p. 92). For cavitation or
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`noise attenuation, it is desirable to spread the pressure drop taken by a valve over
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`as many components within the valve as possible. Each component has a pressure
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`drop ratio—i.e., a ratio of pressure drop divided by inlet pressure to that
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`component. (EX1001, Col. 1:62-67)
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`Prior to 2008, valve designers have employed various trim packages, for
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`placement within ball valves, and diffusers, positioned at the inlet and/or outlet of a
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`ball valve, to reduce flow pressures and control gas flows. (EX1002, ¶ 19)
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`B. Overview of the ’843 Patent
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`The ‘843 patent was filed on December 31, 2008 and assigned U.S. Patent
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`Application Serial Number 12/347,051. The ‘051 application published on
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`July 1, 2010 under Publication No. 2010/0163774 A1. PTO assignment records
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`indicate that the ‘843 patent is currently assigned to Dresser, LLC of Addison,
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`Texas.
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`The ‘843 patent is directed to a control valve for controlling the flow of
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`fluids, such as natural gas. Specifically, the ‘843 patent is directed to a control
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`valve having a throttling ball with a hole extending therethrough. When the hole
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`is aligned with the inlet and outlet bores of the valve, gas can pass through freely.
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`14
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`When the valve is rotated 90 degrees, and the hole 207 is not aligned with the
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`bores, then fluid flow ceases and nothing can pass through.
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`The ‘843 patent states when the hole of the throttling ball is out of
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`alignment with the inlet and outlet bores, then the valve is considered to be in a
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`throttling position which may result in the loss of fluid pressure. The specification
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`describes the well-known problems associated with the change in fluid pressure
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`stating “[l]ocalized high-pressure drops may cause vibration and noise problems.”
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`(EX1001, Col. 1:40-41). It also explains “…noise generated by a ball valve may
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`be directly related to a magnitude of volumetric flow through the valve: as flow
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`increases, noise may increase. Further, noise generated by the ball valve may be
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`directly related to a magnitude of any single pressure drop of the fluid flowing
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`through the valve: the larger the pressure drop, the greater the noise generation.”
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`(EX1001, Col. 10:57-63).
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`The ‘843 patent describes this pressure phenomenon stating, “a ball valve at
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`a given flow rate with a single, large pressure drop of the fluid may generate more
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`noise than the same ball valve at the same flow rate with multiple stages of
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`smaller pressure drops, where the sum of the smaller pressure drops is
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`substantially equal to the large pressure drop.” (EX1001, Col. 10:63-11:1). The
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`‘843 patent’s solution to this well-known problem of reducing noise and
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`cavitation is by “splitting the total pressure drop through multiple stages of
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`15
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`pressure drop and/or multiple channels of flow.” (EX1001, Col. 11:1-3). The
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`‘843 patent also discusses reducing noise and cavitation by extending and
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`straightening the fluid flow path “such that fluid entering or exiting the ball valve
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`has increased laminar flow characteristics of the fluid as it travels through the
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`fluid piping system.” (EX1001, Col. 7:8-12).
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`The ‘843 patent’s solution to the problem of reducing noise and cavitation,
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`while increasing laminar flow, is by providing: 1) a ball plate in the throttling ball
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`to provide multiple fluid passages to reduce fluid pressure; and 2) a shoe member
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`to increase laminar flow. The specification discloses “a ball plate 245 disposed in
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`a transverse passage of the flow conduit 267.” (EX1001, Col. 11:48-49). The ball
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`plate is described as having “multiple orifices 247 allowing fluid communication
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`there through. The ball plate 245, therefore, may also reduce the fluid pressure of
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`the fluid 165 during fluid communication through the ball valve 200. In some
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`embodiments, the ball plate 245 may induce a reduction in pressure in the inlet
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`fluid 165 when the ball valve is in a partially open position.” (EX1001, Col.
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`11:52-58).
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`The shoe is described in the specification as being disposed downstream of
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`the throttling ball and functions to “prevent fluid from the fluid outlet 104 from
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`flowing back toward the throttling ball 145 and the body 125.” (EX1001, Col.
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`8:8-12). Referring to FIGS. 3C-D in the specification, the shoe 155 has a
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`16
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`“…substantially hemispherical interior surface 251 adjacent the throttling ball 145
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`within the substantially cylindrical valve body 125. Such spherical tracking of the
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`interior hemispherical surface 251 of shoe 155 to the generally spherical shaped
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`throttling ball 145 may provide considerable more predictability and control of the
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`pressure drop through the valve than a spherical ball element in a cylindrical
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`cavity without the shoe.” (EX1001, Col. 8:13-21). As claimed, the shoe is
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`located downstream of the throttling ball. (EX1001, Claims 1, 17 and 24).
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`1. Claims of the ’843 Patent
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`The ‘843 patent has 25 claims. Independent Claims 1 and 24 are directed to
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`a valve for regulating the flow of fluid through a passage. Independent Claim 17 is
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`directed to a method of regulating fluid with a valve as claimed. Independent
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`Claims 1, 17 and 24 share three common elements: 1) a valve body with an interior
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`cavity; 2) a throttling ball; and 3) a shoe member with a partial hemisphere interior
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`surface. Claims 1 and 17 require the throttling ball to have a ball plate. Claim 24
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`includes the additional element of a seat adjacent the body. The remaining claims
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`are dependent claims that provide further limitations.
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`2.
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`Prosecution of the ‘843 Patent
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`During prosecution of the application leading to the ‘843 patent Applicant
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`received a single rejection, finding Claims 1-6, 9, 11, 17-22, 24 and 25 anticipated
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`under 35 U.S.C. 102(b) by U.S. Patent No. 5,070,909 to Davenport. (EX1004,pp.
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`17
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`40-41). Claims 7, 8, 10, 12-16 and 23 were objected to as depending on a
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`rejected base claim, but allowable if rewritten in independent form to include all
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`the limitations of the base claim and any intervening claims. (EX1004, p. 41). As
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`such, Applicant amended originally filed independent Claims 1 and 18 to include
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`the indicated allowable subject matter.
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`In response to the first office action, applicant amended independent Claim
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`1 to require “the throttling ball further comprising a ball plate disposed in a
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`downstream transverse passage of the throttling ball that intersects the fluid
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`conduit through the throttling ball, the ball plate including a plurality of orifices
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`allowing fluid communication there through….” (EX1004, pp. 15, 21 and 22).
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`Claim 18 was amended to require “a ball plate including a plurality of orifices;
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`and at least one of the plurality of orifices of the ball plate….” (EX1004, pp. 17,
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`18, 21 and 22). Applicant did not contest the merits of the anticipation rejection in
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`view of Davenport, instead it amended the claims to add limitations directed to
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`the claimed ball plate element resulting in a Notice of Allowance.1 (EX1004, pp.
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`6-9).
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`C.
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`The Level of Ordinary Skill in the Art
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` 1
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` Applicant added independent Claim 26 (issued Claim 24) which does not require
`the ball plate limitations of Claims 1 and 17. However, Claim 26 (issued Claim 24)
`does require both a seat and a shoe member.
`
`
`
`18
`
`
`
`The hypothetical “person of ordinary skill in the art” (POSITA) at the time of
`
`the filing of the application that led to the ‘843 patent would include, but is not
`
`limited to, a person having a bachelor of science degree in engineering or
`
`physics, and at least 10 years experience in the field of valve design, valve
`
`maintenance, or related fields using fluid valve installations. Alternatively, the
`
`hypothetical POSITA would include a person with over 20 years experience in
`
`the field of valve technology, including experience related to valve design, valve
`
`maintenance or valve installation. (EX10002, ¶¶ 34-35).
`
`D. Claim Construction
`
`Claim construction begins with the claim language. Teleflex, Inc. v. Ficosa
`
`N. Am. Corp., 299 F.3d 1313, 1324 (Fed. Cir. 2002). If the patentee specifically
`
`defined a term used in the claims, that definition controls. Phillips v. AWH Corp.,
`
`415 F.3d 1303, 1312 (Fed. Cir. 2005). Absent a special and particular definition
`
`created by the patent applicant, claim terms are to be given their ordinary and
`
`customary meaning, which is the meaning that the term would have to a person of
`
`ordinary skill in the art at the time of the invention after reading the entire patent.
`
`Id. at 1312-13. The ordinary meaning of a term cannot, however, be construed in
`
`a vacuum; rather, a court “must look at the ordinary meaning in the context of the
`
`written description and the prosecution history.” Medrad, Inc. v. MRI Devices
`
`Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005).
`
`
`
`19
`
`
`
`
`
`The claims themselves provide substantial guidance as to the meaning of
`
`particular claim terms. Phillips, 415 F.3d at 1314. “[T]he most important
`
`indicator of the meaning of [a claim term] is its usage and context within the
`
`claim itself.” Middleton, Inc. v. Minn. Mining & Mfg. Co., 311 F.3d 1384, 1387
`
`(Fed. Cir. 2002). In construing the claim terms, “the analytical focus must begin
`
`and remain centered on the language of the claims themselves, for it is that
`
`language that the patentee chose to use to ‘particularly point out and distinctly
`
`claim the subject matter which the patentee regards as his invention.’” Interactive
`
`Gift Express, Inc. Compuserve, Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001).
`
`
`
`The claims do not stand alone but are read in the context of the
`
`specification. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.
`
`Cir. 1995), aff’d, 517 U.S. 370 (1996). The “specification is always highly
`
`relevant to the claim construction analysis. Usually, it is dispositive; it is the
`
`single best guide to the meaning of a disputed term.” Vitronics Corp. v.
`
`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The Federal Circuit
`
`clarified it will interpret a claim term more narrowly than its ordinary meaning
`
`when the patentee disavows the full scope of a claim term in the specification or
`
`during prosecution. Aventis Pharm. S.A. v. Hospira, Inc., 675 F.3d 1324, 1330
`
`(Fed. Cir. 2012). “A court may look to extrinsic evidence so long as the extrinsic
`
`evidence does not contradict the meaning otherwise apparent from the intrinsic
`
`
`
`20
`
`
`
`record.” Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382
`
`(Fed. Cir. 2008).
`
`Petitioner contends for purposes of this proceeding, the claims terms should
`
`be given their ordinary and customary meaning.
`
`In its invalidity contentions in the district court, Petitioner contends that
`
`“detachably secured to the body” is not enabled by the specification. In
`
`Petitioner’s view, the claims are indefinite under 35 U.S.C. (Pre-AIA) §112, first
`
`paragraph, because the specification fails to provide a written description of the
`
`invention, and of the manner and process of making and using it, in such full,
`
`clear, concise, and exact terms as to enable any person skilled in the art to which
`
`it pertains, or with which it is most nearly connected, to make and use the same.
`
`Specifically, each independent claim (i.e., Claims 1, 17 and 24) recites a
`
`“shoe member…detachably secured to the body.” However, the entirety of the
`
`disclosure describes and illustrates a “shoe member” which is “detachably
`
`secured” to the outlet closure. This is best illustrated in FIG. 3E, reproduced
`
`below.
`
`
`Outlet Closure
`
`
`
`
`
`bolts
`
`
`
`
`
`Valve Body
`
`Shoe Member
`
`21
`
`
`
`
`
`
`
`The ‘843 provides:
`
`Referring to FIGS. 2 and 3C, the shoe 250 is disposed against and
`
`detachably secured to the outlet closure 215 in the fluid outlet 204 adjacent the
`
`throttling ball 230. For instance, one or more shoe bolts 255 may secure the shoe
`
`250 to the outlet closure 215. In some embodiments, the shoe 250 may also or
`
`alternatively be secured to the valve body 205. Turning briefly to FIG. 3C, this
`
`figure illustrates one embodiment of the shoe 250 used in the ball valve 200 in
`
`accordance with the present disclosure. The shoe 250 includes one or more bolt
`
`holes 253 through which the shoe bolts 255 may be inserted. (EX1001, Col.
`
`12:17-26).
`
`In six of the figures in the ‘843 patent, the shoe 250 is shown bolted to the
`
`outlet closure 215. There are no illustrations of the shoe 250 being “detachably
`
`secured” to the body 205 of the valve. For at least this reason, it is believed that
`
`the ‘843 patent fails to provide a written description of the invention as required
`
`by 35 U.S.C. (Pre-AIA) § 112, first paragraph.
`
`The specification notes, with reference to FIGS. 2 and 3C, that “the shoe
`
`250 is disposed against and detachably secured to the outlet closure 215” using
`
`one or more shoe bolts 255 (EX1001, Col. 12:17-21). It is also noted “the body
`
`
`
`22
`
`
`
`125 and the inlet and outlet closures 130 and 135 may be constructed as an
`
`integral component.” (EX1001, Col. 6:51-54). However, such an embodiment is
`
`not illustrated and there is no reference to this one-piece structure as anything
`
`other than a body with integral inlet and outlet closures. Further, the specification
`
`states the shoe member 250 “may also or alternatively be secured to the valve
`
`body 205.” (EX1001, Col. 12:1-22). The separate nature of the closure and the
`
`body is evidenced in dependent Claim 12 (depending from Claim 1) which adds
`
`the limitation of “at least one of an inlet closure member detachably secured to
`
`the body” and “an outlet closure detachably secured to the body.” Regardless of
`
`how, the term “detachably secured” is construed, it must mean the same as it is
`
`used throughout the claims.
`
`E. Scope and Content of the Prior Art
`
`
`
`U.S. Patent No. 5,070,909 to Davenport
`1.
`(“Davenport”)
`
`U.S. Patent No. 5,070,909 issued on December 10, 1991 from U.S.
`
`Application No. 536,216 filed on June 11, 1990 (“Davenport”). (EX1005).
`
`Therefore Davenport is prior art to the ‘843 patent under 35 U.S.C. (Pre-AIA)
`
`§102(b). Although Davenport was cited during prosecution, Dresser did not
`
`contest the merits of the rejection, instead amending the claims to add limitations
`
`to a ball plate, resulting in a Notice of Allowance. (EX1004, pp. 15-24).
`
`
`
`23
`
`
`
`Davenport is generally directed to a rotary control valve for controlling
`
`fluid flow through a conduit. (EX1005, Col. 4:36-37) Davenport addresses the
`
`problems associated with noise and cavitation by creating multiple flow paths to
`
`spread the pressure drop through a valve. (EX1005, Col. 7:35-38). Specifically,
`
`Davenport teaches a valve having a throttling ball that can be adjusted from a
`
`open to closed position to facilitate flow from an upstream end of a passage to a
`
`downstream end. (EX1005, Col. 5:43-46; 6:3-6); FIGS. 4a, 5C and 5d).
`
`Davenport discloses the throttling ball has a ball plate having a plurality of
`
`orifices to allow fluid to pass therethrough. (EX1005, Col. 7:31-34). Davenport
`
`also discloses the throttling ball is positioned between seat/trim assemblies that
`
`have a partial hemisphere interior surface and track the external surface of the ball
`
`(EX1005, Col. 5:53-56; 6:44-49; FIG. 7).
`
`European Patent Application No. EP 0889269
`2.
`A1 (EP ‘269)2
`
`European Patent Application 0 889 269 was filed on June 19, 1998 and
`
`bears a publication date of January 7, 1999 (“EP’269”). (EX1007a). Therefore
`
`EP’269 is prior art to the ‘843 patent under 35 U.S.C. (Pre-AIA) §102(b).
`
`Generally, EP’269 teaches an adjustable ball valve (10) with a spherical shut-off
`
`device (20) positioned inside a casing (11) between circular seals, a first (40) and
`
` 2
`
` As EP ‘269 is in German, a Certified Translation is provided as EX1007b and is referenced
`herein by Petitioner.
`
`
`
`24
`
`
`
`a second (41) throttling element for the reduction of pressure and noise.
`
`(EX1007b, Abstract).
`
`3.
`
`U.S. Patent No. 5,437,305 to Leinen (“Leinen”)
`
`U.S. Patent No. 5,437,305 issued on August 1, 1995 from U.S. Application
`
`No. 299,998 filed on September 1, 1994 (“Leinen”). (EX1008). Therefore
`
`Leinen is prior art to the ‘843 patent under 35 U.S.C. (Pre-AIA) §102(b). Leinen
`
`teaches a throttling ball having a fluid conduit and a plurality of transverse
`
`(secondary flow) passages 78 to the fluid conduit of the ball valve. (EX1008,
`
`Col. 4:30-34). The plurality of flow passages forms a ball plate transverse to the
`
`primary fluid conduit. Leinen teaches that by “varying the size of the outlet
`
`diffuser and the total cross-section and number of the secondary flow passages 78
`
`exposed to the outlet 28 in any position of the valve element 60, the valve
`
`designer may modify the relative pressure drop and flow diverting effects through
`
`the valve 10 to optimize the pressure drop and noise characteristics of the valve
`
`10.” (EX1008, Col. 6:24-30).
`
`U.S. Patent No. 6,039,304 to Carslon
`4.
`(“Carlson”)
`
`U.S. Patent No. 6,039,304 issued on March 21, 2000 from U.S. Application
`
`No. 09/084,698 filed on May 26, 1998 (“Carlson”). (EX1009). Therefore
`
`Carlson is prior art to the ‘843 patent under 35 U.S.C. (Pre-AIA) §102(b).
`
`Carlson teaches the use of disk 8 “inserted into the valve 100 and secured
`
`
`
`25
`
`
`
`therein….[O]ne side of the disk 8 is concave with a curvature approximating that
`
`of the exterior spherical surface of ball 3….” (EX1009, Col. 4:15-25). Disk 8 is
`
`configured to produce desired f
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