UNITED STATES PATENT AND TRADEMARK OFFICE EPIC...

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

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EPIC LIFT SYSTEMS, LLC, Petitioner,

v.

INTEGRATED PRODUCTION SERVICES, INC., Patent Owner

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Case Patent No. 6,209,637

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PETITION FOR INTER PARTES REVIEW

Petition for Inter Partes Review Pat. No. 6,209,637

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TABLE OF CONTENTS I. MANDATORY NOTICES (37 C.F.R. § 42.8) ................................................ 1

A. Real Party in Interest .................................................................................... 1

B. Related Matters ............................................................................................. 1

C. Lead and Back-up Counsel and Service Information .................................. 1

II. COMPLIANCE WITH REQUIREMENTS FOR INTER PARTES PETITION PURSUANT TO 37 C.F.R. § 42.104(A) ............................................... 2

III. IDENTIFICATION OF CLAIMS BEING CHALLENGED AND RELIEF REQUESTED PURSUANT TO § 42.104(B)) ........................................................ 2

IV. TECHNOLOGY GENERALLY ..................................................................... 3

A. Conventional Plungers ................................................................................. 4

B. Continuous Run Plungers ............................................................................. 5

V. STATE OF THE ART ...................................................................................... 6

VI. U.S. PATENT NO. 6,209,637 ....................................................................... 11

A. The Specification ........................................................................................ 11

B. Prosecution History of ‘637 Patent ............................................................ 13

C. Person of Ordinary Skill in the Art ............................................................ 17

VII. CLAIM CONSTRUCTION ....................................................................... 18

A. lower member ............................................................................................. 18

B. the ratio terms ............................................................................................. 18

C. restrictor ...................................................................................................... 20

D. a device for holding .................................................................................... 21

E. means for releasing the sleeve from the catcher device ............................. 21

F. a device for holding .................................................................................... 22

VII. PRECISE REASONS FOR RELIEF REQUESTED ................................. 23

A. Brief Description of Asserted Prior Art ..................................................... 23

1. Popov ....................................................................................................... 23

2. Roach ....................................................................................................... 24

3. Burgher .................................................................................................... 24

B. Analogous Art ............................................................................................ 25


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C. Motivations and Rationales to Combine Popov, Roach, and Burgher ...... 26

D. Expected Results of the Combinations....................................................... 30

E. Element-by-Element Invalidity Analysis ................................................... 31

1. Claim RE1 ............................................................................................... 32

2. Claim 9 .................................................................................................... 42

3. Claim RE11 ............................................................................................. 43

4. Claim RE12 ............................................................................................. 44

5. Claim RE13 ............................................................................................. 48

6. Claim RE15 ............................................................................................. 50

7. Claim RE23 ............................................................................................. 52

8. Claim 24 .................................................................................................. 55

9. Claim 25 .................................................................................................. 55

10. Claim RE28 ............................................................................................. 55

11. Claim RE29. ............................................................................................ 56

12. Claim RE30 ............................................................................................. 56

13. Claim RE33. ............................................................................................ 57

14. Claim RE37. ............................................................................................ 57

15. Claim RE39. ............................................................................................ 57

16. Claim RE42 ............................................................................................. 57

17. Claim RE53 ............................................................................................. 58

18. Claim RE55 ............................................................................................. 60

VIII. CONCLUSION .......................................................................................... 60


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TABLE OF AUTHORITIES

Cases In re GPAC Inc., 57 F.3d 1573 (Fed. Cir. 1995) ............................................................................ 17 In re Suitco Surface, Inc., 603 F.3d 1255 (Fed. Cir. 2010)........................................................................... 18 Okajima v. Bourdeau, 261 F.3d 135, (Fed. Cir. 2001) ............................................................................ 17

Other Authorities MPEP § 2173.01 .................................................................................................... 18 Trial Practice Guide, 77 F.R. 48,756 (Aug. 14, 2012) .......................................................................... 24

Statutes 35 U.S.C. § 103 ......................................................................................................... 3

Regulations 37 C.F.R. § 42.100(b) ............................................................................................. 18


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I. MANDATORY NOTICES (37 C.F.R. § 42.8)

A. Real Party in Interest

Epic Lift Systems, LLC (“Epic”) is the real party in interest.

B. Related Matters

There is a pending district court litigation where U.S. Patent No. 6,209,637

(the ‘637 patent) and two other patents owned by Patent Owner are being asserted

against Epic. The case is captioned Integrated Production Services, Inc. v. Epic

Lift Systems, LLC f/k/a Epic Well Services LLC; Civil Action No. 4:14-cv-00246,

pending in the Southern District of Texas Houston Division.

C. Lead and Back-up Counsel and Service Information

Lead Counsel Keith Rutherford Reg. No. 36,262 [email protected] (832) 446-2425

Back-up Counsel David Cabello Reg. No. 31,455 [email protected] (832) 446-2410

Back-up Counsel Stephen Zinda Reg. No. 67,272 [email protected] (832) 446-2468

Service of any documents via mail or hand-delivery may be made on

Petitioner at: Wong, Cabello, Lutsch, Rutherford and Brucculeri LLP, 20333 SH

249 Suite 600 Houston, Texas 77070. The fax number for Petitioner’s counsel is

(832) 446-2424. Petitioner consents to electronic service by e-mail at


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[email protected].

II. COMPLIANCE WITH REQUIREMENTS FOR INTER PARTES PETITION PURSUANT TO 37 C.F.R. § 42.104(A)

Petitioner certifies that (1) the ‘637 patent is available for inter partes

review; and (2) Petitioner is not barred or estopped from requesting inter partes

review of any of the challenged claims on the grounds identified herein.

The undersigned authorizes the Commissioner to charge the fee specified by

37 C.F.R. § 42.15(a) to Deposit Acct. No. 501922, referencing attorney docket

number 1304-0004. In addition, the undersigned representative authorizes the

Commissioner to charge any additional fees which may be required, or credit any

overpayment, to Deposit Account No. 501922.

Concurrently, Petitioner is filing a Power of Attorney and Exhibit List

pursuant to 37 C.F.R. § 42.10(b) and § 42.63(e), respectively. Proof of Service of

this petition pursuant to §§ 42.6(e) and 42.105(a) is provided in the attached

certificate of service.

III. IDENTIFICATION OF CLAIMS BEING CHALLENGED AND RELIEF REQUESTED PURSUANT TO § 42.104(B))

The ‘637 patent was the subject of a reexamination. As such Petitioner will

identify claim numbers with an RE where the claim was amended at least in some

way, or added during the reexamination. Petitioner requests institution of trial and

cancellation of claims RE1, 9, RE11–RE13, RE15, RE23, 24-25, RE28–RE30,


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RE33, RE37, RE39, RE42, RE53 and RE55 of the ‘637 Patent (“Challenged

Claims”), as all Challenged Claims are rendered obvious under 35 U.S.C. § 103

by:

(1) “Experience in Introducing Plunger Lift at Fields of the Ukhta

Complex,” Gazovoe delo, No. 9, pp 23-26, 1968 A.A. Popov (“Popov”) in view of

U.S. Patent No. 3,329,211 (“Roach”), combined with the knowledge of one of

ordinary skill in the art; and/or

(2) Popov in view of Roach and U.S. Patent No. 2,001,012 (“Burgher”),

combined with the knowledge of one of skill in the art.

IV. TECHNOLOGY GENERALLY

The technology of the ‘637 patent generally relates to plunger lifts for

producing oil and gas from wells that have been produced over time and no longer

reliably flow on their own due to decreased formation pressure, but are still

capable of producing a significant amount of gas. Ex. 1002 at ¶ 34. In wells that

flow on their own, the flow of gas may eventually be cut-off if fluid builds up in

the production string and creates a hydrostatic liquid column pressure that

becomes equal to the gas formation pressure. Id. Operators for many decades have

used what is called plunger lift (i.e., “artificial lift”) to maintain production in

wells where this cut-off may occur by extracting unwanted liquid from the bottom

of a gas well. Id. at ¶¶ 36, 38. There are two forms of plunger lift, conventional


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and continuous, and both start with the basic idea of dropping a plunger to the

bottom of the production string to create a seal and use the upward flow of gas to

carry unwanted liquid out of the well. Id. at ¶ 36. Both forms use the same basic

surface and downhole equipment, including a master valve, controller, auto-

catcher, and bottom-hole spring for absorbing the impact of the falling plunger. Id.

at ¶¶ 37–42. Any plunger, regardless of the type, will wear out and lose efficiency

over time, therefore they are designed to be replaced and serviced. Id. at ¶ 43.

A. Conventional Plungers

Conventional plunger lift systems require that the well be shut in to allow

the plunger to reach the bottom of the well because the plunger is solid and creates

a seal with the production tubing. Id. at ¶ 45. If the well were open when the

plunger were dropped, the flow rate of gas to the surface would prevent the

conventional plunger from falling to the bottom of the well. Id. To close the well, a

plunger lift controller sends an electric or pneumatic signal to close a motor valve

located at the surface, downstream of the wellhead. Id. at ¶ 46. With the well

closed/shut-in (i.e., no gas flow), the plunger free falls through the tubing to the

bottom hole spring location. Id. When it is desired to bring the plunger back to the

surface, a controller sends a signal to the open the control (i.e. motor) valve. Id. If

the reservoir pressure is sufficient when the well is opened, the plunger will rise to

the surface, pushing the unwanted liquid column above it and out of the well. Id.


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B. Continuous Run Plungers

Continuous run plunger lift systems use either a two-piece plunger or a

single piece bypass plunger. Id. at ¶ 47. Both have an internal passageway that is

open for gas and liquids to pass through as the plunger falls, yet closes, blocking

the internal flow path prior to the plunger ascending to the surface. Id. This is

advantageous because it does not require the well to be shut-in to allow the plunger

to fall, which slows gas production. Id. The two-piece plunger consists of an upper

component (e.g., sleeve) and lower component (e.g., ball) that fall into the well

separately, but unite to close the internal passageway in the upper member so that

when united the gas flow rate will push the plunger to the surface. Id. at ¶ 48.

The two piece plunger lift cycle generally starts with a ball (i.e., a lower

component) being dropped first at some distance ahead of a sleeve (i.e., an upper

component), and then the sleeve follows. Id. at ¶ 49. The ball and sleeve unite at

the bottom of the well and create a seal which propels the united plunger to the

surface and carries out the unwanted liquid. Id. A separator rod dislodges the ball

from the sleeve when they reach the wellhead and the cycle repeats. Id. If the

separator rod is adequately sized, it will fill the passage in the sleeve such that the

upward flow of formation contents will hold the sleeve on the rod until the well is

shut in by a controller. Id. It is desired to hold the sleeve at the surface long

enough to ensure the ball reaches the bottom of the well before the sleeve. Id.


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V. STATE OF THE ART

At least as early as the 1930s two piece ball and sleeve plunger

lift systems were known in the art. Id. at ¶ 51. Burgher, a 1935 prior art

reference, discloses the use of a ball 1 and sleeve 2 two piece plunger

(shown right), as well as a dart 17 and sleeve 2 two piece

plunger (shown left). Ex. 1007 at Fig. 1 and 10. Burgher

also taught using a separator rod that slipped through the sleeve and

knocked the ball or dart out of the sleeve. Id. at 3(left):44–51, 59–

61. Burgher further taught that, once separated, the sleeve would

continue to rise up the separator rod due to momentum and upward pressure from

production fluids. Id. at 3(left):64–69. Burgher specifically taught that this design

was intentional to allow the ball or dart to get a “considerable distance” ahead of

the sleeve when falling down the well. Id. at 2(right):67–73.

While Burgher relied on the natural momentum of the sleeve to create a

delay to allow the ball to reach the bottom first, others in the industry created

designs that included mechanical means to hold the plunger at the surface for some

period of time in order to control the cycle rate of the plunger lift system. Ex. 1002

at ¶ 52. For example, a 1935 patent issued to Scott (U.S. Patent No. 2,013,111)

(“Scott”), in reference to Figure 1, discloses a single-piece plunger that uses a

catcher with a latch bolt 13 that extends into the production tubing to hold the


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plunger. Ex. 1015 at 2(left):45–47. Scott teaches us that the cycling could be

controlled by mechanically holding the plunger in the well head, and that the cycle

timing could be adjusted using a choke valve 24 so that the “release of the plunger

may be timed to suit conditions existing in the well so that the plunger will not

reach the bottom until the proper level of liquid has been reached . . .” Ex. 1015

2(left):65–70. Thus, the timing of the cycle could be easily and readily varied to

suit well conditions. Ex. 1002 at ¶ 53–54.

In yet another example, an early 1960s patent issued to Brown (U.S. Patent

No. 3,095,819) (“Brown”) describes that there are many types of catchers and

discloses a mechanical catcher operated by a very versatile controller. Id. at ¶ 55.

Brown informs us that:

A catcher is often provided in the lubricator section for the purpose of

holding the piston at the top of the well for any desired length of time.

Such catchers have been mechanically, pneumatically or solenoid

operated and comprise a latch adapted to fit into suitable receiving

spaces in the free piston. Catchers have been controlled by suitable

timing devices, thus making operation automatic. Ex. 1009 at 1:48–

55.

Brown also teaches that the timing of its catching device may be easily altered by

selecting the spacing of pins on a timing wheel. See id. at 6:51–54 (“a

predetermined time [is] selected by spacing of pins 44 on the time wheel

43 . . . .”); Ex. 1002 at ¶ 56.


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So, by the 1930s the art had two piece plungers that used well flow and

upward momentum to hold the upper section at the well head long enough for the

lower section to fall to the bottom, as evidenced by Burgher. Ex. 1002 at ¶ 57. The

art also had single piece plungers that used controllers and auto-catchers to control

cycling by dropping the plungers as desired. Id.

By 1963, ball and sleeve plungers like the one in Burgher were very well

known. Id. at ¶ 58. For example, Russian Patent No. 171351 to Shulyatikov

(“Shulyatikov”) taught a ball and sleeve two-piece plunger for removing liquids

from a gas formation, much like Burgher. Ex. 1016 at 4; see also Ex. 1002 at ¶ 58–

59 (discussing Shulyatikov and other known ball and sleeve prior art).

By 1968, in Russia the All-Union Scientific Research

Institute of Gas was focused on plunger lift as an artificial lift

technique in a number of gas fields, as described in Popov. Ex.

1010 at 3. Not surprisingly, those plunger lifts utilized a two piece

ball (5) and sleeve (4) plunger with a separator rod (3) in the well

head (2) (shown right). Ex. 1010 at 3; Ex. 1002 at ¶ 60. Popov

noted that in 1967 field tests started using a controller to control the cycles of the

plunger, again recognizing the desire to predict and control how often the cycles

would occur. See Ex. 1010 at 7 (explaining that the introduction of a “special

control device, consisting of a pneumatic relay and two pneumatic check valves”


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will “permit control of the operating cycle of the plunger lift”); Ex. 1002 at ¶ 61.

Popov was not explicit about whether his controller was used to just shut in the

well to allow the upper sleeve to drop, or whether his controller was used with a

mechanical auto-catcher of some kind to drop the sleeve. Ex. 1002 at ¶ 61. Those

of skill in the art would have understood either could have been used. Id.

For instance in the 1960s, Roach combined a two piece plunger system with

a catcher and controller system that operates almost identically to that of the ‘637

patent. Id. at ¶ 62. Roach expressly notes that two-piece

plungers and catchers were well known in the art and that all

he was adding to the art was a buoyancy chamber in an

“otherwise generally conventional free [two-piece] piston type

plunger.” Ex. 1011 at 5:66–72; Ex. 1002 at ¶ 63. Roach’s

two part plunger is shown in Figs 1 and 2, where the upper

portion 1 and lower portion 2 are show separated in Fig 2 and nested in Fig. 1. Ex.

1011 at 3:45–53; Ex. 1002 at ¶ 62. As illustrated in Fig. 5 (shown right), Roach

discloses a wellhead above ground, a pressure actuated separation rod 53 that can

be used to slide through the upper portion 1 of the plunger and dislodge the lower

portion 2 from the upper section 1, thereby allowing the lower portion to fall to the

bottom of the well. Id. at 5:14–36. The upper portion 1 is held at the well head

using the catching device (indicated by a red circle) in combination with a timing


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controller 40. Id. at 5:14–19, 35–52. The catching device has a piston that extends

into the side of the upper section 1 to prevent it from falling, just like the catching

device disclosed in the ‘637 patent. Ex. 1002 at ¶ 64. In this way, Roach could

control the cycling of the two piece plunger lift system on a timed cycle and to

ensure that the lower member reaches the bottom of the well first.

While Scott, Brown, and Roach all disclose very old methods of controlling

the cycle rate (e.g., mechanical timers), by 1999 numerous other types of variable

control devices were known in the art. Id. at ¶ 65. Thus, from the 1930s to 1990s

various catchers and variable controllers were used and clearly were well-known

in the art. Id. By the 1960s, decades before the filing of the ‘637 patent, the art

already had two piece plungers for use with a separator rod, including ball and

sleeve plungers. Id. at ¶ 66. The art also clearly had auto-catchers and various

controllers for use with two-piece plungers (as evidenced by Roach). And those of

skill in the art understood the desire to control the cycle frequency and ensure that

the lower member reached the bottom of the well first. Id.

Furthermore, it was also universally understood in the plunger-lift industry

prior to 1999 that any plunger would need to be serviced and eventually replaced.

Id. at ¶¶ 67–69. In order to remove the plungers, the following steps would occur:

(1) a catcher (manual or auto) would be engaged to catch the plunger when it

arrives in the lubricator; (2) the plunger would be forced to the lubricator by the


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upward flowing formation contents; (3) with the plunger caught in the lubricator,

the lubricator would be isolated from pressures by closing the well master valve

and flow outlet valves; (4) all pressure would be vented from the lubricator; and

(5) the top of the lubricator would be removed so that the plunger could be

extracted. Id. at ¶ 67. For example, U.S. Patent Nos. 2,676,547 to Knox (“Knox”)

and 4,898,235 to Enright (“Enright”) also disclose that process. Id. at ¶¶ 67–69.

To minimize the damage to the plunger and reduce the time between

replacements, it was also very common to use a bumper spring at the bottom of the

well (thousands of feet below) to cushion the impact of the plunger as it falls at

high velocities. Id. at ¶ 70. For example, the ‘637 patent explains that it was

common for bumper springs to be used with plunger lift systems. Ex. 1001 at

2:26–34. By 1999, those of skill would not use a plunger lift without a bumper

spring as they can greatly increase the lifetime of a plunger. Ex. 1002 at ¶ 70.

VI. U.S. PATENT NO. 6,209,637

A. The Specification

The ‘637 patent is directed to a two part plunger and accompanying plunger

lift system. See Ex. 1001 at 2:58–67. While two piece plungers and catchers had

existed in the art for many decades before the Patent Owner’s filing date (as shown

supra at Section V), Patent Owner purports to offer an advance over the art.

The ‘637 patent describes a two piece plunger that has a solid “mandrel” 40


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that has centralizers 58, 62 and a “pin” or neck 72 that fits into an accompanying

sleeve 26. Id. at 4:39–58. The mandrel 40 and sleeve 26 are designed to fall

separately and independently into the well, and will nest together after they both

reach the bottom. Id. at 5:2–12. The ‘637 patent teaches that the mandrel should

always reach the bottom of the well before the sleeve, and in one embodiment, it

uses an auto-catcher and controller to ensure that happens. Id. at 3:19–23.

At the wellhead, there is a separator rod that projects down such that as the

sleeve and nested mandrel reach the surface, the rod slips through the sleeve and

contacts the top of the pin on the mandrel. Id. at 6:7–25. The pin’s movement is

stopped while the sleeve’s momentum causes the sleeve to keep moving up. Id.

This causes the mandrel to separate from the sleeve, breaking the seal between the

two. Id. This permits the mandrel to fall back down to the bottom of the well. Id.

In one embodiment, a catcher holds the sleeve in the well head for a delay period

between cycles “to make certain that the sleeve 38 and mandrel 40 fall separately

toward the bottom of the well 10.” Id. at 6:34–39. The patent emphasizes the

importance of ensuring that the mandrel reaches the bottom of the well before the

sleeve using an auto-catcher. Id. at 7:19--23.

The catcher uses a spring loaded ball detent 106 that is forced out by a

piston into the tubular adjacent the well head, and catches the sleeve and holds it in

the wellhead for the desired length of time. A “controller (not shown)” will


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operate the piston to release the ball detent so the weight of the sleeve will cause

the sleeve to fall back downhole to nest with the mandrel at the bottom of the well

to begin another upward cycle. Id. at 6:34–58.

The ‘637 patent is directed to a basic two part plunger but purports to add a

requirement that the surface area to weight ratio of the specially designed mandrel

(i.e., lower section) is greater than the surface area to weight ratio of the sleeve

(i.e., upper section). Id. at 5:22–56. According to the specification, the ratio

relationship is alleged to prevent the upper and lower sections from separating as

the combined sections move upwardly, which would prevent the plunger from

reaching the surface with the liquid. Id. As shown in the following section,

however, during reexamination Patent Owner changed its position and alleged that

the ratio was included to ensure that the sleeve falls faster than the mandrel—a

result not mentioned or suggested in the specification.

B. Prosecution History of ‘637 Patent

The ‘637 Patent application was filed on May 14, 1999 as U.S. Application

No. 09/312,737. Ex. 1005 at 130. The patent originally issued in 2001, without

significant argument. Id. at 81–86; 75–79. None of the art addressed in this

Petition was before the Patent Office during original prosecution. Ex. 1014 at 305.

However, in 2005 the Patent Owner requested reexamination of the patent

citing new art that had come to Patent Owner’s attention. Id. at 297. Among other


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references, the Patent Owner identified Burgher and Popov in the reexam petition.

Id. at 305. In the initial request for reexam, Patent Owner conceded that these

prior art references disclosed various limitations, such as:

A free piston having at least two sections, movable independently

downwardly in the well, the sections being united for upward movement

together in the well and for pushing liquid upward. Id. at 312.

A decoupler [separator rod] for dislodging the lower section from the

upper section. Id. at 323.

In the reexam petition, the Patent Owner argued that the prior art did not

show catcher elements, which are used to hold the upper member (e.g., the sleeve)

to control the cycling of two-piece plungers. Id. at 326–327.

In response to the Patent Office initiating the reexam in view of Popov and

Burgher, the Patent Owner amended every independent claim to include a

limitation requiring that the ratio of surface area to weight of the mandrel be

greater than the surface area to weight ratio of the sleeve. Id. at 42–55. The Patent

Owner alleged that the surface area to weight ratio defined how fast an object

would fall, explaining that this indicated that the sleeve (upper member) would fall

faster than the mandrel (lower member). Id. at 256. The Patent Owner then argued

that any prior art reference that did not have a catcher to hold the sleeve while the

lower section fell necessarily could not meet this limitation, as the lower section

allegedly must fall faster. See id. (“[T]he Russian devices [including Popov and the


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‘351 Russian Patent], Casey, and Burgher have to make the ball fall faster than the

sleeve so the ball reaches the bottom of the well before the sleeve catches up to

it.”). In other words, Patent Owner argued that because none of those references

included a catching device, the ball must fall faster than the sleeve. Importantly,

Patent Owner cited nothing in the Russian references or Burgher to support that

the devices had the opposite ratio characteristics or that the sleeve in those

references fell slower than the ball. So, rather than actually considering what ratios

actually were illustrated/disclosed in the prior art, Patent Owner incorrectly

assumed: (1) that the sleeve fell slower than the ball simply because there was no

catcher; and (2) then assumed that the ratio must be absent because the sleeve

allegedly fell slower. Ex. 1002 at ¶ 125.

The Patent Owner went on to ascribe a benefit to this ratio phenomenon,

saying that “[t]here will be times during upward movement of the sleeve and lower

section when the piston stalls for some reason and wants to fall to the bottom,” if

“the sleeve falls faster than the lower member, . . . it has the ability to catch up

with the lower member if they separate in the well before the end of upward

movement.” Ex. 1014 at 256–257.

Neither this benefit nor that alleged effect of the ratio formula is discussed

in the disclosure of the ‘637 patent, and in fact the disclosure discusses this ratio in

a completely different context. Ex. 1002 at ¶ 75. Specifically, the surface area to


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weight ratio recited in the specification comes at the end of a two paragraph

discussion about how a greater exposed downward surface area of the lower

member when the upper and lower members are united and exposed to a pressure

differential will help ensure that the piston remains together as it is forced upward.

Ex. 1001 at 5:22–56; Ex. 1002 at ¶ 75. As one of skill in the art would have

understood, while just the mandrel or just the sleeve is falling independently in the

well, there is no significant pressure differential across either. Ex. 1002 at ¶ 76. A

pressure differential is not created until the mandrel nests in the sleeve and the

pressure begins to build below the united piston. Id. Thus, the whole context of

that two paragraph discussion relates to what happens as the united piston rises in

the wellbore, not what happens when the separate components are dropped. Id.

A person of ordinary skill in the art would understand that the ratio does in-

fact help ensure that the upper and lower members stay together as they travel

upwardly together. Id. at ¶ 77. A person of ordinary skill in the art would also

understand that while the surface area to weight ratio of each component has some

relevance to falling speed, there are many other factors that significantly affect

falling speed, such as friction, drag, sealing elements, and the aerodynamic nature

of the objects. Id. at ¶ 78. Based on those factors, it is clear that the ratio alone

comes nowhere close to determining which object falls faster. Id. at ¶ 78–79.

But after creating this new view of the ratio for the Patent Office to


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allegedly distinguish over the art, later in the process Patent Owner eventually

disclosed Roach and conceded that Roach teaches that the sleeve falls faster than

the lower section, apparently based on the fact that Roach has a catcher. Ex. 1014

at 161. Patent Owner had to create further alleged distinctions to overcome Roach.

Patent Owner included a limitation in every claim that lower member has no

passages (or equivalent language), as Roach’s lower member has passages for

buoyancy. Id. at 160–161. Notably, the ‘637 patent makes no mention whatsoever

of a lower member having no passages, and does not teach, suggest, or imply that

there would be any benefit to having no passages in the lower member. In fact, the

‘637 patent teaches that that the mandrel does in fact have passages in the form of

slots 70. Ex. 1001 at 4:50–52, Fig. 2.

Allowance of the amended claims was granted based on Patent Owner’s ex

post facto explanation and addition of the disclosed ratio formula, as well as the

added “no passages” limitation. Ex. 1014 at 26–32.

C. Person of Ordinary Skill in the Art

The level of ordinary skill in the art is reflected by the prior art of record.

See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc.,

57 F.3d 1573, 1579 (Fed. Cir. 1995). In this case, the person of ordinary skill in

the art has at least a bachelor’s degree in petroleum engineering or mechanical

engineering or the like, or at least 1 to 3 years of experience, working with plunger


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lift technology (whether conventional or continuous). Ex. 1002 at ¶ 33.

VII. CLAIM CONSTRUCTION

In an inter partes review, claim terms are given their “broadest reasonable

construction in light of the specification of the patent in which it appears.” 37

C.F.R. § 42.100(b). Under this standard, “[t]he focus of the inquiry regarding the

meaning of a claim should be what would be reasonable from the perspective of

one of ordinary skill in the art.” MPEP § 2173.01 (citing In re Suitco Surface,

Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010)).

A. lower member (RE1, RE12, RE15, RE23, RE53, RE55); lower section (RE13, RE15, RE28, RE29, RE39); first part (RE23); second section (RE12)

The ‘637 patent only discloses a specially shaped mandrel as the lower

member/section/part. In the underlying litigation, Patent Owner is attempting to

read lower member on a ball in a ball and sleeve piston. See Ex. 1021 at 16. While

Petitioner contends under the District Court standard that a person of ordinary skill

in the art, taking into consideration all of the intrinsic and extrinsic evidence,

would not understand these terms to include a spherical lower member, Petitioner

agrees to Patent Owner’s construction for the purposes of this IPR.

B. the ratio terms (RE1, RE12, RE 13, RE15, RE23, RE28, RE29, RE53, RE55).

Each of the independent Challenged Claims requires a lower

member/section having a surface area to weight ratio greater than that of the upper


19

member/section/sleeve. As stated above supra at Section VI.B, it is clear that the

ratio was intended to and does ensure that the ball and sleeve do not separate

during upward movement, which is entirely consistent with the context in which

the ratio is discussed in the specification. Ex. 1002 at ¶ 76–79. Nowhere in the

specification is the ratio associated with the fall rate of the object. Id. at ¶ 79.

Because the ratio is intended to ensure the two pieces stay together during upward

movement, the only surface area of relevance is the downward facing surface area

exposed to an upward pressure differential when the components are united. Id. at

¶ 76. As explained in the ‘637 patent specification, when the upper and lower

members are united, the lower member blocks a significant portion of the upper

member’s downward facing surface area. Ex. 1001 at 5:35–54, Fig. 4 (showing top

view of united mandrel/sleeve); Ex. 1002 at ¶ 76. Thus, the entire downward

facing surface area and the downward facing surface exposed to an upward

pressure differential of each component are clearly much different. Because the

upward pressure differential is applied to only the exposed downward surface area

of each component when united, it is the exposed surface area that is referred to in

the ratio from the specification. Ex. 1002 at ¶ 76. Indeed, the patent never

mentions or discusses the fall rate of the components or how those fall rates would

even be determined. As such, each of these ratio limitations under their broadest

reasonable interpretations means that “the ratio (SA/W) of downward facing


20

surface area that is exposed to an upward pressure differential (SA) to weight (W)

of the lower member/section is greater than the ratio (SA/W) of downward facing

surface area that is exposed to an upward pressure differential (SA) to weight (W)

of the upper section/member/sleeve when the lower member/section and upper

section/member/sleeve are united.” Id. at ¶ 80.

C. restrictor (RE12, RE28)

The ‘637 patent teaches that “[a] sealing member 80 slips over the pin 72

and fits onto the sealing surface 74 of the mandrel.” Ex. 1001 at 4:59–61. The

specification goes on to explain that “[w]hen the sleeve 38 is released by the

catcher 32, it falls through the well 10 to the bottom. Because the pin 72 of the

mandrel 40 is aligned with the axis 66, the sleeve 38 passes over the pin 72,

impacts the top of the plate 68 and seals against the sealing member 80.” Id. at

7:3–7. Thus, the term “seals” is used to indicate a complete seal is formed between

the sleeve and lower component. Ex. 1002 at ¶ 81. In another portion of the

specification, the patent explains that “[w]hen [the sleeve and mandrel] reach the

bottom of the well, they unite into a single component which substantially closes

the flow bypasses, or at least restricts them, so gas entering through the

perforations 16 pushes the piston 26 upwardly in the well. . . .” Ex. 1001 at 5:16–

19. Here, the term “restricts” clearly evidences that it means that there can be at

least some flow. Ex. 1002 at ¶ 81. Because the patentee clearly distinguished


21

between “sealing” and “restricting,” a person of ordinary skill in the art would

interpret the term “restrictor” to be broad enough to encompass a component that

either completely seals off the passage in the sleeve, or partially blocks the

passage. Id. As such, the broadest reasonable construction of this term is “a portion

of the second/lower section that at least partially restricts the size of the first flow

bypass/passage.” Id.

D. a device for holding the sleeve in the well head above ground level (RE1); a device on the well head for holding a first of the sections and then releasing the first section in response to a signal (RE12)

These claim elements are means-plus-function elements, as the term

“device” connotes no structure corresponding to the particular functions, each of

which are underlined above. Id. at ¶ 82–84. A catcher 32 is shown to hold and

release the sleeve in the wellhead. Ex. 1001 at 6:35–38. The catcher is a ball detent

that is pressed out into a groove on the sleeve by a spring biased piston, where the

bias is to pull the ball detent out of the path of the sleeve. Id. at 6:38–48. A gas

cylinder is used to create pressure using compressed gas to force the piston against

the spring force to push the ball detent into the path of the sleeve. Id. So the

structure to hold the sleeve in the well head is a ball detent with a spring biased

piston and associated gas compressor. Ex. 1002 at ¶ 83–84.

E. means for releasing the sleeve from the catcher device (RE11)

This element was added in claim RE11 which depends from RE1. RE1


22

already calls out a device for holding the sleeve, so this element is an additional

“means” for releasing the sleeve. Id. at ¶ 85. This is a classic means plus function

element and must be construed as such. The patent describes the process of

releasing the sleeve as follows:

Upon a signal from a controller (not shown), gas pressure is bled from

the cylinder 108 allowing the spring 114 to retract the piston 112 and

allowing the weight of the sleeve 38 to push the ball detent 106 out of

the slot 104 thereby releasing the sleeve 38 for movement

downwardly into the well 10. Ex. 1001 at 6:53–58.

At a minimum, the structure that is used to release the sleeve begins with and

includes a “controller.” Ex. 1002 at ¶ 85. We are told that the “controller” is not

shown. Because there are any number of ways a controller could be implemented,

the choke valve of Scott, the timing device of Brown, the timing wheel of Roach

(all discussed in the state of the art section above), the sensor based controllers

and/or PLCs, we are not given enough information to be able to identify the

structure of the controller. Id. Since the structure of means-plus-function claims

must be shown under section 112, and the structure of the controller is expressly

“not shown,” claim RE11 must be indefinite. Id. In the alternative, any controller

or suggestion of a controller should be considered sufficient to anticipate this

limitation, as the ‘637 patent itself fails to give any detail as to the structure. Id.

F. a device for holding the upper section adjacent the end of upward movement in the well for a time at least sufficient to allow the


23

lower section to fall to the bottom of the well before the upper section reaches the bottom of the well (RE13); a device for delaying the downward movement of the upper section from the location during each cycle of movement, the duration of the delay being sufficient to allow the lower section to reach a position adjacent the formation before the upper section reaches the bottom (RE15); a device for holding the upper section adjacent the location and, after a time period, dropping the upper section into the well (RE28)

These elements are again means-plus-functions, as the term “device”

connotes no structure corresponding to the particular functions, each function

being underlined above. Id. at ¶¶ 86–88. Here, each of the “devices” generally has

two functions, holding the upper section and making a decision as to the length of

time the section should be held. Id. While the first function is performed by the

catcher as discussed above, the function of determining what time to hold the

sleeve for and determining if and when to send a release signal must be performed

by the “controller.” Id. Again, because the structure of the controller is “not

shown,” claims RE13, RE15, and RE28 are indefinite for failing to meet the

requirements of section 112 paragraph 6. Id.

VII. PRECISE REASONS FOR RELIEF REQUESTED

A. Brief Description of Asserted Prior Art

1. Popov

Popov describes a common two-component gas lift plunger that acts as a

free-piston type pump. Id. at ¶ 90. Popov teaches an above ground separation rod

to separate its rising piston into its two components: a sleeve and ball. Ex. 1010 at


24

3; Ex. 1002 at ¶ 91. The sleeve-ball piston is lifted by gas supplied by the

formation and the rising piston pushes formation liquid to an above-ground

wellhead. Ex. 1010 at 3; Ex. 1002 at ¶ 91. Popov goes on to acknowledge the

usefulness of a controller at the surface to control the cycle of the piston. Ex. 1010

at 8; Ex. 1002 at ¶ 92.

2. Roach

Like the ’637 patent and as discussed supra at Section V, Roach describes a

two-component gas lift plunger that acts as a free-piston type pump. Ex. 1002 at ¶

93. Roach teaches that each plunger part may free-fall separately to the bottom of

the well where they unite forming a piston to be pushed up by gas provided by the

formation. Ex. 1011 at 3:4–44, 4:10–31; Ex. 1002 at ¶ 93. The plunger is then

separated by an above-ground rod within its wellhead to separate the piston into its

plunger components. Ex. 1011 at 5:22–34; Ex. 1002 at ¶ 94. Roach also teaches

the use of a controller with a catcher for providing timing of the release of the

upper plunger sleeve. Ex. 1011 at 5:14–18, 39–52; Ex. 1002 at ¶ 95.

3. Burgher

Burgher discloses a two-piece plunger system teaching a sleeve and ball or a

dart with a sleeve for use with a separator rod. Ex. 1007 at 1(left):51–1(right):32,

3(left):14–34; Ex. 1002 at ¶ 96, 98. The dart is described as falling faster than the

ball because of its fins. Ex. 1007 at 3(left):14–34; Ex. 1002 at ¶ 98. The operation


25

of the system of Burgher is identical to that of Popov as the ball is first dropped

followed by the sleeve, and they unite at the bottom of the well to carry fluid to the

wellhead. Ex. 1007 at 3(left):59–3(right):4; Ex. 1002 at ¶ 96. The ball is dislodged

by the separator rod and the cycle repeats. Ex. 1007 at 3(left):64–69. Burgher does

not disclose a catcher, but it does disclose using the upward momentum of the

sleeve to allow the ball to reach the bottom of the well before the sleeve, which has

the same effect as a catcher. Ex. 1007 at 3(left):43–50; Ex. 1002 at ¶ 97.

B. Analogous Art

In order for a reference to be analogous art, it must be: (1) from the same

field of endeavor as the claimed invention (even if addressing a different problem);

and/or (2) reasonably pertinent to the problem faced by the inventor (even if from

a different field of endeavor). As discussed immediately above and supra at

Section V, Popov, Roach and Burgher are all related to the exact same field of

endeavor as the ‘637 patent technology—the removal of formation contents from a

well using a two-piece plunger lift system. Ex. 1002 at ¶ 99. Each system operates

in virtually an identical way using the same principles of physics. Id.

Additionally, each of these references are reasonably pertinent to the

problem to be solved by the ‘637 patent. Id. at ¶ 100. The ‘637 patent teaches that

one of its advantages is that it its plunger can be dropped while gas is flowing

upward and each of Popov, Roach, and Burgher allow for the same. Id.


26

In yet another aspect, the ‘637 patent discusses the use of a catcher in order

to “provide a delay period between successive cycles. . . to make certain that the

sleeve 38 and mandrel 40 fall separately toward the bottom.” Ex. 1001 at 6:35–39;

Ex. 1002 at ¶ 101. Likewise, Popov, Burgher, and Roach each provide a way of

delaying the dropping of their upper components. Ex. 1002 at ¶ 101. Additionally,

that these references were all raised by the Patent Owner during reexamination as

raising a new question of patentability indicates these are all analogous art.

C. Motivations/Rationales to Combine Popov, Roach, and Burgher

Popov teaches all of the limitations of the Challenged Claims combined with

the knowledge of a person of ordinary skill in the art, except a catcher. Id at ¶ 103.

However, Popov expressly suggests a using a controller to control the cycling of

the plunger lift system. Id. Thus, there was an express statement in Popov that it

was desired to control the cycle of the plunger lift. Id. at ¶ 104. As discussed

before, catchers with controllers were well known for use with single piece and

two-piece plungers as early as the 1960s. Those of skill in the art would have

understood that the controller could be used to shut in the well to release the

pressure on the sleeve and let it fall, or a controller could be used in combination

with an auto-catcher if warranted by well conditions. Id. Thus, it would have been

obvious to combine an auto-catcher with the controller of Popov. Id.

In 1999 (and in-fact decades earlier), there were only a limited number of


27

ways to initiate the fall stage of a plunger lift cycle with a continuous run two-

piece plunger. Id. at ¶ 105. One was to allow the wells upward flow rate to hold

the upper member (sleeve) in the wellhead on the separator rod until the rate

declined enough naturally for the sleeve to fall back to the bottom of the well. Id.

If it was desirable to drop the sleeve prior to the flow rate’s natural decline, a

controller was used to close the well in and allow the sleeve to fall to the bottom of

the well. Id. In wells where it was desired to hold the sleeve at the surface after the

flow rate declined past that point in which the sleeve would be held by the upward

flow alone, an auto-catcher would have been used to hold the sleeve at the surface.

Id. at ¶ 105. Auto-catchers were known to provide predictability to ensure that the

sleeve remained at the surface, regardless of the flow rate. Id.

While Popov only expressly calls out a desire to use a controller, a person of

ordinary skill in the art would have recognized that Popov’s described plunger lift

system would have been desirable to use with an auto-catcher in certain well

conditions. Id. at ¶ 106. In fact, Popov describes its system for use with wells

having low gas flow rates, which indicates the upward gas flow may not have been

sufficient to hold the sleeve on the separator rod for the necessary time period. Id.

The added predictability of using an auto-catcher and controller with the two-piece

plunger of Popov would have been beneficial for known reasons. Id.

For one, it was important at the time to ensure that the lower component


28

reached the bottom of the well before the upper component. Id. at ¶ 107. Even if

the lower member was designed to fall faster than the upper member, upward

flowing “slugs” of fluid through the center of the production tubing could impact

the lower member, causing it to fall much slower and allow the sleeve to catch up.

Id. If this happened, the cycle would not bring up any liquid.

Additionally, if the flow rate was insufficient to hold the upper section at the

surface for a sufficient time to allow at least some liquid to accumulate at the

bottom of the well, an auto-catcher would certainly have been desirable. Id. at ¶

108. It was well-known that accumulated liquid helps cushion the impact of the

sleeve and lower member, so it was desirable to allow at least some liquid to

accumulate. Id. For these reasons, a person of ordinary skill in the art would have

desired an auto-catcher in certain well conditions, including those apparently

experienced in Popov. Id.

While Patent Owner alleged during reexamination that one would not want

to combine the control system of Roach with Popov, that is simply not true. Id. at ¶

109. The only basis for that assertion was that the only reason one would desire a

catcher would be to prevent the sleeve from catching the lower member. Ex. 1014

at 160–161; Ex. 1002 at ¶ 109. However, as discussed above there were other

known reasons one of skill in the art would have desired to use a catcher and

controller with the system of Popov. Ex. 1002 at ¶ 109.


29

Moreover, even if the only purpose of an auto-catcher was to ensure that the

upper member did not catch the lower member, Patent Owner’s assumption that

the sleeve in Popov falls slower than the ball is incorrect. Id. at ¶ 110. Patent

Owner chose to assert that the ball fell faster than the sleeve because there was no

auto-catcher. Ex. 1014 at 256. According to the Patent Owner, the two

components in Popov and Burgher must then fall at “about the same time.” Id. In

stark contrast to Patent Owner’s representation to the Patent Office, Popov

describes his system as already including a delay between the time the ball

dropped and the sleeve was released to fall downhole. Ex. 1002 at ¶ 109. Popov

states that “the ball separates from the plunger (Figure 4) and drops downward.

Gas that has accumulated beneath the plunger passes through the cylindrical

opening of the plunger into the well gathering system and then to the gas pipeline.

The plunger then falls back to the lower shock absorber (Figure 5).” Ex. 1010 at 3

(emphasis added). Popov is describing the delay created by the upward formation

flow that accumulates beneath the united plunger and holds the sleeve in the

wellhead temporarily after the ball has been dislodged and the gas exits the outlet.

Ex. 1002 at ¶ 110. Thus, Popov discloses a temporary delay that could very well

allow the ball to reach the bottom first, even if the sleeve falls faster. Id.

Additionally, Burgher explains that the upward momentum of the sleeve may be

used to create a delay in dropping the sleeve after the ball begins its downward


30

descent. Id. Burgher also claims that a dart with a tail falls faster than just a ball –

indicating the slower fall speed of the lower section was the limiting factor. Id. As

such, the ball of Burgher clearly falls slower than the sleeve in Burgher as well. Id.

Thus, under Patent Owner’s reasoning Burgher must disclose a ball and sleeve

having the surface area to weight ratio characteristics from the claims. Id. And if

the ball falls slower, the auto-catcher of Roach clearly offers a method to delay the

fall of the sleeve to ensure the ball always reach the bottom prior to the sleeve. Id.

Patent Owner admitted that Burgher and Popov both teach a “restrictor” for

reducing the size of the first flow bypass when the piston is united. Ex. 1014 at

314. However, to the extent the Board finds that the term “restrictor” requires a

component of the lower member extend up into the inner passage of the sleeve,

Burgher teaches that limitation. Ex. 1002 at ¶ 111. Burgher teaches the use of a

projecting tail 18 having fins 19, which lodges in the passage of the sleeve. Ex.

1007 at 3(left):29–34. One of skill in the art would have considered the dart of

Burgher to be an alternative design to just the ball of Popov. Ex. 1002 at ¶ 111.

D. Expected Results of the Combinations

These combinations could have been made with a reasonable expectation of

success, because one of ordinary skill in the art would have recognized that the

results of the combinations are predictable. Id. at ¶ 112.

With regard to the combination of Popov and Roach, the expected result of


31

using the two piece plunger of Popov with the catcher and controller of Roach

would have the predictable results of: (1) controlling the cycle frequency as

desired; and (2) ensuring that the lower member reaches the bottom of the well

first. Id. at ¶ 113. Simply taking the catcher and controller of Roach and

superimposing it into the system of Popov would have been very simple and even

those with a rudimentary understanding of mechanical or petroleum engineering

would be able to accomplish that. Id. at ¶ 114. All of the combined elements—

Roach’s catcher and controller and the ball, sleeve, and separator rod of Burgher

and Popov—perform exactly the same function in combination. Id. at ¶ 115. As

such, the result of this combination would have been recognized by one of skill in

the art as of the effective date of the challenged patent, if not decades earlier. Id.

With regard to the combination of Popov with the dart of Burgher, Burgher

states that its ball may be replaced with a dart to ensure that the component falls

faster. Id. at ¶ 116. The exact same substitution could be made in Popov by

replacing the ball with the dart of Burgher, which would lead to the entirely

predictable result that the lower member (dart) would reach the bottom faster. Id.

E. Element-by-Element Invalidity Analysis

The application of the prior art references to each element of the Challenged

Claims is specifically set forth below. For example, for elements entirely disclosed

by Popov, the indicator “Popov (alone)” is used. For elements that may not be


32

taught by Popov alone but are taught/disclosed by Popov in view of other prior art,

the indicator “Popov in view of [Prior Art]” is used to show that the combination

of references may be required to satisfy a particular claim limitation.

1. Claim RE1

(a) A plunger lift for a well producing through an above ground well head and a production string communicating with a hydrocarbon formation, comprising [cited infra RE12(a); RE13(a); RE15(a); RE23(a); RE25; RE28(a); RE29; RE37; RE39; RE53(a); RE55(a)]1

Popov (alone): Popov teaches a two-component gas lift piston having a

cylindrical plunger that is “introduced into the tubing with a ball” which, when

reciprocating upward and downward, “periodically extracts liquid from the hole

bottom to the surface.” Ex. 1010 at 3. Figure 3 is described as a “Plunger together

with ball under gas pressure from the bottom rises upward to the well head.” Id.

at 15. Figure 1 shows the above-ground wellhead that received the Popov piston

and produced gas. Ex. 1010 at 3; see also Ex. 1002 at ¶ 118.

(b) a free piston having at least two sections, movable independently downwardly in the well, the section being united at the bottom of the well for upward movement together in the well and having an exterior seal for pushing liquid, above the piston, upwardly, wherein the sections nest together during upward movement in the well [cited infra RE12(b); RE13(a); RE15(a); RE23(a); RE28(a); RE29; RE53(a); RE55(a)]

1 These citations indicate that the same discussions also apply to later claim

limitations.


33

Popov (alone): During the re-examination of the ’637 Patent, the Patent

Owner admitted that the above limitations were met by Popov. Ex. 1014 at 312.

Popov discloses a two part ball and sleeve piston where the ball is dropped first

and mates with the sleeve at the bottom of the well. See Ex. 1010 at 3 (“The

plunger is then introduced into the tubing with a ball. . . . Lifting of the plunger

with the ball is accomplished by the force of the gas pressure at the bottom, which

at certain moments exceeds the pressure of the liquid column accumulated beneath

the plunger.”), 15–16 (Figs. 2–5). To develop a sufficient pressure differential

across the piston, there must be a sufficient seal on the exterior where the ball seats

in the sleeve. Ex. 1002 at ¶ 120. An exterior seal is also formed using the radial

rings and grooves on the Popov sleeve with the production tube wall. Id. These

seals must exist in order to carry the formation liquids up to the well head. Id.

(c) the sections comprising an upper sleeve having a passage therethrough and a lower member lodging in the passage during upward movement in the well [cited infra RE12(d); RE13(a); RE15(c); RE23(a); RE28(a); RE29; RE53(a); RE55(a)]

Popov (alone): Popov discloses a gas lift piston having two sections

comprising an upper sleeve having a passage therethrough. See Ex. 1010 at 16

(Figure 4 showing separator rod 3 in passage of sleeve 4), 3 (explaining that the

plunger 4 has a “cylindrical opening”). Popov’s lower member (i.e., the ball)

lodges in the passage during upward movement in the well as illustrated in Figures

3 and 5. Id. at 3 (“Lifting of the plunger with the ball is accomplished by the force


34

of the gas pressure at the bottom. . . .”); see also Ex. 1002 at ¶ 121.

(d) the lower member being free of a passage connecting any opposite sides of the lower member [cited infra RE12(e); RE13(a); RE15(c); RE23(a); RE28(c); RE29; RE53(a); RE55(b)]

Popov (alone): As discussed supra at claim RE1(b), Popov discloses a two-

piece plunger comprising a sleeve and ball—the ball clearly has no passages.

(e) the ratio of surface area to weight of the lower member being greater than the radio [sic] of surface area to weight of the upper member, the surface areas being surface areas effective to move the sections upon the creation of a differential pressure thereacross [cited infra RE 12(f); RE13(a); RE15(c); RE23(a); RE28(c); RE29; RE53(c); RE55(c)]

Popov (alone): As previously explained supra at Section VI.B, during

reexamination Patent Owner argued that this limitation “means that the sleeve will

fall faster in the well than the mandrel.” Ex. 1014 at 256. That ratio alone cannot

ensure that the sleeve will fall faster, because of the numerous other factors

previously discussed (e.g., drag, friction, shape). Ex. 1002 at ¶ 123. As previously

explained, the SA/W ratio disclosed in the ‘637 patent was intended to and does

ensure that the ball and sleeve remain united as they travel upwardly. Id.

It would be clear to a person of ordinary skill in the art that the ball and

sleeve remain united when rising to the surface is a direct result of the SA/W ratio

of each section – since Popov contains no mention of a physical latch or other

connection between the upper and lower section. Id. at ¶ 124. Thus, the SA/W

ratio of the ball in Popov must be greater than that of the sleeve, as the plunger


35

clearly stays united as it moves upward. Id. This is what the ‘637 patent teaches us,

and it is consistent with the basic principles of physics as understood by those of

skill in the art. Id. Because the ball and sleeve of Popov stay together as they rise,

the plunger inherently includes the SA/W ratio required by the claims. Id.

Popov in view of Burgher: During reexamination of the ‘637 patent,

Patent Owner made two assumptions when arguing that Popov and Burgher do not

teach this limitation: (1) that the ratio formula ensures that the sleeve falls faster

than the ball; and (2) that any prior art not having an auto-catcher required that the

sleeve fall slower than the ball. Ex. 1014 at 256 (“Because the weight/area of the

sleeve is greater than the weight/area of the mandrel, it means that the sleeve will

fall faster in the well than the mandrel. . . It is clear that the Russian devices, Casey

and Burgher have to make the ball fall faster than the sleeve so the ball reaches the

bottom of the well before the sleeve catches up to it.”). Based on that flawed

logic, Patent Owner asserted that the prior art, including Popov, Burgher, and

Shulyatikov, do not show this limitation because they all lack auto-catchers. Id.

However, Burgher intentionally built in a delay between the ball being dropped

and the sleeve being dropped using the upward momentum of the sleeve after the

ball is dislodged. Ex. 1002 at ¶ 125. Popov likewise discussed a delay after the ball

separated using the upward flow of formation contents. Id. Popov also taught the

desire for a controller to control the plunger cycle frequency. Id. The controller


36

could be used to close the well when necessary, thus stopping the flow rate and

allowing the sleeve to start its descent toward the bottom of the well, or for

controlling an auto-catcher. Id. As such, the sleeve of Popov is delayed from

falling by the upwardly flow gas at least for some period of time after the ball is

dislodged. Id. Thus, even if it were true that the ratio ensured the sleeve fell faster,

it is not true that prior art lacking an auto-catcher has a slower falling sleeve,

because it is clear that the well’s flow rate will also hold the sleeve on the

separator rod, thus delaying the fall of the sleeve.

Even assuming that the fall rate is absolutely determined by the SA/W ratio

(which it is not), Burgher expressly teaches that its sleeve falls faster than the ball.

Id. at ¶ 126. Burgher explains that there is a concern for the upper and the lower

member “returning in the proper order to the lower end of the lift tube preparatory

to starting another cycle of operation.” Ex. 1007 at 3(left):35–43. Fig. 9 and

accompanying text show that this problem is solved, in one embodiment, by

having its lower member being detached by a rod 25 suspended from a cable in

advance of entering the wellhead. Id. at 3(left):35–72. The momentum of the

upper end of the piston keeps it propelling upward as the lower member falls

downhole thus making a delay between the falling lower member and the falling

upper member. Burgher also suggests that the length of the rod or cable may be

adjusted to fine tune and optimize the delay. Id. at 3(left):44–51. Burgher would


37

not be concerned about this if the lower member fell faster than the upper member.

Ex. 1002 at ¶ 126. Thus, Burgher clearly shows that its sleeve falls faster. Id.

Even ignoring the effects of the SA/W ratio, the claim only requires that the

actual ratio be present, not that it have any particular effect. Id. at ¶ 127. That

being said, while Burgher does not expressly disclose the weight of the ball or

sleeve, those characteristics can be approximated by making certain

reasonable assumptions based on the drawings shown. Indeed, Patent

Owner admitted during reexamination of a continuation-in part to the

‘637 patent, U.S. Patent No. 6,467,541 (“the ‘541 patent”), that Shulyatikov

discloses a ball and sleeve two-piece plunger (shown right) and that the relative

weights of the sleeve and ball could be calculated with relative accuracy based on

the figures alone. Ex. 1006 at 122–123 (“It is not completely clear how much the

two piece plunger of Russia 171351 weighs because there is no disclosure of this

in the patent. An estimate, however, can be made by the following analysis. . . .

Everyone knows that patent drawings are not dimensioned, although the

relationships should be about right. . . ”). A general approximation of the SA/W

ratio of the ball and sleeve of Burgher can be made, assuming the objects shown in

the patent drawings are depicted relatively proportional to the actual parts. Ex.

1002 at ¶ 127. Applying the same assumptions made by Patent Owner in

determining the weight and diameters of the ball and sleeve of Shulyatikov, the


38

ball of Burgher has an exposed downward facing surface area to weight ratio of

5.2 while the sleeve has an exposed downward facing surface area to weight ratio

of 0.424. Id. at ¶¶ 128–129. Thus, the ball has a SA/W ratio twelve times greater

than that of the sleeve. These approximations, which even Patent Owner admitted

can accurately be made, are accurate within a reasonable range of error to one of

skill in the art. Id. at ¶ 130.

Even disregarding the calculations above, it would be apparent to a person

of ordinary skill in the art based on the figure of Burgher that the claimed ratio is

inherent in the ball and sleeve plunger. Id. at ¶ 131. As previously explained, the

SA/W ratio determines whether the objects will stay together as they rise in the

production tubing. Because Burgher’s ball and sleeve remain united during their

upward travel, it would be obvious to a person of ordinary skill in the art that the

ratio would be inherent in the ball and sleeve of Burgher. Id.

Popov in view of Roach and/or Burgher: Patent Owner admitted that

“Roach’s lower member evidently falls slower than the upper member. . . .” Ex.

1014 at 161. Moreover, as discussed above, Burgher clearly teaches a sleeve that

falls faster than a ball, otherwise Burgher would have had no need to create an

alternative dart design with a fin intended to increase the falling rate of the ball.

Ex. 1002 at ¶ 126. Thus, when combining the auto-catcher of Roach with the

plunger lift system of Popov, it would have been obvious that the sleeve of Popov


39

could be configured to fall faster than the ball, just as the upper member of Roach

and Burgher fell faster than the lower member. Making this modification based on

Roach and/or Burgher would have been advantageous for at least the reason

described by Patent Owner in reexamination of the ‘637 patent: If the sleeve falls

faster than the ball and the ball and sleeve inadvertently separate during upward

movement, the sleeve can catch the ball to complete the cycle. Ex. 1014 at 256–57.

(f) a separating rod for receiving the sleeve near an end of upward movement of the piston in the well and thereby dislodging the lower member from the sleeve for separating the piston sections adjacent the end of upward movement in the well, the separating rod having a lower end in the well head above ground level [cited infra RE12(g); RE13(a); RE15(c); RE28(c); RE30; RE39]

Popov (alone) or Popov in view of the state of the art: Popov discloses a

separating rod for receiving the sleeve near an end of upward movement of the

piston in the well and dislodging the lower member (i.e., ball) from the sleeve for

separating the piston sections adjacent the end of upward movement in the well.

See Ex. 1010 at 3 (discussing how the “stem-pusher” (i.e., rod) receives the

plunger and dislodges the ball from the plunger as they travel upwardly together to

the wellhead), 16 (Fig. 4 showing rod 3 separating ball 5). It appears that the end

of the separator rod is just above the plunger valve 4. Ex. 1002 at ¶ 132–133.

Patent Owner also admitted Popov “disclose[s] a rod adjacent an end of upward

movement in the well for separating the ball from the sleeve.” Ex. 1014 at 315.

Moreover, it would be understood by those having ordinary skill in the art


40

that the bottom end of the separator rod in the well head would be above the main

valve, indicated as element 4 in Figure 1, because of the general need to remove

the parts of the piston by retrieving it from the above ground well head (as

discussed infra at RE12(h)). Ex. 1002 at ¶ 133. If the end of the separator rod

were not above that valve (which is above ground level), it would be more difficult

to remove the rod from the well, as the main valve 4 on the well head could not

easily be closed because the lower end of the rod would block it from closing. Id.

Additionally, if the end of the rod were not above the main valve 4, the valve could

not be quickly closed in the event of an emergency. Id. The ability to remove the

plunger would have been required, as it was routine to inspect the plunger for wear

and replace the plunger when necessary. Id. at ¶ 134. The most plausible way to do

this based on Popov would have been, in reference to Figure 1, to: (1) close the

main valve 4 and the valve to the right of the T-Joint 3; (2) move the separator rod

attached to the clamping flange 1 upward so that the rod does not dislodge the ball

when the plunger reaches the wellhead; (3) open the valves and allow the plunger

to surface into the T-Joint 3; (4) when the ball and sleeve are in the T-Joint 3, close

the main valve 4 to trap the plunger; and (5) remove the clamping flange, separator

rod, and packing head to access the trapped ball and sleeve. Id. at ¶ 135. Under the

best design, the bottom end of the separator rod would be above the main valve 4,

otherwise the well could not be shut-in, nor the rod safely removed. Id.


41

Popov in view of Roach: This limitation also would have been obvious

based on Roach. Id. at ¶ 136. Roach discloses a separating rod (i.e., rod 53 in Figs.

1–4, 5–6) for receiving the sleeve near an end of upward movement of the piston

in the well and dislodging the lower member from the sleeve for separating the

piston sections adjacent the end of upward movement in the well. see Ex. 1011 at

5:19–39 (discussing/showing how the rod 53 receives the plunger section 1 and

dislodges the buoyancy section 2 in order to separate them). Moreover, the lower

end of the separator rod 53 is clearly above ground level, as indicated by Figs. 3–4

of Roach. Thus, to the extent Popov is found not to disclose this element, it would

have been obvious to use a separator rod above ground level as disclosed in Roach

so that the main valve could be closed and the plunger could be easily removed to

be serviced or replaced. Ex. 1002 at ¶ 136.

(g) and a device for holding the sleeve in the well head above ground level [cited infra RE12(i); RE13(b); RE37; RE39]

Popov in view of Roach: Roach clearly discloses a device for holding the

sleeve in the well head above ground level. See Ex. 1011 at Figs 4–5, 4:43–71,

5:14–19 (discussing/showing holding device 43 holding plunger section 1 in the

well head above ground level using an extended piston). Indeed, a cursory

comparison of the catcher of Roach (indicated by a red box below) as compared to

the catcher of the ‘637 patent (element 32) shows that the catchers are extremely

similar, as shown below. Ex. 1002 at ¶ 137.


42

Figure 1 (‘637 patent) Figure 3 (Roach)

Both catchers have a member (a ball 106 in the ‘637 patent and an elongated

piston in Roach) that extends into the falling path of the sleeve and prevents the

sleeve from falling downward. Id. The operation of each catcher is controlled

using a controller device. See Ex. 1011 at 4:54–70, 5:14–52 (discussing timing

wheel 40 for controlling the cycles). Roach explains that the controller helps

automate the plunger cycling on a predetermined cycle using gas pressure. Id. at

4:44–46. Thus, Roach teaches a device for holding as recited in the claims.

2. Claim 9: The plunger lift of claim 1 comprising a bumper spring for positioning near the formation for engaging and cushioning impact of one of the sections at a location adjacent an end of downward movement in the well.

Popov (alone): Popov discloses a “shock absorber” at the bottom of the

well. Ex. 1010 at 3, 8. Patent Owner conceded that Popov’s “shock absorber”

meets the limitation of a “bumper spring.” Ex. 1014 at 313 (“The Russian

References [including Popov] disclose a lower bumper or lower shock absorber”).

Popov explains that “the plunger then falls back to the lower shock absorber.” Ex.

1010 at 3. A person of ordinary skill in the art would understand the “shock

absorber” of Popov to simply be a bumper spring. Ex. 1002 at ¶ 140.


43

Popov in view of the state of the art: Additionally, placing a bumper

spring near the formation to cushion the impact of the piston would have been

obvious based on the state of the art and Popov’s own usage of a “shock absorber”,

as it was well known that the repeated impact of the plunger on at the bottom of

the well would cause it damage. Id. at ¶ 141. That this was the case is evidenced

by Casey, which teaches using a bumper spring to reduce impact damage to the

piston. Id. Indeed, during reexamination Patent Owner cited the applicability of

Popov and Casey to this limitation. Ex. 1014 at 313. Moreover, Popov discussed

the purpose of shock absorbers as “significantly improv[ing] the serviceability of

the plunger lift.” Ex. 1010 at 8. Even the ‘637 patent expressly admits that bumper

springs were well known in the prior art. Ex. 1001 at 2:26–34. Therefore, it would

have been obvious to use a bumper spring as a “shock absorber,” as it was a well-

known means of preventing damage to a plunger at the time and it was nothing

more than a simple known effective, alternative design. Ex. 1002 at ¶ 142.

3. Claim RE11: “The plunger lift of claim 1 comprising means for releasing the sleeve from the device.” [cited infra RE15(d); RE28(c)]

Popov (alone) or in view of the state of the art: Popov expressly discusses

using a special control device to control the plunger cycle. Ex. 1010 at 8; Ex. 1002

at ¶ 143. As such, Popov expressly teaches the use of a controller, which would be

the means for releasing the sleeve if used with Roach’s auto-catcher. Ex. 1002 at ¶


44

143. One of ordinary skill in the art would recognize that Popov’s suggested

controller could be used with the catcher of Roach. Id. A person of ordinary skill

in the art would have also recognized that Popov’s controller could have been any

of the controllers discussed supra at Section V. Id. at ¶ 234–235.

Popov in view of Roach: Roach discloses a controller that is the part of the

means for releasing the sleeve from the device. See Ex. 1011 at Figs. 3–6, 4:54–70,

5:14–52 (discussing/showing timing wheel 40, closing port 34, opening vent port

36, catcher piston 43, and port 35 for releasing the plunger section 1 from the

catcher); Ex. 1002 at ¶ 144. The upper member is held “until timing wheel 40 has

rotated to a position placing a notch 60, or similar actuating element, arranged at a

previously selected location on the timing wheel . . .” which causes the catcher

piston 43 to retract and release the upper member. Ex. 1011 at 5:39–43.

4. Claim RE12

(a) A plunger lift for a well . . . providing a valve for closing the production string [cited infra RE33]

Popov (alone): The preamble of claim RE12 only differs from claim RE1(a)

in that it adds a shut-in valve. Popov discloses a well head and a main closing

valve (element 4 in Figure 1 called “plunger lift valve”) for closing the production

string above ground level. Ex. 1010 at Fig. 1; Ex. 1002 at ¶ 146. In reference to

Figure 1 of Popov, when the plunger valve 4 and the two wing valves are closed,

the well is shut in and production is halted. Ex. 1002 at ¶ 146. Notably, a closing


45

of either master valve 22 in Figure 1 of the ‘647 patent has the same effect of

shutting-in the well as closing the plunger lift valve 4 of Popov. Id. Popov also

states that the disclosed plunger lift system can be used in a plunger system having

only one “main valve,” which could also be used to shut the well in. Ex. 1010 at 8.

A person of ordinary skill in the art would understand that a valve for closing the

production string is required, first for safety, but also because otherwise the

plunger could never be put into or removed from the production string. Ex. 1002 at

¶ 146. Thus, it is an inherent to use a shut-in valve, such as plunger valve 4 in

Popov. Id.

(b) a free piston having at least two sections . . . for pushing liquid, above the piston, upwardly [see discussion at RE1(b)]

(c) a first of the sections provides a first flow bypass around the first section allowing the first section to move downwardly in the well against the flow of formation products upwardly in the well and a second section of the sections provides a restrictor for reducing the size of the first flow bypass when the first and second sections are united, [cited infra RE24; RE25; RE28(c); RE29; RE39]

Popov (alone): During reexamination Patent Owner admitted that “Casey,

Burgher, and the Russian References [including Popov] each disclose an open tube

(first section) that is hollow and that allows fluid to flow through during downward

movement in the well” and that “each disclose a ball (restrictor). . . .” Ex. 1014 at

314. Moreover, the Examiner also recognized during reexamination that both

Popov and Casey taught a ball that acted as a restrictor. Ex. 1014 at 288–289.


46

Popov’s first section is a sleeve that provides a first flow bypass (i.e., the hole

through the center of the sleeve) around the sleeve allowing which allows it to

move downwardly in the well against the flow of formation products upwardly in

the well. See Ex. 1010 at 3 (“Gas . . . passes through the cylindrical opening of the

plunger into the well gathering system . . . .”). Popov also discloses a ball that

seats in the bottom of the sleeve and blocks the passage through the sleeve thus

reducing its size, as shown in Figure 3 of Popov. Id. at 15; Ex. 1002 at ¶ 149.

Popov in view of Burgher: To the extent the ball of Popov is not found to

have a restrictor, it would have been obvious to one of skill in the art to replace the

ball of Popov with the dart of Burgher (shown right) for the reasons

discussed supra at Section VII.C, if one wanted to restrict the

sleeve’s passageway further. Ex. 1002 at ¶ 150. The fin 18 of the

dart lodges in the passage of the sleeve in Burgher, which restricts

the passage in the sleeve, which is exactly how the dart would operate when used

with the sleeve of Popov. Id.

(d) the sections comprising an upper sleeve and a lower member [see discussion at claim RE1(c)]2

(e) the lower member being free of a passage connecting any opposite sides 2 Given the large number of Challenged Claims, many of which are quite lengthy,

Petitioner has cited back to previous discussions where applicable.


47

of the lower member [see discussion at RE1(d)]

(f) the ratio of surface area to weight of the lower member . . . the creation of a differential pressure thereacross [see discussion at RE1(e)]

(g) a decoupler, on the well head and above ground level, . . . allowing the sections to fall separately into the well [see discussion at RE1(f)]

(h) the decoupler being removable from the well head to provide a location wherein the piston sections jointly collect, the well head including a gas flow passage below the location so the piston sections may be removed from the well head after removing the decoupler and closing the valve [cited infra at RE33]

Popov (alone) or Popov in view of the state of the art: It is inherent that

the separator rod would have to be removed before the ball and sleeve could be

collected and removed through the top of the wellhead, because otherwise the

separator rod would continue to release the lower member or otherwise block the

members from being pulled out. Ex. 1002 at ¶ 165. Popov, like any well system,

was designed with the idea of repairing the components of the plunger after they

wear down. See Ex. 1010 at 3 (citing to the “limited lifetime of the plunger”), 14

(Fig. 1 showing a plunger lift valve 4 and two wing valves that can be closed to

shut-in the well); Ex. 1002 at ¶ 165.

The ability to remove the plunger is required, as it is routine to inspect the

plunger for wear and replace the plunger when necessary. Id. at ¶ 166. In

reference to Figure 1 of Popov, the most plausible way to remove the two-piece

plunger is to close the main valve (4) and the wing valve to the right of the T-Joint

(3). Id. at ¶ 167. Then, move the separator rod attached to the clamping flange (1)


48

upward so that the separator rod does not dislodge the ball from the sleeve when

the united plunger arrives at the surface. Id. Next, open the valves and allow the

plunger to surface into T-Joint (3). Id. When the united plunger is in the T-Joint,

close control valve (4), thus trapping the sleeve and ball in the T-Joint. Next, close

the valve to the right of the T-Joint. Id. Then, remove the clamping flange and

packing head to access the ball and sleeve trapped in the T-Joint. Id. The outlet in

the top right of the wellhead, just beneath the clamping flange, and the wing valves

all have a passage below where the ball and sleeve would be collected. A person of

ordinary skill in the art would understand that the well has to be shut-in to safely

remove a plunger, otherwise the gas pressure would constitute a serious safety

hazard to the person removing the plunger. Id. That the plunger would need to be

installed in the well and at some point replaced due to wear is nothing more than

common sense, as a person of ordinary skill in the art would never design a

plunger that cannot be placed into the well or extracted from the well. Id.

(i) a device on the well head for holding a first of the sections and then releasing the first section in response to a signal [see discussion at RE1(g)] 5. Claim RE13

(a) A plunger lift for a well producing through a production string communicating with a hydrocarbon formation, comprising [see discussion at RE1(a)] a free piston having at least an upper section and a lower section [see discussion at RE1(c)] movable independently . . . for pushing liquid, above the piston, upwardly [see discussion at RE1(b)], the lower section being free of a passage connecting any opposite side of


49

the lower section [see discussion at RE1(d)], the ratio of surface area to weight of the lower section . . . effective to move the sections upon the creations of a differential pressure thereacross; [see discussion at RE1(e)] means for separating the sections adjacent an end of upward movement in the well [see discussion at RE1(f)];

(b) a device for holding the upper section adjacent the end of upward movement in the well [see discussion at RE1(e) ] for a time at least sufficient to allow the lower section to fall to the bottom of the well before the upper section reaches the bottom of the well [see discussion at RE11] [cited infra at RE15(h)]

Popov in view of Roach: As discussed in the section on claim construction,

this claim element is a means-plus-function that has two functions: (1) holding the

upper section (2) for a sufficient time to let the lower section fall to the bottom

before the upper section. Ex. 1002 at ¶ 86. The first function is accomplished by

the catcher as set forth supra at claim RE1(f). However, the latter function is

carried out by a controller, as set forth supra at claim RE11.

While Roach does not expressly state that the holding device would hold the

upper section for enough time to allow the lower section to fall to the bottom of

the well before the upper section, this is an inherent teaching as that system would

not operate properly if the sleeve caught the ball before the ball reaches the bottom

of the well. Ex. 1002 at ¶ 186. This would short-circuit the plunger cycle and no

liquid would be carried to the surface. Id. Thus, when the catcher of Roach is

combined with Popov, this element is taught. Id. Popov also taught delaying the

sleeve’s fall.


50

6. Claim RE15

(a) A plunger lift for a well producing through a production string communicating with a hydrocarbon formation and through a well head above ground level, comprising [see discussion at RE1(a)] a free piston . . . having an exterior seal for pushing liquid above the piston, upwardly [see discussion at RE1(b)]

(b) The lower section being configured to move upwardly upon exposure to a predetermined pressure differential before the upper section moves [cited infra RE53(c); RE55(c)]

Popov (alone): This limitation is inherent in Popov, because the ball and

sleeve stay united as they rise in the well together. Ex. 1002 ¶ 193. If the upper

section moved upwardly before the lower section, the lower section would always

separate from the upper section and a cycle could never be completed. Id.

Moreover, as stated supra at claim RE1(e), the surface area to weight ratio formula

disclosed in the specification was intended to ensure that the ball and sleeve stay

together during upward movement and that ratio is inherent in Popov and Burgher

as their sections stay united, thus this limitation is met. Id. at ¶ 194.

(c) the sections comprising an upper sleeve and a lower member [see discussion at RE1(c)], the lower member being free of a passage connecting opposite sides of the lower member [see discussion at RE1(d)], the ratio of surface area to weight of the lower member being greater . . . effective to move the sections upon the creation of a differential pressure thereacross [see discussion at RE1(e)] a decoupler for separating . . . allowing the sections to fall separately into the well [see discussion at RE1(f)]; a device for delaying downward movement . . . before the upper section reaches the position [see discussion at RE13(b)];

(d) a controller for varying duration of the delay [see discussion at RE11] [cited infra RE28(c)].


51

Popov (alone) or Popov in view of the state of the art: The means for

releasing discussed at claim RE11 is the controller discussed in Roach and Popov

that varies the duration of the delay. Ex. 1002 at ¶ 215.

Additionally, those of skill in the art would have understood that any

generally known controller configuration, such as those discussed supra at Section

V, could be used as the desired controller with Roach’s auto-catcher, in which case

the controller would act as the means for varying the duration. Id. at ¶ 216.

Popov in view of Roach and/or the state of the art: Roach discloses a

controller and auto-catcher for varying the duration of the delay of each cycle. See

Ex. 1011 at 5:14–65 (describing how the catcher engages the plunger), 5:61–66

(describing how the controller allows the plunger to be released by the catcher). In

particular, when the timing wheel 40 is actuated, the weight arm 39 causes pilot

valve to close and opening vent valve 36, thereby relieving the gas pressure on the

catch piston, causing the catch piston to release the sleeve. Id. at 5:39–52. The

closing of the pilot valve, serves as a signal to release the pressure on the catch

piston which in turn releases the sleeve to fall back down hole. Roach discusses

selecting a “suitable timing interval in relation to the fluid flow and pressure

conditions in the well.” Id. at 5:61-63. Those of skill in the art understand that

fluid flow and pressure conditions in a well change. Ex. 1002 at ¶ 217. As such,

those of skill in the art would understand that the timing wheel controller of Roach


52

would need to be changed to suit those changing conditions. Id. Those of skill in

the art would understand based on the statements by Roach about varying well

conditions that other well-known timing or control mechanisms could be used to

vary the timing interval, such as those discussed supra Section V. Id. Any of these

known methods could have been used in lieu of the timing wheel of Roach, or the

notch in the timing wheel of Roach could have been made longer or shorter to

change the variation based on well conditions. Id.

7. Claim RE23

(a) A method of lifting liquids from a gas well producing gaseous hydrocarbons from a formation [see discussion at RE1(a)] with a plunger lift having a multipart piston comprising an upper sleeve having a passage therethrough and a lower member sized to close the passage during upward movement of the sleeve [see discussion at RE1(c)] and a lower member, the lower member being free of a passage connecting any opposite sides of the lower member [see discussion at RE1(d)], and having a ratio of surface area to weight greater than the ratio . . . upon the creation of a differential pressure thereacross [see discussion at RE1(e)] comprising dropping the sleeve and lower member independently in the well . . . thereby pushing liquid upwardly with the piston [see discussion at RE 1(b)]

(b) wherein the dropping step comprises repeatedly dropping a first part of the piston into the well, pausing for a time period, then dropping a second part of the piston into the well and varying the time period between successive drops

Popov (alone) or in view of the state of the art: Popov discusses having

some delay after the ball has dropped before the sleeve drops. See Ex. 1010 at 3

(“[T]he ball separates from the plunger (Figure 4) and drops downward. Gas that


53

has accumulated beneath the plunger passes through the cylindrical opening of the

plunger into the well gathering system and then to the gas pipeline. The plunger

then falls back to the lower shock absorber (Figure 5).”); Ex. 1002 at ¶ 232. Thus,

Popov teaches a “pause” before dropping the sleeve which is created by the

upwardly flowing gas maintaining the sleeve on the separator rod for some period

of time. Ex. 1002 at ¶ 232. Moreover, the delay of Popov would have been

influenced by well operating conditions such as flow rate and pressure and

therefore the time between successive drops would vary based on the operating

conditions. Id. Popov also teaches that the plunger is dropped “periodically.” Ex.

1010 at 3. Thus, Popov teaches that the dropping step is repeated, otherwise it

would not be “periodic”. Ex. 1002 at ¶ 232

On top of having some delay between the dropping of the ball and sleeve

naturally, Popov has an express teaching to use a controller to control the cycling.

See id. at 8 (discussing special control device to control cycling); Ex. 1002 at ¶

233. Thus, with regard to the “pausing,” Popov teaches that a control apparatus can

be used to control the cycle of the plunger, which implies to those of skill in the

art, taking into account operating conditions which necessarily change, that the

operating cycles set by the controller will change. Id. In particular, those of skill in

the art would understand to adjust the timing of the cycles based on operating

conditions of the well, which Popov expressly alluded to when he said the


54

controller would “permit control of the operating cycle of the plunger lift.” Id.

Popov in view of Roach and/or the state of the art: Additionally, when

Roach’s auto-catcher and controller is combined with Popov, it would allow for

the “pause” and varying of time as discussed here. Ex. 1002 at ¶ 234. Roach

teaches that the two piece plunger cycle is automatic based on a predetermined

timing cycle. See Ex. 1011 at 4:44–46 (“FIGS. 3 to 6 illustrate apparatus for

rendering automatic the return of the rabbit [plunger] to the bottom of the well on a

predetermined timing cycle.”). Thus, the first and second parts are repeatedly

dropped. Ex. 1002 at ¶ 234. The “pause” in Roach is created using an automated

catcher, which holds the second section in the well head to allow the first section

to reach the bottom first. Ex. 1011 at 5:14-40. While Roach does not expressly

teach “varying the time period between successive drops,” it does teach using a

timer dial to control the timing of the cycling of the plunger system. Id. at 5:39–46.

That the timer dial could be adjusted to change the cycling time (i.e., change the

length of the “pause” between drops) would be inherently understood by those

having ordinary skill in the art. Ex. 1002 at ¶ 235. Even if the actual timing wheel

used by Roach is not easily changeable, those of skill in the art would understand

varying the duration between drops, based on well conditions, could be

accomplished by other timing or control mechanisms, such as those discussed

supra at Section V. Id.


55

8. Claim 24: The method of claim 23 wherein the dropping step occurs when gas is flowing upwardly in the well. [see discussion at RE 12(c); see also Ex. 1002 at ¶ 236]

9. Claim 25: The method of claim 23 wherein the well includes a well head and wherein the dropping step occurs when gas is flowing upwardly in the well and exiting through the well head. [see discussion at RE1(a); RE12(c); see also Ex. 1002 at ¶ 237]

10. Claim RE28

(a) A plunger lift for a well producing through a production string communicating with a hydrocarbon formation, comprising [see discussion at RE 1(a)] a free piston having at least upper and lower sections [see discussion at RE1(c)], movable independently downwardly in the well, . . . for pushing liquid, above the piston, upwardly [see discussion at RE 1(b)]

(b) the upper section comprising a sleeve having means on the exterior of the sleeve for minimizing fluid bypass on the outside of the sleeve and a passage allowing formation contents to flow through the sleeve when the sleeve is falling into the well and

Popov (alone): Patent Owner admitted that the prior art anticipates this

limitation. “Casey, Burgher, and the Russian References [including Popov] each

disclose a tube that has exterior means to minimize fluid bypass . . . .” Ex. 1013 at

322. Popov teaches that its upper plunger section is a sleeve with a through-flow

passage that allows formation contents to flow through the sleeve as it falls. See

Ex. 1010 at 3 (discussing “cylindrical opening” in sleeve), 16 (Fig. 4 showing

axial passage through the sleeve). Popov in Figures 1 and 2 shows the upper

sleeve that has sealing elements on the outside. Ex. 1002 at ¶ 241. These exterior

elements for minimizing fluid bypass are radial rings having a larger diameter than


56

other portions of the sleeve. Id. The sleeve can fall through the fluid on the way

down but unite at the bottom with the ball to create a seal. Id. Additionally, it is

clear based on the construction of the plunger in Popov that: (1) the exterior of the

sleeve must minimize the fluid bypass, otherwise it would be incapable of carrying

liquid accumulation out of the well; and (2) the sleeve has a large passage through

its center to allow gas flow through the sleeve when it is falling. Id. at ¶ 241.

(c) the lower section includes a restrictor for reducing flow through the passage when the sections unite at the bottom of the well [see discussion at RE12(c)], the sleeve having a first ratio of surface area to weight . . . a surface area effective to move the lower section upon the creation of a differential pressure thereacross [see discussion at RE1(e)], the lower section being free of a passage connecting any opposite sides of the lower section [see discussion at RE 1(d)] a decoupler for separating the upper and lower sections at a location adjacent upward movement in the well and allowing the lower section to fall into the well [see discussion at RE 1(f)]; a device for holding the upper section adjacent the location and, after a time period, dropping the upper section into the well [see discussion at RE1(g); RE 11; and Ex. 1002 at ¶ 258]; and a controller for varying the time period [see discussion at RE 15(d)]

11. Claim RE29: A plunger lift for a well producing through . . . a well head [see discussion at RE 1(a)], comprising a free piston having at least first upper and second lower sections [see discussion at RE1(c)], moveable independently . . . for pushing liquid above the piston, upwardly [see discussion at RE1(b)], the upper section comprising a sleeve . . . a member filling the passage during upward movement [see discussion at RE 12(c)], the member being free of a passage connecting any opposite sides of the member [see discussion at RE 1(d)], the ratio of surface area to weight of the lower section being greater than the ratio of surface area to weight of the upper section [see discussion at RE 1(e)].

12. Claim RE30: The plunger lift of claim 29 wherein the well head is above ground level and comprises a decoupler for separating the


57

free piston into separate sections, the decoupler comprising a separating rod having a lower end in the well head above ground level [see discussion at RE 1(f)].

13. Claim RE33: The plunger lift of claim 1 wherein the well produces through the head providing a valve closing the production string, [see discussion at RE12(a)] the separating rod being removable from . . . after removing the separating rod and closing the valve [see discussion at RE12(h)].

14. Claim RE37: The plunger lift of claim 13 wherein the well produces through a well head above ground level [see discussion at RE1(a)] and the device, on the well head, holds the upper section above ground level [see discussion at RE1(g)].

15. Claim RE39: The plunger lift of claim 13 wherein the well produces through a well head above ground level [see discussion at RE1(a)], the upper section comprises a sleeve having a passage therethrough and the lower section nests in the passage during upward movement in the well [see discussion at RE1(c)] and the separating means comprises a rod . . . dislodging the lower section from the upper section [see discussion at RE1(f)] and wherein the device holds the sleeve in the well head above ground level [see discussion at RE1(g)].

16. Claim RE42: The plunger lift of claim 15 wherein the sleeve provides a recess on a side thereof and the device comprises a retractable detent for extending into the recess and the [sic] thereby holding the sleeve.

Popov in view of Roach: As illustrated in Figures 2–5 of

Popov, the sleeve clearly has recesses along its outer surface (indicated

by arrows to the right), which are created by changes in diameter of the

sleeve at various points. Ex. 1002 at ¶ 296. When using Popov with an auto-

catcher, the auto-catcher would necessarily extend into these recesses to hold the

sleeve. Id. For example, Roach discloses a catching device D that comprises a


58

retractable detent for extending against the side of the sleeve and thereby holding

the sleeve. See Ex. 1011 at 4:66–71, 5:14–19, Figs. 4–5 (discussing/showing

catcher piston 43 extending against the lower portion of plunger section 1). As

shown in Figure 1 of Roach, the upper component has a rigid sealing element 13

that comprises the outer most circumference of the upper component. Ex. 1002 at ¶

296. The nose portion 5 and everything beneath it is a recess as compared to the

sealing element 13. Id. As illustrated in Figures 4–5 and explained at 5:14–19 of

Roach, the catcher 43 grips the upper section by the nose portion 5 just beneath the

sealing element 13 using a retractable detent. Thus, Roach discloses a retractable

detent that extends into a recess of a sleeve. When using that catcher with Popov, it

would also catch the sleeve by one of the identified recesses in Popov’s sleeve. Ex.

1002 at ¶ 296.

17. Claim RE53

(a) A plunger lift for a well producing through a production string communicating with a hydrocarbon formation [see discussion at RE1(a)] comprising a free piston having an upper sleeve and a lower imperforate member [see discussion at RE1(c)], movable independently downwardly in the well, . . . for pushing liquid, above the piston, upwardly [see RE1(b)],

The “lower imperforate member” limitation (underlined above) is simply

another way of saying that the lower member has no passages, which was

discussed in detail supra at claim RE1(d). Ex. 1002 at ¶ 298.

(b) each of the upper sleeve and lower member providing a downwardly


59

facing cross-sectional area that is insufficient to move the section upwardly in response to gas flow emitting from the formation and [cited infra RE55(c)]

Popov (alone): Patent Owner admitted that Burgher and Popov “teach that

the tube and ball must unite before upward movement of tube or ball occurs.” Ex.

1014 at 317. Popov expressly informs us that the ball and sleeve are dropped

while accumulated gas is still being produced: “As soon as the lower end of the

plunger during its ascent is level with the end of the stem-pusher, the ball separates

from the plunger (Figure 4) and drops downward. Gas that has accumulated

beneath the plunger passes through the cylindrical opening of the plunger into the

well gathering system and then to the gas pipeline. The plunger then falls back to

the lower shock absorber (Figure 5).” Ex. 1010 at 3. Moreover, It is well known

that two-piece plungers are designed to fall separately but then seal together at the

bottom of the well so a pressure differential can build up to push the united piston

upwards, otherwise, the multipart gas lift pistons would not function. Ex. 1002 at

¶ 303. If there was no flow when the sleeve and ball were dropped, it would defeat

the entire purpose of using a two-piece plunger (i.e., to allow plunger cycling to

occur while gas is flowing). Id.

(c) wherein the relationship between the sleeve and lower member is such that the lower member moves upwardly easier than the sleeve at a given pressure differential [see discussion at RE15(b)], the ratio of surface area to weight of the lower member being greater than the ratio of surface area to weight of the sleeve [see discussion at RE1(e)].


60

18. Claim RE55

(a) A plunger lift for a well producing through a production string communicating with a hydrocarbon formation [see discussion at RE1(a)], comprising a free piston having an upper sleeve and a lower member [see discussion at RE1(c)], moveable independently. . . and having an exterior seal for pushing liquid, above the piston, upwardly [see discussion at RE1(b)],

(b) the lower member providing an exterior establishing with the production string an exclusive flow path for formation products past the lower member during downward movement in the well;

Popov (alone): This limitation is simply a different way of saying that the

lower member has no passages extending from one side of the member to another.

Ex. 1002 at ¶ 319. When a lower member in the shape of a ball (e.g., the ball from

Burgher, Casey, or Popov) falls downwardly, there is obviously an exclusive flow

path between the exterior of the ball and the production tubing because the ball has

no passages. Id. at ¶ 320.

(c) each of the upper sleeve and lower member providing a downwardly facing cross-sectional area that is insufficient to move the section upwardly in response to gas flow emitting from the formation [see discussion at RE53(b)] and wherein the relationship between the sleeve and lower member is such that the lower member moves upwardly easier than the sleeve at a given pressure differential [see discussion at RE15(b)], the ratio of surface area to weight of the lower member being greater than the ratio of surface area to weight of the sleeve [see discussion at RE1(e)].

VIII. CONCLUSION

For the foregoing reasons, Petitioner respectfully requests that trial be

instituted and that the Challenged Claims of the ‘637 Patent be cancelled.


61

Dated: November 4, 2014 Respectfully submitted, / Keith Rutherford / Keith Rutherford Registration No. 36,262 Counsel for Petitioner

CERTIFICATE OF SERVICE

I hereby certify that on this 4th day of November, 2014, a copy of this PETITION

FOR INTER PARTES REVIEW, Petitioner’s Exhibits 1001–1021, and

Petitioner’s Exhibit List, were served by Federal Express on the following

correspondence address of record for patent owner, pursuant to 37 C.F.R. §

42.105(a):

Guy E. Matthews C. Vernon Lawson Matthews, Lawson, McCutcheon & Joseph, PLLC 2000 Bering Drive Suite 700 Houston, Texas 77057 Joseph D. Lechtenberger Winston & Strawn LLP 1111 Louisiana Street, Suite 2500 Houston, Texas 77002-5242

/ Keith Rutherford / Keith Rutherford Registration No. 36,262 Counsel for Petitioner

Petitioner’s Exhibit List U.S. Patent No. 6,209,637

Exhibit No. Description

1001

U.S. Patent No. 6,209,637 to Wells

1002

Declaration of David Cosby, P.E.

1003

U.S. Patent No. 6,467,541 to Wells

1004

Prosecution File History, U.S. Patent Application 09/630,255 (U.S. Patent No. 6,467,541)

1005

Prosecution File History, U.S. Patent Application 09/312,737 (U.S. Patent No. 6,209,637

1006

Excerpts from Reexamination File History, Reexamination Control Number 90/007,598 (U.S. Patent No. 6,467,541)

1007

U.S. Patent No. 2,001,012 to Burgher

1008

U.S. Patent No. 2,001,552 to Scott

1009

U.S. Patent No. 3,095,819 to Brown

1010

Experience in Introducing Plunger Lift at Fields of the Ukhta Complex, A.A. Popov, Gazovoe delo, No. 9, p. 23-26 (1968)

1011

U.S. Patent No. 3,329,211 to Roach

1012 Phillips World Oil, How to Optimize Production from Plunger Lift Systems (April 1998)

1013 Excerpts from Reexamination File History, Reexamination Control Number 90/007,597 (U.S. Patent No. 6,209,637)

1014 U.S. Patent No. 6,148,923 to Casey

Exhibit No. Description

1015 U.S. Patent No. 2,013,111 to Scott

1016 U.S. Patent No. 3,095,819 to Brown

1017 Russian Patent No. 171351

1018 Russian Patent No. 182634

1019 U.S. Patent No. 2,676,547 to Knox

1020 U.S. Patent No. 4,898,235 to Enright

1021 Integrated Production Services, Inc.’s Infringement Contentions

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