[00:00:03] Speaker 03:
Our next case is Baker Hughes, Orfield again versus Packard plus Energy.

[00:00:08] Speaker 03:
2018-1501, and we'll hear from Mr. Robinson.

[00:00:18] Speaker 01:
Different team.

[00:00:19] Speaker 01:
Your Honor, may I bring the water to the?

[00:00:21] Speaker 03:
You may.

[00:00:22] Speaker 04:
Great.

[00:00:22] Speaker 04:
Thank you.

[00:00:24] Speaker 04:
I never have it on the bench.

[00:00:25] Speaker 04:
Make sure it's far from my waving hands.

[00:00:33] Speaker 01:
Good morning, Your Honors.

[00:00:34] Speaker 01:
May it please the court?

[00:00:38] Speaker 01:
The board's decision in this case is infected by two clearly erroneous claim constructions that are reviewed de novo.

[00:00:45] Speaker 04:
Explain something to me, something basic to me, OK?

[00:00:49] Speaker 04:
The key argument seems to be whether scenes would run, if I may, vertically or horizontally.

[00:00:57] Speaker 04:
That is, up and down the well bore,

[00:01:03] Speaker 04:
around the shaft.

[00:01:06] Speaker 04:
Is that a fair statement?

[00:01:09] Speaker 01:
I think it's fair to say that that's what the board and Packers Plus is focused on.

[00:01:13] Speaker 01:
I think it mistakes the key issues here.

[00:01:17] Speaker 04:
Well, I'm asking this question, OK?

[00:01:23] Speaker 04:
And it's probably more directed to your opposing counsel, but they'll be able to answer it too, for me.

[00:01:29] Speaker 04:
And it's sort of a factual question.

[00:01:32] Speaker 04:
From the description of the invention,

[00:01:34] Speaker 04:
You're going through layers of, let's say, shale, and then something else, and then mud, and so on.

[00:01:46] Speaker 04:
And the concern is to keep the material in one layer from leaching down into the other layer.

[00:01:56] Speaker 04:
Is that not correct?

[00:01:58] Speaker 01:
So the concern is to?

[00:02:00] Speaker 01:
That's why you're expanding.

[00:02:04] Speaker 01:
Exactly.

[00:02:04] Speaker 01:
The concern is to stop leakage across that seal.

[00:02:10] Speaker 04:
So if you're in a layer, and my hands are about a foot apart, if you're in a layer of oil shell and you drill a hole through it, doesn't the material in the oil shell continue to flow around that hole?

[00:02:31] Speaker 04:
What I'm saying is a horizontal seam would be irrelevant.

[00:02:36] Speaker 01:
So certainly the discussion in the prosecution history is towards longitudinal flow.

[00:02:42] Speaker 01:
The primary purpose of that seal is to seal the annulus around the tubing within the borehole wall.

[00:02:50] Speaker 01:
First, the idea that that can only be longitudinal is incorrect.

[00:02:55] Speaker 01:
So Dr. Howard Packers Plus's expert has admitted that flow between formations can be across a borehole, especially now that there is directional drilling, horizontal wells are commonplace.

[00:03:08] Speaker 01:
So at appendix 1361 through 1364, Dr. Howard admits in testimony that that channeling that he focuses on can, in fact, go across a well bore.

[00:03:20] Speaker 01:
The second thing is that Mr. Cox, Baker Hughes's expert, has explained that circumferential seams, grooves or channels as the board termed them in its construction, can indeed lead to that longitudinal channeling or leakage across the seal.

[00:03:37] Speaker 01:
And so even those circumferential grooves can lead to longitudinal channeling.

[00:03:43] Speaker 03:
Council, why don't you get to the major issue, which is whether Thompson

[00:03:48] Speaker 03:
really discloses the seamless channel of the claim?

[00:03:55] Speaker 01:
Certainly, Your Honor.

[00:03:55] Speaker 01:
So the primary findings, the board found that the Valleys 24 in Thompson's Figure 1 embodiment, and that's the embodiment of Thompson on which the board relied, that those Valleys 24 are not seams based on the erroneous construction that only longitudinal channels would be considered seams.

[00:04:16] Speaker 01:
When that falls away, the primary findings under the proper construction, the primary findings have no basis.

[00:04:23] Speaker 01:
Their alternative finding is that the Figure 1 embodiment could have only one band.

[00:04:31] Speaker 01:
Well, first of all, that's not supported by substantial evidence.

[00:04:34] Speaker 01:
But an easier question is that it is legal error for what the board relied on for that finding.

[00:04:41] Speaker 01:
In particular, the description of the Figure 1 embodiment never says

[00:04:46] Speaker 01:
that Formation 20 can have only one band.

[00:04:48] Speaker 01:
It's nowhere in that description of Figure 1.

[00:04:51] Speaker 01:
Instead, the board had to look to a single sentence in Column 2 of Thompson about Line 51 that says the formation can have one or more band.

[00:05:02] Speaker 01:
Now, in isolation, it's tempting to read those two things together.

[00:05:09] Speaker 01:
But when you read Thompson in context, it actually discloses a specific embodiment, Figure 2,

[00:05:15] Speaker 01:
that has a single swellable band, 36.

[00:05:17] Speaker 01:
And that band, in fact, has grooves that a posita would recognize to be seams.

[00:05:24] Speaker 04:
Let me ask you about sealing the well bark from said swelling.

[00:05:28] Speaker 04:
The spec provides several examples where expansion of the tubular stand occurs prior to sealing.

[00:05:37] Speaker 04:
For instance, it provides the casing or liner can be expanded with a swage to reduce the volume of the annular space around the casing or liner that the rubber sleeve would have to bridge.

[00:05:49] Speaker 04:
That's in the 505 column one, lines 49 to 52.

[00:05:57] Speaker 04:
Or the casing or liner can also be expanded with a swage preferably prior to the onset of significant jacket swelling.

[00:06:07] Speaker 04:
explaining that figure 4 shows a swage schematically illustrated as 22, can expand the string before the covering has finished swelling.

[00:06:18] Speaker 04:
And while voids such as 24 and 2 still exist, why don't those disclosures defeat your disclaimer argument?

[00:06:25] Speaker 01:
Well, Your Honor, because at column 2, beginning at about line 30, depending on the dimensions of the wellbore and the covering,

[00:06:34] Speaker 01:
The annular space could be sealed by swelling of the covering without physical expansion of the string.

[00:06:40] Speaker 01:
Could be.

[00:06:41] Speaker 01:
Could be.

[00:06:41] Speaker 01:
It explicitly discloses, which Thompson does not do.

[00:06:44] Speaker 01:
It explicitly says you can create a seal without expansion.

[00:06:47] Speaker 01:
Now, fundamentally, the record bears out that there is a limited number of options of ways to create this seal.

[00:06:54] Speaker 01:
The prior art that was distinguished during prosecution expanded the pipe.

[00:06:58] Speaker 01:
And then the elastomer swelled to fill the gap because the expansion by itself wasn't enough.

[00:07:05] Speaker 01:
The alternative disclosed in the 505 is creating that seal by swelling alone.

[00:07:11] Speaker 01:
And then that seal, once done, can either be done without any expansion at all or expansion can occur after the seal has been formed.

[00:07:20] Speaker 01:
Now, that's a limited number of options.

[00:07:24] Speaker 01:
And the board essentially neglected that third option in its decision.

[00:07:28] Speaker 01:
It said, that is possible, but we don't like it because of claims three and four.

[00:07:32] Speaker 01:
And they said that they didn't like it because they concluded that claims three and four would not convey to a person of ordinary skill in the art that that third possibility was in fact a possibility.

[00:07:43] Speaker 01:
The problem with that finding is nobody testified to that.

[00:07:47] Speaker 01:
Dr. Hauck didn't address claims three and four.

[00:07:49] Speaker 01:
He didn't say that a posita wouldn't have understood from those that that third possibility was, in fact, a possibility.

[00:07:55] Speaker 01:
Let me ask you a housekeeping question.

[00:07:58] Speaker 04:
If we disagree with you on both your claim construction arguments, are your remaining unpatentability challenges moot?

[00:08:10] Speaker 04:
And if not, which arguments survived past claim construction?

[00:08:13] Speaker 01:
So no, Your Honor, even under the claim construction that the board adopted, the testimony of Mr. Cox, Baker uses expert, that was not responded to by Dr. Hout, is that the circumferential grooves in Thompson, which

[00:08:35] Speaker 01:
The board did not say would not be present in its primary finding.

[00:08:38] Speaker 01:
Those circumferential grooves, valleys 24 in the figure 1 embodiment, would permit longitudinal channeling around that seal.

[00:08:48] Speaker 01:
And that testimony from Mr. Cox can be found at appendix

[00:09:08] Speaker 03:
Sometimes paper is better.

[00:09:11] Speaker 01:
I'm sorry?

[00:09:11] Speaker 03:
Sometimes paper is better.

[00:09:15] Speaker 01:
Some lessons are learned the hard way, too.

[00:09:18] Speaker 01:
I believe it's 1229 to 1231.

[00:09:19] Speaker 01:
But let me briefly confirm here.

[00:09:28] Speaker 01:
It is 1229.

[00:09:39] Speaker 01:
1242 to 1244.

[00:09:44] Speaker 01:
So Mr. Cox explained that even though certain differential brews with values 24 would permit longitudinal channeling, to the extent that Packers Plus' expert Dr. Howitz says anything else, it is on its face conclusory.

[00:10:01] Speaker 01:
It offers no explanation whatsoever.

[00:10:03] Speaker 04:
While we're talking about evidence, in the blue brief at 52,

[00:10:07] Speaker 04:
You say that a person of skill wouldn't necessarily understand the single reference to drill pipe in Thompson to refer to expandable drill pipe rather than drill pipe that cannot be mechanically expanded.

[00:10:20] Speaker 04:
But you don't cite to anything, for example, your expert declaration.

[00:10:28] Speaker 01:
Your Honor, what that refers to is the, or what that depends or follows from, is the patent that's cited earlier in that paragraph, Your Honor.

[00:10:37] Speaker 01:
And it was addressed.

[00:10:39] Speaker 01:
I don't have the site right in front of me, but I can find it on my rebuttal and bring it back to you.

[00:10:42] Speaker 01:
It was addressed by the expert in below that that patent in fact discloses expandable drill pipe and did not present expandable drill pipe as being its new invention.

[00:10:53] Speaker 01:
So expandable drill pipe was known and is consistent with Thompson's disclosure in every single embodiment that its pipe is in fact expandable and expanded before the polymer swells.

[00:11:13] Speaker 01:
See that I'm in my rebuttal time, so I'll briefly conclude and then sit down, unless your owners have any other questions.

[00:11:18] Speaker 01:
Ultimately, the claim constructions are clearly in error.

[00:11:23] Speaker 01:
Seamless means no seams.

[00:11:25] Speaker 01:
Dr. Howard Baker, who is Packers Plus's expert, agreed with that in his deposition.

[00:11:32] Speaker 01:
Nobody has argued that there was a redefinition of the term.

[00:11:35] Speaker 01:
Nobody has argued that there was a disclaimer of the term.

[00:11:38] Speaker 01:
And nobody has argued that the plain meaning of the term is somehow inconsistent

[00:11:42] Speaker 01:
with its use in the 505 patent or in the prosecution history.

[00:11:49] Speaker 02:
Might have been better if the word seamless had been discussed in the written description in a little more detail, because it doesn't really appear anywhere except in the claim.

[00:12:02] Speaker 01:
So what it does describe, Your Honor, is a single annular covering without seams.

[00:12:07] Speaker 01:
And so while it doesn't necessarily go into a lot of detail, that statement

[00:12:11] Speaker 01:
combined with a drawing that shows a single annular covering without any grooves, was understood.

[00:12:22] Speaker 03:
We will save the remainder of your time for you.

[00:12:24] Speaker 03:
Thank you.

[00:12:25] Speaker 03:
Mr. Koreshi.

[00:12:33] Speaker 00:
May I please report?

[00:12:36] Speaker 00:
The whole point of the 505 pad

[00:12:38] Speaker 00:
is to prevent channeling of fluid from one zone to the other.

[00:12:42] Speaker 00:
That's brought out in the background of the patent.

[00:12:45] Speaker 00:
And then at the end of the detailed description, it says, the present invention offers the advantages of easy deployment prevention of channeling due to the bonded mounting of the covering.

[00:12:55] Speaker 00:
Judge Lynn, you're right.

[00:12:56] Speaker 00:
The word seamless does not appear anywhere in the specification other than in claim one.

[00:13:02] Speaker 00:
The word seam does appear.

[00:13:04] Speaker 00:
And that's at the bottom of column two, where it says,

[00:13:06] Speaker 00:
Preferably, when bonded, it is a single annular shape with no seams that can allow channeling.

[00:13:13] Speaker 00:
So in the specification and in the file history, seams is tied to channeling.

[00:13:18] Speaker 00:
There is no description whatsoever in the 505 panel.

[00:13:21] Speaker 03:
There would almost seem to be a distinction without a difference.

[00:13:27] Speaker 03:
No seams versus seamless.

[00:13:31] Speaker 00:
Fair enough, Your Honor.

[00:13:32] Speaker 00:
I agree.

[00:13:33] Speaker 00:
And that's why I'm saying even though the word seamless doesn't appear in the specification, the word no seams does appear.

[00:13:38] Speaker 00:
And it appears in the context of channeling, which the 505 patent is trying to prevent.

[00:13:44] Speaker 04:
You sort of rushed past, but I asked your opposing counsel at the start about layers of material, shale, cleachy.

[00:13:57] Speaker 04:
I think you have that in Texas.

[00:14:00] Speaker 04:
and so on, and that my understanding was that the patent was devoted to keeping leaching from one area into another area.

[00:14:10] Speaker 04:
And his response was horizontal drilling, among other things.

[00:14:15] Speaker 04:
And I thought, gee, yeah, maybe, except even in horizontal drilling, if the pipe is going

[00:14:29] Speaker 04:
horizontally through a layer, it's still running, the fluid or whatever is still running along the length of the pipe as opposed to going around it.

[00:14:45] Speaker 00:
So this is in the context, the 505 pen is in the context of sealing liner against the bare borehole.

[00:14:53] Speaker 00:
And so in the prior art, as the 505 pen talks about, it was done with cementing.

[00:14:58] Speaker 00:
And in the 505 patent, you're doing with swelling.

[00:15:01] Speaker 00:
The issue is when you have a horizontal borehole, let's say, and you want to do multi-stage fracking, you want to frack different zones, as they say in the art, at different times, you need to set off those zones so the fluid doesn't leak from one zone to the other.

[00:15:18] Speaker 00:
And that's what the background says in column one, lines 20 through 25.

[00:15:23] Speaker 00:
It says there are also uncertainties as to the distribution of the cement casing

[00:15:27] Speaker 00:
causing concerns of channeling of fluids from one zone penetrated by the casing or liner to an adjacent zone.

[00:15:34] Speaker 00:
So that's the longitudinal context, that you want to prevent channeling from one zone to the next zone where you have the liner in between.

[00:15:44] Speaker 00:
So moving ahead to Thompson, figure one of Thompson, the grooves, as Baker Hughes calls it, that may allow fluid to flow circumferentially around the stand

[00:15:58] Speaker 00:
But Thompson is pretty clear that it forms a tight seal so you can't get the fluid past that packer or that device that's expanded and swelled against it.

[00:16:08] Speaker 03:
You're saying that's seamless.

[00:16:09] Speaker 00:
Yes, Your Honor.

[00:16:10] Speaker 00:
Right.

[00:16:10] Speaker 00:
There is no description in the 505 patent of a seam being a groove or a line or a furrow or some indication on a surface that two edges are joining, which is what Baker Hughes wants the construction of seam to be.

[00:16:23] Speaker 00:
It is a term of art as used in the 505 patent.

[00:16:27] Speaker 00:
There's no description of, well, look at the surface of the covering, and you'll know whether it's seamless or not.

[00:16:33] Speaker 00:
It's described functionally with respect to whether channeling is allowed or not.

[00:16:39] Speaker 00:
With respect to?

[00:16:41] Speaker 04:
Wouldn't it, once it expands, wouldn't a seam become irrelevant?

[00:16:47] Speaker 04:
That is, if it, I'm going to use a technical term now, smushes up against the edges of the board.

[00:16:58] Speaker 04:
the existent, whatever you want to call it, a seam, is pressed against that edge, what's the difference?

[00:17:06] Speaker 00:
Well, I would agree with you, Your Honor.

[00:17:07] Speaker 00:
If it's a line or a groove, which is the seam, then when it's pressed against the borehole, as long as you're preventing the channeling, it's seamless.

[00:17:17] Speaker 00:
So I would agree it's irrelevant in that state.

[00:17:22] Speaker 00:
With respect to the disclaimer argument,

[00:17:27] Speaker 00:
The office action response, which Baker Hughes points to as providing disclaimer of whether expansion is covered in claim one or not, they amended claim one to say sealing occurs based on the swelling, or sealing the wellbore from said swelling.

[00:17:47] Speaker 00:
And Baker Hughes is arguing, well, the prior art disclosed expansion.

[00:17:52] Speaker 00:
And so therefore, that amendment to claim one disclaimed

[00:17:57] Speaker 00:
any use of expansion, or at least expansion prior to the ceiling.

[00:18:01] Speaker 00:
If you look at the Office Action Response, Your Honors, every time they talk about what the prior art did, they also talk about that the prior art didn't have seamless coverings.

[00:18:11] Speaker 00:
Moreover, they don't tie the claim amendment to expansion.

[00:18:15] Speaker 00:
They don't say the amendment to claim one precludes

[00:18:19] Speaker 00:
expansion, or limits the claim to solely swelling without expansion happening before that.

[00:18:26] Speaker 00:
At minimum, there are multiple, at least two, interpretations of what they disavowed, if anything.

[00:18:35] Speaker 00:
And under the case law, which I think is pretty clear, if there are multiple interpretations of whether an amendment or an argument was sufficient for disclaimer or not, it's not.

[00:18:45] Speaker 00:
It's not sufficient.

[00:18:47] Speaker 00:
So unless there's any questions on the disclaimer, I'll move on to the invalidity of Thomson based on the different constructions.

[00:18:56] Speaker 00:
One is we discussed about with respect to figure one of Thomson, it's not seamless because it prevents channeling.

[00:19:03] Speaker 00:
So under the board's construction, Thomson clearly discloses that.

[00:19:07] Speaker 00:
Under Baker Hughes's construction, where seamless

[00:19:15] Speaker 00:
has indicated by a line or a groove or some indication that two edges have been joined, Thompson specifically discloses that in figure one, one of those bands, which is marked as 22, can be what's on the stand.

[00:19:34] Speaker 00:
You don't need the entire physical profile of figure one.

[00:19:39] Speaker 00:
It can just be one band.

[00:19:41] Speaker 00:
And so with just one band, then you don't have

[00:19:44] Speaker 00:
those grooves, as Baker Hughes calls it, that one bend of itself is seamless in that it doesn't have the grooves that they say exist in the rest of figure one.

[00:19:55] Speaker 00:
With respect to the ceiling, the well bore from swelling limitation, they don't dispute that Thompson invalidates under the board's construction.

[00:20:07] Speaker 00:
Under Baker Hughes's construction, which is ceiling occurs

[00:20:13] Speaker 00:
solely based on swelling without expansion.

[00:20:16] Speaker 00:
Thompson does disclose swelling without expansion.

[00:20:20] Speaker 00:
Specifically, as counsel mentioned, the Thompson reference talks about drill pipe.

[00:20:27] Speaker 00:
Not only does our expert say drill pipe may not be expandable, Thompson, in the same paragraph where it says the conduit can be drill pipe, in the next sentence says, and it may be expandable.

[00:20:39] Speaker 00:
So that, by inference, is that the drill pipe may not be expandable.

[00:20:43] Speaker 00:
Moreover, claims 8 and 11 of Thompson, if you look at claim 11, it's specifically talking about sealing based on swelling.

[00:20:51] Speaker 00:
It doesn't talk about expansion.

[00:20:52] Speaker 00:
And then in a dependent claim, it talks about expansion.

[00:20:55] Speaker 00:
So that's further evidence that Thompson disclosed sealing the well bore based on swelling without having to expand first.

[00:21:06] Speaker 00:
So unless there are any questions, that's all I have.

[00:21:10] Speaker 03:
Thank you, counsel.

[00:21:11] Speaker 03:
Mr. Robinson has some rebuttal time.

[00:21:27] Speaker 01:
The argument you just heard about claims 8 and 11 was never raised below.

[00:21:31] Speaker 01:
It appeared first in the final written decision.

[00:21:33] Speaker 01:
So it is an improper basis for the board's finding that Thompson discloses sealing without

[00:21:40] Speaker 01:
expansion of its stand.

[00:21:43] Speaker 02:
What's your response to the argument that even a single band in Thompson is enough?

[00:21:48] Speaker 01:
Your honor, the figure one, the description of the figure one embodiment never says that that could be as few bands as a single band.

[00:21:56] Speaker 01:
The only place that that language draws support is column two, line 51 in the summary that's describing the invention as a whole.

[00:22:03] Speaker 01:
Read in context of the overall patent, the figure two embodiment includes a single swellable band 36.

[00:22:09] Speaker 01:
And that band has grooves.

[00:22:11] Speaker 01:
There's nothing in Thompson that says that that statement in the summary applies specifically to the embodiment of figure one.

[00:22:19] Speaker 01:
And in context to the fact that there is an embodiment with a single swellable band, the only reasonable reading is that it would be referring to the multiple embodiments more generally.

[00:22:31] Speaker 01:
Importantly, that single swellable band in figure two includes grooves or channels.

[00:22:36] Speaker 01:
that the board with its construction implicitly recognizes can be a seam.

[00:22:40] Speaker 01:
The really remarkable thing about Packers Plus's dismissal of the dictionary definition on which Mr. Cox relied for the groove that resembles a joint of two pieces of material, it is the exact same definition that Dr. Hout, Packers Plus expert, quoted for his opinion about the meaning of seam.

[00:23:01] Speaker 01:
Not just the same word, but definition number three,

[00:23:05] Speaker 01:
of that definition has Dr. Hout's part, and then it continues on to include the second part that Mr. Cox included, and Dr. Hout omitted without explanation.

[00:23:14] Speaker 01:
A seam absolutely includes that groove.

[00:23:17] Speaker 01:
And as Mr. Cox explained at Appendix 1229 through 1231 and Appendix 1244 through 1245, those circumferential grooves can in fact lead to longitudinal channeling.

[00:23:28] Speaker 01:
What he explains there is that the profiled outer surface results in inconsistent swelling that can trap fluids and create weak points.

[00:23:37] Speaker 01:
Now, cement was the previous version for sealing that annulus around the expanded tubing, but cement didn't do it.

[00:23:43] Speaker 01:
And the reason is that when there's heavy mud or things that are flowing past it as it's trying to fill in that gap, it creates channels.

[00:23:52] Speaker 01:
That's the same thing Mr. Cox explains here, that even though cement was intended to seal, there were weaknesses.

[00:23:57] Speaker 01:
And even though Thompson intended its grooves to seal, there were weaknesses.

[00:24:02] Speaker 01:
And that was the reason that the 505 patent, albeit in not as much detail as would have been helpful, but said no seams, depicted no seams whatsoever, no circumferential, no longitudinal.

[00:24:15] Speaker 01:
And it did so with a very plain and straightforward term, seamless.

[00:24:21] Speaker 01:
Under either construction, those groups cause longitudinal channeling.

[00:24:29] Speaker 01:
If we get past the erroneous constructions, the alternative findings are legally erroneous under net money and are not supported by substantial evidence.

[00:24:37] Speaker 01:
For that reason, we ask the court to reverse.

[00:24:41] Speaker 03:
Thank you.

[00:24:41] Speaker 03:
Thank you, counsel.

[00:24:42] Speaker 03:
The case is submitted.