OneSubsea IP UK Limited

Patent Trials and Appeals Board

Jan 13, 2021

IPR2019-00935 (P.T.A.B. Jan. 13, 2021)

Trials@uspto.gov Paper 47
571-272-7822 Date: January 13, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

FMC TECHNOLOGIES, INC.,
Petitioner,

v.

ONESUBSEA IP UK LIMITED,
Patent Owner.
____________

Case IPR2019-00935
Patent 9,945,202 B1
____________

Before KRISTEN L. DROESCH, JAMES A. TARTAL, and
KEVIN W. CHERRY, Administrative Patent Judges.

TARTAL, Administrative Patent Judge.

DECISION
Denying Patent Owner’s Request for Rehearing
37 C.F.R. § 42.71(d)

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Patent 9,945,202 B1

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I. INTRODUCTION
On October 14, 2020, we issued a Final Written Decision determining
that claims 1–15 of U.S. Patent No. 9,945,202 B1 (“the ’202 patent”) are
unpatentable. Paper 45 (“Decision” or “Dec.”). OneSubsea IP UK Limited
(“Patent Owner”) timely filed a Request for Rehearing of the Final Written
Decision. Paper 46 (“Reh’g Req.” or “Rehearing Request”). For the reasons
provided below, Patent Owner’s Rehearing Request is denied.
II. ANALYSIS
The party filing a request for rehearing of a final written decision has
the burden of showing a decision should be modified, and the request for
rehearing must specifically identify all matters the party believes we
misapprehended or overlooked and the place where each matter was
previously addressed in its papers. 37 C.F.R. § 42.71(d). Therefore, Patent
Owner bears the burden of establishing that we misapprehended or
overlooked the matters that it requests that we review.
Patent Owner’s Rehearing Request raises three issues. The first issue
raised is whether we erred in finding that June ’9461 teaches “an isolated
path” because, according to Patent Owner, a person of ordinary skill in the
art would not have been motivated to add seals to the ‘A’ annulus and would
not have had a reasonable likelihood of success in adding seals to the ‘A’
annulus. See generally Reh’g Req. The second issue raised is whether we
erred in finding that the alternative production flow passage of Reimert2 is
an annulus flow passage through the subsea tree because, according to
Patent Owner, the incorrect standard was applied for claim language

1 Ex. 1004, US 8,316,946 B2, issued Nov. 27, 2012 (“June ’946”).
2 Ex. 1006, US 7,331,396 B2, issued Feb. 19, 2008 (“Reimert”)
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requiring a specific configuration and Reimert fails to teach a specific
configuration that permits annulus fluid to flow through the subsea tree.
See id. The third issue raised is Patent Owner’s new argument that
Administrative Patent Judges are unconstitutionally appointed principal
officers. See id. We have considered all of Patent Owner’s arguments and
find insufficient evidence to support any modification of our Decision for
the reasons that follow.
A. Patent Owner Fails to Show Error in Our Determination that
June ’946 Teaches an Isolated Path
Patent Owner asserts that we erred in finding that June ’946 teaches
“an isolated path” because “[t]he Board failed to give credit to Mr. Voss’s
opinion that a [person of ordinary skill in the art] would not have been
motivated to add seals to the ‘A’ annulus in June ’946.” Reh’g Req. 1–2
(citing PO Resp. 40–44). In particular, Patent Owner asserts that we
erroneously found that Mr. Voss relied on the “precise proportions” of
drawings. According to Patent Owner, Mr. Voss instead relied on his
opinion that a person of ordinary skill in the art would have understood the
figures of June ’946 to show “a well-known tapered surface that supports the
tubing hanger lock mechanism and accommodates for the transition between
the tubing head spool inner diameter and tubing hangar outer diameter.” Id.
at 2–3 (citing Dec. 60–61; PO Resp. 40–44). Patent Owner further argues
that we did not give sufficient weight to Mr. Voss’s testimony as to the
reasonable likelihood of success in adding seals to the ‘A’ annulus above the
transition point, because we found Mr. Voss’s testimony “was based on the
precise proportions.” Id. at 5–7 (further asserting Mr. Voss provided three
reasons a person of ordinary skill would not have expected success).
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Patent Owner fails to show that we failed to consider or incorrectly
weighed the testimony of Mr. Voss. In our Decision, we considered the
testimony of Mr. Voss, but we were not persuaded that the testimony
outweighs Petitioner’s evidence supporting the proposed modification. In
particular, we weighed the evidence of both parties to determine whether
Petitioner had shown by a preponderance of the evidence that a skilled
artisan would have known and had reason to place seals above the transition
point as proposed by Petitioner. We determined that Petitioner established
by a preponderance of the evidence that it was known to place seals above a
transition point in order to provide an isolated flow path. Dec. 50. We also
credited the testimony of Mr. Parks over the testimony of Mr. Voss and
found that implementation of the modifications proposed by Petitioner
would have been within the basic level of skill of a person of ordinary skill
in the art. Id. at 60. We considered and rejected Mr. Voss’s assertion that
Petitioner’s proposed modification would place seals on uneven surfaces and
on shoulder surfaces that are an improper location for a seal, and would
locate seals at different diameters. Dec. 60 (citing Ex. 2004 ¶¶ 148–150).
Although Patent Owner asserts that the testimony of Mr. Voss is “not
premised on treating the figures [of June ’946] as precise engineering
drawings,” but based on the understanding of an ordinary artisan (Reh’g
Req. 4–5), Figure 7 of June ’946, which Petitioner proposes to modify,
depicts the features upon which Mr. Voss’s testimony hinges. As discussed
in our Decision, “Patent Owner [or Mr. Voss] does not direct us to
persuasive objective evidence to suggest that the schematic drawing of the
completion illustrated in Figure 7 of June ’946 requires any element at any
specific angle or orientation.” Dec. 58 (emphasis added). Moreover, Patent
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Owner did not refute the testimony of Mr. Parks that a person of ordinary
skill in the art “would have readily recognize[d] there is ample room within
the body of the tubing hanger to drill the annulus bore as shown, and would
not have required locating seals on the tapered landing shoulder of the
tubing hanger.” Ex. 1032 ¶¶ 46, 49. We also noted in the Decision that
Patent Owner did not suggest any of the modifications proposed by
Petitioner were “beyond the ability of a person of ordinary skill in the art.”
Dec. 58.
Patent Owner also fails to show that, as a result of our evaluation of
the evidence supporting the placement of a seal on the ‘A’ annulus, we gave
the testimony of Mr. Voss insufficient weight with respect to the reasonable
likelihood of success in adding seals. In our Decision, we stated the
following:
Petitioner also establishes that a person of ordinary skill in
the art would have had a reasonable expectation of success in its
proposed modification of either including an annulus stab on the
‘A’ annulus flow path of the Figure 7 Completion in place of, or
in addition to, the annulus stab shown on the ‘B’ annulus flow
path. Pet. 24–25. In particular, Petitioner shows that the Figure 7
Completion illustrates the successful use of an annulus stab,
albeit on the ‘B’ flow path, and the use of multiple annulus stabs,
albeit in a different dual bore configuration embodiment
illustrated by Figure 5. Id. Petitioner further persuasively shows
that “completions having an annulus stab on the A annulus were
commonplace,” and provides several examples that establish a
person of ordinary skill in the art’s “base knowledge.” Id.
at 25–28. Specifically, Petitioner identifies Figure 5 of June ’946,
the monobore subsea completion of Figure 4 of Bartlett [U.S.
Patent No. 6,488,083], and Figure 1A of June ’308 as showing
an annulus stab on the A annulus. Id. at 25–27; see also id.
at 27–28, 28 n.2 (stating that API 17D provides “industry
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specifications governing subsea installations,” and includes a
section addressing annulus stabs).
Dec. 51. We expressly addressed the testimony of Mr. Voss testimony in
the Decision and found it not persuasive because his opinions were
“premised on treating figures that are schematic drawings as though they are
precise engineering drawings, and do not refute Petitioner’s demonstration
that a person of ordinary skill in the art would have had reason to modify the
Figure 7 Completion as proposed by Petitioner, and would have had a
reasonable likelihood of success in implementing the modifications
proposed by Petitioner.” Dec. 60–61. For these reasons, Patent Owner fails
to show that we misapprehend the evidence presented, and, as a result, erred
in determining that a preponderance of the evidence showed that it would
have been obvious to modify June ’946 to add a seal above the ‘A’ annulus
as shown by Petitioner.
B. Patent Owner Fails to Show Error in our Determination that the
Alternative Production Flow Passage of Reimert is an Annulus Flow
Passage through the Subsea Tree
Claim 1 of the ’202 patent recites “an annulus stab extending between
the tubing hanger and the subsea tree to provide an isolated path within the
stab and through the plenum region, the isolated path further being routed
through the subsea tree.” Ex. 1001, 6:52–55. Patent Owner argues that
the ’202 patent requires “a specific configuration for a well completion” that
is not rendered obvious by Reimert “merely because it is capable of
performing the claimed configuration.” Reh’g Req. 7–12 (citing
ParkerVision, Inc. v. Qualcomm Inc., 903 F.3d 1354, 1361–62 (Fed.
Cir. 2018)).
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Patent Owner’s argument amounts to no more than a bald assertion
that the pipes and valves taught by Reimert that correspond, without
alteration, to the recited “isolated path” does not actually teach an “isolated
path” unless Reimert expressly states which valves are open or closed to
make an “isolated path” through the subsea tree. Id. According to Patent
Owner “‘where an apparatus need[s] to be altered in order to be
“configured” as claimed and there was no evidence of such alteration,’ it
does not anticipate or render obvious those claims.” Reh’g Req. 8 (quoting
ParkerVision, 903 F.3d at 1361–62). Patent Owner’s assertion that whether
a valve is opened or closed is an “alteration” of the apparatus is not
persuasive. See, e.g., Fantasy Sports Properties, Inc. v. Sportsline.com, Inc.,
287 F.3d 1108, 1118 (Fed. Cir. 2002) (stating that “although a user must
activate the [valves] by selecting [particular valves], the user is only
activating [valves] that are already present”). Patent Owner further argues
that “as explained by Mr. Voss, Reimert specifically articulates how the
completion system is intended to operate and provides specific instructions
for opening and closing the valves of the system.” Id. at 10. Claims 1 and 9,
the only independent claims challenged, are directed to “a system,” not a
method. Ex. 1001, 6:40–65, 7:27–49. As explained in the Decision, “Patent
Owner’s arguments are improperly premised on how Patent Owner contends
Reimert was intended to be operated, depending on the circumstances, based
on how Reimert teaches ‘specific instructions for opening/closing valves.’”
Dec. 74–75. Further, we explained in the Decision as follows:
Patent Owner then concedes that there are “alternative flow
paths,” but argues, based on closing certain valves and opening
others, that “even when annulus fluid is permitted to flow into
the tubing hanger, the annulus fluid is not permitted to flow into
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the tree.” Id. at 64–65 (citing Ex. 1006, 5:47–49). Patent Owner
proceeds to explain how Reimert would be operated during
“typical operation” and how valves would be operated “during
workover mode,” “not when a tree is attached.” Whether
Reimert teaches, as an apparatus, a system configured to allow
annulus fluid to flow through the tree simply does not turn on
whether a valve taught by Reimert is opened or closed by an
operator. Petitioner persuasively shows that “Reimert’s
configuration shown in FIG. 4 provides a fluid flow path through
the tubing spool, tubing hanger, and into the tree (e.g., via the
plenum) that is in communication with ‘annular region 56.’” Pet.
Reply 19–20 (citing Ex. 1032 ¶ 61).
Dec. 75. For these reasons, Patent Owner fails to show that we
misapprehended the evidence presented and, as a result, erred in determining
that the alternative production flow passage of Reimert is an annulus flow
passage through the subsea tree, as shown by a preponderance of the
evidence by Petitioner.
C. Constitutional Challenge
Patent Owner argues, for the first time in its Request for Rehearing,
that Administrative Patent Judges are principal officers that “are not
appointed through the constitutionally-mandated mechanism of
appointment.” Reh’g Req. 12–15. Moreover, now according to Patent
Owner, the Federal Circuit remedy in Arthrex, Inc. v. Smith & Nephew, Inc.,
941 F3d 1320 (Fed. Cir. 2019) was erroneous. Id. at 12.
A request for rehearing is not an opportunity to submit new arguments
that were not made previously, and Patent Owner fails to identify where the
constitutional arguments it now presents were previously raised.
See 37 C.F.R. § 42.71(d). We issued the Decision in this case on
October 14, 2020, nearly a year after the Federal Circuit issued Arthrex on
October 31, 2019. The Federal Circuit issued a mandate in Arthrex on
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April 6, 2020. Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140,
Dkt. No. 119 (Fed. Cir. April 6, 2020). Thus, Patent Owner had notice of
Arthrex prior to the Final Written Decision. Indeed, Patent Owner submitted
a sur-reply (Paper 26, filed May 15, 2020) and conducted oral arguments on
June 29, 2020 (see Paper 42) without presenting any Appointments Clause
argument.
The Federal Circuit has rejected similar Appointments Clause
challenges on the ground that the Board judges were deemed constitutionally
appointed as of the date that the Federal Circuit issued its precedential
decision in Arthrex. Caterpillar Paving Products Inc. v. Wirtgen
America, Inc., 957 F.3d 1342, 1343 (Fed. Cri. 2020); see also
Arthrex, Inc. v. Smith & Nephew, Inc., 953 F.3d 760, 764 (Fed. Cir. 2020)
(Moore, J., concurring in denial of rehearing) (“Because the APJs were
constitutionally appointed as of the implementation of the severance, inter
partes review decisions going forward were no longer rendered by
unconstitutional panels.”). Accordingly, we deny Patent Owner’s request
that this case be dismissed.
III. CONCLUSION
Patent Owner has not demonstrated that we misapprehended or
overlooked arguments or evidence in determining that Petitioner established
by a preponderance of the evidence that claims 1−15 of the ’202 patent are
unpatentable.

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Accordingly, we do not modify our Final Written Decision in this
case. The final outcome of our Final Written Decision after consideration of
Patent Owner’s Request for Rehearing is as follows:

IV. ORDER
Accordingly, it is
ORDERED that Patent Owner’s Request for Rehearing of our Final
Written Decision is denied; and
FURTHER ORDERED that, because this is a decision on rehearing of
a Final Written Decision, parties to the proceeding seeking judicial review of
the decision must comply with the notice and service requirements of
37 C.F.R. § 90.2.

Claims

35
U.S.C.
§
Reference(s)/Basis Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1–7 103 June ’946 1–7
8 103 June ’946, June ’308 8
9, 10, 12–15 103 June ’946, Cameron 9, 10, 12–15
11 103 June ’946, Cameron.
June ’308
11
9, 10, 12–15 103 June ’946, API 17D,
June ’354
9, 10, 12–15
11 103 June ’946, API 17D,
June ’354, June ’308
11
1–7, 9, 10,
12–15
103 Reimert, Donald,
Cameron
1–7, 9, 10,
12–15

8, 11 103 Reimert, Donald,
Cameron June ’308
8, 11
Overall
Outcome
1–15
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For PETITIONER:

Joshua Griswold
Craig Deutsch
Bret Winterle
Michael Vincent
Matthew Colvin
FISH & RICHARDSON P.C.
griswold@fr.com
deutsch@fr.com
winterle@fr.com
vincent@fr.com
colvin@fr.com

For PATENT OWNER:
Bruce Rose
Christopher Douglas
ALSTON & BIRD LLP
Bruce.rose@alston.com
Christopher.douglas@alston.com