CAMERON INTERNATIONAL CORPORATION

Patent Trials and Appeals Board

Sep 2, 2020

IPR2019-00852 (P.T.A.B. Sep. 2, 2020)

Trials@uspto.gov Paper 34
571-272-7822 Date: September 2, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

NITRO FLUIDS, L.L.C.,
Petitioner,
v.
CAMERON INTERNATIONAL CORPORATION,
Patent Owner.

IPR2019-00852
Patent 9,932,800 B2

Before MITCHELL G. WEATHERLY, JON B. TORNQUIST, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining Some Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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Patent 9,932,800 B2
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I. INTRODUCTION
A. Background and Summary
Petitioner, Nitro Fluids, L.L.C. (“Petitioner”), filed a Petition.
Paper 1. (“Pet.”) requesting an inter partes review of claims 1–19 (“the
challenged claims”) of U.S. Patent 9,932,800 B2 (Ex. 1001, “the ’800
Patent”). Petitioner submitted the Declaration of John W. Ely in support of
the Petition. Ex. 1002. Patent Owner, Cameron International Corporation,
filed a Preliminary Response. Paper 10. (“Prelim. Resp.”). Taking into
account the arguments presented in Patent Owner’s Preliminary Response,
we determined that there was a reasonable likelihood that Petitioner would
prevail in its contention that the challenged claims of the ’800 Patent are
unpatentable under 35 U.S.C. § 102 and/or § 103.1 On September 9, 2019,
we instituted this inter partes review as to the challenged claims and all
grounds presented in the Petition. Paper 15. (“Dec.”).
During the course of trial, Patent Owner filed a Patent Owner
Response. Paper 21. (“PO Resp.”). Patent Owner also filed a Declaration
of Dr. Gary R. Wooley and a Supplemental Declaration of Dr. Wooley.
Ex. 2003; Ex. 2007. Petitioner filed a Reply to Patent Owner’s Response.
Paper 25 (“Pet. Reply”). Patent Owner filed a Sur-reply. Paper 26 (“Sur-
reply”). An oral hearing was held on June 11, 2020 and a transcript of the
hearing has been entered into the record. Paper 33 (“Tr.”).

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. § 102 and § 103. Because the
’800 patent claims priority to an application that was filed before March 16,
2013 (the effective date of the relevant amendment), the pre-AIA version of
§§ 102/103 applies.
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We have jurisdiction under 35 U.S.C. § 6. This is a Final Written
Decision under 35 U.S.C. § 318(a) as to the patentability of the challenged
claims of the ’800 patent. For the reasons discussed below, we determine
that Petitioner has established by a preponderance of the evidence that each
of claims 1, 3, 4, 5, 7, 8, 13, and 17 are unpatentable but has not established
that claims 2, 6, 9, 10, 11, 12, 13, 14, 15, 16, 18, or 19 are unpatentable.
B. Real Parties in Interest
Petitioner identifies itself as the only real party in interest. Pet. 1.
Patent Owner identifies itself as the only real party in interest. Paper 5, 1.
C. Related Matters
The parties state that the ’800 Patent is asserted in Cameron
International Corporation v. Nitro Fluids, L.L.C., No. 4:18-cv-02533 (S.D.
Tex.). Pet. 1; Paper 5, 2.
D. The ’800 Patent (Ex. 1001)
The ’800 Patent issued on April 3, 2018, and is entitled “Fracturing
Manifold Systems and Methods.” Ex. 1001, codes (45), (54). The
’800 Patent issued from U.S. Patent Application 15/422,284 filed on
February 1, 2017 and claims priority through a series of applications to U.S.
Patent Application 13/243,252 filed on September 23, 2011. Id. at codes
(21), (22), (63).
The ’800 Patent generally relates to oil and natural gas wellhead
assemblies that “use a fracturing tree and other components to facilitate a
fracturing process and enhance production from a well.” Ex. 1001, 1:28–30.
The ’800 Patent describes that “[a] fracturing manifold may provide
fracturing fluid to one or more fracturing trees via fracturing lines (e.g.,
pipes).” Id. at 1:42–44. The ’800 Patent further describes fracturing
systems including “a fracturing manifold coupled to multiple fracturing trees
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via fluid conduits such that each of the multiple fracturing trees is coupled to
the fracturing manifold by one or more rigid conduits.” Id. at 1:61–64.
Figures 1 and 2 of the ’800 Patent, reproduced below, schematically
illustrate embodiments of the claimed invention.

Figure 1 illustrates an embodiment of “an adjustable fracturing system.” Ex.
1001, 2:26–27. Figure 2 is “[an] adjustable fracturing system of [Figure 1]
with a fracturing manifold coupled to multiple fracturing trees.” Id. at 2:28–
30.
As shown in Figure 1, “fracturing system 10 includes a fracturing
tree 20 and a fracturing manifold 22.” Id. 3:44–45. Fracturing tree 20,
shown in Figure 1, “includes at least one valve that controls flow of the
fracturing fluid into the wellhead 16 and, subsequently, into the well 12.”
Id. at 3:45–48 (bolding omitted). Fracturing manifold 22 may be “connected
to . . . multiple fracturing trees 20 and wellheads 16” as shown in Figure 2 or
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“to a single fracturing tree 20” as shown in Figure 1. Id. at 3:55–59 (bolding
omitted).

E. Challenged Claims
Claims 1, 11, and 17 are independent. Ex. 1001, 9:50–12:28.
Claim 1, reproduced below, illustrates the subject matter of the challenged
claims.
1. A system comprising:
a fracturing manifold;
a plurality of fracturing trees; and
a plurality of fluid conduits coupled between the fracturing
manifold and the plurality of fracturing trees to enable receipt of
fracturing fluid by the plurality of fracturing trees from the
fracturing manifold, wherein each fracturing tree of the plurality
of fracturing trees coupled to the fracturing manifold is coupled
to the fracturing manifold by at least one rigid fluid conduit of
the plurality of fluid conduits so as to provide one and only one
rigid fluid pathway from the fracturing manifold to the fracturing
tree, and the one and only one rigid fluid pathway is not coupled
to the fracturing manifold to provide the fracturing fluid from the
fracturing manifold to any other fracturing tree.
Id. 9:50–65.
F. Prior Art and Asserted Grounds
Petitioner asserts that claims 1–19 would have been unpatentable on
the following grounds:
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1, 3–5, 7, 8, 11–14,
17, 18 102 Tolman
2

2 U.S. 2009/0114392 A1, published May 7, 2009 (Ex. 1005), (“Tolman”).
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Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1, 3–5, 7, 8, 11–14,
17, 18 102 Surjaatmadja
3
1, 3–5, 7, 8, 11–14,
17, 18 103 Surjaatmadja, Tolman
1, 3–5, 7, 8, 14 103 Surjaatmadja, Tolman, Duhn4
1, 3–5, 7, 8, 14 103 Surjaatmadja, Tolman, Bertrand5
7, 8 103 Surjaatmadja, Tolman, Perry6
12 103 Tolman, Surjaatmadja, API 6A7
2, 6, 9, 10, 15, 16, 19 103 Surjaatmadja, Tolman, Bull8

II. ANALYSIS
A. Legal Standards
Petitioner bears the burden of establishing the unpatentability of any
claim by a preponderance of the evidence. 35 U.S.C. § 316 (e); 37 C.F.R.
§ 42.1(d). This burden of persuasion never shifts to the patent owner.
Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
(Fed. Cir. 2015).
A claim is anticipated under 35 U.S.C. § 102 “only if each and every
element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union
Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). However, this is not an

3 U.S. 2009/0194273 A1, published Aug. 6, 2009 (Ex. 1004),
(“Surjaatmadja”).
4 U.S. 2003/0205385 A1, published Nov. 6, 2003 (Ex. 1006), (“Duhn”).
5 WO 2009/154881 A1, published Dec. 23, 2009 (Ex. 1007), (“Bertrand”).
6 Robert H. Perry and Don Green, Perry’s Chemical Engineers’ Handbook,
McGraw-Hill Inc., 6th ed. 1984 (Ex. 1008), (“Perry”).
7 API Specification 6A, Specification for Wellhead and Christmas Tree
Equipment, 19th ed. 2004 (Ex. 1009), (“API 6A”).
8 U.S. 2009/0261575 A1, published Oct. 22, 2009 (Ex. 1010), (“Bull”).
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ipsissimis verbis test, i.e., identity of terminology is not required. See In re
Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
A claim is unpatentable under § 103(a) if the differences between the
claimed subject matter and the prior art are such that the subject matter, as a
whole, would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations,
including (1) the scope and content of the prior art; (2) any differences
between the claimed subject matter and the prior art; (3) the level of skill in
the art; and (4) when in evidence, objective indicia9 of non-obviousness
(i.e., secondary considerations). Graham v. John Deere Co., 383 U.S. 1,
17–18 (1966).
We analyze the asserted grounds based on anticipation or obviousness
with these principles in mind.
B. Level of Ordinary Skill in the Art
Petitioner contends that a person of ordinary skill in the art would
have “a minimum of three years of experience working with piping systems
as they are used in the oil and gas industry, including productions and
completions,” or alternatively “a bachelor’s degree in petroleum, chemical,
or mechanical engineering, or a related discipline.” Pet. 26–27 (citing
Ex. 1002 ¶ 52). Patent Owner does not dispute Petitioner’s contention
concerning the level of ordinary skill in the art. See generally PO Resp. For
the purposes of this Decision, we adopt Petitioner’s level of ordinary skill in

9 We do not address any objective indicia because no evidence of such
indicia is in the record.
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the art because it comports with the level of skill reflected in the ’800 Patent
and the prior art of record. See, e.g., Ex. 1001, 1:28–2:4.
C. Claim Construction
For inter partes reviews filed on or after November 13, 2018, we
apply the same claim construction standard used by Article III federal courts
and the ITC, both of which follow Phillips v. AWH Corp., 415 F.3d 1303
(Fed. Cir. 2005) (en banc), and its progeny. See Changes to the Claim
Construction Standard for Interpreting Claims in Trial Proceedings Before
the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11,
2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now
codified at 37 C.F.R. § 42.100(b) (2019)). Because the Petition was filed on
March 20, 2019, we apply that standard here. Accordingly, we construe
each challenged claim of the ’800 Patent to generally be “the ordinary and
customary meaning of such claim as understood by one of ordinary skill in
the art and the prosecution history pertaining to the patent.” Id.
Under the claim construction procedures articulated in Phillips, claim
construction begins with the language of the claims. Phillips, 415 F.3d
at 1312–14. The “words of a claim ‘are generally given their ordinary and
customary meaning,’” which is “the meaning that the term would have to a
person of ordinary skill in the art in question at the time of the invention, i.e.,
as of the effective “filing date of the patent application.” Id. at 1312−13.
The specification is ‘“the single best guide to the meaning of a disputed
term’ and . . . acts as a dictionary when it expressly defines terms used in the
claims or when it defines terms by implication.” Id. at 1321. Although the
prosecution history “often lacks the clarity of the specification and thus is
less useful for claim construction purposes,” it is another source of intrinsic
evidence that can “inform the meaning of the claim language by
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demonstrating how the inventor understood the invention and whether the
inventor limited the invention in the course of prosecution, making the claim
scope narrower than it would otherwise be.” Id. at 1317. Extrinsic
evidence, such as expert testimony and dictionaries, may be useful in
educating the court regarding the field of the invention or helping determine
what a person of ordinary skill in the art would understand claim terms to
mean. Id. at 1318–19. However, extrinsic evidence in general is viewed as
less reliable than intrinsic evidence. Id.
Petitioner requests that we construe the claim terms “fracturing tree,”
“connection block,” and “adjustment joint / goathead.” Pet. 10–26. Patent
Owner requests that we construe “fracturing manifold.” PO Resp. 16–17.
For the purposes of resolving the disputes between the parties, we address
the construction of “fracturing manifold” and “fracturing tree” but do not
find it necessary to our decision to address “connection block” or
“adjustment joint / goat head.” See Nidec Motor Corp. v. Zhongshan Broad
Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we
need only construe terms ‘that are in controversy, and only to the extent
necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci.
& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
i. “fracturing manifold”
In our Decision on Institution, “we preliminarily construe[d]
fracturing manifold as a flow path for the distribution of fracturing fluid
from a source of fracturing fluid to one or more fracturing trees that includes
at least one valve.” Dec. 13. We explained that “[t]his construction is
consistent with the Specification and drawings of the ’800 Patent.” Id.
(citing Ex. 1001, 1:42–44, 3:48–51, 3:60–62; 4:22–28, Figs. 1, 2, 3). In the
Patent Owner Response, Patent Owner disagrees that this construction
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“captures the full meaning” of “fracturing manifold” but “agrees that this
construction is sufficient for the limited purpose of this proceeding” in light
of Petitioner’s “application of the asserted prior art.” PO Resp. 17. In
making our preliminary determination, we noted that Patent Owner
contended in the Preliminary Response “that the ordinary and customary
meaning of fracturing manifold requires ‘outlet valves that direct fracturing
fluids to individual wells.’” Dec. at 9 (citing Prelim. Resp. 22 n.4.). We
further noted that claim 5, which depends from claim 1, and claim 18, which
depends from claim 17, require valves in outlet branches of the fracturing
manifold. Id. at 10. Based on the doctrine of claim differentiation, we
preliminarily concluded that the language of claims 5 and 17 suggests that
valves in a fracturing manifold are not required to be located at the outlet of
the fracturing manifold as argued by Patent Owner. Id. at 10–11.
Petitioner contends that fracturing manifold should be “construed, per
the intrinsic evidence, simply as ‘fluid lines used to provide fracturing fluid
to one or more fracturing trees.’ The intrinsic evidence does not require . . .
valves.” Pet. Reply. 8. In particular, Petitioner argues that the presence of
valves in the outlet branches in dependent claims 5 and 18 suggests that
“fracturing manifold” in independent claims 1 and 17 should be construed as
not necessarily requiring the presence of any valve anywhere in the
fracturing manifold. Id. at 6. The primary dispute between the parties is,
thus, whether one of ordinary skill in the art would understand that the term
“fracturing manifold” as recited in claim 1 and claim 17 necessarily requires
a valve.10

10 Patent Owner does not dispute Petitioner’s contention that the “fracturing
fluid distribution manifold” recited in claim 11 should be construed the same
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Patent Owner contends that the Specification of the ’800 Patent at
column 3, lines 47–50 supports a construction of “fracturing manifold” that
requires a valve. See PO Resp. 16–17. Petitioner counters that the cited
portions of the Specification are “directed to a specific embodiment.” Pet.
Reply. 7 (citing Dec. 11–13).11 According to Petitioner, “it is improper to
limit the claims to the embodiments described in the specification absent a
clear intention to do so, using words of manifest exclusion or restriction”
and “the specification contains no words of exclusion or restriction requiring
a valve at any location.” Id. To support its contention that fracturing
manifold does not necessarily require a valve, Petitioner directs us to a
general dictionary definition of “manifold” as “a pipe so fitted that it has
several apertures for making multiple connections.” Id. at 8 (citing Ex.
1019, 3). Petitioner also contends that its position that a fracturing manifold
does not necessarily require a valve is consistent with a position taken by
Patent Owner in infringement litigation over U.S. Patent 10,094,195 that
Petitioner contends is a parent to the ’800 Patent. Id. at 8–9 (citing Ex.
1020, 20). Petitioner submits a photograph from Patent Owner’s contentions
in that litigation, which is reproduced below. Id.

as the “fracturing manifold” recited in claim 1 and claim 17. See Pet. 46; see
generally PO Resp.
11 We note that Petitioner relies on the same “embodiment” in support of its
assertion that “fracturing tree” should be construed as requiring a valve. See
Pet. 10–14.
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The photograph reproduced above illustrates a model of equipment
annotated by Patent Owner and identifies, inter alia, a “fracturing manifold”
indicated with a red line. Ex. 1020, 20. Petitioner argues that the fracturing
manifold, as annotated by Patent Owner, in this photograph does not include
a valve. Pet. Reply 8–9.
Patent Owner responds that a person of ordinary skill in the art
“would have understood a fracturing manifold to include a valve.” Sur-
reply 3 (citing Ex. 2003 ¶ 53). Patent Owner’s position is supported by the
testimony of its declarant, Dr. Wooley, who states that “the ordinary and
customary meaning of the ‘fracturing manifold’ term in light of the
disclosure of the ’800 Patent and the understanding of a POSITA is ‘a series
of pipes, connections, and valves that direct fracturing fluid from a
fracturing fluid supply to individual wells.’” Ex. 2003 ¶ 53. Patent Owner
also directs us to two oil industry publications to support its construction that
a fracturing manifold requires a valve. Sur-reply 3–4 (citing Exs. 2012,
2013). With respect to the photograph from Patent Owner’s infringement
contentions, Patent Owner argues that Petitioner is pointing “to one out-of-
context annotated image from district court briefing about different terms in
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different claims from a different patent.” Id. at 4. According to Patent
Owner, “the dispute centered on identifying the ‘goat head’ of the other
patent’s claims, not on the ancillary annotations of the fracturing manifold or
fluid conduit.” Id. at 5. For the following reasons, we maintain our
preliminary construction of fracturing manifold for the purposes of this
decision.
The term “fracturing manifold” appears in independent claims 1
and 17. Ex. 1001, 9:51, 11:27. Neither claim specifically recites a valve as
part of the fracturing manifold. See id. Turning to the Specification of the
’800 Patent, it provides that “fracturing manifold 22 includes at least one
valve that controls flow of the fracturing fluid to the fracturing tree 20 by a
conduit or fluid connection 26.” Id. at 3:47–50. Fracturing manifold 22
may include additional valves. Id. at 3:60–61. Further, the ’800 Patent
describes that “manifold 22 includes a conduit 42 that routes fracturing fluid
to valves 44 and 46. These valves . . . receive fracturing fluid from the fluid
supply” and “[t]he fracturing fluid may then be routed through fluid
connection 26 to a respective fracturing tree.” Id. at 4:22–28; see also id. at
Figs. 1, 2, 3. We note that both the embodiment shown in Figure 3 of the
’800 Patent and the embodiment shown in Figure 10 include valves 44
and 46 at both ends of the fracturing manifold 22. See id. at Figs. 3, 10. The
fact that both embodiments in the Specification disclose multiple valves at
both the inlet and exit to the fracturing manifold weighs in favor of our
preliminary determination that one of ordinary skill in the art would
understand that a fracturing manifold includes a valve.
Neither party directs us to any part of the prosecution history of the
’800 Patent in support of their respective claim construction nor has our
review of the prosecution history revealed any relevant discussion of
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fracturing manifold. Consequently, the prosecution history is not instructive
for our analysis.
With respect to Petitioner’s claim differentiation argument, the
Federal Circuit states “[t]he doctrine of claim differentiation, while not a
hard and fast rule of construction, creates a presumption that . . . ‘the
presence of a dependent claim that adds a particular limitation raises a
presumption that the limitation in question is not found in the independent
claim.’” Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.),
687 F. 3d 1266, 1275 (Fed. Cir. 2012), citing Liebel-Flarsheim Co. v.
Medrad, Inc., 358F. 3d 898, 910 (Fed. Cir. 2004). Further, the presumption
“is especially strong when the limitation in dispute is the only meaningful
difference between an independent and dependent claim.” Liebel-Flarsheim
358 F. 3d at 910 (emphasis added). The doctrine, however, “cannot broaden
claims beyond their correct scope.” Dow Chem. Co. v. United States, 226
F.3d 1334, 1341 (Fed. Cir. 2000) (citing Multiform Desiccants, Inc. v.
Medzam, Ltd., 133 F.3d 1473, 1480 (Fed. Cir. 1998)).
In its argument, Petitioner does not address whether this presumption
applies to the “valve” limitation in the dependent claims or whether the
valves recited in claim 5 and claim 13 are the only meaningful difference
between those claims and the independent claims. See Pet. Reply 6–7. We
note that claim 5 depends from claim 4, which depends from claim 3, which
in turn depends from claim 1. Ex. 1001, 9:50–10:16. Claim 3 adds, inter
alia, the limitation that the fracturing manifold of claim 1 includes “outlet
branches.” Id. at 10:9–11. Claim 4 recites “the outlet branches of the
fracturing manifold include valves” and claim 5 requires “a first outlet
branch” and “a second outlet branch” with each outlet branch “having two
valves connected in series.” Id. at 10:12–23. Clearly, there are meaningful
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differences between independent claim 1 and dependent claims 3, 4, and 5
other than the valves, i.e., outlet branches added by claim 3, valves placed in
the outlet branches in claim 4, and multiple outlet branches with multiple
valves in claim 5. Claim 18 requires “assembling the fracturing manifold [of
claim 17] so as to include outlet branches having valves.” Id. at 12:12–14.
Claim 18 adds the meaningful difference of outlet branches of the fracturing
manifold in addition to valves placed in the outlet branches. In both the case
of claim 1 and claim 17, the dependent claims add the limitation of one or
more outlet branches to the fracturing manifold, the addition of valves to
outlet branches, and the placement of valves in the outlet branches. We
acknowledge that we invoked the doctrine of claim differentiation in our
Decision on Institution to reject Patent Owner’s argument that a fracturing
manifold requires the placement of a valve at the outlet of the fracturing
manifold. Dec. 9–11. However, we decline to read the doctrine as broadly
precluding a construction of “fracturing manifold” in claims 1 and 17 that
requires a valve as a component placed anywhere in the fracturing manifold
because dependent claims 3, 4, 5, and 18 include the additional meaningful
differences from independent claims 1 and 17 just discussed. Further,
limiting the doctrine of claim differentiation to the placement of the valves
in outlet branches is supported by the sequence of limitations added to claim
1 by the dependent claims, i.e., first outlet branches are added in claim 3 and
then valves are added to the outlet branches in claims 4, and the placement
of two valves in series in the outlet branches in claim 5. Our construction of
fracturing manifold results in claims 1 and 17 being broader in scope than
dependent claims 4, 5, and 18 but not “broaden[ed] beyond their correct
scope” because claim 1 is broad enough to cover valve placement other than
in the outlet branches. Dow Chem., 226 F.3d at 1341.
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With respect to the photograph reproduced above, we agree with
Petitioner that the fracturing manifold indicated by the red-line in the
photograph does not appear to include a valve. See Ex. 1020, 20.12 We note
that the redline in the photograph extends in both directions beyond the
edges of the photograph implying that perhaps not all elements of the
fracturing manifold are shown in the photograph. We reviewed the
remainder of Exhibit 1020 and found no detailed discussion of the
construction of fracturing manifold or whether a fracturing manifold requires
a valve.13 The only claim term proposed for construction in the relevant
district court litigation is “goat head.” Id. at 6. Consequently, we determine
that Petitioner has not shown that the photograph in Exhibit 1020 establishes
by a preponderance of the evidence that Patent Owner took a position before
the District Court that a fracturing manifold need not include a valve.
With respect to other extrinsic evidence, Dr. Wooley supports Patent
Owner’s position that one of ordinary skill in the art would understand that
the fracturing manifold of the ’800 Patent requires a valve. Ex. 2003
¶¶ 52–56. In support of this opinion, Dr. Wooley cites to various portions of
the Specification of the ’800 Patent (id. ¶¶ 52–55) and a prior art patent (id.
¶ 56 (citing Ex. 2004)). Petitioner’s declarant, Mr. Ely, does not provide
testimony to support Petitioner’s position that a “fracturing manifold” does
not necessarily require a valve. See generally Ex. 1002. Patent Owner also
relies on two oil field publications indicating that a “frac manifold” is “[a]

12 We also note that Petitioner has not filed the patent at issue in that
litigation as an exhibit in this case or otherwise provided any argument or
evidence concerning the claims at issue in that case or any information on
the details of the equipment shown in the referenced photograph.
13 There is no evidence in the record that the District Court in this litigation
construed the term “fracturing manifold.”
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system of frac valves” (Ex. 2012) and that a “manifold” is “[a]n accessory
system of valves and piping.” Ex. 2013, 159. As noted above, Petitioner
provides a general dictionary definition of “manifold” that does not include
valves. Ex. 1019, 3. After reviewing all the extrinsic evidence of record, we
determine that it weighs slightly in favor of Patent Owner’s position that one
of ordinary skill in the art, after reading the Specification of the ’800 Patent,
would understand that a fracturing manifold requires at least one valve.
For all the foregoing reasons, we maintain our preliminary
construction of a fracturing manifold as “a flow path for the distribution of
fracturing fluid from a source of fracturing fluid to one or more fracturing
trees that includes at least one valve.” Dec. 13.
ii. “fracturing tree”
Petitioner contends that one of ordinary skill in the art would have
understood that the ordinary meaning of fracturing tree is “a type of
‘Christmas tree,’14 which is the assembly of valves and components fitted to
the wellhead of a completed well to control production.” Pet. 14 (citing
Ex. 1002 ¶ 60.). Petitioner further submits that a fracturing tree is “installed
specifically for the fracturing process.” Id. Petitioner argues that although
the term fracturing tree “is not explicitly defined in the specification”, the
’800 Patent “discloses that a frac tree 20 is located at each wellhead with the
tree itself described as ‘includ[ing] at least one valve that controls flow of
the fracturing fluid into the wellhead 16 and subsequently into the well 12.’”
Id. at 11 (citing Ex. 1001, 3:45–48, Figs. 1, 2). Petitioner further notes that
during prosecution of the ’800 Patent, “the examiner found that a fracturing

14 Although the term “Christmas tree” does not appear in the ’800 Patent, an
explanation of this term was offered at the oral hearing. See Tr. 36:12–38:8,
64:18–20.
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tree or frac tree was an ‘industry known term that is installed on the well
specifically for the fracturing process and typically consists of upper and
lower master valves, flow cross, wing valves, goat head and swab valve.’”
Id. at 13–14 (citing Ex. 1003, 115–116).
Patent Owner contends that “it is unnecessary to construe the term
‘fracturing tree.’” PO Resp. 17. Patent Owner does not offer a contrary
meaning of this term but contends that “it is a specialized Christmas tree
installed specifically, and temporarily, for the fracturing process.” Id.
at 17–18 (citing Pet. 14; Ex. 1002 ¶ 60). In support of this contention, it
directs us to the testimony of Petitioner’s declarant, Mr. Ely, that a “frac tree
usually has a higher pressure rating, and larger internal diameter” and
“[g]enerally the frac tree will be removed and replaced by a standard
Christmas tree for production.” Id. at 18 (citing Ex. 1002 ¶ 60).
Petitioner responds that “[a] fracturing tree is merely a ‘Christmas
tree’ used during fracturing operations.” Pet. Reply 9 (citing Pet. 14;
Ex. 1002 ¶ 60). Petitioner contends that “[a]lthough a fracturing tree may
typically have additional features beyond ordinary production trees (higher
pressure ratings, internal diameter), these are not requirements.” Id. at 9–10
(citing Ex. 1002 ¶ 60). Petitioner further contends that “[t]he specification
only requires fracturing tree to include a valve to control fracturing fluid
flow” and “could include a production tree used during fracturing; in fact,
the Petition specifically states that fracturing trees may be used during
production.” Id. at 10–11 (citing Pet. 4, 10–14; Ex. 1002 ¶¶ 57, 60).
In order to resolve this dispute, we first turn to the Specification of the
’800 Patent. The Specification explains that “wellhead assemblies may use
a fracturing tree and other components to facilitate a fracturing process and
enhance production from a well.” Ex. 1001, 1:28–30. The Specification
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further provides that “the fracturing manifolds and associated fracturing
trees are typically large and heavy.” Id. at 1:44–45 (emphasis added).
Further, “fracturing tree 20 includes at least one valve that controls flow of
the fracturing fluid into the wellhead 16 and subsequently into the well 12.”
Id. at 3:45–48; see also id. at Fig. 3 (illustrating fracturing tree 20 with
master valve 54). Fracturing tree 20 shown in Figure 3 “includes valves 52
to control flow of fracturing fluid through a horizontal portion of tree 20.
Tree 20 includes master valve 54 to control flow of fluids (e.g. fracturing
fluids or production fluids) to or from the attached wellhead.” Id. at 4:41–45
(emphasis added). Based on this disclosure, we discern that a fracturing
tree, inter alia, controls the flow of fracturing fluids or production fluids,
contains various valves, and is typically large and heavy. The Examiner’s
explanation of a fracturing tree from the prosecution history indicates that a
frac tree typically contains valves and is specifically installed on the
wellhead for the fracturing process. See Ex. 1003, 115–116. The inclusion
of valves in the Examiner’s explanation is consistent with the Specification
of the ’800 Patent. See Ex. 1001, 3:45–48. To the extent that the statement
that a fracturing tree is specifically installed on the wellhead for the
fracturing process means that the tree is installed to facilitate the fracturing
process, that statement is also consistent with the Specification. See id. at
4:41–45. This portion of the Specification discloses that master valve 54
controls the flow of production fluids, indicating that the Specification
discloses using the fracturing tree during production from the well after the
fracturing process. Patent Owner’s argument that a fracturing tree is
“installed . . . temporarily, for the fracturing process” is based on the
testimony of Mr. Ely and not intrinsic evidence. See PO Resp. 17–18 (citing
Ex. 1002 ¶ 60). Construing fracturing tree as one temporarily used for
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fracturing is inconsistent with the scope of the term as used in the
Specification that the fracturing tree controls the flow of production fluid
from the well. Although both Petitioner and Patent Owner appear to agree
that a fracturing tree is typically heavier and larger than a production tree,
neither points to any intrinsic evidence to support a determination that this is
necessarily true. We note that the Specification discloses that fracturing
trees are themselves typically large and heavy, leaving us without basis in
the intrinsic evidence to divine a distinction between a production tree and a
fracturing tree based on size or weight.
Based on the foregoing intrinsic evidence, we determine that a
fracturing tree is a tree used to facilitate a fracturing process, and does not
require a tree of a particular size or weight or a tree that is temporarily
installed only for the fracturing process.
D. Ground 1: Anticipation by Tolman
Petitioner contends that claims 1, 3–5, 7, 8, 11–14, 17, and 18 are
anticipated by Tolman. Pet. 27–52. In support thereof, Petitioner identifies
the disclosures in Tolman alleged to describe the subject matter in the
challenged claims. Id. Additionally, Petitioner offers declaration testimony
from John W. Ely in support of its position. Ex. 1002 ¶¶ 105–150.
We begin our analysis with a brief overview of Tolman. We then
address the parties’ respective contentions with respect to the challenged
claims.
1. Overview of Tolman – Ex. 1005
Tolman is a United States Patent Application Publication published on
May 7, 2009. Ex. 1005, code (43). Tolman is entitled “Method and
Apparatus Associated with Stimulation Treatments for Wells.” Id. at
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code (54). Tolman’s method connects multiple wells to a stimulation fluid
pumping system via a pumping system manifold” that “is adjusted to
provide a first well flow path from the stimulation fluid pumping system to a
first well.” Id. ¶ 8. Tolman also discloses a system where the “pumping
system manifold is adjusted to provide a stimulation treatment . . . to one of
the plurality of wells, while isolating another of the plurality of wells.” Id.
¶ 9. Figure 2 of Tolman is reproduced below:

Figure 2 of Tolman is an exemplary surface pad configuration with
equipment and wells. Ex. 1005 ¶ 14.
Pumping system manifold 206 couples stimulation fluid pumping
system 202 to trees 106a–106c. Id. ¶ 30. Although not shown in Figure 2,
wells 104a–104c are coupled to trees 106a–106c through flowback
manifolds 230a–230c. Id. ¶ 28. Pumping system manifold 206 “may
include a set of pipes 208 to interface each of the trees 106a –106c with the
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stimulation fluid pumping system 202.” Id. ¶ 30. Main manifold valve 210
and manifold check valve 212 are located near stimulation fluid pumping
system 202 in order to manage flow through pipes 208. Id. Pumping system
manifold 206 may also include “a densitometer 220, pressure gauge 222,
ball-sealer injector 224 and/or flowmeter 226, which may be coupled along
the piping 208 near the main manifold valve 210.” Id. The trees 106a–106c
are connected to first manifold well valve 214, second manifold well valve
216, and third manifold well valve 218 respectively. Id. Valves 210, 214,
216, and 218 “provide hydraulic isolation between individual wells 104a–
104c and the stimulation fluid pumping system 202.” Id. Further, Tolman
discloses:
Through the coupling of the valves 210, 212, 214, 216, and 218,
flow paths may be provided through the pumping system
manifold 206. Because the first manifold well valve 214, second
manifold well valve 216, and a third manifold well valve 218
may be set to an open or closed position, stimulation fluid may
be injected into one or more of the wells 104a–104c, while the
other wells 104a–104c may be isolated by at least one of the
valves 214–218 from the stimulation fluid pumping system 202.
Id. ¶ 31.
2. Claim 1
a) a fracturing manifold
Petitioner contends that Tolman’s pumping system manifold “is a
fracturing manifold as it is a manifold for stimulation fluid, which includes
hydraulic proppant fracturing fluid.” Pet. 34 (citing Ex. 1005 ¶¶ 23, 31,
Fig. 2). Petitioner provides an annotated version of a portion of Tolman’s
Figure 2 that is reproduced below:
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This annotated version of a portion of Tolman’s Figure 2 with blue coloring
added by Petitioner to illustrate the portion of Tolman’s pumping system
manifold 206 that Petitioner contends corresponds to the “fracturing
manifold” recited in claim 1 of the ’800 Patent. Pet. 33–34.
Petitioner further contends that “[a]lthough [Tolman’s] manifold 206
references all components between stimulation fluid pumping system 202
and the oil field trees 106a-106c, the portion corresponding to the fracturing
manifold of the ’800 Patent would include those portions shaded blue . . .,
and not the individual lines to each tree after they branch off the trunk line.”
Id. at 34.
The portion of Tolman’s pumping system manifold 206 identified by
Petitioner as corresponding to the recited fracturing manifold is in
accordance with our construction of that term, i.e., “a flow path for the
distribution of fracturing fluid from a source of fracturing fluid to one or
more fracturing trees and that includes at least one valve” because it
provides a flow path from Tolman’s stimulation fluid pumping system 202
to one or more trees 106a–106c and includes valve 210.
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Patent Owner does not dispute that Tolman discloses a fracturing
manifold. See PO Resp. 47–59.
Based on the evidence discussed above, Petitioner has shown that
Tolman discloses a fracturing manifold.
b) a plurality of fracturing trees
Petitioner contends that one of ordinary skill in the art would
understand that Tolman’s oil field trees 106a–106c are a plurality of
fracturing trees because “when used during a fracturing operation” oil field
trees 106a–106c have “all the requisite components of such trees including
valves to control fluid flow down a well head.” Pet. 37 (citing Ex. 1002
¶ 112; Ex. 1005 ¶¶ 21, 28–31). Petitioner’s declarant testifies that “[a]
person of ordinary skill in the art would understand these trees to be
fracturing trees given the specification’s description of them as oil field
trees, which are used during stimulation (including fracturing) operations.”
Ex. 1002 ¶ 112 (citing Ex. 1005 ¶¶ 31–32).
Patent Owner contends that Tolman does not disclose fracturing trees.
PO Resp. 47. Patent Owner contends that Petitioner “premises Tolman’s
disclosure . . . on two incorrect propositions: (1) standard Christmas trees
cannot be used during a fracturing operation; and (2) standard Christimas
trees do not include valves.” Id. at 48. According to Patent Owner, these
premises are incorrect because “operators often fracture through standard
Christmas trees (i.e., production trees)” (id. (citing Ex. 2007 ¶¶ 27–28;
Ex. 2011 ¶ 14)), and “production trees typically incorporate valves.” Id.
(citing Ex. 1002 ¶ 60; Ex. 2007 ¶ 26)). Patent Owner also contends that
Petitioner’s declarant testified that a fracturing tree is usually distinguished
from a standard Christmas tree by a higher pressure rating and larger internal
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diameter and that Petitioner “does not identify where Tolman discloses that
its oilfield trees satisfy” these distinctions. Id. at 49–50.
Tolman is directed to a method and apparatus associated with
stimulation treatment for wells. Ex. 1005, code (54), Fig. 2. Patent Owner
conceded at oral argument that fracturing is a stimulation process.
Tr. 68:7–9; Ex. 1005, Fig. 2. Oil field trees 106a, 106b, and 106c are
located over wellbores 108a–108c at wells 104a–104c. Id. ¶ 21.
“[S]timulation fluid pumping system 202 is coupled to trees 106a–106c” by
pumping system manifold 206 and a set of pipes 208. Id. ¶ 30, Fig. 2.
Stimulation fluid may be provided to wells 104a–104c (not shown in Fig. 2)
from oil field trees 106a–106c. Id. ¶¶ 30–31, Fig. 2. Thus, Petitioner has
established that Tolman discloses fracturing trees because Tolman’s oil field
trees 106a–106c are used to provide fracturing fluid to wells 104a–104c and
thus facilitate a fracturing process. The fact that Petitioner has not shown
that Tolman’s oil field trees are heavier or larger than standard Christmas
trees is of no import given our construction of fracturing tree in light of
Patent Owner’s concession that fracturing often takes place through standard
Christmas trees. PO Resp. 48.
c) a plurality of fluid conduits coupled between the fracturing manifold and
the plurality of fracturing trees to enable receipt of fracturing fluid by
the plurality of fracturing trees from the fracturing manifold,
Petitioner contends that Tolman’s pipes 208 correspond to the recited
“plurality of fluid conduits” because each contains “one of the manifold well
valves 214, 216, or 218, connecting the main manifold to each fracturing
tree.” Pet. 38 (citing Ex. 1005, Fig. 2). Petitioner further contends that the
“conduits enable receipt of fracturing fluid by the plurality of fracturing trees
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from the fracturing manifold.” Id. Patent Owner does not dispute that
Tolman discloses this limitation. See PO Resp. 47–59.
Based on the evidence discussed above, Petitioner has shown that
Tolman discloses this limitation.
d) wherein each fracturing tree of the plurality of fracturing trees coupled
to the fracturing manifold is coupled to the fracturing manifold by at
least one rigid fluid conduit of the plurality of fluid conduits so as to
provide one and only one rigid fluid pathway from the fracturing
manifold to the fracturing tree
Petitioner contends that Tolman discloses this limitation because
“[t]he conduits connecting each tree to the manifold, and the manifold itself,
are described merely as pipes 208.” Pet. 39 (citing Ex. 1005, ¶ 30).
Petitioner further contends that one of ordinary skill in the art “would
interpret ‘pipes’ to refer to ordinary rigid pipes.” Id. (citing Ex. 1002 ¶ 116).
According to Petitioner, each tree 106a–106c is, thus, “coupled to the
manifold by a single rigid fluid conduit, forming only one rigid fluid
pathway from the manifold to each fracturing tree.” Id.
Patent Owner contends that “the form of the connection between the
manifold well valves 214, 216, and 218 and oilfield trees 106a-c” in Figure 2
of Tolman is left open because paragraph 30 of Tolman states that the
manifold “may include a set of pipes 208.” PO Resp. 55 (quoting Tolman,
¶ 30). Based on this, Patent Owner argues that we should ignore the fact
that Figure 2 of Tolman plainly shows one line to each of trees 106a–106c
and find that those single lines are in effect multiple lines in the form of
“prior-art frac iron.” Id. Patent Owner further contends that Petitioner’s
proposed construction of “goathead” supports the contention that the single
lines shown in Figure 2 of Tolman are prior art frac iron. Id. at 55–57.
Patent Owner acknowledges that there is no disclosure of prior art frac iron
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in Tolman but contends Tolman’s failure to mention prior art frac iron “is
because Tolman was not disclosing a new means for connecting oilfield
trees to manifolds, so Tolman did not discuss the prior-art means for doing
so.” Id. at 57. Patent Owner also contends that Petitioner has not shown
that Tolman’s pipes 208 are rigid because Tolman indicates that Tolman’s
piping 203 includes low pressure hoses. Id. at 59 (citing Tolman ¶ 29).
Petitioner replies that Tolman’s “pipes 208 are the interface between
the trees and pumping system 202, including not only the manifold 206, but
the connections from each tree to the manifold” and that “the conduits
between manifold and each tree are single lines, connected to manifold
outlet branches containing a single valve each.” Pet. Reply 26 (citing
Tolman ¶ 30, Fig. 2). Petitioner argues that “Tolman’s reference to
piping 203 as multiple lines or hoses stands in stark contrast to its discussion
of pipes 208, which are very specifically described as having main valves
(210, 212) in the shared conduit and well valves in the outlet branches.” Id.
According to Petitioner, Tolman “explicitly teaches the one-and-only-one
rigid fluid pathway.” Id. at 26–27. For the following reasons, we determine
that Petitioner has shown that Tolman discloses this limitation.
Tolman’s Figure 2 clearly shows one line going from the fracturing
manifold to each of the trees 106a–106c. Tolman, Fig. 2. Figure 2 of
Tolman identifies one valve (214, 216, 218) in each of those lines. Id.
Tolman also discloses precisely three valves, 214, 216, and 218, that may be
opened and closed in such a manner as to allow fracturing fluid to flow into
one of the wells while the other wells are isolated from the pumping system.
See Ex. 1005 ¶ 31. No other valves are identified or disclosed in Tolman for
isolating the individual trees from the fracturing manifold. The fact that
precisely three valves are disclosed undercuts Patent Owner’s contention
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that Tolman’s single lines 208 are really multiple lines in the form of frac-
iron because each such line presumably requires a valve in order to isolate
the well. Although Patent Owner argues that Tolman’s “Figure 2 is a high-
level block diagram broadly illustrating a flow path” and lacking
“implementation details” (Sur-reply 22), Patent Owner fails to identify any
“implementation details” recited in claim 1 that are not disclosed in Tolman.
See id. Rather, Patent Owner’s argument that the single lines shown in
Figure 2 of Tolman are really multiple lines in the form of prior art frac iron
is based on speculation in the absence of any evidence in Tolman supporting
the argument. See PO Resp. 57 (arguing that Tolman omitted discussion of
prior art frac iron is because it “was not disclosing a new means for
connecting oilfield trees to manifolds.”). Further, Petitioner did not argue
that Tolman’s system included goatheads. See generally Pet.
We are also not persuaded by Patent Owner’s argument that one of
ordinary skill in the art would consider Tolman’s pipes 208 to be flexible
rather than rigid because Tolman describes piping 203 as including low
pressure hoses. Paragraph 29 of Tolman, upon which Patent Owner relies
for this argument, provides that “[t]he stimulation fluid pumping system 202
couples to the stimulation fluid storage system via piping 203, which may be
high pressure steel lines or low pressure hoses depending on the specific
application.” Tolman ¶ 29 (emphasis added). Tolman discloses “pipes 208”
which Petitioner contends a person of ordinary skill in the art would
interpret as referring “to ordinary rigid pipes.” Pet. 39 (citing Ex. 1002
¶ 116). Mr. Ely testifies that “[t]he ordinary meaning of ‘pipe’ is a rigid
pipe, for example, a steel pipe.” Ex. 1002 ¶ 116. Petitioner also contends
that Tolman’s disclosure of pipes 208 “as having main valves (210, 212) in
the shared conduit and well valves in the outlet branches” supports its
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contention that pipes 208 are rigid. Pet. Reply 26 (citing Tolman ¶ 30, Fig.
2). Dr. Wooley testifies that Tolman’s pipes 208 represent “prior art frac
iron” which he describes as “high pressure lines.” Ex. 2003 ¶¶ 41, 122–125.
Dr. Wooley’s testimony confirms that pipes 208 are high pressure lines and,
thus, undercuts Patent Owner’s assertion that pipes 208 could be “low
pressure hoses.” Based on the foregoing, Petitioner establishes that
Tolman’s pipes 208 are “rigid.” See id. ¶ 30.
For all the foregoing reasons and based on the evidence discussed
above, Petitioner has shown that Tolman discloses this limitation.
e) the one and only one rigid fluid pathway is not coupled to the fracturing
manifold to provide the fracturing fluid from the fracturing manifold to
any other fracturing tree
Petitioner contends that Tolman’s Figure 2 discloses “that each fluid
conduit connected from the manifold trunk line to each tree is coupled to
only a single tree, and thus does not provide the fluid from the manifold to
any other tree.” Pet. 40 (citing Ex. 1005, Fig. 2). Apart from the
contentions discussed in connection with the prior limitation, Patent Owner
does not argue that this claim limitation is not met in Tolman. See PO Resp.
54–59.
Figure 2 of Tolman clearly illustrates that the pipes extending from
valves 214, 216, and 218 provide fracturing fluid to only one fracturing tree
and not to any other tree. See Tolman, Fig. 2. Based on this evidence,
Petitioner has shown that Tolman discloses this limitation.
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f) Conclusion
For the all the foregoing reasons, Petitioner has shown by a
preponderance of the evidence that claim 1 is unpatentable as anticipated by
Tolman.
3. Claim 3
Claim 3 depends from claim 1 and recites that the fracturing manifold
of claim 1 includes “a shared trunk conduit for routing fracturing fluid to
multiple fracturing trees of the plurality of fracturing trees; and outlet
branches for routing fracturing fluid from the shared trunk conduit to
individual fracturing trees of the multiple fracturing trees.” Ex. 1001, 10:4–
11. Petitioner submits a portion of Tolman’s Figure 2, reproduced below, to
support its contention that Tolman anticipates claim 3.

Pet. 42. The figure shown above is a portion of the surface pad
configuration shown in Figure 2 of Tolman with blue and orange coloring
added by Petitioner. Id. Petitioner contends “that pipes 208 included in
manifold 206 include a shared trunk conduit (blue . . .) for routing fracturing
fluid to the three trees 106a –106c via three outlet branches (orange . . .).”
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Id. at 41. Patent Owner does not address claim 3 in the Patent Owner
Response. See PO Resp. 47–60.
Based on the evidence cited by Petitioner which is not disputed by
Patent Owner, we determine that Petitioner has shown by a preponderance
of the evidence that claim 3 is unpatentable as anticipated by Tolman.
4. Claim 4
Claim 4 depends from claim 3 and recites that “the outlet branches of
the fracturing manifold include valves to individually control flow of
fracturing fluid from the shared trunk conduit to the multiple fracturing
trees.” Ex. 1001, 10:12–15. Petitioner contends that the outlet branches
each contain “a manifold well valve 214, 216, or 218 and may be opened or
closed to control fluid from the trunk line to each tree.” Pet. 42–43 (citing
Tolman ¶ 30, Fig. 2).
Patent Owner argues “[i]f valves 214, 216, and 218 are not part of the
manifold in Figure 2 when it suits Nitro in claim 1 (Pet., 35), then they are
not part of the manifold for this limitation.” PO Resp. 51. Patent Owner
also notes that, in our Decision on Institution, we stated that Petitioner did
not include valves 214, 216, and 218 as part of the fracturing manifold in its
analysis of claim 1. Id. (quoting Dec. 23).
Petitioner counters that it mapped Tolman’s disclosure of a manifold
to the limitations of claim 1 without the benefit of our construction of
fracturing manifold. Pet. Reply 25. Petitioner contends that its mapping of
the elements of claim 1 “was not intended to globally limit Tolman’s
fracturing manifold.” Id. at 23. Petitioner further contends that because the
fracturing manifold of claim 3 is required to include a trunk conduit and
outlet branches, Petitioner additionally identified parts of Tolman’s manifold
that it asserts correspond to the shared trunk conduit and the outlet branches.
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Id. According to Petitioner, because the Petition shows that Tolman
possesses all claim limitations under our construction of fracturing manifold,
Patent Owner’s arguments would impose an improper ipsissimis verbis test
to the Petition. Id. at 24.
In its Sur-reply, Patent Owner contends Petitioner has improperly
introduced a new theory of unpatentability in the Petitioner Reply because it
excluded valves 214, 216, and 218 from the fracturing manifold in its
mapping of claim 1. Sur-reply 17–18. Patent Owner further contends that if
the lines containing valves 214, 216, and 218 are part of the fracturing
manifold for claim 3, then those lines “cannot also be the fluid conduit
connecting between the manifold and the tree” as asserted in the Petition for
claim 1. Id. at 20.
Patent Owner further contends that Petitioner cannot map the same
element to both the rigid fluid conduit and the outlet branches because “the
claims describe the outlet branches as part of the fracturing manifold, but
describe the rigid fluid pathway as a separate element connecting the
fracturing manifold to the fracturing tree.” Id. During oral argument,
Petitioner argued that this contention is a claim construction issue that
should have been raised in the Patent Owner Response. See Tr. 18:1–7.
As an initial matter, we note that we “permit the petitioner, in its reply
brief, to address issues discussed in the institution decision” but Petitioner
“may not submit new evidence or argument in reply that it could have
presented earlier, e.g. to make out a prima facie case of unpatentability.”
Consol. TPG,15 73 (Nov. 2019). In the discussion of claim 3 in the

15 Available at
https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf.
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Petitioner Reply, Petitioner does not introduce new evidence or argument
but relies on the two portions of Tolman’s Figure 2 annotated with color that
were presented in the Petition. Compare Pet. Reply 23 with Pet. 35, 42.
Petitioner refers to those two drawings in the context of our discussion in the
Decision on Institution where we preliminarily found that Petitioner failed to
show the limitations of claims 5 and 13 in Tolman. See Pet. Reply 22.
Consequently, we disagree with Patent Owner’s contention that Petitioner’s
Reply has improperly introduced new evidence or argument beyond the
scope of what is in the Petition. See Apple Inc. v. Andrea Elecs. Corp., 949
F.3d 697, 706 (Fed. Cir. 2020).
As discussed above, Patent Owner did not dispute that the lines
identified by Petitioner in orange in the figure on page 42 of the Petition
correspond to the outlet branches of the fracturing manifold recited in
claim 3. Valves 214, 216, and 218 are shown as placed in the lines that
Petitioner identifies constitute the outlet branches recited in claim 3.
Although Petitioner did not include these branches and valves in its mapping
of claim 1, this fact is of no import because claim 4 adds additional
limitations to claim 1. In addition, if the valves in the outlet branches were
considered part of the claimed fracturing manifold, a portion of the lines
below valves 214, 216, and 218 in Figure 2 connects the fracturing manifold
to the oil field trees 106a–106c and therefore constitutes the rigid fluid
conduits recited in claim 1.
For the reasons discussed above and after reviewing all the evidence
and arguments by both parties, we determine that Petitioner has shown by a
preponderance of the evidence that claim 4 is unpatentable as anticipated by
Tolman.
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5. Claim 5
Claim 5 depends from claim 4 and recites that the outlet branches
include a first outlet branch and a second outlet branch with each branch
having two valves connected in series. Ex. 1001, 10:16–23. Petitioner
concedes that Figure 2 of Tolman only shows one valve but contends that
Tolman discloses that “another valve may be installed in the same flow path
(i.e., in series) to provide enhanced reliability in isolating each well” and
“this valve may be installed on the trees.” Pet. 43 (citing Tolman ¶ 30).
Patent Owner contends that Petitioner “admits that there is no
disclosure of a second valve in an outlet branch in Figure 2” and “does not
make any arguments about why it would be inherent (i.e., necessary) to use a
second valve in series in an outlet branch, especially when any additional
valves could be placed at the tree or elsewhere in the flow path.” PO
Resp. 52. Patent Owner also contends that “Tolman’s paragraph 30 does not
make any disclosures about adding valves” but that paragraph 31 of Tolman
“mentions that ‘[t]o enhance reliability, it may be preferred that two valves,
such as manifold well valve 214–218 and a valve (not shown) on the tree
106a–106c are closed during any given isolation from the other wells.’” Id.
at 51–53 (quoting Tolman ¶ 31).
In the Petitioner Reply, Petitioner contends that Tolman’s “valve
configuration is only exemplary.” Pet. Reply 26 (citing Tolman, ¶ 30).
Petitioner further contends that a person of ordinary skill in the art “would
have recognized Tolman to disclose that an additional valve could be placed
in series in the same flow paths, and that placement in the branch (or tree)
was a possible option.” Id. (citing Pet. 43; Ex. 1002 ¶ 124).
We are not persuaded by Petitioner’s contentions. Petitioner concedes
that Figure 2 of Tolman does not disclose a second valve in the outlet
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branches. Pet. 43. Further, paragraph 30 of Tolman does not disclose a
second valve in the outlet branches. See Tolman ¶ 30. Patent Owner
correctly notes that Tolman’s reference to enhancing reliability by placing a
second valve in series is in Paragraph 31 of Tolman and discloses that a
second valve would be placed on the trees 106a–106c. Id. ¶ 31. Although it
may have been obvious to place a second valve in series in the outlet
branches as Petitioner asserts in the Petitioner Reply, this challenge is based
on anticipation not obviousness. For these reasons, we determine that
Petitioner has not shown by a preponderance of the evidence that claim 5 is
anticipated by Tolman.
6. Claims 7 and 8
Claim 7 depends from claim 1, and recites that “the at least one rigid
fluid conduit includes a plurality of pipe joints coupled to one another.”
Ex. 1001, 10:30–32. Claim 8, depends from claim 7, and recites that “the at
least one rigid fluid conduit includes an elbow.” Id. at 10:33–34. Petitioner
contends that although Tolman doesn’t specifically mention pipe joints, a
person of ordinary skill in the art would understand that Tolman’s reference
to pipes would necessarily include “the joints used to connect pipe sections
to one another, as such joints are understood to be a necessary component of
rigid piping systems in general.” Pet. 44 (citing Ex. 1002 ¶¶ 125) (emphasis
added)). Petitioner also contends that although elbows are not specifically
mentioned in Tolman, that a person of ordinary skill in the art would
understand Tolman “to include any and all standard pipe and pipe fittings
(such as pipe joints, unions, 90o or 45o elbows, etc.) necessary to physically
run pipe from the manifold to the fracturing tree.” Id. at 45 (citing Ex. 1002
¶¶ 125–126) (emphasis added)). Petitioner further contends that “an elbow
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of some type is required whenever any turn in a piping system is necessary,
and such turns are inevitable on a well site.” Id. at 45–46.
Patent Owner contends that because pipe joints and elbows are neither
explicitly disclosed in Tolman nor inherent, “a modification to supply that
element based on the knowledge of a [person of ordinary skill in the art] is
subject to the strictures of an obviousness analysis under Section 103.” PO
Resp. 60. According to Patent Owner, the arguments in the Petition are
inapplicable to this challenge which is based on anticipation. Id.
In the Petitioner Reply, Petitioner reiterates its position that one of
ordinary skill in the art “would understand pipes 208 to inherently require
whatever fittings . . . may be necessary to physically run pipe from one
location to another location.” Pet. Reply 27. Petitioner further contends that
Patent Owner cites “nothing to the contrary, nor does it explain how
Tolman’s system could be implemented without such peripheral
components.” Id.
Petitioner’s contention here relies on the theory that the use of pipe
joints and elbows is inherent in Tolman’s system. We note that:
“[i]nherency . . . may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of circumstances is
not sufficient.” In re Oelrich, 666 F. 2d, 578, 581 (CCPA 1981). Petitioner
supports its inherency argument with the testimony of Mr. Ely. See Pet. 43–
45 (citing Ex. 1002 ¶¶ 125–26). Mr. Ely testifies that both pipe joints and
elbows are “necessary to conform to the physical layout of a particular site.”
Ex. 1002 ¶ 125. In the Patent Owner Response, Patent Owner does not cite
to any evidence to dispute Mr. Ely’s testimony that pipe joints are necessary
in the system of Tolman. See PO Resp. 60. We credit Mr. Ely’s testimony
because it is reasonable that such items are necessary and Patent Owner does
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not dispute the testimony. See, e.g., Ex. 2013, 159 (defining “manifold” as
“[a]n assembly of pipes, valves, and fittings” (emphasis added)). Therefore,
we determine that Petitioner has shown by a preponderance of the evidence
that claim 7 and claim 8 are unpatentable as anticipated by Tolman.
7. Claim 11
Independent claim 11 recites, inter alia, “a fracturing fluid
distribution manifold” that, similar to claim 5, requires first and second
outlet branches each with a “pair of valves connected in series to control
flow of fracturing fluid.” Ex. 1001, 10:45–58. Petitioner relies on the same
explanations and evidence as for claim 5 to establish this claim limitation.
Pet. 46–47.
Given the requirement for two valves in the outlet branches of the
fracturing fluid distribution manifold of claim 11, for the same reasons
discussed above in connection with claim 5, we determine that Petitioner has
not demonstrated that claim 11 is anticipated by Tolman.
8. Claims 12–14
Claims 12–14 depend from claim 11. Ex. 1001, 11:7–18. Petitioner’s
explanations and supporting evidence regarding the limitations of these
dependent claims do not cure the deficiencies in its challenge to claim 11
discussed above. See Pet. 47–49. Therefore, we determine that Petitioner
has not demonstrated that claims 12–14 are anticipated by Tolman.
9. Claim 17
Independent claim 17 is directed to a method with limitations similar
to claim 1. Ex. 1001, 11:26–12:11. Petitioner relies on substantially the
same arguments and evidence for claim 17 as for claim 1 with the additional
contention that Tolman “contemplates a fracturing (or stimulation) method
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and the system for carrying that method out” and “Tolman’s disclosed
systems in their respective methods necessarily require[] assembly of each
system.” Pet. 50–51. Patent Owner relies on the same contentions as
discussed above in connection with claim 1. PO Resp. 47–59. For the same
reasons discussed above in connection with claim 1, we determine that
Petitioner demonstrates by a preponderance of the evidence that claim 17 is
anticipated by Tolman.
10. Claim 18
Claim 18 depends from claim 17 and requires the fracturing manifold
“to include outlet branches having valves for controlling flow of fracturing
fluid from the trunk line to the multiple outlets.” Ex. 1001, 12:11–15.
Petitioner relies on the same evidence and arguments to establish the
limitations of claim 18 as for claims 1, 5, and 17. Pet. 52. We note that
neither claim 1 nor claim 17 recites the placement of valves in outlet
branches so we do not perceive the relevance to claim 18 of Petitioner’s
contentions regarding claims 1 and 17. For the reasons discussed above in
connection with claim 5, Petitioner has not shown that Tolman anticipates
claim 18.
E. Ground 2: Anticipation by Surjaatmadja
Petitioner contends that claims 1, 3–5, 7, 8, 11–14, 17, and 18 are
anticipated by Surjaatmadja. Pet. 27–52. In support thereof, Petitioner
identifies the disclosures in Surjaatmadja alleged to describe the subject
matter in the challenged claims. Id. Additionally, Petitioner offers
testimony from John W. Ely in support of its position. Ex. 1002
¶¶ 105–150.
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1. Overview of Surjaatmadja — Ex. 1004
Surjaatmadja is a United States Patent Application Publication
published on August 6, 2009. Ex. 1004, code (43). Surjaatmadja is entitled
“Method and Apparatus for Orchestration of Fracture Placement from a
Centralized Well Fluid Treatment Center.” Id. at code (54). Surjaatmadja
discloses a “centralized well treatment fluid center [is] configured for
fracturing a plurality of wells.” Id. ¶ 6. Figure 17 of Surjaatmadja is
reproduced below:

Figure 17 is “a diagram of a centralized well treatment facility. Id. ¶ 34.
The centralized well treatment facility shown in Figure 17 includes “a
centralized power unit 1703; a pumping grid 1711; a central manifold 1707;
a proppant storage system 1706; a chemical storage system 1712; and a
blending unit 1705.” Id. ¶ 136. Central manifold 1707 connects to first pad
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1701 and second pad 1702, each of which contains one or more wellheads,
by means of first connection 1708 and second connection 1709. Id.
Figure 21 of Surjaatmadja is reproduced below:

Figure 21 “is a schematic of a manifold apparatus for directing treatment
fluid.” Id. ¶ 38.
In Figure 21, “fluid flows into input 2101 and through junctions 2102
and 2103 to lines 2104 and 2105.” Id. ¶ 144. Line 2014 contains valves
2106 and 2108 and connects to wellhead 1701. Id. Line 2015 also contains
valves 2111 and 2113 and connects to well head 1702. Id.
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2. Claim 1
a) fracturing manifold
Petitioner contends that “central manifold 1707 in Figure 17, which
transmits fracturing fluid containing proppant, chemical additives, and
water, is a fracturing manifold.” Pet. 34 (citing Ex. 1004 ¶¶ 136, 140,
Fig. 17). Petitioner also contends that “[t]he line supplying input 2101 and
junctions 2102 and 2103 in Figure 21 is also a central manifold for
fracturing fluid.” Id. (citing Ex. 1004 ¶ 144, Fig. 21).
Patent Owner contends that neither Figure 17 nor Figure 21 of
Surjaatmadja discloses a fracturing manifold as we have construed that term.
PO Resp. 37. In particular, Patent Owner contends that “Surjaatmadja does
not disclose that either central manifold 1707 or the line supplying
input 2101 include at least one valve as required by the claims in the
’800 Patent.” Id. (citing Dec. 30–31). In connection with Figure 17, Patent
Owner contends that neither paragraph 136 nor paragraph 140 of
Surjaatmadja discloses “a valve in central manifold 1707.” Id. In
connection with Figure 21, Patent Owner contends that “the figure omits the
line supplying input 2101 altogether” and “therefore does not expressly
disclose a valve in that line.” Id. Patent Owner also contends that the
specification of Surjaatmadja is “silent on the form of the line supplying
input 2101 and junctions 2102 and 2103.” Id.
Petitioner counters that the embodiments shown in Figures 17 and 21
“are not ‘distinct’ from one another” and that our preliminary determination
in the Decision on Institution that these embodiments cannot be considered
together for the purposes of anticipation is in error. See Pet. Reply 12–13
(citing Dec. 33–34). Petitioner further contends that Figures 17 and 21
“merely focus on different parts of the same system.” Id. at 12. According
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to Petitioner, Figure 17 illustrates a central manifold 1707 connected to pads
and Figure 21 “details Figure 17’s central manifold 1707, which is
referenced in the figure itself.” Id. at 13. Petitioner contends that “[w]hen
disclosures are directly related, it is completely permissible to combine
aspects of the disclosures to anticipate the claimed invention.” Id. at 14–15
(citing Chamberlain Grp. v. Techtronic Indus. Co., 935 F.3d 1341 (Fed. Cir.
2019); Purdue Pharma L.P. v. Epic Pharma, LLC, 811 F. 3d 1345 (Fed. Cir.
2016)). Petitioner concedes that “Figure 17 does not show any valves” but
asserts that valves are “shown and discussed with respect to other figures,
including Figure 21.” Id. at 14; see also id. at 15–18 (discussing the valves
disclosed in Figure 21 of Surjaatmadja).
For the following reasons, we are not persuaded that Petitioner has
shown that Surjaatmadja discloses a fracturing manifold as recited in claim
1.
We begin by noting that
To anticipate a claim, a single prior art reference must expressly or
inherently disclose each claim limitation . . . But disclosure of each
element is not quite enough –– this court has long held that
“[a]nticipation requires the presence in a single prior art disclosure of
all elements of a claimed invention arranged as in the claim.”
NetMoneyIn, Inc. v. Verisign, Inc., 545 F. 3d 1359, 1371 (Fed. Cir. 2008)
(alteration in original). In NetMoneyIn, the Federal Circuit held that even
“slight differences” between embodiments in a prior art reference “invoke
the question of obviousness, not anticipation.” Id. However, there is no
blanket rule “that two embodiments disclosed in a reference can never be
considered in combination to make a finding of anticipation.” Chamberlain
935 F. 3d at 1350. Rather, “the relevant question is whether the reference is
sufficiently clear in disclosing combinability of those elements such that a
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skilled artisan would ‘at once envisage’ the claimed combination.” Id.
Further, in order to combine different embodiments, the disclosure of the
embodiments must be “directly related.” Purdue Pharma, 811 F. 3d at
1358–59.
We begin with the observation that a simple comparison of Figures 17
and 21 reveals more than slight differences. Petitioner did not argue in the
Petition that central manifold 1707 in Figure 17 is further detailed in Figure
21 as it does in the Petitioner Reply. See Pet. 34. Rather, Petitioner stated
that the “central manifold 1707 in Figure 17 . . . is a fracturing manifold”
and that “[t]he line supplying input 2101 and junctions 2102 and 2103 in
Figure 21 is also a central manifold for fracturing fluid.” Id. Mr. Ely
testifies that “[t]he manifold is also shown in Figure 21, but is not
referenced, and supplies junctions 2102 and 2103.” Ex. 1002 ¶ 107. This
testimony does not support the contention in the Petitioner Reply that Figure
21 “details Figure 17’s central manifold 1707.” Pet. Reply 13. We
acknowledge that Figure 21 includes the reference number 1707. See Ex.
1004, Fig. 21. But, Petitioner does not direct us to any other disclosure in
Surjaatmadja sufficient to establish that Figure 17 and 21 are directly
related. Applying Petitioner’s Reply argument that Figure 21 details
Figure 17’s central manifold 1707 to the contentions in the Petition,
however, leaves us with the apparently illogical result that “[t]he line
supplying input 2101 . . . in Figure 21 is also a central manifold” (Pet. 34)
that supplies fluid to a more detailed version of itself. Petitioner, thus, fails
to provide evidence to show that Surjaatmadja is “sufficiently clear in
disclosing the combinability of” Figures 17 and 21 such that one of ordinary
skill in the art “would at once envisage” such a combination. Chamberlain,
935 F.3d at 1350. For all of these reasons, we determine that Figures 17 and
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21 are not “directly related” and must be considered separately for this
anticipation ground.
As noted above, Petitioner admits that Figure 17 does not include a
valve. Petitioner contends that we misunderstood “Petitioner’s reference to
the manifold in Figure 21 as limited only to the line supplying input 2101.”
Pet. Reply 17. Petitioner provides an annotated version of Figure 21,
reproduced below, in support of an argument that “Petitioner included the
entire shared trunk conduit (‘[t]he line supplying input 2101 and junctions
2102 and 2103’).” Id. (alteration in original) (citing Dec. 31; Pet. 34).

The preceding image is an annotated version of Figure 21 of Surjaatmadja
annotated in red to show what Petitioner contends is the fracturing manifold.
Id. We disagree that we misunderstood the Petition. The Petition states that
the manifold is the line supplying input 2101. Figure 21 shows that the fluid
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moves upward from 2101 to junctions 2102 and 2103. Obviously, the fluid
is supplied to all of 2101, 2102, and 2103 from the same input line which is
not shown or otherwise described in Surjaatmadja. Furthermore, Petitioner
fails to provide any evidence that a valve is included in the line supplying
input 2101 and junctions 2102 and 2103. See Pet. Reply 15–18. Petitioner,
thus, has not shown that Figure 17 or Figure 21 or any other portion of
Surjaatmadja discloses a valve in the fracturing manifold as required by
claim 1.
b) a plurality of fracturing trees
Petitioner contends that Surjaatmadja “does not explicitly reference
fracturing trees, but does disclose a method of fracturing a plurality of
wells.” Pet. 35 (citing Ex. 1004 ¶ 84, Fig. 1). Figure 1 of Surjaatmadja is
reproduced below:
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Figure 1 of Surjaatmadja “is a schematic block diagram of a wellbore and a
system for fracturing.” Ex. 1004 ¶ 16.
Petitioner contends that “a fracturing tool 125 is conveyed via a
downhole conveyance 135 . . . from drive mechanism 130.” Pet. 35 (citing
Ex. 1004 ¶ 86). According to Petitioner, a fracturing tree “is simply a
component of the wellhead assembly used to facilitate the fracturing process,
with at least one valve that controls flow of the fracturing fluids into the
wellhead.” Id. at 36–37 (citing Ex. 1002 ¶ 61). Petitioner contends that “the
unlabeled components attached to the wellhead 115 for delivering the tool
and downhole conveyance device” constitute a fracturing tree and that the
“X” in the rectangle above element 115 in Figure 1 shown above constitutes
a valve. Id. at 36 (citing Ex. 1002 ¶¶ 109–110).
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Patent Owner contends that “Surjaatmadja does not mention trees at
all.” PO Resp. 38. Patent Owner contends that Petitioner “tries to backdoor
an inherency argument, contending that a fracturing tree is present because
Surjaatmadja ‘does disclose a method of fracturing a plurality of wells.’ . . .
without providing any evidence to support its apparent assumption that
fracturing must involve a fracturing tree.” Id. (citing Pet. 35). Patent Owner
further contends that “[f]racturing can, and often does, take place without a
fracturing tree . . . operators can fracture directly through the wellhead
without a tree.” Id. (citing Ex. 2007, ¶¶ 27–28). Patent Owner’s declarant,
Dr. Wooley, testifies that
fracturing can, and often does, take place without fracturing
trees. Operators can fracture wells through several different
configurations, including directly through the wellhead
assembly . . . An operator may, for example, install permanent
equipment at the wellhead to accommodate fracturing
pressures. One example is the fracturing spool at left, which
“can be left on a wellhead throughout [the] service life of the
well.” Ex. 2010, 1:54–58. With this permanent fracturing
spool 100a in place, the operator can commence fracturing
operations by installing fracturing head 300 . . . as in Figure 4 at
right. Id., 4:58–5:2. As Mr. Ely describes in reference to the
fracturing heads . . . installed on fracturing trees, Ex. 1002,
¶¶ 83–85, the operator can then connect frac iron (treating iron)
to the inlets on fracturing head 300 to deliver fracturing fluid to
the well. When the operator is ready to begin production, the
operator can remove fracturing head 300 and install a
production tree . . . as shown in Figure 24 at left. Ex. 2010,
8:22–28, Fig. 24. This process can then be reversed and
repeated to allow for subsequent fracturing and production
operations. Id., 8:29–39. (Notably the production tree . . .
include[s] master valve 370. Id., 8:22–28).
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Ex. 2007 ¶ 27. Dr. Wooley also testifies that the “component marked by an
X” in Figure 1 of Surjaatmadja “is more likely a blow-out preventer than a
valve associated with a fracturing tree.” Id. ¶ 37.
In the Petitioner Reply, Petitioner does not squarely address Patent
Owner’s argument that fracturing can take place through a wellhead without
a tree. See Pet. Reply 18–19. Nor does Petitioner address Patent Owner’s
inherency assertions. Id. For the following reasons, we are not persuaded
that Petitioner has established that Surjaatmadja discloses a plurality of
fracturing trees.
Petitioner acknowledges that Surjaatmadja does not explicitly disclose
fracturing trees. See Pet. 35. Petitioner’s declarant, Mr. Ely, testifies that
the “X” shown in Figure 1 of Surjaatmadja “is generally used to depict a
valve, and this is how a person of ordinary skill in the art would understand
this component in Figure 1.” Ex. 1002 ¶ 110. Mr. Ely further testifies that
above the box with the “X” “is another piece, without an ‘X,’ where the
fracturing tool enters from outside” and a skilled artisan “would understand
these two components (valve and upper section) to depict a fracturing tree
set on the wellhead.” Id. ¶ 111. We note that Mr. Ely does not direct us to
any disclosure in Surjaatmadja to support this testimony other than the
drawing itself.
Dr. Wooley’s testimony that fracturing can be done at a wellhead
without a tree is supported by evidence from Exhibit 2010. We, thus, find
this testimony to be supported by evidence and probative. We note that
Petitioner did not direct us to any other evidence to contradict Dr. Wooley’s
testimony on this point. Consequently, in the absence of explicit disclosure
in Surjaatmadja that fracturing takes place through fracturing trees, we
determine in light of all of the evidence presented that Petitioner has not
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established by a preponderance of the evidence that Surjaatmadja discloses
fracturing trees.
c) Conclusion — Claim 1
Because Petitioner has not shown that Surjaatmadja discloses a
fracturing manifold or a plurality of fracturing trees, Petitioner has not
shown by a preponderance of the evidence that Surjaatmadja anticipates
claim 1.
3. Claims 3–5, 7, 8
Each of claims 3–5, 7, and 8 depend directly or indirectly from
claim 1. Ex. 1001, 10:4–34. We have reviewed Petitioner’s contentions and
evidence with respect to these dependent claims and none of the cited
evidence cures the deficiencies in Petitioner’s challenge to claim 1 discussed
above. Therefore, we determine that Petitioner has not shown by a
preponderance of the evidence that claims 3–5, 7, and 8 are anticipated by
Surjaatmadja.
4. Claim 11
Claim 11 recites, inter alia, “a fracturing fluid distribution manifold.”
Ex. 1001, 10:45–46. Petitioner contends that “[t]he ‘fracturing fluid
distribution manifold’ and the fracturing manifold of claim 1 are the same”
and directs us to its contentions for claim 1. Pet. 46. For the reasons
discussed above in connection with the fracturing manifold of claim 1,
Petitioner fails to establish that Surjaatmadja discloses the fracturing fluid
distribution manifold recited in claim 11. Therefore, we determine that
Petitioner has not shown by a preponderance of the evidence that claim 11 is
anticipated by Surjaatmadja.
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5. Claims 12–14
Each of claims 12–14 depend directly from claim 11. Ex. 1001,
11:7–18. We have reviewed Petitioner’s contentions and evidence with
respect to these dependent claims and none of the cited evidence cures the
deficiencies in the Petitioner’s challenge to claim 11 discussed above. In
addition, claim 14 requires “a plurality of fracturing trees.” Id. at 11:15–16.
For the reasons discussed above with respect to claim 1, Petitioner has not
shown that Surjaatmadja discloses the use of fracturing trees. For all these
reasons, we determine that Petitioner has not shown by a preponderance of
the evidence that claims 12–14 are anticipated by Surjaatmadja.
6. Claim 17
Claim 17 is a method claim including the step of “assembling a
fracturing manifold.” Ex. 1001, 11:26–27. Petitioner relies on its
contentions for claim 1. Pet. 51. For the reasons discussed above in
connection with the fracturing manifold of claim 1, Petitioner fails to
establish that Surjaatmadja discloses the fracturing manifold recited in
claim 17. Therefore, we determine that Petitioner has not shown by a
preponderance of the evidence that claim 17 is anticipated by Surjaatmadja.
7. Claim 18
Claim 18 depends from claim 17. Ex. 1001, 12:12. We have
reviewed Petitioner’s contentions and evidence with respect to this
dependent claim and none of the cited evidence cures the deficiencies in the
Petitioner’s challenge to claim 17 discussed above. Therefore, we determine
that Petitioner has not shown by a preponderance of the evidence that
claim 18 is anticipated by Surjaatmadja.
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F. Ground 3: Obviousness over Tolman and Surjaatmadja
Petitioner captions this ground as directed to claims 1, 3–5, 7, 8,
11–14, 17, and 18. See Pet. 52. Patent Owner contends that Petitioner
provides “no analysis . . . about how its proposed combination would apply
to” claims other than claim 5 and claim 13. PO Resp. 60–61. Petitioner
contends that it “would have been duplicative and unnecessary” to analyze
the claims other than claim 5 and claim 13 because “[n]othing else in
Tolman’s system changed” other than adding valves into Tolman’s outlet
branches. Pet. Reply 28–29.
The Petition states that the “combination [of Tolman and
Surjaatmadja] would possess every element of Claims 1, 3–5, 7–8, 11–14,
17, and 18.” Pet. 55. Claim 5 depends from claim 4 which depends from
claim 3 which in turn depends from claim 1. Ex. 1001, 10:4–16. Claim 13
depends from claim 11. Id. at 11:9. While we agree with Patent Owner that
the only explicit analysis in the Petition is with respect to claims 5 and 13,
the issue is whether the Petition establishes the limitations recited in the
claims from which claims 5 and 13 depend.
As discussed above, we determine that Tolman discloses all the
limitations of claims 1, 3, and 4 but not all the limitations of claim 11.
Consequently, we determine Petitioner’s statement regarding claims 1, 3,
and 4 to be sufficient for us to determine whether or not Petitioner
demonstrates the obviousness of claim 5. With respect to claim 13,
however, Petitioner did not establish that claim 11 was anticipated by
Tolman. Because Petitioner did not provide an explicit obviousness analysis
for claim 11 that would cure the deficiency in the anticipation ground, we
determine that Petitioner has not established that claim 13 would have been
obvious based on the combination of Tolman and Surjaatmadja.
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Claim 5 requires two valves connected in series in the outlet branches
of the fracturing manifold. Ex. 1001, 10:16–23. Petitioner contends16 that
“it would have been obvious to combine Tolman and Surjaatmadja to
include such a valve in Tolman’s system in view of Surjaatmadja’s inclusion
of such valves as well as Tolman’s suggestion to use such valves.” Pet. at
53 (citing Ex. 1002 ¶¶ 151–157). According to Petitioner, Surjaatmadja
explicitly discloses “includ[ing] two valves in series in each outlet line,
along with a pressure sensor, so that the pressure and leakage in each line
can be monitored during fracturing operations” and such an arrangement
allows for detection of “any significant leakage.” Id. at 54 (citing Ex. 1002
¶ 154; Ex. 1004 ¶ 144). Petitioner also contends that “Tolman itself also
suggests that two valves in the flow path to each tree are preferred to
enhance reliability.” Id. (citing Ex. 1002 ¶ 155; Ex. 1005 ¶ 31). Petitioner
further contends that a person of ordinary skill in the art “would have been
led by Surjaatmadja’s teaching and Tolman’s suggestion to modify Tolman
to include two outlet branch valves in series in place of the single valves[]
. . . along with [the] pressure sensors in each line.” Id. (citing Ex. 1002
¶ 156). According to Petitioner “[t]here would have been a reasonable
expectation of success based on Surjaatmadja’s express teaching of the
successful use of this configuration in a similar system and in the exact same
application.” Id. at 54–55 (citing Ex. 1002 ¶ 156).
Patent Owner first contends that Petitioner misstates Tolman’s
disclosure of a second valve because Tolman discloses a second valve on the

16 Petitioner repeats its contention for claim 1 that Tolman discloses a
second valve in the outlet branch “on the tree.” Pet. 53. As explained
above, we determine that Tolman does not disclose two valves in the outlet
branches.
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tree, not in the outlet branch. PO Resp. 61. Patent Owner further contends
that Tolman does not “suggest creating another redundancy beyond the
redundancy Tolman provided with this second valve on the trees.” Id.
at 61–62. Patent Owner further contends that Petitioner does not explain
why a skilled artisan would “replace or supplement the valve redundancy at
the tree with a valve redundancy in an outlet branch” or why a skilled artisan
“would not just place [Surjaatmadja’s] pressure sensor in the flow path
between Tolman’s manifold valve and the existing additional valve Tolman
describes in the tree.” Id. at 62. Patent Owner further contends that
Petitioner’s contentions are based on improper hindsight. Id. Patent Owner
further contends that “Tolman teaches away from redundant valves in the
outlet branches by providing redundant valves in the trees for the same
purpose, or at least states a preference for placing redundant valves in the
tree.” Id. at 63.
Petitioner counters that it did not rely “only on Tolman’s teachings
regarding enhanced reliability” but explained “that Surjaatmadja alone
provided an explicit motivation to include two valves in series in each outlet
line, with a pressure sensor between them, to monitor pressure and leakage.”
Pet. Reply 29–30 (citing Pet. 54–55; Ex. 1002 ¶¶ 154, 156). Petitioner
further contends that Tolman does not teach away from adding an additional
valve and pressure sensor in its manifold outlet branches because it “never
states that placement of the additional valve in the outlet branch, or the use
of [a] pressure sensor, would be detrimental to reliability.” Id. at 30 (citing
In re Fulton, 391 F. 3d 1195, 1201 (Fed. Cir. 2004)). Petitioner next
contends that it “was not required to explain why a POSITA would not
simply place a pressure sensor between Tolman’s manifold and tree valves”
as demanded by Patent Owner because, according to Petitioner, it explained
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why a skilled artisan would have modified Tolman with Surjaatamadja as
explained in the Petition. Id. For the following reasons, we are persuaded
by Petitioner that claim 5 would have been unpatentable over the
combination of Tolman and Surjaatmadja.
Surjaatmadja discloses, in connection with the Figure 21 embodiment,
that the lines connecting to well heads 1701 and 1702 are provided with
valves 2106, 2108, 2111, and 2113 and pressure sensors 2107 and 2108
placed between the valves in each line. See Ex. 1004 ¶ 144, Fig. 21.
Surjaatmadja discloses “opening the valves along the line to the well to be
treated while the valves along the other line are closed.” Id. ¶ 144. Further,
Surjaatmadja discloses that the pressure sensors can “detect the pressure
within the active line” and “can be used to detect if there is any leakage.”
Id. Tolman discloses that a second valve may be added to the tree to
enhance reliability when the “stimulation fluid may be injected into one or
more of the wells . . . while the other wells . . . may be isolated.” Ex. 1005
¶ 31. Therefore, we agree with Petitioner that both references teach the need
for more than one valve in the exact same application, the fracturing process
when selectively stimulating individual wells. A combination of familiar
elements17 according to known methods “is likely to be obvious when it
does no more than yield predictable results.” KSR, 550 U.S. at 416. Mr. Ely
testifies that “[t]here would have been a reasonable expectation of success
based on Surjaatmadja’s express teaching of the successful use of this
configuration in a similar system and in the exact same application, as well
as Tolman’s suggestion that two such valves enhance the reliability of

17 Dr. Wooley, Patent Owner’s declarant, testified that the use of redundant
valves “has been used in the oilfield forever.” Ex. 1018, 256:19–257:1.
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isolating a well.” Ex. 1002 ¶ 156. We find Mr. Ely’s testimony on this issue
to be credible because it is based on the explicit disclosure of Surjaatmadja
and Tolman. Patent Owner does not rebut Petitioner’s showing that
modifying Tolman with Surjaatamadja’s arrangement of two valves in series
with a pressure sensor would have yielded predictable results. Therefore, we
determine that Petitioner has stated a reason with a rational underpinning for
modifying Tolman’s system to include a second valve in the outlet branches
with a pressure sensor between the valves in order to monitor lines for leaks
as taught by Surjaatmadja. Because this reason for using two valves in the
outlet branches with a pressure sensor located between the valves is
disclosed in Surjaatmadja, Petitioner has not relied on improper hindsight in
this challenge.
Patent Owner’s contention that Petitioner misstates Tolman’s
disclosure of the placement of the second valve at the tree is not persuasive
because this challenge is based on modifying Tolman to place the second
valve in the outlet branch as taught by Surjaatmadja.
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009). A reference
does not teach away “if it merely expresses a general preference for an
alternative invention but does not ‘criticize, discredit, or otherwise
discourage’ investigation into the invention claimed.” DePuy, 567 F.3d at
1327 (citation omitted). Although Tolman discloses placing the second
valve on the tree, such a disclosure does not rise to the level of discouraging
one of ordinary skill in the skill from placing the second valve in the outlet
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branch. Consequently, Patent Owner also does not persuade us that Tolman
teaches away from placing a second valve in the outlet branches.
For all the foregoing reasons, we determine that Petitioner
demonstrates by a preponderance of the evidence that claim 5 would have
been unpatentable over the combination of Tolman and Surjaatmadja but
does not demonstrate that claim 13 would have been unpatentable. For the
reasons discussed above in connection with Ground 1, Petitioner has
demonstrated by a preponderance of the evidence that claims 1, 3, 4, 7, 8,
and 17 are anticipated by Tolman. We, thus, have addressed these
challenged claims. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359 (2018)
(holding that a petitioner “is entitled to a final written decision addressing all
of the claims it has challenged”); see also 35 U.S.C. § 318(a). Accordingly,
we need not and do not decide whether Petitioner has shown by a
preponderance of the evidence that claims 1, 3, 4, 7, 8, and 17 also would
have been obvious over Tolman and Surjaatmadja. Cf. In re Gleave, 560
F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching other grounds of
unpatentability after affirming the anticipation ground); see also Beloit
Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (holding that once
a dispositive issue is decided, there is no need to decide other issues). The
Petition does not set forth an obviousness analysis of claims 11, 12, 14, and
18, and thus, does not demonstrate that those claims would have been
obvious over Tolman and Surjaatmadja.
G. Ground 4: Obviousness over Surjaatmadja, Tolman, and Duhn
Due to the lack of explicit disclosure of fracturing trees in either
Surjaatmadja or Tolman, Petitioner turns to Duhn. Pet. 55–57 (citing
Ex. 1006 ¶¶ 2–5, 22, 43, Fig. 7A). Petitioner contends that “the use of
fracturing trees along with Surjaatmadja and Tolman’s system (Ground 3)
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would have been obvious to a POSITA before the priority date.” Id. at 55
(emphasis added) (citing Ex. 1002 ¶¶ 158–167). Petitioner concludes that
each of claims 1, 3–5, 7, 8, and 14 would have been “obvious in view of the
combination of Surjaatmadja and Tolman and . . . Duhn.” Id. at 61 (citing
Ex. 1002 ¶ 167).
For the reasons discussed above in connection with Ground 1,
Petitioner has demonstrated by a preponderance of the evidence that claims
1. 3–5, 7 and 8 are anticipated by Tolman. Accordingly, we need not and do
not decide whether Petitioner has shown by a preponderance of the evidence
that claims 1, 3–5, 7, and 8 also would have been obvious based on
Surjaatmadja, Tolman, and Duhn.
Claim 14 depends from claim 11. Ex. 1001, 11:15. We determined
above that claim 11 is not anticipated by Tolman. The evidence and
arguments presented by Petitioner do not address the alleged obviousness of
claim 11. Therefore, we determine that Petitioner has not established by a
preponderance of the evidence that claim 14 would have been obvious over
the combination of Tolman, Surjaatmadja, and Duhn.
H. Ground 5: Obviousness over Surjaatmadja, Tolman, and Bertrand
In this ground, Petitioner substitutes Bertrand’s disclosure of
fracturing trees for that of Duhn in Ground 4. Pet. 57–58. Petitioner’s
arguments are substantially identical for this ground as for Ground 4. Id.
at 55–61. Consequently, for the same reasons discussed above in connection
with Ground 4, we do not address whether claims 1, 3–5, 7, and 8 would
have been obvious and determine that Petitioner has not established by a
preponderance of the evidence that claim 14 would have been obvious over
the combination of Surjaatmadja, Tolman, and Bertrand.
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I. Ground 6: Obviousness over Surjaatmadja, Tolman, and Perry
In this ground, Petitioner relies on Perry for disclosure of pipe joints
and elbows as recited in dependent claims 7 and 8. Pet. 61–62. For the
reasons discussed above in connection with Ground 1, Petitioner has
demonstrated by a preponderance of the evidence that claims 7 and 8 are
anticipated by Tolman. We, thus, do not address whether claims 7 and 8
would have been obvious over the combination of Surjaatmadja, Tolman,
and Perry.
J. Ground 7: Obviousness over Surjaatmadja, Tolman, and API 6A
Claim 12, which depends from claim 11, recites that “the multiple
outlet branches are coupled to the trunk line at connection blocks of the
trunk line.” Ex. 1001, 11:7–9. Petitioner contends that claim 12 “would
have been obvious to a POSITA based on the combination of Tolman and
Surjaatmadja (Ground 3) with API 6A.” Pet. 63–64 (emphasis added). We
determined above that claim 11 is not anticipated by Tolman. The evidence
and arguments presented by Petitioner do not address the alleged
obviousness of claim 11. Therefore, we determine that Petitioner has not
established by a preponderance of the evidence that claim 12 would have
been obvious over the combination of Tolman, Surjaatmadja, and API 6A.
K. Ground 8: Obviousness over Surjaatmadja, Tolman, and Bull
Petitioner contends that “[c]laims 2, 6, 9, 10, 15, 16, and 19 depend
from either claim 1, 11, or 17 and require the use of an adjustment joint or a
goat head” and that “these claims would have been obvious to a POSITA
based on the combination of Tolman and Surjaatmadja (Ground 3) and
Bull.” Pet. 68–69 (citing Ex. 1002 ¶¶ 189–215; Ex. 1010).
Claims 2, 6, 15, 16, and 19 require “goat heads,” claim 9 requires “an
adjustable fluid conduit,” and claim 10 requires “an adjustable length pipe
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joint.” Ex. 1001, 9:66–10:3, 10:24–29, 10:35–44, 11:19–25, 12:21–28. The
’800 Patent provides that “goat head” is a commonly used term for an
“adjustable fracturing head.” Ex. 1001, 4:54–55. Adjustable fracturing
heads 60, 62, and 64 are illustrated in Figure 3 of the ’800 Patent. See id. at
Fig. 3. Adjustable fracturing heads 60, 62, and 64 allow operators “to
manipulate the position of the fluid connection 26 by changing a dimension
of the adjustment joint” and “may also be rotated about their axes” in order
to couple “the fracturing manifold 22 to the fracturing tree 20.” Id.
at 4:64–66, 5:2–3, 5:32–33.
Petitioner argues that “goat head” is used synonymously with
“adjustable fracturing head” and “adjustment joint” and contends that these
terms should be construed as “at a minimum piping connectors . . . having an
inlet, an outlet, and allowing fluid flow therethrough, which are capable of
changing at least one dimension.” Pet. 25. Patent Owner does not comment
on Petitioner’s proposed construction. PO Resp. 16–19. For the reasons
discussed below, we need not address the construction of these terms to
resolve this dispute.
Petitioner contends that Bull “teaches the use of joints adapted for use
in high pressure conditions, where the length of the joints can be adjusted to
make connections at a fixed installation, enabling much easier and quicker
fabrication and assembly of high pressure assemblies.” Pet. 69 (citing
Ex. 1010 ¶ 4). Petitioner further contends that one of ordinary skill in the art
“would have used at least two of [Bull’s] joints as components in the piping
system connecting Tolman’s branch pipes to its fracturing trees.” Id. at 72
(citing Ex. 1002 ¶ 196). The first such joint would have been placed “at the
fracturing manifold trunk line and the second at the fracturing tree.” Id.; see
also id. at 75 (illustrating the placement of Bull’s joints by redlines in
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Petitioner’s annotated Figure 2 of Tolman). According to Petitioner, Bull
specifically suggests this placement because it teaches “that its adjustable
joints are adapted to be ‘installed in a piping installation by being
structurally interconnected to other fixed components within that
installation’” which “would provide the ability to more easily connect the
two fixed components of the fluid delivery installation.” Id. at 72–73 (citing
Ex. 1010 ¶ 19); see also id. at 75–76 (referring to annotated Figure 2 in
connection with claim 2). Petitioner also contends that a person of ordinary
skill in the art would have been motivated to place at least one of Bull’s
joints “downstream of each branch line’s two isolation valves” because “in
the event of a failure in the joint . . . during operation, the isolation valves
may be used to shut down flow and prevent major leaks or system damage.”
Id. at 74 (citing Ex. 1002 ¶¶ 196-197). Patent Owner does not comment on
Petitioner’s contentions concerning the disclosure of Bull. See generally id.;
Ex. 2003, ¶¶ 152–157.
Claim 2, which depends from claim 1, requires “a first goat head at
the fracturing manifold and a second goat head at a fracturing tree” and “the
first goat head and the second goat head are in fluid communication with
each other.” Ex. 1001, 9:66–10:3. Even accepting Petitioner’s contention
that Bull’s adjustable joints correspond to the recited goat heads, Petitioner
does not direct us to any disclosure in Bull of placing its joints at the
locations recited in claim 2 or why the first and second goat heads are in
fluid communication. Bull’s paragraph 19, relied on by Petitioner for the
placement of the goat heads, discloses that the joints may be used in “H-
manifolds, squeeze manifolds, marine installations, offshores skid
installations, and total bypass lines.” Ex. 1010 ¶ 19. Bull does not disclose
or suggest placing its joints at a fracturing manifold or at a fracturing tree or
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why two such goat heads in Tolman’s fracturing manifold should be in fluid
communication with each other. Mr. Ely’s testimony on why one of
ordinary skill in the art would be motivated to place goat heads in the
specific locations recited in claim 2 is based on general disclosures in Bull
about the use of its adjustable joints, not on evidence from Bull concerning
where such joints are placed, and is not persuasive. See Ex. 1002 ¶¶ 190–
199. Petitioner has, thus, not established that Bull discloses the limitations
of claim 2. For these reasons, Petitioner has not established by a
preponderance of the evidence that claim 2 would have been obvious over
the combined teachings of Tolman, Surjaatmadja, and Bull.
Claim 6, which depends from claim 5, requires “a goat head attached
in series with the two valves of the first outlet branch” of the fracturing
manifold. Ex. 1001, 1024–27. Petitioner relies on the same combination as
discussed above for claim 2. Pet. 77–78. Bull does not disclose or suggest
placing its joints in the outlet branch of a fracturing manifold. Petitioner
has, thus, not established that Bull discloses the limitations of claim 6. For
these reasons, Petitioner has not established by a preponderance of the
evidence that claim 6 would have been obvious over the combined teachings
of Tolman, Surjaatmadja, and Bull.
Claim 9, which depends from claim 1, requires that “the at least one
rigid fluid conduit is an adjustable fluid conduit that allows an operator to
vary a dimension of the fluid conduit to facilitate coupling of the fluid
conduit between the fracturing manifold and a fracturing tree.” Ex. 1001,
10:35–39. Petitioner relies on the same combination as discussed above for
claim 2. Pet. 78–79. Bull does not disclose or suggest placing its joints in a
rigid fluid conduit between a fracturing manifold and a fracturing tree.
Petitioner has, thus, not established that Bull discloses the limitations of
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claim 9. For these reasons, Petitioner has not established by a
preponderance of the evidence that claim 9 would have been obvious over
the combined teachings of Tolman, Surjaatmadja, and Bull.
Claim 10, which depends from claim 1, requires that “the at least one
rigid fluid conduit includes an adjustment joint that provides at least one
translational degree of freedom.” Ex. 1001, 1040–44. Petitioner relies on
the same combination as discussed above for claim 2. Pet. 79. Bull does not
disclose or suggest placing its joints in a rigid fluid conduit between a
fracturing manifold and a fracturing tree. Petitioner has, thus, not
established that Bull discloses the limitations of claim 10. For these reasons,
Petitioner has not established by a preponderance of the evidence that
claim 10 would have been obvious over the combined teachings of Tolman,
Surjaatmadja, and Bull.
Claims 15 and 16 depend from claim 11 and claim 19 depends from
claim 18. Ex. 1001, 11:19–25, 12:21–28. We determined above that
claims 11 and 18 are not anticipated by Tolman. The evidence and
arguments presented by Petitioner for claims 15, 16, and 19 do not address
the alleged obviousness of claims 11 and 18. Therefore, we determine that
Petitioner has not established by a preponderance of the evidence that
claims 15, 16, and 18 would have been obvious over the combination of
Tolman, Surjaatmadja, and Bull.
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III. CONCLUSION18
In summary:
Claim(s)
35
U.S.C. §
References/
Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1, 3–5, 7,
8, 11–14,
17, 18
102 Tolman 1, 3, 4, 7, 8,
17
5, 11–14, 18
1, 3–5, 7,
8, 11–14,
17, 18
102 Surjaatmadja 1, 3–5, 7, 8,
11–14, 17, 18
1, 3–5, 7,
8, 11–14,
17, 1819
103 Surjaatmadja,
Tolman
5 11, 12, 13 14,
18
1, 3–5, 7,
8, 1420
103 Surjaatmadja,
Tolman, Duhn

1, 3–5, 7,
8, 1421
103 Surjaatmadja,
Tolman, Bertrand

18 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
19 As discussed above, we do not reach this ground for claims 1, 2, 4, 7, 8,
and 17.
20 As discussed above, we do not reach this ground.
21 As discussed above, we do not reach this ground.
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Claim(s)
35
U.S.C. §
References/
Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
7, 822 103 Surjaatmadja,
Tolman, Perry

12 103 Surjaatmadja,
Tolman, API 6A
12
2, 6, 9, 10,
15, 16, 19
103 Surjaatmadja,
Tolman, Bull
2, 6, 9, 10, 15,
16, 19
Overall Outcome 1, 3–5, 7, 8, 17
2, 6, 9–16, 18,
19

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that, based on a preponderance of the evidence, claims 1,
3–5, 7, 8, 13, and 17 of the ’800 Patent are unpatentable as set forth in the
summary table above;
FURTHER ORDERED that claims 2, 6, 9–16, 18, and 19 of the
’800 Patent have not been shown to be unpatentable;
FURTHER ORDERED that, because this is a Final Written Decision,
parties to this proceeding seeking judicial review of this Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

22 As discussed above, we do not reach this ground.
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FOR PETITIONER:
James Hall
james@chzfirm.com

J. David Cabello
david@chzfirm.com

Stephen Zinda
stephen@chzfirm.com

FOR PATENT OWNER:
John Keville
jkeville@winston.com