Innovative Pressure Testing, LLC

Patent Trials and Appeals Board

Oct 28, 2021

IPR2020-00923 (P.T.A.B. Oct. 28, 2021)

Trials@uspto.gov Paper 43
571-272-7822 Date: October 28, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

OFFSHORE TECHNICAL COMPLIANCE, LLC,
Petitioner,

v.

INNOVATIVE PRESSURE TESTING, LLC,
Patent Owner.
____________

IPR2020-00923
Patent 9,207,143 B2
____________

Before MICHAEL R. ZECHER, PATRICK M. BOUCHER, and
NATHAN A. ENGELS, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
Denying Patent Owner’s Motion to Amend
35 U.S.C. § 318(a)

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In response to a Petition (Paper 1, “Pet.”) filed by Offshore Technical
Compliance, LLC (“Petitioner”), we instituted an inter partes review of
claims 1–17 of U.S. Patent No. 9,207,143 B2 (Ex. 1001, “the ’143 patent”).
Paper 10 (“Dec.”).1 During the trial, Innovative Pressure Testing, LLC
(“Patent Owner”) filed a Response (Paper 15, “PO Resp.”), Petitioner filed a
Reply (Paper 22, “Reply”), and Patent Owner filed a Sur-reply (Paper 27,
“Sur-reply”).
Patent Owner also filed a Motion to Amend the claims of the ’143
patent. Paper 20. Taking into account Petitioner’s opposition to that
Motion, we issued Preliminary Guidance on Patent Owner’s Motion. Papers
23, 25. Patent Owner subsequently filed a revised Motion to Amend the
claims of the ’143 patent that includes proposed substitute claims 19–35.
Paper 28 (“Mot. Amend”). Petitioner opposed Patent Owner’s revised
Motion to Amend (Paper 32, “Opp. Amend”), Patent Owner replied (Paper
36, “Reply Amend”), and Petitioner sur-replied (Paper 38, “Sur-reply
Amend”).
An oral hearing was held with the parties, and a copy of the transcript
was entered into the record. Paper 42 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
Written Decision under 35 U.S.C. § 318(a) as to the patentability of the

1 The Petition requested review of claims 1–18, but Patent Owner filed a
statutory disclaimer of claim 18. Pet. 3; Ex. 2001; see 37 C.F.R. § 42.107(e)
(“The patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in
compliance with § 1.321(a) of this chapter, disclaiming one or more claims
in the patent. No inter partes review will be instituted based on disclaimed
claims.”); Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365,
1372 (Fed. Cir. 2018).
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claims on which we instituted trial. Based on the record before us, Petitioner
has shown, by a preponderance of the evidence, that (1) claims 1–17 of the
’143 patent are unpatentable; and (2) Patent Owner’s proposed substitute
claims 19–35 are unpatentable.

I. BACKGROUND
A. The ’143 Patent
1. Overview
The ’143 patent describes systems and methods “for detecting leaks
and for testing the pressure integrity of a pressure system,” specifically “for
reliably and efficiently verifying the pressure integrity of equipment such as
the blowout preventers [(“BOPs”)] and valve components located in deep
water oil and gas operations.” Ex. 1001, 1:17–25. Figure 7 of the ’143
patent is reproduced below.

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Figure 7 is a flowchart that depicts a method for detecting leaks in a pressure
system. Id. at 5:21–23. A fluid pumping unit coupled to the pressure
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system introduces a volume of test fluid into the system at step 705, thereby
providing a test pressure Ptest that exceeds a minimum pressure threshold
Pthreshold that the system should maintain without leaking. Id. at 12:13–20. A
pressure sensor senses fluid pressure within the system and transmits a
signal before, during, and after the test fluid is pumped into the system, as
indicated at steps 710, 715, and 720. Id. at 12:44–49. At step 725, a “leak
detection value” is calculated, which the ’143 patent defines as
Leak Detection Value = �1 − Pressuretime0
Pressuretime1
� × 100.
Id. at 12:63–65, 11:10–19. Although leak detection values are calculated for
a time interval between “time0” and “time1,” the ’143 patent contemplates a
number of variations that include continuous calculation, smoothing,
averaging, normalizing, and curve fitting. Id. at 12:65–13:11.
The remainder of Figure 7 applies to an initial leak detection test, as
indicated at step 730, in which case “measurements of the test pressure
typically are taken for a selected period of time, such as five, ten, fifteen
minutes, or longer.” Id. at 13:17–24. If the calculated leak detection value
fails to meet certain leak threshold requirements, such as by exceeding a
value of ±0.1 or ±0.2, the test is deemed to have failed at step 750 with a
retest performed at step 760 after troubleshooting at step 755. Id. at 13:35–
41, 14:26–46. If the leak threshold requirements are instead met, as checked
at step 740, the results of this initial test are recorded as a benchmark at step
765 “by which future leak detection tests of the same or similar components
are evaluated.” Id. at 13:65–14:3.
The method for such subsequent tests is illustrated with reference to
Figure 8, which is reproduced below. See id. at 13:29–33.
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Figure 8 is a continuation of the flowchart of Figure 7, depicting a method
for detecting leaks in a pressure system after a benchmark has been
established. Id. at 5:24–26. A comparison of the leak detection value
against the initial leak detection value stored as a benchmark is performed at
step 805. Id. at 14:50–54. If the comparison indicates that the leak detection
value is less than or equal to the benchmark, as indicated at step 810, the test
is declared passed at step 820. Id. at 14:55–15:5. As an alternative to
comparing the leak detection value against a benchmark, the leak detection
value may be compared to the leak threshold at step 815 and declared passed
at step 820 if it does not meet the threshold value. Id. at 15:21–28.
This method may be adapted “to create a test plan for automatically
testing the pressure integrity of each critical component in the pressure
system, even if the components are located remotely from one another or on
different fluid pathway.” Id. at 23:40–46. Such a test plan “can include a
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planned sequence of test steps which test all the critical fluid control
components in the pressure system.” Id. at 23:46–48. In particular,
the leak detection system can continuously monitor the
parameters of the leak detection test, such as the fluid pressure
. . . and the flow rate or the flow volume . . . at designated time
intervals throughout the planned sequence of test steps, to
automatically confirm that each test step has been properly
performed and to verify that each fluid control component
tested during the procedure will hold against the designated
pressure.

Id. at 23:48–58.
Figure 16 of the ’143 patent is reproduced below.
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Figure 16 is a flowchart depicting “a method for testing the pressure
integrity of a pressure system having a plurality of fluid control components
operable to define a plurality of fluid pathways, and at least one pressure
sensor positioned to measure a pressure of a fluid contained within one of
the fluid pathways.” Id. at 31:11–16. Step 1302 provides “a computer
system operable to form a schematic illustration of a pressure system on a
visually perceivable output, which schematic illustration includes symbols
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reflective of a plurality of fluid control components and a plurality of fluid
pathways of the pressure system.” Id. at 31:16–21. One example of such a
schematic illustration is shown in Figure 10 of the ’143 patent (not
reproduced here) for the piping system of a subsea blowout-preventer stack.
Id. at 23:59–62. At step 1304, a pressure sensor is configured to sense and
transmit a signal reflective of a pressure in the fluid pathways. Id. at 31:21–
25.
The method of Figure 16 further includes positioning a first plurality
of fluid control components at step 1306 to form a first fluid pathway that
includes the pressure sensor, pressurizing the first fluid pathway to a first
test pressure at step 1308, monitoring the pressure within the first fluid
pathway for a first period of time at step 1310, and calculating a first test
status from a variance in the pressure within the first fluid pathway during
the first period of time at step 1312. Id. at 31:26–33. The method also
includes similarly positioning a second plurality of fluid control components
at step 1314 to form a second fluid pathway that includes the pressure
sensor, pressurizing the second fluid pathway to a second test pressure at
step 1316, monitoring the pressure within the second fluid pathway for a
second period of time at step 1318, and calculating a second test status from
a variance in the pressure within the second fluid pathway during the second
period of time at step 1320. Id. at 31:34–43.

2. Prosecution History
The application that matured into the ’143 patent was filed on
November 8, 2011, as a continuation-in-part of U.S. Patent Appl. No.
12/833,216 (now U.S. Patent No. 8,380,448 B2, “the parent patent”).
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Ex. 1009, 113 (Filing Receipt); Ex. 1001, code (63). The parent patent
claims the benefit of two provisional applications, namely U.S. Prov. Patent
Appl. No. 61/234,736, filed August 18, 2009, and U.S. Prov. Patent Appl.
No. 61/311,863, filed March 9, 2010. Ex. 1009, 113; Ex. 1001, code (60).
The disclosure of the ’143 patent differs from that of the parent patent
primarily by including “ADDITIONAL EMBODIMENTS” described at
column 23, line 38 to column 33, line 39 of the ’143 patent. Such additional
embodiments generally describe “creat[ing] a test plan for automatically
testing the pressure integrity of each critical component in the pressure
system, even if the components are located remotely from one another or on
[a] different fluid pathway.” Ex. 1001, 23:40–46.
In a first Office Action, the Examiner rejected most of the originally
filed claims, including all of the originally filed independent claims, as
anticipated by U.S. Patent Publ. No. 2006/0032550 A1 (“Wodjenski”), and
rejected other claims for obviousness over Wodjenski and U.S. Patent No.
4,383,436 (“Hailey”). Ex. 1009, 278–295. Nevertheless, the Examiner also
indicated that certain claims would be allowable if rewritten in independent
form, including those that recited a “third fluid pathway” configured to
receive pressurized fluid if the “first fluid pathway” fails to maintain the
“first test pressure.” Id. at 295–297. The Applicant accordingly amended
the claims to include such a recitation in each of the independent claims,
with the amended claims subsequently allowed in substantially that form.
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Id. at 315–327 (Amendment), 367–375 (Notices of Allowance and
Allowability).2

3. Effective Filing Date of Challenged Claims
Noting that the ’143 patent was filed as a continuation-in-part of the
parent patent, Petitioner asserts that “each claim of the ’143 patent includes
material added in the continuation-in-part, i.e., a schematic of a pressure
system displayed on a computer monitor.” Pet. 6. Accordingly, Petitioner
contends that the effective filing date of each challenged claim is
November 8, 2011, the filing date of the ’143 patent. Id. Patent Owner does
not dispute this contention. See Ex. 1014, 3 (Patent Owner asserting in
related litigation that “[a]ll Asserted Claims are entitled to the priority date
of November 9, 2011”3). Furthermore, we agree with Petitioner that the
challenged claims recite limitations that find support only in the material
added in the continuation-in-part, namely among the “ADDITIONAL
EMBODIMENTS” described at column 23, line 38, to column 33, line 39,
of the ’143 patent.

2 Minor additional amendments were made to correct informalities that led
to objections by the Examiner. See Ex. 1009, 333–335 (Examiner
identifying informalities), 352–359 (Amendment correcting informalities).
In addition, the Examiner raised a rejection under 35 U.S.C. § 101 that was
successfully traversed by the Applicant without further amendment to the
claims. Id. at 335–336 (rejection by Examiner), 360–362 (Applicant
traversal).
3 The date of “November 9, 2011” in Patent Owner’s assertion appears to be
an error, and meant to refer to November 8, 2011, which is the actual filing
date of the ’143 patent. None of the claims made by the ’143 patent to
earlier effective filing dates refer to a date of November 9, 2011. See
Ex. 1001, codes (60), (63).
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We therefore accord the challenged claims an effective filing date of
November 8, 2011, i.e., the filing date of the ’143 patent.

4. Illustrative Claim
Independent claim 1 is illustrative of the challenged claims and is
reproduced below with elements numbered in accordance with a scheme
introduced by Petitioner.
1. [1.1] A method for testing the integrity of a pressure
system, said pressure system having a plurality of fluid control
components, a plurality of fluid pathways defined by said fluid
control components, and at least one pressure sensor in fluid
communication with said plurality of fluid pathways, said
method comprising:
[1.2] forming, on an output device of a computer system,
an illustration representative of said pressure system, said
illustration including a plurality of fluid control symbols
reflective of said plurality of fluid control components, said
fluid control symbols reflecting at least one of an operating
position and a test status of a fluid control component;
[1.3] receiving, by the computer system, a selection of an
operating position for a first plurality of fluid control symbols
to define a first fluid pathway within said illustration;
[1.4] receiving, by the computer system, a selection of an
operating position for a second plurality of fluid control
symbols to define a second fluid pathway within said
illustration;
[1.5] receiving, by the computer system, a signal
reflective of a pressure sensed by said pressure sensor;
[1.6] positioning a first plurality of fluid control
components to form said first fluid pathway within said
pressure system, said first fluid pathway configured to be
individually pressurized and including said pressure sensor;
[1.7] pressurizing said first fluid pathway to a first test
pressure, causing said pressure sensor to generate a signal
reflective of a first pathway pressure;
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[1.8] receiving, by the computer system, said signal
reflective of said first pathway pressure at time t1 and at time t2;
[1.9] comparing, by the computer system, said first
pathway pressure at time t1 and at time t2 and calculating, by the
computer system, a first test status of said first fluid pathway
from a difference in said first pathway pressure from time t1 to
time t2;
[1.10] displaying on the output device said first test
status;
[1.11] positioning a second plurality of fluid control
components to form said second fluid pathway within said
pressure system, said second fluid pathway configured to be
individually pressurized and including said pressure sensor;
[1.12] pressurizing said second fluid pathway to a second
test pressure, causing said pressure sensor to generate a signal
reflective of a second pathway pressure;
[1.13] receiving, by the computer system, said signal
reflective of said second pathway pressure at time t3 and at time
t4;
[1.14] comparing, by the computer system, said second
pathway pressure at time t3 and at time t4 and calculating, by the
computer system, a second test status for said second fluid
pathway from a difference in said second pathway pressure
from time t3 to time t4;
[1.15] displaying on the output device said second test
status;
[1.16] positioning a third plurality of fluid control
components to form a third fluid pathway within said pressure
system, said third fluid pathway being configured to receive
said pressurized fluid if said first fluid pathway fails to maintain
said first test pressure; and
[1.17] venting said third fluid pathway to atmosphere.

Ex. 1001, 33:42–34:32; Ex. 1002, 1–3.

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B. Evidence
Petitioner relies on the following references:
Wodjenski US 2006/0032550 A1 Feb. 16, 2006 Ex. 1004
Winters US 2008/0185143 A1 Aug. 7, 2008 Ex. 1005
Franklin US 2011/0046903 A1 Feb. 24, 2011 Ex. 1006

Peter R. Wylge, Blowout Prevention in California (10th ed. 2006)
(Ex. 1003) (“BOP California”).

In addition, Petitioner relies on Declarations by Mark Anderson.
Exs. 1007, 1034, 1037. Mr. Anderson was cross-examined by Patent
Owner, and transcripts of his depositions have been entered into the record.
Exs. 2003, 2024, 2038. Patent Owner relies on Declarations by John P.
Rodgers (Exs. 2002, 2004, 2025, 2037), Charles M. Franklin (Exs. 2007,
2036), Richard A. Cully (Exs. 2010, 2033), and Thomas L. Warden
(Ex. 2035). Mr. Rodgers was cross-examined by Petitioner, and a transcript
of his deposition has been entered into the record. Ex. 1035.

C. Instituted Grounds of Unpatentability
Petitioner challenges the claims of the ’143 patent based on the
following grounds. Pet. 3, 33–80.
Claims
Challenged
35 U.S.C. §4 References
1–17 103(a) BOP California, Wodjenski, Winters
1–17 103(a) BOP California, Wodjenski, Franklin
1–10, 12–15 103(a) Wodjenski, BOP California

4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended various provisions of 35 U.S.C. Because
the ’143 patent was filed before March 16, 2013 (the effective date of the
relevant amendment), the pre-AIA versions of those provisions apply.
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D. Real Parties in Interest
In addition to itself, Petitioner identifies Hecate Software Inc. as a real
party in interest. Pet. 1. Patent Owner identifies both itself and IPT Global,
LLC as real parties in interest. Paper 4, 1.

E. Related Matters
Both parties identify IPT Global, LLC v. Offshore Technical
Compliance LLC, No. 4:19-cv-3230 (S.D. Tex.) as a related matter. Pet. 1;
Paper 4, 1.

II. ANALYSIS
A. Legal Principles
A claim is unpatentable for obviousness under 35 U.S.C. § 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
indicia of nonobviousness, i.e., secondary considerations.5 Graham v. John
Deere Co., 383 U.S. 1, 17–18 (1966).

5 The parties do not address objective indicia of nonobviousness, which
accordingly do not form part of our analysis.
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Additionally, the obviousness inquiry typically requires an analysis of
“whether there was an apparent reason to combine the known elements in
the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”)); see In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333
(Fed. Cir. 2016) (citing DyStar Textilfarben GmbH & Co. Deutschland KG
v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)).

B. Testimony of Mr. Anderson
Patent Owner contends that the testimony provided by Petitioner’s
expert, Mr. Anderson, is tainted by “extreme bias and financial conflicts of
interest” such that we should “disregard in whole and give no weight to the
opinions set forth in his Declaration.” PO Resp. 46. To support its
allegation of extreme bias and financial conflicts of interest, Patent Owner
directs our attention primarily to certain facts brought out during Patent
Owner’s cross-examination of Mr. Anderson.
First, Mr. Anderson described work on a project referred to as
“BOPX” while he was employed at Shell that led to the eventual
replacement by Shell of Patent Owner’s SureTec® software, which Shell had
previously used, with “EZ Chart” software developed as part of the BOPX
project. Ex. 2003, 17:4–28:4. After leaving Shell, Mr. Anderson entered
into a contract with BOPX LLC, which was formed to deploy technology
developed as part of the Shell BOPX project. Id. at 28:5–29:15. According
to that contract, a portion of Mr. Anderson’s compensation is provided as a
commission “calculated as a percentage of business that [he] bring[s] to
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BOPX.” Id. at 29:16–32:14. During his deposition, Mr. Anderson agreed
that, “under [his] business development contract with BOPX to help BOPX
find customers to deploy their EZ Chart software product” when “that work
leads to a customer transitioning from their use of the patent owner IPT’s
SureTec[®] software to BOPX’s EZ Chart software product, [he] then would
receive a commission.” Id. at 34:5–12. Patent Owner characterizes this
arrangement as follows: “Anderson has positioned himself to profit from
sales in direct competition with Patent Owner’s SureTec® software
application, giving Anderson a financial incentive to invalidate the ‘143
Patent, to clear the path for more profits for him.” PO Resp. 45.
Second, Mr. Anderson described giving a lecture at Texas A&M
University on BOP testing. Ex. 2003, 10:11–11:12. “One of the professors
there said this is an interesting subject because he had just been contacted by
a law firm and he thought that [Mr. Anderson] was -- would be qualified to
help that law firm.” Id. at 11:2–5. Mr. Anderson contacted the law firm,
was considered through a process, and retained as an expert witness. Id.
at 11:6–12. Patent Owner characterizes this activity as follows: “[Mr.
Anderson’s] conflicting financial incentive [from his contract with BOPX
LLC] apparently led [Mr.] Anderson to solicit Petitioner’s counsel and
volunteer to serve as an expert in the district court litigation and this inter
partes review.” PO Resp. 45.
We have reviewed Mr. Anderson’s deposition testimony, but do not
find these facts warrant a conclusion that Mr. Anderson’s testimony is
improperly tainted by bias. As Petitioner points out, Mr. Anderson is like
most experts in having business interests related to the industry as a whole.
See Reply 8. And “Mr. Anderson presented testimony under oath, and
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nothing in that testimony or otherwise suggests that he broke that oath or
testified untruthfully.” Id. at 9.
In this context, we have also considered Patent Owner’s further
argument that Mr. Anderson’s “extreme bias and financial interest is
reflected and compounded in the misleading description of the prior art in
his Declaration, including his misleading references to the ‘status’ of fluid
control components in the Wodjenski patent’s discussion of ‘operating
status,’ which Anderson deceptively refers to as the ‘test status.’” PO
Resp. 45. Patent Owner was afforded the opportunity to provide contrary
expert testimony and to test Mr. Anderson’s testimony through cross-
examination, both of which are traditional mechanisms to guard against
deceptive testimony and which we are in a position to evaluate. We further
discuss this point in the substantive context where it arises, infra § II.E.7.
We thus find insufficient basis to discount Mr. Anderson’s opinions
solely upon his alleged bias, and we accord them due weight in this
Decision.

C. Level of Ordinary Skill in the Art
In determining whether an invention would have been obvious at the
time it was made, we consider the level of ordinary skill in the pertinent art
at the time of the invention. Graham, 383 U.S. at 17. “The importance of
resolving the level of ordinary skill in the art lies in the necessity of
maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v.
Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The “person of ordinary
skill in the art” is a hypothetical construct, from whose vantage point
obviousness is assessed. In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir.
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1998). “This legal construct is akin to the ‘reasonable person’ used as a
reference in negligence determinations” and “also presumes that all prior art
references in the field of the invention are available to this hypothetical
skilled artisan.” Id. (citing In re Carlson, 983 F.2d 1032, 1038 (Fed. Cir.
1993)).
Supported by the testimony of Mr. Anderson, Petitioner proposes that
a person of ordinary skill in the art “would have a bachelor’s degree in
petroleum engineering, mechanical engineering, computer science or a
similar technical field and two year’s work experience including training on
any computer programming or petroleum engineering lacking in the degree
plan.” Pet. 8 (citing Ex. 1007 ¶ 36). “Alternatively,” according to
Petitioner, a person of ordinary skill in the art “would have five years of
work experience within petroleum engineering or mechanical engineering,
and proficiency in computer programming.” Id. (citing Ex. 1007 ¶ 36).
Supported by the testimony of Dr. Rodgers, Patent Owner instead
proposes that a person of ordinary skill in the art “would have a combination
of: (A) at least one year of practical experience in leak detection or pressure
testing of multi-component systems and an undergraduate level science or
engineering degree; or (B) at least three years of practical experience in
designing systems for leak detection or pressure testing.” PO Resp. 18
(citing Ex. 2004 ¶¶ 16–17). Patent Owner elaborates:
More specifically, the science or engineering degree should be
one of mechanical engineering, petroleum engineering, or
physics where practical skills are taught related to fluids,
hydraulics, and pressure management. The on-the-job
experience requirement should include the design and operation
of digital data acquisition systems used for pressure
measurement in hydraulic or fluid systems with specific
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application to pressure or leak testing. Familiarity with oilfield
equipment and operations would also be a part of the required
experience. In the absence of the bachelor’s degree, the [person
of ordinary skill in the art] should at least have a strong high-
school mathematics background to ensure adequate
understanding of the underlying concepts.

Id. at 19 (citing Ex. 2004 ¶ 16). Patent Owner specifically disagrees with
the level of ordinary skill as articulated by Petitioner because “a computer
science degree would not provide an adequate educational background as it
lacks the physics content related to understanding fluids and hydraulics that
are necessary for leak testing,” and because “the practical experience should
be more focused than what is suggested by Petitioner.” Id. (citing Ex. 1007
¶¶ 35–36). Specifically, Patent Owner asserts, “[e]xperience with physics,
materials, drilling components, and computer programming software are not
specific enough. The experience must include digital data acquisition and
pressure testing.” Id. (citing Ex. 2004 ¶ 17).
It is not apparent to us that the specific detailed requirements set forth
by Patent Owner in its proposal are necessary aspects of the level of ordinary
skill, particularly when considered within the context of the issues before us.
Indeed, Patent Owner concedes that, notwithstanding its disagreement with
Petitioner’s articulation, “Patent Owner does not believe that the distinctions
would be dispositive in resolving the Petitioner’s challenges to the claims as
asserted in the Petition.” Id. at 20. Accordingly, we adopt Petitioner’s
proposal, but note that we would reach the same ultimate conclusions with
respect to patentability of both the challenged claims and the substitute
claims proposed by Patent Owner’s revised Motion to Amend under Patent
Owner’s proposal.
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D. Claim Construction
The Board uses “the same claim construction standard that would be
used to construe the claim in a civil action under 35 U.S.C. 282(b), including
construing the claim in accordance with 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.” 37 C.F.R. § 42.100(b)
(2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005)
(en banc). The specification may reveal a special definition given to a claim
term by the patentee. Phillips, 415 F.3d at 1316. If an inventor acts as his or
her own lexicographer, the definition must be set forth in the specification
with reasonable clarity, deliberateness, and precision. Renishaw PLC v.
Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998).
According to Patent Owner, “[t]he terms used in the ‘143 patent are
all understandable to a [person of ordinary skill in the art] with plain and
ordinary meaning.” PO Resp. 20. Nevertheless, Patent Owner disputes
Petitioner’s express proposed constructions of several terms, characterizing
those proposed constructions as incorrect “alternate definitions.” Id. We
accordingly expressly consider the construction of several terms recited in
the claims.

1. Expressly Defined Terms
As Petitioner notes, the inventors of the ’143 patent “served as their
own lexicographer for many terms” in a “DEFINITIONS” section of the
patent. Pet. 8 (citing Ex. 1001, 6:31–7:51). We adopt those express
definitions, specifically including those called out by Petitioner. See id.
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In particular, we construe “blowout preventer” and “BOP” as “a
component used to control wellbore pressure during a high-pressure event.”
See Ex. 1001, 6:33–35. The ’143 patent identifies a number of different
types of blowout preventers that fall within the scope of this construction.
Id. at 6:35–42.
We construe “schematic illustration” as “a diagram or image of a set
of fluid control components in the pressure system.” See id. at 6:53–55. In
the case of a blowout preventer stack piping system, the ’143 patent
specifically identifies a schematic illustration as including “the choke
manifold, the BOP stack [(which is “a group of BOP components)], the
chock line, the kill line, the fluid pumping units, the various valves and the
piping connections between them.” Id. at 6:55–58.
We construe “fluid control component” as “one item in the schematic
illustration that maps to a pressure-containing item in the pressure system.”
See id. at 6:63–65. The ’143 patent identifies examples of such fluid control
components as including “a valve, a BOP, a choke, a vessel or container, a
rigid pipe, a flexible hose, etc.” Id. at 6:65–67.
We construe “at least one” as an “open-ended expression[] that [is]
both conjunctive and disjunctive in operation,” thereby including all
combinatorial possibilities of any following list of items. See id. at 7:15–22.

2. “forming” and “generating”
Independent claim 1 recites, in relevant part, “forming, on an output
device of a computer system, an illustration representative of said pressure
system.” Ex. 1001, 33:48–49. Independent claim 12 recites, in relevant
part, “generating a schematic illustration of said pressure system on an
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output device of a computer system.” Id. at 35:17–18. During the
preliminary phase of this proceeding, we authorized the parties to provide
additional briefing addressing construction of “forming” and “generating” in
these recitations. Papers 6 (authorization to provide briefing), 7 (Petitioner’s
position), 9 (Patent Owner’s position).
After considering the parties’ positions, we made the following
preliminary determinations: (1) as used in the claims, “forming” and
“generating” are equivalent; (2) both terms mean “bringing into existence”
or “creating”; and (3) both terms are distinct from “displaying.” Dec. 16–17.
During the trial, neither party requested reconsideration of those preliminary
determinations, but instead reiterated that the plain and ordinary meaning of
the terms should apply. See PO Resp. 20 (Patent Owner asserting that “these
limitations should be construed as having their plain and ordinary meaning,
including their commonly recognized synonym ‘creating’”); Reply 11–12
(Petitioner acknowledging the Board’s preliminary construction and Mr.
Rodgers’s agreement that “these terms are used in their plain and ordinary
meaning”); Tr. 16:7–12 (counsel for Petitioner at oral hearing summarizing
that “[n]either party presented forming or generating to be construed. Both
parties agree now that the plain and ordinary meaning should apply. Both
parties agree now that that -- forming and generating are essentially equal
terms. Both parties agree that those terms essentially mean creating.”). In
addition, both parties have applied our preliminary construction in their
arguments as directed at the prior art. See PO Resp. 49–51; Reply 11–14.
We accordingly discern no compelling reason to alter our preliminary
determinations regarding the construction of “forming” and “generating,”
and, therefore, adopt those determinations for this Decision.
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3. “comparing . . . pressure”
Independent claim 1 recites two time-separated pressure comparisons:
“comparing, by the computer system, said first pathway pressure at time t1
and at time t2,” and “comparing, by the computer system, said second
pathway pressure at time t3 and at time t4.” Ex. 1001, 34:6–7, 34:21–22.
According to Petitioner, each such “term should be construed to mean
[c]alculating a leak detection value” according to the ’143 patent’s definition
of an “LDV” (see supra § I.A.1.). Pet. 8–9. Patent Owner disputes this
because “[t]he LDV is a very specific calculation described in dependent
claim 11 while [the ‘comparing’ limitation] describes a broader context of
comparing values and then performing a different type of calculation, based
on a pressure difference.” PO Resp. 20–21.
We agree with Patent Owner that “[t]he pressure comparison at two
successive timesteps is nothing more than that: a simple comparison of two
successive pressure values.” See id. at 20. Such a comparison is both
consistent with the plain and ordinary meaning of the word “comparing” and
reinforced by the doctrine of claim differentiation as implicated by
dependent claim 11, as Patent Owner argues. See Liebel-Flarsheim Co. v.
Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004).
Accordingly, we construe the “comparing . . . pressure” limitations in
accordance with their plain and ordinary meaning as requiring a comparison
of successive pressure values.

4. “test status”
Independent claims 1 and 12 (as well as certain dependent claims)
recite the calculation of various forms of a “test status.” See, e.g., Ex. 1001,
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33:53, 34:8, 34:11, 34:23, 34:26. According to Petitioner, “[t]o the extent
this term is definite, it should be construed to mean a conclusion of leak or
no leak.” Pet. 11. Patent Owner counters that Petitioner’s proposal is “not
correct” because “a non-passing status does not necessarily imply that a leak
is present,” and because “[t]est status can also include not yet tested.” PO
Resp. 22. As an example, Patent Owner notes that “[a] test could fail if
thermal equilibrium has not been reached or if insufficient time has passed
for the pressure behavior to stabilize to the point where a passing result can
be determined.” Id. This observation appears consistent with the ’143
patent’s explanation that “operators of pressure systems frequently hold a
test pressure within the pressure system for a significant period of time . . .
to allow the temperature of the fluid to stabilize and to reach what is
essentially or effectively steady-state test pressure.” See Ex. 1001, 2:38–45.
To support its position, Petitioner quotes some language from the ’143
patent’s specification that suggests a relationship between test status and the
presence or absence of a leak. Pet. 11 (citing Ex. 1001, 7:6–9, 7:54–64,
20:32–36). But that language is, at best, ambiguous, and Patent Owner
supports its position with persuasive testimony by Mr. Rodgers. Ex. 2004
¶ 33. Moreover, certain claims, such as independent claim 12, explicitly
provide that a “test status” is selected from a “passing status” and a “fail
status,” rather than by making reference to the presence or absence of a leak.
See Ex. 1001, 35:33–35, 35:49–50. We discern insufficient reason to accord
the equivalence of “passing status” with “no leak” and “fail status” with
“leak,” as Petitioner proposes, because the determination that there is a leak
or not requires a further conclusion derived from the individual test status.
See Pet. 12.
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We accordingly construe “test status” as including the states of
“passing,” “failing,” and “untested.”

5. “calculating . . . test status”
Independent claim 1 recites two calculations of a “test status” based
on a “difference” in pathway pressure over time: “calculating, by the
computer system, a first test status of said first fluid pathway from a
difference in said first pathway pressure from time t1 to time t2,” Ex. 1001,
34:7–10, and “calculating, by the computer system, a second test status for
said second fluid pathway from a difference in said second pathway pressure
from time t3 to time t4,” id. at 34:22–25. Independent claim 12 includes
similar recitations, but refers to a “variance” in pathway pressure over time
instead of a “difference”: “calculating with said computer system a first test
status of said first fluid pathway from a variance in said first pathway
pressure during [a] first period of time,” id. at 35:31–33, and “calculating
with said computer system a second test status of said second fluid pathway
from a variance in said second pathway pressure during [a] second period of
time,” id. at 35:46–49.
Patent Owner discerns a difference between calculations based on
“difference” and calculations based on “variance.” PO Resp. 21–22. In
particular, Patent Owner construes “difference” as limited to the arithmetical
operation of subtraction, and construes “variance” more broadly as “simply
mean[ing] that the test status must be calculated from some variation in
pressure with no additional specificity.” Id. Petitioner conversely contends
that “[c]alculations based on variance and calculations based on difference
should be interpreted the same,” and identifies a specific LDV calculation
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for comparison with a benchmark test. Pet. 9–11; Reply 17 (citing Ex. 1007
¶ 379).
Different claim terms are presumed to have different meanings. CAE
Screenplates, Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308,
1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we
must presume that the use of these different terms in the claims connotes
different meanings.”). Under the facts before us, Petitioner overcomes this
presumption.
First, as Petitioner asserts, its position “is at least supported by the
plain and ordinary meaning of the words ‘variance’ and ‘difference.’”
Reply 17. Petitioner observes that “the first dictionary definition of variance
equates the word to difference: ‘the fact, quality, or state of being variable
or variant : DIFFERENCE, VARIATION.’” Id. at 18 (citing
http://www.merriam-webster.com/dictionary/variance); see Ex. 3001. And,
as Petitioner further observes, Patent Owner “does not discuss any plain and
ordinary meaning of the words or adequately explain how the specification
supports its artificial division of the different mathematical techniques
between the limitations of claim 1 (difference) and claim 12 (variance).” Id.
Second, the expert testimony supports Petitioner’s position that the
terms are equivalent. Petitioner’s expert, Mr. Anderson, supports his
testimony that there is no “meaningful difference in calculating the test
status based on a ‘variance’ in pressure as [claim 12] states or a ‘difference’
in pressure as required in claim 1” with extensive discussion why the decay
curves of pressure measurements are calculations both “from a difference”
and “variance.” Ex. 1007 ¶¶ 242–252, 378–383. Under cross-examination,
Patent Owner’s expert, Mr. Rodgers, also conceded that he could not recall
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“anything in the specification that supports” requiring subtraction when the
term “difference” is used. Ex. 1035, 198:17–199:13.
Third, as Petitioner also points out, “interpreting the ‘difference’
limitation as being met only by subtraction of successive pressure
measurements [would result in] dependent claim 11 [being] broader than the
claim on which it depends.” Reply 18. Claim 11 depends from independent
claim 1 and further limits “calculating a first test status of said first fluid
pathway from a difference in said first pathway pressure from time t1 to time
t2” by calculating and comparing the leak detection value as set forth in the
’143 patent. Ex. 1001, 35:1–10; see id at 11:7–41. Because calculation of
the leak detection value relies on a ratio of pressures at different times,
rather than a subtraction of pressures at different times, it is not apparent
that dependent claim 11 would properly narrow independent claim 1 under
Patent Owner’s proposed construction. See AK Steel Corp. v. Sollac &
Ugine, 344 F.3d 1234, 1242 (Fed. Cir. 2003) (“dependent claims are
presumed to be of narrower scope than the independent claims from which
they depend”).6 Indeed, Patent Owner’s proposed construction leads its
expert, Mr. Rodgers, to the curious testimony that prior art “might invalidate

6 We recognize that Mr. Rodgers correctly testifies under cross-examination
that the leak detection value could be rearranged algebraically to include a
subtraction of pressure values, i.e.,
�1 −
Pressuretime0
Pressuretime1
� × 100 = �
Pressuretime1 − Pressuretime0
Pressuretime1
� × 100.
Ex. 1035, 185:23–24. Such a rearrangement is, at best, an ex post
rationalization, and Mr. Rodgers acknowledges as much: “Well, the LDV is
not a difference calculation in and of itself. It’s based on a pressure ratio as
we described.” Id. at 188:21–23.

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claim 11 but not claim 1.” Ex. 1035, 204:18–205:12. Such a result cannot,
of course, be correct. See Callaway Golf Co. v. Acushnet Co., 576 F.3d
1331, 1344 (Fed. Cir. 2009) (“A broader independent claim cannot be
nonobvious where a dependent claim stemming from that independent claim
is invalid for obviousness.”).
Patent Owner attempts to reconcile such untenable consequences of
its position by contending that “it is not necessary for the dependent claim to
be an additional step in a calculation taught in the independent claim” such
that “the LDV, while more narrow, does not need to build on a difference
calculation.” Sur-reply 20. But as we note above, the language of
dependent claim 11 specifically limits “calculating a first test status of said
first fluid pathway from a difference in said first pathway pressure from time
t1 to time t2” with the LDV calculation. Ex. 1001, 35:1–10.
Thus, although we agree with Petitioner that “calculating . . . test
status” from a “difference” or from a “variance” in pathway pressure are
equivalent, we do not discern a compelling reason to narrow the construction
to a specific LDV calculation for comparison with a benchmark test. See
Pet. 9–11. Petitioner’s proposal for doing so appears to be grounded in its
proposed construction of “test status,” which we do not adopt for the reasons
explained above. See id. at 11. Accordingly, we construe “calculating . . .
test status,” both for the “difference” recitation of independent claim 1 and
its dependent claims and for the “variance” recitation of independent claim
12 and its dependent claims, in accordance with its plain and ordinary
meaning of determining test status from a change in pathway pressure at
different times.

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6. “contained entirely within”
Claims 4 and 13, which depend respectively from independent claims
1 and 12, recite that “said second fluid pathway is contained entirely within
said first fluid pathway.” Ex. 1001, 34:42–43, 35:61–62. Although Patent
Owner contends that “[a]dding a description related to specific components
is an unnecessary construction that does not alter the plain meaning of the
claim element,” the parties essentially agree that the phrase “contained
entirely within” requires that all components of the second fluid pathway are
also part of the first fluid pathway. See Pet. 12; PO Resp. 22–23. We agree
that this corresponds to the plain and ordinary meaning of the phrase, and we
accordingly apply such a construction herein.

E. Obviousness over BOP California, Wodjenski, and Winters
Petitioner challenges claims 1–17 as unpatentable under 35 U.S.C.
§ 103(a) over BOP California, Wodjenski, and Winters. Pet. 33–66.

1. BOP California
BOP California is described by Petitioner as the tenth edition of “a
manual regularly produced by the California Department of Conservation,
Division of Oil, Gas, and Geothermal Resources.” Pet. 13. The version of
the document filed by Petitioner is accompanied by a Declaration of Fred
Hallmark, one of the coauthors of “certain editions” of the manual, who
testifies that the tenth edition “was available in print form to the public on or
about 2006.” Ex. 1003, 1. Patent Owner has not challenged the public
availability of the document as a printed publication, and we treat it as such
for purposes of this Decision.
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BOP California “serv[es] as a single-source guide to blowout
prevention equipment (BOPE) used in oil, gas, and geothermal operations in
California.” Id. at 12. According to Petitioner, “[t]he manual details by
drawing and written instruction seventeen different pressure tests necessary
to test all components within the system.” Pet. 16. As an example,
Petitioner provides an annotated version of Figure 27-4b of BOP California,
reproduced below. Id.

Figure 27-4b, reproduced above, illustrates a variety of fluid control
components, including valves, BOPs, chokes, rigid pipes, flexible pipes, and
an array of gauges. See id. Petitioner has annotated the drawing with colors
to identify “various fluid control components” in yellow, “pressure gauges”
in blue, and “exemplary individually pressurizable fluid pathways” in green,
orange, and red. Id. Individually pressurized fluid pathways can be created
by altering actuation states of various valves.
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2. Wodjenski
Wodjenski “relates generally to gas storage and dispensing vessels.”
Ex. 1004 ¶ 2. Petitioner relies on the reference for its disclosure of “a
schematic of a tested pressure system with symbols for fluid control
components.” Pet. 18. In particular, Petitioner observes that Wodjenski
includes “thirteen figures and accompanying descriptions of displays
representative of the pressure system, including fluid control components
(e.g., valves, conduits) and their operating positions.” Id. (citing Ex. 1004,
Figs. 5, 7–18, ¶¶ 71, 73, 82–99).
Figure 7 of Wodjenski is reproduced below.

Figure 7 provides an example of a display, in which the status of all valves
may be shown using a “suitable color scheme (red coloration of the
corresponding valves denoting closed valves, and green coloration of
corresponding valves denoting open valves).” Ex. 1004 ¶ 82. The color
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scheme itself is not illustrated by the drawing provided in Wodjenski
(reproduced above).

3. Winters
Winters discloses “methods and apparatuses for testing fluid
systems.” Ex. 1005 ¶ 2. “To enable real time interpretation of subsea
blowout preventer tests,” Winters discloses “a digital BOP testing
algorithm.” Id. ¶ 43. An “algorithm is used to fit observed or actual
pressure data, and a pressure trend is extrapolated.” Id. In addition, test
criteria are applied “to check for confidence in the pressure forecast.” Id.

4. Combination of BOP California, Wodjenski, and Winters
Petitioner contends generally that a person of ordinary skill in the art
“would have been motivated to combine prior art that discloses testing
pressure systems with art that discloses manners of displaying pressure
systems on a computer.” Pet. 28. According to Petitioner’s expert, Mr.
Anderson, clear communication of testing protocols for blowout prevention
“was particularly the focus of the industry in the year and a half prior to the
priority date of the ’143 patent because of the Deepwater Horizon/BP Oil
Spill in Gulf of Mexico, also known as the Macondo Incident, accompanied
by intense government and press attention.” Ex. 1007 ¶ 125 (citing
Ex. 1021). Public reporting of the incident “exposed all aspects of safety
related to blowout prevention equipment to scrutiny, including any ability to
communicate to operators more effectively the conditions within the
blowout preventer stack to allow greater ability to safely operate the
equipment.” Id.
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In addition, Mr. Anderson notes that “[m]arket forces also provided
motivation due to the same Macondo incident,” including in light of
recommendations for procedure changes following the incident. Id. ¶ 126.
“From this reaction to the Macondo incident, a skilled artisan would be
driven by market forces to improve testing protocols to market them as
meeting [Best Available and Safest Technology] Standards.” Id. Mr.
Anderson testifies that “[t]his specifically includes testing protocols that are
designed to more effectively and quickly communicate information, such as
through schematic drawings.” Id.
Petitioner relies on this and other testimony from Mr. Anderson in
contending that “[t]he above general motivation to combine schematic
illustrations is particularly true with respect to Wodjenski” because
Wodjenski’s teachings would be implemented as a predictable variation, are
reasonably pertinent to problems faced by the blowout prevention field, and
are structurally similar to blowout preventers. Pet. 30–32. Petitioner, thus,
reasons that a person of ordinary skill in the art “would be motivated to
combine the teachings of digital blowout preventer testing measurements
[such as Winters] with blowout preventer testing procedures [such as BOP
California].” Id. at 32. As Petitioner asserts, “[t]hese references
acknowledge that their combination with prior art blowout prevention testing
increases accuracy and saves time and money.” Id. at 33 (citing Ex. 1005
¶ 27; Ex. 1006 ¶ 95). Notably, Patent Owner’s expert, Mr. Rodgers, agrees
with the essential facts underlying Petitioner’s general motivations.
Specifically, Mr. Rodgers agrees that BOPs “were the subject of intense
scrutiny around the 2010/2011 time,” that BOPs were a “subject of
modernization at that time because of that,” and that “adding schematics
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with functionality including displaying valve test states would be
modernization.” Ex. 1035, 227:14–228:12.
Patent Owner disputes Petitioner’s rationale for combining Wodjenski
with the other asserted references, and supports its contrary position with
testimony by Mr. Rodgers. PO Resp. 46 (citing Ex. 2004 ¶¶ 57–62). In
doing so, Patent Owner highlights that Wodjenski provides “a simple
schematic used to diagram a connection between a purge gas source and
vacuum pump to a tank being replaced.” Id. at 48. Accordingly, Patent
Owner reasons, Wodjenski’s “extremely simple” systems and methods are
“not in any way helpful in the testing of BOPs,” are “not similar to BOP
California in attempting to lay out a test methodology for BOPs,” and are
similar in structure to BOPs only in “very limited” ways. Id. at 48–49.
Unlike BOP California and Winters, it is clear that Wodjenski is not
directed to blowout prevention in oil and gas operations. But that mere fact
is not sufficient reason to discount Wodjenski’s relevance to the obviousness
inquiry. That is, to qualify as prior art for an obviousness determination, a
reference must be “analogous to the claimed invention.” In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004) (citing In re Clay, 399 F.2d 656, 658 (Fed.
Cir. 1992)). Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor, regardless of the
problem addressed; and (2) if the reference is not within the field of the
inventor’s endeavor, whether the reference is still “reasonably pertinent to
the particular problem with which the inventor is involved.” Bigio, 381 F.3d
at 1325.
Petitioner contends that Wodjenski “is analogous art for combination
with references in the blowout preventer art because both involve
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monitoring, recording, and alerting systems containing high pressure fluids
within a multi-valve, multi-route pressure system comprising interconnected
conduits.” Pet. 30–31 (citing In re Deminski, 796 F.2d 436, 442 (Fed. Cir.
1986)). We agree with this contention, and find that Wodjenski is drawn
from the same field of the inventor’s endeavor. The problem with Patent
Owner’s singular focus on blowout prevention in its counterarguments is
that the broadest challenged claims are not limited to that context. See, e.g.,
Ex. 1001, 33:42 (claim 1 reciting a “method for testing the integrity of a
pressure system”), 35:11–12 (claim 12 reciting a “method for testing the
pressure integrity of a pressure system”); Tr. 13:11–14 (Petitioner arguing at
oral hearing that, “if the Patent Owner is attempting to have broad
application of this patent, it should be recognized that the field goes beyond
the mere application of the technology in the blowout prevention
technique”).
But even if the inventor’s field of endeavor were more narrowly
confined to blowout prevention, we find Wodjenski reasonably pertinent to
the particular problem with which the inventor was involved under the
second prong of the analogous-art test. Petitioner specifically addresses this
point in its Petition, noting that “[a]mong the problems the ’143 patent
sought to solve with use of its schematic display was to simplify creation of
test plans to ‘ensure coverage of every desirable combination of fluid control
components.’” Pet. 31 (quoting Ex. 1001, 25:22–39). Noting that BOP
California “likewise describes a test protocol to ensure coverage of every
desirable combination of fluid control components,” Petitioner observes that
“Wodjenski is similar” because “its disclosed steps allow for an orderly
‘preprogrammed sequence’ for the various complex routing operations in the
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pressure system.” Id. (citing Ex. 1003, 12; Ex. 1004 ¶ 8). Wodjenski’s
simplicity, which Patent Owner highlights, is not a countervailing factor.
See In re Dance, 160 F.3d 1339, 1344 (Fed. Cir. 1998) (“simplicity of the
prior art is rarely a characteristic that weighs against obviousness of a more
complicated device with added function”). Furthermore, our conclusion of
Wodjenski’s pertinence is reinforced by the fact that the Examiner expressly
considered Wodjenski during prosecution, finding it anticipatory of the
originally filed independent claims.7 See Ex. 1009, 278–295.
We, thus, conclude that Petitioner articulates adequate reasoning,
supported by rational underpinning, to effect the combination of teachings of
BOP California, Wodjenski, and Winters that it proposes.

5. Independent Claim 1
We have reviewed Petitioner’s detailed analysis in which Petitioner
identifies specific teachings within the combination of references that
correspond to each limitation of challenged independent claim 1. Pet. 33–
51. Briefly, Petitioner relies on BOP California for those limitations that
require formation, pressurization, and measurement of the recited fluid
pathways, i.e. for limitations 1.1, 1.6, 1.11, 1.16, and 1.17, as well as
portions of limitations 1.7, 1.8, and 1.12–1.15. See id. at 33–35, 39–41, 43–
51. Petitioner relies on Winters for those limitations directed at processing
such measurements by receiving signals, comparing pressures, and
displaying test status, i.e. limitations 1.5, 1.9, and 1.10, as well as portions of
limitations 1.7, 1.8, and 1.12–1.15. See id. at 38–39, 41–45. And Petitioner

7 The applicant made no argument during prosecution that Wodjenski was
non-analogous art to traverse those rejections.
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relies on Wodjenski for those limitations directed at schematic illustration of
the pressure system, as recited in limitations 1.2–1.4. See id. at 36–38.
Based on our review of that analysis, we find that Petitioner sufficiently
identifies all limitations recited in independent claim 1 within the
combination of BOP California, Wodjenski, and Winters.

a. Preamble
The preamble of independent claim 1 (limitation 1.1) recites a
“method for testing the integrity of a pressure system,” and sets forth
specific requirements for the recited “pressure system,” namely that it have
“a plurality of fluid control components, a plurality of fluid pathways
defined by said fluid control components, and at least one pressure sensor in
fluid communication with said plurality of fluid pathways.” Ex. 1001,
33:42–46. Petitioner relies on BOP California for this aspect of the claim,
noting that the reference describes itself as “INSPECTION AND TESTING
PROCEDURES” and requires a division inspector to “verify that all of the
requirements for casing, BOPE (blow out preventer equipment), hole-fluid
monitoring equipment, and pressure rating are satisfied.” Pet. 33–34
(quoting Ex. 1003, 79, 68). In addition, Petitioner observes that the pressure
system shown in BOP California has a number of fluid control components,
fluid pathways, and pressure sensors. Id. (citing Ex. 1003, 84–87, Figs. 27-
2a, 27-2b). Petitioner supports its identifications with testimony by Mr.
Anderson, and Patent Owner does not dispute those identifications.
Ex. 1007 ¶¶ 177–180.
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We conclude that Petitioner makes a persuasive showing with respect
to the preamble. Because we find that the preamble is disclosed by BOP
California, we need not address whether the preamble is limiting.

b. “forming . . . an illustration”
Limitation 1.2 requires “forming, on an output device of a computer
system, an illustration representative of said pressure system, said
illustration including a plurality of fluid control symbols reflective of said
plurality of fluid control components, said fluid control symbols reflecting at
least one of an operating position and a test status of a fluid control
component.” Ex. 1001, 33:48–54. For this limitation, Petitioner identifies
Wodjenski’s disclosure of schematic illustrations, including Figure 7,
reproduced above, as “representative of the pressure system formed on an
output device of a computer system” and as “includ[ing] a plurality of fluid
control symbols, including triangular symbols for valves, lines representing
fluid conduits, and boxes for the left and right cylinders.” Pet. 36–37.
Patent Owner relies on our construction of “forming” in disputing
Petitioner’s showing, particularly our agreement that “forming” means
“creating” and is distinct from “displaying.” See PO Resp. 49–51.
Specifically, Patent Owner concedes that “Wodjenski does disclose the
display of a schematic illustration of a pressure system on an output device
of a computer system,” but argues that “Wodjenski does not disclose the
creation of a schematic illustration of a pressure system as a step in a method
for testing of a pressure system.” Id. at 50. Because “Wodjenski displays a
fixed schematic illustration that was created by the manufacturer of the
particular pressure system shown,” Patent Owner reasons as follows:
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With the user in Wodjenski limited to following a pre-defined
procedure, displaying on a touch screen a previously created
schematic illustration of the pressure system, the user is not
provided with the ability to create (forming/generating) his or
her own custom version of a schematic illustration of the
pressure system, therefore with no ability to enjoy the benefits
of the ‘143 Patent’s innovative use of the schematic illustration
to create a test plan for the pressure system.

Id. at 50–51 (citing Ex. 2002 ¶¶ 28–34).
The difficulty with this argument is that it improperly grafts additional
restrictions onto the claim by importing limitations that go beyond our
construction of “forming,” namely by requiring that the user be provided
with the ability to create a custom version of a schematic illustration of the
pressure system to be used in a test plan. See Reply 12–14. Indeed, Patent
Owner’s expert agreed on cross-examination that the claim language neither
requires a particular actor to “form[]” the recited “illustration,” nor requires
“forming” a “custom version” to be used in a test plan. See Ex. 1035, 67:6–
22, 75:14–21, 89:15–90:25. With respect to the former, Mr. Rodgers
conceded that “there’s nothing that requires it to be the same person” when
challenged that “the act of forming does not have to be done by the person
doing the testing, correct?” Id. at 89:15–20; see also id. at 90:13–25 (Mr.
Rodgers agreeing that the actor performing the “forming” could “be
someone different. It could be a separate entity. It could be done in a
different year.”). With respect to the latter, Mr. Rodgers agreed that the
scope of independent claim 1 does not include planning a test, and that
limitation 1.2 can be met without using the illustration in a test. See id. at
75:14–21. In addition, the following exchange took place during Mr.
Rodgers’s deposition:
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[Q. Paragraph 87 of Mr. Rodgers’s Declaration] says, “The
software and computer system are not just displaying a fixed
image but rather ‘the schematic illustration 1000 may be made
available to the user for use as a tool when creating the plan
steps in a test plan that will provide coverage of every desirable
combination of fluid control components’.”
Is that usage of the schematic illustration required by the
claims.

A. No, I don’t believe so.

Q. And so you understand that you can use the schematic
illustration for reasons other than what’s recited in the last full
sentence of paragraph 87 and still meet the limitation of claim
1.2, correct?

A. Correct.

Id. at 67:6–22.
These various aspects of Mr. Rodgers’s cross-examination testimony
reinforce the conclusion compelled by the plain language of the “forming”
limitation, namely that the claim does not require that a user be provided
with the ability to create a custom version of a schematic illustration of the
pressure system to be used in a test, as Patent Owner argues. Applying the
correct scope of limitation 1.2, Patent Owner provides sufficient evidence
that the limitation is met by Wodjenski because Wodjenski teaches forming
the required illustration of the pressure system on an output device. In
particular, Petitioner explains that the schematics include a “plurality of fluid
control symbols” in the form of triangular symbols for valves, lines
representing fluid conduits, and boxes for the left and right cylinders.
Pet. 36 (citing Ex. 1004 ¶¶ 31, 82, 84–86). Such “fluid control symbols” are
thereby “reflective of said plurality of fluid control components” of the
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pressure system, with valve status such as operating position indicated by
green for open valves and red for closed.8 Id. at 36–37 (citing Ex. 1004
¶ 82; Ex. 1007 ¶¶ 181–192). Whether the creation of such features is by the
user or otherwise is not relevant to the scope of the limitation. But see
Reply 14 (Petitioner noting that “[a]mong the teachings of Wodjenski is a
user (1) pressing buttons to bring schematics onto and off screens to use for
visualization; Ex. 1004 ¶0082; (2) modifying the valve positions in
schematics to create desired pathways, id. ¶0100; and (3) using a touch
screen to cycle between variants of the pressure system shown in
schematics, id. ¶¶0090-90, Figs. 9–10; see also Ex. 1007 at ¶¶182–186).
We, accordingly, conclude that Petitioner makes a persuasive showing
with respect to limitation 1.2.

c. “receiving . . . selection[s] of . . . operating position[s]”
Limitation 1.3 requires “receiving, by the computer system, a
selection of an operating position for a first plurality of fluid control symbols
to define a first fluid pathway within said illustration.” Ex. 1001, 33:55–57.
Limitation 1.4 similarly requires “receiving, by the computer system, a
selection of an operating position for a second plurality of fluid control
symbols to define a second fluid pathway within said illustration.” Id. at
33:58–61. For these limitations, Petitioner relies on Wodjenski’s disclosure
of a user responding to a prompt to change valve positions, thereby making a

8 The parties agree that “at least one of an operating position and a test status
of a fluid control component” is met by either an operating position or a test
status of a fluid control component. See Tr. 14:23–15:5 (Petitioner
agreeing), 40:8–26 (Patent Owner agreeing). This is consistent with our
adopted construction of “at least one,” supra § II.D.1.
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“selection[s] of . . . operating position[s]” and “defin[ing] . . . fluid
pathway[s] within said illustration.” Pet. 37–38. Petitioner provides
highlighted versions of Figures 7 and 12 of Wodjenski (not reproduced here)
to support its position that “Wodjenski discloses operating positions for a
plurality of fluid control symbols to define a plurality of fluid pathways,”
including the recited “first” and “second” pathways. Id. at 38.
Petitioner’s identifications, which Patent Owner does not dispute,
provide sufficient support that limitations 1.3 and 1.4 are disclosed by
Wodjenski. We, thus, conclude that Petitioner makes a persuasive showing
with respect to limitations 1.3 and 1.4.

d. “receiving . . . a signal reflective of a pressure”
Limitation 1.5 requires “receiving, by the computer system, a signal
reflective of a pressure sensed by said pressure sensor.” Ex. 1001, 33:62–
63. Petitioner relies on Winters for this limitation because Winters teaches
using a pressure sensor to produce signals representative of pressure in an
isolated portion of a wellbore and to transmit them to a computer system.
Pet. 38–39. Patent Owner does not dispute this identification, which we find
sufficient.
We conclude that Petitioner makes a persuasive showing with respect
to limitation 1.5.

e. “positioning a first plurality of fluid control components”
Limitation 1.6 requires “positioning a first plurality of fluid control
components to form said first fluid pathway within said pressure system,
said first fluid pathway configured to be individually pressurized and
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including said pressure sensor.” Ex. 1001, 33:64–67. As Petitioner
observes, “BOP California teaches step-by-step changing of valves and
pressurizing the resultant fluid pathways.” Pet. 39. Petitioner supports its
contention that each aspect of the limitation is met with an annotated version
of Figure 27-2a of BOP California (not reproduced here), illustrating “where
a plurality of fluid control components forms an individually pressurized
fluid pathway, with pressure sensors in fluid communication therewith.” Id.
at 39–40.
The identification is not disputed by Patent Owner, and we find it
sufficient. Accordingly, we conclude that Petitioner makes a persuasive
showing with respect to limitation 1.6.

f. “pressurizing said first fluid pathway”
Limitation 1.7 requires “pressurizing said first fluid pathway to a first
test pressure, causing said pressure sensor to generate a signal reflective of a
first pathway pressure.” Ex. 1001, 34:1–3. Petitioner relies on BOP
California and Winters to meet this limitation, noting that “BOP California
discloses pressurizing to test pressure and producing a reading indicative of
the first pathway pressure,” while “Winters discloses the sensors producing
signals representative of pressure in an isolated portion of a wellbore.”
Pet. 41 (citing Ex. 1003, 86; Ex. 1005 ¶ 20). We agree with these
observations, which are supported by Mr. Anderson’s testimony and which
are not disputed by Patent Owner. See Ex. 1007 ¶¶ 229–235.
We conclude that Petitioner makes a persuasive showing with respect
to limitation 1.7.

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g. “receiving … said signal”
Limitation 1.8 requires “receiving, by the computer system, said
signal reflective of said first pathway pressure at time t1 and at time t2.”
Ex. 1001, 34:4–5. As for the previous limitation, Petitioner again relies on
BOP California’s disclosure of pressurizing to test pressure and producing a
pressure reading, but in combination with Winters’s disclosure of receiving
the signal it produces at a computer system at time intervals. Pet. 41 (citing
Ex. 1003, 86; Ex. 1005 ¶ 20, Figs. 1, 12). We agree with this further
observation, which is also supported by Mr. Anderson’s testimony and not
disputed by Patent Owner. See Ex. 1007 ¶¶ 236–241.
We conclude that Petitioner makes a persuasive showing with respect
to limitation 1.8.

h. “comparing . . . said first pathway pressure at time t1 and at time t2 . . .
and calculating . . . a first test status

Limitation 1.9 requires “comparing, by the computer system, said first
pathway pressure at time t1 and at time t2 and calculating, by the computer
system, a first test status of said first fluid pathway from a difference in said
first pathway pressure from time t1 to time t2.” Ex. 1001, 34:6–10. In
addressing this limitation, Petitioner points to Winters’s disclosure of a
computer system that compares pressure at different times by using
successive pressure measurements to determine regression coefficients in a
pressure decline equation. Pet. 42 (citing Ex. 1005 ¶ 23). According to such
an equation, the pressure at a time t is
𝑃𝑃(𝑡𝑡) = 𝐴𝐴 +
𝑏𝑏
𝑐𝑐 + 𝑡𝑡𝑚𝑚,
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for parameters A, b, c, and m that provide a best fit to data. Ex. 1005 ¶ 45.
The pressure at different times is compared by regressing the pressure
decline equation to determine such parameters, which are then used to
declare a test “‘successful’ (positive)” if the predicted actual pressure is
sufficiently high, or “‘unsuccessful’ (negative)” if the predicted actual
pressure is too low. Id. ¶¶ 46–50. Petitioner identifies these disclosures in
its Petition, and supports those identifications with testimony by Mr.
Anderson. See Ex. 1007 ¶¶ 242–252.
Patent Owner concedes that Petitioner’s reliance on Winters “to cover
the teaching of a pressure difference calculated from pressure measurements
collected at successive timesteps” is “not incorrect.” PO Resp. 56.
Nevertheless, Patent Owner disputes the sufficiency of Petitioner’s showing
by arguing that Winters’s “curvefit procedure does not involve any pressure
difference calculated from pressure measurements at successive timesteps.”
Id. This argument is grounded in Patent Owner’s proposed construction of
“difference” as limited to the arithmetical operation of subtraction. See id. at
15–18. For the reasons we discuss at length, supra § II.C.5., we do not
adopt such a limited construction, and Petitioner’s evidence is consistent
with the broader construction we adopt. Although not separately disputed
by Patent Owner, we note that Petitioner’s evidence is also consistent with
our adopted construction of “test status” as including the states of “passing,”
“failing,” and “untested,” supra § II.C.4.
Accordingly, we conclude that Petitioner makes a persuasive showing
with respect to limitation 1.9.

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i. “displaying . . . said first test status”
Limitation 1.10 requires “displaying on the output device said first
test status.” Ex. 1001, 34:11. Petitioner contends that this limitation is
disclosed by Winters because “Winters indicates on the display whether the
test status is pending (analyzing), successful, or unsuccessful.” Pet. 42
(citing Ex. 1005 ¶¶ 65–79, Figs. 9B, 10A, 10B). This identification is
consistent with our adopted construction of “test status” as including the
states of “passing,” “failing,” and “untested,” supra § II.C.4., and we,
therefore, conclude that Petitioner makes a persuasive showing with respect
to limitation 1.10.9

j. Second Fluid Pathway
Limitations 1.11–1.15 generally parallel limitations 1.6–1.10, but for a
“second fluid pathway” formed of “a second plurality of fluid control
components,” rather than for a “first fluid pathway” formed of “a first
plurality of fluid control components.” Compare Ex. 1001, 34:12–26 with
id. at 33:64–34:11. In addressing limitation 1.11, Petitioner observes that
BOP California (which Petitioner also relies on for similar limitation 1.6, as
discussed above) “discloses forming a plurality of fluid pathways to perform
a plurality of fluid pressure tests.” Pet. 43 (citing Ex. 1003, 88, 93, Figs. 27-
3, 27-4d). For each test, fluid control components are positioned to create
the fluid pathways, each of which includes a pressure sensor as recited. See

9 Petitioner alternatively contends that displaying the first test status “is an
obvious extension” of Winters. Pet. 42. This alternative contention
presumes that “test status” is construed as Petitioner advocates, namely as
“leak” or “no leak.” See id. at 42–43. Because we do not adopt such a
construction, we do not reach this alternative contention.
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id. (citing Ex. 1003, 86–105, Figs. 27-1 through 27-6b). For limitations
1.12–1.15, Petitioner relies on BOP California and Winters in substantially
the same way as for limitations 1.7–1.10, and makes reference to its earlier
analysis. Id. at 43–45. Patent Owner disputes Petitioner’s showing only by
making the same arguments Patent Owner makes for the “first fluid
pathway” limitations, which we address above. See PO Resp. 57.
For substantially the same reasons as for the “first fluid pathway”
limitations, and in light of Petitioner’s identification of disclosure by BOP
California of multiple fluid pathways, we conclude that Petitioner makes a
persuasive showing with respect to limitations 1.11–1.15.

k. Third Fluid Pathway
Limitation 1.16 recites “positioning a third plurality of fluid control
components to form a third fluid pathway within said pressure system, said
third fluid pathway being configured to receive said pressurized fluid if said
first fluid pathway fails to maintain said first test pressure,” and limitation
1.17 recites “venting said third fluid pathway to atmosphere.” Ex. 1001,
34:27–32. Petitioner addresses these limitations by observing that “BOP
California discloses a number of fluid control components that form third
fluid pathways behind a first fluid pathway,” and identifying a specific
example in which such a third fluid pathway is vented to atmosphere.
Pet. 45–51.
A version of Figure 27-6b of BOP California annotated by Petitioner
is reproduced below. Id. at 47.
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The left portion of Petitioner’s drawing reproduces BOP California’s Figure
27-6b, while the right portion is a magnified detail annotated with red arrows
that show multiple pathways venting to atmosphere. Id. at 45–47. In this
example, “the three valves on the choke line are each positioned with a
separate third plurality of fluid control components forming fluid pathways
beyond the pressurized fluid pathway.” Id. at 47. In addition to identifying
third fluid pathways, Petitioner identifies further disclosure in BOP
California summarizing a testing procedure in which “the test should be bled
until the gauge read[s] ‘zero,’ i.e., atmospheric pressure.” Id. at 48 (citing
Ex. 1003, 86–87, Fig. 27-2b).
Patent Owner does not dispute this aspect of Petitioner’s analysis,
which we find sufficient. Accordingly, we conclude that Petitioner makes a
persuasive showing with respect to limitations 1.16 and 1.17.

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l. Summary
For each limitation of independent claim 1, Petitioner persuasively
identifies where that limitation is taught by its proposed combination of BOP
California, Wodjenski, and Winters, and has provided persuasive reasoning,
supported by rational underpinning, to effect the combination of teachings.
We, therefore, conclude that Petitioner shows, by a preponderance of the
evidence, that independent claim 1 is unpatentable under 35 U.S.C. § 103(a)
over BOP California, Wodjenski, and Winters.

6. Claim 2
Claim 2 depends from claim 1 and recites that “said first plurality of
fluid control components and said second plurality of fluid control
components share at least one common fluid control component with a
corresponding common fluid control symbol in said illustration.” Ex. 1001,
34:33–37. Petitioner relies on BOP California and Wodjenski for this
limitation: “BOP California discloses pathways with common fluid control
components, and Wodjenski discloses the corresponding fluid control
symbol in the illustration.” Pet. 51 (citing Ex. 1003, 88, 93, Figs. 27-3,
27-4d). As Petitioner observes, “[t]he first fluid pathway (shown in [BOP
California’s Figure 27-3]) shares common fluid control components with the
second fluid control pathway (shown in [BOP California’s Figure 27-4d])[,
including] fluid control components completely within both fluid pathways
. . . and those that bound one fluid pathway and not the other.” Id.
We agree with this identification, which Patent Owner does not
dispute outside of its arguments directed at underlying independent claim 1.
Accordingly, we conclude that Petitioner shows, by a preponderance of the
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evidence, that dependent claim 2 is unpatentable under 35 U.S.C. § 103(a)
over BOP California, Wodjenski, and Winters.

7. Claim 3
Claim 3 depends from claim 2 and further recites “operating said
computer system to reflect a passing status onto said common fluid control
symbol when at least one of said first test status and said second test status is
a passing status.” Ex. 1001, 34:38–41. Petitioner relies on BOP California,
Wodjenski, and Winters for this limitation: “BOP California teaches testing
a common fluid control component, Winters teaches indicating the passing
status of the test, and Wodjenski teaches reflecting the status of the fluid
control component on the fluid control symbol.” Pet. 52.
Patent Owner disputes Petitioner’s showing for two reasons: first,
because “Wodjenski is simply testing pathways,” such that it “does not teach
any aspect of providing a test status for a specific component”; and, second,
because “the test status indication in Wodjenski is limited to a change from
one display screen to the next upon a successful test,” such that “[i]t is not
possible for such a screen change to provide any indication of a component-
specific test status.” PO Resp. 52. In addition, Patent Owner contends that
the claim limitation is distinguished from the asserted prior art because, as
illustrated in Figures 10 and 14 of the ’143 patent, “the component test status
indication [is] directly on the component symbol.” Id. at 54 (emphasis
added). In its Reply, Petitioner elaborates its argument in a manner
generally consistent with the teachings relied on from each of the three
asserted references. See Reply 14–16. And in its Sur-reply, Patent Owner
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also largely reiterates its position, further asserting that “Petitioner doubles-
down on its misleading argument.” Sur-reply 13–17.
The parties appear to be talking past each other.
Patent Owner’s characterizations of Wodjenski appear to be accurate.
That is, Wodjenski, considered alone, is “simply testing pathways” and does
not indicate a component test status directly on the component signal.
Instead, Wodjenski displays the operating state, rather than the test status, of
valves. See Ex. 1004 ¶ 135. Thus, we agree with Patent Owner that Mr.
Anderson’s statement that “Wodjenski displays the status of fluid control
components, including pass or fail status,” at least when considered in
isolation, is not supported by Wodjenski. Ex. 1007 ¶ 324 (emphasis added).
Indeed, Mr. Anderson appears to have conceded as much under cross-
examination. See Ex. 2003, 107:8–22.
But Petitioner does not rely on Wodjenski alone. Instead, Petitioner’s
position is that the limitation of dependent claim 3 would have been obvious
in light of disclosures from each of BOP California, Wodjenski, and
Winters. Pet. 52; Reply 14–16. Specifically, Petitioner relies on Wodjenski
as teaching “component-specific information on the icon through use of a
‘stoplight’ coloration,” and relies on Winters as teaching that “‘stoplight’
coloration reflect pass/fail status.” Reply 14 (citing Ex. 1004 ¶ 82; Ex. 1005
¶¶ 66–79; Ex. 1007 ¶ 186). Each of these characterizations of Wodjenski
and Winters also appears to be accurate. Further, Petitioner relies on BOP
California for identification of the component under test. Id. Patent
Owner’s expert, Mr. Rodgers, agrees that “BOP California shows us how to
identify a particular component and whether it has passed or failed a test.”
Ex. 1035, 167:7–10.
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We have carefully considered Patent Owner’s protests that Petitioner
is relying on misleading testimony by Mr. Anderson. And, as we explain
above, we agree that certain statements, if considered in the context of
discussing Wodjenski alone, are not supported. Nevertheless, because
Petitioner is not relying exclusively on Wodjenski, we do not find Patent
Owner’s concerns to be well-grounded in identifying a flaw in Petitioner’s
actual argument. Rather, we are persuaded by Petitioner’s complete
argument that “the combination of BOP California, Wodjenski and Winters
teaches that the identification of a particular component under test (BOP
California) could use a red/yellow/green coloration for test status (Winters)
on the icon of a component (Wodjenski).” See Reply 15.
Accordingly, we conclude that Petitioner shows, by a preponderance
of the evidence, that dependent claim 3 is unpatentable under 35 U.S.C.
§ 103(a) over BOP California, Wodjenski, and Winters.

8. Claim 4
Claim 4 depends from claim 1 and recites that “said second fluid
pathway is contained entirely within said first fluid pathway.” Ex. 1001,
34:42–43. Petitioner relies on BOP California for this limitation, noting that
“the fluid pathway of Figure 27-2b is entirely within the fluid pathway of
Figure 27-2a.” Pet. 53 (citing Ex. 1003, 85, 87, 91–94, Figs. 27-4b, 27-4c,
27-4e, 27-4f; Ex. 1007 ¶¶ 328–331). We agree with this identification,
which is not disputed by Patent Owner.
We conclude that Petitioner shows, by a preponderance of the
evidence, that dependent claim 4 is unpatentable under 35 U.S.C. § 103(a)
over BOP California, Wodjenski, and Winters.
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9. Claim 5
Claim 5 depends from claim 1 and recites that “said second fluid
pathway includes at least one fluid control component not included within
said first fluid pathway.” Ex. 1001, 34:44–46. Petitioner identifies
consecutive tests 27-4k and 27-5 of BOP California, in which “fluid
components in the second fluid pathway but not the first include those
components outside the choke line master valve extending to the choke
inboard wing valves, e.g., choke line control valve, targeted tee, rigid
conduit, choke manifold inboard wing valves, and connections and fittings
between each.” Pet. 53 (citing Ex. 1003, 101, 102). We agree with this
identification, which is not disputed by Patent Owner.
We conclude that Petitioner shows, by a preponderance of the
evidence, that dependent claim 5 is unpatentable under 35 U.S.C. § 103(a)
over BOP California, Wodjenski, and Winters.

10. Claims 6–10
Each of claims 6–9 depends directly or indirectly from independent
claim 1 and recites specific components for the “plurality of fluid control
components.” Ex. 1001, 34:47–60. Claim 10 depends from claim 9 and
recites that causing the first and second fluid pathways to be pressurized
applies pressure to respective sides of the valve recited in claim 9. Id. at
34:61–67.
Petitioner addresses dependent claims 6–9 by identifying specific
components that meet the claim limitations from BOP California. Pet. 53–
54. In addition, Petitioner notes that the pressurization required by
dependent claim 10 is disclosed by BOP California in Figures 27-4c and 27-
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4d. Id. at 54. Patent Owner does not dispute these identifications, which we
have reviewed and with which we agree.
We accordingly conclude that Petitioner shows, by a preponderance of
the evidence, that dependent claims 6–10 are unpatentable under 35 U.S.C.
§ 103(a) over BOP California, Wodjenski, and Winters.

11. Claim 11
Claim 11 depends from independent claim 1 and further limits
“calculating a first test status of said first fluid pathway from a difference in
said first pathway pressure from time t1 to time t2” by calculating and
comparing the leak detection value against a threshold to record the first test
status as a passing status when the threshold is met. Ex. 1001, 35:1–10.
Specifically, dependent claim 11 recites:
calculating a leak detection value that is the absolute
value of a ratio of said pressure at time t1 and said pressure at
time t2 subtracted from unity;
comparing said leak detection value against a leak
threshold; and
recording said first test status as a passing status when
said leak detection value meets said leak threshold.

Id. at 35:4–10. According to Petitioner, “Winters discloses utilizing a
computer system to perform the calculations related to pressure.” Pet. 54
(citing Ex. 1005 ¶¶ 63–81). Winters discloses that a “‘green’ light [is]
assigned to a test when . . . (𝑃𝑃𝑠𝑠 − 𝑃𝑃𝑧𝑧)/𝑃𝑃𝑧𝑧 ≤ 0.125. Ex. 1005 ¶¶ 68–71.
Petitioner observes that the leak detection value recited in the claim may be
algebraically rewritten because
�1 −
𝑃𝑃1
𝑃𝑃2
� = �
𝑃𝑃2 − 𝑃𝑃1
𝑃𝑃2
�,
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and that this corresponds to Winters’s expression, which may be
algebraically rewritten as
�1 −
𝑃𝑃𝑧𝑧
𝑃𝑃𝑠𝑠
� ≤ 0.125.
Pet. 55.
We agree with this observation, which is supported by testimony by
Mr. Anderson, and not disputed by Patent Owner. See Ex. 1007 ¶¶ 366–369.
Accordingly, we conclude that Petitioner shows, by a preponderance of the
evidence, that dependent claim 11 is unpatentable under 35 U.S.C. § 103(a)
over BOP California, Wodjenski, and Winters.

12. Claims 12–15
Independent claim 12 recites a combination of limitations that are
substantially similar to those discussed above in connection with
independent claim 1 and dependent claim 3. Petitioner provides a detailed
identification of the correspondence of such limitations, and relies on its
earlier analysis to support its position that independent claim 12 is
unpatentable under 35 U.S.C. § 103(a) over BOP California, Wodjenski, and
Winters. Pet. 56–61. We agree with those identifications, which are not
disputed by Patent Owner, and accordingly find that Petitioner makes a
persuasive showing.
Similarly, claims 13 and 14, each of which depends from independent
claim 12, recites limitations that correspond respectively to those recited in
dependent claims 4 and 5. Compare Ex. 1001, 35:61–65 with id. at 34:42–
46. And claim 15, which also depends from independent claim 12, recites
limitations that correspond to those recited in dependent claims 6 and 7.
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Compare id. at 35:66–36:3 with id. at 34:47–53. Petitioner provides an
explanation where each of these limitations is met by its combination of
BOP California, Wodjenski, and Winters, and we agree with those
explanations. Pet. 61–63.
We conclude that Petitioner shows, by a preponderance of the
evidence, that claims 12–15 are unpatentable under 35 U.S.C. § 103(a) over
BOP California, Wodjenski, and Winters.

13. Claim 16
Claim 16 depends from independent claim 12 and recites several
limitations that correspond to limitations recited in independent claim 1 or
dependent claim 11, and Petitioner identifies those correspondences.
Pet. 62–64. Patent Owner does not dispute those correspondences, and
Petitioner relies on its earlier analysis in addressing those limitations. Id.
In addition, dependent claim 16 recites “generating a leak detection
signal reflective of said leak detection value” and “displaying said leak
detection value as a function of time on the output device.” Ex. 1001,
36:18–21. For these additional limitations, Petitioner relies on Winters’s
disclosure of generating reports of calculations and displaying pressure and
decline rate values once a stable solution is acquired. Pet. 64–65 (citing
Ex. 1005 ¶¶ 50, 63, 66, Figs. 10A, 12). Petitioner supports these
identifications with testimony by Mr. Anderson, and Patent Owner does not
dispute these identifications. See Ex. 1007 ¶¶ 408–413.
We agree with these identifications, and accordingly conclude that
Petitioner shows, by a preponderance of the evidence, that dependent claim
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16 is unpatentable under 35 U.S.C. § 103(a) over BOP California,
Wodjenski, and Winters.

14. Claim 17
Claim 17 depends from independent claim 12 and recites additional
limitations. Ex. 1001, 36:22–33.
First, dependent claim 17 requires “pressurizing said first fluid
pathway to a first reduced pathway pressure prior to said first period of time,
said first reduced pathway pressure being less than one fifth of said first
pathway pressure.” Ex. 1001, 36:22–26. Petitioner relies on BOP California
for this limitation, noting that “[l]ow pressure tests are at 200 psi and high-
pressure tests must be to 70 percent of the working pressure.” Pet. 65 (citing
Ex. 1003, 106, § 5-4b). BOP California discloses that annular and ram
preventers are tested, as in Figures 27-5 and 27-6a of BOP California, and
that a low-pressure test can precede a high-pressure test. Ex. 1003, 102–
103, 106. Working pressures of such components are 3000–5000 psi. Id. at
110. Petitioner reasons that the limitation is disclosed because the 200 psi
pressure of the low-pressure test is less than one fifth of 0.7 × (3000–5000
psi) = 2100–3500 psi. Pet. 65.
Second, dependent claim 17 requires “monitoring with said computer
system said first pathway pressure for said additional period of time.”
Ex. 1001, 36:27–28. Because BOP California teaches that the low-pressure
test “must be repeated and record,” Petitioner reasons that the required
“monitoring” is met. Pet. 66.
Third, dependent claim 17 requires “calculating with said computer
system a first reduced pressure test status of said first fluid pathway from a
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variance in said first reduced pathway pressure during said first period of
time, said first reduced pressure test status being selected from a passing
status and a fail status.” Ex. 1001, 36:29–33. For this aspect, Petitioner
relies on Winters’s disclosure of calculating a test status, as discussed supra
§ II.E.1.h.
Patent Owner does not dispute this reasoning, with which we agree.
Accordingly, we conclude that Petitioner shows, by a preponderance of the
evidence, that claim 17 is unpatentable under 35 U.S.C. § 103(a) over BOP
California, Wodjenski, and Winters.

15. Conclusion
For the foregoing reasons, we conclude that Petitioner shows, by a
preponderance of the evidence, that each of challenged claims 1–17 is
unpatentable under 35 U.S.C. § 103(a) over BOP California, Wodjenski, and
Winters.

F. Other Challenges
Because we conclude that Petitioner shows, by a preponderance of the
evidence, that all challenged claims are unpatentable based on the
combination of BOP California, Wodjenski, and Winters we do not reach
Petitioner’s alternative challenges. Cf. In re Gleave, 560 F.3d 1331, 1338
(Fed. Cir. 2009) (not reaching other grounds of unpatentability after
affirming a ground based on anticipation); Beloit Corp. v. Valmet Oy, 742
F.2d 1421, 1423 (Fed. Cir. 1984) (explaining that an administrative agency
is at liberty to reach a decision based on a dispositive issue because doing so
“can not only save the parties, the [agency], and [the reviewing] court
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unnecessary cost and effort,” but can “greatly ease the burden on [an
agency] faced with a . . . proceeding involving numerous complex issues and
required by statute to reach its conclusion within rigid time limits”).

III. REVISED MOTION TO AMEND
Because we conclude that Petitioner shows, by a preponderance of the
evidence, that each of challenged claims 1–17 is unpatentable, we consider
Patent revised Owner’s Motion to Amend. See Mot. Amend 1 (moving to
allow proposed substitute claim 36 and contingently moving to allow
proposed substitute claims 19–35); Reply Amend 8 (noting withdrawal of
proposed substitute claim 36); Tr. 53:22–26 (Patent Owner stating that it
“withdrew claim 36. So this is not a partially contingent motion to amend;
it’s a fully contingent motion to amend”).
“Before considering the patentability of any substitute claims, . . . the
Board first must determine whether the motion to amend meets the statutory
and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R.
§ 42.121.” See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15
at 4 (PTAB Feb. 25, 2019) (precedential). The Rules of Practice To
Allocate the Burden of Persuasion on Motions To Amend in Trial
Proceedings Before the Patent Trial and Appeal Board, effective prior to
Patent Owner filing its Motion to Amend, “assigns the burden of persuasion
to the patent owner to show, by a preponderance of the evidence, that [the]
motion to amend complies with” those statutory and regulatory
requirements. 85 Fed. Reg. 82923, 82924 (Dec. 21, 2020). Accordingly, a
patent owner must provide a claim listing reproducing each proposed
substitute claim, and must make an initial showing to demonstrate the
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following: (1) the amendment proposes a reasonable number of substitute
claims; (2) the amendment responds to a ground of unpatentability involved
in the trial; and (3) the amendment does not seek to enlarge the scope of the
claims of the patent or introduce new subject matter. See 35 U.S.C.
§ 316(d); 37 C.F.R. § 42.121. In this instance, the parties dispute only the
last of these requirements, namely whether the proposed substitute claims
introduce new subject matter that lacks support in the original disclosure.
We address this issue below, determining that the proposed substitute claims
do not add new matter, and otherwise find that Patent Owner has complied
with all remaining requirements of this initial showing. See Mot. Amend 1–
3.
It is the petitioner's burden to show, by a preponderance of the
evidence, that any proposed substitute claims are unpatentable. 85 Fed. Reg.
82924. Thus, the Board also must assess the patentability of proposed
substitute claims “without placing the burden of persuasion on the patent
owner.” Aqua Prods., Inc. v. Matal, 872 F.3d 1290, 1328 (Fed. Cir. 2017)
(en banc); see Lectrosonics, Paper 15 at 3‒4 (discussing Aqua Products and
the burden of persuasion). After Aqua Products, the U.S. Court of Appeals
for the Federal Circuit further clarified the burden of persuasion in Bosch
Automotive Service Solutions, LLC v. Matal, 878 F.3d 1027 (Fed. Cir. 2017),
amended by Bosch Automotive Service Solutions, LLC v. Iancu, No. 2015-
1928 (Fed. Cir. Mar. 15, 2018). According to Aqua Products, Bosch, and
Lectrosonics, a patent owner does not bear the burden of persuasion to show
that the proposed substitute claims are patentable. Rather, ordinarily “the
petitioner bears the burden of proving that the proposed amended claims are
unpatentable by a preponderance of the evidence.” Bosch, 878 F.3d at 1040
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(as amended on rehearing); Lectrosonics, Paper 15 at 3–4. To determine
whether a petitioner has proven the substitute claims are unpatentable, the
Board focuses on “arguments and theories raised by the petitioner in its
petition or opposition to the motion to amend.” Nike, Inc. v. Adidas AG, 955
F.3d 45, 51 (Fed. Cir. 2020).
For the reasons below, we find that proposed substitute independent
claims 19–35 are unpatentable under 35 U.S.C. § 103(a).

A. Proposed Substitute Claims
Patent Owner proposes claim 19 as a substitute for original
independent claim 1 and proposes claim 30 as a substitute for original
independent claim 12. Mot. Amend 1–2, App’x A i–v, viii–xi. Patent
Owner additionally proposes claims 20–29 as respective substitutes for
original dependent claims 2–11 and proposes claims 31–35 as respective
substitutes for original dependent claims 13–17. Id. at App’x A v–viii, xii–
xiii. Each of the proposed substitute dependent claims is identical to one of
the original dependent claims, but updated to depend from the appropriate
proposed substitute independent claim. Id.
Proposed substitute claim 19 is representative of the proposed
substitute claims and is reproduced below, using underscoring to indicate
text added to original claim 1 and bracketing to indicate text removed from
original claim 1, and with elements numbered in accordance with a scheme
introduced by Petitioner. See Ex. 1036.
19. [19.1] A method for testing the integrity of a pressure
system, said pressure system having a plurality of fluid control
components, a plurality of fluid pathways defined by said fluid control
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components, and at least one pressure sensor in fluid communication
with said plurality of fluid pathways, said method comprising:
[19.2] forming, on an output device of a computer system, [an]
a schematic illustration representative of said pressure system, said
schematic illustration including a plurality of fluid control symbols
reflective of said plurality of fluid control components, said fluid
control symbols reflecting at least one of an operating position and a
test status of a fluid control component;
[19.3] said forming of the schematic illustration accomplished
by the use of a software application operating on the computer system,
to form the schematic illustration representative of the pressure
system;
[19.4] said forming of the schematic illustration comprising
[19.4.1] selecting one or more symbols representative of
fluid control components,
[19.4.2] arranging said symbols on the schematic
illustration, and
[19.4.3] defining fluid communication between said
symbols;
[19.5] using the schematic illustration in a software application
operating on the computer system in performing at least four of the
following steps:
[19.5.1] defining the testable aspects of a fluid control
component;
[19.5.2] defining what constitutes a complete pressure
test for a particular fluid control component;
[19.5.3] defining a pressure integrity test plan by creating
the plan steps in a test plan, including defining how a fluid
control component may be configured to form fluid pathways to
test desired aspects;
[19.5.4] executing a pressure integrity test plan, and
updating the schematic illustration during the execution of the
pressure integrity test plan, to indicate that a fluid control
component, or an aspect of a fluid control component, is under
test;
[19.5.5] determining the test status of a fluid control
component, or an aspect of a fluid control component, and
updating the schematic illustration to indicate the test status of
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an aspect of a fluid control component, or the test status of the
entire fluid control component;
[19.5.6] updating the schematic illustration during the
execution of the pressure integrity test plan, to indicate that a
fluid control component, or an aspect of a fluid control
component, has passed testing;
[19.5.7] updating the schematic illustration during the
execution of the pressure integrity test plan, to indicate aspects
in the test plan that still need to be tested; and
[19.5.8] further planning, during execution of the test
plan, how a fluid control component may be configured to form
additional fluid pathways to test aspects in the test plan that still
need to be tested;
[19.6] receiving, by the computer system, a selection of an
operating position for a first plurality of fluid control symbols to
define a first fluid pathway within said illustration;
[19.7] receiving, by the computer system, a selection of an
operating position for a second plurality of fluid control symbols to
define a second fluid pathway within said illustration;
[19.8] receiving, by the computer system, a signal reflective of
a pressure sensed by said pressure sensor,
[19.9] positioning a first plurality of fluid control components
to form said first fluid pathway within said pressure system, said first
fluid pathway configured to be individually pressurized and including
said pressure sensor;
[19.10] pressurizing said first fluid pathway to a first test
pressure, causing said pressure sensor to generate a signal reflective of
a first pathway pressure;
[19.11] receiving, by the computer system, said signal reflective
of said first pathway pressure at time t1 and at time t2;
[19.12] comparing, by the computer system, said first pathway
pressure at time t1 and at time t2 and calculating, by the computer
system, a first test status of said first fluid pathway from a difference
in said first pathway pressure from time t1 to time t2;
[19.13] displaying on the output device said first test status;
[19.14] positioning a second plurality of fluid control
components to form said second fluid pathway within said pressure
system as part of an iterative testing step, said second fluid pathway
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configured to be individually pressurized and including said pressure
sensor;
[19.15] pressurizing said second fluid pathway to a second test
pressure as part of said iterative testing step, causing said pressure
sensor to generate a signal reflective of a second pathway pressure;
[19.16] modifying said schematic illustration to show said
second fluid pathway as part of said iterative testing step;
[19.17] receiving, by the computer system, said signal reflective
of said second pathway pressure at time t3 and at time t4;
[19.18] comparing, by the computer system, said second
pathway pressure at time t3 and at time t4 and calculating, by the
computer system, a second test status for said second fluid pathway
from a difference in said second pathway pressure from time t3 to time
t4;
[19.19] displaying on the output device said second test status;
[19.20] positioning a third plurality of fluid control components
to form a third fluid pathway within said pressure system, said third
fluid pathway being configured to receive said pressurized fluid if said
first fluid pathway fails to maintain said first test pressure; and
[19.21] venting said third fluid pathway to atmosphere.

Mot. Amend App’x A i–v.

B. Support for Proposed Substitute Claims
New subject matter is any addition to the claims that lacks sufficient
support in the subject patent’s original disclosure. See TurboCare Div. of
Demag Delaval Turbomach. v. Gen. Elec. Co., 264 F.3d 1111, 1118 (Fed.
Cir. 2001) (“When [an] applicant adds a claim . . . , the new claim[] must
find support in the original specification.”). The Board requires that a patent
owner show in a motion to amend that there is written-description support in
the originally filed disclosure of the subject patent for each proposed
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substitute claim. See 37 C.F.R. §§ 42.121(b)(1).10 We determine that Patent
Owner has met its burden to demonstrate that the proposed substitute claims
do not add new matter, and address in detail the principal aspects of Patent
Owner’s proposed amendments below.

1. “selecting,” “arranging,” and “defining”
In proposed substitute claim 19, proposed limitation 19.3 recites that
“forming of the schematic illustration [is] accomplished by the use of a
software application operating on the computer system” and proposed
limitation 19.4 (including limitations 19.4.1–19.4.3) recites that “said
forming” comprises “selecting,” “arranging,” and “defining fluid
communication between” symbols representative of fluid control
components. Mot. Amend App’x A i–ii. Proposed substitute claim 30
includes the same proposed limitations, identified as limitations 30.3 and
30.4 (including limitations 30.4.1–30.4.3). Id. at App’x A viii. The
proposed limitations are identical in form to those presented in Patent
Owner’s original Motion to Amend. Compare id. with Paper 20 App’x A i–
ii; Reply Amend 1 (“the ‘selecting, ‘arranging,’ and ‘defining steps have not
changed one iota since they were reviewed by the Board in its Preliminary
Guidance”).

10 Petitioner does not dispute that the proposed “iterative testing step”
amendments of limitations 19.14–19.16 of proposed substitute claim 19 have
written-description support in the originally filed disclosure. For
completeness, we note the support provided at Exhibit 1009, 17–18, 77–78,
89–90, 91 (Figs. 12, 13, 16 (steps 1314, 1316, 1318, 1320, 1322), ¶¶ 176–
177, claims 1, 9).
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In our Preliminary Guidance, we indicated that “Patent Owner appears
to have set forth adequate written description support for” these limitations
in U.S. Patent Application No. 13/291,895 (“the ’895 disclosure”). Paper
25, 8 (citing Ex. 1009, 15–20, 30, 32, 74, 75, 78, 83 (¶¶ 16, 31, 169, 171,
177, 189, Figs. 10–16). Specifically, we noted that “the ’895 disclosure
describes that ‘the schematic illustration includ[es] fluid control symbols
which mirror the fluid control components in the pressure system, and which
components, in turn, are operable to form a plurality of fluid pathways.’” Id.
(quoting Ex. 1009, 30 (¶ 16)) (alteration in original). We additionally noted
that “[t]he ’895 disclosure further describes that ‘in FIG. 16 is a flow chart
1300 depicting a method for testing the pressure integrity of a pressure
system having a plurality of fluid control components operable to define a
plurality of fluid pathways.’” Id. (quoting Ex. 1009, 20, 83 (¶ 189, Fig. 16)).
Because the relevant limitations in proposed substitute claims 19 and 30 in
the revised Motion to Amend (at issue here) are identical to the relevant
limitations in the original Motion to Amend (at issue in our Preliminary
Guidance), and the record on this point is not materially different, we see no
compelling reason to reach a different conclusion now.
Petitioner nevertheless contends that we should. Opp. Amend 1–4;
Sur-reply Amend 1–5. Although Patent Owner has withdrawn proposed
substitute claim 36, it is necessary to note the distinctions between that claim
and proposed substitute claims 19 and 30 to fully understand Petitioner’s
argument. In Patent Owner’s original Motion to Amend, proposed substitute
claim 36 included similar, but notably different, language. Compare
Paper 20 App’x A xiii–xvii with id. at App’x A i–v, viii–xi. Proposed
substitute claim 36 recited “a software application capable of operating on
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the computer system[] to form the schematic illustration by selecting . . . ,
arranging . . . , and defining.” Id. at xiv. As we explained in our
Preliminary Guidance, proposed claim 36 is unlike proposed substitute
claims 19 and 30. See Paper 25, 11–13. Withdrawn proposed substitute
claim 36 requires the software application, when operating on the computer
system, to be capable of the recited “selecting,” “arranging” and “defining”
functions in order to form the schematic illustration. On the other hand,
proposed substitute claims 19 and 30—the claims at issue here—do not
positively recite or appear to require any specific or special purpose software
capabilities.
Petitioner contends that Patent Owner’s arguments relating to the
patentability of its proposed substitute claims over the prior art are consistent
with our interpretation of proposed substitute claim 36 and inconsistent with
our interpretation of proposed substitute claims 19 and 30. Sur-reply Amend
2 (“PO now states that specialized software is required in limitation 19.4 and
30.4. Thus, despite contending the limitation has not changed ‘one iota’
from the first amendment to the revised amendment . . . , PO now expressly
disclaims the Board’s interpretation.”). We do not agree that Patent Owner
has “disclaimed” our interpretation of its proposed substitute claims.
Rather, Petitioner is conflating separate inquiries. Our Preliminary
Guidance found that limitations 19.3 and 19.4 “do not require a specialized
software interface.” Paper 25, 11–12. As we note above, the record on this
point is not materially different such that we reach the same conclusion.
Patent Owner’s arguments in response to Petitioner’s showing that the
proposed substitute claims are unpatentable are better considered as such.
That is, instead of casting such arguments as a “disclaimer” of scope in
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evaluating whether the proposed substitute claims improperly introduce new
matter, as Petitioner does, they are more appropriately considered for
whether they are commensurate with the scope of properly interpreted
claims. We discuss Patent Owner’s arguments in such context below.
Accordingly, we conclude that Patent Owner meets its burden of
showing that the “selecting,” “arranging,” and “defining” limitations of
proposed substitute claims 19 and 30 do not add new matter.

2. “Laundry List” Limitations
In proposed substitute claim 19, proposed limitation 19.5 recites
“using the schematic illustration in a software application . . . in performing
at least four” of a list of eight steps (identified as proposed limitations
19.5.1–19.5.8) that the parties refer to as the “Laundry List” limitations.
Mot. Amend App’x A ii–iii. Proposed substitute claim 30 includes the same
recitations, identified as limitations 30.5 and 30.5.1–30.5.8. Id. at App’x A
ix–x. The eight recited steps are similar to those presented in Patent
Owner’s original Motion to Amend, and which we indicated in our
Preliminary Guidance find adequate written description support in the ’895
disclosure. To wit:
a. step 19.5.1/30.5.1, “defining the testable aspects of a fluid control
component,” see, e.g., Ex. 1009, 16, 74 (Fig. 10A (element 1002), ¶ 169);
b. step 19.5.2/30.5.2, “defining what constitutes a complete pressure
test for a particular fluid control component,” see, e.g., id. at 15, 71 (Fig. 10,
element 1000, ¶ 161);
c. step 19.5.3/30.5.3, “defining a pressure integrity test plan by
creating the plan steps in a test plan, including defining how a fluid control
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component may be configured to form fluid pathways to test desired
aspects,” see, e.g., id. at 17, 19, 32, 33, 71, 75, 78–79, 80–81 (Figs. 11, 15,
¶¶ 32, 36, 160, 171, 178, 181);
d. step 19.5.4/30.5.4, “executing a pressure integrity test plan, and
updating the schematic illustration during the execution of the pressure
integrity test plan, to indicate that a fluid control component, or an aspect of
a fluid control component, is under test,” see, e.g., id. at 17–18, 20, 33, 74,
78, 83–84 (Figs. 11–14, 16, ¶¶ 37, 169, 177, 189–193)11;
e. step 19.5.5/30.5.5, “determining the test status of a fluid control
component, or an aspect of a fluid control component, and updating the
schematic illustration to indicate the test status of an aspect of a fluid control
component, or the test status of the entire fluid control component,” see, e.g.,
id. at 20, 78, 83–84 (Fig. 16, ¶¶ 177, 189–193);
f. step 19.5.6/30.5.6, “updating the schematic illustration during the
execution of the pressure integrity test plan, to indicate that a fluid control
component, or an aspect of a fluid control component, has passed testing,”
see, e.g., id. at 17–18, 78 (Figs. 11, 14, ¶ 177)12;

11 In particular, the ’895 disclosure describes that, “as shown in the
schematic illustration 1103, . . . any remaining aspects of the fluid control
components which have not yet passed testing can remain marked with a
dashed semi-circle symbol.” Ex. 1009, 78 (¶ 177); see also id. at 74 (¶ 169),
Figs. 11–14 (dashed semi-circle symbols indicate as aspect of particular flow
that is under test).
12 In particular, the ’895 disclosure describes that “the schematic illustration
1101 for the test plan shown in FIG. 11 may[] be updated to the schematic
illustration 1103 shown in FIG. 14, so as to indicate which aspects of the
fluid control valves included within the test plan have passed testing.”
Ex. 1009, 78 (¶ 177).
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g. step 19.5.7/30.5.7, “updating the schematic illustration during the
execution of the pressure integrity test plan, to indicate aspects in the test
plan that still need to be tested,” see, e.g., id. at 78 (¶ 177)13; and
h. step 19.5.8/30.5.8, “further planning, during execution of the test
plan, how a fluid control component may be configured to form additional
fluid pathways to test aspects in the test plan that still need to be tested,” see,
e.g., id.14
Petitioner does not specifically dispute that the eight individual
proposed steps have adequate written-description support in the ’895
disclosure, at least when considered in isolation. Rather, Petitioner disputes
whether the ’895 disclosure provides adequate support for such steps being
software functionalities: “This ‘laundry list’ of various functionalities of the
software systems is not taught in the original disclosure and is therefore new
matter.” Opp. Amend 5 (emphasis added). Referring to our Preliminary
Guidance addressing proposed substitute claim 36 in Patent Owner’s
original Motion to Amend, Petitioner observes that we provided the
following guidance: “Nor does the record show that the ’895 disclosure
adequately describes a computer system capable of performing each of the
[‘Laundry List’ steps].” Id. at 5–6 (quoting Paper 25, 14) (emphasis added).

13 In particular, the ’895 disclosure describes that “ the schematic illustration
1103 of the pressure system displayed on the computer system can be used
to indicate which aspects in the test plan still need to be tested.” Ex. 1009,
78 (¶ 177).
14 In particular, the ’895 disclosure describes that “[t]he schematic
illustration can also be used [to] plan as to how the fluid control components
of the piping system 1110 may be re-configured to form the additional fluid
pathways able to test those remaining aspects.” Ex. 1009, 78 (¶ 177).
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Patent Owner’s revised proposed substitute claims embrace the same
distinction we addressed above in the context of the “selecting,”
“arranging,” and “defining” limitations. That is, we explained in our
Preliminary Guidance that withdrawn proposed claim 36 is unlike proposed
substitute claims 19 and 30 because proposed claim 36 requires the software
application to be capable of performing the “Laundry List” steps. Paper 25,
13–14. Revised proposed substitute claims 19 and 30 do not impose such a
requirement; the claims require only “using the schematic illustration in a
software application . . . in performing” some of those steps (emphases
added). See Mot. Amend App’x A ii–iii, ix–x.
Petitioner again contends that Patent Owner’s argument in favor of
patentability of the claims over the asserted prior art “removes any doubt
that the claims require sophisticated software functionality.” Opp. Amend 6.
We disagree that such arguments should be used to narrow the correct scope
of the proposed substitute claims in evaluating whether such claims have
adequate written-description support. Instead, Patent Owner’s patentability
arguments are properly evaluated with respect to whether they are
commensurate with that correct scope.
In this context, we note that Patent Owner emphasizes that it is
Petitioner’s argument that is not commensurate with the scope of the
proposed substitute claims. Reply Amend 3. Patent Owner explains that it
“has only modified the language of the ‘Laundry List’ limitations to
positively recite the method steps as required limitations,” but that “the
amended language still makes it quite clear that the schematic illustration is
‘used’ in performing the method steps, not that the schematic illustration
itself performs these method steps.” Id. at 3–4.
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We, thus, conclude that Patent Owner meets its burden of showing
that the “Laundry List” limitations of proposed substitute claims 19 and 30
do not add new matter.

C. Patentability of Proposed Substitute Claims
Petitioner challenges proposed substitute claims on the following
bases: (1) lacking enablement under 35 U.S.C. § 112 ¶ 1, Opp. Amend 8–9;
and (2) under 35 U.S.C. § 103(a) for obviousness over Wodjenski, BOP
California, and Winters, alone or in further combination with U.S. Patent
No. 8,781,743 (Ex. 2021, “McKay”), id. at 15–25.

1. Enablement
A claim is enabled when “one reasonably skilled in the art could make
or use the invention from the disclosures in the patent coupled with
information known in the art without undue experimentation.” United States
v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988). In challenging the
proposed substitute claims as lacking enablement, Petitioner advances a
general argument that “[t]he ’143 Patent does not teach any algorithms or
specialized computer software to accomplish the schematic limitations
claimed in the Revised Motion.” Opp. Amend 8 (citing Ex. 1037 ¶¶ 3–13).
According to Petitioner, “[t]he inventors claim a computer-based invention
in which the computer is disclosed as a block element within a larger
system,” while “[t]he MPEP [Manual of Patent Examining Procedure] notes
this type of claiming, where no algorithms are disclosed, places enablement
in doubt.” Id. (citing MPEP 2164.06(c) (9th ed. rev. 10.2019 June 2020)).
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This general argument is not persuasive for two reasons. First, as
Patent Owner points out, it does not appear to be commensurate with the
actual claim language. See Reply Amend 5. As we discuss at some length,
supra §§ III.B.1.–III.B.2., neither the “selecting,” “arranging,” and
“defining” limitations nor the “Laundry List” limitations impose software
functionalities such that this provision is applicable. Indeed, as Petitioner
emphasizes, the ’143 patent’s description of the actual claim language is
extensive. Id. (noting example of limitation 19.5.1, “using the schematic
illustration in . . . defining the testable aspects,” and pointing to description
in Ex. 1009, 48–58 ¶¶ 160, 162, 169, 171, 178, 181–184). Second,
Petitioner’s argument is too generic because it does not specifically tie the
argument to any particular limitation. See id. (“Petitioner’s response fails to
explain how this or any other limitation is allegedly not enabled.”).
In addition, Petitioner contends that Patent Owner’s “evidence
suggests it would take several man-years of work to implement the claims
starting with the meager disclosure of the ’143 Patent,” such that undue
experimentation would be needed to make the invention. Opp. Amend 8.
But as Patent Owner replies, “[t]he major flaw with this argument is the
Petitioner complains about the PO’s own development period from before
the time it filed the application for the ‘143 Patent on November 8, 2011.”
Reply Amend 6. Because the enablement analysis presumes that persons
skilled in the art have the benefit of the patent specification, Telectronics,
857 F.2d at 785, the more relevant fact is that the inventions were actually
reduced to practice six days after filing the application for the ’143 patent.
See Ex. 2010 ¶¶ 17, 18 (inventor Cully testifying that a software platform
embodying the invention “was physically completed by November 14, 2011
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when it was successfully tested on the Maersk Developer rig on the
Cheyenne East well located in the Gulf of Mexico Lloyd Ridge area, block
400”). As Patent Owner asserts, “[n]one of the cases cited by Petitioner
suggests an analysis of pre-filing activity unaided by the patent
specification.” Reply Amend 6.
Accordingly, we conclude that Petitioner has not sufficiently shown
that the proposed substitute claims are unpatentable for lack of enablement.

2. Obviousness over Wodjenski, BOP California, and Winters
Petitioner contends that the proposed substitute claims are
unpatentable under 35 U.S.C. § 103(a) over Wodjenski, BOP California, and
Winters. “For those substantively unamended limitations not discussed [in
Petitioner’s Opposition to Patent Owner’s Revised Motion to Amend],
Petitioner relies on its arguments provided in the Petition and Opposition to
the Original Motion.”15 Opp. Amend 16–17 (citing Papers 1, 23; Ex. 1037

15 Patent Owner objects to this reliance as an improper incorporation by
reference. Reply Amend 9 (citing 37 C.F.R. § 42.6(a)(3)). With respect to
the limitations of the proposed substitute claims that are identical to their
counterparts in the original claims, we do not find Petitioner’s reliance to be
an improper incorporation. This is not an instance where Petitioner is
attempting to evade word-count limits by relying on arguments presented in
an exhibit rather than a paper subject to such limits. And given the length of
the claims and the fact that Petitioner applies the identical prior art that it
uses to challenge the original claims, we see little purpose to requiring that
Petitioner copy lengthy arguments wholesale from its Petition into its
Opposition. Such a practice would needlessly complicate and increase the
length of the Opposition with no practical effect. (cont’d)
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¶ 25). For the reasons we discuss, supra § II.E.4., we conclude that
Petitioner articulates adequate reasoning, supported by rational
underpinning, to effect the combination of teachings of the three references.
And we adopt our analysis, supra §§ II.E.5.–II.E.15., for those limitations
that Patent Owner does not propose to alter with its revised Motion to
Amend. Accordingly, we discuss below only those limitations that are
impacted by Patent Owner’s revised Motion to Amend.

a. Limitations 19.3 and 30.3
Limitations 19.3 and 30.3 require that “said forming of the schematic
illustration [be] accomplished by the use of a software application operating
on the computer system, to form the schematic illustration representative of
the pressure system.” Mot. Amend App’x A i, viii. For these limitations,
Petitioner relies on Wodjenski as “show[ing] forming a schematic
representative of a pressure system,” as illustrated in Figures 5 and 9 of
Wodjenski. Opp. Amend 17 (citing Ex. 1004, Figs. 4, 9, ¶¶ 34, 71, 89). In

With respect to the limitations of the proposed substitute claims that
are different from limitations of the original claims, but which are identical
to limitations proposed in Patent Owner’s original Motion to Amend, we
agree that Petitioner’s incorporation is technically improper. 37 C.F.R.
§ 42.6(a)(3). But we are mindful of the following: (1) the opportunity for a
patent owner to revise its motion to amend is part of a pilot program being
tested by the Office; (2) we are unaware of another Board panel previously
determining that incorporation from an opposition to an original motion to
amend into an opposition to a revised motion to amend under that pilot
program is improper (and Patent Owner directs us to no case making such a
determination); and (3) the amount of material incorporated is modest (less
than two pages, see Paper 23, 23–25). Accordingly, we waive the
prohibition of 37 C.F.R. § 42.6(a)(3) for this specific incorporation under
these specific circumstances. 37 C.F.R. § 42.5(b).
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describing Figure 5, Wodjenski specifically teaches that the schematic
illustration is “generate[d].” Ex. 1004 ¶ 71. In addition, Petitioner observes
that “Winters and Wodjenski both teach hosting the software locally on the
computer system.” Opp. Amend 17 (citing Ex. 1004 ¶ 8; Ex. 1005, Fig. 2
¶ 63). According to Petitioner, and supported by the testimony of Mr.
Anderson, “[t]he effect of the combination is to present the schematics
formed according to BOP California on an output device as shown in
Wodjenski.” Id. (citing Ex. 1034 ¶¶ 12–13).
Patent Owner disputes this showing, arguing that “[n]either BOP
[California], Wodjenski, nor their combination discloses the forming of a
schematic illustration, because both provide only simple static images, at
most with overlays of static images.” Mot. Amend 15; Reply Amend 9–10
(referring back to Patent Owner’s revised Motion to Amend in replying to
Petitioner’s arguments for limitation 19.3). In addition, Patent Owner
contends that “[n]one [of BOP California and Wodjenski] disclose the
forming of a schematic illustration by use of a software application operating
on a computer system.” Mot. Amend 15.
Petitioner presents the more persuasive position, at least in part
because Patent Owner fails to account for Winters in Petitioner’s proposed
combination of art. Indeed, Petitioner expressly cites the portion of Winters
that teaches that “[d]igital BOP testing is most conveniently implemented by
software loaded on a laptop computer with the intent of supporting the
current workflow of subsea BOP testing.” Opp. Amend 17; Ex. 1005 ¶ 63.
Similarly, as Petitioner points out, “[w]hile [Patent Owner] continually
argues the art teaches a ‘static’ solution, it fails to consider that in
combination the art is not static.” Sur-reply Amend 12. For example,
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“implementing Winters [in] the context of Wodjenski would not be static in
that Wodjenski teaches indication of valve information by coloration on the
valve, and Winters teaches that valve information should be reflective of
pressure tests.” Id.
Accordingly, we conclude that Petitioner makes a persuasive showing
with respect to limitations 19.3 and 30.3.

b. Limitations 19.4 and 30.4
Limitations 19.4 (including limitations 19.4.1–19.4.3) and 30.4
(including limitations 30.4.1–30.4.3) recite that “said forming of the
schematic illustration” comprises the “selecting,” “arranging,” and
“defining” limitations. Mot. Amend App’x A i–ii, viii. We identify
Petitioner’s evidence for each of these sublimitations below, and then
address the parties’ arguments.

i. Limitations 19.4.1 and 30.4.1
Limitations 19.4.1 and 30.4.1 recite “selecting one or more symbols
representative of fluid control components.” Mot. Amend App’x A i, viii.
For these limitations, Petitioner notes that BOP California provides
guidelines for the “selection of BOPE [i.e., blowout prevention equipment],”
and provides a chart for selection of the equipment class. Opp. Amend 18
(citing Ex. 1003, 14–17). As Petitioner further observes, “[e]ach schematic
of BOP California is created through selection of symbols representative of
fluid control components fashioned into a complete BOP system.” Id. That
is, BOP California teaches that the schematics comprise “the BOPE system
as it should appear during normal drilling operations.” Ex. 1003, 83.
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ii. Limitations 19.4.2 and 30.4.2
Limitations 19.4.2 and 30.4.2 recite “arranging said symbols on the
schematic illustration.” Mot. Amend App’x A ii, viii. For these limitations,
Petitioner notes that BOP California describes different American Petroleum
Institute “arrangements” of certain classes of BOPE systems. Opp. Amend
19 (citing Ex. 1003, 15, 83). In addition, Petition contends that Wodjenski
also teaches or suggests these limitations because the schematics of
Wodjenski’s Figures 5 and 9 are “arranged.” Id.

iii. Limitations 19.4.3 and 30.4.3
Limitations 19.4.3 and 30.4.3 recite “defining fluid communication
between said symbols.” Mot. Amend App’x A ii, viii. For these limitations,
Petitioner notes that, in BOP California, fluid communication is taught
between symbols by grey hatching that indicates continuous fluid pathways.
Opp. Amend 20 (citing Ex. 1003, 85). Petitioner additionally observes that
Wodjenski “describ[es] components in fluid communication cooperatively
interacting.” Id. (citing Ex. 1004, Figs. 5, 9, ¶ 90).

iv. Patent Owner’s Arguments
Patent Owner contends that the “selecting,” “arranging,” and
“defining” limitations patentably distinguish the asserted prior art because
“[n]one of these references allow a user to select components. None allows
a user to arrange or move components. None allows a user to define fluid
communication paths between components.” Mot. Amend 17 (emphases
added). Patent Owner also contends that these limitations patentably
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distinguish the asserted prior art because “[a]ny symbols in the prior art are
all static.” Reply Amend 10.
We agree with Patent Owner’s characterizations of the prior art,
namely that the art shows static schematic illustrations that are not formed
through manipulation by a user performing the recited “method for testing.”
But the difficulty with Patent Owner’s position is similar to the difficulty we
discussed with Patent Owner’s arguments addressing the “forming”
limitation of the original independent claims, supra § II.E.5.b.. That is,
Patent Owner essentially repeats its argument directed at the original claims
that “the user is not provided with the ability to create . . . his or her own
custom version of a schematic illustration of the pressure system.” See PO
Resp. 50–51. Although Patent Owner proposes to add the steps of
“selecting,” “arranging,” and “defining” in limiting the “forming” step of the
proposed substitute claims, those steps do not impose any requirement that a
user be accorded a dynamic ability to form the recited “schematic
illustration.” See Paper 25, 11–12 (Preliminary Guidance advising the
parties that, as written, (1) the “selecting,” “arranging,” and “defining”
“limitations do not require a specialized software interface that allows a user
to actually select and arrange fluid control components, for example, with a
‘drag and drop’ functionality”; and (2) adequate written description support
is provided by the ’895 disclosure’s “descriptions of a computer system
configured to form a schematic illustration and provide it to a user, and
various completed schematic illustrations, each of which includes a
particular selection and arrangement of fluid component symbols that define
a plurality of pathways” (emphases added)).
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With this understanding of the proposed substitute claim language, we
find Petitioner’s evidence sufficient. That is, Petitioner has identified
teachings within the asserted prior art that support its contention that the
forming of schematic illustrations in that prior art results from performing
the “selecting,” “arranging,” and “defining” steps. We conclude that
Petitioner makes a persuasive showing with respect to limitations 19.4 and
30.4, and their respective sublimitations.

c. Limitations 19.5 and 30.5
Limitations 19.5 and 30.5 recite “using the schematic illustration in a
software application operating on the computer system in performing at least
four” of the steps recited as sublimitations. Mot. Amend App’x A ii–iii, ix–
x.

i. Limitations 19.5.1 and 30.5.1
Limitations 19.5.1 and 30.5.1 recite “defining the testable aspects of a
fluid control component.” Mot. Amend App’x A ii, ix. For these
limitations, Petitioner identifies BOP California’s disclosure of different
procedures for testing a kill line check valve and for testing a standpipe
valve. Opp. Amend 20 (citing Ex. 1003, 86, 122). According to Petitioner,
BOP California “teaches forming the schematics to define the testable
aspects” of these components. Id. Mr. Anderson supports these
identifications by explaining that “a kill line check valve is a one-way valve,
and can only be tested in one direction,” while a “standpipe valve can be
pressurized on both sides.” Ex. 1034 ¶ 27.
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Patent Owner does not dispute that BOP California teaches that
different testing procedures are needed for the different components. See
Reply Amend 12 (“BOP California generally teaches testing the sides or
direction of a valve”). Instead, Patent Owner contends that “this is not
accomplished using a schematic illustration as required by limitation
19.5.1.” Id. But BOP California itself makes explicit reference to Figure
27-2b when describing the procedure for testing the kill line check valve,
and Mr. Anderson makes a comparison of Figures 27-4k and 27-6a in
describing the different testing procedures. Ex. 1003, 86; Ex. 1034 ¶ 27.
Patent Owner does not explain why such drawings are not schematic
illustrations used in defining the testable aspects of the respective
components. And Patent Owner’s argument attacks the BOP California
reference individually rather than as part of Petitioner’s full combination of
references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne
cannot show non-obviousness by attacking references individually where, as
here, the rejections are based on combinations of references.”); see also Sur-
reply Amend 12 (“PO fails to appreciate that the grounds suggested are
obviousness grounds, in which parts of limitations are taught or suggested
by multiple pieces of art.”).
We conclude that Petitioner makes a persuasive showing with respect
to limitations 19.5.1 and 30.5.1.

ii. Limitations 19.5.2 and 30.5.2
Limitations 19.5.2 and 30.5.2 recite “defining what constitutes a
complete pressure test for a particular fluid control component.” Mot.
Amend App’x A ii, ix. For these limitations, Petitioner observes that BOP
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California “requires a complete pressure test for ‘BOP stack, kill- and
choke-line valves, working string safety value [and others]’ ‘must be tested
in the direction of blowout flow.’” Opp. Amend 21 (citing Ex. 1003, 79).
We have reviewed the portion of BOP California cited by Petitioner, which
describes “INSPECTION AND TESTING PROCEDURES” and agree that
the disclosure meets the claim limitations by defining complete pressure
tests for specific components.
Patent Owner contends that the limitation is not met because BOP
California “is merely a generic discussion of testing and is not a software
solution.” Mot. Amend 18. In addition, Patent Owner contends that
“Wodjenski[] and Winters do not address test planning or more specifically,
the defining of a complete pressure test for a BOP system.” Id. (citing Ex.
2025 ¶ 18). Such attacks on the references individually are not persuasive
when Petitioner relies on a combination of references. See Keller, 642 F.2d
at 425; Sur-reply Amend 12.
We conclude that Petitioner makes a persuasive showing with respect
to limitations 19.5.2 and 30.5.2.

iii. Limitations 19.5.3 and 30.5.3
Limitations 19.5.3 and 30.5.3 recite “defining a pressure integrity test
plan by creating the plan steps in a test plan, including defining how a fluid
control component may be configured to form fluid pathways to test desired
aspects.” Mot. Amend App’x A ii, ix. For these limitations, Petitioner again
refers to BOP California’s disclosure of a plan for testing a kill line check
valve, as well as a plan for testing a lowermost ram preventer. Opp.
Amend 21. Because the configurations test desired aspects, and because
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different tests test different aspects, Petitioner contends that the limitation is
met. Id. As we note immediately above, we have reviewed the portion of
BOP California cited by Petitioner. Supra, § III.C.2.c.ii. We agree that the
disclosure meets the claim limitations because it describes pressure integrity
test plans that include component configuration to form specific fluid
pathways.
Patent Owner again argues against references individually by
contending that BOP California “is merely a discussion of generic testing on
paper and is not a software solution.” Mot. Amend 18. This argument is not
persuasive. See Keller, 642 F.2d at 425; Sur-reply Amend 12.
We conclude that Petitioner makes a persuasive showing with respect
to limitations 19.5.3 and 30.5.3.

iv. Limitations 19.5.4 and 30.5.4
Limitations 19.5.4 and 30.5.4 recite “executing a pressure integrity
test plan, and updating the schematic illustration during the execution of the
pressure integrity test plan, to indicate that a fluid control component, or an
aspect of a fluid control component, is under test.” Mot. Amend App’x A ii,
ix. For these limitations, Petitioner relies on Wodjenski’s teaching of
forming a schematic illustration for executing a pressure integrity test plan,
and contends that BOP California teaches or suggest updating the schematic
illustration because, in BOP California, “[t]he illustrations change from one
figure to the next to show greyed areas abutting each component under test.”
Opp. Amend 22.
Patent Owner repeats its unpersuasive argument attacking BOP
California individually as “not disclos[ing] anything to execute or update as
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it is strictly a hypothetical example on paper.” Mot. Amend 18; see Keller,
642 F.2d at 425; Sur-reply Amend 12. In addition, Patent Owner argues
that, “[e]ven in the fixed example test, [BOP California] does not enable
user to instantly see the components/aspects under test.” Mot. Amend 18–19
(emphasis added). This argument is also unpersuasive because the
limitations require only that the schematic illustration be updated to
“indicate” that a fluid control component, or an aspect of a fluid control
component, is under test, not that a user “instantly see” such components or
aspects.
We conclude that Petitioner makes a persuasive showing with respect
to limitations 19.5.4 and 30.5.4.

v. Limitations 19.5.5 and 30.5.5
Limitations 19.5.5 and 30.5.5 recite “determining the test status of a
fluid control component, or an aspect of a fluid control component, and
updating the schematic illustration to indicate the test status of an aspect of a
fluid control component, or the test status of the entire fluid control
component.” Mot. Amend App’x A ii, ix. Petitioner addresses these
limitations by pointing again to BOP California’s example of testing a kill
line check valve, which “is considered passed if the pressure indicate at the
pump pressure gauge drops and the choke manifold pressure gauge remains
high.” Opp. Amend 23 (citing Ex. 1003, 86; Ex. 1034 ¶ 39). In addition
BOP California discloses that “connections are considered passed if pressure
readings are within 10 percent of each other [and] failed if [the] gauge
drops.” Id. (citing Ex. 1003, 86; Ex. 1034 ¶ 39).
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Patent Owner makes exactly the same arguments for these limitations
as for limitations 19.5.4 and 30.5.4, which are unpersuasive for the reasons
we discuss, supra § III.C.2.c.iv. See Mot. Amend 18–19.
We conclude that Petitioner makes a persuasive showing with respect
to limitations 19.5.5 and 30.5.5.

vi. Limitations 19.5.6 and 30.5.6
Limitations 19.5.6 and 30.5.6 recite “updating the schematic
illustration during the execution of the pressure integrity test plan, to
indicate that a fluid control component, or an aspect of a fluid control
component, has passed testing.” Mot. Amend App’x A iii, ix. For these
limitations, Petitioner relies on (1) BOP California for “determining if a test
is passed”; (2) Winters for “updating on the output device of a computer
system visual indication of a passed test, with its green light”; and
(3) Wodjenski for “an update [that] can be presented on the schematic itself,
with the visual indication, such as the stoplight pattern, appearing on the
component icon.” Opp. Amend 24. Petitioner supports this combination of
teachings with testimony by Mr. Anderson. Ex. 1034 ¶ 42.
Patent Owner would combine the reference teachings differently:
“Combining the best of Wodjenski, BOP [California], and Winters, may
teach a green light in the corner of the screen indicating a passed test for an
entire pathway in a fixed schematic or BOP diagram.” Mot. Amend 21. Mr.
Rodgers supports Patent Owner’s position that “the limit of the prior art
absent the inventive steps taught by the ‘143 patent” is as follows:
[F]or the purpose of developing BOP test planning software,
one would follow the generic sequence in BOP [California] to
display the fixed images on a screen to illustrate the pathways
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for the user. At the end of each test step in the fixed test plan,
the green light from Winters would indicate the pathway test
status.

Id. (citing Ex. 2025 ¶ 30).
Central to Patent Owner’s argument that Petitioner’s combination of
teachings is grounded in hindsight is its contention that “[n]one of these
references provide a test status indicator for a particular component.” Id.
at 19. But we rejected that position as a basis for distinguishing the asserted
prior art when considering original dependent claim 3, supra § II.E.7. We
do not see a sufficiently compelling reason to reach a different conclusion in
the context of the proposed substitute claims.
Thus, although we acknowledge that limitations 19.5.6 and 30.5.6
present a closer call than others of the “Laundry List” limitations, we
conclude that Petitioner makes a persuasive showing.

vii. Limitations 19.5.7 and 30.5.7
Limitations 19.5.7 and 30.5.7 recite “updating the schematic
illustration during the execution of the pressure integrity test plan, to
indicate aspects in the test plan that still need to be tested.” Mot. Amend
App’x A iii, x. Petitioner addresses these limitations by observing that,
“[w]ith each schematic of . . . BOP California, the test is conducted, and the
following schematic shows the aspect of the next component under test to be
tested.” Opp. Amend 24. In light of this, and supported by the testimony of
Mr. Anderson, Petitioner reasons that “[a] skilled artisan would recognize
this figure showing the next component and aspect to be tested as an
indication in the test plan of an aspect still needed to be tested.” Id. at 24–25
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Patent Owner relies on the same reasoning presented for limitations
19.5.6 and 30.5.6, particularly “as it relates to indicating component test
status.” Mot. Amend 21 (citing Ex. 2025 ¶ 31). For the reasons we discuss,
supra § III.E.2.c.vi., we disagree that this provides a sufficient basis for
distinguishing the asserted prior art.
Accordingly, we conclude that Petitioner makes a persuasive showing
with respect to limitations 19.5.7 and 30.5.7.

viii. Limitations 19.5.8 and 30.5.8
Limitations 19.5.8 and 30.5.8 recite “further planning, during
execution of the test plan, how a fluid control component may be configured
to from additional fluid pathways to test aspects in the test plan that still
need to be tested.” Mot. Amend App’x A iii, x. Petitioner observes that
BOP California discloses configuring fluid control components to form
additional pathways. Opp. Amend 25. As a specific example, Petitioner
points to the fluid pathway of Figure 27-4k of BOP California, which
extends to the choke line master valve, which is opened in Figure 27-5,
extending the fluid pathway to the choke manifold valves. Id. (citing
Ex. 1003, 101–102). Petitioner reasons that “[t]his allows for testing aspects
that are yet untested, e.g., the annual preventer and connection.” Id. (citing
Ex. 1003, 96; Ex. 103416 ¶ 47).
Patent Owner again argues against references individually by
contending that BOP California “is merely printed paper with generic, fixed
images that do not enable a user to identify untested components or aspects

16 Petitioner’s citation to Exhibit “1035” appears to be a typographical error.
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or to define additional pathways during a test.” Mot. Amend 22 (citing
Ex. 2025 ¶ 35). This argument is not persuasive. See Keller, 642 F.2d at
425; Sur-reply Amend 12.
Accordingly, we conclude that Petitioner makes a persuasive showing
with respect to limitations 19.5.8 and 30.5.8.

ix. Summary
We conclude that Petitioner makes a persuasive showing that each of
the “Laundry List” limitations is taught by the combination of prior art
references as articulated by Petitioner. As we indicate, Petitioner’s showing
for some of those limitations is stronger than for others. But even were we
to decide differently for those limitations where Petitioner’s showing is
weaker, we would still find Petitioner to make a persausive showing for “at
least four” of the eight limitations, as limitations 19.5 and 30.5 require.

d. Limitations 19.14–19.16
Limitations 19.14 and 19.15 of proposed substitute claim 19
correspond to limitations 1.11 and 1.12 of original claim 1, with Patent
Owner proposing to further limit both of the recited steps to be “part of an
iterative testing step.” Mot. Amend App’x A iv. Limitation 19.16 further
recites “modifying said schematic illustration to show said second fluid
pathway as part of said iterative testing step.” Id.
Except for the recitation of being “part of an iterative testing step,” we
incorporate our analysis of limitations 1.11 and 1.12, supra § II.E.5.j., herein
to our analysis of limitations 19.14 and 19.15. For the additional recitation
of the iterative testing step, Petitioner asserts that “[t]he test of BOP
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California is iterative.” Paper 23 (Petitioner’s Opposition to original Motion
to Amend), 23; Opp. Amend 16–17 (Petitioner incorporating argument in
revised Motion to Amend); see supra n.15. Petitioner supports this assertion
by observing that the ’143 patent explains that “iterative test procedures” are
applied “to further isolate failures down to one or more particular leaking
fluid control components.” Paper 23, 23; Ex. 1001, 28:43–52. As an
example of such iterative testing, Petitioner points specifically to BOP
California’s disclosure of testing ram preventers. Paper 23, 24. As
Petitioner asserts, supported by Mr. Anderson’s testimony, BOP California
“teaches that valve positions should be changed between test, and indicates
with headers which component to suspect as failing at each orientation.” Id.
(citing Ex. 1003, 89), Ex. 1034 ¶ 50. BOP California thus teaches
“progressing iteratively through valve positions to test the ram preventers,
swivel, pipe-ram preventers, among others.” Paper 23, 24.
For the further recitation of limitation 19.16, Petitioner additionally
observes that BOP California “shows each fluid pathway in greyed hatching
figures,” and that the fluid pathway is updated for each new pressurized
area. Id. In combination with Wodjenski’s teaching, as we discuss, supra
§ II.E.5.j., showing fluid pathways would have been obvious over the
combination of references. See id.; Ex. 1034 ¶ 52.
Patent Owner substantially repeats its argument against references
individually by contending that BOP California “describes a fixed test
sequence for an example BOP system on paper but provides no means of
performing an iterative testing process,” and that BOP California “provides
no teaching to modify a schematic as all of the images and the test sequence
are fixed examples.” Mot. Amend 22. This argument is not persuasive in
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light of the specific disclosures in BOP California that Petitioner identifies
of varying valve positions to test specific components. See Keller, 642 F.2d
at 425; Sur-reply Amend 12.
Accordingly, we conclude that Petitioner makes a persuasive showing
with respect to limitations 19.14–19.16.

e. Conclusion
We conclude that Petitioner makes a persuasive showing for every
limitation of proposed substitute independent claims 19 and 30.
Accordingly, we conclude that Petitioner shows, by a preponderance of the
evidence, that those claims are unpatentable under 35 U.S.C. § 103(a) over
Wodjenski, BOP California, and Winters. Because proposed substitute
dependent claims 20–29 and 31–35 are identical to original dependent
claims 2–11 and 13–17, but for their dependence from the proposed
substitute independent claims 19 and 30, we conclude that Petitioner shows,
by a preponderance of the evidence, that those dependent claims are
unpatentable under 35 U.S.C. § 103(a) over Wodjenski, BOP California, and
Winters, for the reasons discussed, supra § II.E.6.–II.E.14.

3. Obviousness over Wodjenski, BOP California, Winters, and McKay
Because we conclude that Petitioner shows, by a preponderance of the
evidence, that all proposed substitute claims are unpatentable based on the
combination of Wodjenski, BOP California, and Winters, we do not reach
the issue of whether the claims are unpatentable over the further
combination with McKay. Cf. Gleave, 560 F.3d at 1338; Beloit, 742 F.2d at
1423.
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D. Summary
Because Petitioner sufficiently shows that all proposed substitute
claims are unpatentable for obviousness over the combination of Wodjenski,
BOP California, and Winters, we deny Patent Owner’s revised Motion to
Amend the claims.

IV. CONCLUSION
The table below summarizes our conclusions as to the challenged
claims.
Claim(s) 35 U.S.C.
§17
References Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1–17 103(a) BOP California,
Wodjenski,
Winters
1–17
1–17 103(a) BOP California,
Wodjenski,
Franklin

1–17 103(a) Wodjenski, BOP
California

Overall
Outcome
1–17

17 As indicated, supra § II.F., we do not reach Petitioner’s challenges based
on BOP California, Wodjenski, and Franklin, nor Petitioner’s challenges
based on Wodjenski and BOP California.
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The table below summarizes our conclusions as to Petitioner’s Motion
to Amend the claims.18
Motion to Amend Outcome Claims
Original Claims Canceled by Amendment
Substitute Claims Proposed in the Amendment 19–35
Substitute Claims: Motion to Amend Granted
Substitute Claims: Motion to Amend Denied 19–35
Substitute Claims: Not Reached

V. ORDER
It is
ORDERED that, based on a preponderance of the evidence, claims 1–
17 of U.S. Patent No. 9,207,143 B2 have been shown to be unpatentable;
FURTHER ORDERED that Patent Owner’s revised Motion to Amend
that includes proposed substitute claims 19–35 is denied; and
FURTHER ORDERED that, because this is a final written decision,
parties to this proceeding seeking judicial review of our decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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).
IPR2020-00923
Patent 9,207,143 B2

94
For PETITIONER:

Brian C. Nash
Steven P. Tepera
PILLSBURY WINTHROP SHAW PITTMAN LLP
brian.nash@pillsburylaw.com
steven.tepera@pillsburylaw.com

For PATENT OWNER:

Charles J. Rogers
Thomas L. Warden
CONLEY ROSE, P.C.
crogers@conleyrose.com
twarden@conleyrose.com