Paper No. Filed: May 1, 2015 UNITED STATES PATENT AND...

Paper No. _______ Filed: May 1, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

__________________________________________________

NATIONAL OILWELL VARCO, L.P. Petitioner

v.

PARALLEL SEPARATION INNOVATIONS, LLC Patent Owner

Patent No. 5,593,582 Issue Date: January 14, 1997

Title: Two for One Shale Shaker

PETITION FOR INTER PARTES REVIEW

Petition for Inter Partes Review

ii

Table of Contents

Table of Authorities .................................................................................................. iv

List of Exhibits .......................................................................................................... vi

I. Introduction ...................................................................................................... 1

II. Mandatory Notices Under 37 C.F.R. § 42.8 .................................................... 2

III. Grounds for Standing ....................................................................................... 3

IV. Statement of Precise Relief Requested ............................................................ 3

V. The ‘582 Patent ................................................................................................ 4

A. Background of the Technology ............................................................. 4

B. Overview of the ‘582 Patent .................................................................. 5

C. The Only Alleged Novelty of the ‘582 Patent is the Use of Multiple Screens in One Separator ...................................................... 7

VI. Claim Construction .......................................................................................... 9

VII. Detailed Explanation of Grounds for Unpatentability .................................. 11

A. Ground 1: Claims 1, 2, 3, and 6 are anticipated by Harry ................. 12

B. Ground 2: Claims 1, 2, 3, and 6 are obvious based on Harry ................................................................................................... 19

C. Ground 3: Claim 3 is obvious over Harry in view of Frevert ................................................................................................. 20

1. Frevert discloses a removable tray from a bypass mechanism exactly like claim 3 of the ‘582 patent. ................. 20


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2. A POOSITA would have been motivated to combine the teachings of Frevert with Harry – making claim 3 obvious ................................................................................... 21

D. Ground 4: Claims 1- 6 are anticipated by Miller ............................... 23

E. Ground 5: Claims 1 – 6 are obvious based on Miller in view of Harry ............................................................................................... 29

F. Ground 6: Claim 3 is obvious over Miller in view of Frevert ............................................................................................................. 37

G. Ground 7: Claims 1 – 6 are anticipated by Tsutsumi ......................... 38

H. Ground 8: Claims 1 - 6 are obvious based on Tsutsumi in view of Harry ...................................................................................... 45

I. Ground 9: Claims 1, 2, 3, and 6 are obvious over Schmidt in view of Harry .................................................................................. 51

VIII. PSI’s Arguments Cannot Overcome this Petition ......................................... 56

1. The preamble term “shale shaker” does not prevent the consideration of any of these references or otherwise limit the patent claims .................................................................................. 56

2. Any alleged secondary considerations of non-obviousness are more imagined than real and still fall short ................................... 58

IX. Conclusion ..................................................................................................... 60


iv

Table of Authorities

Page(s)

FEDERAL CASES

Brown v. 3M, 265 F.3d 1349 (Fed. Cir. 2001) ............................................................... 10, 56

Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801 (Fed. Cir. 2002) ....................................................................... 57

Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331 (Fed. Cir. 2009) ............................................................... 43, 48

Colida v. Sony Corp., 70 F.3d 130 (Fed. Cir. 1995) ......................................................................... 10

Eon-Net LP v. Flagstar Bancorp, 653 F.3d 1314 (Fed. Cir. 2011) ..................................................................... 59

Graham v. John Deere, 383 U.S. 1, 18 (1966) ...................................................................................... 2

In re Huai-Hung Kao, 639 F.3d 1057 (Fed. Cir. 2011) ..................................................................... 58

Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d 1323 (Fed. Cir. 2001) ..................................................................... 11

J.T. Eaton & Co. v. Atlantic Paste & Glue Co., 106 F.3d 1563 (Fed. Cir. 1997) ..................................................................... 58

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 402, 127 S. Ct. 1727, 1732, 167 L. Ed. 2d 705 (2007) ........................................................................ 19, 22, 23, 30, 36, 37, 50

Mathis v. Spears, 857 F.2d 749 (Fed. Cir. 1988) ......................................................................... 1

Phillips v. AWH Corp., 415 F.3d 1303 (Fed.Cir.2005) ......................................................................... 9


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PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 86 USPQ2d 1385 (Fed. Cir. 2008) ....................................... 57

Wyers v. Master Lock Co., 616 F.3d 1231 (Fed. Cir. 2010) ............................................................... 30, 59

FEDERAL STATUTES & REGULATION

35 U.S.C. § 154 .......................................................................................................... 1

35 U.S.C. § 285 ......................................................................................................... 1

35 U.S.C. § 102(b) ................................................................................................. 3, 4

35 U.S.C. § 103 .................................................................................................. 19, 20

35 U.S.C. § 103(a) ............................................................................................. 3, 4, 7

35 U.S.C. § 314(a) ..................................................................................................... 2

37 C.F.R. § 42.8 ......................................................................................................... 2

37 C.F.R. § 42.104(a) ................................................................................................. 3

P.T.A.B. DECISIONS & ORDERS

SAP v. Versata, CBM 2010-00001, Paper 70 (June 11, 2013) ...................... 8, 10, 11


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List of Exhibits

1001 U.S. Patent No. 5,593,582 (“‘582 patent”)

1002 Prosecution History of the ‘582 Patent

1003 Acacia Research Group Articles Re: Patent Troll

1004 Acacia Research Group’s Assignment after Purchase of the ‘582 Patent

1005 Acacia Research Group’s Creation of Parallel Separations Innovations, L.L.C. (“PSI”)

1006 Acacia Research Group’s Assignment of the ‘582 patent to PSI

1007 PSI’s Complaint Against National Oiwell Varco, L.P. (“NOV”) for infringement of the ‘582 patent (E.D. Tex. – served on May 1, 2014)

1008 Pursuant to Eastern District of Texas Local Patent Rules, PSI’s Preliminary Infringement Contentions

1009 Pursuant to Eastern District of Texas Local Patent Rules, PSI’s Proposed Construction of the ‘582 Patent Claim Terms and Phrases

1010 PSI’s Interrogatory Response Relating to Obviousness Under 35 U.S.C. § 103

1011 U.S. Patent No. 4,306,974 (“Harry”)

1012 U.S. Patent No. 3,452,868 (“Miller”)

1013 U.S. Patent No. 4,555,330 (“Tsutsumi”)


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1014 U.S. Patent No. 2,908,391 (“Frevert”)

1015 Declaration of Mike Morgenthaler (Expert on the Technology Disclosed in the ‘582 Patent and Related Prior Art)

1016 U.S. Patent No. 4,065,382 (“Derrick”)

1017 U.S. Patent No. 4,234,416 (“Lower”)

1018 U.S. Patent No. 4,940,535 (“Fisher”)

1019 U.S. Patent No. 4,322,288 (“Schmidt”)

1020 U.S. Patent No. 4,376,042 (“Brown”)

1021 Dictionary Definition Relating to Claim Construction

1022 Declaration of Bradford T. Laney


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I. Introduction

U.S. Pat. 5,593,582 (‘582 patent) issued back on January 14, 1997. One of the

largest patent trolls in the country, Acacia Research Group, recently bought it a few

months before its expiration. Before Acacia, this patent was never enforced or

defended. It was deserted. Why? Even a cursory review of the prior art proves - on

many grounds - that this patent is invalid. NOV respectfully asks The Board to grant

this petition and cancel all of the claims of the ‘582 patent.

On January 14, 1997, U.S. Patent No. 5,593,582 (‘582 patent) issued to

inventor James Roff, Jr. This patent laid dormant for over a decade until it was

purchased by Acacia Research Group on January 7, 2013. Ex. 1001 & 1004. The

patent continued to lay dormant until its expiration on January 14, 2014.1

On March 21, 2014, Acacia formed Parallel Serration Systems, L.L.C. (“PSI”

or “Patent Owner”) as a subsidiary, and assigned the ‘582 patent to PSI the same

day. Ex. 1006. PSI was formed solely to shield Acacia from liability for the

upcoming baseless litigation. See Mathis v. Spears, 857 F.2d 749, 754 (Fed. Cir.

1988)(holding 35 U.S.C. § 285 allowing an award of attorneys’ fees to the prevailing

party is “the only deterrent to the equally improper bringing of clearly unwarranted

suits on invalid or unenforceable patents.”)(emphasis added)

1 Under 35 U.S.C. § 154, the ‘582 patent was given 17 years from the issue date.


2

On April 24, 2014, PSI filed its baseless claims against NOV. Ex. 1007

(served on May 1, 2014). PSI’s mission was simple: extort a settlement on its

unmistakably invalid patent. The PTO is the proper place to prevent this injustice.

See Graham v. John Deere, 383 U.S. 1, 18 (1966)(“[T]he primary responsibility for

sifting out unpatentable material lies in the Patent Office.”)

NOV respectfully presents nine grounds of invalidity for the Board’s review.

NOV must show “a reasonable likelihood that the Petitioner would prevail with

respect to at least one of the claims challenged in the petition.” 35 U.S.C. § 314(a).

This Petition not only meets this threshold – it hurdles it. NOV asks the Board to

grant its petition and to find all claims of the ‘582 patent invalid.

II. Mandatory Notices Under 37 C.F.R. § 42.8

Real Party-In-Interest: National Oilwell Varco, L.P. (“NOV” or “Petitioner”).

Related Matters: PSI (the patent owner) has asserted the ‘582 patent in the

following actions: Parallel Separations Innovations, Inc. v. National Oilwell Varco,

L.P., et. al. Cause No. 2:14-cv-556 (E.D. Tex.)(transferred to S.D. Tex. Case No.

4:15-cv-920); Parallel Separations Innovations, Inc. v. Schlumberger, et. al. Cause

No. 2:14-cv-549 (E.D. Tex.); Parallel Separations Innovations, Inc. v. Axiom

Process, L.L.C., et. al. Cause No. 2:14-cv-552 (E.D. Tex.).


3

Lead and Back Up Counsel, Service Information, and Payment of Fees:

Lead Counsel Backup Counsel Robert M. Bowick, Jr. (Reg. No. 46,569)Raley & Bowick, L.L.P. 1800 Augusta Dr., Suite 300 Houston, TX 77057 Telephone: (713) 429-8050 Fax: (713) 429 – 8045 [email protected]

Bradford T. Laney (Reg. No. 62,476) Raley & Bowick, L.L.P. 1800 Augusta Dr., Suite 300 Houston, TX 77057 Telephone: (713) 429-8056 Fax: (713) 429 – 8045 [email protected]

Counsel consents to electronic service and submits the required fees.

III. Grounds for Standing

Under 37 C.F.R. § 42.104(a), NOV certifies that the ‘582 patent is available

for inter partes review, and that NOV is not barred or estopped from requesting inter

partes review.

IV. Statement of Precise Relief Requested

NOV respectfully requests review of claims 1 – 6 of the ‘582 patent and

cancellation of these claims as unpatentable on the following grounds:

Ground 1: Claims 1, 2, 3, and 6 are anticipated under pre-AIA 35 U.S.C. § 102(b)

by U.S. Patent No. 4,306,974 (“Harry”).

Ground 2: Claims 1, 2, 3, and 6 are obvious under pre-AIA 35 U.S.C. § 103(a)

based on Harry.

Ground 3: Claim 3 is obvious under pre-AIA 35 U.S.C. § 103(a) over Harry in

view of U.S. Patent No. 2,908,391 (“Frevert”).


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Ground 4: Claims 1 - 6 are anticipated under pre-AIA 35 U.S.C. § 102(b) by U.S.

Patent No. 3,452,868 (“Miller”).

Ground 5: Claims 1 - 6 are obvious under pre-AIA 35 U.S.C. § 103(a) over Miller

in view of Harry.

Ground 6: Claim 3 is obvious under pre-AIA 35 U.S.C. § 103(a) over Miller in

view of Frevert.

Ground 7: Claims 1 – 6 are anticipated under pre-AIA 35 U.S.C. § 102(b) by U.S.

Patent No. 4,555, 330 (“Tsutsumi”).

Ground 8: Claims 1 – 6 are obvious under pre-AIA 35 U.S.C. § 103(a) over

Tsutsumi in view of Harry.

Ground 9: Claims 1, 2, 3, and 6 are obvious under pre-AIA 35 U.S.C. § 103(a) by

U.S. Patent No. 4,322,288 to (“Schmidt”) in view of Harry.

V. The ‘582 Patent

A. Background of the Technology

Oil well drilling is accomplished by cutting or crushing the earth’s surface

with a drill bit. Ex. 1015, Morg. Dec, ¶¶ 23 - 25. These rock cuttings must be

removed from the bottom of the bore hole. Id. Drillers pump drilling mud (or

drilling fluid), consisting of water, clay, and chemical additives, down the inside of

the drill pipe to carry the cuttings to the surface. Id. Once the drilling mud/cuttings

mixture reaches the surface it is necessary to separate out the cuttings so that the


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drilling mud can be reused (pumped back down the hole to remove more cuttings).

Id.

Commercial separators are used to achieve the separation of drilling mud from

cuttings. Ex. 1015, Morg. Dec, ¶ 25. Most separators have several key components:

(1) A receptacle (mud box) to feed the cuttings/drilling mud mixture onto screens

through inlets or openings in the box; (2) Screens with small enough holes to allow

drilling mud to flow through the screens while not allowing the cuttings to flow

through; (3) In the case of multiple screen separators, a bypass mechanism to direct

the screened fluid to a collection tank (mud tank) for recirculation; and (4) A means

to discharge the cuttings to waste. Id. at ¶ 26.

B. Overview of the ‘582 Patent

The ‘582 patent is titled: “Two for One Shale Shaker.” Ex. 1001. It was filed

on February 22, 1995 and issued on January 14, 1997. Id. All references cited in

this petition are prior art because they were filed with the PTO before the earliest

arguable priority date.

The ‘582 Patent discloses a separator “having two feeds, two screens, two

mud outlets and a removable tray between the screens.” Id. at Abstract. The ‘582

patent “relates to drilling mud processing and more particularly to cutting extractions

from drilling muds.” Id. at 1:15 – 16. The ‘582 patent is shown below:


6

The first part of the separator is the receptacle for the feed, which the ‘582

patent calls a “mud box” (65). Id. at 2:32 – 36. The mixture is fed through openings

in the mud box, which the ‘582 patent refers to as “inlets” (38 & 39), onto the screens

(36 & 37) for separation. Id. The ‘582 patent uses two screens (36 & 37) and two

levels of inlets (38 & 39). Id. The drilling mud passes through the feed inlets (38 &

39) onto the screens (36 & 37) and is sent to a receptacle at the bottom of the

separator referred to as mud tank (35). Id. This is called parallel separation because

mud enters the respective screens from an inlet and flow is filtered through a single

screen. Ex. 1015, Morg. Dec. at ¶ 31.

Since there are two screens, there is a bypass mechanism that receives fluid

flowing through the upper screen and delivers it to the mud tank – “bypassing” the

lower screen. Id. at 1:38 – 42. Bypass is facilitated through the use of a tray between


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the upper and lower screen. Id. at 2:63 – 66. The tray directs the screened material

through “bypass openings” to the mud tank. Id.

This tray can also be removed to allow the fluid to pass through the first feed

inlet (38) through both the upper and lower screens before going to the mud tank.

Id. at 2:63 – 65. This can allow for a more thorough screening of the feed. Id; Ex.

1015, Morg. Dec. at ¶ 31. In multiple-screen separators, skilled artisans refer to

passing feed through two screens as series operation (double screening), and passing

feed through only one screen as parallel operation (single screening). Id. Drilling

cuttings are too large to pass through the screens so they are carried over the edge

and discharged as waste. Ex. 1001, ‘582 at 2:56 – 58.

C. The Only Alleged Novelty of the ‘582 Patent is the Use of Multiple Screens in One Separator

The ‘582 patent claims were initially rejected as obvious under 35 U.S.C. §

103(a) based on U.S. Pat. 4,940,535 (“Fisher”). Ex. 1002, ‘582 Pros. Hist. at 100 –

101. Fisher discloses the use of a mud box with multiple “inlet zones” to distribute

the cuttings/drilling mud mixture through more than one single screen separator. Ex.

1018, Fisher at Abstract and 1:63 – 2:15. Fisher’s multiple-inlet mud box was

described as: “a horizontally disposed elongated chamber that is positioned above

inlet zones of the solid separation devices.” Id. Fisher’s mud box and two feed inlets

are shown below from its Figure 2:


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Ex. 1015, Morg. Dec. at ¶¶ 32 – 33. The patentee overcame this initial rejection by

arguing:

Fisher does not disclose a single shale shaker having two screens, one

of said screens being positioned below the other screen and both feed

inlets being capable of fluid communication with the mud box … Fisher

does not disclose a dual inlet and screening of two fluid streams inside

one shale shaker.

Ex. 1002, ‘582 Pros. Hist. at 111. Claims 1 – 6 were only allowed after this

explanation. Id. at 118. According to the patent owner, the only alleged novelty of

his invention was the use of multiple inlets to feed multiple screens in one shale

shaker. This disclaimer defines the ‘582 patent claims. SAP v. Versata, CBM 2010-

00001, Paper 70 (June 11, 2013)(“A patent owner may not amend an expired patent.

In such situations, the Board will construe the claims by giving more weight to the

prosecution history than provided for under the broadest reasonable interpretation

standard.”) As explained below, this was nothing new.


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VI. Claim Construction

The ‘582 patent is expired so the Board gives claim terms “the meaning that

[a] term would have to a person of ordinary skill in the art in question at the time of

the invention, i.e., as of the effective filing date of the patent application.” Phillips

v. AWH Corp., 415 F.3d 1303 (Fed.Cir.2005).

In PSI’s district court litigation against NOV, PSI’s proposed claim

construction was broad and invalidating. Ex. 1009. PSI proposed the following:

Claim Term PSI’s Proposed Construction Mud box (Claim 1)

A container for holding drilling mud.

Feed inlet (Claim 1)

A place or means of entry for fed material.

First feed inlet (Claim 1)

A first place of means of entry for fed material.

Second Feed inlet (Claim 1)

A second place or means of entry for fed material.

Fluid communication (Claim 1)

Fluid is allowed to flow or pass, as between structures or locations.

Mud tank (Claim 1)

A location or place for drilling mud.

Removable (Claim 3)

Capable of being removed or taken away from the pathway of fluid.

Based on these proposed claim constructions, PSI argued that NOV’s double

screen separator, with a single means of entry of the drilling mud/cuttings mixture

from a pipe (as shown in yellow below), infringes the ‘582 patent. Ex. 1008; Ex.

1015, Morg. Dec. at ¶¶ 37 - 38. PSI argued that the overflow from the first screen


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to the second screen amounted to a “second feed inlet.” Id. PSI’s infringement

argument is demonstrated below:

PSI’s broad claim constructions, and infringement contentions, invalidate its

patent. “The basic test for anticipation [is] ‘that which infringes if later anticipates

if earlier.’” Colida v. Sony Corp., 70 F.3d 130 (Fed. Cir. 1995); Brown v. 3M, 265

F.3d 1349, 1352 (Fed. Cir. 2001)(same). This “basic tenet” from the Federal Circuit

means that, if a patentee chooses to take a sweepingly broad position on claim

construction and infringement, then he or she must deal with that broad position

when facing a challenge to validity. Id.

PSI should be bound by its proposed construction for purposes of this inter

partes review. The Board in SAP v. Versata adopted the district court claim


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constructions advocated by the patentee. SAP v. Versata, CBM 2010-00001, Paper

70 (June 11, 2013); See also, e.g., Interactive Gift Exp., Inc. v. Compuserve Inc., 256

F.3d 1323, 1349 (Fed. Cir. 2001)(“Applying the doctrine of judicial estoppel, IGE

is precluded from changing its claim construction position on appeal from any

position that it successfully advanced at the district court.”)

Since PSI should be bound by its proposed construction, NOV does not

burden the Board with disputed constructions. NOV does not advocate or suggest

that PSI’s proposed claim constructions are correct. NOV reserves the right to

disagree with these proposed constructions in any federal district court proceeding.

VII. Detailed Explanation of Grounds for Unpatentability

The prior art below was not cited during the original prosecution. These

references provide unwavering proof of invalidity. In addition to the references

themselves, invalidity is supported by the testimony of Mike Morgenthaler, who has

over 23 years of experience with drilling separators. See Ex. 1015, Morg. Dec. Mr.

Morgenthaler testifies about these references as they would be viewed by a person

of ordinary skill in the art (“POOSITA”).2

2 In claim charts, the summaries of Mr. Morganthaler’s declaration (and citations to

it) are for the Board’s ease of reference and not meant as arguments.


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A. Ground 1: Claims 1, 2, 3, and 6 are anticipated by Harry

Harry discloses a separator “for screening of liquid muds obtained from well

drilling operations.” Ex. 1011, Harry, at 1:6 – 8. Harry recognized the problems

with prior art separators having only one screen. Id. at 1:46 – 59. In order to handle

the “total flow” from the drilling rig, prior art shakers would have to be arranged to

provide a “very large area” of screens. Id. Harry recognized that the use of very

large screens was impracticable. Id. Harry’s solution was simple. Harry discloses

stacking screens on top of each other. Id. at 3:3 – 23. Harry called the additional

screens “intermediate screens” and described them as follows:

It will be appreciated that a number of intermediate screens may be

stacked one above the other … Each such intermediate screen serves

to feed the screen below by overflow over the weir wall at the rear of

the screen and each must overhang the lower screen at the discharge

end by sufficient amount to allow the discharged solids to drop clear of

the lower screens.

Id. at 3:24 – 37. Harry’s Figures 3 and 4 (which are cross-sectional views of each

other) show the use of multiple screens in a single shale shaker with a mud box and

multiple feed inlets. Id. The ‘582 claim elements are demonstrated in these figures

from Harry below:


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Ex. 1015, Morg. Dec. at ¶ 40.

Harry easily anticipates claims 1, 2, 3, and 6. Id. Harry’s anticipating

disclosure is mapped to these claims in the following chart:

Claim Element and

Language

Prior Art Disclosure (Harry ‘974)

[1.pre] A shale shaker, comprising:

Harry discloses a shale shaker: “This invention concerns vibratory screening apparatus particularly for the screening of liquid muds obtained from oil well drilling operations and the like … Reclamation has been achieved by removing the drilling cuttings by settlement but current practice is to remove the large cuttings through a coarse mesh (on a shale shaker).” Ex. 1011, Harry at 1:5 – 10 & 1:19 – 21; See also Ex. 1015, Morg. Dec. at ¶ 41.

[1.a] a mud box; Harry discloses a mud box in form of a header tank: “A header tank 24, which includes a weir 26 over which liquid can follow when it exceeds a given depth in the tank 24, is supplied with a liquid and solids mixture along an inlet pipe 28 and it is this mixture which over-flows the weir 26 and spills in the basket 10.” Ex. 1011, Harry at 4:6 – 10. Mr. Morgenthaler confirms that the header tank would be understood by a POOSITA to be a mud box. Ex. 1015, Morg. Dec. at ¶¶ 42 - 43. This tank also conforms with PSI’s proposed construction of mud box being a “container for holding drilling mud.” Ex. 1009.


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Claim Element and

Language


[1.b] a first feed inlet;

Harry discloses a “first feed inlet” consisting of a “weir 26”3 that directs the “over-flow” of the header tank to the first screen. Ex. 1015, Morg. Dec. at ¶¶ 44 - 45; Ex. 1011, Harry at 4:6 – 10 (“A header tank 24, which includes a weir 26 over which liquid can flow when it exceeds a given depth in the tank 24 …”); Harry at 5:1 – 6 (“The discharge over the weir 26 will first fill the tray 54 to the depth of the weir 60 ….”). Consistent with PSI’s proposed construction of “feed inlet,” the weir is “a place or means of entry for fed material” onto the first screen. Ex. 1009, PSI’s Proposed Construction.

[1.c] a first screen positioned below said first feed inlet and having two sides

Harry discloses a first screen positioned below the first feed inlet and having two sides on the floor of basket 54. Ex. 1015, Morg. Dec. at ¶ 46. The specification describes the screen as follows: “The floor of the basket is formed from a fine mesh screen 30 the greater area of which is flat and horizontal … The liquid which drains through the fine mesh screen 30 …” Ex. 1011, Harry at 4:13 – 23. The screen (dotted line) of basket 54 has two sides, a first side facing vertically upward for receiving drilling mud, and a second side facing the mud tank. Ex. 1015, Morg. Dec. at ¶ 46.

[1.d] a second feed inlet;

Harry discloses a second feed inlet in the form of the “overflow” from the “weir 60” in basket 54. Ex. 1015, Morg. Dec. at ¶¶ 47 - 48. The specification describes the feed inlet as: “The discharge over the weir 26 will first fill the tray 54 to the depth of the weir 60 after which liquid and solid material will overflow the weir 60 and discharge onto the tray 56.” Ex. 1011, Harry at 5:1 – 6 (emphasis added). Consistent with PSI’s proposed construction of feed inlet, the overflow from weir 60 is: “a place or means of entry for fed material” to the second screen. Ex. 1009.

[1.e] a second screen position below said

Harry discloses a second “fine mesh screen” that lines basket 56 and is below the second feed inlet and below the first screen. Ex. 1015, Morg. Dec. at ¶¶ 49 - 50. The specification describes all

3 A “weir” is a “dam in a waterway over which water flows, serving to regulate water

level or measure flow.” Ex. 1019, McGraw Hill Scientific Dictionary.


15

Claim Element and

Language


second feed inlet and said first screen;

of the baskets disclosed in the invention as having “mounted woven mesh screen[s]” lining the bottom, and Figs. 3 and 4 illustrate the screens with a dotted line (e.g., _ _ _ _). Ex. 1011, Harry at 1:50 – 54. The specification further describes the “intermediate screen” as being “stacked one above the other between the discharge point which must always be higher than the uppermost intermediate screen … Each intermediate screen serves to feed the screen below by overflow over the weir wall at the rear of screen …” Ex. 1011, Harry at 3:24 – 36; See also dotted line at the bottom of the second baskets in Figures 3 and 4.

[1.f] said first feed inlet and said second feed inlet in fluid communication with said mud box;

According to PSI’s proposed construction, Harry discloses a first (26) and second (60) feed inlet that are in fluid communication with the mud box (24). Ex. 1009(proposing fluid communication mean “fluid is allow to flow or pass, as between structures or locations”); Ex. 1015, Morg. Dec. at ¶¶ 51 - 52. The specification describes: “The discharge [from head tank/mud box] over the weir 26 will first fill the [first] tray 54 to the depth of the weir 60 after which liquid and solid material will overflow the weir 60 and discharge onto the [second] tray 56.” Ex. 1011, Harry at 5:1 – 6. As described above, trays 54 and 56 each have mesh screens for separating drilling fluid from the cuttings. Id.

[1.g] a mud tank located below said second screen; and

Harry discloses a mud tank in the form of a “stationary fluid reservoir” (18) that is below the second screen (and the third screen). Ex. 1015, Morg. Dec. at ¶ ¶ 53 - 54. This reservoir is pictured in Harry’s Figure 4 as 18, and it is located under the first and second screen. Id. The specification describes the screened liquid as being able to flow to the liquid collection reservoir: “FIG. 4 shows how the collection trays constitute roofs for the trays 56 and 58 so as to prevent the filtered liquid from falling onto the trays below and serve to deflect the liquids to one side and the other as shown by the arrow so as to drain down past the lower filtration 25 trays into the main collection reservoir 18.” Ex. 1011, Harry at 5:21 – 26.


16

Claim Element and

Language


[1.h] a bypass mechanism in fluid communication with the side of said first screen opposite the side facing said first feed inlet, said bypass mechanism in fluid communication with said mud tank.

Harry discloses a bypass mechanism (tray 68) in fluid communication with the side of the first screen opposite the side facing the first feed inlet (26). Ex. 1015, Morg. Dec. at ¶¶ 55 - 56. This bypass mechanism is in fluid communication with the mud box (24). Id. The bypass mechanism is shown as tray 68 in Figure 4. The specification describes: “A liquid collection tray 68 and 70 is provided respectively under each of the filtration trays 54 and 56 and the liquids which drain through the various meshes in the trays 54 and 56 drain down the collection trays and into the main collecting reservoir 18 which operates in the same way as described with reference to FIG 1 and FIG 2. FIG 4 shows how the collection trays constitute roofs for the trays 56 and 58 so as to prevent the filtered liquid from falling onto the trays below and serve to deflect the liquids to one side and the other as shown by the arrow so as to drain down past the lower filtration 25 trays into the main collection reservoir 18.” Ex. 1011, Harry at 5:14 – 26.

[2.pre] The shale shaker of claim 1, wherein

See Claim 1 above.

[2.a] said bypass mechanism includes a tray and bypass openings, said tray positioned below said bypass openings.

As discussed in [1.h] above, Harry discloses a bypass mechanism consisting of tray 68 and openings above the tray as indicated by the arrows in Figure 4 showing the flow of screened liquid. Ex. 1015, Morg. Dec. at ¶¶ 58 - 60. The specification describes the tray as “prevent[ing] the filtered liquid from falling onto the trays below and serve to deflect the liquids to one side and the other as shown by the arrow so as to drain down past the lower filtration 25 trays into the main collection reservoir 18.” Ex. 1011, Harry at 5:14 – 26.


17

Claim Element and

Language



See Claim 2 above.

[3.a] said tray is removable.

Harry discloses the bypass tray 68 as being removable. Ex. 1015, Morg. Dec. at ¶¶ 62 - 64. Harry’s Figure 5 shows the bypass tray 68 being pulled out of the shale shaker (as indicated in green below):

Id. at ¶ 62. Figure 5 shows bypass tray 68 with a dotted line because it is under the screen. Ex. 1015, Morg. Dec. at ¶ 62. Consistent with PSI’s proposed construction, the tray and the screen are being “removed or taken away from the pathway of fluid.” Id; Ex. 1009. [Note: Harry’s specification discusses two 68s. The bypass tray being removed is demonstrated by the 68 in Figure 5. Ex. 1015, Morg. Dec. at f.n. 1 (page 30).] In addition to being expressly disclosed, a POOSITA would understand the disclosure in Harry to inherently include a removable tray because:

The bypass trays are attached to the screen trays (Harry at 3:34 – 36), and the screens in the shale shakers must be removable to allow for replacement and maintenance. Ex.


18

Claim Element and

Language


1011, Harry at 3:42 – 45 (describing the need to have screens “mounted so that it can be slid out of the stack to allow for inspection, cleaning and/or replacement.”); and

The “ramped” ends of the screen trays shown in Figure 3 show Harry’s separator does not allow the removal of screen trays without removing bypass trays (the bypass trays are directionally in the way).

Ex. 1015, Morg. Dec. at ¶¶ 63 - 64. [6.pre] The shale shaker of claim 1, wherein

See Claim 1 above.

[6.a] there is further included a first waste discharge from said first screen and a second waste discharge from said second screen.

Harry discloses a first waste discharge from the first screen and a second waste discharge from the second screen. Ex. 1015, Morg. Dec. at ¶¶ 66 - 67. As seen in Figure 2, the end of the baskets (opposite the inlets) discharges waste as indicated by arrow 38. Id. The specification describes: “The floor of the basket is formed from a fine mesh screen 30 the greater area of which is flat and horizontal and which includes an inclined section 32 which leads up to a discharge edge 34 over which solid materials such as 36 obtained by the filtration process will be ejected in the direction of the arrow 38 on the vibration of the screen 30.” Ex. 1011, Harry at 4:13 – 19. The second screen operates in the same manner by discharging waste over the end opposite of the inlet. Ex. 1015, Morg. Dec. at ¶¶ 66 - 67. The specification also describes the discharge over the edge of the second screen: “Each such intermediate screen serves to feed the screen below by overflow over the weir wall at the rear of the screen and each must overhang the lower screen at the discharge end by a sufficient amount to allow the discharged solids to drop clear of the second screen.” Ex. 1011, Harry at 3:29 – 34.


19

B. Ground 2: Claims 1, 2, 3, and 6 are obvious based on Harry

If these claims are not anticipated by Harry, they are obvious under 35 U.S.C.

§ 103. The Supreme Court in KSR explained:

When there is a design need or market pressure to solve a problem and

there are a finite number of identified, predictable solutions, a person

of ordinary skill has good reason to pursue the known options within

his or her technical grasp. If this leads to the anticipated success, it is

likely the product not of innovation but of ordinary skill and common

sense.

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 402, 127 S. Ct. 1727, 1732, 167 L. Ed.

2d 705 (2007)(emphasis added). The ‘582 patent was not innovation; it was the

common sense application of an already identified solution to a well-known industry

problem. Ex. 1015, Morg. Dec. at ¶ 70.

In the district court proceedings, PSI was asked to describe any “long-felt, but

unsolved” need resolved by the ‘582 patent. Ex. 1010. PSI alleged the industry

problem at the time of the invention to be:

PSI contends that the claimed invention solves the need for increased

screening surface area and capacity in a shale shaker deployable on a

rig where space is limited and at a premium.

Id (emphasis added). The ‘582 prosecution history acknowledged this problem by

arguing multiple screens in one shale shaker was needed over multiple single screen

shale shakers. Ex. 1002, ‘582 Pros. Hist. at 111.


20

Harry recognized the industry problem of needing more screen surface area

to separate the “total flow” of feed. Ex. 1011, Harry at 1:46 – 51; Ex. 1015, Morg.

Dec. at ¶¶ 69 - 70. Harry presented the same solution as the ‘582 patent – use

multiple screens and inlets in one separator. Ex. 1011, Harry at Fig. 3 and 3:24 –

37; Ex. 1015, Morg. Dec. at ¶¶ 69 - 70. Claims 1, 2, 3, and 6 are obvious in view of

Harry because they disclose an already identified solution to a long recognized

industry problem. Ex. 1015, Morg. Dec. at ¶ 68.

C. Ground 3: Claim 3 is obvious over Harry in view of Frevert

Claim 3 depends on claims 1 and 2. Ex. 1001, ‘582 Pat. at 4:5 – 26. Claim 3

adds the limitation of a “removable” “tray.” Id. Claim 3 is invalid under § 103 based

on the combination of Harry and Frevert. Ex. 1015, Morg. Dec. at ¶ 77.

1. Frevert discloses a removable tray from a bypass mechanism exactly like claim 3 of the ‘582 patent.

Frevert discloses a vibratory “separating machine.” Ex. 1014, Frevert at 1:15

– 20; 5:11 – 16. Frevert’s separator uses a “plurality of vertically spaced” screens

to achieve separation. Id. at 1:21 – 25. Frevert’s seperator is able to switch modes

of operation. Id. at 1:22 – 36. The first mode (parallel mode) spreads the feed to

each screen to achieve the “highest capacity [of separation] utilizing all available

screen space.” Ex. 1014, Frevert at 1:35 – 37. The second mode (series mode)

allows bypass trays to be removed so the fed material will pass through multiple


21

screens. Ex. 1014, Frevert at 3:45 – 54. Frevert’s Figures 1 and 2 are demonstrated

below showing the parallel and series operations accomplished by removing the

bypass tray:

Ex. 1015, Morg. Dec. at ¶ 73.

Frevert discloses the “removable” “tray” feature of claim 3 – in the same

manner contemplated by the ‘582 patent specification. Ex. 1015, Morg. Dec. at ¶ 72

(citing Ex. 1001, ‘582 Pat. at 4:22 - 26). Harry and Frevert disclose all the

limitations of claim 3. Id. at ¶ 74.

2. A POOSITA would have been motivated to combine the teachings of Frevert with Harry – making claim 3 obvious.

First, a POOSITA would have been motivated to combine the teachings of

Frevert’s ability to change from parallel to series operation because the devices are


22

very similar, and this improvement would have worked in Harry. Ex. 1015, Morg.

Dec. at ¶ 74. The Supreme Court in KSR held:

[I]f a technique has been used to improve one device, and a person of

ordinary skill in the art would recognize that it would improve similar

devices in the same way, using the technique is obvious unless its actual

application is beyond that person's skill.

KSR, 550 U.S. at 401. The addition of Frevert’s removable tray to Harry would

have been painstakingly easy for a POOSITA to recognize and implement because

these separators are “interchangeable.” Ex. 1015, Morg. Dec. at ¶ 74.

Second, Harry specifically teaches using a removable bypass tray 68 in its

separator. Ex. 1011, Harry at Figure 5; Ex. 1015, Morg. Dec. at ¶ 75. Frevert

teaches this same feature, albeit in greater detail. See supra Ground 2 § 1.

“Interrelated teachings” will “often” provide a “reason to combine known elements

in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418. A POOSITA

would have been motivated to combine these interrelated teachings. Ex. 1015,

Morg. Dec. at ¶ 75.

Third, the ‘582 patent was directed to a known industry problem. Ex. 1015,

Morg. Dec. at ¶ 76. Resolution of this same problem would have motivated the

combination of Harry and Frevert. Id. “Under the correct analysis, any need or

problem known in the field of endeavor at the time of the invention and addressed

by the patent can provide a reason for combining the elements in the manner


23

claimed.” KSR, 550 U.S. at 420. The ‘582 patent describes the problem it sought to

resolve as follows:

It is an object of the present invention to have a faster separation of

cuttings and other materials from the mud [parallel operation] … while

maintaining the capacity of a more thorough separation of desired

[series operation].

Ex. 1001, ‘582 patent at 1:26 – 34. The ability to switch from parallel to series mode

in a separator was a known problem in the industry. Ex. 1015, Morg. Dec. at ¶¶ 76 -

77. A POOSITA would have been motivated to combine the teachings of Frevert

with Harry to address this known problem. Id.

There was ample motivation to combine the teachings of Frevert and Harry,

and their complete disclosure of claim 3 invalidates it as obvious.

D. Ground 4: Claims 1- 6 are anticipated by Miller

Miller discloses a “vibratory separator” that is used to separate “liquid/solid

feed material.” Ex. 1012, Miller at 1:11 – 17 & 4:47 – 52. Miller discloses multiple

feed inlets that spread feed across multiple screens, all located inside one separator.

Id. at 1:56 – 71. Miller describes its separator as using “one or more screens” that

can be “stacked to increase capacity.” Id. at 1:28 – 40; 1:41 – 49. The primary

elements from the ‘582 patent are demonstrated on Figure 2a of Miller below:


24

Ex. 1015, Morg. Dec. at ¶ 79.

Miller anticipates claims 1 - 6. Id. at ¶ 78. Miller’s anticipating disclosure is

mapped to these claims in the following chart:

Claim Element and

Language

Prior Art Disclosure (Miller ‘868)


Miller discloses a shale shaker. Ex. 1015, Morg. Dec. at ¶ 80. Miller’s specification describes its separator as being used in the “processing industry” to separate “liquid/solid feed material.” Ex. 1012, Miller at 1:42 – 45; 4:46 – 52. A POOSITA would understand this disclosure to include shale shakers, and the commercial embodiment of Miller was actually used in the oil and gas processing industry to separate drilling mud and cuttings. Ex. 1015, Morg. Dec. at ¶ 80.

[1.a] a mud box; Miller discloses a mud box described as a “primary feed distributor 38.” Ex. 1015, Morg. Dec. at ¶¶ 81 - 82. Consistent with PSI’s proposed construction, a POOSITA would understand this distributor to be a “container for holding drilling mud.” Id; Ex. 1009. The specification describes the mud box as follows: “The primary feed distributor 38 [is] mounted to the top of the separator include[ing] a pair of dish-shaped discs 66 and 67, each having a plurality of openings 68 through 70.” Ex. 1012, Miller at 3:62 – 4:11. The primary distributor receives the liquid/solid mixture from “a feed pipe 79.” Id; See also Miller 4:48 – 72


25

Claim Element and

Language


(“The material is fed onto the adjustable feed distributor 38 from the feed pipe 79.”)


Miller discloses a “first feed inlet” consisting of the openings in the primary feed distributor that allow the fed material to flow onto the first screen. Ex. 1015, Morg. Dec. at ¶¶ 83 - 84; Ex. 1009, PSI’s Proposed Claim Construction. The specification describes the inlets as: “A primary feed distributor is mounted above the uppermost screen and has one or more openings therein to allow a portion of the feed material to pass therethrough. Overflow from the primary distributor flows to the uppermost screen.” Ex. 1012, Miller at 2:21 – 38. These openings are labeled as 68 – 79 on Figure 1b. Ex. 1015, Morg. Dec. at ¶¶ 83 - 84; Ex. 1012, Miller at 3:62 – 4:11.


Miller discloses a first screen called the “upper screen” labeled 120. Ex. 1015, Morg. Dec. at ¶¶ 85 - 86. This screen is located below the openings in the primary feed distributor and has two sides. Id; Ex. 1012, Miller 5:63 – 6:3. Upper screen 120 can also be seen on Figure 2a. Ex. 1015, Morg. Dec. at ¶ 85.


Miller discloses a second feed inlet in the form of “lower opening 128.” Ex. 1015, Morg. Dec. at ¶¶ 87 - 88. The specification describes: “lower opening 128 which is appropriately sized to control the rate of feed material onto the lower screen 118.” Ex. 1012, Miller at 5:63 – 6:3. The lower opening directing feed to the lower screen is: “a place or means of entry for fed material” to the second screen. Id; Ex. 1009, PSI’s Proposed Construction; See also Ex. 1012, Miller at 6:18 – 36 (“The material flowing through the distributor 130 passes to the next lower deck, and the flow thereof is divided by a secondary feed distributor 140 having an opening 141 therein.”)

[1.e] a second screen position below said second feed

Miller discloses a second screen 118 below the second feed inlet. Ex. 1015, Morg. Dec. at ¶ 89. This screen is below the first screen and the second feed inlet. Id. The specification describes: “The distributor 125 is frusto-conical and has a lower


26

Claim Element and

Language


inlet and said first screen;

opening 128 which is appropriately sized to to control the rate of fed material onto the lower screen 118.” Ex. 1012, Miller at 5:63 – 6:3. This is also described in claim 1 of Miller. Ex. 1012, Miller at 7:20 – 41.


Miller discloses a first and second feed inlet that are in fluid communication with the mud box, meaning “fluid is allowed to pass” from the mud box through the inlets. Ex. 1015, Morg. Dec. at ¶¶ 90 - 91; Ex. 1009, PSI’s Proposed Construction. The specification describes both inlets as receiving the solid/liquid mixture from the primary feed distributor (mud box). Ex. 1012, Miller at 2:21 – 38; 5:63 – 6:3. Claim 1 of Miller describes the primary feed distributor having a means “to proportion the amounts of material feed to said upper and lower screens.” Id. at 7:34 – 41.


Miller discloses a mud tank because it describes the use of “discharge domes” and “discharge spouts” to collect the screened material, i.e., the drilling mud. Ex. 1015, Morg. Dec. at ¶¶ 92; Ex. 1012, Miller 2:67 – 72. The specification describes: “Section 12 includes a discharge dome 26 which is in the form of an inverted pan, the periphery of which is welded to the interior wall of section 12. This section includes a pair of discharge spouts 27 and 28 which receive undersize material from the upper surface of the discharge dome 26.” Ex. 1012, Miller at 2:67 – 72 (emphasis added). The same is described for the lower screens. Id. at 3:22 – 25. Consistent with PSI’s proposed construction of mud tank as “a location or place for drilling mud,” these discharge spouts are made to “receive” the drilling mud and direct it to a vessel for storage or reuse in drilling operations. Ex. 1015, Morg. Dec. at ¶ 92. Further, to the extent not literally disclosed, a POOSITA would understand Miller’s vibratory separator to include a mud tank to collect the screened liquid. Ex. 1015, Morg. Dec. at ¶ 93. A separator is required to have a collection receptacle (mud tank) to


27

Claim Element and

Language


receive the screened materials. Id. A POOSITA would understand the discharge spouts to lead to this receptacle. Id.


Miller discloses a bypass mechanism in fluid communication with the side of the first screen opposite the side facing the first feed inlet. Ex. 1015, Morg. Dec. at ¶ 94. This bypass mechanism is in fluid communication with the mud tank. Id. The bypass mechanism consists of the “discharge dome[s]” positioned below each screen that direct the screened material to the mud tank by bypassing the lower screens. Id; Ex. 1012, Miller at 2:67 – 72. Discharge dome 26 is the dome that receives the screened material from the first screen and sends the screened material to the mud tank discussed in [1.g] above. Id.


See Claim 1 above.


As discussed in [1.h] above, Miller discloses a bypass mechanism consisting of dome 26 that is in the shape of a tray and has openings at the end of each tray in the form of “discharge spouts” “which receive undersize material from the upper surface of the discharge dome 26.” Ex. 1015, Morg. Dec. at ¶¶ 96 - 97; Ex. 1012, Miller 2:67 – 72 (emphasis added). The openings are above the tray because they receive the fluid from the upper surface of the tray. Id.

[3.pre] The shale shaker of

See Claim 2 above.


28

Claim Element and

Language


claim 2, wherein [3.a] said tray is removable.

Miller discloses a removable tray. Ex. 1015, Morg. Dec. at ¶ 99 - 102. Miller describes the screens as being attached to the trays as shown in Figure 1c. Id. Miller further describes the screens and trays as being held together using clamp rings 20 and 21. Id; Miller at 2:41 – 43. As shown in Figure 1c, the trays are removable by unbolting the dome (51) from the ring (62) of the distributor (55). Ex. 1015, Morg. Dec. at ¶ 99. These trays are specifically designed to be “stackable,” i.e., removable. Id. at ¶ 100 - 101. Further, in addition to being expressly disclosed, a POOSITA would understand the disclosure in Miller to inherently include a removable tray. Ex. 1015, Morg. Dec. at ¶ 102. Miller discloses the use of “double separation,” which would require the operator to remove one or more bypass trays. Id; Ex. 1012, Miller at 5:34 – 41. Double separation (series operation) allows the screened fluid to flow through two or more screens before it is sent to the mud tank. Id. This can only be achieved by removing the bypass tray (here a discharge dome) to allow the liquid to flow to the subsequent tray. Id.

[4.pre] The shale shaker of claim 1; wherein

See Claim 1 above.

[4.a] There is included a mechanism to regulate the flow through said second feed inlet.

Miller discloses a mechanism to regulate the flow through the second feed inlet. Ex. 1015, Morg. Dec. at ¶ 104. Miller discloses adjusting the opening in distributor 38 “allowing substantially equal distribution for maximum or surge flow.” Id; Ex. 1012, Miller at 4:48 – 72. Miller describes this adjustment as follows: “Adjusted in this manner, the lower, more efficient decks are more heavily loaded during normal flow.” Id.


29

Claim Element and

Language



See Claim 4 above.

[5.a] There is further included a second mechanism to regulate the flow through said first feed inlet and said second feed inlet.

Miller discloses a mechanism for regulating the flow of both the first and second inlet. Ex. 1015, Morg. Dec. at ¶ 106. When the openings are adjusted, it not only regulates the second feed inlet, but also acts to regulate the flow through the first feed inlet to the first screen: “This is accomplished by adjusting the openings with normal flow so that less than one forth overflows onto the top screen thereby allowing substantially equal distribution for maximum or surge flow.” Id; Ex. 1012, Miller at 4:48 – 72(emphasis added).


See Claim 1 above.


Miller discloses a first waste discharge from the first screen and a second waste discharge from the second screen. Ex. 1015, Morg. Dec. at ¶ 108. Miller discloses “spouts 89 and 90 for oversize material” that receives waste to send to “discharge chutes 187 and 188.” Id; Ex. 1012, Miller at 4:24 – 26. The discharge chutes are further described as receiving “large” and “medium” size materials that could not go through the screen. Ex. 1012, Miller at 6:74 – 7:4. Each screen has its own discharge chute, i.e., a “first” and “second” discharge for the first two screens. Ex. 1015, Morg. Dec. at ¶ 108.

E. Ground 5: Claims 1 – 6 are obvious based on Miller in view of Harry

The disclosures of Miller and Harry are discussed in Ground 1 and Ground 4

above, and, together, they disclose all the limitations of claims 1-6. Ex. 1015, Morg.


30

Dec. at ¶ 109. A POOSITA would have been motivated to combine the teachings of

both of these references because they are very similar devices in the same field, and

they resolve the same problem identified by the ‘582 patent in the exact same

manner. Id. at ¶ 110 – 111; KSR, 550 U.S. at 401.

Miller and Harry both disclose the use of a vibratory separators to separate a

feed consisting of liquids and solids. Ex. 1015, Morg. Dec. at ¶ 110 (citing Ex. 1011,

Harry at Abstract and Ex. 1012, Miller at 4:47 – 51). Miller was even

commercialized by Sweco, Inc. as a separator used on drilling rigs to separate

drilling mud and cuttings. Id.

Further, a POOSITA would have been motivated to combine the teachings of

Miller and Harry because they both solved the industry problem identified by PSI:

“the need for increased screening surface area and capacity in a shale shaker

deployable on a rig where space is limited and at a premium.” Ex. 1010, PSI’s Disc.

Resp.; Ex. 1015, Morg. Dec. at ¶ 111. Miller and Harry both resolved this problem

by adding more screens into one separator. Ex. 1015, Morg. Dec. at ¶ 110; Wyers v.

Master Lock Co., 616 F.3d 1231, 1240 (Fed. Cir. 2010)(“[W]here all of the

limitations of the patent were present in the prior art references, and the invention

was addressed to a ‘known problem, ‘KSR compels the grant of summary judgment

of obviousness.”).


31

The combination of Harry and Miller includes all the limitations of claims 1

– 6, and their motivated combination renders these claims obvious. Ex. 1015, Morg.

Dec. at ¶ 110. The below chart maps the combined disclosure of Harry and Miller

to claims 1 – 6:

Claim Element and

Language

Prior Art Disclosure (Harry ‘974 and Miller ‘868)


Miller’s specification describes its separator as being used in the “processing industry” to separate “liquid/solid feed material.” Ex. 1012, Miller at 1:42 – 45; 4:46 – 52. Harry teaches to use drilling mud and cuttings on a shale shaker: “This invention concerns vibratory screening apparatus particularly for the screening of liquid muds obtained from oil well drilling operations and the like … Reclamation has been achieved by removing the drilling cuttings by settlement but current practice is to remove the large cuttings through a coarse mesh (on a shale shaker).” Ex. 1011, Harry at 1:5 – 10 & 1:19 – 21 (emphasis added). It would have been obvious to combine these teachings – because, in the real world, Miller’s commercial embodiment was already being used on commercial drilling rigs to separate mud and cuttings long prior to the application for the ‘582 patent. Ex. 1015, Morg. Dec. at ¶ 111 (a).

[1.a] a mud box; Miller discloses a mud box described as a “primary feed distributor 38” that receives a liquid/solid mixture from “a feed pipe 79. Miller at 3:62 – 4:11; See also Miller 4:48 – 72 Ex. 1015, Morg. Dec. at ¶ 81. Harry specifically teaches using this container to hold a mixture of drilling mud and cuttings. Ex. 1011, Harry at Abstract (describing the feed as drilling mud and cuttings) & 4:6 – 10 (describing the mud box as being “supplied with a liquid and solids mixture along an inlet pipe 28”).


Both references disclose this element as described in supra Grounds 1 and 4.

[1.c] a first screen



32

Claim Element and

Language


positioned below said first feed inlet and having two sides [1.d] a second feed inlet;

Miller discloses a second feed inlet in the form of “lower opening 128.” Ex. 1015, Morg. Dec. at ¶ 87; Ex. 1012, Miller at 5:63 – 6:3 (“lower opening 128 which is appropriately sized to control the rate of feed material onto the lower screen 118.”) Harry discloses a second feed inlet in the form of overflow from the first screen basket: “The discharge over the weir 26 will first fill the tray 54 to the depth of the weir 60 after which liquid and solid material will overflow the weir 60 and discharge onto the tray 56.” Ex. 1011, Harry at 5:1 – 6 (emphasis added). Adapting the separators in Miller and Harry to employ the second feed inlet of the other would have been obvious. Ex. 1015, Morg. Dec. at ¶ 111(b). A POOSITA would have understood the need to spread the feed across both screens and appreciated the manner used by both patents to accomplish this goal. Id.

[1.e] a second screen position below said second feed inlet and said first screen;



Miller discloses a first and second feed inlet that are in fluid communication with the mud box, meaning “fluid is allowed to pass” from the mud box through the inlets. Ex. 1015, Morg. Dec. at ¶¶ 90 - 91; Ex. 1009, PSI’s Proposed Construction. Harry discloses fluid communication for the second feed inlet as consisting of overflow from the first screen: “The discharge [from head tank/mud box] over the weir 26 will first fill the tray 54 to the depth of the weir 60 after which liquid and solid


33

Claim Element and

Language


material will overflow the weir 60 and discharge onto the tray 56.” Ex. 1011, Harry at 5:1 – 6. Adapting the separators in Miller and Harry to receive fluid from the mud box in the different manners would have been obvious to a POOSITA. Ex. 1015, Morg. Dec. at ¶ 111(c). Both teach the need to have each screen receive feed for separation. Id.


Miller describes the use of “discharge domes” and “discharge spouts” to collect the screened material. Ex. 1015, Morg. Dec. at ¶¶ 92 - 93; Ex. 1012, Miller 2:67 – 72. The specification describes: “Section 12 includes a discharge dome 26 which is in the form of an inverted pan, the periphery of which is welded to the interior wall of section 12. This section includes a pair of discharge spouts 27 and 28 which receive undersize material from the upper surface of the discharge dome 26.” Ex. 1012, Miller at 2:67 – 72 (emphasis added). Harry teaches sending the collected materials to a mud tank for recirculation on a drilling rig: “FIG. 4 shows how the collection trays constitute roofs for the trays 56 and 58 so as to prevent the filtered liquid from falling onto the trays below and serve to deflect the liquids to one side and the other as shown by the arrow so as to drain down past the lower filtration 25 trays into the main collection reservoir 18.” Ex. 1011, Harry at 5:21 – 26. It would have been obvious to a POOSITA to allow the discharge columns of Miller, consisting of screened fluid, to flow to a mud tank similar to the one disclosed in Harry. Ex. 1015, Morg. Dec. at 111(d). Miller’s commercial embodiment had a mud tank like Harry’s long prior to the application for the ‘582 patent. Id.

[1.h] a bypass mechanism in fluid communication with the side of

Miller discloses “discharge dome[s]” below the first screen that allows the screened material to bypass the lower screens. Id; Ex. 1012, Miller at 2:67 – 72. Discharge dome 26 is the dome that receives the screened material from the first screen and sends the screened material to what would be understood to be a receptacle


34

Claim Element and

Language


said first screen opposite the side facing said first feed inlet, said bypass mechanism in fluid communication with said mud tank.

such as a mud tank. Id. Harry teaches collecting the screened fluids from the first screen and bypassing the lower screens so the fluid is directly communicated to a “main collection reservoir 18.” Ex. 1011, Harry at 5:14 – 26. “A liquid collection tray 68 and 70 is provided respectively under each of the filtration trays 54 and 56 and the liquids which drain through the various meshes in the trays 54 and 56 drain down the collection trays and into the main collecting reservoir 18 which operates in the same way as described with reference to FIG 1 and FIG 2.”

A POOSITA would have understood to use the mud tank teachings of Harry with Miller’s disclosures. Ex. 1015, Morg. Dec. at 111 (d). Miller’s commercial embodiment was actually used that way long prior to the application for the ‘582 patent. Id.


See Claim 1 above.




See Claim 2 above.


35

Claim Element and

Language



Miller discloses the use of “double separation,” which would require the operator to remove one or more bypass trays. Id; Ex. 1012, Miller at 5:34 – 41. Double separation (series operation) allows the screened fluid to flow through two or more screens before it is sent to the mud tank. Ex. 1015, Morg. Dec. at ¶ 102 . This can only be achieved by removing the bypass tray (here a discharge dome) to allow the liquid to flow to the subsequent tray. Id. Harry teaches making the bypass trays removable as shown in Figure 5 and discussed in supra Ground 1. Ex. 1011, Harry at Figure 5 (68). A POOSITA would have used Harry’s teaching of a tray capable of being slid out of a separator to achieve Miller’s disclosure of a separator capable of double separation. Ex. 1015, Morg. Dec. at ¶ 111(e).


See Claim 1 above.


Miller discloses a mechanism to regulate the flow through the second feed inlet. Ex. 1015, Morg. Dec. at ¶ 104. Miller discloses adjusting the opening in distributor 38 “allowing substantially equal distribution for maximum or surge flow.” Id; Ex. 1012, Miller at 4:48 – 72. Miller describes this adjustment as follows: “Adjusted in this manner, the lower, more efficient decks are more heavily loaded during normal flow.” Id. A POOSITA would have appreciated this teaching as applying to Harry, and it would have been obvious to add a flow regulation mechanism to the second feed inlet of Harry. Ex. 1015, Morg. Dec. at ¶ 111 (f).


See Claim 4 above.


36

Claim Element and

Language


claim 4, wherein [5.a] There is further included a second mechanism to regulate the flow through said first feed inlet and said second feed inlet.

Miller discloses a mechanism for regulating the flow of both the first and second inlet. Ex. 1015, Morg. Dec. at ¶ 106. When the openings are adjusted, it not only regulates the second feed inlet, but also acts to regulate the flow through the first feed inlet to the first screen: “This is accomplished by adjusting the openings with normal flow so that less than one forth overflows onto the top screen thereby allowing substantially equal distribution for maximum or surge flow.” Id; Ex. 1012, Miller at 4:48 – 72(emphasis added). A POOSITA would have appreciated this teaching as applying to Harry, and it would have been obvious to add a flow regulation mechanism to regulate the flow through the first and second feed inlets of Harry. Ex. 1015, Morg. Dec. at ¶ 111(f).


See Claim 1 above.



The Supreme Court in KSR held: “familiar items may have obvious uses

beyond their primary purposes, and a person of ordinary skill often will be able to


37

fit the teachings of multiple patents together like pieces of a puzzle.” KSR, 550 U.S.

at 402 (emphasis added). The combination of the disclosures in Miller and Harry

work together like pieces of a puzzle to cover claims 1 – 6. Ex. 1015, Morg. Dec. at

¶ 111. They are obvious based on Miller in combination with Harry. Id. at ¶ 109.

F. Ground 6: Claim 3 is obvious over Miller in view of Frevert

The disclosure of Miller is discussed in Ground 4 above, and the disclosure of

Frevert is discussed in Ground 3. Combined, both of these references disclose all

of the limitations of claim 3. See supra Grounds 3 and 4; Ex. 1015, Morg. Dec. at ¶

112. A POOSITA would have been motivated to combine the teachings of Frevert

and Miller to form claim 3, making this claim obvious. Id; KSR, 550 U.S. at 401

(“[I]f a technique has been used to improve one device, and a person of ordinary

skill in the art would recognize that it would improve similar devices in the same

way, using the technique is obvious unless its actual application is beyond that

person's skill.”) Both of these patents are in the same field of invention and employ

closely analogous separation techniques. Ex. 1015, Morg. Dec. at ¶ 1015.

Miller inherently teaches arranging its separator so that it can operate in either

parallel or series mode. Ex. 1015, Morg. Dec. at ¶¶ 99 – 102, & 114. Miller

discusses parallel operation at length. See, e.g, Ex. 1012, Miller at 10 – 14. Miller

also refers to the same embodiment operating in series mode (referring to it as

“double separation”). Ex. 1015, Morg. Dec. at ¶ 102 (citing Miller at 5:34 – 41). A


38

POOSITA would understand this double separation mode to teach the need to allow

the separated liquid to flow through two or more screens before being sent to the

mud tank. Id. at ¶ 114. Miller’s discussions of the same embodiment operating in

these two modes teaches the need to change between modes. Id. This teaching

would have motivated a POOSITA to combine Miller with Frevert’s disclosure of a

removable bypass tray. Id.

Further motivation to combine can be found in the known industry problem

disclosed in the ‘582 patent. As discussed in Ground 3 above, the ‘582 patent

discusses a problem in the industry as a need for separators that could be changed

from parallel to series operation. Ex. 1001, ‘582 patent at 1:26 – 34. This “known

problem” in the industry provides a reason to combine Miller and Frevert to resolve

this problem. Ex. 1015, Morg. Dec. at ¶ 114.

Miller and Frevert render claim 3 obvious.

G. Ground 7: Claims 1 – 6 are anticipated by Tsutsumi

Tsutsumi discloses a vibratory separator used to separate liquid and solid

materials. Ex. 1013, Tsutsumi at 1:6 – 10. This machine would be understood by a

POOSITA to include the separation of drilling mud and drilling cuttings. Ex. 1015,

Morg. Dec. at ¶ 115. Tsutsumi separates liquids and solids through a “plurality” of

“vertically arranged” screens and feeds. Ex. 1013, Tsutsumi at 1:6-10 & 1:59-62.

Tsustumi discloses mechanisms for collecting the screened liquids and discharging


39

the solids. Id. at Abstract. It also discloses mechanisms to “closely control[]” the

amount of feed through each inlet and onto each screen. Id. at 1:67 – 2:2. The ‘582

patent elements are shown on Tsutsumi’s Figure 2:

Ex. 1015, Morg. Dec. at ¶ 115.

Tsutsumi anticipates claims 1-6. Id. Tsutsumi’s anticipating disclosure is

mapped to these claims in the following chart:

Claim Element and

Language

Prior Art Disclosure (Tsutsumi ‘330)


Tsutsumi discloses a shale shaker. Ex. 1015, Morg. Dec. at ¶ 116. Tsutsumi discloses a “method and apparatus for separating materials into two groups by size such as solid material from a liquid material.” Id; Tsutsumi at 1:6 – 10. This is achieved by “presenting the materials uniformly and concurrently across a plurality of screens.” Id. These screens are also vibrated by “vibratory motors” to achieve separation. Ex. 1013, Tsutsumi at 2:54 – 65. This is a shale shaker. Ex. 1015, Morg. Dec. at ¶ 116.

[1.a] a mud box; Tsutsumi discloses a mud box described as an “input feeding assembly.” Ex. 1015, Morg. Dec. at ¶¶ 117 - 118. The specification describes the mud box as follows: “An input feed


40

Claim Element and

Language


splitting assembly, generally indicated by the numeral 27, receives the material to be separated through an input pipe 28 and splits the same into three approximately equal parts to provide material to screen assemblies 16, 17, and 18.” Ex. 1013, Tsutsumi at 3:14 – 57. Consistent with PSI’s proposed claim construction, this assembly is a “container for holding drilling mud.” Id; Ex. 1009, PSI’s Proposed Construction.


Tsutsumi discloses a “first feed inlet” consisting of “opening 40” that distributes the feed onto the first screen. Ex. 1015, Morg. Dec. at ¶¶ 119 - 120; Ex. 1013, Tsutsumi at 3:46 – 49. Tsutsumi describes the first feed inlet: “[C]hamber 30 is provided with an opening 40 along the entire bottom at one edge thereof. Opening 40 is directly over and runs the entire width of screen assembly 16.” Ex. 1013, Tsutsumi 3:46 – 49. It is through this opening that feed is “readily and evenly distributed on screen assembly 16.” Id. at 50 – 57.


Tsutsumi discloses a first screen 16 that is below the first feed inlet and that has two sides. Ex. 1015, Morg. Dec. at ¶ 121; Ex. 1013, Tsutsumi at 2: 66 – 68. Tsutsumi discloses the screen being below the first feed inlet so feed can be “readily and evenly” distributed onto it. Id. at 3:46 – 51. This screen is located below the openings in the primary feed distributor and has two sides. Ex. 1015, Morg. Dec. at ¶ 121; Ex. 1013, Tsutsumi 5:63 – 6:3.


Tsutsumi discloses a second feed inlet consisting of opening 45 from which feed from chamber 31 flows through and onto the second screen. Ex. 1015, Morg. Dec. at ¶¶ 122 - 123. Opening 45 (shown in red below) is best seen in Figure 5 where it shows how feed from the input feeding assembly (mud box) is fed onto screen 26 in Figure 2:


41

Claim Element and

Language


Id. at ¶ 122 - 123.


Tsutsumi discloses a second screen 17 (in blue above) below the first screen 16 and second feed inlet (in the red box above). Ex. 1015, Morg. Dec. at ¶ 124. The specification describes the second screen as “vertically arranged” relative to the first screen. Ex. 1013, Tsutsumi at 2:66 – 32; 3:58 – 4:6.


According to PSI’s proposed construction, Tsutsumi discloses a first and second feed inlet that are in fluid communication with the mud box, meaning “fluid is allowed to pass” from the mud box through the inlets. Ex. 1015, Morg. Dec. at ¶¶ 125 - 126; Ex. 1009, PSI’s Proposed Construction. Both feed inlets 40 and 45 allow material to flow from chambers 30 and 31 of input feed splitting assembly 27 (“mud box”). Id; Ex. 1013, Tsutsumi 3:46 – 51 (describing fluid communication of first inlet) & Tsutsumi at 3:58 – 4:6 (describing fluid communication of second inlet).


Tsutsumi discloses a mud tank referred to as a “common collection point.” Ex. 1015, Morg. Dec. at ¶¶ 127 - 128; Ex. 1013, Tsutsumi at 2:19 – 22. The specification describes: “The material not passing through the screens is collected at one location and the material passing the through the screens is collected and transmitted to a common collection point.” Ex. 1013, Tsutsumi at 2:19 – 22. A POOSITA would understand this “common collection point” to be a “mud tank.” Ex. 1015, Morg. Dec. at ¶ 127. This is also consistent with PSI’s proposed claim construction of a mud tank as “a location or place for drilling mud.” Ex. 1009. The common collection point is also below the


42

Claim Element and

Language


second screen. Ex. 1015, Morg. Dec. at ¶ 127. To the extent not literally disclosed, a POOSITA would inherently understand this separator to include a mud tank. Id. at ¶ 128.


Tsutsumi discloses a bypass mechanism consisting of plate 22 in fluid communication with the side of the first screen opposite the side facing the first feed inlet. Ex. 1015, Morg. Dec. at ¶ 129; Ex. 1013, Tsutsumi at 2:19 – 22. This bypass mechanism is in fluid communication with the mud tank. Id. The specification describes the bypass mechanism as follows: “[T]he material which passes through screen assembly 16 is collected on plate 22 and retained therein by front wall 52. Wall 52 is provided with openings at the bottom of each end thereof which communicate with channels 53 which transfer the material to vertical channels 54 at the front of material separator which further transfer the material to discharge spout 55.” Ex. 1013, Tsutsumi at 4:19 – 36. A POOSITA would understand spout 55 to lead to the “common collection point” (mud tank). Ex. 1015, Morg. Dec. at ¶ 129.


See Claim 1 above.


As discussed in [1.h] above, Tsutsumi discloses a bypass mechanism consisting of plate 22 that is in the shape of a tray and has “openings at the bottom of each end thereof which communicate” the fluid to the mud tank. Ex. 1015, Morg. Dec. at ¶¶ 131 - 132. The tray is positioned below the bypass openings “which receive undersize material from the upper surface of the discharge dome 26.” Ex. 1015, Morg. Dec. at ¶ 131; Ex. 1013, Tsutsumi at 4:19 – 36.


43

Claim Element and

Language



See Claim 2 above.


Tsutsumi discloses a removable tray. Ex. 1015, Morg. Dec. at ¶ 134. Tsutsumi incorporates U.S. Patent No. 4,065,382 (“Derrick”) by reference. Id; Ex. 1013, Tsutsumi at 1:29 – 30. For purposes of anticipation, Derrick’s disclosure is considered part of Tsutsumi.4 Derrick discloses the use of “removably mounted” screens by “conventional means.” Ex. 1016, Derrick at 2:9 – 15. Tsutsumi’s screens are shown permanently attached to the bypass trays through wall 52 (see Figure 1). Id; Ex. 1015, Morg. Dec. at ¶ 134. If the screens are made to be removable, the trays connected to them would similarly be capable of being removed. Id. at ¶¶ 134 – 135. To the extent the removable tray feature is not expressly disclosed, it would be inherently understood by a POOSITA to be part of the disclosure. Id. Due to the upward slope of the second screen, the second screen would not be removable unless the tray connected to the first screen was removed first. Id. The tray is in the middle of the screen’s removal path. Id.


See Claim 1 above.

[4.a] There is included a mechanism to regulate the

Tsutsumi discloses a mechanism to regulate the flow through the second feed inlet. Ex. 1015, Morg. Dec. at ¶ 137. Tsutsumi’s second feed inlet 45 is controlled as follows: “An arcuate plate 47 extending the length of manifold 44 has a like plurality of

4Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1346 (Fed. Cir. 2009).


44

Claim Element and

Language


flow through said second feed inlet.

slotted ears 48 extending therefrom. Ears 46 are connected to ears 48, as by fasteners 49, to hold throttle plate 47 at the desired location circumferentially of manifold 44 to adjust the size of opening 45. Thus, by loosening fasteners 49, plate 47 may be moved to adjust the size of opening 45 and control the amount of feed to screen assembly 17.” Ex. 1013, Tsutsumi at 3:58 – 4:6.


See Claim 4 above.


Tsutsumi discloses two “second mechanism[s]” for regulating the flow of both the first and second inlet. Ex. 1015, Morg. Dec. at ¶¶ 139 - 140. First, the “bracket” controlling flow 40, which leads to the first and second feed inlets, is capable of regulating both inlets. Id. The specification describes: “Opening 40 is adjustable from the fully open position shown in FIG. 5 to a fully closed position by means of a movable bracket 41 which is slotted to receive fastener assembly 42 and which is held by a wall basin 33.” Ex. 1013, Tsutsumi at 3:51 - 57. Second, the “feed splitting assembly” is also disclosed as regulating the flow to the first and second feed inlet. Ex. 1015, Morg. Dec. at ¶140. The specification describes: “An input feed splitting assembly, generally indicated by the numeral 27, receives the material to be separated through an input pipe 28 and splits the same into three approximately equal parts to provide material to screen assemblies 16, 17, and 18.” Ex. 1013, Tsutsumi at 3:14 – 26. This “split” into equal parts is a regulation of the flow through the first and second feed inlet. Ex. 1015, Morg. Dec. at ¶ 140.


See Claim 1 above.


45

Claim Element and

Language



Tsutsumi discloses a first waste discharge from the first screen and a second waste discharge from the second screen. Ex. 1015, Morg. Dec. at ¶¶ 142 - 143. Tsutsumi describes: “The materials which do not pass through screen assemblies 16, 17, and 18 may merely be vibrated off the front of the screen assemblies and collected in a hopper (not shown) located at the front of the machine.” Ex. 1013, Tsutsumi at 4:37 – 41. A POOSITA would understand this to include waste discharges from the first and second screen. Ex. 1015, Morg. Dec. at ¶ 142 - 143.

H. Ground 8: Claims 1 - 6 are obvious based on Tsutsumi in view of Harry

The disclosures of Tsutsumi and Harry and discussed in Ground 7 and Ground

1 above. They disclose all of the limitations of claims 1 – 6. Ex. 1015, Morg. Dec.

at ¶ 144. A POOSITA would have been motivated to combine Tsutsumi and Harry

because both disclose the use of vibratory separators to separate feed consisting of

liquids and solids. Ex. 1015, Morg. Dec. at ¶ 145 (citing Harry’s Abstact, Tsutsumi

at 1:5 – 12, and Tsutsumi at 1:28 – 30). Further, a POOSITA would have been

motivated to combine the teachings of Tsutsumi and Harry because they both solved

the industry problem identified by PSI and in the prosecution history: “the need for

increased screening surface area and capacity in a shale shaker deployable on a rig

where space is limited and at a premium.” Ex. 1010, PSI’s Disc. Resp. (emphasis

added); Ex. 1002, Pros. Hist. at 111 (overcoming Fisher); Ex. 1015, Morg. Dec. at


46

¶ 145. Tsutsumi and Harry both resolved this problem by adding more screens into

one separator. Ex. 1015, Morg. Dec. at ¶ 146.

The below chart maps the combined disclosure of Tsutsumi and Harry to

claims 1 – 6:

Claim Element and

Language

Prior Art Disclosure (Harry ‘974 and Tsutsumi ‘330)


Tsutsumi discloses a “method and apparatus for separating materials into two groups by size such as solid material from a liquid material.” Id; Tsutsumi at 1:6 – 10. Harry teaches to use drilling fluid and cuttings as the liquid/solid feed. Ex. 1011, Harry at 1:5 – 10 & 1:19 – 21 (emphasis added). It would have been obvious to use Tsutsumi to separate a feed consisting of liquid drilling fluid and solid cuttings. Ex. 1015, Morg. Dec. at ¶ 146(a).

[1.a] a mud box; Tsutsumi discloses a mud box described as an “input feeding assembly.” Ex. 1013, Tsutsumi at 3:14 – 57. Harry specifically teaches using this container to hold a mixture of drilling mud and cuttings. Ex. 1011, Harry at Abstract.






Tsutsumi discloses a second feed inlet consisting of opening 45 from which feed from chamber 31 flows through onto the second screen. Ex. 1015, Morg. Dec. at ¶¶ 122 - 123; See Tsutsumi Figures illustrated in relation to [1d] in Ground 7 above. Harry discloses a second feed inlet in the form of overflow from the first screen basket: “The discharge over the weir 26 will first fill the tray 54 to the depth of the weir 60 after which liquid and solid material will overflow the


47

Claim Element and

Language


weir 60 and discharge onto the tray 56.” Ex. 1011, Harry at 5:1 – 6 (emphasis added). Adapting the separators in Tsutsumi and Harry to employ the second feed inlet of the other would have been obvious. Ex. 1015, Morg. Dec. at ¶ 147(b). A POOSITA would have understood the need to spread the feed across both screens and appreciated the manner used by both patents to accomplish this goal. Id.




Tsutsumi discloses a first and second feed inlet that are in fluid communication with the mud box, meaning “fluid is allowed to pass” from the mud box through the inlets. Ex. 1013, Tsutsumi 3:46 – 51 (describing fluid communication of first inlet) & Tsutsumi at 3:58 – 4:6 (describing fluid communication of second inlet). Harry discloses the communication in the form of overflow from the first screen. Ex. 1015, Morg. Dec. at ¶¶ 47 - 48. Adapting the separators in Tsutsumi and Harry to receive fluid from the mud box in the different manners would have been obvious to a POOSITA. Ex. 1015, Morg. Dec. at ¶ 146(c). Both teach the need to have each screen receive feed for separation. Id.




48

Claim Element and

Language



Tsutsumi discloses a bypass mechanism consisting of plate 22 in fluid communication with the side of the first screen opposite the side facing the first feed inlet. Ex. 1015, Morg. Dec. at ¶ 129; Ex. 1013, Tsutsumi at 2:19 – 22. Harry discloses the same in the form “a liquid collection tray 68.” Ex. 1011, Harry at Figures 3 and 4.

A POOSITA would have understood to use the mud tank teachings of Harry with Tsutsumi’s “common collection point,” i.e., to collect drilling mud. Ex. 1015, Morg. Dec. at ¶ 146(d).


See Claim 1 above.




See Claim 2 above.


Tsutsumi incorporates U.S. Patent No. 4,065,382 (“Derrick”) by reference. Ex. 1013, Tsutsumi at 1:29 – 30. For purposes of anticipation, Derrick’s disclosure is considered as part of Tsutsumi.5 Derrick discloses the use of “removably mounted” screens by “conventional means.” Ex. 1016, Derrick at 2:9 – 15.

5Callaway Golf Co., 576 F.3d at 1346.


49

Claim Element and

Language


Harry teaches making the bypass trays connected to the screens removable as shown in its Figure 5. Ex. 1011, Harry. A POOSITA would have used Harry’s teaching of a removable connected bypass tray/screen assembly in Tsutsumi, especially since Tsutsumi discloses the same connected bypass tray/screen assembly. Ex. 1015, Morg. Dec. at ¶ 146(e). Based on Harry’s disclosure, it would have been obvious to make the Tsutsumi’s bypass trays removable. Id.


See Claim 1 above.


Tsutsumi discloses a mechanism to regulate the flow through the second feed inlet. Ex. 1015, Morg. Dec. at ¶ 137. Tsutsumi’s second feed inlet 45 is controlled as follows: “An arcuate plate 47 extending the length of manifold 44 has a like plurality of slotted ears 48 extending therefrom. Ears 46 are connected to ears 48, as by fasteners 49, to hold throttle plate 47 at the desired location circumferentially of manifold 44 to adjust the size of opening 45. Thus, by loosening fasteners 49, plate 47 may be moved to adjust the size of opening 45 and control the amount of feed to screen assembly 17.” Ex. 1013, Tsutsumi at 3:58 – 4:6. A POOSITA would have appreciated this teaching as applying to Harry, and it would have been obvious to add a flow regulation mechanism the second feed inlet of Harry. Ex. 1015, Morg. Dec. at ¶ 146(f). The flow mechanism would have consisted of a similarly adjustable steal plate that controlled the overflow from the first weir. Id.


50

Claim Element and

Language



See Claim 4 above.


Tsutsumi discloses a “second mechanism” for regulating the flow of both the first and second inlet. Ex. 1015, Morg. Dec. at ¶ 139. The “bracket” controlling flow 40, which leads to the first and second feed inlets, is capable of regulating both inlets. Ex. 1013, Tsutsumi at 3:51 - 57. A POOSITA would have appreciated this teaching as applying to Harry, and it would have been obvious to add a flow regulation mechanism to regulate the flow through the first and second feed inlets of Harry. Ex. 1015, Morg. Dec. at ¶ 146(f).


See Claim 1 above.



The combination of the disclosures in Tsutsumi and Harry fit “together like

pieces of a puzzle” to cover claims 1 – 6, invalidating them as obvious. Ex. 1015,

Morg. Dec. at ¶ 144; KSR, 550 U.S. at 402 (emphasis added).


51

I. Ground 9: Claims 1, 2, 3, and 6 are obvious over Schmidt in view of Harry

Schmidt discloses an “apparatus for sizing or separating different types of

particulate material …” Ex. 1019, Schmidt at Abstract. Schmidt discloses the use of

multiple screens in one separating apparatus. Id. at 1:34 – 47. Schmidt further

discloses the use of a “movable diverter” that allows the bypass mechanism to be

removed. Id. at 2:37 – 46. ‘582 patent elements are shown on Figure 1 of Schmidt

below:

Ex. 1015, Morg. Dec. at ¶ 148.

A POOSITA would have been motivated to combine Schmidt and Harry

because they are from the same field of invention and are both used to separate

different sized materials. Ex. 1015, Morg. Dec. at ¶ 149. They also both solve the

industry problem of “the need for increased screening area.” Id. at ¶ 149. Further,


52

Schmidt’s teachings resolve the problem of being able to switch from parallel to

series operation. Id.

The below chart maps the combined disclosure of Schmidt and Harry to

claims 1 – 6:

Claim Element and

Language

Prior Art Disclosure (Schmidt ‘228 and Harry ‘974)


Schmidt discloses a shale shaker. Ex. 1015, Morg. Dec. at ¶ 150. Schmidt discloses “an apparatus for classifying or sizing particulate material, particularly grain, seeds and the like.” Ex. 1019, Schmidt at 1:5 – 8. A POOSITA would understand this separator to disclose a device capable of separating drilling mud from drilling cuttings. Ex. 1015, Morg. Dec. at ¶ 150; See also Ex. 1019, Schmidt at 4:4 – 5(claiming an “apparatus for sizing particulate material”). This use is also specifically taught by Harry. Ex. 1011, Harry at 1:5 – 10 & 1:19 – 21 (emphasis added).

[1.a] a mud box; A POOSITA would understand Schmidt to disclose a mud box from which the feed is fed through the first inlet. Ex. 1015, Morg. Dec. at ¶ 151; Ex. 1019, Schmidt at 2:9 – 14. The feed entering the separator must come from a container, which would be capable of holding a mixture of drilling mud and cuttings. Id. This is also specifically taught by Harry. Ex. 1015, Morg. Dec. at ¶ 151.


Based on PSI’s proposed construction of feed inlet, Schmidt discloses a first feed inlet. Morg. Dec. at ¶ 152; Ex. 1019, Schmidt at 2:9 – 14 (describing the feed as entering through the “upper or inlet ends of sizing screens.”). This is also taught by Harry. See Ground 1 above.

[1.c] a first screen positioned below said first feed inlet and

Schmidt discloses a first screen 2a that is below the first feed inlet and that has two sides. Ex. 1015, Morg. Dec. at ¶ 153; Ex. 1019, Schmidt at 2:9 - 14.


53

Claim Element and

Language


having two sides [1.d] a second feed inlet;

Based on PSI’s proposed construction, Schmidt discloses a second feed inlet consisting of openings 22 and 24. Ex. 1015, Morg. Dec. at ¶¶ 154 - 155; Ex. 1019, Schmidt at 2:37 – 40 (“At the lower ends of the collecting conduits 10 and 12 there is generally curved collecting pan 20 in the shape of a trough, with two openings 22 and 24.”)


Schmidt discloses a second screen 14 that is below second feed inlet and the first screen. Ex. 1015, Morg. Dec. at ¶ 156; Ex. 1019, Schmidt at 2:32 – 36 (referring to “second sizing screens 14 and 14b”).


According to PSI’s proposed construction, Schmidt discloses a first and second feed inlet that are in fluid communication with the mud box, meaning “fluid is allowed to pass” from the mud box through the inlets. Ex. 1015, Morg. Dec. at ¶ 157; Ex. 1019, Schmidt at 2:6 – 36 (describing the first and second screen as receiving feed from).


Based on PSI’s claim construction of a mud tank as “a location or place for drilling mud,” Schmidt discloses a mud tank to collect the screen material that is located below the second screen. Ex. 1015, Morg. Dec. at ¶ 158; Ex. 1019, Schmidt at 3:1 - 16 – 22. Harry also teaches the use of a mud tank to collect drilling fluid. See Ground 1 above.


54

Claim Element and

Language



Schmidt discloses a bypass mechanism in fluid communication with the side of the first screen opposite the side facing the first feed inlet. Ex. 1015, Morg. Dec. at ¶ 159; Ex. 1019, Schmidt 2:37 – 46 & 3:26 – 46. Schmidt’s Figure 2, compared to Figure 1 below, shows the bypass mechanism in parallel mode so that it diverts the screened fluid directly to the mud tank:

Ex. 1015, Morg. Dec. at ¶ 159. When the bypass mechanism is in the position of Figure 2, it directs the screened fluid to what a POOSITA would understand to be a mud tank, through Harry, as demonstrated below:

Ex. 1015, Morg. Dec. at ¶ 159. As discussed above, the use of a mud tank with this separator is further taught by Harry. Id.


See Claim 1 above.

FIG. 1


55

Claim Element and

Language


claim 1, wherein [2.a] said bypass mechanism includes a tray and bypass openings, said tray positioned below said bypass openings.

As discussed in [1.h] above, Schmidt discloses a bypass mechanism that includes a tray and bypass openings above the tray. Ex. 1015, Morg. Dec. at ¶ 161 - 162; Ex. 1019, Schmidt at 3:10 – 16 & 26 – 46. The openings are demonstrated in the red circles on Figures 1 and 2 below:

Id. These openings are labeled as 22 and 24 in Figures 1 and 2. Ex. 1019, Schmidt at 2:37 – 46


See Claim 2 above.


Schmidt discloses a removable tray. Ex. 1015, Morg. Dec. at ¶ 164; Schmidt at 37 – 46. As shown in [1.h] and [2.a], the bypass mechanism tray is capable of being removed from the path of fluid to allow for either series or parallel screening. Id. This is consistent with PSI’s proposed definition of removable as “capable of being removed or taken away from the pathway of fluid.” Ex. 1015, Morg. Dec. at ¶ 164; Ex. 1009, PSI’s Proposed Construction.


See Claim 1 above.

[6.a] there is further included a first waste

Schmidt discloses a first waste discharge from the first screen and a second waste discharge from the second screen. Ex. 1015, Morg. Dec. at ¶ 167; Schmidt at 2:64 – 68 (describing


56

Claim Element and

Language


discharge from said first screen and a second waste discharge from said second screen.

“discharge” material from first screen) & 3:1 – 8 (describing “discharge” material from second screen). Waste discharges from each screen is further taught in Harry. See Ground 1 above; Ex. 1015, Morg. Dec. at ¶ 167.

VIII. PSI’s Arguments Cannot Overcome this Petition

1. The preamble term “shale shaker” does not prevent the consideration of any of these references or otherwise limit the patent claims.

PSI might argue that “shale shaker” in the preamble of the ‘582 patent claims

limits the field of invention to separating devices capable of separating drilling fluid

and cuttings. This argument should be rejected for several reasons.

First, the field of invention includes all “solids separations devices.” Ex.

1015, Morg. Dec. at ¶ 20. This is confirmed by the prosecution history, where the

examiner cited an array of separators, including those directed at separating grain

and wood chips. Ex. 1002, ‘582 Pros. Hist. at 111 (citing U.S Patent 4,234,416 to

Lower, Ex. 1017, for separating grain & U.S. 4,376,042 to Brown, Ex. 1020, for

separating wood chips); Ex. 1001, ‘582 Pat. (Under References Cited). This

understanding by the examiner is dispositive on this issue. “Examiners are assumed

to have some expertise in interpreting the references and to be familiar from their


57

work with the level of skill in the art.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522

F.3d 1299, 86 USPQ2d 1385 (Fed. Cir. 2008). All of the references cited in this

petition are relevant, analogous, and invalidating.

Second, “shale shaker” defines, at best, an intended use of a commercial

separator. Ex. 1015, Morg. Dec. at ¶ 22; Ex. 1009 (PSI’s proposed construction of

“shale shaker” to be “a device that separates [verb] drilling solids from drilling

mud”)(emphasis added). “Separates” is a verb describing a way the “device” can be

used. Id. This use cannot be a structural distinction to limit the apparatus claims of

the ‘582 patent. “[P]reambles describing the use of an invention generally do not

limit the claims because the patentability of apparatus or composition claims

depends on the claimed structure, not on the use or purpose of that structure.”

Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir.

2002). The only exception to this concrete rule is the “rare instance” that an

“applicant clearly and unmistakably relied on those uses or benefits to distinguish

prior art.” Id. The ‘582 prosecution history never used “shale shaker” to overcome

any prior art references. Ex. 1002, ‘582 Pros. Hist. This intended use cannot be

viewed as a limitation.

Third, this argument would be irrelevant. The separators discussed in this

petition alone, or combination with other references, qualify as shale shakers. See

Ex. 1015, Morg. Dec. at ¶¶ 41, 74, 80, 109, 112, 116, 144, & 150.


58

2. Any alleged secondary considerations of non-obviousness are more imagined than real and still fall short.

PSI might argue that secondary considerations prove nonobviousness. This

is impossible. In the district court case, PSI was asked to describe all evidence

supporting any alleged secondary considerations of non-obviousness. Ex. 1010,

PSI’s Disc. Resp. PSI’s answer relied solely on products in the marketplace from

other companies. Id. at 6 – 7. As a patent troll, PSI has no commercial products of

its own. PSI cannot rely on secondary considerations to overcome obviousness

because:

This is the improper forum for PSI to prove any of these products infringe the

‘582 patent claims. Without this finding, any reliance on these estranged

products is worthless. See J.T. Eaton & Co. v. Atlantic Paste & Glue Co., 106

F.3d 1563, 1571 – 1572 (Fed. Cir. 1997).

Beyond mere hearsay6 and speculation, PSI cannot prove there is a “nexus”

between the ‘582 patented features, the secondary considerations, and other

companies’ commercial products. In re Huai-Hung Kao, 639 F.3d 1057, 1068

(Fed. Cir. 2011)(emphasis in original)(“For objective evidence of secondary

6 The Federal Rules of Evidence, including the hearsay rule, apply to inter partes

review proceedings. 37 C.F.R. § 42.62(a); Fed. R. Evid. 802.


59

considerations to be accorded substantial weight, its proponent must establish a

nexus between the evidence and the merits of the claimed invention.”).

The ‘582 patent issued to John W. Roff, Jr. on January 14, 1997. Ex. 1001. It

expired on January 14, 2014. Id. During this time period, NOV is not aware of

a single time the ‘582 patent was used by Roff, Jr. or his family as either a

successful commercial product or as part of an infringement lawsuit.7 This is

strong evidence that the ‘582 patent was unsuccessful and unnoticed in the

market.

Without a finding of infringement and in the infancy of litigation, PSI was able

to extort two parties into de minimis settlements for confidential amounts. But

this cuts the exact opposite way PSI would like. It is only further evidence of

PSI’s bad faith. See Eon-Net LP v. Flagstar Bancorp, 653 F.3d 1314, 1327 (Fed.

Cir. 2011)(“The record supports the district court's finding that Eon–Net acted in

bad faith by exploiting the high cost to defend complex litigation to extract a

nuisance value settlement from Flagstar.”)

Any arguments from PSI about secondary considerations will be bare-boned

and feeble. They will be insufficient to overcome the strong case of obviousness in

this petition. Wyers, 616 F.3d at 1246 (Fed. Cir. 2010)(“[S]econdary considerations

7 PSI has never provided information of either. See Ex. 1010.


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of nonobviousness—considered here by the district court—simply cannot overcome

a strong prima facie case of obviousness.”).

IX. Conclusion

For the foregoing reasons, the Petitioner respectfully requests that a trial be

instituted and that claims 1-6 of the ‘582 patent be canceled.

Dated: May 1, 2015 Respectfully submitted,

RALEY & BOWICK, LLP

By: /s/ Robert M. Bowick

Robert M. Bowick Registration No. 46,569 Bradford T. Laney Registration No. 62,476 1800 Augusta Dr., Suite 300 Houston, Texas 77057 Phone: (713) 429-8050 Fax: (713) 429-8045 [email protected] [email protected] Counsel for Petitioner National Oilwell Varco, L.P.


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CERTIFICATE OF SERVICE

The undersigned hereby certifies that a copy of the foregoing Petition for Inter

Partes Review together with all exhibits and other papers filed therewith was served

on May 1, 2015 by placing a copy into EXPRESS MAIL® directed to the attorneys

of record for the patent at the following address:

David Ostfeld Chamberlain, Hrdicka

1200 Smith St., 14th Floor Houston, TX 77002-4310

/s/ Robert Bowick Robert Bowick Registration No. 46,569 Counsel for Petitioner

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