Ameriforge Group, Inc.v.Worldwide Oilfield Machine, Inc.

Patent Trial and Appeal Board

May 16, 2016

09992220 (P.T.A.B. May. 16, 2016)

Trials@uspto.gov Paper No. 37
571-272-7822 Date: May 16, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

AMERIFORGE GROUP, INC.,
Petitioner,

v.

WORLDWIDE OILFIELD MACHINE, INC.,
Patent Owner.
____________

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Patent 6,601,650 B2
____________

Before JOSIAH C. COCKS, JAMES A. TARTAL, and
GARTH D. BAER, Administrative Patent Judges.

COCKS, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and C.F.R. § 42.73

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I. INTRODUCTION
Petitioner, Ameriforge Group, Inc. (“Ameriforge”), filed a Petition
(Paper 1, “Pet.”) requesting inter partes review of claims 1, 2, 4–10, 12–14,
16, 18, and 19 of U.S. Patent No. 6,601,650 B2 (“the ’650 patent”). We
issued a Decision to institute an inter partes review (Paper 17, “Inst. Dec.”)
of the ’650 patent on the following grounds:
A. Claims 9 and 12 are unpatentable under 35 U.S.C. § 102(b)
as anticipated by Baker1;
B. Claims 1, 2, 4–10, 12–14, 16, 18, and 19 are unpatentable
under 35 U.S.C. § 103(a) over Baker and Dare2;
C. Claims 1, 2, 4–7, 9, 12–14, 16, 18, and 19 are unpatentable
under 35 U.S.C. § 103(a) over Baker and Collie3; and
D. Claims 6–8 and 10 are unpatentable under 35 U.S.C.
§ 103(a) over Baker and Schlegelmilch.4
Inst. Dec. 26.
After institution of trial, Patent Owner, Worldwide Oilfield Machine,
Inc. (“WOM”), filed a Patent Owner’s Response (Papers 20, 22 “PO
Resp.”),5 to which Ameriforge replied (Paper 25, “Pet. Reply”). WOM also
filed a Motion to Seal. Paper 21.6 Oral argument was conducted on

1 U.S. Patent No. 4,997,162 issued March 5, 1991 (Ex. 1002).
2 U.S. Patent No. 4,215,749 issued August 5, 1980 (Ex. 1003).
3 U.S. Patent No. 7,013,970 B2 issued March 21, 2006 (Ex. 1004).
4 The Design of a Coiled Tubing Cutter for Use in Subsea Oil Drilling
Applications, Masters Thesis, Massachusetts Institute of Technology, 1999
(Ex. 1005).
5 Paper 20 is a public, redacted version of Patent Owner’s Response, and
Paper 22 is a version of the Response that currently is available only to the
parties and Board.
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February 3, 2016. A transcript of that argument has been made of record.
Paper 36, “Tr.”
We have jurisdiction under 35 U.S.C. § 318(a). After considering the
evidence and arguments of both parties, and for the reasons set forth below,
we determine that Ameriforge met its burden of showing, by a
preponderance of the evidence, that claims 1, 2, 4–10, 12–14, 16, 18, and 19
of the ’650 patent are unpatentable.
A. Related Matters
The ’650 patent is the subject of litigation styled Worldwide Oilfield
Machine, Inc. v. Ameriforge Group, Inc. d/b/a AFGlobal Corp., Civil Action
No. 4:13-cv-3123 (S.D. Tex.). Pet. 1; Paper 5, 2.
B. The ’650 Patent (Ex. 1001)
The ’650 patent is titled “Method and Apparatus for Replacing BOP
with Gate Valve.” In setting forth the background of the invention, the ’650
patent explains:
Blowout Preventor (B.O.P.) stacks are frequently utilized
in oilfield wellbore Christmas trees such as, for instance, lower
riser packages in offshore wells.
Ex. 1001, 1:18–20.
In that respect, the term “Christmas trees” is industry nomenclature
for the assemblies that are placed on a wellhead and operate to control the
flow of hydrocarbons or oil from the well. The ’650 patent further expresses
that B.O.P. (or “BOP”) stacks have certain disadvantages, specifically:

6 WOM is seeking to seal portions of its Patent Owner Response (Paper 22),
and portions of a Declaration of William G. Kinnear (Paper 23). Ameriforge
did not file an opposition to the Motion to Seal.
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B.O.P. stacks tend to be quite bulky and heavy, which are
undesirable features especially in lower riser packages for
undersea operation where space is often at a premium. B.O.P.
stacks tend to be expensive for initial installation. Moreover, if
maintenance is required, then the maintenance costs for
replacing such B.O.P. stacks can be many times the original
installation costs. B.O.P. stacks may frequently require
maintenance after cutting pipe is required. For instance the cut
pipe may become stuck within the B.O.P. stack blocking other
operations.
Id. at 1:23–32.
The ’650 patent also notes that wellbore Christmas trees generally
also incorporate “gate valves with one or more cutting edges for cutting
wireline,” but that “such gate valves have not been utilized to replace B.O.P.
stacks.” Id. at 1:33–36. The Abstract of the ’650 patent describes that “[t]he
present invention discloses apparatus and methods for replacing a BOP with
a gate valve to thereby save space, initial costs, and maintenance costs that is
especially beneficial for use in offshore subsea riser packages.”
Furthermore, in addressing the perceived disadvantages of a BOP stack, the
’650 patent describes its invention as being an “improved gate valve with
capability of reliably and repeatable cutting tubulars of at least 2¾″ or
more.” Id. at 1:46–49. Figure 1 of the ’650 patent is reproduced below:
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As shown in Figure 1 above, subsea valve assembly 10 includes gate
valve 12 and gate valve 14. Id. at 3:22–23. Figures 2 and 3 of the ’650
patent are reproduced below, and depict the configuration of one or more of
the above-noted gate valves.

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As shown in Figures 2 and 3 above, valve 100 may be operated to seal
off path 120, and, during that process, may also cut tubular 122. Id. at 7:61–
62. More particularly, the ’650 patent explains the following:
FIG. 2 shows gate valve 100 for 7⅜ inch casing having
2⅞ inch production tubing extending therethrough. . . . Gate
element 102 is designated to have a blade 104 with initial
cutting surface 106 having a minimum gate aperture 128
diameter directly adjacent seat 108.
* * *
As shown in FIG. 3, when valve 100 is closed such that gate
element 102 moves in the direction of sealing off flow path
120, then cutting edge 106 engages, crushes, and cuts pipe
[122]. As pipe [122] is being cut the sloping or inclined edge
124 of the gate valve acts to push the pipe [122] out of valve
100. Therefore, unlike many other cutting devices such as
BOP’s, pipe [122] is not stuck in the valve. If desired, pipe
[122], can be pulled during cutting such as toward the left
direction as shown in FIG. 3, or not. In any event, due to the
design of cutting edge 106 and inclined edge 124, the present
invention may be reliably utilized for cutting tubing and/or
wireline.
Id. at 7:5–12; 7:63–8:8.7
Thus, gate element 102 operates to seal passageway 120, and, by
operation of cutting edge 106 and inclined edge 124, cuts pipe 122 and
directs it in the left direction, as shown in Figure 3.
C. Illustrative Claims
Claims 1, 9, and 14 are independent, and are illustrative of the
claimed subject matter. Those claims are reproduced below:

7 The reproduced portion of the ’650 patent spanning columns 7 and 8 uses
reference character “106” in designating both the “cutting edge” and “pipe.”
As best can be determined, however, reference character 122 is intended to
designate the pipe.
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1. A method for a gate valve mountable onto a wellbore
casing, said gate valve being operable for controlling fluid and
cutting tubing, comprising:
mounting said gate valve on aid well casing for
controlling fluid flow in place of at least one BOP on said well
casing;
mounting a slidable gate within said gate valve, said
slidable gate having a first side and a second side opposite said
first side;
providing first and second seats for said slidable gate;
positioning said slidable gate between said first and
second seats such that said first side of said gate is adjacent said
first seat d [sic] said second side of said gate is adjacent said
second seat;
providing that said first and second seats each have
different internal diameters adjacent said slidable gate;
forming an aperture through said slidable gate;
providing a cutting edge on said slidable gate of said gate
valve within said aperture such that said cutting edge defines at
least a portion of said aperture.
9. A method for cutting a pipe within a wellbore
utilizing a gate valve such that said pipe is pushed away from a
gate within said gate valve, said gate defining an aperture
therethrough, said method comprising:
providing said gate valve with a cutting edge on one side
of said gate along said aperture through the gate;
providing a single inclined surface on said aperture
through said gate such that said aperture opens from a
minimum size adjacent said cutting edge to a maximum size
distal said cutting edge, said single inclined surface extending
from said minimum size to said maximum size of said aperture;
inserting said pipe into said wellbore through said gate
valve;
closing said gate within said gate valve, and
cutting said pipe as said gate closes such that said
inclined surface produces a force on said pipe to move said pipe
away from said gate.
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14. A gate valve for a subsea riser package installation,
said gate valve comprising a valve body defining a flow
passageway therethough, said gate valve being operable for
cutting a tubular extending through said gate valve and said
subsea riser package, said subsea riser package installation
being operable for replacement of a B.O.P, said subsea riser
package being connectable to a wellbore casing, said subsea
river package installation further comprising:
a sliding gate within said gate valve;
a cutting edge mounted on one side of said sliding gate;
an inclined surface adjacent said cutting edge such that
said cutting edge and said inclined surface define at least a
portion of aperture through said sliding gate;
a hydraulic actuator for said gate valve operable to apply
sufficient force to said sliding gate to cut said tubular; and
a first seat on a first side of aid sliding gate and a second
seat on a second side of said sliding gate, at least one of said
first seat of said second seat defining an interior passageway
with an axial seat length wherein said interior passageway
comprises a conical surface extending along a substantial
portion of said axial sea length.
II. ANALYSIS
A. Claim Construction
We interpret a claim of an unexpired patent using the “broadest
reasonable construction in light of the specification of the patent in which it
appears.” 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs., LLC, 793
F.3d 1268, 1278–79 (Fed. Cir. 2015) (“We conclude that Congress
implicitly adopted the broadest reasonable interpretation standard in
enacting the AIA.”), cert. granted sub nom. Cuozzo Speed Techs., LLC v.
Lee, 136 S. Ct. 890 (mem.) (2016). Claim terms also are given their
ordinary and customary meaning as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. In re Translogic Tech.,
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Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Nevertheless, a “claim term will
not receive its ordinary meaning if the patentee acted as his own
lexicographer” and clearly set forth a definition of the claim term in the
specification. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
(Fed. Cir. 2002).
For purposes of our Decision instituting this inter partes review, no
terms of the claims of the ’650 patent required any special meaning, and,
thus, all terms were afforded their broadest reasonable meaning, as would be
understood by a skilled artisan in light of the Specification. Inst. Dec. 9.
We made explicit that meaning for the following claim terms/phrases (id. at
9–12):
Term/Phrase Construction
“cutting edge” “a narrow surface that performs the
cutting function.”

“for controlling fluid flow in place of
at least one BOP on said well casing”
(claim 1), and “said subsea riser
package installation being operable
for replacement of a B.O.P.” (claim
14).
“requiring a gate valve that is sized
suitably to perform the functions of
wellbore sealing, tube cutting, and
fluid flow controlling that would be
expected of a BOP stack.”
Neither party offers an alternative construction for “cutting edge,”
and, based on the record developed during trial, we discern no reason to alter
the meaning provided above. Ameriforge, however, does propose a slightly
altered construction for the phrases concerning “in place of at least one
BOP” and “replacement of a B.O.P.” To that end, Ameriforge contends the
following:
For purposes of its Institution Decision, the Board
determined that claims 1 and 14 of the ’650 Patent require “a
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gate valve that is sized suitably to perform the functions of a
wellbore sealing, tube cutting, and fluid flow controlling that
would be expected of a BOP stack.” The functions identified
are applicable, but the suggestion that the valve can replace an
entire BOP stack is not fully consistent with the way a person
of ordinary skill would interpret these claims. Ex 1022 at
¶¶ 18–23. For the reasons below, Petitioner requests that the
Board revise this determination to be that claims 1 and 14 of the
’650 Patent require “a gate valve that is sized suitably to
perform the functions of a wellbore sealing, tube cutting, and
fluid flow controlling that would be expected of a BOP.”
Pet. Reply 1.
In support of its altered claim construction, Ameriforge makes
reference to a Supplemental Declaration of Dr. Glen Stevick (Ex. 1022). In
that Declaration, Dr. Stevick testifies that the ’650 patent draws distinction
between a “BOP stack” and a single “BOP” (Ex. 1022 ¶ 19), and that the
claims themselves refer to “at least one BOP” (claim 1) or “a B.O.P.” (claim
14) rather than a BOP “stack” (Ex. 1022 ¶¶ 20–21). WOM’s own declarant,
Mr. Gregg Perkin, also testifies that a “BOP stack” is understood as being
composed of multiple individual BOPs. Ex. 2004 ¶ 32.
We are cognizant that the ’650 patent generally characterizes its
invention as being directed to a gate valve “suitable for replacing an entire
BOP stack in a lower riser package.” Ex. 1001, 1:11–16. Nevertheless, in
light of the record before us, including the noted distinction drawn between a
BOP stack and a single BOP, and the plain language of the claims in
referring only to a “BOP” or “B.O.P.,” we determine that the broadest
reasonable interpretation of the pertinent phrases in claims 1 and 14 is “a
gate valve that is sized suitably to perform the functions of wellbore sealing,
tube cutting, and fluid flow controlling that would be expected of a BOP.”
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B. Overview of Prior Art
1. Baker
Baker is titled “Shearing Gate Valve.” Ex. 1002, Title. Baker
describes the following with respect to its disclosed invention:
An object of the present invention is to provide an
improved shearing type of gate valve in which the gate has a
seal which is not damaged by the shearing action of the gate.
Another object is to provide an improved shearing type
of gate valve in which the valve may be retained in service after
multiple shearing closures of the gate.
Id. at 2:15–22.
Baker’s Figures 9, 10, and 11 (reproduced below) depict an
embodiment of a valve according to Baker’s invention that provides for the
shearing of a cable element. Id. at 5:63–67.

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Figures 9, 10, and 11 of Baker, above, depict valve 200 including gate
valve 202. Id. at 5:63–6:8. The gate valve is positioned between seat rings
204 and 206, and includes bore 208. Id. Bore 208 extends through gate 202
and insert sleeve 210 is positioned therein. Id. at 6:5–6. Sleeve 210 includes
outlet bore 212 and inlet tapered surface 214, which diverges outwardly
toward seat ring 206. Id. at 6:9–11. Baker further explains the following:
As shown in FIGS. 9, 10 and 11, gate 202 is shown in its
open position (FIG. 9), in its position at the completion of
shearing of the cable element (FIG. 10), and in its closed
position of sealing against seat ring 204. As can be seen in
FIG. 10, with the completion of the shearing of the cable
element extending through gate 202, there is sufficient open
space between the interior of gate insert sleeve 212 and the
interior of seat ring 206 to allow the sheared cable element to
fall into the well without any additional shearing of the cable
element.
Id. at 6:25–34.
Figure 11 illustrates “the gate in its closed and sealed position with
respect to the seat rings.” Id. at 3:1–3.
Baker also expresses the following in connection with its above-noted
discussion of the embodiment of its invention shown in Figures 9, 10, and
11:
[T]he improved design of the shearing gate valve of the present
invention provides a gate valve which can shear a wire line or
other tubular member extending therethrough without damage
to the hardened insert rings or the hardened insert sleeves or
without in any way interfering with the sealing of the gate and
the seat ring.
Id. at 6:35–41.
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2. Dare
Dare is titled “Gate Valve for Shearing Workover Lines to Permit
Shutting in of a Well.” Ex. 1003, Title. Dare describes that its invention is
directed to a “gate valve which is capable of being closed in a manner to cut
tubing and other suspension members that extend downwardly into a well.”
Id. at 1:6–10. Dare also describes that its gate valve is used in a “subsea
wellhead and Christmas tree assembly.” Id. at 2:42–45. In such
applications, “macaroni tubing” of varying thickness may be used. Id. at
1:11–32. Dare explains that its gate valve is “capable of readily shearing the
largest and thickest ‘macaroni’ type tubing employed in well treatment and
workover operations, as well as smaller suspension members such as wires
and cables.” Id. at 2:4–9.
Dare’s Figures 2 and 3 are reproduced below:

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Figures 2 and 3 of Dare, above, show sectional views of a portion of a
gate valve according to Dare’s invention. In particular, Figure 2 shows a
gate in an open position with a string of “macaroni” tubing suspended
therethrough. Ex. 1003, 2:22–27. Figure 3 depicts the gate moving to a
closed position to shut in the well and cut off the tubing string. Id. at 2:27–
29. Dare’s Figure 5 is reproduced below:

Figure 5 of Dare, above, illustrates a sectional view of a gate. As
shown in Figure 5, gate 42 includes port 44 whose left side is the form of
cutting edge 90. Id. at 4:13–25. Cutting edge 90 is “located adjacent to the
flat upper surface of gate 42.” Id. at 4:25–27. The cutting edge is formed
with dimension “D”, which respresents the thickness of the cutting edge, and
may be varied in size. Id. at 4:27–32. The cutting edge includes undercut
potion 96 with inclined surface 98, and lower undercut portion 100 with
inclined surface 102. Id. at 4:39–53.
Dare also explains the following in connection with its invention:
Each gate 42 is normally in its open position so that suspension
members such as tubing 46 may be extended through each
passage of the valve, the Christmas tree, the wellhead assembly
and into the well for the performance of various workover and
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well treatment operations and other services. In the event of an
emergency requiring that the well be immediately shut in, each
gate 42 may be forcefully closed by the hydraulic actuator
mechanism to shut in the well and shear tubing 46 and other
suspension members extending in to the well.
When gate 42 is forcefully closed cutting edge 90
cooperates with an adjacent corner 104 (see FIG. 6) of the
upper of downstream valve seat 50 to shear off the large
diameter tubing 46 or the smaller diameter “macroni” type
tubing 106 shown in FIG. 6.
Ex. 1003, 4:56–5:3.
Dare further describes the following:
The location of cutting edge 90 adjacent the upper
surface of gate 42 and the provision of undercut portions 96 and
100 permits the sheared suspension member to freely fall
downwardly through port 44 and through the Christmas tree
valves in the well without jamming gate 42.
Id. at 5:24–29.
3. Collie
Collie is directed to a “completion system comprising a christmas tree
mounted on a wellhead housing.” Ex. 1004, 1:37–39. An embodiment of
Collie’s system includes “lower riser package 128” that operates with coiled
tubing string, and describes that the system may be used in situations where
a BOP stack has been removed. Id. at 6:36–60. Collie also discloses the
following:
Installation and recovery of the coiled tubing string may be
carried out from a lightweight intervention vessel, without the
use of a BOP. The lower riser package includes upper and
lower valves 138, 140 (for example large bore gate valves) at
least one of which may, if required in an emergency, be used to
shear the coiled tubing string.
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Id. at 6:53–59.
4. Schlegelmilch
Schlegelmilch is a thesis from the Massachusetts Institute of
Technology titled “The Design of a Coiled Tubing Cutter for Use in Subsea
Oil Drilling Applications.” Ex. 1005, Title. The document includes detailed
description of determining the amount of cutting force necessary to shear
coiled tubing of various sizes and dimensions. See, e.g., id. at 41–42.
C. Anticipation
Ameriforge proposes that claims 9 and 12 are anticipated by Baker.
Anticipation is established when a single prior art reference discloses all
elements of the claimed invention. In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990). Here, Ameriforge contends that all of the features of claims 9
and 12 are disclosed in Baker.
1. Claim 9
As noted above, claim 9 is independent and drawn to a “method for
cutting a pipe within a wellbore utilizing a gate valve such that said pipe is
pushed away from a gate within said gate valve, said gate defining an
aperture therethrough.” Ameriforge points to content of Baker in its Petition
that it contends discloses all the features of claim 9. Pet. 24. Ameriforge
also relies on the Declaration testimony of its declarant, Dr. Glen Stevick
(Ex. 1011). Id. The focus of the disagreement between Ameriforge and
WOM rests on the following steps in claim 9:
providing said gate valve with a cutting edge on one side
of said gate along said aperture through the gate;
providing a single inclined surface on said aperture
through said gate such that said aperture opens from a
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minimum size adjacent said cutting edge to a maximum size
distal said cutting edge, said single inclined surface extending
from said minimum size to said maximum size of said aperture.
. . . cutting said pipe as said gate closes such that said inclined
surface produces a force on said pipe to move said pipe away
from said gate.
In that respect, at issue is whether Baker discloses: (1) the claimed
“cutting edge”; and (2) the act of cutting the pipe such that an “inclined
surface” of the gate valve “produces a force on said pipe to move said pipe
away from said gate.”
a. “cutting edge”
As set forth above, we construe “cutting edge” as “a narrow surface
that performs the cutting function.” In the Petition, Ameriforge urges that
Baker accounts for that feature in Figures 9 and 10, stating that the cutting
edge disclosed there is the “square edge at right of outlet bore 212 and
adjoining surface of outlet bore 212.” Pet. 22. Ameriforge’s declarant, Dr.
Stevick, also testifies that Baker’s Figure 9 shows the required cutting edge.
Ex. 1011 ¶ 62.
WOM generally advocates that Baker does not disclose the claimed
cutting edge. At the outset, we discern that WOM contends that no content
of Baker’s disclosure conveys any structure that performs a “cutting
function.” See, e.g., PO Resp. 17. More particularly, WOM argues that
“Baker uses a broad shearing surface that is designed to crush the wireline or
cable in order to shear it at the point adjacent to its upper corner.” Id. In
that respect, it appears that WOM is drawing a distinction between an act of
“shearing” and an act of “cutting.” Indeed, that was a position advocated by
WOM at oral argument. See, e.g., Tr. 32–33. Yet, WOM does not point to
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adequate record evidence tending to support the proposition that the shearing
operations described in Baker would not have been understood as acts of
cutting. Here, it is clear that in “shearing” a pipe, Baker contemplates the
severing of one portion of the pipe from another, and recognizes that such
shearing action is accomplished using “blades.” See, e.g., Ex. 1002, 1:49–
53. Indeed, other prior art of record, directed to gate valves performing a
shearing operation, describe the component facilitating such “shear[ing] off”
of tubing as a “cutting edge.” Ex. 1003, 1:35–38, 4:22–25. We, thus, are
persuaded on this record that Baker’s disclosure of shearing such structures
as “a wire line or other tubular member” (Ex. 1002, 6:37–38), would be
recognized as “cutting” those structures.
WOM advocates two additional approaches in contending that Baker
does not disclose the “cutting edge” required by the claims. On the one
hand, WOM contends that if the horizontal
flattened portion of Baker’s outlet bore 212 of
sleeve 210 (shown, for instance, in Figure 10,
reproduced on the right) that contacts a pipe is
likened to the required “cutting edge,” the
alleged deficiency, in such respect, is that the
noted portion of Baker is not “narrow,” and
“not all of it would perform the required
cutting function.” PO Resp. 17–18. On the
other hand, WOM contends that if the cutting
edge is considered only the “upper corner” of
outlet bore 212 (shown in Figure 10
contacting the corner of insert ring 226), then
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“that upper corner is not adjacent to the inclined surface as in the ’650
Patent’s claimed design.” Id. at 18.
WOM does not explain persuasively why the portion of outlet bore
212 that is depicted in Figure 10 as a flattened horizontal portion is a
structure that is not “narrow.” Indeed, pointing to the supplemental
Declaration testimony of Dr. Stevick, Ameriforge urges that the noted
surface is one that would be regarded as narrow and performing the act of
cutting. Pet. Reply 18 (citing Ex. 1022 ¶¶ 15–16, 48). In that respect,
Dr. Stevick testifies that “the width of the surface defining Baker’s outlet
bore 212 is only about 7.3% of the circumference of the bore, meaning that
the surface is about 13.7 times longer than it is wide.” Ex. 1022 ¶ 16. We
credit that testimony. A surface that is significantly longer than it is wide is
consistent with a conclusion that the surface is a component regarded as
narrow. Although WOM and its declarant, Mr. Gregg Perkin, disagree,
characterizing the noted surface as “broad” (PO Resp. 17; Ex. 2004 ¶ 59),
they do not explain adequately the basis for that characterization. Moreover,
WOM also does not explain persuasively why the pertinent surface does not
perform the required cutting function. As is clear from Baker’s disclosure,
the pertinent surface is one that contacts the pipe during the course of the
shearing operation of the pipe.
We also observe that other prior art of record makes clear how a
person of ordinary skill in the art would understand what constitutes a
“cutting edge.” To that end, we note that Dare, which, as noted above, also
is directed to a gate valve performing shearing of tubing, explains that its
gate 42 includes a “cutting edge” having a variable dimension/thickness
“D.” Ex. 1003, 4:22–38. That dimension extends a distance along gate 42
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within port 44. See Ex. 1003, Figure 5 (reproduced supra). Dare’s
disclosure, thus, supports a conclusion that a skilled artisan would view the
surface of Baker’s sleeve 212, shown, for instance, in Figure 10, as a
horizontal surface extending within bore 208 as part of a cutting edge.
In any event, even assuming that the above-discussed horizontal
surface of Baker’s sleeve 212 is not considered properly the “cutting edge,”
we are persuaded that Baker has that structure so configured as required by
claim 9. Claim 9 recites the step of:
providing a single inclined surface on said aperture
through said gate such that said aperture opens from a
minimum size adjacent said cutting edge to a maximum size
distal said cutting edge, said single inclined surface extending
from said minimum size to said maximum size of said aperture.
Thus, the claim requires that an aperture on which a single inclined
surface resides includes a “minimum size” adjacent the cutting edge and a
“maximum size” distal from the cutting edge. In that respect, the claim
specifies how the slope of the inclined surface is oriented.
Here, Ameriforge has pointed to Baker’s inlet tapered surface 214 as
constituting the claimed single inclined surface. Pet. 24.8 Baker illustrates
inlet tapered surface 214 in Figures 9–11 (reproduced supra), and describes
that the surface “diverges outwardly toward seat ring 206.” Ex. 1002, 6:9–
11. Ameriforge’s position concerning the presence of a single inclined
surface in Baker, thus, is persuasive. Indeed, we do not discern
disagreement in that respect by WOM. Even if the “cutting edge” must be
considered only the upper corner of Baker’s sleeve 212, it is clear that the

8 Dr. Stevick testifies that the configuration of Baker’s tapered surface 214 is
analogous to that of inclined surface 124, shown, for instance in Figures 2
and 3 of the ’650 patent (reproduced supra). See Ex. 1011 ¶¶ 67, 58.
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slope or incline of inlet tapered surface 214 is oriented in the same manner
set forth in claim 9, i.e., the minimum size of the aperture that forms part of
the tapered surface is proximal the cutting edge and the maximum size is
distal the cutting edge. Although there is some expanse of the horizontal
surface of sleeve 212 at the point of the minimum size, it is not apparent
why that precludes a determination that the minimum size is, nonetheless,
adjacent the cutting edge.
For the foregoing reasons, we are satisfied that Baker discloses the
“cutting edge” required by claim 9.
b. “said inclined surface produces a force on said pipe to move
said pipe away from said gate.”

Claim 9 also requires that the inclined surface operates to produce a
force on the pipe to move the pipe away from the gate. Ameriforge contends
that the required force would be produced by Baker’s tapered surface 214.
Pet. 24. In support of that contention, Ameriforge relies on Dr. Stevick’s
Declaration, in which he testifies that “Baker’s gate includes a single
inclined surface that extends along a majority of the length of the bore and
that, once in contact with the tubular, will impart a force on the tubular in a
direction away from the gate[.]” Ex. 1011 ¶ 67.
WOM argues that Baker’s tapered surface 214 would not operate to
impart the force required by claim 9. See, e.g., PO Resp. 19. In making that
argument, WOM generally urges that “Baker’s design will not necessarily
forcibly push a cut tubing away from its gate in any and all circumstances
because in some cases its broad shearing surface may not reliably cut it
while in other cases the Baker design may pinch the cut OCTG [oil country
tubular goods].” Id. Thus, according to WOM, Baker does not satisfy the
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pertinent requirement of claim 9 because, in some circumstances, a
particular type of tubular component, i.e., OCTGs, may be pinched if used in
Baker’s gate valve. In taking that position, WOM relies on the testimony of
Mr. Perkin (Ex. 2004). See, e.g., id. at 17–21. In Mr. Perkin’s view, use of
a particular 2⅞" outer diameter (“OD”) tubing may cause a tube to be
“pinched” and thus not forced away from the gate. See, e.g., Ex. 2004 ¶ 59.
Ameriforge does not agree with WOM or Mr. Perkin, and points to the
countervailing testimony of its declarant, Dr. Stevick, challenging WOM’s
position and the opinion of Mr. Perkin. See Pet. Reply 9–18 (citing Ex.
1022).
At the outset, we observe that claim 9 does not call for any particular
sized tubing to be cut and pushed away via the inclined surface. Rather, the
claim simply requires that it is a “pipe” that is cut and moved away from the
gate. Baker clearly provides that its shearing gate valve is operable to “shear
a wire line or other tubular members extending” through the valve. Ex.
1002, 6:35–41. WOM does not undermine Ameriforge’s showing that
Baker’s disclosure encompasses the shearing of a “pipe.”
Moreover, WOM does not offer any persuasive explanation why
Baker’s tapered surface 214 would be unable to impart a force to a pipe or
other tubular member contemplated by Baker to move that tubular member
away from the gate once it has been cut. In that respect, WOM seeks to
discredit Dr. Stevick’s testimony, but does not explain adequately why that
testimony should be disregarded. See PO Resp. 19–20. WOM relies on the
testimony of Mr. Perkin (id., citing Ex. 2004 ¶¶ 62–66), but Mr. Perkin
seemingly bases his testimony on a particular size and type of OCTG that is
not required by claim 9. Given Dr. Stevick’s testimony, and noting the
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marked similarity in the design and operation of the gate valves of the ’650
patent and Baker, and in particular the arrangement of their respective
inclined or tapered surfaces, we are satisfied that the particular requirement
in claim 9 directed to the production of a force by the inclined surface to
move a “pipe” away from the gate is met.
Nevertheless, even assuming the claims are construed to require the
particular type and size of tubing that is contemplated by Dr. Perkin, we are
not persuaded that such construction patently distinguishes claim 9 from
Baker. WOM’s assertion that Baker’s assembly “will not necessarily” push
the tube away from the gate “in any and all circumstances” (PO Resp. 19) is
seemingly a recognition that, in some cases, it will. WOM does not explain
why the success of Baker’s gate valve in some circumstances in pushing the
noted tubing away from the gate is insufficient to account for the pertinent
requirement of claim 9. See Hewlett-Packard Co. v. Mustek Sys., Inc., 340
F.3d 1314, 1326 (Fed. Cir. 2003) (“a prior art product that sometimes, but
not always, embodies a claimed method nonetheless teaches that aspect of
the invention”).
Moreover, we are cognizant of Dr. Stevick’s testimony that the very
potential deficiency that WOM and Mr. Perkin attribute to Baker’s gate
valve vis-à-vis the 2⅞" OD tubing would also be present in the gate valve of
the ’650 patent. See, e.g., Ex. 1022 ¶¶ 31–34, 50–54. In that regard, we
understand Dr. Stevick’s testimony to convey that, given the similarity in the
design of Baker’s gate valve and that of the ’650 patent, to the extent that the
prospect of potential pinching exists in Baker’s gate valve, such prospect
would also arise in the gate valve of the ’650 patent. Yet, there is no
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suggestion from WOM that the gate valve described in the ’650 patent lies
outside the scope of claim 9.
For the foregoing reasons, we do not discern why Baker’s tapered
surface 214 would somehow be inadequate to direct a cut tubular away from
the gate valve as required. Accordingly, we are persuaded that Ameriforge
has shown that the requirement of an inclined surface that produces a force
on a pipe to move the pipe from a gate upon cutting of the pipe is taught in
Baker.
c. Conclusion – Anticipation of Claim 9
We have considered the record before us, including the Petition,
WOM’s opposition, and Ameriforge’s Reply. We conclude that Ameriforge
has shown by a preponderance of the evidence that claim 9 is anticipated by
Baker. See, e.g., Pet. 24.
2. Claim 12
Claim 12 depends from claim 9 and adds the limitation of “utilizing
said gate valve on a wellbore without using a B.O.P.” In that respect, claim
12 does not require that the gate valve itself be used to replace a BOP, but,
instead, must be operable to be used without a BOP. Baker does not limit its
gate valve to use with a BOP. We do not discern that claim 12 adds any
feature distinct from the disclosure of Baker.
Accordingly, we are persuaded that Ameriforge has shown by a
preponderance of the evidence that claim 12 is anticipated by Baker.
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D. Obviousness
Ameriforge proposes grounds of unpatentability for claims of the ’650
patent based on: (1) Baker and Dare; (2) Baker and Collie; and (3) Baker
and Schlegelmilch.
1. Principles of Law
A claim is unpatentable under § 103(a) if the differences between the
claimed subject matter and the prior art are such that the subject matter, as a
whole, would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations,
including: (1) the scope and content of the prior art; (2) any differences
between the claimed subject matter and the prior art; (3) the level of skill in
the art; and (4) where in evidence, so-called secondary considerations. See
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We also recognize
that prior art references must be “considered together with the knowledge of
one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480
(Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).
2. Level of Skill in the Art
In determining the level of skill in the art, various factors may be
considered, including “type of problems encountered in the art; prior art
solutions to those problems; rapidity with which innovations are made;
sophistication of the technology; and educational level of active workers in
the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing
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Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962
(Fed. Cir. 1986)).
There is evidence in the record before us that reflects the knowledge
level of a person with ordinary skill in the art. Ameriforge’s declarant, Dr.
Stevick, testifies the following as to the level or ordinary skill in the art:
21. It is my opinion that a person of ordinary skill in the art
at the time the ’650 Patent was originally filed (November 6,
2001)[footnote omitted] is a person who earned a bachelor of
science degree in mechanical engineering and had two to three
years of engineering experience related to shearing gate valves
and/or shear ram-type blowout preventers in the oil and gas
industry.

22. Such a person would be generally familiar with the use of
shearing gate valves for cutting wirelines, and “macaroni” and
coiled tubing in oil and gas wells, such as during drilling and/or
workover operations of wells. Such a person would also
recognize that the functionality of shearing tubulars with
shearing gate valves is largely governed by the same
mechanical engineering principles that govern the shearing of
tubulars in shearing-ram blowout preventers.
Ex. 1011 ¶¶ 21, 22.
WOM’s declarant, Mr. Perkin, expresses agreement with
Dr. Stevick’s characterization of the level of ordinary skill in the art. Ex.
2004 ¶ 30. We acknowledge and accept the parties’ representations as to the
level of ordinary skill in the art.
3. Obviousness Based on Baker and Dare
Ameriforge contends that claims 1, 2, 4–10, 12–14, 16, 18, and 19 are
unpatentable over Baker and Dare, and lays out in the Petition the basis for
that contention. See Pet. 27–33. WOM generally contends that Dare does
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not remedy deficiencies discussed above with respect to Baker vis-à-vis a
cutting edge and an inclined surface producing a force to push cut pipe out
of the way of a gate valve, as is required by each of claims 1, 2, 4–10, 12–
14, 16, 18, and 19. For the reasons noted above, we do not agree that Baker
has such deficiencies.
We take opportunity here, however, to consider the disclosures of
Dare also pertaining to a “cutting edge” and an “inclined surface.” As
discussed above, Dare provides that its gate valve 42 includes cutting edge
90 that extends within bore 44 and is variable in size. Ex. 1003, 4:22–38.
The gate also has inclined portions characterized as “inclined surface 98”
and “inclined surface 102.” To the extent that those surfaces are not
regarded as “a single inclined surface,” we observe that Dare makes clear
that the angles of incline of those surfaces are variable. Id. at 4:39–53.
Although Dare gives particular examples of preferred angles, Dare also
contemplates that different angles may be employed in other circumstances.
Id. at 5:20–23, 45–47. In light of Dare’s teachings, we discern that a skilled
artisan would have appreciated readily that a uniform angle was a viable
option for the inclination of both surface 98 and surface 102.
WOM also mounts a challenge to the Baker and Dare ground that
generally centers on the following claim requirements: (1) “mounting said
gate valve on said well casing for controlling fluid flow in place of at least
one BOP on said well casing” (claim 1); and (2) “said subsea riser package
installation being operable for replacement of a B.O.P.” (claim 14).
Ameriforge contends that in combining the teachings of Dare and
Baker, the resulting gate valve, or subsea riser package installation, would
be operable to replace a BOP. Pet. 28–29. In that respect, Ameriforge
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explains that, to the extent “Baker’s gate valve is not sufficiently large to be
used in place of or without using a BOP, it would have been obvious to also
simply increase the size of Baker’s gate valve to do so.” Id. at 32.
Ameriforge supports its obviousness position through citation to
Dr. Stevick’s testimony. Id. Dr. Stevick testifies that the type of “macaroni
tubing” that Dare contemplates as needing to be cut is recognized in the art
as being variable in size, including “up to 3.5 inches.” Ex. 1011 ¶ 43. That
particular size of tubing is notable as, during the course of this proceeding,
WOM has represented that to replace a BOP, a gate valve “must be able to
reliably and repeatably cut production tubing of at least 2.5 inch diameter.”
Paper 12, 9.9 Ameriforge, thus, urges the following:
A person of ordinary skill would have recognized the
“macaroni tubing” discussed in Dare was known to range in
diameter up to 3 ½ inches. Ex. 1011 at ¶ 44. Such a person
thus would have understood that Dare’s shearing gate valve and
similar types of shearing gate valves could be sized to shear
macaroni tubing with such larger diameters, and that it would
have been desirable to do so to be usable with various known
sizes of tubing. Ex. 1011 at ¶ 79.
Pet. 32.
It is apparent that WOM generally disagrees that Dare’s teachings
amount to a configuration of a gate valve operating in place of, or to replace,
a BOP. See, e.g., PO Resp. 34–35. In our view, however, WOM neglects to
consider fully what the teachings of Dare would have conveyed to one of

9 In making that representation, WOM pointed to column 1, lines 33–53 of
the ’650 patent, which expresses a desire for a gate valve to cut production
tubing measuring 2⅞ inches to replace BOP stacks. We observe also that
claim 18 recites that the tubular in question that is to be cut is “greater than
two and one-half inches” in diameter.
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ordinary skill in the art. Dare contemplates that, by operation of a hydraulic
actuator mechanism and due to the configuration of its gate valve, the gate
valve is useful in an emergency to shut in a well. Ex. 1003, 4:61–66. We
understand that shutting in the well means that the well is sealed such that
fluid no longer passes through the valve. Furthermore, in shutting in the
well, the gate valve severs “large diameter tubing,” and “‘macaroni’ type
tubing.” Id. at 4:67–5:3. Ample evidence of record conveys that
“macaroni” tubing is understood in the art as being used in well workover
operations and includes tubing sizes of “up to 3.5 inches” See, e.g., Ex.
1011 ¶ 43 (citing “Coiled Tubing Handbook, 3rd Ed. 1998 at 131”).
Furthermore, Dare, itself, conveys that its gate valve is configured to shear
even larger diameter tubing than that regarded as “macaroni” tubing.
Ex. 1003, 5:1–3.
Accordingly, on this record, including the Specification of the ’650
patent, we are persuaded that a skilled artisan would have appreciated that
Dare’s gate valve is sufficiently robust to operate in place of, or as a
replacement for, a BOP.10 We also agree with Ameriforge that it would
have been obvious to combine Baker’s and Dare’s teachings so as to arrive
at the gate valve configuration required by claims 1, 2, 4–10, 12–14, 16, 18,
and 19. See Pet. 29–33; Pet. Reply 21. For instance, with recourse to
content of the prior art, and Dr. Stevick’s testimony, Ameriforge contends
that the combination of Baker and Dare predictably would have conveyed a
gate valve configured to harness the particular beneficial characteristics

10 Although not required by the claims of the ’650 patent, we also are
persuaded that, based on description in the ’650 patent (for instance, column
1, lines 33–40), one of ordinary skill in the art also would have understood
that Dare’s gate valve may operate in lieu of a “BOP stack.”
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attributed to the respective valves of Baker and Dare. In particular,
Ameriforge contends that one of ordinary skill would have appreciated that
Baker’s gate valve demonstrates improved flow characteristics arising due to
the particular configuration of its tapered bore. Pet. 29–30 (citing Ex. 1011
¶¶ 79–82. Ameriforge also submits a skilled artisan would have recognized
from Dare’s teachings the practical benefits of a gate valve sized and
constructed to provide the shearing capacity and flow control of a BOP,
without the need for an additional BOP component. Id. at 32 (citing Ex.
1011 ¶¶ 44, 70–72, 79). We are persuaded that Ameriforge relies on
rational, credible reasons for combining the teachings of Baker and Dale.
The combination of those teachings would have suggested to a person of
ordinary skill in the art, who is also a person of ordinary creativity, see KSR,
550 U.S. at 421, a gate valve structured as required by the claims of the ’650
patent, and one that accomplishes the emergency shearing functions
attributed to Dare’s invention. More particularly, given the content of the
prior art, a skilled artisan would have recognized reasonably that a gate
valve may be configured, and be operable, to cut tubing and seal a wellbore
at a level understood as suitable for replacing a BOP.
We have considered the record before us, including the record
evidence, the Petition, WOM’s Patent Owner Response, and Ameriforge’s
Reply. We are persuaded that Ameriforge has demonstrated that all the
features of claims 1, 2, 4–10, 12–14, 16, 18, and 19 are disclosed by Baker
and Dare, and that there is persuasive reasoning for combining the teachings
of Baker and Dare. See Pet. 20–33.
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4. Obviousness Based on Baker and Collie
Ameriforge contends that claims 1, 2, 4–7, 9, 12–14, 16, 18, and 19
are unpatentable over Baker and Collie. As noted above with respect to the
Baker and Dare combination, WOM argues that Collie does not remedy
alleged deficiencies in Baker in connection with a cutting edge and the
arrangement and operation of an inclined surface of a gate valve. Those are
arguments with which we do not agree.
Ameriforge generally relies on Collie for its teaching of configuring a
gate valve to be used without the need for a BOP. As discussed above,
Collie is directed to a “completion system comprising a christmas tree
mounted on a wellhead housing.” Ex. 1004, 1:37–39. An embodiment of
Collie’s system includes “lower riser package 128” that operates with coiled
tubing string, and describes that the system may be used in situations
specifically where “a BOP stack is not used on the tree.” Id. at 6:36–60.
Collie also discloses the following:
Installation and recovery of the coiled tubing string may be
carried out from a lightweight intervention vessel, without the
use of a BOP. The lower riser package includes upper and
lower valves 138, 140 (for example large bore gate valves) at
least one of which may, if required in an emergency, be used to
shear the coiled tubing string.
Id. at 6:53–59.
Thus, Collie conveys that gate valves may be employed that operate in
emergency situations to shear tubing without the use of a BOP. As noted by
Ameriforge, a skilled artisan also would have known that gate valves may
employ a hydraulic actuator as the driving component for such a valve. Pet.
36–37 (citing Ex. 1004, 5:20–22; Ex. 1011 ¶¶ 23, 68, 69). In light of
Collie’s teachings, we are persuaded that one of ordinary skill in the art
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would have understood that a gate valve, such as that of Baker, may be
rendered suitably robust so as to operate in place of a BOP. In that regard, a
skilled artisan would have looked to Collie for its teachings of a gate valve
having a configuration that is beneficial in providing for a structure viewed
as “lightweight,” yet, in an emergency situation, operates to shear coiled
tubing string. Ex. 1004, 6:53–59.
We have considered the record, including Ameriforge’s Petition with
respect to the ground of unpatentability based on Baker and Collie (Pet. 33–
37), as well as WOM’s Response challenging that ground. We are
persuaded that Ameriforge has accounted for the features of claims 1, 2, 4–7,
9, 12–14, 16, 18, and 19 based on Baker and Collie.
5. Obviousness Based on Baker and Schlegelmilch
Ameriforge contends that claims 6–8 and 10 are unpatentable over
Baker and Schlegelmilch. Claims 7 and 8 depend from claim 6. Claim 10
depends from claim 9. Claim 6 includes a step of measuring the force
necessary to cut pipe. Claim 10 also includes a step of determining such
force. WOM presents no arguments with respect to claims 6–8 in
connection with the ground based on Baker and Schlegelmilch. With
respect to claim 10, WOM generally urges that the claim is patentable based
on its dependency from claim 9, which WOM maintains has not been shown
to be unpatentable.
The record before us supports a determination that the act of
measuring or determining the necessary cutting forces is the routine exercise
of an ordinary artisan’s skill. See Ex. 1011 ¶¶ 51, 74, and 75 (citing
[American Petroleum Institute] Specification 16A, Specification for Drill-
Through Equipment § 4.7.2.4 Shear Ram Test (1997)” and Ex. 1002, 6:47–
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53).11 Indeed, that determination also is evidenced by Schlegelmilch.
Schlegelmilch is a thesis from the Massachusetts Institute of Technology
that describes tests and processes for determining the amount of cutting
force necessary to shear coiled tubing of various sizes and dimensions. See,
e.g., Ex. 1005, 41–42. Given both Schlegelmilch’s and Baker’s teachings,
we agree with Ameriforge that “a person of ordinary skill in the art would
have recognized the potential benefits of performing the tests contemplated
by Schlegelmilch using a test fixture and cutting blade with dimensions
corresponding to Baker’s valve.” Pet. 40–41 (citing Ex. 1011 ¶ 96). We,
thus, conclude that one of ordinary skill in the art would have appreciated
that the amount of force necessary to cut a pipe may be measured or
determined.
6. Secondary Considerations of Non-Obviousness
“Secondary considerations,” such as “commercial success,” may have
relevance in assessing the obviousness or nonobviousness of a claimed
invention. See Graham v. John Deere Co., 383 U.S. at 17–18. In its Patent
Owner Response, WOM contends that it has enjoyed commercial success in
selling its “lightweight intervention systems” to a single customer entity–

11 As testified by Dr. Stevick, “[a] person of ordinary skill would have
understood that it would have been . . . beneficial to measure the ‘actual
pressure and force’ required to shear tubing with a shearing gate valve (such
as, for example, to validate its ability to perform its intended functions),
especially where such a shearing gate valve could be used in place of a
BOP.” Ex. 1011 ¶ 51.
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Helix Energy Solutions (“Helix”). PO Resp. 5. In support of that
contention, WOM relies on the Declaration of William Kinnear.12
WOM generally represents that it has sold some of its systems to
Helix since 2002, and that such sales “and WOM’s services delivered in
connection with” those systems have generated a certain revenue. PO Resp.
5. WOM, however, provides little, if any, context for the numbers that it
advances. In that respect, the number of units sold to a single customer and
the amount of revenue generated from those sales tells us little with respect
to any commercial success of the particular product referenced by WOM.
See In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (“This court has noted
in the past that evidence related solely to the number of units sold provides a
very weak showing of commercial success, if any.”). Indeed, notably absent
from WOM’s evidence of commercial success is any indication of the
market share that its asserted sales represent, or any breakdown between
sales revenue and revenue associated with servicing the systems.
Accordingly, WOM has provided a very weak showing of commercial
success in support of nonobviousness based on secondary considerations.
7. Conclusion - Obviousness
We recognize that evidence of secondary considerations, such as that
presented by Patent Owner, must be considered in route to a determination
of obviousness/nonobviousness under 35 U.S.C. § 103. Accordingly, we
consider anew the issue of obviousness under 35 U.S.C. § 103, carefully
evaluating and weighing both the evidence presented by Petitioner and the
objective evidence of nonobviousness provided by Patent Owner. We have

12 A redacted version of Mr. Kinnear’s Declaration appears in the record as
Exhibit 2003. An unredacted version appears as Paper 23.
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considered the entirety of the evidence in this proceeding, including
Ameriforge’s strong evidence of obviousness and WOM’s very weak
evidence of commercial success, and conclude that Petitioner has shown by
a preponderance of the evidence that claims 1, 2, 4–10, 12–14, 16, 18, and
19 would have been obvious over Baker taken with any of Dare, Collie, or
Schlegelmilch.
E. Motion to Seal
WOM filed a Motion to Seal portions of its Patent Owner Response,13
as well as portions of the Declaration of Mr. William Kinnear.14 Ameriforge
has not filed an opposition to the Motion to Seal.
There is a strong public policy in favor of making information filed in
an inter partes review open to the public, especially because the proceeding
determines the patentability of claims in an issued patent and, therefore,
affects the rights of the public. Under 35 U.S.C. § 316(a)(1) and 37 C.F.R.
§ 42.14, the default rule is that all papers filed in an inter partes review are
open and available for access by the public; however, a party may file a
concurrent motion to seal and the information at issue is sealed pending the
outcome of the motion. It is only “confidential information” that is
protected from disclosure. 35 U.S.C. § 316(a)(7); see Office Patent Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). The standard
for granting a motion to seal is “good cause.” 37 C.F.R. § 42.54(a). The
party moving to seal bears the burden of proof in showing entitlement to the

13 Unredacted (Paper 20) and redacted (Paper 22) versions of the Patent
Owner Response appear in the record.
14 An unredacted version of Mr. Kinnear’s Declaration appears in the record
as Paper 23, and a redacted version appears as Exhibit 2003.
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requested relief, and must explain why the information sought to be sealed
constitutes confidential information. 37 C.F.R. § 42.20(c). As set forth in
the Trial Practice Guide (77 Fed. Reg. at 48,761), there is an expectation that
information will be made public if identified in this Final Written Decision.
We have reviewed the unredacted versions of WOM’s Patent Owner
Response (Paper 20) and Mr. Kinnear’s Declaration (Paper 23). We
conclude that they contain confidential business information. None of the
content of those documents that is asserted as constituting confidential
business information has been identified in this Final Written Decision in
reaching a determination in this proceeding with respect to the claims of the
’650 patent. We are persuaded that good cause exists to have those
documents remain under seal.
The record will be maintained undisturbed pending the outcome of
any appeal taken from this decision. At the conclusion of any appeal
proceeding, or if no appeal is taken, the documents will be made public. See
Trial Practice Guide, 77 Fed. Reg. at 48,760–61. Further, either party may
file a motion to expunge the sealed documents from the record pursuant to
37 C.F.R. § 42.56. Any such motion will be decided after the conclusion of
any appeal proceeding or the expiration of the time period for appealing.
III. CONCLUSION
Ameriforge has shown by a preponderance of the evidence that:
A. Claims 9 and 12 are unpatentable under 35 U.S.C.
§ 102(b) as anticipated by Baker;
B. Claims 1, 2, 4–10, 12–14, 16, 18, and 19 are unpatentable
under 35 U.S.C. § 103(a) over Baker and Dare;
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C. Claims 1, 2, 4–7, 9, 12–14, 16, 18, and 19 are
unpatentable under 35 U.S.C. § 103(a) over Baker and
Collie;
D. Claims 6–8 and 10 are unpatentable under 35 U.S.C.
§ 103(a) over Baker and Schlegelmilch;
IV. ORDERS
After due consideration of the record before us, it is:
ORDERED that claims 1, 2, 4–10, 12–14, 16, 18, and 19 of the
’650 patent are held unpatentable;
FURTHER ORDERED that WOM’s Motion to Seal (Paper 23)
is granted; and
FURTHER ORDERED that, because this is a Final Written Decision,
the parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

Case IPR2015-00233
Patent 6,601,650 B2

38
PETITIONER:
Eagle H. Robinson
Mark T. Garrett
FULBRIGHT & JAWORSKI LLP
eagle.robinson@nortonrosefulbright.com
mark.garrett@nortonrosefulbright.com

PATENT OWNER:
Kenneth L. Nash
LAW OFFICE OF KENNETH L. NASH
Nash.kenneth@gmail.com

Sandeep Seth
SETH LAW OFFICES
ss@sethlaw.com

Aaron E. Homer
HIRSCH & WESTHEIMER, P.C.
ahomer@hirschwest.com