Epic Lift Systems, LLCv.INTEGRATED PRODUCTION SERVICES, INC.

Patent Trial and Appeal Board

Jul 28, 2015

10292238 (P.T.A.B. Jul. 28, 2015)

Trials@uspto.gov Paper 14
571-272-7822 Date: July 28, 2015

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

EPIC LIFT SYSTEMS, LLC,
Petitioner,

v.

INTEGRATED PRODUCTION SERVICES, INC.,
Patent Owner.
____________

Case IPR2015-00430
Patent 6,719,060 B1
____________

Before JAMES P. CALVE, RICHARD E. RICE, and
CARL M. DeFRANCO, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION
Denying Request for Rehearing
37 C.F.R. § 42.71

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I. INTRODUCTION
Petitioner Epic Lift Systems (“Epic”) filed a Petition requesting an
inter partes review of claims 1, 5–9, 13–15, and 22–24 of U.S. Patent No.
6,719,060 B1 (Ex. 1001, “the ’060 patent”). Paper 2 (“Pet.”). We instituted
inter partes review of all claims under 35 U.S.C. § 103(a) for obviousness
over Wells1 and Knox.2 Paper 9 (“Decision”), 26. Epic filed a request for
rehearing of our decision not to institute inter partes review of claims 1, 5–9,
13–15, and 22–24 for anticipation by Wells. Paper 14 (“Req. Reh’g”), 1–2.
In determining whether to institute an inter partes review of a patent, the
Board may “deny some or all grounds for unpatentability for some or all of
the challenged claims.” 37 C.F.R. § 42.108(b). When rehearing a decision
on petition, the Board will review the decision for an abuse of discretion.
37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of
showing an abuse of discretion, and “[t]he request must specifically identify
all matters the party believes the Board misapprehended or overlooked, and
the place where each matter was previously addressed in a motion, an
opposition, or a reply.” 37 C.F.R. § 42.71(d).
II. DISCUSSION
First, Epic asserts that the Board overlooked arguments and testimony
that Wells discloses a sleeve that is held in the housing by a pressure drop
produced by a variable cross-section flow passage, as recited in claims 1 and
9. Req. Reh’g 1, 5–6 (citing Pet. 37–38; Ex. 1002 ¶ 112). Epic asserts that
its arguments and evidence show that the sleeve is held in the wellhead by a

1 US 6,209,637 B1 issued April 3, 2001 (Ex. 1003).
2 US 2,821,142 issued January 28, 1958 (Ex. 1006).
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pressure drop and the upward flow of gas in high flow conditions even when
bypass 36 is used and when an auto-catcher is not used to ensure that the
mandrel reaches the bottom before the sleeve. Id.
Epic’s arguments do not persuade us that we overlooked any matter.
Claims 1 and 9 recite that the housing, separator rod, and sleeve provide
flow passages for formation contents or flow, “at least one of the flow
passages being of variable cross-sectional size producing a pressure drop
sufficient to hold the sleeve in the housing against gravity.” The Decision
stated that “Epic does not explain adequately how bypass 36 produces a
pressure drop across sleeve 38 sufficient to hold sleeve 38 in well head
assembly 20 against gravity.” Decision 13, 14. The issue is not whether
sleeve 38 is stuck or held in well head assembly 20 in certain conditions.
The issue is whether sleeve 38 is held in the wellhead by a pressure drop
produced by a flow passage of variable cross-sectional size, as claimed.
Epic’s contention that sleeve 38 can be pinned or stuck in well head
assembly 38 does not establish that the sticking results from a pressure drop
produced by a variable cross section flow passage. Pet. 37–38. The Petition
presented evidence that high flow conditions in production string 12 cause
sleeve 38 to be held in well head assembly 20. See id. The Petition did not
show that such high flow conditions (and sticking) produce a pressure drop
or result from a variable cross section flow passage. Id.
The disclosure in Wells that the sleeve is stuck or pinned in the well
head assembly 20 by the upward flow of gas does not necessarily mean that
sleeve 38 is held in well head assembly 20 by a pressure drop produced by a
variable cross section flow passage. See Req. Reh’g 6–7. To the contrary,
Wells discloses that sleeve 38 is pinned in well head assembly 20 by the
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formation flow through production string 12, which appears to be a uniform
cross section flow passage. Ex. 1003, 3:62–4:1–8, Fig. 1.
Further, Wells discloses that bypass 36 helps to prevent sleeve 38
from being held in the wellhead. Ex. 1003, 6:26–27. Wells discloses that
gas flowing through well head assembly 20 has a tendency to move through
bypass 36 “rather than pinning the sleeve 38 against the stop 100.” Id. at
6:31–34, Fig. 1. Thus, Wells discloses bypass 36 operating to prevent sleeve
38 from being held in well head assembly 20. The Cosby Declaration states
that opening valve 103 of bypass 36 reduces a pressure drop across sleeve
38. Ex. 1002 ¶ 112 & n.7. Thus, bypass 36 reduces or eliminates a pressure
drop that otherwise may hold or pin sleeve 38 in well head assembly 20.
Epic argues that the Decision misapprehended or overlooked evidence
that a variable passageway between the rod and sleeve holds the sleeve in
the wellhead. Req. Reh’g 7. In particular, Epic argues that “there must be a
passage between the top of the rod and sleeve when the sleeve is on the rod,
otherwise the sleeve would tend to get stuck on the rod.” Id. Epic asserts
that the annotated drawings in the Petition illustrate that there must be a
space between the top of the sleeve and rod to allow the sleeve to move up
and down the rod because the drawings are based on relative dimensions of
the original figures. Id. at 7–8. Epic also asserts that “the most restricted
portion of the variable passage between the sleeve and rod (i.e., the red
portion) is what helps create the pressure drop that holds the sleeve in the
wellhead in the embodiment that does not use an auto-catcher.” Id. at 8.
These arguments do not persuade us that we overlooked any matter.
Drawings cannot be relied on to disclose dimensions or proportions absent a
disclosure in the specification of dimensions or proportions, or a disclosure
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that the drawings are drawn to scale. Hockerson-Halberstadt, Inc. v. Avia
Grp. Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000). For this reason, the
Cosby Declaration’s reliance on the ’637 patent drawings to show relative
sizes of sleeve 38 and rod 92 and a flow passage (see Ex. 1003 ¶ 143) is not
persuasive. Second, Wells discloses that bypass 36 provides a flow passage
that prevents sleeve 38 from getting stuck or pinned in well head assembly
20. Ex. 1003, 6:26–34. The disclosure in the ’637 patent that sleeve 38
tends to get stuck on rod 92 without bypass 36 indicates the lack of a flow
passage between rod 92 and sleeve 38. The Cosby Declaration states that
sleeve 38 tends to get pinned in well head assembly 20 “[b]ecause the rod
largely occupies the central passage of the sleeve, it creates a sealing effect
similar to the mandrel when it is nested in the sleeve.” Ex. 1002 ¶¶ 115, 150
(emphasis added). Thus, the Cosby Declaration asserts that any passage
between rod 92 and sleeve 38 does not permit a flow of formation contents.
This is so because Wells discloses that sleeve 38 and mandrel 40 have flow
bypasses that allow them to fall downwardly in tubing 12. Ex. 1003, 5:1–
16. However, those flow passages are closed or restricted when sleeve 38
and mandrel 40 unite into a single component (piston 26) at the bottom of
the well, so gas entering well 10 through perforations 16 pushes piston 26
upwardly. Id. at 5:13–32, 4:59–67.
Epic also argues that the Board overlooked or misapprehended
evidence that Wells teaches a variable passageway between the sleeve and
housing sufficient to hold the sleeve in the housing. Req. Reh’g 8. Epic
argues that sleeve 38 restricts bypass 36 as sleeve 38 moves down rod 92
and thereby varies the size of bypass 36 to create a pressure drop to hold
sleeve 38 on rod 92. Id. at 9.
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These arguments do not persuade us that we overlooked any matter.
Wells discloses that formation flow in production string 12 pins sleeve 38 in
well head assembly 20 and diversion of that flow through bypass 36 helps to
prevent sleeve 38 from sticking in well head assembly 20. Ex. 1003, 6:26–
34. Wells also discloses a pressure drop or pressure differential that moves
piston 26 upward in well 10 when mandrel 40 nests in sleeve 38. Ex. 1003,
5:22–55. The nesting blocks flow passages between sleeve 38, mandrel 40,
and string 12 and creates a pressure drop that moves piston 26 upwardly in
well 10. Id. at 6:17–19. Gas flowing upwardly through well head assembly
20 tends to pin sleeve 38 against stop 100, unless bypass 36 diverts gas flow
away from sleeve 38 and well head assembly 20. Id. at 6:26–34. Therefore,
bypass 36 reduces or eliminates, rather than produces, any pressure drop that
may be holding sleeve 38 in well head assembly 20.
Epic argues that the Board overlooked or misapprehended teachings
in Wells of a variable passage between the rod and housing sufficient to hold
the sleeve in the housing. Req. Reh’g. 10. Epic argues that Figure A in the
Petition clearly illustrates a passage in green between housing and rod 92,
and that this passage varies as the sleeve slides up on rod 92. Id. at 10–11.
These arguments do not persuade us that we overlooked any matter.
The Petition asserted that Wells taught a variable flow passage between the
housing and separation rod. Pet. 42. The Cosby Declaration stated that the
passage between rod 92 and the housing was reduced when sleeve 38 passed
between them and “[a]s the size of the passage between the housing and rod
is decreased by the sleeve, a pressure drop sufficient to hold or ‘pin’ the
sleeve in the well head is created.” Ex. 1002 ¶ 116. The Cosby Declaration
did not cite any support for this contention. Id.; see Decision 12.
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Wells does disclose grooves 101 in piston stop 100 to allow formation
products to pass around stop 100 and up into flow line 102. Ex. 1003, 6:13–
17. These formation products are pushed above piston 26 as piston 26 rises
upwardly toward well head assembly 20 and then this slug of liquid passes
through wing valve 24 into flow line 102 to a surface treatment facility at
well head assembly 20. Id. at 5:16–21, 7:13–15. Epic did not identify any
disclosure that formation gas flow, which creates a pressure drop across
piston 26 and pushes piston 26 upwardly in production string 12, also passes
through sleeve 38 or grooves 101 in well head assembly 20. Thus, Epic did
not persuade us that Wells discloses any flow passages between rod 92 and
housing 12, or between sleeve 38 and rod 92, much less flow passages that
produce a pressure drop sufficient to hold sleeve 38 in the housing.
Epic’s contentions regarding claims 8 and 15 are not persuasive for
the reasons discussed above to include the fact that Epic did not persuade us
that Wells discloses flow passages for formation contents that produce a
pressure drop sufficient to hold the sleeve in the housing against gravity.
Epic further argues that the Board misapprehended or overlooked the
teaching in Wells that the sleeve is released from the wellhead by restricting
the flow of formation contents. Req. Reh’g 14–15. Epic also argues that the
only way to control the release of the sleeve is to close a valve at the surface
such as main valves 22. Id. at 15.
This argument does not persuade us that we overlooked any matter. A
petition for inter partes review must identify the claim, specific statutory
grounds on which the challenge to the claim is based, and how the construed
claim is unpatentable under the specified statutory grounds by specifying
where each element of the claim is found in the prior art patents or printed
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publications relied upon. 37 C.F.R. § 42.104(b). Epic asserted that the only
two ways of ensuring that the sleeve drops off the separator rod and down to
the bottom of the well when the upward flow of gas has pinned the sleeve in
the well head were: (1) shutting the well in by closing a valve at the surface
to stop the upward flow of gas; or (2) allowing the well flow to decline
naturally to a point that the sleeve falls off the rod. Pet. 58; Ex. 1002 ¶ 228
(citing Ex. 1003, 2:40–42 (“A major disadvantage of conventional plungers
lifts is the well must be shut in so the piston is able to fall to the bottom of
the well.”). Epic did not identify any disclosure that master valves 22 are
used to shut in the well and release piston 26 from well head assembly 20.
Pet. 57–58; Ex. 1002 ¶ 228. Wells discloses only that master valves 22 and
wing valve 24 deliver produced formation products to a surface facility for
separation, measurement, and treatment. Ex. 1003, 4:12–16, Fig. 1. Wells
also discloses that bypass 36 helps to prevent piston 26 from sticking in well
head assembly 20 by diverting gas flow away from well head assembly 20.
Ex. 1003, 6:26–34. Thus, Epic did not persuade us that Wells inherently
teaches releasing sleeve 38 from well head assembly 20 must occur by
restricting the flow of formation contents, as claimed.
III. CONCLUSION
Accordingly, Epic has not carried its burden of demonstrating that our
Decision denying institution of inter partes review of claims 1, 5–9, 13–15,
and 22–24 of the ’060 patent as anticipated by Wells misapprehended or
overlooked any matters, or that the Board abused its discretion.
ORDER
For the reasons given, it is
ORDERED that the request for rehearing in part is denied.
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For PETITIONER:
J. David Cabello
Keith Rutherford
Stephen Zinda
James Hall
Wong, Cabello, Lutsch, Rutherford & Brucculeri, LLP
epicipr@counselip.com

For PATENT OWNER:

J. Dean Lechtenberger
Andrew Sommer
Dustin Edwards
WINSTON & STRAWN LLP
jlechtenberger@winston.com
asommer@winston.com
dedwards@winston.com