UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. BLACKHAWK SPECIALITY TOOLS, LLC Petitioner

Transcription

1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD BLACKHAWK SPECIALITY TOOLS, LLC Petitioner v. WEATHERFORD INTERNATIONAL, LLC. Patent Owner Patent 5,575,333 PETITION FOR INTER PARTES REVIEW 0

2 TABLE OF CONTENTS I. MANDATORY NOTICES... 1 A. Real Party-in Interest... 1 B. Related Matters Related Litigation Related Patent Office Proceedings... 1 C. Lead and Back-Up Counsel (37 C.F.R. 42.8(b)(3))... 2 D. Service Information (37 C.F.R. 42.8(b)(4))... 2 E. Payment of Fees... 2 II. GROUNDS FOR STANDING... 2 III. BACKGROUND/ OVERVIEW OF THE 333 PATENT AND CLAIMS 11 AND A. Background: Limited Clearance Bow Spring Centralizers... 3 B. Background: Pull-Through Operation... 6 C. Background: Connecting the Centralizer Sub In String ( Tubular Connections )... 7 D. The 333 Patent... 9 E. Claims 11 and Claim Claim IV. ORIGINAL Prosecution History of the 333 Patent...13 V. THE Ex Parte Reexamination OF THE 333 PATENT...13 VI. STATEMENT OF PRECISE RELIEF REQUESTED...15 A. Statutory Grounds of Challenge Prior Art References a) HARTMAN b) The WTF Tubular Connection Data Book c) BRADDICK Grounds of Challenge a) GROUND 1: Claims 11 & 55 are Obvious Under 35 U.S.C. 103 Over HARTMAN in View of The WTF Tubular Connection Data Book b) GROUND 2: Claims 11 & 55 are Inherently Anticipated Under 35 U.S.C. 102 by HARTMAN c) GROUND 3: Claims 11 & 55 are Obvious Under 35 U.S.C. 103 Over HARTMAN in View of BRADDICK i

3 B. The Broadest Reasonable Interpretation C. Level of Ordinary Skill in the Art D. Claims 11 and 55 are unpatentable a) GROUND 1: Claims 11 & 55 are Rendered Obvious by HARTMAN in View of The WTF Tubular Connection Data Book b) GROUND 2: Claims 11 & 55 are Inherently Anticipated by HARTMAN (1) Statement Non-redundancy c) GROUND 3: Claims 11 & 55 are Obvious Over HARTMAN in View of BRADDICK VII. CONCLUSION...48 LIST OF EXHIBITS FOR PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 5,575,333, CLAIMS 11 and 55 No. A B C D E F G H I J Description U.S. Patent No. 5,575,333 to Lirette et al. ( the 333 Patent ) Relevant portions of the file history of the 333 Patent (including the Office actions, Applicant Responses to the Office actions, and the Notice of Allowance) Relevant portions of the file history of the reexamination of the 333 Patent, namely Serial No. 90/007,780 (including the Office actions, Applicant Responses to the Office actions, and the Notice of Intent to Issue Ex Parte Reexamination Certificate) Transcript of Markman Hearing held on January 15, 2015, in Weatherford International, Inc. et al. v. Blackhawk Specialty Tools, LLC, Civil Action No. H (S.D. TX) U.S. Patent No. 2,089,553 to Hartman ( HARTMAN ) Tubular Connection Data Book by Weatherford ( WTF Tubular Connection Data Book ) U.S. Patent No. 3,993,128 to Braddick ( BRADDICK ) Transcript of Deposition of Brad Hebert, as named inventor on the 333 Patent, taken on September 19, 2014, in Weatherford International, Inc. et al. v. Blackhawk Specialty Tools, LLC, Civil Action No. H (S.D. TX) ( Hebert Deposition ) Declaration of George W. Ribble ( Ribble Declaration ) Transcript of Deposition of Robert Vilyus, as named inventor on the 333 Patent, taken on September 17, 2014, in Weatherford International, Inc. et al. v. Blackhawk Specialty Tools, LLC, Civil Action No. H (S.D. TX) ( Vilyus Deposition ) ii

4 I. MANDATORY NOTICES Pursuant to Rules and , Petitioner Blackhawk Specialty Tools, LLC ( Petitioner or Blackhawk ) seeks inter partes review of claims 11 and 55 of U.S. Patent No. 5,575,333 ( the 333 Patent, attached as Exhibit A). 1 Pursuant to 37 C.F.R. 42.8(a)(1), Blackhawk provides the following mandatory disclosures. A. Real Party-in Interest Petitioner identifies Blackhawk as the real party-in-interest under 37 C.F.R. 42.8(b)(1). B. Related Matters Petitioner identifies the following pending related litigation matters and proceedings before the U.S. Patent and Trademark Office ( Patent Office ) under 37 C.F.R. 42.8(b)(2): 1. Related Litigation The 333 Patent is the subject of pending litigation in the United States District Court for the Southern District of Texas. See Weatherford International, Inc. et al. v. Blackhawk Specialty Tools, LLC, Civil Action No. H (S.D. TX). In that litigation, Weatherford has accused Blackhawk of infringing claims 11 and 55 of the 333 Patent. Blackhawk was served with the complaint in that litigation on March 18, 2014, less than one-year from the filing of this petition. See 35 U.S.C. 315(b). Blackhawk has not filed a civil action challenging the validity of any claim of the 333 Patent. See 35 U.S.C. 315(a)(1). 2. Related Patent Office Proceedings 1 Relevant portions of the file history of the 333 Patent are attached as Exhibit B. Relevant portions of the 90/007,870 reexamination file history of the 333 Patent are attached as Exhibit C. 1

5 333 Patent. Petitioner is not aware of any pending related Patent Office proceedings involving the C. Lead and Back-Up Counsel (37 C.F.R. 42.8(b)(3)) Petitioner provides the following designation of counsel: Lead counsel is Robert J. McAughan Jr. (Reg. No. 36,599) and back-up counsel is David Terrell (Reg. No. 50,576). D. Service Information (37 C.F.R. 42.8(b)(4)) Petitioner provides the following service information: Address: Bob McAughan or David Terrell Sutton McAughan Deaver PLLC Three Riverway, Suite 900 Houston, TX Telephone: (713) Fax: (713) E. Payment of Fees The undersigned authorizes the Patent Office to charge the fee required by 37 C.F.R (a) for this Petition, or any additional fees that may be required in connection with this filing, to Deposit Account No II. GROUNDS FOR STANDING 2

6 Pursuant to 37 C.F.R (a), Petitioner hereby certifies that the 333 Patent is available for inter partes review and that the Petitioner is not barred or estopped from requesting inter partes review challenging the claims of the 333 Patent on the grounds identified herein. III. BACKGROUND/ OVERVIEW OF THE 333 PATENT AND CLAIMS 11 AND 55 A. Background: Limited Clearance Bow Spring Centralizers The 333 Patent is directed to a bow spring centering device (or centralizer ) used in connection with casing or pipe for centering the same in a larger casing or a hole. More specifically, the 333 Patent is directed to the class of centralizers designed for use in applications where the clearance between the pipe to be centered and the hole or other pipe in which it is located, or through which it passes, is restricted. In general, spring-bow centralizers comprise a hollow tubular body and a spring-bow assembly that includes a number of outwardly-extending bent metal pieces (or spring-bows ). An exemplary spring-bow assembly is shown in the figure below taken from U.S. Patent No. 2,089,553 (filed on October 9, 1935): As shown, the depicted spring-bow assembly includes a plurality of flexible metal bars (referred to as spring-bows) biased to project outwardly from the center of the assembly. Each 3

7 of the spring-bows includes a first end and a second end, with the first ends of the spring-bows being connected to a first collar and the second ends of the spring-bows being connected to a second collar. In use, the spring-bow assembly is placed about the tubular body such that, when the tubular body is inserted into a hole or pipe, of a diameter sufficiently small that the spring-bows contact the inner walls of the hole or pipe, and are compressed, the first collar will move in a direction away from the second ends and the second collar will move in a direction away from the first ends. This compression of the spring-bows will result in the spring-bows engaging various portions of the hole or pipe to keep the tubular body (and portions adjacent the tubular body) centralized. This centering operation is similar to the centering operation provided by the spring-bows that project from a cigarette lighter plug, which like the spring-bows of a springbow centralizer tend to center the plug within the lighter socket. In certain applications, the space between the exterior surface of the tubular body and the inner surface of the hole or pipe (sometimes referred to as the clearance ) will be very restricted. To address the issues arising from limited clearance applications, spring-bow centralizers were developed in which grooves or recesses were formed in the exterior surface of the tubular body to receive parts of the spring-bow apparatus. The centralizer shown in Figure 1 of U.S. Patent No. 2,089,553, reproduced above, illustrates an example of one such centralizer. As reflected in the figure, first and second grooves 4 are formed in the exterior surface of the tubular body to receive the first and second collars 6 of the spring-bow assembly. Each of the grooves defines two sidewalls and a middle wall connecting the two. By recessing the collars into the collar grooves, the overall diameter of the spring-bow centralizer (when the 4

8 spring-bows are compressed) is reduced, allowing the centralizer to be more optimally used in limited clearance applications. The use of grooves or recesses to receive portions of the spring-bow assembly is not limited to grooves or recesses for receiving movable collars. In applications where the springbow itself creates clearance issues even when compressed, it was known to provide recesses in a portion of the tubular body below the spring-bows to receive at least a portion of the springbows. Examples of spring-bow centralizers with spring-bow recesses are provided below: U.S. Patent No. 4,573,537 U.S. Patent No. 4,580,632 5

9 U.S. Patent No. 3,993,128 U.S. Patent No. 5,086,839 B. Background: Pull-Through Operation Because the spring-bows in a spring-bow centralizer are flexible, difficulties can be created if one tries to push a flexible spring-bow into a hole or a pipe. (Imagine trying to push a flexible cooked spaghetti noodle into a pipe!). To address the issues created by the flexible nature of the spring-bows, spring-bow centralizers were developed where the spring-bows are always pulled into a hole or pipe (as opposed to being pushed into the pipe). In spring-bow centralizers using movable collars (or grooves and retaining collars) a pull-through operation can be ensured by sizing of the grooves in which the collars (or springbow ends) are located such that movement of the spring-bow ends in the direction of the movement of the tubular body is prohibited. This approach for ensuring pull-through operation was known at least as early as the 1932 filing of the 553 Patent discussed above: 6

10 [T]he two spaced stops 2 or 2 are so located with respect to the adjacent cylindrical end members [the collars] that when the pipe is moved lengthwise in either direction, one or the other of the stops 2 or 2 butt against its adjacent cylindrical end member [collar] to always pull the entire centralizing device forward with the pipe... By always pulling the centralizer forward by means of the aforesaid stops, and by never pushing the centralizer from the rear, it follows that springs 5 will always flatten nicely against the pipe in passing through a close restricted hole, and that these springs will never bulge...as they often would do if the device were pushed from the rear Patent at page 2, left column, lines C. Background: Connecting the Centralizer Sub In String ( Tubular Connections ) One common use of spring-bow centralizers is to center a string of casing members within a hole or a larger casing during a procedure where the centered string of casing is cemented within the hole or the larger casing. In such applications, centering the casing coupled to the springbow centralizer tends to insure the formation of a uniformly thick layer of cement about the outside of the centered string of casing. Various methods and structures are known for connecting a centralizer sub-body (i.e., the body containing the grooves within which the centralizer collars rest) into a string of tubular elements. The most common method of connecting a centralizer sub-body into a tubular string is through the use of threaded connections, where the sub-body will provide a threaded female connection at one end and a threaded male connection on the opposite end with the male and 7

11 female ends designed to mate corresponding connections formed on ends of the adjacent elements in the string. Male and female ends of a centralizer using this type of connection are illustrated in Figures 1e and 1a of the 333 Patent (reproduced below): A variety of tubular connections was known in the prior art. Many of the common prior art tubular connections were disclosed in a prior art publication issued by the assignee of the 333 Patent Weatherford. For example, Weatherford s Tubular Connection Data Book WTF Tubular Connection Data Book (attached as Exhibit F) illustrates and describes the common tubular connections in the prior art. Notably, the WTF Tubular Connection Data Book was not submitted or considered during the original examination of the re-examination of the 333 Patent. As reflected in the prior art WTF Tubular Connection Data Book, the most common forms of male and female tubular connections is the one known as a pin and box connection. In a pin and box connection where each of the tubular elements to be connected has a threaded male end (known as the pin end) and a threaded female end (known as the box end), either integrally or 8

12 through a coupling. As noted by the Patent Owner s representative during a prior Ex Parte reexamination of the 333 Patent, spring-bow centralizers of the type disclosed in the patent at issue commonly used pin and box connections: The fact that tubular pieces are mated to one another to form a tubing string is clearly described and, of course, is well known in the field of well-bore technology. in order to form the above described tubing string, one end of a tubular section must have a so-called box or female end with internal threads while the other end has a so-called pin or male end with external threads. See Exhibit C, Response dated June 1, One example of a tubular connection using pin and box ends is reflected page 17 of Weatherford s prior art Tubular Connection Data Book, reproduced below: As reflected in the image, the use of pin and box connections results in an upstart or increase in the diameter of the tubular string at the point where the male and female connectors mate. D. The 333 Patent The 333 Patent discloses various embodiments of a pull-through bow spring centralizer for use in limited clearance applications. FIGs. 1a-2 (reproduced below) disclose a centralizer utilizing connections, collars and collar grooves similar to those found in the Hartman prior art reference discussed above: 9

13 The 333 Patent provides few details about, and a very limited discussion of, the embodiment illustrated in FIGs. 1a-2. Apart from the descriptions of the various drawings, the totality of the discussion of the referenced embodiments is contained in only three paragraphs located at 333 Patent col. 4, lines E. Claims 11 and Claim 11 Claim 11 of the 333 Patent (reproduced below) recites a spring bow centralizer with collar grooves and a spring bow recess: 11. A centralizer apparatus comprising a hollow tubular body with an exterior surface and a longitudinal bore therethrough, a first collar movably emplaced around the tubular body and movable longitudinally thereon, a plurality of spring bows, each spring bow having a first end spaced apart from a second end, each spring bow biased outwardly from the tubular body, a first groove in the exterior surface of the tubular body, the groove defined by a top side wall and a bottom side wall, and a middle wall therebetween, 10

14 the first collar movably disposed in the first groove, the first groove top side wall and bottom side wall limiting first collar movement, the first ends of the spring bows connected to the first collar, so that upon movement of the first collar in a direction away from the second ends of the spring bows the spring bows move inwardly toward the tubular body, a second collar movably emplaced around the tubular body and movable longitudinally thereon, the second ends of the spring bows connected to the second collar, so that upon movement of the second collar away from the first collar, the spring bows move inwardly toward the tubular body, a second groove in the exterior surface of the tubular body, the second groove defined by a top side wall and a bottom side wall, and a middle wall therebetween, the second collar movably disposed in the second groove, the second groove top side wall and bottom side wall limiting second collar movement, and at least one spring bow recess in the exterior surface of the tubular body for receiving at least a portion of at least one spring bow. 2. Claim 55 Claim 55 of the 333 Patent (reproduced below) recites a spring bow centralizer with collar grooves and a spring bow recess using language that generally tracks the language found in claim 11: 55. A centralizer apparatus comprising: a tubular body with an exterior surface; a first collar movably emplaced around the tubular body and movable longitudinally thereon; a first groove in the exterior surface of the tubular body, the first groove defined by a top side wall, a bottom side wall, and a middle wall therebetween; the first collar movably disposed in the first groove; 11

15 the first groove top side wall and bottom side wall limiting first collar movement; a second groove in the exterior surface of the tubular body, the second groove having a top and a bottom side wall; a second collar disposed in the second groove; a plurality of spring bows, each spring bow having a first end spaced apart from a second end, each spring bow biased outwardly from the tubular body, the first ends connected to the first collar and the second ends of the spring bows connected to the second collar, so that upon movement of the first collar in a direction away from the second ends of the spring bows while prohibiting movement of the second ends, the first ends move with the first collar and the spring bows move inwardly toward the tubular body so as to be pullable into an adjoining opening as the tubular body moves into the opening; one or more spring bow recesses in the exterior surface of the tubular body for receiving a portion of one or more of the spring bows as the spring bows move inwardly; and wherein the first and second grooves, the first and second collars, and the plurality of spring bows, are operatively configured such that, when the spring bows are fully collapsed within the recess and one of the first and second collars abuts its respective top side wall, the other one of the first and second collars is spaced apart from its respective bottom side wall. Claim 55 includes a further limitation that is directed to the geometries of the collar grooves and the spring bows that recites that, when the spring bows are fully collapsed within the spring bow recess and when one of the collars abuts one of the collar groove walls (the top side wall) the other collar will be spaced apart from its bottom side wall. As an analysis of this language shows, and as counsel for the Patent Owner has confirmed in open Court in the referenced Pending Litigation, this language merely means that the recited centralizer is a pullthrough centralizer. Specifically, referring to claim 55, counsel for the Patent Owner explained: 12

16 So to give you a little bit of context about what this last "wherein" clause is trying to do, we talked earlier when we began this morning about the idea of a pullable centralizer, and this wherein clause attempts to capture that pullable concept by claiming relations between the grooves, the collars, and the spring bows when the spring bow -- or when the centralizer apparatus is in a certain condition. So this says, when the spring bows are fully collapsed in the recess and one of the first and second collars abuts its respective top sidewall, the other one, the other collar, is spaced apart from its respective bottom sidewall. So what that is saying is that essentially you have a pullable centralizer with some clearance for the other collar to move around. It is not going to be restrained by its other groove. See Patent Owner s Counsel, Markman Hearing transcript ( MARKMAN, attached as Exhibit D), page 89, lines IV. ORIGINAL PROSECUTION HISTORY OF THE 333 PATENT The original prosecution of the application that issued as the 333 Patent was brief. The original claims were rejected and all cancelled. New claims were presented and allowed. The Examiner s Statement of Reasons for Allowance is reproduced below: The prior art of records fails to disclose a centralizer at least having groove or grooves in the exterior surface of the tubular body for movably limiting the movement of the centralizer on the tubular body. See Notice of Allowance dated July 18, 1996, Exhibit B. V. THE EX PARTE REEXAMINATION OF THE 333 PATENT An ex parte reexamination was requested on January 10, 2006, and Ordered on January 30, Claim 11 was rejected as anticipated by U.S. Patent No. 2,089,533 to Hartman. The Patent Owner overcame this rejection by amending claim 11 to include a limitation requiring at 13

17 least one spring bow recess in the exterior surface of the tubular body for receiving at least a portion of at least one spring bow. See Response dated April 5, 2007, Exhibit C. During the ex parte reexamination it was clarified that the reference in the claims to a tubular body with an exterior surface could include a tubular body formed by the mating of multiple tubular elements. Specifically, during the Ex Parte reexamination, the Patent Owner submitted new claims Some of these claims recited a tubular body with an exterior surface and further limitations indicating that the tubular body with an external surface was one that comprises first and second separate tubular bodies mated to one another. The Patent Examiner initially rejected the claims including such limitations on grounds that the specification did not teach the formation of a tubular body through the mating of separate tubular bodies. The Patent Owner responded by noting that the tubular body recited in the claim could be formed from multiple mated tubular elements and that the structures formed by the mated elements could form the grooves recited in the claims : As an initial matter, each of these claims is directed toward the mating of first and second tubular body sections to one another, which form the tubular body As noted above, one box end of an adjacent tubular section that is mated to another tubular section may form the "bottom side wall" of the groove. In that regard, it must be kept in mind that the '333 patent's written description and drawings describe and disclose numerous embodiments of a centralizer apparatus Referring to Figure 8 for example, there is shown an open-ended groove 42 (thus having only a top side wall and a middle wall) in a first tubular body section which, when an adjacent tubular section is mated thereto, would have its bottom side wall formed by the end portion of the adjacent tubular body section. The same would also be true for the groove shown in Figure 7a. Therefore, by mating first and second tubular sections as clearly disclosed in the specification 14

18 in order to form a casing string, one skilled in the art readily understands that the bottom side wall of an otherwise open ended groove would be formed via the end portion of the adjacent tubular section. Similarly, a box end of an adjacent tubular section may form the bottom side wall as noted above. See Response dated June 1, 2007, Exhibit C. This exchange is of potential significance to this Petition because it confirms for the public that, as used in the 333 Patent, a tubular body with an external surface broadly includes tubular bodies formed through the mating of separate tubular members. VI. STATEMENT OF PRECISE RELIEF REQUESTED Pursuant to 37 C.F.R (b), Petitioner requests inter partes review of claims 11 and 55 of the 333 Patent, and a finding that both claims are unpatentable under 35 U.S.C 103 and/or 102, as set forth herein and as supported by the attached evidentiary exhibits. A. Statutory Grounds of Challenge As evidenced by the prior art in this Petition, spring bow centralizers meeting the limitations of claims 11 and 55 of the 333 Patent were well known before the application that resulted in the 333 Patent was filed and therefore claims 11 and 55 are invalid under 35 U.S.C. 102 and 103 as set out below. 1. Prior Art References Pursuant to 37 C.F.R (b)(2), inter partes review of the 333 Patent is requested in view of the following references, each of which is prior art to the 333 Patent under 35 U.S.C. 102 or 103: 15

19 a) HARTMAN U.S. Patent No. 2,089,553 ( HARTMAN, attached as Exhibit E) is prior art to the 333 Patent under at least 35 U.S.C. 102(b). HARTMAN issued on August 10, 1937, more than 50 years before the earliest filing date referenced on the face of the 333 Patent. HARTMAN was cited in the reexamination of the 333 Patent. However, this petition presents Hartman in a new light, one not considered during the previous reexamination but warranted at least by the Patent Owner s interpretation of the claim, as will be further explained below. b) The WTF Tubular Connection Data Book The Tubular Connection Data Book by Weatherford ( WTF Tubular Connection Data Book, attached as Exhibit F) is prior art to the 333 Patent under 35 U.S.C. 102(b). The WTF Tubular Connection Data Book was published in 1992, several years before the earliest filing date referenced on the face of the 333 Patent. The WTF Tubular Connection Data Book was not cited or applied during the original prosecution of the 333 Patent or the completed reexamination. c) BRADDICK U.S. Patent No. 3,993,128 ( BRADDICK, attached as Exhibit G) is prior art to the 333 Patent under at least 35 U.S.C. 102(b). BRADDICK issued on November 23, 1976, just under 20 years before the earliest filing date referenced on the face of the 333 Patent. BRADDICK was not considered in the original prosecution or the reexamination of the 333 Patent. 2. Grounds of Challenge 16

20 The statutory grounds under U.S.C. 103 and/or 102 on which the challenge to the claims are based, and the prior art relied upon for each ground, are as follows. a) GROUND 1: Claims 11 & 55 are Obvious Under 35 U.S.C. 103 Over HARTMAN in View of The WTF Tubular Connection Data Book b) GROUND 2: Claims 11 & 55 are Inherently Anticipated Under 35 U.S.C. 102 by HARTMAN c) GROUND 3: Claims 11 & 55 are Obvious Under 35 U.S.C. 103 Over HARTMAN in View of BRADDICK B. The Broadest Reasonable Interpretation In this proceeding, claims are given the broadest reasonable interpretation in light of the specification. 37 C.F.R (b). The construction standard in this proceeding, therefore, is different from that applied in a District Court proceeding and the constructions proposed herein are therefore not intended to preclude Petitioner from advancing alternative constructions, if appropriate, in any District Court proceeding. Under the broadest reasonable interpretation standard, words of the claim must be given their plain meaning unless such meaning is inconsistent with the specification. MPEP Claim Term 11.1 A centralizer apparatus comprising Proposed Construction for the Broadest Reasonable Interpretation a device that tends to center itself 55.1 A centralizer apparatus comprising: 11.2 a hollow tubular body with an exterior surface and a longitudinal bore therethrough, a hollow cylindrical body, not limited to any specific type of tubing, casing, or pipe 17

21 Claim Term 11.3 a first collar movably emplaced around the tubular body and movable longitudinally thereon, Proposed Construction for the Broadest Reasonable Interpretation a collar mounted on the body in such a way as to allow it to move longitudinally on the body 55.3 a first collar movably emplaced around the tubular body and movable longitudinally thereon; 11.4 a plurality of spring bows, each spring bow having a first end spaced apart from a second end, each spring bow biased outwardly from the tubular body, 11.5 a first groove in the exterior surface of the tubular body, the groove defined by a top side wall and a bottom side wall, and a middle wall therebetween, more than one bow an indentation around the body 55.4 a first groove in the exterior surface of the tubular body, the first groove defined by a top side wall, a bottom side wall, and a middle wall therebetween, 11.6 the first collar movably disposed in the first groove, the first collar can move in the first groove 55.5 the first collar movably disposed in the first groove; 11.7 the first groove top side wall and bottom side wall limiting first collar movement, at least one of the walls acting to limit movement of the collar 55.6 the first groove top side wall and bottom side wall limiting first collar movement; 11.8 the first ends of the spring bows connected to the first collar, so that upon movement of the first collar in a direction away from the second ends of the spring bows the spring bows move inwardly toward the extending the bows causes them to collapse towards the body 18

22 tubular body, Claim Term Proposed Construction for the Broadest Reasonable Interpretation 11.9 a second collar movably emplaced around the tubular body and movable longitudinally thereon, a collar mounted on the body in such a way as to allow it to move longitudinally on the body the second ends of the spring bows connected to the second collar, so that upon movement of the second collar away from the first collar, the spring bows move inwardly toward the tubular body, extending the bows causes them to collapse towards the body a second groove in the exterior surface of the tubular body, the second groove defined by a top side wall and a bottom side wall, and a middle wall therebetween, the second collar movably disposed in the second groove, the second groove top side wall and bottom side wall limiting second collar movement, and at least one spring bow recess in the exterior surface of the tubular body for receiving at least a portion of at least one spring bow one or more spring bow recesses in the exterior surface of the tubular body capable of receiving at least a portion of one or more spring bows. an indentation around the body the second collar can move in the second groove at least one of the walls acting to limit movement of the collar an indentation in the body positioned under at least one of the spring bows for receiving at least part of one spring bow OR A space formed, milled, or machined into the exterior surface of the tubular body, separate from the collar grooves, for receiving at least a portion of at least one spring bow 55.2 a tubular body with an exterior surface; See However, this tubular body is not necessarily hollow. See Col. 19

23 Claim Term 55.7 a second groove in the exterior surface of the tubular body, the second groove having a top and a bottom side wall; 55.8 the second collar disposed in the second groove; Proposed Construction for the Broadest Reasonable Interpretation 6: See However, this second groove does not necessarily include a middle wall. See However, this second collar does not necessarily move within the groove. See Col. 5: a plurality of spring bows, each spring bow having a first end spaced apart from a second end, each spring bow biased outwardly from the tubular body, the first ends connected to the first collar and the second ends of the spring bows connected to the second collar, so that upon movement of the first collar in a direction away from the second ends of the spring bows while prohibiting movement of the second ends, the first ends move with the first collar and the spring bows move inwardly toward the tubular body so as to be pullable into an adjoining opening as the tubular body moves into the opening; wherein the first and second grooves, the first and second collars, and the plurality of spring bows are operatively configured such that, when the spring bows are fully collapsed within the recess and one of the first and second abuts its respective top wall, the other one of the first and second collars is spaced apart from its respective bottom side wall. See 11.4, 11.8, In addition, the bows, grooves, and collars are configured to provide clearance for the bows to collapse and the collars to move within the grooves. See when the bows collapse, only one collar can be in contact with a side wall of the grooves C. Level of Ordinary Skill in the Art The patent claims and prior art references should be understood from the perspective of a person of ordinary skill in the art to which the patent is related, based on the understanding of that skilled person at the time the application was filed. A person of ordinary skill in the art is 20

24 one who is presumed to be aware of all pertinent art and is a person of ordinary creativity. See KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007). There are several factors that may be used in determining the level of ordinary skill in the art, including but not limited to (1) the education level of the inventor, (2) the education level of active workers in the field, (3) the types of problems encountered in the art, (4) the prior art solutions to these problems, (5) the rapidity with which innovations are made, and (6) the sophistication of the technology. See, e.g., Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1376 (Fed. Cir. 2012) (citing Custom Accessories, Inc. v. Jeffrey Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir.1986); In re GPAC, 57 F.3d 1573, 1579, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995). For the subject matter of the 333 Patent, as of March June 7, 1005, a person of ordinary skill in in the art related to the 333 Patent would be a person having a Bachelor s degree in mechanical engineering and have about 2 years of experience with tools used in cementing oil wells. See Declaration of George W. Ribble ( Ribble Declaration, attached as Exhibit I) at 11. D. Claims 11 and 55 are unpatentable a) GROUND 1: Claims 11 & 55 are Rendered Obvious by HARTMAN in View of The WTF Tubular Connection Data Book HARTMAN shows a device with a pin connection one end but it does not show the specific type of connection that would be used on the other end. The most common type of connection for the end opposite a pin end would have been a box connection, either integrally or through a coupling. As noted above, a box connection would necessarily have an upstart that extended above the surface of the tubular body such that when the centralizer of HARTMAN was inserted into a tubing string, an inner space would be created between the upstart connections on each end and the collars and springs of the spring bow would be recessed within 21

25 that space. Thus, to use the centralizer of HARTMAN in a tubular string as taught by the reference, one would have to combine the disclosed structure with connections of the type disclosed in the WTF Tubular Connection Data Book and would then insert the centralizer into a tubing string. The resulting structure would be generally as illustrated below: As reflected in the image above, when combined with the standard pin and box connection and inserted into a tubing string, a space would be formed between the upstarts formed by the tubular connections. Because this space would be under the spring bows and would receive at last part of the spring bows, it would be a spring bow recess under the construction of that phrase appropriate for this proceeding. The fact that it would have been obvious to use pin and box connections of the type taught in the WTF Tubular Connection Databook with the centralizer of the HARTMAN reference was confirmed by a named inventor on the 333 Patent at his deposition and is confirmed in the attached declaration of George Ribble, an expert in the subject matter of the 333 Patent. Specifically, as explained by Brad Hebert, a named inventor on the 333 Patent, the centralizer of HARTMAN, Exhibit E, would necessarily use a connection, such as those shown in the WTF Tubular Connection Data Book, Exhibit F, on both ends. See Hebert Deposition, Exhibit H, pages ; see also Ribble Declaration, Exhibit I, at 57. Many of those connections are non-flush connections, and would thus include a larger outside diameter, or an external upset. See Hebert Deposition, Exhibit H, page 100; see also Ribble Declaration, Exhibit I, at 56. This external upset, on both sides of the spring bow assembly, would form a space 22

26 meeting the broadest reasonable construction of the phrase spring bow recess appropriate for this proceeding, as claimed in claims 11 and 55. See Ribble Declaration, Exhibit I, at 59. The following claim charts demonstrate, on a limitation-by-limitation basis, how claims 11 & 55 are obvious over HARTMAN in view of the Weatherford Tubular Connection Data Book under 35 U.S.C Independent Claim A centralizer apparatus comprising HARTMAN in View of The Weatherford Tubular Connection Data Book As found by the PTO in the Reexamination Proceeding HARTMAN discloses a centralizer apparatus. See, e.g., the non-final office action dated February 6, 2007 in Serial No. 90/007,870, Exhibit C. CASING CENTERING DEVICE. HARTMAN, Exhibit E, Title. See also Hebert Deposition, Exhibit H, pages 137 and a hollow tubular body with an exterior surface and a longitudinal bore therethrough, As found by the PTO in the Reexamination Proceeding HARTMAN discloses a hollow tubular body with an exterior surface and a longitudinal bore therethrough. See, e.g., the non-final office action dated February 6, 2007, Exhibit C. 23

27 HARTMAN, Exhibit E, Fig. 1 and Fig a first collar movably emplaced around the tubular body and movable longitudinally thereon, As found by the PTO in the Reexamination Proceeding HARTMAN discloses a first collar movably emplaced around the tubular body and movable longitudinally thereon. See, e.g., the non-final office action dated February 6, 2007, Exhibit C. 24

28 HARTMAN, Exhibit E, Fig. 1 and Fig. 4 (selected portions, with the first collar highlighted). See also Hebert Deposition, Exhibit H, pages 139, 146 and a plurality of spring bows, each spring bow having a first end spaced apart from a second end, each spring bow biased outwardly from the tubular body, As found by the PTO in the Reexamination Proceeding HARTMAN discloses a plurality of spring bows, each spring bow having a first end spaced apart from a second end, each spring bow biased outwardly from the tubular body. See, e.g., the non-final office action dated February 6, 2007, Exhibit C. 25

29 HARTMAN, Exhibit E, Fig. 1 and Fig. 4 (with the spring bows highlighted). See also Hebert Deposition, Exhibit H, pages 137, 139, and a first groove in the exterior As found by the PTO in the Reexamination Proceeding HARTMAN discloses a first groove in the exterior surface of 26

30 surface of the tubular body, the groove defined by a top side wall and a bottom side wall, and a middle wall therebetween, the tubular body, the groove defined by a top side wall and a bottom side wall, and a middle wall therebetween. See, e.g., the non-final office action dated February 6, 2007, Exhibit C. HARTMAN, Exhibit E, Fig. 1 (with the first groove highlighted and sidewalls colored). See also Hebert Deposition, Exhibit H, pages , and the first collar movably disposed in the first groove, As found by the PTO in the Reexamination Proceeding HARTMAN discloses the first collar movably disposed in the first groove. See, e.g., the non-final office action dated February 6, 2007, Exhibit C. HARTMAN, Exhibit E, Fig. 1 and Fig. 4 (selected portions, with the first collar highlighted). It is understood, of course, that stop rings 4 in Figs. 1 and 4, 27

31 are free to rotate and to move slightly lengthwise in grooves 3. Also collars 6, Fig.1, being fastened to the stop rings 4, are also free to rotate and move lengthwise of the pipe. There is preferably no limit to the rotational freedom of the stop rings and collars on the pipe, but the lengthwise motion is limited by stops 2 of the pipe coming in contact with stop rings 4 in grooves 3. HARTMAN, Exhibit E, page 1, right column, line 47 - page 2, left column, line 2. See also Hebert Deposition, Exhibit H, pages , and the first groove top side wall and bottom side wall limiting first collar movement, As found by the PTO in the Reexamination Proceeding HARTMAN discloses the first groove top side wall and bottom side wall limiting first collar movement. See, e.g., the nonfinal office action dated February 6, 2007, Exhibit C. HARTMAN, Exhibit E, Fig. 1 and Fig. 4 (selected portions, with the first groove highlighted and sidewalls colored). It is understood, of course, that stop rings 4 in Figs. 1 and 4, are free to rotate and to move slightly lengthwise in grooves 3. Also collars 6, Fig.1, being fastened to the stop rings 4, are also free to rotate and move lengthwise of the pipe. There is preferably no limit to the rotational freedom of the stop rings and collars on the pipe, but the lengthwise motion is limited by stops 2 of the pipe coming in contact with stop rings 4 in grooves 3. HARTMAN, Exhibit E, page 1, right column, line 47 - page 2, left column, line 2. See also Hebert Deposition, Exhibit H, pages , and the first ends of the spring As found by the PTO in the Reexamination Proceeding HARTMAN discloses the first ends of the spring bows 28

32 bows connected to the first collar, so that upon movement of the first collar in a direction away from the second ends of the spring bows the spring bows move inwardly toward the tubular body, connected to the first collar, so that upon movement of the first collar in a direction away from the second ends of the spring bows the spring bows move inwardly toward the tubular body. See, e.g., the non-final office action dated February 6, 2007, Exhibit C. See also HARTMAN, Exhibit E, Figures 1 and 4. [T]he grooves 3 in Figs. 1 and 4 are long enough to permit the springs to fold flat against the pipe when the centralizing device is being pulled forward through any restricted opening, such pulling being always affected by one or the other of stops 2 or 2'. HARTMAN, Exhibit E, page 2, left column, lines See also Hebert Deposition, Exhibit H, pages , and a second collar movably emplaced around the tubular body and movable longitudinally thereon, As found by the PTO in the Reexamination Proceeding HARTMAN discloses a second collar movably emplaced around the tubular body and movable longitudinally thereon. See, e.g., the non-final office action dated February 6, 2007, Exhibit C. HARTMAN, Exhibit E, Fig. 1 and Fig. 4 (selected portions, with the second collar highlighted). 29

33 It is understood, of course, that stop rings 4 in Figs. 1 and 4, are free to rotate and to move slightly lengthwise in grooves 3. Also collars 6, Fig.1, being fastened to the stop rings 4, are also free to rotate and move lengthwise of the pipe. There is preferably no limit to the rotational freedom of the stop rings and collars on the pipe, but the lengthwise motion is limited by stops 2 of the pipe coming in contact with stop rings 4 in grooves 3. HARTMAN, Exhibit E, page 1, right column, line 47 - page 2, left column, line 2. See also Hebert Deposition, Exhibit H, pages and the second ends of the spring bows connected to the second collar, so that upon movement of the second collar away from the first collar, the spring bows move inwardly toward the tubular body, As found by the PTO in the Reexamination Proceeding HARTMAN discloses the second ends of the spring bows connected to the second collar, so that upon movement of the second collar away from the first collar, the spring bows move inwardly toward the tubular body. See, e.g., the non-final office action dated February 6, 2007, Exhibit C. See also HARTMAN, Exhibit E, Figures 1 and 4. [T]he grooves 3 in Figs. 1 and 4 are long enough to permit the springs to fold flat against the pipe when the centralizing device is being pulled forward through any restricted opening, such pulling being always affected by one or the other of stops 2 or 2'. HARTMAN, Exhibit E, page 2, left column, lines See also Hebert Deposition, Exhibit H, pages , and a second groove in the exterior surface of the tubular body, the second groove defined by a top side wall and a bottom side wall, and a middle wall therebetween, As found by the PTO in the Reexamination Proceeding HARTMAN discloses a second groove in the exterior surface of the tubular body, the second groove defined by a top side wall and a bottom side wall, and a middle wall therebetween. See, e.g., the non-final office action dated February 6, 2007, Exhibit C. 30

34 HARTMAN, Exhibit E, Fig. 1 and Fig. 4 (select portion, with the second groove highlighted and sidewalls colored). See also Hebert Deposition, Exhibit H, pages , and the second collar movably disposed in the second groove, As found by the PTO in the Reexamination Proceeding HARTMAN discloses the second collar movably disposed in the second groove. See, e.g., the non-final office action dated February 6, 2007, Exhibit C. 31

35 HARTMAN, Exhibit E, Fig. 1 and Fig. 4 (select portion, with the second groove highlighted and sidewalls colored). It is understood, of course, that stop rings 4 in Figs. 1 and 4, are free to rotate and to move slightly lengthwise in grooves 3. Also collars 6, Fig.1, being fastened to the stop rings 4, are also free to rotate and move lengthwise of the pipe. There is preferably no limit to the rotational freedom of the stop rings and collars on the pipe, but the lengthwise motion is limited by stops 2 of the pipe coming in contact with stop rings 4 in grooves 3. HARTMAN, Exhibit E, page 1, right column, line 47 - page 2, left column, line 2. See also Hebert Deposition, Exhibit H, pages , and the second groove top side wall and bottom side wall limiting second collar movement, and As found by the PTO in the Reexamination Proceeding HARTMAN discloses the second groove top side wall and bottom side wall limiting second collar movement. See, e.g., the non-final office action dated February 6, 2007, Exhibit C. 32

36 HARTMAN, Exhibit E, Fig. 1 and Fig. 4 (select portion, with the second groove highlighted and sidewalls colored). It is understood, of course, that stop rings 4 in Figs. 1 and 4, are free to rotate and to move slightly lengthwise in grooves 3. Also collars 6, Fig.1, being fastened to the stop rings 4, are also free to rotate and move lengthwise of the pipe. There is preferably no limit to the rotational freedom of the stop rings and collars on the pipe, but the lengthwise motion is limited by stops 2 of the pipe coming in contact with stop rings 4 in grooves 3. HARTMAN, Exhibit E, page 1, right column, line 47 - page 2, left column, line 2. See also Hebert Deposition, Exhibit H, pages , and at least one spring bow recess in the exterior surface of the tubular body for receiving at least a portion of at least one spring bow. Placing the device shown in Fig. 1 of HARTMAN, Exhibit E, between the standard connection shown in the WTF TUBULAR CONNECTION DATA BOOK, Exhibit F, on page 17, for example, would produce the following (with the resultant spring bow recess highlighted): 33

37 See also Hebert Deposition, Exhibit H, page 85 (discussing a version of the WTF Tubular Connection Data Book) (Q. that book identifies a number of connections that might have been used with centralizers on casings before 1995; is that correct? A. It shows connections that could have been used with the pipe, and that piper could have contained a centralizer, if that what you re getting at. Yes. ); see also Hebert Deposition, Exhibit H, page 88 (Q. So is it safe to say, then, that what s in that book is merely a subset of what somebody would have access to before 1995 in choosing a connection to use with a piece of tubing or casing? A. That would be correct. ). See also Hebert Deposition, Exhibit H, pages (Q. And all the tubular elements, would you say, that go into that casing string whether, it s a tool or just a piece of pipe or a sub or whatever, they all have connections on the top and bottom? A. Yeah. I can t think of any time when they wouldn t. See Ribble Declaration, Exhibit I, at Independent Claim A centralizer apparatus comprising: 55.2 a tubular body with an exterior surface; HARTMAN in View of The Weatherford Tubular Connection Data Book See 11.1 (section VI, D, a, above). See 11.2 (section VI, D, a, above) a first collar movably emplaced around the tubular body and movable longitudinally thereon; See 11.3 (section VI, D, a, above). 34

38 55.4 a first groove in the exterior surface of the tubular body, the first groove defined by a top side wall, a bottom side wall, and a middle wall therebetween, 55.5 the first collar movably disposed in the first groove; 55.6 the first groove top side wall and bottom side wall limiting first collar movement; 55.7 a second groove in the exterior surface of the tubular body, the second groove having a top and a bottom side wall; 55.8 the second collar disposed in the second groove; 55.9 a plurality of spring bows, each spring bow having a first end spaced apart from a second end, each spring bow biased outwardly from the tubular body, the first ends connected to the first collar and the second ends of the spring bows connected to the second collar, so that upon movement of the first collar in a direction away from the second ends of the spring bows while prohibiting movement of the See 11.5 (section VI, D, a, above). See 11.6 (section VI, D, a, above). See 11.7 (section VI, D, a, above). See (section VI, D, a, above). See (section VI, D, a, above). See 11.4, 11.8, (section VI, D, a, above). In the forms of the invention shown in Figs. 1, 4 and 5 the two spaced stops 2 or 2' are so located with respect to the adjacent cylindrical end members that when the pipe is moved lengthwise in either direction, one or the other of the stops 2 or 2' butt against its adjacent cylindrical end member to always pull the entire centralizing device forward with the pipe. In Figs. 1 and 4 the stops 2 obviously butt against the adjacent periphery of the stop rings 4, and in Fig. 5 the stops 2' butt against the adjacent ends of slots 17. The slots 17 in Fig. 5, and the grooves 3 in Figs. 1 and 4 are long enough to permit the springs to fold flat against the pipe when the centralizing device is being pulled forward through any restricted opening, such pulling being always affected by one or the other of stops 2 or 2'. By always pulling the centralizer forward by means of the 35

39 second ends, the first ends move with the first collar and the spring bows move inwardly toward the tubular body so as to be pullable into an adjoining opening as the tubular body moves into the opening; aforesaid stops, and by never pushing the centralizer from the rear, it follows that springs 5 will always flatten nicely against the pipe in passing through a close restricted hole, and that these springs will never bulge or spear outward into the formation to crush themselves, as they often would do if the device were pushed from the rear into a restricted opening.. HARTMAN, Exhibit E, page 2, left column, lines See also Hebert Deposition, Exhibit H, pages 140, See Ribble Declaration, Exhibit I, at one or more spring bow recesses in the exterior surface of the tubular body capable of receiving at least a portion of one or more spring bows wherein the first and second grooves, the first and second collars, and the plurality of spring bows are operatively configured such that, when the spring bows are fully collapsed within the recess and one of the first and second abuts its respective top wall, the other one of the first and second collars is spaced apart from its respective bottom side wall. See (section VI, D, a, above). See 11.4, 11.8, (section VI, D, a, above). In the forms of the invention shown in Figs. 1, 4 and 5 the two spaced stops 2 or 2' are so located with respect to the adjacent cylindrical end members that when the pipe is moved lengthwise in either direction, one or the other of the stops 2 or 2' butt against its adjacent cylindrical end member to always pull the entire centralizing device forward with the pipe. In Figs. 1 and 4 the stops 2 obviously butt against the adjacent periphery of the stop rings 4, and in Fig. 5 the stops 2' butt against the adjacent ends of slots 17. The slots 17 in Fig. 5, and the grooves 3 in Figs. 1 and 4 are long enough to permit the springs to fold flat against the pipe when the centralizing device is being pulled forward through any restricted opening, such pulling being always affected by one or the other of stops 2 or 2'. By always pulling the centralizer forward by means of the aforesaid stops, and by never pushing the centralizer from the rear, it follows that springs 5 will always flatten nicely against the pipe in passing through a close restricted hole, and that these springs will never bulge or spear outward into the formation to crush themselves, as they often would do if the device were pushed from the rear into a restricted opening.. HARTMAN, Exhibit E, page 2, left column, lines See also Hebert Deposition, Exhibit H, pages 140,

40 See Ribble Declaration, Exhibit I, at 52. b) GROUND 2: Claims 11 & 55 are Inherently Anticipated by HARTMAN (1) Statement Non-redundancy The basis for the rejections raised in the following section are meaningfully distinct from the basis of the rejections raised above based on HARTMAN in view of the WTF Tubular Connection Data Book. Petitioner urges the PTAB to adopt each ground of unpatentability presented herein for at least the following reasons. First, while HARTMAN discloses every element of all of the claims; the disclosure of the spring bow recess feature is inherent and, therefore, is vulnerable to attack by the Patent Owner. The combination of HARTMAN with The WTF Tubular Connection Data Book demonstrates the invalidity of the claims at issue even if an inherent disclosure of a spring bow recess by HARTMAN is not found. Second, the two grounds rely on different legal standards and the scopes of relevant evidence that can be considered under each standard are different. If the claims are found to be inherently anticipated by HARTMAN, there is no need for consideration of any presented secondary indicia of non-obviousness. MPEP Finally, only two claims of the 333 Patent are challenged in this Petition and the challenged claims are simple and similar. Adoption of GROUNDS 1 & 2 would not be unduly burdensome to include in this proceeding. As explained above, with respect to GROUND 1, the invention of HARTMAN, Exhibit E, would necessarily use a connection on both ends. See Hebert Deposition, Exhibit H, pages 37

41 ; see also Ribble Declaration, Exhibit I, at 34; see also Vilyus Deposition, Exhibit J, pages In the 1930 s those connections would have been non-flush connections, and would thus include a larger outside diameter, or an external upset. See Hebert Deposition, Exhibit H, page 100; see also Ribble Declaration, Exhibit I, at 40, This external upset, on both sides of the spring bow assemble, would form a spring bow recess, as claimed in claims 11 and 55. See Ribble Declaration, Exhibit I, at 49. The following claim charts demonstrate, on a limitation-by-limitation basis, how claims 11 & 55 are inherently anticipated by Hartman under 35 U.S.C Independent Claim A centralizer apparatus comprising 11.2 a hollow tubular body with an exterior surface and a longitudinal bore therethrough, HARTMAN See 11.1 (section VI, D, a, above). See 11.2 (section VI, D, a, above) a first collar movably emplaced around the tubular body and movable longitudinally thereon, See 11.3 (section VI, D, a, above) a plurality of spring bows, each spring bow having a first end spaced apart from a second end, each spring bow biased outwardly from the tubular body, 11.5 a first groove in the exterior surface of the tubular body, the groove defined by a top side wall and a bottom side wall, and a middle wall therebetween, 11.6 the first collar movably disposed in the first groove, 11.7 the first groove top side wall and bottom side wall limiting first collar movement, See 11.4 (section VI, D, a, above). See 11.5 (section VI, D, a, above). See 11.6 (section VI, D, a, above). See 11.7 (section VI, D, a, above). 38

42 11.8 the first ends of the spring bows connected to the first collar, so that upon movement of the first collar in a direction away from the second ends of the spring bows the spring bows move inwardly toward the tubular body, 11.9 a second collar movably emplaced around the tubular body and movable longitudinally thereon, the second ends of the spring bows connected to the second collar, so that upon movement of the second collar away from the first collar, the spring bows move inwardly toward the tubular body, a second groove in the exterior surface of the tubular body, the second groove defined by a top side wall and a bottom side wall, and a middle wall therebetween, the second collar movably disposed in the second groove, the second groove top side wall and bottom side wall limiting second collar movement, and at least one spring bow recess in the exterior surface of the tubular body for receiving at least a portion of at least one spring bow. See 11.8 (section VI, D, a, above). See 11.9 (section VI, D, a, above). See (section VI, D, a, above). See (section VI, D, a, above). See (section VI, D, a, above). See (section VI, D, a, above). See Ribble Declaration, Exhibit I, at 49. See also Hebert Deposition, Exhibit H, pages (Q. And all the tubular elements, would you say, that go into that casing string whether, it s a tool or just a piece of pipe or a sub or whatever, they all have connections on the top and bottom? A. Yeah. I can t think of any time when they wouldn t. Independent Claim 55 HARTMAN 55.1 See 11.1 (section VI, D, a, above). 39

43 A centralizer apparatus comprising: 55.2 a tubular body with an exterior surface; See 11.2 (section VI, D, a, above) a first collar movably emplaced around the tubular body and movable longitudinally thereon; See 11.3 (section VI, D, a, above) a first groove in the exterior surface of the tubular body, the first groove defined by a top side wall, a bottom side wall, and a middle wall therebetween, 55.5 the first collar movably disposed in the first groove; 55.6 the first groove top side wall and bottom side wall limiting first collar movement; 55.7 a second groove in the exterior surface of the tubular body, the second groove having a top and a bottom side wall; 55.8 the second collar disposed in the second groove; 55.9 a plurality of spring bows, each spring bow having a first end spaced apart from a second end, each spring bow biased outwardly from the tubular body, the first ends connected to the first collar and the second ends of the spring bows connected to the second collar, so that upon movement of the first collar in a direction away from the second ends of the spring bows while prohibiting movement of the second ends, the first ends move with the first collar and the spring bows move inwardly toward the tubular body so as to be pullable into an adjoining opening as the tubular body moves into the opening; one or more spring bow recesses in the exterior See 11.5 (section VI, D, a, above). See 11.6 (section VI, D, a, above). See 11.7 (section VI, D, a, above). See (section VI, D, a, above). See (section VI, D, a, above). See 11.4, 11.8, 11.10, and 55.9 (section VI, D, a, above). See (section VI, D, a, above) and (section VI, D, b, above). 40

44 surface of the tubular body capable of receiving at least a portion of one or more spring bows wherein the first and second grooves, the first and second collars, and the plurality of spring bows are operatively configured such that, when the spring bows are fully collapsed within the recess and one of the first and second abuts its respective top wall, the other one of the first and second collars is spaced apart from its respective bottom side wall. See 11.4, 11.8, 11.10, and (section VI, D, a, above). c) GROUND 3: Claims 11 & 55 are Obvious Over HARTMAN in View of BRADDICK Brad Hebert, a named inventor on the 333 Patent, acknowledged that there was nothing in claims 11 and 55 that were not shown in either HARTMAN or BRADDICK. See, e.g., Hebert Deposition, Exhibit H, page 151 (Q. Can you find anything in Claim 11 that s not in [BRADDICK] and also not in [HARTMAN]? A. If your question is directed toward the combination of those two, then the answer is no. ); see also Hebert Deposition, Exhibit H, page 152 (Q. Can you find anything in Claim 55 that is not in [BRADDICK] and also not in [HARTMAN]? A. The same when you speak of the combination of the two, the answer is, again, no. ). Mr. Hebert agreed that BRADDICK is a tool for use in oil wells. See, e.g. Hebert Deposition, Exhibit H, pages (Q. So would you agree that [BRADDICK] is a tool for use in oil wells? A. Yes. ). Therefore, BRADDICK is analogous art. 2 See Ribble Declaration, Exhibit I, at See also Vilyus Deposition, Exhibit J, page Mr. Hebert testified that he wouldn t look to something like BRADDICK to improve a centralizer. See, e.g. Hebert Deposition, Exhibit H, pages (during cross examination by Mr. Hebert s and Weatherford s counsel). However, Mr. Hebert acknowledged that, in developing the subject matter of the 333 Patent, he didn t look at anything beyond his own 41

45 HARTMAN himself provides the reasoning to combine his teachings with that of BRADDICK. Specifically, HARTMAN s invention is especially useful where the clearance is very restricted between the pipe to be centered and the hole or other pipe or casing in which it is located, or through which it passes. HARTMAN, Exhibit E, page 2, left column, lines Thus, one would look for ways to permit portions of the bow spring assembly to collapse within the body, in order to pass through tight clearances. In this regard, BRADDICK teaches that his Longitudinally extending slots 30 in housing 15 receive the free end 31 of each bow spring means 28 to accommodate collapsing and expansion of the bow spring means as the present invention moves through a well string. BRADDICK, Exhibit G, col. 2: See also Ribble Declaration, Exhibit I, at The following claim charts demonstrate, on a limitation-by-limitation basis, how claims 11 & 55 are obvious over HARTMAN in view of BRADDICK under 35 U.S.C Independent Claim A centralizer apparatus comprising HARTMAN in View of BRADDICK See 11.1 (section VI, D, a, above). limited knowledge, and generally wouldn t look at anything because that wasn t [his] responsibility. See, e.g. Hebert Deposition, Exhibit H, pages

46 BRADDICK, Exhibit G, Fig. 2. Braddick s spring bows 28 would tend to center his device. In fact, Mr. Hebert agreed that Braddick s spring bows 28 would tend to center his device. See, e.g. Hebert Deposition, Exhibit H, page 118 (Q. wouldn t it tend to keep that device sort of in the center? A. Yes.) See also Ribble Declaration, Exhibit I, at a hollow tubular body with an exterior surface and a longitudinal bore therethrough, See 11.2 (section VI, D, a, above). 43

47 BRADDICK, Exhibit G, Fig a first collar movably emplaced around the tubular body and movable longitudinally thereon, See 11.3 (section VI, D, a, above) a plurality of spring bows, each spring bow having a first end spaced apart from a second end, each spring bow biased outwardly from the tubular body, See 11.4 (section VI, D, a, above). BRADDICK, Exhibit G, Fig

48 11.5 a first groove in the exterior surface of the tubular body, the groove defined by a top side wall and a bottom side wall, and a middle wall therebetween, 11.6 the first collar movably disposed in the first groove, 11.7 the first groove top side wall and bottom side wall limiting first collar movement, 11.8 the first ends of the spring bows connected to the first collar, so that upon movement of the first collar in a direction away from the second ends of the spring bows the spring bows move inwardly toward the tubular body, 11.9 a second collar movably emplaced around the tubular body and movable longitudinally thereon, the second ends of the spring bows connected to the second collar, so that upon movement of the second collar away from the first collar, the spring bows move inwardly toward the tubular body, a second groove in the exterior surface of the tubular body, the second groove defined by a top side wall and a bottom side wall, and a middle wall therebetween, See 11.5 (section VI, D, a, above). A See 11.6 (section VI, D, a, above). See 11.7 (section VI, D, a, above). See 11.8 (section VI, D, a, above). See 11.9 (section VI, D, a, above). See (section VI, D, a, above). See (section VI, D, a, above). 45

49 11.12 the second collar movably disposed in the second groove, the second groove top side wall and bottom side wall limiting second collar movement, and at least one spring bow recess in the exterior surface of the tubular body for receiving at least a portion of at least one spring bow. See (section VI, D, a, above). See (section VI, D, a, above). BRADDICK, Exhibit G, Fig. 2 (with the recess highlighted). Longitudinally extending slots 30 in housing 15 receive the free end 31 of each of the bow spring means 28 to accommodate collapsing and expansion of the bow spring means as the present invention moves through a well string. BRADDICK, Exhibit G, Col. 2: See also Hebert Deposition, Exhibit H, pages (Q. BRADDICK has recesses for bow springs; is that correct? A. That would be correct. ). See also Ribble Declaration, Exhibit I, at and