UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. AMERIFORGE GROUP INC. Petitioner

Transcription

1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Paper No. 1 AMERIFORGE GROUP INC. Petitioner v. WORLDWIDE OILFIELD MACHINE, INC. Patent Owner Inter Partes Review No. IPR PETITION FOR INTER PARTES REVIEW UNDER 35 U.S.C. 312

2 Petitioner s Exhibit List Exhibit Description 1001 U.S. Patent No. 6,684,897 (the 897 Patent ) 1002 U.S. Patent No. 6,182,678 ( Ma ) WO 95/23937 ( Young ) 1004 U.S. Patent No. 5,046,376 ( Baker ) 1005 U.S. Patent No. 4,777,800 ( Hay ) 1006 U.S. Patent No. 6,352,239 ( McIntosh ) 1007 U.S. Patent No. 4,744,386 ( Frazer ) 1008 U.S. Patent No. 4,489,918 ( Kalsi ) 1009 U.S. Patent No. 4,436,279 ( Bonds ) 1010 U.S. Patent No. 4,129,283 ( Taylor ) 1011 Excerpts of Prosecution History of the 897 Patent 1012 Amended Joint Claim Construction and Prehearing Statement, Worldwide Oilfield Machine, Inc. v. Ameriforge Group, Inc. d/b/a AFGlobal Corp., Civil Action No. 4:13-cv-3123 (S.D. Tex.), Dkt. 67 (filed Feb. 6, 2015) 1013 Webster s Third New International Dictionary (1986) 1014 U.S. Patent No. 6,601,650 ( the 650 Patent ) 1015 Plaintiff WOM s Disclosure of Asserted Claims and Preliminary Infringement Contentions, Worldwide Oilfield Machine, Inc. v. Ameriforge Group, Inc. d/b/a AFGlobal Corp., Civil Action No. 4:13- cv-3123 (S.D. Tex.) (served April 17, 2014) 1016 Declaration of Glen Stevick ( Stevick ) 1017 U.S. Patent No. 4,650,151 ( McIntyre ) 1018 Bettis Service Manual No. I-0021 (November 23, 1998) ( Bettis Manual ) 1019 Valve & Actuator Technology, by W. Ulanski, McGraw-Hill, 1991 ( Ulanski ) -i-

3 I. INTRODUCTION Pursuant to 35 U.S.C. 312 and 37 C.F.R et seq., Ameriforge Group, Inc. ( Petitioner ) requests inter partes review of claims 7-9 and (the Challenged Claims ) of Patent No. 6,684,897 ( the 897 Patent Ex. 1001) that issued December 3, The Board is authorized to deduct all required fees associated with this petition from Norton Rose Fulbright US LLP Deposit Account No / II. MANDATORY NOTICES A. Real Party in Interest (37 C.F.R. 42.8(b)(1)) Ameriforge Group, Inc. ( Petitioner ) is the real party-in-interest. B. Related Matters (37 C.F.R. 42.8(b)(2)) The following matter may effect, or be effected by, a decision in this proceeding: Worldwide Oilfield Machine, Inc. v. Ameriforge Group, Inc. d/b/a AFGlobal Corp., Civil Action No. 4:13-cv-3123 (S.D. Tex.) (the Litigation ). While not directly affected by a decision in this proceeding, IPR involves another patent, U.S. Patent No. 6,601,650, also asserted in the Litigation. C. Lead and Back-Up Counsel (37 C.F.R. 42.8(b)(3)) Lead counsel: Eagle H. Robinson (Reg. No. 61,361) Back-up counsel: Mark T. Garrett (Reg. No. 44,699) D. Service Information (37 C.F.R. 42.8(b)(4)) eagle.robinson@nortonrosefulbright.com -1-

4 Post: Eagle H. Robinson, Norton Rose Fulbright US LLP, 98 San Jacinto Boulevard, Suite 1100, Austin, TX Phone: Fax: Petitioner consents to electronic service. III. GROUNDS FOR STANDING Pursuant to 37 C.F.R (a), Petitioner certifies that the 897 Patent is available for inter partes review, and that Petitioner is not barred or estopped from requesting an inter partes review challenging the claims of the 897 Patent on the grounds identified in this Petition. The 897 Patent has not been subject to a previous estoppel-based proceeding of the AIA, and Petitioner was served with the First Amended Complaint, in which infringement of the 897 Patent was first asserted, in the above-referenced Litigation within the last 12 months. IV. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH CLAIM CHALLENGED A. Claims for which Review is Requested (37 C.F.R (b)(1)) Petitioner requests the review and cancellation as invalid of claims 7-9 and (the Challenged Claims ) of the 897 Patent. Of these, claims 7-9 and 11 address a method for assembly of a valve actuator for a valve (the Method Claims ), and claims address a valve actuator for a valve (the Valve Claims ). Patent Owner s asserts in the Litigation that the Method Claims and -2-

5 Valve Claims cover use of the same structures. As such, certain proposed grounds for the Valve Claims build upon those for the Method Claims. B. Statutory Grounds of Challenge (37 C.F.R (b)(2)) For the reasons presented below, Petitioner seeks the following relief: Ground 1: Invalidation of claims 7-9 under 35 U.S.C. 102(a) and 102(e) based on Ma (U.S. Patent No. 6,182,678 Ex. 1002). Ma was filed November 18, 1999, and issued February 6, 2001, rendering it prior art to the 897 Patent (which claims priority to March 8, 2001) under 102(a) as of February 6, 2001, and under 102(e) as of November 8, Ground 2: Invalidation of claims 7-9 and 11 under 103(a) based on Ma (Ex. 1002) and Young (WO 95/23937 Ex. 1003). Young published September 8, 1995, rendering it prior art under 102(b). Ground 3: Invalidation of claims 8, 11, 12 and under 103(a) based on Ma (Ex. 1002), Baker (U.S. Patent No. 5,046,376 Ex. 1004), and Young (Ex. 1003). Baker issued September 10, 1991, rendering it prior art under 102(b). Ground 4: Invalidation of claim 13 under 103(a) based on Ma (Ex. 1002), Baker (Ex. 1004), Hay (U.S. Patent No. 4,777,800 Ex. 1005), and Young (Ex. 1003). Hay issued October 18, 1988, rendering it prior art under 102(b). Ground 5: Invalidation of claims 7-9 and 11 under 102(b) based on Young (Ex. 1003). -3-

6 Ground 6: Invalidation of claims 12 and under 102(e) based on McIntosh (U.S. Patent No. 6,352,239 Ex. 1006). McIntosh was filed March 21, 2000, and issued March 5, 2002, rendering it prior art under 102(e). Ground 7: Invalidation of claim 13 under 103(a) based on McIntosh (Ex. 1006) and Hay (Ex. 1005). Ground 8: Invalidation of claims 12 and under 103(a) based on Frazer (U.S. Patent No. 4,744,386 Ex. 1007) and Kalsi (U.S. Patent No. 4,489,918 Ex. 1008). Frazer issued May 17, 1988, rendering it prior art under 102(b). Kalsi issued December 25, 1984, rendering it prior art under 102(b). Ground 9: Invalidation of claims 12 and under 103(a) based on Frazer (Ex. 1007), Kalsi (Ex. 1008), and Baker (Ex. 1004). Ground 10: Invalidation of claim 13 under 103(a) based on Frazer (Ex. 1007), Kalsi (Ex. 1008), and Hay (Ex. 1005). As explained in detail below, these grounds are not cumulative of each other and all are required to fully explain the invalidity of the Challenged Claims given the variations in claim construction that may be argued by Patent Owner. V. CLAIM CONSTRUCTION AND LEVEL OF ORDINARY SKILL A. Background 1. The 897 Patent The 897 Patent is entitled Valve actuator and method. Ex

7 FIG. 2 depicts the assembled actuator, which includes an actuator housing (22), a cylinder housing (38) defining a piston chamber (40) in which a hydraulic piston (34) is slidably disposed, and a manual override assembly (80) that can move the piston. Id. at FIGS. 2-3, 6:37-41, 7:10-15, 8: As is illustrated in -5-

8 FIG. 2, the 897 Patent emphasizes that it includes all moving components mounted in a compact, concentric configuration. Id. at Abstract. The 897 Patent emphasizes two particular features of its actuator that are reflected in the Challenged Claims. FIG. 5 depicts a spring cartridge assembly (100), in which the spring (32) is pre-compressed between a spring pusher (62) and a bottom mounting plate (106), such that the spring cartridge assembly (100) can be replaced as a unit without the need for compressing spring 32 in the field. Id. at 9: FIG. 4 depicts in detail a manual override assembly (80) that is secured to hydraulic cylinder housing 36 [of the actuator 10]. Id. at 8:52-9:4. 2. Prosecution History Of the Challenged Claims, independent claim 7 (then claim 60) and independent claim 12 (then claim 18) were rejected under 102(a) as anticipated by Bonds (U.S. Patent No. 4,436,279 Ex. 1009). Claim 7 was also rejected under 103(a) as obvious over Taylor (U.S. Patent No. 4,129,283 Ex. 1010). Claim 7 recites a method for assembly of a valve actuator for a valve, comprising securing [a] first lip member and [a] second lip member together to thereby compress [a] return spring. Patent Owner amended claim 7 (then 60) to recite installing said first lip member, said second lip member, and said return spring simultaneously into said hydraulic housing as a unit, and argued that: Regarding claims Applicant respectfully submits that it would be impossible for Bonds to be assembled in the manner stated in -6-

9 amended claim 60. Applicant provides a package (see Applicant s FIG. 5) with first lip, second lip, return spring. wherein the spring may be pre-tensioned as per the claim language, and simultaneously inserted into the actuator housing as a unit. In Bonds FIG. 1, it is clear that the spring engages the bottom of the actuator housing on one end, and the piston on the other end. Therefore, piston must be screwed onto the actuator shaft only after the spring is inserted. Accordingly, it is impossible to pretension the Bonds spring prior to putting it into the actuator housing. Ex at 25. Patent Owner further argued that Taylor does not show a return spring which can be pretensioned, and installed or removed as a unit. Id. at 26. Claim 12 recites a valve actuator for a valve with several components, including a hydraulic actuator housing, a cylinder member, a hydraulic piston, seals, a manual override, and a return spring. Patent Owner amended claim 12 (then 18) to recite: a return spring chamber within said hydraulic actuator housing, said return spring chamber being fluidly isolated from said piston chamber; and a return spring within said return spring chamber such that said return spring is isolated from said hydraulic fluid hydraulic actuator housing in surrounding relationship to said cylinder member, said return spring being isolated from said hydraulic fluid by said plurality of seals. Ex at

10 B. Claim Construction (37 C.F.R (b)(3)) In an inter partes review, a claim in an unexpired patent is given the broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R (b). 1 Petitioner therefore requests that the claim terms be given their broadest reasonable interpretation (BRI), as understood by one of ordinary skill in the art and consistent with the disclosure. See Office Patent Trial Practice Guide, 77 Fed. Reg , (Aug. 14, 2012). The parties proposed constructions in the Litigation (see Ex. 1012), several of which offered by Patent Owner are indicative of the narrowest possible BRI of certain terms. Although a different standard applies in litigation, Patent Owner s proposals are relevant to the BRI. During AIA debate, Senator Kyl stated: This [district court] information should help the Office understand and construe the key claims of a patent. It should also allow the Office to identify inconsistent statements made about claim scope for example, cases where a patent owner successfully advocated a claim scope in district court that is broader than the broadest reasonable construction that he now urges in an inter partes review. 1 Other forums, such as district courts, apply different standards of proof and claim interpretation. Any interpretation, construction, or application of the Challenged Claims in this Petition (whether implicit or explicit) are specific to the BRI standard. Petitioner reserves the right to revise or depart from its interpretation, construction, or application of the Challenged Claims under any other standard. -8-

11 157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011) 2 ; see also Sterner Lighting, Inc. v. Allied Elec. Supply, Inc., 431 F.2d 539, 544 (5th Cir. 1970) (citation omitted) ( A patent may not, like a nose of wax, be twisted one way to avoid anticipation and another to find infringement. ). 1. selectively adjusting tension on said return spring... Claim 7 recites selectively adjusting tension on said return spring by adjusting a maximum length between said first lip and second lip. The 897 Patent does not explicitly define this phrase. In the Litigation, Patent Owner agreed that this phrase should be construed as choosing one of several available maximum lengths between and at which the first lip member and the second lip member remain secured together to adjust the compression on the return spring. Ex at 5. This construction is consistent with the disclosure of the 897 Patent (see Ex at 9:30-52), and the BRI should be no narrower. 2. installing... as a unit Claim 7 recites installing said first lip member, said second lip member, and said return spring simultaneously into said hydraulic housing as a unit. The 897 Patent does not explicitly define this phrase. In the Litigation, Patent Owner agreed that this phrase should be construed as installing the first lip member, 2 As considered in relation to the BRI standard in SAP America, Inc. v. Versata Dev. Group, Inc., CBM , Paper 70 at 16, n. 13 (Jun. 11, 2013). -9-

12 second lip member, and pre-compressed return spring together and at the same time into the hydraulic actuator housing such that the return spring is not further compressed during the installing. Ex at 5. This construction is consistent with the disclosure of the 897 Patent (see Ex at 9:32-34), and the BRI should be no narrower. 3. hydraulic actuator housing attachable to said valve Each of independent claims 7 and 12 recites a hydraulic actuator housing attachable to said valve. The 897 Patent depicts a single embodiment of an actuator housing. Ex at, e.g., FIGS. 1-2 (actuator housing 22) and 6: In the Litigation, Patent Owner argued that Petitioner s proposed construction of a hydraulic actuator housing able to be attached directly to a valve was too narrow, and argued that the plain and ordinary meaning should apply without construction, but offered an alternative construction of a hydraulic actuator housing able to be attached to a valve. Ex at 8, 11 (emphasis added). While Patent Owner s proposed construction is broader than Petitioner believes appropriate under the narrower litigation standard, it suggests that the BRI need not require a direct connection to the valve. To avoid any doubt here, the plain and ordinary meaning of housing is something that covers or protects or a case or enclosure. See Ex Importantly, actuator housing 22 depicted in the 897 Patent does not enclose or cover all components of the actuator. Ex at FIG. 2 (not enclosing -10-

13 parts of cylinder housing 36 and override assembly 80). As such, hydraulic actuator housing attachable to said valve should be construed for purposes of this proceeding as a case or enclosure for at least part of a hydraulic actuator. 4. cylinder member Independent claim 12 recites a cylinder member defining therein a piston chamber. Claim 12 further recites that hydraulic piston slidably mounted within said hydraulic housing and being mounted for movement within said piston chamber, indicating that the cylinder member is at least partially disposed within the hydraulic housing. This is consistent with the sole embodiment in the 897 Patent, in which a first end of actuator housing 22 is attached directly to valve bonnet 24, and cylinder housing 36 is inserted into an opposite end of actuator housing 22. See Ex at FIG. 2 and 6:37-41, 7: In the Litigation, Patent Owner argued that Petitioner s proposed construction of a cylinder housing distinct from and supported by the hydraulic actuator housing was too narrow, and argued that no construction was necessary, but offered an alternative construction of a cylinder housing. Ex at 8, 11 (emphasis added). Nevertheless, the only embodiment disclosed in the 897 Patent includes a cylinder housing (36) that is distinct from and supported by the actuator housing (22). Ex at FIG. 2, 7:15-16 ( Upper flange portion 38 is securely supported by actuator housing 12. ). That the cylinder housing is supported by the -11-

14 actuator housing is also supported by the plain language of claim 12, which states that the actuator housing is attachable to said valve but does not recite a similar limitation for the cylinder member. Id., Cl. 12. As such, hydraulic actuator housing attachable to said valve should be construed for purposes of this proceeding as a cylinder housing. Patent Owner s proposed construction in the Litigation, however, is broader and suggests that Patent Owner will advocate a BRI for this phrase that would not exclude a cylinder member that is part of or unitary with the actuator housing, or a cylinder housing that supports the actuator housing. Petitioner therefore includes Grounds 1 and 6-10 to address this possibility. 5. manual override assembly for manually operating... Independent claim 12 recites a manual override assembly for manually operating said hydraulic piston as an element of claim 12 s valve actuator for a valve. In the sole depicted embodiment of the 897 Patent, the manual override assembly (80) is in the actuator itself. Ex at FIG. 2, 8:61-65 ( In a presently preferred embodiment of the present invention, the overall length of actuator 10 even including manual override position indicator 88 [of manual override assembly 80] is kept considerably smaller than the overall length of comparable operating capacity prior art actuators. ). The 897 Patent also teaches that its subsea actuator... includes all moving components mounted in a compact, concentric -12-

15 configuration. Id. at Abstract. And the inventor of the 897 Patent stated in a different, but nearly contemporaneous application that: My prior application [the 897 Patent 3 ] shows mounting an exemplary compact manual override operator onto an actuator. 650 Patent (U.S. Patent No. 6,601,650 Ex. 1014) at 4:53-55 (emphasis added). The inventor explicitly relied on this feature to distinguish the 650 Patent: In [the 650 Patent], my invention provides a manual override operator that is not directly connected to the actuator but is instead positioned on an opposite side of the gate valve... [so that] space is much more efficiently utilized [versus the 897 Patent]. Id. at 4:55-61 (emphasis added). Nevertheless, Patent Owner asserts that the manual override assembly of claim 12 s actuator for a valve can be met by a balance stem with an indicator on an opposite side of the gate valve, as indicated by the red box (in original): 3 An [] embodiment of a fail-safe gate valve actuator is disclosed in US. patent application Ser. No. 09/802,209, filed Mar. 8, 2001, referenced hereinbefore, and incorporated herein by reference. Ex at 3: The 897 Patent is a divisional of App. No. 09/802,209 and shares an identical specification. -13-

16 Ex at ( WOM contends that this claim element is literally infringed. ). The primary issue for construction of manual override assembly is whether, in the context of claim 12 and the specification, it can be reasonably interpreted to cover a manual override located on an opposite side of the gate valve. Petitioner believes not. As such, the BRI of a manual override assembly for manually operating said hydraulic piston is mechanical components in the actuator that are operable by hand to move the hydraulic piston. See Ex at 8:56-59 ( ROV adaptor 82 can be engaged by an ROV for rotation thereof to activate manual override assembly 80. Alternatively, arms 84 or other suitable means can be used by a diver for manual operation. (emphasis added)). However, in light of the position taken by Patent Owner in the Litigation, Petitioner offers Grounds 8-9 to address the use of an actuator and a balance stem, or an actuator and manual override, on opposite sides of a gate valve. C. Level of Ordinary Skill in the Art A person of ordinary skill in the art at the time the 897 Patent was originally filed (March 8, 2001) is a person who earned a bachelor of science degree in mechanical engineering and had two to three years of engineering experience related to hydraulically-operated valves, such as shearing gate valves and/or shear ram-type blowout preventers, including actuators for such valves and blowout preventers, in the oil and gas industry. Ex at

17 A person of ordinary skill in the art at the relevant time would have been generally familiar with the various types of valves, such as gate valves and blowout preventers, used in connection with oil and gas wells. Id. at 23. Such a person also would have been familiar various configurations of hydraulic actuators used to control such valves, and with various configurations of components included in or used with such hydraulic actuators, such as housings, manual overrides, and return springs and pre-compressed spring cartridges. Id. This level of ordinary skill is also evidenced by prior art and the 897 Patent itself. See id. at 24; Chore-Time Equip., Inc. v. Cumberland Corp., 713 F.2d 774, 779 (Fed. Cir. 1983); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Here, the 897 Patent and prior art demonstrate that a person of ordinary skill would have known of various hydraulic actuators for valves such as gate valves, and would have been able to implement various configurations of such actuators in any of many known subsea or surface applications. Ex at 24. VI. REASONS FOR THE RELIEF REQUESTED UNDER 37 C.F.R (a)(2) AND (b)(4) A. Grounds 1-4: Ma Alone Or With Other Art Renders the Challenged Claims Invalid Under 102(a), 102(e), and 103(a) Ma discloses an [a]pparatus for safely installing and removing spring loaded failsafe valve actuators. Ex at Abstract, 1:7-9 ( failsafe mechanism for rapidly returning a switch to an off position in the event the switch actuator -15-

18 fails when the switch is in an open position ). Ma s depicted embodiment has an electromechanical switch or actuator, but Ma makes clear, however, [that]... a hydraulic cylinder... may also be employed. Id. at 3: Ma has an open frame (20) with a bottom end wall 21 and spaced apart top end wall 22 that are held apart in a spaced relationship by a number of columns 25. Id. at 2: The bottom wall of the frame has a central hole 30 [] which is arranged to fit over raised cylinder 31 on the top flange 32 of the valve body. Id. at 2: As best illustrated in FIG. 2 [inset below] a coil compression spring 45 is passed downwardly through a hole provided in the top wall [22] of the frame, and [t]he lower or proximal end of the spring is placed in seating contact with the spring seat. Id. at 3:9-12. A cover plate is placed over the top or distal end of the spring... [and] is forced downwardly into contact with the top wall of the frame by driving the bolts 51 which compresses the spring and forces the spring seat down closing the valve. Id. at 3: After the spring (45) is compressed between the spring seat (35) and the cover plate (50), [a] linear actuator is also mounted in the frame with a distal end of the actuator s extendible rod 62 coupled to the spring seat. Id. at 3: In operation of this depicted embodiment, the actuator (60) may pull the shaft in an upward direction to open the valve, thereby further compressing the spring (35) -16-

19 such that, if power or hydraulic pressure is lost, the spring (35) will push the shaft in a downward direction to close the valve. Id. at 3:

20 1. Ground 1 Anticipation by Ma Claim 7: A method for assembly of a valve actuator for a valve,... comprising Ma discloses assembling a valve actuator. Ex at FIGS. 2-4, 3:1-40. [7.1] providing a hydraulic actuator housing attachable to said valve Ma s FIG. 4 (annotated below) shows an actuator housing into which the frame (20) and compressed spring (45) are inserted. Id. at HYDRAULIC ACTUATOR HOUSING HYDRAULIC ACTUATOR HOUSING -18-

21 [7.2] providing a return spring for placement within said hydraulic actuator housing Ma s device includes a return spring (45) for placement within the hydraulic actuator housing. Ex at FIG. 4. [7.3] engaging one end of said return spring with a first lip member The lower end of Ma s return spring (45) is engaged with a first lip member, the spring seat (35). Id. at FIG. 2, 3: [7.4] engaging an opposite end of said return spring with a second lip member The opposite, upper end of Ma s return spring (45) is engaged with a second lip member, the cover plate (50). 4 Id. at FIG. 2, 3: [7.5] securing said first lip member and said second lip member together to thereby compress said return spring The spring seat (35) and the cover plate (50) are secured together by the bolts (51), the top end wall (22), the columns (25), and the bearing block (37). See id. at FIG. 2, 3:1-2, 3:9-15. The cover plate [50] at assembly is forced downwardly into contact with the top wall [22] of the frame by driving the bolts 51 which compresses the spring.... Id. at 3: [7.6] selectively adjusting tension on said return spring by adjusting a maximum length between said first lip and second lip 4 Alternatively, the combination of Ma s cover plate 50 and top end wall 22 can together correspond to the first lip member. -19-

22 The tension in Ma s return spring (45) is selectively adjusted by rotating the bolts (51) to move cover plate (50) closer to top end wall (22), reducing the maximum length between the cover plate and the spring seat. Id. at 3: [7.7] installing said first lip member, said second lip member, and said return spring simultaneously into said hydraulic housing as a unit Ma s spring seat (35), spring (45), top end wall (22), and cover plate (50) are installed simultaneously into the housing as a unit. Compare id. at FIGS. 2-3 (not including hydraulic actuator housing during compression of spring (45)) with id. at FIG. 4 [inset above with annotation] (showing hydraulic actuator housing attached to cover plate (50) and to lower end wall (21)); see also Ex at Claim 8: A method of claim 7, further comprising: installing a hydraulic piston in said actuator housing without decompressing said return spring As illustrated in Ma s FIGS. 3-4, an actuator (60) is installed into the actuator housing, without decompressing the return spring (45), as the frame and part of the actuator is inserted into the actuator housing. See id. at FIGS. 3-4, 3: Ma s actuator (60) may be a hydraulic cylinder, which necessarily includes a piston linearly movable within the cylinder that is at least partially disposed within the actuator housing. Id. at 3:35-40; see also Ex at Claim 9: A method of claim 7, further comprising: providing a plurality of seals to thereby prevent contact of hydraulic fluid with said return spring -20-

23 Ma s hydraulic cylinder actuator (60) necessarily includes a plurality of seals to prevent leakage of hydraulic fluid and, given the modular configuration of Ma s assembly (which may be used with any of various types of actuators), the seals in that hydraulic cylinder necessarily prevent contact of the hydraulic fluid with the return spring (45). Ex at 3:35-40; Ex at Ground 2 Obviousness over Ma and Young Young discloses a valve actuator apparatus with an operator assembly and a bonnet assembly. See Ex at Abstract, FIGS. 4 and 7; see also Ex at 40. Young s bonnet assembly 90 includes a pre-tensioned return spring 58 and is compatible with a hydraulic actuator 200. Ex at FIG. 7, 9:1-11 ( FIG. 7 discloses a hydraulic valve actuator 200 embodiment... Hydraulic pressure moves piston 212 axially downwardly.... ). As shown in Young s FIG. 7, the hydraulic actuator (200) includes a housing that supports and encloses the hydraulic piston (212) and encloses the return spring (58). Id. at FIG. 7. To the extent Patent Owner may argue that Ma does not include any one or more of: (1) an actuator housing (claim element [7.1]); (2) an actuator housing into which the first lip member, second lip member, and return spring are simultaneously installed as a unit (claim element [7.7]); (3) installing a hydraulic piston in the actuator housing (claim 8); or (4) connecting a piston indicator to the first lip (claim 11); it would have been obvious to a person of ordinary skill in the -21-

24 art at the relevant time to modify Ma in view of Young to include each of the foregoing elements. 5 For example, it would have been obvious to such a person to use a hydraulic actuator assembly (200) of the type disclosed in Young for Ma s actuator (60) (Ex at 41), suitable independent motivations for which are discussed below. Similarly, it would have also been obvious to such a person to modify the structure identified above as an actuator housing in Ma s FIG. 4 to be directly connected to Young s hydraulic cylinder, and to be removably connectable to Ma s lower end wall (21), as in Young (id.), suitable independent motivations for which are discussed below. This type of configuration could be achieved for Ma by either (a) enlarging Ma s lower end wall (21) to be bolted to the housing as depicted in Young, or (b) using bolts that extend radially inward into the perimeter of Ma s lower end wall (21). Id. While Young s piston (212) is arranged to push downward rather than pulling upward as in Ma, it would have been a routine matter for such a person to adapt the piston (212) to be connected to Ma s valve stem in a manner similar to that described by Ma for its actuator (60). Id. at 42. Suitable independent motivations include: Improved Structural Support for Actuator: A person of ordinary skill in the art at the relevant time would have been motivated to use an actuator assembly 5 For clarity, all of the remarks herein related to obviousness (e.g., motivations) are from the perspective of a person of ordinary skill in the art as of March 8,

25 (200) of the type disclosed in Young whether directly from Young or by modifying Ma s housing to connect to actuator (60) to increase structural support for the hydraulic actuator. Ex at 43. Young, for example, teaches that its base plate ring 226 [not numbered in Young s FIG. 7] is bolted to [bottom of] housing 228 and provides support for lower spring retainer 230 as described with respect to diaphragm-type actuator 10. Ex at 9:1-11, 7:30-8:2. Such a person would have recognized that the rigid connection between the housing and the hydraulic cylinder would further improve alignment and rigidity of, and reduce wear due to movement on, the hydraulic cylinder during use. Ex at 43. Improved Modularity: A person of ordinary skill in the art at the relevant time would have been motivated to use an actuator assembly (200) of the type disclosed in Young to facilitate the use of different types of actuators with Ma s frame. Ex at 44. Young, for example, teaches that its bonnet assembly (90, which includes return spring 58) can be received in and connected to either of a pneumatic operator 114 or a hydraulic operator 200. See, e.g., Ex at FIGS. 4 and 7, 7:30-8:2, and 9:1-11. Young also teaches that different types of operators can have different housing shapes. Id. A person of ordinary skill would have recognized that a rigid connection between the actuator housing and the hydraulic actuator, such that the housing would be removed with the actuator as in Young, -23-

26 would facilitate the use of different types of actuators, e.g., with different housing shapes, with Ma s frame. Ex at 44. Simplified Assembly/Disassembly: A person of ordinary skill in the art at the relevant time would have been motivated to use an actuator assembly (200) of the type disclosed in Young to simplify assembly and disassembly for servicing the actuator assembly and/or return spring. Id. at 45. Young, for example, teaches that its bonnet assembly (90, which includes return spring 58) can be received in and connected to either of a pneumatic operator 114 or a hydraulic operator 200. See, e.g., Ex at FIGS. 4 and 7, 7:30-8:2, and 9:1-11. Young also teaches that the housings for its operators are adapted to also receive the bonnet assembly (including the spring) when the operator (e.g., 200) is attached to the bonnet assembly 90, and that this configuration facilitates removal of the operator with less or no adjustments to the bonnet assembly. Id. at 7:30-8:2 ( FIG. 4 discloses the relative ease with which various operators 114 may be changed out without altering the up-stop and down-stop drift as discussed hereinbefore. ). Young further teaches that this configuration also allows the operator to be changed even with the valve under pressure. Id. at 7:32 ( [O]perator may be exchanged with the valve under pressure. ). A person of ordinary skill would have recognized that a rigid connection between the actuator housing and the hydraulic actuator, such that -24-

27 the housing is removed with the actuator as in Young, would facilitate simplified dis/assembly and improved serviceability of the actuator. Ex at 45. Improved Housing Rigidity: A person of ordinary skill in the art at the relevant time would have been motivated to use an actuator assembly (200) of the type disclosed in Young to improve structural rigidity of the housing. Id. at 46. For example, in subsea applications, ambient water pressure can impart forces inward on the housing, and the proportions of Young s housing (228) include a greater wall thickness and additional material at upper and lower ends of the sidewall, resulting in greater resistance to crushing due to water pressure. Id. Such a person would have recognized that providing a rigid connection between the actuator housing and the hydraulic actuator, such that the housing would be removed with the actuator as in Young, would result in increased resistance to crushing or inward deflection and thereby make the assembly suitable to a wider variety of possible applications. Id. Combining Prior Art Elements According to Known Methods to Yield Predictable Results: Young s hydraulic actuator and housing configuration was a known alternative to the separate hydraulic cylinder and housing of Ma for achieving a similar result in a fail-safe actuator: (1) providing linear actuation, and (2) enclosing the return spring. A person of ordinary skill in the art at the relevant time could have modified Ma s device to include Young s alternative hydraulic -25-

28 cylinder/housing configuration by at least March 8, Such a modification would have been a straightforward task for such a person at that time (id. at 47), and the combination would have yielded nothing more than predictable results to that person (e.g., a fail-safe actuator with the functions identified immediately above as possessed by both configurations) (id.), thus rendering the combination obvious. See KSR Int l Co. v Teleflex Inc., 550 U.S. 398, 416 (2007). In addition to the claim elements discussed above for Ma alone, Ma as modified with Young ( Ma-Young ) includes the following additional elements: Claim 7: A method for assembly a valve actuator for a valve, said method comprising [7.1] providing a hydraulic actuator housing attachable to said valve Ma-Young includes a hydraulic actuator housing similar to Young s housing (228). Ex at FIG. 7, 6:56-59; Ex at 41. [7.7] installing said first lip member, said second lip member, and said return spring simultaneously into said hydraulic housing as a unit Ma-Young includes a hydraulic actuator housing in which Ma s cover plate (50), top end wall (22), spring (45), and spring seat (35) would be installed simultaneously. See Ex at FIGS. 4, 7; Ex at 41. Claim 8: A method of claim 7, further comprising: installing a hydraulic piston in said actuator housing without decompressing said return spring -26-

29 Ma-Young is assembled by installing a hydraulic piston (212) in the actuator housing (228) without decompressing the return spring (45). See Ex at FIGS. 4 and 7, 6:50-53; Ex at Claim 11: A method of claim 7, further comprising: connecting a piston position indicator to said first lip Ma-Young includes Young s top shaft 202, which would be connected to Ma s spring seat (35) via the piston (212), is viewable outside the housing to indicate the position of piston (212). See Ex at FIG Ground 3 Obviousness over Ma, Baker, and Young Claim 12 and are obvious over Ma, Baker, and Young. Baker discloses a shaft locking or manual operating apparatus (32) or manual override for a valve. Ex at Abstract, FIG. 1 and 2, 1:14-15, 3:

30 Baker s manual operator (32) is rotatable by a handwheel. Id. at 3:48-62 ( A rotary means 44 is provided to translate rotary motion imparted by rotation of operating sleeve 46 which has an outer end 47 to receive a suitable manual rotating device such as a handwheel (not shown) and extends within housing 40. ). FIG. 2: Baker s FIG. 12 also depicts an example of a hydraulic actuator (212) with which the embodiments of its manual operators may be used (id. at 7:6-10): Baker describes actuator (212) as for a ram-type blowout preventer and shows it in combination with an alternate apparatus 210 that provide[s]... locking of blowout preventer ram in their closed positions but does not include the manual operating rotary means 44 of operator 32. Id. at 8: Baker s actuator (212) includes a first port (236) on a first side of piston (214), and a second port (238) on a second side of piston (214), permitting the piston (214) to be moved under force in either direction depending on the one of these two ports through which pressurized fluid is introduced into the cylinder. Ex at 8:20-22, 8: A -28-

31 person of ordinary skill in the art at the relevant time would have recognized that actuator (212) could also be used for a gate valve, and that manual operator (32) could be used with actuator (212). Ex at 52. In such uses, such a person would have modified the lower end of ball shaft screw guide (38) to include seals to retain hydraulic fluid in the piston chamber, and thereby prevent hydraulic fluid from entering the manual operator. Id. For example, Baker discloses a collar for this purpose: [c]ollar 222 is secured in the end of shaft guide 224 and seals around tail rod 220. Ex at 7:30-31, FIG. 12. Such a person would have recognized the desirability of retaining hydraulic fluid (and pressure) in the piston chamber, and incorporating collar 222 or other seals into the ball shaft screw guide (38) of operator (32) would have been a routine matter. Ex at 52. It would have been obvious to a person of ordinary skill in the art at the relevant time to modify Ma to include Baker s manual operator (32) and hydraulic actuator (212) for the hydraulic cylinder discussed by Ma. Suitable independent motivations include: Inclusion of Manual Override: A person of ordinary skill in the art at the relevant time would have been motivated to use Baker s manual operator (32) and actuator (212) for Ma s actuator (60) to add an override to control the valve in the event Ma s spring (45) could not fully close the valve after a loss of hydraulic pressure. Ex at 55. For example, corrosion, mechanical malfunction, -29-

32 particulates in the valve, and various other issues may arise that interfere with smooth operation of the valve. Id. Such a person would have understood that, in such instances, Ma s override spring may provide insufficient force to operate the valve and thus would have recognized the desirability of a manual override. Id. Bi-Directional Control: A person of ordinary skill in the art at the relevant time would have been motivated to use Baker s manual operator (32) and actuator (212) for Ma s actuator (60) to include a bi-directionally controllable hydraulic cylinder to assist Ma s spring (45) with closing the valve. Id. at 56. For example, Ma teaches that [d]eenergizing the actuator causes the spring to be released which, in turn, quickly closes the valve. Ex at 3: Such a person would have understood that there would be circumstances in which it would be desirable to close the valve more quickly than made possible with the spring alone, and that Baker s hydraulic actuator (212) could apply a force to supplement that from Ma s spring (45). For example, corrosion, mechanical malfunction, particulates in the valve, and various other issues may arise that interfere with smooth operation of the valve. Ex at 56. Such a person would have understood that such issues may increase the force needed to operate the valve and thus reduce the speed at which the spring could operate the valve. Id. Such a person thus would have recognized the desirability of bi-directional control. Id. -30-

33 Combining Prior Art Elements According to Known Methods to Yield Predictable Results: Baker s manual operator (32) and hydraulic actuator (212) were a known type of hydraulic actuator that could be used as the hydraulic cylinder contemplated by Ma that provided the same linear actuation as Ma s actuator (60), and that would provide the added benefit of manual operability. Ex at 57. A person of ordinary skill in the art at the relevant time could have modified the housings of Baker s manual operator (32) and actuator (212) for use with Ma by at least March 8, Id. Such a modification would have been a straightforward task for such a person at that time (id.), and the combination would have yielded nothing more than predictable results to that person (e.g., the linearactuation function of Ma with Baker s bi-directional control and manual operability) (id.), thus rendering the combination obvious. See KSR, 550 at 416. As addressed in Section VI.A.2 above, to the extent Patent Owner may argue that Ma does not disclose any one or more of: (1) an actuator housing (claim element [7.1]); (2) an actuator housing into which the first lip member, second lip member, and return spring are simultaneously installed as a unit (claim element [7.7]); (3) installing a hydraulic piston in the actuator housing (claim 8); or (4) connecting a piston indicator to the first lip (claim 11); it would have been obvious to a person of ordinary skill in the art at the relevant time to modify Ma and Baker in view of Young to include each of the foregoing elements. For -31-

34 example, it would have been obvious to such a person to modify the structure identified above as an actuator housing in Ma s FIG. 4 to be directly connected to Baker s hydraulic actuator (212) such as via an annular enlargement around Baker s sleeve (36) similar to that of Young, and to be removably connectable to Ma s lower end wall (21), as in Young. Ex at 58. This type of configuration could be achieved for Ma by either (a) enlarging Ma s lower end wall (21) to it to be bolted to the housing as depicted in Young, or (b) using bolts that extend radially inward into the perimeter of Ma s lower end wall (21). Id. Motivations for such combinations include those identified in Section VI.A.2 above. As with Ma in view of Young, such a modification to Ma and Baker in view of Young would have been a straightforward task for such a person at that time (id.), and the combination would have yielded nothing more than predictable results to that person (e.g., an actuator with linear actuation and a spring enclosure (id.)), thus rendering the combination obvious. See KSR, 550 U.S. at 416. Claim 12: A valve actuator for a valve, said actuator comprising: Ma, as modified with Baker and Young ( Ma-Baker-Young ), includes Baker s hydraulic actuator (212) with Ma s valve actuator (10). [12.1] a hydraulic actuator housing attachable to said valve Ma-Baker-Young includes Ma s actuator housing (Section VI.A.0 above; Ex at FIG. 4), or Young s actuator housing (228) (Ex at FIG. 7). -32-

35 [12.2] a hydraulic piston slidably mountable within said hydraulic housing responsively to hydraulic pressure, said hydraulic piston being moveable to a first position for closing said valve and to a second position for opening said valve Ma-Baker-Young includes Baker s piston (212) slidably mountable within housing (216) responsively to hydraulic pressure. Ex at FIG. 12, 8: The housing (216), and thus the piston (212), is mountable within the actuator housing. Ex at FIG. 4; Ex at FIG. 7. The piston (212) is movable to a first and second positions for opening and closing the valve. Ex at 3: [12.2] a cylinder member defining therein a piston chamber, said hydraulic piston being mounted for movement within said piston chamber, said cylinder member defining a first hydraulic fluid port into said piston chamber on a first side of said piston and a second hydraulic fluid port into said piston chamber on a second side of said piston Ma-Baker includes housing (216) defining a chamber in which piston (212) is movably mounted, and defining a first hydraulic fluid port (236) into the chamber on a first side of piston (212), and defining a second hydraulic fluid port (238) into the chamber on a second side of the piston (212). Ex at FIG. 12. [12.3] a plurality of seals for limiting movement of hydraulic fluid within said hydraulic actuator housing to said piston chamber and said first hydraulic fluid port and said second hydraulic fluid port -33-

36 Ma-Baker includes Baker s collar (222) or a similar seal to prevent hydraulic fluid from exiting the piston chamber into the manual operator (32). Ex at 52. Baker s actuator (212) also includes a seal between housing (216) and piston rod (218). Id.; Ex at FIG. 12. [12.4] a manual override assembly for manually operating said hydraulic piston Ma-Baker includes Baker s operator (32) with rotary means 44 rotatable by a suitable manual rotating device such as a handwheel. Ex at 3: [12.5] a return spring chamber within said hydraulic actuator housing, said return spring chamber being fluidly isolated from said piston chamber; and The hydraulic actuator housing of Ma, as modified with Baker and Young, defines a return spring chamber. Ex at FIG. 4. The return spring chamber is fluidly isolated from the piston chamber in Baker s housing (216), which is separately and independently fluidly connected only to a source of hydraulic fluid. Ex at FIG. 12; Ex at 52. [12.6] a return spring within said return spring chamber such that said return spring is isolated from said hydraulic fluid Ma-Baker-Young includes Ma s return spring (45) within the return spring chamber such that the return spring is isolated from the hydraulic fluid. Id. at

37 Claim 14: The valve actuator of claim 12, further comprising: said first hydraulic port and said second hydraulic port having an inner diameter at least three-quarter inches Ma-Baker-Young includes Baker s ports (236) and (238) each of which inherently discloses an inner diameter of at least three-quarter inches. Id. at 53. Alternately, it would have been obvious to, and a routine undertaking for, a person of ordinary skill to provide each of the ports (236) and (236) with an inner diameter of at least three-quarter inches, to enable rapid actuation of the piston. Id. Claim 15: The valve actuator of claim 12, further comprising: [15.1] an actuator shaft attached to said hydraulic piston Ma-Baker-Young includes Baker s piston rod (218) attached to the piston (214). Ex at FIG. 12. [15.2] a spring pusher attached to said hydraulic shaft, said spring pusher having a lip section Ma-Baker-Young, includes Baker s piston rod (218) attached to Ma s spring seat (35). Ex at FIG. 4, 3:26-28 ( The distal end of the rod is threaded onto the shank 42 of the connector 41 to adjustably couple the actuator to the spring seat. ). The spring seat (35) also includes a lip section surrounding the central opening through the spring seat. Id. at FIG

38 [15.3] a base section secured to said actuator housing, said return spring being mounted between said base and said lip section of said spring pusher Ma-Baker-Young, includes Ma s cover plate (50) attached to the actuator housing, and the return spring (45) is mounted between the cover plate (50) and the lip section of the spring seat (35). Ex at FIG. 4. Claim 16: The valve actuator of claim 15, wherein: said return spring is preloaded for a desired tension when mounted between said base and said lip section. Ma-Baker-Young includes Ma s spring (45), preloaded for a desired tension between cover plate (50) and the lip section of spring seat (35). Id. at 3: Claim 17: The valve actuator of claim 16, wherein: said base is secured to said actuator housing such that said actuator housing is removable from said valve without decompressing said preloaded return spring. The hydraulic actuator housing of Ma-Baker-Young, is secured to Ma s cover plate (50) and/or lower end wall (21) such that the actuator housing is removable from the valve without decompressing the preloaded return spring (45). Ex at 4:2-5 ( the entire frame assembly can now be lifted from the valve as a unit with the spring being maintained in a compressed state ). Claim 18: The valve actuator of claim 16, wherein: said cylinder member is removable from said actuator housing without decompressing said preloaded return spring. -36-

39 Ma-Baker-Young includes Baker s actuator, which can be removed from Ma s frame (20) without decompressing spring (45) by: (1) removing the bolts that connect bolting flange (64) to cover plate (50) and (2) removing the bolts that connect connector (41) to spring seat (35) or unscrewing actuator rod (62) from shank (42). Ex at FIG. 4, 3:6-8, 3: Ground 4 Obviousness over Ma, Baker, Hay, and Young Hay discloses a hydraulic accumulator for subsea use. Ex at Abstract. Hay also recognizes other types of prior art accumulators that included hydraulic fluid in a tank pressurized by gas, or a spring-loaded piston. Id. at 1: Hay recognizes that it is usual in the prior art to operate valves with hydraulic actuators and, when a hydraulic pump is remote from the actuator, pressure losses may exist for which an accumulator can compensate. Id. at 1: Claim 13: The valve actuator of claim 12, further comprising: an accumulator connected to at least one of said first hydraulic fluid port or said second hydraulic fluid port to provide hydraulic assist to said return spring for moving said hydraulic piston to at least one of said first position or said second position. It would have been obvious to a person of ordinary skill in the art at the relevant time to connect the accumulator disclosed by Hay, or one of the prior art accumulators recognized by Hay, to Baker s port (238) to assist Ma s spring (45) with closing the valve in the event that hydraulic pressure is lost. Ex at

40 For example, corrosion, mechanical malfunction, particulates in the valve, and various other issues may arise that interfere with smooth operation of the valve. Id. Such a person would have understood that, in such instances, an override spring such as Ma s may provide insufficient force to alone operate the valve as desired, and would therefore have recognized the desirability of providing an accumulator to provide hydraulic fluid to the piston (212) via port (238) to supplement the force provided by the spring to close the valve. Id. The addition of an accumulator would have been a routine matter to such a person. Id. B. Ground 5: Young Anticipates Claims 7-9 and 11 Under 102(b) Claim 7: A method for assembly of a valve actuator for a valve,... comprising: Young s actuator is necessarily assembled. Ex at FIGS. 4 and 7. [7.1] providing a hydraulic actuator housing attachable to said valve Young includes providing a hydraulic actuator housing (228) attachable to a valve. Id. at FIGS. 4 and 7, 9:1-2, 9:9-11. [7.2] providing a return spring for placement within said hydraulic actuator housing Young includes providing a return spring (224) for placement within the actuator housing (228). Id. at FIG. 7. [7.3] engaging one end of said return spring with a first lip member Young includes engaging the upper end of the spring (224) with a first lip member, upper spring retainer 222. Id. at FIG. 7, 9:

41 [7.4] engaging an opposite end of said return spring with a second lip member Young includes engaging the opposite, lower end of the spring (224) with lower spring retainer (230). Id. at FIG. 7, 9:9-11. [7.5] securing said first lip member and said second lip member together to thereby compress said return spring Young includes securing upper and lower spring retainers (222, 230) together to compress the return spring. Id. at FIG. 7, 9:8-9 ( spring retainer 222 applies force from coil 224 to move downstop 214 ); Ex at 40. [7.6] selectively adjusting tension on said return spring by adjusting a maximum length between said first lip and second lip Young includes selectively adjusting tension on the spring (224) by threading downstop 214 onto the bonnet stem. Id. at FIG. 7, 9:5-11, FIG. 3 (downstop 54 and bonnet stem 20). [7.7] installing said first lip member, said second lip member, and said return spring simultaneously into said hydraulic housing as a unit Young s upper and lower spring retainers (222, 230) and spring (224) are installed simultaneously into housing (228). Id. at FIGS. 4 and 7, 7:30-8:2. Claim 8: A method of claim 7, further comprising: installing a hydraulic piston in said actuator housing without decompressing said return spring -39-

42 Young s piston (212) is installed into housing (228) independent of the spring, such that the spring need not be decompressed. Id. Claim 9: A method of claim 7, further comprising: providing a plurality of seals to thereby prevent contact of hydraulic fluid with said return spring Young s [p]iston is further sealed with seals 220, which prevent hydraulic fluid from contacting spring (224). Id. at 9:7-8, FIG. 7. Claim 11: A method of claim 7, further comprising: connecting a piston position indicator to said first lip Young s top shaft 202, is coupled to upper spring retainer (222) via piston (212), and is viewable to indicate the position of piston (212). Id. at FIG. 7 C. Grounds 6-7: McIntosh Alone And With Other Art Renders Claims Invalid Under 102(e) or 103(a) McIntosh discloses an override mechanism for a failsafe linear gate valve actuator. Ex McIntosh s actuator (10) includes a hydraulic cylinder (30) attached to valve bonnet (16), and a housing (36) attached to the hydraulic cylinder (30). Ex at 2:7-26. A compression spring 42 is fitted between a flange 44 on the end of the compression hub 40 and a shoulder 46 formed on the cylinder 30, to bias the compression hub 40 towards the end cap 38. Id. at 2: A stem extension (24) also extends through the end cap (38) out of an upper end of the housing and is selectively unlockable from the spring compression hub (40) to override hydraulic operation of the actuator 10. Id. at 2: In particular, to -40-

43 operate the hydraulic actuator override mechanism, the cam spindle 58 is rotated gradually through thus disengaging the locking dogs 52 from the outer recesses 62 and permitting the stem extension 24 to be displaced axially, independently of the spring compression hub 40. Id. at 3:

44 1. Ground 6 Anticipation by McIntosh Claim 12: A valve actuator for a valve, said actuator comprising: McIntosh discloses a gate valve hydraulic actuator. Ex at Abstract. [12.1] a hydraulic actuator housing attachable to said valve; McIntosh includes a hydraulic actuator housing (36) attachable to the valve. Id. at FIG. 1, 2: [12.2] a hydraulic piston slidably mountable within said hydraulic housing responsively to hydraulic pressure, said hydraulic piston being moveable to a first position for closing said valve and to a second position for opening said valve McIntosh includes a hydraulic piston (28) slidable within the hydraulic housing (36) between a first position for closing the valve and a second position for opening the valve. Id. at FIG. 1, 2: [12.2] a cylinder member defining therein a piston chamber, said hydraulic piston being mounted for movement within said piston chamber, said cylinder member defining a first hydraulic fluid port into said piston chamber on a first side of said piston and a second hydraulic fluid port into said piston chamber on a second side of said piston McIntosh includes a cylinder housing (30) defining a piston chamber (32) in which the piston (28) is mounted for movement. Id. at FIG. 1, 2: The cylinder housing (30) defines a first hydraulic fluid port (48) into the chamber (32) -42-

45 on a first side of the piston (28), and a second hydraulic fluid port (50) into the chamber (37) on a second side of the piston (28). Id. at FIG. 1, 2: [12.3] a plurality of seals for limiting movement of hydraulic fluid within said hydraulic actuator housing to said piston chamber and said first hydraulic fluid port and said second hydraulic fluid port McIntosh includes a plurality of seals, including stem packing (18) and seal (35), for limiting movement of hydraulic fluid within the actuator housing (36) to the chamber (32) and the first and second hydraulic fluid ports (48, 50). Id. at FIG. 1, 2:10-12, 2: McIntosh includes a vertical channel drilled to permit fluid communication between port (50) and chamber (32), and the upper end of that channel is plugged to seal the channel and prevent hydraulic fluid from escaping into the spring chamber. Ex at [12.4] a manual override assembly for manually operating said hydraulic piston McIntosh includes an override assembly to operate the hydraulic actuator override mechanism, the cam spindle 58 is rotated gradually through thus disengaging the locking dogs 52 from the outer recesses 62 and permitting the stem extension 24 to be displaced axially, independently of the spring compression hub 40. Ex at 3:4-9. Because McIntosh s override assembly permits stem extension 24 to move independently of the spring, in at least certain orientations, the override assembly is operable by hand. Ex at

46 [12.5] a return spring chamber within said hydraulic actuator housing, said return spring chamber being fluidly isolated from said piston chamber; and McIntosh s actuator housing (36) defines a spring chamber that is fluidly isolated from the piston chamber. Ex at FIG. 1; Ex at [12.6] a return spring within said return spring chamber such that said return spring is isolated from said hydraulic fluid McIntosh s spring (42) is within the spring chamber such that the spring is isolated from the hydraulic fluid. Ex at FIG. 1; Ex at Claim 14: The valve actuator of claim 12, further comprising: said first hydraulic port and said second hydraulic port having an inner diameter at least three-quarter inches Each of McIntosh s ports (48) and (50) inherently discloses an inner diameter of at least three-quarter inches. Ex at 68. Alternately, it would have been obvious to, and a routine undertaking for, a person of ordinary skill in the art at the relevant time to provide each of the ports (48) and (50) with an inner diameter of at least three-quarter inches, to enable rapid actuation of the piston. Id. Claim 15: The valve actuator of claim 12, further comprising: [15.1] an actuator shaft attached to said hydraulic piston McIntosh includes valve stem extension (24) attached to the piston (28). Ex at FIG. 1, 2:

47 [15.2] a spring pusher attached to said hydraulic shaft, said spring pusher having a lip section McIntosh includes a spring compression hub (40) attached to the piston (28) by the valve stem extension (24), and the hub (40) includes a flange (44). Ex at FIG. 1, 2: [15.3] a base section secured to said actuator housing, said return spring being mounted between said base and said lip section of said spring pusher McIntosh includes a shoulder (46) on the cylinder (30), and the spring (42) is mounted between the flange (44) and the shoulder (46). Id at FIG. 1. Claim 16: The valve actuator of claim 15, wherein: said return spring is preloaded for a desired tension when mounted between said base and said lip section. McIntosh s return spring (42) is preloaded for a desired tension when mounted between the shoulder (46) and the flange (44). Ex at 69. Claim 17: The valve actuator of claim 16, wherein: said base is secured to said actuator housing such that said actuator housing is removable from said valve without decompressing said preloaded return spring. McIntosh s cylinder (30) is attached to the actuator housing (36) such that the actuator housing (36) is removable from the valve (14) without decompressing the spring. For example, the fasteners attaching the cylinder (30) to the bonnet (16) can be removed, the valve stem extension (24) disengaged from the spring -45-

48 compression hub (40), and the boss (26) of the stem (12) removed from the piston (28) to separate the valve stem extension (24) from the stem (12) and thereby permit removal of the piston (28), cylinder (30), housing (36), end cap (38), spring (42), and spring compression hub (40) from the valve, without decompression of the spring. Ex at 70. Claim 18: The valve actuator of claim 16, wherein: said cylinder member is removable from said actuator housing without decompressing said preloaded return spring. After removal of the piston (28), cylinder (30), housing (36), end cap (38), spring (42), and spring compression hub (40) from the valve, as described for claim 17, with the valve stem extension (24) remaining unlocked relative to the spring compression hub (40), the piston (28) and valve stem extension (24) can be removed from housing (36) without decompressing the spring (42). Id. 2. Ground 7 Obviousness over McIntosh and Hay Claim 13: The valve actuator of claim 12, further comprising: an accumulator connected to at least one of said first hydraulic fluid port or said second hydraulic fluid port to provide hydraulic assist to said return spring for moving said hydraulic piston to at least one of said first position or said second position. It would have been obvious to a person of ordinary skill in the art at the relevant time to connect the accumulator disclosed by Hay, or one of the prior art -46-

49 accumulators recognized by Hay, to McIntosh s port (48) to assist the spring (42) with closing the valve in the event that hydraulic pressure is lost. Ex at 71. McIntosh notes that hydraulic fluid may be supplied to the chamber 32 via a port 48 to assist in closing the valve. Ex at 2: Further, corrosion, mechanical malfunction, particulates in the valve, and various other issues may arise that interfere with smooth operation of the valve. Ex at 71. Such a person would have understood that, in such instances, an override spring such as the one in McIntosh may provide insufficient force to alone operate the valve as desired, and would therefore have recognized the desirability of providing an accumulator to provide hydraulic fluid to the piston (28) via port (48) to supplement the force provided by the spring to close the valve. Id. The addition of an accumulator would have been a routine matter to such a person. Id. D. Grounds 8-10: Frazer and Kalsi Together And With Other Art Render Claims Invalid Under 103(a) Frazer discloses a modular hydraulic actuator for gate valves. See Ex at FIG. 1, 4:7-12. Frazer s actuator (10) includes a hydraulic cylinder (150) and an interchangeable spring module (50) to close the valve in the absence of hydraulic pressure. Id. at 7:43-46, 11: The spring module (50) includes a spring can (52) that encloses a pre-compressed spring and is removable from the hydraulic -47-

50 cylinder (150) to permit easy replacement. See id. at FIG. 8, 11:62-12:59, 13: As shown in FIG. 3, Frazer s actuator does not include a manual override: -48-