IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. FUEL AUTOMATION STATION, LLC, Petitioner,

Transcription

1 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD FUEL AUTOMATION STATION, LLC, Petitioner, v. FRAC SHACK INC., Patent Owner Case No. TBD Patent 9,346,662 PETITION FOR INTER PARTES REVIEW OF United States Patent No. 9,346,662

2 TABLE OF CONTENTS TABLE OF EXHIBITS... iv TABLE OF AUTHORITIES... vi I. MANDATORY NOTICES... 1 A. Real Party-in-Interest... 1 B. Related Matters... 1 C. Lead / Back-Up Counsel and Service Information... 1 II. STANDING... 2 III. NOTICE OF FEES PAID... 2 IV. INTRODUCTION... 2 A. Summary of Argument... 2 B. The 662 Patent s Intended Environment Cannot Save It... 5 C. The 662 Patent and Relevant Prosecution History... 6 V. LEVEL OF ORDINARY SKILL IN THE ART... 7 VI. CLAIM CONSTRUCTION... 9 A. manifold (claims 1 and 2)...10 B. set up for delivery of fuel at a well site during fracturing of a well (claim 7)...10 C. cap (claim 12)...12 D. Claim 1 Preamble...13 VII. PRIOR ART RELIED UPON BY PETITIONER A. Toshio (JP A)...15 B. Griswold (U.S. 599,702)...15 C. Hose Handbook (copyright 2003)...16 D. Witter (U.S. Pub. 2008/ )...16 E. McCauley (U.S. 2,340,070)...17 F. Taylor (U.S. 3,688,795)...17 G. Lohmann (WO 2009/068065)...18 H. McNabb (U.S. 5,927,603)...18 ii

3 VIII. IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE A. Ground 1A: Claims 1, 7, 9, 10 and 11 are obvious under 35 U.S.C. 103 over Toshio in view of Griswold or Hose Handbook Claim Claim Claim Claim Claim B. Ground 1B: Claim 3 is obvious under 35 U.S.C. 103 over Toshio in view of Griswold/Hose Handbook and Witter Claim C. Ground 1C: Claims 4 and 5 are obvious under 35 U.S.C. 103 over Toshio in view of Griswold/Hose Handbook and Lohmann Claims 4 and D. Ground 1D: Claims 2 and 6 are obvious under 35 U.S.C. 103 over Toshio in view of Griswold/Hose Handbook and McCauley Claim Claim E. Ground 1E: Claim 8 is obvious under 35 U.S.C. 103 over Toshio in view of Griswold/Hose Handbook and optionally McNabb Claim F. Ground 1F: Claims 7 is obvious under 35 U.S.C. 103 over Toshio in view of Griswold/Hose Handbook and Applicant s Admitted Prior Art (APA) Claim G. Ground 1B: Claims 3 and 12 are obvious under 35 U.S.C. 103 over Toshio in view of Griswold/Hose Handbook and Taylor Claim IX. CONCLUSION iii

4 TABLE OF EXHIBITS Description Exhibit # U.S. Patent No. 9,346,662 (the 662 Patent) 1001 U.S. Patent No. 9,346,662 Prosecution History 1002 JP to Toshio (Native) 1003 JP to Toshio (English with Certification) 1004 U.S. Patent No. 599,702 to Griswold 1005 Hose Handbook U.S. Patent No. 2,340,070 to McCauley et al U.S. Patent No. 3,688,795 to Taylor 1008 WO 2009/ to Lohmann 1009 U.S. Patent No. 5,927,603 to McNabb 1010 Dictionary of Mechanical Engineering by Alfred Del Vecchio Kent s Mechanical Engineers Handbook U.S. Patent No. 3,331,392 to Davidson et al U.S. Patent Application 2009/ to Boyher Product Spotlight Sept The Valve Primer by Brent T. Stojkov U.S. Patent No. 2,749,062 to MacIntyre 1017 U.S. Patent No. 4,397,405 to Batson 1018 Popular Mechanics Nov Flying Magazine May Instrument Engineers Handbook U.S. Patent No. 6,960,377 to Shifman 1022 U.S. Patent No. 2,833,567 to Bacher et al U.S. Patent No. 489,107 to Storz Ctesibius Biography U.S. Patent No. 6,779,569 to Teer, Jr. et al 1026 U.S. Patent No. 2,730,126 to Jensen 1027 U.S. Patent Application No. 2008/ to Witter et al U.S. Patent No. 3,066,890 to Price 1029 U.S. Patent No. 2,992,560 to Morgan et al Internal-combustion engines pp Bosch/SAE 1031 Automotive Handbook, 3rd ed., 1993 Cambridge Advanced Learner s Dictionary, Third Edition, , p. 200 iv

5 Tubing, Piping, and Hose ( capture 1033 Plumbing Code, Mechanical Code and Fuel Gas Code of New 1034 York State (2008) Expert Declaration of C. Arthur MacCarley, Ph.D., P.E v

6 Cases TABLE OF AUTHORITIES Bigio, 381 F.3d 1320 (Fed. Cir. 2004) CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002) Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct (2016) Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)... 13, 18, 46 GPAC, Inc., 57 F.3d 1573 (Fed. Cir. 1995) Graham v. John Deere Co., 383 U.S. 1 (1966) Harza, 274 F.2d 669, 124 USPQ 378 (CCPA1960) Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525 (Fed. Cir. 1990)... 13, 18 Innovention Toys v. MGA Entertainment, 637 F. 3d 1314 (Fed. Cir. 2011) KSR, 550 U.S. at 416, 82 USPQ2d at (Ex. 1035, 211)... 57, 61 Oelrich, 579 F.2d 86, 91 (CCPA 1978) Okajima v. Bourdeau, 261 F.3d 1350 (Fed. Cir. 2001) Otto, 312 F.2d 937, 136 USPQ 458 (CCPA 1963) Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 51 USPQ2d 1161 (Fed. Cir. 1999) Rowe v. Dror, 112 F.3d 473, 42 USPQ2d 1550 (Fed. Cir. 1997)... 20, 27 Schreiber, 128 F.3d 1473, 44 USPQ2d 1429 (Fed. Cir. 1997) Sernaker, 702 F.2d 989, 217 USPQ 1, 5-6 (Fed. Cir. 1983) Slimfold Mfg. Co. v. Kinkead Indus., Inc., 810 F.2d 1113 (Fed. Cir. 1987) Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865 (Fed. Cir. 2004) vi

7 Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) Vivid Techs., Inc. v. Am. Sci. & Eng g, Inc., 200 F.3d 795 (Fed. Cir. 1999) Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355 (Fed. Cir. 2011) Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) Statutes 35 U.S.C , U.S.C. 102(b)... 24, U.S.C. 102(e) U.S.C. 102(b)... 22, 23, U.S.C. 102(a) Rules 37 C.F.R (b) C.F.R. 104(a) C.F.R (b) vii

8 I. MANDATORY NOTICES A. Real Party-in-Interest The real parties-in-interest are Atlas Oil Company, Fuel Automation Station, LLC, Simon Group Holdings I, LLC, and Atlas Oil Holding Company. B. Related Matters Frac Shack Inc. (hereafter Shack ) has asserted at least claims 1-4 and 7-12 of U.S. Patent 9,346,662 (herein the 662 Patent ) against Atlas Oil Company and Fuel Automation Station, LLC (collectively Atlas ) in the United States District Court for the District of Colorado. Civil Action No. 16-cv STV. Shack served Atlas with the lawsuit on September 16, C. Lead / Back-Up Counsel and Service Information Petitioner designates Matthew Koziarz (Reg. No. 53,154), available at 400 W. Maple, Ste. 350, Birmingham, MI (T: ) as lead counsel, and Alex Szypa, (Reg. No. 70,374), available at the same address and telephone, as backup counsel. Please address all correspondence to both lead and backup counsel. Petitioner consents to service by electronic at the following addresses: MKoziarz@cgolaw.com ASzypa@cgolaw.com

9 A power of attorney from Fuel Automation Station, LLC to Carlson, Gaskey & Olds, P.C. (Customer Number 26096) is being filed concurrently with these mandatory notices in compliance with 37 C.F.R (b). II. STANDING Petitioner certifies, pursuant to 37 C.F.R. 104(a), that the 662 Patent is available for inter partes review and that Petitioner is not barred or estopped from requesting inter partes review challenging the patent claims on the grounds identified in this Petition. III. NOTICE OF FEES PAID Fees are submitted herewith. If additional fees are due now or during this proceeding, the undersigned authorizes the Office to charge Deposit Account No in the name of Carlson, Gaskey & Olds, P.C. IV. INTRODUCTION A. Summary of Argument The 662 Patent broadly claims a fuel delivery system made up of a fuel supply, manifold, valves, sensors, and controllers. (Ex. 1001, at 8:52-9:15). As claimed, it is a system that uses known elements, in a known arrangement, to address known challenges. Indeed, seven years before the Patent Owner filed for what would become the 662 Patent, a Japanese patent to Toshio disclosed each element of the 2

10 independent claim of the 662 Patent with the exception of a pipe in Toshio where the 662 Patent uses a hose. 1 (Exs. 1003, 1004). Toshio teaches a system for delivering fuel to tanks having sensors that detect low and high fuel levels. A controller receives signals from the level sensors and dispenses fuel through a manifold via electronically controlled valves to the tanks and, subsequently, to a plurality of combustion instruments. A comparison of two patent drawings below demonstrates the near identical structure of the 662 Patent and Toshio. On top is an annotated Figure 6 from Toshio and, on the bottom, an annotated Figure 1 from the 662 Patent. The commonality in the main structure and components is highlighted in green, while the pipes in Toshio and hoses in the 662 Patent are highlighted in yellow. 1 Indeed, Toshio not only discloses the basic structure of the 662 Patent but also claims additional features such as leak sensing, flow meters, and leak-detecting functionality that are beyond the claims of the 662 Patent, suggesting that even as early as 2003 those in the field were already patenting advances beyond the basic structure of the 662 Patent. (Ex Page 3). 3

11 Toshio (2003) 662 Patent (2010) 4

12 Although Toshio uses pipes where the 662 Patent uses hoses, as of February 2010 hoses were well known alternatives to a persons of ordinary skill in the art ( POSA ) when making a choice for how to convey a liquid. (Ex Page 10) 2 ; (Ex. 1033) 3 ; (Ex. 1027, 1:19-21) (in fuel delivery systems to tanks of vehicles, it was general practice to fill the tanks with filler pipes or hoses leading from a supply source into manhole openings in the tops of tanks ); (Ex. 1029, 5:13-16) (refueling fuel tanks in airplanes performed with pipes or hoses ). B. The 662 Patent s Intended Environment Cannot Save It Petitioner anticipates that Patent Owner will claim that the system disclosed in Toshio is intended for use in a building while the system of the 662 Patent is intended for a work site. For purposes of patentability, that distinction is not pertinent. Patent Owner s use of a Toshio-like system in a different environment cannot create novelty or nonobviousness for its apparatus claims. Only positively recited elements limit a claim. [A]pparatus claims cover what a device is, not what 2 Where specified, page numbers in citations refer to Petitioner s Bates stamped numbers, and not any original page numbers of the exhibits. 3 The TPH was publically available via the well-known Internet Wayback Machine at least by Jan at web.archive.org/web/ / 5

13 a device does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). C. The 662 Patent and Relevant Prosecution History The irrelevance of the work site preamble of claim 1 or the well site recitation of claim 7 is highlighted by the fact that the Examiner did not limit the cited prior art to any particular environment. The examiner initially rejected the claims of the application that led to the 662 Patent in a non-final office action dated 5/23/2014 (Ex Pages ) with no identified allowable subject matter. The applicant attempted to distinguish the cited prior art references of that office action on the basis that those references addressed temporary fueling and not fueling over a long time period, despite the claims not mentioning a fueling time period (Ex Pages ). The examiner again rejected all claims and identified no allowable subject matter in a second, non-final office action and a third, final office action. (Ex Pages , ). Regardless, Toshio discloses fueling over a long time period. 6

14 The applicant and examiner conducted an interview on 12/8/2015 and on 12/9/05, the applicant amended the lone independent claim 37 4 to indicate that the valve at issue was electrically operable and a controller of the valves was responsive to the detection of [a] low fuel condition. Again, Toshio discloses electrically operable valves. However, the examiner did not allow the claims even with these changes. The examiner only allowed claim 37 after he limited it to a controller that would display an indication of the low fuel condition or to open at least one of the electrically operable valves for each of the multiple pieces of equipment that is associated with the low fuel condition. (Ex Pages 69-73). Yet again, Toshio discloses all of these elements. The 662 patent issued May 24, 2016 and claims priority to Provisional Application No. 61/305,320, filed on February 17, V. LEVEL OF ORDINARY SKILL IN THE ART The level of a POSA is a factual inquiry that must be made in determining whether a patent claim is obvious. See Graham v. John Deere Co., 383 U.S. 1, (1966). A POSA is a hypothetical person who is presumed to have known the 4 Independent claim 37 of the application, once allowed, was renumbered to what is now claim 1 in the 662 Patent. 7

15 relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that may be considered in determining the level of skill of a POSA include, but are not limited to, the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Id. In this case, Petitioner submits that the level of ordinary skill in the art is reflected by at least the prior art of record and that it is not necessary for the Board to make an express finding on the level of ordinary skill. Id.; Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). To the extent there may be any dispute about that skill level, Petitioner believes that the level of ordinary skill in the art is a person with a Bachelor of Science degree in mechanical or electrical engineering and at least two years experience working in a field relating to fluid handling; alternatively, a POSA would be a person without a formal degree but with at least four years practical design and operational experience in fluid handling systems. (Ex. 1035, 22-27). 8

16 VI. CLAIM CONSTRUCTION In an inter partes review ( IPR ), the Patent and Trial Appeals Board ( PTAB ) gives claims their broadest reasonable interpretation ( BRI ) in light of the specification of that patent. 37 C.F.R (b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, (2016); Slimfold Mfg. Co. v. Kinkead Indus., Inc., 810 F.2d 1113, 1116 (Fed. Cir. 1987). Under the BRI standard, the PTAB assumes that a claim term carries its ordinary and customary meaning as would be understood by a POSA in the context of the entire specification. See CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002); In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The BRI standard is different than the judicial standard under Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) and, therefore, this section may propose constructions that would not necessarily be consistent with the ongoing lawsuit between Petitioner and Patent Owner. Only terms that are in controversy need be construed and, even then, only to the extent necessary to resolve the controversy. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am. Sci. & Eng g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner suggests that the PTAB may need to construe the three claim terms listed below but that all other claim terms and terms in the prior art carry their ordinary and customary meanings as understood as of February

17 Claim term Claim(s) Petitioner s Construction manifold 1, 2 a common pipe or chamber having more than one outlet set up for delivery of fuel at a well site during 7 positioned for fluid delivery fracturing of a well cap 12 a cover or protection for something A. manifold (claims 1 and 2) The 662 Patent does not expressly define the term manifold. In the context of use in the 662 patent, and under the BRI standard, a POSA would have understood that the term manifold means a common pipe or chamber having more than one outlet. (Ex. 1035, 60). The use of manifold in the 662 Patent is consistent with this understanding and also a common dictionary definition. (Ex Page 3); (Ex. 1035, 58-61). The 662 Patent discloses that the manifold may have multiple outlets (Ex. 1001, 3:1-6, 5:41-43, elements 36 and 38 in Fig. 1), and Fig. 1 of the 662 Patent at least schematically depicts the manifolds 36 and 38 as common pipes or chambers that each have more than one outlet. B. set up for delivery of fuel at a well site during fracturing of a well (claim 7) The 662 Patent is silent on what it means to be set up for delivery of fuel at a well site during fracturing of a well. A POSA would understand the term to simply mean that the system is positioned for fluid delivery. Indeed, as phrased, a system could be positioned for fluid delivery without being capable of delivering fluid and 10

18 still fall within claim 7. A POSA would understand that the fuel in the claim term is a material worked upon since it is the subject of the delivery. (Ex. 1035, 62-66). Likewise, a POSA would understand that being set up for delivery of fuel at a well site during fracturing of a well is an intended use since the term adds no physical elements to the elements of base claim 1. (Ex. 1035, 62-66). A claim is only limited by positively recited elements. Inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims. In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). [A]pparatus claims cover what a device is, not what a device does. Hewlett- Packard, 909 F.2d at 1469, 15 USPQ2d at 1528 (emphasis in original). A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Since a material worked upon carries no patentable weight and since claims cover what a device is not what it does, under the BRI standard, a POSA would understand that the claim term only means positioned for fluid delivery. 11

19 C. cap (claim 12) The 662 Patent does not expressly define cap. A POSA would, therefore, give this term its plain and ordinary meaning. Under the BRI standard, a POSA would understand that a cap is a cover or protection for something. (Ex Page 3); (Ex. 1035, 67-71). Petitioner suspects that Patent Owner may try to import limitations on the meaning of cap from the specification to narrow that meaning and so try to avoid prior art. This will be difficult to do, however, both because it is improper from a claim construction standpoint and because the specification shows a cap that is consistent with the construction that Petitioner suggests. Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir. 2004) ( Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. ). The above interpretation, however, is also supported by the 662 Patent. The 662 Patent states, Each hose 24 is connected to a fuel cap or fill head 26 on a respective one of the fuel tanks 12 for delivery of fuel to the fuel tank 12 through the hose 24. Ex at 2: The phrase on a respective on of the fuel tanks 12

20 indicates that the cap covers. The 662 Patent also discloses Fuel spills at each fuel tank 12 are prevented by providing fuel flow to each fuel tank 12 through the fuel caps 26 on the fuel tanks 12. Ex at 5: The cap thus protects from spilling. D. Claim 1 Preamble The preamble of claim 1 is not a limitation and is of no significance to claim construction. Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) ( where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation ). If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (anticipation rejection affirmed based on Board s factual finding that the reference dispenser (a spout disclosed as useful for purposes such as dispensing oil from an oil can) would be capable of dispensing 13

21 popcorn in the manner set forth in appellant s claim 1 (a dispensing top for dispensing popcorn in a specified manner)) and cases cited therein. The preamble of claim 1 merits no weight. The body of claim 1 defines a structurally complete apparatus and uses the preamble only to recite intended purpose or use. For example, the word for in the preamble signals an intended use. In fact, rather than impose any structural limits on the claimed system, the preamble merely recites things that would be outside of or separate from the system as claimed, i.e., the equipment that may be serviced by the system and the surrounding environment (work site) at which the system may be used. Such equipment and environment would change from site-to-site and thus cannot be part of the system. VII. PRIOR ART RELIED UPON BY PETITIONER The prior art that Petitioner believes renders the 662 patent claims unpatentable has been selected because it is in the same field of endeavor as the subject matter of the 662 patent and is, therefore, analogous art. It is this type of art that a POSA would consider when deciding, at the time of patenting, whether the claims are anticipated or obvious. A reference qualifies as prior art for a determination under 103 when it is analogous to the claimed invention. Innovention Toys v. MGA Entertainment, 637 F. 3d 1314, 1321 (Fed. Cir. 2011) (citing In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992)). A reference constitutes analogous art if the art is from the same field of endeavor [or] is reasonably 14

22 pertinent to the particular problem with which the inventor is involved. Id. (citing In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). All of the references below are in the field of fluid handling, like the 662 patent. (Ex. 1035, 53-57). A. Toshio (JP A) Petitioner relies on Japanese Patent No. JP A to Toshio et al. ( Toshio ) as a base reference against claims 1-12 under 103. Toshio was filed in June 21, 2001 and has a publication date of January 8, (Exs. 1003, 1004). 5 Toshio is therefore prior art under 35 U.S.C. 102(b). Toshio was not cited during prosecution of the 662 Patent. Toshio generally teaches a system for delivering fuel to tanks having sensors that detect high and low fuel levels. A controller receives signals from the sensors and controls the dispensing of fuel from a fuel source and manifold via electronically controlled valves to the tanks and subsequently to a plurality of pieces of equipment. B. Griswold (U.S. 599,702) U.S. Patent No. 599,702 to Griswold ( Griswold ) has a filing date of March 5, 1897 and an issue date of March 1, (Ex. 1005). Griswold is therefore prior 5 Ex is the foreign language document of Toshio. Ex is the certified English translation of the entire Toshio reference with an affidavit attesting to the accuracy of the translation. Citations to Toshio herein will be to Ex

23 art under 35 U.S.C. 102(b). Petitioner relies on Griswold as a secondary reference in combination with Toshio against claims 1-12 under 103. Griswold was not cited during prosecution of the 662 patent. Griswold teaches a liquid delivery system in which a hose is offered as an alternative to a pipe. C. Hose Handbook (copyright 2003) The Hose Handbook has a publication year of (Ex. 1006). The Hose Handbook is therefore prior art under 35 U.S.C. 102(b). The Hose Handbook was not cited during prosecution of the 662 patent. Petitioner relies on the Hose Handbook as a secondary reference in combination with Toshio against claims 1-12 under 103. The Hose Handbook is regularly updated and published by the Rubber Manufacturers Association, Inc. ( RMA ) as an industry service. The RMA has more than 120 corporate members, including well-known companies such as Goodyear Tire and Rubber Co. (Ex Pages 2-4). The Hose Handbook contains information on many aspects of hoses, including selection of hoses. (Ex Pages 63-73). D. Witter (U.S. Pub. 2008/ ) U.S. Pub. 2008/ to Witter et al. ( Witter ) has a filing date of June 20, 2008 and a publication date of December 18, (Ex. 1028). Witter draws priority as a Continuation-in-part of U.S. application serial 11/556,496, filed 16

24 November 3, 2006, which claims priority to Provisional application 60/823,474. Witter is therefore prior art under 35 U.S.C. 102(b). Petitioner relies on Witter as a secondary reference in combination with Toshio against claim 3 under 103. Witter was not cited during prosecution of the 662 patent. E. McCauley (U.S. 2,340,070) U.S. Patent No. 2,340,070 to McCauley ( McCauley ) has a filing date of September 19, 1942 and a publication date of January 25, (Ex. 1007). McCauley is therefore prior art under 35 U.S.C. 102(b). McCauley was not cited during prosecution of the 662 patent. Petitioner relies on McCauley as a secondary reference in combination with Toshio and Griswold against claim 6 under 103. McCauley discloses a system for filling a plurality of fuel tanks concurrently and generally teaches a plurality of fuel manifolds with both manual and automatic valves. F. Taylor (U.S. 3,688,795) U.S. Patent No. 3,688,795 to Taylor ( Taylor ) has a priority date of September 14, 1970 and a publication date of September 5, (Ex. 1008). Taylor is therefore prior art under 35 U.S.C. 102(b). Taylor was not cited during prosecution of the 662 patent. Petitioner relies on Taylor in combination with Toshio and Griswold against claims 3 and 12 under 103. Taylor generally teaches a cap structure that includes a 17

25 combined liquid level gauge and valve and that is threaded to connect to a tank. The structure in Taylor can be connected to a filling hose via coupling. (Ex. 1008, Fig. 1; 4:24-37). G. Lohmann (WO 2009/068065) International Application WO 2009/ to Lohmann ( Lohmann ) has a filing date of November 29, 2007 and a publication date of June 4, (Ex. 1009). Lohmann designated the United States. Id. Lohmann is therefore prior art under 35 U.S.C. 102(a) and 35 U.S.C. 102(e). Petitioner relies on Lohmann as a secondary reference against claims 4-5 under 103. Lohmann generally teaches use of pressure gauges in connection with supplying fuel from a reservoir to an outlet. H. McNabb (U.S. 5,927,603) U.S. Patent No. 5,927,603 to McNabb ( McNabb ) has a priority date of September 30, 1997 and a publication date of July 27, (Ex. 1010). McNabb is therefore prior art under 35 U.S.C. 102(b). McNabb was not cited during prosecution of the 662 patent. Petitioner relies on McNabb in combination with Toshio and Griswold against claim 8. McNabb generally teaches a similar closed loop control fluid handling system to that of Toshio and the 662 patent. In McNabb, fluid delivery to specific locations is controlled using a computer for tabulation and visualization. 18

26 VIII. IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE Ground Basis Prior Art Claims 1A 103 Toshio in view of Griswold or Hose Handbook 1, 7, 9, 10, 11 1B 103 additionally in view of Witter 3 1C 103 additionally in view of Lohmann 4, 5 1D 103 additionally in view of McCauley 2, 6 1E 103 additionally in view of McNabb 8 1F 103 additionally in view of Admitted Prior Art 7 1G 103 additionally in view of Taylor 12 19

27 A. Ground 1A: Claims 1, 7, 9, 10 and 11 are obvious under 35 U.S.C. 103 over Toshio in view of Griswold or Hose Handbook. Claims 1, 7, 9, 10, and 11 of the 662 Patent are obvious under 35 U.S.C. 103 over Toshio in view of Griswold or Hose Handbook. Toshio alone discloses all the elements of claim 1 other than a hose Toshio uses pipe. Each of Griswold and the Hose Handbook shows the use of a hose in a fluid delivery system, and it would have been obvious to a POSA to use hose instead of a pipe in Toshio. Relative to claim 1, Petitioner will address each limitation with a short description below, followed by a claim chart for ease of reference. 1. Claim 1 [a] A fuel delivery system for fuel delivery to multiple pieces of equipment at a work site, comprising: The preamble is not limiting. Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) ( where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation ). However, Toshio discloses a fuel delivery system for fuel delivery (Ex Pages 4-5, 9, 22, Fig. 6, 20

28 [0007], [0034], see also Fig. 1 6 ) to multiple pieces of equipment (combustion instruments 28/117 and tanks 2/102, 3/103, 4/104) (Ex Pages 4-5, 22, [0006], [0007]), at a work site (wherever the location of the system is, such as a building). (Ex Pages 9, 22, [0034]). (Ex. 1035, ). 6 The systems of Figs. 1 and 6 include many common components. Generally, double-digit numerals refer to Fig. 1 and triple-digit numerals refer to Fig. 6. Petitioner cites to both using XX/YYY nomenclature because of the commonality. 21

29 [b] a fuel source comprising one or more manifolds, the one or more manifolds being connectable to a fuel supply; Referring to the annotated Fig. 6 of Toshio below, Toshio discloses a fuel source (Ex Page 22, Fig. 6) (annotated region below) comprising one or more manifolds (main pipe 5/105) (Ex Page 4, [0003]; [0004]), the one or more manifolds being connectable to a fuel supply (storage tank 1/101) (Ex Pages 4, 22, Figs. 1, 6; [0004]) (connection of the main pipe 5/105 to the storage tank 1/101). (Ex. 1035, ). fuel source manifold fuel supply 22

30 [c] each manifold of the one or more manifolds having multiple fuel outlets, Toshio discloses that each manifold (main pipe 5/105) of the one or more manifolds has multiple fuel outlets (annotated below, unnumbered branch pipes). (Ex Pages 4, 22, [0003], Figs. 1, 6). (Ex. 1035, ). multiple fuel outlets manifold 23

31 [d] each fuel outlet of the multiple fuel outlets having a hose connection; plural hoses, each hose having a first end and a second end and being connected at the first end of the hose to a corresponding one of the multiple fuel outlets and having a fuel delivery connection at the second end of the hose for securing the second end of the hose to a corresponding one of the multiple pieces of equipment to which fuel is to be delivered; Toshio discloses a pipe connection on each fuel outlet of the multiple fuel outlets. Toshio discloses a main pipe 5/105 with branch pipes that connect to valves 14/109, 15/110, 16/111 and to tanks 2/102, 3/103, 4/104. (Ex Page 4, [0003], [0004], [0005]). As shown in the clipped, annotated Fig. 6 below, portions of the branch pipes (boxed in green) lead from the valves 14/109, 15/110, 16/111 to the tanks 2/102, 3/103, and 4/104. Those portions are connected to the fuel outlets (the remaining portions of the branch pipes). In order for the fuel in Toshio to flow from the main pipe 5/105 and through the branch pipes to the tanks, the pipe portions below in green are connected to the remaining portions of the branch pipe and/or valves at one end and to the tank at the other end. (Ex. 1035, ). Toshio therefore discloses plural pipes (e.g., shown in green below), with each pipe having a first end and a second end and being connected at the first end of the pipe to a corresponding one of the multiple fuel outlets (branch pipes) and having a fuel 24

32 delivery connection at the second end of the pipe for securing the second end of the pipe to a corresponding one of the multiple pieces of equipment to which fuel is to be delivered. (Ex Pages 4, 22, the pipes are connected at the second end to the tanks 2/102, 3/103, and 4/104 of the equipment; [0004], connected to the relay tank). plural pipes connected to fuel outlet Although Toshio has pipe connections that are arranged in the same relative location in the system as the claimed hoses of the 662 Patent, Toshio does not explicitly disclose a hose connection or plural hoses. 25

33 In the same or similar field of endeavor, Griswold broadly teaches use of a hose in a kerosene distribution system. (Ex Page 2, ll. 9-15, 21-35, 88-95); (Ex. 1035, ). In that system, there can be a pipe to any part of a building, or the pipe may terminate and a hose may be used instead. (Ex Page 2, ll ). (Ex. 1035, 112). Griswold also teaches a hose connection. (Ex Page 2, ll , discharge-nozzle to which the hose may be attached). Use of a hose and a hose connection in Toshio would have been obvious in view of Griswold for several reasons: Teaching, suggestion, motivation in Griswold The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, , 217 USPQ 1, 5-6 (Fed. Cir. 1983). Here, there is a teaching, suggestion, or motivation for making the proposed modification to Toshio with a hose and a hose connection. Like Griswold, Toshio involves a kerosene distribution system in a building. (Ex. 1004, [0002], [0034], [0045]). A POSA would have been motivated to modify Toshio to include the hose of Griswold as a matter of safety and convenience, as taught as a benefit in Griswold. (Ex Page 2, ll. 9-14); (Ex. 1035, 115). MPEP 2143(I)(G). Accordingly, expectation of the benefit of 26

34 safety and convenience in Toshio s building kerosene distribution system would have prompted a POSA to make the proposed modification as taught in Griswold s building kerosene distribution system with a reasonable expectation of success. (Ex. 1035, 115). Simple substitution of a known element to provide predictable results Use of a hose and a hose connection in Toshio would also have been obvious in view of the teachings of Griswold as a simple substitution of a known element to provide predictable results. Toshio contains a device that differs from the claimed device by the substitution of pipes for hoses; substituting hoses for pipes to convey fuel was known in the art (Ex Page 2, ll ); one of ordinary skill in the art could have substituted the pipes for hoses because both are known and used for conveying fluids, and the results would have been predictable. (Ex. 1035, 114); MPEP 2143(I)(B). Alternatively, the use of a hose and a hose connection in Toshio would have been obvious in view of the Hose Handbook. The Hose Handbook teaches that hoses are known for conveying or moving fluids and that hoses are flexible to accommodate motion, alignment, vibration, thermal expansion/contraction, portability, ease of routing, and ease of installation. (Ex Page 10). The Hose Handbook also contains information on many aspects of hoses, including selection of hoses. (Ex Pages 4, 60-72). For instance, the Hose Handbook is intended 27

35 to help with selection of hoses for various conditions and functions, as well as hose coupling connections. (Ex Pages 4, 40-50, 60-62). The use of a hose and a hose connection in Toshio would have been obvious in view of the Hose Handbook for several reasons: Teaching, suggestion, motivation There is a teaching, suggestion or motivation for making the proposed modification to Toshio with a hose and a hose connection. A POSA would have been motivated to make the modification to accommodate motion, alignment, vibration, thermal expansion/contraction, portability, ease of routing, and/or ease of installation as taught by the Hose Handbook. (Ex Page 10). Indeed, hoses are used in buildings where rigid pipes are impractical or where there is vibration (Ex Page 1, Flexible metal connector and hoses used where rigid connections are impractical or to reduce the effect of jarring and vibration ), and thus the building of Toshio would benefit from use of hose where pipe is impractical or to accommodate vibration. Accordingly, expectation of these benefits would have prompted a POSA to modify the reference or to combine reference teachings with a reasonable expectation of success. (Ex. 1035, ). Simple substitution of a known element to provide predictable results Use of a hose and a hose connection in Toshio would also have been obvious in view of the teachings of the Hose Handbook as a simple substitution of a known 28

36 element to provide predictable results. Toshio contains a device that differs from the claimed device by the substitution of a hose for a pipe; use of hose to convey fluid was well known in the art from the Hose Handbook; one of ordinary skill in the art could have substituted the pipes in Toshio for hoses because both are known and used for conveying fluids, and the results would have been predictable. (Ex. 1035, 116, ); MPEP 2143(I)(B). 29

37 [e] an electrically operable valve responsive to electronic control signals on each fuel outlet; Toshio discloses an electrically operable valve (valves 14/109, 15/110, 16/111) (Ex Pages 4, 22, [0004], Figs. 1, 6) responsive to electronic control signals (Ex Page 5, [0008]) (the control part signals the valves 14/109, 15/110, 16/111) on each fuel outlet. (Ex. 1035, ). electrically operable valves [f] a sensor associated with each combination of fuel outlet, hose, and fuel delivery connection, Toshio/Griswold disclose a sensor (sensor 34/119 on each tank 2/102, 3/103, 4/104) (Ex Page 5, [0007], [0008], [0009], [0010]) associated with each combination of fuel outlet, hose, and fuel delivery connection. Each sensor 34/119 30

38 in the Toshio delivery system in Figs. 1/6 corresponds to one branch pipe, the portion of the branch pipe from valve 34/119 to the tank 2/102, 3/103, or 4/104 (hose from Griswold/Hose Handbook), and the fuel delivery connection to the tank 2/102, 3/103, or 4/104, and is therefore associated with each combination of fuel outlet, hose, and fuel delivery connection. (Ex. 1035, ). [g] each sensor being configured to detect a low fuel condition associated with each of the multiple pieces of equipment to which fuel is to be delivered; Toshio discloses that each sensor (sensor 34/119) is configured to detect a low fuel condition (Ex Page 5, [0008]) (there is an output signal from sensor 31

39 34/119 to control part 38 when fuel in tank 2/102, 3/103, or 4/104 decreases to predetermined low limit) associated with each of the multiple pieces of equipment to which fuel is to be delivered (each sensor 34/119 in the delivery system in Figs. 1/6 is on a tank 2/102, 3/103, or 4/104 that feeds fuel to one of the combustion devices 28/117, and is therefore associated with each combustion device 28/117). (Ex. 1035, ). [h] a controller responsive to signals supplied from each sensor through respective communication channels, the controller being configured to provide control signals to open and close the respective electrically operable valves; and Toshio discloses a controller (control part 38) (Ex Page 5, [0008], [0009]) that is responsive to signals supplied from each sensor (Ex Page 5, [0008]) (output signal from sensor 34/119 to control part when fuel in tank 2/102, 3/103, or 4/104 decreases to predetermined low limit) through respective communication channels (annotated in green in Figure 2 below), and the controller is configured to provide control signals to open and close the respective electrically operable valves (Ex Pages 5, 10, 11, 22, [0008], [0009], [0043], Figs. 1, 2, 6) (control part closes or opens valves 14/109, 15/110, 16/111). (Ex. 1035, ). This functionality is further demonstrated in the annotated Figures 1 and 2 of Toshio below. 32

40 33

41 [i] in which the controller is responsive to the detection of the low fuel condition, to display an indication of the low fuel condition or to open at least one of the electrically operable valves for each of the multiple pieces of equipment that is associated with the low fuel condition. The controller 38 in Toshio is responsive to the detection of the low fuel condition, to open at least one of the electrically operable valves for each of the multiple pieces of equipment that is associated with the low fuel condition. (Ex Page 5, [0008], [0009]; Figs. 1, 2, 6) (output signal from sensor 34/119 to control part 38 when fuel in tank 2/102, 3/103, or 4/104 decreases to predetermined low limit; control part 38 closes or opens valves 14/109, 15/110, 16/111). (Ex. 1035, ). This functionality is shown in an annotated Figure 2 of Toshio below. 34

42 above. The following claim chart is provided for reference and summarizes the Claim 1 Limitation [a] A fuel delivery system for fuel delivery to multiple pieces of equipment at a work site, comprising: [b] a fuel source comprising one or more manifolds, the one or more manifolds being connectable to a fuel supply; Prior Art Recitation Toshio discloses a fuel delivery system for fuel delivery (Ex Pages 4-5, 9, 22 Figs. 1, 6, [0001], [0007], [0034]) to multiple pieces of equipment (combustion instruments 28/117 and tanks 2/102, 3/103, 4/104) (Ex Pages 4-5, [0006], [0007]), at a work site (the location of the system; e.g., a building) (Ex Page 9, [0034]). Toshio discloses a fuel source (Fig. 6, below; see also Fig. 1) comprising one or more manifolds (Ex Page 4, [0003]-[0004], main pipe 5/105), the one or more manifolds being connectable to a fuel supply (Ex Pages 4, 22, Fig. 6, [0004], storage tank 1/101; connection of the main pipe 5/105 to the storage tank 1/101). [c] each manifold of the one or more manifolds having multiple fuel outlets, Toshio discloses that each manifold (main pipe 5/105) (Ex. 1004, Figs. 1, 6) of the one or more manifolds has multiple fuel outlets (unnumbered 35

43 [d] each fuel outlet of the multiple fuel outlets having a hose connection; plural hoses, each hose having a first end and a second end and being connected at the first end of the hose to a corresponding one of the multiple fuel outlets and having a fuel delivery connection at the second end of the hose for securing the second end of the hose to a corresponding one of the multiple pieces of equipment to which fuel is to be delivered; branch pipes) (Ex Pages 4, 22, [0003], Figs. 1, 6). Griswold teaches use of a hose in a kerosene distribution system (Ex. 1005, p. 1, ll. 9-12, 22-35, 88-95). In Griswold s system, there can be a pipe to any part of the building, or the pipe may terminate and a hose used instead (Ex. 1005, p. 1, ll ). Griswold also teaches a hose connection (Ex Page 2, ll , discharge-nozzle to which the hose may be attached). The Hose Handbook teaches that hoses are known for conveying or moving fluids and that hoses are flexible to accommodate motion, alignment, vibration, thermal expansion/contraction, portability, ease of routing, and ease of installation. (Ex Page 10). The Hose Handbook also contains information on many aspects of hoses, including selection of hoses. (Ex Pages 4, 60-72). For instance, the Hose Handbook is intended to help with selection of hose for various conditions and functions, as well as hose coupling connections. (Ex Pages 4, 40-50, 60-62). 36

44 [e] an electrically operable valve responsive to electronic control signals on each fuel outlet; Toshio discloses an electrically operable valve (valves 14/109, 15/110, 16/111) (Ex Page 4, [0004]; Figs. 1, 6) responsive to electronic control signals on each fuel outlet. (Ex Page 5, [0008]-[0010]) (control part signals valves 14/109, 15/110, 16/111). [f] a sensor associated with each combination of fuel outlet, hose and fuel delivery connection, Toshio/Griswold disclose a sensor (Ex Page 5, [0007], [0008], [0009], [0010]) (sensor 34/119 on each tank 2/102, 3/103, 4/104) associated with each combination of fuel outlet, hose, and fuel delivery connection. Each sensor 34/119 in the delivery system in Figs. 1/6 corresponds to one branch pipe, the portion of the branch pipe from valve 34/119 to the tank 2/102, 3/103, or 4/104 (hose from Griswold/Hose Handbook), and the fuel delivery connection to the tank 2/102, 3/103, or 4/104, and is therefore associated with each combination of fuel outlet, hose, and fuel delivery connection. 37

45 [g] each sensor being configured to detect a low fuel condition associated with each of the multiple pieces of equipment to which fuel is to be delivered; [h] a controller responsive to signals supplied from each sensor through respective communication channels, the controller being configured to provide control signals to open and close the respective electrically operable valves; and Toshio discloses that each sensor (sensor 34/119) is configured to detect a low fuel condition (Ex Page 4, [0008]) (there is an output signal from sensor 34/119 to control part 38 when fuel in tank 2/102, 3/103, or 4/104 decreases to predetermined low limit) associated with each of the multiple pieces of equipment to which fuel is to be delivered (Ex. 1004) (each sensor 34/119 in the delivery system in Figs. 1/6 is on a tank 2/102, 3/103, or 4/104 that feeds fuel to one of the combustion devices 28/117). Toshio discloses a controller (control part 38) that is responsive to signals supplied from each sensor (Ex Page 5, [0008], [0009]) through respective control channels, (output signal from sensor 34/119 to control part when fuel in tank 2/102, 3/103, or 4/104 decreases to predetermined low limit) and the controller is configured to provide control signals to open and close the respective electrically operable valves (Ex Pages 5, 10, 11, [0008], [0009], [0043], Figs. 1, 2, 6) (control part closes or opens valves 14/109, 15/110, 16/111). 38

46 [i] in which the controller is responsive to the detection of the low fuel condition, to display an indication of the low fuel condition or to open at least one of the electrically operable valves for each of the multiple pieces of equipment that is associated with the low fuel condition. The controller in Toshio (control part 38) is responsive to the detection of the low fuel condition, to open at least one of the electrically operable valves for each of the multiple pieces of equipment that is associated with the low fuel condition. (Ex. 1004, [0008], [0009]; Figs. 1, 2, 6) (output signal from sensor 34/119 to control part when fuel in tank 2/102, 3/103, or 4/104 decreases to predetermined low limit; control part 38 closes or opens valves 14/109, 15/110, 16/111). 2. Claim 7 The fuel delivery system of claim 1 set up for delivery of fuel at a well site during fracturing of a well. As set forth above, Toshio in view of Griswold/Hose Handbook discloses each and every element of claim 1. Claim 7 depends from claim 1 but does not add any structural limitations to claim 1. Rather, claim 7 merely recites the manner in which the apparatus of claim 1 is intended to be employed. However, such a recitation does not differentiate the claimed apparatus from the prior art apparatus if the prior art apparatus teaches all structural limitations, which the combination of Toshio and Griswold teaches. Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). Claim 7 is obvious over Toshio in view of Griswold for at least this reason. (Ex. 1035, ). 39

47 Furthermore, the combination of Toshio and Griswold/Hose Handbook is capable of being set up for delivery of fuel at a well site during fracturing of a well. Like the system of the 662 Patent, Toshio s system also delivers fuel to multiple pieces of equipment, the example disclosed being combustion instruments 28/117 having fuel tanks 2/102, 3/103, 4/104. (Ex Pages 4-5, [0006], [0007]). (Ex. 1035, ). As does the system of the 662 Patent, Toshio-Griswold (or Hose Handbook) also has a valve and sensor arrangement such that delivery of fuel to each tank is independently controllable. (Ex Page 5, [0008], [0009]). (Ex. 1035, ). Moreover, although Toshio discloses an example implementation of his invention in a building, Toshio is not limited to buildings. For example, the statement of the problem in the Toshio Abstract is directed to centralized systems in general. Further, claim 1 of Toshio is directed to a generic supply system that is not limited to a building, or any site for that matter. (Ex Page 19, [0086]); (Ex. 1035, ). Accordingly, the system of Toshio is capable of being set up for delivery of fuel at a well site during fracturing of a well. 40