UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. Flotek Industries, Inc. et al. Petitioners,

Transcription

1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Flotek Industries, Inc. et al. Petitioners, v. Andergauge Limited, Patent Owner. Patent No. 6,431,294 Issue Date: August 13, 2002 Title: Percussive Tool PETITION FOR INTER PARTES REVIEW OF U.S. PATENT 6,431,294 UNDER 35 U.S.C AND 37 C.F.R ET SEQ.

2 TABLE OF CONTENTS I. COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR INTER PARTES REVIEW... 1 A. Notice of Real Party in Interest... 1 B. Notice of Related Matters... 1 C. Notice of Lead and Backup Counsel... 1 D. Service Information... 2 E. Grounds for Standing... 2 F. Statement of Precise Relief Requested... 2 II. RELEVANT INFORMATION CONCERNING THE CONTESTED PATENT... 3 A. Person of Ordinary Skill in the Art... 3 B. Claim Construction... 3 III. OVERVIEW OF THE `294 PATENT... 8 A. Overview of Exemplary Prior Art... 8 B. Brief Description of the `294 Patent C. Prosecution History of the `294 Patent IV. SPECIFIC GROUNDS FOR PETITION A. Bielstein Renders Obvious Claims 1-7, 9-13, and of the `294 Patent B. Cleary Renders Obvious Claims 1, 5 and 8 of the `294 Patent V. CONCLUSION i

3 TABLE OF AUTHORITIES Cases In re ICON Health and Fitness, Inc. 496 F.3d 1374, 1379 (Fed. Cir. 2007)... 3 Statutes 35 U.S.C. 102(b)... 11, U.S.C U.S.C. 318(b)...59 Other Authorities 37 C.F.R (a) C.F.R (b) C.F.R (b)(5) C.F.R (a) C.F.R (b)(4) C.F.R. 42.8(b)(1) C.F.R. 42.8(b)(4) C.F.R. 42.8(b)... 1 MPEP ii

4 Exhibit Description TABLE OF EXHIBITS 1001 U.S. Patent No. 6,431,294 (issued August 13, 2002), Percussive Tool (hereinafter the `294 patent ) 1002 Declaration of Dr. Douglas Smith 1003 Curriculum Vitae of Dr. Douglas Smith 1004 U.S. Patent No. 1,132,063 (issued March 16, 1915), Impact Tool to Bardeen (hereinafter Bardeen ) 1005 U.S. Patent No. 2,250,912 (issued July 29, 1941), Well Drilling System to Hudson (hereinafter Hudson ) 1006 U.S. Patent No. 2,738,956 (issued March 20, 1956), Rotary Percussion Drilling Device to Bielstein (hereinafter Bielstein ) 1007 U.S. Patent No. 2,743,083 (issued April 24, 1956), Apparatus to Impart Vibrating Motion to a Rotary Drill Bit to Zublin (hereinafter Zublin ) 1008 U.S. Patent No. 2,780,438 (issued February 5, 1957), Device for Drilling Wells to Bielstein (hereinafter Bielstein `438 ) 1009 U.S. Patent No. 3,216,514 (issued Nov. 9, 1965), Rotary Drilling Apparatus to Nelson (hereinafter Nelson ) 1010 U.S. Patent No. 3,270,822 (issued September 6, 1966), Percussive Unit for Earth Drilling to Cleary (hereinafter Cleary 1011 U.S. Patent No. 4,080,115 (issued March 21, 1978), Progressive Cavity Drive Train to Sims et al. (hereinafter Sims ) iii

5 1012 U.S. Patent No. 5,139,400 (issued August 18, 1992), Progressive Cavity Drive Train to Ide (hereinafter Ide ) 1013 U.S. Patent No.2,028,407 (issued January 1, 1936), Gear Mechanism to Moineau (hereinafter Moineau ) 1014 Amended Complaint in National Oilwell DHT, L.P. v. Flotek Industries, Inc., Case No. 2:14-CV-01056, Docket No. 18, filed March 4, 2015 in the United States District Court for the Eastern District of Texas, Marshall Division File History of U.S. Patent No. 6,431,294 (Ex. 1001) 1016 American Heritage Dictionary (1997), Definition of Slot and Spline iv

6 I. COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR INTER PARTES REVIEW A. Notice of Real Party in Interest Pursuant to 37 C.F.R. 42.8(b)(1), notice is hereby given that the real partiesin-interest in this petition are Flotek Industries, Inc. as well as Turbeco, Inc. (d/b/a Spidle Turbeco, d/b/a Galleon Turbeco and d/b/a Cavo Drilling Motors) and Teledrift Company (d/b/a Spidle Turbeco) (collectively Petitioners ). B. Notice of Related Matters The `294 patent is the subject of a related litigation as set forth in the Amended Complaint filed in National Oilwell DHT, L.P. v. Flotek Industries, Inc., Case No. 2:14-CV-01056, Docket No. 18, filed March 4, 2015 (E.D.Tx.). [Ex. 1014, Amended Complaint]. In addition, the `294 patent is asserted in National Oilwell DHT, L.P. v. Amega West Services, LLC, 2:14-CV filed November 7, 2014 (E.D.Tx.). C. Notice of Lead and Backup Counsel Pursuant to 37 C.F.R. 42.8(b)(3), 42.8(b)(4), and 42.10(a), Petitioner designates the following lead and backup counsel: Lead Counsel James Murphy (Reg. No. 55,474) james.murphy@novakdruce.com Flotek-IPR@novakdruce.com Backup Counsel Andrew Weaver (Reg. No. 56,468) andrew.weaver@novakdruce.com Flotek-IPR@novakdruce.com 1

7 NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP 1000 Louisiana Street Fifty-Third Floor Houston, TX Telephone: Fax: NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP 1000 Louisiana Street Fifty-Third Floor Houston, TX Telephone: Fax: D. Service Information Petitioners consent to service by at Flotek-IPR@novakdruce.com. E. Grounds for Standing Petitioners certify under 37 C.F.R (a) that the patent for which review is requested is available for inter partes review and that Petitioners are not barred or estopped from requesting an inter partes review challenging the patent claims on the grounds identified in the petition. F. Statement of Precise Relief Requested Petitioners respectfully request that claims 1-13, and of U.S. Patent No. 6,431,294 ( the `294 patent ) (Ex. 1001) be cancelled based on the following grounds of unpatentability, explained in detail below. Ground 1 Claims 1-7, 9-13, and are rendered obvious under 103 by U.S. Patent No. 2,738,956 to Bielstein. [Ex. 1006, Bielstein]. Ground 2 Claims 1, 5 and 8 are rendered obvious under 103 by U.S. Patent No. 3,270,922 to Cleary. [Ex. 1010, Cleary]. 2

8 II. RELEVANT INFORMATION CONCERNING THE CONTESTED PATENT A. Person of Ordinary Skill in the Art A person of ordinary skill in the art in the field of the `294 patent is a person who has, through formal education or extensive practical experience has the equivalent of a Bachelor s Degree in Mechanical Engineering or 2 to 3 years of experience in the design, use or making of downhole tools. [Ex. 1002, Declaration of Dr. Douglas E. Smith at 9-11, hereinafter Ex. 1002, Smith Dec. at ]. B. Claim Construction A claim in inter partes review is given the broadest reasonable construction in light of the specification. See 37 C.F.R (b); see also In re ICON Health and Fitness, Inc. 496 F.3d 1374, 1379 (Fed. Cir. 2007). For the purposes of this proceeding, the claim terms are presumed to take on their broadest reasonable interpretation in light of the specification. Petitioners provide a more detailed explanation of the broadest reasonable interpretation of certain terms present in the challenged claims in the subsections below. The constructions set forth below are provided for the purposes of this inter partes review only and may be different from constructions proposed in litigation forums using a different standard. Means Associated with the Mass for Creating a Fluid Pressure Force on Said Mass : 3

9 Claims 1 and 21 each recite a limitation directed to a means associated with the mass for creating a fluid pressure force on said mass. [Ex. 1001, `294 patent]. Given the lack of recited structure and its use of means for language, this claim would be understood by one of ordinary skill in the art as written in means-plusfunction format. [Ex. 1002, Smith Dec., at 28]. The function of the means associated with the mass limitation is creating a fluid pressure force on said mass. [Ex. 1002, Smith Dec., at 30; Ex. 1001, `294 patent]. Those of ordinary skill in the art would understand that the structures corresponding to the means associated with the mass are those surface areas disclosed in the `294 patent associated with the mass whether integral or provided separately from the mass that are subjected to fluid pressure. [Ex. 1002, Smith Dec., at 31-32]. These include the upward facing surfaces and the downward facing surfaces of the mass. [Id. at 32-35; Ex. 1001, `294 patent, Fig. 1, 3:44-61, Fig. 2, 4:15-23, Fig. 3, 4:38-46]. Whether the mass is moved upwardly or downwardly by the fluid pressure depends on the net fluid pressure force acting on the mass. [Id.]. The `294 patent provides for a means associated with the mass in a first embodiment as shown in Figure 1. [Ex. 1002, Smith Dec., at 32-33; Ex. 1001, `294 patent, Fig. 1, 3:44-61]. Specifically, the `294 patent discloses that a restriction in the flow passageway formed by rotating valve 32, mounted on the upper end of 4

10 mass 28, includes a valve plate 34 fixed to mass 28 and a valve plate 36 which rotates relative to mass 28 to increase the pressure in the inlet to the tubular body 14 which is adjacent to and above valve 32. [Id.]. The increased pressure creates a force that is exerted downwardly on the valve plate 36 and any upwardly facing areas of mass 28. [Id.]. Downwardly facing areas on mass 28 below rotating valve 32 are subjected to a lower pressure due to the pressure drop in said valve. The net effect is a pressure force acting downward along the longitudinal axis motion of mass 28. [Id.]. The `294 patent also provides for a means associated with the mass in an alternate second embodiment as shown in Figure 2. [Ex. 1002, Smith Dec., at 34; Ex. 1001, `294 patent, Fig. 2, 4:15-23]. In this embodiment, a restriction in the flow passageway formed by rotating valve 64, fixed within the drill body 68, includes a stationary valve plate 66 and a rotating valve plate 70, which rotates relative to drill body 68 to increase the pressure in the fluid passageway just beneath rotating valve 64 and above mass 62. [Id.]. The increased pressure creates a force exerted downwardly on the upward facing area on the top surface of mass 62. [Id.]. Downwardly facing areas associated with mass 62 are below nozzle 74, which provides for a pressure drop such that said downward facing areas are subjected to a lower fluid pressure than the upward facing area on the top surface of mass 62. [Id.]. The net effect is a pressure force acting downward along the longitudinal axis motion 5

11 of mass 62. [Id.]. Here, the rotating valve 64 is also separate from a means associated with the mass for creating a fluid pressure force on said mass. [Id.]. The `294 patent further provides for an alternate third embodiment as shown in Figure 3. [Ex. 1002, Smith Dec., at 35; Ex. 1001, `294 patent, Fig. 3, 4:38-46]. Here, a restriction in the flow passageway is formed by rotating valve 96, fixed within the tubular drill body 98, includes a stationary diverter valve plate 97 and a rotating diverter valve plate 99 which rotates relative to tubular drill body 98 to increase pressure in the fluid passageway just beneath rotating valve 96 and above reciprocating mass 92. [Id.]. The increased pressure creates a force exerted downwardly on the top surface of reciprocating mass 92. [Id.]. Downwardly facing areas associated with reciprocating mass 92 are below nozzle 94, which provides for a pressure drop such that said downward facing areas are subjected to a lower fluid pressure than the upward facing area on the top surface of reciprocating mass 92. [Id.]. The net effect is a pressure force acting downward along the longitudinal axis motion of reciprocating mass 92. [Id.]. Again, the rotating valve 96 is separate from a means associated with the mass, which is the increased fluid pressure on the upwardly facing area on the top surface of reciprocating mass 92. [Id.]. Slot : Claim 7 of the `294 patent recites that fluid ports are in the form of slots on a common axis. While the term slot appears in various locations in the 6

12 specification, the specification does not provide any special meaning for the term. For example, the specification states [e]ach plate 34, 36 defines a slot 38, 40 positioned on the drill longitudinal axis 42, such that rotation of the valve plate 36 moves the slots 38, 40 into and out of alignment to vary the flow area defined thereby. [Ex. 1001, `294 patent, 3:34-38; Ex at 36]. Similarly, the Figures of the `294 patent only show the valve ports from the side, which obscures their nature. [Ex. 1001, `294 patent, Figures 1-3; Ex at 36]. Likewise, the term does not appear to be the basis of any discussion in the file history. [Ex. 1015; Ex at 36]. Accordingly, one of ordinary skill in the art would understand those terms according to their ordinary and accustomed meaning. [Ex. 1002, Smith Dec., at 37]. The American Heritage Dictionary (1997) defines slot as follows: 1. A narrow opening; a groove or slit. [Ex. 1016, American Heritage Dictionary (1997), definition of Slot ; Ex. 1002, Smith Dec. at 37]. Accordingly, slot means a narrow opening, groove, or slit. [Ex. 1002, Smith Dec., at 38]. Spline : Claim 15 of the `294 recites: wherein said drill bit support is splined to said body. [Ex. 1006, Bielstein, Claim 15; Ex. 1002, Smith Dec. at 39]. The `294 patent does not use the word spline in any special manner, nor is the word spline the basis for any discussion in the file history. [Ex. 1002, Smith Dec. at 39; Ex. 7

13 1001, `294 patent; Ex. 1016]. Accordingly, one of ordinary skill in the art would understand the term spline according to its ordinary and accustomed meaning. [Id. at 39]. The American Heritage Dictionary (1997) defines spline as follows: 1.a [a]ny of a series of projections on a shaft that fits into slot on a corresponding shaft, enabling both to rotate together. [Ex. 1016, American Heritage Dictionary (1997), definition of Spline ; Ex. 1002, Smith Dec. at 39]. Accordingly, spline means any of a series of projections on a shaft that fit into slots on a corresponding shaft enabling both to rotate together. [Ex. 1002, Smith Dec. at 40]. III. OVERVIEW OF THE `294 PATENT A. Overview of Exemplary Prior Art The `294 patent is entitled Percussive Tool and is in the field of earthdrilling downhole devices. [Ex. 1001]. Some patents in this crowded field date back at least a century and many prior art patents disclose one or more of the claimed features. [Ex. 1002, Smith Dec. at 12]. For example, U.S. Patent No. 1,132,063 to Bardeen dates back to 1915 and discloses a hammer drill that relies on a rotating valve to create fluid pressure forces that cause a hammer to strike a hammer. [Ex. 1002, Smith Dec. at 13; Ex. 1004, Bardeen]. U.S. Patent No. 2,250,912 to Hudson dates to 1941 and discloses the use of a Moineau-type fluid motor to create drill bit rotation. [Ex. 1002, Smith Dec., 14; Ex. 1005, Hudson; Ex. 1013, Moineau]. U.S. Patent No. 2,743,083 to Zublin, issued in 1954, discloses turbine driven valves to 8

14 create water hammer effects. [Ex. 1002, Smith Dec. at 15; Ex. 1007, Zublin]. Importantly, Zublin also teaches the usefulness of continuous flow in the device and the use of bypass pathways for tailoring fluid flow and fluid pulsing for different operating conditions. [Id. at 15; Ex. 1007, Zublin, 2:68-3:6]. U.S. Patent No. 2,780,438 to Bielstein issued in 1957 ( Bielstein `438 ). Bielstein `438 discloses a valve that uses a rotating valve plate driven by a helical vane that rotates from a fully open position of maximum flow, to a closed position of minimum flow, thus creating fluid pressure pulses. [Id. at 17; Ex. 1008, Bielstein `438]. In a design with many similar features, U.S. Patent No. 3,216,514 to Nelson (which issued in 1962) discloses arcuate slots that come into and out of alignment periodically varying fluid flow and pressure. [Id. at 18; Ex. 1009, Nelson]. Nelson also discloses that completely closing off the flow through the device is not necessary. [Id. at 18; Ex. 1009, Nelson 1:58-62, 2:14-23, 4:69-75]. U.S. Patent No. 4,080,115 to Sims, issued in 1978, discloses another Moineau-type device with a planetary gear system internal to the tubular housing to avoid using a double universal joint. [Id. at 19; Ex. 1011, Sims]. Similarly, U.S. Patent No. 5,139,400 to Ide, issued in 1992, discloses offset lugs for converting the complex motion of a Moineau-type motor into simple rotation. [Id. at 20; Ex. 1012, Ide]. 9

15 B. Brief Description of the `294 Patent The `294 patent is directed to a percussion drill including a tubular fluid transmitting body with a drill bit mounted on a drill bit support. The drill bit support is mounted in the body via a spring and splines. A mass is spring mounted in the body and is movable to impact on a face of the drill bit support. [Ex. 1001, `294 patent, Abstract; Ex. 1002, Smith Dec. at 21]. A rotating valve fixed to the mass includes valve plates with respective slots. As the valve plates are rotated, the slots move in and out of alignment to vary the flow of fluid. Restricted fluid flow creates a pressure differential across the valve, which causes the mass to move down and compress a spring. When the valve is opened, the pressure differential is decreased, and the mass is pushed upward by the spring. [Ex. 1001, `294 patent, 3:32-61]. Continuous rotation of the valve thus causes the mass to reciprocate within the body, providing a percussive action at the drill bit. [Ex. 1001, `294 patent, 3:63-67]. C. Prosecution History of the `294 Patent The `294 Patent was filed on June 5, 2000, as a national stage entry of PCT/GB98/03710 (filed on December 11, 1998), and claiming foreign priority to GB (filed December 11, 1997). In the first Office Action mailed August 9, 2001, claims 1-20 were rejected under 35 U.S.C. 103(a) for being unpatentable over U.S. Patent No. 3,654,961 to Phillips in view of U.S. Patent No. 4,478,248 to DeVall et al. [Ex. 1015, Office Action of August 9, 2001 at 3]. In a Response, on 10

16 January 9, 2002, the applicant amended claims 1 and 18-20; and added new dependent claims [Id., Amendment of February 6, 2001 at 2-3]. The amended claims added language directed to the drill bit support being coupled or mounted to the body and the rotating valve being located in the body. Applicant argued that the valves creating pressure pulsing were not located in the housing. [Id., Amendment of February 6, 2001 at 4]. Applicant further argued that even if a rotary valve, such as the one taught by DeVall et al., could be substituted for the timing device pump combination 146 of the Phillips drill, there is no suggestion that the rotary valve could be located in the body of the drill as required by Claim 1. [Id. at 4-5]. On March 15, 2002, the Office mailed a Notice of Allowance, stating all the claims were allowed. [Id., Notice of Allowability]. IV. SPECIFIC GROUNDS FOR PETITION The challenged claims are unpatentable for the reasons set forth in detail below, per 37 C.F.R (b)(4) (5). A. Bielstein Renders Obvious Claims 1-7, 9-13, and of the `294 Patent United States Patent No. 2,738,956 to Bielstein, entitled Rotary Percussion Drilling Device issued on May 23, 1952 ( Bielstein ). [Ex. 1006, Bielstein]. As a result, the Bielstein patent is prior art pursuant to 35 U.S.C. 102(b). As shown in Figure 1 of the Bielstein patent, Bielstein generally discloses a device comprising a hollow drill stem wherein drilling fluid flows, a drill bit attached 11

17 at its lower end, an anvil that is coupled to the drill bit, a hammer that longitudinally moves up and down to strike the anvil, a spring to bias the hammer in an upward direction and a valve piston that contains a rotating valve plate. [Ex. 1002, Smith Dec. at 46; Ex. 1006, Bielstein, 1:23-59, Fig. 1-7]. The rotation of the valve causes passageways to open and close to interrupt the flow of drilling fluid to create pressure pulses that causes the valve piston to push the hammer against the anvil. [Id.]. In the Figure 8 embodiment, discussed below in more detail, a helical vane on which a slidable plate is mounted in the tubular member drives the opening and closing of the valve. [Id.; Ex. 1006, Bielstein 1:23-59; Figure 8]. Claim 1 [1a] A percussion drill comprising: Bielstein discloses a percussion drill that transmits a jar to the drill bit or causing jars or vibrations on a drill bit. [Ex. 1002, Smith Dec., at 48; Ex. 1006, Bielstein 1:45, 1:18-22]. More specifically, Bielstein discloses the percussion effect that is created by the striking of hammer 21 against the anvil 14 which is attached to drill bit 19 directly or with sub 18 (attached with mating threads 17 and 18a) which may be considered an integral part of the drill bit 19. [Id. at 50; Ex. 1006, Bielstein, 2:53-55]. The hammer 21 communicates jars and vibrations through sub 18 to drill bit 19. [Id. at 50; Ex. 1006, Bielstein, 3:27-29, Figure 1]. Thus, the bit penetrates 12

18 formations more readily than without percussion. [Id. at 50-51; Ex. 1006, Bielstein, 3:40-45, 4:21-24, Claims 1-5]. [1b] a fluid transmission body; Bielstein discloses a fluid transmission body. Fluid is transmitted from an inlet at said the upper end to an exit at the drill bit at the lower end. [Ex. 1002, Smith Dec. at 52; Ex. 1006, Bielstein, 1:38-40, Claims 1-5, Figure 1]. With respect to the Figure 1 embodiment, Bielstein discloses that the valve piston 26 is provided with ports 34 through which drilling fluid passes and that anvil 14, the sub 18 and the drill bit 19 also define a passageway 35 which permits drilling fluid to pass through the drill stem. [Id. at 53; Ex. 1006, Bielstein, 2:44-50, Figure 1]. Likewise, with respect to the Figure 8 embodiment, Bielstein discloses a valve piston 50 is slidably arranged by way of keys and keyways within a sleeve 51 which, in turn, is fixed in the tubular member 11. The valve piston 50 is attached to the hammer, with its lower end in contact with the upper end of the hammer 21 as in the embodiment of Figs. 1 to 7. Arranged within the valve piston 50 is a rotatable valve element 52 which is provide with a plurality of ports 53. [Id. at 53; Ex. 1006, Bielstein, 2:56-65; Figure 8]. Further, velocity ports 53 in the member 52 are designed to sustain circulation while the valve 52 is in the closed to position and to allow the apparatus to be started. After the piston 50 has travelled downwardly, 13

19 the hammer 21 has struck the anvil 14 and the valve 52 is rotated to the open position. [Id. at 53; Ex. 1006, Bielstein, 4:7-13]. Bielstein also discloses a passageway for transmitting fluid through the body that is never entirely cut off but is only partially interrupted. [Id. at 54; Ex. 1006, Bielstein, 3:23-25 ( In the closed position the flow of drilling fluid is at least partially interrupted ), 4:25-29 ( It is to be understood in the description taken with the several figures of the drawing that the flow of drilling fluid is never entirely cut off but is only interrupted. ), 4:7-11 ( The velocity ports 53 in the member 52 are designed to sustain circulation while the valve 52 is in the closed position. )]. [1c] a drill bit support coupled to the body; Bielstein discloses a drill bit support, disclosed as sub 18, attached by threads 18a to drill bit 19. The sub 18 is coupled to tubular member 11 at its lower end near its attachment to drill bit 19 as shown in Figure 1 by ways of keys 13 and keyways 30. [Ex. 1002, Smith Dec., at 55; Ex. 1006, Bielstein, 2:13-24, Figures 1, 7]. [1d] a mass movable relative to the body for impacting on the drill bit support; Bielstein discloses a mass, which is hammer 21 in Figures 1, 2 and 8, that moves longitudinally within and relative to tubular member 11, the body of the rotary percussion drilling device, and also impacts the anvil 14. [Ex. 1002, Smith Dec. 56; Ex. 1006, Bielstein, 1:30-34; 2:56-63, Claims 1-5 ( a hammer arranged 14

20 longitudinally within said member for downward movement against said anvil. )]. Bielstein further discloses a valve in the fluid flow passageway that creates a flow restriction when the valve is in the closed position providing for a partial interruption of the flow. The flow interruption causes a downward force on piston 50 and then on hammer 21, which strikes anvil 14 to create a jar on drill bit 19 through sub 18 (the drill bit support). [Id. at Dec. 57; Ex. 1006, Bielstein, 3:23-36, Figure 1, 8]. Bielstein discloses the percussion effect that is created by the striking of hammer against the anvil 14 which is attached to drill bit 19 directly, or with sub 18 (attached with mating threads 17 and 18a), which may be considered an integral part of the drill bit 19. [Ex. 1002, Smith Dec. at 58; Ex. 1006, Bielstein, 2:53-55]. The hammer 21 communicates jars and vibrations through sub 18 to drill bit 19. [Id.; Ex. 1006, Bielstein, 3:27-29, 3:61-4:24, Figure 1, 8]. One of ordinary skill in the art would recognize that the hammer 21 striking against anvil 14 to transmit jars or vibrations to drill bit 19 through sub 18 would provide the same if anvil 14 and sub 18 were considered collectively as the drill bit support. [Id.]. [1e] means associated with the mass for creating a fluid pressure force on said mass; Bielstein discloses a means associated with the mass for creating a fluid pressure force on said mass in accordance with the construction provided above. Bielstein discloses a restriction in the flow passageway formed by the valve element 15

21 52 and ports 65 increases the inlet pressure in tubular housing 11, adjacent to and above the top service of piston 50. [Ex. 1002, Smith Dec. at 59; Ex. 1006, Bielstein, 3:46-4:24 ( As pressure is applied to the drill stem, the piston 50 is forced downwardly )]. The increased pressure creates a downward force along the longitudinal housing 11 that is exerted on the piston 50 that is attached to the upper end of the hammer 21, and as such, is associated with the hammer 21. [Id.; Ex. 1006, Bielstein, 3:61-4:24]. A downward force along the longitudinal axis of the tubular housing 11 is applied to the piston 50 and the hammer 21. [Id.; Ex. 1006, Bielstein 3:61-4:24 ( After the piston 50 has travelled downwardly, the hammer has struck the anvil 14 and the valve is rotated to the open position. )]. Bielstein Figure 10 shows this upward facing area of the piston 50 as a circular area having arcuate ports 64. [Id.; Ex. 1006, Bielstein, Figure 10]. [1f] a rotating valve located in the body for controlling flow of fluid through the body to produce a varying fluid pressure force on the mass and induce acceleration of the mass; and Bielstein discloses a rotating valve appearing in Figures 8 through 10 within a valve piston or piston 50 positioned to move longitudinally within tubular member 11. [Ex. 1002, Smith Dec. at 60; Ex. 1006, Bielstein, 2:56-63, Figures 8-10]. The valve includes passageways or ports formed by the ports 65 in the valve piston 50 and includes one or more ports or passageways 53 in addition to the arcuate openings 16

22 provided by valve element 52, which rotates on bearings with shaft 54. [Id.; Ex. 1006, Bielstein, 3:46-4:24]. Flow through the valve varies between a maximum flow open position, occurring when the ports 65 align with the arcuate openings in valve element 52 and a minimum (but non-zero) flow closed position, when the valve element 52 is rotated with respect to valve piston 50 such that the main segments in valve element 52 mostly cover openings 65 in valve piston 50. [Id.; Ex. 1006, Bielstein 3:61-4:24]. One of ordinary skill in the art would recognize that fluid flow continues even in the closed position, due to velocity ports 53, which provide for an open flow passageway when aligned with openings 65 in piston 50. [Id.; Ex. 1006, Bielstein 3:61-4:24 ( The velocity ports 53 in the member 52 are designed to sustain circulation while the valve 52 is in the closed position )]. Valve element 52 with arcuate openings between its main segments and velocity ports 53 is rotated on shaft 54 within valve piston 50 to alternately rotate between the open position and the closed position. [Ex. 1002, Smith Dec. at 61; Ex. 1006, Bielstein 3:61-4:24 ( the helical section of the vane 57 pass through the plate 58 rotation of the valve 52 is effected in a clockwise direction and toward full open position. The desired amount of rotation will depend on the number of openings and the area of openings in the piston 50. The velocity ports 53 in the member 52 are designed to sustain circulation while the valve 52 is in the closed position and to allow the apparatus to be started. After the piston 50 has travelled 17

23 downwardly, the hammer 21 has struck the anvil 14 and the valve is rotated to the open position. the reaction of the spring 24 combine to move the hammer 21 upwardly which causes left-hand rotation of the valve 52 as the vane 57 passes through the slot in the plate 58. At this point, the valve 52 is either in a closed or near closed position and the fluid pressure and velocity causes the piston 50 to reverse its direction of travel. )]. The partially interrupted flow created by the closed position causes the pressure in the fluid flow passageway above valve piston 50 to increase. [Id. at 61; Ex. 1006, Bielstein 3:61-4:24]. The increased fluid pressure acting on the area facing upward along the longitudinal axis of the tubular member 11 (in Figure 10, this area is formed against the circular plate shown minus the arcuate openings 65) to create a force on the valve piston 50 and also on the hammer 21. [Id. at 61; Ex. 1006, Bielstein 2:63-3:3, 3:46-61, Figure 8, 3:46-4:24 ( A series of blows is thus transmitted through the piston 50 to the hammer 21 and against the anvil 14 and, in turn, to bit 19. )]. When the valve is rotated into the closed position, the flow restriction presented by the valve results in a lower fluid pressure below the valve piston 50 than is above the valve piston 50. [Id. at 62; Ex. 1006, Bielstein 2:56-3:3, 3:61-4:24, Figure 8-11]. Therefore, in the closed position the hammer 21 is subjected to a varying fluid pressure where the high fluid pressure on areas facing upward on the top surface of valve piston 50 creates a downward longitudinal force which 18

24 exceeds the total upward longitudinal force resulting, in part, from the lower fluid pressure acting on areas facing downward. [Id. at 62; Ex. 1006, Bielstein 3:46-61 ( Drilling fluid is being pumped down through the tubular member 11 which is attached by means not shown to a hollow drill stem which causes the piston valve member 60 to be pushed downwardly. This results in the rotation of the shaft 54 and the helical vane 57 to an open position on a 90º turn which synchronizes the rotatable member 52 with the ports 65 of the piston valve member 50. Opening of the ports 65 and rebound of the hammer 21 allows the spring 24 to push the valve piston 50 up to the starting position which again results in the closing of the valve by the rotatable member 52 being in position to restrict the flow through the passageways 62 resulting in the sequence of operations being repeated. )]. The resultant force on the hammer 21 is in the downward direction along the longitudinal axis of the tubular member 11 and causes the hammer 21 to accelerate downwardly. [Id. at 62; Ex. 1006, Bielstein 3:61-4:24]. [1g] a valve motor for driving said valve. Bielstein discloses a valve motor for driving the valve element 52 that is embedded and housed within valve piston 50. [Ex. 1002, Smith Dec. at 63; Ex. 1006, Bielstein 3:61-4:24]. With respect to the Figure 1 embodiment Bielstein discloses slanting or transversely inclined surfaces on the rotatable valve element to impart rotation. [Id. at 64; Ex. 1006, Bielstein, 1:46-51, Claims 1-4, Figures 2-19

25 5]. Bielstein also discloses in Figures 8-11 an embodiment having a valve motor for driving the valve with a helical vane : [t]he means for rotating the valve member may also include a rotatable shaft attached to the rotatable valve means carrying a helical vane on which a slidable plate is mounted on the vane and in the tubular member. By properly positioning the plate mounted on, the vane, it is possible to open and close the rotatable valve means. [Id. at 65; Ex Bielstein, 1:52-57 (emphasis added), Claim 4, Figures 8-11]. Here, Bielstein discloses a helical vain 57 that moves axially along the central axis of tubular member 11 with hammer 21. [Id. at 65; Ex. 1006, Bielstein, 2:56-63]. As hammer 21 travels upwards or downwards, helical vane 57 travels through a rectangular opening in synchronizing plate 58. [Id. at 65; Ex. 1006, Bielstein, 2:63-3:3]. As helical vane 57 translates within synchronizing plate 58, it rotates with respect to tubular member 11 causing rotatable valve element 52 to rotate and oscillate within valve piston 50. [Id. at 65; Ex.1006, Bielstein, 3:46-4:24, Figures 8-11]. Helical vane 57 with synchronizing plate 58 under the reciprocating motion provided by hammer 21 forms an oscillatory valve motor that drives rotatable valve element 52. [Id. at 65; Ex.1006, Bielstein, 3:46-4:24, Figures 8-11]. Based on this teaching in the specification, one of ordinary skill in the art would understand that the helical vane shown in the Figure 8 embodiment could be used in place of the slanting or transversely inclined surfaces embodiment shown in the Figure 1 embodiment to drive the valve (along with the 20

26 other structures and features of the Figure 1 embodiment). [Id. at 65; Ex. 1006, Bielstein, 1:52-57, Figures 1, 8]. Accordingly, as detailed above, Bielstein renders claim 1 unpatentable as obvious. [Ex. 1002, Smith Dec. at 66]. Claim 2 [2] A percussion-drill according to claim 1 wherein said rotating valve rotates around a longitudinal axis. As discussed above, Bielstein renders claim 1 unpatentable as obvious. With respect to claim 2, Bielstein discloses a valve that rotates within the tubular member 11 under claim 1f above. Specifically, Bielstein discloses that: [t]he rotatable valve member 52 is attached by key 54 to a shaft 54 which is mounted in the piston 50 on bearings 55 and 56. [Ex. 1002, Smith Dec. at 68; Ex. 1006, Bielstein 2:63-3:3, Figs. 8-11]. One of ordinary skill in the art would recognize that in the valve of the Figures 8-11 embodiment that the valve rotates on shaft 54 about the central longitudinal axis of the tubular member 11. [Id.]. Accordingly, Bielstein renders claim 2 unpatentable as obvious. [Ex. 1002, Smith Dec., at 69]. Claim 3 [3] A percussion drill according to claim 2 wherein said longitudinal axis is the central longitudinal axis of said fluid transmitting body. 21

27 As discussed above, Bielstein renders claim 2 unpatentable as obvious. With respect to claim 3, Bielstein discloses a valve that rotates within the tubular member 11 on shaft 54 and that said rotation is about a central longitudinal axis of the tubular member 11, respectively, under claims 1f and 2 above. [Ex. 1002, Smith Dec. at 71]. Specifically, Bielstein discloses: [t]he rotatable valve member 52 is attached by key 54 to a shaft 54 witch is mounted in the piston 50 on bearings 55 and 56. [Id. at 71; Ex. 1006, Bielstein, 2:63-33]. Shaft 54, as shown in Figures 8-10, appears as being on the central longitudinal axis of tubular housing 11 and to the extent that shaft 54 is not on the central longitudinal axis, one of ordinary skill in the art would recognize that using the central longitudinal axis would be an adaptation giving a predictable result. [Id. at 71; Ex. 1006, Bielstein, Figures 1-5, 8-10]. Accordingly, Bielstein renders claim 3 unpatentable as obvious. [Id. at 72]. Claim 4 [4] A percussion drill according to claim 1 wherein said rotating valve is provided separately of the means for creating a fluid pressure force on said mass. As discussed above, Bielstein renders claim 1 unpatentable as obvious. With respect to claim 4, Bielstein discloses a valve that rotates within the tubular member 11 about a longitudinal axis of the tubular member 11 under claims 1f and claim 2 above. [Ex. 1002, Smith Dec. at 74]. The valve appearing in the Figure 8 is housed 22

28 within the piston 50 within tubular member 11. [Id. at 74; Ex.1006 Bielstein, 2:56-63 ( Referring now to Fig. 8, a valve piston 50 is slidably arranged within a sleeve 51 which, in turn, is fixed in the tubular member 11. The valve piston 50 is attached to the hammer with its lower end in contact with the upper end of the hammer 21 as in the embodiment of Figs. 1 to 7. ), 3:46-51]. Bielstein discloses a means associated with the mass for creating a fluid pressure force on said mass as is described under claim 1e, above. [Ex. 1002, Smith Dec. at 75]. The phrase a fluid pressure force indicates that any fluid pressure force created that acts on the mass. Specifically, fluid pressure in the inlet of tubular member 11 and located adjacent to and just above the top surface of valve piston 50, with said surface having an upwardly facing area (as viewed along the longitudinal axis of said tubular member), creates said downward force as the fluid pressure is applied to said area. [Id. at 75]. Bielstein Figure 10 shows the upward facing area of the top surface of the piston 50 as a circular area having arcuate openings 65 and center shaft 54. [Id. at 75; Ex. 1006, Bielstein, 2:63-3:3, 3:46-61, Figure 8, 10]. The fluid pressure creates a downward force on the valve piston 50, attached to the upper end of hammer 21, and as such, is associated with the hammer 21. [Ex. 1002, Smith Dec. at 76; Ex. 1006, Bielstein, 2:63-3:3, 3:61-4:24]. In Bielstein, the means for creating the fluid pressure force on hammer 21 is provided separately from the rotating valve. [Smith Dec. at 77; Ex. 1006, Bielstein, Figures 8-11]. 23

29 The rotating valve formed by ports 65 and rotatable valve element 52, as described above, is housed within valve piston 50, but remains separate from the upward facing surface that provides a means for creating a fluid pressure force as described in the preceding paragraphs. [Id. at 77; Ex. 1006, Bielstein 3:61-4:24]. Accordingly, Bielstein renders claim 4 unpatentable as obvious. [Id. at 78]. Claim 5 [5] A percussion drill according to [ ] claim 1 wherein said valve comprises two portions each defining a fluid port, such that relative rotation of the portions varies the alignment of the fluid ports and varies the flow area defined thereby. As discussed above, Bielstein renders claim 1 unpatentable as obvious. With respect to the limitations recited by claim 5, Bielstein discloses a rotating valve as described above in the discussion of claim 1f with two portions that define a fluid flow port. [Ex. 1002, Smith Dec. at 80]. Specifically, said valve includes a flow passageway or fluid port comprised of one portion being ports or openings 65 in valve piston 50 and also includes a second portion being one or more ports or velocity ports 53 in addition to arcuate openings provided by valve element 52 which rotates on bearings with shaft 54. [Id. at 80; Ex. 1006, Bielstein, 2:56-63, Figures 8-10, 3:61-4:24]. 24

30 The Bielstein valve has a fluid port through the valve with an area that varies between a maximum value in the open position, where ports 65 align with the arcuate openings in valve element 52, and a minimum (but non-zero) value in the closed position, where valve element 52 is rotated with respect to valve piston 50 such that the main segments in valve element 52 mostly cover openings 65 in valve piston 50 leaving fluid to flow through velocity ports 53. [Id. at 81; Ex. 1006, Bielstein, 2:56-63, 3:61-4:24, Figures 8-11]. Thus, the flow area is varied. [Id. at 81]. Accordingly, Bielstein renders claim 5 unpatentable as obvious. [Id. at 82]. Claim 6 [6] A percussion drill according to claim 5 wherein one of said portions is rotatable relative to said body. As discussed above, it Bielstein renders claim 5 unpatentable as obvious. With respect to claim 6, Bielstein discloses the second portion of the valve (valve element 52) rotates relative to the tubular member 11 by way of shaft 54. [Ex. 1002, Smith Dec. at 84; Ex. 1006, Bielstein, 2:56-63, 2:63-3:3 ( The rotatable shaft 54 has helical vane 57 attached to the upper end thereof on which, in turn, is arranged in the tubular member 11. ) 3:46-61 ( This results in the rotation of the shaft 54 and the helical vane 57 to an open position on a 90º turn which synchronizes the rotatable member 52 with the ports 65 of the piston valve member 50. )]. Accordingly, Bielstein renders claim 6 unpatentable as obvious. [Ex. 1002, Smith Dec. at 85]. 25

31 Claim 7 [7] A percussion drill according to claim 5 wherein said fluid ports are in the form of slots on a common axis. As discussed above, Bielstein renders claim 5 unpatentable as obvious. With respect to claim 7, Bielstein discloses that the openings 65 in valve piston 50 (as described above under claims 5 and claim 1f) are slots expanding radially from the longitudinal axis of the tubular member 11 and also of shaft 54. [Ex. 1002, Smith Dec. at 87]. A second fluid port is formed by one or more arcuate slots provided by valve element 52, which rotates on shaft 54. [Id. at 87; Ex. 1006, Bielstein, 2:56-3:3, 3:46-4:24, Figures 8-11]. The arcuate slots in valve element 52 appear in Figure 10 above and below (viewed from the perspective of the figure itself) shaft 54 spaced circumferentially between the main segments of valve element 52, which extend to the right and left of shaft 54 and expand radially from the longitudinal axis. [Id. at 87]. One of ordinary skill in the art would understand the fluid ports in Bielstein to be slots in accordance with the definition discussed above, because the fluid ports are longer along their arc length than they are wide. [Id. at 87; Ex. 1016, American Heritage Dictionary, definition of Slot ]. Each of the fluid ports described and disclosed in Bielstein are in the form of arcuate slots on a common axis, which is the longitudinal axis of the tubular member 11 and also of shaft

32 [Id. at 87; Ex. 1006, Bielstein, 3:61-4:24, Figures 8-10]. Accordingly, Bielstein renders claim 7 unpatentable as obvious. [Id. at 88]. Claim 9 [9] A percussion drill according to claim 1 wherein said valve permits fluid flow through the body in all valve configurations. As discussed above, Bielstein renders claim 1 unpatentable as obvious. With respect to claim 9, Bielstein discloses a rotating valve appearing in Figures 8-11 that includes fluid ports formed by openings 65 in valve piston 50 and also one or more velocity ports 53 in addition to arcuate openings provided by valve element 52 which rotates on bearings with shaft 54. [Ex. 1002, Smith Dec. at 90; Ex. 1006, Bielstein 3:61-4:24, Figures 8-11]. As discussed above, flow through the valve varies from a maximum flow open position to a minimum (but non-zero) flow closed position. [Id. at 90; Ex. 1006, Bielstein 3:61-4:24, Figures 8-11]. However, Bielstein discloses: The velocity ports 53 in the member 52 are designed to sustain circulation while the valve 52 is in the closed position and to allow the apparatus to be started. [Id. at 91; Ex. 1006, Bielstein 3:61-4:24 (emphasis added), Figure 11]. Accordingly, Bielstein renders claim 9 unpatentable as obvious. [Id. at 92]. Claim 10 [10] A percussion drill according to claim 1 wherein said mass is spring mounted in said body. 27

33 As discussed above, Bielstein renders claim 1 unpatentable as obvious. With respect to claim 10, Bielstein discloses hammer 21 (the mass) is provided with an outwardly projecting shoulder 23 which serves as an upper retainer for a helical coil spring 24, the bottom of which rests on the inwardly projecting shoulder 12 which acts as the lower spring retainer. [Ex. 1002, Smith Dec., at 94; Ex. 1006, Bielstein, 2:27-31, Figure 1]. One of ordinary skill in the art would also recognize that the spring means embracing said hammer and the spring means normally biasing said hammer upwardly and the spring embracing said hammer and arranged between said shoulders normally biasing said hammer upwardly describes coil spring 24 upon which hammer 21 is mounted. [Id. at 94; Ex. 1006, Bielstein, Claims 2, 3 and 5]. Accordingly, Bielstein renders claim 10 unpatentable as obvious. [Id. at 95]. Claim 11 [11] A percussion drill according to claim 1 wherein said mass defines a flow passage therethrough. As discussed above, Bielstein renders claim 1 unpatentable as obvious. With respect to claim 11, Bielstein discloses hammer 21 (mass) arranged above the anvil 14 in tubular member 11 as having a central passageway 22. [Ex. 1002, Smith Dec., at 97; Ex. 1006, Bielstein, 2:25-26; Bielstein, 2:44-50, Claims 4-5, Figures 1-2 and 8]. Accordingly, Bielstein renders claim 11 unpatentable as obvious. [Id. at 97]. Claim 12 28

34 [12] A percussion drill according to claim 11 wherein said flow passage defines a restriction such that fluid flowing through the mass is subject to a pressure drop. As discussed above Bielstein renders claim 11 unpatentable as obvious. With respect to claim 12, one of ordinary skill in the art would recognize that flow passageway 22 through hammer 21 (mass) has a diameter that appears to decrease along the flow path from valve piston 26 towards flow passage 35. [Ex. 1002, Smith Dec., at , Figures 1, 2 and 8]; see also MPEP One of ordinary skill in the art would recognize that the passageway 22 through hammer 21 presents itself as a pipe within which flows a viscous fluid. [Id. at ]. It would further be recognized from basic mechanical engineering principles that this flow condition creates a pressure drop due to the viscosity of the fluid that is inversely proportional to the passageway s diameter such that the fluid flowing through the mass is subject to a pressure drop. [Id. at ; Ex. 1006, Bielstein, Figures 1, 2, 8]. Accordingly, Bielstein renders claim 12 unpatentable as obvious. Claim 13 [13] A percussion drill according to claim 12 wherein said mass impacts directly on said drill bit support. As discussed above Bielstein renders claim 12 unpatentable as obvious. With respect to claim 13, Bielstein discloses a percussion effect that is created by the 29

35 striking of hammer 21 (mass) against the anvil 14 which is attached to drill bit 19 directly, or with sub 18 (attached with mating threads 17 and 18a) which may be considered an integral part of the drill bit 19. [Ex. 1002, Smith Dec., at 104; Ex. 1006, Bielstein, 2:53-55, 3:27-29, Figure 1]. One of ordinary skill in the art would recognize that the hammer 21 striking the anvil 14 transmits jars or vibrations to drill bit 19 through sub 18 would provide the same result if anvil 14 and sub 18 were collectively the drill bit support. [Id. at 104; Ex. 1006, Bielstein, Figure 1]. Accordingly, Bielstein renders claim 13 unpatentable as obvious. [Id. at 105]. Claim 15 [15] A percussion drill according to claim 1 wherein said drill bit support is splined to said body. As discussed above, Bielstein renders claim 1 unpatentable as obvious. With respect to claim 15, Bielstein discloses a drill bit support drilling sub 18 as being provided with a keyway 20 in which a key 13 is slidably arranged appearing in Figures 1 and 7, and described under claim 1c above to couple said sub 18 to tubular member 11. [Ex. 1002, Smith Dec. at 107; Ex. 1006, Bielstein, 2:23-24, Figures 1, 7]. The keys and keyways of Bielstein would fall within the definition of spline discussed above as the purpose of the key 13 and keyways 20 is to ensure the drill bit support, sub 18, rotates with the tubular member 11 via a splined connection. [Id. 30

36 at 107; Ex.1016, American Heritage Dictionary (1997), Definition of Spline ]. Accordingly, Bielstein renders claim 15 unpatentable as obvious. [Id. at 108]. Claim 16 [16] A percussion drill according to claim 1 wherein said body is adapted for mounting on a drill string. As discussed above, Bielstein renders claim 1 unpatentable as obvious. With respect to claim 16, Bielstein discloses: a device for drilling a well which comprises, in combination, a tubular member adapted to be attached at its upper end to a hollow drill stem [or drill string]. [Ex. 1002, Smith Decl., 110; Ex. 1006, Bielstein, 1:23-26, Claims 2-5]. Accordingly, Bielstein renders claim 16 unpatentable as obvious. [Id. at 111]. Claim 18 [18] A percussion drill according to claim 1, wherein said body is adapted for rotation in a bore, rotation of the body causing rotation of the drill bit support and a drill bit mounted thereto. As discussed above, Bielstein renders claim 1 unpatentable as obvious. With respect to claim 18, Bielstein discloses by title a Rotary Percussion Drilling Device. [Ex. 1002, Smith Dec. at 113; Ex. 1006, Bielstein, Title]. One of ordinary skill in the art would recognize that a rotary drilling device is one where the entire drill string can rotate. [Id.]. Bielstein discloses a tubular member 11, adapted to be 31

37 attached at it upper end to a rotating hollow drill stem (Ex. 1006, Bielstein, 1:23-26, 3:14-17), that is splined to drilling sub 18 and drill bit 19 (Ex. 1006, Bielstein, 2:23-24) as shown in Figures 1 and 7, and described above under claims 1c and 15. [Id. at 114; Ex. 1006, Bielstein, 1:18-22, 2:23-24, 3:14-17, Figures 1 and 7]. Accordingly, Bielstein renders claim 18 unpatentable as obvious. [Id. at 115]. Claim 19 [19a] A percussive drilling method comprising the steps: Bielstein discloses a percussion drill as described above under claim 1a, as well as its operation. As such, Bielstein discloses a percussive drilling method. [Ex. 1002, Smith Decl., 116; Ex. 1006, Bielstein, 3:13-45]. [19b] providing a drill having a fluid transmitting body, a drill bit support mounted to the body, a mass movable relative to the body for impacting on the drill bit support, a rotating valve in the body for controlling flow of fluid through the body and a valve motor for driving said valve; and passing drilling fluid through the body and the drill bit support via the rotating valve to vary the flow of the fluid through the body and produce a varying fluid pressure force on the mass to induce acceleration of the mass. Bielstein discloses a percussion drill as well as the operation of the percussion drill. [Ex. 1002, Smith Dec. at 117; Ex. 1006, Bielstein, 3:13-45]. Bielstein 32