Takeaway: When arguing anticipation, a petitioner must provide evidence beyond attorney argument to support its assertion that a limitation is disclosed, especially if that disclosure is inherent.

In its Decision, the Board determined that Petitioner had not shown a reasonable likelihood that it would prevail in challenging any of the challenged claims (1-17) of the ’215 Patent.  Therefore, the Board denied institution.  The ’215 Patent is directed to a gas and liquid separator and method for separating gas and liquid from a production fluid in a well.

The Board began with claim construction, noting that the terms are given their broadest reasonable construction in light of the specification.  The first term reviewed was “means, positioned a between said first and second chambers, for restricting fluid flow to generate a pressure drop in said production fluid and to separate gas and liquid as said production fluid enters said second chamber.”  Specifically, the Board was determining the corresponding structure disclosed in the specification.  The Board found that the claimed functions are (1) restricting fluid flow to generate a pressure drop in the production fluid, and (2) restricting fluid flow to separate gas and liquid as the production fluid enters said second chamber.  The Board agreed with Petitioner that the structure associated with these functions is bearing housing 54 with passages 69.  Petitioner also proposed constructions for “internal pump,” “diagonally extending passages,” and “paddle,” but the Board did not find it necessary to resolve these constructions.

The Board then turned to the asserted grounds of unpatentability.  The first ground was that claims 1-4 and 6-17 are unpatentable as anticipated by Lee ’193.  The Board found that Petitioner had failed to persuade it that Lee ’193 discloses the recited means of claim 1.  Specifically, the Board found that Petitioner failed to support its contention that diffuser 42 necessarily restricts flow because it increases pressure in the production fluid because the claim requires a pressure drop in the production fluid, and that Petitioner failed to show how the diffuser 42 functions to separate gas and liquid components of the fluid.

The Board then discussed the second ground of unpatentability – that claim 5 is obvious over Lee ’193 and Carle.  The Board noted that the argument for claim 5 suffered from the same issues as the first ground, and that Petitioner did not explain how Carle remedied this deficiency.

Next, the Board reviewed whether claims 1-4, 8, and 10-16 are anticipated by Tuzson.  The Board found that Petitioner failed to persuade it that Tuzson discloses the recited means of claim 1, specifically that impeller stage 12 performs the recited functions.  The Board found that Petitioner failed to support its contention that impeller stage 12 necessarily restricts flow.  Petitioner argued that it was inherent, however, the Board found that Petitioner did not provide enough evidence to support that conclusion.  The Board also noted that Petitioner did not show that impeller stage 12 functions to generate a pressure drop in the production fluid and failed to explain how the impeller of impeller stage 12 constitutes a flow restriction.  The Board noted arguments from Patent Owner’s Preliminary Response in making these findings.

Finally, the Board analyzed the last ground of unpatentability – that claims 1-4 and 6-17 are obvious over Lee ’193 and Lee ’345.  The Board noted that Petitioner relied upon Lee ’193 for disclosing many of the limitations, and that the Board had already found that those limitations were not disclosed by Lee ’193.

Legacy Separators, LLC v. Halliburton Energy Services, Inc., IPR2015-01526

Paper 10: Decision Denying Institution of Inter Partes Review 

Dated: December 4, 2015 

Patent 6,731,215 B2 

Before: Josiah C. Cocks, Susan L. Mitchell, and James J. Mayberry

Written by: Mayberry