UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PASON SYSTEMS USA CORP,
`
`Petitioner,
`
`V.
`
`AUTO-DRIL, 1NC.,
`
`Patent Owner.
`
`Patent No. 6,994,172
`
`Issue Date: February 7, 2006
`
`Title: WELL DRILLING CONTROL SYSTEM
`
`Case IPR: 2016-00624
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,994,172
`
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.1—.80 & 42.100-.123
`
`

`
`Petition for Inter Pctrtes Review of U.S. Patent No. 6,994,172
`
`TABLE OF CONTENTS
`
`£122
`
`TABLE OF AUTHORITIES .................................................................................. ..vi
`
`TABLE OF EXHIBITS ........................................................................................ .. vii
`
`I.
`
`COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW ........................................................................... ..1
`
`A.
`
`B.
`
`C.
`
`Certification that Ray ‘ 172 May Be Contested by Petitioner ............. ..l
`
`Fee for Inter Partes Review (§ 42.l5(a)) ............................................ ..2
`
`Mandatory Notices (37 C.F.R. § 42.8(b)) ........................................... ..2
`
`1.
`
`2.
`
`Real Party in Interest (§ 42.8(b)(l)) .......................................... ..2
`
`Related Matters (§ 42.8(b)(2)) .................................................. ..2
`
`II.
`
`IDENTIFICATION OF CLAIMS BEING CHALLENGED (§ 42.104) ...... ..3
`
`A.
`
`B.
`
`Grounds for Standing under 37 C.F.R. § 42.lO4(a) ............................ ..3
`
`Identification of Challenge under 37 C.F.R. § 42. lO4(b) and
`Statement of Precise Relief Requested ............................................... ..3
`
`C.
`
`Threshold for Inter Partes Review 37 C.F.R. § 42.lO8(c) ................. ..-4
`
`III.
`
`TECHNOLOGY BACKGROUND RELEVANT TO RAY ‘l72 ................ ..4
`
`IV.
`
`SUMMARY OF THE CLAIMED SUBJECT MATTER ............................. ..7
`
`A.
`
`B.
`
`The Claims of Ray ‘I72 ...................................................................... ..7
`
`Summary of the Relevant Prosecution History ................................... ..9
`
`V.
`
`RELEVANT INFORMATION CONCERNING THE CONTESTED
`PATENT ...................................................................................................... .. I 3
`
`Effective Filing Date of Ray ‘I72 ..................................................... ..l3
`
`Person of Ordinary Skill in the Art ................................................... .. 14
`
`A.
`
`B.
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`Petition for Inter Partes Review of US. Patent No. 6,994,172
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`VI.
`
`CLAIM CONSTRUCTION UNDER 37 CPR. § 42.104(B)(3) ................ .. 14
`
`A.
`
`Construction of Terms Used in the Claims ....................................... .. 14
`
`1.
`
`2.
`
`Prime Mover ........................................................................... .. 15
`
`Bit Weight Sensor That is Directly interfaced with Bit
`Support Means ........................................................................ .. 15
`
`B.
`
`Construction of Means Elements for Claims 1-3 .............................. .. 15
`
`1.
`
`2.
`
`3.
`
`4.
`
`“Bit Support Means” of Claim 1 and 3 (Elements 1.4 and
`3.1) .......................................................................................... ..15
`
`The “comparison means” of Claim 1 (Element 1.5) ............... .. 16
`
`“Programmable Control Means” of Claim 1
`The
`(Element 1.6) ........................................................................... ..18
`
`The “Braking Means” of Claims 1 and 3 (Elements 1.6
`and 3.8) .................................................................................... ..18
`
`5.
`
`Further Elements of Claim 3 ................................................... .. 19
`
`a.
`
`b.
`
`The “Sensor Means” of Claim 3 (Element 3.1) ............ .20
`
`Electronic Weight-on-Bit Comparison Means
`(Element 3.2) ................................................................ ..21
`
`i.
`
`The “Memory Means” of Claim 3 (Sub-
`
`Element 3.2.a) ..................................................... ..2l
`
`ii.
`
`The “User Input Means” of Claim 3 (Sub-
`
`Element 3.2.b) .................................................... ..22
`
`iii.
`
`The “Signal Input Means” of Claim 3 (Sub-
`
`Element 3.2.c) ..................................................... ..23
`
`iv.
`
`The “Motor Control Signal Output Means”
`
`of Claim 3 (Sub-Element 3.2.d) ......................... ..23
`
`V.
`
`The “Program Processing Means” of Claim
`
`3 (Sub-Element 3.2.e) ......................................... ..24
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`VII.
`
`PRECISE REASONS FOR RELIEF REQUESTED .................................. ..25
`
`A.
`
`Claims 1, 2, and 3 are Rendered Obvious by Bowden ‘359
`(Ex. 1003) in View ofGuggari 951 (EX. 1004) ................................ ..25
`
`B.
`
`Brief Overview of Bowden ‘359 ....................................................... ..25
`
`Brief Overview of Guggari ‘95l ....................................................... ..27
`
`D.
`
`Detailed obviousness arguments for Claim 1-3 under Bowden
`‘359 in view of Guggari ‘951. ........................................................... ..28
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`Claim 1.0: Both Bowden ‘359 and Guggari ‘95l teach an
`automatic driller system for regulating the release of a
`drill string. ............................................................................... ..28
`
`Claim 1.1: Both Bowden ‘359 and Guggari ‘951 teach a
`drill stem with a drill bit .......................................................... ..29
`
`Claim 1.2: Both Bowden ‘359 and Guggari ‘.951 disclose
`a drawworks. ........................................................................... ..29
`
`Claim 1.3: Both Bowden ‘359 and Guggari ‘95l teach a
`prime mover engaged to the drawworks ................................. ..30
`
`Claim 1.4: A bit weight sensor “directly” interfaced with
`a bit support means and electrically coupled to a bit
`weight comparison means is obvious in view of Bowden
`‘359 and explicitly taught by Guggari ‘95l ............................ ..3l
`
`Claim 1.5: Bowden ‘359 and Guggari ‘95l teach a bit
`weight comparison means
`and generates
`a
`signal
`proportionate to any difference between those two weight
`values ....................................................................................... ..39
`
`teach a
`‘95l
`Claim 1.6: Bowden ‘359 and Guggari
`programmable control means coupled to an electric
`motor that is interfaced with a braking means to control
`the drill string with respect to WOB. ...................................... ..4l
`
`Claim 2.0: Guggari ‘951 teaches using a programmable
`logic controller. ....................................................................... ..44
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`9.
`
`10.
`
`Claim 3.0: Bowden ‘359 and Guggari ‘951 teach using a
`control system for governing drawworks braking in a
`drilling apparatus ..................................................................... ..45
`
`teaches a
`Claim 3.1: Bowden ‘359 and Guggari ‘95l
`sensor means
`for measuring weight—on—bit directly
`through
`a
`bit
`support means
`and
`generating
`a
`proportionate electric signal .................................................... ..45
`
`ll.
`
`Claim 3.2: Guggari ‘95l teaches an electronic weight—on—
`bit comparison means. ............................................................ ..46
`
`a.
`
`b.
`
`c.
`
`(1.
`
`e.
`
`f.
`
`Claim 3.2.a: Guggari ‘95l teaches a computer and
`memory means for storing program logic, data
`received from the sensor, and user input data. ............. ..47
`
`Claim 3.2.b: Both Bowden ‘359 and Guggari ’95l
`teach a user input means for inputting desired
`weight—on—bit data......................................................... ..49
`
`Claim 3.2.c: Guggari ‘951 teaches a signal input
`means for receiving an electronic signal from the
`sensor means and for storing signal data. ..................... ..49
`
`Claim 3.2.d: Bowden ‘359 and Guggari ‘951 teach
`a motor control signal output means for generating
`a variable motor control signal proportionate to a
`desired speed of an electric motor. ............................... ..5O
`
`teaches a processing
`Claim 3.2.e: Guggari ‘95l
`means comparing user
`input data against
`the
`electronic signal data and generating a motor
`control signal proportional to the measured weight-
`on-bit. ............................................................................ ..52
`
`Claim 3.3: Bowden ‘359 and Guggari ‘951 teach
`an electronic motor controlled by a proportionate
`signal from a motor control signal output means
`and connected to a braking means ................................ ..55
`
`VIII. CONCLUSION ............................................................................................ ..6O
`
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`Petition for Inter Partes Review of U.S. Patent No. 6,994,172
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`TABLE OF AUTHORITIES
`
`35 C.F.R. § 42 .......................................................................................................... ..1
`
`37 C.F.R. §42.6(3) ................................................................................................... ..3
`
`37 C.F.R. §42.6(e) .................................................................................................... ..3
`
`37 C.F.R. §42.8(b) ................................................................................................... ..2
`
`37 C.F.R. §42.8(b)(3) ............................................................................................... ..3
`
`37 C.F.R. § 42.8(b)(4) .............................................................................................. ..3
`
`37 C.F.R. §42.10(b) ................................................................................................. ..3
`
`37 C.F.R. §42.15 ...................................................................................................... ..2
`
`37 C.F.R. §42.100(b) ............................................................................................. ..14
`
`37 C.F.R. §42.104 .................................................................................................... ..3
`
`37 C.F.R. §42.104(B)(3) ........................................................................................ ..14
`
`37 C.F.R. §42.104(a) ................................................................................................ ..3
`
`37 C.F.R. §42.104(b) ............................................................................................... ..3
`
`37 C.F.R. §42.105(a) ................................................................................................ ..3
`
`37 C.F.R. §42.108(c) ................................................................................................ ..4
`
`35 U.S.C. § 102(b) ............................................................................................. ..9, 10
`
`35 U.S.C. § 103 ........................................................................................................ ..4
`
`35 U.S.C. §§ 311-319 ............................................................................................... ..1
`
`35 U.S.C. § 314(a) ................................................................................................... ..4
`
`35 U.S.C. § 315(b) ................................................................................................... ..1
`
`D}/Star Textilfarben GmbH & C0. Deutschlcmd KG V. C.H. Patrick C0., 464
`F.3d 1356, 1366 (Fed. Cir. 2006) ..................................................................... ..3-4
`
`In re Katz, 639 F.3d 1303, 1316 (Fed. Cir. 2011) ................................................. ..22
`
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`Petition for Inter Partes Review of U.S. Patent No. 6,994,172
`
`TABLE OF EXHIBITS
`
`
` Ie
`‘Beau re
`James Ray
`A 1001
`U.S. Patent No. 6,994,172
`1002
`* U.S. Patent No. 4,662,608 to John W. Ball
`1003
`U.S. Patent No. 3,265,359 to J. E. Bowden
`1004
`U.S. Patent No. 6,029,951 to Mallappa I. Guggari
`1005
`Declaration of M. Raymond Mercer, Ph.D. (“Mercer”), dated 2016-
`02-15, including Exhibits:
`Exhibit A: The Claims of the ‘172 Patent
`Exhibit B: Declaration of Michael N. Porche
`
`A
`
`Exhibit C: Curriculum Vitae of M. Ray Mercer
`Exhibit D: ‘ 172 Patent File History
`Exhibit E: Claim Charts in Light of Cited Prior Art
`Exhibit F: W. Bolton, Programmable Logic Controllers, (2d ed.
`2000) (excerpts)
`1 Declaration of Michael N. Porche (“Porche”) dated 2016-02-l 5
`Ray ‘ 172 Patent File History
`US. Patent No. 6,293,356 to King, et al.
`U.S. Patent No. 4,843,875 to Kerbart
`Voluntary Dismissal of Civil Action No. 6:15—cv—47 in the Western
`District of Texas.
`r Return of Service for Civil Action No. 6:15—cv—93 in the Western
`
`‘ District of Texas.
`Consolidated Case Transfer Notice for Civil Action No. 16—c\/-280
`in the Southern District of Texas.
`Individual Case Transfer Notice for Civil Action No. 16—cv-287
`Ray ‘172 Patent Figure 2, Claim 1 Demonstrative
`Ray ‘172 Patent Figure 2, Claim 3 Demonstrative
`U.S. Patent No. 4,507,735 to Moorehead
`U.S. Patent No. 4,046,355 to Martin
`
`1006
`1007
`1008
`1009
`1010
`
`1011
`
`1012
`
`1013
`1014
`1015
`1016
`1017
`
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`

`
`I.
`
`COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW
`
`Pason Systems USA Corp. (“Petitioner” or “Pason”) petitions for inter
`
`partes review under 35 U.S.C. §§ 311-319 and 35 C.F.R. § 42 of all claims
`
`(Claims 1-3) of U.S. Patent No. 6,994,172 (Ex. 1001) (“Ray ‘172”).
`
`A.
`
`Certification that Ray ‘172 May Be Contested by Petitioner
`
`Petitioner is not barred or estopped from requesting inter partes review of
`
`Ray ‘172. Neither Petitioner, nor any party in privity with Petitioner, has filed a
`
`civil action challenging the validity of any claim of Ray ‘l72, which also has not
`
`been the subject of a prior inter partes review.
`
`Petitioner was served (return not filed with the court) with a complaint
`
`alleging infringement of Ray ‘l72 on February 24, 2015 (then Civil Action
`
`No. 6:15~cv—47) in the Western District of Texas, which was voluntarily dismissed
`
`on March 18, 2015. (Ex. 1010). Petitioner then was served on April 17, 2015
`
`(return filed) with another Ray ‘I72 infringement action, (Ex. 1011), as Civil
`
`Action No. 6:15—cv-93, and that case has now been transferred to the Southern
`
`District of Texas, as consolidated Civil Action No. 16-cv-280, Auto-Dril, Inc. v.
`
`National Oilwell Varco LP, Pason Systems USA Corp., and Canrig Drilling
`
`Technology Ltd.,
`
`(Ex. 1012), and also been assigned individual Civil Action
`
`No. 16—cv-287, Auto—Dril, Inc. v. Pason Systems USA Corp., in that same district
`
`and division (Ex. 1013). This petition complies with 35 U.S.C. § 3l5(b).
`
`

`
`Petition for Inter Partes Review of US. Patent No. 6,994,172
`
`B.
`
`Fee for Inter Partes Review (§ 42.15(a))
`
`Petitioner requests review of all three Claims of Ray ‘l72. Payment of
`
`$23,000 as per 37 C.F.R. § 42.15 was made, and Petitioner has received the
`
`following Fed/Swift confirmation number: 02l6llB7031R007-411. The Director is
`
`authorized to charge any fiirther fees regarding this Petition to the undersigned’s
`
`Deposit Account Number No. 012511.
`
`C. Mandatory Notices (37 C.F.R. § 42.8(b))
`
`All Mandatory Notices under 37 C.F.R. § 42.8(b) are provided as follows:
`
`1.
`
`Real Party in Interest (§ 42.8(b)(1))
`
`The real party in interest of this petition pursuant to § 42.8(b)(l) is Pason,
`
`located at 16035 Table Mountain Parkway, Golden, Colorado 80403, USA, and
`
`further potential real party in interest is the parent of Pason, Pason Systems Inc.,
`
`located at 6130 Third Street SE, Calgary AB T2H 1K4, Canada.
`
`2.
`
`Related Matters (§ 42.8(b)(2))
`
`Auto-Dril, Inc. v. National Oilwell Varco, L.P., consolidated and individual
`
`Civil Action No. 16—cv—280, in the Southern District of Texas; Auto-Dril, Inc. v.
`
`Canrig Drilling Technology, Ltd., individual Civil Action No. 16-cv—293 in the
`
`Southern District of Texas; and National Oilwell Varco, L.P. v. Auto-Dril, Inc,
`
`No. 5:15-cv~27—CMC, in the Eastern District of Texas, Texarkana Division.
`
`Auto-Dril, Inc. also filed cases against three additional defendants in the
`
`Western District of Texas, but those defendants were quickly dismissed with
`
`5-17556.9
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`

`
`Petition for Inter Partes Review of US. Patent No. 6,994,172
`
`prejudice——patent infringement cases against Integrated Drive Systems, LLC (Civil
`
`Action No. 6:15-cv-95); Omron Oilfield & Marine, Inc. (Civil Action No. 6:l5—cv-
`
`94), and Helmerich & Payne, Inc. (Civil Action No. 6:15-cv-92).
`
`1.
`
`Designation of Lead and Backup Counsel (§ 42.8(b)(3))
`
`Lead Counsel: Gordon T. Arnold, Reg. No. 32,395, garnold@arnold-
`
`iplaw.com, 713-972-1150.
`
`Backup Counsel: Christopher P.
`
`l\/lcKeon, Reg.
`
`No. 63,281, cmckeon@arnold-iplaw.com, 713-972-1150. Petitioner consents to
`
`service by email to the designated Lead and Backup Counsel listed herein.
`
`2.
`
`Proof of Service (§§ 42.8(b)(4), 42.6(e), and 42.105(a))
`
`Proof of service of this petition is provided in Attachment A.
`
`3.
`
`Power of Attorney
`
`Filed as Attachment B in accordance with 37 C.F.R. § 42.l0(b).
`
`II.
`
`IDENTIFICATION OF CLAIMS BEING CHALLENGED (§ 42.104)
`
`A.
`
`Grounds for Standing under 37 C.F.R. § 42.104(a)
`
`Ray ‘172 is eligible for inter partes review. Petitioner is not barred or
`
`otherwise estopped from requesting inter partes review.
`
`B.
`
`Identification of Challenge under 37 C.F.R. § 42.104(b) and
`Statement of Precise Relief Requested
`
`Petitioner requests that the Patent Trial and Appeal Board (the “Board”)
`
`initiate inter partes review of Claims 1-3 of Ray ‘172, and find these Claims
`
`unpatentable based on the ground that Claims 1, 2, and 3 of Ray ‘172 are obvious
`
`54'/556.9
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`
`Petition for Inter Partes Review of U.S. Patent No. 6,994,172
`
`over the prior art under 35 U.S.C. § 103 by U.S. Patent No. 3,265,359 (Bowden
`
`‘359) (Ex. 1003) in view ofU.S. Patent No. 6,029,951 (Guggari ‘95l) (Ex. 1004).
`
`Petitioner’s construction of the Claims, the evidence relied upon, and the
`
`precise reasons for obviousness are provided in Section VII, below. This Petition
`
`cites additional prior art materials for purposes of providing a technology
`
`background and describing the state of the art at the time of the alleged invention.
`
`These materials are also cited and discussed in the accompanying Declaration of
`
`M. Ray Mercer dated February 15, 2016 (Ex. 1005) (“Mercer Dec1.”), an expert in
`
`control systems, and the Declaration of Michael N. Porche dated February 15,
`
`2016 (Ex. 1006) (“Ex. 1006, Porche Decl.”), an industry expert in autodrillers.
`
`C.
`
`Threshold for Inter Partes Review 37 C.F.R. § 42.108(e)
`
`This Petition demonstrates “a reasonable likelihood that the Petitioner would
`
`prevail with respect to at least 1 of claims challenged.” 35 U.S.C. § 314(a). Each
`
`limitation of each Claim challenged is taught by the prior art, and is obvious in
`
`View of the prior art, as explained below.
`
`Figure 1
`
`30
`
`l
`
`III. TECHNOLOGY BACKGROUND
`
`RELEVANT TO RAY ‘172
`
`invention in Ray ‘I72 is the automation of
`
`As
`
`explained
`
`by
`
`industry
`
`expert
`
`Michael Porche,
`
`(Ex.
`
`1006),
`
`the alleged
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`drilling oil and gas wells (Figure 1) that are controlled manually with a brake
`
`handle. At the time that the application for the patent was filed, June 24, 2002, the
`
`drilling industry had already been automating the operation of drilling rigs for a
`
`number of years. The goals expressed in Ray ‘l72 included a desire to avoid delay
`
`and inaccuracy due to the use of hydraulic fluid pressure (Ex. 1001, Ray ‘172,
`
`l:52-59). The object of that desire was to allow “as rapid drilling progress as strata
`
`allows.” (Id., 2:26-27).
`
`Specifically, Ray ‘172 was attempting to automate controls based on the
`
`“weight-on-bit” of oilfield drilling rigs that operate by rotating a bit against the
`
`earth to bore a hole. The bit is attached to a series of pipes, and the weight of those
`
`pipes presses the bit into the earth as it rotates. The amount of weight—on-bit is
`
`controlled by holding some of the weight of the pipes up in a structure called a
`
`“derrick.” Figure l of Ray ‘l72, above, shows the series of pipes (sometimes
`
`called a “drillstem” or “drill string”) and the bit supported in the derrick by a single
`
`cable (for example, cable 20). One end of the cable (sometimes called the
`
`“fastline”) is wound on a large drum; the other end (sometimes called a “deadline”)
`
`is anchored to the derrick (Via drum 28 in Figure l). The drawworks (referred to as
`
`hoisting unit in Bowden ‘359) includes a drum, motors (including the prime
`
`mover), brakes, gears, power
`
`transmission,
`
`clutches,
`
`encoder,
`
`and other
`
`accessories. (Ex. 1006, Porche Decl., 1] 11). The prime mover (usually a diesel or
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`electric motor) rotates the drum. Rotating the drum (22 of Figure 1) moves a
`
`traveling block, and hence the attached drill string, up and down. When the cable
`
`on the drum is unwound, the drill string tends to move downward. When it is
`
`wound up, the drill string moves up.
`
`Ray ‘I72 seeks to control the weight applied to the bit (generally referred to
`
`as “weight-on-bit”, “bit weight”, or “WOB”). The actual WOB is not
`
`truly
`
`measured. An acceptable industry standard approximation of WOB is equal to
`
`subtracting the measured weight on the cable while drilling from the total weight
`
`of the drill string.
`
`Increasing the WOB generally increases the rate of penetration
`
`(“ROP”). The weight—on—bit applied by the drill string is arrested by applying a
`
`brake to the drum 22. As the bit continues to drill without movement of the drum,
`
`the WOB decreases. This is referred to as a “drill off.”
`
`As the bit drills into the earth,
`
`the WOB varies due to geological and
`
`mechanical factors. If there is not enough WOB, the brake is released to some
`
`extent, allowing more of the weight of the drill string to be applied to the bit.
`
`During drilling operations,
`
`the brake is used to slowly unwind the drum in a
`
`controlled fashion.
`
`The brake mechanism (24 in Figure l) is controlled by attaching a cable or
`
`some other actuator to the brake and controlling that actuator with a motor. The
`
`motor is controlled based on measurements from a sensor on the deadline. The
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`sensor senses the tension in the cable supporting the drill string. An electric signal
`
`from the sensor is used by an electronic comparison device to approximate the
`
`WOB. The approximation is compared by the electronic comparison device to a
`
`user—selected desired WOB value. The electronic comparison device outputs a
`
`command to a motor controller causing the motor to release or apply the brake,
`
`based on the difference between the measured WOB and the desired WOB.
`
`Applying the brake causes the WOB to decrease through drill off; releasing the
`
`brake increases WOB.
`
`As will be shown, all of this, including each element and sub-element of
`
`each claim, was taught in the prior art.
`
`IV.
`
`SUMMARY OF THE CLAIMED SUBJECT MATTER
`
`A.
`
`The Claims of Ray ‘172
`
`Ray ‘172 has
`
`Independent Claims
`
`1 and 3. Claim 2 depends from
`
`Independent Claim 1. Many of the elements in Claims 1 and 3 are written in
`
`“means-plus-function” claim format. The claims broken down by elements, to
`
`which reference numbers are applied for use in this Inter Partes Review, follow:
`
`7 Element
`
`Claim Language
`
`
`
`
`
`
`An automatic drilling system for regulating the release ofa drill string
`
`
`of drillin '
`‘
`the drillin of a borehole, comrisin:
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`'
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`1.3
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`a prime mover engaged to said drawworks to cause said drawworks to
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`Petition for Inter Partes Review of U.S. Patent No. 6,994,172
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`alternatively move said stem upward and downward;
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`
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`a bit weight sensor configured for measuring bit weight through direct
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`interface with bit support means which, at least in part, supports the
`weight of said drill bit, and which is electrically coupled to a[n]
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`electronic bit weight comparison means,
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`where said bit weight comparison me[a]ns compares actual bit weight
`indicated by said bit weight sensor against a user—selected, bit weight
`value set
`into said electronic bit weight comparison means, and
`generates a signal proportionate to any difference between said actual
`'
`'
`' pre-selected bit wei ht value;
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`1.4
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`1.5
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`1.6
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`programmable control means operatively coupled to a variable drive
`electric motor which is interfaced with drill stem braking means to
`proportionately effect movement of said drill string in said upward or
`downward direction upon receipt of signals from said electronic bit
`weight comparison means according to the value of said signal.
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`2.0
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`The automatic drilling system of claim 1 where the electronic bit
`wei ht comarison means includes a rorammable lo ical controller.
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`
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`A control system for governing drawworks braking in an earth drilling
`a aratus which includes a drill stem comrisin:
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`3.1
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`string
`for measuring weight—on-bit of said drill
`sensor means
`configured for measuring bit weight directly through interface with bit
`support means which, at least in part, supports the weight of said drill
`bit, and for generating an electronic signal proportionate to measured
`weight—on-bit during a drilling operation;
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`electronic weight—on-bit comparison means comprising:
`3.2
`Sub—elements 3.2a — 3.2e
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`computer and memory means for storing program logic, data
`received from said sensor, and user input data;
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`user input means for inputting said user input data which is
`representative of a desired weight—on-bit for a drilling operation;
`signal input means for receiving said electronic signal from said
`sensor means and for storing data representative of said electronic
`signal;
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`
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`motor control signal output means for generating a variable motor
`control signal which is proportionate to a desired speed of
`operation of an electric motor operatively connected to said motor
`control sinal output means;
`computer data and program processing means for comparing said
`user input data against said data representative of said electronic
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`547556.‘)
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`Petition for Inter Partes Review of U.S. Patent No. 6,994,172
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`signal and generating a motor control command for sa[i]d motor
`control signal output means, operably connected to said computer
`data and program processing means,
`to generate said variable
`motor control signal in proportion to any measured weight~on—bit;
`and
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`3.3
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`an electronic motor operatively connected to said motor control signal
`output means and, via a gearbox, to braking means for, depending on
`the RPM rate of said electric motor, moving said braking means at
`proportional
`rates
`for
`controlling weight—on—bit upwardly
`or
`downwardly during a drilling operation, and RPM rate of said electric
`motor being governed by and proportionate to said motor control
`signal.
`
`Summary of the Relevant Prosecution History
`
`On June 24, 2002, Application No.: 10/178,802 was filed. (Ex. 1001, Ray
`
`‘ 172, cover page, field (22)). Initially, the Examiner rejected all three submitted
`
`claims as being anticipated under 35 U.S.C. §102(b) by U.S. Patent No. 4,662,608
`
`to Ball (“Ball ‘608”). (Ex. 1007, Ray File Hist., pp. 83-86, Non—Final Rejection,
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`2003-08-27).
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`In response, the Applicant argued that Ball ‘608’s control system
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`was not “electrical” and that Ball ‘608 could not target a predetermined WOB
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`value in the same way as the alleged invention. (Ex. 1007, pp. 77-78, Response
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`2004-03-09). The Examiner
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`rejected the Applicant’s arguments, making the
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`rejection final. (Ex. l007, pp. 6873, Final Rejection, 2004-04-27).
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`The Applicant responded by adding limitations to explicitly state that the
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`WOB sensor is electrically coupled to the WOB comparison means and added
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`limitations for “incremental units.” (Ex. 1007, pp. 60-67, Response After Final,
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`2004-05-07).
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`In response to an Advisory Action rejecting the Claim amendments
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`because they introduced new issues after a final rejection, (Ex. 1007, pp. 57-59,
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`Advisory Action, 2004-06-01),
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`the Applicant
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`filed a Request
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`for Continued
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`Examination,
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`reasserting the amended claims.
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`(Ex. 1007, p. 56, Request for
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`Continued Examination, 2004-07-01). The Examiner
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`found the
`
`argument
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`unpersuasive, and again rejected the arguments and the Claims under 35 U.S.C.
`
`§l02(b), again citing Ball ‘608. (Ex. 1007, pp. 47-51, 2004-09-02).
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`The Applicant then amended the Claims to further include a limitation that
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`the WOB is “directly” interfaced with the “bit support means” (i.e., the cable).
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`The Applicant argued that amending the claim to recite a “direct interface” with
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`the “bit support means” distinguished the Claims 1-3 over the Ball ‘608 reference.
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`(Ex. 1007, Ray File Hist., pp. 34-39, Claim Amendments/Response, 2005-02-16).
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`Ball ‘608 disclosed that “[t]he tension in the [deadline] 27 is measured by a
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`hydraulic pressure sensor 35 connected on deadline 30 and having a hydraulic line
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`36 extending to a drill bit weight indicator gauge...” (Ex. 1002, Ball ‘608, 4:34).
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`The drill bit indicator gauge is described in conjunction with Figure 9 of Ball ‘608
`
`as follows: “Pressure transducer 108 is connected in the hydraulic line 36b from
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`the pressure sensor 36. Pressure transducer 108 produces an electric output through
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`electrical connection 109 to amplifier 110....” (Ex. 1002, Ball ‘608, 7:50-53).
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`Petition for Inter Partes Review of U.S. Patent No. 6,994,172
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`It was
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`these teachings of Ball
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`‘608 that
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`the Applicant
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`said were
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`distinguished by Applicant’s “direct interface” with the “bit support means”:
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`Accordingly,
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`the present claims have been amended to add the
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`limitation that
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`the WOB sensor measures WOB through direct
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`interface with a "bit support means” (usually the cable from which the
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`drill string is suspended), as opposed to the prior art's indirect reading
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`derived from an existing hydraulic line which leads to a conventional
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`WOB gauge-the primary source of inaccuracy of the prior art system's
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`approach. This is a crucial distinction from the cited prior art, and
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`accounts for the substantial increase in accuracy of the present system,
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`over that of Ball which indirectly derives WOB through measurement
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`of hydraulic fluid pressures [Ex. 1002, Ball
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`‘608, 8220-38]. The
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`present amendments are supported by the original specification, at
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`least at page 10, line 17- page 11, line 10.
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`(EX.l007, ‘ 172 File Hist, p. 38, Applicant Arguments / Remarks, 2005-02-16)
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`(Emphasis added). The Applicant cited the following language from the
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`Applicant’s original specification in support of the “direct interface” limitation
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`states:
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`Still another advantage of the drilling system of the invention is its
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`adaptability to monitor bit weight and/or bit torque and utilize one or
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`both parameters as at determining in the release of the drilling string.
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`In such a fashion, selective control of downhole mud motors may be
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`achieved.
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`Even more advantages of the invention will become obvious in light
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`of the following detailed description of the preferred embodiments.
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`(Id., p. 38, referencing p. 228 of prosecution history). Applicant provided a
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`description of sensors at page 13 of the original application (Id, p. 230):
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`By reference, however, to Figs. 3A and 3B, the system 10 includes 16
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`a cable tension sensor assembly 41 which includes a sensor 44 and a
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`transducer 65 to measure drill string weight. The sensor 44, which
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`may be any one of a number of commercially available sensors, is
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`connected to cable 20 and senses the tension, and hence drill string
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`weight, of cable 20.
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`Both types of sensors generate an electric signal when a diaphragm holding
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`hydraulic fluid is acted on by change in tension in the cable. (Ex. 1007, Ray File
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`Hist., p. 231, lines 4—7, Specification, 2002-06-24).
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`The claims were then allowed. (Ex. 1007, p. 19, Notice of Allowance, 2005-09-
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`13). From the above prosecution history,
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`the Applicant’s “direct
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`interface”
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`limitation must be interpreted to mean a cable tension sensor that generates an
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`electrical output signal at the cable, rather than a sensor that transmits a pressure
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`signal to a pressure transducer that is then converted to an electrical signal.
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`Allowance of the Claim based on the “direct interface” of the sensor to the
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`bit support means was flawed. It assumes that such sensors did not exist in the
`
`prior art; however, they are seen in a multitude of drilling references, including for
`
`example:
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`...a load sensing device, such as a strain [gauge] 90 is affixed to the
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`dead line 35, and produces an electrical signal on output
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`line 95
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`representative