Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
` Paper 11
` Entered: March 8, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DYNAENERGETICS US, INC. and
`DYNAENERGETICS GMBH & CO. KG,
`Petitioner,
`
`v.
`
`GEODYNAMICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-02008
`Patent 8,220,394 B2
`____________
`
`
`
`Before BEVERLY M. BUNTING, TIMOTHY J. GOODSON and
`ROBERT J. SILVERMAN, Administrative Patent Judges.
`
`SILVERMAN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
`
`
`
` Paper 11
` Entered: March 8, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DYNAENERGETICS US, INC. and
`DYNAENERGETICS GMBH & CO. KG,
`Petitioner,
`
`v.
`
`GEODYNAMICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-02008
`Patent 8,220,394 B2
`____________
`
`
`
`Before BEVERLY M. BUNTING, TIMOTHY J. GOODSON and
`ROBERT J. SILVERMAN, Administrative Patent Judges.
`
`SILVERMAN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2017-02008
`Patent 8,220,394 B2
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`I. INTRODUCTION
`
`Petitioner filed a Petition (Paper 1, “Pet.”) requesting inter partes
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`review of claims 1–6, 11–26, and 28 (the “challenged claims”) of U.S.
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`Patent No. 8,220,394 B2 (Ex. 1001, “the ’394 patent”). Patent Owner filed a
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`Preliminary Response to the Petition. Paper 8 (“Prelim. Resp.”).
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`We have authority under 35 U.S.C. § 314, which provides that an
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`inter partes review may not be instituted “unless . . . there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
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`claims challenged in the petition.” We decide whether to institute an inter
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`partes review on behalf of the Director. Upon consideration of the Petition
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`and Patent Owner’s Preliminary Response, and for the reasons explained
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`below, we determine that Petitioner has not demonstrated that there is a
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`reasonable likelihood that the challenged claims are unpatentable.
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`Accordingly, we do not institute an inter partes review of any of the
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`challenged claims of the ’394 patent.
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`A. Related Matters
`
`The parties state that Patent Owner is asserting the ’394 patent in a
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`civil action in the U.S. District Court for the Eastern District of Texas,
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`GeoDynamics, Inc. v. DynaEnergetics US, Inc., Civil Action No. 2:17-cv-
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`00371. Pet. 6; Paper 4, 2. The parties do not list any related proceedings
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`before the Board.
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`B. The ’394 Patent (Ex. 1001)
`
`The ’394 patent relates to a reactive shaped-charge liner for a
`
`perforator used in oil and gas well completions. Ex. 1001, Abstract, 1:5–7.
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`The process of carrying out a completion involves providing a flow path
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`between the well bore and the surrounding formation (also known as the
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`production zone). Id. at 1:11–14. Typically, such a flow path is formed
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`Patent 8,220,394 B2
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`with the use of a perforator that employs a shaped charge of energetic
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`material in the process of perforation — i.e., creating an opening in the
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`casing of the well bore that extends into the formation. Id. at 1:15–20. The
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`’394 patent provides the following description of a shaped-charge perforator:
`
`A shaped charge is an energetic device made up of a
`housing within which is placed a typically metallic liner. The
`liner provides one internal surface of a void, the remaining
`surfaces being provided by the housing. The void is filled with
`an explosive which, when detonated, causes the liner material
`to collapse and be ejected from the casing in the form of a high
`velocity jet of material. This jet impacts upon the well casing
`creating an aperture, the jet then continues to penetrate into the
`formation itself, until the kinetic energy of the jet is overcome
`by the material in the formation. The liner may be
`hemispherical but in most perforators is generally conical. The
`liner and energetic material are usually encased in a metallic
`housing.
`
`Id. at 1:29–41.
`
`Figure 1 of the ’394 patent is reproduced below:
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`Figure 1 is a cross-sectional view of a shaped charge that includes a
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`substantially cylindrical housing 2, a liner 6 that fits closely in the open end
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`8 of the cylindrical housing 2, and high explosive material 3 within the
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`volume enclosed between the housing and the liner. Id. at 7:7–16.
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`Typically, a detonator or detonator transfer cord is located in recess 4 and is
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`used to initiate the high explosive material. Id. at 7:16–20.
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`The ’394 patent states that one aspect of the invention is to provide a
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`liner material that is capable of an exothermic reaction upon activation of the
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`explosive material, which can provide thermal energy — in addition to the
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`kinetic energy of the jet — that can be directed into the target substrate and
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`may help to further distress and fracture the completion, so as to improve
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`fluid outflow. Id. at 2:31–35, 50–60, 4:5–7, 6:6–8, 54–60. Another benefit
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`of the reactive liner is that the liner material may be consumed, such that
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`there is no slug of liner material left in the hole formed by the perforation.
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`Id. at 8:8–11. Such an exothermic reaction of the liner can be achieved with
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`a stoichiometric (molar) mixture of at least two metals which are capable
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`upon activation of the shaped charge liner to produce an intermetallic
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`product and heat. Id. at 2:61–3:3. The preferred metal-metal compositions
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`identified in the ’394 patent are the combinations of nickel with aluminum
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`and palladium with aluminum. Id. at 3:45–48. Further, according to the
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`’394 patent, the liners give particularly effective results when the two metals
`
`are provided in “proportions calculated to give an electron concentration of
`
`1.5, that is a ratio of 3 valency electrons to 2 atoms such as in NiAl or
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`PdAl.” Id. at 3:52–56, 7:27–36. The ’394 patent states that testing has
`
`shown NiAl to give particularly good results. Id. at 7:46–47.
`
`Another aspect of the invention is the use of a further metal, in the
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`liner, which is considered to be inert and does not participate in the
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`exothermic reaction when the shaped charge is activated. Id. at 5:43–46.
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`Patent 8,220,394 B2
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`The addition of inert metal provides additional mechanical strength to the
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`liner and increases the penetrative power of the jet. Id. at 5:49–51, 55–59.
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`Tungsten and copper have high density and ductility, which makes them
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`desirable materials for this purpose. Id. at 5:51–55.
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`C. Illustrative Claim
`
`Of the challenged claims, claims 1 and 28 are independent. Claims 2–
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`6 and 11–26 depend, directly or indirectly, from claim 1. Claim 1 is
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`representative of the challenged claims, and is reproduced below (with line
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`breaks and indentations added):
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`1. A reactive, oil and gas well shaped charge perforator
`comprising
`
`a liner and an associated shaped charge,
`
`whereby the liner is a green compacted particulate
`composition formed from a powder mixture comprising at least
`two metal elements, and
`
`whereby the liner is reactive such that the at least two
`metal elements will undergo an intermetallic alloying reaction
`to give an exothermic reaction upon activation of the associated
`shaped charge, and
`
`in which the at least two metal elements are provided in
`respective proportions calculated to give an electron
`concentration of 1.5, and
`
`wherein the composition further comprises at least one
`further inert metal,
`
`wherein the at least one further inert metal is not capable
`of an exothermic reaction with the at least two metal elements
`upon activation of the shaped charge liner.
`
`Ex. 1001, 7:64–8:10.
`
`
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`Patent 8,220,394 B2
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`D. Grounds Asserted
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`Petitioner asserts the following grounds of unpatentability:
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`References
`
`Basis
`
`Claims Challenged
`
`Liu1 and Fischer2
`
`§ 103 1–3, 17–26, and 28
`
`Liu and Theis3
`
`§ 103 1–3, 17–26, and 28
`
`Liu and Becker4
`
`§ 103 1–4, 6, 12, 17–26, and 28
`
`Liu, Fischer, and Reese5
`
`§ 103 4, 5, and 11
`
`Liu, Fischer, and Bourne6
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`§ 103 12, 13, and 14
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`Liu, Fischer, and Lussier7
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`§ 103 15 and 16
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`In addition to the references listed above, Petitioner relies on the declaration
`
`of Dr. William Place Walters (Ex. 1013).
`
`II. ANALYSIS
`
`A petition must show how the construed claims are unpatentable
`
`under the statutory ground it identifies. 37 C.F.R. § 42.104(b)(4). Petitioner
`
`bears the burden of demonstrating a reasonable likelihood that Petitioner
`
`
`1 U.S. Patent No. 7,393,423 B2, issued July 1, 2008, Ex. 1004.
`2 S.H. Fischer and M.C. Grubelick, A Survey of Combustible Metals,
`Thermites, and Intermetallics for Pyrotechnic Applications, Paper No.
`SAND95-2448C (July 1996), Ex. 1005.
`3 FR2749382 A1, published December 5, 1997, Ex. 1006 (includes certified
`English translation). Citations to Theis, herein, refer to the English
`translation.
`4 WO 01/77607 A1, published October 18, 2001, Ex. 1007.
`5 U.S. Patent No. 7,011,027 B2, issued March 14, 2006, Ex. 1008.
`6 WO 03/042625 A1, published May 22, 2003, Ex. 1009.
`7 U.S. Patent No. 6,668,726 B2, issued December 30, 2003, Ex. 1010.
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`would prevail with respect to at least one challenged claim for a petition to
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`be granted. 35 U.S.C. § 314(a).
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`A. Claim Construction
`
`We interpret the claims of an unexpired patent using the broadest
`
`reasonable interpretation in light of the specification of the patent. 37 C.F.R.
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`§ 42.100(b); Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46
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`(2016) (upholding the use of the broadest reasonable interpretation
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`standard). Under this standard, a claim term generally is given its ordinary
`
`and customary meaning, as would be understood by one of ordinary skill in
`
`the art in the context of the entire disclosure. See In re Translogic Tech.,
`
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for
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`claim terms or phrases must be set forth with reasonable clarity,
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`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`
`1994). In the absence of such a definition, limitations are not to be read
`
`from the specification into the claims. See In re Van Geuns, 988 F.2d 1181,
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`1184 (Fed. Cir. 1993).
`
`Petitioner (see Pet. 14–16) and Patent Owner (see Prelim. Resp. 52–
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`55) advance different constructions of the claim term “two metal elements
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`are provided in respective proportions calculated to give an electron
`
`concentration of 1.5,” which appears in each of the independent claims 1 and
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`28. Petitioner contends that this claim language is unclear, but is
`
`nevertheless capable of being construed, to the extent that the limitation is,
`
`at least, satisfied by stoichiometric combinations of aluminum/nickel and
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`aluminum/palladium. Pet. 15–16. For the purpose of evaluating the
`
`Petition, Patent Owner does not dispute the use of this construction.
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`Petitioner’s position appears to be consistent with the ’394 patent’s
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`Specification, Patent Owner’s statements during prosecution of the ’394
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`patent, and Patent Owner’s infringement contentions in district court
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`litigation involving the ’394 patent. See id. at 14–16. Accordingly, we
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`adopt Petitioner’s proposed construction of this claim term. Specifically, we
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`adopt Petitioner’s position that the claim term — i.e., “two metal elements
`
`are provided in respective proportions calculated to give an electron
`
`concentration of 1.5” — is satisfied by stoichiometric combinations of
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`aluminum/nickel and aluminum/palladium. See Pet. 15–16.
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`Additionally, Petitioner contends that the following language of
`
`independent claims 1 and 28 is unclear: “at least one further inert metal,
`
`wherein the at least one further inert metal is not capable of an exothermic
`
`reaction with the two metal elements.” Id. at 16. Nevertheless, Petitioner
`
`contends that this claim language is capable of being construed, to the extent
`
`that the limitation is, at least, satisfied by the ’394 patent’s exemplary “inert”
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`metals of tungsten and copper. Id. For the purpose of evaluating the
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`Petition, Patent Owner does not dispute the use of this construction. In the
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`absence of a dispute, we adopt Petitioner’s proposed construction of this
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`claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
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`803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
`
`controversy, and only to the extent necessary to resolve the controversy.”)
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`Specifically, we adopt Petitioner’s position that the claim term — i.e., “at
`
`least one further inert metal, wherein the at least one further inert metal is
`
`not capable of an exothermic reaction with the two metal elements” — is
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`satisfied by copper and tungsten. Id. at 16.
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`Finally, Patent Owner provides a construction of the term “green
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`compacted particulate composition,” which appears in independent claims 1
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`Patent 8,220,394 B2
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`and 28. Prelim. Resp. 51–52. However, Patent Owner does not dispute that
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`the Liu reference, which Petitioner relies upon for teaching the limitation
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`(see, e.g., Pet. 17, 29), satisfies the “green compacted” limitation.
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`Accordingly, an express construction of this claim term is not “necessary to
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`resolve the controversy.” Vivid Techs., 200 F.3d at 803.
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`B. Legal Standard for Obviousness
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`A claim is unpatentable under § 103(a) if the differences between the
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`claimed subject matter and the prior art are such that the subject matter, as a
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`whole, would have been obvious at the time the invention was made to a
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`person having ordinary skill in the art to which said subject matter pertains.
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
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`obviousness is resolved on the basis of underlying factual determinations,
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`including (1) the scope and content of the prior art; (2) any differences
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`between the claimed subject matter and the prior art; (3) the level of skill in
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`the art; and (4) when in evidence, objective indicia of non-obviousness (i.e.,
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`secondary considerations). Graham v. John Deere Co., 383 U.S. 1, 17–18
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`(1966). “To satisfy its burden of proving obviousness, a petitioner cannot
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`employ mere conclusory statements. The petitioner must instead articulate
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`specific reasoning, based on evidence of record, to support the legal
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`conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
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`1364, 1380 (Fed. Cir. 2016).
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`An obviousness analysis that involves a combination of references
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`must be supported by a reason, based upon rational underpinnings, why a
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`person of ordinary skill would have been motivated to combine the prior art
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`to achieve the claimed invention. In re Nuvasive, Inc., 842 F.3d 1376,
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`1381–82 (Fed. Cir. 2016); In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
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`(cited with approval in KSR, 550 U.S. at 418). The requirement of a reason
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`to combine is a safeguard against hindsight bias, which is characterized by
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`the “temptation to read into the prior art the teachings of the invention in
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`issue.” KSR, 550 U.S. at 421 (quoting Graham, 383 U.S. at 36).
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`C. Asserted Obviousness over Liu and Fischer
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`Petitioner challenges the patentability of claims 1–3, 17–26, and 28
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`under 35 U.S.C. § 103(a) as obvious over Liu and Fischer. Pet. 16–41.
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`Relying on the testimony of Dr. Walters, Petitioner alleges that the
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`combined references teach or suggest all the limitations of these challenged
`
`claims and that a person of ordinary skill in the art would have combined the
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`references, so as to achieve the claimed subject matter. Id. Patent Owner
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`disputes that the cited references teach or suggest all of the limitations of the
`
`challenged claims and that a person of ordinary skill in the art would have
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`combined the references in the manner Petitioner alleges. Prelim. Resp. 2–3,
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`6–8, 10–17, 22–28, 33–37, 43–47, 55–56. We begin our analysis with a
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`brief summary of these references, and then address the parties’ contentions
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`in turn.
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`1. Summary of Liu
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`Liu discloses the use of perforators that may be used in the oil and gas
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`industry, typically having a machined steel case, a liner, and an explosive
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`contained between the case and the liner. Ex. 1004, 2:35–41. When used
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`inside an oil well, upon the detonation of the explosive, such liners become a
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`high-velocity jet that penetrates into a hydrocarbon formation, thereby
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`creating a perforation surrounded by a hardened, “crushed zone” (being less
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`permeable than the formation itself) that hinders the flow of hydrocarbons
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`into the oil well. Id. at 2:41–48. Liu addresses this problem, through its
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`disclosure of liners made of energetic material. Id. at 6:16–21. Liu
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`discloses that the energetic material (such as aluminum) may be driven (in a
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`molten state) into the perforation, by the action of the explosive, such that
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`the energetic liner material undergoes an oxidation reaction with water,
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`where it creates a second explosion within the perforation that releases a
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`large amount of heat, pressure, and hydrogen gas, which make multiple
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`fractures in the formation. Id. at 5:46–6:47; 19:35–37; 20:4–9, 29–63;
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`25:27–26:8. Liu also discloses liners that include inert metals, such as
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`tungsten, iron, tin, copper, and lead that increase the density of the jet exiting
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`the perforator case, so as to increase the depth of the jet’s penetration depth
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`into the formation. Id. 24:42–49; 26:15–56.
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`2. Summary of Fischer
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`Fischer discloses a listing of reactions involving metals — specifically
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`metal combustion (metal oxidation reactions), thermites (reactions between
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`metals and metal oxides), and intermetallics (reactions between two metals),
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`including the state of reaction products and the amount of heat produced.
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`Ex. 1005, 1, 5–23. Among the intermetallic reactions, included in Fischer’s
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`Table 2, are reactions between: aluminum and lithium, aluminum and
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`nickel, and aluminum and palladium. Id. at 9. Fischer states that
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`applications for intermetallic materials is their use in “shaped-charge liners.”
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`Id. at 1.
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`3. Discussion
`
`Petitioner contends that Liu teaches all of the limitations of
`
`independent claims 1 and 28 (see id. at 16–18), except that “Liu does not
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`expressly describe ‘at least two metal elements . . . provided in respective
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`proportions calculated to give an electron concentration of 1.5’” (id. at 19).
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`Petitioner turns to Fischer for this claim element, specifically the teachings
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`in Fischer regarding the use in shaped liners of “intermetallic reactants
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`including stoichiometric quantities of aluminum and nickel (Al + Ni) and
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`aluminum and palladium (Al + Pd).” Id. (citing Ex. 1005, 1, 9; Ex. 1013
`
`¶¶ 54–56). As discussed above (Section II.A), this claim limitation is
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`construed herein, such that it is satisfied by stoichiometric combinations of
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`aluminum/nickel and aluminum/palladium.
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`Petitioner advances three arguments for why a person of ordinary skill
`
`in the art would have combined Liu and Fischer.
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`First, Petitioner contends that a person of ordinary skill would have
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`employed Fischer’s teaching of an intermetallic reaction between nickel and
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`aluminum, as one of the “predictable alternatives to lithium in exothermic
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`reactions with aluminum.” Pet. 20–21.
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`Second, Petitioner argues that each of Liu and Fischer teaches,
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`suggests, or motivates the combination. Pet. 22–23. Specifically, “Liu
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`teaches that part of aluminum powder in a liner composition can be replaced
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`with ‘other materials that can be generally classified as ‘fuel’, such as
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`magnesium, lithium, zirconium, silicon, boron, etc.’” Pet. 22 (citing Ex.
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`1004, 20:47–49). Fischer, Petitioner argues, “serves as a reference catalogue
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`that provides those other options for intermetallic ‘fuels’ that react in the
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`presence of aluminum.” Pet. 22 (citing Ex. 1005, 2, 9). “Thus,” according
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`to Petitioner, “one of ordinary skill in the art following the instruction in Liu
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`to use additional metals in combination with aluminum would have
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`consulted Fischer to select additional reactants for the aluminum-based,
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`intermetallic, reactive shaped charge liners of Liu.” Pet. 22. Conversely,
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`Petitioner argues that Fischer “encourages the use of the exothermic
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`reactions in the oil and gas industry,” because Fischer states that
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`“[a]pplications for intermetallic reactions include . . . shaped-charge liners.”
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`Pet. 22–23 (quoting Ex. 1005, 1).
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`Third, Petitioner argues that the proposed combination of Liu and
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`Fischer would have been “obvious to try,” based upon Liu’s identification of
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`a need for perforators having shaped-charge liners that could provide
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`additional thermal energy, from a reaction involving liner material — a need
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`that Petitioner states was “confirmed by” the challenged ’394 patent. Pet. 23
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`(citing Ex. 1004, 6:16–21; Ex. 1001, 2:50–53). In support, Petitioner asserts
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`that “Liu teaches the use of aluminum and other metal elements like lithium
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`to create a shaped charge liner that will react exothermically upon detonation
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`of the associated charge.” Pet. 24. Petitioner further states that “Liu teaches
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`an intermetallic reaction between aluminum and a metal fuel” (id. at 25
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`(citing Ex. 1004,8 6:16–21; Ex. 1013 ¶ 82)) and “Liu teaches the use of an
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`exothermic, intermetallic reaction” (id. (citing Ex. 1013 ¶ 83)). “Thus,”
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`Petitioner concludes, “starting with Liu’s reactive liner employing aluminum
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`and an additional ‘fuel,’ it would have been obvious to try additional well-
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`known and predictable reactive combinations with aluminum, such as the
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`aluminum/nickel metal fuel combination disclosed in Fischer.” Pet. 25.
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`In response, Patent Owner, relying upon the testimony of its expert,
`
`Lawrence Behrmann (Ex. 2023), contends that the references do not teach or
`
`suggest certain limitations and that a person of ordinary skill in the art would
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`not have combined the references in the manner asserted by Petitioner. See
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`Prelim. Resp. 2–3, 6–8, 10–17, 22–28, 33–37, 43–47, 55–56. In particular,
`
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`8 We understand Petitioner’s “id.” citation (Pet. 25), which accompanies the
`passage of the Petition quoted here, to refer to Liu.
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`Patent Owner contends that Liu fails to teach the “liner” recited in claim 1,
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`in which “the at least two metal elements will undergo an intermetallic
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`alloying reaction to give an exothermic reaction.” See id. at 2–3, 6–8, 10–
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`12, 16, 26, 33–43, 55–56, Ex. 2023 ¶¶ 45, 50, 57, 59. Yet, Petitioner also
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`relies upon Fischer for this claim element (see Pet. 30, 39) and Patent Owner
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`does not dispute that Fischer teaches exothermic intermetallic reactions (see
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`Prelim. Resp. 3–4, 21, 27, 34, 37).
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`Additionally, Patent Owner contends that Petitioner’s reasons for
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`combining the references rely on improper hindsight, and that combining
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`Liu with Fischer, in the manner asserted by Petitioner, fails to show a
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`predictable result with a reasonable chance of success. Prelim. Resp. 22–
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`28. Patent Owner contends that unexpected results achieved by the subject
`
`matter of claim 1 support nonobviousness. Id. at 22–24. Patent Owner
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`supports this position with a declaration submitted during prosecution of the
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`’394 patent. Id. at 23 (citing Ex. 2002, 98–99; Ex. 2006). In addition,
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`relying on the testimony of Mr. Behrmann, Patent Owner explains that “[t]he
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`experimental results showed advantages in both a substantial increase in
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`‘entry hole size’ and ‘tunnel volume’ and ‘100% tunnel cleanup’ nowhere
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`predicted in any prior art reference in Grounds 1–6, alone or in combination,
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`as well as with respect to the ‘unexpected’ results of an ‘expanded tip’ to the
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`perforation tunnel which enhances fluid flow.” Id. at 24 (citing Ex. 2023
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`¶ 37).
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`We agree with Patent Owner that Petitioner has not shown a sufficient
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`reason with rational underpinnings explaining why a person of ordinary skill
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`in the art would have combined the teachings of Liu and Fischer in the
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`manner recited in independent claims 1 and 28 of the ’394 patent.
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`Each of the three reasons presented, for combining Liu with Fischer,
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`relies upon Petitioner’s assertion that Liu teaches an intermetallic alloying
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`reaction between aluminum and lithium. See Pet. 20–22, 24–25; see also id.
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`at 42, 53 (referring to the reasons for combining Liu and Fischer and the
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`reaction of “aluminum/lithium as disclosed in Liu” and stating that “Liu
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`instructs that aluminum can be combined with ‘fuel.’”) Indeed, Petitioner
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`does not provide any alternative explanation with technical reasoning as to
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`how the reaction of materials in Liu’s liner might be combined with the
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`intermetallic reaction of Fischer, in order to achieve the claimed subject
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`matter.
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`Yet, as Patent Owner points out, Petitioner’s evidence does not
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`support the assertion that Liu involves an intermetallic alloying reaction.
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`See Prelim. Resp. 2–3, 6–8, 10–12, 16, 26, 33–43, 55–56. The portion of
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`Liu that Petitioner relies upon for such teaching (see Pet. 17, 20, 22 (citing
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`Ex. 1004, 20:47–49)) instead discloses the reaction of aluminum and other
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`materials with water — not the reaction of such materials with each other, as
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`Petitioner contends. The identified portion of Liu concerns some
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`“variations” to the preferred embodiments, wherein “a part of aluminum is
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`replaced by other materials that can be generally classified as ‘fuel’, such as
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`magnesium, lithium, zirconium, silicon, boron, etc.” Ex. 1004, 20:29, 47–
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`49. Indeed, Liu goes on to explain:
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`So far in the specification of this invention, the use of
`aluminum is preferred as a fuel in the aluminum-water reaction.
`However, other light metals can also be used in place of
`aluminum without departure from the spirit of the present
`invention. Such substitutes include but are not limited to:
`aluminum in its alloy form with other metals, such as aluminum
`alloyed with magnesium, aluminum-lithium alloy, magnesium
`and its alloys, etc. The said substitutes can also be used in a
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`surplus amount in stoichiometry to mix with high explosives or
`oxidizers in the purpose to produce molten metal and to react
`with water. Similarly, water solution of oxidizers can also be
`used in place of plain water so that its reactivity with the said
`substitute molten metal can be increased, as will be described in
`the present invention.
`
`Ex. 1004, 20:50–63. See Prelim. Resp. 10–12, 33–37. Liu’s “fuel” —
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`aluminum (or the various “substitutes” that “replace[ ]” aluminum) —
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`following the detonation of an explosive, becomes “molten metal . . . to react
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`with water.” Ex. 1004, 20:47–60. See Prelim. Resp. 10–12, 33–37. Other
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`portions of Liu reinforce the determination that the disclosed liner materials
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`are the “fuel[s]” that react with ambient water, as opposed to the liner
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`materials themselves undergoing an intermetallic alloying reaction with each
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`other. See Ex. 1004, Abstract (“A chemical reaction between molten
`
`aluminum and an oxygen carrier such as water to do useful work is
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`disclosed”), 1:8–11 (“The present invention relates to the use of aluminum
`
`in general, and in particular to the chemical reaction between molten
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`aluminum and an oxygen carrier such as water to do useful work in
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`engineering”); 1:37–42 (“The present invention uses aluminum’s reactivity
`
`in its molten form with some commonly seen oxygen-carrying chemicals
`
`like water or metal oxides. When Al is heated to above its melting point
`
`(660° C.), it reacts with water and gives off a large amount of energy. In
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`such a reaction molten aluminum is fuel, and water functions as an
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`oxidizer.”); 11:3–6 (“[T]he use of the present invention creates a ‘dual-
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`explosion’. The first explosion is from the reaction of the explosive device,
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`and the second being the Al-H2O reaction.”); 22:10–12 (“Once molten
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`aluminum is produced by an explosive device in the presence of water, an
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`Al-H2O reaction will immediately follow the actuation of the said explosive
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`device.”); 32:38–40 (“Here in the reaction both the fuel (Al in molten state)
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`and the oxidizer (water) are in liquid form.”); 39:29–31 (“The presence of
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`water in the drillhole is a prerequisite to use the Al-H2O reaction and to
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`create the secondary explosive event.”)
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`As Patent Owner explains (see Prelim. Resp. 6–8), beyond these
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`differences between the chemical reactions involved in Liu and those in
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`Petitioner’s proposed combination with Fischer (so as to achieve the subject
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`matter of independent claims 1 and 28 of the ’394 patent), there are also
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`differences in their physical operations. Each of claims 1 and 28 of the ’394
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`patent recites a reaction of two metals in the liner: “the liner is reactive such
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`that the at least two metal elements will undergo an intermetallic alloying
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`reaction.” Ex. 1001, 8:1–3, 9:12–10:2. By contrast, Liu’s disclosed use of
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`its embodiments, for oil/gas exploration, involve a jet of molten liner
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`material propelled into a perforation created in the hydrocarbon-bearing
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`formation, such that “a layer of molten aluminum 100 [is] applied right on
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`top of the crushed zone” within the perforation. Ex. 1004, 25:39–40, Fig. 9.
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`“Immediately after perforating,” Liu continues,
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`there is a pressure increase in the well due to the release of a
`substantial amount of detonation products from the charges.
`Consequently, water 110 in the well is forced to enter the
`perforation 80, reacting explosively with the molten aluminum
`100 there.
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`Ex. 1004, 25:40–45, Fig. 9. Liu states that “[t]he energetic Al-H2O reaction
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`in the small perforation releases a large amount of heat and hydrogen gas,
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`and generate a pressure pulse,” such that “[a]fter the explosion, the layer of
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`molten aluminum in the perforation is consumed, the crushed zone 90 is
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`pulverized and multiple fractures 120 are created in the formation.” Id. at
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`26:3–8, Fig. 10; see also id. at 5:46–6:47. Thus, as Patent Owner explains
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`(Prelim. Resp. 6–8), unlike claim 1 of the ’394 patent (where the liner itself
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`includes two reactants that undergo an alloying reaction), the embodiments
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`of Liu that Petitioner relies upon involve one reactant in the liner and
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`another reactant in the ambient environment, wherein the pressure caused by
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`the detonation brings the two reactants together in a perforation that undergo
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`an oxidation reaction that releases hydrogen gas.
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`In view of the different respective chemical reactions involved in Liu
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`and Fischer, we are persuaded by Patent Owner’s arguments (see Prelim.
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`Resp. 6–8, 10–12, 33–37) that combining these references does not entail the
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`more straightforward matter of replacing one intermetallic alloying reaction
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`(i.e., an aluminum-lithium reaction allegedly taught in Liu) with another
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`intermetallic alloying reaction (i.e., the aluminum-nickel reaction disclosed
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`in Fischer) that Petitioner characterize as “a particularly predictable variation
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`of the aluminum/lithium combination in Liu” (Pet. 20–21). Accordingly,
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`Petitioner does not provide adequate technical reasoning to explain why a
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`person of ordinary skill in the art would have employed an intermetallic
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`alloying reaction (taught in Fischer) in place of Liu’s disclosed reaction
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`between aluminum — or such other materials that Liu identifies as “fuel”
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`(Ex. 1004, 20:47–63) — and water. Nor does Petitioner adequately explain
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`why a person of ordinary skill would have combined Liu with Fischer, such
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`that the resulting combination employed the distinctly different physical
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`operation involved in claim 1 of the ’394 patent — wherein the liner
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`includes both reactants — as opposed to the identified embodiments of Liu,
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`in which the liner material is brought together with an external, ambient
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`reactant (i.e., water), as a consequence of the detonation. In addition,
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`whereas Liu discusses the significance of the reaction of liner material with
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`water that produces hydrogen gas (see Ex. 1004, 26:3–5), Fischer shows that
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`the intermetallic reactions that Petitioner discusses (see Pet. 19–21
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`(aluminum/lithium, aluminum/nickel, and aluminum/palladium)) produce no
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`hydrogen and no gaseous pro
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