Date: August 28, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`DYNAENERGETICS US, INC.
`DYNAENERGETICS GMBH & CO. KG
`Petitioners
`
`v.
`
`GEODYNAMICS, INC.
`Patent Owner
`
`____________
`
`
`Case IPR2017-02008
`Patent 8,220,394
`
`____________
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,220,394
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`
`

`

`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ............................................................................................ 5
`
`PRELIMINARY STATEMENT ...................................................................... 5
`
`III. MANDATORY NOTICES .............................................................................. 6
`
`IV. PAYMENT OF FEES ...................................................................................... 7
`
`V. GROUNDS FOR STANDING UNDER 37 C.F.R. §42.104(a) ...................... 7
`
`VI. RELIEF REQUESTED UNDER 37 C.F.R.
`
`§42.22(a)(1) & §42.104(b)(1)-(2) .................................................................... 8
`
`VII. CONSTRUCTION OF CLAIM TERMS .......................................................10
`
`A.
`
`
`B.
`
`
`
`“two metal elements . . . provided in respective proportions
`calculated to give an electron concentration of 1.5” ...................................14
`
`“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” ..........................................................16
`
`VIII. REPRESENTATIVE PROPOSED REJECTIONS SHOWING THAT
`
`PETITIONERS HAVE A REASONABLE LIKELIHOOD OF
`
`PREVAILING ................................................................................................16
`
`A. Ground 1: Claims 1, 2-3, 17-26, and 28 are obvious over
`
`Liu in view of Fischer. ................................................................................16
`
`1. Claims 1, 2-3, and 28 ...............................................................................16
`
`2. Claims 17-26 ............................................................................................26
`
`3. Claim Chart ..............................................................................................28
`
`B. Ground 2: Claims 1, 2-3, 17-26, and 28 are obvious over
`
`Liu in view of Theis. ...................................................................................41
`
`1. Claims 1, 2-3, 17-26, and 28 ....................................................................41
`
`2. Claim Chart ..............................................................................................45
`
`C. Ground 3: Claims 1, 2-4, 6, 12, 17-26 and 28 are obvious over
`
`Liu in view of Becker. .................................................................................52
`
`1. Claims 1, 2-4, 6, 12, 17-26 and 28 ...........................................................52
`
`2. Claim Chart ..............................................................................................54
`
`D. Ground 4: Claims 4, 5, and 11 are obvious over
`
`Liu in view of Fischer and further in view of Reese. ..................................62
`
`

`

`E. Ground 5: Claims 12, 13, and 14 are obvious over
`
`Liu in view of Fischer and further in view of Bourne. ...............................63
`
`F. Ground 6: Claims 15 and 16 are obvious over
`
`Liu in view of Fischer and further in view of Lussier. ...............................65
`
`IX. CONCLUSION ..............................................................................................69
`
`
`
`
`
`
`
`
`
`
`
`3
`
`

`

`PETITIONERS’ LIST OF EXHIBITS
`
`Exhibit No.
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`
`U.S. Patent No. 8,220,394 (Bates et al.)
`
`Reply to the August 8, 2011 Office Action, dated Feb. 8, 2011
`
`Plaintiff’s Disclosure of Asserted Claims and Infringement
`Contentions, Civil Action No. 2:17-cv-371 (E.D. Tex.) (Jul. 11,
`2017)
`(asserting
`the
`’394
`patent
`against Petitioner
`DynaEnergetics US, Inc.)
`
`U.S. Patent No. 7,393,423 (“Liu”)
`
`A Survey of Combustible Metals, Thermites, and Intermetallics
`for Pyrotechnic Applications, S.H. Fischer and M.C. Grubelick,
`Paper No. SAND95-2448C (July 1996) (“Fischer”)
`
`FR2749382A1 (“Theis”) certified English translation
`
`WO 01/77607 (“Becker”)
`
`U.S. Patent No. 7,011,027 (“Reese”)
`
`WO 03/042625 (“Bourne”)
`
`U.S. Patent No. 6,668,726 (“Lussier”)
`
`Submission by Dr. Liqing Liu, RE: US 2007/0056462 A1 Not
`Patentable – A New Fact, dated Jan. 12, 2009 in prosecution of
`the ’394 patent
`
`Application
`RE:
`Liu,
`Liqing
`by Dr.
`Submission
`PCXT/GB2004/004256 Not Patentable, dated Nov. 18, 2008 in
`prosecution of EP Patent App. No. 01768790.0
`
`Declaration of Dr. William Place Walters, PhD, PE
`
`
`
`
`
`
`
`4
`
`

`

`I.
`
`INTRODUCTION
`
`DynaEnergetics US, Inc. and its German counterpart, DynaEnergetics
`
`GmbH & Co. KG (Petitioners), respectfully request Inter Partes Review (“IPR”)
`
`of U.S. Patent No. 8,220,394 (“the ’394 patent”) (Ex. 1001) and the cancellation of
`
`claims 1-6, 11-26, and 28 (“the Challenged Claims”) as obvious under 35 U.S.C.
`
`§103.
`
`II.
`
`PRELIMINARY STATEMENT
`
`The alleged invention described in the ‘394 patent is directed to reactive
`
`shaped charge liners for use in perforating and fracturing wellbores in the oil and
`
`gas industry. In particular, the ‘394 patent claims liners with two types of
`
`ingredients: (1) combinations of metals that react exothermically with each other
`
`upon detonation of an associated shaped charge, and (2) at least one other metal
`
`that does not react exothermically with the other two reactive metals upon
`
`detonation. Ex. 1001, 8:2-10. A preferred embodiment of the ‘394 patent
`
`identifies aluminum and nickel as reactive metals and tungsten as the nonreactive
`
`metal.
`
`At the time of the alleged invention described in the ‘394 patent, reactive
`
`shaped charge liners were well known in the art. Importantly, the prior art
`
`disclosed liners containing both types of ingredients claimed in the ‘394 patent,
`
`that is, exothermically reactive combinations of two metals alongside a third metal
`
`
`
`5
`
`

`

`that does not react with the other two metals upon detonation. The prior art
`
`explains the benefit of this design is that following detonation, the liner is ejected
`
`in a jet of material containing both kinetic energy and thermal energy (e.g. heat
`
`produced from the exothermic reaction). Moreover, like the ‘394 patent, the prior
`
`art specifically mentions tungsten as a nonreactive metal and also provides
`
`examples of reactive metal combinations. The prior art encourages persons of
`
`ordinary skill to use liners with additional reactive metal combinations taught
`
`elsewhere in the art, including the same combinations disclosed in the ‘394 patent.
`
`As a result, the combination of prior art references is obvious, and as set forth in
`
`more detail below, claims 1-6, 11-26, and 28 of the ‘394 patent should be
`
`invalidated.
`
`III. MANDATORY NOTICES
`
`A. Real Parties-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`
`Petitioners certify that DynaEnergetics US, Inc. and DynaEnergetics GmbH
`
`& Co. KG are the real parties-in-interest.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`The ‘394 patent is the subject of a pending litigation styled GeoDynamics,
`
`Inc. v. DynaEnergetics US, Inc., 2:17-cv-00371 (E.D. Tex.), filed April 28, 2017.
`
`GeoDynamics, Inc. has asserted in this litigation that it is the current assignee with
`
`the right to sue for the alleged infringement in the ‘394 patent, which was
`
`previously assigned to QinetiQ, Ltd.
`
`
`
`6
`
`

`

`C. Lead and Backup Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`Lead counsel is Barry J. Herman (Reg. No. 51,254), and backup counsel are
`
`Lisa J. Moyles (Reg. No. 40,737), Jason M. Rockman (Reg. No. 63,473), and
`
`Preston H. Heard (Reg. No. 64,675). A Power of Attorney accompanies this
`
`Petition.
`
`D.
`
`Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`Petitioners
`
`consent
`
`to
`
`electronic
`
`service
`
`by
`
`email
`
`at
`
`Dyna394IPR@wcsr.com,
`
`bherman@wcsr.com,
`
`pheard@wcsr.com,
`
`lmoyles@moylesip.com, and jrockman@moylesip.com.
`
`IV. PAYMENT OF FEES
`
`Petitioners authorize the Office to charge $26,800 to Deposit Account 09-
`
`0528 as required by 37 C.F.R. § 42.15(a). Petitioners further authorize the Office
`
`to charge any deficiency or credit any overpayment to the above-referenced
`
`Deposit Account.
`
`V. GROUNDS FOR STANDING UNDER 37 C.F.R. §42.104(a)
`
`Petitioners hereby certify that the ‘394 patent is available for inter partes
`
`review and that Petitioners are not barred or estopped from requesting inter partes
`
`review because the ‘394 patent has not been subject to a previous estoppel based
`
`proceeding under the AIA, and the complaint served on DynaEnergetics US, Inc.
`
`referenced above in § III(B) was served within the last 12 months.
`
`
`
`7
`
`

`

`VI. RELIEF REQUESTED UNDER
`§42.104(b)(1)-(2)
`
`37 C.F.R.
`
`§42.22(a)(1) &
`
`Petitioners request review of the Challenged Claims on the grounds set forth
`
`in the table below. An explanation of the unpatentability of the Challenged Claims
`
`is provided in the form of detailed descriptions and claim charts, which indicate the
`
`location of each claim element in the cited prior art and explain the reasons a
`
`person of ordinary skill would have combined these prior art references. Additional
`
`explanation and support for each ground of rejection is set forth in Exhibit 1013,
`
`the Declaration of Dr. William P. Walters. Dr. Walters is an expert in the design
`
`and use of shaped charges, including for use in oil and gas well perforation, and his
`
`statements are offered as evidence of the knowledge that one of ordinary skill in
`
`the art would have possessed at the time of the claimed invention. Ex. 1013, ¶¶ 1-
`
`11.
`
`The following references constitute prior art and are relied upon in this
`
`Petition:
`
`1.
`
`U.S. Patent No. 7,393,423 to Liu, filed August 8, 2001, published
`
`February 27, 2003, and issued July 1, 2008 (“Liu”) (Ex. 1004), qualifies as prior
`
`art to the ‘394 patent under at least pre-AIA 35 U.S.C. § 102(a) and (e).
`
`2.
`
`A Survey of Combustible Metals, Thermites, and Intermetallics for
`
`Pyrotechnic Applications, S.H. Fischer and M.C. Grubelich, Paper No. SAND95-
`
`2448C (July 1996), presented at the 32nd AIAA/ASME/SAE/ASEE Joint
`
`
`
`8
`
`

`

`Propulsion Conference, Lake Buena Vista, FL, July 1-3, 1996 (“Fischer”) (Ex.
`
`1005), qualifies as prior art to the ‘394 patent under at least pre-AIA 35 U.S.C. §
`
`102(a) and (b).
`
`3.
`
`FR Patent Publication No. 2749382 A1 to Theis, published December
`
`5, 1997 (“Theis”) (Certified English Translation) (Ex. 1006), qualifies as prior art
`
`to the ‘394 patent under at least pre-AIA 35 U.S.C. § 102(a) and (b).
`
`4.
`
`PCT App. Pub. No. WO 2001/77607 A1 to Becker et al., published
`
`October 18, 2001 (“Becker”) (Ex. 1007), qualifies as prior art to the ‘394 patent
`
`under at least pre-AIA 35 U.S.C. § 102(a) and (b).
`
`5.
`
`U.S. Patent No. 7,011,027 to Reese et al., filed May 17, 2001,
`
`published December 5, 2002, and issued March 14, 2006 (“Reese”) (Ex. 1008),
`
`qualifies as prior art to the ‘394 patent under at least pre-AIA 35 U.S.C. § 102(a)
`
`and (e).
`
`6.
`
`PCT App. Pub. No. WO 2003/042625 A1 to Bourne et al., published
`
`May 22, 2003 (“Bourne”) (Ex. 1009), qualifies as prior art to the ‘394 patent
`
`under at least pre-AIA 35 U.S.C. § 102(a).
`
`7.
`
`U.S. Patent No. 6,668,726 to Lussier, filed January 17, 2002,
`
`published July 17, 2003, and issued December 30, 2003 (“Lussier”) (Ex. 1010),
`
`qualifies as prior art to the ‘394 patent under at least pre-AIA 35 U.S.C. § 102(a)
`
`and (e).
`
`
`
`9
`
`

`

`The Challenged Claims of the ‘394 patent are unpatentable on the following
`
`grounds:
`
`Ground
`
`‘394 Patent Claims
`
`Basis for Rejection
`
`Ground 1
`
`1, 2-3, 17-26, and
`28
`
`Obvious under 35 U.S.C. § 103(a) over Liu
`in view of Fischer
`
`Ground 2
`
`1, 2-3, 17-26, and
`28
`
`Obvious under 35 U.S.C. § 103(a) over Liu
`in view of Theis
`
`Ground 3
`
`1, 2-4, 6, 12, 17-26
`and 28
`
`Obvious under 35 U.S.C. § 103(a) over Liu
`in view of Becker
`
`Ground 4
`
`4, 5, and 11
`
`Ground 5
`
`12, 13, and 14
`
`Ground 6
`
`15 and 16
`
`
`
`VII. THE ‘394 PATENT
`
`Obvious under 35 U.S.C. § 103(a) over Liu
`in view of Fischer, and further in view of
`Reese
`
`Obvious under 35 U.S.C. § 103(a) over Liu
`in view of Fischer, and further in view of
`Bourne
`
`Obvious under 35 U.S.C. § 103(a) over Liu
`in view of Fischer, and further in view of
`Lussier
`
`The ’394 patent is directed to “a reactive shaped charge liner for a perforator
`
`for use in perforating and fracturing well completions.” Ex. 1001, 1:5-7. The
`
`disclosed reactive shaped charge liner “can provide additional energy after [a]
`
`detonative event . . . wherein the liner comprises a composition capable of an
`
`exothermic reaction upon activation of the shaped charge liner.” Id. at 2:51-60.
`
`For example, claim 1 recites, in part, “at least two metal elements will undergo an
`
`intermetallic alloying reaction to give an exothermic reaction upon activation of
`
`
`
`10
`
`

`

`the associated shaped charge.” Id. at 8:1-4. The ‘394 patent focuses on only
`
`certain reactive metal combinations, limiting its claims to liners where the reactive
`
`metals “are provided in respective proportions calculated to give an electron
`
`concentration of 1.5 . . . .” Id. at 8:5-6. The ’394 patent specification does not,
`
`however, adequately describe a working process or mechanism for calculating the
`
`“respective proportions” of two metals to give an electron concentration of 1.5.
`
`Nevertheless, the specification identifies nickel and aluminum and palladium and
`
`aluminum, mixed
`
`in stoichiometric quantities, as preferred metal-metal
`
`compositions. See id. at 3:46-48. According to the ’394 patent, nickel-aluminum
`
`(NiAl) and palladium-aluminum (PdAl) are exemplary compounds with an
`
`electron concentration of 1.5. See id. at 3:52-56.
`
`Claim 1 also requires the composition to comprise “at least one further inert
`
`metal . . . not capable of an exothermic reaction with the at least two metal
`
`elements upon activation of the shaped charge liner.” Id. at 8:7-10. According to
`
`the ’394 patent, the purpose of adding an inert metal is to “provide additional
`
`mechanical strength to the liner and thus to increase the penetrative power of the
`
`jet.” See id. at 5:49-51. The specification indicates that tungsten (W) and copper
`
`(Cu) are known, exemplary inert liner materials. See id. at 5:51-55. Claim 1
`
`further requires that “the liner is a green compacted particulate composition formed
`
`from a powder mixture . . . .” Id. at 7:66-67.
`
`
`
`11
`
`

`

`VIII. CONSTRUCTION OF CLAIM TERMS
`
`A claim subject to an IPR petition is given its “broadest reasonable
`
`construction in light of the specification of the patent in which it appears.” 37
`
`C.F.R. § 42.100(b). Petitioners, however, are unable to provide complete
`
`constructions for some of the recited features in the Challenged Claims because the
`
`Challenged Claims are insufficiently definite under 35 U.S.C. § 112.1 Nonetheless,
`
`the ’394 patent provides enough information for partial claim constructions that are
`
`sufficient to demonstrate that the Challenged Claims are invalid under at least 35
`
`U.S.C. § 103. Partial claim constructions are possible because the ’394 patent
`
`describes certain preferred embodiments that purportedly fall within the scope of
`
`the claim(s) under the “broadest reasonable interpretation” standard despite a lack
`
`of clarity regarding the extent to which the claim(s) extend beyond those
`
`embodiments.
`
`Further, these partial claim constructions are sufficient for demonstrating
`
`that the ’394 patent is invalid because a patent claim cannot encompass anticipated
`
`
`1 A patent cannot be challenged in an IPR for failing to satisfy 35 U.S.C. § 112.
`
`However, Petitioners will assert in parallel district court litigation that the ‘394
`
`patent is invalid as indefinite for failing to inform, with reasonable certainty, those
`
`skilled in the art about the scope of the invention. Petitioners reserve all rights to
`
`challenge the definiteness of the ’394 patent claims.
`
`
`
`12
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`

`

`or obvious material, regardless of whether the claim also extends to patentable
`
`discoveries. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (“If the
`
`claim extends to what is obvious, it is invalid under § 103.”); see also Atlas
`
`Powder Co. v. IRECO Inc., 190 F.3d 1342 (Fed. Cir. 1999) (“[I]f granting patent
`
`protection on the disputed claim would allow the patentee to exclude the public
`
`from practicing the prior art, then that claim is anticipated, regardless of whether it
`
`also covers subject matter not in the prior art.”). Thus, the indefiniteness of the
`
`Challenged Claims does not prevent Petitioners from demonstrating in an IPR that
`
`the ’394 patent is invalid. The partial claim constructions defined by the preferred
`
`embodiments are sufficient to satisfy 37 C.F.R. 42.104(b), which requires only that
`
`Petitioners identify “[h]ow the challenged claim is to be construed,” “[h]ow the
`
`construed claim is unpatentable,” and “where each element of the claim is found in
`
`the prior art patents or printed publications relied upon.” To the extent that aspects
`
`of a claim are not germane to invalidity issues, patent challengers generally are not
`
`required to provide detailed claim constructions. See Vivid Techs., Inc. v. Am. Sci.
`
`& Eng’g, Inc., 200 F.3d 795, 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.”). Accordingly, for the purposes of this Petition, the claim terms
`
`listed below should be given the proposed constructions, while the remaining claim
`
`terms should be given their plain and ordinary meaning.
`
`
`
`13
`
`

`

`A. “two metal elements . . . provided in respective proportions calculated to
`give an electron concentration of 1.5”
`
`The scope of this claim term is unclear at least because the ’394 patent does
`
`not define “an electron concentration of 1.5.” The ’394 patent discusses the quoted
`
`feature only with respect to exemplary compounds that correspond to “a ratio of 3
`
`valency electrons to 2 atoms such as NiAl or PdAl.” Ex. 1001, 3:55-56; see also
`
`id. at 7:28-38. Further, the patent holder has asserted in Plaintiff’s Disclosure of
`
`Asserted Claims and Infringement Contentions (“Infringement Contentions”) (Ex.
`
`1003) from the parallel district court litigation that the accused products allegedly
`
`meet the subject claim limitation because, among other things, “[an] analysis
`
`indicates the presence of Nickel and Aluminum . . . . [and] NiAl has an electron
`
`concentration of 1.5.” Ex. 1003, Exhibit B at 2; see also Ex. 1003, Exhibit A at 2.2
`
`However, the ’394 patent itself does not generally instruct how the electron
`
`concentration is determined. For example, the ’394 patent indicates that
`
`compounds are assigned their “customary valencies” for purposes of calculating
`
`electron concentration. Ex. 1001, 7:29-30. However, “customary valencies” are
`
`not defined or identified.
`
`
`2 While Patent Owner’s Infringement Contentions are extrinsic evidence, the
`
`positions taken by Patent Owner are indicative of its view of the ‘394 patent and
`
`evidence Applicants’ own view of the alleged invention.
`
`
`
`14
`
`

`

`The subject claim term is also unclear because the ’394 patent does not
`
`generally describe what two metal elements may be provided to give an electron
`
`concentration of 1.5. For example, the specification provides a “non-exhaustive”
`
`list of 35 combinations of elements that produce an exothermic reaction and are
`
`suitable for use in a reactive liner. See id. at 3:16-34. However, the ’394 patent
`
`only identifies, without explanation, nickel and aluminum and palladium and
`
`aluminum as preferred metal-metal compositions.
`
`Further,
`
`the ’394 patent does not clearly
`
`identify
`
`the “respective
`
`proportions” in which to provide two metals as claimed. The ’394 patent states
`
`that the preferred metal-metal compositions are nickel-aluminum and palladium-
`
`aluminum “mixed in stoichiometric quantities.” Id. at 3:48. In addition, the
`
`Applicant stated during prosecution that “one mole of nickel and one mole of
`
`aluminum . . . [is] inherently [a] . . . metal combination[] . . . combined in
`
`proportions calculated to given [sic] electron concentration of 1.5 . . . .” Ex. 1002
`
`at 10. Although the ’394 patent indicates that “the invention is not limited to
`
`stoichiometric mixtures,” the patent provides no description, metric, or process for
`
`determining how far beyond stoichiometric quantities the term “portions
`
`calculated” extends. Ex. 1001, 3:51-54.
`
`For at least the above reasons, Petitioners are unable to give a complete
`
`construction of this claim term that addresses the types and proportions of metals
`
`
`
`15
`
`

`

`covered by the term. However, under the “broadest reasonable interpretation,” this
`
`claim term includes stoichiometric combinations of (1) aluminum and nickel and
`
`(2) aluminum and palladium. See Ex. 1013, ¶¶ 41-45.
`
`B.
`
`“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”
`
`This claim term is unclear at least because an “inert metal” is functionally
`
`claimed as not capable of a reaction with the “two metal elements,” which is
`
`unclear as described above. Thus, Petitioners cannot provide a complete
`
`construction for this term. However, the ‘394 patent identifies tungsten and copper
`
`as exemplary “inert” metals due their density and ductility properties. See Ex.
`
`1001, 5:46-48, 51-55. Accordingly, under the “broadest reasonable interpretation,”
`
`this claim term must include copper and tungsten. See Ex. 1013, ¶¶ 46-48.
`
`IX. REPRESENTATIVE PROPOSED REJECTIONS SHOWING THAT
`PETITIONERS HAVE A REASONABLE LIKELIHOOD OF
`PREVAILING
`
`A. Ground 1: Claims 1, 2-3, 17-26, and 28 are obvious over Liu in view
`of Fischer.
`
`Petitioners submit that claims 1, 2-3, 17-26, and 28 are obvious over Liu in
`
`view of Fischer.
`
`1. Claims 1, 2-3, and 28
`
`Liu discloses reactive shaped charge liners formed from compacted
`
`compositions of powder mixture including two or more metals for perforating an
`
`
`
`16
`
`

`

`oil well and/or surrounding formations in a wellbore. See, e.g., Ex. 1004, 2:35-38,
`
`6:16-21. For example, “[l]iner 10 [FIG. 6] is . . . formed from . . . aluminum alloy
`
`powder or a mixture of aluminum powder with other metal powders like iron,
`
`copper, tin, tungsten and lead powders.” Id. at 26:52-56. Further, “. . . the
`
`aluminum material can be . . . compacted aluminum powder.” Id. at 19:35-37; see
`
`also id. at 23:66. One of ordinary skill in the art would understand “compacted
`
`aluminum powder” and/or “a mixture of aluminum powder with other metal
`
`powders” to mean a green compacted particulate composition—otherwise the
`
`disclosure would specify a sintered liner. See Ex. 1013, ¶¶ 51, 70.
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`In addition, Liu discloses that one “objective of [Liu’s] invention is to make
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`a shaped charge that can have a liner made of energetic material.” Ex. 1004, 6:16-
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`17. Liu teaches that “[w]hen the collapsed liner is projected toward a target, it
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`carries not only kinetic energy transferred to it by the detonation of the explosives
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`of the shaped charge, but also a substantial amount of thermal energy.” Id. at 6:17-
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`21. In certain embodiments, “[i]n stoichiometry, a part of aluminum is replaced by
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`other materials that can be generally classified as ‘fuel’, such as magnesium,
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`lithium, zirconium, silicon, boron, etc.” Id. at 20:47-49. One of ordinary skill in
`
`the art would therefore understand this reference to “fuel” to include materials that
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`react in liners in the presence of aluminum to produce “a substantial amount of
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`thermal energy” upon detonation of the associated shaped charge. See Ex. 1013, ¶
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`
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`17
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`

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`71. Liu teaches using the thermal energy derived by the chemical reaction within
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`the liner material upon detonation of the explosive charge to pierce a target. See
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`Ex. 1004, at 20:32-35, 27:34-41. One of ordinary skill in the art would understand
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`that “thermal energy derived by the chemical reaction” means energy from an
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`exothermic reaction between the liner materials. See Ex. 1013, ¶ 72. Further,
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`using the exothermic heat from an intermetallic reaction in a reactive shaped liner
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`to provide an incendiary effect upon impact with a target would have been well-
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`known to those of ordinary skill in the art at the time of the alleged invention
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`described in the ’394 patent. See id. at ¶ 72.
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`Liu also discloses reactive shaped charge liners formed from at least two
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`metal elements that will undergo an intermetallic alloying reaction (as discussed
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`above) and “the addition of other inert materials into the liner mixture . . . .” Ex.
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`1004, 28:48-49. For example, Liu discloses aluminum powder mixed with other
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`“high density” metal powders such as iron, copper, or tungsten. See id. at 24:44-49
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`(also with respect to claims 18 and 26). As previously discussed, the ’394 patent
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`lists copper and tungsten as exemplary inert metals for use in reactive liners. See
`
`Section VIII.B supra. One of ordinary skill in the art at the time of the alleged
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`’394 patent invention would have understood that copper and tungsten were
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`common components of oil well perforating liners due to their material properties,
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`including, among other things, their density and ductility. See Ex. 1013, ¶ 73.
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`
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`18
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`

`

`Liu does not expressly describe “at least two metal elements . . . provided in
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`respective proportions calculated to give an electron concentration of 1.5.”
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`However, Fischer discloses intermetallic reactants including stoichiometric
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`quantities of aluminum and nickel (Al + Ni) and aluminum and palladium (Al +
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`Pd) and explicitly notes that these combinations can be used in shaped charge
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`liners. See Ex. 1005 at 1, 9 (“Table 2 – Intermetallic Reactions”); Ex. 1013, ¶¶ 54-
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`56.
`
` As previously discussed, compositions of nickel/aluminum and
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`palladium/aluminum mixed in stoichiometric quantities satisfy the limitation
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`requiring “at least two metal elements . . . provided in respective proportions
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`calculated to give an electron concentration of 1.5.” See Section VIII.A supra.
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`Fischer therefore discloses the stoichiometric ratios of aluminum/nickel and
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`aluminum/palladium reactants required by independent claims 1 and 28, and
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`dependent claims 3, 25, and 26.
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`It would have been obvious to one of ordinary skill in the art to combine Liu
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`with Fischer to obtain the subject matter of claims 1, 2-3, 17-26, and 28. Ex. 1013,
`
`¶¶ 74-75. The Supreme Court has held that to determine whether a combination of
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`prior art references is obvious, “it can be important to identify a reason . . . to
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`combine the elements in the way the claimed new invention does.” KSR, 550 U.S.
`
`at 418. There are at least three reasons that a person of ordinary skill in the art
`
`would combine Liu and Fischer.
`
`
`
`19
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`

`

`First, if a person of ordinary skill in the art can implement a predictable
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`variation of a work in one field of endeavor using prior art elements according to
`
`their established functions, § 103 likely bars its patentability. See id. at 417. For
`
`example:
`
`When there is a design need or market pressure to solve a problem
`and there are a finite number of identified, predictable solutions, a
`person of ordinary skill has good reason to pursue the known options
`within his or her technical grasp. If this leads to the anticipated
`success, it is likely the product not of innovation but of ordinary skill
`and common sense.
`
`Id. at 421. Liu teaches a shaped charge liner combining both high density metals
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`that provide a cutting jet, like tungsten, and exothermically reactive metals that
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`provide heat, specifically including combinations of aluminum and lithium. See
`
`Ex. 1004, 20:47-49. At the time of the alleged invention described in the ’394
`
`patent, the prior art identified a finite number of predictable alternatives to lithium
`
`in exothermic reactions with aluminum. Importantly, Fischer presents a short,
`
`clear catalogue of reactive metal combinations for use in shaped charges and
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`describes relevant features of these reactions including the heat produced.3 See Ex.
`
`1005 at 9. The use of aluminum/nickel is a particularly predictable variation of the
`
`
`3 One of ordinary skill in the art would have understood the “heat of reaction”
`
`described in Fischer as the heat produced when elements react. See Ex. 1013, ¶¶
`
`55, 76.
`
`
`
`20
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`

`

`aluminum/lithium combination in Liu because, as recognized in Fischer, heats of
`
`reaction “provide a useful guide for choosing exothermic formulations for
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`engineering applications.” Id. at 3. Fischer states that the heat produced when
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`aluminum (Al) combines with lithium (Li) (345 cal/g) is nearly identical to the heat
`
`produced when aluminum (Al) combines with nickel (Ni) (330 cal/g):
`
`
`
`Id. at 9 (highlighted for emphasis). The operation of tungsten in a liner with
`
`aluminum and nickel was likewise a predictable variation of the aluminum-
`
`lithium-tungsten liner from Liu since tungsten was a known, common component
`
`of oil well perforating liners due to its material properties, including, among other
`
`things, its density and ductility. See Ex. 1013, ¶¶ 73, 75, 91.
`
`
`
`21
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`

`

`The second reason that Liu and Fischer would be combined is that prior art
`
`combinations tend to be obvious when the prior art teaches, suggests, or motivates
`
`a person of ordinary skill in the art to make the combination. KSR, 550 U.S. at
`
`418. Here, Liu explicitly encourages a person of ordinary skill in the art to consult
`
`other prior art references to identify materials that react exothermically in a liner
`
`containing aluminum. Liu teaches that part of aluminum powder in a liner
`
`composition can be replaced with “other materials that can be generally classified
`
`as ‘fuel’, such as magnesium, lithium, zirconium, silicon, boron, etc.” Ex. 1004,
`
`20:47-49. Thus, Liu encourages the use of known exothermic reactions with
`
`aluminum by offering illustrative “such as” examples and indicates the existence of
`
`other options through the open-ended use of “etc.” Fischer serves as a reference
`
`catalogue that provides those other options for intermetallic “fuels” that react in the
`
`presence of aluminum, because, according to Fischer, aluminum has many
`
`desirable properties for propellant, pyrotechnic, and explosive formulations. See
`
`Ex. 1005 at 2; see also id. at 9. Thus, one of ordinary skill in the art following the
`
`instruction in Liu to use additional metals in combination with aluminum would
`
`have consulted Fischer to select additional reactants for the aluminum-based,
`
`intermetallic, reactive shaped charge liners of Liu. Conversely, Fischer encourages
`
`the use of the exothermic reactions in the oil and gas industry. Specifically, Fischer
`
`teaches that “[a]pplications for intermetallic reactions include . . . shaped-charge
`
`
`
`22
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`

`

`liners.” Id. at 1. Thus, one of ordinary skill in the art following the teachings of
`
`Fischer would have been encouraged to consult prior art references like Liu to
`
`determine how to implement the teachings of Fischer regarding aluminum/nickel
`
`reactions in a shaped charge liner.
`
`The third reason that Liu and Fischer would be combined is that prior art
`
`combinations tend to be obvious when they are “obvious to try.” KSR, 550 U.S. at
`
`421. The Supreme Court noted that “[w]hen there is a design need or market
`
`pressure to solve a problem and there are a finite number of identified, predictable
`
`solutions, a person of ordinary skill has good reason to pursue the known options
`
`within his or her technical grasp.” Id. Liu had already identified a need for shaped
`
`charges in the oil and gas industry that could provide both energy through the
`
`detonation of a shaped charge and additional thermal energy, as confirmed by the
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`‘394 patent. See, e.g., Ex. 1004, 6:16-21; Ex. 10