`
` 
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`
`DYNAENERGETICS US, INC.
`DYNAENERGETICS GMBH & CO. KG,
`Petitioner,
`
`v.
`
`GEODYNAMICS, INC.,
`Patent Owner.
`__________
`
`Case IPR2017-02008
`Patent 8,220,394
`__________
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE PURSUANT TO 35 U.S.C.
`§ 316 AND 37 C.F.R. § 42.120 TO PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 8,220,394
`
`
`
` 
`
`

`

` 
`
`TABLE OF CONTENTS
`
`
`INTRODUCTION ............................................................................................... 1
`I.
`II. THERE IS NO PRIMA FACIE CASE OF OBVIOUSNESS BASED ON
`COMBINATIONS WITH LIU. ........................................................................... 6
`A. Petitioner Disregards the ‘394 Patent Prosecution History And Dr. Liu’s
`Own Teachings And Third Party Submissions That Liu Is Directed To An
`Aluminum-Water Reaction. ............................................................................ 6
`B. The Ni-Al Reaction Or Other Intermetallics Claimed In The ‘394 Patent
`Were Not Known Substitutes In the Prior Art for the Al - H20 Reaction of
`Liu. .................................................................................................................. 14
`III. THE OFFICE HAS ALREADY CONSIDERED “SUBSTANTIALLY THE
`SAME” PRIOR ART AND ARGUMENTS INCLUDING LIU AS WELL AS
`OTHER SECONDARY REFERENCES AND THUS DENIAL IS
`WARRANTED PURSUANT TO 35 U.S.C. § 325(d). ................................. 18
`IV. THE PETITION SHOULD BE DENIED BECAUSE THE ALLEGED
`PRIMA FACIE OBVIOUSNESS CASE IN EACH OF GROUNDS 1-6 IS
`BASED ON HINDSIGHT AND FAILS TO SHOW A PREDICTABLE
`RESULT WITH A REASONABLE CHANCE OF SUCCESS. ................... 22
`A. The Invention Of The ‘394 Patent Provides Unexpected Results And The
`‘394 Patent Cannot Be Used As A Roadmap to Achieve Such Results. ....... 22
`B. Grounds 1-6 Are Not Combinations For A Known Use With Predictable
`Results. ........................................................................................................... 25
`C. The Secondary References Do Not Teach or Suggest the Required
`Substitution of Ni-Al (Or Other Intermetallics) for Liu’s Al-H2O Reaction. 27
`1. Fischer ......................................................................................................... 27
`2. Theis ............................................................................................................ 28
`3. Becker .......................................................................................................... 30
`4. Reese ............................................................................................................ 31
`5. Bourne ......................................................................................................... 31
`6. Lussier ......................................................................................................... 32
`
` 
`
`i
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`

`

` 
`
`D. None Of Petitioner's Grounds Establishes A Reasonable Expectation Of
`Success………………………….…………………………..………………33
` 1. Ground 1: The Petition Fails to Demonstrate a Reasonable Likelihood of
`Showing Claims 1, 2-3, 17-26 and 28 are Obvious Over Liu in View of
`Fischer……………………………………………………………………33
`3
` 2. Ground 2: The Petition Also Fails to Demonstrate a Reasonable Likelihood
`of Showing claims 1, 2-3, 17-26 and 28 are Obvious Over Liu in View of
`Theis………………………………………………………………………35
`8
` 3. Ground 3: The Petition Also Fails to Demonstrate a Reasonable
`Likelihood of Showing Claims 1, 2-4, 6, 12, 17-26 and 28 Are Obvious
`Over Liu in View of Becker ………………………….………………….40
` 4. Ground 4 (Liu + Fischer + Reese) and Ground 5 (Liu + Fischer +
`Bourne) and Ground 6 (Liu+ Fischer + Lussier): The Petition Also Fails
`to Demonstrate a Reasonable Likelihood of Showing The Respective
`Claims Are Obvious ................................................................................435
` 5. The Supreme Court Has Affirmed A Similar Non-Obviousness Decision
`In The Chemical Arts In The Adams Opinion. ........................................... 43
` 6. Using the ‘394 Patent As A Roadmap Is Prohibited Hindsight. ................. 46 
`E. Substantial Evidence of Commercial Success, Long-Felt Need, Failure of
`Others and Industry Skepticism Support Non-Obviousness. ......................... 47
`V. CLAIM CONSTRUCTION ........................................................................... 49
`VI. CONCLUSION .............................................................................................. 55
`
`
`
`
`
`ii
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`
`TABLE OF AUTHORITIES
`
`Cases
`Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63
`(1969) .................................................................................................................... 17
`Dachii Sankyo et. al. v. Matrix Laboratories Ltd et. al.,619 F. 3d 1346
`(Fed. Circ. 2010)………………..……………………………………………….36 
`Graham v. John Deere Co., 383 U.S. 1 (1966) ....................................................... 44
`Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147 (1950) ......... 26
`KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 1739-40 (2007) ...... 27
`Merck Sharp & Dohme B.V. v Warner Chilcott Co., no. 2016-2583, at 6
`(Oct. 19, 2017) ...................................................................................................... 47
`Nautilus v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2130 n.9, 189 L. Ed. 2d 37
`(2014). ................................................................................................................... 55
`Ortho-McNeil Pharmaceutical v. Mylan Labs., 520 F. 3d 1358, 1364 (Fed.
`Cir., 2008)……………………………………………………………………….33 
`Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976) ............................................... 17
`Sanofi, et al. v. Watson Labs. Inc. et al., cause no. 2016-2722 __ Fed. Cir. __
` (Nov. 9, 2017)…………………………………………………………………..17 
`United States v. Adams, 383 U.S. 39, 51-52 (1966) ................................................ 45
`Statutes
`35 U.S.C. § 314(a) ..................................................................................................... 2
`35 U.S.C. § 325(d) ..................................................................................................... 4
`Other Authorities
`Cultec, Inc. v. StormTech LLC, IPR2017-00777, Paper 7 (P.T.A.B.
`Aug. 22, 2017) ...................................................................................................... 18
`Hospira, Inc. v. Genentech, Inc., IPR2017-00739, Paper 16 (P.T.A.B. July 27,
`2017). .................................................................................................................... 18
`Microboards Tech., LLC d/b/a Afinia v. Stratasys, Inc., IPR2015-00287,
`Paper 13 at 14 (PTAB May 28, 2015) .................................................................... 2
`Ex Parte Tatarka, Appeal 2014-007414; Appl. No. 13/066,118; Tech. Center
` 1700, Decided: March 28, 2016…..……………………………………………37 
`Unified Patents, Inc. v. Berman, IPR2016-01571, Paper 10 (P.T.A.B. Dec. 14,
`2016) ..................................................................................................................... 18
`Rules
`37 C.F.R. § 42.108 ..................................................................................................... 2
`
`iii
`
`

`

` 
`
`MPEP
`MPEP § 716.01(a)………………………………………………………………...23
`MPEP § 2111.01 I .................................................................................................... 50
`MPEP § 2143.01 I ...................................................................................................... 3
`MPEP § 2143 I ......................................................................................................... 16
`MPEP § 2143A ........................................................................................................ 25
`
`iv
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`

`

` 
`
`I.
`
` 
`
`INTRODUCTION
`
`The Board should deny the Petition as to all proposed grounds. Patent
`
`Owner will demonstrate that the Petitioner is clearly deficient in meeting its burden
`
`to show a reasonable likelihood of prevailing on any ground of unpatentability as
`
`to any claim.
`
`Petitioner’s primary reference for each of Grounds 1-6, the Liu patent, was
`
`previously considered by the Examiner during prosecution of U.S. Patent No.
`
`8,220,394 (“’394 Patent”), and the USPTO has rejected obviousness arguments
`
`based on substantially the same prior art features. The essence of the Liu patent is
`
`the reaction between aluminum and water which is entirely unrelated to the
`
`intermetallic reactions, such as Ni-Al, disclosed and claimed in the ‘394 Patent.
`
`There is simply no experimental evidence in the prior art to motivate the
`
`combination of Liu with the prior art listed in Grounds 1-6 in this highly
`
`unpredictable area of art. During prosecution, the Examiner clearly did not
`
`consider Liu as even particularly relevant art at all, even after the named inventor
`
`of the Liu patent, Dr. Liu, wrote the Examiner three letters (Ex. 2003, 2004 and
`
`2005) as third-party submissions imploring the Examiner not to grant the ‘394
`
`Patent over Liu.
`
`The inventors of the ‘394 Patent were the first in the entire oil industry to
`
`conceive and reduce to practice a shaped charge perforator with a reactive liner as
`
` 
`
`1
`
`

`

` 
`
`claimed in the ‘394 Patent, including using Ni and Al or certain other
`
`intermetallics in the liner, to cause a secondary reaction in the perforation tunnel.
`
`GEODynamics was the first company in the world to test the new perforator and
`
`bring it to market with great commercial success. Petitioner, DynaEnergetics, is an
`
`infringer seeking to trade on this success without the investment of years
`
`engineering work and hundreds of experiments required to accomplish the claimed
`
`inventions of the ‘394 Patent.
`
`Petitioner has failed to demonstrate the “reasonable likelihood that the
`
`petitioner would prevail with respect to at least 1 of the claims challenged” as
`
`required by 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108. Even if the proposed
`
`obviousness combinations (Grounds 1-6) demonstrate the existence of all the
`
`elements of the claims, Petitioner does not explain the motivation to combine these
`
`elements so that they would function effectively to create an exothermic
`
`intermetallic reaction in the perforation tunnel to give the unexpected and
`
`beneficial results addressed during the prosecution. Such unexpected results
`
`include clean perforation tunnels and formation of tip fractures in the target rock at
`
`the end of the perforation tunnel. “It is not sufficient to demonstrate that each of
`
`the components in a challenged claim is known in the prior art”; there must be a
`
`motivation to combine and a reasonable expectation of success. Microboards
`
`Tech., LLC d/b/a Afinia v. Stratasys, Inc., IPR2015-00287, Paper 13 at 14 (PTAB
`
`2
`
`

`

` 
`
`May 28, 2015); see also MPEP 2143.01 I. Petitioner lists potential rationales for
`
`combination without tying any of the rationales to a factual basis in the prior art or
`
`an experimental underpinning as required in this unpredictable area of art. Further,
`
`making the combinations with Liu in Grounds 1-6 renders the claimed invention of
`
`Liu inoperable.
`
`Petitioner’s primary reference for each proposed obviousness ground is the
`
`previously presented Liu patent which is based on creating a reaction in the
`
`perforation tunnel to enhance damage to the formation by having molten aluminum
`
`react with water in the formation. There is simply no relation between this
`
`mechanism and the exothermic intermetallic reactions claimed in the ‘394 Patent.
`
`The differences between a reaction between Al + H20 versus two metals such as Al
`
`+ Ni, are highlighted by the fact that the former generates substantial quantities of
`
`gaseous products and the latter does not, resulting in entirely different impacts on
`
`the oil and gas formation under the extreme temperatures and pressures present
`
`during perforation. There is also no disclosure in Liu of any liner components
`
`reacting to form an intermetallic compound.
`
`Combing Liu with the rest of the art listed in Grounds 1-6 fails to cure these
`
`deficiencies. Fischer, another reference previously presented to the Examiner
`
`during prosecution is a research paper from Sandia National Labs and merely lists
`
`an exothermic intermetallic reaction between Ni and Al as one of over 150 possible
`
`3
`
`

`

` 
`
`options for reactive combinations. Theis and Becker disclose the intermetallic Ni
`
`and Al reaction for use in military warheads that would require amounts of
`
`explosives far beyond anything that would be suitable for a perforation charge in
`
`an oil or gas well casing. Reese and Bourne and Lussier merely disclose
`
`perforation technology with a non-reactive liner that operates with entirely
`
`different physics than the claimed invention of the ‘394 Patent. Petitioner simply
`
`listing these features and arguing that the military technologies and the
`
`conventional charges are similar enough to motivate the combinations in Grounds
`
`1-6, fails to demonstrate the required reasonable expectation of success in this
`
`unpredictable area of art.
`
`
`
`In the alternative, pursuant to section 35 U.S.C. § 325(d), the Board should
`
`exercise its discretion to decline to hear this Petition where substantially the same
`
`arguments combining Petitioner’s primary prior art reference, the Liu patent, with
`
`other prior art comprising substantially the same features, were previously
`
`presented to the Examiner by Dr. Liu (the named inventor on the Liu patent
`
`reference) in three separate third-party submissions during prosecution. (Ex. 2003,
`
`2004 and 2005). Further, prior art related to combinations based on reactive liners
`
`for use in military warheads such as in Petitioner’s combinations with Liu
`
`including Theis and Becker in proposed Grounds 2 and 3, were already considered
`
`by the Examiner during prosecution as part of arguments related to the Nielson
`
`4
`
`

`

` 
`
`reference cited on the face of the ‘394 Patent. Nielson discloses: “[a] reactive
`
`material for use as a reactive liner in penetrating (shape-charge) warheads and for
`
`use in reactive fragments in fragmenting warheads….” (Ex. 2020, Nielson
`
`Abstract.) Given the Examiner’s detailed analysis of Nielson, and no analysis of
`
`Liu, in the rejections in the Office Actions during prosecution, the Examiner
`
`clearly concluded that Liu was not even to be counted among the closest prior art
`
`references.
`
`The potential combination of Liu and Fischer referenced as part of Grounds
`
`1, 4, 5 and 6 was already before the Examiner during prosecution since both Liu
`
`and Fischer are listed on the face of the ‘394 Patent as being presented to and
`
`considered by the Examiner. The U.S. counterpart to the Bourne PCT application
`
`that is referenced as part of Ground 5 was also previously presented to the
`
`Examiner during prosecution and is listed on the face of the patent as publication
`
`2004/0255812. Substantially the same combination of prior art features have thus
`
`already been considered by the USPTO Examiner, and overcome, in granting the
`
`‘394 Patent.
`
`In summary, the Petition should be dismissed in its entirety because
`
`Petitioner relies on defective claim construction and fails to establish a reasonable
`
`basis for, or even a reasonable likelihood of, finding any ‘394 Patent claim
`
`unpatentable. Thus, institution of an inter partes review in this proceeding would
`
`5
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`

`

` 
`
`also waste time and resources of the Board and undermine the intent to provide a
`
`“just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. §42.1(b).
`
`II. THERE IS NO PRIMA FACIE CASE OF OBVIOUSNESS BASED ON
`COMBINATIONS WITH LIU.
`
` 
`
`A.
`
`Petitioner Disregards the ‘394 Patent Prosecution History And
`Dr. Liu’s Own Teachings And Third Party Submissions That Liu
`Is Directed To An Aluminum-Water Reaction.
`
`
`The named inventor of the Liu patent is Liqing Liu and his application was
`
`filed on August 8, 2001. The Liu patent is currently assigned to Patent Owner,
`
`GEODynamics. The Abstract of Liu states in part: “A chemical reaction between
`
`molten aluminum and an oxygen carrier such as water to do useful work is
`
`disclosed….Also shown are methods to build and to detonate or fire explosive
`
`devices in an oxygen carrying liquid (e.g. water) to perforate and stimulate a
`
`hydrocarbon-bearing formation.” (Emphasis added.) Similarly, claim 1 of Liu
`
`states:
`
`1. A method to utilize the energy released by the molten
`aluminum-water reaction to do useful work by creating a dual
`explosion in a medium to which desired mechanical effects
`are to be created comprising the following steps
`
`a) placing in the presence of water a detonable or combustible
`explosive device in the said medium, the said explosive
`device being capable of converting aluminum powder
`to aluminum in its molten state to react with water;
`and,
`
`b) actuating the said explosive device to initiate the first of
`
`6
`
`

`

` 
`
`the said dual-explosion which is a detonation or combustion
`of the said explosive device, creating mechanical
`effects in the said medium and releasing aluminum in
`its molten state, wherein the molten aluminum then
`reacts with water to create a second explosion of the said
`dual-explosion, enhancing or modifying the mechanical effects
`created by the said first explosion. (Emphasis added.)
`
`
`The Lui patent repeatedly confirms that the mechanism of the second
`
`explosion is based on “a shaped charge so that it can project some aluminum
`
`in molten state into the perforation….The molten aluminum is then forced to
`
`react with water to create an explosion locally within the perforation.” (Lui
`
`at col. 6:9-13, Ex. 1004). Similar statements are made at col. 7:26-33 and
`
`11:1-7 and 14:34-40 of Liu. The statement in column 11 is unequivocal that
`
`“use of the present invention” involves the reaction of aluminum and water
`
`as the second explosive event:
`
`the use of the present invention creates a “dual-explosion”. The first
`explosion is from the reaction of the explosive device, and the
`second being the Al-H2O reaction.
`
`
`
`
`
`(Ex. 1004, col. 11:4-6)(emphasis added). The term “intermetallic” does not appear
`
`anywhere in Liu, and based on the above statements that the second explosive
`
`event in the “present invention” of Liu is based on the aluminum and water
`
`reacting, Liu clearly teaches away from the invention of the ‘394 Patent that is
`
`based on the activation of the shaped charge causing certain metals in the liner,
`
`such as Ni and Al, to undergo an intermetallic alloying reaction. The aluminum
`
`7
`
`

`

` 
`
`in the Al-H2O reaction in Liu unquestionably cannot be performing the “same
`
`function” as the aluminum in the Ni-Al reaction disclosed and claimed in the
`
`‘394 Patent as the chemistry and physics involved are entirely different, and
`
`the two reactions are clearly not known substitutes for each other.
`
`
`
`Further, the result of the Al - H20 reaction in Liu is generation of significant
`
`amounts of gaseous products. Liu states: “[t]he energetic Al - H20 in the small
`
`perforation releases a large amount of heat and hydrogen gas, and generate a
`
`pressure pulse.” (Ex. 1004, col 26:3-5)(emphasis added). That pressure pulse acts
`
`to create fractures in the formation. (Ex. 1004, col 26:6-8.) As will be discussed
`
`further below, the result of the intermetallic reaction of the ‘394 Patent involves no
`
`such generation of gaseous products.
`
`
`
`Dr. Liu provided the Examiner with three separate letters (Ex. 2003, 2004
`
`and 2005) during prosecution of the application for the ‘394 Patent explaining why
`
`he considered that the application should not be granted. The Liu reference’s
`
`relevancy to the ‘394 Patent claims was (and is) so poor, that even despite Dr.
`
`Liu’s three letters and the Examiner noting the Liu patent as being considered in
`
`official USPTO documents, the Liu patent reference was not cited in an Office
`
`Action. Nevertheless, Dr. Liu’s letters are telling as to why the proposed
`
`obviousness combinations in Grounds 1-6, all based on Liu as the primary
`
`reference, would not have presented a reasonable expectation of success.
`
`8
`
`

`

` 
`
`
`
`In his first letter to the Examiner (David Parsley) dated January 12, 2009
`
`(Ex. 2003) during prosecution of the application for the ‘394 Patent, Dr. Liu states
`
`that the: “Brupbacher et al patent further proves that the named application is
`
`hiding an important fact that its shaped charge (perforator) has to be used in
`
`water.” (Ex. 2003 at p. 1.) Dr. Liu also explains that Brupbacher, U.S. Patent No.
`
`5,212,343, and dating from 1993 discloses that the NiAl intermetallic reaction is
`
`one of many possible candidate reactions for use in “producing a water explosion”
`
`or method of generating hydrogen gas that are the subject of Brupbacher.
`
`
`
`In his second letter to the Examiner during prosecution dated January 19,
`
`2009 (Ex. 2004), Dr. Liu argues that U.S. Patent No. 7,278,354 and 7,278,353
`
`disclose the use of intermetallics as a shaped charge liner material. He also
`
`repeated his assertion that the application for the ‘394 Patent was not patentable
`
`over his Liu patent. While the ‘354 and ‘353 patents disclose NiAl as an
`
`intermetallic reaction, the claimed inventions relate to a multilayer structure
`
`dissimilar to the green compact claimed in the ‘394 Patent. Notably, the claimed
`
`inventions of the ‘353 and ‘354 Patents are military-related as the applications
`
`indicate Government contract rights for various military agencies, including that
`
`with respect to the ‘354 Patent, the research was performed in part for the U.S.
`
`Army Space Missile Defense Command.
`
`9
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`

` 
`
`
`
`In his third letter (Ex. 2005) to the Examiner dated November 30, 2010,
`
`during prosecution of the application for the ‘394 Patent, Dr. Liu again explains
`
`that the invention of the Liu patent is the “new concept” including that “the second
`
`explosion occurs within the target which is molten aluminum/water reaction.”
`
`(Ex. 2005 at p. 1)(emphasis added). Dr. Liu again argues: “the application in
`
`question is an obviously anticipated variation to the ‘dual explosion’ shaped charge
`
`disclosed by USPP 7,393423 (Liu) and is not patentable.” (Ex. 2005, at p. 1.)
`
`
`
`However, Petitioner now must necessarily contradict Liu himself and would
`
`have the Board believe, as stated in footnote 4 on page 24 of the Petition, that
`
`despite his three letters to the Examiner during prosecution of the ‘394 Patent, Dr.
`
`Liu did not fully appreciate his own invention and that:
`
`the inventor of Liu submitted that he considered the reaction with
`water as the most important aspect of Liu. See Ex. 1011 at 3, Ex. 1012
`at 3. However, the inventor’s personal views do not characterize or
`affect what Liu as prior art teaches—the prior art speaks for itself
`and, in this case, Liu would have been obvious to combine with
`Fischer and the combination discloses each feature recited by the
`identified Challenged Claims under this ground, for the reasons set
`forth above.
`
`
`(emphasis added). Petitioner argues instead that the reference to “fuel” in Liu at
`
`col. 20, lines 29-49 excerpted below, somehow makes a combination with an
`
`intermetallic compound at least “obvious to try”:
`
`10
`
`

`

` 
`
`The Petitioner’s stance here is untenable with the facts, science, and in stark
`
`
`
`contradiction to Dr. Liu’s own statements.
`
` Petitioner at page 17 quotes from Liu:
`
`In certain embodiments, “[i]n stoichiometry, a part of aluminum is
`replaced by other materials that can be generally classified as ‘fuel’,
`such as magnesium, lithium, zirconium, silicon, boron, etc.
` Id. at 20:47-49. (Emphasis added.)
`
`Putting aside, arguendo, that the term “stoichiometry” in this context requires
`
`a construct that Patent Owner contests; Petitioner then avers, based on the
`
`declaration of Walters the following:
`
`11
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`

`

` 
`
`One of ordinary skill in the art would therefore understand this
`reference to “fuel” to include materials that  react in liners in the
`presence of aluminum [emphasis added] to produce “a substantial
`amount of thermal energy” upon detonation of the associated shaped
`charge”. (Petition at p. 17.)
`
`Highlighting the Petitioner’s attempt at nuanced wording; materials that react “in
`
`the presence of aluminum” is not the same thing and hardly teaches or suggests a
`
`material that reacts with aluminum in an intermetallic alloying reaction as taught
`
`by the ‘394 Patent claims, and Liu’s “fuel” in the “presence of aluminum” certainly
`
`cannot teach or suggest producing an intermetallic compound of electron
`
`concentration of 1.5, even if one accepts Petitioner’s read of “fuel.”
`
`The “fuels” mentioned by Liu (Mg, Li, Zr, Si, B) are combustible themselves
`
`and thus have the potential to provide supplementary energetic release. For
`
`example, lithium (Li) is pyrophoric which means it ignites at room temperature,
`
`thus it is a “fuel” itself. If Liu was proposing an actual intermetallic reaction with
`
`aluminum to produce LiAl alloys (for example) and had envisioned at the time of
`
`his invention those actual intermetallic alloying reactions, then he would have
`
`explicitly disclosed those reactions. And even if he had, his water based reactions
`
`would not necessarily result in a compound with a valence to atom ratio of 1.5.
`
`
`
`These reasons would have been apparent to the Examiner during the lengthy
`
`prosecution of the ‘394 Patent, and hence suggest why he did not see a need to cite
`
`12
`
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`

` 
`
`Liu in an Office Action.
`
`
`
`These facts notwithstanding, Petitioner here and in other proceedings
`
`nonetheless attempts to recycle Liu and apply convenient constructions and
`
`dubiously nuanced wording. Any attempt to contort Liu’s system to cover the ‘394
`
`Patent stretches reason, and as shown further below, the combination with
`
`Petitioner’s secondary references cannot remedy those fatal flaws.
`
`Furthermore, the declaration of Larry Behrmann at ¶¶ 35-50 (Ex. 2023) also
`
`confirms that given the extensive, complex, expensive and time-consuming testing
`
`that would have been required, combining the shaped charge disclosed by Liu with
`
`an intermetallic reaction would not present a reasonable expectation of success in
`
`such an unpredictable area of art. This suggestion would in effect be an invitation
`
`for an expensive, time-consuming and complex research project. Research
`
`projects in this area was one of Larry Behrmann’s responsibilities as Director of
`
`Perforating Research at Schlumberger and he has particular expertise in this area to
`
`understand the unpredictable nature of such experiments. As the former Director
`
`of Perforating Research at Schlumberger, the largest oilfield services company in
`
`the world, Larry Behrmann is a luminary in the field perforation shaped charges in
`
`the petroleum industry, has designed shaped charges, is the co-inventor on patents
`
`covering shaped charge liners, and his opinions are therefore entitled to significant
`
`weight from the Board. (Ex. 2023 at ¶¶ 6-7.) 
`
`13
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`
` 
`
`
`B. The Ni-Al Reaction Or Other Intermetallics Claimed In The ’394
`Patent Were Not Known Substitutes In the Prior Art for the Al -
`H20 Reaction of Liu.
`
`U.S. Patent No. 8,220,394 (‘394 Patent) states on its face that it was issued
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`July 17, 2012 to QinetiQ, Ltd. The ‘394 Patent states in part that the claimed
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`invention relates to an oil and gas well shaped charge perforator capable of
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`providing an exothermic reaction after detonation comprising a “reactive shaped
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`charge liner, wherein the liner comprises a composition capable of an exothermic
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`reaction upon activation of the shaped charge liner.” (‘394 Patent, col. 2:58-60.)
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`An “inert” metal is also added to the liner “to increase the penetrative power of the
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`jet.” (‘394 Patent, col. 5:48-51.) The benefit of the new shaped charge with a
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`reactive liner is to “fracture substrates” to create “improved perforations” and
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`improve “fluid outflow” from the formation. ‘394 Patent, col. 2:45-47, 54-60.
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`The ‘394 Patent describes the shaped charge and liner in Fig. 1:
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`The ‘394 Patent at col. 7:7-19 explains the figure as follows:
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`As shown in FIG.1 a cross section view of a shaped charge,
`typically axi-symmetric about centre line 1, of generally conventional
`configuration comprises a substantially cylindrical
`housing 2 produced from a metal, polymeric, GRP or reactive
`material according to the invention. The liner 6 according to
`the invention, has a wall thickness of typically say 1 to 5% of
`the liner diameter but may be as much as 10% in extreme
`cases. The liner 6 fits closely in the open end 8 of the cylindrical
`housing 2. High explosive material 3 is located within
`the volume enclosed between the housing and the liner. The
`high explosive material 3 is initiated at the closed end of the
`device, proximate to the apex 7 of the liner, typically by a
`detonator or detonation transfer cord which is located in
`recess 4.
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`Claim 1 makes clear that the claimed invention relies on a reaction between two
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`metals such as Ni-Al, and water is nowhere part of the reaction mechanism:
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`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.
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`(Ex. 2001, col. 7:64-col. 8:11)(emphasis added).
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`There is no teaching or suggestion in Liu or in any of the prior art proposed
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`in Grounds 1-6 that an “intermetallic alloying reaction” disclosed and claimed in
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`the ‘394 Patent is a known substitute for the reaction of Al - H20 in Liu.
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`Substituting Ni for H20 is nowhere even suggested in Liu, and would also render
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`the mechanism of Liu inoperable in the absence of water. Even if the substitution
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`were only partial, such would necessarily reduce the gas generating effect of the
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`water reaction in Liu.
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`The Office has determined in MPEP § 2143 I that the Supreme Court in its
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`KSR opinion requires that in order to present a prima facie case of obviousness, the
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`combination must use known methods to create the combination from the prior art
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`without changing the function of the elements being combined:
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`The rationale to support a conclusion that the claim would have been
`obvious is that all the claimed elements were known in the prior
`art and one skilled in the art could have combined the elements as
`claimed by known methods with no change in their respective
`functions, and the combination yielded nothing more than predictable
`results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82
`USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189
`USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement
`Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great
`Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87
`USPQ 303, 306 (1950). (Emphasis added.)
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`This Liu fails to do alone or in any combination in Grounds 1-6. The Federal
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`Circuit has specifically held that merely being “cautiously optimistic” that a
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`proposed combination of prior art would yield a predictable result is not enough for
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`Petitioner to meet its burden to show a reasonable expectation of success necessary
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`to support a prima facie case of obvious. See Sanofi, et al. v. Watson Labs. Inc. et
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`al., cause no. 2016-2722 __ Fed. Cir. __(Nov. 9, 2017)(“We conclude that the
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`district court did not commit clear error in finding that a person of ordinary skill in
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`the art ‘would have been at best cautiously optimistic that dronedarone coul