Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 18
`Entered: February 13, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`STAGE COMPLETIONS INC. and STAGE COMPLETIONS (USA)
`CORP.,
`Petitioners,
`v.
`GRYPHON OILFIELD SOLUTIONS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2018-00776
`Patent 9,611,727 B2
`_______________
`
`
`Before BENJAMIN D. M. WOOD, BARRY L. GROSSMAN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`WOOD, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
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`

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`IPR2018-00776
`Patent 9,611,727 B2
`
`
`I.
`
`INTRODUCTION
`
`Stage Completions Inc. and Stage Completions (USA) Corp.
`(collectively, “Petitioner”) filed a Request for Rehearing (Paper 13, “Req.”)
`of the Decision (Paper 12, “Dec.”) denying its Petition (Paper 2, “Pet.”). In
`accordance with our order (Paper 14), Gryphon Oilfield Solutions, LLC
`(“Patent Owner”) filed an opposition (Paper 15, “Opp.”) and Petitioner filed
`a reply (Paper 16, “Reply”). For the reasons that follow, the Request for
`Rehearing is denied.
`
`II. ANALYSIS
`
`Background
`A.
`The Petition challenged the patentability of claims 1–7 of the ’727
`patent, based on six proposed grounds of unpatentability. Pet. 6. Although
`we denied institution of inter partes review of all seven challenged claims,
`Dec. 8–18, Petitioner limits its Rehearing Request to claims 1–6. Req. 6–11.
`Claim 1 is independent and claims 2–6 ultimately depend from claim 1.
`Claim 1 recites a method for fracturing a well in a formation that
`requires placing a system of valves “in a casing string disposed in the well.”
`Petitioner did not propose a construction for “a casing string disposed in the
`well” in the Petition. Nor did Petitioner expressly assert that Murray—the
`reference alleged to anticipate claim 1 and the primary reference in
`Petitioner’s obviousness grounds—teaches this limitation. Instead,
`Petitioner stated that Murray discloses placing its valve system “in a well.”
`Pet. 31 (citing Ex. 1004, Title, Abstract, 1:52-56, 58–64, 2:8–21, 7:14; Ex.
`1003 ¶ 65).
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`IPR2018-00776
`Patent 9,611,727 B2
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`In its Preliminary Response, Patent Owner asserted that “‘a casing
`string disposed in the well’ refers to cemented applications in which the
`casing string is cemented in the wellbore.” Prelim. Resp. 12-13. Patent
`Owner further asserted that “Murray does not disclose a cemented casing
`string—it only discloses a system run on a liner with open-hole packers.”
`Id. at 13.
`Shortly after Patent Owner filed its Preliminary Response, Petitioner
`requested, by email, “an opportunity to file a reply to the Preliminary
`Response to address Patent Owner’s construction of ‘casing string disposed
`in a well, as well as Patent Owner’s assertion that Murray does not disclose
`this limitation under Patent Owner’s construction.” Ex. 1020, 3 (submitted
`with Rehearing Request). As Petitioner did not establish good cause for
`submitting a reply (see 37 C.F.R. § 42.108(c)), we denied Petitioner’s
`request. Ex. 1020, 1. In our subsequent Decision, we construed “casing
`string disposed in the well” to mean “steel pipe that is cemented in place in a
`well bore to stabilize the wellbore,” and determined that the term “does not
`encompass liner with open-hole packers.” Dec. 8. We further determined
`that Petitioner had not persuaded us that Murray discloses this limitation. Id.
`at 12. As a result, we denied the Petition. Id. at 19.
`
`Legal Principles
`B.
`A party dissatisfied with a decision by the Board may request
`rehearing. 37 C.F.R. § 42.71(d). “The burden of showing [the] decision
`should be modified lies with the party challenging the decision.” Id. The
`request for rehearing “must specifically identify all matters the party
`believes the Board misapprehended or overlooked, and the place where each
`matter was previously addressed in” the petition. Id. When rehearing a
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`IPR2018-00776
`Patent 9,611,727 B2
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`decision whether to institute inter partes review, we review the decision for
`an “abuse of discretion.” 37 C.F.R. § 42.71(c).
`
`C. Discussion
`Petitioner argues that we erroneously construed “casing string
`disposed in the well” to require the pipe to be “cemented in place.” Req. 6–
`11. Petitioner further argues that we erroneously found that Murray does not
`disclose the casing-string limitation, even under our construction. Id. at 11–
`15. In support of these arguments, Petitioner asks us to consider several
`exhibits that were not previously submitted with the Petition. See Exs.
`1021–1025.
`Patent Owner disputes that we erred in construing the casing-string
`limitation or that we erred in finding that Murray does not disclose the
`limitation. Opp. 3–6. Patent Owner also argues that the Request is
`procedurally flawed. Id. at 3.
`Because we cannot misapprehend or overlook arguments not
`previously made, the Board does not consider arguments made in a request
`for rehearing unless the request “specifically identif[ies] . . . the place where
`[that argument] was previously addressed in” the petition. 37 C.F.R.
`§ 42.71(d). Petitioner does not identify where it construed the casing-string
`limitation, or where it asserted that Murray discloses this limitation. On the
`contrary, as stated above, Petitioner did not construe this casing-string term
`in the Petition, and did not expressly allege that Murray discloses its system
`of valves “in a casing string disposed in the well.” Petitioner only alleged
`that Murray discloses placing its valve system “in a well,” essentially
`disregarding the “casing string” term in its analysis. Thus, under 37 C.F.R.
`§ 42.71(d), Petitioner’s Rehearing Request should be denied.
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`IPR2018-00776
`Patent 9,611,727 B2
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`We understand Petitioner to essentially ask us to waive application of
`that rule in this case, and in doing so, consider Petitioner’s new evidence.
`See 37 C.F.R. § 42.5(b) (“The Board may waive or suspend a requirement of
`parts 1, 41, and 42 and may place conditions on the waiver or suspension.”).
`We should do so, according to Petitioner, because it “could not have
`reasonably anticipated that Patent Owner would argue—and the Board
`would agree in its Decision—that the ‘casing string’ recited in [the claims]
`had to be cemented in place.” Req. 6–7. Petitioner also asserts that it “could
`not have reasonably anticipated that the Board would find that ‘the term
`tubular [string] is likely not the same as ‘casing string.’” Id. at 11.
`A petition for inter partes review “must set forth . . . [h]ow the
`challenged claim is to be construed,” and “must specify where each element
`of the claim is found in the prior art patents or printed publications relied
`upon.” 37 C.F.R. § 42.104(b)(3). Petitioner stated in the Petition that each
`claim term “should be given their broadest reasonable plain and ordinary
`meaning,” but did not specify what that meaning should be. The ’727 patent
`does not expressly define “casing string,” so it is appropriate to “look to
`technical dictionaries for assistance in determining [a] term’s meaning to a
`person of ordinary skill.” Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed.
`Cir. 2005). Patent Owner provided excerpts from several technical sources
`that define “casing” and “casing string” as being cemented in place. See,
`e.g., Ex. 2004, 1 (excerpt from “Schlumberger Oilfield Glossary” defining
`“casing” alternatively as “[l]arge-diameter pipe lowered into an openhole
`and cemented in place,” and “[s]teel pipe cemented in place during the
`construction process to stabilize the wellbore”); Ex. 2005, 1 (excerpt from
`“Schlumberger Oilfield Glossary” defining “casing string” as “[a]n
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`IPR2018-00776
`Patent 9,611,727 B2
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`assembled length of steel pipe configured to suit a specific wellbore . . .
`sections of pipe are connected and lowered into a wellbore, then cemented in
`place.”); Ex. 2006, 20 (excerpt from “Oilwell Drilling and Servicing”
`defining “casing” as “steel pipe threaded together and cemented into a
`well”); Ex. 2007, 1 (stating that casing strings “are set in the well and
`cemented in place under specific state requirements”). Conversely,
`Petitioner has not provided any technical-dictionary definition of “casing” or
`“casing string” that does not refer to casing as being cemented in place.1
`Given this evidence, we are not persuaded that Petitioner could not have
`reasonably foreseen that Patent Owner would propose construing casing
`string as being cemented in place.
`We also find unpersuasive Petitioner’s contention that it was
`unforeseeable that we would not assume that “tubular string” and “casing
`string” were the same thing.2 Our reviewing court has held in the context of
`claim construction that “different claim terms are presumed to have different
`
`
`1 Petitioner asserts that Patent Owner states that “[t]he production casing is
`typically set into place with cement.” Reply 2 (citing Opp. 8). Petitioner
`infers from this that cementing casing is optional. Id. In fact, Patent Owner
`(at page 5 of its Opposition) quotes an excerpt of Exhibit 2007, which states,
`in context, “[t]he production casing is typically set into place with cement
`using the same method as the one used for surface and intermediate casing.”
`The “same method” referred to was described previously in the Exhibit as
`“circulation.” Thus, a fairer reading of this sentence is that the circulation
`method of cementing may be optional, not that cementing itself is optional.
`2 Petitioner did not, in the Petition, assert that “tubular string” means “casing
`string.” Instead, Petitioner cited to, inter alia, a limitation in claim 1 of
`Murray that recites “locating the tubular string in the wellbore” in support of
`its assertion that “Murray discloses placing its system of valves . . . in a
`well.” Pet. 31.
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`Patent 9,611,727 B2
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`meanings.” Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379,
`1382 (Fed. Cir. 2008). That principle is a helpful starting point in
`determining whether a prior art reference teaches a given limitation; while it
`is certainly possible that the reference does so using different language, it is
`incumbent on Petitioner, as the party bearing the burden of showing that it is
`entitled to relief, to explain how the different terms have the same meaning.
`Petitioner did not do so here.3
`Because we are not persuaded that Petitioner could not reasonably
`have foreseen Patent Owner’s proposed construction of “casing string
`disposed in a well,” or its argument that Murray does not teach this
`limitation under Patent Owner’s proposed construction, we decline to waive
`the requirement that a request for rehearing must specify where an allegedly
`misapprehended or overlooked argument was previously addressed.
`Accordingly, we decline to rehear our decision denying the Petition.
`
`
`3 In support of its assertion that it could not have reasonably anticipated that
`the Board would not assume that “tubular string” and “casing string” were
`synonymous, Petitioner alleges that “the ’727 Patent specifically uses ‘well
`casing’ and ‘tubing string’ interchangeably.” Req. 12 (citing Ex. 1001,
`8:5–52). Petitioner characterizes the cited portion of the ‘727 patent as
`“describing pumping darts down ‘into well casing 49’ and then retrieving
`those same darts using removal tools inserted ‘in the tubing string.’” Id.
`Even if we were to consider this late argument, we would find it
`unpersuasive. Prior to the passage in the ’727 patent on which Petitioner
`relies, the ’727 patent discusses running “coil tubing or conventional
`tubing… into well casing 49.” Ex. 1001, 7:23–25. This passage strongly
`suggests that “tubing” (or “tubing string”) is not used interchangeably with
`“well casing.”
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`IPR2018-00776
`Patent 9,611,727 B2
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`III. CONCLUSION
`
`For the foregoing reasons, Petitioner’s Request for Rehearing is
`denied.
`
`IV. ORDER
`
`For the reasons given, it is hereby
`ORDERED that the Request for Rehearing is denied.
`
`
`
`For PETITIONERS:
`
`Brit Nelson
`Brian Buss
`Wasif Qureshi
`JACKSON WALKER LLP
`bnelson@jw.com
`bbuss@jw.com
`wqureshi@jw.com
`
`For PATENT OWNER:
`
`J. Dean Lechtenberger
`John Keville
`WINSTON & STRAWN LLP
`jlechtenberger@winston.com
`jkeville@winston.com
`
`
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