Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 7
`Date: February 12, 2021
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HUNTING TITAN, INC.,
`Petitioner,
`
`v.
`
`DYNAENERGETICS EUROPE GMBH,
`Patent Owner.
`____________
`
`PGR2020-00080
`Patent 10,472,938 B2
`____________
`
`
`
`Before JOSIAH L. COCKS, SCOTT A. DANIELS, and ERIC C.
`JESCHKE, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 7
`Date: February 12, 2021
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HUNTING TITAN, INC.,
`Petitioner,
`
`v.
`
`DYNAENERGETICS EUROPE GMBH,
`Patent Owner.
`____________
`
`PGR2020-00080
`Patent 10,472,938 B2
`____________
`
`
`
`Before JOSIAH L. COCKS, SCOTT A. DANIELS, and ERIC C.
`JESCHKE, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324
`
`
`
`PGR2020-00080
`Patent 10,472,938 B2
`
`
`I.
`
`INTRODUCTION
`
`A. Background and Summary
`
`Hunting Titan, Inc. (“Petitioner”) filed a Petition requesting post-grant
`
`review of claims 1–20 of U.S. Patent No. 10,472,938 B2 (Ex. 1001, “the
`
`’938 patent”). Paper 1 (“Pet.”). DynaEnergetics Europe GmbH (“Patent
`
`Owner”) filed a Preliminary Response to the Petition. Paper 6 (“Prelim.
`
`Resp.”).1
`
`
`
`We have authority to determine whether to institute a post-grant
`
`review. 35 U.S.C. § 324. For the reasons discussed below, we deny the
`
`Petition and do not institute a post-grant review.
`
`B. Related Proceedings
`
`
`
`Both parties identify the following matter involving the ’938 patent:
`
`DynaEnergetics Europe GmbH, and DynaEnergetics US, Inc. v. Hunting
`
`Titan, Ltd., that was initially Civil Action No. 6:20-cv-00069 in the Western
`
`District of Texas but has since been transferred and is now Civil Action No.
`
`4:20-cv-02123 in the Southern District of Texas. Pet. 2; Paper 4, 1–2.
`
`
`
`1 The Petition identified “DynaEnergetics GmbH & Co. KG” as the patent
`owner with respect to the ’938 patent. Pet. i (caption). In its Mandatory
`Notice (Paper 3), Patent Owner indicates that “DynaEnergetics GmbH &
`Co. KG has been dissolved and as recorded at Reel/Frame: 051691/0453 has
`assigned U.S. Patent No. 10,472,938 to DynaEnergetics Europe GmbH, the
`patent owner and real party in interest to this proceeding.” Paper 4 n.1. We,
`therefore, regard DynaEnergetics Europe GmbH as Patent Owner in this
`proceeding, which is reflected in the caption of this Decision.
`
`2
`
`
`
`PGR2020-00080
`Patent 10,472,938 B2
`
`
`C. The ’938 Patent
`
`
`
`The ’938 patent is titled “Perforation Gun Components and System.”
`
`Ex. 1001, code (54). The Abstract of the ’938 patent is reproduced below:
`
`Components for a perforation gun system are provided
`
`including combinations of components including a self-
`centralizing charge holder system and a bottom connector that
`can double as a spacer. Any number of spacers can be used with
`any number of holders for any desired specific metric or imperial
`shot density, phase and length gun system.
`
`Id. at code (57).
`
`Figures 1 and 2 of the ’938 patent are reproduced below:
`
`
`
`
`
`
`
`Figure 1 above depicts “a side cut view of a perforation gun system
`
`according to an embodiment.” Id. at 3:54–55. Figure 2 above shows “a side
`
`view of a top connector, bottom connector and stackable charge holders of a
`
`perforation gun system in accordance with another embodiment.” Id. at
`
`3:56–58. Gun system 10 includes outer gun carrier 12 (shown in Figure 1),
`
`top connector 14, stackable charge holder 16 for centralizing single shaped
`
`3
`
`
`
`PGR2020-00080
`Patent 10,472,938 B2
`
`charge 18 within gun carrier 12, detonation cord 20 (shown in Figure 2), and
`
`bottom connector 22. Id. at 5:38–46.
`
`
`
`Figure 27 of the ’938 patent is reproduced below:
`
`
`
`Figure 27 above shows a “perspective view of a detonator” according
`
`to an embodiment. Id. at 4:42–43. Detonator assembly 26 includes
`
`detonator head 100, detonator body 102, and a plurality of detonator wires
`
`104, including through wire 106, signal-in wire 108, and ground wire 110.
`
`Id. at 8:6–10.
`
`
`
`4
`
`
`
`PGR2020-00080
`Patent 10,472,938 B2
`
`
`Figure 32 of the ’938 patent is reproduced below:
`
`
`
`
`
`Figure 32 above depicts “a detailed side view of a tandem seal adapter
`
`and detonator” in accordance with an embodiment of the invention of the
`
`’938 patent. Id. at 4:53–54. Figure 32 also shows connection of detonator
`
`assembly 26 to tandem seal adapter 48 and pressure bulkhead 124. Id. at
`
`8:28–31.
`
`D. Illustrative Claim
`
`Independent claims 1 is illustrative of the claimed subject matter and
`
`is reproduced below:
`
`1. A perforating gun, comprising:
`an outer gun carrier;
`a charge holder positioned within the outer gun carrier and
`including at least one shaped charge;
`a detonator contained entirely within the outer gun carrier,
`the detonator including
`a detonator body containing detonator components,
`
`5
`
`
`
`PGR2020-00080
`Patent 10,472,938 B2
`
`
`a wireless signal-in connector, a wireless through
`wire connector, and a wireless ground contact connector,
`and
`
`the wireless
`an insulator electrically isolating
`signal-in connector from the wireless through wire
`connector; and,
`a bulkhead, wherein the bulkhead includes a contact pin in
`wireless electrical contact with the wireless signal-in connector,
`wherein
`at least a portion of the bulkhead is contained within a
`tandem seal adapter, and the wireless ground contact connector
`is in wireless electrical contact with the tandem seal adapter.
`
`Ex. 1001, 11:16–35.
`
`E. Evidence Relied Upon
`
`Petitioner relies upon the following references in asserting that the
`
`challenged claims are unpatentable:
`
`Reference
`
`Publication/Patent Number
`
`Exhibit
`
`Black
`
`US 2012/0247771 A1 published Oct. 4,
`2012
`
`Lendermon
`
`US 4,744,424 issued May 17, 1988
`
`Schacherer
`
`US 9,689,223 B2 issued June 27, 2017
`
`SLB Catalog
`
`Harrigan
`
`EWAPS
`
`Rogman
`
`Schlumberger 2008 Perforating Services
`Catalog
`US 2016/0084048 A1 published Mar. 24,
`2016
`2012 European and West African
`Perforating Symposium, Selective
`Perforation: A Game Changer in
`Perforating Technology- Case Study
`US 2015/0330192 A1 published Nov. 19,
`2015
`
`Lanclos
`
`US 9,080,433 B2 issued July 14, 2015
`
`Goodman
`
`US 2008/0149338 A1 published June 26,
`
`1002
`
`1003
`
`1004
`
`1005
`
`1012
`
`1013
`
`1014
`
`1015
`
`1018
`
`6
`
`
`
`PGR2020-00080
`Patent 10,472,938 B2
`
`
`2008
`
`
`
`
`
`Petitioner also relies upon the declaration testimony of Mr. Robert
`
`Parrott (Ex. 1007) in support of its challenges.
`
`F. Asserted Grounds of Unpatentability
`
`
`
`Petitioner asserts that claims 1–20 of the ’938 patent are unpatentable
`
`on the following grounds (Pet. 4–5):
`
`Claim(s) Challenged
`
`35 U.S.C. §
`
`Reference(s)/Basis
`
`1–20
`
`1–20
`
`1, 2, 4, 5, 7–20
`
`3, 6
`
`1–20
`
`112
`
`112
`
`102
`
`103
`
`103
`
`1, 2, 4, 5, 7–9, 11–20 102
`
`3, 6, 10
`
`103
`
`1, 2, 4, 5, 7–20
`
`3, 6
`
`1–20
`
`102
`
`103
`
`103
`
`“Indefinite”
`
`“Written Description”
`
`“Anticipated by Schacherer”
`
`“Obvious by Schacherer with
`common knowledge, Rogman,
`Harrigan, EWAPS, Lendermon,
`and/or Goodman”
`“Obvious by Schacherer with
`common knowledge, Black,
`Lanclos, Rogman, Harrigan,
`EWAPS, Goodman, and/or SLB
`Catalog”
`“Anticipated by Black”
`
`“Obvious by Black with common
`knowledge, Schacherer, Rogman,
`Harrigan, EWAPS, Lendermon,
`and/or Goodman”
`“Anticipated by Lanclos”
`
`“Obvious by Lanclos with
`common knowledge, Rogman,
`Harrigan, EWAPS, Lendermon
`and/or Goodman”
`“Obvious by Lanclos with
`common knowledge, Schacherer,
`
`7
`
`
`
`PGR2020-00080
`Patent 10,472,938 B2
`
`Claim(s) Challenged
`
`35 U.S.C. §
`
`Reference(s)/Basis
`
`1–17, 19, 20
`
`10, 19
`
`1–20
`
`1–9, 11–20
`
`10, 19
`
`1–6, 8–10, 12
`
`7, 11, 13–20
`
`1–17, 19, 20
`
`1–20
`
`102
`
`103
`
`103
`
`102
`
`103
`
`102
`
`103
`
`102
`
`103
`
`Black, Rogman, Harrigan,
`EWAPS, Lendermon, Goodman,
`and/or SLB Catalog”
`“Anticipated by Rogman”
`
`“Obvious by Rogman with
`common knowledge, Schacherer,
`Harrigan, Black, Lanclos,
`EWAPS, and/or Lendermon”
`“Obvious by Rogman with
`common knowledge, Schacherer,
`Black, Lanclos, and/or EWAPS”
`“Anticipated by Harrigan”
`
`“Obvious by Harrigan with
`common knowledge, Schacherer,
`Black, Lanclos, Rogman,
`Harrigan, Goodman, and/or SLB
`Catalog”
`“Anticipated by EWAPS”
`
`“Obvious by EWAPS with
`common knowledge, Schacherer,
`Black, Lanclos, Rogman,
`Harrigan, Goodman, and/or SLB
`Catalog”
`“Anticipated by Goodman”
`
`“Obvious by Goodman with
`common knowledge, Schacherer,
`Black, Lanclos, Rogman,
`Harrigan, EWAPS, and/or SLG
`Catalog”
`
`II. ANALYSIS
`
`There are certain “Requirements of Petition” that must be satisfied for
`
`a Petition requesting a post-grant review to be considered. 35 U.S.C. §
`
`322(a). Specifically, § 322(a)(3) mandates that “the petition identifies, in
`
`8
`
`
`
`PGR2020-00080
`Patent 10,472,938 B2
`
`writing and with particularity, each claim challenged, the grounds on which
`
`the challenge to each claim is based, and the evidence that supports the
`
`grounds for the challenge to each claim.” For the reasons that follow, we are
`
`not satisfied that the Petition here satisfies the above-noted requirements.
`
`At the outset, although the Petition purports to have nineteen proposed
`
`grounds of unpatentability (Pet. 4–5), we discern that this is not an accurate
`
`assessment of the actual number of proposed grounds. We focus first on the
`
`grounds proffered on the basis of obviousness. Each of the ten proposed
`
`obviousness grounds includes numerous references that are associated with
`
`one another using the conjunction “and/or.” Id. For instance, one ground
`
`proposing the unpatentability of claims 1–20 lists the involved references as
`
`“Schacherer with common knowledge, Black, Lanclos, Rogman, Harrigan,
`
`EWAPS, Goodman, and/or SLB Catalog.” Id. at 4 (Ground 5). This style is
`
`endemic in the other proposed obviousness grounds.
`
`Patent Owner characterizes that presentation style as creating a
`
`“ballooning” effect that results in “over 1600 obviousness combinations” of
`
`prior art, “the sheer volume of which would be impossible to address given
`
`the constraints in these proceedings.” Prelim. Resp. 24–25. We agree with
`
`Patent Owner. The conjunction “and/or” in the proposed obviousness
`
`grounds creates a multitude of possible combinations of the references
`
`applied to the claims of the ’938 patent. The result is presentation of
`
`grounds that are uncertain and ill-defined. We also note, as does Patent
`
`Owner (id.), that the Petition cites routinely to testimony of Mr. Parrott, who
`
`refers to even more prior art references purportedly directed to what would
`
`fall within the general rubric of “common knowledge.” See, e.g., Pet. 87,
`
`93, 100, 113, 126, 138, 171 (citing various portions of Ex. 1007). The cited
`
`9
`
`
`
`PGR2020-00080
`Patent 10,472,938 B2
`
`portions of Mr. Parrott’s testimony serve to further heighten the uncertainty
`
`with respect to the precise character and nature of the proposed grounds on
`
`which Petitioner purports to rely.
`
`Other panels of the Board tasked with determining whether to institute
`
`trial in post-grant proceedings have considered circumstances analogous to
`
`those present here. See, e.g., Adaptics Ltd. v. Perfect Co., IPR2018-01596,
`
`Paper 20 at 19 (PTAB Mar. 6, 2019) (informative) (denying institution for
`
`“lack of particularity that result[ed] in voluminous and excessive grounds”
`
`where the petition’s catch-all ground relied on “up to ten references
`
`connected by the conjunction ‘and/or,’” “yielding hundreds of possible
`
`combinations”); Invue Sec. Prods., Inc. v. Mobile Tech., Inc., IPR2019-
`
`00078, Paper 7 at 15 (PTAB May 1, 2019) (noting that “a Petition that
`
`requires the panel or the Patent Owner” “to scour the Petition to discern
`
`Petitioner’s evidence” lacks particularity and “is tantamount to
`
`impermissibly shifting Petitioner’s burden under 35 U.S.C. § 312(a)(3)”);
`
`PayPal, Inc. v. IoEngine, LLC, IPR2019-00931, Paper 16 at 29 (PTAB Oct.
`
`29, 2019) (finding that the “multiplicity of theories” asserted by Petitioner
`
`“for each claim element results in a burdensome number of potential
`
`combinations for each claim”). Such panels have found a multiplicity of
`
`grounds presented in a manner similar to the grounds in this Petition to lack
`
`particularity as voluminous, excessive, and burdensome. Similarly, we
`
`conclude that the manner in which the Petition formulates the proposed
`
`grounds extends beyond merely burdensome and into the realm of near
`
`indecipherability. As a result, we cannot view the Petition as presenting
`
`grounds of unpatentability “with particularity” as 35 U.S.C. § 322(a)(3)
`
`requires.
`
`10
`
`
`
`PGR2020-00080
`Patent 10,472,938 B2
`
`
`Moreover, in connection with all of the grounds, the Petition
`
`frequently purports to account for claim limitations in the prior art by
`
`careening between separate claim limitations in a manner that lacks logical
`
`organization. For instance, the Petition begins its assessment of the claims
`
`vis-à-vis the prior art by addressing features in the body of the claims related
`
`to the detonator elements, such as the detonator body and wireless
`
`connections (Pet. 11–38), well before addressing features that are initially
`
`introduced in the claims in which those components reside, such as the gun
`
`carrier (id. at 125–134). That approach is disjointed and difficult to follow.
`
`Also, the Petition cites a litany of references one after another in near
`
`laundry-list fashion, which results in a lack of focus and congruity. See, e.g.,
`
`Pet. 11–38 (citing each of common knowledge, Schacherer, Harrigan,
`
`Rogman, Black, Lanclos, EWAPS, and Goodman, as all allegedly
`
`accounting for detonator elements of the claims). This approach requires the
`
`panel and Patent Owner to attempt to formulate a ground or grounds of
`
`unpatentability by essentially picking and choosing various features from
`
`among the numerous references cited. The burden to establish, and cogently
`
`explain, the proposed grounds of patentability, however, is on Petitioner, not
`
`the panel or Patent Owner.
`
`Further still, for the proposed grounds based on obviousness, we also
`
`determine that Petitioner’s postulations as to reasons for combining the
`
`various teachings of the prior art and “inherent . . . common knowledge” rely
`
`on generalized statements that such combinations would, for instance, be
`
`“predictable,” “simple substitution,” application of “known techniques,” and
`
`“obvious to try.” See, e.g., Pet. 8–9. Notably lacking from the Petition is
`
`specific, directed explanation of well-developed reasons why a person of
`
`11
`
`
`
`PGR2020-00080
`Patent 10,472,938 B2
`
`ordinary skill in the art would have modified or combined the teachings of
`
`the prior art. The type of generalized discussion in this Petition bears
`
`considerable resemblance to the unsuccessful approach that Petitioner took
`
`in its opposition to a motion to amend in connection with another
`
`proceeding, IPR2018-00600, which the Precedential Opinion Panel found
`
`insufficient. See Ex. 2001, 24–25 (Hunting Titan, Inc. v. DynaEnergetics
`
`Europe GmbH, IPR2018-00600, Paper 67 (PTAB July 6, 2020)
`
`(precedential)). Here too, we conclude that Petitioner’s inadequate
`
`discussion does not elevate itself to the level of articulated reasoning with
`
`rational underpinnings that is necessary to support a motivation to combine
`
`prior art teachings. See In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006),
`
`cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
`
`(2007).
`
`The Supreme Court and the Federal Circuit have made it abundantly
`
`clear that institution of a post-grant proceeding is a binary or all-or-nothing
`
`decision. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359 (2018)
`
`(“[E]verything in the statute before us confirms that [the petitioner] is
`
`entitled to a final written decision addressing all of the claims it has
`
`challenged . . . .”); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed.
`
`Cir. 2018) (“[35 U.S.C. § 314] require[s] a simple yes-or-no institution
`
`choice respecting a petition, embracing all challenges included in the
`
`petition . . . .”). We also are cognizant that there is no requirement that we
`
`institute a post-grant review, as the decision whether to institute is
`
`12
`
`
`
`PGR2020-00080
`Patent 10,472,938 B2
`
`discretionary. See 35 U.S.C. § 324(a); see also Adaptics Ltd., Paper 20 at
`
`17–24.2,3
`
`With those principles in mind, we conclude that, irrespective of
`
`whether there may be a potentially credible ground of unpatentability buried
`
`among the voluminous and excessive possible grounds presented here,
`
`institution of trial is not warranted.
`
`
`
`2 As articulated by the panel in Adaptics:
`
`Even when a petitioner demonstrates a reasonable likelihood as
`to at least one claim, however, institution of an IPR remains
`discretionary. SAS, 138 S. Ct. at 1355 (Ҥ 314(a) invests the
`Director with discretion on the question whether to institute
`review”); Harmonic [Inc. v. Avid Tech., Inc.], 815 F.3d [1356,]
`1367 [(Fed. Cir. 2016)] (“First of all, the PTO is permitted, but
`never compelled, to institute an IPR proceeding.” (citing 35
`U.S.C. § 314(a))). As explained in our Trial Practice Guide
`Update, “[t]he Director’s discretion is informed by 35 U.S.C. §§
`316(b) and 326(b), which require the Director to ‘consider the
`effect of any such regulation [under this section] on the economy,
`the integrity of the patent system, the efficient administration of
`the Office, and the ability of the Office to timely complete
`proceedings instituted under this chapter.’” Trial Practice Guide
`Update, 10 at 9; see also Office Patent Trial Practice Guide,
`August 2018 Update, 83 Fed. Reg. 39,989 (Aug. 13, 2018)
`(discussing and providing link to Trial Practice Guide Update).
`
`3 Although the petition in Adaptics was seeking institution of an inter partes
`review rather than a post-grant review, the same principle of discretion to
`institute an inter partes review arising under § 314(a) also applies to a
`decision to institute a post-grant review under § 324(a).
`
`13
`
`
`
`PGR2020-00080
`Patent 10,472,938 B2
`
`
`III. CONCLUSION
`
`
`
`On this record, and for the reasons discussed above, we exercise our
`
`discretion and decline to institute trial in this proceeding. See 35 U.S.C.
`
`§ 324(a).
`
`IV. ORDER
`
`It is
`
`ORDERED that the Petition is denied and no trial is instituted.
`
`
`
`
`
`
`
`
`
`
`
`
`
`14
`
`
`
`PGR2020-00080
`Patent 10,472,938 B2
`
`PETITIONER:
`
`Jason Saunders
`Christopher McKeon
`Gordon Arnold
`ARNOLD & SAUNDERS, LLP
`jsaunders@arnold-iplaw.com
`cmckeon@arnold-iplaw.com
`docketing@arnold-iplaw.com
`
`PATENT OWNER:
`
`Lisa J. Moyles
`Jason M. Rockman
`MOYLES IP, LLC
`lmoyles@moylesip.com
`jrockman@moylesip.com
`
`Barry J. Herman
`Preston H. Heard
`WOMBLE BOND DICKINSON (US) LLP
`barry.herman@wbd-us.com
`preston.heard@wbd-us.com
`
`
`
`
`15
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
