Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 42
`Entered: August 20, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HUNTING TITAN, INC.,
`Petitioner,
`
`v.
`
`DYNAENERGETICS GMBH & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2018-00600
`Patent 9,581,422 B2
`____________
`
`
`Before SCOTT A. DANIELS, CARL M. DEFRANCO, and
`ERIC C. JESCHKE, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`DynaEnergetics GmbH & Co. KG is the owner of U.S. Patent No.
`9,581,422 B2 (“the ’422 patent”). Hunting Titan, Inc. filed a petition for
`inter partes review of claims 1–15 of the ’422 patent. Paper 1 (“Pet.”). We
`instituted inter partes review of all the challenged claims. Paper 10 (“Inst.
`Dec.”). DynaEnergetics opposed. Paper 18 (“PO Resp.”). Hunting Titan
`
`Hunting Titan, Inc.
`Ex. 1010
`Page 001
`
`
`571-272-7822
`
`
`
`Paper 42
`Entered: August 20, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HUNTING TITAN, INC.,
`Petitioner,
`
`v.
`
`DYNAENERGETICS GMBH & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2018-00600
`Patent 9,581,422 B2
`____________
`
`
`Before SCOTT A. DANIELS, CARL M. DEFRANCO, and
`ERIC C. JESCHKE, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`DynaEnergetics GmbH & Co. KG is the owner of U.S. Patent No.
`9,581,422 B2 (“the ’422 patent”). Hunting Titan, Inc. filed a petition for
`inter partes review of claims 1–15 of the ’422 patent. Paper 1 (“Pet.”). We
`instituted inter partes review of all the challenged claims. Paper 10 (“Inst.
`Dec.”). DynaEnergetics opposed. Paper 18 (“PO Resp.”). Hunting Titan
`
`Hunting Titan, Inc.
`Ex. 1010
`Page 001
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`IPR2018-00600
`Patent 9,581,422 B2
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`replied. Paper 24 (“Pet. Reply”). And DynaEnergetics had the last word in
`a sur-reply. Paper 27 (“PO Sur-Reply”).
`In addition, DynaEnergetics filed a contingent motion to amend.
`Paper 19 (“Mot. Amend”). Hunting Titan opposed. Paper 25 (“Pet. Opp. to
`Mot. Amend”). DynaEnergetics replied. Paper 28 (“PO Reply”). Hunting
`Titan filed a sur-reply. Paper 33 (“Pet. Sur-Reply”). Finally, each party
`moved to exclude certain evidence of the other party. Paper 32 (“Pet. Mot.
`Exclude”); Paper 34 (“PO Mot. Exclude”).
`We have jurisdiction under 35 U.S.C. § 6. An oral hearing was
`conducted on May 14, 2019. Paper 41 (“Hr’g Tr.”). After considering the
`parties’ arguments and supporting evidence, we determine that Hunting
`Titan has proven by a preponderance of the evidence that claims 1–15 of the
`’422 patent are unpatentable. 35 U.S.C. § 316(e). We also determine that
`Hunting Titan has carried its burden in showing that DynaEnergetics’
`proposed substitute claims are not patentable over the prior art of record,
`and, thus, we deny DynaEnergetics’ motion to amend. Finally, we deny the
`parties’ respective motions to exclude as moot.
`
`I. BACKGROUND
`
`A. Related Matters
`The ’422 patent is the subject of two infringement actions. The first
`infringement action, DynaEnergetics GmbH & Co. KG v. Hunting Titan,
`Ltd., Civil Action No. 4:17-cv-03784 (S.D. Tex.), was filed December 14,
`2017 and is currently stayed pending our review. Paper 40, 1. The second
`infringement action, DynaEnergetics GmbH & Co. KG v. Hunting Titan,
`Inc., Civil Action No. 4:19-cv-01611 (S.D. Tex.), was filed May 2, 2019,
`and later consolidated by the district court with the earlier action. Id. Also,
`
`2
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`Hunting Titan, Inc.
`Ex. 1010
`Page 002
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`pending before this Office is a reissue application for the ’422 patent—U.S.
`Patent Application No. 16/287,150, filed February 27, 2019. Id.
`
`B. The ’422 Patent
`The ’422 patent is directed to a perforating gun assembly used to
`perforate the cement lining and surrounding rock formation of an oil well
`bore so as to form a flow path for oil into the wellbore from the surrounding
`rock formation. Ex. 1001, 1:15–44. As described, the key feature of the
`perforating gun assembly is a “wirelessly-connectable” detonator assembly
`that can be “positioned or placed into [the] perforating gun assembly with
`minimal effort,” that is, “without the need of manually and physically
`connecting, cutting or crimping wires as required in a wired electrical
`connection.” Id. at 3:26–38. Indeed, DynaEnergetics acknowledges that
`“‘[c]onnecting a detonator using electrical contacts rather than manual
`wiring . . .’ is the entire essence of the invention claimed in the ’422 patent.”
`PO Sur-Reply 7–8 (citing Ex. 1001, 2:24–34).
`
`C. The Challenged Claims
`Of the challenged claims, claims 1, 5, and 12 are independent.
`Claim 1 recites a “wireless detonator assembly,” while claim 5 recites a
`“perforating gun assembly” that includes the limitations of the wireless
`detonator assembly of claim 1. Claim 12 recites a “method of assembling a
`perforating gun assembly” that includes many, if not all, of the limitations of
`both claims 1 and 5.
`More specifically, each of the independent claims recites a “wireless”
`or “wirelessly-connectable” detonator assembly that is positioned within a
`perforating gun assembly “without using a wired electrical connection,” but
`rather forms the wireless electrical connection “merely by the contact” of the
`
`3
`
`Hunting Titan, Inc.
`Ex. 1010
`Page 003
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`detonator assembly with the perforating gun assembly. Ex. 1001, 8:39–61,
`9:10–37, 10:12–36. Due to the overlapping nature of the independent
`claims, DynaEnergetics singles out claim 1 as “[r]epresentative.” PO Resp.
`7. As reproduced below, claim 1 recites:
`1.
`A wireless detonator assembly configured for being
`electrically contactably received within a perforating gun
`assembly without using a wired electrical connection,
`comprising:
`
`
`
`a shell configured for housing components of the
`detonator assembly;
` more
`than one electrical contact component,
`wherein at least one of the electrical contact components
`extends from the shell and further wherein the electrical
`contact component comprises an electrically contactable
`line-in portion, an electrically contactable line-out portion,
`and an electrically contactable ground portion, the ground
`portion in combination with the line-in portion and the
`line-out portion being configured to replace the wired
`electrical connection to complete an electrical connection
`merely by contact;
` an insulator positioned between the line-in portion
`and the line-out portion, wherein the insulator electrically
`isolates the line-in portion from the line-out portion; and
` means for selective detonation housed within the
`shell, [and]
` wherein the detonator assembly is configured for
`electrically contactably forming the electrical connection
`merely by the contact.
`Ex. 1001, 8:39–61 (emphases added).
`
`D. The Asserted Grounds of Unpatentability
`Hunting Titan asserts sixteen grounds of unpatentability, two based on
`anticipation under 35 U.S.C. § 102 and fourteen based on obviousness under
`35 U.S.C. § 103. Pet. 4–5. To begin, Hunting Titan challenges claims 1–15
`
`4
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`Hunting Titan, Inc.
`Ex. 1010
`Page 004
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`as anticipated by Schacherer.1 In the alternative, Hunting Titan challenges
`claims 1–15 (or a subset thereof) either as anticipated by Lanclos2 or as
`obvious over Schacherer and/or Lanclos in combination with various other
`references. Id. Because the first ground—anticipation by Schacherer—is
`dispositive as to all the challenged claims, we need not reach the other
`asserted grounds. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359 (2018)
`(holding a petitioner “is entitled to a final written decision addressing all of
`the claims it has challenged”).
`Hunting Titan supports its petition with the testimony of Robert
`Parrott, an expert retained for purposes of this proceeding. See Exs. 1006,
`1025, 1026. DynaEnergetics supports its opposition with the testimony of
`two experts—Robert Schaaf (Ex. 2003) and John Rodgers, Ph.D. (Exs.
`2004, 2027). DynaEnergetics also submits the declaration of Frank H.
`Preiss, the first named inventor on the ’422 patent and “vice president and
`GM” for DynaEnergetics. Ex. 2001 ¶ 1.
`
`II. ANALYSIS
`
`A. Level of Skill in the Art
`The parties agree that a person of ordinary skill in the art (“POSITA”)
`would have had a B.S. or M.S. degree in mechanical or electrical
`engineering and two-to-five years of experience designing and operating
`perforating tools for well-bores. See Pet 12; PO Resp. 14. We accept this
`skill level as an undisputed fact.
`
`
`1 U.S. Patent 9,689,223 B2, iss. June 27, 2017 (Ex. 1002, “Schacherer”).
`2 U.S. Patent 9,080,433 B2, iss. July 14, 2015 (Ex. 1003, “Lanclos”).
`
`5
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`Hunting Titan, Inc.
`Ex. 1010
`Page 005
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`
`B. Claim Construction
`Hunting Titan proposes a construction for each limitation of the
`claims. See, e.g., Pet. 16–17, 21–22, 26, 30–31, 33–35, 41, 45–46, 52–53.
`DynaEnergetics submits that, in our institution decision, we “preliminarily
`but correctly determined that no term required an express construction in this
`proceeding,” aside from two terms—“wireless” and “selective.” PO Resp.
`14. Actually, what we said was “[f]or purposes of deciding whether to
`institute,” we needed to construe only those two terms. Inst. Dec. 4. Thus,
`upon institution of trial, DynaEnergetics had an obligation to dispute
`Hunting Titan’s proposed constructions in the petition, as well as our
`constructions in the institution decision, to the extent it disagreed with them.
`In its response, DynaEnergetics disputes neither. PO Resp. 14–15.
`Having considered the full record, we do not perceive a need to
`construe any claim limitation differently from Hunting Titan’s proposed
`constructions.3 For instance, we note that Hunting Titan’s construction of
`“wireless” (see Pet. 16–17) is perfectly consistent with the ’422 patent’s
`express definition of that same term—
`As used herein, the term “wireless” means that the
`detonator assembly itself is not manually, physically connected
`within the perforating gun assembly as has been traditionally
`done with wired connections, but rather merely makes electrical
`
`
`3 We apply the “broadest reasonable construction” standard per 37 C.F.R.
`§ 42.100(b) (2017), in effect as of filing date of the instant petition. A recent
`amendment to this rule does not apply here because the petition was filed
`before the effective date of that amendment. See Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
`(amending 37 C.F.R. § 42.100(b), effective November 13, 2018).
`
`6
`
`Hunting Titan, Inc.
`Ex. 1010
`Page 006
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`
`contact through various components as described herein to form
`the electrical connections.
`Ex. 1001, 3:53–58; see also id. at 3:33–38 (“The detonator assembly
`electrically contactably forms an electrical connection without the need of
`manually and physically connecting, cutting or crimping wires as required in
`a wired electrical connection.”), 3:64–4:3 (“The detonator assembly 10 . . . is
`configured for being electrically contactably received within a perforating
`gun assembly 40 without using a wired electrical connection, that is without
`connecting one or more wires directly to the detonator assembly 10.”), 4:54–
`58 (“That is, the detonator assembly 10 is wirelessly connectable only by
`making and maintaining electrical contact of the electrical contacting
`components to replace the wired electrical connection and without using a
`wired electrical connection.”). As such, we adopt Hunting Titan’s proposed
`construction of “wireless” for purposes of this decision.
`We also view Hunting Titan’s proposed construction of “shell” as
`consistent with the ’422 patent’s express definition of that term. See Pet.
`21–22. Each of the independent claims recites “a shell configured for
`housing components of the detonator assembly.” The ’422 patent describes
`the “shell” as “a housing or casing” for components that include “detonator
`head plug,” “fuse head,” “electronic circuit board,” and “explosive
`components.” Ex. 1001, 4:4–7. As such, Hunting Titan construes the
`claimed “shell” as encompassing “a shell, housing, or casing for housing any
`component of the detonator assembly, including but not limited to a
`detonator head plug, a fuse head, an electronic circuit board, or explosive
`component[s].” Pet. 22 (citing Ex. 1006 ¶ 21). DynaEnergetics does not
`dispute that proposed construction (PO Resp. 14–15), and the ’422 patent
`
`7
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`Hunting Titan, Inc.
`Ex. 1010
`Page 007
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`fully supports it (Ex. 1001, 4:4–7). Thus, we adopt Hunting Titan’s
`proposed construction of “shell” for purposes of this decision.
`We have considered Hunting Titan’s proposed construction of certain
`other claim terms and determine they are likewise fully supported by the
`record. See Pet. 26 (“electrical contact”), 30–31 (“extends from the shell”),
`33–35 (“line-in,” “line-out,” and “ground” portions), 41 (“insulator”), 45–46
`(“means for selective detonation”), 52–53 (“merely by the contact”).
`DynaEnergetics neither disputes these proposed constructions nor submits
`any of its own. See PO Resp. 14–15. Because Hunting Titan’s proposed
`constructions are fully supported by the record, we adopt them to the extent
`needed for our analysis here.
`
`C. Anticipation by Schacherer
`Hunting Titan addresses independent claims 1, 5, and 12 concurrently,
`explaining how each claim limitation is disclosed by Schacherer, either
`expressly or inherently. See Pet. 12–55. In response, DynaEnergetics
`argues that Schacherer lacks four limitations of “[r]epresentative claim 1,”
`which it also the “Claimed Detonator Assembly” (or “CDA”). PO Resp. 7,
`26. According to DynaEnergetics, the missing limitations include:
`1) “A wireless detonator assembly;”
`2) “A shell configured for housing components of the detonator
`assembly;”
`3) “Wherein at least one of the electrical contact components
`extends from the shell;” and
`4) “An insulator positioned between the line-in portion and the
`line-out portion.”
`Id. at 26 (emphases added); see also id. at 19–20 (asserting essentially the
`same).
`
`
`
`
`
`
`
`8
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`Hunting Titan, Inc.
`Ex. 1010
`Page 008
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`
`1. Uncontested Limitations
`At the outset, we note that DynaEnergetics neither refutes nor
`responds to Hunting Titan’s showing that Schacherer teaches a “detonator
`assembly” for “being . . . received within a perforating gun assembly,” as
`recited in the preamble of claim 1. Compare Pet. 16–20, with PO Resp. 19–
`20, 24–29. Nor does DynaEnergetics contest that Schacherer’s detonator
`assembly includes “electrical contact components” having “line-in,” “line-
`out,” and “ground” portions, as also recited by claim 1. Compare Pet. 26–
`29, 33–38, with PO Resp. 19–20, 24–39. Finally, DynaEnergetics does not
`dispute that Schacherer discloses “means for selective detonation” of the
`detonator assembly. Compare Pet. 45–49, with PO Resp. 19–20, 24–39.
`The record fully supports Hunting Titan’s showing of how Schacherer
`discloses these uncontested limitations. See Pet. 16–20, 26–29, 33–38, 45–
`49. And because DynaEnergetics does not contest Schacherer’s disclosure
`of these limitations, we consider the fact of their disclosure effectively
`admitted. See In re Nuvasive, Inc., 841 F.3d 966, 974 (Fed. Cir. 2016)
`(“Although the Board did not make findings as to whether any of the other
`claim limitations (such as fusion apertures or anti-migration teeth) are
`disclosed in the prior art, it did not have to: Nuvasive did not present
`arguments about those limitations to the Board. . . . The Board, having found
`the only disputed limitations together in one reference, was not required to
`address undisputed matters.”); see also Paper 11, 5 (emphasizing that “any
`arguments for patentability not raised and fully briefed in the response will
`be deemed waived”). In sum, we conclude that Hunting Titan has met its
`burden of proving that Schacherer discloses a “detonator assembly” that is
`(1) “received within a perforating gun,” (2) has “more than one electrical
`
`9
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`Hunting Titan, Inc.
`Ex. 1010
`Page 009
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`contact component, wherein at least one of the electrical contact components
`. . . comprises an electrically contactable line-in portion, . . . line-out portion
`and . . . ground portion,” and (3) has “means for selective detonation,” as
`recited in representative claim 1.
`
`2. “A wireless detonator assembly”
`Turning now to the limitations in dispute, we begin with Hunting
`Titan’s argument that Schacherer’s detonator assembly is “wireless,” in
`other words, that the detonator assembly forms an electrical connection with
`the perforating gun assembly “merely by the contact” of the two assemblies
`with each other and “without using a wired electrical connection,” as recited
`by representative claim 1. Pet. 16–20, 52–54; Pet. Reply 2–6. According to
`Hunting Titan, “Schacherer explicitly states that electrical connection is
`made on contact through the rotary electrical connections 46 and 48 when
`the connectors 30 are connected to adjacent components [of the perforating
`gun assembly], completing the electrical connection merely by contact.”
`Pet. 53 (citing Ex. 1002, 5:39–42, 5:62–63) (emphasis added). We agree.
`From our review, Schacherer discloses two embodiments in which
`electrical contacts are provided at opposite ends of the detonator assembly so
`as to make electrical contact with corresponding electrical contacts in the
`perforating gun assembly. Ex. 1002, Figs. 4, 7. For instance, Figure 4 of
`Schacherer, reproduced below, depicts a first embodiment of Schacherer’s
`electrical contacts 46, 48 on each end of connector 30 that houses the
`detonator assembly.
`
`10
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`Hunting Titan, Inc.
`Ex. 1010
`Page 010
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`
`As annotated by Hunting Titan, Schacherer’s Figure 4 above illustrates an
`embodiment in which electrical contacts 46, 48 are flush mounted at each
`end of connector 30. See Pet. 18–20, 26–29 (relying on Figure 4 of
`Schacherer to address the “wireless” and “electrical contact” limitations).
`Figure 7 of Schacherer, reproduced below, depicts a slightly different
`embodiment of electrical contact 48 on the left-end of Schacherer’s
`connector 30.
`
`
`
`
`
`11
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`Hunting Titan, Inc.
`Ex. 1010
`Page 011
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`
`As annotated by Hunting Titan, Schacherer’s Figure 7 above
`illustrates a male-to-female electrical connection between connector 30,
`which houses the detonator assembly, and connector 28, which connects
`with the perforating gun assembly. See id. (relying on Schacherer’s Figure 7
`to address the “wireless” and “electrical contact” limitations). More
`specifically, male electrical contact 62 protrudes from the left-end of
`connector 30 and mates with corresponding female electrical contact 78 in
`connector 28 of Schacherer’s perforating gun assembly. See also Ex. 1002,
`Fig. 5 (depicting connector 30 of Schacherer’s detonator assembly within
`connector 28 of Schacherer’s perforating gun assembly).
`In either case, the electrical contacts on opposing ends of Schacherer’s
`detonator assembly are no different than the “electrical contact components”
`of the claimed “wireless detonator assembly” in that both form an electrical
`connection between the detonator assembly and the perforating gun
`assembly “merely by [] contact” and “without using a wired electrical
`connection,” as required by representative claim 1. Indeed, both Schacherer
`and the ’422 patent rely on a spring-loaded pin within the perforating gun
`assembly to make electrical contact with a corresponding end of the
`detonator assembly, thereby foregoing the need to physically connect any
`wires. Compare Ex. 1001, 6:31–33, Figs. 4, 5 (describing “contact-initiating
`pin 38” for “wirelessly electrically contacting” the claimed detonator
`assembly), with Ex. 1002, 5:61–63, Figs. 5, 7 (describing “electrical contacts
`90, 92 in the form of spring-loaded pins which make sliding electrical
`contact with the respective contacts 86, 88” of Schacherer’s detonator
`assembly). Thus, in our view, the electrically-contactable ends of
`Schacherer’s detonator assembly meet the “wireless” limitation of
`
`12
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`Hunting Titan, Inc.
`Ex. 1010
`Page 012
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`representative claim 1, as well as the “without using a wired electrical
`connection” and “merely by the contact” limitations elsewhere in the claim.
`DynaEnergetics, in turn, argues that Schacherer’s detonator assembly
`is not “wireless” because “Schacherer provides for the electric and ballistic
`transfer by incorporating an electrically wired detonator (38).” PO Resp.
`25–26; see also PO Sur-Reply 13–15 (“the detonator assembly of
`Schacherer (38) was wired”). But, in arguing that Schacherer’s detonator
`assembly is “wired,” DynaEnergetics oversimplifies what constitutes
`Schacherer’s detonator assembly and ignores the express language of the
`claim.
`As claimed, the “detonator assembly” is “electrically contactably
`received within a perforating gun assembly” and forms an electrical
`connection “merely by the contact” of the two assemblies when connected
`together. The specification of the ’422 patent likewise provides:
`the detonator assembly itself is not manually, physically
`connected within the perforating gun assembly as has been
`traditionally done with wired connections, but rather merely
`makes electrical contact
`through various components as
`described herein to form the electrical connections.
`
`Ex. 1001, 3:53–58 (emphasis added); see also id. at 4:54–58 (essentially the
`same). Thus, consistent with the claim language and specification, the
`“wireless” and “merely by the contact” limitations speak expressly to how
`one assembly forms an electrical connection with the other assembly—
`through bodily contact as opposed to connection of physical wires.
`That said, nowhere does the ’422 patent preclude the use of wired
`connections internal to the detonator assembly. Nonetheless,
`DynaEnergetics faults Schacherer for using a wired connection between
`
`13
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`Hunting Titan, Inc.
`Ex. 1010
`Page 013
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`subcomponents of the detonator assembly. PO Resp. 26; see also Ex. 2004
`¶ 55. Figures 7 and 9 of Schacherer, reproduced below, depict the
`subcomponents of Schacherer’s detonator assembly.
`
`
`
`
`
`As annotated by Hunting Titan, Schacherer’s Figure 7 above
`illustrates an inner capsule (opposite cross-hatching from connector 30) for
`housing selective firing module 32 (yellow) and detonator 38 (red). Pet. 47–
`49 (citing Ex. 1002, 2:60–64, 3:1–4, 6:67–7:4, 7:21–33). And, as shown in
`Hunting Titan’s annotation of Schacherer’s Figure 9 above, the two
`subcomponents are “electrically connected” by conductive wire 34. Ex.
`
`14
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`Ex. 1010
`Page 014
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`1002, 7:15–33. The inner capsule, in turn, is positioned within connector 30.
`See id., Fig. 2 (showing inner capsule threaded into connector 30).
`What DynaEnergetics fails to acknowledge is that the claimed
`“wireless,” “without using a wired connection,” and “merely by the contact”
`limitations pertain solely to how the detonator assembly as a whole forms an
`electrical connection with the perforating gun assembly as a whole,
`irrespective of how any subcomponents within each assembly are connected.
`Rather than acknowledge the plain language of the claim, DynaEnergetics
`distorts the testimony of Hunting Titan’s expert to argue, first, that
`Schacherer’s “detonator assembly” is limited solely to “detonator 38,” and,
`then, that its internal wired connection to detonator 38 proves it is not
`wireless. PO Resp. 26 (citing Ex. 2006, 101:1–5). When viewed in proper
`light, however, the testimony of Hunting Titan’s expert clarifies that
`Schacherer’s detonator assembly encompasses more than simply detonator
`38.
`
`For instance, in discussing Figure 5 of Schacherer, Hunting Titan’s
`expert testifies that the “detonator assembly” is “where 38 is pointing.” Ex.
`2006, 101:1–19. In doing so, though, he explains that the detonator
`assembly includes not only detonator 38 but also “upstream” components
`where the “detonator assembly receives directly its electrical signal,”
`namely, “Item No. 62.” Id. He further testifies that the detonator assembly
`includes “circuitry” through which “the electrical signal pass[es] from 62
`[to] 76 to 38 to the actual detonator.” Id. at 103:7–9. That intervening
`circuitry is Schacherer’s selective firing module 32. Ex. 1002, Fig. 7
`(depicting selective firing module 32 between detonator 38 and electrical
`coupler 62). Thus, contrary to DynaEnergetics’ characterization, the
`
`15
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`Hunting Titan, Inc.
`Ex. 1010
`Page 015
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`
`evidence shows that Schacherer’s detonator assembly comprises not only
`actual detonator 38, but also other subcomponents that include selective
`firing module 32, explosive charge 40, and mating electrical couplers 62 and
`76.4 See Ex. 1002, 5:25–56, Fig. 5; Ex. 1006 ¶¶ 14, 22.
`Neither DynaEnergetics nor its expert explains why a wired
`connection residing entirely within, and internal to, Schacherer’s detonator
`assembly precludes the assembly from being “wireless” so long as its
`electrical connection with the perforating gun assembly is “merely by the
`contact” of the two assemblies and “without using a wired electrical
`connection,” as recited by representative claim 1. There is no support,
`intrinsic or otherwise, for DynaEnergetics’ argument that those limitations
`somehow implicate the connection of subcomponents housed within the
`detonator assembly itself. Rather, the claims require only the absence of a
`wired connection between the detonator assembly and the perforating gun
`assembly, regardless of any physically wired connections residing within
`those assemblies. As discussed above, Schacherer’s detonator assembly
`achieves an electrical connection with the perforating gun assembly merely
`by contact of one with the other. Thus, we conclude that Schacherer is a
`“wireless” detonator assembly in the manner recited by claim 1.
`
`3. “a shell”
`Claim 1 further requires “a shell configured for housing components
`of the detonator assembly.” As discussed above, we construe “shell” to
`
`
`4 To the extent there is any discrepancy in the testimony of Hunting Titan’s
`expert, it is the result of DynaEnergetics’ own failure to distinguish between
`Schacherer’s actual detonator and its detonator assembly while pursuing this
`line of questioning. See Ex. 2006, 101:1–103:9.
`
`16
`
`Hunting Titan, Inc.
`Ex. 1010
`Page 016
`
`
`
`IPR2018-00600
`Patent 9,581,422 B2
`
`mean “a shell, housing, or casing for housing any component of the
`detonator assembly, including but not limited to a detonator head plug, a
`fuse head, an electronic circuit board, or explosive components.” See supra
`Section II.B. With that construction in mind, Hunting Titan posits alterative
`teachings in Schacherer of a shell for housing the subcomponents of the
`detonator assembly. Pet. 22–25. For example, Figure 4 of Schacherer,
`reproduced below, depicts an inner capsule (blue) that serves as a shell for
`Schacherer’s detonator assembly. See id. at 24.
`
`
`As annotated by Hunting Titan, Schacherer’s Figure 4 above shows inner
`capsule (blue) housing such subcomponents as “selective firing module 32,”
`“electrical detonator 38,” and “explosive components 40.” Ex. 1002, 5:25–
`51, 6:65–7:4, 7:18–20.
`Alternatively, Hunting Titan points to Figures 5 and 7 of Schacherer,
`reproduced below, to illustrate another configuration of Schacherer’s shell.
`Pet. 23–24.
`
`
`17
`
`Hunting Titan, Inc.
`Ex. 1010
`Page 017
`
`
`
`IPR2018-00600
`Patent 9,581,422 B2
`
`
`
`
`
`
`As annotated by Hunting Titan, Figures 5 and 7 above illustrate a
`configuration in which connector 30 serves as an outer shell for housing the
`components of the detonator assembly. Pet. 23–24. Either way, according
`to Hunting Titan, a skilled artisan would have viewed Schacherer as
`teaching a detonator assembly housed within a shell, just as the independent
`claims require. Id. (citing Ex. 1006 ¶ 22).
`DynaEnergetics responds that Schacherer does not teach a shell for
`housing components of the detonator assembly “but rather describes a sub
`for housing such components.” PO Resp. 28–29. According to
`DynaEnergetics, Schacherer’s “tandem sub is a heavy steel tool . . . that is
`far from the appropriate [] definition of a shell,” whereas the claimed shell is
`
`18
`
`Hunting Titan, Inc.
`Ex. 1010
`Page 018
`
`
`
`IPR2018-00600
`Patent 9,581,422 B2
`
`“a much smaller, modular piece that ‘plugs’ into a larger gun system in an
`entirely wireless manner.” Id. at 27–28; Ex. 2004 ¶¶ 59–60
`(DynaEnergetics’ expert repeating the same). But DynaEnergetics’
`argument fails for the simple reason that the claims recite nothing about the
`size of the shell.
`Aside from faulting its size, neither DynaEnergetics nor its expert
`explains why Schacherer’s “sub” does not meet the claimed “shell.” See PO
`Resp. 26–29; Ex. 2004 ¶¶ 60–62. Nowhere does the claim language, or for
`that matter the specification of the ’422 patent, preclude a tandem sub from
`being a shell so long as it “hous[es] components of the detonator assembly”
`and is “received within a perforating gun assembly,” which is all claim 1
`requires of the shell. Indeed, the ’422 patent provides that “the detonator
`shell 12 is configured as a housing or casing, typically a metallic, which
`houses at least a detonator head plug 14, a fuse head 15, an electronic circuit
`board 16 and explosive components.” Ex. 1001, 4:4–7. That description
`matches exactly the structure and function of Schacherer’s inner capsule (as
`highlighted in blue in annotated Figure 4 above), as well as the outer
`capsule, i.e., connector 30 (as highlighted in blue in annotated Figures 5 and
`7 above). Ex. 1006 ¶¶ 21–23. Regardless of what they are called,
`Schacherer’s connector 30 and associated inner capsule serve as a “shell” for
`housing the subcomponents of a detonator assembly and being received
`within a perforating gun assembly, as required by claim 1. Thus, we reject
`DynaEnergetics’ argument as nothing more than semantics. In the end, we
`find persuasive Hunting Titan’s argument and evidence that Schacherer
`teaches the claimed “shell.”
`
`19
`
`Hunting Titan, Inc.
`Ex. 1010
`Page 019
`
`
`
`IPR2018-00600
`Patent 9,581,422 B2
`
`
`4. “wherein at least one of the electrical contact components extends
`from the shell”
`Another disputed limitation of claim 1 recites “wherein at least one of
`
`the electrical contact components extends from the shell.” Hunting Titan
`relies on Figure 7 of Schacherer, reproduced below, to address this
`limitation. Pet. 31–32.
`
`
`
`As annotated by Hunting Titan, Schacherer’s Figure 7 above
`illustrates electrical coupler 62 (yellow) embedded within, and extending
`from, connector 30 that houses the subcomponents of Schacherer’s detonator
`assembly. See id. at 31. DynaEnergetics does not dispute that Schacherer’s
`connector 30 includes electrical contact components, but argues that such
`components “would be electrical coupler (76), not coupler (62)” because
`“[t]hat element is where the detonator assembly would receive the electrical
`signal (‘line-in’).” PO Resp. 31. According to DynaEnergetics, a skilled
`artisan would “inevitably conclude” that Schacherer’s electrical coupler 76
`
`20
`
`Hunting Titan, Inc.
`Ex. 1010
`Page 020
`
`
`
`IPR2018-00600
`Patent 9,581,422 B2
`
`alone “represents the wireless electrical contact component of the detonator
`assembly.” Id. at 33.
`We disagree. As shown in annotated Figure 7 above, the electrical
`contact component in Schacherer’s detonator assembly includes both
`electrical coupler 62 and electrical connector 76, both of which are sealed
`within connector 30, i.e., the shell. Hunting Titan’s expert confirms as
`much. Ex. 1006 ¶¶ 35–37. Importantly, when connector 30 “is threaded
`into the connector 28” of the perforating gun assembly, an electrical signal
`can be transmitted from the perforating gun to selective firing module 32
`residing within Schacherer’s detonator assembly. Ex. 1002, 5:54–56.
`DynaEnergetics’ assertion that only coupler 76 forms the line-in
`portion of Schacherer’s detonator assembly contradicts Schacherer’s plain
`disclosure that electrical coupler 62 together with electrical contact 76 form
`not only the male-to-female electrical connection 48 with the perforating
`gun assembly 26, 28, but also the “line-in” to selective firing module 32.
`Nowhere does the claim language or specification of the ’422 patent suggest
`that the “electrical contact component” must be a single, unitary structure.
`Nor does DynaEnerg
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