FpUSA LLC v. M-I LLC

1. Case Identification

• Case #: IPR2016-00213
• Patent #: 9,004,288
• Filed: November 19, 2015
• Petitioner(s): Fpusa, LLC
• Patent Owner(s): M-I LLC
• Challenged Claims: 1, 3-6, 8-12, and 14-18

2. Patent Overview

• Title: Shaker and Degasser Combination
• Brief Description: The ’288 patent discloses methods and systems for separating components of a drilling fluid slurry. The technology involves using a shaker with multiple screens where a pressure differential is selectively applied to one or more screens to enhance fluid removal, prevent screen clogging, and degas the recovered fluid.

3. Grounds for Unpatentability

Ground 1: Anticipation by Derrick - Claims 1, 3-6, 8-12, and 14-18 are anticipated under 35 U.S.C. §102(b) by Derrick.

• Prior Art Relied Upon: Derrick (Application # 2005/0082236).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Derrick, which discloses a vibratory screening machine with suction applied below the screens, taught every limitation of the challenged claims. Specifically, Derrick’s system for screening slurry used multiple screens with independently operable suction chambers beneath them, satisfying the limitation of applying a pressure differential to a first screen but not a second. Petitioner asserted that the key limitation of "controlling air flow... to prevent stalling," which was added to overcome a rejection during prosecution, was explicitly disclosed in Derrick.
  • Key Aspects: Petitioner contended the Patent Owner and Examiner overlooked paragraphs in Derrick describing the use of a programmable logic controller (PLC) to create "intermittent releases" of suction. Petitioner equated this intermittent suction to the ’288 patent’s concept of "toggling" pressure to prevent slurry from stalling on the screen, thereby arguing that the very feature relied upon for patentability was present in the prior art. For claims requiring a "degassing chamber," Petitioner mapped Derrick's cyclone separator.

Ground 2: Anticipation by Vasshus - Claims 1, 3-6, 8-12, and 14-18 are anticipated under 35 U.S.C. §102(e) by Vasshus.

• Prior Art Relied Upon: Vasshus (Patent 8,746,460).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Vasshus, which discloses an apparatus for sieving and fluid separation, anticipated all challenged claims. The "first" and "second" screens were mapped to Vasshus's sieving element 13 and stationary sieving device 9, respectively. Petitioner argued that pressure was applied to the first screen via suction nozzles but not to the second, meeting the selective pressure differential limitation. The "controlling air flow" element was allegedly met by Vasshus’s disclosure of shut-off and control valves that adjust suction based on flow sensor readings to prevent clogging.
  • Key Aspects: Vasshus's external "fluid separation unit 5," which uses suction pumps and a separator plate to separate gases from liquids, was argued to meet the limitations of an external pressure generator and a "degassing chamber."

Ground 3: Obviousness over Ennis and Secondary References - Claims 1, 3-6, 8-12, and 14-18 are obvious under 35 U.S.C. §103(a) over Ennis in view of Logue, Riedel, or Lee.

• Prior Art Relied Upon: Ennis (Patent 3,929,642) in view of Logue (Patent 2,462,878), Riedel (Patent 2,663,427), or Lee (Patent 5,259,952).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Ennis taught the basic combination of a shaker with multiple screen panels where a vacuum is applied to a downstream screen but not to upstream screens. Petitioner asserted Ennis inherently disclosed the "controlling air flow" limitation because it taught that the system prevents stalling and that the exhaust fan could be tailored for the specific application. In the alternative, Petitioner argued that combining Ennis with Logue, Riedel, or Lee would have rendered the claims obvious. Each of these secondary references explicitly taught methods for finely controlling vacuum pressure—such as by applying it intermittently (Logue), discontinuously (Riedel), or selectively to different compartments (Lee)—to ensure solids are conveyed efficiently without blinding the screen.
  • Motivation to Combine: A POSITA would have been motivated to combine the explicit vacuum control techniques of Logue, Riedel, or Lee with the basic vacuum-assisted shaker of Ennis to improve the efficiency and control of the dewatering process, a well-known goal in the art. For claims requiring a degassing chamber, Petitioner pointed to Logue’s disclosure of a control mechanism that separated entrained air from fluid.
  • Expectation of Success: The combination involved applying known control techniques to a conventional shaker system, presenting no technical hurdles and leading to the predictable result of improved fluid separation.

4. Key Claim Construction Positions

Petitioner proposed constructions under the Broadest Reasonable Interpretation (BRI) standard for several key terms, acknowledging that for this petition it would adopt constructions consistent with a preliminary ruling in related district court litigation.

• "a first screen and a second screen": Argued that the terms merely distinguish between different screens and do not require a specific spatial or ordinal sequence (e.g., upstream vs. downstream). This broad construction allows for more flexible mapping to prior art configurations.
• "controlling air flow under at least a portion of the first screen to prevent stalling of the slurry on the screen": Construed to mean adjusting a pressure differential across a screen (e.g., by pulsing, toggling, or interrupting it) to allow solids to be conveyed across the screen while fluid flows through. This interpretation links the claim language directly to anti-clogging techniques shown in the prior art.
• "a degassing chamber": Proposed to cover any chamber operating under at least a partial vacuum that separates gas from liquids, allowing broader application to prior art separators like cyclones (Derrick) and fluid separation units (Vasshus).

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 3-6, 8-12, and 14-18 of the ’288 patent as unpatentable.