PTAB

IPR2016-00954

Mohawk Energy Ltd v. Enventure Global Technology Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Lubricant Coating for Expandable Tubular Members
  • Brief Description: The ’012 patent describes methods and apparatuses for expanding a tubular member within a preexisting structure, such as a downhole wellbore or casing. A lubricant is applied to the interior surface of the tubular member to facilitate its radial expansion into contact with the surrounding structure.

3. Grounds for Unpatentability

Ground 1: Anticipation of Core Claim Elements - The basic limitations of all challenged claims are anticipated by Vincent, Forsyth, and Kinley, individually.

  • Prior Art Relied Upon: Vincent (Patent 3,179,168), Forsyth (Patent 6,029,748), and Kinley (Patent 3,785,193), referred to as the "Primary References."
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that each of the three Primary References independently discloses all fundamental elements recited in the independent claims. The common elements are: (1) an expandable tubular assembly, (2) applying a lubricant to its interior surface, (3) positioning the assembly within a preexisting structure, and (4) radially expanding the tubular into contact with that structure.
      • Vincent was alleged to teach these elements by describing the expansion of a corrugated liner tube within a well casing, where a lubricant is applied to the liner’s inside surface to reduce frictional drag from an expanding cone.
      • Forsyth was alleged to teach these elements by describing the expansion of tubing facilitated by a reservoir of grease distributed along the internal wall as a wedge progresses through it.
      • Kinley was alleged to teach these elements by describing the expansion of a thin-walled steel tube liner coated on its inside with a slippery, fluoride plastic to allow tools to be driven through.

Ground 2: Obviousness of Dependent "Wherein" Clauses - Claims with specific lubricant properties are obvious over a Primary Reference in view of industry handbooks.

  • Prior Art Relied Upon: Vincent (Patent 3,179,168) in view of secondary references including the CRC Handbook of Lubrication Vol. 2 (1983) and the Tribology Data Handbook (1997) ("Secondary References").

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that the numerous dependent claims add limitations via "wherein" clauses that specify inherent properties of common lubricants, rendering them obvious. For example, claims requiring a specific coefficient of friction (e.g., less than 0.2) were allegedly obvious because Vincent discloses using graphite, and the Secondary References teach that graphite has a sliding friction coefficient of 0.058, well within the claimed range. Similarly, claims requiring chemical, mechanical, or adhesive bonding were allegedly obvious because the Secondary References explicitly describe these as the primary bonding mechanisms for lamellar solids like graphite. For claims reciting large Markush groups of lubricants, Petitioner argued that Vincent’s disclosure of graphite and lead anticipated claims listing those specific compounds, and that substituting other known solid lubricants (e.g., molybdenum disulfide for graphite) was a well-documented and obvious design choice.
    • Motivation to Combine: A POSITA seeking to implement the expandable tubular system taught in Vincent would be motivated to consult standard industry handbooks, such as the Secondary References, to select appropriate commercially available lubricants and to understand their well-known properties and performance characteristics.
    • Expectation of Success: A POSITA would have a high expectation of success, as the combination merely involved applying lubricants with well-documented, predictable properties to the known process of expanding a tubular member. No unexpected results were alleged in the ’012 patent for using these common lubricants.

  • Additional Grounds: Petitioner asserted that all challenged claims were also independently anticipated by Forsyth and Kinley, and that the dependent claims were additionally obvious over Forsyth or Kinley in combination with the Secondary References, relying on parallel arguments and mappings.

4. Key Claim Construction Positions

  • Petitioner argued that no patentable distinction exists between "coating" a lubricant as recited in method claim 1 and "injecting" a lubricant as recited in method claim 3. It contended that both terms should be interpreted broadly under their broadest reasonable interpretation to encompass any of the conventional application methods disclosed in the specification, making both claims equally susceptible to anticipation by the same prior art references.

5. Key Technical Contentions (Beyond Claim Construction)

  • A central contention was that the numerous "wherein" clauses across the dependent and apparatus claims should be given no patentable weight. Petitioner argued these clauses merely state an intended result or intended use (e.g., "wherein the tubular members comprise wellbore casings") or recite the inherent, predictable properties of the lubricants disclosed in the primary references (e.g., a specific coefficient of friction or bonding type). Citing legal precedent, Petitioner asserted these clauses do not define novel structure or method steps and therefore cannot confer patentability over prior art that teaches the core elements of the claims.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 3, 7-12, 17-19, 21-23, 25, 31-37, 42-44, 46-48, 50, 52, 53, 56, 82-87, 92-94, 96-98, 100, 102, 103, 106-109, 112-114, 116, 117, 119, 120, and 123 of the ’012 patent as unpatentable.