PTAB

IPR2016-00954

Mohawk Energy Ltd. v. Enventure Global Technology, Inc.

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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. The core concept involves applying a lubricant to the interior surface of the tubular member to reduce friction and facilitate its radial expansion against the preexisting structure.

3. Grounds for Unpatentability

Petitioner’s arguments centered on three primary prior art patents, each alleged to anticipate the basic elements of all challenged claims. The numerous dependent claims, which add limitations via "wherein" clauses, were argued to be either directly anticipated or rendered obvious by one of the primary references, optionally in view of secondary references comprising industry-standard lubrication handbooks.

Ground 1: Anticipation and/or Obviousness over Vincent

  • Legal Basis: All challenged claims are anticipated under 35 U.S.C. §102 or, alternatively, obvious under 35 U.S.C. §103 over Vincent, alone or in view of various secondary handbook references.
  • Prior Art Relied Upon: Vincent (Patent 3,179,168) and Secondary References including the CRC Handbook of Lubrication and Tribology.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Vincent teaches all basic elements of the challenged claims. Vincent discloses an expandable tubular assembly (a corrugated liner tube) that is positioned within a preexisting structure (a well casing) and is then radially expanded into contact with that structure. Critically, Vincent explicitly teaches that "a lubricant should be applied to the inside surface of the corrugated liner tube" to reduce frictional drag during expansion, directly mapping to the core limitations of independent claims 1 and 3 and the basic structure of the apparatus claims.
    • Motivation to Combine (for §103 grounds): Petitioner asserted that Vincent discloses specific lubricants, such as mineral oil, vegetable oil, waxes, and solid particles like graphite. For dependent claims reciting specific properties (e.g., coefficient of friction, bonding type, or composition), Petitioner argued a person of ordinary skill in the art (POSITA) would naturally consult standard industry handbooks (the Secondary References) to understand the known properties of the lubricants disclosed in Vincent. The motivation was to select or optimize a known lubricant for the known purpose of reducing friction in a metal-forming operation, as described in Vincent.
    • Expectation of Success: A POSITA would have a high expectation of success because the combination involves applying well-understood principles from standard lubrication texts to the conventional mechanical system disclosed in Vincent.

Ground 2: Anticipation and/or Obviousness over Forsyth

  • Legal Basis: All challenged claims are anticipated under §102 or, alternatively, obvious under §103 over Forsyth, alone or in view of the Secondary References.
  • Prior Art Relied Upon: Forsyth (Patent 6,029,748) and the Secondary References.
  • Core Argument for this Ground:
    • Prior Art Mapping: Forsyth was argued to disclose all basic claim elements by teaching a method of repairing a casing that involves positioning an expandable tubular patch downhole and expanding it against the preexisting casing. Forsyth explicitly discloses that the expansion is "facilitated by the reservoir of grease in cavity 70 which is distributed along the internal wall of tubing 72 as the wedge 76 progresses." This disclosure of an internally applied lubricant (grease) for facilitating expansion was asserted to anticipate the basic limitations of the challenged claims.
    • Motivation to Combine (for §103 grounds): The argument mirrors that for Vincent. A POSITA reading Forsyth's disclosure of using "grease" would be motivated to consult standard handbooks to determine the properties of commercially available greases, such as their composition (e.g., metallic soaps, solid lubricants), friction coefficients, and bonding characteristics, thereby arriving at the subject matter of the dependent claims.

Ground 3: Anticipation and/or Obviousness over Kinley

  • Legal Basis: All challenged claims are anticipated under §102 or, alternatively, obvious under §103 over Kinley, alone or in view of the Secondary References.
  • Prior Art Relied Upon: Kinley (Patent 3,785,193) and the Secondary References.
  • Core Argument for this Ground:
    • Prior Art Mapping: Kinley was argued to disclose the basic claim elements by teaching a method of "expanding a liner to fit tightly against the inside wall of a pipe such as oil well casing." Kinley further discloses that the liner "is coated on the inside 10b with a slippery, fluoride plastic so that the tools of this invention may be driven therethrough." Petitioner asserted this fluoride plastic (polytetrafluoroethylene, or PTFE) is a lubricant that anticipates the core claim limitations.
    • Motivation to Combine (for §103 grounds): The disclosure of PTFE, a specific solid lubricant, was argued to directly anticipate dependent claims that include PTFE in a Markush group. For other dependent claims, a POSITA would know or could easily determine the physical properties (e.g., low coefficient of friction) of PTFE from common knowledge or the Secondary References, rendering the claims reciting those properties obvious.

4. Key Claim Construction Positions

  • "Coating" vs. "Injecting": Petitioner argued that no patentable distinction exists between "coating" (claim 1) and "injecting" (claim 3) a lubricant. The ’012 patent specification allegedly uses the terms interchangeably and describes methods like "spraying" as ways to apply a "coating." Petitioner contended that "injecting" is merely a subset of "coating" and that prior art disclosing any method of applying an internal lubricant satisfies both limitations.

5. Key Technical Contentions (Beyond Claim Construction)

  • "Wherein" Clauses Lack Patentable Weight: A central theme of the petition was that the limitations added in the numerous dependent "wherein" clauses are patentably insignificant. Petitioner argued these clauses merely recite an intended result (e.g., a specific coefficient of friction) or describe inherent properties of the conventional, "commercially available" lubricants the '012 patent itself sanctions. Because the specification allegedly provides no unexpected results associated with these properties, Petitioner contended the clauses fail to impart patentability over the basic method and apparatus disclosed in the prior art.

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.