PTAB

IPR2016-01686

BasInTek LLC v. Smith Intl Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Moineau-Style Stator
  • Brief Description: The ’648 patent discloses a Moineau-style stator for use in downhole drilling motors or pumps. The invention centers on an integral stator tube with a specific dimensional relationship: its major internal tube diameter is greater than the pass-through diameter of its threaded end, which in turn is greater than the major internal diameter of a resilient liner deployed within the tube.

3. Grounds for Unpatentability

Ground 1: Claims 1, 3, and 4 are anticipated by Jager under 35 U.S.C. §102.

  • Prior Art Relied Upon: Jager (Patent 6,427,787).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Jager expressly or inherently discloses every limitation of independent claims 1 and 4. Jager teaches a Moineau-style drilling motor with a monolithic (integral) stator tube containing a rubber-like resilient liner and threaded ends for connection. The central contention was that Jager’s figures and its disclosed ratio parameters for wall thicknesses and outer diameters necessarily result in the claimed relationship where the major internal tube diameter is greater than the pass-through diameter, and the major internal liner diameter is less than the pass-through diameter to allow for rotor insertion and achieve a required interference fit.
    • Key Aspects: The argument relied on calculations based on Jager’s disclosed dimensional ratios to prove the inherent disclosure of the claimed diameter relationships, asserting these would be apparent to a person of ordinary skill in the art (POSITA).

Ground 2: Claims 1, 3, and 4 are anticipated by Bottos under 35 U.S.C. §102.

  • Prior Art Relied Upon: Bottos (Patent 6,309,195).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Bottos, like Jager, discloses all limitations of the independent claims. Bottos describes an improved, thick-walled Moineau-style stator manufactured as a one-piece (integral) tube with an elastomeric layer and threaded ends. Petitioner contended that Bottos' figures and descriptions of wall thicknesses, combined with the functional requirement of inserting a rotor, inherently disclose the claimed three-part diameter relationship. The necessity of an interference fit between the rotor and the liner, after the rotor passes through the end connection, dictates that the liner's inner diameter must be smaller than the pass-through diameter.
    • Key Aspects: Similar to the Jager argument, this ground centered on what is necessarily present in the Bottos disclosure based on its figures and the known operational principles of Moineau motors.

Ground 3: Claims 2 and 5 are obvious over Jager in view of German patent 19950257 under 35 U.S.C. §103.

  • Prior Art Relied Upon: Jager (Patent 6,427,787) and German patent 19950257.

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addressed dependent claims 2 and 5, which further require the pass-through diameter to be equal to the internal thread diameter of the box end. Jager discloses a slightly conical inner thread, meaning the diameters are not constant. The German patent discloses a stator with a constant-diameter thread.
    • Motivation to Combine: Petitioner argued a POSITA would combine these teachings because straight and tapered (conical) threads were well-known, interchangeable design choices for stator box ends. A POSITA would have been motivated to substitute the German patent’s constant-diameter thread design into Jager’s stator to satisfy customer specifications, which was a simple and predictable modification.
    • Expectation of Success: The combination was argued to be a straightforward substitution of one known type of thread for another, yielding predictable results with a high expectation of success.

  • Additional Grounds: Petitioner asserted alternative obviousness challenges for claims 1, 3, and 4 over Jager or Bottos individually in view of reasonable design choices. Additional combination grounds included the obviousness of claims 1, 3, and 4 over Bottos in view of Jager, and the obviousness of claims 2 and 5 over various combinations of Bottos, Jager, and German patent 19950257, all relying on similar design choice and interchangeability rationales.

4. Key Claim Construction Positions

  • "Pass Through Diameter": Petitioner proposed this term be construed as "the smallest internal diameter within the threaded box end." This construction was argued to be consistent with the specification's description and the patent owner's statements during prosecution, and it is critical for establishing the claimed dimensional relationships relative to the prior art.
  • "Integral stator tube": Petitioner proposed this term be construed as "a one-piece stator tube, including threaded end portions, formed from a single metallic workpiece." This construction emphasizes the unitary, non-welded nature of the tube, which Petitioner argued was disclosed in both the Jager and Bottos references.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-5 of the ’648 patent as unpatentable.