Waste FaciLiTies Inc v. Scott Environmental Services Inc

1. Case Identification

• Patent #: 8,007,581
• Filed: November 17, 2017
• Petitioner(s): Waste Facilities Inc.
• Patent Owner(s): Scott Environmental Services Inc.
• Challenged Claims: 1, 2, 8-10, 13, 19, and 20

2. Patent Overview

• Title: Process for Stabilizing Drilling Cuttings
• Brief Description: The ’581 patent discloses processes for stabilizing waste drill cuttings by mixing them with stabilizers (e.g., cement, fly ash) or asphalt to create a strong, load-bearing material. This material is then used to construct structures like roads or drilling pads designed to resist rutting under heavy loads.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, 8-10, 13, 19, and 20 are obvious over Polston in view of a person of ordinary skill in the art (POSA).

• Prior Art Relied Upon: Polston (Patent 6,706,108).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Polston teaches all elements of the challenged claims. Polston discloses a method to produce a road base material by recycling oilfield waste, including drilling cuttings, and combining it with stabilizers like Portland cement, fly ash, and asphalt emulsion. Petitioner contended that creating a load-bearing structure from this material that meets the claimed performance limitations—specifically the rutting resistance (less than 1-inch rut after 10,000 applications of an 18,000-pound axle load) and the dimensional requirement (a continuous portion with a cross-section of at least 101 mm)—would have been obvious. A POSA would understand that Polston's disclosed cement concentrations (0.5% to 10%) could be optimized using standard road-building techniques to achieve the required strength. Furthermore, typical road base layers are constructed to thicknesses well over 101 mm (4 inches), making the claimed dimension an obvious design choice for the intended use. The development of strength through a "pozzolanic reaction" (for cementitious mixtures) or "curing" (for asphaltic mixtures) is an inherent and well-known outcome of using the materials taught by Polston for their stated purpose.
  • Motivation to Combine: Petitioner asserted that the motivation to apply the general knowledge of a POSA to Polston's teachings is straightforward. Polston's explicit goal was to create a "road base material." A POSA would be motivated to use this material to construct a strong, durable road according to standard design principles, which includes ensuring it can withstand expected traffic loads without excessive rutting. The combination is merely the application of known road construction techniques to achieve Polston's intended, predictable, and beneficial result.
  • Expectation of Success: Petitioner argued a POSA would have had a high expectation of success. The process involves selecting from a finite number of known components for pavement construction (cuttings, cement, aggregate) and combining them in known ways. Because the materials and processes described in Polston are conventional in road construction, a POSA would predictably achieve a load-bearing structure with the desired rutting resistance through routine optimization.
  • Key Aspects: A central pillar of the Petitioner's argument was the doctrine of issue preclusion. Petitioner asserted that the PTAB, during the prosecution of the parent application, had already found claims nearly identical to those in the ’581 patent to be obvious over Polston. Petitioner argued that the only substantive addition to the new claims—the "continuous portion" limitation—was an obvious and inherent feature of standard road construction. Additionally, Petitioner accused the Patent Owner of overcoming the rejection in the ’581 patent's prosecution by misrepresenting Polston's teachings, specifically by presenting test results on a crushed, unbound aggregate that showed low strength (28 psi) instead of testing a properly compacted and cured structure as taught by Polston, which would have shown much higher strength.

4. Key Claim Construction Positions

• Petitioner stated it adopts the claim constructions determined by the PTAB in a previous IPR (IPR2015-00381) for the terms "drilling cuttings" and the "Rutting Requirement."
• Petitioner asserted that no specific construction is necessary for other terms for the purposes of the petition.

5. Key Technical Contentions (Beyond Claim Construction)

• A key contention was that the Patent Owner's characterization of the Polston prior art during prosecution was technically improper. The Petitioner argued that the Patent Owner’s expert, Mr. Walka, created a test that did not represent Polston's teachings. Instead of forming a bound, cured road base as disclosed, he allegedly crushed a previously cured sample and tested the resulting unbound aggregate.
• Petitioner argued this test yielded an artificially low compressive strength (28 psi), which misled the Examiner into believing Polston could not produce a strong structure. Petitioner contended that a proper implementation of Polston, using standard compaction and curing, would have predictably resulted in a material meeting the claimed strength and rutting limitations.

6. Arguments Regarding Discretionary Denial

• The Petitioner acknowledged that the ’581 patent was the subject of a previous IPR (IPR2015-00381). However, it argued against discretionary denial under §325(d) because the instant petition allegedly presented different arguments and was supported by a new expert declaration not previously considered by the Board.

7. Relief Requested

• Petitioner requested that the Board institute an inter partes review and cancel claims 1, 2, 8-10, 13, 19, and 20 of the ’581 patent as unpatentable.