Carnes SR William Wesley v. SeaBoard Intl Inc

1. Case Identification

• Patent #: 8,784,545
• Filed: October 31, 2018
• Petitioner(s): William Wesley Carnes, Sr., Inc. d/b/a WC Welding Services
• Patent Owner(s): Seaboard International Inc. d/b/a Mathena, Inc.
• Challenged Claims: 1-16 and 28

2. Patent Overview

• Title: Shale-Gas Separating and Cleanout System
• Brief Description: The ’545 patent relates to a system for separating shale, gas, and fluid from a shale-gas well return stream. The invention uses a vessel where a cyclonic effect, internal baffles, and a jet assembly work together to separate gas (for venting or flaring) from shale debris and fluid (for disposal).

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-3, 5, and 16 under §102(b) by Erwin

• Prior Art Relied Upon: Erwin (Patent 2,748,884).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Erwin, which discloses an apparatus for treating drilling mud, anticipates every element of the challenged claims. Independent claim 1 is met because Erwin teaches a vacuum tank (vessel), vent pipes for gas (first port), an outlet conduit for degassed mud (second port), and jet nozzles for flushing sediment (first jet). Petitioner contended that Erwin’s wash pipes with nozzles (disclosing aeration and flushing) meet the limitations of dependent claims 2 and 3, its jet nozzle assembly meets the limitations of claim 5, and its aerating wash pipe functions as the internal aerated cushion system (IACS) of independent claim 16.

Ground 2: Obviousness of Claims 6, 7, and 12-14 over Burnham ’927 in view of Mathena ’811

• Prior Art Relied Upon: Burnham ’927 (Patent 3,895,927) and Mathena ’811 (Patent 8,641,811).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Burnham ’927, a drilling degassification apparatus, discloses the base system of claims 1 and 5, including a vessel, ports, and a venturi-type dual ejector jet assembly. Mathena ’811, a mud-gas containment system, was argued to supply the remaining features of the dependent claims. Specifically, Mathena ’811 was cited for its disclosure of cleanout plugs (claim 6), a flare stack feedline in communication with the gas vent (claim 7), and an overflow line with an intake port to handle excess fluid (claims 12-14).
  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine these references because they both address the common problem of safely handling and separating materials from drilling operations. A POSITA would have looked to known solutions like the flare stacks and overflow lines in Mathena ’811 to add functionality to the separator system of Burnham ’927.
  • Expectation of Success: A POSITA would have expected success in combining the known, conventional components from Mathena '811 (like a flare stack or cleanout port) with the separator of Burnham '927, as it involved the application of known technologies to a similar system to achieve predictable results.

Ground 3: Obviousness of Claims 15 and 28 over Griffin in view of Erwin and Mathena ’811

• Prior Art Relied Upon: Griffin (Patent 3,325,974), Erwin (Patent 2,748,884), and Mathena ’811 (Patent 8,641,811).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner contended this combination renders claims 15 and 28 obvious. For claim 15 (dependent on claim 14), Griffin was asserted to disclose the base conically-shaped separator, Mathena ’811 to provide the overflow line with an intake port, and Erwin to teach the centrally disposed IACS pipe. For independent claim 28, Petitioner argued Griffin discloses the core elements (vessel, intake, ports, jet assembly), Mathena ’811 adds the flare stack and overflow line, and Erwin contributes the IACS pipe.
  • Motivation to Combine: A POSITA seeking to build a comprehensive gas separation system would be motivated to combine features from these references. They would start with a known separator like Griffin and incorporate the well-understood IACS pipe from Erwin for improved fluid handling and the overflow and flaring capabilities from Mathena ’811 for enhanced safety and operational flexibility.
  • Expectation of Success: The combination involved integrating distinct, well-known subsystems into a separator design. A POSITA would have reasonably expected that adding a known IACS pipe (Erwin) and a standard overflow line (Mathena ’811) to a separator (Griffin) would function as intended.

• Additional Grounds: Petitioner asserted numerous other grounds. These included anticipation challenges to claims 1, 5, and 8-11 based on Burnham ’113 and Griffin individually. Additional obviousness challenges were based on various two- and three-way combinations of the primary references (Erwin, Griffin, Burnham ’113, Burnham ’927, and Mathena ’811) to meet the limitations of claims 4, 6-14, 15, and 28. These grounds relied on similar rationales of combining known features from the field of mud-gas separation.

4. Key Technical Contentions

• Petitioner’s arguments rested on the central technical premise that "mud-gas separators" (the subject of the prior art) and "shale-gas separators" (the subject of the ’545 patent) accomplish the same objective using the same fundamental processes. Petitioner argued that because both technologies are used in drilling operations to separate gas, liquids, and solids from a well return, a POSITA would have considered prior art in the established field of mud-gas separation to be directly applicable to solving problems in shale-gas separation. This assertion underpins the motivation to combine arguments across all obviousness grounds.

5. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-16 and 28 of the ’545 patent as unpatentable under 35 U.S.C. §102 and §103.