PTAB

IPR2019-01129

BoArt LongyEar Ltd v. Australian Mud Co Pty Ltd

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Core Sample Orientation
  • Brief Description: The ’055 patent relates to a method and device for determining the geological orientation of a drilled core sample. The system uses sensors, such as accelerometers, to measure orientation data, a processor to record it, and a display that indicates the core's orientation at the time it was separated from the ground, allowing for accurate marking.

3. Grounds for Unpatentability

Ground 1: Claims 16-18, 22, and 23 are obvious over Puymbroeck in view of Enderlin.

  • Prior Art Relied Upon: Puymbroeck (Patent 6,006,844) and Enderlin (Patent 5,105,894).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Puymbroeck disclosed the fundamental system of the challenged claims, including a core-orientation device attached to a drill’s inner tube that records orientation data in real-time and uses a computer display for data analysis. Petitioner asserted that Enderlin supplied the teachings for maintaining the core’s physical orientation stationary relative to the device. Enderlin taught etching a straight scribe mark on the core during formation and using accelerometer data to determine the core’s orientation at the time of extraction, enabling accurate marking on the surface.
    • Motivation to Combine: A POSITA would combine these references to improve the accuracy of Puymbroeck's system. Petitioner contended that incorporating Enderlin’s method of recording data relative to an initial reference time and using accelerometers would allow for more accurate marking of the core’s original orientation, addressing a known need for precision in the field.
    • Expectation of Success: The combination involved applying known orientation and marking techniques (Enderlin) to a known core orientation system (Puymbroeck), and a POSITA would have reasonably expected the combined system to function predictably.

Ground 2: Claims 16-18, 22, and 23 are obvious over Puymbroeck in view of Scott.

  • Prior Art Relied Upon: Puymbroeck (Patent 6,006,844) and Scott (Canadian Application # 2456506).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner again used Puymbroeck as the base reference for the core drilling and orientation system. Scott was introduced to teach a method of recording orientation measurements at prescribed time intervals and using an electronic display unit to show both time and orientation data. This displayed data allowed a technician to rotate the retrieved core to replicate its original in-ground orientation for marking. Scott’s system used a clip to ensure the core orientation device and inner tube remained rotationally locked, thereby maintaining the core’s stationary orientation relative to the device.
    • Motivation to Combine: A POSITA would combine Puymbroeck with Scott to enhance the system's reliability and usability while reducing costs, which Scott identified as a key advantage of its approach. Scott’s method of displaying time-stamped orientation data provided a clear, practical solution for improving the accuracy of orienting and marking the core in a system like Puymbroeck's.
    • Expectation of Success: The integration was characterized as straightforward, as both references addressed the same technical challenge of core orientation with compatible electronic sensor and display technologies, ensuring a high expectation of success.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on Skopec (a 1992 journal article) as the primary reference in combination with either Enderlin or Scott. These grounds relied on analogous arguments, substituting Skopec's electronic multishot instrument (EMI) and core orientation methods as the base system to be improved by the teachings of Enderlin or Scott.

4. Key Claim Construction Positions

  • Petitioner argued that the permissive term "can be" in claims 16 and 17 should be construed as "may potentially be," consistent with its plain meaning. This construction was presented as permissive rather than mandatory, supporting the argument that the prior art met these limitations even if the described functions were optional.

5. Key Technical Contentions (Beyond Claim Construction)

  • Petitioner dedicated significant argument to contending that the ’055 patent was not entitled to the filing date of its provisional Australian application. Petitioner asserted that key limitations recited in the challenged claims—specifically the steps of "displaying a related measure," "initialising the physical orientation," and "maintaining" the core stationary—lacked adequate written description support in the priority document. This argument, if successful, would establish an earlier effective date for certain prior art references.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 16-18, 22, and 23 of Patent 7,584,055 as unpatentable.