Offshore Technical Compliance LLC v. Innovative Pressure TestIng LLC

1. Case Identification

• Case #: IPR2020-00923
• Patent #: 9,207,143
• Filed: May 8, 2020
• Petitioner(s): Offshore Technical Compliance, LLC
• Patent Owner(s): Innovative Pressure Testing, LLC
• Challenged Claims: 1-18

2. Patent Overview

• Title: System and Method for Determining Leaks in a Complex System
• Brief Description: The ’143 patent discloses systems and methods for verifying the pressure integrity of equipment in deep-water oil and gas operations, such as blowout preventers (BOPs). The technology uses a computer-based system to analyze pressure data and display a schematic illustration of the pressure system to improve the speed and accuracy of leak detection compared to prior analog methods.

3. Grounds for Unpatentability

Ground 1: Obviousness over BOP California, Winters, and Wodjenski - Claims 1-18 are obvious over BOP California in view of Winters, in further view of Wodjenski.

• Prior Art Relied Upon: BOP California (a 2006 manual on blowout prevention), Winters (Application # 2008/185143), and Wodjenski (Application # 2006/0032550).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the claimed invention is an unpatentable combination of three known elements: (1) a standard BOP pressure testing protocol, (2) digital analysis of test data, and (3) a schematic display of the system on a computer. BOP California, a detailed industry manual, was alleged to teach the physical testing steps, including the configuration of multiple fluid pathways and the use of a "third fluid pathway" vented to the atmosphere for safety if a tested component fails. Winters was alleged to teach a digital, software-based method for analyzing pressure readings from BOPs, compensating for temperature-related pressure decay, and determining a test result by comparing data to a threshold. Wodjenski was alleged to teach the use of a computer screen to display a schematic illustration of a pressure system with symbols representing fluid control components and their operational status.
  • Motivation to Combine: A POSITA would combine the standard testing protocols of BOP California with a digital analysis method like that in Winters to increase the accuracy, reliability, and speed of testing compared to older analog chart recorders. Further, a POSITA would be motivated by market forces demanding modernization and improved user interfaces to add a schematic display like Wodjenski's to the computerized system. This would allow operators to more easily and safely manage complex testing procedures, a need highlighted by industrial accidents like the Deepwater Horizon oil spill.
  • Expectation of Success: A POSITA would have a high expectation of success in combining these known elements. Applying known computer analysis and graphical user interface techniques to a well-established mechanical testing protocol was a predictable improvement.

Ground 2: Obviousness over Wodjenski and BOP California - Claims 1-10, 12-15, and 18 are obvious over Wodjenski in view of BOP California.

• Prior Art Relied Upon: Wodjenski (Application # 2006/0032550) and BOP California (a 2006 manual on blowout prevention).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground was framed as a correction of the original patent examination. Petitioner contended that the examiner correctly identified Wodjenski as teaching most of the computer-implemented limitations, such as displaying a system schematic, using icons for components, and receiving user input to define fluid pathways. However, the claims were allowed because the examiner's art did not teach certain BOP-specific testing protocols, namely the "third fluid pathway" and "venting to atmosphere." Petitioner argued that BOP California, which was not before the examiner, explicitly teaches these missing limitations.
  • Motivation to Combine: A POSITA would be motivated to apply the computerized schematic display and control system of Wodjenski to the industry-standard BOP testing procedures described in BOP California. The combination would be a straightforward application of a general-purpose computer interface to a specific, well-known industrial process to improve its efficiency, clarity, and safety.
  • Expectation of Success: The combination was presented as a predictable integration of a user interface with a standard protocol, carrying a high expectation of success. By adding BOP California, Petitioner argued it supplied the very elements the examiner found lacking, creating a prima facie case of obviousness.

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 2) against all claims based on the combination of BOP California, Wodjenski, and Franklin ’903 (the parent application to the ’143 patent). This ground substituted Franklin ’903 for Winters to provide the teachings of digital pressure analysis.

4. Key Claim Construction Positions

• "Comparing pressure at time [t1/t3] and time [t2/t4]" (Claim 1): Petitioner proposed this term be construed to mean calculating a specific "leak detection value" (LDV) according to a formula disclosed in the patent's specification.
• "Calculating ... test status from a difference in ... pressure" (Claim 1): Petitioner proposed this term be construed to mean comparing the calculated LDV to a user-defined threshold or a benchmark test to determine if a leak exists.
• "Test status" (Claims 1, 3, 11, etc.): Petitioner proposed this be construed as a definitive conclusion of "leak or no leak." These constructions were argued to tie the claims to specific numerical methods that were known in the prior art.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. The core of this argument was that BOP California constituted new and material prior art that was not before the examiner during prosecution and was not cumulative of any cited reference. Petitioner asserted that the examiner allowed the claims precisely because the prior art of record lacked teachings of a "third fluid pathway" vented to atmosphere—the exact feature Petitioner alleged is clearly disclosed in the BOP California manual. Therefore, consideration of this new reference would correct a material error from the original examination.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of all challenged claims 1-18 of the ’143 patent as unpatentable.