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 Leeks in a Complex System
• Brief Description: The ’143 Patent relates to systems and methods for verifying the pressure integrity of equipment in deep-water oil and gas operations, such as blowout preventers (BOPs). The technology purports to more accurately and quickly distinguish between pressure drops caused by leaks and those caused by temperature changes by using digital analysis and displaying schematic illustrations of the pressure system and test results on a computer.

3. Grounds for Unpatentability

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

• Prior Art Relied Upon: BOP California (a 2006 industry manual for blowout prevention), Winters (Application # 2008/185143), and Wodjenski (Application # 2006/0032550).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that BOP California, a standard industry testing manual, discloses the physical steps of testing BOPs recited in the claims, including creating first, second, and third fluid pathways, and venting to the atmosphere. Winters teaches a digital analytical method for predicting pressure stabilization in BOP testing by analyzing early pressure data to distinguish leaks from temperature effects. Wodjenski discloses displaying a schematic of a pressure system on a computer screen, with color-coded symbols for components like valves to indicate their status. Petitioner asserted that all claimed steps are taught by combining these references.
  • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine the detailed, standard testing protocols of BOP California with the computerized analysis of Winters to improve accuracy and save time, a benefit Winters itself touts. A POSITA would further be motivated to add the graphical user interface of Wodjenski to visualize the complex tests described in BOP California, as the industry was pushing for computerization and better data visualization to improve safety, particularly after the Deepwater Horizon event.
  • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success in combining these known elements—a standard test procedure, a known digital analysis method for that procedure, and a conventional schematic display—for their intended purposes.

Ground 2: Claims 1-18 are obvious over BOP California in view of Franklin ’903 and Wodjenski.

• Prior Art Relied Upon: BOP California (a 2006 industry manual), Franklin ’903 (Application # 2011/0046903), and Wodjenski (Application # 2006/0032550).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground is similar to Ground 1, but substitutes Franklin ’903 for Winters. Franklin ’903 is the parent application of the ’143 patent and discloses the same computational methods for calculating a Leak Detection Value based on pressure changes over time and comparing it to a threshold. Petitioner argued that combining the physical testing steps from BOP California with the specific computational methods from Franklin ’903 and the schematic display from Wodjenski renders the claims obvious.
  • Motivation to Combine (for §103 grounds): The motivation is identical to Ground 1: applying known computational improvements (from Franklin ’903) and visualization techniques (from Wodjenski) to a standard, well-documented industry testing procedure (from BOP California) would be a predictable and desirable advancement.
  • Expectation of Success (for §103 grounds): Success would be expected, as this combination involves applying the patent’s own parent application teachings to a standard testing protocol.

Ground 3: 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 industry manual).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground reconstructs the argument made by the Examiner during prosecution, but adds BOP California to cure the deficiencies the Examiner identified. Petitioner asserted that Wodjenski teaches most limitations related to the computerized system, including the schematic illustration, user selection of pathways, and displaying component status. BOP California, which was not before the Examiner, is argued to supply the specific BOP testing protocol limitations that the Examiner found missing, specifically the creation of a "third fluid pathway" and "venting to atmosphere," which were key to allowance.
  • Motivation to Combine (for §103 grounds): A POSITA seeking to apply Wodjenski’s computerized display and control system to BOP testing would naturally look to a standard industry manual like BOP California to implement the correct, field-accepted testing protocols, including those for venting and establishing redundant fluid pathways for safety.
  • Expectation of Success (for §103 grounds): The combination would have been straightforward, as it involves integrating a known computer interface with the precise, step-by-step instructions for the physical process it is meant to control and monitor.

4. Key Claim Construction Positions

• "Calculating [a/an] ... test status from a difference in ... pressure" / "... from a variance in ... pressure": Petitioner argued these terms should be construed to mean calculating a "leak detection value" (LDV) using a specific formula disclosed in the patent, and then comparing that LDV to a user-defined threshold (for an initial test) or a benchmark (for subsequent tests) to determine the existence of a leak. This construction is central to mapping the computational steps to the prior art.
• "Test status": Petitioner proposed this term be construed as "a conclusion of leak or no leak." This clarifies the ultimate output of the claimed calculation and links it to the function of the prior art systems, which also aimed to identify leaks.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate because the petition raises new, substantial questions of patentability that the Examiner did not consider. The primary reference, BOP California, was not before the Examiner during prosecution. Petitioner asserted that BOP California is highly material because it directly teaches the very limitations—specifically the "third fluid pathway" and "venting to atmosphere"—that the Examiner identified as the basis for allowing the claims. Therefore, the arguments presented are not the same or substantially the same as those previously considered by the Office.

6. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-18 of Patent 9,207,143 as unpatentable.