PTAB

IPR2020-01621

EcoMetal Inc v. Terves LLC

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Petition
petition Intelligence

1. Case Identification

2. Patent Overview

  • Title: Galvanically-Active In Situ Formed Particles for Controlled Rate and Dissolving Tools
  • Brief Description: The ’010 patent discloses a magnesium composite material for use in dissolvable downhole tools for oil and gas operations. The invention relates to a method of creating the composite by adding specific metallic materials to molten magnesium to form galvanically-active intermetallic phases in situ, thereby controlling the dissolution rate and improving the mechanical properties of the final tool component.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 7, 8, 14, and 16 under 35 U.S.C. §102

  • Prior Art Relied Upon: Xiao (Chinese Patent Pub. No. CN 103343271).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Xiao discloses every element of independent claims 1 and 14 and dependent claims 7, 8, and 16. Xiao describes a "fast-decomposed cast magnesium alloy" for use as a tripping ball in oil well fracturing. The method involves heating a magnesium-aluminum alloy above its solidus temperature and adding "intermediate alloys" containing elements like iron, nickel, and copper. Petitioner asserted that Xiao's disclosure of forming "micro-batteries" that "greatly accelerate the corrosion decomposition" teaches the claimed in situ formation of galvanically-active intermetallic phases. Petitioner further contended that the specific process temperatures and alloy compositions disclosed in Xiao’s claims and examples (e.g., Al 13-25%, Zn 2-15%, Ni 0.05-5%) fall within or overlap the ranges required by the challenged claims. For example, Xiao's disclosed magnesium range of 54.5-85 wt% was argued to anticipate the "over 50 wt %" limitation of claims 7 and 8.

Ground 2: Obviousness of Claims 37-42 under 35 U.S.C. §103

  • Prior Art Relied Upon: Xiao in view of Ho ("The mechanical behavior of magnesium alloy AZ91 reinforced with fine copper particulates," 2004).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that claims 37-42 are obvious over the combination of Xiao and Ho. These claims add limitations requiring a portion of the additive material to remain "unalloyed" after forming the composite. While Xiao teaches forming intermetallic phases, it does not explicitly state that any additive material remains unalloyed. Ho, however, describes reinforcing an AZ91 magnesium alloy with copper particulates and provides experimental evidence showing that some copper "particulates" remain "unreacted" alongside secondary Al-Cu phases in the final composite. Petitioner contended that combining Xiao's method for creating a dissolvable alloy with Ho's disclosure of unreacted reinforcement particles would render the claims obvious.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings because both references are directed at improving the properties of magnesium-based materials. A POSITA seeking to enhance the mechanical properties and further control the dissolution of Xiao's alloy would have looked to Ho, which teaches how to reinforce a similar magnesium alloy (AZ91, also referenced in Xiao as a comparative alloy) with copper particulates to achieve improved characteristics.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because Ho provides experimental data showing that unreacted copper remains when added to a similar magnesium alloy under comparable melt processing conditions, making the outcome predictable.

Ground 3: Obviousness of Claims 10, 12, 15, 20, 29, and 34 under 35 U.S.C. §103

  • Prior Art Relied Upon: Xiao in view of Ho.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued this second set of claims is also obvious over Xiao and Ho. These claims add limitations related to secondary processing steps and specific additive characteristics. Specifically, claims 10, 12, and 29 require "solutionizing" and/or "aging" the composite at specified temperatures to improve its strength. While Xiao does not teach these steps, Ho explicitly discloses subjecting its copper-reinforced magnesium ingots to a "T6 heat treatment," which consists of solutionizing at 413°C and aging at 168°C to improve tensile strength. Furthermore, claim 15 requires an additive particle size of 0.1-500 microns. Ho discloses using copper powder with a size range of 8-11µm, which falls squarely within the claimed range.
    • Motivation to Combine: The motivation is the same as in Ground 2. A POSITA would have been motivated to apply the well-known secondary processing techniques from Ho to Xiao’s alloy to predictably improve its mechanical properties, such as tensile strength and ductility, which Xiao itself identifies as desirable.
    • Expectation of Success: A POSITA would have had a high expectation of success because solutionizing and aging (T6 treatment) are conventional, widely used techniques for strengthening magnesium alloys, and Ho demonstrates their successful application to a closely related material.

4. Key Claim Construction Positions

  • For the purposes of the petition, Petitioner adopted the claim constructions proposed by the Patent Owner in a related district court litigation. Petitioner stated it did not necessarily agree with the constructions but adopted them for the petition to demonstrate unpatentability even under the Patent Owner's own proposed definitions for terms such as "galvanically-active," "in situ," and "intermetallic phase."

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 7, 8, 10, 12, 14, 15, 16, 20, 29, 34, and 37-42 of the ’010 patent as unpatentable.