PTAB

IPR2022-01372

DynaEnergetics Europe GmbH v. SWM Intl LLC

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Petition

1. Case Identification

2. Patent Overview

  • Title: Gravity-Orienting Downhole Perforating Gun System
  • Brief Description: The ’762 patent discloses a downhole perforating gun system where an inner gun body, containing explosive charges, is rotatably mounted within a fixed outer casing. The system uses one or more weights coupled to the gun body, which, under the force of gravity, rotate the gun body via a bearing assembly to achieve a desired orientation for perforation in a horizontal wellbore.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-3, 7, 9-10, 15, 17-20, 24-26, 29-30, and 33-36 under §102 by Yonghong

  • Prior Art Relied Upon: Yonghong (Patent No. CN2698970Y).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Yonghong discloses every limitation of the challenged independent and dependent claims. Yonghong described a perforating gun with a rotatable inner "charge tube" (the claimed gun body) that is concentrically disposed within an outer "gun tube" (the claimed outer casing). Petitioner asserted that Yonghong explicitly teaches using a "counterweight" to rotate the charge tube via a "bearing" assembly based on gravity. The argument mapped Yonghong's "bushing" and "charge tube shaft" to the claimed "collar" and "support member," respectively, contending these components are arranged to enable relative rotation as claimed. Petitioner further argued that Yonghong discloses features such as a radial bearing, support members with different diameter portions, and multiple collar/bearing assemblies at opposite ends of the gun body, thereby anticipating the dependent claims.

Ground 2: Claims 4 and 16 are obvious over Yonghong in view of Schacherer or Eitschberger

  • Prior Art Relied Upon: Yonghong (Patent No. CN2698970Y), Schacherer (Patent 9,689,223), and Eitschberger (Patent 9,784,549).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that claims 4 and 16 add limitations directed to an "end contact" and an "insulated electrical contact" for transmitting electricity, features characteristic of select-fire systems not explicitly detailed in Yonghong. Petitioner argued that Schacherer and Eitschberger both teach rotatable electrical connections and insulated bulkheads specifically for use in select-fire perforating gun strings. These references were presented as solving the known problem of wire twisting or damage in systems with rotating internal components.
    • Motivation to Combine: A POSITA would combine Yonghong with Schacherer or Eitschberger to add the known and desirable benefit of select-fire capability to Yonghong's established gravity-orienting system. This modification would improve the functionality and precision of the system. The combination was presented as a straightforward substitution of the electrical feedthrough components from Schacherer or Eitschberger for Yonghong's detonating cord connection, without altering the fundamental gravity-orientation mechanism.
    • Expectation of Success: Petitioner argued a POSITA would have a reasonable expectation of success, as the combination involves applying a known technique (select-fire electrical connections) to a known system (a gravity-orienting gun) to achieve the predictable result of an electronically controlled, gravity-oriented perforating gun.

Ground 3: Anticipation of Claims 1-3, 7, 9, 15, 17-20, 24-26, 29-30, and 33-36 under §102 by Hardesty

  • Prior Art Relied Upon: Hardesty (Patent 9,115,572).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner presented Hardesty as a second, independent basis for anticipation of nearly all challenged claims. The argument asserted that Hardesty discloses a perforating gun with an inner "charge holder tube" (gun body) that is rotatably coupled to an outer casing via a "bearing race system." The system uses an "eccentric weight" to orient the energetic charges. Petitioner mapped Hardesty’s bearing race system to the claimed "collar," "support member," and "bearing assembly," arguing it discloses the same concentric, rotatable arrangement required by the independent claims of the ’762 patent. Petitioner contended that Hardesty was cited during prosecution but never substantively applied by the examiner, representing a material error.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on Hardesty in view of Schacherer or Eitschberger (Ground 4) and Hardesty in view of Yonghong (Ground 5) but relied on similar design modification and combination theories.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §325(d) is inappropriate because the primary anticipatory reference, Yonghong, was never before the examiner. It further argued that other key references, such as Hardesty, were cited on the face of the patent but never substantively considered or applied against the claims during prosecution. Petitioner contended the examiner committed a material error by overlooking Hardesty’s direct teachings of the concentric alignment that was ultimately a basis for allowance over different prior art.
  • To counter potential denial under Fintiv, Petitioner stated its intent to file a Sotera stipulation. This stipulation affirms that, if the IPR is instituted, Petitioner will not pursue the same grounds, or any grounds that could have reasonably been raised, in the parallel district court proceeding, thereby mitigating concerns of duplicative efforts and conflicting decisions.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-4, 7, 9-10, 15-20, 24-26, 29-30, and 33-36 of the ’762 patent as unpatentable.