PTAB

IPR2025-00391

Full Metal Power BV v. Infocus Downhole Solutions USA LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: DOWNHOLE TOOLS WITH PROGRESSIVE CAVITY SECTIONS, AND RELATED METHODS OF USE AND ASSEMBLY
  • Brief Description: The ’992 patent describes downhole tools, such as pumps or motors, containing an all-metal progressive cavity section. The technology focuses on forming the tool's stator component from a single integral block of material using electrochemical machining (ECM) and then heat-treating it for durability in high-temperature wellbore environments.

3. Grounds for Unpatentability

Ground 1: Claims 1, 3-6, 8-11, 13-16, and 18-19 are obvious over Zhilong in view of Froelich.

  • Prior Art Relied Upon: Zhilong (Chinese Application # CN102501016A) and Froelich (Application # 2010/0006342).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Zhilong disclosed the core limitations of independent claims 1 and 11. Specifically, Zhilong taught a method for processing "fully metallic screw pump stators" for high-temperature wells by using ECM to shape the stator cavity inside a single integral "stator blank." Zhilong further disclosed making these stators longer than conventional stators (over 118 inches) and applying surface hardening treatments like nitriding. Petitioner asserted that Froelich supplied the missing context of a complete progressive cavity motor, disclosing that such pumps (Moineau motors) are commonly used in wellbores and include a rotor that works with the stator to form the progressive cavity. Froelich also taught connecting the rotor to a drill bit.
    • Motivation to Combine: A POSITA would combine Zhilong's method for manufacturing long, durable, all-metal stators with Froelich's well-known Moineau motor configuration to create a fully functional, high-temperature downhole motor. The combination would leverage Zhilong's advanced manufacturing technique to improve the performance and durability of a conventional downhole tool as described in Froelich.
    • Expectation of Success: A POSITA would have a reasonable expectation of success, as the combination involved applying Zhilong's stator manufacturing process to a standard progressive cavity motor configuration described by Froelich, with all components performing their known functions.

Ground 4: Claims 1, 4, 5, 8-11, 14, 15, 18, and 19 are obvious over Yang in view of Jinqi.

  • Prior Art Relied Upon: Yang (a 2016 journal article) and Jinqi (Chinese Publication # CN201121583Y).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner contended that Yang, an article analyzing ECM for metal screw pump stators, disclosed an all-metal screw pump for high-temperature wells comprising a metal stator and rotor. Yang described an ECM process test piece of 157 inches in length, satisfying the length limitations of several claims. To the extent Yang was silent on specific clearances and heat treatments, Petitioner argued Jinqi supplied these details. Jinqi disclosed a "full-metal screw pump" with a specific clearance gap between the stator and rotor of 0 mm to 0.5 mm and taught applying a nitriding treatment to both components to enhance wear and corrosion resistance.
    • Motivation to Combine: A POSITA would be motivated to look to a reference like Jinqi to supply specific design parameters for the all-metal pump generally described in Yang. Jinqi's teachings on achieving a narrow clearance fit and applying specific heat treatments were directly relevant to optimizing the performance and durability of the type of pump discussed in Yang.
    • Expectation of Success: Success would be expected because implementing Jinqi's specific clearance dimensions and nitriding treatment in the pump of Yang was a matter of applying known optimization techniques to a known device to achieve predictable improvements in wear and corrosion resistance.

  • Additional Grounds: Petitioner asserted additional obviousness challenges by adding Mitchell (Application # 2016/0168912), Wangenheim (Patent 9,976,227), and Jinglong (Chinese Application # CN102139440A) to the primary combinations. Mitchell was cited for its disclosure of using a progressive cavity motor to rotate a reamer shoe. Wangenheim was cited for its teaching of using ECM to form rotors, not just stators. Jinglong was cited to show that fully metallic screw pumps typically range from 6 to 9 meters (over 300 inches) in length.

4. Key Claim Construction Positions

  • “rigid and do not flex”: Petitioner argued this phrase, applied to the stator and rotor surfaces, should be construed to mean surfaces made of "any solid metal without elastomeric materials." This construction was based on the specification's distinction from prior art rubber-lined stators and its description of a "rubberless, rigid contact surface application."
  • “heat treating”: Based on the specification and claim 19, which explicitly recites nitriding, Petitioner asserted that "heat treating" should be construed to include nitriding.
  • “a sufficiently narrow clearance” / “an efficient pumping seal”: Petitioner argued that these terms lacked sufficient clarity in the patent to determine their scope. For the purposes of the petition, Petitioner proposed construing them functionally as any operable stator/rotor arrangement that creates a pumping seal without seizing, as opposed to an inoperable one.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv would be improper. The petition was filed shortly after the co-pending district court litigation commenced, where an answer was not yet due for several weeks. Petitioner asserted that the court and parties had not invested substantial resources, no trial date was set, and the petition presented new prior art (Zhilong and Yang) not considered during prosecution, raising compelling unpatentability arguments that serve the public interest in correcting the patent record.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-19 of the ’992 patent as unpatentable.