G&H Diversified Mfg LP v. DynaEnergetics Europe GmbH

1. Case Identification

• Case #: PGR2021-00078
• Patent #: 10,844,697
• Filed: May 10, 2021
• Petitioner(s): G&H Diversified Mfg, LP
• Patent Owner(s): DynaEnergetics Europe GmbH
• Challenged Claims: 1-21

2. Patent Overview

• Title: Electrical Connection Assembly
• Brief Description: The ’697 patent discloses an electrical connection assembly for use in downhole tool strings, such as perforating gun systems. The invention features a "tandem seal adapter" with a bore that sealingly receives a "pressure bulkhead," which in turn contains a pin connector assembly to relay an electrical signal while sealing internal components from the wellbore environment.

3. Grounds for Unpatentability

Ground 1: Anticipation over Rogman - Claims 1-2, 8-11, and 13 are anticipated by Rogman.

• Prior Art Relied Upon: Rogman (Patent 10,077,641).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Rogman discloses every limitation of the challenged claims. Rogman teaches a perforating gun assembly with a "bulkhead" that corresponds to the ’697 patent's tandem seal adapter and a "seal" with a "coaxial feedthrough" that functions as the claimed pressure bulkhead and pin connector assembly. Critically, Rogman explicitly discloses positioning the detonator within the first outer gun carrier, the very feature that the Examiner identified as the distinguishing point over prior art during prosecution. Rogman also discloses a spring-loaded shutter adjacent to the tandem seal adapter (claim 8) and connecting a second gun carrier for multi-gun strings (claim 9).
  • Key Aspects: Petitioner contended that Rogman teaches the exact limitation that led the Examiner to allow the claims, which was the placement of the detonator inside the gun carrier rather than outside the tandem seal adapter.

Ground 2: Obviousness over Rogman and Deere - Claims 3-5, 7, 14-15, and 21 are obvious over Rogman in view of Deere.

• Prior Art Relied Upon: Rogman (Patent 10,077,641) and Deere (Application # 2013/0008669).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Rogman provides the base electrical connection assembly, while Deere supplies the motivation and means to incorporate spring-loaded contact pins. Deere describes sealing assemblies for downhole tools that use spring-loaded pins protruding from a housing to ensure reliable electrical contact. The combination of Rogman's assembly with Deere's spring-loaded pins would result in an assembly where pins extend from the bulkhead body, as required by claims 4, 5, and 14g.
  • Motivation to Combine: A POSITA would combine Rogman and Deere to solve the well-known problem of achieving reliable electrical connections in threaded tool strings where misalignment can occur. Deere explicitly addresses the suboptimality of "blind" connections made during threading (as in Rogman's design) and teaches that protruding spring-loaded pins solve this by allowing electrical contact before components are fully tightened.
  • Expectation of Success: A POSITA would have a high expectation of success, as incorporating spring-loaded contacts is a conventional solution for connection problems in analogous downhole tool environments.

Ground 3: Obviousness over Rogman and Borgfeld - Claims 9-12 are obvious over Rogman in view of Borgfeld.

• Prior Art Relied Upon: Rogman (Patent 10,077,641) and Borgfeld (Application # 2013/0153205).

• Core Argument for this Ground:

  • Prior Art Mapping: Rogman discloses connecting multiple gun carriers in series. Borgfeld teaches modular perforating gun assemblies with "wireless" plug-in connections between guns, including a bulkhead connector element on a second detonator that mates with the pin connector of the first assembly's tandem seal adapter. This combination meets the limitations of claim 9, which requires a second gun carrier with a bulkhead connector element in wireless contact with the main assembly.
  • Motivation to Combine: A POSITA would combine these references to enhance the modularity and simplify the field assembly of multi-gun strings, a stated goal of Rogman. Rogman itself contemplated a "future design" with a "slide in" connector, which directly describes the modular system taught by Borgfeld. Furthermore, both references were assigned to the same entity (Schlumberger), making combination of their compatible technologies a predictable design choice.
  • Expectation of Success: The technologies are directly related, and using Borgfeld's modular connector in Rogman's gun string is a simple substitution of one connection type for another to achieve improved functionality.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including claims 6 and 19-20 over Rogman, Deere, and Burton (for teaching pins with larger-radius heads within the bulkhead) and an alternative obviousness ground for claim 8 over Rogman and Burton.

4. Key Claim Construction Positions

• "biasing member" (claims 6, 7, 19-21): Petitioner argued this term is governed by 35 U.S.C. §112(f) as a means-plus-function term. The petition asserted the term lacks a sufficiently definite structural meaning to a POSITA and is defined only by its function ("biasing" or "exerting a force"). The only corresponding structure disclosed in the specification for performing this function is "a spring."

5. Key Technical Contentions (Beyond Claim Construction)

• Enablement of "not possible to interrupt the electrical signal" (claims 2, 15): Petitioner contended these claims are not enabled because the specification fails to teach how one of ordinary skill could create a multi-part mechanical assembly whose electrical signal is truly uninterruptable. The petition argued that plausible events like manufacturing defects, shock from detonation, corrosion, or intentional disassembly could all interrupt the signal, and the patent provides no novel structure or method to prevent this.
• Indefiniteness of "detonator is not physically joined" (claim 18): Petitioner argued claim 18 is indefinite because it requires the detonator to not be physically joined to the "electrical connection assembly," while the preamble of parent claim 14 defines the assembly as including the detonator. This creates a logical paradox where the detonator cannot be joined to itself.

6. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §325(d), contending the Examiner erred by not substantively considering the key prior art. Borgfeld was never presented to the office, while Rogman and Deere were only listed on voluminous Information Disclosure Statements without substantive analysis. Petitioner asserted its use of these references and its arguments are new and material.
• Petitioner also argued against discretionary denial under Fintiv, stating that the parallel district court cases were in their infancy, with discovery stayed and no trial dates set. Critically, Petitioner stipulated that it would not pursue in district court the same invalidity grounds based on the same prior art combinations presented in the petition.

7. Relief Requested

• Petitioner requests institution of a Post-Grant Review and cancellation of claims 1-21 of the ’697 patent as unpatentable under 35 U.S.C. §§ 102 and 103, and additionally requests finding claims 2, 15, and 18 invalid under 35 U.S.C. §112.