SCIENTIFIC DRILLING INTERNATIONAL, INC.

Petition

Petition summary

Prosecution History analysis

Examiner Search analysis

Invalidity Framework analysis

## 1. Case Identification
- Case #: Not Yet Assigned
- Patent #: [12,110,780](https://ai-lab.exparte.com/patent/12110780)
- Filed: August 28, 2023
- Petitioner(s): [Scientific Drilling International, Inc.](https://ai-lab.exparte.com/party/scientific-drilling-intl-inc) (SDI)
- Patent Owner(s): Gunnar LLLP
- Challenged Claims: 1-22

## 2. Patent Overview
- Title: Method and Apparatus for Magnetic Ranging While Drilling
- Brief Description: The [’780](https://ai-lab.exparte.com/patent/12110780) patent describes systems and methods for magnetic ranging to guide a drilling assembly in a wellbore. The invention involves using a power supply connected via a wire within a drill pipe to energize electrodes, creating a magnetic field that is detected by a sensor to determine the drill's position relative to a target.

## 3. Grounds for Unpatentability
#### Ground 1: Lack of Written Description under §112 - Claims 1-17 and 19-22
- **Core Argument:** Petitioner argued that the term “rigid connection,” which is a limitation in independent claims 1, 9, and 19 and their dependents, lacks written description support in the specification as originally filed. The specification only describes connections as being “temporarily” or “permanently” connected and does not provide any disclosure of a “rigid connection” or any structure that could be interpreted as such. Petitioner asserted that the term was improperly added during prosecution, constituting new matter prohibited under 35 U.S.C. §112. The schematic figures in the [’780](https://ai-lab.exparte.com/patent/12110780) patent fail to provide the necessary structural detail to support this claim limitation.

#### Ground 2: Obviousness over Donderici ’534 and Fredriksen - Claims 1-6, 8-15, and 17-22 are obvious over Donderici ’534 in view of Fredriksen.
- **Prior Art Relied Upon:** Donderici (Patent [10,429,534](https://ai-lab.exparte.com/case/ptab/PGR2025-00001/doc/1002)), [Fredriksen](https://ai-lab.exparte.com/case/ptab/PGR2025-00001/doc/1004) (Patent [11,236,551](https://ai-lab.exparte.com/case/ptab/PGR2025-00001/doc/1004)).
- **Core Argument for this Ground:**
    - **Prior Art Mapping:** Petitioner contended that [Donderici ’534](https://ai-lab.exparte.com/case/ptab/PGR2025-00001/doc/1002) taught all elements of the challenged claims except for the specific limitation of a wire inside the drill pipe having a “rigid connection.” [Donderici ’534](https://ai-lab.exparte.com/case/ptab/PGR2025-00001/doc/1002) discloses a magnetic ranging system with a power supply, a drill string (conveyance mechanism), and a sensor for detecting magnetic signals. To supply the missing element, Petitioner pointed to [Fredriksen](https://ai-lab.exparte.com/case/ptab/PGR2025-00001/doc/1004), which explicitly discloses “wired pipe” for use in drilling that provides a rigid, continuous electrical connection for transmitting power and signals.
    - **Motivation to Combine:** A person of ordinary skill in the art (POSITA) would have been motivated to combine the wired pipe of [Fredriksen](https://ai-lab.exparte.com/case/ptab/PGR2025-00001/doc/1004) with the magnetic ranging system of [Donderici ’534](https://ai-lab.exparte.com/case/ptab/PGR2025-00001/doc/1002). The motivation would be to achieve a well-known benefit: providing reliable power and data communication to downhole tools through the drill pipe itself, which is a known improvement over less robust connection methods.
    - **Expectation of Success:** A POSITA would have a reasonable expectation of success in making this combination, as implementing wired pipe technology into a downhole drilling assembly was a known and predictable engineering choice for improving system reliability.

#### Ground 3: Obviousness over Donderici ’301 and Fredriksen - Claims 1-6, 8-15, and 17-22 are obvious over Donderici ’301 in view of Fredriksen.
- **Prior Art Relied Upon:** Donderici (Patent [10,656,301](https://ai-lab.exparte.com/case/ptab/PGR2025-00001/doc/1003)), [Fredriksen](https://ai-lab.exparte.com/case/ptab/PGR2025-00001/doc/1004) (Patent [11,236,551](https://ai-lab.exparte.com/case/ptab/PGR2025-00001/doc/1004)).
- **Core Argument for this Ground:**
    - **Prior Art Mapping:** This ground presented an alternative obviousness combination using [Donderici ’301](https://ai-lab.exparte.com/case/ptab/PGR2025-00001/doc/1003) as the primary reference. Petitioner argued that [Donderici ’301](https://ai-lab.exparte.com/case/ptab/PGR2025-00001/doc/1003), which discloses a galvanic tool for magnetic ranging with electrodes and sensors in a drill string, taught the fundamental components of the claimed invention. As in the previous ground, [Fredriksen](https://ai-lab.exparte.com/case/ptab/PGR2025-00001/doc/1004) was cited to teach the missing “rigid connection” via its disclosure of wired drill pipe.
    - **Motivation to Combine:** The motivation to combine was identical to that asserted in Ground 2. A POSITA would integrate [Fredriksen](https://ai-lab.exparte.com/case/ptab/PGR2025-00001/doc/1004)’s wired pipe into the system of [Donderici ’301](https://ai-lab.exparte.com/case/ptab/PGR2025-00001/doc/1003) to improve the transmission of power and telemetry between the surface and the downhole ranging tool, a predictable and desirable modification.
    - **Expectation of Success:** Combining these known elements—a ranging tool and a wired pipe communication system—would have been straightforward for a POSITA with a high expectation of achieving a functional and reliable system.

- **Additional Grounds:** Petitioner asserted additional challenges, including that claims 1-17 and 19-22 are indefinite under §112 because the term "rigid connection" fails to inform a POSITA about the scope of the invention with reasonable certainty. Further obviousness grounds argued that claims 7 and 16 were obvious over combinations including [Schulz](https://ai-lab.exparte.com/case/ptab/PGR2025-00001/doc/1005) (Patent [9,771,791](https://ai-lab.exparte.com/case/ptab/PGR2025-00001/doc/1005)), which taught various wire types, including the claimed “multiribbon wire.”

## 4. Key Claim Construction Positions
- **“rigid connection”:** This term was central to all grounds of the petition. Petitioner argued that the term is indefinite and lacks written description. However, for the purposes of its obviousness grounds under §103, Petitioner contended that the term should be construed in a way that distinguishes it from a non-rigid, "spring loaded contacting mechanism" discussed during prosecution of a parent patent. Petitioner asserted that the “wired pipe” disclosed in the [Fredriksen](https://ai-lab.exparte.com/case/ptab/PGR2025-00001/doc/1004) reference is a clear example of what a POSITA would understand a “rigid connection” to be in this context, as it maintains its connection while the drill pipe is drilling. The contradictory positions—arguing for indefiniteness while simultaneously providing a construction for obviousness—were presented as alternative arguments.

## 7. Relief Requested
- Petitioner requests institution of Post-Grant Review (PGR) and cancellation of claims 1-22 of the [’780](https://ai-lab.exparte.com/patent/12110780) patent as unpatentable.

Magnetic ranging patent faces written description & obviousness challenges. Donderici & Fredriksen cited against all 22 claims over "rigid connection."

PGR2025-00061

SCIENTIFIC DRILLING INTERNATIONAL, INC.