PTAB
PGR2025-00061
Scientific Drilling Intl Inc v. Gunnar LLLP
Key Events
Petition
Table of Contents
petition
1. Case Identification
- Case #: PGR2025-00061
- Patent #: 12,110,780
- Filed: August 28, 2023
- Petitioner(s): Scientific Drilling International, Inc.
- 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 patent describes systems and methods for magnetic ranging used to guide drilling operations. The technology involves using a power supply connected via a wire running through a drill pipe to create a magnetic field, which is then detected by a sensor to determine the position of the drill bit relative to a target well.
3. Grounds for Unpatentability
Ground 1: Lack of Written Description and Indefiniteness under 35 U.S.C. § 112
- Core Argument for this Ground: Petitioner argued that claims 1-17 and 19-22 are unpatentable under 35 U.S.C. § 112 for two primary reasons related to the claim term "rigid connection."
- Written Description: The term "rigid connection" appears in the challenged claims but is absent from the specification as originally filed. The specification only describes connections as "temporarily" or "permanently" made. Petitioner asserted that introducing "rigid connection" during prosecution constitutes new matter because the original disclosure provides no structural details or description that would lead a person of ordinary skill in the art (POSITA) to understand that the inventor possessed an invention with this specific feature.
- Indefiniteness: Petitioner contended the term "rigid connection" is indefinite because the patent and prosecution history fail to provide a clear and objective boundary for its meaning. During prosecution of a parent application, the Patent Owner distinguished "rigid connection" from a "spring loaded contacting mechanism." However, claim 9 of the ’780 patent recites a connection that "is a rigid connection and is not spring loaded," which Petitioner argued confusingly implies a rigid connection could otherwise be spring loaded. This conflicting information, combined with the lack of a definition in the specification, allegedly fails to inform a POSITA about the scope of the claims with reasonable certainty.
Ground 2: 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) and Fredriksen (Patent 11,236,551).
- Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Donderici ’534 teaches the core elements of the claimed magnetic ranging apparatus. This includes a wellbore ranging tool with a power supply (transmitter), a drill string (conveyance mechanism), and a sensor for detecting electromagnetic signals. Donderici ’534 discloses that its transmitter can be positioned at the surface with "conductive wiring" extending down the drill string. However, Donderici ’534 does not explicitly describe the use of modern wired drill pipe. Fredriksen (’551 patent) remedies this by disclosing "wired pipe" technology, where a conductive wire is integrated into the drill pipe sections to provide a robust and continuous electrical connection that is maintained during drilling—meeting the limitation of a "rigid connection."
- Motivation to Combine: A POSITA would combine the wired pipe of Fredriksen with the magnetic ranging system of Donderici ’534 to achieve a more reliable and efficient method for transmitting both power and communication signals to downhole tools. This combination addresses the known need for robust data and power transmission in complex drilling environments.
- Expectation of Success: A POSITA would have a reasonable expectation of success in integrating Fredriksen's established wired pipe technology into the system of Donderici ’534, as it represented a known and advantageous solution for downhole communication.
Ground 3: 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) and Fredriksen (Patent 11,236,551).
- Core Argument for this Ground:
- Prior Art Mapping: This ground presented an alternative combination where Donderici ’301 served as the primary reference. Petitioner argued Donderici ’301 discloses a galvanic tool for magnetic ranging with a surface-based system control unit (power supply) that is "communicatively coupled" to downhole components, including electrodes on the drill string and receivers (sensors). The coupling could be wired. As in the previous ground, Fredriksen was cited to supply the teaching of using integrated "wired pipe" to create the claimed "rigid connection" for power and data transmission.
- Motivation to Combine: The motivation was identical to the previous ground: a POSITA would be motivated to use Fredriksen's reliable wired pipe technology to implement the "wired... communication connection" suggested in Donderici ’301. This would improve the robustness of the power delivery and signal integrity for the ranging system.
- Expectation of Success: The integration was presented as a straightforward application of known technologies to improve an existing system, leading to a high expectation of success.
- Additional Grounds: Petitioner asserted additional obviousness challenges (Grounds 4 and 6) based on the combinations above in further view of Schulz (Patent 9,771,791). Schulz was cited for its disclosure of various cable types, including "ribbon cable," to teach the "multiribbon wire" limitation of claims 7 and 16.
4. Key Claim Construction Positions
- "rigid connection": This term was central to all grounds. Petitioner argued that because the term lacks written description and is indefinite under §112, it should render the claims unpatentable. Alternatively, for the purposes of the §103 analysis, Petitioner contended that the term should be understood to mean a non-spring-loaded, continuous electrical connection maintained during drilling, as would be provided by the "wired pipe" taught in the Fredriksen reference. This construction was based on distinguishing statements made by the Patent Owner during prosecution of a related application.
5. Relief Requested
- Petitioner requests institution of Post-Grant Review and cancellation of claims 1-22 of the ’780 patent as unpatentable.
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