Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 11
`Entered: 31 October 2013
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`OMRON OILFIELD & MARINE, INC.
`Petitioner
`
`v.
`
`MD/TOTCO, A DIVISION OF VARCO, L.P.
`Patent Owner
`____________
`
`Case IPR2013-00265
`Patent 5,474,142
`____________
`
`
`
`Before THOMAS L. GIANNETTI, BRYAN F. MOORE, and
`MICHAEL J. FITZPATRICK, Administrative Patent Judges.
`
`
`MOORE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`Universal Electronics Exhibit 2047, Page 1
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`

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`Case IPR2013-00265
`Patent 5,474,142
`
`
`I.
`
`INTRODUCTION
`
`A.
`
`Background
`
`Omron Oilfield & Marine, Inc. (“Petitioner”) requests an inter partes review
`
`of claims 1, 11, and 14 of U.S. Patent 5,474,142 (“the ’142 Patent”), pursuant to
`
`35 U.S.C. §§ 311 et seq. Paper 1 (Pet.). The patent owner, MD/Totco, a division
`
`of Varco, L.P. (“Patent Owner”), timely filed a preliminary response. Paper 10
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`(“Prelim. Resp.”).
`
`The standard for instituting an inter partes review is set forth in 35 U.S.C.
`
`§ 314(a), which provides as follows:
`
`THRESHOLD – The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of
`the claims challenged in the petition.
`
`Petitioner contends that the challenged claims are unpatentable under
`
`35 U.S.C. §§ 102 and/or 103 on the following specific grounds1:
`
`Reference(s)
`
`Basis Claims challenged
`
`Lindstad U.S. Patent 3,613,805
`(Ex. 1013)
`Warren U.S. Patent 4,854,397
`(Ex. 1018)
`Miller U.S. Patent 3,463,252
`(Ex. 1022)
`Lindstad and Crake U.S. Patent
`2,455,917 (Ex. 1015)
`Lindstad and Brooks U.S.
`Patent 3,324,717 (Ex. 1017)
`
`§ 102
`
`1, 11, and 14
`
`§ 102
`
`1, 11, and 14
`
`§ 102
`
`1 and 11
`
`§ 103
`
`1, 11, and 14
`
`§ 103
`
`1, 11, and 14
`
`
`1 Petitioner supports its challenge with a declaration by Mitchell Pinckard
`(Ex. 1012) (“Pinckard Decl.”).
`
`
`
`2
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`

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`Case IPR2013-00265
`Patent 5,474,142
`
`
`
`Reference(s)
`
`Basis Claims challenged
`
`Warren and Brooks
`
`§ 103
`
`1, 11, and 14
`
`Miller and Crake
`
`Le Compte U.S. Patent
`1,891,329 (Ex. 1023) and Crake
`
`§ 103
`
`14
`
`§ 103
`
`14
`
`
`
`For the reasons given below, we deny the petition and decline to institute an
`
`inter partes review of the ’142 Patent.
`
`B. Related Proceedings
`
`The ’142 Patent has been asserted in the following actions: National Oilwell
`
`Varco, LP v. Omron Oilfield & Marine, Inc. (W.D. Tex. Case No. 12-cv-00773)
`
`(filed 8/23/12, still pending); National Oilwell Varco, LP v. Pason Sys. USA,
`
`Corporation (W.D. Tex. Case No. 12-cv-01113) (filed 12/7/12, still pending);
`
`National Oilwell Varco, LP v. Pason Sys. USA Corp. (D. Colo. Case No. 03-cv-
`
`02579; Fed. Cir. Case Nos. 2012-1551, 2012-1587) (appeal pending) (“the
`
`Colorado litigation”); Bowden v. Tech Power Controls (S.D. Tex. Case No. 00-cv-
`
`00271) (dismissed); Bowden v. Martin-Decker Totco (W.D. Tex. Case No. 99-cv-
`
`00607) (dismissed); Varco LP v. IDM Equip. Co. Inc. (S.D. Tex. Case No. 05-cv-
`
`00767) (dismissed); National Oilwell Varco, LP v. Auto-Dril, Inc. (E.D. Tex. Case
`
`No. 09-cv-00085) (dismissed); and Bowden v. Dick’s Oilfield (W.D. Tex Case No.
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`5:98-cv-01174-FB). Pet. 1-2; Prelim. Resp. 1-2.
`
`C.
`
`’142 Patent
`
`The ’142 Patent (Ex. 1001) is titled “Automatic Drilling System,” and
`
`relates generally to an automatic drilling system that regulates the release of the
`
`drill string of a drilling rig in response to, among other things, drilling fluid
`
`
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`3
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`Case IPR2013-00265
`Patent 5,474,142
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`pressure and bit weight. ’142 Patent Abstract. Figure 1 of the ’142 Patent depicts
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`the basic components of a drilling rig.
`
`Figure 1 is reproduced below:
`
`
`
`Figure 1 depicts a drilling rig with an automatic driller. Ex. 1001, col. 3, ll. 53-64.
`
`Drill string 21 extends into the borehole 86 utilizing drawworks 22. Id., col. 3,
`
`ll. 55-56. Brake 32 controls the release of cable 28 to adjust the vertical position of
`
`drill string 21. Id., col. 3, ll. 61-63. Drill bit 23 is located at the end of drill string
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`21. Id., col. 3, ll. 65-66. Rotary table 24 drives drill string 21 to rotate drill bit 23
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`to achieve the drilling of the borehole. Id. Drilling fluid (i.e., mud) is pumped into
`
`
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`4
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`Case IPR2013-00265
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`drill string 21 and “drives mud motor 85, provides pressure within drill bit 23 to
`
`prevent blowouts, and carries drilled formation materials from borehole 86.” Id.,
`
`col. 4, ll. 10-25. The object of the invention is to operate not only through bit
`
`weight measurements, “but also operate[] in response to other measurements so
`
`that directional or horizontal boreholes may be drilled,” as opposed to strictly
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`vertical boreholes. Id., col. 1, ll. 51-54.
`
`Claims 1, 11, and 14, at issue in this petition, are reproduced below.
`
`1. An automatic drilling system for automatically regulating the
`release of the drill string of a drilling rig having a drill bit in
`association therewith during the drilling of a borehole, comprising:
`
` a
`
` drilling fluid pressure sensor; and
`
` a
`
` drilling fluid pressure regulator coupled to said drilling fluid
`pressure sensor, said drilling fluid pressure regulator measuring
`changes in drilling fluid pressure and outputting a signal representing
`those changes;
`
` a
`
` relay coupled to said drilling fluid pressure regulator, said
`relay responsive to the output signal of said drilling fluid pressure
`regulator to supply a drill string control signal at an output thereof;
`and
`
` a
`
` drill string controller coupled to said relay wherein a decrease
`in drilling fluid pressure results in said relay supplying a drill string
`control signal that operates said drill string controller to effect an
`increase in the rate of release of said drill string with direct effect at
`the drill bit associated with the drill string and an increase in drilling
`fluid pressure results in said relay supplying a drill string control
`signal that operates said drill string controller to effect a decrease in
`the rate of release of said drill string with direct effect at the drill bit
`associated with the drill string.
`
`
`
`5
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`Patent 5,474,142
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`11. A method for automatically regulating the release of the
`drill string of a drilling rig drill having a drill bit in association
`therewith, comprising the steps of:
`
`measuring drilling fluid pressure;
`
`producing a signal in response to changes in drilling fluid
`pressure, said signal representing the changes in drilling fluid
`pressure;
`
`rel[a]ying said signal to a drill string controller; and
`
`controlling said drill string controller to increase the rate of
`release of said drill string with direct effect at the drill bit associated
`with the drill string when said signal represents a decrease in drilling
`fluid pressure and to decrease the rate of release of said drill string
`with direct effect at the drill bit associated with the drill string when
`said signal represents an increase in drilling fluid pressure.
`
`14. A method for automatically regulating the release of the
`drill string of a drilling rig drill, comprising the steps of:
`
`measuring drilling fluid pressure and bit weight;
`
`producing a first signal in response to changes in drilling fluid
`pressure, said first signal representing the changes in drilling fluid
`pressure;
`
`producing a second signal in response to changes in bit weight,
`said second signal representing the changes in bit weight;
`
`selecting any one of said first signal, said second signal, and
`both said first and said second signals to control the release of said
`drill string; and
`
`relaying said selected signal or signals to a drill string controller
`which regulates the release said drill string in response to said selected
`signal or signals.
`
`
`6
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`Case IPR2013-00265
`Patent 5,474,142
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`E.
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`Claim Construction
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`Although neither party mentions this fact, the ’142 Patent has expired. The
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`Board’s review of the claims of an expired patent is similar to that of a district
`
`court’s review. In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). In Phillips v.
`
`AWH Corp., the court set forth the principle that words of a claim “are generally
`
`given their ordinary and customary meaning” as understood by a person of
`
`ordinary skill in the art in question at the time of the invention, construing to
`
`preserve validity in case of ambiguity. 415 F.3d 1303, 1312, 1327 (Fed. Cir.
`
`2005). Here, this principle is applicable because the expired claims are not subject
`
`to amendment. See In re Yamamoto, 740 F.2d 1569, 1571-72 (Fed. Cir. 1984).
`
`1. “release of the drill string”
`
`Petitioner asserts that “release of the drill string” should be construed as
`
`“downward movement of the drill string into the borehole.” Pet. 12 (brackets in
`
`original and internal quotation marks omitted). Petitioner argues that the patent
`
`does not define this term. Id. The specification discloses releasing the drill string
`
`by releasing a cable (’142 Patent, col. 3, ll. 61-63), resulting in the drill string
`
`being pulled down by gravity. Petitioner, without further explanation, asserts,
`
`however, that the “specification does not indicate an exclusion of other methods of
`
`downward movement [of the drill string], such as use of motor to apply a
`
`downward force.” Pet. 12. Rather than stating what the specification does not
`
`exclude – because the list of things not expressly excluded by the Specification
`
`actually is infinite in length, in this context, to support its particular interpretation,
`
`the Petitioner would have needed to explain how it is that the ordinary meaning of
`
`“release” comes to include the downward force applied by a motor, which
`
`downward force is nowhere mentioned in the Specification.
`
`
`
`7
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`According to Patent Owner, “‘[r]elease’ means ‘slacking’ of or ‘letting go’
`
`of the drill string.” Prelim. Resp. 9. Consistent with the Patent Owner’s
`
`construction, we find that the ordinary meaning of release in the context of the
`
`invention is to “set free from restraint.”2 This meaning is also consistent with the
`
`specification, which discloses a mechanism whereby cable 28 is “released” from
`
`drum 26 and controlled by brake 32 to adjust the vertical position of drill string 21.
`
`’142 Patent, col. 3, ll. 61-63. Thus, for purposes of this decision, we interpret the
`
`release of the drill string limitation to require setting free of the drill string rather
`
`than a driving down of the drill string.
`
`2. “bit weight”
`
`Petitioner asserts that “bit weight” should be construed as “the amount of
`
`weight or force that the drill string applies to the drill bit.” Pet. 11 (internal
`
`quotation marks omitted). Petitioner relies on “A Dictionary for the Oil and Gas
`
`Industry” published by the University of Texas at Austin Petroleum Extension
`
`Service (“PETEX”) in 2005 (“2005 PETEX Dictionary”) (Ex. 1010), which recites
`
`a similar definition of bit weight. Id. This definition is consistent with the
`
`specification. The specification states: “a Martin-Decker anchor weight
`
`indicator implements [a] bit weight sensor 35 to provide the hydraulic signal to
`
`automatic driller 33 representing the weight drill string 21 applies to drill bit 23.”
`
`’142 Patent, col. 6, ll. 26-30 (emphasis added).
`
`Patent Owner asserts that “weight” implies force due only to gravity.
`
`Prelim. Resp. 7-8. However, as noted above, the specification uses a weight sensor
`
`to measure the weight of the drill string. Because the drill string is not weighed
`
`independent of the drill rig, the weight the “drill string applies,” as measured by
`
`
`2 Random House Webster’s College Dictionary (2nd ed. 1999); Ex. 2006,
`Websters.com definitions of “release.”
`
`
`
`8
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`the sensor, will be the entire downward force exerted by the drill string including
`
`any external downward force. Thus, for purposes of this decision, we interpret bit
`
`weight as “the amount of weight or force that the drill string applies to the drill
`
`bit.”
`
`3. “drill string controller”
`
`Petitioner does not construe this term. Patent Owner construes this term to
`
`mean “a device that changes the rate of release of the drill string in response to
`
`signals from the relay(s).” Prelim. Resp. 8. This construction is consistent with
`
`the claim language, and, therefore, we adopt this construction.
`
`The remaining terms for which Petitioner and Patent Owner request
`
`construction are not necessary to our decision on this petition, and, thus, we
`
`decline to discuss those terms.
`
`II. ANALYSIS
`
`A. Overview
`
`For the reasons described below, we decline to institute an inter partes
`
`review of claims 1, 11, and 14 of the ʼ142 Patent on any of the asserted grounds.
`
`B.
`
`Lindstad
`
`
`
`1.
`
`Anticipation
`
`Petitioner asserts that claims 1, 11, and 14 are anticipated by Lindstad (Ex.
`
`1013). Lindstad discloses a blasthole drilling system that automatically regulates
`
`the downward drive of the drill string in response to changes in drilling fluid
`
`pressure. Col 2, ll. 6-35; col. 2, ll. 55-65; col 4, l. 5 – col. 5, ll. 8; claims 4-5.
`
`Lindstad discloses that the drill string is controlled by a downfeed control that was
`
`disclosed in a then-co-pending application filed by the same assignee (with a
`
`
`
`9
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`common inventor), Application Ser. No. 04/854,871, which issued as U.S. Patent
`
`No. 3,581,830 to Stoner (“Stoner”) (Ex. 1014). Lindstad, col. 3, ll. 45-53.
`
`Patent Owner argues, among other things, that Lindstad fails to disclose
`
`releasing the drill string as required by the claims. Prelim. Resp. 18-19. We agree
`
`with Patent Owner.
`
`Claim 1 requires automatically regulating the release of the drill string.
`
`Petitioner argues that Lindstad meets this limitation by controlling the downward
`
`movement of the drill string. Pet. 17. Patent Owner asserts that Lindstad’s use of
`
`a downfeed motor is not a release of the drill string. Prelim. Resp. 22-23. As
`
`noted above, we construe releasing the drill string to require “setting free” of the
`
`drill string, rather than the use of a motor to drive the drill string down. Therefore,
`
`Lindstad does not release the drill string as required by claim 1.
`
`For the forgoing reasons, Petitioner has not demonstrated a reasonable
`
`likelihood that it will prevail in establishing that claim 1 is anticipated by Lindstad.
`
`Claims 11 and 14 both contain recitations of releasing the drill string. Thus, for the
`
`same reasons, Petitioner has not demonstrated a reasonable likelihood that it will
`
`prevail in establishing that claims 11 and 14 are anticipated by Lindstad.
`
`2.
`
`Obviousness over Lindstad and Crake
`
`Petitioner asserts that claims 1, 11, and 14 would have been obvious over the
`
`combination of Lindstad and Crake (Ex. 1015). Pet. 23-31. Crake discloses a
`
`drilling system that automatically regulates the release of the drill string in
`
`response to changes in two drilling parameters: bit weight and the rate of
`
`penetration of the drill bit. Ex. 1015, col. 1, ll. 1-6.
`
`Patent Owner contends that Petitioner’s alleged grounds of unpatentability
`
`based on obviousness are cumulative of other references considered during
`
`reexamination of the ’142 Patent. Prelim. Resp. 42-46. Specifically, Patent Owner
`
`
`
`10
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`argues that Crake is cumulative of, among others, the Bowden ’359 reference
`
`(US Patent 3,265,359) (Ex. 2010). Id. at 52-53. Bowden ’359, like Crake,
`
`discloses an automatic driller that controls the rate at which the drill string is
`
`released in response to changes in the weight on the drill bit. Bowden ’359, col. 3,
`
`ll. 44-55.
`
`The patentability of the then-existing claims of the ’142 Patent was
`
`confirmed in a first reexamination. Ex. 2030 (Ex Parte Reexamination Certificate
`
`No. US 5,474,142 C1). Claims 1 and 11 were amended and the patentability of
`
`claims 1, 11, and 14 was confirmed during a second reexamination of the ’142
`
`Patent. Ex. 1007 (Ex Parte Reexamination Certificate No. US 5,474,142 C2). In a
`
`Reexamination Office Action, from the second reexamination, dated December 14,
`
`2009 (Ex. 1020), the Examiner found that “[c]laims 1, 5 and 11-15 are rejected
`
`under 35 U.S.C. 103(a) as being unpatentable over Bowden ‘359 (US 3,265,359) in
`
`view of Dillon et al. (US 2,005,889) and Hobhouse (US 3,550,697).”) Ex. 1020, p.
`
`6 (Office Action in 2nd Reexamination (Control No. 90/010,615). The Examiner
`
`further found that
`
`[o]ne of ordinary skill in the art would know that excess drilling fluid
`pressure is undesirable and, therefore, would apply the fluid pressure
`sensor taught by Dillon and Hobhouse to the system of Bowden ‘359
`in order to bring about a decrease in the rate of release of the drill
`string in response to an undesirable build up in drilling fluid pressure.
`
`Id. at 8.
`
`Based on the facts stated above, Patent Owner argues that the petition
`
`presents identical prior art disclosures and the same or substantially the same
`
`arguments as those that were presented previously to the Office. Prelim. Resp. 44.
`
`Even if true, that does not mean the petition must be denied. 35 U.S.C. § 325(d).
`
`
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`As noted above, Lindstad does not release the drill string as required by the
`
`claims. However, Crake releases that drill string in the same manner as the
`
`’142 Patent. Crake discloses the use of a weight controller 31 similar to the
`
`regulators of the ’142 Patent. Ex. 1015, Figs. 1-3; col. 3, ll. 22-75. The weight
`
`controller 31 measures bit weight using a weight-indicating device 36. Id., col. 3,
`
`ll. 36-51. If the bit weight gets too high, the weight controller causes fluid motor
`
`28 to apply brake 19 to slow down the release of the drill string. Id., col. 5, l. 62 –
`
`col. 6, l. 9. If the bit weight gets too low, the reverse happens. Id., col. 6, l. 10-18.
`
`Thus, Crake releases the drill string as required by the challenged claims. We are
`
`persuaded that the combination of Lindstad and Crake teaches all elements of
`
`claims 1, 11, and 14.
`
`We agree with Petitioner that a person of ordinary skill in the art would
`
`know that excess drilling fluid pressure is undesirable (Ex. 1012 ¶ 38) and,
`
`therefore, would apply the fluid pressure sensor taught by Lindstad to the system
`
`of Crake in order to bring about a decrease in the rate of release of the drill spring
`
`in response to an undesirable build up in drilling fluid pressure. Pet. 25. Thus, the
`
`rationale offered by Petitioner for combining Lindstad and Crake, taken by
`
`themselves, without consideration to other parts of the obviousness analysis,
`
`suffice as articulated reasons with rational underpinnings to justify the legal
`
`conclusion of obviousness.
`
`3.
`
`Secondary Considerations of Non-Obviousness
`
`As noted above, the Examiner found a prima facie case of obviousness
`
`existed during the second Reexamination. Ex. 1020, p. 6. The Examiner
`
`determined that secondary considerations of obviousness overcame the prima facie
`
`case. Id. We have reviewed the examiner’s findings and the supporting evidence,
`
`
`
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`and we agree that the patent owner’s evidence of secondary considerations is
`
`persuasive.
`
`Secondary considerations, also known as objective evidence, may weigh in
`
`favor of or against a finding of obviousness. Graham v. John Deere Co., 383 U.S.
`
`1, 17 (1966); Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 1376-79 (Fed.
`
`Cir. 2000). “[E]vidence of secondary considerations may often be the most
`
`probative and cogent evidence in the record. It may often establish that an
`
`invention appearing to have been obvious in light of the prior art was not.”
`
`Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699
`
`F.3d 1340, 1349 (Fed. Cir. 2012) (quoting Stratoflex, Inc. v. Aeroquip Corp., 713
`
`F.2d 1530, 1538 (Fed. Cir. 1983)) (internal quotation marks omitted).
`
`The secondary considerations before us include commercial success, long-
`
`felt but unsolved needs, failure of others, and unexpected results. Graham, 383
`
`U.S. at 17; see also CFMT, Inc. v. Yieldup Int'l Corp., 349 F.3d 1333, 1342 (Fed.
`
`Cir. 2003); Ruiz v. A.B. Chance Co., 234 F.3d 654, 662-63 (Fed. Cir. 2000).
`
`i. Commercial Success
`
`There is a presumption that the patented invention is commercially
`
`successful “when a patentee can demonstrate commercial success, usually shown
`
`by significant sales in a relevant market, and that the successful product is the
`
`invention disclosed and claimed in the patent.” Ecolochem, Inc., 227 F.3d at 1377
`
`(quoting J.T. Eaton & Co. v. Atlantic Paste & Glue Co., 106 F.3d 1563, 1571 (Fed.
`
`Cir. 1997)).
`
`In order to establish commercial success, there must be some “nexus”
`
`between the “merits of the claimed invention” and the “commercial success of
`
`[the] product.” Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1027
`
`(Fed. Cir. 1985), overruled on other grounds by Midwest Indus., Inc. v. Karavan
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`Trailers, Inc., 175 F.3d 1356 (Fed. Cir. 1999) (en banc); see also J.T. Eaton & Co.,
`
`106 F.3d at 1571. A prima facie case of nexus is established when the patentee
`
`shows both that there is commercial success, and that the product that is
`
`commercially successful is the invention disclosed and claimed in the patent. See
`
`In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). Once the patentee
`
`demonstrates a prima facie nexus, the burden of coming forward with evidence in
`
`rebuttal shifts to the challenger. See Demaco Corp. v. F. Von Langsdorff Licensing
`
`Ltd., 851 F.2d 1387, 1393 (Fed. Cir. 1988).
`a. Nexus
`
`Advertising the benefits of the claimed invention links the invention to
`
`commercial success. Cf. Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d
`
`1573, 1579 (Fed. Cir. 1997) (“The prominence of the patented technology
`
`in . . . advertising creates an inference that links the . . . invention to this success.”);
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`see also Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1369
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`(Fed. Cir. 2012). Patent Owner presents a brochure that touts the inventive
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`features of automatic control and using weight on bit along with drilling pressure.
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`Ex. 2020, 109.
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`Testimony that a product was successful due to the patented features
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`supports a finding of nexus. See Power Integrations, Inc. v. Fairchild
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`Semiconductor Int’l, Inc., 711 F.3d 1348, 1368 (Fed. Cir. 2013). Patent Owner
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`also submitted trial testimony from the Colorado litigation of its expert, Mr.
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`Prejean,. The testimony states “we had our field guys go out and tell the customer
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`try it and we’ll demonstrate it for you; if you like it you keep it. And they never
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`would rig it down. We had a 99 percent success rate.” Ex. 2020, 57. The
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`testimony also states “the features of this invention, the ability to use pump
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`pressure was critical [to driving demand for the product].” Id. Based on the record
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`
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`cited above, we determine that Patent Owner has presented sufficient evidence to
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`establish a prima facie case of nexus.
`b. Success of the Invention
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`Patent Owner presents evidence that the Wildcat system was successful,
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`growing from a total of 110 units built over a five-year span from 1994 -1999 to
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`building over a hundred units per year starting in 2000. Ex. 2020, 61-62. Patent
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`Owner also presents evidence that in one type of system used for land rigs, which
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`has been adjudged to infringe the ’142 Patent (Ex. 2020, 22-23 (Response to
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`Reexamination Office Action)), grew from being installed on 35% of Canadian
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`and 6% of U.S. land rigs operating with a Pason EDR system in 2004 to being
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`installed on 55% of Canadian and 50% of U.S. land rigs operating with a Pason
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`EDR system in 2005. Ex. 2020, 65-67; see also Alcon Research, Ltd. v. Apotex
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`Inc, 687 F.3d 1362, 1371 (Fed. Cir. 2012) (holding that Alcon’s drug Patanol®
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`was a commercial success “achieving nearly 70% market share within two years of
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`its launch, accounting for nearly $2 billion in sales within ten years”).
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`Petitioner does not rebut any of this evidence. This lack of a rebuttal serves
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`to bolster the case for commercial success. Crocs, Inc. v. Int’l Trade Comm’n, 598
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`F.3d 1294, 1310-11 (Fed. Cir. 2010). Based on the record cited above, we
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`determine that Patent Owner has presented sufficient evidence to establish that the
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`invention of the ’142 Patent was a significant commercial success.
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`
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`iii. Long-Felt Need, Prior Failure, and Unexpected Results
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`Patent Owner provides no evidence to explain how long a need for the
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`invention was felt, or when such a need first arose. See Tex. Instruments v. U.S.
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`Int'l Trade Comm'n, 988 F.2d 1165, 1178 (Fed. Cir. 1993) (“[L]ong-felt need is
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`analyzed as of the date of an articulated identified problem and evidence of efforts
`
`to solve that problem.”). Patent Owner does not claim that other inventors
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`
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`attempted, but failed, to solve the problems addressed by the ’142 Patent.
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`Additionally, Patent Owner does not claim that the invention of ’142 Patent was
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`surprising or unexpected. Thus, there is insufficient evidence that the invention of
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`the ’142 Patent satisfied long-felt but unsolved needs, had unexpected results, or
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`that others failed to solve the problem of the invention.
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`vi. Summary
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`Evidence of secondary considerations, taken as a whole, supports our
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`decision that the Petitioner has not demonstrated a reasonable likelihood that the
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`invention of claims 1, 11, and 14 of the ’142 Patent is obvious.
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`Petitioner does not challenge the merits of Patent Owner’s secondary
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`consideration evidence. Rather, Petitioner argues that “[t]he Patent Owner’s
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`evidence of secondary considerations will be unable to overcome the strong
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`showing of obviousness set forth in this Petition. Sibia Neurosciences v. Cadus
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`Pharmaceutical, 225 F.3d 1349, 1358 (Fed. Cir. 2000) (evidence of secondary
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`considerations does not overcome a strong case of obviousness).” Pet. 10. We
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`disagree. We find that the ’142 Patent had significant commercial success, which,
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`here, overcomes the prima facie case of obviousness.
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`For these reasons, we determine that Petitioner has not demonstrated a
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`reasonable likelihood that it will prevail in challenging claims 1, 11, and 14 as
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`unpatentable over Lindstad and Crake.
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`4.
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`Obviousness over Lindstad and Brooks
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`Petitioner asserts that claims 1, 11, and 14 would have been obvious over the
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`combination of Lindstad and Brooks. Pet. 31-38. Brooks (Ex. 1017) discloses a
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`drilling rig with a drilling information gathering system for detecting various
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`drilling parameters, including weight on bit and drilling fluid pressure. Ex. 1017,
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`col. 3, ll. 23-41. In addition, Brooks discloses that the release of the drill string can
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`
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`be regulated automatically in response to changes in bit weight. Id. at col. 9, l. 68 -
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`col. 10, l. 6.
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`Petitioner’s ground of unpatenability based on the combination of Lindstad
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`and Brooks is redundant of the previously-discussed ground of unpatenability
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`based on the combination of Lindstad and Crake. Accordingly, for the same
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`reasons set forth above with respect to Lindstad and Crake, we also deny the
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`petition as to this ground.
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`C. Warren
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`
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`1.
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`Anticipation
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`Petitioner asserts that claims 1, 11, and 14 are anticipated by Warren (Ex.
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`1018). Pet. 38-46. Warren discloses a system for directional drilling. See
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`generally Ex.1018. In conjunction with that system, Warren discloses a system
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`that adjusts automatically the draw works 17 by a preselected amount or increment
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`in response to changes in various drilling parameters, including fluid pressure and
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`weight on bit. Id. at col. 3, ll. 1-16; col. 4, ll. 13-38.
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`Patent Owner argues, among other things, that Warren fails to disclose a
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`drill string controller that effects an increase in the rate of release of the drill string.
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`Prelim. Resp. 27-29. We agree with Patent Owner.
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`Claim 1 requires regulating automatically the release of the drill string.
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`Petitioner argues that Warren discloses that the controls of the draw works are
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`operatively connected to the computer. Pet. 41. However, this operable
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`connection is represented only as an arrow between the computer and the draw
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`works. Ex. 1018, col. 4, ll. 3-5; Fig. 1. Petitioner asserts that the computer causes
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`the draw works to be regulated in response to changes in the parameters measured
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`by the measurement-while-drilling (MWD) tool. Pet. 42-43. Petitioner, however,
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`
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`does not explain how the generic computer disclosed in Warren causes the draw
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`works to be regulated.
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`Petitioner further asserts that Warren necessarily teaches that an increase in
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`the fluid pressure above the preselected limit would cause the draw works to
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`decrease the rate of release of the drill string and vice versa. Pet. 17. Petitioner,
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`however, does not explain what teaching in Warren would lead one of ordinary
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`skill in the art to decrease the rate of release of the drill string in response to fluid
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`pressure. In particular, Petitioner does not explain why it would be inherent, based
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`on Warren’s teaching of measuring fluid pressure and “cause[ing] the draw works .
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`. . to be adjusted by a preselected amount or increment” (Ex. 1018, col. 4, ll. 33-
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`35), to decrease the rate of release of the drill string.
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`Patent Owner asserts that Warren does not disclose anything for controlling
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`the draw works. Prelim. Resp. 27-29. We agree. Warren lacks a description of
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`how a generic computer “controls” a generic draw wo