`
`Trials @uspto. gov
`
`571-272-7822
`
`Paper 9
`Entered: April 13, 2023
`
`UNITED STATES PATENT AND TRADEMARKOFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DYNAENERGETICS EUROPE GMBH and
`DYNAENERGETICS US, INC.,
`Petitioner,
`
`Vv.
`
`QINETIQ LIMITED,
`Patent Owner.
`
`Case PGR2023-00003
`Patent 11,215,039 B2
`
`Before WILLIAM V. SAINDON, WILLIAMA. CAPP,and
`CARL M. DeFRANCO,Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge CAPP
`
`Opinion Dissenting filed by Administrative Patent Judge DOFRANCO
`
`CAPP, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Post-Grant Review
`37 C.F.R. § 42.208
`
`
`
`PGR2023-00003
`Patent 11,215,039 B2
`
`Dynaenergetics Europe GmBH and Dynaenergetics US, Inc. filed a
`
`Petition (Paper 1, “Pet.”) requesting post-grant review of claims 1-5 of U.S.
`
`Patent No. 11,215,039 B2 (Ex. 1001, the “’039 patent”). QinetiQ Limited
`
`(“QinetiQ”) has elected notto file a Preliminary Response.' We have
`
`jurisdiction under 35 U.S.C. § 6. We conclude that Petitioner has
`
`demonstrated that at least claim 1 of ’039 Patent is more likely than not
`
`unpatentable under 35 U.S.C. § 102. Accordingly, weinstitute post grant
`
`review as to claims 1-5. See 35 U.S.C. § 324(a)
`
`I. RELATED MATTERS
`
`Petitioner represents that are no related matters currently pending
`
`betweenthe parties. Pet. 1.
`
`II. BACKGROUND
`
`A. The '039 patent (Ex. 1001)
`
`The *039 patent, entitled “Shaped Charge And Method Of Modifying
`
`A Shaped Charge”issued as a continuation of non-provisional application
`
`No. 16/704,524 (now U.S. Pat. No. 11,002,118), which is a continuation of
`
`application No. 14/651,829 (now U.S. Pat. No. 10,533,401), which wasfiled
`
`on December13, 2013. Ex. 1001. The Specification of the *039 patent
`
`generally discloses a perforator used in fracking proceduresin the oil and
`
`gas industry. Ex. 1001, 2:19-44. Knownperforators comprise charge
`
`case 20, explosive composition 60, and liner 30.
`
`/d. Fig. 1. Claims 1-5
`
`relate to designing variations in the shape of the liner component.
`
`Id.
`
`' QinetiQ has filed a motion to dismissthe Petition. Paper6.
`Dynaenergetics opposes the motion. Paper 7. We dispose of the motion to
`dismiss in a separate order issued substantially contemporaneously herewith.
`
`2
`
`
`
`PGR2023-00003
`Patent 11,215,039 B2
`
`Figure 5 of ’039 Patent is reproduced below.
`
`270-230
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`
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`240
`
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`
`FIGURE 5 OF ’039 PATENT
`
`Figure 5 above depicts side-by-side respective upper and lower
`
`perspective views of a shaped chargeliner that adopts the shape of a
`
`pyramid surrounded circumferentially by a circularlip.
`
`B. The Challenged Claims
`
`Petitioner challenges claims 1-5. Independent claim | is
`
`representative of the claimed subject matter and is reproduced below:
`
`1. A method of manufacturing an enhanced shaped charge
`liner design for use in an oil/gas well perforator that is usable to
`form a desired hole shape in a rock formation, the method
`comprising
`comparing the desired hole shapeto a library of known
`liner designs, the library including data relating to a hole shape
`formed by each of the knownliner designs within the library;
`selecting a liner design from the knownliner designsthat
`producesa hole shape optimised to the desired hole shape;
`varying at least one parameter of the selected liner design to
`form a modified liner design;
`
`
`
`PGR2023-00003
`Patent 11,215,039 B2
`
`modelling the hole shape that the modified liner design
`produces;
`repeating the varying and modelling steps until the hole
`shape of the modified liner design converges towards the
`desired hole shapeto thereby create a final liner design; and
`forming the enhanced shaped charge liner in accordance
`with the final liner design.
`
`C. The Asserted Grounds of Unpatentability
`
`Petitioner asserts 12 grounds of unpatentability, which groundsare
`
`summarized in the following table. The various groundsof unpatentability
`
`are supported by the Declaration of Marco Serra (Ex. 1003).
`
`? A moredetailed description ofthe listed prior art references is set forth in
`pages 17-28 of the Petition.
`
`
`
`PGR2023-00003
`Patent 11,215,039 B2
`
`D. Claim Interpretation
`
`In trial proceedings under the America Invents Act, we apply the same
`
`claim construction standard that is applied in civil proceedings under 35
`
`U.S.C. § 282(b). See 37 C.F.R. § 42.200(b); Cupp Computing AS v. Trend
`
`Micro Inc., 53 F.4th 1376, 1380 (Fed. Cir. 2022) citing Phillips v. AWH
`
`Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc); Polaris Innovations Ltd. v.
`
`Brent, 48 F.4th 1365, 1372 n.3 (Fed. Cir. 2022).
`
`A claim construction analysis begins and remainscentered on the
`
`claim languageitself. Innova/Pure Water, Inc. v. Safari Water Filtration
`
`Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004). The words of a claim are
`
`generally given their ordinary and customary meaning, whichis the meaning
`
`that the term would haveto a person of ordinary skill in the applicableart at
`
`the time of the invention.
`
`/d. at 1312-13. The person of ordinary skill in the
`
`art is deemed to read the claim term not only in the context of the particular
`
`claim in whichthe disputed term appears, but in the context of the entire
`
`patent, including the specification.
`
`/d. Therefore, claims “must be read in
`
`view of the specification, of which they are a part.” Markman v. Westview
`
`Instruments, Inc., 52 F.3d 967, 979 (Fed.Cir.1995) (en banc), aff'd, 517
`
`U.S. 370 (1996). The specification may define claim terms by implication
`
`such that the meaning maybeascertained by reading the patent documents.
`
`Phillips, 415 F.3d at 1321.
`
`Petitioner submits testimony from Dr. Serra in support of its proposed
`
`claim construction. Serra (Ex. 1003) J 46. Extrinsic evidence, such as
`
`expert testimony, can be useful for a variety of purposes, such as to provide
`
`backgroundon the technologyat issue, to explain how the invention works,
`
`to ensure that the court’s understanding of technical aspects of a patentis
`
`
`
`PGR2023-00003
`Patent 11,215,039 B2
`
`consistent with that of person of skill in the art, or to establish that a
`
`particular term in a patentorthe prior art has a particular meaning in the
`
`pertinent field. Phillips, 415 F.3d at 1319. However, extrinsic evidenceis
`
`generally consideredless reliable than the patent and its prosecution history
`
`in determining howto read the claim terms.
`
`/d.* The specification is
`
`generally the single best guide to the meaning of a disputed term, and
`
`usually, it is dispositive.
`
`/d. at 1315. For purposes of the instant decision,
`
`werely solely on intrinsic evidence to construe the claims.
`
`In the Petition, Petitioner proposes constructions for two claim terms,
`
`subject to the qualification that they are not found to be indefinite.
`
`Pet. 31-33.
`
`Optimized
`
`Petitioner proposes that we construe a hole shape from a knownliner
`
`design as “optimized”to a desired hole shapeif it “differs the least” from the
`
`desired hole shape in comparison to that of other liner shape designsin the
`
`library of known knownliner designs.
`
`/d. at 31.
`
`With respect to the method steps set forth in the Figure 17 of the
`
`disclosure, the Specification states that, at step 416, the shaped charge liner
`
`within the library that results in a hole that is closest to the desired hole
`
`shape is chosen. Ex. 1001, 12:42—-44.
`
`> Unduereliance on extrinsic evidence posestherisk that it will be used to
`change the meaning of claims in derogation of the “indisputable public
`records consisting of the claims, the specification and the prosecution
`history,” thereby undermining the public notice function of patents.
`Phillips, 415 F.3d at 1319 (citing Southwall Techs., Inc. v. Cardinal IG
`Co., 54 F.3d 1570, 1578 (Fed. Cir. 1995)).
`
`
`
`PGR2023-00003
`Patent 11,215,039 B2
`
`In view of the foregoing andfor purposes of this preliminary stage of
`
`the proceeding, we will construe the “optimized” term asrelating to a hole
`
`shape associated with a knownliner design that most closely approximates
`
`the desired hole shape in someobjectively discernable manner when
`
`compared to hole shapesthat are associated with otherliner designs that are
`
`maintained in a library.
`
`Converge toward the desired hole shape
`
`With respect to “repeating .
`
`.
`
`. steps until the hole shape of the
`
`modified liner design converges towards the desired hole shape,” Petitioner
`
`proposesthat the hole shape of the “modified liner design” is considered to
`
`be more similar in any quantifiable respect to the “desired hole shape” than
`
`the hole produced by the “known liner design.” Jd. at 32.
`
`The Specification states that, at step 422 of the Figure 17 method, the
`
`hole produced by the modified liner design is compared again to the desired
`
`hole profile. Ex. 1001, 12:52—53. Certain design steps may then be repeated
`
`until the liner performance showsno further, appreciable improvement.
`
`/d.
`
`at 2:53-57. This occurs until the modified liner performance has converged
`
`towardsthe desired hole shape.
`
`/d. at 12:58-59.
`
`In view of the foregoing and for purposesof this preliminary stage of
`
`the proceeding, we will construe the “converge” term as the product of an
`
`iterative design and modelling processthat results in a liner design that
`
`producesa hole shape that more closely approximates the desired hole shape
`
`than the hole shape associated with the knownliner design selected from the
`
`library.
`
`Otherwise, we have reviewed the analysis section of the Petition andit
`
`does not appearto us, at this stage of the case, that any issue regarding
`
`7
`
`
`
`PGR2023-00003
`Patent 11,215,039 B2
`
`whethera limitation of claim 1 is met by a cited prior art reference hinges on
`
`the meaning of any particular claim term. Under the circumstances, we will
`
`defer further consideration of claim construction in this case until the record
`
`is more fully developed.
`
`I. ANALYSIS
`
`A. Anticipation of Claim I by Davison
`
`I. Davison
`
`Davison is an article entitled Hydrocode-Designed Well Perforator
`
`With Exceptional Performance publishedby the 17th International
`
`Symposium on Ballistics, in Midrand, South Africa, in March of 1998.
`
`Davisonis directed to a well perforator improvementeffort to increase the
`
`jet energy and penetration of shaped charges. Ex. 1009, p. 1. Davison
`
`discusses modifying the liner of shaped charges, which it considers to be
`
`“It]he most critical componentof the perforator.” Jd. Figure 3 of Davison
`
`depicts a baseline perforator that features a conical liner juxtaposed to an
`
`improvedperforator that features a bell-shaped liner of variable thickness.
`
`Id. at 3. According to Davison,perforations created by the baseline design
`
`tapered to a small diameter, while those created by the improved design
`
`were deeperanddid not taper to a small diameter.
`
`/d. at 4. Davison reports
`
`that the improved design is more effective in bringing hydrocarbonsto the
`
`wellbore. Id.
`
`Davison describes its design approach in the following terms:
`
`The following is a summary of the shaped charge design
`approach: (1) Compute the perforator jetting with the definitive
`AUTODYN2Dprogram; (2) Compute the hole shape using the
`analytical penetration theory; (3) Derive liners that give jets of
`maximum energy and holes of maximum size; (4) Test the most
`
`8
`
`
`
`PGR2023-00003
`Patent 11,215,039 B2
`
`promising designs; and (5) Iterate to converge on the “best”
`design(s).
`
`Davison (Ex. 1009), p. 4.
`
`2. Davison — the individual claim elements
`
`Petitioner alleges that Davison discloses each limitation of claim 1.
`
`Pet. 54-61. Petitioner recites each individual element of claim 1 ina
`
`subheading and then, beneath each such subheading,offers allegations as to
`
`how suchrecited elementis satisfied by Davison.
`
`/d. Petitioner’s
`
`allegations are supported by citations to Davison and to Mr. Serra’s
`
`declaration (Ex. 1003). 7d. Petitioner’s allegations are further supported by
`
`annotated drawings from Davison. Pet. 58. Having reviewed the Petition,
`
`the Davison reference, and Mr. Serra’s declaration, and further in light of the
`
`fact that QinetiQ has notfiled a preliminary response in opposition to the
`
`Petition, it appears to us that Petitioner’s allegations have sufficient
`
`evidentiary support to warrant exercise of our discretion to institute a trial.
`
`Indeed, on this record, the steps of Davison’s iterative process quoted above
`
`sufficiently track the steps of the claimed process that no further explanation
`
`is required at this stage of the proceeding.
`
`IV. CONCLUSION
`
`Petitioner has shown that is more likely than not the that claim 1 is
`
`anticipated by Davison. Under prevailing law, a determination that any one
`
`claim is morelikely than not unpatentable permits institution of a trial on all
`
`challenged claims. SAS Institute, Inc. v. lancu, 138 S.Ct. 1348, 1356 (2018).
`
`Wehave not, however, made a final determination with respect to the
`
`patentability of any challenged claim or the construction of any claim term.
`
`
`
`PGR2023-00003
`Patent 11,215,039 B2
`
`V. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDEREDthat pursuant to 35 U.S.C. § 324(a), a post-grant review is
`
`hereby instituted as to claims 1—5 of the *039 patent on the following
`
`groundsof unpatentability:
`
`A. Claims 1—5 under 35 U.S.C. § 101 as directed to a judicial
`
`exception to patentable subject matter.
`
`B. Claims 1-5 under 35 U.S.C. § 112(b) as indefinite for failure to
`
`particularly point out and distinctly claim the subject matter that co-
`
`inventors regard as the invention.
`
`C. Claims 1-5 under 35 U.S.C. § 112(a) for failure to satisfy the
`
`enablement requirement.
`
`D. Claims 1-5 under 35 U.S.C. § 112(a) for failure to satisfy the
`
`written description requirement.
`
`E. Claims 1—5 under 35 U.S.C. § 102 as anticipated by Davison.
`
`F. Claims 2—4 under 35 U.S.C. § 103(a) as obvious over Davison and
`
`Quattlebaum.
`
`G. Claims 2—4 under 35 U.S.C. § 103(a) as obvious over Davison and
`
`Walters.
`
`H. Claim 5 under 35 U.S.C. § 103(a) as obvious over Davison and
`
`Smith.
`
`I. Claim 1 under 35 U.S.C. § 102 as anticipated by Guinot.
`
`J. Claims 1—4 under 35 U.S.C. § 103 as obvious over Guinot and
`
`Quattlebaum.
`
`K. Claims 2—4 under 35 U.S.C. § 103 as obvious over Guinot and
`
`Walters.
`
`10
`
`
`
`PGR2023-00003
`Patent 11,215,039 B2
`
`L. Claim 5 under 35 U.S.C. § 103 as obvious over Guinot and Smith.
`
`FURTHER ORDEREDthat, pursuant to 35 U.S.C. § 324(c) and 37
`
`C.F.R. § 42.4, notice is hereby given ofthe institution ofa trial; the trial
`
`commencing on the entry date of this Order.
`
`11
`
`
`
`PGR2023-00003
`Patent 11,215,039 B2
`
`UNITED STATES PATENT AND TRADEMARKOFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DYNAENERGETICS EUROPE GMBH and
`DYNAENERGETICS US, INC.,
`Petitioner,
`
`Vv.
`
`QINETIQ LIMITED,
`Patent Owner.
`
`PGR2023-00003
`Patent 11,215,039 B2
`
`Before WILLIAM V. SAINDON, WILLIAM A. CAPP,and
`CARL M. DEFRANCO,Administrative Patent Judges.
`
`Dissenting Opinion,filed by Administrative Patent Judge DEFRANCO.
`
`I respectfully dissent for the reasons set forth in my dissent from the
`
`majority’s decision denying dismissal of the petition, which is entered this
`
`same day. See Paper 8. The issue of whetherthe petition should have
`
`been dismissedin thefirst instance for failure to comply with a statutory
`
`requirement will be preserved fortrial so long as Patent Ownerraises and
`
`addressesthe issue again in its Patent Owner Response.
`
`12
`
`
`
`PGR2023-00003
`Patent 11,215,039 B2
`
`PETITIONER:
`
`Lisa J. Moyles
`Jason D. Radachy
`Jason M. Rockman
`Janelle O'Neill
`MOYLESIP, LLC
`Imoyles@moylesip.com
`jradachy @ moylesip.com
`jrockman @moylesip.com
`joneill@moylesip.com
`
`Barry J. Herman
`Preston H. Heard
`WOMBLE BONDDICKINSON(US) LLP
`bherman @ wesr.com
`preston.heard @ wbd-us.com
`
`PATENT OWNER:
`
`Ajit Vaidya
`Eric Morehouse
`David Kenealy
`KENEALY VAIDYA LLP
`avaidya@kviplaw.com
`emorehouse @kviplaw.com
`dkenealy @kviplaw.com
`
`13
`
`
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