Tnals@uspio. gov
`
`571-272-7822
`
`Paper 19
`Entered: April 11, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DYNAENERGETICS EUROPE GMBHand
`DYNAENERGETICS US, INC.,
`Petitioner,
`
`V.
`
`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.
`
`Opinion for the Boardfiled by CAPP, Administrative Patent Judge
`
`Opinion Concurringfiled by DEFRANCO,Administrative Patent Judge
`
`Opinion Dissenting filed by SAINDON,Administrative Patent Judge
`
`CAPP, Administrative Patent Judge.
`
`JUDGMENT
`
`Final Written Decision
`
`Determining No Challenged Claims Unpatentable
`
`35 U.S.C. § 328(a)
`
`
`
`571-272-7822
`
`Paper 19
`Entered: April 11, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DYNAENERGETICS EUROPE GMBHand
`DYNAENERGETICS US, INC.,
`Petitioner,
`
`V.
`
`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.
`
`Opinion for the Boardfiled by CAPP, Administrative Patent Judge
`
`Opinion Concurringfiled by DEFRANCO,Administrative Patent Judge
`
`Opinion Dissenting filed by SAINDON,Administrative Patent Judge
`
`CAPP, Administrative Patent Judge.
`
`JUDGMENT
`
`Final Written Decision
`
`Determining No Challenged Claims Unpatentable
`
`35 U.S.C. § 328(a)
`
`
`
`PGR2023-00003
`Patent 11,215,039 B2
`
`I. BACKGROUND
`
`Dynaenergetics Europe GmBH and Dynaenergetics US, Inc.
`
`(collectively “Petitioner”) filed a Petition (Paper1, “Pet.”) requesting post-
`
`grant review of claims 1—5 ofU.S. Patent No. 11,215,039 B2 (Ex. 1001,
`
`the ’039 patent). Patent Owner, QinetiQ Limited, has elected not to file a
`
`Patent Owner Response.
`
`Notwithstanding the lack ofPatent Owner Response, in order to
`
`prevail, Petitioner bears the burden to demonstrate that the challenged claims
`
`are unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363
`
`(Fed. Cir. 2016). This burden never shifts to Patent Owner. See Dynamic
`
`Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378 (Fed.
`
`Cir. 2015) (discussing the burden ofproofin inter partes review). The
`
`standard ofproof is preponderance ofthe evidence. 35 U.S.C. § 326(e); 37
`
`C.F.R. § 42.1(d). We have jurisdiction under 35 U.S.C. § 6.
`
`Having conducted a trial on the merits including a regularly scheduled
`
`oral hearing on January 11, 2024, we conclude that Petitioner has not
`
`demonstrated that any challenged claim ofthe ’039 Patent is more likely
`
`than not unpatentable under any and all ofthe grounds ofunpatentability
`
`asserted in the Petition. Accordingly, we hereby enter a Final Written
`
`Decision and Judgmentin favor ofthe Patent Ownerasto claims 1-5.
`
`See 35 U.S.C. § 328(a).
`
`Il. RELATED MATTERS AND REAL PARTIES IN INTEREST
`
`The parties represent that there are no other related matters currently
`
`pending betweenthe parties. Pet. 1; Paper 5 (Patent Owner’s Mandatory
`
`Notice). Petitioner represents that Dynaenergetics Europe GmBHand
`
`
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`PGR2023-00003
`Patent 11,215,039 B2
`
`Dynaenergetics US, Inc.are its real parties in interest. Pet. 1. Patent Owner
`
`represents that QinetiQ Limitedis its real party in interest. Paper5.
`
`I. PGR ELIGIBILITY
`
`The ’039 patent, entitled “Shaped Charge and Method ofModifying a
`
`Shaped Charge”issued from application number15/930,939. The 939
`
`Application, in turn, is a continuation of application number 16/704,524
`
`(now U.S. Pat. No. 11,002,118), which is a continuation of application
`
`number 14/651,829 (now U.S. Pat. No. 10,533,401), which wasfiled on
`
`December 13, 2013. Ex. 1001. The ’829 Applicationis a National Stage
`
`entry ofPCT/EP2013/076578 which was published as WO 2014/091004,
`
`pub. June 19, 2014, and claimspriority to application number GB 1222474
`
`filed Dec. 13, 2012.
`
`/d. Thus, the filing date ofthe GB °474 application
`
`predates the March 16, 2013, statutory effective file date requirement ofthe
`
`America Invents Act. AIA § 3(n)(1).
`
`Petitioner asserts that the 039 patentis eligible for post-grant review.
`
`Pet. 3-8. Patent Ownerdoes not contest this issue. Patent Ownerdid file a
`
`motion to dismiss the Petition alleging that Petitioner was untimely in
`
`serving the Petition under circumstancesthat allegedly caused the Petition to
`
`be untimely filed in contravention of 35 U.S.C. §321(c). Paper6. After
`
`briefing by the parties and dueconsideration by the Board, a majority ofthe
`
`Board panel denied the motion to dismiss by Order entered April 13, 2023.
`
`Paper 8. At thehearing, Petitioner disclaimed knowledge of any new and
`
`intervening legal authorities that might tend to affect the outcome of
`
`decision denying the motion to dismiss. Tr. 36:18—26.
`
`
`
`PGR2023-00003
`Patent 11,215,039 B2
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`IV. BACKGROUND
`
`A. The ’039 patent (Ex. 1001)
`The Specification ofthe ’039 patent generally discloses a perforator
`
`used in fracking proceduresin the oil and gas industry. Ex. 1001, 2:19-44.
`
`Figure 1 below depicts a knownperforator design.
`
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`
`FIGURE | OF THE *’039 PATENT
`
`Asdepicted in Figure 1 above, knownperforators comprise charge
`
`case 20, explosive composition 60, and liner 30. Ex. 1001, Fig.1.
`
`Challenged claims1—5 relate to designing variations in the shape ofthe liner
`
`component. /d. The Specification describesan iterative design processthat
`
`includes compilation ofa library of liner designs, each ofwhich1s associated
`
`with a particular perforation tunnel geometry determinedbytest firings or
`
`computer simulation. /d. at 11:5—12:63.
`
`
`
`PGR2023-00003
`Patent 11,215,039 B2
`
`Figure 5 of the 039 Patent is reproduced below.
`
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`230
`
`FIGURE 5 OF°039 PATENT
`
`Figure 5 above depicts side-by-side respective upper and lower
`
`perspective viewsof a shaped chargelinerthat adopts the shape of a
`
`pyramid surroundedcircumferentially by a circularlip.
`
`B. The Challenged Claims
`Petitioner challenges claims 1—5. Independentclaim 1 is
`
`representative ofthe claimed subject matter andis reproduced below:
`
`1. A method ofmanufacturing an enhanced shaped charge
`liner design for use in an o1l/gas well perforator that is usable to
`form a desired hole shape in arock formation, the method
`comprising
`comparing the desired hole shapeto a library ofknown
`liner designs, the library includingdata relating to a hole shape
`formed by each ofthe knownliner designs within the library;
`selecting a liner design from the known liner designs that
`produces a hole shape optimised to the desired hole shape;
`varying at least one parameter ofthe selected liner design to
`form a modifiedliner design;
`modelling the hole shapethat the modified liner design
`produces;
`
`5
`
`
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`PGR2023-00003
`Patent 11,215,039 B2
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`repeating the varying and modelling steps until the hole
`shape ofthe modified liner design converges towards the
`desired hole shapeto thereby create a final liner design; and
`forming the enhanced shaped chargeliner in accordance
`with the final liner design.
`
`C. The Asserted Grounds of Unpatentability
`
`Petitioner asserts 12 grounds ofunpatentability, which are
`
`summarizedin the following table. The various grounds ofunpatentability
`
`are supported by the Declaration ofMarco Serra (Ex. 1003).
`
`2-4
`
`5
`
`1
`
`Davison (Ex. 1009), Walters (Ex. 1014)
`
`Davison (Ex. 1009), Smith (Ex. 1015)
`
`Guinot (Ex. 1010)
`
`Guinot (Ex. 1010), Smith(Ex. 1015)
`
`
`
`1-4 103|Guinot (Ex. 1010), Quattlebaum (Ex. 1007)
`
`2-4
`
`5
`
`Guinot (Ex. 1010), Walters (Ex. 1014)
`
`' A moredetailed description ofthe listed prior art referencesis set forth in
`pages 17—28 of the Petition.
`
`
`
`PGR2023-00003
`Patent 11,215,039 B2
`
`V. 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 37C.F.R. § 42.100(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 InnovationsLtd. v.
`
`Brent, 48 F.4th 1365, 1372 n.3 (Fed. Cir. 2022).
`
`A claim construction analysis begins and remains centered on the
`
`claim languageitself. /nnova/Pure Water, Inc. v. Safari Water Filtration
`
`Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004). The words of aclaim are
`
`generally given their ordinary and customary meaning, whichis the meaning
`
`that the term would have to a person of ordinary skill in the applicable art at
`
`the time ofthe invention. Phillips, 415 F.3d at 1312-13. We construe claim
`
`lan guage in the context ofthe claim in whichit appears. /G7 v Bally
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`Gaming, Intl, Inc., 659 F.3d 1109, 1117 (Fed. Cir. 2011). Furthermore, the
`
`person of ordinary skill in the art is also deemedto read the claim term in the
`
`context ofthe entire patent, including the specification. /d.; see also
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`Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995)
`
`(en banc), aff'd, 517 U.S. 370 (1996) (explaining the claims “must be read in
`
`view of the specification, ofwhich they are a part”). The specification may
`
`define claim terms by implication such that the meaning may be ascertained
`
`by reading the patent documents. Phi/lips,415 F.3dat 1321. The
`
`specification is generally the single best guide to the meaning of a disputed
`
`term, and usually,it is dispositive. /d. at 1315.
`
`Petitioner submits testimony from Mr. Serra in support of its proposed
`
`claim construction. Serra(Ex. 1003)946. Extrinsic evidence, such as
`
`7
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`PGR2023-00003
`Patent 11,215,039 B2
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`expert testimony, can be useful for a variety ofpurposes, such as to provide
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`background on the technologyat issue, to explain how the invention works,
`
`to ensure that the court’s understanding oftechnical aspects of a patentis
`
`consistent with that ofperson of skill in the art, or to establish that a
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`particular term in a patentor the priorart has a particular meaningin the
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`pertinent field. Phillips, 415 F.3d at 1319. However, extrinsic evidence is
`
`generally consideredless reliable than the patent andits prosecution history
`
`in determining howto read theclaim terms. /d.?
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`In the Petition, Petitioner proposes constructions for two claim terms,
`
`subject to the qualification that they are not foundto be indefinite.
`
`Pet. 31-33.
`
`1. Optimized?
`Petitioner asserts that the term “optimized” renders claim 1 indefinite.
`
`Pet. 31,45. An analysis of claim indefiniteness is inextricably intertwined
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`with claim construction. Energizer Holdings, Inc. v. Int’] Trade Com’n, 435
`
`F.3d 1366, 1368 (Fed. Cir. 2006).
`
`The Specification teaches a methodto design and form a shape charge
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`liner that produces a “desired” hole shape. Ex. 1001, 6:9, 11:43. A person
`
`of ordinary skill would understand that a designer approaches a design
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`project with an objectivein mind, namely a hole shapethat is “desired.”
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`7 Unduereliance on extrinsic evidence posestheriskthatit will be used to
`change the meaning of claims in derogation ofthe “indisputable public
`records consisting ofthe claims, the specification and the prosecution
`history,” thereby undermining the public notice function ofpatents.
`Phillips, 415 F.3d at 1319 (citing Southwall Techs., Inc. v. Cardinal IG
`Co., 54 F.3d 1570, 1578 (Fed. Cir. 1995)).
`> The ’039 Patent uses thealternative spelling “optimised.” Ex 1001, 13:11.
`Wewill use the spelling “optimized” throughout this Decision.
`
`8
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`PGR2023-00003
`Patent 11,215,039 B2
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`Thus, the “desired” hole shape is a predetermined conceptor construct that
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`is a given at the beginning ofthe design process and becomesthe goal or
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`objective ofthe design process. This desired hole shape then serves as a
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`standard for comparison during two phases ofthe design process. First, it is
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`a standard of comparison thatis used in the initial selection of a candidate
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`liner as the starting point for the design process. Ex. 1001, 13:6—9. It is
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`understood that the selection is not made at random. Instead, it is
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`understood that there are attributes ofthe geometry ofa hole shape produced
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`by a particular known liner that, upon comparison with the “desired hole
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`shape,” lends the particular known liner as a more likely candidate for the
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`start ofthe iterative design process than other known liners. Second, the
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`“desired hole shape”is a standard of comparison for holes produced by
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`modified liners during the iterative design process. /d. at 13:18-19.
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`The Specification teachesthat liner geometry can be customized such
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`that desirable perforation tunnel geometric features are created, including
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`features such as geometriesthat: (1) promote fracture initiation and
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`propagation; (2) promote fracture initiation and growth in a specific
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`orientation; (3) promote maximum flow/flowrate from the rock.
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`Ex. 1001, 11:7—9. Parameters ofa desired hole may comprise hole depth
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`and general hole profile, such as a slot-like cross-section. /d. at 12:25—30.
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`The variability and irregularity in the geometry of a perforation tunnel
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`generated by a shaped chargeis illustratedin Figures 9A-D. Ex. 1001, p. 11.
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`At step 416 of an exemplary method,a liner is chosen that results in a hole
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`that 1s “closest” to the desired hole shape. Ex. 1001, 12:42—44, Fig. 17.
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`Furthermore, prosecution history can inform claim construction by
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`demonstrating how the inventor understood the invention. Personalized
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`PGR2023-00003
`Patent 11,215,039 B2
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`Media Communications, LLC v. Apple Inc., 952 F.3d 1336 (Fed. Cir. 2020).
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`Duringprosecution, the Examinerrejected claim 1 as indefinite by virtue of
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`its recital ofthe word “closest.” Ex. 1002, p. 57. The Examinertreated
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`“closest” as a term of degree and maintained that the Specification did not
`
`provide a standard for ascertaining the requisite degree. /d. In response,
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`Patent Owner amended claim 1 to recite selectinga liner design that
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`produces a hole shapethatis “optimized”to the desired hole shapein lieu of
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`a design that produces a hole shapethatis “closest” to the desired hole
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`shape.
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`/d. p. 35. In the accompanying remarks, Patent Ownerstates that the
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`claim amendment was made to overcomethe indefiniteness rejection. /d.
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`p. 41. Approximately three weeksafter receiving the amendment, the
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`Examinerissued a Notice ofAllowance.
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`/d. p. 7. In the accompanying
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`Notice ofAllowability, the Examiner commented that Patent Owner’s
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`responseto the indefiniteness rejection had been persuasive in overcoming
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`the rejection. /d. p. 12.
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`In the instant case, Petitioner proposesthat, ifwe determinethat the
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`term is definite, we construe a hole shape from a knownliner design as
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`“optimized”to a desired hole shapeifit “differs the least” from the desired
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`hole shape in comparison to that of other liner shape designsin the library of
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`known knownliner designs. Pet. 31. However, in view ofthe prosecution
`
`history, I* do not adopt Petitioner’s proposedconstruction. /d. Petitioner’s
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`proposed construction (“differsthe least’) strikes meas an equivalent
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`4 In this majority opinion, “I” refers to Judge Capp and “we”refers to Judge
`Capp with one or more ofJudges Saindon and DeFranco,as will be made
`clearer when read in conjunction with their separate opinions.
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`10
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`PGR2023-00003
`Patent 11,215,039 B2
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`expression to the “closest” term that drew a rejection by the Examineras a
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`term of degree and, therefore, suffers from a similar infirmity.
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`Prior art references can “help demonstrate howa disputed term is used
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`by those skilled in the art.” Arcelormittal France v. AK Steel Corp., 700
`
`F.3d 1314, 1322 (Fed. Cir. 2012). Various forms oftheterm “optimize”
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`appearin at least three references relied on by Petitioner. Oneofthe
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`conclusions reached by Quattlebaum’s studyis that “[s]haped charge jet
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`perforators can be optimized for a given set of conditions.” Quattlebaum
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`(Ex. 1007), p. 12 (emphasis added). Guinotstates that its invention “relates
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`toa method of controlling the production of sand, based on optimizing the
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`geometry and the orientation ofperforations. Guinot (Ex. 1010) 3:35—37
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`(emphasis added). Smith concludes that perforating penetration in high
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`compressive rocks can be increased by optimizing the perforator geometric
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`design. Smith (Ex. 1015) p. 6 (emphasis added). Furthermore, the Davison
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`reference uses the term “most promising”instead of “optimized,” however, a
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`person of ordinary skill in the art wouldunderstand thetwo termsto be
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`substantially equivalent in meaning. Davison (Ex. 1009), p. 4.
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`Moreover,it is understood from reading the industry literature that, in
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`the current state oftheart, describing and comparing the geometry ofa
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`perforation tunnel does not lend itselfto mathematical precision and
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`certainty. Smith states that “a detail understanding ofthe penetration
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`physicsis insufficient to predict penetration performance from first
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`principles without the use of empirical data.” Smith (Ex. 1015) p. 2. Dueto
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`the nature ofthe field of endeavor,it appears that practitioners frequently
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`need to rely on qualitative data, because quantitative data is not available.
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`Smith (Ex. 1015) p. 3.
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`11
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`PGR2023-00003
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`Petitioner’s expert, Mr. Serra, offers an opinion that claim 1 is
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`indefinite on account ofuse ofthe “optimized” term. Ex 1003 49] 69-79.
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`Mr. Serra testifies that perforation holes can vary in many respects,
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`including hole geometry, entry hole diameter, depth, degree oftaper, and
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`volume.
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`/d. 478. Mr. Serra acknowledgesthat variability in perforation
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`holes is a foundational premise ofthe ’039 Patent and the iterative process of
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`liner design. /d. Mr. Serra’s testimonyis useful in helping me understand
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`the variability and, to a certain degree, lack ofmathematical certainty, both
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`in describing the shape ofa perforation tunnel as well as in predicting the
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`shape of a perforation tunnel by varying the parameters ofa liner design.
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`Mr. Serra’s testimony reinforces my understanding that there is a certain
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`amountofvariability and unpredictability in creatinga hole in rock strata
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`using ajet created by an explosive charge and pressed metal powder.
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`Otherwise, however, Mr. Serra’s testimonyis not particularly helpful
`
`to mein construing theclaim. Teva Pharmaceuticals USA, Inc. v. Sandoz,
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`Inc., 574 U.S. 318, 332 (2015) (explaining that an expert may explain terms
`
`of art and the state ofthe art, but cannot be used to provethe properorlegal
`
`construction of any instrumentofwriting). Amongother things, Mr. Serra
`
`fails to take into account that the definiteness requirement contemplates that
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`absolute precision is often unobtainable owingto the inherent limitation of
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`language. Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 908-910
`
`(2014). Furthermore, I notea certain inconsistency in Mr. Serra’s testimony,
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`whoappearsto have no difficulty in understanding what the term “optimize”
`
`means toaperson ofordinary skill in the art as it 1s used in the priorart
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`references citedagainst the challenged claims. Mr. Serra’s testimony
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`provides me with no indication that there is amore definite way ofusing the
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`12
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`Patent 11,215,039 B2
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`English language to describe the phenomenonofselecting a candidate liner
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`design than the claim language chosen by theinventors. The situation I am
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`confronted with is comparing the shapeof one irregularly shaped hole to
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`otherirregularly shaped holes. That situation does not appear tome to lend
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`itselfto any moreprecision than I find in Patent Owner’s claims.
`
`Taking into account the surrounding context ofhow “optimized”is
`
`used in claim 1, together with the teachings ofthe Specification, the
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`prosecution history, and usage ofthe term in analogouspriorart references,
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`I construe the term “optimized”as relating to a hole shape associated with a
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`knownliner design, where such hole shape more closely approximates one
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`or more parameters of a desired hole shape when comparedto hole shapes
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`that are associated with otherliner designs that are maintainedin a library.
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`This construction contemplates that aspects ofthe comparison maybe,at
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`least to some extent, qualitative in nature. The construction further
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`contemplates that the object ofthe comparison1s to select a promising
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`candidate for beginning ofthe iterative design process contemplated by the
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`remaining steps in the design process of claim 1 when comparedto other
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`liners in the library.
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`2. Converge
`Aswith the “optimized”term,Petitionerasserts that the phrase
`
`“converges towards the desired hole shape” renders claim 1 indefinite.
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`Pet. 31-33, 45-46. However, for purposesofits prior art grounds of
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`unpatentability, Petitioner proposes that the hole shape ofthe “modified liner
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`design”is considered to be more similar in any quantifiable respect to the
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`“desired hole shape”than the hole produced by the “known liner design.”
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`Td. at 32.
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`13
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`PGR2023-00003
`Patent 11,215,039 B2
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`The Specification states that, at step 422 ofthe Figure 17 method, the
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`hole produced by the modified liner design is compared again to the desired
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`hole profile. Ex. 1001, 12:52—53. Certain design steps may then be repeated
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`until the liner performance showsnofurther, appreciableimprovement. /d.
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`at 12:53-57. At this point, the modified liner performanceis considered to
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`have “converged”towards the desired hole shape. /d. at 12:58—59.
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`Manyofthe considerations that we discussed hereinabove with
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`respect to the qualitative nature of data analysis in this field of endeavor with
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`respect to the term “optimized”apply with equal force to the claim term
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`“converge.” The shaped charges usedin this industry tend to create holes in
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`concrete and/or rock formations that have manifestly irregular shapes.
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`Furthermore, the hole shape created in concrete of a particular liner may
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`vary from the hole shape created by the same liner in a rock formation. As
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`the liner design is changed, the modified liner tends to producean irregularly
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`shaped hole that is different from the irregularly shaped hole created by
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`another liner. As compared with the irregularly shaped hole producedby a
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`previously used liner, the designeris interested in whetherthe irregularly
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`shaped hole produced by the mostrecentlinerin the iterative design process
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`is more similar, as opposedto less similar, to the desired hole shape. A hole
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`that is more similar to the desired hole shape than holes produced by
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`previously tested liners maybesaid to “converge” toward the desired shape.
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`Similarly, a hole that is less similar may be said to “diverge” from the
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`desired shape. Due to the irregularity ofthe shapes produced,it is
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`understood that this process doesnotlenditselfreadily to quantitative
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`analysis, neither doesit lend itselfto making determinations with
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`mathematical certainty. Once again, we are mindfulthat the definiteness
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`requirement must take into accountthat absolute precisionis often
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`unobtainable owingto the inherent limitation of language. Nautilus, 572
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`U.S. at 908-910.
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`Once again, prior art can “help demonstrate howa disputed term is
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`used by those skilled in the art.” Arcelormittal, 700 F.3d at 1322. A design
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`process for shaped chargedliners is disclosed in the Davison reference.
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`Davison (Ex. 1009). One ofthe steps disclosed in Davisonis to iterate to
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`converge on the ‘best’ design. /d. at 4. Petitioner relies on the foregoing
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`language in Davisoninits anticipation ground ofunpatentability. Pet. 60.
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`In Petitioner’s own words:
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`Davisondescribesthis process as producinga linerthat
`would producea deeper hole compared tothe baseline conical
`liner. /d. at 7. As such, depth ofthe hole produced by the
`improvedliner design is closer to that ofthe desired deep hole.
`Id. at 1. Consequently, the shape produced by the modified
`liner ofDavison “converges towards”the desired shape under
`the meaning ofthat term in the ’039 Patent.
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`Id. (emphasis added). Evidently, Petitioner has no difficulty in construing
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`and applying the term “converge” when it comesto the Davisonreference.
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`In view of the foregoing, we construe “converge”as the product of an
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`iterative design and modelling processthat results in a liner design that
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`produces a hole shape that more closely approximates the desired hole shape
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`than the hole shape associated with the known liner design initially selected
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`from the library with respect to one or more hole shape parameters, together
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`with other modifiedliners, ifany, that have been considered during the
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`iterative design process. It is understoodthat, owing to the irregularity of
`
`the shapesofthe holes involved, the process of determining convergence
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`maybe,at least to some extent, based on qualitative data analysis.
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`15
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`3. All other Claim Terms
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`Apart from the two claim termsdiscussed hereinabove (optimize and
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`converge), Petitioner acknowledgesthat the remaining termsofthe
`
`challenged claims may be giventheir plain and ordinary meaning as
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`understood by a person of ordinary skill in the art. Pet. 30.
`
`VI. SECTION 101 SUBJECT MATTER
`ELIGIBILITY OF CLAIMS1-5
`
`An inventionis patent-eligibleifit claims a “new and useful process,
`
`machine, manufacture, or composition ofmatter.” 35 U.S.C. § 101.
`
`However, the courts recognize abstract ideas as ajudicial exception to
`
`Section 101. Mayo Collaborative Servs. v. Prometheus Labs, Inc. ,566
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`U.S. 66, 70-71 (2012). The issue presentedin the Petition 1s whether the
`
`challenged claimsare directed to an abstract idea. Pet. 34.
`
`The Supreme Court hasset forth a frameworkfor distinguishing
`
`patents that claim abstract ideas from those that claim patent-eligible
`
`applications ofthe abstract ideas. Alice Corp. v. CLS BankInt’l, 573
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`U.S. 208, 217 (2014) (citing Mayo, 566 U.S. at 72-73). The Supreme
`
`Court’s frameworkis atwo-step process where, in step one, we determine
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`whether the claimsat issue are directed to an abstract idea. /d. However,if
`
`we determine that the claimsare not“directed to” an abstract idea, we
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`resolve the issue at the Alice/Mayostep one stage and do not proceed with
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`an analysis understeptwo. SRIInt’l, Inc. v. Cisco Systems, Inc.,930
`
`F.3d 1295, 1304—04 (Fed. Cir. 2019); Enfish, LLC v. Microsoft Corp., 822
`
`F.3d 1327, 1337 (Fed. Cir. 2016).
`
`However, ifwe determine that the claimsare directed to patent
`
`ineligible subject matter, we proceed to step two, where we “consider the
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`16
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`PGR2023-00003
`Patent 11,215,039 B2
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`elements of each claim both individually and ‘as an ordered combination’ to
`
`determine whether the additional elements ‘transform the nature ofthe
`
`claim’ intoa patent-eligible application.” /d. The Supreme Court
`
`characterizes the secondstep ofthe analysis as “a search for an ‘inventive
`
`concept’ —1.e., an element or combination of elements that 1s “sufficient to
`
`ensure that the patent in practice amounts to significantly more than a patent
`
`upon the [ineligible concept] itself.’ Alice, 573 U.S. at 217-18 (brackets in
`
`original) (quoting Mayo, 566 U.S. at 72).
`
`Petitioner argues claims 1—5 together underthis ground of
`
`unpatentability. Pet. 33-44. Claim 1 is representative. Petitioner
`
`acknowledgesthat Alice governsthe analysis under the Section 101 grounds
`
`of unpatentability. /d. at 33. Petitioner alleges that the claims recite an
`
`abstract idea in the form of a mental process. /d. at 34. Petitioner alleges
`
`that the claimsare “directed to”that abstract idea as opposedto being
`
`integrated into a “practical application” ofthat abstract idea.
`
`/d. at 40-42.
`
`Finally, Petitioner alleges that the claims do not recite additional elements
`
`that amount to significantly more than the abstract idea. Jd. at 42-44.
`
`Petitionerasserts that selecting a candidate liner from a library of
`
`knownliner designsis essentially a mental process that qualifies as an
`
`abstract idea. Pet. 35-37. Petitioner also contends that varying designs,
`
`modeling the hole shapethat a liner produces, and repeating steps in an
`
`iterative process are capable ofbeing carried out in the mind of a designer.
`
`Id. at 38-39. We agree with Petitioner that claim 1 “recites” an abstract
`
`idea.
`
`However, we do not assumethat all claims that recite abstract ideas
`
`are directed to patent ineligible subject matter because “all inventions[at
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`17
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`PGR2023-00003
`Patent 11,215,039 B2
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`some level] embody,use,reflect, rest upon, or apply laws of nature, natural
`
`phenomena,or abstract ideas.” Jn re TLI Commc’ns LLC PatentLitig., 823
`
`F.3d 607, 611 (Fed. Cir. 2016) quoting Alice, 573 U.S. at 217. Instead, “the
`
`claims are consideredin their entirety to ascertain whether their character as
`
`a wholeis directed to excluded subject matter.” McRO,Inc. v. Bandai
`
`Namco Games America Inc. , 837 F.3d 1299, 1312 (Fed. Cir. 2016). In other
`
`words, the “directed to” inquiry applies a stage-onefilter to claims,
`
`consideredin light ofthe specification, based on whether “their character as
`
`a wholeis directed to excluded subject matter.” Enfish, 822 F.3dat 1335. If
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`the claims are not directed to an abstract idea, the inquiry ends. /d. at 1339.
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`In the instant case, Petitioner essentially concedesthat the “forming”
`
`step goes beyond a mental process. Pet. 41; Tr. 15:3—20 (fabricating).
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`Nevertheless, Petitioner argues that the “forming” stepis a mere instruction
`
`to apply the mental process. Pet.41. At the hearing, Petitioner argued that,
`
`becauseit was already knownin the art how to form orfabricate a liner, the
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`forming limitation does not allow claim 1 to “get past” Section 101.
`
`Tr. 16:5—17:21.
`
`There are at least two problems with Petitioner’s argument. Thefirst
`
`problem is that we look at claim 1 as a whole and notjust the forming
`
`limitation. See McRO, 837 F.3d at 1312 (explaining that claims are
`
`consideredin their entirety to ascertain whether their character as a whole is
`
`directed to excluded subject matter). Here, the lineris not merely formed,it
`
`is formed in accordance with the design process that 1s outlined in the other
`
`steps ofthe claimed method. The second problem with Petitioner’s position
`
`is that the subject mattereligibility analysis under section 101 is separate
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`and apart from the novelty and obviousness considerations of sections 102
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`18
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`PGR2023-00003
`Patent 11,215,039 B2
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`and 103. See Bilskiv. Kappos, 561 U.S. 593, 625 (2010) (explainingthat the
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`familiar issues ofnovelty and obviousnessare not relevant to a section 101
`
`analysis); see also Intellectual Ventures ILLC vy. Symantec Corp. , 838
`
`F.3d 1307, 1315 (Fed. Cir. 2016) (explaining that the ‘novelty’ of any
`
`elementor steps in a process is of no relevance in determining whether the
`
`subject matter of a claim falls within the § 101 categories ofpossibly
`
`patentable subject matter). Thus, Petitioner’s argumentthat forminga liner
`
`was knownatthe time of invention1s not relevantto our Section 101
`
`analysis.
`
`Petitioner argues that the forming step doesnot qualify as integrating
`
`the mental process into a practical application becauseit 1s not implemented
`
`with a particular machineand does not improvea particulartechnology. /d.
`
`Petitioner relies on anumberof case authorities as standing for the
`
`proposition that claims pertaining to data gathering, analysis, and
`
`notification on generic computersare directed to abstract ideas at Alice step
`
`one.
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`/d. (citing Simio, LLC v. FlexSim Software Products, Inc., 983
`
`F.3d 1353, 1362 (Fed. Cir. 2020); /ntellectual Ventures, 838 F.3d at 1318; /n
`
`re Killian, 45 F 4th 1373 (Fed. Cir. 2022); CyberSource Corp. v. Retail
`
`Decisions, Inc., 654 F.3d 1366, 1375, 1372 (Fed. Cir. 2011)).
`
`Contrary to Petitioner’s position, the claims, in our opinion, are
`
`“directed to” to a method of designing an article ofmanufacture, namely, a
`
`shaped charge liner. The object ofthe inventionis to provide a shaped
`
`charge arrangementthatfacilitates preferential crack formation, growth and
`
`orientation in rockstrata so as to increase the productionefficiency ofa
`
`working oil well. Ex. 1001, 4:1—3. Figures 4—6 are best understood as
`
`depicting representations of actual liners. /d. 7:1—2, 8:39-9:19, Figs. 4-6.
`
`19
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`PGR2023-00003
`Patent 11,215,039 B2
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`Figure 10 depicts an apparatus for conducting explosivetests of actual
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`shaped charges.
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`/d. 9:55—66, Fig. 10. Fig. 13 shows a photographof an
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`incursion into rock made by an actualliner. /d. 7:16—18, 10:19-25. Thus,
`
`although Patent Owner’s design processincludesaspects of abstract ideas,
`
`the claims are not directed to the abstract ideas, rather, they are directedto
`
`forming an actual, physical shaped chargeliner, which is a practical
`
`application ofthe abstract ideas.
`
`Petitioner’s “apply it” argument misses the mark. Almost every
`
`article ofmanufacture is designed and fabricated by meansofprocesses
`
`whereby knowledgeis “applied”in the design and/or manufacturing process.
`
`Even a blacksmith “applies” knowledge in hammering out a horseshoe. As
`
`previously mentioned, “all inventions [at some level] embody,use, reflect,
`
`rest upon, or a
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