Schlumberger Technology Corporationv.Baker Hughes IncorporatedDownload PDFPatent Trial and Appeal BoardMar 11, 201510701757 (P.T.A.B. Mar. 11, 2015) Copy Citation Trials@uspto.gov Paper 12 Tel: 571-272-7822 Entered: January 11, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ SCHLUMBERGER TECHNOLOGY CORPORATION, Petitioner, v. BAKER HUGHES, INC., Patent Owner. _______________ Case IPR2014-00900 Patent 7,063,174 B2 _______________ Before BRIAN J. McNAMARA, HYUN J. JUNG, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION Denying Petitioner’s Request for Rehearing 37 C.F.R. § 42.71 IPR2014-00900 Patent 7,063,174 B2 2 I. INTRODUCTION A. Background On December 23, 2014, Schlumberger Technology Corporation (“Petitioner”) filed a Request for Rehearing (Paper 9, “Req. Reh’g”) of our Decision (Paper 7, “Dec.”) denying inter partes review of Petitioner’s challenges to certain claims of U.S. Patent No. 7,063,174 B2 (“the ’174 patent”) as obvious over the combination of Krueger 1 and Underwood 2 (claims 1, 2, 14, 15, 21, 22, and 27), the combination of Krueger, Underwood, and Wu 3 (claims 3–13 and 23–26), and the combination of Krueger, Underwood, and Leggett 4 (claims 16–18 and 28–30). See Dec. 14– 17. The Petition (Paper 1, “Pet.”) additionally challenged claims 1–15 and 21–27 as obvious over the combination of Wisler 5 and Berger 6 and claims 16–18 and 28–30 as obvious over the combination of Wisler, Berger, and Leggett. Pet. 16–34. We instituted inter partes review on those challenges (“the Wisler Grounds”). Dec. 7–13, 17. Petitioner’s Request is based on an alleged abuse of discretion in our denying inter partes review of the challenges including Krueger (“the Krueger Grounds”). For the reasons that follow, we deny the Request for Rehearing. 1 PCT International Publication No. WO 01/11180 A1, published Feb. 15, 2001 (Ex. 1003, “Krueger”). 2 U.S. Patent No. 5,332,048, issued July 26, 1994 (Ex. 1004, “Underwood”). 3 U.S. Patent No. RE35,386, issued Dec. 3, 1996 (Ex. 1009, “Wu”). 4 U.S. Patent No. 6,084,826, issued July 4, 2000 (Ex. 1007, “Leggett”). 5 U.S. Patent No. 5,812,068, issued Sept. 22, 1998 (Ex. 1005, “Wisler”). 6 U.S. Patent No. 6,157,893, issued Dec. 5, 2000 (Ex. 1006, “Berger”). IPR2014-00900 Patent 7,063,174 B2 3 II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” The burden of showing a decision should be modified lies with the party challenging the decision, and the dissatisfied party must identify the place in the record where it previously addressed each matter it submits for review. 37 C.F.R. § 42.71(d). III. ANALYSIS Petitioner contends that “[b]ecause Petitioner set forth and relied upon the same motivation with respect to both [the Wisler and Krueger] Grounds, it was an abuse of discretion for the Board to deny institution on the Krueger Grounds based upon a lack of evidentiary support for the proposed combination.” Req. Reh’g 2. A. Decision Instituting on Combinations including Wisler Petitioner’s challenges including Wisler provided two, alternate, bases for using formation pressure for geosteering: (1) “[i]t would be obvious to a skilled artisan that the ‘formation evaluation parameters’ that Wisler refers to using for geosteering would already include . . . fluid pressure in an earth formation” and (2) “[i]t would be obvious to a skilled artisan that the ‘formation evaluation parameters’ that Wisler refers to using for geosteering would . . . be supplemented to include[] fluid pressure in an earth formation.” Pet. 18–19 (emphasis added). In our decision, we indicated that we were “not persuaded that it would have been obvious that Wisler’s formation evaluation parameters used for geosteering include formation pressure” (first basis), but were “persuaded that one skilled in the art would IPR2014-00900 Patent 7,063,174 B2 4 have appreciated that fluid boundaries can be determined by formation pressure” and, “therefore, that formation fluid pressure would have been an obvious alternative to the formation evaluation parameters specifically discussed in Wisler for geosteering” (second basis). Dec. 9–10. B. Decision Denying Institution on Combinations including Krueger In Petitioner’s challenges including Krueger, Petitioner contends that “Krueger ’180 suggests, but does not explicitly discuss, comparing a reference or predetermined value of fluid pressure with a measured value in the geosteering context.” Pet. 39 (citing Ex. 1003, 8:6–8, 14:31–33). Petitioner also contends that “fluid pressure . . . is an obvious example of a type of ‘physical’ property of the collected fluid determined by the formation testing sensors 43 of the formation tester 40 of Krueger ’180.” Id. at 36 (citing Ex. 1003 at 13:14–23; Ex. 1008 ¶¶ 52, 69). In our decision, we indicated that we were not persuaded that Krueger suggests comparing a reference or predetermined value of fluid pressure with a measured value in the geosteering context, or that fluid pressure is an obvious physical property of the collected fluid determined by the formation tester 40 of Krueger. Dec. 14. C. Arguments in Request for Rehearing Petitioner argues that “[i]n denying institution on the Krueger Grounds, the Board determined that Petitioner failed to provide a ‘persuasive explanation’ as to why one of ordinary skill in the art would have known to use formation fluid pressure during geosteering,” even though “Petitioner relied upon the same rationale for using formation fluid pressure during geostreering already found persuasive by the Board when analyzing the Wisler Grounds.” Req. Reh’g 3. This is a mischaracterization of our IPR2014-00900 Patent 7,063,174 B2 5 decision. As noted above, we were persuaded by Petitioner’s contentions that one skilled in the art would have found it obvious to modify Wisler to include formation pressure for geosteering. Dec. 9–10. We were not persuaded, however, by Petitioner’s contentions that it would have been obvious that Wisler’s formation evaluation parameters include formation pressure. Id. at 9. Petitioner’s contentions regarding the challenges including Krueger are similar to those including Wisler which we did not find persuasive. In the challenges including Krueger, the Petition does not propose modifying Krueger to include formation pressure for geosteering. Rather, as noted in this Request for Rehearing, “Petitioner argued that Krueger teaches the use of computed results from the sensors (such as pressure sensors) to guide the drill assembly,” and “that one of ordinary skill in the art would have known fluid pressure to be an obvious example of a type of physical property collected by the sensors of Krueger.” Req. Reh’g 5 (citing Pet. 36, 39–40; Ex. 1008 ¶¶ 52, 69). The Petition briefly references the ’174 patent, noting that “the ’174 Patent itself explains the relevance of VPG readings in borehole development.” Pet. 36 (citing Ex. 1001, 2:61 – 3:18). The Petition, however, does not propose modifying Krueger’s formation tester to include formation pressure as a parameter for geosteering. Petitioner also notes that the Petition “did not rely on Underwood for teaching the use of formation pressure [for] geosteering.” Req. Reh’g 6. Petitioner’s argument now, for the first time, appears to be that one skilled in the art would have modified Krueger to include geosteering based on formation pressure in view of the disclosure at column 2, line 61 through column 3, line 18 of the ’174 patent. Req. Reh’g 6–9. This argument, IPR2014-00900 Patent 7,063,174 B2 6 however, was not raised in the Petition. The only discussion of this portion of the ’174 patent in the Petition relative to the challenges to claims 1 and 21 based on Krueger is that “the ’174 Patent itself explains the relevance of VPG readings in borehole development,” as noted above. See Pet. 36. We are not persuaded that “Petitioner set forth and relied upon the same motivation with respect to both [the Wisler and Krueger] Grounds,” as Petitioner alleges. Req. Reh’g 2. We could not have abused our discretion by not considering arguments that were not presented in the Petition. IV. CONCLUSION Petitioner’s Request for Rehearing is denied. For PETITIONER: Scott A. McKeown Christopher A. Bullard Oblon Spivak cpdocketmckeown@oblon.com cpdocketbullard@oblon.com For PATENT OWNER: Mark T. Garrett Eagle H. Robinson Fulbright & Jaworski, LLP mark.garrett@nortonrosefulbright.com eagle.robinson@nortonrosefulbright.com Copy with citationCopy as parenthetical citation