Schlumberger Technology Corporationv.Baker Hughes Incorporated

Patent Trial and Appeal Board

Mar 11, 2015

10701757 (P.T.A.B. Mar. 11, 2015)

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

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Patent 7,063,174 B2

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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”).
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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
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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
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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,
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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