Australian Mud Company Pty Ltd.

Patent Trials and Appeals Board

Nov 20, 2020

IPR2019-01129 (P.T.A.B. Nov. 20, 2020)

Trials@uspto.gov Paper 26
571.272.7822 Entered: November 20, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

BOART LONGYEAR LTD.,
Petitioner,

v.

AUSTRALIAN MUD COMPANY PTY LTD.,
Patent Owner.
_______________

IPR2019-01129
Patent 7,584,055 B2
_______________

Before GRACE KARAFFA OBERMANN, JO-ANNE M. KOKOSKI, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining No Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
Petitioner Boart Longyear Ltd.1 challenges the patentability of claims
16–18, 22, and 23 of U.S. Patent No. 7,584,055 B2 (Ex. 1001, “the ’055
patent”). We have jurisdiction under 35 U.S.C. § 6, and we issue this Final
Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the
reasons below, we determine that Petitioner has not proven by a
preponderance of the evidence that any of the challenged claims is
unpatentable.
A. PROCEDURAL HISTORY
Petitioner filed a Petition seeking inter partes review of claims 16–18,
22, and 23 of the ’055 patent. Paper 1 (“Pet.”). Patent Owner filed a
Preliminary Response. Paper 7. We instituted trial. Paper 8 (“DI” or
“Institution Decision”).
During trial, Patent Owner filed a Response (Paper 15, “PO Resp.”),
Petitioner filed a Reply (Paper 17), and Patent Owner filed a Sur-reply
(Paper 19).
Petitioner relies on the declaration testimony of Keith A. Heasley,
Ph.D. See Ex. 1003. Patent Owner relies on the declaration testimony of
Jonathan Tapson, Ph.D. See Ex. 2007.
Oral argument was held on August 26, 2020. The transcript of that
argument was entered into the record. Paper 25 (“Hearing Tr.”).

1 Petitioner identifies Boart Longyear Company and Globaltech Corporation
Pty Ltd. as additional real parties in interest. Pet. 1.
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B. RELATED MATTERS
The parties agree that “[n]o known related matters are pending
currently.” Pet. 1; Prelim. Resp. 10. However, Patent Owner identifies a
number of completed Australian proceedings that concerned Australian
patents having related subject matter. See Prelim. Resp. 10–12.
C. THE ’055 PATENT
The ’055 patent relates to “core sampling in geological surveying
operations.” Ex. 1001 at 1:14–15. A “core” is a sample of the earth that is
extracted from the earth and that can be brought to the surface for
evaluation. E.g., id. at 1:5–10. The ’055 patent explains that core drilling
operations are typically “performed at an angle to the vertical,” and that, for
analytical purposes, it is desirable “to have an indication of the orientation of
the core sample relative to the ground from which it was extracted.” Id.
at 1:31–37. In other words, it is “important that there be some means of
identifying the orientation the core sample had within the ground prior to it
having been brought to the surface.” Id.
To that end, the ’055 patent discloses a “core orientation device” that
measures the orientation of the core sample during drilling and extraction.
Id. at 6:27–33. The core orientation device may comprise, for example,
means for providing signals associated with a physical orientation of the
core orientation device, such as accelerometers; processing means for
processing the signals; memory for storing processed data; and display
means for displaying the measure of the physical orientation of the device.
E.g., id. at 2:1–16, 2:49–50. While a core sample is being drilled/extracted,
the device measures its rotational orientation (and that of the core sample) at
regular intervals and stores those measurements in memory, thereby
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permitting an operator to subsequently determine the pre-extraction
orientation of the core sample after that core sample (and the device) has
been extracted from the drill hole. Id. at 7:58–8:21.
Figure 2 of the ’055 patent, as annotated by Patent Owner, see PO
Resp. 5, is reproduced below.

Annotated Figure 2 depicts “a schematic side elevational view” of a core
drill with orientation device 10. Ex. 1001 at 6:13–14. “[T]he inner tube
assembly 36 comprises upper and lower parts 36a, 36b between which the
orientation device 10 is fitted.” Id. at 6:55–56. “The upper part 36a
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includes a bearing 40, with the portion above the bearing 40 being rotatable
with the outer tube assembly 34 and the portion below the bearing 40 being
restrained against rotation because of frictional engagement with the core
being generated.” Id. at 6:57–61. “Thus, in this manner the bearing 40
allows the core orientation device 10 to rotate relative to the outer tube
assembly 34 but not relative to the core sample when the core is received.”
Id. at 6:61–64; see also id. at 8:16–21 (“The orientation of the orientation
device 10 of course corresponds to the orientation of the lower part 36b of
the inner tube assembly 36 which in turn corresponds to the orientation of a
core sample progressively entering the inner tube assembly 36, as the lower
part 36b does not rotate relative to the core sample.”).
D. ILLUSTRATIVE CLAIM
Claim 16, reproduced below,2 is illustrative of the challenged claims.
16. [P] A method of obtaining and orientating a core sample
comprising:
[1] moving a core drill having a core orientation device from
a first location to a drilling location and thereafter
operating the core drill to drill a core;
[2] maintaining a physical orientation of the core stationary
with respect to a physical orientation of the core
orientation device;
[3] generating signals associated with the physical orientation
of the core orientation device between the first location
and the drilling location;
[4] processing the signals to provide processed data from
which a measure of the physical orientation of the core

2 Consistent with the Petition, e.g., Pet. 20, bracketed identifiers have been
added to claim recitations to simplify reference to the individual recitations.
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orientation device at the drilling location can be
established;
[5] storing the processed data in memory such that the
measure of the physical orientation of the core orientation
device can be obtained therefrom; and
[6] displaying a related measure of the physical orientation of
the device and
[7] varying that related measure upon rotation of the core
orientation device such that a user can position the core in
the measured physical orientation for marking.
Ex. 1001 at 12:21–43.
E. PRIOR ART RELIED UPON
Petitioner relies on the following references:
Reference Title or Patent/Pub. No. Date Exhibit
Puymbroeck3 US 6,006,844
Dec. 28,
1999
1005
Skopec ’92
Horizontal Core Acquisition
and Orientation for Formation
Evaluation
Mar. 1992 1006
Enderlin US 5,105,894
Apr. 21,
1992
1007
Scott CA 2,456,506 A1
Jan. 3,
2005
1008
F. INSTITUTED GROUNDS OF UNPATENTABILITY
We instituted inter partes review based on the following grounds of
unpatentability asserted by Petitioner:

3 The first named inventor is “Luc Van Puymbroeck.” Consistent with the
Petition and Patent Owner Response, we use “Puymbroeck.”
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Claims Challenged 35 U.S.C. §4 References
16–18, 22, 23 103(a) Puymbroeck, Enderlin
16–18, 22, 23 103(a) Puymbroeck, Scott
16–18, 22, 23 103(a) Skopec ’92, Enderlin
16–18, 22, 23 103(a) Skopec ’92, Scott
II. DISCUSSION
A. LEVEL OF ORDINARY SKILL IN THE ART
The level of ordinary skill in the art is “a prism or lens” through which
we view the prior art and the claimed invention. Okajima v. Bourdeau, 261
F.3d 1350, 1355 (Fed. Cir. 2001).
In the Institution Decision, we adopted Petitioner’s description of the
level of ordinary skill in the art and determined that a person of ordinary
skill in the art “would have had a bachelor’s degree in petroleum, mining,
mechanical, or electrical engineering (or a closely related field), and at least
two years’ experience in designing and developing drills or related
instruments.” DI 7. “Alternatively, a [person of ordinary skill] would have
had a Master’s degree in one of those disciplines with fewer years of
experience.” Id.
Because Patent Owner “does not dispute Petitioner’s proposed level
of ordinary skill,” PO Resp. 12, and because we find the stated level of
ordinary skill to be consistent with the record, we maintain our

4 The relevant section of the Leahy-Smith America Invents Act (“AIA”),
Pub. L. No. 112–29, took effect on March 16, 2013. Because the application
from which the ’055 patent issued was filed before that date, the pre-AIA
statutory framework applies.
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determination from the Institution Decision as to the ordinary level of skill
in the art.
B. CLAIM CONSTRUCTION
To the extent any claim term needs to be construed, we do so below in
our discussion of Petitioner’s proposed grounds of unpatentability. See
Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
1999) (claim terms need only be construed “to the extent necessary to
resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad
Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid
Techs. in the context of an inter partes review).
C. OBVIOUSNESS OF CLAIMS 16–18, 22, AND 23 IN VIEW OF PUYMBROECK
AND ENDERLIN.
Petitioner asserts that claims 16–18, 22, and 23 would have been
obvious over Puymbroeck and Enderlin. Pet. 15–41. For the reasons set
forth below, we determine that Petitioner has not carried its burden of
showing that the challenged claims would have been obvious to a person of
ordinary skill in the art. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d
1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from
the onset to show with particularity why the patent it challenges is
unpatentable.”).
1. Puymbroeck (Ex. 1005)
Puymbroeck discloses an apparatus for drilling and coring that may
include “sensors for logging borehole parameters” and a data transmission
assembly. Ex. 1005, code (57). Puymbroeck contemplates use of its
apparatus in oil and gas applications. E.g., id. at 3:21–23 (distinguishing
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existing coring systems that were not “suitable for use in oil and gas
exploratory wells”); 5:13–15 (identifying “a hydrocarbon-producing zone”
as a “zone or stratum of potential interest”). A goal of Puymbroeck is “to
conduct such core logs immediately after core passage through the throat of
the core bit when the core is in its most pristine state and the least likely to
have become excessively contaminated by drilling mud or to have lost its
physical integrity.” Id. at 4:49–53. Puymbroeck discloses that, with its
apparatus, “the orientation of the core will be determined, both in an
absolute sense and with respect to the surrounding formation from which it
is cut.” Id. at 4:54–57.
A cropped portion of Figure 6A of Puymbroeck is reproduced below.

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Cropped Figure 6A is “a schematic of a first preferred embodiment of a
coring apparatus with an inner tube assembly in place in an arrangement
suitable for concurrent coring and logging of borehole parameters and
transmitting acquired borehole parameter data to the surface of the earth.”
Id. at 5:48–52.
The apparatus of Figure 6A includes (1) core barrel 302, (2) inner
tube assembly 306, (3) instrument and data transmission module 334
“including a pressure housing within which electronic instrumentation for
obtaining borehole data and at least part of the data transmission device may
be contained,” (4) directional instrumentation 336 “to determine borehole
position and orientation (azimuth, slope, etc.),” and (5) rotational bearing
assembly 330. Id. at 9:29–10:2. Bearing assembly 330 “permit[s] rotation
of core barrel 302 about inner tube assembly 306 below bearing assembly
330 to cut a core of formation material without rotationally-induced stress
thereon, a technique well known in the art.” Id. at 9:52–57; see also id. at
6:42–47 (“[B]earing assembly 44 . . . permits the upper and lower portions
of inner tube assembly 40 to rotate with respect to one another and . . . in
combination with bit end bearing assembly 36[] allows outer barrel
assembly 16 to rotate while inner tube assembly 40 remains stationary”).
Puymbroeck discloses that directional instrumentation 336 “is typically
provided with at least some processing capability as well as electronic
machine-readable memory . . . for storage of obtained data, and is in
communication with data transmission device 342 for transmitting real-time
data to the surface of the earth.” Id. at 10:8–14.
Puymbroeck also discloses that “surface instrumentation on or below
the rig floor may be employed to monitor drilling-related parameters which
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may be correlated and used in combination with the data received from the
downhole instrumentation.” Id. at 13:12–16. With reference to Figure 6B,
Puymbroeck teaches that surface instrumentation 500 “may be used in
combination with computer 502 and with data received from downhole
[instrumentation] through receiver 504 to provide data to the operator
through display 506, which may comprise a digital or graphic display.” Id.
at 13:16–20.
2. Enderlin (Ex. 1007)
Enderlin discloses “[a] method and apparatus for determining the
location in space of a formation sample.” Ex. 1007, code (57). Enderlin’s
coring apparatus includes a “tool” that comprises magnetometers and
accelerometers “for measuring movement of the tool along the well borehole
whereby components of the magnetic field and gravity field are measured to
enable determination of the well in space.” Id. Enderlin’s “tool,” including
its orientation sensors, is separate from Enderlin’s drilling apparatus, and
Enderlin’s orientation device does not enter the borehole until “[a]fter a well
has been drilled [and] the drill string and core bit with core is removed from
the well.” See id. at 6:1–12; see also id. at 3:10–30 (tool placed into
borehole after core is drilled). Enderlin teaches that data is obtained from
the tool “at the well head when the equipment is first placed in the well” to
“provide[] a beginning point for the data,” and that additional data is
continuously recorded as the tool is lowered into the borehole. See id. at
4:36–43, 6:7–12.
Enderlin also discloses the use of “one or more sharp points which
scratch the core with a scratch or scribe mark along the length of the core so
that the core can be pieced together.” Id. at 4:64–68. “[T]he conventional
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core is scratched with a mark which serves as a reference mark on the core
when retrieved to the surface and when subsequently tested.” Id. at 5:15–18.
Like Puymbroeck, Enderlin contemplates use of its apparatus in oil and gas
applications. E.g., id. at 1:9–10.
3. Analysis
Based on the complete trial record, and as explained below, we find
Petitioner’s analysis to be inadequate to establish by a preponderance of the
evidence that the challenged claims would have been obvious over
Puymbroeck and Enderlin.
a. Claim 16
Claim 16 recites a step [16.6] of “displaying a related measure of the
physical orientation of the device.” Ex. 1001 at 12:39–40. In the Institution
Decision, we observed:
Neither party expressly discusses the meaning of the term
“related measure.” Petitioner’s analysis implies Petitioner’s
view that the term “related measure” encompasses “data [that]
relates to a measure of the device’s orientation.” Pet. 27. That
interpretation of the term is consistent with disclosures in the
written description of the ’055 patent. See, e.g., Ex. 1005 at
2:42–47, 9:35–46, 10:20–24. Patent Owner is free to contest
Petitioner’s implied construction in a timely filed Response.
DI at 25–26.
In post-institution briefing, neither party contested our understanding
of the term “related measure” as encompassing “data that relates to a
measure of the device’s orientation.” See DI at 25–26. Because we find that
understanding to be consistent with the record, we apply it in our analysis
below.
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Claim 16 next recites a step [16.7] of “varying th[e] related measure
upon rotation of the core orientation device such that a user can position the
core in the measured physical orientation for marking.” Ex. 1001 at 12:40–
43. In combination with the “displaying” step, we understand this limitation
to require that the displayed “related measure” is “var[ied] . . . upon rotation
of the core orientation device.” In other words, the “related measure” that is
displayed, as recited in limitation [16.6], changes (varies) as the core
orientation device is rotated. The purpose of this limitation is to enable a
user to position and mark the core. See, e.g., id. at 10:20–24 (“Once the
orientation device 10 is at the required orientation the display 74 provides an
image 85 representing that condition.”). Petitioner describes claim 16 as
requiring “rotating and relating the device’s orientation at the surface after
the core’s separation from the ground.” Pet. 14.
In its analysis of the “varying” limitation, Petitioner argues that
“Puymbroeck discloses a user evaluating the related measure of the device’s
orientation, which can be used to position the core in the measured
orientation for marking.” Pet. 28 (citing various portions of Puymbroeck).
Patent Owner argues that “the Petition fails to even allege that
Puymbroeck’s display varies a measure of the core’s orientation as the user
rotates the core orientation device, instead merely stating that ‘Puymbroeck
discloses a user evaluating the related measure of the device’s
orientation . . . .’” PO Resp. 32. Patent Owner also argues that Puymbroeck
“does not contain any teaching” relevant to limitation [16.7], that
Puymbroeck does not expressly disclose rotating a core to a desired position,
and that Puymbroeck does not include any express disclosures concerning
marking a core. Id. at 32–34.
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As an initial matter, we agree with Patent Owner that Petitioner’s
argument that “Puymbroeck discloses a user evaluating the related measure
of the device’s orientation, which can be used to position the core in the
measured orientation for marking,” does not on its face appear to correspond
to the requirements of limitation [16.7]. Limitation [16.7] does not merely
recite “evaluating” a related measure; it recites “varying [the] related
measure upon rotation of the core orientation device such that a user can
position the core in the measured physical orientation for marking.”
Ex. 1001 at 12:40–43.
Petitioner cites several portions of Puymbroeck in support of its
contention that Puymbroeck teaches or suggests limitation [16.7]. Petitioner
first cites and quotes Puymbroeck at 4:53–57: “[I]t is contemplated that the
orientation of the core will be determined . . . using the directional
instrumentation of the apparatus.” Pet. 28 (emphasis in original). As the
quotation makes clear, that portion of Puymbroeck states only that the
orientation of the core will be determined using the directional
instrumentation of the apparatus. Ex. 1005 at 4:53–57. It says nothing
about varying a displayed related measure, or a user positioning a core for
marking, and the Petition provides no meaningful explanation as to how the
cited disclosure might inherently or implicitly teach or suggest the “varying”
limitation.
Petitioner next cites and quotes claim 10 of Puymbroeck:
“[D]irectional instrumentation opera[tes] to obtain data relating to position
and orientation of the apparatus, and wherein the directional instrumentation
and . . . inner tube . . . are cooperatively configured to provide orientation
data for the received core.” Pet. 28. Again, that quotation says nothing
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about varying a displayed related measure or a user positioning the core for
marking, and the Petition provides no meaningful explanation as to how the
cited disclosure might inherently or implicitly teach or suggest the “varying”
limitation.
Petitioner also cites Puymbroeck at 9:66–10:3, 10:35–41, 11:24–33,
and claim 9, and a portion of another reference (Juergens) incorporated by
reference into Puymbroeck. Id. As above, however, those portions of the
record discuss core orientation and directional instrumentation. We do not
discern an apparent disclosure about varying a displayed related measure or
a user positioning the core for marking, and the Petition provides no
meaningful explanation as to how the cited evidence might inherently or
implicitly teach or suggest the “varying” limitation.
Petitioner also cites pages 59–60 of the Heasley Declaration. Id.
Dr. Heasley’s analysis largely repeats the Petition, see Ex. 1003 at pp. 59–
60, and Petitioner does not explain if or how Dr. Heasley’s discussion
supplements the Petition in a material way, see Pet. 28 n.54 (citing Heasley
Declaration without discussion). Other than a citation to Dr. Heasley’s
Declaration in a footnote, the Petition says nothing about Dr. Heasley’s
opinions concerning the “varying” limitation. See Pet. 28; see also
37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference
form one document into another document.”).
In that regard, we observe that the Petition, particularly with respect to
the “varying” limitation, provides little or no discussion of the prior art. The
Petition, in relevant part, consists of a claim chart in which the claim
limitation is reproduced in the left column. See, e.g., Pet. 28. The right
column includes a conclusory assertion that Puymbroeck teaches the claim
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limitation (and, as noted above, the assertion in this instance does not on its
face correspond to the requirements of the disputed limitation). See id. And
the right column includes naked citations to and quotations from
Puymbroeck, with no discussion of those disclosures. See id. That may be
adequate when the correspondence of the cited portion of the reference to
the disputed claim limitation is reasonably clear. But with respect to the
“varying” limitation, as discussed above, it is not adequately apparent how
the cited portions of Puymbroeck correspond to the disputed limitation. It
appears that a significant amount of inference and/or assumption is
necessary. As noted, Petitioner’s citations say nothing about varying a
related measure or a user positioning the core for marking, and the Petition
includes no discussion attempting to bridge that gap. It is not reasonably
clear from the Petition how the cited portions of Puymbroeck allegedly
correspond to the disputed claim limitation. The Petition’s analysis of the
“varying” limitation leaves too many gaps and fails to establish obviousness.
In his deposition, Dr. Heasley acknowledged that Puymbroeck does
not expressly disclose rotating a core to obtain a desired position and took
the position that a person of ordinary skill “would understand that you could
do that if desired.” Ex. 2009 at 83:23–84:7 (emphasis added). Petitioner
does not persuasively identify where in the Petition it explained from where
that understanding would come. Conclusory assertions and citations,
without meaningful explanation, are inadequate to support a determination
of obviousness. See TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352,
1359 (Fed. Cir. 2019) (noting that the Federal Circuit has “repeatedly
recognized that conclusory expert testimony is inadequate to support an
obviousness determination on substantial evidence review.”). Moreover,
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“obviousness concerns whether a skilled artisan not only could have made
but would have been motivated to make the combinations or modifications of
prior art to arrive at the claimed invention.” Belden Inc. v. Berk–Tek LLC,
805 F.3d 1064, 1073 (Fed. Cir. 2015).
As Patent Owner points out, Dr. Heasley also conceded that
Puymbroeck does not disclose the concept of marking a retrieved core. See
Ex. 2009 at 132:11–16, 138:13–24; see also Ex. 2007 (Tapson Decl.) ¶ 57
(“[T]he Puymbroeck patent is silent regarding any rotation, reorientation, or
marking of a core sample after being retrieved above-ground . . . .”).
Dr. Tapson, Patent Owner’s declarant, indicated that Puymbroeck includes
no such disclosure because “a ‘logging while drilling’ system [such as that
of Puymbroeck] does not entail re-orientation and marking of the core
sample above-ground”; it “allows real-time data to be returned to the surface
while drilling.” Ex. 2007 ¶¶ 56–57.
Consistent with Patent Owner’s arguments, see PO Resp. 30–34, and
for the reasons set forth above, we determine that the Petition does not
adequately establish that Puymbroeck teaches or suggests the “varying”
limitation of claim 16. See 35 U.S.C. § 312(a)(3) (petition must
“identif[y] . . . with particularity, each claim challenged . . . and the evidence
that supports the grounds for the challenge to each claim.” (emphasis
added)).
We now consider whether Petitioner’s Reply adequately, and
permissibly, addresses the shortcomings of the Petition identified above. Cf.
Sur-reply 1 (alleging that Petitioner’s Reply “advances an array of new
arguments and theories”). We determine that it does not. The Trial Practice
Guide states that a “Petitioner may not submit new evidence or argument in
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reply that it could have presented earlier, e.g. to make out a prima facie case
of unpatentability.” See Consolidated Trial Practice Guide (“TPG”) 73
(Nov. 2019), available at https://www.uspto.gov/sites/default/files/
documents/tpgnov.pdf. If a petition includes only a minimal, conclusory
analysis (e.g., bald assertions and unexplained citations to the prior art), a
petitioner generally cannot provide substantial additional argument and
evidence in the reply that could have and should have been presented in the
petition. See TPG at 73; Intelligent Bio-Sys., Inc. v. Illumina Cambridge
Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (holding that “the Board did
not abuse its discretion” in refusing to consider new arguments and evidence
raised for the first time in a reply brief). We indicated that in the Institution
Decision. E.g., DI at 29–30 (“This does not represent an invitation for
Petitioner to supplement argument or evidence presented in the Petition.”).
We find that the deficiencies in the Petition identified above are not the
types of deficiencies that can be corrected in a Reply, and that the new
arguments and evidence in the Reply are untimely, as explained further in
our discussion below.5 See TPG at 73 (“Petitioner may not submit new
evidence or argument in reply that it could have presented earlier, e.g. to
make out a prima facie case of unpatentability.”).
In the alternative, and for completeness, we discuss Petitioner’s Reply
arguments below and find them to be unpersuasive. Petitioner argues that
claim 16 “doesn’t require the user to hold and rotate the device.” Reply 17.
Even accepting that as accurate, however, claim 16 explicitly recites

5 The Petition includes only a single sentence of discussion concerning
Puymbroeck and the “varying” limitation. See Pet. 28. The Reply includes
eight pages of discussion. See Reply 17–24.
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“varying [the] related measure upon rotation of the core orientation device
such that a user can position the core in the measured physical orientation
for marking.” Ex. 1001, 12:40–44. As set forth above, neither Petitioner’s
conclusory assertion that Puymbroeck teaches this limitation, nor
Petitioner’s unexplained citations to Puymbroeck, meaningfully address the
actual claim language.
Petitioner also argues that the “can position the core . . . for marking”
limitation recited in [16.7] “is permissive language not required to practice
the claim,” such that “element 16.7 is properly understood to only require
‘varying that related measure upon rotation of the core orientation device.’”
Reply 18. This argument disregards the recitation in [16.7], “such that a
user can position the core in the measured physical orientation for marking.”
Petitioner’s position in the Reply stands in contrast to, and in apparent
tension with, Petitioner’s statement in the Petition that “claim 16 and 22’s
methods require rotating and relating the device’s orientation at the surface
after the core’s separation from the ground.” See Pet. 14.
Even if we were to agree with Petitioner, the Petition does not
meaningfully address the claim language that even Petitioner agrees limits
the claim (i.e., “varying that related measure upon rotation of the core
orientation device”). In any event, we decline to disregard that claim
language for two reasons.
First, nowhere in the Petition’s analysis of the “varying” limitation
does the Petition indicate that Petitioner is treating the limitation in the way
that Petitioner proposes in the Reply. On the contrary, the Petition argues
that “Puymbroeck discloses a user evaluating the related measure of the
device’s orientation, which can be used to position the core in the measured
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orientation for marking.” Pet. 28. In other words, Petitioner argued that
Puymbroeck teaches or suggests the “varying” limitation; not that a portion
of the limitation should be ignored.
We recognize that the Petition includes a short claim construction
section in which Petitioner argues that the term “can be” in claims 16 and 17
should be interpreted as “may potentially be.” See Pet. 3. But even there,
Petitioner does not clearly suggest that the claim language, “such that a user
can position the core in the measured physical orientation for marking,”
could be wholly ignored, as Petitioner does in the Reply. See Pet. 3;
Reply 18. The Petition’s analysis of claim 16 does not clearly apply such a
construction. See Pet. 28. Petitioner’s argument in the Reply is new and
untimely because it could have and should have been raised in the Petition.
Second, even were we to find that Petitioner had adequately raised in
the Petition an argument that the claim language, “such that a user can
position the core in the measured physical orientation for marking,” could be
ignored, we determine that Petitioner does not persuasively support that
argument. “A claim construction that gives meaning to all the terms of the
claim is preferred over one that does not do so.” Merck & Co. v. Teva
Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005); Power Mosfet
Techs., LLC v. Siemens AG, 378 F.3d 1396, 1410 (Fed. Cir. 2004)
(“[I]nterpretations that render some portion of the claim language
superfluous are disfavored.”). The only legal authority that Petitioner cites
in support of its position is CIF Licensing v. Agere Sys., 565 F. Supp. 2d
533, 545–46 (D. Del. 2008). In that case, the disputed claim language was,
“such that a fractional number Q of bits per frame can be transmitted
without constellation switching.” CIF Licensing, 565 F. Supp. 2d at 545–46
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(emphasis added). The district court determined that the “plain meaning of
the phrase ‘can be’ is permissive, rather than mandatory.” Id. But the
district court did not find the disputed claim language to be irrelevant; the
district court recognized that the language “certainly indicates that the
invention is capable of achieving its objective without the use of
constellation switching.” Id. (emphasis omitted). Using that line of
reasoning, the “varying” step “indicates that the invention is capable of”
being used “such that a user can position the core in the measured physical
orientation for marking.” See id.; see also Ex. 1001 at 12:41–43 (claim 16).
As set forth above, the Petition fails to identify persuasive evidence that
Puymbroeck discloses a method in which a user can position a core in a
particular orientation for marking. For example, Petitioner fails to identify
any suggestion in Puymbroeck of a user marking a core, or how
Puymbroeck’s method would be used in that way.
Petitioner also cites new evidence in the Reply. E.g., Reply 19–24.
That new evidence, and the new arguments concerning that evidence, are not
merely support for arguments and evidence presented in the Petition; they
are attempts to fill significant gaps that could have—and should have—been
addressed in the Petition itself. The new arguments and evidence are
untimely. See TPG at 73. But even if they were timely, we would find them
unpersuasive because Petitioner does not adequately explain how the fact
that certain newly cited evidence may contemplate user rotation or marking
of a core would have led a person of ordinary skill in the art to incorporate
those steps into the method of Puymbroeck, which describes obtaining and
evaluating core orientation data in real time, rather than after a core has been
brought to the surface. E.g., Ex. 1005 at 4:49–53 (“[I]t is desirable to
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conduct such core logs immediately after core passage through the throat of
the core bit when the core is in its most pristine state and the least likely to
have become excessively contaminated by drilling mud or to have lost its
physical integrity.”). As set forth above, Petitioner has not persuasively
identified any indication in Puymbroeck that a core could or should be
marked in a way that identifies its orientation.
Additionally, even were we to agree with Petitioner that the state of
the art as a whole at the time of the invention indicates that a core’s
orientation could be evaluated and marked, see, e.g., Reply 22–24,
Petitioner’s position appears to be that a person of ordinary skill “could
have” applied that knowledge to Puymbroeck, not that a person of ordinary
skill in the art “would have been motivated” to apply that knowledge to
Puymbroeck. See Belden, 805 F.3d at 1073; see also Ex. 2009 at 83:23–84:7
(Heasley transcript) (stating that a person of ordinary skill “would
understand that you could do that if desired.” (emphasis added)).
Accordingly, although we find that the analytical gaps in the Petition
are too significant to be filled in the Reply without running afoul rules and
case law concerning new arguments in a reply, we also find that Petitioner’s
Reply fails to persuasively show that Puymbroeck teaches or suggests
limitation [16.7].
That determination, however, is not dispositive of Petitioner’s
proposed ground of unpatentability based on Puymbroeck and Enderlin.
Petitioner also argues that, if Puymbroeck alone does not teach the “varying”
step, Enderlin in combination with Puymbroeck teaches or suggests the
“varying” step. Pet. 28–30; Ex. 1003 at p.60.
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As we did in the Institution Decision, see DI at 27–29, and consistent
with Patent Owner’s arguments, see PO Resp. 37–41, we find unpersuasive
Petitioner’s reliance on Enderlin. Before turning to Petitioner’s specific
contentions, we first note, as we did in the Institution Decision, that the
differences between the apparatuses of Puymbroeck and Enderlin are
significant. DI at 22. Enderlin, for example, drills and removes its core
before sending a core orientation device into the borehole. See, e.g.,
Ex. 1007 at 6:1–12. Puymbroeck, by contrast, “conduct[s] such core logs
immediately after core passage through the throat of the core bit,” i.e., while
drilling. Ex. 1005 at 4:49–54. Additionally, scribe marks play an important
role in Enderlin’s orientation method, e.g., Ex. 1007 at 4:64–68, Fig. 2, but
Petitioner does not identify any role that scribe marks play in Puymbroeck’s
apparatus. The use of “plugs” cut from the sidewall of the borehole are also
significant to Enderlin’s method of core orientation, see, e.g., id. at 1:55–60,
6:46–56, Fig. 1, Fig. 2, but Petitioner does not identify any role that sidewall
plugs play in Puymbroeck’s method. Thus, although Puymbroeck and
Enderlin both concern core orientation and evaluation, they describe
distinctly and substantially different approaches.
Petitioner cites Enderlin’s statements concerning determination of
core orientation using sample data, retrieving a core sample “to the surface
so that the formation sample can be oriented,” the use of accelerometers to
continuously record borehole information, and rotation of a core around its
long axis to determine the azimuthal position of the scribe mark. Pet. 28–29.
Without explaining those disclosures in Enderlin, Petitioner asserts that “it
would have been obvious to a POSITA to vary the related measure of
Puymbroeck’s device upon rotation of the core so a user can position the
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core for marking.” Pet. 30. Petitioner asserts that “[a] POSITA would have
been motivated to do so because Enderlin teaches varying the device’s
related measure allows for accurate marking of the core’s original
orientation based on accelerometer data.” Id.
Petitioner’s assertions are conclusory and lack sufficient meaningful
explanation; therefore, we determine that Petitioner has not carried its
burden of showing that Enderlin in combination with Puymbroeck teaches or
suggests limitation [16.7]. See In re NuVasive, Inc., 842 F.3d 1376, 1381–
82 (Fed. Cir. 2016) (the “factual inquiry” into the reasons for “combin[ing]
references must be thorough and searching, and the need for specificity
pervades . . . .” (internal quotation marks omitted)). As above, the Petition
provides no meaningful discussion of its citations to the Heasley
Declaration, and Dr. Heasley’s testimony again appears largely to repeat the
analysis in the Petition.
In the Institution Decision, we observed that, although the disclosures
of Enderlin cited by Petitioner “reasonably suggest core orientation, and the
disclosure concerning rotation of a core around its long axis specifically
suggests core rotation . . . the apparatus of Enderlin is sufficiently different
from the apparatus of Puymbroeck that it is not reasonably clear what
Petitioner is proposing.” DI at 27. We also observed that Enderlin’s
disclosure concerning core rotation must be evaluated in context. Id.
Enderlin discloses:
By testing the plugs 33 and 34 for their paleomagnetic vectors,
the included angle between the plugs 33 and 34 can be measured.
Each plug is measured to determine the paleomagnetic vector.
Both plugs extend as radial lines from the axis of the well
borehole 11; since the azimuthal position of the plug 33 is known,
the core 30 can be rotated around its long axis until the
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paleomagnetic vector of core plug 34 is in the same direction as
the paleomagnetic vector of the plug 33. The azimuthal position
of the scribe mark 32 can then easily be determined.
Ex. 1007 at 6:46–56 (emphasis added); DI at 28. We noted that “[i]t does
not appear that Petitioner is proposing modification of Puymbroeck’s
apparatus to obtain the plugs used in Enderlin’s process, so it is not
immediately evident why Enderlin’s disclosures of rotating the core to orient
it are relevant to Puymbroeck’s apparatus and process.” DI at 28. Finally,
we observed that “it is not clear what modification Petitioner is proposing
that an ordinarily skilled artisan would have made to Puymbroeck’s
apparatus or method. Petitioner neither adequately explains how a person of
ordinary skill would make the proposed modification nor how the proposed
modification would benefit the apparatus and method of Puymbroeck.” DI
at 28–29.
We maintain that analysis for purposes of this Final Written Decision.
Moreover, we observe that Petitioner does not allege that Enderlin teaches a
“displaying” step within the scope of claim 16. See Pet. 27. Nor does
Petitioner’s claim chart specifically identify what the alleged “related
measure” of Enderlin is, or explain how any displayed related measure is
varied in Enderlin. See Pet. 28. The mere fact that Enderlin teaches core
orientation and borehole analysis fails to bridge those gaps. Additionally,
given that Enderlin’s core is marked (scribed) by its drilling apparatus and
removed from the earth before Enderlin’s core orientation device even enters
the borehole, it is unclear why or how a person of ordinary skill in the art
would have been motivated by Enderlin to achieve the recited “varying” step
of claim 16. In Enderlin, the core is marked as it is being drilled and before
the directional instrumentation enters the borehole. See Ex. 1007 at 4:64–
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5:18; 5:39–42. Petitioner does not persuasively identify a reason that
Enderlin would have motivated a person of ordinary skill to position and
mark a core in Puymbroeck.
Petitioner states for the first time in the Reply that “[m]odifying
Puymbroeck in view of Enderlin doesn’t involve any changes to
Puymbroeck’s apparatus. Rather, it simply adds to Puymbroeck’s
orientation process by having the technician rotate the core to a desired
orientation for marking.” Reply 25. Given that, as set forth above,
Petitioner has not adequately established that Enderlin itself teaches or
suggests the “varying” step, Petitioner also has not persuasively established
that Enderlin would have motivated a person of ordinary skill practicing
Puymbroeck to achieve that step.
For those reasons, we determine that Petitioner has not carried its
burden of showing that the combination of Puymbroeck and Enderlin
teaches or suggests the “varying” step of claim 16. Accordingly, we
conclude that Petitioner does not show by a preponderance of the evidence
that claim 16 would have been obvious over Puymbroeck and Enderlin.
b. Claims 17 and 18
Because claims 17 and 18 depend from claim 16 and therefore also
include the “varying” step, and because Petitioner’s analysis of claims 17
and 18 does not remedy the deficiencies described above, we likewise
conclude that Petitioner has not shown by a preponderance of the evidence
that claims 17 and 18 would have been obvious over Puymbroeck and
Enderlin.
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c. Claims 22 and 23
Independent claim 22 recites “[a] method of providing an indication
of a rotation orientation of a core relative to a body of material from which
the core has been extracted.” Ex. 1001 at 14:9–11. Claim 22 does not
include a “varying” step similar to that of claim 16. See id. at 14:9–31.
Accordingly, the deficiencies described above as to Petitioner’s analysis of
the “varying” step do not apply to Petitioner’s analysis of claims 22 and 23.
Claim 22 includes a step of “recording the rotational orientation of the
inner tube assembly at predetermined time intervals with reference to an
initial reference time during said drilling.” Ex. 1001 at 14:19–21. Claim 23
depends from claim 22 and thereby includes the same limitation. We refer
to this limitation as the “predetermined time interval” limitation. Claim 22
(and claim 23 through dependency) also includes a step of “recording the
specific time interval beyond the reference time at which the core sample
was separated from the body of material.” Id. at 14:22–24. We refer to this
limitation as the “specific time interval” limitation.
Petitioner alleges that Puymbroeck discloses the “predetermined time
interval” limitation. Pet. 35. Petitioner asserts: “Puymbroeck discloses
recording orientation data for the device and inner tube 306 in real-time via
instrumentation 336. A POSITA would understand Puymbroeck’s real-time
data transmission provides an initial reference time.” Pet. 35–36. Petitioner
cites and quotes disclosures in Puymbroeck (1) concerning directional
instrumentation that determines borehole position and orientation, (2) that
state data stored in Puymbroeck’s logging tool may be “periodically
retrieved,” and (3) that state that Puymbroeck’s directional instrumentation
“maintain[s] a record of the orientation of the core as it is being cut, so as to
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correlate the core data with the borehole data.” Pet. 36 (emphasis omitted,
alteration in original). Petitioner also cites various other portions and claims
of Puymbroeck, as well as the Heasley Declaration. As above, Petitioner
provides no meaningful discussion of any of the citations, and Petitioner
does not provide any explanation as to whether or how Dr. Heasley’s
testimony materially supplements the information that is in the Petition. We
have reviewed the cited portions of the Heasley Declaration and, as above, it
essentially repeats the information and citations in the Petition and provides
no more discussion of the quoted and cited portions of Puymbroeck than
does the Petition. See Ex. 1003 at pp. 73–75.
In its Response, Patent Owner argues that “[t]he Petition fails to show
how Puymbroeck allegedly discloses ‘predetermined time intervals,’” and
that, rather than teaching recording data at predetermined time intervals as
required by claim 22, “Puymbroeck teaches recording data ‘continuously’
and in ‘real-time.’” PO Resp. 34–35.
We agree with Patent Owner. We have carefully reviewed the
portions of Puymbroeck cited by Petitioner and described above, and
determine that Petitioner has not persuasively identified any disclosure of
recording data at predetermined time intervals. Additionally, neither the
Petition nor the Heasley Declaration directly allege that Puymbroeck teaches
or suggests the “predetermined time interval” limitation. Pet. 35–36 (not
using the word “interval” anywhere but in the quotation of the claim
language); Ex. 1003 at pp. 73–75 (same). Nor, in the Petition, does
Petitioner attempt to explain why data recording at predetermined time
intervals would have been obvious in view of Puymbroeck’s disclosures.
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Dr. Heasley describes Puymbroeck’s data recording as being “continuous[]”
and “in real-time.” Ex. 1003 at p.73.
Petitioner identifies a disclosure in Puymbroeck that data is
“periodically retrieved.” Pet. 36 (citing Ex. 1005 at 4:3–21) (emphasis
omitted); Reply 26. This disclosure of periodic retrieval of data, however, is
not adequate to meet the “predetermined time interval” limitation for at least
two reasons. First, the “predetermined time interval” limitation is not
concerned with data retrieval; it is concerned with data recording. Ex. 1001
at 14:22. Petitioner does not persuasively explain why data retrieval should
be considered to fall within the scope of data recording. Second, claim 22
does not merely require “periodic” recording; it requires recording “at
predetermined time intervals.” Something can be “periodic” without being
“at predetermined time intervals.” For example, in the context of drilling, it
is plausible that a data recording interval could be based on the number of
rotations of the drill bit, and that drill bit rotation speed could vary based on
the composition of the earth being drilled. Such a recording interval would
appear to be “periodic” without being “at predetermined time intervals.” Cf.
Sur-reply 20 (observing that a reference cited by Petitioner “teaches using an
‘external trigger input,’ such as a ‘pressure sensor,’ in order to ‘trigger a
reading.’” (citing Ex. 1019 at 29)). The Petition’s analysis of the
“predetermined time interval” limitation is not adequately developed to
show that Puymbroeck teaches or suggests this limitation without the Board
attempting to fill evident analytical gaps for Petitioner.
For the first time in the Reply, Petitioner argues that “the record
shows ‘continuous’ and ‘real-time’ orientation recording,” as disclosed by
Puymbroeck, “means recording data at predetermined intervals.” Reply 28.
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We find this new theory to be untimely because it could have, and should
have, been articulated in the Petition. See Sur-reply 17 (arguing that
Petitioner’s Reply arguments concerning the time interval limitations
“attempt to provide a new theory . . . and should be disregarded”). The
Petition fails to articulate a position that the term “predetermined time
interval” inherently encompasses “continuous” or “real-time” recording. See
generally Pet.; see also Ex. 2009 at 143:25–144:6, 146:12–19 (“Q: Where in
your declaration do you state that recording in realtime or continuously
satisfies the recording at predetermined time intervals element of claim 22?
A [Dr. Heasley]: I don’t have that stated in my declaration.”).
Even if this argument were timely, it would be unpersuasive. The
references cited by Petitioner for the first time in the Reply specify
predetermined time intervals. See Reply 28 (describing time intervals of
“every 2 minutes” and “every five seconds” (emphasis omitted)). Petitioner
identifies no such disclosure in Puymbroeck, and as Dr. Heasley
acknowledges, Puymbroeck includes no such disclosure. Ex. 2009 at
145:13–146:6; PO Resp. 35–36. Additionally, even if we were to accept
Petitioner’s apparent position that data recording described as “continuous”
is inherently periodic, something being “periodic” does not necessarily mean
that it is at a “predetermined time interval,” as explained above. Petitioner
has not addressed that, and we decline to do so in the first instance
ourselves.
Based on the full trial record, we determine that Petitioner has not
carried its burden of showing that Puymbroeck teaches or suggests the
“predetermined time interval limitation.”
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We next consider whether the Petition shows that the combination of
Puymbroeck and Enderlin teaches or suggests the limitation. We find that it
does not. Petitioner cites disclosures in Enderlin concerning “continuously
recording orientation data” and plotting that data. Pet. 37. We discern no
disclosure in the cited portions of Enderlin concerning recording data at
predetermined time intervals. Nor do we discern an adequate explanation in
the Petition as to how a data plot inherently implies recording data at
predetermined time intervals. Even if we were to assume that a data plot
implies that data has been recorded periodically, rather than continuously,
Petitioner does not explain why “periodic” data recording necessarily
implies data recording at predetermined time intervals. As set forth above, it
appears that there are ways in which data could be recorded periodically that
would not involve recording at predetermined time intervals.
For these reasons, we determine that Petitioner has not carried its
burden of showing that the combination of Puymbroeck and Enderlin
teaches or suggests the “predetermined time intervals” step of claims 22 and
23. Accordingly, we conclude that Petitioner has not shown by a
preponderance of the evidence that claims 22 and 23 would have been
obvious over Puymbroeck and Enderlin.
As an independent basis for our determination that Petitioner has not
shown that claims 22 and 23 would have been obvious over Puymbroeck
and Enderlin, we also find that Petitioner fails to establish that the prior art
teaches or suggests the “specific time interval” limitation of claims 22 and
23. We have reviewed the cited portions of Puymbroeck and Enderlin, see
Pet. 37–38, and we do not discern any disclosure of recording a specific time
interval, much less the specific time interval at which the core is separated
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from the earth. We recognize that Puymbroeck discloses “develop[ing] and
maintain[ing] a record of the orientation of the core as it is being cut,”
Ex. 1005 at 10:38–39, but that disclosure says nothing about recording a
specific time interval. Moreover, we understand the word “cut” in that
disclosure, and in Puymbroeck generally, to be synonymous with “drilled,”
rather than as being synonymous with “separated from” the earth. See, e.g.,
id. at code (57) (“the core being cut as it proceeds into the inner tube
assembly”), 4:41–42 (similar). As above, there is an evident gap between
the cited disclosures and the actual requirements of the claim, and the
Petition does not adequately fill it.
The Petition also does not persuasively explain how Enderlin teaches
or suggests the “specific time interval” limitation. Petitioner’s citations to
Enderlin do not on their face say anything about recording a time interval.
See Pet. 38. Additionally, and as explained above, the instrumentation (e.g.,
accelerometers) referred to in the quoted portions of Enderlin enters the
borehole after the core has been separated from the earth and removed from
the borehole. Thus, it is not adequately clear how the cited disclosures teach
or suggest recording a time interval at which the core is separated from the
earth.
We recognize that, after citing the evidence discussed above, the
Petition includes a conclusory assertion that “it would have been obvious to
have Puymbroeck’s device record the specific time interval the core
separates from the ground.” Pet. 38. But as noted above, we fail to discern
where either cited reference includes a discussion of recording specific time
intervals, and the Petition’s analysis fails to bridge the gap from what is
actually disclosed by the references to the Petition’s assertion that the
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“specific time interval” limitation would have been obvious over the prior
art. Dr. Heasley’s declaration, cited by Petitioner in a footnote without
accompanying explanation, see Pet. 38 n.67, relies on the same evidence
cited by the Petition and is similarly unpersuasive. See TQ Delta, 942 F.3d
at 1359 (noting that the Federal Circuit has “repeatedly recognized that
conclusory expert testimony is inadequate to support an obviousness
determination on substantial evidence review.”).
On the record before us, we determine that Petitioner has not carried
its burden of showing that the prior art teaches or suggests the “specific time
interval” limitation of claims 22 and 23. That determination provides an
independent basis for our conclusion that Petitioner has not shown by a
preponderance of the evidence that claims 22 and 23 would have been
obvious over Puymbroeck and Enderlin.
D. OBVIOUSNESS OF CLAIMS 16–18, 22, AND 23 IN VIEW OF PUYMBROECK
AND SCOTT.
In the Petition, Petitioner asserts that claims 16–18, 22, and 23 would
have been obvious over Puymbroeck and Scott. Pet. 41–56. In the
Institution Decision, we determined on the preliminary record that Petitioner
did not adequately establish that Scott qualifies as prior art to the challenged
claims. DI at 32–37. Petitioner does not address Scott in the Reply. See
generally Reply. At the oral hearing, Petitioner confirmed that it is no
longer relying on Scott. Hearing Tr. 15:25–16:1 (Q (The Board): “Is
Petitioner abandoning reliance on the Scott reference?” A (Petitioner):
“Yes.”).
Accordingly, this proposed ground of unpatentability reduces to
obviousness over Puymbroeck alone. Because, as set forth above, we
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determine that the Petition fails to establish that Puymbroeck renders
obvious the subject matter of the disputed claims, we determine that the
Petition fails to establish that the subject matter of the disputed claims would
have been obvious on the basis of this proposed ground of unpatentability.
E. OBVIOUSNESS OF CLAIMS 16–18, 22, AND 23 IN VIEW OF SKOPEC ’92
AND ENDERLIN
Petitioner asserts that claims 16–18, 22, and 23 would have been
obvious in view of Skopec ’92 and Enderlin. Pet. 57–73. For the reasons
set forth below, we determine that Petitioner has not carried its burden of
showing that the challenged claims would have been obvious to a person of
ordinary skill in the art. See Harmonic, 815 F.3d at 1363 (“In an IPR, the
petitioner has the burden from the onset to show with particularity why the
patent it challenges is unpatentable.”).
1. Skopec ’92 (Ex. 1006)
Skopec ’92 is an article that published in the Society of Petroleum
Engineers Drilling Engineering journal. Ex. 1006. Skopec ’92 discloses a
drilling apparatus that comprises a fiberglass inner barrel and “a slip
scribe . . . used in conjunction with an electronic multishot instrument
(EMI).” Id. at 16; see also id. Fig. 8. The EMI “is a solid-state survey
device that uses an array of accelerometers for determination of inclination.
Magnetometers determine orientation with respect to geographic north.” Id.
at 1.

6 Our pinpoint citations to Skopec ’92 refer to the page number stamp added
by Petitioner to the lower right corner of each page.
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Skopec ’92 discloses that its EMI periodically records orientation data
during coring, which is retrieved by a technician when the inner tube and
EMI return to the surface. Id. at 3, 4 (Fig. 6), 6. A computer may be used to
optimize “core orientation parameters.” Id. at 3.
2. Analysis
As we did in the Institution Decision, DI at 40–43, we focus our
analysis on the “maintaining” step of claim 16. Petitioner argues that
“Skopec [’92] discloses that its EMI strives to maintain the core’s physical
orientation stationary relative to the EMI’s orientation so the EMI can record
the core’s movement in space.” Pet. 62. Petitioner argues that “[t]his
stationary alignment is due, in part, to inwardly-facing projections on the
inner tube that grip the core being formed therein and cut scribe lines on the
core. The EMI connects to the inner tube to remain stationary to the core
during coring.” Id.
For support, Petitioner cites statements in Skopec ’92 that describe,
e.g., “alignment of the [scribe] knives cutting the core (slip scribe) and the
survey instrument” as being “necessary for accurate core orientation data.”
Pet. 63 (citing Ex. 1006 at 1–2). Petitioner also cites Skopec ’92’s
disclosure of the use of “a laser alignment system (LAS)” that “ensure[s]
positive alignment of the coring assembly.” Id. Petitioner also cites
Figure 10 of Skopec ’92, which illustrates a “[c]ore section with orientation
grooves,” and Figure 12 of Skopec ’92, which illustrates a “[c]omparison of
EMI and observed principal-scribe-line rotation.” Id. at 63–64. Petitioner
also cites the Heasley Declaration, which in turn cites essentially the same
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disclosures of Skopec ’92 as the Petition. See Ex. 1003 at pp. 113–16
(¶ 101).
For reasons consistent with Patent Owner’s arguments, see PO
Resp. 44–48, we determine that the Petition’s analysis does not adequately
establish that Skopec ’92 teaches or suggests the “maintaining” step of
claim 16. A disclosure of aligning any particular element of the coring
apparatus with another element of the coring apparatus does not, of itself,
suggest that those elements of the coring apparatus also have a fixed
orientation relative to the core.
On the contrary, certain aspects of Skopec ’92 strongly indicate that
Skopec ’92’s inner tube does not have an orientation that is fixed relative to
the core. For example, Figure 11 depicts and describes a core where the
groove rotation angle changes with the depth of the core. See Ex. 1006 at 5.
Table 1 includes similar data. See id. at 3. In describing its apparatus,
Skopec ’92 observes that “[l]ow rotary speeds . . . were used to . . . prevent
excessive inner-barrel rotation.” Id. at 2 (emphasis added). Although the
scribe knives of Skopec ’92 are described as “be[ing] sharp and set to a
tolerance that will aid in catching the core,” Skopec ’92 also states that
“[i]mproper knife tolerance can lead to . . . additional rotation of the inner
barrel,” which indicates that even proper knife tolerance yields some inner
barrel rotation. See id. at 6; see also id. (section titled “Scribe Rotation or
Discontinuity”). Thus, even accepting that Skopec ’92’s scribe knives assist
in limiting inner barrel rotation, Skopec ’92 indicates that they do not
prevent rotation, and Skopec ’92 does not appear to disclose a method or
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apparatus that maintains the orientation of the core stationary with respect to
an inner tube or a core orientation device, as required by the claims.
Consistent with those disclosures of Skopec ’92, during examination
of the application that resulted in the ’055 patent, the Examiner found that a
related Skopec reference, Skopec ’90, which includes relevant disclosures
nearly identical to the disclosures of Skopec ’92 cited by Petitioner, see
Prelim. Resp. 17–20 (table comparing Skopec ’92 and Skopec ’90), “does
not disclose or suggest the improvement of the instant application
comprising maintaining a rotational orientation of a core stationary with
respect to the rotational orientation of the core orientation device.” Ex. 1002
at 246. The Examiner made that finding in response to an argument from
the applicant that Skopec ’90’s disclosures of core groove rotation during
drilling show that “the core orientation device is not stationary with respect
to the core.” Id. at 225–26 (emphasis omitted).
The Petition fails to acknowledge or address those relevant
disclosures in Skopec ’92, which—consistent with the Examiner’s analysis
during prosecution—suggest that Skopec ’92’s core orientation device and
inner tube are not maintained stationary with respect to the core.
In its Reply, Petitioner asserts for the first time, without elaboration or
meaningful discussion of claim construction, that the “maintaining” step
encompasses a method in which “the orientation device has a fixed
orientation relative to the core for at least some of the drilling operation.”
Reply 31 (emphasis added). Petitioner emphasizes that, in Figure 12 of
Skopec ’92, a vertical line indicates that, for a brief period during drilling,
the core was stationary relative to the inner tube. Id. at 32 (reproducing and
annotating Figure 12 of Skopec ’92).
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Petitioner’s argument is inadequate because Petitioner fails to provide
any discussion of the proper interpretation of the “maintaining” limitation in
either the Petition or the Reply. See 37 C.F.R. § 42.104(b)(3) (requiring a
petition to identify “[h]ow the challenged claim is to be construed.”); see
also Hearing Tr. 16:4–9 (Petitioner: “There’s no explicit claim construction
discussion [of the “maintaining” step] in the Petition.”). It is not clear from
the plain language of claim 16 that the “maintaining” step encompasses
fleeting or momentary periods during drilling where the core happens to
remain stationary relative to the core orientation device. On the contrary,
the word “maintain” seems to imply some level of sustained alignment of
the core and the core orientation device. Indeed, it is unclear that it would
even be possible to orient a core sample using the method of claim 16 if the
core and the orientation device were only aligned for brief periods of the
drilling process. The Specification contemplates, for instance, “a
mechanism for preventing rotational movement about the length of the core
sample, relative to the core orientation device.” Ex. 1001 at 3:22–24.
For Petitioner to prevail on this issue, the Board would be required in
the first instance to provide a claim construction analysis of the
“maintaining” term in support of Petitioner’s position. We decline to do so.
We determine that Petitioner fails to carry its burden of showing that
Skopec ’92 teaches or suggests the “maintaining” step in view of Petitioner’s
failure to provide any meaningful discussion of why the “maintaining” step
should be interpreted as encompassing the type of momentary alignment
allegedly shown by Figure 12 of Skopec ’92.
We next consider whether Petitioner has adequately shown that the
combination of Skopec ’92 and Enderlin teaches or suggests the
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“maintaining” limitation. We determine that it does not. Petitioner argues
that “Enderlin discloses maintaining stationary the orientations of the core
and inner tube to etch a straight scribe mark for accurate orientation marking
at the surface.” Pet. 65. Petitioner argues that “it would have been obvious
to a POSITA to maintain Skopec’s core orientation [device] stationary with
respect to the [core’s] orientation or to re-orient a scribed core back to
stationary alignment” “because keeping stationary the core’s and device’s
orientations creates a straight scribe mark and allows for more accurate
marking of the core’s orientation at the surface.” Id.
That argument is inadequate to carry Petitioner’s burden. As
described above, Skopec ’92 indicates that its apparatus and method do not
maintain alignment of the core and inner tube. E.g., Ex. 1006 at 2, 3, 5 (Fig.
11), 6. Petitioner does not propose any modification of Skopec ’92 in view
of Enderlin that would allow Skopec ’92’s method or apparatus to achieve
the maintaining step. We explained in the Institution Decision that
Petitioner’s proposed combination was unpersuasive for the same reasons
that Petitioner’s proposed combination of Enderlin with Puymbroeck was
unpersuasive; i.e., it is unclear from the Petition what modification Petitioner
is proposing to achieve the disputed limitation. See DI at 43. In the Reply,
Petitioner argues only that Skopec ’92 itself teaches or suggests the
“maintaining” limitation and does not address the concern identified by the
Board in the Institution Decision or otherwise clarify the proposed
combination of Skopec ’92 and Enderlin. Reply 30–33.
On the complete trial record, we determine that the Petition fails to
adequately show that the combination of Skopec ’92 and Enderlin teaches or
suggests the “maintaining” limitation of claim 16.
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Because claims 17 and 18 depend from claim 16 and therefore also
include the “maintaining” step, and because Petitioner’s analysis of
claims 17 and 18 does not remedy the deficiency described above, we
likewise conclude that Petitioner has not shown by a preponderance of the
evidence that claims 17 and 18 would have been obvious over Skopec ’92
and Enderlin.
Claims 22 and 23 likewise include a “maintaining” step. Although the
“maintaining” step of claims 22 and 23 differs somewhat from that of
claim 16, the differences are not material to the analysis set forth above, and
the Petition’s analysis of claims 22 and 23 does not remedy the deficiency
described above. Accordingly, we determine that Petitioner has not shown
by a preponderance of the evidence that claims 22 and 23 would have been
obvious over Skopec ’92 and Enderlin.
F. OBVIOUSNESS OF CLAIMS 16–18, 22, AND 23 IN VIEW OF SKOPEC ’92
AND SCOTT
As noted above, at the oral hearing, Petitioner abandoned reliance on
Scott. Hearing Tr. 15:25–16:1. Accordingly, this proposed ground reduces
to obviousness over Skopec ’92 alone. Because we conclude above that the
Petition fails to establish that the challenged claims would have been
obvious over Skopec ’92, we determine that Petitioner has not carried its
burden as to this proposed ground of unpatentability.
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G. PETITIONER’S ALLEGATIONS REGARDING PATENT OWNER’S
DECLARANT
Petitioner alleges that Patent Owner’s declarant, Dr. Tapson, “lacks
credibility and impartiality.”7 Reply 10–13. Petitioner alleges that
Dr. Tapson is a named inventor on patent applications “stemming from
projects for” Imdex Ltd., Patent Owner’s parent company, and that
Dr. Tapson failed to disclose those applications in this case. Id. Petitioner
also alleges that Dr. Tapson “previously performed expert witness work for
Imdex.” Id. Petitioner asserts that “Dr. Tapson’s opinions should be
afforded little to no weight.” Id.
Patent Owner responds that, in Australian cases involving similar
subject matter, “Australian tribunals have repeatedly rejected these same
bias allegations that Petitioner now advances here.” Sur-reply 24. Patent
Owner also notes that Petitioner has not alleged that Dr. Tapson has any
interest in Patent Owner, Imdex, or the outcome of this proceeding. Id.
Patent Owner also indicates that Dr. Tapson was named as an inventor on
Imdex applications “without his knowledge.” Id. at 26.
As an initial matter, we observe that the outcome of this case does not
hinge on Dr. Tapson’s testimony. As set forth above, our decision is based
on deficiencies in the Petition that are apparent without reliance on
Dr. Tapson’s testimony. Accordingly, even were we to limit the weight

7 In a footnote in the Reply, Petitioner also states that “Dr. Tapson’s
credentials weren’t appropriate for a POSITA or expert.” Reply 11 n.36.
Petitioner provides no elaboration on this statement and did not file a motion
to exclude. Petitioner’s naked assertion in a footnote in the Reply warrants
no consideration from the Board beyond noting that Petitioner has not
requested any relief on the basis of this assertion, nor shown that it is entitled
to any relief.
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attributed to Dr. Tapson’s testimony, the outcome of this case would be the
same.
In any event, we decline to reduce the weight attributable to
Dr. Tapson’s testimony on the basis of Petitioner’s arguments. Petitioner
does not address the fact that Dr. Tapson was allegedly unaware that he had
been named as an inventor on Imdex patent applications, and Petitioner does
not allege that Dr. Tapson has an interest in any party or the outcome of this
case. Moreover, we note that an Australian federal court found Dr. Tapson
to be reliable. See Ex. 2006 ¶ 57.
We have taken Petitioner’s concerns into account in our evaluation of
this case, but we decline to reduce the weight attributable to Dr. Tapson’s
testimony.
III. CONCLUSION
After reviewing the record and weighing the evidence offered by both
parties, we determine that Petitioner has not shown that any of the
challenged claims is unpatentable.
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In summary:
Claims 35 U.S.C. § Reference(s)
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
16–18,
22, 23
103(a)
Puymbroeck,
Enderlin
16–18, 22, 23
16–18,
22, 23
103(a)
Puymbroeck,
Scott
16–18, 22, 23
16–18,
22, 23
103(a)
Skopec ’92,
Enderlin
16–18, 22, 23
16–18,
22, 23
103(a) Skopec ’92, Scott 16–18, 22, 23
Overall
Outcome
16–18, 22, 23

IV. ORDER
It is hereby:
ORDERED that claims 16–18, 22, and 23 of the ’055 patent have not
been shown to be unpatentable;
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:
Joseph F. Edell
Alan M. Fisch (pro hac vice)
FISCH SIGLER LLP
joe.edell.ipr@fischllp.com
alan.fisch.ipr@fischllp.com

For PATENT OWNER:

David A. Garr
Peter P. Chen
COVINGTON & BURLING LLP
dgarr@cov.com
pchen@cov.com