Nabors Drilling Technologies USA, Inc.

Patent Trials and Appeals Board

Jan 4, 2022

IPR2021-01044 (P.T.A.B. Jan. 4, 2022)

Trials@uspto.gov Paper: 11 571-272-7822 Date: January 4, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD HELMERICH & PAYNE INTERNATIONAL DRILLING COMPANY, HELMERICH & PAYNE TECHNOLOGIES, LLC, and MOTIVE DRILLING TECHNOLOGIES, INC., Petitioner, v. NABORS DRILLING TECHNOLOGIES USA, INC., Patent Owner. IPR2021-01044 Patent 8,528,663 B2 Before KEN B. BARRETT, MATTHEW S. MEYERS, and SEAN P. O’HANLON, Administrative Patent Judges. MEYERS, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 35 U.S.C. § 314 IPR2021-01044 Patent 8,528,663 B2 2 I. INTRODUCTION A. Background and Summary Helmerich & Payne International Drilling Company, Helmerich & Payne Technologies, LLC, and Motive Drilling Technologies, Inc. (collectively, “Petitioner”) filed a Petition to institute an inter partes review of claims 12-20 (the “challenged claims”) of U.S. Patent 8,528,663 B2 (Ex. 1001, the “’663 patent”). Paper 2 (“Petition” or “Pet.”). Nabors Drilling Technologies USA, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Preliminary Response” or “Prelim. Resp.”). With our authorization (Paper 8), Petitioner filed a Reply (Paper 9, “Reply”) and Patent Owner filed a Sur-reply (Paper 10, “Sur-reply”) to address arguments concerning discretionary denial under 35 U.S.C. § 314(a). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’663 patent. Accordingly, we do not institute an inter partes review of the challenged claims. IPR2021-01044 Patent 8,528,663 B2 3 B. Real Parties-in-Interest Petitioner identifies itself as the real party-in-interest. Pet. 1. Patent Owner names itself, and Nabors Corporate Services, Inc., as the real parties- in-interest. Paper 5, 2. C. Related Proceedings The parties identify, as matters involving or related to the ’663 patent, Nabors Drilling Techs. USA, Inc. v. Helmerich & Payne Int’l Drilling Co. et al., Case No. 3:20-CV-03126 (N.D. Tex.). Pet. 2; Paper 5, 2. We also note that there are several related inter partes review proceedings: IPR2021-00621, IPR2020-00671, IPR2021-00672, IPR2021-00897, IPR2021-01018, and IPR2021-01043. D. The ’663 Patent The ’663 patent is titled “Apparatus and Methods for Guiding Toolface Orientation.” Ex. 1001, code (54). The ’663 patent describes that during deep underground drilling, “the drill bit is rotated by a drilling motor mounted in the drill string proximate the drill bit, and the drill string may or may not also be rotated by the rotary drive mechanism.” Id. at 1:22-25. The ’663 patent describes that “[d]irectional drilling requires real-time knowledge of the angular orientation of a fixed reference point on the circumference of the drill string in relation to a reference point on the wellbore.” Id. at 2:4-7. This is because “drilling with a steerable motor requires knowledge of the toolface so that the pads can be extended and retracted when the drill string is in a particular angular position, so as to urge the drill bit in the desired direction.” Id. at 2:10-14. The ’663 patent describes “a drilling apparatus, a receiving apparatus, and a display apparatus,” where the “receiving apparatus is adapted to receive electronic data on a recurring basis, wherein the electronic data IPR2021-01044 Patent 8,528,663 B2 4 includes quill position data, at least one of actual gravity-based toolface orientation data and actual magnetic based toolface orientation data, and recommended toolface orientation data.” Id. at code (57), 2:66-3:4. The “human-machine interface 100” (“HMI”) of the system of the ’663 patent is “utilized by a human operator during directional and/or other drilling operations to monitor the relationship between toolface orientation and quill position.” Id. at 4:65-67. Figure 1 of the ’663 patent, reproduced below, shows an example of HMI 100. As shown in Figure 1, HMI 100 includes magnetic-based toolface orientation symbols 110, gravity-based toolface orientation symbols 115, quill position symbols 120, and rings 105, where “each ring . . . may represent a measurement iteration or count, or a predetermined time interval, or otherwise indicate the historical relation between the most recent measurement(s) and prior measurement(s).” Id. at 5:50-6:9. Indicator 135 IPR2021-01044 Patent 8,528,663 B2 5 shows “current or most recent toolface orientation,” and “may also display the current toolface measurement mode (e.g., gravitational vs. magnetic) . . . the time at which the most recent toolface measurement was performed or received, as well as the value of any parameter being monitored by a second channel at that time” (here, depth of the drill). Id. at 6:37-50. The ’663 patent describes several possible meanings of “quill position,” which include the rotational orientation of the string, the rotational orientation of the mid-point between maximum back-and-forth rocking rotation of the drill string, or the rotational orientation of a drive element, often measured at the surface of the drilling operation. Id. at 14:24-48. E. Illustrative Claim Petitioner challenges claims 12-20 of the ’663 patent. Pet. 1. Claim 12 is the sole independent challenged claim, and is reproduced below, with Petitioner’s bracketing, labels, and formatting. 12. [12p] A method of directing a drilling operation in a wellbore comprising: [12a] operating a drilling apparatus: [12b] receiving and displaying electronic data, wherein the electronic data includes quill position data, actual toolface orientation data, and recommended toolface orientation data; and [12c] adjusting the drilling apparatus to move the toolface toward the recommended toolface orientation. Ex. 1001, 16:17-25; Ex. 1013. F. Prior Art and Asserted Grounds Petitioner asserts that claims 12-20 of the ’663 patent are unpatentable on the following grounds: IPR2021-01044 Patent 8,528,663 B2 6 Claims Challenged 35 U.S.C. § References 12-14, 19 103 Haci1, Pinckard2 14-16, 19 103 Haci, Pinckard, Hamilton3 17, 18 103 Haci, Pinckard, Hamilton, Mason4 20 103 Haci, Pinckard, Cobern5 Petitioner also relies on the Declaration of Mr. Robert Schaaf (Ex. 1005, “the Schaaf Declaration”) in support of its arguments. II. ANALYSIS A. Legal Standards “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which that subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 1 US 7,810,584 B2, issued Oct. 12, 2010 (Ex. 1006, “Haci”). 2 US 2002/0104685 A1, published Aug. 8, 2002 (Ex. 1007, “Pinckard”). 3 US 7,588,100 B2, issued Sept. 15, 2009 (Ex. 1009, “Hamilton”). 4 C. J. Mason, et al., “The Perfect Wellbore!”, SPE 95279, Society of Petroleum Engineers, 2005 (Ex. 1008, “Mason”). 5 US 4,761,889, issued Aug. 9, 1988 (Ex. 1010, “Cobern”). IPR2021-01044 Patent 8,528,663 B2 7 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness when presented. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). In analyzing the obviousness of a combination of prior art elements, it can be important to identify a reason that would have prompted one of skill in the art “to combine . . . known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418. A precise teaching directed to the specific subject matter of a challenged claim is not necessary to establish obviousness. Id. Rather, “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Id. at 420. Accordingly, a party who petitions the Board for a determination of unpatentability based on obviousness must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (quotations and citations omitted). We analyze the challenges presented in the Petition in accordance with the above-stated principles. B. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; IPR2021-01044 Patent 8,528,663 B2 8 prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (internal quotation marks and citation omitted). Petitioner asserts that at the time of the invention a person of ordinary skill in the art (“POSITA”) “would have had a Bachelor of Science degree in engineering (e.g., mechanical, petroleum, or chemical engineering) or an equivalent degree. A POSITA would also have had, through education or experience, familiarity with directional drilling principles.” Id. Petitioner further asserts that “[a]dditional education could compensate for less practical experience and vice versa.” Id. Patent Owner does not address the level of skill in the art, or otherwise dispute Petitioner’s assertion. See generally Prelim. Resp. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). Accordingly, for purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. C. Claim Construction In an inter partes review proceeding for a petition filed on or after November 13, 2018, a patent claim shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b).6 This rule adopts 6 The Petition in this case was accorded a filing date of June 11, 2021. See Paper 3, 1. IPR2021-01044 Patent 8,528,663 B2 9 the same claim construction standard used by Article III federal courts, which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Under that standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. See Phillips, 415 F.3d at 1312-13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312-17). Petitioner submits that the term “quill position” is defined broadly by the ’663 patent, but does not provide an explicit construction of the term. Pet. 21-22 (citing Ex. 1001, 14:26-43). Patent Owner does not address Petitioner’s contentions or otherwise address claim construction. See generally Prelim. Resp. For purposes of this Decision, we determine that no construction of any term is necessary to resolve the issues presented by the arguments and evidence of record to reach a decision on institution. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “only to the extent necessary to resolve the controversy” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). IPR2021-01044 Patent 8,528,663 B2 10 D. Alleged Obviousness over Haci and Pinckard Petitioner asserts that claims 12-14 and 19 are unpatentable as obvious over Haci and Pinckard. Pet. 22-57. Petitioner also relies on the testimony of Mr. Schaaf to support its arguments. Id. Patent Owner responds to Petitioner’s assertions. Prelim. Resp. 12-17. 1. Overview of Haci (Ex. 1006) Haci is titled “Method of Directional Drilling with Steerable Drilling Motor.” Ex. 1006, code (54). Haci relates to oil and gas well drilling. Id. at 1:22-23. Haci explains that a “steerable motor” has a housing that “includes a slight bend, typically 1/2 to 3 degrees along its axis in order to change the trajectory of [a] bore hole.” Id. at 1:56-58. There are two drilling modes when using such a motor: rotary drilling, or slide drilling. Id. at 1:59-67. Rotary drilling “is used to maintain the trajectory of the bore hole along the existing azimuth (geodetic direction) and inclination. The drill string is rotated from the earth’s surface, such that the steerable motor rotates with the drill string.” Id. at 1:61-65. In slide drilling, “the drill string is not rotated. The direction of drilling, or the change in bore hole trajectory, is determined by the tool face angle of the drilling motor. The tool face angle is determined by the direction to which the bend in the motor housing is oriented.” Id. at 1:67-2:5. “The tool face can be adjusted from the earth’s surface by turning the drill string and obtaining information on the tool face orientation from measurements made in the bore hole.” Id. at 2:5-9. Haci describes the practice of “rocking,” where the drill string is rotated back and forth to reduce friction in the well. Id. at 2:51-57. Haci further describes that tool face angle information is measured downhole and IPR2021-01044 Patent 8,528,663 B2 11 displayed to the drill operator, who attempts to maintain the proper tool face angle by manually applying torque corrections to the drill string. Id. at 3:5-10. However, “[s]ubstantial reactive torque is stored in the drill string during both sliding and rotary drilling modes,” because “the drill string may be twisted several revolutions between the surface and the drilling motor downhole.” Id. at 3:19-23. Thus, Haci identifies that “a need exists for an efficient method of and an apparatus for directional drilling with a steerable drilling motor that does not depend upon a rocking technique.” Id. at 3:50-54. Haci describes a drilling rig, with top drive 27, connected to instrumented sub top 29, connected to drill string 35. Id. at 4:49-52. Sub top 29 includes “surface drill string torque sensor 53,” and “surface drill pipe orientation sensor 65 that provides measurements of drill string angular position or surface tool face.” Id. at 4:52-57. Steerable drilling motor 41 is connected near the bottom of the well, and the “driller can operate the top drive 27 to change the tool face orientation of the drilling motor 41 by rotating the entire drill string 35.” Id. at 5:16-37. Haci provides information about the various sensors and positions through a “driller’s screen 71,” illustrated in Figure 3, which is reproduced below. IPR2021-01044 Patent 8,528,663 B2 12 Figure 3 illustrates driller’s screen 71, and shows tool face indicator 73, pressure indicators 75, 77, and 79, Rotary Steerable Motor Control Set 85, with both up arrow and down arrow controls and numerical displays for trigger value 87, trigger value range 89, left torque value 91, idle percent 93, slide time 95, and rotate time 97. Id. at 6:25-67. Figure 3 also shows an “actual trigger indicator 101 [which] displays the measured result for the driller,” and a “trigger value selector 105 [which] allows the driller to choose which type of trigger to use.” Id. at 6:67-7:2. Haci describes that its method: uses triggers to determine when to take a specific action, such as changing from the first to the second drill string rotation rate. For example, a first target is checked to determine when the drilling at the first rotation rate has gone on long enough. Then a first trigger is checked to determine when to change to the second rotation rate. Then, a second target is checked to determine when drilling at the second rotation rate has gone on long enough. The IPR2021-01044 Patent 8,528,663 B2 13 method returns to the first rotation rate to continue the process of alternating between the two drilling rotation rates. Id. at 7:25-34. Haci explains that “[i]n one embodiment, the first trigger for determining when to change from the first rotation rate to the second rotation rate is a measurement of tool face angle.” Id. at 7:65-67, 9:37-38. In another embodiment, Haci describes that torque can be a trigger. See id. at 9:58-60 (“In another embodiment, torque can be a trigger. Torque may be measured at the bottom-hole, at the surface, or anywhere in the bore hole.”). 2. Overview of Pinckard (Ex. 1007) Pinckard is titled “Method of and System for Controlling Directional Drilling.” Ex. 1007, code (54). Pinckard relates to controlling directional oil and gas well drilling. Id. ¶ 2. Pinckard describes determining a relationship between a first drilling control variable and drill bit face angle, using the relationship to determine a predicted drill bit face angle, and using the predicted drill bit face angle to achieve a target drill bit face angle by calculating a surface drill string correction angle, which is displayed. Id. ¶ 9. The information is displayed on display screen 63 of Figure 3, which is reproduced below. IPR2021-01044 Patent 8,528,663 B2 14 Figure 3 shows display screen 63, which includes target progress display 65, current progress display 67, target face angle display 73, and current face angle display 75, and angular correction display 77. Id. ¶¶ 28, 31, 32. Pinckard discloses that “target face angle is a value that is input according to the directional drilling plan for the well.” Id. ¶ 31. “Angular correction display 77 displays a recommended angular correction to apply to the drill string with the top drive in order to bring the current face angle to the target face angle.” Id. ¶ 32. 3. Analysis of Claim 12 Petitioner asserts claim 12 would have been obvious over Haci and Pinckard. Pet. 22-43. We use Petitioner’s notations to identify the claim elements, and focus on the dispositive claim limitation. IPR2021-01044 Patent 8,528,663 B2 15 a) 12[b] receiving and displaying electronic data, wherein the electronic data includes quill position data, actual toolface orientation data, and recommended toolface orientation data (1) Petitioner’s Contentions Petitioner asserts that the combination of Haci and Pinckard teaches the subject matter of limitation 12[b]. Pet. 25-40 (citing Ex. 1005 ¶¶ 98-110). More particularly, Petitioner asserts that Haci discloses “receiving and displaying quill position data and actual toolface orientation data” (id. at 25-36), but acknowledges that “Haci does not explicitly disclose receiving and displaying recommended toolface orientation data.” Id. at 26. To address this deficiency, Petitioner relies on Pinckard. Id. at 36-40. With respect to “quill position data,” Petitioner first asserts that one of ordinary skill in the art “would have recognized that Haci’s surface toolface angle teaches the claimed quill position data.” Pet. 28 (citing Ex. 1005 ¶ 101). Petitioner then contends that Haci’s directional drilling system includes drill pipe orientation sensor 65 “that measures surface toolface angle (i.e., quill position data).” Pet. 27 (citing Ex. 1006, 4:55-57); see also id. at 30 (citing Ex. 1006, 6:4-5 (“Haci teaches that the measured outputs of the drill pipe orientation sensor are ‘received at or otherwise operatively coupled to a processor 55.’”) (emphases omitted)). Petitioner further contends that Haci discloses displaying “surface toolface angle (i.e., quill position data).” Pet. 31 (citing Ex. 1005 ¶ 103). Petitioner presents an annotated version of Haci’s Figure 3, which is reproduced below, in support of its contention. IPR2021-01044 Patent 8,528,663 B2 16 Haci’s Figure 3 is a pictorial view of driller’s screen 71, and Petitioner’s annotation identifies “actual trigger indicator 101,” which Petitioner argues constitutes displaying “surface toolface angle (i.e., quill position data).” Id. at 31 (citing Ex. 1005 ¶ 103). To support its argument, Petitioner asserts that Haci’s control system uses triggers to determine when to change between a first and second rotation rate to control the trajectory of the wellbore. See Ex. 1006, 3:58-62; Supra [Pet. 14-17]. Haci describes that “[a]n actual trigger indicator 101 displays the measured result for the driller” and “trigger value selector 105 allows the driller to choose which type of trigger to use.” Id. at 31-32 (citing Ex. 1006, 6:67-7:2). Petitioner then asserts that “Haci teaches two types of parameters that can be used for the first trigger value: toolface angle and torque.” Pet. 32 (citing Ex. 1006, 7:65-67, 9:37-38, 9:58). With reference to Haci’s Figure 3, Petitioner concludes that one of ordinary skill in the art “would have recognized that (i) the ‘Surface’ setting on the ‘trigger value selector 105’ is surface toolface angle and (ii) the ‘194’ IPR2021-01044 Patent 8,528,663 B2 17 value on the ‘actual trigger indicator 101’ is surface toolface angle measured in degrees (i.e. quill position).” Pet. 33 (citing Ex. 1005 ¶ 104; Ex. 1006, 6:67-7:2). (2) Patent Owner Contentions Patent Owner asserts that “[t]he Petition has not demonstrated that displaying a value in the ‘actual trigger indicator 101’ displays the purported quill position data.” Prelim. Resp. 17. More particularly, Patent Owner argues that The Petition first assumes that Haci’s surface tool face angle is the quill position data. Petition, 27. The Petition then makes a second assumption based on what is depicted in Haci’s Fig. 3 alone-without any supporting disclosure in Haci itself- that setting Haci’s “trigger value selector 105” to “Surface” will cause Haci’s “actual trigger indicator 101” to display the surface tool face angle. Id. at 14 (citing Pet. 31-32). Patent Owner argues that Petitioner’s “contention that the mentioned ‘surface tool face’ equates to a ‘surface tool face angle’ is without support.” Id. at 15. Patent Owner takes the position that the information provided by Haci’s drill pipe orientation sensor 65 relates to “either a drill string angular position or surface tool face,” but “does not demand a conclusion that the drill string angular position is the equivalent of the surface tool face.” Id. Similarly, Patent Owner argues that “Haci does not support the assumption that selecting ‘Surface’ in ‘trigger value selector 105,’ as shown in Fig. 3, would display a surface tool face angle in ‘actual trigger 101.’” Id. at 16; see also id. at 17 (“Haci does not state that the surface tool face or the surface tool face angle can be a trigger.”). In sum, Patent Owner asserts that Petitioner’s arguments are “based entirely on a single Haci passage and Fig. 3” (Prelim. Resp. 14) and IPR2021-01044 Patent 8,528,663 B2 18 unsupported assumptions. Id. at 16. In addition, Patent Owner argues that Petitioner’s reliance on its expert, Mr. Schaaf, fails to provide any additional support because “Mr. Schaaf’s Declaration adds no additional facts or analysis, aside from those stated in the Petition, and as a result deserves little or no weight.” Id. at 21 (citing Ex. 1005 ¶¶ 100-104; Pet. 27-33); see also id. at 16 (“Mr. Schaaf’s declaration adds no value because it repeats the Petition.”). b) Discussion Having considered the conflicting positions of the parties, we conclude that Petitioner has not shown a reasonable likelihood that it would prevail in challenging the patentability of independent claim 12. Instead, we agree with Patent Owner that Petitioner has not demonstrated that the cited prior art discloses or suggests “receiving and displaying electronic data, wherein the electronic data includes quill position data,” as required-in-part by limitation 12[b]. Petitioner’s analysis for this limitation begins with the contention that “Haci’s system includes a drill pipe orientation sensor that measures surface toolface angle,” which Petitioner asserts constitutes “quill position data.” Pet. 27 (citing Ex. 1006, 4:55-57). In response, Patent Owner argues that the portion of Haci, relied upon by Petitioner, provides no explanation of what is a “surface tool face.” Further, the mention of the surface tool face is not made with reference to, or in connection with, an angle measurement, and the Petition’s contention that the mentioned “surface tool face” equates to a “surface tool face angle” is without support. Prelim. Resp. 15 (citing Ex. 1006, 4:55-57). We agree with Patent Owner. The portion of Haci relied upon by Petitioner discloses only that surface drill pipe orientation sensor 65 “provides measurements of drill IPR2021-01044 Patent 8,528,663 B2 19 string angular position or surface tool face.” Ex. 1006, 4:55-57. To support its contentions, Petitioner does little more than cite to this passage of Haci and the Schaaf Declaration, which presents the same conclusory assertions advanced in the Petition. See Pet. 27; compare Ex. 1005 ¶ 100. Such speculation is inadequate to support Petitioner’s contentions. We also agree with Patent Owner that [t]he syntax of this passage does not demand a conclusion that the drill string angular position is the equivalent of the surface tool face, and the Petition does not appear to be making this argument. Haci’s cited passage provides no basis to attach the angle unit of measure to a measurement of a surface tool face, whatever it may be. Prelim. Resp. 15. Thus, we find that Petitioner fails to explain adequately why one of ordinary skill in the art would have recognized that Haci’s reference to “surface tool face” refers to “surface toolface angle (i.e., quill position data)” based on the current record. However, even if we were to accept Petitioner’s contention that one of ordinary skill in the art would have understood Haci’s reference to “surface tool face” constitutes “quill position data,” as required by limitation 12[b], we still are not persuaded by Petitioner’s contention that one of ordinary skill in the art “would have recognized surface toolface angle is used as a trigger value” such that it is displayed on Haci’s driller’s screen 71 as “actual trigger indicator 101.” Pet. 27 (citing Ex. 1006, 6:67-7:1). In this regard, Petitioner asserts that “Haci teaches two types of parameters that can be used for the first trigger value: toolface angle and torque.” Id. at 32 (citing Ex. 1006, 7:65-67, 9:37-38, 9:58). And, according to Petitioner, one of ordinary skill in the art “would have recognized that the ‘Surface’ setting IPR2021-01044 Patent 8,528,663 B2 20 on the ‘trigger value selector 105’ refers to surface toolface angle (i.e., quill position).” Pet. 32 (citing Ex. 1005 ¶ 104). However, we agree with Patent Owner that “Haci does not state that the surface tool face or the surface tool face angle can be a trigger.” Prelim. Resp. 17. In making this determination, we note that the portions of Haci, relied upon by Petitioner (see Pet. 32 (citing Ex. 1006, 7:65-67, 9:37-38, 9:58)), refer simply to “tool face angle” or “torque,” neither of which Petitioner adequately establishes constitute using surface toolface angle, i.e., “quill position data,” as a trigger value. Petitioner’s first citation to Haci simply discloses that in one embodiment, “the first trigger for determining when to change from the first rotation rate to the second rotation rate is a measurement of tool face angle.” Ex. 1006, 7:65-67. Similarly, Petitioner’s second citation to Haci discloses that in a preferred embodiment “the first trigger is tool face angle.” Id. at 9:37-38. Petitioner’s last citation to Haci discloses that in another embodiment, “torque can be a trigger.” Id. at 9:58. With respect to torque, however, Haci identifies that “[t]orque may be measured at the bottom-hole, at the surface, or anywhere in the bore hole.” Id. at 9:58-60. We do not see, and Petitioner does not direct our attention to, any similar disclosure in Haci that would suggest that the referenced “tool face angle” be measured at the bottom-hole or at the surface. Without more, we agree with Patent Owner that “Haci does not support the assumption that selecting ‘Surface’ in ‘trigger value selector 105,’ as shown in Fig. 3, would display a surface tool face angle in ‘actual trigger 101.’” See Prelim. Resp. 16. We acknowledge, as Petitioner points out, that “Haci describes that ‘[a]n actual trigger indicator 101 displays the measured result for the driller’ IPR2021-01044 Patent 8,528,663 B2 21 and ‘trigger value selector 105 allows the driller to choose which type of trigger to use.’” Pet. 31-32 (citing Ex. 1006, 6:67-7:2). However, we again agree with Patent Owner that Haci “does not explain what a selection of ‘Surface’ in the ‘trigger value selector 105’ means or what such a selection would display in ‘actual trigger 101.’” Prelim. Resp. 16. In an attempt to support its position that “Haci’s ‘actual trigger indicator 101’ displays surface toolface angle (i.e., quill position) in the embodiment illustrated in Figure 3” (Pet. 33), Petitioner argues that one of ordinary skill in the art would have recognized that a reading of “194” is inconsistent with a measurement of torque because it is almost 15 times the value of the highest torque value depicted on Figure 3 and is inconsistent with a measurement of downhole toolface because it does not match the value displayed on the “tool face indicator 73.” Id. at 33 n. 4 (citing Ex. 1006, Fig. 3; Ex. 1005, n. 7). The cited paragraph of the Schaaf Declaration makes the same assertion without further elaboration. See Ex. 1005 ¶ 104 n.7. Petitioner’s argument is too conclusory to meet its burden of demonstrating a likelihood of prevailing in its challenge. In essence, Petitioner’s argument is that with “trigger value selector 105” set to “Surface,” Haci’s “actual trigger indicator 101” must be “display[ing] the current measured value of surface toolface angle” (Pet. 27) simply because it could not reasonably be “a measurement of torque” or a “measurement of downhole toolface.” The problem with Petitioner’s argument is that even if Petitioner were correct that the value of “actual trigger indicator 101” could not be a “measurement of torque” because it is too high or “a measurement of downhole toolface because it does not match the value displayed on the ‘tool face indicator 73’” (Pet. 33 n. 4), there is insufficient evidence to IPR2021-01044 Patent 8,528,663 B2 22 conclude that this value is “the current measured value of surface toolface angle,” which Petitioner contends is the “claimed quill position.” Id. at 27. For example, the value of “194,” depicted in “actual trigger indicator 101” might not match the measurement of downhole toolface angle displayed on “tool face indicator 73” because it is not intended to. That is, Haci discloses that “the first trigger tool face angle will have to be a different value to account for the inertia of the drill string.” Ex. 1006, 9:42-44. Here, when describing a preferred embodiment where “the first trigger is tool face angle,” Haci discloses that [a]lthough the desired tool face angle of the current drilling cycle is the desired end, the first trigger tool face angle will have to be a different value to account for the inertia of the drill string. Stopping rotation of the drill string at the surface does not instantly stop the drill string at the bit. Thus the first trigger value will have to be a value of the tool face angle that leads to the desired tool face angle when the tool face stops changing orientation. Id. at 9:41-48. As such, “actual trigger indicator 101” may be displaying a value that “that leads to the desired tool face angle when the tool face stops changing orientation.” Id. at 9:46-48. Thus, Petitioner’s conclusion that “Haci’s system receives [surface toolface angle] information from the drill pipe orientation sensor and displays the current measured value of surface toolface angle on ‘actual trigger indicator 101’ (as depicted in Figure 3 below),” is, once again, mere speculation that the value depicted in “actual trigger indicator 101” could be “surface toolface angle measured in degrees (i.e. quill position).” Pet. 33 (citing Ex. 1005 ¶ 104; Ex. 1006, 6:67-7:2). Based on the above, we determine that Petitioner does not provide any sufficiently clear, persuasive explanation to support its assertion that a person of ordinary skill in the art would understand that when “the ‘Surface’ IPR2021-01044 Patent 8,528,663 B2 23 setting on the ‘trigger value selector 105’ is surface toolface angle,” “the ‘194’ value on the ‘actual trigger indicator 101’ is surface toolface angle measured in degrees (i.e. quill position).” And, even if we were to accept Petitioner’s contention that one of ordinary skill in the art would have understood Haci’s reference to “surface tool face” constitutes “quill position data,” as required by limitation 12[b], we still are not persuaded by Petitioner’s contention that one of ordinary skill in the art “would have recognized surface toolface angle is used as a trigger value” such that it is displayed on Haci’s driller’s screen 71 as “actual trigger indicator 101.” Pet. 27 (citing Ex. 1006, 6:67-7:1). Therefore, Petitioner has not adequately established on this record that the combination of Haci and Pinckard discloses or suggests “receiving and displaying electronic data, wherein the electronic data includes quill position data,” as recited in part by limitation 12[b]. c) Conclusion on Claim 12 Having considered the parties’ arguments and evidence, we determine that Petitioner has not shown a reasonable likelihood of demonstrating that independent claim 12 would have been obvious over Haci and Pinckard. 4. Claims 13, 14, and 19 We have considered Petitioner’s arguments and evidence for dependent claims 13, 14, and 19. Petitioner does not provide contentions for these claims that remedy the deficiency discussed with respect to claim 12. Accordingly, for the reasons discussed with respect to claim 12, we conclude that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claims 13, 14, and 19 are unpatentable under 35 U.S.C. § 103 as obvious over Haci and Pinckard. IPR2021-01044 Patent 8,528,663 B2 24 E. Alleged Obviousness over Haci, Pinckard, and Hamilton Petitioner challenges claims 14-16 and 19 by adding Hamilton to the teachings of Haci and Pinckard discussed above with respect to claim 12. Pet. 57-65. Petitioner relies upon Hamilton for teaching the added limitations of these dependent claims and, thus, does not remedy the deficiencies of the asserted art with respect to claim 12. Accordingly, for the same reasons discussed above, Petitioner fails to demonstrate a reasonable likelihood of prevailing in its assertion that the subject matter of claims 14-16 and 19 would have been obvious over the combination of Haci, Pinckard, and Hamilton. F. Alleged Obviousness over Haci, Pinckard, Hamilton, and Mason Petitioner challenges claims 17 and 18 by adding Mason to the teachings of Haci, Pinckard, and Hamilton discussed above with respect to claims 14-16 and 19. Pet. 65-72. Petitioner relies upon Mason for teaching the added limitations of these dependent claims and, thus, does not remedy the deficiencies of the asserted art with respect to claim 12. Accordingly, for the same reasons discussed above, Petitioner fails to demonstrate a reasonable likelihood of prevailing in its assertion that the subject matter of claims 17 and 18 would have been obvious over the combination of Haci, Pinckard, Hamilton, and Mason. G. Alleged Obviousness over Haci, Pinckard, and Cobern Petitioner challenges claim 20 by adding Cobern to the teachings of Haci and Pinckard discussed above with respect to claim 12. Pet. 73-79. Petitioner relies upon Cobern for teaching the added limitations of this dependent claim and, thus, does not remedy the deficiencies of the asserted art with respect to claim 12. Accordingly, for the same reasons discussed IPR2021-01044 Patent 8,528,663 B2 25 above, Petitioner fails to demonstrate a reasonable likelihood of prevailing in its assertion that the subject matter of claim 20 would have been obvious over the combination of Haci, Pinckard, and Cobern. III. DISCRETIONARY DENIAL Patent Owner argues that we should exercise our discretion to deny institution of inter partes review in this case under 35 U.S.C. § 314(a), because of the parallel district court litigation. Prelim. Resp. 3-10; Sur-reply 1-5. Because we have considered the merits of the Petition and decline to institute an inter partes review on that basis, we need not determine whether it would be appropriate to discretionarily deny the Petition under § 314(a). IV. CONCLUSION For the foregoing reasons, we are not persuaded that the Petition establishes a reasonable likelihood that Petitioner would prevail in any of its challenges to claims 12-20 of the ’663 patent. V. ORDER In consideration of the foregoing, it is hereby ordered that the Petition is denied, and no trial is instituted. IPR2021-01044 Patent 8,528,663 B2 26 FOR PETITIONER: Chad Walters Doug Kubehl Clarke Stavinoha BAKER BOTTS L.L.P. chad.walters@bakerbotts.com doug.kubehl@bakerbotts.com clarke.stavinoha@bakerbotts.com FOR PATENT OWNER: David Odell Vinu Raj Jonathan Bowser Eugene Goryunov Dustin Johnson HAYNES AND BOONE, LLP david.odell.ipr@haynesboone.com vinu.raj.ipr@haynesboone.com jon.bowser.ipr@haynesboone.com eugene.goryunov.ipr@haynesboone.com dustin.johnson.ipr@haynesboone.com