BJ Energy Sols. v. Yantai Jereh Petroleum Equip. & Techs. Co.

• Decision Date: 07 September 2021
• Docket Number: 865,631 B2,PGR2021-00060,Patent 10
• Parties: BJ ENERGY SOLUTIONS, LLC, Petitioner, v. YANTAI JEREH PETROLEUM EQUIPMENT & TECHNOLOGIES CO., LTD., Patent Owner.
• Court: Patent Trial and Appeal Board

BJ ENERGY SOLUTIONS, LLC, Petitioner,
v.
YANTAI JEREH PETROLEUM EQUIPMENT & TECHNOLOGIES CO., LTD., Patent Owner.

PGR2021-00060

Patent 10, 865, 631 B2

United States Patent and Trademark Office, Patent Trial and Appeal Board

September 7, 2021

For PETITIONER:

Barry J. Herman

Jeffrey S. Whittle

Preston Heard

Brendan O'Dea

WOMBLE BOND DICKINSON LLP

For PATENT OWNER:

Justin L. Krieger

Nicoletta Kennedy

Yifan Mao

Akkad Moussa

KILPATRICK TOWNSEND & STOCKTON LLP

Before CHRISTOPHER G. PAULRAJ, TIMOTHY J. GOODSON, and RYAN H. FLAX, Administrative Patent Judges.

DECISION

FLAX, Administrative Patent Judge.

Denying Institution of Post-Grant Review

35 U.S.C. §324

BJ Energy Solutions, LLC ("Petitioner") filed a Petition for a post-grant review challenging claims 1-9 (all claims) of U.S. Patent 10, 865, 631 (Ex. 1001, "the '631 patent"). Paper 1 ("Pet."). Yantai Jereh Petroleum Equipment & Technologies Co., Ltd. ("Patent Owner" or "Jereh") filed a Preliminary Response. Paper 7 ("Prelim. Resp."). Petitioner also filed an authorized Reply (Paper 9, "Reply") and Patent Owner filed a Sur-Reply (Paper 10, "Sur-Reply"). Paper 8 (authorizing these filings).

Under 37 C.F.R. § 42.4(a), we have authority to determine whether to institute a post-grant review. We may institute a post-grant review if the information presented in the petition filed under 35 U.S.C. § 321, and any response filed under 35 U.S.C. § 323, shows that "it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable." 35 U.S.C. § 324(a).

Even when a petitioner satisfies the minimum statutory institution standard (e.g., demonstrating a reasonable likelihood of prevailing with respect to one or more claims in an inter partes review or that it is more likely than not that at least one claim is unpatentable in a post-grant review), institution of review remains discretionary. SAS Inst. v. Iancu, 138 S.Ct. 1348, 1356 (2018); Harmonic, Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) ("First of all, the PTO is permitted, but never compelled, to institute an IPR proceeding."). Under such circumstances, the Board takes into account other considerations, including efficiency and fundamental fairness for all parties. See Adaptics Limited v. Perfect Co., IPR2018-01596, Paper 20 at 17 (PTAB Mar. 6, 2019) (informative); Chevron Oronite Co. LLC v. Infineum USA L.P., IPR2018-00923, Paper 9 (PTAB Nov. 7, 2018) (informative); see also Consolidated Trial Practice Guide, 84 FR 64280, 53-63 (2019) (addressing various considerations at institution phase, including efficiency and fundamental fairness for all parties).^[1]

We conclude that Petitioner has not demonstrated in the petition that it is more likely than not that challenged claims 1-7 are unpatentable under any asserted grounds for unpatentability. Although it is a closer question as to whether Petitioner has demonstrated it is more likely than not that dependent claims 8 and 9 are unpatentable based on a single asserted unpatentability ground under § 112, we determine based on the record here that instituting a trial with respect to all challenged claims under all eleven asserted grounds for unpatentability is not an efficient use of the Board's or the parties' time and resources. Therefore, we do not institute post-grant review pursuant to 35 U.S.C. § 324. See SAS, 138 S.Ct. at 1359-60 (requiring institution on all claims, if any); see also Consolidated Trial Practice Guide, 55 (providing guidance in view of SAS).

I. BACKGROUND

A. Real Parties-in-Interest

Petitioner states that the real parties-in-interest are "BJ Energy Solutions LLC and CSL Capital Management." Paper 11, 1. Patent Owner states that an additional real party-in-interest is "American Jereh International Corporation." Paper 6, 1.

B. Related Matters

Petitioner states that there are no related matters. Paper 11, 1. Patent Owner does not identify any related matters. Paper 6, 1.

C. The'631 Patent

The '631 patent issued on December 15, 2020, from U.S. Application 16/832, 856, filed on March 27, 2020. Ex. 1001, codes (45), (21), (22). The '631 patent claims priority to Chinese Application 2019 1 0893337, filed on September 20, 2019. Id. at code (30).^[2]

The '631 patent relates generally to equipment used for hydraulic fracturing ('Tracking") in oil and gas fields. Id. at 1:5-10. The Abstract of the '631 patent states:

The present invention discloses a hydraulic fracturing system for driving a plunger pump with a turbine engine, including a fracturing equipment, a high-low pressure manifold, a blending equipment and a sand-mixing equipment; a turbine engine is used as the power source of the fracturing equipment, the turbine engine is fueled by natural gas or diesel and drives the plunger pump to solve the current problems of diesel drive and electric motor drive. The fuel supply of a turbine engine with a dual-fuel system is diverse and not limited, especially when natural gas is used as the fuel, it will save more cost. The supply of natural gas in the whole hydraulic fracturing system is diversified, better meeting the demands of more customers. The entire fracturing equipment is disposed in a straight line along the transmission direction of power, better lowering the overall center of gravity of the fracturing equipment, and increasing the stability and safety of the fracturing equipment both in operation and transportation

Id. at Abstract. The larger fracking system as described in the Abstract is illustrated by the '631 patent at its Figure 1, reproduced below:

(Image Omitted)

Id. at Fig. 1. The '631 patent states that Figure 1 "is a schematic structural diagram of the hydraulic fracturing system of the invention." Id. at 3:34-35. Figure 1 shows fracking equipment as it might be used at a fracking operation site (a pad) and shows compressed natural gas (CNG) tanker 1, CNG pressure regulating equipment 2, natural gas pipeline 3, turbine fracturing equipment 4 (expressly recited in detail by claim 1, as discussed below), connection pipeline 5 (expressly recited by claim 1), high-low pressure manifold 6 (expressly recited by claim 1), wellhead 7 (expressly recited by claim 1), wellhead gas port 8, wellhead gas treatment equipment 9, sanding vehicle 10, sand storage tank 11, sand conveying equipment 12, liquid storage tank 14, sand-mixing equipment 14 (expressly recited by claim 1), blending equipment 15 (expressly recited by claim 1), chemical additive equipment 16, and instrumentation 17. Id. at 3:40-47.

Where Figure 1 and its related written description describe the generalities of equipment of an entire fracking system, the '631 patent also describes two specific structures for the turbine fracking equipment thereof as "Embodiment 1" and "Embodiment 2." Id. at 5:15-6:19. Embodiment 1 is illustrated at the '631 patent's Figure 2, which is reproduced below, as annotated by the Panel to identify the referenced component parts as disclosed in the related written description:

(Image Omitted)

Id. at Fig. 2 (annotations as red text boxes added). The '631 patent states, "FIG. 2 is a schematic structural diagram of the turbine fracturing equipment of Embodiment 1," and red text boxes have been added to label the structure's referenced components and structural relationships as described in the written description. Id. at 3:36-37. The '631 patent's description of Embodiment 1 and Figure 2 is brief. Thus, we reproduce it in its entirety below, adding emphasis to highlight certain disclosures that are discussed in our claim construction, below (see infra Section II.C):

Turbine Fracturing Equipment Embodiment 1

The turbine fracturing equipment 4 is vehicle-mounted or semi-trailer mounted or skid mounted. The diagram and description shown in this embodiment is a schematic structural diagram of the up-loading components of the turbine fracturing equipment 4 after removing the vehicle or semi-trailer or skid

The turbine fracturing equipment 4 includes a turbine engine 19, an exhaust system and a plunger pump 18, wherein one end of the turbine engine 19 is connected to the exhaust system, the other end of the turbine engine 19 is connected to the plunger pump 18. The plunger pump 18 is a plunger pump 18 inteurated with a reduction gearbox, the turbine engine 19 is directly connected to an input end of the reduction gearbox 24 integrated on the plunger pump. An input speed of the reduction gearbox 24 integrated on the plunger pump matches an output speed of the turbine engine 19, and an input torque of the reduction gearbox 24 integrated on the plunger pump matches an output torque of the turbine engine 19, thus simplifying the transmission device between the plunger pump 18 and the turbine engine 19, that is, a transmission shaft or a couylins is omitted, greatly shortening the total length of the turbine fracturing equipment 4, with a simple structure and convenient for maintenance. The exhaust system includes an exhaust duct 20 and an exhaust silencer 21, one end of the exhaust duct 20 is connected to the exhaust silencer 21, the other end of the exhaust duct 20 is connected to an exhaust port of the turbine engine 19

The plunger pump 18, the turbine engine 19 and the exhaust system are disposed in a straight line along the transmission direction of power, to avoid excessive transmission loss, thus ensuring the efficient transmission performance of the equipment, better lowering the overall center of gravity of the turbine fracturing equipment 4, and increasing the stability and safety of the turbine fracturing equipment 4 both in operation and transportation

Ex. 1001, 5:15-52 (emphasis added).

As noted above, a second embodiment of the fracking equipment is described by the '631 patent as "Embodiment 2." Embodiment 2 is illustrated at the...