Nabors Drilling Technologies USA, Inc.

Patent Trials and Appeals Board

Dec 10, 2021

IPR2021-01043 (P.T.A.B. Dec. 10, 2021)

Trials@uspto.gov Paper 12
571-272-7822 Entered: December 10, 2021

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.

IPR2021-01043
Patent 10,672,154 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

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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 1–4, 6, 20–22, 24, 25, 27, and 28 (the “challenged claims”) of U.S.
Patent 10,672,154 B2 (Ex. 1001, the “’154 patent”). Paper 2 (“Petition” or
“Pet.”). Nabors Drilling Technologies USA, Inc. (“Patent Owner”) filed a
Preliminary Response. Paper 8 (“Preliminary Response” or “Prelim.
Resp.”). With our authorization (Paper 9), Petitioner filed a Reply (Paper
10, “Reply”) and Patent Owner filed a Sur-reply (Paper 11, “Sur-reply”) to
address discretionary denial factors.
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). 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 ’154
patent. Accordingly, we do not institute an inter partes review of the
challenged claims.
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 6, 2.
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C. Related Proceedings
The parties identify, as matters involving or related to the ’154 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 6, 2. We also
note that there are several related inter partes review proceedings:
IPR2021-00621, IPR2020-00671, IPR2021-00672, IPR2021-00897,
IPR2021-01018, and IPR2021-01044.
D. The ’154 Patent
The ’154 patent is titled “3D Toolface Wellbore Steering
Visualization.” Ex. 1001, code (54). The ’154 patent describes techniques
for “visualizing a downhole environment” in drilling operations, such as “to
recover an underground hydrocarbon deposit.” Id. at 1:6–24. The ’154
patent describes that as drilling progresses, deviation from the planned
drilling path occurs, so drillers must “direct the drill back to the original
path” based on information available to them about the location of the drill
and desired location of the drill. Id. at 1:63–65.
To provide information necessary to correct the drilling path, the ’154
patent describes a human-machine interface (“HMI”), which is to be utilized
by a human drilling operator to monitor the “relationship between toolface
orientation and quill position.” Id. at 9:11–16. Figure 5, reproduced below,
shows an embodiment of an HMI, the user interface displayed to the
operator.
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Figure 5 shows three-dimensional visualization HMI 400, with circular grid
402, advisory segment 404, toolface angle symbols 406, “indicator” 408,
drill plan 410, drill history 414, and drilling bit 428. Ex. 1001 at 10:51–
12:23. “[I]ndicators such as the advisory segment 404 and indicator 408
may be included in the visualizations to indicate a recommended steering
path for moving the toolface and thus the drilling motor toward the drilling
plan.” Id. at 13:60–64. Indicator 408 may be depicted as a vector arrow, as
in Figures 5 and 6. Id. at 11:48–49.
E. Illustrative Claim
Petitioner challenges claims 1–4, 6, 20–22, 24, 25, 27, and 28 of the
’154 patent. Pet. 1. Challenged claims 1 and 20 are independent. Claim 1
is reproduced below, with Petitioner’s bracketing, labels, and formatting (see
Ex. 1010).
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1. [p] A drilling apparatus comprising:
[a] a drill string comprising a plurality of tubulars and a drill
bit;
[b] a top drive unit configured to rotate the drill string;
[c] a first sensor system connected to the drill string and
configured to detect one or more measurable parameters of the
drill bit;
[d][1] a controller in communication with the first sensor
system,
[d][2] wherein the controller is operable to generate a three-
dimensional depiction of a location of the drill bit based on the
one or more measurable parameters of the drill bit,
[d][3] wherein the controller is further operable to generate a
three-dimensional depiction of a drill plan; and
[e] a display device in communication with the controller, the
display device configured to display to an operator a
visualization of an underground environment from a viewpoint
looking down the drill string,
[f] the visualization comprising the three-dimensional
depiction of the location of the drill bit down the drill string from
the viewpoint and the three-dimensional depiction of the drill
plan from the viewpoint in real time,
[g] the visualization comprising a positional difference
between the three-dimensional depiction of the location of the
drill bit and the three-dimensional depiction of the drill plan,
[h] the visualization further comprising a first indicator
extending from the three-dimensional depiction of the location
of the drill bit from the viewpoint and indicating a direction
toward the three-dimensional depiction of the drill plan,
[i] the visualization further comprising a second indicator
showing a range of acceptable deviation from the indicated
direction toward the three-dimensional depiction of the drill plan.
Ex. 1001, 16:52–17:17; Ex. 1010.
F. Prior Art and Asserted Grounds of Unpatentability
Petitioner asserts that claims 1–4, 6, 20–22, 24, 25, 27, and 28 of the
’154 are unpatentable on the following ground:
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Claims Challenged 35 U.S.C. § References
1–4, 6, 20–22, 24,
25, 27, 28 103 Benson
1, Terentyev2, Sequeira3
Petitioner also relies on the Declaration of Mr. Robert Schaaf (Ex.
1003, “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 2013/0161096 A1, published June 27, 2013 (Ex. 1006, “Benson”). We
note that Petitioner refers to Benson as “Benson II” to distinguish Benson
from other Benson-related references. See, e.g., Pet. 8–9. However, because
we do not refer to other Benson references, our decision does not adopt
Petitioner’s designation.
2 US 7,027,925 B2, issued Apr. 11, 2006 (Ex. 1007, “Terentyev”).
3 US 2013/0140037 A1, published June 6, 2013 (Ex. 1008, “Sequeira”).
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(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;
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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 be a
person with a Bachelor of Science degree in engineering (e.g.,
chemical, electrical, computer, mechanical, petroleum
engineering), computer science, or an equivalent degree, or at
least two years of experience in the field of computer
programming, working with computer systems, user interfaces,
and control systems.
Pet. 15 (citing Ex. 1003 ¶¶ 79–81). 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
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action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b).4 This rule adopts
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 Board need not expressly construe any
term because the prior art invalidates the claims under any plausible
construction.” Pet. 20 (citing Ex. 1003 ¶¶ 95–99). Patent Owner does not
address claim construction in its briefs. See generally Prelim. Resp.
We determine, at this stage, that no explicit construction of any term
is needed to resolve the issues presented by the arguments and evidence of
record and 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))).

4 The Petition in this case was accorded a filing date of June 11, 2021. See
Paper 3, 1.
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D. Alleged Obviousness over Benson, Terentyev, and Sequeira
Petitioner asserts that claims 1–4, 6, 20–22, 24, 25, 27, and 28 are
unpatentable as obvious over Benson, Terentyev, and Sequeira. Pet. 20–81.
Petitioner also relies on the testimony of Mr. Schaaf to support its
arguments. Id. Patent Owner responds to Petitioner’s assertions. Prelim.
Resp. 13–23.
1. Overview of Benson (Ex. 1006)
Benson is titled “System and Method for Determining Incremental
Progression Between Survey Points While Drilling,” and relates “to the
creation of wells, such as oil wells, and more particularly to the planning and
drilling of such wells.” Ex. 1006, code (54), ¶ 2.
Benson discloses display 250 that provides a drilling operator with
“many different types of information in an easily accessible format.” Ex.
1006 ¶ 58. Figure 2B, reproduced below, shows an embodiment of
Benson’s display 250.
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Figure 2B shows display 250, which displays information around the
periphery of display such as “hole depth indicator 252,” “bit depth indicator
254,” “GAMMA [ray count] indicator 256,” “inclination indicator 258,”
“azimuth indicator 260,” and total vertical depth (TVD) indicator 262, as
well as rate-of-penetration (ROP) indicator 264, “mechanical specific energy
(MSE) indicator 266,” “differential pressure indicator 268,” “standpipe
pressure indicator 270,” “flow rate indicator 272,” “rotary RPM indicator
274,” “bit speed indicator 276,” and weight-on-bit (WOB) indicator 278. Id.
¶ 59. Figure 2B also includes log chart 280 which displays depth
information along with GAMMA count 281 and rate of progression 283. Id.
¶ 61. In the center of display 250 is “circular chart 286,” which “may
provide current and historical toolface orientation information (e.g., which
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way the bend is pointed).” Id. ¶ 62. The “series of circles within the
circular chart 286 may represent a timeline of toolface orientations,” where
“larger circles may be more recent than smaller circles, so the largest circle
288 may be the newest reading and the smallest circle 289 may be the oldest
reading.” Id.
Benson discloses that display 250 also shows “error indicator 294”
which “may be present to indicate a magnitude and/or a direction of error,”
and “may indicate that the estimated drill bit position is a certain distance
from the planned path, with a location of the error indicator 294 around the
circular chart 286 representing the heading.” Ex. 1006 ¶ 66. In Figure 2B,
above, the error indicator indicates an error of 15 feet and an error direction
of 15 degrees. Id. In addition, “marker 296 may indicate an ideal slide
direction.” Id.
Figure 6, reproduced below, illustrates a flow chart for a method
employed in Benson.

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Figure 6 depicts steps for receiving inputs (step 602), processing data
to produce control parameters (step 604), outputting parameters (step 606),
processing received feedback from the drilling rig (step 608), and taking or
not taking an action (step 610). Ex. 1006 ¶¶ 95–100. Figure 7C, reproduced
below, “illustrate[s] a more detailed embodiment of the method 600 of FIG.
6, particularly of step 610.” Id. ¶ 108.

Figure 7C illustrates “a diagram” in which “the estimated bit position is
indicated by arrow 743 relative to the desired bit position 741 along the
planned path 742.” Id. ¶¶ 108–109. More particularly, Figure 7C illustrates
that
an infinite number of paths may be selected to return the bit to
the planned path 742. The paths may begin at the estimated bit
position 743 or may begin at other points along a projected path
752 that may be determined by calculating future bit positions
based on the current trajectory of the bit from the estimated bit
position 752.
Id. ¶ 113. With reference to Figure 7C, Benson discloses that
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[e]ach of these paths 744, 746,748,750, 756, and 758 may present
advantages and disadvantages from a drilling standpoint. For
example, one path may be longer and may require more sliding
in a relatively soft rock layer, while another path may be shorter
but may require more sliding through a much harder rock layer.
Accordingly, tradeoffs may be evaluated when selecting one of
the convergence plans rather than simply selecting the most
direct path for convergence. The tradeoffs may, for example,
consider a balance between ROP, total cost, dogleg severity, and
reliability. While the number of convergence plans may vary,
there may be hundreds or thousands of convergence plans in
some embodiments and the tradeoffs may be used to select one
of those hundreds or thousands for implementation. The
convergence plans from which the final convergence plan is
selected may include plans calculated from the estimated bit
position 743 as well as plans calculated from one or more
projected points along the projected path.
Id. ¶ 116.
2. Overview of Terentyev (Ex. 1007)
Terentyev is titled “Adaptive Borehole Assembly Visualization in a
Three-Dimensional Scene,” and relates to “analyzing data generated in
oilfield exploration” and “methods and systems that facilitate the analysis of
downhole data or bottom-hole assembly data.” Ex. 1007, code (54), 1:8–12.
Figure 8, reproduced below, shows a three-dimensional image of a bottom
hole assembly (“BHA”) inside a borehole trajectory. Id. at 3:9–11.
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In Figure 8, “the BHA is displayed inside the borehole.” Id. at 4:32–34.
3. Overview of Sequeira (Ex. 1008)
Sequeira is titled “System and Method for Planning a Well Path,” and
“relates to optimizing hydrocarbon well placement in a three-dimensional
(3D) environment.” Ex. 1008, code (54), ¶ 2.
Sequeira provides “real time interactivity for a well planning process,”
where “a wide range of drilling variables may be considered.” Id. ¶ 47.
Sequeira “evaluates the distance between a proposed well path and potential
obstructions. Such an exemplary embodiment may determine a minimum
acceptable distance from specific objects based on a type of object.” Id.
¶ 49. Sequeira’s display may “provide a 3D representation of a 3D earth
model,” such as to “display information or a representation pertaining to a
portion of a subsurface region under analysis, such as displaying a generated
well path.” Ex. 1008 ¶¶ 109, 111.
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4. Analysis of Claim 1
Petitioner asserts claim 1 would have been obvious over Benson,
Terentyev, and Sequeira. Pet. 20–63. We use Petitioner’s notations to
identify the claim elements, and focus on the dispositive claim limitation.
1[h] the visualization further comprising a first indicator extending from the
three-dimensional depiction of the location of the drill bit from the
viewpoint and indicating a direction toward the three-dimensional
depiction of the drill plan
a) Petitioner’s Contentions
Petitioner asserts that “marker 296” in Benson’s Figure 2B “‘may
indicate an ideal slide direction,’ which includes indicating a direction
toward the drill plan.” Pet. 47–48 (quoting Ex. 1006 ¶ 66, Ex. 1003 ¶ 209).
Petitioner reproduces Figure 7C of Benson and, relying on the declaration
testimony of Mr. Schaaf, states that Figure 7C “is an embodiment of
Benson[’s] display.” Pet. 49 (citing Ex. 1003 ¶ 211). Petitioner further
asserts that the “graphical user interface (GUI) in steps 2306 and 2308 is
updated and display 250 provides recommendations to the driller.” Id.
(citing Ex. 1006 ¶ 251). Petitioner contends that “the GUI corresponds to
circular chart 286 (‘GUI (e.g., circular chart 286)’), which is an embodiment
of the display 250 of Figure 2B.” Id. (citing Ex. 1006 ¶ 247). Petitioner
concludes that Benson “discloses that the display’s recommended correction
to the driller indicates a direction toward the drill plan.” Id. (citing Ex. 1003
¶ 214).
b) Patent Owner Contentions
Patent Owner contends that “the Petition fails to demonstrate how the
Benson[]-Terentyev-Sequeira combination discloses a visualization that
includes an ‘indicator extending from’ the position of the drill bit,” in
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limitation 1[h]. Prelim. Resp. 13. This indicator, according to the Patent
Owner, corresponds to element 408 in Figure 5 of the ’154 patent. Id. at
13–14. Patent Owner contends that the Petition is unclear as to what prior
art disclosure maps to the “first indicator,” but presumes that Petitioner is
referring to Benson’s “marker 296.” Id. at 14–15. Patent Owner further
contends “the Petition completely ignores the claimed limitation of the
‘indicator extending from’ the depiction of the location of the drill bit.” Id.
at 15.
c) 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 1. Instead, we
agree with Patent Owner that Petitioner has not demonstrated that the cited
prior art discloses or suggests “a first indicator extending from the three-
dimensional depiction of the location of the drill bit from the viewpoint and
indicating a direction toward the three-dimensional depiction of the drill
plan,” as required by limitation 1[h].
Petitioner’s analysis for this limitation begins with the contention that
Benson discloses “indicating a direction toward the drill plan” displayed as a
“recommended correction” to the drill operator, because Benson’s “marker
296” displays “an ideal slide direction” to the operator. Pet. 47–49 (citing
Ex. 1006 ¶¶ 66, 251; Ex. 1003 ¶¶ 209, 212). However, as Patent Owner
points out, Benson does not display an indicator that is extending from the
three-dimensional depiction of the location of the drill bit. Prelim. Resp. 15.
Rather, Benson discloses “a first indicator . . . indicating a direction toward
the three-dimensional depiction of the drill plan,” as partially recited in
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claim 1, but does not disclose or suggest that the “first indicator” is
“extending from the three-dimensional depiction of the location of the drill
bit from the viewpoint and indicating a direction toward the three-
dimensional depiction of the drill plan,” as fully recited in claim 1.
Petitioner’s reference to Figure 75 of Benson does not supply the
missing aspect of limitation 1[h]. Petitioner asserts that Benson’s controller
first determines “the positional difference between the drill bit location and
drill plan” (step 730), then “determines whether the drill bit is outside of a
margin of error from the drill path” (step 732), and if the drill bit location is
outside of the margin of error from the from the drill path, “calculates a
convergence path for the drill bit to return to the drill plan” (step 734). Pet.
48 (citing Ex. 1006 ¶¶ 110–112; Ex. 1003 ¶ 210). However, none of steps
730, 732, or 734 discloses or suggests “a first indicator extending from the
three-dimensional depiction of the location of the drill bit from the
viewpoint and indicating a direction toward the three-dimensional depiction
of the drill plan,” as required by limitation 1[h].
Petitioner then reproduces Figure 7C, and appears to suggest that the
convergence paths calculated to return the drill to the drill plan are displayed
as “an embodiment of Benson[]’s display.” Pet. 48–49 (citing Ex. 1003
¶ 211). However, we do not see, and Petitioner does not adequately explain,
where Benson discloses or would suggest to one of ordinary skill in the art
that Figure 7C and its convergence plan diagram with multiple convergence

5 There is no “Figure 7” in Benson. Instead, Benson provides separate
Figures 7A, 7B, and 7C. For purposes of clarity, however, we note that
steps 730, 732, and 734 are steps of the flow chart depicted in Figure 7B and
Figure 7C “illustrates one embodiment of a convergence plan diagram with
multiple convergence paths.” Ex. 1006 ¶ 16.
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paths is displayed to an operator on a user interface. Instead, Benson
informs us that Figure 7C is used to illustrate that
an infinite number of paths may be selected to return the bit to
the planned path 742. The paths may begin at the estimated bit
position 743 or may begin at other points along a projected path
752 that may be determined by calculating future bit positions
based on the current trajectory of the bit from the estimated bit
position 752.
Ex. 1006 ¶ 113. Thus, we understand Benson’s Figure 7C as illustrating part
of the method of calculating a convergence plan (see id. at Fig. 7B, step
734), as a means to visually depict to the reader the types of possible
convergence plans that are analyzed to select a path, not to illustrate a
display presented to a drilling operator. See, e.g., id. ¶¶ 108–123, 156–161.
Petitioner further argues that Benson
discloses that, in steps 2306 and 2308, the display can provide
the recommended correction to the driller if the drill bit veers off
course. [Ex. 1006 ¶ 251]; EX1003, ¶212. Steps 2306 and 2308
are embodiments of Benson[’s] display. EX1003, ¶213. The
graphical user interface (GUI) in steps 2306 and 2308 is updated
and display 250 provides recommendations to the driller.
EX1006, ¶[0251].
Pet. 49. Based on this disclosure, Petitioner concludes that Benson
“therefore discloses that the display’s recommended correction to the driller
indicates a direction toward the drill plan.” Id. (citing Ex. 1003 ¶ 214).
However, even if Petitioner is correct that steps 2306 and 2308 of Benson
work together to provide the recommended correction to the driller, notably
missing from Petitioner’s argument is that Benson discloses or suggests that
the recommended correction is “a first indicator extending from the three-
dimensional depiction of the location of the drill bit from the viewpoint.”
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Because the prior art cited and relied upon by Petitioner (Pet. 47–49)
does not disclose, and Petitioner does not address, a key aspect of the recited
limitation 1[h], i.e., “a first indicator extending from the three-dimensional
depiction of the location of the drill bit,” Petitioner has not demonstrated a
reasonable likelihood that it would prevail in showing that claim 1 is
unpatentable under 35 U.S.C. § 103 as obvious over Benson, Terentyev, and
Sequeira.
5. Independent Claim 20
Independent claim 20 is similar to independent claim 1. Petitioner
relies on its assertion for claim 1 and does not provide contentions for claim
20 that remedy the deficiency discussed with respect to claim 1. See, e.g.,
Pet. 78 (Benson “discloses the visualization including an indicator extending
from the calculated position of the drill bit and indicating toward the drill
plan. [Ex. 1003] ¶300; see supra Limitation 1[h].”). Accordingly, for the
reasons discussed with respect to claim 1, we conclude that Petitioner has
not demonstrated a reasonable likelihood that it would prevail in showing
that claim 20 is unpatentable under 35 U.S.C. § 103 as obvious over Benson,
Terentyev, and Sequeira.
6. Dependent Claims 2–4, 6, 21, 22, 24, 25, 27, and 28
We have considered Petitioner’s arguments and evidence for
dependent claims 2–4, 6, 21, 22, 24, 25, 27, and 28. Petitioner does not
provide contentions for these claims that remedy the deficiency discussed
with respect to claim 1. Accordingly, for the reasons discussed with respect
to claim 1, we conclude that Petitioner has not demonstrated a reasonable
likelihood that it would prevail in showing that claims 2–4, 6, 21, 22, 24, 25,
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27, and 28 are unpatentable under 35 U.S.C. § 103 as obvious over Benson,
Terentyev, and Sequeira.
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. 2–11; 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
Petitioner has not demonstrated that there is a reasonable likelihood of
establishing the unpatentability of any of claims 1–4, 6, 20–22, 24, 25, 27,
and 28 of the ’154 patent.
V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied and no trial is instituted.
IPR2021-01043
Patent 10,672,154 B2

22
FOR PETITIONER:
Chad Walters
Doug Kubehl
Melissa Muenks
BAKER BOTTS L.L.P.
chad.walters@bakerbotts.com
doug.kubehl@bakerbotts.com
melissa.muenks@bakerbotts.com

FOR PATENT OWNER:

David Odell
Eugene Goryunov
Jonathan Bowser
Vera Suarez
Jeff Wolfson
HAYNES AND BOONE, LLP
david.odell.ipr@haynesboone.com
eugene.goryunov.ipr@haynesboone.com
jon.bowser.ipr@haynesboone.com
vera.suarez.ipr@haynesboone.com
jeff.wolfson.ipr@haynesboone.com