Yantai Jereh Petroleum Equipment & Technologies Co., Ltd.

Patent Trials and Appeals Board

Sep 7, 2021

PGR2021-00060 (P.T.A.B. Sep. 7, 2021)

Trials@uspto.gov Paper 14
571.272.7822 Date: September 7, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE 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
____________

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

FLAX, Administrative Patent Judge.

DECISION
Denying Institution of Post-Grant Review
35 U.S.C. § 324

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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–
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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.

1 The Board’s Trial Practice Guide is available at
https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf.
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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 (“fracking”) 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:

2 There is no dispute that the ’631 patent is entitled to priority to this Chinese
application’s filing date. See Pet. 15 (identifying the ’631 patent’s claim to
the benefit of this earlier filing date). Thus, we accept September 20, 2019
as the ’631 patent’s priority date.
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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,
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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:

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
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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 integrated 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 coupling 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
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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 ’631 patent’s Figure 3, which we reproduce below, as
similarly annotated by the Panel:

Id. at Fig. 3 (annotations as red text boxes added). The ’631 patent states,
“FIG. 3 is a schematic structural diagram of the turbine fracturing equipment
of Embodiment 2,” 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 3:38–39. As with Embodiment 1, the
related disclosure describing Embodiment 2 is brief, thus, we reproduce it in
its entirety below, again adding emphasis to highlight certain disclosures
relevant to our claim construction (see infra Section II.C):
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Turbine Fracturing Equipment Embodiment 2
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 an exhaust
system, a turbine engine 19, a reduction gearbox 23, a
transmission mechanism 22 and a plunger pump 18, wherein
the exhaust system is connected to an exhaust port of the
turbine engine 19, an output end of the turbine engine 19 is
connected to the reduction gearbox 23, and the reduction
gearbox 23 and the plunger pump 18 are connected through a
transmission mechanism 22. 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 the exhaust
port of the turbine engine 19.
The exhaust system, the turbine engine 19, the reduction
gearbox 23, the transmission mechanism 22 and plunger pump
18 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. The transmission mechanism 22 is a
transmission shaft or a coupling.
The turbine engine 19 itself has the advantages of small
volume and light weight, greatly decreasing the volume and
weight of the turbine fracturing equipment 4.
Ex. 1001, 5:54–6:19 (emphasis added).
The above-quoted passages from the ’631 patent are the extent of the
specificity provided in the written description for the disclosed turbine
fracturing equipment. See generally id.
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In particular, as quoted above, Embodiment 1 is expressly described
as including a configuration between turbine engine 19 and plunger pump 18
where the two are connected at one end of turbine engine 19. Id. at 5:23–27.
Moreover, in Embodiment 1, reduction gearbox 24 is “integrated with” as
well as “integrated on” plunger pump 18, and, further, turbine engine 19 is
“directly connected” to the reduction gearbox 24. Id. at 5:27–30. Thus,
there is a single reduction gearbox 24 directly connected to turbine engine
19 and integrated on plunger pump 18 (these italicized phrases are claim
terms, the meaning of which is in dispute). Figure 2 (above) shows that this
arrangement positions turbine engine 19 against reduction gearbox 24,
which itself is positioned against plunger pump 18, and there are no
intervening components described or illustrated at either physical
connection. As quoted above, the ’631 patent is explicit that, in
Embodiment 1, any “transmission shaft or [ ] coupling is omitted” “between
the plunger pump 18 and the turbine engine 19.” Id. at 5:36–37. Thus, this
is how the ’631 patent describes and illustrates the concepts of “directly
connected” and “integrated on” with respect to these components––they are
exclusively associated with Embodiment 1. The meanings of these terms,
which are used in independent claim 1 (quoted below), are crucial to our
conclusions in this decision, as discussed in detail below. See infra Section
II.C., Sections II.E–II.K.
The ’631 patent describes Embodiment 2 differently. It is apparent
that Embodiment 2 is a turbine fracturing system quite similar to that of
Embodiment 1; however, the ’631 patent describes Embodiment 2 without
once using the terms “directly connected” and “integrated on.” See id. at
5:54–6:19. In Embodiment 2, the ’631 patent describes the same basic
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components as in Embodiment 1, but explains that “turbine engine 19 is
connected to the reduction gearbox 23” and that “gearbox 23 and the plunger
pump 18 are connected through a transmission mechanism 22.” Id. at 5:66–
6:2. We note that this gearbox is designated by reference number 23, which
the ’631 patent indicates is “reduction gearbox,” but the gearbox of
Embodiment 1, shown in Figure 2, is labeled 24, which the ’631 patent
indicates is “reduction gearbox equipped on the plunger pump.” Id. at 3:49–
51. The ’631 patent does not describe this relationship between
Embodiment 2’s reduction gearbox 23 and plunger pump 18 as “integrated”
in any way, be it “integrated on” or “integrated with,” as with Embodiment
1. Id. at 5:54–6:19. Instead, in contrast to Embodiment 1, the ’631 patent
describes Embodiment 2 as including transmission mechanism 22, which is
a transmission shaft or coupling, between its reduction gearbox 23 and
plunger pump 18. Id. at 6:1–6:16.
Thus, the meaning and scope of the term “integrated on,” as used in
the claims, is illuminated as including (as in Embodiment 1) a reduction
gearbox that is structurally unified with and on a plunger pump, and not
including a reduction gearbox that is separated from a plunger pump by a
transmission mechanism.
Another distinguishing difference between Embodiments 1 and 2 as
described in the ’631 patent is that the structural arrangement of
Embodiment 1 is explained to produce matching speed and torque as output
from the turbine engine and input to the reduction gearbox integrated on the
plunger pump. Id. at 5:30–35. The ’631 patent describes this speed/torque
matching in relation to the “directly connected” relationship between the
turbine engine and reduction gearbox integrated on the plunger pump. Id. at
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27–35. This is in contrast to the ’631 patent’s description of Embodiment 2.
Although Figures 2 and 3 of the ’631 patent similarly illustrate a structural
relationship between the turbine engine and reduction gearbox (they appear
to be joined), the written description of Embodiment 2 does not describe the
turbine engine and reduction gearbox as “directly connected.” Id. at 5:54–
6:19, Figs. 2–3. Moreover, it similarly does not describe Embodiment 2 as
producing a same speed/torque matching relationship between the two
components as with Embodiment 1. Id. Under Embodiment 2, the turbine
engine and the reduction gearbox are merely “connected” (similar to how the
plunger pump 18 and reduction gearbox 23 are “connected” through
transmission mechanism 22) and there is no mention of any speed/torque
matching between any components. Id. at 5:54–6:19.
Thus, the meaning and scope of the term “directly connected,” as used
in the claims, and as it relates to the claim language (see below) directed to
speed/torque matching between a turbine engine and reduction gearbox, is
illuminated such that a direct connection between a turbine engine and a
reduction gearbox can produce matched respective output and input speed
and torque from the turbine engine and to the reduction gearbox, as in
Embodiment 1. Whereas, such speed/torque matching does not necessarily
occur without such a direct connection, as in Embodiment 2; at least such is
not described in the ’631 patent’s written description.
The ’631 patent concludes with nine claims, with claim 1, reproduced
below, being the sole independent claim:
1[pre]. A hydraulic fracturing system for driving a
plunger pump with a turbine engine, comprising
1[a] a fracturing equipment, a high-low pressure
manifold, a blending equipment and a sand-mixing equipment;
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the blending equipment is used for blending fracturing base
fluid in the hydraulic fracturing system, the sand-mixing
equipment provides the fracturing base fluid and a fracturing
proppant to the high-low pressure manifold; one end of the
high-low pressure manifold is connected to the fracturing
equipment through a connection pipeline, the other end of the
high-low pressure manifold is connected to a wellhead; a
turbine engine is used as the power source of the fracturing
equipment, and the turbine engine is fueled by natural gas or
diesel,
1[b] wherein the fracturing equipment comprises one or
more sets of turbine fracturing equipment,
1[c] wherein the turbine fracturing equipment comprises
a turbine engine, an exhaust system and a plunger pump, one
end of the turbine engine is connected to the exhaust system,
the other end of the turbine engine is connected to the plunger
pump, the plunger pump is a plunger pump integrated with a
reduction gearbox, the turbine engine is directly connected to an
input end of the reduction gearbox integrated on the plunger
pump,
1[d] wherein an input speed of the reduction gearbox
integrated on the plunger pump matches an output speed of the
turbine engine, and an input torque of the reduction gearbox
integrated on the plunger pump matches an output torque of the
turbine engine.
Ex. 1001, 6:32–59 (sub-numbering added to comport with Petitioner’s
similar sub-numbering; see Pet. 13–14). Claims 2–9 each depend, directly
or indirectly, from claim 1 and further define the claimed system. Id. at
6:60–8:21.
D. PETITIONER’S ASSERTED GROUNDS FOR UNPATENTABILITY
Petitioner asserts eleven grounds for unpatentability. Pet. 6–7, 25–
109. Petitioner’s grounds are as summarized as follows:

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GROUND
CLAIMS
CHALLENGED
35 U.S.C. §3 REFERENCE(S)/BASIS
1 1–9 102 Apollo 1 Public Use
2 1–9 103 Apollo 1, Robinson, Liu
3 1–9 103 Yeung
4 1–9 103 Yeung, Robinson
5 1–9 103 Liu, Robinson, Weir 5000
6 1–9 103
Coquilleau, Robinson, Weir
5000, Liu
7 1–6, 8 103
Green Field, Robinson,
Weir 5000
8 1–9 112(b)
Indefiniteness of “integrated on
the plunger pump”
9 1–9 112(a)
Lack of Written Description for
“integrated on the plunger
pump”
10 7, 9 112(a)
Lack of Enablement for and
Indefiniteness of “disposed in a
straight line”
11 7, 9 112(a)
Lack of Written Description for
“disposed in a straight line”

Id. In support of these grounds for unpatentability, Petitioner submits, inter
alia, the King Declaration (Ex. 1003) and the Sudderth Declaration
(Ex. 1011). In support of its arguments, Patent Owner submits, inter alia,
the Marscher Declaration (Ex. 2001) and the Zhang Declaration (Ex. 2010).

3 The ’631 patent has an uncontested priority date of April 4, 2017, which is
after the AIA revisions to 35 U.S.C. §§ 102, 103, and 112 took effect.
Therefore, the AIA versions of Sections 102, 103, and 112 apply.
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Based on the record at this stage of the proceeding, we find Dr. King,
Mr. Sudderth, and Mr. Marscher are each competent to testify as to the
knowledge and understanding of the person of ordinary skill in the art
relevant to the ’631 patent. Ex. 1003 ¶¶ 6, 8–17, 34–45, 53, App’x. A (King
CV); Ex. 1011 ¶¶ 1, 4–28; Ex. 2001 ¶¶ 3, 6–19, 54–58. Mr. Zhang is a fact
witness who offers testimony on behalf of Patent Owner about the Apollo 1
system relied upon in the Petition for Grounds 1 and 2. Ex. 2010.
E. ASSERTED PRIOR ART AND EVIDENCE
Apollo 1
Based on the evidence of record, Apollo 1 is a vehicle-mounted
fracking pumper system with a turbine engine (potentially having 5600
horsepower) for powering a plunger pump (potentially having 2250 or 3750
horsepower), developed by Jereh Group of Yantai, China. Ex. 1013, 1–2. It
appears that the Apollo 1 may also be called Apollo 4500 or, merely, Apollo
(although it is not entirely clear from the record that these are the same
pieces of equipment), which may have a 4500 horsepower turbine engine.
Ex. 1014; Ex. 1016; Ex. 1017. A photograph of an Apollo 4500 is
reproduced below:

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Ex. 1014, 1. The image above is a photograph of an Apollo 4500 having a
red cab and beige body with a black stripe and the red label “Jereh,” at a
worksite in front of two horse-head pumpjacks and surrounded by red
vehicles also labeled “Jereh.” Id.
The record suggests that the Apollo 1 was a fully developed and in-
production piece of equipment as of March 19, 2014. Ex. 1013, 1. The
record also suggests that the Apollo 1 was being successfully field-operated
as of February 13, 2015, also in May 2015, and June 2015. Ex. 1014, 1;
Ex. 1016, 1. As of March 9, 2018, it appears that Jereh Group had “shared a
story of shale gas extraction with its independently-developed Apollo
turbine fracturing pumper in the eight-episode documentary [titled] The
Pillars of a Great Power by China’s Central Television 2 (CCTV2),” which
is indicated as having “premiered on Feb[ruary] 26[,] [2018].” Ex. 1017.4
Thus, evidence suggests that Jereh publicized the Apollo 1 in 2018.
Photographs of the Apollo 1 include a cover over the internal
mechanisms of the pumper system, however, the photograph reproduced
below includes an original overlay illustration of these internal mechanisms:

4 There is some ambiguity on this point, however, as the cited article
references a first season of the program occurring in 2013, which would
have been five years earlier than the article and such a gap is unexplained.
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Ex. 1017, 1. The image above is a photograph of “[t]he Apollo Turbine
Fracturing Pumper Featured on China Central Television,” and shows a
vehicle-mounted turbine engine driven pump. Id. The vehicle is colored red
and an illustrated overlay shows (unlabeled): (1) a turbine engine; (2) a first
gearbox; (3) a second gearbox; (4) a clutch; (5) a transmission shaft; and (6)
a pump in a stacked configuration where (1) and (2) sit above (4)–(6), with
(3) spanning and connecting the two tiers at (2) and (4). Ex. 1017, 1–2;
Ex. 2010 ¶¶ 8–13.
Robinson
Robinson is the June 7, 2007 published version of U.S. Application
11/396,918, which was filed on April 3, 2006. Ex. 1005, codes (43), (21),
(22). Robinson’s Abstract states:
An apparatus for providing pressure for a well fracturing
operation is disclosed. The apparatus includes one or more
docking areas for docking one or more pumping units to a
pressure manifold wherein the one or more docking areas are
operable to provide access between one or more pumping units,
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and a structure operable to enclose the one or more docking
areas and pumping units. An apparatus for providing pressure
for a well fracturing operation is disclosed. The apparatus
includes one or more pumping units, a central fueling system
connected to the one or more pumping units, a central power
system connected to the one or more pumping units, a central
lubrication system connected to the one or more pumping units,
and a central cooling system connected to the one or more
pumping units.
Id. at Abstract. Robinson illustrates and diagrams a well fracturing
operation and the equipment used thereat, inter alia, its Figures 1 and 2,
which we reproduce below:

Id. at Figs. 1–2. Robinson states that “FIG. 1 [above-left] is a diagram of a
centralized well treatment facility” and that “FIG. 2 [above-right] is a flow
diagram of a centralized well treatment facility.” Id. ¶¶ 9–10. Figure 1 is a
more realistic diagram of a fracking pad, called well treatment operations
factory 100, and also shows centralized power unit 103, pumping grid 111,
central manifold 107, proppant storage system 106, chemical storage system
112, and blending unit 105, which are interconnected as shown in Figure 2.
Id. ¶¶ 21–24. Figure 2 shows “blending unit 105 is connected to the
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chemical storage system 112, the proppant storage system 106, a water
source 202, and a pumping grid 111 and may prepare a fracturing fluid,
complete with proppant and chemical additives or modifiers,” and that the
fracturing fluid is “directed to a central manifold 107, which can connect and
direct the fluid via connection 109, 204, or 205 to multiple wells 110
simultaneously.” Id. ¶ 25.
Liu
Liu is a Chinese Utility Model Patent, published May 8, 2013, from
Chinese Application 201220411415.4, filed August 17, 2012. Ex. 1008,
codes (45), (21), (22). The Exhibit includes an English translation from the
original Chinese characters and we rely on and cite this translation. Id.; see
also id. at 15 (certification for translation). Liu’s Abstract states, in part,
“[t]he present utility model provides a fracturing unit driven by a turbine
engine, comprising an engine, a gearbox, a fracturing pump, a pipeline, and
the like.” Id. at Abstract.
Liu illustrates such a fracturing unit in Figures 1–3. We reproduce
Figures 1 and 3 below:

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Id. at Figs. 1, 3. Liu states that “Fig. 1 [above-left] is a three-dimensional
structural diagram of a fracturing unit of the present utility model in a
vertical arrangement,” whereas “Fig. 3 [above-right] is a schematic diagram
of a structure of a fracturing unit of the present utility model in a horizontal
arrangement”; in each figure, a turbine-driven pump is mounted on a
vehicle. Id. ¶¶ 18, 20. Figures 1 and 3 show turbine engine 1, reducer 2,
gearbox 3, fracturing pump 4, coupler 5, intake tube 6, intake filter 7,
cooler 8, chassis or bracket 9, and exhaust hood 101. Id. ¶ 21; see also id.
¶¶ 26–30, 32–35 (describing these embodiments).
Yeung
Yeung issued on October 27, 2020, from U.S. Application
16/946,082, which was filed on June 5, 2020. Ex. 1007, codes (45), (21),
(22). Yeung also notes that it is related to Provisional Application
62/899,951, which was filed on September 13, 2019. There is a dispute as to
whether Yeung is entitled to priority to this provisional’s filing date.5
However, we need not resolve this dispute in this Decision.
Yeung’s Abstract states, in part, “[a] system and method for operating
a fleet of pumps for a turbine driven fracturing pump system used in

5 Patent Owner argues that Yeung is not entitled to priority to the filing date
of this provisional application because the provisional does not provide a
disclosure complying with the written description requirement under 35
U.S.C. § 112. Prelim. Resp. 48–53 (citing, inter alia, Ex. 2001 ¶¶ 129–135).
Based on this position, Patent Owner argues Yeung is not prior art to the
’631 patent’s claims because they are entitled to priority to the patent’s
parent Chinese Application, which was filed before Yeung’s actual filing
date. Id. at 41–48 (citing, inter alia, Ex. 2001 ¶¶ 127–135).
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hydraulic fracturing is disclosed.” Id. at Abstract. Such a fleet of pumps is
illustrated by Yeung in Figure 2, reproduced below:

Id. at Fig. 2. According to Yeung, “FIG. 2 is a schematic diagram of a
layout of a fluid pumping system according to an embodiment of the
disclosure,” and it shows pumping units 11 (302a–302j), each with
turbine 25 and pump 33, operatively connected to manifold 205 and thereby
to wellhead 210. Id. at 3:22–29.
A representation of a pumping unit is provided by Yeung in Figure 3,
reproduced below, with our annotations to identify relevant disclosed
components:
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Id. at Fig. 3 (annotations added); Pet. 54. Figure 3 “is a schematic diagram
of a directly driven turbine (DDT) pumping unit used in the fluid pumping
system of FIG. 2,” to which we have added red text boxes to label its
elements in the way they are described in Yeung (and identified by
Petitioner). Ex. 1007, 2:63–64. Figure 3 shows pumping unit 11 mounted
on trailer 15 and including direct drive unit 23 having gas turbine engine 25
and gearbox 27, which is connected via driveshaft 31 to pump 33. Id. at
3:22–46. Although it is not labeled in original Figure 3 or expressly stated
in the accompanying disclosure of Yeung, Petitioner asserts that the system
of Figure 3 also includes a second reduction gearbox on the plunger pump,
between the pump and driveshaft 31, which we have labeled above in a
similar fashion to Petitioner. Pet. 53–54; see also Ex. 1003 ¶ 56 (Dr. King
identifying this same gearbox in Yeung).
Weir 5000
Weir 5000 is a product information sheet, appearing to be marketing
materials, bearing a copyright notice dated 2019. Ex. 1006, 2. Weir 5000
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discloses information about a product called “SPM QEM 5000 E-Frac
Pump,” which is shown in the following image:

Id. at 1. The image above shows a blue frac pump, which appears to have
five cylinders, which the document indicates has 5,000 maximum brake
horsepower input. Id.
Coquilleau
Coquilleau issued August 5, 2014, from U.S. Application 12/563,209,
which was filed September 21, 2009. Ex. 1009, codes (45), (21), (22).
Coquilleau indicates it is related to Provisional Application 61/008,896, filed
on September 22, 2009. Id. at code (60). Coquilleau’s Abstract states:
A system for powering wellsite surface equipment comprises at
least one prime mover in communication with a fuel source for
powering the prime mover and having at least one heat source,
at least one pump arranged to be driven by the prime mover, the
at least one pump in fluid communication with at least one
wellbore and at least one fluid for use in the wellbore, and at
least one auxiliary system in communication with the heat
source from the at least one prime mover.
Id. at Abstract. A portion of such a system is illustrated by Coquilleau at
Figure 2, reproduced below:
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Id. at Fig. 2. According to Coquilleau, “FIG. 2 is a schematic block diagram
of an embodiment of a wellsite surface equipment system.” Id. at 2:51–52.
Figure 2 shows system 200 having prime mover 202, which is a turbine
engine, output 218, which is a shaft, and pump 106. Id. at 3:66–4:26.
Although not shown in Figure 2, Coquilleau states that the turbine engine
output shaft can be connected to the pump via another shaft and that there
may also be a transmission and a gear reducer connecting the turbine engine
to the pump, and that these components may be connected by a direct or
closed coupled connection or any suitable connection. Id. at 4:21–26.
Green Field
Green Field appears to be a slide presentation, it is titled “HHP
Summit, Houston, Tx, Green Field Energy Services Natural Gas Driven
Turbine Frac Pumps.” Ex. 1010, 1. Green Field is undated and bears no
express indication that it was presented or disseminated. Among other
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things, Green Field discloses a turbine driven frac pump, shown in several
photographs. Id. at 4, 6, 8, 13. One such photograph is reproduced below:

The image above is a color photograph and shows a “Green Field Energy
Services – Turbine Frac Pump (TFP),” which is orange and shown resting on
the floor inside a building. Id. at 8. The image above appears to show a
stacked arrangement of a turbine engine positioned above a five-cylinder
pump and connected thereto via a mechanism in a housing, which is shown
to the right of the engine and pump and spanning both tiers of the stacked
arrangement. Id. An exposed, metallic-colored mechanism is shown
between this housing and the pump. Id.
II. DISCUSSION
A. ELIGIBILITY FOR POST-GRANT REVIEW
Petitioner asserts that “[t]he ’631 Patent was issued on December 15,
2020” and “this Petition is being filed ‘not later than the date that is
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9 months after that date of the grant of the patent.” Pet. 3. The Petition was
filed February 26, 2021, which is within the statutory nine-month window.
35 U.S.C. § 321(c). Petitioner also asserts that “it is not barred or estopped
from requesting post-grant review of the ’631 Patent challenging the patent
claims on the grounds identified” in the Petition. Id.
Patent Owner does not contest Petitioner’s standing in this
proceeding. See generally Prelim. Resp. Thus, we find the ’631 patent is
eligible for post-grant review, the Petition was timely filed, and Petitioner
has standing in this proceeding. 35 U.S.C. § 321(c); 37 C.F.R. § 42.204(a).
B. ORDINARY LEVEL OF SKILL IN THE ART
In determining the level of skill in the art, we consider the type of
problems encountered in the art, the prior art solutions to those problems, the
rapidity with which innovations are made, the sophistication of the
technology, and the educational level of active workers in the field. Custom
Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir.
1986).
Petitioner asserts that,
For purposes of this PGR, [a person of ordinary skill in
the art] [(]POSITA[)] at the time of the alleged invention would
have a bachelor’s degree in mechanical engineering, or a
comparable engineering discipline, and at least 3-5 years of
work experience in the design and/or manufacturing of
hydraulic fracturing systems or reciprocating positive
displacement pumps, including the drive systems for
reciprocating positive displacement pumps, for industrial
applications, including for use in the oil and gas industry.
Ex. 1003 ¶ 53. A greater level of experience can substitute for
the stated educational background. Id.
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Pet. 17 (citing Ex. 1003 (King Declaration)).6 Patent Owner states, “for the
limited purpose of this Preliminary Response, Patent Owner has adopted
Petitioner’s POSITA. Therefore, at this stage in the proceedings, we [Patent
Owner] accept and use Petitioner’s definition of the skilled designer.”
Prelim. Resp. 4.
Our findings and conclusions do not turn on selecting a particular
definition for the level of ordinary skill in the art. We accept the parties’
agreed-upon definition of the ordinarily skilled artisan, which appears to be
consistent with the level of skill in the art reflected in the prior art of record
and the disclosure of the ’631 patent. See Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an
appropriate level” as evidence of the ordinary level of skill in the art)
(quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158,
163 (Fed. Cir. 1985)).
C. CLAIM CONSTRUCTION
The Board interprets claim terms in a post-grant review using the
same claim construction standard that is used to construe claims in a civil
action in federal district court. 37 C.F.R. § 42.100(b). In construing claims,
district courts and the Board here, by default, give claim terms their ordinary
and customary meaning, which is “the meaning that the term would have to
a person of ordinary skill in the art in question at the time of the invention.”
Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc).
Should claim terms require express construction, sources for claim
interpretation include “the words of the claims themselves, the remainder of

6 The parties use the acronym “POSITA” to reference the person of ordinary
skill in the art, or ordinarily skilled artisan. It is not preferred.
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the specification, the prosecution history [i.e., the intrinsic evidence], and
extrinsic evidence concerning relevant scientific principles, the meaning of
technical terms, and the state of the art.” Id. at 1314 (quoting Innova/Pure
Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed.
Cir. 2004)). “[T]he claims themselves [may] provide substantial guidance as
to the meaning of particular claim terms.” Id. However, the claims “do not
stand alone,” but are part of “‘a fully integrated written instrument’ . . .
consisting principally of a specification that concludes with the claims,” and,
therefore, the claims are “read in view of the specification.” Id. at 1315
(quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 978–79 (Fed.
Cir. 1995) (en banc)).
Any special definition for a claim term must be set forth in the
specification “with reasonable clarity, deliberateness, and precision.” In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Without such a special
definition, however, limitations may not be read from the specification into
the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
“[W]e need only construe terms ‘that are in controversy, and only to
the extent necessary to resolve the controversy.’” Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999)).
“directly connected”
The claim language “directly connected” is recited in claim 1, which
states “the turbine engine is directly connected to an input end of the
reduction gearbox integrated on the plunger pump.” Ex. 1001, 6:52–54
(emphasis added). Patent Owner asserts that “directly connected” means
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“flush with,” such that, as claimed, the turbine engine must be flush with the
reduction gearbox with no intervening components such as a shaft or
coupling there-between. Prelim. Resp. 5 (citing Ex. 2001 ¶¶ 61–71).
Petitioner argues that this interpretation of “directly connected” is
overly narrow and overlooks the fact that even a cosmetically flush
configuration between a turbine engine and a reduction gearbox might
include internal connection mechanisms, such as a coupling, and that even
where a turbine engine and reduction gearbox may not be flush with one
another, an exposed shaft or coupling between the two may nonetheless
directly connect the two components. Reply 5. Petitioner argues that the
’631 patent describes the structural configurations illustrated by its Figures 2
and 3 (Embodiments 1 and 2) differently. Reply, 6–7. Petitioner asserts the
former has turbine engine and reduction gearbox “directly connected” (see,
e.g., Ex. 1001, 5:27–28) and the latter has these components merely
“connected” (see, e.g., Ex. 1001, 5:62–6:2), even though the Figures
superficially appear the same with respect to the turbine engine and
reduction gearbox being flush against one another. Id.; see also supra
Section I.C (discussing the disclosure of the ’631 patent).
Having considered the evidence and the parties’ positions, we decline
to read the concept of “flush with” into the claims. We agree with
Petitioner’s position that such an interpretation is not supported by the ’631
patent’s written description, which illustrates and describes two
embodiments, each having a turbine engine and reduction gearbox
configured to be flush with one another, but refers to only the configuration
of Embodiment 1 as being “directly connected” and refers to the
configuration of Embodiment 2 as being merely “connected.” See Ex. 1001,
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5:27–28, 5:62–6:2, Figs. 2, 3; see also Ex. 2001 ¶ 63 (Patent Owner’s expert
witness confirming there is a difference between merely “connected” and
“directly connected”). Thus, the intrinsic record supports a conclusion that
the concept of “directly connected” is not related to whether one component
is “flush with” another component. This disclosure of the ’631 patent also
illuminates the meaning of “directly connected.” As shown in Embodiment
2, something may be connected with another thing even if there are
intervening components, e.g., a transmission shaft or coupling; however, as
shown in Embodiment 1, the ’631 patent uses the term “directly connected”
only where no such intervening components are disclosed. Ex. 1001, 5:15–
6:19, Figs. 2, 3.
Besides the guidance provided with respect to the embodiments
discussed above, the ’631 patent does not otherwise expressly define the
term “directly connected.” See generally Ex. 1001. Thus, we consider what
the ordinarily skilled artisan would consider to be its ordinary and customary
meaning. In this respect, Patent Owner also uses the word “uninterrupted”
to describe “directly connected.” See Prelim. Resp. 6; see also Ex. 2001
¶¶ 61–71. We conclude based on this record that the concept of
“uninterrupted” is more apt than the concept of “flush with,” and find it to be
a better description for the ordinary and customary meaning of “directly
connected.” For example, the ’631 patent describes, in Embodiment 1, “the
turbine engine 19 is connected to the plunger pump 18.” Ex. 1001, 5:26–27
(emphasis added). However, it is without question that Embodiment 1
positions a reduction gearbox between the turbine engine and plunger pump;
thus, the engine and pump may be connected, but they are not directly
connected. See, e.g., Fig. 2. On the other hand, regarding this same
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Embodiment 1, the ’631 patent describes that “the turbine engine 19 is
directly connected to an input end of the reduction gearbox 24,” and there
are no components illustrated or described as being between the turbine
engine and reduction gearbox. Id. at 5:28–30 (emphasis added), Fig. 3. The
connection between the turbine engine and reduction gearbox shown in
Embodiment 1 is more aptly described as being uninterrupted. Thus, this
illuminates the meaning of “directly connected.”
In view of the above, we ascribe to the term “directly connected” its
ordinary and customary meaning as it would have been understood by a
person of ordinary skill in the art, and we find that ordinary and customary
meaning to require that the turbine engine and reduction gearbox are
connected with nothing intervening there-between so that their connection is
uninterrupted.
“reduction gearbox integrated on the plunger pump”
The claim language “reduction gearbox integrated on the plunger
pump” is recited in claim 1. Ex. 1001, 6:54 (claim 1). Petitioner asserts that
this language means “reduction gearbox directly connected to the plunger
pump.” Pet. 18–22 (citing Ex. 1003 ¶¶ 56–57, 61; Ex. 1011 ¶ 23).
Patent Owner states, “[f]or purposes of this preliminary response,
Patent Owner agrees with Petitioner that ‘reduction gearbox integrated on
the plunger pump’ allows for there to be separate housings and an optional
transmission mechanism[ ] between the reduction gearbox and the plunger
pump.” Prelim. Resp. 9–10. However, Patent Owner also argues that the
term “integrated” cannot mean “directly connected” because the two terms
are used separately in claim 1 to indicate different things, the latter requiring
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the “flush with” concept that we have discussed and rejected above. Id. at
10.
Patent Owner’s position is that “integrated” cannot mean “directly
connected” because the latter term excludes having an exposed shaft or
coupling mechanism between components, but Patent Owner agrees with
Petitioner that “integrated” allows for such an intervening transmission
mechanism between a reduction gearbox and a plunger pump. Id.
Ultimately, Patent Owner argues “that the term ‘reduction gearbox
integrated on the plunger pump’ should simply be construed, as Petitioner
has argued, as a reduction gearbox connected to a plunger pump while
‘allowing for there to be separate housings and a coupling or transmission
mechanism between the two.’” Id. at 11.
We do not agree with either party’s position. See Intellectual
Ventures II LLC v. Ericsson Inc., 686 F. App’x. 900, 906 (Fed. Cir. 2017)
(“The Board is not constrained by the parties’ proposed constructions and is
free to adopt its own construction.”) (citing SAS Institute, Inc. v.
ComplementSoft, LLC, 825 F.3d 1341, 1351 (Fed. Cir. 2016)). At the outset,
we note that the ’631 patent does not expressly define the term “integrated
on” or, more fully, “reduction gearbox integrated on the plunger pump.” See
generally Ex. 1001. Similarly, nowhere in the prosecution history does
Patent Owner define this language. See generally Ex. 1002. Thus, the term
is accorded its ordinary meaning as would have been understood by the
person of ordinary skill in the art, in view of the Specification.
As with the claim term “directly connected,” discussed above, we are
guided by the descriptions of the two embodiments provided in the ’631
patent’s written description. In particular, the ’631 patent describes an
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embodiment that is expressly indicated to have a reduction gearbox
“integrated with” and “integrated on” a plunger pump, i.e., Embodiment 1,
and an embodiment that does not have this configuration and not described
in such terms, i.e., Embodiment 2. See Ex. 1001, 5:15–6:19, Figs. 2, 3.
Moreover, the ’631 patent expressly distinguishes these scenarios in
identifying Embodiment 1’s reduction gearbox 24 as “reduction gearbox
equipped on the plunger pump,” and identifying Embodiment 2’s reduction
gearbox 23 as merely “reduction gearbox.” Id. at 3:49–51, Figs. 2, 3.
Regarding Embodiment 1, which is illustrated in the ’631 patent’s
Figure 2 (reproduced above), the patent describes:
The plunger pump 18 is a plunger pump 18 integrated 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 coupling is omitted, greatly
shortening the total length of the turbine fracturing equipment
4, with a simple structure and convenient for maintenance.
Id. at 5:27–40 (emphasis added). This is readily contrasted with the ’631
patent’s description of its Embodiment 2 (illustrated in Figure 3, reproduced
above), which, in relevant part, states:
The turbine fracturing equipment 4 includes an exhaust system,
a turbine engine 19, a reduction gearbox 23, a transmission
mechanism 22 and a plunger pump 18, wherein the exhaust
system is connected to an exhaust port of the turbine engine 19,
an output end of the turbine engine 19 is connected to the
reduction gearbox 23, and the reduction gearbox 23 and the
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plunger pump 18 are connected through a transmission
mechanism 22. . . .
The transmission mechanism 22 is a transmission shaft or a
coupling.
Id. at 5:62–6:16 (emphasis added).
The only reasonable understanding of the above-quoted disclosures,
particularly in view of Figures 2 and 3 that illustrate the described structures,
is that the patentees intended “integrated on” to mean that the recited
reduction gearbox and plunger pump of claim 1 must be configured into a
single structural unit, i.e., unified, as shown in Figure 2, with no additional
transmission mechanism between the two. As such, we find that
independent claim 1 is directed to the ’631 patent’s Embodiment 1, but not
to its Embodiment 2.
The prosecution history further supports this interpretation. During
prosecution of the application that would issue as the ’631 patent, Patent
Owner made this distinction between the separate and distinct embodiments
clear by stating, “[t]he present invention discloses two implementations of
turbine fracturing, the technologies documented in claim 8 and claim 10,
respectively.” Ex. 1002, 32. Each of original claims 8 and 10 depended
from original claim 7, which in turn depended from independent claim 1. Id.
at 137. Original dependent claim 8 was directed to turbine fracturing
equipment comprising, inter alia, a turbine engine, a reduction gearbox, and
a plunger pump, where “the turbine engine is directly connected to an input
end of the reduction gearbox on the plunger pump.” Id. (emphasis added).
This was in contrast to original dependent claim 10, which was directed to
turbine fracturing equipment comprising, inter alia, a turbine engine, a
reduction gearbox, a transmission mechanism and a plunger pump, where
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“an output end of the turbine engine is connected to the reduction gearbox,
and the reduction gearbox is connected to the plunger pump through the
transmission mechanism.” Id. (emphasis added). Neither original
independent claim 1 nor original dependent claim 7 mentioned any structural
relationship between a reduction gearbox and a plunger pump. Id. at 136–
137.
The Examiner entered rejections of the original claims and, in
response, Patent Owner amended independent claim 1 to incorporate the
subject matter of original claim 8 (but not original claim 10), which is the
language at issue here:
wherein the turbine fracturing equipment comprises a turbine
engine, an exhaust system and a plunger pump, one end of the
turbine engine is connected to the exhaust system, the other end
of the turbine engine is connected to the plunger pump, the
plunger pump is a plunger pump integrated with a reduction
gearbox, the turbine engine is directly connected to an input end
of the reduction gearbox integrated on the plunger pump[.]
Ex. 1002, 29, 35 (Sept. 1, 2020, Response to Office Action –– claim
amendments, underlining omitted); Ex. 1001, 6:47–54. This claim
amendment was, at least in-part, made in view of the Examiner’s rejection of
original claim 1 over U.S. Publication 2007/0277982 (“Shampine”), which
disclosed an oilfield pumping system. Ex. 3001;7 Ex. 1002, 29.
Shampine disclosed, via its Figure 1 and related written description,
an engine with an integrated transmission, which was connected to a pump

7 Shampine is of record in the prosecution history of the ’631 patent (see,
e.g., Ex. 1001, code (56); Ex. 1002, 62–65). For ease of reference, we have
entered that reference into the record separately as Board Exhibit 3001.
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via a driveshaft. Ex. 3001, Fig. 1, ¶ 19. For context, we reproduce
Shampine’s Figure 1 below, as annotated to identify referenced components:

Id. Shampine’s Figure 1 shows a “side view of a plunger pump for use in a
pump system,” having prime mover 106, transmission 110, drive shaft 112,
and plunger pump fluid end 108, annotated with red text boxes to label the
components. Id.
Patent Owner argued that Shampine did not disclose, inter alia, “a
plunger pump integrated with a reduction gearbox.” Ex. 1002, 33. We see
from the Figure 1 above, however, that Shampine disclosed an engine
connected to a transmission, e.g., a reduction gearbox, which was connected
to but separated from a pump via a driveshaft. Regarding amended claim 1,
paraphrasing the language from the ’631 patent’s written description
directed to Embodiment 1, Patent Owner argued to the Examiner that “[i]n
the technical solution of the turbine fracturing in the invention, the turbine
engine is directly plugged into the fracturing pump, thus decreasing the
number of transmission parts, improving the transmission efficiency, and
reducing the fault rate.” Id.; compare with Ex. 1001, 5:23–40.
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It is clear from the intrinsic record that Patent Owner intentionally
directed the subject matter of independent claim 1 to Embodiment 1
described in the ’631 patent’s written description, rather than to
Embodiment 2, by amendment during prosecution. We are cognizant that
our reviewing court has cautioned that a claim interpretation that excludes
the preferred embodiment described in the specification “is rarely, if ever,
correct and would require highly persuasive evidentiary support.” Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996). However,
here, there is not just one preferred embodiment, our claim interpretation
does not exclude all preferred embodiments, and we conclude the above-
noted evidentiary support for our interpretation of “integrated on” is highly
persuasive. Our reviewing court has also recognized that “a claim need not
cover all embodiments.” Intamin Ltd. v. Magnetar Techs., Corp., 483 F.3d
1328, 1336–37 (Fed. Cir. 2007). In this case, the written description and
prosecution history discussed above make it clear that the patentees intended
for independent claim 1 to only encompass Embodiment 1 of the ’631
patent.
We also recognize that claims 8 and 9 of the ’631 patent include the
limitation “the turbine fracturing equipment comprises an exhaust system, a
turbine engine, a reduction gearbox, a transmission mechanism and a
plunger pump, . . . and the reduction gearbox is connected to the plunger
pump through the transmission mechanism.” Ex. 1001, 6:8–15. This
claimed subject matter is more clearly directed to the subject matter
described in the ’631 patent as Embodiment 2. Id. at 5:54–6:19.
Under 35 U.S.C. § 112(d) “a claim in dependent form shall contain a
reference to a claim previously set forth and then specify a further limitation
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of the subject matter claimed.” Thus, dependent claims in compliance with
Section 112(d) would incorporate the entirety of recited subject matter of the
claim from which they depend and then further limit that claim. However,
that is not the circumstance here because the subject matter of claims 8 and 9
appears to be incompatible with the requirements of independent claim 1.
As such, we find that the doctrine of “claim differentiation,” which refers to
the presumption that an independent claim should not be construed as
requiring a limitation added by a dependent claim, to be inapplicable here as
we are not construing independent claim 1 to require or encompass the
limitations of dependent claims 8 and 9. See Curtiss-Wright Flow Control
Corp. v. Velan, Inc., 438 F.3d 1374, 1380 (Fed. Cir. 2006). Moreover, as
explained by our reviewing court:
The doctrine of claim differentiation “is ‘not a hard and fast
rule[,]’” Regents of Univ. of Cal. v. Dakocytomation Cal., Inc.,
517 F.3d 1364, 1375 (Fed. Cir. 2008) (quoting Seachange Int’l,
Inc. v. C-COR, Inc., 413 F.3d 1361, 1369 (Fed. Cir. 2005)), and
“does not serve to broaden [independent] claims beyond their
meaning in light of the specification[,]” Intell. Ventures I LLC
v. Motorola Mobility LLC, 870 F.3d 1320, 1326 (Fed. Cir.
2017) (quoting Toro Co. v. White Consol. Indus., Inc., 199 F.3d
1295, 1302 (Fed. Cir. 1999)). When faced with clear and
unambiguous language in the specification and a claim
differentiation argument, the specification must prevail.
InterDigital Commc’ns, LLC v. Int’l Trade Comm’n, 690 F.3d
1318, 1324 (Fed. Cir. 2012) (“[T]he doctrine of claim
differentiation . . . can be overcome by strong contrary evidence
such as definitional language in the patent or a clear disavowal
of claim scope.”).
Campbell Soup Co. v. Gamon Plus, Inc., --- F. App’x. ---, 2021 WL
3671366, slip op. at 12 (Fed. Cir. Aug. 19, 2021). As discussed above, this
is the circumstance presented. The ’631 patent’s written description, and its
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prosecution history, are clear and unambiguous that the claim language
“integrated on” requires that independent claim 1’s recited reduction
gearbox and plunger pump must be configured into a single structural unit,
i.e., unified, as shown in Figure 2, with no additional transmission
mechanism between the two, and that independent claim 1 is directed to the
’631 patent’s Embodiment 1 and not to its Embodiment 2. The language of
dependent claims 8 and 9 cannot change this.
For the reasons set forth above, we interpret the claim language
“reduction gearbox integrated on the plunger pump” to mean that the recited
gearbox and plunger pump are configured and unified into a single structural
unit, with no additional transmission mechanism between the two.
“disposed in a straight line along the transmission direction
of power”
The claim language “disposed in a straight line along the transmission
direction of power” is recited by claims 7 and 9, which depend from claim 1
(claim 9 indirectly depends from claim 1 via its dependence on claim 8).
Ex. 1001, 8:4–5 (claim 7), 8:19–20 (claim 9). Petitioner asserts that this
claim language means “disposed in an end-to-end arrangement substantially
in the same horizontal plane.” Pet. 22–24 (citing, inter alia, Ex. 1003 ¶ 64).
On this issue, Patent Owner states:
For purposes of this preliminary response, Patent Owner
agrees with Petitioner’s construction that the term “disposed in
a straight line along the transmission direction of power” means
“disposed in an end-to-end arrangement substantially in the
same horizontal plane.” As discussed in the Petition, this
construction is supported by FIG. 2 of the ’631 patent and the
knowledge of a POSITA. (Pet., 22-24; Ex. 2001, ¶75).
Prelim. Resp. 11.
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This “straight line” recited by the claims need only be a line in any
two-dimensional path along the transmission direction of power, which
according to the ’631 patent is from the turbine’s exhaust, through turbine
engine, through the gearbox, and to the pump. Such a straight line is best
illustrated by the view of Figure 3, as it is a horizontal view of the structure
and shows all the components straightly aligned. Ex. 1001, Fig. 3. We
understand that the same components shown in Figure 2’s perspective view
as mostly aligned in a straight line but for some off-setting at reduction
gearbox 24, would have the same straight-line horizontal arrangement if
viewed from the same vantage as illustrated in Figure. 3.
Therefore, we agree with and adopt Petitioner’s unopposed
construction of “disposed in a straight line along the transmission direction
of power” as meaning disposed in an end-to-end arrangement substantially
in the same horizontal plane.
D. LEGAL STANDARDS
“In an IPR [or PGR], 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) requiring inter partes review petitions to
identify “with particularity . . . the evidence that supports the grounds for the
challenge to each claim”––§ 322(a)(3) imposes the same requirement for
post-grant reviews). This burden of persuasion never shifts to 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,
which also applies to post-grant proceedings under 35 U.S.C. § 326(e)).
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Anticipation and Public Use
Regarding anticipation under 35 U.S.C. § 102, our reviewing court
has held:
In order to anticipate the claimed invention, a prior art reference
must “disclose all elements of the claim within the four corners
of the document,” and it must “disclose those elements
‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign,
Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v.
Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)).
Microsoft Corp. v. Biscotti, Inc., 878 F.3d 1052, 1068 (Fed. Cir. 2017); see
also Purdue Pharma L.P. v. Epic Pharma, LLC, 811 F.3d 1345, 1358–59
(Fed. Cir. 2016) (distinct, but directly related disclosures of a reference may
be combined in an optional, anticipating embodiment, e.g., a controlled-
release pharmaceutical formulation specifically disclosed as an embodiment
with claimed components directly relates to a disclosed list of therapeutic
compounds useable therewith).
Anticipation may also occur where a claimed invention is embodied in
a pre-effective-date public use. 35 U.S.C. § 102(a)(1) (2020). The test for
whether an invention is unpatentable due to public use “is whether the
purported use: (1) was accessible to the public; or (2) was commercially
exploited.” Am. Seating Co. v. USSC Group, Inc., 514 F.3d 1262, 1267
(Fed. Cir. 2008) (quoting Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d
1374, 1380 (Fed. Cir. 2005)). Public use does not require a finding that the
public was made aware of every limitation of the challenged claim. BASF
Corp. v. SNF Holding Co., 955 F.3d 958, 966–67 (Fed. Cir. 2020). Public
use can be found “even where some elements of the invention are by their
nature concealed from view.” Id. at 967 (citing In re Blaisdell, 242 F.2d
779, 783 (CCPA 1957)). “The public use bar is triggered where, before the
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critical date, the invention is in public use and ready for patenting.” Barry v.
Medtronic, Inc., 914 F.3d 1310, 1320 (Fed. Cir. 2019).
Our reviewing court has “set forth factors that may be helpful in
analyzing the question of public use, including ‘the nature of the activity that
occurred in public; the public access to and knowledge of the public use;
[and] whether there was any confidentiality obligation imposed on persons
who observed the use.’” Dey, L.P. v. Sunovion Pharmas, Inc., 715 F.3d
1351, 1355 (Fed. Cir. 2013) (quoting Bernhardt, L.L.C. v. Collezione
Europa USA, Inc., 386 F.3d 1371, 1379 (Fed. Cir. 2004)).
If an independent claim is not anticipated by prior art (or a public
use), dependent claims including that independent claim’s limitation that is
missing from the prior art are also not anticipated. Trintec Indus., Inc. v.
Top-U.S.A. Corp., 295 F.3d 1292, 1296 (Fed. Cir. 2002).
Obviousness
Regarding obviousness under 35 U.S.C. § 103, the Supreme Court in
KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), reaffirmed the
framework for determining obviousness set forth in Graham v. John Deere
Co., 383 U.S. 1 (1966). The KSR Court summarized the four factual
inquiries set forth in Graham (383 U.S. at 17–18) that are applied in
determining whether a claim is unpatentable as obvious under 35 U.S.C.
§ 103(a) as follows: (1) determining the scope and content of the prior art;
(2) ascertaining the differences between the prior art and the claims at issue;
(3) resolving the level of ordinary skill in the art;8 and (4) considering

8 At this stage of the proceeding, there is no dispute as to the ordinary level
of skill in the art. See supra Section II.A.
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objective evidence indicating obviousness or non-obviousness.9 KSR, 550
U.S. at 406.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Id. at 416. “[W]hen the question is whether a patent claiming the
combination of elements of prior art is obvious,” the answer depends on
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id. at 417.
Importantly, as with anticipation, a proper § 103 analysis requires “a
searching comparison of the claimed invention—including all its
limitations—with the teachings of the prior art.” In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995) (emphasis added). When considering the issue of
obviousness, expressly recited claim limitations are not mere peripheral
issues where conclusions of a party or the Board may substitute for core
factual findings based on evidence that the limitation is met by the prior art.
K/S Himpp v. Hear-Wear Technologies, LLC, 751 F.3d 1362, 1365 (Fed.
Cir. 2014). “[I]f [an independent] claim [ ] is not obvious then [its
dependent] claims [ ] also cannot be obvious because they all depend from a
nonobvious claim.” Ortho-McNeil Pharmaceutical, Inc. v. Mylan
Laboratories, Inc., 520 F.3d 1358, 1365 (Fed. Cir. 2008) (citing In re Fritch,
972 F.2d 1260, 1266 (Fed. Cir. 1992), which states “dependent claims are
nonobvious if the independent claims from which they depend are
nonobvious”).

9 At this stage of the proceeding, there is no evidence pertaining to objective
indicia of non-obviousness. See Prelim. Resp.
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Indefiniteness
“The specification [of a patent] shall conclude with one or more
claims particularly pointing out and distinctly claiming the subject matter
which the inventor or a joint inventor regards as the invention.” 35 U.S.C.
§ 112(b) (2012). “[A] patent is invalid for indefiniteness if its claims, read
in light of the specification . . . and the prosecution history, fail to inform,
with reasonable certainty, those skilled in the art about the scope of the
invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124
(2014).
Enablement
35 U.S.C. § 112(a) requires that a patent’s claims be supported by a
specification “to enable any person skilled in the art . . . to make and use”
the claimed invention. “The test of enablement is whether one reasonably
skilled in the art could make or use the invention from the disclosures in the
patent coupled with information known in the art without undue
experimentation.” United States v. Telectronics, Inc., 857 F.2d 778, 785
(Fed. Cir. 1988). “[A] patent specification complies with the statute even if
a ‘reasonable’ amount of routine experimentation is required in order to
practice a claimed invention . . . .” Enzo Biochem, Inc. v. Calgene, Inc., 188
F.3d 1362, 1371 (Fed. Cir. 1999). Whether undue experimentation is
needed is not a single, simple factual determination, but rather is a
conclusion reached by weighing many factual considerations. In re Wands,
858 F.2d 731, 737 (Fed. Cir. 1988). These factors, referred to as the Wands
factors, include:
(1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state
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of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth
of the claims.
Id.
Written Description
To satisfy the written description requirement under 35 U.S.C.
§ 112(a), the specification must “reasonably convey[] to those skilled in the
art that the inventor had possession” of the claimed invention as of the filing
date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en banc). An adequate description does not require any particular
form of disclosure or that the specification recite the claimed invention in
haec verba, but must do more than render the claimed invention obvious.
Id. at 1352. The written description requirement for a claimed genus
requires the disclosure of “either a representative number of species falling
within the scope of the genus or structural features common to the members
of the genus so that one of skill in the art can ‘visualize or recognize’ the
members of the genus.” Id. at 1350.
In evaluating the adequacy of the disclosure, a court may consider
“the existing knowledge in the particular field, the extent and content of the
prior art, the maturity of the science or technology, [and] the predictability
of the aspect at issue.” Capon v. Eshhar, 418 F.3d 1349, 1359 (Fed. Cir.
2005) (cited with approval in Ariad, 598 F.3d at 1352); see also Boston Sci.
Corp. v. Johnson & Johnson, 647 F.3d 1353, 1366 (Fed. Cir. 2011) (holding
that because the assessment for written description is made from the
perspective of a person of ordinary skill in the art, in some instances, a
patentee can rely on information that is “well-known in the art” to satisfy
written description).
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With these standards in mind, and in view of the definition of the
ordinary skilled artisan and claim interpretations discussed above, we
address Petitioner’s challenges below.
E. GROUND 1 – PUBLIC USE OF APOLLO 1
Petitioner asserts that the Apollo 1 system is prior art, is “the exact
hydraulic fracturing system [Jereh] claimed in the ’631 patent,” and that
Jereh commercialized and publicly used the Apollo 1 before the ’631
patent’s earliest priority date. Pet. 25. Petitioner points to Exhibits 1013–
1022, which are press releases, public announcements, an equipment case
study publication, and links to promotional videos, as evidencing the
Apollo 1’s relevant system and public use. Id. at 25–35 (regarding
claim 1).10
Petitioner addresses each limitation of claim 1, but regarding claim
1’s limitation 1[c] (see supra Section I.C), which includes the limitations
“the plunger pump is a plunger pump integrated with a reduction gearbox,
the turbine engine is directly connected to an input end of the reduction
gearbox integrated on the plunger pump,” Petitioner asserts that these
components and their claimed arrangement and relationship to one another is
disclosed (as being part of the Apollo 1 product) by Exhibit 1016, which is a
Vericor case study on the system used in the Apollo 1. Pet. 32. Petitioner
submits the following images from Exhibit 1013 as evidence that the
Apollo 1 has a pump with an integrated reduction gearbox and a turbine
engine in direct connection with the reduction gearbox, as claimed:

10 Petitioner also states “[t]he public sale and use of the Apollo 1 system
anticipates each and every claim of the ’631 Patent,” but offers no evidence
of any actual sale or offer for sale regarding the Apollo 1 product. Pet. 28.
Therefore, we do not address the subject of sale or offer for sale further.
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Id. Each image above is from Exhibit 1016; the image above-left shows a
4500hhp pump, a gearbox, and a TF50F gas turbine (and an exhaust port);
the image above-right shows another view of the pump labeled to show its
fluid end, power end, and speed reducer. Exhibit 1016 indicates that the
above-left image is the “Apollo 1 Drive Train” and the image above-right is
the “Hydraulic Pump.” Ex. 1016, 2.
As for limitation 1[d], regarding the matching speed/torque between
the turbine engine’s output and the reduction gearbox’s input, Petitioner
argues that this is “an inherent result of a directly connected turbine-
gearbox-pump drivetrain of the type disclosed in Apollo 1. Pet. 33–35
(citing Ex. 1003 ¶¶ 75–76, 78–80).
Patent Owner presents a plethora of arguments in response to
Petitioner’s Ground 1, including that the Apollo 1 system does not meet the
claim requirements for a reduction gearbox “integrated on” a plunger pump
and that the reduction gearbox is “directly connected” to a turbine engine.
Prelim. Resp. 13. Relatedly, Patent Owner argues that the Apollo 1, thus,
does not meet the matching speed/torque limitations of claim 1. Id.
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Patent Owner argues that the term integrated on “does not permit
intermediate machinery, such as a clutch[ ] or an intermediate gearbox or
similar speed/torque-altering mechanism[s], between the claimed reduction
gearbox and the plunger pump” because “such intermediate machinery
would result in the claimed reduction gearbox being separated from (and no
longer being ‘integrated on’) the plunger pump.” Id. at 14. Although Patent
Owner’s proposed interpretation of “integrated on” is not exactly the same
as our construction of the term, as set forth above, Patent Owner’s point is
well-taken and applicable even under our construction of “integrated on.”
See supra Section II.C (“reduction gearbox integrated on the plunger
pump”). Patent Owner points to a photo from Exhibit 1017, as explained by
its witness, Mr. Zhang with a schematic diagram; we reproduce these images
below:

Id. at 14–15; Ex. 1017 (annotated by Patent Owner). The image above-left
is derived from Exhibit 1017 and shows the Apollo 1 apparatus with an
original overlaid illustration of the internal components, which has been
annotated by Patent Owner to identify these components. Patent Owner
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labels the Apollo 1 turbine engine, which is directly connected to a reduction
gearbox, which is connected to an intermediate gearbox, which is connected
to a clutch, which is connected to a plunger pump via an unlabeled shaft.
See Ex. 2010 ¶¶ 8–12 (Mr. Zhang testifying as to the identities of these
components). The image above-right is a schematic diagram prepared by
Patent Owner’s witness, Mr. Zhang, also identifying these components of
the Apollo 1 and identifying the various respective speeds and torques at
play in the system. Prelim. Resp. 15–16 (citing Ex. 2010 ¶¶ 8–12).
Patent Owner argues that the clutch and shaft connecting the
intermediate gearbox and plunger pump means the two are completely
separated and not integrated, as required by the claims. Id. at 16 (citing
Ex. 2010 ¶¶ 8–12). Patent Owner also argues that the Apollo 1 has two
gearboxes, one directly connected to a turbine engine and the second
intervening between the first and the plunger pump; thus, argues Patent
Owner, the Apollo 1 cannot meet the claim requirement that a single
reduction gearbox be both directly connected to the turbine and integrated on
the pump. Id. at 16–17 (citing Ex. 2001 ¶¶ 83–84).
Further, because of these relationships between the driving and
gearing components of the Apollo 1 system, Patent Owner also argues that,
even if one were to consider the intermediate gearbox to be integrated on the
plunger pump, it would not necessarily have an input speed and torque that
matched the output speed and torque from the turbine engine because of the
intervening gearbox, thus failing a second limitation of claim 1. Id. at 17–19
(citing Ex. 2001 ¶¶ 84–87; Ex. 2010 ¶¶ 11–12).
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We agree with Patent Owner’s above-noted positions and, for these
reasons, find Petitioner has not shown it is more likely than not that any
claim is anticipated by Apollo 1.
Petitioner’s evidence shows that the Apollo 1 apparatus has two
gearboxes and a clutch between its turbine engine and plunger pump, thus
the Apollo 1 does not meet the claim limitation “the plunger pump is a
plunger pump integrated with a reduction gearbox, the turbine engine is
directly connected to an input end of the reduction gearbox integrated on the
plunger pump.” Ex. 1001, 6:51–54. Petitioner’s Exhibit 1017 is explained
by Mr. Zhang11 as having these two gearboxes and clutch, where at least one
of the gearboxes and the clutch forecloses the system from having a single
reduction gearbox that is both integrated on a pump and directly connected
to a turbine engine. Ex. 2010 ¶¶ 8–12. Petitioner presents no evidence
contradicting Mr. Zhang’s understanding of the Apollo 1 configuration and,
notably never attempted to explain exactly what is shown in the above-
reproduced photograph from its own Exhibit 1017, even when given the
opportunity to address Mr. Zhang’s testimony in its Reply. See generally
Reply.
Even if we consider Petitioner’s Exhibit 1016 as representative of the
Apollo 1 system, this still falls short of the aforementioned claim limitation
1[c]. What we discern from the images of Exhibit 1016 addressed by
Petitioner (as reproduced above) is that, even when the components are

11 Mr. Zhang testifies that at Jereh he presides over research and
development work, including the Apollo units. Ex. 2010 ¶¶ 6, 8. Petitioner
does not assert that this is incorrect or misleading testimony. See generally
Reply. Thus, Mr. Zhang is a fact witness in a position to personally know
and testify on the components of the Apollo 1 system.
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arranged in a straight line, the components described include a gas turbine
with a directly connected gearbox (a reduction gearbox), which is connected
via a shaft to a speed reducer (another reduction gearbox), which is
integrated on a pump. One image from Exhibit 1016 shows the arrangement
of the turbine engine, gearbox, and pump, and the second image from
Exhibit 1016 shows the details of the pump such that it has its own speed
reducer, i.e., a reduction gearbox, integrated thereon to which the first
gearbox is connected. Ex. 1016, 2; see also Pet. 32 (confirming our
understanding). Thus, like Exhibit 1017, Exhibit 1016 discloses two
gearboxes between the turbine engine and plunger pump of the Apollo 1,
which presents the same problems noted above, i.e., there is no single
reduction gearbox in the Apollo 1 that is both integrated on the plunger
pump and directly connected to the turbine engine.
Moreover, even if the evidence did not suggest the positioning and
number of reduction gearboxes in the Apollo 1 as argued by Patent Owner
position (which it does), the evidence supports that there is another
mechanism between the turbine engine and its directly connected gearbox
and the plunger pump, i.e., a clutch. Ex. 1017; Ex. 2010 ¶¶ 8–12. The
presence of this mechanism also forecloses the Apollo 1 from reading on the
claim requirement that the same reduction gearbox that is directly connected
to the turbine engine also be integrated on the plunger pump.
For the reasons above, we find Petitioner has not shown it is more
likely than not that any claim is anticipated by Apollo 1, for any reason.
F. GROUND 2 – OBVIOUSNESS OVER APOLLO 1, ROBINSON, AND LIU
Petitioner’s Ground 2 relies on Apollo 1 in much the same way as
Ground 1. See Pet. 41–47 (“As set forth in Section IX.A, Apollo 1 discloses
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each and every element of claims 1-9. To the extent Apollo 1 does not
expressly disclose each and every piece of common fracturing equipment,
Robinson expressly discloses blending equipment for blending the fracturing
base fluids and sand-mixing equipment for mixing the base fluids and
fracturing proppant,” and “Apollo 1 discloses each and every remaining
element of independent claim 1.”). Ground 2 adds Liu’s disclosure of a
turbine-driven fracking pump to account for limitations of dependent claims
7 and 9 relating to the “straight line” arrangement of components. Id. at 47–
48. Petitioner does not assert that Liu (or Robinson) sufficiently
supplements what is disclosed in the Apollo 1 to remedy the shortcomings
identified above with regard to Ground 1.
For the same reasons noted above regarding Petitioner’s Ground 1, we
find Petitioner has not shown it is more likely than not that any claim is
unpatentable over Apollo 1, Robinson, and Liu under Ground 2.
G. GROUND 3 – OBVIOUSNESS OVER YEUNG
Petitioner asserts that claim 1 would have been obvious over Yeung,
describing Yeung as “in all respects an anticipation reference, except that it
does not explicitly mention some of the common ‘frac yard’ equipment
recited in claim 1 of the ’631 patent.” Pet. 49. Regarding claim 1’s
limitation 1[c], Petitioner asserts that “Yeung discloses a turbine engine with
one end connected to an exhaust and the other end connected to the plunger
pump through the integrated reduction gearbox,” pointing to Yeung’s
disclosed component 27 as the claimed reduction gearbox. Pet. 53 (citing
Ex. 1003 ¶¶ 60–61, 111). However, Petitioner also asserts that Yeung’s
plunger pump has “its own reduction gearbox,” which can also be
considered the claimed reduction gearbox. Id. at 53–54 (citing Ex. 1003
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¶ 111). To illustrate its position, Petitioner presents two annotated versions
of Yeung’s Figure 3, which we reproduce below:

Id. at 53–54. Each of the above images is Figure 3 from Yeung, with the
lower image omitting the left-most part of the figure, and they are annotated
by Petitioner to identify and label the gas turbine engine in green, a
reduction gearbox in blue, and a plunger pump in red. The top image shows
the gearbox to be a component connected with the turbine engine, while the
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bottom image shows the gearbox to be a component connected to the
plunger pump.
As was the case with Ground 1, here Petitioner again asserts that
limitation 1[d], relating to the matching speed/torque between the turbine
engine and reduction gearbox, would be inherent in the Yeung equipment.
Id. at 54.
Patent Owner argues Yeung is not prior art because it is not entitled to
the provisional filing date and actual filing date is after ’631 patent’s priority
date. Prelim. Resp. 41–53.
Regardless of whether Patent Owner is correct that Yeung is not prior
art to the claims of the ’631 patent, we find Ground 3 deficient based on the
Petition and evidence of record. See Dynamic Drinkware, 800 F.3d at 1378
(noting that a petitioner has the burden of persuasion to prove
unpatentability); FanDuel, Inc. v. Interactive Games LLC, 966 F.3d 1334,
1342 (Fed. Cir. 2020) (explaining that it is permissible for the Board to find
that a petitioner failed to show unpatentability based on a defect that a
patentee did not argue). Petitioner’s position on Yeung is internally
inconsistent. As we discussed above regarding Ground 1, claim 1 of the
’631 patent requires a single reduction gearbox to be both directly connected
to a turbine engine and integrated on a plunger pump. See Ex. 1001, 6:51–
54. Petitioner has expressly asserted that Yeung’s apparatus has two
gearboxes, one directly connected to a turbine engine and another one
integrated on a plunger pump, but in any case both are present and at least
one necessarily intervenes between the turbine engine or the plunger pump
and the other gearbox. See supra reproduced annotate figures of Yeung.
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This arrangement of components in Yeung forecloses the reference from
teaching claim 1’s limitation 1[c] or 1[d].
For these reasons, we find Petitioner has not shown it is more likely
than not that any claim would have been obvious over Yeung.
H. GROUND 4 – OBVIOUSNESS OVER YEUNG AND ROBINSON
Under Ground 4, Petitioner relies on Yeung in the same ways as for
Ground 3. Pet. 61–63 (“As set forth in Section IX.C, Yeung discloses each
and every element of claims 1-9 except for several pieces of common
fracturing equipment recited in claim element 1[a].”). Petitioner adds
Robinson for a disclosure of the other machinery that would be on the
fracking pad, as claimed. Id. at 63–64. Petitioner does not assert that
Robinson sufficiently supplements what is disclosed in Yeung to remedy the
shortcomings as identified above with regard to Ground 3.
For the same reasons noted above regarding Petitioner’s Ground 3, we
find Petitioner has not shown it is more likely than not that any claim is
unpatentable over Yeung and Robinson under Ground 4.
I. GROUND 5 – OBVIOUSNESS OVER LIU, ROBINSON,
AND WEIR 5000
Under Ground 5, Petitioner asserts that it would have been obvious to
combine Liu’s fracturing unit driven by a turbine engine with Robinson’s
disclosed common equipment, and that it further would have been obvious
to use the improved plunger pump disclosed by Weir 5000. Pet. 65–68.
Regarding claim 1’s limitation 1[c], Petitioner asserts that Liu discloses the
arrangement of a turbine engine, reduction gearbox, and plunger pump, as
claimed, pointing to Liu’s Figure 3 and the related disclosure. Id. at 70.
Petitioner submits an annotated version of Liu’s Figure 3 to illustrate its
position, which we reproduce below:
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Id. The image above is Liu’s Figure 3, annotated by Petitioner to identify a
pump in red, a reduction gearbox in blue, a turbine engine in green, and an
exhaust hood in yellow. Id. (citing Ex. 1008, Fig. 3, ¶¶ 13, 35). Without
any discernable analysis, Petitioner concludes this discloses the subject
matter of claim 1’s 1[c] limitation. Id.
Patent Owner argues that adding Weir 5000 does not remedy the
deficiencies of Liu or Robinson. Prelim. Resp. 58. Patent Owner also
argues Weir 5000 is not established to be prior art. Id. at 53–57.
Concerning the above-referenced disclosure of Liu, Patent Owner argues it
does not teach “[a] reduction gearbox that is both directly connected to a
turbine engine and integrated on a plunger pump.” Id. (referring back to
arguments made over Petitioner’s Ground 2). Patent Owner’s position on
Liu’s disclosure is that “Liu discloses a fracturing pump truck having a
reduction gearbox 3 that is separated from the turbine engine 1 by an
exposed ‘coupler’ 5.” Id. at 37 (citing Ex. 1008, 11, Fig. 3). Patent Owner
argues that the coupler 5 positioned between its disclosed gearbox and
turbine engine forecloses Liu from teaching the claim limitation where a
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single reduction gearbox is both integrated on a plunger pump and directly
connected to a turbine engine. Id. at 38 (citing Ex. 2001 ¶¶ 118–119).
Whether or not Weir 5000 is prior art, we agree with Patent Owner’s
position on the teachings of Liu. The claims require a single reduction
gearbox to be both directly connected to a turbine engine and integrated on a
plunger pump. See Ex. 1001, 6:51–54. Liu discloses a system where a
coupler 5 is positioned between a turbine engine 1 and a gearbox 3.
Ex. 1008 ¶ 35. Thus, the gearbox is not directly connected to the turbine
engine.
For this reason, Petitioner has not shown it is more likely than not that
any claim is unpatentable over the combination of Liu, Robinson, and Weir
5000.
J. GROUND 6 – OBVIOUSNESS OVER COQUILLEAU, ROBINSON,
AND WEIR 5000
Under Ground 6, Petitioner asserts that Coquilleau teaches the same
arrangement and characteristics as the claimed turbine driven wellsite
surface equipment, and proposes combining its disclosure with Robison’s
disclosure of wellsite equipment, Weir 5000’s disclosure of a pump, and
Liu’s disclosure regarding the straight-line arrangement of turbine-to-pump
components, as claimed. Pet. 77–83. Regarding claim 1’s limitation 1[c],
Petitioner relies on Coquilleau’s Figure 2, which we reproduce below as
annotated by Petitioner:

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Id. at 85–86. Coquilleau’s Figure 2 shows a schematic diagram of wellsite
power equipment and Petitioner has annotated the image to identify in a
green frame and label a turbine engine, in a blue text box a reducer and/or
transmission (not shown), in a red frame and textbox a pump, and in a
yellow frame and text box an exhaust system. Petitioner asserts this shows a
“turbine engine is connected to an output shaft of the pump by a direct or
closed couple connection or through a gear reducer. Id. at 3:65-4:26.” Pet.
86 (internal citation quoted for context).
Patent Owner argues that “Petitioner did not identify how any of the
claim limitations are disclosed in Coquilleau,” calling Petitioner’s
conclusion as noted above, a “cursory unsupported allegation.” Prelim.
Resp. 59–60. Patent Owner also argues that “Coquilleau does not teach a
reduction gearbox directly connected to a turbine engine and integrated on a
plunger pump. Coquilleau is also silent concerning the claimed
connectivity.” Id. at 61.
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We agree with Patent Owner’s position. We recognize that Petitioner
relies on Coquilleau to teach a reduction gearbox that is both integrated on a
plunger pump and directly connected to a turbine engine, as claimed;
however, the evidence relied upon by Petitioner does not support this.
Coquilleau’s Figure 2, reproduced above, does not show a reduction
gearbox; a fact established by the necessity of Petitioner’s annotating the
figure to add one. See Ex. 1001, 6:51–54. Moreover, the portion of
Coquilleau’s written description describing a “gear reducer” merely
indicates that the turbine engine (prime mover 202) is connected to a pump
(106) by “direct or closed coupled connection, a transmission, a gear
reducer, a power turbine close coupled to the pump or by any suitable
connection.” Ex. 1009, 4:21–26. This listing of possibilities does not
provide an adequate description about the actual structural relationships
between a turbine engine, reduction gearbox (e.g., gear reducer), and a
pump; certainly not that such a reduction gearbox is both directly connected
to the turbine engine and also integrated on a plunger pump, as required by
claim 1.
For these reasons, Petitioner has not shown it is more likely than not
that any claim is unpatentable over the combination of Coquilleau,
Robinson, Weir 5000, and Liu.
K. GROUND 7 – OBVIOUSNESS OVER GREEN FIELD, ROBINSON,
AND WEIR 5000
Under Ground 7, Petitioner relies on Green Field’s disclosure of a
hydraulic fracturing system with turbine-driven fracturing pumps, Robinson
for the other conventional equipment used on a fracking site, and Weir 5000
for a fracturing pump, in combination. Pet. 91–95. Regarding claim 1’s
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limitation 1[c], Petitioner points to the following photograph in Green Field,
annotated by Petitioner to identify components:

The photograph above is an orange colored piece of equipment and
Petitioner has annotated it to identify and label an exhaust system in yellow,
a turbine engine in green, a reduction gearbox in blue, and a plunger pump
in red. Id. at 97–98. Petitioner asserts this “discloses limitation 1[c], as it
shows an arrangement wherein the turbine engine is directly connected to a
reduction gearbox, which is in turn directly connected to the plunger pump
on the bottom. Ex. 1010 at 8; Ex. 1003 ¶ 200.” Id. at 97.
Patent Owner argues Green Field has not been shown by Petitioner to
have been a printed publication. Prelim. Resp. 61–66. Patent Owner also
argues that Green Field does not teach the claimed reduction gearbox that is
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directly connected to a turbine engine because there is a shaft connecting the
turbine engine to the reduction gearbox. Id. at 67 (citing Ex. 1010, 8).
Patent Owner also argues that Green Field does not teach a reduction
gearbox that is integrated with a plunger pump, as claimed, because between
the reduction gearbox (as identified by Petitioner) and the plunger pump
(also as identified by Petitioner) there is an intervening hydraulic coupling.
Id. at 68–69.
Regarding this last point, Patent Owner submits its own annotated
version of the same photograph from Green Filed as Petitioner (above), as
follows:

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Id. at 69; Ex. 1010, 8. The photograph above is the same photograph cited
by Petitioner as teaching claim limitation 1[c], which Patent Owner has
annotated to label the same reduction gearbox and the same plunger pump as
Petitioner, but also circling and labeling a hydraulic coupling, which
Petitioner did not identify. Id. (citing Ex. 2001 ¶¶ 162–163; Ex. 2023).
Patent Owner explains that “[a] hydraulic coupling effectively
functions like an additional reduction gearbox, modifying the speed and
torque between the reduction gearbox and the plunger pump. (Ex. 2001,
¶73-74, 163). . . . Thus, the Green Field device does not disclose or suggest
a reduction gearbox that is ‘integrated’ on a plunger pump.” Id. at 69.
We agree with this last argument by Patent Owner. Whether Green
Field is prior art or not, it does not disclose a reduction gearbox that is both
directly connected to a turbine engine and integrated on a plunger pump.
See Ex. 1001, 6:51–54. It is apparent that the reduction gearbox of Green
Field, identified by Petitioner, is not integrated on its plunger pump, but is
separated therefrom by a hydraulic coupling.
Thus, Petitioner has not shown it is more likely than not that any
claim is unpatentable over the combination of Green Field, Robinson, and
Weir 5000.
L. GROUND 8 – INDEFINITENESS OF “INTEGRATED ON”
Petitioner argues that
If [its] [claim] construction is not adopted, and the term
“integrated on” is construed to mean only a reduction gearbox
that is part of or flush the plunger pump, then the Challenged
Claims would be indefinite, and the language of Claim 8 would
be rendered meaningless, because there is no disclosure in the
ʼ631 Patent of such a configuration.
Pet. 105.
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As discussed above, “integrated on,” as the term is used in claim 1 as
a part of “reduction gearbox integrated on the plunger pump,” is construed to
mean that the recited gearbox and plunger pump are configured and unified
into a single structural unit, with no additional transmission mechanism
between the two. See supra Section II.C. As we have interpreted this claim
language, we are not persuaded based on the present record that it renders
the claims indefinite. Regarding “integrated on,” and the clause of which it
is a part, the claims do not fail to inform, with reasonable certainty, those
skilled in the art about the scope of the invention. See Nautilus, 134 S. Ct. at
2124.
Thus, Petitioner has not shown it is more likely than not that any
claim is unpatentable as indefinite because of the term “integrated on.”
M. GROUND 9 – LACK Of WRITTEN DESCRIPTION FOR
“INTEGRATED ON”
Petitioner argues that
To the extent BJ Energy’s construction of ‘integrated on
the plunger pump’ is not adopted, the ʼ631 Patent does not
provide any written description support for a reduction gearbox
that is integrated “on” or with the plunger pump and therefore
the Challenged Claims would be invalid for failing to satisfy
the written description requirement.
Pet. 106.
As discussed above, “integrated on,” and “reduction gearbox
integrated on the plunger pump” is construed to mean that the recited
gearbox and plunger pump are configured and unified into a single
structural unit, with no additional transmission mechanism between the two.
See supra Section II.C. In so interpreting this claim language we identified
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that the ’631 patent describes in Embodiment 1 a structure where a reduction
gearbox is integrated on a pump. Id.; see also Ex. 1001, 5:15–52, Fig. 2.
The specification “reasonably conveys to those skilled in the art that
the inventor had possession” of the claimed invention as of the filing date.
Ariad, 598 F.3d at 1351. Thus, we find that there is sufficient written
description for claim 1, specifically regarding the claim language “reduction
gearbox integrated on the plunger pump.”
We recognize that claims 8 and 9 require this same “integrated on”
structure, but also require an intervening transmission mechanism and that
claimed structure appears specifically directed to the ’631 patent’s
Embodiment 2, which is described as including such a transmission
mechanism, but is not described as having a reduction gearbox integrated on
a plunger pump. See supra Section II.C; see also Ex. 1001, 5:54–6:19,
Fig. 3. As we have discussed above, according to the ’631 patent and its
claims, a reduction gearbox cannot be integrated on a plunger pump if there
are intervening mechanisms, they must be configured and unified into a
single structural unit, with no additional transmission mechanism between
the two, as illustrated in the Specification by Figure 2, but not Figure 3. See
Ex. 1001, Figs. 2–3. Because claims 8 and 9 appear to require a
combination of features from both Embodiments 1 and 2, which does not
appear to be described, either explicitly or implicitly, in the ’631 patent,
these claims do not appear, based on the record before us, to “reasonably
convey[] to those skilled in the art that the inventor had possession” of their
claimed invention as of the filing date and are not supported by a written
description under 35 U.S.C. § 112(a). Ariad, 598 F.3d at 1351.
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N. GROUND 10 – LACK OF ENABLEMENT FOR AND INDEFINITENESS
OF “DISPOSED IN A STRAIGHT LINE”
Petitioner argues that
If Claims 7 and 9 are construed to require a perfectly
straight line along the transmission direction of power,
however, the ʼ631 Patent fails to inform a POSITA how to
practice the claimed invention without undue experimentation,
rendering Claims 7 and 9 invalid for lack of enablement.
Ex. 1003 ¶ 228. Such a construction would also render Claims
7 and 9 indefinite because it would require an impossibility,
i.e., that various components of the hydraulic fracturing system
be disposed in a perfectly straight line along the transmission
direction of power when even the figures of the ʼ631 Patent
show that a perfectly straight line is not achievable.
Synchronoss Techs., Inc., 2021 WL 520047, at *5 (finding the
challenged claims indefinite and therefore invalid because they
“nonsensical and require an impossibility—that the digital
media file contain a directory of digital media files”).
Pet. 108 (emphasis added).
As discussed above, we have construed “disposed in a straight line
along the transmission direction of power,” consistently with the
interpretation proposed by Petitioner and agreed-to by Patent Owner, as
meaning disposed in an end-to-end arrangement substantially in the same
horizontal plane. Thus, this ground for unpatentability is premised on a
construction that we have not adopted, and is therefore unpersuasive.
O. GROUND 11 – LACK OF WRITTEN DESCRIPTION FOR “DISPOSED IN
A STRAIGHT LINE”
Petitioner argues that
To the extent Claims 7 and 9 are construed to require a
perfectly straight line along the transmission direction of
power, there is no written description support in the
specification for such a construction. Indeed, there is no
disclosure in the ʼ631 Patent whereby the elements of the
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fracturing system are disposed in a perfectly straight line, and
the figures of the ʼ631 Patent actually demonstrate the opposite.
Ex. 1003 ¶ 231.
Pet. 109 (emphasis added).
As discussed above, we have construed “disposed in a straight line
along the transmission direction of power,” consistently with the
interpretation proposed by Petitioner and agreed-to by Patent Owner, as
meaning disposed in an end-to-end arrangement substantially in the same
horizontal plane. Here again, this ground for unpatentability is premised on
a construction that we have not adopted, and is therefore unpersuasive based
on the record before us.
III. CONCLUSION
On the record before us at this stage in the proceeding, Petitioner has
not demonstrated with particularity that it is more likely than not that most
claims challenged in the petition are unpatentable under the asserted
grounds. Although there is a reasonable argument that claims 8 and 9 may
be unpatentable under 35 U.S.C. § 112(a), as discussed above, this analysis
is applicable to only these two dependent claims under a single ground for
unpatentability, leaving Petitioner’s other ten grounds insufficient regarding
independent claim 1 and dependent claims 2–7. As discussed above,
instituting trial under these circumstances would not be an efficient use of
the Board’s or the parties’ time and resources. See Chevron, IPR2018-
00923, Paper 9, 10–11; Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper
7, 41–43 (PTAB Jan. 24, 2019) (informative). Our decision at this stage
derives from our review of the record presented.
In accordance with the Court’s decision in SAS (138 S. Ct. at 1359–
60) and Office guidance, we deny institution of a post-grant review of the
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challenged claims of the ’631 patent on any grounds alleged by Petitioner.
This decision does not reflect a final determination on the patentability of
any claim.
ORDER
Accordingly, it is hereby:
ORDERED that, pursuant to 35 U.S.C. § 324, institution of trial in
post-grant review of the claims of the ’631 patent is denied.

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For PETITIONER:

Barry J. Herman
Jeffrey S. Whittle
Preston Heard
Brendan O’Dea
WOMBLE BOND DICKINSON LLP
barry.herman@wbd-us.com
jeffrey.whittle@wbd-us.com
preston.heard@wbd-us.com
brendan.odea@wbd-us.com

For PATENT OWNER:

Justin L. Krieger
Nicoletta Kennedy
Yifan Mao
Akkad Moussa
KILPATRICK TOWNSEND & STOCKTON LLP
jkrieger@kilpatricktownsend.com
nkennedy@kilpatricktownsend.com
ymao@kilpatricktownsend.com
amoussa@kilpatricktownsend.com