In what the company’s attorneys are billing as a “bet-the-industry case,” the Patent Trial and Appeal Board recently invalidated a patent for technology used in oil and gas drilling that was being challenged by G&H Diversified Manufacturing.
PTAB issued its 139-page judgment Oct. 28, siding with G&H in its post-grant review challenge of the patent for components used in what’s called a perforation gun. The tool contains explosive charges and is used to perforate oil and gas wells in preparation for production. The PTAB held all 21 claims in DynaEnergetics Europe GmbH’s patent were invalid.
The ruling is a win not just for oil field products manufacturer G&H but for nearly a dozen additional companies that were each accused of infringing the patents in federal lawsuits across Texas.
G&H’s attorney, Amir Alavi of Alavi Anaipakos, said he was “extremely happy” for his clients — G&H and its subsidiary, Yellow Jacket Oil Tools, which was also the target of a lawsuit.
“This judgment will protect all the manufacturers who build one of the key pieces of equipment used in today’s oil and gas drilling industry,” he said.
Alavi told The Texas Lawbook that post-grant review is a “seldom-used vehicle” that is only available for a short period of time after a patent issues and “comes with a higher downside,” including the potential of being precluded from raising validity defenses at trial.
“Ultimately, I had confidence in my team, and we felt very good about the prior art and also felt we had great defenses other than validity at the district court,” he said of pursuing the somewhat risky strategy. “We were willing to live on those defenses.”
Alavi said in coming weeks his team will notify U.S. District Judge Alan Albright of the PTAB ruling, but that next steps beyond that depends on whether DynaEnergetics appeals.
Alavi repeatedly praised the work of two colleagues — Joshua Wyde and Steve Jugle — who he said took the lead on the post-grant review proceedings.
Other oilfield products manufacturers that faced litigation over the patent include XConnect, SWM International, Oil States International, Horizontal Wireless Services, Bear Manufacturing, Oso Perforating, Nexus Perforating, Vigor USA, GR Energy Services, Rock Completion Tools and NexTier Completion Solutions.
G&H and those companies were all named in patent infringement lawsuits filed between December 2020 and the spring of 2021. G&H successfully petitioned PTAB for a post-grant review of the patent while the district court case was in its infancy.
Once PTAB began its review of the patent, G&H in November 2021 asked U.S. District Judge Alan Albright — who has only granted stays in exceedingly rare circumstances — to hit pause on the lawsuit while the PTAB review proceeded.
Judge Albright agreed to stay the case on Dec. 20, according to court records.
A message left with counsel for DynaEnergetics wasn’t returned Tuesday afternoon.
DynaEnergetics is represented by Lisa Moyles of Moyles IP, Barry Herman and Preston Heard of Womble Bond Dickinson, Megan Moore of Rusty Hardin & Associates and Eric Findlay of Findlay Craft.
G&H is also represented by Michael McBride of Alavi Anaipakos. XConnect is represented by Megan Redmond of Erise IP. SWM International and Oil States International are represented by Erik Hawes at Morgan Lewis & Bockius. Horizontal Wireless Services and Bear Manufacturing are represented by Bryan Clark of the Webb Law Firm. Oso Perforating is represented by Russ Emerson of Haynes and Boone. Nexus Perforating is represented by John Buche of Buche & Associates. Vigor USA is represented by Christopher Cravey of Jackson Walker. GR Energy Services is represented by Aimee Fagan of Sidley Austin. NexTier Completion Solutions is represented by Colin Philips of AZA.