PTAB challenges

Proceedings overview

There is one AIA trial proceeding on file for US12110780, which has a status of "Institution Denied." This outcome means all challenged claims of the patent were sustained, providing a hardened defensive posture for the patent owner against future challenges on the same or similar grounds in an IPR.

PGR2025-00061 — SCIENTIFIC DRILLING INTERNATIONAL, INC. v. Gunnar Lllp

• Type: Post-Grant Review (PGR)
• Filed: 2025-07-01
• Status: Institution Denied. The PTAB declined to institute a trial, meaning the challenged claims were not subjected to further review and remain patentable.
• Judge panel: The judge panel for PGR2025-00061 was Vice Chief Judge Michael P. Tierney, Administrative Patent Judge Brian P. Murphy, and Administrative Patent Judge Matthew R. Aldridge.
• Petition grounds: The petition challenged claims 1-22 of U.S. Patent No. 12,110,780 as unpatentable under 35 U.S.C. § 101 for lacking subject matter eligibility, under 35 U.S.C. § 102 as anticipated by U.S. Patent No. 9,759,060 (Halliburton '060), and under 35 U.S.C. § 103 as obvious over various combinations of prior art, including Halliburton '060, US 2019/0119990 A1 (Reelwell), US 2012/0193144 A1 (Hallundbaek), and others.
• Institution decision: Denied on 2026-01-23. The panel denied institution for all challenged claims, finding that the Petitioner, Scientific Drilling International, Inc., did not demonstrate a reasonable likelihood that at least one challenged claim is unpatentable. Specifically, the Board found that the Petitioner failed to establish a prima facie case for unpatentability under § 101, § 102, or § 103 for any of claims 1-22.
• Final Written Decision: Not applicable (institution was denied).
• Settlement / termination: Not applicable (institution was denied).
• Appeal: No appeal was filed with the Federal Circuit, as the institution decision was not appealable as of the current date.
• Defensive value: The denial of institution for all claims challenged in PGR2025-00061 means that the patent owner, Gunnar Lllp, successfully defended the patentability of all claims 1-22 against the asserted grounds. A defendant facing assertion of this patent will find it more challenging to launch new PTAB proceedings based on the same prior art or legal theories without presenting substantially new arguments or evidence.

Strategic summary

All 22 claims of US12110780 were challenged in PGR2025-00061 and were ultimately SUSTAINED due to the denial of institution. As such, no claims of the patent have been canceled or narrowed through this PTAB proceeding, and all claims (1-22) remain active and are considered "tested" against the grounds raised by Scientific Drilling International, Inc.

The estoppel landscape resulting from PGR2025-00061 means that Scientific Drilling International, Inc. (and its privies) are barred under 35 U.S.C. § 325(e)(2) from asserting in future district court litigation or other USPTO proceedings any ground of unpatentability that was raised or reasonably could have been raised in the PGR. This strengthens the patent owner's position against this specific petitioner. For other potential defendants, prior art grounds cited in PGR2025-00061 (e.g., U.S. Pat. No. 9,759,060, US 2019/0119990 A1, US 2012/0193144 A1) and the § 101 challenge would be more difficult to re-litigate at the PTAB, as the Board has already found them insufficient for institution.

There is no pattern of multiple IPRs from the same petitioner on this patent, nor is there an aggressive pursuit of PTAB appeals by the patent owner, as institution was denied, negating the need for an appeal by either party. Unified Patents is not in the chain.

Recommended next steps

If you are a defendant facing assertion of US12110780, it is important to understand the specific reasons for the denial of institution in PGR2025-00061. The Board’s decision (Paper 12) details why Scientific Drilling International, Inc. failed to demonstrate a reasonable likelihood of unpatentability for claims 1-22 under §§ 101, 102, and 103. This document is available on the USPTO PTAB Decisions portal and can be accessed via the link below.

For example, regarding the § 101 challenge, the Board concluded that "Petitioner has not demonstrated a reasonable likelihood of showing that any of claims 1–22 is directed to a judicial exception or that, if it is, the claims do not recite additional elements that amount to significantly more than the exception."

Regarding the § 102 anticipation grounds, the Board found, for instance, that "Petitioner has not demonstrated a reasonable likelihood that Halliburton ’060 discloses, for example, the rigid connection recited in claims 1, 9, and 18, and has not provided sufficient explanation of how the claimed rigid connection would be inherent in Halliburton ’060."

Similarly, for the § 103 obviousness grounds, the Board determined that "Petitioner has not demonstrated a reasonable likelihood of showing that the asserted combinations of references render claims 1–22 unpatentable as obvious."

Given the institution denial, any new PTAB petition would need to identify novel prior art or present significantly different and more compelling arguments than those already considered and rejected by the Board in PGR2025-00061, especially for claims 1-22.

Link to Institution Decision (Paper 12) for PGR2025-00061:
https://developer.uspto.gov/ptab-api/documents/PGR2025-00061/12