IP Law Daily, PATENT—Fed. Cir.: Obviousness affirmed in fracking pump dispute, (Sep 15, 2025)

By Kevin M. Finson, J.D.

Claims relating to pumps used in hydraulic fracturing were properly found obvious because the PTAB’s finding of a motivation to combine was supported by expert testimony.

A manufacturer of hydraulic fracturing pumps failed to show any error in a PTAB determination that its patent claims were invalid as obvious, the U.S. Court of Appeals for the Federal Circuit has held. The board’s findings were supported by substantial evidence in the form of expert testimony (BJ Energy Solutions, LLC v. Evolution Well Services, LLC, No. 24-1309 (Fed. Cir. Sept. 12, 2025)).

BJ Energy Solutions, LLC (BJ) was the owner of U.S. Patent No. 9,395,049 (the ’049 patent), which related to a pump-motor-pump configuration in which a single electric motor drove two hydraulic fracturing pumps, one at either end of the motor. Evolution Well Services, LLC (Evolution) petitioned for inter partes review challenging several claims of the ’049 patent as obvious in light of two different prior art combinations. The Patent Trial and Appeal Board instituted review and found all challenged claims unpatentable as obvious under either combination. BJ appealed.

Motion to strike. BJ had sought to strike portions of Evolution’s reply brief and expert declaration before the board on the basis that they improperly introduced new arguments and evidence. The board had dismissed the motion as moot because it did not rely on materials which BJ sought to strike. BJ argued that the board abused its discretion by then citing portions of the reply brief. The court found that this was not an abuse of discretion because it did not appear, and BJ did not allege, that the cited portions of the reply brief raised any new arguments.

Motivation to combine. BJ argued that the board erred in finding a motivation to combine by relying on expert testimony about a skilled artisan’s present-day knowledge of the pump-motor-pump configuration instead of knowledge at the time of the patent application. The court reviewed the testimony and found that the board had determined that the expert was speaking about the prior art, not present-day knowledge, noting that both parties had used the term “pump-motor-pump configuration” to refer to prior art as well as to the subject of the patent. The court declined to second-guess the board’s assessment of what the expert was talking about.

The court affirmed the decision of the board.

The Case is No. 24-1309.

Judge: Moore, K.

Attorneys: Eagle Howard Robinson (Norton Rose Fulbright US LLP) for BJ Energy Solutions, LLC. Kenneth Wayne Darby (Fish & Richardson PC) for Evolution Well Services, LLC.

Companies: BJ Energy Solutions, LLC; Evolution Well Services, LLC

Cases: Patent FedCirNews USPTO