U.s. Well Services, LLC v. Coke Morgan Stewart, Acting Under Secretary of Commerce for Intellectual Property

N OTE : This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
U.S. WELL SERVICES, LLC,
Appellant
v.
COKE MORGAN STEWART, ACTING UNDER
SECRETARY OF COMMERCE FOR
INTELLECTUAL PROPERTY AND ACTING
DIRECTOR OF THE UNITED STATES PATENT
AND TRADEMARK OFFICE,
Intervenor
______________________
2023-1799
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2021-
01316.
-------------------------------------------------
U.S. WELL SERVICES, LLC,
Appellant
v.
COKE MORGAN STEWART, ACTING UNDER
SECRETARY OF COMMERCE FOR
INTELLECTUAL PROPERTY AND ACTING
Case: 23-1799 Document: 58 Page: 1 Filed: 03/13/2025

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U. S . WELL SERVICES , LLC v. STEWART 2
DIRECTOR OF THE UNITED STATES PATENT
AND TRADEMARK OFFICE,
Intervenor
______________________
2023-2106
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2022-
00074.
______________________
Decided: March 13, 2025
______________________
MATTHEW JAMES DOWD, Dowd Scheffel PLLC, Wash-
ington, DC, argued for appellant. Also represented by
R OBERT J AMES SCHEFFEL.
J USTIN B OVA , Office of the Solicitor, United States Pa-
tent and Trademark Office, Alexandria, VA, argued for in-
tervenor. Also represented by P ETER J. A YERS, A MY J.
N ELSON, FARHEENA YASMEEN RASHEED, KEVIN R ICHARDS.
______________________
Before L OURIE , BRYSON, and R EYNA , Circuit Judges.
L OURIE , Circuit Judge.
U.S. Well Services, LLC (“USWS”) appeals from the de-
nials of its motions to amend in two final written decisions
of the U.S. Patent Trial and Appeal Board (“the Board”).
In the first decision, the Board found original claims 1–17
of U.S. Patent 10,280,724 (“the ’724 patent”) unpatentable
and denied USWS’s motion to amend by adding proposed
substitute claims 18–34. Halliburton Energy Servs., Inc. v.
U.S. Well Servs., LLC, No. IPR2021-01316, 2023 WL
2597810 (P.T.A.B. Feb. 17, 2023) (“’1316 Decision”). In the
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U. S . WELL SERVICES , LLC v. STEWART 3
second decision, the Board granted USWS’s request to can-
cel original claims 1–13 of U.S. Patent 10,254,732 (“the ’732
patent”) and denied USWS’s motion to amend by adding
proposed substitute claims 14–26.1 Halliburton Energy
Servs., Inc. v. U.S. Well Servs., LLC, No. IPR2022-00074
(P.T.A.B. Apr. 27, 2023) (“’0074 Decision”), Appeal No. 23-
2106, J.A. 1–37. The Board held that the term “high pres-
sure” in all proposed substitute claims was indefinite. We
affirm.
The ’724 and ’732 patents are generally directed to hy-
draulic fracturing equipment for hydrocarbon extraction.
While the patents are directed to different specific subject
matter, they share a common thread—the proposed substi-
tute claims all contain a substantially similar limitation in-
cluding the term “high pressure.” The below portion of
proposed substitute claim 18 of the ’724 patent is repre-
sentative for the indefiniteness issue on appeal:
18. . . . A hydraulic fracturing system for fracturing
a subterranean formation comprising:
an electric pump fluidly connected to a well associ-
ated with the subterranean formation, and config-
ured to pump fluid into a wellbore associated with
the well at a high pressure so that the fluid passes
from the wellbore into the subterranean formation
and fractures the subterranean formation; . . . .
’1316 Decision, at *22 (emphasis added).
1 Appeal No. 2023-1799 (relating to the ’724 patent)
and Appeal No. 2023-2106 (relating to the ’732 patent)
were briefed separately. Because the issues across the ap-
peals largely overlap, we address both together. Unless
otherwise indicated, we cite the Board’s decision on review
and the parties’ briefings in the 2023-1799 appeal.
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U. S . WELL SERVICES , LLC v. STEWART 4
USWS argues that the Board erred in finding the term
“high pressure” indefinite. Specifically, USWS argues (1)
that the claims only require a pressure sufficiently high to
“fracture[] the subterranean formation,” not a specific
range, USWS Br. 35–37, (2) that extrinsic evidence shows
“high pressure” is a common term in hydraulic fracturing,
id. at 37–42, (3) that electric pumps configured to operate
at “a high pressure” were well known and not the asserted
advance, id. at 42–48, and (4) that the Board overlooked
relevant case law, id. at 32–34, 49–55.
The United States Patent and Trademark Office
(“USPTO”)2 responds that the Board correctly found the
claims indefinite. Specifically, the USPTO argues (1) that
the claim language does not provide objective boundaries
for a skilled artisan, Halliburton Br. 20–21, (2) that the ex-
trinsic evidence does not provide objective boundaries for
“high pressure,” id. at 22–24, (3) that terms not directed to
the asserted advance may still render a claim indefinite,
id. at 25–26, and (4) that USWS’s cited cases do not support
its position, id. at 21–22, 26–30. We agree with the
USPTO.
A claim is indefinite when it “fail[s] to inform, with rea-
sonable certainty, those skilled in the art about the scope
of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc.,
572 U.S. 898, 901 (2014). Given the specific facts of these
cases, the ambiguity of the term “high pressure,” as used
in the claims, renders the proposed substitute claims indef-
inite. USWS admitted that hydraulic fracturing can be
performed at pressures other than high pressure, such as
“medium pressure.” ’1316 Decision, at *28. That admis-
sion diminishes any clarity offered by the claim language
2 After briefing was complete, Halliburton Energy
Services, Inc. (“Halliburton”) entered a notice of non-par-
ticipation in both cases. The USPTO intervened relying on
the briefs previously filed by Halliburton.
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U. S . WELL SERVICES , LLC v. STEWART 5
itself because a pressure sufficient to “fracture[] the sub-
terranean formation” is admittedly broader than just “high
pressure” to a person of ordinary skill. Furthermore, in the
face of that admission, the specification similarly fails to
inform a person of ordinary skill, with reasonable cer-
tainty, of the boundaries of “high pressure” in the context
of the invention. See ’724 patent, col. 2 ll. 48–57 (reciting
similar “fractures the subterranean formation” language).
Importantly, USWS’s own experts expressly disagreed over
the range of pressures that a person of ordinary skill would
consider to be “high pressure”; one expert testified that a
person of skill in the fracking industry would “definitely
think high pressure is 5,000 to 15,000,” while the other tes-
tified that “it’s agreed upon that 8,000 to 12,000 psi is high
pressure,” but that it is not generally agreed upon that
5,000 psi is high pressure. Compare J.A. 3365–66 with J.A.
3727; see also ’1316 Decision, at *29–30 (discussing
USWS’s experts’ disagreement on the generally agreed
upon pressure range for high pressure hydraulic fractur-
ing). The Board found that testimony to demonstrate a
lack of any “clear boundaries for how an ordinarily skilled
artisan would interpret ‘high pressure.’” ’1316 Decision, at
*30. Those conclusions regarding the extrinsic evidence
are supported by substantial evidence. See Mass. Inst. of
Tech. v. Shire Pharms., Inc., 839 F.3d 1111, 1123–24 (Fed.
Cir. 2016). For the reasons stated above, we see no error
in the Board’s determination that “high pressure” is indef-
inite.
Because we affirm the Board’s indefiniteness determi-
nations, we need not address USWS’s additional argu-
ments regarding written description.
We have considered USWS’s remaining arguments and
find them unpersuasive. For the foregoing reasons, we af-
firm the final written decisions of the Board.
AFFIRMED
Case: 23-1799 Document: 58 Page: 5 Filed: 03/13/2025

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