UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper No. 1
`
`______________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`BAKER HUGHES INCORPORATED
`and
`BAKER HUGHES OILFIELD OPERATIONS, INC.,
`
`Petitioners
`
`
`
`v.
`
`
`
`PACKERS PLUS ENERGY SERVICES, INC.
`
`Patent Owner
`
`______________
`
`Inter Partes Review No. IPR2016-00596
`
`Patent 7,134,505
`______________
`
`
`
`PETITION FOR INTER PARTES REVIEW UNDER 35 U.S.C. § 312
`
`
`35823249.1
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`
`
`Paper No. 1
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`______________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`BAKER HUGHES INCORPORATED
`and
`BAKER HUGHES OILFIELD OPERATIONS, INC.,
`
`Petitioners
`
`
`
`v.
`
`
`
`PACKERS PLUS ENERGY SERVICES, INC.
`
`Patent Owner
`
`______________
`
`Inter Partes Review No. IPR2016-00596
`
`Patent 7,134,505
`______________
`
`
`
`PETITION FOR INTER PARTES REVIEW UNDER 35 U.S.C. § 312
`
`
`35823249.1
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`IPR2016-00596
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`Table of Contents
`
`V.
`
`1
`1
`2
`2
`2
`3
`3
`
`INTRODUCTION
`I.
`II. MANDATORY NOTICES
`A.
`Real Party in Interest (37 C.F.R. § 42.8(b)(1))
`B.
`Related Matters (37 C.F.R. § 42.8(b)(2))
`C.
`Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
`D.
`Service Information (37 C.F.R. § 42.8(b)(4))
`III. GROUNDS FOR STANDING
`IV. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`3
`CLAIM CHALLENGED
`A.
`Claims for Which Review Is Requested (37 C.F.R. § 42.104(b)(1)) 3
`B.
`Statutory Grounds of Challenge (37 C.F.R. § 42.104(b)(2))
`3
`FIELD OF TECHNOLOGY
`5
`A. Drilling an Oil Well
`5
`B. Well Stimulation and Selective Fluid Treatment
`6
`C.
`Packers
`9
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`10
`VII. THE ’505 PATENT
`12
`A. Admitted Prior Art and Perceived Shortcomings
`13
`B.
`The ’505 Patent’s Asserted Improvement to the Prior Art
`13
`C.
`Prosecution History
`19
`D.
`Claim Construction (37 C.F.R. § 42.104(b)(3))
`21
`1.
`“packing element” (claims 1, 5-7, 17-19, 21-22, 24, 26) ......... 21
`2.
`“solid body packer” (claims 1, 19, 24) .................................... 22
`3.
`“sleeve shifting means” (claims 1, 19, 24) ............................... 23
`4.
`“has engaged and moved the sliding sleeve . . .” (claim 11) ... 24
`5.
`“plug” (claim 15)...................................................................... 26
`6.
`“load into one another” (claims 22, 24) .................................. 26
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`VIII. REASONS FOR THE RELIEF REQUESTED UNDER 37 C.F.R.
`27
`§§ 42.22(A)(2) AND 42.104(B)(4)
`27
`A. Ground 1 – Anticipation by Thomson
`1.
`Thomson anticipates independent claim 1 ................................ 29
`2.
`Thomson anticipates dependent claims 2-7, 11 and 14-18 ...... 36
`3.
`Thomson anticipates independent claim 19 .............................. 41
`4.
`Thomson anticipates dependent claims 20-22 .......................... 43
`5.
`Thomson anticipates claims 24-26 ........................................... 44
`B. Ground 2 – Obvious over Thomson and Hartley
`45
`C. Ground 3 – Obvious over Thomson and Ellsworth
`46
`D. Ground 4 – Obvious over Thomson and Echols
`49
`E.
`Grounds 5-8 – Obvious over Thomson and Brown
`53
`IX. CONCLUSION
`60
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`Petitioners’ Exhibit List
`
`Description
`Exhibit
`1001 U.S. Patent No. 7,134,505 (the “’505 Patent”)
`1002 D.W. Thomson, et al., Design and Installation of a Cost-Effective
`Completion System for Horizontal Chalk Wells Where Multiple Zones
`Require Acid Stimulation, SPE (Society for Petroleum Engineering)
`37482 (1997) (“Thomson”)
`1003 U.S. Patent No. 5,449,039 (“Hartley”)
`B. Ellsworth, et al., Production Control of Horizontal Wells in a
`1004
`Carbonate Reef Structure, 1999 Canadian Institute of Mining,
`Metallurgy, and Petroleum Horizontal Well Conference (“Ellsworth”)
`1005 U.S. Patent No. 5,375,662 (“Echols”)
`1006 U.S. Patent 4,018,272 (“Brown”)
`1007 Declaration of Ali Daneshy, Ph.D.
`1008 KATE VAN DYKE, FUNDAMENTALS OF PETROLEUM ENGINEERING (4th
`ed. 1997)
`RON BAKER, A PRIMER OF OIL WELL DRILLING (5th ed. (revised) 1996)
`1009
`1010 U.S. Patent No. 4,099,563 (“Hutchison”)
`1011 U.S. Patent No. 6,257,338
`1012
`Excerpts of Prosecution History of U.S. Patent No. 7,861,774, a
`continuation of the ’505 Patent
`Excerpts of Prosecution History of the ’505 Patent
`1013
`1014 U.S. Provisional Application No. 60/404,783
`1015 Dictionary Definition from WEBSTER’S THIRD NEW INTERNATIONAL
`DICTIONARY OF THE ENGLISH LANGUAGE UNABRIDGED (1986)
`1016 U.S. Patent No. 4,279,306
`1017 K.W. Lagrone, et al., A New Development in Completion Methods,
`SOCIETY OF PETROLEUM ENGINEERING, Paper 530-PA (1963)
`1018 M.J. Eberhard, et al., Current Use of Limited-Entry Hydraulic
`Fracturing in the Codell/Niobrara Formations—DJ Basin, SPE
`(Society for Petroleum Engineering) 29553 (1995)
`
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`Pursuant to 35 U.S.C. § 312 and 37 C.F.R. § 42.100 et seq., Baker Hughes
`
`Incorporated and Baker Hughes Oil Field Operations, Inc. (“Petitioners”) request
`
`inter partes review of U.S. Patent No. 7,134,505 (“the ’505 Patent” – Ex. 1001),
`
`which issued November 14, 2006. The Board is authorized to deduct any required
`
`fees from Norton Rose Fulbright US LLP Deposit Account 50-1212/11508227.
`
`I.
`
`INTRODUCTION
`
`The ’505 Patent’s purported invention was a combination of ball-actuated
`
`sliding sleeves [blue] and multi-element packers [red] for selectively treating or
`
`“stimulat[ing]” zones in an oil well, such as by “frac’ing” or “acidizing.”
`
`But these systems were known before 2001, the earliest claimed priority date.
`
`Petitioners’ primary reference, Thomson, described such a system in 1997:
`
`
`
`While Thomson’s figure shows one ball-actuated sliding sleeve [blue] (which it
`
`called a “MSAF tool”), its text is clear that “[u]p to 9 MSAF tools [blue] can be
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`run in the completion with isolation of each zone being achieved by hydraulic-set
`
`retrievable packers [red] that are positioned on each side of a MSAF tool [blue].”
`
`Patent Owner may attempt to rely on several purported distinctions over the
`
`prior art during this proceeding—such as the “solid body” nature of its packers, or
`
`the use of its system in an open (i.e., uncased) hole—but all fail. Thomson’s
`
`packers are solid body packers, and reciting the use of Thomson’s system in an
`
`open hole is not a patentable contribution to the art. See In re Schreiber, 128 F.3d
`
`1473, 1477 (Fed. Cir. 1997). Moreover, systems like Thomson’s were already
`
`preferred in many uncased wells.
`
`II. MANDATORY NOTICES
`A. Real Party in Interest (37 C.F.R. § 42.8(b)(1))
`Baker Hughes Incorporated, Baker Hughes Oil Field Operations, Inc., Pegasi
`
`Energy Resources Corp., and Pegasi Operating, Inc. are the real parties-in-interest.
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`The following matter may affect, or be affected by, a decision in this
`
`proceeding: Rapid Completions LLC v. Baker Hughes Incorporated et al., Civil
`
`Action No. 6:15-cv-724 (E.D. Tex. 2015) (the “Litigation”).
`
`C. Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
`Lead counsel: Mark T. Garrett (Reg. No. 44,699)
`
`Back-up counsel: Eagle H. Robinson (Reg. No. 61,361)
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`Service Information (37 C.F.R. § 42.8(b)(4))
`
`D.
`Email: mark.garrett@nortonrosefulbright.com
`
`Post: Mark T. Garrett, Norton Rose Fulbright US LLP, 98 San Jacinto
`
`Boulevard, Suite 1100, Austin, TX 78701
`
`Phone: 512.474.5201
`
`Fax: 512.536.4598
`
`Petitioners consent to electronic service.
`
`III. GROUNDS FOR STANDING
`Pursuant to 37 C.F.R. § 42.104(a), Petitioners certify that the ’505 Patent is
`
`available for inter partes review, and that Petitioners are not barred or estopped
`
`from requesting an inter partes review challenging the Challenged Claims on the
`
`grounds identified in this Petition. The ’505 Patent has not been subject to a
`
`previous estoppel-based proceeding of the AIA, and Petitioners were served with
`
`the original complaint in the Litigation within the last 12 months.
`
`IV. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED
`A. Claims for Which Review Is Requested (37 C.F.R. § 42.104(b)(1))
`Petitioners request the review and cancellation of claims 1-7, 11, and 14-27
`
`(the “Challenged Claims”) of the ’505 Patent.
`
`Statutory Grounds of Challenge (37 C.F.R. § 42.104(b)(2))
`
`B.
`The Challenged Claims should be canceled for the following reasons:
`
`Ground 1: Claims 1-7, 11, 14-22, and 24-26 are invalid under § 102(b)
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`based on Thomson (Ex. 1002). Published in 1997, Thomson is prior art under
`
`§ 102(b).
`
`Ground 2: Claim 15 is invalid under § 103(a) based on Thomson (Ex.
`
`1002) and Hartley (Ex. 1003). Issued in 1995, Hartley is prior art under § 102(b).
`
`Ground 3: Claims 23 and 27 are invalid under § 103(a) based on Thomson
`
`(Ex. 1002) and Ellsworth (Ex. 1004). Published in 1999, Ellsworth is prior art
`
`under § 102(b).
`
`Ground 4: Claim 11 is invalid under § 103(a) based on Thomson (Ex.
`
`1002) and Echols (Ex. 1005). Issued in 1994, Echols is prior art under § 102(b).
`
`Ground 5: Claims 1-7, 11, 14-22, and 24-26 are invalid under § 103(a)
`
`based on Thomson (Ex. 1002), as in Ground 1, and on Brown (Ex. 1006). Issued
`
`in 1977, Brown is prior art under § 102(b).
`
`Ground 6: Claim 15 is invalid under § 103(a) based on Thomson (Ex.
`
`1002) and Hartley (Ex. 1003) as in Ground 2, and on Brown (Ex. 1006).
`
`Ground 7: Claims 23 and 27 are invalid under § 103(a) based on Thomson
`
`(Ex. 1002) and Ellsworth (Ex. 1004), as in Ground 3, and on Brown (Ex. 1006).
`
`Ground 8: Claim 11 is invalid under § 103(a) based on Thomson (Ex.
`
`1002) and Echols (Ex. 1005), as in Ground 4, and on Brown (Ex. 1006).
`
`As explained below in Section VII.D (Claim Construction), Grounds 2-8 are
`
`not cumulative because each adds evidence addressing elements that Patent Owner
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`may seek to distinguish with narrow claim constructions.
`
`V.
`
`FIELD OF TECHNOLOGY
`
`The ’505 Patent describes selectively stimulating or treating segments of an
`
`oil well using ball-actuated sleeves to open ports in a tubing string. See, e.g., Ex.
`
`1001 at 1:16-19, 2:35-3:4; see also Ex. 1007 at ¶¶ 53-62.
`
`A. Drilling an Oil Well
`Drilling a well generally includes drilling a hole to construct a wellbore in a
`
`geological formation with oil or gas reserves. The wellbore is normally lined with
`
`pipe or “casing” to protect the wellbore during production operations. See Ex.
`
`1007 at ¶ 28; see also Ex. 1008 at 108. In some circumstances, however, a
`
`wellbore may be left uncased (referred to as an “open hole”) to “expose porosity
`
`and permit unrestricted wellbore inflow of petroleum products.” Ex. 1001 at 1:23-
`
`27; see also Ex. 1007 at ¶ 29. If a wellbore is cased, access to the formation is
`
`provided by “perforating” or creating openings in the casing to allow oil and/or gas
`
`to flow from the formation into the wellbore. Ex. 1001 at 1:27-29.
`
`While it is sometimes possible for formation fluids such as oil and gas to
`
`flow up the wellbore when left open or once casing has been perforated, a small-
`
`diameter pipe called “production tubing” is typically run into the well as a conduit
`
`for petroleum products to flow to the surface. Ex. 1009 at 147. Traditionally, oil
`
`wells relied on natural formation pressure and permeability to flow petroleum
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`products to the surface. Ex. 1008 at 23. But when natural flow is insufficient or
`
`not economical, “well stimulation” techniques are employed to enlarge existing
`
`channels or create new ones in the formation, thereby increasing permeability to
`
`help oil and gas flow into the wellbore. See id. at 162; Ex. 1001 at 1:30-31.
`
`B. Well Stimulation and Selective Fluid Treatment
`Stimulation typically involves pumping acid or other fluids into a wellbore
`
`under pressure. Ex. 1008 at 162; Ex. 1001 at 1:23-25. If pumped at a high enough
`
`pressure, the fluid fractures or “fracs” the formation, creating cracks that radiate
`
`outward from the wellbore. Id. at 162-163. These “frac’ing” fluids usually include
`
`a “proppant,” such as sand, to hold open the cracks. Id. Related to frac’ing is acid
`
`stimulation or “acidizing,” in which acid is pumped into the formation and also
`
`chemically reacts with the formation to create similar cracks. Id. at 164.
`
`A wellbore may cross multiple formation zones, only some of which contain
`
`desirable petroleum products. See, e.g., Ex. 1004 at Figures 7 and 11. Other
`
`zones, for example, may include water. Id. at 2-3 (“[W]ater or gas breakthrough
`
`can be a problem for some of these wells. . . . The ability to establish long term
`
`isolation of segments within the reservoir is key to controlling and optimizing
`
`production from these horizontal wells.”). As such, it is often desirable to isolate
`
`and stimulate only certain zones within a formation with tools called “packers”
`
`which seal the annulus around the production tubing in the wellbore to direct the
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`fluid into the formation zone and protect tubing above and below the zone from
`
`produced fluids, which are often corrosive. See Ex. 1009 at 148.
`
`Once packers are deployed in
`
`the wellbore and set to seal around the
`
`production
`
`tubing
`
`to
`
`isolate
`
`the
`
`Packer
`
`Packer
`
`Packer
`
`Sleeve
`
`desired zones, fluid may be pumped
`
`into the isolated zones for stimulation.
`
`Ex. 1007 at ¶¶ 31-39. One example
`
`of such a completion is described in
`
`Hutchison (Ex. 1010), which was
`
`cited during prosecution of the ’505
`
`Patent. As annotated in Figure 1,
`
`Hutchison’s tubing string 19 includes
`
`a series of sliding sleeve flow control
`
`devices 20 and 21[blue] to inject
`
`treatment fluids into zones isolated by
`
`cup-type packers 22, 23, 24, and 25
`
`[red]. Ex. 1010 at 2:51-58.
`
`As further annotated in Figures
`
` Sleeve
`
` Packer
`
`2 and 4 below, the lower sleeve 20 [blue] has a seat 44 [purple] that is sized to be
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`sealed by a ball 48 [green]. Id. at 3:64-4:59. Upper sleeve 21 [blue], in turn, is
`
`sized to mate with a larger ball. Id. at 4:60-5:5.
`
`Sleeve [blue]
`
`
`
`Seat (44)
`[purple]
`
`Seat (44)
`[purple]
`
`Ball (48) [green]
`
` Sleeve [blue]
`
`
`To open the lower sleeve 20, the ball 48 [green] is “dropped” into the tubing string,
`
`passes through the upper sleeve 21, and seals against seat 44 of the lower sleeve
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`20. Id. at 4:49-59. This seal prevents fluid from passing through the seat, and
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`increasing pressure shifts the lower sleeve 20 down to open the port (annular
`
`chamber 36) and allow fluid to flow from the tubing string into the annulus. Id.
`
`After treating the zone between packers 22 and 23, a larger ball is dropped to
`
`seal the larger seat of upper sleeve 21 (otherwise the same as lower sleeve 20), and
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`the process is repeated to treat the upper zone between packers 24 and 25. Id. at
`
`4:60-6:17. Hutchison thus enables individual treatment of each zone.
`
`Packers
`C.
`While Hutchison employed cup-type packers for isolation of zones (id. at
`
`2:51-58), various other types of packers were also known. Inflatable packers, for
`
`example, were often used in uncased or open wells. See, e.g., Ex. 1005 at 1:43-44
`
`(“Inflatable packers are preferred for use in sealing an uncased well bore.”); see
`
`also Ex. 1001 at 1:43-45 (“[I]nflatable packers may be limited with respect to
`
`pressure capabilities as well as durability under high pressure conditions.”). It was
`
`also known that solid body packers—which compress and extrude outward one or
`
`more resilient packing elements—could successfully provide effective isolation in
`
`open holes that were drilled in the right way and/or through the right formation.
`
`See Ex. 1004 at 3 (“Although the expansion ratios for [solid body packers] are
`
`[not] as large as for inflatables, the carbonate formation in Rainbow Lake generally
`
`drills very close to gauge hole, and effective isolation is possible with these
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`SBPs.”); see also Ex. 1011 at 4:35-42 (“[S]ealing devices 30, 32, 34 are
`
`representatively and schematically illustrated . . . as inflatable packers . . . [o]f
`
`course, other types of packers, such as production packers settable by pressure,
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`may be utilized for the packers 30, 32, 34 . . . .”). These solid-body packers were
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`often hydraulically “set” via the application of hydraulic pressure to a piston to
`
`compress the packing element(s). See, e.g., id.; see also Ex. 1007 at ¶ 41.
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art relevant to the ’505 Patent as of
`
`November 19, 20011—the earliest priority date claimed by the ’505 Patent—would
`
`have had at least a Bachelor of Science degree in mechanical, petroleum, or
`
`chemical engineering and at least 2-3 years of experience with downhole
`
`completion technologies related to fracturing. See id. at ¶ 43. This level of
`
`ordinary skill is also evidenced by prior art and the ’505 Patent itself. See id. at
`
`¶¶ 44-52; Chore-Time Equip., Inc. v. Cumberland Corp., 713 F.2d 774, 779 (Fed.
`
`Cir. 1983); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Here, the
`
`prior art described in Section V above demonstrates that a person of ordinary skill
`
`would have been familiar with various completion systems and stimulation
`
`1 All statements in this Petition about the knowledge and skills of, and what would
`
`have been obvious to, a POSITA are offered from this perspective as of this date,
`
`and would be no different as of August 21, 2002. See Ex. 1007 at ¶¶ 43-52.
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`techniques. See Ex. 1007 at ¶¶ 44-52.
`
`A POSITA also would have recognized that cup-type and inflatable packers
`
`were not always preferable and, in at least some circumstances, hydraulically set
`
`solid body packers would be preferable in cased and open hole wells. See, e.g., id.
`
`¶ 41-42, 51; see also Ex. 1004 at 3 (“Historically, inflatable packers were used for
`
`water shut-off, stimulation, and segment testing. More recently, solid body packer
`
`(SBP’s) (see FIG. 4) have been used to establish open hole isolation.”); Ex. 1011 at
`
`3:67-4:4 (“[T]he [selective isolation and treatment] method 10 may be performed
`
`in wells including both cased and uncased portions, and vertical, inclined and
`
`horizontal portions . . . .”); see also Ex. 1001 at 1:43-45. A POSITA would have
`
`also recognized that many tools initially designed or used with casing could also be
`
`used in uncased wellbores in at least some formations. Ex. 1007 at ¶ 46-52.
`
`Patent Owner agrees. In a continuation of the ’505 Patent, Patent Owner
`
`submitted in an IDS a declaration of its own expert witness from Patent Owner’s
`
`litigation against Halliburton. Ex. 1012, 11/27/2009 IDS, at Doc. KKKKK, First
`
`Supplemental Expert Report of Kevin Trahan. In it, Patent Owner’s expert
`
`explained that “hard rock formations, once drilled, typically provide a circular
`
`cross section conduit, just as a cased hole does. In these types of hard formations a
`
`tool that was designed for use in cased hole may be used in open hole.” Id. at 27.
`
`Mr. Trahan further explained that “many tools, including anchoring
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`mechanisms and packing elements, that were initially designed for cased hole, with
`
`no contemplation of being used in open hole, have been used in open hole
`
`successfully.” Id. An earlier affidavit of Mr. Trahan also explained that: “Packing
`
`Elements of many different configurations have been used in cased hole as well as
`
`open hole.” Id. at 18. Due to imperfections in uncased wellbores, “the longer the
`
`packing element, the more opportunity there is that some section of the packing
`
`element will be located over a portion of the wellbore that has continuity” and that
`
`“[a]nother idea used in the industry for increasing reliability of packers in open
`
`hole is redundancy . . . .” Id. at 18-19. In particular, “[i]f more packing elements
`
`are employed there is a greater opportunity for at least one of the packing elements
`
`to seal in a portion of the borehole that has continuity.” Id. at 19. Mr. Trahan
`
`explained that it “[was] not a new, unique, or innovative concept to use this
`
`approach for sealing in open hole” because “[r]edundant packers have been used
`
`on many occasions to increase reliability in open hole applications.” Id.; see also
`
`Ex. 1004 at 3 (“When possible, the packers are run in pairs to minimize the chance
`
`of failure due to setting in a vug [a type of void.]”).
`
`VII. THE ’505 PATENT
`The ’505 Patent is entitled “Method and Apparatus for Wellbore Fluid
`
`Treatment,” and discloses “a method and apparatus for selective communication to
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`a wellbore for fluid treatment.” Ex. 1001 at 1:1-2 and 1:16-19.
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`A. Admitted Prior Art and Perceived Shortcomings
`As the BACKGROUND OF THE INVENTION section reflects, methods of
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`selective fluid treatment were well known in the prior art: “In one previous
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`method, the well is isolated in segments” by packers and each segment is thereafter
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`“individually treated so that concentrated and controlled fluid treatment can be
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`provided along the wellbore.” Id. at 1:35-38.
`
`The ’505 Patent asserts that “inflatable element packers” were often used in
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`this previous method, and criticizes such packers as “limited with respect to
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`pressure capabilities as well as durability under high pressure conditions.” Id. at
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`1:38-45. The ’505 Patent also asserts that this previous method was “expensive
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`and time consuming” because the packers must generally “be moved after each
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`treatment if it is desired to isolate other segments of the well for treatment” and
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`because stimulation pumping equipment is required “to be at the well site for long
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`periods of time or for multiple visits.” Id. at 1:45-52.
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`The ’505 Patent’s Asserted Improvement to the Prior Art
`
`B.
`To address these perceived shortcomings, the ’505 Patent provides “for the
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`running in of a fluid treatment string, the fluid treatment string having ports
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`substantially closed against the passage of fluid therethrough but which are
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`openable when desired to permit fluid flow into the wellbore.” Id. at 2:26-31. The
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`’505 Patent notes that such a method may be “used in various borehole conditions
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`including open holes, cased holes [and] horizontal holes . . . .” Id. at 2:31-35.
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`As annotated in Figure 1a below, the ’505 Patent depicts a wellbore 12
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`drilled through a formation 10 and a tubing string assembly run in the wellbore.
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`Id. at 6:8-16. The borehole is not cased. See id. at 10:34-38.
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`TO SURFACE
`
`PACKER
`
`WELLBORE
`
`PACKER
`
`PACKER
`
`PACKER
`
`PACKER
`
`LOWER
`END
`
`TOOL
`STRING
`
`PORTED
`INTERVALS
`FIG. 1a
`(annotated)
`
`
`
`The tubing string 14 includes ports 17 [blue] in each of multiple ported intervals
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`16a-e, which are “opened through the tubing string wall to permit access between
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`the tubing string inner bore 18 and the wellbore.” Id. at 6:13-16. Ported intervals
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`16a-e are separated by packers 20a-f [red] to divide the formation into zones for
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`fluid treatment through ports 17 and thereby prevent treatment fluids from entering
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`a different formation segment once outside the tubing string. Id. at 6:17-32.
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`When the tubing string is run into the wellbore, ported intervals 16a-e are
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`covered by sliding sleeves 22a-e [blue], annotated below in Figure 1b, to prevent
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`fluid from passing through ports 17. Id. at 6:41-53. To open sliding sleeves 22a-e
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`and permit flow through ports 17, a ball or plug 24 is “dropped” into the tubing
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`string and is carried to a corresponding sleeve 22, where the ball or plug engages
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`and seals against a seat 26 in the sleeve. Id. at 6:62-7:36.
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`PACKER
`
`SEAT
`
`PACKER
`
`SLEEVE
`
`SEAT
`
`TUBING STRING
`
`SLEEVE
`
`LOWER
`END
`
`BALL
`
`SEAT
`
`PACKER
`
`BALL
`
`D3>D2
`
`D2>D1
`
`PORTED
`INTERVAL
`
`PORTED
`INTERVAL
`
`PORTED
`INTERVAL
`FIG. 1b
`(annotated)
`
`SMALLEST
`DIAMETER
`
`
`
`Increasing pressure against the ball/seat moves sleeve 22 [blue] to open ports 17
`
`[orange], shown below. Id. To open one sleeve at a time, the seat of each sleeve
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`has a different diameter. “[T]he lowest-most sliding sleeve 22e has the smallest
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`diameter D1 seat and accepts the smallest sized ball 24e and each sleeve that is
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`progressively closer to the surface has a larger seat.” Id. at 7:19-24. Thus, ball 24e
`
`passes through the upper seats to engage seat 26e nearest lower end 14a. Once ball
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`24e seals seat 26e, sleeve 22e shifts to open port 17. The next largest ball 24d is
`
`then dropped into the tubing to open sleeve 22d, and so on, to treat the rest of the
`
`zones. Id. at 8:10-35.
`
`
`In particular, Figure 3a shows the sliding sleeve 22 in its closed position covering
`
`ports 17. Id. at 9:21-50. Ball 24 [green] engages seat 26 [purple] to seal against
`
`fluid flow through the sleeve [blue], and increasing pressure eventually moves
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`sleeve 22 [blue] to open ports 17 [orange], as shown in Figure 3b. Id.
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`The ’505 Patent teaches that packers 20 “can be of any desired type to seal
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`between the wellbore and the tubing string.” Id. at 3:47-48. In its embodiment of
`
`Figure 1a, however, the packers are of the “solid body-type.” Id. at 6:33-38.
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`Packer 20 includes two packing elements 21a and 21b “formed of elastomer” like
`
`rubber, which may be set hydraulically or by “mechanical forces.” Id. The
`
`packing elements 21a, 21b “can be separated by at least 0.3M and preferably 0.8M
`
`or more” to “aid in providing high pressure sealing in an open hole, as the elements
`
`load into one another to provide additional pack-off.” Id. at 49-54.
`
`PACKING
`ELEMENT
`
`PACKING
`ELEMENT
`
`+
`
`+
`
`+ +
`
`+
`
`+
`
`+
`
`FIXED STOP
`RING [green]
`
`HYDRAULIC
`PORT [blue]
`
`FIXED STOP
`RING [green]
`
`COMPRESSION
`RING
`
`PISTONS
`[red & purple]
`FIG. 2
`(annotated)
`
`COMPRESSION
`RING
`
`
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`Elements 21a, 21b are mounted between fixed stop rings 34a, 34c and
`
`compression rings 34b, 34d, respectively. Id. at 8:40-9:8. The packer is set by
`
`“pressuring up the tubing string” such that fluid flows through port 35 and “acts
`
`against pistons 36a, 36b” to drive apart the compression rings and thus compresses
`
`the packing elements 21a, 21b to extrude them outwardly. Id. at 8:40-9:15. Once
`
`expanded, the “body locking system 31” prevents the packing elements from
`
`retracting (id.) unless an operator “pull[s] up” on the tubing string to “release [the]
`
`shears 38” that prevent stop ring 34a from moving. Id. at 9:16-20.
`
`The ’505 Patent teaches that this type of “solid body” packer is “particularly
`
`useful, especially for example in an open hole.” Id. at 6:33-40. However, as
`
`described above, a POSITA would have already been familiar with the use of solid
`
`body-type packers with multiple elements for zone isolation during stimulation
`
`operations rather than inflatable packers, even in open holes. See Section VI; Ex.
`
`1004 at 3 (explaining successful isolation provided by solid body packers with
`
`multiple elements, individually or in tandem, in open hole stimulation operations).
`
`As annotated below, Figure 8 shows an alternate embodiment in which a
`
`[red] port-opening sleeve 322 engages and moves multiple [blue] port-closure
`
`sleeves 325 to open ports 317 [orange]. Specifically, “each [port-closure] sleeve
`
`325a, 325b includes a profile 353a, 353b into which [outwardly biased] dogs 351
`
`[of port-opening sleeve 322] can releasably engage.” Id. at 13:2-6. This allows the
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`[red] port-opening sleeve 322 to “be moved (arrows S), by fluid pressure created
`
`by seating of ball 324 [green] therein . . . .” Id. at 12:43-46.
`
`“BALL”
`
`+
`
`PORT-CLOSURE SLEEVE
`
`
`
`
`
`PORT-OPENING SLEEVE
`
`
`
`PORT-CLOSURE SLEEVE
`
`
`
`
`PORT
`FIG. 8
`(annotated)
`
`“[S]leeve 322 is driven . . . [to] engage against each [port-closure] sleeve 325a to
`
`move it away from its port 317a and against its associated shoulder 327b.” Id. at
`
`13:10-19. Continued fluid pressure collapses dogs 351 to drive the [red] port-
`
`opening sleeve 322 out of “engagement with a first port-[closure] sleeve 325a, . . .
`
`into engagement with . . . the next port-[closure] sleeve 325b and so on, until [the
`
`port opening] sleeve 322 is stopped against shoulder 346.” Id. at 13:10-19.
`
`Prosecution History
`
`C.
`In a preliminary amendment, Patent Owner argued that the packers in
`
`Hutchison (Ex. 1010) “are all shown and described as single packer cups.”
`
`Ex. 1013, 04/13/2005 Preliminary Amendment at 53; see also Ex. 1010 at FIG. 1
`
`and 2:56-58 (“sets of packer cup assemblies 22-23 and 24-25”). Patent Owner
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`added that “Hutchison neither discloses or suggests that any of these packers
`
`should be a solid body packer including multiple packing elements.” Ex. 1013 at
`
`53. Despite these remarks, the Examiner rejected a number of claims as
`
`anticipated by Hutchison, but indicated that several dependent claims would be
`
`allowable if rewritten in independent form. Ex. 1013, 09/22/2005 Office Action at
`
`65-66. In making this rejection, the Examiner equated Hutchison’s ball 48 to both
`
`a “plug” and a “ball” as recited in the claims. Id. at 67 (addressing original claims
`
`10-12).
`
`Patent Owner responded by amending the existing independent claims and
`
`adding a new independent claim to include this allowable subject matter.
`
`Specifically, independent claim 1 was amended to recite “a hydraulically actuated
`
`setting mechanism for at least one of the first, second and third packers to act on
`
`fluid pressure communicated to the mechanism from within the apparatus.” Id.,
`
`03/22/2006 Response at 78. Independent claim 19 (then 16) was similarly
`
`amended to recite “setting the packers by hydraulically driving a piston to
`
`compress at least one of the multiple packing elements of at least one of the first,
`
`second and third packers.” Id. at 80-81. Finally, independent claim 24 (then 28)
`
`was added to include, instead of the feature added to claim 19, “setting the packers
`
`by driving at least one of the first, second and third packers such that the multiple
`
`packing elements load into one another.” Id. at 82-83. The claims were then
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`allowed. Id. at 89-91.
`
`D. Claim Construction (37 C.F.R. § 42.104(b)(3))
`In an inter partes review, a claim in an unexpired patent is given the
`
`“broadest reasonable construction in light of the specification of the patent in
`
`which it appears.” 37 C.F.R. § 42.100(b).2 Petitioners therefore request that the
`
`claim terms be given their broadest reasonable interpretation (BRI), as understood
`
`by one of ordinary skill in the art and consistent with the disclosure.
`
`“packing element” (claims 1, 5-7, 17-19, 21-22, 24, 26)
`1.
`The ’505 Patent does not define “packing element,” but depicts two single-
`
`piece packing elements 21a, 21b that are spaced apart and compressed by separate
`
`sets of rings. Ex. 1001 at 6:35-38 and FIG. 2. Petitioners do not believe a
`
`construction is necessary, and note that the ’505 Patent does not limit a packing
`
`
`2 District courts apply other standards of proof and claim interpretation. Any
`
`construction or application (implicit or explicit) of the claims in this Petition are
`
`specific to the BRI standard. Petitioners reserve the right to revise or depart from
`
`its construction or application of the Challenged Claims under any other standard.
`
`Additionally, while Petitioners do not currently believe the application of the
`
`Phillips standard would change the correspondence of the ’505 Patent claims to the
`
`prior art relied upon in this Petition, the Supreme Court recently granted certiorari
`
`to consider the BRI standard in Cuozzo Speed Techs, LLC v. Lee.
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`element to a single piece or to pieces that are separated by so
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