Paper No. 1
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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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. IPR2016-00598
`Patent 7,861,774
`______________
`
`
`
`PETITION FOR INTER PARTES REVIEW UNDER 35 U.S.C. § 312
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`TABLE OF CONTENTS
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`IPR2016-00598
`Patent 7,861,774
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`INTRODUCTION ........................................................................................... 1
`I.
`II. MANDATORY NOTICES ............................................................................. 3
`A.
`Real Party in Interest (37 C.F.R. § 42.8(b)(1)) ..................................... 3
`B.
`Related Matters (37 C.F.R. § 42.8(b)(2)) .............................................. 3
`C.
`Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3)) ........................... 3
`D.
`Service Information (37 C.F.R. § 42.8(b)(4)) ....................................... 3
`III. GROUNDS FOR STANDING ........................................................................ 3
`IV. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED ................................................................................ 4
`A.
`Claims for Which Review Is Requested (37 C.F.R. § 42.104(b)(1)).... 4
`B.
`Statutory Grounds of Challenge (37 C.F.R. § 42.104(b)(2)) ................ 4
`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 ’774 PATENT ....................................................................................... 12
`A. Admitted Prior Art and Perceived Shortcomings ............................... 13
`B.
`The ’774 Patent’s Asserted Improvement to the Prior Art ................. 13
`C.
`Prosecution History ............................................................................. 20
`D.
`Claim Construction (37 C.F.R. § 42.104(b)(3)) .................................. 20
`1.
`“solid body packer” (claim 1) .................................................. 20
`2.
`“fracturing fluid” (claims 1, 8) ................................................ 21
`3.
`“plug” (claim 15)...................................................................... 22
`VIII. REASONS FOR THE RELIEF REQUESTED UNDER 37 C.F.R.
`§§ 42.22(A)(2) AND 42.104(B)(4) ............................................................... 22
`A. Ground 1 – Obvious over Thomson and Ellsworth ............................ 22
`1.
`Thomson and Ellsworth render claim 1 obvious ...................... 27
`2.
`Thomson and Ellsworth render claims 2-16 obvious ............... 38
`B. Ground 2 – Obvious over Thomson, Ellsworth and Hartley .............. 45
`IX. CONCLUSION .............................................................................................. 47
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`V.
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`Petitioner’s Exhibit List
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`IPR2016-00598
`Patent 7,861,774
`
`1003
`
`Description
`Exhibit
`1001 U.S. Patent No. 7,861,774 (“the ’774 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”)
`B. Ellsworth, et al., Production Control of Horizontal Wells in a
`Carbonate Reef Structure, 1999 Canadian Institute of Mining,
`Metallurgy, and Petroleum Horizontal Well Conference (“Ellsworth”)
`1004 U.S. Patent No. 5,449,039 (“Hartley”)
`1005 Declaration of Ali Daneshy, Ph.D.
`1006 KATE VAN DYKE, FUNDAMENTALS OF PETROLEUM ENGINEERING (4th
`ed. 1997)
`RON BAKER, A PRIMER OF OIL WELL DRILLING (5th ed. (revised) 1996)
`1007
`1008 U.S. Patent No. 4,099,563 (“Hutchison”)
`1009 U.S. Patent No. 5,375,662
`1010 U.S. Patent No. 6,257,338
`1011
`Excerpts of Prosecution History of the ’774 Patent
`1012 U.S. Provisional Application No. 60/404,783
`1013
`Excerpts of Prosecution History of U.S. Patent No. 7,134,505 (“the
`’505 Patent”)
`1014 Declaration of Christopher D. Hawkes, Ph.D., P.Geo., regarding the
`proceedings of the 7th One-Day Conference On Horizontal Well
`Technology Operational Excellence (Canada November 3, 1999)
`(including Ex. 1003 at 102-110)
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`IPR2016-00598
`Patent 7,861,774
`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
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`inter partes review of U.S. Patent No. 7,861,774 (“the ’774 Patent,” Ex. 1001),
`
`which issued January 4, 2011. The Board is authorized to deduct any required fees
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`from Norton Rose Fulbright US LLP Deposit Account 50-1212/11508227.
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`I.
`
`INTRODUCTION
`
`The ’774 Patent’s purported invention was a combination of ball-actuated
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`sliding sleeves [blue] and multi-element packers [red] for selectively treating or
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`“stimulat[ing]” zones in an oil well, such as by “frac’ing” or “acidizing.”
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`But these systems were known before 2001, the earliest claimed priority date.
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`Petitioners’ primary reference, Thomson, described such a system in 1997:
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`
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`While Thomson’s figure shows one ball-actuated sliding sleeve [blue] (which it
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`called a “MSAF tool”), its text is clear that “[u]p to 9 MSAF tools [blue] can be
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`IPR2016-00598
`Patent 7,861,774
`run in the completion with isolation of each zone being achieved by hydraulic-set
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`retrievable packers [red] that are positioned on each side of a MSAF tool [blue].”
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`Patent Owner may attempt to rely on several purported distinctions over the
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`prior art during this proceeding—such as the use of its system in an open (i.e.,
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`uncased) hole, the “solid body” nature of its packers, or setting packers without
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`also setting slips—but all three fail.
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`First, it would have been obvious to use Thomson’s system in open holes.
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`Ellsworth, for example, was already using a similar system in an open hole:
`
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`Ellsworth explained that, by 1999, “[o]pen hole completions ha[d] been the
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`accepted practice for horizontal wells [in some regions].”
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`Second, Thomson’s packers are solid body packers.
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`Third, setting packers without also setting slips was obvious. In the same
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`open holes in which it was obvious to use Thomson’s system, Ellsworth was
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`already using solid body packers that did not include slips.
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`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”).
`
`Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
`
`C.
`Lead counsel: Mark T. Garrett (Reg. No. 44,699)
`
`Back-up counsel: Eagle H. Robinson (Reg. No. 61,361)
`
`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 ’774 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
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`grounds identified in this Petition. The ’774 Patent has not been subject to a
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`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 1-16 (the
`
`“Challenged Claims”) of the ’774 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 1-16 are invalid under § 103(a) based on Thomson (Ex.
`
`1002) and Ellsworth (Ex. 1003). Published in 1997 and 1999 (see Ex. 1014
`
`at ¶¶ 1-5 and 102-110), respectfully, Thomson and Ellsworth are prior art under
`
`§ 102(b).
`
`Ground 2: Claim 15 is invalid under § 103(a) based on Thomson (Ex.
`
`1002) and Ellsworth (Ex. 1003), as in Ground 1, and on Hartley (Ex. 1004). Issued
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`September 12, 1995, Hartley is prior art under § 102(b).
`
`As explained in detail below in Section VII.D (Claim Construction),
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`Grounds 2 is not cumulative because it adds evidence addressing elements that
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`Patent Owner may seek to distinguish with narrow claim constructions.
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`V.
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`FIELD OF TECHNOLOGY
`
`The ’774 Patent describes selectively stimulating or treating segments of an
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`oil well using ball-actuated sleeves to open ports in a tubing string. See, e.g., Ex.
`
`1001 at 1:21-24, 2:39-3:7. Ex. 1005 at ¶¶ 53-62.
`
`A. Drilling an Oil Well
`Drilling a well generally includes drilling a hole to construct a wellbore in a
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`geological formation with oil or gas reserves. The wellbore is normally lined with
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`pipe or “casing” to protect the wellbore during production operations. See Ex.
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`1005 at ¶ 28; see also Ex. 1006 at 108. In some circumstances, however, a
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`wellbore may be left uncased (referred to as an “open hole”) to “expose porosity
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`and permit unrestricted wellbore inflow of petroleum products.” Ex. 1001 at 1:28-
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`32; see also Ex. 1005 at ¶ 29. If a wellbore is cased, access to the formation is
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`provided by “perforating” or creating openings in the casing to allow oil and/or gas
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`to flow from the formation into the wellbore. Ex. 1001 at 1:32-34.
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`While it is sometimes possible for formation fluids such as oil and gas to
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`flow up the wellbore when left open or once casing has been perforated, a small-
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`diameter pipe called “production tubing” is typically run into the well as a conduit
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`for petroleum products to flow to the surface. Ex. 1007 at 147. Traditionally, oil
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`wells relied on natural formation pressure and permeability to flow petroleum
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`products to the surface. Ex. 1006 at 23. But when natural flow is insufficient or
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`not economical, “well stimulation” techniques are employed to enlarge existing
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`channels or create new ones in the formation, thereby increasing permeability to
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`help oil and gas flow into the wellbore. See id. at 162; Ex. 1001 at 1:35-36.
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`B. Well Stimulation and Selective Fluid Treatment
`Stimulation typically involves pumping acid or other fluids into a wellbore
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`under pressure. Ex. 1006 at 162; Ex. 1001 at 1:35-39. If pumped at a high enough
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`pressure, the fluid fractures or “fracs” the formation, creating cracks that radiate
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`outward from the wellbore. Id. at 162-163. These “frac’ing” fluids usually include
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`a “proppant,” such as sand, to hold open the cracks. Id. Related to frac’ing is acid
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`stimulation or “acidizing,” in which acid is pumped into the formation and also
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`chemically reacts with the formation to create similar cracks. Id. at 164.
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`A wellbore may cross multiple formation zones, only some of which contain
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`desirable petroleum products. See, e.g., Ex. 1003 at Figures 7 and 11. Other
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`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
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`isolation of segments within the reservoir is key to controlling and optimizing
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`production from these horizontal wells.”). As such, it is often desirable to isolate
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`and stimulate only certain zones within a formation with tools called “packers”
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`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
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`produced fluids, which are often corrosive. See Ex. 1007 at 148.
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`Once packers are deployed in
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`the wellbore and set to seal around the
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`production
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`tubing
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`to
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`isolate
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`the
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`Packer
`
`Packer
`
`Packer
`
`Sleeve
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`desired zones, fluid may be pumped
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`into the isolated zones for stimulation.
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`Ex. 1005 at ¶¶ 31-39. One example of
`
`such a completion is described in
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`Hutchison (Ex. 1008), which was cited
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`during prosecution of the ’774 Patent.
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`As annotated in Figure 1 (right),
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`Hutchison’s tubing string 19 includes
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`a series of sliding sleeve flow control
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`devices 20 and 21[blue] to inject
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`treatment fluids into zones isolated by
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`cup-type packers 22, 23, 24, and 25
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`[red]. Ex. 1008 at 2:51-58.
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` Sleeve
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` Packer
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`As further annotated in Figures 2 and 4 below, the lower sleeve 20 [blue] has
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`a seat 44 [purple] that is sized to be sealed by a ball 48 [green]. Id. at 3:64-4:59.
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`Upper sleeve 21 [blue], in turn, is sized to mate with a larger ball. Id. at 4:60-5:5.
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`Sleeve [blue]
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`
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`Seat (44)
`[purple]
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`Seat (44)
`[purple]
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`Ball (48) [green]
`
` Sleeve [blue]
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`To open the lower sleeve 20, the ball 48 [green] is “dropped” into the tubing string,
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`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
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`chamber 36) and allow fluid to flow from the tubing string into the annulus. Id.
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`After treating the zone between packers 22 and 23, a larger ball is dropped to
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`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
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`4:60-6:17. Hutchison thus enables individual treatment of each zone.
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`Packers
`C.
`While Hutchison employed cup-type packers for isolation of zones (id. at
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`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. 1009 at 1:43-44
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`(“Inflatable packers are preferred for use in sealing an uncased well bore.”); see
`
`also Ex. 1001 at 1:49-51 (“[I]nflatable packers may be limited with respect to
`
`pressure capabilities as well as durability under high pressure conditions.”). It was
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`also known that solid body packers—which compress and extrude outward one or
`
`more resilient packing elements—could successfully provide effective isolation in
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`open holes that were drilled in the right way and/or through the right formation.
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`See Ex. 1003 at 3 (“Although the expansion ratios for [solid body packers] are
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`[not] as large as for inflatables, the carbonate formation in Rainbow Lake generally
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`drills very close to gauge hole, and effective isolation is possible with these
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`SBP’s.”); see also Ex. 1010 at 4:35-42 (“[S]ealing devices 30, 32, 34 are
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`representatively and schematically illustrated . . . as inflatable packers . . . [o]f
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`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
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`compress the packing element(s). See, e.g., id.; see also Ex. 1005 at ¶ 41.
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`VI. LEVEL OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art relevant to the ’774 Patent as of
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`November 19, 20011—the earliest priority date claimed by the ’774 Patent—would
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`have had at least a Bachelor of Science degree in mechanical, petroleum, or
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`chemical engineering and at least 2-3 years of experience with downhole
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`completion technologies related to fracturing. See id. at ¶ 43. This level of
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`ordinary skill is also evidenced by prior art and the ’774 Patent itself. See id. at
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`¶¶ 44-52; Chore-Time Equip., Inc. v. Cumberland Corp., 713 F.2d 774, 779 (Fed.
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`Cir. 1983); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Here, the
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`prior art described in Section V above demonstrates that a person of ordinary skill
`
`would have been familiar with various completion systems and stimulation
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`techniques. See Ex. 1005 at ¶¶ 44-52.
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`1 All statements in this Petition about the knowledge and skills of, and what would
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`have been obvious to, a POSITA are offered from this perspective as of this date
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`and would be no different as of August 21, 2002. See Ex. 1005 at ¶¶ 43-52.
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`A POSITA also would have recognized that cup-type and inflatable packers
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`were not always preferable and, in at least some circumstances, hydraulically set
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`solid body packers would be preferable in cased and open hole wells. See, e.g., id.
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`¶¶ 41-42, 51; see also Ex. 1003 at 3 (“Historically, inflatable packers were used for
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`water shut-off, stimulation, and segment testing. More recently, solid body packer
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`(SBP’s) (see FIG. 4) have been used to establish open hole isolation.”); Ex. 1010 at
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`3:67-4:4 (“[T]he [selective isolation and treatment] method 10 may be performed
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`in wells including both cased and uncased portions, and vertical, inclined and
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`horizontal portions . . . .”); see also Ex. 1001 at 1:29-32. A POSITA would have
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`also recognized that many tools initially designed or used with casing could also be
`
`used in uncased wellbores in at least some formations. Ex. 1005 at ¶¶ 46-52.
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`Patent Owner agrees; during prosecution, Patent Owner submitted in an IDS
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`a declaration of Patent Owner’s own expert witness from Patent Owner’s litigation
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`against Halliburton. Ex. 1011, 11/27/2009 IDS, at Doc. KKKKK, First
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`Supplemental Expert Report of Kevin Trahan. In it, Patent Owner’s expert
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`explained that “hard rock formations, once drilled, typically provide a circular
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`cross section conduit, just as a cased hole does. In these types of hard formations a
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`tool that was designed for use in cased hole may be used in open hole.” Id. at 75.
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`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
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`no contemplation of being used in open hole, have been used in open hole
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`successfully.” Id. An earlier affidavit of Mr. Trahan also explained that: “Packing
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`Elements of many different configurations have been used in cased hole as well as
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`open hole.” Id. at 66. Due to imperfections in uncased wellbores, “the longer the
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`packing element, the more opportunity there is that some section of the packing
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`element will be located over a portion of the wellbore that has continuity” and that
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`“[a]nother idea used in the industry for increasing reliability of packers in open
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`hole is redundancy . . . .” Id. at 66-67. In particular, [i]f more packing elements
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`are employed there is a greater opportunity for at least one of the packing elements
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`to seal in a portion of the borehole that has continuity.” Id. at 67. Mr. Trahan
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`explained that it “[was] not a new, unique, or innovative concept to use this
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`approach for sealing in open hole” because “[r]edundant packers have been used
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`on many occasions to increase reliability in open hole applications.” Id.; see also
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`Ex. 1003 at 3 (“When possible, the packers are run in pairs to minimize the chance
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`of failure due to setting in a vug [a type of void.]”).
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`VII. THE ’774 PATENT
`The ’774 Patent is entitled “Method and Apparatus for Wellbore Fluid
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`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 1:21-24.
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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 1:40-44.
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`The ’774 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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`1:43-51. The ’774 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 1:51-57.
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`The ’774 Patent’s Asserted Improvement to the Prior Art
`
`B.
`To address these perceived shortcomings, the ’774 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 2:30-34. The
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`’774 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 2:34-38.
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`As annotated in Figure 1a below, the ’774 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 6:4-12. The borehole is not cased. See id. at 10:21-25.
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`TO SURFACE
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`PACKER
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`WELLBORE
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`PACKER
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`PACKER
`
`PACKER
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`PACKER
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`LOWER
`END
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`TOOL
`STRING
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`PORTED
`INTERVALS
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`FIG. 1a
`(annotated)
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`
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`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 6:8-12. 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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`Patent 7,861,774
`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 6:13-28.
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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 6:37-49. 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 6:58-7:31.
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`PACKER
`
`SEAT
`
`PACKER
`
`SLEEVE
`
`SEAT
`
`TUBING STRING
`
`SLEEVE
`
`LOWER
`END
`
`BALL
`
`SEAT
`
`PACKER
`
`BALL
`
`D3>D2
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`D2>D1
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`SMALLEST
`DIAMETER
`
`PORTED
`INTERVAL
`
`PORTED
`INTERVAL
`
`PORTED
`INTERVAL
`
`FIG. 1b
`(annotated)
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`IPR2016-00598
`Patent 7,861,774
`Increasing pressure against the ball/seat moves sleeve 22 [blue] to open ports
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`17 [orange], shown below. Id. To open one sleeve at a time, the seat of each
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`sleeve has a different diameter. “[T]he lowest-most sliding sleeve 22e has the
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`smallest diameter D1 seat and accepts the smallest sized ball 24e and each sleeve
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`that is progressively closer to the surface has a larger seat.” Id. at 7:14-19. Thus,
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`ball 24e passes through the upper seats to engage seat 26e nearest lower end 14a.
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`Once ball 24e seals seat 26e, sleeve 22e shifts to open port 17. The next largest
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`ball 24d is then dropped into the tubing to open sleeve 22d, and so on, to treat the
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`rest of the zones. Id. at 8:3-28.
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`In particular, Figure 3a shows the sliding sleeve 22 in its closed position covering
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`ports 17. Id. at 9:13-41. Ball 24 [green] engages seat 26 [purple] to seal against
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`IPR2016-00598
`Patent 7,861,774
`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 ’774 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 3:48-49. In its embodiment of
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`Figure 1a, however, the packers are of the “solid body-type.” Id. at 6:29-35.
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`Packer 20 includes two packing elements 21a and 21b “formed of elastomer” like
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`rubber, which may be set hydraulically or by “mechanical forces.” Id. The
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`packing elements 21a, 21b “can be separated by at least 0.3M and preferably 0.8M
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`or more” to “aid in providing high pressure sealing in an open hole, as the elements
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`load into one another to provide additional pack-off.” Id. at 8:43-47.
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`Elements 21a, 21b are mounted between fixed stop rings 34a, 34c and
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`compression rings 34b, 34d, respectively. Id. at 8:48-51. The packer is set by
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`“pressuring up the tubing string” such that fluid flows through port 35 and “acts
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`against pistons 36a, 36b” to drive apart the compression rings and thus compresses
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`the packing elements 21a, 21b to extrude them outwardly. Id. at 8:48-9:12. Once
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`expanded, the “body locking system 31” prevents the packing elements from
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`retracting (id.) unless an operator “pull[s] up” on the tubing string to “release [the]
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`shears 38” that prevent stop ring 34a from moving. Id. at 9:1-12.
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`PACKING
`ELEMENT
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`IPR2016-00598
`Patent 7,861,774
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`PACKING
`ELEMENT
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`+
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`+
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`+ +
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`+
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`FIXED STOP
`RING [green]
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`HYDRAULIC
`PORT [blue]
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`COMPRESSION
`RING
`
`PISTONS
`[red & purple]
`FIG. 2
`(annotated)
`
`+
`
`+
`
`FIXED STOP
`RING [green]
`
`COMPRESSION
`RING
`
`
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`The ’774 Patent teaches that this type of “solid body” packer is “particularly
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`useful, especially for example in an open hole.” Id. at 6:31-36. However, as
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`described above, a POSITA would have already been familiar with the use of solid
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`body-type packers with multiple elements for zone isolation during stimulation
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`operations rather than inflatable packers, even in open holes. See Section VI; Ex.
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`1003 at 3 (explaining successful isolation provided by solid body packers with
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`multiple elements, individually or in tandem, in open hole stimulation operations).
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`As annotated below, Figure 8 shows an alternate embodiment in which a
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`[red] port-opening sleeve 322 engages and moves multiple [blue] port-closure
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`sleeves 325 to open ports 317 [orange]. Specifically, “each [port-closure] sleeve
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`325a, 325b includes a profile 353a, 353b into which [outwardly biased] dogs 351
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`[of port-opening sleeve 322] can releasably engage.” Id. at 12:55-57. This allows
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`the [red] port-opening sleeve 322 to “be moved (arrows S), by fluid pressure
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`created by seating of ball 324 [green] therein . . . .” Id. at 12:27-29.
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`“BALL”
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`+
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`PORT-CLOSURE SLEEVE
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`
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`PORT-OPENING SLEEVE
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`
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`PORT-CLOSURE SLEEVE
`
`
`
`
`PORT
`FIG. 8
`(annotated)
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`“[S]leeve 322 is driven . . . [to] engage against each [port-closure] sleeve
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`325a to move it away from its port 317a and against its associated shoulder 327b.”
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`Id. at 12:61-64. Continued fluid pressure collapses dogs 351 to drive the [red]
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`port-opening sleeve 322 out of “engagement with a first port-[closure] sleeve 325a,
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`. . . into engagement with . . . the next port-[closure] sleeve 325b and so on, until
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`[the port opening] sleeve 322 is stopped against shoulder 346.” Id. at 12:65-13:3.
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`IPR2016-00598
`Patent 7,861,774
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`Prosecution History
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`C.
`In a preliminary amendment, Patent Owner cancelled all prior claims and
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`added a new set of claims, which were allowed without rejection.
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`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
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`“broadest reasonable construction in light of the specification of the patent in
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`which it appears.” 37 C.F.R. § 42.100(b).2 Petitioners therefore request that the
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`claim terms be given their broadest reasonable interpretation (BRI), as understood
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`by one of ordinary skill in the art and consistent with the disclosure.
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`“solid body packer” (claim 1)
`1.
`The BRI of “solid body packer” is “a mechanically or hydraulically set
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`packer including a solid, mechanically extrudable packing element.” In U.S.
`
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`2 District courts apply other standards of proof and claim interpretation. Any
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`construction or application (implicit or explicit) of the claims in this Petition are
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`specific to the BRI standard. Petitioners reserve the right to revise or depart from
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`its construction or application of the Challenged Claims under any other standard.
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`Additionally, while Petitioners do not currently believe the application of the
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`Phillips standard would change the correspondence of the ’774 Patent claims to the
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`prior art relied upon in this Petition, the Supreme Court recently granted certiorari
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`to consider the BRI standard in Cuozzo Speed Techs, LLC v. Lee.
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`IPR2016-00598
`Patent 7,861,774
`Provisional Application No. 60/404,783, to which the ’774 Patent claims priority,
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`Patent Owner stated that “[a] solid body packer is defined as a tool to create a seal
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`between tubing and casing or the borehole wall using a packing element which is
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`mechanically extruded, using either mechanically or hydraulically applied force.”
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`Ex. 1012 at 9 (emphasis added). While not repeated in the ’774 Patent, the ’774
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`Patent’s disclosure is consistent.
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` For example, the Background section
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`distinguishes inflatable packers as “limited with respect to pressure capabilities as
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`well as durability under high pressure conditions.” Ex. 1001 at 1:40-51. The ’774
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`Patent thus teaches that “[i]n an open hole, preferably, the packers include solid
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`body packers including a solid, extrudable packing element and, in some
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`embodiments, solid body packers include a plurality of extrudable packing
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`elements.” Ex. 1001 at 4:4-7; see also 6:29-36 (“The packers are of the solid
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`body-type with at least one extrudable packing element . . . .”). This is also
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`consistent with the understanding of a POSITA. Ex. 1005 at ¶¶ 63-65.
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`“fracturing fluid” (claims 1, 8)
`2.
`The BRI of “fracturing fluid” is “fluid including but not limited to acid,
`
`water, oil, carbon dioxide, or nitrogen.” See Ex. 1001 at 1:35-39. Claim 1 recites
`
`a “pumping fracturing fluid . . . to fracture the hydrocarbon-containing formation.”
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`Dependent claim 8 restricts the fracturing fluid to “at least one fluid selected from
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`the group consisting of acid, water, oil, carbon dioxide and nitrogen.” Because
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`claim 8 is narrower than claim 1, the fracturing fluid referenced in claim 1 must
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`include more than the list of fluids specified in claim 8. This is also consistent
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`with the understanding of a POSITA. See Ex. 1005 at ¶¶ 32.
`
`“plug” (claim 15)
`3.
`Claim 15 recites that the sealing device of claim 1 is a plug. The ’774 Patent
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`states that its “sealing device can be, for example, a plug or a ball.” Ex. 1001 at
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`3:4-5. While “plug” need not be formally construed, it is worth noting that the
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`’774 Patent does not define the term in a way that necessarily excludes a ball. This
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`is consistent with the USPTO’s interpretation during prosecution of related U.S.
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`Patent No. 7,134,505, of which the ’774 patent is a continuation, in which
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`Hutchison’s (Ex. 1008) ball 48 was equated to both a “plug” and a “ball.” Ex.
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`1013, 09/22/2005 Office Action at 67 (addressin