Paper No. 30
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`
`
`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
`
`______________
`
`
`Case IPR2016-00656
`Patent 8,657,009
`______________
`
`
`
`PETITIONERS’ REPLY
`
`
`
`36599576.2
`
`
`
`-1-
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`
`
`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
`
`______________
`
`
`Case IPR2016-00656
`Patent 8,657,009
`______________
`
`
`
`PETITIONERS’ REPLY
`
`
`
`36599576.2
`
`
`
`-1-
`
`
`
`
`
`Petitioners’ Exhibit List
`
`Case IPR2016-00656
`Patent 8,657,009
`
`1008
`1009
`
`Description
`Exhibit
`1001 U.S. Patent No. 8,657,009 (the “’009 Patent”)
`1002 U.S. Patent No. 7,108,067 (“Themig”)
`1003 U.S. Patent No. 8,215,411 (“Flores”)
`1004 U.S. Patent No. 5,375,662 (“Echols”)
`1005 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”)
`1006 Declaration of Ali Daneshy, Ph.D. (“Daneshy1”)
`1007 KATE VAN DYKE, FUNDAMENTALS OF PETROLEUM ENGINEERING (4th
`ed. 1997)
`RON BAKER, A PRIMER OF OIL WELL DRILLING (5th ed. (rev.) 1996)
`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
`1010 K.W. Lagrone, et al., A New Development in Completion Methods,
`Society of Petroleum Engineering, Paper 530-PA (1963) (“Lagrone”)
`1011 U.S. Patent No. 4,099,563 (“Hutchison”)
`1012 U.S. Patent No. 6,006,838 (“Whiteley”)
`1013
`Excerpts of Prosecution History of the ’009 Patent
`1014 Dictionary Definition from MCGRAW-HILL DICTIONARY OF
`SCIENTIFIC AND TECHNICAL TERMS (1989)
`1015 Dictionary Definitions from WEBSTER’S THIRD NEW INTERNATIONAL
`DICTIONARY OF THE ENGLISH LANGUAGE UNABRIDGED (1986)
`Excerpts of Prosecution History of U.S. Serial No. 12/830,412 (“the
`’412 Application”), of which the ’009 Patent is a continuation
`Excerpts of Prosecution History of U.S. Serial No. 12/208,463, to
`which the ’009 Patent claims priority
`
`1016
`
`1017
`
`36599576.2
`
`
`
`-ii-
`
`
`
`
`
`Case IPR2016-00656
`Patent 8,657,009
`
`Exhibit
`1018
`
`1019
`
`Description
`Excerpts of Prosecution History of U.S. Serial No. 11/403,957, to
`which the ’009 Patent claims priority
`Excerpts of Prosecution History of U.S. Serial No. 10/604,807, to
`which the ’009 Patent claims priority
`1020 U.S. Serial No. 60/404,783, to which the ’009 Patent claims priority
`1021 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)
`(incl. Ex. 1009 at 102-110)
`1022 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)
`Transcript of February 28, 2017 Deposition Testimony of Harold R.
`McGowen III (“McGowen Depo.”)
`Second Declaration of Ali Daneshy, Ph.D. (“Daneshy2”)
`Ex. 2036 (Expert Report of Harold E. McGowen III, PE) from
`CaseIPR2016-00597
`
`1023
`
`1024
`1025
`
`
`
`36599576.2
`
`-iii-
`
`
`
`
`
`
`
`
`
`Case IPR2016-00656
`Patent 8,657,009
`
`I.
`II.
`
`Table of Contents
`INTRODUCTION ........................................................................................... 1
`ICU MEDICAL CONTROLS HERE .............................................................. 2
`The present facts are like those in ICU Medical ................................... 3
`A.
`Crown Packaging confirms that ICU Medical controls here ................ 6
`B.
`C.
`The other cases cited by Rapid Completions are inapposite ................. 8
`III. REFERENCE TO THE ’412 APPLICATION IS RELEVANT ................... 11
`IV. GROUNDS 1-4: THEMIG AND FLORES ARE PRIOR ART AND
`RENDER THE CHALLENGED CLAIMS UNPATENTABLE .................. 11
`V. GROUNDS 5-6: THE ECHOLS-THOMSON COMBINATION
`RENDERS THE CHALLENGED CLAIMS UNPATENTABLE ............... 12
`VI. CONCLUSION .............................................................................................. 15
`
`
`
`
`
`36599576.2
`
`
`
`-iv-
`
`
`
`
`
`Table of Authorities
`
`Case IPR2016-00656
`Patent 8,657,009
`
` Page(s)
`
`Cases
`
`Apple, Inc. v. Sightsound Technologies, LLC,
`CBM2013-00019, slip op. (P.T.A.B. Oct. 8, 2013).......................................... 8, 9
`
`Crown Packaging Technology, Inc. v. Ball Metal Beverage Container
`Corp., 635 F.3d 1373 (Fed. Cir. 2011) ..................................................... 3, 6, 7, 8
`
`Hynix Semiconductor Inc. v. Rambus, Inc.,
`645 F.3d 1336 (Fed. Cir. 2011) .................................................................. 3, 9, 10
`
`ICU Medical, Inc. v. Alaris Medical Systems,
`558 F.3d 1368 (Fed. Cir. 2009) .................................................. 3, 4, 5, 6, 7, 8, 10
`
`Lizardtech, Inc. v. Earth Resource Mapping, Inc.,
`424 F.3d 1336 (Fed. Cir. 2005) ........................................................................ 7, 8
`
`In re Peters,
`723 F.2d 891 (Fed. Cir. 1983) .......................................................................... 8, 9
`
`In re Rasmussen,
`650 F.2d 1212 (C.C.P.A. 1981) ............................................................................ 8
`
`Vas-Cath Inc. v. Mahurkar,
`935 F.2d 1555 (Fed. Cir. 1991) .......................................................................... 11
`
`
`
`
`
`36599576.2
`
`-v-
`
`
`
`
`
`Case IPR2016-00656
`Patent 8,657,009
`
`I.
`
`INTRODUCTION
`All the claims require a single plug that (i) actuates multiple port-closure
`
`sleeves (claims 1-8 and 13) or (ii) engages, changes the position of, and moves
`
`past a [port-closure] sleeve (claims 9-12). The Parties agree that indirect actuation
`
`for (i) and (ii) is supported by the ’009 Patent’s specification. Nor is there any
`
`dispute that the claims cover both indirect actuation and direct actuation. The
`
`devil in the present details, therefore, is whether the specification supports direct
`
`actuation.1
`
`Rapid Completions contends that under “controlling case law,” the claims
`
`are “fully supported by the specification.” But that case law reveals an inherently
`
`factual inquiry, and the facts here are nearly identical to those in ICU Medical.
`
`Nevertheless, the record is devoid of rebuttal evidence supporting Rapid
`
`Completions’ position on the penultimate issue.
`
`Mr. McGowen’s declaration—Rapid Completions’ only exhibit addressing
`
`the issue—does not assert that a POSITA would have understood from the
`
`specification any direct actuation by a single plug for (i) or (ii). And, while Mr.
`
`McGowen concludes that a POSITA would have seen possession of a generic
`
`invention as broad as the current claims, his ‘explanation’ merely speculates on
`
`possible sleeve structures that would also be indirectly actuated.
`
`1 It does not.
`
`36599576.2
`
`
`
`-1-
`
`
`
`
`
`Case IPR2016-00656
`Patent 8,657,009
`Tellingly, Mr. McGowen’s declaration failed to identify a single example of
`
`direct actuation that a POSITA would have recognized from the specification.
`
`II.
`
`ICU MEDICAL CONTROLS HERE
`
`As clearly articulated in the Petition and the Board’s Institution Decision,
`
`the challenged claims overreach the more-limited specification of the ’009 Patent.
`
`There can be no reasonable dispute that the specification fails to describe port-
`
`closure sleeves of the direct actuation type actuated by a single plug, or that after
`
`being directly actuated by a single plug allow the plug to move past the sleeve.2
`
`“[W]hether a claim is supported by adequate written description is a factual
`
`
`2 Rapid Completions incorrectly asserts that there is no meaningful difference
`
`between Flores’s directly actuated sleeves and Echols’s indirectly actuated sleeves.
`
`POR at 17-20. A plug pushes Flores’s sleeve via dogs that do not move
`
`longitudinally relative to the sleeve (like the yieldable seat embodiment addressed
`
`in the Petition), whereas a plug pushes Echols’s sleeve via a sleeve-like C-ring that
`
`does move longitudinally relative to the sleeve. See Flores at 3:32-4:3 (dogs 142
`
`and insert [sleeve] 120 move together); contra Echols at 6:22-37 (C-ring 70 slides
`
`relative to sleeve 26). Thus, Echols’ sleeve is directly actuated whereas Flores’s
`
`sleeve is indirectly actuated. Regardless, unlike the patent in Crown Medical, the
`
`’009 Patent’s specification includes no description of C-rings or of Echols.
`
`36599576.2
`
`
`
`-2-
`
`
`
`
`
`Case IPR2016-00656
`Patent 8,657,009
`inquiry, and has been for some time.” Hynix Semiconductor Inc. v. Rambus, Inc.,
`
`645 F.3d 1336, 1351 (Fed. Cir. 2011) (citing Ariad Pharms., Inc. v. Eli Lilly and
`
`Co., 598 F.3d 1336, 1355 (Fed. Cir. 2010)). As such, the present facts require the
`
`same result as that in ICU Medical; namely, the ’009 Patent’s claims are broader
`
`than the specification can support.
`
`A. The present facts are like those in ICU Medical
`The ’009 Patent’s specification—like the one in ICU Medical—is “clear that
`
`having . . . [an intermediate port-opening sleeve is] necessary to the use of the
`
`claimed invention.” Crown Packaging Technology, Inc. v. Ball Metal Beverage
`
`Container Corp., 635 F.3d 1373, 1382 (Fed. Cir. 2011) (characterizing ICU
`
`Medical). Indeed, the only disclosed embodiment with a single plug actuating
`
`multiple port-closure sleeves or engaging, changing the position of, and moving
`
`past a port-closure sleeve requires an intermediate port-opening sleeve to do so.
`
`See Pet. at 18-24; Ex. 1001 at 9:45-10:38 (“[P]ort-closing sleeves 325a, 325b are
`
`each formed to be engaged and moved by sleeve 322 as it passes through the
`
`tubing string from its pinned position to its position against shoulder 346.”); FIG.
`
`6. Rapid Completions’ expert, Mr. McGowen, concedes that the function of that
`
`embodiment requires the intermediate port-opening sleeve. McGowen Depo. at
`
`194:5-15. He also concedes that the specification does not describe any of the
`
`other purported means of performing the function of that embodiment. See id. at
`
`36599576.2
`
`
`
`-3-
`
`
`
`
`
`Case IPR2016-00656
`Patent 8,657,009
`173:7-174:3 (conceding that the specification does not disclose any of a yieldable
`
`seat, yieldable ball, or yieldable plug). Thus—like ICU Medical—there is but one
`
`structure permitting a single plug to open multiple port-closure sleeves or to
`
`engage, change the position of, and move past a port-closure sleeve, and that
`
`structure would not function without the intermediate port-opening sleeve.
`
`But the ’009 Patent’s claims—like those in ICU Medical—are not limited to
`
`the sole disclosed structure.3 Instead, they broadly cover both the disclosed
`
`indirect actuation and undisclosed direct actuation. See ICU Medical, Inc. v.
`
`Alaris Medical Systems, 558 F.3d 1368, 1378 (Fed. Cir. 2009) (finding disclosure
`
`of an embodiment capable of functioning without a spike insufficient to provide
`
`written description support for claims covering both spike and spikeless
`
`embodiments). Thus, the specification does not describe direct actuation.
`
`Nevertheless, Rapid Completions argues—like the ICU Medical patentee—
`
`that the one disclosed indirect-actuation structure is sufficient to support the full
`
`breadth of the claims because variations on that structure would have been
`
`obvious. POR at 12-16; see also McGowen Depo. at 175:18-21(“So it seems like
`
`it would be obvious to me to a person of ordinary skill in the art . . . .”),
`
`191:25-192:7. But this is no more the law now than it was in ICU Medical: “[i]t is
`
`not enough that it would have been obvious to a person of ordinary skill that a
`
`3 Nor even to a reasonably-related category of structures.
`
`36599576.2
`
`
`
`-4-
`
`
`
`
`
`Case IPR2016-00656
`Patent 8,657,009
`preslit trampoline seal could be used without a spike.” ICU Medical at 1379
`
`(quoting Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566-67
`
`(Fed. Cir. 1997)) (“[A]n applicant complies with the written description
`
`requirement by describing the invention, with all its claimed limitations, not that
`
`which makes it obvious.” (emphasis added)). Thus, even if this argument were
`
`well-founded, “it is not enough that it would have been obvious to a person of
`
`ordinary skill that [a plurality of sleeve-closure sleeves could be directly actuated
`
`by a single ball or that a single ball could directly engage, change the position of,
`
`and move past a port-closure sleeve without an intermediate port-opening sleeve].”
`
`Id.
`
`Moreover, even if obviousness were equivalent to written description, it
`
`would not have been obvious to a POSITA to eliminate the ’009 Patent’s
`
`intermediate port-opening sleeve in favor of a different structure. See Daneshy2 at
`
`¶¶48-59. A POSITA is “a person who earned a bachelor of science degree in
`
`mechanical, petroleum, or chemical engineering, or similar degree and had at least
`
`two to three years of experience with downhole completion technologies related to
`
`fracturing.” Daneshy1 at ¶45; Daneshy2 at ¶49. Yieldable dogs, yieldable seats,
`
`yieldable plugs and the other proposed modifications4 put forth by Rapid
`
`4 See McGowen Depo. at 181:9-194:15 (adding previously-undisclosed details of
`
`possible modifications to FIG. 6 indirect actuation structure).
`
`36599576.2
`
`
`
`-5-
`
`
`
`
`
`Case IPR2016-00656
`Patent 8,657,009
`Completions’ expert would have been beyond the capabilities of such a POSITA,
`
`who would not have had the skills or experience to modify the internal components
`
`of individual tools. Daneshy2 at ¶¶49-52. Thus, the modifications described by
`
`Mr. McGowen would have required the capabilities of a person of extraordinary
`
`skill. Daneshy2 at ¶¶52-59.
`
`For these reasons, the present facts—like those in ICU Medical—evidence a
`
`lack of written description support for the full breadth of the claims. As such, none
`
`of the challenged claims are entitled to a priority date earlier than the July 5, 2010
`
`filing date of the ’412 Application. Pet. at 18-24.
`
`Crown Packaging confirms that ICU Medical controls here
`B.
`Rapid Completions relies on Crown Packaging as purportedly distinguishing
`
`ICU Medical (POR at 16), but neglects the fact that made Crown Medical
`
`different. The defendant there argued that the claims lacked written description
`
`support because they covered a method of saving metal when making beverage
`
`cans by driving a chuck either inside or outside of a can, whereas the specification
`
`described driving a chuck only outside of the can. Crown Packaging, 635 F.3d at
`
`1380. Noting that the claims were “not broad genus claims,” the court found those
`
`claims supported because the specification taught two methods of saving metal,
`
`only one of which drove the chuck outside the can. Id. at 1380-1381.
`
`36599576.2
`
`
`
`-6-
`
`
`
`
`
`Case IPR2016-00656
`Patent 8,657,009
`In contrast, Rapid Completions argues that a single disclosed structure
`
`should support broad genus claims including both indirect actuation and direct
`
`actuation. That the present facts are closer to ICU Medical is evident from the way
`
`in which the Crown Packaging court distinguished that case. The court in Crown
`
`Packaging noted that “in ICU Medical, the specification at issue was clear that
`
`having a spike within the medical valve was necessary to the use of the claimed
`
`invention.” Id. at 1381.5 Here, too, the specification makes clear that its
`
`intermediate port-opening sleeve is necessary because the ’009 Patent discloses no
`
`other structure that would permit multiple port-closure sleeves to be opened by a
`
`single plug or that would permit a single plug to engage, change the position of,
`
`and move past a port-closure sleeve. McGowen Depo. at 194:5-15; 173:7-174:3;
`
`see also Daneshy2 at ¶¶53-59.
`
`The court in Crown Packaging also distinguished Lizardtech, Inc. v. Earth
`
`Resource Mapping, Inc., 424 F.3d 1336 (Fed. Cir. 2005) because the Lizardtech
`
`specification “disclosed only one specific method for solving one particular
`
`problem.” Crown Packaging, 635 F.3d at 1382. But this too confirms that the
`
`present facts are distinct from Crown Packaging and, instead, very similar to
`
`5 Notably, the specification-at-issue in ICU Medical did not include any express
`
`statement that the spike was “critical” or “necessary.” See POR at 16 (contending
`
`that Petitioners should provide such evidence).
`
`36599576.2
`
`
`
`-7-
`
`
`
`
`
`Case IPR2016-00656
`Patent 8,657,009
`Lizardtech. Specifically, the ’009 Patent’s specification “disclose[s] only one
`
`specific method [an intermediate port-opening sleeve] for solving one particular
`
`problem [using a single ball to open multiple port-closure sleeves or to engage,
`
`change the position of, and move past a port-closure sleeve ].” Id.
`
`C. The other cases cited by Rapid Completions are inapposite
`The remaining cases cited by Rapid Completions are also readily
`
`distinguished; none disturbs the showing that the present facts evidence a lack of
`
`written description support pursuant to ICU Medical.
`
`For example, the Rasmussen specification disclosed only that “adhesive is
`
`applied” to a layer of foil to adhere it to another layer of foil, but claimed
`
`“adheringly applying” one layer to another. In re Rasmussen, 650 F.2d 1212, 1215
`
`(C.C.P.A. 1981); POR at 8-9 (citing same). The court rejected the defendant’s
`
`written-description argument because a POSITA reading the specification “would
`
`understand that it is unimportant how the layers are adhered, so long as they are
`
`adhered.” Id. In contrast, a POSITA reading the ’009 Patent would understand
`
`that the intermediate port-opening sleeve is critical; without it, the disclosed
`
`structure would not function at all. McGowen Depo. at 194:5-15; see also
`
`Daneshy2 at ¶¶53-59.
`
`The ’009 Patent’s specification is similarly unlike that of In re Peters, 723
`
`F.2d 891 (Fed. Cir. 1983) or Apple, Inc. v. Sightsound Technologies, LLC,
`
`36599576.2
`
`
`
`-8-
`
`
`
`
`
`Case IPR2016-00656
`Patent 8,657,009
`CBM2013-00019, slip op. (Paper 17) (P.T.A.B. Oct. 8, 2013). The Peters court
`
`declined a written description challenge because “broadened claims merely
`
`omit[ted] an unnecessary limitation” that had restricted a feature to a particular
`
`shape that was “unimportant” to practicing the invention. In re Peters, 723 F.2d at
`
`893 (emphasis added). Here, of course, the intermediate port-opening sleeve is
`
`necessary to use the sole structure disclosed in the ’009 Patent’s specification.
`
`Likewise, in Apple, the Board declined a written description challenge
`
`because, unsurprisingly, a POSITA would have understood that telephone lines are
`
`but one medium for the broader disclosure of electronic data transmission—i.e.,
`
`that telephone lines were not necessary for such data transmission. Apple, slip op.
`
`at 25-28. The present claims are again distinct in the magnitude of their breadth
`
`relative to the specification’s limited disclosure. Unlike the telephone lines in
`
`Apple, a POSITA reading the ’009 Patent’s specification would understand the
`
`intermediate port-opening sleeve to be critical to the function of the only disclosed
`
`structure.
`
`Finally, in Hynix Semiconductor Inc. v. Rambus, Inc., the Federal Circuit
`
`affirmed a district court’s decision that a patent’s genus claims did not lack written
`
`description where: (1) only two well-known species existed (multiplexed and a
`
`non-multiplexed bus), (2) the defendant had not argued that a POSITA would not
`
`have understood that the patent owner possessed a non-multiplexed bus, and
`
`36599576.2
`
`
`
`-9-
`
`
`
`
`
`Case IPR2016-00656
`Patent 8,657,009
`(3) there was substantial evidence that using a non-multiplexed bus would not
`
`undermine the invention. 645 F.3d 1336, 1352 (Fed. Cir. 2011). Despite
`
`recognizing that “it would certainly be reasonable to conclude that [the] claims do
`
`not meet the written description requirement on the basis of ICU Med.” (id. at
`
`1351), the procedural posture required the court to construe the evidence in the
`
`light most favorable to the patent owner. See id. at 1352-53 (emphasis added).
`
`In contrast, Petitioners here have presented evidence that a POSITA would
`
`not have understood that Patent Owner possessed a structure for direct actuation of
`
`a plurality of port-closure sleeves with a single plug or for directly engaging,
`
`changing the position of, and moving past a port-closure sleeve with a single plug.
`
`See Pet. at 18-24; Daneshy2 at ¶58; see also Daneshy2 at ¶52-57, 59.
`
`Additionally, the breadth of the claims is not limited to merely swapping one type
`
`of intermediate sleeve for another in a way that would not affect function; the
`
`claims here instead cover the removal of the intermediate sleeve in a way that
`
`would render the sole disclosed embodiment inoperable. McGowen Depo. at
`
`194:5-15.
`
`For these reasons, ICU Medical controls and Petitioners have demonstrated,
`
`by at least a preponderance of the evidence, that the Challenged Claims are entitled
`
`to a priority date no earlier than the May 5, 2010 filing date of the ’412
`
`Application.
`
`36599576.2
`
`
`
`-10-
`
`
`
`
`
`Case IPR2016-00656
`Patent 8,657,009
`III. REFERENCE TO THE ’412 APPLICATION IS RELEVANT
`Rapid Completions argues that an application to which the ’009 Patent
`
`claims priority is not relevant to determining the priority date to which the ’009
`
`Patent is actually entitled. POR at 20-21 (arguing that reference to the ’412 Patent
`
`is irrelevant). This argument—that a priority application is not relevant to
`
`determining the correct priority date—is without merit. Rapid Completions points
`
`to a single case, Vas-Cath Inc. v. Mahurkar, in which later-filed applications,
`
`seemingly unrelated by priority, were found to be irrelevant to a written description
`
`determination. 935 F.2d 1555, 1566 (Fed. Cir. 1991). Indeed, the primary inquiry
`
`the Vas-Cath court undertook was exactly the one here: does the earlier-filed
`
`application to which priority is claimed fully support the claims of the later-filed
`
`patent. Indeed, there is no way to answer the question without looking to the
`
`applications in the ’009 Patent’s chain of priority. And that inquiry reveals the
`
`priority chain did not support the ’009 Patent’s claims until the May 5, 2010 filing
`
`date of the ’412 Application. Thus, for all of the reasons explained in the Petition
`
`and reiterated above, the claims are not entitled to an earlier priority date.
`
`IV. GROUNDS 1-4: THEMIG AND FLORES ARE PRIOR ART AND
`RENDER THE CHALLENGED CLAIMS UNPATENTABLE
`
`Rapid Completions does not argue that the claims would be novel over
`
`Themig and Flores if those claims are not entitled to their earliest claimed priority
`
`36599576.2
`
`
`
`-11-
`
`
`
`
`
`Case IPR2016-00656
`Patent 8,657,009
`date. The above priority determination is therefore dispositive of Grounds 1-4.
`
`Because the claims are not entitled to that earlier date, they are unpatentable.
`
`V. GROUNDS 5-6: THE ECHOLS-THOMSON COMBINATION
`RENDERS THE CHALLENGED CLAIMS UNPATENTABLE
`
`Rapid Completions argues that there is no “rational underpinning” for a
`
`POSITA to combine Echols and Thomson in the manner proposed by Petitioners
`
`because “regardless of the number of Echols sleeves employed in a particular zone
`
`of the Thomson system, all of the fluid ejected through those sleeves can only
`
`reach the formation through perforations in the casing.” See POR at 24.
`
`First, this argument incorrectly presumes that Grounds 5-6 require casing.
`
`But claims 1-13 neither require nor preclude casing. Ex. 1001 at claims 1-13.
`
`Moreover, Petitioners did not contend that the modified Thomson system had to be
`
`used in a cased hole, instead discussing the utility of using same in “longer zones
`
`or “zones with larger thicknesses” (not “longer cased zones” or “cased zones with
`
`larger thicknesses”). Petition at 49-50. Rapid Completions did not argue
`
`Petitioners’ modified Thomson system would have had no utility in open zones
`
`with larger thicknesses. See POR at 21-25.
`
`Moreover, Petitioners did provide a rational underpinning. Petitioners
`
`explained that a POSITA would have expected the additional injection points in
`
`zones with larger thicknesses “to provide additional fractures or porosity at both
`
`36599576.2
`
`
`
`-12-
`
`
`
`
`
`Case IPR2016-00656
`Patent 8,657,009
`sleeves to improve porosity and thus production from the formation.” Petition
`
`at 50 (citing Daneshy1 at ¶78-80 (“A person of ordinary skill in the art would have
`
`expected this modified Thomson system to be beneficial for treating longer
`
`sections or zones of a wellbore to provide additional fractures at both the Echols’
`
`tools and the Thomson sleeve to improve production from the formation.”)).
`
`Petitioners also explained that using additional sleeves, such as Echols’ sleeves, in
`
`a single zone would allow actuation of all sleeves in that zone by a single-sized
`
`ball. Petition at 49-50. Rapid Completions failed to even address either argument
`
`or Petitioner’s cited evidence. See POR at 21-25.
`
`Second, Rapid Completions’ position fails even if Petitioners’ position is
`
`construed as directed to cased-hole environments. Rapid Completions incorrectly
`
`implies that increasing the number of perforations in that casing would have been
`
`required (see POR at 23-24; Ex. 2006 at 13) to increase the number of fracture
`
`points in the formation, as Petitioners contended (Petition at 50 (“It was well
`
`known at the relevant time that increasing the number of fracture points in a given
`
`zone could increase the productivity of that zone.”)). But reducing the number of
`
`perforations could have increased the number of fracture points through “limited
`
`entry.” See Petition at 50. Petitioners cite Daneshy1 at ¶79 (cited in Petition at
`
`50), which draws support from Lagrone (cited in Petition at 50) about limited
`
`36599576.2
`
`
`
`-13-
`
`
`
`
`
`Case IPR2016-00656
`Patent 8,657,009
`entry, which involved spacing out (not increasing the number of) perforations to
`
`treat—through more fractures—more of a given zone.
`
`Indeed, Mr. McGowen—in his declaration from co-pending IPR2016-
`
`00597—said the same as Dr. Daneshy. In that declaration (Ex. 1025), Mr.
`
`McGowen contradicted his now-proffered increasing-the-perforations-is required
`
`argument by explaining that the cased-hole approach of “limited entry” increased
`
`stimulation of a given zone by reducing the number of perforations in that zone:
`
`For example, in order reduce the need for the risky milling operations
`required to remove the plugs after the frac stages were pumped, many
`operators utilized “Limited Entry” fracturing to reduce the number of
`stages (plugs to drill out) while still treating the entire interval.
`Limited Entry is a fracturing method that involves limiting the
`number of perforations in a completion interval to promote the
`development of perforation friction pressure during a stimulation
`treatment. The resulting pressure restriction creates excess pressure in
`the casing, which forces the fracturing fluid into multiple zones
`distributed along the wellbore even though these zones might have
`varying in-situ stress states (Cramer 1987). Many operators sought to
`reduce completion costs by extending the application of limited-entry
`fracturing techniques to very long horizontal wellbores with the
`objective of achieving effective fracture stimulation of each
`perforated section.
`
`36599576.2
`
`
`
`-14-
`
`
`
`
`
`Case IPR2016-00656
`Patent 8,657,009
`Ex. 1025 (Ex. 2036 from 597 Proceeding) at 28/89, lines 8-18 (emphasis added).
`
`Rapid Completions did not address Petitioners’ limited-entry-based arguments.
`
`See POR at 21-25.
`
`Rapid Completions’ failure to address Petitioners’ stated motivations and
`
`supporting evidence, coupled with its expert’s advancement of an overly-narrow
`
`argument that is nonetheless contradicted by his own earlier declaration from a co-
`
`pending proceeding, dooms their challenge to Grounds 5-6.
`
`VI. CONCLUSION
`For the reasons above, the Board should find the Challenged Claims
`
`unpatentable.
`
`March 8, 2017
`
`
`
`
`
`/Mark T. Garrett/
`Mark T. Garrett
`
`
`
`
`
`
`36599576.2
`
`-15-
`
`
`
`
`
`Case IPR2016-00656
`Patent 8,657,009
`
`CERTIFICATE OF WORD COUNT
`
`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that this Paper—
`
`exclusive of the table of contents, table of authorities, certificate of service, and
`
`this certificate of word count—includes 3,288 words.
`
`
`
`/Mark T. Garrett/
`Mark T. Garrett (Reg. No. 44,699)
`
`36599576.2
`
`
`
`-16-
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on March 8,
`
`2017, complete copies of PETITIONERS’ REPLY and the new cited exhibits were
`
`served on Patent Owner’s Exclusive Licensee via email (by consent), as follows:
`
`hhamad@caldwellcc.com
`bcaldwell@caldwellcc.com
`jnemunaitis@caldwellcc.com
`gonsalves@gonsalveslawfirm.com
`rapid@caldwellcc.com
`
`
`
`
`
`
`/Mark T. Garrett/
`Mark T. Garrett (Reg. No. 44,699)
`
`36599576.2
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
