Paper No. 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
`
`______________
`
`Inter Partes Review No. IPR2016-01505
`Patent 7,543,634
`______________
`
`
`
`PETITION FOR INTER PARTES REVIEW UNDER 35 U.S.C. § 312
`
`
`

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`Table of Contents
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`IPR2016-01505
`Patent 7,543,634
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`V.
`
`INTRODUCTION .......................................................................................... 1
`I.
`II. MANDATORY NOTICES ............................................................................ 2
`A.
`Real Party in Interest (37 C.F.R. § 42.8(b)(1)) .................................... 2
`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)) .......................... 4
`D.
`Service Information (37 C.F.R. § 42.8(b)(4)) ...................................... 4
`III. GROUNDS FOR STANDING ....................................................................... 4
`IV. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED ............................................................................... 5
`A.
`Claims for Which Review Is Requested (37 C.F.R. §
`42.104(b)(1)) ........................................................................................ 5
`Statutory Grounds of Challenge (37 C.F.R. § 42.104(b)(2)) ............... 5
`B.
`FIELD OF TECHNOLOGY .......................................................................... 6
`A. Drilling an Oil Well .............................................................................. 6
`B. Well Stimulation and Selective Fluid Treatment ................................. 7
`C.
`Packers ................................................................................................ 11
`VI. LEVEL OF ORDINARY SKILL IN THE ART .......................................... 14
`VII. THE ’634 PATENT ...................................................................................... 16
`A. Admitted Prior Art and Perceived Shortcomings .............................. 16
`B.
`The ’634 Patent’s Asserted Improvement to the Prior Art ................ 17
`C.
`Prosecution History ............................................................................ 23
`D.
`Claim Construction (37 C.F.R. § 42.104(b)(3)) ................................. 25
`1.
`“packing element” (claims 1, 14, 15, 19, 20, 22-24) .............. 26
`2.
`“solid body packer” (claims 1, 20) ......................................... 26
`3.
`“sleeve shifting means” (claims 1, 20) .................................... 27
`4.
`“has engaged and moved the sliding sleeve . . .” (claim 6) .... 28
`5.
`“plug” (claim 11)..................................................................... 30
`6.
`“load into one another” (claim 24) ......................................... 31
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`2.
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`3.
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`4.
`5.
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`Patent 7,543,634
`VIII. REASONS FOR THE RELIEF REQUESTED UNDER 37 C.F.R.
`§§ 42.22(A)(2) AND 42.104(B)(4) .............................................................. 31
`A. Ground 1 – Obvious over Lane-Wells and Ellsworth ........................ 31
`1.
`Lane-Wells discloses a three-zone acidizing system for an
`open hole that uses two ball-actuated sliding sleeves and
`three packers ............................................................................ 31
`It was obvious to use Ellsworth’s solid body packer in the
`Lane-Wells System because it had already been successfully
`used for the same purpose: open hole acidizing in a multi-
`zone system ............................................................................... 36
`Other, independent reasons motivated using Ellsworth’s
`solid body packer in the Lane-Wells System ............................ 39
`Lane-Wells and Ellsworth render claim 1 obvious .................. 40
`Lane-Wells and Ellsworth render dependent claims 2, 9-17
`and 19 obvious ......................................................................... 46
`Lane-Wells and Ellsworth render independent claim 20
`obvious ..................................................................................... 52
`Lane-Wells and Ellsworth render dependent claims 21-24
`obvious ..................................................................................... 54
`Lane-Wells and Ellsworth render dependent claim 25
`obvious ..................................................................................... 56
`B. Ground 2 – Obvious over Lane-Wells, Ellsworth, and Hartley ......... 57
`C. Ground 3 – Obvious over Lane-Wells, Ellsworth and Echols ........... 58
`D. Ground 4 – Obvious over Lane-Wells, Ellsworth, and the
`Knowledge of a POSITA ................................................................... 62
`IX. CONCLUSION ............................................................................................. 67
`
`6.
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`7.
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`8.
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`Petitioner’s Exhibit List
`
`Description
`Exhibit
`1001 U.S. Patent No. 7,543,634 (the “’634 Patent”)
`1002 Affidavit of Margaret Kieckhefer, of the Library of Congress, regarding
`excerpts from Composite Catalog of Oil Field and Pipe Line
`Equipment, Vol. 2 (21st ed. World Oil 1955) (“Lane-Wells”)
`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
`Excerpts of Prosecution History of U.S. Patent No. 7,861,774, a
`1012
`continuation of the ’634 Patent
`Excerpts of Prosecution History of the ’634 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)
`1019 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. 1004 at 102-110)
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`1020 Affidavit of Nancy Chaffin Hunter, regarding the proceedings of the
`10th Middle East Oil Show & Conference (Bahrain March 15-18, 1997)
`(including 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”)
`1021 Affidavit of Nancy Chaffin Hunter, regarding the proceedings of the
`Production Operation Symposium (Oklahoma City, OK April 2-4,
`1995) (including R. Coon and D. Murray, Single-Trip Completion
`Concept Replaces Multiple Packers and Sliding Sleeves in Selective
`Multi-Zone Production and Stimulation Operations, SPE 29539 (1995))
`(“Coon”)
`1022 Howard, G. C. & Fast, C. R., HYDRAULIC FRACTURING (AIMMPE
`1970)
`1023 Hyne, Norman J., Dictionary of Petroleum Exploration, Drilling, &
`Production (1991)
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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. 7,543,634 (“the ’634 Patent,” Ex. 1001),
`
`which issued on June 9, 2009. The Board is authorized to deduct any required fees
`
`from Norton Rose Fulbright US LLP Deposit Account 50-1212/11508227.
`
`This Petition presents newly discovered prior art and new arguments over
`
`Petitioners’ previously filed petition for IPR of the ’634 Patent: IPR2016-00597.
`
`I.
`
`INTRODUCTION
`
`The ’634 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, Lane-Wells, described such a system in 1955:
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`PORTS
`
`BALL
`
`SLIDING
`SLEEVE
`
`
`
`Lane-Wells shows a ball-actuated sliding sleeve (a “Tubing Port Valve”) that it
`
`states can be used for acidizing multiple zones “with a three packer set-up and two
`
`different sized Tubing Port Valves.”
`
`Patent Owner may assert several purported distinctions over the prior art—
`
`such as the “solid body” nature of its packers, or the use of its system in an open
`
`(uncased) hole—but all fail. Lane-Wells discloses that its multi-packer system can
`
`be used in an open hole. And Ellsworth disclosed the use of solid body packers in
`
`open hole acidizing operations. As a result, using Ellsworth’s packer in the Lane-
`
`Wells System would have been obvious.
`
`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.
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`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`The following matters may affect, or be affected by, a decision in this
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`IPR2016-01505
`Patent 7,543,634
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`proceeding:
`
`(1)
`
`IPR2016-00596, filed by Petitioners against the U.S. Patent No.
`
`7,134,505 (the ’505 Patent);
`
`(2)
`
`(3)
`
`IPR2016-00597, filed by Petitions against the ’634 Patent;
`
`IPR2016-00598, filed by Petitioners against U.S. Patent No.
`
`7,861,774 (the ’774 Patent);
`
`(4)
`
`IPR2016-00650, filed by Petitioners against U.S. Patent No.
`
`6,907,936 (the ’936 Patent);
`
`(5)
`
`IPR2016-00656, filed by Petitioners against U.S. Patent No.
`
`8,657,009 (the ’009 Patent);
`
`(6)
`
`IPR2016-00657, filed by Petitioners against U.S. Patent No.
`
`9,074,451 (the ’451 Patent);
`
`(7) U.S. Patent Application No. 14/738,506 (the ’506 Application);
`
`(8) U.S. Patent Application No. 15/149,742 (the ’742 Application);
`
`(9) U.S. Patent Application No. 15/149,971 (the ’971 Application); and
`
`(10) Rapid Completions LLC v. Baker Hughes Incorporated et al., Civil
`
`Action No. 6:15-cv-724 (E.D. Tex. 2015), which involves the ’505, ’634, ’774,
`
`’936, ’009, and ’451 Patents.
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`Each of the ’634, ’774, ’936, ’009, and ’451 Patents and each of the ’506,
`
`’742, and ’971 Applications shares at least one priority application with the ’505
`
`Patent, and the pending patent applications and IPRs are thus believed to involve
`
`related and potentially common issues of fact and law.
`
`Each of the ’634, ’774, ’936, ’009, and ’451 Patents and the ’738
`
`Application is (and each of the ’742 and ’971 Applications is believed to be)
`
`assigned to Patent Owner and believed to be exclusively licensed to Rapid
`
`Completions LLC.
`
`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)
`
`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 ’634 Patent is
`
`available for inter partes review, and that Petitioners are not barred or estopped
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`from requesting an inter partes review on the grounds identified in this Petition.
`
`The ’634 Patent has not been subject to a previous final written decision in an
`
`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 1-2, 6, 9-17, and
`
`19-25 of the ’634 Patent based on the following Grounds.
`
`Statutory Grounds of Challenge (37 C.F.R. § 42.104(b)(2))
`
`B.
`Ground 1: Claims 1-2, 9-17, and 19-25 are invalid under § 103(a) based on
`
`Lane-Wells (Ex. 1002) and Ellsworth (Ex. 1004). Published in 1955 (see Ex. 1002
`
`at 1/171 and ¶¶ 1-6, and 7/17 (showing “NOV 14 1955” date stamp referenced in
`
`¶ 5)) and 1999 (see Ex. 1019 at ¶¶ 1-5 and 102-110), respectively, both are prior
`
`art under § 102(b).
`
`Ground 2: Claim 11 is invalid under § 103(a) based on Lane-Wells (Ex.
`
`1002) and Ellsworth (Ex. 1004), as in Ground 1, and on Hartley (Ex. 1003). Issued
`
`in 1995, Hartley is prior art under § 102(b).
`
`
`1 Citations in the XX/XX format are to the Petitioner-added “Page XX of XX”
`
`numbering at the lower right-hand corner of the referenced exhibit.
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`Ground 3: Claim 6 is invalid under § 103(a) based on Lane-Wells (Ex.
`
`1002) and Ellsworth (Ex. 1004), as in Ground 1, and on Echols (Ex. 1005). Issued
`
`in 1994, Echols is prior art under § 102(b).
`
`Ground 4: Claims 17 and 23 are invalid under § 103(a) based on Lane-
`
`Wells (Ex. 1002) and Ellsworth (Ex. 1004), as in Ground 1, and based on the
`
`knowledge of a person of ordinary skill in the art (POSITA).
`
`Ground 2 is not cumulative because it adds evidence addressing elements
`
`Patent Owner may seek to distinguish with narrow claim constructions. Ground 4
`
`is not cumulative because it adds evidence Patent Owner may assert is not reflected
`
`in Ellsworth.
`
`V.
`
`FIELD OF TECHNOLOGY
`
`The ’634 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 1:19-22, 2:36-3:4; see also Ex. 1007 at ¶¶ 55-64.
`
`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
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`and permit unrestricted wellbore inflow of petroleum products.” Ex. 1001 at 1:26-
`
`32; 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 1:30-32.
`
`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
`
`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 1:33-34.
`
`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 1:33-37. 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
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`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
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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. 1009 at 148.
`
`Once packers are deployed in the wellbore and set to seal around the
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`production tubing to isolate the desired zones, fluid may be pumped into the
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`isolated zones for stimulation. Ex. 1007 at ¶¶ 32-40. One example of such a
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`completion is described in Hutchison (Ex. 1010), which was cited during
`
`prosecution of the ’634 Patent. As annotated in Figure 1 below, 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; Ex. 1007 at ¶ 38.
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`Packer
`
`Packer
`
`Packer
`
`Sleeve
`
` Sleeve
`
` Packer
`
`
`
`As further annotated in Figures 2 and 4 below, the lower sleeve 20 [blue] has
`
`a seat 44 [purple] that is sized to be sealed by a ball 48 [green]. Ex. 1010 at 3:64-
`
`4:59. Upper sleeve 21[blue], in turn, is sized to mate with a larger ball. Id. at
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`4:60-5:5.
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`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.
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`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
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`4:60-6:17. Hutchison thus enables individual treatment of each zone. Ex. 1007 at
`
`¶¶ 37-39.
`
`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. Ex. 1007 at ¶¶ 41-42.
`
`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.”); Ex. 1021 at 912 (discussing the use of external casing
`
`packers (ECPs), which are inflatable packers, in an open hole under “ECP AND
`
`SLIDING SLEEVES, IN OPEN HOLE”); see also Ex. 1001 at 1:46-48
`
`(“[I]nflatable packers may be limited with respect to pressure capabilities as well
`
`as durability under high pressure conditions.”); Ex. 1007 at ¶¶ 41. 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.
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`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 SBP’s.”);
`
`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, may be utilized for the
`
`packers 30, 32, 34 . . . .”); Ex. 1007 at ¶¶ 42-43. The description of “very close to
`
`gauge hole” means that the borehole is round instead of oval, and very close in size
`
`to the drill bit, which characteristics can be achieved in formations that are
`
`mechanically competent. Ex. 1007 at ¶ 43. Ellsworth illustrates a principle that
`
`had been known and applied in the industry for decades, that tools—such as solid-
`
`body packers used in the historically more-prevalent cased holes—can also be
`
`used, and often are tried and used successfully, in open-hole completions as they
`
`have become more common. Id. Solid-body packers were often hydraulically
`
`“set” via the application of hydraulic pressure to a piston to compress the packing
`
`element(s). See, e.g., Ex. 1004 at 3; Ex. 1011 at 4:35-42; see also Ex. 1007 at ¶ 42.
`
`As Dr. Daneshy explains in paragraph 44 of his declaration (Ex. 1007),
`
`stimulation techniques, including acidizing, have been used and/or publicized for
`
`use in multiple zone completions with packers in both open and cased holes since
`
`at least 1956. See Ex. 1002 at 2854 (“The Tubing Port Valve also provides a
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`means of acidizing two zones with packer setting in either open-hole or cased hole
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`completion. Three zone acidizing is possible with a three packer set-up and two
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`different sized Tubing Port Valves.”). Retrievable, hydraulically-set solid body
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`packers have been used and/or publicized for use in acid fracturing in cased holes
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`since at least 1997. See Ex. 1020 at 97 (discussing “multiple acid fracs” using
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`“multi-stage acid frac tool (MSAF)”), at 98 (discussing use of retrievable
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`hydraulic-set packers), at 100 (discussing choosing the balls based on the
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`“anticipated fracture gradient of the zone being treated”), at 100-101 (describing
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`the stimulation as a “frac job”), and at 103 (referring to “Packers frac tools”).
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`Retrievable, hydraulically-set solid body packers have also been used and/or
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`publicized for use in acidizing in an open hole since at least 1999. See Ex. 1004 at
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`p. 3/FIG. 4 (showing hydraulically-settable solid body packer (SBP)), at 5 (“Prior
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`to running the production assembly, SBP’s were run to acidize the toe of the
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`well.”), at 6 (“The initial acid job using SBP’s indicated that the [SBPs]
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`successfully provided isolation during the job. The acidizing assembly was pulled,
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`and some rubber was left in the hole.”).
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`VI. LEVEL OF ORDINARY SKILL IN THE ART
`A POSITA relevant to the ’634 Patent as of November 19, 20012—the
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`earliest priority date claimed by the ’634 Patent—would have had at least a
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`Bachelor of Science degree in mechanical, petroleum, or chemical engineering and
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`at least 2-3 years of experience with downhole completion technologies related to
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`fracturing. See Ex. 1007 at ¶ 45. This level of ordinary skill is also evidenced by
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`prior art and the ’634 Patent itself. See id. at ¶¶ 46-54; Chore-Time Equip., Inc. v.
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`Cumberland Corp., 713 F.2d 774, 779 (Fed. Cir. 1983); Okajima v. Bourdeau, 261
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`F.3d 1350, 1355 (Fed. Cir. 2001). Here, the prior art described in Section V above
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`demonstrates that a POSITA would have been familiar with various completion
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`systems and stimulation techniques. See Ex. 1007 at ¶¶ 46 (citing declaration
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`Section V., which includes ¶¶ 25-44); see also id. at ¶¶ 45, 47-53.
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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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`¶¶ 41-44, 46, 53; see also Ex. 1004 at 3 (“Historically, inflatable packers were used
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`for water shut-off, stimulation, and segment testing. More recently, solid body
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`2 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. 1007 at ¶ 22.
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`packers (SBP’s) (see FIG. 4) have been used to establish open hole isolation.”);
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`Ex. 1011 at 3:67-4:4 (“[T]he [selective isolation and treatment] method 10 may be
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`performed in wells including both cased and uncased portions, and vertical,
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`inclined and horizontal portions . . . .”); see also Ex. 1001 at 1:26-35. A POSITA
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`would have also recognized that many tools initially designed or used with casing
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`could also be used in uncased wellbores in at least some formations. Ex. 1007 at
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`¶¶ 43, 48-54.
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`Patent Owner agrees. In a continuation of the ’634 Patent, Patent Owner
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`submitted in an IDS a declaration of its own expert witness from Patent Owner’s
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`litigation against Halliburton. Ex. 1012 at 31/57-57/57 (First Supplemental Expert
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`Report of Kevin Trahan, Doc. KKKKK in 11/27/2009 IDS). In it, Patent Owner’s
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`expert explained that “hard rock formations, once drilled, typically provide a
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`circular cross section conduit, just as a cased hole does. In these types of hard
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`formations a tool that was designed for use in cased hole may be used in open
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`hole.” Id. at 34/57.
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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 18 at 18/57 (Affidavit of Kevin Trahan, Doc. QQQQ in
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`11/27/2009 IDS). 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 18/57-19/57. In particular, “[i]f more packing
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`elements are employed there is a greater opportunity for at least one of the packing
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`elements to seal in a portion of the borehole that has continuity.” Id. at 19/57. Mr.
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`Trahan 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. 1004 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 ’634 PATENT
`The ’634 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 1:19-22.
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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 1:38-41.
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`The ’634 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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`1:41-48. The ’634 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 1:48-54.
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`The ’634 Patent’s Asserted Improvement to the Prior Art
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`B.
`To address these perceived shortcomings, the ’634 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 2:27-31. The
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`’634 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 ’634 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 10:26-30. The tubing string 14
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`includes ports 17 in each of multiple ported intervals 16a-e [blue], which are
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`“opened through the tubing string wall to permit access between the tubing string
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`inner bore 18 and the wellbore.” Id. at 6:12-16. Ported intervals 16a-e [blue] are
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`separated by packers 20a-f [red] to divide the formation into zones for fluid
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`treatment through ports 17 and thereby prevent treatment fluids from entering a
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`different formation segment once outside the tubing string. Id. at 6:17-32.
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`TO SURFACE
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`PACKER
`
`WELLBORE
`
`PACKER
`
`PACKER
`
`PACKER
`
`PACKER
`
`LOWER
`END
`
`TOOL
`STRING
`
`PORTED
`INTERVALS
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`FIG. 1a
`(annotated)
`
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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 [green] is “dropped” into the
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`tubing string and is carried to a corresponding sleeve 22, where the ball or plug
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`engages and seals against a seat 26 in the sleeve. Id. at 6:62-7:35.
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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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`PORTED
`INTERVAL
`
`PORTED
`INTERVAL
`
`PORTED
`INTERVAL
`FIG. 1b
`(annotated)
`
`SMALLEST
`DIAMETER
`
`
`
`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 7:18-23. 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 against seat 26e, sleeve 22e shifts to open port 17. The next
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`largest ball 24d is then dropped into the tubing to open sleeve 22