Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 65
`Entered: April 3, 2018
`
`PUBLIC VERSION – REDACTED
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WEATHERFORD INTERNATIONAL, LLC,
`WEATHERFORD/LAMB, INC., WEATHERFORD US, LP, and
`WEATHERFORD ARTIFICIAL LIFT SYSTEMS, LLC,
`Petitioner,
`
`v.
`
`PACKERS PLUS ENERGY SERVICES INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01509
`Patent 7,861,774 B2
`____________
`
`Before SCOTT A. DANIELS, NEIL T. POWELL and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 65
`Entered: April 3, 2018
`
`PUBLIC VERSION – REDACTED
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WEATHERFORD INTERNATIONAL, LLC,
`WEATHERFORD/LAMB, INC., WEATHERFORD US, LP, and
`WEATHERFORD ARTIFICIAL LIFT SYSTEMS, LLC,
`Petitioner,
`
`v.
`
`PACKERS PLUS ENERGY SERVICES INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01509
`Patent 7,861,774 B2
`____________
`
`Before SCOTT A. DANIELS, NEIL T. POWELL and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`IPR 2016-01509
`Patent 7,861,774 B2
`
`PUBLIC VERSION – REDACTED
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`Weatherford International LLC, and others, (“Weatherford” or
`“Petitioner”) filed a Petition (Paper 1, “Pet.”) challenging claims 1, 3–7, 9–
`10, 12, and 16 of the ’774 patent and supporting its challenge with the
`testimony of Dr. Vikram Rao, Ph.D. (Ex. 1007). We instituted trial for
`claims 1, 3–7, 9–10, 12 and 16 of the ’774 patent on certain grounds of
`unpatentability alleged in the Petition. Paper 23 (“Decision to Institute” or
`“Inst. Dec.”).
`After institution of trial, Rapid Completions LLC, (“Rapid” or “Patent
`Owner”) the exclusive licensee of the ’774 patent, filed a Patent Owner
`Response, along with a Declaration by Mr. Harold E. McGowen, PE,
`(“McGowen Declaration”).1 Petitioner filed a Reply (Paper 39, “Pet.
`Reply”) and both parties filed motions to exclude certain evidence. See
`Papers 44, 46.
` A consolidated hearing for IPR2016-01509, IPR2016-01514 and
`IPR2016-01517, each involving the same Petitioner and the same Patent
`Owner, was held on November 2, 2017. The ’774 patent is a continuation
`of U.S. Patent No. 7,534,634, which is in turn, a continuation of U.S. Patent
`No. 7,134,505, which are at issue in the latter two proceedings. The
`transcript of the consolidated hearing has been entered into the record.
`Paper 61. (“Tr.”).
`
`
`1 Packers Plus is the owner of the ’774 patent, however, because Rapid
`asserts itself as the exclusive licensee with all substantial rights to enforce
`the ’774 patent, we refer to Rapid as the respondent in this proceeding.
`
`2
`
`
`
`
`PUBLIC VERSION – REDACTED
`
`IPR2016-01509
`Patent 7,861,774 B2
`
`
`We have jurisdiction under 35 U.S.C. § 6(c). This final written
`decision is issued pursuant to 35 U.S.C. § 318(a).
`Weatherford has shown by a preponderance of the evidence that
`claims 1, 3–7, 9–10, 12 and 16 of the ’774 patent are unpatentable.
`B. Additional Proceedings
`In addition to this petition, The ’774 patent is involved in a concurrent
`district court action, Rapid Completions LLC v. Baker Hughes Incorporated,
`No. 6:15-cv-00724 (E.D. Tex.), which was filed July 31, 2015. Pet. 4. The
`’774 patent is also challenged in IPR2016-00598 and IPR2016-01506. Id.
`C. The ’774 Patent
`The ’774 patent describes a method for fluid treatment of a well bore,
`namely “fracing,” or “fracturing” and a tubing string tool for treating and
`stimulating flow from particular segments of the well bore in an oil or gas
`formation while sealing off other segments. Ex. 1001, Abstract. The well
`bore can be either an open hole or a cased hole. Id. at 3:66–4:3. Typically, a
`tubing string is run into a well bore as a conduit for oil and gas products to
`flow to the surface. Id. at 1:28–48. But when natural formation pressure is
`insufficient to obtain a desired product flow, a well “stimulation” technique
`is employed, i.e. fracing, which involves injecting fracturing fluids into the
`formation to enlarge existing channels and thereby improve inflow into the
`well bore. Id. at 1:35–39. And, because a well bore may cross multiple
`zones within an oil or gas formation, only some of which contain desirable
`products, the ability to inject “treatment fluids wherein fluid is injected into
`selected intervals of the well bore, while other intervals are closed,” is key to
`controlling and optimizing production from the well. Id. at 2:28–30.
`
`3
`
`
`
`PUBLIC VERSION – REDACTED
`
`IPR2016-01509
`Patent 7,861,774 B2
`
`
`Figure 1b of the ’774 patent is reproduced below. We note that Figure
`1b as illustrated has a vertical orientation, and referring to Figure 1a and
`other figures as well as the claims, the well bore can be configured also in a
`non-vertical orientation, for example horizontal.
`
`
`
`4
`
`
`
`PUBLIC VERSION – REDACTED
`
`IPR2016-01509
`Patent 7,861,774 B2
`
`
`As shown, above, in Figure 1b, and described in the ’774 patent,
`tubing string 14 includes a series of ports 16c, 16d, 16e, along its length,
`with a ball-actuated sliding sleeve 26c, 26d, 26e, mounted over each port,
`for selectively permitting the release of fluid from certain segments of the
`tubing string. Id. at 2:39–65, 6:37–7:31. Special sealing devices, called
`“solid body packers” or “SBPs,” 20d, 20e, 20f, are mounted along the length
`of the tubing string downhole and uphole of each port. Id. at 2:39–65,
`6:4–36. The solid body packers are disposed about the tubing string and seal
`the annulus between the tubing string and the well bore wall, thereby
`dividing the well bore into a series of isolated segments, also called stages.
`Id. at 6:18–24.
`As further observed in Figure 1b, when sliding sleeve 26e covering
`port 16e is activated by ball 24e to an open position as shown, fluid can pass
`into one segment of the well bore but is prevented from passing into adjacent
`segments by packers 20e and 20f positioned on either side of the port. Id. at
`6:50–57. Thus, ball 24e, as the smallest ball passes through sleeves 26c and
`26d before activating sliding sleeve 26e. With port 16e open, as shown
`above, a stimulation of this segment of the well bore can be undertaken.
`With this structure, sequential stimulation of the adjacent well bore
`segments can be implemented because “[e]ach of the plurality of sliding
`sleeves has a different diameter seat and therefore each accept different sized
`balls.” Id. at 7:14–15. In other words, working uphole, each consecutive
`sliding sleeve has a slightly larger seat and is activated by a slightly larger
`ball than the previous sliding sleeve. Id. Hence, a sequential stimulation of
`each adjacent uphole segment of the well bore is achieved with the
`increasing sleeve seat and ball diameter.
`
`5
`
`
`
`PUBLIC VERSION – REDACTED
`
`IPR2016-01509
`Patent 7,861,774 B2
`
`
`D. Illustrative Claim
`Of the challenged claims, claim 1 is the only independent claim. Each
`of dependent claims 3–7, 9–10, 12 and 16 depend directly from claim 1.
`Claim 1, as set forth in substantive part below, illustrates the claimed subject
`matter:
`1. A method for fracturing a hydrocarbon-containing formation
`accessible through a well bore, the method comprising:
`running a tubing string into an open hole and uncased non-
`vertical section of the well bore, the tubing string having a
`long axis and an inner bore and comprising:
`a first port opened through the tubing string wall,
`a second port opened through the tubing string wall, the
`second port downhole from the first port along the long axis
`of the tubing string,
`a first sliding sleeve having a seat with a first diameter . . .
`a second sliding sleeve having a seat with a second diameter
`smaller than the first diameter . . .
`a first solid body packer . . .
`a second solid body packer . . .
`a third solid body packer . . .
`wherein the tubing string is run into the well bore . . .
`expanding radially outward the first, second and third solid
`body packers until each of the first, second and third packers
`sets and seals against the well bore wall in the open and
`uncased, non-vertical section of the well bore . . . and create
`a first annular well bore segment between the first and second
`solid body packers and a second annular well bore segment
`between the second and third solid body packers . . .
`
`6
`
`
`
`PUBLIC VERSION — REDACTED
`
`IPR2016—01509
`
`Patent 7,861,774 B2
`
`conveying a fluid conveyed sealing device through the tubing
`string to pass through the first sliding sleeve and to land in
`and seal against the seat of the second sliding sleeve moving
`the second sliding sleeve to the open port position permitting
`fluid flow through the second port, and
`
`pumping fracturing fluid through the second port and into the
`second annular well bore
`segment
`to
`fracture
`the
`hydrocarbon-containing formation.
`
`E. The Alleged Grounds of Unpatentability
`
`Petitioner contends that the challenged claims are unpatentable on the
`
`following specific grounds-
`
`—Im Claims Challened
`Yost 2 Thomson,3 and Ellsworth4
`§ 103
`§ 103
`
`1, 3—7, 9—10, 12, and 16 Thomson and Ellsworth
`
`1, 3—7, 9—10, 12, and 16
`
`2 Ex- 1002, AB. Yost et al., Production and Stimulation Analysis ofMlltiple
`Hydraulic Fracturing ofa 2, 000-ft Horizontal Well, SPE 19090, Society of
`Petroleum Engineers, Gas and Technology Symposium, Dallas TX, (June 7—
`9, 1989) (“Yost”).
`3 Ex. 1003, D.W. Thomson et al., Design and Installation ofa Cost-Eflective
`Completion System for Horizontal Chalk Wells Where Multiple Zones
`Require Acid Stimulation, SPE 37482, © Society of Petroleum Engineers
`(1997) (“Thomson”).
`4 Ex. 1004, B. Ellsworth et al., Production Control ofHorizontal Wells in a
`Carbonate ReefStructure, © 1999 CIM 1999 Horizontal Well Conference
`(“Ellsworth”).
`
`
`
`PUBLIC VERSION – REDACTED
`
`IPR2016-01509
`Patent 7,861,774 B2
`
`
`CLAIM CONSTRUCTION
`
`II.
`A. Legal Standard
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`also In re Cuozzo Speed Techs., LLC., 778 F.3d 1271, 1278–82 (Fed. Cir.
`2015) (“Congress implicitly adopted the broadest reasonable interpretation
`standard in enacting the AIA,” and “the standard was properly adopted by
`PTO regulation.”). Claim terms are given their ordinary and customary
`meaning as would be understood by a person of ordinary skill in the art at
`the time of the invention and in the context of the entire patent disclosure.
`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). If the
`specification “reveal[s] a special definition given to a claim term by the
`patentee that differs from the meaning it would otherwise possess[,] . . . the
`inventor’s lexicography governs.” Phillips v. AWH Corp., 415 F.3d 1303,
`1316 (Fed. Cir. 2005) (en banc) (citing CCS Fitness, Inc. v. Brunswick
`Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). We apply this standard to the
`claims of the ’774 patent.
`Petitioner offers interpretations for several terms, “solid body packer,”
`“without tripping in a string or wire line” and “without setting any slips.”
`Pet. 26–27. Patent Owner disputes Petitioner’s interpretation of “solid body
`packer,” and argues that the “second annular well bore segment” must be “in
`an open hole, non-vertical section of the well bore.” PO Resp. 3–6.
`B. Solid body packer
`Referring to U.S. Provisional Application No. 60/404,783, to which
`the ’774 patent claims priority, Petitioner contends that “solid body packer”
`
`8
`
`
`
`PUBLIC VERSION – REDACTED
`
`IPR2016-01509
`Patent 7,861,774 B2
`
`means “a tool to create a seal between tubing and casing or the borehole wall
`using a packing element which is mechanically extruded, using either
`mechanically or hydraulically applied force.” Pet. 26 (citing Ex. 1015, 4;
`Ex. 1007 ¶¶ 58–66; Ex. 1001 at 4:4–7, 6:29–30, 8:34–43, 9:1–4, 10:38–39).
`Patent Owner disagrees with Petitioner’s construction stating that the
`parties “dispute what distinguishes solid body packers from other types of
`packers.” PO Resp. 3. Patent Owner asserts specifically that “solid body
`packer” should be construed “to mean ‘a packer including a solid, extrudable
`packing element.’” Id.
`Despite the parties disagreement as to the specific definition of “solid
`body packer,” and whether a definition provided in a related provisional
`application should carry the day as argued by Petitioner, the parties
`apparently agree that a solid body packer” as recited in the claims, does not
`cover an inflatable, hollow, or swellable, type of packer that has a packing
`element which expands due to fluid force. Compare Pet. Reply 2–3 with PO
`Resp. 30. What is clear from the specification of the ’774 patent is that a
`solid body packer is distinguishable from an inflatable, or swellable, packer
`because it does not use an inflatable bladder. See Ex. 1001, 1:45–48
`(explaining that inflatable packers “are inflated with pressure using a
`bladder.”). And, consistent with the specification, the claims expressly
`recite a “solid body packer.” Id. at 14:23. We agree, therefore, with the
`parties’ contentions that a solid body packer, as recited in the claims of the
`’774 patent, does not cover an inflatable packer.
`Beyond this, our decision does not rely on any specific definition of a
`solid body packer and neither do the parties advance any substantive
`arguments based on their respective definitions. This term, therefore, needs
`
`9
`
`
`
`PUBLIC VERSION – REDACTED
`
`IPR2016-01509
`Patent 7,861,774 B2
`
`no further construction. See 35 U.S.C. § 314(a); see also Vivid Techs., Inc.
`v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those
`terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy.”).
`C. Second annular well bore segment
`Petitioner does not dispute Patent Owner’s contention that the “second
`annular well bore segment” must be an open hole, non-vertical segment of
`the well bore. See PO Response 5–6, and see Pet. Reply 1–3. A reasonable
`reading of claim 1 supports Patent Owner’s contention, specifically the
`clause describing “the first and second annular well bore segments providing
`access to the hydrocarbon-containing formation along the well bore wall in
`the open hole and uncased, non-vertical section of the well bore.” Ex. 1001,
`14:61–64 (emphasis added).
`Beyond the correct interpretation of this claim term, our decision does
`not rely on a specific definition of “second annular well bore segment,” and
`therefore no express definition of this term is necessary. See Vivid Techs.,
`200 F.3d at 803.
`D. Other Constructions
`We do not provide explicit constructions for the remaining claim
`terms asserted by Petitioner because they are not disputed and a construction
`is not necessary for our determinations in this proceeding. See id., see also
`Pet. 26–27.
`
`III. MOTIONS TO EXCLUDE EVIDENCE
`Weatherford and Rapid each move to exclude evidence proffered by
`their respective opponents. We address, below, each of their motions in
`turn.
`
`10
`
`
`
`PUBLIC VERSION – REDACTED
`
`IPR2016-01509
`Patent 7,861,774 B2
`
`
`A. Petitioner’s Motion to Exclude Exhibits 2004–2020, 2045–2047,
`2051–2055, 2058–2059, 2061, 2081, 2083, 2085–2089, 2091, and
`2097
`
`Exhibits 2051 and 2081
`Petitioner moves initially to exclude portions of Exhibits 2051 and
`2081, which are declarations by Patent Owner’s declarant, Mr. McGowen,
`under FRE 702, 705, and the PTAB’s Trial Practice Guide at § II(A)(4) and
`also under 37 C.F.R. § 42.65(a). Pet. Mot. 3–7. Petitioner argues
`specifically that portions of Mr. McGowen’s declarations relating to
`commercial success and estimates of revenue due to competitors’ allegedly
`infringing products, are “expert testimony for which it refuses to disclose the
`underlying facts or data.” Id. at 4.
`It is not clear that Mr. McGowen’s estimates of Baker Hughes’s
`revenue from its IsoFrac and FracPoint well completion systems, are
`inadmissible under FRE 702 and 705. FRE 705 states that “an expert may
`state an opinion — and give the reasons for it — without first testifying to
`the underlying facts or data.” Further, 37 C.F.R. § 42.65(a) states that
`“[e]xpert testimony that does not disclose the underlying facts or data on
`which the opinion is based is entitled to little or no weight.” Thus,
`Petitioner’s arguments with respect to Exhibits 2051 and 2081 go more to
`weight of the declarant’s testimony rather than admissibility. We do not,
`therefore exclude Exhibits 2051 and 2081. We appreciate that Mr.
`McGowen’s initial estimates are based on information not available to
`Petitioner in this proceeding. See Pet. Mot. 4, see also Ex. 2051 42, n. 6 (“In
`arriving at this revenue estimate, I identified, analyzed, and summarized
`Baker Hughes confidential data containing information on the cost and/or
`profit derived from the sale of equipment that was run into a well.”).
`
`11
`
`
`
`PUBLIC VERSION – REDACTED
`
`IPR2016-01509
`Patent 7,861,774 B2
`
`However, Mr. McGowen’s subsequent reliance on only publically available
`Baker Hughes’s marketing sources and a cash estimate of “revenue per frac
`stage” is reasonably within Mr. McGowen’s experience and expertise in the
`field. See Ex. 2081 23–24, see also Ex. 2051, 1–3. Because the actual
`revenue value is admittedly a “rough estimate,” we accord little if any
`weight to the asserted financial figure itself. Id. We do credit, to some
`extent, Mr. McGowen’s inference that Baker Hughes has derived certain
`business revenue from its FracPoint system. See Ex. 2051, 41–42, see also
`Ex. 2081, 22–24.
`
`Exhibits 2004–2012, 2014, 2020, 2045–2047,
`2054, 2061, and 2086–2089
`Petitioner next moves to exclude Exhibits 2004–2012, 2014, and 2020
`asserting that Patent Owner failed to properly authenticate these exhibits
`under FRE 901. Pet. Mot. 7. Specifically, Petitioner argues that Exhibits
`2083 and 2091, declarations attesting to the authenticity of certain other of
`the documents represented in these exhibits, were filed with Patent Owner’s
`Response, and not filed within 10 days of Petitioner’s objections, and are
`thus untimely under 37 C.F.R. § 42.64(b)(2). Id.
`We are not persuaded that Exhibits 2083 and 2091 are untimely. The
`Board has previously determined that prior to filing a patent owner response
`it is not always necessary for a patent owner to serve supplemental evidence
`within the 10 business days afforded by 37 C.F.R. § 42.64(b)(2). See
`Nuvasive, Inc. v. Warsaw Orthopedic, Inc., IPR2013-00206, Paper 22 at 3
`(PTAB Oct. 15, 2013) (In Nuvasive, the Board explained that “the potential
`prejudice to Patent Owner (e.g., submitting its new testimonial evidence
`several weeks prior to the due date for patent owner response) outweighs
`
`12
`
`
`
`PUBLIC VERSION – REDACTED
`
`IPR2016-01509
`Patent 7,861,774 B2
`
`any potential prejudice to Petitioner.”). Petitioner has not, in this
`proceeding, argued that it has suffered any prejudice or asserted that the
`declarations do not authenticate the noted exhibits, only that Exhibits 2083
`and 2091 were not filed in accordance with 37 C.F.R. § 42.64(b)(2). We
`decline to exclude these exhibits on this basis alone.
`To the extent Exhibits 2004–2012, 2014, and 2020, are not
`sufficiently authenticated by a declarant, we determine that these documents
`are also industry publications, periodicals and text books containing
`publication numbers, printing dates and publisher indicia, all of which are
`understood at least under FRE 902 (6) as characteristics of self-
`authenticating documents.
`Petitioner argues also that Exhibits 2004–2012, 2014, 2020, 2045–
`2047, 2054, 2061, and 2086–2089 are not relevant under FRE 401. Pet.
`Mot. 7–10. Specifically, Petitioner contends that these documents, offered
`to show industry praise, have not been sufficiently shown as relating to
`StackFRAC tools and system covered by the claims of the ’774 patent. Id.
`at 8. (“Petitioner alleges that [n]ot one of these exhibits mentions the long
`list of steps recited in claim 1 of the ’774 Patent, which requires a series of
`steps performed in a horizontal, open hole using three solid body packers
`and two ball drop sliding sleeves.”). Petitioner’s arguments are not
`persuasive because these exhibits are replete with references to Packers
`Plus’s StackFRAC system. See for example Exs. 2004, 2005, 2009. Exhibit
`2009 is an article from the June 2015 issue of New Technology Magazine
`and states that
`[t]he open-hole ball-drop system is typically associated with
`Calgary-based Packers Plus Energy Services Inc., though a
`
`13
`
`
`
`PUBLIC VERSION – REDACTED
`
`IPR2016-01509
`Patent 7,861,774 B2
`
`
`number of competitors also run similar systems. A packer is set
`in the external casing, uncemented. In the case of the Packers
`Plus StackFRAC system, balls made of thermal-plastic material
`such as Teflon are dropped into the well to shift a sleeve, isolate
`the previous frac and open the next frac port up-hole.
`Ex. 2009, 1. And, although this is not an element-by-element comparison of
`StackFRAC with the claims recited in the ’774 patent, this article fairly
`explains that StackFRAC is a multi-stage open hole horizontal well
`completion system using solid body (as opposed to swellable) packers, and a
`continuous frac ball drop process using moveable sleeve and port opening
`tools. Id. Further, as discussed in greater detail below with respect to nexus
`and secondary considerations, we credit Mr. McGowen’s testimony and
`claim charts at Exhibit A of his declaration showing persuasive evidence
`corroborating the assertion that StackFRAC is most likely the commercial
`embodiment used in the claimed method recited in the ’774 patent. See
`Ex. 2051, Ex. A.
`Additionally, and to address Petitioner’s contention that Exhibit 2014
`is not relevant because it is dated 2007, many years after the filing of the
`’774 patent, we note that Patent Owner relies upon this exhibit in the context
`of open hole multi-stage (“OHMS”) being contrary to accepted wisdom, and
`mainly to show that even as of 2007 a person of ordinary skill in the art
`would still have understood casing and cementing a well bore as
`conventional and necessary. See PO Resp. 22. We are therefore not
`apprised of a persuasive reason or facts upon which to exclude as irrelevant
`any of Exhibits 2004–2012, 2014, 2020, 2045–2047, 2054, 2061, and 2086–
`2089.
`
`14
`
`
`
`PUBLIC VERSION – REDACTED
`
`IPR2016-01509
`Patent 7,861,774 B2
`
`
`Exhibits 2010, 2013, 2015, 2016–2019, 2045, 2047, 2052–2055,
`2058–2059, 2085, and 2097
`Petitioner moves to exclude Exhibits 2010, 2013, 2015, 2016-2019,
`2045, 2047, 2052–2055, 2058–2059, 2085, and 2097 because they “are out
`of court statements offered for the truth of the matter asserted that do not fall
`within any hearsay exception and thus should be excluded under FRE 802.”
`Pet. Mot. 10.
`With respect to Exhibits 2010, 2085, and 2097 our Decision does not
`rely upon these exhibits and therefore Petitioner’s Motion is moot as to these
`exhibits.
`Exhibit 2013, similar to Exhibits 2015, 2017, 2045, 2047, and 2055, is
`an industry publication, in this case a technical paper published by the
`Society for Petroleum Engineers, SPE 164009. See Ex. 2013 (SPE 164009
`is titled “Open Hole Multi-Stage Completion System in Unconventional
`Plays: Efficiency, Effectiveness and Economics.”). This paper is relied upon
`by Patent Owner to support its contention that the patented technology
`operates contrary to the conventional wisdom. See PO Resp. 23. The
`statement in SPE 164009 relied upon by Patent Owner to support this
`contention states that “[s]ome of the features of the OHMS approach are
`often depicted as disadvantages, such as the inferred inability to control the
`initiation point of the fractures”). Ex. 2013, 5. This statement is not,
`however, being offered for the truth of the matter asserted in the statement
`itself, i.e., whether or not the inability to precisely control fracture points in
`OHMS completions “are often depicted as disadvantageous.” Id. Whether
`or not the statement is true, it is offered mainly for the sake that it was
`espoused and printed in an industry publication, and represents a state of
`
`15
`
`
`
`PUBLIC VERSION – REDACTED
`
`IPR2016-01509
`Patent 7,861,774 B2
`
`mind, i.e. that in 2001 a person of ordinary skill in the art would have
`understood that accepted wisdom was to use cemented casing plug and perf
`completion methods, as opposed to OHMS. It is not hearsay for Patent
`Owner to infer from this statement that a person of skill in the art would
`have been skeptical of using OHMS completion techniques due to its
`inability to control fracture point initiation. Id. For the same and similar
`reasons, we are not persuaded that Exhibits 2015, 2017, 2045, 2047, and
`2055 are inadmissible as hearsay.
`Exhibits 2016 and 2085 are transcripts of videotaped depositions of
`Ali Daneshy, a witness for Baker Hughes in other IPR proceedings also
`involving Packers Plus. Mr. Daneshy’s testimony, under oath in the other
`IPR proceedings is submitted here essentially as a declaration, and his
`testimony in those proceedings relates also to the ’774 patent. See Ex. 2016,
`8:21–25. Petitioner had the opportunity also in this proceeding to depose
`Mr. Daneshy and did not. Mr. Daneshy’s sworn deposition testimony in
`these exhibits are his own recollections, not that of another, and because
`Petitioner had the opportunity to cross-examine Mr. Daneshy in this
`proceeding, his prior testimony is not inadmissible.
`Exhibits 2018–2019 and 2052–2053, 2058–2059 are various technical
`documents, advertisements, and a slideshow relied upon by Patent Owner to
`show copying by Baker Hughes. Pet. Mot. 13. For example Exhibit 2052 is
`alleged to be a Packers Plus’s internal document, which is provided for
`comparison with Exhibit 2053, a Baker Hughes document. These
`documents Patent Owner contends, are the same technical drawings, with
`Exhibit 2053 allegedly having an altered product label, crediting the Packers
`Plus’s technical drawing to Baker Hughes Iso-Frac system. PO Resp. 31–
`
`16
`
`
`
`PUBLIC VERSION – REDACTED
`
`IPR2016-01509
`Patent 7,861,774 B2
`
`34. Again, to the extent there are statements in these documents, the
`documents are not hearsay as the documents are used for purposes of
`comparison, to allege copying, not for the truth of the matter, statements or
`otherwise, depicted in the documents themselves. This same analysis
`applies to the video comparison provided by Patent Owner in Exhibits 2058–
`2059, as well as the marketing and slide show documents in Exhibits 2018
`and 2019. See PO Resp. 34–35. This is not hearsay under FRE 802.
`For these reasons, we deny Petitioner’s Motion to Exclude.
`B. Patent Owner’s Motion to Exclude Exhibits 1008 and 1011–1014
`Patent Owner filed a Motion to Exclude 1008 and 1011–1014.
`Paper 46. Petitioner file an Opposition to Patent Owner’s Motion to
`Exclude. Paper 48. Patent Owner responded by filing a Reply to Its Motion
`to Exclude, in which Patent Owner states “to the extent the Board overrules
`[Petitioner’s] hearsay and authentication objections . . . , [Patent Owner]
`withdraws the present motion.” Paper 53, 1. Thus, given that we deny
`Petitioner’s Motion to Exclude, Patent Owner’s Motion to Exclude is
`withdrawn.
`
`IV. ANALYSIS
`A. Claims 1, 3–7, 9–10, 12 and 16 — Alleged obviousness over Yost,
`Thomson, and Ellsworth
`Petitioner asserts that claims 1, 3–7, 9–10, 12 and 16 would have been
`obvious over Yost, Thomson, and Ellsworth.
`A patent is invalid for obviousness:
`if the differences between the subject matter sought to be
`patented and the prior art are such that the subject matter as a
`whole would have been obvious at the time the invention was
`
`17
`
`
`
`PUBLIC VERSION – REDACTED
`
`IPR2016-01509
`Patent 7,861,774 B2
`
`
`made to a person having ordinary skill in the art to which said
`subject matter pertains.
`35 U.S.C. § 103. Obviousness is a question of law based on underlying
`factual findings: (1) the scope and content of the prior art; (2) the differences
`between the claims and the prior art; (3) the level of ordinary skill in the art;
`and (4) objective indicia of nonobviousness. See Graham v. John Deere Co.
`of Kansas City, 383 U.S. 1, 17–18 (1966). Courts must consider all four
`Graham factors prior to reaching a conclusion regarding obviousness. See
`Eurand, Inc. v. Mylan Pharms., Inc. (In re Cyclobenzaprine Hydrochloride
`Extended-Release Capsule Patent Litig.), 676 F.3d 1063, 1076–77 (Fed. Cir.
`2012). As the party challenging the patentability of the claims at issue,
`Weatherford bears the burden of proving obviousness by a preponderance of
`the evidence. See 35 U.S.C. § 316(e).
`1. Scope and Content of the Prior Art
`Yost
`Yost discloses a U.S. Department of Energy sponsored stimulation
`test (“stimulation test”) of a horizontal well bore in the Devonian shales of
`Wayne County, West Virginia. Ex. 1002, 2. In the stimulation test, a casing
`string with 14 sliding sleeve ported collars was inserted into a horizontal
`uncased, i.e. open hole, well bore. Id. The casing string included eight
`inflatable casing packers (“ECP’s”) providing eight separate open hole zones
`along the length of the casing string. Id. According to the report, only seven
`of the ECP’s properly inflated so that only seven zones were available for
`testing. Id. The casing string and zones 1–8 are illustrated in Yost’s Figure
`2, titled “Completion & Testing Procedures,” reproduced below.
`
`18
`
`
`
`PUBLIC VERSION – REDACTED
`
`IPR2016-01509
`Patent 7,861,774 B2
`
`
`
`
`
`Figure 2 of Yost, above, depicts the casing string, ECP’s, and sliding sleeve
`openable ports within each of the eight zones. A “straddle tool” (not shown)
`was used to open and close the port collars in the individual zones. Id.
`The test included 24-hour pressure build-up in each of the seven
`isolated zones along a 2,221-foot length of the horizontal well bore, and for
`each zone, data collection relating to various characteristics of the well
`including “average reservoir pressure values, skin values, and average
`permeability values for the various zones with the different stimulation
`jobs.” Id. at 2. For each zone, different “frac jobs” were undertaken to
`stimulate the Devonian shale formation using different pressurized fluids,
`e.g. nitrogen, liquid CO2, and nitrogen-foam with proppants. Id. at 3. Yost
`concludes that “[a]s a result of the different frac jobs in the various zones,
`the production was enhanced in all zones. This improvement in production is
`
`19
`
`
`
`PUBLIC VERSION – REDACTED
`
`IPR2016-01509
`Patent 7,861,774 B2
`
`reflected in the increase in flow rates and a decrease in skin factor values.”
`Id. at 5.
`
`Thomson
`Thomson teaches a Multi Stage Acid Frac Tool (“MSAF tool”) having
`a sliding sleeve and threaded ball seat, with “the smallest ball seat in the
`lowest sleeve and the largest ball seat in the highest sleeve.” Ex. 1003, 21.
`As explained by Thomson, the MSAF tool permits that
`stimulation of 10 separate zones is accomplished in 12-18 hours
`by a unique procedure that lubricates varying sized low-specific
`gravity balls into the tubing and then pumps them to a mating
`seat in the appropriate MSAF, thus sealing off the stimulated
`zone and allowing stimulation of the next zone which is made
`accessible by opening the sleeve.
`Id. Thomson’s Figure 5, below, depicts the MSAF tool in cross-section.
`
`Thomson’s Figure 5, reproduced above, depicts in the upper
`illustration labeled “Closed Position,” the MSAF tool having a sliding sleeve
`covering fluid ports in the closed position, and in the lower illustration,
`
`
`
`20
`
`
`
`PUBLIC VERSION – REDACTED
`
`IPR2016-01509
`Patent 7,861,774 B2
`
`labeled “Open Position,” the sliding sleeve having been motivated by a ball
`into an open position uncovering the fluid ports.
`Ellsworth
`Ellsworth discloses that “[m]ore recently, solid body packers (SBP’s)
`(see Figure 4) have been used to establish open hole isolation.” Ex. 1004, 3.
`Ellsworth’s Figure 4 is reproduced below.
`
`
`
`21
`
`
`
`PUBLIC VERSION – REDACTED
`
`IPR2016-01509
`Patent 7,861,774 B2
`
`
`Figure 4, above, shows a solid body packer, including a setting
`cylinder, a setting shear, a mandrel lock, a five piece packing element, and a
`sheer release. Id., Fig. 4. Ellsworth teaches that a solid body packer
`provides a hydraulically actuated mechanical packing element. Id. at 3.
`Ellsworth explains that “[t]he objective of using this type of tool is to
`provide a long-term solution to open hole isolation without the aid of
`cemented liners.” Id.
`2. Differences Between the
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
