Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 23
`
`Entered: February 23, 2017
`
`
`
`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 IPR2016-01517
`Patent 7,134,505 B2
`____________
`
`
`
`Before SCOTT A. DANIELS, NEIL T. POWELL, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`DECISION TO INSTITUTE
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
`
`Paper 23
`
`Entered: February 23, 2017
`
`
`
`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 IPR2016-01517
`Patent 7,134,505 B2
`____________
`
`
`
`Before SCOTT A. DANIELS, NEIL T. POWELL, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`DECISION TO INSTITUTE
`37 C.F.R. § 42.108
`
`
`
`IPR2016-01517
`Patent 7,134,505 B2
`
`
`I. INTRODUCTION
`
`Background
`A.
`Petitioner filed a Petition requesting inter partes review of claims 23
`and 27 of U.S. Patent No. 7,134,505 B2 (Ex. 1001, “the ’505 patent”).
`Paper 1 (“Pet.”). Patent Owner filed a Preliminary Response. Paper 18
`(“Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314(a); 37 C.F.R. § 42.4(a). The standard for
`instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which
`provides that an inter partes review may not be instituted “unless the
`Director determines . . . there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.”
`After considering the Petition and Preliminary Response, we
`determine that Petitioner has established a reasonable likelihood of
`prevailing in showing the unpatentability of claims 23 and 27. Accordingly,
`we institute inter partes review of these challenged claims.
`B.
`Related Matters
`The ’505 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. Paper 4. Additionally, the ’505 patent
`is challenged in IPR2016-00596, where we instituted trial in August, 2016.
`The ’505 patent is also challenged in IPR2016-01496, in which trial was
`instituted in February, 2017.
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`Patent 7,134,505 B2
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`
`The ’505 Patent
`C.
`The ’505 patent describes a tubing string for treating a particular
`segment of a wellbore, while sealing off other segments. Ex. 1001, Abstract.
`Typically, a tubing string is run into a wellbore as a conduit for oil and gas
`products to flow to the surface. Id. at 1:23–43. But when natural formation
`pressure is insufficient, a well “stimulation” technique is employed, which
`involves injecting fracturing fluids into the formation to enlarge existing
`channels and thereby improve inflow into the wellbore. Id. at 1:30–34.
`As described in the ’505 patent, the tubing string includes a series of
`ports along its length, with a ball-actuated sliding sleeve mounted over each
`port, for selectively permitting the release of fluid from certain segments of
`the tubing string. Id. at 2:35–62, 6:41–7:36. Special sealing devices, called
`“solid body packers,” are mounted along the length of the tubing string
`downhole and uphole of each port. Id. at 2:35–62, 6:8–40. The solid body
`packers are disposed about the tubing string and seal the annulus between
`the tubing string and the wellbore wall, thereby dividing the wellbore into a
`series of isolated segments. Id. at 6:22–28. When the sliding sleeve over a
`particular port is activated to an open position, fluid can pass into one
`segment of the wellbore but is prevented from passing into adjacent
`segments by the packers positioned on either side of the port. Id. at 6:46–61.
`D.
`Illustrative Claims
`Claim 23 depends from independent claim 19. Claim 27 depends
`from independent claim 24. Claims 19 and 23 are reproduced below as
`illustrative.
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`Patent 7,134,505 B2
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`19. A method for fluid treatment of a borehole, the method
`comprising:
`providing an apparatus for wellbore treatment including
`a tubing string having a long axis,
`a first port opened through the wall of the tubing string,
`a second port opened through the wall of the tubing string, the
`second port offset from the first port along the long axis of the
`tubing sting,
`a first packer operable to seal about the tubing string and
`mounted on the tubing string to act in a position offset from the
`first port along the long axis of the tubing string,
`a second packer operable to seal about the tubing string and
`mounted on the tubing string to act in a position between the
`first port and the second port along the long axis of the tubing
`string;
`a third packer operable to seal about the tubing string and
`mounted on the tubing string to act in a position offset from the
`second port along the long axis of the tubing string and on a
`side of the second port opposite the second packer,
`at least one of the first, second and third packer being a solid
`body packer each including multiple packing elements;
`a first sleeve positioned relative to the first port, the first sleeve
`being moveable relative to the first port between a closed port
`position and a position permitting fluid flow trough the first
`port from the tubing string inner bore
`a second sleeve being moveable relative to the second port
`between a closed port position and a position permitting fluid
`flow through the second port from the tubing string inner bore;
`and
`a sleeve shifting means for moving the second sleeve from the
`closed port position to the position permitting fluid flow, the
`means for moving the second sleeve selected to create a seal in
`the tubing string against fluid flow past the second sleeve
`through the tubing string inner bore and;
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`Patent 7,134,505 B2
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`running the tubing string into a wellbore in a desired position for
`treating the wellbore;
`setting the packers by hydraulically driving a piston to compress at
`least one of the multiple packing elements of at least one of the first,
`second and third packers;
`conveying the means for moving the second sleeve to move the
`second sleeve and increasing fluid pressure to force wellbore
`treatment fluid out through the second port.
`Ex. 1001, 15:46–16:16 (line breaks added).
`23. The method of claim 19 wherein when in a desired
`position the apparatus is adjacent an open hole section of the
`wellbore and the packers are set to seal the annulus between the
`apparatus and the wellbore wall.
`Id. at 16:31–34.
`E.
`Asserted References
`Petitioner relies on the following references:
`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”) (Ex. 1003).
`
`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 (1999) (“Ellsworth”) (Ex. 1004).
`
`A.B. Yost et al., Production and Stimulation Analysis of Multiple Hydraulic
`Fracturing of a 2,000-ft Horizontal Well, SPE 19090, Society of Petroleum
`Engineers, Gas and Technology Symposium, Dallas TX, (June 7–9, 1989)
`(“Yost”) (Ex. 1002).
`
`
`
`Asserted Ground
`F.
`Petitioner contends that claims 23 and 27 of the ’505 patent are
`unpatentable under 35 U.S.C. § 103 based on the following ground (Pet. 6):
`Ground
`Reference(s)
`Challenged Claims
`§ 103
`Thomson, Ellsworth, and
`23 and 27
`
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`Patent 7,134,505 B2
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`Ground
`
`Reference(s)
`Yost
`As further support, Petitioner proffers the Declaration of Vikram Rao
`(Ex. 1007).
`
`Challenged Claims
`
`II. ANALYSIS
`Claim Construction
`A.
`Petitioner proposes constructions for certain claim terms. Pet. 26–27.
`Patent Owner, in turn, states that it disagrees with Petitioner’s proposed
`constructions and “intends to dispute them,” but offers no construction of its
`own, except to say “there is no need for the Board to address these disputes
`now.” Prelim. Resp. 20. For purposes of this decision, we need not construe
`explicitly any claim language to determine that there is a reasonable
`likelihood of Petitioner prevailing on its claim challenges. See 35 U.S.C.
`§ 314(a); 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.”).
`B.
`Real Party-In-Interest
`The Petition states that “Weatherford International, LLC;
`Weatherford/ Lamb, Inc.; Weatherford US, LP; and Weatherford Artificial
`Lift Systems, LLC are the real parties-in-interest.” Pet. 5. Patent asserts that
`Petitioner has failed to list Baker Hughes as a real party-in-interest pursuant
`to 35 U.S.C. § 312(a)(2), and the Petition therefore, should be denied.
`Prelim. Resp. 1–2.
`1. Facts
`As mentioned above, the ’505 patent is involved in the following
`district court action: Rapid Completions LLC v. Baker Hughes
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`Incorporated, No. 6:15-cv-00724 (E.D. Tex.) (“the lawsuit”). Pet. 5, Prelim.
`Resp. 2.
`The lawsuit was initiated when a complaint (Ex. 2021) was filed and
`served in 2015 accusing Petitioner, Baker Hughes, and others of infringing
`the ’505 patent. Prelim. Resp. 2 (citing Ex. 2021).
`In February 2016, Baker Hughes filed an initial set of IPRs (IPR2016-
`00596, 00597, 00598, 00650, 00656, and 00657) contesting the validity of
`among others, the ’505 patent. Following Patent Owner’s Preliminary
`Responses filed in the initial set of IPRs, Baker Hughes filed a second set of
`IPRs (IPR2016-01496, 01505, and 01506) in July 2016, also contesting the
`validity of the ’505 patent and other patents.
`Also in July 2016, Petitioner filed three IPRs (IPR2016-01509, 01514,
`and 01517) (the “Weatherford IPRs”). In each of the Weatherford IPRs,
`Patent Owner asserts that Baker Hughes is an unnamed real party-in-interest
`under 35 U.S.C. § 312(a)(2). Prelim. Resp. 1.
`2. The Parties’ Contentions
`Patent Owner contends that Baker Hughes and Petitioner have
`combined efforts “to obtain multiple bites at the invalidity apple,” and that in
`this proceeding, “unnamed party Baker Hughes had an opportunity to
`influence the theories asserted in this Petition.” Id. at 1–2. Patent Owner’s
`contentions that Baker Hughes is properly a real party-in-interest in this
`proceeding includes the following:
`(a) Petitioner and Baker Hughes are co-defendants and are working
`together in the lawsuit to invalidate the ’505 patent (Prelim.
`Resp. 2–3);
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`(b) Petitioner and Baker Hughes served joint invalidity contentions
`(Ex. 2022) in the underlying lawsuit, and the metadata associated
`with the invalidity charts indicates they were authored by Baker
`Hughes’s outside counsel (Id. at 3 (citing Exs. 2027, 2028));
`(c) Petitioner expressly authorized Baker Hughes’s outside counsel to
`act on their behalf in obtaining certain discovery in the lawsuit (Id.
`(citing Ex. 2029 8:21–9:3));
`(d) Petitioner did not join the initial IPRs filed by Baker Hughes,
`apparently indicating that they did not want to be bound by any
`estoppel that applied to Baker Hughes’s IPRs (Id. (citing Ex. 2038,
`1–2));
`(e) After receiving the Preliminary Responses in the initial IPRs,
`Baker Hughes uncovered additional prior art and filed its second
`set of IPRs, including this additional prior art, allegedly addressing
`the deficiencies Patent Owner pointed out in the Preliminary
`Responses in the initial set of IPRs (Id. at 4–5 (citing Exs. 2031,
`2034));
`(f) Baker Hughes’s counsel informed Patent Owner’s counsel via
`email (Ex. 2034) that Baker Hughes intended to update its
`invalidity contentions in the lawsuit based on (1) additional prior
`art disclosed by Packers Plus, (2) additional prior art recently
`located by Baker Hughes, and (3) positions taken by Patent Owner
`in the IPRs (Id. at 4 (citing Ex. 2034));
`(g) Baker Hughes authored the supplemental invalidity contentions in
`the underlying lawsuit (Id. at 4–5 (citing Ex. 2031); and
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`(h) Subsequent to Baker Hughes’s second set of IPRs, Petitioner and
`Baker Hughes both filed IPRs asserting prior art directed to
`“overcoming the deficiency identified in [Patent Owner’s]
`preliminary responses.” (Id. at 5).
`Based on the evidence, Patent Owner alleges that Petitioner and Baker
`Hughes, as co-defendants in the underlying district court lawsuit, are joint
`defense partners and that “the two have specifically mounted a joint
`invalidity defense against the patent at issue.” Id. at 10.
`Following a telephone conference with the parties, the Board
`authorized, via email dated December 12, 2016, a five page reply (“Reply”)
`permitting Petitioner an opportunity to respond to Patent Owner’s allegation
`that Baker Hughes is a real party-in-interest in this proceeding. Petitioner
`argues that Baker Hughes has not exercised control, nor had the opportunity
`to control this proceeding, and thus is not a real party-in-interest to this
`proceeding. Reply 1.
`Petitioner contends that the evidence asserted by Baker Hughes fails
`to rebut the presumption that Petitioner correctly identified the proper real
`parties-in-interest in this proceeding. Id. at 1–3. Petitioner additionally
`asserts certain evidence purporting to show that Petitioner and Baker Hughes
`have acted independently in this inter partes review proceedings before the
`Board. Id. at 3–5.
`3. Principles of Law
`Section 312(a) of Title 35 of the United States Code provides inter
`
`alia:
`
`(a) REQUIREMENTS OF PETITION.—A petition filed under
`section 311 may be considered only if—
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`(1) the petition is accompanied by payment of the fee
`established by the Director under section 311;
`(2) the petition identifies all real parties in interest;
`Generally, a petition is accorded a rebuttable presumption that its
`identification of real parties-in-interest is accurate and complete. See
`Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., Case IPR2013-
`00453, slip op. at 2 (PTAB Feb. 23, 2015) (Paper 91). If the patent owner
`produces sufficient evidence that “reasonably brings into question the
`accuracy of a petitioner’s identification of the real parties in interest,” the
`Board considers the totality of the relevant evidence to determine whether
`Petitioner has met its overall burden of persuasion to show that identification
`to be accurate and complete. See id. “Whether a party who is not a named
`participant in a given proceeding nonetheless constitutes a ‘real party-in-
`interest’ . . . to that proceeding is a highly fact-dependent question.” Office
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (2012) (citations
`omitted).
`[T]he spirit of that formulation as to IPR . . . proceedings means
`that, at a general level, the ‘real party-in-interest’ is the party
`that desires review of the patent. Thus, the ‘real party-in-
`interest’ may be the petitioner itself, and/or it may be the party
`or parties at whose behest the petition has been filed.
`Id. (emphasis added).
`Multiple factors are relevant to the issue of whether a non-party may
`be recognized as a “real party-in-interest” or “privy.” Id. (citing Taylor v.
`Sturgell, 553 U.S. 880, 893–895, 893 n.6 (2008)). A common consideration
`is whether the non-party exercised or could have exercised control over a
`party’s participation in a proceeding. Id. (citing Taylor, 553 U.S. at 895).
`Other factors may include the non-party’s relationship to the petitioner, the
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`non-party’s relationship to the petition itself (including the nature and degree
`of its involvement in the filing of the petition), and the nature of the
`petitioner. Id. at 48,760. The concept of control generally means that “it
`should be enough that the nonparty has the actual measure of control or
`opportunity to control that might reasonably be expected between two
`formal coparties.” Id. (citation omitted). The non-party’s participation may
`be overt or covert, and evidence of that participation may be direct or
`circumstantial, but the evidence as a whole must show that the non-party
`possessed effective control from a practical standpoint. Gonzalez v. Banco
`Cent. Corp., 27 F.3d 751, 759 (1st Cir. 1994). The inquiry is not based on
`isolated facts, but rather must consider the totality of the circumstances. Id.
`4. Analysis
`Having considered the evidence presented by the parties, we are not
`persuaded that Baker Hughes controls or had the ability to control the
`present proceeding. We agree with Patent Owner that Petitioner and Baker
`Hughes are collaborating in a joint defense on the infringement contentions
`asserted in the associated lawsuit. Prelim. Resp. 2–3 (citing Ex. 2029 8:21–
`9:3; Ex. 1029, 10). Petitioner does not, in fact, substantively dispute this
`allegation and, indeed, filed a redacted copy of the parties’ Joint Defense
`Agreement. See Reply, 2–3 (“[A]ll of PO’s evidence is directed to actions
`taken as part of a joint defense group in the litigation, or Baker Hughes’
`separately filed IPR petitions in which Petitioners had no involvement.”);
`see also Ex. 1029, 1, 10. We also appreciate that Petitioner and Baker
`Hughes may have divided up responsibility for certain aspects of the lawsuit.
`For example, Baker Hughes apparently authored the initial and supplemental
`invalidity contentions served on Rapid in the lawsuit and obtained certain
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`discovery used by the defendants in the lawsuit. See Exs. 2027, 2028, 2029,
`2031. This evidence, however, relates specifically to the underlying lawsuit,
`and to the extent it is true, is not evidence of cooperation by Petitioner and
`Baker Hughes in this IPR proceeding. There is nothing surreptitious about
`separate entities, as either third parties, or separate parties to a lawsuit,
`proclaiming shared interests to protect communications that are relevant to
`advance the interests of the entities possessing the common interest. See In
`re Regents of Univ. of California, 101 F.3d 1386, 1389 (Fed. Cir. 1996)
`(“The protection of communications among clients and attorneys ‘allied in a
`common legal cause’ has long been recognized.”) (quoting In re Grand Jury
`Subpoena Duces Tecum, 406 F.Supp. 381, 386 (S.D.N.Y.1975)). The fact
`that Petitioner and Baker Hughes have a desire and common interest in
`invalidating the ’505 patent and other patents, and have collaborated
`together, and as co-defendants in the underlying lawsuit invoked a common
`interest privilege with respect to sharing potentially invalidating prior art
`references, does not persuade us that Baker Hughes has any ability to control
`the instant Petition or is directing or funding the present proceeding.
`As noted by Patent Owner, the Board has issued decisions
`determining, based on evidence of control, that a non-party entity is a real
`party-in-interest. Prelim. Resp. 7 (citing Zoll Lifecor Corp. v. Philips Elecs.
`North America Corp., Case IPR2013-00609 (PTAB Mar. 20, 2014) (Paper
`15) (the “Zoll Decision”)). In the Zoll Decision, the Board was persuaded
`that an unnamed party to the IPR, Zoll Medical, exercised consistent control
`over Zoll Lifecore for over six years, including control of the inter partes
`review. Id. at 11. Specific evidence of control included Zoll Lifecor’s
`acknowledgment that Zoll Medical controlled 100% of Zoll Lifecor and
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`approved Zoll Lifecor’s corporate budget and plans. Id. Other evidence of
`control included the fact that common counsel for Zoll Medical and Zoll
`Lifecor would not state affirmatively that counsel did not provide input into
`preparation of the IPRs. Id. at 11–12. Additional evidence showed that only
`Zoll Medical’s management team attended court-ordered mediation in the
`underlying district court litigation filed against Zoll Lifecor. Id. at 12.
`We have no such evidence in this proceeding. Petitioner and Baker
`Hughes are not related corporate entities, but apparently, competitors.
`Reply 1. Petitioner’s counsel states affirmatively in their Reply that
`Petitioner (recognizing its duty of candor) asserts that Baker
`Hughes did not provide any
`funding
`for
`filing or
`attorneys/expert fees in the present proceeding . . . Baker
`Hughes did not direct or control the filing of the petition in the
`present proceeding, and had no degree of involvement in the
`filing.
`Reply 4. Petitioner also related to the District Court in the underlying
`
`lawsuit that
`
`[s]ince the very beginning of this case, Defendants have
`operated independently with regard to IPRs. [Petitioner]
`decided to file its IPRs when it did on a completely independent
`basis, with no consultation or agreement – explicit or implicit –
`with Baker Hughes.
`Ex. 1028, 8.
`Here, the playing field may not appear level to the extent Patent
`Owner must defend their patent in Petitioner’s and Baker Hughes’ separate
`IPR filings. Apart from this, Patent Owner has not, however, explained
`sufficiently the significance of their contentions that (a) Petitioner did not
`join in the initial or second set of Baker Hughes petitions and (b) that the
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`present Petition and Baker Hughes’s second set of petitions both include
`prior art allegedly directed to “overcoming the deficiency identified in
`[Patent Owner’s] preliminary responses.” See Prelim. Resp. 3, 5. Petitioner
`and Baker Hughes are separate corporate entities, and their separately filed
`IPRs assert different grounds. Although the Board has discretion with
`respect to joinder and consolidation of cases relating to the same patent
`under 35 U.S.C. § 315(c)–(d), Patent Owner has not apprised us of any rule,
`case law, or Board precedent that requires independent entities, who are not
`in privity nor real parties-in-interest, to join, consolidate or otherwise
`combine their separate efforts to invalidate the same patent.
`The evidence of record shows that Petitioner and Baker Hughes have
`strategized and shared information in the lawsuit, but there is a dearth of
`evidence that Baker Hughes controls, or had the opportunity to control this
`proceeding. Generally, common interests or activities, including common
`legal interests and activities, are insufficient without a specific connection to
`the petition/proceeding at issue. See, e.g., Syntroleum Corp. v. Neste Oil,
`Oyj, Case IPR2013-00178, Paper 22 at 7 (co-defendants with shared counsel
`in a co-pending District Court action insufficient); Trial Practice Guide
`48,760 (participation in joint defense group insufficient); cf. GEA Process
`Eng’g, Inc. v. Steuben Foods, Inc., Case 2014-00041, slip op. at 14–21
`(PTAB Dec. 23, 2014) (paper 140 (labeled as paper 135)) (non-party that
`funded specific petition/proceeding at issue on behalf of petitioner is real
`party in interest).
`The evidence shows more persuasively, as Petitioner points out from
`the Joint Defense Agreement, that the petitioners have specifically
`contracted to ensure that, despite cooperating in the lawsuit, their respective
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`IPRs remain independent and subject to no outside control or funding apart
`from the filing entity itself. Reply 4 (citing Ex. 1029, 10). Based on the
`present record, we are not persuaded that Patent Owner provides sufficient
`rebuttal evidence that reasonably brings into question the accuracy of
`Petitioner’s identification of the real party-in-interest.
`C.
`35 U.S.C. § 325(d)
`Patent Owner requests that we exercise our discretion under 35 U.S.C.
`§ 325(d) and decline to initiate inter partes review because substantially the
`same prior art and arguments were presented against the ’505 patent in
`IPR2016-00596. Prelim. Resp. 13–20. We disagree. The Thomson and
`Ellsworth references are the same in both proceedings. The challenge in this
`proceeding, however, also involves Yost, which allegedly discloses multi-
`zone fracturing of an uncased wellbore, and has merit for different reasons.
`Pet. 6. Under the circumstances of this case, we determine that the present
`Petition does not present “the same or substantially the same prior art or
`arguments” as presented in IPR2016-00596. Accordingly, we do not deny
`the Petition under § 325(d). 1
`D. Alleged Obviousness over Thomson, Ellsworth, and Yost
`1. Overview of 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
`
`
`1 Patent Owner also argues that the Petition should be denied as “multiple
`bites at the invalidity apple” that purportedly uses our institution decision
`from the -596 IPR as a “roadmap.” Prelim. Resp. 13–19. We are not
`persuaded that a second petition on the same patent should be denied in the
`absence of sufficient evidence that it presents the same or substantially the
`same prior art or arguments as presented in the initial petition. See
`35 U.S.C. § 325(d).
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`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,
`labeled “Open Position,” the sliding sleeve having been motivated by a ball
`into an open position uncovering the fluid ports.
`2. Overview of 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.
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`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. at 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
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`provide a long-term solution to open hole isolation without the aid of
`cemented liners.” Id.
`3. Overview of Yost
`Yost discloses a U.S. Department of Energy sponsored stimulation
`test of a horizontal wellbore in the Devonian shales of Wayne County, West
`Virginia. Ex. 1002, 2.2 In the test, a casing string with 14 sliding sleeve
`ported collars was inserted into a horizontal uncased wellbore. Id. The
`casing string included eight external casing packers (“ECP’s”) providing
`eight separate open hole zones along the length of the casing string. Id.
`Apparently, 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, below.
`
`Figure 2 of Yost, above, depicts the casing string 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.
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`2 We refer to Rapid’s annotated page numbers applied to the Yost reference.
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`The test included 24-hour pressure build-up in each of the seven
`isolated zones along a 2,221-foot length of the horizontal wellbore, 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
`reflected in the increase in flow rates and a decrease in skin factor values.”
`Id. at 5.
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`4. Discussion
`Petitioner asserts Thomson discloses a multistage fracturing method
`that differs from claim 23 and 27 only in that Thomson’s fracturing happens
`in a cased well, rather than an open hole well. Pet. 27. Petitioner asserts
`that Thomson teaches each of the limitations of independent claims 19 and
`24. Pet. 28–53. Petitioner provides an annotated and modified version of
`Thomson’s Figure 3, which is reproduced below. Id. at 30.
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`Petitioner’s annotated and modified version of Thomson’s Figure 3 shows
`Thomson’s components that Petitioner asserts correspond to the tubing
`string, ports, sliding sleeves, and packers recited in independent claims 19
`and 24. Id. at 30. In connection with the ports and sleeves recited in the
`claims, Petitioner cites Thomson’s MSAF tools. See, e.g., id. at 39–41, 49–
`50. In connection with the sleeve shifting means recited in the claims,
`Petitioner cites Thomson’s disclosure of actuating the MSAF tools with a
`ball. See, e.g.. id. at 41–42. Petitioner also asserts that Thomson teaches
`each of the packers recited in the claims. Id. at 31–36, 49. Petitioner also
`asserts that Ellsworth teaches a solid body packer (id. at 36–39), and that
`“[e]ven if the retrievable packers of Thomson were not solid body packers, it
`would have been obvious to substitute the solid body packers of Ellsworth
`for the retrievable packers of Thomson” (id. at 55).
`With respect to the “open hole” recitation in claims 23 and 27,
`Petitioner asserts that it would have been obvious in view of Ellsworth and
`Yost to use Thomson’s system in an open hole wellbore. Id. at 53–58. In
`view of Ellsworth and Yost, Petitioner contends that a person of ordinary
`skill in the art “who would have been familiar with open hole fracturing,
`would have been motivated to use Thomson’s system, including its solid
`body retrievable packers, without casing to minimize the time and expense
`of completing a well.” Id. at 54. Petitioner asserts that the knowledge in the
`art and the disclosures of the references would have made it straightforward
`for a person of ordinary skill in the art to use Thomson’s system in an open
`hole well, producing nothing more than predictable results. Id. at 55. In
`view of Yost and Ellsworth, Petitioner asserts that using Thomson’s system
`in an open hole wellbore constitutes applying known fracturing techniques
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`to Thomson’s known device “ready for improvement” to generate
`predictable results. Id. at 57. Additionally Petitioner advances that it would
`have been obvious to try using Thomson’s system in an open hole. Id.
`Petitioner asserts that this “represented a choice from a finite number of
`defined predictable solutions for zonal isolation in open hole with more than
`a reasonable expectation of success according to Ellsworth and Yost, as well
`as Patent Owner’s experts/inventor and Dr. Rao.” Id. (citing Ex. 1007 ¶ 79).
`Based on Petitioner’s evidence and arguments, we determine there is a
`reasonable likelihood of Petitioner demonstrating that claims 23 and 27
`would have been obvious in view of Thomson, Ellsworth, and Yost. On this
`record, Patent Owner’s counterarguments do not persuade us otherwise.
`Patent Owner argues that Petitioner has not demonstrated that a
`person of ordinary skill in the art would have had motivation “to modify
`Thomson to pump wellbore treatment fluid through open hole annular
`segments.” Prelim. Resp. 33. Patent Owner asserts that Petitioner attempts
`to demonstrate such motivation “by vaguely asserting that a person of
`ordinary skill in the art
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