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
`Petitioners
`
`v.
`
`PACKERS PLUS ENERGY SERVICES, INC.,
`
`Patent Owner
`
`_
`
`Inter Partes Review
`of U.S. Patent 7,134,505
`_
`
`EXHIBIT 1007
`DECLARATION OF VIKRAM RAO
`
`1
`
`
`
`_
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`WEATHERFORD INTERNATIONAL, LLC;
`WEATHERFORD/LAMB, INC.;
`WEATHERFORD US, LP; and WEATHERFORD
`ARTIFICIAL LIFT SYSTEMS, LLC
`Petitioners
`
`v.
`
`PACKERS PLUS ENERGY SERVICES, INC.,
`
`Patent Owner
`
`_
`
`Inter Partes Review
`of U.S. Patent 7,134,505
`_
`
`EXHIBIT 1007
`DECLARATION OF VIKRAM RAO
`
`1
`
`
`
`1.
`
`My name is Vikram Rao.
`
`I am over the age of twenty-one years, of
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`sound mind, and capable of making the statements set forth in this Declaration. I am
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`competent to testify about the matters set forth herein. All the facts and statements
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`contained herein are within my personal knowledge and/or within my field of
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`expertise, and they are true and correct to the best of my knowledge.
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`2.
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`I have been asked by Edell, Shapiro & Finnan LLC to form and offer
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`opinions regarding validity of U.S. Patent No. 7,134,505 (the “’505 Patent”). This
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`Declaration contains a summary of and the supporting explanations for my opinions
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`concerning the validity of the ’505 Patent.
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`3.
`
`I have been advised that Edell, Shapiro & Finnan LLC represents
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`Weatherford International, LLC; Weatherford/Lamb, Inc.; Weatherford US, LP; and
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`Weatherford Artificial Lift Systems, LLC (“Weatherford” or “Petitioner”) in this
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`matter and that Packers Plus Energy Services, Inc. (“Packers Plus” or “Patent
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`Owner”) owns the ’505 Patent.
`
`I have no personal or financial stake or interest in
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`Weatherford, Packers Plus, or the ’505 Patent.
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`I. Education and Experience
`My curriculum vitae (“CV”) is attached as Appendix A.
`
`4.
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`5.
`
`I have extensive experience in the oil and gas industry. I have worked
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`in the oil and gas industry for almost 40 years.
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`I have numerous patents in the
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`industry including several relevant to the technology at issue in this inter partes
`
`2
`
`
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`review. I have authored numerous articles and books in the oil and gas industry and
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`have held several significant positions in the industry. I am an expert in well drilling
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`and completions technology, including fracturing stimulation of wells.
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`6.
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`My education includes a Bachelor of Technology degree in Metallurgy
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`from the Indian Institute of Technology, Madras, which I received in May 1965.
`
`I
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`next obtained a Master of Science degree in Materials Science and Engineering from
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`Stanford University in June 1967. Finally, I received a PhD in Materials Science and
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`Engineering from Stanford University in January 1972.
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`7.
`
`After receiving my PhD, I worked as a post-doctoral fellow at Stanford
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`from 1971-1974 to facilitate continued part time involvement as Consulting Scientist
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`for a start-up company Parlee-Anderson Corporation. I also obtained a competitive
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`research grant from the National Science Foundation.
`
`8.
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`After leaving Stanford in 1974, I joined the central research laboratory
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`of NL Industries, a conglomerate spanning metals, chemicals, and petroleum
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`industries.
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`I was with NL Industries until 1979.
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`In that five-year span, I held
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`positions of
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`increasing responsibility, culminating in Director, Research and
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`Development of the Metal Division, a unit with about $400 million in sales. I was
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`awarded 4 U.S. patents, two of which (4,158,563 and 4,159,908) were employed in
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`commercial sales of battery grid alloys while I was still there. NL Industries
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`employed another of my innovations for improving production rates of lead blast
`
`3
`
`
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`furnaces with steam and oxygen injection but did not patent it.
`
`9.
`
`From 1979 through 1984, I worked for the petroleum sector of NL
`
`Industries to join a new venture, Drilling Systems Technology (DST). This unique
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`unit had a mix of industry and non-industry scientists and engineers dedicated to the
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`invention of disruptive technologies for the oil and gas business. In those five years,
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`we created innovations for a technology offering that came to be known as
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`Measurement While Drilling (MWD). These innovations in the main comprised
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`complex downhole operating devices and the recovery of the information at the
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`surface as recordings as well as in real time, including an Electro-magnetic Wave
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`Resistivity (EWR) sensor that helped facilitate a practice known as Logging While
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`Drilling (LWD).
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`10. My role in this endeavor at NL Industries commenced as Chief
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`Metallurgist in February, 1979. Within months an added role was provided of
`
`leading the real time telemetry effort. I was later appointed as Program Manager for
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`the complete real time system including the sensors. During this period, I was
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`awarded 3 U.S. patents,
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`two of which were employed in commercial service
`
`(4,613,443 and 4,790,393). The ’393 Patent is for a downhole gate valve releasing
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`fluid from the interior of the tool to the annulus, similar in concept to the sliding
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`sleeve valves in open hole in the present inter partes review.
`
`11.
`
`From 1984 through 1988, I moved to the Sperry Sun operating division,
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`4
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`
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`which had been acquired by NL Industries shortly prior as a vehicle for launching the
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`fledgling MWD service. I was appointed Director, MWD Products, responsible for
`
`commercial
`
`launch of DST’s innovations. The position entailed all facets of
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`commercial launch, including sales, marketing, and field operations, both domestic
`
`and international.
`
`12.
`
`From 1988 through 1998, I worked for Baroid Corporation, a spin-off of
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`NL’s petroleum businesses. Sperry Sun, a division, expanded to develop steerable
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`systems, which, in conjunction with MWD, was a key enabler of horizontal drilling.
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`Horizontal boreholes are the backbone of the industry today and their attributes are
`
`relevant to the issues pertaining to this inter partes review. During this period, I was
`
`variously Vice President of R&D or Business Development, both with worldwide
`
`scope. Baroid Corporation was acquired by Dresser Industries in 1994, and I
`
`continued in the roles described above.
`
`13. Dresser Industries merged with Halliburton Company late in 1998.
`
`I
`
`was given the dual role of leading the Integrated Technology Products (ITP) and
`
`Reservoir groups. The latter comprised primarily reservoir engineers to support
`
`reservoir based decisions of the Integrated Services offering, which ran oil and gas
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`operations on a risk/reward basis. The position was that of Vice President.
`
`I
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`assumed also the portfolio of the ventures group, which made strategic investments
`
`in innovative startups, some of which were then purchased.
`
`5
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`
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`14. Over time I took over the entire R&D portfolio of the company, with
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`titles such as Vice President, Senior Vice President and Chief Technology Officer,
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`which was my title at the time I took early retirement in April 2008 to follow my
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`wife to Chapel Hill, North Carolina, where I am today.
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`In this latter period of my
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`Halliburton tenure, I set up the Intellectual Asset Management system.
`
`15.
`
`I am very familiar with the patenting process in the United States.
`
`I
`
`have about 40 U.S. patents and foreign analogs. They are listed in my CV. A
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`selection is shown below as being pertinent to the current dispute.
`
`• 8,047,289 Methods of using particulates in subterranean operations
`
`(involves improved proppants for use in hydraulic fracturing)
`
`•
`
`7,871,702 Particulates comprising silica and alumina, and methods of
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`utilizing these particulates in subterranean applications
`
`(involves
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`improved proppants)
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`7,334,649 Drilling with casing
`
`7,225,879 Method and apparatus for a monodiameter wellbore,
`
`•
`
`•
`
`monodiameter casing, monobore, and/or monowell
`
`•
`
`7,213,643 Expanded liner system and method
`
`• 7,121,352 Isolation of subterranean zones (involves swellable packer)
`
`•
`
`7,066,284 Method and apparatus for a monodiameter wellbore,
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`monodiameter casing, monobore, and/or monowell
`
`6
`
`
`
`•
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`7,066,271 Expanded downhole screen systems and method (involves
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`method for drilling more uniform well bore to allow better sealing
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`against formation)
`
`•
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`7,040,404 Methods and compositions for sealing an expandable
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`tubular in a wellbore (involves sealing in an open hole)
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`• 6,877,570 Drilling with casing
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`• 4,790,393 Valve for drilling fluid telemetry systems (uses a downhole
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`actuated gate valve)
`
`16.
`
`I also served various terms as a Director of GMI International Inc.,
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`Enventure Global Technologies Inc., Prime Photonics Inc., Fiberspar Inc. and
`
`WellDynamics BV.
`
`I also served as an Independent Director of Opal Energy
`
`Corporation from February 27, 2008 to October 1, 2008.
`
`17.
`
`From 2008 to the present, I have served as Executive Director for
`
`Research Triangle Energy Consortium, a non-profit organization working in the
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`energy sector.
`
`I have also served as a Member of the North Carolina Mining and
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`Energy Commission, including serving as Chairman from 2014 to 2015. I was also a
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`Director of Intelligent Wells Company Ltd. until the company was sold.
`
`18.
`
`I have published numerous articles and have also authored two books,
`
`Shale Gas: the Promise and the Peril, which was released in 2012 by RTI Press
`
`(http://www.rti.org/shalegasbook) and The Revised Edition, Shale Oil and Gas: the
`
`7
`
`
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`Promise and the Peril, which was released on August 8, 2015 also by RTI Press
`
`(http://www.rti.org/shaleoilandgas).
`
`I have a forthcoming book with Prof. Rob
`
`Knight entitled Sustainable Shale Oil and Gas: Analytical Chemistry, Geochemistry
`
`and Biochemistry Methods, scheduled to be published by Elsevier Press later this
`
`year.
`
`19.
`
`I have also served as an advisor or consultant for various periods of
`
`time, including for the following companies: RTI International as an advisor to the
`
`COO, BioLargo Inc., Biota Technologies Inc. as acting Chief Technology Officer,
`
`Eastman Chemicals Company, Energy Ventures, AS, and Global Energy Talent Ltd.
`
`I previously served as an advisor or consultant to Global Resources Corp. as Chief
`
`Scientist, KaDa Research Inc., PointCross Inc., and Royal Dutch Shell as a member
`
`of the Science Council.
`
`II. Compensation
`
`20.
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`I am being compensated at the rate of $400 per hour for my time
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`working on this case and am being reimbursed for reasonable expenses incurred in
`
`providing my services in this case. My compensation is not dependent upon my
`
`testimony or the outcome of the case.
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`III. Materials Considered
`
`21.
`
`In forming the opinions expressed below, I considered the ’505 Patent
`
`and its file history, including the file histories of all patent applications and issued
`
`8
`
`
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`patents in the ’505 Patent family listed in Section IV below, as well as the prior art
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`references and related documentation discussed herein. I have also relied upon my
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`education, background, and experience.
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`IV.
`
`Summary of Opinions
`
`22. Based on my investigation and analysis, and for the reasons set forth
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`below, it is my opinion that all of the elements recited in Claims 23 and 27 of the
`
`’505 Patent are disclosed in the prior art references and that those claims would have
`
`been obvious in view of those references. In particular, I have relied primarily on the
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`following prior art references identified below in support of my opinions:
`
`(1) A.B. Yost, II, et al. Production and Stimulation Analysis of Multiple
`
`Hydraulic Fracturing of a 2,000-ft Horizontal Well, SPE (Society for
`
`Petroleum Engineering) 19090 (1989) (“Yost”) (Ex. 1002)
`
`(2) D.W. Thomson, et al., Design and Installation of a Cost-Effective
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`Completion System for Horizontal Chalk Wells Where Multiple
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`Zones Require Acid Stimulation, SPE (Society for Petroleum
`
`Engineering) 37482 (1997) (“Thomson”) (Ex. 1003)
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`(3) B. Ellsworth, et al., Production Control of Horizontal Wells in a
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`Carbonate Reef Structure, 1999 Canadian Institute of Mining,
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`Metallurgy,
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`and
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`Petroleum Horizontal Well
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`Conference
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`(“Ellsworth”) (Ex. 1004)
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`9
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`
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`(4) U.S. Patent No. 3,062,291 to Brown (“Brown”), issued November 6,
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`1962 (Ex. 1016)
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`(5) U.S. Patent No. 2,738,013 to Lynes (“Lynes”), issued March 13,
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`1956 (Ex. 1017)
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`(6) U.S. Patent No. 4,224,987 to Allen (“Allen”), issued September 30,
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`1980 (Ex. 1018)
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`(7) U.S. Patent No. 6,006,838 to Whitely et al. (“Whiteley”), issued on
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`December 28, 1999 (Ex. 1019)
`
`(8) “Reliable Zone Isolation in Horizontal Open Holes,” Hart’s
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`Petroleum Engineer International, Vol. 71, No. 6, p. 13 (June 1998)
`
`(Ex. 1025)
`
`23. Besides the above documents, I have also considered the following
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`references in preparing my declaration:
`
`(1) Prosecution History of U.S. Patent No. 7,861,774 (Ex. 1020);
`
`(2) Prosecution History of U.S. Patent No. 7,543,634 (Ex. 1021);
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`(3) Prosecution History of U.S. Patent No. 7,134,505 (Ex. 1022);
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`(4) Prosecution History of U.S. Patent No. 6,907,936 (Ex. 1023);
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`(5) U.S. Provisional Patent Application No. 60/404,783 filed on August
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`21, 2002 (Ex. 1015); and
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`(6) U.S. Provisional Patent Application No. 60/331,491 filed on
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`10
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`
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`November 19, 2001 (Ex. 1024).
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`24. All of the cited references are relevant to the subject matter of the ’505
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`Patent because they are (1) from the same field of endeavor as the claimed invention
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`and/or (2) reasonably pertinent to the problem faced by the inventors. The bases for
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`my opinion are set forth in greater detail below.
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`V. Legal Standards
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`25.
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`I am not an attorney.
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`I have been advised of the following general
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`principles of patent law to be used in formulating my opinions presented in this
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`Declaration.
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`26.
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`I understand that determining whether a patent claim is valid requires a
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`two-step analysis.
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`First,
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`the claim must be construed.
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`Second,
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`the properly
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`construed claim must be compared to the prior art.
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`27. With respect to the first step, I understand that claims are construed
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`from the perspective of a person of ordinary skill in the art at the time of the
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`purported invention.
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`I understand that in the context of an inter partes review
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`proceeding, claim terms are given their broadest reasonable interpretation in view of
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`the specification and file history. I also understand that in a district court litigation,
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`claim terms are given their plain and ordinary meaning in view of the specification
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`and file history. In my analysis, I have identified several terms for which I offer an
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`opinion on the construction of a particular term. For all other terms, I have applied
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`11
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`
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`what I consider to be the broadest reasonable interpretation of those terms to one of
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`ordinary skill in the art at the time of the purported invention, which I understand to
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`be on or about November 19, 2001. For purposes of this proceeding and except
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`where expressly noted, I do not believe the broadest reasonable interpretation of the
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`claim terms at issue is materially different from the plain and ordinary meaning of
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`those terms as it pertains to applying the prior art at issue in this case.
`
`28.
`
`I understand that a patent claim is presumed to be valid.
`
`I understand
`
`that to overcome that presumption, the challenger must show that the claim is invalid
`
`by a preponderance of the evidence. I understand the preponderance of the evidence
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`to require a slight advantage in weight of evidence in favor of the challenger.
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`29.
`
`I understand that although not expressly disclosed subject matter may be
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`inherently disclosed in a prior art reference where that subject matter is necessarily
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`present in the subject matter disclosed and would be understood to be so by those of
`
`ordinary skill
`
`in the art.
`
`I understand that
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`the fact
`
`that a certain result or
`
`characteristic may occur or be present in the prior art is not sufficient to establish the
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`inherency of that result or characteristic.
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`30.
`
`I understand that a claim is anticipated under 35 U.S.C. § 102 when a
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`single prior art reference or product discloses or contains, expressly or inherently,
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`every limitation of the claimed invention.
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`31.
`
`I understand that a claim would have been obvious under 35 U.S.C.
`
`12
`
`
`
`§ 103 if one or more prior art references in combination with the knowledge of one
`
`of ordinary skill in the art disclose, expressly or inherently, every claim limitation so
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`as to render the claim, as a whole, obvious to a person of ordinary skill in the art at
`
`the time the purported invention was made. The relevant standard for obviousness is
`
`as follows:
`
`A patent may not be obtained though the invention is not
`identically disclosed or described as set forth in section 102 of this title,
`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 made to a person having ordinary
`skill in the art to which said subject matter pertains. Patentability shall
`not be negative by the manner in which the invention was made.
`35 U.S.C. § 103.
`32.
`In determining whether or not a patented invention would have been
`
`obvious, the following factors should be considered: (a) the scope and content of the
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`prior art; (b) the differences between the prior art and the claims at issue; (c) the level
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`of ordinary skill in the art; and (d) whatever “secondary considerations” may be
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`present.
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`33.
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`I understand that certain “secondary considerations” may be relevant in
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`determining whether or not an invention would have been obvious, and that these
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`secondary considerations may include commercial success of a product using the
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`invention, if that commercial success is due to the invention; long-felt need for the
`
`13
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`
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`invention; evidence of copying of the claimed invention; industry acceptance; initial
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`skepticism; failure of others; praise of the invention; and the taking of licenses under
`
`the patents by others.
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`34.
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`I understand that a patent composed of several elements is not proved
`
`obvious merely by demonstrating that each of its elements was, independently,
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`known in the prior art. While multiple prior art references or elements may, in some
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`circumstances, be combined to render a patent claim obvious, I understand that I
`
`should consider whether there is an “apparent reason” to combine the prior art
`
`references or elements in the way the patent claims. To determine whether such an
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`“apparent reason” exists to combine the prior art references or elements in the way a
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`patent claims, it will often be necessary to look to the interrelated teaching of
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`multiple patents, to the effects of demands known to the design community or
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`present in the marketplace, and to the background knowledge possessed by a person
`
`having ordinary skill in the art. I understand that in considering the apparent reason
`
`in the obviousness analysis, the problem examined is not the specific problem solved
`
`by the invention. I understand that the question to be answered in an obviousness
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`inquiry is whether the prior art, not the patent at issue, would motivate a person of
`
`skill in the art to make the claimed invention.
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`35.
`
`I also understand that when the prior art “teaches away” from
`
`combining prior art references or certain known elements, discovery of a successful
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`14
`
`
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`means of combining them is more likely to be non-obvious. A prior art reference
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`may be said to “teach away” from a patent when a person of ordinary skill, upon
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`reading the reference, would be discouraged from following the path set out in the
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`patent or would be led in a direction divergent from the path that was taken by the
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`patent. Additionally, a prior art reference may “teach away” from a claimed
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`invention when substituting an element within that prior art reference for a claim
`
`element would render the claimed invention inoperable.
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`36.
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`I also understand that it is not permissible to use hindsight in assessing
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`whether a claimed invention is obvious. Rather, I understand that,
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`to assess
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`obviousness, you must place yourself in the shoes of a person having ordinary skill
`
`in the relevant field of technology at the time the inventions were made who is trying
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`to address the issues or solve the problems faced by the inventor and ignore the
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`knowledge you currently now have of the inventions.
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`37.
`
`I also understand that there are numerous ways in which to articulate the
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`legal standard for obviousness, including: (1) combining prior art elements according
`
`to known methods to yield predictable results, (2) simple substitution of one known
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`element for another to obtain predictable results, (3) use of a known technique to
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`improve similar devices (methods, or products) in the same way, (4) applying a
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`known technique to a known device, method, or product ready for improvement to
`
`yield predictable results, (5) choosing from a finite number of identified, predictable
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`15
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`
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`solutions with a reasonable expectation of success, (6) known work in one field of
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`endeavor may prompt variations of it for use in either the same field or a different
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`one based on design incentives or other market forces if the variations are predictable
`
`to one of ordinary skill in the art, and (7) some teaching, suggestion, or motivation in
`
`the prior art that would have led one of ordinary skill to modify the prior art
`
`reference or to combine prior art reference teachings to arrive at
`
`the claimed
`
`invention.
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`VI. Relevant Field and Person of Ordinary Skill in the Art
`
`38.
`
`I understand that the meaning of claim terms and a patents’ validity is to
`
`be determined from the vantage point of one of ordinary skill in the art at the time of
`
`the invention. In determining who would be one of such ordinary skill, I understand
`
`it is appropriate to consider criteria such as: (a) the type of problems encountered in
`
`the art; (b) prior art solutions to those problems; (c) the rapidity with which
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`innovations are made; (d) the sophistication of the technology; and (e) the education
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`level of active workers in the field.
`
`39.
`
`In my opinion, the field relevant to the claims of the ’505 Patent is oil
`
`and gas well technology, particularly in the context of oil and gas well drilling and
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`completion. From analyzing the ’505 Patent and the relevant prior art, it is my
`
`opinion that a person of ordinary skill in the art for the ‘505 Patent at the time of the
`
`purported invention of the ’505 Patent would have been a person with a bachelor of
`
`16
`
`
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`science degree in mechanical or petroleum engineering or a similar technical
`
`discipline, such as metallurgy or material science and engineering, with at least three
`
`years of experience in oil or gas well drilling and completion operations or in
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`technical support of such operations. Also, in my opinion, additional education in a
`
`relevant technical discipline can compensate for less experience in the relevant field
`
`and vice versa. Throughout this declaration I refer to persons of ordinary skill in the
`
`art. When I do, unless I specify otherwise, I am referring to a person of ordinary
`
`skill in the art at the time of the purported invention of the ’505 Patent, which I
`
`understand to be November 19, 2001.
`
`VII.
`
`Invalidity of Claims 23 and 27 of the ’505 Patent
`
`A. Review of the State of the Art
`1. Well Drilling
`
`40. Drilling a well generally includes drilling a hole to construct a wellbore
`
`in a geological formation with oil or gas reserves. The wellbore may be lined with
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`tubing that is cemented in place, sometimes referred to as “casing,” to protect the
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`wellbore during production operations. See, e.g., Ex. 1001 at 1:27-29; Ex. 1003. In
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`some circumstances, however, a wellbore may be left uncased (referred to as an
`
`“open hole”)
`
`to expose porosity and permit unrestricted wellbore inflow of
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`petroleum products. See, e.g., Ex. 1001 at 1:24-27; Ex. 1002; Ex. 1004.
`
`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
`17
`
`
`
`wellbore. See, e.g., Ex. 1001 at 1:27-29; Ex. 1003 at 3. Whether there is a cemented
`
`casing or not, a tubing string is normally run into the wellbore to deliver tools, inject
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`fluids, and/or provide a conduit for production. See, e.g., Ex. 1001 at 1:38-43, 58-
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`60; Ex. 1002; Ex. 1003; Ex. 1004.
`
`2. Completion
`
`41.
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`After drilling a well,
`
`it needs to be completed (e.g.,
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`through a
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`stimulation treatment) before production. Stimulation typically involves pumping
`
`acid or other fluids into a wellbore under pressure. See, e.g., Ex. 1001 at 1:30-34;
`
`Ex. 1002; Ex. 1003; Ex. 1004. Certain stimulation fluids are injected into the
`
`wellbore under pressure to treat the wellbore or to open or create fractures. Ex. 1001
`
`at 1:30-34.
`
`3. Overview of the Prior Art
`
`42. Hydraulic fracturing has been used for over 60 years to treat wellbores
`
`in producing formations in an effort to open up very low porosity rock formations to
`
`better flow of oil and/or gas production into the wellbore. Early efforts at fracturing
`
`were from vertical boreholes, but at least as early as 1969, the value of multiple
`
`hydraulic fracturing from an inclined or horizontal borehole was recognized. See,
`
`e.g., Ex. 1002 at 1.
`
`i. Yost (1989)
`
`43. Yost, published in 1989, notes that fracturing as a form of wellbore fluid
`
`treatment in horizontal wells has been used for decades: “The value of high angle
`18
`
`
`
`drilling and multiple hydraulic fracturing from an inclined or horizontal borehole for
`
`maximizing production was recognized in 1969.” Ex. 1002 at 1. Yost specifically
`
`describes multi-stage open hole fracturing of horizontal wells using packers for zonal
`
`isolation and ported sliding sleeves for injecting fracturing fluids:
`
`An alternative approach is zone isolation accomplished by the
`installation of external casing packers and port collars as an integral
`part of a casing string in the horizontal section. Such a completion
`arrangement
`provided
`stimulation
`intervals with
`ready-made
`perforations for injecting fracturing fluids in an open hole fracturing
`condition behind pipe. This was the method of completion used in this
`2000 foot horizontal well to avoid the problems of formation damage
`associated with cementing and to eliminate the need for tubing-
`conveyed perforating of numerous treatment intervals.
`
`Ex. 1002 at 1 (emphasis added); see also id. at 2 (referencing “sliding sleeve ported
`
`collars” between packers). The packers in Yost, referred to as external casing
`
`packers (ECPs), were inflatable. Ex. 1002 at 2.
`
`44. Figure 2 from Yost showing the sliding sleeve ports and packers that
`
`isolate the different zones is reproduced below. Yost notes that this configuration
`
`created seven “separate open hole zones” (because one of the eight packers failed to
`
`inflate). Ex. 1002 at 2. According to Yost, “[a] combination straddle tool was
`
`designed to facilitate the opening and closing of port collars” in the seven separate
`
`open hole zones. Id. In the open position, the sliding sleeve ported collars provided
`
`19
`
`
`
`“ready-made perforations” (i.e., ports) that were used to inject fracturing fluids into
`
`the wellbore. Id. at 1-2. Yost also presents empirical results showing that the sliding
`
`sleeve ported collars and packers were effective in achieving isolation between the
`
`seven separate open hole zones in the horizontal open hole wellbore. Ex. 1002 at 9
`
`(Table 7) and 11 (Figure 4).
`
`45.
`
`Thus, at least as early as 1989, it was known that horizontal open hole
`
`wells could be isolated and fractured with packers and ports between the packers for
`
`injection of fracturing fluids. Although the packers and ports employed in these
`
`operations have varied a bit over the years, the same basic idea of zonal isolation in
`
`horizontal open hole wells for fracturing using packers and ports between the packers
`
`is in use today.
`
`ii. Ellsworth (1999)
`
`46. Although Yost used inflatable packers to isolate the horizontal open
`
`wellbore into zones for stimulation wellbore fluid treatment, other types of open hole
`
`packers were known for this purpose. Hydraulically-set solid body packers (SBPs)
`20
`
`
`
`were also commercially available for use as open hole isolation packers for
`
`performing stimulation work. A paper published in 1999 and authored by Bill
`
`Ellsworth and others, including Dan Themig, an inventor on the ’505 Patent, entitled
`
`“Production Control of Horizontal Wells in a Carbonate Reef Structure” (Ellsworth)
`
`describes the use of solid body packers and sliding sleeves for production control and
`
`stimulation in horizontal open hole wells:
`
`inflatable packers were used for water shut-off,
`Historically,
`stimulation and segment testing. More recently, solid body packers
`(SBP’s) (see Figure 4) have been used to establish open hole isolation.
`These tools provide a mechanical packing element that is hydraulically
`activated. The objective of using this type of tool is to provide a long-
`term solution to open hole isolation without the aid of cemented liners.
`Although the expansion ratios for these packers are [sic: 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. Effective isolation in open hole greatly increases the capability
`to incorporate horizontal wells into the producing strategy for the
`Rainbow Lake field.
`
`Ex. 1004 at 5. Figure 4 from Ellsworth is reproduced below. It specifically states,
`
`“The solid body packer is hydraulic set instead of inflatable (Guiberson/Halliburton
`
`Wizard II packer shown).” Ex. 1004 at 5. Figure 4 also indicates that the Wizard II
`
`packer includes a “setting cylinder,” a “setting shear,” a “mandrel lock,” a “five
`
`piece packing element,” and a “shear release.”
`
`Id. Ellsworth taught that these
`
`21
`
`
`
`Wizard packers could be used for stimulation purposes as well. Ex. 1004 at 8 (“The
`
`initial acid job using SBP’s indicated that the tools successfully provided isolation
`
`during the job.”), 10 (“Lateral #2 was produced with oil cuts of 35-50%. The leg
`
`was then acidized through the tubing string, and swabbed back.”). Ellsworth teaches
`
`that solid body packers can be used successfully instead of inflatable packers for
`
`open hole isolation and stimulation, thereby solving open hole isolation problems
`
`without the use of cemented casing. Ex. 1004 at 10 (“The goal of cost effective use
`
`of horizontals can be enhanced with the ability to segment, and control production
`
`without the need to run and cement liners.”); 11 (“SBPs have successfully provided
`
`zonal isolation.”).
`
`22
`
`
`
`47.
`
`Ellsworth provides four case histories involving the use of solid body
`
`packers in conjunction with sliding sleeves to provide zonal isolation and access for
`
`production control and stimulation. The case histories are shown complete with
`
`figures depicting the tubing strings in which the packers and sliding sleeves are
`
`alternating on the tubing string to isolate specific zones in the formations
`
`encompassing the wellbores. Figure 11 (reproduced below) is exemplary and shows
`
`the configuration for Case History #4 described in Ellsworth.
`
`23
`
`
`
`48.
`
`Ellsworth also taught the use of sliding sleeves to access the isolated
`
`zones between packers: “Between the sets of packers was a 73mm (2-7/8”) sliding
`
`sleeve.” Ex. 1004 at 5; see also id. at 7 (“A sliding sleeve was installed between the
`
`isolation points to allow an inflow point for the middle well interval. A second
`
`sliding sleeve was run below the cased hole packer to provide access to production
`
`from the heel of the well.”), 9 (“A sliding sleeve was run below the cased hole
`
`packer to provide access to production from either lateral #1 or lateral #2 (the newly
`
`drilled lateral). This sleeve was run in the vertical portion of the well so that it would
`
`be serviceable via wireline.”), 10 (“The build section of the well was segmented into
`
`two separate intervals using two SBP’s. These were separately spaced using tubing
`
`joints and pups and included sliding sleeves to permit flow tests to confirm isolation
`
`within the build section.”).
`
`24
`
`
`
`49.
`
`Two of the case histories, Case History #2 and Case History #4,
`
`describe the use of the same apparatus for acid stimulation. For example, Ellsworth
`
`states with respect to Case History #2, “Prior to running the production assembly,
`
`SBP’s were run to acidize the toe of the well.” Ex. 1004 at 7. Ellsworth then
`
`observes, “[t]he initial acid job using SBP’s indicated that the tools successfully
`
`provided isolation during the job.” Ex. 1004 at 8. With respect to Case History #4,
`
`Ellsworth states, “[t]ateral #2 was produced with oil cuts of 35-50%. The leg was
`
`then acidized through the tubing string, and swabbed back.” Ex. 1004 at 10. Thus,
`
`Ellsworth demonstrated acidizing, which is a type of wellbore fluid treatment, in
`
`selected zones using solid body packers and sliding sleeves in horizontal open hole
`
`wells.
`
`50.
`
`Thus, in the late 1990s, the prior art taught that horizontal open hole
`
`fracturing stimulation was viable when using zonal isolation. It taught that inflatable
`
`packers could be used but th
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