Paper No. 1
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BAKER HUGHES INCORPORATED
`AND
`BAKER HUGHES OILFIELD OPERATIONS, INC.,
`
`PETITIONERS
`
`V.
`
`
`
`
`
`PACKERS PLUS ENERGY SERVICES, INC.,
`
`PATENT OWNER
`
`______________
`
`Inter Partes Review No. IPR2017-00247
`Patent 9,303,501
`______________
`
`
`
`PETITION FOR INTER PARTES REVIEW UNDER 35 U.S.C. § 312
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`27640493.1
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`IPR2017-00247
`Patent 9,303,501
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`TABLE OF CONTENTS
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`V.
`
`INTRODUCTION .......................................................................................... 1
`I.
`II. MANDATORY NOTICES ............................................................................ 2
`A.
`Real Party in Interest (37 C.F.R. § 42.8(b)(1)) .................................... 2
`B.
`Related Matters (37 C.F.R. § 42.8(b)(2)) ............................................. 2
`C.
`Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3)) .......................... 4
`D.
`Service Information (37 C.F.R. § 42.8(b)(4)) ...................................... 4
`III. GROUNDS FOR STANDING ....................................................................... 4
`IV. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED ............................................................................... 5
`A.
`Claims for Which Review Is Requested (37 C.F.R. §
`42.104(b)(1)) ........................................................................................ 5
`Statutory Grounds of Challenge (37 C.F.R. § 42.104(b)(2)) ............... 5
`B.
`FIELD OF TECHNOLOGY .......................................................................... 7
`A. Drilling an Oil Well .............................................................................. 7
`B. Well Stimulation and Selective Fluid Treatment ................................. 8
`C.
`Packers ................................................................................................ 12
`D.
`Plugs ................................................................................................... 14
`VI. LEVEL OF ORDINARY SKILL IN THE ART .......................................... 16
`VII. THE ’501 PATENT ...................................................................................... 20
`A. Admitted Prior Art and Perceived Shortcomings .............................. 20
`B.
`The ’501 Patent’s Asserted Improvement to the Prior Art ................ 21
`C.
`Claim Construction (37 C.F.R. § 42.104(b)(3)) ................................. 27
`“solid body packer” (claim 1) .................................................. 28
` 1.
`
`“fracturing fluid” (claim 1) ...................................................... 29
`
` 2.
`“piston” (claims 4-6) ................................................................ 29
`
` 3.
`“sleeve” (claim 1) ..................................................................... 30
`
` 4.
`VIII. REASONS FOR THE RELIEF REQUESTED UNDER 37 C.F.R.
`§§ 42.22(A)(2) AND 42.104(B)(4) .............................................................. 30
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`IPR2017-00247
`Patent 9,303,501
`A. Ground 1 – Obvious over Lane-Wells, Ellsworth, Thomson,
`and Halliburton ................................................................................... 30
`Lane-Wells discloses a three-zone acidizing system for an
` 1.
`
`open hole that uses two ball-actuated sliding sleeves
`and three packers ...................................................................... 30
`It was obvious to use Ellsworth’s solid body packer in the
`Lane-Wells System because it had already been successfully
`used for the same purpose: open hole acidizing in a multi-
`zone system ................................................................................ 35
`Other, independent reasons motivated using Ellsworth’s solid
`body packer in the Lane-Wells System ..................................... 38
`Halliburton’s Pump Open Plug included a sliding sleeve that
`could be hydraulically actuated to expose
`ports for treatment .................................................................... 39
`It would have been logical to use Halliburton’s Pump Open
`Plug in the Lane-Wells System to set the packers and provide
`an additional frac’ing zone ....................................................... 41
`Lane-Wells, Ellsworth, Thomson, and Halliburton render
`claims 1-9 obvious .................................................................... 47
`IX. CONCLUSION ............................................................................................. 69
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` 4.
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`Petitioner’s Exhibit List
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`IPR2017-00247
`Patent 9,303,501
`
`1003
`
`Description
`Exhibit
`1001 U.S. Patent No. 9,303,501 (“the ’501 Patent”)
`1002 Affidavit of Margaret Kieckhefer, of the Library of Congress, regarding
`excerpts from COMPOSITE CATALOG OF OIL FIELD AND PIPE LINE
`EQUIPMENT, Vol. 2 (21st ed. World Oil 1955) (“Lane-Wells”)
`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 (“Ellsworth”)
`1004 Affidavit of Aileen Barr of Halliburton Energy Services, Inc., regarding
`Halliburton Completion Products, Second Edition (1997)
`(“Halliburton”), “Attachment A” thereto
`1005 D.W. Thomson, et al., Design and Installation of a Cost-Effective
`Completion System for Horizontal Chalk Wells Where Multiple Zones
`Require Acid Stimulation, SPE (Society of Petroleum Engineers)
`37482 (1997) (“Thomson”)
`1006 Declaration of Ali Daneshy, Ph.D.
`1007 KATE VAN DYKE, FUNDAMENTALS OF PETROLEUM ENGINEERING (4th
`ed. 1997)
`RON BAKER, A PRIMER OF OIL WELL DRILLING (5th ed. (revised) 1998)
`1008
`1009 U.S. Patent No. 4,099,563 (“Hutchison”)
`1010 U.S. Patent No. 5,375,662
`1011 U.S. Patent No. 6,257,338
`1012
`Excerpts of Prosecution History of the ’501 Patent
`1013 U.S. Provisional Application No. 60/404,783, to which the ’501 Patent
`claims priority
`9/21/2016 Declaration of Christopher D. Hawkes, Ph.D., P.Geo.,
`regarding the proceedings of the 7th One-Day Conference On
`Horizontal Well Technology Operational Excellence (Canada
`November 3, 1999) (including Ex. 1005 at 102/253-110/253 and
`228/253-236/253)
`1015 U.S. Patent No. 7,861,774 (“the ’774 Patent”)
`1016 U.S. Patent No. 5,947,204
`
`1014
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`Patent 9,303,501
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`1017 U.S. Patent No. 4,434,854
`1018 Dictionary Definitions from WEBSTER’S THIRD NEW
`INTERNATIONAL DICTIONARY OF THE ENGLISH LANGUAGE
`UNABRIDGED (1986)
`1019 Affidavit of Debbie Caples regarding Kate Van Dyke, FUNDAMENTALS
`OF PETROLEUM ENGINEERING (4th ed. 1997) and RON BAKER, A PRIMER
`OF OIL WELL DRILLING (5th ed. (rev.) 1996) (including Ex. 1007 at
`Appendix B and Ex. 1008 at Appendix D)
`1020 M.S. van Domelen, Enhanced Profitability with Non-Conventional IOR
`Technology, SPE 49523 (1998) (referencing Ex. 1005 at p. 605, fn.28)
`1021 Declaration of Nancy Chaffin Hunter regarding the proceedings of the
`10th Middle East Oil Show & Conference (Bahrain March 15-18, 1997)
`(including Ex. 1005 at 11-21/24)
`1022 U.S. Patent No. 2,537,066
`1023 Affidavit of Nancy Chaffin Hunter, regarding the proceedings of the
`Production Operation Symposium (Oklahoma City, OK April 2-4,
`1995) (including R. Coon and D. Murray, Single-Trip Completion
`Concept Replaces Multiple Packers and Sliding Sleeves in Selective
`Multi-Zone Production and Stimulation Operations, SPE 29539 (1995))
`(“Coon”)
`1024 U.S. Patent No. 3,306,365
`1025 U.S. Patent No. 5,181,569
`1026 U.S. Patent No. 6,230,811
`1027 U.S. Patent No. 4,279,306
`1028
`Excerpts of File History of U.S.P.N. 6,435,282
`1029
`Excerpts of File History of U.S.P.N. 6,644,411
`1030
`Excerpts of File History of ’774 Patent
`1031 Howard, G. C. & Fast, C. R., HYDRAULIC FRACTURING
`(AIMMPE 1970)
`1032 Hyne, Norman J., Dictionary of Petroleum Exploration, Drilling, &
`Production (1991)
`1033 Declaration of Rebekah Stacha regarding SPE 37482 (including Ex.
`1005 at Ex. A)
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`IPR2017-00247
`Patent 9,303,501
`1034 Declaration of Rebekah Stacha regarding SPE 49523 (referencing Ex.
`1005 at p. 605, fn.28)
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`IPR2016-01380
`Patent 9,303,501
`Pursuant to 35 U.S.C. § 312 and 37 C.F.R. § 42.100 et seq., Petitioners
`
`request inter partes review of U.S.P.N. 9,303,501 (“the ’501 Patent,” Ex. 1001).
`
`I.
`
`INTRODUCTION
`
`The ’501 Patent’s purported invention was a combination of ball-actuated
`
`sliding sleeves [blue] and multi-element packers [red] for selectively treating or
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`“stimulat[ing]” zones in an oil well, such as by “frac’ing” or “acidizing.”
`
`But these systems were known before 2001, the earliest claimed priority date.
`
`
`
`Lane-Wells described such a system in 1955:
`
`PORTS
`
`BALL
`
`SLIDING
`SLEEVE
`
`
`Lane-Wells shows a ball-actuated sliding sleeve (a “Tubing Port Valve”) that it
`
`states can be used for acidizing multiple zones “with a three packer set-up and two
`
`different sized Tubing Port Valves.”
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`Patent 9,303,501
`Patent Owner may attempt to rely on several purported distinctions over the
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`prior art during this proceeding—such as the “solid body” nature of its packers, or
`
`its use of a hydraulic-sliding sleeve that is not actuated by a ball—but all fail.
`
`Lane-Wells explicitly discloses that its multi-packer system for acidizing can
`
`be used in an open hole, and Ellsworth discloses the use of solid body packers in
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`open hole acidizing operations. Therefore, it would have been obvious to use
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`Ellsworth’s packers in the Lane-Wells system. Furthermore, Halliburton discloses
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`a hydraulically-actuated sliding sleeve, pump-open plug that would have been
`
`obvious to use with the Lane-Wells system to enable the well-known and
`
`necessary step of setting of the packers.
`
`II. MANDATORY NOTICES
`A. Real Party in Interest (37 C.F.R. § 42.8(b)(1))
`Baker Hughes Incorporated and Baker Hughes Oilfield Operations, Inc. are
`
`the real parties-in-interest.
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`(1)
`IPR2016-01380 against the ’501 Patent, filed by Petitioners;
`
`(2) Rapid Completions LLC v. Baker Hughes Incorporated et al., Civil
`
`Action No. 6:16-cv-286 (E.D. Tex. 2016) (the “Litigation”), which involves the
`
`’501 Patent;
`
`(3)
`
`IPR2016-00596 against U.S.P.N. 7,134,505 (the ’505 Patent);
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`IPR2017-00247
`Patent 9,303,501
`IPR2016-00597 against U.S.P.N. 7,543,634 (the ’634 Patent);
`
`IPR2016-00598 against U.S.P.N. 7,861,774 (the ’774 Patent);
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`IPR2016-00650 against U.S.P.N. 6,907,936 (the ’936 Patent);
`
`(4)
`
`(5)
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`(6)
`
`(7)
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`IPR2016-00656 against U.S.P.N. 8,657,009 (the ’009 Patent);
`
`(8)
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`IPR2016-00657 against U.S.P.N. 9,074,451 (the ’451 Patent);
`
`(9)
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`IPR2016-01496 against the ’505 Patent;
`
`(10) IPR2016-01505 against the ’634 Patent;
`
`(11) IPR2016-01506 against the ’774 Patent;
`
`(12) IPR2016-01517 against the ’505 Patent;
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`(13) IPR2016-01514 against the ’634 Patent;
`
`(14) IPR2016-01509 against the ’774 Patent;
`
`(15) U.S.P.N. 7,571,765;
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`(16) U.S.P.N. 7,832,472;
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`(17) U.S.P.N. 8,397,820;
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`(18) U.S.P.N. 8,746,343;
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`(19) U.S.P.N. 9,366,123;
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`(20) U.S.P.A.N. 15/149,742;
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`(21) U.S.P.A.N. 15/149,971; and
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`IPR2017-00247
`Patent 9,303,501
`(22) Rapid Completions LLC v. Baker Hughes Incorporated et al., Civil
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`Action No. 6:15-cv-724 (E.D. Tex. 2015), which involves the ’505, ’634, ’774,
`
`’936, ’009, and ’451 Patents.
`
`C. Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
`Lead counsel: Mark T. Garrett (Reg. No. 44,699)
`
`Back-up counsel: Eagle H. Robinson (Reg. No. 61,361)
`
`Service Information (37 C.F.R. § 42.8(b)(4))
`
`D.
`Email: mark.garrett@nortonrosefulbright.com
`
`Post: Mark T. Garrett, Norton Rose Fulbright US LLP, 98 San Jacinto
`
`Boulevard, Suite 1100, Austin, TX 78701
`
`Phone: 512.536.3031
`
`Fax: 512.536.4598
`
`Petitioners consent to electronic service.
`
`III. GROUNDS FOR STANDING
`Pursuant to 37 C.F.R. § 42.104(a), Petitioners certify that the ’501 Patent is
`
`available for inter partes review, and that Petitioners are not barred or estopped
`
`from requesting an inter partes review challenging the Challenged Claims on the
`
`grounds identified in this Petition. The ’501 Patent has not been subject to a
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`previous estoppel-based proceeding of the AIA, and Petitioners were served with
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`the original complaint in the Litigation within the last 12 months.
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`Patent 9,303,501
`IV. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED
`A. Claims for Which Review Is Requested (37 C.F.R. § 42.104(b)(1))
`Petitioners request the review and cancellation of claims 1-9 (the
`
`“Challenged Claims”) of the ’501 Patent.
`
`Statutory Grounds of Challenge (37 C.F.R. § 42.104(b)(2))
`B.
`Ground 1: Claims 1-9 are invalid under § 103(a) based on Lane-Wells
`
`(Ex. 1002), Ellsworth (Ex. 1003), Thomson (Ex. 1005), and Halliburton
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`(Ex. 1004), which all published over one year before November 19, 2001. See Ex.
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`1002 at 1/17 and ¶¶ 1-6, and 7/17 (showing “NOV 14 1955” date stamp referenced
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`in ¶ 5); Ex. 1021 at ¶¶ 1-6 and appendices, including Thomson as Appendix A
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`(showing Thomson published in a bound proceedings volume dated 1997 and
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`catalogued in CSU Libraries in March of 2000)1;Ex. 1033 at ¶¶ 1-7 and Exhibit A
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`thereto (showing Thomson became available for purchase from SPE in 1997); Ex.
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`1013 at ¶¶ 1-6 and appendices, including Ellsworth at 102/253-110/253 and
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`228/253-236/253 (showing Ellsworth published in 1999); Ex. 1004 at ¶¶ 1-6 and
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`Attachment A (“Halliburton”) (showing—along with indicia on the last page—
`
`
`1 See also Ex. 1020 at 605, n. 28 (referencing, in 1998, Thomson); Ex. 1034 at
`
`¶¶ 1-7 and Exhibit A thereto (showing Ex. 1020 became available for purchase
`
`from SPE in 1998).
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`Halliburton published in 1997). Each of Lane-Wells, Ellsworth, Thomson, and
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`Halliburton is thus § 102(b) prior art.
`
`Pages from Halliburton were also submitted in IDSs in other cases, further
`
`proving Halliburton is prior art. See Ex. 1028 at 73-85/126 (1/31/2001 IDS citing
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`“Halliburton; Completion Products, Second Edition; 1997; Pages 5-5 thru 5-9, 5-
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`22,” identical to Ex. 1004 pages 4/155, 155/155, 120-125/155, and 137/155); Ex.
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`1029 at 45-57/176 (7/17/2001 IDS citing “Halliburton and Otis, Inc: Completion
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`Products, Second Edition, Chapter 5: Subsurface Safety Equipment, pp. 5-1-5-5
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`and 5-18, Halliburton Energy Services, Inc., 1997,” identical to Ex. 1004 pages
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`116-120/155 and 133/155). Ex. 1028 became publicly-accessible in August 2002
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`(when Ex. 1028’s patent issued) and Ex. 1029 became publicly-accessible in
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`October 2002 (when Ex. 1029’s application published), reinforcing that Ex. 1004
`
`is at least § 102(a) art, though the knowledge of Ex. 1029’s inventors (POSITAs,
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`given the subject of their patent) at assignee Kvaerner Oilfield Products, Inc. as of
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`July 2001 reinforces that Halliburton is § 102(b) art.2
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`2 Citations in the XX/XX format are to the Petitioner-added “Page XX of XX”
`
`numbering at the lower right-hand corner of the referenced exhibit.
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`IPR2017-00247
`Patent 9,303,501
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`V.
`
`FIELD OF TECHNOLOGY
`
`The ’501 Patent describes selectively stimulating or treating segments of an
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`oil well using ball-actuated sleeves to open ports in a tubing string. See, e.g., Ex.
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`1001 at 1:21-24, 2:39-3:7; Ex. 1006 at ¶¶ 57-66.
`
`A. Drilling an Oil Well
`Drilling a well generally includes drilling a hole to construct a wellbore in a
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`geological formation with oil or gas reserves. The wellbore is normally lined with
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`pipe or “casing” to protect the wellbore during production operations. See Ex.
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`1006 at ¶ 28; see also Ex. 1007 at 1083. In some circumstances, however, a
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`wellbore may be left uncased (referred to as an “open hole”) to “expose porosity
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`and permit unrestricted wellbore inflow of petroleum products.” Ex. 1001 at 1:28-
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`32; see also Ex. 1006 at ¶ 29. If a wellbore is cased, access to the formation is
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`provided by “perforating” or creating openings in the casing to allow oil and/or gas
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`to flow from the formation into the wellbore. Ex. 1001 at 1:32-34.
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`While it is sometimes possible for formation fluids such as oil and gas to
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`flow up the wellbore when left open or once casing has been perforated, a small-
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`diameter pipe called “production tubing” is typically run into the well as a conduit
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`3 Ex. 1007 is prior art under Section 102(b). See Ex. 1019 at ¶¶ 1-3 and Apps. A
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`and B (Ex. 1007) (showing publication of Ex. 1007’s material in 1997).
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`for petroleum products to flow to the surface. Ex. 1008 at 1474. Traditionally, oil
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`wells relied on natural formation pressure and permeability to flow petroleum
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`products to the surface. Ex. 1007 at 23. But when natural flow is insufficient or
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`not economical, “well stimulation” techniques are employed to enlarge existing
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`channels or create new ones in the formation, thereby increasing permeability to
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`help oil and gas flow into the wellbore. See id. at 162; Ex. 1001 at 1:35-36.
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`B. Well Stimulation and Selective Fluid Treatment
`Stimulation typically involves pumping acid or other fluids into a wellbore
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`under pressure. Ex. 1007 at 162; Ex. 1001 at 1:35-39. If pumped at a high enough
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`pressure, the fluid fractures or “fracs” the formation, creating cracks that radiate
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`outward from the wellbore. Ex. 1007 at 162-163. These “frac’ing” fluids usually
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`include a “proppant,” such as sand, to hold open the cracks. Id. Related to
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`frac’ing is acid stimulation or “acidizing,” in which acid is pumped into the
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`formation and also chemically reacts with the formation to create similar cracks.
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`Id. at 164.
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`A wellbore may cross multiple formation zones, only some of which contain
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`desirable petroleum products. See, e.g., Ex. 1003 at Figures 7 and 11. Other
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`zones, for example, may include water. Id. at 2-3 (“[W]ater or gas breakthrough
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`4 Ex. 1008 is prior art under Section 102(b). See Ex. 1019 at ¶¶ 1, 2, 4 and Apps. C
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`and D (Ex. 1008) (showing publication no later than 1998).
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`can be a problem for some of these wells. . . . The ability to establish long term
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`isolation of segments within the reservoir is key to controlling and optimizing
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`production from these horizontal wells.”). As such, it is often desirable to isolate
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`and stimulate only certain zones within a formation with tools called “packers”
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`which seal the annulus around the production tubing in the wellbore to direct the
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`fluid into the formation zone and protect tubing above and below the zone from
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`produced fluids, which are often corrosive. See Ex. 1008 at 148.
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`Once packers are deployed in the wellbore and set to seal around the
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`production tubing to isolate the desired zones, fluid may be pumped into the
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`isolated zones for stimulation. Ex. 1006 at ¶¶ 32-40. One example of such a
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`completion is described in Hutchison (Ex. 1009), which is listed on the face of the
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`’501 Patent. See Ex. 1001. As annotated in Figure 1 below, Hutchison’s tubing
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`string 19 includes a series of sliding sleeve flow control devices 20 and 21 [blue] to
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`inject treatment fluids into zones isolated by cup-type packers 22, 23, 24, and 25
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`[red]. Ex. 1009 at 2:51-58.
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`Packer
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`Packer
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`Packer
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`Sleeve
`
` Sleeve
`
` Packer
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`
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`As further annotated in Figures 2 and 4 below, the lower sleeve 20 [blue] has
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`a seat 44 [purple] that is sized to be sealed by a ball 48 [green]. Id. at 3:64-4:59.
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`Upper sleeve 21 [blue], in turn, is sized to mate with a larger ball. Id. at 4:60-5:5.
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`Sleeve [blue]
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`
`
`Seat (44)
`[purple]
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`Seat (44)
`[purple]
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`Ball (48) [green]
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` Sleeve [blue]
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`To open the lower sleeve 20, the ball 48 [green] is “dropped” into the tubing string,
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`passes through the upper sleeve 21, and seals against seat 44 of the lower sleeve
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`20. Id. at 4:49-59. This seal prevents fluid from passing through the seat, and
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`increasing pressure shifts the lower sleeve 20 down to open the port (annular
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`chamber 36) and allow fluid to flow from the tubing string into the annulus. Id.
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`After treating the zone between packers 22 and 23, a larger ball is dropped to
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`seal the larger seat of upper sleeve 21 (otherwise identical to lower sleeve 20), and
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`the process is repeated to treat the upper zone between packers 24 and 25. Id. at
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`4:60-6:17. Hutchison thus enables individual treatment of each zone. Ex. 1006 at
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`¶¶ 37-39.
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`Packers
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`C.
`While Hutchison employed cup-type packers for isolation of zones (Ex.
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`1010 at 2:51-58), various other types of packers were also known. Ex. 1006 at
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`¶¶ 41-42. Inflatable packers, for example, were often used in uncased or open
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`wells. See, e.g., Ex. 1010 at 1:43-44 (“Inflatable packers are preferred for use in
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`sealing an uncased well bore.”); Ex. 10235 at 912 (discussing use of external
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`casing packers (ECPs), which are inflatable, in open hole under “ECP AND
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`SLIDING SLEEVES, IN OPEN HOLE”); see also Ex. 1001 at 1:49-51 (“inflatable
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`packers may be limited with respect to pressure capabilities as well as durability”);
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`Ex. 1006 at ¶ 41. It was also known that solid body packers—which compress and
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`extrude outward resilient packing elements—could successfully provide effective
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`5 The SPE article in Ex. 1023 is prior art under Section 102(b). See Ex. 1023 at ¶¶
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`1-6 and appendices (showing article was published in bound proceedings dated
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`1995 and catalogued in CSU Libraries in February, 2000).
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`isolation in open holes that were drilled in the right way and/or through the right
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`formation. See Ex. 1003 at 3 (“Although the expansion ratios for [solid body
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`packers] are [not] as large as for inflatables, the carbonate formation in Rainbow
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`Lake generally drills very close to gauge hole, and effective isolation is possible
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`with these SBP’s.”); see also Ex. 1011 at 4:35-42 (“sealing devices 30, 32, 34 are
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`representatively and schematically illustrated . . . as inflatable packers . . . [o]f
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`course, other types of packers, such as production packers settable by pressure,
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`may be utilized for the packers 30, 32, 34”); Ex. 1006 at ¶¶ 42-43. Ellsworth’s
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`description of “very close to gauge hole” refers to the borehole being round instead
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`of oval, and very close in size to the drill bit, characteristics that can be achieved in
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`mechanically competent formations. Ex. 1006 at ¶ 43. Ellsworth illustrates a
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`principle that had been known and applied in the industry for decades, that tools—
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`such as solid-body packers historically used in cased holes—can also be used, and
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`often were tried and used successfully, in open-hole completions as they became
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`more common. Id. Solid-body packers were often hydraulically “set” via the
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`application of hydraulic pressure to compress the packing element(s). See Ex.
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`1006 at ¶ 42 (citing Ex. 1003 at 3; Ex. 1011 at 4:35-42).
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`As Dr. Daneshy explains in paragraph 44 of his declaration, stimulation
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`techniques, including acidizing, have been used and/or publicized for use in
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`multiple zone completions with packers in both open and cased holes since at least
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`1956. See Ex. 1002 at 2854 (“The Tubing Port Valve also provides a means of
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`acidizing two zones with packer setting in either open-hole or cased hole
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`completion. Three zone acidizing is possible with a three packer set-up and two
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`different sized Tubing Port Valves.”). Retrievable, hydraulically-set solid body
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`packers have been used and/or publicized for use in acid fracturing in cased holes
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`since at least 1997. See Ex. 1005 at 97 (discussing “multiple acid fracs” using
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`“multi-stage acid frac tool (MSAF)”), 98 (discussing use of retrievable hydraulic-
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`set packers), 100 (discussing choosing the balls based on the “anticipated fracture
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`gradient of the zone being treated”), and 100-101 (describing the stimulation as a
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`“frac job”), and 103 (referring to “Packers frac tools”). Retrievable, hydraulically-
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`set solid body packers have also been used and/or publicized for use in acidizing in
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`an open hole since at least 1999. See Ex. 1003 at p. 3/FIG. 4 (showing
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`hydraulically-settable solid body packer (SBP)), 5 (“Prior to running the
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`production assembly, SBP’s were run to acidize the toe of the well.”), and 6 (“The
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`initial acid job using SBP’s indicated that the [SBPs] successfully provided
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`isolation during the job. The acidizing assembly was pulled, and some rubber was
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`left in the hole.”).
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`Plugs
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`D.
`Tubing strings with inflatable or hydraulically set packers that are activated
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`with tubing pressure often include a “plug” in the tubing string below the
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`lowermost packer. Ex. 1006 at ¶ 45; see also Ex. 1005 at FIG. 3. Such plugs
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`block fluid flow to allow fluid pressurization in the tubing to set the packers and
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`thereby isolate zones in the wellbore. Ex. 1006 at ¶ 45. This use of plugs to
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`pressurize tubing to hydraulically set solid-body packers was known prior to 2001.
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`See Ex. 1005 at 99 (“[P]ressure was applied down the tubing against the pump-out
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`plug . . . to set all seven packers simultaneously”), 100, 101; Ex. 1003 at 3, 5, 7, 8
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`(each of four case histories set production string SBPs using “tubing pressure” held
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`by a pump-out plug).
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`After setting the pressure-activated packers, such plugs are typically
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`removed to permit well treatment and/or production through the tubing. Ex. 1006
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`at ¶ 45; see also Ex. 1005 at 99 (“[T]he stimulation operation was started by
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`expelling the pump out/cycle plug and stimulating the lower zone (below the
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`bottom packer).”). Depending on design, the plug may be retrieved or milled out
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`with a wireline or coiled tubing tool run into the tubing. Ex. 1006 at ¶ 45.
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`Alternatively, some plugs are “pumped out” or expelled from the bottom of the
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`tubing string after setting the packers. Id.; see also Ex. 1005 at 99 (“After all the
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`surface equipment had been rigged up and tested, the stimulation operation was
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`started by expelling the pump out/cycle plug . . . .”); Ex. 1003 at 7-8 (discussing
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`case history #3 in which production string SBPs were set and then plug expended)
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`and 8 (same for case history #4); cf. Ex. 1005 at 100 (“If the plug expends early,
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`the packers cannot be set.”). Such a “pump-out plug” typically employs shear pins
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`that prevent plug release below a threshold pressure. Ex. 1006 at ¶ 45; Ex. 1005 at
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`99 (“Once the lower half of the completion was on depth, pressure was applied
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`down the tubing against the pump-out plug (conventional shear screw release) to
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`set all seven packers simultaneously.”).
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`A “cycle plug” is a variation of a “pump-out plug” that requires the
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`threshold pressure to be applied multiple times to release the plug. Ex. 1006 at
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`¶ 45; Ex. 1002 at 99 (“cycle type plug . . . allowed up to ten pressure cycles to be
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`applied to the tubing before it was expelled”). Upon release, “pump-out plugs” are
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`expelled into the wellbore (Ex. 1006 at ¶ 45; Ex. 1005 at 99), and “may cause
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`problems during the life of the well.” See Ex. 1016 at 1:29-44; Ex. 1003 at 5, 7, 8
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`(discussing desirability of eliminating equipment debris (the expended plug) in the
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`borehole). Another type of plug, discussed below, is a “pump-open plug” (Ex.
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`1004 at 96/155), which opens without being expelled. See Ex. 1006 at ¶ 45.
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`VI. LEVEL OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art (“POSITA”) relevant to the ’501 Patent
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`as of November 19, 20016—the earliest claimed priority date—would have had at
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`6 All statements in this Petition about the knowledge and skills of, and what would
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`have been obvious to, a POSITA are offered from this perspective as of this date
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`and would be no different as of November 19, 2002. See Ex. 1006 at ¶ 22.
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`least a Bachelor of Science degree in mechanical, petroleum, or chemical
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`engineering and at least 2-3 years of experience with downhole completion
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`technologies related to fracturing. See id. at ¶ 46. This level of ordinary skill is
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`also evidenced by prior art and the ’501 Patent itself. See id. at ¶¶ 47-56; Chore-
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`Time Equip., Inc. v. Cumberland Corp., 713 F.2d 774, 779 (Fed. Cir. 1983);
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`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Here, the prior art
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`described in Section V above demonstrates that a POSITA would have been
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`familiar with various completion systems and stimulation techniques. See Ex.
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`1006 at ¶ 47 (citing declaration Section V, which includes ¶¶ 25-45); see also id. at
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`¶¶ 46, 48-56.
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`A POSITA also would have recognized that cup-type and inflatable packers
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`were not always preferable and, in at least some circumstances, hydraulically set
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`solid body packers would be preferable in cased and open hole wells. See, e.g., id.
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`¶¶ 42-43, 47, 54; see also Ex. 1003 at 3 (“Historically, inflatable packers were used
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`for water shut-off, stimulation, and segment testing. More recently, solid body
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`packer (SBP’s) (see FIG. 4) have been used to establish open hole isolation.”); Ex.
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`1011 at 3:67-4:4 (“the [selective isolation and treatment] method 10 may be
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`performed in wells including both cased and uncased portions, and vertical,
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`inclined and horizontal portions ”); see also Ex. 1001 at 1:29-32. A POSITA
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`would have also recognized that many tools initially designed or used with casing
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`could also be used in uncased wellbores in at least some formations, for both
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`production and stimulation. Ex. 1006 at ¶¶ 43, 48-56; Ex. 1003 at 5 (“SBP’s were
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`run to acidize . . . .”) and 6 (“acid job using SBP’s indicated that the [SBPs]
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`successfully provided isolation”); Ex. 1022 at 3:6-10 (“[W]here the producing
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`formation is firm, it is sometimes possible to set packers directly against the
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`formation and to do away with casing through the productive section with cement
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`behind.”); Ex. 1023 at 912 (section under “ECP AND SLIDING SLEEVES, IN
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`OPEN HOLE”—“ option of acid or low-volume sand fracturing”), FIG. 1.
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`Patent Owner agrees and, during prosecution of the ’501 Patent, submitted in
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`an IDS a report of its own expert witness from Patent Owner’s litigation against
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`Halliburton. See Ex. 1012 at 21/50 (First Supplemental Expert Report of Kevin
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`Trahan (NPL40)).7 In it, Patent Owner’s expert explained that “hard rock
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`formations, once drilled, typically provide a circular cross section conduit, just as a
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`cased hole does. In these types of hard formations a tool that was designed for use
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`in cased hole may be used in open hole.” Ex. 1030 at 34/57.
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`Mr. Trahan further explained that “many tools, including anchoring
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`mechanisms and packing elements, that were initially designed for cased hole, with
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`no contemplation of being used in open hole, have been used in open hole
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`7 Ex. 1030 contains a copy of the report from the file history of the ’774 Patent.
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`Ex. 1030 at 31-57/57.
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`successfully.” Id. An earlier affidavit of Mr. Trahan also explained that: “Packing
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`Elements of many different configurations have been used in cased hole as well as
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`open hole.” See Ex. 1012 at 27/50 (Affidavit of Kevin Trahan (NPL94)8); Ex.
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`1030 at 18/57. Due to imperfections in uncased wellbores, “the longer the packing
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`element, the more opportunity there is that some section of the packing element
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`will be located over a portion of the wellbore that has continuity” and that
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`“[a]nother idea used in the industry for increasing reliability of packers in open