UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________________________
`
`HALLIBURTON ENERGY SERVICES, INC.,
`
`PETITIONER,
`
`v.
`
`SCHLUMBERGER TECHNOLOGY CORPORATION,
`
`PATENT OWNER.
`
`________________________________
`
`Case IPR2017-01572
`Patent 8,646,529
`
`________________________________
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,646,529
`UNDER 35 U.S.C. §§ 311 ET SEQ. AND
`37 C.F.R. § 42.100 ET SEQ.
`
`
`
`________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________________________
`
`HALLIBURTON ENERGY SERVICES, INC.,
`
`PETITIONER,
`
`v.
`
`SCHLUMBERGER TECHNOLOGY CORPORATION,
`
`PATENT OWNER.
`
`________________________________
`
`Case IPR2017-01572
`Patent 8,646,529
`
`________________________________
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,646,529
`UNDER 35 U.S.C. §§ 311 ET SEQ. AND
`37 C.F.R. § 42.100 ET SEQ.
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ...........................................................................................1
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)..........................2
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Real Party In Interest Under 37 C.F.R. § 42.8(b)(1).............................2
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2) .....................................2
`
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ..................2
`
`Service Information Under 37 C.F.R. § 42.8(b)(4)...............................3
`
`Certification of Word Count Under 37 C.F.R. § 42.24(d)....................3
`
`III. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(a).....................3
`
`IV.
`
`V.
`
`IDENTIFICATION OF GROUNDS FOR WHICH REVIEW IS
`REQUESTED UNDER 37 C.F.R. § 42.104(b)(1)..........................................3
`
`HOW THE CHALLENGED CLAIMS ARE TO BE CONSTRUED
`UNDER 37 C.F.R. § 42.104(b)(3) ..................................................................5
`
`VI. OVERVIEW OF THE ‘529 PATENT ............................................................7
`
`A.
`
`B.
`
`C.
`
`State of Technology at Time of Alleged Invention...............................7
`
`Summary of the Disclosure of the Claimed Subject Matter ...............12
`
`Summary of the Prosecution of US 7,934,556, US 8,220,543,
`and US 8,646,529 ................................................................................15
`
`VII. OVERVIEW OF THE PRIOR ART .............................................................20
`
`A.
`
`B.
`
`Summary of U.S. Patent No. 7,273,104 to Wilkinson........................20
`
`Summary of U.S. Patent Application Publication No.
`2005/0211439 to Willett et al..............................................................25
`
`i
`
`
`
`C.
`
`Summary of U.S. Patent No. 6,543,538 to Tolman et al. ...................28
`
`VIII. HOW THE CONSTRUED CLAIMS ARE UNPATENTABLE
`UNDER 37 C.F.R. § 42.104(b)(4) ................................................................31
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Level of Skill in the Art.......................................................................31
`
`Claims 9-12 are rendered obvious under 35 U.S.C. § 103 by
`Wilkinson. ...........................................................................................32
`
`Claims 9 and 11-12 are rendered obvious under 35 U.S.C. §
`103 by Willett......................................................................................43
`
`Claims 9-12 are rendered obvious under 35 U.S.C. § 103 by
`Willett in view of Wilkinson...............................................................48
`
`Claims 9 and 11-12 are rendered obvious under 35 U.S.C. §
`103 by Tolman.....................................................................................53
`
`Claims 9-12 are rendered obvious under 35 U.S.C. § 103 by
`Tolman in view of Wilkinson..............................................................58
`
`IX. CONCLUSION..............................................................................................64
`
`ii
`
`
`
`LIST OF EXHIBITS
`
`Exhibit 1001 U.S. Patent No. 8,646,529 (“the ‘529 patent”).
`
`Exhibit 1002
`
`Expert Declaration of Paul Branagan.
`
`Exhibit 1003
`
`Paul Branagan CV.
`
`Exhibit 1004 U.S. Patent Pub. No. 2005/0211439 to Willett et al. (“Willett”).
`
`Exhibit 1005 U.S. Patent No. 2,838,116 to Clark et al. (“Clark”).
`
`Exhibit 1006 U.S. Patent No. 6,543,538 to Tolman et al. (“Tolman”).
`
`Exhibit 1007 U.S. Patent No. 7,273,104 to Wilkinson (“Wilkinson”).
`
`Exhibit 1008
`
`Prosecution File History of the ‘556 patent.
`
`Exhibit 1009
`
`Exhibit 1010
`
`Exhibit 1011
`
`Exhibit 1012
`
`Prosecution File History of the ‘543 patent (Divisional of the ‘556
`patent).
`
`Prosecution File History of the ‘529 patent (Divisional of the ‘543
`patent).
`Warpinski, N. R., Branagan, P. T., Peterson, R. E., & Wolhart, S. L.,
`“An Interpretation of M-Site Hydraulic Fracture Diagnostic Results.”
`SPE Rocky Mountain Regional/Low Permeability Reservoirs
`Symposium and Exhibition. Society of Petroleum Engineers. 1
`January 1998. Denver, CO. SPE 39950.
`Warpinski, N. R., Branagan, P. T., Peterson, R. E., Wolhart, S. L., &
`Uhl, J. E. “Mapping Hydraulic Fracture Growth and Geometry Using
`Microseismic Events Detected by a Wireline Retrievable
`Accelerometer Array.” SPE Gas Technology Symposium. Society of
`Petroleum Engineers. Calgary, Alberta, Canada. 15-18 March 1998.
`SPE 40014.
`
`iii
`
`
`
`Exhibit 1013
`
`Exhibit 1014
`
`Warpinski, N. R., Branagan, P. T., Peterson, R. E., Fix, J. E., Uhl, J.
`E., Engler, B. P., & Wilmer, R. “Microseismic and Deformation
`Imaging of Hydraulic Fracture Growth and Geometry in the C Sand
`Interval, GRI/DOE M-Site Project.” SPE Annual Technical
`Conference and Exhibition. Society of Petroleum Engineers. San
`Antonio, TX. 5-8 October 1997. SPE 38573.
`Branagan, P. T., Peterson, R. E., Warpinski, N. R., Wolhart, S. L., &
`Hill, R. E. “Propagation of a Hydraulic Fracture into a Remote
`Observation Wellbore Results of C-Sand Experimentation at the
`GRI/DOE M-Site Project.” SPE Annual Technical Conference and
`Exhibition. Society of Petroleum Engineers. San Antonio, TX. 5-8
`October 1997. SPE 38574.
`Warpinski, N. R., Engler, B. P., Young, C. J., Peterson, R., Branagan,
`P. T., & Fix, J. E. “Microseismic Mapping of Hydraulic Fractures
`Using Multi-Level Wireline Receivers.” SPE Annual Technical
`Conference and Exhibition. Society of Petroleum Engineers. Dallas,
`TX. 22-25 October 1995. SPE 30507.
`Ackert, D., Beardsell, M., Corrigan, M. and Newman, K. “The Coiled
`Tubing Revolution ,” Oilfield Review. Vol. 1, No. 3. October 1989.pp.
`4-16.
`Exhibit 1017 U.S. Patent No. 3,313,346 to Robert V. Cross (“Cross”).
`
`Exhibit 1015
`
`Exhibit 1016
`
`Exhibit 1018 U.S. Patent No. 4,629,218 to Jon D. Dubois (“Dubois”).
`
`Exhibit 1019 U.S. Patent No. 4,515,220 to Phillip S. Sizer, et al. (“Sizer”).
`
`Exhibit 1020 U.S. Patent No. 6,367,548 to Donald L. Purvis, et al. (“Purvis”).
`Exhibit 1021 Conn, T., and Moffatt, T., “Applications of Real-Time Well
`Monitoring Systems,” Southwestern Paper, February 2000.
`S. C. Maxwell, J. Rutledge, R. Jones, and M. Fehler. “Petroleum
`reservoir characterization using downhole microseismic monitoring.”
`GEOPHYSICS, Vol. 75 No. 5, September – October 2010. pp.
`75A129-75A137. 1.3477966.
`Calvez, Le J., Malpani, R., Xu, J., Stokes, J., and Williams, M..
`“Hydraulic Fracturing Insights from Microseismic Monitoring,”
`Oilfield Review. Vol. 28, No. 2. May 2016. pp. 16-33.
`
`Exhibit 1022
`
`Exhibit 1023
`
`iv
`
`
`
`Exhibit 1025
`
`Exhibit 1024 U.S. Patent No. 5,377,104 to Gordon G. Sorrells, et al. (“Sorrells”).
`Kew Observatory, Branagan & Associates, Inc., Sandia National
`Laboratories, Resources Engineering Systems, Gas Research Institute,
`& United States. “Results of the multi-site project experimentation in
`the B-Sand interval: Fracture diagnostics and hydraulic fracture
`intersection : topical report.” Gas Research Institute. Chicago, IL.
`December 1997.
`Exhibit 1026 U.S. Patent No. 5,501,275 to Card et al. (“Card”).
`Exhibit 1027 U.S. Patent Application Ser. No. 11/294,983 (“the ‘983 application”)
`published as US2006/0113077 to Dean Willberg et al.
`
`Exhibit 1028 U.S. Pat. No. 5,771,170 to Robert J. Withers et al. (“Withers”).
`
`Exhibit 1029 U.S. Pat. No. 7,028,772 to Chris Wright et al. (“Wright”).
`Exhibit 1030 U.S. Patent Application Ser. No 11/111,230 (“the ‘230 application”)
`published as US2005/0236161 to Michael Gay et al.
`
`Exhibit 1031 U.S. Pat. No. 7,055,604 to Virginia Jee et al. (“Jee”).
`Exhibit 1032 U.S. Patent Application Ser. No. 11/135,314 (“the ‘314 application”)
`published as US2005/0263281 to John Lovell et al.
`
`Exhibit 1033 U.S. Pat. No. 6,758,271 to David Randolph Smith (“Smith”).
`
`Exhibit 1034 Xanthan Gum, Material Safety Data Sheet, 24 July 2001.
`
`Exhibit 1035 U.S. Patent Application Serial No. 10/605,784 (“the ‘784 application”)
`published as US2004/0152601 to John W. Stills et al.
`
`Exhibit 1036 U.S. Pat.No. 4,716,964 to Steven R. Erbstoesser et al. (“Erbstoesser”).
`
`Exhibit 1037 U.S. Pat. No. 7,506,689 to Jim B. Surjaatmadja (“Surjaatmadja”).
`
`v
`
`
`
`I.
`
`INTRODUCTION
`
`Petitioner, Halliburton Energy Services Inc.
`
`(hereinafter “Petitioner”),
`
`hereby respectfully requests Inter Partes Review pursuant to 35 U.S.C. §§ 311 et
`
`seq. and 37 C.F.R. §§ 42.100 et seq., of claims 9-12 of U.S. Patent No. 8,646,529
`
`(“the ‘529 patent”) filed July 12, 2012 to Clark et al. See Ex. 1001.
`
`The ‘529 patent purports to claim a method of treating a well where a target
`
`zone is treated, a diversion agent is introduced, and a wellbore parameter is
`
`measured which includes measuring microseismic activity. Treating zones in a
`
`well with a diverting agent that degrades after treatment was well-known and
`
`explicitly disclosed in multiple patents issued years before the ‘529 patent was ever
`
`filed. The mere addition of measuring microseismic activity to this known prior art
`
`well
`
`treatment method does nothing to impart patentability. Measuring
`
`microseismic activity during a well treatment activity was widely used and well-
`
`known at the time of the invention and had been practiced for at least 10 years
`
`before the ‘529 Patent. Doing so simply involves installing microseismic
`
`measuring equipment into a well or offset well. This is a classic situation where
`
`known elements are combined according to known methods to yield predictable
`
`results and is the height of obviousness.
`
`As discussed below, there is nothing recited in claims 9-12 of the ‘529
`
`patent that is patentable over what is disclosed and taught by the prior art.
`
`1
`
`
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
`Petitioner satisfies each requirement for Inter Partes Review of the ‘529
`
`patent pursuant to 37 C.F.R. § 42.8(a)(1).
`
`A.
`
`Real Party In Interest Under 37 C.F.R. § 42.8(b)(1)
`
`The Real Party in Interest is Halliburton Energy Services, Inc., 3000 North
`
`Sam Houston Parkway, East Houston, Texas 77032.
`
`B.
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`Petitioner is not aware of any other judicial or administrative proceedings
`
`involving the ‘529 patent. However, Petitioner is concurrently filing an inter
`
`partes review petition on claims 1, 2, 4, 6, 8, 15 and 17 of the ‘529 patent and
`
`petitions involving U.S. Patent Nos. 7,934,556 and 8,220,543, which are in the
`
`same family as the ‘529 patent.
`
`C.
`
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`Petitioner is represented by the following counsel:
`
`Lead Counsel
`Henry A. Petri (Reg. No. 33,063)
`Polsinelli PC
`1401 Eye (“I”) Street, N.W.,
`Suite 800
`Washington, D.C. 20005
`Telephone: 202.783.3300
`hpetri@polsinelli.com
`
`Backup Counsel
`James P. Murphy (Reg. No. 55,474)
`Polsinelli PC
`1000 Louisiana Street
`Fifty-Third Floor
`Houston, Texas 77002
`Telephone: 713.374.1631
`jpmurphy@polsinelli.com
`
`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney has been filed with
`
`this Petition.
`
`2
`
`
`
`D.
`
`Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`Service information for lead and back-up counsel is as follows:
`
`James P. Murphy
`Polsinelli PC
`1000 Louisiana Street, Fifty-Third Floor
`Houston, Texas 77002
`
`Petitioner also consents to service by e-mail at the above e-mail addresses provided
`
`for lead and back-up counsel.
`
`E.
`
`Certification of Word Count Under 37 C.F.R. § 42.24(d)
`
`Petitioner certifies that the word count in this Petition is 11,868 words, as
`
`counted by the word-processing program (Microsoft Word 2010) used to generate
`
`this Petition, where such word count excludes the table of contents, table of
`
`authorities, mandatory notices, certificate of service, appendix of exhibits, and this
`
`certificate of word count. This Petition is in compliance with the 14,000 word limit
`
`set forth in 37 C.F.R. § 42.24(a)(1)(i).
`
`III. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ‘529 patent is available for inter partes review.
`
`Petitioner is not barred or estopped from requesting an inter partes review of the
`
`‘529 patent claims on the grounds identified in this Petition. 37 C.F.R. § 42.104(a).
`
`IV.
`
`IDENTIFICATION OF GROUNDS FOR WHICH REVIEW IS
`REQUESTED UNDER 37 C.F.R. § 42.104(b)(1)
`
`Petitioner asserts that claims 9-12 of the ‘529 patent are unpatentable based
`
`on the following grounds:
`
`3
`
`
`
`Ground 1: Claims 9-12 are rendered obvious under 35 U.S.C. § 103 by
`
`U.S. Patent No. 7,273,104 to Wilkinson (“Wilkinson”).
`
`Ground 2: Claims 9 and 11-12 are rendered obvious under 35 U.S.C. §
`
`103 by U.S. Patent Pub. No. 2005/0211439 to Willett et al., (“Willett”).
`
`Ground 3: Claims 9-12 are rendered obvious under 35 U.S.C. § 103 by
`
`Willett in view of Wilkinson.
`
`Ground 4: Claims 9 and 11-12 are rendered obvious under 35 U.S.C. §
`
`103 by U.S. Patent No. 6,543,538 to Tolman et al., (“Tolman”).
`
`Ground 5: Claims 9-12 are rendered obvious under 35 U.S.C. § 103 by
`
`Tolman in view of Wilkinson.
`
`While some of the above grounds for obviousness cover the same claims, the
`
`technical teachings between the different grounds are not cumulative.
`
`In particular, Wilkinson presents a method for treating a lateral section of a
`
`well with diverting material and expressly discloses using microseismic
`
`measurements during fracturing operations. With respect to Willett and Tolman,
`
`Willett’s primary embodiment relates to treatment of multiple zones in a horizontal
`
`wellbore. Tolman’s primary embodiment, however,
`
`relates to treatment of
`
`multiple zones in a vertical wellbore. A person of ordinary skill in the art at the
`
`time of the alleged invention (“POSITA”) would understand that the technical
`
`teaching between these two is different and non-cumulative as the treatment of
`
`4
`
`
`
`multiple zones along a horizontal wellbore has different characteristics to those for
`
`treating multiple zones in a vertical wellbore. Ex.1002 at ¶¶168-169.
`
`As Petitioner’s expert explains,
`
`For example, in a horizontal embodiment, the fracture gradient (e.g.,
`the pressure required to initiate a fracture) and formation properties
`are often very similar across the multiple zones. In a vertical wellbore,
`the fracture gradient and formation properties would likely be
`different at the various elevations. One reason for this difference is
`due to the increased relative weight of the rock above a target zone as
`you travel deeper into a wellbore. In a horizontal well, the weight of
`the rock above the wellbore is relatively similar as you travel along
`the wellbore. These differences mean that your treatment steps in a
`vertical wellbore would likely differ at various elevations due to the
`changes, in part, of the fracture gradient. In a horizontal wellbore,
`your treatment steps across the multiple target zones would likely be
`similar due to the relative similarity of the fracture gradient.
`Id. at ¶169.
`
`As such, the different grounds all render obvious the claims, but they do so
`
`based on different and non-cumulative teachings.
`
`V.
`
`HOW THE CHALLENGED CLAIMS ARE TO BE CONSTRUED
`UNDER 37 C.F.R. § 42.104(b)(3)
`
`In an IPR, claim terms are to be given their broadest reasonable construction
`
`consistent with the specification. In re Cuozzo Speed Techs., LLC, 793 F.3d 1268,
`
`1276, 1279 (Fed. Cir. 2015), aff’d, 136 S.Ct. 2131, 2142 (2016); 37 C.F.R.
`
`5
`
`
`
`§ 42.100(b); Official Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766
`
`(Aug. 14, 2012). “[C]laim terms need only be construed ‘to the extent necessary to
`
`resolve the controversy.” Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355,
`
`1361 (Fed.Cir.2011)(quoting Vivid Techs., Inc. v. Am Sci. & Eng’g, Inc., 200 F.3d
`
`795, 803 (Fed.Cir.1999)).
`
`Here, the claims and specification of the ‘529 patent support the proposed
`
`construction of the following limitation:
`
`“parameter indicative of diversion”
`
`The term “parameter indicative of diversion” is found in claim 9. A POSITA
`
`would understand the broadest reasonable construction of “parameter is indicative
`
`of hydraulic fracturing” to be “parameter indicative of diversion” to be “pressure,
`
`temperature, tension, compression, fluid flow rate, microseisms or fluid velocity,
`
`measured either in the wellbore or in an offset well, that indicate that diversion has
`
`occurred.” See Ex.1001 at 5:64-6:38; see also Ex.1002 at ¶56.
`
`6
`
`
`
`VI. OVERVIEW OF THE ‘529 PATENT
`State of Technology at Time of Alleged Invention1
`
`A.
`
`The alleged invention of the ‘529 patent is a method for treating a well to
`
`increase productivity by temporarily plugging one target zone with a diverting
`
`fluid such that another target zone can be more effectively fractured and measuring
`
`microseismic activity. All of the steps of the claimed method were well-known in
`
`the prior art at the time of the alleged invention.
`
`1. Deploying Coiled Tubing for Well Treatment Was Well-Known
`
`Coiled tubing was well-known and widely used in the oil and gas industry
`
`since at least the mid 1960’s, including in the application of diverting agents into
`
`target zones of interest. See Ex.1002 at ¶¶41-45 (discussing a brief history of coiled
`
`tubing including a discussion of U.S. Patent No. 6,367,548 to Donald L. Purvis, et
`
`al. (Ex.1020), filed March 3, 2000, for its disclosure of using coiled tubing to inject
`
`diverting agents into a wellbore). Moreover, it was known in the art to use a
`
`hydrajetting tool with coiled tubing to introduce treatment fluids and degradable
`
`diverting materials to the target zone. See Ex.1037 at 2:8-18; FIG. 2.
`
`1 Cited references not named in a ground of rejection are cited for the purpose of
`
`showing the state of the art and the background knowledge of a POSITA. Randall
`
`Mfg. v. Rea, 733 F.3d 1355, 1362-63 (Fed. Cir. 2013).
`
`7
`
`
`
`2. Treating a Well Using a Degradable Diverting Material Was
`Well Known
`
`Treating a well by temporarily plugging a target zone with a degradable
`
`diverting fluid so that another zone can be fractured has been known to those of
`
`skill in the art and used in practice since at least the 1950’s.
`
`For example, U.S. Patent No. 2,838,116 to Joseph B. Clark, Jr., et al.
`
`(hereinafter “Clark”) filed on October 22, 1956, recognized that plugging existing
`
`fractures in one zone diverted fracturing fluid to a different zone,
`
`thereby
`
`increasing permeability and the production of hydrocarbons.
`
`Clark describes a process of creating “a series of fractures of any desired
`
`areal extent produced by first fracturing and then temporarily plugging the fracture
`
`so that one or more additional fractures can be produced in the same isolated zone
`
`of a well.” Ex.1005 at 1:40-43. The process can be used to produce multiple
`
`fractures by “intermittently injecting with the fracturing liquid a quantity of
`
`bridging material which tends to plug any previously produced or existing fractures
`
`through which the fracturing liquid is entering the formation so that the fracturing
`
`liquid subsequently entering the confined zone will, by the application of high
`
`hydraulic pressure, produce another fracture.” Id. at 1:46-52.
`
`Clark describes the use of diversion agents to temporarily plug a fracture so
`
`fracturing liquid is diverted to another fracture. Clark describes the use of
`
`“bridging materials,” which are “(1) fibrous-pliable, stringy materials which tend
`
`8
`
`
`
`to entangle or mat in or over a crevice; (2) granular – angular, rigid materials
`
`which tend to bridge against each other in a crevice without being distorted
`
`appreciably; and (3) lamellated – materials formed of thin sheets or flakes.” Id. at
`
`3:69-74. Clark describes a wide range of particle sizes “so that an impermeable
`
`bridge rather than a filter is formed.” Id. at 4:11-12. Clark further describes that the
`
`bridging materials are of a temporary nature, i.e., they are capable of being
`
`removed or degraded from the fractures and from a well. Id. at 4:17-21.
`
`9
`
`
`
`Id. at FIG. 2
`
`As illustrated in FIG. 2 above, the process disclosed in Clark involves first
`
`pumping fracturing liquid into the tubing and then displacing the fracturing liquid
`
`into the formation, thereby producing a first fracture. Id. at 7:48-8:38. Next, a
`
`fracture sealing agent
`
`is introduced to the tubing that contained bridging
`
`material/sealing agent. Id. Once the sealing agent was displaced into the first
`
`10
`
`
`
`fracture, it produced a second pressure peak 17 of about 2400 p.s.i. developed at
`
`the pump discharge, and produced a second fracture. This second pressure peak
`
`indicated that diversion had been successful. After a third pressure peak 18 at
`
`about 2600 p.s.i., the formation fractured for a third time. Id. This third pressure
`
`peak indicated that a second diversion had been successful. Additionally, a fourth
`
`and fifth fracture are indicated. Id.
`
`As such, and as can be seen by the disclosure from Clark, the method for
`
`treating multiple zones within a wellbore as described in the ‘529 patent has been
`
`known for more than six decades. In fact, and as Clark shows, establishing fluid
`
`communication with multiple zones in a well, fracturing a first zone in a well,
`
`diverting a first zone in a well, and fracturing a second zone in a well have been
`
`known since the 1950’s.
`
`3. Measuring Microseismic Activity During a Well Treatment Was
`Well Known
`
`More than 10 years before the ‘529 patent, microseismic measurements of
`
`well treatment process were being performed. For example, these measurements
`
`were being made for the purpose of understanding the location and geometry of the
`
`subterranean formation and for optimizing fracturing operations by monitoring
`
`wellbore parameters, including microseismics. See Ex.1002 at ¶¶48-50 (discussing
`
`a brief history of monitoring wellbore parameters including a discussion of U.S.
`
`11
`
`
`
`Patent No. 5,377,104 to Gordon G. Sorrells et al. (Ex.1024) for its disclosure of
`
`monitoring microseismic activity to understand the propagation of fractures).
`
`Even Patent Owner acknowledges that monitoring a parameter indicative of
`
`stimulation, including microseismic measurements, was well known in the art. Ex.
`
`1001 at 7:15-22 (“Examples of methods for monitoring a parameter indicative of
`
`stimulation are disclosed in U.S. patent application Ser. No. 11/135,314, published
`
`as U.S. Patent Application Publication No. 2005/0263281 [Ex.1032], which is
`
`hereby incorporated by reference in its entirety. Microseisms generated by
`
`hydraulic fracturing and other types of treatment may be monitored using hydraulic
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`fracture monitoring (HFM), for example.”).
`
`B.
`
`Summary of the Disclosure of the Claimed Subject Matter
`
`The ‘529 patent “relates generally to a method and system for treating a
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`subterranean formation using diversion.” Ex.1001 at 1:22-23. “To access
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`hydrocarbon effectively and efficiently, it is desirable to direct the treatment fluid
`
`to target zones of interest in a subterranean formation.” Id. at 1:44-46 and 1:49-65.
`
`To that end, the ’529 patent purports to provide “a reliable method of selectively
`
`and efficiently treating target zones in a subterranean formation using a diversion
`
`agent and monitoring during the treatment.” Id. at 2:52-54.
`
`12
`
`
`
`Id. at FIG. 1.
`
`Depicted in FIG. 1, above, is a well 10 with target zones 40 in accordance
`
`with the alleged invention. A coiled tubing string 20 extends downhole into the
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`wellbore. Id. at 3:60-62. The coiled tubing string serves to transfer fluids between
`
`the surface and one or more treatment zones in the wellbore. Id. at 3:64-4:3. For
`
`example, the well 10 may include a cutting fluid source 65, a treatment fluid
`
`source 60, and a diversion fluid source 62. Id. at 4:15-30.
`
`13
`
`
`
`After the coiled tubing string 20 has been deployed in the well 10, the
`
`surface treatment monitoring system 64 may be deployed to measure or monitor
`
`treatment of the well. Id. at 6:1-8. For example, the monitoring system may be
`
`capable of detecting and monitoring microseisms in the subterranean formation. Id.
`
`at 6:8-12. Other measurement or monitoring apparatuses may include bottom-hole
`
`pressure gauges or bottom-hole temperature gauges. Id. at 6:31-34. The monitoring
`
`system may also measure tension or compression acting upon a downhole device
`
`or fluid flow rate or velocity. Id. at 6:39-43. The ‘529 patent states that these types
`
`of measuring and monitoring were well known in the art. Id. at 6:13-43.
`
`After the monitoring system and coiled tubing string is deployed, treatment
`
`of the target zone 40 may begin by pumping treatment fluid into well 10. Id. at
`
`6:44-55. This process is referred to as the “treatment stage.” Id. at 6:55-56. The
`
`treatment fluid may be pumped into the annulus 16 between the coiled tubing
`
`string 20 and the casing string 14 (in the case of a cased well) or between the
`
`coiled tubing string 20 and the wellbore wall (in the case of an open hole well). Id.
`
`at 6:48-53.
`
`In accordance with the alleged invention, a diversion agent may be injected
`
`to facilitate in directing treatment fluids to a desired target zone. Id. at 1:41-57;
`
`7:57-65. This is referred to as the “diversion stage.” Id. at 7:66-8:2. For example,
`
`the diversion agent may be pumped into the perforations of the casing string 14 to
`
`14
`
`
`
`seal the perforations. Id. at 8:2-4. In some embodiments the diversion agent may be
`
`pumped through the perforations and into the stimulated zone in the subterranean
`
`formation. Id. at 8:4-6.
`
`The treatment and diversion stages may be repeated to achieve efficient
`
`stimulation of one or more target zones for production of hydrocarbons. Id. at 9:59-
`
`67; 11:45-51. Moreover, the ‘543 patent states that, based on the measurements
`
`taken from the monitoring systems described above,
`
`the pumping schedule,
`
`injection rate, fluid viscosity or proppant loading, or injection of a diversion agent,
`
`for example, may be modified to provide optimal and efficient treatment of a target
`
`zone. Id. at 7:25-56.
`
`The ‘529 patent admits that diverting using either a mechanical device or
`
`chemical fluids is known in the art. Id. at 1:63-2:38. Mechanical diverting devices
`
`known in the art include ball sealers, bridge plugs, packers, down-hole valves,
`
`sliding sleeves, and baffle/plug combinations; and particulate placement. Id. at
`
`1:67-2:27. Known chemical diverting fluids include viscous fluids, gels, foams, or
`
`other fluids. Id. at 2:31-33. In addition, the diversion agent may comprise a
`
`degradable material. Id. at 8:17-23.
`
`C.
`
`Summary of the Prosecution of US 7,934,556, US 8,220,543, and
`US 8,646,529
`
`U.S. Patent No. 7,934,556 (“the ‘556 patent”) was filed on May 21, 2007 as
`
`Application No. 11/751,172 (“the ‘172 application”) which claimed benefit to a
`
`15
`
`
`
`provisional application filed June 28, 2006. U.S. Patent No. 8,220,543 (“the ‘543
`
`patent”) was filed on May 10, 2011 as Application No. 13/045,146 (“the ‘146
`
`application”) and is a divisional application of the ‘556 patent. U.S. Patent No.
`
`8,646,529 (“the ‘529 patent”) was filed July 12, 2012 as Application No.
`
`13/547,159 (“the ‘159 application”) and is a divisional application of the ‘543
`
`patent.
`
`Below is a summary of each of their prosecution histories of each of the
`
`‘556, ‘543, and ‘529 patents, presented in the order of their filing. Since the
`
`claimed subject matter of each of the ‘556, ‘543, and ‘529 patents is very similar,
`
`the prosecution of each of their respective applications informs the overall reason
`
`for why the ‘556, ‘543, and ‘529 patents were allowed – which Petitioner submits
`
`was in error - in particular, the ‘556, ‘543, and ‘529 patent gained allowance
`
`through a series of actions wherein the Applicant
`
`took advantage of a
`
`typographical error by the Examiner.
`
`US 7,934,556
`
`In a Response filed on June 23, 2008, Applicant added claims 55-60 to the
`
`‘172 application. Of particular note, claim 58 of the ‘172 application included the
`
`limitation “wherein the second target zone is above the first target zone.” Ex.1008
`
`at pg. 141.
`
`16
`
`
`
`Thereafter, claims 55-58 were rejected seven times, including in the Final
`
`Office action dated December 13, 2010 utilizing essentially the same rejection
`
`language. Namely that “it would have been an obvious matter of design choice to
`
`target the zones as claimed, since applicant has not disclosed that targeting the
`
`zones in a certain order solves any stated problem or is for any particular purpose.”
`
`Ex.1008 at pg. 324.
`
`Despite rejecting the claims, however, on the following page of that same
`
`Final Office action, the Examiner erroneously also indicated that the claims were
`
`allowable.2 Ex.1008 at pg. 325.
`
`Instead of clarifying the inconsistency, however, the Applicant instead took
`
`advantage of the Examiner’s erroneous designation and in the Response dated
`
`January 28, 2011 (Ex.1008 at pgs.330-335), Applicant
`
`rewrote rejected
`
`independent prosecution claim 53 (that became issued claim 1 of the ‘556 patent)
`
`to include the limitation of claim 58 which recited that “the second target zone is
`
`above the first target zone.” Ex.1008 at pgs.332.
`
`2 Throughout much of the prosecution, the heading for the Examiner’s rejection
`
`does not match the narrative of the same. As such, it appears that the “Allowable
`
`Subject Matter” followed the language of the headings and lost sight of the actual
`
`rejection.
`
`17
`
`
`
`Claims 59 and 60 (that became issued claims 12 and 13, respectively of the
`
`‘556 patent) were also amended to including that same limitation that “the second
`
`target zone is above the first target zone.” Ex.1008 at pgs.333-334.
`
`Despite the obvious flaw in the prosecution history, the next action by the
`
`office was a Notice of Allowance allowing those claims without the Applicant ever
`
`informing the Office of the issue.
`
`US 8,220,543
`
`A similar mistake was made by the same Examiner in the divisional
`
`application 13/045,146 (“the ‘146 application”) of the ‘556 patent, and which
`
`matured into US 8,220,543 (“the ‘543 patent”). More specifically, Applicant
`
`submitted claim 26 in a Preliminary Amendment filed March 10, 2011 in the ‘146
`
`application. Claim 26 included the limitation “wherein the measured wellbore
`
`parameter is indicative of diversion.” Ex.1009 at pg.30.
`
`In the first Non-Final Office action dated September 20, 2011, the Examiner
`
`rejected claim 26 as being obvious over US Publication 2003/0106690 to Boney et
`
`al.
`
`(“Boney”)
`
`in view of US Publication 2007/0272407 to Lehman et al.
`
`(“Lehman”). As he did in the ‘556 patent,
`
`the Examiner again erroneously
`
`designated claim 26 allowable subject matter on the next page of the same Non-
`
`Final Office action. And again, instead of clarifying the inconsistency with the
`
`Examiner, Applicant took immediate advantage of the erroneous designation and
`
`18
`
`
`
`amended rejected independent claims 21, 28 and 34 (that became claims 15, 21 and
`
`27 of the ‘543 patent, respectively) to include the erroneously designated allowable
`
`limitation “the measured wellbore parameter is indicative of diversion.” Ex.1009 at
`
`pgs.128-132. Subsequently, the office issued a Notice of Allowance allowing those
`
`claims. 3
`
`US 8,646,529
`
`These Examiner mistakes and Applicant exploitations further infect US
`
`8,646,529 (“the ‘529 patent”), issued from application 13/547,159 (“the ‘159
`
`application”) which is a divisional of the ‘543 patent. All of the original claims of
`
`the ‘159 application, namely prosecution claims 53-72, were rejected in the first
`
`Office action dated April 8, 2013 exclusively based on obviousness-type double
`
`patenting over claims 12, 15-26, 32 and 33 of its parent, the ‘543 patent, and were
`
`subsequently overcome via a terminal disclaimer.
`
`The subject matter of each of these claims, however, was found obvious by
`
`the Examiner during the prosecution of the ‘543 patent over Boney in view of
`
`Lehman. But for the erroneous allowance, as explained above in the ‘543 patent,
`
`these claims would not have issued. As the Examiner now erroneously accepted
`
`3 Claims 1-4 and 27 issued after a terminal disclaimer was filed to overcome a
`
`double patenting rejection against the claims of the ‘556 patent.
`
`19
`
`
`
`the subject matter of the ‘543 patent as patentable, the claims of the ‘529 patent
`
`were only rejected based on obviousness-type double patenting grounds over the
`
`‘543 patent.
`
`VII. OVERVIEW OF THE PRIOR ART
`
`A.
`
`Summary of U.S. Patent No. 7,273,104 to Wilkinson
`
`U.S. Patent No. 7,273,104 is entitled “Method of Pumping an ‘In-the-
`
`Formation’ Diverting Agent
`
`in a Lateral Section of an Oil and Gas Well.”
`
`Ex.1007. Wilkinson was filed on J
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