PTAB

IPR2016-00657

Baker Hughes Inc v. Rapid Completions LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method and Apparatus for Wellbore Fluid Treatment
  • Brief Description: The ’451 patent discloses a system for treating oil wells by injecting fluids through a tubing string. The system uses a single plug, such as a ball, to sequentially actuate a plurality of sliding sleeve closures, which open ports to allow fluid treatment at multiple locations along the wellbore.

3. Grounds for Unpatentability

Ground 1: Anticipation over Themig

  • Legal Basis: Claims 1-8 are anticipated under 35 U.S.C. § 102 by Themig.
    • Prior Art Relied Upon: Themig (Patent 7,108,067).
    • Core Argument for this Ground:
      • Prior Art Mapping: This argument was predicated on Petitioner’s assertion that the ’451 patent is not entitled to a priority date earlier than July 5, 2010 (see Section 5 below). Petitioner argued that Themig, which issued in 2006, is therefore invalidating prior art. Themig’s specification is identical to the ’451 patent’s specification and discloses the same embodiments and figures. Consequently, Petitioner contended that Themig discloses every limitation of the challenged claims.

Ground 2: Anticipation or Obviousness over Flores

  • Legal Basis: Claims 1-8 are anticipated or, in the alternative, obvious over Flores.
    • Prior Art Relied Upon: Flores (Patent 8,215,411).
    • Core Argument for this Ground:
      • Prior Art Mapping: Flores, filed in 2009, was presented as prior art under the same priority date theory as Themig. Petitioner argued Flores discloses an apparatus for staged well fracturing using a single ball to actuate multiple sleeves. Flores’s system includes “cluster sleeves” with deformable seats that a ball engages to shift the sleeve open; the seat then yields to allow the ball to pass through to the next sleeve downhole. This process of using a single plug to actuate multiple sleeves and pass through each one was argued to teach the core limitations of challenged claims 1-5 and 7-8. For claim 6, which requires a "size restricted" port to create a pressure drop, Petitioner asserted that ports used in high-pressure fracturing operations as described in Flores would inherently restrict flow and create such a drop.

Ground 3: Obviousness over Echols and Thomson

  • Legal Basis: Claims 1-8 are obvious under 35 U.S.C. § 103 over Echols in view of Thomson.

    • Prior Art Relied Upon: Echols (Patent 5,375,662) and Thomson (a 1997 Society of Petroleum Engineers paper).
    • Core Argument for this Ground:
      • Prior Art Mapping: This ground was argued as an alternative, applicable if the ’451 patent were afforded its earliest claimed priority date of 2002. Thomson disclosed a well-known method for treating multiple zones using a series of sliding sleeve tools (MSAFs) actuated by progressively larger balls that seat permanently. Echols disclosed a specific dual-sleeve arrangement where a single ball actuates a sleeve and then passes through it after shearing pins and expanding a C-ring.
      • Motivation to Combine: A POSITA would combine Echols’ pass-through sleeve mechanism with Thomson’s established multi-zone treatment system. The motivation was to increase the number of fluid injection points within a single treatment zone, which was a known method for improving the efficiency and productivity of well stimulation. Echols explicitly suggested its device could be used for injecting completion chemicals.
      • Expectation of Success: Both references operate in the same field of downhole sliding sleeve technology for wellbore treatment. A POSITA would have found their combination predictable and would have had a high expectation of success in achieving a system that allowed a single ball to actuate multiple injection points within a single isolated zone.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations adding Whiteley (Patent 6,006,838) to Flores or to the Echols/Thomson combination to explicitly teach varying port sizes to create a desired pressure drop.

4. Key Claim Construction Positions

  • Term: “actuatable by a first plug” (claims 1, 6-8) and “engaging the first plug on the first sliding sleeve” (claims 2-5).
    • Petitioner’s Position: Petitioner argued that these terms must be construed to encompass both direct actuation (where the plug physically contacts the claimed sleeve) and indirect actuation (where the plug contacts an intermediate component, like a port-opening sleeve, which in turn actuates the claimed sleeve).
    • Significance: This construction was central to Petitioner's arguments. Petitioner contended that the only embodiment in the ’451 patent that shows a single plug actuating multiple sleeves does so indirectly. Therefore, a construction requiring direct contact would be improper as it would exclude the patent’s only disclosed embodiment for the claimed invention. This broad construction was also foundational to the priority date challenge.

5. Key Technical Contentions (Beyond Claim Construction)

  • Invalid Priority Claim: Petitioner dedicated a significant portion of its argument to contending that claims 1-8 are not entitled to a priority date earlier than July 5, 2010.
    • Contention: The challenged claims, under the broad construction covering both direct and indirect actuation, are not supported by the written description of the pre-2010 priority applications. Petitioner argued those earlier applications only disclosed an embodiment with an essential intermediate port-opening sleeve (indirect actuation) and provided no disclosure of a system where a plug could actuate the sleeves directly. The ability to claim a "sleeveless" system was first enabled by the application filed on July 5, 2010.
    • Relevance: Invalidating the early priority claim was critical, as it would make Themig (2006) and Flores (2009) available as prior art, forming the basis for Petitioner’s primary anticipation grounds.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-8 of Patent 9,074,451 as unpatentable.