Baker Hughes Incorporated v. Rapid Completions LLC

1. Case Identification

• Case #: IPR2016-00657
• Patent #: 9,074,451
• Filed: February 25, 2016
• Petitioner(s): Baker Hughes Incorporated, Baker Hughes Oilfield Operations, Inc., Pegasi Energy Resources Corp., and Pegasi Operating, Inc.
• Patent Owner(s): Packers Plus Energy Services, Inc.
• Challenged Claims: 1-8

2. Patent Overview

• Title: Method and Apparatus for Wellbore Fluid Treatment
• Brief Description: The ’451 patent discloses a system for selectively stimulating zones in an oil well using a tubing string with multiple ports. The system employs sleeve closures that are actuated by a single plug, which can act either indirectly via an intermediate port-opening sleeve or directly on the sleeve closures themselves.

3. Grounds for Unpatentability

Ground 1: Anticipation over Themig

• Claims 1-8 are anticipated by Themig under 35 U.S.C. §102(b).
  • Prior Art Relied Upon: Themig (Patent 7,108,067).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was predicated on Petitioner’s argument that the ’451 patent is not entitled to a priority date earlier than July 5, 2010 (see Section 5 below). Themig, issued in 2006, predates this effective filing date. Petitioner asserted that Themig’s specification is identical to that of the ’451 patent, including the figures to which the claims are purportedly directed, and therefore discloses every limitation of the challenged claims.

Ground 2: Anticipation over Flores

• Claims 1-8 are anticipated by Flores under 35 U.S.C. §102(e).
  • Prior Art Relied Upon: Flores (Patent 8,215,411).
  • Core Argument for this Ground:
    • Prior Art Mapping: Flores, filed in 2009, also predates the asserted effective filing date of the ’451 patent. Petitioner argued Flores discloses a system where a single ball directly actuates multiple "cluster sleeves" before stopping at a final "isolation sleeve." Flores’ cluster sleeves feature deformable seats that allow the actuating ball to pass through after shifting the sleeve to an open position, thus meeting the claim limitation of a single plug actuating multiple sleeves and passing therethrough.

Ground 5: Obviousness over Echols and Thomson

• Claims 1-8 are obvious over Echols in view of Thomson.
  • Prior Art Relied Upon: Echols (Patent 5,375,662) and Thomson (SPE 37482, 1997).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as an alternative in the event the patent is granted its earliest claimed priority date of 2002. Echols taught a sliding sleeve arrangement with a C-ring seat that actuates a sleeve and then releases the actuating ball to proceed to the next sleeve. Thomson taught a multi-zone completion system using a series of sliding sleeve tools (MSAFs) actuated by progressively larger balls. Petitioner argued it would have been obvious to incorporate Echols' releasable ball-seat mechanism into Thomson's multi-zone system.
    • Motivation to Combine: A POSITA would combine Echols and Thomson to increase the number of fluid injection points within each of Thomson's treatment zones. This modification would enable more effective stimulation of longer or thicker geological formations, a known method for improving well productivity.
    • Expectation of Success: A POSITA would have had a high expectation of success because Echols explicitly suggested its device could be used for injecting completion chemicals, the very purpose of Thomson's system. The combination was a predictable application of known technologies to achieve a known benefit.
• Additional Grounds: Petitioner asserted additional obviousness challenges based on Flores alone, Flores in view of Whiteley, and Echols and Thomson in view of Whiteley, but relied on similar design modification theories.

4. Key Claim Construction Positions

• "actuatable by a...plug" and "engaging...on": Petitioner argued for a broad construction of these terms to include both direct actuation (plug contacts sleeve closure) and indirect actuation (plug contacts an intermediate port-opening sleeve which then contacts the sleeve closure). This construction is critical because the only embodiment in the ’451 patent showing a single plug actuating multiple sleeves is the indirect method. Petitioner contended that a narrow construction requiring direct contact would render the claims invalid for lacking written description support in the specification.
• "sleeve closure": Petitioner argued this term refers specifically to a port-closure sleeve (which covers/uncovers a port) and not the intermediate port-opening sleeve described in the specification. This distinction is based on the function, as the port-opening sleeve does not itself "close" a port but rather actuates the sleeves that do.

5. Key Technical Contentions (Beyond Claim Construction)

• Priority Date and Written Description: The central technical contention of the petition is that challenged claims 1-8 are not entitled to a priority date earlier than July 5, 2010. Petitioner argued that the claims are drafted broadly to cover systems both with and without an intermediate port-opening sleeve. However, all priority applications filed before 2010 allegedly disclosed only the embodiment with the intermediate port-opening sleeve, making it an essential element of the invention as originally described. By analogizing to ICU Medical, Inc. v. Alaris Medical Sys., Inc., Petitioner argued that the "port-opening sleeveless" claims lack adequate written description support under §112 in the earlier applications and can only claim priority from the ’412 application (filed July 5, 2010), which was the first to disclose embodiments without the intermediate sleeve. This contention is foundational to the anticipation grounds over Themig and Flores.

6. Relief Requested

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