PTAB

IPR2016-01000

Packers Plus Energy Services Inc. v. Baker Hughes Oilfield Operations, Inc.

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1. Case Identification

2. Patent Overview

  • Title: Restriction Engaging System
  • Brief Description: The ’656 patent describes a system used in oil and gas recovery for selectively plugging a well bore. The system uses a seat mechanism that allows a predetermined number of uniformly sized balls (“restriction engagers”) to pass through it before it activates to catch a subsequent ball, thereby avoiding the prior art problem of requiring progressively smaller balls and seats at increasing depths.

3. Grounds for Unpatentability

Ground 1: Claims 1-17 are anticipated by Howell under 35 U.S.C. §102.

  • Prior Art Relied Upon: Howell (Application # 2009/0308588)
  • Core Argument:
    • Prior Art Mapping: Petitioner argued that Howell, a published patent application, discloses every element of the challenged claims. Independent claim 1 recites a system with a restriction engager (ball), a restriction (seat), and a counter configured to be "responsively indexed" each time a ball passes, allowing a selected number of passages before preventing the next ball from passing. Petitioner asserted that Howell describes this exact functionality for the same purpose: overcoming the limitations of using differently sized balls in well bore servicing. Howell's "indexing assembly" (the counter) uses a control lug moving through a patterned slot to count ball passages. After a pre-set number of balls pass, the mechanism locks, preventing the deformable collet fingers (the restriction) from expanding, thereby catching the next ball to actuate a stimulation sleeve. Petitioner contended this directly maps to the limitations of claim 1.
    • Key Aspects: Petitioner argued that Howell's teachings are nearly identical to those of the ’656 patent, particularly its second embodiment, which uses deformable arms (a collet) and a rotationally indexable sleeve. A central part of the argument was that although Howell was cited during prosecution of the ’656 patent, the examiner failed to appreciate its relevance, especially after the claims were amended to add the "responsively indexed" limitation, a feature Petitioner contended is explicitly detailed in Howell. Petitioner also provided a "corrected" version of Howell's Figure 6B, arguing that a POSITA would have readily understood the intended operation of the indexing mechanism despite apparent drafting errors in the original figure.

4. Key Claim Construction Positions

  • “moves longitudinally” (claims 13-15): Petitioner proposed this term means movement along the lengthwise direction of the well bore, which is consistent with the patent's figures and description of components moving along the borehole.
  • “restriction engager” (claims 1-8, 10-12): Petitioner asserted this should be construed as a member, such as a ball, that can either pass through or sealingly engage (obturate) a movable seat arrangement. This construction is based on the patent's explicit example of a ball serving as the engager.
  • “restriction” (claims 1, 3-8, 10-12, 15): Petitioner proposed this term means an element, such as a seat, that is formed of one or more components and blocks the movement of a ball or other obturating member. This is supported by the patent's equation of a "restriction" with a "seat arrangement."
  • “operable communication” (claim 4): Petitioner argued this means that two components are connected, directly or indirectly, such that an action by one component causes a corresponding action in the other. This was argued to be broad enough to cover a counting mechanism whose actions cause a seat to move between open and closed positions.

5. Key Technical Contentions (Beyond Claim Construction)

  • Interpretation of Howell's Indexing Mechanism: A critical technical argument was that the indexing mechanism in Howell, specifically its depiction in Figure 6B, was drawn with misplaced reference numerals. Petitioner contended, with support from an expert declaration, that a POSITA would have immediately recognized these drafting errors and understood the intended functionality. According to Petitioner, the "unwrapped" view of the indexing slot, when correctly interpreted, clearly shows a control lug moving through a series of "stop" and "release" positions to count ball passages before reaching a final locked position, directly anticipating the "responsively indexed" counter of the ’656 patent.

6. Relief Requested

  • Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 1-17 of the ’656 patent as unpatentable.