Baker Hughes Inc v. Rapid Completions LLC

1. Case Identification

• Case #: IPR2016-01380
• Patent #: 9,303,501
• Filed: September 2, 2016
• Petitioner(s): Baker Hughes Incorporated and Baker Hughes Oilfield Operations, Inc.
• Patent Owner(s): Packers Plus Energy Services, Inc.
• Challenged Claims: 1-9

2. Patent Overview

• Title: Method and Apparatus for Wellbore Fluid Treatment
• Brief Description: The ’501 patent discloses a system for selectively treating or stimulating multiple zones within an uncased, or "open hole," wellbore. The system uses a tubing string equipped with multiple ports, each controlled by a ball-actuated sliding sleeve, with zones isolated by solid body packers.

3. Grounds for Unpatentability

Ground 1: Claims 1-9 are obvious over Thomson in view of Ellsworth and Halliburton

• Prior Art Relied Upon: Thomson (a 1997 Society of Petroleum Engineering paper), Ellsworth (a 1999 conference paper), and Halliburton (a 1997 product catalog).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Thomson taught the core well completion system: a tubing string with ball-actuated sliding sleeves ("MSAF tools") and hydraulic-set packers to isolate and treat multiple zones. However, Thomson’s system was for cased wells. Ellsworth was cited to teach the application of such systems, particularly those using solid body packers, in uncased, open-hole completions. To meet the limitation of a hydraulically actuated sleeve that opens without a fluid-conveyed sealing device (like a ball), Petitioner asserted that a Person of Ordinary Skill in the Art (POSITA) would have replaced Thomson’s failure-prone “pump-out plug” with the non-expelling, hydraulically actuated “Pump Open Plug” disclosed by Halliburton.
  • Motivation to Combine: A POSITA would combine Thomson and Ellsworth to gain the significant cost and time savings of open-hole completions, a known and accepted practice taught by Ellsworth for systems like Thomson's. The motivation to then incorporate Halliburton’s plug was explicit in Thomson, which detailed operational failures of its own plugs and the need for a more reliable solution. Halliburton’s plug was a known, more reliable alternative that also avoided leaving debris in the wellbore, representing a simple substitution of one known element for another to achieve a predictable result.
  • Expectation of Success: A POSITA would have had a high expectation of success. Ellsworth had already demonstrated the successful use of solid body packers in open-hole environments, and the Halliburton plug was a commercially available component designed for a similar function.

Ground 2: Claims 1-9 are obvious over Thomson in view of Ellsworth and Halliburton (Alternative Theory)

• Prior Art Relied Upon: Thomson, Ellsworth, and Halliburton.
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative in the event the Patent Owner argued Thomson’s packers were not "solid body packers" as claimed. In this scenario, Petitioner contended it would have been obvious to replace Thomson’s packers with the packers disclosed in Ellsworth, which were explicitly described as retrievable, hydraulically activated solid body packers. The remainder of the claim limitations would be met by the combination of Thomson, the substituted Ellsworth packers, and Halliburton, as argued in Ground 1.
  • Motivation to Combine: The primary motivation was risk reduction. A POSITA would substitute Ellsworth’s packers because they were proven to work successfully in open-hole zoned stimulations in the specific carbonate formations discussed. Using a proven component (Ellsworth’s packer) in place of a potentially unsuitable one (Thomson’s) in an open-hole application is a straightforward design choice to ensure operational success.

Ground 3: Claims 1-9 are obvious over Thomson in view of Ellsworth and Kammerer

• Prior Art Relied Upon: Thomson, Ellsworth, and Kammerer (Patent 3,306,365).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented an alternative to replacing Thomson’s plug with Halliburton’s. Instead, Petitioner argued a POSITA would add a hydraulically-actuatable valve like the one disclosed in Kammerer to the Thomson system. The Kammerer valve included a sliding sleeve held by shear pins that could be opened by applying sufficient tubing pressure, without requiring a ball. This valve would be placed above Thomson’s existing pump-out plug.
  • Motivation to Combine: The motivation was to increase system reliability and add redundancy. Thomson identified plug failure as a critical issue that could disable the entire completion assembly by preventing a flow path for the actuating balls. Adding Kammerer's valve would create a redundant, hydraulically activated flow path. If Thomson’s plug failed to expel, the Kammerer valve could be opened via pressure to allow stimulation of the lowermost zone, mitigating a catastrophic failure and addressing the need for a "more reliable and cost effective solution" stated in Thomson.

4. Key Claim Construction Positions

• "solid body packer" (claim 1): Petitioner proposed a construction of "a mechanically or hydraulically set packer including a solid, mechanically extrudable packing element." This construction, supported by the patent's provisional application, was crucial for distinguishing the claimed invention from prior art inflatable packers and for mapping the packers of Thomson and Ellsworth to the claims.
• "piston" (claims 4-6): Petitioner proposed a construction of "a sliding piece moved by or moving against fluid pressure." This definition was important for arguing that the sliding sleeve component of the Halliburton Pump Open Plug and the Kammerer valve met the "fluid actuated piston" limitation in dependent claims 4-6.

5. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Entitlement: Petitioner argued that claims 1-9 were not entitled to the filing date of their provisional applications. The Petitioner contended that the provisional applications lacked written description support for the key limitation of a "hydraulically actuated sliding sleeve" that opens without engaging a "fluid conveyed sealing device." Because this feature was allegedly not disclosed until the non-provisional filing, the effective priority date was later, which confirmed that the Thomson, Ellsworth, and Halliburton references qualified as prior art under §102(b).

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-9 of the ’501 patent as unpatentable.