Baker Hughes Incorporated 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 methods and apparatus for selectively stimulating or treating multiple zones in a hydrocarbon well, particularly within an open (uncased) wellbore. The system uses a tubing string assembly comprising multiple solid body packers to isolate zones and a series of sliding sleeves, actuated by progressively sized balls or hydraulic pressure, to open ports for fluid treatment.

3. Grounds for Unpatentability

Ground 1: Claims 1-9 are obvious over Thomson, Ellsworth, and Halliburton

• Prior Art Relied Upon: Thomson (a 1997 Society of Petroleum Engineers paper), Ellsworth (a 1999 conference paper), and Halliburton (a 1997 product catalog).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Thomson disclosed a multi-zone completion system using a tubing string with ball-actuated sliding sleeves (“MSAF tools”) and hydraulically-set retrievable packers for fracturing operations. Although Thomson was used in a cased hole, Petitioner contended Ellsworth explicitly taught that solid body packers, like those in Thomson, were effectively used for stimulation in open-hole completions. The combination of Thomson and Ellsworth thus taught nearly all elements of the challenged claims. The final element, a hydraulically-actuated sleeve that opens without a ball, was supplied by Halliburton’s "Pump Open Plug," which used shear pins and hydraulic pressure to open.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Thomson and Ellsworth to gain the known cost and efficiency benefits of performing multi-zone stimulation in an open hole where formation integrity allowed it. A POSITA would have been further motivated to substitute Thomson’s failure-prone "pump-out plug" with Halliburton’s more reliable, non-expelling Pump Open Plug. Thomson itself identified its plug as a crucial component prone to failure, providing explicit motivation to seek a more reliable alternative like Halliburton's to avoid operational failures and wellbore debris.
  • Expectation of Success: The combination involved applying known tools (solid body packers) in known environments (open holes, per Ellsworth) and substituting one known component (Thomson's plug) for another known, more reliable component (Halliburton's plug) to achieve the predictable result of a functional and more dependable open-hole stimulation system.

Ground 2: Claims 1-9 are obvious over Thomson, Ellsworth, and Halliburton (Alternative)

• Prior Art Relied Upon: Thomson (a 1997 Society of Petroleum Engineers paper), Ellsworth (a 1999 conference paper), and Halliburton (a 1997 product catalog).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative in case the Patent Owner argued that Thomson’s packers were not "solid body packers" as claimed. Petitioner argued that Ellsworth disclosed a hydraulically-set, retrievable solid body packer that was successfully used for stimulation in open-hole completions.
  • Motivation to Combine: If Thomson’s packers were deemed unsuitable, a POSITA would have been motivated to substitute them with Ellsworth's proven solid body packers. The motivation was to reduce the risk of failure by using a packer type that Ellsworth had already demonstrated to be successful for zoned stimulation in the specific type of carbonate formation where open-hole completions were viable. This was a simple substitution of one known packer for another to ensure the system's success.
  • Expectation of Success: A POSITA would have had a high expectation of success, as the substitution involved using a component (Ellsworth's packer) that was already proven to be effective for the intended purpose (open-hole isolation) in the intended environment.

Ground 3: Claims 1-9 are obvious over Thomson, 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, it proposed adding a valve taught by Kammerer to the Thomson system. Kammerer disclosed a hydraulically-actuatable valve with an inner sleeve that could be opened by applying tubing pressure, which shears retaining pins, without requiring a ball.
  • Motivation to Combine: A POSITA would add Kammerer's valve to the Thomson system to increase reliability and create redundancy. Since Thomson's primary operational risk was the failure of its plug to expel, which would block the flow path for all activation balls, adding Kammerer's valve above the plug would provide an alternative, hydraulically-actuated flow path. If the plug failed, the Kammerer valve could still be opened with pressure to enable stimulation of the lowermost zone and passage for subsequent balls, thus salvaging the operation.
  • Expectation of Success: A POSITA would have expected success because adding Kammerer's valve was a straightforward threading of one known component into another known system to solve a well-documented problem (plug failure) by adding redundancy, a common and predictable engineering solution.

4. Key Claim Construction Positions

• "solid body packer" (claim 1): Petitioner proposed the construction "a mechanically or hydraulically set packer including a solid, mechanically extrudable packing element." This construction was argued to be consistent with the patent's provisional application and was critical for distinguishing the claimed invention from prior art inflatable packers while simultaneously mapping the claim language onto the packers disclosed in Thomson and Ellsworth.
• "piston" (claims 4-6): Petitioner proposed construing "piston" as "a sliding piece moved by or moving against fluid pressure." This broad construction was essential to Petitioner's argument that the hydraulically-actuated sliding sleeves in the prior art (e.g., Halliburton's Pump Open Valve and Kammerer's valve sleeve) met the claim limitations requiring a "fluid actuated piston."

5. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Entitlement: Petitioner argued that claims 1-9 were not entitled to the priority date of their provisional applications. Petitioner contended that the key limitation of a "hydraulically actuated sliding sleeve" that opens without engaging a "fluid conveyed sealing device" (e.g., a ball) lacked written description support in the provisional filings. If this argument were successful, it would confirm the status of the Thomson, Ellsworth, and Halliburton references as prior art under 35 U.S.C. §102(b).

6. Relief Requested

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