Halliburton Energy Services Inc v. Schlumberger Technology Corp

1. Case Identification

• Case #: IPR2017-001574
• Patent #: 9,322,260
• Filed: June 12, 2017
• Petitioner(s): Halliburton Energy Services Inc.
• Patent Owner(s): Schlumberger Technology Corporation
• Challenged Claims: 24-26, 30-33

2. Patent Overview

• Title: Method of Treating a Subterranean Formation
• Brief Description: The ’260 patent relates to methods for treating subterranean formations during hydraulic fracturing. The invention discloses using a treatment fluid containing a blend of different-sized, degradable particulates to temporarily create a plug in a wellbore perforation, thereby diverting treatment fluids to other zones.

3. Grounds for Unpatentability

Ground 1: Obviousness over Clark and Gruesbeck - Claims 24-26 and 30-32 are obvious over Clark in view of Gruesbeck.

• Prior Art Relied Upon: Clark (Patent 2,838,116) and Gruesbeck (a 1982 Society of Petroleum Engineers article titled “Particle Transport Through Perforations”).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Clark disclosed the core method of treating a wellbore by injecting a treatment fluid containing a blend of particulates to create temporary plugs for diverting fracturing fluid. Clark specifically taught using a "first amount" of larger particles (4-10 mesh) to form an initial bridge and a "second amount" of smaller particles (10-100 mesh) to plug the remaining interstices. Petitioner contended these disclosed size ranges establish a ratio of particle sizes (1.0 to 31.9 times smaller) that overlaps the claimed range (1.6 to 20 times smaller), creating a prima facie case of obviousness. Clark also taught that the particles were temporary, removable, non-fibrous, and could be non-homogenous (e.g., using carnauba wax).
  • Motivation to Combine: Petitioner asserted that Gruesbeck provided the well-understood, empirical data and geometric principles governing particle bridging in perforations. Gruesbeck established a predictable relationship between the perforation diameter and the average particle size required to form a stable bridge. A person of ordinary skill in the art (POSITA) seeking to optimize the known plugging method of Clark would combine it with the foundational teachings of Gruesbeck to select particle sizes that would predictably and reliably bridge perforations.
  • Expectation of Success: Given that Clark disclosed a functioning method and Gruesbeck provided the fundamental physics of why it worked, a POSITA would have had a high expectation of success. Applying Gruesbeck’s sizing principles to Clark’s materials was merely the application of known principles to a known product to achieve a predictable result.

Ground 2: Obviousness over Scheffel and Gruesbeck - Claims 24-25 and 30-32 are obvious over Scheffel in view of Gruesbeck.

• Prior Art Relied Upon: Scheffel (Patent 3,954,629) and Gruesbeck.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Scheffel provided an alternative primary reference teaching a composition for temporarily plugging high-temperature formations. Scheffel's composition was a blend of solid particles with multiple size distributions, including a "first amount" (e.g., 6-20 mesh) and a "second amount" (e.g., 20-40 mesh). Petitioner calculated that the ratio between these disclosed size ranges (1.0 to 8.0 times smaller) overlapped the claimed ratio. Further, Scheffel's particles were composed of a homogeneous mixture of multiple polymers (polyethylene, polyamide, etc.), which Petitioner argued met the "non-homogenous" limitation because the particles themselves were composite materials.
  • Motivation to Combine: The motivation was identical to that asserted for Clark. A POSITA would combine Scheffel's specific plugging composition with Gruesbeck's general and widely accepted teachings on particle-to-hole size ratios to ensure optimal and predictable bridging performance in a given application.
  • Expectation of Success: Success was predictable because the combination involved applying established engineering principles (Gruesbeck) to a known plugging agent (Scheffel) to achieve the expected outcome of effective perforation plugging.

Ground 3: Obviousness over Erbstoesser and Gruesbeck - Claims 24-25 and 30-33 are obvious over Erbstoesser in view of Gruesbeck.

• Prior Art Relied Upon: Erbstoesser (Patent 4,716,964) and Gruesbeck.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Erbstoesser disclosed using degradable polyester polymers, specifically including polylactic acid (PLA), as a fluid loss control agent, thus teaching the limitation of claim 33. Erbstoesser taught using different particle sizes, including larger "ball sealers" (12.7mm - 25.4mm) and smaller "intermediate particles" (850-1500 microns). Petitioner argued the size ratio between these groups (8.5 to 29.88 times smaller) overlapped the claimed range. Erbstoesser also taught that its particles could be made non-homogenous by including other materials, such as colloidal polymers or microspheres.
  • Motivation to Combine: As with the other grounds, a POSITA would have been motivated to apply the well-known bridging principles from Gruesbeck to Erbstoesser's degradable PLA particles to reliably and predictably plug perforations of a known size.
  • Expectation of Success: A POSITA would have reasonably expected that applying Gruesbeck’s empirical sizing rules to Erbstoesser’s specific degradable material would successfully create a temporary plug.
• Additional Grounds: Petitioner asserted further obviousness challenges, including adding Watanabe (Patent 3,316,965) to the Clark/Gruesbeck combination as an alternative way to teach non-homogenous particles. Other grounds targeted claim 33's polylactic acid limitation by adding Erbstoesser to the primary Clark/Gruesbeck and Scheffel/Gruesbeck combinations.

4. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 24-26 and 30-33 of Patent 9,322,260 as unpatentable.