Halliburton Energy Services Inc v. Schlumberger Technology Corp

1. Case Identification

• Case #: IPR2017-02074
• Patent #: 7,617,873
• Filed: September 25, 2017
• Petitioner(s): Halliburton Energy Services Inc.
• Patent Owner(s): Schlumberger Technology Corporation
• Challenged Claims: 20-40

2. Patent Overview

• Title: Using Fiber Optics In Coiled Tubing
• Brief Description: The ’873 patent describes methods and an apparatus for performing wellbore operations. The system involves deploying a "fiber optic tether" inside coiled tubing, which is optically connected to a downhole tool and sensor to obtain real-time measurements and adjust the operation accordingly.

3. Grounds for Unpatentability

Ground 1: Claims 20-22 are obvious over Tubel

• Prior Art Relied Upon: Tubel (Patent 6,268,911).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Tubel (’911 patent) discloses every limitation of method claim 20. Tubel teaches systems for monitoring and controlling downhole operations using fiber optics disposed within a conduit inside coiled tubing. This conduit is argued to meet the ’873 patent's definition of a "non-cable fiber optic tether." Tubel further discloses deploying the coiled tubing with sensors and borehole tools, optically connecting them, operating the sensors, and sending data and control signals over the fiber optic line to adjust the operation in real-time. Dependent claim 21 (metal tube) is taught by Tubel's disclosure of using a "conduit," which a person of ordinary skill in the art (POSITA) would understand to be metal in a harsh wellbore environment. Dependent claim 22 (leaving the tether in the wellbore) is taught by Tubel's disclosure of "permanently installed" sensors.
  • Motivation to Combine: The argument for obviousness over a single reference relied on combining different disclosed embodiments within Tubel. Petitioner asserted a POSITA would be motivated to combine Tubel's teaching of an optically-activated tool (from its Fig. 12) with its general system for monitoring (Fig. 10) to achieve predictable results, such as reduced system weight and cost.
  • Expectation of Success: A POSITA would have had a high expectation of success as it involved combining known elements for their intended purposes to yield predictable results.

Ground 2: Claims 24-27 are obvious over Tubel in view of Kluth

• Prior Art Relied Upon: Tubel (Patent 6,268,911) and Kluth (Patent 6,532,839).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 1, adding Kluth to teach the specific dimensional limitation in claim 24 ("an outer diameter of the fiber optic tether is less than about 0.125 inches"). Petitioner argued that while Tubel teaches deploying a fiber optic tether in a conduit, Kluth explicitly discloses that such a conduit can be a standard steel hydraulic control line with an outer diameter of 1/8 inch (0.125 inches). Kluth's disclosure of a sensor measuring properties like temperature and pressure in real-time was mapped to dependent claims 25 and 26. Tubel's disclosure of multilateral wells was used to meet the limitations of claim 27.
  • Motivation to Combine: A POSITA would combine Tubel's system with Kluth's teachings because both address deploying fiber optics in conduits for downhole sensing. A POSITA implementing Tubel's system would look to well-known components, like the standard-sized hydraulic lines described in Kluth, to use as the conduit.
  • Expectation of Success: Success was expected because it involved using a standard, dimensionally appropriate component (Kluth's conduit) to implement a known system (Tubel's).

Ground 3: Claims 28-31 and 35-40 are obvious over Tubel in view of Neuroth

• Prior Art Relied Upon: Tubel (Patent 6,268,911) and Neuroth (Application # 2002/0007945).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground challenged apparatus claim 28, which requires a fiber optic tether with a first optical fiber for transmitting sensor signals and a second optical fiber for transmitting control signals. Petitioner asserted that Tubel teaches the base system, and Neuroth teaches the use of multiple, separate fiber optic strings. Neuroth explicitly discloses that "additional fiber optic strings may be disposed in the composite coiled tubing to serve as additional data communication links and/or to provide redundancy." This teaching was argued to render the use of two separate fibers for sensing and control obvious. Neuroth also teaches a downhole termination (an optical coupler in a bottom hole assembly) where the fibers connect, meeting the limitation of claim 35.
  • Motivation to Combine: A POSITA seeking to improve the reliability of the system in Tubel would be motivated to incorporate Neuroth's teaching of using redundant or additional fibers. Using separate fibers for data and control is a well-known design choice to allow for simultaneous, uninterrupted communication, representing a predictable improvement.
  • Expectation of Success: A POSITA would expect success in adding a redundant fiber optic line to an existing fiber optic system, as it is a straightforward application of known principles for a predictable purpose.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including claim 23 (deploying the tether by pumping fluid) over Tubel and Head (Patent 5,996,689); claim 32 (a combination of features from other grounds) over Tubel, Neuroth, and Kluth; and claims 33-34 (stimulation treatments) over Tubel, Neuroth, and Purvis (Patent 6,367,548). These grounds relied on similar rationales, adding specific prior art references to teach discrete additional features.

4. Key Claim Construction Positions

Petitioner argued for the following constructions based on the specification and prosecution history, where the applicant allegedly acted as its own lexicographer:

• "Fiber optic tether": Proposed as "a protective tube having one or more optical fibers disposed therein, or a cable composed of optic fibers." This broad construction was central to arguing that prior art "conduits" containing fibers met the claim limitation.
• "Non-cable fiber optic tether": Proposed as "a protective tube having one or more optical fibers disposed therein." This construction, asserted for claim 20, is narrower than the general "fiber optic tether" term by purposefully excluding the "cable" alternative, a distinction Petitioner leveraged to overcome potential arguments from the patent's prosecution history.
• "Stimulation": Defined by its ordinary meaning in the oil and gas industry as "an operation performed to increase or restore the production of desired fluids from a well," including treatments like injections.

5. Relief Requested

• Petitioner requested that the Board institute an inter partes review and cancel claims 20-40 of Patent 7,617,873 as unpatentable.