HEAL Systems LLC v. EcHoMeter Co

1. Case Identification

• Case #: IPR2018-01409
• Patent #: 9,790,779
• Filed: July 16, 2018
• Petitioner(s): HEAL Systems, LLC
• Patent Owner(s): James N. McCoy
• Challenged Claims: 1-4, 7, 8, 10-16, 18-28, 30-35, 37-42, 44-46, 48, 50, and 51

2. Patent Overview

• Title: Gas Separator with Inlet Tail Pipe
• Brief Description: The ’779 patent discloses a downhole apparatus for oil and gas wells that separates gas from well fluids. The invention combines a gas separator with a tailpipe having an internal diameter less than the production tubing to reduce the minimum required producing bottom hole pressure and thereby increase fluid production.

3. Grounds for Unpatentability

Ground 1: Anticipation over Barnhart - Claims 1, 3, 4, 7, 8, 11-15, 20, 22, 23, 46, 48, and 50 are anticipated by Barnhart.

• Prior Art Relied Upon: Barnhart (Patent 1,674,815)
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Barnhart, a 1928 patent, discloses every limitation of the challenged independent and dependent claims. This includes a downhole pump, a gas separator creating a separation annulus with the casing, an isolation means (packer), and a tailpipe. Critically, Petitioner asserted that Barnhart’s tailpipe has an internal diameter smaller than the pump tubing and that its disclosure of minimizing backpressure necessarily teaches the claimed functional result of reducing the required producing bottom hole pressure.
  • Key Aspects: This ground asserted that Barnhart’s disclosure of lifting oil in a “thin stream or column” inherently teaches a reduced-diameter tailpipe that achieves the claimed pressure reduction benefits.

Ground 2: Obviousness over Barnhart and Raglin - Claims 2, 19, 21, and 51 are obvious over Barnhart in view of Raglin.

• Prior Art Relied Upon: Barnhart (Patent 1,674,815) and Raglin (Application # 2013/0032341).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground relied on Barnhart for the base apparatus and added Raglin to teach the limitations of a tubing anchor. Raglin disclosed a tubing anchor used proximate to a packer to rigidly fix a downhole assembly relative to the casing.
  • Motivation to Combine: Petitioner contended that the ’779 patent admits tubing anchors were well-known. A person of ordinary skill in the art (POSITA) would combine Raglin’s tubing anchor with Barnhart’s assembly to solve the known problem of vertical movement ("breathing") of the tubing string during pumping. Securing the assembly would predictably resist forces on the packer, prevent wear, and increase the pump’s effective stroke and production efficiency.
  • Expectation of Success: The combination was presented as a straightforward and routine mixing of known components to achieve predictable benefits.

Ground 3: Obviousness over Barnhart and Brookey - Claims 16, 28, 30, 34, 35, 37, 41, and 44 are obvious over Barnhart in view of Brookey.

• Prior Art Relied Upon: Barnhart (Patent 1,674,815) and Brookey (Patent 7,591,305).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed claims requiring a polymeric isolator or a steel sleeve. Barnhart disclosed the base assembly with packings, and Brookey was cited for its teaching of using specific materials for such components. Brookey disclosed packer elements made of "extremely durable rubber" (a polymer) and a mandrel "preferably made of steel" to resist inward forces.
  • Motivation to Combine: A POSITA would have found it obvious to make Barnhart's packings from a polymeric material like rubber, as taught by Brookey, because polymers were well-known for their resiliency and ability to create an effective seal. Likewise, it was obvious to use steel for the mandrel (tubing) on which the packings are mounted, as it was a common, cost-effective, and durable material capable of withstanding downhole forces.
  • Expectation of Success: Petitioner argued that substituting these common, well-understood materials into Barnhart's assembly was a simple design choice that would yield predictable results of durability and effective sealing.

• Additional Grounds: Petitioner asserted numerous additional grounds that largely relied on the same core arguments. Grounds 4, 6, and 7 combined Barnhart with various permutations of Raglin, Brookey, and Mazzanti (Application # 2011/0278015) to address claims related to horizontal wells and other features. Grounds 8-14 presented an alternative obviousness theory, arguing that if Barnhart was found not to teach a reduced-diameter tailpipe, it would have been obvious to modify Barnhart's tailpipe in view of Gilbert (a 1954 API paper) to achieve the claimed benefits of reduced pressure gradient and increased production.

4. Key Claim Construction Positions

• "isolation means" / "isolator" / "isolating member": Petitioner argued these terms, used across various independent claims, are synonymous and do not require formal construction. They refer to an annular assembly, such as a packer or diverter, that seals the annulus in a wellbore. The ’779 patent used the terms interchangeably, and a POSITA would not understand them to have distinct meanings.
• "packer" / "pack-off assembly": Petitioner asserted these terms are synonymous and refer to a type of isolation means, actuated to expand and seal against the casing, which can withstand higher differential pressures than passive diverter cups.
• "polymeric ... isolating member mounted to an exterior surface of said tail pipe": Petitioner contended this phrase does not require the polymeric material itself to contact the tailpipe. Citing the specification and dependent claims, Petitioner argued the limitation is met even if a metallic sleeve is disposed between the polymer and the tailpipe.

5. Key Technical Contentions (Beyond Claim Construction)

• Reduced-Diameter Tailpipe Functionality: A central technical contention was that the benefit of reducing the producing bottom hole pressure (PBHP) by using a smaller-diameter tailpipe was well-known in the art before the ’779 patent. Petitioner argued that in multiphase "slippage-dominated" flow, a smaller cross-sectional area equalizes the velocities of gas and liquid, which reduces slippage losses. This reduction in pressure loss lowers the required PBHP, prolonging the production life of the well. This principle was asserted to be inherent in Barnhart and explicitly taught by references like Gilbert.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-4, 7, 8, 10-16, 18-28, 30-35, 37-42, 44-46, 48, 50, and 51 of the ’779 patent as unpatentable under 35 U.S.C. §§ 102 and 103.