PTAB

IPR2018-01595

Ulterra Drilling Technologies, L.P. v. Baker Hughes, a GE Company, LLC

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1. Case Identification

2. Patent Overview

  • Title: Rotary Drag Bits for Drilling Subterranean Formations
  • Brief Description: The ’613 patent discloses methods for designing and using rotary drag bits, particularly those with polycrystalline diamond compact (PDC) cutters, to achieve optimal performance. The invention centers on using “depth of cut control” (DOCC) features, which are formation-engaging bearing surfaces, to physically limit how deeply the cutters penetrate a formation, thereby controlling torque and preventing cutter damage, especially when drilling through formations of varying compressive strength.

3. Grounds for Unpatentability

Ground 1: Claims 26-27 and 32-35 are obvious over Newton

  • Prior Art Relied Upon: Newton (Patent 5,244,039)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Newton discloses all elements of the challenged claims. Newton describes a rotary drill bit with "primary cutting elements" and "secondary abrasion elements," where the abrasion elements are set slightly below the cutting profile to engage the formation after the primary cutters. Petitioner asserted these abrasion elements function as the claimed "formation-facing bearing surface," controlling the depth of cut. Newton also discloses that the vertical distance between the cutters and abrasion elements can be selectively varied to control when the abrasion elements engage the formation, which inherently teaches selecting a depth of cut.
    • Motivation to Combine: As a single-reference ground, the motivation was to use Newton’s disclosed drill bit for its intended purpose of drilling.
    • Expectation of Success: A person of ordinary skill in the art (POSA) would have understood that Newton's abrasion elements would limit the depth of cut and prevent excessive torque. Petitioner contended a POSA would have found it obvious to calculate the sufficient bearing surface area needed to support excess weight-on-bit (WOB) without cutter damage, making the claimed method's results predictable. Dependent claims were allegedly obvious as Newton teaches using a steel bit body (claim 33) and superhard materials like diamond for the abrasion elements, which constitutes "hard facing material" (claim 32).

Ground 2: Claims 26-27 and 32-35 are obvious over Jones

  • Prior Art Relied Upon: Jones (Patent 4,554,986)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Jones teaches a rotary drill bit with leading and trailing ridges, where the leading ridge is adapted to engage the formation to limit the penetration depth of cutters on the trailing ridge. This leading ridge is the claimed "bearing surface." Jones explicitly teaches that upon application of a WOB exceeding a predetermined weight, the leading ridge engages the formation bottom, limiting the penetration of the cutting elements. This mechanism prevents damage from excess WOB.
    • Motivation to Combine: The motivation was to apply the Jones bit for its intended purpose.
    • Expectation of Success: A POSA would have reasonably expected that using the leading ridge in Jones as a depth-of-cut limiter would successfully control torque and protect the cutters. The teachings in Jones were so aligned with the ’613 patent's goals that success was predictable. Petitioner also noted that Jones teaches using "relatively hard wear elements" (e.g., diamond or tungsten carbide) on the ridges, rendering the dependent claims related to "hard facing material" (claim 32) and steel bodies (claim 33) obvious.

Ground 3: Claims 26-27 and 32 are obvious over O'Hanlon

  • Prior Art Relied Upon: O'Hanlon (Patent 5,595,252)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued O'Hanlon addresses the same problem of cutter wear from excessive penetration. O'Hanlon discloses a cutter unit with a "forwardly located lead positioning cutter" having a "downwardly facing relatively blunt contact surface," which is followed by a trailing cutter. This blunt surface serves as the claimed "bearing surface" and "controls the maximum amount of cut depth" of the trailing cutter. The distance between the blunt surface and the trailing cutter's edge is fixed to establish a predetermined depth of cut.
    • Motivation to Combine: The motivation was to use O'Hanlon's design to solve the known problem of controlling cut depth.
    • Expectation of Success: A POSA would have expected O'Hanlon’s lead positioning cutter to successfully limit the depth of cut as explicitly taught. Petitioner highlighted that O'Hanlon's disclosure of coating the blunt surface with a "very hard and wear resistant surface," such as one impregnated with polycrystalline diamond particles, directly teaches the "hard facing material" limitation of claim 32.

Ground 4: Claims 26-27 and 32-34 are obvious over Griffin

  • Prior Art Relied Upon: Griffin (Patent 6,142,250)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Griffin discloses a drill bit with a primary cutting structure and a "subsidiary cutting structure" that acts as a "penetration limiter." This subsidiary structure functions as the claimed bearing surface. Griffin teaches that if the predetermined depth of cut is exceeded, drag forces on the subsidiary structure increase, which in turn reduces the effective WOB on the primary cutter, thereby reducing the depth of cut and preventing stalls.
    • Motivation to Combine: The motivation was to apply Griffin's explicit solution for limiting torque and rate of penetration at high WOB.
    • Expectation of Success: A POSA would have expected Griffin’s penetration limiter to work as described. Petitioner argued that Griffin's disclosure of using polycrystalline diamond compacts for both primary and subsidiary structures teaches the "hard facing material" (claim 32) affixed to a steel-bodied bit (claim 33) in a cone region (claim 34), rendering these claims obvious.

4. Key Technical Contentions

  • Petitioner's central technical argument, applied across all grounds, was that calculating the "sufficient surface area" for a bearing surface to control depth-of-cut was a matter of routine engineering for a POSA at the time of the invention.
  • Petitioner contended that a POSA could use simple, well-known equations (e.g., Area = WOB / Rock Strength) and existing computer simulation programs to determine the necessary bearing surface area to achieve a predictable depth of cut for a given formation and WOB. This argument was used to frame the ’613 patent’s purported "engineered approach" as an obvious, non-inventive application of established principles.

5. Relief Requested

  • Petitioner requests institution of an inter partes review of claims 26-27 and 32-35 of the ’613 patent and cancellation of those claims as unpatentable under 35 U.S.C. §103.