PTAB

IPR2019-00158

Innovex Downhole Solutions Inc v. Baker Hughes Oilfield Operations LLC

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Disintegrable Deformation Tool
  • Brief Description: The ’439 patent discloses a temporary plug used to isolate portions of a wellbore for operations like perforating or fracking. The system features a deformable member and a deforming tool, where at least a portion of the tool is made of a disintegrable material, allowing for its removal via dissolution in wellbore fluids rather than costly mechanical milling.

3. Grounds for Unpatentability

Ground 1: Claims 1 and 7-23 are Anticipated by Head

  • Prior Art Relied Upon: Head (Patent 5,709,269)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Head, which was not considered during prosecution, discloses every element of the challenged claims. Head teaches a "releasable grip arrangement" (a deformation system) comprising a "locking part 3" (a deformable member) that is expanded by a wedge-like "locking part 4" (the tool) to engage a casing. Head explicitly teaches making these components, including the tool, from a dissolvable material such as magnesium to provide for removal without intervention.
    • Key Aspects: Petitioner contended that Head’s disclosure of a ramped thread to deploy and lock the components meets the "ratcheting or locking feature" of dependent claim 7, and its teaching of hydraulic setting meets the limitation of claim 8. Furthermore, Head's disclosure of magnesium as the dissolvable material, which reacts with water or brine, anticipates claim 9.

Ground 2: Claims 1 and 7-23 are Anticipated by Starr

  • Prior Art Relied Upon: Starr (Patent 7,168,494)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Starr, also not considered during prosecution, teaches a "dissolvable frac plug" that is structurally and functionally identical to the preferred embodiment of the ’439 patent. Starr discloses a system with "slips" (a deformable member) that are deformed outward by a "mechanical slip body" (the tool) to engage the wellbore casing.
    • Key Aspects: Starr explicitly teaches that its components can be made from materials that dissolve when exposed to a chemical solution, ultraviolet light, or a nuclear source, for the express purpose of creating a disposable tool that does not require milling for removal. Petitioner highlighted that this addresses the same problem with the same solution as the ’439 patent.

Ground 3: Claims 1-23 are obvious over Head, Starr, or Stout in combination with Xu or Holmes

  • Prior Art Relied Upon: Head (Patent 5,709,269), Starr (Patent 7,168,494), or Stout (Application # 2010/0139911) in combination with Xu (Application # 2011/0132143) or Holmes (Application # 2010/0294510).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that to the extent Head, Starr, or Stout are found not to anticipate, it would have been obvious to combine their teachings with those of Xu or Holmes. Head, Starr, and Stout each disclose the fundamental structure of a downhole plug or packer with a deformable member and a deforming tool. Xu and Holmes teach the specific use of advanced, high-strength, controllably disintegrable materials (e.g., coated metallic powders, cellular nanomatrix materials) for the express purpose of replacing traditional components in downhole equipment to eliminate milling.
    • Motivation to Combine: A POSITA would combine these references to solve the common, well-documented problem of reducing the time, cost, and risk associated with milling out temporary downhole tools. Petitioner asserted it was a simple substitution of a known material (from Xu or Holmes) into a known device (from Head/Starr/Stout) to obtain the predictable result of a reliable, disintegrable plug. Xu and Holmes explicitly teach that their materials allow for selectable and controllable degradation, a desirable feature for such applications.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because Xu and Holmes teach that their materials possess mechanical strength comparable to the carbon and alloy steels traditionally used in such tools. The combination was merely the use of prior art elements according to their established functions to yield predictable results, and the art was already replete with various disintegrable plug designs, bolstering a POSITA's confidence.

4. Key Claim Construction Positions

  • "Tool": Petitioner argued that the term "tool" lacks sufficiently definite structure and should be construed as a means-plus-function term under pre-AIA §112, ¶ 6. The claimed function is "imparting a deforming force on the deformable member," and the corresponding structures disclosed in the ’439 patent are a "wedge, swage, shoulder, cone, ramp, [or] mandrel."
  • "Deform": Petitioner proposed construing "deform" as to "change shape, dimension, or position upon application of a mechanical force," based on the specification's description of radially enlarging the deformable member.
  • "Disintegrable material": Petitioner argued the specification's definition ("consumable, corrodible, degradable, dissolvable, weakenable, or otherwise removable") is indefinite as it could encompass any material. To resolve this, Petitioner proposed limiting the term to a "material or component intended in ordinary usage to be" so, to provide reasonable boundaries for the claim scope.

5. Relief Requested

  • Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 1-23 of the ’439 patent as unpatentable.