Nitro Fluids LLC v. Cameron Intl Corp

1. Case Identification

• Case #: IPR2019-00804
• Patent #: 9,903,190
• Filed: March 8, 2019
• Petitioner(s): Nitro Fluids, L.L.C.
• Patent Owner(s): Cameron International Corporation
• Challenged Claims: 1-15

2. Patent Overview

• Title: Modular Fracturing System
• Brief Description: The ’190 patent discloses a modular hydraulic fracturing system for supplying fluid to multiple wells. The system uses dedicated, skid-mounted assemblies to couple a shared fracturing fluid manifold to a single, respective fracturing tree at each well, purportedly improving efficiency and organization at the well site.

3. Grounds for Unpatentability

Ground 1: Claims 1-7 and 9-15 are anticipated by or obvious over Kajaria.

• Prior Art Relied Upon: Kajaria (Application # 2012/0181015).
• Core Argument for this Ground: Petitioner asserted that Kajaria anticipates every limitation of the challenged claims. In the alternative, Petitioner argued that any minor differences between Kajaria’s disclosure and the claims would have been obvious modifications. The core of the argument is that the patent examiner, during prosecution, improperly focused only on Kajaria’s exemplary figures while ignoring explicit textual disclosures of alternative embodiments that meet all claim limitations.
  • Prior Art Mapping: Petitioner argued that Kajaria’s modular skid system, which includes distribution modules mounted on skids to form a manifold, meets the primary limitations of the claims. Specifically, Kajaria’s disclosed “end module 42” is shown connected to only one well (12I), thereby teaching a skid apparatus coupled to only one fracturing tree as required by independent claims 1 and 12. For limitations added during prosecution requiring a single outlet and a single fluid conduit, Petitioner contended that Kajaria’s textual disclosure explicitly teaches alternative embodiments using only a single distribution manifold. In such a configuration, each skid apparatus would necessarily have only one outlet and one fluid conduit to its respective well, thus anticipating the claims. Petitioner further argued that Kajaria teaches a one-to-one ratio of skid apparatuses to fracturing trees (claim 3) in embodiments configured for a well site with only two wells.
  • Motivation to Combine (for §103 grounds): As an alternative to anticipation, Petitioner argued that a POSITA would have been motivated to modify Kajaria’s exemplary two-manifold embodiment into a single-manifold system. Kajaria explicitly states that its modular system can be assembled in a "plurality of arrangements to fit the particular well site location." A POSITA would simplify the system to a single manifold for applications not requiring multiple fluid types to reduce cost and complexity, a predictable design choice.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success in reconfiguring Kajaria’s explicitly modular system, as this flexibility was a key feature of the reference.

Ground 2: Claim 8 is obvious over Kajaria in view of Guidry.

• Prior Art Relied Upon: Kajaria (Application # 2012/0181015) and Guidry (Application # 2013/0032328).
• Core Argument for this Ground: Petitioner argued that claim 8, which adds the limitation of using "horizontal fracturing trees," is obvious because Kajaria teaches the overall modular system and Guidry teaches that horizontal fracturing trees were a known and interchangeable alternative to the vertical trees shown in Kajaria.
  • Prior Art Mapping: Kajaria’s system provides all elements of the base claims. Guidry explicitly discloses a "frac tree having a horizontal configuration" and teaches its use as an alternative to vertical trees in fracturing operations.
  • Motivation to Combine (for §103 grounds): A POSITA would combine these references by substituting the horizontal trees of Guidry for the vertical trees in Kajaria's system. The motivation, explicitly taught by Guidry, was to place frac connections closer to the ground to reduce "bending moments caused by excessive vibration and other loads experienced during the fracing process." This represents a simple substitution of one known element for another to obtain a predictable improvement.
  • Expectation of Success (for §103 grounds): Success would be expected, as Guidry taught that horizontal and vertical fracturing trees are interchangeable components that couple to a wellhead using the same methods.

4. Key Claim Construction Positions

• "flow control assembly," "wellhead assembly," and "fracturing tree": Petitioner argued these terms should be given their plain and ordinary meaning. However, Petitioner emphasized the relationship between them as disclosed in the ’190 patent’s specification to clarify the scope of the claims. It was noted that the specification explains a "fracturing tree" is coupled to a "wellhead" and can be considered part of a "wellhead assembly." This distinction was relevant because independent claim 1 requires a "fracturing tree" while independent claim 12 requires a "wellhead assembly," and Petitioner’s arguments mapped prior art to these distinct elements.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate because the examiner made a material error in evaluating the primary prior art reference, Kajaria. Petitioner contended the examiner failed to consider Kajaria’s full disclosure, focusing narrowly on the figures while ignoring explicit textual descriptions of alternative, single-manifold embodiments that anticipate the claims as amended. Furthermore, Petitioner asserted that the examiner never considered Kajaria as a 35 U.S.C. §103 reference for claims 1-7 and 9-15, and that Guidry provided a new motivation to combine that was not present in the art cited by the examiner.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-15 of the ’190 patent as unpatentable.