NITRO FLUIDS, L.L.C. v. CAMERON INTERNATIONAL CORPORATION

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 is directed to a modular hydraulic fracturing system designed to supply fluid to multiple wells. The system features a shared fracturing manifold coupled to dedicated, skid-mounted apparatuses, where each skid apparatus has a single outlet connected to a single fracturing tree at a wellhead.

3. Grounds for Unpatentability

Ground 1: Anticipation or Obviousness over Kajaria - Claims 1-7 and 9-15 are anticipated under 35 U.S.C. §102 or, alternatively, obvious under 35 U.S.C. §103 over Kajaria.

• Prior Art Relied Upon: Kajaria (Application # 2012/0181015).
• Core Argument for this Ground: Petitioner argued that Kajaria, which discloses a modular, skid-based fracturing system, teaches every element of the challenged claims. The petition asserted that while Kajaria's exemplary figures show distribution modules with two manifolds and potentially multiple outlets, Kajaria’s specification explicitly discloses alternative embodiments and the flexibility to modify the system. This broader disclosure, Petitioner contended, anticipates or renders obvious the claimed limitations of a single outlet and single fluid conduit per skid apparatus.
  • Prior Art Mapping: Petitioner argued that Kajaria’s end module (42), which is shown connected to only one well (12I), anticipates the core limitations of independent claims 1 and 12 requiring a skid apparatus coupled to "only one fracturing tree" via a "single outlet." For the obviousness argument, Petitioner asserted that Kajaria expressly teaches that its modular system can be assembled in various arrangements to fit a particular well site. This includes using a single distribution manifold instead of two, and configuring each distribution module to service only one well, thereby meeting the limitations of a 1:1 ratio of skid apparatuses to fracturing trees (claim 3) and a system without skids serving multiple wells (claim 12).
  • Motivation to Combine (for §103 ground): A POSITA would combine elements from Kajaria's disclosed alternative embodiments to conform the system to the specific needs of a given wellsite. Kajaria itself provided this motivation, stating its system "can be assembled in a plurality of arrangements to fit the particular well site location" and "can be modified for a variety of well locations and arrangements." For example, a site with only two wells or one that does not require multiple fluid types would prompt a simpler, less expensive single-manifold, single-outlet-per-well configuration.
  • Expectation of Success: A POSITA would have a high expectation of success in modifying Kajaria’s system. The modifications involved predictable results from standard engineering choices, such as removing a manifold or reconfiguring modular pipe fittings, which Kajaria described as an intended feature of its flexible design.

Ground 2: Obviousness over Kajaria and Guidry - 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 asserted that claim 8, which adds the limitation that the fracturing trees are "horizontal," is obvious over the combination of Kajaria and Guidry. Kajaria disclosed a complete modular fracturing system but depicted conventional vertical fracturing trees. Guidry explicitly taught the use of horizontal fracturing trees as a known alternative to vertical trees in fracturing operations.
  • Prior Art Mapping: Kajaria supplied all elements of the base system as argued in Ground 1. Guidry supplied the specific limitation of a "plurality of horizontal fracturing trees," describing them as interchangeable with vertical trees.
  • Motivation to Combine: A POSITA would combine the teachings to gain a predictable advantage. Guidry taught that a horizontal configuration places connections closer to the ground, which reduces bending moments and stress caused by vibration during the fracturing process. This known benefit provided a clear reason to substitute the horizontal trees from Guidry for the vertical trees in Kajaria’s system.
  • Expectation of Success: Success would be expected because Guidry presented vertical and horizontal fracturing trees as interchangeable components that couple to a wellhead using the same methods, making the substitution a simple matter of choosing one known component for another to achieve a predictable improvement.

4. Key Claim Construction Positions

• Petitioner argued for constructions of several interrelated terms to clarify their scope.
  • “flow control assembly”: Petitioner asserted this term should be understood by its plain meaning as an assembly of components for controlling fluid flow. This construction was based on the specification's limited use of the term and its consistency with the prosecution history, where the examiner identified valve groups on skids as "flow control assemblies."
  • “wellhead,” “wellhead assembly,” and “fracturing tree”: While not requiring formal construction, Petitioner explained their relationship to interpret the claims. It was argued that a "fracturing tree" is part of a "wellhead assembly," which in turn includes the "wellhead" and other components. This distinction was important because claim 1 requires a "fracturing tree" while claim 12 requires a "wellhead assembly," and their relationship was central to mapping the prior art.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. §325(d) based on the Becton, Dickinson factors, because the examiner failed to properly consider the full scope of the prior art.
  • The petition contended that during prosecution, the examiner focused only on the exemplary embodiments in Kajaria's figures and was persuaded to allow the claims after amendments were made to require a single outlet and single conduit. Petitioner argued the examiner erred by not considering Kajaria’s explicit textual disclosure of alternative, single-manifold and single-outlet configurations, which anticipate or render obvious the very limitations added to overcome the rejection.
  • Furthermore, Petitioner argued that its obviousness challenge based solely on Kajaria's alternative embodiments was never considered by the examiner, representing a new line of argument. For the combination with Guidry, Petitioner asserted that Guidry provides a stronger and more explicit motivation to combine than the reference used by the examiner during prosecution.

6. Relief Requested

• Petitioner requested that the Board institute an inter partes review and cancel claims 1-15 of the ’190 patent as unpatentable.