PTAB

IPR2020-01424

Exacta Frac Energy Services Inc v. Lee Paul Bernard

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1. Case Identification

2. Patent Overview

  • Title: Packer Apparatus
  • Brief Description: The ’989 patent relates to a hydraulic packer apparatus for use in oil and gas wells. The apparatus uses a plurality of pistons that are actuated by increased fluid pressure in the tool's body to move an "activation member," which in turn deforms an elastomeric packer element to create an annular seal in a well casing.

3. Grounds for Unpatentability

Ground 1: Anticipation under 35 U.S.C. §102 - Claims 1-4 and 6 are anticipated by Hughes.

  • Prior Art Relied Upon: Hughes (Patent 8,336,615).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Hughes, which was not cited during the prosecution of the ’989 patent, discloses a hydraulic packer tool that is nearly identical to the claimed invention and teaches every limitation of the challenged claims. Petitioner highlighted that the European Patent Office (EPO) had previously considered claims nearly identical to those in the ’989 patent and found them unpatentable in view of Hughes.
    • For independent claim 1, Petitioner asserted that Hughes's packer tool (100) discloses a body (inner mandrel 1 and outer mandrel 3), a moveable piston assembly (6) that functions as the claimed "activation member," and an elastomeric sealing element (5). It further teaches that a plurality of pistons (19) move in response to increased fluid pressure communicated via ports (27) into piston chambers (23), causing the piston assembly to move and compress the sealing element to form a seal.
    • For dependent claims 2-4, Petitioner mapped the limitations to Hughes's disclosure of a cylindrical tool body with an internal bore, pistons mounted concentrically around the body, annular pressure chambers (23), and stationary seals (18a, 18b) that provide a seal for the chambers.
    • For independent claim 6, Petitioner contended that Hughes's description of operating its packer tool teaches the claimed method steps of locating the apparatus in a wellbore and moving the pistons with fluid pressure to deform the packer element.

Ground 2: Anticipation under 35 U.S.C. §102 - Claims 1-4 and 6 are anticipated by Jackson.

  • Prior Art Relied Upon: Jackson (Patent 4,487,258).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Jackson, a patent describing multi-piston hydraulic well packers from decades before the ’989 patent’s priority date, discloses all elements of the challenged claims.
    • For independent claim 1, Petitioner mapped the limitations to Jackson's well packer (20), which includes a mandrel (21) serving as the body and an elastomeric packing element (44). The claimed "activation member" was identified as Jackson's setting sleeve (80) connected to a plurality of pistons (60, 61). These pistons are actuated when increased fluid pressure from the mandrel bore (26) enters variable volume fluid chambers (66, 70), causing the setting sleeve to move longitudinally and compress the packing elements.
    • For dependent claims 2-4, Petitioner asserted that Jackson discloses a cylindrical mandrel body with an internal bore, pistons mounted concentrically, ports (68, 71) allowing fluid communication from the bore to the chambers, annular fluid chambers, and elastomeric seals (64, 65) that function as the claimed stationary seal rings.
    • For independent claim 6, Petitioner argued that Jackson's detailed description of its packer's operation teaches the method of locating the packer at a desired depth and applying fluid pressure to move the pistons, thereby deforming the packer element to form a seal.

4. Key Claim Construction Positions

  • "activation member": Petitioner argued that this term lacks a specialized meaning in the art and is a general, functional term coined in the ’989 patent. Petitioner contended the term should be interpreted under means-plus-function principles. The recited function was identified as "to deform an elastomeric packer element outwardly relative to the body," with the corresponding structure disclosed in the specification being "tubing interconnected with each respective piston that is mounted to and moveable relative to the body."
  • "each said piston defining a respective pressure chamber arranged to be filled with fluid...": Petitioner proposed that the ordinary and customary meaning of this phrase, as understood by a person of ordinary skill in the art (POSA) and supported by the patent's specification, is "each piston forms a separate enclosed space that is filled with fluid from the body in response to an increase in fluid pressure in the body."

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-4 and 6 of the ’989 patent as unpatentable.