PTAB

IPR2020-01425

Exacta Frac Energy Services Inc v. Lee Paul Bernard

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1. Case Identification

2. Patent Overview

  • Title: Packer Apparatus and Method of Sealing Well Casing
  • Brief Description: The ’163 patent discloses a hydraulic packer apparatus for use in oil and gas wells. The apparatus uses a plurality of pistons that are actuated by an increase in fluid pressure within the tool's body to move an activation member, which in turn compresses an elastomeric packer element to form an annular seal against the well casing.

3. Grounds for Unpatentability

Ground 1: Anticipation over Hughes - Claims 1-4 and 8-11 are anticipated by Hughes under 35 U.S.C. §102.

  • Prior Art Relied Upon: Hughes (Patent 8,336,615).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Hughes disclosed every element of the challenged claims. Hughes teaches a packer tool with a plurality of pistons (19) in a piston assembly (6) that moves in response to increased fluid pressure in piston chambers (23). This movement compresses a resilient sealing element (5) to form a pack-off seal in a borehole. Petitioner asserted that Hughes’s piston assembly (6) is an “activation member” that is maintained in a deformed position by fluid pressure only (claim 8) and that its resilient sealing element inherently returns to an undeformed condition when pressure is released (claim 1). Petitioner also noted that the European Patent Office (EPO) found a virtually identical European application unpatentable over Hughes during prosecution.
    • Key Aspects: The core of this ground is the direct structural and functional overlap between the packer tool in Hughes and the apparatus described in the ’163 patent, particularly regarding the multi-piston hydraulic actuation mechanism.

Ground 2: Obviousness over Hughes and Cochran - Claims 1-6, 8-13, and 15-18 are obvious over Hughes in view of Cochran under 35 U.S.C. §103.

  • Prior Art Relied Upon: Hughes (Patent 8,336,615) and Cochran (Patent 4,519,456).
  • Core Argument for this Ground:
    • Prior Art Mapping: Hughes was asserted to teach the base multi-piston packer apparatus, as detailed in Ground 1. Cochran, which discloses a well washing tool, was cited for its teaching of exhausting fluid from behind a piston during activation. Specifically, Cochran discloses clearances (33, 76) vented to the wellbore via openings (93, 95), which function as pressure release ports to ensure uninhibited piston movement. Petitioner argued that adding such ports to the Hughes design, as taught by Cochran, would render claims reciting an "annular pressure port" (e.g., claim 15) obvious.
    • Motivation to Combine: A POSITA would combine Hughes and Cochran to ensure reliable and uninhibited operation of the pistons in the Hughes packer. Petitioner contended that pressure release ports are a common design feature for piston-actuated oilfield tools to prevent hydraulic lock, making it a simple and predictable modification to improve the Hughes device.
    • Expectation of Success: The combination involved applying a known solution (Cochran's pressure relief ports) to a known problem (potential hydraulic lock in a piston-actuated tool like Hughes) using conventional oilfield tool components, leading to a high expectation of success.

Ground 3: Obviousness over Clark and Hughes - Claims 20-23 are obvious over Clark in view of Hughes under §103.

  • Prior Art Relied Upon: Clark (Patent 5,152,340) and Hughes (Patent 8,336,615).

  • Core Argument for this Ground:

    • Prior Art Mapping: Clark was presented as the primary reference, disclosing a "downhole work string" with two packer apparatuses and a "porting sub" connected between them, as required by independent claim 20. However, Clark’s packers use a single-piston design. Hughes was cited for its teaching of a multi-piston packer that provides the advantage of a greater setting force at lower pressures. Petitioner argued it would have been obvious to substitute the single-piston packers in Clark's work string with the superior multi-piston packer disclosed in Hughes.
    • Motivation to Combine: A POSITA would combine the references to achieve the known benefits of Hughes’s multi-piston design (e.g., adjustable and higher setting force) within the context of Clark's established straddle packer work string configuration. It was known in the art to use multiple pistons to adjust setting force, and Hughes expressly notes its tool is capable of various modifications.
    • Expectation of Success: Substituting a known type of hydraulic packer (Hughes) for another (Clark) within a standard work string arrangement was argued to be a routine design choice for a POSITA, with predictable results.

  • Additional Grounds: Petitioner asserted further obviousness challenges, including combining Clark, Hughes, and Cochran to add annular pressure ports to the work string (claims 24-25), and combining Clark and Jackson (Patent 4,487,258) as an alternative multi-piston reference.

4. Key Claim Construction Positions

  • "activation member": Petitioner argued this term, recited in all independent claims, is a general construct without a specialized meaning in the art. Petitioner proposed it should be interpreted under means-plus-function principles.
    • Function: "to deform an elastomeric packer element outwardly relative to the body"
    • Corresponding Structure: "tubing interconnected with each respective piston that is mounted to and moveable relative to the body"
  • "ported sub": Recited in claims 20, 22, and 24, Petitioner argued this term should be construed broadly as "a device through which fluid is circulated in a well." Petitioner contended that the Patent Owner’s attempt to limit the term to only hydraulic fracturing operations was improper and unsupported by its plain meaning in the art.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-6, 8-13, 15-18, and 20-25 of the ’163 patent as unpatentable.