Helmerich & Payne Intl Drilling Co v. Nabors Drilling Technologies USA Inc

1. Case Identification

• Case #: IPR2021-00621
• Patent #: 7,823,655
• Filed: March 12, 2021
• Petitioner(s): Helmerich & Payne International Drilling Company, Helmerich & Payne Technologies, LLC, and Motive Drilling Technologies, Inc.
• Patent Owner(s): Nabors Drilling Technologies USA, Inc.
• Challenged Claims: 1-17, 19-20

2. Patent Overview

• Title: Method and Apparatus for Using a Quill to Steer a Hydraulic Motor
• Brief Description: The ’655 patent discloses methods and systems for controlling the direction of a wellbore during "sliding" drilling. The invention focuses on using a top drive quill to steer a downhole hydraulic motor by monitoring a plurality of drilling parameters and adjusting the quill's position based on that feedback to control the toolface orientation.

3. Grounds for Unpatentability

Ground 1: Obviousness over Haci and Richarson - Claims 1-11, 13-16, and 19-20 are obvious over Haci in view of Richarson.

• Prior Art Relied Upon: Haci (Patent 7,096,979) and Richarson (Patent 6,050,348).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Haci teaches a nearly complete method for steering a downhole motor by monitoring drilling parameters (toolface angle, torque, pressure) and using a processor to operate a top drive to rotate the drill string back and forth. This automated "rocking" process maintains or adjusts the toolface orientation. Petitioner contended the only element Haci does not explicitly disclose is that the top drive uses a "quill" to engage the drill string. Richarson, however, explicitly teaches an apparatus for steering a downhole tool that uses a top drive quill to precisely control the angle of rotation of the drill string. Petitioner asserted that combining Richarson's conventional top drive quill with Haci's control system renders the method of independent claim 1 obvious.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references because they are in the same field of directional drilling and address the identical problem of controlling toolface orientation. Haci explicitly references Richarson as an example of the known "rocking" technique it improves upon. Petitioner argued a POSITA implementing Haci's control system would have naturally looked to references like Richarson to supply a conventional and known mechanism—a top drive quill—for coupling the top drive to the drill string.
  • Expectation of Success: A POSITA would have a high expectation of success, as the combination involves integrating a standard, well-known mechanical component (Richarson's quill) into a compatible control system (Haci's system) to achieve a predictable result.

Ground 2: Obviousness over Haci, Richarson, and Jeffryes - Claims 7 and 12 are obvious over Haci and Richarson in further view of Jeffryes.

• Prior Art Relied Upon: Haci (Patent 7,096,979), Richarson (Patent 6,050,348), and Jeffryes (Application # 2004/0168827).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the combination of Haci and Richarson to address the more specific limitations of claims 7 and 12. Claim 7 requires the toolface orientation sensor to be a gravity or magnetic sensor. Claim 12 requires adjusting the quill based on a "corrected" hydraulic pressure differential (ΔP) that accounts for the monitored pressure in the annulus between the drill string and the wellbore. While Haci teaches using a generic "directional sensor," Jeffryes explicitly discloses using a DC magnetometer or gravimeter for measuring toolface orientation. Furthermore, while Haci teaches calculating ΔP across the motor, Jeffryes teaches monitoring annular pressure, which a POSITA would use to correct and improve the accuracy of the ΔP calculation taught by Haci.
  • Motivation to Combine: Petitioner argued that a POSITA seeking to implement the system of Haci and Richarson would be motivated to consult a reference like Jeffryes for details on well-known sensor types and methods for improving measurement accuracy. Since Haci does not specify its sensor type, Jeffryes provides a known and obvious choice (magnetometer/gravimeter). Similarly, to improve the accuracy of Haci's pressure calculations, a POSITA would be motivated to incorporate Jeffryes's teaching of using annular pressure measurements.

Ground 3: Obviousness over Richarson - Claim 17 is obvious over Richarson.

• Prior Art Relied Upon: Richarson (Patent 6,050,348).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Richarson alone teaches all limitations of claim 17, which is directed to a method of oscillating the quill. Richarson discloses a complete system for steering a downhole tool by precisely controlling a top drive quill. It teaches monitoring toolface orientation information from a downhole MWD sensor, sending that information to a computer, and having the computer automatically adjust the quill's rotation to maintain a desired toolface orientation. This includes adjusting a "neutral rotational position" of the quill and rotating it through a predetermined angle in clockwise and counterclockwise directions, which directly maps to the limitations of claim 17.

4. Arguments Regarding Discretionary Denial

• Against §314(a) Fintiv Denial: Petitioner argued against discretionary denial under Fintiv, stating that the parallel district court litigation was in its very early stages, with minimal discovery exchanged and no claim construction underway. Petitioner asserted that the court was likely to grant a stay if the inter partes review (IPR) was instituted, as indicated during a Rule 16 conference. The district court trial date was set for after the Board's Final Written Decision (FWD) deadline, and a decision in the IPR could dispose of all asserted claims, thus simplifying the litigation and conserving resources.
• Against §325(d) Denial: Petitioner contended that denial under §325(d) was inappropriate because the examiner did not substantively consider the asserted prior art combinations during prosecution. Although Haci and Richarson were submitted in an Information Disclosure Statement (IDS), there was no evidence they were considered in combination. Jeffryes was not before the examiner at all. Petitioner argued that the applicant overcame a rejection based on a different reference by adding limitations that are explicitly taught by the Haci and Richarson combination, demonstrating examiner error and a strong basis for review.

5. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 1-17 and 19-20 of the ’655 patent as unpatentable.