PTAB

IPR2021-00672

Helmerich & Payne International Drilling Company v. Nabors Drilling Technologies USA, Inc.

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1. Case Identification

2. Patent Overview

  • Title: Well Prog Execution Facilitation System and Method
  • Brief Description: The ’593 patent discloses a method for controlling a well drilling operation. The system involves receiving a "well prog" (a detailed drilling plan), converting it into a computer-readable format, assessing the data to identify key action items, and associating a response with each item to control the drilling operation, for example by triggering automated alerts.

3. Grounds for Unpatentability

Ground 1: Claims 19-27 are obvious over Holbrook in view of King.

  • Prior Art Relied Upon: Holbrook (Patent 5,305,836) and King (Application # 2006/0041828).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the claimed invention is an obvious application of known document processing techniques to a conventional document in the drilling industry. Holbrook was asserted to teach the core concept of controlling a well drilling operation in accordance with a "well drilling plan" (which Petitioner argued is equivalent to the claimed "well prog"). Holbrook’s system used a computer to monitor real-time drilling parameters against the plan to control aspects like drill bit replacement and mud weight. However, Holbrook did not explicitly disclose how the plan was digitized. King was asserted to fill this gap by teaching a general-purpose system for converting a paper document into a computer-readable format using optical character recognition (OCR), identifying "keywords" (equivalent to "action items"), and associating specific actions with those keywords to trigger operations. Petitioner contended that combining Holbrook’s drilling control context with King’s document automation technology renders all steps of independent claim 19 obvious.
    • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would have been motivated to combine the references to improve the efficiency and reliability of Holbrook’s system. Applying King’s automated document processing would replace the presumably manual and error-prone task of entering data from Holbrook's paper-based drilling plan into the control computer. King itself suggested its system could be "straightforwardly adapted or extended" for use with a "wide variety of... documents," which would have motivated a POSITA to apply it to a drilling plan to achieve the predictable result of automation.
    • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success because the combination involved applying known techniques (OCR, keyword searching) using conventional computer technology. Petitioner argued there was no technical impediment to adapting Holbrook’s computer system to perform the software functions described in King, making the integration straightforward and the outcome predictable.

4. Key Claim Construction Positions

  • Petitioner argued that the term "well prog" should be construed to include "a non-computer readable document containing information for planning and chronicling the steps of well drilling." This construction was asserted to be critical because it frames the invention as starting with a physical document, which makes the subsequent claimed step of "converting the well prog into a computer readable format" a necessary element. This, in turn, makes the application of prior art like King, which specifically teaches the scanning and OCR of paper documents, a relevant and obvious modification.

5. Key Technical Contentions (Beyond Claim Construction)

  • Analogous Art: Petitioner contended that Holbrook and King are analogous art to the ’593 patent. Holbrook is from the same field of endeavor (controlling well drilling). King was argued to be reasonably pertinent because it addresses the same underlying problem as the ’593 patent: processing a document to identify action items and trigger corresponding responses. Petitioner argued that a POSITA seeking to automate the process of executing a written drilling plan would have logically looked to prior art like King that taught general document automation and keyword-based action triggering.

6. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial of institution would be inappropriate under both §314(a) (Fintiv factors) and §325(d).
  • §325(d): Denial was argued to be improper because the primary references, Holbrook and King, are new and presented different arguments than those considered by the USPTO during the original prosecution.
  • §314(a) / Fintiv: Petitioner argued against denial based on the parallel district court case, asserting that the Fintiv factors weigh in favor of institution. The arguments included that the court was likely to grant a stay if IPR was instituted, the litigation was in a very early stage with minimal investment by the parties or the court, and an IPR would be more efficient as it could resolve all asserted claims, whereas the district court proceeding was limited to only five claims per patent.

7. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 19-27 of the ’593 patent as unpatentable.