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

1. Case Identification

• Case #: IPR2021-00897
• Patent #: 8,360,171
• Filed: May 7, 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: 13-20 and 22-26

2. Patent Overview

• Title: Directional Drilling Control Using Recorded Operating Parameters
• Brief Description: The ’171 patent describes methods for elongating a wellbore during directional "slide drilling." The invention uses a controller to analyze previously recorded operating parameters to generate control signals that oscillate a quill, thereby redirecting the downhole toolface to a corrected drilling path.

3. Grounds for Unpatentability

Ground 1: Obviousness over Haci and Richarson - Claims 13-20 and 22-26 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 nearly all elements of the challenged claims. Haci discloses a method for directional drilling that involves detecting a current toolface orientation, comparing it to a desired orientation based on operating parameters (e.g., toolface angle, torque, pressure), and using a processor-controller system to correct deviations. Specifically, Haci teaches a "rocking" technique where a top drive oscillates the drill string back and forth based on previously recorded torque magnitudes to maintain or adjust the toolface angle. The only element Petitioner contended Haci does not explicitly disclose is the use of a "quill" as the component being oscillated. Richarson was introduced to supply this teaching, as it explicitly discloses a directional drilling system where a top drive includes a quill that engages and rotates the drill string to control toolface orientation.
  • Motivation to Combine: Petitioner asserted that a person of ordinary skill in the art (POSITA) would combine Haci and Richarson. Both references address the same problem of automated toolface control in directional drilling using similar back-and-forth rotation of the drill string. Critically, Haci explicitly references Richarson as an example of the known "rocking" technique that Haci's invention improves upon. Petitioner argued that a POSITA seeking to implement Haci's control system, which uses a top drive, would have naturally looked to analogous art like Richarson to understand that a top drive conventionally includes a quill for engaging the drill string. Incorporating Richarson's quill into Haci’s system was presented as a simple and predictable substitution of known components.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references. The proposed modification involved incorporating a standard, well-known mechanical component (Richarson's quill) into Haci's highly similar automated control system. Since both systems operate in the same manner to achieve the same goal, combining them would yield the predictable result of an automated directional drilling system that oscillates a quill based on recorded operating parameters.

4. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv Factors): Petitioner argued against discretionary denial based on a parallel district court litigation, asserting that the Fintiv factors weighed in favor of institution. It was argued that the co-pending litigation was in its very early stages, with minimal discovery conducted and no claim construction orders issued. Petitioner highlighted that the district court indicated a likelihood of staying the case if the inter partes review (IPR) was instituted, thereby conserving judicial and party resources. Furthermore, the IPR petition challenged all asserted claims, offering the potential to resolve the entire dispute.
• §325(d): Petitioner also contended that denial under §325(d) was inappropriate because the examiner did not substantively consider the asserted prior art combination during prosecution. While Richarson was of record, Petitioner argued the examiner never properly mapped its teachings to the challenged claims and ultimately withdrew the rejection. More importantly, Haci was only listed in an Information Disclosure Statement (IDS), and there was no evidence that the examiner ever considered its teachings, let alone the specific combination of Haci and Richarson presented in the petition. Therefore, the petition raised new arguments and a combination not previously before the U.S. Patent and Trademark Office.

5. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 13-20 and 22-26 of the ’171 patent as unpatentable.