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

1. Case Identification

• Case #: IPR2021-01044
• Patent #: 8,528,663
• Filed: June 14, 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: 12-20

2. Patent Overview

• Title: Apparatus and Methods for guiding Toolface Orientation
• Brief Description: The ’663 patent discloses methods and apparatus for guiding directional drilling operations. The invention centers on a human-machine interface that receives and displays electronic data—including quill position, actual toolface orientation, and recommended toolface orientation—to assist a driller in accurately guiding a wellbore.

3. Grounds for Unpatentability

Ground 1: Obviousness over Haci and Pinckard - Claims 12-14 and 19 are obvious over Haci in view of Pinckard.

• Prior Art Relied Upon: Haci (Patent 7,810,584) and Pinckard (Application # 2002/0104685).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Haci teaches a method and apparatus for directional drilling that includes a driller’s screen displaying pertinent information. This display shows actual downhole toolface orientation from a steering tool and quill position data (disclosed as "surface toolface angle" from a drill pipe orientation sensor). However, Haci does not explicitly teach receiving and displaying a recommended toolface orientation. Petitioner asserted that Pinckard remedies this deficiency by teaching a control system with a display screen that explicitly shows a "target face angle," which is input according to the well's directional drilling plan. This "target face angle" corresponds to the claimed "recommended toolface orientation data."
  • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine Pinckard's teaching with Haci's system to provide the driller with more complete and valuable information. Since Haci's system is intended to help a driller maintain a proper toolface angle, adding a display of the target/recommended angle from the drilling plan (as taught by Pinckard) would be a logical and advantageous improvement, helping the driller better conform to the plan. Both references are in the same field of endeavor and address the same problem of providing useful data to a directional driller.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success, as the combination merely involves adding another known data indicator to an existing graphical user interface, a predictable and routine modification.

Ground 2: Obviousness over Haci, Pinckard, and Hamilton - Claims 14-16 and 19 are obvious over Haci and Pinckard in further view of Hamilton.

• Prior Art Relied Upon: Haci (Patent 7,810,584), Pinckard (Application # 2002/0104685), and Hamilton (Patent 7,588,100).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the Haci/Pinckard combination to address limitations in dependent claims 14-16 requiring monitoring, recording, and comparing the difference between actual and recommended toolface orientations. Petitioner argued that Hamilton explicitly teaches monitoring the toolface orientation and comparing a first effective toolface orientation (the actual toolface) to a second, calculated one (the recommended toolface) to determine a "corrective angular offset." This calculation and comparison directly meets the limitation of monitoring the difference. Pinckard's "angular correction display" provides a means for recording this difference on the screen.
  • Motivation to Combine (for §103 grounds): A POSITA would be motivated to add Hamilton’s technique to the base Haci/Pinckard system to make it more effective. Displaying the calculated difference or "corrective angular offset" would provide the driller with actionable information, making it easier to guide the trajectory of the wellbore, which is the overall goal of such systems.

Ground 3: Obviousness over Haci, Pinckard, Hamilton, and Mason - Claims 17 and 18 are obvious over Haci, Pinckard, and Hamilton in further view of Mason.

• Prior Art Relied Upon: Haci (Patent 7,810,584), Pinckard (Application # 2002/0104685), Hamilton (Patent 7,588,100), and Mason (a 2005 Society of Petroleum Engineers paper).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addresses dependent claims 17 and 18, which require "scoring" the difference between actual and recommended toolface and providing it to an "evaluator." Petitioner asserted that Mason teaches a "Wellbore Quality Scorecard" (WQS) that works by individually scoring drilling responses, penalizing poor responses such as an "unexpected deviation from the planned wellpath."
  • Motivation to Combine (for §103 grounds): A POSITA would find it obvious to apply Mason's scoring principles to the difference data generated by the Haci/Pinckard/Hamilton system. This would quantify driller performance, which is a known industry desire for improving efficiency and accuracy. The driller, in this context, acts as the "evaluator" by viewing the score to supervise and adjust the drilling process.

Ground 4: Obviousness over Haci, Pinckard, and Cobern - Claim 20 is obvious over Haci and Pinckard in further view of Cobern.

• Prior Art Relied Upon: Haci (Patent 7,810,584), Pinckard (Application # 2002/0104685), and Cobern (Patent 4,761,889).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addresses claim 20, which requires the actual toolface orientation data to comprise gravity-based or magnetic-based data. While Haci teaches displaying toolface orientation, it does not specify the sensor type. Petitioner argued Cobern explicitly discloses a sensor unit containing both a triaxial magnetometer and an accelerometer for calculating "gravity tool face reference (GTF)" and "magnetic tool face reference (MTF)," and sending these values to the surface for display.
  • Motivation to Combine (for §103 grounds): A POSITA implementing Haci's system would have looked to known art like Cobern for details on conventional sensor technology. It was well-known to use magnetic toolface at low inclinations and gravity toolface at higher inclinations. Combining Cobern’s sensor package with Haci’s display system would be an obvious way to implement a robust toolface measurement system.

4. Key Claim Construction Positions

• Petitioner argued that the Board need not expressly construe any terms because the prior art invalidates the claims under any plausible construction.
• For the term "quill position," Petitioner noted that the ’663 patent provides its own broad definition, which may refer to the orientation of various rotary drive elements beyond a conventional quill, such as a rotary table.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under Fintiv, asserting that factors weighed against denial. Key arguments included that the district court in the parallel litigation was likely to grant a stay if IPR was instituted, the litigation was in its early stages with minimal discovery and no claim construction orders, and the petition challenged all asserted claims, offering a more efficient resolution than district court.
• Petitioner also argued against denial under §325(d), contending that the examiner did not previously consider the asserted combinations of prior art. While Pinckard was cited during prosecution, it was for a different purpose, and the primary references of Haci, Hamilton, Mason, and Cobern were never considered by the examiner at all, meaning the petition raised new, non-cumulative arguments.

6. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 12-20 of the ’663 Patent as unpatentable.