Liberty Energy Inc v. US Well Services LLC

1. Case Identification

• Case #: IPR2024-01274
• Patent #: 11,091,992
• Filed: September 5, 2024
• Petitioner(s): Liberty Energy, Inc. and Liberty Oilfield Services LLC
• Patent Owner(s): U.S. Well Services, LLC
• Challenged Claims: 1-20

2. Patent Overview

• Title: System for Centralized Monitoring and Control of Electric Powered Hydraulic Fracturing Fleet
• Brief Description: The ’992 patent relates to systems and methods for hydraulic fracturing using equipment powered by electric motors. The invention focuses on a centralized control unit for monitoring and controlling various wellsite operations, including electric pumps and natural gas-powered turbine generators.

3. Grounds for Unpatentability

Ground 1A: Claims 1-5 and 8-14 are obvious over Coli, Birch, and Rusnak

• Prior Art Relied Upon: Coli (Application # 2012/0255734), Birch (Patent 5,606,853), and Rusnak (Application # 2008/0288115).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Coli disclosed the foundational system for hydraulic fracturing, including trailer-mounted electric pumps, natural gas-powered turbine generators, variable frequency drives (VFDs), and a centralized "control center" for monitoring pump functions. To improve this system, a person of ordinary skill in the art (POSITA) would have integrated Birch's teachings on monitoring and controlling the compression and fuel pressure of natural gas in the turbine generators. Furthermore, a POSITA would have incorporated Rusnak's disclosure of an external controller that automatically resets faults occurring in a VFD to increase system uptime and safety, as recited in claim 1.
  • Motivation to Combine: A POSITA would combine Coli with Birch to implement more detailed control over the gas turbine generators from Coli’s central control location, enhancing efficiency and consolidating operations. The motivation to add Rusnak stemmed from the known problem of VFD faults; Rusnak’s automated fault-reset function provided a direct solution to improve the reliability of Coli's VFD-controlled pumps.
  • Expectation of Success: Petitioner asserted a POSITA would have a high expectation of success, as the combination involved applying known control techniques (monitoring turbine generators, resetting VFD faults) to a known system (an electric fracturing fleet) to achieve predictable improvements in control and reliability.

Ground 1B: Claims 1-5 and 8-14 are obvious over Coli, Birch, Rusnak, and Dykstra

• Prior Art Relied Upon: Coli (Application # 2012/0255734), Birch (Patent 5,606,853), Rusnak (Application # 2008/0288115), and Dykstra (Application # 2008/0236818).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Coli, Birch, and Rusnak by adding the teachings of Dykstra. Petitioner contended that to the extent Coli's disclosure of centralized monitoring was not explicit enough, Dykstra provided the missing detail. Dykstra disclosed a "central control system" that explicitly monitors and controls both a "pumping grid" (a collection of electric pumps) and a "power unit" (a power generator), including receiving pressure signals from pump sensors.
  • Motivation to Combine: A POSITA looking to enhance the centralized control capabilities of the Coli system would be motivated to incorporate the more detailed monitoring functionalities described in Dykstra. Dykstra directly addressed the goal of centrally monitoring numerous different components of a well fracturing system, matching the objective suggested by Coli.
  • Expectation of Success: Success would be expected because implementing Dykstra's specific monitoring techniques into Coli's broader system framework represented a predictable improvement, allowing for more efficient and safer contemporaneous control of pumps and generators.

Ground 2A: Claims 6, 7, and 15-20 are obvious over Coli, Birch, Rusnak, and Hunt

• Prior Art Relied Upon: Coli (Application # 2012/0255734), Birch (Patent 5,606,853), Rusnak (Application # 2008/0288115), and Hunt (Application # 2010/0038907).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed claims requiring an emergency power off (EPO) unit. Petitioner argued that a POSITA would modify the base combination of Coli, Birch, and Rusnak by incorporating the teachings of Hunt. Hunt disclosed a multifunction control module (MCM) coupled to a switchgear that serves as an EPO unit. This switchgear could disconnect a generator from the power bus upon detecting a fault condition, and also allowed for the use of an auxiliary power source (e.g., a utility grid) to maintain power to the wellsite, as required by claims 6 and 7.
  • Motivation to Combine: A POSITA would add Hunt's switchgear and control logic to the Coli system for the well-known reason of increasing power system protection and safety. Implementing an EPO system with backup power capability was a known method to prevent full-site shutdowns, avoid equipment damage, and enhance operator safety.
  • Expectation of Success: The combination was argued to be a predictable application of a known safety technique (switchgear-based EPO) to a known system (electric fracturing fleet), with a high expectation of success in improving system resilience and protection.

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 2B) based on the combination of Coli, Birch, Rusnak, Dykstra, and Hunt to address claims 6, 7, and 15-20.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be improper under both §314(a) and §325(d). Regarding the Fintiv factors, Petitioner asserted that the IPR was filed promptly after infringement contentions were served, the parallel district court litigation is in its nascent stages, and the merits of the petition are exceptionally strong, as evidenced by a Final Written Decision (FWD) invalidating all challenged claims of the parent ’278 patent on similar grounds. Regarding §325(d), Petitioner argued that the examiner committed material error during prosecution by failing to appreciate the full scope of Coli’s disclosure on VFDs. Furthermore, key secondary references like Birch were never considered by the examiner, making the asserted grounds new and non-cumulative. Petitioner also contended that the Patent Owner should be collaterally estopped from re-litigating claim scope and prior art issues already decided in the IPR against the parent patent.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-20 of the ’992 patent as unpatentable.