Trials@uspto.gov
`571-272-7822
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`Entered: December 17, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BAKER HUGHES INCORPORATED
`and
`BAKER HUGHES OILFIELD OPERATIONS, INC.,
`Petitioner,
`
`v.
`
`PACKERS PLUS ENERGY SERVICES, INC.,
`Patent Owner.
`____________
`
`IPR2016-005981
`Patent 7,861,774 B2
`____________
`
`
`
`Before SCOTT A. DANIELS, NEIL T. POWELL, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`1 IPR2016-01506 has been joined with IPR2016-00598.
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`I. INTRODUCTION
`Packers Plus Energy Services Inc. (“Patent Owner”) is the owner of
`
`Patent No. 7,861,774 B2 (“the ’774 patent”). Baker Hughes Incorporated
`and Baker Hughes Oilfield Operations, Inc. (collectively, “Petitioner”) filed
`a Petition challenging claims 1–16 of the ’774 patent. IPR2016-00598,
`Paper 1 (“598 Pet.”). Rapid Completions LLC, the exclusive licensee of the
`’774 patent, filed a Preliminary Response. IPR2016-00598, Paper 7 (“598
`Prelim. Resp.”). In view of those submissions, we instituted an inter partes
`review of claims 1–16 of the ’774 patent. IPR2016-00598, Paper 8 (“598
`Dec. on Inst.”). Subsequent filings related to the grounds presented in the
`IPR2016-00598 Petition include a Patent Owner Response (IPR2016-00598,
`Papers 26, 272, “598 PO Resp.”), a Petitioner Reply (IPR2016-00598,
`Paper 33, “598 Pet. Reply”), a Patent Owner Surreply (IPR2016-00598,
`Paper 41, “598 PO Surreply”), and a Petitioner Sur-surreply (IPR2016-
`00598, Paper 43, “598 Sur-surreply”).
`In IPR2016-01506, Petitioner asserted different grounds of
`unpatentability of claims 1–16 of the ’774 patent in another Petition.
`IPR2016-01506, Paper 1 (“1506 Pet.”). Rapid Completions LLC filed a
`Preliminary Response. IPR2016-01506, Paper 17 (“1506 Prelim. Resp.”).
`In view of those submissions, we instituted an inter partes review of
`claims 1–16 of the ’774 patent. IPR2016-01506, Paper 19 (“1506 Dec. on
`Inst.”). Additionally, we granted Petitioner’s motion to join IPR2016-01506
`with IPR2016-00598. IPR2016-01506, Paper 31. Subsequent filings
`
`
`2 Paper 26 is a private, unredacted version of the Patent Owner Response,
`and Paper 27 is a public, redacted version of the Patent Owner Response.
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`addressing the grounds presented in the Petition for IPR2016-01506 include
`a Patent Owner Response (IPR2016-005983, Papers 51, 524, “1506 PO
`Resp.”5), and a Petitioner Reply (IPR2016-00598 , Paper 62, “1506 Pet.
`Reply”). All of the grounds presented in the Petition for IPR2016-00598
`and all of the grounds presented in the Petition for IPR2016-01506 are
`pending in this inter partes review.
`In IPR2016-01509, we found that a different petitioner demonstrated
`that claims 1, 3–7, 9, 10, 12, and 16 of the ’774 patent are unpatentable
`under 35 U.S.C. § 103. Weatherford International LLC, Weatherford/Lamb,
`Inc., Weatherford US, LP, and Weatherford Artificial Lift Systems, LLC v.
`Rapid Completions LLC, IPR2016-01509, Paper 64 at 62–63 (PTAB Apr. 3,
`2018). Specifically, in IPR2016-01509, we found that it had been shown
`that claims 1, 3–7, 9, 10, 12, and 16 would have been obvious over
`Thomson6 and Ellsworth7. Id. In IPR2016-01509, we did not address
`
`
`3 This paper appears in the record of IPR2016-00598 because it was filed
`after the cases were joined.
`4 Paper 51 is a private, unredacted version of the Patent Owner Response,
`and Paper 52 is a public, redacted version of the Patent Owner Response.
`5 Because the substance of this paper addresses the grounds originally
`presented in the Petition for IPR2016-01506, subsequent citations use
`“1506” to identify this paper, notwithstanding that it appears in the record of
`IPR2016-00598. We apply the same convention with respect to other papers
`and exhibits that relate to the grounds originally presented in IPR2016-
`01506, but were filed in the record of IPR2016-00598 after joinder of the
`two cases.
`6 D.W. Thomson et al., Design and Installation of a Cost-Effective
`Completion System for Horizontal Chalk Wells Where Multiple Zones
`Require Acid Stimulation, SPE (Society for Petroleum Engineering) 37482
`(1997) (“Thomson”) (Ex. 1002).
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`claims 2, 8, 11, or 13–15 (all of which depend from independent claim 1)
`because the petitioner in that case did not challenge the patentability of these
`claims. See id. at 7. Our decision in IPR2016-01509 has been affirmed by
`the U.S. Court of Appeals for the Federal Circuit. Rapid Completions LLC
`v. Weatherford International LLC, Weatherford/Lamb, Inc., Weatherford
`US, LP, Weatherford Artificial Lift Systems, LLC, 771 F. App’x 478 (Fed.
`Cir. 2019).
`In the present case, Patent Owner maintains that no claim of the ’774
`patent would have been obvious over Thomson and Ellsworth. See
`generally Prelim. Resp. Our affirmed decision in IPR2016-01509 precludes
`Patent Owner from taking a position that is adverse to our prior judgment
`determining claims 1, 3–7, 9, 10, 12, and 16 to be unpatentable. 37 C.F.R.
`§ 42.73(d)(3) (“A patent applicant or owner is precluded from taking action
`inconsistent with the adverse judgment.”). Our decision in IPR2016-01509
`does not preclude Patent Owner from arguing separately for the patentability
`of one or more of dependent claims 2, 8, 11, and 13–15, all of which depend
`directly from previously adjudicated independent claim 1. Thus, we treat the
`patentability arguments Patent Owner advances in this proceeding as
`directed solely to previously unadjudicated dependent claims 2, 8, 11, and
`13–15. We also address Patent Owner’s arguments with respect to claim 1
`because it is the base claim from which claims 2, 8, 11, and 13–15 depend.
`However, we do not otherwise provide a decision on the merits of previously
`adjudicated claims 1, 3–7, 9, 10, 12, and 15.
`
`7 B. Ellsworth et al., Production Control of Horizontal Wells in a Carbonate
`Reef Structure, 1999 Canadian Institute of Mining, Metallurgy, and
`Petroleum Horizontal Well Conference (1999) (“Ellsworth”) (Ex. 1003).
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`We have jurisdiction over this proceeding under 35 U.S.C. § 6(b).
`After considering the evidence and arguments of the parties, we determine
`that Petitioner has proven by a preponderance of the evidence that claims 2,
`8, 11, and 13–15 of the ’774 patent are unpatentable. See 35 U.S.C.
`§ 316(e). We issue this Final Written Decision pursuant to 35 U.S.C.
`§ 318(a).
`
`II. BACKGROUND
`
`A.
`
`The ’774 Patent
`The ’774 patent describes a method for fluid treatment of a well bore,
`and a tubing string tool for treating and stimulating flow from particular
`segments of the well bore in an oil or gas formation while sealing off other
`segments. Ex. 1001, Abstract. The well bore can be either an open hole or a
`cased hole. Id. at 3:66–4:3. Typically, a tubing string is run into a well bore
`as a conduit for oil and gas products to flow to the surface. Id. at 1:28–48.
`But when natural formation pressure is insufficient to obtain a desired
`product flow, a well “stimulation” technique is employed, i.e. fracing, which
`involves injecting fracturing fluids into the formation to enlarge existing
`channels and thereby improve inflow into the well bore. Id. at 1:35–39.
`And, because a well bore may cross multiple zones within an oil or gas
`formation, only some of which contain desirable products, the ability to
`inject “treatment fluids wherein fluid is injected into selected intervals of the
`well bore, while other intervals are closed,” is key to controlling and
`optimizing production from the well. Id. at 2:28–30.
`Figure 1b of the ’774 patent is reproduced below. We note that
`Figure 1b as illustrated has a vertical orientation, and referring to Figure 1a
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`and other figures as well as the claims, the well bore can be configured also
`in a non-vertical orientation, for example horizontal.
`
`
`As shown, above, in Figure 1b, and described in the ’774 patent,
`tubing string 14 includes a series of ports 16c, 16d, 16e, along its length,
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`with a ball-actuated sliding sleeve 26c, 26d, 26e, mounted over each port,
`for selectively permitting the release of fluid from certain segments of the
`tubing string. Id. at 2:39–65, 6:37–7:31. Special sealing devices, called
`“solid body packers” or “SBPs,” 20d, 20e, 20f, are mounted along the length
`of the tubing string downhole and uphole of each port. Id. at 2:39–65, 6:4–
`36. The solid body packers are disposed about the tubing string and seal the
`annulus between the tubing string and the well bore wall, thereby dividing
`the well bore into a series of isolated segments, also called stages. Id. at
`6:18–24.
`As further observed in Figure 1b, when sliding sleeve 26e covering
`port 16e is activated by ball 24e to an open position as shown, fluid can pass
`into one segment of the well bore but is prevented from passing into adjacent
`segments by packers 20e and 20f positioned on either side of the port. Id. at
`6:50–57. Thus, ball 24e, as the smallest ball, passes through sleeves 26c and
`26d before activating sliding sleeve 26e. With port 16e open, as shown
`above, a stimulation of this segment of the well bore can be undertaken.
`With this structure, sequential stimulation of the adjacent well bore segments
`can be implemented because “[e]ach of the plurality of sliding sleeves has a
`different diameter seat and therefore each accept different sized balls.” Id. at
`7:14–15. In other words, working uphole, each consecutive sliding sleeve
`has a slightly larger seat and is activated by a slightly larger ball than the
`previous sliding sleeve. Id. Hence, a sequential stimulation of each adjacent
`uphole segment of the well bore is achieved with the increasing sleeve seat
`and ball diameter.
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`Related Matters
`B.
`The ’774 patent is involved in a concurrent district court action, Rapid
`
`Completions LLC v. Baker Hughes Inc., No. 6:15-cv-00724 (E.D. Tex.),
`which was filed July 31, 2015. IPR2016-00598, Paper 6, 1.
`Additionally, as discussed above, we determined in IPR2016-01509
`that independent claim 1 and dependent claims 1, 3–7, 9, 10, 12, and 16 are
`unpatentable, which was later affirmed on appeal to the Federal Circuit.
`
`C.
`The Challenged Claims
`Each of challenged claims 2, 8, 11, and 13–15 depends from
`independent claim 1, which is the only independent claim in the ’774 patent.
`Claim 1 is reproduced below.
`1. A method for fracturing a hydrocarbon-containing formation
`accessible through a wellbore, the method comprising:
`running a tubing string into an open hole and uncased, non-
`vertical section of the wellbore, the tubing string having a
`long axis and an inner bore and comprising:
`a first port opened through the tubing string wall,
`a second port opened through the tubing string wall, the second
`port downhole from the first port along the long axis of
`the tubing string,
`a first sliding sleeve having a seat with a first diameter, the first
`sliding sleeve positioned relative to the first port and
`moveable relative to the first port between (i) a closed
`port position wherein fluid can pass the seat and flow
`downhole of the first sliding sleeve and (ii) an open port
`position permitting fluid flow through the first port from
`the tubing string inner bore and sealing against fluid flow
`past the seat and downhole of the first sliding sleeve,
`a second sliding sleeve having a seat with a second diameter
`smaller than the first diameter, the second sliding sleeve
`positioned relative to the second port and moveable
`relative to the second port between (i) a closed port
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`position wherein fluid can pass the seat and flow
`downhole of the second sliding sleeve and (ii) an open
`port position permitting fluid flow through the second
`port from the tubing string inner bore and sealing against
`fluid flow past the seat and downhole of the second
`sliding sleeve,
`a first solid body packer mounted on the tubing string to act in a
`position uphole from the first port along the long axis of
`the tubing string, the first solid body packer operable to
`seal about the tubing string and against a wellbore wall in
`the open hole and uncased, non-vertical section of the
`wellbore,
`a second solid body packer mounted on the tubing string to act
`in a position between the first port and the second port
`along the long axis of the tubing string, the second solid
`body packer operable to seal about the tubing string and
`against the wellbore wall in the open hole and uncased,
`non-vertical section of the wellbore;
`a third solid body packer mounted on the tubing string to act in
`a position offset from the second port along the long axis
`of the tubing string and on a side of the second port
`opposite the second packer, the third solid body packer
`operable to seal about the tubing string and against the
`wellbore wall in the open hole and uncased, non-vertical
`section of the wellbore,
`wherein the tubing string is run into the wellbore with the first,
`second and third solid body packers each in an unset
`position such that an annulus between the tubing string
`and the wellbore wall is open;
`expanding radially outward the first, second and third solid
`body packers until each of the first, second and third
`packers sets and seals against the wellbore wall in the
`open hole and uncased, non-vertical section of the
`wellbore, the first, second and third solid body packers
`when expanded, secure the tubing string in place in the
`wellbore and create a first annular wellbore segment
`between the first and second solid body packers and a
`second annular wellbore segment between the second and
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`third solid body packers, the first annular wellbore
`segment substantially isolated from fluid communication
`with the second annular wellbore segment by the second
`solid body packer and the first and second annular
`wellbore segments providing access to the hydrocarbon-
`containing formation along the wellbore wall in the open
`hole and uncased, non-vertical section of the wellbore;
`conveying a fluid conveyed sealing device through the tubing
`string to pass through the first sliding sleeve and to land
`in and seal against the seat of the second sliding sleeve
`moving the second sliding sleeve to the open port
`position permitting fluid flow through the second port;
`and
`pumping fracturing fluid through the second port and into the
`second annular wellbore segment to fracture the
`hydrocarbon-containing formation.
`Ex. 1001, 13:61–15:6.
`
`D.
`
`35 U.S.C. §
`103(a)
`103(a)
`103(a)
`
`Basis
`Thomson8, Ellsworth9
`Thomson, Ellsworth, Hartley10
`Lane-Wells11, Ellsworth
`
`The Pending Grounds
`Claims 1–16 of the ’774 patent are challenged as allegedly
`unpatentable based on the following pending grounds (598 Dec. on Inst. 4;
`1506 Dec. on Inst. 4–5):
`Claim(s) Challenged
`1–16
`15
`1–16
`
`8 D.W. Thomson et al., Design and Installation of a Cost-Effective
`Completion System for Horizontal Chalk Wells Where Multiple Zones
`Require Acid Stimulation, SPE (Society for Petroleum Engineering) 37482
`(1997) (“Thomson”) (Ex. 1002).
`9 B. Ellsworth et al., Production Control of Horizontal Wells in a Carbonate
`Reef Structure, 1999 Canadian Institute of Mining, Metallurgy, and
`Petroleum Horizontal Well Conference (1999) (“Ellsworth”) (Ex. 1003).
`10 U.S. Patent No. 5,449,039, iss. Sept. 12, 1995 (“Hartley”) (Ex. 1004).
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`Claim(s) Challenged
`15
`4, 6
`
`35 U.S.C. §
`103(a)
`103(a)
`
`Basis
`Lane-Wells, Ellsworth, Hartley
`Lane-Wells, Ellsworth, “the
`knowledge of a person of
`ordinary skill in the art”
`As further support, Petitioner proffers Declarations of Ali Daneshy,
`Ph.D.12 (598 Ex. 1005; 598 Ex. 1132; 1506 Ex. 1005). Patent Owner
`proffers Declarations of Harold E. McGowen III, PE. (598 Ex. 2034; 598
`Ex. 2036; 1506 Ex. 2050; 1506 Ex. 2051; 1506 Ex. 2081; 1506 Ex. 2084).
`III. ANALYSIS
`Claim Construction
`A.
`In an inter partes review filed before November 13, 2018, claim terms
`in an unexpired patent are given their broadest reasonable construction in
`light of the specification of the patent. 37 C.F.R. § 42.100(b) (2016).13
`
`
`11 Composite Catalog of Oil Field and Pipe Line Equipment 21st 1955–56
`Edition, World Oil, The Gulf Publishing Company (1506 Ex. 1002).
`12 Patent Owner criticizes Dr. Daneshy’s testimony, arguing that Dr.
`Daneshy did not know certain legal criteria associated with determining
`obviousness of the claimed invention. 598 PO Resp. 48–51; 1506 PO
`Resp. 53–56. We have given Dr. Daneshy’s testimony appropriate weight in
`view of Patent Owner’s arguments. For example, in our analysis, we do not
`rely on Dr. Daneshy’s ultimate conclusions regarding obviousness, and we
`afford his testimony on underlying factual issues appropriate weight.
`13 The Office recently changed the claim construction standard used in inter
`partes review proceedings. 37 C.F.R. § 42.100(b) (2019). As stated in the
`Federal Register notice, however, the new rule applies only to petitions filed
`on or after November 13, 2018, and, therefore, does not impact this matter.
`See Changes to the Claim Construction Standard for Interpreting Claims in
`Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
`51,340, 51,340 (Oct. 11, 2018) (stating “[t]his rule is effective on November
`13, 2018 and applies to all IPR, PGR and CBM petitions filed on or after the
`effective date”).
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`Consistent with that standard, we assign claim terms their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art at the time of the invention, in the context of the entire patent disclosure.
`See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Only those terms that are in controversy need be construed, and only to the
`extent necessary to resolve the controversy. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
`Cir. 1999)).
`Petitioner proposes constructions for certain claim terms. 598 Pet.
`20–22; 1506 Pet. 24–26. Patent Owner also addresses the meaning of
`certain claim language. 598 PO Resp. 3–7; 1506 PO Resp. 3–6. For
`purposes of this decision, we need not construe expressly any claim
`language. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy.”).
`B. Alleged Obviousness of Claims 2, 8, 11, and 13–15 over Thomson
`and Ellsworth
`Petitioner asserts that Thomson “describes a successful well
`completion for selectively treating multiple formation zones.” 598 Pet. 22.
`Petitioner contends that Thomson teaches most of the limitations of the
`challenged claims. Id. at 27–45. Regarding the claim limitations related to
`using a tubing string in “an open hole and uncased . . . section of the
`wellbore” (Ex. 1001, 13:64–65), Petitioner contends that it would have been
`obvious in view of Ellsworth to use Thomson’s apparatus in an open hole
`wellbore. Id. at 26–27.
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`Patent Owner argues that the challenged claims would not have been
`obvious for a number of reasons related to the factors identified in Graham
`v. John Deere Co., 383 U.S. 1 (1966). 598 PO Resp. 8–57. Those factors
`include (1) the scope and content of the prior art, (2) differences between the
`prior art and the claims, (3) the level of ordinary skill in the art, and (4)
`secondary considerations, i.e., objective indicia of non-obviousness.
`Graham, 383 U.S. at 17–18. We turn now to detailed discussions of these
`factors, followed by our conclusions regarding whether claims 2, 8, 11, and
`13–15 would have been obvious.
`1. Scope and Content of the Prior Art
`a. Thomson
`Thomson discloses a “completion design that allows multiple acid
`fracs to be performed in horizontal subsea chalk-formation wells with a
`single trip into the wellbore.” Ex. 1002, 1. Thomson’s “project was
`initiated to develop a system that would allow multiple acid stimulations to
`be efficiently performed in the shortest possible time.” Id. “The key
`element” of Thomson’s system “is a multi-stage acid frac tool (MSAF) that
`is similar to a sliding sleeve circulating device and is run in the closed
`position.” Id. Thomson’s Figure 5, below, depicts the MSAF tool in cross-
`section.
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`Thomson’s Figure 5, reproduced above, depicts in the upper illustration
`labeled “Closed Position,” the MSAF tool having a sliding sleeve covering
`fluid ports in the closed position, and in the lower illustration, labeled “Open
`Position,” the sliding sleeve having been moved by a ball into an open
`position uncovering the fluid ports. Id. at 2, 12.
`
`Thomson discloses that hydraulic-set retrievable packers may be
`positioned on each side of an MSAF tool. Id. at 1. Thomson shows an
`MSAF tool disposed between two packers in Figure 3, which is reproduced
`below.
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`Thomson’s Figure 3 shows “a schematic of a typical Joanne completion.”
`Id. at 2. Figure 3 shows one MSAF tool disposed between two packers. Id.
`at 2, Fig. 3. Thomson discloses that more MSAF tools can be used, stating
`that “[u]p to 9 MSAF tools can be run in the completion with isolation of
`each zone being achieved by hydraulic-set retrievable packers that are
`positioned on each side of an MSAF tool.” Id. at 1. To illustrate an example
`of Thomson’s disclosure of using multiple MSAF tools, each isolated in a
`zone by adjacent hydraulic-set retrievable packers, Petitioner provides the
`following modified, annotated version of Thomson’s Figure 3. 598 Pet. 24.
`
`
`
`Petitioner’s modified, annotated version of Figure 3 shows three MSAF
`tools and three packers mounted in alternating positions along a tubing
`string. Id. Apparently using the dimensions from table 1 of Thomson, the
`annotated, modified Figure 3 identifies the first (leftmost) MSAF tool as
`having a 2” dimension, the next MSAF tool as having a 1.75” dimension,
`and the next MSAF tool as having a 1.5” dimension. Id. This comports
`with Thomson’s disclosure that “[e]ach sleeve contains a threaded ball seat
`with the smallest ball seat in the lowest sleeve and the largest ball seat in the
`highest sleeve.” Ex. 1002, 1; 598 Pet. 29–31.
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`For each well, Thomson discloses running its apparatus into the well
`in one trip, after perforating the well with tubing-conveyed perforating guns.
`Ex. 1002, 3. Thomson discloses subsequently setting the packers of the
`apparatus and stimulating the well. Id. Thomson discloses that
`[w]ith this system, stimulation of 10 separate zones is
`accomplished in 12–18 hours by a unique procedure that
`lubricates varying sized low-specific gravity balls into the
`tubing and then pumps them to a mating seat in the appropriate
`MSAF, thus sealing off the stimulated zone and allowing
`stimulation of the next zone which is made accessible by
`opening the sleeve.
`Id. at 1. Based on these express disclosures, we find that Thomson teaches
`multistage fracturing of a wellbore.
`b. Ellsworth
`Ellsworth discusses challenges in providing isolation in mostly open
`hole horizontal completions. Ex. 1003, 1. Ellsworth “presents several well
`case histories that illustrate the application of advancements in establishing
`isolation in the open hole horizontal completions to accomplish various
`objectives in the successful application of horizontal wells.” Id. Noting
`prior use of inflatable packers for isolation, Ellsworth discloses that “[m]ore
`recently, solid body packers (SBP’s) (see Figure 4) have been used to
`establish open hole isolation.” Id. at 3. Ellsworth’s Figure 4 is reproduced
`below.
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`Figure 4, above, shows a solid body packer, including a setting cylinder, a
`setting shear, a mandrel lock, a five piece packing element, and a sheer
`release. Id., Fig. 4. Ellsworth teaches that a solid body packer provides a
`hydraulically actuated mechanical packing element. Id. at 3. Ellsworth
`explains that “[t]he objective of using this type of tool is to provide a long-
`term solution to open hole isolation without the aid of cemented liners.” Id.
`Reporting the results of one installation of solid body packers in an open
`hole wellbore, Ellsworth states that “[t]he initial acid job using [solid body
`packers] indicated that the tools successfully provided isolation during the
`job.” Id. at 6. Reporting on another installation, Ellsworth discloses that
`“mechanical confirmation indicated that the [solid body packers] were
`holding” and that “[p]roduction testing afterwards, as well as sleeve changes
`during the first 6 months indicated that successful isolation was achieved.”
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`Id. at 8. Regarding another installation, Ellsworth reports that “zonal
`segmentation in the build section of this well was clearly demonstrated.” Id.
`In summarizing its disclosure, Ellsworth states that “[t]he ability to establish
`long-term zonal isolation in open hole producers opens the door to many
`new well producing configurations. The goal of cost effective use of
`horizontals can be enhanced with the ability to segment, and control
`production without the need to run and cement liners.” Id.
`2. Differences Between the Prior Art and the Claimed Invention
`As noted above, Petitioner asserts that Thomson teaches most of the
`limitations of the claims. 598 Pet. 27–45. Petitioner does not, however,
`assert that Thomson teaches claim 1’s limitation of using a tubing string in
`“an open hole and uncased . . . section of the wellbore” (Ex. 1001, 13:64–65)
`or similar limitations related to performing the method in an open hole
`wellbore. See generally 598 Pet. Although Thomson teaches using its
`apparatus to perform multistage fracturing in a wellbore (see Section
`III.B.1.a, supra), it does not appear to teach doing so in an open-hole
`wellbore. Ellsworth discloses using solid body packers to isolate segments
`of an open hole wellbore, (Ex. 1003, 4), but does not disclose using an
`arrangement of tubing string, sleeves, and packers in the exact manner
`required by the challenged claims. Thus, the difference between Thomson
`and the challenged claims is that Thomson does not appear to use its
`apparatus, including its solid body packers, in an open hole wellbore, as
`disclosed in Ellsworth. However, using Thomson’s apparatus in the manner
`disclosed by Thomson, except that it occurs in an open hole wellbore like
`those discussed in Ellsworth, would result in the claimed invention.
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`Patent Owner presents consistent analysis regarding the difference
`between the challenged claims and the cited references. Patent Owner notes
`that “Thomson does not disclose any of the open hole limitations of the
`claims.” 598 PO Resp. 44. Patent Owner also explains that “Ellsworth does
`not disclose: ‘a first [second] sliding sleeve with a first [second]
`diameter. . . ,’ ‘conveying a fluid conveyed sealing device. . . ,’ or ‘pumping
`fracturing fluid into the second annular wellbore segment to fracture the
`hydrocarbon-containing formation.’”14 Id. at 45. Patent Owner does not
`dispute that combining Thomson and Ellsworth’s disclosures in the manner
`suggested by Petitioner would result in the claimed invention. See generally
`598 POR.
`Instead, Patent Owner argues that “neither Thomson nor Ellsworth
`teaches pumping fracturing fluid into an open hole annular segment to
`fracture a formation.” Id. at 52. Even if accurate, this assertion attacks the
`teachings of the references individually, rather than the combination of the
`references’ teachings proposed by Petitioner. Specifically, Petitioner
`proposes that it would have been obvious to combine Thomson’s disclosure
`of using a tubing string to pump fracturing fluid to fracture a formation with
`Ellsworth’s teaching of using a tubing string in an open hole annular
`segment. 598 Pet. 26–27. Petitioner explains that Patent Owner “relies on
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`14 Patent Owner also states that “Ellsworth teaches against the use of ball-
`activated sleeves that are only opened when a ball is dropped downhole and
`forced against a ball seat with fluid pressure.” 598 PO Resp. 45. To the
`extent Patent Owner means to say that Ellsworth teaches away from the
`sleeves recited in the claims, we are not persuaded that Ellsworth criticizes,
`discredits, or otherwise discourages the use of the claimed invention. See In
`re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
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`‘pumping fracturing fluid into an open hole annular segment to fracture a
`formation’ as a distinction (POR 52), but that would occur performing
`Thomson’s acid frac through Thomson’s system in an open wellbore like
`Ellsworth’s.” 598 Pet. Reply 1. Petitioner persuades us that combining the
`teachings of Thomson and Ellsworth in the proposed manner would have
`produced all of the limitations of the methods claimed in claims 2, 8, 11, and
`13–15. Because it attacks the references individually, rather than addressing
`the combination of the references’ teachings presented by Petitioner, Patent
`Owner’s argument that neither Thomson nor Ellsworth teaches open hole
`fracturing does not undermine Petitioner’s obviousness assertions. See, e.g.,
`In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-
`obviousness cannot be established by attacking references individually
`where the rejection is based upon the teachings of a combination of
`references.”).
`3. Level of Ordinary Skill in the Art
`“Section 103(a) forbids issuance of a patent when ‘the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007).
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`a. The Parties’ Contentions
`Petitioner asserts that a person of ordinary skill in the art as of
`November 19, 2001 “wou