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`Trials@uspto.gov
`571-272-7822
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`Paper No. 38
` Entered: November 13, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WEATHERFORD INTERNATIONAL, LLC,
`WEATHERFORD /LAMB, INC., WEATHERFORD US, LP, and
`WEATHERFORD ARTIFICIAL LIFT SYSTEMS, LLC,
`Petitioner,
`
`v.
`
`PACKERS PLUS ENERGY SERVICES, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01236
`Patent 9,303,501 B2
`____________
`
`Before SCOTT A. DANIELS, NEIL T. POWELL, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`37 C.F.R. § 42.108
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`I. INTRODUCTION
`Packers Plus Energy Services Inc. (“Packers Plus”) is the owner of
`
`Patent No. 9,303,501 B2 (“the ’501 patent). Weatherford International,
`LLC, Weatherford/Lamb, Inc., Weatherford US, LP, and Weatherford
`Artificial Lift Systems, LLC (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`challenging claims 1–9 of the ’501 patent. Rapid Completions LLC, the
`exclusive licensee of the ’501 patent, filed a Preliminary Response (Paper 9,
`“Prelim. Resp.”). In view of those submissions, we instituted an inter partes
`review of claims 1–9 of the ’501 patent. Paper 10 (“Institution Decision” or
`“Dec. on Inst.”). Subsequent filings include a Patent Owner Response
`(Papers 16, 171, “PO Resp.”), a Petitioner Reply (Paper 20, “Pet. Reply”),
`and a Patent Owner Surreply (Paper 33, “PO Surreply”).
`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 1–
`9 of the ’501 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 ’501 Patent
`The ’501 patent describes a method of using a tubing string for
`treating a particular segment of a wellbore, while sealing off other segments.
`Ex. 1001, Abstract. Typically, a tubing string is run into a wellbore as a
`conduit for oil and gas products to flow to the surface. Id. at 1:36–42. But
`
`
`1 Paper 16 is a private, unredacted version of the Patent Owner Response,
`and Paper 17 is a public, redacted version of the Patent Owner Response.
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`when natural formation pressure is insufficient, a well “stimulation”
`technique is employed, which involves injecting fracturing fluids into the
`formation to enlarge existing channels and thereby improve inflow into the
`wellbore. Id. at 1:43–47.
`As described in the ’501 patent, the tubing string includes a series of
`ports along its length, with a ball-actuated sliding sleeve mounted over each
`port, for selectively permitting the release of fluid from certain segments of
`the tubing string. Id. at 2:46–3:6, 6:44–7:39. Special sealing devices, called
`“solid body packers,” are mounted along the length of the tubing string
`downhole and uphole of each port. Id. at 2:46–3:6, 6:11–43. The solid body
`packers are disposed about the tubing string and seal the annulus between
`the tubing string and the wellbore wall, thereby dividing the wellbore into a
`series of isolated segments. Id. at 6:25–31. When the sliding sleeve over a
`particular port is activated to an open position, fluid can pass into one
`segment of the wellbore but is prevented from passing into adjacent
`segments by the packers positioned on either side of the port. Id. at 6:49–64.
`Related Matters
`B.
`
`The ’501 patent is involved in a concurrent district court action, Rapid
`Completions LLC v. Baker Hughes Incorporated, No. 6:15-cv-00724 (E.D.
`Tex.). Paper 4, 1–2. The ’501 patent is also involved in instituted inter
`partes reviews in IPR2016-01380 and IPR2017-00247. Id. at 2.
`Additionally, the ’501 patent is the subject of a petition for inter partes
`review in IPR2016-01232.
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`C.
`
`
`The Challenged Claims
`Of the challenged claims, claim 1 is independent, and claims 2–9
`depend from claim 1. 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 a wall of the tubing string,
`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 third port opened through the tubing string wall, the
`third port downhole from the second 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 of the
`first sliding sleeve 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 of the first
`sliding sleeve 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 position wherein fluid can pass the seat of the
`second sliding sleeve 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 of
`
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`the second sliding sleeve 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 solid body 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, and
`a hydraulically actuated sliding sleeve in a position offset
`from the third solid body packer along the long axis of
`the tubing string on a side of the third solid body packer
`opposite the second port, the hydraulically actuated
`sliding sleeve being positioned relative to the third port
`and moveable relative to the third port between (i) a
`closed port position in which the hydraulically actuated
`sliding sleeve covers the third port and (ii) an open port
`position in which the hydraulically actuated sliding
`sleeve exposes the third port to the tubing string inner
`bore to permit fluid flow through the third port from the
`tubing string inner bore,
`wherein the tubing string is run into the wellbore with the
`first, second, and third solid body packers each in an
`unset position;
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`expanding radially outward the first, second, and third solid
`body packers until each of the first, second, and third solid body
`packers sets and seals against the wellbore wall in the open hole
`and uncased, non-vertical section of the wellbore,
`wherein 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, a second
`annular wellbore segment between the second and third
`solid body packers, and a third annular wellbore segment
`downhole of the third solid body packer,
`wherein the first annular wellbore segment is substantially
`isolated from fluid communication with the second annular
`wellbore segment by the second solid body packer,
`wherein the second annular wellbore segment is substantially
`isolated from fluid communication with the third wellbore
`segment by the third solid body packer, and
`wherein the first, second, and third annular wellbore segments
`provide access to the hydrocarbon-containing formation along
`the wellbore wall in the open hole and uncased, non-vertical
`section of the wellbore;
`applying a first pressure within the tubing string inner bore such that
`the hydraulically actuated sliding sleeve moves from the closed port
`position to the open port position without the hydraulically actuated
`sliding sleeve engaging any fluid conveyed sealing device;
`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 thereby moving the second sliding
`sleeve to the open port position and 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, 13:65–16:6.
`
`
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`D.
`
`1–9
`
`The Pending Ground
`Claims 1–9 of the ’501 patent are challenged as allegedly
`unpatentable under 35 U.S.C. § 103 based on the following pending ground
`(Dec. on Inst. 14):
`Statutory
`References
`Basis
`§ 103
`
`Thomson,2 Ellsworth, 3 and
`Halliburton4
`As further support, Petitioner proffers the Declaration of Vikram Rao,
`Ph.D. (Exs. 1007, 1044). Patent Owner proffers Declarations of Harold E.
`McGowen III, PE. (Exs. 2051, 2081, 2084).
`
`Challenged Claims
`
`
`2 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) (Ex. 1003).
`3 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) (Ex. 1004).
`4 Halliburton, Completion Products, Second Edition (Ex. 1028).
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`III. MOTION TO EXCLUDE
`Petitioner has filed a Motion to Exclude seeking exclusion of certain
`evidence submitted by Patent Owner. Paper 24 (“Motion” or “Mot.”). For
`the reasons explained below, we determine that Petitioner has demonstrated
`unpatentability of the claims over all of the evidence submitted by Patent
`Owner (including that evidence Petitioner seeks to exclude). Consequently,
`we dismiss Petitioner’ Motion to Exclude as moot.
`IV. ANALYSIS
`Claim Construction
`A.
`Petitioner proposes a construction for the claim language “solid body
`packer.” Pet. 39. Patent Owner also addresses the meaning of the claim
`language “solid body packer,” as well as the claim language “second annular
`wellbore.” PO Resp. 4–6. For purposes of this decision, we need not
`construe explicitly any claim language to determine that Petitioner has
`demonstrated obviousness of claims 1–9 by a preponderance of the
`evidence. See 35 U.S.C. § 314(a); 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 1–9 over Thomson, Ellsworth, and
`Halliburton
`Petitioner asserts that claims 1–9 would have been obvious over
`Thomson, Ellsworth, and Halliburton, citing record evidence. Pet. 40–67.
`Petitioner asserts that Thomson teaches an apparatus generally like that
`employed in the method of claim 1. Id. at 2–3, 40. Petitioner asserts that
`Thomson teaches stringing multiple MSAF tools and packers together. Id. at
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`18–20. Petitioner shows this in a modified, annotated version of Thomson’s
`Figure 3, which is reproduced below. Id. at 20.
`
`
`
`Petitioner’s modified, annotated version of Thomson’s Figure 3 shows three
`MSAF tools, three packers, and a plug connected in series. Id. Petitioner
`contends that Thomson’s MSAF tools constitute “an example of ball-
`actuated sliding sleeves.” Id. at 18. Petitioner also asserts that Thomson’s
`packers are solid body packers. Id. at 31.
`Petitioner asserts that Thomson discloses using pressure to set the
`packers. Id. at 20–21. Petitioner explains that Thomson discloses
`subsequently expelling the plug and stimulating the zone below the third
`packer. Id. at 20–21. Petitioner further explains that Thomson discloses that
`subsequently “the smallest ball was pumped onto its mating seat in the
`lowest MSAF to seal-off the lower zone and to allow stimulating fluid to be
`pumped into the next higher zone.” Id. at 21.
`Noting that Thomson teaches using its tubing sting in a cased hole
`completion, as opposed to the open hole completion of the ’501 patent,
`Petitioner asserts that it would have been obvious to use Thomson’s tubing
`string in an uncased wellbore. Id. at 40–43. In support of this contention,
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`Petitioner cites testimony that “[t]he open hole application of tools that were
`originally designed for cased hole has been common place in the industry
`since . . . 1992. There is nothing novel or nonobvious about such an
`application.” Id. at 40 (citing Ex. 1012 ¶¶ 10-11). Petitioner asserts that a
`person of ordinary skill in the art would have been motivated to use
`Thomson’s tubing string in an open hole for various reasons, including “to
`minimize the time and expense of completing a well.” Id. at 41–42.
`Petitioner asserts that it was known that open hole equipment like solid body
`packers worked in open holes for well stimulation. Id. Consequently,
`Petitioner argues, using Thomson’s tubing string in an open hole wellbore
`would have been straightforward, and would have produced only predictable
`results. Id. at 42.
`Petitioner also argues that a person of ordinary skill in the art would
`have been motivated to substitute “Halliburton’s pump open plug” for
`“Thomson’s cycle plug.” Id. at 40. Petitioner asserts that a person of
`ordinary skill in the art would have been motivated to do so to overcome
`plug failure problems noted by Thomson, as well as to avert difficulties
`associated with discharging a plug into the wellbore. Id. Petitioner cites
`evidence that allegedly shows a person of ordinary skill in the art seeking to
`optimize Thomson’s system “would readily modify it to use a hydraulically
`actuated sliding sleeve (“bull plug” port collar) at the toe of the well.” Id. at
`40–41.
`Patent Owner argues that claims 1–9 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, 148 (1966). Those factors include (1) the scope and
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`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.
`For the reasons discussed below, Petitioner’s evidence and arguments
`demonstrate unpatentability of claims 1–9 as obvious over Thomson,
`Ellsworth, and Halliburton. Pet. 40–67; Pet. Reply 6–20. We turn now to a
`discussion of the parties’ dispute over the prior art status of Halliburton,
`followed by a detailed discussions of the Graham factors and our
`conclusions regarding whether claims 1–9 would have been obvious.
`1. Whether Halliburton Is Prior Art
`The parties dispute whether Halliburton was sufficiently publicly
`accessible to qualify as a printed publication. Petitioner’s evidence of public
`accessibility includes a declaration of Aileen Barr, who testifies that “I have
`been employed at Halliburton” (the company) “since 1980.” Ex. 1029 ¶ 2.
`Ms. Barr testifies that Halliburton (the reference) “is marketing material
`describing, among other things, completion products offered for sale by
`Halliburton” (the company). Id. at ¶ 4. Ms. Barr further testifies about the
`printing and distribution of Halliburton to customers. Id.
`Patent Owner argues that Petitioner has not shown indexing or
`distribution of Halliburton sufficiently to establish public accessibility. PO
`Resp. 60–61. Patent Owner argues that the Barr Declaration does not
`indicate how Halliburton is stored or cataloged. Id. at 61. Patent Owner
`also asserts that the Barr Declaration does not provide sufficient evidence
`that Halliburton, as it appears in Petitioner’s exhibits, was “actually
`distributed and received by persons of ordinary skill in the art during the
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`relevant time frame.” Id. Rather, Patent Owner argues, the Barr Declaration
`is “filled with vague statements.” Id. Petitioner responds that Patent Owner
`provides no evidence to counter the Barr Declaration, which Petitioner
`argues demonstrates public accessibility. Pet. Reply 6–7.
`We find a preponderance of the evidence demonstrates public
`accessibility of Halliburton. Patent Owner’s arguments fail to acknowledge
`important aspects of the evidence, while attacking others individually, rather
`than as a whole. For example, Patent Owner does not acknowledge the
`fundamental nature of the document: a catalog of oilfield completion
`products offered for sale, the catalog bearing a copyright date of 1997, with
`no indication of confidentiality or other restraints on its dissemination.
`Ex. 1029 ¶ 4; Ex. 1028, 1, 6 (“Halliburton Energy Services has excelled in
`oilfield services for over 75 years.”), 152 (“© 1997 Halliburton Energy
`Services, Inc.”). In fact, Halliburton states that “[t]hese catalogs are
`available from your local Halliburton representative or on our Internet
`Website at the Web address www.halliburton.com.” Ex. 1028, 7. By its
`very nature, such a document is highly likely to have been distributed to
`persons interested and ordinarily skilled in the art. See, e.g., Nobel Biocare
`Servs. AG vs. Instradent USA, Inc., 2018 WL 4354227, *7 (Fed. Cir. 2018)
`(Affirming public accessibility finding for type of document intended for
`public dissemination with no indication otherwise). Consistent with this,
`Ms. Barr testifies that Halliburton “was available to any customer or
`potential customer, as well as others, seeking a copy in 1997.” Ex. 1029 ¶ 4.
`Indeed, Ms. Barr’s Declaration includes the unrebutted testimony that
`“Halliburton, as a regular practice and in the normal course of its business,
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`prints these types of product catalogs every few years, including the 1997
`Catalog, and disseminates them to customers and/or potential customers
`from the year they are printed until the next edition is printed.” Id. Ms. Barr
`further testifies regarding the details of the regular business practices that
`were used to disseminate Halliburton. Id. We find the evidence
`demonstrates that Halliburton was publicly accessible and disseminated to
`persons interested and ordinarily skilled in the art as part of the regular
`business practices of Halliburton (the company).
`2. 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. 1003, 1. “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 motivated 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. Pet. 9.
`
`
`
`Petitioner’s modified, annotated version of Figure 3 shows three MSAF
`tools and three packers mounted in alternating positions along a tubing
`string. Id. Based on 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. at 9, n.2. This also 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.”
`Id. at 1. Thomson discloses that:
`is
`With
`this system, stimulation of 10 separate zones
`accomplished in 12–18 hours by a unique procedure that
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`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 the
`open sleeve.
`Id. Based on the foregoing disclosures, we find that Thomson teaches
`multistage fracturing of a wellbore.
`b. Ellsworth
`Ellsworth discloses that “[m]ore recently, solid body packers (SBP’s)
`(see Figure 4) have been used to establish open hole isolation.” Ex. 1004, 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. at 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.
`c. Halliburton
`Halliburton discloses a pump open plug that “is a positive plug that
`holds pressure from either direction but can be pumped open by applying
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`excess surface pressure.” Ex. 1028, 93. Halliburton shows this in a drawing
`labeled “Halliburton Pump Open Plug,” reproduced below. Id.
`
`
`Halliburton’s “Pump Open Plug” drawing shows various features of
`the pump open plug, including a plug body, a plug cap, a pump open valve,
`flow ports, a pump open valve, release pins, and an o-ring seal. Id.
`
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`3. Differences Between the Prior Art and the Claimed Invention
`Petitioner contends that Thomson teaches every limitation of the
`challenged claims, except for two aspects. Pet. 40, 43–67. First, Petitioner
`concedes that Thomson teaches fracturing performed in a cased hole, rather
`than an open hole. Pet. 40. Consequently, Petitioner does not assert that
`Thomson teaches the claims’ limitations regarding performing the method in
`an open hole wellbore, such as claim 1’s limitation of “running a tubing
`string into an open hole and uncased, non-vertical section of the wellbore.”
`See, e.g., id. at 44–46. Second, Petitioner indicates that Thomson does not
`teach the claims’ limitations regarding the “third port” (Ex. 1001, 14:8–10)
`and the associated “hydraulically actuated sliding sleeve” (id. at 14:55–67,
`15:29–33). See, e.g., Pet. 40, 48–49, 57–58, 61. In this regard, Petitioner
`suggests that the plug at the end of Thomson’s tubing string would meet
`these limitations, except that it “is not expressly disclosed as having ports.”
`See id. at 40. Patent Owner does not dispute Petitioner’s characterization of
`the differences between Thomson and the challenged claims. See PO Resp.,
`generally. In view of Petitioner’s evidence and explanation, we are
`persuaded that the differences between Thomson and the challenged claims
`are limited to (1) Thomson does not teach performing the fracturing in an
`open hole section of a wellbore, and (2) the plug at the end of Thomson’s
`tubing string differs from the claimed “third port” and associated
`“hydraulically actuated sliding sleeve.” See, e.g., Pet. 40–67.
`With respect to difference (1), Petitioner asserts that open hole use of
`tools like Thomson’s was known, relying on Ellsworth and various other
`evidence of the knowledge of those of ordinary skill in the art. Pet. 14–17,
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`28–33, 40–43. For example, Petitioner cites Yost5 and certain other
`documents as demonstrating that open hole multi-stage fracturing was
`known. Id. at 14–17. Additionally, Petitioner cites alleged admissions of
`Patent Owner as demonstrating that it was known to use tools originally
`intended for cased hole use (such as solid body packers) in open hole
`wellbores. Id. at 28–33. Consistent with this, Petitioner argues, Ellsworth
`discloses successful use of equipment like Thomson’s in an open hole
`wellbore. Id. at 41–42, 44–46.
`Patent Owner indicates that Ellsworth differs from the claimed
`invention in that Ellsworth teaches water shutoff, rather than fracturing. PO
`Resp. 53–55. Without disputing this assertion, Petitioner asserts “it is
`irrelevant as . . . Ellsworth has not been relied upon for fracturing.” Pet.
`Reply 10–11. We agree with Petitioner that the distinction Patent Owner
`draws between Ellsworth and the claimed invention does not address the
`challenge to the claims, which relies on Thomson as disclosing fracturing.6
`Regarding difference (2), Petitioner relies on Halliburton’s pump-
`open plug as teaching a “third port” and associated “hydraulically actuated
`sleeve,” as required by the claims. Pet. 48–49, 56–57. Patent Owner argues
`that “Halliburton and Thomson” do not teach the hydraulically actuated
`
`5 A.B. Yost et al., Production and Stimulation Analysis of Multiple
`Hydraulic Fracturing of a 2,000-ft Horizontal Well, SPE 19090, Society of
`Petroleum Engineers, Gas and Technology Symposium, Dallas TX, (June 7–
`9, 1989) (Ex. 1002).
`6 To the extent Patent Owner suggests that Ellsworth teaches away from the
`claimed invention, we disagree. Patent Owner’s assertion that Ellsworth
`teaches an approach that differs from the claimed invention does not provide
`a basis for determining that Ellsworth would in any way discourage a person
`of ordinary skill in the art from practicing the claimed invention.
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`sleeve of the claims. PO Resp. 57–59. In support of this assertion, Patent
`Owner suggests that it would not have been obvious to combine the
`teachings of the references because there is no express disclosure in the
`references to use Halliburton’s pump-open plug for open hole multi-stage
`fracturing. See id. Contrary to Patent Owner’s indication, this argument
`does not go to the differences between the claims and the prior art, but to
`whether it would have been obvious to combine the teachings of the
`references.7
`Having reviewed each of the references and the associated evidence
`provided by the parties pertaining to the respective disclosure of each
`reference, we find that although Thomson, Ellsworth, and Halliburton do not
`individually disclose all the limitations of claims 1–9, each of the limitations
`of claims 1–9 is taught by at least one of Thomson, Ellsworth, and
`Halliburton. Additionally, we find that the claimed invention would have
`resulted from combining the teachings of the references in the manner that
`Petitioner asserts would have been obvious. See, e.g., Pet 40–67. Indeed,
`Patent Owner does not dispute Petitioner’s contention that the proffered
`combination of the teachings of the references would have produced the
`claimed invention. See PO Resp., generally. Because we find it persuasive,
`we adopt as our own Petitioner’s explanation of the differences between the
`
`
`7 Moreover, we find Patent Owner’s particular arguments as to why it
`allegedly would have been unobvious to combine the teachings of the
`references unpersuasive because the arguments conflict with the Supreme
`Court’s instruction that an obviousness analysis “need not seek out precise
`teachings directed to the specific subject matter of the challenged claim.”
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
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`references and the claims, as well as its explanation of how the combination
`of the references’ teachings would have produced the claimed invention.
`4. 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, 550 U.S. at 405.
`Petitioner asserts that a person of ordinary skill in the art as of
`November 19, 2001
`would have had at least a Bachelor of Science degree in
`mechanical or petroleum engineering or a similar technical
`discipline, such as metallurgy or material science and
`engineering and at least 3 years of experience with oil or gas
`well drilling and completion operations or in technical support
`of such operations.
`Pet. 27 (citing Ex. 1007 ¶ 38). In addition, Petitioner relies upon its
`Declarant, Dr. Rao, to establish also that a person of ordinary skill in the art
`was aware that fra