Trials@uspto.gov
`571-272-7822
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` Paper 16
` Entered: January 12, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HALLIBURTON ENERGY SERVICES, INC.,
`Petitioner,
`
`v.
`
`SCHLUMBERGER TECHNOLOGY CORP.,
`Patent Owner.
`____________
`
`Case IPR2017-01567
`Patent 7,934,556 B2
`____________
`
`
`Before HYUN J. JUNG, JEREMY M. PLENZLER, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
` Paper 16
` Entered: January 12, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HALLIBURTON ENERGY SERVICES, INC.,
`Petitioner,
`
`v.
`
`SCHLUMBERGER TECHNOLOGY CORP.,
`Patent Owner.
`____________
`
`Case IPR2017-01567
`Patent 7,934,556 B2
`____________
`
`
`Before HYUN J. JUNG, JEREMY M. PLENZLER, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2017-01567
`Patent 7,934,556 B2
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`I.
`
`INTRODUCTION
`Halliburton Energy Services, Inc. (“Petitioner”) filed a Petition (Paper
`2, “Pet.”), requesting institution of an inter partes review of claims 1–3, 5, 7,
`12, and 13 of U.S. Patent No. 7,934,556 B2 (Ex. 1001, “the ’556 patent”).
`Schlumberger Technology Corp. (“Patent Owner”) filed a Preliminary
`Response (Paper 131, “Prelim. Resp.”). Under 35 U.S.C. § 314, an inter
`partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.”
`Upon consideration of the Petition and Preliminary Response and for
`the reasons explained below, we determine that Petitioner has shown that
`there is a reasonable likelihood that it would prevail with respect to at least
`one of the challenged claims. As such, we exercise our discretion to extend
`review to all claims challenged and on all presented challenges, and thus,
`institute an inter partes review of claims 1–3, 5, 7, 12, and 13 of the ’556
`patent.
`A. Related Proceedings
`The parties indicate that there are no related judicial proceedings.
`Pet. 2; Paper 3, 1. The ’556 patent is also the subject of Case IPR2017-
`01774 and related to patents at issue in Cases IPR2017-01569, IPR2017-
`01570, IPR2017-01571, IPR2017-01572, IPR2017-01773, IPR2017-01778,
`and IPR2017-01779.
`
`
`1 A confidential Preliminary Response was filed within three months from
`the mailing date of the Notice of Filing Date Accorded to Petition (Paper 6).
`The publicly available version of the Preliminary Response (Paper 13) was
`filed ten days later. Citations to the Preliminary Response are to the publicly
`available version.
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`B. The ’556 Patent (Ex. 1001)
`The ’556 patent relates to a “method . . . for treating a subterranean
`formation using diversion.” Ex. 1001, 1:14–15. Figure 1 of the ’556 patent
`is reproduced below.
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`Figure 1 is a schematic diagram of a well according to an
`embodiment. Id. at 3:20–21. Well 10 includes wellbore 12 that intersects
`one or more subterranean formations and targets zones of interest, such as
`exemplary zone 40. Id. at 3:44–47. Coiled tubing string 20 extends into
`wellbore 12, and includes bottom hole assembly (“BHA”) 30 at the lower
`end of coiled tubing string 20. Id. at 3:53–56. Figure 1 also shows well 10
`when fluid connectivity between wellbore 12 and zones 40 has been
`established by perforations 42. Id. at 3:63–65. “[P]erforation of the zones
`40 may be performed by, for example, jetting subs, as well as other
`conventional perforation devices, such as tubing or wireline-conveyed
`shaped charge-based perforating guns, sliding sleeves, or TAP valves, for
`example.” Id. at 4:1–5.
`Well 10 can include treatment fluid source 60 for introducing
`treatment fluid into well 10 and diversion fluid source 62 for delivering
`diversion fluid to the central passageway of coiled tubing string 20. Id. at
`4:15–16, 4:22, 4:28–31. Well 10 can also include surface treatment
`monitoring system 64 to monitor one or more parameters of the well so that
`delivery of treatment fluid or diversion agent can be regulated based on the
`monitored parameter. Id. at 4:34–41.
`Target intervals 40 are treated by establishing fluid connectivity
`between wellbore 12 and target zones 40. Id. at 4:57–60. Coiled tubing
`string 20 is deployed into wellbore 12. Id. at 5:47–49. An apparatus or
`system for measuring or monitoring at least one parameter that is indicative
`of treatment may then be deployed into wellbore 12. Id. at 5:60–63, 6:36–
`38, 7:6–7. For example, a “hydraulic fracturing monitoring system, which is
`capable of detecting and monitoring microseisms in the subterranean
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`formation that results from the hydraulic fracturing may be deployed.” Id. at
`6:1–4. Afterwards, treatment of target zone 40 begins, such as by pumping
`treatment fluid. Id. at 6:38–41. According to the ’556 patent, “treatment
`fluid may be any suitable treatment fluid known in the art.” Id. at 6:49–50.
`When treatment is concluded, coiled tubing string 20 is positioned so that
`BHA 30 is at a location for pumping of a diversion agent into an interval of
`wellbore 12 for diversion. Id. at 7:50–54. One or more parameters can be
`monitored in well 10 to determine or confirm placement of the diversion
`agent. Id. at 8:16–20. The ’556 patent states that “diversion agent” is used
`to refer to “mechanical devices, chemical fluid systems, combinations
`thereof, and methods of use for blocking flow into or out of a particular zone
`or a given set of perforations.” Id. at 2:30–34.
`C. Illustrative Claim
`The ’556 patent has 13 claims, of which Petitioner challenges claims
`1–3, 5, 7, 12, and 13. Of the challenged claims, claims 1, 12, and 13 are
`independent, and claim 1 is reproduced below:
`1. A method, comprising:
`establishing fluid connectivity between a wellbore and a
`first target zone, and between the wellbore and a second target
`zone, wherein the first target zone and second target zone
`comprise zones for treatment within a subterranean formation
`intersected by a wellbore, wherein the second target zone is
`above the first target zone;
`positioning a coiled tubing into the wellbore;
`performing a first treatment step on the first target zone,
`wherein the first treatment step comprises contacting a treated
`zone with a treatment fluid;
`performing a second treatment step on the first target zone,
`wherein the second treatment step comprises introducing a
`diversion agent comprising a degradable material to the treated
`zone;
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`performing the first treatment step on the second target
`zone;
`degrading the diversion agent after the performing the first
`treatment step on the second target zone; and
`measuring a wellbore parameter wherein measuring
`comprises measuring microseismic activity.
`Id. at 13:27–47. Claims 2, 3, 5, and 7 depend directly from claim 1. Id. at
`13:48–51, 13:55–56, 13:59–60.
`Independent claims 12 and 13 also recite methods with similar steps.
`Id. at 14:18–62. In particular, both claims 12 and 13 recite “establishing
`fluid connectivity between a wellbore and a first target zone, and between
`the wellbore and a second target zone.” Id. at 14:19–21, 14:42–44; see also
`Prelim. Resp. 28 (stating “[c]laims 12 and 13 recite the exact same step of
`establishing fluid connectivity”).
`Unlike claim 1, claim 12 further recites “wherein the diversion agent
`is stored in the coiled tubing between acts of introducing the diversion agent
`to an interval,” and claim 13 further recites “measuring a parameter
`indicative of diversion.” Id. at 14:32–34, 14:61–62.
`D. Asserted Grounds
`Petitioner challenges, under 35 U.S.C. § 103, claims 1–3, 5, 7, 12, and
`13 as unpatentable (1) over Willett2 and Wilkinson3 or (2) over Tolman4 and
`Wilkinson. Pet. 4.
`In support of its proposed grounds, Petitioner relies on a Declaration
`of Paul Branagan (Ex. 1002) and provides a level of skill in the art (Pet. 31–
`32 (citing Ex. 1002 ¶ 28)), which we preliminarily adopt to determine
`
`
`2 US 2005/0211439 A1, published Sept. 29, 2005 (Ex. 1004).
`3 US 7,273,104 B2, iss. Sept. 25, 2007 (Ex. 1007).
`4 US 6,543,538 B2, iss. Apr. 8, 2003 (Ex. 1006).
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`whether there is a reasonable likelihood that Petitioner would prevail with
`respect to at least 1 of the claims challenged in the Petition.
`II. ANALYSIS
`A. Real Parties in Interest
`Patent Owner argues that Petitioner failed to name all real parties in
`interest in the Petition. Prelim. Resp. 1, 3–18. Specifically, Patent Owner
`argues that Halliburton Co., a parent company, should have been named a
`real party in interest to the Petition. Id. at 3.5 We allowed Petitioner to
`update its mandatory notices to add Halliburton Co. as a real party in interest
`without a change to the filing date accorded the Petition, which Petitioner
`did. See Paper 15, 2. Accordingly, Patent Owner’s arguments with respect
`to Halliburton Co. as a real party in interest to this proceeding are moot.
`B. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard).
`Petitioner proposes interpretations for “degrading the diversion agent”
`and “the second target zone is above the first target zone.” Pet. 6–8. Patent
`Owner provides arguments regarding “establishing fluid connectivity
`between a wellbore and a first target zone, and between the wellbore and a
`
`
`5 Patent Owner states that Petitioner also failed to name other potential real
`parties in interest—“other related companies.” Prelim. Resp. 3. Patent
`Owner does not identify any of these potential other related companies, and
`we do not consider them further here. See id. at 3–18.
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`second target zone,” recited by independent claims 1, 12, and 13. Prelim.
`Resp. 27–35. Patent Owner contends that the “plain language of the
`establishing step in claims 1, 12, and 13 requires that the wellbore have fluid
`connectivity with two target zones at the same time.” Id. at 29; see also id.
`at 30–35 (citing Ex. 1001, 3:63–4:5, 5:24–32, 5:36–41, 5:47–63, 6:36–48,
`7:49–57, 8:52–55, Figs. 1, 3).
`For purposes of determining whether Petitioner demonstrates a
`reasonable likelihood of prevailing in its challenges, we determine that no
`express interpretation is required for any claim term. Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (construing only
`those claim terms in controversy and only to the extent necessary to resolve
`the controversy).
`C. Challenge Based on Willett and Wilkinson
`Petitioner contends that claims 1–3, 5, 7, 12, and 13 are rendered
`obvious by Willett and Wilkinson. Pet. 4, 32–53.
`1. Willett (Ex. 1004)
`Willett is directed to a “method of completing a well using a
`hydrajetting tool and subsequently plugging or partially sealing the fractures
`in each zone with an isolation fluid.” Ex. 1004 ¶ 7. Figure 1A of Willett is
`reproduced below.
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`Figure 1A is a schematic diagram showing a hydrajetting tool creating
`perforation tunnels. Id. ¶ 11. After wellbore 10 is drilled, first zone 16 is
`perforated by injecting a pressurized fluid through hydrajetting tool 14. Id.
`¶¶ 8, 26, 27, 38. Tubing string 18 can be inside wellbore 10, and tubing
`string 18 can have hydrajetting tool 14, which can also be used as a bottom
`hole pressure acquisition tool. Id. ¶ 9.
`The formation is fractured by injecting a fracturing fluid into one or
`more perforation tunnels 20 to create fractures. Id. ¶¶ 8, 27, 28, 38. One or
`more fractures are plugged or partially sealed by injecting isolation fluid 28.
`Id. ¶¶ 8, 30, 33, 40. Second zone 30 can then be perforated and fractured.
`Id. ¶¶ 8, 30, 36, 40.
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`2. Wilkinson (Ex. 1007)
`Wilkinson “particularly relates to a method of pumping ‘in-the-
`formation’ diverting agent in oil or gas wells.” Ex. 1007, 1:17–18. Figure 2
`of Wilkinson is reproduced below.
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`Figure 2 shows a well. Id. at 4:50–51. The well includes casing 100
`with lateral section 102. Id. at 5:16–21. Wilkinson states that “[i]t is known
`in the art to pump a diverting agent . . . into wells” and that “diverting agent
`diverts the treatment fluid behind the casing in the formation.” Id. at 3:24–
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`26. Wilkinson’s method of treating a formation includes pumping treatment
`fluids to induce fractures in the formation near the lateral section. Id. at
`4:16–18, 6:54–65. Wilkinson’s method also “includes pumping a
`degradable diverting agent.” Id. at 7:5–6. According to Wilkinson, “a
`horizontal fracture job monitored micro-seismically from an offset well has
`revealed that ‘in-the-formation’ diversion occurs in the lateral section.” Id.
`at 6:18–21. Also, “[w]hile pumping the diverting agent, the operator
`monitors the surface treating pressure for any pressure changes” and a
`“pressure change is indicative of diversion of the pumped fluid.” Id. at 8:1–
`4.
`
`3. Claims 1–3, 5, 7, 12, and 13
`Petitioner contends that Willett teaches or suggests the limitations of
`claim 1. Pet. 35–40 (citing Ex. 1004 ¶¶ 9, 27, 29, 34–36, 38–43, 46, 49); see
`also id. at 9–13 (asserting what was known in the art), 21–24 (asserting what
`Willett teaches). Petitioner also argues that one of ordinary skill in the art
`would have understood that Willett teaches a second target zone above a
`first target zone (id. at 36 (citing Ex. 1002 ¶ 87)), that the fracturing fluid of
`Willett encompasses the recited treatment fluid (id. at 37 (citing Ex. 1002
`¶ 92)), that the isolation fluid of Willett encompasses the recited diversion
`agent (id. at 38 (citing Ex. 1002 ¶ 97)), that Xanthan and PLA are
`degradable materials (id. at 39 (citing Ex. 1002 ¶ 96)), and that bottom hole
`pressure measurements could be used to indicate diversion (id. at 40 (citing
`Ex. 1002 ¶¶ 105–110)).
`Petitioner cites Wilkinson for its express disclosure of measuring a
`wellbore parameter using microseismic activity during a fracture operation.
`Pet. 41 (citing Ex. 1007, 6:18–21); see also id. at 24–29 (asserting what
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`Wilkinson teaches). Petitioner contends that one of ordinary skill in the art
`would have been motivated to use Wilkinson’s microseismic measurements
`in the well treatment process of Willett. Id. at 32–35 (citing Ex. 1002 ¶¶
`105–109; Ex. 1004 ¶¶ 9, 40, 49; Ex. 1007, 2:14–18, 3:24–26, 3:33–35, 6:16–
`27, 7:10–12, 8:1–18).
`At this stage, Petitioner sufficiently shows that Willett and Wilkinson
`would have rendered obvious claim 1, and thus, demonstrates a reasonable
`likelihood that it would prevail with respect to at least 1 of the claims
`challenged.
`Patent Owner responds that Willett and Wilkinson fail to teach or
`suggest “establishing fluid connectivity between a wellbore and a first target
`zone, and between the wellbore and a second target zone” (“the establishing
`step”), as required by independent claims 1, 12, and 13. Prelim. Resp. 1–3,
`35–38. In particular, Patent Owner understands Petitioner as citing only to
`Willett for the establishing step of the independent claims. Id. at 35 (citing
`Pet. 35–36, 45, 48). Patent Owner contends that Willett perforates,
`fractures, and then seals a formation before repeating the process for another
`desired zone. Id. at 35–38(citing Pet. 29–30; Ex. 1004 ¶¶ 27, 28, 30, 36, 38–
`40, Figs. 1A, 4A, 6). Patent Owner, thus, argues that the proposed
`combination fails to teach the establishing step recited by all the independent
`claims.
`For that limitation, Petitioner, however, cites to paragraph 40 of
`Willett. Pet. 35. In the final sentence of that paragraph, Willett states that
`the “steps of perforating the formation, initiating fractures, propagating the
`fractures and plugging or partially sealing the fractures are repeated for as
`many additional zones as desired.” Ex. 1004 ¶ 40 (emphasis added); see
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`also Ex. 1002 ¶ 83 (Petitioner’s declarant describing the same sentence).
`Even if we were to accept Patent Owner’s interpretation of the establishing
`step as requiring “establishing fluid connectivity between a wellbore and
`first and second target zones at the same time” (PO Resp. 27), we would be
`satisfied at this stage of the proceeding that Willett’s teaching of partially
`sealing the fractures would result in establishing fluid connectivity between
`the wellbore and two target zones at the same time, thereby meeting Patent
`Owner’s asserted interpretation of the establishing step.
`Further, Patent Owner’s argument quotes the same sentence from
`paragraph 40 of Willett (PO Resp. 36) but only addresses the phrase
`“plugging . . . the fractures.” Patent Owner does not explain why partially
`sealing the fractures would not lead to establishing fluid connectivity
`between a wellbore and two target zones at the same time. Moreover, the
`present record indicates that establishing fluid connectivity between a
`wellbore and two target zones at the same time was known in the art, as
`evidenced by Wilkinson. Figure 1 of Wilkinson is labeled “Prior Art” (Ex.
`1007, Fig. 1) and the associated description states that “perforations 108 are
`formed near targeted production zones of the formation” (id. at 2:10–11)
`(emphasis added).
`Accordingly, for the reasons above, on the present record, Petitioner
`demonstrates a reasonable likelihood that it would prevail with respect to at
`least 1 of the claims challenged. We are also persuaded to exercise our
`discretion under 37 C.F.R. § 42.108 to extend review to claims 2, 3, 5, 7, 12,
`and 13. By exercising our discretion in this regard, we seek to achieve
`finality of review at the Board and avoid any subsequent review at least with
`respect to attacks on the ’556 patent that rely on Willett as the primary basis
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`of invalidity. See Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309,
`1316 (Fed. Cir. 2016) (stating that “[t]he validity of claims for which the
`Board did not institute inter partes review can still be litigated in district
`court”); see also Intex Recreation Corp. v. Bestway Inflatables & Material
`Corp., Case No. IPR2016-00180, 2016 WL 8377184, at *3–5 (PTAB Jun. 6,
`2016) (exercising discretion to institute on all challenged claims after
`determining reasonable likelihood of unpatentability as to at least one
`claim). We also hope to avoid any “follow-on” petitions that might result
`from partial institution.
`D. Challenge Based on Tolman and Wilkinson
` Petitioner contends that claims 1–3, 5, 7, 12, and 13 are rendered
`obvious by Tolman and Wilkinson. Pet. 4, 53–73.
`1. Tolman (Ex. 1006)
`Tolman provides a “method for perforating and treating multiple
`intervals without the necessity of discontinuing treatment between steps or
`stages.” Ex. 1006, 1:11–13. Tolman states that, when multiple zones are
`stimulated by hydraulic fracturing, “gains are realized by injecting multiple
`treatment stages that can be diverted (or separated).” Id. at 1:54–57.
`Tolman refers to the means “for temporarily blocking the flow of fluids into
`or out of a given set of perforations . . . as ‘diversion agents.’” Id. at 1:65–
`67.
`
`Tolman involves individually and sequentially perforating multiple
`zones with a perforating device in the wellbore. Id. at 7:3–6. In one
`embodiment, select-fire perforating device 101 includes perforation charges
`154 and is positioned at the first zone to be perforated. Id. at 8:16–22, 8:42–
`44, Fig. 3. Perforation charges 154 are fired to create perforation holes 210
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`to establish a flow path with the first zone to be treated. Id. at 8:46–50, Fig.
`4. After perforating a first zone, a first stage of treatment is pumped. Id. at
`8:56–57. Diversion materials are deployed to provide precisely controlled
`diversion of treatment stages. Id. at 7:9–10, 8:60–62. Tolman states that “it
`is preferable to delay the firing of each set of perforation charges until some
`or all of the diversion agent(s) have passed by and are downstream of the
`perforating device.” Id. at 9:31–34. Second and third zones can then be
`treated. Id. at 9:7–15, 9:51–10:14, Figs. 7, 8.
`Downhole fluid temperature and pressure conditions can be measured
`during the course of treatment. Id. at 12:14–16. Once a pressure rise
`associated with sealing of a first set of perforations is achieved, a second
`select fire gun is shot and moved to the next zone. Id. at 13:35–38. In
`another embodiment of Tolman, coiled tubing and jetting tool are used for
`perforating the wellbore. Id. at 16:42–44, 16:47–52, 17:7–24, Fig. 17.
`2. Claims 1–3, 5, 7, 12, and 13
`Petitioner contends that Tolman teaches or suggests the limitations of
`claim 1. Pet. 55–61 (citing Ex. 1002 ¶¶ 71, 95–96, 135–139; Ex. 1006,
`1:54–67, 2:37–67, 6:58–63, 7:1–10, 8:56–63, 9:51–65, 11:16–19, 16:42–
`17:38, 18:27–33, 24:1–38, Figs. 8, 17); see also id. at 9–13 (asserting what
`was known in the art), 29–31 (asserting what Tolman teaches). Petitioner
`also contends that one of ordinary skill in the art would have understood that
`pressure measurements are wellbore parameters that indicate diversion and
`that microseismic measurements are wellbore parameters. Id. at 61 (citing
`Ex. 1002 ¶¶ 150–158).
`Petitioner cites Wilkinson for its express disclosure of microseismic
`measurements during a fracture operation. Id. at 61–62 (citing Ex. 1007,
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`6:18–21); see also id. at 24–29 (asserting what Wilkinson teaches).
`Petitioner argues that one of ordinary skill would have been motivated to use
`the microseismic measurements of Wilkinson in Tolman. Id. at 53–54
`(citing Ex. 1002 ¶¶ 151; Ex. 1006, 6:23–35, 7:1–10, 24:1–38; Ex. 1007,
`3:24–26, 3:33–35, 6:18–22, 7:10–12, 8:1–18), 62–63 (citing Ex. 1002 ¶¶
`151–157).
`At this stage, Petitioner sufficiently shows that Tolman and Wilkinson
`would have rendered obvious claim 1, and thus, demonstrates a reasonable
`likelihood that it would prevail with respect to at least 1 of the claims
`challenged.
`Patent Owner responds that Tolman and Wilkinson fail to teach or
`suggest the establishing step, as required by independent claims 1, 12, and
`13. Prelim. Resp. 1–3, 38–43. In particular, Patent Owner understands
`Petitioner as citing exclusively to Tolman for the establishing step. Id. at 39
`(citing Pet. 55–58, 65, 68). Patent Owner contends that Tolman individually
`and sequentially perforates target zones so that fluid connectivity is not
`established with two zones at one time. Id. at 39–43 (citing Pet. 50; Ex.
`1006, 7:1–10, 8:41–50, 8:55–63, 9:7–15, 9:59–62, 17:19–29, 17:40–43,
`Figs. 5, 8, 17). Patent Owner, thus, argues that the proposed combination
`fails to teach all limitations of the independent claims.
`The evidence submitted thus far indicates Tolman is not limited in the
`manner argued by Patent Owner. Petitioner quotes a portion of Tolman that
`states it “involves individually and sequentially perforating the desired
`multiple zones with a perforating device in the wellbore while pumping the
`multiple stages of the stimulation treatment and . . . diversion materials . . .
`to provide precisely controlled diversion of the treatment stages.” Pet. 56
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`(quoting Ex. 1006, 7:3–10). The present record does not indicate that the
`phrase “individually and sequentially perforating” would exclude
`establishing fluid connectivity between the wellbore and two zones at the
`same time during Tolman’s method. Tolman states that “it is preferable to
`delay the firing of each set of perforation charges until some or all of the
`diversion agent(s) have passed by and are downstream of the perforating
`device.” Ex. 1006, 9:31–34 (emphasis added). Tolman, thus, on the present
`record indicates establishing fluid connectivity between a wellbore and two
`target zones at the same time, such as when perforation charges are fired to
`create new perforations while some diversion agents are in the process of
`sealing previous perforations.
`Tolman also states that “intervals may be grouped for treatment based
`on reservoir properties, treatment design considerations, or equipment
`limitations” and “[a]fter each group of intervals (preferably two or more) . . .
`, a bridge plug or other mechanical device would preferably be used to
`isolate the group of intervals already treated from the next group to be
`treated.” Id. at 10:15–23. Petitioner’s declarant also states that “Tolman
`also describes several embodiments throughout its disclosure” and that a
`person of ordinary skill in the art “would understand that a feature described
`in one embodiment may be applied to another embodiment.” Ex. 1002 ¶ 74
`(citing Ex. 1006, 6:50–54).
`Moreover, as discussed above, Wilkinson evidences that establishing
`fluid connectivity between a wellbore and two target zones at the same time
`was known in the art. See Ex. 1007, 2:10–11, Fig. 1. Tolman also provides
`similar evidence. See Ex. 1006, 3:45–46 (“Historically, all zones to be
`treated in a particular job have been perforated prior to pumping treatment
`
`
`
`17
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`IPR2017-01567
`Patent 7,934,556 B2
`
`fluids.”), Fig. 1 (reference numbers 32, 34). At this stage of the proceeding,
`the evidence presented thus far satisfies us that Tolman does not exclude
`establishing fluid connectivity with multiple target zones at the same time so
`as to meet Patent Owner’s proposed interpretation of the establishing step.
`Accordingly, for the reasons above, on the present record, Petitioner
`demonstrates a reasonable likelihood that it would prevail with respect to at
`least 1 of the claims challenged. We are also persuaded to exercise our
`discretion under 37 C.F.R. § 42.108 to extend review to claims 2, 3, 5, 7, 12,
`and 13 for the same reasons stated above.
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that the information
`presented in the Petition in view of the Preliminary Response shows a
`reasonable likelihood that Petitioner would prevail in proving that claim 1 of
`the ’556 patent is unpatentable over Willett and Wilkinson or over Tolman
`and Wilkinson. To resolve patent validity disputes in a just, speedy, and
`inexpensive manner, we exercise our discretion to institute inter partes
`review on all claims challenged and on all challenges presented in the
`Petition.
`
`At this stage of the proceeding, the Board has not made a final
`determination as to the patentability of any challenged claim or any
`underlying factual and legal issues.
`
`
`
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`IPR2017-01567
`Patent 7,934,556 B2
`
`IV. ORDER
`Accordingly, it is:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review is hereby instituted as to claims 1–3, 5, 7, 12, and 13 of U.S. Patent
`No. 7,934,556 B2 on the grounds that, under 35 U.S.C. § 103,
`claims 1–3, 5, 7, 12, and 13 are unpatentable over Willett and
`Wilkinson, and
`claims 1–3, 5, 7, 12, and 13 are unpatentable over Tolman and
`Wilkinson;
`FURTHER ORDERED that inter partes review commences on the
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of a trial; and
`FURTHER ORDERED that the trial is limited to the grounds of
`unpatentability listed above, and no other grounds of unpatentability are
`authorized for inter partes review.
`
`
`
`
`
`
`
`
`19
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`IPR2017-01567
`Patent 7,934,556 B2
`
`PETITIONER:
`Henry A. Petri
`James P. Murphy
`POLSINELLI PC
`hpetri@polsinelli.com
`jpmurphy@polsinelli.com
`
`PATENT OWNER:
`Michael L. Kiklis
`Christopher Ricciuti
`Katherine Cappaert
`Marc K. Weinstein
`OBLON, MCCLELLAN, MAIER & NEUSTADT, LLP
`CPDocketKiklis@oblon.com
`CPDocketRicciuti@oblon.com
`CPDocketcappaert@oblon.com
`CPDocketWeinstein@oblon.com
`
`
`
`20
`
`
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