Profrac Holding Corp. v. Halliburton Energy Servs.
| Docket Number | PGR2023-00023,Patent 11,373,058 B2 |
| Decision Date | 01 November 2023 |
| Parties | PROFRAC HOLDING CORPORATION and U.S. WELL SERVICES, LLC, Petitioner, v. HALLIBURTON ENERGY SERVICES, INC., Patent Owner. |
| Court | Patent Trial and Appeal Board |
FOR PETITIONER: Brian E. Ferguson, Matthew Hopkins J. Tyler Boyce WINSTON &STRAWN LLC
FOR PATENT OWNER: Chad C. Walters, Brandon Chen, Clarke W Stavinoha BAKER BOTTS L.L.P.
Before HUBERT C. LORIN, JAMES L. MAYBERRY, and BRENT M. DOUGAL Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
Granting Institution of Post-Grant Review
35 U.S.C. § 324
Petitioner, ProFrac Holding Corporation and U.S. Well Services, LLC, requests that we institute a post-grant review challenging the patentability of claims 1-20 (the "challenged claims") of U.S. Patent 11,373,058 B2 (Ex. 1001, "the '058 patent"). Paper 2 ("Petition" or "Pet."). Patent Owner, Halliburton Energy Services, Inc., argues that Petitioner's request is deficient and should not be granted. Paper 6 ).
Applying the standard set forth in 35 U.S.C. § 324(a), which requires a demonstration by Petitioner that at least one claim is more likely than not unpatentable, we institute a post-grant review.[1]
The parties identify the following pending district court litigation: Halliburton Energy Services, Inc. v. U.S. Well Services, LCC and ProFrac Holding Corp., No. 6:22-cv-00906-ADA (W.D. Tex.). Pet. 1; Paper 4, 2.
The '058 patent is titled "System and Method for Treatment Optimization." Ex. 1001, code (54). The '058 patent discloses "techniques for optimizing well treatments using representative system models selected according to formation responses to stimuli indicated by sensor data." Id. at 2:12-15. Techniques are described that generate a sequence of stimuli for application to a well environment in order to produce a response from the formation. Id. at 2:12-22. Sensor data in response to the generated sequence of stimuli can then be received from sensors deployed throughout the well (e.g., surface sensors, downhole sensors, wireline sensors, etc.). Id. The stimuli and response combination "can be mapped to respective system models maintained in an accessible data store." Id. at 3:44-49. The representative system model is then used to "control fracturing operations," such as the settings on an electric fracturing pump. Id. at 4:8-12, 8:45-49.
Of the challenged claims, claims 1, 9, and 16 are independent, and claim 1 is representative:
Petitioner's grounds of unpatentability rely on the following evidence:
Name
Patent Document
Exhibit
Pankaj
U.S. 2018/0230782 A1 (Aug. 16, 2018)
1005
Payne
U.S. 2016/0258267 A1 (Sept. 8, 2016)
1006
Dawson
1024
Lecerf
1027
Klumpen
Petitioner asserts the following grounds of unpatentability (Pet. 24), supported by the declaration of Michael Nikolaou. (Ex. 1003):
Claim(s) Challenged
Reference(s)/Basis
1-4, 6-7, 9-12, 14, 16-19
103
Pankaj, Payne
5, 6, 13
103
Pankaj, Payne, Dawson
8, 15, 20
103
Pankaj, Payne, Lecerf
3, 11, 18
103
Pankaj, Payne, Klumpen
1-20
101
The '058 patent's eligibility for post-grant review is not disputed. See Pet. 2; see generally Prelim. Resp. Thus, we first address the obviousness grounds under 35 U.S.C §103 and then address subject matter eligibility under 35 U.S.C. § 101.
Petitioner bears the burden to demonstrate unpatentability under the more likely than not standard. 35 U.S.C. § 324(a); Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
A claim is unpatentable "if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious . . . to a person having ordinary skill in the art to which the claimed invention pertains." 35 U.S.C. § 103; see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). We resolve the question of obviousness based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the prior art and the claims; (3) the level of skill in the art; and (4) when in evidence, objective indicia of nonobviousness. See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). We apply these principles to the Petition's challenges.
We review the grounds of unpatentability in view of the understanding of a person of ordinary skill in the art at the time of the invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art (POSA):
would have had a B.S. in Chemical Engineering, Mechanical Engineering, Materials Science, or Metallurgical Engineering or an equivalent field and at least two years of academic or industry experience in the oil and gas industry, including experience with process control systems. Further, a person with additional education but less professional experience, and vice-versa, may qualify.
Pet. 23-24 (citing Ex. 1003 ¶ 4). Patent Owner adopts Petitioner's definition. Prelim. Resp. 15.
We are persuaded, on the present record, that Petitioner's proposal is consistent with the problems and solutions in the '058 patent and prior art of record. We adopt Petitioner's definition of the level of skill for the purposes of this Decision.
In post-grant review, we construe claims using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.200(b) (2022).
Neither Petitioner nor Patent Owner provides constructions of any claim terms. Pet. 25; Prelim. Resp 15-16.
We determine that no terms need to be construed at this time. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) .
Petitioner argues that the combination of Pankaj and Payne renders obvious claims 1-4, 6-7, 9-12, 14, and 16-19. Pet. 25-82. Patent Owner disagrees. Prelim Resp. 50-60.
In our below analysis, we first address the teachings of Pankaj and Payne. We then address the parties' arguments with respect to independent claims 1, 9, and 16. This is followed by our analysis of claims 4, 12, and 19, and then the remaining claims. We conclude that Petitioner shows that claims 1, 9, and 16 are more likely than not unpatentable.
Pankaj is entitled "Method of Performing Integrated Fracture and Reservoir Operations for Multiple Wellbores at a Wellsite." Ex. 1005, code (54). Pankaj describes methods for performing fracture or stimulation operations and production operations at a wellsite having multiple wellbores. Id. at Abstr. The methods apply to multiple wellbores through a natural fracture network and include generating a hydraulic fracture network grid based on wellsite data, generating reservoir parameters with an updated mechanical earth model, generating wellsite parameters with an integrated earth model by integrating the fracture parameters with the reservoir parameters, and performing production operations based on the integrated wellsite parameters. Id.
Payne is entitled "Well Fracturing Systems with Electrical Motors and Methods of Use," and discloses a fracturing system using electrical motors, such as "electrical pump motors" and "electrical fracturing motor[s]." Ex. 1006, code (54), ¶¶ 14-15, 42.
Petitioner argues that Pankaj teaches most of the features of independent claims 1, 9, and 16.[2] Pet. 38-52. Petitioner relies on Payne for teaching that the fracturing pump can be electrical. Id. at 31, 49-51. Petitioner also provides reasons why one of skill in the art would combine Pankaj and Payne. Id. at 31-38, 51. Patent Owner disagrees, while addressing claims 1, 9, and 16 together. Prelim. Resp. 50-57. For clarities sake, we address the arguments focusing on claim 1, though the arguments apply equally to claims 9 and 16.
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