Nabors Drilling Technologies USA, Inc.

Patent Trials and Appeals Board

Oct 1, 2021

IPR2021-00671 (P.T.A.B. Oct. 1, 2021)

Trials@uspto.gov Paper 12
571-272-7822 Date: October 1, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

HELMERICH & PAYNE INTERNATIONAL DRILLING COMPANY,
HELMERICH & PAYNE TECHNOLOGIES, LLC, and MOTIVE
DRILLING TECHNOLOGIES, INC.,
Petitioner,

v.

NABORS DRILLING TECHNOLOGIES USA, INC.,
Patent Owner.
____________

IPR2021-00671
Patent 8,510,081 B2
____________

Before KEN B. BARRETT, MATTHEW S. MEYERS, and
SEAN P. O’HANLON, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

IPR2021-00671
Patent 8,510,081 B2

2
I. INTRODUCTION
A. Background and Summary
Helmerich & Payne International Drilling Company, Helmerich &
Payne Technologies, LLC, and Motive Drilling Technologies, Inc.
(collectively, “Petitioner”)1 filed a Petition requesting inter partes review of
U.S. Patent No. 8,510,081 B2 (“the ’081 patent,” Ex. 1001). Paper 1
(“Pet.”). The Petition challenges the patentability of claims 1–3 of the
’081 patent. Nabors Drilling Technologies USA, Inc. (“Patent Owner”)2
filed a Preliminary Response to the Petition. Paper 7 (“Prelim. Resp.”).
Petitioner filed a Reply (Paper 9, “Pet. Reply”) and Patent Owner filed a
Sur-reply (Paper 10, “PO Sur-reply”).
An inter partes review may not be instituted “unless . . . the
information presented in the petition . . . shows that there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of the
claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having
considered the arguments and evidence presented by Petitioner and Patent
Owner, we determine that Petitioner has not demonstrated a reasonable
likelihood of prevailing on at least one of the challenged claims of the ’081
patent. Accordingly, we do not institute an inter partes review of the
challenged claims.

1 Petitioner identifies Helmerich & Payne International Drilling Company,
Helmerich & Payne Technologies, LLC, Motive Drilling Technologies, Inc.,
and Helmerich & Payne, Inc. as real parties-in-interest. Pet. 1.
2 Patent Owner identifies Nabors Drilling Technologies USA, Inc. and
Nabors Corporate Services, Inc. as real parties-in-interest. Paper 6, 2.
IPR2021-00671
Patent 8,510,081 B2

3
B. Related Proceedings
The parties identify, as a matter involving or related to the ’081
patent, Nabors Drilling Techs. USA, Inc. v. Helmerich & Payne Int’l
Drilling Co. et al., Case No. 3:20-CV-03126 (N.D. Tex.). Pet. 1–2; Paper 6,
2. We also note that there are several related inter partes review
proceedings: IPR2021-00621, IPR2021-00672, IPR2021-00897,
IPR2021-01018, IPR2021-01043, and IPR2021-01044.
C. The ’081 Patent
The ’081 patent is titled “Drilling Scorecard.” Ex. 1001, code (54).
According to the Abstract, the ’081 patent is directed to “evaluating drilling
accuracy performance in drilling a wellbore.” Id., code (57).
The ’081 patent explains that directional/horizontal well drilling is
more of an art than a science. See Ex. 1001, 2:32–35. According to the ’081
patent,
At the end of the drilling process there is not presently much
attention paid to, much less an effective method of evaluating
the performance of the driller at the controls of the drilling rig.
Consequently, there has been a long-felt need to more
accurately evaluate a driller’s ability to keep the toolface in the
correct orientation, and to be able to more accurately evaluate a
driller’s ability to keep the well on target, such as at the correct
inclination and azimuth.
Id. at 2:39–47.
One method of evaluating performance involves the toolface
orientation relative to the toolface advisory. Ex. 1001, 2:64–3:8. “[T]he
angular orientation of a fixed reference point on the circumference of the
drill string in relation to a reference point on the wellbore” is typically
referred to as the “toolface.” Id. at 1:60–66. A recommended toolface
orientation is referred to as the “toolface advisory.” Id. at 2:55–56; see Ex.
IPR2021-00671
Patent 8,510,081 B2

4
2008, 33 (the parties agreement, in the District Court, that “a tool advisory”
is a “recommended toolface orientation.”).
The Abstract of the ’081 patent describes a
[m]ethod . . . for evaluating drilling accuracy performance in
drilling a wellbore that can include: (1) monitoring an actual
toolface orientation of a tool, e.g., a downhole steerable motor,
by monitoring a drilling operation parameter indicative of a
difference between the actual toolface orientation and a toolface
advisory; (2) recording the difference between the actual
toolface orientation and the toolface advisory; and (3) scoring
the difference between the actual toolface orientation and the
toolface advisory.
Ex. 1001, code (57).
D. Illustrative Claim
Of the challenged claims of the ’081 patent, claim 1 is an independent
claim. The remaining challenged claims, claims 2 and 3, each depends
directly from claim 1. Claim 1, reproduced below with bracketed
annotations used by Petitioner, is illustrative.
1. [1 Pre] A method of evaluating drilling performance in a
wellbore, which comprises:
[1a] monitoring, during wellbore drilling, an actual
toolface orientation of a downhole steerable motor by
monitoring a drilling operation parameter indicative of a
difference between the actual toolface orientation and a toolface
advisory;
[1b] recording, at a plurality of times during the wellbore
drilling, the difference between the actual toolface orientation
and the toolface advisory;
[1c] scoring each of the differences between the actual
toolface orientation and the toolface advisory by assigning
respective values to the differences, each of the values
representing drilling performance at the corresponding time at
IPR2021-00671
Patent 8,510,081 B2

5
which the corresponding difference was recorded, each of the
values depending on the corresponding difference;
[1d] generating a total score, the total score being based
on a sum of the values, the total score indicating the degree to
which the actual toolface orientation was kept in a correct
orientation over the plurality of times during the wellbore
drilling; and
[1e] providing at least the total score to an evaluator.
Ex. 1001, 15:25–47.
E. Evidence
Petitioner relies on the following references:
Reference Dates Exhibit
No.
Hamilton US 7,588,100 B2 Filed Sept. 6, 2007;
Issued Sept. 15, 2009
1006
Brett US 7,031,840 B1 Filed Jan. 5, 2004;
Issued April 18, 2006
1007
Young US 2008/0255869 A1 Filed April 12, 2008;
Published Oct. 16, 2008
1008
Petitioner also relies on the Declaration of Vinod Sharma, P.E.
(Ex. 1003) in support of its arguments. The parties rely on other exhibits as
discussed below.
F. Asserted Ground of Unpatentability
Petitioner asserts that the challenged claims are unpatentable on the
following ground:
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1–3 103(a) Hamilton, Brett, Young
IPR2021-00671
Patent 8,510,081 B2

6
II. ANALYSIS
A. Principles of Law
Petitioner bears the burden of persuasion to prove unpatentability of
the claim challenged in the Petition, and that burden never shifts to Patent
Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
1378 (Fed. Cir. 2015).
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter 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). The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of skill in the art; and (4) any objective evidence of obviousness
or non-obviousness.3 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
B. The Level of Ordinary Skill in the Art
In determining the level of ordinary skill in the art, various factors
may be considered, including the “type of problems encountered in the art;
prior art solutions to those problems; rapidity with which innovations are
made; sophistication of the technology; and educational level of active
workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
(internal quotation marks and citation omitted).

3 The parties have not directed our attention to any objective evidence of
obviousness or non-obviousness.
IPR2021-00671
Patent 8,510,081 B2

7
Petitioner’s declarant, Mr. Vinod Sharma, opines that
[a person of ordinary skill in the art (“POSITA”)] would have
had a Bachelor’s of Science degree in engineering (e.g.,
mechanical or petroleum engineering) or an equivalent degree.
A POSITA would also have had, through education or
experience, familiarity with directional drilling principles.
Additional education could compensate for less practical
experience and vice versa.
Ex. 1003 ¶ 73; see Pet. 13. Patent Owner does not address the level of skill
in the art or otherwise dispute Mr. Sharma’s assertion.
Mr. Sharma’s definition is consistent with the level of ordinary skill
reflected in the prior art references of record. See Okajima v. Bourdeau, 261
F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may
reflect an appropriate level of skill in the art). For purposes of this decision,
we apply Mr. Sharma’s definition of the person of ordinary skill in the art.
C. Claim Construction
We apply the same claim construction standard used in district court
actions under 35 U.S.C. § 282(b), namely that articulated in Phillips v. AWH
Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b)
(2020).
In applying that standard, claim terms generally are given their
ordinary and customary meaning as would have been understood by a person
of ordinary skill in the art at the time of the invention and in the context of
the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining
the meaning of the disputed claim limitation, we look principally to the
intrinsic evidence of record, examining the claim language itself, the written
description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
IPR2021-00671
Patent 8,510,081 B2

8
v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
(citing Phillips, 415 F.3d at 1312–17).
Neither party proposes an explicit claim construction for any term.
See, e.g., Pet. 20 (“Petitioners respectfully submit that the Board need not
expressly construe any term.”).
On this record and for purposes of this decision, we determine that no
claim terms require express construction.
D. The Alleged Obviousness of Claims 1–3 over Hamilton, Brett, and Young
Petitioner alleges that claims 1–3 of the ’081 patent would have been
obvious over Hamilton, Brett, and Young. See Pet. 20–71 (addressing
claim 1). Petitioner contends that Hamilton teaches monitoring an actual
toolface orientation and calculating, at a plurality of times, the difference
between the actual toolface orientation and the toolface advisory. Id. at 21–
22. Petitioner further contends that “Young discloses recording a calculated
difference between a monitored parameter and a target value,” and that
“Young’s technique for evaluating driver performance teaches the scoring
method recited in limitations 1[c]-1[e] of the ’081 Patent.” Id. at 22–23
(referring to the “scoring,” “generating a total score,” and “providing at least
a total score” limitations). Petitioner also contends that “Brett provides
explicit teachings, suggestions, and motivation that would have led a [person
of ordinary skill in the art] to combine the teachings of Hamilton and Young
to arrive at the claimed method.” Id. at 23.
Patent Owner argues, inter alia, that Petitioner improperly relies on
conclusory expert testimony and impermissible hindsight based on the
disclosure of the ’081 patent. Prelim. Resp. 27. According to Patent Owner,
Petitioner has “not sufficiently explained how or why a [person of ordinary
IPR2021-00671
Patent 8,510,081 B2

9
skill in the art] would have combined Young with Hamilton and Brett to
arrive at the claimed invention.” Id. at 26 (citations omitted).
For reasons discussed below, we determine that Petitioner has not
shown a reasonable likelihood that it would prevail in establishing
unpatentability of independent claim 1 as obvious over Hamilton, Brett, and
Young.
1. Hamilton (Ex. 1006)
Hamilton pertains to “directional drilling of a borehole and more
particularly to method and apparatus for affecting the trajectory of a
borehole.” Ex. 1006, 1:7–9. Hamilton explains that “[c]onventional
directional drilling is accomplished with an alternating combination of two
drilling operations; a period of steering or sliding; and a period of rotating.”
Id. at 2:1–3. The sliding phase is “necessary for adjusting or setting the
direction of the borehole path[.]” Id. at 2:11–13.
Hamilton explains that,
An operator periodically or continuously monitors the tool-face
orientation such as through periodic surveys while sliding using
measurement while drilling (MWD) tools. While sliding, a
portion of the drilling assembly slides without rotating and
MWD can be used. Conventionally, for adjustment of the
borehole path, the operator identifies a deviation from the
desired trajectory and rotates the drill string through an angular
offset or “bumps” the drill string to achieve an incremented
tool-face orientation. Thereafter, one can then drill for a
subsequent interval using sliding drilling in the new drilling
direction.
Id. at 5:52–60. Hamilton teaches that “MWD sensors are employed for
determining the tool-face orientation.” Id. at 7:44–45; see also id. at
11:20–22 (“tool-face orientation (angular position) is a known variable
(measured, for instance, with MWD technology)”).
IPR2021-00671
Patent 8,510,081 B2

10
Hamilton further explains that,
After drilling a set incremental distance . . . , perform a standard
wellbore deviation survey to determine the change in azimuth
and inclination of the well bore and thereby infer what a first
effective tool-face orientation (ETFO) was during the most
recent drilling interval. The first EFTO is then compared to
second EFTO calculated to affect the desired borehole
trajectory and a corrective angular offset or displacement is
calculated therebetween so that when that angular offset is
applied to the reference direction of the quill 32, subsequent
drilling of the borehole will be within allowable tolerance limits
of the desired trajectory. Drilling continues using the same
drilling parameters as long as the steering is required.
Id. at 10:31–46.
2. Brett (Ex. 1007)
Brett pertains to “a process to create an objective drilling performance
assessment system [and, i]n particular, . . . provides a method to create a
drilling performance assessment ratio that may be used to evaluation [sic]
drilling performance and identify promising opportunities to improve
drilling operations.” Ex. 1007, 1:7–12. According to Brett, “Oil, gas, and
other drilling operations comprise a number of discreet operations, which are
performed in a sequential order in order to perform the overall drilling
operation.” Id. at 1:14–16. “As the process of drilling requires huge
investments of capital equipment and investments of personnel, there are
continuing efforts to improve the efficiency and improve the performance of
the drilling operations.” Id. at 1:17–21.
Brett continues:
It would be advantageous to develop a process that could
compare drilling performances in different business entities and
IPR2021-00671
Patent 8,510,081 B2

11
under different conditions in order to identify where to most
effectively apply drilling engineering or operational resources.
It would also be advantageous to provide a process to
improve petroleum drilling operations by helping identify
promising opportunities to improve performance and
efficiencies.
It would also be advantageous to provide a process to set
performance targets and identify where savings could be found.
Id. at 1:41–53.
Brett’s method “begins with utilization of certain technical minimum
time limit standards for various sequential steps, sometimes described as
‘perfect well analysis,’” which pertains to the identification of a minimum
time benchmark for drilling a particular well. Id. at 1:57–62. “The ‘Perfect
Well Time’ . . . is a calculated minimum time that a well could possibly be
drilled, and is based on clearly defined objective physical factors that
constrain the drilling time (rock specific energy, operational limits, number
of casing strings, hole size, etc).” Id. at 1:63–67.
3. Young (Ex. 1008)
Young is “in the field of collecting data, performing statistical
analysis on the data and reporting the results of the statistical analysis,” and
specifically “relates to driver performance statistics collection method and
apparatus.” Ex. 1008 ¶ 3. Young explains that “[d]river safety and truck
rollovers are inherent issues in the ready-mixed concrete industry,” and that
[t]he same problems exist in other industries, for example, in the industries
related to transportation of different types of liquids.” Id. ¶¶ 5–6.
Young’s method evaluates certain maneuvers performed by a mixer
drum truck, such as a right turn when the vehicle is loaded, a left turn when
the vehicle is loaded, turns when the vehicle is unloaded, and a start when
the vehicle is loaded and when it is unloaded. Id. ¶ 33. One embodiment of
IPR2021-00671
Patent 8,510,081 B2

12
the method involves collecting a set of driving data for each vehicle for a
plurality of maneuvers and calculating an individual score for each
maneuver for each vehicle. Id. ¶ 30. “The individual score for each
maneuver for each vehicle is calculated by comparing an individual vehicle
data for each maneuver to a standard for each maneuver used for the safety
report.” Id. “The selection of the performance standard for the fleet or for
the industry as a whole is made when the report is run.” Id. ¶ 50.
A set of acceleration and speed data is collected for each vehicle and
each maneuver. Id. ¶ 40. “The speed data is an average vehicle speed while
operating.” Id. In one embodiment, raw acceleration data for each
maneuver for each vehicle is collected, processed, and transmitted to a
database. Id. ¶ 66.
Young discloses a report that includes “individual scores for each
driving maneuver, plus a weighted composite score for each vehicle.”
Id. ¶ 25; see Fig. 5.
4. Discussion
The recording limitation, identified by Petitioner as limitation “1[b],”
recites: “recording, at a plurality of times during the wellbore drilling, the
difference between the actual toolface orientation and the toolface
advisory.”4 Ex. 1001, 15:32–34.
This limitation, at first blush, embodies a simple concept. However,
Petitioner’s articulated case for the limitation when considered in light of
Patent Owner’s opposition highlights several important nuances. The act of

4 “[A] recommended toolface orientation [is] referred to as the toolface
advisory.” Ex. 1001, 2:55–56; see also Ex. 2008, 33 (the parties agreed
construction, in the District Court action, of the claim phrase “toolface
advisory” as meaning “recommended toolface orientation”).
IPR2021-00671
Patent 8,510,081 B2

13
the claimed step is “recording” and the data that is to be recorded is a very
specific thing, the difference between the actual toolface orientation and
recommended toolface orientation (toolface advisory). There also are
quantity and chronological aspects; the recording of that data for a single,
particular parameter (the difference) must occur a plurality of times during
the drilling operation.
During the prosecution of the application leading to the issuance of
the ’081 patent, the applicant amended claim 1 to add the requirement that
the recording be done “at a plurality of times during the wellbore drilling,”
to add the requirement that the scoring be done on “each of the differences”
that were recorded, and to add the entire “generating a total score”
limitation, which also ties the toolface orientation parameter and “the
plurality of times during the wellbore drilling.” See Ex. 1002, 78. The
applicant argued, inter alia, that the claimed invention was distinguishable
over the prior art because the prior art reference disclosed scoring a single
difference based on multiple performance indicators rather than a “single
key performance indicator,” the claimed face angle parameter recorded at a
plurality of times during drilling. Id. at 89–90 (emphasis omitted). The
Examiner, in the next Office Action, declared claim 1 to be allowable. Id.
at 66.
In order to demonstrate a likelihood of prevailing, Petitioner must
explain adequately how and why a person of ordinary skill in the art at the
time of the invention would have found it obvious to perform a step that is
this multi-aspect, nuanced claimed subject matter. For reasons we shall
discuss, Petitioner has not done so.
IPR2021-00671
Patent 8,510,081 B2

14
Petitioner effectively concedes that the entirety of the recording
limitation is not disclosed in any single reference. See Pet. 44 (“The
Hamilton-Brett-Young combination teaches [the subject limitation].”).
Petitioner’s specific discussion of this facially-simple limitation spans
eleven pages. Id. at 44–54. This somewhat lengthy discussion, however, is
not a self-contained and complete analysis. For example, the Petition, as
support for a very important, foundational proposition, contains a
cross-reference citation to an earlier portion of the Petition. Id. at 47 (citing
“Supra, § VIII.A.1(a)” for the contention that “a POSITA would have been
motivated to develop a system for evaluating driller performance as it relates
to toolface control.”). The referenced portion of the Petition spans another
fourteen pages. See id. at 20–33. Similarly and as another example,
Petitioner relies on a paragraph of the expert declaration for very critical and
otherwise conclusory assertions as to what would have been “well within the
knowledge and skill of a POSITA” and what “would have been obvious to a
POSITA.” Id. at 47 (citing Ex. 1003 ¶ 140). The cited paragraph 140 of the
expert testimony is itself a string of conclusory, yet critically important,
propositions citing almost exclusively (when providing a citation) to earlier,
very lengthy sections of the declaration. See, e.g., Ex. 1003 ¶ 140
(“Furthermore, a POSITA would be aware that actual survey data is
commonly recorded and compared to a planned trajectory (resulting in a
calculated toolface advisory). Supra, §V.C.”); id. ¶¶ 43–63 (the paragraphs
comprising Section V.C, spanning pages 26–42 of the declaration).
Those many pages and paragraphs of discussion apparently are
required because Petitioner cannot concisely explain how the three
references—Hamilton, Brett, and Young—together teach the entirety of the
IPR2021-00671
Patent 8,510,081 B2

15
recording limitation. Notwithstanding the assertion that “[e]ach claim
limitation was disclosed, taught, or suggested in the prior art” (Pet. 21),
Petitioner’s articulation of its case actually relies relatively little on the
teachings of those references, but instead relies heavily on what purportedly
would have been known by and obvious to a person of ordinary skill in the
art. See, e.g., Pet. 47. Petitioner’s case for the recording limitation involves
a series of leaps in logic that, individually, may seem minor but, in the
aggregate, leave us unable to conclude that Petitioner has demonstrated a
likelihood of prevailing in its challenge.5
Acknowledging that Hamilton does not disclose recording the
specified data as required by claim 1, Petitioner begins with the assertion
that Hamilton calculates, at a plurality of times during drilling, the recited
difference between the actual orientation and toolface advisory. See
Pet. 44–47; see also id. at 21–22. Petitioner minimizes the recording step,
arguing that “recording data is not inventive in and of itself, and the ’081
Patent does not purport to have invented an improved technique for
recording data.” Id. at 22 (citing Ex. 1003 ¶ 99). Petitioner then makes the
distracting argument that there are known ways of recording data (e.g., by
pencil and paper), which is not a serious point of contention. Id.; see Prelim.
Resp. 21 (Patent Owner agreeing that “it is true that ‘the ’081 patent does
not purport to have invented an improved technique for recording data’”). A
much more important proposition is presented in a mere conclusory
manner—“a [person of ordinary skill in the art] would have understood that
recording drilling parameters was a known practice before the filing date of

5 We do not detail herein every questionable proposition in the Petition, and
offer only a few examples.
IPR2021-00671
Patent 8,510,081 B2

16
the ’081 Patent.” Pet. 22 (citing Ex. 1003 ¶ 99). To the extent that
Petitioner has any support for this conclusory proposition, Petitioner does
not make discernment of that readily accessible to us. See Ex. 1003 ¶ 99
(the cited expert testimony stating that “[a] POSITA would further
understand that recording drilling parameters was a known practice before
the filing date of the ’081 Patent. Supra, §V.C.” (footnote omitted)); id.
¶¶ 43–63 (the paragraphs comprising Section V.C, spanning pages 26–42 of
the declaration). Further, we note that Petitioner’s proposition does not go
so far as to assert that recording drilling parameters was well known, and
speaks generally about ambiguous “drilling parameters” rather than the
specific parameter of the claim, the toolface orientation difference.
Petitioner also contends that “Young discloses recording a calculated
difference between a monitored parameter and a target value.” Pet. 22
(citing Ex. 1008 ¶¶ 77–84; Ex. 1003 ¶ 100). Young pertains to the
assessment of fleet drivers and the comparison thereof against a performance
standard. See Ex. 1008 ¶¶ 9, 30. Young discloses a specific scoring
technique for, as an example, cement truck drivers making a right turn
(which is an important safety consideration because the spinning cement
mixture shifts the center of gravity to one side). See id. ¶¶ 20, 34. Aside
from any generalized teaching of recording data, we agree with Patent
Owner that Young appears to teach—rather than recording differences
during operation—the accumulation of raw parameter data over a lengthy
period of driving, and only at the conclusion determining the difference
between average of that raw data and the industry average. See Prelim.
Resp. 22; Ex. 1008 ¶ 66 (Young describing the steps of “collecting a raw
acceleration data for each maneuver for each vehicle . . . [and] processing
IPR2021-00671
Patent 8,510,081 B2

17
the collected raw acceleration data.”); id. ¶ 50 (“The selection of the
performance standard for the fleet or for the industry as a whole is made
when the report is run.”). Further and for the reasons discussed below,
Petitioner has not provided adequate reasoning as to why a person of
ordinary skill in the art of well drilling would have applied any general or
specific teachings from Young to modify Hamilton in a way that arrives at
the particular claimed subject matter.
Petitioner argues that “Brett provides explicit teachings, suggestions,
and motivation that would have led a POSITA to combine the teachings of
Hamilton and Young to arrive at the claimed method.” Pet. 23 (citing
Ex. 1003 ¶¶ 101–103). Brett pertains to improving performance of the
overall well drilling process starting with the initial process step of placing a
blow out preventer. See, e.g., Ex. 1007, 1:63–67, 3:63–4:6. Petitioner does
not direct us to a teaching in Brett specific to improving a drilling operator’s
performance or using the toolface orientation difference as an important
metric. See Pet. 23–24. Rather, Petitioner and its expert argue that Brett’s
generalized and unremarkable teaching that process improvement is
desirable in the drilling industry would have motivated a person of ordinary
skill in the art to home in on the individual operator’s drilling technique and
utilize toolface control as the proper metric. See id. at 24 (“Based on Brett’s
teaching . . ., a POSITA would have been motivated to develop methods for
objectively evaluating a driller’s performance during directional drilling. . . .
In particular, a POSITA would have recognized that toolface control . . . is
one drilling operation that is especially well suited for evaluation.” (citing
Ex. 1003 ¶ 104)). Petitioner’s expert goes further by referring to an even
more general, industry-independent concept—stating that “[p]erformance
IPR2021-00671
Patent 8,510,081 B2

18
evaluation schema developed for evaluators is an aspect of virtually all
industries in one way or another”—in concluding that “a POSITA would
have recognized that toolface control . . . is one drilling operation that is
especially well suited for evaluation.” Ex. 1003 ¶ 104.
We find Brett’s relied-on teaching too generalized to provide a reason
why one of ordinary skill in the art would arrive at the very specific form of
operator evaluation that is the subject of the challenged claims. See, e.g.,
Prelim. Resp. 25 (“[T]here is no mention of ‘toolface control’ whatsoever in
Brett. In fact, the term ‘toolface’ does not appear anywhere in Brett. Thus,
there is no actual teaching, suggestion, or motivation in Brett that supports
the conclusory statement made in the Petition and Mr. Sharma’s
Declaration.”).
Petitioner and its expert rely on several references not listed in the
ground to fill gaps in the teachings of the listed references and to purportedly
provide reasons to combine those listed references. See, e.g., Pet. 24–25 (“a
POSITA would have known . . .,” citing Haci (Ex. 1015); id. at 26 (“A
POSITA would have understood . . .,” citing Haci); id. at 26 (“a POSITA
would have been aware . . .,” citing Stoner (Ex. 1018)); Ex. 1003 ¶ 62 (“it
was also known that stored drilling data can be used to evaluate the
performance of drillers,” citing King (Ex. 1022)). In this regard, Patent
Owner argues that, “[w]hile the remaining paragraphs of Mr. Sharma’s
Declaration (¶¶ 105-113), on which Petitioners rely for their motivation to
combine argument include citations to various tertiary references, these
citations are introduced only afterwards as purported evidence of Petitioners’
foregone conclusion.” Prelim. Resp. 25. Patent Owner further argues that
“Petitioners’ citation to tertiary references not included in its obviousness
IPR2021-00671
Patent 8,510,081 B2

19
ground based on Hamilton, Young, and Brett is only evidence of Petitioners’
reliance on hindsight reasoning rather than the actual teachings of Hamilton,
Brett, and Young.” Id. at 25–26. We would not characterize the additional
references as “tertiary” because Petitioner relies on them in addition to the
three references in the stated ground and not all for the same proposition.
Nonetheless, we agree that, on the specific facts of this case, Petitioner’s and
its expert’s reliance on several references beyond those in the stated ground
as purported evidence of knowledge in the art indicates the use of improper
hindsight reasoning. Even if we were inclined to accept the alleged
knowledge of the ordinary artisan to fill gaps left by the references listed in
Petitioner’s ground, we would be looking for evidence that a concept was
well known in the art, not merely “known” in a single reference.
Having considered the parties’ arguments and evidence, we determine
that Petitioner has not demonstrated a reasonable likelihood of
demonstrating that independent claim 1 would have been obvious over
Hamilton, Brett, and Young.
The remaining challenged claims, claims 2 and 3, each depends
directly from independent claim 1. Petitioner’s arguments regarding these
claims do not cure the defects of the underlying challenge to independent
claim 1. See Pet. 71–75. Accordingly, Petitioner also has not demonstrated
a reasonable likelihood of prevailing in its challenge to claims 2 and 3.
III. DISCRETIONARY DENIAL
Patent Owner argues that we should exercise our discretion to deny
institution of inter partes review in this case under 35 U.S.C. § 325(d)
and/or § 314(a). Prelim. Resp. 37–63; Sur-reply 1–5. Because we have
considered the merits of Petitioner’s challenges and decline to institute an
IPR2021-00671
Patent 8,510,081 B2

20
inter partes review on that basis, we need not determine whether it would be
appropriate to discretionarily deny the Petition under § 325(d) or § 314(a).
IV. CONCLUSION
Petitioner has not demonstrated that there is a reasonable likelihood of
establishing the unpatentability of any of claims 1–3 of the ’081 patent.
V. ORDER
For the foregoing reasons, it is
ORDERED that the Petition is denied and no trial is instituted.

IPR2021-00671
Patent 8,510,081 B2

21

PETITIONER:

Chad C. Walters
Douglas M. Kubehl
Clarke W. Stavinoha
BAKER BOTTS L.L.P.
chad.walters@bakerbotts.com
doug.kubehl@bakerbotts.com
clarke.stavinoha@bakerbotts.com

PATENT OWNER:

David M. O’Dell
Jonathan R. Bowser
Vinu Raj
Dustin Johnson
Jeffrey A. Wolfson
HAYNES AND BOONE, LLP
david.odell.ipr@haynesboone.com
jon.bowser.ipr@haynesboone.com
vinu.raj.ipr@haynesboone.com
dustin.johnson.ipr@haynesboone.com
jeff.wolfson.ipr@haynesboone.com