Patent Claims To A System For Drilling A Well Found Ineligible Under 35 U.S.C. ' 101

• Published date: 26 March 2024
• Subject Matter: Intellectual Property, Patent
• Law Firm: Akin Gump Strauss Hauer & Feld LLP
• Author: Sunny Akarapu and C. Brandon Rash

The Patent Trial and Appeal Board (PTAB) recently found unpatentable claims that are directed to a processor-based system for drilling a well that selects a desired path for the wellbore based on factors such as curvature, time and cost. The PTAB decided that the claims were patent ineligible under 35 U.S.C. ' 101 because they recite steps of collecting and manipulating data, an abstract idea, without integrating the idea into a practical application or adding an inventive concept.

Nabors Drilling Technologies USA, Inc. v. Motive Drilling Technologies, Inc., No. PGR2022-00055 (P.T.A.B. Feb. 22, 2024).

Nabors Drilling filed a Petition for post-grant review of claims in U.S. Patent No. 11,170,454, which included a ground based on patent ineligibility under 35 U.S.C. ' 101. The patent is directed to a system for selecting the best path for drilling a borehole that satisfies certain defined parameters, such as curvature, time and cost associated with the path. Representative claim one recites a system comprising a memory and a processor, configured to perform the following steps (simplified):

Receiving information comprising a location of a bottom hole assembly (BHA) in a well and a target path for a wellbore;

Responsive to the information, generating a first set of possible convergence paths from the BHA location to the target path;

Removing from the first set a first possible convergence path that comprises an illogical option, which comprises a path that extends in the wrong direction before converging, thereby generating a second set of possible convergence paths;

Removing from the second set a second possible convergence path that comprises a violation of a rule, thereby generating a third set of possible convergence paths;

Selecting a desired convergence path responsive to at least one of a curvature, a time and a cost associated with each of the possible convergence paths in the third set;

Receiving a well plan and updating the plan with the desired convergence path; and

Sending one or more control signals to a control system to drill in accordance with the updated well plan.

In determining whether the challenged claims were directed to a patent-ineligible concept, the PTAB was guided by the Supreme Court's two-step Alice framework. Under this framework, the PTAB first determines whether the claims are "directed to" a patent-ineligible concept. And if so, the PTAB considers the elements of each claim individually and "as an ordered combination" to...