Patent Claims to a System for Drilling a Well Found Ineligible Under 35 U.S.C. § 101 | Akin Gump Strauss Hauer & Feld LLP
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 determine whether the additional elements “transform the nature of the claim” into a patent-eligible application. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014).
The PTAB also followed the USPTO’s 2019 Revised Guidance on the application of § 101. Under this guidance, the PTAB first looks to whether the claim recites: (1) any judicial exceptions (“Step 2A, Prong One”); and (2) additional elements that integrate the judicial exception into a practical application (“Step 2A, Prong Two”). If the claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, then the PTAB looks, under Step 2B, to whether the claim (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field; or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
1. 2019 Revised Guidance Step 1
This step evaluates whether the claim falls within any statutory category. The PTAB determined that the claim falls under a statutory category because the claimed system is a device or set of devices, which is a machine. Specifically, claim one recites a system for drilling a well comprising a memory and a processor configured to perform a series of steps.
2. 2019 Revised Guidance Step 2A, Prong One
Addressing Step 2A, Prong One, the PTAB found that claim one recites an abstract idea that falls within the grouping of mental processes. Claim one recites a system that performs the steps of receiving information, using that information to generate possible drilling paths, removing certain ones, selecting a desired path and updating the plan to include the selected path. The PTAB analogized these steps to “the data collection and management concepts” held ineligible in prior cases, including Content Extraction & Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343 (Fed. Cir. 2014); In re TLI Communications LLC Patent Litigation, 823 F.3d 607 (Fed. Cir. 2016); and Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016).
3. 2019 Revised Guidance Step 2A, Prong Two
Addressing Step 2A, Prong Two, the PTAB found that the additional elements in claim one do not integrate the abstract idea into a practical application, because they impose no meaningful limits on practicing the abstract idea. In addition to the abstract idea, the claim, one recites a processor, a memory and sending a control signal. The PTAB found that the processor and memory elements are recited at a high level of generality, i.e., a generic processor performing a generic computer function of processing data. Thus, these recitations are “no more than mere instructions to apply the exception using a generic computer component.”
The PTAB found that the element of sending a control signal was merely “insignificant post-solution activity.” The PTAB stated that, contrary to the patent owner’s contentions, claim, one does not recite drilling a well, nor does it cite any drilling tools or specific actions to perform the alleged drilling. The PTAB further determined that claim one does not improve upon a controller or other component in the recited system, nor does it improve upon a drilling process or solve a technical problem.
The PTAB distinguished the patent-eligible claims in Thales Visionix, Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017), because the claimed system in Thales specified the placement of two sensors and improved the operation of an inertial motion-tracking system. In contrast, the PTAB found that claim one here does not recite any improvement to the drilling process and, instead, is directed to the collection and manipulation of data for “selecting the desired path.”
4. 2019 Revised Guidance Step 2B
Addressing Step 2B, the PTAB found that the claim as a whole does not amount to significantly more than the recited exception. The patent owner argued that the “generating” and “removing” steps constitute an inventive concept. The PTAB, however, found that these steps do not change the way the computer performs the cost analyses, nor do they alter the way the drilling is performed. The PTAB also found that these steps were part of the abstract idea itself, and thus, could not be evidence of an inventive concept. As for the processor and memory, the PTAB stated that generic computer components performing generic computer functions do not amount to significantly more than the abstract idea. See Alice, 573 U.S. at 223. The PTAB also relied on the Federal Circuit’s explanation in Electric Power Group that claims reciting the functions of data gathering, analyzing and transmitting by use of only conventional, generic technology fail to provide an inventive concept. 830 F.3d at 1356.
Practice Tip: Patent owners should avoid claims that are directed to data collection and management using generic computer components performing generic computer functions of processing data. Instead, patent owners should focus claims on technological improvements that solve a technical problem and provide benefits over prior art. For drilling-related patents, as an example, the patent should describe and claim a technical improvement to the drilling process, such as a drilling tool or specific actions to perform the drilling, that alters the way the drilling is performed.
