At the end of October, the U.S. Patent Trial and Appeal Board (“PTAB”) issued a final written decision in PGR2023-00023, finding all claims of a patent owned by Halliburton Energy Services unpatentable under 35 U.S.C. § 101.

Profrac Holding Corp and U.S. Well Services, LLC filed a petition for post grant review of all claims of U.S. Patent No. 11,373,058 (“the ’058 patent”) which is directed towards systems and methods for operating an electric fracking pump. Claim 1 recited a computer-implemented method for controlling electrical fracturing equipment for fracturing a well, and the method comprising the following steps:

  1. generating a sequence of stimuli for application to a well environment, the sequence of stimuli comprising one or more of particulate concentrations, chemical concentrations, or a pump rate control;
  2. receiving formation response data comprising data from one or more downhole sensors or surface sensors;
  3. selecting a representative system model based on the received formation response data and sequence of stimuli; and
  4. controlling an electrical fracturing pump based on the representative system model.

The PTAB applied the U.S. Supreme Court’s two-part framework of Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 575 U.S. 208 (2014) in conjunction with the USPTO’s Section 101 Guidance. At the first step, the PTAB had to determine whether the claims were directed to one of the four statutory categories of patentable subject matter under § 101. Based on the language of the claim, the PTAB determined that the claims were directed to a process. At the second step of the framework, the PTAB broke down the analysis into two parts with part A having two prongs. At prong one of step 2A, the PTAB had to determine whether the claims recite an abstract idea. The PTAB found that the steps of “receiving formation response data comprising data from one or more downhole sensors or surface sensors” and “selecting a representative system model based on the received formation response data and sequence of stimuli” constituted mental processes. See PGR2023-00023, Paper 26 at 9 (P.T.A.B. Oct. 29, 2024). Looking to the background of the ’058 patent, the PTAB held that the patent teaches that “a technician may review sensor data” and that the representative system model is “typically manually selected by a technician based on observed sensor data.” Id. at 10. With respect to the “controlling” step, the PTAB agreed with the Patent Owner that it is not a mental step. However, the PTAB noted that the patent explains that the “generating” and “controlling” steps can be performed via a generic computer. Id. at 11. The PTAB therefore found that the claims were directed to an abstract idea.

Under step 2a prong two, the PTAB had to determine whether the claims recite additional elements that integrate the abstract idea into a practical application. The PTAB concluded that the “generating” and “controlling” steps do no more than link the abstract idea to a technical field. Id. at 13. The Patent Owner characterized the advantage of the ’058 patent as the “selection of a representative system model that more accurately reflects the well to which it is applied, thereby improving fracturing operations.” Id. The Patent Owner further argued that the patent solves a problem in the field by “providing techniques for optimizing well treatments using representative system models selected according to formation responses to stimuli indicated by sensor data.” Id. at 14. The PTAB disagreed with the Patent Owner and found that the Patent Owner’s arguments supported finding that the mental process steps are the focus of the claimed advance of the patent and that “the other steps do not integrate the exception into a practical application, but rather apply it to a technical field.” Id. at 14. The PTAB found that the “controlling” step does not add meaningful limitations but instead “simply applies the selected representative system model to a pump.” Id. at 15.

The PTAB then moved on to part B of step 2 which required it to determine whether the claims add a specific limitation beyond the abstract idea that is not “well-understood, routine [and] conventional” in the field. Id. (quoting 2019 Revised Guidance, 84 Fed. Reg. at 56). Relying on the background of the patent, the PTAB agreed with the Petitioner that “it will be understood that much of claim 1 was well-understood, routine, and conventional, whether considered individually or as an ordered combination.” Id. at 16. The PTAB explained that the patent makes clear that “adjusting settings on an electrical fracturing pump” is what the patent “teaches to generate a sequence of stimuli.” Id. The PTAB then concluded that the claims of the patent were directed to an abstract idea without something more and are therefore unpatentable.

The PTAB went on to explain that its decision is supported by the Federal Circuit decision in TDE Petroleum Data Sols., Inc. v. AKN Enter., 657 F. App’x 991 (Fed. Cir. 2016) because, like in TDE Petroleum, the PTAB found that the “receiving” and “selecting” steps of the present claims are “‘ordinary steps of data analysis’ that merely involve ‘collecting information’ and ‘analyzing it.’” PGR2023-00023, Paper 26 at 19 (quoting TDE Petroleum Data Sols., Inc., 657 F. App’x at 993). The PTAB disagreed with the Patent Owner that the claims are closely analogous to the claims found patent eligible by the Federal Circuit in EcoServices, LLC v. Certified Aviation Servs., LLC, 830 Fed. App’x 634 (Fed. Cir. 2020). The PTAB explained that the claims in EcoServices are distinguishable because they were directed to physical hardware whereas the present claims did not include any physical hardware.

The PTAB’s decision in this case presents another example of how the Board continues to navigate Section 101 challenges and apply the USPTO’s framework. The PTAB’s decision further highlights the critical role that patent specification plays in a § 101 analysis. The PTAB looks to the specification to confirm the technological advance of the claims. As evidenced by the PTAB’s decision, the specification can be used to prove patent eligibility just as much as it can be used to disprove it. When drafting applications, patent applicants should pay particular attention to the background section and should be careful in how they describe the technological field or prior art. If the specification admits that some of the claim elements are well-understood or routine in the art, the patent applicant could face difficulties in opposing a §101 rejection or challenge. Patent applicants should also be specific in how they describe the advances and inventiveness of their claimed invention and should include details of how the applicant’s technological solution is implemented.

Furthermore, for patent owners facing a § 101 challenge at the PTAB, this decision demonstrates the importance of how a patent owner characterizes their claimed invention or the improvements their invention provides. Here, the PTAB found that the way the Patent Owner characterized the claimed advance of its patent in its Patent Owner Response “show[ed] why the[] additional elements do not do anything more than link the judicial exception to the technical field.” PGR2023-00023, Paper 26 at 13. In light of this decision, Patent Owners should be careful in their word choice when describing their claimed invention and should strategize ways on how best to present their claimed technological advances to the PTAB.