Haynes and Boone, LLP successfully defended Downing Wellhead Equipment, LLC in two high-stakes inter partes review (“IPR”) cases involving hydraulic fracturing technology against Intelligent Wellhead Systems Inc. (IWS), a direct competitor. With these wins, Downing has now defeated three of the four IPRs filed by IWS.
Downing Wellhead Equipment, headquartered in Oklahoma City, has been a pioneer in pressure-control technologies for hydraulic fracturing since 1980. The disputed patents — U.S. Patents Nos. 11,401,779 and 11,560,770, both relating to a fracturing technique called “continuous pumping” — are central to ongoing litigation between Downing and IWS. Continuous pumping plays a crucial role in improving the efficiency and safety of hydraulic fracturing operations, a key process in modern oil and gas extraction. Last year, Downing’s Freedom Series Completion won a coveted Gulf Energy Information Excellence Award for its innovation and performance.
Last May, Downing sued IWS in the District of Colorado for infringing the ’770 and ’779 patents. Late last year, IWS filed IPR petitions challenging the validity of both patents. The U.S. Patent Trial and Appeal Board (PTAB) denied institution on the ’779 patent (IPR2024-00256) but granted institution on the ’770 patent (IPR2024-00300).
Then, earlier this year, IWS filed two more petitions against Downing’s continuous-pumping patents. PTAB denied both of those petitions in cases IPR2024-00583 and IPR2024-00584. The victories affirm the validity of Downing's innovative hydraulic fracturing technology.
In IPR2024-00583, the PTAB rejected IWS's challenges on both novelty and obviousness grounds. The Board found that the IWS did not prove that prior art either showed all elements of Downing's claimed invention or provided sufficient rationale to combine existing technologies.
For IPR2024-00584, the PTAB rejected the petition as a parallel filing, saying the petitioner's grounds lacked justification for a second review.
“We're thrilled the PTAB recognized these patents stand on solid legal and technical ground. These were complex but critically important cases,” Haynes Boone Patent Trials Partner Scott Jarratt said. “As the energy industry evolves, we remain committed to defending Downing’s pioneering technologies in whatever forum is necessary."
Jarratt led the Haynes Boone IPR team with Partner Russ Emerson leading the litigation effort. Partners Tiffany Cooke, Lee Johnston and Alan Herda, Counsel Zachary Halbur and Associates Andrew Drott, Laura Vu, Brooke Parker and Marron Frith all played key supporting roles.
Haynes Boone's Patent Trials Practice Group is renowned for its work protecting clients’ patents and challenging others’ patent claims before the USPTO, including in inter partes review, post-grant review and other proceedings. The group has handled more than 500 matters before the Patent Trial and Appeal Board, and its diversity and depth of experience are key to its success.
Haynes Boone’s IP Litigation Practice Group offers deep technical expertise and a proven track record of success in representing clients across all industries in complex intellectual property disputes. The diverse group of patent lawyers, trademark specialists, and seasoned trial attorneys has successfully represented multinational corporations, emerging businesses, and established mid-sized companies across a broad spectrum of IP matters.
