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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`McCLINTON ENERGY GROUP, LLC
`Petitioner
`
`
`v.
`
`MAGNUM OIL TOOLS INTERNATIONAL, Ltd.
`Patent Owner
`
`Patent No. 8,079,413
`Issue Date: December 20, 2011
`Title: BOTTOM SET DOWNHOLE PLUG
`
`Inter Partes Review No. IPR2013-00231
`
`DECLARATION OF EXPERT KEVIN TRAHAN
`UNDER 37 C.F.R. § 1.68
`
`
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`
`
`DECLARATION OF KEVIN TRAHAN
`
`I, Kevin Trahan, hereby declare as follows:
`
`1.
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`I am President of Trahan Oilfield Consulting LLC. I have a B.S. in
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`Mechanical Engineering from Texas A&M University. I have considerable
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`experience and expertise in the area of designing down-hole tools including, but
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`not limited to packers, bridge plugs and frac plugs. I have experience and expertise
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`in dealing with patented inventions. Additionally, I am a named inventor on 10
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`U.S. Patents. My resume is attached describing in more detail my qualifications to
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`provide an opinion in this matter.
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`2. By my education, training, and experience, I am qualified to provide
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`testimony on the understanding of persons of ordinary skill in the art regarding
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`U.S. Patent No. 8,079,413 (the ‘413 patent), the challenges asserted in this patent,
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`the prior art being asserted against the '413 Patent, and the prosecution history of
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`this patent.
`
`3.
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`I am being compensated for my work in this matter, but my compensation
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`in no way effects my opinion or depends on the outcome of this proceeding.
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`4.
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`I have reviewed the following in preparation of this declaration:
`
`1) The Petition for Inter Partes Review filed by MEGCO on April 2,
`2013, Paper 3.
`
`
`2) The Declaration of Dr. Gary R. Wooley, Exhibit MEGCO [1020].
`
`DECLARATION OF EXPERT KEVIN TRAHAN – Page 2
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`3) The Decision, Institution of Inter Partes Review entered on
`September 23, 2013, Paper 16.
`
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`4) Preliminary Response by Patent Owner Under 37 C.F.R. § 42.108
`filed July 11, 2013, Paper 14.
`
`
`5) Markman Order; Magnum Oil Tools Int'l v. McClinton, et al, 2:12-cv-
`00099, U.S. District Court – Southern District of Texas, Corpus
`Christi Division; Honorable Judge Ramos Presiding, Exhibit MOTI
`[2001].
`
`
`6) Opening Expert Report of Dr. Gary R. Wooley dated September 13,
`2013; Magnum Oil Tools Int'l v. McClinton, et al, 2:12-cv-00099,
`U.S. District Court – Southern District of Texas, Corpus Christi
`Division; Honorable Judge Ramos Presiding, Exhibit MOTI [3011].
`
`
`7) My Rebuttal Report to Opening Expert Report of Dr. Gary R. Wooley
`dated October 11, 2013; Magnum Oil Tools Int'l v. McClinton, et al,
`2:12-cv-00099, U.S. District Court – Southern District of Texas,
`Corpus Christi Division; Honorable Judge Ramos Presiding.
`
`
`8) U.S. Patent No. 8,079,413 ("the '413 Patent").
`
`9) The file history of the '413 Patent.
`
`10) U.S. Patent Application Publication No. 2007/0151722 ("Lehr").
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`11) U.S. Patent No. 4,437,516 ("Cockrell").
`
`12) U.S. Patent No. 4,595,052 ("Kristiansen").
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`13) U.S. Patent No. 5,224,540 ("Streich").
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`DECLARATION OF EXPERT KEVIN TRAHAN – Page 3
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`14) U.S. Patent No. 6,708,768 ("Slup").
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`15) U.S. Patent No. 7,350,582 ("McKeachnie").
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`5.
`
`In forming my opinions expressed in this declaration, I have considered:
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`1) The documents listed above;
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`2) The standard for obviousness as set forth in KSR International Co. v.
`
`Teleflex, Inc., 550 U.S. 398 (2007), including the basis for supporting
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`a prima facie showing of obviousness; and
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`3) My education, training, and experience in the subject matter as
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`described above.
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`
`
`
`
`
`I. Qualifications and Experience
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`6. My career began in 1992 following graduation from Texas A&M
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`University. I was immediately employed by Baker Service Tools, a division of
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`Baker Hughes, Inc., as design engineer trainee. In this capacity, I was involved in
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`design reviews, drafting, and testing of many types of down-hole tools, including
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`many types of packers and bridge plugs. During my first year with Baker Hughes,
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`Inc. the divisional operating structure was reorganized by merging Baker Service
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`Tools with Baker Oil Tools. The newly merged division retained the name of
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`DECLARATION OF EXPERT KEVIN TRAHAN – Page 4
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`Baker Oil Tools. The new division included all of the production packers and all
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`of the service packers and plugs.1 During this time, I designed and tested both
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`production and service type packers and plugs.
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`7.
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`I was then transferred to Lafayette, Louisiana in order to gain experience
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`with servicing and installing packers and plugs, as well as other types of down-
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`hole tools. Within 3 months of arriving in the Lafayette operation I was installing
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`packers and plugs in the field with no on-site supervision. Eventually, I was
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`transferred back to the engineering department in Houston, Texas where I managed
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`projects and designed and tested various types of liner hanger2, packer and
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`plugging equipment. During this time it was important that I had thorough
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`knowledge of how to research existing patents to ensure that any designs we
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`planned to manufacture were not infringing existing patent claims.
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`8. Within two years, I was promoted to the position of region engineer in
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`New Orleans, Louisiana. In this capacity, I performed the function of technical
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`support for the operations and sales departments. Tasks performed included
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`trouble-shooting problem jobs, supporting salespeople in selling new technology
`
`
`1 A plug is a tool that most commonly utilizes a packer element for isolating an annular gap while providing a core
`that may be solid, or open to provide a flow path, which may incorporate a check valve or other obstruction. Plugs
`are typically utilized in the remediation or stimulation of a well.
`
`2 Liner hangers are tools that are utilized to hang and cement well casings inside of previously set casings. Liner
`hanger systems typically use slip, cone arrangements, and annular sealing arrangements similar to those used in
`service and production packers as well as bridge plug and frac plugs.
`
`DECLARATION OF EXPERT KEVIN TRAHAN – Page 5
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`that they did not understand, and installation of new packer and liner hanger
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`technology used on high profile projects in the Gulf of Mexico.
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`9.
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`In approximately six months, I was promoted to the position of Gulf Coast
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`operations engineering manager. In this capacity, I supervised 9 to 10 region
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`engineers performing the same function that I previously performed as a region
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`engineer. In approximately one year, I was promoted to the position of account
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`sales manager. In this role, I managed a sales force of 7-10 people responsible for
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`all Baker Oil Tools product lines for the largest Baker Oil Tools customer (within
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`the United States) at the time, Shell Offshore.
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`10. In 1998, EVI and Weatherford separately recruited me to help them grow
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`their respective businesses. I went to work for EVI in a global business
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`development role. Within one week, EVI acquired Weatherford and the new
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`company retained the Weatherford name. In the new organization, I took on the
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`business development role for the liner hanger business in the western hemisphere.
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`Within one year, I was promoted to Gulf Coast region manager for all completion
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`product lines, including packers, plugs and liner systems. Within another year, I
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`was promoted to the position of global product line manager for liner systems,
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`where I lead the strategic direction and marketing efforts for the liner systems
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`product line.
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`DECLARATION OF EXPERT KEVIN TRAHAN – Page 6
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`11. My next promotion was to the position of vice president, marketing
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`(Weatherford Completion Systems division) where I lead the group of all global
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`product line managers for Weatherford Completion Systems. One of my
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`responsibilities in this role dealt with patents.
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`12. The next position I accepted included a transfer to Calgary, Alberta,
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`Canada, as the vice president of Canadian operations for Weatherford Completion
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`Systems. In this role, I lead the effort of merging several packer and plug company
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`acquisitions.
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`13. In December 2001, the U.S. and Canada operations were combined from a
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`management standpoint within Weatherford Completion Systems. I was promoted
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`to the position of vice president of North American operations for Weatherford
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`Completion Systems. The promotion included a transfer to Houston, Texas.
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`14. In mid-2003, I left the "grind" of management in large corporations so that
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`I could be a better father and husband, and so that I could chase my dream of being
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`an entrepreneur. Since this time, I have designed numerous down-hole tools
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`including packers, bridge plugs and frac plugs. I am the sole inventor on a packer
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`sealing technology patent that I developed within Braveaux Services. It is one of
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`at least ten U.S. patents for which I am an inventor. Braveaux Services was
`
`acquired by Allamon Tool Company in January 2005, at which time I started
`
`DECLARATION OF EXPERT KEVIN TRAHAN – Page 7
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`Trahan Oilfield Consulting, LLC. Trahan Oilfield Consulting, LLC provides
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`engineering, marketing, and management consulting services to oil and gas service
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`companies, as well as expert services.
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`15. Prior to this proceeding, I have served as an expert, or consultant, in
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`several lawsuits. Some of these lawsuits dealt with patents and intellectual
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`property, while others dealt with alleged tool failures and personal injury or
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`fatality. I have given deposition testimony in at least six of these cases. I believe
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`my education in mechanical engineering along with my direct and extensive
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`experience in the design, management and oversight relating to packer and plug
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`technology with Baker Hughes, Weatherford, and in my own businesses qualify
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`me as an expert for this proceeding.
`
`
`
`II. Background of the '413 Patent
`
`16. The '413 patent details claims on what is referred to as a composite bridge
`
`or frac plug system. "Bridge plug" is a general term utilized within the oil and gas
`
`industry to describe a down-hole tool that upon setting acts as an isolation tool
`
`within the wellbore. A frac plug is a variation of a bridge plug in that it eventually
`
`isolates the wellbore in a single direction. A frac plug is most often applied when a
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`well is "fraced".
`
`DECLARATION OF EXPERT KEVIN TRAHAN – Page 8
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`17. The '413 Patent was filed on July 29, 2011 by W. Lynn Frazier and issued
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`as U.S. Patent No. 8,079,413 on December 20, 2011. The '413 Patent claims
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`priority to U.S. Application Serial No. 12/317,497, filed on December 23, 2008,
`
`now issued as U.S. Patent No. 8,496,052.
`
`
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`III. Claim Construction
`
`18. Unless otherwise stated herein, I have applied the claim construction
`
`provided by the U.S. District Court in Magnum Oil Tools International, Ltd. v.
`
`McClinton, et al, U.S. District Court – Southern District of Texas, Corpus Christi
`
`Division, Markman Order filed as Exhibit MOTI [2001]. Claim terms not
`
`construed by the Court have been given their broadest reasonable interpretation in
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`light of the specification.
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`
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`IV. Analysis of the Proposed Grounds for Rejection
`
`19. The Petition for Inter Partes Review ("Petition") and Declaration of Dr.
`
`Gary R. Wooley ("Wooley Dec.") propose combinations of prior art that, in Dr.
`
`Wooley's opinion, render obvious the claimed invention of the '413 Patent. The
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`Wooley Dec. asserts that combining various prior art references would lead to each
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`and every element of the claims of the '413 Patent because the combination would
`
`DECLARATION OF EXPERT KEVIN TRAHAN – Page 9
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`yield predictable results. I have analyzed each of the prior art references, alone,
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`and in combination with each other, in order to provide the opinions contained
`
`herein.
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`20. It is my understanding that the Patent Trial and Appeal Board ("PTAB")
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`has instituted inter partes review of claims 1-20 of the '413 Patent based on six
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`proposed grounds of obviousness in view of Lehr, Cockrell, Kristiansen, Streich,
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`Slup, and McKeachnie.
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`21. In summary, I disagree with Dr. Wooley's conclusions regarding the
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`validity of the '413 Patent based on the prior art referenced in his declaration dated
`
`April 2, 2013 and conclude that the combination of the asserted prior art references
`
`against the claims of the '413 Patent do not contain each and every element of
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`Claims 1-20 of the '413 Patent. I also conclude that one of ordinary skill in the art
`
`at the time of the invention of the '413 Patent would not find it obvious to combine
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`the prior art references to arrive at the claimed invention. Further, I conclude that
`
`the Wooley Dec.'s proposed combination of references to arrive at the claimed
`
`invention does not yield predictable results.
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`
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`
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`a. GROUND 1: Proposed rejection of claims 1-3, 5-8, 12, and 13 over
`the combination of Lehr, Cockrell, and Kristiansen
`
`22. Based on my analysis of Lehr, Cockrell, and Kristiansen, I have reached
`
`DECLARATION OF EXPERT KEVIN TRAHAN – Page 10
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`the conclusion that a person of ordinary skill in the art at the time of the invention
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`would not have found it obvious to combine the deformable disk of Lehr with the
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`shear threads of Cockrell and the outer threads of Kristiansen to arrive at the claim
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`invention of the '413 Patent.
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`23. First, the deformable disk of Lehr cannot be modified in the same manner
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`as the insert of Alpha. Lehr and Alpha are different in their components,
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`structures, and methods of operation. Specifically, Alpha's insert and Lehr's
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`deformable disk are completely different structures with no similarities. Therefore,
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`the same rationale used to modify Alpha cannot be used to modify Lehr.
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`24. Second, combining the deformable disk of Lehr with the shearable threads
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`of Cockrell would not have been a simple substitution of one known element for
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`another. Implementing the shearable threads of Cockrell into the plug of Lehr
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`would require a complete redesign of the physical structure of the setting device of
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`Lehr, as well as a change in Lehr's principle mode of operation.
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`25. Lehr utilizes a thin disk shaped deformable release device that abuts the
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`lower end of the mandrel and receives a plunger through a central opening that
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`deforms the disk upon setting the plug to release the setting tool.
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`26. Substituting the deformable disk of Lehr with the shearable threads of
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`Cockrell would require substantial redesign of Lehr.
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` Specifically,
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`the
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`DECLARATION OF EXPERT KEVIN TRAHAN – Page 11
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`modifications would require the plunger to be redesigned to be threaded onto the
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`release device. In addition, the mandrel of Lehr would have to be redesigned to
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`accommodate for the release device to be inside the mandrel, as opposed to outside
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`as Lehr discloses.
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`27. Redesigning the release device of Lehr as proposed by the combination of
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`Lehr and Cockrell would change the principle mode of operation since the
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`deformable disk of Lehr depends on the bottom of the mandrel for support to
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`deform upon setting to release the setting tool.
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`28. Modifying the deformable disk of Lehr to be attached or secured to an
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`inner surface of the body would render Lehr unsuitable for its intended purpose.
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`29. For at least these reasons, substituting the deformable disk of Lehr for the
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`shearable threads of Cockrell would not be a simple substitution of one known
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`element for another.
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`30. Third, one of ordinary skill in the art would not have found it obvious to
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`combine Lehr and Cockrell with Kristiansen "because it would be combining prior
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`art elements according to known methods to yield the predictable result of holding
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`the plug in place, simplifying assembly," as Dr. Wooley opined. Wooley Dec. ¶
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`78.
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`DECLARATION OF EXPERT KEVIN TRAHAN – Page 12
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`31. The deformable disk of Lehr (or plug as Dr. Wooley mistakenly called it)
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`is already held in place with retaining pins. One of ordinary skill in the art would
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`not look to Kristiansen for an element to perform a task that is already disclosed in
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`Lehr.
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`32. In addition, the Petition's rationale for combining Alpha and Cockrell is
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`inapplicable to Lehr (contrary to the Petition's assertion) because Lehr's
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`deformable release device does not fall down the wellbore.
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`33. Further, the Petition and the prior art provide no explanation or evidence as
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`to how Lehr would be modified in view of Cockrell and Kristiansen to physically
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`arrive at the claimed invention or how the modifications would physically
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`function, and thus provides no expectation of success.
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`34. In my opinion, the proposed modifications to Lehr in view of Cockrell and
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`Kristiansen are beyond the reasonable skill of one of ordinary skill in the art at the
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`time of the invention. A person with the level of skill in the art of frac and bridge
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`plugs, identified by Dr. Wooley in his declaration, at the time of the invention
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`would not have been able to view Lehr, Cockrell, and Kristiansen and arrive at the
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`claimed invention of the '413 Patent.
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`35. In my opinion, one of ordinary skill in the art at the time of the invention
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`would not have found it obvious to combine Lehr, Cockrell, and Kristiansen to
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`DECLARATION OF EXPERT KEVIN TRAHAN – Page 13
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`arrive at the claimed invention of the claims 1-3, 5-8, 12, and 13 for at least the
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`reasons stated herein.
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`
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`b. GROUND 2: Proposed rejection of claims 4 and 9-11 over the
`combination of Lehr, Cockrell, Kristiansen, and Slup
`
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`36. Based on my analysis of Lehr, Cockrell, Kristiansen, and Slup I have
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`reached the conclusion that a person of ordinary skill in the art at the time of the
`
`invention would not have found it obvious to combine the deformable disk of Lehr
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`with the shear threads of Cockrell and the outer threads of Kristiansen with the ball
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`and ball seat of Slup to arrive at invention in claims 4, 9, 10 and 11 of the '413
`
`Patent.
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`37. Claim 4 of the '413 Patent includes all of the elements of claim 1, with the
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`additional limitation of the body being adapted to receive a ball that restricts fluid
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`flow through the body.
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`38. As described above (see above ¶¶ 23-27) Cockrell cannot be combined
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`with Lehr through simple substitution of elements to create an obvious
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`embodiment containing all of the elements of claim 4, 9, 10 and 11 of the '413
`
`Patent.
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`DECLARATION OF EXPERT KEVIN TRAHAN – Page 14
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`39. For at least these reasons, substituting the deformable disk of Lehr for the
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`shearable threads of Cockrell would not be a simple substitution of one known
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`element for another.
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`40. Because all of the elements of claim 1 of the '413 Patent are not rendered
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`obvious by the combination of any elements of Lehr, Cockrell, and Kristiansen,
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`then applying the ball and ball seat of Slup to any combination of Lehr, Cockrell,
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`and Kristiansen does not render obvious all the elements of claim 4 of the '413
`
`Patent.
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`41. Additionally, substituting the Slup ball and ball seat for the Lehr flapper
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`valve would require significant redesign to the upper end of the Lehr mandrel.
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`Because the flapper valve is continually retained in the mandrel, there is no design
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`feature on upper end of the mandrel for ensuring a ball to be guided into place in
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`the mandrel. Therefore, if the Lehr body were to be adapted for use with a ball
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`dropped from surface, major redesign of the upper end of the mandrel would be
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`required to ensure that the ball would not simply lay on the low side of the
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`wellbore, but instead would be guided toward the centerline of the body while in
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`the stream of fluid flow.
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`42. Further, there is no expectation of success in substituting the Slup ball and
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`ball seat for the Lehr flapper valve.
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`DECLARATION OF EXPERT KEVIN TRAHAN – Page 15
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`43. In my opinion, one of ordinary skill in the art at the time of the invention
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`would not have found it obvious to combine Lehr, Cockrell, Kristiansen, and Slup
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`to arrive at the claimed invention of the claim 4 for at least the reasons stated
`
`herein.
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`44. Claims 9, 10 and 11 of the '413 Patent include all of the elements of claim
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`7, with additional limitations regarding the material utilized for the insert (claim 9)
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`and the body (claims 10 and 11).
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`45. Claim 7, and therefore claims 9,10 and 11 requires "an insert screwed into
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`an inner surface of the body, proximate the second end of the body, insert adapted
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`to receive a setting tool that enters the body through the first end thereof, wherein:
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`the insert comprises one or more shearable threads… the one or more shearable
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`threads are adapted to engage the setting tool…". Nowhere in Lehr, Cockrell,
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`Kristiansen or Slup does it exist, describe, or otherwise disclose an insert with
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`shearable threads for engagement to a setting tool.
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`46. Cockrell's shearable threads do not engage a setting tool because no setting
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`tool is used in Cockrell. The plug in Cockrell is set by use of a hydraulic piston
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`which is an integral part of the plug. The shearable threads have nothing to do
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`with setting the plug.
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`DECLARATION OF EXPERT KEVIN TRAHAN – Page 16
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`47. While it is true that shearable devices made from brass were known in the
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`art prior to the date of the invention disclosed in the '413 patent, it is additionally
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`true that the combination of all of the elements of claim 7 in concert with the insert
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`being made of brass did not exist.
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`48. Any combination of elements of Lehr, Cockrell, Kristiansen, and Slup
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`could not predict claim 9 of the '413 patent because none of the prior art references
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`contain an insert with shearable threads for engagement with a setting tool.
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`49. While it is true that plug bodies made from one or more composite
`
`materials were known in the art prior to the date of the invention disclosed in the
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`'413 patent, it is additionally true that the combination of all of the elements of
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`claim 7 in concert with the body made from composite materials did not exist.
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`50. Any combination of elements of Lehr, Cockrell, Kristiansen, and Slup
`
`could not predict claim 10 of the '413 patent because none of the prior art
`
`references contain an insert with shearable threads for engagement with a setting
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`tool.
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`51. In addition, the Petition and Dr. Wooley provide no support or evidence
`
`for any expectation of success in utilizing an insert located in the bottom of a
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`composite plug.
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`DECLARATION OF EXPERT KEVIN TRAHAN – Page 17
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`52. Slup discloses a top set composite plug, not one with an insert located
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`proximate the second end or bottom. This difference is significant because the
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`force applied on the composite components is greater when setting a plug using a
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`top set method as opposed to having the setting device or insert located proximate
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`the bottom. This allows for the setting tool to enter the body through the top and
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`pull on the insert located at the bottom to balance the axial forces applied during
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`the setting process.
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`53. While it is true that plug bodies made from aluminum were known in the
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`art prior to the date of the invention disclosed in the '413 patent, it is additionally
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`true that the combination of all of the elements of claim 7 in concert with the body
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`made from aluminum did not exist.
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`54. Any combination of elements of Lehr, Cockrell, Kristiansen, and Slup
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`could not predict claim 11 of the '413 patent because none of the prior art
`
`references contain an insert with shearable threads for engagement with a setting
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`tool.
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`55. In my opinion, one of ordinary skill in the art at the time of the invention
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`would not have found it obvious to combine Lehr, Cockrell, Kristiansen, and Slup
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`to arrive at the claimed invention of the claim 9, 10, or 11 for at least the reasons
`
`stated herein.
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`DECLARATION OF EXPERT KEVIN TRAHAN – Page 18
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`c. GROUND 3: Proposed rejection of claims 14 and 16 over the
`combination of Lehr, Cockrell, Kristiansen, and Streich
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`56. Based on my analysis of Lehr, Cockrell, Kristiansen, and Streich I have
`
`reached the conclusion that a person of ordinary skill in the art at the time of the
`
`invention would not have found it obvious to combine the deformable disk of Lehr
`
`with the shear threads of Cockrell and the outer threads of Kristiansen, with the
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`ball and valve holder arrangement of Streich to arrive at the claimed invention of
`
`the '413 Patent.
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`57. Claims 14 and 16 include all the limitations of claim 7 in addition to the
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`limitation of the passageway of the insert being adapted to receive an impediment
`
`for restricting flow (claims 14 and 16) as well as the limitation where the
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`impediment is a ball (claim 16).
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`58. None of disclosures or embodiments of Lehr, Cockrell, Kristiansen or
`
`Streich contain an insert with shearable threads for engaging the setting tool.
`
`Therefore, the combination of any elements of these prior art references cannot
`
`predict claims 14 and 16 of the '413 Patent.
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`59. Combining Streich's ball and valve holder with Lehr's plug would render
`
`Lehr unusable. The ball and valve holder would block the internal passageway
`
`through the Lehr body, therefore making it impossible for the Lehr plunger to
`
`DECLARATION OF EXPERT KEVIN TRAHAN – Page 19
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`access the Lehr deformable disk which abuts the lower end of the body. It is not
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`readily apparent that any redesign, even a major redesign, could render the
`
`combination usable.
`
`60. Streich's valve holder does not meet the limitations of the claimed insert.
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`At least Streich's valve holder does not: a) have shearable threads on its inner
`
`surface, b) have outer threads, c) engage a setting tool. Additionally, Lehr,
`
`Cockrell, Kristiansen and Streich do not provide disclosure of an insert with
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`shearable threads for engagement with a setting tool.
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`61. The Streich ball and valve holder cannot be added to the shearable
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`threaded component of Cockrell because the Cockrell body extends through the
`
`shearable threaded component and there is not available surface in the threaded
`
`component for accepting the ball and/or valve holder.
`
`62. The Streich ball and valve holder may be able to be added to Kristiansen's
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`embodiment which contains a passageway through an insert near the bottom of the
`
`plug body, however this embodiment requires a separate insert at the top of the
`
`body for engagement with a setting tool and that insert does not contain shearable
`
`threads and is not adapted for an impediment.
`
`63. In my opinion, one of ordinary skill in the art at the time of the invention
`
`would not have found it obvious, or possible, to combine Lehr, Cockrell,
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`DECLARATION OF EXPERT KEVIN TRAHAN – Page 20
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`Kristiansen and Streich to arrive at the claimed invention of the claims 14, and 16
`
`for at least the reasons stated herein.
`
`
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`
`
`d. GROUND 4: Proposed rejection of claim 15 over the combination
`of Lehr, Cockrell, Kristiansen, Streich, and McKeachnie
`
`64. Based on my analysis of Lehr, Cockrell, Kristiansen, Streich and
`
`McKeachnie, I have reached the conclusion that a person of ordinary skill in the art
`
`at the time of the invention would not have found it obvious to combine the
`
`deformable disk of Lehr with the shear threads of Cockrell and the outer threads of
`
`Kristiansen with the ball and valve holder of Streich with the decomposable ball of
`
`McKeachnie to arrive at the claimed invention of the '413 Patent.
`
`65. As discussed earlier in this declaration, it would not be possible, much less
`
`obvious, to one of ordinary skill in the art, to combine various elements of Lehr,
`
`Cockrell, Kristiansen, and Streich to provide a plug containing an insert near the
`
`lower end of the body where the insert has shearable threads on its inner surface
`
`for engaging a setting tool and the insert is adapted for receiving an impediment
`
`for restricting flow through the body (see above ¶¶ 52-59 above).
`
`66. Adding, or substituting, elements of McKeachnie to any combination of
`
`elements from Lehr, Cockrell, Kristianen, and Streich does not provide a plug with
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`DECLARATION OF EXPERT KEVIN TRAHAN – Page 21
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`all of the elements contained in claim 15 (which is inclusive on all of the elements
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`of claim 14, which is inclusive on all of the elements of claim 7).
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`67. McKeachnie discloses use of a decomposable ball to temporarily restrict
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`flow through its plug's body. McKeachnie's body is adapted to receive the
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`decomposable impediment. McKeachnie contains no insert. The setting tool
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`engages the upper end of the body and therefore there is no reason to have an
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`insert.
`
`68. McKeachnie discloses use of a decomposable impediment for use in a
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`plug, however this disclosure does not contain provision for all of the elements of
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`claim 7 (14 and 15) regarding an insert with shearable threads for engagement to a
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`setting tool.
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`69. In my opinion, one of ordinary skill in the art at the time of the invention
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`would not have found it obvious to combine Lehr, Cockrell, Kristiansen, Streich
`
`and McKeachnie to arrive at the claimed invention of claim 15 for at least the
`
`reasons stated herein.
`
`
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`
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`e. GROUND 5: Proposed rejection of claims 17-19 over the
`combinbation of Lehr, Cockrell, Kristiansen, Slup, and Streich
`
`70. Based on my analysis of Lehr, Cockrell, Kristiansen, Slup and Streich, I
`
`have reached the conclusion that a person of ordinary skill in the art at the time of
`
`DECLARATION OF EXPERT KEVIN TRAHAN – Page 22
`
`
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`
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`the invention would not have found it obvious to combine the deformable disk of
`
`Lehr with the shear threads of Cockrell and the outer threads of Kristiansen with
`
`the ball of Slup with the valve holder of Streich to arrive at the claimed invention
`
`of the '413 Patent.
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`71. As described above (see above ¶¶ 23-27) the shearable threads of Cockrell
`
`is not a simple substitution for the deformable disk of Lehr.
`
`72. The deformable disk of Lehr (or plug as Dr. Wooley mistakenly called it)
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`is already held in place with retaining pins. One of ordinary skill in the art would
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`not look to Kristiansen for an element to perform a task that is already disclosed in
`
`Lehr.
`
`73. Slup discloses a ball residing in its body. If the embodiment disclosed for
`
`this type of arrangement were employed to Lehr, then Lehr would be inoperable.
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`The ball located inside the upper end of the body blocks any path for the setting
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`tool (plunger) to connect to the deformable disk, or insert in the lower end of the
`
`body. Therefore, no one of ordinary skill in the art would, or could apply the Slup
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`disclosure to the Lehr plug.
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`74. As described above (see above ¶ 55) Lehr combined with Streich results in
`
`an inoperable plug.
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`DECLARATION OF EXPERT KEVIN TRAHAN – Page 23
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`75. In my opinion, one of ordinary skill in the art at the time of the invention
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`would not have found it obvious, or even possible, to combine Lehr, Cockrell,
`
`Kristiansen, Slup, and Streich to arrive at the claimed invention of the claims 17-19
`
`for at least the reasons stated herein.
`
`
`
`
`
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`f. GROUND 6: Proposed rejection of claim 20 over the combination
`of Lehr, Cockrell, Kristiansen, Slup, Streich, and McKeachnie
`
`76. Based on my analysis of Lehr, Cockrell, Kristiansen, Slup, Streich, and
`
`McKeachnie, I have reached the conclusion that a person of ordinary skill in the art
`
`at the time of the invention would not have found it obvious to combine the
`
`deformable disk of Lehr with the shear threads of Cockrell and the outer threads of
`
`Kristiansen with the ball of Slup with the valve holder of Streich with the
`
`decomposable ball of McKeachnie to arrive at the invention of claim 20 of the '413
`
`Patent.
`
`77. Claim 20 of the '413 Patent includes all of the elements, or limitations, of
`
`claim 17.
`
`78. As described above (see above ¶¶ 23-27) the shearable threads of Cockrell
`
`is not a simple substitution for the deformable disk of Lehr.
`
`DECLARATION OF EXPERT KEVIN TRAHAN – Page 24
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`79. The deformable disk of Lehr (or plug as Dr. Wooley mistakenly called it)
`
`is already held in place with retaining pins. One of ordinary skill in the art would
`
`not look to Kristiansen for an element to perform a task that is already disclosed in
`
`Lehr.
`
`80. Slup discloses a ball residing in its body. If the embodiment disclosed for
`
`this type o
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