`
`Expert Reply Declaration for the OSES Motion to Amend
`in IPR2014-00216 for U.S. Patent No. 6,179,053 by Dallas for
`Lockdown Mechanism for Well Tools Requiring Fixed-Point Packoff
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`Prepared by:
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`Gary R. Wooley
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`Wooley & Associates, Inc.
`
`3100 S. Gessner, Suite 325
`Houston, Texas 77063
`Phone 713.781.8974
`Email gary@wooley.com
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`
`
`
`Prepared for:
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`Mr. C. Erik Hawes
`
`Morgan, Lewis & Bockius LLP
`
`1000 Louisiana St., Suite 4000
`Houston, Texas 77002-5006
`Phone 713.890.5165
`
`
`12 January 2015
`
`
`Oil States Energy Services, LLC, Ex. 2034
`Greene’s Energy Group, LLC v. Oil States Energy Services, LLC, IPR2014-00216
`Wooley & Associates, Inc.
`
`
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`Table of Contents
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`Page
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`I.
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`2.
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`3.
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`The Proposed Amended Claims Would Not Have Been Obvious in
`View of the Dallas ’118 Application .............................................................. 1
`1.
`The Dallas ’118 Application Does Not Disclose a Separate
`Setting Tool that Is “Arranged to Insert a Bottom End of the
`Mandrel through the Wellhead, and Is Removable from the
`Other Portions of the Apparatus.” ........................................................ 1
`One of Ordinary Skill in the Art Would Not Have Found it
`Obvious to Modify the Dallas ’118 Application to Include a
`Separate Setting Tool that Is “Arranged to Insert a Bottom End
`of the Mandrel through the Wellhead, and Is Removable from
`the Other Portions of the Apparatus.” .................................................. 8
`It Would Not Have Been Obvious to One of Ordinary Skill in
`the Art to Abandon the Basic Design of the ’118 Application by
`Eliminating the Hydraulic Cylinder and Substituting a
`Mechanical Lockdown Mechanism ................................................... 10
`II. Objective Evidence of Nonobviousness ....................................................... 18
`1.
`Commercial Success........................................................................... 18
`2.
`Teaching Away ................................................................................... 22
`III. Basic Facts and Conclusions ........................................................................ 22
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`i.
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`Expert Reply Declaration for the OSES Motion to Amend in IPR2014-00216
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`I.
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`The Proposed Amended Claims Would Not Have Been Obvious in View
`of the Dallas ’118 Application.
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`1.
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`1.
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`The Dallas ’118 Application Does Not Disclose a Separate Setting
`Tool that Is “Arranged to Insert a Bottom End of the Mandrel
`through the Wellhead, and Is Removable from the Other Portions
`of the Apparatus.”
`Petitioner’s expert, Mr. Perkin, argues in his declaration that “the term
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`‘setting tool’ does not have a precise meaning in the oil and gas field.” Perkin
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`Declaration (Ex. 1014) at ¶ 44. Although that might be true in a vacuum, the
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`language of proposed amended claim 1 clearly sets out the defining characteristics
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`of the “setting tool” in this particular context: (1) it is “arranged to insert a bottom
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`end of the mandrel through the wellhead”; and (2) it is “separate from” the first and
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`second lockdown mechanisms and thus “removable from the other portions of the
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`apparatus.”
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`2. Mr. Perkin also argues that “the term ‘setting tool’ could mean any
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`device that is used to align the mandrel with the wellhead so that the mandrel can
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`be inserted without interference.” Perkin Declaration at ¶ 44. He later uses this
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`assertion as his support for arguing the alleged inherent presence in the ’118
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`Application of some device that would fit this definition of “setting tool.” Id. at
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`¶¶ 52, 54.
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`3.
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` This assertion is incorrect in at least two important ways. First, there
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`is nothing in the ’053 Patent that discusses the setting tool being used to “align the
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`Expert Reply Declaration for the OSES Motion to Amend in IPR2014-00216
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`mandrel with the wellhead.” In his deposition, Mr. Perkin could identify no
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`portion of the ’053 Patent that describes the setting tool being used to align the
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`mandrel with the wellhead. The only portion of the specification he identified
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`actually discusses the setting tool itself being aligned with the wellhead, as
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`opposed to the setting tool being used to align the mandrel. ’053 Patent, col. 9,
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`lines 2-6; Perkin Depo. at 24:18-25:23; 40:5-41:6. Indeed, one of ordinary skill in
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`the art would know that a setting tool is not used for that purpose. Although
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`something must be done to align the mandrel with the central bore of the wellhead,
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`that is not a function performed by the setting tool. Moreover, regardless of what
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`is in the specification, the claim language makes clear which features the setting
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`tool is required to have, and it says nothing about the capability of aligning the
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`mandrel with the wellhead.
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`4.
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`Similarly, Mr. Perkin argues (twice) that the “stay rods” of the setting
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`tool shown in one embodiment of the ’053 invention “help guide the mandrel into
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`the wellhead.” Perkin Declaration at ¶¶ 46 and 58 (citing ’053 Patent, col. 8, line
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`43-col. 9, line 20 and col. 9, lines 57-62). However, the cited portions of the ’053
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`Patent say nothing at all about the stay rods being used to “guide” the mandrel into
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`the wellhead.
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`5.
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`Second, the function of the setting tool is not to ensure that “the
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`mandrel can be inserted without interference,” as argued by Mr. Perkin. Perkin
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`Expert Reply Declaration for the OSES Motion to Amend in IPR2014-00216
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`Declaration at ¶ 44. As clearly required by the language of the proposed amended
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`claim, it is the setting tool itself that performs the act of “insert[ing] a bottom end
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`of the mandrel through the wellhead,” as opposed to merely facilitating that
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`insertion by some other unspecified component.
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`6.
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`The most fundamental problem with Mr. Perkin’s discussion of a
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`setting tool in ¶¶ 42-59 of his declaration is that his position is an effort to rewrite
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`the actual language of the claims. Both proposed amended claims require that the
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`setting tool be “arranged to insert a bottom end of the mandrel through the
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`wellhead.” After reciting this language in ¶ 41 of his declaration, Mr. Perkin
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`spends the next 11 pages pretending that the claim uses the word “into,” rather than
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`“through.” At least nine times, Mr. Perkin refers to a setting tool as inserting a
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`mandrel “into” a wellhead, but never once makes an effort to apply the actual
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`claim language requiring that the setting tool insert the mandrel “through” the
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`wellhead.
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`7.
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`The distinction between these two concepts is demonstrated by
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`contrasting a portion of the ’053 Patent specification with Mr. Perkin’s
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`characterization of that same portion of the patent. In ¶ 45 of his declaration,
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`Mr. Perkin asserts that the setting tool shown in Figure 7 of the ’053 Patent inserts
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`the mandrel “into the well,” after which the setting tool is removed. In support, he
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`cites to column 8, lines 5-34 of the patent specification. In contrast, however, that
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`Expert Reply Declaration for the OSES Motion to Amend in IPR2014-00216
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`portion of the ’053 Patent (which is actually a discussion of Figure 6) makes very
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`clear that there is a difference between inserting the mandrel “into” the wellhead
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`versus “through” the wellhead. At column 8, lines 8-10, the specification does
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`mention the mandrel being “inserted into the wellhead” and the need to mount the
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`base plate before that initial step occurs. The next sentence, however, explains that
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`the mandrel is then “stroked down under a force P1 exerted by a setting tool ….”
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`(Emphasis added.) Only after being used to stroke the mandrel down through the
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`wellhead is the setting tool removed. ’053 Patent, col. 8, lines 19-21. Other
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`portions of the specification confirm that a “setting tool” is a device which applies
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`force to “stroke the mandrel … down through the wellhead.” Id., col. 9, lines 18-
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`20 (emphasis added). Mr. Perkin’s discussion of the ’118 Application focuses
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`entirely on hypothetical devices (such as a crane) that could theoretically be used
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`to initially insert the mandrel of that tool “into” the top portion of the wellhead, but
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`could not actually apply force to insert the mandrel down “through” the wellhead.
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`Accordingly, his opinion on this issue is inconsistent with the actual language of
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`the proposed amended claim.
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`8. With respect to my deposition testimony which Mr. Perkin quotes on
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`pages 28 and 30 of his declaration, it is certainly true that the mandrel of the ’118
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`tool could extend some small distance below the bottom of the cylinder, as
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`Mr. Perkin argues. Contrary to an argument made by Petitioner in its opposition
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`Expert Reply Declaration for the OSES Motion to Amend in IPR2014-00216
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`brief, I did not testify that “the mandrel extension 58 and packoff assembly 68 of
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`Figs. 3 and 4 of Dallas ’118 must always extend below the base 22 of the BOP
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`protector 10.” Petitioner Opp. at 5 (emphasis added). I testified on page 56 of my
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`deposition that such a configuration might be “possible,” based on what was shown
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`in Figure 3. Figure 3 is simply one possible embodiment of the tool described in
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`the ’118 Application, and it is equally possible that the tool could be used without
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`any mandrel extension and with a seal assembly having the same diameter as the
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`main portion of the mandrel. In this situation, no portion of the mandrel would
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`extend below the base of the tool, and thus no part of the mandrel would be
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`inserted “into” the top portion of the wellhead assembly until the hydraulic
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`cylinder was used to stroke the mandrel down through the wellhead.
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`9.
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`Consistent with my opinions expressed above, Mr. Perkin testified
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`that the initial position of the bottom end of the mandrel “depends upon how it’s
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`designed, but you can have the mandrel – the end of the mandrel can be – it can be
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`inside, it can be even, it can be extended down ….” Perkin Depo. at 31:17-33:11
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`(emphasis added). Thus, although he stated in paragraph 48 of his declaration that
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`“the mandrel extension 58 and packoff assembly 68 are required to extend below
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`the base 22” (emphasis added), he admitted in his deposition that this statement
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`was limited to the embodiment shown in Figure 3 and also that the tool of the ’118
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`Expert Reply Declaration for the OSES Motion to Amend in IPR2014-00216
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`Application could be initially installed with the end of the mandrel “inside” or
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`“even” with the base of the hydraulic cylinder.
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`10. Moreover, even if the mandrel extended below the bottom of the
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`cylinder, it could extend only by some small distance because the tool is installed
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`with the blowout preventer 50 “still closed.” ’118 Application, p. 12, line 25.
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`Accordingly, it would be impossible for the mandrel to extend far enough below
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`the cylinder to go through the closed BOP at the time of initial installation.
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`11. After that initial installation of the ’118 tool, it is the hydraulic
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`cylinder (identified by Petitioner and Mr. Perkin as the “second lockdown
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`mechanism”) that moves the mandrel “down through the BOP 50” and the rest of
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`the wellhead. ’118 Application, p. 12, lines 29-32 (emphasis added). Indeed, the
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`only time Mr. Perkin describes the mandrel of the ’118 Application being inserted
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`“through the wellhead,” he is referring to a step performed by pressurized fluid
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`within the hydraulic cylinder. Perkin Decl. at ¶ 39 (citing to ’118 Application,
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`p. 15, lines 17-20). Furthermore, the ’053 Patent, in its discussion of the device
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`shown in the ’118 Application, makes very clear that the hydraulic cylinder is the
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`“setting tool” that is used to stroke the mandrel down through the BOP and the rest
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`of the wellhead. ’053 Patent, col. 2, lines 46-65. Mr. Perkin’s suggestion that an
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`undisclosed crane could be considered the “setting tool” of the ’118 Application
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`ignores (a) the language of the proposed amended claims; (b) the description of
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`Expert Reply Declaration for the OSES Motion to Amend in IPR2014-00216
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`the ’118 Application itself; and (c) the explanation of this device in the ’053
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`specification.
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`12. Thus, as I testified on page 56 of my prior deposition, even if the
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`bottom end of the mandrel in the ’118 Application extended some small distance
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`below the bottom of the cylinder and a crane was used to initially place the tool in
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`position, that would simply result in the mandrel being inserted “into” the wellhead
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`“in the first place.” A crane obviously could not insert the mandrel “through” the
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`wellhead, as required by the claim language and described in the ’053
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`specification.
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`13. Finally, I take issue with the argument by Petitioner that I testified
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`that a device used to insert the mandrel of the ’118 tool “into” the wellhead, such
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`as a crane truck, “can be called a ‘setting tool.’” Petitioner Opp. at 5. I simply
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`stated on page 56 of my deposition transcript that anyone is free to call anything
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`whatever they choose. I certainly did not state or suggest that I, or a person of
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`ordinary skill in the art, would ever actually describe a crane truck as a “setting
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`tool,” and I have never heard anyone in the oilfield do so. In reality, I do not
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`believe anyone who works in this field would use such terminology, even setting
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`aside the particular language of the proposed amended patent claims.
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`2. One of Ordinary Skill in the Art Would Not Have Found it
`Obvious to Modify the Dallas ’118 Application to Include a
`Separate Setting Tool that Is “Arranged to Insert a Bottom End
`of the Mandrel through the Wellhead, and Is Removable from the
`Other Portions of the Apparatus.”
`In ¶ 59 of his declaration, Mr. Perkin states that “it would have been
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`14.
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`obvious for a person of ordinary skill in the art to use a specialized, separate setting
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`tool to insert the Dallas ’118 mandrel into the wellhead.” This argument is
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`fundamentally incorrect for several reasons.
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`15. First, as discussed above, Mr. Perkin continues to refer to a setting
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`tool as inserting the mandrel “into” the wellhead, versus “through” the wellhead, as
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`actually required by the language of the proposed amended claims.
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`16. Second, it would have been physically impossible to attach a separate
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`setting tool like that shown in U.S. Patent No. 4,867,243 to the mandrel shown in
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`the ’118 Application. The top end 30 of the mandrel 28 in the ’118 Application is
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`enclosed within annular cavity 26, which is formed by welding top flange 24 to the
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`inner and outer sidewalls which form the hydraulic cylinder. ’118 Application at
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`p. 7, lines 12-18. It is critical to the design of the tool that upper chamber 36 of
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`annular cavity 26 be fluid-tight, as pressurized fluid injected into that chamber is
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`used to “stroke the mandrel downwardly.” ’118 Application, p. 8, lines 14-18. In
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`order to attach a separate removable setting tool to the top end 30 of mandrel 28,
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`the annular cavity 26 would have to be breached, e.g., by creating an opening in
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`top flange 24. This would be antithetical to the basic design of the ’118
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`Application, which relies on fluid pressure within annular cavity 26 to move the
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`mandrel down through the wellhead. As I have explained elsewhere in this
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`proceeding, one of ordinary skill in the art seeking to build a functional tool based
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`on the ’118 Application would have faced numerous (likely insurmountable)
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`challenges in doing so; the last thing an engineer would do in that position would
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`be to add another weak point in the design by creating a hole in the chamber that
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`was supposed to contain the hydraulic pressure needed to make the tool function.
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`This is particularly true given the fact that (as discussed below) the ’118
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`Application already included a component that functioned as a setting tool. Mr.
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`Perkin has failed to identify any reason why one of skill in the art would have
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`made a modification to the ’118 Application that was not only risky but also
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`unnecessary.
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`17.
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` Third, there is no reason why one of ordinary skill would have found
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`it obvious to add a separate setting tool because the tool described in the ’118
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`Application already included a component that performed the identical function.
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`As discussed above, the ’118 Application makes clear that the mandrel is inserted
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`“through the wellhead” by the hydraulic cylinder that is the central component of
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`the disclosed tool, and Mr. Perkin acknowledges this fact. Perkin Decl. at ¶ 39
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`(citing ’118 Application, p. 15, lines 17-20). As also discussed above, the ’053
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`Patent explains that the “hydraulic setting tool” disclosed in the ’118 Application is
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`the component “used for inserting the mandrel through the blowout preventer …
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`[and] through different wellheads.” ’053 Patent, col. 2, lines 54-58. There would
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`be no reason for one of ordinary skill to even consider adding a separate setting
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`tool (let alone such a tool meeting all the requirements of the proposed amended
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`claim), given that the tool of the ’118 Application already included a setting tool.
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`Again, Mr. Perkin has not explained why one of skill in the art would include a
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`redundant setting tool, particularly when doing so would compromise the integrity
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`of the hydraulic cylinder that was central to the operation of the ’118 design.
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`3.
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`18.
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`It Would Not Have Been Obvious to One of Ordinary Skill in the
`Art to Abandon the Basic Design of the ’118 Application by
`Eliminating
`the Hydraulic Cylinder and Substituting a
`Mechanical Lockdown Mechanism.
`In ¶ 65 of his declaration, Mr. Perkin asserts that “[a] person of
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`ordinary skill would have considered it obvious during the 1998-99 timeframe to
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`use a self-locking screw jack, as taught by McLeod, instead of the hydraulic
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`cylinder of Dallas ’118 in order to avoid the drawbacks of hydraulic cylinders.”
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`There are at least two fundamental problems with this argument.
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`19. First, McLeod does not disclose “self-locking screw
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`jacks.”
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`Mr. Perkin’s assertion is presumably a reference to the following sentence from
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`McLeod: “Moreover, screw jacks are self-locking if the motive force used to
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`operate them ceases to function and such loss of motor power can be overcome
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`through the use of manual means such as hand crank.” McLeod, col. 1, lines 36-
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`40. In general, the class of structures referred to as screw jacks are considered to
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`be self-locking, in the sense that they will tend not to move if the rotational force
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`on the screw is removed. This is the basic concept expressed in the above-quoted
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`sentence from column 1 of McLeod.
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`20. Of course, there are limits to the “self-locking” nature of screw jacks.
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`Thus, a particular screw jack should be rated for the load it is able to withstand.
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`For example, cars are often lifted using 1-ton or 1.5-ton screw jacks. If a screw
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`jack is exposed to forces beyond that rating, it is subject to failure. Again,
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`Mr. Perkin acknowledged these basic facts during his deposition. Perkin Depo.
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`at 37:3-10. Thus, even according to Mr. Perkin’s theory, it would not simply be
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`any screw jack that would allegedly lock the mandrel tube in place. Instead, before
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`one could try to make such a device work, he or she would need to know a number
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`of variables, including the well pressure, the maximum fracking pressure that
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`would be used for a particular job, and the cross-sectional area of the mandrel tube
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`that would be exposed to that pressure. The McLeod reference itself includes not
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`even a passing mention of any such factors, nor any actual suggestion that the
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`screw jacks serve the function of locking the mandrel tube in place. The reason for
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`this absence of disclosure is quite clear – McLeod does disclose elsewhere the
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`components that actually lock the mandrel tube in place, and it is not the screw
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`jack assemblies. Therefore, McLeod does not disclose using the screw jack to lock
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`the mandrel tube in place and in fact, as discussed below, McLeod discloses a
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`threaded screw collar and lock ring that perform the function of locking the
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`mandrel tube in place.
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`21. McLeod discloses two embodiments (Fig. 3 and Fig. 4) and explains
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`that, “[i]n either embodiment, once the tube 114 has been lowered to its desired
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`position a lock ring 60 threadably engages a screw collar 62 to lock the tree saver
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`mandrel tube 114 in place.” McLeod, col. 3, lines 11-14. This very clear
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`disclosure about the components that lock the mandrel tube in place stands in stark
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`contrast to the passing mention of the fact that screw jacks in general are
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`considered to be “self-locking.”
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`22. The inconsistency between Mr. Perkin’s position and the McLeod
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`patent is also demonstrated by claim 1, which is the only independent claim in
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`McLeod. That claim requires “means on the upper and lower beam members for
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`releasably locking the mandrel tube in place.” McLeod, col. 4, lines 14-15. This is
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`clearly a reference to the lock ring 60 (located on the upper beam member) and
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`screw collar 62 (on the lower beam member). The screw jack assemblies
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`mentioned in paragraph 65 of Mr. Perkins’ declaration are not located on lower
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`beam member (18) and thus could not satisfy the language of McLeod’s claim 1.
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`This reference leaves no doubt that it is the lock ring 60 and screw collar 62 – and
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`not the screw jack assemblies identified by Mr. Perkin – that serve to “lock the tree
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`saver mandrel tube 114 in place.” McLeod, col. 3, lines 11-14.
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`23. Thus, contrary to Mr. Perkin’s assertion, McLeod certainly does not
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`“teach that a self-locking screw jack can be used in place of the hydraulic cylinder
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`of Bullen.”
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`24.
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`In its opposition to the motion to amend (page 8), GEG argues that I
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`“agreed that the screws of McLeod can be used to hold a mandrel in position.”
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`This is a misleading misrepresentation of my testimony. What I actually said
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`during my deposition (on page 46 of the transcript) was that McLeod uses “a
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`screw” to hold the mandrel in position, and indeed it does – the lock ring 60 and
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`screw collar 62. I certainly did not testify that “the screws” – by which GEG is
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`referring to the screw jacks of the McLeod insertion system – could ever be used to
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`hold the mandrel in position. In fact, on pages 41-46 of my deposition, I believe I
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`was quite clear that the screw jacks disclosed in McLeod are simply an “insertion
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`system” – i.e., a setting tool – as opposed to something that could or would hold
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`the mandrel in position.
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`25. The second problem with Mr. Perkin’s assertion is that it is based on
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`the purported desire of a person of ordinary skill “to avoid the drawbacks of
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`hydraulic cylinders.” The entire point of the ’118 Application was to use a
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`hydraulic cylinder to both insert the mandrel through the wellhead and (at least
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`theoretically) hold the mandrel in position during fracturing operations. As I
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`discussed in my prior declaration, the substitution suggested by Mr. Perkin would
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`have required a fundamental redesign of the tool in the ’118 Application to even
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`approach the invention of the ’053 Patent. To substitute a mechanical lockdown
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`mechanism in order to “avoid the drawbacks of hydraulic cylinders,” one of skill in
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`the art would have been required to completely jettison the basic structure of the
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`tool described in the ’118 Application, in favor of a new design that operated on an
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`entirely different principle (mechanical locking versus hydraulic fluid pressure)
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`and had more moving parts (two distinct mechanical lockdown mechanisms, one
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`of which included a range of adjustment, and a separate setting tool). There is
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`simply no apparent reason why one of skill in the art would have read the ’118
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`Application and spontaneously decided to proceed in the opposite direction. This
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`is particularly true given the relatively low level of ordinary skill in the art, as also
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`discussed in my prior declaration. Mr. Perkin has made no effort to respond to my
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`opinions concerning any of these issues.
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`26.
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`In ¶ 67 of his declaration, Mr. Perkin argues that the Bullen patent
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`(U.S. Patent No. 4,241,786) teaches that “mechanical locking mechanisms can be
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`used to reinforce hydraulic cylinders.” Bullen does not say anything about a
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`mechanical device actually being used to hold the mandrel in position. What
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`Bullen does disclose (at col. 4, lines 26-37) is that certain mechanical structures
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`such as “strengthening rods” can be used to enhance the performance of the
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`hydraulic cylinders by connecting member 41 with members 26 and 27. Such a
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`connection would do nothing to lock the mandrel in position. Thus, Bullen not
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`only fails to disclose the use of mechanical locking mechanisms but also teaches
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`that a hydraulic cylinder (with or without “strengthening”) could be sufficient to
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`hold the mandrel in the operative position. That is precisely the same premise
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`underlying the ’118 Application. As a result, Bullen certainly would not have led
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`one of ordinary skill in the art to depart from the basic design of the ’118
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`Application by using a lockdown mechanism that was mechanical, rather than
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`hydraulic. To the contrary, if one of skill in the art happened to read the Bullen
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`patent while considering the ’118 Application, he or she would have found
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`confirmation of the idea that hydraulic cylinders could be sufficient to hold the
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`mandrel of an isolation tool in position.
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`27.
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`In ¶ 71 of his declaration, Mr. Perkin asserts that “a person of ordinary
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`skill would know to simply insert the screw jacks of McLeod, described above,
`
`into the piston of Dallas ’118.” The threshold problem with this argument is that,
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`as I have discussed above, the McLeod patent simply does not disclose using screw
`
`jacks to lock the mandrel of an isolation tool in position. Furthermore, the
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`suggestion that “the screw jacks of McLeod” could be inserted “into the piston of
`
`Dallas ’118” would never have been seen as realistic by one of ordinary skill in the
`
`
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`15
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`Expert Reply Declaration for the OSES Motion to Amend in IPR2014-00216
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`art. Even if one could design a screw jack assembly that was capable of actually
`
`holding the mandrel in position during fracturing operations (which is never even
`
`hinted at by McLeod or any other reference of which I am aware), such a
`
`component would have been very large, particularly when combined with the
`
`motor that would be required to operate such a device. Mr. Perkin makes no effort
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`to explain how the piston of the ’118 could have accommodated such a device
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`(even in the highly unlikely event that one of skill in the art were to ever consider
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`such a strange and previously unknown configuration). In reality, I do not believe
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`that such a combination would have been practical or even physically possible,
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`particularly given that the height and width of the hydraulic cylinder in the ’118
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`Application was already an issue, as I have discussed elsewhere. Moreover, as I
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`have already explained, there would have been no reason for one of skill in the art
`
`to even consider such a modification, given the teaching of the ’118 Application
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`and other references such as Bullen.
`
`28.
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`In ¶ 72 of his declaration, Mr. Perkin argues in passing that “it would
`
`have been obvious for a person of ordinary skill in the art to use a worm gear drive
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`ball screw, such as the one disclosed in Dallas 202 described above, with the
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`hydraulic piston of Dallas ‘118.” He makes no effort to describe how such a
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`combination could physically be made and, in fact, it could not be. The design of
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`the Dallas ’202 Patent is fundamentally different from the ’118 Application, not
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`16
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`Expert Reply Declaration for the OSES Motion to Amend in IPR2014-00216
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`only in the sense that it fails to disclose a fixed-point packoff or a “range of
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`adjustment,” but also because the setting tool is mounted above the mandrel 64 and
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`acts on the mandrel by applying downward force to injection head 62, which is
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`attached to the top of mandrel 64. ’202 Patent, col. 6, lines 54-60. The ’118
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`Application does not disclose any component analogous to the injection head
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`which could possibly be connected to the “worm gear driven ball screw”
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`mentioned in the ’202 Patent. Instead, as discussed above, the top end 30 of
`
`mandrel 28 in the ’118 Application is enclosed within annular cavity 26, which is
`
`sealed at the top by flange 24. There would be no way that the worm gear driven
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`ball screw of the ’202 Patent could possibly be used in conjunction with the tool
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`described in the ’118 Application.
`
`29. Contrary to the suggestion by GEG and Mr. Perkin, none of the
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`identified prior art references disclose a wellhead isolation tool which used both a
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`hydraulic lockdown mechanism and a mechanical lockdown mechanism to lock
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`the mandrel in position, and I am unaware of any reference that does include such
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`a disclosure.
`
`30.
`
`In its opposition to the motion to amend (page 7), GEG argues that
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`“OSES never addresses the obviousness of substituting a mechanical mechanism
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`for the hydraulic mechanism of Dallas ’118.” This is false. I discussed that very
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`issue at length in my prior declaration (¶¶ 143-146) and have addressed it again
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`17
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`Expert Reply Declaration for the OSES Motion to Amend in IPR2014-00216
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`above. Mr. Perkin has failed to identify any teaching in the ’118 Application that
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`would have led one of ordinary skill in the art to abandon the basic design of that
`
`tool and proceed in precisely the opposite direction.
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`II. Objective Evidence of Nonobviousness
`
`1.
`31.
`
`Commercial Success
`It is undisputed that the Patent Owner’s Stage Frac Tools practice the
`
`invention of proposed claim 28 and have enjoyed tremendous commercial success
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`in doing so. Mr. Perkin argues, however, that all of that success must be
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`disregarded because it is solely the result of something he refers to as “full bore
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`access,” and “the words full bore access are nowhere in the amended claims.”
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`Perkin Declaration at ¶ 80.
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` This contention
`
`reflects a
`
`fundamental
`
`misunderstanding of the nature of the claimed invention.
`
`32. The proposed amended claims do not require a wellhead isolation tool
`
`with a mandrel having an inner diameter equal to or larger than the inner diameter
`
`of the casing with which the tool is used – and for very good reason. The claimed
`
`invention is limited to the tool itself. The casing with which the tool may be used
`
`forms no part of the claimed invention.
`
`33. Figure 6.6 (from my prior declaration) shows the Patent Owner’s
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`Stage Frac Tool which practices proposed claim 28. The mandrel in that tool has a
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`certain inner diameter, and the tool may be used by an oil & gas operator in
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`18
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`Expert Reply Declaration for the OSES Motion to Amend in IPR2014-00216
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`conjunction with a casing that has a similar
`
`(or smaller) diameter, in which case the tool
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`Figure 6.6
`OSES/Stinger Wellhead Isolation Tool
`Photo from OSES Yard, Bridgeport, Texas
`3 June 2014
`
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`will provide “full bore access,” as Mr. Perkin
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`has used that term. In other words, “full bore
`
`hydraulic
`cylinder
`
`access” is not – and cannot possibly be – an
`
`intrinsic feature of the tool itself. The
`
`concept of full bore access only has meaning
`
`when the tool is installed on a particular well
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`with a particular casing.
`
`34. Full bore access is nonetheless
`
`an important benefit that operators can realize
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`by using the invention of proposed claim 28.
`
`hydraulic
`piston
`
`setting
`tool rod
`
`valve
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`Because of the fixed-point packoff in the
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`valve
`
`tubing head spool and the configuration of
`
`the lockdown mechanisms that enable the
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`fixed-point packoff, an operator has the
`
`a
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