UNITED STATES PATENT AND TRADEMARK OFFICE
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` BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GREENE’S ENERGY GROUP, LLC,
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`Petitioner,
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`v.
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`OIL STATES ENERGY SERVICES, LLC,
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`Patent Owner.
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`Case IPR2014-00216
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`Patent No. 6,179,053
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`PATENT OWNER’S REPLY IN SUPPORT OF MOTION TO AMEND
`UNDER 37 C.F.R. § 42.121
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` BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GREENE’S ENERGY GROUP, LLC,
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`Petitioner,
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`v.
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`OIL STATES ENERGY SERVICES, LLC,
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`Patent Owner.
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`Case IPR2014-00216
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`Patent No. 6,179,053
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`PATENT OWNER’S REPLY IN SUPPORT OF MOTION TO AMEND
`UNDER 37 C.F.R. § 42.121
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`Case IPR2014-00216
`Patent No. 6,179,053
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` Patent Owner’s Reply ISO Motion to Amend
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`A. The ’118 Application Does Not Disclose, or Render Obvious, a
`Setting Tool as Required by the Proposed Amended Claims.
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`GEG and its new expert Mr. Perkin rely heavily on the argument that the
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`’118 Application “requires” (but does not actually disclose) a “setting tool” that
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`satisfies the language of claim 28. This argument is based on ignoring the actual
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`claim language, as well as the terms of the ’118 Application and the ’053 Patent.
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`GEG argues that “OSES does not define the term ‘setting tool,’” apparently
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`in an effort to justify Mr. Perkin’s decision to make up his own definition. The
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`claim language itself plainly sets out the defining characteristics of the “setting
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`tool”: (1) “arranged to insert a bottom end of the mandrel through the wellhead”;
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`and (2) “separate from” the first and second lockdown mechanisms and thus
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`“removable from the other portions of the apparatus.” Wooley Reply Decl. (Ex.
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`2034) at ¶ 1. Mr. Perkin nevertheless defines “setting tool” as “any device that is
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`used to align the mandrel with the wellhead so that the mandrel can be inserted
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`without interference.” Perkin Decl. (Ex. 1014) at ¶ 44. There is nothing in the
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`’053 Patent describing the setting tool as something used to “align” the mandrel,
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`and it is the setting tool itself that performs the function of “inserting” the mandrel,
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`rather than merely facilitating its insertion. Wooley Reply. Decl. at ¶¶ 3-5.
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`Moreover, Mr. Perkin’s discussion of this claim element is completely
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`divorced from the claim language. He refers repeatedly to a setting tool as
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`Case IPR2014-00216
`Patent No. 6,179,053
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`inserting a mandrel “into” the wellhead. Perkin Decl. at ¶¶ 44-59. The claim
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` Patent Owner’s Reply ISO Motion to Amend
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`language, however, requires that the setting tool insert the mandrel “through” the
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`wellhead. GEG has failed to provide any support for the suggestion that the tool of
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`the ’118 Application would have inherently required some undisclosed component
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`“arranged to insert a bottom end of the mandrel through the wellhead.” Wooley
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`Reply Decl. at ¶¶ 6-13. In fact, both the ’053 Patent and the ’118 Application
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`make clear that such a component would not have been present because it was the
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`hydraulic cylinder – which is not removable or separate from the alleged lockdown
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`mechanisms – that inserted the mandrel through the wellhead. Id. at ¶ 11. The
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`’118 Application does not disclose or suggest a “setting tool” with the
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`characteristics required by claim 28.
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`GEG argues in passing that it would have been obvious to modify the tool of
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`the ’118 Application to include a separate “specialized” setting tool. The only
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`cited support is one conclusory paragraph from Mr. Perkin’s declaration that,
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`again, is based on the fallacy that a “setting tool” is a device used to “align the
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`mandrel of Dallas ’118 so that it can be inserted into the well.” Perkin Decl. at
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`¶ 59. Furthermore, GEG’s argument that a separate setting tool “could be used” in
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`conjunction with the ’118 Application is not only legally irrelevant but also untrue.
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`Wooley Reply Decl. at ¶¶ 16-17. There is no evidence to suggest that it would
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`have been obvious to modify the ’118 Application to include a setting tool as
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`Case IPR2014-00216
`Patent No. 6,179,053
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`required by the claim language, and substantial evidence demonstrating that one of
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` Patent Owner’s Reply ISO Motion to Amend
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`skill in the art would never even have considered such a modification. Id.
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`B.
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`It Would Not Have Been Obvious to Completely Redesign the
`’118 Application by Substituting a Mechanical Lockdown
`Mechanism for the Hydraulic Cylinder.
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`GEG argues that it would have been obvious to substitute a mechanical
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`lockdown mechanism for the hydraulic cylinder shown in the ’118 Application,
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`even asserting that “OSES never addresses” this issue. Opp. at 7. In reality, OSES
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`and Dr. Wooley addressed this issue in detail, and it is GEG that has failed to
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`respond to that evidence. Wooley Reply Decl. at ¶ 30.
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`As a threshold issue, GEG’s argument on this point is based almost entirely
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`on the McLeod patent, which clearly does not disclose the lockdown mechanism
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`theorized by GEG and, in any event, could and would never have reasonably been
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`combined with the ’118 Application. Wooley Reply Decl. at ¶¶ 18-24, 27.
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`More fundamentally, this argument is based on the suggestion that one of
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`skill in the art would have modified the ’118 Application “in order to avoid the
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`drawbacks of hydraulic cylinders.” Opp. at 8. OSES and Dr. Wooley previously
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`explained that this type of substitution would require not only jettisoning the basic
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`design of the ’118 Application but also proceeding in the opposite direction – from
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`using a lockdown mechanism that relied only on hydraulic pressure to using a
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`mechanism that expressly excludes hydraulic pressure. Because that would have
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`Case IPR2014-00216
`Patent No. 6,179,053
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`required “a substantial reconstruction and redesign of the elements” in the ’118
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` Patent Owner’s Reply ISO Motion to Amend
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`Application and “a change in the basic principles under which [the reference] was
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`designed to operate,” such a fundamental departure cannot be considered obvious.
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`In re Ratti, 270 F.3d 810, 813 (CCPA 1959). See also, e.g., In re Giannelli, 739
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`F.3d 1375 (Fed. Cir. 2014) (reversing finding of obviousness because “it is not
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`obvious to modify a machine with handles designed to be pushed to one with
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`handles adapted to be pulled.”). GEG has not even attempted to address this point.
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`C. The Commercial Success of Patent Owner’s Tools Is Firmly Tied
`to the Merits of the Claimed Invention.
`Because it is undisputed that the tools made and used by Patent Owner
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`practice proposed claim 28 and have enjoyed remarkable commercial success in
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`doing so, there is a presumption that the patented invention has been commercially
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`successful. See Omron Oilfield & Marine, Inc. v. MD/Totco, a Division of Varco,
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`L.P., IPR 2013-00265 (Oct. 31, 2013). The only effort by GEG to rebut this
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`presumption is based on misstatements about the record and mischaracterizations
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`about the nature of the patented invention.
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`As a threshold matter, Patent Owner’s witnesses did not testify that “the
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`driving factor behind any commercial success of the Stage Frac Tool is that the
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`Stage Frac Tool provides full-bore access to the casing.” Opp. at 10. In fact, the
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`witnesses uniformly explained that the commercial success was caused by the
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`claimed elements of the tool and the benefits flowing from that design, including
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`Case IPR2014-00216
`Patent No. 6,179,053
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`the possibility of full-bore access to the casing. Wooley Dep. (Ex. 1011) at 66:7-
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` Patent Owner’s Reply ISO Motion to Amend
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`69:5; Britven Decl. (Ex. 2018) at ¶¶ 12-16; Britven Dep. (Ex. 1035) at 33:21-34:9.
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`Moreover, GEG’s argument simply misses the point. Full-bore access is not
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`a feature of the claimed tool, nor could it be, as this concept cannot exist in
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`reference to the tool by itself, but rather only when it is installed on a well with
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`particular dimensions. Wooley Reply Decl. at ¶¶ 32-36. Advantages provided by
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`an invention “do not properly belong in claims, the sole function of which is to
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`point out distinctly the … machine … which is patented, not its advantages. It is
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`entirely proper, nevertheless, in evaluating nonobviousness, for a court to take into
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`account advantages directly flowing from the invention patented.” Preemption
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`Devices, Inc. v. Minn. Mining & Mfg. Co., 732 F.2d 903, 907 (Fed. Cir. 1984).
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`The availability of full-bore access is an important advantage provided by the
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`claimed invention which demonstrates the nonobviousness of claim 28.
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`Finally, GEG’s argument that “every element of the claimed invention is
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`clearly present in the prior art” (Opp. at 14) is factually incorrect (Wooley Reply
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`Decl. at ¶¶ 37-38), and also legally irrelevant. Because the claimed invention
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`“resides in a combination of … elements,” GEG’s piecemeal arguments identifying
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`disparate prior art references that allegedly teach the various claim elements
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`“amount[s] to nothing more than hindsight reconstructions.” Kalman v. Kimberly-
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`Clark Corp., 713 F.2d 760, 774 (Fed. Cir. 1983) (emphasis in original).
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`Case IPR2014-00216
`Patent No. 6,179,053
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`Dated: January 12, 2015
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` Patent Owner’s Reply ISO Motion to Amend
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`Respectfully submitted,
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`/C. Erik Hawes/
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`C. Erik Hawes
`Registration No. 63,328
`ehawes@morganlewis.com
`MORGAN, LEWIS & BOCKIUS LLP
`1000 Louisiana Street, Suite 4000
`Houston, Texas 77002
`T. 713.890.5165
`F. 713.890.5001
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`Counsel for Patent Owner
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`6
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`Case IPR2014-00216
`Patent No. 6,179,053
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` Patent Owner’s Reply ISO Motion to Amend
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a true and correct copy of the Patent Owner’s
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`Reply in Support of Motion to Amend together with all exhibits is being
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`electronically served on the Petitioner’s attorneys via email, as previously agreed
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`by all counsel of record, on the 12th day of January, 2015 at the following
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`addresses:
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`John J. Feldhaus
`jfeldhaus@foley.com
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`Andrew R. Cheslock
`acheslock@foley.com
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`Bradley Roush
`broush@foley.com
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`Respectfully submitted,
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` /C. Erik Hawes/
`C. Erik Hawes
`Registration No. 63,328
`Counsel for Patent Owner
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`7
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