1
`
`’053Mti
`’053 Motion to Amend
`
`tA
`
`d
`
`Case IPR2014‐00216
`
`OIL STATES ENERGY SERVICES, LLC,
`
`PatentOwner.
`Patent Owner.
`
`v.
`
`GREENE’S ENERGY GROUP, LLC,
`
`Petitioner,
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`UNITEDSTATESPATENTANDTRADEMARKOFFICE
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Greene’s Energy Group, LLC v. Oil States Energy Services, LLC, IPR2014-00216, Ex. 2039
`
`
`
`’053Mti
`’053 Motion to Amend
`
`tA
`
`d
`
`Case IPR2014‐00216
`
`OIL STATES ENERGY SERVICES, LLC,
`
`PatentOwner.
`Patent Owner.
`
`v.
`
`GREENE’S ENERGY GROUP, LLC,
`
`Petitioner,
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`UNITEDSTATESPATENTANDTRADEMARKOFFICE
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Greene’s Energy Group, LLC v. Oil States Energy Services, LLC, IPR2014-00216, Ex. 2039
`
`
`
`2
`
`the mandrel including a packoffassembly that seals against the fixed‐point packoffwithin the
`
`tubing head spool.
`
`lockdown position; and
`position without the use of hydraulic pressurewhile the first mechanicallockdown mechanism is in the
`thtth
`that the mandrel can be moved into the operative position, andthen locked down in the operative
`
`th
`
`dit
`
`b
`
`dl
`
`the second mechanicallockdown mechanism having a range of adjustment adequate to ensure
`
`ti
`
`th
`
`i
`
`kdd
`
`l
`
`dth
`
`iti
`
`ti
`
`the first mechanicallockdown mechanism including a base member for connection to a wellhead
`
`of the well and a locking member for detachably engaging the base member; [and]
`
`the first mechanicallockdown mechanism adapted to detachably maintain the mandrel in
`
`proximitytothefixed‐pointpackoffwheninthelockdownposition,
`proximity to the fixedpoint packoffwhen in the lockdown position,
`
`a first and a second mechanicallockdown mechanism that are separate from the setting tool and
`
`p
`
`g
`
`second mechanicallockdown mechanism are in respective lockdown positions;
`arranged so that the mandrel is locked in the operative position only when both the first and the
`
`a 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;
`
`the apparatuscomprising:
`packoffabove the casing of the well and within a tubing head spool of a[in the] wellhead assembly,
`An apparatus for securing a mandrel of a well tool in an operative position requiring fixed‐point
`
`ii
`
`h
`
`Proposed Substitute Claim for Claim 1
`
`
`
`3
`
`the mandrel including a packoffassembly that seals against the fixed‐point packoffwithin the
`
`tubing head spool.
`
`lockdown position; and
`position without the use of hydraulic pressurewhile the first mechanicallockdown mechanism is in the
`thtth
`that the mandrel can be moved into the operative position, andthen locked down in the operative
`
`th
`
`dit
`
`b
`
`dl
`
`the second mechanicallockdown mechanism having a range of adjustment adequate to ensure
`
`ti
`
`th
`
`i
`
`kdd
`
`l
`
`dth
`
`iti
`
`ti
`
`the first mechanicallockdown mechanism including a base member for connection to a wellhead
`
`of the well and a locking member for detachably engaging the base member; [and]
`
`the first mechanicallockdown mechanism adapted to detachably maintain the mandrel in
`
`proximitytothefixed‐pointpackoffwheninthelockdownposition,
`proximity to the fixedpoint packoffwhen in the lockdown position,
`
`a first and a second mechanicallockdown mechanism that are separate from the setting tool and
`
`p
`
`g
`
`second mechanicallockdown mechanism are in respective lockdown positions;
`arranged so that the mandrel is locked in the operative position only when both the first and the
`
`a 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;
`
`the apparatuscomprising:
`packoffabove the casing of the well and within a tubing head spool of a[in the] wellhead assembly,
`An apparatus for securing a mandrel of a well tool in an operative position requiring fixed‐point
`
`ii
`
`h
`
`Proposed Substitute Claim for Claim 1
`
`
`
`4
`
`the mandrel including a packoffassembly that seals against the fixed‐point packoffwithin the
`
`tubing head spool.
`
`lockdown position; and
`position without the use of hydraulic pressurewhile the first mechanicallockdown mechanism is in the
`thtth
`that the mandrel can be moved into the operative position, andthen locked down in the operative
`
`th
`
`dit
`
`b
`
`dl
`
`the second mechanicallockdown mechanism having a range of adjustment adequate to ensure
`
`ti
`
`th
`
`i
`
`kdd
`
`l
`
`dth
`
`iti
`
`ti
`
`the first mechanicallockdown mechanism including a base member for connection to a wellhead
`
`of the well and a locking member for detachably engaging the base member; [and]
`
`the first mechanicallockdown mechanism adapted to detachably maintain the mandrel in
`
`proximitytothefixed‐pointpackoffwheninthelockdownposition,
`proximity to the fixedpoint packoffwhen in the lockdown position,
`
`a first and a second mechanicallockdown mechanism that are separate from the setting tool and
`
`p
`
`g
`
`second mechanicallockdown mechanism are in respective lockdown positions;
`arranged so that the mandrel is locked in the operative position only when both the first and the
`
`a 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;
`
`the apparatuscomprising:
`packoffabove the casing of the well and within a tubing head spool of a[in the] wellhead assembly,
`An apparatus for securing a mandrel of a well tool in an operative position requiring fixed‐point
`
`ii
`
`h
`
`Proposed Substitute Claim for Claim 1
`
`
`
`5
`
`the mandrel including a packoffassembly that seals against the fixed‐point packoffwithin the
`
`tubing head spool.
`
`lockdown position; and
`position without the use of hydraulic pressurewhile the first mechanicallockdown mechanism is in the
`thtth
`that the mandrel can be moved into the operative position, andthen locked down in the operative
`
`th
`
`dit
`
`b
`
`dl
`
`the second mechanicallockdown mechanism having a range of adjustment adequate to ensure
`
`ti
`
`th
`
`i
`
`kdd
`
`l
`
`dth
`
`iti
`
`ti
`
`the first mechanicallockdown mechanism including a base member for connection to a wellhead
`
`of the well and a locking member for detachably engaging the base member; [and]
`
`the first mechanicallockdown mechanism adapted to detachably maintain the mandrel in
`
`proximitytothefixed‐pointpackoffwheninthelockdownposition,
`proximity to the fixedpoint packoffwhen in the lockdown position,
`
`a first and a second mechanicallockdown mechanism that are separate from the setting tool and
`
`p
`
`g
`
`second mechanicallockdown mechanism are in respective lockdown positions;
`arranged so that the mandrel is locked in the operative position only when both the first and the
`
`a 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;
`
`the apparatuscomprising:
`packoffabove the casing of the well and within a tubing head spool of a[in the] wellhead assembly,
`An apparatus for securing a mandrel of a well tool in an operative position requiring fixed‐point
`
`ii
`
`h
`
`Proposed Substitute Claim for Claim 1
`
`
`
`6
`
`NONOBVIOUSNESS
`
`
`
`7
`
`–all references identified by an independent prior art search commissioned
`
`by Patent Owner specifically for this proceeding (Ex. 2017 ¶¶ 62‐64)
`
`–references identified by Petitioner in parallel District Court litigation
`–all references cited during prosecution of ’053 (Ex. 2017 ¶ 60),
`
`(Ex2017¶61)and
`(Ex. 2017 ¶ 61), and
`
`•Dr. Wooleyconsidered:
`
`Content of the Prior Art
`
`
`
`8
`
`Ex. 2017 (WooleyDecl.) ¶ 51
`
`Wooley
`
`knowledge.”
`operations,orequivalentexperienceof
`operations, or equivalent experience of
`exposure of several years with oil and gas well
`engineering discipline, and practical job
`“Bachelor‐level degree in a recognized
`
`Level of Ordinary Skill
`
`
`
`9
`
`Ex. 2017 (WooleyDecl.) ¶ 82
`
`l)
`
`l
`
`(
`
`Level of Ordinary Skill
`
`
`
`10
`
`the mandrel including a packoffassembly that seals against the fixed‐point packoffwithin the
`
`tubing head spool.
`
`lockdown position; and
`position without the use of hydraulic pressurewhile the first mechanicallockdown mechanism is in the
`thtth
`that the mandrel can be moved into the operative position, and then locked down in the operative
`
`th
`
`dit
`
`b
`
`dl
`
`the second mechanicallockdown mechanism having a range of adjustment adequate to ensure
`
`ti
`
`th
`
`i
`
`kdd
`
`l
`
`dth
`
`iti
`
`ti
`
`the first mechanicallockdown mechanism including a base member for connection to a wellhead
`
`of the well and a locking member for detachably engaging the base member; [and]
`
`the first mechanicallockdown mechanism adapted to detachably maintain the mandrel in
`
`proximitytothefixed‐pointpackoffwheninthelockdownposition,
`proximity to the fixedpoint packoffwhen in the lockdown position,
`
`a first and a second mechanicallockdown mechanism that are separate from the setting tool and
`
`p
`
`g
`
`second mechanicallockdown mechanism are in respective lockdown positions;
`arranged so that the mandrel is locked in the operative position only when both the first and the
`
`a 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;
`
`the apparatuscomprising:
`packoffabove the casing of the well and within a tubing head spool of a[in the] wellhead assembly,
`An apparatus for securing a mandrel of a well tool in an operative position requiring fixed‐point
`
`ii
`
`h
`
`Differences Between Prior Art and Claimed Invention
`
`
`
`11
`Ex. 1003 (’118 Application), pg. 6, lines 10‐26
`
`Fig. 4
`
`dl
`mandrel
`
`hydraulic chamber
`
`hydraulic fluid
`pressurized
`
`casing
`casing
`
`setting tool
`
`Patent
`’118 Canadian
`
`
`
`12
`
`Ex. 1003 (’118 Application), p. 10, lines 29‐32; WooleyReply Decl. ¶ 11
`
`Ex. 1003 (’118 App.), Fig. 4
`
`Differences Between Prior Art and Claimed Invention
`
`
`
`13
`
`Ex. 1001 (’053 Patent), 2:46‐65
`
`Differences Between Prior Art and Claimed Invention
`
`
`
`14
`
`the mandrel including a packoffassembly that seals against the fixed‐point packoffwithin the
`
`tubing head spool.
`
`lockdown position; and
`position without the use of hydraulic pressurewhile the first mechanicallockdown mechanism is in the
`thtth
`that the mandrel can be moved into the operative position, and then locked down in the operative
`
`th
`
`dit
`
`b
`
`dl
`
`the second mechanicallockdown mechanism having a range of adjustment adequate to ensure
`
`ti
`
`th
`
`i
`
`kdd
`
`l
`
`dth
`
`iti
`
`ti
`
`the first mechanicallockdown mechanism including a base member for connection to a wellhead
`
`of the well and a locking member for detachably engaging the base member; [and]
`
`the first mechanicallockdown mechanism adapted to detachably maintain the mandrel in
`
`proximitytothefixed‐pointpackoffwheninthelockdownposition,
`proximity to the fixedpoint packoffwhen in the lockdown position,
`
`a first and a second mechanicallockdown mechanism that are separate from the setting tool and
`
`p
`
`g
`
`second mechanicallockdown mechanism are in respective lockdown positions;
`arranged so that the mandrel is locked in the operative position only when both the first and the
`
`a 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;
`
`the apparatuscomprising:
`packoffabove the casing of the well and within a tubing head spool of a[in the] wellhead assembly,
`An apparatus for securing a mandrel of a well tool in an operative position requiring fixed‐point
`
`ii
`
`h
`
`Differences Between Prior Art and Claimed Invention
`
`
`
`15
`
`Ex. 1001 (’053 Patent), 8:5‐34
`
`Ex. 1001 (’053 Patent), Col. 2:46‐65
`
`Differences Between Prior Art and Claimed Invention
`
`
`
`16
`
`Ex. 2036 31:17‐33:11; Ex. 2034 ¶¶ 8‐9
`
`“Setting Tool”
`Perkin’s
`
`’118 Setting Tool
`
`
`
`17
`
`Ex. 2034 ¶¶ 6‐7, 10‐12
`
`“Through”
`Inserted
`Inserted
`
`“Into”
`Inserted
`
`“
`
`”
`
`“Setting Tool”
`Perkin’s
`
`
`
`18
`
`Ex. 1022 (’243 Patent), Fig. 2
`
`Ex. 2001 (’851 Patent), Fig. 4
`
`tool
`Setting
`
`????
`
`tool
`Setting
`Setting
`
`Differences Between Prior Art and Claimed Invention
`
`
`
`19
`
`Ex. 2034 (WooleyDecl.) ¶ 16
`
`Wooley
`
`showninthe’118Application.”
`shown in the 118 Application.
`in U.S. Patent No. 4,867,243 to the mandrel
`attach a separate setting tool like that shown
`“[I]t would have been physically impossible to
`
`Differences Between Prior Art and Claimed Invention
`
`
`
`20
`
`Ex. 2034 (WooleyDecl.) ¶ 17
`
`Wooley
`
`Applicationalreadyincludedasettingtool.”
`Application already included a setting tool.
`tool … given that the tool of the ’118
`skill to even consider adding a separate setting
`“There would be no reason for one of ordinary
`
`Differences Between Prior Art and Claimed Invention
`
`
`
`21
`
`the mandrel including a packoffassembly that seals against the fixed‐point packoffwithin the
`
`tubing head spool.
`
`lockdown position; and
`position without the use of hydraulic pressurewhile the first mechanicallockdown mechanism is in the
`thtth
`that the mandrel can be moved into the operative position, andthen locked down in the operative
`
`th
`
`dit
`
`b
`
`dl
`
`the second mechanicallockdown mechanism having a range of adjustment adequate to ensure
`
`ti
`
`th
`
`i
`
`kdd
`
`l
`
`dth
`
`iti
`
`ti
`
`the first mechanicallockdown mechanism including a base member for connection to a wellhead
`
`of the well and a locking member for detachably engaging the base member; [and]
`
`the first mechanicallockdown mechanism adapted to detachably maintain the mandrel in
`
`proximitytothefixed‐pointpackoffwheninthelockdownposition,
`proximity to the fixedpoint packoffwhen in the lockdown position,
`
`a first and a second mechanicallockdown mechanism that are separate from the setting tool and
`
`p
`
`g
`
`second mechanicallockdown mechanism are in respective lockdown positions;
`arranged so that the mandrel is locked in the operative position only when both the first and the
`
`a 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;
`
`the apparatuscomprising:
`packoffabove the casing of the well and within a tubing head spool of a[in the] wellhead assembly,
`An apparatus for securing a mandrel of a well tool in an operative position requiring fixed‐point
`
`ii
`
`h
`
`Proposed Substitute Claim for Claim 1
`
`
`
`22
`
`Ex. 2034 (WooleyDecl.) ¶ 25
`
`(
`
`)
`
`Wooley
`
`described in the ’118 Application.”
`ftht
`jtti
`jettison the basic structure of the tool
`would have been required to completely
`of hydraulic cylinders,’ one of skill in the art
`mechanisminorderto‘avoidthedrawbacks
`mechanism in order to avoid the drawbacks
`“To substitute a mechanical lockdown
`
`thbi
`
`l
`
`t
`
`t
`
`Differences Between Prior Art and Claimed Invention
`
`
`
`23
`
`the mandrel including a packoffassembly that seals against the fixed‐point packoffwithin the
`
`tubing head spool.
`
`lockdown position; and
`position without the use of hydraulic pressurewhile the first mechanicallockdown mechanism is in the
`thtth
`that the mandrel can be moved into the operative position, andthen locked down in the operative
`
`th
`
`dit
`
`b
`
`dl
`
`the second mechanicallockdown mechanism having a range of adjustment adequate to ensure
`
`ti
`
`th
`
`i
`
`kdd
`
`l
`
`dth
`
`iti
`
`ti
`
`the first mechanicallockdown mechanism including a base member for connection to a wellhead
`
`of the well and a locking member for detachably engaging the base member; [and]
`
`the first mechanicallockdown mechanism adapted to detachably maintain the mandrel in
`
`proximitytothefixed‐pointpackoffwheninthelockdownposition,
`proximity to the fixedpoint packoffwhen in the lockdown position,
`
`a first and a second mechanicallockdown mechanism that are separate from the setting tool and
`
`p
`
`g
`
`second mechanicallockdown mechanism are in respective lockdown positions;
`arranged so that the mandrel is locked in the operative position only when both the first and the
`
`a 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;
`
`the apparatuscomprising:
`packoffabove the casing of the well and within a tubing head spool of a[in the] wellhead assembly,
`An apparatus for securing a mandrel of a well tool in an operative position requiring fixed‐point
`
`ii
`
`h
`
`Proposed Substitute Claim for Claim 1
`
`
`
`24
`
`the mandrel including a packoffassembly that seals against the fixed‐point packoffwithin the
`
`tubing head spool.
`
`lockdown position; and
`position without the use of hydraulic pressurewhile the first mechanicallockdown mechanism is in the
`thtth
`that the mandrel can be moved into the operative position, andthen locked down in the operative
`
`th
`
`dit
`
`b
`
`dl
`
`the second mechanicallockdown mechanism having a range of adjustment adequate to ensure
`
`ti
`
`th
`
`i
`
`kdd
`
`l
`
`dth
`
`iti
`
`ti
`
`the first mechanicallockdown mechanism including a base member for connection to a wellhead
`
`of the well and a locking member for detachably engaging the base member; [and]
`
`the first mechanicallockdown mechanism adapted to detachably maintain the mandrel in
`
`proximitytothefixed‐pointpackoffwheninthelockdownposition,
`proximity to the fixedpoint packoffwhen in the lockdown position,
`
`a first and a second mechanicallockdown mechanism that are separate from the setting tool and
`
`p
`
`g
`
`second mechanicallockdown mechanism are in respective lockdown positions;
`arranged so that the mandrel is locked in the operative position only when both the first and the
`
`a 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;
`
`the apparatuscomprising:
`packoffabove the casing of the well and within a tubing head spool of a[in the] wellhead assembly,
`An apparatus for securing a mandrel of a well tool in an operative position requiring fixed‐point
`
`ii
`
`h
`
`Proposed Substitute Claim for Claim 1
`
`
`
`25
`
`the mandrel including a packoffassembly that seals against the fixed‐point packoffwithin the
`
`tubing head spool.
`
`lockdown position; and
`position without the use of hydraulic pressurewhile the first mechanicallockdown mechanism is in the
`thtth
`that the mandrel can be moved into the operative position, andthen locked down in the operative
`
`th
`
`dit
`
`b
`
`dl
`
`the second mechanicallockdown mechanism having a range of adjustment adequate to ensure
`
`ti
`
`th
`
`i
`
`kdd
`
`l
`
`dth
`
`iti
`
`ti
`
`the first mechanicallockdown mechanism including a base member for connection to a wellhead
`
`of the well and a locking member for detachably engaging the base member; [and]
`
`the first mechanicallockdown mechanism adapted to detachably maintain the mandrel in
`
`proximitytothefixed‐pointpackoffwheninthelockdownposition,
`proximity to the fixedpoint packoffwhen in the lockdown position,
`
`a first and a second mechanicallockdown mechanism that are separate from the setting tool and
`
`p
`
`g
`
`second mechanicallockdown mechanism are in respective lockdown positions;
`arranged so that the mandrel is locked in the operative position only when both the first and the
`
`a 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;
`
`the apparatuscomprising:
`packoffabove the casing of the well and within a tubing head spool of a[in the] wellhead assembly,
`An apparatus for securing a mandrel of a well tool in an operative position requiring fixed‐point
`
`ii
`
`h
`
`Proposed Substitute Claim for Claim 1
`
`
`
`26
`
`d
`
`•Although much more expensive than casing savers, stage frac
`
`d
`
`l
`
`dl
`
`b
`
`lh
`
`far more often (Ex. 2018, ¶ 26)
`tools have been steadily replacing casing savers and are now used
`
`•Tools have generated revenue in excess of $300M, with profit
`
`margins of more than 56% (Ex. 2018, ¶¶ 23, 28)
`
`56%(
`
`th
`
`f
`
`i
`
`)
`
`•Large customers such as Anadarko adopted the new tool “almost
`
`immediately”(Ex2013¶¶1415)
`immediately (Ex. 2013, ¶¶ 14‐15)
`
`Commercial Success
`
`
`
`27
`
`Ex. 2034 (WooleyDecl.). ¶ 33
`
`Commercial Success
`
`
`
`28
`
`5’’ diameter
`
`
`
`29
`
`5’’ diameter
`
`5’’ diameter
`
`
`
`30
`
`5’’ diameter
`
`Stimulation Fluid
`
`5’’ diameter
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