Greene’s Energy Group, LLC,
`Petitioner
`v.
`Oil States Energy Services, LLC,
`Patent Owner
`Case IPR 2014-00216
`U.S. Patent 6,179,053
`Greene’s Oral Argument Presentation
`February 11, 2015
`
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`U.S. Patent 6,179,053
`
`“LOCKDOWN MECHANISM
`FOR WELL TOOLS
`REQUIRING
`FIXED POINT PACKOFF”
`
`Challenged claims: 1 and 22
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`U.S. Patent 6,179,053
`
`‘053 second embodiment with cylinder and piston
`
`Wellhead Isolation Tool
`
`Wellhead
`
`GEG Pet.., p. 5
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`U.S. Patent 6,179,053
`
`“[A] range of adjustment ‘B’
`is provided by a second
`locking member such that
`‘B’ is greater than a
`distance ‘C’ between a
`bottom end of the mandrel
`22 and the fixed packoff
`point 24 when the mandrel
`is locked down to the
`baseplate 28 . . .”
`
`Col. 5, ll. 61 – 65.
`
`GEG Pet.., p. 10-11
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`U.S. Patent 6,179,053
`
`“Pressurized hydraulic fluid is injected into the
`upper port 88 of the cylinder 74 while the hydraulic
`fluid below the piston 84 us drained from the
`lower port 90 so the mandrel 72 is forced
`downwardly to pack off against the fixed point 24
`under a force P2 exerted on the piston by the
`pressurized hydraulic fluid, as shown in Fig. 7.
`The mandrel head 26 is thus forced downwardly
`over a distance ‘C’ so that the space between the
`mandrel head 26 and the upper wall 76 of the
`cylinder is reduced to B-C. The mandrel is locked
`down in its operative position by the hydraulic
`force P2.”
`
`Col. 8, ll. 21 – 31.
`
`GEG Pet.., p. 10-11
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`U.S. Patent 6,179,053
`
`Pressurized hydraulic fluid is injected into the
`upper port 88 of the cylinder 74 while the hydraulic
`fluid below the piston 84 us drained from the
`lower port 90 so the mandrel 72 is forced
`downwardly to pack off against the fixed point
`under a force P2 exerted on the piston by the
`pressurized hydraulic fluid.
`
`“The mandrel 72 is locked down in its
`operative position by the hydraulic force P2.”
`
`Pet.., p. 10-11; Rep., p. 4
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`PRIOR ART
`
`Published Canadian Application 2,195,118 (Dallas '118)
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`Published Canadian Application 2,195,118 (Dallas '118)
`
`• Dallas '118 is 102(b) prior art
`
`• Dallas '118 discloses precisely
`the type of fixed point packoff
`described in the ‘053 patent
`
`• No prior art showing a fixed point
`packoff was cited during
`prosecution of the ‘053 patent
`
`• U.S. Patent 5,819,851 (the ‘851
`patent), which is not prior art, is
`the U.S. counterpart of Dallas
`'118.
`
`GEG Pet.., p. 4
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`Dallas ‘118
`
`“The maпdrel is stroked dowп … апd packed off at
`the bottom епd agaiпst а bit guide that is attached
`to а top епd of the casiпg …
`
`The “tool is used to hydraulically lock the maпdrel
`iп ап operative positioп … packed-off agaiпst the
`bit guide.”
`
`Cylinder
`
`Piston
`
`Mandrel
`
`See ‘053 Patent at col. 2, ll. 35-36, 50-51.
`
`Mandrel extension
`Mandrel packoff assembly
`
`Tubing head spool
`
`“fixed point” bit guide in tubing head spool
`Casing
`
`GEG Rep.., p. 4-5
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`Published Canadian Application 2,195,118 (Dallas '118)
`
`Mandrel
`
`Mandrel Extension
`
`Packoff Assembly
`
`GEG Pet.., p. 24-25; GEG Rep. , p. 4
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`Second Lockdown Mechanism
`
`Dallas '118 cylinder and piston
`
`GEG Pet., 24
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`Second Lockdown Mechanism
`
`Dallas '118
`cylinder and
`piston
`
`‘053 second
`embodiment
`cylinder and
`piston
`
`GEG Rep., 12
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`Claim 1
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`U.S. Patent 6,179,053
`
`1. An apparatus for securing a mandrel of a well tool in an
`operative position requiring fixed-point packoff in the well,
`comprising:
`
`Dallas ‘118
`
`a first and a second lockdown mechanism arranged so that the
`mandrel is locked in the operative position only when both the first
`and the second lockdown mechanism are in respective lockdown
`positions;
`
`the first lockdown mechanism adapted to detachably maintain the
`mandrel in proximity to the fixed-point packoff when in the
`lockdown position, the first lockdown 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 second lockdown mechanism having a range of adjustment
`adequate to ensure that the mandrel can be moved into the
`operative position and locked down in the operative position while
`the first lockdown mechanism is in the lockdown position.
`
`GEG Pet.., p. 42-44
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`U.S. Patent 6,179,053
`
`1. An apparatus for securing a mandrel of a well tool in an
`operative position requiring fixed-point packoff in the well,
`comprising:
`
`a first and a second lockdown mechanism arranged so that the
`mandrel is locked in the operative position only when both the first
`and the second lockdown mechanism are in respective lockdown
`positions;
`
`NO
`DISPUTE
`
`the first lockdown mechanism adapted to detachably maintain the
`mandrel in proximity to the fixed-point packoff when in the
`lockdown position, the first lockdown 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 second lockdown mechanism having a range of adjustment
`adequate to ensure that the mandrel can be moved into the
`operative position and locked down in the operative position while
`the first lockdown mechanism is in the lockdown position.
`
`GEG Pet.., p. 42-44
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`U.S. Patent 6,179,053
`
`1. An apparatus for securing a mandrel of a well tool in an
`operative position requiring fixed-point packoff in the well,
`comprising:
`
`a first and a second lockdown mechanism arranged so that the
`mandrel is locked in the operative position only when both the first
`and the second lockdown mechanism are in respective lockdown
`positions;
`
`the first lockdown mechanism adapted to detachably maintain the
`mandrel in proximity to the fixed-point packoff when in the
`lockdown position, the first lockdown 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 second lockdown mechanism having a range of adjustment
`adequate to ensure that the mandrel can be moved into the
`operative position and locked down in the operative position
`while the first lockdown mechanism is in the lockdown position.
`
`GEG Pet.., p. 42-44
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`Second Lockdown Mechanism – OSES’ Arguments
`
`Oil States
`The second lockdown
`mechanism must operate
`without hydraulic pressure
`The mandrel of Dallas '118 is
`not “locked” by the hydraulic
`cylinder
`
`Dallas '118 does not have an
`enabling disclosure
`
`The second lockdown
`mechanism must be separate
`from a setting tool and Dallas
`'118 has an integral setting tool.
`
`Greene’s Response
`Wrong! The ‘053 patent specification and claims
`require the second lockdown mechanism to “lock” the
`mandrel with hydraulic pressure.
`Wrong! The ‘053 patent states that the hydraulic
`cylinder of USP 5,819,851 (the US equivalent of Dallas
`‘118) is used to “lock” the mandrel in an operative
`position.
`Wrong! Inventor Dallas represented to the PTO that
`the tool of the ‘851 patent (which is the same as Dallas
`‘118) was proven to be an effective tool that was readily
`and widely accepted in the industry.
`Wrong! “Setting tool” is not defined; there is no clear
`disclaimer; and the ‘053 hydraulic cylinder is a setting
`tool if the Dallas ‘118 hydraulic cylinder is a setting tool.
`
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`Hydraulic Pressure Locks the Second Lockdown Mechanism
`
`“Pressurized hydraulic fluid is injected into the
`upper port 88 of the cylinder 74 while the hydraulic
`fluid below the piston 84 us drained from the
`lower port 90 so the mandrel 72 is forced
`downwardly to pack off against the fixed point 24
`under a force P2 exerted on the piston by the
`pressurized hydraulic fluid, as shown in Fig. 7.
`The mandrel head 26 is thus forced downwardly
`over a distance ‘C’ so that the space between the
`mandrel head 26 and the upper wall 76 of the
`cylinder is reduced to B-C. The mandrel is locked
`down in its operative position by the hydraulic
`force P2.”
`
`Col. 8, ll. 21 – 31.
`
`GEG Rep., 6-7
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`Hydraulic Pressure Locks the Second Lockdown Mechanism
`
`2. An apparatus as claimed in claim 1 wherein the second
`lockdown mechanism comprises a first member connected to
`the mandrel and a second member connected to the locking
`member of the first lockdown mechanism, the first and the
`second members being linked to permit movement with
`respect to each other within the range of adjustment.
`
`8. An apparatus as claimed in claim 2 wherein the first
`member of the second lockdown mechanism includes a
`piston fixed to the mandrel and the second member of the
`second lockdown mechanism includes a cylinder connected
`with the locking member of the first lockdown mechanism, the
`piston being adapted to be reciprocated within the cylinder
`using fluid pressure.
`
`GEG Rep., 10
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`Hydraulic Pressure Locks the Second Lockdown Mechanism
`
`2. An apparatus as claimed in claim 1 wherein the second
`lockdown mechanism comprises a first member connected to
`the mandrel and a second member connected to the locking
`member of the first lockdown mechanism, the first and the
`second members being linked to permit movement with
`respect to each other within the range of adjustment.
`
`8. An apparatus as claimed in claim 2 wherein the first
`member of the second lockdown mechanism includes a
`piston fixed to the mandrel and the second member of the
`second lockdown mechanism includes a cylinder connected
`with the locking member of the first lockdown mechanism, the
`piston being adapted to be reciprocated within the cylinder
`using fluid pressure.
`
`10. An apparatus as claimed in claim 8 wherein the second
`lockdown mechanism comprises a mechanical locking
`mechanism adapted to ensure the mandrel is maintained in
`the operative position in the event that the fluid pressure is
`lost.
`
`GEG Rep., 10-11
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`The Dallas '118 Mandrel is “Locked” by Hydraulic Pressure
`
`USP 5,819,851 is the U.S. equivalent of Dallas '118. The
`‘053 patent states that “The mandrel can be secured at any
`location within the annular cavity by maintaining the hydraulic
`pressure in the annular cavity after the mandrel is packed-off
`against the bit guide” and that the piston and cylinder of the
`‘851 (and Dallas '118) “hydraulically lock” the mandrel in an
`operative position.
`‘053 Patent, Col. 2 ll. 48 – 54
`
`GEG Rep., 4-5
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`Dallas ‘118 is Enabling
`
`OSES argues that inventor Dallas built a Dallas '118 tool in 1997 and the tool did not work
`
`•
`
`•
`
`•
`
`In June of 1999, Mr. Dallas represented to the USPTO that the Dallas '118 tool was “readily
`accepted in the industry” and “proven to be an effective tool which reduces the cost of well
`stimulation treatments . . . “ ‘993 Patent at col. 1, ll. 56 – 59
`
`In August of 1999, Mr. Dallas represented to the USPTO that the Dallas '118 tool was “widely
`accepted in the industry” and was “very convenient for securing a mandrel of a well tool in the
`operative position requiring fixed-point packoff in the well.” ‘053 Patent at col. 2, ll. 59 – 62 .
`
`In 1999, Mr. Dallas represented to the Canadian Patent Office that the Dallas '118 tool was being
`used commercially in Canada
`
`• Mr. Dallas actually built 2 tools and used them over several years
`
`• Mr. Dallas admitted that his tools were designed for low pressure and worked at low pressure
`(the ‘053 claims have no pressure limitations)
`
`• Greene’s expert, Mr. Shackelford testified that one of ordinary skill in the art could build a Dallas
`‘118 tool based on the Dallas ‘118 teachings
`
`GEG Rep., 5-6
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`The Claim Language does not Require the Second Lockdown Mechanism to be
`“Separate from the Setting Tool”
`
`• OSES’ proposal implies that the claims should be interpreted to require “a setting tool”
`and that the second lockdown mechanism be “separate from the setting tool.”
`
`• OSES’ proposal improperly reads limitations into the claims without a clear and
`unambiguous disclaimer
`
`• OSES does not define the term “setting tool”
`
`• The term “setting tool” is non-specific
`
`• OSES calls the hydraulic cylinder and piston of Dallas '118 a “setting tool”
`
`• The ‘053 cylinder and piston of the second embodiment functions the same as the Dallas
`'118 hydraulic cylinder and piston and therefore must also be a setting tool
`
`GEG Rep., 11-13
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`Second Lockdown Mechanism
`
`Dallas '118
`cylinder and
`piston
`
`‘053 second
`embodiment
`cylinder and
`piston
`
`GEG Rep., 12
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`U.S. Patent 6,179,053 – Claim 22
`
`Claim 22 was not argued separately by OSES:
`
`22. A method for lockdown of a mandrel of a well tool in an operative position in which the mandrel is packed
`off against a fixed-point in the well, comprising steps of:
`a) mounting above a wellhead of the well an apparatus for securing the mandrel of the well tool in the operative
`position, comprising a first and a second lockdown mechanism arranged so that the mandrel is locked in
`the operative position only when both the first and second lockdown mechanisms are in respective
`lockdown positions; the first lockdown mechanism being adapted to detachably maintain the mandrel
`in proximity to the fixed-point for packoff, and including a base member for connection to a top of a
`wellhead of the well and a locking member for detachably engaging the base member; and the second
`lockdown mechanism having a range of adjustment to ensure that the mandrel can be moved into the
`operative position and locked down in the operative position while the first lockdown mechanism is in
`the lockdown position;
`b) after inserting the mandrel through the wellhead into proximity to the fixed-point in the well, engaging the
`locking member of the first lockdown mechanism with the base member so that the mandrel is only moveable
`within the range of adjustment;
`c) moving the mandrel into the operative position if the mandrel is not yet packed off against the fixed-point;
`and
`d) locking the second lockdown mechanism in the lockdown position.
`
`GEG Pet., 45
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`U.S. Patent 6,179,053 – Claim 22
`
`Claim 22 was not argued separately by OSES:
`b) after inserting the mandrel through the wellhead into proximity to the fixed-point in the well, engaging the
`locking member of the first lockdown mechanism with the base member so that the mandrel is only
`moveable within the range of adjustment;
`
`When the Dallas '118 tool is “mounted”
`Dallas ‘118’s mandrel 28 necessarily is
`inserted through the wellhead because
`its length is longer than the length of
`annular cavity 26 used when
`the mandrel is locked down. At
`the point of “mounting,” Dallas ‘118’s
`mandrel 28 is maintained a distance
`from the bit guide 84 or “fixed-point
`packoff”
`
`GEG Rep., 6-7
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`Second Lockdown Mechanism
`
`Dallas '118 cylinder and piston
`
`GEG Pet., 24
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`Second Lockdown Mechanism
`
`Dallas '118 cylinder and piston
`
`GEG Pet., p. 45-46
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`U.S. Patent 6,179,053 – Claim 22
`
`Claim 22 was not argued separately by OSES:
`b) after inserting the mandrel through the wellhead into proximity to the fixed-point in the well, engaging the
`locking member of the first lockdown mechanism with the base member so that the mandrel is only
`moveable within the range of adjustment;
`
`When the Dallas '118 tool is “mounted”
`Dallas ‘118’s mandrel 28 necessarily is
`inserted through the wellhead because
`its length is longer than the length of
`annular cavity 26 used when
`the mandrel is locked down. At
`the point of “mounting,” Dallas ‘118’s
`mandrel 28 is maintained a distance
`from the bit guide 84 or “fixed-point
`packoff”
`
`OSES does not dispute that Dallas '118 meets this limitation
`
`GEG Pet., p. 45-46
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`OSES’ Motion to Amend
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`U.S. Patent 6,179,053 – Proposed Amendments
`
`28. (Proposed Substitute Claim for Claim 1) An apparatus for securing a mandrel of a well tool in an operative
`position requiring fixed-point packoff above the casing of the well and within a tubing head spool of a [in the]
`wellhead assembly, the apparatus comprising:
`
`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;
`
`a first and a second mechanical lockdown mechanism that are separate from the setting tool and arranged so that
`the mandrel is locked in the operative position only when both the first and the second mechanical lockdown
`mechanism are in respective lockdown positions;
`
`the first mechanical lockdown mechanism adapted to detachably maintain the mandrel in proximity to the fixed-
`point packoff when in the lockdown position, the first mechanical lockdown 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 second mechanical lockdown mechanism having a range of adjustment adequate to ensure that the mandrel
`can be moved into the operative position, and then locked down in the operative position without the use of
`hydraulic pressure while the first mechanical lockdown mechanism is in the lockdown position; and
`
`the mandrel including a packoff assembly that seals against the fixed-point packoff within the tubing head spool.
`
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`U.S. Patent 6,179,053 – Proposed Amendments
`
`29. (Proposed Substitute Claim for Claim 22) A method for lockdown of a mandrel of a well tool in an operative position in which the mandrel is packed off
`against a fixed-point above the casing of the well and within a tubing head spool of a [in the] wellhead assembly, the method comprising steps of:
`
`a) mounting above a wellhead of the well an apparatus for securing the mandrel of the well tool in the operative position, comprising:
`
`i) 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;
`
`ii) a first and a second mechanical lockdown mechanism that are separate from the setting tool and arranged so that the mandrel is locked in
`the operative position only when both the first and second mechanical lockdown mechanisms are in respective lockdown positions;
`
`iii) the first mechanical lockdown mechanism being adapted to detachably maintain the mandrel in proximity to the fixed-point for packoff, and
`including a base member for connection to a top of a wellhead of the well and a locking member for detachably engaging the base member; [and]
`
`iv) the second mechanical lockdown mechanism having a range of adjustment to ensure that the mandrel can be moved into the operative
`position, and then locked down in the operative position without the use of hydraulic pressure while the first mechanical lockdown mechanism is in the
`lockdown position; and
`
`v) the mandrel including a packoff assembly that seals against the fixed-point packoff within the tubing head spool;
`
`b) after inserting the mandrel through the wellhead into proximity to the fixed-point in the well, engaging the locking member of the first lockdown mechanism
`with the base member so that the mandrel is only moveable within the range of adjustment;
`
`c) moving the mandrel into the operative position if the mandrel is not yet packed off against the fixed-point; [and]
`
`d) locking the second lockdown mechanism in the lockdown position; and
`
`e) removing the setting tool from the well tool.
`
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`OSES Proposed Amendments
`
`Oil States’ Amendments
`The fixed-point packoff is “above the casing of the
`well and within a tubing head spool of a wellhead
`assembly.”
`The first lockdown mechanism is mechanical
`“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.”
`
`Greene’s
`Shown identically in Dallas '118.
`
`Shown identically in Dallas.
`'118 Required by Dallas '118 or
`obvious in view of Dallas '118.
`
`The second lockdown mechanism locks the mandrel
`without the use of hydraulic pressure
`
`Obvious over Dallas '118 in view
`of McLeod or Dallas ‘202.
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`Dallas ‘118 Has a Fixed-point packoff above the casing within a tubing head spool of a wellhead assembly
`
`“An apparatus for securing a mandrel of a well tool in an
`operative position requiring fixed-point packoff above the
`casing of the well and within a tubing head spool of a [in
`the] wellhead assembly,”
`
`“the mandrel including a packoff assembly that seals
`against the fixed-point packoff within the tubing head
`spool”
`
`Cylinder
`
`Piston
`
`Mandrel
`
`Mandrel extension
`Mandrel packoff assembly
`
`Tubing head spool
`
`“fixed point “ bit guide in tubing head spool
`Casing
`
`GEG MTA Opp, pp. 2-3
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`Dallas ‘118 has a first mechanical lockdown mechanism
`
`Cylinder
`
`Piston
`
`Mandrel
`
`“a first . . . mechanical lockdown mechanism ”
`
`Mandrel extension
`Mandrel packoff assembly
`
`Tubing head spool
`
`“fixed point “ bit guide in tubing head spool
`Casing
`
`GEG MTA Opp, p. 2-3
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`Dallas ‘118 requires a setting tool removable from the other portions of the apparatus
`
`“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”
`
`A tool is needed to insert the mandrel extension of Dallas ‘118:
`
`Q. Right. So the ’118 patent actually teaches that the extension should
`be protruding below the bottom of the cylinder; isn't that correct?
`A. In Figure 3, yes.
`Q. Yes. So if it’s protruding below the bottom of the cylinder, then you
`do need some other implement to put it into the well in the first place;
`isn’t that correct?
`A. That’s possible.
`Q. Okay. And one could call that implement a setting tool, if one
`desired, couldn’t they?
`A. People can use whatever names they like.
`
`Wooley Dep., 55:24-56:14.
`
`GEG MTA Opp, p. 3-6
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`Dallas ‘118 requires a setting tool removable from the other portions of the apparatus
`
`“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”
`
`Q. Well, what is a setting tool, then?
`A. A setting tool is usually the name given to a device for
`inserting some sort of tool that's used in a lot of different
`applications. It's used in more than just these applications.
`Q. Okay.
`A. There are setting tools for all types of devices, and they're not the
`same. That's why I say the terminology isn't precise. Setting tools
`for one application can be quite different than setting tools for another
`application.
`Q. I mean, I think -- I believe that we just agreed that to use the tool
`of Figure 4 of the Canadian '118 application, some form of a tool
`is required to insert the mandrel extension into the wellhead. Did
`we not agree on that?
`A. I think that's fair to say. The tool may be a crane, but there's
`some means you have to lift it up and insert the mandrel inside, if
`there's an extension that's below the baseplate on the tool.
`
`GEG MTA Opp, p. 3-6
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`Second Lockdown Mechanism
`
`Dallas '118 cylinder and piston
`
`GEG MTA Opp, p. 3-6
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`Second Lockdown Mechanism
`
`Dallas '118 cylinder and piston
`
`GEG MTA Opp, p. 3-6
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`Dallas ‘118 requires a setting tool removable from the other portions of the apparatus
`
`‘053 Fig. 8
`
`GEG MTA Opp, p. 3-6
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`Dallas ‘118 requires a setting tool removable from the other portions of the apparatus
`
`‘053 Fig. 8
`
`GEG MTA Opp, p. 3-6
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`Dallas requires a setting tool removable from the other portions of the apparatus
`
`“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”
`
`• OSES failed to meet its burden to show how a “setting tool” distinguishes over the prior art.
`
`• OSES failed to construe “setting tool” and never provided any construction that would preclude a crane from
`being a “setting tool.”
`
`•
`
`In its reply, OSES argues that a “setting tool” is defined in the amended claims as: (1) “arranged to insert a
`bottom end of the mandrel through the wellhead”; and (2) “separate from” the first and second lockdown
`mechanisms and thus “removable from the other portions of the apparatus.”
`
`• OSES did not dispute that Dallas '118 meets the limitation in claim 22 of “inserting the mandrel
`through the wellhead into proximity to the fixed-point in the well.”
`
`• Dr. Wooley acknowledges that a tool such as a crane can be used to insert the Dallas '118 mandrel
`into a wellhead.
`
`• A “crane” therefore must meet OSES new definition of a “setting tool”
`
`GEG MTA Opp, pp. 3-5
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`Dallas ‘118 requires a setting tool removable from the other portions of the apparatus
`
`Claim 22 was not argued separately by OSES:
`b) after inserting the mandrel through the wellhead into proximity to the fixed-point in the well, engaging
`the locking member of the first lockdown mechanism with the base member so that the mandrel is only
`moveable within the range of adjustment;
`
`When the Dallas '118 tool is “mounted”
`Dallas ‘118’s mandrel 28 necessarily is
`inserted through the wellhead because
`its length is longer than the length of
`annular cavity 26 used when
`the mandrel is locked down. At
`the point of “mounting,” Dallas ‘118’s
`mandrel 28 is maintained a distance
`from the bit guide 84 or “fixed-point
`packoff”
`
`OSES does not dispute that Dallas '118 meets this limitation
`
`GEG Pet., p. 45-46
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`Dallas ‘118 requires a setting tool removable from the other portions of the apparatus
`
`“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”
`
`• OSES also failed to explain why it would not be obvious to use the same prior art “setting tool” mentioned in
`the ‘053 patent.
`
`•
`
`the ’053 patent does not purport to have invented a separate “setting tool.”
`
`• Rather, the ’053 patent refers to known prior art tools as “setting tools.” ’053 patent, 8:43-48; 9:67-
`10:12. For example, the separate “setting tool” shown in Figs. 8 and 9 of the ’053 patent is the tool
`disclosed in another one of Mr. Dallas’s prior art patents, U.S. Patent No. 4,867,243 (the “’243 patent”)
`(Ex. 1022). ’053 patent, 8:43-48.
`
`• OSES motion fails to mention any prior art “setting tool”
`
`•
`
`It would have been obvious to one of ordinary skill in the art to use a prior art “setting tool” to insert the
`mandrel of Dallas ‘118 into a wellhead. Perkin Decl., Ex. 1014, ¶¶ 55-59.
`
`GEG MTA Opp, p. 6
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`The second lockdown mechanism locks the mandrel without the use of hydraulic pressure
`
`• U.S. Patent 4,632,183 (McLeod)
`
`•
`
`Issued Dec. 30, 1986
`
`• Teaches mechanical lockdown is
`superior to hydraulic lockdown
`
`GEG MTA Opp, pp. 7-9
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`The second lockdown mechanism locks the mandrel without the use of hydraulic pressure
`
`1:7-28
`GEG MTA Opp, p. 7-9
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`The second lockdown mechanism locks the mandrel without the use of hydraulic pressure
`
`1:29-42
`
`GEG MTA Opp, p. 7
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`The second lockdown mechanism locks the mandrel without the use of hydraulic pressure
`
`OSES failed to mention, let alone distinguish, over numerous prior art references that teach the desirability of substituting or
`supplementing a hydraulic wellhead isolation actuator with a mechanical actuator:
`
`•
`
`U.S. Pat. No. 4,632,183 (“McLeod”) (Ex. 1004) discloses that:
`
`–
`
`–
`
`–
`
`Drive systems for inserting high pressure tubing using hydraulic cylinders were known in the art, including Canadian Pat. No. 1,094,945 (which is equivalent
`to U.S. Patent 4,241,786 (“Bullen”) (Ex. 2020)), which uses one or a pair of hydraulic cylinders to insert and hold a mandrel of a wellhead isolation tool in an
`operative position.
`
`McLeod discloses that hydraulic cylinders generally function in an acceptable manner, but “. . . have seals which can leak and cause
`movement problems and sometimes complete failure of the system.” McLeod, 1:19-22.
`
`To avoid the potential problems with hydraulic systems, McLeod teaches using a self-locking screw jack in place of the hydraulic cylinder of
`Bullen for inserting and holding a mandrel of a wellhead isolation tool in position. Based on this teaching, McLeod suggests a system in which
`the mandrel is held in position with a mechanical mechanism. See also Perkin Decl., ¶¶ 63-65.
`
`•
`
`•
`
`Bullen itself even teaches that mechanical locking mechanisms, such as latches and screwed unions, can be used to reinforce
`hydraulic cylinders. Bullen, 4:25-37; see also Perkin Decl., ¶ 67.
`
`U.S. Patent 5,372,202 (“Dallas ’202”) (Ex. 1021) also teaches that a mechanical system for inserting and holding an isolation
`tool mandrel is more reliable than a purely hydraulic system:
`
`–
`
`In addition, the ball screw 90 can be locked in any position even in the event that hydraulic pressure to the drive motor (not illustrated) is lost
`due to a mechanical malfunction or a hydraulic seal rupture. This ensures that a mandrel cannot be ejected from a well during a well
`stimulation operation. Dallas ’202, 9:55-61; Perkin Decl., ¶¶ 66, 72.
`
`GEG MTA Opp, p. 7-9
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`OSES FAILED TO DEMONSTRATE COMMERCIAL SUCCESS
`
`•
`
`“Full Bore Access” is necessary for OSES commercial embodiment to be commercially
`useful:
`
`– By having full bore access, i.e, the isolation tool mandrel has an inner diameter substantially the
`same as the inner diameter of the well casing, the wellhead isolation tool is able to provide
`access to a casing such that fracking fluids, plugs and perforating guns can be run through the
`tool without the diameter of the mandrel creating any sort of obst