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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`GREENE’S ENERGY GROUP, LLC,
`
`Petitioner,
`
`v.
`
`OIL STATES ENERGY SERVICES, LLC,
`
`Patent Owner.
`
`
`
`Case IPR2014-00216
`
`Patent No. 6,179,053
`
`PATENT OWNER PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
`
`
`
`EXHIBIT B
`
`
`
`
`
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`
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`

`

`IN TilE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`RECEJVED
`
`JUL 2 4 2.007
`HOWREY LLP
`
`STINGER WELLHEAD PROTECTION, INC.,
`
`CIVIL ACTION NO. 2:06cv481 (TJW)
`
`and
`
`JURY DEMANDED
`
`OIL STATES ENERGY SERVICES, INC.,
`
`v.
`
`Plaintiffs,
`
`GUARDIAN WELLHEAD PROTECTION, INC.
`a/k/a GUARDIAN WELLHEAD SPECIALTIES
`
`Defendant.
`
`DEFENDANT GUARDIAN WELLHEAD
`PROTECTION, INC.'S INVALIDITY CONTENTIONS
`
`Pursuant to the Court's May 23, 2007 Order and the Rules of Practice for Patent Cases
`
`before the Eastern District of Texas ("Patent Rules" or "P.R."), Defendant Guardian Wellhead
`
`Protection, Inc. ("Guardian") hereby discloses its Invalidity Contentions for U.S. Patent No.
`
`6,289,993 ("the '993 Patent"), U.S. Patent No. 6,817,423 ("the '423 Patent"), and U.S. Patent No.
`
`6,179,053 ("the '053 Patent") (collectively referred to as "the Patents-in-Suit") as follows:
`
`Stinger Wellhead Protection, Inc.'s ("Stinger's") asserted patents are related to the
`
`wellhead isolation service industry and list L. Murray Dallas as the inventor. Stinger asserts
`
`claims 1, 2, 27, 30, and 32 of the '993 Patent, claims 1 and 14-15 ofthe '423 Patent, and claim 14
`
`of the '053 Patent in the above-styled litigation. The Court has not yet construed any claim of the
`
`

`

`Patents-in-Suit. Guardian's Invalidity Contentions arc based in whole or in part on its present
`
`understanding of the asserted claims of the Patents-in-Suit and/or the constructions that Guardian
`
`believes Stinger to be asserting based on Stinger's Infringement Contentions, whether or not
`
`Guardian agrees with such claim constructions. It is noted that Stinger's Infringement
`
`Contentions are deficient in several key aspects, including, for example, the failure to
`
`specifically identify each accused apparatus and identify "specifically where each element of
`
`each asserted claim is found within each Accused Instrumentality" as required by P.R. 3-l(b)-(c).
`
`Instead, Stinger has grouped several different product designs under the broad label "Guardian
`
`Protector Tool." This is so despite that fact that all of Guardian's relevant designs have been
`
`disclosed to Stinger along with technical drawings and photographs of the accused Guardian
`
`tools. These deficiencies left Guardian unable to fully understand how Stinger is asserting
`
`Patents-in-Suit against Guardian. 1 Accordingly, Guardian's Invalidity Contentions set forth
`
`below and in the attached exhibits are subject to modification, amendment, or supplementation,
`
`to the full extent allowed by the Local Patent Rules?
`
`The references cited in Exhibits A, B, and C (claim charts) may disclose the elements of
`
`the asserted claims either explicitly and/or inherently and/or may be relied upon to show the state
`
`of the art in the relevant timeframes and/or may be relied upon to show a motivation to combine
`
`asserted references. The suggested obviousness combinations are in the alternative to
`
`Guardian's anticipation contentions and are not to be construed to suggest that any reference
`
`1 In its Infringement Contentions, Stinger appears to mix and match elements from the several
`Guardian designs to manufacture a case for infringement. This failure to comply with the Local
`Patent Rules is enhanced by Stinger's failure to separate the Infringement Contentions relevant
`to each accused Guardian design.
`2 Stinger has also failed to provide a full copy of the file history for the '993 patent with its
`Infringement Contentions, as required by P.R. 3-2(c). Prior to filing its contentions, Stinger
`provided a limited portion of the '993 file history.
`
`DEFENDANT GUARDIAN WELLHEAD PROTECTION, INC.'S INVALIDITY CONTENTIONS
`
`PAGE2
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`

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`included in the combinations is not anticipatory. In particular, Guardian is currently unaware of
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`the extent, if any, to which Stinger will contend that limitations of the claims at issue are not
`
`disclosed in the art identified by Guardian as anticipatory. To the extent that an issue arises with
`
`respect to any such limitation, Guardian reserves the right to identify other references and
`
`combinations, which may make obvious the addition of the allegedly missing limitation to the
`
`disclosed device or its characteristics.
`
`Guardian provides citations to exemplary portions of the prior art for the purpose of fairly
`
`disclosing Guardian's invalidity contentions. Guardian reserves the right to supplement its
`
`contentions with additional citations and evidence. To the extent that the following contentions
`
`reflect constructions of claim limitations consistent with or implicit in Stinger's Infringement
`
`Contentions, no inference is intended nor should any be drawn that Guardian agrees with
`
`Stinger's claim constructions, and Guardian expressly reserves its right to contest such claim
`
`constructions. Further, no inference is intended nor should any be drawn that the claim
`
`limitations satisfy 35 U.S.C. § 112, and Guardian reserves the right to contend otherwise.
`
`I.
`
`U.S. Patent No. 6,289,993
`
`A.
`
`P.R. 3-3(a), (b) and (c)
`
`1.
`
`Anticipation
`
`Claims 1, 2, 27, 30, and 32 of the '993 Patent are invalid as anticipated under 35 U.S.C. §
`
`102 in view ofthe prior art references listed in Table 2 of Exhibit A. Exhibit A is a chart
`
`identifying specific examples of where each limitation of claims 1, 2, 27, 30, and 32 is found in
`
`these references. The complete citation for each of these references is provided in Table 1 of
`
`Exhibit A. Table 1 of Exhibit A identifies each prior art patent by its number, country of origin,
`
`and date of issue.
`
`DEFENDANT GUARDIAN WELLHEAD PROTECTION, INC.'S INVALIDITY CONTENTIONS
`
`PAGE3
`
`

`

`2.
`
`Obviousness & Motivation to Combine
`
`The alleged invention in the asserted claims of the '993 Patent is a simple combination of
`
`two prior art wellhead tool features: an annular seal at the bottom end of a mandrel for sealing
`
`engagement with a top of a well casing, and a "mechanicallockdown mechanism" for securing
`
`the mandrel in place once the above described sealing engagement occurred. Both features and
`
`their underlying concepts were well known in the art at the time of invention. One of skill would
`
`have been motivated to combine those concepts for all the reasons each is advantageous and
`
`complimentary.
`
`The asserted '993 claims merely combine well-known elements from the prior art in an
`
`obvious manner. See KSR Int'l Co. v. Telejlex, Inc., 127 S. Ct. 1727, 1739-40 (2007). Each
`
`reference contained in Exhibit A contains numerous disclosures regarding the known methods
`
`and systems that are identical to each and every limitation of the asserted claims. Further, these
`
`references are all directed to a common need and problem known in the field as of the filing date
`
`(invention date) of the Stinger Patents-In-Suit, the very same need and problem described in the
`
`Background of the Invention and Summary of the Invention portions of the Specification(cid:173)
`
`efficient and safe equipment for servicing oil and gas wells and, in particular, an apparatus and
`
`method for isolating wellheads and wellhead components such as blowout protectors. See KSR,
`
`127 S. Ct. at 1742. To a person of ordinary skill and creativity, the asserted claims represent
`
`solutions that would have been obvious to try with predictable results. KSR, 127 S. Ct. 1742.
`
`Thus, the interrelated teachings of the references combined in Exhibit A, the effects of demands
`
`present and known in the marketplace, and the knowledge of one of ordinary skill in the art as of
`
`the date of Stinger's alleged inventions all demonstrate multiple reasons for combining the
`
`asserted prior art references of Exhibit A in the manner claimed in the Stinger patents. See KSR,
`
`DEFENDANT GUARDIAN WELLHEAD PROTECTION, INC.'S INVALIDITY CONTENTIONS
`
`PAGE4
`
`

`

`127 S. Ct. at 1740-41. The prior art obviousness combinations below are not intended to be
`
`exhaustive, but merely as examples of the motivation to combine a group ofreferences rendering
`
`the claims obvious and therefore invalid.
`
`I. Claims 1, 2, 27, 30, and 32 ofthe '993 Patent are invalid as obvious under 35 U.S.C. §
`
`103 in view of the prior art references listed in Table 2 of Exhibit A in combination with what
`
`was known to a person of ordinary skill in the art at the time of the alleged invention (as
`
`disclosed in the '993 Patent and otherwise in the cited references). For example, a person of
`
`ordinary skill in the art at the time of the invention would have been motivated to combine one or
`
`more of the references listed in Table 2 of Exhibit A with the knowledge of one of ordinary skill
`
`in the art. The disclosure ofthe references listed in Table 2 of Exhibit A is related to "wellhead
`
`equipment, and in particular to a wellhead isolation tool useful in isolating wellhead equipment
`
`from the extreme pressures, abrasive and/or caustic substances used in well stimulation
`
`treatments." ('202 Patent, Col. 1 ll. 1 0-15). These prior art references implicitly, if not
`
`explicitly, disclose an annular seal at the bottom end of the mandrel for sealingly engaging a top
`
`of casing/bit guide. (' 851 Patent, Col. 3 11. 43-46, 51-54 ("[T]he mandrel bottom end including
`
`annular sealing means for height pressure sealing engagement with a top end of a casing well"
`
`and "the mandrel of the apparatus [is inserted] through the blowout preventer until the annular
`
`sealing means is in fluid tight sealing engagement with a top ofthe casing of the well"); '851
`
`Patent, Col. 8 ll. 60-64 ("The bit guide 84 is a common component of wellhead assemblies and it
`
`caps the casing 52 to protect the top end of the casing 52 and a casing spool 86 in a manner well
`
`known in the art"); '202 Patent, Col. 1 11. 47-49 ("[T]he lower end of the tubing being sealed or
`
`packed off in the production robing or casing ofthe well)). In addition, these prior art references
`
`disclose a mechanical mechanism which "once the tube 114 has been lowered to its desired
`
`DEFENDANT GUARDIAN WELLHEAD PROTECTION, INC.'S INVALIDITY CONTENTIONS
`
`PAGES
`
`

`

`position a lock ring 60 tlu-eadably [sic] engages a screw collar 62 to lock the tree saver mandrel
`
`tube 114 in place." ('183 Patent, Col. 3 ll. 10-14). The annular seal feature helps "provide a
`
`protector for a BOP which protects the BOP from well stimulation pressures and fluids without
`
`restricting access to the well casing,"(' 851 Patent Col. 2 ll. 45-49), while the lockdown
`
`mechanism "locks down the mandrel 1 0 during well stimulation" to help it withstand the upward
`
`hydraulic tmust. ('403 Patent, Col. 7 11. 22-23). A person of ordinary skill in the art at the time
`
`of the invention would have been motivated to combine these two features to obtain greater
`
`access through the mandrel to the well and maintain the mandrel's position when faced with
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`extreme upward pressures during well stimulation procedures.
`
`II. Claims 1, 2, 27, 30, and 32 ofthe '993 Patent are invalid as obvious under 35 U.S.C.
`
`§ 103 in view of any one or more of the prior art references listed in Table 3 of Exhibit A in
`
`combination with the '851 prior art patent. For example, a person of ordinary skill in the art at
`
`the time of the invention would have been motivated to combine any one or more of the prior art
`
`references listed in Table 3 of Exhibit A in combination with the '851 prior art reference. The
`
`'851 Patent discloses a blowout preventer protector for using during high pressure well
`
`stimulation and describes a tool mandrel that includes "an annular seal at a bottom end for
`
`sealingly engaging a bit guide attached to a top ofthe casing." ('851 Patent, Abstract). The
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`concept of mechanically locking the mandrel into its operative position was well known in the
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`prior art. For example, the '243 Patent clearly discloses the location and structure of such a
`
`mechanicallockdown mechanism, ('243 Patent, Figs. 2a, 2b, 3a), and provides the motivation to
`
`one skilled in the art to combine the advantages of this concept (safety) with the advantages of
`
`the annular seal (accessibility). Thus, it would have been obvious to a person of ordinary skill in
`
`the art at the time of the invention to combine any one or more of the references listed in Table 3
`
`DEFENDANT GUARDIAN WELLHEAD PROTECTION, INC.'S INVALIDITY CONTENTIONS
`
`PAGE 6
`
`

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`of Exhibit A with the '851 prior art reference in order to build a safer more accessible wellhead
`
`isolation tool.
`
`III. Claims 1, 2, 27, 30, and 32 ofthe '993 Patent are invalid under 35 U.S.C. § 103 in
`
`view of any one or more of the prior art references listed in Table 4 of Exhibit A in combination
`
`with the '865 prior art patent. For example, a person of ordinary skill in the art at the time of the
`
`invention would have been motivated to combine any one or more of the prior art references
`
`listed in Table 4 of Exhibit A in combination with the '865 prior art reference. The '865 Patent
`
`discloses a wellhead isolation tool for "isolating the wellhead equipment from the high pressure
`
`fluids pumped down" during well stimulation, ('865 Patent, Abstract), and describes a locking
`
`nut that threadedly engages a top of the mandrel and, when the mandrel is in the operative
`
`position, the locking nut threadedly engages a bonnet which is attached to the main body of the
`
`tool which in turn is mounted to the BOP and the wellhead. ('865 Patent, Col. 3 11. 32-36). In
`
`addition to the '865 Patent, the concept of annular seal is described in the references listed in
`
`Table 4 of Exhibit A such as the '851 Patent. As mentioned above, the annular seal disclosed in
`
`the '851 patent is attached to the lower end of the mandrel forming a "fluid tight sealing
`
`engagement with a top of the casing ofthe well." ( '851 Patent, Col. 3 ll. 43-46, 51-54).
`
`Similarly, the annular seal in the '865 Patent is an "elastomeric sealing medium" for sealing the
`
`mandrel to the casing "thus isolating the wellhead equipment from the pressure and fluid being
`
`pumped into the tubing or casing." ('865 Patent, Col. 1 ll. 55-57). It would have been obvious
`
`and to one skilled in the art at the time of the invention that combining in a wellhead isolation
`
`tool, mechanical locking mechanism to secure a mandrel with an annular seal at the bottom end
`
`of such mandrel to isolate BOP's and other wellhead equipment is advantageous.
`
`DEFENDANT GUARDIAN WELLHEAD PROTECTION, INC.'S INVALIDITY CONTENTIONS
`
`PAGE7
`
`

`

`IV. Claims 1, 2, 27, 30, and 32 ofthe '993 Patent are invalid under 35 U.S.C. § 103 in
`
`view of the prior art reference listed in Table 5 of Exhibit A in combination with the '183 and
`
`'851 prior art patents. Exhibit A is a chmi identifying specific examples of where each limitation
`
`of claims 1, 2, 27, 30, and 32 is found in these references. The complete citation for each of
`
`these references is provided in Table 1 of Exhibit A. For example, a person of ordinary skill in
`
`the art at the time of the invention would have been motivated to combine the prior art reference
`
`listed in Table 5 of Exhibit A in combination with the '183 and '851 prior art references. The
`
`'183 Patent discloses a mechanical mechanism which "once the tube 114 has been lowered to its
`
`desired position a lock ring 60 threadably [sic] engages a screw collar 62 to lock the tree saver
`
`mandrel tube 114 in place," (' 183 Patent, Col. 3 ll. 1 0-14), while the '851 Patent discloses an
`
`annular seal attached to the lower end of the mandrel forming a "fluid tight sealing engagement
`
`with a top ofthe casing ofthe well." ('851 Patent, Col. 3 ll. 43-46, 51-54). The advantages of
`
`the lockdown mechanism and the annular seal are discussed above. With them in mind, a person
`
`of ordinary skill in the art would have been motivated to combine the teachings of the '183 and
`
`'851 patents with the wellhead isolation know-how disclosed in the reference listed in Table 5.
`
`Therefore, It would have been obvious to a person of ordinary skill in the art at the time of the
`
`invention to use such disclosure and know-how to make a wellhead isolation tool for protecting
`
`BOP's and other wellhead equipment while utilizing an annular seal that would give the most
`
`access (largest diameter) to the well bore using a safe mechanically locked mandrel.
`
`V. Claim 32 ofthe '993 Patent is invalid under 35 U.S.C. § 103 in view ofthe prior art
`
`reference listed in Table 2 of Exhibit A in combination with the prior art reference listed in Table
`
`6 of Exhibit A. Exhibit A is a chart identifying specific examples of where each limitation of
`
`claim 32 is found in these references. The complete citation for each of these references is
`
`DEFENDANT GUARDIAN WELLHEAD PROTECTION, INC.'S INVALIDI1Y CONTENTIONS
`
`PAGES
`
`

`

`provided in Table 1 of Exhibit A. For example, a person of ordinary skill in the art at the time of
`
`the invention would have been motivated to combine the prior art reference listed in Table 2 of
`
`Exhibit A in combination with the prior art reference listed in Table 6 of Exhibit A. As
`
`discussed above, the prior art reference listed in Table 2 of Exhibit A disclose a wellhead
`
`isolation tool with an annular seal at the bottom end of the mandrel and a mechanicallockdown
`
`mechanism to secure the mandrel in its operative position with the advantages of greater access
`
`through the mandrel and resistance to upward well pressure. The prior art references listed in
`
`Table 6 of Exhibit A disclose a wellhead tool that includes "a pair of parallel, spaced beams, a
`
`lower one which is attached to the tree," an "upper beam", and high pressure tubing (mandrel)
`
`that is held by the upper beam and is "inserted into or withdrawn from the tree by motor driven
`
`mechanical jack assemblies which lower or raise the upper beam relative to the lower beam."
`
`(' 183 Patent, Abstract, Figs. 3-4). The same concept is disclosed in other references of Table 6
`
`of Exhibit A. ('786 Patent, Figs. 2-3; '253 Patent, Figs. 3-4). The advantage ofthis dual injector
`
`arrangement was to known to include the provision of a "simple, safe, fast, and economic
`
`manner" of performing wellbore operations. ('253 Patent, Col. 3 ll. 32-41). With the advantages
`
`and disclosure illustrated by the prior art references in tables 2 and 6 of Exhibit A, a person of
`
`ordinary skill in the art would have been motivated to combine the teachings of both. Therefore,
`
`It would have been obvious to a person of ordinary skill in the art at the time of the invention to
`
`use such disclosure and know-how to make a wellhead isolation tool for protecting BOP's and
`
`other wellhead equipment while utilizing an annular seal that would give the most access (largest
`
`diameter) to the well bore using a safe mechanically locked mandrel, in combination with a dual
`
`plate/injector arrangement that was known to provide safer, faster and more efficient wellbore
`
`operations.
`
`DEFENDANT GUARDIAN WELLHEAD PROTECTION, INC.'S INVALIDITY CONTENTIONS
`
`PAGE9
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`

`

`II.
`
`U.S. Patent No. 6,817,423
`
`A.
`
`P.R. 3-3(a), (b) and (c)
`
`1.
`
`Anticipation
`
`Claims 1, 14, and 15 ofthe '423 Patent are invalid as anticipated under 35 U.S.C. § 102
`
`in view of the prior art references listed in Table 2 of Exhibit B. Exhibit B is a chart identifying
`
`specific examples of where each limitation of claims 1, 14, and 15 is found in these references.
`
`The complete citation for each of these references is provided in Table 1 of Exhibit B. Table 1
`
`of Exhibit B identifies each prior art patent by its number, country of origin, and date of issue.
`
`2.
`
`Obviousness & Motivation to Combine
`
`The alleged invention of the '423 Patent appears limited to connecting a pair of injectors
`
`between a top plate and a bottom plate and using them to reciprocate a wellhead isolation
`
`mandrel in and out of a BOP or other wellhead equipment. The claimed combination of two
`
`injectors connected to two places was well known in the art at the time of invention. One of skill
`
`would have been motivated to combine those concepts for all the reasons each is advantageous
`
`and complimentary.
`
`The asserted '423 claims merely combine well-known elements from the prior art in an
`
`obvious manner. See KSR Int'l Co. v. Telejlex, Inc., 127 S. Ct. 1727, 1739-40 (2007). Each
`
`reference contained in Exhibit B contains numerous disclosures regarding the known methods
`
`and systems that are identical to each and every limitation of the asserted claims. Further, these
`
`references are all directed to a common need and problem known in the field as of the filing date
`
`(invention date) of the Stinger Patents-In-Suit, the very same need and problem described in the
`
`Background of the Invention and Summary of the Invention portions of the Specification -
`
`efficient and safe equipment for servicing oil and gas wells and, in particular, an apparatus and
`
`DEFENDANT GUARDIAN WELLHEAD PROTECTION, INC.'S INVALIDITY CONTENTIONS
`
`PAGElO
`
`

`

`method for isolating wellheads and wellhead components such as blowout protectors. See KSR,
`
`127 S. Ct. at 1742. To a person of ordinary skill and creativity, the asserted claims represent
`
`solutions that would have been obvious to try with predictable results. KSR, 127 S. Ct. 1742.
`
`Thus, the interrelated teachings of the references combined in Exhibit B, the effects of demands
`
`present and known in the marketplace, and the knowledge of one of ordinary skill in the art as of
`
`the date of Stinger's alleged inventions all demonstrate multiple reasons for combining the
`
`asserted prior art references of Exhibit B in the manner claimed in the Stinger patents. See KSR,
`
`127 S. Ct. at 1740-41. The prior art obviousness combinations below are not intended to be
`
`exhaustive, but merely as examples of the motivation to combine a group of references rendering
`
`the claims obvious and therefore invalid.
`
`I. Claims 1, 14, and 15 ofthe '423 Patent are invalid as obvious under 35 U.S.C. § 103 in
`
`view of the prior art references listed in Table 2 of Exhibit Bin combination with what was
`
`known to a person of ordinary skill in the art at the time of the alleged invention (as disclosed in
`
`the '423 Patent and otherwise in the cited references). For example, a person of ordinary skill in
`
`the art at the time of the invention would have been motivated to combine one or more of the
`
`references listed in Table 2 of Exhibit B with the knowledge of one of ordinary skill in the art.
`
`The references listed in Table 2 of Exhibit B are generally related to wellhead equipment
`
`including isolation tools. The '363 Patent discloses a "wellhead isolation tool permitting a high
`
`fluid flow rate during a well treatment to stimulation production" adapted to be inserted through
`
`the wellhead into an operative position. ('363 Patent, Abstract, Fig. 5). The '183 Patent discloses
`
`a wellhead tool which includes a "pair of parallel, spaced beams, a lower one which is attached
`
`to the [well]tree;" an upper beam that is reciprocated up and down by "motor driven mechanical
`
`jack assemblies" lowering or raising the upper beam relative to the lower beam. (' 183 Patent,
`
`DEFENDANT GUARDIAN WELLHEAD PROTECTION, INC.'S INVALIDITY CONTENTIONS
`
`PAGE 11
`
`

`

`Abstract, Figs. 3-4). Similarly, the '363 Patent tool includes a base plate (58) connected to the
`
`top of the wellhead, (Fig. 5) and a connector plate (110) at the top of the tool. ('363 Patent, Col.
`
`8 ll. 12-13, Fig. 5). In addition, the '363 Patent teaches a method for wellhead isolation wherein
`
`the force applied to reciprocate the mandrel is applied by a pair of parallel, spaced beams, lower
`
`(attached to wellhead) and upper (attached to the mandrel) and wherein the mandrel is inserted
`
`into or withdrawn by jack assemblies which "lower or raise the upper beam with respect to the
`
`lower beam." ('363 Patent, Claim 32). Also similar is the tool in the '253 patent which
`
`comprising a pair of hydraulic injectors and a pair of plates. (Abstract). A person of ordinary
`
`skill in the art at the time of the invention would have been aware of systems and methods for
`
`developing such a drive system for inserting high pressure tubing through, for example, the
`
`valves of wellhead and motivated to combine them with his level of knowledge in order to
`
`provide a "simple, safe, fast, and economic manner" of performing wellhead isolation. ('253
`
`Patent, Col. 3 11. 32-41). Such a process was known and practiced well before the alleged
`
`invention of the '423 Patent.
`
`II. Claims 1, 14, and 15 of the '423 Patent are invalid as obvious under 35 U.S.C. § 103
`
`in view of the '363 prior art reference in combination with the '253 prior art reference. For
`
`example, a person of ordinary skill in the art at the time of the invention would have been
`
`motivated to combine in view of the '363 prior art reference with the '253 prior art reference.
`
`The '363 Patent discloses a "wellhead isolation tool permitting a high fluid flow rate during a
`
`well treatment to stimulation production" adapted to be inserted through the wellhead into an
`
`operative position. ('363 Patent, Abstract, Fig. 5). In addition, the '363 Patent teaches a method
`
`for wellhead isolation wherein the force applied to reciprocate the mandrel is applied by a pair of
`
`parallel, spaced beams, lower (attached to wellhead) and upper (attached to the mandrel) and
`
`DEFENDANT GUARDIAN WELLHEAD PROTECTION, INC.'S INVALIDITY CONTENTIONS
`
`PAGE 12
`
`

`

`wherein the mamlrel is inserted into or withdrawn by jack assemblies which "lower or raise the
`
`upper beam with respect to the lower beam." ('363 Patent, Claim 32). The '253 Patent discloses
`
`"a method and apparatus for the servicing or workover of a hydrocarbon well" comprising a
`
`"pair of hydraulic cylinders mounted to a pair of base beams connected to each other" and a
`
`workover beam attached to the production tubing. ('253 Patent, Abstract). The '363 and '253
`
`patents implicitly, if not explicitly, disclose all the limitations in the asserted claims ofthe '423
`
`Patent and it would have been obvious to one of ordinmy skill in the art at the time of the
`
`invention to slightly modify and combine the ideas disclosed by both patents. Such combination
`
`would be motivated by the goals of providing a "simple, safe, fast, and economic manner for
`
`performing wellbore operations," ('253 Patent, Col. 3 ll. 32-41 ), and ensuring a more stable
`
`wellhead isolation service (two injectors as opposed to one). Thus, it would have been obvious
`
`to a person of ordinary skill in the art at the time of the invention, seeking a safe and stable
`
`wellhead isolation tool, to use a tool with a pair of injectors connected to a pair of plates - one
`
`plate mounted to the mandrel and the other to the wellhead - in order to reciprocate the mandrel
`
`with respect to the wellhead.
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`III. Claims 1, 14, and 15 of the '423 Patent are invalid under 35 U.S.C. § 103 in view the
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`'253 prior art reference in combination with the '363 and' 183 prior art references. For example,
`
`a person of ordinary skill in the art at the time of the invention would have been motivated to
`
`combine the '253, '363, and '183 prior art references. A person skilled in the art at the time of
`
`the invention could have taken the apparatus depicted in Figure 5 and the disclosure of claim 32
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`of the of' 3 63 Patent (discussed above - two jack assemblies and two plates movable with
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`respect to each other) and easily combined that with the two other dual injector designs of the
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`'183 (e.g. Fig. 3) and '253 (e.g., Fig. 4) patents to create a wellhead isolation tool claimed in the
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`'423 patent motivated by the safety, stability, increased loading capacity of two injectors when
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`compared to single injector isolation tools.
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`IV. Claims 1, 14, and 15 ofthe '423 Patent are invalid under 35 U.S.C. § 103 in view the
`
`'993 prior art reference in combination with any one or more of the '363, '253, and' 183 prior art
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`references. For example, a person of ordinary skill in the art at the time of the invention would
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`have been motivated to combine the '993 and '363 prior art references. As discussed above, the
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`'363 Patent discloses an isolation tool adapted for insertion into the wellhead and includes top
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`and bottom plates. ('363 Patent, Fig. 5). Figure 5 of the '363 Patent depicts this arrangement
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`while Claim 32 of the '363 Patent discloses a similar embodiment with dual injectors Gack
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`assemblies) instead of support rods 116. (!d., Claim 32). On the other hand, the '993 Patent
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`discloses an isolation tool wherein the force used to stroke the mandrel into and out of the
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`wellhead is "applied to the top end of the mandrel" using "a pair of parallel, spaced beams,"
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`(lower and upper), with the mandrel being attached to the upper beam and "inserted into or
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`withdrawn from the blowout preventer by jack assemblies which lower or raise the upper beam
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`with respect to the lower beam." ('993 Patent, Claim 32). A person skilled in the art at the time
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`of the invention could have taken the apparatus depicted in Figure 5 and the disclosure of claim
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`32 of the of '363 Patent and easily combined that with the disclosure of claim 32 of the '993
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`Patent to create a wellhead isolation tool claimed in the '423 patent motivated by the safety,
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`stability, lower profile, full access to the casing, and increased loading capacity of two injectors
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`when compared to single injector isolation tools.
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`V. Claims 1, 14, and 15 ofthe '423 Patent are invalid under 35 U.S.C. § 103 in view the
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`'363 prior art reference in combination with the '865 prior art reference. A person of ordinary
`
`skill in the art at the time of the invention would have been motivated to combine the '363 and
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`PAGE14
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`'865 prior art referem:es. As Jis~:usseJ above, the '363 Patent discloses an isolation tool adapted
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`for insertion into the wellhead and includes top and bottom plates. ('363 Patent, Fig. 5). Figure 5
`
`of the '363 Patent depicts this arrangement while Claim 32 of the '363 Patent discloses a similar
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`embodiment with dual injectors Gack assemblies) instead of support rods 116. (!d., Claim 32).
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`On the other hand, the '865 Patent discloses a fracture head that includes an insertable mandrel
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`with an annular sealing body secured to its contoured bottom end. It would have been obvious
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`for one of ordinary skill in the art, at the time of the invention, to modify the tools disclosed in
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`the '363 Patent to include the sealing body disclosed in the '865 Patent. Such modification
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`would have been motivated by, among other reasons, the known advantage of sealing against
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`wellbore pressure and using a tool that is safe and stable.
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`III.
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`U.S. Patent No. 6,179,053
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`A.
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`P.R. 3-3(a), (b) and (c)
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`1.
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`Anticipation
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`Claim 14 ofthe '423 Patent is invalid as anticipated under 35 U.S.C. § 102 in view ofthe
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`prior art references listed in Table 2 of Exhibit C. Exhibit C is a chart identifying specific
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`examples of where each limitation of claim 14 is found in these references. The complete
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`citation for each of these references is provided in Table 1 of Exhibit C. Table 1 of Exhibit C
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`identifies each prior art patent by its number, country of origin.
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`2.
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`Obviousness & Motivation to Combine
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`The alleged invention of the '053 Patent appears limited to a hydraulic cylinder/piston
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`mechanism to reciprocate the mandrel. Stinger's Infringement Contentions assert claim 14 in
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`such a way as to do away with the explicit requirement that cylinder of the hydraulic mechanism
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`must be connected to the locking member ofthe mechanicallockdown mechanism. Further,
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`Stinger's apparent construction of its asserted claim dictates that the mechanicallockdown
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`mechanism in the '053 Patent is different from the mechanicallockdown mechanism in the '993.
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`While the one disclosed in the '993 Patent is a mechanism for locking the mandrel ofthe
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`isolation tool to the BOP or wellhead, the one disclosed in the '053 Patent is simply a flange(cid:173)
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`bolt-nut