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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
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`
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`

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`Case IPR2014-00216
`Patent No. 6,179,053
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`
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`Preliminary Response by Patent Owner
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`TABLE OF CONTENTS
`
`C.
`
`2.
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`2.
`
`Page
`Introduction ..................................................................................................... 1
`I.
`Summary Of The ’053 Patent ......................................................................... 1
`II.
`III. Petitioner’s Proposed Claim Constructions .................................................... 8
`A.
`“operative position” .............................................................................. 8
`B.
`“fixed-point packoff,” “fixed-point,” And “packed off against a
`fixed-point” .......................................................................................... 9
`1.
`The Specification Of The ’053 Patent Clearly Describes
`The Meaning Of “fixed-point packoff” ..................................... 9
`Petitioner’s Proposed Construction Is Completely
`Divorced From The Intrinsic Record And Would Make
`The Term More Difficult To Understand ................................ 10
`“first lockdown mechanism” .............................................................. 12
`1.
`“first lockdown mechanism” Is Written In Plain English
`And Needs No Separate Construction ..................................... 13
`There Is A Presumption That “first lockdown
`mechanism” Is Not A Means-Plus-Function Element,
`And Petitioner Cannot Overcome That Presumption .............. 14
`a.
`Legal Standard ............................................................... 14
`b.
`Petitioner Has Failed To Overcome The
`Presumption Against Means-Plus-Function
`Treatment Of “first lockdown mechanism” .................. 17
`“first lockdown mechanism” Is Easily Understood
`As A Reference To Structure, Particularly As Used
`In The Claims ................................................................ 18
`“first lockdown mechanism” Cannot Be A Means-
`Plus-Function Element In Claim 22, Which Is A
`Method Claim ................................................................ 20
`“second lockdown mechanism” ......................................................... 21
`
`c.
`
`d.
`
`A.
`
`i
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`

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`Case IPR2014-00216
`Patent No. 6,179,053
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`Preliminary Response by Patent Owner
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`TABLE OF CONTENTS
`(continued)
`
`Page
`
`“second lockdown mechanism” Is Clearly Defined In
`The Specification As Being Separate From The Setting
`Tool Used To Install The Claimed Invention .......................... 21
`There Is A Presumption That “second lockdown
`mechanism” Is Not A Means-Plus-Function Element,
`And Petitioner Has Failed To Overcome That
`Presumption ............................................................................. 23
`“second lockdown mechanism” Cannot Be A Means-
`Plus-Function Element In Claim 22, Which Is A Method
`Claim ........................................................................................ 25
`Petitioner’s Claim Construction Requiring A Fixed Order To
`Method Claim 22 Is Incorrect ............................................................ 25
`IV. Greene’s Petition Should Be Denied ............................................................ 27
`A.
`The Petition Fails To Establish A Reasonable Likelihood That
`Dallas ’118 Anticipates The Claims Of The ’053 Patent ................... 27
`1.
`Background Of The Dallas ’118 Canadian Application .......... 27
`2.
`Dallas ’118 Fails To Disclose A “second lockdown
`mechanism” As Recited In Claims 1 And 22 .......................... 29
`Dallas ’118 Fails To Disclose A Device That “secures”
`Or “locks” The Mandrel In The Operative Position ................ 30
`The Petition Fails To Establish A Reasonable Likelihood That
`The Combination Of Dallas ’118 And McLeod Renders The
`Claims Of The ’053 Patent Obvious .................................................. 31
`The Petition Fails To Establish A Reasonable Likelihood That
`The Combination Of Herricks And Dellinger Renders The
`Claims Of The ’053 Patent Obvious .................................................. 32
`1.
`Introduction To Herricks Reference ........................................ 32
`2.
`Petitioner Admits That Herricks Does Not Disclose
`Either “lockdown mechanism” ................................................ 33
`In Addition, Several Other Elements Are Missing From
`Herricks .................................................................................... 34
`
`B.
`
`B.
`
`C.
`
`1.
`
`2.
`
`3.
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`3.
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`3.
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`ii
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`Case IPR2014-00216
`Patent No. 6,179,053
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`
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`Preliminary Response by Patent Owner
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`TABLE OF CONTENTS
`(continued)
`
`a.
`b.
`
`c.
`
`4.
`5.
`
`6.
`
`7.
`
`Page
`Herricks Does Not Disclose A “mandrel” ..................... 34
`Herricks Does Not Disclose A “range of
`adjustment” .................................................................... 34
`Herricks Fails To Disclose A Device That
`“secures” Or “locks” The Mandrel In The
`Operative Position ......................................................... 35
`Introduction To Dellinger Reference ....................................... 35
`Dellinger Does Not Disclose A “first lockdown
`mechanism” .............................................................................. 37
`There Would Be No Reason To Combine Herricks With
`Dellinger ................................................................................... 38
`Dellinger Does Not Disclose A “second lockdown
`mechanism” With A “range of adjustment” ............................ 38
`Dellinger Does Not Disclose A “mandrel” .............................. 39
`8.
`Conclusion .................................................................................................... 40
`
`V.
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`
`iii
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`Case IPR2014-00216
`Patent No. 6,179,053
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`Preliminary Response by Patent Owner
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`TABLE OF AUTHORITIES
`
`CASES
`
`Page
`
`Altiris Inc. v. Symantec Corp.,
`318 F.3d 1363 (Fed. Cir. 2003) .......................................................................... 26
`
`Avanir Pharms., Inc. v. Actavis S. Atl. LLC,
`No. CA 11-704-LPS, 2012 WL 6019095, at *1
`(D. Del. Dec. 3, 2012) ......................................................................................... 13
`
`Cascades Computer Innovation, LLC v. Dell Inc.,
`No. 1:11-cv-07264, 2014 WL 26288, at *1
`(N.D. Ill. Jan. 2, 2014) ........................................................................................ 17
`
`Fleming v. Escort, Inc.,
`No. CV 09-105-S-BLW, 2013 WL 1290418, at *1
`(D. Idaho Mar. 27, 2013) .................................................................................... 14
`
`Flo Healthcare Solutions, LLC v. Kappos,
`697 F.3d 1367 (Fed. Cir. 2012) .................................................................... 15, 18
`
`Greenberg v. Ethicon Endo-Surgery, Inc.,
`91 F.3d 1580 (Fed. Cir. 1996) ................................................................ 15, 16, 19
`
`Inventio AG v. ThyssenKrupp Elevator Ams. Corp.,
`649 F.3d 1350 (Fed. Cir. 2011) ...................................................................passim
`
`Lighting World, Inc. v. Birchwood Lighting, Inc.,
`382 F.3d 1354 (Fed. Cir. 2004) .............................................................. 15, 16, 19
`
`Nomura v. Youtube, LLC,
`Nos. C-11-01208 HRL, C-11-01210 HRL,
`2013 WL 503102, at *1 (N.D. Cal. Feb. 8, 2013) .............................................. 16
`
`O.I. Corp v. Tekmar Co.,
`115 F.3d 1576 (Fed. Cir. 1997) .......................................................................... 20
`
`Personalized Media Commc’ns LLC v. Int’l Trade Comm’n,
`161 F.3d 696 (Fed. Cir. 1998) ...................................................................... 16, 19
`
`iv
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`Case IPR2014-00216
`Patent No. 6,179,053
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`Preliminary Response by Patent Owner
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`TABLE OF AUTHORITIES
`(continued)
`
`Page
`
`Pfizer Inc. v. Teva Pharms USA, Inc.,
`855 F. Supp. 2d 286 (D.N.J. 2012) ..................................................................... 13
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .......................................................................... 17
`
`Stryker Corp. v. Zimmer, Inc.,
`No. 1:10-CV-1223, 2012 WL 333814, at *1
`(W.D. Mich. Feb. 1, 2012) ...................................................................... 16, 18, 19
`
`U.S. Surgical Corp. v. Ethicon, Inc.,
`103 F.3d 1554 (Fed. Cir. 1997) .......................................................................... 11
`
`STATUTES AND OTHER AUTHORITIES
`
`35 U.S.C. § 102 .......................................................................................................... 4
`
`35 U.S.C. § 112 .................................................................................................passim
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`37 C.F.R. § 42.100(b) .............................................................................................. 27
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756 (Aug. 14, 2012). ................................................................ 27
`
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`v
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`Case IPR2014-00216
`Patent No. 6,179,053
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`Preliminary Response by Patent Owner
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`TABLE OF EXHBITS
`
`Exhibit
`A
`
`Description
`U.S. Patent No. 5,819,851 (issued Oct. 13, 1998), Blowout
`Preventer Protector for Use During High Pressure Oil/Gas Well
`Stimulation.
`
`Def.’s Invalidity Contentions, Stinger Wellhead Protection,
`Inc. v. Guardian Wellhead Protection, Inc., No. 2:06cv481
`(TJW) (E.D. Tex., filed July 23, 2007).
`
`B
`
`
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`vi
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`Case IPR2014-00216
`Patent No. 6,179,053
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`I.
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`INTRODUCTION
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`
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`Preliminary Response by Patent Owner
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`Patent Owner Oil States Energy Services (“Patent Owner”) respectfully
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`submits this Preliminary Response to the Petition for inter partes review for U.S.
`
`Patent No. 6,179,053 (“the ’053 Patent”) (Pet. Ex. 1001).1 This filing is timely
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`under 35 U.S.C. § 313 and 37 C.F.R. § 42.107, as it is being filed within three
`
`months of the December 13, 2013 mailing date of the Notice Granting the Petition
`
`a Filing Date of December 4, 2013.
`
`The Petition for inter partes review for the ’053 Patent should be denied.
`
`The Petitioner has failed to meet its burden to establish anticipation by a
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`reasonable likelihood that the cited reference discloses each and every limitation of
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`the challenged claims of the ’053 Patent. The Petitioner has also failed to establish
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`a reasonable likelihood of obviousness, presenting an incomplete and conclusory
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`analysis that fails to properly identify the differences between the prior art and the
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`claims, or to articulate a rationale for why a person of ordinary skill in the art
`
`would have modified the prior art to achieve the claimed invention.
`
`II.
`
`SUMMARY OF THE ’053 PATENT
`
`Oil and gas wells often undergo hydraulic fracturing (“fracking”) procedures
`
`in which stimulation fluid is pumped downhole to stimulate or increase production.
`
`Fracking fluid can be abrasive and/or corrosive and is often injected into the well
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`1 All citations to the Petition are to the Reformatted Petition, Paper No. 6.
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`Case IPR2014-00216
`Patent No. 6,179,053
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`at pressures up to 15,000 pounds per square inch. Wellheads sitting on top of a
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`Preliminary Response by Patent Owner
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`
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`well remain in place during fracking procedures and are not typically designed to
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`withstand continuous exposure to fracking fluids. If left unprotected, wellheads
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`can be severely damaged during fracking operations.
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`Tools and methods have been developed to protect and isolate wellheads
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`from fracking fluids as they are being pumped downhole. Early wellhead isolation
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`tools often used a length of tubing that would be inserted through the wellhead and
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`a packoff assembly (usually a rubber seal) to seal inside the casing, which is the
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`initial well section beneath the wellhead. The packoff assembly was designed to
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`provide a fluid-tight seal that could withstand constant exposure to stimulation
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`fluids.
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`One early wellhead isolation tool design of this configuration is commonly
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`referred to as a “casing saver.” Below is an illustration of a casing saver being
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`inserted through a wellhead to isolate the wellhead from the fracking fluid as it is
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`being pumped downhole.
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`2
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`Preliminary Response by Patent Owner
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`The casing saver would be inserted through the wellhead to seal off against
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`the inner casing walls. Because the casing saver seals inside the casing, its
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`diameter is necessarily smaller than the diameter of the casing. This presented
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`several problems.
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`First, the smaller diameter limits the velocity of stimulation fluids at
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`maximum flow rate. ’053 Patent, 1:43-47. Second, designs of this type do not
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`allow for the insertion of downhole tools that require the full diameter of the well
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`casing. Thus, if a casing saver is used, each time a tool needs to be run downhole,
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`the wellhead isolation tubular must be retracted, and the casing saver removed
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`from the wellhead. After the use of a downhole tool such as a plug setting tool or a
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`3
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`perforating gun, the casing saver would then need to be re-installed. This process
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`Preliminary Response by Patent Owner
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`takes valuable time at a wellsite, where the goal is to get back to production as
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`quickly as possible.
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`Looking to solve some of the above-mentioned problems associated with the
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`casing saver and other similar tools, Stinger Wellhead Protection, Inc. (“Stinger”),
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`now known as Oil States Energy Services, L.L.C. (“Oil States”), and sole named
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`inventor L. Murray Dallas, invented the tool described in U.S. Patent No.
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`5,819,851 (“the ’851 Patent”), attached as Exhibit A. Petitioner argues (at 4) that
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`“[t]he ’053 Patent does not describe or identify any prior art tool or disclosure with
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`such a ‘fixed point’ packoff” similar to that described in the ’053 Patent. That is
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`simply false and borders on being disingenuous. The ’851 Patent is not only cited
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`and discussed at length in the ’053 Patent, it is expressly described as showing a
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`“fixed-point for packoff.” ’053 Patent, 2:26-40. There is no question that the ’851
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`Patent was prior art to the ’053 Patent pursuant to 35 U.S.C. § 102(a). Indeed, in
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`prior litigation between the predecessors of Petitioner and Patent Owner, the ’851
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`Patent was asserted as one of the defendant’s primary prior art references. Def.’s
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`Invalidity Contentions, Exhibit C, Stinger Wellhead Protection, Inc. v. Guardian
`
`Wellhead Protection, Inc., No. 2:06cv481 (TJW) (E.D. Tex., filed July 23, 2007),
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`attached as Exhibit B.
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`4
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`Preliminary Response by Patent Owner
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`Below is an illustration of the setting of a mandrel into the wellhead as
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`disclosed in the ’851 Patent.
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`
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`’851 Patent Figs. 1-5. A mandrel is shown as it is pushed down through a
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`wellhead by the build-up of pressure within a hydraulic setting chamber housed
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`within the wellhead isolation setting tool. ’851 Patent, 6:1-24. The design claimed
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`in the ’851 Patent recognized the need to have a larger diameter central bore than
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`was possible with the casing saver tool. ’851 Patent, 6:40-54. Full-bore access
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`was accomplished using a fixed-point packoff, where the mandrel sealed at a
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`5
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`particular location within the wellhead, rather than within the casing. Despite
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`Preliminary Response by Patent Owner
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`
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`these improvements, this tool also had certain drawbacks.
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`In the design described in the ’851 Patent, the mandrel of the tool is
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`integrally incorporated with the hydraulic setting tool. ’851 Patent, Figs. 1-5; ’053
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`Patent, 2:46-54. Thus, this design does not permit removal of the setting tool once
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`the mandrel is set into position, which results in an installation having a high
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`profile for the entire duration of a well fracturing or treatment job. This tool
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`requires longer and higher hanging fracture fluid lines, more crane involvement,
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`and requires workers to work higher above the ground, which can create additional
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`safety concerns. This tool also relied on the ability to maintain sufficient hydraulic
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`pressure in the hydraulic setting chamber. ’851 Patent, 6:1-24. If fluid pressure
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`pushing up against the downhole end of the mandrel exceeds the hydraulic forces
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`pushing the mandrel into position, the isolation fails, the wellhead may be
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`damaged, and other problems may result.
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`The ’053 Patent solved the problems of the casing saver tool, the ’851 Patent
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`design, and other wellhead isolation tool designs. In particular, embodiments of
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`the tool described and claimed in the ’053 Patent, as illustrated below, eliminated
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`the need to maintain constant hydraulic pressure to maintain the mandrel’s
`
`position, as was required in the ’851 tool design. ’053 Patent, 7:6-32. The ’053
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`design thus eliminates the possibility of wellhead isolation failure due to a
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`malfunction of the hydraulic system, which was a part of the ’851 design. Below
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`Preliminary Response by Patent Owner
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`
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`is an illustration of the setting of a mandrel into the wellhead as disclosed in the
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`’053 Patent:
`
`
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`‘053 Patent Figs. 1-9.
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`The embodiments described in the ’053 Patent also permit the removal of
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`the setting tool once the mandrel is locked down. ’053 Patent, 7:6-32. This
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`provides a lower profile for the fracturing operation, including shorter fracture
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`fluid lines and keeps all work closer to the ground than was the case with the ’851
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`design. Additionally, the ’053 design also permits the use of full bore-size tools
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`while the isolation mandrel remains in position for hydraulic fracturing operations.
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`The full-bore access also allows for an increase in the velocity at maximum flow
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`7
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`Patent No. 6,179,053
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`rate for stimulation fluids being pumped downhole. Overall, the wellhead isolation
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`Preliminary Response by Patent Owner
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`
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`tool described and claimed in the ’053 Patent includes several improvements over
`
`what was previously known in the industry.
`
`III. PETITIONER’S PROPOSED CLAIM CONSTRUCTIONS
`A.
`“operative position”
`
`Claim terms
`Claim
`1, 22 “operative
`position”
`
`Patent Owner’s proposed
`construction
`“a position at which the
`mandrel is sealed at the
`fixed point and protects the
`wellhead for a well
`treatment to stimulate
`production”
`
`Petitioner’s proposed
`construction
`“a position in which the
`mandrel is packed off
`against a fixed-point in the
`well.”
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`The parties largely agree on the construction of this term, disagreeing only
`
`on the question of whether the “operative position” is one which protects the
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`wellhead “for a well treatment to stimulate production.” That language, however,
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`is a verbatim quote from the patent’s description of the “operative position.” ’053
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`Patent, 8:35-38 (“an operative position for a well treatment to stimulate
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`production”); id. at 9:31-34 (same). Furthermore, there is no debate that the whole
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`purpose of the claimed invention is to protect the wellhead during well stimulation
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`procedures. Id. at 1:14-25. Thus, the further clarification proposed by Patent
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`Owner is entirely consistent with the intrinsic record.
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`Preliminary Response by Patent Owner
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`B.
`
`“fixed-point packoff,” “fixed-point,” And “packed off against a
`fixed-point”
`
`Patent Owner’s proposed
`construction
`“a fluid seal formed at a
`particular location within
`the well”
`
`Petitioner’s proposed
`construction
`“a singular discontinuity
`in a well where a fluid
`tight seal must be formed”
`
`
`Claim
`1, 22
`
`Claim terms
`“fixed-point
`packoff,” “fixed-
`point,” and
`“packed-off
`against a fixed-
`point”
`
`
`Petition 14.
`
`Claims 1 and 22 of the ’053 Patent both recite a “fixed-point,” with Claim 1
`
`also reciting a “fixed-point packoff” and Claim 22 reciting, “packed-off against a
`
`fixed point.” All of these phrases should be taken to mean “a fluid seal formed at a
`
`particular location within the well,” which is consistent with the intrinsic record.
`
`Petitioner’s contrary proposal finds no support in the intrinsic record and, rather
`
`than clarifying the claim language, would introduce significant additional
`
`confusion and ambiguity.
`
`1.
`
`The Specification Of The ’053 Patent Clearly Describes The
`Meaning Of “fixed-point packoff”
`
`The ’053 Patent describes a “fixed-point” according to where a packoff
`
`assembly would seal, “to permit the mandrel 22 … to be inserted through the base
`
`plate 28 into the wellhead until the mandrel 22 reaches a fixed-point 24 for
`
`packoff.” ’053 Patent, 5:46-50. The patent also describes a packoff assembly
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`“provided at a bottom end of the mandrel for achieving a fluid seal against the
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`Preliminary Response by Patent Owner
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`
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`inside of the production tubing or casing.” ’053 Patent, 1:32-36. In this instance,
`
`the packoff assembly is referred to as sealing against the inside of the production
`
`tubing or casing in relation to the prior art. The purpose of the packoff assembly,
`
`however, is substantially the same when described in conjunction with the ’053
`
`Patent, the difference being that the sealing position of the packoff assembly is
`
`inside the wellhead instead of the casing.
`
`In short, “fixed-point” is hardly a confusing or ambiguous term that needs a
`
`formal construction. It simply means the mandrel seals at a particular or
`
`predetermined location.
`
` Similarly, “packoff”—a word that is used quite
`
`commonly in the wellhead isolation industry—is defined in the specification of the
`
`’053 Patent as referring to a “fluid seal” at the relevant point in the wellhead.
`
`Thus, these related terms should be construed—to the extent they need to be
`
`construed at all—as simply referring to “a fluid seal formed at a particular location
`
`within the well.”
`
`2.
`
`Petitioner’s Proposed Construction Is Completely Divorced
`From The Intrinsic Record And Would Make The Term
`More Difficult To Understand
`
`Petitioner contends that the “fixed-point” should be construed to mean “a
`
`singular discontinuity in a well where a fluid tight seal must be formed.”
`
`Petition 14. There are at least three significant problems with this proposed
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`Patent No. 6,179,053
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`construction. First, the goal of claim construction is to clarify the terms used in a
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`Preliminary Response by Patent Owner
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`
`
`patent. U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997)
`
`(“Claim construction is ... to clarify and when necessary to explain what the
`
`patentee covered by the claims.”). Petitioner proposes replacing the simple and
`
`easily understood phrase “fixed point” with “singular discontinuity,” which would
`
`unquestionably be more difficult
`
`to understand and apply.
`
` Petitioner’s
`
`construction should be rejected because it not only fails to clarify but would
`
`actually obfuscate the meaning of the claims.
`
`Second, neither the word “singular” nor “discontinuity” appears even once
`
`in the ’053 Patent. Petitioner seems to have plucked these terms from thin air and
`
`it is not clear what they are even intended to mean in the context of this patent. It
`
`is inappropriate to change the scope of the claims by rewriting otherwise easily
`
`understood terms, and it is particularly inappropriate to do so by importing
`
`concepts that are entirely outside the intrinsic record.
`
`Third, it appears that Petitioner’s proposed construction is based entirely on
`
`a portion of the ’053 specification that explains “[t]he fixed-point for packoff may
`
`be a bit guide mounted to the top of a casing, as shown in FIG. 8, [or] an annular
`
`step above back pressure valve threads of a tubing hanger, as shown in FIG. 9 ….”
`
`’053 Patent, 5:34-39; Petition 14. Petitioner, however, ignores the final part of that
`
`same sentence, which makes clear that the fixed-point for packoff may also be
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`Patent No. 6,179,053
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`“any other type of fixed-point location used for packoff in a wellhead.” ’053
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`Preliminary Response by Patent Owner
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`
`
`Patent, 5:34-39 (emphasis added). Thus, there is no support for limiting this
`
`phrase, and certainly not by
`
`injecting
`
`the mysterious phrase “singular
`
`discontinuity,” as proposed by Petitioner.
`
`C.
`
`“first lockdown mechanism”
`
`Claim terms
`Claim
`1, 22 “first lockdown
`mechanism”
`
`Petitioner’s proposed
`Patent Owner’s proposed
`construction
`construction
`plain and ordinary meaning “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” (claim 1)
`“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” (claim 22)
`“arranged so that the
`mandrel is locked in the
`operative position only
`when both the first and the
`second lockdown
`
`12
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`

`

`Case IPR2014-00216
`Patent No. 6,179,053
`
`
`Petition 18-19.
`
`
`
`Preliminary Response by Patent Owner
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`mechanism are in
`respective lockdown
`positions” (claim 1 and
`22)
`
`1.
`
`“first lockdown mechanism” Is Written In Plain English
`And Needs No Separate Construction
`
`Both independent claims recite a “first lockdown mechanism,” which is an
`
`easily understood term that requires no formal claim construction. Where a claim
`
`term “is not clearly technical in nature, but rather, is a general term amenable to
`
`facile understanding,” there is no need for a formal construction of the term. Pfizer
`
`Inc. v. Teva Pharms USA, Inc., 855 F. Supp. 2d 286, 300 (D.N.J. 2012). This is
`
`particularly so where “there is no basis in the claims, specification, or prosecution
`
`history to depart from the plain and ordinary meaning of these terms.” Avanir
`
`Pharms., Inc. v. Actavis S. Atl. LLC, No. CA 11-704-LPS, 2012 WL 6019095, at
`
`*5 (D. Del. Dec. 3, 2012).
`
`In the present case, there is nothing difficult to understand about “first
`
`lockdown mechanism.” It is a locking mechanism comprised of the two elements
`
`recited in the claim language (the locking member and base member), which
`
`interacts as described with the “second lockdown mechanism” to perform the
`
`overall function of the tool. “The phrase is written in plain English and requires no
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`13
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`Case IPR2014-00216
`Patent No. 6,179,053
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`further interpretation.” Fleming v. Escort, Inc., No. CV 09-105-S-BLW, 2013 WL
`
`Preliminary Response by Patent Owner
`
`
`
`1290418, at *3 (D. Idaho Mar. 27, 2013).
`
`2.
`
`There Is A Presumption That “first lockdown mechanism”
`Is Not A Means-Plus-Function Element, And Petitioner
`Cannot Overcome That Presumption
`a.
`Petitioner seeks to narrow the scope of the asserted claims by arguing that
`
`Legal Standard
`
`“first lockdown mechanism” is a means-plus-function term that must be construed
`
`under 35 U.S.C. § 112, ¶ 6. There is a strong presumption against that argument,
`
`and Petitioner has failed to overcome that presumption.
`
`The Federal Circuit recently provided a useful summary of the applicable
`
`law:
`
`The framework under which we determine if a claim
`limitation invokes § 112, ¶ 6 is straightforward. The use
`of the term “means” triggers a rebuttable presumption
`that § 112, ¶ 6 governs the construction of the claim term.
`Conversely, where, as here, the claim language does not
`recite the term “means,” we presume that the limitation
`does not invoke § 112, ¶ 6.
`
`…
`
`[T]he presumption flowing from the absence of the term
`“means” is a strong one that is not readily overcome.
`
`Inventio AG v. ThyssenKrupp Elevator Ams. Corp., 649 F.3d 1350, 1356 (Fed. Cir.
`
`2011) (internal citations omitted).
`
`14
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`Case IPR2014-00216
`Patent No. 6,179,053
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`
`
`
`Preliminary Response by Patent Owner
`
`To overcome the presumption arising from the absence of the word
`
`“means,” a challenger must affirmatively demonstrate that the claim element in
`
`question is “devoid of anything that can be construed as structure.” Flo
`
`Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1374 (Fed. Cir. 2012)
`
`(emphasis added). Thus, the claim need not designate a “specific structure.
`
`Instead, [the Federal Circuit] ha[s] held that it is sufficient if the claim term is used
`
`in common parlance or by persons of skill in the pertinent art to designate
`
`structure, even if the term covers a broad class of structures and even if the term
`
`identifies the structures by their function.” Lighting World, Inc. v. Birchwood
`
`Lighting, Inc., 382 F.3d 1354, 1359-60 (Fed. Cir. 2004). With respect to the latter
`
`point, the Federal Circuit has observed that “[m]any devices take their names from
`
`the functions they perform. The examples are innumerable, such as ‘filter,’
`
`‘brake,’ ‘clamp,’ ‘screwdriver,’ or ‘lock.’” Greenberg v. Ethicon Endo-Surgery,
`
`Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996).
`
`In light of this legal framework, the Federal Circuit and district courts
`
`around the country have rejected means-plus-function treatment for many terms
`
`with less concrete structures than “lockdown mechanism.” Some examples
`
`include:
`
`“Height adjustment mechanism”—Flo Healthcare, 697
`F.3d at 1374
`(“‘[A]djustment,’ which modifies
`
`15
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`Case IPR2014-00216
`Patent No. 6,179,053
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`
`
`
`Preliminary Response by Patent Owner
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`‘mechanism’ here, has a reasonably well-understood
`meaning as a name for a structure.”)
`
`“Detent mechanism”—Greenberg, 91 F.3d at 1583 (“It
`is true that the term ‘detent’ does not call to mind a single
`well-defined structure, but the same could be said of
`other commonplace structural terms such as ‘clamp’ or
`‘container.’”)
`
`“Modernizing device”—Inventio, 649 F.3d at 1358-59.
`
`“Connector assembly”—Lighting World, 382 F.3d at
`1361 (“While the terms ‘connector’ and ‘connector
`assembly’ are certainly broad, and may in the end include
`any structure that performs the role of connecting, the
`same could be said of numerous other terms, such as
`‘clamp’ or ‘clip’ …. Those terms are routinely treated as
`structural by patent practitioners and courts, and we
`conclude there is no reason to treat the term ‘connector
`assembly’ any differently”).
`
`“Digital detector”—Personalized Media Commc’ns LLC
`v. Int’l Trade Comm’n, 161 F.3d 696, 705 (Fed. Cir.
`1998) (“Even though the term ‘detector’ does not
`specifically evoke a particular structure, it does convey to
`one knowledgeable in the art a variety of structures
`known as ‘detectors.’”).
`
`“Lock assembly”—Stryker Corp. v. Zimmer, Inc., No.
`1:10-CV-1223, 2012 WL 333814, at *7 (W.D. Mich.
`Feb. 1, 2012) (“While [Defendant] correctly notes that
`the term would cover a broad range of structures if not
`subject to section 112 ¶ 6, the term is structural
`nonetheless.”).
`
`In addition, even terms that might not seem structural on their face cannot be
`
`construed as means-plus-function elements if “the surrounding claim language
`
`connotes additional structure.” Nomura v. Youtube, LLC, Nos. C-11-01208 HRL,
`
`16
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`

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`Case IPR2014-00216
`Patent No. 6,179,053
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`C-11-01210 HRL, 2013 WL 503102, at *11 (N.D. Cal. Feb. 8, 2013) (“error
`
`Preliminary Response by Patent Owner
`
`
`
`detection system” not means-plus-function because it was “configured” to perform
`
`certain tasks).
`
`b.
`
`Petitioner Has Failed To Overcome The Presumption
`Against Means-Plus-Function Treatment Of “first
`lockdown mechanism”
`
`In the ’053 Patent, the terms in question do not include the word “means” so
`
`there is a strong presumption that they are not means-plus-function elements.
`
`Inventio, 649 F.3d at 1356. To overcome the presumption, Petitioner must carry
`
`the burden of providing persuasive evidence that one of ord