trials@uspto.gov
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`571-272-7822
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`IPR2014-00216, Paper No. 52 and
` IPR2014-00364, Paper No. 36
`April 1, 2015
`
`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 6,179,053
`and
`Case IPR2014-00364
`Patent 6,289,993
`____________
`
`Held: February 11, 2015
`____________
`
`
`
`BEFORE: SCOTT E. KAMHOLZ, WILLIAM A. CAPP, and JAMES
`A. TARTAL, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Wednesday,
`February 11, 2015, commencing at 1:31 p.m., at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`IPR2014-00216, Paper No. 52 and
` IPR2014-00364, Paper No. 36
`April 1, 2015
`
`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 6,179,053
`and
`Case IPR2014-00364
`Patent 6,289,993
`____________
`
`Held: February 11, 2015
`____________
`
`
`
`BEFORE: SCOTT E. KAMHOLZ, WILLIAM A. CAPP, and JAMES
`A. TARTAL, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Wednesday,
`February 11, 2015, commencing at 1:31 p.m., at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`Case IPR2014-00216, Patent 6,179,053 and
`Case IPR2014-00364, Patent 6,289,993
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`JOHN J. FELDHAUS, ESQUIRE
`
`
`Foley & Lardner LLP
`
`
`Washington Harbour
`
`
`3000 K Street, N.W., Suite 600
`
`
`Washington, D.C. 20007-5109
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`ON BEHALF OF THE PATENT OWNER:
`
`
`C. ERIK HAWES, ESQUIRE
`
`
`Morgan, Lewis & Bockius LLP
`
`
`1000 Louisiana Street
`
`
`Suite 4200
`
`
`Houston, TX 77002
`
`
`
` P R O C E E D I N G S
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`- - - - -
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`JUDGE KAMHOLZ: Good afternoon. We will hear
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`argument now in Cases IPR2014-00216 and IPR2014-00364,
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`Greene's Energy Group, LLC versus Oil States Energy Services, LLC,
`
`concerning U.S. Patent Numbers 6,179,053 and 6,289,993
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`respectively.
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`May I ask who -- whoever has control of that extraneous
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`noise to silence it.
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`Case IPR2014-00216, Patent 6,179,053 and
`Case IPR2014-00364, Patent 6,289,993
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`MR. FELDHAUS: I'm sorry, Your Honor, yes. I'll have to
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`turn it off. I'm having some difficulty with the computer, Your
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`Honor.
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`JUDGE KAMHOLZ: Counsel for the parties, please
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`introduce yourselves starting with Petitioner.
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`MR. FELDHAUS: If it would please the Court, John
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`Feldhaus of Foley & Lardner for Petitioner Greene's Energy Group.
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`With me is Mr. Brad Roush also with Foley & Lardner. Also with me
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`is Mr. Jim Wynn, the Assistant General Counsel of Greene's Energy
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`Group.
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`JUDGE KAMHOLZ: And Patent Owner.
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`MR. HAWES: Thank you, Your Honor. Erik Hawes,
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`Morgan, Lewis & Bockius, for the Patent Owner Oil States Energy
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`Services, LLC. With me are our colleagues, Neil Ozarkar and Ryan
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`McBeth.
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`JUDGE KAMHOLZ: Welcome to the Board.
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`Per our trial hearing order, each side will have 90 minutes to
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`argue. The parties have agreed to a schedule in which the petition in
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`the '216 case will be argued first, followed by the motion to amend in
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`the '216 case, followed by the petition in the '364 case.
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`The trial hearing order might have been inconsistent to some
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`degree with what the parties had expressed in the Patent Owner's
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`request for oral argument, but is the plan that you had laid out in that
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`request still what you plan to do today?
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`MR. FELDHAUS: Yes, Your Honor, I think that's correct.
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`Case IPR2014-00216, Patent 6,179,053 and
`Case IPR2014-00364, Patent 6,289,993
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`JUDGE KAMHOLZ: Mr. Hawes?
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`MR. HAWES: Your Honor, we were planning to proceed as
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`laid out in the order from the Board. I remember there was some
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`discrepancy. I honestly don't remember what it was, but my plan was
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`to proceed as the Board had requested in the order that was issued.
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`JUDGE KAMHOLZ: Now, the Patent Owner submitted
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`two sets of demonstratives, one relating to the '216 petition and one
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`relating to the '216 motion to amend and then a separate set of
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`demonstratives for the '364. So as I understood it, the original plan
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`was to have oral argument on the '216 petition, Petitioner, Patent
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`Owner, Petitioner, followed by oral argument on the motion to amend
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`in '216, Patent Owner, Petitioner, Patent Owner and then proceed to
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`the argument on the '364. Are you prepared to do that?
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`MR. HAWES: We can certainly handle it that way. I think
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`that was the original proposal. I'm happy to do it that way or the
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`alternative schedule that the Board had set out.
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`JUDGE KAMHOLZ: Then why don't we do as I had just
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`laid out. So we'll have quite a bit of back and forth between the sides.
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`Is that all right?
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`MR. HAWES: That's perfectly acceptable, Your Honor.
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`MR. FELDHAUS: That's fine, Your Honor.
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`JUDGE KAMHOLZ: All right. For each of these many
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`arguments, the party bearing the burden will go first, followed by the
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`opposing party, followed by a reply. We expect the parties to follow
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`the times that were laid out in that order.
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`Case IPR2014-00216, Patent 6,179,053 and
`Case IPR2014-00364, Patent 6,289,993
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`Do you have those, Mr. Hawes? I have them here if you
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`need a reminder.
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`MR. HAWES: I don't have that handy, Your Honor. My
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`plan was in the order -- I believe it indicated 90 minutes that the
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`parties would split up as they saw fit among their different arguments.
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`JUDGE KAMHOLZ: Yes.
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`MR. HAWES: So that's what I'm planning to do. I honestly
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`-- I couldn't tell you how long each part is going to take, but I can tell
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`you that the total is going to take less than 90 minutes.
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`JUDGE KAMHOLZ: All right. Then when Mr. Feldhaus
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`begins the argument in the '216, you'll indicate how much time you'd
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`like to reserve, how much time you'd like on the clock, and how much
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`you'd like to reserve.
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`MR. FELDHAUS: Yes, Your Honor. Well, like Mr.
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`Hawes, I'm planning to spend about 25 minutes on the basic '216
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`petition argument, then I will spend some time on the reply, some
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`time on the other petition argument and some for the reply of that. I
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`don't have precise times set out, but I would like to be notified when
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`I'm close to 25 minutes on the basic '216 petition.
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`JUDGE KAMHOLZ: All right. I will do that and I'll give
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`both sides periodic reminders of how much time remains and I will
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`leave it to you to arrange the arguments as you wish.
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`We'll probably take a brief recess when the '216 case is
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`finished, just for anybody who needs a minute or two, and then we'll
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`continue with the '364 case.
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`Case IPR2014-00216, Patent 6,179,053 and
`Case IPR2014-00364, Patent 6,289,993
`
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`MR. FELDHAUS: If I may, Your Honor, I'm having some
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`difficulty getting my computer to communicate with the projector.
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`Could I take one minute and try to get that connected again?
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`JUDGE KAMHOLZ: Go ahead.
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`(A brief pause in the proceedings.)
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`JUDGE KAMHOLZ: While we're doing all this, I'll remind
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`the parties that the Petitioner bears the burden of proving any
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`proposition of unpatentability by a preponderance of the evidence.
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`The Patent Owner bears the burden of proving the patentability of any
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`proposed claim.
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`I will also remind the parties that this hearing is open to the
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`public, although I don't see any public in attendance. A full transcript
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`of it will become part of the record.
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`MR. FELDHAUS: I apologize for the delay. We seem to
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`be on track now.
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`JUDGE KAMHOLZ: Please remember as you proceed
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`through your presentation to mention any slide number as you refer to
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`it or to provide a pinpoint citation in the record of any material
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`displayed.
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`If we have all of the technical difficulties behind us, then
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`we're ready to proceed.
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`MR. FELDHAUS: Thank you, Your Honor.
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`JUDGE KAMHOLZ: Mr. Feldhaus.
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`Case IPR2014-00216, Patent 6,179,053 and
`Case IPR2014-00364, Patent 6,289,993
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`MR. FELDHAUS: May it please the Court, so this first
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`slide introduces the '216 petition, which relates to U.S. Patent
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`6,179,053, which is Exhibit 1001.
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`Now, the '053 patent is entitled the lockdown mechanism for
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`well tools requiring fixed-point packoff. We have challenged two
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`claims, Claims 1 and 22, both of which we have challenged based on
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`anticipation over a single prior art reference, which I will discuss.
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`Before getting into the prior art, I just wanted to review
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`briefly here with slide number 3 the basic concept of this '053 patent.
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`This relates to a wellhead isolation tool. The idea of this wellhead
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`isolation tool -- and here we show Figure 8, which is the second
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`embodiment -- is that you have a mandrel, basically a tube, that goes
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`through a wellhead that will protect the wellhead when you introduce
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`fracking fluids into the well.
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`And this embodiment has the mandrel here showing red
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`attached to a piston of a hydraulic cylinder. The cylinder is shown in
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`blue here. And that piston will then press or push the mandrel
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`downward in order to make a contact with a -- what they call a
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`fixed-point packoff in the well, which in this case is a bit guide inside
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`of the wellhead.
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`Now, the next slide, which is slide number 4, shows Figure
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`5 of the '053 patent and describes in some greater detail the operation
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`of this piston and cylinder and it shows that the piston has a range of
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`movement B here, which allows the cylinder -- allows the mandrel to
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`move down. The range of movement B is greater than this distance C,
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`Case IPR2014-00216, Patent 6,179,053 and
`Case IPR2014-00364, Patent 6,289,993
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`which is the distance from the bottom of the mandrel to this fixed
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`point, and that's described in column 5, lines 61 through 65 of the '053
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`patent.
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`Now, in column 8, lines 21 through 31, as shown in slide 5,
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`there is a description of the operation of this embodiment, in particular
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`of this piston and cylinder, and this description makes clear that
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`pressurized fluid is injected into a port here 88 above the piston and
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`relieved with this port 90 below the piston and that pressurized fluid
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`then applies a force P2 that moves the piston down together with the
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`mandrel and that force then causes the mandrel to come into contact
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`with the fixed point.
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`And the patent specifically says that the mandrel is locked
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`down in its operative position by the hydraulic force P2. So this force
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`P2 causes the mandrel to be locked in this operative position in
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`contact with the fixed point.
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`Now, just to demonstrate this operation, this is a small
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`animation showing the mandrel, showing the piston connected to the
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`mandrel and showing how the hydraulic fluid then moves the mandrel
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`and piston down until contact is made and then a hydraulic pressure
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`locks down. As the patent says here, mandrel 72 is locked down in its
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`operative position by that hydraulic force.
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`So with that as a general overview, I'd like to refer to the
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`single prior art reference in issue here, which is a published Canadian
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`Patent Application Number 2,195,118, which is a -- actually a
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`Case IPR2014-00216, Patent 6,179,053 and
`Case IPR2014-00364, Patent 6,289,993
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`Canadian patent application by the same inventor, Mr. Dallas, who is
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`the sole inventor of the '053 patent.
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`Now, this Canadian patent application is prior art under
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`102(b). There's no dispute about that. And this application actually
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`discloses precisely the same type of fixed-point packoff that is
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`disclosed in the '053 patent. We'll discuss that a bit more.
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`Also, I think it's worth noting that there was no prior art
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`cited during prosecution of the '053 patent that discloses any similar
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`type of fixed-point packoff.
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`And, finally, it's worth noting, and there's no dispute, that
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`U.S. Patent 5,819,851, which is Exhibit 2001 in the case, that is
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`discussed in the background of the '053. That is the counterpart of
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`this Dallas '118 application, but the '851 is not prior art at all, whereas
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`the Canadian application, the Dallas '118 application, is prior art under
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`102(b).
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`So the only prior art is the Canadian '118 application which,
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`by the way, for the record is Exhibit 1003 and we are here on slide
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`number 13.
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`Now, slide number -- I'm sorry, that was slide 8.
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`Slide number 9 shows a colored-in view of the device of
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`Dallas '118. And as you can see, the configuration is very similar to
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`the second embodiment of the '053 patent. Here we have a cylinder
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`which has formed a spool 10.
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`Inside the cylinder is a piston here, which is connected to the
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`top of a mandrel. The mandrel is connected to a mandrel extension,
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`Case IPR2014-00216, Patent 6,179,053 and
`Case IPR2014-00364, Patent 6,289,993
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`which itself is connected to a mandrel packoff assembly, and that
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`packoff assembly gets inserted into a wellhead and comes into contact
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`with a fixed point in the form of a bit guide in the tubing head spool
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`exactly as in the '053 patent.
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`Now, the next slide, slide number 10, shows Figure 3 from
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`the '118 application and it shows this device in a little bit more detail.
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`It's an exploded view where we can see that the cylinder here 10,
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`which is spool 10, you know, encompasses the mandrel, which is
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`shown here with an enlarged top which forms the piston. So
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`hydraulic fluid comes into this port 44 and is released from port 46
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`and forces this piston down that's connected to the mandrel, just as in
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`the '053 patent.
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`Now, at the bottom is a mandrel extension, which is
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`connected by threads to the bottom of the mandrel itself, and you can
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`see here the mandrel has a length about equal to the length of the
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`cylinder and the mandrel extension extends out from the bottom of the
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`cylinder 10. Below that is a packoff assembly. And so we put
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`together a small animation to demonstrate here in slide number 11 the
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`operation of this device.
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`Much like the second embodiment of the '053 patent,
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`hydraulic fluid is put into the top and relieved from the bottom that
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`causes the mandrel and the mandrel extension and the packoff
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`assembly to be forced downward until the packoff assembly comes
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`into contact with a fixed point in this position. In this case it's a bit
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`guide.
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`Case IPR2014-00216, Patent 6,179,053 and
`Case IPR2014-00364, Patent 6,289,993
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`So the operation of this device is almost identical to the
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`operation of the second embodiment of the '053 patent. And, here, we
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`show the two animations side by side. So, first, we see the operation
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`of the hydraulic cylinder of the '053 patent where hydraulic fluid
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`forces the mandrel down into contact with the bit guide. And as we
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`noted, the patent says that it's locked down in that position by the
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`hydraulic pressure P2.
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`Likewise, in the Dallas '118 application hydraulic fluid
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`forces the mandrel down until the packoff assembly comes into
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`contact with the bit guide and that is held there, as the patent
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`application says, to secure the mandrel in position during a fracturing
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`operation.
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`JUDGE TARTAL: Counsel, can you address elements 58
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`and 60 of the '053 embodiment shown in the slide?
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`MR. FELDHAUS: 58 and 60, yes. 58 and 60 is a
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`mechanical locking mechanism that is for securing the mandrel in the
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`event that the hydraulic pressure of the cylinder is lost. So that is a
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`backup, a secondary mechanism, but the point is that the patent says
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`that the hydraulic pressure is what locks the mandrel in position.
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`Now, Claims 1 and 22 are challenged here, but all of the
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`arguments against Claim 1 are the same as the arguments that were
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`made against Claim 22. So I'm going to start with Claim 1. We'll talk
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`about Claim 22 a bit, but the arguments are basically really the same.
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`So here is Claim 1. First, it's worth noting as was indicated
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`in the Institution Decision that although the embodiment of the '053 is
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`Case IPR2014-00216, Patent 6,179,053 and
`Case IPR2014-00364, Patent 6,289,993
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`a hydraulic fracturing wellhead isolation tool, the claim itself is very
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`broad in nature and not limited to hydraulic fracturing or any
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`particular operation. It doesn't have any limitations about pressures or
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`such. It simply starts out with an apparatus for securing a mandrel of
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`a well tool in an operative position requiring a fixed-point packoff
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`and, really, there is no dispute that the Dallas '118 meets the language
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`of the preamble.
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`Then we have first and second lockdown mechanisms
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`arranged so that the mandrel is locked in the operative position, only
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`when the first and the second lockdown mechanisms are in respective
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`lockdown positions. There's really no dispute concerning the basic
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`operation of this device that there is a first lockdown mechanism and
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`the claim actually puts in more detail about the first lockdown
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`mechanism adapted to detachably maintain the mandrel in proximity
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`to the fixed-point packoff that we show here circled in red, what is the
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`first lockdown mechanism, which comprises a mounting flange here
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`at the bottom of the cylinder in blue and bolts 28.
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`And so the first lockdown mechanism includes a base
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`member, which is the flange for connection to a wellhead, and a
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`locking member for detachably engaging the base member to locking
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`member are the bolts and the nuts.
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`So, really, there's no dispute about the first lockdown
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`mechanism being present. The real dispute here centers around the
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`second lockdown mechanism, which is claimed as having a range of
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`adjustment adequate to ensure that the mandrel can be moved into the
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`Case IPR2014-00216, Patent 6,179,053 and
`Case IPR2014-00364, Patent 6,289,993
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`operative position and locked down in the operative position while the
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`first lockdown mechanism is in the lockdown position.
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`So there is -- really, it is clear that the range of adjustment
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`that Dallas '118 has a range of adjustment defined by the stroke of this
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`piston and cylinder, very similar to the range of adjustment in the
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`'053, and that range of adjustment is adequate to ensure that the
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`mandrel can be moved into the operative position.
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`Now, we believe that is clear also that the mandrel is locked
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`down in the operative position by that hydraulic fluid while a first
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`lockdown mechanism is in the lockdown position. So we -- our
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`position is that this claim is clearly met by Dallas '118, meets all of
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`the language here of Claim 1.
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`The arguments against our position advanced by Oil States
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`-- yeah, so here in slide number 17 --
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`JUDGE CAPP: Mr. Feldhaus, let me interrupt you for just a
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`second.
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`MR. FELDHAUS: Yes, Your Honor.
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`JUDGE CAPP: You have a parallel District Court litigation
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`before Judge Davis in the Eastern District of Texas, correct?
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`MR. FELDHAUS: Yes, Your Honor.
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`JUDGE CAPP: And he's done some claim construction in
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`that case, correct?
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`MR. FELDHAUS: Yes, Your Honor.
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`JUDGE CAPP: The argument that you just made, did you
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`make that in front of Judge Davis in light of his claim construction?
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`Case IPR2014-00216, Patent 6,179,053 and
`Case IPR2014-00364, Patent 6,289,993
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`MR. FELDHAUS: Well, Your Honor, to be clear, the claim
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`construction related to this lockdown of the -- in Claim number 1, that
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`was a claim construction that was presented sua sponte by the court.
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`The parties had no argument concerning this limitation without
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`hydraulic pressure, that is neither party proposed that construction and
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`we weren't given an opportunity to actually comment on that
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`construction.
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`So that construction is the construction advanced in the
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`District Court litigation. It's not been appealed, we believe it is clearly
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`wrong and it's wrong for the reasons that I'm going to explain to you
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`here today with regard to our position with respect to the Canadian --
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`to the Dallas '118.
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`I'll also note that, of course, the standard for claim
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`construction is different in the District Court than in here, but I think
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`that standard aside, you're going to see that that construction just can't
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`withstand scrutiny.
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`JUDGE CAPP: Let me go back to my original question
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`was, if we come up with the same construction that Judge Davis did,
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`what does that do with your argument?
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`MR. FELDHAUS: Well, Your Honor, if you come up with
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`the same construction just as Judge Davis did, then the question is
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`whether -- then it becomes an obviousness question and we did not
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`address obviousness with respect to that construction, because we
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`started out with an anticipation.
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`Case IPR2014-00216, Patent 6,179,053 and
`Case IPR2014-00364, Patent 6,289,993
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`We do have an obviousness argument with respect to the
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`motion to amend where the construction is sort of formalized in terms
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`of a proposed amendment to the claim, so we've addressed that
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`argument very head on with respect to our opposition to the motion to
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`amend.
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`JUDGE CAPP: Thank you. Proceed.
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`MR. FELDHAUS: So, again, slide number 17 shows what
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`we understand to be the arguments advanced by Oil States.
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`The first argument is that the second lockdown mechanism
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`must operate without hydraulic pressure and we believe that's just
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`plain wrong. That argument we're going to show you is contrary to
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`both the patent specification and the patent claims, which require the
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`second lockdown mechanism to lock the mandrel with hydraulic
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`pressure.
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`Secondly, there is an argument that the mandrel of the
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`Dallas '118 application is not locked by hydraulic pressure. That's
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`really the same argument, but, again, we believe that's clearly wrong.
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`Even the '053 patent describes the operation of Dallas '118 in terms of
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`a discussion of the '851 patent as being locked by hydraulic pressure.
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`Finally or third, there's an argument that the Dallas '118
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`application doesn't have an enabling disclosure. Again, we think
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`that's just wrong. We think that Oil States has simply misunderstood
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`the requirement for enabling disclosure and we'll discuss that a little
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`bit more, on top of which there are many laudatory comments in both
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`the '053 patent as well as the '993 patent, which is the subject of the
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`Case IPR2014-00216, Patent 6,179,053 and
`Case IPR2014-00364, Patent 6,289,993
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`other petition about how well this device worked in the field. So we
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`don't see that this argument about enabling disclosure has any merit.
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`Finally, there's an argument that the second lockdown
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`mechanism must be separate from a setting tool and that the Dallas
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`'118 application has an integral setting to it. So we don't think that
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`that argument can withstand scrutiny. Clearly, there's a problem
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`because the term setting tool isn't defined.
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`Also, if there was going to be some kind -- there is no reason
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`to read limitations into the claim. Even under a District Court
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`analysis, Oil States would have to show some kind of a clear and
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`unambiguous disclaimer, which is not present in this patent.
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`And, finally, the hydraulic cylinder and piston of Dallas '118
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`work like the second embodiment of the '053. So calling one a setting
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`tool and calling the other not a setting tool just makes the term setting
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`tool indefinite. You can't tell what a setting tool is. If one is a setting
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`tool, they both have to be setting tools.
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`So let's go on to the -- let's go back to the first argument that
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`the second lockdown mechanism must operate without hydraulic
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`pressure. This is a slide really we've seen before, but here is the
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`disclosure of the 85 -- '053 application in slide 18, column 8, lines 21
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`through 31, which specifically says that the mandrel is locked down in
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`its operative position by hydraulic force.
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`So here's the term locked down, the very term that Oil States
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`says isn't met by hydraulic pressure and here's that very term being
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`used in the '053 patent describing how the hydraulic pressure operates
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`Case IPR2014-00216, Patent 6,179,053 and
`Case IPR2014-00364, Patent 6,289,993
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`on the mandrel. So their argument is actually contradicted by their
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`own specification here.
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`JUDGE CAPP: Mr. Feldhaus, the language that you've
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`highlighted in red on slide 18, is it your position that that language
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`applies to every embodiment that could be covered by Claim 1 or just
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`certain specific embodiments?
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`MR. FELDHAUS: Well, I think, Your Honor, Claim 1 calls
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`for something to be locked down. This demonstrates that hydraulic
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`pressure locks down the mandrel. Their argument is that based on the
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`specification you have to read Claim 1 as not -- well, their argument is
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`that you can't lock something down with hydraulic pressure. Okay?
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`They're really saying that reading the specification you have to
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`interpret Claim 1 to require something other than hydraulic pressure.
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`We're simply saying as a matter of claim construction that's
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`contradicted by the specification, which says that hydraulic pressure
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`in this instance does lock the mandrel down. So it's a claim
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`construction issue in my view, not so much of a question of does
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`every hydraulic -- I don't know that every hydraulic cylinder locks
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`every mandrel. I think there's -- I don't know, I don't think that's
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`necessary to -- that analysis would be necessary to resolve this claim
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`construction issue, Your Honor.
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`JUDGE CAPP: Thank you. You can proceed.
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`JUDGE TARTAL: Counsel, how do you square that with
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`what's said in the abstract of the '053 patent that a second mechanical
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`Case IPR2014-00216, Patent 6,179,053 and
`Case IPR2014-00364, Patent 6,289,993
`
`locking mechanism is provided to ensure the mandrel is maintained in
`
`the operative position in the event that hydraulic pressure is lost?
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`MR. FELDHAUS: Well, Your Honor, you know, the '053
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`patent basically says, you know, sometimes hydraulic pressure can be
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`lost and people are less likely to accept a tool that uses only hydraulic
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`pressure. So it doesn't take away from the fact that the hydraulic
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`pressure is what locks the mandrel in position. This is a backup, so
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`maybe the mechanical locks it in position. The hydraulic also locks it
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`in position. They have two locks. That's all.
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`So, sure, they have a statement that it's good to have this
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`backup. But, in fact, as we're going to see in the next slide, they
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`actually claimed, they actually claimed that this locking in Claim 1
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`was done with a hydraulic cylinder. So here is slide number 19.
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`Now, Claim 2 depends from Claim 1 and it simply says that
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`the second lockdown mechanism has two members, a first and second,
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`and they are linked together to provide this range of adjustment. The
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`key, though, here is in claim number -- Dependent Claim Number 8,
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`which specifically calls for the first and second members to be a
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`piston in a hydraulic cylinder of a -- using fluid pressure. It's a
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`hydraulic cylinder.
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`This claim actually requires that the second lockdown
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`mechanism be a hydraulic cylinder. That's the hydraulic cylinder of
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`Figure 8. So by claim differentiation, Claim 1 has to be broader than
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`that.
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`Case IPR2014-00216, Patent 6,179,053 and
`Case IPR2014-00364, Patent 6,289,993
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`But our argument doesn't stop there. They go one step
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`further with Claim Number 10. In Claim Number 10 now, you know,
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`we talk about this backup. Claim Number 10 actually says here, now
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`we have a mechanical backup. Certainly when they mean mechanical,
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`they know how to use the word mechanical.
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`Now, the second lockdown mechanism includes what's in
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`Claim Number 8. You add to what's in Claim Number 8 a mechanical
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`locking mechanism adapted to ensure the mandrel is maintained in the
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`operative position. That's this device up here, the screws and the bolts
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`and the nuts, and that's slide 20 we're talking about here.
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`JUDGE KAMHOLZ: But the inventor went out of his way
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`to distinguish the '851 patent, which is the same as the '118 patent,
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`criticizing it for lacking the mechanical backup. How can we construe
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`the claim to encompass something the inventor pretty clearly
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`repudiated?
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`MR. FELDHAUS: Well, no. I think that the inventor didn't
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`repudiate a hydraulic locking mechanism. In fact, he claimed a
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`hydraulic locking mechanism.
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`JUDGE KAMHOLZ: I didn't say he repudiated the
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`hydraulic locking mechanism. He repudiated the system, which lacks
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`a mechanical backup.
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`MR. FELDHAUS: Well, he said that people are less likely
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`to accept something without a mechanical backup, because there may
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`be problems. He didn't say that he was -- he didn't exclude that from
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`the scope of his invention and, in fact, Claims 8 and 10 specifically
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`Case IPR2014-00216, Patent 6,179,053 and
`Case IPR2014-00364, Patent 6,289,993
`
`require the second lockdown mechanism to be a hydraulic cylinder
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`and Claim 10, as I say, that adds to this combination of this
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`mechanical locking mechanism. That's exactly the mechanical
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`locking mechanism that Oil States would like to read into Claim 1.
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`That would make Claim 10 totally superfluous.
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`The Doctrine of Claim Differentiation requires that Claim
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`10, you know, further limit Claim 1. If you have the locking
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`mechanism in Claim 1 already, there's no purpose. Claim 10 has no
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`meaning. It becomes totally superfluous.
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`So here is the inventor specifically claiming the feature that
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`-- he didn't say that hydraulic can't lock it. He didn't say that's not his
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`invention. He just said it's better to have something in addition and
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`that's what he put into Claim Number 10, this additional mechanical
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`locking mechanism, and he uses the word mechanical when he means
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`mechanical. He knows how to claim a mechanical locking
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`mechanism, Your Honor.
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`JUDGE KAMHOLZ: You have about a minute left of your
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`25.
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`MR. FELDHAUS: All right. So slide number 21 then goes
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`on to talk about how this '851 patent, which is Dallas '118, actually
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`locks -- hydraulically locks the mandrel. So here he is, Mr. Dallas
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`talking about the Dallas '118 tool. Now he's saying that this piston
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`and cylinder in Dallas '118, he specifically says that hydraulically
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`locks the mandrel in the operative position.
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`Case IPR2014-00216, Patent 6,179,053 and
`Case IPR2014-00364, Patent 6,289,993
`
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`So now he's looking back to his own device, again, saying,
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`here, again the hydraulic pressure is what locks the mandrel in
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`position. He's using that same term. So, again, this is in the '053
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`patent, which is Exhibit 1001 at column 2, lines 48 through 54. So
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`her
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