Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 53
`Entered: May 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 B1
`____________
`
`
`
`
`Before SCOTT E. KAMHOLZ, WILLIAM A. CAPP, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 53
`Entered: May 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 B1
`____________
`
`
`
`
`Before SCOTT E. KAMHOLZ, WILLIAM A. CAPP, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`IPR2014-00216
`Patent 6,179,053 B1
`
`I. INTRODUCTION
`
`Greene’s Energy Group, LLC (“Petitioner”) filed a reformatted
`
`Petition (Paper 6, “Pet.”) requesting an inter partes review of claims 1 and
`
`22 of U.S. Patent No. 6,179,053 B1 (Ex. 1001, “the ’053 patent”). Based on
`
`the information provided in the Petition, we instituted a trial pursuant to
`
`35 U.S.C. § 314(a) of claims 1 and 22 of the ʼ053 patent as anticipated under
`
`35 U.S.C. § 102 by Dallas ’118.1 Paper 12 (“Inst. Dec.”).
`
`After institution of trial, Oil States Energy Services, LLC (“Patent
`
`Owner”) filed a Patent Owner’s Response (Paper 20, “PO Resp.”) and
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`Petitioner filed a Reply (Paper 35, “Reply”). Patent Owner also filed a
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`Motion to Amend (Paper 23, “Mot.”) proposing substitute claim 28 if claim
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`1 is found unpatentable, and substitute claim 29 if claim 22 is found
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`unpatentable. Petitioner filed an Opposition to the Motion to Amend (Paper
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`36, “Opp.”), and Patent Owner filed a Reply (Paper 44, “PO Reply”). A
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`transcript of the Oral Hearing conducted on February 11, 2015, is entered as
`
`Paper 52 (“Tr.”).
`
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`
`and 37 C.F.R. § 42.73. For the reasons that follow, Petitioner has shown by
`
`a preponderance of the evidence that claims 1 and 22 of the ’053 patent are
`
`unpatentable, and Patent Owner’s Motion to Amend is denied.
`
`
`
`1 Canadian Patent Application 2,195,118 (Ex. 1003, “Dallas ’118”). In this
`decision, the cited page numbers of Dallas ’118 correspond to the numbers
`centered at the bottom of the pages of Exhibit 1003.
`
`2
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`
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`IPR2014-00216
`Patent 6,179,053 B1
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`A.
`
`The ’053 Patent
`
`The ’053 patent, titled “Lockdown Mechanism for Well Tools
`
`Requiring Fixed-Point Packoff,” relates to an apparatus and method for
`
`securing a mandrel of a well tool in an operative position in which the
`
`mandrel is packed off against a fixed-point in a well. Ex. 1001, Abstract,
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`1:6–10. The ’053 patent issued on January 30, 2001, from Application No.
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`09/373,418, filed August 12, 1999 (“the ’418 application).
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`According to the ’053 patent, the servicing of oil and gas wells to
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`stimulate production requires pumping generally corrosive and abrasive
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`fluids under high pressure. Id. at 1:16–20. Such fluids purportedly can
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`cause irreparable damage if they are pumped directly through the spool and
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`valves that make up a wellhead. Id. at 1:21–23. The ’053 patent states that
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`it is well known to isolate a wellhead by inserting a mandrel through the
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`wellhead to prevent damage from stimulation fluids. Id. at 1:23–30. At the
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`bottom end of the mandrel, a packoff (fluid seal)2 assembly usually is
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`provided to isolate the wellhead from the stimulation fluids. Id. at 1:32–36.
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`If the packoff assembly seals against the inside of the production
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`tubing or casing, however, then the smaller internal diameter of the mandrel
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`used will reduce the flow rate at which stimulation fluids may be pumped
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`into the well. Id. at 1:43–47. To avoid such a reduction in flow rate, the
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`’053 patent proposes a lockdown mechanism for securing a mandrel
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`requiring a fixed-point packoff in an operative position in the well. Id. at
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`2:43–45. “The fixed-point for packoff may be a bit guide mounted to the top
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`of a casing, . . . an annular step above back pressure valve threads of a
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`
`
`2 The parties agree “packoff” means a fluid seal. See Pet. 13; PO. Resp. 9;
`Ex. 1001, 1:32-36.
`
`3
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`IPR2014-00216
`Patent 6,179,053 B1
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`tubing hanger, . . . or any other type of fixed-point location used for packoff
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`in a wellhead, a casing, a tubing or downhole tool.” Id. at 5:34–39.
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`According to the ’053 patent, such an arrangement permits the internal
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`diameter of the mandrel to be the same as that of the well tubing or casing.
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`Id. at 1:62–67.
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`As described by the ’053 patent, the mandrel is locked in an operative
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`position only when both first and second lockdown mechanisms are in
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`respective lockdown positions. Id. at 4:5–7. The first lockdown mechanism
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`includes a base member for connection to a wellhead and a locking member
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`for detachably engaging the base member. Id. at 4:10–13. The second
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`lockdown mechanism has a range of adjustment adequate to ensure that the
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`mandrel can be moved into the operative position and locked down while the
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`first lock down mechanism is in the lockdown position. Id. at 4:13–17.
`
`4
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`
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`IPR2014-00216
`Patent 6,179,053 B1
`
`Figure 2 of the ’053 patent is reproduced below.
`
`
`
`Figure 2 shows a cross-sectional view of one embodiment of an apparatus
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`for securing mandrel 22 of a well tool in an operative position in which
`
`mandrel 22 may be packed-off against fixed-point 24 in a well. Ex. 1001,
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`7:6–9. Base plate 28 may be mounted on the top of a wellhead while it is
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`disengaged from the other parts of apparatus 20. Id. at 7:8–10. The other
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`parts of apparatus 20 remain connected to the top end of mandrel 22, and are
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`moved with mandrel 22 when it is inserted into the wellhead by a setting
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`tool (not shown in Figure 2). Id. at 7:10–12. Upper flange 46 of connector
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`44 remains spaced from lower flange 54 of mandrel head 26 as mandrel 22
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`is inserted through the wellhead. Id. at 7:15–19. For safe engagement to
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`restrain the high fluid pressures during a well treatment to stimulate
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`production, after mandrel 22 is inserted through the wellhead, a first locking
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`5
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`IPR2014-00216
`Patent 6,179,053 B1
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`mechanism is set by engaging threads 34–36 by rotating lockdown nut 38.
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`Id. at 5:60-61, 7:19–22.
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`At this stage, the bottom end of mandrel 22 is still above fixed-point
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`24 for packoff. Id. at 7:22–24. After lockdown nut 38 is fully engaged,
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`mandrel 22 is stroked down until the bottom end of mandrel 22 packs-off
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`against fixed-point 24. Id. at 7:24–27. A second lockdown mechanism then
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`is set by rotating nuts 60 down against flange 54 of mandrel head 26 to
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`prevent a fluid seal on the lower end of mandrel 22 from being forced away
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`from fixed-point 24. Id. at 7:27–32. Connector 44 may be replaced by an
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`integral hydraulic cylinder. Id. at 7:51–54. A piston in the hydraulic
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`cylinder is fixed to the mandrel so that when pressurized hydraulic fluid is
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`injected in the chamber above the piston, the mandrel is forced downward to
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`packoff against the fixed point. Id. at 7:57–58, 8:21–27, Fig 7.
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`B. Challenged Claims 1 and 22
`
`Petitioner challenges claims 1 and 22, which read:
`
`1. An apparatus for securing a mandrel of a well tool in an
`operative position requiring fixed-point packoff in the well,
`comprising:
`a first and a second lockdown mechanism arranged so that
`the mandrel is locked in the operative position only
`when both the first and the second lockdown mechanism
`are in respective lockdown positions;
`the first
`lockdown mechanism adapted to detachably
`maintain the mandrel in proximity to the fixed-point
`packoff when in the lockdown position, the first lockdown
`mechanism including a base member for connection to a
`wellhead of the well and a locking member for detachably
`engaging the base member; and
`the second lockdown mechanism having a range of
`adjustment adequate to ensure that the mandrel can be
`moved into the operative position and locked down in the
`
`6
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`
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`IPR2014-00216
`Patent 6,179,053 B1
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`operative position while the first lockdown mechanism is
`in the lockdown position.
`
`
`22. A method for lockdown of a mandrel of a well tool in an
`operative position in which the mandrel is packed off against a
`fixed-point in the well, comprising steps of:
`a) mounting above a wellhead of the well an apparatus for
`securing the mandrel of the well tool in the operative
`position, comprising a first and a second lockdown
`mechanism arranged so that the mandrel is locked in the
`operative position only when both the first and second
`lockdown mechanisms are
`in respective
`lockdown
`positions; the first lockdown mechanism being adapted to
`detachably maintain the mandrel in proximity to the
`fixed-point for packoff, and including a base member for
`connection to a top of a wellhead of the well and a
`locking member for detachably engaging the base
`member; and the second lockdown mechanism having a
`range of adjustment to ensure that the mandrel can be
`moved into the operative position and locked down in the
`operative position while the first lockdown mechanism is
`in the lockdown position;
`b) after inserting the mandrel through the wellhead into
`proximity to the fixed-point in the well, engaging the
`locking member of the first lockdown mechanism with
`the base member so that the mandrel is only moveable
`within the range of adjustment;
`c) moving the mandrel into the operative position if the
`mandrel is not yet packed off against the fixed-point; and
`d) locking the second lockdown mechanism in the lockdown
`position.
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, claims of unexpired patents are construed by
`
`applying the broadest reasonable interpretation, in light of the specification.
`
`37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs., LLC, 778 F.3d 1271,
`
`7
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`
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`IPR2014-00216
`Patent 6,179,053 B1
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`1278–1282 (Fed. Cir. 2015). Consistent with the broadest reasonable
`
`construction, claim terms are presumed to have their ordinary and customary
`
`meaning, as understood by a person of ordinary skill in the art, in the context
`
`of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
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`1257 (Fed. Cir. 2007).
`
`In our Decision to Institute we made a number of initial claim
`
`construction determinations that Patent Owner does not contest in its
`
`Response and that Petitioner does not address in its Reply. We determined
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`the broadest reasonable construction of “operative position,” consistent with
`
`its usage in the Specification of the ’053 patent and its plain meaning, is “a
`
`position in which the mandrel is packed off against a fixed-point in the
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`well.” Inst. Dec. 8–9. We also determined that no express construction of
`
`“fixed-point” is necessary, because the ’053 patent states that a bit guide
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`attached to the top end of a casing provides a fixed-point for packoff of the
`
`mandrel, and Dallas ’118 discloses such a bit guide (Ex. 1001, 2:39–40).
`
`Inst. Dec. 9. We also determined that the meaning of “mandrel” does not
`
`require that it be of an adjustable length. Id. at 12. We also declined to
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`adopt Petitioner’s assertion that steps of claim 22 required a particular order.
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`Inst. Dec. 12–13. With respect to “first lockdown mechanism” and “second
`
`lockdown mechanism,” we determined that Petitioner had not overcome the
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`rebuttable presumption that § 112, ¶ 6 does not apply to such claim
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`limitations that lack the term “means.” See, e.g., Lighting World, Inc. v.
`
`Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004); CCS
`
`Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002).
`
`Inst. Dec. 9–12. Having considered whether any of these determinations
`
`8
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`IPR2014-00216
`Patent 6,179,053 B1
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`should be changed in light of the evidence introduced during trial, we are not
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`persuaded any modification is necessary.
`
`1. “second lockdown mechanism”
`
`Patent Owner argues that “second lockdown mechanism” would be
`
`understood by a person of ordinary skill in the art to mean “a lockdown
`
`mechanism separate from a setting tool which locks the mandrel in position
`
`without hydraulic pressure.” PO Resp. 10. In particular, Patent Owner
`
`argues that a “second lockdown mechanism” would be understood to be
`
`1) mechanical, and 2) separate from a setting tool. Id.
`
`a) The “Second Lockdown Mechanism” is Not Limited to a
`Mechanical Apparatus
`
`In support of its contention that a “second lockdown mechanism”
`
`must be mechanical, Patent Owner identifies several statements in the ’053
`
`patent Specification:
`
`The apparatus includes a mechanical lockdown mechanism to
`secure the tool to the wellhead and maintain the mandrel in
`proximity to the fixed-point for packoff, and a mechanical or a
`hydraulic mechanism to move the mandrel into the operative
`position while the mechanical lockdown mechanism is in a
`lockdown position. A second mechanical locking mechanism is
`provided to ensure the mandrel is maintained in the operative
`position in the event that hydraulic pressure is lost.
`
`
`Ex. 1001, Abstract.
`
`
`In addition, a hydraulic lockdown mechanism is considered less
`secure than a mechanical lockdown mechanism. The hydraulic
`lockdown mechanism is dependent on maintenance of the
`hydraulic fluid pressure in the setting tool. Since fluid pressure
`may be lost for a variety of reasons, persons in the industry are
`generally less inclined to endorse or accept a hydraulic
`lockdown mechanism.
`
`9
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`
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`IPR2014-00216
`Patent 6,179,053 B1
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`
`Ex. 1001, 3:2–9.
`
`
`Therefore, there exists a need for a lockdown mechanism for
`securing a mandrel of a well tool in an operative position
`requiring fixed-point packoff in the well which provides a
`broader range of adjustment while ensuring a secure mechanical
`lockdown for maximum security.
`
`
`Ex. 1001, 3:40–45.
`
`Patent Owner further asserts that each embodiment described in the
`
`’053 patent uses a second lockdown mechanism that mechanically locks the
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`mandrel in the operative position. PO Resp. 11–14. Patent Owner offers the
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`Declaration of Gary R. Wooley in support of is proposed construction.
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`Ex. 2012 ¶¶ 55–57. Patent Owner also notes that in related proceedings
`
`between the parties, the district court, relying upon the portion of the
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`Abstract set forth above, construed “second lockdown mechanism” as the
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`“second part of the apparatus that interacts with the first lockdown
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`mechanism to lock the mandrel in the operative position without hydraulic
`
`pressure.” PO Resp. 14 (citing District Court Markman Order, Ex. 2008,
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`16).3
`
`Patent Owner’s argument that “second lockdown mechanism” should
`
`be construed to mean “a lockdown mechanism . . . which locks the mandrel
`
`
`
`3 Petitioner contends that the district court sua sponte adopted a construction
`of “second lockdown mechanism” requiring that it operate “without
`hydraulic pressure” without argument from the parties, and Patent Owner’s
`Declarant, Mr. Wooley, confirms that the construction adopted by the
`district court was not proposed by Patent Owner. See Tr. 14:1–7; Ex. 2012
`¶ 57.
`
`10
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`IPR2014-00216
`Patent 6,179,053 B1
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`in position without hydraulic pressure,” is untenable in light of the manner in
`
`which the term is used in the claims of the ’053 patent.
`
`Claim 8, which depends from claims 2 and 1, recites:
`
`An apparatus as claimed in claim 2 wherein the first member
`of the second lockdown mechanism includes a piston fixed to
`the mandrel and the second member of the second lockdown
`mechanism includes a cylinder connected with the locking
`member of the first lockdown mechanism, the piston being
`adapted to be reciprocated within the cylinder using fluid
`pressure.
`
`Ex. 1001, 11:13–19. Patent Owner offers no explanation for how a “second
`
`lockdown mechanism” that purportedly must operate without hydraulic
`
`pressure nevertheless includes a piston adapted to be reciprocated in a
`
`cylinder using fluid pressure, as required by claim 8. See also id. at 11:20–
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`22 (claim 9, reciting the apparatus of claim 8, requires “wherein a maximum
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`stroke of the piston within the cylinder determines the range of adjustment
`
`of the second lockdown mechanism”). Certain claims of the ’053 patent
`
`require expressly a “mechanical” lockdown mechanism. The absence of the
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`“mechanical” qualifier in broader claims implies that those claims were not
`
`intended to be limited to a mechanical lockdown mechanism. For example,
`
`Claim 10, which depends from claims 8, 2, and 1, recites that “the second
`
`lockdown mechanism comprises a mechanical locking mechanism adapted
`
`to ensure the mandrel is maintained in the operative position in the event that
`
`the fluid pressure is lost.” Ex. 1001, 11:23–27; see also 11:47–65 (claim 14
`
`reciting “a mechanical lockdown mechanism”). Interpreting “lockdown
`
`mechanism” to require a mechanical apparatus operating without hydraulic
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`pressure would render the use of “mechanical” to describe the lockdown
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`mechanism in other claims superfluous. See Biocon, Inc. v. Straumann Co.,
`
`11
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`IPR2014-00216
`Patent 6,179,053 B1
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`441 F.3d 945, 950 (Fed. Cir. 2006) (stating “claims are interpreted with an
`
`eye toward giving effect to all terms in the claim” (citations omitted)).
`
`Moreover, contrary to Patent Owner’s argument, we agree with
`
`Petitioner that the ’053 patent describes the use of a hydraulic mechanism as
`
`a second lockdown mechanism. See Reply 3–5. With regard to an
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`embodiment shown in Figure 5 of the ’053 patent, which corresponds to the
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`apparatus of claim 10, the ’053 patent Specification explains that the
`
`mandrel is forced downwardly to packoff against the fixed-point under a
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`force exerted on the piston by the pressurized hydraulic fluid. Ex. 1001,
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`8:24–27. As the ’053 patent explains, “the mandrel [] is locked down in its
`
`operative position by the hydraulic force [].” Ex. 1001, 8:30–31. The
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`embodiment described further includes an additional mechanical feature “to
`
`ensure that the mandrel is secured in the operative position” (Ex. 1001, 31–
`
`34). Collectively, the Specification and claims of the ’053 patent make clear
`
`that a second lockdown mechanism may be hydraulic, and that an additional
`
`mechanical feature further may be added to the second lockdown
`
`mechanism, not that the second lockdown mechanism must be mechanical.
`
`Accordingly, we conclude that the meaning of “second lockdown
`
`mechanism” as used in the ’053 patent is not limited to a mechanical
`
`apparatus, but instead encompasses any machinery for maintaining the
`
`mandrel in a fixed position.
`
`b) The “Second Lockdown Mechanism” is Not Limited to an
`Apparatus Separate from a Setting Tool
`
`In support of its contention that a “second lockdown mechanism”
`
`must be separate from a setting tool, Patent Owner points out that the
`
`embodiments in the ’053 patent Specification show the setting tool and
`
`12
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`IPR2014-00216
`Patent 6,179,053 B1
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`second lockdown mechanism as separate features. PO Resp. 15–19.
`
`According to Patent Owner, the “setting tool” is “used to ‘insert the
`
`mandrel . . . to an operative position . . . to stimulate production.’” PO
`
`Response 15 (quoting Ex. 1001, 8:35–48). Patent Owner also suggests that
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`a “setting tool” is “the portion of the overall structure that moves the
`
`mandrel down through the wellhead toward the operative position.” Id. at
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`29. Patent Owner identifies three instances in which the Specification
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`“describes the setting tool as being a separate structure that can be
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`removed.” Id. at 21. Patent Owner also argues that it was an object of the
`
`invention to provide a lockdown mechanism having a low profile, which is
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`achieved by using a separate and removable setting tool. Id. at 23. Patent
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`Owner’s proposed construction is supported by Mr. Wooley.4 Ex. 2012
`
`¶¶ 50–54.
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`The term “setting tool” does not occur in any claim of the ’053 patent.
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`The term also is not expressly defined in the ’053 patent. Based on the
`
`evidence presented, we determine that Patent Owner has not clearly shown
`
`what a “setting tool” includes or excludes, much less that the second
`
`lockdown mechanism must be separate from any “setting tool.” To the
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`extent any embodiment depicts an unclaimed feature described as a “setting
`
`tool” as separate from the second lockdown mechanism, the claim language
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`does not preclude that separate element from being incorporated into the
`
`second lockdown mechanism. We decline to import limitations from a
`
`
`
`4 Patent Owner’s argument that “second lockdown mechanism” should be
`construed to be separate from the “setting tool” was rejected in the related
`district court proceeding as “not helpful because it introduces the
`unnecessary and ambiguous term ‘setting tool.’” District Court Markman
`Order, Ex. 2008, 15.
`
`13
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`IPR2014-00216
`Patent 6,179,053 B1
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`preferred embodiment into the claim. See Deere & Co. v. Bush Hog, LLC,
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`703 F.3d 1349, 1354 (Fed. Cir. 2012) (“While claim terms are understood in
`
`light of the specification, a claim construction must not import limitations
`
`from the specification into the claims.”). Accordingly, we conclude that the
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`meaning of “second lockdown mechanism” as used in the ’053 patent is not
`
`limited to an apparatus separate from a setting tool.
`
`2. “lock”
`
`Claims 1 and 22 require that the “mandrel is locked in the operative
`
`position only when both the first and second lockdown mechanism are in
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`respective lockdown positions.” Patent Owner proposes two constructions
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`for the term “lock”: (1) “the mandrel does not move away from the operative
`
`position during the normal course of operation,” and (2) “to ensure that the
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`mandrel is safely secured in the operative position to prohibit the
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`displacement of the mandrel during a well treatment to stimulate
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`production.” PO Resp. 24, 26. The second construction follows the
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`definition provided by Patent Owner’s Declarant, Mr. Wooley. Ex. 2012
`
`¶ 58. Patent Owner contends its proposed construction is consistent with a
`
`dictionary definition of “lock” as meaning “to make fast or immovable, as
`
`by engaging parts.” PO Resp. 24 (quoting WEBSTER’S UNABRIDGED
`
`DICTIONARY 1128 (2d ed. 2001) (Ex. 2016), entry 17 for “lock”). Patent
`
`Owner also asserts that Petitioner’s Declarant, Mr. Shackelford, agreed that
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`“lock” means the mandrel would not move from its operative position during
`
`the normal course of operation. PO Resp. 25.
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`Petitioner does not provide an express construction of the term “lock,”
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`but instead argues that the ’053 patent “defines the term ‘lock’ to include
`
`hydraulic force applied to hold a mandrel in an operative position.” Reply
`
`14
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`IPR2014-00216
`Patent 6,179,053 B1
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`2–3. In particular, Petitioner identifies statements in the ’053 patent that
`
`(1) “[t]he mandrel [] is locked down in its operative position by the
`
`hydraulic force P2,” and (2) a particular structure is “used to hydraulically
`
`lock the mandrel in an operative position.” Reply 4–5 (quoting Ex. 1001,
`
`2:48–51, 8:30–31).
`
`Neither party has shown that the term “lock” is used in the ’053 patent
`
`in any way other than its ordinary and customary manner. Because the
`
`claim expressly recites that the “mandrel is locked in the operative position,”
`
`repeating the same language in the construction of “lock” would render such
`
`claim language superfluous. See Biocon, Inc., 441 F.3d at 950. Nor is there
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`anything in the use of “lock” in the ’053 patent that would require its
`
`definition to incorporate “during a well treatment to stimulate production,”
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`as Patent Owner proposes. Indeed, neither claim 1 nor 22 requires “a well
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`treatment to stimulate production.” Nor has Petitioner provided a rationale
`
`to link a means used to “lock,” such as hydraulic pressure, to the meaning of
`
`“lock.” We apply its ordinary and customary meaning, as understood by a
`
`person of ordinary skill in the art, in the context of the entire patent
`
`disclosure. We recognize that one ordinary and customary meaning of lock,
`
`as suggested by Patent Owner, is “to make fast or immovable, as by
`
`engaging parts.” Prelim. Resp. 24.
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`B. Anticipation by Dallas ’118
`
`Petitioner must demonstrate by a preponderance of the evidence that
`
`the challenged claims are unpatentable to prevail. 35 U.S.C. § 316(e);
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`37 C.F.R. § 42.1(d). Petitioner contends that claims 1 and 22 of the ’053
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`patent are anticipated by Dallas ’118. Pet. 41–47. Dallas ’118 is the
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`Canadian Patent Application counterpart to U.S. Patent No. 5,819,851 (“the
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`15
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`IPR2014-00216
`Patent 6,179,053 B1
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`’851 patent”), with the disclosures of both documents being essentially
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`identical.5 See PO Resp. 4. L. Murray Dallas is the sole named inventor on
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`the face of the ’053 patent, the ’851 patent, and Dallas ’118.
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`“To anticipate a claim, a reference must disclose every element of the
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`challenged claim and enable one skilled in the art to make the anticipating
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`subject matter.” PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558,
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`1566 (Fed. Cir. 1996). Enablement requires that “the prior art reference
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`must teach one of ordinary skill in the art to make or carry out the claimed
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`invention without undue experimentation.” Minnesota Mining & Mfg. Co. v.
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`Chemque, Inc., 303 F.3d 1294, 1301 (Fed.Cir. 2002). The determination of
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`whether “undue experimentation” is required may include consideration of
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`factors such as (1) the quantity of experimentation; (2) the amount of
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`direction or guidance present; (3) the presence or absence of working
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`examples; (4) the nature of the invention; (5) the state of the prior art; (6) the
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`relative skill of those in the art; (7) the predictability or unpredictability of
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`the art; and (8) the breadth of the claims. In re Wands, 858 F.2d 731, 737
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`(Fed. Cir. 1988).
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`1.
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`Summary of Dallas ’118
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`Dallas ’118 describes an apparatus and method for protecting blowout
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`preventers (BOPs) from high pressures and exposures to abrasive or
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`corrosive fluids during well fracturing or stimulation treatments. Ex. 1003,
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`4. Figures 3 and 4 of Dallas ’118 are reproduced below.
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`
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`5 The parties agree that the ’851 patent is not prior art to the ’053 patent.
`Joint Stipulation Regarding the ’851 Patent, Paper No. 10. Patent Owner
`does not dispute that Dallas ’118 is prior art to the ’053 patent.
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`16
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`IPR2014-00216
`Patent 6,179,053 B1
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`Figures 3 and 4 depict cross-sectional views of BOP protector 10, with
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`Figure 4 further including related spools mounted on a wellhead above a
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`BOP. Ex. 1003, 9. Figure 3 shows mandrel extension 58 connectable to the
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`bottom of mandrel 28. Id. at 14. Mandrel packoff assembly 68 is
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`connectable to the bottom of mandrel extension 58. Id. The bottom of
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`mandrel packoff assembly 68 includes annular seal 78, which sealingly
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`engages a top of the well casing. Id. BOP protector 10 includes bottom
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`flange 22 adapted for fluid tight connection with a top end of a BOP or a
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`casing spool. Id. at 10. Figure 4 shows BOP protector 10 stroked down
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`through both BOP 50 and well tubing head 82 into sealing contact with bit
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`guide 84 attached to the top of casing 52. Id. at 15. According to Dallas
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`’118, hydraulic fluid injected through hydraulic fluid port 44 into upper
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`chamber 36, shown in Figure 3, should be maintained at a pressure of about
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`17
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`IPR2014-00216
`Patent 6,179,053 B1
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`1000 psi while BOP protector 10 is in use to seat annular seal 78 against bit
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`guide 84 with enough force to ensure a fluid tight seal. Id. Stimulation
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`fluids then may be pumped through unions 90 of high pressure valve spool
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`88 mounted to the top of BOP protector 10. Id. at 16–17.
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`2.
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`Dallas ’118 Discloses Every Element of Claims 1 and 22
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`Claim 1 requires a first lockdown mechanism that includes a base
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`member for connection to a wellhead of the well, and a locking member for
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`detachably engaging the base member. Claim 22 contains a similar
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`requirement. We agree with Petitioner that bottom flange 22 of Dallas ’118
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`corresponds to the base member of a first lockdown mechanism, and that
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`bolts through the bores in lower flange 22 correspond to a locking member,
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`as claimed in the ’053 patent. See Pet. 42.
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`Claim 1 further requires a second lockdown mechanism having a
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`range of adjustment adequate to ensure that the mandrel can be moved into
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`the operative position, and locked down in the operative position while the
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`first lockdown mechanism is in the lockdown position. Claim 22 contains a
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`similar requirement. We agree with Petitioner that the hydraulic cylinder
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`mechanism of Dallas ’118, which ensures a fluid tight seal between annular
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`seal 78 and bit guide 84 by maintaining a pressure of about 1000 psi in upper
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`chamber 36, corresponds to the recited second lockdown mechanism. See
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`Pet. 36, 44.
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`Patent Owner asserts that the hydraulic mechanism taught in Dallas
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`’118 does not correspond to the claimed second lockdown mechanism
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`because it relies on hydraulic pressure. PO Resp. 28. Patent Owner’s
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`argument is unpersuasive because we conclude, in construing “second
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`lockdown mechanism,” that the claimed element is not limited to a
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`18
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`IPR2014-00216
`Patent 6,179,053 B1
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`mechanical apparatus for the reasons discussed above. Patent Owner also
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`asserts that the hydraulic setting tool taught in Dallas ’118 does not
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`correspond to the claimed second lockdown mechanism because it is not
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`separate from a setting tool. Id. at 29. Patent Owner’s argument is
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`unpersuasive because we conclude, in construing “second lockdown
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`mechanism,” that the claimed element is not limited to an apparatus separate
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`from a setting tool.
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`Claim 1 further requires that the first and second lockdown
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`mechanisms are arranged “so that the mandrel is locked in the operative
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`position only when both the first and the second lockdown mechanism are in
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`respective lockdown positions.” Claim 22 contains a similar requirement.
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`We agree with Petitioner that mandrel 28 of Dallas ’118 is locked in an
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`operative position only when tool 10 is locked down on the wellhead and the
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`piston at the top 30 of mandrel 28 is locked down, forcing assembly 69
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`against bit guide 84. See Pet. 32 (citing Ex. 1003, 13:25–14:1, Ex. 1002
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`¶ 76.)
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`We are not persuaded by Patent Owner’s argument that Dallas ’118
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`discloses holding a mandrel in place to form a fluid-tight seal but not
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`“affirmatively ‘locking’ the mandrel in place such that it does not move
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`during normal operation of the tool.” PO Resp. 30. Dallas ’118 states that a
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`fluid tight seal between annular seal 78 and bit guide 84 is ensured by
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`maintaining a pressure of about 1000 psi in upper chamber 36, and that the
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`“hydraulic fluid pressure in the upper chamber 36 should be maintained at
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`about 1,000 psi at all times while the BOP protector 10 is in use.” Ex. 1003,
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`15:26–31. Patent Owner argues that ensuring a fluid-tight seal is formed is
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`“fundamentally different from ‘locking’ or ‘securing’ the mandrel in an
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`19
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`IPR2014-00216
`Patent 6,179,053 B1
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`operative position.” PO Resp. 30. Patent Owner, however, offers no
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`sufficient explanation of the purported “fundamental difference.”
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`Patent Owner’s argument is also unpersuasive because it is
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`inconsistent with the treatment of the ’851 patent in the ’053 patent itself.6
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`The ’053 patent states that the “setting tool [of the ’851 patent] is used to
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`hydraulically lock the mandrel in an operative position,” and that it is “very
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`convenient for securing a mandrel of a well tool in the operative position.”
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`Ex. 1001, 2:48–51, 58–62. Patent Owner’s argument that a hydraulic
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`apparatus is insufficient to lock the mandrel in place is also inconsistent with
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`one of the disclosed embodiments of the ’053 patent, which makes clear that
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`“[t]he mandrel 72 is locked down in its operative position by the hydraulic
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`force P2.” Ex. 1001, 8:30–31. Patent Owner offers no explanation for why
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`we should disregard the disclosure of the ’053 patent, which expressly
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`equates ensuring a fluid-tight seal, such as disclosed by Dallas ’118, to
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`locking the mandrel in an operative position. Petitioner has demonstrated by
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`a preponderance of the evidence that Dallas ’118 discloses every element of
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`claims 1 and 22.
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