throbber
Paper 12
`Entered: June 10, 2014
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`
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`
`
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`Trials@uspto.gov
`571-272-7822
`
`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.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
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`

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`Case IPR2014-00216
`Patent 6,179,053 B1
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`I. INTRODUCTION
`
`Greene’s Energy Group, LLC (“Petitioner”) filed a reformatted
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`Petition (Paper 6, “Pet.”) requesting inter partes review of claims 1 and 22
`
`of U.S. Patent No. 6,179,053 B1 (Ex. 1001, “the ’053 patent”). Oil States
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`Energy Services, LLC (“Patent Owner”) filed a Patent Owner Preliminary
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`Response (Paper 8, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C.
`
`§ 314(a), which provides that an inter partes review may not be instituted
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`“unless . . . the information presented in the petition . . . and any response
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`. . . shows that there is a reasonable likelihood that the petitioner would
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`prevail with respect to at least 1 of the claims challenged in the petition.”
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`Upon consideration of the Petition and Preliminary Response, we
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`conclude that Petitioner has shown a reasonable likelihood of prevailing in
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`challenging claims 1 and 22 as unpatentable. Accordingly, pursuant to
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`35 U.S.C. § 314(a), we institute inter partes review as to claims 1 and 22 of
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`the ’053 patent.
`
`A. The ’053 Patent
`
`The ’053 patent, titled “Lockdown Mechanism for Well Tools
`
`Requiring Fixed-Point Packoff,” relates to an apparatus and method for
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`securing a mandrel of a well tool in an operative position in which the
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`mandrel is packed off against a fixed-point in a well. Ex. 1001, Abstract,
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`1:6-10. According to the ’053 patent, the servicing of oil and gas wells to
`
`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 it is well known to isolate a wellhead by
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`inserting a mandrel through the wellhead to prevent damage from
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`stimulation fluids. Id. at 1:23-30. At the bottom end of the mandrel a
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`packoff (fluid seal)1 assembly is usually provided to isolate the wellhead
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`from the stimulation fluids. Id. at 1:32-36. If the packoff assembly seals
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`against the inside of the production tubing or casing, however, then the
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`smaller internal diameter of the mandrel used will reduce the flow rate at
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`which stimulation fluids may be pumped into the well. Id. at 1:43-47.
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`To avoid such a reduction in flow rate, the ’053 patent proposes a
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`lockdown mechanism for securing a mandrel requiring a fixed-point packoff
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`in an operative position in the well. Id. at 2:43-45. A fixed-point for
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`packoff may be a bit guide mounted on top of a casing, an annular step
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`above back pressure valve threads of a tubing hangar, or “any other type of
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`fixed-point location used for packoff in a wellhead, a casing, a tubing or
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`downhole tool.” Id. at 5:34-39. According to the ’053 patent, such an
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`arrangement permits the internal diameter of the mandrel to be the same as
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`that of the well tubing or casing. 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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`1 The parties agree “packoff” means a fluid seal. See Pet. 13; Prelim. Resp.
`10; Ex. 1001, 1:32-36.
`
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`Patent 6,179,053 B1
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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
`
`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.
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`Figure 2 of the ’053 patent is reproduced below.
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`
`
`Figure 2 shows a cross-sectional view of one embodiment of an
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`apparatus for securing mandrel 22 of a well tool in an operative position in
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`which mandrel 22 may be packed-off against fixed-point 24 in a well.
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`Ex. 1001, 7:6-9. Base plate 28 may be mounted on the top of a wellhead
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`while it is disengaged from the other parts of apparatus 20, as shown in
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`Figure 2. Id. at 7:8-10. The other parts of apparatus 20 remain connected to
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`the top end of mandrel 22, and are moved with mandrel 22 when it is
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`inserted into the wellhead by a setting tool (not shown in Figure 2). Id. at
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`7:10-12. Upper flange 46 of connector 44 remains spaced from lower flange
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`54 of mandrel head 26 as mandrel 22 is inserted through the wellhead. Id. at
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`7:15-19. For safe engagement to restrain the high fluid pressures during a
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`well treatment to stimulate production, after mandrel 22 is inserted through
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`the wellhead, a first locking mechanism is set by engaging threads 34-36 by
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`rotating lockdown nut 38. 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.
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`Connector 44 may be replaced by an integral hydraulic cylinder. Id.
`
`at 7:51-54. A piston in the hydraulic cylinder is fixed to the mandrel so that
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`when pressurized hydraulic fluid is injected in the chamber above the piston,
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`the mandrel is forced downward to packoff against the fixed point. Id. at
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`7:57-58, 8:21-27, fig 7.
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`Case IPR2014-00216
`Patent 6,179,053 B1
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`B. Challenged Claims 1 and 22
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`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
`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
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`Case IPR2014-00216
`Patent 6,179,053 B1
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`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.
`
`C. Asserted Grounds of Unpatentability
`
`Petitioner challenges claims 1 and 22 of the ’053 patent based on the
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`alleged grounds of unpatentability set forth in the table below, as further
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`supported by the Declaration of Don W. Shackelford. (Ex. 1002).
`
`Reference(s)
`Dallas ’1182
`Dallas ’118 and McLeod3
`Herricks4 and Dellinger5
`
`
`
`
`
`
`Claims Challenged
`Basis
`§ 102(b) 1 and 22
`§ 103(a)
`1 and 22
`§ 103(a)
`1 and 22
`
`2 Canadian Patent Application 2,195,118 (Ex. 1003, “Dallas ’118”) (in this
`decision, the cited page numbers correspond to the numbers centered at the
`bottom of the pages of the exhibit).
`3 US 4,632,183, issued December 30, 1986 (Ex. 1004, “McLeod”).
`4 US 4,076,079, issued February 28, 1978 (Ex. 1005, “Herricks”).
`5 US 2,927,643, issued March 8, 1960 (Ex. 1006, “Dellinger”).
`7
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`Case IPR2014-00216
`Patent 6,179,053 B1
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`II. ANALYSIS
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`A. Claim Construction
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`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 Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
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`48,766 (Aug. 14, 2012). 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
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`of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
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`1257 (Fed. Cir. 2007). Limitations “are not to be read into the claims from
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`the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
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`1. “operative position”
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`Claim 1 recites “the mandrel is locked in the operative position only
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`when both the first and the second lockdown mechanism are in respective
`
`lockdown positions.” Similarly, claim 22 recites mounting an apparatus
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`above a wellhead of the well “for securing the mandrel of the well tool in the
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`operative position.” The ’053 patent further explains that the claimed
`
`invention 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 the well.” Ex. 1001, 1:7-10.
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`Patent Owner asserts that the definition of “operative position”
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`requires that it is a position that protects the wellhead “for a well treatment
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`to stimulate production,” as that is “the whole purpose of the claimed
`
`invention.” Prelim. Resp. 8 (quoting Ex. 1001, 8:35-38, 9:31-34). We
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`disagree with Patent Owner’s assertion because the portions of the patent
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`cited by Patent Owner address only an example of the use of the apparatus.
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`We will not read such limitations into the claims. See In re Van Geuns, 988
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`F.2d at 1184. Accordingly, for purposes of this decision, we determine the
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`broadest reasonable construction of “operative position,” consistent with its
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`usage in the specification of the ’053 patent and its plain meaning, is “a
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`position in which the mandrel is packed off against a fixed-point in the
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`well.”
`
`2. “fixed-point”
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`Petitioner contends that “fixed-point” should be construed as “a
`
`singular discontinuity in a well where a fluid tight seal must be formed.”
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`Pet. 14. The ’053 patent does not use the term “singular discontinuity.” As
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`noted above, the specification states that a “fixed-point for packoff” is any
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`“fixed-point location used for packoff in a wellhead, a casing, a tubing or
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`downhole tool.” Id. at 5:34-39. The ’053 patent also 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. See id. at 2:39-40.
`
`Consequently, for purposes of this decision, no express construction for the
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`claim term is necessary.
`
`3. “first lockdown mechanism” and “second lockdown mechanism”
`
`The parties dispute whether “first lockdown mechanism” and “second
`
`lockdown mechanism,” as recited in claims 1 and 22, must be interpreted as
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`means-plus-function limitations in accordance with 35 U.S.C. § 112, ¶ 6.6
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`See Pet. 14-22; Prelim. Resp. 12-26. Patent Owner asserts that a lockdown
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`mechanism is comprised of a locking member and a base member, as recited
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`in the claim language, and requires no formal claim construction. Prelim.
`
`Resp. 13. Petitioner asserts that “lockdown mechanism” is a nonstructural
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`term modified by functional language, but not modified by sufficient
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`structure, material, or acts for achieving the specified function. Pet. 15-16.
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`Petitioner asserts that, as a result, “lockdown mechanism” should be
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`construed as a means-plus-function limitation.
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`Neither claim 1 nor claim 22 recites the term “means” with respect to
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`the “first lockdown mechanism” or “second lockdown mechanism.” There
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`is a rebuttable presumption that Section 112, ¶ 6 does not apply to claim
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`limitations that lack the term “means.” See, e.g., Lighting World, Inc. v.
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`Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004); CCS
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`Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002).
`
`“This presumption may be overcome if the claim fails to recite ‘sufficiently
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`definite structure’ or merely recites a ‘function without reciting sufficient
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`structure for performing that function.’” Apple Inc. v. Motorola, Inc., Nos.
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`2012-1548, 2012-1549, 2014 WL 1646435, at *4 (Fed. Cir. Apr. 25, 2014)
`
`(citations omitted). The United States Court of Appeals for the Federal
`
`Circuit has “repeatedly characterized this presumption as ‘strong’ and ‘not
`
`
`
`6 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284 (2011) (“AIA”), re-designated 35 U.S.C. § 112, ¶ 6, as
`35 U.S.C. § 112(f). Because the ’053 patent has a filing date before
`September 16, 2012 (effective date of AIA), we use the citation § 112, ¶ 6.
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`readily overcome’ and, as such, ha[s] ‘seldom’ held that a limitation without
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`recitation of ‘means’ is a means-plus function limitation.” Id. (citations
`
`omitted); see also Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367,
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`1374 (Fed. Cir. 2012) (“When the claim drafter has not signaled his intent to
`
`invoke [Section] 112, ¶ 6 by using the term ‘means,’ we are unwilling to
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`apply that provision without a showing that the limitation essentially is
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`devoid of anything that can be construed as structure.”).
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`Petitioner fails to overcome the presumption that “first lockdown
`
`mechanism” and “second lockdown mechanism” do not invoke Section 112,
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`¶ 6. Petitioner relies on the assertion of its declarant that the claim terms are
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`“not structure known in the art and do[] not indicate any structure [that]
`
`could perform the functions attributed to that mechanism.” See Pet. 15; Ex.
`
`1002 ¶¶ 30, 44. The unsupported statement of Petitioner’s declarant is not
`
`enough to overcome the strong presumption that Section 112, ¶ 6 does not
`
`apply in this case to “lockdown mechanism.” Indeed, “[m]any devices take
`
`their names from the functions they perform.” Greenberg v. Ethicon Endo-
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`Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (holding that ‘detent
`
`mechanism’ did not invoke § 112, ¶ 6). Further, with respect to the method
`
`of claim 22, Section 112, ¶ 6 is implicated only when “steps plus function
`
`without acts are present.” O.I. Corp. v. Tekmar Co., 115 F.3d 1576, 1583
`
`(Fed. Cir. 1997). Petitioner has not shown credibly that claim 22 includes
`
`such steps to overcome the presumption that Section 112, ¶ 6 does not apply.
`
`Consequently, we determine that the limitations “first lockdown
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`mechanism” and “second lockdown mechanism,” as recited in claims 1 and
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`22, do not invoke Section 112, ¶ 6.
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`Additionally, Patent Owner asserts that “second lockdown
`
`mechanism” should be construed to require that it be an element separate
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`from the setting tool that is used to install the device on a wellhead, because
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`it was a goal of the ’053 patent to provide for a lockdown mechanism having
`
`a low profile. Prelim. Resp. 21-23. Notwithstanding the purported goal of
`
`the patent, Patent Owner does not direct us to a disclosure in the
`
`specification that the second lockdown mechanism must be distinct from the
`
`setting tool. Accordingly, for purposes of this decision, we determine that
`
`the meaning of “second lockdown mechanism” does not require that it be a
`
`mechanism separate from the setting tool.
`
`4. “mandrel”
`
`In its Preliminary Response, Patent Owner asserts that the proper
`
`construction of “mandrel” is “an adjustable length of high-pressure tubing
`
`that includes a fluid passage.” Prelim. Resp. 34. To the contrary, the
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`specification does not state that a mandrel is of “an adjustable length,” but
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`instead states that the length of a mandrel “may be adjusted by the insertion
`
`of extension sections.” Ex. 1001, 6:52-54. Accordingly, for purposes of this
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`decision, the meaning of “mandrel” does not require that it be of an
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`adjustable length.
`
`5. Order of Method Steps of Claim 22
`
`The parties disagree as to whether the scope of claim 22 is limited to
`
`performing the recited steps in a particular order. Pet. 22-23; Prelim. Resp.
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`25-26. We determine that the ordering of steps is not material to this
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`decision.
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`B. Anticipation by Dallas ’118
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`Petitioner contends that claims 1 and 22 are anticipated by
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`Dallas ’118. Pet. 41-47. As explained by Patent Owner, Dallas ’118 is the
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`Canadian Patent Application counterpart to U.S. Patent No. 5,819,851 (“the
`
`’851 patent”). L. Murray Dallas is the sole named inventor on the face of
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`the ’053 patent, the ’851 patent, and Dallas ’118. The parties agree that the
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`’851 patent is not prior art to the ’053 patent. Joint Stipulation Regarding
`
`the ’851 Patent, Paper No. 10. Patent Owner has not disputed that
`
`Dallas ’118 is prior art to the ’053 patent.
`
`The ’851 patent is discussed in the “Background of the Invention” of
`
`the ’053 patent. See Ex. 1001, 2:26-3:9. The ’053 patent suggests that it
`
`resolves a number of deficiencies with the apparatus of the ’851 patent,
`
`including eliminating the need for a fairly long setting tool to provide
`
`sufficient stroke and permitting the setting tool to be removable from the
`
`mandrel, thereby reducing the profile of the well tool to improve access to
`
`equipment mounted on the well tool. Ex. 1001, 2:62-3:2; see Prelim. Resp.
`
`28-29.
`
`Dallas ’118 describes an apparatus and method for protecting blowout
`
`preventers (BOPs) from high pressures and exposures to abrasive or
`
`corrosive fluids during well fracturing or stimulation treatments. Ex. 1003,
`
`4. Figures 3 and 4 of Dallas ’118 are reproduced below.
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`Figures 3 and 4 depict cross-sectional views of BOP protector 10, with
`
`Figure 4 further including related spools mounted on a wellhead above a
`
`BOP. Ex. 1003, 9. Figure 3 shows mandrel extension 58 connectable to the
`
`bottom of mandrel 28. Id. at 14. Mandrel packoff assembly 68 is
`
`connectable to the bottom of mandrel extension 58. Id. The bottom of
`
`mandrel packoff assembly 68 includes annular seal 78, which sealingly
`
`engages a top of the well casing. Id. BOP protector 10 includes bottom
`
`flange 22 adapted for fluid tight connection with a top end of a BOP or a
`
`casing spool. Id. at 10. Figure 4 shows BOP protector 10 stroked down
`
`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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`14
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`’118, hydraulic fluid injected through hydraulic fluid port 44 into upper
`
`chamber 36, shown in Figure 3, should be maintained at a pressure of about
`
`1000 psi while BOP protector 10 is in use to seat annular seal 78 against bit
`
`guide 84 with enough force to ensure a fluid tight seal. Id. Stimulation
`
`fluids then may be pumped through unions 90 of high pressure valve spool
`
`88 mounted to the top of BOP protector 10. Id. at 16-17.
`
`Claims 1 and 22
`
`Claim 1 requires a first lockdown mechanism that includes a base
`
`member for connection to a wellhead of the well and a locking member for
`
`detachably engaging the base member. Claim 22 contains a similar
`
`requirement. Petitioner contends that bottom flange 22 of Dallas ’118
`
`corresponds to the base member of a first lockdown mechanism, and that
`
`bolts through the bores in lower flange 22 correspond to a locking member.
`
`Pet. 42.
`
`Claim 1 further requires a second lockdown mechanism having a
`
`range of adjustment adequate to ensure that the mandrel can be moved into
`
`the operative position, and locked down in the operative position while the
`
`first lockdown mechanism is in the lockdown position. Claim 22 contains a
`
`similar requirement. Petitioner contends that the hydraulic cylinder
`
`mechanism of Dallas ’118, which ensures a fluid tight seal between annular
`
`seal 78 and bit guide 84 by maintaining a pressure of about 1000 psi in upper
`
`chamber 36, corresponds to the recited second lockdown mechanism. Pet.
`
`15
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`36, 44.
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`Patent Owner asserts that the hydraulic setting tool taught in Dallas
`
`’118 does not correspond to the claimed second lockdown mechanism,
`
`because the ’053 patent uses a separate setting tool to insert the mandrel
`
`through the wellhead. Prelim. Resp. 29-30. The ’053 patent describes
`
`embodiments in which the setting tool is removed (Ex 1001, 9:21-
`
`26);however, claim 1 does not require a second lockdown mechanism that is
`
`separate from the setting tool. Particular embodiments in the written
`
`description will not be used to limit claim language that has broader effect.
`
`Electro Sci. Indus., Inc. v. Dynamic Details, Inc., 307 F. 3d 1343, 1349 (Fed.
`
`Cir. 2002).
`
`Patent Owner also asserts that Dallas ’118 does not disclose locking
`
`or securing the mandrel in the operative position, because the words
`
`“secure” and “lock” do not appear in Dallas ’118. Prelim. Resp. 31. This
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`argument is unpersuasive, because it is inconsistent with the treatment of the
`
`Dallas ’118 disclosure (as mirrored by its counterpart, the ’851 patent) in the
`
`’053 patent itself. The ’053 patent states that the “setting tool [of the ’851
`
`patent] is used to hydraulically lock the mandrel in an operative position.”
`
`Ex. 1001, 2:48-51. Dallas ’118 also states that a fluid tight seal between
`
`annular seal 78 and bit guide 84 is ensured by maintaining a pressure of
`
`about 1000 psi in upper chamber 36, and that the “hydraulic fluid pressure in
`
`the upper chamber should be maintained at about 1,000 psi at all times while
`
`the BOP protector 10 is in use.” Ex. 1003, 15:30-31. We are persuaded, on
`
`the present record, that Dallas ’118 describes that the mandrel is locked or
`
`secured in the operative position to function properly.
`
`16
`
`
`
`

`
`Case IPR2014-00216
`Patent 6,179,053 B1
`
`
`Based on the information presented, Petitioner has demonstrated a
`
`reasonable likelihood that it would prevail in showing claims 1 and 22 are
`
`unpatentable as anticipated by Dallas ’118.
`
`C. Obviousness Over Dallas ’118 and McLeod
`
`Petitioner bases its argument that claims 1 and 22 are unpatentable as
`
`obvious over Dallas ’118 and McLeod on the premise that “first lockdown
`
`mechanism” and “second lockdown mechanism” are means-plus-function
`
`claim limitations. Pet. 23. Petitioner explains that it relies on McLeod
`
`because Dallas ’118 “alone does not disclose structure that is the same as the
`
`lockdown nut 38 and complementary threaded sleeve 32 of the ’053 patent.”
`
`Pet. 32-33. We have determined, however, that claims 1 and 22 do not
`
`invoke Section 112, ¶ 6. Petitioner has given no other reason McLeod is
`
`necessary to demonstrate the unpatentability of claims 1 and 22.
`
`Consequently, we do not institute a review based on obviousness over
`
`Dallas ’118 and McLeod. See 37 C.F.R. § 42.108.
`
`D. Obviousness Over Herricks and Dellinger
`
`Petitioner contends that claims 1 and 22 would have been obvious
`
`over Herricks and Dellinger. Pet. 47-60. Herricks describes a full bore
`
`fracture treating assembly for running a casing packer or perforating gun,
`
`with wellhead pressure remaining at the surface. Ex. 1005, Abstract.
`
`According to Petitioner, Herricks describes a conventional wellhead
`
`isolation tool, including a mandrel placed in an operative position against a
`
`fixed-point packoff. Pet. 55. Petitioner concedes that Herricks “does not
`
`include an explanation of how its mandrel is inserted and secured.” Id. at
`
`17
`
`
`
`

`
`Case IPR2014-00216
`Patent 6,179,053 B1
`
`
`52. Thus, Petitioner relies on Dellinger to disclose both the “first lockdown
`
`mechanism” and “second lockdown mechanism,” as claimed. Id. at 56-58.
`
`Dellinger describes “an auxiliary and temporarily placed well head
`
`construction wherein the various components of a permanent well head are
`
`isolated from the pressures existing within the well.” Ex. 1006, 1:15-18.
`
`Figure 1 of Dellinger is reproduced below.
`
`Figure 1 depicts a vertical, partially cross sectioned view of a wellhead
`
`assembly with an embodiment of the Dellinger apparatus incorporated. Id.
`
`
`
`18
`
`at 2:27-29.
`
`
`
`

`
`Case IPR2014-00216
`Patent 6,179,053 B1
`
`
`Claims 1 and 22 of the ’053 patent each recite a “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.”
`
`According to Petitioner, Dellinger’s lubricator connection 16 corresponds to
`
`“the base member for connection to a wellhead,” as claimed. Pet. 56.
`
`Petitioner also contends that Dellinger’s combination blowout preventer and
`
`stuffing box 4 corresponds to the “locking member for detachably engaging
`
`the base member,” as claimed. Id. Petitioner also argues that Dellinger hold
`
`down assembly 3 is held in place by means of cable members 6, which are
`
`fastened to a fixed point, such as the wellhead. Id.; see Ex. 1006, 4:19-22.
`
`Petitioner then contends that these elements are structurally and functionally
`
`equivalent to the recited “first lockdown mechanism.” Pet. 56.
`
`We are not persuaded that Petitioner has shown that Dellinger
`
`discloses the claimed “first lockdown mechanism.” In particular, Petitioner
`
`has not credibly established that combination blowout preventer and stuffing
`
`box 4 is connected to hold down assembly 3 such that the purported base
`
`member “lubricator connection 16” could be connected, directly or
`
`indirectly, to a wellhead through cable members 6 and hoisting members 7.
`
`Thus, Petitioner has not shown persuasively that Dellinger describes a “first
`
`lockdown mechanism including a base member for connection to a
`
`wellhead,” as claimed.
`
`For these reasons, we determine that Petitioner has not demonstrated a
`
`reasonable likelihood that it would prevail in showing claims 1 and 22 are
`
`unpatentable as obvious over Herricks and Dellinger.
`
`19
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`

`
`Case IPR2014-00216
`Patent 6,179,053 B1
`
`
`IV. CONCLUSION
`
`
`
`For the foregoing reasons, we conclude that the information presented
`
`in the Petition establishes that there is a reasonable likelihood that Petitioner
`
`would prevail in showing that claims 1 and 22 of the ’053 patent are
`
`unpatentable as anticipated by Dallas ’118. The Board has not made a
`
`determination on the patentability of the challenged claims.
`
`V. ORDER
`
`For the foregoing reasons, it is:
`
`ORDERED that pursuant to 35 U.S.C. § 314(a), inter partes review is
`
`
`
`
`
`instituted as to claims 1 and 22 of the ʼ053 patent as anticipated under 35
`
`U.S.C. § 102 by Dallas ’118;
`
`
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37
`
`C.F.R. § 42.4, notice is hereby given of the institution of a trial. The trial
`
`will commence on the entry date of this decision; and,
`
`FURTHER ORDERED that no other grounds of unpatentability are
`
`authorized for the inter partes review as to the ’053 patent.
`
`
`
`20
`
`
`
`

`
`21
`
`Case IPR2014-00216
`Patent 6,179,053 B1
`
`
`PETITIONER:
`John Feldhaus
`jfeldhaus@foley.com
`
`Andrew R. Cheslock
`acheslock@foley.com
`
`
`
`PATENT OWNER:
`
`C. Erik Hawes
`ehawes@morganlewis.com
`
`
`
`Archis V. Ozarkar
`nozarkar@morganlewis.com

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