Case 6:12-cv-00611-LED Document 92 Filed 06/23/14 Page 1 of 24 PageID #: 2474
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`Case No. 6:12-cv-611
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`OIL STATES ENERGY SERVICES,
`L.L.C.,
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`Plaintiff,
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`v.
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`TROJAN WELLHEAD PROTECTION,
`INC. and GREENE’s ENERGY GROUP,
`LLC,
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`Defendants.
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`MEMORANDUM OPINION AND ORDER
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`This Memorandum Opinion construes the disputed claim terms in U.S. Patent No.
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`6,179,053 (“the ’053 Patent”). Also before the Court is Defendant Greene Energy Group, LLC’s
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`(“GEG”) Motion for Summary Judgment of Indefiniteness (Docket No. 56). On April 15, 2014,
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`the parties presented arguments on the disputed claim terms at a Markman hearing. For the
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`reasons stated herein, the Court adopts the constructions set forth below and DENIES the
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`Motion for Summary Judgment.
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`GEG also filed a Motion for Leave to File a Surreply Claim Construction Brief (Docket
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`No. 68). The Court typically does not allow for surreplies in claim construction briefing and in
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`this case did not find a surreply necessary to fully consider each party’s positions on the claim
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`terms. Accordingly, GEG’s Motion is DENIED.
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`Greene’s Energy Group, LLC v. Oil States Energy Services, LLC, IPR2014-00216, Ex. 2008
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`Case 6:12-cv-00611-LED Document 92 Filed 06/23/14 Page 2 of 24 PageID #: 2475
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`BACKGROUND
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`Plaintiff Oil States Energy Service, L.L.C. (“OSES”) alleges GEG infringes the ’053
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`Patent.1 The ’053 Patent generally relates to a mechanical device to protect wellheads from the
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`abrasive or corrosive fluid injected into wells during hydraulic fracturing operations. There are
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`two claims at issue: claims 1 and 22.
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`APPLICABLE LAW
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`Claim Construction
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`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention
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`to which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303,
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`1312 (Fed. Cir. 2005) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381
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`F.3d 1111, 1115 (Fed. Cir. 2004)). The Court examines a patent’s intrinsic evidence to define
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`the patented invention’s scope. Id. at 1313–1314; Bell Atl. Network Servs., Inc. v. Covad
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`Commc’ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). Intrinsic evidence includes the
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`claims, the rest of the specification and the prosecution history. Phillips, 415 F.3d at 1312–13;
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`Bell Atl. Network Servs., 262 F.3d at 1267. The Court gives claim terms their ordinary and
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`customary meaning as understood by one of ordinary skill in the art at the time of the invention.
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`Phillips, 415 F.3d at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir.
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`2003).
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`Claim language guides the Court’s construction of claim terms. Phillips, 415 F.3d at
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`1314. “[T]he context in which a term is used in the asserted claim can be highly instructive.” Id.
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`Other claims, asserted and unasserted, can provide additional instruction because “terms are
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`1 Trojan Wellhead Protection, Inc. is also a Defendant in this case, however OSES alleges patent infringement only
`as to GEG in this action.
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`2
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`Case 6:12-cv-00611-LED Document 92 Filed 06/23/14 Page 3 of 24 PageID #: 2476
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`normally used consistently throughout the patent.” Id. Differences among claims, such as
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`additional limitations in dependent claims, can provide further guidance. Id.
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`“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id.
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`(quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995)). “[T]he
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`specification ‘is always highly relevant to the claim construction analysis. Usually, it is
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`dispositive; it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics
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`Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am.
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`Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). In the specification, a patentee may define his own
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`terms, give a claim term a different meaning that it would otherwise possess, or disclaim or
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`disavow some claim scope. Phillips, 415 F.3d at 1316. Although the Court generally presumes
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`terms possess their ordinary meaning, this presumption can be overcome by statements of clear
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`disclaimer. See SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337,
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`1343-44 (Fed. Cir. 2001). This presumption does not arise when the patentee acts as his own
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`lexicographer. See Irdeto Access, Inc. v. EchoStar Satellite Corp., 383 F.3d 1295, 1301 (Fed.
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`Cir. 2004).
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`The specification may also resolve ambiguous claim terms “where the ordinary and
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`accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of
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`the claim to be ascertained from the words alone.” Teleflex, Inc., 299 F.3d at 1325. For
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`example, “[a] claim interpretation that excludes a preferred embodiment from the scope of the
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`claim ‘is rarely, if ever, correct.’” Globetrotter Software, Inc. v. Elam Computer Group Inc., 362
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`F.3d 1367, 1381 (Fed. Cir. 2004) (quoting Vitronics Corp., 90 F.3d at 1583). But, “[a]lthough
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`the specification may aid the court in interpreting the meaning of disputed language in the
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`claims, particular embodiments and examples appearing in the specification will not generally be
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`3
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`Case 6:12-cv-00611-LED Document 92 Filed 06/23/14 Page 4 of 24 PageID #: 2477
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`read into the claims.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir.
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`1988); see also Phillips, 415 F.3d at 1323.
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`The prosecution history is another tool to supply the proper context for claim
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`construction because a patentee may define a term during prosecution of the patent. Home
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`Diagnostics Inc. v. LifeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the
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`specification, a patent applicant may define a term in prosecuting a patent”). The well-
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`established doctrine of prosecution disclaimer “preclud[es] patentees from recapturing through
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`claim interpretation specific meanings disclaimed during prosecution.” Omega Eng’g, Inc. v.
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`Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003). The prosecution history must show that the
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`patentee clearly and unambiguously disclaimed or disavowed the proposed interpretation during
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`prosecution to obtain claim allowance. Middleton, Inc. v. 3M Co., 311 F.3d 1384, 1388 (Fed.
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`Cir. 2002); see also Springs Window Fashions LP v. Novo Indus., L.P., 323 F.3d 989, 994 (Fed.
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`Cir. 2003) (“The disclaimer . . . must be effected with ‘reasonable clarity and deliberateness.’”)
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`(citations omitted)). “Indeed, by distinguishing the claimed invention over the prior art, an
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`applicant is indicating what the claims do not cover.” Spectrum Int’l, Inc. v. Sterilite Corp., 164
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`F.3d 1372, 1378–79 (Fed. Cir. 1988) (quotation omitted). “As a basic principle of claim
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`interpretation, prosecution disclaimer promotes the public notice function of the intrinsic
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`evidence and protects the public’s reliance on definitive statements made during prosecution.”
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`Omega Eng’g, Inc., 334 F.3d at 1324.
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`Although “less significant than the intrinsic record in determining the legally operative
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`meaning of claim language,” the Court may rely on extrinsic evidence to “shed useful light on
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`the relevant art.” Phillips, 415 F.3d at 1317 (quotation omitted). Technical dictionaries and
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`treatises may help the Court understand the underlying technology and the manner in which one
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`4
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`Case 6:12-cv-00611-LED Document 92 Filed 06/23/14 Page 5 of 24 PageID #: 2478
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`skilled in the art might use claim terms, but such sources may also provide overly broad
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`definitions or may not be indicative of how terms are used in the patent. Id. at 1318. Similarly,
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`expert testimony may aid the Court in determining the particular meaning of a term in the
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`pertinent field, but “conclusory, unsupported assertions by experts as to the definition of a claim
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`term are not useful.” Id. Generally, extrinsic evidence is “less reliable than the patent and its
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`prosecution history in determining how to read claim terms.” Id.
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`The patent in suit may contain means-plus-function limitations that require construction.
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`Where a claim limitation is expressed in means-plus-function language and does not recite
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`definite structure in support of its function, the limitation is subject to 35 U.S.C. § 112 ¶ 6.
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`Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997). In relevant part, § 112
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`mandates that “such a claim limitation be construed to cover the corresponding structure . . .
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`described in the specification and equivalents thereof.” Id. (citing 35 U.S.C. § 112 ¶ 6.).
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`Accordingly, when faced with means-plus-function limitations, courts “must turn to the written
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`description of the patent to find the structure that corresponds to the means recited in the
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`[limitations].” Id.
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`Construing a means-plus-function limitation involves two inquiries. The first step
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`requires “a determination of the function of the means-plus-function limitation.” Medtronic, Inc.
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`v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001). Once a court has
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`determined the limitation’s function, “the next step is to determine the corresponding structure
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`disclosed in the specification and equivalents thereof.” Medtronic, 248 F.3d at 1311. A
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`structure is corresponding “only if the specification or prosecution history clearly links or
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`associates that structure to the function recited in the claim.” Id. Moreover, the focus of the
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`corresponding structure inquiry is not merely whether a structure is capable of performing the
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`5
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`Case 6:12-cv-00611-LED Document 92 Filed 06/23/14 Page 6 of 24 PageID #: 2479
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`recited function, but rather whether the corresponding structure is “clearly linked or associated
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`with the [recited] function.” Id.
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`Summary Judgment
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`“Summary judgment is appropriate in a patent case, as in other cases, when there is no
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`genuine issue as to any material fact and the moving party is entitled to judgment as a matter of
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`law.” Nike, Inc. v. Wolverine World Wide, Inc., 43 F.3d 644, 646 (Fed. Cir. 1994); FED. R. CIV.
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`P. 56(c). The moving party bears the initial burden of “informing the district court of the basis
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`for its motion” and identifying the matter that “it believes demonstrate[s] the absence of a
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`genuine issue of material fact.” Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). If the
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`moving party meets this burden, the nonmoving party must then set forth “specific facts showing
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`that there is a genuine issue for trial.” FED. R. CIV. P. 56(c); see also T.W. Elec. Serv., Inc. v.
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`Pac. Elec. Contractors Ass’n, 809 F.2d 626, 630 (9th Cir. 1987).
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`A party seeking to invalidate a patent must overcome a presumption that the patent is
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`valid. See 35 U.S.C. § 282; Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 2243 (2011);
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`U.S. Gypsum Co. v. Nat’l Gypsum Co., 74 F.3d 1209, 1212 (Fed. Cir. 1996). This presumption
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`places the burden on the challenging party to prove the patent‘s invalidity by clear and
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`convincing evidence. Microsoft, 131 S. Ct. at 2243; U.S. Gypsum Co., 74 F.3d at 1212. Close
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`questions of indefiniteness “are properly resolved in favor of the patentee.” Datamize, LLC v.
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`Plumtree Software, Inc., 417 F.3d 1342, 1348 (Fed. Cir. 2005); Exxon Research & Eng’g Co. v.
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`United States, 265 F.3d 1371, 1380 (Fed. Cir. 2001).
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`Claims must particularly point out and distinctly claim the invention. “The specification
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`shall conclude with one or more claims particularly pointing out and distinctly claiming the
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`subject matter which the applicant regards as his invention.” 35 U.S.C. § 112 ¶ 2. The primary
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`6
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`Case 6:12-cv-00611-LED Document 92 Filed 06/23/14 Page 7 of 24 PageID #: 2480
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`purpose of the requirement of definiteness is to provide notice to those skilled in the art of what
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`will constitute infringement. See United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236
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`(1942). The definiteness standard is one of reasonableness under the circumstances, requiring
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`that, in light of the teachings of the prior art and the invention at issue, the claims apprise those
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`skilled in the art of the scope of the invention with a reasonable degree of precision and
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`particularity. See Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624 (Fed.
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`Cir. 1985). To rule “on a claim of patent indefiniteness, a court must determine whether one
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`skilled in the art would understand what is claimed when the claim is read in light of the
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`specification.” Bancorp. Servs., L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367, 1372 (Fed. Cir.
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`2004). “A determination of indefiniteness is a legal conclusion that is drawn from the court‘s
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`performance of its duty as the construer of patent claims, [and] therefore, like claim construction,
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`is a question of law.” Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1378 (Fed. Cir.
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`1999).
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`I.
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`Claim Construction
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`ANALYSIS
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`A.
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`Agreed Terms
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`The parties have agreed to the construction of one term. Docket No. 71.
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`Agreed Claim Construction
`plain and ordinary meaning
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`Claim Term
`the mandrel is locked in the operative position
`only when both the first and [the] second
`lockdown mechanism[s] are in respective
`lockdown positions
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`In view of the parties’ agreements on the proper construction of this term, the Court
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`ADOPTS this construction.
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`7
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`Case 6:12-cv-00611-LED Document 92 Filed 06/23/14 Page 8 of 24 PageID #: 2481
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`B.
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`Disputed Terms
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`“fixed-point” terms
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`OSES’s Proposed Construction GEG’s Proposed Construction
`Term
`a fluid tight seal against a singular
`“fixed-point packoff” a fluid seal formed at a particular
`location within the well
`discontinuity in a well where the
`fluid tight seal must be formed
`a singular discontinuity in a well
`where a fluid tight seal must be
`formed
`fluid
`tightly sealed against a
`singular discontinuity in a well
`where the fluid tight seal must be
`formed
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`“fixed-point”
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`a fluid seal formed at a particular
`location within the well
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`“packed-off against a
`fixed-point”
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`a fluid seal formed at a particular
`location within the well
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`The parties’ dispute centers on whether a “fixed-point” requires a “singular
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`discontinuity.” OSES argues that this term is not confusing or ambiguous, but simply means the
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`mandrel seals at a particular location. Docket No. 52 at 6–7. OSES further contends that
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`“packoff” is defined in the specification of the ’053 Patent as referring to a “fluid seal” at the
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`relevant point in the wellhead. Id. at 7. OSES challenges GEG’s construction as more confusing
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`than the original term and unsupported by the ’053 Patent specification. Id. at 7–8. OSES
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`explains that neither the word “singular” nor “discontinuity” appear in the ’053 Patent and that
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`the phrase “singular discontinuity” is likely to confuse a jury more than the original phrase
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`“fixed point.” Id. Finally, OSES argues that GEG’s proposed construction ignores the portion of
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`the specification indicating that the fixed-point for packoff may be “any other type of fixed-point
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`location used for packoff in a wellhead.” Id. at 8.
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`GEG argues that “fixed-point packoff” is a coined term with no ordinary meaning in the
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`art and no meaning apart from the ’053 Patent. Docket No. 55 at 3. GEG asserts that every
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`example of a “fixed-point packoff” in the ’053 Patent shows the bottom of the mandrel sealed
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`against the upper portion of a singular discontinuity inside the well, contrary to the specification
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`8
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`Case 6:12-cv-00611-LED Document 92 Filed 06/23/14 Page 9 of 24 PageID #: 2482
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`description of a seal against a continuous surface, therefore “singular discontinuity” should be
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`used to define the term. Id. at 4–5. GEG also contends Plaintiff’s construction contradicts the
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`specification and is unduly vague, since virtually all seals are at “a particular location.” Id. at 8.
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`According to the intrinsic evidence, “fixed-point packoff” refers to the location in the
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`well where a fluid tight seal must be formed to isolate the wellhead equipment. ’053 Patent,
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`1:26–42. As described in the specification, the fixed-point packoff may be “any [] type of fixed-
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`point location used for packoff in a wellhead, a casing, a tubing or a downhole tool.” Id. at 5:34–
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`39. Thus, the ‘053 Patent indicates that the configuration of the seal is not critical as long as it
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`isolates the wellhead components from high-pressure, corrosive fluids. Further, neither the
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`claims nor the specification limit the location to a specific point or require a particular
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`configuration for the fluid tight seal. GEG’s proposed construction, requiring a “singular
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`discontinuity,” therefore improperly narrows the claims to certain embodiments.
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`Accordingly, the Court construes “fixed-point packoff” and “fixed-point” as a “location
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`in the well where a fluid tight seal is formed to isolate the wellhead equipment.” The Court
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`construes “packed-off against a fixed-point” as “forming a fluid tight seal at a location in the
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`well to isolate the wellhead equipment.”
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`“mandrel”
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`OSES’s Proposed Construction
`an adjustable length of high-pressure tubing
`that includes a fluid passage
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`GEG’s Proposed Construction
`a length of tubing
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`For this term the parties dispute whether the mandrel should be limited to high-pressure
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`tubing and whether it must be adjustable. OSES contends “mandrel” should be defined as
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`adjustable because the specification states that the length of the mandrel “may be adjusted.”
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`Docket No. 14 at 9 (quoting ’053 Patent, 5:52–53). GEG responds that OSES is improperly
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`9
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`Case 6:12-cv-00611-LED Document 92 Filed 06/23/14 Page 10 of 24 PageID #: 2483
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`attempting to read an embodiment into the claims by requiring a mandrel to be “high pressure”
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`tubing and “adjustable.” Docket No. 55 at 9–10. GEG contends these are merely optional
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`features of preferred embodiments in the specification. Id.
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`Here, the intrinsic evidence indicates that the mandrel is high-pressure tubing having an
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`internal fluid passage. Because hydraulic fracturing necessarily requires the pumping of
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`corrosive fluids at high pressure, it is appropriate to limit the mandrel to high-pressure tubing.
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`See ’053 Patent, 1:15–17 (stating that “servicing of the oil and gas wells to stimulate production
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`requires the pumping of fluids under high pressure”); Id. at 1:42–2:40 (describing three
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`embodiments of wellhead isolation tools, each including a mandrel that isolates the wellhead
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`equipment from high pressures and corrosive or abrasive materials pumped into the well).
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`Further, while the specification indicates the mandrel may be adjusted, there is nothing requiring
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`it to be adjustable. Id. at 5:52–53. Therefore, it would be improper to include such a limitation
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`in the construction of this term. However, the Court notes that while the claims are not limited
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`only to adjustable length mandrels, an adjustable length mandrel is not excluded by this
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`construction.
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`Accordingly, the Court construes “mandrel” as “high-pressure tubing having an internal
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`fluid passage.”
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`“operative position”
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`OSES’s Proposed Construction
`a position at which the mandrel is sealed at the
`fixed point and protects the wellhead for a well
`treatment to stimulate production
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`GEG’s Proposed Construction
`a position in which the mandrel is packed off
`against a fixed-point in the well
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`
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`Here, the parties dispute whether the “operative position” must protect the wellhead
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`during a treatment used to stimulate production. OSES contends this language should be
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`included in the construction because it is taken directly from the ’053 Patent specification.
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`10
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`Case 6:12-cv-00611-LED Document 92 Filed 06/23/14 Page 11 of 24 PageID #: 2484
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`Docket No. 52 at 9 (quoting ’053 Patent, 8:35–38). Further, Plaintiff argues this language is
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`proper because there is no debate that the entire purpose of the invention is to protect the
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`wellhead during well stimulation proceedings. Id. at 9–10. GEG responds that OSES ignores
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`language in the ’053 Patent specification stating that the apparatus “can be used to lock down
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`other types of tools . . . and is not limited to use with the mandrels described above.” Docket No.
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`55 at 11 (quoting ’053 Patent, 10:13–16).
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`
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`The ’053 Patent repeatedly describes an apparatus and method for securing “a mandrel of
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`a well tool in an operative position in which the mandrel is packed off against a fixed-point in the
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`well.” ’053 Patent, Abstract, 1:6–10, 3:49–51, 5:30–34. Based on this repeated use of the phrase
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`“operative position” in the specification, there is no need to include OSES’s proposed additional
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`language. Accordingly, the Court construes “operative position” as “a position in which the
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`mandrel is packed off against a fixed-point in the well.”
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`“first lockdown mechanism”
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`OSES’s Proposed Construction
`plain and ordinary meaning
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`GEG’s Proposed Construction
`This is a means-plus-function element under
`35 U.S.C. § 112, ¶ 6.
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`Function: as recited in each of claims 1 and 22
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`First Structure (all numeral references to Fig.
`1): A base plate 28 with a threaded sleeve 32,
`and a lockdown nut 38 with upper wall 42, as
`well as a connector 44 with a lower flange 48
`rotatably retained by upper wall 42 of
`lockdown nut 38, and an upper flange 46
`bolted to a mandrel head 26 attached to a
`mandrel 22. (See U.S. Patent 6,179,053, Fig.
`1, 5:66–6:17).
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`Second Structure (all numeral references to
`Fig. 5): A base plate 28 with a threaded sleeve
`32, and a lockdown nut 38 with upper wall 42,
`as well a cylinder 74 with a lower flange 92
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`11
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`Case 6:12-cv-00611-LED Document 92 Filed 06/23/14 Page 12 of 24 PageID #: 2485
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`rotatably retained by upper wall 42 of
`lockdown nut 38 and a piston 84 in hydraulic
`cylinder 74 connected to mandrel 72. (See
`U.S. Patent 6,179,053, Fig. 5, 7:48–8:4).
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`The parties dispute whether this is a means-plus-function term governed by 35 U.S.C. §
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`
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`112, ¶ 6. OSES contends “first lockdown mechanism” is written in plain English and needs no
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`formal construction. Docket No. 52 at 11. OSES explains that the claim language clearly recites
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`the “first lockdown mechanism” is comprised of the locking member and base member, which
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`interact with the “second lockdown mechanism” to perform the overall function of the tool. Id.
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`at 11–12. OSES further argues that because the word “means” is not used there is a strong
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`presumption against invoking § 112, ¶ 6, and that GEG has not provided any evidence
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`demonstrating that “first lockdown mechanism” requires means-plus-function construction. Id.
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`at 12–15. OSES asserts that “lockdown” is generally understood to refer to a structure that locks
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`something in place and therefore takes its name from the function it performs. Id. at 15–16.
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`Finally, OSES argues that claim 22 is a method claim, so § 112, ¶ 6 cannot be applied. Id. at 16.
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`GEG responds that “first lockdown mechanism” must be a means-plus-function term
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`because “mechanism” is a nonce word without recognized structure and “first lockdown” is a
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`non-structural modifier that is not defined in the specification, has no dictionary definition, and
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`has no generally understood meaning in the art. Docket No. 55 at 12–13. According to GEG,
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`the ’053 Patent specification uses the term in various, inconsistent ways, none of which hint at a
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`type of structure. Id. at 13. GEG further argues that due to the various uses of the term
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`throughout the ’053 Patent, it is impossible to determine what a “lockdown mechanism” is or
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`what it does without defining the term in means-plus-function format. Id. at 13–14.
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`Additionally, GEG contends the elements that make up the “first lockdown mechanism,” namely
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`12
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`Case 6:12-cv-00611-LED Document 92 Filed 06/23/14 Page 13 of 24 PageID #: 2486
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`the “base member” and “locking member,” are themselves vague and fail to provide the
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`necessary structure to perform the “first lockdown mechanism’s” function. Id. at 17.
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`Here, the claims and specification sufficiently describe a definite structure for the “first
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`lockdown mechanism” that those skilled in the art would understand. Claims 1 and 22 recite that
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`the “first lockdown mechanism” includes a “base member for connection to a wellhead” and a
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`“locking member for detachably engaging the base member.” The claims therefore explicitly
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`recite the structure of the claimed “first locking mechanism.” Envirco Corp. v. Clestra
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`Cleanroom, Inc., 209 F.3d 1360, 1365 (Fed. Cir. 2000) (holding that when a term itself imparts
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`structure and its structure is described in the claim, the term is not a means-plus-function
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`limitation). Further, the claims also recite that the “first and a second lockdown mechanism” are
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`“arranged” to lock the mandrel in the operative position when both elements are in their
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`“respective lockdown positions.” Therefore, the claims not only describe the structural elements,
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`but also recite the interaction between the structural elements. Because GEG has failed to
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`overcome the presumption that the term is not a means-plus-function limitation, § 112, ¶ 6 does
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`not apply.
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`
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`While this is not a means-plus-function term, OSES’s proposal is also lacking, as a clear
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`construction of this term will be helpful for the jury. The claims and specification refer to the
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`entire device as an “apparatus” and indicate that the “first lockdown mechanism” is the part of
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`the apparatus that, along with the second lockdown mechanism, connects the mandrel to the
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`wellhead. ’053 Patent, 7:8–13. Therefore, the Court construes “first lockdown mechanism” as
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`“first part of the apparatus that interacts with the second lockdown mechanism to connect the
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`mandrel to the wellhead.”
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`13
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`Case 6:12-cv-00611-LED Document 92 Filed 06/23/14 Page 14 of 24 PageID #: 2487
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`“second lockdown mechanism”
`
`OSES’s Proposed Construction
`a locking mechanism separate from the setting
`tool
`
`GEG’s Proposed Construction
`This is a means-plus-function element under
`35 U.S.C. § 112, ¶ 6.
`
`Function: as recited in each of claims 1 and 22
`
`First Structure (all numeral references to Fig.
`1): Threaded bolts 56 connected between
`flange 46 of connector 44 and flange 54 of
`mandrel head 26 with nuts 60 and movable by
`adjusting nuts 60 on bolts 56 through a range
`of adjustment “B” which is greater than
`Distance “C” between the bottom of mandrel
`22 and the fixed point for packoff 24 when the
`first lockdown mechanism is in the lockdown
`position to lock mandrel 22 in its operative
`position. (See U.S. Patent 6,179,053, Fig. 1,
`6:11-25).
`
`Second Structure (all numeral references to
`Fig. 5): Hydraulic cylinder 74 and piston 84
`connected to mandrel 72 and movable by
`injecting hydraulic fluid
`into port 88 of
`cylinder 74 through a range of adjustment “B”
`which is greater than Distance “C” between the
`bottom of mandrel 72 and the fixed point for
`packoff 24 when
`the
`first
`lockdown
`mechanism is in the lockdown position to lock
`mandrel 72 in its operative position. (See U.S.
`Patent 6,179,053, Fig. 5, 7:45–8:4). (See also
`U.S. Patent 6,179,053, 4:52-60 (hydraulic
`mechanism as “second lockdown mechanism)).
`This disclosed embodiment of the ’053 patent
`makes clear a hydraulic mechanism alone may
`be a “second lockdown mechanism.”
`
`As with “first lockdown mechanism,” the parties disagree on whether this is a means-
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`
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`plus-function term subject to § 112, ¶ 6. As with the previous term, OSES contends this is not a
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`means-plus-function term, but rather an easily understood term. Docket No. 52 at 17. OSES
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`also argues that the specification narrows the plain and ordinary meaning of “second lockdown
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`14
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`Case 6:12-cv-00611-LED Document 92 Filed 06/23/14 Page 15 of 24 PageID #: 2488
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`mechanism” by repeatedly explaining that this element is separate from the setting tool used to
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`install the device on a wellhead. Id. at 17. GEG argues that its construction of “second
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`lockdown mechanism” is consistent with its construction of “first lockdown mechanism” in that
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`both are means clauses. Docket No. 55 at 21. GEG explains that because “first lockdown
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`mechanism” and “second lockdown mechanism” perform different functions, different structures
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`are therefore required. Id. GEG contends that OSES’s proposed construction is not helpful
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`because it distinguishes the “second lockdown mechanism” from the “setting tool” but fails to
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`explain what is meant by “setting tool.” Id. at 22.
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`
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`The claims and specification sufficiently define a structure for the “second lockdown
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`mechanism” that those skilled in the art would readily understand. As claims 1 and 22 make
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`clear, the “second lockdown mechanism” includes a “range of adjustment” and locks down the
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`mandrel in the “operative position.” The claims further recite that the “first and second
`
`lockdown mechanisms” are “arranged” to lock the mandrel in the operative position, again
`
`demonstrating how these structural elements interact with one another and the rest of the overall
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`apparatus. Again, GEG fails to overcome the presumption against § 112, ¶ 6.
`
`
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`However, OSES’s proposed construction is also not helpful because it introduces the
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`unnecessary and ambiguous term “setting tool.” Based on the claims and specification, “second
`
`lockdown mechanism” should be construed similarly to “first lockdown mechanism,” though an
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`important distinction is required for “second lockdown mechanism” regarding the use of
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`hydraulic pressure. The specification describes that hydraulic pressure can be used to move the
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`mandrel into the “operative position.” E.g., ’053 Patent, 7:51–8:4. However, the specification
`
`also explains that the “second lockdown mechanism” is intended to ensure the mandrel remains
`
`in the operative position even if hydraulic pressure is lost. Id., Abstract. This distinction is
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`15
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`Case 6:12-cv-00611-LED Document 92 Filed 06/23/14 Page 16 of 24 PageID #: 2489
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`important because, as the patent itself explains, those in the industry are less likely to accept a
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`hydraulic lockdown mechanism. Id. at 3:3–9. Therefore, it is important to include this limitation
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`when construing “second lockdown mechanism.” Accordingly, the Court construes “second
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`lockdown mechanism” as “second part of the apparatus that interacts with the first lockdown
`
`mechanism to lock the mandrel in the operative position without hydraulic pressure.”
`
`“lockdown position”
`
`OSES’s Proposed Construction
`plain and ordinary meaning
`
`GEG’s Proposed Construction
`a position actively assumed to orient the
`mandrel
`
`The parties dispute whether this term requires construction. OSES contends there is
`
`
`
`nothing ambiguous or complicated about this term and nothing in the intrinsic record to suggest
`
`any unusual construction. Docket No. 52 at 22. Further, OSES argues that GEG’s proposed
`
`construction is unnecessary and inherently confusing. Id. GEG asserts that construction is
`
`necessary because the term has no ordinary meaning, especially considering the dictionary
`
`definition of “lockdown,” which means to “confine prisoners.” Docket No. 55 at 26. GEG
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`argues that, based on the specification, the “lockdown position” requires actively moving one or
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`both lockdown mechanisms at the time the mandrel is oriented. Id. at 27.
`
`
`
`Based on the ’053 Patent specification, “lockdown position” is nothing more than the
`
`final locked position of the lockdown mechanisms. In the specification, this is used to contrast
`
`the working position, where the mechanism is not in its final locked position. E.g., ’053 Patent,
`
`7:6–9. GEG’s construction introduces confusion and ambiguity to the term since the
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`specification does not mention “orienting” the mandrel or “actively assuming” a position.
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`Accordingly, the Court finds no construction is necessary for this term.
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`
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`
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`16
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`

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`Case 6:12-cv-00611-LED Document 92 Filed 06/23/14 Page 17 of 24 PageID #: 2490
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`“range of adjustment”
`
`OSES’s Proposed Construction
`plain and ordin