UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GREENE’S ENERGY GROUP, LLC,
`
`Petitioner,
`
`v.
`
`OIL STATES ENERGY SERVICES, LLC,
`
`Patent Owner.
`
`Case IPR2014-00216
`
`Patent No. 6,179,053
`
`PATENT OWNER’S MOTION TO AMEND
`UNDER 37 C.F.R. § 42.121
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GREENE’S ENERGY GROUP, LLC,
`
`Petitioner,
`
`v.
`
`OIL STATES ENERGY SERVICES, LLC,
`
`Patent Owner.
`
`Case IPR2014-00216
`
`Patent No. 6,179,053
`
`PATENT OWNER’S MOTION TO AMEND
`UNDER 37 C.F.R. § 42.121
`
`
`
`Case IPR2014-00216
`Patent No. 6,179,053
`
`I.
`
`INTRODUCTION
`
`Patent Owner’s Motion to Amend
`
`This Motion to Amend is submitted in compliance with 37 C.F.R. § 42.121.
`
`As required, Patent Owner conferred with the Board regarding filing this Motion to
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`Amend in a conference call conducted on August 14, 2014.
`
`II.
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`LISTING OF PROPOSED SUBSTITUTE CLAIMS
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`28. (Proposed Substitute Claim for Claim 1) An apparatus for securing a
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`mandrel of a well tool in an operative position requiring fixed-point packoff above
`
`the casing of the well and within a tubing head spool of a [in the] wellhead
`
`assembly, the apparatus comprising:
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`a setting tool that is arranged to insert a bottom end of the mandrel through
`
`the wellhead, and is removable from the other portions of the apparatus;
`
`a first and a second mechanical lockdown mechanism that are separate from
`
`the setting tool and arranged so that the mandrel is locked in the operative position
`
`only when both the first and the second mechanical lockdown mechanism are in
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`respective lockdown positions;
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`the first mechanical lockdown mechanism adapted to detachably maintain
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`the mandrel in proximity to the fixed-point packoff when in the lockdown position,
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`the first mechanical lockdown mechanism including a base member for
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`connection to a wellhead of the well and a locking member for detachably
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`engaging the base member; [and]
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`the second mechanical lockdown mechanism having a range of adjustment
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`adequate to ensure that the mandrel can be moved into the operative position, and
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`then locked down in the operative position without the use of hydraulic pressure
`
`while the first mechanical lockdown mechanism is in the lockdown position; and
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`the mandrel including a packoff assembly that seals against the fixed-point
`
`packoff within the tubing head spool.
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`29. (Proposed Substitute Claim for Claim 22) A method for lockdown of a
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`mandrel of a well tool in an operative position in which the mandrel is packed off
`
`against a fixed-point above the casing of the well and within a tubing head spool of
`
`a [in the] wellhead assembly, the method comprising steps of:
`
`a)
`
`mounting above a wellhead of the well an apparatus for securing the
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`mandrel of the well tool in the operative position, comprising:
`
`i)
`
`a setting tool that is arranged to insert a bottom end of the
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`mandrel through the wellhead, and is removable from the other portions of
`
`the apparatus;
`
`ii)
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`a first and a second mechanical lockdown mechanism that are
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`separate from the setting tool and arranged so that the mandrel is locked in
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`the operative position only when both the first and second mechanical
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`lockdown mechanisms are in respective lockdown positions;
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`iii)
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`the first mechanical lockdown mechanism being adapted to
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`detachably maintain the mandrel in proximity to the fixed-point for packoff,
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`and including a base member for connection to a top of a wellhead of the
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`well and a locking member for detachably engaging the base member; [and]
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`iv)
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`the second mechanical lockdown mechanism having a range of
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`adjustment to ensure that the mandrel can be moved into the operative
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`position, and then locked down in the operative position without the use of
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`hydraulic pressure while the first mechanical lockdown mechanism is in the
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`lockdown position; and
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`v)
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`the mandrel including a packoff assembly that seals against the
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`fixed-point packoff within the tubing head spool;
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`b)
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`after inserting the mandrel through the wellhead into proximity to the
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`fixed-point
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`in the well, engaging the locking member of the first
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`lockdown
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`mechanism with the base member so that the mandrel is only moveable within the
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`range of adjustment;
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`c)
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`moving the mandrel into the operative position if the mandrel is not
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`yet packed off against the fixed-point; [and]
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`d)
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`locking the second lockdown mechanism in the lockdown position;
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`and
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`e)
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`removing the setting tool from the well tool.
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`III.
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`STATEMENT OF SUBSTITUTION CONTINGENCIES
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`Consistent with 37 C.F.R. §42.121(a)(3), this Motion includes one substitute
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`claim for each claim to be replaced. Pursuant to 37 C.F.R. §42.121(a)(2), the
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`amendments respond to potential grounds of unpatentability involved in the trial,
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`and do not seek to enlarge the scope of the claims or introduce new subject matter.
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`Claims 28 and 29 are contingent substitute claims to replace original claims
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`1 and 22, respectively, only if claims 1 and 22 are found to be unpatentable. These
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`substitute claims merely (1) explicitly recite the setting tool and identify that it is
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`separate from the first and second lockdown mechanisms and removable from the
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`rest of the tool; (2) clarify where the fixed-point packoff is located within the
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`wellhead assembly; and (3) explicitly recite that the “first lockdown mechanism”
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`and “second lockdown mechanism” are mechanical lockdown mechanisms and,
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`thus, that the second lockdown mechanism locks the mandrel in the operative
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`position without the use of hydraulic pressure.
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`IV.
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`SUPPORT FOR THE PROPOSED AMENDMENTS
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`As required under 37 C.F.R. § 42.121(b), the substitute claims are supported
`
`by the original disclosure of the ’053 Patent. Attached as Exhibit 2021 is a chart
`
`showing where each element of the proposed amended claims was disclosed in the
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`original specification, claims, and figures of Application No. 09/373,418.
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`V.
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`THE SUBSTITUTE CLAIMS ARE PATENTABLE
`
`A.
`
`Identification of Prior Art
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`Patent Owner and its technical expert, Dr. Gary R. Wooley, have undertaken
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`a review of several different sources of potential prior art references. Those
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`sources include references cited during prosecution of the ’053 Patent, references
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`identified by Petitioner in the parties’ parallel litigation, and the results of an
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`independent prior art search performed by a third-party search firm. Ex. 2017
`
`(Declaration of Gary R. Wooley, dated August 26, 2014) (“Wooley Decl.”), ¶¶ 59-
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`64. After reviewing those sources, Dr. Wooley concluded that the two references
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`closest to the proposed amended claims of the ’053 Patent are Canadian Patent
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`Application No. 2,195,118 (“the ’118 Application”) (Ex. 1003) and U.S. Patent
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`No. 4,076,079 (“the Herricks Patent”) (Ex. 1005).
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`Id., ¶ 65. Dr. Wooley also
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`identified and analyzed other prior art references relating to certain features of the
`
`proposed amended claims that are missing from the ’118 Application and/or the
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`Herricks Patent. Id., ¶¶ 77-79.
`
`B.
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`The Substitute Claims Are Novel.
`
`1.
`
`The ’118 Application Is Not Anticipatory.
`
`The ’118 Application discloses a tool
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`that operates in a way that
`
`is
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`fundamentally different from the ’053 Patent, particularly as defined in the
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`proposed amended claims. Both substitute claims now require “a setting tool that
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`is arranged to insert the mandrel through the wellhead” and two “mechanical
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`lockdown mechanisms” that are “separate from the setting tool,” such that the
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`setting tool is “removable from the other portions of the apparatus.” The second
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`mechanical lockdown mechanism is also required to lock the mandrel in the
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`operative position “without
`
`the use of hydraulic pressure.” These elements
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`distinguish the claims from the ’118 Application in at least two important ways.
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`First, although the ’118 Application discloses a “spool” that forms a cavity
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`and uses hydraulic fluid within the cavity to insert the mandrel through the
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`wellhead, the spool is not removable from the rest of the tool. Ex. 2017 (Wooley
`
`Decl.), ¶ 72. Similarly, the spool of the ’118 Application is not separate from two
`
`distinct lockdown mechanisms. The ’118 Application does not disclose a “second
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`lockdown mechanism” at all, for the reasons explained by Patent Owner elsewhere.
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`However, even under Petitioner’s proposed interpretation, the “second lockdown
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`mechanism” would be the same as the setting tool, which departs from the claim
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`language requiring these elements to be separate. Wooley Decl., ¶ 73.
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`Second, the portion of the ’118 Application identified by Petitioner as the
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`“second lockdown mechanism” relies entirely on hydraulic fluid pressure to hold
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`the mandrel in position. Ex. 2017 (Wooley Decl.), ¶ 74. This arrangement is
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`distinctly different than the substitute claims, which expressly require the second
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`lockdown mechanism to be “mechanical” and to lock the mandrel
`
`in place
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`“without the use of hydraulic pressure.” Id. For at least these reasons, the ’118
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`Application cannot anticipate the proposed amended claims of the ’053 Patent.
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`2.
`
`The Herricks Patent Is Not Anticipatory.
`
`The Herricks Patent was one of the references cited by Petitioner in its
`
`original Petition. Petitioner did not allege that this reference anticipated original
`
`claims 1 and 22, and the Board declined to institute review even based on an
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`obviousness combination involving the Herricks Patent. Because the substitute
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`claims are even narrower than the original claims, the Herricks Patent cannot
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`possibly anticipate the proposed amended claims. Ex. 2017 (Wooley Decl.), ¶ 75.
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`C.
`
`The Substitute Claims Are Nonobvious over the Prior Art
`
`As the Board is well aware, an analysis of obviousness “requires four factual
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`inquiries: (1) the scope and content of the prior art; (2) the level of ordinary skill
`
`in the art; (3) the differences between the claimed invention and the prior art; and
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`(4) objective evidence of nonobviousness.” Mintz v. Dietz & Watson, Inc., 679
`
`F.3d 1372, 1375 (Fed. Cir. 2012).
`
`In the present case, each of these factors
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`demonstrates that the proposed amended claims would not have been obvious to
`
`one of ordinary skill in the art at the time of the claimed invention.
`
`1.
`
`The Scope and Content of the Prior Art.
`
`As discussed above, based on his review of the prior art, Dr. Wooley
`
`concluded that the two prior art references closest to the proposed amended claims
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`are the ’118 Application and the Herricks Patent. Ex. 2017 (Wooley Decl.), ¶ 65.
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`He also, however, identified other references that teach elements that are missing
`
`from the two primary references. These include references disclosing wellhead
`
`isolation tools with a separate setting tool (e.g., U.S. Patent No. 4,241,786 (“the
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`Bullen Patent”)) (Ex. 2020), as well as references disclosing wellhead isolation
`
`tools that include one or more mechanical lockdown mechanisms and a setting tool
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`that cannot be separate from the rest of the tool (e.g., U.S. Patent No. 4,632,183
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`(“the McLeod Patent”) (Ex. 1004)).
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`Id., ¶¶ 77-79. The prior art does not,
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`however, include a “second mechanical lockdown mechanism” with the particular
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`features of the proposed amended claims.
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`Id., ¶ 80. Thus, this factor weighs
`
`against a finding of obviousness because the patented invention “is not simply a
`
`combination of elements found in the prior art.” Crocs, Inc. v. Int’l Trade
`
`Comm’n, 598 F.3d 1294, 1308 (Fed. Cir. 2010); Ex. 2017 (Wooley Decl.), ¶ 80.
`
`2.
`
`The Level of Ordinary Skill in the Art.
`
`The parties’ experts have agreed that the level of ordinary skill in the art is a
`
`person with “a Bachelor-level degree in a recognized engineering discipline, and
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`practical job exposure of several years with oil and gas well operations, or
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`equivalent experience or knowledge.” Ex. 2017 (Wooley Decl.), ¶ 51.
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`In part
`
`because of the reluctance to accept technological change in this industry, such a
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`person “would have been very unlikely in 1999 to consider a fundamental redesign
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`of any wellhead isolation tool, including those taught in either the ’118 Application
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`or the Herricks Patent.” Id., ¶ 82. Thus, the level of ordinary skill in the art also
`
`demonstrates why the claims would not have been obvious.
`
`3.
`
`The Differences Between the Claimed Invention and the
`Prior Art.
`
`The differences between the proposed amended claims and the ’118
`
`Application are summarized above in § V(B)(1) and also discussed at ¶¶ 66-74 of
`
`Dr. Wooley’s declaration. As for Herricks, it does not disclose any lockdown
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`mechanism at all, nor does it teach any kind of setting tool. Ex. 2017 (Wooley
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`Decl.), ¶ 85. Moreover, as mentioned above, nowhere does the prior art teach an
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`isolation tool with the claimed “second mechanical lockdown mechanism.”
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`4.
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`Objective Evidence of Nonobviousness.
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`Objective indicia of nonobviousness “may often be the most probative and
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`cogent evidence of nonobviousness in the record.” Mintz, 679 F.3d at 1378
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`(quoting Ortho-McNeil Pharm. v. Mylan Labs., Inc., 520 F.3d 1358, 1365 (Fed.
`
`Cir. 2008)). “That which may be made clear and thus ‘obvious’ to a court, with the
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`invention fully diagrammed and aided by experts in the field, may have been a
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`breakthrough of substantial dimension, when first unveiled.” Id. (quoting Uniroyal
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`Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051 (Fed. Cir. 1988)).
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`Such
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`considerations are even more important when the claimed invention is “less
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`technologically complex.” “In such a case, the danger increases that ‘the very ease
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`with which the invention can be understood may prompt one to fall victim to the
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`insidious effect of a hindsight syndrome where that which only the inventor taught
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`is used against its teacher.’” Ruiz v. A.B. Chance Co., 234 F.3d 654, 664 (Fed. Cir.
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`2000) (quoting In re Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999)). “Instead,
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`the proper analysis requires a form of amnesia that ‘forgets’ the invention and
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`analyzes the prior art and understanding of the problem at the date of invention.”
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`Mintz, 679 F.3d at 1379.
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`a.
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`Commercial Success.
`
`In the present case, the tools made and used by Patent Owner and its
`
`predecessor have practiced the proposed amended claims and enjoyed remarkable
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`commercial success in doing so.
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`Initially, it is indisputable that Patent Owner’s
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`Stage Frac Tools have achieved tremendous commercial
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`success
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`in the
`
`marketplace. As the inventor explains, the Stage Frac Tool “met with swift
`
`customer approval and demand,” and was adopted “almost
`
`immediately” by
`
`multiple large customers such as Anadarko. Ex. 2013 (Declaration of L. Murray
`
`Dallas, dated August 23, 2014) (“Dallas Decl.”), ¶ 14. The Stage Frac Tool was so
`
`popular that Anadarko changed its existing wellheads so that it could use the new
`
`tool, and customer demand for the tool eventually led to a new method of
`
`manufacturing tubing head spools across the entire industry. Id., ¶ 15.
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`10
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`Financially, over the past seven years, the Stage Frac Tool has generated
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`revenue of $270,000,000, with another $41,000,000 in related products and
`
`services. Ex. 2018 (Declaration of Thomas W. Britven, dated August 27, 2014)
`
`(“Britven Decl.”), ¶ 23. Far lower revenue figures have been recognized by the
`
`Federal Circuit as showing “tremendous commercial success.” Symbol Techs., Inc.
`
`v. Opticon, Inc., 935 F.2d 1569, 1579 (Fed. Cir. 1991) ($150,000,000 in sales was
`
`“tremendous commercial success”). The Stage Frac Tool also enjoys profit
`
`margins of 56.6%, more than double that of the rest of OSES’s business. Ex. 2018
`
`(Britven Decl.), ¶ 28. Moreover, the average revenue for a Stage Frac Tool job is
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`$24,000, while casing saver jobs have generated average revenue of only $8,600.
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`Id., ¶ 26. When patented technology enables the patentee to charge such a
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`significant premium versus non-patented alternatives, that is powerful evidence of
`
`commercial success. See Transocean Offshore Deepwater Drilling, Inc. v. Maersk
`
`Drilling USA, Inc., 699 F.3d 1340, 1350 (Fed. Cir. 2012). Furthermore, despite
`
`this substantial price difference, the Stage Frac Tool has been steadily replacing
`
`OSES’s casing saver, to the point that Stage Frac Tools were used on thousands
`
`more jobs than casing savers in 2013. Ex. 2018 (Britven Decl.), ¶ 26. The
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`commercial success of the patented technology has been nothing short of dramatic.
`
`Dr. Wooley explains in his supporting declaration how Patent Owner’s Stage
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`Frac Tools practice the invention of substitute claim 28. Ex. 2017 (Wooley Decl.),
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`11
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`¶¶ 86-124. “There is a presumption that the patented invention is commercially
`
`successful ‘when a patentee can demonstrate commercial success, usually shown
`
`by significant sales in a relevant market, and that the successful product is the
`
`invention disclosed and claimed in the patent.’” Omron Oilfield & Marine, Inc. v.
`
`MD/Totco, a Division of Varco, L.P., IPR 2013-00265 (Oct. 31, 2013) (quoting
`
`Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 1377 (Fed. Cir. 2000).
`
`However, rather than merely relying on the presumption, Dr. Wooley has gone
`
`further and explained how the success of Patent Owner’s Stage Frac Tools has
`
`been driven by the particular features of the proposed amended claims. Ex. 2017
`
`(Wooley Decl.), ¶¶ 126-128. See also Ex. 2018 (Britven Decl.), ¶ 31. The success
`
`of the invention of substitute claim 28, particularly in the highly competitive
`
`oilfield services business, demonstrates that this particular tool would not have
`
`been obvious to one of ordinary skill in the art as of August 1999.
`
`Ex. 2017
`
`(Wooley Decl.), ¶ 140 “[I]f the design of such a tool had actually been obvious to a
`
`person of ordinary skill in the art, one of Stinger’s very large competitors – e.g.,
`
`Halliburton – would have had the same idea long before 1999.” Id., ¶ 141.
`
`b.
`
`Teaching Away.
`
`“[R]eferences that teach away cannot serve to create a prima facie case of
`
`obviousness.” McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1354 (Fed. Cir.
`
`2001). “A reference may be said to teach away when a person of ordinary skill,
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`12
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`upon [examining] the reference, would be discouraged from following the path set
`
`out in the reference, or would be led in a direction divergent from the path that was
`
`taken by the applicant.” Ex Parte Fujii, 2009-011862, 2012 WL 370584 at *4
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`(BPAI Jan. 31, 2012) (quoting Para-Ordnance Mfg. v. SGS Importers Int’l, Inc.,
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`73 F.3d 1085, 1090 (Fed. Cir. 1995)) (alteration in original).
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`In the present case, the portion of the ’118 tool identified by Petitioner relied
`
`exclusively on hydraulic pressure to maintain the mandrel in place. Wooley Decl.,
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`¶ 74.
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`In sharp contrast, the tool of the proposed amended claims uses only
`
`“mechanical” lockdown mechanisms, and expressly disclaims any use of hydraulic
`
`pressure to lock the mandrel in position. Id. Thus, to go from the ’118 Application
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`to the substitute claims of the ’053 Patent, “one would have to follow a path that
`
`was not only divergent from but actually the precise opposite direction from the
`
`teaching of this prior art reference.” Id., ¶ 144. A reference teaching an approach
`
`that is mutually exclusive of the patented solution is the epitome of “teaching
`
`away.” See, e.g., Ex Parte Fujii, 2012 WL 370584 at *4 (reference teaching one-
`
`to-one correspondence between control units and processor units “would lead one
`
`of ordinary skill in the art away from using one state control unit for a plurality of
`
`processor elements as claimed.”). Thus, the ’118 Application teaches away from
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`the claimed invention and “cannot serve to create a prima facie case of
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`obviousness.” McGinley, 262 F.3d at 1354.
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`5.
`
`The Proposed Amended Claims Would Not Have Been
`Obvious.
`
`Patent Owner acknowledges that Mr. Dallas’s own ’118 Application is the
`
`closest prior art to the invention of the substitute claims. Nevertheless, it would
`
`not have rendered the claimed invention obvious to one of ordinary skill in the art
`
`as of August 1999. First and foremost, it cannot be considered obvious to modify a
`
`reference in a way that would require “a substantial reconstruction and redesign of
`
`the elements” shown in the reference or “a change in the basic principles under
`
`which [the reference] was designed to operate.” In re Ratti, 270 F.2d 810, 813
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`(CCPA 1959). See also MPEP § 2143.01(VI). Although some of the differences
`
`between the ’118 Application and the claimed invention might have existed in
`
`other references, “one of skill in the art would have been required to completely
`
`jettison the basic structure of the tool described in the ’118 Application, in favor of
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`a new design that operated on an entirely different principle (mechanical locking
`
`versus hydraulic fluid pressure) and had more moving parts (two distinct
`
`mechanical lockdown mechanisms, one of which included a range of adjustment,
`
`and a separate setting tool). There is simply no apparent reason why one of skill in
`
`the art would have read the ’118 Application and spontaneously decided to proceed
`
`in the opposite direction.” Ex. 2017 (Wooley Decl.), ¶ 146. See, e.g., Ex Parte
`
`Cavigelli, 2002-0558, 2003 WL 23174998 at *5 (BPAI Feb. 5, 2003) (where
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`reference taught use of “non-ferrous” coil, substituting a “ferromagnetic” coil held
`
`not obvious because it would have required “a change in the basic principles”
`
`under which reference was designed to operate). Such a radical modification
`
`would have been particularly unlikely in view of the level of ordinary skill in the
`
`art and the fact that the tool would have to have been modified to include an
`
`element that never previously existed in the prior art – a second mechanical
`
`lockdown mechanism, as claimed in substitute claim 28. This conclusion is also
`
`supported by the commercial success of the claimed invention, as discussed above.
`
`If the modifications to go from the ’118 Application to the claimed invention
`
`would have been substantial, one using the Herricks Patent as a starting point
`
`would have basically been “starting from scratch.” Ex. 2017 (Wooley Decl.),
`
`¶ 149. Herricks did not disclose – or even acknowledge a need for – any lockdown
`
`mechanism or setting tool, let alone components meeting the requirements of the
`
`substitute claims. Although the Herricks Patent is somewhat analogous in that it
`
`discloses a tool intended to depart from prior art casing savers in a way that would
`
`provide full-bore access to the casing string, it cannot rationally be said to render
`
`obvious the claims of the ’053 Patent, particularly as presently amended.
`
`VI. CONCLUSION
`
`Patent Owner respectfully requests that, if the Board finds claims 1 and 22
`
`unpatentable, it grant this conditional motion to substitute claims 28 and 29.
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`Dated: August 27, 2014
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`Respectfully submitted,
`
`/C. Erik Hawes/
`C. Erik Hawes
`Registration No. 63,328
`ehawes@morganlewis.com
`MORGAN, LEWIS & BOCKIUS LLP
`1000 Louisiana Street, Suite 4000
`Houston, Texas 77002
`T. 713.890.5165
`F. 713.890.5001
`
`Counsel for Patent Owner
`
`16
`
`
`
`Case IPR2014-00216
`Patent No. 6,179,053
`
`Patent Owner’s Motion to Amend
`
`CERTIFICATE OF SERVICE
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`The undersigned certifies that a true and correct copy of the Patent Owner
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`Motion to Amend together with all exhibits has been electronically served on the
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`Petitioner’s attorneys via email, as previously agreed by all counsel of record, on
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`the 27th day of August, 2014 at the following addresses:
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`John J. Feldhaus
`jfeldhaus@foley.com
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`Andrew R. Cheslock
`acheslock@foley.com
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`Respectfully submitted,
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`/C. Erik Hawes/
`C. Erik Hawes
`Registration No. 63,328
`Counsel for Patent Owner
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`17
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