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 RESPONSE
`UNDER 37 C.F.R. § 42.120
`
`
`
`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 RESPONSE
`UNDER 37 C.F.R. § 42.120
`
`
`
`TABLE OF CONTENTS
`
`PAGE
`
`I.
`II.
`III.
`
`IV.
`
`V.
`
`C.
`
`INTRODUCTION .......................................................................................1
`SUMMARY OF THE ’053 PATENT..........................................................2
`CLAIM CONSTRUCTION .........................................................................8
`A.
`“second lockdown mechanism” .........................................................9
`1.
`The “second lockdown mechanism” is mechanical and
`does not use hydraulic pressure to lock the mandrel in the
`operative position...................................................................10
`The ’053 Patent consistently describes the setting tool as
`being distinct from the first and second lockdown
`mechanisms ...........................................................................15
`“lock” ..............................................................................................24
`B.
`THE INSTITUTED GROUND OF REJECTION SHOULD BE
`DENIED ....................................................................................................26
`A.
`Background of the Dallas ’118 Application .....................................26
`B.
`The ’118 Application Fails to Disclose a “second lockdown
`mechanism” as Recited in Claims 1 and 22......................................28
`The ’118 Application Fails to Either Disclose or Enable a
`Device that “locks” the Mandrel in the Operative Position ..............29
`1.
`The ’118 Application Does Not Disclose a Device That
`“locks” the Mandrel in the Operative Position .......................30
`The ’118 Application Fails to Enable a Device that
`“locks” the Mandrel in the Operative Position .......................31
`CONCLUSION .........................................................................................42
`
`2.
`
`2.
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`CASES
`Amgen, Inc. v. Hoechst Marion Roussel, Inc.,
`314 F.3d 1313 (Fed. Cir. 2003)........................................................................31
`
`Page(s)
`
`Elan Pharms., Inc. v. Mayo Found. for Medical Educ. and Research,
`346 F.3d 1051 (Fed. Cir. 2003)........................................................................31
`
`Honeywell Int’l, Inc. v. ITT Indus., Inc.,
`452 F.3d 1312 (Fed. Cir. 2006)........................................................................23
`
`In re Buszard,
`504 F.3d 1364 (Fed. Cir. 2007)..........................................................................9
`
`In re Cortright,
`165 F.3d 1353 (Fed. Cir. 1999)..........................................................................9
`
`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010)..........................................................................9
`
`In re Wands,
`858 F.2d 731 (Fed. Cir. 1988)..............................................................31, 39, 40
`
`Minn. Mining and Mfg. Co. v. Chemque, Inc.,
`303 F.3d 1294 (Fed. Cir. 2002)........................................................................31
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)..........................................................................8
`
`Regents of Univ. of Minn. v. AGA Medical Corp.,
`717 F.3d 929 (Fed. Cir. 2013)....................................................................14, 23
`
`STATUTES
`35 U.S.C. § 112, ¶ 6................................................................................................9
`
`OTHER AUTHORITIES
`37 C.F.R. § 42.100(b) .............................................................................................8
`
`37 C.F.R. § 42.120..................................................................................................1
`
`Manual of Patent Examining Procedure (MPEP) § 2111.........................................9
`ii
`
`
`
`Exhibits
`(including
`previously cited
`Exhibits)
`1001
`
`1002
`
`1003
`
`2001
`
`2008
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`TABLE OF CITED EXHIBITS
`
`Description
`
`U.S. Patent No. 6,179,053
`
`Declaration of Donald Shackelford
`
`Canadian Patent Application No. 2,195,118
`
`U.S. Patent No. 5,819,851 (issued Oct. 13, 1998), Blowout
`Preventer Protector for Use During High Pressure Oil/Gas
`Well Stimulation
`
`Memorandum Opinion and Order, Dkt. 92, June 23,
`2014, Oil States Energy Services LLC v. Trojan
`Wellhead Protection, Inc. and Greene’s Energy
`Group, LLC, 6:12-cv-611, Eastern District of Texas,
`Tyler Division (“Markman Order”)
`
`Declaration of Gary R. Wooley
`
`Declaration of Murray L. Dallas
`
`Declaration of Bob McGuire
`
`Deposition Transcript of Donald W. Shackelford
`
`Random House Webster’s Unabridged Dictionary (2nd
`ed. 2001), p. 1128
`
`iii
`
`
`
`I.
`
`INTRODUCTION
`
`On December 3, 2013, Greene’s Energy Group, LLC (“GEG” or
`
`“Petitioner”)
`
`filed a petition1
`
`for
`
`inter partes review (“Petition”) seeking
`
`cancellation of claims 1 and 22 of U.S. Patent No. 6,179,053 (“the ’053 Patent”)
`
`(Pet. Ex. 1001). Patent Owner Oil States Energy Services, L.L.C. (“OSES or
`
`“Patent Owner”) filed a timely Preliminary Response on March 13, 2014. The
`
`Patent Trial and Appeal Board ultimately instituted inter partes review on both
`
`claims 1 and 22 as described in the decision to institute inter partes review
`
`(“Institution Decision”) issued on June 10, 2014. However, the Board granted trial
`
`as to only one ground presented in the Petition: the alleged anticipation of claims 1
`
`and 22 of the ’053 Patent by Canadian Patent Application No. 2,195,118 (“the ’118
`
`Application”) (Pet. Ex. 1003), which was Ground 2 of the Petition. The Board
`
`denied the two other grounds presented in the Petition.
`
`Patent Owner respectfully submits its Response under 37 C.F.R. § 42.120 to
`
`address Ground 2 of the Petition as well as to address comments made by the
`
`Board in the Institution Decision.
`
`In support of this Response, Patent Owner
`
`submits the Declaration of Dr. Gary Wooley, dated August 26, 2014 (“Wooley
`
`Decl.”) (Ex. 2012), which details his technical analysis of the challenged claims.
`
`1
`
`Petitioner filed a Reformatted Petition on January 17, 2014. All citations to
`the Petition are to the Reformatted Petition, Paper No. 6.
`
`
`
`For the reasons described below, the Board should confirm the patentability
`
`of claims 1 and 22.
`
`II.
`
`SUMMARY OF THE ’053 PATENT
`
`Oil and gas wells often undergo hydraulic fracturing (“fracking”) procedures
`
`in which stimulation fluid is pumped downhole to stimulate or increase production.
`
`Ex. 2012 (Wooley Decl.), ¶¶ 6-21. Fracking fluid can be abrasive and/or corrosive
`
`and is often injected into the well at pressures up to 15,000 pounds per square inch.
`
`Id. ¶ 22. Wellheads sitting on top of a well remain in place during fracking
`
`procedures and are not typically designed to withstand continuous exposure to
`
`fracking fluids.
`
`Id. ¶¶ 22-25.
`
`If left unprotected, wellheads can be severely
`
`damaged during fracking operations. Id. ¶ 25.
`
`Tools and methods have been developed to protect and isolate wellheads
`
`from fracking fluids as they are being pumped downhole. Ex. 2012 (Wooley
`
`Decl.), ¶¶ 22-25. Early wellhead isolation tools often used a length of tubing that
`
`would be inserted through the wellhead and a packoff assembly (usually a rubber
`
`seal) to seal
`
`inside the casing, which is the initial well section beneath the
`
`wellhead.
`
`Id. The packoff assembly would provide a fluid-tight seal that could
`
`withstand constant exposure to stimulation fluids. Id.
`
`One early wellhead isolation tool design of this configuration is commonly
`
`referred to as a “casing saver.” Below in Figure 1 is an illustration of a casing
`
`2
`
`
`
`saver being inserted through a wellhead to isolate the wellhead from the fracking
`
`fluid as it is being pumped downhole.
`
`Figure 1: Casing Saver
`
`The casing saver would be inserted through the wellhead to seal off against
`
`the inner casing walls. Ex. 2012 (Wooley Decl.), ¶¶ 22-25. Because the casing
`
`saver seals inside the casing, its diameter is necessarily smaller than the diameter
`
`of the casing. This presented several problems.
`
`First,
`
`the smaller diameter limits the velocity of stimulation fluids at
`
`maximum flow rate. Ex. 1001 (’053 Patent), 1:43-47. Second, designs of this type
`
`do not allow for the insertion of downhole tools that require the full diameter of the
`
`3
`
`
`
`casing. Thus, if a casing saver is used, each time a tool needs to be run downhole,
`
`the wellhead isolation tubular must be retracted, and the casing saver removed
`
`from the wellhead. After the use of a downhole tool, such as a plug setting tool or
`
`a perforating gun, the casing saver would then need to be re-installed. Ex. 2012
`
`(Wooley Decl.), ¶ 26. This process takes valuable time at a wellsite, where the
`
`goal is to get back to production as quickly as possible.
`
`Looking to solve some of the above-mentioned problems associated with the
`
`casing saver and other similar tools, Stinger Wellhead Protection, Inc. (“Stinger”),
`
`now known as Oil States Energy Services, L.L.C. (“Oil States” or “OSES”), and
`
`sole named inventor L. Murray Dallas, invented the tool described in U.S. Patent
`
`No. 5,819,851 (“the ’851 Patent”) (Exhibit 2001). The ’851 Patent is the U.S.
`
`counterpart of the ’118 Canadian Application, and the disclosures of both
`
`documents are, for all intents and purposes, identical. Below in Figure 2 is an
`
`illustration of the setting of a mandrel into the wellhead as disclosed in the ’851
`
`Patent.
`
`4
`
`
`
`Figure 2: ’851 Patent tool
`
`A mandrel is shown as it is pushed down through a wellhead by the build-up
`
`of pressure within a hydraulic setting chamber housed within the wellhead
`
`isolation setting tool. Ex. 2001 (’851 Patent), 6:1-24. The design described in
`
`the ’851 Patent recognized the need to have a larger diameter central bore than was
`
`possible with the casing saver tool. Ex. 2001 (’851 Patent), 6:40-54. Full-bore
`
`access was accomplished using a fixed-point packoff, where the mandrel sealed at
`
`a particular location within the wellhead, rather than within the casing. Despite
`
`these improvements, this tool also had certain drawbacks.
`
`5
`
`
`
`In the design described in the ’851 Patent, the mandrel of the tool is
`
`integrally incorporated with the hydraulic setting tool. Ex. 2001 (’851 Patent),
`
`Figs. 1-5; Ex. 1001 (’053 Patent), 2:46-54. Thus, this design does not permit
`
`removal of the setting tool once the mandrel is set into position, which results in an
`
`installation having a high profile for the entire duration of a well fracturing or
`
`treatment job. Ex. 1001 (’053 Patent), 2:62-3:2. As seen in Figure 2, above the
`
`integrated setting tool is a high pressure valve and a frac head with multiple inlets
`
`for the connection of frac fluid lines. The ’851 tool requires longer and higher
`
`hanging fracture fluid lines, which attach above the integrated setting tool to the
`
`frac head inlets. This necessitates more crane involvement, and requires workers
`
`to work higher above the ground, which creates significant safety concerns. This
`
`tool also relies on the ability to maintain sufficient hydraulic pressure in the
`
`hydraulic setting chamber to maintain a fluid seal against frac fluid pressure.
`
`Ex. 2001 (’851 Patent), 6:1-24.
`
`If frac fluid pressure pushing up against the
`
`downhole end of the mandrel exceeds the hydraulic forces pushing the mandrel
`
`into position or if hydraulic forces pushing the mandrel into position are lost, the
`
`isolation fails, the wellhead may be damaged, and other problems may result. Ex.
`
`1001 (’053 Patent), 3:2-9
`
`The ’053 Patent solved the problems of the casing saver tool, the ’851 Patent
`
`design, and other wellhead isolation tool designs. Ex. 2012 (Wooley Decl.), ¶¶ 28-
`
`6
`
`
`
`37.
`
`In particular, the tool described and claimed in the ’053 Patent, as illustrated
`
`below, affirmatively “locks” the mandrel in position, thus eliminating the need to
`
`maintain constant hydraulic pressure to maintain the mandrel’s position, as was
`
`required in the ’851 tool design. Ex. 1001 (’053 Patent), Abstract, 7:6-32. The
`
`’053 design thus eliminates the possibility of wellhead isolation failure due to
`
`shortcomings of the hydraulic system described in the ’851 Patent and ’118
`
`Application. Ex. 2012 (Wooley Decl.), ¶¶ 28, 33. Below in Figure 3 is an
`
`illustration of the setting of a mandrel into the wellhead as disclosed in the ’053
`
`Patent:
`
`Figure 3: ’053 Patent tool
`
`7
`
`
`
`The embodiments described in the ’053 Patent also permit the removal of
`
`the setting tool once the mandrel is locked down. Ex. 1001 (’053 Patent), 7:6-32,
`
`8:19-21, 9:24-26. As seen in Figure 3, the high pressure valve is located on top of
`
`the lockdown mechanism (shown in blue) and below the setting tool (shown in
`
`yellow at the top). In the example shown in Figure 3, once the mandrel is locked
`
`down, the setting tool may be removed, and a frac head may be installed above the
`
`high pressure valve. This provides a lower profile for the fracturing operation,
`
`which shortens fracture fluid lines and keeps all work closer to the ground than
`
`was the case with the ’851 design. Additionally, the ’053 design also permits the
`
`use of full bore-size tools while the isolation mandrel remains in position for
`
`hydraulic fracturing operations. The full-bore access also allows for an increase in
`
`the velocity at maximum flow rate for stimulation fluids being pumped downhole.
`
`Overall, the wellhead isolation tool described and claimed in the ’053 Patent
`
`provides several improvements over what was previously known in the industry.
`
`Ex. 2012 (Wooley Decl.), ¶¶ 28-37.
`
`III. CLAIM CONSTRUCTION
`
`In an inter partes review proceeding, a claim must be given its “broadest
`
`reasonable interpretation in light of the specification as it would be interpreted by
`
`one of ordinary skill in the art.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed.
`
`Cir. 2005) (internal citation omitted); see also 37 C.F.R. § 42.100(b).
`
`8
`
`
`
`The “broadest reasonable interpretation of the claims must also be consistent
`
`with the interpretation that those skilled in the art would reach.” Manual of Patent
`
`Examining Procedure (MPEP) § 2111 (citing In re Cortright, 165 F.3d 1353, 1359
`
`(Fed. Cir. 1999)). “[T]he focus of the inquiry regarding the meaning of a claim
`
`should be what would be reasonable from the perspective of one of ordinary skill
`
`in the art.” Id. (citing In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir.
`
`2010); In re Buszard, 504 F.3d 1364 (Fed. Cir. 2007)).
`
`A.
`
`“second lockdown mechanism”
`
`In the Institution Decision,
`
`the Board found that
`
`the limitations “first
`
`lockdown mechanism” and “second lockdown mechanism,” as recited in claims 1
`
`and 22, are not “means-plus-function” elements and do not invoke 35 U.S.C.
`
`§ 112, ¶ 6. Patent Owner agrees that “first lockdown mechanism” and “second
`
`lockdown mechanism” should not be governed under § 112, ¶ 6. However, the
`
`Institution Decision also concluded that the “second lockdown mechanism” may
`
`be a setting tool as described in the prior art. Specifically, the Institution Decision
`
`stated:
`
`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.
`9
`
`
`
`Institution Decision at 12. In view of this interpretation, additional explanation is
`
`provided as to why the “second lockdown mechanism” would be understood by a
`
`person of ordinary skill in the art to be 1) mechanical, and 2) separate from a
`
`setting tool, and consequently, why the Board’s initial construction of “second
`
`lockdown mechanism” should be reconsidered. As explained below, “second
`
`lockdown mechanism” would be understood by one of ordinary skill in the art to
`
`mean “a lockdown mechanism separate from a setting tool which locks the
`
`mandrel in position without hydraulic pressure.”
`
`The “second lockdown mechanism” is mechanical and does
`1.
`not use hydraulic pressure to lock the mandrel in the operative
`position.
`
`The ’053 Patent describes the claimed second lockdown
`a)
`mechanism as being mechanical.
`
`The ’053 Patent consistently describes the “second lockdown mechanism” of
`
`the wellhead isolation tool as being mechanical.
`
`Initially, the abstract states that,
`
`although either a mechanical or hydraulic mechanism may be used “to move the
`
`mandrel into the operative position,” “[a] second mechanical locking mechanism is
`
`provided to ensure the mandrel is maintained in the operative position in the event
`
`that hydraulic pressure is lost.” (Emphasis added.)
`
`Consistent with that high-level summary, the specification discusses the
`
`integrated hydraulic setting tool design of the ’851 Patent (which corresponds to
`
`the ’118 Application) and describes the shortcomings of using hydraulic fluid
`
`10
`
`
`
`pressure to hold the mandrel in place while stimulating a well. The ’053 Patent
`
`notes that
`
`the hydraulic design of the ’851 Patent was “less secure than a
`
`mechanical lockdown mechanism” because it was “dependent on maintenance of
`
`the hydraulic fluid pressure in the setting tool.” Ex. 1001 (’053 Patent), 3:2-6.
`
`“Since fluid pressure may be lost for a variety of reasons, persons in the industry
`
`are generally less inclined to endorse or accept a hydraulic lockdown mechanism.”
`
`Id., 3:7-9. After describing the shortcomings of attempting to maintain the
`
`mandrel in place hydraulically, the description concludes by stating that “there
`
`exists a need for a lockdown mechanism for securing a mandrel of a well tool in an
`
`operative position requiring fixed-point packoff in the well which provides a
`
`broader range of adjustment while ensuring a secure mechanical lockdown for
`
`maximum security.” Id., 3:40-45 (emphasis added).
`
`Consistent with the inventor’s desire to satisfy that stated need, every
`
`embodiment of the ’053 Patent includes a “second lockdown mechanism” that is
`
`mechanical and does not rely on hydraulic pressure to lock the mandrel in the
`
`operative position. The first embodiment of the wellhead isolation tool is shown in
`
`Figures 1-4 and 9, of which Figure 2 is reproduced below.
`
`11
`
`
`
`Figure 2 is described as follows:
`
`For safe engagement to restrain the high fluid pressures during a well
`treatment
`to stimulate production,
`threads 34-36 are engaged a
`distance “A” by rotating the lockdown nut 38. At this stage, the
`bottom end of the mandrel 22 is still above the fixed-point 24 for
`packoff by the distance “C”, as shown in FIG. 1. After the lockdown
`nut 38 is fully engaged as shown in FIG. 3, the mandrel 22 is further
`stroked down until the bottom end of the mandrel 22 packs off against
`the fixed-point 24. The nuts 60 are then rotated down against the
`lower flange 54 of the mandrel head 26 to prevent a fluid seal on the
`lower end of mandrel 22 (not shown) from being forced away from
`
`12
`
`
`
`the fixed-point 24 for packoff after the setting tool is removed from
`the wellhead and pressurized fluids are injected into the well.
`
`Ex. 1001 (‘053 Patent), 7:19-32. The nuts 60 and bolts 56 are the portion of
`
`the second lockdown mechanism that mechanically locks the mandrel in the
`
`operative position.
`
`The second embodiment of the claimed wellhead isolation tool is shown in
`
`Figures 5-8, of which Figure 5 is copied below.
`
`As described in the Wooley Declaration, the second lockdown mechanism of
`
`Figures 5-8 includes a piston 84, hydraulic cylinder 74, threaded bolts 56, and
`
`nuts 60. Ex. 2012 (Wooley Decl.), ¶¶ 33-34. Although the hydraulic piston 84 is
`
`13
`
`
`
`used to further stroke the mandrel into the operative position within the range of
`
`adjustment (identified as the distance “B” in Figure 5), the mandrel is actually
`
`secured in the operative position by the bolts 56 and nuts 60, just as in the first
`
`embodiment. Id., ¶ 34. The fact that every embodiment of the ’053 Patent uses a
`
`second lockdown mechanism that mechanically locks the mandrel in position
`
`supports construing this term as a device that locks the mandrel in the operative
`
`position without relying on hydraulic fluid pressure. See Regents of Univ. of Minn.
`
`v. AGA Medical Corp., 717 F.3d 929, 936 (Fed. Cir. 2013) (claim construed to
`
`require two separate pieces because “[t]he ’291 specification never teaches an
`
`embodiment constructed of a single piece.”). Moreover, that is how the term
`
`would be understood by one of ordinary skill in the art. Ex. 2012 (Wooley Decl.),
`
`¶¶ 55-57.
`
`lockdown
`construed “second
`The District Court
`b)
`mechanism” as “lock[ing] the mandrel
`in the operative
`position without hydraulic pressure.”
`
`In the District Court litigation between the parties, Judge Davis issued a
`
`claim construction Order on June 23, 2014. The Court’s claim construction Order
`
`is included as Exhibit 2008. The Order construes “second lockdown mechanism”
`
`as the “second part of the apparatus that
`
`interacts with the first
`
`lockdown
`
`mechanism to lock the mandrel
`
`in the operative position without hydraulic
`
`pressure.” Markman Order, p. 16. The Court relied on the above-quoted language
`
`14
`
`
`
`from the abstract of the ’053 Patent which “explains that the ‘second lockdown
`
`mechanism’ is intended to ensure the mandrel remains in the operative position
`
`even if hydraulic pressure is lost.” Ex. 2008, p. 15. The Court’s construction of
`
`the second lockdown mechanism is consistent with the specification, as described
`
`in detail above, as well as with the understanding of one of ordinary skill in the art.
`
`Ex. 2012 (Wooley Decl.), ¶¶ 55-57.
`
`The ’053 Patent consistently describes the setting tool as
`2.
`being distinct from the first and second lockdown mechanisms.
`
`The ’053 specification repeatedly references a “setting tool” that is used to
`
`move the mandrel towards its operative position, and consistently describes such a
`
`setting tool as being distinct from the claimed “first lockdown mechanism” and
`
`“second lockdown mechanism.” First, the setting tool is described as working in
`
`conjunction with the first and second lockdown mechanisms of the tool claimed in
`
`the ’053 Patent. Second, the setting tool is described as being separate and
`
`removable from the lockdown mechanisms.
`
`The setting tool works in conjunction with the first and
`a)
`second lockdown mechanisms.
`
`The ’053 specification explains that wellhead isolation tools are generally
`
`installed using a “setting tool” which is used to “insert the mandrel … to an
`
`operative position … to stimulate production.” Ex. 1001 (’053 Patent), 8:35-48,
`
`15
`
`
`
`9:67–10:12. The mandrel is then locked in the operative position by the first and
`
`second lockdown mechanisms.
`
`The embodiments in the specification show that
`
`the second lockdown
`
`mechanism is considered distinct from the setting tool because they are shown
`
`separately in conjunction with each other. The components are separately shown
`
`and described in Figures 8 and 9, which reflect two embodiments of the claimed
`
`isolation tool. The ’053 specification states that the setting tool 93 is used to stroke
`
`the mandrel down through the wellhead, such that the distance from the bottom of
`
`the mandrel to the fixed-point packoff is less than the maximum distance afforded
`
`by the range of adjustment that is built into the second lockdown mechanism.
`
`Once the mandrel is in this position, the range of adjustment associated with the
`
`second lockdown mechanism (shown as being included in apparatus 70 in Figure 8
`
`and apparatus 20 in Figure 9) allows for the mandrel to be moved farther down and
`
`packed off at the fixed-point packoff. Once both lockdown mechanisms are locked
`
`down, the mandrel is locked in place and will not move from the fixed-point
`
`packoff, and the setting tool may be removed. This basic operation is discussed in
`
`more detail below.
`
`Figure 8 shows one embodiment of the apparatus, as it is installed on top of
`
`a wellhead. Figures 7 and 8 are reproduced below.
`
`16
`
`
`
`The ’053 specification identifies the setting tool as element 93, which is
`
`located at the top of Figure 8, in conjunction with the wellhead isolation tool. The
`
`wellhead isolation tool
`
`includes first
`
`lockdown mechanism 38 and second
`
`lockdown mechanism 70.
`
`FIG. 8 shows an example of the use of the apparatus 70 shown in
`FIG. 5, using a hydraulic setting tool 93 to insert the mandrel 72 to an
`operative position for a well treatment to stimulate production. … The
`apparatus 70 is supported on a top of the blowout preventer by
`mounting the base plate 28 in a fluid tight relationship to the top
`flange of
`the blowout preventer 100. Mounted above the
`
`17
`
`
`
`apparatus 70, is a high pressure valve 104 which is used for fluid flow
`control during a well treatment to stimulate production and, also used
`to prevent well fluids from escaping to the atmosphere from the top of
`the mandrel 72. … The hydraulic setting tool 93 includes a hydraulic
`cylinder 106 which is mounted to a support plate 108. The support
`plate 108 includes a central passage (not shown) to permit a piston
`rod 114 of the hydraulic cylinder 106 to pass through the support
`plate 108. The support 108 also includes at least two attachment
`points 110 for attachment of respective hydraulic cylinder support
`rods 112. … The piston rod 114 is attached to the top of the high
`pressure valve 104 by a connector 118 so that a force can be applied
`to stroke the mandrel 72 down through the wellhead.
`
`After the mandrel 72 is stroked downwardly [by the setting tool] to an
`extent
`that
`the pack off assembly 94 is in proximity to the bit
`guide 96, and the lockdown nut 38 is turned down to its locked
`position, as illustrated in FIG. 8, the setting tool 93 including the
`hydraulic cylinder 106, support plate 108, cylinder support rods 112
`and the connector 118 are removed. The packoff assembly 94 on the
`bottom of the mandrel 72 is then stroked further down until it is
`packed off against the bit guide 96 by injecting pressurized fluid into
`the top port 88 of the hydraulic cylinder 74 [identified as part of the
`second lockdown mechanism], as illustrated in FIG. 7.
`
`Ex. 1001 (‘053 Patent), 8:35-9:30 (emphasis added).
`
`Thus, even in this
`
`embodiment that includes a hydraulic cylinder as one component of the second
`
`18
`
`
`
`lockdown mechanism, the setting tool is identified as being separate and distinct
`
`from the second lockdown mechanism.
`
`Figure 9, reproduced below, similarly shows that setting tool 93 is separate
`
`from the embodiment of the wellhead isolation tool described in Figures 1-4. The
`
`setting tool’s operation of moving the mandrel into place is distinguished from the
`
`first and second lockdown mechanisms’ operation of locking the mandrel at the
`
`fixed-point packoff as described in Figures 1-4.
`
`FIG. 9 shows an example of the use of the apparatus 20, shown in
`FIG. 1, using the hydraulic setting tool 93 to insert the mandrel 22 to
`an operative position for a well treatment to stimulate production. …
`After the setting tool 93 is mounted to the base plate 28 in the same
`way as described with reference to FIG. 8, the steps described with
`reference to FIGS. 1 to 4 are followed to lock the mandrel 22 in the
`operative position in which the elastomeric seal on the sealing
`shoulder 128 of the mandrel 22 is packed-off against the annular step
`130.
`
`Ex. 1001 (‘053 Patent), 9:31-62 (emphasis added). Figures 2 and 9 are reproduced
`
`below.
`
`19
`
`
`
`The specification never suggests that the setting tool used to insert the
`
`mandrel through the wellhead could be part and parcel of the “second lockdown
`
`mechanism.”
`
`is consistently described as being
`The setting tool
`b)
`separate or removable from the first and second lockdown
`mechanisms.
`
`The ’053 specification makes clear that the separation of the setting tool
`
`from the lockdown mechanisms is not coincidental or a minor detail. To the
`
`contrary, such separation is significant because it allows the setting tool be
`
`removed after the mandrel has been locked in position, which is necessary to
`
`accomplish one of the stated goals of the claimed invention.
`
`20
`
`
`
`Initially,
`
`there are at
`
`least
`
`three separate locations where the ’053
`
`specification describes the setting tool as being a separate structure that can be
`
`removed once the mandrel is locked in the operative position:
`
`After the lockdown nut 38 is fully engaged as shown in FIG. 3, the
`mandrel 22 is further stroked down until the bottom end of the
`mandrel 22 packs off against the fixed-point 24. The nuts 60 are then
`rotated down against the lower flange 54 of the mandrel head 26 to
`prevent a fluid seal on the lower end of mandrel 22 (not shown) from
`being forced away from the fixed-point 24 for packoff after the setting
`tool is removed from the wellhead and pressurized fluids are injected
`into the well.
`
`Ex. 1001 (’053 Patent), 7:27-32 (emphasis added).
`
`After the lockdown nut 38 is fully engaged with the base plate 28, the
`setting tool is removed from the wellhead and the well tool is left
`unobstructed for access.
`
`Ex. 1001 (’053 Patent), 8:19-21 (emphasis added).
`
`After the mandrel 72 is stroked downwardly to an extent that the
`packoff assembly 94 is in proximity to the bit guide 96, and the
`lockdown nut 38 is turned down to its locked position, as illustrated in
`FIG. 8, the setting tool 93 including the hydraulic cylinder 106,
`support plate 108, cylinder support rods 112 and the connector 118
`are removed.
`
`Ex. 1001 (’053 Patent), 9:24-26 (emphasis added). See Ex. 2012 (Wooley Decl.),
`
`¶ 49.
`
`21
`
`
`
`Additionally, both illustrative embodiments of the claimed tool, including
`
`the first and second lockdown mechanisms, are shown without the setting tool in
`
`Figures 1-7.
`
`A separate setting tool was necessary to avoid the
`c)
`drawbacks of the tool in the ’851 Patent.
`
`The ’053 specification also explains why the ability to remove the setting
`
`tool was necessary to achieve one of the stated goals of the ’053 invention, which
`
`was to solve one of the problems of the design described in the ’851 Patent. That
`
`problem was described by Mr. Dallas as follows:
`
`“The blowout preventer
`
`protector described in U.S. Pat. No. 5,819,851 includes a mandrel that is integrally
`
`incorporated with a hydraulic setting tool.” Ex. 1001 (’053 Patent), 2:46-48
`
`(emphasis added).
`
`“The mandrel is not separable from the hydraulic setting
`
`tool….” Ex. 1001 (’053 Patent), 2:48-49 (emphasis added). Because “the setting
`
`tool is not removable,” the tool of the ’851 Patent had a “high profile. A well tool
`
`with a high profile is not convenient because access to equipment mounted thereto,
`
`such as a high pressure valve, is impeded by the height of the valve above ground.”
`
`Ex. 1001 (’053 Patent), 2:64–3:2.
`
`Two of the applicant’s co-pending applications attempted to solve this
`
`“profile” problem by using tools with a lockdown mechanism that is “separated
`
`from the hydraulic setting tool and, therefore, permits the setting tool to be
`
`removed from the well tool after the mandrel is locked down in the operative
`
`22
`
`
`
`position. The tools therefore provide a low profile to facilitate well stimulation
`
`operations.” Ex. 1001 (’053 Patent), 3:34-39 (emphases added). Similarly, in the
`
`’053 Patent, it was an “object of the invention to provide a lockdown mechanism
`
`for securing a mandrel of the well tool in an operative position requiring fixed-
`
`point packoff in the well, the lockdown mechanism having a low profile for easy
`
`access to a high pressure valve during use while the tool is in the operative
`
`position.” Ex. 1001 (’053 Patent), 3:53-58 (emphases added). This statement –
`
`coupled with the patentee’s earlier explanation that a “low profile” is achieved by
`
`using a separate and removable setting tool – conveyed to one of ordinary skill in
`
`the art that “the invention” employed such a setting tool. Ex. 2012 (Wooley
`
`Decl.), ¶¶ 50-54. When a patentee characterizes “the invention” as including a
`
`particular feature, the claims should be limited accordingly. See Regents of the
`
`Univ. of Minn v. AGA Medical Corp., 717 F.3d 929, 936 (Fed. Cir. 2013);
`
`Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006).
`
`For all the reasons listed above, a person of ordinary skill in the art would
`
`understand the “second lockdown mechanism” to be “a lockdown mechanism that
`
`is separate from a setting tool and locks the mandrel in the operative position
`
`without using hydraulic fluid pressure.” Ex. 2012 (Wooley Decl.), ¶¶ 54-57.
`
`Patent Owner respectfully asks the Board to reconsider its initial construction of
`
`this term.
`
`23
`
`
`
`B.
`
`“loc
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