UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`GREENE’S ENERGY GROUP, LLC
`Petitioner
`v.
`
`OIL STATES ENERGY SERVICE, L.L.C.
`Patent Owner
`
`
`
`Patent No. 6,179,053
`Issue Date: August 12, 1999
`Title: LOCKDOWN MECHANISM FOR WELL TOOLS REQUIRING
`FIXED-POINT PACKOFF
`_______________
`
`Inter Partes Review No. IPR2014-00216
`____________________________________________________________
`
`
`
`
`
`DECLARATION OF GREGG S. PERKIN IN SUPPORT OF GREENE’S
`ENERGY GROUP, LLC’S OPPOSITION TO OIL STATES ENERGY
`SERVICES L.L.C.’S MOTION TO AMEND
`
`
`
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`TABLE OF CONTENTS
`
`I. 
`
`Scope Of Engagement For Greene’s Energy Group, LLC’s Reply In
`Support Of Its Petition For Inter Partes Review ............................................. 4 
`
`II. 
`
`Background And Qualifications ...................................................................... 4 
`
`a. 
`
`Author Qualifications ............................................................................ 5 
`
`III.  Author’s Actual Experience Pertaining To Oilfield Frac’ing
`Equipment & Operations ............................................................................... 11 
`
`IV.  Basis For Opinions ........................................................................................ 16 
`
`V.  Description Of Amended Claims .................................................................. 16 
`
`VI.  Opinions ......................................................................................................... 20 
`
`a. 
`
`b. 
`
`c. 
`
`d. 
`
`Person of Ordinary Skill in the Art ..................................................... 20 
`
`Amended Claims ................................................................................. 20 
`
`The Mandrel That Includes A Packoff Assembly That Seals
`Against The Fixed-Point Packoff Within The Tubing Head
`Spool. ................................................................................................... 21 
`
`The Apparatus Includes A Setting Tool That Is Removable
`From The Other Portions Of The Apparatus, This Setting Tool
`Inserts A Bottom End Of The Mandrel Through The Wellhead ........ 23 
`
`i. 
`
`ii. 
`
`“Setting Tool” Does Not Have A Precise Definition ............... 24 
`
`Dallas ‘118 Requires That Some Device Be Used That
`Aligns The Mandrel With The Wellhead So That The
`Mandrel Can Be Inserted Without Interference ........................ 26 
`
`iii.  Additionally, It Would Have Been Obvious To A Person
`Of Ordinary Skill In The Art To Use A Separate,
`Specialized Tool, Such As The ‘243 Patent. ............................ 31 
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`e. 
`
`The Use Of A Mechanical Locking Mechanism In Place Of The
`Hydraulic Piston And Cylinder Of Dallas ‘118 Would Have
`Been Obvious To A Person Of Ordinary Skill In The Art.................. 35 
`
`i. 
`
`ii. 
`
`It Would Have Been Well Known To A Person Of
`Ordinary Skill In The Art That Hydraulic Locks And
`Mechanical Locks Are Interchangeable. .................................. 35 
`
`A Person Of Ordinary Skill Would Recognize That If
`You Want To Make A Hydraulic Mechanism More
`Secure, Mechanical Screws Or Jacks Could Be Used. ............. 40 
`
`VII.  Full Bore Access is Not a Novel Feature of the Amended Claims ............... 42 
`
`a. 
`
`b. 
`
`c. 
`
`Importance of Full Bore Access .......................................................... 42 
`
`Full Bore Access Is Not Claimed by the Amended Claims ................ 44 
`
`Full Bore Access is Taught by the Prior Art ....................................... 49 
`
`VIII.  Conclusion ..................................................................................................... 50 
`
`
`
`
`
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`I.
`
`Scope Of Engagement For Greene’s Energy Group, LLC’s Reply In
`Support Of Its Petition For Inter Partes Review
`
`1.
`
`I have been retained as an Expert Witness by the law firm of Foley &
`
`Lardner, LLP on behalf of its client, Greene's Energy Group (“Greene’s”) in the
`
`above referenced matter to provide technical opinions concerning United States
`
`Patent No. 6,179,053 (“‘053 Patent”). I understand that the ‘053 Patent is owned
`
`by Oil States Energy Services LLC (“Oil States”).
`
`2.
`
`In this report, I have been asked to give certain opinion in support of
`
`Greene’s’ Opposition to Oil States’ Motion to Amend claims 1 and 22 of the ‘053
`
`Patent. I will refer to this report as the ‘053 IPR Motion to Amend Opposition
`
`Declaration.
`
`3. My time in this matter is billed at my standard consulting fee of
`
`$425.00 USD per hour, not including reimbursement for expenses. No part of my
`
`compensation depends on the outcome of this litigation.
`
`4.
`
`The pertinent documents which I have researched, read, reviewed and
`
`considered are attached as Addendum A. My Curriculum Vitae is attached as
`
`Addendum B. A list of my publications and patents is attached as Addendum C.
`
`Finally, a list of my Deposition and Trial Appearances since 2004 is attached as
`
`Addendum D.
`
`II. BACKGROUND AND QUALIFICATIONS
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`AUTHOR QUALIFICATIONS
`
`a.
`I am the Owner, President and one (1) of the Principal Engineers of
`
`5.
`
`Engineering Partners International, LLC (“EPI”). EPI’s Corporate Offices are
`
`located at 1310 Kingwood Drive, Kingwood, Texas, 77339; telephone (281) 358-
`
`2126. I am also the majority Owner of EPI Materials Testing Group (“EPI
`
`MTG”). EPI MTG is a Mechanical Testing and Metallurgical Laboratory located
`
`at 1146 Rayford Road, Spring, Texas, 77386; telephone (281) 363-9997. Further, I
`
`am also a Partner and a minority Owner of Energy Training Solutions, LLC
`
`(“ETS”) and one of its Instructors. ETS is a client & customer focused
`
`professional training organization which delivers both standard and customized
`
`training solutions for the Energy & its related industries which accelerates and
`
`maximizes competence and personal contributions through enhanced knowledge of
`
`the oil and gas industry. ETS is also located at 1146 Rayford Road, Spring, Texas,
`
`77386; telephone (281) 783-5265. Refer to Figure 1.
`
`
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`Figure 1: EPI MTG and ETS Facility in Spring, Texas
`
`EPI, EPI MTG and ETS are all in good standing with the State of
`
`
`
`6.
`
`Texas.
`
`1. EPI’s website is at www.engineeringpartners.org
`
`2. EPI MTG’s website is at www.epimtg.com and
`
`3. ETS’s website is at www.energytrainingsolutions.com
`
`7.
`
`I was employed in the oil & gas industry from 1968 through 1986.
`
`From 1968 to 1973, I worked as an Engineering Trainee for two (2) oilfield service
`
`companies while attending California State University at Long Beach ("CSULB").
`
`I graduated in 1973 from CSULB with a Bachelor of Science in Mechanical
`
`Engineering.
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`8.
`
`In 1978, I became a registered Professional Engineer by examination
`
`in the State of California. I am currently registered as a Professional Engineer in
`
`good standing by examination, experience & comity in thirteen (13) states:
`
`California, Texas, Hawaii, North Carolina, Oklahoma, Wyoming, New Mexico,
`
`Arkansas, Alabama, Montana, Mississippi, Colorado, and Louisiana.
`
`9.
`
`I was employed in the Oilfield Service Industry by Regan Forge and
`
`Engineering (“Regan”), Smith International, Incorporated (“SII”), Newpark
`
`Resources (“Newpark”) and The Oilpatch Group as a Draftsman, Design Engineer,
`
`Engineering Manager, Manager of Field Engineering, Chief Engineer, Vice
`
`President of Engineering and Director of Manufacturing. Also while I was
`
`employed in the industry, I worked as an oilfield Roughneck or Floorman,
`
`Derrickman, Serviceman and Field Engineer in both offshore and onshore drilling
`
`and completion operations.
`
`10. While employed by Regan, I was directly and indirectly involved in
`
`the design, manufacture, assembly, and testing of subsea BOPs, Risers,
`
`Connectors, Running Tools and completion systems.
`
`11. While employed by SII, I was directly and indirectly involved in the
`
`design, manufacture, assembly, and testing of downhole tools, equipment and
`
`systems mainly utilized in onshore and offshore Rotary Drilling operations. As a
`
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`Design Engineer, Engineering Manager and Field Engineering Manager for the
`
`Servco Division of SII, I routinely worked with SII’s Dyna-Drill Division and SII’s
`
`Smith Tool Division. Servco, Dyna-Drill and Smith Tool designed, manufactured,
`
`assembled, tested, utilized and maintained Downhole Drilling Tools and Systems
`
`which incorporated Rock Bits, Mud Motors, Bent Rotary Substitutes (“Bent
`
`Subs”), Non-Magnetic Drill Collars, Stabilizers, Reamers, Instrumentation, Heavy
`
`Wall Drill Pipe and Computer Software.
`
`12. While employed by Newpark, I was Chief Engineer and also, Director
`
`of Manufacturing. As with SII, I was directly and indirectly involved in the
`
`design, manufacture, assembly, and testing of downhole tools, equipment and
`
`systems mainly utilized in onshore and offshore Rotary Drilling operations.
`
`13. While employed by The Oilpatch Group, I was once again directly
`
`and indirectly involved in the design, manufacture, assembly, and testing of
`
`downhole tools, equipment and systems utilized in onshore and offshore Rotary
`
`Drilling operations.
`
`14. During my tenures at Regan, SII, Newpark and the Oilpatch Group, I
`
`authored and/or co-authored as an inventor and/or co-inventor 10 patents
`
`pertaining to various tools, equipment, systems and techniques used in both
`
`onshore and offshore Rotary Drilling Operations.
`
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`15.
`
`In mid-1986, I began my work as an independent professional
`
`Mechanical Engineering Consultant and primarily worked out of my home.
`
`During that time, I provided my consulting engineering services as a professional
`
`engineer in the field of Mechanical Engineering to SII, Omsco Industries, NASA,
`
`Grant Oil Tools, Den-Con Tool Company and Baker Hughes.
`
`16. During my tenure as an independent professional Mechanical
`
`Engineering Consultant, I co-authored and/co-invented two (2) patents pertaining
`
`to the design, use, application, installation and testing of Radio Frequency
`
`Identification (“RFID”) hardware and electronics for use in harsh environments,
`
`such as onshore and offshore drilling operations and petrochemical plants and
`
`refineries.
`
`17.
`
`In mid-1987, I joined CH&A Corporation (“CH&A”). CH&A was an
`
`independent consulting firm providing insurance and litigation support.
`
`18.
`
`In 1995, I formed EPI. I am presently employed by EPI as its
`
`President. I am also and one of its Principal and a Professional Mechanical
`
`Engineers in the areas of domestic and international onshore and offshore drilling
`
`operations including the design, use and application of much of the equipment and
`
`systems used in the oilfield’s past and present.
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`19. To date and during my tenure at EPI, I have co-authored and/co-
`
`invented one (1) patent pertaining to the development of a machine used to
`
`produce either a round counterbore or a pre-defined geometrical shape on the
`
`inside diameter (“ID”) of tubular goods or the inside of other similar objects.
`
`Currently, another patent application is pending in the United States Patent &
`
`Trademark Office (“USPTO”) where I am a co-inventor related to the design,
`
`application and use of a gas and liquid flowmeter used in the custody transfer of
`
`hydrocarbons.
`
`20. Between 1996 and early 2011, I was a part time Instructor at the
`
`University of Texas’ Petroleum Extension Service (“PETEX”). I developed and
`
`conducted classes in Oil & Gas Drilling & Production Operations, Mechanical
`
`Engineering, Drilling Rig Safety, Well Control, Directional Drilling and Well
`
`Servicing Operations to include Frac’ing. Between 2004 and 2011, I served on
`
`PETEX’s Advisory Board.
`
`21.
`
`In 2011, I resigned from PETEX and its Advisory Board in order to
`
`form ETS. At the time of this ‘053 IPR Motion to Amend Opposition
`
`Declaration, I continue to teach improved and updated energy related courses,
`
`including Frac’ing Operations, to many different segments of energy related
`
`industries.
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`22. While at PETEX and ETS, I also served as a Lecturer and Instructor
`
`for FMC Corporation, Baker-Hughes, Incorporated and National Oilwell Varco. I
`
`have authored and co-authored energy related technical papers and articles for the
`
`International Association of Drilling Contractors (“IADC”), the Society of
`
`Petroleum Engineers (“SPE”) and PetroSafe.
`
`23. Myself, EPI and/or EPI MTG is presently affiliated with, and have
`
`memberships in the following professional organizations: American Petroleum
`
`Institute (“API”), Society of Petroleum Engineers (“SPE”), International
`
`Association of Drilling Contractors (“IADC”), American Society of Mechanical
`
`Engineers (“ASME”), National & Texas Societies of Professional Engineers
`
`(“NSPE & TSPE”), National Fire Protection Association (“NFPA”), Instrument
`
`Society of America (“ISA”) and the American Welding Society (“AWS”).
`
`III. AUTHOR’S ACTUAL EXPERIENCE PERTAINING TO OILFIELD
`FRAC’ING EQUIPMENT & OPERATIONS
`
`24. ENGINEERING PARTNERS INTERNATIONAL, LLC:
`
`President and Principal Mechanical Engineer.
`
`25. As one (1) of EPI’s Principal Mechanical Engineers and with regard
`
`to Frac’ing operations, I am often independently retained to conduct:
`
`1. Equipment design;
`
`2. Failure analysis and;
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`3. Review claim elements of intellectual property having to do with
`
`Frac’ing.
`
`
`
`26.
`
`I am routinely retained to provide other independent consulting
`
`engineering services related to the mechanical equipment and systems utilized in
`
`both surface and downhole operations including the processes associated with oil
`
`& gas well drilling, well servicing, completion and production. For example, I
`
`have been and am involved in the design, application, use, and the assembly and
`
`testing of Frac’ing equipment both at EPI and EPI MTG.
`
`27.
`
`I have also analyzed certain quality control and quality assurance
`
`operations pertaining to the certification and recertification of Frac’ing hardware
`
`such as swivel joints, check valves, laterals, tees, fittings, relief valves, hose loops,
`
`unions and pup joints to include the threaded connections which are used to
`
`connect them together (“Iron”)
`
`
`
`
`
`
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`28.
`
`I have personally evaluated the failure of Frac’ing equipment and the
`
`failure of Wellhead and Frac Stack Equipment during Frac’ing operations.
`
`Pump Trucks
`
`
`
`(b)
`
`
`
`
`
`
`
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`Refer to Figure 2a-2d.
`
`(a)
`
`Missle
`
`

`

`
`
`Frac Head
`
`Frac Tree
`
`(c)
`
`Wellhead
`
`Tubing
`Head
`Spool
`
`(d)
`
`
`
`Failed Iron
`
`
`
`
`Figure 2a-2d (top to bottom and left to right): Failure of Frac’ing equipment
`(“Iron”) for an oilfield Frac’ing Operation for an onshore well (a) Missile (b)
`Pump Trucks (c) Wellhead and Frac Tree (d) Failed Iron
`
`
`
`
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`29. Refer to Figure 3a-3c.
`
`(a)
`(a)
`
`
`
`(b)
`
`Note: The Frac Tree’s
`bottom
`flange was
`bolted to the Tubing
`Hanger Spool’s Flange
`under this Shroud.
`
`Gate Valves
`
`Note: A Frac
`Head was
`attached atop
`this Flange.
`
`
`
`
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`Note: Washed out Flange face
`between the Tubing Hanger Spool
`and the Frac Tree.
`
`(c)
`
`
`
`
`Figure 1: (top to bottom and left to right): Failure of Frac’ing equipment (“Iron”) for an oilfield
`Frac’ing Operation for an onshore well (a) Frac Stack upside down (b Frac Tree @ positioned
`upside down (c) Washed out Flange Face
`
`
`IV. BASIS FOR OPINIONS
`
`30.
`
`In developing my opinions relative to this matter, I read, reviewed and
`
`considered the ‘053 Patent including its file history, reviewed relevant documents
`
`and testimony, and reviewed a number of prior art materials. I also accessed and
`
`(c)
`reviewed the factual information contained within the following web sites:
`
`1. Greene’s: http://www.greenesenergygroup.com/
`
`2. Oil States: http://www.oilstates.com/home-1426.html
`
`31. Review and analysis of this information, together with my education,
`
`training, knowledge and experience, formed the basis of the Opinions expressed.
`
`V. DESCRIPTION OF AMENDED CLAIMS
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`32.
`
`I have been informed that OSES proposes that claims 1 and 22 be
`
`amended to include the limitations shown underlined below ).
`
`33.
`
`28. (Proposed Substitute Claim for Claim 1) An apparatus for
`
`securing a 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:
`
`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 respective lockdown positions;
`
`the first mechanical lockdown mechanism adapted to detachably
`
`maintain the mandrel in proximity to the fixed-point packoff when in the
`
`lockdown position,
`
`the first mechanical lockdown mechanism including a base member
`
`for connection to a wellhead of the well and a locking member for
`
`detachably engaging the base member; [and]
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`the second mechanical lockdown mechanism having a range of
`
`adjustment adequate to ensure that the mandrel can be moved into the
`
`operative position, and 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
`
`the mandrel including a packoff assembly that seals against the fixed-
`
`point packoff within the tubing head spool.
`
`34.
`
`29. (Proposed Substitute Claim for Claim 22) A method for lockdown
`
`of a mandrel of a well tool in an operative position in which the mandrel is packed
`
`off against a fixed-point 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
`
`mandrel of the well tool in the operative position, comprising:
`
`i) 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;
`
`ii) 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 second
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`mechanical lockdown mechanisms are in respective lockdown
`
`positions;
`
`iii) the first mechanical lockdown mechanism being adapted to
`
`detachably maintain the mandrel in proximity to the fixed-point for
`
`packoff, and including a base member for connection to a top of a
`
`wellhead of the well and a locking member for detachably engaging
`
`the base member; [and]
`
`iv) the second mechanical lockdown mechanism having a range of
`
`adjustment to ensure that the mandrel can be moved into the operative
`
`position, and 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
`
`v) the mandrel including a packoff assembly that seals against the
`
`fixed-point packoff within the tubing head spool;
`
`b) after inserting the mandrel through the wellhead into proximity to the
`
`fixed-point in the well, engaging the locking member of the first lockdown
`
`mechanism with the base member so that the mandrel is only moveable
`
`within the range of adjustment;
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`c) moving the mandrel into the operative position if the mandrel is not yet
`
`packed off against the fixed-point; [and]
`
`d) locking the second lockdown mechanism in the lockdown position; and
`
`e) removing the setting tool from the well tool.
`
`VI. OPINIONS
`
`Person of Ordinary Skill in the Art
`
`a.
`I understand that Dr. Wooley and Mr. Shackelford have applied the
`
`35.
`
`following definition as to the meaning of a person of ordinary skill in the art:
`
`“a Bachelor-level degree in a recognized engineering discipline, and
`practical job exposure of several years with oil and gas well
`operations, or equivalent experience or knowledge.”
`
`For purposes of this declaration, I will agree with this definition.
`
`36.
`
`I understand that the application for the ‘053 Patent was filed on
`
`August 12, 1999. I also understand that the relevant time period for evaluating
`
`prior art is the year preceding the filing date of the patent application.
`
`Accordingly, all of my opinions are being given with respect to a person of
`
`ordinary skill during the 1998-99 timeframe.
`
`Amended Claims
`
`b.
`In my opinion, the amended claims seek to add three limitations to
`
`37.
`
`both claims 1 and 22: (1) the mandrel includes a packoff assembly that seals
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`against the fixed-point packoff within the tubing head spool, (2) the apparatus
`
`includes a setting tool that is removable from the other portions of the apparatus,
`
`this setting tool inserts a bottom end of the mandrel through the wellhead, and (3)
`
`both lockdown mechanisms are required to be mechanical and the second
`
`lockdown mechanism must lock without the use of hydraulic pressure. In my
`
`opinion, each limitation was well known to a person of ordinary skill during the
`
`1998-99 timeframe.
`
`c.
`
`The Mandrel That Includes A Packoff Assembly That Seals
`Against The Fixed-Point Packoff Within The Tubing Head
`Spool.
`
`38.
`
`In my opinion, Canadian Application 2,195,118 (“Dallas ‘118”) (Ex.
`
`1003), a prior art patent application that names Mr. Murray Dallas as inventor and
`
`was published on July 14, 1998, discloses a mandrel that includes a packoff
`
`assembly that seals against the fixed-point packoff within the tubing head spool.
`
`As shown below in Figures 3 and 4 of Dallas ‘118, this limitation is met by
`
`mandrel 28, mandrel extension 58 and packoff assembly 68.
`
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`Dallas ‘118 at Figures 3 and 4.
`
`As shown in Figure 3 of Dallas ‘118, the mandrel extension 58 is threadably
`
`
`
`connected to a bottom end 32 of mandrel 28. Dallas ‘118 at 00014:9-11. 1 A
`
`mandrel packoff assembly 68 is threadably connected to mandrel extension 58 and
`
`
`
`1 This declaration cites to the page numbers located at the bottom of the
`
`pages of Dallas ’118.
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`includes an annular seal 78. Dallas ‘118 at 00014:11-13; 11:27-29. The mandrel
`
`packoff assembly 68 can also be connected directly to the bottom end 32 of
`
`mandrel 28. Dallas ‘118 at 00015:14-16.
`
`39. As shown by Figure 4 of Dallas ‘118, the packoff assembly 68 seals
`
`against a bit guide, which is a fixed point in the tubing head spool. Dallas ‘118
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`teaches that the mandrel packoff assembly 68 seals against the bit guide 84. Dallas
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`‘118 at 00015:17-30. The mandrel 28, mandrel extension 58 and mandrel packoff
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`assembly 68 are stroked down through the wellhead. Dallas ‘118 at 00015:17-20.
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`The annular seal 78 of mandrel packoff assembly 68 is seated against the bit guide
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`84 with enough force to ensure a fluid tight seal. Dallas ‘118 at 00015:23-30. The
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`bit guide 84 is a common component of wellhead assemblies that caps the casing
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`52. Dallas ‘118 at 00015:20-23. The bit guide is located within the tubing head
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`spool 82. Dallas ‘118 at Figure 4. I want to note that I agree with Dr. Wooley that
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`the terms tubing head, tubing head spool and tubing spool are used interchangeably
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`by persons of ordinary skill. Wooley Dep. at 20:16-21:8.
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`40. Thus, in my opinion, Dallas ‘118 meets this limitation.
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`d.
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`The Apparatus Includes A Setting Tool That Is Removable
`From The Other Portions Of The Apparatus, This Setting
`Tool Inserts A Bottom End Of The Mandrel Through The
`Wellhead
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`41.
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`In my opinion, Dallas ‘118 either requires the use of a setting tool that
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`is removable from the other portions of the apparatus that inserts a bottom end of
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`the mandrel through the wellhead, or it would have been obvious to a person of
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`ordinary skill in the art during the 1998-99 timeframe to use such a setting tool
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`with Dallas ‘118.
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`i. “Setting Tool” Does Not Have A Precise Definition
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`In my opinion, the term “setting tool” would not have had a precise
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`42.
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`definition to a person of ordinary skill in the art during the 1998-99 timeframe.
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`43.
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`I agree with Dr. Wooley that the term “setting tool” is used in variety
`
`of applications in the oil and gas field to describe a device that inserts or sets
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`something. What that something is depends upon on the context for which the
`
`term is being used in. Accordingly, the term “setting tool” does not have a precise
`
`meaning in the oil and gas field.
`
`44. As the term is used in the ‘053 Patent, in my opinion, the term “setting
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`tool” could mean any device that is used to align the mandrel with the wellhead so
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`that the mandrel can be inserted without interference. For example, as shown in
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`Figures 7 and 8 of the ‘053 Patent, a separate setting tool is needed to insert the
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`bottom end of the mandrel into the well.
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`‘053 Patent at Figures 8-9.
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`45. Once the mandrel is inserted into the well, the “setting tool” is then
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`removed and the second lockdown mechanism lowers the mandrel so that the
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`bottom of the mandrel seals against the fixed point for packoff 24 in the tubing
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`spool 102. ‘053 patent at 8:5-34
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`46. Moreover, for both Figures 8 and 9, the ‘053 Patent describes the
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`setting tool as being the “hydraulic setting tool 93” and including a hydraulic
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`cylinder 106, support plates 108 and at least two stay rods 112. The hydraulic
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`cylinder 106 is mounted to a support plate 108. The support plate 108 attaches to
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`at least two stay rods 112, which also attach to the base plate 28. The stay rods
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`help guide the mandrel into the wellhead. ‘053 Patent at 8:43-9:20; 9:57-62.
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`47. Furthermore, the ‘053 Patent also explains that the ‘053 Patent is not
`
`limited to hydraulic setting tools. The ‘053 Patent goes on to explain that a setting
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`tool such as the tool disclosed in U.S. Patent 4,632,183 (“McLeod”) (Ex. 1004)
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`may also be used. ‘053 Patent at 9:63-10:12. As will be discussed in detail below,
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`McLeod discloses a mechanical screw-based setting tool.
`
`ii. Dallas ‘118 Requires That Some Device Be Used That
`Aligns The Mandrel With The Wellhead So That The
`Mandrel Can Be Inserted Without Interference
`
`48. As shown in Figure 3 and 4 of Dallas ‘118, the mandrel extension 58
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`and packoff assembly 68 are required to extend below the base 22 of the BOP
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`protector 10. This is in part done to accommodate wells with different
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`configurations including tubing spools with different diameters. Dallas ‘118 at
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`00016:1-12.
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`Dallas ‘118 at Figures 3 and 4.
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`49. The base 22 is a bottom flange of the BOP protector 10 and attaches
`
`
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`the BOP protector to the top end of the BOP or wellhead assembly. The outside
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`diameter of the mandrel extension 58 must be smaller at its bottom end 64 than its
`
`top end 62 in order to account for different wellhead configurations. Because the
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`outer diameter of the mandrel extension 58 is smaller at this bottom end 64 than its
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`top end 62, the mandrel extension cannot be recessed into the annular cavity 26 of
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`the hydraulic cylinder of the BOP protector 10. Therefore, the mandrel extension
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`58 must protrude beyond the base 22 of the BOP protector 10.
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`50. Further, I note that OSES appears to be in agreement with this
`
`opinion. First, Dr. Wooley testified that:
`
`Q. Right. So the '118 patent actually teaches that the extension should
`be protruding below the bottom of the cylinder; isn't that 3 correct?
`
`A. In Figure 3, yes.
`
`Q. Yes. So if it's protruding below the bottom of the cylinder, then
`you do need some other implement to put it into the well in the first
`place; isn't that correct?
`
`A. That's possible.
`
`Wooley Dep. at 55:24-5:14.
`
`51. Second, OSES’s briefs and declarations from this proceeding and the
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`parties co-pending district court litigation show the mandrel extension 58
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`protruding beyond the base 22 of the BOP protector 10 when the BOP protector is
`
`installed. Note: I understand that U.S. Patent No. 5,819,851 (the “‘851 Patent”) is
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`the U.S. equivalent to Dallas ‘118. For example, OSES’s Patent Owner Response
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`shows the following picture:
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`Patent Owner Reponse at 4.
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`52. Accordingly, in my opinion, some removable device such as a crane
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`
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`truck with an additional gear or a specialized tool must have been used to attach
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`the BOP protector 10 to the well. The purpose of wellhead isolation tools is to
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`protect wellhead equipment. If the mandrel of the wellhead isolation tool is not
`
`properly aligned with the wellhead so that it does not interfere or contact the
`
`wellhead equipment, the wellhead isolation tool could damage the wellhead
`
`equipment when it is being inserted into the wellhead. Therefore, in order for
`
`Dallas ‘118 (a wellhead isolation tool) to achieve its purpose of protecting
`
`wellhead equipment, a person of ordinary skill would understand that some
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`removable device must be used to align the mandrel with the wellhead such that
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`mandrel can be inserted without interference.
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`53.
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`In my opinion, such a device could be either a crane with an
`
`additional gear or a specialized tool such as the tool described in another patent by
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`Mr. Dallas, U.S. Patent No. 4,867,243 (the “‘243 Patent”).
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`54. First, with respect to the crane, it was well known that cranes are
`
`devices that are separate from wellhead isolation tools. It is also well known that
`
`cranes are devices that are often used to attach wellhead isolation tools to the
`
`wellhead. Indeed, it is common for wellhead isolation tools to have lifting eyes so
`
`that a crane can be attached for this very purpose. Moreover, Dr. Wooley testified
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`that a crane could be used to lift up the Dallas ‘118 tool and insert the mandrel into
`
`the wellhead:
`
`Q. I mean, I think -- I believe that we just agreed that to use the tool of
`Figure 4 of the Canadian '118 application, some form of a tool is
`required to insert the mandrel extension into the wellhead. Did we not
`agree on that?
`
`A. I think that's fair to say. The tool may be a crane, but there's some
`means you have to lift it up and insert the mandrel inside, if there's an
`extension that's below the baseplate on the tool.
`
`Wooley Dep. at 62:4-13.
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`Therefore, in my opinion, according to the ‘053 Patent, a crane with an additional
`
`gear could be a “setting tool” when used with the Dallas ‘118, because it is a
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