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`Paper No. __
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`GREENE’S ENERGY GROUP, LLC
`Petitioner
`v.
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`OIL STATES ENERGY SERVICE, L.L.C.
`Patent Owner
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`___________________
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`Case IPR2014-00216
`Patent No. 6,179,053
`___________________
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`PETITIONER REPLY
`___________________
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`Inter Partes Review No.: 2014-00216
`Petitioner Reply
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`TABLE OF CONTENTS
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`Introduction ...................................................................................................... 1
`I.
`II. Dallas ’118 “Locks” the Mandrel in an Operative Position ............................ 2
`III. Dallas ’118 is Enabling .................................................................................... 6
`IV. The Second Lockdown Mechanism May Use Hydraulic Pressure ................. 9
`V.
`Claims 1 and 22 Do Not Recite a Setting Tool ............................................. 11
`VI. Conclusion ..................................................................................................... 13
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`Inter Partes Review No.: 2014-00216
`Petitioner Reply
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`EXHIBIT LIST
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`Exhibit
`Ex. #
`1001 U.S. Pat. No. US 6,179,053 (“’053 Patent”)
`1003 Canadian Pat. Appl. 2,195,118 (“Dallas ’118”)
`1008 March 13, 2014 Deposition of L. Murray Dallas (“3/13/14 Dallas Dep.”)
`1009 October 28, 2014 Deposition of L. Murray Dallas (“10/28/14 Dallas
`Dep.”)
`1010 November 13, 2014 Deposition of Max R. Wood (“Wood Dep.”)
`1011 November 12, 2014 Deposition of Gary R. Wooley (“Wooley Dep.”)
`1012 U.S. Patent No. 6,289,993 (“Dallas ’993”)
`1026
`File History for Dallas ’118
`2001 U.S. Patent 5,819,851 (“Dallas ’851)
`2012 Declaration of Gary R. Wooley (“Wooley Response Decl.”)
`2013 Declaration of L. Murray Dallas
`2015 August 8, 2014 Deposition of Donald Shackelford
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`Inter Partes Review No.: 2014-00216
`Petitioner Reply
`I.
`Introduction
`Greene’s Energy Group, LLC’s (“Petitioner” or “GEG”) petition for inter
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`partes review of claims 1 and 22 of U.S. Patent 6,179,053 (the “’053 patent”) (Ex.
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`1001) was granted by the Patent Trial and Appeal Board (the “Board”) on June 10,
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`2014. The Board instituted trial finding that Petitioner demonstrated a reasonable
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`likelihood of prevailing on its challenge to claims 1 and 22 of the ’053 patent as
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`anticipated by Canadian Patent Application 2,195,118 (“Dallas ’118”) (Ex. 1003).
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`Oil States Energy Services, LLC (“OSES” or “Patent Owner”) filed its Patent
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`Owner Response on August 27, 2014. OSES alleges that only a single element is
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`missing from claims 1 and 22 - the “second lockdown mechanism.” OSES’
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`position is based on three flawed claim construction arguments, one of which was
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`presented for the first time in the Patent Owner Response.
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`First, OSES asserts that because the tool of Dallas ’118 relies on hydraulic
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`pressure to position the mandrel, the tool cannot “lock” the mandrel in its operative
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`position as that term should be construed in claims 1 and 22. In fact, the ’053
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`patent disclosure proclaims just the opposite. In the Background of the Invention,
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`inventor Mr. Murray Dallas explained that the tool of U.S. Patent 5,819,851 (the
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`U.S. equivalent of Dallas ’118) (Ex. 2001), functioned to “hydraulically lock the
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`mandrel in an operative position” (emphasis added) and was “widely accepted in
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`the industry.” ’053 patent, 2:48-51, 2:58-62.
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`Inter Partes Review No.: 2014-00216
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`Petitioner Reply
`Recognizing the weakness of the first argument, OSES attempts to achieve the
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`same goal by arguing that the phrase “without the use of hydraulic pressure”
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`should be read into the claims to limit the way the “second lockdown mechanism”
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`locks a mandrel in position. However, as discussed below, OSES’ proposal is
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`contrary to the ’053 specification and claims, which actually require one
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`embodiment of the invention to use hydraulic pressure to lock the mandrel in
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`position.
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`Finally, OSES asserts that an additional undefined element, a “setting tool,”
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`should be added to the claims and that the “second lockdown mechanism” be
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`“separate from the setting tool.” OSES’ proposed claim construction is devoid of
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`any support in the ’053 patent, would render the claims indefinite and does not
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`distinguish Dallas ’118.
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`II. Dallas ’118 “Locks” the Mandrel in an Operative Position
`OSES makes the incredible assertion that it is not possible to “lock” a mandrel
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`in an operative position in the manner required by claims 1 and 22 with hydraulic
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`pressure. OSES goes on to argue that Dallas ’118 cannot meet the limitations of
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`claims 1 and 22 and is therefore not enabling because it uses hydraulic pressure.
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`OSES’ position is contrary to the facts and the law.
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`OSES’ argument is based on a newly presented claim interpretation of the term
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`“lock.” There was no need for the Board to interpret this term in its institution
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`decision and there is no need to interpret the term now. The ’053 patent itself
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`defines the term “lock” to include hydraulic force applied to hold a mandrel in an
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`operative position. This definition is used twice in the ’053 patent, once to
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`describe the second disclosed embodiment of the ’053 alleged invention and once
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`to describe the tool of Dallas ’851, which is the U.S. equivalent of Dallas ’118, (the
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`“’118/851 tool”).
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`The second embodiment of the ’053 patent includes hydraulic piston 84 and
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`integral mandrel 72 (shown in red) and cylinder 74 (shown in green) in annotated
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`Fig. 7, below.
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`The ’053 specification explains that hydraulic fluid is pumped into port 88 at
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`the top of cylinder 74 to apply force P2 to piston 84 thereby moving the piston and
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`integrally connected mandrel 72 downwardly to seal the mandrel bottom against
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`3
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`Petitioner Reply
`fixed point 24. ’053 patent, 8:21-27. “The mandrel 72 is locked down in its
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`operative position by the hydraulic force P2.” ’053 patent, 8:30-31(emphasis
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`added).
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`The ’053 specification also refers to the operation of the hydraulic cylinder of
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`U.S. Pat. No. 5,819,851 (which is the same as the operation of Dallas ’118).
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`Annotated Fig. 3 of the ’851 patent and Dallas ’118 is shown below with the
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`cylinder 12 (in green) and the piston 30 with the integral mandrel 28, mandrel
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`extension 58 and packoff assembly 68 (in red).
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`Dallas ’851 and Dallas ’118 disclose that pressurized fluid is injected through
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`port 44 at the top of cylinder 12 and drained from the second port 46 at the bottom
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`of the cylinder. Dallas ’118, 000015:23-26. The pressurized fluid strokes the
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`mandrel 28, mandrel extension 58 and mandrel packoff assembly 68 down until the
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`mandrel is packed off against a bit guide. Dallas ’118, 000016:31-000017:3. This
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`structure is “used to hydraulically lock the mandrel in an operative position”
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`(emphasis added). ’053 patent, 2:48-51.
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`Moreover, Mr. Dallas represented in the ’053 patent that as of its filing date in
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`August, 1999, the ’118/’851 tool, which “locks” the mandrel in the operative
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`position was “widely accepted in the industry” and “very convenient for securing a
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`mandrel of a well tool in the operative position requiring fixed-point packoff in the
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`well.” ’053 patent, 2:58-62. Similarly, in his U.S. Patent 6,289,993 (Ex. 1012),
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`which was filed in June, 1999, Mr. Dallas proclaimed that the ’118/’851 tool “has
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`been readily accepted by the industry and has been proven to be an effective tool
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`which reduces the cost of well stimulation treatments while enabling an ultimate
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`choice of treatment options.” Dallas ’993 patent, 1:56-59.
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`Moreover, Mr. Dallas represented to the Canadian Patent Office that the
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`’118/’851 tool was being used in Canada in 1999. See Ex. 1026, Dallas ’118 File
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`History, 00069. Mr. Max Wood, inventor Dallas’ Canadian patent agent
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`confirmed that the representations made to the Canadian Patent Office came
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`directly from Mr. Dallas. Ex. 1010, Wood Dep., 57:15-58:24.
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`Having failed to disclose any prior art wellhead isolation tool with a fixed point
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`packoff during the prosecution of the ’053 patent and faced with the reality that his
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`own application, Dallas ’118, anticipates claims 1 and 22, inventor Dallas, who
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`sold his company to OSES for $103M and is now a paid employee of OSES,
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`suddenly changed course and for the first time avers that after he built the
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`’118/’851 tool in 1997, “over the course of the next several months, it quickly
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`became apparent that this BOP protector did not function as intended and was not
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`suitable for use in multistage fracking operations.” Ex. 2013, Decl. of Murray
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`Dallas, ¶ 7. Mr. Dallas’ current position is in direct conflict with his
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`representations to the U.S Patent and Trademark Office and Canadian Patent
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`Office in 1999, almost two years after Mr. Dallas purportedly determined that the
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`tool would not work. Mr. Dallas’ litigation induced revisionist history should be
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`rejected and disregarded in this IPR procedure.
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`III. Dallas ’118 is Enabling
`OSES’ argument that Dallas ’118 does not enable one skilled in the art to
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`“lock” a mandrel in the operation position misinterprets the law of enablement and
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`must fail regardless of the veracity of Mr. Dallas’ revisionist history.
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`“Patent law in general is not concerned with the performance of an invention,
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`let alone its satisfactory performance.” Bayer AG v. Schein Pharm., Inc., 301 F.3d
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`1306, 1325 (Fed. Cir. 2002). For a reference to be enabling, it is not necessary for
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`the reference to disclose a device that is commercially viable. See CFMT, Inc. v.
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`YieldUp Int’l Corp., 349 F.3d 1333, 1340 (Fed. Cir. 2003) (“In general, few
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`patented inventions are an immediate commercial success. Rather, most inventions
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`require further development to achieve commercial success. Thus, additional
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`inventive work does not alone show nonenablement.”). It is sufficient to show that
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`the device actually and mechanically performs, though only in a crude way.
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`Hildreth v. Mastoras, 257 U.S. 27, 34 (1921) (“The machine patented may be
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`imperfect in its operation; but if it embodies the generic principle and works . . . it
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`is enough.”); Decca Ltd. v. United States, 544 F.2d 1070, 1077 (Ct. Cl. 1976)
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`(“The mere fact that the system has some drawbacks, or that under certain
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`postulated conditions it may not work . . . does not detract from the operability of
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`the disclosed equipment to perform its described function.”).
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`There is no evidence that the ’118/’851 tool did not meet the requirements of
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`the claimed goals of claims 1 and 22 of the ’053 patent. The preambles of the
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`claims require, respectively, “an apparatus for securing a mandrel of a well tool in
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`an operative position requiring fixed-point packoff in the well” and “a method for
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`lockdown of a mandrel of a well tool in an operative position in which the mandrel is
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`packed off against a fixed-point in the well.” Instead, OSES’s criticisms of the
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`’118/’851 tool are directed at the tool’s performance at higher well pressures.
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`However, the claims contain no limitation concerning well pressure. See CFMT,
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`Inc. v. YieldUp Int’l Corp., 349 F.3d 1333, 1339-40 (Fed. Cir. 2003) (claim
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`enabled when the specification taught a system or apparatus that met the claimed
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`goal of the preamble).
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`Petitioner Reply
`The only evidence regarding the ’118/’851 tool is testimony from Mr. Dallas.
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`Mr. Dallas admitted that his understanding of the operation of the ’118/’851 tool
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`came from his field managers. Ex. 1008, Dallas 3/13/14 Dep., 160:16-161:9. Mr.
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`Dallas also admitted that the ’118/’851 tool was designed for lower pressure
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`applications and worked for those applications: “it would be fine on low pressure,
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`small valve, low stroke applications . . . .” Dallas 3/13/14 Dep., 160:10-11.
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`However, the stroke length of the 1997 tool was inadequate for higher pressure
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`applications: “The ’851 patent -- or the ’851 tool that’s mentioned in that patent
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`just would not do that type of work, so we had to -- because of stroke length,
`because of the limitation to the -- to the tube.” Dallas 3/13/14 Dep., 160:2-6. In
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`fact, Mr. Dallas’ company built and used two of the tools. Ex. 1009, Dallas
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`10/28/14 Dep., 109:15-111:9. Clearly, the ’118/851 tool worked for its intended
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`application and was able to secure a mandrel of a well tool in an operative position
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`requiring fixed-point packoff. Edwards Lifesciences AG v. CoreValve, Inc., 699
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`F.3d 1305, 1309 (Fed. Cir. 2012) (“the enablement requirement is met if the
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`description enables any mode of making and using the invention.”).
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`On cross examination by OSES, Greene’s expert, Mr. Shackelford, testified that
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`a tool based on the teachings of the Dallas ’851/’118 tool could be readily designed
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`to function in higher pressure applications by an appropriate selection of the
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`geometry of the components: “I think it’s something that would be measured in
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`Petitioner Reply
`hours for that particular component because the tool would have been designed for
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`a known working pressure and specified for a known working pressure, which then
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`would -- would allow suitable geometry in the hydraulic system so that it would
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`always have a net downward force holding the seal in place.” Shackelford Dep.,
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`Ex. 2015, 79:14-20.
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`In his declaration, OSES’ expert, Dr. Wooley, provided conclusory and
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`conjectural testimony on why the ’118/’851 tool may not have worked properly in
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`high pressure applications. Ex. 2012, Wooley Response Decl., ¶¶ 85-108.
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`However, Dr. Wooley never focused on the disclosure of Dallas ’118/’851 nor did
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`he refute Mr. Shackelford’s testimony that a tool could be built for higher pressure
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`applications with an appropriate selection of the geometry of the hydraulic system.
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`The evidence is clear that Dallas ’118 would enable one of ordinary skill in the
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`art in 1997 to “lock” a mandrel in position as called for in claims 1 and 22 of the
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`’053 patent, especially since claims 1 and 22 have no pressure limitations.
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`IV. The Second Lockdown Mechanism May Use Hydraulic Pressure
`OSES argues that the second lockdown mechanism of claims 1 and 22 should
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`be interpreted to operate without hydraulic pressure. OSES is wrong for at least
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`three reasons.
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`First, OSES’ suggested interpretation would exclude the embodiment of Figs.
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`5-8 which, as discussed above, is disclosed as using hydraulic pressure to “lock”
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`Petitioner Reply
`the mandrel in the operative position. An interpretation that excludes an
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`embodiment of the invention is presumed to be incorrect. See GE Lighting
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`Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1311 (Fed. Cir. 2014) (“where
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`claims can reasonably be interpreted to include a specific embodiment, it is
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`incorrect to construe the claims to exclude that embodiment, absent probative
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`evidence on the contrary.”).
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`Secondly, OSES proposed construction contradicts dependent claims that
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`actually require the second lockdown mechanism to be a hydraulic cylinder. For
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`example, claim 8, which depends from claims 2 and 1 specifically recites that the
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`second lockdown mechanism must be a hydraulic cylinder. Accordingly, claim 1
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`cannot be interpreted to require the second lockdown mechanism to operate
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`without hydraulic pressure.1 The doctrine of claim differentiation therefore
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`precludes OSES’ suggested interpretation. See Robotic Vision Sys., Inc. v. View
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`Eng’g, Inc., 189 F.3d 1370, 1376 (Fed. Cir. 1999)(“dependent claims . . . are to be
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`construed to incorporate by reference all the limitations of” the independent
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`claim”).
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`Finally, OSES’ claim construction would make other dependent claims that call
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`for a mechanical locking mechanism in addition to the hydraulic cylinder
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`1 The same analysis applies to claim 24, which depends from claim 22 and requires
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`the second lockdown mechanism to be a hydraulic cylinder.
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`Petitioner Reply
`superfluous and indefinite. For example, claim 10, which depends from claim 8
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`goes on to recite that the second lockdown mechanism includes a “mechanical
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`locking mechanism” to ensure the mandrel is maintained or secured in the
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`operative position in the event that the fluid pressure is lost. OSES’ proposed
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`construction of claim 1 would read on the same structure as claim 10 and would
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`render claim 10 superfluous2. See Comark Commc’ns, Inc. v. Harris Corp., 156
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`F.3d 1182, 1187 (Fed. Cir. 1998) (“Finally, as the district court correctly pointed
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`out, Harris’s proposed construction of claim 1 would violate the doctrine of claim
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`differentiation by rendering claim 2 superfluous. While we recognize that the
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`doctrine of claim differentiation is not a hard and fast rule of construction, it does
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`create a presumption that each claim in a patent has a different scope.”).
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`V. Claims 1 and 22 Do Not Recite a Setting Tool
`OSES also argues that claims 1 and 22 should be construed to include a “setting
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`tool” and that the second lockdown mechanism should be construed as “separate
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`from the setting tool.”
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`OSES does not define the term “setting tool” other than inferentially as “the
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`portion of the overall structure that moves the mandrel down through the wellhead
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`2 The same analysis applies to dependent claims 26 and 25, which depend from
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`claim 24 and call for a mechanical locking mechanism to secure the mandrel in the
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`event hydraulic fluid is lost.
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`Petitioner Reply
`toward the operative position.” Patent Owner Response, p. 29. In connection with
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`Dallas ’851, the ’053 patent uses the term “setting tool” to describe Dallas ’118’s
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`disclosure that hydraulic cylinder 12 and piston 30 are used to move mandrel 28
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`downwardly to pack off in its operative position. ’053 patent, 2:46-58; Ex. 2001,
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`Dallas ’851, 9:52-55. The hydraulic cylinder 80 and piston 84 of the second
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`embodiment of the ’053 patent function in the same manner to move the mandrel
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`22 downward to pack off in an operative position. See ’053 patent, 4:36-42. A
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`comparison of annotated Fig. 7 of the ’053 patent and annotated Fig. 3 of Dallas
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`’851, below, (showing the pistons and integral mandrels in red and the cylinders in
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`green) demonstrates the unmistakable similarity between these structures.
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`Since both structures have essentially the same construction and function, if
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`one is a setting tool, they both are setting tools. Accordingly, OSES’ proposed
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`construction of claims 1 and 22 is contrary to the teaching of OSES’ own patent
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`that the second lockdown mechanism may include a “setting tool” as the term is
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`Petitioner Reply
`used in the ’053 patent.
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`Moreover, as discussed above, dependent claims 10 and 24 actually require
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`the hydraulic cylinder and piston to be part of the second lockdown mechanism
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`and therefore require a “setting tool” to be part of the second lockdown
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`mechanism. For this reason alone, OSES’s proposed construction must be
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`rejected.
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`While the ’053 patent also discloses an embodiment in which the term
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`“setting tool” is applied to an implement that is separate from the second lockdown
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`mechanism and used to position the mandrel at an initial location in the well, (see
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`’053 patent, 7:33-42) there is no teaching that such a device is required as part of
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`the ’053 invention. It is improper to read any limitation from an exemplary
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`embodiment into the claims without a clear and unambiguous disclaimer. Even
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`when the claims are not given their broadest reasonable construction, Federal
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`Circuit precedent requires a disclaimer of a broader interpretation to be clear and
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`unambiguous in the specification. See Thorner v. Sony Computer Entm’t Am. LLC,
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`669 F.3d 1362, 1365 (Fed. Cir. 2012) (“It is not enough for a patentee to simply
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`disclose a single embodiment or use a word in the same manner in all
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`embodiments, the patentee must ‘clearly express an intent’ to redefine the term.”).
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`OSES has made no attempt at such a showing.
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`VI. CONCLUSION
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`Petitioner Reply
`For the foregoing reasons, Petitioner respectfully requests that claims 1 and 22
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`be canceled.
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`Dated: December 1, 2014
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`Respectfully submitted,
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`By:
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`/s/ John J. Feldhaus
`John J. Feldhaus
`Reg. No. 28,822
`Counsel for Petitioner
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`Petitioner Reply
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e)(4)(i), the undersigned certifies that on
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`December 1, 2014, a complete and entire copy of “Petitioner Reply” was provided
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`via email, as previously agreed, to the representatives of the Patent Owner by
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`serving the correspondence email address of record as follows:
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`Erik Hawes
`ehawes@morganlewis.com
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`Archis (Neil) Ozarkar
`nozarkar@morganlewis.com
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`By:
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`/s/John J. Feldhaus
`John J. Feldhaus
`Reg. No. 28,822
`Counsel for Petitioner
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