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`Paper No. ________
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`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: January 30, 2001
`Title: LOCKDOWN MECHANISM FOR WELL TOOLS REQUIRING FIXED-
`POINT PACKOFF
`_______________
`
`Inter Partes Review No. Unassigned
`____________________________________________________________
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET. SEQ.
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`i
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`

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`Inter Partes Review No.: Unassigned
`Petition For Inter Partes Review
`US. Patent No. 6,179,053
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`TABLE OF CONTENTS
`
`NOTICE OF LEAD AND BACKUP COUNSEL ...............................................................1 
`NOTICE OF EACH REAL-PARTY-IN-INTEREST .........................................................1 
`NOTICE OF RELATED MATTERS ..................................................................................1 
`NOTICE OF SERVICE INFORMATION ..........................................................................1 
`GROUNDS FOR STANDING ............................................................................................1 
`STATEMENT OF PRECISE RELIEF REQUESTED ........................................................2 
`THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW ....................................2 
`STATEMENT OF REASONS FOR RELIEF REQUESTED .............................................3 
`
`I. 
`
`II. 
`
`III. 
`
`IV. 
`
`Introduction to the Technology of the '053 patent ...............................................................3 
`
`Independent Claim 1 of the '053 Patent ...............................................................................5 
`
`Construction of the Claims ................................................................................................12 
`i. 
`Legal Overview.........................................................................................12 
`ii. 
`“operative position” (Claims 1 and 22) ..................................................13 
`iii. 
`“fixed-point packoff” (Claim 1) “fixed-point for packoff” / “fixed-
`point in the well”/ “fixed-point” (Claim 22) ..........................................13 
`“first lockdown mechanism” (Claims 1 and 22)....................................14 
`“second lockdown mechanism” (Claims 1 and 22) ...............................19 
`Order of Certain Steps in Method Claim 22 .........................................22 
`
`iv. 
`v. 
`vi. 
`
`Claim-By-Claim Explanation of Grounds for Unpatentability ..........................................23 
`Ground 1. 
`Claims 1 and 22 are invalid as obvious over Dallas in view of McLeod. .23 
`i. 
`Introduction to the Dallas Reference .....................................................23 
`ii. 
`Introduction to the McLeod Reference: Adapters ................................25 
`iii. 
`Reasons to Combine Dallas with McLeod .............................................26 
`iv. 
`Combination of Dallas with McLeod .....................................................28 
`Ground 2. 
`Claims 1 and 22 are invalid as anticipated in view of Dallas. ...................41 
`Ground 3. 
`Claims 1 and 22 are invalid as obvious over Herricks in view of Dellin. .47 
`i. 
`Introduction to the Herricks Reference .................................................48 
`ii. 
`Introduction to the Dellinger Reference ................................................49 
`iii. 
`Reasons to Combine Herricks with Dellinger .......................................52 
`iv. 
`Combination of Herricks with Dellinger ...............................................53 
`
`CONCLUSION ..............................................................................................................................60 
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`ii
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`

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`Inter Partes Review No.: Unassigned
`Petition For Inter Partes Review
`US. Patent No. 6,179,053
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`
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`EXHIBIT LIST
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`
`Exhibit
`Ex. #
`1001 U.S. Pat. No. US 6,179,053 (“‘053 Patent”)
`1002 Declaration of Mr. Don Shackelford
`1003 Canadian Pat. Appl. 2,195,118 (“Dallas”)
`1004 U.S. Pat. No. 4,632,183 (“McLeod”)
`1005 U.S. Pat. No. 4,076,079 (“Herricks”)
`1006 U.S. Pat. No. 2,927,643 (“Dellinger”)
`1007 Declaration of John J. Feldhaus
`
`
`
`
`iii
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`

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`Inter Partes Review No.: Unassigned
`Petition For Inter Partes Review
`US. Patent No. 6,179,053
`
`
`
`
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`NOTICE OF LEAD AND BACKUP COUNSEL
`Lead Counsel: John Feldhaus (Reg. No. 28,822) Tel: 202.672.5403
`
`Backup Counsel: Andrew R. Cheslock (Reg. No. 68,577); Tel: 202.945.6009
`
`Address: Foley & Lardner LLP, 3000 K Street NW, Suite 600,
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`Washington, DC 20007. Fax: 202.672.5399
`
`NOTICE OF EACH REAL-PARTY-IN-INTEREST
`
`The real-parties-in-interest for this Petition is Greene’s Energy Group LLC.
`
`NOTICE OF RELATED MATTERS
`The ‘053 patent is asserted in Oil States energy Service, L.L.C., et al. v.
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`Greene’s Energy Group, LLC, Civil Action No.: 6:12-CV-611 (E.D. Tex).
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`NOTICE OF SERVICE INFORMATION
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`Please address all correspondence to the lead counsel at the address shown
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`above. Petitioner also consents to electronic service by email at:
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`jfeldhaus@foley.com and acheslock@foley.com
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`
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`GROUNDS FOR STANDING
`Petitioner hereby certifies that the patent for which review is sought is available
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`for inter partes review and that the Petitioner is not barred or estopped from
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`requesting an inter partes review challenging the patent claims on the grounds
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`identified in the petition.
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`1
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`

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`Inter Partes Review No.: Unassigned
`Petition For Inter Partes Review
`US. Patent No. 6,179,053
`
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`
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`STATEMENT OF PRECISE RELIEF REQUESTED
`
`The Petitioner respectfully requests that claims 1 and 22 of U.S. Patent No.
`
`6,179,053 (“the ‘053 patent”)(Ex. 1001) be canceled based on the following
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`grounds of unpatentability, explained in detail (including relevant claim
`
`constructions) in the next section.
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`Ground 1. Claims 1 and 22 are invalid under § 103(a) over Dallas (Ex. 1003)
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`in view of McLeod (Ex. 1004).
`
`Ground 2. Claims 1 and 22 are invalid under § 102(b) over Dallas.
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`Ground 3. Claims 1 and 22 are invalid under § 103(a) over Herricks (Ex.
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`1005) in view of Dellinger (Ex. 1006).
`
`THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW
`A petition for inter partes review must demonstrate "a reasonable likelihood
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`that the petitioner would prevail with respect to at least 1 of the claims challenged
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`in the petition". 35 U.S.C. § 314(a). The Petition meets this threshold. Each of the
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`elements of claims 1 and 22 of the ‘053 patent are taught in the prior art as
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`explained below in the proposed grounds of unpatentability. Additionally, the
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`reasons to combine are established for each ground under 35 U.S.C. § 103(a).
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`2
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`Inter Partes Review No.: Unassigned
`Petition For Inter Partes Review
`US. Patent No. 6,179,053
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`STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`I.
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`Introduction to the Technology of the '053 patent
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`The ‘053 patent is directed to wellhead isolation tools used during “stimulation
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`to enhance hydrocarbon flow and make or keep [oil and gas wells] economically
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`viable” (See Ex. 1001, col. 1, ll. 15-16). Such stimulation is more commonly
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`referred to as oil and gas well “fracking.” The “fracking” process involves
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`pumping fluids, sometimes corrosive and abrasive, under high pressure through a
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`well to enhance hydrocarbon flow. (See Ex. 1001, col. 1, ll. 14-20). The fracking
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`fluids “can cause irreparable damage to wellhead equipment if they are pumped
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`directly through the spool and the various valves that make up the wellhead.” (See
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`Ex. 1001, col. 1, ll. 21-23).
`
`As further explained in the ‘053 patent, known wellhead isolation tools can be
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`used to avoid the potential damage to the wellhead. Such tools include a
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`“mandrel” inserted through the valves and spools of the wellhead into a casing or
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`production tubing below the wellhead to isolate the wellhead components from
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`fracking fluids. (See Ex. 1001, col. 1, ll. 26-30). The bottom of the “mandrel” has
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`a “packoff” assembly that forms a fluid tight seal between the mandrel and the
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`production tubing or casing so that stimulation fluids passed through the mandrel
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`into the tubing or casing are completely isolated from the wellhead components.
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`(See Ex. 1001, col. 1, ll. 32-36).
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`3
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`Inter Partes Review No.: Unassigned
`Petition For Inter Partes Review
`US. Patent No. 6,179,053
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`The ‘053 patent explains that the mandrel and packoff assembly of prior
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`wellhead isolation tools limited the flow rate of stimulation fluids because the
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`mandrel had a reduced inner diameter to permit the mandrel to be packed off inside
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`the tubing or casing. (See Ex. 1001, col. 1, ll. 43-47). The ‘053 patent describes a
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`solution allegedly developed by the Applicant in which the mandrel is sealed
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`against an annular step such as a “bit guide” mounted to the top of a casing or an
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`annular step above the back pressure valve threads of a tubing hanger, which forms
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`a “fixed-point” for packoff of the mandrel. (See e.g., Ex. 1001, col. 1, ll. 47-67
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`(explaining advantage of avoiding internal packoff); col. 2, ll. 34-45 (explaining
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`“bit guide” embodiment)). According to the ‘053 patent, this arrangement may
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`permit the internal diameter of the mandrel to be the same as that of the tubing or
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`casing. (See e.g., Ex. 1001, col. 1, ll. 62-67). The ‘053 patent does not describe or
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`identify any prior art tool or disclosure with such a “fixed point” packoff.
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`Turning now to the ‘053 patent’s disclosed wellhead isolation tool, it has a
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`mandrel with a seal on its axial end to packoff, i.e. seal, against the top of an
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`annular step in a wellhead (“fixed-point” packoff). An annotated version of Fig. 8
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`is provided on the following page to demonstrate the ‘053 patent’s wellhead
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`isolation tool used in a “fracking” process of an oil or gas well (annotations in blue
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`and red).
`
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`4
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`

`

`Inter Partes Review No.: Unassigned
`Petition For Inter Partes Review
`US. Patent No. 6,179,053
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`The following explanation of independent claim 1 provides further details of the
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`
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`components generally shown in annotated Fig. 8.
`
`Independent Claim 1 of the '053 Patent
`
`II.
`This introduction to independent claim 1 is supported by the Declaration of Mr.
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`Don Shackelford (“Expert Dec.”) attached as Exhibit 1002, at ¶¶ [27-38].
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`Claim 1 reads as follows (bolded terms will be construed later in section III):
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`1. An apparatus for securing a mandrel of a well tool in an operative
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`position requiring fixed-point packoff in the well, comprising:
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`a first and a second lockdown mechanism arranged so that the
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`mandrel is locked in the operative position only when both the first
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`5
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`

`

`Inter Partes Review No.: Unassigned
`Petition For Inter Partes Review
`US. Patent No. 6,179,053
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`and the second lockdown mechanism are in respective lockdown
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`positions;
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`the first lockdown mechanism adapted to detachably maintain the
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`mandrel in proximity to the fixed-point packoff when in the
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`lockdown position, the first lockdown mechanism including a base
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`member for connection to a wellhead of the well and a locking
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`member for detachably engaging the base member; and
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`the second lockdown mechanism having a range of adjustment
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`adequate to ensure that the mandrel can be moved into the operative
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`position and locked down in the operative position while the first
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`lockdown mechanism is in the lockdown position.
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`The apparatus of claim 1 includes a mandrel and “first” and “second”
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`“lockdown” mechanisms for positioning the mandrel in an operative position,
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`which is a position that requires the mandrel be packed off or sealed at “a fixed-
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`point in the well.” (Ex. 1001, Claim 1 (preamble)). Each of the claimed “first” and
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`“second” “lockdown mechanisms” recite and require a function that the mandrel is
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`locked in the operative position at the fixed point “only” when both the first and
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`the second lockdown mechanisms are in respective lockdown positions.
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`6
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`

`

`Inter Partes Review No.: Unassigned
`Petition For Inter Partes Review
`US. Patent No. 6,179,053
`
`
`
`
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`Beginning with the “first lockdown mechanism”, it is defined by the functional
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`recitation: “adapted to detachably maintain the mandrel in proximity to the fixed-
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`point packoff when in the lockdown position” and includes “a base member for
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`connection to a wellhead of the well and a locking member for detachably
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`engaging the base member.” The ‘053 specification explains one embodiment of a
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`structure that carries out the claimed functions of the “first lockdown mechanism
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`20” with reference to Fig. 1, reproduced directly below. (See Ex. 1001, col. 5, ll.
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`31-34).
`
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`The specification explains that the first lockdown mechanism includes “a
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`
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`mandrel head 26 connected to a top end of the mandrel 22 and a base plate 28
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`mounted to a top of a well head, which is indicated by line 30.” (Ex. 1001, col. 5,
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`ll. 43-45). The mandrel head is attached to a connector 44 by bolts 56. (See Ex.
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`
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`7
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`

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`Inter Partes Review No.: Unassigned
`Petition For Inter Partes Review
`US. Patent No. 6,179,053
`
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`1001, col. 6, ll. 14-17). The connector 44 may be attached to the base plate 28 by a
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`
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`lockdown nut 38 that has a top wall 42 for rotatably retaining lower flange 48 of
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`the connector 44. (See Ex. 1001, col. 6, ll. 7-9). Lockdown nut 38 may engage
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`sleeve 32 on the base plate 28 to lock the mandrel head 26 and mandrel 22 to the
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`base plate 28. (See Ex. 1001, col. 6, ll. 1-3 and col. 6, ll. 26-30).
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`A second embodiment of the structure of the “first lockdown mechanism” is
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`shown in Fig. 5, reproduced below.
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`
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`Similar to the Fig. 1 embodiment of a “first lockdown mechanism,” the base
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`plate 28 is attached to the wellhead as indicated by line 30 and also includes
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`threaded sleeve 32, which receives lockdown nut 38. (See Ex. 1001, col. 7, ll. 45-
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`48 and col. 8, ll. 5-8). However, in Fig. 5, the upper wall 42 of nut 38 rotatably
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`receives a lower flange 92 of a hydraulic cylinder 74. (See also Ex. 1001, col. 8, ll.
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`
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`8
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`

`

`Inter Partes Review No.: Unassigned
`Petition For Inter Partes Review
`US. Patent No. 6,179,053
`
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`1-4). A piston 84 is received in the cylinder 74 and is attached to mandrel 72 so
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`
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`that the mandrel moves with the piston. (See also, Ex. 1001, col. 7, ll. 55-62).
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`Hydraulic fluid may be injected into and removed from the cylinder 72 though
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`ports 88 and 90 to move the piston up or down within the cylinder. (See Ex. 1001,
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`col. 7, ll. 58-64).
`
`Each of Figs. 1 and 5 include distances between certain components which
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`demonstrate the function of the “first lockdown mechanism.” In particular, in both
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`embodiments, the distance “D” from the top of the wellhead 30 to the fixed point
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`24 for packoff may vary. In contrast, the distance from the top of the wellhead 30
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`to a top end of the mandrel (22 in Fig. 1 and 72 in Fig. 5) (shown as “d” in Fig. 1)
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`is constant when the mandrel is locked down to the base plate 28 by lockdown nut
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`38. Thus, distance “C” is the distance between the bottom end of the mandrel and
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`fixed point 24 for packoff demonstrating the “first lockdown mechanism” function
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`of “detachably maintain[ing] the mandrel in proximity to the fixed-point packoff
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`when in the lockdown position.”
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`Turning now to the “second lockdown mechanism”, it is defined by the
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`functional limitation: “having a range of adjustment adequate to ensure that the
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`mandrel can be moved into the operative position and locked down in the operative
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`position while the first lockdown mechanism is in the lockdown position.”
`
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`9
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`

`

`Inter Partes Review No.: Unassigned
`Petition For Inter Partes Review
`US. Patent No. 6,179,053
`
`
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`
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`Here again, Fig. 1 discloses one embodiment of a structure that carries out the
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`claimed function of the “second lockdown mechanism.” In particular Fig. 1 shows
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`that a range of adjustment “B” greater than the gap “C” is provided by threaded
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`bolts 56, which have fixed ends attached to upper flange 46 of the connector 44
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`and free ends extending through bores 58 in mandrel head lower flange 54. (See
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`also Ex. 1001, col. 6, ll. 14-19). Fig. 1 illustrates that nuts 60 are attached to the
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`free ends of bolts 56 to secure the mandrel head 26 to connector 44 such that the
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`mandrel can be stroked down against the fixed point for packoff 24. (See Ex. 1001,
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`col. 6, ll. 17-20). In this first embodiment, the bottom of the mandrel may be
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`moved through the distance “C” by screwing the nuts 60 down on the bolts 56 to
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`move the mandrel down on the fixed point for packoff. (See Ex. 1001, col. 6, ll.
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`26-30).
`
`Similarly, a second embodiment of the structure of the “second lockdown
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`mechanism” is illustrated in Fig. 5 which provides the range of adjustment “B” by
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`piston 84 being movable within hydraulic cylinder 74. (See Ex. 1001, col. 7, ll. 56-
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`66). Hydraulic fluid may be injected into upper port 88 of cylinder 74 to force the
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`piston down through distance “B.” (See Ex. 1001, col. 7, ll. 62-66). Fig. 5
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`illustrates that the piston 84 is fixed to mandrel 72. (See also Ex. 1001, col. 7, ll.
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`57-58). Accordingly, the mandrel can be moved through the distance “C” by
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`injecting hydraulic fluid into upper port 88 and releasing hydraulic fluid from
`
`
`
`10
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`

`

`Inter Partes Review No.: Unassigned
`Petition For Inter Partes Review
`US. Patent No. 6,179,053
`
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`lower port 90 which moves the mandrel down against the fixed point for packoff in
`
`
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`the well. (See Ex. 1001, col. 7, ll. 62-66). The mandrel is locked down in its
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`operation by the hydraulic force in the cylinder. (See Ex. 1001, col. 8, ll. 30-31).
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`In the Fig. 5 embodiment, threaded bolts 56 along with nuts 60 provide a measure
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`of safety once the mandrel has been stroked into “operative position” using
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`hydraulic “second lockdown mechanism.” (See Ex. 1001, col. 8, ll. 30-34); (see
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`also Ex. 1001, col. 4, ll. 52-60 (explaining that a hydraulic mechanism alone may
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`be a “second lockdown mechanism”)).
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`Separately, the term “fixed-point packoff” appears in claim 1, but has general
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`no understood meaning in the art of oil or gas wells. Thus, the meaning of this
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`term must be gleaned from the specification. See MPEP § 2111.01.IV (“applicant
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`may be own lexicographer”). The ‘053 patent explains that a packoff assembly
`
`forms a fluid tight seal and that “[t]he fixed-point for packoff may be a bit guide
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`mounted to the top of a casing, as shown in FIG. 8, an annular step above back
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`pressure valve threads of a tubing hanger, as shown in FIG. 9, or any other type of
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`fixed-point location used for packoff in a wellhead, a casing, a tubing or a
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`downhole tool.” (Ex. 1001, col. 5, ll. 34-39). An annotated aspect of Fig. 8
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`(annotation in blue) is reproduced below, which shows “a packoff assembly 94 that
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`is packed-off against a top of a bit guide 96 mounted to a top of a casing” as a
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`“fixed-point packoff.” (Ex. 1001, col. 8, ll. 39-41).
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`11
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`

`

`Inter Partes Review No.: Unassigned
`Petition For Inter Partes Review
`US. Patent No. 6,179,053
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`
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`III.
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` Construction of the Claims
`
`i.
`
`Legal Overview
`
`A claim in inter partes review is given the "broadest reasonable construction in
`
`light of the specification" See 37 C.F.R. § 42.100(b). As stated by the Federal
`
`Circuit in the case In re ICON Health and Fitness, Inc.:
`
`“[T]he PTO must give claims their broadest reasonable
`construction consistent with the specification. Therefore,
`we look to the specification to see if it provides a
`definition for claim terms, but otherwise apply a broad
`interpretation.”
`
`496 F.3d 1374, 1379 (Fed. Cir. 2007).
`
`For the purposes of this proceeding, claim terms are presumed to take on their
`
`broadest reasonable ordinary meaning. In addition to this presumption, Petitioner
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`provides a more detailed explanation of the broadest reasonable meaning of certain
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`of terms present in independent claims 1 and 22 in the subsections below.
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`
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`12
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`

`

`Inter Partes Review No.: Unassigned
`Petition For Inter Partes Review
`US. Patent No. 6,179,053
`
`
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`“operative position” (Claims 1 and 22)
`
`ii.
`
`Claims 1 and 22 explicitly state that an “operative position” is a position
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`“requiring fixed-point packoff in the well” and a position in which “the mandrel is
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`packed off against a fixed-point in the well.” (Ex. 1001, Claims 1 and 22
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`(preamble)). The Specification provides a similar definition in a number of other
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`places. (See Ex. 1001, Abstract; col. 5, ll. 17-22; col. 5, ll. 31-34; col. 7, ll. 33-37;
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`col. 9, ll. 57-62).
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`Accordingly, the proper construction of “operative position” is a position in
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`which “the mandrel is packed off against a fixed-point in the well.” (Expert Dec.,
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`Ex. 1002, ¶ 41). Further, in view of the preambles of claim 1 and 22 providing an
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`explicit definition of “operative position,” Petitioner considers them to be
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`limitations. See MPEP ¶§ 2111.02.
`
`“fixed-point packoff” (Claim 1) “fixed-point for packoff” /
`iii.
`“fixed-point in the well”/ “fixed-point” (Claim 22)
`
`As noted above in section II, it appears that Applicant chose to be its own
`
`lexicographer with regard to the various “fixed-point” and “fixed point packoff”
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`terms that appear in claims 1 and 22. However, an examination of the
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`specification provides an understanding of that term. Initially, it is apparent to one
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`of skill in the art that the term “packoff” or “pack off” in connection with a
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`mandrel refers to a fluid tight sealing arrangement between the mandrel and a well.
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`
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`13
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`

`

`Inter Partes Review No.: Unassigned
`Petition For Inter Partes Review
`US. Patent No. 6,179,053
`
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`(Expert Dec., Ex. 1002, ¶ 42). Further, the ‘053 patent explains that “[t]he fixed-
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`
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`point for packoff may be a bit guide mounted to the top of a casing, as shown in
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`FIG. 8, an annular step above back pressure valve threads of a tubing hanger, as
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`shown in FIG. 9, or any other type of fixed-point location used for packoff in a
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`wellhead, a casing, a tubing or a downhole tool.” (‘053 patent, Ex. 1001, col. 5, ll.
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`34-39).
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`Accordingly, the proper construction of “fixed-point” is “a singular
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`discontinuity in a well where a fluid tight seal must be formed.” (Expert Dec., Ex.
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`1002, ¶ 43).
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`iv.
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`“first lockdown mechanism” (Claims 1 and 22)
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`Below, Petitioner explains why “first lockdown mechanism” is appropriately
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`interpreted as a means-plus-function limitation under 35 U.S.C. § 112(f) (post-
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`AIA), and then provides the corresponding structure and function from the
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`specification.
`
`(1)
`limitation
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`“first lockdown mechanism” is a means-plus-function
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`MPEP § 2181 provides a detailed explanation of the treatment of means-plus-
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`function limitations at the PTO. Starting first with § 2181(I), that section sets forth
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`a three prong test for determining whether 35 U.S.C. § 112(f) (post-AIA) will be
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`applied as follows (MPEP edit marks omitted) (emphasis added):
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`14
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`Inter Partes Review No.: Unassigned
`Petition For Inter Partes Review
`US. Patent No. 6,179,053
`
`
`
`
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`“(A) the claim limitation uses the phrase ‘means for’ or
`‘step for’ or a non-structural term (a term that is
`simply a substitute for the term ‘means for’);
`(B) the phrase ‘means for’ or ‘step for’ or the non-
`structural term must be modified by functional
`language; and
`(C) the phrase ‘means for’ or ‘step for’ or the non-
`structural term must not be modified by sufficient
`structure, material, or acts for achieving the specified
`function.”
`Starting with the first prong (A), “first lockdown mechanism” is such a non-
`
`structural term, and that understanding is further supported by additional guidance
`
`directed to the first prong. See e.g. MPEP § 2181(I)(A) (discussing “mechanism
`
`for”); see also Mass. Instit. of Tech. v. Abacus Software, 462 F.3d 1344, 1354 (Fed
`
`Cir 2006) (“The term ‘mechanism’ standing alone connotes no more structure than
`
`the term ‘means.’”). Also, one of ordinary skill in the art reading the specification
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`would not understand the term “first lockdown mechanism” to simply be the name
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`for the structure that performs the function recited in claims 1 and 22. (Expert
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`Dec., Ex. 1002, ¶¶ 30 and 44); see also MPEP § 2181(I)(A).
`
`Moving next to the second prong (B), the term “first lockdown mechanism” is
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`“modified by functional language.” In particular, in both claims 1 and 22, the
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`“first lockdown mechanism” is modified by the language “adapted to detachably
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`US. Patent No. 6,179,053
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`maintain the mandrel in proximity to the fixed-point packoff when in the lockdown
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`
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`position”1 and “arranged so that the mandrel is locked in the operative position
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`only when both the first and second lockdown mechanisms are in respective
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`lockdown positions.”
`
`Turning now to the third prong (C), the “first lockdown mechanism” is “not []
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`modified by sufficient structure, material, or acts for achieving the specified
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`function.” Rather, the “first lockdown mechanism” is claimed as including a “base
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`member” and “locking member,” which themselves are defined in terms of
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`function rather than structure. As to this third prong, the MPEP further explains
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`that “a non-structural term (e.g., ‘mechanism,’ ‘element,’ ‘member’) coupled with
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`a function may invoke 35 U.S.C. 112, sixth paragraph when it is preceded by a
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`non-structural modifier that does not have any generally understood structural
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`meaning in the art (e.g., ‘colorant selection mechanism,’ ‘lever moving element,’
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`or ‘movable link member’).” § 2181(I)(C); see also Welker Bearing Co. v. PHD,
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`Inc., 550 F.3d 1090, 1096 (Fed. Cir. 2008) (finding a means-plus limitation where
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`“[n]o adjective endow[ed] the claimed ‘mechanism’ with a physical or structural
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`component.”). This is precisely the circumstance presented by the claimed “first
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`lockdown mechanism” and its functional components of a “base member” and
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`
`1 Petitioner notes that claim 22 recites “fixed-point for packoff.”
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`Inter Partes Review No.: Unassigned
`Petition For Inter Partes Review
`US. Patent No. 6,179,053
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`“locking member,” as none of the recited non-structural modifiers have any
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`
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`particular meaning in the oil and gas well art. (Expert Dec., Ex. 1002, ¶¶ 30 and
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`44).
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`Accordingly, the guidance of MPEP § 2181 indicates that the claimed “first
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`lockdown mechanism” should be construed as a means-plus-function limitation in
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`accordance with 35 U.S.C. § 112(f) (post-AIA). See also Welker Bearing, 550
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`F.3d at 1096-97; Mass. Instit. of Tech., 462 F.3d at 1354-55. The Petitioner
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`presents Grounds 1 and 3 of invalidity in view of the correct construction of “first
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`lockdown mechanism” as a means-plus-function limitation.
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`The Patent Owner may, however, argue that the “first lockdown mechanism”
`
`limitation of claims 1 and 22 should not be construed as a means-plus-function
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`limitation. In the event Patent Owner advances such an argument, and the Board
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`agrees, the Petitioner presents Ground 2 of invalidity which relies solely on the
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`broadest reasonable ordinary meaning of “first lockdown mechanism” and its
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`claimed components, when not considered a means-plus-function limitation.
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`(2) Corresponding Structure and Recited Function for
`“first lockdown mechanism”
`
`Turning now to the corresponding structure and recited function of the “first
`
`lockdown mechanism,” MPEP § 2181 also explains the manner in which means-
`
`plus-function claims should be considered under the “broadest reasonable
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`Inter Partes Review No.: Unassigned
`Petition For Inter Partes Review
`US. Patent No. 6,179,053
`
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`interpretation” standard at the PTO. In particular, “the PTO may not disregard the
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`
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`structure disclosed in the specification corresponding to such language when
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`rendering a patentability determination.” MPEP § 2181 (citing In re Donaldson
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`Co, 16 F.3d 1189, 1194-95 (Fed. Cir. 1994)). As such, both the corresponding
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`structure and recited function should be considered under the “broadest reasonable
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`interpretation” standard. See MPEP § 2181(II).
`
`Accordingly, under the “broadest reasonable interpretation” standard and in
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`consideration of the general description of independent claim 1 provided above in
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`section II starting on page 5, the corresponding structure and recited function for
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`the “first lockdown mechanism” limitation should be construed as follows (both
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`claims 1 and 22). (Expert Dec., Ex. 1002, ¶ 45).
`
`Recited Function
`“adapted to detachably maintain the
`mandrel in proximity to the fixed-point
`packoff when in the lockdown position,
`the first lockdown mechanism
`including a base member for
`connection to a wellhead of the well
`and a locking member for detachably
`engaging the base member” (claim 1)
`
`“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
`
`Corresponding Structure
`First Corresponding Structure (all
`numeral references to Fig. 1):
`A base plate 28 with a threaded sleeve
`32, and a lockdown nut 38 with upper
`wall 42, as well as a connector 44 with a
`lower flange 48 rotatably retained by
`upper wall 42 of lockdown nut 38, and
`an upper flange 46 bolted to a mandrel
`head 26 attached to a mandrel 22. (See
`Ex. 1001, Fig. 1, col. 5, l. 66 – col. 6, l.
`17).
`
`Second Corresponding Structure (all
`numeral references to Fig. 5):
`A base plate 28 with a threaded sleeve
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`US. Patent No. 6,179,053
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`base member” (claim 22)
`
`“arranged so that the mandrel is locked
`in the operative position only when
`both the first and the second lockdown
`mechanism are in respective lockdown
`positions” (claim 1 and 22)
`
`
`
`
`
`32, and a lockdown nut 38 with upper
`wall 42, as well a cylinder 74 with a
`lower flange 92 rotatably retained by
`upper wall 42 of lockdown nut 38 and a
`piston 84 in hydraulic cylinder 74
`connected to mandrel 72. (See Ex. 1001,
`Fig. 5, col. 7, l. 48 – col. 8 l. 4).
`
`v.
`
`“second lockdown mechanism” (Claims 1 and 22)
`
`Similar to “first lockdown mechanism,” Petitioner explains why “second
`
`lockdown mechanism” is appropriately interpreted as a means-plus-function
`
`limitation under 35 U.S.C. § 112(f) (post-AIA), and then provides the
`
`corresponding structure and function from the specification.
`
`(1)
`“second lockdown mechanism” (Claims 1 and 22) is a
`means-plus-function limitation
`
`The MPEP three prong test discussed in section III.iv(1) (above) to determine
`
`whether a claimed feature is appropriately considered a means-plus-function
`
`limitation under 35 U.S.C. § 112(f) (post-AIA) will now be applied.
`
`Starting with the first prong (A), “second lockdown mechanism” is such a non-
`
`structural term, and that understanding is also further supported by the additional
`
`guidance directed to the first prong. See e.g. MPEP § 2181(I)(A) (discussing
`
`“mechanism for”). Here again, one of ordinary skill in the art reading the
`
`specification would not understand the term “second lockdown mechanism” to
`
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`Inter Partes Review No.: Unassigned
`Petition For Inter Partes Review
`US. Patent No. 6,179,053
`
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`simply be the name for the structure that performs the function recited in claims 1
`
`
`
`and 22. (Expert Dec., Ex. 1002, ¶¶ 30 and 46); See also MPEP § 2181(I)(A).
`
`Moving next to the second prong (B), the term “second lockdown mechanism”
`
`is “modified by functional language.” In particular, in both claims 1 and 22, the
`
`“second lockdown mechanism” is modified by the language “having a range of
`
`adjustment adequate to ensure that the mandrel can be moved into the operative
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`position and locked down in the operative position while the first lockdown
`
`mechanism is in the lockdown position” and “arranged so that the mandrel is
`
`locked in the operative position only when both the first and second lockdown
`
`mechanisms are in respective lockdown positions.”
`
`Turning now to the third prong (C), the “second lockdown mechanism” is “not
`
`[] modified by sufficient structure, material, or acts for achieving the specified
`
`function.” I