Greene's Energy Group, LLCv.Oil States Energy Services, L.L.C.Download PDFPatent Trial and Appeal BoardMay 1, 201509338752 (P.T.A.B. May. 1, 2015) Copy Citation Trials@uspto.gov Paper 37 571-272-7822 Entered: May 1, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ GREENE’S ENERGY GROUP, LLC, Petitioner, v. OIL STATES ENERGY SERVICES, LLC, Patent Owner. ____________ Case IPR2014-00364 Patent 6,289,993 B1 __________ Before SCOTT E. KAMHOLZ, WILLIAM A. CAPP, and JAMES A. TARTAL, Administrative Patent Judges. CAPP, Administrative Patent Judge. FINAL WRITTEN DECISION 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 IPR2014-00364 Patent 6,289,993 B1 2 Petitioner Greene’s Energy Group, LLC (“Greene”) filed a Petition (Paper 5, “Pet.”) requesting an inter partes review of claims 1–13, 27, and 30–32 of U.S. Patent No. 6,289,993 B1 (Ex. 1001, the “’993 patent”). We instituted an inter partes review of claims 1–13, 27, and 30–32 of the ’993 patent. Paper 11. After institution of trial, Patent Owner Oil States Energy Services, LLC (“Oil States”) filed a Patent Owner Response (Paper 17, “PO Resp.”) and Greene filed a Reply (Paper 23, “Reply”). This case is before the Board for a Final Written Decision following an Oral Hearing on the merits conducted February 11, 2015, the transcript for which is entered as Paper 36 (“Tr.”). After considering the evidence and arguments of counsel and for the reasons set forth below, we determine that Greene has NOT met its burden of showing, by a preponderance of the evidence, that claims 1–13, 27, and 30–32 of the ’993 patent are unpatentable. I. BACKGROUND A. State of the Art Prior to the Patented Invention This case involves oil field wellhead technology. More particularly, it relates to an apparatus for protecting wellhead blowout preventers during well fracturing and stimulation procedures. Ex. 1001, 1:5–10. Oil well hydraulic fracturing (“fracking”) entails pumping abrasive and/or corrosive fluid into a well. Ex. 2012, ¶¶ 16–27. These abrasive and corrosive fluids are pumped into the well at pressures up to 15,000 pounds per square inch. Id. In order to protect blow out preventers in the wellhead during fracking operations, a length of tubing (“mandrel”) is inserted through the wellhead. Ex. 2012, ¶¶ 24–28. Such prior art tools extended IPR2014-00364 Patent 6,289,993 B1 3 through the wellhead and down into the casing. Id. On account of differences in diameter between the outside of the mandrel and inside of the well casing and in view of the high fluid pressures used during fracking, a seal or “pack-off assembly,” was positioned between the mandrel and the casing. Id. For purposes of this decision, wellhead protection tools where the mandrel is smaller in diameter than the casing and where the mandrel extends down through the wellhead and into the casing, shall be referred to herein as “Casing Saver” type systems. Casing Saver type systems could be used readily on wellheads of different heights. Ex. 1001, 2:8–37. This is attributable to the fact that the lower end of the mandrel could pack-off at an indeterminate point below the top of the casing. Id. Thus, if the wellhead equipment was relatively short, the mandrel simply would extend further into the casing before packing off. Conversely, if the wellhead equipment was taller, the mandrel would not extend as far into the casing. One disadvantage of the Casing Saver system is that the internal diameter of the mandrel is narrower than the casing and, therefore, also narrower than the diameter of downhole tools, such as perforating guns and plug setting tools. Ex. 2012 ¶ 28. Thus, when downhole tools need to be inserted into the well, the Casing Saver mandrel must be removed and, then, after insertion, use, and removal of the downhole tools, the Casing Saver must be re-installed. Id. An early attempt to develop a wellhead protector system with a mandrel of substantially equal diameter to the production casing was U.S. Patent No. 4,076,079 to Herricks, et al. (Ex. 1003), discussed further below. IPR2014-00364 Patent 6,289,993 B1 4 Herricks packed off at a fixed point, namely, at a beveled edge inside of a tubing spool above the production casing. Ex. 1003, Figs. 1, 2. B. The ’993 Patent (Ex. 1001) The ’993 patent, titled “Blowout Preventer Protector and Setting Tool,” relates to an apparatus and method for protecting a blowout preventer from exposure to high fluid pressures as well as abrasive and corrosive fluids. Ex. 1001, claims 1, 27. The claimed apparatus has a mandrel that is inserted down through the blowout preventer of a wellhead. Id. at 2:62–64. The bottom end of the mandrel has an annular seal that engages the top of a well casing. Id. at 2:64–67. A mechanical lockdown mechanism secures the mandrel to the blowout preventer. Id. at 3:1–3. The lockdown mechanism facilitates a secure seal between the mandrel and the well casing. Id. at 3:3–6. Figures 1 and 2 of the ’993 patent are reproduced below. Figures 1 and 2 of the ’993 patent show the lockdown mechanism in a locked (Figure 1, left) and unlocked (Figure 2, right) position. Annular IPR2014-00364 Patent 6,289,993 B1 5 seal 66 is depicted at the lower end of mandrel packoff assembly 62. An embodiment of the invention provides for a range of vertical adjustment to accommodate variation among the heights of various wellheads. Ex. 1001, 3:18–21. An embodiment of the invention is designed to packoff by engaging a bit guide at the top of a casing. Id. at 3:30–36. One advantage of this design is the provision of sufficient diameter to allow for full access to the casing with downhole tools. Id. at 5:48–50; Abstract. C. Challenged Claims Petitioner challenges claims 1–13, 27, and 30–32. Claim 1 is reproduced below: 1. An apparatus for protecting a blowout preventer from exposure to fluid pressures, abrasives and corrosive fluids used in a well treatment to stimulate production, comprising: a mandrel adapted to be inserted down through the blowout preventer to an operative position, the mandrel having a mandrel top end and a mandrel bottom end, the mandrel bottom end including an annular sealing body for sealing engagement with a top of a casing of the well when the mandrel is in the operative position; and a mechanical lockdown mechanism for detachably securing the mandrel to the blowout preventer, the lockdown mechanism being adapted to ensure that the annular sealing body is securely seated against the top of the casing when the mandrel is in the operative position. IPR2014-00364 Patent 6,289,993 B1 6 D. The Asserted Grounds of Unpatentability Petitioner challenges claims 1–13, 27, and 30–32 of the ’993 patent as obvious under 35 U.S.C. § 103 over the references listed in the table below, as further supported by the Declaration of Don W. Shackelford (Ex. 1002). 1 Reference(s) Claims challenged Herricks 2 and McLeod 3 1–5, 12, 13, 27, 30, and 32 Herricks, McLeod, CCR, 4 and Durometer 5 6–10 Herricks, McLeod, and McLeod ’488 6 11 and 31 II. CLAIM INTERPRETATION In an inter partes review, claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Technologies, LLC, 778 F.3d 1271, 1279 (Fed. Cir. 2015). Under the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning as would be understood by one of 1 We also instituted a trial based on anticipation under 35 U.S.C. § 102 by Herricks. Paper 11, 19. Greene announced at the oral hearing that it abandoned this ground. Tr. 36, 99:4-8. 2 US 4,076,079, issued Feb. 28, 1978 (Ex. 1003). 3 US 4,632,183, issued Dec. 30, 1986 (Ex. 1004). 4 COMPOSITE CATALOG OF OIL FIELD EQUIPMENT AND SERVICES, (42nd ed. 1996-97) (Ex. 1006, “CCR”). 5 Petitioner’s reference that appears to be a publication of Weaver Industries, Inc. related to durometers for urethane (Ex. 1007, “Durometer”). 6 US 4,993,488, issued Feb. 19, 1991 (Ex. 1005). IPR2014-00364 Patent 6,289,993 B1 7 ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). 7 1. “bit guide,” “top of a case of the well,” “annular sealing body” In our Decision to Institute, we gave the following terms constructions that we apply for purposes of this Decision. Paper 11, 7–10. Term Construction “bit guide” structure that caps and protects the top end of the casing. “top of a case of the well” the uppermost limit of the well casing string corresponding to the point of attachment of the well casing to separately identifiable structure disposed above a well casing string such as a casing head, BOP stack, or wellhead. “annular sealing body” structure surrounding the circumference of the mandrel for facilitating a fluid tight seal. Neither party requested or proposed modifications to the foregoing constructions in their respective Patent Owner’s Response and Petitioner’s Reply. PO Resp. 11-14; Reply 8-9. Based on the record adduced during trial, we discern no reason to modify or further discuss the above listed constructions and we adopt them as the broadest reasonable interpretation. 2.“mechanical lockdown mechanism” In our Decision to Institute, we construed the term “mechanical lockdown mechanism” on a preliminary basis, to mean “machinery for maintaining [the mandrel] in a fixed position.” Paper 11, 11. Oil States takes issue with our preliminary construction. PO Resp. 12. Although 7 Citing Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). IPR2014-00364 Patent 6,289,993 B1 8 neither party proposed constructions in their Petition and Preliminary Response, the parties now offer the following competing constructions for purposes of the trial. Oil States: a mechanism configured to provide a broad range of adjustment for maintaining the mandrel in a fixed position without the use of hydraulic pressure. PO Resp. 14. Greene: omit “configured to provide a broad range of adjustment” from Oil States’ proposed construction. Pet. Reply 11. A claim construction analysis begins with, and is centered on, the claim language itself. See Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001). In claim 1, the mechanical lockdown mechanism secures the mandrel to the blowout preventer. Ex. 1001, claim 1. In claim 27, the mechanical lockdown mechanism engages to lock the mandrel in the operative position. Id. claim 27. Thus, the lockdown mechanism “secures” the mandrel to the blowout preventer and “locks” the mandrel in the operative position. The parties do not dispute that a “lockdown mechanism” maintains the mandrel in a fixed position during a fracking or well treatment operation. Thus, we will construe “lockdown mechanism” to mean “machinery for maintaining [the mandrel] in a fixed position during a fracking or well treatment operation.” This leaves us to determine what it means for a lockdown mechanism to be “mechanical” and whether the correct construction requires imposing a further definitional limitation regarding a range of adjustment. IPR2014-00364 Patent 6,289,993 B1 9 Oil States points out that the Specification differentiates a mechanical mechanism from hydraulic mechanisms. PO Resp. 12. The Specification distinguishes the instant invention from an earlier invention by the same inventor that discloses a hydraulic unit. Ex. 1001, 2:28–63. The Specification further states that: a mechanical lockdown mechanism for securing the BOP protector mandrel in an operative position is considered more reliable because a source of pressurized hydraulic fluid is not required. Id. at 2:3–6; see also id. at 3:53–56. Greene does not challenge that this language in the Specification effectively differentiates a mechanical lockdown mechanism from a hydraulic mechanism. Thus, we construe “mechanical” lockdown mechanisms as being limited to purely mechanical means such as nuts and bolts and the like. We further clarify that the principal holding force that maintains the mandrel in a fixed position is not a dynamic force such as through hydraulic, pneumatic, or electrical means or the like. We now turn our attention to Oil States’s contention that we should include a “broad range of adjustment” limitation in the definition. Claim terms generally are construed in accordance with the ordinary and customary meaning that they would have to one of ordinary skill in the art in light of the specification and the prosecution history. Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1329 (Fed. Cir. 2012). The Federal Circuit imposes a stringent standard for narrowing a claim term beyond its ordinary and customer meaning. Id. (citing Thorner v. Sony Computer Entm’t Am. L.L.C., 669 F.3d 1362 (Fed. Cir. 2012)). IPR2014-00364 Patent 6,289,993 B1 10 With respect to Oil States’s proposed construction including a “broad range of adjustment” limitation, the Specification states that the variation in height among wellheads cannot be accommodated by a conventional lockdown mechanism. Ex. 1001, 6:43–60. Furthermore, Oil States contends that the mechanical lockdown mechanism in McLeod, comprised of lock ring 60 and screw collar 62, lacks a broad range of adjustment. PO Resp. 23; See Ex. 1004, 3:12–14, Fig. 2. Oil States directs our attention to embodiments in the Specification that disclose a broad range of adjustment. PO Resp. 13. In accordance with the invention, the mechanical lockdown mechanism 12 is configured to provide a broad range of adjustment to compensate for variations in the distance from the top of the BOP 74 to the top end 40 of the mandrel 28. The complementary spiral threads 22, 24 (FIG. 1) on the respective integral sleeve 20 and lockdown nut 18 having a length adequate to provide the required compensation. Id., quoting Ex. 1001, 6:61–67. Oil States argues that its use of the words “the invention” in the foregoing passage evinces an intent to limit the scope of the term mechanical lockdown mechanism to the preferred embodiments described above and shown in Figures 4 and 5 of the ’993 patent. PO Resp. 14. In appropriate circumstances not present here, a statement in a specification that describes the invention as a whole can support a limiting construction of a claim term. See American Piledriving Equip. Inc. v. Geoquip, Inc., 637 F.3d 1324, 1334 (Fed. Cir. 2011); C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 864 (Fed. Cir. 2004). Use of the phrase “the invention,” however, does not limit the scope of the entire invention where other portions of the intrinsic evidence do not support applying the limitation IPR2014-00364 Patent 6,289,993 B1 11 to the entire patent. See Absolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121, 1136 (Fed. Cir. 2011). An inventor must evince a clear intention to limit the claim terms to a specification embodiment. Trading Tech. Int’l, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1353 (Fed. Cir. 2010). We examine other claims to detect any contrary intention. Id. Claim 1 contains the following limitation: the lockdown mechanism being adapted to ensure that the annular sealing body is securely seated against the top of the casing when the mandrel is in the operative position. Ex. 1001, claim 1. Claim 2,which depends from claim 1, contains the following limitation: the base member having a central bore to permit the insertion of the mandrel down through the blowout preventer and an elongated spiral thread for adjustably engaging a complementary thread of a lockdown nut which is adapted to lock the mandrel in the operative position. Ex. 1001, claim 2. Claim 3, which depends from claim 2, contains the following limitation: the elongated spiral thread and the complementary thread of the lockdown nut have respective axial lengths adequate to compensate for variations in a distance between a top of the blowout preventer and the top of the casing of different wellheads to permit the mandrel to be secured in the operative position even if a length of the mandrel is not precisely matched with a particular wellhead. Ex. 1001, claim 3. Oil States’s effort to read a “broad range of adjustment” limitation into the definition of mechanical lockdown mechanism in claim 1 renders the dependent limitation in claim 3 superfluous. Claim 2 claims an elongated spiral thread. There is no need to add a further limitation to claim 3 to provide for adjustment to compensate for variations in the IPR2014-00364 Patent 6,289,993 B1 12 distance between a top of the blowout preventer and the top of the casing of different wellheads if a “broad range of adjustment” is already contemplated in the meaning of mechanical lockdown mechanism. 8 It is well-settled that each claim does not necessarily cover every feature disclosed in the specification. See Ventana Med. Sys., Inc. v. Biogenex Labs, Inc., 473 F.3d 1173, 1181 (Fed. Cir. 2006). When a claim addresses only some of the features disclosed in the specification, it is improper to limit the claim to other unclaimed features. Id. Here, Oil States’s inclusion of adjustment limitations in claims 2 and 3 belie an intention to limit the scope of the term “mechanical lockdown mechanism” in claim 1 to mechanisms that provide a broad range of adjustment. 9 Thus, we decline to adopt Oil States’s proposed construction. We construe a “lockdown mechanism” to mean “machinery for maintaining [the mandrel] in a fixed position.” In the context of lockdown mechanisms, we construe the adjective “mechanical” to mean that the lockdown mechanism is limited to purely mechanical means such as nuts and bolts and the like so that the principal holding force that maintains the mandrel in a fixed position 8 In the Summary of the Invention section of the Specification, the topic sentence of the paragraph describing an embodiment with a “significant range of adjustment,” qualifies the description of such embodiment with the word “preferably.” Ex. 1001, 3:8–27. This suggests that this passage of the Specification merely describes one embodiment and not the entire invention. 9 To the extent that claim 1 requires the mechanical lockdown mechanism to have any range of adjustment, such adjustment requirement may be found in the claim limitation directed to the lockdown mechanism being “adapted to ensure that the annular sealing body is securely seated against the top of the casing when the mandrel is in the operative position” and not in definition of “mechanical lockdown mechanism” per se. IPR2014-00364 Patent 6,289,993 B1 13 is not a dynamic force such as through hydraulic, pneumatic, or electrical means or the like. III. OBVIOUSNESS ANALYSIS A patent is invalid for obviousness if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. 35 U.S.C. § 103. Obviousness is a question of law based on underlying factual findings: (1) the scope and content of the prior art; (2) the differences between the claims and the prior art; (3) the level of ordinary skill in the art; and (4) objective indicia of nonobviousness. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966). Courts must consider all four Graham factors prior to reaching a conclusion regarding obviousness. Eurand, Inc. v. Mylan Pharms., Inc. (In re Cyclobenzaprine Hydrochloride Extended–Release Capsule Patent Litig.), 676 F.3d 1063, 1076–77 (Fed. Cir. 2012). As the party challenging the patentability of the claims at issue, Greene bears the burden of proving obviousness by a preponderance of the evidence. 35 U.S.C. § 316(e). A. Scope and Content of the Prior Art Oil States does not dispute that Greene’s cited references fall within the scope and content of the prior art. IPR2014-00364 Patent 6,289,993 B1 14 1. Herricks (1003) Herricks discloses a full bore fracture treating assembly. Ex. 1003, Abstract, Fig. 2. Herricks includes a modified tubing hanger that isolates blowout preventers on the well from high pressure during fracking treatment of the well. Id. Figure 2 of Herricks is shown below. As shown in Figure 2, modified tubing hanger 20 is installed integrally with section casing 21. Id. at 3:4–5. Tubing hanger 20 seals in tubing spool 30 to prevent fracture fluid from affecting the blowout preventers. Id. at 3:13–15. IPR2014-00364 Patent 6,289,993 B1 15 Herricks provides full bore access into a well casing during fracture treatment of the well by using a tubing hanger of substantially the same inner diameter as the casing in the well. Id. at 1:40–54. 2. McLeod (Exhibit 1004) McLeod discloses a drive system for inserting a mandrel and a packoff nipple through a set of valves into the area of the casing head. Ex. 1004, 1:63–65. The drive system allows fluids to be pumped through a wellhead without contacting the internal parts of the well tree. Id. at 1:65– 68. Figures 2 and 3 of McLeod are reproduced side-by-side below. IPR2014-00364 Patent 6,289,993 B1 16 Figure 2 of McLeod depicts mandrel tube 14 with nipple 16 on the lower end thereof inserted into casing head 10. Id. at 2:1–10. Figure 3 of McLeod depicts lower beam 18 rigidly attached to sleeve 20. Id. at 2:9–15. As shown in Figure 3, adapter 21 is secured to the wellhead valve tree at flange 23, and nut 25 secures the tree saver to adapter 21. Id. Offset precision screws 22 are secured to beam 18 by nuts 24. Id. at 2:15–17. An upper beam is located parallel with lower beam 18 and retains mandrel 14, top remote valve 28 and a pair of jack assemblies 30 and 32. Id. at 2:18–21. Motor 34 drives screw gear 38 causing beam 26 to move downward lowering mandrel 14 into the valve assembly. Id. at 2:28–41. A manually operated crank 44 can be used to lower the mandrel into position if motor failure should occur. Id. Once the mandrel has been lowered into its desired position, lock ring 60 engages screw collar 62 to lock the mandrel in place. Id. at 3:10–13. B. Differences Between the Prior Art and the Claimed Invention 1. Mechanical lockdown mechanism – Herricks Greene initially contended that the mechanical lockdown feature was inherently present in Herricks. Pet. 16. Greene has abandoned that position and now relies on McLeod as disclosing a mechanical lockdown mechanism. Tr. 98:1–99:8. 2. Mechanical lockdown mechanism – McLeod McLeod discloses a mechanical lockdown mechanism comprised of lock ring 60 and screw collar 62. See Ex. 1004, 3:10–14; Fig. 3. As an alternative theory, Greene proposes that the mechanical lockdown mechanism of claims 1–3 read on the elongated spiral threaded shafts 22 IPR2014-00364 Patent 6,289,993 B1 17 and 122 and complementary threaded nuts 38, 148 of McLeod. Pet. 31, citing Ex. 1004, 2:49–3:9. This alternative theory lacks merit. The recited shafts 22 and 122 are used to lower the mandrel into position. Ex. 1004, 2:28–41. Although McLeod’s screw jacks are described as “self-locking,” this feature is described as an operational mode that is used in the event that motive force used to operate them ceases to function. Id. 1:33–39. Greene presents no persuasive evidence that tends to show that the forces involved in maintaining the screw jack assemblies in position in the event of power failure are remotely similar to the forces involved in maintaining the mandrel in the operative position during a well treatment operation. We, therefore, are not persuaded that a person of ordinary skill in the art would view the screw jacks as a “mechanical lockdown mechanism” as we have construed the term. In other words, there is insufficient evidence that the self-locking screw jacks can maintain the mandrel in a fixed position during a fracking or well treatment operation. See Section II, 2, supra. 10 3. Sealing engagement with a top of a casing of the well Oil States contends that Herricks does not disclose a mandrel that forms a “sealing engagement with a top of a casing of the well.” PO Resp. 18. Greene directs our attention to Figure 1 of Herricks which, according to Greene, shows a mandrel, comprised of tubing 6 and tubing hanger 5, that seals against beveled edge 9 in tubing spool 8. Pet. Reply 3. Concerning Figure 1, described as prior art, Herricks states that tubing 10 Indeed, if McLeod’s screw jacks could function as a lockdown mechanism, there would be no need for the lock ring 60 and screw collar 62 locking mechanism. Id. at 3:10–14; Fig. 3. IPR2014-00364 Patent 6,289,993 B1 18 hanger 5 seals in tubing spool 8 along beveled edge 9 to prevent harmful effects of the fracture fluid on the blowout preventer. Ex. 1003, 2:32–37. Oil States argues that the Figure 2 embodiment of Herricks involves a “modified” tubing hanger 20 and that Herricks only describes that sealing occurs somewhere in the tubing spool 30, but does not specifically describe where or how that happens. PO Resp. 19. Excerpts from Figures 1 and 2 of Herricks depicting the respective bottom portions thereof are shown below. Excerpts from the bottom portions of Figures 1 and 2 of Herricks are shown side-by-side above, with the excerpt from Figure 1 on the left and the excerpt from Figure 2 on the right. In Figure 1, the tubing hanger is called out as element 5, whereas in Figure 2, the modified tubing hanger is called out as element 20. Ex. 1003, 2:34, 3:4–5. In Figure 1 the lower end of the tubing hanger 5 exhibits a beveled edge that is called out as element 9. Id. at 2:35. A corresponding beveled edge is depicted on the lower end of modified tubing hanger 20, but it is not called out separately as a numbered IPR2014-00364 Patent 6,289,993 B1 19 element in the Figure. See Fig. 2. In Figure 1, the tubing spool is called out as element 8, whereas in Figure 2, the tubing spool is called out as element 30. Id. at 2:35, 3:14. Given the similarity in the respective portions of the two drawings, we agree with Greene that a person of ordinary skill in the art would have understood that when Herricks discloses that tubing hanger 20 seals in tubing spool 30, the sealing takes place along the beveled edge at the lower end of modified tubing hanger 20. In view of the foregoing, we reject Oil States’s position that there is a difference between Herricks and the claimed invention with regard to the claim limitation directed to a sealing engagement with a top of a casing of the well. 4. Annular sealing body securely seated against the top of the casing Oil States argues that neither Herricks nor McLeod discloses any type of mechanism that is “adapted to ensure that the annular sealing body is securely seated against the top of the casing when the mandrel is in the operative position” within the meaning of claim 1. PO Resp. 22. Oil States argues that Herricks fails to disclose an annular sealing body that seals against the top of the casing. PO Resp. 19. Oil States further argues that Herricks fails to disclose a mechanical lockdown mechanism that is “adapted to ensure that the annular sealing body is securely seated against the top of the casing when the mandrel is in the operative position.” PO Resp. 19–20. 11 We disagree with Oil States regarding whether Herricks discloses an annular sealing body that seals against the top of the casing. See Section 3 11 Greene has abandoned its contention that Herricks discloses a mechanical lockdown mechanism. Tr. 99:4–8. IPR2014-00364 Patent 6,289,993 B1 20 supra. We also find that Herricks’s lockdown mechanism, although not necessarily mechanical, is adapted to ensure that the annular sealing body is seated securely against the top of the casing when the mandrel is in the operative position. Ex. 1003, 1:63–64; 2:34–36; 3:13–15; 3:47–52 (claim 1); 3:66–4:4 (claim 2). With respect to McLeod, we agree with Greene that McLeod’s lock ring 60 and screw collar 62 form a lockdown mechanism to hold a mandrel in place. Pet. 25. Greene, however, fails to persuade us that McLeod’s mechanism is adapted to ensure that the annular sealing body is seated securely against the top of the casing when the mandrel is the operative position. When McLeod’s mandrel is in its operative position, McLeod’s seal is beneath the top of the casing. See Ex. 1004, Fig. 2, nipple element 16; Ex. 2012, Figure 5.4, p. 51. 5. Adjustability of mechanical lockdown mechanism (Claims 2 and 3) 12 Claim 2 contains a limitation directed to an elongated spiral thread for adjustably engaging a lockdown nut. Ex. 1001, Claim 2. Claim 3 further requires that the spiral thread has an axial length adequate to compensate for variations in distance between the top of the blowout preventer and top of the casing. Id. at Claim 3. 12 While the discussion in this section is directed primarily to the dependent limitations in claims 2 and 3, it is also pertinent to the parties’ contentions with respect to whether Greene’s mechanical lockdown mechanism (lock ring 60 and screw collar 62) is “adapted to ensure that the annular sealing body is securely seated against the top of the casing when the mandrel is in the operative position” within the meaning of claim 1. See Section III.B.4 above. IPR2014-00364 Patent 6,289,993 B1 21 Greene contends that, since McLeod’s lock ring and screw collar each have more than one thread, this allows for variation between the distance between the top of the blowout preventer and top of the casing. Pet. 30. Greene cites no language from McLeod’s specification that purports to teach that the lock ring and screw collar provide for a range of adjustment. On cross-examination, Greene’s expert, Mr. Shackelford, conceded that McLeod contains no express disclosure of adjustability. PO Resp. 23, Ex. 2013, 60:8–63:1. McLeod states that once mandrel tube 114 has been lowered to its desired position, lock ring 60 threadably engages screw collar 62 to lock the mandrel in place. Ex. 1004, 3:10–14. In other words, the spiral threads are provided so that lock ring and screw collar can engage and lock the mandrel in place. We agree with Oil States that there is no express teaching that the threads are elongated sufficiently to both: (1) engage and lock the mandrel in place; and also (2) provide an engagement that is “adjustable.” McLeod does not pack off at a fixed location, such as the top of the casing. In using McLeod, variations in the distance between the top of the blowout preventer and the top of the casing are accommodated by the fact that McLeod’s mandrel is designed to extend below the top of the casing for an indeterminate distance into the casing. See Ex. 1004, Fig. 2. Thus, we agree with Oil States that one of the differences between McLeod and the claimed invention is the height adjustability of the lockdown mechanism. 6. bit guide Oil States identifies the “bit guide” limitation in claim 30 as a difference between the prior art and the claimed invention. PO Resp. 24. IPR2014-00364 Patent 6,289,993 B1 22 Greene identifies the beveled edge in Figure 2 of Herricks corresponding to the beveled edge 9 in Figure 1 of Herricks as satisfying the bit guide limitation. Pet. Reply 4. On cross-examination, Oil States’s expert, Dr. Wooley, conceded that a beveled, machined edge on the inside of a tubing head spool functions as a bit guide. Ex. 1009, 111:2–11. In view of Dr. Wooley’s testimony, we reject Oil States’s contention that Herricks fails to disclose a bit guide. C. Level of Ordinary Skill in the Art Greene’s Petition does not define a level of ordinary skill in the art. Green’s expert, Mr. Shackelford, opines that the person of ordinary skill in the art at the time of the invention of the ’993 patent would have had a Bachelor-level degree in a recognized engineering discipline and practical job exposure of several years with oil and gas well operations. Ex. 1002 ¶ 13. Mr. Shackelford’s testimony is entirely conclusory with no supporting factual analysis. Oil States contends that the level of ordinary skill in the art is “relatively low,” but does not articulate or explain what it means by this characterization. PO Resp. 22. Oil States’s expert, Dr. Wooley, merely adopts Mr. Shackelford’s position and, like Mr. Shackelford, fails to provide any supporting factual analysis. Merely reciting a college degree and a number of years of experience provides little guidance as to the actual capabilities of a person of ordinary skill in the art. Neither party presents a detailed evidentiary showing under the factors recited in Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). 13 13 Factors pertinent to a determination of the level of ordinary skill in the art include: (1) educational level of the inventor; (2) type of problems IPR2014-00364 Patent 6,289,993 B1 23 Notwithstanding the scant evidence on skill level presented by the parties, the level of skill in the art can often be determined from a review of the prior art. See Litton Indus. Products, Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985). Based on our review of the prior art, the applicable field of endeavor is oil and gas well operation. The person of ordinary skill in this field would have been generally familiar with fracking procedures. Ex. 1003, 1:1–33. The person of ordinary skill in the art would have also had some familiarity with the relative advantages and disadvantages of using hydraulic mechanisms and other mechanical drive mechanisms to lower a mandrel into the operative position for fracking procedures. Ex. 1004, 1:7–42. The person of ordinary skill in the art would have also had some familiarity with the relative advantages and disadvantages of using hydraulic means and mechanical means to maintain the mandrel in its operative position under the high fluid pressures associated with fracking procedures. Id. D. Secondary Considerations of Non-Obviousness Evidence of secondary considerations of non-obviousness, when present, must always be considered en route to a determination of obviousness. Cyclobenzaprine Hydrochloride, 676 F.3d at 1075–76. The absence of secondary considerations, however, is a neutral factor. See Custom Accessories, Inc., Jeffrey-Allan Industries, Inc., 807 F.2d 955, 960 encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology, and (6) educational level of workers active in the field. Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. Ltd., Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). IPR2014-00364 Patent 6,289,993 B1 24 (Fed. Cir. 1986). Neither party introduced evidence on secondary considerations of non-obviousness. Consequently, we will focus our attention on the first three Graham factors. E. Whether the Prior Art Could Have Been Combined or Modified to Achieve the Claimed Invention. The parties dispute whether the combination of Herricks and McLeod together disclose all of the limitations of claims 1 and 27. As previously discussed, we find that neither Herricks nor McLeod individually disclose a mechanical lockdown mechanism that is adapted to ensure that the annular sealing body is securely seated against the top of the casing when the mandrel is in the operative position as required by claim 1. Similarly, we agree with Oil States that neither Herricks nor McLeod expressly teach engaging a mechanical lockdown mechanism to lock a mandrel in the operative position as required by claim 27. 14 This, however, does not end our inquiry as obviousness does not require the prior art to teach expressly each limitation exactly. See Beckson Marine, Inc. v. NFM, Inc., 292 F.3d 718, 727 (Fed. Cir. 2002). Here, Greene proposes that Herricks and McLeod can be combined to satisfy the above stated limitations. Pet. 25–27, 41–43. A claim can be obvious even where all of the claimed features are not found in specific prior art references, where there is a showing of a reason to modify the teachings of the prior art to achieve the claimed invention. See Randall Mfg. v. Rea, 733 F.3d 1355, 1361–62 (Fed. Cir. 2013); see also Broadcom Corp. v. Emulex Corp. 732 F.3d 1325, 1334 (Fed. Cir. 2013). For this reason, “we do not 14 In claim 27, the “operative position” is one “in which the annular sealing body is in fluid sealing engagement with a top of a casing of the well.” Ex. 1001, Claim 27. IPR2014-00364 Patent 6,289,993 B1 25 ignore the modifications that one skilled in the art would make to a device borrowed from the prior art.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007). The Supreme Court instructs courts to take an expansive and flexible approach in determining whether a patented invention was obvious at the time it was made. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007). Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. KSR, at 418. A reason to combine may be found explicitly or implicitly in market forces; design incentives; the “interrelated teachings of multiple patents”; “any need or problem known in the field of endeavor at the time of invention and addressed by the patent”; and the background knowledge, creativity, and common sense of the person of ordinary skill. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328–29 (Fed. Cir. 2009) (quoting KSR, 550 U.S. at 418–21). In the instant case, Greene’s proposed combination retains the features of Herricks on the lower portion of the wellhead including the mandrel, tubing hanger, and tubing spool. Pet. 22–23. On the upper portion of the wellhead, Greene uses McLeod’s screw jack mandrel insertion tool and McLeod’s lock ring and screw collar. Id. Greene relies on lock ring 60 and screw collar 62 to lock the mandrel into the operative position during IPR2014-00364 Patent 6,289,993 B1 26 fracking procedures. Pet. 25 citing Ex. 1004, 3:10–13. 15 Greene relies on Mr. Shackelford’s testimony to support the proposed combination. Pet. 25; Ex. 1002 ¶ 48. 16 Greene contends that a person of ordinary skill in the art would have been motivated to combine Herricks and McLeod to achieve the patented invention. Pet. 19–20. Essentially, Greene contends that the ’993 patent demonstrates nothing more than the predictable use of prior art elements according to their established functions. Id. citing KSR. Also, Greene relies on the principle that if a technique has been used to improve one device and a person of ordinary skill would recognize that it would improve a similar device in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Id. Greene contends that combining McLeod’s insertion tool with Herricks’s wellhead and mandrel produces the predictable result of safely inserting Herricks’s mandrel to allow Herricks’s annular sealing body to seal against tubing spool 30. Pet. 20. 15 For reasons previously discussed, we reject Greene’s alternative theory that McLeod’s screw jacks constitute a mechanical locking mechanism as claimed. 16 In its Petitioner’s Reply, Greene attempts to bolster Mr. Shackelford’s testimony concerning the combinability of Herricks with McLeod with a new expert declaration by Mr. Perkin. Pet. Reply; Ex. 1010 ¶¶ 45–55. Greene did not seek Board approval to submit supplemental information on this issue and Greene does not explain why Mr. Perkin’s testimony was not submitted contemporaneously with its Petition. Greene otherwise offers no explanation as to why it needed to augment Mr. Shackelford’s testimony with overlapping and redundant testimony from Mr. Perkin. We decline to entertain and consider this untimely evidence. 37 C.F.R. § 42.23(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (A Reply that belatedly presents new evidence will not be considered). IPR2014-00364 Patent 6,289,993 B1 27 Oil States challenges Greene’s proposed combination, among other things, on the basis that neither reference discloses any type of mechanism that is adapted to ensure that the annular sealing body is seated securely against the top of the casing when the mandrel is in the operative position. PO Resp. 22. On cross-examination, Oil States elicited testimony from Greene’s expert, Mr. Shackelford, that McLeod’s lock ring and screw collar would need to be modified before McLeod could compensate for variations in a distance between a top of the blowout preventer and the top of the casing of different wellheads. PO Resp. 23, Ex. 2013, 60:8–63:1. Oil States argues further that there is nothing in McLeod to suggest such a modification, because changing the length of the threads on McLeod’s lock ring and screw collar or only partially screwing the ring and collar together would not affect the location of the bottom of the mandrel. PO Resp. 23. Oil States’s expert, Dr. Wooley, testifies a person of ordinary skill in the art would have had no reason to modify the lock ring and screw collar of McLeod, because McLeod’s tool was designed to seal inside the casing. Ex. 2012 ¶ 129. We agree with Greene that the screw drive system of McLeod could be used to lower Herricks’s mandrel into the operative position, a point that is conceded by Dr. Wooley. Ex. 1009, 91, 91:13–92:5. That does not also mean, however, that McLeod’s lock ring and screw collar are “adapted” to ensure that the annular sealing body is “securely seated” against the top of the casing when the mandrel is in the operative position. Ex. 1001, Claim 1. Whether a mechanical locking mechanism is adapted to ensure that a mandrel is securely seated at a fixed packoff point, such as a bit guide at the top of the casing, requires consideration of the length of the mandrel and the IPR2014-00364 Patent 6,289,993 B1 28 corresponding distance between the top of the wellhead and the fixed packoff point. The Background of the Invention section of the ’993 patent describes the problem to be solved by Oil States’s invention: U.S. Pat. No. 4,867,243 . . . describes an apparatus to permit the injection of fluids, gases, solid particles or mixtures thereof through a well tree while protecting the well tree during well stimulation treatments. . . . The apparatus permits the insertion of a single length of high pressure tubing through any well tree regardless of its height. . . . The bottom end of the high pressure tubing has a packoff nipple assembly which is inserted into the production tubing or casing and seals against the inner wall. The extent to which the high pressure tubing extends into the production tubing or casing is unimportant so long as the packoff nipple assembly is sealed against the inner wall. Consequently, variations in the length of the production tree are of no consequence and a lockdown mechanism with a short reach is adequate. Ex. 1001, 2:10–37 (emphases added). In other words, the length of the production tree is of no consequence when the mandrel does not packoff at a fixed point. The problem with using mechanical lockdown mechanisms with mandrels designed for fixed point packoff at the top of the well casing, however, is that there are variations in the length of production trees. Id. Thus, if the mandrel is shorter than the production tree, the mandrel will not reach the top of the casing to form a seal. If the mandrel is longer than the production tree, the corresponding components of the mechanical locking mechanism, such as a lock ring and screw collar, may not engage to hold the mandrel in position under the high fluid pressures used in fracking procedures. Rather than solve the problem identified by Oil States in the Background of the Invention section, McLeod is emblematic of the problem itself. As with the ’243 patent mentioned in the Background of the IPR2014-00364 Patent 6,289,993 B1 29 Invention section, McLeod’s nipple packs off at an indeterminate point inside the casing. Ex. 1004, Fig. 2. This is the precise situation described in the Background of the Invention section of the ‘993 patent where “variations in the length of the production tree are of no consequence and a lockdown mechanism with a short reach is adequate.” Ex. 1001, 2:35–38. McLeod merely states that: once the tube 114 has been lowered to its desired position a lock ring 60 threadably engages a screw collar 62 to lock the tree saver mandrel tube 114 in place. Ex. 1004, 3:10–14. There is no clear teaching in McLeod that its mandrel tube can be locked securely in place by only partially engaging the lock ring and screw collar, a point conceded by Greene’s expert. Ex. 2013, 60:8–63:1. Accordingly, we find that McLeod’s lock ring and screw collar have sufficient corresponding threads for holding its mandrel in fixed position at an indeterminate packoff point during fracking, but without any range of adjustment to accommodate for variations in the height of the production tree. Without providing any range of adjustment to accommodate variations in the height of the production tree, it is not adapted to ensure that the mandrel is securely seated against the top of the casing if used with a system designed for fixed point packoff. Greene argues that a range of adjustment can be found in McLeod if the lock ring and screw collar are screwed down only partially. Pet. Reply 12–13. This argument is not persuasive. Greene’s argument relies, in part, on an inference taken from the respective figures in McLeod and the ’993 patent. Id. The drawings do not support such an inference. “Patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent IPR2014-00364 Patent 6,289,993 B1 30 on the issue.” Go Medical Industries Pty., Ltd. v. Inmed Corp., 471 F.3d 1264, 1271 (Fed. Cir. 2006) quoting Hockerson–Halberstadt, Inc. v. Avia Group Int'l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000). Greene cites no teaching in McLeod that a mandrel can be held securely in place during fracking if the lock ring and screw collar are less than fully engaged. We find that a person of ordinary skill in the art would not derive from McLeod a teaching that McLeod discloses a range of adjustment for its mechanical lockdown mechanism through partial engagement of the lock ring and screw collar. In its Reply, Greene asserts, for the first time, that a person of ordinary skill in the art would have known to use additional threads in McLeod if greater adjustability was desired. Pet. Reply, 13. Greene supports this new theory of unpatentability with declaration testimony from Mr. Perkin. Id., Ex. 1010 ¶ 55. We will not consider a new argument for unpatentability raised for the first time in a Reply. See 37 C.F.R. § 42.23(b). Likewise, we will not consider new evidence submitted for the first time in a Reply. Id., see also Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (A Reply that belatedly presents new evidence will not be considered). The existence of a reason for a person of ordinary skill in the art to combine references is a question of fact. In re Constr. Equip. Co., 665 F.3d 1254, 1255 (Fed. Cir. 2011). Greene fails to persuade us that a person of ordinary skill in the art would have had reason to combine Herricks and McLeod to achieve the invention claimed in claims 1 and 27 of the ’993 patent. Because the mechanical lockdown mechanism in McLeod is intended to be used with a mandrel that packs off at an indeterminate point IPR2014-00364 Patent 6,289,993 B1 31 in the casing, rather than at a fixed point and, therefore, does not disclose any range of adjustment to accommodate production trees of varying heights as would be necessary to be operable in systems designed for fixed point packoff, the proposed combination does not provide a mechanical lockdown mechanism that is adapted to securely seat a mandrel against the top of the casing as required by claim 1. Similarly, the proposed combination does not provide a method for engaging the mechanical lockdown mechanisms to lock the mandrel in the operative position such that the annular sealing body is in fluid sealing engagement with a top of a casing of the well as required by claim 27. F. Ultimate Conclusion of Obviousness After considering all of the underlying factual considerations, the ultimate conclusion of obviousness is a question of law. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1359 (Fed. Cir. 2007). “[T]he great challenge of the obviousness judgment is proceeding without any hint of hindsight.” Star Scientific, Inc., v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1375 (Fed. Cir. 2011). All things considered, it is our opinion that Greene has failed to carry its burden of proof that claims 1 and 27 of the ’993 patent are unpatentable as obvious over Herricks and McLeod. Modifying Herricks by combining it with McLeod does not result in an apparatus for protecting a blowout preventer that has a mechanical lockdown mechanism adapted to ensure that the annual sealing body is securely seated against the top of the casing when the mandrel in the operative position. It necessarily follows that Greene has failed to establish that dependent claims 2–5, 12, 13, 30, and 32 are unpatentable as obvious. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) IPR2014-00364 Patent 6,289,993 B1 32 (dependent claims are nonobvious if the independent claims from which they depend are nonobvious). Claims 6–10 depend, directly or indirectly, from claim 1. Greene relies on CCR (Ex. 1006) and Durometer (Ex. 1007) to satisfy the dependent limitations. However, Greene makes no persuasive showing that CCR and Durometer cure the deficiencies that we have observed with Herricks and McLeod with respect to claim 1. Thus, it is our opinion that Greene has failed to carry its burden of proof that claims 6–10 are unpatentable as obvious. Similarly, claim 11 depends directly from claim 1 and claim 31 depends directly from claim 27. Claims 11 and 31 each add respective limitations directed to the use of mandrel extension sections. Greene relies on the McLeod ’488 reference (Ex. 1005) to satisfy the dependent limitations of claims 11 and 31. However, Greene makes no persuasive showing that McLeod ’488 cures the deficiencies that we have observed with Herricks and McLeod with respect to claims 1 and 27. Thus, it is our opinion that Greene has failed to carry its burden of proof that claims 11 and 31 are unpatentable as obvious. IV. ORDER In view of the foregoing, it is: ORDERED that claims 1–13, 27, and 30–32 of U.S. Patent No. 6,289,993 B1 have not been shown to be unpatentable; This is a final decision. Parties to the proceeding seeking judicial review of the decision must comply with the notice and service requirements of 37 C.F.R. § 90.2. IPR2014-00364 Patent 6,289,993 B1 33 Petitioner: John Feldhaus jfeldhaus@foley.com Andrew Cheslock acheslock@foley.com Patent Owner: C. Erik Hawes ehawes@morganlewis.com Archis Ozarkar nozarkar@morganlewis.com Copy with citationCopy as parenthetical citation