Final Written Decision (Motion to Amend) IPR2014-00216


Takeaway: Arguing that a prior art reference is not enabling because the apparatus disclosed in the reference does not work about half the time is likely to be unpersuasive.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that claims 1 and 22 of the ’053 patent are unpatentable. The Board also denied Patent Owner’s Motion to Amend.

The ’053 patent relates to “an apparatus and method for securing a mandrel of a well tool in an operative position in which the mandrel is packed off against a fixed-point in a well.” Petitioner challenged claims 1 and 22 on the ground of anticipation based on Dallas.

The Board began with claim construction, stating that terms are given their plan and ordinary meaning as understood by a person of ordinary skill in the art in light of the specification. The Board first addressed Patent Owner’s arguments that the term “second lockdown mechanism” would be understood to be “1) mechanical, and 2) separate from a setting tool.”

The Board disagreed, finding that the “second lockdown mechanism” is neither limited to being a mechanical apparatus nor limited to being separate from a setting tool. In particular, the Board held that Patent Owner’s proposed construction limiting the term to a mechanical apparatus was not consistent with the way in which the term was used in the claims and the specification. In addition, with respect to the proposal that the term be limited to being separate from a setting tool, the Board stated that “setting tool” does not appear in the claims and refused to import limitations from the specification.

The Board then addressed Patent Owner’s two proposals that “lock” be defined as “(1) ‘the mandrel does not move away from the operative position during the normal course of operation,’ and (2) ‘to ensure that the mandrel is safely secured in the operative position to prohibit the displacement of the mandrel during a well treatment to stimulate production.’” The Board held that the parties did not show that the term “lock” was “used in the ’053 patent in any way other than its ordinary and customary manner,” and therefore construed the term to mean “to make fast or immovable, as by engaging parts.”

Turning to the instituted ground of anticipation by Dallas, the Board explained that an anticipatory reference must disclose every claim element and “enable one skilled in the art to make the anticipating subject matter.” An enabling disclosure requires that the prior art “teach one of ordinary skill in the art to make or carry out the claimed invention without undue experimentation.”

The Board was persuaded that the Dallas reference discloses every element of the challenged claims, finding Patent Owner’s arguments unpersuasive and contrary to the Board’s claim constructions. Patent Owner asserted that Dallas was not enabling, arguing that although “the tool described in Dallas ’118 was used in operation,” the tool “failed approximately 50% of the time” for a variety of reasons. Therefore, Patent Owner concluded, a person of ordinary skill in the art would have required undue experimentation to practice the claimed invention based on the disclosure of Dallas. First, the Board found that Patent Owner’s arguments were premised upon its failed claim construction position for the term “locked.” Second, the Board found the argument unsupported by the evidence because the record showed that not only was the Dallas reference enabling, but the tool disclosed in Dallas was also made and used. In fact, Patent Owner conceded that the tool of Dallas worked approximately 50% of the time.

Having found the challenged claims unpatentable, the Board next turned to Patent Owner’s Motion to Amend. Patent Owner alleged that two added features in the proposed substitute claims were novel: “(1) a removable setting tool, separate from the first and second lockdown mechanisms, arranged to insert the mandrel through the wellhead; and, (2) a mechanical second lockdown mechanism that operates without the use of hydraulic power.”

The Board found that Patent Owner had not shown sufficient written description support for the substitute claims. In particular, Patent Owner had merely provided “string citations with no discussion of how the cited disclosures pertain to the additional claim language,” which is insufficient to demonstrate support.

In addition, the Board found that Patent Owner had not provided the requisite claim construction for the added limitations. In particular, the Board noted that the new term “wellhead assembly” was problematic because the term “wellhead,” alone, appeared in the claim, and it was unclear how the two terms differed. In addition, no construction was provided for “setting tool” even though the district court in the related litigation “had previously suggested the term ‘setting tool’ was ‘ambiguous’” in its claim construction order. Because Patent Owner failed to provide claim constructions for the proposed claims, it had not shown “a patentable distinction of each proposed substitute claim over the prior art.”

Greene’s Energy Group, LLC v. Oil States Energy Services, LLC, IPR2014-00216
Paper 53: Final Written Decision
Dated: May 1, 2015
Patent: 6,179,053
Before: Scott E. Kamholz, William A. Capp, and James A. Tartal
Written by: Tartal