FMC Technologies Inc. v Vetco Gray Inc
[2018] APO 35
•7 June 2018
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
FMC Technologies Inc. v Vetco Gray Inc. [2018] APO 35
Patent Application: 2011265329
Title:Subsea tree workover control system
Patent Applicant: Vetco Gray Inc.
Opponent: FMC Technologies Inc.
Delegate: Dr N. R. Madsen
Decision Date: 7 June 2018
Hearing Date: 29 March 2018 in Canberra
Catchwords: PATENTS – workover mode control of hydraulic service of subsea trees via remotely operated vehicles (ROVs) via closed loop cycling of hydraulic fluid – section 59 – opposition to grant of a patent – grounds of novelty and inventive step – claims are novel –claims are inventive – opposition unsuccessful – costs awarded against the opponent
Representation: Patent attorney for the applicant: Adrian Crooks of Phillips Ormonde Fitzpatrick
Patent attorney for the opponent: Byron Bowman, assisted by Dr Jing Fung Tan, both of Griffith Hack
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2011265329
Title:Subsea tree workover control system
Patent Applicant: Vetco Gray Inc.
Date of Decision: 7 June 2018
DECISION
The opposition is unsuccessful on the raised grounds of novelty and inventive step. Subject to an appeal against this decision the application is to proceed to grant. I award costs in accordance with Schedule 8 of the Patent Regulations against the opponent.
REASONS FOR DECISION
Background
This matter relates to patent application 2011265329 in the name of Vetco Gray Inc. (the applicant), filed on 19 December 2011. The application was filed as a convention application claiming priority from US application number 12/980649 and has an earliest priority date of 29 December 2010.
The request for examination of the patent application was filed on 8 October 2015. As a consequence, substantive amendments to the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 that came into effect on 15 April 2013 apply to the present patent application. This includes the addition of subsection 60(3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists. Further to this point I note that the law that applies to the present grounds of opposition is that after amendment by the Raising the Bar Act.
The application was advertised as accepted on 22 September 2016 and was opposed on 22 December 2016 by FMC Technologies Inc. (the opponent). Only evidence in support has been filed in the form of a declaration by David Inggall dated 21 June 2017 comprising exhibits DI-1 to DI-6.
The hearing was conducted by way of teleconference, at which the opponent pressed grounds of novelty and inventive step only.
The Specification
The invention described in the specification relates to the field of offshore gas and oil production and, in particular, to subsea trees and the control of electrical and hydraulic service of said trees via remotely operated vehicles (ROVs). In offshore gas and oil fields, subsea trees are fixed to the top of a wellhead of a drilled well. Subsea trees monitor and control the production of the subsea well and are often equipped to manage the injection of fluids into the well. Document US 2009/0288836 A1, provided as exhibit DI-5, provides a useful depiction of subsea trees located within an oil or gas field atop wellheads, whereby a plurality of subsea trees 42 are connected to a manifold 44 by flow lines 22 which in turn connect to a platform 10. Remote operated vehicles (ROVs) 18 are often used to perform servicing or “workover” operations on subsea trees. Particular functional units known as testing skids (40) can be attached to ROVs to perform particular operations or tests.
As noted by the specification at page 2, a subsea tree will utilise several valves for controlling the flow of fluids there through. Operation of these valves may be controlled by a subsea control module (SCM) which itself may include several solenoid-operated control valves that direct the flow of hydraulic fluid into the subsea tree valves. These control valves may be controlled by electrical signals from an umbilical which may extend from a production tree or a remote platform. Page 3 of the specification discusses that, to facilitate distribution of hydraulic fluid in an umbilical to the SCM’s control valves, the umbilical may be connected to a receptacle on a junction plate located on the subsea tree. The junction plate will typically include a hydraulic distribution line extending from the receptacle to the SCM’s control valves.
At times during the life of a well, there is a need to replace or install new equipment. Often an action known as a “workover” may be required. A workover operation is simply any kind of well intervention involving invasive techniques. The opponent’s expert witness, David Inggall, identifies a workover operation as:
“…a planned intervention of a hydrocarbon Well in which the Well is temporarily disconnected from production.”
In the case of subsea trees, a workover operation means that the operation of a subsea tree may be temporarily turned over to a surface workover vessel, with the production mode of operation being locked out to prevent accidental operation by sources other than a workover vessel. To ensure a vessel has complete control of the subsea tree, an installation/workover control system (IWOCS) is typically used. Such a system includes its own umbilical that may contain hydraulic and electrical feeds to control the subsea tree. Typically, a production umbilical is disconnected from the receptacle on the junction plate and parked on a seabed parking plate.
Reference is made by the specification to figure 1. In the prior art, an IWOCS umbilical 10 extends from a vessel to a receptacle 12 on a junction plate 16. The IWOCS umbilical provides hydraulic fluid to the SCM via distribution lines 20. During operation of subsea valves, spent hydraulic fluid is vented to the sea via exhaust 22. In such a system hydraulic fluid must be replenished to the SCM via umbilical 10. Alternatively to figure 1, control hydraulic fluid may be supplied from a dedicated source on a remote operated vehicle (ROV) sent to the seabed. However, a requirement to replenish fluid lines 20 from an internal reservoir of a ROV is impractical due to the size, weight and cost issues in retrieving the ROV to the surface. Additionally, the specification notes that the discharge of fluid to the sea is wasteful and may have a negative impact upon the environment.
10. The invention overcomes one or more of these issues by providing a method for operating valves of a subsea tree during workover operations wherein a closed hydraulic loop is created between an ROV and SCM. Figure 3 shows the situation where a workover may be conducted using an ROV deployed from a vessel.
11. Here an ROV 70 is flown towards the subsea tree. The ROV carries an umbilical or flying lead from the vessel and carries facilities to remove a production umbilical and park it on the seabed. The ROV then connects to the junction 30 via a hydraulic skid 71 attached to the ROV. The hydraulic connection made between the ROV and SCM 50 forms a closed-loop system. As described at paragraphs [0026] and [0027] of the specification:
…a pump 82 is located on the hydraulic skid 71 and is connected to the internal piping to form part of the loop. A reservoir 83 may be used at the tee connection formed by lines 92 and line 84 connected to an intake on the pump 82 to facilitate fluid supply in the loop. The pump 82 is used to repressurize the hydraulic fluid fed to the SCM 50 to thereby allow reuse of the control fluid by the SCM 50.
In the operation of this installation/workover embodiment, the ROV flying lead 72 will provide the ROV 70 with hydraulic fluid and electrical power supplied from a vessel on the surface. The hydraulic fluid will be introduced into a connection hydraulic line 90 via hydraulic line 74 and will be supplied to the SCM 50 via hydraulic supply line 54. Hydraulic fluid vented from the subsea valves 51 is directed via exhaust line 36 from the SCM 50 back to the return line 92. Both lines 90 and 92 are coupled to the fixed junction 30 via removable junction 73. The return line 92 will allow the vented hydraulic fluid to circulate into the ROV skid section 71 for repressurization by the pump 82. The pump 82 discharges the pressurized control fluid into the hydraulic line 90 in the skid 71 and back into the hydraulic supply line 54 for reintroduction to the SCM 50. In operation, the electrical portion of the ROV umbilical 72 further supplies power to the pump 82.
The claims
12. The specification ends in 10 claims having independent claims 1, 3, 4 and 9. Claims 1-3 are not the subject of this opposition. Claims 4 and 9 are as follows:
4. A method for operating subsea hydraulic valve of a subsea tree during workover operations, the subsea tree having a control module for operating hydraulic valves of the tree and a junction coupled by a supply line to the control module to provide hydraulic fluid to the control module, the method comprising:
connecting a workover umbilical to an ROV having a hydraulic section;
flying the ROV to the junction and coupling the hydraulic section with the hydraulic supply line and the hydraulic section with a return line;
establishing a closed hydraulic loop between the hydraulic section of the ROV and the control module;
dispensing hydraulic fluid to the control module from the ROV and venting hydraulic fluid from a subsea hydraulic valve thru the return line to the ROV; and
increasing the pressure of hydraulic fluid vented from the subsea hydraulic valve to thereby recirculate hydraulic fluid to the control module.
9. A skid securable to a subsea Remote Operated Vehicle, comprising:
a reservoir for storing hydraulic fluid;
a pump coupled to the reservoir and configured to enable the skid to provide pressurized hydraulic fluid to a subsea device;
a junction configured to removably couple the skid to a corresponding junction of a subsea device, wherein the junction is configured so that pressurized hydraulic fluid is directed from the skid to the subsea device through the junction and hydraulic fluid is vented to the skid from the subsea device through the junction.
Novelty
13. For the purposes subsection 7(1) of the Patents Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the prior art information.
14. It is well established that the general test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; [1977] HCA 19; 137 CLR 228 at [235]:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
15. This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]; [1990] FCA 40; 16 IPR 545 at [549]). To meet this requirement, the prior art must contain “clear and unmistakable directions to do what the patentee claims to have invented” (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at [486]). As per the General Tire case: “A signpost, however clear, upon the road to the patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee”.
16. As pointed out by the opponent:
“A citation should be construed ‘not as a matter of abstract uninformed construction’, but by making ‘a common-sense assessment’ of what it would convey to the skilled reader in the context of the then-existing published knowledge (Populin v HB Nominees Pty Ltd (1982) 41 ALR 471).”
17. However it must be borne in mind as pointed out by the applicant that:
“In the case of a claim directed to a combination of a number of integers, the ‘prior art
publication must disclose those integers in that combination in order to deprive the
later patent of novelty’: SNF (Australia) Pty Ltd v CIBA Speciality Chemical Water
Treatments Limited (2012) 204 FCR 325 at [308].”
18. At the hearing, only claims 9 and 10 were objected to by the opponent as lacking novelty in view of exhibit DI-5, being citation US 2009/0288836 A1 (Goodall).
19. Goodall describes a range of apparatuses and methods for subsea control system testing including fluid conduit testing, wherein testing is conducted using a subsea testing skid. I have already discussed background infrastructure within Goodall therein identifying remote operated vehicles (18), (ROVs), and their use to perform servicing or “workover” operations on subsea devices. As per Goodall, particular functional units known as testing skids (40) can be attached to ROVs to perform particular operations or tests.
20. In their submissions at the hearing the opponent made the following argument:
“Goodall has an unusual structure in that Examples 1 and 2 describe an array of features that could be attributed to the invention and are not limited to a specific embodiment of the invention. Example 3 (illustrated in Figures 3 to 7) would be fairly said to be the preferred embodiment or best method of performing the invention. The text in Examples 1 and 2 are generic statements that represent possible features of the invention. An appropriate construction of Goodall is that the features of Examples 1 and 2 would be compatible with Example 3 unless the contrary was expressed in the specification.
We submit claims 9 and 10 lack novelty in view of Example 3, para [0044] and Figure 1 of Goodall.
We submit claims 9 and 10 lack novelty in view of Example 1 and Figure 1.”
21. In response, the applicant’s defence focussed upon the requirement that there be a clear and unmistakable direction to the claimed combination, and not merely a disparate identification of features in different parts of the document. The applicant argued that the opponent sought to impermissibly combine various disclosures of Examples 1, 2 and 3. I will focus first on the discussion of Example 1 with respect to figure 1.
22. At paragraph [0036], Example 1 describes a subsea control system testing skid adapted for static umbilical testing. The document continues in identifying that the testing skid includes at least one fluidic conduit testing module that ensures that the integrity of hoses and tubes within umbilicals has been maintained during laying as well as after being subject to subsea conditions ([0037]). Using this skid, testing may include one or more of electrical testing, optical testing, elemental analysis, and pressure testing. Hydraulic, optical and electrical testing modules and components thereof are housed on the skid, made watertight and adapted for use in water at extreme temperatures and pressures.
23. In paragraph [0044], the Example discusses the presence of a reservoir for storing hydraulic fluid to be supplied to the umbilical, and a containment bladder for return of pressurised fluid from the umbilical (subsea device):
In one aspect, the fluidic or testing circuit is adapted for flushing of hydraulic lines in conjunction with a waste containment bladder for collection of the hydraulic waste as well as a power and fluid supply bladder for filling the hydraulic lines with the desired fluid. Depending on the dimensions of the hydraulic line to be emptied and refilled with power fluid, the containment bladder and the supply bladder may be disposed on the Subsea Testing Skid or may be disposed on (sic) or more separate skids that are provided for the purpose.
24. Further discussion within Example 1 makes it clear that a pump is contained within the skid and is necessarily coupled to the hydraulic fluid reservoir and configured to enable the skid to provide pressurised hydraulic fluid to the subsea device ([0040]-[0042]):
Because the hydraulic fluid line is already filled and because fluid is essentially non compressible, the additional volume to be supplied for pressure testing is relatively small even for a large volume hydraulic line. However, because fluid is non-compressible, the pump that is dimensioned to supply test pressure is a high pressure positive displacement pump that is operable to deliver from 300 to 20,000 psi.
In one embodiment, a plurality of fluidic circuits is provided in order to pressurise/flush different hoses and tubes with different fluids. In one embodiment, the high pressure positive displacement pump is a triplex type pump that is operable to deliver test pressures up to 20,000 psi.
Hydraulic lines disposed in the umbilical can also be flushed to achieve cleanliness levels… In one embodiment, the flow cleanliness service includes a flushing or testing loop circuit established on the hydraulic line in the umbilical… Thus, a testing skid including a high pressure positive displacement pump operable to deliver from 3000 to 20,000 psi and a test fluid supply bladder is deployed subsea and connected to a fluidic conduit of a subsea umbilical through the respective port of the umbilical terminal assembly. A prescribed volume of test fluid is cycled through the umbilical… In other embodiments, a particle analyser is marinized, mounted on the skid and connected as part of the fluid testing module.
25. At this point I make clear that I do not consider that the discussion of the above features with respect to Example 1 suggests any disparity in embodiment within the text. While words “in one embodiment” are used, it is particularly clear from the text that disclosure of a pump on the skid provides pressurised connection from the hydraulic reservoir of the skid to the hydraulic input of an umbilical, and that there is a subsequent return of hydraulic fluid from the umbilical to the skid. In this regard I note that Example 1 discusses the functioning of a testing skid to receive hydraulic fluid returned after cycling through an umbilical for cleanliness flushing and testing purposes.
26. Therefore, in the context of claim 9 it is clear that Example 1 discloses a skid having a reservoir for hydraulic fluid, a pump on the skid coupled to the reservoir for providing pressurized hydraulic fluid to a subsea device in the form of an umbilical, and the return/venting of hydraulic fluid from the subsea device to the skid in either a fluid waste bladder or a testing module.
27. For completeness, I note that Example 2 discusses a testing skid for pressure testing of subsea devices ([0048]). The testing skid includes at least one pump operable to overcome hydrostatic pressure of water up to 10,000 ft deep ([0049]). Fluid can be drawn from a bladder ([0050]) and the skid may include a sample collection module ([0052]). While not explicitly disclosing the location of the bladder as being on the skid or on another device, Example 2 clearly discloses a pump located on a testing skid which circulates fluid from the skid to a subsea device and back to the skid for testing.
28. At this point it is useful to further address the submission of the applicant in respect of the disparate examples. It is true that Goodall presents three separate “Examples”, each discussing different features and parameters. At the same time, Goodall begins many paragraphs with the term “In one embodiment”, even within the one “Example”. Clearly, a considerate reading of the text suggests various “embodiments” within a single example does not preclude a teaching of the relevant features in a combination. To some degree I think similar can be said of the three examples themselves. In the context of general disclosures of overarching function and form of a testing skid, I am mindful that I must construe the teachings of the document as a whole, with a notion of common sense, to understand whether a particular combination of features is directly taught. While I must be cautious of the various “Examples”, this does not preclude a finding that the document as a whole may “plant their flag” upon certain features.
29. The remaining feature of claim 9 not yet discussed as disclosed by Goodall is a junction configured to removably couple the skid to a corresponding junction of a subsea device, wherein the junction is configured so that pressurised hydraulic fluid is directed from the skid to the subsea device through the junction and hydraulic fluid is vented to the skid from the subsea device through the junction. The submissions of the opponent generally seek to rely on information presented in Example 3 to further elaborate upon the configuration of hot stabs as presented in Example 1. In Example 1 at [0044] there is a discussion of connections between the testing skid and other skids:
Hydraulic hot stab connections between the testing skid and the fluid containment and supply skid or skids are provided to allow the fluid to flow through (sic) between the pumping skid and the fluid containment and supply skid or skids.
30. Neither Example 1 or 2 makes reference to a single junction on the skid which couples to a corresponding junction on the subsea device such that pressurised hydraulic fluid is supplied from the skid and vented back to the skid, via these connected junctions.
31. Example 3 discusses the manner of connectivity of a testing module with control systems that one may test; in particular, the operation of hot stabs is described with respect to figure 5 of Goodall (see below). In referring to this figure, Goodall describes at [0057] and [0058]:
In the depicted example, fluidic flying lead (86) is connected to the skid in operable connection with certain fluidic conduits and valves of the skid, such as those under the ROV operable panel including double block and bleed (60)… Fluidic (or hydraulic) hot stab (84) is attached to the terminus of the flying lead (86)… In most cases the hot stabs include zero leak wet mate connectors that prevent water ingress during connection. The hot stabs can be male or female stabs but are in any event customised to mate with the fluidic, electrical or optical terminus (96) of aspects of the control system to be tested.
In other embodiments, a reciprocal hot stab head (90)… is used to connect the testing skid to a subsea control module or umbilical. As used herein, a reciprocal hot stab head, is a custom head that is a matching reciprocal of the connection end of an umbilical or connection port of a subsea control module. As depicted, the reciprocal head may terminate in one or more couplings, such as fluidic couplings…
32. In response the applicant submitted that:
“Paragraphs [0057] and [0058] of Goodall say nothing about the provision of separate fluid conduits for the purpose of directing hydraulic fluid from the skid to a subsea device and venting hydraulic fluid to the skid from the hydraulic (sic) device.”
33. I note that the general teaching, within Example 3, of connecting a test skid to a subsea device such as an umbilical using a hot stab connection appears extendable to the test skids discussed within the document, including Examples 1 and 2 (noting that a skid may also be considered a subsea device). To this extent, I agree with the opponent’s submissions that Example 3 can (at least in limited circumstances) be considered a specific embodiment that can be read as teaching further aspects of Examples 1 and 2. However, in accordance with the observation by the applicant, there is no clear and unmistakable direction within the document to create a skid having a pump that supplies fluid to a subsea device from hydraulic fluid reservoir on the skid, further comprising a complementary hot stab system (comprising corresponding junctions) that functions to direct hydraulic fluid from the skid to the subsea device, and then vent hydraulic fluid back into the skid from this subsea device.
34. I have reviewed the evidence of David Inggall in which he suggests that the two depicted ports/nozzles of fluidic hot stab (84) read in conjunction with the first example which discusses containment and supply bladders and transfer of fluid between skids using hot stabs, amounts to a disclosure of the necessary flow arrangement of hydraulic fluid as claimed. As above, this falls short of demonstrating any clear direction to the claimed invention. It appears a mere unsubstantiated inference to suggest that the two ports of (84) supply pressurised hydraulic fluid via a pump to a device via (96), and then return hydraulic fluid to the same skid via these corresponding junctions. In other words, the specification does not depict or describe the function of the two “stabs” on item (84) with respect to pressurised hydraulic fluid, particularly not in the context of the skid as claimed, to the degree that would render the relevant feature disclosed.
35. I therefore find that claim 9 is novel. Claim 10 further limits claim 9, and is therefore also novel.
Inventive Step
36. A test for obviousness was provided by Justice Aicken in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12 at [45]; 148 CLR 262 at 286 as follows:
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
37. The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59 at [51]- [53]; 212 CLR 411 at [51]-[53] approved this approach, in addition to that taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at 187 in which Graham J had posed the question:
“Would the notional research group at the relevant date in all the circumstances directly be led as a matter of course to try [the claimed invention] in the expectation that it might well produce a useful [desired result]?”
38. Where the invention lies in a combination of features, the question is whether the combination, not each individual feature, is obvious when compared to the prior art base (Alphapharm [2002] HCA 59 at [41]; 212 CLR 411 at [41]; Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd [1980] HCA 9 at [116]; (1980) 144 CLR 253 at 293).
39. The usual approach to determining inventive step is the problem-solution approach. Once the problem has been formulated and the common general knowledge and the prior art base has been determined, the question of whether the claimed solution is obvious must be addressed.
40. In determining the problem or ‘starting point’ for considering inventive step, I am mindful of the words of the majority of the Full Court in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 (AstraZeneca) at [202]-[203] as follows:
“If the problem addressed by a patent specification is itself common general knowledge, or if knowledge of the problem is s 7(3) information, then such knowledge or information will be attributed to the hypothetical person skilled in the art for the purpose of assessing obviousness. But if the problem cannot be attributed to the hypothetical person skilled in the art in either of these ways then it is not permissible to attribute a knowledge of the problem on the basis of the inventor’s “starting point” such as might be gleaned from a reading of the complete specification as a whole.”
41. In other words, the Full Court has stated that when formulating the problem it is not permissible to incorporate information that is not available to the person skilled in the art as either common general knowledge or information available under section 7(3).
The Problem(s)
42. In the “Background of the Invention” section of the specification, paragraph [0010] discusses problems in the art when using ROVs in workover operations. At times, hydraulic fluid is provided by a dedicated hydraulic power pack on the ROV; however a problem exists in that this pack must contain sufficient fluid to replenish the supply to the tree functions, as there is typically not a dedicated supply line to the surface. Having to replenish such a reservoir is impractical as the ROV would need to be returned to the surface if there is no dedicated supply line. Furthermore, there exists the problem of spent hydraulic fluid from the subsea device being wastefully discharged into the sea.
43. There are two independent claims under opposition in the present matter. For convenience I will first refer to claim 9. As already discussed in detail, claim 9 is directed to a skid comprising a reservoir for storing hydraulic fluid, a pump for providing the fluid to a subsea device, and a junction that couples to a corresponding junction on the subsea device for supply and subsequent venting of the hydraulic fluid back to the skid. There is nothing in the claim that appears to solve the problem of having to replenish hydraulic fluid supply. In other words, the claim is not limited to any recirculation of hydraulic fluid. As a result it appears that claim 9 is directed to solving the problem of wasteful discharge of hydraulic fluid into the sea.
44. Claim 4 is directed towards a method for operating subsea hydraulic valves of a subsea tree during workover operations. A workover umbilical is connected to an ROV having a hydraulic section and the ROV is flown to a junction to couple with the hydraulic valves of the subsea tree. A return line is provided from the subsea tree and a closed hydraulic loop is established between the hydraulic section of the ROV and the control module of the subsea tree. Hydraulic fluid is dispensed to the control module from the ROV and vented back through a return line to the ROV. Pressure is increased for the returned fluid to recirculate it to the control module. Claim 4 therefore appears to address the two key problems discussed in paragraph [0010] being avoiding the need to replenish hydraulic fluid on the ROV and avoiding wasteful discharge of hydraulic fluid into the sea.
45. I am satisfied that neither of these formulations of the problem contradicts the words of the Full Court in the AstraZeneca case.
The Person Skilled in the Art
46. The person skilled in the art should clearly have knowledge and experience in the field of workover operations on devices used in relation to Well heads in subsea gas and oil fields, including the use of ROVs and skids. An engineer/mechanical technician responsible for designing, maintaining and/or operating such equipment would appear to serve as a suitable skilled person. The opponent’s expert, David Inggall, outlined his experience in his declaration. He has vast experience as a consultant engineer and technician spanning 30 years in subsea oil and gas operations. In particular, at 9.0 and 10.0 of his declaration, Mr Inggall discusses his experience in design, fabrication, testing, supply, operation and troubleshooting of remote intervention systems for subsea wells. Mr Inggalls’ skills see him advise on the pros and cons of using different equipment, and selecting the best approach to conduct subsea installations and workovers. This advice often extends to selection of ROVs and skids.
47. I am satisfied that the opponent’s expert is a suitable witness to serve as a person skilled in the art.
The Common General Knowledge and Prior Art Base
48. Amendments to the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 made changes to the law regarding inventive step. In this regard, a previous requirement was removed from the Act being that for a document to form part of the prior art base it was necessary that it could reasonably expected to have been ascertained, understood, regarded as relevant. A further amendment removed the requirement that common general knowledge be limited to that in Australia. As such, I need not consider any geographical aspects of the common general knowledge discussed by the opponent, and it appears appropriate to consider all documents raised by the opponent as part of the prior art base as they appear relevant to the problem, being clearly worthy starting points for further investigation. These documents are Goodall, and exhibit DI-6 being patent application US 2005/0178557 A1 (Johansen et al.).
49. Guided by the declaration of David Inggall, the following appears relevant common general knowledge at the priority date:
· A “workover operation”, “workover mode” describes a planned intervention of a hydrocarbon Well in which the Well is temporarily disconnected from production. (17.1)
· A production facility will hand over control of the oil Well that is the subject of a workover operation to a drilling rig crew, for control of the Production tree and Well independently of the production facility. Following planned activities the Well is handed back to the production facility. (17.2)
· Standard architecture of an oil Well includes a subsea tree, which sits on top of a Well head and includes an assembly of control interfaces and valves for controlling the oil Well’s production. Methods of control such as Direct Hydraulic control or Electro Hydraulic control are used wherein the later uses a Subsea Control Module (SCM) for operating the subsea tree valves. (17.3)
· A “workover umbilical” is an umbilical extending from the drilling rig to the tree atop a Well for the purpose of taking direct control of the tree away from the production facility. (19.1)
· A workover umbilical can contain hydraulic fluid lines and electrical lines. (19.2)
· A bridging plate 27 is common equipment of a subsea tree and includes multi-quick-connectors/couplers (MQCs) for connecting hydraulic or electrical feeds into the subsea tree. During a workover operation, it is standard practice to disconnect control of the production facility from the Well, and allow a dirty work pack or isolated high pressure unit (IHPU) to connect to the bridging plate via multi-quick connectors to operate valves. (20.14)
· A dirty work pack is an isolated fluid circuit containing a clean hydraulic control fluid for operating valves. Hydraulic control fluid is typically powered by a hydraulic motor that is driven by the hydraulic fluid of an ROV. (20.15)
· Spent hydraulic fluid can be vented along a flow line, for example, back to the surface or even to the sea. (21.1, 26.2, specification at [0009])
· ROVs are commonly used to connect flow lines to a bridging plate. (22.1)
· ROVs perform hydraulic functions and include an electric motor that drives a pump which conveys pressurised hydraulic fluid to operate these functions. (22.2)
· Skids are bolt on apparatuses carried by an ROV. They can be configured to carry any equipment including dirty-work-packs and winches. (4.0, 23.1)
· Control fluids from return lines shall be filtered and cleaned before re-entering the high-pressure unit supply system or dumped to a waste tank. (24.3.3)
Was the invention obvious in view of Common General Knowledge?
50. As per the discussion above, claim 9 addresses the problem of wasteful discharge of hydraulic fluid into the sea. In relation to this problem Mr Inggall made the following statement in his declaration.
“I agree that the discharge of hydraulic fluid to the sea is wasteful because the hydraulic fluid is a formulation specifically prepared to be suitable for control valves. It would therefore be advantageous not to waste hydraulic fluid by returning the hydraulic fluid to the bladder or reservoir as I have described in paragraphs 24.3.2 to 24.3.5.
51. Claim 4 addresses both the problem of wasteful discharge and replenishing control of fluid to an internal reservoir of an ROV. This problem of replenishing fluid was presented to the expert and addressed in his declaration at 24.3. Proceeding with this problem, and his knowledge of the art, Mr Inggall suggests four approaches that he would have considered before the priority date. For ease of understanding, I reproduce below Mr Inggall’s figure 2 which depicts these four approaches (i)-(iv). These approaches can be summarised as follows:
(i)Deploy an umbilical to transfer high pressure hydraulic control fluid from a rig to a bridging plate 27 of a subsea tree (A) or production plate 21 of a subsea control module (B) via multi-quick connectors 41, for operating the control valves of a subsea tree. (24.3.1)
(ii)Deploy a single bladder 39 containing a specified volume of hydraulic fluid to the seabed from a rig and replenish the bladder continuously via a trickle line from the rig. A skid 40 can then be connected to the bridging plate 27 via multi-quick connectors 42 with valve 17A performing the same function as the valve 17 on the subsea control module B. (24.3.2)
(iii)Redirect hydraulic fluid from a vent 30 located at the sea-chest/sump of a subsea control module B, back to the hydraulic fluid reservoir 26 which may be located on a production facility at the surface. This example does not evidently involve the use of an ROV or skid. (24.3.3-23.3.4)
(iv)“Another approach is to provide the equipment contained within box C [(eg. a pump, hydraulic fluid reservoir/bladder, supply and return line)] within a skid. The methodology of providing the operations in a skid is mentioned in ISO13628-8, page 3: ‘ROVs are essentially configured for carrying out intervention tasks… with tool skids or frames…’. I have reproduced this skid as item 45 in figure 2, which contains a bladder 46, a pump 47 which is powered by a hydraulic motor driven by the hydraulic fluid of an ROV. A spool or solenoid valve 17A performs the same function as solenoid valve 17 and is operable to control valve actuator 12. The fluid lines of the skid 45 can be connected via multi-quick connectors 48 directly to the bridging plate 27 (or the production plate [21])… The control fluid can be conveniently returned to the bladder 46 with appropriate filtration, which diminishes the need to replenish the bladder 46.” (24.3.5)
52. In the context of proposed solution (iv), skid 45 is proposed to replace subsea control module elements (B) and the fluid supply and return pathways represented by items 32 and 35 in Box C, by connecting directly to a bridging plate 27 on a subsea tree via connectors 48.
53. The opponent submits that “A skilled person would as a matter of routine provide an arrangement that includes all of the features of claim 4”. The opponent added that Mr Inggall’s “assessment of claims 4 to 8 are based on his recognition of the problem of replenishing hydraulic fluid in deep water at the priority date and he provided Figure 2 as a demonstration of an engineering configuration that would address the problem at the priority date.”
54. The applicant noted that the opponent’s expert, when discussing solution (iv) says that “another approach would be to provide the equipment contained within box C within a skid”. They note that the skid also includes item 17A which replaces element 17 of box B, submitting that “it is therefore unclear how the proposal is intended to operate”. On this point I note that I fail to see such difficulty as the discussion at 24.3.5 of Mr Inggall’s declaration describes how he proposes the skid would include a valve 17A which would function to replace the valve in item B. The supply and return of hydraulic fluid would then flow through this valve as it does in box B in a closed loop involving pump 47 and bladder 46. However, it is important to note that in this described solution, the skid is only sufficiently described so as to connect directly to subsea tree A via the bridging plate 27. This is because the skid is said to include the substitute valve 17A which disposes of the need to connect to the subsea tree via the production plate 21 and subsequently, via the subsea control module.
55. With regard to the common general knowledge, I cannot identify any information in the evidence that would indicate that certain key features are routine in the art. For example, as discussed with respect to claim 9, a single junction, comprising part of a skid configured to couple with a corresponding junction on a subsea device, is not identified as a routine feature. Instead, the evidence identifies that a subsea device such as a subsea tree may comprise a bridging plate which includes multi-quick-connectors/couplers (MQCs) for connecting hydraulic or electrical feeds into the subsea tree. Such a feature says nothing of corresponding junctions configured as claimed to supply and return hydraulic fluid between a subsea device and a skid. Moreover, there is insufficient evidence to suggest that, after supplying fluid from a reservoir on a skid (or ROV), returning fluid from a subsea device to the same skid (or ROV), is a matter of routine.
56. In the context of claim 4 similar can be said of the feature of establishing a closed hydraulic loop between the hydraulic section of an ROV and a control module of a subsea tree for the purpose of recirculating vented hydraulic fluid from the control module to the hydraulic section of the ROV and back into the control module. The feature is clearly not shown by the evidence to be common general knowledge in the art.
57. Furthermore, some key features of the claims do not appear taught by the proposed solutions of Mr Inggall. In particular, with respect to claim 4, the skid/ROV arrangement does not appear to be clearly presented to function via a closed loop with a subsea control module, instead functioning by a closed loop with a subsea tree. At the same time with respect to claim 9, the evidence does not appear to sufficiently clearly demonstrate corresponding junctions as required by the claim, instead generally discussing multi-quick connectors.
58. Notwithstanding the discussion above, the applicant also points to the manner in which Mr Inggall proposes the range of solutions in 24.3, and notes:
“… [it] is apparent from paragraph 24.3.6 of Inggall that these various approaches are only ones that the witness ‘would consider using during a workover operation’. The possibility that any one of these approaches might be considered for use as part of a workover operation falls well short of the particular requirement that one must be directly led as a matter of course to try a particular combination of integers with the requisite expectation of success.”
59. The requirement that a person skilled in the art would be “directly led as a matter of course to try” a particular solution, is to be qualified by there being a further requirement that there is a reasonable expectation that the solution (amongst others) might well solve the problem. In a similar vein to that argued by the applicant, I am inclined to consider that particular solution (iv) would not meet this criteria.
60. In particular, there is insufficient evidence to support the presentation of solution (iv) by the expert that this solution is obvious to try on the basis of a reasonable expectation of success. As mentioned, the solution itself is not routine, and there is no specific information in the common general knowledge that teaches that the particular solution will work. While Mr Inggall indicates in his declaration that he would consider each of the presented solutions, he states as much by noting he would arrive at the solutions “based on my knowledge and the standard practices outlined in the ISOs”. In the context of operating ROVs with respect to solution (iv) the opponent notes that “operating ROVs at depth also has inherent risks” and when asked whether ROVs have been adapted to address the problem of the specification Mr Inggall states that:
“ROVs are highly versatile and often configured to carry task specific equipment such as dedicated skids and tooling to handle umbilicals for the function that I have shown above in figure 2.”
61. I see no definitive reasoning for arriving at the claimed invention from common general knowledge only. It follows that I cannot be satisfied that solution (iv) in particular, is not an inventive solution. Therefore I find all the claims inventive in view of common general knowledge.
Was the invention obvious further considering the documents of the Prior Art Base?
Goodall
62. With reference to the discussion of Goodall earlier in this decision under novelty, I found that the document failed to disclose the feature of a junction configured to removably couple the skid to a corresponding junction of a subsea device, wherein the junction is configured so that pressurised hydraulic fluid is directed from the skid to the subsea device through the junction and hydraulic fluid is vented to the skid from the subsea device through the junction. I have also identified earlier in my discussion above in respect to the common general knowledge in the art, that such a feature was not evidently routine. The opponent’s submissions turn to the declaration of Mr Inggall for the purpose of an inventive step allegation against Goodall, which reads as follows:
“…DI-5 discloses a skid 40 that represents the skid 45 I have drawn above in Figure 2. Therefore, if I consider DI-5 in combination with the ISOs outlined above in Table 1, including ISO 13628-8, page 75, 5.5.7, which states “…Control fluids from the return lines shall be filtered and cleaned before re-entering the high pressure unit supply system…”. This further supports my belief that I would have considered using the approached (sic) outlined in paragraph 24.3, particularly 24.3.5 in view of diminishing the need to replenish control in an internal bladder of and ROV.”
63. On this submission it seems particularly clear to me that the selected reference from the ISO documentation falls well short of suggesting the arrangement of two corresponding junctions passing fluid as per the claimed feature. The opponent’s argument appears to essentially mirror that presented in respect of inventive step and common general knowledge alone. The applicant submitted in response as follows:
“Inggall provides no evidence as to how the information disclosed in Goodall would have directly led the skilled person to try the combination of features set out in claims 9 or 10 of AU’329 with the requisite expectation of a successful outcome. Teaching against such an outcome is the fact that Goodall provides its own solution to the issue of supplying sufficient volume of hydraulic fluid, stating at paragraph [0044] that additional separate skids may be provided having hydraulic fluid supply bladders which can be connected to the testing skid.”
64. While I am not convinced by the applicant’s submission that there is necessarily a teaching away in paragraph [0044] of Goodall, because said paragraph also describes containment and supply bladders being included in the testing skid, it remains that the claimed junction arrangement needs to be found obvious in view of the document when viewed with the common general knowledge in the art. As pointed out by the applicant, and for essentially the same reasons discussed in respect of common general knowledge alone, there is insufficient evidence to consider that the person skilled in the art would have been directly led to the claimed solution, with the requisite expectation of success.
65. I find the relevant claims inventive in view of Goodall.
Johansen
66. Document DI-6 to Johansen et al., is directed to an electric-hydraulic power unit for use in subsea wellhead control. Background art is presented in the document discussing an existing subsea well completion system which utilises high and low pressure umbilicals to the surface. The document adds that for economic and technical reasons well known in the industry, in subsea wells it is desirable to eliminate the need for hydraulic umbilicals extending from the surface to the well. Figure 2 is then presented as a known method for providing a source of pressurised hydraulic fluid locally via a subsea control module 10, to a subsea tree 40. The existing subsea well completion system of figure 2 comprises self-contained high and low-pressure hydraulic power that does not include hydraulic umbilicals to the surface but instead includes independent subsea deployed pumping systems. In figure 2:
A storage reservoir 64 is provided at or near the tree, and is maintained at ambient hydrostatic pressure via vent 66. Low-pressure hydraulic fluid is provided to solenoid valves 14 through line 60 from a low-pressure accumulator 74, which is charged by pump 70 using fluid from storage reservoir 64. Pump 70 is driven by electric motor 72, which may be controlled and powered from the surface or locally by a local controller and batteries. The pressure in line 60 may be monitored by a pressure transducer 76 and fed back to the motor controller. Hydraulic fluid, which is vented from actuators such as 42, is returned to storage reservoir 64 via line 62. High-pressure hydraulic fluid is provided to solenoid valve 20 through line 68 from a high-pressure accumulator 84, which is charged by pump 80 using fluid from storage reservoir 64. Pump 80 is driven by electric motor 82, which may be controlled and powered from the surface or locally by a local controller and batteries. The pressure in line 68 may be monitored by a pressure transducer 86, and the pressure information fed back to the motor controller.
67. The opponent made the following submission with respect to claims 4-8:
“We submit that Figure 2 of Johansen discloses a HPU which can be installed and retrieved by an ROV. The witness has demonstrated that he would have installed a hydraulic fluid reservoir having a recycle stream to enable the re-use of hydraulic fluid on skid 45 as a matter of preference to avoid umbilicals as taught by Johansen and described in ISO 13628-7, page 77, which provides multiple examples of hydraulic couplers for workover control modules. Couplers are also disclosed in Johansen (para [0054]). Couplers and junctions are standard equipment items described in detail in the ISO 13628-8, pages 77-78. This would indicate that a skilled person would, as a matter of course, deploy the HPU on a skid which can be mounted to an ROV.”
68. Quite clearly the claims are novel. The function of the independent pumping system that serves the subsea control system 10 is twofold. There is a low pressure “closed loop” circuit served by pump 70 and motor 72 to circulate fluid from reservoir 64, through line 60 to valves 14, and then back via line 62 to the reservoir. There is a second, high pressure pathway, wherein high pressure hydraulic fluid is provided to a valve 20 through line 68 from a high pressure accumulator 84 charged by a pump 80 and reservoir 64. There does not appear to be a return of fluid to the pumping system in this second pathway where instead it appears that fluid is vented at 24.
69. In the context of the opponent’s submission, Johansen describes at paragraph [0034] that a subsea electric-hydraulic power unit (HPU) 100 may replace motor 82, pump 80 and solenoid valve 20 from figure 2, and combine them into a single, compact module. Furthermore, at [0054] it is noted that the HPU may be attached to the tree via a multi-quick connector, wherein the compact design of the HPU allows it to be installed and retrieved by a remotely operated vehicle. It follows that there is no disclosure in the document of a closed loop arrangement, such as that represented by the low pressure circuit in figure 2, being housed in an ROV. There is also no disclosure of the use of such a circuit as being suitable for a workover operation as required by claim 4.
70. Turning to the evidence of Mr Inggall in respect of claim 4, at 47.0 of his declaration Mr Inggall states:
“…it would be straightforward for the system to be modified in DI-6 to include at least one of the high-pressure and/or low pressure hydraulic fluid circuits illustrated in figures 1 and 2 in a skid connected to an ROV. I would do this because it enables the power available in the ROV hydraulic system to be utilized to power the hydraulic fluid circuits using a dirt (sic) work pack I have described in the above paragraphs: 20.14, 20.15 and 29.10. This also avoids wasting the control fluid which occurs when vented to the sea, and prevents me from having to retrieve the ROV to replenish the control fluid.”
71. In the same vein discussed in respect to inventive step earlier in this decision, it is clear that features related to closed loop circulation of hydraulic fluid between an ROV and a subsea control module are not routine. The features are clearly not disclosed in Johansen, and there is no suggestion in the document that one might perform such a feature. The document simply refers to the possible location of a high pressure unit on an ROV for providing fluid to a subsea control module, where this unit does not receive vented fluid from the control unit for further pressurising and returning to the control unit. The allegation that it would be “straightforward for the system to be modified in DI-6 to include at least one of the high-pressure and/or low pressure hydraulic fluid circuits illustrated in figures 1 and 2 in a skid connect to an ROV” fails to demonstrate any direct leading as only the high-pressure unit of Johansen is discussed as being contained in an ROV. While the expert presents a reason why he “would do this” in that it would enable him to use a dirty work pack and solve the stated problems, the absence of any such feature as being demonstrated as routine suggests to me that claim 4 is inventive and the submission may be affected by hindsight.
72. Claims 5-8 add further features to claim 4 and are therefore also inventive.
Conclusion
72. The opposition is unsuccessful on all grounds. Subject to an appeal against this decision the application is to proceed to grant.
Costs
73. I note that summaries of written submissions from both parties were received late. The applicant’s summary was received two days before the hearing while the opponent’s summary was received on the day of the hearing. It is expected that submission summaries from the parties are received by the Commissioner ten days and five days before the hearing respectively for the opponent and the applicant. It is clear that the opponent has caused the delay in the present situation. Nonetheless, the opposition has been unsuccessful and the applicant seeks costs. In the present circumstances it appears appropriate to award costs, in the normal manner, against the opponent, FMC Technologies Inc.
Dr N. R. Madsen
Delegate of the Commissioner of Patents
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