Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 31
`Entered: August 19, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`ATLANTA GAS LIGHT COMPANY,
`Petitioner,
`
`v.
`
`BENNETT REGULATOR GUARDS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00826
`Patent 5,810,029
`
`____________
`
`
`
`
`
`Before JENNIFER S. BISK, JAMES B. ARPIN, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper 31
`Entered: August 19, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`ATLANTA GAS LIGHT COMPANY,
`Petitioner,
`
`v.
`
`BENNETT REGULATOR GUARDS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00826
`Patent 5,810,029
`
`____________
`
`
`
`
`
`Before JENNIFER S. BISK, JAMES B. ARPIN, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
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`IPR2015-00826
`Patent 5,810,029
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`I. INTRODUCTION
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`A. Background
`
`Atlanta Gas Light Company (“Petitioner”) filed a Petition (Paper 1,
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`“Pet.”) to institute an inter partes review of claims 1–8 of U.S. Patent No.
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`5,810,029 (Ex. 1001, “the ’029 patent”). After consideration of a
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`Preliminary Response (Paper 6) filed by Bennett Regulator Guards, Inc.
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`(“Patent Owner”), the Board instituted review of claims 1–8. Paper 12
`
`(“Institution Decision” or “Dec.”).
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`During the trial, Patent Owner filed a Patent Owner Response (Paper
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`16, “PO Resp.”), and Petitioner filed a Reply to the Patent Owner Response
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`(Paper 21, “Reply”). An oral hearing was held on June 23, 2016, and a
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`transcript of that hearing has been entered in the record. Paper 30 (“Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6(c). This Decision is a Final
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`Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
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`claims on which we instituted trial. Based on the record before us, Petitioner
`
`has shown, by a preponderance of the evidence, that claims 1–8 of the ’029
`
`patent are unpatentable.
`
`B. The ’029 Patent
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`1. Overview
`
`The ’029 patent, titled “Anti-Icing Device for a Gas Pressure
`
`Regulators,” issued on September 22, 1998, based on Application No.
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`08/491,273. The ’029 patent “relates to natural gas distribution and
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`especially to problems associated with the pressure regulator valve used to
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`reduce gas pressure from the relatively high level used in a distribution
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`system to the relatively low pressure level used in a customer’s building or
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`residence.” Ex. 1001, col. 1, ll. 5–9. Typically, the pressure regulator
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`includes a flexible diaphragm that divides the interior space of a surrounding
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`diaphragm housing into low-pressure and atmospheric-pressure chambers,
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`with an opening provided to vent the atmospheric-pressure chamber to the
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`atmosphere. Id. at col. 1, ll. 37–44. Because the pressure regulator
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`commonly is mounted on the outside of a building, where it is exposed to
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`prevailing weather conditions, the vent typically is protected with a vent
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`tube having a downward orientation that prevents precipitation from entering
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`the vent tube. Id. at col. 1, ll. 51–60. A metal screen over an outlet end of
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`the vent tube further protects against intrusion by insects. Id. at col. 1,
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`ll. 56–60. As the ’029 patent explains, these precautions do not prevent
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`problems associated with icing, which can manifest by the formation of an
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`icicle or by splashing of freezing rain, either of which eventually may block
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`the vent tube. Id. at col. 1, ll. 61–67.
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`Figure 4 of the ’029 patent is reproduced below:
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`Figure 4 of the ’029 patent illustrates a flared skirt assembly 40 connected to
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`vent tube 31. The skirt assembly “prevents the formation of an icicle over
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`the end 32 of the vent tube by enclosing the space around the vent tube and
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`providing a substantially expanded passage.” Id. at col. 3, ll. 47–49. In
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`addition, “because the skirt assembly is flared out substantially from the
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`center line of the exit passage, rain or freezing rain is deflected away from
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`an area where it could splash upwardly back into the vent tube.” Id. at
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`col. 3, ll. 50–53).
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`Figure 6 of the ’029 patent, reproduced below, illustrates a further
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`feature of the skirt assembly:
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`Figure 6 of the ’029 patent provides an exploded perspective view of
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`the bottom of the skirt assembly, showing baffle plate 54 having edges that
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`“are sufficiently spaced from the interior walls of the skirt that substantial
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`space is provided for the venting of gas and or air through the skirt.” Id. at
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`col. 4, ll. 6–8. A screen may be mounted at the lower end of the skirt to
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`prevent insect intrusion. Id. at col. 4, ll. 8–9.
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`2. Prosecution History
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`The ’029 patent issued on a first-action allowance, and underwent an
`
`ex parte reexamination initiated by Patent Owner. See Ex. 1010. During the
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`reexamination, Patent Owner argued that claims 1–8 are not anticipated by
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`Canadian Meter Company Inc., Quality Communiqué: Domestic Regulator
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`Approval (April 1992) (Ex. 1007), a reference cited to support certain
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`challenges in the Petition on which we did not institute. Pet. 39–50; see
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`Dec. 27. The Office confirmed claims 1–8. Ex. 1010, 12–14.
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`C. Illustrative Claim
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`Claim 1 is illustrative of the claims at issue:
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`1. A skirt assembly for reducing ice formation at an outlet vent
`tube from the atmospheric pressure chamber of a diaphragm-
`type gas pressure regulator, comprising:
`
`a skirt receiver adapted to be operatively connected to
`said vent tube;
`
`a skirt member defining an interior space and having an
`upper end opening connecting said vent tube to said interior
`space and an outwardly flared lower end with an area
`substantially greater than the area of said upper end opening,
`said skirt member being operatively connected to said skirt
`receiver means; and
`
`baffle means located in said interior space to underlie
`said upper end opening and being spaced from the interior walls
`of said skirt to permit gas flow therearound;
`
`whereby ice formation tending to block said vent tube is
`inhibited.
`
`Ex. 1010, col. 4, ll. 41–57.
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`D. References Relied Upon
`
`Petitioner relies on the following references. Pet. 6–7.
`
`Peterson ’087 US 2,620,087
`Peterson ’573 US 3,012,573
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`Dec. 2, 1952
`Dec. 12, 1961
`
`Ex. 1002
`Ex. 1004
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`US 3,985,157
`US 4,957,660
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`Oct. 12, 1976
`Sept. 18, 1990
`
`Ferguson
`Ohmae
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`Prior art described at column 1, lines 13–50 of the ’029 patent
`(Ex. 1001).
`
`Ex. 1005
`Ex. 1006
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`E. Instituted Grounds of Unpatentability
`
`We instituted trial on the following grounds of unpatentability.
`
`Dec. 31.1
`
`Basis
`§ 102(b)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Claims Challenged
`1 and 5
`1 and 5
`2, 4, 6, and 8
`2, 4, 6, and 8
`
`3 and 7
`3 and 7
`
`§ 103(a)
`
`1 and 5
`
`Reference(s)
`Peterson ’087
`Peterson ’087 and Peterson ’573
`Peterson ’087 and Ferguson
`Peterson ’087, Ferguson, and
`Peterson ’573
`Peterson ’087, Ferguson, and Ohmae § 103(a)
`Peterson ’087, Ferguson, Ohmae, and
`§ 103(a)
`Peterson ’573
`Peterson ’087 and prior art described
`in the ’029 patent
`
`1 Prior art described in a patent challenged in an inter partes review
`proceeding is within the scope of prior art that may be considered under 35
`U.S.C. § 311(b). See, e.g., Intri-Plex Technologies, Inc. v. Saint-Gobain
`Performance Plastics Rencol Ltd., Case IPR2014-00309, slip op. at 21–22 &
`n.8 (PTAB March 23, 2014) (Paper 83). For each asserted ground in which
`Petitioner relies on prior art described in the ’029 patent, Petitioner also
`asserts that it relies on the “knowledge of a person of ordinary skill in the
`art.” Such knowledge may be relevant to a determination “whether there
`was an apparent reason to combine the known elements in the fashion
`claimed by the patent at issue.” KSR Intern. Co. v. Teleflex Inc., 550 U.S.
`398, 418 (2007). In certain instances, it may also be relevant to
`determination of the scope of the prior art. See Arendi SARL v. Apple Inc.,
`2016 WL 4205964 (Fed Cir. Aug 10, 2016).
`7
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`Reference(s)
`Peterson ’087, Ferguson, and prior art
`described in the ’029 patent
`Peterson ’087, Ferguson, Ohmae, and
`prior art described in the ’029 patent
`
`Basis
`§ 103(a)
`
`Claims Challenged
`2, 4, 6, and 8
`
`§ 103(a)
`
`3 and 7
`
`
`
`
`
`F. Related Proceedings
`
`The issues presented to us involve a number of parties. The Board’s
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`diagram below summarizes the relationships among those parties.
`
`The summary of relationships provided by the above diagram is relevant to,
`
`inter alia, Patent Owner’s argument that a privy of Petitioner—namely,
`
`McJunkin Red Man Corporation (“MRMC”)—was served with a complaint
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`alleging infringement of the ’029 patent more than a year before the Petition
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`was filed. See PO Resp. 11–12, 55–57.
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`Petitioner is a distributor of natural gas in Georgia. Ex. 2006, 4. It is
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`a direct, wholly owned, subsidiary of AGL Resources, Inc. (“AGLR”),
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`which has a number of other subsidiaries. Id. One of those other
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`subsidiaries is AGL Services Company (“AGLS”). Id. at 5.
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`MRMC is a distributor of pipe, valve, and fitting products to the
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`energy and industrial markets. Ex. 2010. It is a direct, wholly owned,
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`subsidiary of MRC Global Inc. (“MRCG”), which was known as McJunkin
`
`Red Man Holding Corporation before it amended its certificate of
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`incorporation and bylaws to effect a name change on January 12, 2012.
`
`Atlanta Gas Light Co. v. Bennett Regulator Guards, IPR2013-00453, Ex.
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`1028 ¶ 4. MRMC itself was formed in 2007 from the merger of McJunkin
`
`Corporation (“MJC”) and Red Man Pipe & Supply Co. Ex. 2010.
`
`MRCG and MRMC share the same office space, have the same
`
`telephone number, have the same facsimile number, and, at relevant times,
`
`have had the same upper management. Exs. 2007, 2008, 2009, 2012, 2013.
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`The Texas Secretary of State’s records show that MRMC is registered as a
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`foreign corporation and that an agent for service of process has been
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`designated. Exs. 2012, 2013. Patent Owner contends, and Petitioner does
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`not dispute, that the Texas Secretary of State has no records for MRCG.
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`Prelim. Resp. 15.
`
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`G. The Supply Agreements
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`On July 1, 2001, AGLR “and its present and future subsidiaries”
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`entered into a Systems Contract Agreement with MJC (“the 2001
`
`Agreement”) for materials at an agreed price schedule. Ex. 2017 ¶ 36. On
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`January 1, 2007, the 2001 Agreement was amended and expanded by way of
`
`a Master Agreement for Inventory Support Services (“the 2007
`
`Agreement”). Ex. 2018. The entities covered by the 2007 Agreement
`
`include AGLS, “in its own behalf and/or on behalf of [AGLR] and one or
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`more of the subsidiaries of [AGLR].” Id. The 2007 Agreement includes
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`certain indemnification provisions, and AGLR and MRCG have disputed the
`
`scope of indemnification obligations as they relate to proceedings described
`
`below. See, e.g., Exs. 2031–2033.
`
`H. The Ohio Lawsuit
`
`The ’029 patent is currently involved in Bennett Regulator Guards,
`
`Inc. v. McJunkin Red Man Corp., Civil Action No. 5:12-cv-1040 (N.D.
`
`Ohio) (“the Ohio lawsuit”). Pet. 1–2.
`
`The Ohio lawsuit arose from allegations by Patent Owner that
`
`Petitioner and MRMC developed and sold a product that infringes the ’029
`
`patent. Prelim. Resp. 49. Patent Owner specifically contends that “MRMC
`
`has a direct, preexisting, substantive relationship with AGLR and its
`
`subsidiaries such as AGLC concerning the development, manufacture and
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`sale of the product that has been accused of infringing the ’029 patent.” Id.
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`Patent Owner further contends that “[t]hat relationship arises from MRMC
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`10
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`and AGLR and its subsidiaries being parties to the 2001 and 2007
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`Agreements that govern the development and sale of the Accused Product.”
`
`Id.
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`Patent Owner filed a complaint (Ex. 2002) initiating the Ohio lawsuit
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`on April 26, 2012. Paper 6, 13. The caption of the complaint identified
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`Petitioner and MRCG as defendants; the body of the complaint included
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`assertions that “[u]pon information and belief, on or about January 10, 2012,
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`McJunkin Redman Corporation . . . changed its name to MRC Global Inc.,”
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`and that references to MRCG referred both to MRCG and to “McJunkin
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`Redman.” Ex. 2002 ¶ 3. MRCG was served with the complaint on July 11,
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`2013. Ex. 2003. Petitioner was served with the complaint on July 18, 2013.
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`Pet. 2; Ex. 2060, Dkt. #4.
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`The complaint’s assertion that MRMC changed its name to MRC
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`Global Inc. proved incorrect. In fact, as noted above, MRCG amended its
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`certificate of incorporation and bylaws on January 10, 2012, to reflect a
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`name change of McJunkin Red Man Holding Corporation to MRCG.
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`Subsequently, Patent Owner filed an amended complaint, naming Petitioner
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`and MRMC as defendants, and deleting MRCG as a named defendant.
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`Ex. 2004. Petitioner and MRMC consented to the filing of the amended
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`complaint, with both Petitioner and MRMC agreeing that the amended
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`complaint “relates back to the filing of the Complaint on April 26, 2012.”
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`Ex. 2005; see Paper 6, 16.
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`11
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`On July 3, 2013, the district court dismissed Petitioner as a defendant
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`for lack of personal jurisdiction. Exs. 1017, 2006. The parties agree that the
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`dismissal was without prejudice. Pet. 2, Paper 6, 6.
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`I. The Related IPR
`
`The ’029 patent was also the subject of IPR2013-00453 (“the related
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`IPR”), which was terminated upon a finding that Petitioner failed to
`
`establish that it had identified all real parties-in-interest in its petition.
`
`Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2013-00453,
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`slip op. at 13 (PTAB Jan. 6, 2015) (Paper 88) (citing 35 U.S.C. § 312(a)(2)).
`
`We found in the related IPR that AGLR was a real party-in-interest. Id. at
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`13. Petitioner identifies AGLR as a real party-in-interest in this proceeding.
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`Pet. 1.
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`Certain negotiations regarding the scope of indemnity required by the
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`2007 Agreement implicate the Ohio lawsuit and the related IPR, and, by
`
`logical extension, this proceeding. During the course of those negotiations,
`
`AGLR deferred resolution of the indemnification dispute until after
`
`resolution of the related IPR, and noted that “even in the absence of an
`
`indemnification agreement, AGL has taken steps to support MRC’s defense
`
`[in the Ohio lawsuit].” Ex. 2031. In the context of explaining such steps,
`
`AGLR asserted that “AGL has also filed a petition for inter partes review of
`
`Bennett’s U.S. Patent No. 5,810,029 by the U.S. Patent and Trademark
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`Office – at AGL’s sole expense.” Id.
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`MRMC then indicated its willingness to “wait to be indemnified by
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`AGL until the reexamination [sic: inter partes review] process has been
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`completed.” Ex. 2032. MRMC also expressed its position on the scope of
`
`indemnification as explicitly contingent on the outcome of the related IPR,
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`noting the potential impact of a decision in the related IPR on the Ohio
`
`lawsuit. Id. Approximately six weeks later, AGLR confirmed that
`
`discussions had taken place outlining a possible indemnification structure
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`that depended on the outcome of the related IPR, but disputed that any
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`agreement had been reached. Ex. 2033.
`
`II. ANALYSIS
`
`A. Identification of Real Parties-in-Interest and
`Time Bar Under 35 U.S.C. § 315(b)
`
`Section 315(b) of Title 35 of the U.S. Code provides:
`
`An inter partes review may not be instituted if the petition
`requesting the proceeding is filed more than 1 year after the date
`on which the petitioner, real party in interest, or privy of the
`petitioner is served with a complaint alleging infringement of the
`patent.
`
`Patent Owner contends that
`
`[i]f MRMC or MRCG are real parties-in-interest or privies, the
`present Petition would be barred by either Section 312(a)(2) or
`the one-year filing requirement of 35 U.S.C. § 315(b). Similarly,
`if service of the complaint on AGLC in July, 2013 were to be
`deemed effective despite the subsequent dismissal of AGLC
`from the Ohio suit without prejudice, then the Petition would be
`time-barred by Section 315(b).
`
`
`13
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`PO Resp. 11. These statements are accurate. Patent Owner avers that it
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`“presents additional arguments” in its Response, beyond those expressed in
`
`its Preliminary Response (Paper 6), and requests reconsideration of our
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`determinations in the Institution Decision that (1) Petitioner is not deemed to
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`have been “served with a complaint alleging infringement” of the ’029
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`patent within the meaning of 35 U.S.C. § 315(b); and (2) MRMC has not
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`been established to be a privy of Petitioner within the meaning of § 315(b).
`
`Id. at 12; see Dec. 12–17. We have considered these issues anew, based on
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`the full record as developed during trial and in light of the additional
`
`arguments presented by Patent Owner in its Response. We conclude that the
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`Petition is not time-barred and that Petitioner has not failed to identify all
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`real parties-in-interest.
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`1. Service Upon Petitioner
`
`When considering the statutory bar under § 315(b), the Board has
`
`consistently held that dismissal without prejudice of a party from district-
`
`court litigation nullifies the effect of service on that party of the underlying
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`complaint. See Oracle Corp. v. Click-to-Call Techs. LP, Case IPR2013-
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`00312 slip op. at 15–18 (PTAB Oct. 30, 2013) (Paper 26) (precedential)
`
`(holding no bar based on voluntary dismissal without prejudice); Macauto
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`U.S.A. v. BOS GmbH, Case IPR2012-00004, slip op. at 14–16 (PTAB Jan.
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`24, 2013) (Paper 18) (holding no bar based on voluntary dismissal without
`
`prejudice); BAE Sys. Info. v. Cheetah Omni, LLC, Case IPR2013-00175, slip
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`op. at 3–4 (PTAB July 3, 2013) (Paper 15) (same); Cyanotech Corp. v. Bd.
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`of Trustees of the Univ. of Ill., Case IPR2013-00401, slip op. at 9–12 (PTAB
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`Dec. 19, 2013) (Paper 17) (holding no bar based on dismissal without
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`prejudice for failure to join indispensable party); InVue Sec. Prods. v.
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`Merch. Techs., Case IPR2013-00122, slip op. at 9–10 (PTAB June 27, 2013)
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`(Paper 17) (holding no bar based on dismissal without prejudice for lack of
`
`subject-matter jurisdiction); Nautique Boat Co. v. Malibu Boats, LLC, Case
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`IPR2014-01045, slip op. at 10 (PTAB Nov. 26, 2014) (Paper 13) (holding no
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`bar based on involuntary dismissal without prejudice); Gordon * Howard
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`Assocs. v. LunarEye, Inc., Case IPR2014-01213, slip op. at 10–15 (PTAB
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`Feb. 3, 2015) (Paper 11) (holding no bar based on dismissal without
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`prejudice for lack of personal jurisdiction). We agree with the reasoning
`
`behind the conclusions in these cases, and Patent Owner has not articulated
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`sufficient argument and evidence that persuades us to depart from that
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`reasoning.
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`Patent Owner argues that “Section 315(b) only requires service of a
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`complaint for patent infringement” and that “[t]he statute is silent
`
`concerning whether or not service is retroactively ineffective if the
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`complaint is subsequently dismissed.” PO Resp. 56. Patent Owner draws a
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`distinction between voluntary and involuntary dismissals, contending that
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`“[b]y holding that all non-preclusive dismissals nullify service of a patent
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`infringement complaint, the Board effectively has amended the statute to
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`expand the Board’s jurisdiction.” Id. at 57. We disagree.
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`The Federal Circuit has characterized the effect of dismissals without
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`prejudice as “leaving the parties as though the action had never been
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`brought,” thereby restoring the ability of parties to pursue courses of action
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`available to them before the action had been brought. Graves v. Principi,
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`294 F.3d 1350, 1355–56 (Fed. Cir. 2002); see Bonneville Assocs., Ltd.
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`P’ship v. Barram, 165 F.3d 1360, 1364 (Fed. Cir. 1999). The Board has
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`held, in a precedential decision, that there is no bar after a voluntary
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`dismissal without prejudice, and we see no compelling reason to treat
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`involuntary dismissals differently. Oracle at 15–18. Patent Owner
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`identifies no precedent that limits the impact of a dismissal from district-
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`court litigation, as it relates to inter partes review proceedings, according to
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`whether the dismissal was voluntary or involuntary. See, e.g., Graves at
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`1355–56 (“The most fundamental problem facing Mr. Graves, however is
`
`the fact that, as a matter of law, once his appeal was dismissed—for
`
`whatever purpose and whether with or without prejudice—it was as if the
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`appeal had never been filed”) (emphasis added). Although the Board has not
`
`adopted the Federal Rules of Civil Procedure, their treatment of involuntary
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`dismissals also informs our conclusion because the Ohio district court
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`specifically dismissed Petitioner as a defendant for lack of personal
`
`jurisdiction. See Fed. R. Civ. Proc. 41(b) (“Unless the dismissal order states
`
`otherwise, a dismissal under this subdivision (b) and any dismissal not under
`
`this rule—except one for lack of jurisdiction, improper venue, or failure to
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`join a party under Rule 19—operates as an adjudication on the merits”
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`(emphasis added)).
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`Accordingly, we conclude that Petitioner is deemed not to have been
`
`“served with a complaint alleging infringement” of the ’029 patent within
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`the meaning of 35 U.S.C. § 315(b). Consequently, the Petition is not barred
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`on that basis.
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`2. Real Parties-in-Interest and Privies
`
`The Office Trial Practice Guide (“Practice Guide”) provides guidance
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`on the Board’s approach to identifying real parties-in-interest and privies,
`
`referring to common-law preclusion doctrines and citing the Supreme Court
`
`decision in Taylor v. Sturgell. 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012)
`
`(citing Taylor v. Sturgell, 553 U.S. 880 (2008)). Because nonparty
`
`preclusion risks binding those who have not had a full and fair opportunity
`
`to litigate, the Supreme Court has cautioned that there is a general rule
`
`against nonparty preclusion, subject only to limited exceptions. See Taylor,
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`553 U.S. at 892–93. In Taylor, while noting that it was not a “definitive
`
`taxonomy” (id. at 893 n.6), the Court set forth a list of six “categories” under
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`which nonparty preclusion may be allowed. Id. at 893–95. These categories
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`include: (1) whether the third party agrees to be bound by the determination
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`of issues in the proceeding; (2) whether a pre-existing substantive legal
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`relationship with the party named in the proceeding justifies binding the
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`third party; (3) “in certain limited circumstances,” whether the third party is
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`adequately represented by someone with the same interests; (4) whether the
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`17
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`third party exercised or could have exercised control over the proceeding;
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`(5) whether the third party is bound by a prior decision and is attempting to
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`rehear the matter through a proxy; and (6) whether a statutory scheme
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`forecloses successive hearing by third parties. Id.
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`Patent Owner contends that the relationship between AGLR and
`
`MRMC “goes far beyond the usual buyer-seller relationship that has been
`
`deemed inadequate to confer privy status in other cases.” PO Resp. 55.
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`Patent Owner summarizes the facts that it argues support a finding of privity,
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`contending that “[w]hen all of these facts are considered, the relationship
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`between and among AGLR, MRMC and MRCG is sufficiently close to
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`justify considering MRMC or MRCG to be a real party-in-interest or privy
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`of AGLR and/or AGLC [i.e., Petitioner].” Id. Patent Owner contends that
`
`these facts, which it characterizes in a manner favorable to its position,
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`“satisfy at least the first and second ‘Taylor factors’ (third party agrees to be
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`bound and third party had pre-existing substantive legal relationship with the
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`party named in the proceeding).” Id. (citation to Taylor omitted). We
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`disagree.
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`First, Patent Owner’s characterization of the facts improperly elevates
`
`negotiation discussions of a potential agreement to the status of an actual
`
`agreement in advancing its argument with respect to the Taylor “third party
`
`agrees to be bound” category. The full language cited by the Supreme Court
`
`in Taylor leaves no doubt that the Court was referring to the actual binding
`
`of parties by agreement, not merely to offers to be bound that might have
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`18
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`been made as part of failed negotiations: “‘[A] person who agrees to be
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`bound by the determination of issues in an action between others is bound in
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`accordance with the terms of his agreement.’” Taylor at 893 (quoting
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`1 Restatement (Second) of Judgments (“Restatement”) § 40, p. 390 (1980)
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`(emphasis added). The record includes insufficient evidence of an actual
`
`agreement to be bound to support Patent Owner’s position. Indeed, the
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`record includes an explicit response that no agreement was reached between
`
`Petitioner and MRMC or MRCG. See Ex. 2033.
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`Second, Patent Owner places too much weight on the second Taylor
`
`category (pre-existing substantive legal relationship). “Qualifying
`
`relationships include, but are not limited to, preceding and succeeding
`
`owners of property, bailee and bailor, and assignee and assignor.” Id. (citing
`
`2 Restatement §§ 43–44, 52, 55. Although the Supreme Court
`
`acknowledges relationships other than those it specifically identifies may
`
`qualify, the relationship between Petitioner and MRMC or MRCG is not as
`
`close as those examples, and Patent Owner provides insufficient reasoning to
`
`support the extension it implicitly proposes. Patent Owner draws no analogy
`
`to any of the other “substantive legal relationships resulting in preclusion”
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`set forth in 2 Restatement §§ 43–61 to support its position or for us to
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`consider.
`
`Accordingly, neither MRMC nor MRCG has been established to be a
`
`real party-in-interest in this proceeding, nor have they been established to be
`
`privies of Petitioner within the meaning of § 315(b). Whether MRMC was
`
`19
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`served more than one year before the instant Petition was filed, thus, is
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`irrelevant to the applicability of the statutory bar to Petitioner. Therefore,
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`we conclude that Petitioner neither has failed to identify all real parties-in-
`
`interest as required by § 312(a)(2) nor is barred by § 315(b).
`
`B. Person of Ordinary Skill in the Art
`
`Petitioner contends that a person of ordinary skill in the art of gas
`
`pressure regulators and vent protectors “would generally have at least a few
`
`years of experience with designing, maintaining, or otherwise working with
`
`the functional aspects of gas pressure regulators,” and supports its contention
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`with testimony by its expert, James Petersen. Pet. 17 (citing Ex. 1016 ¶ 6).
`
`Patent Owner disputes Petitioner’s contention, countering that “[o]ne would
`
`need to also have experience with vent protectors themselves and how they
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`interact with gas pressure regulators in order to have ordinary skill in the art
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`of designing vent protectors.” PO Resp. 27. Patent Owner contends instead
`
`that the level of ordinary skill in the art “encompasses someone with at least
`
`a high school education who has studied gas regulators and their operation,
`
`who has studied gas regulator vent protectors and their operation, and who
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`has had personal experience in manufacturing, testing and using gas
`
`regulator vent protectors.” Id. at 27–28. Patent Owner further contends that
`
`“[a]ny person of ordinary skill in the art would have to have studied and
`
`worked with gas regulators and gas regulator vent protectors for at least
`
`20
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`three years.” Id. at 28. Patent Owner supports its contentions with
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`testimony by Mr. Bennett.2 Ex. 2087 ¶¶ 12–14.
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`The significance of the level of ordinary skill in the art is the role it
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`plays in an obviousness analysis. See Graham v. John Deere Co., 383 U.S.
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`1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
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`2001) (“[T]he level of skill in the art is a prism or lens through which a
`
`judge, jury, or the Board views the prior art and the claimed invention”);
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`Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The
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`importance of resolving the level of ordinary skill in the art lies in the
`
`necessity of maintaining objectivity in the obviousness inquiry”). The
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`differences between the parties regarding the level of ordinary skill in the art
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`are not as great as they might first appear, and the deposition testimony of
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`Mr. Petersen is edifying. Mr. Petersen testified that (1) there is nothing
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`unique about designers of natural gas regulator vent protectors that would
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`distinguish them from those who design natural gas regulators or fuel gas
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`regulators (Ex. 2089, 52:7–17); (2) there was no intent to omit vent protector
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`designers or manufacturers from the definition of one of ordinary skill
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`because “[i]nasmuch as a vent protector is an accessory . . . to a gas
`
`
`2 Petitioner contends that the testimony of Mr. Bennett is unreliable because
`he is a named inventor on the ’029 patent and because he has a significant
`financial interest in preserving the validity of the ’029 patent. Reply 2–3
`(citing Bell & Howell Document Mgmt. Prod. Co. v. Altek Sys., 132 F.3d
`701, 706 (Fed. Cir. 1997); Ex. 1031, 8:14–17, 9:7–19). These factors affect
`the weight to be accorded to Mr. Bennett’s testimony.
`21
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`regulator, it would encompass that as well” (id., 53:3–21); and (3) one of
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`skill in the art could have a technician level of engineering education and
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`need not have a degree level of education (id., 55:11–21). We credit this
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`testimony.
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`In light of these clarifications, we conclude that one of ordinary skill
`
`in the art would have at least a technician level of engineering education,
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`and experience with designing, maintaining, or otherwise working with gas
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`pressure regulators and vent protectors.3
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`C. Claim Construction
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`The ’029 patent expired on June 16, 2015. See PO Resp. 20; Reply 8.
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`The Board construes claims of an expired patent under principles similar to
`
`those used during a district court’s review, according claim terms their
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`ordinary and customary meaning, as would be understood by a person of
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`ordinary skill in the art at the time of the invention. See In re CSB-System
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`Int’l, Case 2015-1832, slip op. *8 (Fed. Cir. Aug. 9, 2016) (“When a patent
`
`
`3 Patent Owner contends that “Mr. Petersen may be knowledgeable about
`how gas regulators work, . . . but he does not possess ordinary skill in the art
`of designing vent protectors for gas regulators.” PO Resp. 28. In light of
`our determination regarding the level of ordinary skill in the art, we
`disagree. We note also that Mr. Petersen need not be a person of ordinary
`skill in the art to testify as an expert under Federal Rule of Evidence 702.
`See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64
`(Fed. Cir. 2008). Nor must Mr. Petersen’s qualifications perfectly match the
`patent at issue. See SEB S.A. v. Montgomery Ward & Co. Inc., 594 F.3d
`1360, 1373 (Fed. Cir. 2010).
`
`22
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`expires during a reexamination proceeding, the PTO should thereafter apply
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`the Phillips standard for claim construction.”); Cisco Systems, Inc. v. AIP
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`Acquisition, LLC, Case IPR2014-00247, slip op. at 2 (PTAB July 10, 2014)
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`(Paper 20) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1313–1317 (Fed.
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`Cir. 2005) (en banc)). “In determining the meaning of the disputed claim
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`limitation, we look principally to the intrinsic evidence of record, examining
`
`the claim language itself, the written description, and the prosecution
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`history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
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`Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at
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`1312–17). There is a presumption, however, that a claim term carries its
`
`ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp.,
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`288 F.3d 1359, 1366 (Fed. Cir. 2002) (internal citation omitted).
`
`In the Institution Decision, we construed certain claim terms in
`
`accordance with thei
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