Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
` Paper No. 50
`
`
` Entered: July 11, 2018
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NATIONAL OILWELL VARCO, L.P.,
`Petitioner,
`
`v.
`
`TECHNICAL INDUSTRIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00699
`Patent 7,401,518 B2
`____________
`
`
`
`Before BRYAN F. MOORE, MINN CHUNG, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`HARLOW, Administrative Patent Judge.
`
`
`JUDGMENT AND ORDER
`Granting Motion for Partial Adverse Judgment and
`Granting Joint Motion to Limit the Petition
`37 C.F.R. §§ 42.72, 42.73(b)
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
` Paper No. 50
`
`
` Entered: July 11, 2018
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NATIONAL OILWELL VARCO, L.P.,
`Petitioner,
`
`v.
`
`TECHNICAL INDUSTRIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00699
`Patent 7,401,518 B2
`____________
`
`
`
`Before BRYAN F. MOORE, MINN CHUNG, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`HARLOW, Administrative Patent Judge.
`
`
`JUDGMENT AND ORDER
`Granting Motion for Partial Adverse Judgment and
`Granting Joint Motion to Limit the Petition
`37 C.F.R. §§ 42.72, 42.73(b)
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-00699
`Patent 7,401,518 B2
`
`
`Petitioner, National Oilwell Varco, L.P., filed a Corrected Petition to
`institute an inter partes review of claims 1–20 of U.S. Patent
`No. 7,401,518 B2 (“the ’518 patent”). Paper 5. Patent Owner, Technical
`Industries, Inc., filed a Preliminary Response, in which it averred that
`“Patent Owner will disclaim Claims 1–3, 5, 7, 8, 10, 12, 13, 15, 17 and 19,
`leaving Claims 4, 6, 9, 11, 14, 16, 18 and 20 at issue in this matter.”
`Paper 9, 10.
`On July 28, 2017, we instituted an inter partes review of all
`challenged claims on all grounds asserted, and explained that
`[b]ecause we are not aware that Patent Owner has in fact
`disclaimed claims 1–3, 5, 7, 8, 10, 12, 13, 15, 17, and 19 of the
`’518 patent, we address Petitioner’s unpatentability contentions
`with regard to those claims in this Decision. Should Patent
`Owner proceed to disclaim claims 1–3, 5, 7, 8, 10, 12, 13, 15, 17,
`and 19, we will address such disclaimer at that time.
`Paper 16, 11.
`On November 30, 2017, Patent Owner filed a Patent Owner Response
`to the Petition, in which it again represented that “Patent Owner will
`disclaim claims 1–3, 5, 7, 8, 10, 12, 13, 15, 17 and 19, leaving only 4, 6, 9,
`11, 14, 16, 18 and 20 of the ‘518 patent at issue in this matter.” Paper 21, 1–
`2.
`
`On April 5, 2018, pursuant to our authorization, Patent Owner filed an
`unopposed Request for Adverse Judgment, disclaiming and canceling claims
`1–3, 5, 7, 8, 10, 12, 13, 15, 17 and 19 of the ’518 patent. Paper 44.
`On April 30, 2018, in light of the Supreme Court’s decision in SAS
`Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018) and the Guidance on the
`
`2
`
`
`
`IPR2017-00699
`Patent 7,401,518 B2
`
`Impact of SAS on AIA Trial Proceedings issued by the USPTO,1 we
`modified our Decision on Institution to institute trial on every challenged
`claim as to each ground asserted in the Petition. Paper 47, 2. On July 6,
`2018, pursuant to our authorization, the parties filed a Joint Motion to Limit
`the Petition to the originally instituted grounds. Paper 48.
`Rule 42.73(b) permits a party to “request judgment against itself at
`any time during a proceeding.” 37 C.F.R. § 42.73(b). Under the
`circumstances presented here, we find it is appropriate to grant Patent
`Owner’s request for adverse judgment on claims 1–3, 5, 7, 8, 10, 12, 13, 15,
`17, and 19, because doing so will significantly simplify the issues to be
`addressed at trial.
`In addition, limiting the Petition in the manner jointly requested by the
`parties serves our overarching goal of resolving this proceeding in a just,
`speedy, and inexpensive manner. 37 C.F.R. § 42.1(b); see also Apotex Inc.,
`v. OSI Pharms., Inc., Case IPR2016-01284 (PTAB Apr. 3, 2017) (Paper 19)
`(granting, after institution, a joint motion to limit the petition by removing a
`patent claim that was included for trial in the institution decision).
`Accordingly, we likewise find it is appropriate to grant the parties’ Joint
`Motion to Limit the Petition.
`
`
`
`
`1 Available at https://www.uspto.gov/patents-application-process/patent-
`trial-and-appeal-board/trials/guidance-impact-sas-aia-trial.
`3
`
`
`
`IPR2017-00699
`Patent 7,401,518 B2
`
`
`As a result of this Order, only the following claims and grounds
`remain in trial:
`
`Claims
`6, 11, 16, 20
`4, 6, 9, 11, 14, 16, 18, 20
`6, 20
`
`Reference(s)
`Basis
`§ 102(b) Assanelli
`§ 103(a) Kiefer and Assanelli
`§ 103(a) Lam and Assanelli
`
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s Request for [Partial] Adverse
`Judgment (Paper 44) is granted, and judgment is entered against Patent
`Owner under 37 C.F.R. § 42.73(b) with respect to claims 1–3, 5, 7, 8, 10, 12,
`13, 15, 17, and 19 of U.S. Patent No. 7,401,518 B2;
`FURTHER ORDERED that claims 1–3, 5, 7, 8, 10, 12, 13, 15, 17,
`and 19 of U.S. Patent No. 7,401,518 B2 are CANCELED;
`FURTHER ORDERED that the Joint Motion to Limit the Petition
`(Paper 48) is granted;
`FURTHER ORDERED that pursuant to 37 C.F.R. § 42.72, trial is
`terminated as to all grounds not originally included in the trial in the
`Decision on Institution (Paper 16); and
`FURTHER ORDERED that only the following claims and grounds
`remain in the trial:
`
`Claims
`6, 11, 16, 20
`4, 6, 9, 11, 14, 16, 18, 20
`6, 20
`
`
`
`
`
`Reference(s)
`Basis
`§ 102(b) Assanelli
`§ 103(a) Kiefer and Assanelli
`§ 103(a) Lam and Assanelli
`
`4
`
`
`
`IPR2017-00699
`Patent 7,401,518 B2
`
`PETITIONER:
`Robert M. Bowick, Jr.
`Bradford T. Laney
`RALEY & BOWICK, L.L.P.
`rbowick@raleybowick.com
`blaney@raleybowick.com
`
`PATENT OWNER:
`Ted M. Anthony
`BABINEAUX, POCHÉ, ANTHONY & SLAVICH, L.L.C.
`tanthony@bpasfirm.com
`
`Joseph L. Lemoine, Jr.
`LEMOINE & ASSOCIATES, LLC
`joe@lemoine.com
`
`
`5
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
