Trials@uspto.gov
`571-272-7822
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` Paper No. 51
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` Entered: July 18, 2018
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`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.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
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`571-272-7822
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` Paper No. 51
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`
` Entered: July 18, 2018
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`
`
`
`
`
`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.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
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`
`
`
`
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`IPR2017-00699
`Patent 7,401,518 B2
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`I.
`INTRODUCTION
`National Oilwell Varco, L.P. (“Petitioner”) filed a Petition to institute
`an inter partes review of claims 1–20 of U.S. Patent No. 7,401,518 B2
`(Ex. 1001, “the ’518 patent”). Paper 5 (“Pet.”).1 Technical Industries, Inc.
`(“Patent Owner”) filed a Preliminary Response. Paper 9 (“Prelim. Resp.”).
`On July 28, 2017, we instituted an inter partes review of every
`challenged claim on at least one asserted ground of unpatentability, and of
`every asserted ground of unpatentability for at least one claim, but we did
`not institute review as to each claim challenged on each ground asserted.
`Paper 16 (“Inst. Dec.”). On November 30, 2017, Patent Owner filed a
`Patent Owner Response to the Petition. Paper 21 (“PO Resp.”). On
`February 12, 2018, Petitioner filed a Reply to the Patent Owner Response.
`Paper 29 (“Reply”). Pursuant to our authorization, Patent Owner and
`Petitioner each filed Sur-Replies. Paper 36 (“PO Sur-Reply”); Paper 40
`(“Pet. Sur-Reply”).
`Petitioner and Patent Owner additionally filed various evidentiary
`motions. Petitioner filed a Motion to Strike the opinions of Patent Owner’s
`declarant, Dr. William Emblom (Paper 38), to which Patent Owner filed an
`Opposition (Paper 42). Patent Owner filed a Motion to Exclude evidence
`submitted in conjunction with Petitioner’s Reply (Paper 39), to which
`Petitioner filed a Response (Paper 43).
`
`
`1 Petitioner filed its Petition on January 17, 2017 (Paper 2), and subsequently
`filed a Corrected Petition on February 3, 2017 (Paper 5). All citations are to
`the Corrected Petition (Paper 5).
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`On March 27, 2018, the parties presented arguments at an oral
`hearing. The hearing transcript has been entered in the record. Paper 43
`(“Tr.”).
`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
`Impact of SAS on AIA Trial Proceedings issued by the USPTO (“Agency
`Guidance”),2 we modified our Decision on Institution to institute trial on all
`challenges 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), which we granted (Paper 50).
`In addition, on April 5, Patent Owner filed a Request for Adverse
`Judgment seeking cancelation of claims 1–3, 5, 7, 8, 10, 12, 13, 15, 17, and
`19 of the ’518 patent (Paper 44), which we granted (Paper 50). Claims 4, 6,
`9, 11, 14, 16, 18, and 20 of the ’518 patent remain in trial. Id.
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. Having considered the record before us, we
`determine that Petitioner has shown by a preponderance of the evidence that
`claims 4, 6, 9, 11, 14, 16, 18, and 20 of the ’518 patent are unpatentable. See
`35 U.S.C. § 316(e). Additionally, we decide the parties’ evidentiary motions
`below, in Section III.
`
`
`2 Available at https://www.uspto.gov/patents-application-process/patent-
`trial-and-appeal-board/trials/guidance-impact-sas-aia-trial.
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`IPR2017-00699
`Patent 7,401,518 B2
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`A. Related Matters
`The ’518 patent is asserted in Technical Industries, Inc. v. National
`Oilwell Varco, L.P., Case No. 6:15-cv-02744 (W.D. La.). Pet. 4; Paper 5, 2.
`In addition, we have instituted petitions for inter partes review of U.S.
`Patent No. 7,263,887 (IPR2017-00648), U.S. Patent No. 7,552,640
`(IPR2017-00860), U.S. Patent No. 7,997,138 (IPR2017-00910), each of
`which is related to the ’518 patent.
`
`B. The ’518 Patent
`The ’518 patent, titled “Method for Inspection of Metal Tubular
`Goods,” issued July 22, 2008, from U.S. Patent Application No. 11/849,287,
`filed September 1, 2007. Ex. 1001, at [54], [45], [21], [22]. The ’518 patent
`is a continuation of U.S. Patent Application No. 10/548,731, filed on March
`8, 2004, and now issued as U.S. Patent No. 7,263,887.3 Id. at [63]. The
`’518 patent claims priority to U.S. Provisional Patent Application
`No. 60/452,907, filed March 7, 2003. Id. at [60].
`The ’518 patent describes a method for evaluating the condition of
`tubular metal goods by collecting and analyzing data concerning tubular
`wall thickness. Id. at 1:15–20. In particular, the ’518 patent discloses the
`use of ultrasonic technology to acquire wall thickness data, in association
`with three-dimensional positional data, for discrete sections of the wall of a
`metal tubular good, “so that the wall of a metal tubular (or portions thereof)
`
`
`3 U.S. Patent No. 7,263,887 B2 is the subject of IPR2017-00648.
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`can be displayed, imaged, examined and utilized in simulative/comparative
`programs as a three-dimensional object.” Id. at 1:25–32.
`The ’518 patent acknowledges that the use of ultrasonic technology to
`inspect a metal tubular by determining wall thickness at a position on the
`tubular was known in the art prior to the time of invention. Id. at 2:46–64.
`The ’518 patent purports to improve upon prior art methods for identifying
`defects in metal tubular walls by teaching the use of ultrasonic inspection
`data not only to identify wall defects, but to use “three-dimensional data as
`to both the defect and the remainder of the tubular” to evaluate, with
`“mathematical precision,” how such a defect might impact tubular
`performance. Id. at 2:64–3:9. In this regard, the ’518 patent explains that
`data representing “wall thickness of each incremental section of a tubular
`and the location of that section can be used in computations which predict
`the actual effect on the tubular to various stressors, including tensile,
`bending, collapse and burst forces, aging, etc.” Id. at 8:64–9:7. The
`’518 patent does not describe how such calculations might be performed, but
`rather, states that three-dimensional wall thickness data may be “used in
`mathematical calculations predicting performance of the tubular under
`certain conditions,” as well as in “engineering calculations and/or programs
`which predict response of the tubular to various stressors[.]” Id. at 3:29–35.
`
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`C. Illustrative Claim
`Claim 6, which depends from now-canceled claims 1 and 2, is
`illustrative of the claimed subject matter. Claim 6 and the canceled claims
`from which it depends, are reproduced below.
`1. Method for collection and storage of information
`representing wall thickness of tubular goods, comprising:
`a.
`selecting a section of the wall of a tubular
`good about which information representing wall thickness
`is to be acquired and then stored in a format readable by
`computer means;
`b.
`determining number and spacing of discrete
`portions within said section of the wall of said tubular
`good which will produce information representing wall
`thickness of said section of the wall of said tubular good
`having desired resolution;
`c.
`at each of said discrete portions, causing said
`ultrasonic detection means to determine the thickness of
`the wall of said tubular good;
`d.
`at each of said discrete portions, determining
`the longitudinal position of said ultrasonic detection
`means along the axis of said tubular good;
`e.
`at each of said discrete portions, determining
`the circumferential position of said ultrasonic detection
`means about the circumference of said tubular good; and,
`f.
`at each of said discrete portions making a
`computer readable recording of said wall thickness,
`longitudinal and circumferential positions in an associated
`relationship.
`Ex. 1001, 9:36–60.
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`The method of claim 1 wherein said number of said
`2.
`discrete portions within said section of the wall of said tubular
`good is greater than two for each circumference of said tubular
`good.
`Ex. 1001, 9:61–64.
`6.
`The method of claim 2 further comprising the step
`of causing a computer means to use at least some of the
`information contained in said computer readable recording to
`compute the effect of stressors on the wall of said tubular good.
`Ex. 1001, 10:13–17. Claims 4, 9, 11, 14, 16, 18, and 20 likewise require the
`use, by a computer, of “at least some of the information contained in said
`computer readable recording to compute the effect of stressors on the wall of
`said tubular good.” Id. at 10:3–12:8.
`
`D. Prior Art Relied Upon
`Petitioner relies upon the following prior art references (Pet. 5–6):
`Kiefer
`US 5,641,909
`June 24, 1997
`(Ex. 1003)
`Lam
`US 2003/0033880 A1
`Feb. 20, 2003
`(Ex. 1004)
`Assanelli, et al., Collapse Behavior of Casings: Measurement Techniques,
`Numerical Analyses and Full Scale Testing, 1998 SPE/ATW Risk Based
`Design of Wall Casing and Tubing Conference (1998) (Ex. 1005).
`Petitioner also relies on the Declaration of John P. Rodgers, Ph.D.
`(Ex. 1007) and the Supplemental Declaration of Dr. Rodgers (Ex. 1027).
`Patent Owner relies on the Declarations of William J. Emblom, Ph.D.
`(Ex. 2001), C. Mike Webre (Ex. 2002), and George M. Sfeir (Ex. 2003).
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`E. The Instituted Grounds of Unpatentability
`We initially instituted inter partes review of the ’518 patent on the
`following grounds (Inst. Dec. 46):
`
`Claims
`1–3, 5, 7, 8, 10, 12, 13, 15, 17, 19
`1, 2
`1, 2, 5, 6, 10, 11, 15, 16, 19, 20
`4, 6, 9, 11, 14, 16, 18, 20
`5, 6, 19, 20
`5, 19
`
`Reference(s)
`Basis
`§ 102(b) Kiefer
`§ 102(b) Lam
`§ 102(b) Assanelli
`§ 103(a) Kiefer and Assanelli
`§ 103(a) Lam and Assanelli
`§ 103(a) Lam and Kiefer
`
`Subsequent to the Supreme Court’s decision in SAS, and in view of
`Agency Guidance, we modified our Decision on Institution to include each
`patentability challenge set forth in the Petition (Paper 47, 2):
`
`Claims
`1–3, 5, 7, 8, 10, 12, 13, 15, 17, 19
`1–3, 5, 7, 8, 10, 12, 13, 15, 17, 19
`1, 2, 5, 6, 10, 11, 15, 16, 19, 20
`4, 6, 9, 11, 14, 16, 18, 20
`4–6, 9–11, 14–16, 18–20
`5, 10, 15, 19
`
`Reference(s)
`Basis
`§ 102(b) Kiefer
`§ 102(b) Lam
`§ 102(b) Assanelli
`§ 103(a) Kiefer and Assanelli
`§ 103(a) Lam and Assanelli
`§ 103(a) Lam and Kiefer
`
`On April 5, 2018, Patent Owner filed a 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. In addition, on July 6, 2018, the parties
`filed a Joint Motion to Limit the Petition to the grounds on which we
`originally instituted the proceeding. Paper 48. We granted each of these
`motions on July 11, 2018 (Paper 50). Accordingly, this Final Written
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`Decision addresses only the following claims and grounds of
`unpatentability, which remain for 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
`
`II. ANALYSIS
`A. Level of Ordinary Skill in the Art
`The level of skill in the art is a factual determination that provides a
`primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v.
`VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John
`Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950
`F.2d 714, 718 (Fed. Cir. 1991)). “The person of ordinary skill in the art is a
`hypothetical person who is presumed to know the relevant prior art.” In re
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In defining the person of
`ordinary skill, the Board may consider various factors, including, the “type
`of problems encountered in the art; prior art solutions to those problems;
`rapidity with which innovations are made; sophistication of the technology;
`and educational level of active workers in the field.” Id. (quoting Custom
`Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962–963 (Fed.
`Cir. 1986)). “These factors are not exhaustive but are merely a guide to
`determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v.
`Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). In addition, the applied
`prior art reflects the appropriate level of skill at the time of the claimed
`invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
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`Petitioner asserts that a person of ordinary skill in the art at the time of
`the invention of the ’518 patent would have had “at least a Bachelor of
`Science degree in mechanical, petroleum, or chemical engineering and at
`least 2–3 years of experience with pipe testing technology.” Pet. 9; Ex. 1007
`¶ 16. Petitioner further asserts that such an artisan would have been familiar
`with ultrasonic pipe inspection methods, would have recognized that such
`methods could be used to scan either the inside or outside of a tubular to
`yield the same results, and would have known how to use commercially
`available software to create three-dimensional models of a tubular, as well as
`to perform finite element analysis of a tubular. Pet. 9–11; Ex. 1007 ¶¶ 17–
`24.
`
`Patent Owner responds that Petitioner “substantially overstates the
`qualifications” of an ordinarily skilled artisan “in the field of pipe testing.”
`PO Resp. 34. Patent Owner does not endeavor to specifically define the
`relevant artisan, but appears to contend that such an artisan would not
`necessarily have had a college degree, and would not have been capable of
`developing the computational algorithms purportedly required to perform
`the claimed methods of stress analysis. See PO Resp. 35–36 (describing
`Mr. Webre’s and Mr. Sfeir’s opinions regarding the level of ordinary skill in
`the field). Patent Owner supports its contentions with the Declaration of
`C. Mike Webre (Ex. 2002), proffered as an expert witness concerning the
`level of skill in the field at the time of invention of the ’518 patent, and the
`Declaration of George M. Sfeir (Ex. 2003), the President of Patent Owner.
`The contours and effect of Patent Owner’s contentions concerning the
`level of ordinary skill in the field are somewhat unclear, as Patent Owner’s
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`declarant concerning the patentability of the ’518 patent, Dr. Emblom,
`accepts Petitioner’s definition of a relevant skilled artisan in his declaration.
`Ex. 2001, 3. Nevertheless, because arguments concerning the level of
`ordinary skill in the field feature prominently in Patent Owner’s Response to
`Petitioner’s obviousness challenges (see, e.g., PO Resp. 34–38), we address
`the level of ordinary skill in the field in detail.
`Resolution of the level of ordinary skill in the field requires
`identification of the attributes of “the person of ordinary skill in the art to
`which the invention pertains, not those who may use the invention.” In re
`Grout, 377 F.2d 1019, 1022 (C.C.P.A. 1967) (“It is alleged that a problem
`existed in the support of honeycomb foundations which appellant solved.
`While this problem would be encountered by a beekeeper, we think the
`problem naturally calls for the talents of one skilled in the art of fasteners.”).
`The ’518 patent is addressed to improved methods for the non-destructive
`inspection of metal tubular goods. Ex. 1001, 1:15–16. As such, a relevant
`ordinarily skilled artisan would have had the educational and experiential
`background necessary to develop methods of tubular inspection, not simply
`to use known tubular testing procedures, as Patent Owner (PO Resp. 35) and
`its declarants, Mr. Webre (Ex. 2002 ¶¶ 11–12) and Mr. Sfeir (Ex. 2003, 3),
`suggest. See DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
`Patrick Co., 464 F.3d 1356, 1363 (Fed. Cir. 2006) (“Because, for this patent,
`the only finding supported by substantial evidence is that an ordinary artisan
`is not a dyer but a person designing an optimal dyeing process, the jury’s
`implicit finding of a mere dyer cannot withstand scrutiny on JMOL.”).
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`Furthermore, we agree with Petitioner and Dr. Rodgers that the
`sophistication of the technology, as well as the problem of, and solutions for,
`developing more efficient and reliable methods of tubular inspection
`disclosed in the prior art, reflect a level of ordinary skill consistent with that
`advanced by Petitioner. Pet. 9–11; Ex. 1007 ¶¶ 15–25. In this regard, we
`credit Dr. Rodgers’ testimony that the cited prior art “shows that pipe
`inspection methods and systems were well-known in the field at the time of
`the earliest priority date of the ‘518 patent so a POSITA would have been
`exposed to one or more commercially available options and would like have
`had hands-on experience as well.” Ex. 1007 ¶ 16; Pet. 10–11. For example,
`as Dr. Rodgers testifies, “Assanelli discloses a methodology for accurately
`predicting the collapse pressure of subsea pipeline tubulars using
`three-dimensional models that incorporate measured imperfections in the
`pipe. The methodology provides for more accurate predictions than prior
`methods that did not account for measured imperfections in the pipe
`geometry.” Ex. 1007 ¶ 147 (internal citation omitted). Indeed, Assanelli
`expressly teaches that although the “bidimensional representation of tube
`geometry” attainable from two-dimensional finite element models “is not
`enough for determining the external collapse pressure of casings,” the
`three-dimensional models disclosed by Assanelli permit “further
`investigat[ion of] the effects of the casing geometry on its external collapse
`pressure.” Ex. 1005, 1.
`In addition, the ’518 patent itself illustrates the sophistication of the
`technology at issue, and supports Petitioner’s and Dr. Rodgers’ definition of
`the level of ordinary skill in the field. As Dr. Rodgers explains, the
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`’518 patent “describes the use of commercially available ‘simulative/
`comparative programs’ to create a three-dimensional object,” but does not
`explain “how to use these programs, which is evidence that the Patent
`Owner thought this would already be known to a POSITA and would not
`need to be explained in the patent.” Ex. 1007 ¶ 18 (quoting Ex. 1001, 1:28–
`32; Pet. 10–11. We agree with Dr. Rodgers that the paucity of explanation
`in the ’518 patent suggests that an ordinarily skilled artisan would have
`known that such programs existed and understood how to use them.
`In view of the evidence described above, including the sophistication
`of the technology at issue, and the problems encountered and solutions
`disclosed in the prior art, we do not find persuasive either Mr. Webre’s or
`Mr. Sfeir’s opinions concerning the level of ordinary skill in the field.
`Mr. Webre’s opinion that a relevant skilled artisan would have been “a
`person that was exposed to tubular inspection methods and equipment that
`was in commercial use by providers of tubular inspection services or as a
`user of pipe inspection services” (Ex. 2002 ¶ 11) is based on the faulty
`premise that an ordinarily skilled artisan would have been one who uses
`tubular inspection techniques, rather than one who develops them.
`Furthermore, Dr. Webre’s opinion does not comport with the level of
`sophistication of the ’518 patent or the prior art, each of which addresses the
`development of improved methods of pipe inspection, not the rote use of
`commercially available products. Mr. Webre’s reference to the purported
`educational criteria for obtaining nondestructive testing certification does
`not cure the defects in his opinion, as Mr. Webre does not explain what such
`certification entails, or whether one so certified would be an artisan of
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`ordinary skill in the relevant field, i.e., the development of tubular inspection
`techniques. In addition, Mr. Webre’s unsupported, conclusory testimony
`that Assanelli was “inconsistent” with the “then-current industry standard”
`screening (Ex. 2002 ¶ 16) is unpersuasive, entitled to little weight (37 C.F.R.
`§ 42.65(a)), and seemingly beyond the scope of his engagement to testify
`regarding the level of ordinary skill in the art at the time of invention of the
`’518 patent (Ex. 2002 ¶¶ 1–2).
`Mr. Sfeir’s opinion, which expressly excludes those with “the
`education, training, experience or motivation to attempt to develop a new,
`allegedly better, way to calculate pipe collapse pressure” as ordinarily
`skilled artisans (Ex. 2003, 3) suffers from the same shortcomings as
`Mr. Webre’s opinions, in that it ignores the level of sophistication of the
`technology and prior art at issue. In addition, Mr. Sfeir does not provide
`evidentiary support for his opinions; as such, we give them little weight
`(37 C.F.R. § 42.65(a)).
`Accordingly, we find that Petitioner’s description of a relevant skilled
`artisan as possessing at least a Bachelor of Science degree in mechanical,
`petroleum, or chemical engineering, and having at least 2–3 years of
`experience with pipe testing technology is supported by the record as a
`whole, and adopt that portion of Petitioner’s description of the level of
`ordinary skill in the field for purposes of this Decision. Pet. 9–11; Ex. 1007
`¶¶ 15–25. We also agree with Petitioner that a relevant artisan of ordinary
`skill would have been exposed to, and had experience with, known tubular
`inspection systems and methods, as well as the use of existing computer
`software to perform stress analyses. Ex. 1007 ¶¶ 16–18; Pet. 10–11. We
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`further note that the applied prior art reflects the appropriate level of skill at
`the time of the claimed invention. See Okajima, 261 F.3d at 1355.
`We recognize each of Petitioner’s and Patent Owner’s declarants as
`qualified to provide the proffered opinions on the level of skill and the
`knowledge of a person of ordinary skill in the art at the time of the
`invention. The relative weight that we assign such testimony, however, is
`subject to additional factors. See, e.g., 37 C.F.R. § 42.65(a) (“Expert
`testimony that does not disclose the underlying facts or data on which the
`opinion is based is entitled to little or no weight.”); Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012) (same).
`Petitioner does not challenge the expertise of any of Patent Owner’s
`declarants in its Reply or Sur-Reply.4 Patent Owner, however, asserts that
`Petitioner’s declarant, Dr. Rodgers is unqualified to opine in this matter
`because “Dr. Rodgers has never been a POSITA” “in the field of art
`pertaining to inspection of tubular members” (PO Resp. 36). Patent Owner
`acknowledges that Dr. Rodgers “has a great deal of education, training and
`experience in many fields,” but nevertheless asserts that because none of
`Dr. Rodgers’ patents or publications is specifically addressed to the
`“inspection of pipe by the ultrasonic means found in the ’518 Patent (let
`alone Kiefer, Lam or Assanelli)” (id.), Dr. Rodgers’ testimony should be
`discounted, and he should be rejected as an ordinarily skilled artisan (id. at
`37–38). Patent Owner additionally contends that Dr. Rodgers’ opinions
`
`
`4 As discussed in Section III, below, Petitioner filed an unauthorized Motion
`to Strike Dr. Emblom’s testimony (Paper 35), which we deny.
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`should be called into question because he does not identify a single artisan of
`ordinary skill “who, in 2003, was using, was working on using, or had even
`conceived of using data, collected by ultrasonic means, which was stored in
`computer readable format to manually or by computer [] calculate strength
`of pipe proposed to be used in a particular application.” Id. at 38.
`Dr. Rodgers is a licensed engineer with fifteen years of experience,
`the bulk of which relates to work in the oil industry, and includes experience
`developing “ultrasonic casing inspection tools that operate downhole to
`interrogate the pipe embedded in the wellbore.” Ex. 1007 ¶ 9. Dr. Rodgers
`is a named inventor on 29 U.S. patents, and has authored more than
`15 publications relating to the oil industry. Id. ¶¶ 10–11. Although not
`specifically addressed to the inspection of tubulars prior to their insertion
`down-hole, Dr. Rodgers is a named inventor on at least one patent
`concerning the use of ultrasonic transducer inspection technology in oilfield
`tubulars. Id. ¶ 11; see PO Resp. 36 (acknowledging that Dr. Rodgers’
`patents describe the use of an ultrasonic transducer to “detect[] when
`down-hole pipe or drilling bits are developing problems during use in a
`wellbore”). In addition, Dr. Rodgers holds Ph.D. and M.S. degrees from the
`Massachusetts Institute of Technology, where his research focused on the
`“development and application of ultrasonic transducer materials applied to
`structural vibration control” (Ex. 1007 ¶ 8), as well a B.S. degree in
`mechanical engineering with a second major in mathematics from Duke
`University (id. ¶ 7).
`Based on Dr. Rodgers’ substantial credentials and experience,
`including specific experience in the development of ultrasonic tubular
`16
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`inspection tools, we determine that Dr. Rodgers is qualified to provide
`expert testimony in this matter. See Endress + Hauser, Inc. v. Hawk
`Measurement Sys. Pty. Ltd., 122 F.3d 1040, 1042 (Fed. Cir. 1997) (finding
`witness proffered as an expert in field of ultrasonic level-measuring
`equipment was qualified to testify in view of “substantial credentials as an
`electrical engineer”); Norgren Inc. v. Int’l Trade Comm’n, 699 F.3d 1317,
`1325 (Fed. Cir. 2012) (“Because the person having ordinary skill in the art is
`a ‘theoretical construct’ and is ‘not descriptive of some particular
`individual,’ ‘a person of exceptional skill in the art’ should not be
`disqualified because he or she is ‘not ordinary enough.’” (internal citations
`omitted)).
`
`B. Claim Construction
`In an inter partes review, the Board interprets claim terms in an
`unexpired patent according to the broadest reasonable construction in light
`of the specification of the patent in which they appear. 37 C.F.R.
`§ 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016)
`(affirming applicability of broadest reasonable construction standard to inter
`partes review proceedings). Under that standard, and absent any special
`definitions, we give claim terms their ordinary and customary meaning, as
`would be understood by one of ordinary skill in the art at the time of the
`invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). Additionally, any special definitions for claim terms must be set
`forth with reasonable clarity, deliberateness, and precision. In re Paulsen,
`30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`17
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`
`Petitioner and Patent Owner propose constructions for certain claim
`terms. Pet. 15–22; PO Resp. 12–13. As relevant to this Decision, we
`address the following claim terms.
`
`1. “causing a computer means to . . .
`compute the effect of stressors”
`In the Decision on Institution, we concluded that the broadest
`reasonable interpretation of the claim phrase “causing a computer means to
`use at least some of the information contained in said computer readable
`recording to compute the effect of stressors on the wall of said tubular
`good,” recited in each of the challenged claims, is “causing a computer to
`use at least some of the information contained in the computer readable
`recording to compute the effect, on the strength of the tubular, of stressors
`applied to the tubular.” Inst. Dec. 8.
`Although the parties do not directly challenge our prior construction,
`Patent Owner emphasizes that “the term ‘computer’ should be interpreted in
`accordance with the plain, ordinary and commonly understood meaning of
`the word –– that is, a device that is capable of and is used to perform
`mathematical calculations from properly formatted data input to it.” PO
`Resp. 13.
`The challenged claims expressly require the use of a “computer means
`to . . . compute the effect of stressors on the wall of said tubular good”
`(Ex. 1001, 10:4–7), and that requirement is captured by our construction of
`that claim phrase to mean “causing a computer to use at least some of the
`information contained in the computer readable recording to compute the
`effect, on the strength of the tubular, of stressors applied to the tubular”
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`(Inst. Dec. 8). To the extent Patent Owner contends that the term
`“computer” should be understood in accordance with its plain and ordinary
`meaning, i.e., as referring to a device for performing calculations on data, we
`agree, and observe that such understanding is captured by our original
`construction. Accordingly, for the reasons above, as well as those set forth
`in the Decision to Institute (id.), we construe the phrase “causing a computer
`means to use at least some of the information contained in said computer
`readable recording to compute the effect of stressors on the wall of said
`tubular good” to mean “causing a computer to use at least some of the
`information contained in the computer readable recording to compute the
`effect, on the strength of the tubular, of stressors applied to the tubular.”
`We further note that there is no meaningful dispute between the
`parties concerning the interpretation of “computer,” as Petitioner contends
`that Assanelli discloses the use of a computer to perform calculations, i.e.,
`finite element analysis (“FEA”) or finite element modeling (“FEM”),5 using
`data obtained from inspection of a tubular good in order to model the effect
`of various stresses on that tubular good. See, e.g., Pet. 39–40 (describing the
`data acquisition and FEA modeling steps disclosed by Assanelli).
`
`2. Other Claim Terms
`In view of our analysis, we determine that no additional claim terms
`require construction for the purpose of this Decision. See Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017
`
`
`5 FEA and FEM are used interchangeably in the prior art and throughout this
`Decision.
`
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`(Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy,
`and only to the extent necessary to resolve the controversy.’” (quoting Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`
`C. Prior Art Relied Upon
`1. Assanelli
`Assanelli discloses the use of three-dimensional modeling to predict
`the effects of casing (i.e., tubular) geometry––including wall thickness––on
`the external collapse pressure for that casing. Ex. 1005, 1. Assanelli
`explains that wall thickness contributes to many of the factors that influence
`the external pressure at which a steel pipe will collapse, including: the ratio
`of outside pipe diameter to wall thickness; the yield stress of the pipe; the
`shape of pipe sections (outside diameter shape and thickness distribution);
`the residual stresses locked in the pipe steel; and the localized imperfections
`introduced in production or handling, or due to localized wear. Id. at 1, 4.
`Assanelli also observes that it is normal for wall thickness to change along
`the length of a pipe. Id. at 1.
`Assanelli describes the acquisition of geometrical information from
`test pipes with an “imperfection measuring system” (“IMS”), and the use of
`that information as input data for three-dimensional finite element models to
`predict pipe collapse pressure. Ex. 1005, 1. Assanelli discloses the
`performance of “in-depth pipe outside diameter (OD) and thickness
`mappings,” and explains that pipe wall “thickness i
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