Trials@uspto.gov
`571-272-7822
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` Paper No. 16
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` Entered: July 28, 2017
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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 J. JOHN LEE, MINN CHUNG, and JACQUELINE T. HARLOW,
`Administrative Patent Judges.
`
`HARLOW, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
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`
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`
`
`571-272-7822
`
`
`
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`
`
`
` Paper No. 16
`
`
` Entered: July 28, 2017
`
`
`
`
`
`
`
`
`
`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 J. JOHN LEE, MINN CHUNG, and JACQUELINE T. HARLOW,
`Administrative Patent Judges.
`
`HARLOW, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-00699
`Patent 7,401,518 B2
`
`
`INTRODUCTION
`I.
`National Oilwell Varco, L.P. (“Petitioner”) filed a Petition requesting
`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.”).
`We have authority to determine whether to institute an inter partes review
`under 35 U.S.C. § 314, which provides that an inter partes review may not
`be instituted unless the information presented in the petition “shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.”
`For the reasons set forth below, we institute an inter partes review of
`claims 1–20 of the ’518 patent.
`
`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.
`
`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
`
`
`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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`Patent 7,401,518 B2
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`8, 2004, and now issued as U.S. Patent No. 7,263,887.2 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)
`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
`
`
`2 U.S. Patent No. 7,263,887 B2 is the subject of IPR2017-00648.
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`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.
`
`C. Illustrative Claim
`Each of the challenged claims depends, directly or indirectly, from
`claim 1, which is reproduced below and is illustrative of the claimed subject
`matter.
`
`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;
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`at each of said discrete portions, determining
`e.
`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. Claims 2–20 impose further limitations concerning: the
`number (claims 2, 7, 12) or spacing (claims 3, 8, 13, 17) of discrete portions
`for which wall thickness measurements are taken; 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”
`(claims 4, 6, 9, 11, 14, 16, 18, 20); and the use, by a computer, of “at least
`some of the information contained in said computer readable recording to
`display wall of the tubular good in virtual three-dimensional form” (claims
`5, 10, 15, 19). Id. at 9:61–12:8.
`
`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).
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`E. The Asserted Grounds of Unpatentability
`
`Petitioner challenges the patentability of claims 1–20 of the
`’518 patent on the following grounds (Pet. 5–6):
`
`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
`
`References
`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
`
`II. ANALYSIS
`A. 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).
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`Petitioner proposes constructions for certain claim terms. Pet. 14–21.
`As relevant to this Decision, we address the proposed construction of
`“compute the effect of the stressors.”
`
`1. “compute the effect of stressors”
`Dependent claims 4, 6, 9, 11, 14, 16, 18, and 20 each recite “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, 10:3–7, 10:13–17, 10:27–31, 10:37–41,
`10:51–55, 10:61–65, 11:4–8, 12:4–8.
`Petitioner asserts that the broadest reasonable interpretation of the
`phrase “compute the effect of stressors” is “using a computer to analyze
`defects caused by stress applied to the tubular.” Pet. 20. In support of its
`position, Petitioner points out that the specification describes using data
`concerning wall thickness and position “in computations which predict the
`actual effect on the tubular to various stressors, including tensile, bending,
`collapse and burst forces, aging, etc.” (Ex. 1001, 8:66–9:2), as well as “to
`accurately predict, prior to failure of the tubular, when failure is likely to
`occur” (id. at 9:4–6). Pet. 20. Petitioner also relies on Dr. Rodgers’
`testimony concerning how a relevant skilled artisan would have understood
`the term. Id. (citing Ex. 1007 ¶¶ 86–88).
`Patent Owner does not directly respond to Petitioner’s proposed
`construction. Nevertheless, Patent Owner appears to contend that “compute
`the effect of stressors” means “compute the strength” of a tubular. Prelim.
`Resp. 19 (“[E]mploying a ‘computer’ to calculate strength (effect of
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`stressors) on tubular goods which is specifically specified in the language of
`Claim 6, 11, 16 and 20.”); see also id. at 10 (“[W]herein said computer is
`actually used to calculate (‘compute’) the true, actual strength of the pipe.”).
`At this stage in the proceeding, and based on the current record, we
`determine that the broadest reasonable interpretation of 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” 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.” In
`arriving at this interpretation, we observe that the specification of the ’518
`patent identifies “tensile, bending, collapse and burst forces, aging” as
`exemplary stressors that may weaken a tubular, rendering it susceptible to
`failure. Ex. 1001, 9:1–2. Further, the specification repeatedly emphasizes
`using wall thickness and position data to predict when failure is likely to
`occur in order to “avoid same, but at the same time maximize use of the
`tubular” as central to the invention. Id. at 9:6–7; see also id. at 1:35–40,
`8:16–20. We also observe that our claim interpretation encompasses the
`analysis of defects that is the focus of Petitioner’s proposed construction, as
`well as the concept of stressors affecting wall strength that is central to
`Patent Owner’s proffered interpretation, without improperly limiting the
`meaning of the claim phrase to require the presence of defects as proposed
`by Petitioner. We note, however, that our institution analysis is not
`materially affected by whether the construction we adopt, Petitioner’s
`proposed construction, or Patent Owner’s proposed construction is applied.
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`2. Other terms
`In view of the above analysis, we determine that no additional claim
`terms require construction for the purpose of this Decision. See Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
`(Only terms which are in controversy need to be construed, and only to the
`extent necessary to resolve the controversy).
`
`B. 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)).
`Petitioner asserts that a person of ordinary skill in the art at the time of
`the invention 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 does not appear to dispute the educational or
`experiential aspects of Petitioner’s definition. Patent Owner takes issue,
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`however, with the contention that a relevant skilled artisan would have been
`familiar with the software products highlighted by Petitioner and
`Dr. Rodgers, and further that such an artisan would have recognized that
`those software products would be useful in calculating tubular strength and
`determining whether a particular tubular was suitable for use in a particular
`well. Prelim. Resp. 27–28.
`At this stage in the proceeding, we determine 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 current record. For purposes of this Decision, therefore, we
`adopt this portion of Petitioner’s description. We decline, however,
`Petitioner’s invitation to subsume the patentability analysis into our
`determination of the level of ordinary skill in the art by making findings
`regarding what software applications a relevant skilled artisan would have
`been familiar with, and how such an artisan would have used those
`applications at the time of invention of the ’518 patent.
`We also note that 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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`C. Anticipation Ground of Unpatentability
`Based on Kiefer
`
`Petitioner asserts that claims 1–3, 5, 7, 8, 10, 12, 13, 15, 17, and 19
`are anticipated under § 102(b) by Kiefer. Pet. 21–30. In response, Patent
`Owner states that it will disclaim the challenged claims.3 Prelim. Resp. 10.
`Patent Owner additionally appears to disagree with Petitioner’s assertions as
`to dependent claims 2, 3, 7, 8, 12, 13, and 17. Id. at 16–17.
`
`1. Kiefer
`Kiefer discloses an apparatus that “provides one hundred percent
`inspection of the walls of gas mains under operating flow conditions through
`the use of a unique scanning unit which is inserted into working gas mains to
`collect [data] for production of graphic images of the wall forming the gas
`main.” Ex. 1003, 1:46–51. Kiefer teaches that the inspection apparatus
`“contains an ultrasonic transducer which directs an interrogating pulse into
`the wall of the gas main at a pre-determined angularly spaced-apart interval”
`such that “[t]he interrogating pulses form a helical scan pattern.” Id. at
`1:64–2:4. Kiefer further explains that
`[t]he return pulses (reflective pulses) from the surfaces defining
`the inner diameter and outer diameter of the gas main and any
`imperfections or flaws within the wall of the main are received
`by the transducer, converted into digital form, and are
`subsequently transmitted to a surface unit which produces a
`
`3 Because 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.
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`tomograph of the wall of the gas main. In essence, a model of
`the condition of the surfaces defining the inner diameter and
`outer diameter of the gas main and a cross-sectional view of the
`wall of the gas main is generated over the length of the main.
`Id. at 2:4–14; see also id. at 5:26–45.
`Figure 8 of Kiefer is reproduced below.
`
`Figure 8 is a tomograph of a gas main produced by the scan unit assembly of
`Kiefer. Kiefer explains that “[f]rom such a tomographic image, the surfaces
`defining the inner and outer diameters of the wall of the gas main and any
`imperfections or flaws within the wall of the gas main can be examined and
`accurate physical dimensions of same can be determined.” Id. at 5:41–45.
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`2. Anticipation Analysis
`In support of its contention that Kiefer teaches each step of the
`method recited in claim 1, Petitioner asserts that “Kiefer discloses using
`ultrasonic means to inspect a section of a wall of a tubular to obtain
`associated measurements for wall thickness, longitudinal position, and
`circumferential position” taken along “‘one hundred percent’ of the tubular
`as the ultrasonic detection means is moved axially and rotatably through the
`tubular.” Pet. 21; see also Ex. 1003 Abstract, 1:46–2:25, 5:19–37, Figs. 7,
`8; Ex. 1007 ¶ 94. Petitioner states that Kiefer teaches an assembly that is
`advanced longitudinally down the length of a tubular, while simultaneously
`being rotated 360 degrees around the circumference of the tubular such that
`the assembly is able to scan 100 percent of the tubular wall. Pet. 22;
`Ex. 1003, 3:11–53; Ex. 1007 ¶ 95. Petitioner further explains that Kiefer
`teaches that the “ultrasonic transducers transmit interrogating pulses into the
`wall of the gas main at a pre-determined spaced apart interval resulting in a
`helical scan pattern of interrogating pulses” (Ex. 1003, Abstract). Pet. 24;
`Ex. 1007 ¶ 100.
`Petitioner also contends that “Kiefer confirms that, for every wall
`thickness measurement that is taken, there are corresponding ‘polar
`coordinates’ identifying where exactly (longitudinally and circumferentially)
`in the tubular wall the thickness measurement was taken.” Pet. 22;
`Ex. 1003, 5:26–45; Ex. 1007 ¶ 95. In particular, Petitioner points to Kiefer’s
`disclosure that
`Each of the sensor sections 12, 50 contains a computer (not
`shown) which maintains a record of the polar co-ordinates of
`each interrogating pulse which is transmitted into the wall of the
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`gas main and the return pulses received from the surfaces
`defining the inner diameter and the outer diameter of the gas
`main and any imperfections or flaws within the wall of the gas
`main. Thus, a record is compiled which can be processed into
`computer generated images of the gas main resulting in a
`tomograph, similar to that shown in FIG. 8, of the gas main.
`Pet. 24 (quoting Ex. 1003, 5:31–42); Ex. 1007 ¶¶ 100–101; see also
`Ex. 1003, 5:26–32 (“If the ultrasonic transducer 46 associated with each
`scan roller 20 is selectively actuated as the scan unit assembly 10 moves
`within the gas main 18, a model of the wall of the gas main showing wall
`thickness and sub-surface imperfections . . . can be generated.”).
`Turning to claims 2, 7, and 12, which depend from claim 1, and
`further require that wall thickness measurements be taken at greater than 2,
`64, and 360 discrete portions, respectively, within the section of the tubular
`wall, Petitioner asserts that Kiefer “discloses taking ‘one or more’
`measurement ‘per one degree of rotation . . .’ for an entire 360 degrees,
`which would include greater than three hundred and sixty discrete portions
`for each circumference.” Pet. 29 (quoting Ex. 1003, 6:55–60); Ex. 1007
`¶ 114; see also Pet. 26, 28; Ex. 1007 ¶¶ 107, 111.
`With regard to claims 3, 8, 13, and 17, which depend, respectively,
`from claims 2, 7, 12, and 1, Petitioner asserts that Kiefer “expressly
`discloses taking snapshots of partially overlapping discrete portions because
`it discloses covering a complete ‘one hundred percent’ of the wall of the
`tubular, which would include creating overlapping snapshots so that the
`complete wall of the tubular would be covered.” Pet. 27 (quoting Ex. 1003,
`Abstract); Ex. 1007 ¶ 108; see also Pet. 28–30; Ex. 1003, 5:10–45; Ex. 1007
`¶¶ 112, 115, 117. Petitioner further contends that a relevant skilled artisan
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`would have understood “Kiefer’s disclosure of taking ‘one or more’
`measurements per degree to inherently disclose taking overlapping
`measurements because this is the necessary result when this many
`measurements are taken with the commercially available transducers from
`the relevant time period.” Pet. 27 (quoting Ex. 1003, 6:55–60); Ex. 1007
`¶ 109; see also Pet. 28–30; Ex. 1007 ¶¶ 112, 115, 117.
`Based upon our review of the current record, we agree with
`Petitioner’s characterization of Kiefer.
`Patent Owner asserts that Kiefer fails to disclose determining pipe
`wall thickness with the “density” of measurements recited in the challenged
`claims. Prelim. Resp. 17. In support of its position, Patent Owner states that
`“Kiefer (including, without limitation, FIGS 7 and 8 thereof) clearly shows
`that gaps or spaces exist between thickness readings.” Id.
`We do not agree. Neither Figure 7 nor Figure 8 of Kiefer purports to
`depict the density of wall thickness measurements acquired by the disclosed
`ultrasonic transducer. Rather, Figure 7 graphically depicts the “helical scan
`pattern” of Kiefer’s scan unit assembly (Ex. 1003, 2:51–53), and Figure 8
`shows a “typical tomograph of a gas main” produced by Kiefer’s scan unit
`assembly (id. at 2:55–57). Neither figure identifies the location of wall
`thickness measurements, much less addresses whether there is overlap in the
`discrete portions of the tubular subject to such measurements. Furthermore,
`Patent Owner does not respond to Petitioner’s contentions, discussed above,
`that Kiefer teaches performing one or more wall thickness measurements per
`degree of circumferential rotation (see, e.g., Pet. 29), and that Kiefer
`“expressly discloses taking snapshots of partially overlapping discrete
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`portions because it discloses covering a complete ‘one hundred percent’ of
`the wall of the tubular, which would include creating overlapping snapshots
`so that the complete wall of the tubular would be covered.” Id. at 27
`(quoting Ex. 1003, Abstract); see also Ex. 1007 ¶ 109. Nor does Patent
`Owner address Petitioner’s contention that the measurement frequency
`disclosed by Kiefer necessarily would have resulted in overlapping discrete
`sections using transducers available at the time of invention of the ’518
`patent (see, e.g., id. at 29).
`We are similarly unpersuaded by Patent Owner’s unelaborated
`statement that “nothing in Kiefer discloses or contemplates the use of a
`computer means to compute the effect of stresses on the wall of a tubular
`good” (Prelim. Resp. 17), as that statement does not appear to be directed to
`any of the claims challenged under this asserted ground of unpatentability.
`Accordingly, based on the information presented at this stage of the
`proceeding, and in light of our preliminary claim constructions, we
`determine that Petitioner has shown sufficiently that there is a reasonable
`likelihood that it would prevail in establishing anticipation of claims 1–3, 7,
`8, 12, 13, and 17 by Kiefer. Further, at this stage in the proceeding, for
`reasons discussed by Petitioner (see Pet. 21–30), we are satisfied that
`Petitioner has established a reasonable likelihood that it would prevail in
`showing the anticipation of dependent claims 5, 10, 15, and 19 by Kiefer.
`We, therefore, institute an inter partes review of claims 1–3, 5, 7, 8, 10, 12,
`13, 15, 17, and 19.
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`D. Anticipation Ground of Unpatentability
`Based on Lam
`
`Petitioner asserts that claims 1–3, 5, 7, 8, 10, 12, 13, 15, 17, and 19
`are anticipated under § 102(b) by Lam. Pet. 30–39. Patent Owner does not
`substantively address Petitioner’s assertions with regard to those claims, but
`rather, states that it will disclaim claims 1–3, 5, 7, 8, 10, 12, 13, 15, 17, and
`19. Prelim. Resp. 10.
`
`1. Lam
`Lam discloses “[a] method for ultrasonically inspecting a tubular
`member.” Ex. 1004, Abstract. Lam teaches the use of ultrasonic electronic
`instrumentation to “indicate[,] locate, and measure I.D. flaws, O.D. flaws,
`wall thickness, and time of flight to the end of a tubular member.” Id. ¶ 54.
`Lam further explains that the disclosed method “is capable of examining
`almost all of the entire length of the tubular; and, in certain aspects, [] can
`accurately detect flaws including inner surface defects in substantially all of
`a tubular’s length and near or at its ends.” Id. ¶ 14.
`Figures 6A and 6B of Lam are reproduced below.
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`Figures 6A and 6B are, respectively, schematic lengthwise and end views of
`the tubular inspection system disclosed by Lam. Id. ¶ 35. Lam discloses
`that, during tubular inspection, transducer system 171 is pulled
`longitudinally down the length of pipe 161 by motor 179. Id. ¶ 48. Lam
`additionally explains that pipe 161 is simultaneously rotated radially by pipe
`rotation system 162. Id.
`Lam teaches that the transducer system produces data “indicative of
`tubular wall thickness (‘wall thickness’) which is transmitted to the
`computer 156 (as digital information from the ultrasonic instrumentation) for
`wall thickness determination, alarm if necessary, and/or display.” Id. ¶ 55.
`Lam further discloses that the tubular inspection system includes a
`programmable logic controller that is interconnected electronically with a
`computer, and that provides information to the computer concerning
`circumferential and longitudinal location of the transducer system. Id. ¶ 60;
`see also id. ¶ 72 (explaining that such data is in digital form). Lam also
`explains that the tubular inspection system may include “a graphical
`representation of a tubular being examined,” and describes various
`information that might be displayed to an operator. Id. ¶ 58.
`
`2. Anticipation Analysis
`In support of its contention that Lam teaches each step of the method
`recited in claim 1, Petitioner asserts that Lam discloses a method for
`ultrasonically inspecting, and detecting flaws in a tubular across almost the
`entire length of a tubular. Pet. 30; Ex. 1004, Abstract, ¶ 13; Ex. 1007 ¶ 119.
`Petitioner states that “Lam has a transducer system for scanning the entire
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`surface area of the wall of the tubular while recording wall thickness.”
`Pet. 30; Ex. 1004 ¶¶ 9, 54; Ex. 1007 ¶ 119. Petitioner explains that Lam’s
`ultrasonic transducer system is moved longitudinally, while the tubular is
`rotated 360 degrees, “so that the entire surface area of the pipe is inspected.”
`Pet. 30–31; Ex. 1004 ¶ 61; Ex. 1007 ¶ 120. Petitioner asserts that “[t]hese
`two ranges of motion (longitudinal and circumferential) allow the assembly
`to scan 100% of the tubular wall.” Pet. 31; Ex. 1007 ¶ 120.
`Petitioner further contends that Lam discloses determining the number
`and spacing of discrete portions of a tubular wall at which thickness
`measurements will be acquired by varying the advance speed and rotational
`speed of the ultrasonic sensors. Pet. 33; Ex. 1004 ¶¶ 11, 60; Ex. 1007 ¶ 126.
`Petitioner asserts additionally that the ultrasonic transducer system of
`Lam produces data “indicative of tubular wall thickness (‘Wall thickness’)
`which is transmitted to the computer 156 (as digital information from the
`ultrasonic instrumentation) for wall thickness determination, alarm if
`necessary, and/or display” (Ex. 1004 ¶ 56). Pet. 33; Ex. 1007 ¶ 125.
`Petitioner explains that Lam also discloses that the transducer system
`provides circumferential and longitudinal location information to a
`computer, and that such positional data, in combination with wall thickness
`information, may be used to generate a graphical representation of tubular
`being examined. Pet. 34–35; Ex. 1004 ¶¶ 58, 60, 72; Ex. 1007 ¶¶ 128–131.
`Concerning claim 2, which depends from claim 1, and further requires
`that wall thickness measurements be taken at greater than 2 discrete portions
`within the section of the tubular wall examined, Petitioner asserts that “Lam
`discloses recording wall thickness, longitudinal position, and circumferential
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`position at more than two discrete portions of the tubular wall by completing
`a ‘large percent coverage of the pipe wall’ through inspection” and
`“completely examin[ing]” the outer surface of a tubular. Pet. 36–38;
`Ex. 1004 ¶¶ 10, 57; Ex. 1007 ¶ 132.
`Turning to claims 7 and 12, which likewise depend from claim 1, and
`additionally require that wall thickness measurements be taken at greater
`than 64 and 360 discrete portions within the section of the tubular wall,
`respectively, Petitioner further asserts that Lam incorporates by reference
`Pont4 and Walters,5 which respectively disclose measuring wall thickness
`approximately 67 times, and up to 625 times, per circumference. Pet. 36–
`38; Ex. 1004 ¶¶ 6, 9, 11; Ex. 1007 ¶¶ 132, 139, 142. Petitioner does not
`explain, however, how the distinct disclosures of Lam and Pont, in the case
`of claim 7, or Lam and Walter, in the case of claim 12, show anticipation.
`See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir.
`2008) (“[I]t is not enough that the prior art reference . . . includes multiple,
`distinct teachings that the artisan might somehow combine to achieve the
`claimed invention.”); see also In re Arkley, 455 F.2d 586, 587 (CCPA 1972)
`(“The [prior art] reference must clearly and unequivocally disclose the
`claimed [invention] or direct those skilled in the art to the [invention]
`without any need for picking, choosing, and combining various disclosures
`not directly related to each other by the teachings of the cited reference.”).
`
`
`4 Pont, U.S. Patent No. 4,217,782, issued August 19, 1980 (Ex. 1010).
`5 Walters et al., U.S. Patent No. 5,007,291, issued April 16, 1991 (Ex. 1011).
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`The above deficiency as to claims 7 and 12 extends to claims 10 and
`15, which depend, respectively, therefrom.
`Regarding claims 3, 8, 13, and 17, which variously depend from
`claims 2, 7, 12, and 1, Petitioner asserts that Pont, which Lam incorporates
`by reference (Ex. 1004 ¶¶ 6, 11), teaches a preferred embodiment in which
`“the helical paths transcribed by the two inspection wheels will be tight
`enough (i.e., with a small enough pitch angle) so that the paths scanned by
`the transducers 156, 192 will overlap to give a confirming profile of wall
`thickness for all points on the pipe” (Ex. 1010, 8:38–54). Pet. 36–38;
`Ex. 1007 ¶¶ 133–134, 140, 143, 145. Again, Petitioner fails to explain how
`the distinct disclosures of Lam and Pont, in the case of claims 3, 8, and 17,
`or Lam, Walter, and Pont, in the case of claim 13, show anticipation. See
`Net MoneyIN, 545 F.3d at 1371.
`As to claims 5 and 19, which depend, respectively, from claims 2
`and 1, and require “causing
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