Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 34
`Date: April 23, 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 IPR2017-00860
`Case IPR2017-009101
`
`_____________
`
`
`
`Before THOMAS L. GIANNETTI, Administrative Patent Judge.
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 The parties are not authorized to use this caption.
`
`
`
`
`571-272-7822
`
`
`
`Paper 34
`Date: April 23, 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 IPR2017-00860
`Case IPR2017-009101
`
`_____________
`
`
`
`Before THOMAS L. GIANNETTI, Administrative Patent Judge.
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 The parties are not authorized to use this caption.
`
`
`
`
`
`IPR2017-00860
`IPR2017-00910
`
`
`BACKGROUND
`The patents in these two cases relate to inspection of pipes used in oil
`
`fields. In each of the proceedings, on April 12, 2018, Petitioner filed a paper
`captioned “Unopposed Motion for Leave to File a Motion to Strike the
`Expert Opinions of Technical’s William Emblom.” Paper 30.2 Each motion
`is accompanied by an exhibit captioned “Petitioner’s Motion to Strike the
`Proposed Expert Opinions of Patent Owner Technical’s William Emblom.”
`Ex. 1036.
`
`As is indicated by the captions of the papers, the motions seek to
`strike the testimony of one of Patent Owner’s technical experts, Dr. William
`Emblom. The motions allege Dr. Emblom “testified that he has no
`experience with pipe inspection, and further that his only experience with
`testing related to a ‘dune buggy’ and ‘channel section,’ not an oilfield pipe.”
`Ex. 1036, 2 (footnote omitted). Petitioner further alleges “[s]ince Emblom
`does not meet his own definition of a [person of ordinary skill] . . . Emblom
`cannot give opinions about the scope and content of the prior art.” Id.
`(footnote omitted). According to Petitioner, under Dr. Emblom’s own
`definition a person of ordinary skill would have had “a bachelor of science
`engineering degree and 2 – 3 years’ experience in the pipe inspection/testing
`industry. Id. (footnote omitted).
`
`The Board requested a conference call with the parties to discuss the
`motions, and one was held on April 19, 2018. Judges Thomas Giannetti and
`Bryan Moore conducted the call. The parties were represented by counsel.
`
`
`2 Unless otherwise indicated, citations are to papers and exhibits in
`IPR2017-00860. Corresponding papers were filed also in IPR2017-00910.
`2
`
`
`
`
`
`IPR2017-00860
`IPR2017-00910
`
`
`DISCUSSION
`The Board expressed concern that the motions were filed without
`
`authorization required by 37 C.F.R. § 42.20. The parties were reminded of
`their obligation to seek authorization before filing motions and cautioned
`that any further motions filed without authorization would be stricken.
`
`After hearing from the Petitioner on the merits, the Board denied the
`motions. The motions seeks to exclude the testimony of a technical witness
`on the ground that the witness’s background and experience do not match
`exactly the technology of the patents being challenged. That argument is
`unavailing. It is within our discretion to assign the appropriate weight to
`testimony offered by the witnesses. See, e.g., Yorkey v. Diab, 601 F.3d
`1279, 1284 (Fed. Cir. 2010).
`
`Furthermore, there is no requirement of a perfect match between the
`expert’s experience and the relevant field. SEB S.A. v. Montgomery Ward &
`Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). In opposing the motion Patent
`Owner states Dr. Emblom teaches mechanical engineering and possesses
`expertise in finite element analysis relevant to the Assanelli reference. Paper
`32, 1, 4–5. We determine that his testimony will assist us it in deciding
`these cases.
`
`Petitioner’s reliance on Sundance, Inc. v. DeMonte Fabricating Ltd.,
`550 F.3d 1356, 1363 (Fed. Cir. 2008), is misplaced. That case involved
`technical testimony from a patent lawyer before a jury. Here, there is no
`jury, and Dr. Emblom is a professor of engineering, not a lawyer. Ex. 2008,
`¶ 1. We therefore determine that Petitioner’s arguments, at best, go to the
`weight of Dr. Emblom’s testimony and are not a sufficient basis for
`excluding his testimony.
`
`
`
`3
`
`
`
`IPR2017-00860
`IPR2017-00910
`
`In IPR2017-00910, Petitioner makes the additional argument that
`
`“Erblom’s proposed opinions . . . should be stricken from the record because
`he . . . has not reviewed the ’138 patent.” IPR2017-00910 Ex. 1043, 3.
`Patent Owner responds that the specification of the ’138 patent is “identical”
`to a patent in the same family that was reviewed by Dr. Erblom. Further, we
`understand that Patent Owner offers Dr. Erblom’s opinions not as to specific
`claim language of the patents, but only for what a person of ordinary skill
`would understand. IPR2017-00910 Paper 32, 5–6. We, therefore, agree
`with Patent Owner that Dr. Emblom’s testimony as to these matters should
`not be excluded.
`
`It is, therefore,
`
`ORDERED that Petitioner’s Motions to Strike the Proposed Expert
`Opinions of Patent Owner Technical’s William Emblom are denied.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2017-00860
`IPR2017-00910
`
`PETITIONER:
`
`Robert M. Bowick, Jr.
`Bradford T. Laney
`RALEY & OWICK,
`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
`
`
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