`
`
`
`
`
`
`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 (Patent 7,552,640)
`Case IPR2017-00910 (Patent 7,997,138)
`____________
`
`Record of Oral Hearing
`Held: May 17, 2018
`____________
`
`
`
`
`
`Before THOMAS L. GIANNETTI, BRYAN F. MOORE, and
`JASON J. CHUNG Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2017-00860 (Patent 7,552,640)
`Case IPR2017-00910 (Patent 7,997,138)
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`BRADFORD T. LANEY, ESQUIRE
`Raley & Bowick, LLP
`1800 Augusta Drive
`Suite 300
`Houston, Texas 77057
`
`
`ON BEHALF OF PATENT OWNER:
`
`
`JOSEPH L. LEMOINE, Jr., ESQUIRE
`Lemoine & Associates
`1018 Harding Street
`Suite 102B
`Lafayette, Louisiana 70503
`
`and
`
`TED M. ANTHONY, ESQUIRE
`Babineaux, Poché, Anthony & Slavich, LLC
`P.O. Box 52169
`Lafayette, Louisiana 70505
`
`
`The above-entitled matter came on for hearing on
`Thursday, May 17, 2018, commencing at 10:00 a.m., at the U.S.
`Patent and Trademark Office, 600 Dulany Street, Alexandria,
`Virginia.
`
`
`
`
`
`
`
`
`
` 2
`
`
`
`
`
`
`
`Case IPR2017-00860 (Patent 7,552,640)
`Case IPR2017-00910 (Patent 7,997,138)
`
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE GIANNETTI: So we are here this morning for
`final hearing in two cases, IPR2017-00860 and IPR2017-00910.
`Let me introduce the panel. To my left is Judge Jason Chung. To
`my right is Judge Bryan Moore. And I am Judge Giannetti, and I
`will be presiding at the hearing today.
`Let me get appearances from counsel. Who is
`appearing here for the petitioner first?
`MR. LANEY: Brad Laney, Your Honor, here for
`petitioner, National Oilwell Varco.
`JUDGE GIANNETTI: Thank you. And for the patent
`
`owner?
`
`MR. ANTHONY: Ted Anthony for the patent owner.
`MR. LEMOINE: And also Joseph Lemoine, Jr., for the
`patent owner, Your Honors.
`JUDGE GIANNETTI: Mr. Anthony, will you be
`making the presentation today?
`MR. ANTHONY: I will be making the primary part of
`the presentation, but we would like to actually have both of us
`deliver a portion of it, if that's okay with the panel.
`JUDGE GIANNETTI: That's permissible. You will be
`dividing argument; is that correct?
`MR. ANTHONY: Correct.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 3
`
`
`
`Case IPR2017-00860 (Patent 7,552,640)
`Case IPR2017-00910 (Patent 7,997,138)
`
`
`JUDGE GIANNETTI: That is fine. I have a few
`housekeeping details before we get started. And I'll address this
`to the patent owner. You state in your papers that you are not
`going to pursue claims 3 and 12; is that correct? Mr. Anthony
`and Mr. Lemoine?
`MR. ANTHONY: We had previously disclaimed
`claims, and if that's what you are referring to, I don't know if you
`recall, we had a conference call, and we did file a disclaimer, a
`formal disclaimer, but --
`JUDGE GIANNETTI: Well, I know you disclaimed
`some claims prior to institution but that did not include 3 and 12.
`I thought that you said in your papers that you were going to
`disclaim 3 and 12.
`MR. ANTHONY: Your Honor, if that's what we said --
`I don't have that recollection in front of mind here, but if that's
`what we said, then I'm sure that's correct.
`JUDGE GIANNETTI: Why don't you look into it.
`What we would like to see is a request for adverse judgment on
`those claims 3 and 12. That's in the 860 case. So it would be
`claims 3 and 12 of the '640 patent. And I believe you said that --
`and I'll give you the page cite but not at the moment. You said
`that in your papers that you would be disclaiming those. I didn't
`see a disclaimer in the record, so that's why I'm requesting that
`you enter a request for adverse judgment. If you are not prepared
`to do that now, then I would like you to do that within a few days
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 4
`
`
`
`Case IPR2017-00860 (Patent 7,552,640)
`Case IPR2017-00910 (Patent 7,997,138)
`
`of the hearing so that we know what we are dealing with when we
`write our final decision.
`The other thing I want to address in the nature of
`housekeeping, you recall in the -- in light of the SAS case, the
`Supreme Court's decision in SAS, we issued an order adding some
`grounds to the cases. Do you recall that order, Mr. Laney?
`MR. LANEY: Yes, Your Honor.
`JUDGE GIANNETTI: We would like a joint
`agreement to limit the case to the grounds on which we initially
`instituted the proceedings. I don't know how serious you are with
`those grounds, but what we would like to see, if the parties are in
`agreement, is a joint agreement to limit the petition to the grounds
`originally instituted. Are you willing to do that now or is that
`something you want to take under advisement?
`MR. ANTHONY: We are, for patent owner, Your
`
`Honor.
`
`JUDGE GIANNETTI: Just so that we know what we
`are talking about, in the 860 case, it would be Lam and Assanelli,
`103 with respect to claims 5, 7, 14 and 16, and Assanelli and Lam
`with regard to claims 3, 5, 7, 12, 14 and 16. In the 910 case it
`would be claims 1 through 21, the 103 ground on Assanelli and
`Lam, and claims 8, 9, 14, 15, 20 and 21, the 103 grounds with
`respect to Assanelli, Lam and Palusamy. The parties agree that
`we can limit the petition to the original claims and those claims
`would not be -- and the grounds would not be included?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 5
`
`
`
`Case IPR2017-00860 (Patent 7,552,640)
`Case IPR2017-00910 (Patent 7,997,138)
`
`
`MR. ANTHONY: We are willing to agree to that.
`MR. LANEY: Petitioner agrees, Your Honor.
`JUDGE GIANNETTI: We'll follow up with an order
`on that. So the only issue under advisement is the claim 3 and 12
`issue.
`
`MR. ANTHONY: Your Honor, just looking at my
`notes, I believe that what you are stating is certainly correct, and
`so we'll get that done quickly.
`JUDGE GIANNETTI: Thank you very much. And
`there's one other matter, and that is the petitioner's
`demonstratives. Did you receive our e-mail, Mr. Laney?
`MR. LANEY: Yes, Your Honor. I will not refer to
`
`them.
`
`JUDGE GIANNETTI: Okay, fine. Thank you very
`much. That's appreciated.
`All right. I think we are ready to proceed now. We've
`taken care of the housekeeping details. And just so that you
`understand, each side will have 60 minutes to present its
`argument. You may present argument on both cases. The
`issues -- from my reading of the record here, the issues are so
`close that there's really not a great distinction between the cases,
`so it should not be a problem to address both cases at the same
`time. But if you wish to divide up your argument to address one
`case after another, you can do that or you can address common
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 6
`
`
`
`Case IPR2017-00860 (Patent 7,552,640)
`Case IPR2017-00910 (Patent 7,997,138)
`
`issues together. I will leave that up to you how you want to
`proceed. The Board does not have a preference on that.
`Any questions before we begin? Let me mention that
`Mr. Laney, you may -- as the party with the burden of proof here,
`you may reserve a reasonable amount of time for rebuttal. You
`need to do that now or at the end you can reserve the balance of
`the time. Do you want to reserve some time now?
`MR. LANEY: I apologize, when you said how much
`time we get earlier, I missed it.
`JUDGE GIANNETTI: You get an hour per side. Each
`side has 60 minutes.
`MR. LANEY: Yes, Your Honor. I'm going to go for
`about 15 minutes and reserve the rest for rebuttal, but I don't think
`I'll get --
`JUDGE GIANNETTI: I don't consider that reasonable,
`15 minutes and 45 minutes for rebuttal. I think that's somewhat
`unfair to your opponent.
`MR. LANEY: Then I will go for 15 minutes today and
`reserve 15 minutes for rebuttal.
`JUDGE GIANNETTI: Okay, fine. So it will be
`45 minutes is your opening, but you can reserve the balance, but
`what I don't want to see is a situation where you have a very brief
`opening argument and then a very detailed rebuttal that your
`opponent doesn't get a chance to respond to. We want to avoid
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 7
`
`
`
`Case IPR2017-00860 (Patent 7,552,640)
`Case IPR2017-00910 (Patent 7,997,138)
`
`that situation. So we are going to be watching very carefully for
`that situation.
`MR. LANEY: Yes, Your Honor.
`JUDGE GIANNETTI: Let me just set the timer here.
`Give us a second here. Our timer is not behaving. We are not
`going to use the timer. I'll keep time myself. Okay. Mr. Laney,
`you can proceed when ready.
`MR. LANEY: May it please the Court, Your Honor, I
`realize we reached a sort of agreement this morning that claims 3
`and 12 of the '640 patent will be disclaimed. But in case they are
`not, I would like to talk about them briefly. Those claims relate
`to taking overlapping measurements. And when it comes to
`what's happened in these proceedings, we -- in our petition we
`had an expert report of Dr. Rodgers. He's a Ph.D. MIT guy. And
`he explained that the device being used in Kiefer, that's our
`Exhibit 1003 reference, that it discloses overlapping
`measurements. After he made that opinion during the initial
`determination to grant the IPR, you-all found that opinion was
`credible, granted it on that grounds. I'm not sure if you are aware,
`there's a co-pending IPR with similar patents, and that panel made
`that same finding. And then sort of since that finding, there hasn't
`been any arguments about the overlapping claims. So it's our
`view that those points are unrebutted. If, for some reason, we
`aren't able to disclaim them, they haven't really countered any of
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 8
`
`
`
`Case IPR2017-00860 (Patent 7,552,640)
`Case IPR2017-00910 (Patent 7,997,138)
`
`our arguments in the record. So we would think that they would
`stick and stick strongly.
`JUDGE GIANNETTI: With cooperation of the patent
`owner, we won't have to address those issues.
`MR. LANEY: Okay. And then that brings me to my
`next point, Your Honor. And the primary reference in this case is
`Assanelli. And all the remaining claims have what's called using
`the data that's generated to affect the stressors on the tubulars.
`And their sole argument on Assanelli has been that it does not
`disclose actually taking this data and performing the calculations
`with the computer. So I'm sure you-all remember David
`Letterman, and he always had his top ten list. That was kind of
`his big thing in his show. So I have come up with the top ten
`reasons why Assanelli discloses to do its calculations with the
`computer.
`Reason number one, you have got Figure 1 in Assanelli.
`It's got a picture of a computer. You've got Figures 8 and 9 in
`Assanelli.
`JUDGE GIANNETTI: It's got a figure that shows a
`box, which I guess, is a dispute as to whether that's a computer or
`not. I think your opponent would not concede that point.
`MR. LANEY: Your Honor, they can make -- of course,
`always make an argument against it. It is a monitor and it's -- the
`box underneath it, if you remember, has an insert for the old
`floppy disk. And it is missing a keyboard, but I think at that
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 9
`
`
`
`Case IPR2017-00860 (Patent 7,552,640)
`Case IPR2017-00910 (Patent 7,997,138)
`
`point, they didn't want to try to make a Rembrandt painting of a
`computer. It was just sort of here is the computer.
`JUDGE GIANNETTI: It's labeled data acquisition
`device, is that it?
`MR. LANEY: Yes, Your Honor.
`JUDGE GIANNETTI: Is that synonymous with a
`computer, in your view?
`MR. LANEY: That is one thing a computer can do.
`JUDGE GIANNETTI: Data acquisition?
`MR. LANEY: That's one thing a computer can do. But
`I think the logical jump is that not only is it acquiring the data but
`it's going to be performing calculations with the data.
`JUDGE GIANNETTI: Is there anything explicit in
`Assanelli that says that the computer is doing the calculation?
`MR. LANEY: Your Honor, Figures 8 and 9 in
`Assanelli, they show graphs of computer calculations. And so
`does it say we did computer calculations to make these graphs?
`No. But I think a POSITA, someone -- we are talking in the 2000
`timeframe. When they see a computer-generated graph showing
`calculations that were made, they would expressly know that that
`was done on a computer. And then, of course, as a backup
`argument, it's definitely inherent in that disclosure.
`JUDGE GIANNETTI: So let's take this in three stages,
`counsel. Let's take the front end, which is the acquisition of data;
`and then let's take the back end, which is the display of the data.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 10
`
`
`
`Case IPR2017-00860 (Patent 7,552,640)
`Case IPR2017-00910 (Patent 7,997,138)
`
`There's something in the middle, and that would be the processing
`of the data; is that correct?
`MR. LANEY: When you say processing, you mean
`running them through equations?
`JUDGE GIANNETTI: Right, calculations, finite
`elements, whatever processing it is doing to determine the
`stresses on a pipe. Now, I think your argument was directed to
`the data acquisition phase. And let's say we agree with you that
`the computer is doing the data acquisition, and let's say we agree
`with you also that at the third stage, the computer is doing the
`data presentation, the graphics. What about the middle stage?
`What is there in Assanelli that tells you that in that middle stage
`there's a computation going on that is performed by a computer?
`MR. LANEY: Well, when they are talking about the
`very complex equations that you have to run, they cite footnote
`23 of Assanelli. A periodical -- let me pull it up. The periodical
`is an article titled Criteria for Computer-Aided Form Evaluation.
`And that is an article on performing these finite element analysis
`calculations on a computer.
`JUDGE GIANNETTI: Is that article part of the record
`in this case?
`MR. LANEY: No, it is not, Your Honor.
`JUDGE GIANNETTI: You didn't offer that as an
`exhibit?
`MR. LANEY: No, I did not.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 11
`
`
`
`Case IPR2017-00860 (Patent 7,552,640)
`Case IPR2017-00910 (Patent 7,997,138)
`
`
`JUDGE GIANNETTI: Why not?
`MR. LANEY: The main reason was Assanelli wrote a
`second paper, and in the second paper, which is also prior art --
`it's Exhibit 1013. And in that paper, he uses these same figures,
`and he puts in that paper the specific software they used. It was
`an ADINA software package which is a finite element analysis
`software package, and as Your Honor knows, a POSITA is
`presumed to know all the prior art. And all this stuff is happening
`to the late '90s. So by 2000 he certainly would have recognized
`that the calculations in this Assanelli paper had to be done by
`computer.
`And that's what I have inside the document, Your
`Honor. I would like to talk about other evidence that supports
`that, unless you have other questions.
`JUDGE GIANNETTI: No, you can continue your
`argument.
`MR. LANEY: All right. So as I just said, Assanelli
`part 2, he wrote another article a couple years later. It's almost
`identical to this article, Exhibit 1013. It identifies specifically the
`software package they used, the ADINA software package.
`JUDGE GIANNETTI: Is that second article identified
`in your petition?
`MR. LANEY: Yes, Your Honor.
`JUDGE GIANNETTI: In the petition?
`MR. LANEY: It's attached in the petition, Your Honor.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 12
`
`
`
`Case IPR2017-00860 (Patent 7,552,640)
`Case IPR2017-00910 (Patent 7,997,138)
`
`
`JUDGE GIANNETTI: Okay. And what's the Exhibit
`Number on that?
`MR. LANEY: Exhibit 1013.
`JUDGE GIANNETTI: Okay.
`MR. LANEY: You have our expert. So we are on
`number 3 out of our top ten list. We have John Rodgers, our
`expert. He is, like I said, a Ph.D. MIT guy, and he looked at this
`and just said there's literally no way anyone in their right mind
`would look at this and think that these calculations were done by
`hand. He says in his declaration that these computer programs
`were very well known at the time. They were well known in this
`industry. And in his supplemental declaration, as you see, he
`went through the trouble to figure out how long it would take to
`do these calculations by hand, and it would take over 20 years,
`where a computer can do them in less than 15 seconds.
`JUDGE GIANNETTI: So isn't there a challenge to
`Dr. Rodgers' qualifications to testify about pipe inspection?
`MR. LANEY: No, Your Honor. That's on the other
`side. We challenged their expert, Dr. Emblom, about his
`qualifications.
`JUDGE GIANNETTI: So there's no challenge to
`Dr. Rodgers' qualifications?
`MR. LANEY: No, Your Honor. They objected to his
`second declaration, but we then worked that out and allowed
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 13
`
`
`
`Case IPR2017-00860 (Patent 7,552,640)
`Case IPR2017-00910 (Patent 7,997,138)
`
`them to depose him again. So I believe that objection was
`withdrawn.
`JUDGE GIANNETTI: Okay. Thank you.
`MR. LANEY: And then of course we have another
`Board where -- four out of my ten, another Board in related
`proceedings, two patents that are related to this, they, in their
`initial determination allowing the IPR to go forward, they held
`Assanelli teaches that three-dimensional models can be used in
`finite element models to predict how a pipe will respond to
`stressors. And then of course, you have this Board's decision.
`We are at number 5. It reached a very, very similar conclusion.
`And I know this is not a final decision. This was just --
`JUDGE GIANNETTI: It was on a partial record.
`MR. LANEY: Right. But if you are looking at sort of
`factual determinations, you are talking about when you look at
`Assanelli, this Board said Assanelli teaches three-dimensional
`models can be used in finite element models to predict how the
`pipe will respond to stressors.
`If you keep going in the record, Your Honor, NOV's
`expert, Dr. Rodgers, went through a vigorous cross-examination
`by Mr. Lemoine here, and he stood to his story and just said
`there's no way -- there's no way any engineer on this planet would
`view Assanelli as requiring hand calculations.
`JUDGE GIANNETTI: Mr. Laney, isn't there a dispute
`about the level of ordinary skill in the art here?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 14
`
`
`
`Case IPR2017-00860 (Patent 7,552,640)
`Case IPR2017-00910 (Patent 7,997,138)
`
`
`MR. LANEY: Yes, Your Honor, there is.
`JUDGE GIANNETTI: And isn't it correct that patent
`owner challenges Dr. Rodgers' definition of a person of ordinary
`skill?
`
`MR. LANEY: They have challenged his ability to give
`opinions because he is a super expert. He doesn't fit into the
`POSITA qualification exactly. And I think there's lots of Federal
`Circuit law out there that says you can be more qualified and give
`opinions on what less qualified people would think, but you can't
`do the opposite.
`JUDGE GIANNETTI: The dispute that I'm referring to
`relates to whether the person of ordinary skill has an engineering
`degree and what type of engineering degree and training that
`person has; is that correct?
`MR. LANEY: Your Honor, if I remember correctly, the
`parties were pretty close on their person of ordinary skill in the
`art.
`
`JUDGE GIANNETTI: So you think there's an
`agreement on that?
`MR. LANEY: I don't want to misrepresent it right now,
`but I think we were close. I think we had said an engineering
`degree, and they had said an equivalent amount of experience in
`the field could replace that engineering degree. They said an
`engineering degree or X years of work experience.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 15
`
`
`
`Case IPR2017-00860 (Patent 7,552,640)
`Case IPR2017-00910 (Patent 7,997,138)
`
`
`JUDGE GIANNETTI: In your view, would a person of
`ordinary skill in this field have to have computer training?
`MR. LANEY: He would have to have computer
`training. To perform the calculations that are at issue in these
`patents, you would have to use a computer to do them. So you
`would have to have computer training. There is no reasonable
`way to do them by hand. For one -- and they are inspecting
`hundreds and thousands of tubulars, one after the next, after the
`next, after the next. To inspect one and perform the stress
`calculations necessary, it would take over 20 years by hand.
`JUDGE GIANNETTI: Well, is it correct that -- I
`remember reading testimony from perhaps not your experts, but
`the other side's experts, that the typical person who was involved
`in pipe inspection may or may not have graduated from college.
`Am I misreading the record on that?
`MR. LANEY: No, sir, you are correct. They did an
`either/or. They could have a college degree, but sometimes they
`go straight out of college and work in the pipe industry for five to
`ten years, and one of these individuals would qualify as well.
`JUDGE GIANNETTI: So in evaluating this case, is
`that the person of ordinary skill that we should be looking at, the
`person who may or may not have a college degree and is involved
`in pipe inspection, or is there a higher requirement for a person of
`ordinary skill?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 16
`
`
`
`Case IPR2017-00860 (Patent 7,552,640)
`Case IPR2017-00910 (Patent 7,997,138)
`
`
`MR. LANEY: Our argument is they have an
`engineering degree, and we would ask that you-all look at the
`person of ordinary skill from that viewpoint.
`JUDGE GIANNETTI: An engineering degree plus
`experience in the field?
`MR. LANEY: Either/or, an engineering degree or the
`equivalent amount of experience. And when we talk about guys
`working in the field that don't necessarily have a college degree,
`these are not -- and we call them in the industry roughnecks.
`They are not guys out there on the rigs doping pipes and running
`branches. These are guys that sit behind the computer and they
`monitor these computer programs as this data comes in. So if you
`do that for five or six years, then I think you are caught up to
`speed.
`
`JUDGE CHUNG: I'm not quite sure I understand your
`position here. A moment ago, if I heard you correctly, you said
`that you asked us to look at it from the viewpoint that the person
`has an engineering degree, but then moments later you said it's
`either/or. Am I following you correctly?
`MR. LANEY: Our position was that -- the petitioner's
`position was that a POSITA has an engineering degree. The
`patent owner's position said they could have an engineering
`degree but that's not required. They could also a have X number
`of years of experience. And I believe it was five years of
`experience. We, in our later briefing, have said, look, we don't
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 17
`
`
`
`Case IPR2017-00860 (Patent 7,552,640)
`Case IPR2017-00910 (Patent 7,997,138)
`
`care what the level is. We think whether you adopt our level or
`their level or a mixture in between, that anybody that's going to
`be working with this pipe inspection data has to know how to use
`a computer.
`JUDGE GIANNETTI: I'm sorry, has to know how to
`use what?
`MR. LANEY: Once you get this data, they have to
`know how to use it in a computer because it cannot be done by
`hand.
`
`JUDGE GIANNETTI: So you mentioned this software
`program ADINA. I think we'll hear from patent owner in a
`minute, but as I read the record, there seems to be agreement that
`that is the computer program that is referred to in Assanelli that is
`doing the finite analysis. Are we talking about as the person of
`ordinary skill, the user of that program or the person who would
`write that program?
`MR. LANEY: The user of that program.
`JUDGE GIANNETTI: The user?
`MR. LANEY: Yes, Your Honor.
`JUDGE GIANNETTI: Thank you.
`MR. LANEY: So sort of going down the line, I'm on
`number 7 out of 10, we deposed Technical's expert. His name is
`Michael Webre. And he testified that from his point of view that
`Assanelli discloses doing these calculations by computer. His
`exhibit is 1033, and the testimony is at 49:5 through 9. And then
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 18
`
`
`
`Case IPR2017-00860 (Patent 7,552,640)
`Case IPR2017-00910 (Patent 7,997,138)
`
`sort of Technical's major expert, Dr. William Emblom, he
`reached the same conclusion when asked were these calculations
`in Assanelli done by computer. And he said absolutely --
`JUDGE GIANNETTI: Which calculations are we
`talking about now? I recall I broke it down into three separate
`phases. Is he talking about phase 1?
`MR. LANEY: We're talking about the Figure 8 and 9, a
`finite element analysis to determine the effect of stressors.
`JUDGE GIANNETTI: In my analysis that would be
`phase 3, the data presentation phase. What about phase 2? What
`is the testimony on that, that that would be the actual calculations
`of the pipe stresses?
`MR. LANEY: Phase 2, will you remind me one more
`time what the phases are?
`JUDGE GIANNETTI: Phase 1 was the data acquisition
`phase. Phase 3 was the data presentation phase, the graphics
`phase. Phase 2 was the middle between those two, and that
`would be the actual analysis of the stress zone.
`MR. LANEY: Right.
`JUDGE GIANNETTI: I think that's the battleground.
`That's how I read the record. I believe there is agreement. I
`agree with you there is agreement on phase 1 and phase 3. We'll
`hear from patent owner on that. Maybe I'm wrong. But it's phase
`2 where the battleground is, and I'm looking for you to help us
`out and tell us what the testimony is on that.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 19
`
`
`
`Case IPR2017-00860 (Patent 7,552,640)
`Case IPR2017-00910 (Patent 7,997,138)
`
`
`MR. LANEY: Yes, Your Honor. Well, the testimony
`was they were asked questions about phase 3. But the testimony
`that came out was the only way you could get to phase 3 is with
`phase 2.
`JUDGE GIANNETTI: Well, phase 2 --
`JUDGE CHUNG: What is the citation for that?
`MR. LANEY: It's -- these are Technical's experts. And
`one is Exhibit 1033 at page 49, lines 5 through 9. The second
`of --
`
`JUDGE GIANNETTI: And whose deposition is that?
`MR. LANEY: That was Michael Webre. And then the
`second one, Your Honor, would be their expert, William
`Emblom. And that citation is Exhibit 1029. And it's at page 64,
`lines 14 through 17, and page 76, lines 6 through 16. And if you
`want to look at the testimony from our expert, that is
`Exhibit 1034, and that's at page 81, lines 10 through 16, and
`page 91, starting at line 20, going to 92, line 2.
`And when you read this testimony, Your Honors, I
`think you'll see that they say, look, by looking at phase 3, there's
`no -- it's so implicit and obvious to us that a computer calculation
`had to be done to get to phase 3.
`Your Honor, I'm all the way up to nine on my top ten
`list. Nine is common sense. And that comes from Dr. Rodgers'
`second declaration where he says -- went through the time of how
`long it would take to do this by hand. And he said it would have
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 20
`
`
`
`Case IPR2017-00860 (Patent 7,552,640)
`Case IPR2017-00910 (Patent 7,997,138)
`
`taken 17 years back when Assanelli was written, about '96. And
`that would have increased to over 20 -- I'm sorry I don't have the
`precise number -- when we get to the critical time period of the
`patent.
`
`JUDGE GIANNETTI: How does he contend -- if he
`didn't do it with a computer, how does he get the 17 years? What
`computational method is he using? Is he using a slide rule? Is he
`counting on his fingers? How is he getting there?
`MR. LANEY: So he made an estimate, made some
`assumptions that it would take a person to perform each
`calculation by hand about ten seconds.
`JUDGE GIANNETTI: Not with any aid at all? Not a
`calculator? Not a slide rule?
`MR. LANEY: He said ten seconds was a very generous
`estimate. And then he has done these FEA calculations back
`early in his training. So he knows how to define the nodes and
`build the matrices and all those things. So he went through the
`trouble and did all that, and then using assumptions like ten
`seconds per hand calculation, he was able to come up with that
`year amount. He's a lot smarter than me, Your Honor.
`And then finally, Your Honor, this is the most important
`point. If you-all have not listened to anything I have said all day,
`the Sfeir patents, if you look at the '640 patent, column 1, lines 30
`to 35.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 21
`
`
`
`Case IPR2017-00860 (Patent 7,552,640)
`Case IPR2017-00910 (Patent 7,997,138)
`
`
`JUDGE GIANNETTI: Give me a second to get that up.
`Give me that reference again.
`MR. LANEY: If you look at column 1, lines 30
`through 35, you'll see here in the field of the invention it talks
`about getting this data so it can be displayed, imaged, examined
`and utilized in simulative comparative programs as a
`three-dimensional object.
`JUDGE GIANNETTI: Lines 30 to 35; is that right?
`MR. LANEY: Yes, Your Honor. Then if you flip to
`column 3 and you go down to lines 35 through 39, here we are
`talking about the invention again, and he says the data that is
`gathered is used in engineering calculations and/or programs
`which predict response of the tubular to various stressors and
`otherwise have increased utility.
`And then there's one more, Your Honor. It's on
`column 7, lines 35 to 40. Then we have the same thing again, the
`data gathered by the invention will still form that of a
`three-dimensional object which has utility, for instance, in
`simulative and modeling programs.
`So what you have here is the patent itself saying all we
`are doing is taking this data and putting it in modeling programs,
`modeling programs like ADINA. And the fact that the patent
`doesn't list any specifics, doesn't say the name of the program,
`doesn't say how to use the program, that shows to me and it
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 22
`
`
`
`Case IPR2017-00860 (Patent 7,552,640)
`Case IPR2017-00910 (Patent 7,997,138)
`
`shows to me loudly that all of that was presumed known in the
`prior art.
`And when it comes to the obviousness challenges, Your
`Honor, I believe petitioner mostly argued about Assanelli not
`disclosing this computer feature and didn't focus on why our
`various motivations to combine wouldn't work. And so on that
`basis, we see those as unrebutted and don't feel a need to go into
`them today.
`JUDGE GIANNETTI: I thought they did take you on
`in there, motivation to combine.
`MR. LANEY: I did not see it, Your Honor.
`JUDGE GIANNETTI: All right. Patent owner will
`have a chance to refresh our recollection on that.
`MR. LANEY: Yes. And Your Honor, I want to open
`the floor to any questions you-all have for me.
`JUDGE GIANNETTI: All right. Thank you very
`much, counsel.
`MR. LANEY: Thank you for your time.
`MR. ANTHONY: Good morning. As I stated earlier,
`my name is Ted Anthony. I represent the patent owner in this
`matter --
`JUDGE GIANNETTI: Let me just reset is the timer
`here. You can proceed.
`MR. ANTHONY: As I stated, my name is Ted
`Anthony. I represent the patent owner in
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
