`571-272-7822
`
`
`
`
`
`
`Paper 39
`Entered: July 2, 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
`Patent 7,552,640 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, BRYAN F. MOORE, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`Case IPR2017-00860
`Patent 7,552,640 B2
`
`
`
`I. BACKGROUND
`
`This Order is being entered to dispose of certain claims and grounds
`
`of challenge the parties have agreed to exclude from further consideration in
`
`this trial.
`
`The Petition (Paper 1) requested inter partes review of claim 1–20 of
`
`U.S. Patent No 7,552,640 B2 (Ex. 1001, “the ’640 patent”). In our
`
`Institution Decision (Paper 14), we determined that Petitioner had
`
`demonstrated a reasonable likelihood that it would establish that at least one
`
`of the challenged claims of the ’640 patent is unpatentable. Paper 14, 2. We
`
`therefore instituted inter partes review of certain challenged claims. Id.
`
`On April 24, 2018, the Supreme Court held that a final written
`
`decision under 35 U.S.C. § 318(a) must decide the patentability of all claims
`
`challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S.Ct. 1348, 1355
`
`(2018). We modified our Institution Decision to institute trial on all of the
`
`challenged claims and all of the grounds presented in the Petition. See id.
`
`Specifically, we modified our Institution Decision to include the following
`
`additional grounds:
`
`Claim(s)
`
`Basis
`
`References
`
`3, 12
`
`§ 102(b) Lam
`
`5, 7,14, 16
`
`§ 103(a) Lam and Assanelli
`
`3, 5, 7, 12, 14,
`16
`
`
`
`§ 103(a) Assanelli and Lam
`
`Paper 36. An Oral Hearing in this case was held on May 17, 2018. The
`
`Hearing Transcript (“Tr.”) is included in the record as Paper 38. At the
`
`2
`
`
`
`Case IPR2017-00860
`Patent 7,552,640 B2
`
`
`hearing, the Board and the parties reached agreement on the disposition of
`
`certain claims and grounds.
`
`
`
`
`
`II. CLAIMS 3 AND 12
`
`In its Response to the Petition (Paper 18), Patent Owner stated:
`
`“Patent Owner advises the Board that it will now disclaim Claims 3 and 12
`
`of the ‘640 patent.” Paper 18, 11. At the oral argument this statement was
`
`discussed with the parties. See Tr. 1:3–5:2; 6:4–8; 60:6–10. Patent Owner
`
`confirmed its intention to disclaim claims 3 and 12. Id. at 6:6–8. After
`
`initially requesting that the Patent Owner file a request for adverse judgment
`
`on those claims, the Board later concluded that Patent Owner’s
`
`representations at the hearing and in its Response were sufficient: “We will
`
`enter an order on that issue. You have made the representation on the record.
`
`I think that will be sufficient.” Tr. 60:8–10.
`
`
`
`
`
`III. ADDITIONAL GROUNDS
`
`At the oral hearing, the parties agreed to limit the case to the grounds
`
`on which the Board initially instituted the proceeding. Tr. 5:3–6:2. After
`
`the agreement was reached, the Board stated it would follow up with an
`
`order. Id. at 6:1–4.
`
`
`
`
`
`
`
`IV. ORDER
`
`In view of the foregoing, it is:
`
`ORDERED that, pursuant to 28 C.F.R. § 42.73 (b), adverse judgment
`
`is entered as to claims 3 and 12 of the ’640 patent;
`
`FURTHER ORDERED that pursuant to 37 C.F.R. § 42.72, trial is
`
`terminated as to all grounds not included in the trial in the Institution
`
`Decision;
`
`3
`
`
`
`Case IPR2017-00860
`Patent 7,552,640 B2
`
`
`
`FURTHER ORDERED that only the following grounds remain in the
`
`trial:
`
`Claim(s)
`
`Basis
`
`References
`
`9, 11, 18, 20
`5, 7, 9, 11, 14,
`16, 18, 20
`9,11,18, 20
`
`§ 102(b) Assanelli
`
`§ 103(a) Kiefer and Assanelli
`
`§ 103(a) Lam and Assanelli
`
`
`PETITIONERS:
`
`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
`
`4
`
`
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