Trials@uspto.gov
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` Paper No. 40
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` Entered: August 6, 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 IPR2017-00860
`Patent 7,552,640 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, BRYAN F. MOORE, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`GIANNETTI, 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. 40
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` Entered: August 6, 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.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
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`IPR2017-00860
`Patent 7,552,640 B2
`
`
`INTRODUCTION
`I.
`National Oilwell Varco, L.P. (“Petitioner”) filed a Petition requesting
`inter partes review of claims 1–20 (all claims) of U.S. Patent
`No. 7,552,640 B2 (Ex. 1001, “the ’640 patent”). Paper 1 (“Pet.”). Technical
`Industries, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”). After filing its Preliminary Response, Patent Owner
`disclaimed claims 1, 2, 4, 6, 8, 10, 13, 15, 17, and 19, leaving claims 3, 5, 7,
`9, 11, 12, 14, 16, 18, and 20 of the ’640 patent at issue. Ex. 2007. Applying
`the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of
`a reasonable likelihood that Petitioner would prevail with respect to at least
`one challenged claim, we granted Petitioner’s request and instituted an inter
`partes review on all those remaining challenged claims. Paper 14
`(“Institution Dec.”).
`Following institution, Patent Owner filed a Response to the Petition
`(Paper 18, “PO Resp.”) and Petitioner filed a Reply (Paper 26, “Pet. Reply).
`In its Response, Patent Owner stated: “Patent Owner advises the Board that
`it will now disclaim Claims 3 and 12 of the ‘640 patent.” PO Resp. 11.
`An Oral Hearing in this case was held on May 17, 2018.1 The
`Hearing Transcript (“Tr.”) is included in the record as Paper 38. At the
`Hearing, the Board and the parties reached agreement on the disposition of
`certain claims and grounds. Specifically, Patent Owner agreed to request
`
`
`1 The case was heard jointly with IPR2017-00910, involving the same
`parties and related patent 7,997,138.
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`2
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`adverse judgment as to claims 3 and 12. Tr. 4:3–5:2; 6:4–8; 60:6–10.
`Reflecting this agreement, on July 2, 2018, the Board entered an Order
`granting adverse judgment on claims 3 and 12. Paper 39.
`Having considered the evidence of record, and for the reasons set
`forth below, we determine that all remaining claims (claims 5, 7, 9, 11, 14,
`16, 18, and 20) of the ’640 patent are unpatentable.
`
`
`II. BACKGROUND
`A. Related Matters
`The parties advise us that the ’640 patent is asserted in Technical
`Industries, Inc. v. National Oilwell Varco, L.P., Case No. 6:15-cv-02744
`(W.D. La.). Pet. 3; Paper 4, 2. In addition, Petitioner has challenged three
`patents related to the ’640 patent in IPR2017-00648, IPR2017-00699, and
`IPR2017-00910. Paper 4, 2.
`
`B. The ’640 Patent
`The ’640 patent is titled “Method for Inspection of Metal Tubular
`Goods.” The patent relates to the non-destructive testing of tubular metal
`goods (i.e., pipes). Ex. 1001, 1:19–20. More particularly, the patent relates
`to a non-destructive means for determination of wall conditions, particularly
`wall thickness data, of tubular metal goods by use of ultrasonic detection
`apparatus. Id. at 1:20–24.
`The ’640 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 2:39–3:3.
`The patent thus relates to improved methods to acquire, collect, assemble,
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`store, display, and utilize such data, not only for a determination for the
`presence or absence of defects, but also so that data from the inspection may
`be used to calculate projected performance of the tubular. Id. at 3:4–9. The
`’640 patent explains that “data contained in digital format which represents
`wall thickness or 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 9:1–6.
`The ’640 patent discloses the use of ultrasonic technology to acquire
`incremental data representing small, discrete sections of the tubular wall, in
`association with three-dimensional positional data pertaining to each small,
`discrete section. Id. at 1:28–32. In this way, the wall of a metal tubular (or
`portions thereof) can be displayed, imaged, examined, and used in
`simulative or comparative programs as a three-dimensional object. Id. at
`1:32–35.
`
`According to the ’640 patent, the prior art provided two-dimensional
`data and did not meet the need to improve the inspection of metal tubulars.
`The patent explains that while the prior art was able to measure wall
`thickness, circumferential position, and longitudinal position,
`[t]ypically the data resulting from such testing [from the prior
`art] is displayed in two-dimensional form, as a numeric table or
`as a line on a graph (representing wall thickness at a position on
`the length of the tubular).
`Ex. 1001 at 2:56–59. Still referring to the prior art, the ’640 patent states:
`“From such data the general location of a suspected defect along the length
`of tubular, its magnitude and direction (whether too thin or too thick) can be
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`determined and the tubular joint marked for acceptance, rejection or repair.”
`Id. at 2:62-66. The patent goes on to state:
`[S]aid data was not useful for substantial purposes therebeyond.
`Namely, without three-dimensional data as to both the defect and
`the remainder of the tubular, the effect that defect might have
`concerning performance of the tubular could not be calculated
`with mathematical precision.
`Id. at 2:66–3:3.
`
`The ’640 patent provides no further details about how use of a “three-
`dimensional form” provides additional “mathematical precision,” through a
`mathematics formula, picture, computer program, or any other means.
`
`C. Illustrative Claim
`Originally, the ’640 patent had 20 claims. Following the Oral
`Hearing, adverse judgment was entered as to claims 3 and 12. Paper 39.
`See discussion supra. Thus, taking into account Petitioner’s prior dedication
`of claims 1, 2, 4, 6, 8, 10, 13, 15, 17, and 19, claims 5, 7, 9, 11, 14, 16, 18,
`and 20 remain. See supra.
`Claim 1, now dedicated, was the only independent claim. Each of the
`challenged claims, therefore, depends, directly or indirectly, from claim 1,
`which is reproduced below. Following claim 1 are reproduced dedicated
`claim 2, which depends from claim 1, dedicated claim 3, which depends
`from claim 2, dedicated claim 4, which depends from claim 3, and
`illustrative challenged claim 5, which depends from claim 4.
`1. Method for collection and storage of information
`representing wall thickness of tubular goods, comprising:
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`(a) selecting a section of the wall of a tubular good about
`which information representing wall thickness is to be recorded
`in a format readable by digital 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) positioning an ultrasonic detection means which is
`capable of measuring the thickness of a discrete portion of the
`wall of a tubular good at a position, which is proximate to a
`first discrete portion of the selected section of the wall of said
`tubular good;
`(d) while said ultrasonic detection means is at said
`position, determining the longitudinal position of said
`ultrasonic detection means along the axis of said tubular good;
`(e) while said ultrasonic detection means is at said
`position, determining the circumferential position of said
`ultrasonic detection means about the circumference of said
`tubular good;
`(f) while said ultrasonic detection means is at said
`position, causing said ultrasonic detection means to determine
`the thickness of said the discrete portion of the section of the
`wall of the tubular good to which said ultrasonic detection
`means is proximate;
`(g) making a digital recording of said thickness, said
`longitudinal position and said circumferential position in an
`associated relationship;
`(h) repeating steps (c) through (g) above at a plurality of
`other positions along the wall of said selected section of the
`wall which has not been previously determined and recorded,
`until the entire thickness of said wall of said selected section
`has been determined and recorded and is represented by a
`plurality of recordings, each of which represents wall thickness,
`longitudinal position and circumferential position of a discrete
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`portion of the selected section of the wall of said tubular good
`in an associate relationship; and,
`(i) making a digital recording of said plurality of
`recordings in an associated relationship.
`2. The method of claim 1 wherein the selected section is
`the entire wall of the tubular good.
`3. The method of claim 2 wherein the spacing of said
`discrete portions within said section of the wall of said tubular
`good is such that each determination of wall thickness partially
`overlaps an adjacent discrete portion of said section of said wall
`of said tubular good.
`4. The method of claim 3 wherein said number of said
`discrete portions within said section of the wall or said tubular
`good is at least three hundred and sixty for each circumference
`of said tubular good.
`5. The method of claim 4 further comprising the step of
`causing a digital computer means to use at least some of the
`information which has been recorded in a digital, computer
`readable format to compute the effect of stressors on the wall of
`said tubular good.
`Claims 7, 9, 11, 14, 16, 18 and 20 of the ’640 patent (1) all depend,
`
`directly or indirectly, from claim 1, and (2) all recite the step of using a
`digital computer to compute the effect of stress on the tubular wall using
`recorded information representing wall thickness. Claims 7, 14, and 16 are
`all similar to claim 5 in that they further require each determination of wall
`thickness to partially overlap an adjacent discrete portion of the wall section
`of the tubular good.
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`
`III. ANALYSIS
`
`A. Prior Art and Other Evidence Relied Upon
`Petitioner relies upon the following 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 Well Casing and Tubing Conference (1998) (Ex. 1005).
`Both sides also rely on expert testimony. Petitioner presents a
`Declaration of John P. Rodgers, Ph.D. (“Rodgers Decl.” Ex. 1007) and
`Supplemental Declaration of Dr. Rodgers (“Rodgers Supp. Decl.” Ex. 1027).
`Patent Owner relies on Declarations of William J. Emblom, Ph.D.
`(“Emblom Decl.” Ex. 2008), C. Mike Webre (“Webre Decl.” Ex. 2009), and
`George M. Sfier (“Sfier Decl.” Ex. 2010). The record also includes
`deposition transcripts for each of these witnesses.2
`
`B. The Asserted Grounds of Unpatentability
`We instituted inter partes review of the claims remaining after Patent
`Owner’s disclaimer on four separate grounds. For three additional grounds,
`however, we determined that Petitioner had not established a reasonable
`likelihood of prevailing. Institution Dec. 19–20 (anticipation of claims 3 and
`12 by Lam); 29–30 (obviousness of claims 5, 7, 14, and 16 over Lam and
`
`
`2 Ex. 2011 (“Rodgers Dep.”), Ex. 2013 (“Rodgers Supp. Dep.”), Ex. 2014
`(“Emblom Dep.”), Ex. 2015 (“Webre Dep.”), and Ex. 2016 (“Sfir Dep.”).
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`Assanelli); 30 (obviousness of claims 3, 5, 7, 12, 14, and 16 over Assanelli
`and Lam).
`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). On April 27, 2018, we modified our Institution Decision to include
`all grounds presented in the Petition. Paper 36.
`As discussed supra, at the Oral Hearing, the parties agreed to limit the
`trial to the grounds for which trial was instituted originally. Tr. 5:3–6:2.
`Thus, the following challenges remain for decision:
`
`Claim(s)
`9, 11, 18, 20
`5, 7, 9, 11, 14,
`16, 18, 20
`9, 11, 18, 20
`
`References
`Basis
`§ 102(b) Assanelli
`
`§ 103(a) Kiefer and Assanelli
`
`§ 103(a) Lam and Assanelli
`
`Paper 39, 4.
`
`C. 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). 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
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`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).
`In our Institution Decision, we construed the following terms.
`1. “making a digital recording”
`Petitioner asserted that the broadest reasonable interpretation of the
`phrase “making a digital recording” appearing in claim elements 1(g) and
`1(i) is making the recordings of claim 1 “in a format that can be read by a
`computer.” Pet. 17. Patent Owner did not oppose directly Petitioner’s
`proposed construction. Prelim. Resp. 15.3
`Based on the pre-institution record, under the broadest reasonable
`interpretation, we construed the phrase “making a digital recording” to mean
`“recording in a format that can be read by a digital computer.” Institution
`Dec. 8. Patent Owner does not challenge this construction in its Response.
`This construction is consistent with the plain language of claim element 1(a),
`which calls for recording the wall thickness “in a format readable by digital
`computer means.” We, therefore, adopt this construction for this Final
`Written Decision.
`2. “each determination of wall thickness partially overlaps an adjacent
`discrete portion”
`This term appears in claims 3 and 12 (and, therefore, in challenged
`claims 5, 7, 14, and 16, which depend from those claims) as follows: “each
`
`3 Patent Owner contended only that “the words and phrases of the claims
`should be deemed to have their plain meaning.” Prelim. Resp. 15.
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`determination of wall thickness partially overlaps an adjacent discrete
`portion.” Petitioner proposed the following construction: “This claim
`limitation should be construed as taking enough wall thickness
`measurements to cover the entire 100% of the area contemplated.” Pet. 17.
`We disagreed with this proposed construction in our Institution Decision (at
`p. 8). Instead, based upon the common meaning of “overlap,” we construed
`this phrase as “requiring each measurement of wall thickness to extend over
`and cover part of an adjacent discrete portion.” Id. (citing The Random
`House College Dictionary 948 (rev. ed. 1982)). Neither party has
`challenged this construction. Thus, taking into account the common
`meaning of “overlap,” and for the reasons discussed in our Institution
`Decision, we construe “each determination of wall thickness partially
`overlaps an adjacent discrete portion” as requiring each measurement of wall
`thickness to extend over and cover part of an adjacent discrete portion.
`
`3. Other terms
`Patent Owner asks us to construe “digital computer” as “a digital
`device that is capable of and is used to perform mathematical calculations
`from properly formatted data input to it.” PO Resp. 13. Petitioner does not
`respond to this construction in its Reply.
`We are not persuaded to adopt Patent Owner’s definition, which is too
`restrictive in describing what a digital computer is capable of and does.
`Under Patent Owner’s construction, a computer is required to perform
`“mathematical calculations.” A broader application of the term is reflected
`by the Microsoft Computer Dictionary, which defines a computer as “[a]ny
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`device capable of processing information to produce a desired result.”
`Microsoft Computer Dictionary (5th edition) 118. We, therefore, are not
`persuaded to accept Patent Owners’ limitation of computers to devices
`performing “mathematical calculations” as reflecting the plain and ordinary
`meaning of the term.
`In view of our analysis, we determine that no additional claim terms
`require construction at this stage. 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).
`
`D. Legal Principles
`1.
`Anticipation
`“A claim is anticipated only if each and every element as set forth in
`the claim is found, either expressly or inherently described, in a single prior
`art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
`631 (Fed. Cir. 1987). However, this is not an ipsissimis verbis test, i.e.,
`identity of terminology is not required. In re Bond, 910 F.2d 831, 832 (Fed.
`Cir. 1990. The Federal Circuit has clarified the anticipation test as follows:
`However, a reference can anticipate a claim even if it “d[oes] not
`expressly spell out” all the limitations arranged or combined as
`in the claim, if a person of skill in the art, reading the reference,
`would “at once envisage”
`the claimed arrangement or
`combination. In re Petering, [301 F.2d 676, 681 (1962)].
`Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed.
`Cir. 2015); see also In re Preda, 401 F.2d 825, 826 (CCPA 1968) (noting
`that “in considering the disclosure of a reference, it is proper to take into
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`account not only specific teachings of the reference but also the inferences
`which one skilled in the art would reasonably be expected to draw
`therefrom”).
`
`Obviousness
`2.
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which said subject matter
`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`
`The question of obviousness is resolved on the basis of underlying
`factual determinations including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art; (3)
`the level of skill in the art; and, (4) where in evidence, so-called secondary
`considerations, including commercial success, long-felt but unsolved needs,
`failure of others, and unexpected results. Graham v. John Deere Co., 383
`U.S. 1, 17–18 (1966) (“the Graham factors”).
`E.
` 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)).
`In defining the person of ordinary skill, an important consideration is
`the purpose of the patent. Thus, in DyStar Textilfarben GmbH & Co.
`Deutschland KG v. C.H Patrick Co., 464 F.3d 1356 (Fed. Cir. 2006), where
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`the patent was directed to an improved process for dying textile materials
`with indigo, the Federal Circuit rejected an argument that the person of
`ordinary skill was a dyer. 464 F.3d at 1362. Reversing a jury verdict of
`infringement, the Court observed:
`Designing an optimal dyeing process requires knowledge of
`chemistry and systems engineering, for example, and by no
`means can be undertaken by a person of only high school
`education whose skill set is limited to “flipping the switches”.
`Id. To the same effect is In re Grout, 377 F.2d 1019 (C.C.P.A. 1967), where
`the patent sought by the appellant related to honeycomb supporting features
`for beehives. 377 F.2d at 1022. Rejecting the appellant’s contention that
`persons of ordinary skill were beekeepers, the Court focused on the problem
`addressed by the invention:
`[W]e are not convinced that the ‘person having ordinary skill in
`the art to which said subject matter pertains,’ section 103, is
`exemplified by a beekeeper. Appellant’s invention relates to
`novel fastening means used in beehives. 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.
`Id. See also Jonathan J. Darrow, The Neglected Dimension of Patent Law’s
`PHOSITA Standard, 25 Harv. J.L. & Tech 227, 238 (2009) (“Case law has
`established that using a product . . . is not the appropriate conception of the
`[person of ordinary skill]’s art.”).
`
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`The ’640 patent claims the benefit of a provisional application filed in
`2003. Ex. 1001 [60].4 Petitioner asserts that a person of ordinary skill in the
`art in 2003 “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. 8. Petitioner further asserts
`that such an artisan would have been familiar with various types of
`ultrasonic pipe inspection methods. Id. at 9. According to Petitioner’s
`expert, Dr. Rodgers, a person of ordinary skill “would have easily
`recognized that digital data representing a tubular wall can be used to create
`a three-dimensional figure of the tubular wall and to determine the effect of
`stresses on the tubular wall.” Rodgers Decl. ¶ 23. Moreover. Dr. Rodgers
`testifies:
`A [person of ordinary skill] would have been familiar with
`common programs used in the engineering field, such as
`Microsoft Excel, MATLAB, and AutoCAD. Using multiple data
`points with three measured components (x, y, or z) to create a
`three-dimensional object with these types of programs would
`have been well within the knowledge and capabilities of a
`[person of ordinary skill].
`
`Id.
`
`Patent Owner responds that Petitioner’s definition “substantially
`overstates the qualifications of a [person of ordinary skill] in the field of pipe
`testing.” PO Resp. 34. Relying on testimony from its expert on pipe testing,
`Mr. Webre, Patent Owner argues that a person of ordinary skill in 2003
`
`
`4 We express no opinion as to whether this claim entitles the ’640 patent to
`the filing date of the provisional application.
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`“would be 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.” Id. at 35. Further relying
`on Mr. Webre, Patent Owner contends such a person “would not necessarily
`have had a college degree, let alone an undergraduate degree in engineering
`or other similar technical field.” Id.
`According to Patent Owner, Mr. Webre’s testimony “refutes that a
`[person of ordinary skill] in 2003 – especially a non-engineer – would be
`capable of developing the computational algorithms that would be required
`to correlate the dimensional output of a full body tubular inspection to the
`actual anticipated failure load capacity as required by the claims at issue in
`this matter.” Id. Patent Owner relies also on testimony to the same effect
`from Mr. Sfier, a named inventor of the ’640 patent. Id.
`We are not persuaded that Patent Owner definition of the person of
`ordinary skill is consistent with the Federal Circuit’s guidance. Patent
`Owner focuses on the person who operates the pipe inspection equipment,
`and not the person who designs and builds the equipment. See, for example,
`Mr. Sfier’s testimony on cross-examination:
`Q: So the person you're describing -- again, I'm talking about a
`hypothetical person that doesn't have a college degree but has six
`or seven years in the industry operating these ultrasonic
`machines to inspect pipe. That person, to make or use the
`invention would need help, would need someone who knows
`how to do the computer programming?
`. . . .
`[Mr. Sfier]: Yes.
`
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`Tr. 41:16–42:1. To the same effect is the direct testimony of Mr. Webre:
`“Over the spam [sic.] of my career I have worked with and interfaced with
`many individuals in the inspection industry including many who were
`focused on pipe inspection that I would consider to be POSITAs.” Webre
`Decl. ¶ 17 (emphasis added). Mr. Webre’s testimony elaborates on this
`statement with a discussion of the “recognized industry standard” for
`certification of nondestructive pipe testing personnel. Id. at ¶ 18.
`We find the testimony of Dr. Rodgers on the person of ordinary skill
`more consistent with the Federal Circuit’s guidance on that subject. Rodgers
`Decl. ¶¶ 15–24. Similar to the beekeeper case, In re Grout, discussed
`supra, Dr. Rodger’s analysis of the person of ordinary skill focuses on the
`problems addressed by the ’640 patent. He testifies that the person of
`ordinary skill “would have recognized that there were many commercially-
`available programs at the time of the earliest priority date of the ‘640 patent,
`which could have been used to create a three-dimensional model with pipe
`inspection data.” Id. at ¶ 18. This testimony is credible because it is
`consistent with the ’640 patent, which describes the use of commercially
`available “simulative/comparative programs” to create three-dimensional
`objects. Ex. 1001, 1:28–35.
`We also find credible Dr. Rodgers’ testimony that there were “many
`commercially-available programs that could conduct a stress analysis to
`determine the effect of stressors on the tubular wall using this three-
`dimensional model created from pipe inspection data.” Rodgers Decl. ¶ 19.
`This testimony, too, is consistent with the ’640 patent, which indicates such
`programs were known. Ex. 1001, 3:30–39. As Dr. Rodgers points out, the
`17
`
`
`
`IPR2017-00860
`Patent 7,552,640 B2
`
`’640 patent provides no further description of such programs, a recognition
`that they were well known and available. Rodgers Decl. ¶ 19.
`We are not persuaded by Patent Owner’s criticism of Dr. Rodgers’
`testimony for his lack of experience in pipe inspection. See PO Resp. 36–
`38. We are satisfied with Dr. Rodgers’ qualifications to testify as an expert,
`including his experience in the oil industry developing new mechanical tools
`and software tools focused on measuring and analyzing the dynamic
`response of downhole tools and systems (including tubulars used in drilling,
`perforating, testing, and producing wells) and also his analysis of oilfield
`tubulars for static and dynamic loading. Rodgers Decl. ¶ 9.5 Patent
`Owner’s criticism of Dr. Rodgers’ qualifications because he is qualified
`insufficiently “in the field of pipe inspection” reflects Patent Owner’s
`argument (which we reject) that the person of ordinary skill is a pipe
`inspector. As discussed supra, we are not persuaded that a pipe inspector
`would be called upon to solve the problem identified by the ’640 patent.
`Finally, Patent Owner asserts:
`Rodgers does not identify a single POSITA who, in 2003, was
`using, was working on using, or had even conceived of using
`data, collected by ultra-sonic means, which was stored in
`computer readable format to manually or by computer to
`calculate strength of pipe proposed to be used in a particular
`application. Simply put, Dr. Rodgers [is] not a POSITA in the
`2003 field of pipe inspection.
`
`
`5 Dr. Rodgers has a Ph.D. from MIT and did graduate research on the
`application of ultrasonic transducers. Rodgers Decl. ¶ 8. Moreover, he has
`over 15 years of experience as an engineering consultant, mostly in the oil
`industry. Id. at ¶ 9.
`
`18
`
`
`
`IPR2017-00860
`Patent 7,552,640 B2
`
`PO Resp. 38. We are not persuaded by this argument. First, it repeats an
`argument that we have rejected, namely, that pipe inspectors are the relevant
`persons of skill. Moreover, it overlooks the fact that the person of ordinary
`skill is a “theoretical construct,” and is “not descriptive of some particular
`individual.” Norgren Inc. v. Intl. Trade Com’n, 699 F.3d 1317, 1325 (Fed
`Cir. 2012). Finally, it ignores the ’640 patent’s description of the prior art as
`including collecting and storing ultrasonic pipe thickness data and using it to
`calculate stressors. See supra.
`
`For the foregoing reasons, we adopt Petitioner’s definition of the
`person of ordinary skill and credit Dr. Rodgers’ testimony as to what that
`hypothetical person would have known at the 2003 filing date of the ’640
`patent.
`
`F. Anticipation of Claims 9, 11, 18, and 20 by Assanelli
`Petitioner contends that each element of claims 9, 11, 18, and 20 is
`met by Assanelli, and provides an element-by-element analysis, including
`charts showing where each claim element is found. Pet. 40 (claim 9), 41
`(claims 11 and 18), 42 (claim 20). Petitioner also provides supporting
`testimony from its expert, Dr. Rodgers. Rodgers Decl. ¶¶ 178, 180, 182,
`184. Petitioner also relies on its analysis of claim 1 and the other claims
`from which these claims depend. Rodgers Decl. ¶¶ 161–184.
`1. Introduction
`At the outset of our analysis, we refer to Patent Owner’s explanation
`of the “problems solved” by the ’680 patent. PO Resp. 7–11. In describing
`the state of the art before the alleged invention, Patent Owner refers to the
`
`19
`
`
`
`IPR2017-00860
`Patent 7,552,640 B2
`
`existing techniques for using ultrasonics for measuring wall thickness of
`pipe. Id. at 7. According to Patent Owner,
`[d]ue to the sheer volume of data generated by this testing
`approach, prior art ultrasonic measurements were typically only
`taken at a relatively small number of positions along the area of
`a tubular. Such low-density sampling of pipe resulted in
`significant parts of a tubular member going unmeasured.”
`Id. at 8.
`Patent Owner goes on to explain that “even when a relatively large
`number of measurements were taken, much of the data had to be discarded
`because the means to store and process such large amounts of data had not
`yet been developed.” Id. (emphasis added). We note that this argument is
`consistent with the specification of the ’680 patent, which describes the
`patent as directed to “an improved method of collecting, storing, displaying
`and otherwise utilizing the information resulting from ultrasonic detection of
`the walls of metal tubulars.” Ex. 1001, 1:25–28.
`Patent Owner acknowledges that the finite element method, a
`technique for analyzing stress, “is a mathematical tool that was developed
`well before computers were designed and/or programmed to implement the
`tool.” PO Resp. 40. Patent Owner’s alleged contribution thus lies in the
`application of computers to perform stress calculations that previously were
`impractical:
`Patent Owner, for the first time, taught the use of intense
`ultrasonic data recorded in format specifically designed to be
`readable by digital computer
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