Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
` Paper No. 14
`
`
` Entered: August 22, 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 IPR2017-00860
`Patent 7,552,640 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, BRYAN F. MOORE, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
` Paper No. 14
`
`
` Entered: August 22, 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 IPR2017-00860
`Patent 7,552,640 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, BRYAN F. MOORE, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-00860
`Patent 7,552,640 B2
`
`
`INTRODUCTION
`I.
`National Oilwell Varco, L.P. (“Petitioner”) filed a Petition requesting
`an 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.”).
`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.”
`After filing its Preliminary Response, Patent Owner filed a disclaimer
`of 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 in this matter. Ex. 2007.
`We therefore do not consider those dedicated claims in this Decision. For
`the reasons set forth below, we institute an inter partes review of claims 3, 5,
`7, 9, 11, 12, 14, 16, 18, and 20 of the ’640 patent.
`
`
`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.
`
`2
`
`
`
`IPR2017-00860
`Patent 7,552,640 B2
`
`
`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 patent also relates to an improved method of
`collecting, storing, displaying and otherwise utilizing the information
`resulting from ultrasonic detection of such walls. Id. at 1:24–28.
`The 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.
`The 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 disclosure thus relates to improved methods to acquire, collect,
`assemble, store, display, and utilize such data, not only for a determination
`for the presence or absence of defects, but so that data from the inspection
`may be used to calculate projected performance of the tubular. Id. at 3:4–9.
`According to the ’640 patent, this is accomplished with mathematical
`
`3
`
`
`
`IPR2017-00860
`Patent 7,552,640 B2
`
`precision not previously available by non-destructive evaluation of the
`tubular. Id. at 3:9–11.
`
`C. Illustrative Claim
`
`Originally, the ’640 patent had 20 claims. After Petitioner dedicated
`claims 1, 2, 4, 6, 8, 10, 13, 15, 17, and 19, claims 3, 5, 7, 9, 11, 12, 14, 16,
`18, and 20 remain. See supra. Patent Owner’s Exhibit 2006 shows the non-
`dedicated claims of the ’640 patent.
`Claim 1, now dedicated, was the only independent claim. Each of the
`challenged claims depends, directly or indirectly, from claim 1, which is
`reproduced below. Following claim 1 are dedicated claim 2, which depends
`from claim 1, and illustrative claim 3, which depends from claim 2.
`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 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;
`
`4
`
`
`
`IPR2017-00860
`Patent 7,552,640 B2
`
`
`(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
`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.
`
`
`5
`
`
`
`IPR2017-00860
`Patent 7,552,640 B2
`
`
`III. ANALYSIS
`
`A. Prior Art 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).
`
`Petitioner also relies on the Declaration of John P. Rodgers, Ph.D.
`(“Rodgers Decl.,” Ex. 1007).
`
`B. The Asserted Grounds of Unpatentability
`
`Petitioner challenges the patentability of the remaining claims of the
`’640 patent on the following grounds (Pet. 5–6):1
`
`Claim(s)
`3, 12
`3, 12
`9, 11, 18, 20
`5, 7, 9, 11, 14,
`16, 18, 20
`5, 7, 9, 11, 14,
`16, 18, 20
`3, 5, 7, 12, 14,
`16
`
`References
`
`Basis
`§ 102(b) Kiefer
`§ 102(b) Lam
`§ 102(b) Assanelli
`§ 103(a) Kiefer and Assanelli
`
`§ 103(a) Lam and Assanelli
`
`§ 103(a) Assanelli and Lam
`
`
`1 We have omitted challenges to dedicated claims in our summary above and
`in the analysis following. See supra.
`
`6
`
`
`
`IPR2017-00860
`Patent 7,552,640 B2
`
`
`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
`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).
`Petitioner proposes special constructions for numerous claim terms.
`Pet. 11–18. Patent Owner “respectfully suggests that the words and phrases
`of the claims should be deemed to have their plain meaning.” Prelim. Resp.
`15. For the purposes of this Decision, we construe the following terms.
`
`1. “digital recording”
`Petitioner asserts that the broadest reasonable interpretation of the
`phrase “making a digital recording” appearing in claims 1(g) and 1(i) is
`making the recordings of claim 1 “in a format that can be read by a
`computer.” Pet. 17. In support of its position, Petitioner points to
`Dr. Rodgers’s testimony that any relevant skilled artisan “would understand
`that any data recorded on a computer would necessarily be in a digital
`format.” Ex. 1007 ¶ 86.
`
`7
`
`
`
`IPR2017-00860
`Patent 7,552,640 B2
`
`
`Patent Owner does not oppose directly Petitioner’s proposed
`construction. Patent Owner refers, however, to ultrasonic measurement
`information in a digital format “tailored to be read by a digital computer.”
`Prelim. Resp. 2.
`At this stage in the proceeding, and based on the current record, under
`the broadest reasonable interpretation we construe the phrase “making a
`digital recording” to mean “recording in a format that can be read by a
`digital computer.” 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.”
`2. “partially overlaps an adjacent discrete portion”
`This term appears in claims 3 and 12 as follows: “each determination
`of wall thickness partially overlaps an adjacent discrete portion.” Petitioner
`proposes 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 disagree with this
`construction.
`The specification of the ’640 patent does not provide a special
`definition. The dictionary definition of overlap is: “extend over and cover a
`part of.” The Random House College Dictionary 948 (rev. ed. 1982). We,
`therefore, determine that Petitioner’s proposed construction is not sufficient.
`Taking into account the common meaning of “overlap,” we construe this
`term as requiring each measurement of wall thickness to extend over and
`cover part of an adjacent discrete portion.
`
`8
`
`
`
`IPR2017-00860
`Patent 7,552,640 B2
`
`
`3. Other terms
`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).
`
`C. 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. 8. Petitioner further asserts
`that such an artisan would have been familiar with various types of
`ultrasonic pipe inspection methods. Id. at 9.
`Patent Owner does not appear to dispute the educational level or
`experiential aspects of Petitioner’s definition. Patent Owner, however,
`contends that it is “simply not reasonable” to believe that a person of
`ordinary skill, who “had been in the pipe yards for at least two years . . . was
`supposed to gain ‘“instant’” knowledge of everything that might be done
`with brand new computer technology - including the realization that such
`
`9
`
`
`
`IPR2017-00860
`Patent 7,552,640 B2
`
`improved computing power might be used to improve inspection of metal
`pipe, and determine actual strength of said pipe.” Prelim. Resp. 28–29.
`At this stage in the proceeding, we determine that Petitioner’s
`description of a 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 do not see a need at this stage to determine what specific software
`applications a relevant skilled artisan would have been familiar with, or how
`such an artisan would have used those applications at the time of invention
`of the ’640 patent. However, we are not persuaded that such a person, with
`a bachelor’s degree in mechanical, petroleum, or chemical engineering,
`would not have been exposed to computer technology used to analyze the
`strength of materials such as metals used in fabricating pipe.
`We note also 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).
`
`D. Anticipation of Claims 3 and 12
`By Kiefer
`
`Petitioner contends that claims 3 and 12 are anticipated by Kiefer.
`Pet. 20–28.
`
`10
`
`
`
`IPR2017-00860
`Patent 7,552,640 B2
`
`
`1. Kiefer (Ex. 1003)
`
`Kiefer is a patent titled “Scan Assembly Structure.” Kiefer is
`directed to apparatus for inspecting buried natural gas mains. Ex. 1003, 1:4–
`7. It describes 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.”
`Id. at 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 2:1–4. Kiefer further
`explains:
`The 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
`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.
`
`11
`
`
`
`IPR2017-00860
`Patent 7,552,640 B2
`
`
`This is shown in Figure 8 of Kiefer, 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.
`2. Analysis
`Petitioner contends that each element of claims 3 and 12 is met by
`Kiefer and provides an element-by-element analysis, including claim charts
`showing where each element is found. Pet. 25 (claim 3), 27 (claim 12).
`Petitioner also provides supporting testimony from its expert, Dr. Rodgers.
`Rodgers Decl. ¶¶ 117–118, 125.
`
`12
`
`
`
`IPR2017-00860
`Patent 7,552,640 B2
`
`
`Because claim 3 depends from claims 1 and 2, Petitioner’s analysis of
`claim 3 refers back to its analysis of those claims. Similarly, Petitioner’s
`analysis of claim 12 refers back to claim 1. Pet. 24–25, 27.
`In support of its contention that Kiefer teaches each step of these
`claims, 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 “ Pet. 19.
`Petitioner further states that in Kiefer “[t]hese measurements are taken along
`the entire “one hundred percent” of the tubular as the ultrasonic detection
`means is moved axially and rotatably through the tubular. Id. 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.” Id. at 20. Patent Owner
`does not contest that claims 1 and 2 are met by Kiefer and has disclaimed
`claims 1 and 2. Ex. 2007; Prelim. Resp. 14. We agree with Petitioner’s
`description of Kiefer and with the analysis set forth in the claim charts for
`claims 1 and 2.
`Claims 3 and 12 each contain the additional limitation “the spacing of
`said discrete portions . . . is such that each determination of wall thickness
`partially overlaps an adjacent discrete portion of said section of said wall of
`said tubular good.” Patent Owner disputes that this requirement for
`“overlapping segments” is met by Kiefer. Prelim. Resp. 21. Patent Owner
`asserts: “nothing in Kiefer discloses or contemplates taking ultrasonic
`measurements of overlapping segments of a pipe wall and, even if it did,
`13
`
`
`
`IPR2017-00860
`Patent 7,552,640 B2
`
`such overlapping sampling would not be possible using the apparatus
`described in Kiefer.” Id.
`Petitioner’s support for finding this element in Kiefer relies on
`testimony from its expert, Dr. Rodgers. Pet. 25 (citing Rodgers Decl.
`¶ 118). Dr. Rodgers cites the disclosure, in Kiefer, of taking “one or more”
`measurements of wall thickness “per one degree of rotation.” Rodgers Decl.
`¶ 118 (quoting Ex. 1003, 6:55–60). From this, Dr. Rodgers concludes:
`On the very large end (most of times tubulars will be much
`smaller), assuming the gas main is 8 inches, the circumference
`would be 25.12 inches. With 360 samples per revolution, the arc-
`linear spacing between measurement points would be 0.070 inch.
`Kiefer’s disclosure of a resolution this fine (and even finer with
`smaller mains) would be understood by a POSITA as inherently
`including a disclosure of taking overlapping measurements.
`During this time period, it would have likely been impossible for
`the commercially-available ultrasonic transducer beam patterns
`to capture this many points without obtaining overlapping
`coverage.
`
`Id.
`At this stage, and on this record, we find this showing by Petitioner
`
`and the supporting testimony sufficient to demonstrate a reasonable
`likelihood of prevailing on this issue. We are not persuaded by Patent
`Owner’s attempt to discredit Dr. Rodgers’s testimony. Prelim. Resp. 28–35.
`For example, as noted supra, we are not convinced that a person of ordinary
`skill (having an engineering degree) would be as unfamiliar with computer
`technology as Patent Owner asserts. Prelim. Resp. 34. Nor is it necessary
`that Dr. Rodgers himself be a “POSITA” (person of ordinary skill) or that he
`have “actual experience in the field of inspecting tubular joints.” Id. at 29.
`
`14
`
`
`
`IPR2017-00860
`Patent 7,552,640 B2
`
`We have reviewed Dr. Rodgers’s qualifications and find them sufficient.2
`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).
`We determine, therefore, that Petitioner has demonstrated, on this
`record, a reasonable likelihood of prevailing on this challenge to claims 3
`and 12 based on Kiefer.
`
`E. Anticipation of Claims 3 and 12 by Lam
`Petitioner asserts that claims 3 and 12 are anticipated by Lam. Pet.
`28–36.
`
`1. Lam
`Lam is titled “Ultrasonic Detection of Flaws in Tubular Members.”
`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.
`
`
`2 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.
`
`15
`
`
`
`IPR2017-00860
`Patent 7,552,640 B2
`
`
`Figures 6A and 6B of Lam are reproduced below.
`
`Figures 6A and 6B are, respectively, schematic lengthwise and end views of
`the tubular inspection system disclosed by Lam. Id. ¶ 35. Transducer
`system 171 is moved longitudinally down the length of pipe 161 by motor
`179. Id. ¶ 48. 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. ¶ 56.
`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 ways in
`which flaw location and other information can be displayed to an operator.
`Id. ¶ 58.
`
`16
`
`
`
`IPR2017-00860
`Patent 7,552,640 B2
`
`
`2. Analysis
`Petitioner contends that each element of claims 3 and 12 is met by
`Lam and sets forth its analysis in claim charts. Pet. 33 (claim 3), 35 (claim
`12). Petitioner also provides supporting testimony from its expert, Dr.
`Rodgers. Rodgers Decl. ¶¶ 147–148, 156.
`Because claim 3 depends from claims 1 and 2, Petitioner’s analysis of
`claim 3 refers back to its analysis of those claims. Similarly, Petitioner’s
`analysis of claim 12 refers back to claim 1. Pet 33, 35.
`In support of its contention that Lam teaches each step of the method
`recited in these claims, Petitioner asserts that Lam discloses a method for
`ultrasonically inspecting, and detecting flaws in a tubular across almost the
`entire length of the tubular. Pet. 28. Petitioner further states that “Lam has a
`transducer system for scanning the entire surface area of the wall of the
`tubular while recording wall thickness.” Id. 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 tubular is
`inspected.” Id. Petitioner asserts that “[t]hese two ranges of motion
`(longitudinal and circumferential) allow the assembly to scan 100% of the
`tubular wall”. Id. at 29.
`Patent Owner does not contest that claims 1 and 2 are met by Lam and
`has disclaimed claims 1 and 2. Ex. 2007; Prelim. Resp. 14. We agree with
`Petitioner’s description of Lam and with the analysis set forth in the claim
`charts for claims 1 and 2. However, as noted supra, claims 3 and 12 each
`contain the additional limitation “the spacing of said discrete portions . . . is
`such that each determination of wall thickness partially overlaps an adjacent
`17
`
`
`
`IPR2017-00860
`Patent 7,552,640 B2
`
`discrete portion of said section of said wall of said tubular good.”
`Petitioner’s support for finding this element in Lam relies on the fact that
`Lam incorporates by reference two patents: Pont (U.S Patent 4,217,782; Ex.
`1010) and Walters (U.S. Patent 5,007,291; Ex. 1011). Pet. 33; Rodgers
`Decl. ¶¶ 147–148. Accordingly, based on Pont and Walters, Petitioner’s
`expert Dr. Rodgers testifies that “Lam further discloses determining
`overlapping measurements for wall thickness for adjacent discrete portions
`in the wall of the tubular.” Rodgers Decl. ¶ 147. Referring to Pont and
`Walters, he testifies that a person of ordinary skill “would understand these
`references to include determining wall thickness by overlapping adjacent
`discrete portions of the tubular wall.” Id.
`
`While it appears that Petitioner’s assertion that Pont and Walters
`describe overlapping measurements is accurate, that is not the end of the
`anticipation analysis. As explained by the Federal Circuit in Net MoneyIN,
`Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008): “[U]nless a
`reference discloses within the four corners of the document not only all of
`the limitations claimed but also all of the limitations arranged or combined
`in the same way as recited in the claim, it cannot be said to prove prior
`invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C.
`§ 102.”
`In Net MoneyIN, a prior art reference that disclosed two separate
`protocols for processing Internet credit card transactions did not anticipate a
`system for processing Internet credit card transactions in a patent claim,
`given that neither protocol contained all five links arranged or combined in
`the same way as claimed in patent. Id. The Federal Circuit also determined
`18
`
`
`
`IPR2017-00860
`Patent 7,552,640 B2
`
`that it was “wrong” to combine the separate protocols in concluding that a
`claim was anticipated. Id. The Court relied on In re Arkley, 455 F.2d 586,
`587 (CCPA 1972), which cautions against “picking, choosing, and
`combining various disclosures not directly related to each other by the
`teachings of the cited reference.”
`We are not persuaded by Petitioner’s proofs that this test is met here.
`Petitioner does not explain sufficiently how the distinct disclosures of Lam
`and Pont or Lam and Walter show anticipation. The brief descriptions of
`Pont and Walter in Lam make no reference to making overlapping
`measurements. Ex. 1004 ¶ 6 (describing Pont), ¶ 9 (describing Walter). Nor
`does the brief statement in Lam incorporating all the patents discussed:
`“Each of the patents mentioned above is incorporated fully herein in its
`entirety for al[l] purposes.” Id. ¶ 11. See Net MoneyIN, Inc. v. VeriSign,
`Inc., 545 F.3d at 1371 (“[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
`at 587 (“[T]he [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.”).
`Based on our review of the current record, we are not persuaded by
`Petitioner’s contention that Lam discloses the subject matter of claims 3 and
`12 of the ’640 patent. Based on the foregoing, therefore, we determine that
`the information presented in the Petition does not establish a reasonable
`
`19
`
`
`
`IPR2017-00860
`Patent 7,552,640 B2
`
`likelihood that Petitioner would prevail in showing that those claims are
`anticipated by Lam.
`F. Anticipation of Claims 9, 11, 18, and 20 by Assanelli
`Petitioner asserts that claims 9, 11, 18, and 20 are anticipated under by
`Assanelli. Pet. 36–42.
`
`1. Assanelli
`Assanelli is a paper disclosing the use of three-dimensional modeling
`to predict the effects of casing (i.e., tubular) geometry––including wall
`thickness––on the external collapse pressure for that casing. Ex. 1005, 1.
`Assanelli explains that wall thickness contributes to many of the factors that
`influence the external pressure at which a steel pipe will collapse, including:
`the ratio of outside pipe diameter to wall thickness; the yield stress of the
`pipe; the shape of pipe sections (outside diameter shape and thickness
`distribution); the residual stresses locked in the pipe steel; and the localized
`imperfections introduced in production, handling, or due to localized wear.
`Id. at 1, 4. Assanelli also observes that it is normal for wall thickness to
`change along the length of a pipe. Id. at 1.
`Assanelli describes the acquisition of geometrical information from
`test pipes with an “imperfection measuring system,” and the use of that
`information as input data for three-dimensional finite element models to
`predict pipe collapse pressure. Id. According to the paper: “The 3D model
`predictions have been qualified via experimental testing at our laboratory.”
`Id.
`
`
`
`20
`
`
`
`IPR2017-00860
`Patent 7,552,640 B2
`
`
`Assanelli discloses the performance of “in-depth pipe outside
`diameter (OD) and thickness mappings,” and explains that pipe wall
`“thickness is measured manually at 272 locations, using an ultrasonic gauge
`(Fig. 5). An enhancement of the device is planned, which will allow [it] to
`measure the wall thickness on-line with the outside diameter.” Id. at 2.
`Assanelli further discloses that the information of the full scale test,
`including wall thickness measurement data, is stored in a database. Id.
`Assanelli discloses that angular and longitudinal position information
`is collected and associated with pipe wall thickness measurements. This is
`shown in Figure 5 of Assanelli, reproduced below.
`
`Figure 5 plots wall thickness data for various angular and longitudinal
`positions on a test pipe to depict the wall thickness distribution for that pipe.
`Ex. 1003, Fig. 5.
`
`21
`
`
`
`IPR2017-00860
`Patent 7,552,640 B2
`
`
`Assanelli additionally teaches the use of wall thickness data from
`different positions on a test pipe to create a three-dimensional finite element
`model of that pipe. Id. at 3. This is shown here in Figure 8 of Assanelli:
`
`
`Figure 8 depicts a three-dimensional model showing wall thickness in
`lengthwise as well as cross-sectional views.
`
`22
`
`
`
`IPR2017-00860
`Patent 7,552,640 B2
`
`
`Assanelli further teaches that three-dimensional models can be used in
`finite element models to predict how a pipe will respond to stressors.
`Figure 9 of Assanelli is reproduced below.
`
`Figure 9 depicts a three-dimensional finite element model of a pipe, and
`“shows the distribution of axial stresses (on the external surface) at
`impending collapse.” Id. at 3.
`
`2. Analysis
`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.
`
`
`Because all these claims depend directly or indirectly from claim 1,
`
`23
`
`
`
`IPR2017-00860
`Patent 7,552,640 B2
`
`Petitioner’s analys
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
