PTAB

IPR2017-00648

NATIONAL OILWELL VARCO, L.P. v. Technical Industries, Inc.

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1. Case Identification

2. Patent Overview

  • Title: Method for Inspection of Metal Tubular Goods
  • Brief Description: The ’887 patent describes a method for inspecting metal pipes ("tubulars"), particularly for the oil and gas industry. The method uses an ultrasonic apparatus to gather data on wall thickness, longitudinal position, and circumferential position for discrete points on the tubular wall, and then records these three parameters in an associated relationship to create a computer-readable, three-dimensional model for analysis and stress computation.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-4 - Claims 1-4 are anticipated under 35 U.S.C. §102 by Assanelli.

  • Prior Art Relied Upon: Assanelli (SPE Paper on Collapse Behavior of Casings, May 1998).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Assanelli disclosed every element of the challenged claims. Assanelli described a method of inspecting tubulars by moving an ultrasonic transducer longitudinally along a rotating sample to obtain a complete scan. This process measured and recorded wall thickness, axial position, and angular position, which were sent to a "data acquisition" unit (a computer). This digital data was then used to generate a three-dimensional finite element model and perform a finite element analysis (FEA) to simulate the effect of external collapse pressure and determine the effect of stresses, thus anticipating all limitations of claims 1-4.

Ground 2: Obviousness of Claim 4 - Claim 4 is obvious under 35 U.S.C. §103 over Kiefer in view of Assanelli.

  • Prior Art Relied Upon: Kiefer (Patent 5,641,909) and Assanelli (SPE Paper, May 1998).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Kiefer disclosed all elements of claims 1 and 2, including an ultrasonic inspection system that gathers digital data representing wall thickness, longitudinal position, and circumferential position and creates a three-dimensional "tomograph." Petitioner argued Assanelli supplied the additional element of claim 4: using such digital data with a computer to "compute the effect of stresses on the wall of said tubular good."
    • Motivation to Combine: A POSITA would combine these references because their teachings were interrelated, both focusing on gathering the same three parameters for tubular inspection to assess pipe integrity. Kiefer taught gathering the data and creating a 3D display, while Assanelli taught using that exact type of data for stress analysis. Further motivation was provided by market forces driving the industry to optimize the life of tubulars and safely use thinner-walled pipes, which required precise stress analysis.
    • Expectation of Success: A POSITA would have had a high expectation of success. The combination required only applying Assanelli's well-known FEA stress analysis technique, using commercially available software (e.g., ANSYS, NASTRAN), to the type of data gathered by Kiefer. This was a straightforward and predictable application of known methods.

Ground 3: Obviousness of Claims 3 and 4 - Claims 3 and 4 are obvious over Lam in view of Assanelli.

  • Prior Art Relied Upon: Lam (Application # US 2003/0033880) and Assanelli (SPE Paper, May 1998).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner contended that Lam disclosed all elements of claims 1 and 2 by teaching an ultrasonic inspection system that gathers digital data for wall thickness, longitudinal position, and circumferential position. Assanelli was argued to supply the missing elements of claim 3 (creating a "virtual three-dimensional form") and claim 4 (using the data to "compute the effect of stresses").
    • Motivation to Combine: Similar to the previous ground, a POSITA would combine Lam's data gathering with Assanelli's analysis and visualization techniques as a simple application of known methods to yield predictable results. Converting Lam's digital data into a 3D form, as taught by Assanelli, was a routine task using standard modeling programs like MATLAB or AutoCAD. Industry demand for evaluating thinner-walled casing provided further motivation to combine Lam's data collection with Assanelli's stress analysis.
    • Expectation of Success: The combination would have been an extremely straightforward task with a high expectation of success, as it involved using standard, readily available software to process Lam's data according to the analysis methods explicitly detailed in Assanelli.

  • Additional Grounds: Petitioner asserted additional challenges, including that claims 1-3 were anticipated by Kiefer; claims 1-3 were anticipated by Lam (with claim 3 being inherently anticipated); and claim 3 was obvious over the combination of Lam and Kiefer. These grounds relied on similar arguments regarding the disclosure of data collection and the routine nature of 3D visualization.

4. Key Claim Construction Positions

  • "positioning an ultrasonic means" (claims 1-4): Petitioner argued this term should be construed broadly to mean positioning the sensor anywhere along the tubular wall, including on either the inside or outside surface. This construction was proposed to ensure that prior art like Kiefer, which disclosed an internal inspection device, could not be improperly distinguished by the Patent Owner, as the ’887 patent specification allegedly stated the "manner" of taking data was not important to the invention.
  • "associating the recording..." (claim 1): Petitioner argued that this limitation did not require creating a three-dimensional representation. Citing the doctrine of claim differentiation, Petitioner noted that dependent claim 3 explicitly added the limitation of a "virtual three-dimensional form." Therefore, to avoid rendering claim 3 redundant, independent claim 1 must be construed more broadly to encompass 2D representations (e.g., a cross-reference table), which were also described in the specification.

5. Relief Requested

  • Petitioner requested that the Board institute an inter partes review and cancel claims 1-4 of the ’887 patent as unpatentable.