`571-272-7822
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`Paper 55
`Entered: April 23, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`ION GEOPHYSICAL CORPORATION
`and ION INTERNATIONAL S.A.R.L.,
`Petitioners,
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`v.
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`WESTERNGECO LLC,
`Patent Owner.
`____________
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`Case IPR2015-00567
`Patent 7,080,607
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`
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`Before SCOTT A. DANIELS, BEVERLY M. BUNTING, and
`BARBARA A. PARVIS, Administrative Patent Judges.
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`DANIELS, Administrative Patent Judge.
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`
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`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108
`37 C.F R § 42.122(b)
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`IPR2015-00567
`Patent 7,080,607
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`I. INTRODUCTION
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`ION Geophysical Corporation and ION International S.a.r.l. (“ION”)
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`filed a Petition to institute an inter partes review of claims 1 and 15 of U.S.
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`Patent No. 7,080,607 (“the ’607 patent”). Paper 3 (“Pet.”). The Petition was
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`accorded a filing date of January 14, 2015. Paper 6. With the Petition, ION
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`also filed a Motion for Joinder (“Mot.,” Paper 4) seeking to join this
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`proceeding with Petroleum Geo-Services, Inc., v. WesternGeco L.L.C., Case
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`IPR2014-00688 (the “PGS IPR”). Mot. 2. The PGS IPR concerns the same
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`patent as at issue here, namely the ’607 patent. We instituted trial in the
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`PGS IPR on December 15, 2014. See Petroleum Geo-Services, Inc., v.
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`WesternGeco L.L.C., Case IPR2014-00688, Paper 33 (Decision instituting
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`inter partes review).
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`Patent Owner, WesternGeco L.L.C. (“WesternGeco”) timely filed an
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`Opposition (“Opp.,” Paper 10) to ION’s Motion for Joinder, and ION, in
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`turn, filed a Reply (Paper 12).
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` For the reasons provided below, we (1) institute an inter partes
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`review on certain grounds, and (2) grant ION’s Motion for Joinder, subject
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`to the conditions detailed herein.
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`II. INSTITUTION OF INTER PARTES REVIEW
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`We have jurisdiction under 35 U.S.C. § 314, which provides that an
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`inter partes review may not be instituted “unless . . . there is a reasonable
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`likelihood that the petitioner would prevail with respect to at least 1 of the
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`claims challenged in the petition.” The Petition in this proceeding asserts
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`the same grounds as those asserted in the PGS IPR. Pet. 1, 29; Mot. 2–4.
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`We instituted a trial in the PGS IPR on three grounds:
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`2
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`IPR2015-00567
`Patent 7,080,607
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`1. Claims 1 and 15 as anticipated by Workman;
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`2. Claims 1 and 15 as obvious over Workman; and
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`3. Claims 1 and 15 as obvious over Workman and Elholm;
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` Petroleum Geo-Services, Inc., v. WesternGeco L.L.C., Case IPR2014-
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`00688, Paper 33, 32. We did not institute on two grounds, namely,
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`obviousness of claims 1 and 15 over Gikas and the ’636 PCT, and Gikas and
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`Elholm. Id. In view of the challenges in the instant Petition and the petition
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`in the PGS IPR, we institute an inter partes review in this proceeding on the
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`same three grounds as those on which we instituted in the PGS IPR. Id. We
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`do not institute on any other grounds.
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`III. GRANT OF MOTION FOR JOINDER
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`An inter partes review may be joined with another inter partes
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`review, subject to the provisions 35 U.S.C. § 315(c), which governs joinder
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`of inter partes review proceedings:
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`(c) JOINDER.—If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that inter
`partes review any person who properly files a petition under section
`311 that the Director, after receiving a preliminary response under
`section 313 or the expiration of the time for filing such a response,
`determines warrants the institution of an inter parties review under
`section 314.
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`As the moving party, ION bears the burden of proving that it is
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`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
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`should: (1) set forth the reasons joinder is appropriate; (2) identify any new
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`grounds of unpatentability asserted in the petition; and (3) explain what
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`impact (if any) joinder would have on the trial schedule for the existing
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`review. See Frequently Asked Question H5, http://www.uspto.gov/patents-
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`IPR2015-00567
`Patent 7,080,607
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`application-process/appealing-patentdecisions/trials/patent-review-
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`processing-system-prps-0 (last visited April 1, 2015).
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`The Petition in this proceeding has been accorded a filing date of
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`January 14, 2015 (Paper 6), and the Motion for Joinder was filed on the
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`same date. (Mot.). Thus, the Motion for Joinder in this proceeding satisfies
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`the requirement of being filed within one month of the date, December 15,
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`2014, instituting a trial in the PGS IPR. See 37 C.F.R. § 42.122(b) (Any
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`request for joinder must be filed, as a motion under § 42.22, no later than
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`one month after the institution date of any inter partes review for which
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`joinder is requested.).
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`In its Motion for Joinder, ION contends that “aside from the
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`procedural sections of the Petition, for example that identify ION and its
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`standing, the Petition and accompanying evidence are identical.” Mot. 7.
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`ION further represents that because the challenges are identical, it “envisions
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`few, if any, differences in position between ION and PGS.” Id. at 8.
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`PGS indicated during a conference call on March 25, 2015, with the
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`Board and all the participants in the PGS IPR and this proceeding, that it
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`opposes joinder because PGS does not desire to coordinate its conduct of the
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`PGS IPR with ION, and also, because joining these proceeding may raise
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`issues relating to alleged hearsay evidence. For its part, WesternGeco
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`argues that joinder would create duplicative litigation, delay and complicate
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`the PGS IPR schedule, thus prejudicing WesternGeco and raising its costs.
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`Opp. Mot. 2–4.
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`Based on the present record, we agree that joinder with the PGS IPR
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`would promote the efficient resolution of these proceedings. In the March
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`25, 2015 conference call, ION indicated it was amendable to joinder on only
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`the already instituted grounds in the PGS IPR. In its Motion for Joinder
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`4
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`IPR2015-00567
`Patent 7,080,607
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`ION, notes that both proceedings involve the same prior art, the same
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`claims, and the same arguments and evidence. Mot. 6–7. ION has brought
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`the same substantive challenges in this proceeding, as in the PGS IPR, and
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`joinder simplifies addressing the overlap of the instituted grounds. Compare
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`Pet. 1–60 with Petroleum Geo-Services, Inc., Paper 1, 1–60. Addressing the
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`same grounds in the PGS IPR as presented here, in a joined proceeding,
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`facilitates scheduling of the joined actions and minimizes delay. Also,
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`because the challenges, prior art and evidence are substantively identical to
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`the PGS IPR, prejudice to WesternGeco is minimal. With respect to PGS’s
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`concern regarding hearsay evidence, even if these proceedings were not
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`joined, the parties have the ability to request authorization to obtain 3rd
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`party testimony under 35 U.S.C. 24. See § 42.53. In addition, scheduling of
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`the joined proceeding, as set forth below, will occur so as to minimize
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`impact to WesternGeco and PGS, yet maintain the current DUE DATE 7
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`(July 30, 2015) for oral hearing.
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`IV. SCHEDULING
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`The Scheduling Order in the PGS IPR (Paper 34) sets the oral hearing
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`for July 30, 2015. Final hearing and final determination shall not be delayed
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`by joining the two proceedings. In view of our joinder order below, the
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`remaining DUE DATES are unchanged. The parties may stipulate to
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`different dates for DUE DATES 2 through 5 (earlier or later, but no later
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`than DUE DATE 6). A notice of the stipulation, specifically identifying the
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`changed due dates, must be promptly filed. The parties may not stipulate to
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`an extension of DUE DATES 6 and 7.
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`5
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`IPR2015-00567
`Patent 7,080,607
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`V. CONCLUSION
`Based on the record before us, we institute an inter partes review in
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`IPR2015-00567 and grant ION’s motion to join that proceeding to IPR2014-
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`00688.
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`In consideration of the foregoing, it is hereby:
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`VI. ORDER
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`ORDERED that a trial is instituted as to the challenged claims of the
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`’607 patent only on the following grounds:
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`Claims 1 and 15 as anticipated by Workman;
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`Claims 1 and 15 as obvious over Workman; and
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`Claims 1 and 15 as obvious over Workman and Elholm;
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`FURTHER ORDERED that ION’s Motion for Joinder with respect to
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`the same grounds as instituted in the PGS IPR is granted, and that this
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`proceeding is joined with IPR2014-00688;
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`FURTHER ORDERED that the grounds on which IPR2014-00688
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`was instituted are unchanged and no other grounds are instituted in the
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`joined proceeding;
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`FURTHER ORDERED that the Scheduling Order in place for
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`IPR2014-00688 (Paper 34) remains unchanged, and shall govern the joined
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`proceedings;
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`FURTHER ORDERED that ION is not permitted to file papers,
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`engage in discovery, or participate in any deposition or oral hearing in
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`IPR2014-00687. ION, however, is permitted to appear in IPR2014-00688 so
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`that it may receive notification of filings and may attend depositions and oral
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`hearing. Should ION believe it necessary to take any further action, ION
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`should request a conference call to obtain authorization from the Board;
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`6
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`IPR2015-00567
`Patent 7,080,607
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`FURTHER ORDERED that IPR2015-00567 is terminated under 37
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`C.F.R. § 42.72 and all further filings in the joined proceeding are to be made
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`in IPR2014-00688;
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`FURTHER ORDERED that a copy of this Decision be entered into
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`the file of IPR2014-00688; and
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`FURTHER ORDERED that the case caption in IPR2014-00688 shall
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`be changed to reflect joinder with this proceeding in accordance with the
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`attached example.
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`7
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`IPR2015-00567
`Patent 7,080,607
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`For PETITIONERS:
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`David. Berl
`Thomas S. Fletcher
`Jessamyn Berniker
`Christopher Suarez
`Williams & Connolly, LLP
`dberl@wc.com
`tfletcher@wc.com
`jberniker@wc.com
`csuarez@wc.com
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`W. Karl Renner
`Roberto Devoto
`David L. Holt
`Fish & Richardson P.C.
`IPR37136-0004IP1@fr.com
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`For PATENT OWNER:
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`Michael L. Kiklis
`Scott A. McKeown
`Christopher A. Bullard
`Kevin B. Laurence
`Katherine D. Cappaert
`Christopher Ricciuti
`OBLON, SPIVAK, McCLELLAND,
`MAIER & NEUSTADT, L.L.P.
`CPdocketMcKeown@oblon.com
`CPdocketBullard@oblon.com
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`IPR2015-00567
`Patent 7,080,607
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`Example Case Caption for Joined Proceeding
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PETROLEUM GEO-SERVICES INC.,
`and
`ION GEOPHYSICAL CORPORATION
`AND ION INTERNATIONAL S.A.R.L.,
`Petitioners,
`
`v.
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`WESTERNGECO LLC,
`Patent Owner.
`____________
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`Case IPR2014-006881
`Patent 7,080,607
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`1 Case IPR2015-00567 has been joined with this proceeding.
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