-’¥:09~cv—01827
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVISION
`
`§ §
`
`§ §
`
`‘WESTERNGECO L.L.C.,
`
`Piaintiff,
`
`V.
`
`§ CIVIL ACTION NO.
`§
`§ Judge Keith P. Eliison
`ION GEOPHYSICAL CORPORATION,
`§
`FUGl.{{)~GEOTEAM, INC,
`§
`FUGRO-GEOTEAM AS,
`§
`FUGRO NORWAY MARINE SERVICES
`AS, FUGRO, INC, FUGRO (USA), INC. and §
`GEOSERVICES, INCK,
`
`JURY TRIAL DFZMANDED
`
`§ §
`
`Defendants.
`
`§
`
`I{)N’S FINAL INVALIDITY CONTENTIONS
`
`In accordance with the parties’ agreentent. the Courfs Mar/(man ruling. and the Court’s
`
`Local Patent Rules (particularly RR. 3-3), Defendant {ON Geophysicai Corporation (“ION”),
`
`submits its Final Invalidity Contentions identifying prior art and other grounds that invaiidate the
`
`asserted ctairns of US. Patent Nos. 633913038 (“the ‘038 patent"), 6,932,()} 7 (“the ‘017 patent”),
`
`1080,60? (“the ‘(307 patent"), 7.162.967 (“the ‘967 patent”), and 7,293,520 (“the ‘520 patent)
`
`(coilectiveiy, “WestemGeco’s asserted patents” or “WestemGec0’s patents~in~suit”). Attaches?
`
`as part of ION’s Final Invaiidity Contentions are claim charts in accordance with PR. 3-3(c),
`
`outlining in ctctaii the basis for EON’s contentions at the present time that the asserted claims of
`
`WesternGec0"s paten1s—in—suit are invalid on various grounds under Title 35.
`
`I.
`
`Il\TROI)UC'I‘I{)N
`
`ION’s Finai Invalidity Contentions address the Ciaims of WestemGeco’s patentsdn-suit
`
`asserted against ION in the Disclosures of Asserted Claims and Fina} Infringement Contentions
`
`{“FItCS”) submitted by WesternnGeco_. L.L.C. (“WestemGec0”). WestemGcc0 asserts that ION
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`2667 50§vl
`
`PGS V WESTERNGECO (|PR2014-00688)
`WESTERNGECO Exhibit 2156, pg. 1
`
`

`
`infringes claims l~7, lO—1l,
`
`i3~—17, 20823 3566, 3842, and 45~50 ofthe ‘O38 patent; claims 1-9
`
`and l6 ofthe ‘0l7 patent; claims 1-9 and l5 of the ‘607 patent; claims 1, 4-10. and 15 of the
`
`‘967’ patent, and oiaims l—3, 6-20, and 23~34 of the ‘S20 patent. Finally, iON does not accept
`
`WestemGeco‘s aliegzxtion that all asserted claims of the ‘Q17? ‘96?, ‘607, and ‘S20 goetents are
`
`entitied to a priority date of October 1, 1998. As such, upon a deterrninzttion of the actual
`
`priority date of the patents~in~suit, ION reserves the right to supplement its Final Invalidity
`
`Contentions with prior art based on the then-established priority dates.
`
`Where a feature of 8. prior art reference is not specificaliy identified in the attached claim
`
`charts as corresponding to a claim limitationi the lack of specific identification should not be
`
`regarded as a concession by ION that the prior art reference does not embody the claim
`
`limitation when the reference is properly interpreted from the perspective of one skiiled in the
`
`relevant art. WestemGcco has not
`
`identified which elements of the asserted claims (or
`
`combinations thereof) it contends were not known to one of ordinary skill in the art at the time of
`
`the alleged inventions of WesternGee0’3 patents~in~suit.
`
`For any claim limitation that
`
`WestemGeeo alleges is not disclosed in a particular prior art reference, ION reserves the right to
`
`prove that such limitation is either inherent in the reference or obvious to one of ordinary skill in
`
`the art at the relevant time, or that the limitation is disclosed in one or more other prior art
`
`references that, when combined, renders the asserted claims obvious under 3:3 U.S.C. § 103.
`
`The prior art references produced by lON in connection with these contentions are
`
`representative of the state of the prior art pertinent to invalidity.
`
`ION rescr\»‘es the right to
`
`identify other prior art or to supplement its disclosures or contentions under the following
`
`circunistances:
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`266?5G9vl
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`PGS V WESTERNGECO (|PR2014-00688)
`WESTERNGECO Exhibit 2156, pg. 2
`
`

`
`(i)
`
`ION reserves the right to amend these contentious and disclosures as new
`
`information becomes availabie.
`
`(ii)
`
`ION has not yet completed its discovery from WesteroGeeo. Such
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`discovery may include information that affects the disclosures and contentions
`
`herein.
`
`(iii)
`
`ION has also not yet completed its discovery from third parties who may\
`
`have inforrnation concerning additional prior art. Such discovery may include
`
`information that affects the disclosures and contentions herein.
`
`The attached claim charts cite particulal" teachings andlor disclosures of the prior art as
`
`applied to features of the asserted claims.
`
`I-Iowever, persons of ordinary skill in the art may View
`
`an item of prior art
`
`in the context of other publications,
`
`literature, products, and technical
`
`knowledge. Thus, ION also reserves the right to rely on non~c.itecl portions of the prior art
`
`references, related file histories, other publications or testimony as aids in understanding and
`
`interpreting the cited portions, as providing context to the art, and as additional evidence that the
`
`prior art discloses a claim element.
`
`ION furtheir reserves the right to rely on 11on—eited portions
`
`of the prior art references, related file histories, other publications, and testimony to establish that
`
`a person of ordinary skill in the art would have been motivated to combine certain of the cited
`
`references to render the asserted claims obvious.
`
`ION also reserves the right to rely upon, and
`
`incorporates herein by reference the invalidity contentions and prior art disclosed by
`
`W‘estemGeco and/or the Fugro Defendants.
`
`These Final
`
`Invalidity Contentions are not an admission by ION that
`
`the accused
`
`products (including any current or past version of these products) are covered by or infringe the
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`266?509v l
`
`PGS V WESTERNGECO (|PR2014-00688)
`WESTERNGECO Exhibit 2156, pg. 3
`
`

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`asserted claims of We5te;fnGeco’s patents—in-suit, particularly when these claims are properly
`
`construed.
`
`II.
`
`EDENTIFICATION OF PRIOR ART
`
`Pursmant to P.R. 3-3(a), ION provides the following list of prior art references that it
`
`contends anticipate (pursuant to 35 U.S.C. § 102) andior render obvious (pursuant to 35 U.S.C.
`
`§ 103) the asserted claims of WestemGeco*s patents-in-suit. The foilowing identificatiion of
`
`references, the identification of references in Section Ill and the attached claim charts are to be
`
`considered as a whole, and all contentions made among them are to be considered as a whole.
`
`In
`
`the event the identification of Ieferenccs in Section III andfor a claim chart provides a Contention
`
`based on as reference not
`
`identified in this Section,
`
`that contention nevertheless is to be
`
`considered as part of these Final invalidity Contentions.
`
`i.
`
`
`
`W____mM_
`DATES
`[
`PRIOR ART REFERILNCE
`September 20, I996
`lnteriiationai Patent Application No. WC) Filing Date:
`EE.‘2!é§13_?§i;_mm.Wi\.4;‘!IE.13..1ijZ:_l.§’,?m7WWs__.
`
`international ?ate11t Application No. W0 Filing Date:
`September 28, £999
`lL20t}€}/20895
`(‘_:]_Ej_ii1lesund ‘895”) _‘
`Published:
`April 13, 2000
`ii US. Patent No. 5,790,472 (“Workman Filing Date:
`December 20, 1996
`' ‘4?2 patent”)
`issued:
`August 4, 1998
`
`3
`
`Coggtty ofOrigin: United States
`US. Patent No. 4,404,664 (“Zachariadis Filing Date:
`December 31, 1980
`5 ‘663 patent")
`Issned:
`September 13, 1983
`
`g
`
`2.
`
`3.
`
`4.
`
`g S.
`
`E
`
`6.
`
`7.
`
`8.
`
`;
`
`i
`l
`i
`1
`
`Country ofOrigin: United States
`Issued:
`August 20, 1996
`Country of Origin: Notwax
`Fiiing Date:
`January 24, 1992
`Issued:
`April 6, 1993
`Country of Origin: United States
`Published Filing Date:
`December 19, 1997
`
`US. Patent No. 5,546,882 (“882 patent”)
`
`Filing Date:
`
`July 7, 1995
`
`
`
`Patent Cooperation Treaty
`Juiy Z, 1998
`98x’28636 Pubiished:
`No. W0
`J Application
`_C“Bittleston ‘636 app1ication”’}
`Kaiman, its, 1960, “A New Approach to Date of Pttbiication:
`1960
`Linear Filtering and Prediction Problems,”
`Trans of ASMIEL-J of Basic Engineering,
`
`fii_
`‘
`I US. Patent No. 5,200,930 (""930 patent”)
`'
`
`26675U9v1
`
`4
`
`PGS V WESTERNGECO (|PR20’l4-00688)
`WESTERNGECO Exhibit 2156, pg. 4
`
`

`
`N0.
`
`9.
`
`PRIOR ART REFERENCE
`voi. 82 (series iii).
`A copy of this
`reference is attached as Flxliibit 18.
`ION’s 35 u.s.<;:. § 1023} prior art
`
`i
`
`DATES
`
`III.
`
`SPECIFIC PRELIMINARY INVALIDITY CONTENTIONS
`
`A.
`
`Antiei ation Under 35 U.S.C.
`
`
`
`
`
`182
`
`1.
`
`General Comments
`
`in accordance with PR. 3-»3{‘o) and (C), EON identifies the references in Section 2 below
`
`as anticipating the asserted claims of the Western(}eeo patents—iri~suit under one or more
`
`provisions of 35 U.S.C. § 102. The references are also identified in the claim charts attached
`
`hereto. The claim charts identify specific aspects of the cited prior art references that correspond
`
`to the respective claim iimitations.
`
`l~iowe\/er, the ciaim charts are exemplary only and inciude at
`
`least one citation to an anticipatory reference for each limitation of the respective asserted ciaim.
`
`Thus, although i0N has identified at least one citation per claim iimitation present in a reference,
`
`each and every disclosure of the same limitation in the same reference is not necessarily
`
`identified in the charts. A reference may contain additional support for a oarticular claim
`
`limitation. Persons of ordinary skiii in the art generally read a prior art reference as a whole and
`
`in the context of other publications and literature, physicai embodiments and knowledge in the
`
`fieid of art.
`
`ION thus reserves the right to rely on non—citecl portions of the prior art references and on
`
`other publications and expert testimony to provicie context, and as aids to understariding and
`
`interpreting the portions that are cited. To the extent any limitation is deemed not to be precisely
`
`met by an itctn of prior art, any purported differences are such that the claimed subject matter as
`
`a whole would have been obvious to one skilled in the art at the time of the aileged invention in
`
`View of the state of the art and knowledge of those skilled in the art. Where ION cites to a
`
`2667§09vl
`
`PGS V WESTERNGECO (|PR20’l4-00688)
`WESTERNGECO Exhibit 2156, pg. 5
`
`

`
`particular figure in a prior art reference? the citation should he understood to oncornpass the
`
`caption and description of the figure and any text relating to the figurc in the reference in
`
`addition to the figure itself. Corivcrsciy, where 21 cited portion of tcxt refers to a figure, the
`
`citation shouid be understood to inciodc the figure as well.
`
`Where the anticipatory reference is a prior art product or physical cniboclimcnt,
`
`the
`
`attached claim charts may include citatioris to other materials in order to cstablish ccrtain aspects
`
`of the prior art product or physical embodiment. Such citations do not diminish the anticipatory
`
`nature of the prior art product or physical embodiment. At minirnum, citations to additional
`
`prior art references establish the obviousncss of the respective claims, and the rnotivation to
`
`combine a prior art product or physical embodiment with a prior art reference discussing that
`
`prior art product or physical embodiment is sclllcvidcot.
`
`As noted above, the identification of anticipatory references. the identification of prior art
`
`references in Section ii above, and the associated claim charts, are to be considered as a whole,
`
`and oil contentions made among them are to be considered. Thus, in the event the identification
`
`of references in Section II andfor a claim chart provides an anticipation contention not identified
`
`below M or vice versa —- that contention is ncvertholcss to be considered as part of these Final
`
`Invalidity Contentions.
`
`ION may also rely on the Unitcé States Patent and Tradcniark ()fficc‘s
`
`characterizzations of the teachings in and the effects of the prior art, as well as the admissions,
`
`statements, representations, and characterizations made by Wcsternéicco, the named inventor, or
`
`0thc".I‘s substantively involved in the preparation or prosecution of the WcstcmGeco patcnts~in-
`
`suit.
`
`Those
`
`statements may
`
`include
`
`admissions,
`
`statements,
`
`representations,
`
`and
`
`characterizations concerning the prior art during the prosecution of relevant patent applications,
`
`including reexamination, or any related US. or foreign patent. applications.
`
`266’? S09v1
`
`PGS V WESTERNGECO (|PR20’l4-00688)
`WESTERNGECO Exhibit 2156, pg. 6
`
`

`
`2.
`
`Sggccific Anticigation Contentions
`
`The following prior art references anticipate the rcspectiveiy identified claims of the
`
`Wost:cmGeco patcnts~»in«—suit, as set forth in the foilowing ciaim chart exhibits:
`
`1.
`
`2.
`
`L1)
`
`International Patent Application No. W0
`-
`‘G38 Patent
`200(}f2{}895 ("Tlillesund ‘895”).
`r ee Exhibit 1.
`
`»~ US. Patent No. 5,790,472 (“Worionan ‘472
`‘O1’? Patent
`patent”). See Exhibit 2.
`
`"607 Patent
`
`— US. Patent No. 5,790,472 (“\N'orlm1an ‘472
`
`patent"). See Exhibit 3.
`
`4.
`
`‘967 Patent — US. ?atcnt No. 5,209,930 (M930 patent") See
`Exhibit 4,
`
`5.
`
`I()N’s 35 U.S.C. § l02(fl prior art. See Exhibit 5.
`
`B.
`
`Obviousness Under 35 U.S.C.
`
`103
`
`I.
`
`General Comments
`
`ln accordance with P.R. 3-389) and (C), ION identifies the foliowing combination of
`
`references as rendering the asserted claims of the WcsternGeco patents-in-suit obvious under 35
`
`U.S.C. § 103. {ON also identifies and incorporates by reference the combinations identified in
`
`the rcfcrcncxzd claim cliarts attached l1crc.to.
`
`The attached claim charts demonstrate the
`
`ohviousness of the asserted claim and identify specific disciosures or aspects of each reference in
`
`the combination that correspond to the respective claim limitations.
`
`For each identified
`
`combination, the full teachings of the references should be considered. The claim charts are
`
`exempiary only, and inciude at ieast one citation to one or more of those references for each
`
`Claim limitation. Thus, although §ON has identified at ieast one citation per claim limitation
`
`present in 21 combination of references, each and every disclosure of the same limitation in the
`
`same combination ofrcforenccs is not necessariiy identified in the chart. That is, a combination
`
`of references may contain additional support for a particular claim limitation.
`
`Persons of
`
`2667S09v1
`
`PGS V WESTERNGECO (|PR2014-00688)
`WESTERNGECO Exhibit 2156, pg. 7
`
`

`
`ordinary skill in the art generally read a prior art retercnce as a whole and in the context of other
`
`publications and literature.
`
`ION thus reserves the right to rely on non»cited portions of the prior art references and on
`
`other publications and expert testimony to provide context and as aids to understanding and
`
`interpreting the portions that are cited. To the extent any limitation is deemed not to be exactly
`
`met by a combination of references, then any purported ditferences are such that the claimed
`
`subject matter as a whole would have been obvious to one skilled in the art at the time of the
`
`alleged invention, in View of the state of the art and knowledge of those skilled in the art. Where
`
`ION cites to a particular figure in a prior art reference, the citation should be understood to
`
`encompass the caption and description of the figure and any text relating to the figure in the
`
`reference, in addition to the figure itself. Conversely, where a cited portion of text refers to a
`
`figure, the citation should he understood to include the figure as well.
`
`Where the combination of references
`
`includes a prior art product or physical
`
`ernhoclirnent, the Section 303 claim charts may also include citations to other materials in order
`
`to establish certain aspects of the prior art product or physical embodiment. Such citations do
`
`not diminish the disclosure of the prior art product or physical embodiment. At rninimmn,
`
`however, citations to additional prior art references establish the obviousness of the respective
`
`claims, and the motivation to combine a prior art product or physical embodiment with a prior art
`
`reference discussing that prior art product or physical embodiment is se1f—evident and/or obvious
`
`to persons of ordinary skill
`
`in the relevant art at the time of the alleged inventions of the
`
`Westernflieco patents-in»suit.
`
`Where a combination is directed to a dependent claim, but not the independent ciaim
`
`from which the dependent claim depends, it should be understood that the claim chart for the
`
`2667509vl
`
`PGS v WESTERNGECO (|PR20’l4-00688)
`WESTERNGECO Exhibit 2156, pg. 8
`
`

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`ootnbination incorporates
`
`the claim chart
`
`for
`
`f1rst~identified prior art
`
`reference in the
`
`combination. As an example, claim 2 of the ‘038 patent depends from claim 1. For a contention
`
`that dependent claim 2 is obvious over the combination of Reference X and Reference Y, the
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`claim chart showing that Reference X anticipates claim 1 should be understood as being
`
`incorporated into the obviousness claim clrart.
`
`In other words.
`
`the chart for the primary
`
`reference of a combination is incorporated by reference into any ohviousness chart that identifies
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`the primary reference.
`
`The following identification of combinations, the identification of references in Section
`
`11, and associated claim charts, are to be considered as at whole, and all contentions made among
`
`them are to be considered. Thus, in the event the identification of references in Section ll and/or
`
`a claim chart provides an obvioosness contention not identified below - or vice versa
`
`that
`
`contention is nevertheless to be considered as part of these Final invalidity Contentions.
`
`In estabiishing obviousness under Section 103, ION may also rely on the United States
`
`Patent and Trademark Officcfs characterizations of the teachings in and the effects of the prior
`
`art.
`
`ION may further rely on the admissions, statements, representations, and characterizations
`
`made by WesternGeco, the named inventor, or others substantively involved in the preparation
`
`or prosecution of
`
`the WesternG<:co
`
`patents~in—suit,
`
`including admissions,
`
`statements,
`
`representations, and characterizations concerning the prior art during the prosecution of relevant
`
`patent applications, including reexamination, or any related US. or foreign patent applications.
`
`2.
`
`“Motivation to Combine”
`
`For each combination of references identified below and/or in an attached claim chart,
`
`ION hereby identifies a “motivation” for one of ordinary skill in the art at the time ofthc alleged
`
`invention of the WesternGeeo patents-in~soit to combine those references. The “motivation” to
`
`266?509vl
`
`PGS v WESTERNGECO (|PR20’l4-00688)
`WESTERNGECO Exhibit 2156, pg. 9
`
`

`
`combine is identified in View of the Supreme Court decision in K816 [rat 7 Co. v. Telejlex 1’nc., 550
`
`US. 398 (2007), and is not limited to any specific test or analytical framework for determining
`
`obviousness (such as the “teaching, suggestion, or rnotivation" test).
`
`it would have been obvious for a person of ordinary skiii in the art at the time of the
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`purported invention to combine each of the prior~art eiernents of the respective coinbinations
`
`identified below with other prior-art eiements of those respective combinations to create a device
`
`or method having the ability to control both the depth and lateral position of marine seismic
`
`streamers using streamer positioning devices controlled by a control system that is either located
`
`on the towing vessel or the streamer positioning device or both anticipating every limitation of
`
`the asserted eiairns of the WesternGeco patents~in-suit. A person of ordinary skii} would have
`
`found it obvious at the time of the purported invention to eombine these elements, because the
`
`elements would predictably perform their imown prior—art functions in said device or method to
`
`centre} the position of marine seismic streamers, the combination of elements would entail a
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`simple substitution of one known elenient for another to achieve predictable results, andfor the
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`combination would have been obvious to try.
`
`Each of the combinations identified below and/or in the attached claim charts relies on
`
`the substitution or incorporation of elements that were known in the prior art, as described in the
`
`cited references. Ali of the art cited below wouid have been art that one of skiil in the art would
`
`have been aware of or referred to in addressing the problem claimed to be addressed by the
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`WesternGeeo patents-in-suit, as well as other problems andfor market demands prior to the date
`
`of the purported invention, providing a reason for combining that art in the manner described
`
`below. Also, as noted above,
`
`the combination of the familiar elements claimed in the
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`WesternGeco patents-in-suit according to known methods would have been obvious because it
`
`266'i509vl
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`10
`
`PGS v WESTERNGECO (|PR20’l4-00688)
`WESTERNGECO Exhibit 2156, pg. 10
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`

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`does no more than yieid predictable results. The references disclosed herein describe methods
`
`that were known to offer what the WesternGeco patemsdn-suit assert are improvements over the
`
`prior art. As such, one of skill in the art would have been motivated to combine thorn in the
`
`manner disclosed in these Final invalidity Contentions.
`
`While not necessary, a motivation to combine may also he found in the references
`
`themselves. One of ordinary skill in the art would be motivated to combine a reference that
`
`refers to, or otherwise explicitly invites combination with, another reference.
`
`The references identified below also describe the elements of the asserted claims in
`
`sufficient detail ~» whether the structure and function or just the function with the structure
`
`known to one of ordinary skill in the art.
`
`In each instance, a person of ordinary skill in the art
`
`could have modified the device using the substituted or incorporated elements, and the results of
`
`the substitutions and incorporations would have been predictable. Where substitutions or
`
`combinations have been made, each of the substituted or combined elements is similar to the
`
`original elements and provides similar functionality andior enhancement.
`
`it Would have been
`
`predictable to one skilled in the art that the modified device or system, 1‘. 6., the device or system
`
`resulting from the combined teachings of the applied references, could be substituted or
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`incorporated into the original devices or systems and used to provide the claimed structure or
`
`functionality without altering, the purpose of the original devices or systems, or their elements.
`
`Further, the references demonstrate that a person of ordinary skill in the art already knew how
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`the substituted or incorporated elements would operate and how they would be made.
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`Furthermore, the WesternGeco patents~in»suit are directed generally to control systems
`
`for positioning marine seismic streamers, and persons working in the field of marine seismic
`
`technology would be aware of the research and development that had been done in the field.
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`2667509vl
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`1 1
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`PGS V WESTERNGECO (|PR2014-00688)
`WESTERNGECO Exhibit 2156, pg. 11
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`

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`Among other things, the control systems ensure proper positioning of seisrnic streamers towed
`
`behind vessels, which is vital to accurate marine seismic surveys.
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`"Riot is, while the streamers
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`are towed behind a vessel, the control system, including streamer positioning devices, allow the
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`user to maintain desired streamer positioning. These and other attributes of the control systems
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`for marine seismic streamers were welt known prior to 1998. For example, it was known that to
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`complete accurate marine surveys one needed the ability to control the positioning of the marine
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`streamers.
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`Thus, at a minimum, the technioiogy and state of the marine seismic streamer control
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`System industry was such that” to the extent the claimed combinations might be viewed as not
`
`already existing by that time»«-they led inevitably to combinations such as those claimed in the
`
`WesternGeco patents—in—snit.
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`lndeed, by the time of the alleged invention of the WesternGeco
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`patents~in«sui1, demands known to the design community or present in the marketplace, and the
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`background knowledge possessed by a person having ordinary skilt
`
`in the art, all provided
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`readily apparent reason to combine the known elements in the fashion claimed by the
`
`Westem(3eeo patentsdn-suit. Combinations of the individual claimed features, which have been
`
`known to the marine seismic streamer control system and marine survey communities prior to
`
`the allegeri invention of the Weste1*nGeco paterrts-in-suit, would have been within the ordinary
`
`creativity of one skilled in the art at the time of the purported invention, and would therefore
`
`have been obvious under 35 U.S.C. § 103.
`
`Although l()N has
`
`identified the above
`
`“motivations” to combine,
`
`additional
`
`“motivations” to combine may exist. Persons of ordinary skill in the art generally read a prior art
`
`reference as a whole and in the context of other publications and literature, physical
`
`esavsosvl
`
`12
`
`PGS V WESTERNGECO (|PR2014-00688)
`WESTERNGECO Exhibit 2156, pg. 12
`
`

`
`ombodimcms and imowledgo in the field ofart.
`
`ION reservos the right to rely on sucli additional
`
`“n‘1otivatiims” to combine.
`
`3.
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`Sgecific Obviousness Contentions
`
`The ‘following combiiiations of prior art references render the respectively identified
`
`claims of the \?VestornGeco pa£€nis~iri»suit obvious under 35 U.S.C. § 103:
`
`I.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`International Patent Application No. W0
`-
`“038 Patent
`2000/20895 ("fiillesuiid “895"). See Exliibit 6.
`
`I.-‘merit Application No. W0
`Intmnational
`—
`‘D38 Patent
`297/1 i 395 (“Olivier ‘395”). See Exhibit. 7.
`
`lnternationai Patent Application No. W0
`~
`‘G38 Patent
`2000/20895 (“fiillesund ‘895”) & 15.8. Patent No. 5.200.930
`(“‘93O patent”). See Exhibit 8.
`
`I’ateut Application No. W0
`International
`-
`‘038 Patent
`2000/20895 (“fiillesund ‘895”) & U.S. Pateni N0. 5.546.882
`(“$82 §’a1'c:m”). See Exhibit 9.
`
`- U.S. Patent No. 5,790,472 (“Workman ‘472
`‘O17 Patent
`patent, See Exhibit IO.
`
`~ US. Patent No. 5,790,472 (“Workman ‘472
`‘G17 Patent
`patent”) & Kalman, RF... E960. “.4 New cipproach to Linear
`Filtering and I’:-edéction Problems,” Trans of ASME-3. of
`Basic Engineerizig. vol. 82 (Series D). See Exhibit ll.
`
`‘472
`~ US. Patent No. 5,790,472 {“Wor1<mari
`‘967 Patent
`patent”) & Intemationai Patent Application No. WO 98/28636
`(“Bittleston ‘636 application”). See Exhibit 12.
`
`- US. Patent No. 5,790,472 (“Workman ‘472
`‘607 i’atent
`patent”) & Kaéznaii, R.E., 1960, “A New approaclv 10 Linear
`Fiiieririg and Prediction Problems,” Trans of ASME—3. of
`Basic Engineering, vol. 82 (Series D). See Exliibit 13.
`
`— US. Patent No. 5,790,472 {“Workman *47.’Z
`‘607 Patent
`patent”) & Iilternaiional §’ataent Application No. WO 98/28636
`(“Bitilestori ‘636 application”). See Exhibit E4.
`
`10. ‘967 Patten: ~ US. Patent No. 4,404,664 (‘Zachariadis ‘664
`patent”) & international Patent Application No. W0 297/11395
`(“Olivier 995”). See Exhibit 15.
`
`2.667 589v I
`
`13
`
`PGS v WESTERNGECO (|PR2014-00688)
`WESTERNGECO Exhibit 2156, pg. ‘I3
`
`

`
`— US. Patent No. 5,790,472 (“Workman ‘472
`11.‘607 Patent
`patent. See Exhibit 16.
`
`- US. Patent No. 5,790,472 (“Workman “472
`12. ‘D17 Patent
`patent”), Kalman, R.E., 1960, “A New approach to Linear
`Filtering and Predzction Problems,” Trans of ASME~l'. of
`Basic Engineering, vol. 82 (Series D), and US. Patent N0.
`4,404,664 (“Zachai*iadis ‘664 patent”). See Exhibit 17.
`
`EON also contends, in the alternative, that each cf the anticipatory references identified
`
`above in Section IEI.A.2 and in the attached claim Cll£t1'[S render all of the assened claims obvious
`
`when standing atone and when considered in View of the knowledge of one skilled in the art at
`
`the time of the alleged inventions of the WesternGeco patents—in-suit. Thus, for any claim or
`
`claim element that is shown in a claim chart as being anticipated. ION also contends. in the
`
`alternative, that the claim or claim element is rendered obvious in View of the same identified
`
`disclosure in each of the anticipatory references kientifieci herein.
`
`In other words, for all of the
`
`anticipatory references identified above, ION contends,
`
`in the alternative.
`
`that each of the
`
`respective anticipatory references renders each asserted claim obvious on its own without the
`
`need to combine the identified anticipatory reference with any other reference.
`
`Alternatively, should WesternGeC0 assert that a given claim element is missing from a
`
`given anticipatory reference, ION reserves the right to argue that it would have been obvious to
`
`combine the reference with any one of the above—mentioned obvieusness references to provide
`
`the purportedly missing element.
`
`IV.
`
`INVALIDITY UNDER 35 U.S.C. § 112
`
`Pursuant to PR. 3-3(d), ION identifies exemplary bases for invalidating the asserted
`
`claims of the WestemGeco patents—in~suit for indeftniteness,
`
`lack of an adequate written
`
`description, lack of enablement, and/or failus:e to disclose the best mode.
`
`ION does not address
`
`the failure of any ancestor application to support the asserted claims here as required for the
`
`2(3b7509vl
`
`14
`
`PGS v WESTERNGECO (|PR20’l4-00688)
`WESTERNGECO Exhibit 2156, pg. ‘I4
`
`

`
`claims to gain benefit of any filing, date(s) of any ancestor application. As such, upon
`
`determination that any of WestemGec0°s asserted priority dates for the WestemGeeo patents-in~
`
`suit are inapplicable, ¥ON reserves the right to supplement its contentions based on additional
`
`prior art dated after the alieged priority dates. Further, ION reserves the right to assert invalidity
`
`based on any and all other grounds not referenced herein and not required to be disclosed in
`
`these contentions.
`
`Each asserted claim of the WesternGeeo patents-in-suit is invalid under 35 U.S.C. § 112
`
`for failure to particularly point out and distinctly claim the subject matter the inventor regards as
`
`the alleged invention{s) and thus are fatally indefinite. Further, each asserted claim is iiwaiid
`
`under 35 13.8.0 § 112 in that the speeifreation does not set forth the alleged invention(s) so as to
`
`enable a person skilled in the art to make and use them without unclue experimentation. For
`
`example, in a number of internal feasibility reports, development plans, specifications, tests, and
`
`other documents predating the filing ef the WestemGeeo patents—in~snit (e. WGO0009017»
`
`9125; WG00{}Oi52{)-1611; WG000O8663-T154; WGO0GO8560«66?; WGOOOI 1673-780;
`
`WGOO001728-48; WG00063947-82; WGOOO1l’?8l—826; WG(}()O08050-294: WG00Oll936«59;
`
`WG00008351659; WGO361080—84; WGOO0I3052-85; and WGOO62727-43), WestemGec0
`
`identifies 2: number of “requirements” that are not disclosed in the patents-in suit. Moreover,
`
`each asserted claim is invalid under 35 U.S.C. § 112 for failing to disclose the preferred
`
`embodiment.
`
`WesternGeeo’s asserted claims are invalid for failing to disclose the best mode. As set
`
`forth above, WesternGeC0 failed to disclose certain “requirements” in the patents~in-suit.
`
`invalidity based on failure to disclose the best mode is a fact intensive inquiry that requires
`
`discovery on the inventor(s) state of mind at the time of invention and patenting. ¥ON reserves
`
`2€»6'/‘S09v1
`
`PGS V WESTERNGECO (|PR2014-00688)
`WESTERNGECO Exhibit 2156, pg. 15
`
`

`
`the right to supplemerlt its best mode contentions upon further discovery from WesternGeeo.
`
`Subject to iON’s right to supplement, the named inventors of the WesternGeco patcnts—in~sui1
`
`knew’ of a preferred mode that was better than the mode disclosed in the Wcsternfieco patents
`
`in—suit but concealed this preferred mode from the pubiic. The disclosures in the VVf;‘Si€:I‘$1G€C0
`
`patents—in—suit were not adequate enough to enable one skilled in the pertinent art to oractiee the
`
`best mode.
`
`Although the Claims of the WestemGe<:0 paterrts—in—suit appear to require a particular
`
`structure, the corresponciing written description in the patents is inadequate under Section H2
`
`because it does not enable persons skiiled in the art to make and use the alleged inventions
`
`without undue experirnentation. For exarnpie, ‘O17 patent ciaim 1 requires “calculating desired
`
`changes in the orientation" of the wings. Persons skiiled in the art could not determine from
`
`reading the patent specification the iimits, if any,
`
`imposed on the changes to the wings
`
`orientation.
`
`Simiiar indetiniteness issues exist in the asserted indepencicnt claims of the ‘Q17, ‘038
`
`and ‘607 patents anti thus ali dependent claims as weii. Furthermore, many of the asserted
`
`dependent claims of the WesternGeco patents-in-suit also suffer from similar indctiniteness
`
`issues. Each asserted claim is also invalid under 35 U.S.C. § 1 12 because the written description
`
`does not reflect that the inventors were in possession of the claimed inVenti0n(s}.
`
`Based on WesternGeco’s infringement Contentions it appears that WesternGeco is
`
`asserting a meaning and scope for the bohied language that goes beyond any written description
`
`support in the specifications of the patents—in—suit and results in a eiairn scope that is not enabied
`
`by the specifications. However, because WestcrnGcco‘s infringement Contentions are not
`
`entirely clear as to thes