UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF TEXAS
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`HOUSTON DIVISION
`
`WESTERNGECO LLC,
`
`§
`
`Plaintiff,
`
`v.
`ION GEOPHYSICAL CORP.,
`Defendant.
`
`g
`g CIVIL ACTION NO. 09-cv-1827
`g
`g
`
`MEMORANDUM AND ORDER
`
`In this patent infringement suit, the Court is asked to construe aspects of siX
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`patents.
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`In particular,
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`the Court considers the asserted claims of US. Patent Nos.
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`6,932,017 (the “‘017 Patent”), 7,080,607 (the “‘607 Patent”), 7,162,967 (the “‘967
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`Patent”), and 7,293,520 (the “‘520 Patent”) (“Bittleston Patents” collectively); US
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`Patent. No. 6,691,038 (the “‘038 Patent” or “Zajac Patent”); and US. Patent No.
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`6,525,992 (the “‘992 Patent” or “Ion Patent”). A hearing was held on May 14, 2010,
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`during which the parties presented argument in support of their proposed constructions.
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`This Court now construes the disputed claim terms as a matter of law under Markman v.
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`Westview Instruments, Inc, 52 F.3d 967, 976 (Fed. Cir. 1995), afl’d, 517 US. 370
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`(1996).
`
`I.
`
`BACKGROUND
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`At issue in this case is marine seismic streamer technology that is deployed
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`behind ships. These streamers, essentially long cables, use acoustic signals and sensors to
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`create three-dimensional maps of the subsurface of the ocean floor in order to facilitate
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`natural resource exploration and management. For many seismic studies, it is important
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`PGS v WESTERNGECO (IPR2014-OO688)
`WESTERNGECO Exhibit 2161, pg. 1
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`that the streamers be located at a specific depth and lateral position with respect to one
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`another in order to achieve optimal imagery generated from the signals. In addition,
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`greater control over the position of the streamers prevents streamer arrays from become
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`entangled, and allows the streamer vessel to maneuver safely around impediments such
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`as rocks and oil rigs. The patents at issue all pertain to streamer positioning devices, or
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`devices that are used to control the position of a streamer as it is towed.
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`On June 12, 2009, Plaintiff WesternGeco LLC (“WG”) filed a Complaint alleging
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`that Defendant Ion Corporation (“Ion”) was infringing upon the Bittleston Patents, so
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`named after their inventor, Simon Bittleston, and the Zajac Patent, invented by Marc
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`Zaj ac. All five of these patents are incorporated into WG’s streamer positioning product
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`called “Q-Marine.” In response to the lawsuit, Ion filed a counterclaim against WG,
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`alleging that WG was in fact infringing upon an Ion-owned patent, the ‘992 Patent.
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`According to WG, although several models were tested, no functional products
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`embodying the technology in the ‘992 Patent has ever been produced by Ion. Ion does not
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`appear to dispute this point.
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`Aside from the patent issues, there are several other claims and counterclaims
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`being asserted by the parties in this case. Most notably, the parties are in direct dispute as
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`to inventorship of the technology embodied in the Bittleston patents. Apparently, a series
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`of meetings took place between Simon Bittleston and employees of DigiCOURSE, Inc.
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`(“DigiCOURSE”), the predecessor of Ion, in 1995, during which disclosures between the
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`parties
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`concerning steamer positioning technology were made pursuant
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`to a
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`Confidentiality Disclosure Agreement. Ion is asserting that the technology embodied in
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`the Bittleston Patents contains elements of a DigiCOURSE prototype that was provided
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`PGS v WESTERNGECO (IPR2014-OO688)
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`to Bittleston during these meetings. The Court previously dismissed Ion’s breach of
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`contract and conversion counterclaims against WG. (See Mem. & Order, Oct. 28, 2009,
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`Doc. No. 35.) The parties now seek to construe certain terms contained in all siX patents-
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`in-suit.
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`II.
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`LEGAL STANDARD- MARKMAN HEARINGS GENERALLY
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`A.
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`Claim Construction
`
`Claim construction is a matter of law, and thus the task of determining the proper
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`construction of all disputed claim terms lies with the Court. Markman v. Westview
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`Instruments, Inc., 517 US. 370, 372 (1996). The Federal Circuit has opined extensively
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`on the proper approach to claim construction, most notably in its recent opinion in
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`Phillips v. AWH Corp, 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
`
`The goal of a Markman hearing is to arrive at the ordinary and customary
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`meaning of a claim term in the eyes of a person of ordinary skill in the art. Phillips, 415
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`F.3d at 1313. In order to do so, the Court should first look to intrinsic evidence to decide
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`if it clearly and unambiguously defines the disputed terms of the claim. Vitronics Corp. v.
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`Conceptronic, Inc., 90 F. 3d 1576, 1585 (Fed Cir. 1996). The intrinsic evidence includes
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`the claims themselves, the specification, and the prosecution history. Phillips, 415 F.3d at
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`l3 l4.
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`1.
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`Claim Language
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`Words of a claim are generally given their ordinary and customary meaning,
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`which is the meaning a term would have to a person of ordinary skill in the art after
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`reviewing the intrinsic record at the time of the invention. 02 Micro Int 7 Ltd. v. Beyond
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`Innovation Technology Co., 521 F.3d 1352, 1360 (Fed. Cir. 2008). Thus, the inquiry into
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`WESTERNGECO Exhibit 2161, pg. 3
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`how a person of ordinary skill in the art understands a claim term provides an objective
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`baseline from which to begin claim interpretation. Phillips, 415 F.3d at 1313. That
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`starting point is based on “the well-settled understanding that inventors are typically
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`persons skilled in the field of the invention, and that patents are addressed to, and
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`intended to be read by, others of skill in the pertinent art.” Id. A district court is not
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`obligated to construe terms with ordinary meanings, lest trial courts be inundated with
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`requests to parse the meaning of every word in the asserted claims. 02 Micro Intern. Ltd,
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`521 F.3d at 1360; see also Biolec Biologische Naiurverpackungen GmbH & Co. KG v.
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`Biocorp, Inc., 249 F.3d 1341, 1349 (Fed. Cir. 2001) (finding no error in non-construction
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`of “melting”); Mentor H/S, Inc. v. Med. Device Alliance, Inc., 244 F.3d 1365, 1380 (Fed.
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`Cir. 2001) (finding no error in the lower court's refusal to construe “irrigating” and
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`“frictional heat”).
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`The claims themselves provide substantial guidance as to the meaning of
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`particular claim terms. Phillips, 415 F.3d at 1314. To begin with, the context in which a
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`term is used in the asserted claim can be highly instructive. Id. Other claims of the patent
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`in question, both asserted and unasserted, can also be valuable sources of enlightenment
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`as to the meaning of a claim term. Vilronics, 90 F.3d at 1582. Because claim terms are
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`normally used consistently throughout the patent, the usage of a term in one claim can
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`often illuminate the meaning of the same term in other claims. Phillips, 415 F.3d at 1314.
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`“[D]ifferent words or phrases used in separate claims are presumed to indicate that the
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`claims have different meanings and scope.” Seachange Inl’l, Inc. v. C—COR, Inc., 413
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`F.3d 1361, 1368 (Fed. Cir. 2005). Furthermore, the presence of a dependent claim that
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`adds a particular limitation gives rise to a presumption that that limitation in question is
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`PGS v WESTERNGECO (IPR2014-OO688)
`WESTERNGECO Exhibit 2161, pg. 4
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`not present in the independent claim. Phillips, 415 F.3d at 1314 (citing Liebel—Flarsheim
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`Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004)).
`
`2.
`
`Specification
`
`In addition,
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`the specification, or the part of the patent where the inventor
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`describes and illustrates the invention in significant detail, “is always highly relevant to
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`the claim construction analysis. Usually, it is dispositive; it is the single best guide to the
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`meaning of a disputed term.” Vilrionics, 90 F.3d at 1582. The importance of the
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`specification in claim construction derives from its statutory role. The relationship
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`between the written description and the claims is enforced by the statutory requirement
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`that the specification describe the claimed invention in “full, clear, concise, and exact
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`terms.” 35 U.S.C. § 112, 11 1. Consistent with that general principle, cases recognize that
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`the specification may reveal a special definition given to a claim term by the patentee that
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`differs from the meaning it would otherwise possess.
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`In such cases,
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`the inventor's
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`lexicography governs. Phillips, 415 F.3d at 316. In other cases, the specification may
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`reveal an intentional disclaimer, or disavowal, of claim scope by the inventor. In that
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`instance as well, the inventor has dictated the correct claim scope, and the inventor's
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`intention,
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`as expressed in the specification,
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`is
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`regarded as dispositive.
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`Id. The
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`specification may also resolve ambiguous claim terms that are not sufficiently clear to
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`permit the scope of the claim to be ascertained from the words alone. Teleflex, Inc. v.
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`FicosaN. Am. Corp, 299 F.3d 1313, 1325 (Fed. Cir. 2002). Clear statements of scope in
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`the specification are determinative of the correct claim construction. Id. at 1327.
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`Notably, while the specification may describe very specific embodiments of the
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`invention, the claims are not to be confined to these embodiments. Venlcma Medical
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`PGS v WESTERNGECO (IPR2014-OO688)
`WESTERNGECO Exhibit 2161, pg. 5
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`Systems, Inc. v. Biogenex Laboratories, Inc., 473 F.3d 1173, 1181 (Fed. Cir. 2006)
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`(quoting Phillips, 415 F.3d at 1323); see also DSW, Inc. v. Show Pavilion, Inc., 537 F.3d
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`1342, 1348 (Fed. Cir. 2008) (“Moreover, when claim language is broader than the
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`preferred embodiment,
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`it is well settled that claims are not to be confined to that
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`embodiment”); Innova/Pure Water Inc. v. Safari Water Filtration Sys, Inc., 381 F.3d
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`1111, 1117 (Fed. Cir. 2004) (stating that “[p]articular embodiments appearing in the
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`written description will not be used to limit claim language that has a broader effect”);
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`Teleflex, 299 F.3d at 1327 (noting that claim terms take on their ordinary and customary
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`meaning, regardless of number of embodiments disclosed in the specification, unless
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`intrinsic record reflects “expression of manifest exclusion or restriction, representing a
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`clear disavowal of claim scope”).
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`However, the Federal Circuit has also held there to be certain instances where
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`limiting language contained within a specification can lead to a restrictive construction.
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`For example,
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`in Lizardtech, Inc. v. Earth Resource Mapping, Inc, 433 F.3d 1373,
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`1375 (Fed. Cir. 2006), the court stated:
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`However, in whatever form the claims are finally issued, they must be
`interpreted, in light of the written description, but not beyond it, because
`otherwise they would be interpreted to cover inventions or aspects of an
`invention that have not been disclosed. Claims are not necessarily limited
`to preferred embodiments, but, if there are no other embodiments, and no
`other disclosure,
`then they may be so limited. One does not receive
`entitlement to a period of exclusivity for what one has not disclosed to the
`public.
`
`See also Anderson Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1367 (Fed. Cir.
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`2007)
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`(upholding district court’s limiting construction of a claim term based on
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`specif1cation language that indicated that the limitation was not a preferred embodiment,
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`but rather “a critical element in the process”); Honeywell Int ’1, Inc. v. ITT Indus, Inc.,
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`PGS v WESTERNGECO (IPR2014-OO688)
`WESTERNGECO Exhibit 2161, pg. 6
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`452 F.3d 1312, 1318 (Fed. Cir. 2006) (holding that the meaning of a claim was limited to
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`the single embodiment disclosed in the specification, and specifically noting that this sole
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`embodiment was consistently referred to as “this invention” or “the present invention”).
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`In Honeywell, the Federal Circuit found that the use of “present invention language”
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`within the specification was significant in deciding whether claim terms could be limited
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`by certain disclosed embodiments because “[t]he public is entitled to take the patentee at
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`his word .
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`.
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`.
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`.” Honeywell, 452 F.3d at 1316-18. Relatedly, in Toro Co. v. White Consol.
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`Industries, Inc., the Federal Circuit relied on the specification description and construed
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`the term “including” so as to limit a patent claim, noting that “not other broader concept
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`was described as embodying the applicant’s invention, or shown in any of the drawings,
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`or presented for examination.” 199 F.3d 1295, 1301 (Fed. Cir. 1999).
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`Whether an invention is
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`fairly claimed more broadly than the preferred
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`embodiment in the specification is a question specific to the content of the specification.
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`Teleflex, 299 F.3d at 1327. The distinction between using the specification to interpret the
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`meaning of a claim and importing limitations from the specification into the claim is a
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`difficult tightrope that district courts must walk. Andersen Corp, 474 F.3d at 1373; see
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`also lnnova/Pure Water Inc., 381 F.3d at 1117 (noting the longstanding difficulty in
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`reconciling the aXioms that a claim must be read in light of the specification and that a
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`court may not read a limitation into a claim from a specification) (citing cases); Comark
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`Communications, Inc. v. Harris Corp, 156 F.3d 1182, 1186 (Fed. Cir. 1998) (noting that
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`there is “a fine line between reading a claim in light of the specification, and reading a
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`limitation into the claim from the specification”).
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`3.
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`Prosecution History
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`PGS v WESTERNGECO (IPR2014-OO688)
`WESTERNGECO Exhibit 2161, pg. 7
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`Finally,
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`the prosecution history, which has been designated as part of the
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`“intrinsic evidence,” consists of the complete record of the proceedings before the PTO
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`and includes the prior art cited during the examination of the patent. Like the
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`specification, the prosecution history provides evidence of how the PTO and the inventor
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`understood the patent. Phillips, 415 F.3d at 1317. Yet, because the prosecution history
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`represents an ongoing negotiation between the PTO and the applicant, rather than the
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`final product of that negotiation, it often lacks the clarity of the specification and thus is
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`less useful for claim construction purposes. Id.
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`Still, “a patentee may limit the meaning of a claim term by making a clear and
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`unmistakable disavowal of scope during prosecution.” Purdue Pharma LP. v. Endo
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`Pharms., Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006); see also Omega Engineering Inc. v.
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`Raylek Corp, 334 F.3d 1314, 1323 (Fed. Cir. 2003) (finding that the doctrine of
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`prosecution disclaimer is well established and precludes patentees from recapturing
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`through claim construction specific meanings disclaimed during prosecution). A patentee
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`could do so, for example, by clearly characterizing the invention in a way to try to
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`overcome rejections based on prior art. See, e.g., Microsoft Corp. v. Mulli-Tech Sys., Inc.,
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`357 F.3d 1340, 1349 (Fed. Cir. 2004) (limiting the term “transmitting” to require direct
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`transmission over telephone line because the patentee stated during prosecution that the
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`invention transmits over a standard telephone line, thus disclaiming transmission over a
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`packet-switched network); Alloc v. lnl'l Trade Comm'n, 342 F.3d 1361, 1372 (Fed. Cir.
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`2003) (finding the patentee expressly disavowed floor paneling systems without “play”
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`because the applicant cited the feature during prosecution to overcome prior art); Bell All.
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`Network Servs. v. Covad Commc'ns Group, Inc., 262 F.3d 1258, 1273 (Fed. Cir. 2001)
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`PGS v WESTERNGECO (IPR2014-OO688)
`WESTERNGECO Exhibit 2161, pg. 8
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`(limiting operation of the “transceiver” to the three stated modes because of clearly
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`limiting statements made by the patentee to try to overcome a prior art rejection).
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`4.
`
`Extrinsic Evidence
`
`Only if there is still some genuine ambiguity in the claims, after consideration of
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`all available intrinsic evidence, should a trial court resort to extrinsic evidence, such as
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`expert witness testimony, dictionary definitions, and legal
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`treatises. While extrinsic
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`evidence “can shed useful
`
`light on the relevant art,” it is “less significant than the
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`intrinsic record in determining ‘the legally operative meaning of claim language.’ ” CR.
`
`Bard,
`
`Inc.
`
`v. US. Surgical Corp, 388 F.3d 858, 862 (Fed. Cir. 2004)
`
`(quoting
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`Vanderlana’e Indus. Nederlana’BVv. Inl'l Trade Comm 'n, 366 F.3d 1311, 1318 (Fed. Cir.
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`2004)). The judicial arbiter must be sufficiently informed so that she may step into the
`
`shoes of the ordinary skilled artisan. It is here that the use of extrinsic evidence makes the
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`most sense.
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`B.
`
`Indefiniteness
`
`A claim is invalid under 35 U.S.C. § 112, 11 2 if it fails to “particularly point out
`
`and distinctly claim the subject matter that the applicant regards as the invention.” A
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`party seeking to invalidate a claim as indefinite must show by clear and convincing
`
`evidence that one skilled in the art would not understand the scope of the claim when
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`read in light of the specification. Mass Engineering Design, Inc. v. Ergotron, Inc., 559 F.
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`Supp. 2d 740, 759 (ED. Tex. 2008) (citing Intellectual Property Dev. Inc. v. UA-
`
`Columbia Cablevision 0f Weslchesler, Inc., 336 F.3d 1308, 1319 (Fed. Cir. 2003)). Close
`
`questions of indefiniteness in patent litigation are properly resolved in favor of the
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`PGS v WESTERNGECO (IPR2014-OO688)
`WESTERNGECO Exhibit 2161, pg. 9
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`patentee, that is, the owner of the patent in question. Bancorp Services LLC v. Hartford
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`Life Ins. Co., 359 F.3d 1367, 1371 (Fed. Cir. 2004).
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`C.
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`Means-Plus-Function Claims
`
`35 U.S.C. Section 112,11 6 provides:
`
`An element in a claim for a combination may be expressed as a means or
`step for performing a specified function without the recital of structure,
`material, or acts in support thereof, and such claim shall be construed to
`cover the corresponding structure, material, or acts described in the
`specification and equivalents thereof (emphasis added).
`
`Means-plus-function claims contain only purely functional limitations but do not
`
`provide the structures that perform the recited function. See Phillips, 415 F.3d at 1311;
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`Envirco Corp. v. Clestra Clearnroom, Inc., 209 F.3d 1360, 1365 (Fed. Cir. 2000).
`
`Section 112, 11 6 allows a patentee to “describe an element of his invention by the result
`
`accomplished or the function served, rather than describing the item or element to be
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`used.” Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 US. 17, 27 (1997). The
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`claim is then interpreted with reference to, and as limited by,
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`the related structure
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`disclosed in the patent for performing the function recited in the claim, or the equivalents
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`thereof. Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1099 (Fed. Cir. 2008);
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`Chiuminatta Concrete Concepts, Inc. v. Cardinal lndus., Inc., 145 F.3d 1303, 1308 (Fed.
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`Cir. 1998).
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`The court must determine, as a matter of law, whether a phrase should be
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`construed as a means-plus-function term. Welker Bearing, 550 F.3d at 1096. If the word
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`“means” is used in a claim element,
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`in combination with a function, the court must
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`presume that Section 112,
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`11 6 applies unless the claim recited a sufficient structure to
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`perform the function. Id; Trill/led, 514 F.3d at 1259; Micro Chem., Inc. v. Great Plains
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`10
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`WESTERNGECO Exhibit 2161, pg. 10
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`Chem Co., 194 F.3d 1250, 1257 (Fed. Cir. 1999). If the word “means” is not used, the
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`presumption is that a claim falls outside of Section 112, 11 6. Micro Chem, 194 F.3d at
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`1257. This presumption is rebutted by showing that the claim element recites a function
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`without reciting sufficient structure for performing that function. Walls v. XL Sys, Inc.,
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`232 F.3d 877, 880 (Fed. Cir. 2000). “Sufficient structure exists when the claim language
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`specifies the exact structure that performs the functions in question without need to resort
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`to other portions of the specification or extrinsic evidence for an adequate understanding
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`of the structure.” TriMed, Inc. v. Stryker Corp, 514 F.3d 1256, 1259-60 (Fed. Cir. 2008).
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`If means-plus-function analysis applies, a court must first determine what the claimed
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`function is and then determine the corresponding structures disclosed in the specification
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`that perform that function. Welker Bearing, 550 F.3d at 1097; Min/cs v. Polaris Indus,
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`Inc., 546 F.3d 1364, 1377 (Fed. Cir. 2008).
`
`III.
`
`ANALYSIS
`
`The Court will now apply these general principles of claim construction to the
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`terms at issue here. But first, it must be noted that the root of the parties’ dispute as to
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`several of the claim terms turns on whether language or descriptions from the patent
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`specification may be used to limit the claim scope. Each party seeks to construe claim
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`language found in the asserted patents of another party according to descriptions found
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`within the corresponding specification. At
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`the Markman hearing,
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`the parties cited
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`repeatedly to Federal Circuit precedent that speaks to the issue of when claim language
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`may be limited by embodiments disclosed in the specification. The Court will briefly
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`reView the most frequently referenced cases in order to put the parties’ arguments in
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`context before turning to the indiVidual claim terms.
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`11
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`WESTERNGECO Exhibit 2161, pg. 11
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`In Honeywell, cited above, the Federal Circuit, in construing the claim term “fuel
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`injection system component,” held that the term was limited to a fuel filter. 452 F.3d at
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`1318. The court there noted that a fuel filter was discussed in the specification not merely
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`as a preferred embodiment, but as a limitation to the patent scope, because on at least four
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`occasions the specification referred to the fuel filter as “this invention” or “the present
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`invention.” Id. More recently, in Verizon Services Corp. v. Vonage Holdings Corp, the
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`Federal Circuit again reiterated that “when a patent [thus] describes the features of the
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`‘present invention’ as a whole, this description limits the scope of the invention.” 503
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`F.3d 1295, 1308 (Fed. Cir. 2007). These cases suggest, therefore, that the use of certain
`
`language such as “present invention” raises the presumption that the claim terms can be
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`limited by the description of the invention provided in the specification.
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`However, as WG points out, the Federal Circuit has also held that, while clear
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`language characterizing “the present invention” may limit the ordinary meaning of claim
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`terms, such language must be read in the context of the entire specification, the claims,
`
`and the prosecution history. Rambus Inc. v. Infineon Technologies Ag, 318 F.3d 1081,
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`1094-95 (Fed. Cir. 2003). In Rambus, the Federal Circuit declined to limit the term “bus”
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`to a “multiplexing bus,” noting that, although the phrase “present invention” was used in
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`certain parts of the specification,
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`the remainder of the specification and prosecution
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`history showed that the patentee did not “clearly disclaim or disavow” such claim scope.
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`Id The Rambus Court went on to examine the patent language and prosecution history,
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`reasoning that “multiplexing is not a requirement in all of [the patentee’s] claims.” Id
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`Accordingly, one district court,
`
`in determining whether “present invention” language
`
`within the specification could be used to limit the scope of a patent, determined that the
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`12
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`PGS v WESTERNGECO (IPR2014-OO688)
`WESTERNGECO Exhibit 2161, pg. 12
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`specification language was being used to describe only an embodiment of the invention.
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`The court accordingly held that the claim scope could not be limited so that the process of
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`modifying a PDL image file was required to be “automatic.” Colorquick, LLC v. Eastman
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`Kodak Co, 2008 WL 5771324, >“13-14 (ED. TeX. June 25, 2008). The Colorquick court
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`noted the difficulties of reading Honeywell to require limiting all claims solely because
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`the patent used language such as “the present
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`invention” when describing an
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`embodiment. Id.
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`Thus, in this case, Ion argues that, as in Honeywell, the Bittleston Patents and the
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`Zaj ac Patent use the term “the present control system” to describe the invention, and that
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`the claim scope should accordingly be limited to the provided description. WG argues
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`that, despite the use of “present invention” language in the specification, claim terms
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`must be read in light of the entire patent and specification, and that so limiting the claim
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`scope would therefore be improper. Under this seemingly conflicting precedent,
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`the
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`Court now turns to the individual claim terms.
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`A.
`
`BITTLESTON PATENTS
`
`1.
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`“streamer positioning device(s)”; “the positioning device”
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`This phrase is used throughout the Bittleston Patents. WG seeks to construe the
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`term as “a device that controls the position of a streamer as it is towed (e. g. a “bird”).”
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`Ion seeks to construe the term as “device(s) used to steer/position the streamer both
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`vertically and horizontally.” WG argues that Ion’s construction improperly attempts to
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`limit the scope of the terms according to the preferred embodiments, and that it would
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`render meaningless certain language within the patent claims. Ion responds that the
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`inventor’s use of the term “the present control system” when describing this invention in
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`13
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`PGS v WESTERNGECO (IPR2014-OO688)
`WESTERNGECO Exhibit 2161, pg. 13
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`the specification necessarily limits the claimed invention according to the provided
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`description.
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`Turning first to the claims themselves, claim 1 of the ‘017 Patent teaches a
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`method for controlling the positions of marine seismic streamers with “each streamer
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`positioning device having a wing and wing motor for changing the orientation of the
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`wing so as to steer the streamer positioning device laterally.” (‘017 Patent, Pl. Br. EX. 1,
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`Doc. No. 61, col. 10 11. 37-40.) This claim language, therefore, demonstrates that each
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`positioning device should have a wing motor such that it is capable of steering a streamer
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`horizontally. The Court agrees with Ion in this respect.
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`Turning then to the invention specification,
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`it also states that “each streamer
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`positioning device has a wing and a wing motor for changing the orientation of the wing
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`so as to steer the streamer positioning device laterally.” (‘017 Patent, col. 2 11. 51-54.)
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`Therefore, Ion is correct that both the claim language as well as the specification support
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`its argument
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`that each streamer positioning device must be capable of steering
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`horizontally.
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`However, nothing in either the claim language or the specification requires that
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`each positioning device be must be capable of controlling the vertical position of the
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`streamer. While it is true that, as Ion suggests, the description of the inventive system as a
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`whole provided in the specification makes clear that vertical control of the streamers is
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`possible, this speaks only to the fact that at least one of the streamer positioning devices
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`on each streamer would necessarily have to be responsible for vertical positioning.
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`However, this does not mean that the each and every positioning device must be capable
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`of vertical steering. Indeed, claim 1 of the ‘967 Patent specifically teaches that each
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`14
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`PGS v WESTERNGECO (IPR2014-OO688)
`WESTERNGECO Exhibit 2161, pg. 14
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`streamer must have a “plurality of streamer positioning devices,” making it possible
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`under the claim terms that not every streamer positioning devices actually controls
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`vertical positioning, although such positioning is possible as to each streamer. (‘967
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`Patent, Pl. Br. EX. 2, Doc. No. 61, col. 11 11. 16-19.) Moreover, the specification makes
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`clear that
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`it
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`is only a preferred embodiment of the invention that each streamer
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`positioning device is both laterally and horizontally steerable, stating that “[p]referably,
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`the birds are both horizontally and laterally steerable.” (‘017 Patent, col. 3 11. 29-30). See
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`Halliburlon Energy Services Inc. v. M—I LLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008)
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`(noting that
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`the use of the word “preferably” in a specification indicates that
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`the
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`description is only a preferred embodiment); DSW, Inc v. Shoe Pavilion, Inc., 537 F.3d
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`1342, 1348 (Fed. Cir. 2008) (noting that it is well-settled that claims are not to be
`
`confined to a preferred embodiment). Therefore, the Court cannot accept Ion’s argument
`
`that the claim language or the specification require that this claim term be construed so as
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`to require that each streamer positioning device be capable of vertical steering.
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`Furthermore, even if the Court were to accept that each and every streamer
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`positioning device must be capable of lateral and vertical steering, the Court notes that
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`Ion’s construction limits the claim term even further, so that each streamer positioning
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`must be actually used for both kinds of steering. This distinction is an important one, and
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`warrants reiteration. Not only does Ion seek to construe the term “streamer positioning
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`device” so that each device is capable of vertical and horizontal streaming, but Ion’s
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`construction would also require that each streamer positioning device in fact be used for
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`both kinds of positioning. There is certainly nothing in the specification or in the claim
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`language which requires that the term “streamer positioning device” be so narrowly
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`15
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`PGS v WESTERNGECO (IPR2014-OO688)
`WESTERNGECO Exhibit 2161, pg. 15
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`construed. Indeed, the specification discloses examples of birds that are used for vertical
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`steering, lateral steering, and both. (See Pl. Br, Doc. No. 61, at 11 (citing to the ‘017
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`Patent).)
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`Finally, as WG points out, the patent claims themselves consistently reference
`
`whether the positioning devices within the scope of each claim are being used for
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`horizontal steering, vertical steering, or both. Thus,
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`to construe the term “streamer
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`positioning device” with reference to its horizontal or vertical capabilities would, as WG
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`argues, render certain language provided within the claims redundant. An example of this
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`provided by WG is claim 1 of the ‘017 patent, which recites a “streamer positioning
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`device having a wing .
`
`.
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`. to steer the streamer device laterally.” (‘017 Patent, col. 10 11.
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`37-40.) Thus, throughout these patents, the claims consistently “call out,” whether lateral
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`or vertical steering is envisioned within the scope of the claim. As such,
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`it is not
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`necessary to construe the term “streamer positioning device” with reference to the way it
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`is used for purposes of steering, as this is often what is described within the claim itself.
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`Accordingly,
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`the Court must
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`reject
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`Ion’s proposed construction. WG’s proposed
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`construction, by contrast, reflects the ordinary meaning of the term “streamer positioning
`7
`device.’ This construction applies
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`the “widely accepted meaning of commonly
`
`understood words.” Phillips, 415 F.3d at 1314. The Court will therefore construe the term
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`“streamer positioning device” as “a device that controls the position of a streamer as it is
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`towed (e.g. a ‘bird’).”
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`2.
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`“global control system”
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`This term is also used throughout the Bittleston Patents. WG proposes seeks to
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`construe this term as “a control system that sends commands to other devices in a system
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`16
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`PGS v WESTERNGECO (IPR2014-OO688)
`WESTERNGECO Exhibit 2161, pg. 16
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`(e.g. local control systems)”, while Ion proposes “system that monitors the position of the
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`streamers and provides the desired forces or desired positioning information to the local
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`control systems.” Therefore, the parties disagree as whether this term should be limited
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`according to the kind of information that the global control system sends out, and
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`whether it requires the presence of a local control system.
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`As WG points out, only some of the claims that describe the global control system
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`in the patents-in-suit identify a corresponding local control system. Others describe the
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`global control system but make no mention of a local control system. (See ‘017 Patent,
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`col. 11 11. 1-11.) This would suggest, therefore, that the presence of a local control system
`
`is not required by the claim language.
`
`Turning then to the specification,
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`the ‘017 Patent states “[i]n the preferred
`
`embodiment of the present invention,
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`the control system for the birds is distributed
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`between a global control system .
`
`.
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`. and a local control system located within or near the
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`birds.) (‘017 Patent, col. 3 11. 36-40.) According to this language, then, the presence of
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`both a global and local control system is only a preferred embodiment of the invention. In
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`addition,
`
`the specification notes that “[i]n a preferred embodiment of the present
`
`invention, the global control system monitors the actual positions of each of the birds.”
`
`(‘017 Patent, col. 3 11. 61-63.) Thus, a global control system that monitors the position of
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`each of the birds is only a preferred embodiment of the patents in suit. The specification
`
`also states that the global control system “is typically connected to the seismic survey
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`vessel’s naviga