Trials@uspto.gov
`571-272-7822
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` Paper 23 IPR2014-00678
` Paper 22 IPR2014-00687
` Paper 22 IPR2014-00688
`
`Paper 22 IPR2014-00689
` Date: August 12, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PETROLEUM GEO-SERVICES INC,
`Petitioner,
`
`v.
`
`WESTERNGECO LLC,
`
`Patent Owner.
`
`Cases1
`IPR2014-00678 (Patent 6,691,038)
`IPR2014-00687 (Patent 7,162,967)
`IPR2014-00688 (Patent 7,080,607)
`IPR2014-00689 (Patent 7,293,520)
`
`
`
`
`
`
`
`
`
`Before BRYAN F. MOORE, SCOTT A. DANIELS,
`and BEVERLY M. BUNTING, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`1 This Order addresses issues that are the same in all four cases. Therefore, we
`exercise our discretion to issue one Decision to be filed in each case. The parties
`are not authorized to use this style heading for any subsequent papers.
`
`

`

`IPR2014-00678 (Patent 6,691,038)
`IPR2014-00687 (Patent 7,162,967)
`IPR2014-00688 (Patent 7,080,607)
`IPR2014-00689 (Patent 7,293,520)
`
`
`ORDER SETTING NEW FILING DATES
`Conduct of the Proceedings
`37 C.F.R. § 42.5, 42.20, 42.106
`
`
`
`On August, 2014, a conference call was held in the above proceedings
`
`regarding Petitioner’s request to list PGS AS and other related companies as real
`
`parties-in-interest and Patent Owner’s request for authorization for a motion to
`
`seal. Present on the call were counsel for the parties and Administrative Patent
`
`Judges Bryan Moore and Beverly Bunting, and a court reporter.
`
`REAL PARTY-IN-INTEREST
`
`During a July 27, 2014 call regarding Patent Owner’s request for
`
`authorization for a motion to seal, the parties also discussed whether Petitioner
`
`could file an updated mandatory notice listing PGS AS as a real party-in-interest
`
`and what impact that would have on the proceeding. Because the Patent Owner
`
`Preliminary Responses were due to be filed on the day of the call, we exercised our
`
`discretion under 37 C.F.R. § 42.5(c) and extended the deadline for those responses
`
`by 5 business days. We also requested short email responses from both parties
`
`regarding this issue in order to expedite the process. In an email dated July 29,
`
`2014, Petitioner responded as follows:
`
`We write, pursuant to the Board’s Order during the July 28
`teleconference, to address the procedure for Petitioner to add one or
`more corporate affiliates as real parties in interest. Petitioner proposes
`to do so by listing them in an amended mandatory notice. This
`amendment is intended to be prophylactic—unlike in ZOLL v.
`Philips, IPR2013-00609, Paper 15 (March 20, 2014), Petitioner’s
`proposed addition would not affect any statutory bar. Allowing
`
`2
`
`

`

`IPR2014-00678 (Patent 6,691,038)
`IPR2014-00687 (Patent 7,162,967)
`IPR2014-00688 (Patent 7,080,607)
`IPR2014-00689 (Patent 7,293,520)
`
`
`Petitioner to file an updated mandatory notice is a practical way to
`approach this issue and one that has been previously invoked by the
`Board to address similar issues. See, e.g., American Express v.
`Metasearch, CBM 2014-00001, Paper 29 (March 20, 2014), at 3 n.2;
`CBS Interactive Inc. v. Helferich Patent Licensing, LLC, IPR2013-
`00033, Paper 60 (July 3, 2013), at 4. The authority to permit such a
`filing exists under 37 C.F.R. §§ 42.5(a)-(b), which collectively grant
`the Board “wide latitude in administering the proceedings to balance
`the ideal of precise rules against the need for flexibility to achieve
`reasonably fast, inexpensive, and fair proceedings.” 77 F.R. 48,612,
`48,616. In the alternative, by agreement of Petitioner, the Board can
`adopt the approach suggested in ZOLL by deeming the Petition
`incomplete for failure to name all real parties in interest: “Ordinarily,
`because the Petition is incomplete, the Board would give Petitioner
`one month from the date of this decision to correct the deficiency[.]”
`ZOLL, Paper 15 at 16; 37 C.F.R. § 42.106(b). As in ZOLL, the fact
`that a petition already has been accorded a filing date does not
`preclude the Board from permitting Petitioner to file corrected
`petitions that result in the petitions receiving a new filing date.
`ZOLL, Paper 15 at 16-17. Either of the approaches outlined is
`acceptable to Petitioner as a way to resolve this issue and advance
`these proceedings to the merits. Given this authority, Petitioner
`believes that it is unwarranted to require re-filing the petitions as new
`petitions.
`
`In any of these situations, the Board has discretion in setting a new
`deadline for any preliminary response from Patent Owner. Pursuant
`to 37 C.F.R. § 42.5(c), the Board has the discretion to set any deadline
`it deems reasonable. As stated in § 42.5(c), the three months provided
`for 37 C.F.R. § 42.107(b), like any time set by rule, is simply a
`“default” that “may be modified by order.” The Board has previously
`exercised its discretion to shorten the time for a preliminary response
`where, as here, a petition addresses the same issues and prior art as a
`previous petition. See Reloaded Games, Inc. v. Parallel Networks
`
`3
`
`

`

`IPR2014-00678 (Patent 6,691,038)
`IPR2014-00687 (Patent 7,162,967)
`IPR2014-00688 (Patent 7,080,607)
`IPR2014-00689 (Patent 7,293,520)
`
`
`LLC, IPR2014-00950, Paper 9 (July 7, 2014). The Board has also
`shortened the time to respond where the issues raised are not
`sufficiently “complicated” to merit the full three months provided by
`default. See SAP America, Inc. v. Versata Development Group, Inc.,
`CBM2012-00001, Paper 10 (Oct. 17, 2012) at 5-6. Here, Patent
`Owner has already had a full three months to prepare a response to
`Petitioner’s arguments, the default time frame under the Rules. Patent
`Owner’s preliminary response is already completely drafted and ready
`for
`filing, as Patent Owner
`indicated during
`the July 28
`teleconference. To the extent the addition of a corporate affiliate of
`Petitioner could have any impact on Patent Owner’s preliminary
`response—and Petitioner does not believe
`it will—Petitioner
`respectfully suggests that six weeks should be more than sufficient for
`Patent Owner to edit its already-drafted preliminary response to
`address it. Petitioner believes that this six-week deadline would be
`appropriate whether the Board grants Petitioner leave to file an
`amended mandatory notice, requires Petitioner to file a corrected
`petition, or requires Petitioner to re-file the petitions as new petitions.
`Setting a shortened deadline for Patent Owner’s preliminary response
`best effectuates the purpose of the Rules, which are “to secure the just,
`speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. §
`42.1(b). In the event that the Board does not exercise its discretion to
`shorten the time for Patent Owner’s preliminary response to six-
`weeks, Petitioner reserves the right to re-file the petitions to
`incorporate substantive modifications.
`
`In an email dated July 30, 2014, Patent Owner responded to Petitioner’s
`
`email as follows:
`
`
`
`As authorized by the Board in the above captioned proceedings,
`Patentee responds to Petitioner’s 7/29 email request seeking a clerical
`reset of their improper petitions. 35 U.S.C. § 312(a) is controlling
`here. This statute explicitly recites that “a petition filed under section
`
`4
`
`

`

`IPR2014-00678 (Patent 6,691,038)
`IPR2014-00687 (Patent 7,162,967)
`IPR2014-00688 (Patent 7,080,607)
`IPR2014-00689 (Patent 7,293,520)
`
`
`311 may be considered only if….(2) the petition identifies all real
`parties in interest.”(emphasis added). The petitions in the above
`captioned proceedings do not list all RPIs. The plain language of the
`statute now precludes their consideration. The Board decisions relied
`upon by the Petitioner actually support the Patentee’s position. They
`merely explain a procedural mechanism for removing properly named
`RPIs from proceedings, for settlement purposes and the like. See, e.g.,
`American Express v. Metasearch, CBM 2014-00001, Paper 29 (March
`20, 2014), at 3 n.2 (encouraging the Petitioner to file an updated
`mandatory notice, if necessary, when a joint motion captioned fewer
`than the ten real parties-in-interest identified in the Petition and
`Mandatory Notice); CBS Interactive Inc. v. Helferich Patent
`Licensing, LLC, IPR2013-00033, Paper 60 (July 3, 2013), at 4
`(ordering remaining Petitioners to update the mandatory notice to
`reflect termination of inter partes review with respect to one of the
`original Petitioners due to settlement). These decision do not, and
`cannot, provide a mechanism for rewriting petitions that fail to
`include all RPIs. Neither the dicta in ZOLL v. Philips, IPR2013-
`00609, Paper 15 (March 20, 2014) (non-precedential) nor regulations
`of the agency can trump statutory requirements.
`
`As the Board correctly pointed out on the call of 7/28, the requirement
`to refile these petitions triggers the default 3 month time period for
`Patentee’s preliminary response. While it is acknowledged that the
`Board has discretion in setting this period, fairness dictates the full
`three-month time period be accorded. Patentee has worked since June
`(to no avail) to settle this very RPI dispute through additional
`discovery, dedicated pages of its current draft response to this topic,
`only to have the rug pulled out from under these efforts the same day
`the preliminary responses were due to be filed. Now, additional
`parties are being added that are in privity with parties outside of the
`12-month window of 35 U.S.C. § 315(b). These new petitions will
`require significant re-work and possible discovery for a fair and
`adequate response. On top of all of that the Petitioner threatens to
`
`5
`
`

`

`IPR2014-00678 (Patent 6,691,038)
`IPR2014-00687 (Patent 7,162,967)
`IPR2014-00688 (Patent 7,080,607)
`IPR2014-00689 (Patent 7,293,520)
`
`
`modify their petitions (last line of 7/29 email to Board) —
`gamesmanship should not be rewarded here. Patentee respectfully
`submits that all four of the current petitions must be denied, new
`petitions filed in their place, and the full three-month patentee
`response period accorded.
`
`We considered these arguments and decided, as follows, in an oral order
`
`during the August 4, 2014 call. Section 42.106(b) of Title 37 of the Code of
`
`Federal Regulations provides:
`
` (b) Incomplete petition. Where a party files an incomplete petition,
`no filing date will be accorded, and the Office will dismiss the petition
`if the deficiency in the petition is not corrected within one month from
`the notice of an incomplete petition.
`
`Thus, under Rule 42.106(b), if Petitioner files, within two business days of the call,
`
`an updated mandatory notice that PGS AS (or other affiliated party) is a real party-
`
`in-interest in one of the above entitled inter partes reviews (“IPRs”), the petition
`
`filed in that particular IPR will be considered an incomplete petition for failing to
`
`list a real party-in-interest. Additionally, that deficiency will be considered
`
`corrected upon the filing of the updated mandatory notice and a new filing date
`
`will be set as of the date the updated mandatory notice is filed.
`
`Pursuant to 37 C.F.R. § 42.5(c), the Board has discretion in setting a new
`
`deadline for any preliminary response from Patent Owner. Patent Owner requested
`
`additional three months from the new filing date, which is the default amount of
`
`time. Patent Owner argued that it needed time to complete and analyze discovery
`
`from district court regarding ION Geophysical Corporation, a new potential real
`
`6
`
`

`

`IPR2014-00678 (Patent 6,691,038)
`IPR2014-00687 (Patent 7,162,967)
`IPR2014-00688 (Patent 7,080,607)
`IPR2014-00689 (Patent 7,293,520)
`
`
`party-in-interest. Petitioner argued, among other things, that discovery on that
`
`issue was complete.
`
`Given the fact that at least one of the preliminary responses in these cases
`
`were due on July 27, 2014, the date of the conference call, it is likely that the
`
`substance of the preliminary responses was complete as of the July 27 conference
`
`call. We also note that, in the July 27 conference call, Patent Owner indicated that
`
`it intended to file a motion to seal with the preliminary responses. Patent Owner
`
`stated it intended to argue substantially the same thing that was argued in
`
`Petitioner’s motion to seal. As explained below, we indicated that more detail
`
`should be added to Patent Owner’s intended motion to seal. Therefore, we
`
`recognize that the Patent Owner will need to add a discussion of any new real
`
`party-in-interest and that the Patent Owner will need to add specificity to its
`
`motions to seal, which it anticipates filing with the preliminary responses.
`
`Nonetheless, we do not believe Patent Owner needs three months to
`
`complete these tasks. In its email to the Board, the Petitioner agreed to a six week
`
`deadline and we find that deadline more than reasonable.
`
`On August 5, 2014, Patent Owner filed updated mandatory notices in each
`
`of the above entitled cases listing Petroleum Geo-Services, PGS Geophysical AS
`
`and Petroleum Geo-Services ASA as real-parties-in-interest. Thus, as explained
`
`above, the filing date of IPR2014-00678, -687, -688, -and 689 is changed to
`
`August 5, 2014. Additionally, the Preliminary responses in these cases are due
`
`September 16, 2014, six weeks after each filing date.
`
`
`
`7
`
`

`

`IPR2014-00678 (Patent 6,691,038)
`IPR2014-00687 (Patent 7,162,967)
`IPR2014-00688 (Patent 7,080,607)
`IPR2014-00689 (Patent 7,293,520)
`
`
`MOTION TO SEAL
`
`Petitioner filed motions to seal with its petitions in the above entitled IPRs.
`
`The parties indicated that substantially the same documents that are the subject of
`
`Petitioner’s motion to seal will be at issue in Patent Owner’s intended motion to
`
`seal. Patent Owner indicated it intended to argue substantially the same thing that
`
`was argued in Petitioner’s motion to seal. Thus, we will discuss the substance of
`
`Petitioner’s motion to seal below. We note that Petitioner’s motion was filed at an
`
`early stage of the proceeding and Petitioner may not have been able to include
`
`some required details discussed below. Nonetheless, at this stage, Patent Owner
`
`should be able to provide those details. Thus, the discussion below is relevant to
`
`both parties.
`
`The Board’s standards for granting motions to seal are discussed in Garmin
`
`International v. Cuozzo Speed Technologies, LLC, IPR2012-00001 (Paper 34,
`
`March 14, 2013). In summary, there is a strong public policy for making all
`
`information filed in inter partes review proceedings open to the public. Id. The
`
`public has a strong interest in accessing documents or portions of document that
`
`allegedly discloses information relevant to claim construction or the support for
`
`any ground of invalidity. The standard for granting a motion to seal is “good
`
`cause.” 37 C.F.R. § 42.54. The moving party bears the burden of showing that the
`
`relief requested should be granted. 37 C.F.R. § 42.20(c). This includes showing
`
`that the information is truly confidential, and that such confidentiality outweighs
`
`the strong public interest in having an open record.
`
`8
`
`

`

`IPR2014-00678 (Patent 6,691,038)
`IPR2014-00687 (Patent 7,162,967)
`IPR2014-00688 (Patent 7,080,607)
`IPR2014-00689 (Patent 7,293,520)
`
`
`Petitioner, as the moving party, has failed to carry this burden. There is no
`
`proof in the record that the information contained in the documents is confidential,
`
`only the fact that they were designated confidential in the district court proceeding.
`
`That showing is not sufficient, especially when weighed against the public’s access
`
`rights to the evidence relied on by the parties. Finally, the parties should have
`
`indicated that they conferred to reach agreement on the scope of the protection, if
`
`any, that is necessary to protect confidential information. See 37 C.F.R. § 42.54.
`
`In addition, a motion to seal is required to include a certification that the
`
`moving party has in good faith conferred, or attempted to confer, with the opposing
`
`party in an effort to come to an agreement on the scope of the protection sought.
`
`Garmin, supra at 3. A protective order governs the treatment of confidential
`
`portions of documents, testimony, and other information designated as
`
`confidential, as well as the filing of confidential documents or discussion of such
`
`information in papers filed with the Board. The Board has the authority to enforce
`
`the terms of a protective order entered in a proceeding. Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48756, 48770 (Aug. 14, 2012).
`
`In view of the above, it is important that the Board understand and agree to
`
`the terms of any proposed protective order filed with the Board. As such, the
`
`Board has provided a default protective order that the parties may follow. When
`
`the parties deviate from the default protective order, the party filing the proposed
`
`protective order should explain the differences between the proposed protective
`
`order and the default protective order, preferably by providing the Board with a
`
`redlined version of the proposed protective order that effects a comparison of the
`
`9
`
`

`

`IPR2014-00678 (Patent 6,691,038)
`IPR2014-00687 (Patent 7,162,967)
`IPR2014-00688 (Patent 7,080,607)
`IPR2014-00689 (Patent 7,293,520)
`
`
`terms of the proposed protective order with those of the default protective order. A
`
`protective order that deviates from the Board’s default protective order must
`
`include certain terms as outlined in the Office Patent Trial Practice Guide. Id.
`
`(“The Protective Order shall include the following terms: . . .”).
`
`Before filing a further motion to seal, the parties are directed to meet and
`
`confer on the issues raised by this decision, particularly, whether there is a need to
`
`seal the documents, and whether additional redaction can substantially reduce or
`
`eliminate altogether the need for sealing. The motion to seal filed by Patent Owner
`
`should be a joint motion that acts as a renewed motion replacing Petitioner’s
`
`original motion to seal. The renewed motion should be specific as to why each
`
`document or redacted portion of a document is confidential such that it outweighs
`
`the public interest in an open record.
`
`We do not decide Petitioner’s motion to seal at this time. We note that a
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`document filed with a motion to seal is treated as sealed until the motion is
`
`decided. 37 C.F.R. § 42.14. Additionally, a motion to seal filed with the petition
`
`is considered granted upon institution of the trial unless otherwise ordered by the
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`Board. 37 C.F.R. § 42.55.
`
`It is
`
`ORDERED that the Petitions will be granted a filing date of August 5, 2014;
`
`FURTHER ORDERED that Patent Owner’s Preliminary Response to the
`
`Petitions shall be due within six weeks from the filing dates set forth in this
`
`Decision;
`
`FURTHER ORDERED that before filing further motions to seal, counsel for
`
`10
`
`

`

`IPR2014-00678 (Patent 6,691,038)
`IPR2014-00687 (Patent 7,162,967)
`IPR2014-00688 (Patent 7,080,607)
`IPR2014-00689 (Patent 7,293,520)
`
`
`the parties shall meet and confer (in person or by telephone) to discuss in good
`
`faith the maintenance of any confidentiality claims for the Exhibits identified in
`
`Petitioner’s motion to seal. The results of this conference shall be reported to the
`
`Board with the motion;
`
`FURTHER ORDERED that any further motions seeking entry of a
`
`protective order, other than the Board’s default protective order, shall include a
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`redlined comparison of the proposed form of protective order and the Board’s
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`default protective order;
`
`FURTHER ORDERED that a motion to seal shall be filed with each of
`
`Patent Owner’s Preliminary Responses and shall be a joint motion to seal and act
`
`as a renewed Petitioner’s motion to seal.
`
`.
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`
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`
`
`11
`
`

`

`IPR2014-00678 (Patent 6,691,038)
`IPR2014-00687 (Patent 7,162,967)
`IPR2014-00688 (Patent 7,080,607)
`IPR2014-00689 (Patent 7,293,520)
`
`
`For PETITIONER:
`
`David Berl
`Christopher Suarez
`Williams & Connolly, LLP
`dberl@wc.com
`Csuarez@wc.com
`
`
`
`For PATENT OWNER:
`
`
`
`
`
`
`
`
`Scott A. McKeown
`Christopher A. Bullard
`OBLON, SPIVAK, McCLELLAND,
`MAIER & NEUSTADT, L.L.P.
`CPdocketMcKeown@oblon.com
`CPdocketBullard@oblon.com
`
`12
`
`