Paper 99
`Trials@uspto.gov
`Entered: August 25, 2015
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PETROLEUM GEO-SERVICES INC,
`and
`ION GEOPHYSICAL CORPORATION
`AND ION INTERNATIONAL S.A.R.L,
`Petitioner,
`
`v.
`
`WESTERNGECO LLC,
`Patent Owner.
`____________
`
`Cases1
`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.
`
`DANIELS, Administrative Patent Judge.
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`Westergeco filed a Request for Rehearing (Paper 63, May 7, 2015
`“Req. Reh’g”)2 of the Board’s decision granting ION’s Motion for Joinder
`
`
`1Cases IPR2015-00565, IPR2015-00566, IPR2015-00567 have been joined
`with these proceedings.
`
`
`
`

`
`IPR2014-00687 (Patent 7,162,967)
`IPR2014-00688 (Patent 7,080,607)
`IPR2014-00689 (Patent 7,293,520)
`
`(See IPR2015-00566, Paper 14, April 23, 2015, “Dec.”).3 4 Westerngeco
`argued first that the Board had exceeded its statutory authority by granting
`joinder prior to Westerngeco filing a preliminary response and prior to
`expiration of the time for filing the preliminary response as accorded by 35
`U.S.C. § 315(c). Second, Westerngeco argued that it was denied due
`process because it was not allowed to raise any petitioner–specific defenses.
`Req. Reh’g 1.
`The burden of showing a decision should be modified is on the party
`challenging the decision. 37 C.F.R. § 42.71(d). Westerngeco has not
`sustained its burden and, therefore, the Request is DENIED.
`ANALYSIS
`Standard of Review
`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition,
`a panel will review the decision for an abuse of discretion.” Abuse of
`discretion occurs when a “decision was based on an erroneous conclusion of
`law or clearly erroneous factual findings, or . . . a clear error of judgment.”
`
`2 Unless otherwise noted, for purposes of brevity all paper numbers refer to
`papers entered in IPR2014-00688.
`3 Westerngeco also filed the same Request for Rehearing on May 7, 2015 in
`each of the joined cases IPR2015-00566-68. Because the issues are the
`same in both series of proceedings, this Decision addresses all the Requests
`for Rehearing concurrently.
`4 We also note that Westerngeco filed a second Request for Rehearing on
`May 14, 2015 on a separate issue, specifically requesting rehearing of our
`denial of a motion to request additional discovery on the matter of privity
`and real party-in-interest between PGS and ION. Paper 66. The matters
`raised by Westerngeco in their second Request for Rehearing were
`addressed in our Corrected Order (Cor. Order) entered May 19, 2015,
`denying authorization for a motion for additional discovery. See Cor. Order.
`
`
`
`2
`
`

`
`IPR2014-00687 (Patent 7,162,967)
`IPR2014-00688 (Patent 7,080,607)
`IPR2014-00689 (Patent 7,293,520)
`
`PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567
`(Fed. Cir. 1988) (citations omitted). In its request for rehearing, the
`dissatisfied party must identify the place in the record where it previously
`addressed each matter it submits for review. 37 C.F.R. § 42.71(d).
`35 U.S.C. § 315(c)
`Because the Board’s Grant of Motion for Joinder in each of IPR2015-
`00565–567, were entered April 23, 2015, prior to Westerngeco’s filing of a
`preliminary response, and prior to the May 4th and 5th deadlines for
`Westerngeco’s preliminary responses, the Board determined in an Order
`(“Order”, Paper 69) entered May 19, 2015, that it was reasonable to grant
`Westerngeco additional time to file its preliminary responses in the joined
`proceedings and deferred ruling on the remaining issues raised in
`Westerngeco’s Request for Rehearing. Pursuant to our Order, Westerngeco
`filed its second (ION specific) Preliminary Response (“Sec. Prelim. Resp.,”
`Paper 71) in each of IPR2014-00687–689 on June 1, 2015.5
`Although the Board’s decision to grant joinder was before the time
`accorded by 35 U.S.C. § 315(c) for Westerngeco’s preliminary responses,
`the additional time and opportunity to provide the second Preliminary
`Response effectively cures any inconsistency with the statute and provides
`for all of Westerngeco’s defenses and arguments with respect to ION to be
`timely heard and considered by the Board. Therefore, to the extent that the
`Request for Rehearing included a request to file the second Preliminary
`Responses, as noted in our Order, such request is moot.
`
`5 We refer generally to Westerngeco’s preliminary response directed to ION
`issues, as Westerngeco’s “second Preliminary Response.”
`
`
`
`3
`
`

`
`IPR2014-00687 (Patent 7,162,967)
`IPR2014-00688 (Patent 7,080,607)
`IPR2014-00689 (Patent 7,293,520)
`
`
`Due Process
`Next, Westerngeco argued in its Request for Rehearing that in
`addition to its second Preliminary Response it should be accorded the
`opportunity to file a patent owner response to raise petitioner-specific
`defenses against ION. Req. Reh’g 2. As noted above, we deferred ruling on
`the Rehearing Request regarding joinder, and the request for a further patent
`owner response, until we could review Westerngeco’s second Preliminary
`Response and evaluate any necessity for additional briefing.
`In joining these proceedings, we exercised our discretion based on the
`particular circumstances and granted joinder because, inter alia, ION’s
`petitions and prior art are identical to that of PGS and joinder avoids
`substantial duplication and facilitates scheduling, minimizes delay and
`promotes the efficient resolution of these proceedings. ION v. Westerngeco,
`IPR2015-00566, paper 14, slip op. at 3–5 (PTAB April 23, 2015). We also
`granted joinder under the conditions that ION could not file papers, engage
`in discovery, or participate in any deposition or oral hearing in the
`proceedings, except that ION could attend depositions and the oral hearing.
`Id. at 6.
`Westerngeco’s second Preliminary Response raises several ION
`specific defenses including, privity and real party-in-interest, as well as
`issues of res judicata and collateral estoppel based on Westerngeco’s district
`court judgement against ION. See Sec. Prelim. Resp. 1–28. Westerngeco
`further asserts in its second Preliminary Response that it has been
`“wrongfully deprived additional discovery” on these issues and requested,
`again, that Westerngeco be permitted to conduct additional discovery into
`the relationship between PGS and ION. Id. at 20.
`4
`
`
`
`

`
`IPR2014-00687 (Patent 7,162,967)
`IPR2014-00688 (Patent 7,080,607)
`IPR2014-00689 (Patent 7,293,520)
`
`
`The evidence presented by Westerngeco in its second Preliminary
`Response with respect to privy and real party-in-interest between ION and
`PGS, is essentially the same as that set forth in its initial Preliminary
`Response (Paper 26), and Patent Owner Response (Paper 48), with respect to
`PGS and ION. For example, Westerngeco argues that “PGS’s substantial
`legal relationship with ION establishes privity.” Compare Sec. Prelim.
`Resp. 15–17, with PO Response 52–56. This position is not persuasive from
`the standpoint of rehearing our joinder decision because the facts and
`evidence as to whether PGS and ION are privies, or real parties-in-interest,
`are the same in both proceedings and do not apprise us or any error of fact or
`law with respect to joinder.
`Westerngeco also raised issues of res judicata and collateral estoppel,
`as well as alleged evidence of admissions and foreign tribunal adjudications
`against ION in their second Preliminary Response. Sec. Prelim. Resp. 20–
`35. The law, facts and evidence presented by Westerngeco as to these
`issues, however, does not persuade us that our joinder decision, based on the
`exact same grounds in both petitions, is in error, or that denying further
`briefing in a Patent Owner Response is discernably prejudicial to
`Westerngeco or denies Westerngeco due process. Although these ION-
`specific disputes may raise issues which must be ultimately addressed in a
`final written decision, such substantive issues do not unduly complicate
`these proceedings.6 Adjustments to the schedule have been made in
`
`
`6 Westerngeco further argued that joinder created complications and “now
`sees these difficulties playing out to its detriment” noting that, due to an
`impending deposition, it was given only two and a half hours to draft an
`
`
`
`
`5
`
`

`
`IPR2014-00687 (Patent 7,162,967)
`IPR2014-00688 (Patent 7,080,607)
`IPR2014-00689 (Patent 7,293,520)
`
`cooperation with the parties when necessary (Paper 76), and there has been
`no undue delay. Further, where ION cannot respond, raise defenses, or
`present counter-arguments to these assertions made in the second
`Preliminary Response, a patent owner response by Westerngeco is
`unnecessary. Accordingly, our Order of May 19, 2015 authorizing no
`additional briefing besides the second Preliminary Response, remains
`unchanged.
`Based on the evidence presented, we are not persuaded that
`Westerngeco has shown error or abuse of discretion in our decision to join
`these proceedings or that it has been unduly prejudiced or denied due
`process by joinder of these proceedings.
`Conclusion
`Westerngeco’s Request for Rehearing is denied.
`
`
`opposition (Paper 58) to a pro hac vice motion of Mr. David Healy. Req.
`Reh’g’ 8. This discovery complication, however, was to a great extent a
`product of the parties own acrimony. Westerngeco’s opposition did not
`substantively contest the pro hac vice admission of Mr. Healy, but mainly
`contends that ION already had lead and backup counsel, then arguing that
`Westerngeco was prejudiced by having to file the opposition. Paper 58, 2–3.
`
`
`
`6
`
`

`
`IPR2014-00687 (Patent 7,162,967)
`IPR2014-00688 (Patent 7,080,607)
`IPR2014-00689 (Patent 7,293,520)
`
`
`For PETITIONER:
`David. Berl
`Thomas S. Fletcher
`Jessamyn Berniker
`Christopher Suarez
`Williams & Connolly, LLP
`dberl@wc.com
`tfletcher@wc.com
`jberniker@wc.com
`csuarez@wc.com
`
`W. Karl Renner
`Roberto Devoto
`David L. Holt
`Fish & Richardson P.C.
`axf@fr.com
`IPR37136-0004IP1@fr.com
`
`For PATENT OWNER:
`
`Michael L. Kiklis
`Scott A. McKeown
`Kevin B. Laurence
`Katherine D. Cappaert
`Christopher Ricciuti
`OBLON, SPIVAK, McCLELLAND,
`MAIER & NEUSTADT, L.L.P.
`CPdocketKickless@oblon.com
`CPdocketMcKeown@oblon.com
`CPdocketLaurence@oblon.com
`CPdocketCappaert@oblon.com
`CPdocketRicciuti@oblon.com
`
`
`
`
`
`7