435221US
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————————
`
`PETROLEUM GEO-SERVICES INC.
`Petitioner
`
`v.
`
`WESTERNGECO LLC
`Patent Owner
`
`———————————
`
`Case IPR2014-00688
`U.S. Patent No. 7,080,607
`
`———————————
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`Pursuant to 37 C.F.R. § 42.107(a), Patent Owner, WesternGeco L.L.C
`
`(“WesternGeco” or “Patent Owner”), submits this Preliminary Response to the
`
`Petition for Inter Partes Review (“Petition”) of U.S. Patent No. 7,080,607 (the
`
`“’607 patent”) filed by Petitioner, Petroleum Geo-Services, Inc. (“PGS” or
`
`“Petitioner”).
`
`
`
`

`
`Case IPR2014-00688
`Patent Owner Preliminary Response
`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`The ’607 Patent Claims Predictive Steering of Streamer Arrays .................... 1
`
`Petitioner Partnered With ION to Copy the ‘607 Patent ................................. 5
`
`III. The Petition Need Not Be Considered on the Merits ...................................... 6
`
`A.
`
`B.
`
`The Petition is Time-Barred under 35 U.S.C. § 315(b) ........................ 6
`
`The Petition Fails to Name All Real-Parties In Interest ...................... 10
`
`i.
`
`ii.
`
`PGSAI Is an Unnamed RPI ....................................................... 10
`
`ION Is an Unnamed RPI ........................................................... 13
`
`iii.
`
`ION Is a Privy Regarding Validity of the ‘607 Patent .............. 16
`
`IV. The Petition is Time-Barred Under 35 U.S.C. 315(b) ................................... 18
`
`V.
`
`Claim Construction ........................................................................................ 20
`
`A.
`
`Streamer Positioning Device ............................................................... 21
`
`VI. The Board Should Not Institute Inter Partes Review of the ’607
`Patent ............................................................................................................. 26
`
`VII. Redundancy Of Petitioner’s Grounds ............................................................ 28
`
`VIII. Petitioner’s Grounds For Instituting Inter Partes Review Fail To
`Show A Reasonable Likelihood That The ’607 Patent is Anticipated
`Or Obvious ..................................................................................................... 31
`
`A. Ground 1: Workman Does Not Anticipate Claims 1 and 15 .............. 31
`
`i. Workman Does Not Disclose “Predicting Positions of at
`Least Some of the Streamer Positioning Devices” / “A
`Prediction Unit Adapted to Predict Positions of at Least
`Some of the Streamer Positioning Devices” ............................. 32
`
`ii. Workman Does Not Disclose “Using the Predicted
`Positions to Calculate Desired Changes in the Position of
`
`i
`
`

`
`Case IPR2014-00688
`Patent Owner Preliminary Response
`
`One or More of the Streamer Positioning Devices” / “A
`Control Unit Adapted to Use the Predicted Positions to
`Calculate Desired Changes in Positions of One or More
`of the Streamer Positioning Devices” ....................................... 34
`
`iii. Workman Does Not Disclose “Implementing at Least
`Some of the Desired Changes in Position of One or More
`of the Streamer Positioning Devices” ....................................... 36
`
`B.
`
`Ground 2: Workman Does Not Render Claims 1 and 15
`Obvious ............................................................................................... 37
`
`C. Ground 3: Workman in View of Elholm Does Not Render
`Claims 1 and 15 Obvious .................................................................... 41
`
`D. Ground 4: Gikas in view of the ’636 PCT Does Not Render
`Claims 1 and 15 Obvious .................................................................... 44
`
`E.
`
`F.
`
`Ground 5: Gikas in View of Elholm Does Not Render Claims 1
`and 15 Obvious .................................................................................... 47
`
`The Petition Is Legally Insufficient Because Petitioner Fails to
`Address the Secondary Indicia of Non-Obviousness .......................... 48
`
`IX. Conclusion ..................................................................................................... 50
`
`
`
`ii
`
`
`

`
`Case IPR2014-00688
`Patent Owner Preliminary Response
`
`
`I.
`
`The ’607 Patent Claims Predictive Steering of Streamer Arrays
`
`The ’607 patent covers methods and apparatus for using predicted positions
`
`of streamer positioning devices to calculate steering commands in order to steer
`
`miles-long streamer arrays despite limited location data in order to better image
`
`geological structures, improve the streamers’ effectiveness, repeat surveys over
`
`time to manage resource recovery, and more safely and rapidly deploy and turn the
`
`arrays.
`
`Marine seismic surveys use reflections of
`
`sound waves to analyze underwater natural resource
`
`formations. (Ex. 1001, at Fig. 1.) Seismic streamers
`
`(12) are cables up to many miles in length that are
`
`towed behind survey vessels. An acoustic source
`
`(14), such as an air gun, is used to generate an
`
`acoustic signal towards the ocean floor. Seismic
`
`sensors, such as hydrophones (18), are spaced along
`
`the length of each streamer and are used to detect the
`
`reflected acoustic signal. The resulting data can be
`
`used to map the subsurface geology for natural
`
`resource exploration and management.
`
`1
`
`

`
`Case IPR2014-00688
`Patent Owner Preliminary Response
`
`Historically, a single streamer was towed behind the ship for a few hundred
`
`meters. This yielded a short cross-section or “2-D” image of the subsurface
`
`geology. As the industry evolved, arrays of multiple side-by-side streamers have
`
`been deployed, allowing the capture of more robust “3-D” maps—as Petitioner’s
`
`art shows, some of these approaches date back to 1967.
`
`Early streamer positioning involved rudimentary devices such as deflectors
`
`and tail buoys. (Ex. 1001, at 3:34-39; Fig. 1 elements (16) and (20, respectively).
`
`Deflectors were associated with the front end of the streamer and used to
`
`horizontally spread the end of the streamer nearest the seismic survey vessel. (Id.
`
`at 1:34-41.) Tail buoys were associated with ropes or cables secured to the end of
`
`the streamer furthest from the seismic survey vessel, and created drag on that end
`
`of the streamer. (Id. at 1:39-41; 3:37-39.) The tension created on the seismic
`
`streamer by the deflector and tail buoy resulted in a roughly linear shape. (Id. at
`
`1:34-41.) Both tail buoys and deflectors floated at the surface and could rely on
`
`GPS to determine their positions. No steering was provided for the miles of length
`
`along the streamer.
`
`Streamer positioning devices are generally spaced every 200 to 400 meters
`
`along the length of a streamer. (Ex. 1001, at 1:48-49.) For a modest streamer
`
`array, this means hundreds, sometimes over a thousand, separate streamer
`
`2
`
`
`

`
`Case IPR2014-00688
`Patent Owner Preliminary Response
`
`positioning devices are deployed on a given array. Simultaneously controlling this
`
`multitude of independent positioning devices is no mean feat. While it is easy to
`
`set a target depth and little risk exists if that depth is overshot, lateral steering
`
`requires considerations of the dynamical movement of neighboring streamers and
`
`obstructions along miles of cable deployed in the ever-changing open-water
`
`environment of the deep seas. Unless properly controlled, lateral steering can
`
`make streamer arrays more dangerous than no steering at all.
`
`The complexity of these streamer arrays led to several widely
`
`acknowledged, decades-old problems, including the risk of tangling, a potentially
`
`catastrophic and dangerous failure. (Ex. 1001, 4:5-7.) Movement of the streamers
`
`relative to each other during surveys can lead to gaps in coverage, requiring
`
`repeated passes, or “in-fill,” over the same section of water. And turning such long
`
`arrays in the water can take significant time and effort, and likewise increases the
`
`risk of tangling. Despite a well-known need for the ability to accurately steer these
`
`arrays, the complex nature of the problem prevented a workable solution from
`
`being developed for many years.
`
`Compounding these difficulties were the challenges of even knowing where
`
`the streamers were during surveys. These miles-long cables towed underwater in
`
`the harsh conditions of open deep-water had minimal sensory equipment and long
`
`3
`
`
`

`
`Case IPR2014-00688
`Patent Owner Preliminary Response
`
`signal latency in communicating data to the towing vessel. While GPS could be
`
`relied upon to determine the positions of tail buoys or deflectors floating on the
`
`ocean surface, it could do little to assess the position of streamers, which are towed
`
`underwater. Trying to steer these streamers during a survey would essentially be
`
`“driving blind,” and attempts to steer could prove more dangerous than towing
`
`with no steering at all. As taught in Petitioner’s art, prior to Patentee’s inventions,
`
`determining positions accurately could only be accomplished long after a survey
`
`was completed, using intensive computational processes.
`
`As explained in the background Section of the ’607 patent, seismic arrays
`
`typically allow for the determinations of horizontal positions of the streamers only
`
`every 5 to 10 seconds. (Ex. 1001, at 2:35-38.) And because complex data
`
`processing is often involved, there may be an additional 5-second delay between
`
`taking of the measurements and the determination of actual streamer positions. Id.
`
`That means the information provided to the control system is not where the
`
`streamer positioning device currently is, but where the streamer positioning device
`
`was at some time in the past. And this location data was typically obtained from
`
`compass measurements, which were aggregated to try to determine the rough
`
`shape of a streamer. Trying to steer streamer arrays is therefore even more
`
`difficult as, to a certain extent, they have to be steered blind. The ’607 patent
`
`4
`
`
`

`
`
`
`
`
`
`
`
`
`Case IPR2014-00688
`Patent Owner Preliminary Response
`
`tackled these and other challenges to launch the world's first steerable streamer
`
`array, as discussed below.
`
`II.
`
`Petitioner Partnered With ION to Copy the ‘607 Patent
`
`
`
`
`
`
`
` And the development documents echo the ’607 patent’s claimed
`
`control architecture, such as “mathematical and dynamic model of the streamer”
`
`and “response speed of the system … would need extensive mathematical
`
`modeling.” (Ex. 2005, ION15987-93.)
`
`
`
`5
`
`
`

`
`Case IPR2014-00688
`Patent Owner Preliminary Response
`
`
`
`
`
`III. The Petition Need Not Be Considered on the Merits
`A. The Petition is Time-Barred under 35 U.S.C. § 315(b)
`Patent Owner filed a complaint for patent infringement against ION on June
`
`12, 2009 alleging, inter alia, that ION infringed the ‘607 patent by virtue of
`
`making, using or selling DigiFIN. (Ex. 2007.) Patent owner then filed a complaint
`
`against Fugro for its related infringement as an ION DigiFIN customer, which was
`
`consolidated with ION. (Ex. 2037.) On December 8, 2009, Patent Owner noticed
`
`Petitioner of its related infringement liability for using DigiFIN by providing it
`
`with a copy of the complaint. (Ex. 2008.) When Petitioner did not cooperate with
`
`providing litigation discovery, Patent Owner subpoenaed Petitioner through service
`
`of process on January 22, 2010 and identified “DigiFIN” as the accused product in
`
`the litigation. (Ex. 2009 [service copy with affidavit].) And in a subsequent
`
`motion to compel discovery, Patent Owner identified Petitioner as one of the ION
`
`“customers who assemble [DigiFINs] into infringing systems either within the
`
`United States or abroad.” (Ex. 2010, ION D.I. 81.)
`
`6
`
`
`

`
`Case IPR2014-00688
`Patent Owner Preliminary Response
`
`On February 8, 2010, after being served with process, Petitioner appeared in
`
`the ION litigation through its outside counsel, Heim, Payne & Chorush. (Ex.
`
`2011.) On March 14, 2011, Patent Owner filed its Amended Complaint alleging
`
`DigiFIN’s infringement of the ‘607 patent. (Ex. 2012.) Petitioner was served with
`
`this Amended Complaint that same day via the court’s electronic filing system
`
`(“ECF”). See Ex 2013; see also S.D. Tex. L.R. 5-1 (“The notice of electronic
`
`filing that is automatically generated by the Court's electronic filing system
`
`constitutes service of the document on those registered as filing users of the
`
`system.”).
`
`“An inter partes review may not be instituted if the petition requesting the
`
`proceeding is filed more than 1 year after the date on which the petitioner, real
`
`party in interest, or privy of the petitioner is served with a complaint alleging
`
`infringement of the patent.” 35 U.S.C. § 315(b). (emphasis added). “The word
`
`‘served’ has a definition that include ‘to make legal delivery of (a notice or
`
`process)’ or ‘to present (a person) with a notice or process as required by law.”
`
`Motorola Mobility LLC v. Arnouse, IPR2013-00010 (MT), Paper #20 at 4, (quoting
`
`Black’s Law Dictionary, 1491, Ninth Edition (2009)). “Served” as used in 35
`
`U.S.C. § 315 means this legally operative act, rather than the colloquial “’to
`
`receive,’ ‘to deliver,’ or ‘to present.” Id. at 3; see also TRW Automotive US LLC v.
`
`7
`
`
`

`
`Case IPR2014-00688
`Patent Owner Preliminary Response
`
`Magna Elecs., Inc., IPR2014-00251, Paper #13 (finding that email did not
`
`comprise legal “service”). Interpreting “served” in accordance with Black’s Law
`
`Dictionary is in accord with the legislative purpose of § 315(b), “to provide
`
`defendants sufficient time to fully analyze the patent claim, but not to create an
`
`open-ended process.” Motorola, Paper #20 at 4 (citing legislative history). Patent
`
`Owner’s service of the Amended Complaint on Petitioner was legal “service,” and
`
`therefore satisfies § 315(b). 1
`
`
`In dicta, Motorola implies that service of a summons is also required. This
`1
`
`requirement is contrary to the plain language of § 315(b). Motorola’s
`
`discussion was based in part on Fed. R. Civ. Pro. 4, but that Rule is titled
`
`“Summons” and concerns only when service of a summons is effective, not
`
`service of a complaint. Motorola also relied on Murphy Bros. v. Michetti Pipe
`
`Stringing, 526 U.S. 344 (1999). Id. at 3. But Murphy addressed removal under
`
`28 U.S.C. § 1446, which concerned receipt “through service or otherwise, of a
`
`copy of the initial pleading,” and the Court was concerned that the “or
`
`otherwise” provision was too broad to trigger legal consequence in the absence
`
`of due process notification. 526 U.S. at 347, 350. In ION, in contrast,
`
`Petitioner was served with process and formally appeared. See Murphy at 1327
`
`
`
`8
`
`
`

`
`Case IPR2014-00688
`Patent Owner Preliminary Response
`
`It was unusual for Petitioner to be served with process, appear in litigation,
`
`and be served with an infringement complaint, yet not be a named defendant in the
`
`ION litigation. But the plain language of § 315(b) does not require that Petitioner
`
`be a defendant, Applying the legally-operative definition of “served,” § 315(b) is
`
`limited, as here, to situations where the Petitioner has entered an appearance in the
`
`litigation and is actively involved, i.e., because they are interested in the
`
`infringement. Should the policy behind 315(b) be considered here, it favors this
`
`plain language reading—once parties identified as liable for infringement are
`
`served pursuant to formal legal process, they should promptly seek IPR rather than
`
`lay-in-wait and engender duplicative proceedings years down the road.
`
`The April 23, 2014 Petition filed by PGS is precluded by the plain language
`
`of 35 U.S.C. § 315(b)—it is years overdue. Petitioner was not only “served with a
`
`complaint alleging infringement of the [‘607] patent” on March 14, 2011, but its
`
`
`(“Accordingly, one becomes a party officially, and is required to take action in
`
`that capacity, only upon service of a summons or other authority-asserting
`
`measure.”). In other words, PGS was “brought under a court’s authority, by
`
`formal process” before being served with the amended complaint, satisfying
`
`any due process concerns . Id. at 347.
`
`9
`
`
`

`
`Case IPR2014-00688
`Patent Owner Preliminary Response
`
`specific liability for infringement from DigiFIN was outlined therein. Therefore,
`
`no review may be instituted based on this Petition.
`
`The Petition Fails to Name All Real-Parties In Interest
`
`B.
`As the Board is aware, disputes regarding identifying real-parties in interest
`
`(“RPIs”) have already permeated these proceedings. Petitioner initially identified
`
`no RPIs in its Petition. After discovery proceedings before the Board, Petitioner
`
`amended its disclosures and added PGSAS and Petroleum Geo-Services ASA as
`
`RPIs, receiving a new filing date and resetting the schedule for these proceedings.
`
`Patent Owner then requested, and received, additional RPI discovery from
`
`Petitioner. Based on the record adduced to date, two defects still taint Petitioner’s
`
`disclosures and preclude consideration of the Petition under 35 U.S.C. § 312(a)(2).
`
`i.
`
`PGSAI Is an Unnamed RPI
`
` ION contacted Mr. Hart in 2011
`
`
`
`to discuss the ION litigation, the ‘607 patent, and using an inventor deposition to
`
`try to invalidate the patent. (Ex. 2015, PGSI-T2725-WG-46640.) Mr. Hart
`
`attended the 2012 ION trial, discussed the invalidity of the ‘607 patent with ION’s
`
`trial counsel, and obtained prior art and invalidity contentions for Petitioner’s trial
`
`counsel. (Ex. 2016.) Mr. Hart retained trial counsel on behalf of Petitioner and
`
`PGSAS. (Ex. 2017.) Petitioner recently identified various emails, calls and
`
`10
`
`
`

`
`Case IPR2014-00688
`Patent Owner Preliminary Response
`
`meetings regarding the validity of the ‘607 patent in which Mr. Hart acted as “PGS
`
`[i.e., Petitioner] in-house counsel” or otherwise “on behalf of ‘PGS/Irell’ (Irell &
`
`Manella LLP is PGS’ trial counsel).” (Ex. 2018.) In short, Mr. Hart, i.e., PGSAI,
`
`controlled the review, dissemination and discussion of the prior art that was
`
`presented in the Petition.
`
`
`
`)2 In other words, unnamed PGSAI controlled Petitioner’s DigiFIN
`
`
`In the pending litigation between Petitioner and Patent Owner, Petitioner
`2
`
`similarly transferred PGSAI’s patents to Petitioner on the eve of its
`
`counterclaims so that Petitioner could assert PGSAI’s infringement claims in
`
`
`
`11
`
`
`

`
`Case IPR2014-00688
`Patent Owner Preliminary Response
`
`activities and those of the named RPIs. (Petitioner has so far refused to reveal
`
`whether PGSAI likewise controlled the retention or invoices for Petitioner’s
`
`counsel in this proceeding. (Ex. 2018, Interrogatory Responses at 11-12.))
`
`Because PGSAI’s counsel is controlling PGS’ interests in the validity and
`
`infringement of the ‘607 patent, PGSAI is an RPI. Because Petitioner has failed to
`
`identify PGSAI as such, the Petition is deficient and cannot be considered. 35
`
`U.S.C. § 312(a)(2).
`
`Patent Owner invited Petitioner to amend its disclosures to identify PGSAI
`
`as an RPI and to “discuss a modest adjustment of the existing opposition schedule
`
`based on the new filing date.” (Ex. 2025.) Petitioner refused.3 Accordingly, the
`
`Petition must be dismissed.
`
`
`Petitioner’s name. (Ex. 2024.) For whatever reasons, Petitioner has expended
`
`considerable effort attempting to hide PGSAI from these various proceedings.
`
`3 On the eve of this Opposition, Petitioner produced a vague “Human Resources”
`
`memorandum stating that PGSAI’s employees were “transferred” to Petitioner
`
`on January 1, 2013. (Ex. 2026.) This “memo” is irrelevant to PGSAI’s role
`
`prior to that date, and there is no indication that Mr. Hart stopped representing
`
`PGSAI after that date. Mr. Hart never notified ION of any change to their
`
`
`
`12
`
`
`

`
`Case IPR2014-00688
`Patent Owner Preliminary Response
`
`ii.
`
`ION Is an Unnamed RPI
`
`
`
` Petitioner and ION have coordinated efforts across multiple forums to
`
`promote their joint interests regarding the ‘607 patent. Shortly after infringement
`
`allegations were raised against the two entities, ION reached out to Petitioner to
`
`coordinate on its attempt to invalidate the ‘607 patent:
`
`Speaking plainly, several PGS employees previously worked for
`
`WesternGeco . . . One of these gentlemen, Mr. Hillesund, is a named
`
`inventor of the WesternGeco patents . . . ION intends to depose Mr.
`
`Hillesund and others . . . ION would be very interested in discussing
`
`mutually beneficial opportunities to improve our access to PGS
`
`
`express agreement that he represented only PGSAI in dealings concerning the
`
`validity of the ‘607 patent. And there is no indication that Mr. Hart believed he
`
`was representing anyone other than PGSAI. PGSAI still exists as an
`
`independent corporation today, and if “all employees” were transferred out of it
`
`last year then other PGS employees--like Mr. Hart--must still be representing
`
`PGSAI’s interest and acting on its behalf.
`
`13
`
`
`

`
`Case IPR2014-00688
`Patent Owner Preliminary Response
`
`employees . . . It is our belief that such testimony will help, at least,
`
`to invalidate the WesternGeco patents.
`
`
`
`
`
`
`
`
`
`
`
`(Ex. 2015.)
`
`
`
`ION’s attempts to protect Petitioner’s rights to use DigiFIN comprised
`
`multiple invalidity attacks at trial, including many arguments similar to those
`
`raised in the Petition. Petitioner attended the trial at ION’s invitation, and raised
`
`comments and questions regarding the same between their respective counsel
`
`during those proceedings. (Ex. 2016.) During this period, Petitioner began
`
`claiming a “common interest privilege” over its communications with ION
`
`regarding “WG litigation” and “litigation interests.” (Ex. 2028.) Petitioner has
`
`based this privilege assertion on “Western[Geco]’s litigiousness on the subject of
`
`DigiFIN gives rise to a common legal interest regarding the patent infringement
`
`assertions.” (Ex. 2029.) And Petitioner is currently arguing in the district court
`
`litigation that ION’s trial arguments and damages now protect Petitioner from any
`
`infringement liability. (Ex. 2030.)
`
`14
`
`
`

`
`Case IPR2014-00688
`Patent Owner Preliminary Response
`
`
`
`ION’s invalidity arguments failed at trial, and ION filed a notice of appeal
`
`and docketing statement indicating that it would appeal those issues. (Ex. 2031.)
`
`Petitioner continued to meet with ION to discuss specific references and invalidity
`
`theories, and potential arguments to raise in these proceedings. (Ex. 2018.)
`
`Petitioner has refused to produce the majority of these communications through its
`
`continued invocation of a common interest privilege. (Ex. 2030.) But now that
`
`Petitioner has challenged the validity of the ‘607 patent, ION has dropped that
`
`issue from its pending appeal, apparently relying on potential collateral effects of
`
`Petitioner’s current efforts under a lessened burden instead.4
`
`
`
`This web of interlaced interests and unified legal efforts regarding the ‘607
`
`patent, infringement liability therefor and the validity thereof, renders ION and
`
`Petitioner real-parties-interest with respect to this Petition. Petitioner and ION
`
`have coordinated their invalidity attacks against WesternGeco’s patents and are
`
`each relying on the collateral effects of the other’s legal proceedings to protect
`
`their own interests. Notably, Petitioner’s invocation of a common interest
`
`
`4 Conversely, ION has filed an opposition to WesternGeco’s EPO counterpart to
`
`the ‘607 patent, whereas Petitioner has not, apparently piggy-backing on ION’s
`
`efforts in that forum.
`
`15
`
`
`

`
`Case IPR2014-00688
`Patent Owner Preliminary Response
`
`privilege under 5th Cir. law is limited to actual or “potential co-defendants.” In re
`
`Santa Fe, 272 F.3d 705, 711 (5th Cir. 2001). This jibes with the PTAB Practice
`
`Guide, which notes that to establish an RPI relationship, “it should be enough that
`
`the nonparty has the actual measure of control or opportunity to control that might
`
`reasonably be expected between two formal coparties.” PTAB Trial Practice
`
`Guide at 48759. ION’s involvement with the Petition is at least as comprehensive
`
`as if ION and Petitioner were formal codefendants--and arguably significantly
`
`more given ION’s ultimate responsibility for Petitioner’s infringement liability and
`
`ION’s role as the source for references and arguments for the Petition. ION is an
`
`unnamed RPI, and also was served with an infringement complaint more than one
`
`year prior to the Petition. The Petition therefore fails under both § 312(a)(2) and §
`
`315(b), and need not be considered on the merits.
`
`ION Is a Privy Regarding Validity of the ‘607 Patent
`
`iii.
`If not a real-party in interest, ION is at least in privity with Petitioner and
`
`other real-parties in interest regarding the validity of the ‘607 patent:
`
`• ION and Petitioner share the same interests regarding the validity of the
`
`‘607 patent. (Ex. 2016 (2011 email discussing “mutually beneficial
`
`opportunities . . . to invalidate the WesternGeco patents”)).
`
`16
`
`
`

`
`Case IPR2014-00688
`Patent Owner Preliminary Response
`
`•
`
`
`
`
`
`
`
`• ION and Petitioner invoked a common-interest privilege beginning in
`
`2012 regarding their discussions and cooperation regarding the ‘607
`
`patent, the ION litigation and the Petition. (Ex. 2029)
`
`• Petitioner has relied on ION to represent Petitioner’s substantive interests
`
`in the ION litigation and appeal. (Ex. 2033 at 1, n1. (representing that
`
`“reversal or remand on substantive patent grounds [in ION] would curtail
`
`or extinguish Western’s claims against ION, and by extension, Geo [i.e.,
`
`Petitioner PGS].”))
`
`Additionally, as discussed above, ION and Petitioner having been
`
`cooperating and coordinating regarding the validity of WesternGeco’s patents
`
`across multiple forums for years, evidencing their respective control over, and use
`
`of each other as a proxy regarding validity challenges. Petitioner has gone so far
`
`as to invoke res judicata based on the ION litigation, reinforcing its belief that its
`
`17
`
`
`

`
`Case IPR2014-00688
`Patent Owner Preliminary Response
`
`interests regarding, inter alia, the validity of the ‘607 patent were already full
`
`represented and litigated by ION from 2009-12. (Ex. 2033.) ION is a privy with
`
`regard to the validity of the ‘607 patent and, because ION was served with an
`
`infringement complaint in 2009, the Petition is time barred under § 315.
`
`IV. The Petition is Time-Barred Under 35 U.S.C. 315(b)
`
`
`
`
`
`
`
`
`
`
`
`
`
`5
`
`Patentee filed a complaint for patent infringement against ION on June 12,
`
`2009 alleging, inter alia, that ION infringed the ’607 patent by virtue of making,
`
`using or selling DigiFIN. On December 8, 2009, Patent Owner noticed PGS of its
`
`
`5 As a separate matter, Patent Owner is currently investigating ION’s role in the
`
`filing of the Petition in the present proceeding, as well as the participation and
`
`control of related PGS entities.
`
`18
`
`
`

`
`Case IPR2014-00688
`Patent Owner Preliminary Response
`
`infringement liability for using DigiFIN by providing it with a copy of the
`
`complaint. Petitioner then entered an appearance in the suit, and was subsequently
`
`served with a new complaint (Ex. 2012, Amended Complaint on March 14,
`
`2011.) This amended complaint, like the original, also identified the use of
`
`DigiFIN as infringing the ’607 patent.
`
`• The plain language of 35 U.S.C. 315(b) is clear: service of a
`complaint alleging infringement of the patent is sufficient to trigger
`the 12-month window; nothing else is required. “An inter partes
`review may not be instituted if the petition requesting the proceeding
`is filed more than 1 year after the date on which the petitioner, real
`party in interest, or privy of the petitioner is served with a complaint
`alleging infringement of the patent.” 35 U.S.C. § 315(b).
`(emphasis added)
`
`• The S.D. Tex. Local Rules specify that “The notice of electronic filing
`that is automatically generated by the Court's electronic filing system
`constitutes service of the document on those registered as filing users
`of the system.” (Ex. 2034, LR5.1.)
`
`• Petitioner entered an appearance in the suit on February 8, 2010. (Ex.
`2011.)
`
`• Petitioner received notice of the amended complaint, which named its
`practices relative to DigiFIN as constituting infringement of the ’607
`patent, via the S.D. Tex. electronic filing system on March 14, 2011.
`
`19
`
`
`

`
`Case IPR2014-00688
`Patent Owner Preliminary Response
`
`(Ex. 2013, email receipt) This constitutes service of the Amended
`Complaint on PGS Inc. under the local rules.
`
`• It is rare that any non-party is formally served with a complaint. Such
`circumstances are, as here, limited to situations where the Petitioner
`has entered an appearance in the litigation and is actively involved.
`Should the policy behind 315(b) be considered here, such favors this
`plain
`language reading—once parties
`identified as
`liable for
`infringement are served, they should promptly seek IPR rather than
`lay-in-wait and engender duplicative proceedings years down the
`road.
`
`The April 23, 2014 Petition filed by PGS is precluded by the plain language
`
`of 35 U.S.C. § 315(b) — it is years overdue. Petitioner was not only “served with
`
`a complaint alleging infringement of the [’607] patent” on March 14, 2011, but its
`
`liability for infringement was outlined therein by virtue of the continued use of
`
`DigiFIN. Therefore, no review may be instituted based on this Petition.
`
`V. Claim Construction
`If the merits are addressed, a claim “shall be given its broadest reasonable
`
`construction in light of the specification of the patent in which it appears.” 37
`
`C.F.R. § 42.100(b) (emphasis added). Thus, the focus in claim construction for an
`
`IPR, just as it is for every other proceeding requiring claim construction, is on the
`
`specification of the patent at issue. The “broadest reasonable interpretation”
`
`20
`
`
`

`
`Case IPR2014-00688
`Patent Owner Preliminary Response
`
`standard must still “be consistent with the specification.” In re Yamamoto, 740
`
`F.2d 1569, 1571 (Fed. Cir. 1984).
`
`Streamer Positioning Device
`
`A.
`Consistent with the statute and legislative history of the Leahy-Smith
`
`America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), the Board
`
`interprets claims using the “broadest reasonable construction in light of the
`
`specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b); see
`
`also Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
`
`2012). There is a “heavy presumption” that a claim term carries its ordinary and
`
`customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
`
`(Fed. Cir. 2002). However, a “claim term will not receive its ordinary meaning if
`
`the patentee acted as his own lexicographer and clearly set forth a definition of the
`
`disputed claim term in either the specification or prosecution history.” Id.
`
`The broadest reasonable construction of “streamer positioning device” is “a
`
`device that controls at least the lateral position of a streamer as it is towed.” This
`
`construction comports with the ordinary meaning of the term—a “streamer
`
`positioning device” is a device to control positioning, or spacing—as well as the
`
`teachings of the specification.
`
`The specification teaches that accurate horizontal (lateral) positioning of
`
`streamers is a key goal of the invention:
`21
`
`
`

`
`Case IPR2014-00688
`Patent Owner Preliminary Response
`
`The benefits that can be obtained by using properly controlled
`horizontally steerable birds can include reducing horizontal out-of-
`position conditions that necessitate reacquiring seismic data in a
`particular area (i.e., in-fill shooting), reducing the chance of tangling
`adjacent streamers, and reducing the tim