Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 33
`Entered: December 15, 2014
`
`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
`Patent 7,080,607 B2
`
`
`Before BRYAN F. MOORE, SCOTT A. DANIELS, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`DECISION
`Decision on Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
`
`
`Paper 33
`Entered: December 15, 2014
`
`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
`Patent 7,080,607 B2
`
`
`Before BRYAN F. MOORE, SCOTT A. DANIELS, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`DECISION
`Decision on Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`Case IPR2014-00688
`Patent 7,080,607 B2
`
`
`I. INTRODUCTION
`
`A. Background
`Petroleum Geo-Services Inc. (“Petitioner”) filed a Petition to institute
`an inter partes review of claims 1 and 15 of U.S. Patent No. 7,080,607 B2
`(“the ’607 patent”).1 Paper 1 (“Pet.”). WesternGeco LLC (“Patent Owner”)
`timely filed a Preliminary Response. Paper 26 (“Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review under 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Upon consideration of
`the Petition and the Preliminary Response, we determine that Petitioner has
`established a reasonable likelihood of prevailing on the claims challenged in
`the Petition. Accordingly, we institute an inter partes review for claims 1
`and 15 of the ’607 patent.
`B. Additional Proceedings
`Petitioner states that related lawsuits involving the ’607 patent
`presently asserted against Petitioner are WesternGeco LLC v. Petroleum
`Geo-Services, Inc., 4:13-cv-02725, in the Southern District of Texas and
`WesternGeco LLC v. ION Geophysical Corp., 4:09-cv-01827 (the “ION
`lawsuit”), also in the Southern District of Texas. Pet. 8.
`Petitioner also has concurrently filed three additional petitions
`challenging the patentability of claims 1, 2, 6, 18, 19, and 23 of U.S. Patent
`No. 7,293,520 B2 (“the ’520 patent”); claims 1 and 15 of U.S. Patent No.
`7,162,967 B2 (“the ’967 patent”); and claim 14 of U.S. Patent No. 6,691,038
`
`
`1 The Petition was initially accorded the filing date of April 23, 2014. Paper
`6. Following submission of an updated Mandatory Notice (Paper 18) on
`August 5, 2014, including additional real-parties-in-interest, we exercised
`our discretion under 37 C.F.R. § 42.5(c), changing the filing date of the
`Petition to August 5, 2014. Paper 22.
`
`2
`
`
`
`
`IPR2014-00688
`Patent 7,080,607 B2
`
`B2 (“the ’038 patent”).2 See IPR2014-00689; IPR2014-00678; IPR2014-
`00687.
`C. The ’607 Patent
`The ’607 patent (Ex. 1001), titled “Seismic Data Acquisition
`Equipment Control System,” generally relates to a method and apparatus for
`improving marine seismic survey techniques by more effectively controlling
`the movement and positioning of marine seismic streamers towed in an array
`behind a boat. Ex. 1001, col. 1, ll. 16–24. As illustrated in Figure 1 of the
`’607 patent reproduced below, labeled prior art, a seismic source, for
`example air gun 14, is towed by boat 10 producing acoustic signals, which
`are reflected off the earth below. Id. The reflected signals are received by
`hydrophones (no reference number) attached to streamers 12, and the signals
`“digitized and processed to build up a representation of the subsurface
`geology.” Id. at col. 1, ll. 31–33.
`
`
`2 The ’520, ’607, and ’967 patents each issued as a continuation of
`application No. 09/787,723, filed July 2, 2001, now U.S. Patent No.
`6,932,017, which was in turn a 35 U.S.C. § 371 national stage filing from
`Patent Cooperation Treaty application number PCT/IB99/01590, filed
`September 28, 1999, claiming foreign priority under 35 U.S.C. § 119 from
`Great Britain patent application number 9821277.3, filed October 1, 1998.
`See Ex. 1001, col. 1, ll. 4–12.
`
`
`
`3
`
`
`
`IPR2014-00688
`Patent 7,080,607 B2
`
`
`
`Figure 1 depicts an array of seismic streamers 12 towed behind the
`vessel.
`In order to obtain accurate survey data, it is necessary to control the
`positioning of the streamers, both vertically in the water column, as well as
`horizontally against ocean currents and forces which can cause the normally
`linear streamers to bend and undulate and, in some cases, become entangled
`with one another. Id. at col. 1, l. 42–col. 2, l. 16. As illustrated in Figure 1,
`each streamer is maintained in a generally linear arrangement behind the
`boat by deflector 16 which horizontally positions the end of each streamer
`nearest the vessel. Id. at col. 3, ll. 37–46. Drag buoy 20 at the end of each
`
`4
`
`
`
`
`IPR2014-00688
`Patent 7,080,607 B2
`
`streamer farthest from the vessel creates tension along the streamer to
`maintain the linear arrangement.
`Additionally, to control the position and linear shape of the streamer a
`plurality of streamer positioning devices, called “birds” 18, are attached
`along the length of each streamer. Id. at col. 3, ll. 47–49. The birds are
`horizontally and vertically steerable and control the shape and position of the
`streamer in both vertical (depth) and horizontal directions. Id. at col. 3, ll.
`49–55. The birds’s job is usually to maintain the streamers in their linear
`and parallel arrangement, because when the streamers are horizontally out of
`position, the efficiency of the seismic data collection is compromised. Id. at
`col. 2, ll. 5–7. The most important task of the birds, however, is to keep the
`streamers from tangling. Id. at col. 3, ll. 65–66.
`The invention described in the ’607 patent relies on global control
`system 22 located on the vessel to control the birds on each streamer to
`maintain the streamers in their particular linear and parallel arrangement. Id.
`at col. 3, ll. 56–60. The control system is provided with a model (desired)
`representation of each streamer in the towed streamer array, and also
`receives (actual) position information from each of the birds. Id. at col. 4,
`ll. 15–19. The control system uses the desired and actual position of the
`birds to “regularly calculate updated desired vertical and horizontal forces
`the birds should impart on the seismic streamers 12 to move them from their
`actual positions to their desired positions.” Id. at col. 4, ll. 28–34.
`The Specification explains that the control system has two primary
`modes, a feather angle mode, and a turn control mode. Id. at col. 10, ll. 30–
`32. The feather angle mode is used to maintain the linear form of the
`streamer at an angle offset from the direction of towing, usually to account
`
`
`
`
`5
`
`
`
`IPR2014-00688
`Patent 7,080,607 B2
`
`for ocean crosscurrents affecting the streamers. Id. at col. 10, ll. 32–40. The
`’607 patent explains “[o]nly when the crosscurrent velocity is very small
`will the feather angle be set to zero and the desired streamer positions be in
`precise alignment with the towing direction.” Id. at col. 10, ll. 38–40.
`The turn control mode is used when the vessel is turning during a
`survey operation. Id. at col. 10, ll. 41–43. In a first part of the turn, birds 18
`are instructed to “throw out” the streamer by generating a force in the
`opposite direction from the turn. Id. at col. 10, ll. 43–49. In a second part of
`the turn, the birds are directed back to the position defined by the feather
`angle mode. Id. The control system determines the first and second part of
`the turn according to data provided by the vessel navigation system. Id. at
`col. 10, ll. 53–56.
`During inclement weather conditions, the control system can also
`operate in streamer separation mode, important for keeping the streamers
`from tangling. Id. at col. 10, ll. 58–61. In this mode, the birds are directed
`to maintain the streamers a distance apart from one another, where
`[t]he streamers 12 will typically be separated in depth and the
`outermost streamers will be positioned as far away from each
`other as possible. The inner streamers will then be regularly
`spaced between these outermost streamers, i.e. each bird 18 will
`receive desired horizontal forces 42 or desired horizontal
`position information that will direct the bird 18 to the midpoint
`position between its adjacent streamers.
`
`Id. at col. 10, l. 63–col. 11, l. 3. These different modes allow the vessel to
`operate more efficiently, turn faster, and lower the incidents of tangling
`during survey operations leading to a reduction in time and equipment costs
`of marine surveying. Id. at col. 10, ll. 49–51, col. 1, l. 63–col. 2, l. 16.
`
`
`
`
`6
`
`
`
`IPR2014-00688
`Patent 7,080,607 B2
`
`
`Basis
`§ 102
`§ 103
`§ 103
`§ 103
`
`D. Illustrative Claim
`Claims 1 and 15 are independent. Claim 1 is a method claim, and
`claim 15, an apparatus claim, illustrates the claimed subject matter and is
`reproduced below:
`
`15. An array of seismic streamers towed by a towing
`vessel comprising:
` (a) a plurality of streamer positioning devices on or inline
`with each streamer;
` (b) a prediction unit adapted to predict positions of at least
`some of the streamer positioning devices; and
` (c) a control unit adapted to use the predicted positions to
`calculate desired changes in positions of one or more of
`the streamer positioning devices.
`
`Ex. 1001, col. 11, ll. 16–24 (emphasis added).
`E. The Alleged Grounds of Unpatentability
`Petitioner contends that the challenged claims are unpatentable on the
`following specific grounds.3
`
`References
`Workman4
`Workman
`Workman and Elholm5
`Gikas6 and ’636 PCT7
`
`Claims Challenged
`1 and 15
`1 and 15
`1 and 15
`1 and 15
`
`
`3 Petitioner supports its challenge with Declarations of Dr. Brian J. Evans,
`Ph.D. (Ex. 1002) (“Evans Decl.”) and Dr. Jack H. Cole, Ph.D. (Ex. 1003)
`(“Cole Decl.”). See infra.
`4 Ex. 1004, U.S. Patent No. 5,790,472 (Aug. 4, 1998).
`5 Ex. 1005, U.S. Patent No. 5,532,975 (July 2, 1996).
`
`7
`
`
`
`
`IPR2014-00688
`Patent 7,080,607 B2
`
`References
`Gikas and Elholm
`
`
`Basis
`§ 103
`
`Claims Challenged
`1 and 15
`
`II. CLAIM CONSTRUCTION
`Petitioner proposes constructions for “streamer positioning device,”
`“predict[ing] positions,” and “on or in-line with.” Patent Owner proposes a
`competing claim construction only for “streamer positioning device.” The
`first two limitations are common to both claims 1 and 15, while the third
`limitation is found only in claim 15.
`A. Streamer Positioning Device
`We construe the same limitation “streamer positioning device,” in the
`context of claims 1 and 18 of the ’520 patent. See IPR 2014-00689, Paper
`31 at 9–10. As set forth below, we adopt that same construction here,
`although we do not repeat our analysis. See NTP Inc., v. Research in
`Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005) (When construing claims
`in patents that derive from the same parent application and share common
`terms, “we must interpret the claims consistently across all asserted
`patents.”). Because, inter alia, the Specification of the ’520 patent discloses
`that “positioning” of the device may be accomplished by either horizontal
`and vertical steering, or both, of the device, and that the device may be a
`bird or other type of device, any interpretation including specific directional
`terms would read limitations improperly from the Specification into the
`
`
`6 Ex. 1006, V. Gikas, P. A. Cross, & A. Asiama-Akuamoa, A Rigorous and
`Integrated Approach to Hydrophone and Source Positioning during
`Multi-Streamer Offshore Seismic Exploration, 77 THE HYDROGRAPHIC
`JOURNAL 11–24 (July 1995).
`7 Ex. 1013, WO 98/28636 (July 2, 1998).
`
`8
`
`
`
`
`IPR2014-00688
`Patent 7,080,607 B2
`
`claims. The broadest reasonable interpretation of “streamer positioning
`device” is therefore, “a device that positions a streamer as it is towed.”
`B. Predicting Positions
`Petitioner argues that “predicting positions” should be interpreted in
`terms of the root word “predict” as “encompass[ing] either present or future
`predictions of streamer positioning device locations (i.e., ‘estimates of the
`real time or future locations’).” Pet. 23. The Specification of the ’607 patent
`explains that “[d]ue to the relatively low sample rate and time delay
`associated with the horizontal position determination system, the global
`control system 22 runs position predictor software to estimate the actual
`locations of each of the birds 18.” Ex. 1001, col. 4, ll. 51–55 (emphasis
`added). From this description, we understand that because of a low sample
`rate and time delay in the process of determining the actual position of birds
`18 at any given time, the global positioning system uses “position predictor
`software to estimate the actual locations of each of the birds 18.” Id. In
`other words, the received position data of any bird 18 is old, i.e., not
`instantaneous, or current, but is used to estimate a position of bird 18, and
`assess the estimate as an actual position of bird 18. Based on this
`disclosure, and for purposes of this Decision, the broadest reasonable
`interpretation of “predicting positions” is “estimating the actual locations.”
`C. On or in-line with
`Independent claim 15 recites the limitation “on or in-line with.”
`Petitioner does not explain sufficiently why the term “on or in-line with”
`requires an express construction on this record. On this record, no express
`construction of “on or in-line with” is needed for this Decision.
`
`
`
`
`
`9
`
`
`
`IPR2014-00688
`Patent 7,080,607 B2
`
`
`III. ANALYSIS
`A. Statutory Bar Under 35 U.S.C. § 315(b)
`Patent Owner disputes that Petitioner timely filed its Petition for an
`inter partes review. Prelim. Resp. 6–10. Specifically, under 35 U.S.C.
`§ 315(b), a party may not file a petition for inter partes review if the party
`had been served with a complaint alleging infringement more than one year
`previously. Patent Owner asserts that Petitioner was served with a
`complaint on March 14, 2011.
`On June 12, 2009, Patent Owner filed, via the court’s electronic case
`filing procedure (“ECF”), a complaint initiating the ION lawsuit, alleging
`infringement of the ’607 patent against ION based on ION’s “DigiFIN” and
`other products. Prelim. Resp. 6. Patent Owner also filed a similar complaint
`against a company called Fugro, a customer of ION, which was consolidated
`with the ION lawsuit. Id. (citing Ex. 2037). On December 8, 2009,
`remarking that Petitioner may have been involved in the design and testing
`of the ION products, Patent Owner provided Petitioner via email with a copy
`of the complaint against ION. Id. (citing Ex. 2008).
`Subsequently, Patent Owner subpoenaed Petitioner on January 22,
`2010 to produce documents and evidence relating inter alia to Petitioner’s
`use and operation of ION’s DigiFIN product. Id. (citing Ex. 2009). In
`response to the subpoena, Petitioner appeared in the ION lawsuit through its
`counsel, Heim, Payne & Chorush. Id. at 7 (citing Ex. 2011). On March 14,
`2011, Patent Owner filed an amended complaint in the ION lawsuit via the
`court’s electronic filing system (“ECF”), naming ION and Fugro, but not
`Petitioner, and incorporating the original 2009 complaint against ION in its
`entirety. Id. (citing Ex. 2012). Patent Owner argues that because
`
`
`
`
`10
`
`
`
`IPR2014-00688
`Patent 7,080,607 B2
`
`Petitioner’s counsel, as an ECF notice recipient in the ION lawsuit, received
`a copy of the amended complaint against Fugro and ION on March 14, 2011,
`Petitioner was, therefore, “served” in accordance with 35 U.S.C. § 315(b)
`the same day. Id. Thus, it is Patent Owner’s position that because Petitioner
`was “served” with the complaint more than one year before filing, the
`Petition here is now time-barred.
`The Board has dealt with similar arguments regarding the statutory
`interpretation of 35 U.S.C. § 315(b) before in Motorola Mobility LLC v.
`Arnouse, Case IPR2013-00010 (PTAB Jan. 30, 2013) (Paper 20) (the
`“Motorola decision”). For reasons similar to those set forth in the Motorola
`decision, we do not adopt the statutory construction that mere receipt of a
`complaint, via email or even ECF, initiates the one-year time period. We
`specifically agree with the Motorola Panel’s review and interpretation of the
`legislative history and intent of 35 U.S.C. § 315(b) in that, “[w]e do not
`believe that the Congress intended to have the time period start before a
`petitioner is officially a defendant in a law suit.” Id. at 5.
`Patent Owner specifically argues that the present proceeding differs
`from Motorola because in the ION lawsuit “Petitioner was served with
`process and formally appeared,” (emphasis omitted) and was thus “‘brought
`under a court’s authority, by formal process’ before being served with the
`amended complaint.” Prelim. Resp. 8–9 n.1 (citing Murphy Bros., Inc. v.
`Michetti Pipe Stringing, Inc., 526 U.S. 344, 347 (1999)). Despite this
`factual difference from Motorola, Petitioner was not, and never has been, a
`party defendant in the ION lawsuit.
`Petitioner, in the ION lawsuit, was served, under Fed. R. Civ. P. 45,
`with a third party subpoena to produce documents and things relating to the
`
`
`
`
`11
`
`
`
`IPR2014-00688
`Patent 7,080,607 B2
`
`ION lawsuit. See Ex. 2009. Although a person, or entity, may have been
`served properly with a subpoena, and may fall under a court’s authority for
`purposes of producing appropriate documents and things not protected by a
`privilege or protection, Fed. R. Civ. P. 45(c)–(e) does not express, or imply,
`that a person subject to the subpoena is a defendant to a lawsuit. Indeed,
`Fed. R. Civ. P. 45 specifically differentiates between a “person” served with
`the subpoena, and “a party” to the lawsuit. See Fed. R. Civ. P. 45 (c)(1)–(2)
`(“A person commanded to produce documents or tangible things or to permit
`inspection may serve on the party or attorney designated in the subpoena a
`written objection to inspecting, copying, testing, or sampling any or all of
`the materials.”). We are aware of no case law or precedent, nor has Patent
`Owner cited to any, indicating that serving a person with a subpoena, and
`subjecting them to the authority of the court in enforcing such subpoena
`under Fed. R. Civ. P. 45(e), provides sufficient legal process to make such
`person a defendant to a lawsuit.
`Thus, Petitioner was not a defendant in the ION lawsuit. Concomitant
`with our colleagues’ Motorola decision, we interpret 35 U.S.C. § 315(b) as
`requiring service upon a defendant to the lawsuit. Petitioner was not a
`defendant; thus, it was never “served with a complaint” in the ION lawsuit
`as required by 35 U.S.C. § 315(b).8
`
`
`8 Patent Owner’s argument that S.D. Texas L.R. 5-1 states that the ECF
`notice “constitutes service of the document on those registered as Filing
`Users,” is not persuasive as to the intent of Congress with respect to
`§ 315(b). See 157 Cong. Rec. S5429 (daily ed. Sept. 8, 2011) (statement of
`Senator Kyl) (“it is important that the section 315(b) deadline afford
`defendants a reasonable opportunity to identify and understand the patent
`claims that are relevant to the litigation”).
`
`12
`
`
`
`
`IPR2014-00688
`Patent 7,080,607 B2
`
`
`B. Real Parties-in-Interest Under 35 U.S.C. § 312(a)
`(1) PGSAI
`The statute governing inter partes review proceedings sets forth
`certain requirements for a petition for inter partes review, including that “the
`petition identif[y] all real parties in interest.” 35 U.S.C. § 312(a) (emphasis
`added); see also 37 C.F.R. § 42.8(b)(1) (requirement to identify real parties
`in interest in mandatory notices). The Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756, 48,764 (Aug. 14, 2012) (“Practice Guide”) explains
`that “[w]hether a party who is not a named participant in a given proceeding
`nonetheless constitutes a ‘real party-in-interest’ . . . to that proceeding is a
`highly fact-dependent question.” 77 Fed. Reg. at 48,759. The Practice
`Guide further states that
`
`However, the spirit of that formulation as to IPR and PGR
`proceedings means that, at a general level, the ‘real party-in-
`interest’ is the party that desires review of the patent. Thus, the
`‘real party-in-interest’ may be the petitioner itself, and/or it may
`be the party or parties at whose behest the petition has been
`filed.
`
`Id. (emphasis added). The determination of whether a non-party is a real
`party-in-interest involves a consideration of control; “[a] common
`consideration is whether the non-party exercised or could have exercised
`control over a party’s participation in a proceeding.” Id.
`Patent Owner alleges that a company called PGS Americas, Inc.,
`(“PGSAI”) is a real party in interest to this proceeding because an in-house
`attorney for PGSAI, Kevin Hart, has been involved in the ION lawsuit, and
`“controlled the review, dissemination and discussion of the prior art that was
`presented in the Petition.” Prelim. Resp. 11. Patent Owner argues that
`
`13
`
`
`
`
`IPR2014-00688
`Patent 7,080,607 B2
`
`Kevin Hart retained trial counsel for Petitioner and PGSAS, and “acted as
`[Petitioner’s] in-house counsel.” Id. Patent Owner argues that Kevin Hart
`of PGSAI also controlled the negotiation of indemnity protections for
`PGSAS, with ION, for potential patent infringement related to DigiFIN. Id.
`(citing Ex. 2022; Ex. 2023). Patent Owner further asserts that PGSAI
`controlled the payment of DigiFIN invoices to ION as well as the repair and
`shipment of DigiFIN products for PGSAS. Id. (citing Ex. 2019–2021).
`Patent Owner’s argument relies on the requirement that all real
`parties-in-interest be identified in the Petition and its speculation that
`“[b]ecause PGSAI’s counsel is controlling [Petitioner’s] interests in the
`validity and infringement of the ‘607 patent, PGSAI is an RPI.” Id. at 12.
`The Practice Guide provides guidance regarding factors to consider in
`determining whether a party is a real party-in-interest. Considerations may
`include whether a non-party exercises control over a petitioner’s
`participation in a proceeding. Other considerations may include whether a
`non-party, in conjunction with control, is funding the proceeding and
`directing the proceeding. 77 Fed. Reg. at 48,759–60.
`
`Patent Owner provides insufficient evidence to support its speculative
`contention that any party other than Petitioner, in fact, is funding or
`controlling Petitioner’s involvement in this proceeding, or that the Petition
`was filed “at the behest” of any party other than Petitioner. We are not
`persuaded that the evidence of common in-house counsel between PGSAI
`and Petitioner shows that PGSAI funded, or directed, Petitioner in
`connection with the filing of this Petition. While Kevin Hart may act on
`behalf of PGS at times, and for PGSAI at other times, this employment
`association does not explain the corporate, or legal, relationship between
`
`
`
`
`14
`
`
`
`IPR2014-00688
`Patent 7,080,607 B2
`
`PGSAI and Petitioner, or demonstrate that PGSAI has the ability to control
`the proceeding before the Board, nor is it evidence of corporate control
`between Petitioner and PGSAI. Discussions of potential remedies and
`indemnity protections by Mr. Hart on behalf of either entity, without specific
`evidence of corporate relationship, control, or contractual obligations of
`these entities, fail to prove that any entity is able to control the actions of
`another. Moreover, invoice payments by PGSAI for the DigiFIN product
`repair and development, at best, show that PGSAI, may have a corporate
`structure financial relationship with PGS and PGSAS, not that any control
`was exercised by PGSAI over Petitioner and this inter partes review
`proceeding.
`
`(2) ION
`Patent Owner asserts that ION is a real party in interest because
`(a) ION and Petitioner have a mutual desire to invalidate the ’607 and other
`WesternGeco patents, and because in this regard, Petitioner claimed a
`“common interest privilege” over communications with ION; (b) ION
`expressed its desire to satisfy its product assurance pledge and fulfill its
`obligations to Petitioner by securing rights to the DigiFIN product, or
`replace it with a non-infringing product; and (c) because Petitioner invoked
`ION’s indemnity obligations, notifying ION that Petitioner expected ION to
`fulfill its obligations and provide a remedy should infringement be found in
`the district court. Prelim. Resp. 13–14 (citing Exs. 2022, 2027).
`The common interest privilege serves to protect confidential, or
`privileged, communications with third parties, which might otherwise be
`exceptions to the attorney-client privilege. There is nothing surreptitious
`about separate entities, as either third parties, or separate parties to a legal
`
`
`
`
`15
`
`
`
`IPR2014-00688
`Patent 7,080,607 B2
`
`action, proclaiming shared interests to protect communications that are
`relevant to advance the interests of the entities possessing the common
`interest. See In re Regents of Univ. of California, 101 F.3d 1386, 1389 (Fed.
`Cir. 1996) (“The protection of communications among clients and attorneys
`‘allied in a common legal cause’ has long been recognized.”) (quoting In re
`Grand Jury Subpoena Duces Tecum, 406 F.Supp. 381, 386 (S.D.N.Y.1975)).
`The fact that Petitioner and ION, have a desire, and common interest, in
`invalidating the ’607 patent and other WesternGeco patents, and have
`collaborated together, and invoked a common interest privilege with respect
`to sharing potentially invalidating prior art references, does not persuade us
`that ION has the ability to control the instant petition or is directing or
`funding the present proceeding.
`The Board has issued decisions determining that a non-party entity is
`a real party-in-interest. See Zoll Lifecor Corp. v. Philips Electronics North
`America Corp., Case IPR2013-00609 (PTAB Mar. 20, 2014) (Paper 15) (the
`“Zoll Decision”). In the Zoll Decision, the Board was persuaded that an
`unnamed party to the IPR, Zoll Medical, exercised consistent control over
`Zoll Lifecor for over six years, including control of the inter partes review.
`Id. at 11. Specific evidence of control included Zoll Lifecor’s
`acknowledgment that Zoll Medical controlled 100% of Zoll Lifecor and
`approved Zoll Lifecor’s corporate budget and plans. Id. Other evidence of
`control included the fact that common counsel for Zoll Medical and Zoll
`Lifecor, would not state affirmatively that counsel did not provide input into
`preparation of the IPRs. Id. at 11–12. Additional evidence showed that only
`Zoll Medical’s management team attended court-ordered mediation in the
`underlying district court litigation filed against Zoll Lifecor. Id. at 12.
`
`
`
`
`16
`
`
`
`IPR2014-00688
`Patent 7,080,607 B2
`
`
`We have no such evidence in this proceeding. ION and Petitioner are
`not related corporate entities. The evidence of record shows that Petitioner
`and ION preliminarily discussed potential remedies, relating to the product
`itself, not indemnification from litigation. Exs. 2022, 2027. As discussed
`above in section III.B.(1), absent specific facts evidencing the contractual
`obligations of the parties, we are not apprised of any evidence indicative of
`control, or potential to control this inter partes proceeding by ION.
`We, therefore, decline to deny the Petition for failure to comply with
`the requirement of 35 U.S.C. § 312(a)(2) for instituting an inter partes
`review.
`
`C. Privity Under 35 U.S.C. § 315(b)
`Under 35 U.S.C. § 315(b), institution of an inter partes review is
`barred “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”
`(emphasis added). Patent Owner contends that ION is a privy of Petitioner
`by virtue of shared interests regarding the validity of the ’607 patent, the
`indemnity relationship between ION and Petitioner, the common interest
`privilege asserted by Petitioner and ION with respect to their
`communications in the ION lawsuit, and because Petitioner is essentially
`arguing that remand or reversal of the ION lawsuit on appeal should also
`extinguish Petitioners liability for infringement of the ’607 patent. Prelim.
`Resp. 18.
`We note that “[t]he notion of ‘privity’ is more expansive,
`encompassing parties that do not necessarily need to be identified in the
`petition as a ‘real party-in-interest.’” 77 Fed. Reg. at 48,759. It is
`
`
`
`
`17
`
`
`
`IPR2014-00688
`Patent 7,080,607 B2
`
`undisputed that service was effected on ION as a named defendant in the
`ION lawsuit on June 12, 2009, more than one year before the filing date of
`this Petition. Patent Owner has not, however, provided evidence showing
`that Petitioner was a privy of ION on June 12, 2009 when ION was served
`with a complaint alleging infringement of the ’607 patent, nor a privy upon
`service of the amended complaint on March 14, 2011.
`The nature of shared interests in invalidating the ’607 patent,
`undertaking a joint defense, and assertion of a common interest privilege
`does not, without more, indicate privity between Petitioner and ION. See
`Practice Guide, 77 Fed. Reg. at 48,760 (“[I]f Party A is part of a Joint
`Defense Group with Party B in a patent infringement suit, and Party B files a
`PGR petition, Party A is not a ‘real party-in-interest’ or a ‘privy’ for the
`purposes of the PGR petition based solely on its participation in that
`Group.”). Patent Owner contends that Petitioner and ION have spun a “web
`of interlaced interests and unified legal efforts regarding the ’607 patent,
`infringement liability therefor and the validity thereof,” but collaboration, by
`itself, is not evidence that ION has any involvement, either by way of
`control or funding the filing of this Petition. Prelim. Resp. 15.
`Patent Owner has not provided evidence, or facts, that give rise to a
`showing of privity between ION and Petitioner. None of the evidence cited
`by Patent Owner, on the record before us, is indicative of the existence,
`much less consummation, of an indemnification agreement for patent
`infringement litigation, or IPR proceedings, between ION and Petitioner.
`Moreover, as discussed above, Petitioner was never served as a party
`defendant in the ION lawsuit. Indemnification to fund or defend a lawsuit,
`arises only upon service of the lawsuit upon the defendant. See Atlanta Gas
`
`
`
`
`18
`
`
`
`IPR2014-00688
`Patent 7,080,607 B2
`
`Light Co. v. Bennett Regulator Guards, Inc., Case IPR2013-00453, slip op.
`at 16 (PTAB Jan. 22, 2014) (Paper 31) (“Patent Owner’s privity theory relies
`fundamentally on [Indemnitor] having the right to control Petitioner’s
`involvement in this proceeding—a right that, at best, arises from Petitioner
`having been served with the complaint in the district court proceeding.”).
`Because Petitioner was never served as a defendant in the ION lawsuit, no
`indemnity impacting funding or control of such a defense could have arisen
`in that proceeding.
`The fact that Petitioner has argued in district court that judgment
`against ION (in the ION lawsuit) would, if affirmed, render the recovery
`against Petitioner duplicative, or upon reversal or remand, eliminate Patent
`Owner’s patent claims against Petitioner, also does not implicate specific
`control or funding by ION. Patent Owner has failed to explain why such an
`argument, while indicative of a customer-client relationship, establishes
`privity between ION and Petitioner. Specifically, Patent Owner does not
`describe how either scenario is determinative of control or funding of this
`proceeding. The outcome in both scenarios could be potentially applicable
`to ION’s customers regardless of privity.
`Therefore, we conclude that institution of an inter partes review is not
`barred by 35 U.S.C. § 315(b).
`We turn now to Petitioner’s asserted grounds of unpatentability, and
`Patent Owner’s arguments in its Preliminary Response, to determine
`whether Petitioner has met the threshold standard of 35 U.S.C. § 314(a).
`D. Claims 1 and 15 – Anticipation by Workman
`Petitioner asserts that claims 1 and 15 are anticipated by Workman.
`Pet. 10. Petitioner has established a reasonable likelihood of prevailing on
`
`
`
`
`19
`
`
`
`IPR2014-00688
`Patent 7,080,607 B2
`
`its assertion that claims 1 and 15 are anticipated by Workman for the reasons
`explained below.
`1. Overview of Workman
`Workman discloses a method for controlling the
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
