Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 106
`Entered: March 17, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PETROLEUM GEO-SERVICES INC.
`Petitioner,
`
`v.
`
`WESTERNGECO LLC
`Patent Owner.
`
`Case IPR2014-00689
`Patent 7,293,520 B2
`
`Before BRYAN F. MOORE, SCOTT A. DANIELS, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper 106
`Entered: March 17, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PETROLEUM GEO-SERVICES INC.
`Petitioner,
`
`v.
`
`WESTERNGECO LLC
`Patent Owner.
`
`Case IPR2014-00689
`Patent 7,293,520 B2
`
`Before BRYAN F. MOORE, SCOTT A. DANIELS, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`IPR2014-00689
`Patent 7,293,520 B2
`
`INTRODUCTION
`I.
`WesternGeco LLC (“Patent Owner”) filed a Request for Rehearing
`(Paper 103, “Req. Reh’g”) of the Final Written Decision of the above
`entitled Inter Partes Review (IPR) (Paper 101, “Final Dec.”) of claims 1 and
`15 of U.S. Patent No. 7,293,520 B2 (Ex. 1001, “the ’520 patent”). In the
`Request for Rehearing, Patent Owner argues that the Final Written Decision
`overlooked and/or misapprehended several matters in the IPR. For the
`reasons set forth below, the Request for Rehearing is denied.
`
`II. ANALYSIS
`When considering a request for rehearing, we review the Final
`Written Decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The
`party requesting rehearing bears the burden of showing that the Final
`Written Decision should be modified, and “[t]he request must specifically
`identify all matters the party believes [we] misapprehended or overlooked.”
`37 C.F.R. § 42.71(d).
`
`A. Service under 315(b)
`
`Patent Owner argues “[t]he Board attempts to analogize the present
`case to Motorola Mobility LLC v. Arnouse Digital Devices Corp., IPR2013-
`00010, Paper 20 (PTAB Jan. 30, 2013), in order to find that PGS [Petroleum
`Geo-Services Inc.] merely “received a copy” of the complaint.” Req. Reh’g
`3. Further, Patent Owner argues “[t]he Board compounded its error by re-
`writing ‘served’ in Section 315(b) to require ‘service upon a defendant.’
`Paper 101 at 51.” Id. at 4. We disagree. The Final Decision intended to
`read “petitioner, real party in interest, or privy of the petitioner is
`[‘]served[’] with a complaint alleging infringement of the patent” to mean
`
`2
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`IPR2014-00689
`Patent 7,293,520 B2
`
`that the party is served as a defendant in the case rather than served the
`complaint for the purpose of enforcing a third party subpoena. Id. at 6.
`The Final Decision states:
`Patent Owner’s argument that S.D. Texas L.R. 5-1 “comports”
`(PO Resp. 59) with the proper interpretation of service under
`§315(b) 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”).
`
`
`Final Dec. 51, n. 8. Thus, the Final Decision explicitly reads the
`requirement that the person “served” under section 315(b) is a defendant in
`from the legislative history of the statute. On rehearing, Patent Owner
`argues that “Congress did not intend to redefine the well-understood
`meaning of ‘service,’ but rather intended to ensure that the length of the
`Section 315(b) deadline would afford parties, defendants or otherwise, ‘a
`reasonable opportunity to identify and understand the patent claims that are
`relevant to the litigation’ while still preventing the harassment of patent
`holders.” Req. Reh’g 6. However, applying this logic to third parties who
`are simply served with a subpoena does not insure that such parties have “a
`reasonable opportunity to identify and understand the patent claims” because
`a party that is not a defendant may have no reason to evaluate the patent
`claims involved in the litigation in order to respond to the subpoena.
`We decline to read 315(b) to apply the time bar to all third parties who
`after receiving a copy of a complaint concurrent with a third party subpoena,
`appear in the case for the purpose of responding to the subpoena. Patent
`Owner’s reliance on LG Elecs., Inc. v. Mondis Tech. Ltd., IPR2015-00937,
`
`3
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`IPR2014-00689
`Patent 7,293,520 B2
`
`Paper 8 at 4-5 (PTAB Sept. 17, 2015) (precedential) (“LG”) is misplaced.
`Req. Reh’g 5. The Panel in LG declined to read a word into 315(b) in a
`situation where the addition of that word was not argued to be supported by
`legislative history. LG, Paper 8 at 5. The LG Panel went on to state that the
`legislative history and “equitable and public policy considerations [do not]
`favor a ‘broad’ interpretation of § 315(b).” LG, IPR2015-00937, Paper 8 at
`7–8. Here, as in LG, we read the “service” requirement of 315(b) narrowly.
`We did not misapprehend or overlook anything relating to Patent Owner’s
`argument regarding the meaning of “service” under 315(b). Thus, we are
`not persuaded by that argument.
`
`B. We Fully Considered Evidence of RPI and Privity
`
`Patent Owner argues “the Board overlooked relevant evidence of
`ION’s relationship to PGS and the Petition and compounded that error by
`preventing WG [WesternGeco LLC] from discovering admittedly existing
`documents that would have confirmed ION’s status as an RPI and/or privy
`of PGS. Paper 101 at 42-47.” Req. Reh’g 7. Patent Owner argues that the
`Board focused on whether ION “controlled” the instant proceeding but “the
`Board failed to fully consider ION’s broader financial interest in, and ability
`to fund, the IPR.” Id. at 8. Patent Owner does not cite to any rule or cases
`suggesting a “broader financial interest” or “ability to fund” is relevant nor
`does Patent Owner proffer which, if any, evidence in the record was not
`considered in the Final Decision. C.f. GEA Process Engineering, Inc. v.
`Steuben Foods, Inc., IPR2014-00041, Paper 135 at 13–16 (PTAB Dec. 23,
`2014) (Actual evidence of funding, as opposed to ability to fund, found to
`show that party was RPI). Thus, Patent Owner has not established the
`proposition that the Board overlooked some evidence it was required to
`
`4
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`IPR2014-00689
`Patent 7,293,520 B2
`
`consider. A request for rehearing is not an opportunity merely to disagree
`with the panel’s assessment of the arguments or weighing of the evidence.
`Thus, we are not persuaded by this argument.
`
`C. We Properly Denied Patent Owner’s Request For Additional
`Discovery
`Patent Owner argues “[i]n denying WG’s request for additional
`discovery, the Board overlooked PGS’s own admission that relevant
`agreements exist that have not been produced and ION’s obvious
`contradictory statements—PGS and ION could not both be correct in their
`representations to the Board. Paper 101 at 47.” Req. Reh’g 9. We disagree.
`The Final Decision relies on the fact that Exhibit 2018 shows “Petitioner
`unambiguously affirmed that Petitioner had made no claims or demands to
`ION for indemnity with respect to the ’520 patent.” Final Dec. 47. The
`mere allegation that “relevant” agreements may exist, is not inconsistent
`with Petitioner’s statement.
`Patent Owner argues “[t]he Board further erred by basing its Decision
`on an undisputedly incomplete record.” Req. Reh’g 9. A “complete” record
`is not the standard for granting discovery. Granting of additional discovery
`is discretionary with the Board. See 35 U.S.C. § 316(a)(5)(B) (“discovery
`shall be limited to — what is otherwise necessary in the interest of justice”);
`see also Cochran v. Kresock, 530 F.2d 385, 396 (CCPA 1976) (whether a
`party is entitled to additional discovery is discretionary with the board);
`Keebler Co. v. Murray Bakery Products, 866 F.2d 1386, 1388 n.1 (Fed. Cir.
`1989) (standard of review of discovery order on appeal is abuse of
`discretion).
`
`5
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`IPR2014-00689
`Patent 7,293,520 B2
`
`The first and oft-disputed factor in determining whether additional
`discovery is necessary in the interests of justice is whether there exists more
`than a “mere possibility” or “mere allegation that something useful [to the
`proceeding] will be found.” Garmin Int’l, Inc. et al. v. Cuozzo Speed Techs
`LLC, Case IPR2012- 00001, Paper 20, slip op. at 2-3 (PTAB Feb. 14, 2014),
`“Order—Authorizing Motion for Additional Discovery” (listing factors to
`determine whether a discovery request is necessary in the interests of justice)
`(“the Garmin factors”). Under this first factor, a party should already be in
`possession of evidence tending to show beyond speculation that in fact
`something useful will be uncovered. Id. The discovery-seeking party only
`needs to set forth a threshold amount of evidence tending to show that the
`discovery it seeks factually supports its contention. See Garmin, IPR2012-
`00001, Paper 26, slip op. at 8-9, “Decision—On Motion for Additional
`Discovery” (finding that, with respect to Cuozzo’s contention of commercial
`success, Cuozzo failed to present a threshold amount of evidence tending to
`show that the requested discovery of sales and pricing information involved
`units with a nexus to the claimed features).
`Patent Owner states that “[t]he existence of additional indemnity
`agreements between PGS and ION is a case dispositive issue, and one on
`which WG should have been permitted to take discovery.” Req. Reh’g 9.
`The existence of indemnity agreements is not always case dispositive. See
`Zerto, Inc v. EMC Corporation, IPR2014-01295, Paper 34, 12–13 (PTAB
`March 3, 2015) (“an indemnification clause, by itself, is not dispositive with
`respect to whether the indemnitor exercises or could exercise control over an
`inter partes review proceeding.”) (citations omitted); see also Arris Group,
`Inc. v. C-Cation Technologies, LLC, IPR2015-00635, Paper 19, 9–12
`
`6
`
`
`
`IPR2014-00689
`Patent 7,293,520 B2
`
`(PTAB July 31, 2015) (determining fact that “indemnification claims were
`made according to the provisions of the [indemnification] Agreements” was
`not sufficient to show control over the district court proceedings such that a
`party was in privity with the Petitioner). For example, we determined that
`the indemnity agreement produced in this case (see Patent Owner’s
`Rehearing Request, Paper 62 (discussing indemnity agreement in evidence))
`was not case dispositive.
`Patent Owner argues that since the 315(b) bar date has passed, ION
`cannot be added as an RPI because the filing date of the Petition would have
`to be reset and more than one year has passed since ION was served with a
`an infringement complaint. Patent Owner Preliminary Response, Paper 26,
`15.
`
`We determined, based on evidence (Ex. 2022, 2027; Dec. on Inst. 20–
`21, Paper 32) of the provisions of the indemnity agreement that was
`eventually produced (Ex. 2069), that the existence of the indemnity
`agreement did not sufficiently prove ION was a real party in interest to the
`Petition or privy of Petitioner. Dec. on Inst. 18–22. On rehearing, we
`determined that “[t]he 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.” Paper 99 (Decision Denying Patent Owner’s
`Request for Rehearing), 5. Thus, we considered Patent Owner’s argument
`and evidence of record multiple times, including in its May 7, 2015 Request
`for Rehearing regarding joinder (Paper 64), initial Preliminary Response
`(Paper 26), and Patent Owner Response (Paper 48).
`
`7
`
`
`
`IPR2014-00689
`Patent 7,293,520 B2
`
`As noted above, the Board reviewed the agreement that was produced
`along with all the arguments made by Patent Owner and the statement by
`Petitioner in Ex. 2018 and determine that additional discovery was not
`required in the interest of justice. A request for rehearing is not an
`opportunity merely to disagree with the panel’s assessment of the arguments
`or weighing of the evidence. Thus, we are not persuaded by this argument.
`
`D. We Properly Considered the May 14, 2015 Request for Rehearing
`
`Patent Owner argues that the Board failed to consider its Request for
`Rehearing filed on May 14, 2015 and thus “failed to substantively address
`any issues that WG raised in its rehearing request and prevented WG from
`fully developing its arguments. See Paper 99 at 2, n. 4.” Req. Reh’g. 13–14.
`We disagree. In response to the Patent Owner’s May 7, 2015 Request for
`Rehearing, we stated “[t]he 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.” Paper 99 (Decision Denying Patent Owner’s
`Request for Rehearing), 2, n. 4. In that Corrected Order, we referred to the
`indemnification agreement cited in Patent Owner’s May 14, 2015 Request
`for Rehearing and we stated “[n]either are we persuaded that we
`misapprehended or overlooked such evidence in our Decisions to Institute.”
`Paper 67 (Corrected Order Conduct of the Proceeding), 3–4.
`To the extent this statement was unclear, this statement was intended
`to indicate that we considered the arguments presented in Patent Owner’s
`May 14, 2015 Request for Rehearing. This is shown by our use of the
`“misapprehended or overlooked” standard that applies to requests for
`rehearing. Thus, we considered all arguments and evidence presented in the
`
`8
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`IPR2014-00689
`Patent 7,293,520 B2
`
`case with regard to RPI. Additionally, the Board is not required to
`“substantively address” all arguments raised by Patent Owner in all papers
`where some arguments are cumulative of previous arguments, rather the
`Board must consider and rule on challenges and/or requests made in those
`arguments. Thus, we are not persuaded by this argument.
`
`E. The New Multi Klient Evidence is Too Late
`
`Patent Owner argues that “[o]ne week after the Board rendered its
`Decision in this proceeding[] PGS filed an IPR Petition challenging the
`validity of a WG patent asserted alongside the ’520 patent in the same
`district court litigation and naming Multi Klient as an RPI. See Petroleum
`Geo-Services v. WesternGeco LLC, IPR2016-00407, Paper 1 at 3 (PTAB
`Dec. 23, 2015).” Req. Reh’g 11. Patent Owner argues further “PGS’s
`disclosure of Multi Klient as an RPI in IPR2016-00407 is a post hoc
`admission that Multi Klient should also have been named in this proceeding
`and confirms that additional discovery was improperly denied.” Id. 11–12.
`The Final Decision has been entered and the record is closed in this IPR.
`We decline to decide whether such an “admission” would necessarily
`require a finding that Multi Klient should have been named an RPI is this
`case. For example, it is unclear when Petitioner became aware of the fact
`that led it to name Multi Klient as an RPI in the other IPR.
`Nevertheless, we find that it is too late to introduce this evidence to
`support this argument after the Final Decision has been entered. See Sony
`Computer Entertainment America LLC v. Game Controller Technology
`LLC, IPR2013-00634, Paper 31, 3–5 (PTAB April 2, 2015) (“we determine
`that Patent Owner’s challenge of whether SAH and SONY should have been
`
`9
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`IPR2014-00689
`Patent 7,293,520 B2
`
`listed as RPIs in the Petition is untimely at this stage of the proceeding and,
`thus, is improper”).
`
`III. CONCLUSION
`The Request for Rehearing does not demonstrate that the Final
`Written Decision misapprehended or overlooked any matters in the case.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`
`ORDERED that the Request for Rehearing is denied.
`
`For PETITIONER:
`David I. Berl
`Jessamyn S. Berniker
`Thomas S. Fletcher
`Christopher A. Suarez
`WILLIAMS & CONNOLLY LLP
`dberl@wc.com
`jberniker@wc.com
`tfletcher@wc.com
`csuarez@wc.com
`
`For PATENT OWNER:
`Michael L. Kiklis
`Scott A. McKeown
`Kevin B. Laurence
`Katherine D. Cappaert
`Christopher Ricciuti
`OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP
`cpdocketkiklis@oblon.com
`CPDocketMckeown@oblon.com
`cpdocketlaurence@oblon.com
`cpdocketcappaert@oblon.com
`cpdocketricciuti@oblon.com
`
`
`10
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