UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVISION
`
`§
`§
`§
`§
`§ Case No. 4:09-cv-1827
`§
`§
`
`§
`§
`§
`
`
`WESTERNGECO L.L.C.,
`
` Plaintiff,
`
`v.
`
`ION GEOPHYSICAL CORPORATION,
`et al.
`
` Defendants.
`
`
`MEMORANDUM AND ORDER
`
`
`Pending before the Court are the following motions:
`
`1. ION’s Partial Motion to Dismiss for Lack of Subject Matter Jurisdiction (Doc. No.
`565);
`
`
`2. ION’s Rule 59 Motion for New Trial on Invalidity Under 35 U.S.C. §§ 102 and 103
`(Doc. No. 550);
`
`
`3. ION’s Request for Findings and Conclusions on Enablement and, Alternatively,
`Motion for New Trial (Doc. No. 552);
`
`
`4. ION’s Renewed Motion for Judgment as a Matter of Law and Alternative Motion for
`New Trial Regarding Non-Infringement (Doc. No. 556);
`
`
`5. ION’s Motion for New Trial on Infringement Under 35 U.S.C. § 271(f)(2) (Doc. No.
`557);
`
`6. ION’s Motion for JMOL and New Trial Due to Incorrect Claim Construction (Doc.
`No. 561);
`
`
`7. ION’s Motion for Entry of Findings and Conclusions of No Willful Infringement,
`Renewed Motion for Judgment as a Matter of Law of No Willful Infringement, and
`Alternative Motion for New Trial (Doc. No. 559);
`
`
`8. WesternGeco's Motion for Willfulness and Enhanced Damages (Doc. No. 560);
`
`9. WesternGeco's Motion to Find this Case Exceptional Under Section 285 and for
`Attorneys' Fees (Doc. No. 554);
`
`
`
`1
`
`
`
`
`
`
`
`PGS v WESTERNGECO (IPR2014-00689)
`WESTERNGECO Exhibit 2143, pg. 1
`
`

`
`
`
`
`
`10. ION’s Motion for JMOL, Motion for New Trial on Damages alternatively Motion for
`Remittitur (Doc. No. 562);
`
`11. WesternGeco’s Motion for Prejudgment Interest and Post-Discovery Damages (Doc.
`No. 553);
`
`12. WesternGeco’s Motion for Costs (Doc. No. 555);
`
`13. ION’s Motion to Compel Production of Documents From WesternGeco (Doc. No.
`609); and
`
`
`14. WesternGeco's Motion for a Permanent Injunction or, in the Alternative, an Ongoing
`Royalty (Doc. No. 558).
`
`
`Upon considering the Motions, all responses thereto, the applicable law, and oral
`
`arguments, the Court finds that:
`
`1. ION’s Partial Motion to Dismiss for Lack of Subject Matter Jurisdiction (Doc. No.
`565) must be DENIED;
`
`
`2. ION’s Rule 59 Motion for New Trial on Invalidity Under 35 U.S.C. §§ 102 and 103
`(Doc. No. 550) must be DENIED;
`
`
`3. ION’s Request for Findings and Conclusions on Enablement and, Alternatively,
`Motion for New Trial (Doc. No. 552) must be DENIED;
`
`
`4. ION’s Renewed Motion for Judgment as a Matter of Law and Alternative Motion for
`New Trial Regarding Non-Infringement (Doc. No. 556) must be DENIED;
`
`
`5. ION’s Motion for New Trial on Infringement Under 35 U.S.C. § 271(f)(2) (Doc. No.
`557) must be DENIED;
`
`
`6. ION’s Motion for JMOL and New Trial Due to Incorrect Claim Construction (Doc.
`No. 561) must be DENIED;
`
`
`7. ION’s Motion for Entry of Findings and Conclusions of No Willful Infringement,
`Renewed Motion for Judgment as a Matter of Law of No Willful Infringement, and
`Alternative Motion for New Trial (Doc. No. 559) must be GRANTED;
`
`
`8. WesternGeco's Motion for Willfulness and Enhanced Damages (Doc. No. 560) must
`be DENIED;
`
`
`9. WesternGeco's Motion to Find this Case Exceptional Under Section 285 and for
`Attorneys' Fees (Doc. No. 554) must be DENIED;
`
`
`
`
`
`2
`
`PGS v WESTERNGECO (IPR2014-00689)
`WESTERNGECO Exhibit 2143, pg. 2
`
`

`
`10. ION’s Motion for JMOL, Motion for New Trial on Damages alternatively Motion for
`Remittitur (Doc. No. 562) must be DENIED;
`
`
`11. WesternGeco’s Motion for Prejudgment Interest and Post-Discovery Damages (Doc.
`No. 553) must be GRANTED;
`
`12. WesternGeco’s Motion for Costs (Doc. No. 555) must be GRANTED in part and
`DENIED in part;
`
`
`13. ION’s Motion to Compel Production of Documents From WesternGeco (Doc. No.
`609) must be DENIED;
`
`
`14. WesternGeco's Motion for a Permanent Injunction or, in the Alternative, an Ongoing
`Royalty (Doc. No. 558) must be GRANTED.
`
`
`BACKGROUND
`
`
`
`I.
`
`
`
`This is a patent infringement case originally brought by WesternGeco L.L.C. (“Plaintiff”
`
`or “WesternGeco”) against ION Geophysical Corporation (“ION”). At issue in this case is
`
`marine seismic streamer technology that is deployed behind ships. These streamers, essentially
`
`long cables, use acoustic signals and sensors to create three-dimensional maps of the subsurface
`
`of the ocean floor in order to facilitate natural resource exploration and management. For many
`
`seismic studies, greater control over the depth and lateral position of streamers is important in
`
`order to achieve optimal imagery from the signals and to maneuver around impediments such as
`
`rocks and oil rigs. WesternGeco’s patents all pertain to streamer positioning devices, or devices
`
`that are used to control the position of a streamer as it is towed. At trial, WesternGeco argued
`
`that ION had infringed on four of its U.S. patents—U.S. Patent No. 7,293,520 (the “‘520
`
`Patent”); 7,162,967 (the “‘967 Patent”), 7,080,607 (the “‘607 Patent”) (“Bittleston Patents”
`
`collectively); and U.S. Patent. No. 6,691,038 (the “‘038 Patent” or “Zajac Patent”).
`
`
`
`After a three and a half week trial, the jury returned a verdict in favor of WesternGeco.
`
`(Doc. No. 536.) The jury found that ION infringed the ‘520 Patent, the ‘967 Patent, the ‘607
`
`Patent, and the ‘038 Patent pursuant to Section 271(f)(1) & (2). The jury did not find anticipation
`
`
`
`3
`
`PGS v WESTERNGECO (IPR2014-00689)
`WESTERNGECO Exhibit 2143, pg. 3
`
`

`
`or non-enablement of the ‘520 Patent or the ‘967 Patent. The jury did not find anticipation,
`
`obviousness or non-enablement of the ‘607 Patent or the ‘038 Patent. The jury did find that ION
`
`willfully infringed. The jury awarded $93.4 million in lost profits and a reasonable royalty of
`
`$12.5 million. Both parties have now filed numerous post-trial motions. The Court will address
`
`each of the motions in turn.
`
`II.
`
`
`
`
`LEGAL STANDARDS
`
`A. Judgment as a Matter of Law (“JMOL”)
`
`The Fifth Circuit reviews a district court’s ruling on a motion for judgment as a matter of
`
`law de novo. See Cambridge Toxicology Grp., Inc. v. Exnicios, 495 F.3d 169, 179 (5th Cir.
`
`2007). Judgment as a matter of law is appropriate “[i]f a party has been fully heard on an issue
`
`during a jury trial and the court finds that a reasonable jury would not have a legally sufficient
`
`evidentiary basis to find for the party on that issue.” See Fed. R. Civ. P. 50(a)(1); Gomez v. St.
`
`Jude Med. Daig Div. Inc., 442 F.3d 919, 927 (5th Cir. 2006). “The decision to grant a directed
`
`verdict . . . is not a matter of discretion, but a conclusion of law based upon a finding that there is
`
`insufficient evidence to create a fact question for the jury.” Omnitech Int’l v. Clorox Co., 11
`
`F.3d 1316, 1323 (5th Cir. 1994) (citations omitted) (internal quotation marks omitted). A legally
`
`sufficient evidentiary basis requires more than a mere scintilla of evidence. Hollywood Fantasy
`
`Corp. v. Gabor, 151 F.3d 203, 211 (5th Cir. 1998).
`
`The trial court is required to consider the entire record when considering a renewed
`
`judgment as a matter of law motion. Reeves v. Sanderson Plumbing Prod., Inc., 530 U.S. 133,
`
`149–50 (2000). Therefore, a court “should consider all of the evidence—not just that evidence
`
`which supports the non-mover’s case—but in the light and with all reasonable inferences most
`
`
`
`4
`
`PGS v WESTERNGECO (IPR2014-00689)
`WESTERNGECO Exhibit 2143, pg. 4
`
`

`
`favorable to the party opposed to the motion.” Goodner v. Hyundai Motor Co., Ltd., 650 F.3d
`
`1034, 1040 (5th Cir. 2011).
`
`B. Rule 59 Motion for New Trial
`
`The district court’s ruling on a Rule 59 motion for new trial is reviewed for an abuse of
`
`discretion. Beckham v. Louisiana Dock Co., L.L.C., 124 Fed.App’x. 268, 270 (5th Cir. 2005). A
`
`district court can grant a new trial under FRCP 59(a) “for any reason for which a new trial has
`
`heretofore been granted in an action at law in federal court.” A new trial should not be granted
`
`“unless, at a minimum, the verdict is against the great weight of the evidence.” Dawson v. Wal-
`
`Mart Stores, Inc., 978 F.2d 205, 208 (5th Cir. 1992). The Court must again view the evidence “in
`
`a light most favorable to the jury’s verdict, and the verdict must be affirmed unless the evidence
`
`points so strongly and overwhelmingly in favor of one party that the court believes that
`
`reasonable [jurors] could not arrive at a contrary conclusion.” Id. “Where the jury could have
`
`reached a number of different conclusions, all of which would have sufficient support based on
`
`the evidence, the jury’s findings will be upheld.” Id.. If an issue is raised for the first time on a
`
`motion for a new trial, the issue is waived. Auster Oil & Gas, Inc. v. Stream, 835 F.2d 597, 601
`
`(5th Cir. 1988).
`
`III.
`
`
`PARTIAL MOTION TO DISMISS
`
`ION has filed a Partial Motion to Dismiss for Lack of Subject Matter Jurisdiction. (Doc.
`
`No. 565.) ION moves to dismiss for lack of subject matter jurisdiction with respect to
`
`WesternGeco’s claims that ION infringed the Bittleston Patents. ION claims that WesternGeco
`
`does not own the Bittleston Patents and therefore lacks standing to sue for infringement.
`
`
`
`
`
`5
`
`PGS v WESTERNGECO (IPR2014-00689)
`WESTERNGECO Exhibit 2143, pg. 5
`
`

`
`A. Legal Standard
`
`“Standing is a constitutional requirement pursuant to Article III and it is a threshold
`
`jurisdictional issue” that may be decided on a Rule 12(b)(1) motion. Abraxis Bioscience, Inc. v.
`
`Novainta LLC, 625 F.3d 1359, 1363 (Fed. Cir. 2010). WesternGeco bears the burden of proving
`
`standing by a preponderance of the evidence. A case can be dismissed for lack of subject matter
`
`jurisdiction at any time. A court may consider evidence outside the pleadings when resolving a
`
`motion to dismiss for lack of subject matter jurisdiction under Rule 12(b)(1). See Ramming v.
`
`U.S., 281 F.3d 158, 161 (5th Cir. 2001). Only a patent owner may have a remedy by civil action
`
`for infringement. Paradise Creations, Inc. v. UV Sales, Inc., 315 F.3d 1304, 1308 (Fed. Cir.
`
`2003). The Patent Act defines a patentee as the person to whom the patent as issued and any
`
`successors in title to the patentee. 35 U.S.C. § 100(d). Patent rights can only be assigned in
`
`writing. 35 U.S.C. § 261.
`
`B. Chain of Title
`
`ION argues that WesternGeco has not proved it has ownership of the Bittleston patents,
`
`and therefore, its standing to sue. WesternGeco has provided ION two types of documents, a
`
`Merger Agreement between Schlumberger Technology Corporation (“STC”) and WesternGeco
`
`and assignments from the inventors to STC, but not from the inventors to WesternGeco. ION
`
`argues that WesternGeco must possess a written chain of title from the inventors. ION further
`
`argues that the USPTO assignment records do not contain any executed assignment document
`
`from the inventors to WesternGeco. Based on these facts, ION argues that WesternGeco has not
`
`proved it is the owner of the patents.
`
`ION has never raised this issue in a motion before and had stipulated earlier in the suit
`
`that WesternGeco did own the patents. While “[c]onsent of parties cannot give the courts of the
`
`
`
`6
`
`PGS v WESTERNGECO (IPR2014-00689)
`WESTERNGECO Exhibit 2143, pg. 6
`
`

`
`U.S. jurisdiction . . . the parties may admit the existence of facts which show jurisdiction, and the
`
`courts may act judicially upon such admission.” Ry. Co. v. Ramsey, 89 U.S. (22 Wall.) 322, 327
`
`(1875). First, ION had stated in its Answer and Counterclaims that “[o]n information and belief,
`
`the Bittleston Patents were assigned to WesternGeco.” (Doc. No. 6 ¶ 106.) In the same Answer,
`
`ION also stated it did not know for certain whether WesternGeco owned the patents, but
`
`proceeded for three years as if WesternGeco did own them. Second, ION agreed the jury should
`
`be instructed that WesternGeco owns the patents and is entitled to collect damages. ION now
`
`attempts to assert a position that is wholly different from its position regarding patent ownership
`
`throughout this litigation.
`
`Additionally, the Patent Office issued each of the Bittleston patents to WesternGeco as
`
`the “Assignee.” The entity to whom the Patent Office issues a patent is the presumptive owner.
`
`ION has the burden to rebut that presumption, which it has not done. Conversely, WesternGeco
`
`has presented sufficient evidence to prove its ownership of the patents. WesternGeco presented
`
`evidence at the trial that the inventors assigned their patent to STC. Then in the November 30,
`
`2000 Technology Transfer Agreement, STC
`
`transferred and assigned
`
`the patents
`
`to
`
`WesternGeco. That agreement stated:
`
`STC agrees to and hereby does grant, transfer and assign to [WesternGeco] with regard to
`the Territory all of STC’s rights, title and interest in and to the Intellectual Property in
`existence.”
`
`“Intellectual Property” was defined in the agreement to include any patent rights. ION argues
`
`that an “agreement” to assign is not the same as assigning. However, the language of the
`
`agreement states clearly that STC “agrees to and hereby does grant, transfer, and assign.” The
`
`Court is satisfied that WesternGeco was assigned the rights.
`
`
`
`7
`
`PGS v WESTERNGECO (IPR2014-00689)
`WESTERNGECO Exhibit 2143, pg. 7
`
`

`
`
`
`ION further argues that the assignment to STC occurred in 2001. Since STC and
`
`WesternGeco merged in 2000, STC did not have the patent rights to assign and therefore the
`
`patents still belonged to STC. The Court finds this argument unconvincing. The 2001
`
`assignments state that the inventors “acknowledge [they] have sold, assigned, transferred and
`
`conveyed” the U.S. patent rights to STC. (Doc. No. 606, Ex. 11 at WG 955146; Ex. 12 at WG
`
`955144.) This is a confirmation of the inventors’ assignments to STC that dates back to the 1998
`
`Cost Sharing Agreement, which states:
`
`Ownership of the Patent Rights . . . shall be vested in the Participants in their Respective
`Areas. (Doc. No. 606, Ex. 10 at WG 955272.)
`
`STC was designated the “Participant” for the “Respective Area”. Therefore, STC owned the
`
`patents when it assigned the patents to WesternGeco in 2000.
`
`
`
`ION has proceeded throughout the years as if WesternGeco owned the patents and the
`
`record reflects that WesternGeco does own the patents by written assignment. Therefore, the
`
`Court must deny ION’s Motion to Dismiss.
`
`IV.
`
`
`INVALIDITY
`
`ION has filed a Rule 59 Motion for New Trial on Invalidity Under 35 U.S.C. §§ 102 and
`
`103. (Doc. No. 550.) ION moves for a new trial on the basis that all the asserted patent claims
`
`but two are invalid as anticipated or obvious under 35 U.S.C. §§ 102 and 103. Specifically, ION
`
`contends that Claim 18 of the ‘520 Patent and Claim 15 of the ‘607 Patent were anticipated by
`
`U.S. Patent No. 5,790,472 (“Workman Patent”). Claim 14 of the ‘038 Patent was anticipated by
`
`International Application Publication WO 2000/20895 (the “’895 Publication”). Also, ION
`
`asserts that Claim 15 of the ‘967 Patent and Claim 15 of the ‘607 Patent were obvious based on
`
`the combination of the Workman Patent; and the International Application Publication WO
`
`98/28636 (the “’636 Patent”) and Claim 14 of the ‘038 Patent were made obvious by the ‘895
`
`
`
`8
`
`PGS v WESTERNGECO (IPR2014-00689)
`WESTERNGECO Exhibit 2143, pg. 8
`
`

`
`Patent. After considering the arguments, the Court finds that the jury’s verdict was reasonable
`
`and there was no indication of unfairness to warrant a new trial. This motion must be denied.
`
`A. Anticipation
`
`A patent is invalid as anticipated under 35 U.S.C. § 102 when “every element and
`
`limitation of the claim was previously described in a single prior art reference, either expressly or
`
`inherently, so as to place a person of ordinary skill in possession of the invention.” Sanofi-
`
`Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1082 (Fed. Cir. 2008). The standard for proving
`
`anticipation is clear and convincing evidence. Id. The prior art that ION asserts anticipates
`
`WesternGeco’s patents were all considered by the United States Patent and Trademark Office
`
`(“PTO”) during prosecution, yet the PTO still granted WesternGeco the patents at issue. While
`
`not dispositive, this is further evidence the jury could have relied upon when reaching its verdict.
`
`At trial, the jury decided that WesternGeco’s patents were not anticipated and ION has not met
`
`the clear and convincing evidence standard to prove otherwise.
`
`1. Claim 18 of the ‘520 Patent
`
`ION claims that the Workman Patent anticipated Claim 18 of the ‘520 Patent. However,
`
`the jury could reasonably find from evidence and testimony presented at trial that the Workman
`
`Patent does not teach or enable lateral steering or the “streamer positioning devices” claimed in
`
`the Bittleston Patents. The streamer positioning devices mentioned in the Workman Patent refers
`
`to depth control devices, not lateral positioning devices as used in the Bittleston patents. (Doc.
`
`No. 574 p. 7.)
`
`Likewise, ION claims that the Workman Patent anticipates this claim because it discloses
`
`the “streamer separate mode.” The Court construed “streamer separation mode” to mean “a
`
`control mode that attempts to set and maintain the spacing between adjacent streamers” (Doc.
`
`
`
`9
`
`PGS v WESTERNGECO (IPR2014-00689)
`WESTERNGECO Exhibit 2143, pg. 9
`
`

`
`No. 120 p. 45.) The Workman Patent states only that a “threshold parameter” of “at least 100
`
`meters” be maintained. (Doc. No. 583 p. 5.) This threshold parameter does not specify that a
`
`precise spacing be set and maintained between adjacent streamers. WesternGeco aptly points out
`
`that, without maintaining any space, the streamers could range from 100 meters apart to 100
`
`miles. (Doc. No. 602 p. 3.) With this, and other evidence and testimony, the jury could
`
`reasonably find that Claim 18 of the ‘520 Patent was not anticipated.
`
`2. Claim 15 of the ‘607 Patent
`
`ION argues that the Workman Patent anticipates Claim 15 of the ‘607 Patent by
`
`disclosing limitation (a), (b), and (c) of the Claim. Claim 15 states:
`
`(a)
`(b)
`
`(c)
`
`a plurality of streamer positioning devices on or inline with each streamer,
`a prediction unit adapted to predict positions of at least some 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.
`
`
`However, at trial, ION’s expert witness, Robert Brune admitted that Claim 15 of the ‘607
`
`patent requires lateral steering and Workman does not enable lateral steering. To anticipate, a
`
`patent must teach and enable all claim limitations. Since lateral steering is a limitation of Claim
`
`15, it is reasonable that the jury would conclude that Claim 15 of the ‘607 Patent was not
`
`anticipated.
`
`3. Claim 14 of the ‘038 Patent
`
`ION argues that Claim 14 of the ‘038 Patent is anticipated based on the ‘895 Publication,
`
`which discloses all of the limitations of Claim 14. However, Mr. Brune admitted at trial that the
`
`‘895 Publication does not disclose the 4D surveys claimed in the ‘038 Patent. The jury could
`
`weigh this evidence and testimony and conclude that Claim 14 was not anticipated.
`
`
`
`
`
`10
`
`PGS v WESTERNGECO (IPR2014-00689)
`WESTERNGECO Exhibit 2143, pg. 10
`
`

`
`B. Obviousness
`
`A patent is invalid for obviousness “if the differences between the subject matter sought
`
`to be patented and the prior art are such that the subject matter as a whole would have been
`
`obvious at the time the invention was made to a person having ordinary skill in the art to which
`
`said subject matter pertains.” 35 U.S.C. § 103(A). “Obviousness is a legal determination that
`
`may be submitted to a jury with proper instruction.” In re Hayes Microcomputer Products, Inc.
`
`Patent Litigation, 982 F.2d 1527, 1539 (Fed. Cir. 1992). ION expressly agreed to submit the
`
`question of obviousness to the jury in the form of the special verdict form. (Doc. No. 536.) ION
`
`has not met its burden to overturn the jury’s finding of nonobviousness.
`
`1. Claim 15 of the ‘967 Patent
`
`ION argues that Claim 15 of the ‘967 Patent is obvious based on the combination of the
`
`Workman Patent and the ‘636 Publication, which are prior art. Claim 15 reads:
`
`An array of seismic streamers towed by a towing vessel comprising:
`
`(a)
`
`(b)
`
`a plurality of streamer positioning devices on or inline with each streamer, at least
`one of the streamer positioning devices having a wing;
`global control system transmitting location information to at least one local
`control system on the [sic] at least one streamer positioning device having a wing,
`the local control system adjusting the wing.
`
`
`However, ION has failed to show that any person of ordinary skill in the art would have
`
`selected and combined these prior art elements in the normal course of research and development
`
`to yield the claimed invention. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed.
`
`Cir. 2011). ION has not met its burden to overturn the jury’s finding of nonobviousness.
`
`2. Claim 15 of the ‘607 Patent
`
`ION argues that Claim 15 of the ‘607 Patent is obvious based on the combination of the
`
`Workman Patent and the ‘636 Publication, which are prior art. At trial, Mr. Brune explained that
`
`
`
`11
`
`PGS v WESTERNGECO (IPR2014-00689)
`WESTERNGECO Exhibit 2143, pg. 11
`
`

`
`the Workman Patent, ‘636 Publication and ‘607 Patent are in the same field. Therefore, ION
`
`argues, a person of ordinary skill in the art would be motivated to combine the Workman Patent
`
`and the ‘636 Publication. However, ION fails to explain how the combination could disclose and
`
`enable all of these limitations and harmonize the differences in the two patents. In re Kumar, 418
`
`F.3d 1361, 1369 (Fed. Cir. 2005) (“To render a later invention unpatentable for obviousness, the
`
`prior art must enable a person of ordinary skill in the field to make and use the later invention.”).
`
`ION has not met its burden to overturn the jury’s finding of nonobviousness.
`
`3. Claim 14 of the ‘038 Patent
`
`ION argues that Claim 14 is obvious based on the ‘895 Publication. Mr. Brune testified
`
`that, even assuming that the tracking systems are not expressly or inherently disclosed in the
`
`‘895 Publication, they would have been obvious to a person having ordinary skill in the art. Mr.
`
`Brune further testified that, at least since the late 1980s, compass navigation, acoustic navigation,
`
`and satellite navigation have existed. However, Mr. Brune also remarked during cross
`
`examination that using laterally steerable streamers in order to match a later survey to a reference
`
`position from a prior survey or reference file “is definitely a notable improvement.” (Trial Tr. At
`
`3988:20-25.) The jury could weigh this admission and reasonably conclude that Claim 14 was
`
`not obvious.
`
`ION has not demonstrated that the jury’s verdict on anticipation or obviousness was
`
`against the great weight of the evidence. See Dresser–Rand Co. v. Virtual Automation, Inc., 361
`
`F.3d 831, 838-39 (5th Cir. 2004). Therefore, ION’s Rule 59 Motion for New Trial on Invalidity
`
`Under 35 U.S.C. §§ 102 and 103 must be denied.
`
`
`
`
`
`12
`
`PGS v WESTERNGECO (IPR2014-00689)
`WESTERNGECO Exhibit 2143, pg. 12
`
`

`
`V.
`
`
`ENABLEMENT
`
`ION has filed a Request for Findings and Conclusions on Enablement and, Alternatively,
`
`Motion for New Trial. (Doc. No. 552.) The Patent Act states:
`
`The specification shall contain a written description of the invention, and of the manner
`and process of making and using it, in such full, clear, concise, and exact terms as to
`enable any person skilled in the art to which it pertains, or with which it is most nearly
`connected, to make and use the same, and shall set forth the best mode contemplated by
`the inventor or joint inventor of carrying out the invention.
`
`35 U.S.C.A. § 112.
`
`
`To be enabled, a patent specification must provide sufficient information to enable a
`
`person skilled in the relevant art to make and use the claimed invention without undue
`
`experimentation. The Federal Circuit has set forth the following factors that courts may weigh in
`
`deciding whether a disclosure would require undue experimentation:
`
`1. the quantity of experimentation necessary;
`2. the amount of direction or guidance presented;
`3. the presence or absence of working examples;
`4. the nature of the invention;
`5. the state of the prior art;
`6. the relative skill of those in the art;
`7. the predictability or unpredictability of the art; and
`8. the breadth of the claims.
`
`
`Martek Bioscience Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1378 (Fed. Cir. 2009). ION must
`
`“prove invalidity based on nonenablement by clear and convincing evidence.” MagSil Corp. v.
`
`Hitachi Global Storage Technologies, Inc., 687 F.3d 1377, 1380 (Fed. Cir. 2012). After
`
`considering the motion, all responses, oral argument, and the applicable law, the Court must
`
`deny this motion.
`
`A. Findings and Conclusions
`
`ION claims that the Court must state its findings of facts and conclusions of law because
`
`the enablement question was sent to the jury as an “advisory determination.” Rule 52(a)(1).
`
`
`
`13
`
`PGS v WESTERNGECO (IPR2014-00689)
`WESTERNGECO Exhibit 2143, pg. 13
`
`

`
`However, both parties agreed to submit the question of enablement to the jury and neither party
`
`indicated this was merely an advisory verdict. The Federal Circuit has held that “it is not error to
`
`submit legal questions to the jury as part of a Rule 49(a) special verdict form, since the answer to
`
`the legal question necessarily resolves any disputed underlying factual issues, the court must
`
`accept implicit factual findings upon which the legal conclusion is based when they are
`
`supported by substantial evidence.” Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d
`
`1342, 1359 (Fed. Cir. 2012). The Federal Circuit has held that enablement is a question of law,
`
`but “is amenable to resolution by the jury where the issues are factual in nature.” BJ Services Co.
`
`v. Halliburton Energy Services, Inc., 338 F.3d 1368, 1372 (Fed. Cir. 2003). Therefore, the Court
`
`need not enter findings and conclusions of law since the question was properly submitted to the
`
`jury.
`
`B. New Trial
`
`In the alternative, ION moves for a new trial on enablement on the Bittleston Patents
`
`(composed of Claims 18, 19, 23 of ‘520 Patent; Claim 15 of ‘967 Patent; and Claim 15 of the
`
`‘607 Patent), and Claim 14 of the Zajac Patent (‘038 Patent).
`
`1. Bittleston Patents
`
`The Bittleston Patent claims in suit require a control system and ION argues that there is
`
`not sufficient information to enable a deterministic control system. ION relies on the trial
`
`testimony of two witnesses for this assertion. Dr. Thomas Edgar stated that “[i]t would require an
`
`extreme amount of experimentation” to execute the control system. (Trial Tr. 3146:14-18.) A
`
`former WesternGeco employee, James Martin, said that crucial information was not disclosed so
`
`as to maintain a trade secret. (Trial Tr. 3671:5-3674:10.)
`
`
`
`14
`
`PGS v WESTERNGECO (IPR2014-00689)
`WESTERNGECO Exhibit 2143, pg. 14
`
`

`
`However, ION’s expert, Dr. Edgar, admitted in cross-examination that there is no
`
`mention of deterministic calculations, and since this is not a claimed invention, it need not be
`
`enabled. Dr. Edgar also testified that a person of ordinary skill in the art could use a “simple
`
`feedback control loop” with the patent’s disclosure to make and use the claimed control modes.
`
`(Trial Tr. 3148:11-3150:19.) Furthermore, Mr. Martin stated that he did not know whether the
`
`withheld information had to do with the control mode. This testimony, from witnesses not under
`
`WesternGeco’s control, are sufficient to support a jury verdict that the Bittleston Patents were
`
`enabled, and ION has not met the standard of clear and convincing evidence to warrant a new
`
`trial.
`
`2. Zajac Patent
`
`ION claims that Claim 14 of the Zajac Patent is not enabled because it fails to teach one
`
`skilled in the art how to make or use the invention in order to determine what positioning
`
`commands to issue to active streamer positioning devices. ION cites various parts of Mr. Zajac’s
`
`testimony in which Mr. Zajac admits that the device is very complex and the patent does not
`
`enable one to implement the claimed invention. However, WesternGeco presented testimony that
`
`the Zajac Patent is an improvement of the Bittleston Patents and it explicitly builds on and cites
`
`to those patents. Mr. Brune also testified that the Zajac Patent, read in conjunction with the
`
`Bittleston Patents, enabled the claimed invention. Furthermore, other portions of Mr. Zajac’s
`
`testimony reveal that Mr. Zajac did not include some specifications because those practices were
`
`already known to and available to one of ordinary skill in the art. Koito Mfg. Co. v. Turn-Key-
`
`Tech., LLC, 381 F.3d 1142, 1156 (Fed. Cir. 2004) (a patentee does not “need to include in the
`
`specification that which is already known to and available to one of ordinary skill in the art.”).
`
`Furthermore, ION’s expert, Dr. Edgar, also conceded on cross-examination that the active
`
`
`
`15
`
`PGS v WESTERNGECO (IPR2014-00689)
`WESTERNGECO Exhibit 2143, pg. 15
`
`

`
`streamer positioning device was enabled. (Trial Tr. at 3167:19-23.) The jury had the opportunity
`
`to weigh this evidence and the verdict is not against the great weight of evidence. Therefore, ION
`
`has not shown that a new trial is warranted on enablement and its motion should be denied.
`
`VI. Non-Infringement
`
`ION’s has filed a Renewed Motion for Judgment as a Matter of Law and Alternative
`
`Motion for New Trial Regarding Non-Infringement (Doc. No. 556) on all claims because it
`
`asserts that no claims have been infringed. WesternGeco asserted that the following claims were
`
`literally infringed: Claims 18, 19 and 23 of the ‘520 Patent; Claim 15 of the ‘967 Patent; Claim
`
`15 of the ‘607 Patent; and Claim 14 of the ‘038 Patent. To literally infringe, the accused system
`
`must embody every claim limitation as construed by the court. Gen. Elec. Co. v. Nintendo Co.,
`
`179 F.3d 1350, 1357-58 (Fed. Cir. 1999). WesternGeco also asserted that the following claims
`
`were infringed under the doctrine of equivalents (“DOE”) if they were not literally infringed:
`
`Claims 18, 19 and 23 of the ‘520 Patent; and Claim 15 of the ‘967 Patent. DOE requires that the
`
`accused system contain each limitation of the claim or its equivalent. Warner-Jenkinson Co. v.
`
`Hilton Davis Chem. Co., 520 U.S. 17, 40 (1997). A claim limitation is “equivalently present in
`
`an accused device if only ‘insubstantial differences’ distinguish the missing claim element from
`
`the corresponding aspects of the accused device.” Riles v. Shell Exploration & Prod. Co., 298
`
`F.3d 1302, 1309-10 (Fed. Cir. 2002). Each of the claims are discussed below, but ultimately, the
`
`Court must deny ION’s motion.
`
`A. Claims 19 and 23 of the ‘520 Patent
`
`ION argues that Claims 19 and 23 of the ‘520 Patent do not infringe literally or under the
`
`Doctrine of Equivalents. ION argues that Claim 19 does not infringe literally because ION’s
`
`system does not include a “feather angle mode.” The Court construed “feather angle mode” to
`
`
`
`16
`
`PGS v WESTERNGECO (IPR2014-00689)
`WESTERNGECO Exhibit 2143, pg. 16
`
`

`
`mean “a control mode that attempts to set and maintain each streamer in a straight line offset
`
`from the towing direction by a certain feather angle.” (Doc. No. 530, “Jury Instructions”, No. 6.)
`
`ION argues that only the ghost streamer, and not “each streamer,” is set to the feather angle.
`
`However, sufficient evidence supports the jury’s verdict that Claim 19 of the ‘520 Patent was
`
`literally infringed. The remaining streamers align themselves with the reference streamer at that
`
`same feather angle. A number of Fugro’s and ION’s employees and customers testified at trial
`
`that ION’s system operates in feather mode. (Trial Tr. 3468:25–3469:8, 3474:19–25 (Daniel
`
`Seale, ION’s senior systems engineer); id. at 2055:12–15, 2062:7–9, 3340:17–3342:1, 3353:2–
`
`11, 3362:14–23, 3433:15–24, 3435:3–3436:6 (Crawford Macnab, ION’s Orca software project
`
`manager); id. at 1008:5–7, 1009:4–8, 1013:22–1014:19, 1024:21–1025:10, 1028:18–22, 1030:1–
`
`3 (Leif Morten By, Fugro’s former Navigation Manager); id. at 3025:8–13 (David Moffat, ION’s
`
`Senior Vice President)). The jury could reasonably determine that there was literal infringement.
`
`ION argues that Claim 23 of the ‘520 Patent does not infringe literally because it does not
`
`have the “feather angle mode” o