Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 32
`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 IPR2014-00689
`Patent 7,293,520 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 32
`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 IPR2014-00689
`Patent 7,293,520 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
`
`
`
`IPR2014-00689
`Patent 7,293,520 B2
`
`
`I. INTRODUCTION
`
`A. Background
`Petroleum Geo-Services (“Petitioner”) filed a Petition to institute an
`inter partes review of claims 1, 2, 6, 18, 19, and 23 of U.S. Patent No.
`7,293,520 B2 (“the ’520 patent” Ex. 1001).1 Paper 2 (“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 unpatentability of
`claims 1, 2, 18, and 19 challenged in the Petition. Accordingly, we institute
`an inter partes review for claims 1, 2, 18, and 19 of the ’520 patent.
`B. Additional Proceedings
`Petitioner states that related lawsuits involving the ’520 patent
`presently asserted against Petitioner are WesternGeco LLC v. Petroleum
`Geo-Services, Inc. et al., 4:13-cv-03037, (the “PGS lawsuit”) in the Southern
`District of Texas and WesternGeco LLC v. ION Geophysical Corp. et al.,
`4:09-cv-01827 (the “ION lawsuit”), also in the Southern District of Texas.
`Pet. 2.
`Petitioner also has concurrently filed three additional petitions
`challenging the patentability of: (1) claims 1 and 15 of U.S. Patent No.
`
`
`1 The Petition was initially accorded the filing date of April 23, 2014. Paper
`6. Following submission of an updated Mandatory Notice (Paper 16) on
`August 1, 2014, including additional real-parties-in-interest, we exercised
`our discretion under 37 C.F.R. § 42.5(c), and changed the accorded filing
`date of the Petition to August 5, 2014. Paper 22.
`2
`
`
`
`
`
`IPR2014-00689
`Patent 7,293,520 B2
`
`7,080,607 B2 (“the ’607 patent”)(IPR2014-00688); (2) claims 1 and 15 of
`U.S. Patent No. 7,162,967 B2 (“the ’967 patent”) (IPR2014-00687), and; (3)
`claim 14 of U.S. Patent No. 6,691,038 B2 (“the ’038 patent”) (IPR2014-
`00678).2 , .
`C. The ’520 Patent
`The ’520 patent (Ex. 1001), titled “Control System for Positioning of
`a Marine Seismic Streamers,” 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. 24–36. As illustrated
`in Figure 1 of the ’520 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 36–41.
`
`
`2 The ’520, ’607, and ’967 patents each issued as continuations 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. 7–16.
`
`3
`
`
`
`
`
`IPR2014-00689
`Patent 7,293,520 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. 25. 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
`
`4
`
`
`
`
`
`IPR2014-00689
`Patent 7,293,520 B2
`
`nearest the vessel. Id. at 43–45. Drag buoy 20 at the end of each 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. 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. 53–61. 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. 14–17. The
`most important task of the birds, however, is to keep the streamers from
`tangling. Id. at col. 4, ll. 4–5.
`The invention described in the ‘520 patent relies on global control
`system 22 located on, or near the vessel, to control the birds on each
`streamer and maintain the streamers in their particular linear and parallel
`arrangement. Id. at col. 3, ll. 62–66. The control system is provided with a
`model (desired) position 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. 21–23. 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. 37–40.
`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. 27–
`
`5
`
`
`
`
`
`IPR2014-00689
`Patent 7,293,520 B2
`
`29. 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
`for ocean crosscurrents affecting the streamers. Id. at col. 10, ll. 29–37. The
`’520 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. 34–36.
`The turn control mode is used when the vessel is turning during a
`survey operation. Id. at col. 10, ll. 38–40. 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. 40–44. 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. 50–53.
`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. 54–57. 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, ll. 58–65. These different modes allow the vessel to operate
`more efficiently, turn faster and lower the incidents of tangling during
`
`6
`
`
`
`
`
`IPR2014-00689
`Patent 7,293,520 B2
`
`survey operations leading to a reduction in time and equipment costs of
`marine surveying. Id. at col. 10, ll. 44–46, col. 2, ll. 23–25.
`
`
`D. Illustrative claims
`Of the challenged claims, the independent claims are 1 and 18. Each
`of dependent claims 2 and 6 depend directly from claim 1. Each of
`dependent claims 19 and 23 depend directly from claim 18. Claims 1 and 18
`illustrate the claimed subject matter and are reproduced below:
`
`1. A method comprising:
`(a) towing an array of streamers each having a plurality of
` streamer positioning devices there along contributing
` to steering the streamers;
`(b) controlling the streamer positioning devices with a
` control system configured to operate in one or more
` control modes selected from a feather angle mode, a
` turn control mode, and a streamer separation mode.
`
`Ex. 1001, col. 11, ll. 10–18 (emphasis added).
`18. An apparatus comprising:
`(a) an array of streamers each having a plurality of
` streamer positioning devices there along;
`(b) a control system configured to use a control mode
` selected from a feather angle mode, a turn control
` mode, a streamer separation mode, and two or more of
` these modes.
`
`
`Ex. 1001, col. 12, ll. 4–10 (emphasis added).
`
`7
`
`
`
`
`
`
`
`IPR2014-00689
`Patent 7,293,520 B2
`
`
`Claims challenged
`1 and 18
`1, 2, 18, and 19
`1, 2, 18, and 19
`1, 2, 18, and 19
`1, 6, 18, and 23
`
`§ 103
`
`1, 6, 18, and 23
`
`E. The Alleged Grounds of Unpatentability
`Petitioner contends that the challenged claims are unpatentable on the
`following specific grounds.3
`Reference(s)
`Basis
`Workman4
`§ 102
`Workman
`§ 103
`Hedberg5
`§ 102
`Hedberg
`§ 103
`’636 PCT6 and ’153
`§ 103
`PCT7
`’636 PCT and
`Dolengowski8
`
`
`
`II. CLAIM CONSTRUCTION
`A. Legal Standard
`We interpret claims of an unexpired patent 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
`
`
`3 Petitioner supports its challenge with the Declarations of Dr. Brian 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. 3,581,273 (May 25, 1971).
`6 Ex. 1006, WO 98/28636 (July 2, 1998).
`7 Ex. 1007, WO 84/03153 (Aug. 16, 1984).
`8 Ex. 1008, U.S. Patent No. 4,890,568 (Jan. 2, 1990).
`8
`
`
`
`
`
`IPR2014-00689
`Patent 7,293,520 B2
`
`Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Claim terms
`are given their ordinary and customary meaning, as would be understood by
`a person of ordinary skill in the art at the time of the invention and in the
`context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). If the specification “reveal[s] a special
`definition given to a claim term by the patentee that differs from the
`meaning it would otherwise possess[,] . . . the inventor’s lexicography
`governs.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en
`banc) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
`(Fed. Cir. 2002)). We apply this standard to the claims of the ’520 patent.
`1. Streamer Positioning Device
`Independent claims 1 and 18 include the limitation, “streamer
`positioning device[].” Petitioner proposes that under the broadest reasonable
`interpretation, the “streamer positioning device” is “a device that controls
`the position of a streamer as it is towed (e.g., a ‘bird’).” Pet. 18.
`Patent Owner opposes the proposed construction and argues that, in
`accordance with the plain meaning of the term, 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.” Prelim. Resp. 18.
`On its face, claim 1 recites that the streamer positioning devices, as
`they are towed, “contribut[e] to steering the streamers.” We are not apprised
`by the claim language of any specific steering directions, controls, or
`constraints. Claim 1 further recites the limitation of “controlling the
`streamer positioning devices,” again without giving any specificity to the
`manner, trajectory, or direction in which the positioning device is controlled.
`The specification of the ’520 patent describes streamers 12 being maintained
`
`9
`
`
`
`
`
`IPR2014-00689
`Patent 7,293,520 B2
`
`in linear position by “a plurality of streamer positioning devices known as
`birds 18. Preferably[,] the birds 18 are both vertically and horizontally
`steerable.” Ex. 1001, col. 3, ll. 54–56. However, neither “horizontal,” i.e.
`lateral, nor “vertical” steering is recited in the claims. The claims also do
`not recite any specific types of “streamer positioning devices.” Indeed,
`besides birds, the specification states that the invention “may also be used in
`connection with streamer positioning devices that are characterized as
`‘deflectors’ or steerable ‘tail buoys.’” Id. at col. 11, ll. 2–6.
`To the extent that the specification of the ’520 patent discloses that
`“positioning” of the device may be accomplished by either horizontal or
`vertical steering, or both, of the device, or 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 claims.
`Accordingly, for purposes of this Decision, the broadest reasonable
`interpretation of “streamer positioning device” is “a device that positionsa
`streamer as it is towed.”
`2. Control System
`Independent claims 1 and 18 recite “a control system.” Petitioner
`does not explain sufficiently why the term “control system” requires an
`express construction on this record. No express construction of “control
`system” is needed for this Decision.
`3. Array of Streamers
`Patent Owner proposes that we construe the claim term “array of
`streamers,” as “more than one elongate cable-like structure which contains
`arrays of seismic sensors and associated electronic equipment along its
`length.” Prelim. Resp. 24.
`
`10
`
`
`
`
`
`IPR2014-00689
`Patent 7,293,520 B2
`
`
`Petitioner does not provide a construction for this term.
`Claims 1 and 18 both plainly call for an “array of streamers,” and not
`merely “a streamer.” The ’520 patent initially describes “[a] marine seismic
`streamer” singularly, where a streamer includes “arrays of seismic sensors.”
`Ex. 1001, col. 1, ll. 28–30. The ’520 patent then discusses “a plurality of
`such streamers” towed behind a marine vessel. Id. at col. 1, ll. 33–35.
`Subsequently, the ’520 patent refers to this plurality of towed streamers as
`an “array” where the positioning devices are for “controlling the positions of
`marine seismic streamers in an array of such streamers being towed by a
`seismic survey vessel.” Id. at col. 3, ll. 3–6. The ’520 patent also explains
`that “[t]he outermost streamers 12 in the array could be 700 meters apart.”
`Id. at col. 3, ll. 38–39.
`The plain meaning of an “array of streamers,” as recited in the claims
`and in the context of the specification, comports with the plain and ordinary
`understanding of “array,” meaning, a plurality, or, more than one.
`Accordingly, for purposes of this Decision we interpreted “an array of
`streamers” to mean “more than one streamer.”
`4. Feather Angle Mode
`Independent claims 1 and 18, as well as dependent claims 2 and 19,
`recite “a feather angle mode.” Petitioner argues that “feather angle mode”
`be construed as “[a] control mode that attempts to keep each streamer in a
`straight line offset from the towing direction by a certain feather angle.” Pet.
`19–20 (emphasis added).
`Patent Owner proposes that “feather angle mode” be interpreted as “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.’” Prelim.
`
`11
`
`
`
`
`
`IPR2014-00689
`Patent 7,293,520 B2
`
`Resp. 25 (emphasis added). Patent Owner specifically argues that the ’520
`patent explains “that the streamer’s relative position is ‘input’ or ‘set’ as part
`of the ‘global control system.’” Id.
`The only difference between Petitioner’s and Patent Owner’s
`constructions is set forth in italics above. The ’520 patent describes that the
`feather angle mode attempts “to keep each streamer in a straight line offset
`from the towing direction by a certain feather angle.” Ex. 1001, col. 10, ll.
`29–32. We understand no substantive difference between the plain meaning
`of the terms “to keep” or “to maintain,” leaving the question of whether the
`feather angle mode “set[s]” the streamer’s relative position, i.e. the feather
`angle.
`The specification states that “[t]he feather angle could be input either
`manually, through use of a current meter, or through use of an estimated
`value based on the average horizontal bird forces.” Ex. 1001, col. 10, ll. 32–
`34. We understand from this that the input, or setting, of the feather angle
`would be input manually, or via some component of the global control
`system 22. It is clear that the feather angle mode uses “a certain feather
`angle,” as it is input, but for purposes of this Decision we are not persuaded
`that the feather angle mode, itself, actually inputs, or sets, the feather angle.
`Accordingly, in the context of the specification on this record, the
`broadest reasonable interpretation of “feather angle mode” is “a control
`mode that attempts to keep each streamer in a straight line offset from the
`towing direction by a certain feather angle.”
`5. Turn Control Mode
`Independent claims 1 and 18, as well as dependent claims 6 and 23,
`recite “turn control mode.” Petitioner argues that “turn control mode” be
`
`12
`
`
`
`
`
`IPR2014-00689
`Patent 7,293,520 B2
`
`construed as “a control mode in which the streamer positioning devices first
`generate force in the opposite direction of the turn and then are directed back
`into position.” Pet. 21–22.
`Patent Owner proposes that “turn control mode” be interpreted as “a
`control mode with at least two phases: a first part in which the streamer
`positioning device(s) generate a force in the opposite direction of a turn, and
`a second part directing each streamer positioning device to the position
`defined in the feather angle mode.” Prelim Resp. 27.
`As we explain further below in Section II.A.7, because the list of
`alternative modes recited in independent claim 18, and by implication
`independent claim 1, constitutes a Markush group, the independent claims
`do not require both the turn control mode and the feather control mode, as
`Patent Owner urges us to read into this limitation. Consistent with our
`understanding, and reading “turn control mode” in the context of the
`specification, the broadest reasonable interpretation of “turn control mode”
`is “a control mode, in which during a turn, the streamer positioning devices
`generate force in the opposite direction of the turn and then are directed back
`into position.”
`6. Streamer Separation Mode
`Independent claims 1 and 18, as well as dependent claims 2 and 19,
`recite a “streamer separation mode.” Petitioner argues that the “streamer
`separation mode” is “a mode wherein the global control system attempts to
`direct the streamer positioning to maintain a minimum separation distance
`between adjacent streamers.” Pet. 23–24.
`Patent Owner proposes that “streamer separation mode” be interpreted
`as “a control mode that attempts to set and maintain the spacing between
`
`13
`
`
`
`
`
`IPR2014-00689
`Patent 7,293,520 B2
`
`adjacent streamers.” Prelim. Resp. 28.
`The ’520 patent states that the general purpose of the “streamer
`separation mode” is an “attempt[] to minimize the risk of entanglement of
`the streamers.” Ex. 1001, col. 10, ll. 56–57. This purpose of the streamer
`separation mode is also recited in dependent claims 13 and 30 as “attempting
`to minimize the risk of entanglement of the streamers.” The specification
`further explains that in the streamer separation mode the global control
`system wants to “maximize” the distance between streamers. Id. at 56–58.
`Also, that the streamers will be “separated in depth.” Id. at 58. Dependent
`claims 14 and 31 are specifically drawn to this limitation “maximiz[ing]” the
`distance between streamers.
`We are not persuaded that the “streamer separation mode” should be
`limited to either a “minimum,” as argued by Petitioner, or a “maximum”
`separation as recited in the dependent claims. We also are not apprised of
`any evidence in the specification or claims that any specific distance
`between the streamers in the separation mode is “set and maintain[ed]” as
`Patent Owner urges. To the extent that dependent claims 14 and 31 recite an
`attempt to “maximize distance between adjacent streamers,” these claims do
`not recite that a particular value between streamers is “set and maintained.”
`The ’520 patent also does not discuss in the specification “set[ting]” or
`“maintain[ing]” any specific value. The specification explains only that in
`the streamer separation mode the outermost streamers are positioned as far
`from one another as possible, and the intermediate streamers “regularly
`spaced between these outermost streamers.” Ex. 1001, col. 10, l. 61.
`Accordingly, for purposes of this Decision, the broadest reasonable
`interpretation which comports with the specification and the plain meaning
`
`14
`
`
`
`
`
`IPR2014-00689
`Patent 7,293,520 B2
`
`of “streamer separation mode,” is, “a mode to control separation, or spacing,
`between streamers.”
`
`
`7. A control system configured to use a control mode selected
`from a feather angle mode, a turn control mode, a streamer
`separation mode, and two or more of these modes
`
`
`Because this limitation is written as a Markush group, the prior art
`discloses the limitation if one alternative, i.e. a feather angle, a turn control
`mode, or a streamer mode, is in the prior art. See Fresenius USA, Inc. v.
`Baxter Int’l, Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009).
`
`
`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. 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 ’520 patent against ION based on ION’s “DigiFIN” and
`other products. Prelim. Resp. 5. 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
`
`15
`
`
`
`
`
`IPR2014-00689
`Patent 7,293,520 B2
`
`products, Patent owner provided Petitioner via email with a copy of the
`complaint against ION. Id. at 5–6, 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. 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 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.
`Thus, it is Patent Owner’s position that because Petitioner was “served” with
`the complaint more than one year before filing, the Petition is 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, IPR2013-00010, (PTAB Jan. 30, 2013) (Paper 20) (the “Motorola
`decision”). For similar reasons 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.
`
`16
`
`
`
`
`
`IPR2014-00689
`Patent 7,293,520 B2
`
`
`Patent Owner specifically argues that the present proceeding differs
`from Motorola because in the ION lawsuit “Petitioner was served with
`process and formally appeared,” and was thus “‘brought under a court’s
`authority, by formal process’ before being served with the amended
`complaint.” Prelim. Resp. 8. (Emphasis added). 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 ION lawsuit. See Ex. 2009. Although a person, or
`entity, may have been properly served with a subpoena, and 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 (d)(2)(B). (“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
`a person served with a subpoena, and subject 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
`
`17
`
`
`
`
`
`IPR2014-00689
`Patent 7,293,520 B2
`
`defendant, thus, they were never “served with a complaint” in the ION
`lawsuit, as required by 35 U.S.C. § 315(b).9
`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. 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
`
`9 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”).
`18
`
`
`
`
`
`IPR2014-00689
`Patent 7,293,520 B2
`
`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.” Patent Owner argues that Kevin Hart retained
`trial counsel for Petitioner and PGSAS, and “acted as ‘[Petitioner’s] in-
`house counsel.’” Prelim. Resp. 10. 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, 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. 2019–21. Patent Owner’s
`argument relies on the requirement that all real parties-in-interest be
`identified in the Petition, and concludes that “[b]ecause PGSAI’s counsel is
`controlling [Petitioner’s] interests in the validity and infringement of the
`’520 patent, PGSAI is an RPI.” Id. at 11.
`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. 48,759–60 (August 14, 2012).
`Patent Owner provides insufficient evidence to support its speculative
`contention that any party other than Petitioner is, in fact, funding or
`
`19
`
`
`
`
`
`IPR2014-00689
`Patent 7,293,520 B2
`
`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
`Petitioner at times, and PGSAI at other times, this employment association
`does not explain the corporate, or legal, relationship between 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 be a corporate financial
`structure, not t
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
