Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 18
`Entered: March 17, 2015
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PETROLEUM GEO-SERVICES INC.,
`Petitioner,
`
`v.
`
`WESTERNGECO LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01478
`Patent 7,293,520 B2
`____________
`
`
`Before SCOTT A. DANIELS, BEVERLY M. BUNTING,
`and BARBARA A. PARVIS, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`
`DECISION
`
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`

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`IPR2014-01478
`Patent 7,293,520 B2
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`A. Background
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`I. INTRODUCTION
`
`Petroleum Geo-Services (“Petitioner”) filed a Petition to institute an
`
`inter partes review of claims 1–3, 5–20, and 22–34 of U.S. Patent No.
`
`7,293,520 B2 (“the ’520 patent”). Paper 1 (“Pet.”). WesternGeco LLC
`
`(“Patent Owner”) timely filed a Preliminary Response. Paper 11 (“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
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`the Petition and the Preliminary Response, we determine that Petitioner has
`
`established a reasonable likelihood of prevailing on certain claims
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`challenged in the Petition. Accordingly, we institute an inter partes review
`
`for claims 1, 5, 13–17, 20, 22, and 30–34 and of the ’520 patent.
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`B. Additional Proceedings
`
`Petitioner states that related lawsuits involving the ’520 patent
`
`presently asserted against Petitioner are:
`
`1. WesternGeco LLC v. Petroleum Geo-Services, Inc. et al., 4:13-cv-
`03037, (the “PGS lawsuit”) (S.D. Tex.);
`2. WesternGeco LLC v. ION Geophysical Corp. et al., 4:09-cv-01827
`(the “ION lawsuit”), (S.D. Tex); and
`3. WesternGeco LLC v. ION Geophysical Corp., 13-1527 (Fed. Cir.).
`
`
`Pet. 1–2. Patent Owner identifies proceedings in Paper 7, 1–2.
`
`Petitioner previously filed Petroleum Geo-Services, Inc. v.
`
`WesternGeco LLC, IPR2014-00689, (“the first PGS IPR”) upon which we
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`instituted an inter partes review of claims 1, 2, 18, and 19 of the ’520 patent.
`
`Claims 1, 2, 6, 18, 19, and 23 of the ’520 patent are also challenged in ION
`
`2
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`IPR2014-01478
`Patent 7,293,520 B2
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`Geophysical Corporation and ION International S.a.r.l., v. WesternGeco
`
`LLC, IPR2015-00565 (“the ION IPR”). 1
`
`Petitioner also has concurrently filed three additional petitions
`
`challenging the patentability of claims 16–23 of U.S. Patent No. 7,080,607
`
`B2 (“the ’607 patent”); claim 4 of U.S. Patent No. 7,162,967 B2 (“the ’967
`
`patent”) ; and claims 1–4, 10, 20–21, 26–29, 35, 39, and 45–47 of U.S.
`
`Patent No. 6,691,038 B2 (“the ’038 patent”).2 See IPR2014-01475;
`
`IPR2014-01476; IPR2014-01477.
`
`C. The ‘520 Patent
`
`The ’520 patent (Ex. 1001), titled “CONTROL SYSTEM FOR
`
`POSITIONING OF A MARINE SEISMIC STREAMERS,” generally
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`relates to a system for improving marine seismic survey techniques by more
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`effectively controlling the movement and positioning of marine seismic
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`streamers towed in an array behind a boat. Ex. 1001, col. 1, ll. 24–36. As
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`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. at
`
`col. 1, ll. 36–41. The reflected signals are received by hydrophones (no
`
`
`1 ION filed a pending Motion for Joinder under 35 U.S.C. § 315(c) and
`37 C.F.R. § 42.122(b) (Paper 4) to join IPR2015-00565 with the first PGS
`IPR, IPR2014-00689.
`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
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`IPR2014-01478
`Patent 7,293,520 B2
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`reference number) attached to streamers 12, and the signals “digitized and
`
`processed to build up a representation of the subsurface geology.” Id.
`
`
`
`
`
`Figure 1, reproduced above, depicts an array of seismic streamers 12
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`towed behind the vessel. The ’520 patent explains that in order to obtain
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`accurate survey data, it is necessary to control the positioning of the
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`streamers, both vertically in the water column, as well as horizontally
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`against ocean currents and forces, which can cause the normally linear
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`streamers to bend and undulate and, in some cases, become entangled with
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`one another. Id. at col. 1, l. 42–col. 2, l. 25.
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`As depicted by Figure 1, each streamer 12 is maintained in a generally
`
`linear arrangement behind the boat by deflector 16 which horizontally
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`positions the end of each streamer nearest the vessel. Id. at col. 1, ll. 43–45.
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`4
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`Drag buoy 20 at the end of each streamer farthest from the vessel creates
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`tension along the streamer to maintain the linear arrangement.
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`Additionally, to control the position and linear shape of the streamer,
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`a plurality of streamer positioning devices, called “birds” 18, are attached
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`along the length of each streamer.3 The birds are horizontally and vertically
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`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 bird’s job is
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`usually to maintain the streamers in their linear and parallel arrangement,
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`because, when the streamers are horizontally out of position, the efficiency
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`of the seismic data collection is compromised. Id. at col. 2, ll. 14–17. The
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`most important task of the birds, however, is to keep the streamers from
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`tangling. Id. at col. 4, ll. 4–5.
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`
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`The invention described in the ‘520 patent relies on global control
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`system 22 located on, or near the vessel, and local control system 36 on or
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`near each bird, to control the birds on each streamer and maintain the
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`streamers in their particular linear and parallel arrangement. Id. at col. 3, ll.
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`62–66, col. 10, ll. 17–20. The global control system is provided with a
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`model (desired) position representation of each streamer in the towed
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`streamer array, and also receives (actual) position information from each of
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`the birds. Id. at col. 4, ll. 21–23. The global control system uses the desired
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`and actual position of the birds to “regularly calculate updated desired
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`vertical and horizontal forces the birds should impart on the seismic
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`streamers 12 to move them from their actual positions to their desired
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`positions.” Id. at col. 4, ll. 37–40. The local control system implements the
`
`
`3 Although the term “streamer positioning device” may be inclusive of other
`structures besides a “bird,” unless otherwise noted in this Decision, we use
`the terms “birds” and “streamer positioning devices” interchangeably.
`
`5
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`information from global control system by “adjusting the wing splay angle
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`to rotate the bird to the proper position.” Id. at col. 10, ll. 24–25.
`
`
`
`The Specification explains that the control system, as a whole, has
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`two primary modes, a feather angle mode, and a turn control mode. Id. at
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`col. 10, ll. 27– 29. The feather angle mode is used to maintain the linear
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`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.
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`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
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`positions be in precise alignment with the towing direction.” Id. at col. 10,
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`ll. 34–36.
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`The turn control mode is used when the vessel is turning during a
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`survey operation. Id. at col. 10, ll. 38–40. In a first part of the turn, birds 18
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`are instructed to “throw out” the streamer by generating a force in the
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`opposite direction from the turn. Id. at col. 10, ll. 40–44. In a second part of
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`the turn, the birds are directed back to the position defined by the feather
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`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
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`from tangling. Id. at col. 10, ll. 54–57. In this mode, the birds are directed
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`to maintain the streamers a distance apart from one another, where
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`[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
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`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
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`operate more efficiently, turn faster and lower the incidents of tangling
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`during survey operations leading to a reduction in time and equipment costs
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`of marine surveying. Id. at col. 2, ll. 23–25, col. 10, ll. 44–46.
`
`D. Illustrative Claims
`
`Of the challenged claims, the independent claims are 1 and 18.
`
`Dependent claims 2, 3, and 5–18 depend directly or indirectly from method
`
`claim 1. Dependent claims 19–20 and 22–34 depend directly or indirectly
`
`from apparatus 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. 16–41.
`
`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.
`
`E. The Prior Art
`
`Petitioner relies on the following prior art references (Pet. 7–11) and
`
`the declaration of Dr. (Ex. 1002):
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`7
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`IPR2014-01478
`Patent 7,293,520 B2
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`
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`References
`
`Patents/Printed
`
`Date
`
`Exhibit
`
`Publications
`
`Workman
`
`U.S. Patent No.
`
`Aug. 4,
`
`1004
`
`5,790,472
`
`1998
`
`Bertheas
`
`U.S. Patent No.
`
`Nov. 2,
`
`1064
`
`6,144,342
`
`’636 PCT
`
`WO 98/28636
`
`2000
`
`July 2,
`
`1998
`
`1006
`
`’153 PCT
`
`WO 84/03153
`
`Aug. 16,
`
`1007
`
`Dolengowski
`
`U.S. Patent No.
`
`4,890,568
`
`
`
`F. The Alleged Grounds of Unpatentability
`
`1984
`
`Jan. 2,
`
`1990
`
`1008
`
`Petitioner contends that the challenged claims are unpatentable on the
`
`following specific grounds.4
`
`Basis
`
`§ 103
`
`Claim Challenged
`
`3, 5, 20, and 22
`
`
`
`References
`
`Workman
`
`Workman and Bertheas
`
`§ 103
`
`1–3, 5, 18–20, and 22
`
`Workman
`
`§§ 102, 103
`
`13–14, 30–31
`
`
`4 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.
`
`8
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`Patent 7,293,520 B2
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`Workman, Dolengowski
`
`§ 103
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`15–17, and 32–34
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`Workman, ’153 PCT
`
`’636 PCT, ’153 PCT
`
`§ 103
`
`§ 103
`
`6–12 and 23–29
`
`7–12, and 24–29
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`
`
`II. CLAIM CONSTRUCTION
`
`A. Legal Standard
`
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`
`also In re Cuozzo Speed Techs., LLC., No. 14-01301, slip op. at 16, 19 (Fed.
`
`Cir. Feb. 4, 2015) (“Congress implicitly adopted the broadest reasonable
`
`interpretation standard in enacting the AIA,” and “the standard was properly
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`adopted by PTO regulation.”). 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
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`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.,
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`415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (citing CCS Fitness, Inc. v.
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`Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). Also, we must be
`
`careful not to read a particular embodiment appearing in the written
`
`description into the claim, if the claim language is broader than the
`
`embodiment. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
`
`(“[L]imitations are not to be read into the claims from the specification.”).
`
`We apply this standard to the claims of the ’520 patent.
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`B. Streamer Positioning Device
`
`The dependent claims at issue in this proceeding all depend either
`
`directly, or indirectly, from independent claims 1 and 18. The independent
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`claims recite the limitation, “streamer positioning device[].” Petitioner
`
`proposes that under the broadest reasonable interpretation, a “streamer
`
`positioning device” is “a device that controls the position of a streamer as it
`
`is towed (e.g., a ‘bird’).” Pet. 13. 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. 23.
`
`A review of the claims and specification provides context for defining
`
`“streamer positioning device.” Claim 1 recites the step of “controlling the
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`streamer positioning devices.” There is no specificity provided by the claim
`
`to the manner, trajectory, or direction in which the positioning device is
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`controlled. The specification of the ‘520 patent describes seismic streamers
`
`being maintained in linear position by “a plurality of streamer positioning
`
`devices known as birds 18. Preferably[,] the birds 18 are both vertically and
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`horizontally steerable.” Ex. 1001, col. 3, ll. 55–57. The bird is preferably
`
`steered by “a pair of independently moveable wings 28 that are connected to
`
`rotatable shafts 32 that are rotated by wing motors 34 and that allow the
`
`orientation of the wings 28 with respect to the bird body 30 to be changed.”
`
`Id. at col. 5, ll. 52–55. However, none of the structure or function for
`
`adjusting the wings, or “horizontal,” i.e. lateral, or “vertical” steering, is
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`required by claim 1.
`
`Because, inter alia, the specification of the ‘520 patent discloses that
`
`“positioning” of the streamer may be accomplished by either horizontal and
`
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`vertical steering, or both, any interpretation including specific directional
`
`terms would read limitations improperly from the specification into the
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`claims. Consequently, the broadest reasonable interpretation of “streamer
`
`positioning device” is “a device that positions a streamer as it is towed.”
`
`C. 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. 29–30. Petitioner does not provide a construction for
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`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
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`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.”
`
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`D. Feather Angle Mode
`
`Independent claims 1 and 18, as well as dependent claims 2, 3, 5, 19,
`
`20 and 22, 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. 14–15 (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.
`
`Resp. 30 (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
`
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`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.”
`
`E. Streamer Separation Mode
`
`Independent claims 1 and 18, as well as dependent claims 13–17 and
`
`30–34, 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. 16–17.
`
`Patent Owner proposes that “streamer separation mode” be interpreted
`
`as “a control mode that attempts to set and maintain the spacing between
`
`adjacent streamers.” Prelim. Resp. 33.
`
`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”
`
`13
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`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 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
`
`of “streamer separation mode,” is, “a mode to control separation, or spacing,
`
`between streamers.”
`
`F. 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 in claims 1 and 18 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).
`
`G. Other claim constructions
`
`Petitioner offers a construction for the term “control system,” “turn
`
`control mode,” and both parties offer a construction for the phrase
`
`“attempting to maximize distance between adjacent streamers.” Pet. 14–19,
`
`14
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`Prelim. Resp. 37–38. We determine that no express construction is needed
`
`for purposes of this Decision for the noted term and phrase.
`
`III. ANALYSIS
`
`A. Redundancy
`
`As an initial matter, we address Patent Owner’s argument that the
`
`grounds presented in the present proceeding are redundant to the grounds set
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`forth in the first PGS IPR. Prelim. Resp. 6–10.
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`With respect to the ground including the combination of Workman
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`and Bertheas, Petitioner has provided no explanation as to why, or how, the
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`combination of Workman and Bertheas is any different than Workman
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`alone. Pet. 32–37. Indeed, Petitioner states that “Bertheas thus solves the
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`problem of controlling a streamer array the same way as Workman and the
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`’520 Patent—by sending commands to streamer positioning devices to steer
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`streamers to their desired positions. Id. at 34 (citing Evans Decl. ¶ 209).
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`The grounds including the combination of Workman and the ’153
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`PCT, as well as the combination of the ’636 PCT and the ’153 PCT, are
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`directed towards claims 6 and 23 and their respective dependent claims 7–
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`12, and 24–29. We denied institution on claims 6 and 23 in the first PGS
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`IPR. See Petroleum Geo-Services, Inc. v. WesternGeco LLC, Case No.
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`IPR2014-00689 Paper 32, slip op. at 37–42 (P.T.A.B Dec. 15, 2014).
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`Petitioner has not directed us to any persuasive evidence or arguments as to
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`why the arguments presented herein asserting unpatentability based on
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`Workman, the ’636 PCT and the ’153 PCT, for dependent claims 6–12 and
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`23–29 are substantially different from the arguments presented in the first
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`PGS IPR asserting the unpatentability of claims 6 and 23 based on the ’636
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`PCT, the ‘153 PCT and Dolengowski.
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`Accordingly, we decline to institute inter partes review with respect
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`to claims 1–3, 5, 18–20, and 22 as unpatentable over Workman and
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`Bertheas; claims 6–12 and 23–29 as unpatentable under 35 U.S.C. § 103
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`over Workman and the ’153 PCT (Pet. 46–56); and claims 7–12 and 24–29
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`as unpatentable under 35 U.S.C. § 103 over the ’636 PCT and the ’153 PCT.
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`B. Statutory Bar Under 35 U.S.C. § 315(b)
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`Patent Owner disputes that Petitioner timely filed its Petition for an
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`inter partes review. Prelim. Resp. 8–12. Specifically, under 35 U.S.C.
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`§ 315(b), a party may not file a petition for inter partes review if the party
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`had been served with a complaint alleging infringement more than one year
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`previously. Patent Owner asserts that Petitioner was served with a
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`complaint on March 14, 2011. Id. at 9.
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`On June 12, 2009, Patent Owner filed, via the district court’s
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`electronic case filing procedure (“ECF”), a complaint initiating the ION
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`lawsuit, alleging infringement of the ‘520 patent against ION based on
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`ION’s “DigiFIN” and other products. Prelim. Resp. 8. Patent Owner also
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`filed a similar complaint against a company called Fugro, a customer of
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`ION, initiating litigation that was consolidated with the ION lawsuit. Id.
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`(citing Ex. 2037). On December 8, 2009, remarking that Petitioner may
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`have been involved in the design and testing of the ION products, Patent
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`Owner provided Petitioner via email with a copy of the complaint against
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`ION. Id. (citing Ex. 2008).
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`Subsequently, Patent Owner subpoenaed Petitioner on January 22,
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`2010 to produce documents and evidence relating inter alia to Petitioner’s
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`use and operation of ION’s DigiFIN product. Id. (citing Ex. 2009). In
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`response to the subpoena, Petitioner appeared in the ION lawsuit through its
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`counsel, Heim, Payne & Chorush. Id. at 9 (citing Ex. 2011). On March 14,
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`2011, Patent Owner filed an amended complaint in the ION lawsuit via the
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`Patent 7,293,520 B2
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`court’s electronic filing system (“ECF”), naming ION and Fugro, but not
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`Petitioner. Id. (citing Ex. 2012). Patent Owner argues that because
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`Petitioner’s counsel, as an ECF notice recipient in the ION lawsuit, received
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`a copy of the amended complaint against Fugro and ION on March 14, 2011,
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`Petitioner was therefore “served” in accordance with 35 U.S.C. § 315(b) the
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`same day. Id. Thus, it is Patent Owner’s position that because Petitioner
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`was “served” with the complaint more than one year before filing the present
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`Petition, the Petition here is now time-barred.
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`The Board has dealt with similar arguments regarding the statutory
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`interpretation of 35 U.S.C. § 315(b) before in Motorola Mobility LLC v.
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`Arnouse, Case IPR2013-00010 (PTAB Jan. 30, 2013) (Paper 20) (the
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`“Motorola decision”). For reasons similar to those set forth in the Motorola
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`decision, we do not adopt the statutory construction that mere receipt of a
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`complaint, via email or even ECF, initiates the one-year time period. We
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`specifically agree with the Motorola Panel’s review and interpretation of the
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`legislative history and intent of 35 U.S.C. § 315(b) in that, “[w]e do not
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`believe that the Congress intended to have the time period start before a
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`petitioner is officially a defendant in a law suit.” Id. at 5.
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`Patent Owner argues that the present proceeding differs from
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`Motorola because in the ION lawsuit “Petitioner was served with process
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`and formally appeared,” (emphasis omitted) and was thus “‘brought under a
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`court’s authority, by formal process’ before being served with the amended
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`complaint.” Prelim. Resp. 7–8 n.1 (citing Murphy Bros., Inc. v. Michetti
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`Pipe Stringing, Inc. 526 U.S. 344, 347 (1999)). Despite this factual
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`difference from Motorola, Petitioner was not, and never has been, a party
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`defendant in the ION lawsuit.
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`Petitioner, in the ION lawsuit, was served under Fed. R. Civ. P. 45,
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`Patent 7,293,520 B2
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`with a third-party subpoena, to produce documents and things relating to the
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`ION lawsuit. See Ex. 2009. Although a person, or entity, may have been
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`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
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`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,
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`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)
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`(“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
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`written objection to inspecting, copying, testing or sampling any or all of the
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`materials.”). We are not aware of any case law or precedent, nor has Patent
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`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
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`under Fed. R. Civ. P. 45(e), provides sufficient legal process to make such
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`person a defendant to a lawsuit.
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`Thus, Petitioner was not a defendant in the ION lawsuit. Concomitant
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`with the Board’s Motorola decision, we interpret 35 U.S.C. § 315(b) as
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`requiring service upon a defendant to the lawsuit. Petitioner was not a
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`defendant; thus, it was never “served with a complaint” in the ION lawsuit
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`as required by 35 U.S.C. § 315(b).5
`
`
`5 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”).
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`C. Real Parties-in-Interest Under 35 U.S.C. § 312(a)
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`1. PGSAI
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`The statute governing inter partes review proceedings sets forth
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`certain requirements for a petition for inter partes review, including that “the
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`petition identif[y] all real parties in interest.” 35 U.S.C. § 312(a) (emphasis
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`added); see also 37 C.F.R. § 42.8(b)(1) (requirement to identify real parties
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`in interest in mandatory notices). The Office Patent Trial Practice Guide, 77
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`Fed. Reg. 48,756, 48,764 (Aug. 14, 2012) (“Practice Guide”) explains that
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`“[w]hether a party who is not a named participant in a given proceeding
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`nonetheless constitutes a ‘real party-in-interest’ . . . to that proceeding is a
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`highly fact-dependent question.” 77 Fed. Reg. at 48,759. The Practice
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`Guide further states that:
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`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.
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`Id. (emphasis added). The determination of whether a non-party is a real
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`party-in-interest involves a consideration of control; “[a] common
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`consideration is whether the non-party exercised or could have exercised
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`control over a party’s participation in a proceeding.” Id.
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`Patent Owner alleges that a company called PGS Americas, Inc.
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`(“PGSAI”) is a real party in interest to this proceeding because an in-house
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`attorney for PGSAI, Kevin Hart, has been involved in the ION lawsuit, and
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`“controlled the review, dissemination