Paper 10 IPR2014-01475
`
`
`
`Trials@uspto.gov
` Paper 10 IPR2014-01476
`
`
`
`571-272-7822
`
` Paper 10 IPR2014-01477
`
`
`
`
`
`
`
`
`Paper 10 IPR2014-01478
`
`
`
`
`
`
`
` Date: November 26, 2014
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PETROLEUM GEO-SERVICES INC,
`Petitioner,
`
`v.
`
`WESTERNGECO LLC,
`
`Patent Owner.
`
`Cases1
`IPR2014-01475 (Patent 7,162,967 B2)
`IPR2014-01476 (Patent 6,691,038 B2)
`IPR2014-01477 (Patent 7,080,607 B2)
`IPR2014-01478 (Patent 7,293,520 B2)
`
`
`
`
`
`
`
`
`
`
`
`Before SCOTT A. DANIELS, BEVERLY M. BUNTING, and BARBARA A.
`PARVIS, Administrative Patent Judges.
`
`BUNTING, Administrative Patent Judge.
`
`ORDER
`37 C.F.R. § 42.5
`
`
`1 This Order addresses issues that are the same in all four cases. Therefore, we
`exercise our discretion to issue one Decision to be filed in each case. The parties
`are not authorized to use this style heading for any subsequent papers.
`
`
`
`
`
`Trials@uspto.gov
` Paper 10 IPR2014-01476
`
`
`
`571-272-7822
`
` Paper 10 IPR2014-01477
`
`
`
`
`
`
`
`
`Paper 10 IPR2014-01478
`
`
`
`
`
`
`
` Date: November 26, 2014
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PETROLEUM GEO-SERVICES INC,
`Petitioner,
`
`v.
`
`WESTERNGECO LLC,
`
`Patent Owner.
`
`Cases1
`IPR2014-01475 (Patent 7,162,967 B2)
`IPR2014-01476 (Patent 6,691,038 B2)
`IPR2014-01477 (Patent 7,080,607 B2)
`IPR2014-01478 (Patent 7,293,520 B2)
`
`
`
`
`
`
`
`
`
`
`
`Before SCOTT A. DANIELS, BEVERLY M. BUNTING, and BARBARA A.
`PARVIS, Administrative Patent Judges.
`
`BUNTING, Administrative Patent Judge.
`
`ORDER
`37 C.F.R. § 42.5
`
`
`1 This Order addresses issues that are the same in all four cases. Therefore, we
`exercise our discretion to issue one Decision to be filed in each case. The parties
`are not authorized to use this style heading for any subsequent papers.
`
`
`
`IPR2014-01475 (Patent 7,162,967 B2)
`IPR2014-01476 (Patent 6,691,038 B2)
`IPR2014-01477 (Patent 7,080,607 B2)
`IPR2014-01478 (Patent 7,293,520 B2)
`
`
`
`
`A conference call in IPR2014-01475, IPR2014-01476, IPR2014-01477 and
`IPR2014-01478 (“Present Proceedings”) was held on November 13, 2014 among
`respective counsel for Petroleum Geo-Services, Inc. (“Petitioner”), Westerngeco
`LLC. (“Patent Owner”) and Administrative Patent Judges Beverly Bunting, Scott
`Daniels, and Barbara Parvis. The purpose of the call was to discuss Patent
`Owner’s request for authorization to file a motion for additional discovery.
`During the conference call, Patent Owner asserted that additional discovery
`is necessary concerning whether an unnamed company, ION, is controlling
`Petitioner and the Present Proceedings, such that ION should have been named a
`real party-in-interest. Ex. 2001, 7. Specifically, Patent Owner requested a
`response to three interrogatories (“Present Interrogatories”) pertaining to
`identification of “the client here that’s between these petitions” (Id. at 8) and the
`legal relationship between the entities (Id. at 9). In support thereof, Patent Owner
`pointed broadly to evidence uncovered in related IPR2014-00678, IPR2014-00687,
`IPR2014-00688, and IPR2014-00689 (“Related Proceedings”) of communication
`between ION and some of the named petitioners (Id. at 8); communication
`generally on prior art (Id. at 8–9); and that these companies worked closely
`together in developing the allegedly infringing product (Id.). Further, Patent
`Owner pointed out that ION has been embroiled in litigation concerning the
`patents at issue in the Present Proceedings for several years, and is now barred
`under 35 U.S.C. § 315(b) from inter partes review. Id. at 7.
`
`2
`
`
`
`IPR2014-01475 (Patent 7,162,967 B2)
`IPR2014-01476 (Patent 6,691,038 B2)
`IPR2014-01477 (Patent 7,080,607 B2)
`IPR2014-01478 (Patent 7,293,520 B2)
`
`Petitioner countered that they responded to a set of five interrogatories
`(“Earlier Interrogatories”) directed to the question of real party-in-interest in the
`Related Proceedings, which challenge the same patents as in the Present
`Proceedings and involve the same parties. According to Patent Owner, Petitioner’s
`responses to the Earlier Interrogatories were limited specifically to the Related
`Proceedings, and not to the patents themselves. Id. at 7. Asserting that Patent
`Owner’s characterization of ION’s participation in the Present Proceedings is
`“speculative”, Petitioner nonetheless expressed a willingness to update their
`answers to the Earlier Interrogatories “to reflect what happened, if anything,
`between ION and Petitioner in relation to these petitions.” Id. at 12.
`Based on Petitioner’s offer, we encouraged Petitioner, to the extent possible,
`to respond to the Present Interrogatories by November 20, 2014, after which we
`would issue a decision concerning Patent Owner’s request for authorization to file
`a motion for additional discovery. As indicated in an email from Patent Owner’s
`counsel to the Panel dated November 24, 2014, Petitioner did provide a response to
`the Present Interrogatories.
` There are three types of discovery in an AIA trial, routine discovery,
`mandatory initial disclosures, and additional discovery.2 Additional discovery is
`
`
`2 See Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48761 (Aug. 14,
`2012). See also 37 C.F.R. § 42.51(b)(1)(iii), “Unless previously served, a party
`must serve relevant information that is inconsistent with a position advanced by the
`party during the proceeding concurrent with the filing of the documents or things
`that contains the inconsistency.”
`
`3
`
`
`
`IPR2014-01475 (Patent 7,162,967 B2)
`IPR2014-01476 (Patent 6,691,038 B2)
`IPR2014-01477 (Patent 7,080,607 B2)
`IPR2014-01478 (Patent 7,293,520 B2)
`
`permitted in an inter partes review only in the interests of justice. There must exist
`more than a “mere possibility” or “mere allegation that something useful [to the
`proceeding] will be found.” Garmin Int’l Inc. v. Cuozzo Speed Techs LLC,
`IPR2012-0001, Paper 20 (February 14, 2013). The party seeking discovery must
`come forward with some threshold amount of factual evidence or reasoning
`beyond speculation to support its request. Id., Paper 26.
`Patent Owner’s request amounts to no more than a “mere allegation that
`something useful will be found.” See Garmin, Paper 20, Factor 1. For example,
`Patent Owner questioned whether ION is a real party-in-interest based on
`unidentified prior art allegedly provided by ION to Petitioner. Ex. 2001, 12–13.
`Patent Owner proffered no direct evidence of this unidentified prior art in the
`Present Proceedings. Moreover, Patent Owner has produced no factual evidence or
`support, beyond speculation, that ION is controlling the Present Proceedings and
`thus is a real party-in-interest. See Office Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,759 (Aug. 14, 2013). Based on the evidence presently of record in the
`Present Proceedings, we are not persuaded at this time that the reference to
`communications regarding prior art, indicates control, or the ability to control, by
`ION. The suspicion of Patent Owner’s counsel, without more, is not enough to
`persuade us that something useful will result from authorizing the proposed
`motion.
`In the absence of showing adequate foundation for discovery that is
`sufficiently narrowly tailored, the request for authorization is denied at this time.
`In consideration of the foregoing, it is hereby:
`
`4
`
`
`
`IPR2014-01475 (Patent 7,162,967 B2)
`IPR2014-01476 (Patent 6,691,038 B2)
`IPR2014-01477 (Patent 7,080,607 B2)
`IPR2014-01478 (Patent 7,293,520 B2)
`
`ORDERED that Patent Owner’s request for authorization to file a motion for
`additional discovery under 37 C.F.R. 42.51(b)(2) is denied.
`
`5
`
`
`
`IPR2014-01475 (Patent 7,162,967 B2)
`IPR2014-01476 (Patent 6,691,038 B2)
`IPR2014-01477 (Patent 7,080,607 B2)
`IPR2014-01478 (Patent 7,293,520 B2)
`
`For PETITIONER:
`
`David I. Berl
`Christopher Suarez
`Williams & Connolly, LLP
`dberl@wc.com
`csuarez@wc.com
`
`For PATENT OWNER:
`
`
`
`
`
`Scott A. McKeown
`Christopher A. Bullard
`
`Michael Kiklis
`
`OBLON, SPIVAK, McCLELLAND,
`
`MAIER & NEUSTADT, L.L.P.
`
`CPdocketMcKeown@oblon.com
`
`CPdocketBullard@oblon.com
`
` CPDocketKiklis@oblon.com
`
`6
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