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`441906US
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`———————————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`———————————
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`PETROLEUM GEO-SERVICES INC.
`Petitioner
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`v.
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`WESTERNGECO LLC
`Patent Owner
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`———————————
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`Case IPR2014-01478
`U.S. Patent No. 7,293,520
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`———————————
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`PATENT OWNER PRELIMINARY RESPONSE
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`Pursuant to 37 C.F.R. § 42.107(a), Patent Owner, WesternGeco L.L.C.
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`(“WesternGeco” or “Patent Owner”), submits this Preliminary Response to the
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`Second Petition for Inter Partes Review (“Petition”) against claims 1-3, 5-20, and
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`22-34 of U.S. Patent No. 7,293,520 (the “’520 patent”) filed by Petitioner,
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`Petroleum Geo-Services, Inc. (“PGS” or “Petitioner”). Petitioner has also
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`challenged claims 1, 2, 6, 18, 19, and 23 of the ’520 patent in IPR2014-00689.
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`Case IPR2014-01478
`Patent Owner Preliminary Response
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`TABLE OF CONTENTS
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`I.
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`II.
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`The ’520 Patent Claims Precision Control of Steerable Seismic Arrays ........ 1
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`Petitioner Partnered With ION to Copy the ’520 Patent ................................. 5
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`III. The Petition Need Not Be Considered on the Merits ...................................... 6
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`A.
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`B.
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`C.
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`The Board Should Not Consider Previously Challenged Claims
`1, 2, 6, 18, 19, and 23. ........................................................................... 6
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`The Petition is Time-Barred under 35 U.S.C. § 315(b) ...................... 10
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`The Petition Fails to Name All Real-Parties In Interest ...................... 14
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`1.
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`2.
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`3.
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`PGSAI Is an Unnamed RPI ....................................................... 15
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`ION Is an Unnamed RPI ........................................................... 17
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`ION Is a Privy Regarding Validity of the ’520 Patent .............. 20
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`IV. Claim Construction ........................................................................................ 22
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`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`Streamer Positioning Device ............................................................... 22
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`Array of Streamers .............................................................................. 29
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`Feather Angle Mode ............................................................................ 30
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`Turn Control Mode .............................................................................. 31
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`Streamer Separation Mode .................................................................. 32
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`Attempting to Maximize Distance Between Adjacent Streamers ....... 37
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`V.
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`The Board Should Not Institute Inter Partes Review of the ’520
`Patent ............................................................................................................. 38
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`VI. Redundancy of Petitioner’s Grounds ............................................................. 39
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`VII. Petitioner’s Grounds For Instituting IPR Fail To Show A Reasonable
`Likelihood That The ’520 Patent is Anticipated Or Obvious ....................... 42
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`A. Ground A: Workman Does Not Render Obvious the Feather
`Angle Mode Limitations of Claims 3, 5, 20, or 22 ............................. 42
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`B.
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`C.
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`Ground B: The Combination of Workman and Bertheas Does
`Not Render Obvious Claims 1-3, 5, 18-20, or 22 of the ’520
`Patent ................................................................................................... 48
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`Ground C: Workman Does Not Anticipate or Render Obvious
`Claims 13-14 or Claims 30-31 of the ’520 Patent .............................. 50
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`D. Ground D: The Combination of Workman and Dolengowski
`Does Not Render Obvious Claims 15-17 or 32-34 ............................. 51
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`E.
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`F.
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`G.
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`Ground E: The Combination of Workman and the ’153 PCT
`Does Not Render Obvious Claims 6-12 or 23-29 ............................... 53
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`Ground F: The Combination of The ’636 PCT and The ’153
`PCT Does Not Render Obvious Claims 7-12 and 24-29 .................... 58
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`The Petition Is Legally Insufficient Because Petitioner Fails to
`Address the Secondary Indicia of Non-Obviousness .......................... 58
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`VIII. Conclusion ..................................................................................................... 60
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`Case IPR2014-01478
`Patent Owner Preliminary Response
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`I.
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`The ’520 Patent Claims Precision Control of Steerable Seismic Arrays
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`The ’520 patent, titled “Control System for Positioning of Marine Seismic
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`Streamers,” relates to the field of marine seismic surveying. Marine seismic
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`surveys use reflections of sound waves to analyze underwater natural resource
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`formations. Seismic streamers are cables up to many miles in length that are towed
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`behind survey vessels. An acoustic source, such as an air gun, is used to generate
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`an acoustic signal towards the ocean floor. Seismic sensors, such as hydrophones,
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`are spaced along the length of each streamer and are used to detect the reflected
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`acoustic signal. The resulting data can be used to map the subsurface geology for
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`natural resource exploration and management.
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`Historically, a single streamer was towed behind the ship for a few hundred
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`meters. This yielded a short cross-section or “2-D” image of the subsurface
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`geology. As the industry evolved, arrays of multiple side-by-side streamers have
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`been deployed, allowing the capture of more robust “3-D” maps—as Petitioner’s
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`art shows, some of these approaches date back to 1967. The complexity of these
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`streamer arrays led to several widely acknowledged, decades-old problems,
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`including the risk of tangling, a potentially catastrophic and dangerous failure.
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`(Ex. 1001, 4:7-10.) Movement of the streamers relative to each other during
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`surveys can lead to gaps in coverage, requiring repeated passes, or “in-fill,” over
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`the same section of water. And turning such long arrays in the water can take
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`significant time and effort, and likewise increases the risk of tangling. Despite a
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`well-known need for the ability to accurately steer these arrays, the complex nature
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`of the problem prevented a workable solution from being developed for many
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`years. It was not until 2000 that WesternGeco (Patent Owner) launched the
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`industry’s first steerable streamer system.
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`Early streamer positioning involved rudimentary devices such as deflectors
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`and tail buoys. (Ex. 1001, 3:43-45.) Deflectors were attached to the front end of
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`the streamer and used to horizontally spread the end of the streamer nearest the
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`seismic survey vessel. (Ex. 1001, 3:45-47.) The tail buoy created drag on the end
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`of the streamer farthest from the seismic survey vessel. (Ex. 1001, 3:47-49.) The
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`tension created on the seismic streamer due to the deflector and tail buoy resulted
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`in a roughly linear shape of the streamer. (Ex. 1001, 3:49-52.) No steering was
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`provided for the miles of length along the streamer.
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`Although the need for control systems for streamer steering was known for
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`years, no one in the industry had succeeded in developing the capability of
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`streamer steering along the length of the streamer prior to the ’520 patent. This
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`was due to the challenges in constructing a functioning system capable of
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`controlling hundreds of positioning devices at once, as well as designing the
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`devices themselves.
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`Streamer positioning devices are generally spaced every 200 to 400 meters
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`along the length of a streamer. (Ex. 1001, 3:56-58.) For a modest streamer array,
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`this means hundreds, sometimes over a thousand, separate
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`streamer positioning devices are deployed on a given
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`array. Simultaneously controlling this multitude of
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`independent positioning devices is no mean feat. While it
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`is easy to set a target depth and little risk exists if that
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`depth is overshot, lateral steering requires considerations
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`of the dynamic movement of neighboring streamers and
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`obstructions along miles of cable deployed in the ever-
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`changing open-water environment of the deep seas.
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`Unless properly controlled, lateral steering can make
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`streamer arrays more dangerous than no steering at all,
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`and Petitioner’s art taught away from even trying.
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`To properly control the horizontal positions of streamer positioning devices,
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`the control system needs to know where they are. For example, the ’520 patent
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`discloses that the control system may operate in a “feather angle control mode” in
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`which the system “attempts to keep each streamer in a straight line offset from the
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`towing direction by a certain feather angle” (i.e., the angle the streamer is offset
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`from the towing direction). (Ex. 1001, 10:27-36.) This requires precise
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`knowledge of the position of the streamer positioning devices so that the desired
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`feather angle can be maintained. Further, the ’520 patent discloses that the control
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`system may operate in a “turn control mode” in which the control system “throws
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`out” the steamers “by generating a force in the opposite direction of the turn” and,
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`in the last part of the turn, the streamer positioning devices are “directed to go to
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`the position defined by the feather angle control mode.” (Ex. 1001, 10:37-46.)
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`This allows the towing vessel to achieve tighter turns when conducting a line
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`change but, again, requires precise knowledge of the position of the streamer
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`positioning devices.
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`Such precision could not be achieved using prior art techniques and
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`controllers. As explained in the Background of the ’520 patent, prior art seismic
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`array controllers typically allow for the determinations of horizontal positions of
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`the streamers only every 5 to 10 seconds. And because complex data processing is
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`often involved, there may be an additional 5-second delay between the taking of
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`measurements and the determination of actual streamer positions. That means the
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`information provided to the control system is not where the streamer positioning
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`device currently is, but where the streamer positioning device was at some time in
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`the past. Trying to steer such streamer arrays with prior art control systems is
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`therefore even more difficult as, to a certain extent, they have to be steered blind.
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`The ’520 patent tackled these control challenges to launch the world’s first
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`precision control system for steerable streamer arrays.
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`II.
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`Petitioner Partnered With ION to Copy the ’520 Patent
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` And the development documents echo the ’520 patent’s claimed
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`control modes such as “even separation mode” and “line change [i.e., turn] mode.”
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`(Ex. 2005, ION15987-93.)
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`III. The Petition Need Not Be Considered on the Merits
`A. The Board Should Not Consider Previously Challenged Claims 1,
`2, 6, 18, 19, and 23.
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`Petitioner previously challenged claims 1, 2, 6, 18, 19, and 23 of the ’520
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`patent in IPR2014-00689. As summarized in the table below, Petitioner presents
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`numerous ground in this second IPR against the ’520 patent that are redundant to
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`the grounds set forth in first IPR:
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`Claims
`1, 18
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`IPR2014-00689
`Anticipated by Workman;
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`IPR2014-01478
`Obvious over Workman and
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`obvious over Workman;
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`Bertheas1
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`anticipated by Hedberg; obvious
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`1 Bertheas is also cited on the face of the ’520 patent, confirming that the PTO
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`has already considered this reference. It is clear that Bertheas was available to
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`Petitioner as of the first IPR, and Petitioner has provided no explanation for its
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`failure to include it in the first IPR.
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`over Hedberg; obvious over ’636
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`PCT and ’153 PCT; obvious over
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`’636 PCT and Dolengowski
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`2
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`Obvious over Workman;
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`Obvious over Workman and
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`anticipated by Hedberg; obvious
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`Bertheas
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`over Hedberg
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`6, 23
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`Obvious over ’636 PCT and ‘153
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`Obvious over Workman and ’153
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`PCT; obvious over ‘636 PCT and
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`PCT
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`Dolengowski
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`19
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`Obvious over Workman;
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`Obvious over Workman and
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`anticipated by Hedberg; obvious
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`Bertheas
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`over Hedberg
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`Petitioner also relies on many of the same arguments regarding these references in
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`this second IPR as relied on in IPR2014-00689, such as Workman’s alleged
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`teaching of a streamer separation mode and a feather angle mode; Dolengowski’s
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`alleged teachings relevant to the depth separation aspects of the challenged claims;
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`the ’153 PCT’s alleged teaching of a turn control mode; and the ’636 PCT’s
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`alleged teaching of a control system as recited in the claims of the ’520 patent.
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`Petitioner has provided no rationale as to why its new grounds against these
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`claims are non-redundant to the numerous other grounds presented in IPR2014-
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`00689, which were based upon the same or substantially the same prior art and
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`arguments as applied in the present petition. Conopco, Inc d/b/a Unilever v. The
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`Procter & Gamble Co., IPR2014-00628, Paper No. 21 at 6 (Oct. 20, 2014) (“We
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`have compared the prior art and arguments raised in the instant Petition to those
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`raised in the 510 Petition. Based on the information presented, we are persuaded
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`that the instant Petition raises, at minimum, ‘substantially the same . . . arguments’
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`that ‘previously were presented to the Office’ in the 510 Petition.”); Conopco, Inc
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`d/b/a Unilever v. The Procter & Gamble Co., IPR2014-00507, Paper No. 17 at 6
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`(Jul. 7, 2014); SAS Inst., Inc. v. Complement Soft, LLC, IPR2014-00581, Paper No.
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`15, at 4 (Dec. 30, 2014), reh’g denied, Paper No. 17 (Feb. 25, 2014).
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`Moreover, allowing Petitioner to file serial petitions on the same patent,
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`using substantially the same prior art and arguments is unfair to the Patent Owner
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`by forcing it to incur unnecessary costs and continually defend its patent against
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`repetitious attacks. Consideration of these overlapping and redundant grounds
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`would unnecessarily consume time and resources for both the PTAB and Patent
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`Owner. Because Petitioner could have raised these new grounds in IPR2014-
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`00689 and did not, review should not be instituted against claims 1, 2, 6, 18, 19,
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`and 23. See 35 U.S.C. 325(d) (“In determining whether to institute or order a
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`proceeding under this chapter, chapter 30, or chapter 31, the Director may take into
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`account whether, and reject the petition or request because, the same or
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`substantially the same prior art or arguments previously were presented to the
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`Office.”); see also SAS, IPR2014-00581 at *12 (“The practice of a particular
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`petitioner filing serial petitions challenging claims already involved in an instituted
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`proceeding and asserting arguments and prior art previously considered by the
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`Board is contrary to the goals set forth in our statutory mandate and implementing
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`rules.”).
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`Claims 6 and 23. In the Board’s decision in the first IPR against the ’520
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`patent, the Board correctly found that neither the ’153 PCT nor Dolengowski—in
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`view of the level of ordinary skill in the art—disclosed or suggested “throwing
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`out” the streamers when making a turn, as recited by claims 6 and 23. (IPR2014-
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`00689, Paper 32 at 38-42.) In the present Petition, Petitioner challenges claims 6-
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`12 and 23-29 in view of Workman and the ’153 PCT (Ground E), and claims 7-12
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`and 24-29 in view of the ’636 PCT and the ’153 PCT (Ground F). Each claim,
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`whether directly or through dependency to claim 6 or 23, recites “throwing out”
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`the streamers when making a turn. And, in arguing that this limitation is disclosed
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`by the applied prior art, Petitioner again relies on the ’153 PCT and the same
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`supporting declaration evidence. (See, e.g., Petition at 46-48 and 56.) The Board
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`should deny institution of Grounds E and F under 35 U.S.C. § 325(d) as based on
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`the same or substantially the same prior art and arguments previously rejected by
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`the Board in IPR2014-00689. See, e.g., Zimmer Holdings Inc. v. Bonutti Skeletal
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`Innovations LLC, IPR2014-01080, Paper 17 at 5-6 (October 31, 2014).
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`The Petition is Time-Barred under 35 U.S.C. § 315(b)
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`B.
`Patent Owner filed a complaint for patent infringement against ION on June
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`12, 2009 alleging, inter alia, that ION infringed the ’520 patent by virtue of
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`making, using or selling DigiFIN. (Ex. 2007.) Patent owner then filed a complaint
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`against Fugro for its related infringement as an ION DigiFIN customer, which was
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`consolidated with ION. (Ex. 2037.) On December 8, 2009, Patent Owner noticed
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`Petitioner of its related infringement liability for using DigiFIN by providing it
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`with a copy of the complaint. (Ex. 2008.) When Petitioner did not cooperate with
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`providing litigation discovery, Patent Owner subpoenaed Petitioner through service
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`of process on January 22, 2010 and identified “DigiFIN” as the accused product in
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`the litigation. (Ex. 2009 [service copy with affidavit].) And in a subsequent
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`motion to compel discovery, Patent Owner identified Petitioner as one of the ION
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`“customers who assemble [DigiFINs] into infringing systems either within the
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`United States or abroad.” (Ex. 2010, ION D.I. 81.)
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`On February 8, 2010, after being served with process, Petitioner appeared in
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`the ION litigation through its outside counsel, Heim, Payne & Chorush. (Ex.
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`2011.) On March 14, 2011, Patent Owner filed its Amended Complaint alleging
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`DigiFIN’s infringement of the ’520 patent. (Ex. 2012.) Petitioner was served with
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`this Amended Complaint that same day via the court’s electronic filing system
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`(“ECF”). See Ex 2013; see also Ex. 2033, S.D. Tex. L.R. 5-1 (“The notice of
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`electronic filing that is automatically generated by the Court’s electronic filing
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`system constitutes service of the document on those registered as filing users of the
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`system.”).
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`“An inter partes review may not be instituted if the petition requesting the
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`proceeding is filed more than 1 year after the date on which the petitioner, real
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`party in interest, or privy of the petitioner is served with a complaint alleging
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`infringement of the patent.” 35 U.S.C. § 315(b). (emphasis added). “The word
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`‘served’ has a definition that include ‘to make legal delivery of (a notice or
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`process)’ or ‘to present (a person) with a notice or process as required by law.”
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`Motorola Mobility LLC v. Arnouse, IPR2013-00010 (MT), Paper #20 at 4, (quoting
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`Black’s Law Dictionary, 1491, Ninth Edition (2009)). “Served” as used in 35
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`U.S.C. § 315 means this legally operative act, rather than the colloquial “‘to
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`receive,’ ‘to deliver,’ or ‘to present.’” Id. at 3; see also TRW Automotive US LLC v.
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`Magna Elecs., Inc., IPR2014-00251, Paper # 13 (finding that email did not
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`comprise legal “service”). Interpreting “served” in accordance with Black’s Law
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`Dictionary is in accord with the legislative purpose of § 315(b), “to provide
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`defendants sufficient time to fully analyze the patent claim, but not to create an
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`open-ended process.” Motorola, Paper #20 at 4 (citing legislative history). Patent
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`Owner’s service of the Amended Complaint on Petitioner was legal “service,” and
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`therefore satisfies § 315(b).2
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`2 In dicta, Motorola implies that service of a summons is also required. This
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`requirement is contrary to the plain language of § 315(b). Motorola’s
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`discussion was based in part on Fed. R. Civ. Pro. 4, but that Rule is titled
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`“Summons” and concerns only when service of a summons is effective, not
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`service of a complaint. Motorola also relied on Murphy Bros. v. Michetti Pipe
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`Stringing, 526 U.S. 344 (1999). Id. at 3. But Murphy addressed removal under
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`28 U.S.C. § 1446, which concerned receipt “through service or otherwise, of a
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`copy of the initial pleading,” and the Court was concerned that the “or
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`otherwise” provision was too broad to trigger legal consequence in the absence
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`of due process notification. 526 U.S. at 347, 350. In ION, in contrast,
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`Petitioner was served with process and formally appeared. See Murphy at 350
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`(“Accordingly, one becomes a party officially, and is required to take action in
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`It was unusual for Petitioner to be served with process, appear in litigation,
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`and be served with an infringement complaint, yet not be a named defendant in the
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`ION litigation. But the plain language of § 315(b) does not require that Petitioner
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`be a defendant. Applying the legally-operative definition of “served,” § 315(b) is
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`limited, as here, to situations where the Petitioner has entered an appearance in the
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`litigation and is actively involved, i.e., because they are interested in the
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`infringement. Should the policy behind § 315(b) be considered here, it favors this
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`plain language reading—once parties identified as liable for infringement are
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`served pursuant to formal legal process, they should promptly seek IPR rather than
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`lay-in-wait and engender duplicative proceedings years down the road.
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`The September 11, 2014 Petition filed by PGS is precluded by the plain
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`language of 35 U.S.C. § 315(b)—it is years overdue. Petitioner was not only
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`“served with a complaint alleging infringement of the [’520] patent” on March 14,
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`2011, but its specific liability for infringement from DigiFIN was outlined therein.
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`Therefore, no review may be instituted based on this Petition.
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`that capacity, only upon service of a summons or other authority-asserting
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`measure.”). In other words, PGS was “brought under a court’s authority, by
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`formal process” before being served with the amended complaint, satisfying
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`any due process concerns. Id. at 347.
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`C. The Petition Fails to Name All Real-Parties In Interest
`Disputes regarding identifying real-parties in interest (“RPIs”) have already
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`permeated the first IPR against the ’520 patent (IPR2014-00689). Petitioner
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`initially identified no RPIs when filing its petition in IPR2014-00689. After
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`discovery proceedings before the Board, Petitioner amended its disclosures and
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`added PGSAS and Petroleum Geo-Services ASA as RPIs, receiving a new filing
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`date and resetting the schedule for that proceeding. Patent Owner then requested,
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`and received, additional RPI discovery from Petitioner in the first IPR proceeding.
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`Based on the record adduced to date, two defects still taint Petitioner’s disclosures
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`and preclude consideration of the Petition under 35 U.S.C. § 312(a)(2).
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`Patent Owner notes that the Board in IPR2014-00689 considered the
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`arguments below and, based upon the current record, declined to deny the Petition.
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`However, Patent Owner maintains these arguments for further development during
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`trial as they relate to statutory requirements under 35 U.S.C. §§ 312 and 315,
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`Patent Owner has requested, but has been denied, discovery in this regard in this
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`proceeding, and the requested information is in the sole possession of Petitioner.
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`Moreover, there is no bright line test for determining whether an unnamed part is a
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`RPI or privy of a petitioner, and the two determinations are not coextensive with
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`one another. Under the flexible, multi-factored approach described by the Practice
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`Guide, a party need not have complete funding and control to be considered an RPI
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`or privy. See 77 Fed. Reg. 48,759-60 (August 14, 2012).
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`1.
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`PGSAI Is an Unnamed RPI
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` ION contacted Mr. Hart in 2011
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`to discuss the ION litigation, the ’520 patent, and using an inventor deposition to
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`try to invalidate the patent. (Ex. 2015, PGSI-T2725-WG-46640.) Mr. Hart
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`attended the 2012 ION trial, discussed the invalidity of the ’520 patent with ION’s
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`trial counsel, and obtained prior art and invalidity contentions for Petitioner’s trial
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`counsel. (Ex. 2016.) Mr. Hart retained trial counsel on behalf of Petitioner and
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`PGSAS. (Ex. 2017.) Petitioner recently identified various emails, calls and
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`meetings regarding the validity of the ’520 patent in which Mr. Hart acted as “PGS
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`[i.e., Petitioner] in-house counsel” or otherwise “on behalf of ‘PGS/Irell’ (Irell &
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`Manella LLP is PGS’ trial counsel).” (Ex. 2018.) In short, Mr. Hart, i.e., PGSAI,
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`controlled the review, dissemination and discussion of the prior art that was
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`presented in the Petition.
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`3 In other words, unnamed PGSAI controlled Petitioner’s DigiFIN
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`activities and those of the named RPIs. (Petitioner has so far refused to reveal
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`whether PGSAI likewise controlled the retention or invoices for Petitioner’s
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`counsel in this proceeding. (Ex. 2018, Interrogatory Responses at 11-12).)
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`Because PGSAI’s counsel is controlling PGS’ interests in the validity and
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`infringement of the ’520 patent, PGSAI is an RPI. Because Petitioner has failed to
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`identify PGSAI as such, the Petition is deficient and cannot be considered. 35
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`U.S.C. § 312(a)(2).
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`Patent Owner invited Petitioner to amend its disclosures to identify PGSAI
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`as an RPI and to “discuss a modest adjustment of the existing opposition schedule
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`3 In the pending litigation between Petitioner and Patent Owner, Petitioner
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`similarly transferred PGSAI’s patents to Petitioner on the eve of its
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`counterclaims so that Petitioner could assert PGSAI’s infringement claims in
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`Petitioner’s name. (Ex. 2024.) For whatever reasons, Petitioner has expended
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`considerable effort attempting to hide PGSAI from these various proceedings.
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`based on the new filing date.” (Ex. 2025.) Petitioner refused.4 Accordingly, the
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`Petition must be dismissed.
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`2.
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`ION Is an Unnamed RPI
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`Petitioner and ION have coordinated efforts across multiple forums to
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`promote their joint interests regarding the ’520 patent. Shortly after infringement
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`allegations were raised against the two entities, ION reached out to Petitioner to
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`coordinate on its attempt to invalidate the ’520 patent:
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`4 Petitioner has produced a vague “Human Resources” memorandum stating that
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`PGSAI’s employees were “transferred” to Petitioner on January 1, 2013. (Ex.
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`2026.) This “memo” is irrelevant to PGSAI’s role prior to that date, and there
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`is no indication that Mr. Hart stopped representing PGSAI after that date. Mr.
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`Hart never notified ION of any change to their express agreement that he
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`represented only PGSAI in dealings concerning the validity of the ’520 patent.
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`And there is no indication that Mr. Hart believed he was representing anyone
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`other than PGSAI. PGSAI still exists as an independent corporation today, and
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`if “all employees” were transferred out of it last year then other PGS
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`employees—like Mr. Hart—must still be representing PGSAI’s interest and
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`acting on its behalf.
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`Speaking plainly, several PGS employees previously worked for
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`WesternGeco . . . One of these gentlemen, Mr. Hillesund, is a named
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`inventor of the WesternGeco patents . . . ION intends to depose Mr.
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`Hillesund and others . . . ION would be very interested in discussing
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`mutually beneficial opportunities to improve our access to PGS
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`employees . . . It is our belief that such testimony will help, at least,
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`to invalidate the WesternGeco patents.
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`(Ex. 2015)
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`ION’s attempts to protect Petitioner’s rights to use DigiFIN comprised
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`multiple invalidity attacks at trial, including many arguments similar to those
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`raised in the Petition. Petitioner attended the trial at ION’s invitation, and raised
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`comments and questions regarding the same between their respective counsel
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`during those proceedings. (Ex. 2016.) During this period, Petitioner began
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`claiming a “common interest privilege” over its communications with ION
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`regarding “WG litigation” and “litigation interests.” (Ex. 2028.) Petitioner has
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`based this privilege assertion on “Western[Geco]’s litigiousness on the subject of
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`DigiFIN gives rise to a common legal interest regarding the patent infringement
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`assertions.” (Ex. 2029.) And Petitioner is currently arguing in the district court
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`litigation that ION’s trial arguments and damages now protect Petitioner from any
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`infringement liability. (Ex. 2030.)
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`ION’s invalidity arguments failed at trial, and ION filed a notice of appeal
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`and docketing statement indicating that it would appeal those issues. (Ex. 2031.)
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`Petitioner continued to meet with ION to discuss specific references and invalidity
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`theories, and potential arguments to raise in these proceedings. (Ex. 2018.)
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`Petitioner has refused to produce the majority of these communications through its
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`continued invocation of a common interest privilege. (Ex. 2030.) But now that
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`Petitioner has challenged the validity of the ’520 patent, ION has dropped that
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`issue from its pending appeal, apparently relying on potential collateral effects of
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`Petitioner’s current efforts under a lessened burden instead.5
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`This web of interlaced interests and unified legal efforts regarding the ’520
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`patent, infringement liability therefor and the validity thereof, renders ION and
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`5 Conversely, ION has filed an opposition to WesternGeco’s EPO counterpart to
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`the ’520 patent, whereas Petitioner has not, apparently piggy-backing on ION’s
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`efforts in that forum.
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`Petitioner real-parties-interest with respect to this Petition. Petitioner and ION
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`have coordinated their invalidity attacks against WesternGeco’s patents and are
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`each relying on the collateral effects of the other’s legal proceedings to protect
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`their own interests. Notably, Petitioner’s invocation of a common interest
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`privilege under Fifth Circuit law is limited to actual or “potential co-defendants.”
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`In re Santa Fe, 272 F.3d 705, 711 (5th Cir. 2001). This jibes with the PTAB
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`Practice Guide, which notes that to establish an RPI relationship, “it should be
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`enough that the nonparty has the actual measure of control or opportunity to
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`control that might reasonably be expected between two formal coparties.” PTAB
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`Trial Practice Guide at 48,759. ION’s involvement with the Petition is at least as
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`comprehensive as if ION and Petitioner were formal codefendants—and arguably
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`significantly more given ION’s ultimate responsibility for Petitioner’s
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`infringement liability and ION’s role as the source for references and arguments
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`for the Petition. ION is an unnamed RPI, and also was served with an
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`infringement complaint more than one year prior to the Petition. The Petition
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`therefore fails under both § 312(a)(2) and § 315(b), and need not be considered on
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`the merits.
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`ION Is a Privy Regarding Validity of the ’520 Patent
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`3.
`If not a real-party in interest, ION is at least in privity with Petitioner and
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`other real-parties in interest regarding the validity of the ’520 patent:
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`• ION and Petitioner share the same interests regarding the validity of the
`’520 patent. (Ex. 2016 (2011 email discussing “mutually beneficial
`opportunities . . . to invalidate the WesternGeco patents”)).
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`•
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`• ION and Petitioner invoked a common-interest privilege beginning in
`2012 regarding their discussions and cooperation regarding the ’520
`patent, the ION litigation and the Petition. (Ex. 2029.)
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`• Petitioner has relied on ION to represent Petitioner’s substantive interests
`in the ION litigation and appeal. (Ex. 203