`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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`ION GEOPHYSICAL CORPORATION AND ION INTERNATIONAL S.A.R.L.,
`Petitioner
`
`v.
`
`WESTERNGECO LLC,
`Patent Owner
`
`____________________________________
`
`U.S. Patent No. 7,293,520
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`(Trial No. IPR2015-00565)
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`____________________________________
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`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c) AND
`37 C.F.R. § 42.122(b)
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`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-
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`Attorney Docket No. 37136-0004IP1
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`IPR of U.S. Patent No. 7,293,520
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`TABLE OF CONTENTS
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`I. STATEMENT OF RELIEF REQUESTED .................................................... 2
`II. BACKGROUND AND RELATED PROCEEDINGS ................................ 3
`III. THE BOARD HAS DISCRETION TO JOIN THE INSTANT IPR
`WITH THE FIRST PGS IPR ................................................................................. 4
`IV. THE BOARD SHOULD EXERCISE ITS DISCRETION BY
`GRANTING JOINDER UNDER THE PRESENT CIRCUMSTANCES .......... 6
`A. The grounds of unpatentability raised in ION’s Petition are identical to
`that in the First PGS IPR and ION relies on no new evidence in support of
`its Petition .............................................................................................................. 6
`B. Joinder will not affect timely completion of the First PGS IPR ................ 7
`C. Briefing and discovery are not complicated by joinder .............................. 8
`D. Joinder is appropriate .................................................................................. 10
`V. CONCLUSION ................................................................................................ 12
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`1
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`I.
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`Attorney Docket No. 37136-0004IP1
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`IPR of U.S. Patent No. 7,293,520
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`STATEMENT OF RELIEF REQUESTED
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`ION Geophysical Corporation and ION International S.a.r.l. (collectively,
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`“ION” or “Petitioners”) submit concurrently herewith a Petition for inter partes
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`review of claims 1, 2, 6, 18, 19, and 23 of U.S. Patent No. 7,293,520 (“the ‘520
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`patent”), which has been designated as IPR2015-00565 (“Petition”). ION moves
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`for joinder, pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), with respect
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`to the pending inter partes review designated as IPR2014-00689 (“the first PGS
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`IPR”) and requested by Petroleum Geo-Services Inc. (“PGS”). In compliance with
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`the timing requirement of 37 C.F.R. § 42.122(b), the Petition and this motion for
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`joinder are being filed no later than one month after the institution date of
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`IPR2014-00689, which was December 15, 2014.
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`In accordance with the Board’s Representative Order identifying matters to
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`be addressed in a motion for joinder (IPR2013-00004, Paper No. 15)1, ION
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`1 A motion for joinder should: (1) set forth the reasons why joinder is
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`appropriate; (2) identify any new grounds of unpatentability asserted in the
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`petition; (3) explain what impact (if any) joinder would have on the trial
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`schedule for the existing review; and (4) address specifically how briefing
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`and discovery may be simplified. See Kyocera Corporation v. Softview LLC,
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`IPR2013-00004, Paper No. 15 at 4 (April 24, 2013).
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`2
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`Attorney Docket No. 37136-0004IP1
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`IPR of U.S. Patent No. 7,293,520
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`submits that: (1) the grounds of unpatentability and supporting evidence raised in
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`ION’s Petition are identical to those at issue in the first PGS IPR; (2) joinder would
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`not affect the timely completion of that proceeding; (3) ION is willing to accept
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`reasonable restrictions on briefing and discovery that will minimize the burden of
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`joinder on the Board and on the parties; and (4) joinder will ensure the
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`maintenance of ION’s ongoing interests in the Office’s review of the ‘520 patent
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`without prejudicing the existing parties.
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`Accordingly, ION respectfully asks the Board to grant ION joinder.
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`II. BACKGROUND AND RELATED PROCEEDINGS
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`WesternGeco has asserted claims of the ‘520 patent against various
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`defendants in numerous lawsuits.2 ION is the named defendant in Civ. Act. No. 4-
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`09-cv-01827 (S.D. Tex), filed Jun. 12, 2009 (“the ION litigation”). Notably,
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`WesternGeco’s complaint against ION alleging infringement of the ‘520 patent
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`2 The ’520 patent is or has been the subject of the following civil actions: (i) Civ.
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`Act. No. 4-09-cv-01827 (S.D. Tex.), filed Jun. 12, 2009; (ii) Civ. Act. No. 4-10-cv-
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`02120 (S.D. Tex.), filed Jun. 16, 2010; (iii) Civ. Act. No. 4-13-cv-02385 (S.D.
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`Tex.), filed Aug. 15, 2013; and (iv) Civ. Act. No. 4-13-cv-02725 (S.D. Tex.), filed
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`Sep. 16, 2013.
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`3
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`Attorney Docket No. 37136-0004IP1
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`IPR of U.S. Patent No. 7,293,520
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`was filed more than three years before the existence of inter partes review
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`proceedings. See Ex. 1064 (docket from ION Litigation) at pp. 1, 17.
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`The ’520 patent is the subject of two petitions for inter partes review filed
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`by PGS, including the First PGS IPR and a separate petition that has been
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`designated IPR2014-01478 (“the second PGS IPR”). The second PGS IPR has not
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`yet been instituted and ION is not currently seeking joinder to the second PGS IPR.
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`In the Petition accompanying the instant motion for joinder, ION requests
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`cancelation of claims 1, 2, 6, 18, 19, and 23 of the ‘520 patent, and proposes the
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`following grounds of rejection, which are the same as those proposed in the first
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`PGS IPR:
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`1) Claims 1 and 18 are anticipated under § 102(b) by Workman;
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`2) Claims 1, 2, 18, and 19 are obvious under § 103 based on
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`Workman;
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`3) Claims 1, 2, 18, and 19 are anticipated under § 102(b) by Hedberg;
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`4) Claims 1, 2, 18, and 19 are obvious under § 103 based on Hedberg;
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`5) Claims 1, 6, 18, and 23 are obvious under § 103 based on the ’636 PCT
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`in view of the ’153 PCT.
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`6) Claims 1, 6, 18, and 23 are obvious under § 103 based on the ’636 PCT
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`in view of Dolengowski.
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`III. THE BOARD HAS DISCRETION TO JOIN THE INSTANT IPR
`WITH THE FIRST PGS IPR
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`4
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`Attorney Docket No. 37136-0004IP1
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`IPR of U.S. Patent No. 7,293,520
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`The Board, acting on behalf of the Director, has the discretion to grant
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`joinder to an inter partes review to an entity that properly files, no later than one
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`month after the institution of the inter partes review, a petition for a like
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`proceeding. See 35 U.S.C. § 315(c) (“the Director, in his or her discretion, may
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`join as a party to [an instituted] inter partes review any person who properly files a
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`petition under section 311”); 37 C.F.R. § 42.122(b) (“Any request for joinder must
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`be filed, as a motion under § 42.22, no later than one month after the institution
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`date of any inter partes review for which joinder is requested”).
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`Because the instant motion for joinder is being filed no later than one month
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`after the institution date of the First PGS IPR, it is timely under 35 U.S.C. § 315
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`and 37 C.F.R. § 42.122(b). Moreover, because ION has paid the fee for the
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`accompanying Petition that is prescribed by the Director and has requested
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`cancelation of claims of the ‘520 patent only on grounds that can be raised under
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`35 U.S.C. §§ 102 and 103, the Petition has been properly filed. See 35 U.S.C. §
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`311 (“The Director shall establish . . . fees to be paid by the person requesting the
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`review . . . A petitioner . . . may request to cancel as unpatentable 1 or more claims
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`of a patent only on a ground that could be raised under section 102 or 103”).
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`Though ION does not acquiesce to the existence of any procedural bars to
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`the filing of the Petition, the second sentence of 35 U.S.C. § 315(b) expressly
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`“obviate[s] the time bar” of the first sentence of § 315(b) where a request for
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`5
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`Attorney Docket No. 37136-0004IP1
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`IPR of U.S. Patent No. 7,293,520
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`joinder is concurrently filed with the petition pursuant to § 315(c), as is the case
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`here. See Apple Inc. v. VirnetX, Inc., IPR2013-00349, Paper 14 at 4 (PTAB, Dec.
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`13, 2013); see also Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109, Paper 15
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`at 3-4 (PTAB, Feb. 25, 2013).3 Thus, were any time bar under § 315(b) to be
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`found to exist with regard to ION’s right to request an IPR of the ‘520 patent (a
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`finding to which ION does not acquiesce), such a time bar would not affect this
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`request for joinder. Accordingly, under the applicable statutes and regulations, the
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`Board has discretion to grant ION joinder to the First PGS IPR.
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`IV. THE BOARD SHOULD EXERCISE ITS DISCRETION BY
`GRANTING JOINDER UNDER THE PRESENT
`CIRCUMSTANCES
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`Each of the four factors identified in the Board’s representative order on
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`joinder favor joinder under the present circumstances. These factors are
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`individually addressed under separate headings below.4
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`A. The grounds of unpatentability raised in ION’s Petition are
`identical to that in the First PGS IPR and ION relies on no new
`evidence in support of its Petition
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`3 ION was never served nor did it waive service in the ION litigation.
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`4 See FN1 of the instant motion, supra, listing the four factors detailed in the
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`Board’s representative order on joinder, Kyocera Corporation v. Softview LLC,
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`IPR2013-00004, Paper No. 15 at 4 (April 24, 2013).
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`6
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`Attorney Docket No. 37136-0004IP1
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`IPR of U.S. Patent No. 7,293,520
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`In the Petition accompanying the instant motion for joinder, ION requests
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`cancelation of claims 1, 2, 6, 18, 19, and 23 of the ‘520 patent on the same grounds
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`that are proposed by PGS in the First PGS IPR.5 Indeed, aside from the procedural
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`sections of the Petition, for example that identify ION and its standing, the Petition
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`and accompanying evidence are identical. Accordingly, joinder to the pending
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`First PGS IPR would therefore not impact that proceeding’s substantive
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`complexity.
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`B. Joinder will not affect timely completion of the First PGS IPR
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`Because the instant motion for joinder is being filed within one month of the
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`institution of the First PGS IPR and presents identical issues, the Board will have
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`no need to modify the existing schedule of the First PGS IPR. For example,
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`because the Patent Owner already filed a Preliminary Response in the First PGS
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`IPR, the Patent Owner’s Preliminary Response period can be reasonably shortened
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`or eliminated with regard to ION’s petition, since the ION petition is nearly word-
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`for-word identical to the First PGS IPR petition, except for the procedural sections
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`of the Petition, for example that identify ION and its standing, and ION relies on
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`5 Compare the six grounds of rejection proposed by ION, listed above at page 4,
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`with the grounds of rejection requested by PGS in Petroleum Geo-Services Inc. v.
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`WesternGeco LLC (IPR2014-00689), Paper 3, pp. 27-28.
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`7
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`Attorney Docket No. 37136-0004IP1
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`IPR of U.S. Patent No. 7,293,520
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`no new evidence. Similarly, ION is willing to accept reasonable reductions in the
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`time periods applicable to its filings, if the Board finds it necessary to grant
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`WesternGeco three months for its preliminary response, despite WesternGeco’s
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`full opportunity to raise issues in the PGS case. Moreover, to the extent needed or
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`desired, the Board has the power, under 35 U.S.C. 316(a)(11) to adjust the one-
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`year deadline of the First PGS IPR in the case of joinder.
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`As such, any burdens of joinder on the Board and on the parties can be
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`minimized, if not altogether avoided, and joinder can be expected to have little or
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`no impact on the First PGS IPR’s timely completion. Cf. Sony Corporation of
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`America and Hewlett-Packard Co. v. Network-1 Security Solutions, Inc., IPR2013-
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`00495 , Paper No. 13 at 5 (September 13, 2013) (finding that the Board’s ability to
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`complete the trial in one year would not be impacted by joinder, because joinder
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`would raise no substantive issues that were not already before the Board).
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`C. Briefing and discovery are not complicated by joinder
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`The grounds of unpatentability for the ‘520 patent, and underlying rationale
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`and evidence, presented by ION are identical to those raised by PGS. As such,
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`ION envisions few, if any, differences in position between ION and PGS.
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`Moreover, were differences in position between ION and PGS to arise, those
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`differences would center around the same references and issues, and would
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`therefore be limited relative to a situation in which a joined party proposed wholly
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`8
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`Attorney Docket No. 37136-0004IP1
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`IPR of U.S. Patent No. 7,293,520
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`new rejections and art. Thus, ION predicts that little, if any, complexity will be
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`added to briefing and discovery if the Board grants ION joinder to the First PGS
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`IPR.
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`Moreover, ION respectfully submits that briefing and discovery can be
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`streamlined to minimize any impact to the schedule or to the volume of materials
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`to be submitted to the Board. Because ION’s Petition is relying upon no new
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`evidence as was presented in the First PGS IPR, there should be no need for
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`additional depositions or fact discovery. To this end, if the Board deems it
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`appropriate, ION is willing to entertain, for example, briefing and discovery
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`procedures similar to those ordered by the Board in IPR2013-00256, which
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`included consolidated filings. See Motorola Mobility LLC v. Softview LLC,
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`IPR2013-00256, Paper No. 10 at 9 (June 20, 2013).
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`As indicated, ION presents no new evidence in its accompanying petition.
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`Moreover, ION has no reason to believe it will be unable to access sealed
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`documents in IPR2014-00689, nor that it will be unable to rely upon those
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`documents in full harmony with the petitioner of that proceeding. Indeed, although
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`the Board granted-in-part PGS’s and WesternGeco’s joint motion to seal certain
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`exhibits in the First PGS IPR, ION is a party to litigation involving WesternGeco
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`and the ‘520 patent. See Petroleum Geo-Services Inc. v. WesternGeco LLC
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`(IPR2014-00689), Paper 31 (Order Granting in Part Motion to Seal), p. 4 (Dec. 15,
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`9
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`Attorney Docket No. 37136-0004IP1
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`IPR of U.S. Patent No. 7,293,520
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`2014); Ex. 1064 (docket from ION Litigation) at pp. 1, 17. Most of the exhibits
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`listed in the joint motion to seal (including all of PGS’s exhibits cited in the First
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`PGS IPR petition) were from ION’s own litigation. See Petroleum Geo-Services
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`Inc. v. WesternGeco LLC (IPR2014-00689), Paper 29 (Joint Motion to Seal), pp. 3-
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`7. Furthermore, as evident from minor redaction applied to the publically available
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`version of the Petition filed in IPR2014-00689 (i.e., only one sentence of text and a
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`portion of a citation within the 60 page Petition were redacted), the issues
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`implicated by the seal are few. Accordingly, even though ION is only submitting
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`the publically available documents from the First PGS IPR with the Petition
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`accompanying this motion, the seal granted in the First PGS IPR should ultimately
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`have little, if any, effect on ION’s ability to participate in a joined proceeding.
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`D. Joinder is appropriate
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`For at least the reasons set forth in the preceding sections, joinder is
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`appropriate, because allowing ION to join the First PGS IPR would not
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`substantively affect the complexity or timing of that proceeding. Moreover, absent
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`joinder, ION’s interests may not be acceptably maintained in the First PGS IPR.
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`As noted in Section II, supra, WesternGeco’s complaint against ION
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`alleging infringement of the ‘520 patent was filed more than three years before the
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`existence of inter partes review proceedings. Thus, absent joinder of ION’s
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`petition with PGS’s First IPR, there exists a possibility that 35 U.S.C. § 315(b)
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`10
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`Attorney Docket No. 37136-0004IP1
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`IPR of U.S. Patent No. 7,293,520
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`precludes ION from relying upon IPR as a cost-effective alternative to litigation
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`(though, as noted in Section III, supra, ION does not acquiesce to any such
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`procedural bars).
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`Moreover, though PGS is currently pursuing its challenge of the ‘520 patent
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`through IPR2014-00689, 35 U.S.C. § 317 affords PGS the opportunity to withdraw
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`from the proceeding through settlement with WesternGeco and permits the Board
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`to thereafter terminate the proceeding if “no petitioner remains in the inter partes
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`review.” See 35 U.S.C. § 317. Accordingly, joinder of ION to the First PGS IPR
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`would permit ION to maintain its ongoing interests in the Board’s review of the
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`‘520 patent in the case of such a settlement. Because allowing ION to join the
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`First PGS IPR would not substantively affect the complexity or timing of that
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`proceeding, as described previously, the maintenance of ION’s legitimate and
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`ongoing interests in the Board’s review of the ‘520 patent outweighs any effect
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`ION’s joinder might have on the First PGS IPR.
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`11
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`V. CONCLUSION
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`Attorney Docket No. 37136-0004IP1
`IPR of U.S. Patent No. 7,293,520
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`ION respectfully submits that, for at least the reasons presented above,
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`joinder of ION to the First PGS IPR is warranted. Accordingly, ION requests that
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`the Board grant ION joinder to the First PGS IPR.
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`Dated:
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`January 14, 2015
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`Respectfully submitted,
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`/W. Karl Renner/
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`W. Karl Renner, Reg. No. 41,265
`Fish & Richardson P.C.
`P.O. Box 1022
`Minneapolis, MN 55440-1022
`T: 202-626-6447
`F: 202-783-2331
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`Attorney Docket No. 37136-0004IP1
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`IPR of U.S. Patent No. 7,293,520
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
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`certifies that on January 14, 2015, a complete and entire copy of this Motion for
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`Joinder was provided by Federal Express, cost prepaid, to the Patent Owner by
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`serving the correspondence address of record as follows:
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`WesternGeco L.L.C.
`10001 Richmond Avenue
`IP Administration Center of Excellence
`Houston TX 77042
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`/Edward G. Faeth/
`Edward Faeth
`Fish & Richardson P.C.
`60 South Sixth Street,
`Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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