Case: 13-1527 Document: 91-1 Page: 1 Filed: 01/26/2015
`
`Nos. 2013-1527, 2014-1121, -1526, -1528
`______________________________________
`
`United States Court of Appeals
`For The Federal Circuit
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`______________________________________
`
`WESTERNGECO L.L.C.,
`
`
`
`
`
`
`
`
`
`
`Plaintiff-Cross-Appellant,
`
`
`v.
`
`ION GEOPHYSICAL CORPORATION,
`Defendant-Appellant.
`
`
`
`______________________________________
`
`
`
`Appeals from the United States District Court for the Southern District of
`Texas in case no. 09-cv-1827, Judge Keith P. Ellison.
`______________________________________
`
`APPELLANT’S OPPOSED MOTION TO STAY PENDING INTER
`PARTES REVIEW
`______________________________________
`
`David J. Healey
`Fish & Richardson P.C.
`One Houston Center
`1221 McKinney Street,
`Suite 2800
`Houston, TX 77010
`Tel: 713-654-5300
`
`
`
`Justin M. Barnes
`Fish & Richardson P.C.
`12390 El Camino Real
`San Diego, CA 92130
`Tel: 858-678-5070
`
`Frank Porcelli
`Fish & Richardson P.C.
`One Marina Park Drive
`Boston, MA 02210
`Tel: 617-542-5070
`
`
`
`
`Attorneys for Defendant-Appellant
`
`1
`
`ION 1069
`ION Geophysical v. WesternGeco
`IPR2015-00565
`
`

`

`Case: 13-1527 Document: 91-1 Page: 2 Filed: 01/26/2015
`
`Appellant ION Geophysical Corporation (“ION”) moves to stay this appeal
`
`and the conditional cross-appeal of Appellee and Cross-Appellant WesternGeco
`
`L.L.C. (“WG”) based on the Patent Trial and Appeal Board’s (“PTAB”) December
`
`15, 2014 decisions initiating inter partes review (“IPR”) in Case IPR2014-00687,
`
`Case IPR2014-00688, and Case IPR2014-00689. (Exs. 1-3, respectively). These
`
`initiation decisions granted Petroleum Geo-Services, Inc.’s (“PGS”) petitions for
`
`review of the same claims as in three of the four patents in suit: claims 1 and 15 of
`
`U.S. Patent No. 7,080,607 B2; claims 1 and 15 of U.S. Patent No. 7,162,967 B2;
`
`claims 1, 2, 6, 18, 19, and 23 of U.S. Patent No. 7,293,520 B2.1 These patents
`
`have been referred to throughout the litigation and briefing as the “Bittleston
`
`patents”, and are the overwhelming focus of this appeal.2
`
`
`1 PGS was separately sued by WG on the same patents in a later lawsuit in 2013.
`PGS is a separate company, it has been a customer of ION, but it has not been
`indemnified by nor is it indemnifying ION, nor has ION coordinated with PGS the
`defense of this lawsuit or PGS’s lawsuit or PGS’s IPRs, nor has ION paid in whole
`or in part for PGS’s defense or IPRs.
`2 Institution was denied as to the one asserted claim from the fourth patent in suit,
`which is not related to the Bittleston patents, claim 14 of U.S. Patent No. 6,691,038
`B2 (the “Zajac ‘038 Patent”). WG’s damages expert at trial only attributed about
`$300,000 in royalties and no lost profits to that claim (A003439-40; A013657), out
`of the $105.9 million ultimately awarded by the jury. Copies of the non-
`confidential pages are from the Appendix are attached for the Court’s convenience
`as Ex. 7; A013657 is confidential and for that document ION refers the Court to
`the filed confidential appendix (Dkt. 86).
`
` 1
`
`
`
`
`
`
`

`

`Case: 13-1527 Document: 91-1 Page: 3 Filed: 01/26/2015
`
`On January 14, 2015, ION filed motions to join each of the pending IPRs,
`
`together with its own petitions for IPR on the same claims. See Exs. 4, 5 and 6.3
`
`This Motion, however, is not contingent on whether the PTAB permits
`
`joinder so long as concurrent proceedings on the claims in suit of the Bittleston
`
`patents are ongoing in both forums.
`
`Oral argument is currently set in this appeal for March 5, 2015.
`
`This Motion is supported by the grounds and legal arguments below, the
`
`record of this case, the attached exhibits, and the attached declaration of David
`
`Healey verifying the attached exhibits.
`
`A ruling is respectfully requested prior to oral argument.
`
`GROUNDS FOR THE PRESENT MOTION
`
`If the claims in the initiated IPRs are found unpatentable (which occurs in
`
`nearly 80% of initiated IPRs), and are subsequently cancelled by the PTO, any
`
`cause of action based on them will be eliminated as a matter of law. Fresenius
`
`U.S.A. v. Baxter International, 721 F.3d 1330 (Fed. Cir. 2013). Cancellation of the
`
`Bittleston patents’ claims effectively resolves the case since only one unrelated
`
`
`3 Each motion is attached with an excerpt from the PTO’s public website showing
`its filing and that of the respective IPR on January 14, 2015. The IPRs are
`described in the motions, but not attached due to volume. ION’s petitions for IPRs
`and related filings in support are available on the PTO’s public website.
`
` 2
`
`
`
`
`
`
`

`

`Case: 13-1527 Document: 91-1 Page: 4 Filed: 01/26/2015
`
`patent—to which WG attributed minimal damages at trial—would remain in suit.
`
`See footnote 2, infra. Most of the appellate issues only relate to the Bittleston
`
`patents.
`
`Staying this appeal will streamline this case should the claims subject to the
`
`institution decisions be cancelled, will prevent waste of public resources, and will
`
`not prejudice WG. ION, on the other hand, will be prejudiced if a stay is not
`
`granted, since its rights will not be determined by orderly review of the merits of
`
`the issues on appeal and the patentability of the claims in the IPRs, but rather by
`
`which of two disconnected proceedings first reaches final conclusion. ION
`
`believes it will prevail in this appeal, but even so, it should not be put to any risk
`
`that it may have to pay on claims that never should have issued in the first place.4
`
`RELIEF SOUGHT
`
`ION respectfully asks this Court to stay the present appeal pending
`
`resolution of the initiated IPRs of the claims of the Bittleston patents in suit, Case
`
`IPR2014-00687, Case IPR2014-00688, and Case IPR2014-00689 (Exs. 1-3); and
`
`
`4 The amount of the judgment is now in excess of $123,000,000, of which less than
`one percent can be attributed to the Zajac ‘038 patent. ION’s 10-K for year end
`2013 filed on February 14, 2014 shows equity of $257,885,000 as of December 31,
`2013 and net revenue for 2013 of $549,167,000. See Exhibit 8, excerpt from
`ION’s10-K filed February 14, 2014.
`
` 3
`
`
`
`
`
`
`

`

`Case: 13-1527 Document: 91-1 Page: 5 Filed: 01/26/2015
`
`disposition of ION’s motions for joinder and its own IPRs on those same claims.
`
`(Exs. 4-6).
`
`I.
`
`Introduction
`
`LEGAL ARGUMENT
`
`This Court should use its discretion in managing its docket to stay this
`
`appeal. The IPR process was enacted to create an efficient, fair and effective
`
`forum to eliminate claims that should not have issued. This process should be used
`
`to preserve scarce judicial resources. Further, a stay prevents waste of public
`
`resources by simultaneous proceedings on the same claims, and protects ION and
`
`the public from risk of inconsistent consequences. WG cannot claim any
`
`significant prejudice from a stay.
`
`Despite the stage of this case, substantial work remains to be done. Some
`
`issues on appeal could result in remand for further proceedings in the trial court
`
`and potentially a second appeal. There is an issue on appeal based on controlling
`
`law of this Court now under review by the Supreme Court in Commil USA, LLC v.
`
`Cisco Sys., Inc., 720 F.3d 1361 (Fed. Cir. 2013). Despite the lack of any legal or
`
`factual foundation in this case to do so, WG filed a conditional cross-appeal to
`
`overrule Bard Peripheral Vascular, Inc. v. W.L. Gore & Assoc., Inc., 682 F.3d
`
`1005, 1007 (Fed. Cir. 2012) in light of Octane Fitness LLC v. ICON Health &
`
` 4
`
`
`
`
`
`
`

`

`Case: 13-1527 Document: 91-1 Page: 6 Filed: 01/26/2015
`
`Fitness, Inc., 134 S. Ct. 1749 (2014), see WG Response Brief at 84-86 (dkt. 68):
`
`but if this argument is entertained, it requires en banc review since Octane did not
`
`change the law of willfulness. A stay will streamline this litigation even at this
`
`stage.
`
`A stay of the appeal will not prejudice WG because ION has been enjoined
`
`from the activity WG contended infringed its asserted claims under 35 U.S.C. §
`
`271(f) (Ex. 9, May 7, 2014 Final Judgment), and ION has posted a bond on the
`
`money judgment. (Ex. 10, Bond). Further, so long as the district court’s judgment
`
`remains in effect and the claims remain extant, WG has the precedential and
`
`preclusive effect of that judgment to its benefit. Finally, should the PTO cancel the
`
`claims of the Bittleston patents now in instituted IPRs, ION unconditionally offers
`
`to resolve WG’s remaining cause of action on Claim 14 of the Zajac ‘038 patent.5
`
`
`5 If the PTO cancels the Bittleston claims on which IPRs were instituted on
`December 15, 2014, ION unconditionally offers to settle the sole remaining claim
`in suit (claim 14 of the Zajac ‘038 patent), for the reasonable royalty WG’s expert
`attributed to this one claim, as shown by the appendix pages cited in footnote 2,
`plus payment of a proportionate amount of that royalty for supplemental damages,
`pre-judgment interest on those amounts using the same formula adopted by the
`district court, together with the full costs awarded by the district court, for a total
`of $1,060,227.25. ION would pay post-judgment interest on this amount at the
`statutory rate from the date of the May 7, 2014 judgment. (This would be less than
`one percent of one percent of the current judgment). The final judgment’s
`injunction remains as issued.
`
` 5
`
`
`
`
`
`
`

`

`Case: 13-1527 Document: 91-1 Page: 7 Filed: 01/26/2015
`
`ION has not unduly delayed for any tactical advantage; rather it filed to join
`
`the IPRs at its first and only opportunity to do so, and brought this Motion
`
`promptly after its motions for joinder and IPRs. ION could not have filed an IPR
`
`until institution of PGS’s petitions since it was sued before the IPR procedure
`
`became available in 2012,6 and even then the one year bar to bringing an IPR after
`
`suit blocked ION from this procedure. 35 U.S.C. § 315(b). However, institution
`
`decisions on PGS’s petitions allowed ION to file motions to join each proceeding
`
`and submit its own IPRs on the same claims. See Exs. 4-6.
`
`ION’s positions in this appeal should prevail and result in reversal and entry
`
`of judgment in its favor, or reversal and remand. Nonetheless, whether the IPRs or
`
`this appeal control the outcome between the parties on the initiated claims depends
`
`solely on which proceeding first comes to a final conclusion. Fresenius U.S.A.,
`
`721 F.3d at 1330. Yet this appeal and the IPRs will go forward without any
`
`coordination between them absent a stay, not only wasting the public’s and parties’
`
`resources, but also putting ION at risk that it could be forced to pay on claims
`
`which never should have issued in U.S. patents. See also fn. 4.
`
`
`6 Effective September 16, 2012, the AIA amendments replaced inter
`partes reexaminations with a new inter partes review process. 35 U.S.C. §§ 311-
`319.
`
` 6
`
`
`
`
`
`
`

`

`Case: 13-1527 Document: 91-1 Page: 8 Filed: 01/26/2015
`
`II. Factual Background
`
`Since this motion is solely based on the fact the IPRs have been initiated,
`
`ION need not delve into the substance of the patents or of the details of the
`
`lawsuit—rather, those matters are laid out in the briefs and joint appendix. ION
`
`will focus only on the facts relevant to the stay request.
`
`On December 14, 2014, the PTAB initiated IPRs on each claim in suit in the
`
`three Bittleston patents pursuant to petitions filed by PGS. (Exs. 1-3). Each
`
`initiation decision was issued by a panel of three administrative law judges. Each
`
`opinion contains the following finding as to the claims subject to challenge: “Upon
`
`consideration of the Petition and the Preliminary Response, we determine that
`
`Petitioner has established a reasonable likelihood of prevailing on the claims
`
`challenged in the Petition.” (Ex. 1, p. 2), (Ex. 2, p. 2), (Ex. 3, p. 2).
`
`A recent study showed that in almost eighty percent of the cases where the
`
`PTAB has instituted an IPR on a claim, that claim has been held unpatentable. See
`
`B. Love, Inter Partes Review: An Early Look at the Numbers, Santa Clara
`
`University School of Law Digital Commons (Oct. 20, 2014) at p. 10, attached as
`
`Ex. 11 for the Court’s convenience.
`
`The Bittleston patents are the subject of all of the issues on appeal while the
`
`one claim in the unrelated Zajac ‘038 patent is irrelevant to most of them: For
`
` 7
`
`
`
`
`
`
`

`

`Case: 13-1527 Document: 91-1 Page: 9 Filed: 01/26/2015
`
`ION, WG’s lack of standing on the Bittleston patents (Issue 1, ION’s Opening
`
`brief at p. 2); lost profits for infringement of the Bittleston patents based on
`
`extraterritorial acts of others (Issue 3, Opening brief at p. 2); lost profits for
`
`infringement of the Bittleston patents based on the jury charge (Issue 3, Opening
`
`brief at p. 2); and the erroneous grant of summary judgment of infringement of
`
`claim 18 of the Bittleston ‘520 patent under 35 U.S.C. § 271(f)(1) (Issue 2,
`
`Opening brief at p. 2). (WG did not claim lost profits based on the Zajac ‘038
`
`patent, see fn. 2, infra.) For the Court’s convenience, the Statement of Issues from
`
`ION’s Opening Brief is attached as Exhibit 12 (the full brief is docket number 65
`
`in this Court’s record).
`
`Likewise, the Bittleston patents are the subject of WG’s conditional cross-
`
`appeal that it should have been permitted to include what was effectively a lost
`
`profits calculation in its damages expert’s reasonable royalty opinion based on
`
`ION’s foreign customers’ extraterritorial marine seismic survey services. (WG’s
`
`Response Brief at p. 81-83).7 Finally, the Bittleston patents as a practical matter
`
`are the focus of WG’s conditional appeal on the standard for of willfulness (id. at
`
`
`7 ION’s products do not directly infringe any patent in suit, but rather are
`components assembled by ION’s customers with many other components into
`seismic survey vessels and marine streamer arrays.
`
` 8
`
`
`
`
`
`
`

`

`Case: 13-1527 Document: 91-1 Page: 10 Filed: 01/26/2015
`
`84-86), since nearly all damages were attributed by WG’s expert to those patents.
`
`See fn. 2 infra.
`
` The appeal also includes issues that are record intensive. This appeal
`
`involves a joint appendix of 2,049 pages. There are 231 pages of briefing on an
`
`appeal and conditional cross-appeal. If an issue requiring remand is sustained on
`
`appeal, further work by the district court will be required (with a second appeal
`
`possible).
`
`III. Legal Standard
`
`“[T]he power to stay proceedings is incidental to the power inherent in every
`
`court to control the disposition of causes on its docket.... How this can best be done
`
`calls for the exercise of judgment, which must weigh competing interests and
`
`maintain an even balance.” Landis v. N. Am. Co., 299 U.S. 248, 254-55 (1936), as
`
`quoted in Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988). This
`
`power includes the authority to stay a case pending proceedings in the PTO. See
`
`and compare Id., citing, Gould v. Control Laser Corp., 705 F. 2d 1340 (Fed. Cir.
`
`1983).
`
`Case law outlines several general considerations that may be relevant to a
`
`stay, but ultimately the Court must decide stay requests on a case-by-case basis.
`
`Comcast Cable Commc’ns Corp., LLC v. Finisar Corp., No. 06-cv-04206, 2007
`
` 9
`
`
`
`
`
`
`

`

`Case: 13-1527 Document: 91-1 Page: 11 Filed: 01/26/2015
`
`WL 1052883, at * 1 (N.D. Cal. Apr. 5, 2007) (“From a case management
`
`perspective, the possible benefits must be weighed in each instance against the
`
`possible drawbacks”). 3rd Eye Surveillance, L.L.C. v. City of Frisco, No. 6:14-cv-
`
`533-JDL, 2015 WL 179101 (E.D. Tex. Jan. 14, 2015) (Denying stay without
`
`prejudice pending PTAB decision on institution of inter partes review).
`
`The IPR procedure only became available in 2012 and ION has not located a
`
`Federal Circuit case dealing with a stay pending appeal based on an institution
`
`decision or facts close to those here.8 District courts, however, have looked at the
`
`
`8 Two written opinions were located that dealt with stays on appeal pending PTO
`proceedings in other contexts and on different facts: In Versata Software, Inc. v.
`SAP Am., Inc., 717 F.3d 1255 (Fed. Cir. 2013), after the jury trial, the covered
`business method review procedure became available and SAP filed a petition for
`“CBM” review of the patent in issue in parallel with its appeal to this Court. After
`the PTAB issued its written decision in SAP’s favor, but also after this Court’s
`written opinion holding in favor of Versata, SAP then moved for a stay of the
`remaining proceedings in this Court, which was denied. Here, in contrast, oral
`argument has not yet occurred. In SynQor, Inc. v. Astesyn Tech., Inc., Nos. 2011-
`1191, 2011-1192, 2011-1193, 2011-1194, 2012-1069, 2012-1070, 2012-1071,
`2012-1072 (Fed. Cir. 2012), the panel held that the Court had the power to stay an
`appeal but declined to do so pending a BPAI appeal of an examiner’s rejections of
`claims in two of five patents in suit in inter partes re-examinations. The
`circumstances of this case are markedly different from SynQor because IPRs have
`been initiated on all but one claim, but that remaining claim accounts for only a
`small fraction of the damages, and does not touch most of the issues presented by
`the appeal. Further, ION offers unconditionally to settle if the Bittleston claims are
`cancelled as set forth in footnote 5. Finally, SynQor involved the former,
`inefficient inter partes re-examination process, while here the new IPR procedure
`which replaced that process has been initiated.
`
`10
`
`
`
`
`

`

`Case: 13-1527 Document: 91-1 Page: 12 Filed: 01/26/2015
`
`traditional factors of simplification of the issues, stage of the proceedings, undue
`
`prejudice or unfair tactical advantage in considering whether to stay litigation
`
`based on institution of an IPR. See, e.g., Safe Storage L.L.C. v. Atto Technology
`
`Co., et. al., No. 1:12-cv-01624-GMS (D. Del. Jan. 22, 2015) (Granting stay
`
`pending IPR as to movants and sua sponte as to non-movants); Evolutionary
`
`Intelligence L.L.C. v. Facebook, No. 13-4202, 2014 WL 261837 (N.D. Cal. Jan.
`
`23, 2014) (Granting stay pending IPR with leave for plaintiff to seek
`
`reconsideration if institution is denied).9 Even where a lawsuit is at an advanced
`
`stage, when an IPR is instituted, prudent use of public and private resources and
`
`fairness permit for a stay. Softview L.L.C. v. Apple, Inc., No. 12-989-LPS, 2013
`
`WL 4757831 (D. Del. Sept. 4, 2013) (Stay originally denied early in lawsuit on but
`
`after IPR instituted granted even though case had proceeded through Markman and
`
`fact discovery).
`
`
`9 In 3rd Eye Surveillance, infra, the Magistrate Judge summarized the traditional
`factors a district court looks at as follows: “In deciding whether to stay a given
`action, courts frequently consider three factors: (1) whether the stay would unduly
`prejudice or present a clear tactical disadvantage to the non-moving party; (2)
`whether a stay will simplify the issues in question and trial of the case; and (3)
`whether discovery is complete and whether a trial date has been set.”
`
`11
`
`
`
`
`

`

`Case: 13-1527 Document: 91-1 Page: 13 Filed: 01/26/2015
`
`IV. A Stay Should Be Granted
`
`A. A Stay Will Simplify or Streamline the Case Even at This Stage
`Issues are simplified if an asserted claim is cancelled since this eliminates
`
`the cause of action based on that claim. Here, multiple issues will drop completely
`
`out of this appeal if the asserted claims of the Bittleston patents are found
`
`unpatentable: standing, extraterritoriality, lost profits, exclusion of lost profits from
`
`reasonable royalty, and error in how 271(f)(1) was applied to grant summary
`
`judgment on claim 18 of the ‘520 patent pre-trial. Institution of the IPRs by panels
`
`of three administrative law judges in well-reasoned, detailed written decisions,
`
`each finding a likelihood that the claims are unpatentable, shows that the PTAB’s
`
`final decisions should significantly streamline this case. (And this has been true
`
`statistically as evidenced by the current cancellation rate of approximately 80%).
`
`If WG’s conditional cross-appeal is reached, there is the further issue of
`
`whether under the facts of this case, the panel should re-visit the standard for
`
`willfulness in light of Octane Fitness LLC v. ICON Health & Fitness, Inc., 134 S.
`
`Ct. 1749 (2014) (which, if reached, would also likely implicate Highmark Inc. v.
`
`Allcare Health Management Systems, Inc., 134 S. Ct. 1744 (2014)). This case is a
`
`poor test for this question (in addition to the record and briefs on file, the initiated
`
`IPRs also show this is not the case to consider changes in the law of willfulness).
`
`
`
`
`
`12
`
`

`

`Case: 13-1527 Document: 91-1 Page: 14 Filed: 01/26/2015
`
`The Supreme Court did not change the law regarding willfulness, and existing
`
`Federal Circuit law can only be changed by en banc review.
`
`Further, depending on how the Court rules on the appeal, there is a
`
`possibility the lawsuit will be remanded for further proceedings in the trial court.
`
`For example, reversal under 271(f) would likely result in a new trial. By way of
`
`another example, reversal on either of WG’s grounds for conditional cross-appeal
`
`would result in either additional hearings or a new trial or both. While trial has
`
`passed, under any scenario, much work remains to be done, and substantial public
`
`and party resources would be saved by a stay.
`
`Finally, a stay eliminates the waste of concurrent proceedings over the same
`
`patents in this forum and the PTAB, as well as the risk of inconsistent
`
`consequences for ION. Both fundamental fairness and public confidence in the
`
`patent system are undermined if competing proceedings generate inconsistent
`
`consequences and put a party at risk of payment of a judgment on claims that never
`
`should have issued in U.S. patents. See also fn. 4.
`
`B. A Stay Will Not Prejudice WG
`ION has been enjoined from the activity WG claimed was infringing. WG
`
`has a bond to protect the collectability of its judgment. WG continues to benefit
`
`from the precedential and preclusive effect of the final judgment pending further
`
`
`
`
`
`13
`
`

`

`Case: 13-1527 Document: 91-1 Page: 15 Filed: 01/26/2015
`
`developments. ION has offered to fully compensate WG by settlement on the
`
`Zajac ‘038 if the PTO cancels all of the Bittleston patent claims in suit. See fn. 5.
`
`WG has no material prejudice from a stay.
`
`The appeal has been fully briefed and joint appendix submitted so there is no
`
`risk of impairment of the ability to brief the issues due to faded memory.
`
`Moreover, the PTAB decision will likely come about December 15, 2015 (within
`
`one year of institution). At that point, if WG prevails the stay can be lifted.
`
`Compare for example, Evolutionary Intelligence L.L.C. v. Facebook, No. 13-4202,
`
`2014 WL 261837 (N.D. Cal. Jan. 23, 2014) (Granting stay pending IPR with leave
`
`for plaintiff to seek reconsideration if institution is denied).10 If WG loses in the
`
`PTAB, there is no reason to lift the stay pending cancellation of the claims. Once
`
`the claims are cancelled, the remainder of the case should be resolved as set forth
`
`in footnote 5.
`
`C.
`
`ION Did Not Game the System for Tactical Advantage and Will
`Be Prejudiced Absent a Stay
`
`ION was sued years before the IPR process was available, and acted
`
`promptly once institution decisions issued on PGS’s petitions. Although ION’s
`
`
`10 By that time, the Supreme Court will have also likely issued an opinion in
`Commil, which will be heard this term. (Commil is the subject of Issue 2.b. in the
`Statement of Issues in ION’s Opening Brief, Ex. 12).
`
`14
`
`
`
`
`

`

`Case: 13-1527 Document: 91-1 Page: 16 Filed: 01/26/2015
`
`joinder is not a requirement of this motion, compare for example, Safe Storage
`
`L.L.C., et. al., No. 1:12-cv-01624-GMS (D. Del. Jan. 22, 2015) (district court sua
`
`sponte stayed as to non-moving parties who had not filed their own inter partes
`
`petitions or motions to stay), ION’s prompt actions in filing its motions for joinder,
`
`IPRs on the same claims, and this Motion show it has not delayed for tactical
`
`advantage.
`
`Further, while ION believes that it will prevail in this appeal, the burden of
`
`the litigation on the courts and parties remains significant. Moreover, in the
`
`unlikely event ION must pay all or part of the judgment to WG (or reimburse the
`
`sureties on the bond for doing so), it will be badly prejudiced if the claims are later
`
`cancelled. See generally fn. 4. Currently, the question of whether ION is at any
`
`risk of being forced to pay on unpatentable claims ultimately could turn on lack of
`
`coordination between simultaneous proceedings – the first to reach a final, non-
`
`appealable order potentially controlling the consequences ION faces. Fresenius,
`
`721 F.3d at 1347. No party should be put to risk of significant harm based on
`
`happenstance. Such a result wastes government and private resources, and
`
`undermines the patent system. A stay serves judicial economy, preserves public
`
`resources, does not materially prejudice WG, protects ION from any risk of
`
`
`
`
`
`15
`
`

`

`Case: 13-1527 Document: 91-1 Page: 17 Filed: 01/26/2015
`
`inconsistent consequences, and promotes fairness, reliability and confidence in the
`
`patent system.
`
`CONCLUSION
`
`ION respectfully asks that this Court stay the present appeal pending final
`
`disposition of the instituted IPRs and its motions for joinder and IPRs.
`
`
`
`MOVANT’S STATEMENT OF CONSENT OR OPPOSITION
`
`Counsel for movant/appellant ION Geophysical Corporation discussed this
`
`motion with counsel for WG prior to filing. WG opposes the motion and will file a
`
`response.
`
`
`
`January 26, 2015
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`/s/ David J. Healey
`DAVID J. HEALEY
`BRIAN G. STRAND
`BAILEY HARRIS
`FISH & RICHARDSON P.C.
`One Houston Center
`1221 McKinney Street, Suite 2800
`Houston, TX 77010
`(713) 654-5300
`
`JUSTIN M. BARNES
`FRANCIS J. ALBERT
`OLGA MAY
`
`
`16
`
`

`

`Case: 13-1527 Document: 91-1 Page: 18 Filed: 01/26/2015
`
`FISH & RICHARDSON P.C.
`12390 El Camino Real
`San Diego, CA 92130
`(858) 678-5070
`
`FRANK PORCELLI
`FISH & RICHARDSON P.C.
`One Marina Park Drive
`Boston, MA 02210-1878
`(617) 542-5070
`
`Counsel for Defendant-Appellant
`ION GEOPHYSICAL
`CORPORATION
`
`
`
`
`
`17
`
`

`

`Case: 13-1527 Document: 91-1 Page: 19 Filed: 01/26/2015
`
`CERTIFICATE OF INTEREST
`
`1.
`
`The full name of every party represented by counsel is:
`
`
`
`
`
`ION Geophysical Corporation
`
`N/A
`
`Counsel for the Defendant-Appellant certifies the following:
`
`
`
`
`
`The name of the real party in interest (if the party named in the
`2.
`
`caption is not the real party in interest) represented by counsel is:
`
`
`
`All parent corporations and any publicly held companies that own 10
`3.
`
`percent or more of the stock of the party or amicus curiae represented by me are:
`
`
`N/A
`
`The names of all law firms and the partners or associates that
`4.
`
`appeared for the party or amicus now represented by me in the trial court or agency
`or are expected to appear in this Court are:
`
`
`Fish & Richardson P.C.: David J. Healey, Justin M. Barnes, Frank
`Porcelli, Brian G. Strand, Francis J. Albert, Olga May, Kevin Su,
`Robert Courtney, Bailey Harris, Jackob Ben-Ezra;
`
`Porter Hedges L.L.P.: Ray Torgerson, Jonathan Pierce, Jonna
`Summers, Eric Wade, Susan Hellinger;
`
`Jones Day: David Burgert
`
`
`
`
`
`
`
`
`
`
`19
`
`

`

`Case: 13-1527 Document: 91-1 Page: 20 Filed: 01/26/2015
`
`CERTIFICATE OF SERVICE
`
`Pursuant to Federal Circuit Rule 25, I hereby certify that on January 26,
`
`2015, the foregoing document was filed with the Clerk of the Court using the
`
`CM/ECF system.
`
`I further certify that copies of this motion and all attachments are to be
`
`served by hand delivery during regular business hours on Monday January 26,
`
`2015, to Counsel for WG at the offices of Kirkland & Ellis in New York City and
`
`Washington, D.C., and Smyser Kaplan & Veselka in Houston, Texas at the below
`
`addresses. (Courtesy copies will be sent by email to opposing counsel noting that
`
`service by hand delivery of these papers to their offices).
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` /s/ David J. Healey
` David J. Healey
`
`
`
`
`
`
`
`Gregg F. LoCascio, P.C.
`KIRKLAND & ELLIS LLP
`655 Fifteenth Street, N.W.
`Washington, D.C. 20005-5793
`Tel.: (202) 879-5000
`Fax: (202) 879-5200
`
`William H. Burgess
`KIRKLAND & ELLIS LLP
`655 Fifteenth Street NW
`Washington, DC 20005
`Tel.: (202) 879-5000
`Fax: (202) 879-5200
`
`
`
`
`
`
`
`20
`
`

`

`Case: 13-1527 Document: 91-1 Page: 21 Filed: 01/26/2015
`
`John C. O’Quinn
`John.oquinn@kirkland.com
`KIRKLAND & ELLIS LLP
`655 Fifteenth Street NW
`Washington, DC 20005
`Tel.: (202) 879-5000
`Fax: (202) 879-5200
`
`Timothy Gillman
`Leslie Schmidt
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, NY 10022
`Tel.: (212) 446-4800
`Fax: (212) 446-4900
`
`Lee L. Kaplan
`SMYSER KAPLAN & VESELKA, LLP
`700 Lousiana, Suite 2300
`Houston, TX 77002
`Tel.: (713) 221-2300
`Fax: (713) 221-2320
`
`
`
`
`
`
`
`21
`
`