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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`Ion Geophysical Corporation and
`Ion International S.A.R.L.,
`Petitioners,
`
`v.
`
`WesternGeco LLC
`Patent Owner.
`____________
`
`Case IPR2015-00565
`Patent 7,293,520
`____________
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`
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`REPLY TO PATENT OWNER’S OPPOSITION
`TO MOTION FOR JOINDER
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`IPR2015-00565
`Patent 7,293,520
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`
`ION-1065
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`ION-1066
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`ION-1067
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`ION-1068
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`ION-1069
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`EXHIBITS
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`Notice of Docketing from WesternGeco L.L.C. v. ION
`Geophysical Corp., United States Court of Appeals For The
`Federal Circuit Case Nos. 2013-1527
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`ION’s Redacted Opening Brief from WesternGeco L.L.C. v.
`ION Geophysical Corp., United States Court of Appeals For
`The Federal Circuit Case Nos. 2013-1527, 2014-1121, -1526, -
`1528
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`Patent Owner Preliminary Response from Petroleum Geo-
`Services Inc. v. WesternGeco LLC, IPR2014-00689, Paper 28
`(Sep. 30, 2014)
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`Institution Decision from from Petroleum Geo-Services Inc. v.
`WesternGeco LLC, IPR2014-00689, Paper 32 (Dec. 15, 2014)
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`ION’s Opposed Motion to Stay from WesternGeco L.L.C. v.
`ION Geophysical Corp., United States Court of Appeals For
`The Federal Circuit Case Nos. 2013-1527, 2014-1121, -1526, -
`1528
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`IPR2015-00565
`Patent 7,293,520
`
`I.
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`Introduction
`The Board routinely grants motions for joinder where the party seeking
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`joinder presents identical arguments to those raised in the existing proceeding and
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`agrees to reasonable limits on its role in the joined proceeding. See, e.g., Fujitsu
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`Semiconductor Limited v. Zond, LLC, IPR2014-00845, Paper 14 (PTAB Oct. 2,
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`2014); Enzymotec Ltd. v. Neptune Technologies & Bioresources, Inc., IPR2014-
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`00556, Paper 19 (PTAB Jul. 9, 2014). That is the exact situation here, and joinder
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`should be granted consistent with the Board’s “policy preference for joining a
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`party that does not present new issues that might complicate or delay an existing
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`proceeding,” noted in Enzymotec. The Opposition concocts obstacles to joinder,
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`each of which is belied by the evidence and unaddressed legal precedent. These
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`cavils should be given no weight.
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`II. Petitioner’s Request for Joinder Raises No New Issues and Joinder Would
`Not Complicate the Existing Proceeding
`Throughout its Opposition, WesternGeco argues that granting joinder would
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`“exacerbate discovery coordination difficulties,” require the reconsideration of
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`“multiple grounds that were not instituted in the ’689 IPR,” and otherwise “make
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`the ’689 IPR unruly, burdensome, costly, and slow.” See Opp., pp. 2-4. Such
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`arguments are not consistent with facts set forth in Petitioner’s motion nor the
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`Board’s own precedent.
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`1
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`IPR2015-00565
`Patent 7,293,520
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`The Board has frequently granted joinder in cases where, as here, the
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`Petition of the party seeking joinder “asserts identical grounds of unpatentability,
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`challenging the same claims of the” challenged patent. Fujitsu, Paper 14, p. 4. As
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`in Fujitsu, the instant petition is “substantively identical” to the petition filed in the
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`IPR being joined and it even “submits identical claim constructions, as well as the
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`same Declaration.” See id. Thus, Petitioner asks the Board to simply “institute the
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`instant trial based on the same grounds for which [it] instituted trial in” the ’689
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`IPR, as the Board has done in similar cases. See id.
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`Furthermore, in its motion for joinder, Petitioner unequivocally indicates
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`that it does not seek to “modify the existing schedule of the First PGS IPR,” and, to
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`that end, cites the procedures used in the IPR2013-00256 proceeding as specific
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`examples of “briefing and discovery procedures,” including “consolidated filings,”
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`that are acceptable to Petitioner and that will ensure no alteration of the ’689 IPR
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`schedule is necessary.. See Motion for Joinder, pp. 7, 9. Consistent with this,
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`Petitioner has indicated no intention to revisit the already conducted depositions,
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`despite suggestions otherwise by the Opposition (p. 11). Rather, Petitioner simply
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`seeks to join the ongoing ’689 IPR, adopting its status upon the grant of joinder.
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`III. The “New Legal Issues” Raised in the Opposition Find No Basis in the
`Relevant Law and Facts
`Despite the lack of any substantive differences between the instant Petition
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`and that of the ‘689 IPR, Patent Owner suggests that two “new legal issues”
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`IPR2015-00565
`Patent 7,293,520
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`threaten to complicate the ’689 IPR should joinder be granted: (1) res judicata and
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`collateral estoppel, and (2) real parties-in-interest. See Opp., pp. 5-11. However,
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`the first is contrary to existing precedent, and the second was already raised in the
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`‘689 IPR. As such, as detailed below, these “issues” are unsustainable.
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`Moreover, even assuming for the sake of argument that these issues were
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`legitimate, the existence of so few additional issues further demonstrates the
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`appropriateness of joinder.
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`A. Res Judicata and Collateral Estoppel Are Not Valid Defenses,
`And Even if They Were, They Should Not Impede Joinder
`In the co-pending ION litigation, Petitioner timely filed an appeal to the
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`Federal Circuit in which Petitioner is challenging the issues of standing, liability,
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`and damages. See Ex. 1065; see also Ex. 1066, pp. 2-3. This appeal remains
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`pending, with no final judgment. Thus, res judicata and collateral estoppel are not
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`defenses available to WesternGeco, and neither should be considered “new legal
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`issues” for purposes of impeding joinder. Moreover, even if they were available
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`defenses, the narrow scope of issues implicated by these defenses should not
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`impede joinder, which is otherwise appropriate.
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`In Fresenius USA, Inc. v. Baxter Intern., Inc., 721 F.3d 1330 (Fed. Cir.
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`2013) and In re Baxter Intern., Inc., 678 F.3d 1357 (Fed. Cir. 2012), the Federal
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`Circuit clarified that, regardless of whether validity remains an ongoing issue in a
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`litigation co-pending with a patent office review, res judicata and collateral
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`IPR2015-00565
`Patent 7,293,520
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`estoppel do not preclude the patent office review until the litigation is “entirely
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`concluded so that the cause of action against the infringer was merged into a final
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`judgment one that ends the litigation on the merits and leaves nothing for the court
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`to do but execute the judgment.” Fresenius, 721 F. 3d at 1341 (quotations and
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`citations omitted). In the Fresenius-Baxter cases, as here, aspects of the district
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`court’s original judgment remained unresolved, including damages issues. See id.
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`“Looking to general res judicata principles governing the preclusive effect of
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`a judgment,” the Court held that “it is well-established that where the scope of
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`relief remains to be determined, there is no final judgment binding the parties (or
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`the court).” See id. The Opposition not only fails to address the preclusive effect
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`of Fresenius and In re Baxter on their arguments, it cites to the Board’s own SAP
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`Am., Inc.v. Versata Dev. Grp., CBM2012-00001, where the Board similarly
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`concluded that res judicata and collateral estoppel did not apply. See Opp., p. 9.
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`B. No New Facts Have Developed Since WesternGeco Previously
`Raised Its Real Party-In-Interest Allegations that Warrant
`Additional Discovery
`In its ’689 IPR response, WesternGeco earlier attempted to contrive an issue
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`of real parties-in-interest and privity between PGS and ION. See Ex. 1067, pp. 12-
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`17. The Board correctly found no “evidence indicative of control, or potential to
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`control, this inter partes proceeding by ION.” Ex. 1068, pp. 20-24. Quite simply,
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`the Board has already put this issue to rest after considering the facts advanced by
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`4
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`IPR2015-00565
`Patent 7,293,520
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`WesternGeco, and WesternGeco has identified no new facts of substance nor has it
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`otherwise justified reconsideration of the earlier decision.
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`Indeed, with the exception of PGS’s IPR filing, the Opposition relies
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`exclusively on facts already considered and found wanting by the Board. See
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`Opp., p. 6, n. 1. The Opposition therefore fails to justify further inquiry or
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`discovery on real parties in interest or privity. Similarly insufficient are references
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`to ION’s decision to forgo appeal of validity in civil court, particularly given
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`ION’s indication that it forwent appeal due to “the deferential standard of review
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`of jury fact findings, and the word limits for [its appeal] brief.” Ex. 1066, p. 15.
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`Moreover, in filings before both the Federal Circuit and the Patent Office,
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`Petitioner has unequivocally stated ION has not “coordinated with PGS [in] the
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`defense of this lawsuit or PGS’s lawsuit or PGS’s IPRs, nor has ION paid in whole
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`or in part for PGS’s defense or IPRs.” Ex. 1069, p. 1, n. 1; see also Petition, n. 7.
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`In other words, there exist no facts that warrant the Board’s consideration of
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`additional discovery and briefing on the issue of real parties-in-interest.
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`IV. Conclusion
`Petitioner raised no new issues with its request for joinder, and indicated its
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`willingness to accept constraints on participation in a joined proceeding to avoid
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`affecting the schedule. Moreover, the “new” issues WesternGeco threatens to raise
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`are groundless. Accordingly, joinder to IPR2014-00689 is warranted.
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`Respectfully submitted,
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`/W. Karl Renner/
`W. Karl Renner, Reg. No. 41,265
`Roberto Devoto, Reg. No. 55,108
`Attorneys for Petitioner
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`IPR2015-00565
`Patent 7,293,520
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`Dated: March 9, 2015
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`IPR2015-00565
`Patent 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 March 9, 2105, a complete and entire copy of this Reply to Patent
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`Owner’s Opposition and all supporting exhibits was sent via e-mail to the Patent
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`Owner by serving the correspondence e-mail addresses of record as follows:
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`Michael L. Kiklis
`OBLON, SPIVAK, McCLELLAND,
`MAIER & NEUSTADT, L.L.P.
`1940 Duke Street
`Alexandria, Virginia 22314
`
`Scott McKeown
`OBLON, SPIVAK, McCLELLAND,
`MAIER & NEUSTADT, L.L. P.
`1940 Duke Street
`Alexandria, Virginia 22314
`703-413-3000
`
`
`Email: CPDDocketKiklis@oblon.com
`Email: CPDDocketMcKeown@oblon.com
`
`
`/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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