Trials@uspto.gov
`571-272-7822
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`Paper14
`Entered: April 23, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ION GEOPHYSICAL CORPORATION
`AND ION INTERNATIONAL S.A.R.L.,
`Petitioners,
`
`v.
`
`WESTERNGECO LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00565
`Patent 7,293,520
`
`
`
`Before SCOTT A. DANIELS, BEVERLY M. BUNTING, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108
`37 C.F R § 42.122(b)
`
`
`571-272-7822
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`
`
`
`
`
`
`Paper14
`Entered: April 23, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ION GEOPHYSICAL CORPORATION
`AND ION INTERNATIONAL S.A.R.L.,
`Petitioners,
`
`v.
`
`WESTERNGECO LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00565
`Patent 7,293,520
`
`
`
`Before SCOTT A. DANIELS, BEVERLY M. BUNTING, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108
`37 C.F R § 42.122(b)
`
`
`
`IPR2015-00565
`Patent 7,293,520
`
`
`I. INTRODUCTION
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`ION Geophysical Corporation and ION International S.a.r.l. (“ION”)
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`filed a Petition to institute an inter partes review of claims 1, 2, 6, 18, 19,
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`and 23 of U.S. Patent No. 7,293,520 (“the ’520 patent”). Paper 3 (“Pet.”).
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`The Petition was accorded a filing date of January 14, 2014. Paper 6. With
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`the Petition, ION also filed a Motion for Joinder (“Mot.,” Paper 4) seeking
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`to join this proceeding with Petroleum Geo-Services, Inc., v. WesternGeco
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`L.L.C., Case IPR2014-00689 (the “PGS IPR”). Mot. 2. The PGS IPR
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`concerns the same patent as at issue here, namely the ’520 patent. We
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`instituted trial in the PGS IPR on December 15, 2015. See Petroleum Geo-
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`Services, Inc., v. WesternGeco L.L.C., Case IPR2014-00689, Paper 32
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`(Decision instituting inter partes review).
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`Patent Owner, WesternGeco L.L.C. (“WesternGeco”) timely filed an
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`Opposition (“Opp.,” Paper 10) to ION’s Motion for Joinder, and ION, in
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`turn, filed a Reply (Paper 12).
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`We have jurisdiction under 35 U.S.C. § 314, which provides that an
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`inter partes review may not be instituted “unless . . . there is a reasonable
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`likelihood that the petitioner would prevail with respect to at least 1 of the
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`claims challenged in the petition.” For the reasons provided below, we (1)
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`institute an inter partes review on certain grounds, and (2) grant ION’s
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`Motion for Joinder, subject to the conditions detailed herein.
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`II. INSTITUTION OF INTER PARTES REVIEW
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`We have jurisdiction under 35 U.S.C. § 314, which provides that an
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`inter partes review may not be instituted “unless . . . there is a reasonable
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`likelihood that the petitioner would prevail with respect to at least 1 of the
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`claims challenged in the petition.” The Petition in this proceeding asserts
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`2
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`IPR2015-00565
`Patent 7,293,520
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`the same grounds as those asserted in the PGS IPR. Pet. 1, 28, Mot. 2–4.
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`We instituted a trial in the PGS IPR on four grounds:
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`1. Claims 1 and 18 are anticipated by Workman;
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`2. Claims 1, 2, 18, and 19 as obvious over Workman;
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`3. Claims 1, 2, 18, and 19 as anticipated by Hedberg;
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`4. Claims 1, 2, 18, and 19 as obvious over Hedberg
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` Petroleum Geo-Services, Inc., v. WesternGeco L.L.C., Case IPR2014-
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`00689, slip op. at 43 (PTAB Dec. 15, 2014) (Paper 32). We did not institute
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`on two grounds, namely, obviousness of claims 1, 6, 18, and 23 over the
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`’636 PCT and either the ’153 PCT or Dolengowski. Id. In view of the
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`challenges in the instant Petition and the petition in the PGS IPR, we
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`institute an inter partes review in this proceeding on the same four grounds
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`as those on which we instituted in the PGS IPR. Id. We do not institute on
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`any other grounds.
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`III. GRANT OF MOTION FOR JOINDER
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`An inter partes review may be joined with another inter partes
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`review, subject to the provisions 35 U.S.C. § 315(c), which governs joinder
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`of inter partes review proceedings:
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`(c) JOINDER.—If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that inter
`partes review any person who properly files a petition under section
`311 that the Director, after receiving a preliminary response under
`section 313 or the expiration of the time for filing such a response,
`determines warrants the institution of an inter parties review under
`section 314.
`
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`As the moving party, ION bears the burden of proving that it is
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`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
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`should: (1) set forth the reasons joinder is appropriate; (2) identify any new
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`3
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`IPR2015-00565
`Patent 7,293,520
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`grounds of unpatentability asserted in the petition; and (3) explain what
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`impact (if any) joinder would have on the trial schedule for the existing
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`review. See Frequently Asked Question H5, http://www.uspto.gov/patents-
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`application-process/appealing-patentdecisions/ trials/patent-review-
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`processing-system-prps-0. (Last visited April 1, 2015).
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`The Petition in this proceeding has been accorded a filing date of
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`January 14, 2015 (Paper 6), and the Motion for Joinder was filed on the
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`same date. (Mot.). Thus, the Motion for Joinder in this proceeding satisfies
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`the requirement of being filed within one month of the date, December 15,
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`2014, instituting a trial in the PGS IPR. See 37 C.F.R. § 42.122(b) (Any
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`request for joinder must be filed, as a motion under § 42.22, no later than
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`one month after the institution date of any inter partes review for which
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`joinder is requested.).
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`In its Motion for Joinder, ION contends that “aside from the
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`procedural sections of the Petition, for example that identify ION and its
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`standing, the Petition and accompanying evidence are identical.” Mot. 7.
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`ION further represents that because the challenges are identical, it “envisions
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`few, if any, differences in position between ION and PGS.” Id. at 8.
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`PGS indicated during a conference call on March 25, 2015, with the
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`Board and all the participants in the PGS IPR and this proceeding, that it
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`opposes joinder because PGS does not desire to coordinate its conduct of the
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`PGS IPR with ION, and also, because joining these proceeding may raise
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`issues relating to alleged hearsay evidence. For its part, WesternGeco
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`argues that joinder would create duplicative litigation delay and complicate
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`the PGS IPR schedule, thus prejudicing WesternGeco and raising its costs.
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`Opp. Mot. 2–4.
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`4
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`IPR2015-00565
`Patent 7,293,520
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`Based on the present record, we agree that joinder with the PGS IPR
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`would promote the efficient resolution of these proceedings. In the March
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`25, 2015 conference call, ION confirmed that it was amendable to joinder on
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`only the already instituted grounds in the PGS IPR. In its Motion for
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`Joinder, ION notes that both proceedings involve the same prior art, the
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`same claims, and the same arguments and evidence. Mot.5–6. ION has
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`brought the same substantive challenges in this proceeding, as in the PGS
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`IPR, and joinder simplifies addressing the overlap of the instituted grounds.
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`Compare Pet. 3–60 with, Petroleum Geo-Services, Inc., v. WesternGeco
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`L.L.C., Case IPR2014-00689, Paper 3, 3–60. Addressing the same grounds
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`in the PGS IPR as presented here, in a joined proceeding, facilitates
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`scheduling of the joined actions and minimizes delay. Also, because the
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`challenges, prior art and evidence are substantively identical to the PGS IPR,
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`prejudice to WesternGeco is minimal. With respect to PGS’s concern
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`regarding hearsay evidence, even if these proceedings were not joined, the
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`parties have the ability to request authorization to obtain 3rd party testimony
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`under 35 U.S.C. 24. See § 42.53. In addition, scheduling of the joined
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`proceeding, as set forth below, will occur so as to minimize impact to
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`WesternGeco and PGS, yet maintain the current DUE DATE 7 (July 30,
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`2015) for oral hearing.
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`IV. SCHEDULING
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`The Scheduling Order in the PGS IPR (Paper 33) sets the oral hearing
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`for July 30, 2015. Final hearing and final determination shall not be delayed
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`by joining the two proceedings. In view of our joinder order below, the
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`remaining DUE DATES are unchanged. The parties may stipulate to
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`different dates for DUE DATES 2 through 5 (earlier or later, but no later
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`5
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`IPR2015-00565
`Patent 7,293,520
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`than DUE DATE 6). A notice of the stipulation, specifically identifying the
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`changed due dates, must be promptly filed. The parties may not stipulate to
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`an extension of DUE DATES 6 and 7.
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`
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`V. CONCLUSION
`Based on the record before us, we institute an inter partes review in
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`IPR2015-00565 and grant ION’s motion to join that proceeding to IPR2014-
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`00689.
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`
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`In consideration of the foregoing, it is hereby:
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`VI. ORDER
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`ORDERED that a trial is instituted as to the challenged claims of the
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`’520 patent only on the following grounds:
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`Claims 1 and 18 as anticipated by Workman;
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`Claims 1, 2, 18, and 19 as obvious over Workman;
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`Claims 1, 2, 18, and 19 as anticipated by Hedberg; and
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`Claims 1, 2, 18, and 19 as obvious over Hedberg
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`FURTHER ORDERED that ION’s Motion for Joinder with respect to
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`the same grounds as instituted in the PGS IPR is granted, and that this
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`proceeding is joined with IPR2014-00689;
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`FURTHER ORDERED that the ground on which IPR2014-00689 was
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`instituted is unchanged and no other grounds are instituted in the joined
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`proceeding;
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`FURTHER ORDERED that the Scheduling Order in place for
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`IPR2014-00689 (Paper 33) remains unchanged, and shall govern the joined
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`proceedings;
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`6
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`IPR2015-00565
`Patent 7,293,520
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`FURTHER ORDERED that ION is not permitted to file papers,
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`engage in discovery, or participate in any deposition or oral hearing in
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`IPR2014-00689. ION, however, is permitted to appear in IPR2014-00689 so
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`that it may receive notification of filings and may attend depositions and oral
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`hearing. Should ION believe it necessary to take any further action, ION
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`should request a conference call to obtain authorization from the Board;
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`FURTHER ORDERED that IPR2015-00565 is terminated under 37
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`C.F.R. § 42.72 and all further filings in the joined proceeding are to be made
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`in IPR2014-00689;
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`FURTHER ORDERED that a copy of this Decision be entered into
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`the file of IPR2014-00689; and
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`FURTHER ORDERED that the case caption in IPR2014-00689 shall
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`be changed to reflect joinder with this proceeding in accordance with the
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`attached example.
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`7
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`IPR2015-00565
`Patent 7,293,520
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`
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`For PETITIONERS:
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`David. Berl
`Thomas S. Fletcher
`Jessamyn Berniker
`Christopher Suarez
`Williams & Connolly, LLP
`dberl@wc.com
`tfletcher@wc.com
`jberniker@wc.com
`csuarez@wc.com
`
`W. Karl Renner
`Roberto Devoto
`David L. Holt
`Fish & Richardson P.C.
`IPR37136-0004IP1@fr.com
`
`For PATENT OWNER:
`
`Michael L. Kiklis
`Scott A. McKeown
`Christopher A. Bullard
`Kevin B. Laurence
`Katherine D. Cappaert
`Christopher Ricciuti
`OBLON, SPIVAK, McCLELLAND,
`MAIER & NEUSTADT, L.L.P.
`CPdocketMcKeown@oblon.com
`CPdocketBullard@oblon.com
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`8
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`IPR2015-00565
`Patent 7,293,520
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`Example Case Caption for Joined Proceeding
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PETROLEUM GEO-SERVICES INC.,
`and
`ION GEOPHYSICAL CORPORATION
`AND ION INTERNATIONAL S.A.R.L.,
`Petitioners,
`
`v.
`
`WESTERNGECO LLC,
`Patent Owner.
`____________
`
`Case IPR2014-006891
`Patent 7,293,520
`
`
`1 Case IPR2015-00565 has been joined with this proceeding.
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`9
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