Case 4:09-cv-01827 Document 502 Filed in TXSD on 08/13/12 Page 1 of 6
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVISION
`
`§§
`
`§§
`
`§§§§§§
`
`§
`
`§ CIVIL ACTION NO. 4:09-cv-01827
`§
`§
`
`Judge Keith P. Ellison
`
`JURY TRIAL DEMANDED
`
`WESTERNGECO L.L.C.,
`
`Plaintiff,
`
`V.
`
`ION GEOPHYSICAL CORPORATION,
`FUGRO-GEOTEAM, INC., FUGRO-
`GEOTEAM AS, FUGRO NORWAY
`MARINE SERVICES AS, FUGRO, INC.,
`FUGRO (USA), INC. and FUGRO
`GEOSERVICES, INC.,
`
`Defendants.
`
`ION GEOPHYSICAL CORPORATION’S TRIAL BRIEF ON MARKING
`
`As a matter of law, Plaintiff WesternGeco L.L.C.
`
`(“WesternGeco”) cannot recover
`
`damages for any alleged infringement occurring before the date of this lawsuit because
`
`WesternGeco failed to bring forth any evidence that it complied with the marking statute under
`
`35 U.S.C.§ 278(a). Thus, if WesternGeco is entitled to recover damages at all, it is strictly
`
`limited to recovering damages for infringement occurring after June 12, 2009.
`
`35 USC § 278(a): The Marking Statute
`
`Under 35 U.S.C. § 278(a), patentees are required to give either actual or constructive
`
`notice to the public of their patented article. 35 U.S.C. § 287(a). This requirement “serves three
`
`related purposes: (1) helping to avoid innocent infringement; (2) encouraging patentees to give
`
`notice to the public that the article is patented; and (3) aiding the public to identify whether an
`
`article is patented.” Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1443 (1998) (internal
`
`citations omitted).
`
`2881590v1
`
`1
`
`WesternGeco Ex. 2029, pg. 1
`IPR2015-00565
`ION v WesternGeco
`
`

`

`Case 4:09-cv-01827 Document 502 Filed in TXSD on 08/13/12 Page 2 of 6
`
`Actual notice under section 287(a) “demands notice of the patentee’s identity as well as
`
`notice of infringement.” U.S. Phillips Corp. v. Iwasaki Elec. Co. Ltd., 505 F.3d 1371, 1375 (Fed.
`
`Cir. 2007) (citing Lands v. Digital Equip. Corp., 252 F.3d 1320, 1327-28 Fed. Cir. 2001)).
`
`Moreover, it also requires “an affirmative act on the part of the patentee which informs the
`
`defendant of infringement.” Id. Thus, if a party fails to present evidence that it took affirmative
`
`steps prior to filing suit to provide the infringer with actual notice, a court must conclude that the
`
`infringer “did not receive actual notice of infringement until the dates on which [the] suit with
`
`respect to each patent was filed.” Tesco Corp. v. Weatherford Intern., Inc., 722 F. Supp. 2d 755,
`
`770 (S.D. Tex. 2010) (Ellison, J.).
`
`A patentee can satisfy the constructive notice requirement by either: (1) “fixing thereon
`
`the word ‘patent’ or the abbreviation ‘pat.’, together with the number of the patent;” or (2)
`
`“fixing thereon the word ‘patent’ or the abbreviation ‘pat.’ together with an address of a posting
`
`on the Internet . . . that associates the patented article with the number of the patent.” 35 U.S.C.
`
`§ 287(a). However, in the event this cannot be done due to the character of the article, the
`
`patentee is required to “[fix] to [the patented article] or to the package wherein one or more of
`
`them is contained, a label containing a like notice.” Id. “[T]he plain language of the statute
`
`requires marking when a product is made, sold, offered for sale, or imported.” WiAV Solutions
`
`LLC v. Motorola, Inc., 732 F. Supp. 2d 634, 641-43 (E.D. Va. 2010). In the present case, there is
`
`clearly an article to be marked, i.e., the portions of the Q-Marine system falling under the patent
`
`claims.
`
`Where the patent contains both apparatus and method claims and there is “a physical
`
`device produced by the claimed method that [is] capable of being marked,” then the patentee
`
`must still comply with the marking requirements of Section 287(a). Am. Med. Sys., Inc. v. Med.
`
`2881590v1
`
`2
`
`WesternGeco Ex. 2029, pg. 2
`IPR2015-00565
`ION v WesternGeco
`
`

`

`Case 4:09-cv-01827 Document 502 Filed in TXSD on 08/13/12 Page 3 of 6
`
`Eng’g Corp., 6 F.3d 1523, 1538-39 (Fed. Cir. 1993) (concluding the patentee “was required to
`
`mark its product pursuant to section 287(a) in order to recover damages under its method claims
`
`prior to actual or constructive notice being given to [the alleged infringer]”); see also Tesco
`
`Corp., 722 F. Supp. 2d at 769 (finding that because the patentee had “asserted both product and
`
`method claims in [the] suit, the marking requirements of Section 287 [were] applicable.”).
`
`The patentee bears the burden of pleading and proving at trial by a preponderance of the
`
`evidence that the patentee fully complied with the statute. Nike, Inc., 138 F.3d at 1446. To
`
`overcome this burden,
`
`the patentee may show by a preponderance of the evidence that
`
`“substantially all of its [patented articles] being [made, sold, offered for sale, or imported] were
`
`marked, and that once marking was begun,
`
`the marking was substantially consistent and
`
`continuous.” Id. The patentee may also show compliance by demonstrating that it has never
`
`made, offered for sale, sold, or imported patented products within the United States. See WiAV
`
`Solutions, 732 F. Supp. 2d at 642-43 (placing the burden on the patentee to demonstrate that its
`
`patented products were not made, sold, or offered for sale in the United States); see also PACT
`
`XPP Techs., AG v. Xilinx, Inc., No. 2:07-CV-563, 2012 WL 1029064, at *2-3 (E.D. Tex. Mar.
`
`26, 2012) (holding that the patentee had the burden of proof at summary judgment and at trial
`
`that “it never made, offered for sale, sold, or imported patented product within the United
`
`States”); cf. DR Sys., Inc. v. Eastman Kodak Co., No. 08-CV-0669, 2009 WL 2632685, at *4
`
`(S.D. Cal. Aug. 24, 2009) (holding that the patentee has the burden to prove the nonexistence of
`
`patented articles made or sold in the United States).
`
`When a patentee fails to meet this burden, the patentee is precluded from recovering
`
`damages for any infringement that occurs prior to the date the alleged infringer was notified of
`
`the infringement. See 35 U.S.C. § 287(a). For example, absent actual or constructive notice, a
`
`2881590v1
`
`3
`
`WesternGeco Ex. 2029, pg. 3
`IPR2015-00565
`ION v WesternGeco
`
`

`

`Case 4:09-cv-01827 Document 502 Filed in TXSD on 08/13/12 Page 4 of 6
`
`patentee would be precluded from recovering damages for infringement that occurs prior to the
`
`filing of the original complaint. Id. (“Filing of an action for infringement shall constitute such
`
`notice.”).
`
`WesternGeco Failed to Meet it Burden of Proof
`
`To recover damages for any infringement occurring before WesternGeco filed suit,
`
`WesternGeco had to prove one of the following: (1) ION received actual notice of infringement
`
`from WesternGeco; (2) ION received constructive notice of infringement because WesternGeco
`
`marked its patented system; or (3) WesternGeco complied with the marking statute because
`
`WesternGeco did not make, offer to sell, or sell within the United States the patented article.
`
`Here, no reasonable jury could find that WesternGeco made a sufficient showing of compliance.
`
`First, WesternGeco failed to introduce any evidence that ION received actual notice of
`
`infringement from WesternGeco before the lawsuit was filed. Second, there is no evidence that
`
`WesternGeco ever marked its patented Q-Marine system. And third, WesternGeco failed to
`
`demonstrate that it has never made its patented Q-Marine system in the United States.
`
`A claimed system is “made” at the place the system is assembled for operable use, i.e. the
`
`place where all of the claim elements are combined. Cf. Deepsouth Packing Co. v. Laitram
`
`Corp., 406 U.S. 518, 529 (1972); Centillion Data Sys., LLC v. Quest Commc’n Int’l Inc., 631
`
`F.3d 1279, 1288 (Fed. Cir. 2011).1 There is no evidence upon which a reasonable jury could
`
`conclude that WesternGeco never assembled its Q-Marine system for a 3D survey in the United
`
`States.
`
`In fact, the testimony of Mark Zajac indicates that WesternGeco’s patented Q-Marine
`
`system may have been assembled in the United States. See Tr. Tran. 952:15—953:13.
`
`1 Contrary to WesternGeco’s arguments at the charge conference, ION has not changed its
`position concerning what it takes to “make” a patented system.
`
`2881590v1
`
`4
`
`WesternGeco Ex. 2029, pg. 4
`IPR2015-00565
`ION v WesternGeco
`
`

`

`Case 4:09-cv-01827 Document 502 Filed in TXSD on 08/13/12 Page 5 of 6
`
`Because WesternGeco failed to meet its burden of proof of compliance with the notice
`
`statute, WesternGeco cannot recover damages for infringement occurring prior to June 12,
`
`2009—the date WesternGeco filed suit against ION. Consequently, the jury charge should
`
`include an affirmative statement to this effect.
`
`Dated: August 13, 2012
`
`Respectfully submitted,
`
`/s/ David L. Burgert
`David L. Burgert
`ATTORNEY IN CHARGE
`State Bar No. 03378300
`Federal I.D. No. 2084
`dburgert@porterhedges.com
`Ray T. Torgerson
`State Bar No. 24003067
`Federal I.D. No. 22846
`rtorgerson@porterhedges.com
`Jonathan M. Pierce
`State Bar No. 24027744
`Federal I.D. No. 23801
`jpierce@porterhedges.com
`PORTER HEDGES LLP
`1000 Main Street, 36th Floor
`Houston, Texas 77002-6336
`Telephone: (713) 226-6668
`Facsimile:
`(713) 226-6268
`
`ATTORNEYS FOR DEFENDANT
`ION GEOPHYSICAL CORPORATION
`
`2881590v1
`
`5
`
`WesternGeco Ex. 2029, pg. 5
`IPR2015-00565
`ION v WesternGeco
`
`

`

`Case 4:09-cv-01827 Document 502 Filed in TXSD on 08/13/12 Page 6 of 6
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on the 13th of August, 2012, the foregoing was
`electronically filed with the Clerk of Court using the CM/ECF system which will send
`notification of such filing to the following:
`
`Lee L. Kaplan, Esq.
`SMYSER KAPLAN & VESELKA, L.L.P.
`700 Louisiana, Suite 2300
`Houston, TX 77002
`Tel: 713-221-2323
`Fax: 713-221-2320
`E-mail: lkaplan@skv.com
`
`Timothy K. Gilman, Esq.
`Simeon G. Papacostas, Esq.
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, NY 10022
`Tel: 212-446-4689
`Main: 212-446-4800
`Fax: 212-446-4900
`E-mail: tgilman@kirkland.com
`E-mail: spapacostas@kirkland.com
`
`Gregg F. LoCascio, P.C.
`KIRKLAND & ELLIS LLP
`655 Fifteenth Street, N.W.
`Washington, D.C. 20005
`Tel: 202-879-5290
`Fax: 202-879-5200
`E-mail: glocascio@kirkland.com
`
`ATTORNEYS FOR PLAINTIFF
`WESTERNGECO L.L.C.
`
`Gordon T. Arnold, Esq.
`Anthony W. Hong, Esq.
`ARNOLD & KNOBLOCH LLP
`4900 Woodway, Suite 900
`Houston, TX 77056
`Telephone: 713-972-1649
`Facsimile: 713-972-1180
`Email: GArnold@arnold-iplaw.com
`Email: AHong@arnold-iplaw.com
`
`John M. Elsley, Esq.
`Rachel de Cordova, Esq.
`ROYSTON, RAYZOR, VICKERY
`& WILLIAMS, L.L.P.
`711 Louisiana, Suite 500
`Houston, TX 77002
`Telephone: 713-224-8380
`Facsimile: 713-225-9945
`Email: John.Elsley@roystonlaw.com
`Email: rachel.decordova@roystonlaw.com
`
`ATTORNEYS FOR DEFENDANTS,
`FUGRO-GEOTEAM, INC.,
`FUGRO-GEOTEAM AS, FUGRO
`NORWAY MARINE SERVICES AS,
`FUGRO, INC., FUGRO (USA), INC., and
`FUGRO GEOSERVICES, INC.
`
`/s/ David L. Burgert
`David L Burgert
`
`2881590v1
`
`6
`
`WesternGeco Ex. 2029, pg. 6
`IPR2015-00565
`ION v WesternGeco
`
`