`Tel: 571-272-7822
`
`Paper 15
`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.
`
`Cases1
`IPR2015-00565 (Patent 7,293,520)
`IPR2015-00566 (Patent 7,162,967)
`IPR2015-00567 (Patent 7,080,607)
`
`
`
`
`
`
`
`
`
`
`Before SCOTT A. DANIELS, BEVERLY M. BUNTING, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`1 This Order addresses issues that are the same in all three cases. Therefore,
`we exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`
`
`IPR2015-00565 (Patent 7,293,520)
`IPR2015-00566 (Patent 7,162,967)
`IPR2015-00567 (Patent 7,080,607)
`
`
`On March 17, 2015, a conference call was held in the above
`
`proceedings regarding a request via email by WesternGeco for additional
`
`discovery. Present on the call were counsel for ION, WesternGeco, and
`
`Administrative Patent Judges Bryan Moore, Scott Daniels, Beverly Bunting,
`
`and Barbara Parvis.
`
`Motion for Additional Discovery
`
`Patent Owner requested authorization to file a motion seeking
`
`additional discovery on the issue of whether Petroleum Geo-Services Inc.
`
`(“PGS”) is controlling ION in this proceeding such that it should have been
`
`named a real party in interest.2 In support of this request, Patent Owner
`
`pointed to the fact that WesternGeco has filed lawsuits against PGS and ION
`
`in district court. WesternGeco also alleges that now before the USPTO,
`
`PGS and ION have coordinated efforts to attack the validity of the ’520,
`
`’607, and ’967 patents. According to WesternGeco, an example of this
`
`coordination is that ION abandoned its appeal to the Federal Circuit when
`
`PGS filed its inter partes reviews (the “PGS IPR’s”). WesternGeco stated
`
`during the call that PGS representatives attended the trial in the ION lawsuit
`
`and that certain exhibits in the PGS IPR’s identify an indemnification
`
`agreement between PGS and ION. Specifically, WesternGeco asserted that
`
`a Master Services Agreement between PGS and ION, filed as an exhibit in
`
`the PGS IPR’s, apparently relating to the allegedly infringing DigiFin
`
`product, is indicative of the existence of an indemnification agreement.
`
`
`2 PGS is the Petitioner in IPR2014-00687, IPR2014-00688, and IPR2014-
`00689 (the “PGS IPR’s”) relating to the same patents at issue in these
`proceedings.
`
`2
`
`
`
`IPR2015-00565 (Patent 7,293,520)
`IPR2015-00566 (Patent 7,162,967)
`IPR2015-00567 (Patent 7,080,607)
`
`
`WesternGeco suggested that these circumstances and exhibits in the
`
`PGS IPR’s show that PGS at least has the opportunity to control ION in this
`
`proceeding. WesternGeco, however, was unable to point to any new
`
`evidence apart from that of record in the PGS IPR’s, or evidence of record in
`
`the present proceedings that would lead us to conclude that this proceeding
`
`is being controlled by PGS, rather WesternGeco pointed to facts and
`
`circumstances indicating that PGS and ION share a mutual interest to
`
`invalidate the patents at issue in these proceedings.
`
`Petitioners’ counsel opposed the request to file a motion. The Board
`
`took the request under advisement.
`
`As an initial matter, we note that certain exhibits, including the Master
`
`Services Agreement referred to by WesternGeco during the call are not of
`
`record in these proceedings and are sealed in the PGS IPR’s. Currently, ION
`
`does not have access to those exhibits and stated that it was unaware of the
`
`contents of these exhibits. Moreover, with the exception of the Master
`
`Services Agreement, we have already dealt with the subject matter of these
`
`exhibits and the alleged facts and circumstances apparently indicating
`
`collusion between ION and PGS, in the PGS IPR’s.3 On this record, and in
`
`the absence of any new evidence, we refer ION and WesternGeco to our
`
`decision with respect to real party in interest between ION and PGS in the
`
`PGS IPR’s. See Apple v. Mobile Telecommunications Technologies, LLC,
`
`Case IPR2014-00689, slip op. at 15–25 (PTAB Dec. 15, 2014) (Paper 32)
`
`
`3 The Master Services Agreement was filed as an exhibit in each of the PGS
`IPR’s with Westerngeco’s Patent Owner Response on March 20, 2015.
`
`
`3
`
`
`
`IPR2015-00565 (Patent 7,293,520)
`IPR2015-00566 (Patent 7,162,967)
`IPR2015-00567 (Patent 7,080,607)
`
`
`The mere allegation of WesternGeco, without more, is not enough to
`
`persuade us that something useful will result from authorizing the proposed
`
`motion. In the absence of any such showing, the request for authorization is
`
`denied at this time.
`
`
`
`It is
`
`ORDERED that Patent Owner’s request for authorization to file a
`
`motion for additional discovery under 37 C.F.R. § 42.51(b)(2) is denied.
`
`
`
`4
`
`
`
`IPR2015-00565 (Patent 7,293,520)
`IPR2015-00566 (Patent 7,162,967)
`IPR2015-00567 (Patent 7,080,607)
`
`
`
`
`
`For PETITIONERS:
`
`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
`
`
`
`
`
`5
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`