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
`GEOSERVICES, INC.,
`
`Defendants.
`
`ION'S FINAL INVALIDITY CONTENTIONS
`
`In accordance with the parties' agreement, the Court's Markman ruling, and the Court's
`
`Local Patent Rules (particularly P.R. 3-3), Defendant ION Geophysical Corporation ("ION"),
`
`submits its Final Invalidity Contentions identifying prior art and other grounds that invalidate the
`
`asserted claims of U.S. Patent Nos. 6,691,038 ("the '038 patent"), 6,932,017 ("the '017 patent"),
`
`7,080,607 ("the '607 patent"), 7,162,967 ("the '967 patent"), and 7,293,520 ("the '520 patent)
`
`(collectively, "WesternGeco's asserted patents" or "WesternGeco's patents-in-suit"). Attached
`
`as part of ION's Final Invalidity Contentions are claim charts in accordance with P.R. 3-3(c),
`
`outlining in detail the basis for ION's contentions at the present time that the asserted claims of
`
`WesternGeco's patents-in-suit are invalid on various grounds under Title 35.
`
`I.
`
`INTRODUCTION
`
`lON's Final Invalidity Contentions address the Claims of WesternGeco's patents-in-suit
`
`asserted against ION in the Disclosures of Asserted Claims and Final Infringement Contentions
`
`("FICS") submitted by WesternGeco, L.L.c. ("WesternGeco"). WesternGeco asserts that ION
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`infringes claims 1-7, 10-11, 13-17,20-32,35-36,38-42, and 45-50 of the '038 patent; claims 1-9
`
`and 16 of the '017 patent; claims 1-9 and 15 of the '607 patent; claims 1,4-10, and 15 of the
`
`'967 patent, and claims 1-3,6-20, and 23-34 of the '520 patent. Finally, ION does not accept
`
`WestemGeco's allcgation that all asserted claims of the '017, '967, '607, and '520 patents are
`
`entitled to a priority date of October 1, 1998. As such, upon a determination of the actual
`
`priority date of the patents-in-suit, ION reserves the right to supplement its Final Invalidity
`
`Contentions with prior art based on the then-established priority dates.
`
`Where a feature of a prior art reference is not specifically identified in the attached claim
`
`charts as corresponding to a claim limitation, the lack of specific identification should not be
`
`regarded as a concession by ION that the prior art reference does not embody the claim
`
`limitation when the reference is properly interpreted from the perspective of one skilled in the
`
`relevant art. WestemGeco has not
`
`identified which elements of the asserted claims (or
`
`combinations thereo!) it contends were not known to one of ordinary skill in the art at thc time of
`
`thc alleged inventions of WestemGeco's patents-in-suit.
`
`For any claim limitation that
`
`WestemGeco alleges is not disclosed in a particular prior art reference, ION reserves the right to
`
`prove that such limitation is either inherent in the reference or obvious to one of ordinary skill in
`
`the art at the relevant time, or that the limitation is disclosed in one or more other prior art
`
`references that, when combined, renders the asserted claims obvious under 35 U.S.C. § 103.
`
`The prior art references produced by ION in conneetion with these contentions are
`
`representative of the state of the prior art pertinent to invalidity.
`
`ION reserves the right to
`
`identify other prior art or to supplement its disclosures or contcntions under the following
`
`circumstances:
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`(i)
`
`ION reserves the right to amend these contentions and disclosures as new
`
`information becomes available.
`
`(ii)
`
`ION has not yet eompleted its discovery from WesternGeco. Sueh
`
`diseovery may include information that affeets the disclosures and eontentions
`
`herein.
`
`(iii)
`
`ION has also not yet eompleted its diseovery from third parties who may \
`
`have information eoneerning additional prior art. Such diseovery may include
`
`information that affeets the disclosures and eontentions herein.
`
`The attaehed claim eharts eite particular teaehings and/or disclosures of the prior art as
`
`applied to features of the asserted claims. However, persons of ordinary skill in the art may view
`
`an item of prior art in the eontext of other publieations, literature, produets, and teehnieal
`
`knowledge. Thus, ION also reserves the right to rely on non-eited portions of the prior art
`
`referenees, related file histories, other publieations or testimony as aids in understanding and
`
`interpreting the eited portions, as providing context to the art, and as additional evidenee that the
`
`prior art discloses a claim element.
`
`ION further reserves the right to rely on non-eited portions
`
`of the prior art referenees, related file histories, other publieations, and testimony to establish that
`
`a person of ordinary skill in the art would have been motivated to eombine eertain of the cited
`
`referenees to render the asserted claims obvious.
`
`ION also reserves the right to rely upon, and
`
`incorporates herein by referenee the invalidity eontentions and prior art disclosed by
`
`WesternGeeo and/or the Fugro Defendants.
`
`These Final Invalidity Contentions are not an admission by ION that
`
`the aecused
`
`produets (including any eurrent or past version of these produets) are eovered by or infringe the
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`asserted claims of WesternGeco's patents-in-suit, particularly when these claims arc properly
`
`construed.
`
`II.
`
`IDENTIFICATION OF PRIOR ART
`
`Pursuant to P.R. 3-3(a), ION provides the following list of prior art references that it
`
`contends anticipate (pursuant to 35 U.S.C. § 102) and/or render obvious (pursuant to 35 U.S.C.
`
`§ 103) the asserted claims of WesternGeco's patents-in-suit. The following identification of
`
`references, thc identification of rcferences in Section 1II and the attached claim charts are to be
`
`considered as a whole, and all contentions made among them are to be considered as a whole.
`
`In
`
`the event the identification of references in Section 1II and/or a claim chart provides a contention
`
`based on a reference not
`
`identified in this Section,
`
`that contention nevertheless is to be
`
`considcred as part of these Final Invalidity Contentions.
`
`NO.
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`DATES
`PRIOR ART REFERENCE
`September 20, 1996
`International Patent Application No. WO Filing Date:
`March 27, 1997
`Published:
`97/11395 ("Olivier '395")
`September 28, 1999
`International Patcnt Application No. WO Filing Date:
`I 2000/20895 ("Hillesund' 895")
`April 13,2000
`Published:
`December 20, 1996
`U.S. Patent No. 5,790,472 ("Workman Filing Date:
`August 4, 1998
`'472 patent")
`Issued:
`Countrv of Origin: United States
`U.S. Patent No. 4,404,664 ("Zachariadis Filing Date:
`December 31,1980
`'664 patent")
`September 13, 1983
`Issued:
`Countrv of Origin: United States
`Filing Date:
`July 7, 1995
`Issued:
`August 20, 1996
`Country of Origin: Norwav
`Filing Date:
`January 24, 1992
`April 6, 1993
`Issued:
`Country of Origin: United States
`Published Filing Date:
`December 19, 1997
`98/28636 Published:
`July 2, 1998
`
`Patent Cooperation Treaty
`Application
`No.
`WO
`("Bittleston '636 application")
`Kalman, R.E., 1960, "A New Approach to Datc of Publication: 1960
`Linear Filtering and Prediction Problems,"
`Trans of ASME-J of Basic Engineering,
`
`U.S. Patent No. 5,546,882 ('''882 patent")
`
`U.S. Patent No. 5,200,930 ('''930 patent")
`
`,
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`NO.
`
`9.
`
`PRIOR ART REFERENCE
`vol. 82 (series D).
`A copy of this
`reference is attached as Exhibit 18.
`ION's 35 U.S.C. § 102(f) prior art
`
`DATES
`
`III.
`
`SPECIFIC PRELIMINARY INVALIDITY CONTENTIONS
`
`A.
`
`Anticipation Under 35 U.S.c. § 102
`
`1.
`
`General Comments
`
`In accordance with P.R. 3-3(b) and (c), ION identifies the references in Section 2 below
`
`as anticipating the asserted claims of the WesternGeco patents-in-suit under one or more
`
`provisions of 35 U.S.C. § 102. The references are also identified in the claim charts attached
`
`hereto. The claim charts identify specific aspects of the cited prior art references that correspond
`
`to the respective claim limitations. However, the claim charts are exemplary only and include at
`
`least one citation to an anticipatory reference for each limitation of the respective asserted claim.
`
`Thus, although ION has identified at least one citation per claim limitation present in a reference,
`
`each and every disclosure of the same limitation in the same reference is not necessarily
`
`identified in the charts. A reference may contain additional support for a particular claim
`
`limitation. Persons of ordinary skill in the art generally read a prior art reference as a whole and
`
`in the context of other publications and literature, physical embodiments and knowledge in the
`
`field of art.
`
`ION thus reserves the right to rely on non-cited portions of the prior art references and on
`
`other publications and expert testimony to provide context, and as aids to understanding and
`
`interpreting the portions that are cited. To the extent any limitation is deemed not to be precisely
`
`met by an item of prior art, any purported differences are such that the claimed subject matter as
`
`a whole would have been obvious to one skilled in the art at the time of the alleged invention in
`
`view of the state of the art and knowledge of those skilled in the art. Where ION cites to a
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`particular figure in a prior art reference, the citation should be understood to encompass the
`
`eaption and description of the figure and any text relating to the figure in the reference in
`
`addition to the figure itself. Conversely, where a cited portion of text refers to a figure, the
`
`citation should be understood to include the figure as well.
`
`Where the anticipatory reference is a prior art product or physical embodiment, the
`
`attached claim charts may include citations to other materials in order to establish certain aspects
`
`of the prior art product or physical embodiment. Such citations do not diminish the anticipatory
`
`nature of the prior art product or physical embodiment. At minimum, citations to additional
`
`prior art references establish the obviousness of the respective claims, and the motivation to
`
`combine a prior art product or physical embodiment with a prior art reference discussing that
`
`prior art product or physical embodiment is self-evident.
`
`As noted above, the identification of anticipatory references, the identification of prior art
`
`references in Section II above, and the associated claim charts, are to be considered as a whole,
`
`and all contentions made among them are to be considered. Thus, in the event the identification
`
`of references in Section II and/or a claim chart provides an anticipation contention not identified
`
`below - or vice versa - that contention is nevertheless to be considered as part of these Final
`
`Invalidity Contentions.
`
`ION may also rely on the United States Patent and Trademark Office's
`
`characterizations of the teachings in and the effects of the prior art, as well as the admissions,
`
`statements, representations, and characterizations made by WestemGeco, the named inventor, or
`
`others substantively involved in the preparation or prosecution of the WestemGeco patents-in(cid:173)
`
`suit.
`
`Those
`
`statements may
`
`include
`
`admissions,
`
`statements,
`
`representations,
`
`and
`
`characterizations concerning the prior art during the prosecution of relevant patent applications,
`
`including reexamination, or any related U.S. or foreign patent applications.
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`2.
`
`Specifie Anticipation Contentions
`
`The following prior art references anticipate the respectively identificd claims of thc
`
`WesternGcco patents-in-suit, as set forth in the following claim chart exhibits:
`
`I.
`
`2.
`
`3.
`
`4.
`
`'038 Patent
`International Patent Application No. WO
`-
`2000/20895 ("Hillesund '895"). See Exhibit I.
`
`'017 Patent - U.S. Patent No. 5,790,472 ("Workman '472
`patent"). See Exhibit 2.
`
`'607 Patent - U.S. Patent No. 5,790,472 ("Workman '472
`patent"). See Exhibit 3.
`
`'967 Patent - U.S. Patent No. 5,200,930 ('''930 patent"). See
`Exhibit 4.
`
`5.
`
`ION's 35 U.S.C. § 102(f) prior art. See Exhibit 5.
`
`B.
`
`Obviousness Under 35 U.S.c. § 103
`
`1.
`
`General Comments
`
`In accordance with P.R. 3-3(b) and (c), ION identifies the following combination of
`
`references as rendering the asserted claims of the WesternGeco patents-in-suit obvious under 35
`
`U.S.C. § 103.
`
`ION also identifies and incorporates by reference the combinations identified in
`
`the referenced claim charts attached hereto.
`
`The attached claim charts demonstrate the
`
`obviousness of the asserted claim and identify specific disclosures or aspects of each reference in
`
`the combination that correspond to the respective claim limitations.
`
`For each identified
`
`combination, the full teachings of the references should be considered. The claim charts are
`
`exemplary only, and include at least one citation to one or morc of those referenccs for each
`
`claim limitation. Thus, although ION has identified at least one citation per claim limitation
`
`present in a combination of references, each and every disclosure of the same limitation in the
`
`same combination of refcrences is not necessarily identified in the chart. That is, a combination
`
`of references may contain additional support for a particular claim limitation.
`
`Persons of
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`ordinary skill in the art generally read a prior art reference as a whole and in the context of other
`
`publications and literature.
`
`ION thus reserves the right to rely on non-cited portions of the prior art references and on
`
`other publications and expert testimony to provide context and as aids to understanding and
`
`interpreting the portions that are cited. To the extent any limitation is deemed not to be exactly
`
`met by a combination of references, then any purported differences are such that the claimed
`
`subject matter as a whole would have been obvious to one skilled in the art at the time of the
`
`alIeged invention, in view of the state of the art and knowledge of those skilIed in the art. Where
`
`ION cites to a particular figure in a prior art reference, the citation should be understood to
`
`encompass the caption and description of the figure and any text relating to the figure in the
`
`reference, in addition to the figure itself. Conversely, where a cited portion of text refers to a
`
`figure, the citation should be understood to include the figure as well.
`
`Where the combination of references
`
`includes a prior art product or physical
`
`embodiment, the Section 103 claim charts may also include citations to other materials in order
`
`to establish certain aspects of the prior art product or physical embodiment. Such citations do
`
`not diminish the disclosure of the prior art product or physical embodiment. At minimum,
`
`however, citations to additional prior art references establish the obviousness of the respective
`
`claims, and the motivation to combine a prior art product or physical embodiment with a prior art
`
`reference discussing that prior art product or physical embodiment is self-evident and/or obvious
`
`to persons of ordinary skill in the relevant art at the time of the alIeged inventions of the
`
`WestemGeco patents-in-suit.
`
`Where a combination is directed to a dependent claim, but not the independent claim
`
`from which the dependent claim depends, it should be understood that the claim chart for the
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`combination incorporates
`
`the claim chart
`
`for
`
`first-identified pnor art
`
`reference in the
`
`combination. As an example, claim 2 of the '038 patent depends from claim 1. For a contention
`
`that dependent claim 2 is obvious over the combination of Reference X and Reference Y, the
`
`claim chart showing that Reference X anticipates claim I should be understood as being
`
`incorporated into the obviousness claim chart.
`
`In other words,
`
`the chart for the primary
`
`reference of a combination is incorporated by reference into any obviousness chart that identifies
`
`the primary reference.
`
`The following identification of combinations, the identification of references in Section
`
`II, and associated claim charts, are to be considered as a whole, and all contentions made among
`
`them are to be considered. Thus, in the event the identification of references in Section II and/or
`
`a claim chart provides an obviousness contention not identified below - or vice versa - that
`
`contention is nevertheless to be considered as part of these Final Invalidity Contentions.
`
`In establishing obviousness under Section 103, ION may also rely on the United States
`
`Patent and Trademark Office's characterizations of the teachings in and the effects of the prior
`
`art.
`
`ION may further rely on the admissions, statements, representations, and characterizations
`
`made by WesternGeco, the named inventor, or others substantively involved in the preparation
`
`or prosccution of
`
`the WesternGeco patents-in-suit,
`
`including admissions,
`
`statements,
`
`representations, and characterizations concerning the prior art during the prosecution of relevant
`
`patent applications, including reexamination, or any related U.S. or foreign patent applications.
`
`2.
`
`"Motivation to Combine"
`
`For each combination of references identified below and/or in an attached claim chart,
`
`ION hereby identifies a "motivation" for one of ordinary skill in the art at the time of the alleged
`
`invention of the WesternGeco patents-in-suit to combine those references. The "motivation" to
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`combine is identified in view of the Supreme Court decision in KSR In! 'I Co. v. Telejlex Inc., 550
`
`U.S. 398 (2007), and is not limited to any specific test or analytical framework for determining
`
`obviousness (such as the "teaching, suggestion, or motivation" test).
`
`It would have been obvious for a person of ordinary skill in the art at the time of the
`
`purported invention to combine each of the prior-art elements of the respective combinations
`
`identified below with other prior-art elements of those respective combinations to create a device
`
`or method having the ability to control both the depth and lateral position of marine seismic
`
`streamers using streamer positioning devices controlled by a control system that is either located
`
`on the towing vessel or the streamer positioning device or both anticipating every limitation of
`
`the asserted claims of the WesternGeco patents-in-suit. A person of ordinary skill would have
`
`found it obvious at the time of the purported invention to combine these elements, because the
`
`elements would predictably perform their known prior-art functions in said device or method to
`
`control the position of marine seismic streamers, the combination of elements would entail a
`
`simple substitution of one known element for another to achieve predictable results, and/or the
`
`combination would have been obvious to try.
`
`Each of the combinations identified below and/or in the attached claim charts relies on
`
`the substitution or incorporation of elements that were known in the prior art, as described in the
`
`cited references. All of the art cited below would have been art that one of skill in the art would
`
`have been aware of or referred to in addressing the problem claimed to be addressed by the
`
`WesternGeco patents-in-suit, as well as other problems and/or market demands prior to the date
`
`of the purported invention, providing a reason for combining that art in the manner described
`
`below. Also, as noted above,
`
`the combination of the familiar elements claimed in the
`
`WesternGeco patents-in-suit according to known methods would have been obvious because it
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`does no more than yield predictable results. The references disclosed herein describe methods
`
`that were known to offer what the WestemGeco patents-in-suit assert are improvements over the
`
`prior art. As such, one of skill in the art would have been motivated to combine them in the
`
`manner disclosed in these Final Invalidity Contentions.
`
`While not necessary, a motivation to combine may also be found in the references
`
`themselves. One of ordinary skill in the art would be motivated to combine a reference that
`
`refers to, or otherwise explicitly invites combination with, another reference.
`
`The references identified below also describe the elements of the asserted claims in
`
`sufficient detail - whether the structure and function or just the function with the structure
`
`known to one of ordinary skill in the art.
`
`In each instance, a person of ordinary skill in the art
`
`could have modified the device using the substituted or incorporated elements, and the results of
`
`the substitutions and ineorporations would have been predictable. Where substitutions or
`
`combinations have been made, each of the substituted or combined elements is similar to the
`
`original elements and provides similar functionality and/or enhancement.
`
`It would have been
`
`predictable to one skilled in the art that the modified device or system, i. e., the device or system
`
`resulting from the combined teachings of the applied references, could be substituted or
`
`incorporated into the original devices or systems and used to provide the claimed strueture or
`
`functionality without altering the purpose of the original devices or systems, or their elements.
`
`Further, the references demonstrate that a person of ordinary skill in the art already knew how
`
`the substituted or incorporated elements would operate and how they would be made.
`
`Furthermore, the WesternGeco patents-in-suit are directed generally to control systems
`
`for positioning marine seismic streamers, and persons working in the field of marine seismic
`
`technology would be aware of the researeh and development that had been done in the field.
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`Among other things, the control systems ensure proper positioning of seismic streamers towed
`
`behind vessels, which is vital to accurate marine seismic surveys. That is, while the streamers
`
`are towed behind a vessel, the control system, including streamer positioning devices, allow the
`
`user to maintain desired streamer positioning. These and other attributes of the control systems
`
`for marine seismic streamers were well known prior to 1998. For example, it was known that to
`
`complete accurate marine surveys one needed the ability to control the positioning of the marine
`
`streamers.
`
`Thus, at a minimum, the technology and state of the marine seismic streamer control
`
`system industry was such that- to the extent the claimed combinations might be viewed as not
`
`already existing by that time-they led inevitably to combinations such as those claimed in the
`
`WestemGeco patents-in-suit.
`
`Indeed, by the time of the alleged invention of the WesternGeco
`
`patents-in-suit, demands known to the design community or present in the marketplace, and the
`
`background knowledge possessed by a person having ordinary skill in the art, all provided
`
`readily apparent reason to combine the known elements in the fashion claimed by the
`
`WesternGeco patents-in-suit. Combinations of the individual claimed features, whieh have been
`
`known to the marine seismic streamer control system and marine survey communities prior to
`
`the alleged invention of the WesternGeco patents-in-suit, would have been within the ordinary
`
`creativity of one skilled in the art at the time of the purported invention, and would therefore
`
`have been obvious under 35 U.S.C. § 103.
`
`Although ION has
`
`identified the
`
`above
`
`"motivations"
`
`to combine,
`
`additional
`
`"motivations" to combine may exist. Persons of ordinary skill in the art generally read a prior art
`
`reference as a whole and in the context of other publications and literature, physical
`
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`embodiments and knowledge in the field of art. ION reserves the right to rely on such additional
`
`"motivations" to combine.
`
`3.
`
`Specific Obviousness Coutentions
`
`The following combinations of prior art references render the respectively identified
`
`claims of the WesternGeco patents-in-suit obvious under 35 U.S.C. § 103:
`
`I.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`International Patent Applieation No. WO
`-
`'038 Patent
`2000/20895 ("Hillesund '895"). See Exhibit 6.
`
`International Patent Applieation No. WO
`-
`'038 Patent
`297111395 ("Olivier '395"). See Exhibit 7.
`
`International Patent Application No. WO
`-
`'038 Patent
`2000/20895 ("Hillesund '895") & U.S. Patent No. 5,200,930
`('''930 patent"). See Exhibit 8.
`
`International Patent Applieation No. WO
`-
`'038 Patent
`2000/20895 ("Hillesund '895") & U.S. Patent No. 5,546,882
`('''882 Patent"). See Exhibit 9.
`
`'017 Patent - U.S. Patent No. 5,790,472 ("Workman '472
`patent. See Exhibit 10.
`
`'017 Patent - U.S. Patent No. 5,790,472 ("Workman '472
`patent") & Kalman, R.E., 1960, "A New approach to Linear
`Filtering and Prediction Problems," Trans of ASME-J. of
`Basic Engineering, vol. 82 (Series D). See Exhibit II.
`
`'967 Patent - U.S. Patent No. 5,790,472 ("Workman '472
`patent") & International Patent Application No. WO 98/28636
`("Bittleston '636 applieation"). See Exhibit 12.
`
`'607 Patent - U.S. Patent No. 5,790,472 ("Workman '472
`patent") & Kalman, R.E., 1960, "A New approach to Linear
`Filtering and Prediction Problems," Trans of ASME-J. of
`Basie Engineering, vol. 82 (Series D). See Exhibit 13.
`
`'607 Patent - U.S. Patent No. 5,790,472 ("Workman '472
`patent") & International Patent Application No. WO 98/28636
`("Bittleston '636 applieation"). See Exhibit 14.
`
`10. '967 Patent - U.S. Patent No. 4,404,664 ("Zachariadis '664
`patent") & International Patent Application No. WO 297/11395
`("Olivier '395"). See Exhibit 15.
`
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`11. '607 Patent - U.S. Patent No. 5,790,472 ("Workman '472
`patent. See Exhibit 16.
`
`12. '017 Patent - U.S. Patent No. 5,790,472 ("Workman '472
`patent"), Kalman, R.E., 1960, "A New approach to Linear
`Filtering and Prediction Problems," Trans of ASME-J. of
`Basic Engineering, vol. 82 (Series D), and U.S. Patent No.
`4,404,664 ("Zachariadis '664 patent"). See Exhibit 17.
`
`ION also contends, in the alternative, that each of the anticipatory references identified
`
`above in Section III.A.2 and in the attached claim charts render all of the asserted claims obvious
`
`when standing alone and when considered in view of the knowledge of one skilled in the art at
`
`the time of the alleged inventions of the WesternGeco patents-in-suit. Thus, for any claim or
`
`claim element that is shown in a claim chart as being anticipated, ION also contends, in the
`
`alternative, that the claim or claim element is rendered obvious in view of the same identified
`
`disclosure in each of the anticipatory references identified herein.
`
`In other words, for all of the
`
`anticipatory references identified above, ION contends,
`
`in the alternative,
`
`that each of the
`
`respective anticipatory references renders each asserted claim obvious on its own without the
`
`need to combine the identified anticipatory reference with any other reference.
`
`Alternatively, should WesternGeco assert that a given claim element is missing from a
`
`given anticipatory reference, ION reserves the right to argue that it would have been obvious to
`
`combine the reference with anyone of the above-mentioned obviousness references to provide
`
`the purportedly missing element.
`
`IV.
`
`INVALIDITY UNDER 35 U.S.c. § 112
`
`Pursuant to P.R. 3-3(d), ION identifies exemplary bases for invalidating the asserted
`
`claims of the WesternGeco patents-in-suit for indefiniteness,
`
`lack of an adequate written
`
`description, lack of enablement, and/or failure to disclose the best mode.
`
`ION does not address
`
`the failure of any ancestor application to support the asserted claims here as required for the
`
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`claims to gam benefit of any filing date(s) of any ancestor application. As such, upon
`
`deternlination that any ofWesternGeco's asserted priority dates for the WesternGeco patents-in(cid:173)
`
`suit are inapplicable, ION reserves the right to supplement its contentions based on additional
`
`prior art dated after the alleged priority dates. Further, ION reserves the right to assert invalidity
`
`based on any and all other grounds not referenced herein and not required to be disclosed in
`
`these contentions.
`
`Each asserted claim of the WesternGeco patents-in-suit is invalid under 35 U.S.C. § 112
`
`for failure to particularly point out and distinctly claim the subject matter the inventor regards as
`
`the alleged invention(s) and thus are fatally indefinite. Further, each asserted claim is invalid
`
`under 35 U.S.c. § 112 in that the specification does not set forth the alleged invention(s) so as to
`
`enable a person skilled in the art to make and use them without undue experimentation. For
`
`example, in a number of internal feasibility reports, development plans, specifications, tests, and
`
`other documents predating the filing of the WesternGeco patents-in-suit (e.g., WG00009017(cid:173)
`
`9125; WGOOOOI520-1611; WG00008668-754; WG00008560-667; WGOOOI1673-780;
`
`WGOOOO 1728-48; WG00063947-82; WGOOO 11781-826; WG00008050-294; WGOOO 11936-59;
`
`WG00008351-559; WG0361080-84; WG00013052-85; and WG0062727-43), WesternGeco
`
`identifies a number of "requirements" that are not disclosed in the patents-in suit. Moreover,
`
`each asserted claim is invalid under 35 U.S.C. § 112 for failing to disclose thc preferred
`
`embodiment.
`
`WesternGeco's asscrted claims are invalid for failing to disclose the best mode. As set
`
`forth above, WesternGeco failed to disclose certain "requirements" in the patents-in-suit.
`
`Invalidity based on failure to disclose the best mode is a fact intensive inquiry that requires
`
`discovery on the inventor(s) state of mind at the time of invention and patenting.
`
`ION reserves
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`the right to supplement its best mode contentions upon further discovery from WesternGeco.
`
`Subject to ION's right to supplement, the named inventors of the WesternGeco patcnts-in-suit
`
`knew of a preferred mode that was better than the mode disclosed in the WesternGeco patents(cid:173)
`
`in-suit but concealed this preferred mode from the public. The disclosures in the WesternGcco
`
`patents-in-suit were not adequate enough to enable one skilled in the pertinent art to practice the
`
`best mode.
`
`Although the claims of the WesternGeco patents-in-suit appear to require a particular
`
`structure, the corresponding written description in the patents is inadequate under Section 112
`
`because it does not enable persons skilled in the art to make and use the alleged inventions
`
`without undue experimentation. For example, '017 patent claim 1 requires "calculating desired
`
`changes in the orientation" of the wings. Persons skilled in the art could not determine from
`
`reading the patent specification the limits,
`
`if any,
`
`imposed on the changes to the wing's
`
`orientation.
`
`Similar indefiniteness issues exist in the asserted independent claims of the '017, '038
`
`and '607 patents and thus all dependent claims as well. Furthermore, many of the asserted
`
`dependent claims of the WesternGeco patents-in-suit also suffer from similar indefiniteness
`
`issues. Each asserted claim is also invalid under 35 V.S.c. § 112 because the written description
`
`does not reflect that the inventors were in possession of the claimed invention(s).
`
`Based on WesternGeco's Infringement Contentions it appears that WesternGeco IS
`
`asserting a meaning and scope for the bolded language that goes beyond any written description
`
`support in the specifications of the patents-in-suit and results in a claim scope that is not enabled
`
`by the specifications. However, because WesternGeco's Infringement Contentions are not
`
`entirely clear as to these issues, in view of the fact that WesternGeco has not yet provided
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`proposed claim constructions for any claim term, and in view of the fact that the Court has not
`
`construed these terms yet,
`
`ION