Petroleum Geo-Services, Inc. and ION GEOPHYSICAL CORPORATION AND ION INTERNATIONAL S.A.R.L,v.WesternGeco, L.L.C.

Patent Trial and Appeal Board

Dec 15, 2015

11454352 (P.T.A.B. Dec. 15, 2015)

Trials@uspto.gov Paper 100
571-272-7822 Entered: December 15, 2015

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.,
Petitioner,

v.

WESTERNGECO LLC,
Patent Owner.
____________

Case IPR2014-00687
1

Patent 7,162,967 B2
____________

Before BRYAN F. MOORE, SCOTT A. DANIELS, and
BEVERLY M. BUNTING, Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

1
Case IPR2015-00566 has been joined with this proceeding.
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2
I. INTRODUCTION
A. Background
Petroleum Geo-Services (“Petitioner,” or “PGS”) filed a Petition to
institute an inter partes review of claims 1 and 15 of U.S. Patent No.
7,162,967 B2 (“the ’967 patent”).
2
Paper 1 (“PGS Pet.”). WesternGeco LLC
(“Patent Owner”) timely filed a Preliminary Response. Paper 26 (“First
Prelim. Resp.”). We instituted trial in Petroleum Geo-Services, Inc., v.
WesternGeco L.L.C., Case IPR2014-00687, (the “PGS IPR”), for claims 1
and 15 of the ’967 patent on certain grounds of unpatentability alleged in the
Petition. Paper 33 (“Decision to Institute” or “Inst. Dec.”). Patent Owner,
in due course, filed a Response. Paper 44 (“Response”). Petitioner
subsequently filed a Reply. Paper 77 (Reply).
In a separate proceeding, ION Geophysical Corporation and ION
International S.A.R.L., v. WesternGeco L.L.C., Case IPR2015-00566 (PTAB
Jan. 14, 2015) (the “ION IPR”), ION Geophysical Corporation and ION
International S.A.R.L. (“ION”) also filed a Petition to institute an inter
partes review of claims 1 and 15 of the ’967 patent. Paper 3 (“ION Pet.”).
With their Petition, ION also filed a Motion for Joinder, Paper 4 (“Mot.”),
seeking to join the ION IPR with the PGS IPR. Mot. 2. Patent Owner filed
an Opposition to ION’s Motion for Joinder. Paper 10 (“Opp.,”). We
instituted trial in the ION IPR and granted ION’s Motion for Joinder. Paper

2
The Petition was initially accorded the filing date of April 23, 2014. Paper
6. Following submission of an updated Mandatory Notice (Paper 18) on
August 5, 2014, including additional real-parties-in-interest, the filing date
of the Petition was changed to August 5, 2014 and we exercised our
discretion under 37 C.F.R. § 42.5(c) to set a new deadline for Patent
Owner’s preliminary response. Paper 22, 6.
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53 (“ION Decision to Institute” or “ION Inst. Dec.”). We ordered ION not
to file papers, engage in discovery, or participate in any deposition or oral
hearing in IPR2014-00687 without obtaining authorization. ION was,
however, permitted to appear in IPR2014-00687 so that it could receive
notification of filings and attend depositions and the oral hearing. Patent
Owner subsequently filed a Preliminary Response to ION’s Petition. Paper
70 (“ION Prelim. Resp.”).
An oral hearing was held on July 30, 2015. A transcript of the hearing
is included in the record. Paper 99 (“Tr.”).
The Board has jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has proven, by a
preponderance of the evidence, that claims 1 and 15 of the ’967 patent are
unpatentable.
B. Additional Proceedings
Lawsuits involving the ’967 patent presently asserted against
Petitioner include WesternGeco LLC v. Petroleum Geo-Services, Inc., 4:13-
cv-02725 (the “PGS lawsuit”) in the Southern District of Texas and
WesternGeco LLC v. ION Geophysical Corp., 4:09-cv- 01827 (the “ION
lawsuit”) also in the Southern District of Texas. ION Pet. 10.
The ’967 patent is related to the patents involved in IPR2014-00688
and IPR2014-00689.
C. The ’967 Patent
The ’967 patent (Ex. 1001), titled “Control System for Positioning of
Marine Seismic Streamers,” generally relates to a method and apparatus for
improving marine seismic survey techniques to more effectively control the
movement and positioning of marine seismic streamers towed in an array
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behind a boat. Ex. 1001, 1:24–36. As illustrated in Figure 1 of the ’967
patent, reproduced below, labeled “Prior Art”, a seismic source is towed by
boat 10, for example air gun 14, producing acoustic signals which are
reflected off the earth below. Id. at 3:41–43.

Figure 1 depicts an array of seismic streamers 12 towed behind vessel
10. The streamers each have a plurality of horizontally and vertically
steerable “birds” 18 also referred to in the ’967 patent as “streamer
positioning devices.” Id. at 3:53–55. In this Decision we use the terms
“birds,” “streamer positioning devices,” or “SPD’s,” interchangeably. The
reflected acoustic signals are received by hydrophones (no reference
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number) attached to streamers 12, and the signals “digitized and processed
to build up a representation of the subsurface geology.” Id. at 1:38–41.
Birds 18 are horizontally and vertically steerable and control the shape and
position of the streamer in both vertical (depth) and horizontal directions.
Id. at 3:53–61. The birds’s job is usually to maintain the streamers in their
linear and parallel arrangement, because, when the streamers are
horizontally out of position, the efficiency of the seismic data collection is
compromised. Id. at 2:14–17. The most important task of the birds,
according to the ’967 patent, is to keep the streamers from tangling. Id. at
4:4–5.
In order to obtain accurate survey data, it is necessary to control the
positioning of the streamers, both vertically in the water column, as well as
horizontally against ocean currents and forces, which can cause the normally
linear streamers to bend and undulate and, in some cases, become entangled
with one another. Id. at 1:42–2:25. As depicted by Figure 1, each streamer
12 is maintained in a generally linear arrangement behind the boat by
deflector 16 which horizontally positions the end of each streamer nearest
the vessel. Id. at 1:43–45. Drag buoy 20 at the end of each streamer farthest
from the vessel creates tension along the streamer to maintain the linear
arrangement.
Figure 1 also discloses global control system 22 positioned on vessel
10. The ’967 patent states that “the control system for the birds 18 is
distributed between a global control system 22 located on or near the seismic
survey vessel 10 and a local control system located within or near the birds
18.” Id. at 3:62–66. The global control system 22 on the vessel can be
connected to the vessels navigation system to obtain various parameters
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“such as the vessel’s towing direction and velocity and current direction and
velocity, from the vessel's navigation system.” Id. at 4:1–3.
Figure 2 of the ’967 patent, reproduced below, illustrates a preferred
embodiment of bird 18 as it relates to the described invention.

As depicted by Figure 2 of the ’967 patent, when the streamers are
towed, birds 18 are capable of controlling their own position, and hence the
position of streamer 12, in both horizontal and vertical directions. Id. at
5:34–36.
In a preferred embodiment according to the ’967 patent, the “global
control system 22 monitors the actual positions of each of the birds 18 and is
programmed with the desired positions of or the desired minimum
separations between the seismic streamers 12.” Id. at 4:22–25. The control
system uses the desired and actual position of the birds to “regularly
calculate updated desired vertical and horizontal forces the birds should
impart on the seismic streamers 12 to move them from their actual positions
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to their desired positions.” Id. at 4:37–40. The ’967 patent further states
that as part of the overall control system “global control system 22
preferably calculates the desired vertical and horizontal forces based on the
behavior of each streamer and also takes into account the behavior of the
complete streamer array.” Id. at 4:53–57.
D. Illustrative Claim
Claims 1 and 15 are independent. Claim 1 is a method claim, and
claim 15, reproduced below, an apparatus claim, illustrates the claimed
subject matter:
15. An array of seismic streamers towed by a towing
vessel comprising:
(a) a plurality of streamer positioning devices on or inline
with each streamer, at least one of the streamer positioning devices
having a wing;
(b) a global control system transmitting location information to at
least one local control system on the at least one streamer
positioning device having a wing, the local control system
adjusting the wing.

Ex. 1001, 12:33–41 (emphasis added).

E. The Alleged Grounds of Unpatentability
Petitioner contends that the challenged claims are unpatentable on the
following specific grounds.
3

References Basis Claims Challenged
’636 PCT
4
§ 102 1 and 15

3
Petitioner supports its challenge with Declarations of Dr. Brian J. Evans,
Ph.D. (Ex. 1002)(“Evans Decl.”) and Dr. Jack H. Cole, Ph.D. (Ex.
1003)(“Cole Decl.”). See infra.
4
Ex. 1004, WO 98/28636 (July 2, 1998).
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’636 PCT § 103 1 and 15

II. CLAIM CONSTRUCTION
A. Legal Standard
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
also In re Cuozzo Speed Techs., LLC., 778 F.3d 1271, 1278–82 (Fed. Cir.
2015) (“Congress implicitly approved the broadest reasonable interpretation
standard in enacting the AIA,” and “the standard was properly adopted by
PTO regulation.”). Claim terms are given their ordinary and customary
meaning as would be understood by a person of ordinary skill in the art at
the time of the invention and in the context of the entire patent disclosure.
In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). If the
specification “reveal[s] a special definition given to a claim term by the
patentee that differs from the meaning it would otherwise possess[,] . . . the
inventor’s lexicography governs.” Phillips v. AWH Corp., 415 F.3d 1303,
1316 (Fed. Cir. 2005) (en banc) (citing CCS Fitness, Inc. v. Brunswick
Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)).
If an inventor acts as his or her own lexicographer, the definition must
be set forth in the specification with reasonable clarity, deliberateness, and
precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243,
1249 (Fed. Cir. 1998). If a feature is not necessary to give meaning to what
the inventor means by a claim term, it would be “extraneous” and should not
be read into the claim. Renishaw PLC, 158 F.3d at 1249; E.I. du Pont de
Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir.
1988). Only terms which are in controversy need to be construed, and then
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only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v.
Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
We apply these general rules in construing the claims of the ’967
patent.
In our Decision to Institute, we construed only one term, determining
that “local control system” means “a control system located on or near the
streamer positioning devices.” Inst. Dec. 9–10. Based on the full record
developed during trial, we adopt that construction for purposes of this
Decision and provide construction for the following additional claim terms.
B. Global Control System
Patent Owner contends that the broadest reasonable interpretation of
“global control system” is “a control system configured to coordinate all
streamer positioning devices in the array.” PO Resp. 8 (emphasis added).
Patent Owner argues that “[t]his construction is mandated by the claim
language, specification, and the very purpose of the ’967 invention.” Id.
Patent Owner asserts that the proper understanding of “global control
system” is dependent on the ordinary meaning that the word “global” would
impart to one of ordinary skill in the art. PO Resp. 10. Patent Owner
initially points to an ordinary meaning from the MERRIAM WEBSTER
DICTIONARY, defining “global” to mean “of, relating to, or constituting, an
organic whole.” PO Resp. 10 (citing Ex. 2066). Based on this dictionary
definition, Patent Owner contends that in the context of a seismic survey
vessel towing “an array of streamers” as recited in claims 1 and 15, to a
person of ordinary skill in the art, “global,” means “that the entire array of
streamers were being controlled.” Id. at 10 (citing Ex. 2042 ¶ 91) (emphasis
added). Patent Owner’s Declarant, Dr. Triantafyllou testifies also that
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[m]y understanding of a “global control system” stems from the
use of the word “global.” This term is specific. To a POSA, it
means that the control system oversees and affects the entire
system. It is aimed at coordinated control.
Ex. 2024 ¶ 91. In support of his testimony Dr. Triantafyllou points to the
specification of the ’967 patent for two examples of how coordinated control
of the entire system can occur, e.g. by “delivering force values ‘as separate
values for each bird 18 on each streamer continuously during operation of
the control system,’” (Id. at ¶ 91 (citing Ex. 1001, 5:20–23)); and also “that
‘[t]he global control system 22 preferably calculates the desired vertical and
horizontal forces based on the behavior of each streamer and also takes into
account the behavior of the complete streamer array.’” Id. at ¶ 91 (citing
Ex. 1001, 4:54–57). Based on such examples from the specification Dr.
Triantafyllou concludes that “global control system” is not merely control of
the entire array of streamers, but that it is “a control system configured to
coordinate all streamer positioning devices in the array.” Id. at ¶ 93
(emphasis added).
We must take care when reading a patent specification to interpret and
understand the claims and requisite claim language in light of the disclosure,
while not inappropriately importing variations and specific embodiments
into a claim interpretation. See Superguide Corp. v. DirecTV Enterprises,
Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). (“Though understanding the claim
language may be aided by the explanations contained in the written
description, it is important not to import into a claim limitations that are not
a part of the claim.”). The written description portions relied upon by Dr.
Triantafyllou in support of Patent Owner’s claim construction are preferred
embodiments and examples in the ’967 patent specification explaining how
to control the streamers. For example, the specification states that “[i]n the
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preferred embodiment of the present invention, the global control system 22
monitors the actual positions of each of the birds 18.” Ex. 1001, 4:21–23.
Also, the ’967 patent describes that “[t]he global control system 22
preferably calculates the desired vertical and horizontal forces based on the
behavior of each streamer.” Ex. 1001, 4:54–56. The ’967 patent is replete
with language and examples indicating alternative and exemplary
embodiments, including the statement just prior to the claim listing that
“[t]he present invention includes any novel feature or novel combination of
features disclosed herein, either explicitly or implicitly.” Id. at 11:12–14
(emphasis added). “[W]hile . . . claims are to be interpreted in light of the
specification and with a view to ascertaining the invention, it does not follow
that limitations from the specification may be read into the claims.” Comark
Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998)
(citation omitted.). Accordingly, we are not persuaded that any of the
exemplary embodiments from the specification or Dr. Triantafyllou’s
interpretation based on such specific embodiments that allegedly “coordinate
all streamer positioning devices” should be read into “global control
system.” See Ex. 2042 ¶ 93.
It is also not clear from Dr. Triantafyllou’s testimony why one of
ordinary skill in the art would limit the term global control system to
“coordinate all streamer positioning devices in the array,” as propounded in
Patent Owner’s claim construction. We find no testimony or explanation
apart from the specification examples, nor are we apprised of any persuasive
evidence in Dr. Triantafyllou’s testimony that all the SPD’s in the array
must be coordinated in order to guide all the streamers and achieve a “global
control system.” Dr. Triantafyllou states in his Declaration that “[i]n the
context of seismic surveying, a POSA would have understood that the global
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control system coordinated the control of the entire array of streamers.” Ex.
2042 ¶ 91. Indeed, Dr.Triantafyllou further testified during his deposition
that in certain cases less than all the SPD’s, and even less than all the
streamers, would still be considered a global control system.
6 Q So all of the SPDs on the streamers that
7 are being controlled need to be controlled by the
8 global control system.
9 A The ones that you want to control, yes.
10 Q The streamers that you want to control.
11 A The streamers you want to control.
Ex. 1091, 122:6–11.
We find no persuasive reference or evidence in the specification or the
claim language, nor do we find persuasive Dr. Triantafyllou’s reliance on the
preferred embodiments in the specification, that the meaning of “global” was
intended to be restricted to coordination of all SPD’s in the array as Patent
Owner’s construction currently reads. Moreover, the language of the claim
itself does not support the understanding that all the streamer positioning
devices in the array are controlled. A plain reading of claim 15 requires on
each streamer “a plurality of streamer positioning devices,” but, by reciting
further the limitation of transmitting “information to at least one local
control system”, it is clearly conveyed to the reader that not all the streamer
positioning devices need be controlled. This is consistent with Dr.
Triantafyllou’s deposition testimony above.
We understand from the specification, the claim language, and Dr.
Triantafyllou’s testimony that controlling all the streamer positioning
devices on each streamer would facilitate control of the streamer array,
however, we are not persuaded by the evidence in the record that control of
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all SPD’s is a requirement of claim 1 imparted by the term “global control
system.” Accordingly, we do not construe “global positioning system” to
require all streamer positioning devices to be controlled and we decline to
adopt Patent Owner’s construction. See SuperGuide Corp. at 875 (“a
particular embodiment appearing in the written description may not be read
into a claim when the claim language is broader than the embodiment.”).
We are also not persuaded to read the word “coordinate” as advocated
by Dr. Triantafyllou into the claim construction. The word “coordinate” is
not found anywhere in the specification of the ’967 with respect to relative
control between all the streamers or all the SPD’s. The specification uses
the phrase, “to coordinate control,” only once, and only to describe a prior
art “two-wing” SPD and its local control system.
5
See Ex. 1001 5:34–38,
6:10–14. Dr. Triantafyllou does not specifically define the word
“coordinate,” but uses it as essentially a more nuanced word than “control”
to facilitate explanation of a “global control system.” Dr. Triantafyllou
stated during his deposition:
2 Q And it’s missing coordination of all the
3 SPDs, correct?
4 A All the ones that you need to control.
5 So that is not a strong statement. You can choose to
6 ignore some, but the ones that you want to control,
7 you have to send signals. But the more important
8 word is “coordinated.”

5
This portion of the specification states that “FIG. 2 shows a type of bird 18
that is capable of controlling the position of seismic streamers 12 in both the
vertical and horizontal directions. A bird 18 of this type is also disclosed in
our PCT International Application No. WO 98/28636.” Ex. 1001 5:34–38.
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Ex. 1091, 131:2–14. Dr. Triantafyllou’s use of the word
“coordinate[d]” is, however, based on the specification examples and
preferred embodiments in the ’967 patent explaining how the streamers and
SPD’s are “continuously” controlled. See Ex. 2042 ¶ 91. Because, as
discussed above, we do not read limitations from these preferred
embodiments and examples in the specification into the claims we also are
not persuaded that the term “coordinate” should be read into the claims as a
substitute, or in addition to the word “control.”
We do not wholly discount Dr. Triantafyllou’s testimony. Dr.
Triantafyllou has over 40 years of experience in the field of marine vehicle
dynamics and control. Ex. 2042 ¶ 1. He has a bachelor’s degree in Naval
Architecture and Marine Engineering, as well as a Master of Science and
Mechanical Engineering, a Master’s of Science in Ocean Engineering, and a
Ph.D. in Ocean Engineering from MIT. Id. at ¶ 2. Since 1979 Dr.
Triantafyllou has been an MIT faculty member and professor, including
Director of the Center for Ocean Engineering at MIT, as well as a visiting
research scientist at the Woods Hole Oceanographic Institute. Id. at ¶¶ 6, 9.
Dr. Triantafyllou’s testimony is entitled to certain weight. We are persuaded
that one of skill in the art would understand that the term “global” is not
entirely superfluous, but that it has some functional and structural meaning
relative to “control system” as well as to the other structures, e.g. streamers
and streamer positioning devices, recited in claims 1 and 15. Given that a
plain meaning of the term “global” can relate to or apply to a whole, and that
claim 1 requires each streamer to have “at least one streamer positioning
devices having a wing” that can be adjusted by a local control system, it is
reasonable to understand a “whole” being the “array of seismic streamers”
called for in the claims. See PO Resp. 10 (citing Ex. 2066). Following from
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this basic definition, Dr. Triantafyllou’s testifies that the word “global”
modifies “control system” in such a way as to convey to one of skill in the
art that “the control system oversees and affects the entire system.” See Ex.
2024 ¶ 91. Dr. Triantafyllou qualified this phrase from his Declaration
somewhat, when asked at his deposition,
22 Q Okay. Doctor, it’s your interpretation
1 of the global control system that it oversees the
2 entire array.
3 A The entire controlled array.
Ex. 1091, 120:22–121:3. Dr. Triantafyllou explains here that a global
control system would oversee not the “entire array,” but the “entire
controlled array.” We are persuaded by Dr. Triantafyllou’s testimony that
not all the streamers, or SPD’s, in an array must be controlled, but that the
global control system must be capable of controlling all the streamers and all
the SPD’s that one would need, or want, to oversee in the array. See id. at
122:6–11. Dr. Triantafyllou was definitive that all the SPD’s could be
controlled, but that one might choose, or not be able, to control all the SPD’s
and streamers in an array:
9 Q This notion that you can ignore some of
10 the SPDs, can you point me anywhere in your
11 declaration to where you suggested that?
12 A Practical aspects. One of the control
13 devices has broken down. You are not going to say,
14 [t]his ends the global control system.
Ex. 1091, 131:2–14. In other words, Dr. Triantafyllou testified that it is not
necessary to control each SPD to retain the nature of a global control system
being capable of overseeing and affecting the array.
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Petitioner argues that “global control system” should be interpreted as
the parties originally agreed, i.e. as “a control system that sends commands
to other devices in a system (e.g., local control systems).” Reply 3, Pet. 24,
Prelim. Resp. 26–27. Petitioner points out that the agreed upon construction
is the same construction promoted by Patent Owner in the underlying ION
lawsuit and adopted in that proceeding by the district court. Id. (citing Ex.
1017, 16–19). Petitioner specifically contends that Patent Owner’s new
construction is unreasonable because it improperly reads in limitations from
the specification and requires the global control system to send commands to
all the streamer positioning devices. Id. at 4.
In our Decision to Institute we stated with respect to the term “global
positioning device” that “[w]e are not persuaded that either party has
provided sufficient reason to ascribe further functional elucidation to this
term” because the parties’ proposed construction was essentially a
restatement of the functional claim language already recited in the claims.
See Inst. Dec. 8. Paragraph (b) of claim 1 recites:
(b) transmitting from a global control system location
information to at least one local control system on the
at least one streamer positioning devices having a wing;

Ex. 1001, 11:20–23 (emphasis added). First, on its face, a “global control
system” is clearly a control system. We also know from the express
language in the claim itself that the “global control system” is
“transmitting,” information to a local control system. We understand no
substantive distinction, nor did the parties explain why any such distinction
should be made, between the words “transmitting” and the word “sending”
in the context of the global control systems’ function. Also, instead of the
word “information” as recited in the claim, the earlier proposed construction
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uses the word “command.” It is not explained by either party why
substitution of the term “command” in contrast to “information” was
reasonable under the broadest reasonable interpretation. The word
“command” is found nowhere in the specification of the ’967 patent. The
specification does explain in one embodiment that there are certain forces
“that the global control system 22 has instructed the local control system to
apply to the streamer 12.” Ex. 1001 6:29–30 (emphasis added). However,
in another embodiment the specification states that “the global control
system 22 can transmit location information to the local control system 36
instead of force information.” Id. at 45–47 (emphasis added). We are not
apprised of any reasoning, explanation, or evidence on this record that
persuades us to supplant “information” with “command,” or that such a
substitution provides further clarity to understanding the term “global
control system.”
The claim next calls for information to be transmitted “to at least one
local control system on the at least one streamer positioning devices having
a wing.” In comparison, the originally proposed claim construction sends
commands “to other devices in a system (e.g., local control systems).” A
“local control system” is understood as another device relative to the “global
control system,” this is clear on the face of the claim. What this construction
does, however, is merely state in words, the nature of what we already
understand from the plain meaning of the claim and the term “comprising,”
i.e. that the claim is not limited to sending information merely to a “local
control system” but could send information to other “devices” not
specifically recited in the claim. In re Skvorecz, 580 F.3d 1262, 1267–68
(Fed. Cir. 2009); In re Crish, 393 F.3d 1253, 1257 (Fed. Cir. 2004). The
originally proposed claim construction is therefore, on this record, merely a
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restatement of the plain meaning of the claim language as currently recited
in claims 1 and 15 and does not make any more clear for purposes of this
proceeding the meaning of “global positioning system” under the broadest
reasonable interpretation of that term.
Based on the specification, claim language and evidence on the
complete record before us, we determine that, under the broadest reasonable
interpretation, and giving the words their plain and ordinary meaning
consistent with the specification, the phrase “global control system” is “a
control system capable of overseeing and affecting the array of streamers
and streamer positioning devices.”
III. ANALYSIS
A. Claims 1 and 15 – Anticipation by the ’636 PCT
To prevail on its patentability challenge, Petitioner must establish
facts supporting its challenge by a preponderance of the evidence. 35 U.S.C.
§ 316(e); 37 C.F.R. § 42.1(d). Petitioner asserts that claims 1 and 15 are
anticipated by the ’636 PCT under 35 U.S.C. § 102. Pet. 29–40; Pet. Reply
10–26. Patent Owner disagrees, and focuses its argument on distinguishing
the claimed “global control system” from the control system disclosed in the
’636 PCT; Disputes that the ’636 PCT discloses either a global, or remote
control system; and contests Petitioner’s reliance on the “remote control
system” allegedly disclosed as prior art in the ’636 PCT. PO Resp. 16–23.
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. Inc., v. Union Oil Co., 814 F.2d 628, 631
(Fed. Cir. 1987). “The identical invention must be shown in as complete
detail as is contained in the . . . claim.” Richardson v. Suzuki Motor Co., 868
F.2d 1226, 1236 (Fed. Cir. 1989). The elements must be arranged as
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required by the claim, but this is not an ipsissimis verbis test, i.e., identity of
terminology is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
[U]nless a reference discloses within the four corners of
the document not only all of the limitations claimed but
also all of the limitations arranged or combined in the
same way as recited in the claim, it cannot be said to
prove prior invention of the thing claimed and, thus,
cannot anticipate under 35 U.S.C. § 102.

Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
1. Overview of the ’636 PCT
The ’636 PCT discloses a streamer positioning device, e.g. “a bird,”
for controlling the position of a marine seismic streamer as it is towed
behind a boat in a streamer array. Ex. 1004, 2. Figure 1 of the ’636 PCT,
reproduced below, illustrates streamer control device 10 attached to seismic
streamer 14. Id. at 3–4.

Figure 1 of the ’636 PCT, above, illustrates bird 10 controlled by
wings 24 according to a control system and control circuit to move the bird,
and hence the streamer, in both a vertical (up and down) and lateral (left and
right) direction, to achieve a desired position of the streamer in the water.
Id. at 5–6.
The control system disclosed by the ’636 PCT is illustrated by Figure
2, reproduced below, and includes control circuit 34 with inputs 35–39 for
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receiving signals indicating actual depth and lateral position (36, 38), as well
as desired depth and desired lateral position (35, 37).

As depicted diagrammatically by annotated Figure 2 of the ’636 PCT,
above, a depth sensor, typically mounted on the bird, provides an actual
depth signal to control circuit 34. Id. at 5. The actual and desired lateral
position signal as well as the desired depth signal, shown highlighted in
yellow, are also received by control circuit 34 from an external positioning
determining system (id.) to calculate and adjust, via stepper motors 48, 50,
“the respective angular positions of the wings 24 which together will
produce the necessary combination of vertical force (upwardly or
downwardly) and lateral force (left or right) required to move the bird 10 to
the desired depth and lateral position.” Id. at 6.
2. Claims 1 and 15
Patent Owner’s position with respect to anticipation is focused on the
main issue of whether the ’636 PCT discloses a “global control system” as
recited in both the method claim, claim 1, and the apparatus claim, claim 15,
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in accordance with the proper claim construction of that term.
6
PO Resp. 16,
Reply 10–11. Patent Owner makes certain arguments that the ’636 PCT
does not provide the necessary and sufficient disclosures to support
anticipation of claims 1 and 15.
As an initial matter, Patent Owner argues that the ’967 patent
“distinguishes the ’636 PCT by contrasting it with the claimed ‘global
control system.’” PO Resp. 17. In other words, Patent Owner argues the
’967 patent itself is proof that the ’636 PCT does not disclose a “global
control system.” This is an accurate statement to an extent. In the
Background of the Invention, the ’967 patent describes the prior art ’636
PCT control system as including a “remote control system” and a “local
control system” but does not expressly compare or contrast specifically the
prior art “remote control system” to the claimed “global control system.”
More accurately in context, a reasonable understanding of how the ’967
patent distinguishes itself from the ’636 PCT is clear from the statement in
the specification that
[w]hile this [’636 PCT] type of system allows for more
automatic adjustment of the bird wing angles, the delay period
and the relatively long cycle time between position
measurements prevents this type of control system from rapidly
and efficiently controlling the horizontal position of the bird.
Ex. 1001 2:47–52. The ’967 patent differentiates itself by asserting that its
system can reduce the delay and cycle times between position measurements

6
We address claims 1 and 15 together because although claim 1 is a method
claim, and claim 15 an apparatus claim, Patent Owner’s arguments and
analysis relating to “global control system” do not differentiate between the
claims. See PO Resp. 16–23. Similarly, our analysis in this Decision
applies equally to either claim regardless of it being a method or apparatus.
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and is thus a faster and more efficient control system “to convert the
measured vertical and/or horizontal displacements into corresponding forces
to be applied by the birds 18.” Id. at 6:61–63.
Nonetheless, as noted by Petitioner, “whether the ’636 PCT’s control
system is slower or less efficient than the ’967 patent’s is irrelevant, because
the claims do not contain any limitations that bear on the global control
system’s speed or efficiency.” Reply 13. The proper construction of “global
control system,” above, does not include such speed or efficiency
parameters. Furthermore, mere criticism or distinguishing of a particular
embodiment encompassed in the plain meaning of a claim term is not
sufficient as clear disavowal of claim scope. Epistar Corp. v. Int’l Trade
Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009) (holding that even a direct
criticism of a particular technique did not rise to the level of clear
disavowal). Patent Owner’s position here does not persuade us that the ’967
patent clearly demarcates between the elements and functions of the ’636
PCT’s “remote control system” as compared to the claimed “global control
system.”
Next, Patent Owner argues that “the ’636 PCT does not disclose any
control beyond a local control system, let alone a global control system.”
PO Resp. 17, 19 (citing Ex. 2042 ¶¶ 131, 177, 181, 183). Although the ’636
PCT does not itself expressly recite a “remote control system” it clearly
states in reference to Figure 2, that “[t]he lateral position signals are
typically derived from a position determining system of the kind described in
our US Patent No 4,992,990 or our International Patent Application
No[.]W09621163.” Ex. 1004, 5 (emphasis added). Without referring
specifically to the noted ’990 patent or the ’163 PCT application, the
described “position determining system” in the ’636 PCT is reasonably
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understood in context as distinct, or external, from local control system 26
shown in Figure 2.
7
It is further reasonable, in the context of this description
and Figure 2 annotated above, to understand that the inputs shown
highlighted in yellow: desired depth 35, desired lateral position 37, and
actual lateral position 38 received by local control system 26 are not
acquired from the local control system 26 itself, but from the external
“positioning determining system.” Id.
In any event, the ’967 patent, in context, clearly describes the ’636
PCT control system having a positioning determining system that is an
external, “remote control system,” i.e. separated or spaced from, a “local
control system.” Ex. 1001, 2:38–44.
8
Although the ’967 patent does not
expressly equate the “remote control system” to the “position determining
system” or describe the ’636 PCT’s control system 26 expressly as a “local
control system” it is unclear to us on this record given a sensible perspective
of the ’967 patent’s express reference to the ’636 PCT and a plain meaning
of the word “remote,” what else they would be. Accordingly, we are
persuaded by the evidence that the ’636 PCT discloses an overall distributive
control system as described in the ’967 patent where
the desired horizontal positions and the actual horizontal
positions are received from a remote control system and are

7
Patent Owner objects that the reference, U.S. Patent No 4,992,990 to
Langeland et al., (“Langeland,” or “the ’990 patent”), is not properly
incorporated by reference. PO Reply 20–23. Because we do not rely on the
’990 patent for any part of our Decision, we do not address this argument.
8
The MERRIAM-WEBSTER ONLINE DICTIONARY provides an ordinary
meaning of “remote” as “separated by an interval or space greater than
usual.” http://www.merriam-webster.com/dictionary/remote (last visited
Dec. 1, 2015).
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then used by a local control system within the birds to adjust
the wing angles.
Id. at 2:40–44. Further supporting our determination, Figure 1 of the ’967
patent, reproduced below in relevant part with annotations, is clearly labeled
as “Prior Art” and includes reference number 22 positioned on vessel 10.
The ’967 patent describes element 22 as a “global control system 22 located
on or near the seismic survey vessel 10.”

Annotated Figure 1 of the ’967 patent, reproduced in relevant part
above, illustrates as “Prior Art” vessel 10 towing streamers 12, and having
global control system 22 onboard the vessel. Even if we make the
assumption that the specific word “global” was unintended as part of the
“Prior Art,” it is reasonable to understand from the ’967 patent, given Figure
1 and the ’636 PCT, that a different, external, or “remote” control system
was known to be positioned on the towing vessel and in communication with
a local control system with the bird. “By filing an application containing
Figs. 1 and 2, labeled prior art, ipsissimis verbis, and statements explanatory
thereof appellants have conceded what is to be considered as prior art.”
Application of Nomiya, 509 F.2d 566, 571 (C.C.P.A. 1975).
Patent Owner also argues that because the ’967 patent and the ’636
PCT include the same inventor, Simon H. Bittleston, there is a presumption
that “remote” and “global” are different terms that have different meanings.
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PO Resp. 17 (citing Chicago Bd. Options Exch., Inc. v. Int’l Sec. Exch.,
LLC, 677 F.3d 1361, 1369 (Fed. Cir. 2012). We agree with Patent Owner
that these terms may have different meanings. However, in accordance with
our claim construction and our understanding of the ’636 PCT as discussed
above, the question before us is not whether these two terms have the same
meaning, but specifically whether the “remote control system” disclosed in
the ’636 PCT is “a control system capable of overseeing and affecting the
array of streamers and streamer positioning devices.” Anticipation does not
require the same words be used to equate relevant elements from the prior
art with particular limitations of a claim. These elements must be arranged
as in the claim under review but this is not an ipsissimis verbis test. In re
Bond 910 F.2d at 832, see also Structural Rubber Prods. Co. v. Park Rubber
Co., 749 F.2d 707, 716 (Fed. Cir. 1984)(while holding that a reference must
disclose the entirety of the claimed subject matter to anticipate, the Federal
Circuit acknowledged that the reference need not disclose the claimed
subject matter in the same language used in the claim).
Patent Owner further argues that “[t]he ’636 PCT does not describe a
total seismic array system, but only the bird.” PO Resp. 18. The ’636 PCT
describes that “[i]n order to perform a 3D marine seismic survey, a plurality
of [] streamers are towed at about 5 knots behind a seismic survey vessel,”
and that “control devices known as ‘birds’, attached to each streamer at
intervals of 200 to 300 metres, are used.” Ex. 1004, 1. It is unambiguous
from this disclosure that marine seismic streamer systems were known to
include a plurality of streamers, e.g. an array, and that each streamer can
include a plurality of positioning control devices, e.g. birds spaced 200–300
metres apart along the streamer to control the streamers. It is further clear
from the description and Figure 2 that the ’636 PCT discloses bird 10 having
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wings 24 and a local control system 26 that receives certain signals from a
remote control system that “enables the horizontal or lateral position of the
streamer 14 to be controlled, and not just its depth.” Id. at 7.
We find that the ’636 PCT discloses sufficiently to a person of
ordinary skill in the art that each bird, or streamer positioning device in the
seismic survey system can be controlled in depth as well as laterally by a
distributed control system according to the remote and local control systems
working in conjunction. It is simply not reasonable to read the ’636 PCT
reference as disclosing merely a single controlled bird or SPD, where the
reference expressly discloses that it was known to use multiple SPD’s for
controlling multiple streamers in a towed seismic streamer array. See id. at
1, see also Ex. 1002 ¶ 111 (“The ’636 PCT discloses that control devices
known as ‘birds’, attached to each streamer at intervals of 200 to 300 meters,
are used.”). Furthermore, our understanding of the ’636 PCT is consistent
with the plain meaning of the ’967 description, which explicitly describes
multiple “birds” in the ’636 PCT where “the desired horizontal positions and
the actual horizontal positions are received from a remote control system and
are then used by a local control system within the birds to adjust the wing
angles.” Ex. 1001, 2:41–44.
Although the ’636 PCT does not state expressly that its control system
controls “all” birds, and “all” streamers in the array, one of skill in the art
would draw a reasonable inference that where the remote control system
controls one bird, it is capable of controlling each of the plurality of birds on
each streamer, i.e., the entirety of the array. Petitioner’s Declarant, Dr.
Evans, has an undergraduate Electrical Engineering Degree, a Masters in
Applied Physics, a Ph.D. in Geophysics, and is a professor of Professor of
Geophysics in the Department of Petroleum Engineering at Curtin
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University in Bentley, Western Australia. Ex. 1002 ¶ 4, 10. Dr. Evans has
over 40 years of marine seismic survey experience including designing
dozens of seismic surveys and personally participated on board seismic
survey vessels in over one hundred seismic surveys. Id. ¶ 5. Dr. Evans is
also the author of, A HANDBOOK FOR SEISMIC DATA ACQUISITION IN
EXPLORATION, published by the Society of Exploration Geophysicists. Id.
In his analysis of the ’636 PCT, Dr. Evans states that “[t]he ’636 PCT thus
discloses a distributed control system wherein the responsibility for streamer
positioning was shared between a remote control system on the vessel and
sophisticated local control systems located within each streamer positioning
device.” Ex. 1002 ¶ 70 (emphasis added). Dr. Evans’ experience and
testimony demonstrates at least a level of ordinary skill in the art of marine
seismic survey and data acquisition. We find his testimony persuasive
evidence that one of ordinary skill in the art would understand that control
systems disclosed in the ’636 PCT are capable of controlling multiple birds
or SPD’s throughout a streamer array. “A reference anticipates a claim if it
discloses the claimed invention ‘such that a skilled artisan could take its
teachings in combination with his own knowledge of the particular art and
be in possession of the invention.”’ In re Graves, 69 F.3d 1147, 1152 (Fed.
Cir. 1995) (citing In re LeGrice, 301 F.2d 929 (CCPA 1962)), see also
Sirona Dental Systems, Inc. v. 3M ESPE AG, Appeal No. 2011-005021
(BPAI 2011), aff’d. mem. (Fed. Cir. 2012). (“A person of ordinary skill in
the art would have drawn a reasonable inference from this explicit teaching
that while a white ceramic porous body is preferred, JP ‘841 also discloses
non-white ceramic porous bodies.”)
Patent Owner next argues that “[h]ow the ’967 inventors’ used the
’636 PCT control device is not part of the ’636 PCT’s disclosure, nor is it
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prior art.” PO Resp. 18. This is not persuasive because it well settled that
“[t]he use of patents as references is not limited to what the patentees
describe as their own inventions or to the problems with which they are
concerned. They are part of the literature of the art, relevant for all they
contain.” In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968), see also
Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983) (What
matters is whether all of the limitations of the claim are found in the
reference, not whether the reference “teaches” what the subject application
teaches.)
Even assuming the appropriate claim construction included “all”
streamer positioning devices, which it does not, this would not serve to
distinguish the claimed invention from the ’636 PCT. Given Dr. Evans’
testimony, above, it is axiomatic that one of skill in the art could apply the
control of a bird taught in the ’636 PCT to any or all birds in the known
seismic array system disclosed in the ’636 PCT. Where each bird in a
seismic array system can be controlled, than the system is capable of
controlling each streamer having a bird, in an array consisting of a plurality
of streamers. Thus, we determine that the ’636 PCT’s teachings result in “a
control system capable of overseeing and affecting the array of streamers
and streamer positioning devices,” as the term “global control system” is
properly construed.
We have reviewed each of independent claims 1 and 15 in light of the
the ’636 PCT and find that Petitioner’s arguments and evidence presented in
the Petition and Reply demonstrate by a preponderance of the evidence that
each limitation of independent claims 1 and 15 is disclosed and taught by the
’636 PCT.
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B. Claims 1 and 15 – Obviousness in view of the ’636 PCT
Patent Owner contends that our Decision to Institute did not provide
legally sufficient obviousness analysis and “fails to apprise Patent Owner of
the specific ground of unpatentability that is the basis for this trial.” PO
Resp. 23 (citing In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001), In re
Vaidyanathan, 381 Fed. App’x. 985, 994 (Fed. Cir. 2010), and Perfect Web
Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330 (Fed. Cir. 2009)).
Specifically, Patent Owner argues that “[t]he obviousness case is now a
moving target, with Patent Owner left guessing as to what features the Board
considers missing from the ’636 PCT, but that would be obvious in view of
the level of ordinary skill in the art.” Id. at 24.
It is well settled that novelty under 35 U.S.C. § 102 and
nonobviousness under 35 U.S.C. § 103 are separate conditions of
patentability. See Cohesive Tech., Inc. v. Waters Corp., 543 F.3d 1351,
1363 (Fed. Cir. 2008). “[I]t does not follow that every technically
anticipated invention would also have been obvious.” In re Fracalossi, 681
F.2d 792, 796 (CCPA 1982) (Miller, J., concurring).
The tests for anticipation and obviousness are different. Cohesive,
543 F.3d at 1364. Obviousness generally requires an analysis under the
Graham factors. Id. In the instant case, however, we agree with Petitioner
that the ’636 PCT, as a standalone reference discloses all of the limitations
of claims 1 and 15 including a “global control system” as construed above.
In other words, there is no element of claims 1 and 15 missing from the ’636
PCT as discussed above in relation to anticipation that necessitates
modification, additional rationale, or articulated reasoning. Inasmuch as the
’636 PCT is relied upon as the sole reference for both anticipation and
obviousness grounds and is directed to the same field of endeavor seeking to
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solve the same, or similar problem of controlling birds, i.e. SPD’s, in a
towed seismic survey array as in the ’967 patent, so that “[d]uring the
seismic survey, the streamers are intended to remain straight, parallel to each
other and equally spaced” (Ex. 1004, 2), this case is particularly appropriate
for application of the maxim that anticipation is the epitome of
obviousness. Fracalossi, 681 F.2d at 794. All that remains is to address
secondary considerations.
C. Secondary Considerations
Patent Owner has proffered certain evidence of secondary
considerations which we address here. PO Resp. 32–35. The factual
inquiries for obviousness include secondary considerations based on
evaluation and crediting of objective evidence. Graham v. John Deere Co.,
383 U.S. 1, 17 (1966). However, to accord substantial weight to objective
evidence requires the finding of a nexus between the evidence and the merits
of the claimed invention. In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir.
1995); see also In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (“success is
relevant in the obviousness context only if there is proof that the sales were a
direct result of the unique characteristics of the claimed invention.”).
“Nexus” is a legally and factually sufficient connection between the
objective evidence and the claimed invention, such that the objective
evidence should be considered in determining nonobviousness. Demaco
CorpF. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir.
1988). The burden of showing that there is a nexus lies with the patent
owner. Id.; see In re Paulsen, 30 F.3d 1475, 1482 (Fed. Cir. 1994).
Patent Owner contends that certain evidence from the ION lawsuit
and from the Declaration of Robin Walker, (Ex. 2077), Patent Owner’s
former Vice President of Sales and Marketing Director, establishes a long-
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felt need and commercial success of the patented inventions. PO Resp. 33.
Specifically, Patent Owner argues that “the record evidence during the ION
litigation established the long-felt need and commercial success of the
patented inventions, as well as initial industry skepticism followed by praise
once the inventions were commercialized.” Id. In support of this argument,
Patent Owner refers to a variety of trial testimony exhibits from the ION
lawsuit, including Mr. Walker (Ex. 2034), Mr. Tom Scoulios (Ex. 2035),
and Mr. Robert Brune (Ex. 2036). Id. With respect to the trial testimony of
Messrs. Walker, Brune, and Scoulios, Patent Owner merely provides
citations to purportedly relevant portions of Exhibits 2034, 2035, 2036,
stating only
(See, e.g. Ex. 2034, Excerpt of Trial Testimony of Robin
Walker, at 1623:2-18 (evidencing commercial success of 4D
survey systems);Ex. 2035, Excerpt of Trial Testimony of Tom
Scoulios, at 290:4-291:16 and 293:10-18 (evidencing long-felt
need for lateral steering system and failure of others to solve the
problem with tail buoy systems); Ex. 2036, Excerpt of Trial
Testimony of Robert Brune, at 3997:19-3999:7 (evidencing
long-felt need for the claimed system, failure of others to solve
the problem solved by the claimed system, and industry praise
for the claimed system).)
Id. Patent Owner argues that these references to trial testimony from district
court litigation support a finding of long-felt need but does not explain with
any detail why, or how, the referenced testimony, evidences a long-felt need,
failure of others, or industry praise. In this regard, we limit our review to
evidence actually discussed in Patent Owner’s Response. We will not play
archeologist with the record to discover evidentiary support for bare attorney
argument made in such a response. See Google Inc. v. ART+COM
Innovationpool GmbH, Case IPR2015-00788, slip. op. at 10 (PTAB Sept. 2,
2015) (Paper 7) (citing 37 C.F.R. § 42.104(b)(5) (“The Board may exclude
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or give no weight to the evidence where a party has failed to state its
relevance or to identify specific portions of the evidence that support the
challenge.”)). We decline to consider, moreover, information presented in
an Exhibit, but not discussed sufficiently in Patent Owner’s Response. See
PO Resp. 33 (citing Ex. 2035 and 2036, without any discussion of that
evidence). Among other reasons, doing so would permit the use of
declarations to circumvent our rules relating to page limits. In that regard,
our rules prohibit a party from incorporating by reference from one
document (such as a supporting declaration) into another document (such as
Patent Owner’s Response). See 37 C.F.R. § 42.6(a)(3).
Patent Owner argues that the Declaration of Robin Walker is firsthand
evidence of industry praise “and how WesternGeco’s revolutionary lateral
steering technology satisfied a longfelt need in the industry (Ex. 2077, ¶¶
12–37) and ultimately contributed to billions of dollars in revenue (Ex. 2077,
¶¶ 47–51).” PO Resp. 34. Patent Owner, however, does not explain
adequately how the Q-Marine product allegedly embodies the challenged
claims in the ’967 patent. Mr. Walker states specifically that:
[t]hrough its provision of WesternGeco’s patented lateral
steering technology, Q-Marine satisfied a significant,
previously unmet need in the industry for better quality data
and more cost-effective surveys by offering numerous benefits,
including those detailed below.
Ex. 2077 ¶ 12. The benefits described in the subsequent paragraphs of Mr.
Walker’s Declaration are apparently based on lateral steering technology,
with the result that “better data quality could be achieved without the risk of
costly downtime and damage due to streamer tangling.” Id. at ¶ 15. The
broadest reasonable interpretation of “global positioning device” does not,
however, include lateral steering, nor is the limitation of “lateral steering”
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recited in either claim 1 or claim 15. It may be that Q-Marine provides a
better, faster, more reliable and commercially successful 4D survey, but any
commercial success enjoyed by the Q-Marine product is relevant only if the
challenged claims are shown to embody those products. Patent Owner’s
evidence has not made out that critical showing. See In re DBC, 545 F.3d
1373, 1384 (Fed. Cir. 2008) (finding no nexus, absent evidence that “the
driving force behind [the allegedly successful product’s sales] was the
claimed combination”) (emphasis added); Ormco Corp. v. Align Technology
Inc., 463 F.3d 1299, 1311–12 (Fed. 2006) (requiring a “nexus between the
claimed invention and the commercial success”); Huang, 100 F.3d at 140
(requiring proof that sales were a “direct result of the unique characteristics
of the claimed invention”). In the alternative, Patent Owner’s evidence of
commercial success does not outweigh the strong showing of obviousness
made out by Petitioner in view of anticipation by the ’636 PCT. See Sud-
Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009)
(“evidence of unexpected results and other secondary considerations will not
necessarily overcome a strong prima facie showing of obviousness”). Patent
Owner has not established a sufficient nexus between the claimed features of
the ‘967 patent and the alleged commercial success of the Q-Marine product.
Accordingly, the alleged commercial success of the Q-Marine product does
not support a conclusion of nonobviousness of the challenged claims in this
case.
D. Time Bar under 35 U.S.C. § 315(b)
Patent Owner makes several arguments in support of its position that
the PGS IPR is time-barred under 35 U.S.C. § 315(b). We address each of
Patent Owner’s arguments below. PO Resp. 35–45.
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1. Whether ION is an Unnamed RPI
The statute governing inter partes review proceedings sets forth
certain requirements for a petition for inter partes review, including that “the
petition identif[y] all real parties in interest.” 35 U.S.C. § 312(a) (emphasis
added); see also 37 C.F.R. § 42.8(b)(1) (requirement to identify real parties
in interest in mandatory notices). The Office Patent Trial Practice Guide, 77
Fed. Reg. 48,756, 48,764 (Aug. 14, 2012) (“Practice Guide”) explains that
“[w]hether a party who is not a named participant in a given proceeding
nonetheless constitutes a ‘real party-in-interest’ . . . to that proceeding is a
highly fact-dependent question.” 77 Fed. Reg. at 48,759. The Practice
Guide further states that: However, the spirit of that formulation as to IPR
and PGR proceedings means that, at a general level, the “real party-in-
interest” is the party that desires review of the patent. Thus, the “real party-
in-interest” may be the petitioner itself, and/or it may be the party or parties
at whose behest the petition has been filed. Id. (emphasis added). The
determination of whether a party is an RPI is a “highly fact-dependent
question” (id.), in which the focus is on the party’s relationship to the inter
partes review pending before the Board, and the degree of control the party
can exert over the proceeding. See Aruze Gaming Macau, Ltd. v. MGT
Gaming, Inc., Case IPR2014-01288, slip op. at 11 (PTAB Feb. 20, 2015)
(Paper 13). “[I]f a nonparty can influence a petitioner’s actions in a
proceeding before the Board, to the degree that would be expected from a
formal copetitioner, that nonparty should be considered an RPI to the
proceeding.” Id. at 12.
Patent Owner asserts in its Response that ION is a real party-in-
interest under the factors set forth in our Practice Guidelines because (a)
Petitioner invoked ION’s indemnity obligations by notifying ION that
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Petitioner expected ION to fulfill its obligations and pay for the lawsuit and
this IPR proceeding; (b) ION was obligated to pay for this IPR and was
instrumental in developing invalidity theories, thus, giving ION an “interest,
opportunity to control, and active control over the Petition[;]” and (c)
Petitioner is ION’s proxy due to ION’s obligation under the indemnification
agreement. PO Resp. 39– 40.
Patent Owner’s main contention for indemnification, and thus control
by ION, focuses on an indemnification provision in the 2008 Master
Purchase Agreement (“Agreement” Ex. 2069) between PGSAS and Concept
Systems Limited (“Concept”), an ION subsidiary. Id. at 35. The Agreement
is considered protective order material in this proceeding. See Ex. 2069.
Patent Owner argues that the indemnification provision “reasonably
includes defending against an infringement lawsuit, proving the invalidity of
a patent in a review proceeding, and obtaining a license.” PO Resp. 35–36.
Patent Owner contends that Petitioner invoked this indemnification in its
letter of November 13, 2012 to ION citing the above indemnification
provision and stating “[i]f it turns out that ION or its affiliates did not have
the proper patent licenses for the DigiFIN equipment and related
components and services it sold us, we expect that ION will provide us with
appropriate remedies.” Ex. 2027. Patent Owner thus concludes that “ION
thus has control, or at least the opportunity to control, the selection and
implementation of a remedy that includes filing a petition for review.” PO
Resp. 37.
As an initial matter, nowhere in the asserted provision of the
Agreement does it state that Concept (ION) has the right, or obligation, to
defend a lawsuit or control litigation, a lawsuit, or undertake any type of
invalidity proceedings such as the present IPR. We agree with Patent Owner
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that a reasonable interpretation of the indemnification provision could
include obtaining a license. Id. at 36. There is, however, no express
language or evidence that Patent Owner points to that persuades us to
interpret the language of the indemnification provision as requiring ION to
“defend a lawsuit,” and, thus, extend the provision to include a specific
obligation to defend, or pay for, a lawsuit filed against Petitioner or to
undertake an IPR proceeding. Petitioner’s letter of November 13, 2012 to
ION, does not actually “invoke” any certain part of the Agreement or refer
to any necessity for ION to step in and defend a lawsuit, the letter refers only
to “appropriate remedies.” See Ex. 2027. In fact, a previous email sent July
6, 2012 from Phillip Shotts of ION to Kevin Hart at PGS, summarizing
ION’s Product Assurance Pledge, also does not specify or imply any
obligation on the part of ION to defend PGS from a lawsuit, reimburse or
pay for a lawsuit, or file an invalidity proceeding. See Ex. 2022.
Based on the record before us ION does not have an obligation to step
in and defend Petitioner against a lawsuit or to otherwise pay for the defense
of a lawsuit and advance Petitioner as ION’s proxy. The mere existence of
an indemnification agreement does not establish that the indemnitor has the
opportunity to control an inter partes review. “The mere existence of an
indemnification agreement [however] does not establish that the indemnitor
has the opportunity to control an inter partes review.” Nissan North
America, Inc. v. Diamond Coating Tech., LLC, Case IPR2014- 01546, slip.
op. at 7 (PTAB Apr. 21, 2015) (determining that the existence of an
indemnification agreement was not sufficient to establish that the unnamed
parties were real parties-in-interest to the inter partes review proceeding)
Patent Owner argues further that the nature of Petitioner and ION’s
close relationship shows that ION is controlling, or has the ability to control
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this IPR as an RPI. PO Resp. 37–39. Patent Owner argues specifically that
“Petitioner and ION have coordinated efforts across multiple forums to
promote their joint interests regarding the ’967 patent,” and that a common
interest privilege was asserted by Petitioner over communications between
ION and Petitioner. Id. at 37–38. There is nothing surreptitious about
separate entities, as either third parties, or separate parties to a legal action,
proclaiming shared interests to protect communications that are relevant to
advance the interests of the entities possessing the common interest. See In
re Regents of Univ. of California, 101 F.3d 1386, 1389 (Fed. Cir. 1996)
(“The protection of communications among clients and attorneys ‘allied in a
common legal cause’ has long been recognized.”) (quoting In re Grand Jury
Subpoena Duces Tecum, 406 F.Supp. 381, 386 (S.D.N.Y.1975)). The fact
that Petitioner and ION, have a desire, and common interest, in invalidating
the ’967 patent and other WesternGeco patents, and have collaborated
together, and invoked a common interest privilege with respect to sharing
potentially invalidating prior art references, does not persuade us that ION
has the ability to control the instant Petition or is directing or funding the
present proceeding.
With respect to the ability to control, the Board has issued decisions
determining based on evidence of control that a non-party entity is a real
party-in-interest. See Zoll Lifecor Corp. v. Philips Elecs. North America
Corp., Case IPR2013-00609 (PTAB Mar. 20, 2014) (Paper 15) (the “Zoll
Decision”). In the Zoll Decision, the Board was persuaded that an unnamed
party to the IPR, Zoll Medical, exercised consistent control over Zoll
Lifecore for over six years, including control of the inter partes review. Id.
at 11. Specific evidence of control included Zoll Lifecor’s acknowledgment
that Zoll Medical controlled 100% of Zoll Lifecor and approved Zoll
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Lifecor’s corporate budget and plans. Id. Other evidence of control
included the fact that common counsel for Zoll Medical and Zoll Lifecor
would not state affirmatively that counsel did not provide input into
preparation of the IPRs. Id. at 11–12. Additional evidence showed that only
Zoll Medical’s management team attended court-ordered mediation in the
underlying district court litigation filed against Zoll Lifecor. Id. at 12.
We have no such evidence in this proceeding. ION and Petitioner are
not related corporate entities. The evidence of record here shows that
Petitioner and ION preliminarily discussed potential remedies relating to the
product itself, not indemnification from litigation. Exs. 2022, 2027. As
discussed above, absent specific facts evidencing the contractual obligations
of the parties, we are not apprised of any evidence from the Agreement
indicative of control, or potential to control, this inter partes proceeding by
ION. Furthermore, based on the record before us, Patent Owner has not
established that ION has the ability or opportunity to control the present
proceeding to the degree that would be expected from a formal copetitioner.
As such, we are not persuaded that ION is an RPI to this proceeding, and the
fact that the PGS Petition does not identify ION does not prevent the Board
from considering Petitioner’s grounds of unpatentability.
2. Additional Discovery
Patent Owner next argues that the Board prejudicially denied Patent
Owner additional discovery on the RPI issue after “Petitioner failed to
forthrightly answer Interrogatory No. 5.” PO Resp. 41–42 (citing Ex. 2018,
at 14). Our review of Exhibit 2018 indicates that contrary to Patent Owner’s
assertion, Petitioner unambiguously affirmed that Petitioner had made no
claims or demands to ION for indemnity with respect to the ’967 patent.
Patent Owner also asserts that the Agreement, Exhibit 2069 was not
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available to the Board prior to our Decision to Institute. Id. at 42. As
discussed above Exhibit 2069 is now available, and having been considered,
for the reasons set forth above does not alter our underlying determination
above that ION is not a real party-in-interest.
3. Multi Klient
Patent Owner argues that a new, and allegedly wholly owned
subsidiary of Petitioner, Multi Klient Invest AS (“Multi Klient”), has been
revealed in the district court litigation as an “interest[ed] parties concerning
the subject matter of the ’967 patent.” PO Resp. 42–43 (citing Ex. 2076).
The fact that Multi Klient may be related to Petitioner and is indicated as
having a financial interest in the outcome of litigation, however, does not by
itself indicate that Multi Klient has any ability to control the present IPR
proceeding. See Ex. 2076 (referring to Paragraph 2 of Order for Pretrial
Conference as determinative of “financially interested” defendants.)
Accordingly, we are not persuaded on these facts that Multi Klient is an RPI
to this proceeding and deny Patent Owner’s request for additional discovery
into this matter. PO Resp. 44.
4. Service
Under 35 U.S.C. § 315(b), a party may not file a petition for inter
partes review if the party had been served with a complaint alleging
infringement more than one year previously. Patent Owner argues that
Petitioner was subpoenaed and “appeared” in the ION litigation prior to
being “served” with a complaint alleging infringement of the ’967 patent on
March 14, 2011, and, therefore, “Petitioner’s one year clock to file a petition
started ticking at this time.” PO Resp. 44.
A review of the litigation history establishes that on June 12, 2009,
Patent Owner filed, via the court’s electronic case filing procedure (“ECF”),
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a complaint initiating the ION lawsuit, alleging infringement of the ’967
patent against ION based on ION’s “DigiFIN” and other products. Ex.
2007. Patent Owner also filed a similar complaint against a company called
Fugro, a customer of ION, which was consolidated with the ION lawsuit.
Ex. 2037. On December 8, 2009, remarking that Petitioner may have been
involved in the design and testing of the ION products, Patent Owner
provided Petitioner via email with a copy of the complaint against ION. Ex.
2008. Patent Owner subpoenaed Petitioner on January 22, 2010 to produce
documents and evidence relating inter alia to Petitioner’s use and operation
of ION’s DigiFIN product. Ex. 2009. In response to the subpoena,
Petitioner appeared in the ION lawsuit through its counsel, Heim, Payne &
Chorush. Ex. 2011. Subsequently, on March 14, 2011, Patent Owner filed
an amended complaint in the ION lawsuit via the court’s electronic filing
system (“ECF”), naming ION and another company, Fugro, but not
Petitioner. Ex. 2012. Patent Owner apparently believes that because
Petitioner’s counsel, as an ECF notice recipient in the ION lawsuit, received
a copy of the amended complaint against Fugro and ION on March 14, 2011,
Petitioner was therefore “served” in accordance with 35 U.S.C. § 315(b) the
same day. Id. at 7. Thus, it is Patent Owner’s position that because
Petitioner was “served” with the complaint more than one year before filing,
the Petition here is now time-barred
The Board has dealt with similar arguments regarding the statutory
interpretation of 35 U.S.C. § 315(b) before in Motorola Mobility LLC v.
Arnouse, Case IPR2013-00010 (PTAB Jan. 30, 2013) (Paper 20) (the
“Motorola decision”). For reasons similar to those set forth in the Motorola
decision, we do not adopt the statutory construction that mere receipt of a
complaint, via email or even ECF, initiates the one-year time period. We
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specifically agree with the Motorola Panel’s review and interpretation of the
legislative history and intent of 35 U.S.C. § 315(b) in that, “[w]e do not
believe that the Congress intended to have the time period start before a
petitioner is officially a defendant in a law suit.” Id. at 5.
Patent Owner specifically argued that the present proceeding differs
from Motorola because in the ION lawsuit “Petitioner was served with
process and formally appeared,” (emphasis omitted) and was thus “‘brought
under a court’s authority, by formal process’ before being served with the
amended complaint.” Prelim. Resp. 7–8 n.1 (citing Murphy Bros., Inc. v.
Michetti Pipe Stringing, Inc. 526 U.S. 344, 347 (1999)). Despite this factual
difference from Motorola, Petitioner was not, and never has been, a party
defendant in the ION lawsuit.
Petitioner, in the ION lawsuit, was served under Fed. R. Civ. P. 45,
with a third party subpoena, to produce documents and things relating to the
ION lawsuit. See Ex. 2009. Although a person, or entity, may have been
served properly with a subpoena, and may fall under a court’s authority for
purposes of producing appropriate documents and things not protected by a
privilege or protection, Fed. R. Civ. P. 45(c)–(e) does not express, or imply,
that a person subject to the subpoena is a “defendant” to a lawsuit. Indeed,
Fed. R. Civ. P. 45 specifically differentiates between a “person” served with
the subpoena, and “a party” to the lawsuit. See Fed. R. Civ. P. 45 (d)(2)(B)
(“A person commanded to produce documents or tangible things or to permit
inspection may serve on the party or attorney designated in the subpoena a
written objection to inspecting, copying, testing or sampling any or all of the
materials.”). We are aware of no case law, precedent, statutory
interpretation or authority, nor has Patent Owner cited to any, indicating that
serving a person with a subpoena, and subjecting them to the authority of the
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court in enforcing such subpoena under Fed. R. Civ. P. 45(e), provides
sufficient legal process to make such person a defendant to a lawsuit.
Thus, Petitioner was not a defendant in the ION lawsuit. Concomitant
with our colleagues’ Motorola decision, we interpret 35 U.S.C. § 315(b) as
requiring service upon a defendant to the lawsuit. Petitioner was not a
defendant; thus, it was never “served with a complaint” in the ION lawsuit
as required by 35 U.S.C. § 315(b).
9
Accordingly, Petitioner is not time-
barred from filing its Petition under 35 U.S.C. § 315(b).
IV. MOTION TO EXCLUDE EVIDENCE
Petitioner filed a Motion to Exclude Evidence seeking to exclude
portions of the testimony of Robin Walker (Ex. 2077) and numerous other
exhibits submitted by Patent Owner. Paper 85. The party moving to
exclude evidence bears the burden of proving that it is entitled to the relief
requested—namely, that the material sought to be excluded is inadmissible
under the Federal Rules of Evidence. See 37 C.F.R. §§ 42.20(c), 42.62(a).
Even without excluding this evidence, we have determined that Petitioner
has established, based on a preponderance of the evidence, the
unpatentability of claims 1 and 15 of the ’967 patent. Furthermore, from
Petitioner’s listed Exhibits on page 1 of its Motion to Exclude, our Decision
includes only references to Exhibits 2007, 2012, 2034–36, and 2077.
Exhibits 2007 and 2012 are referred to merely for background procedural

9
Patent Owner’s argument that S.D. Texas L.R. 5-1 “comports” (PO Resp.
44) with the proper interpretation of service under §315(b) is not persuasive
as to the intent of Congress with respect to §315(b). See 157 Cong. Rec.
S5429 (daily ed. Sept. 8, 2011) (statement of Senator Kyl) (“it is important
that the section 315(b) deadline afford defendants a reasonable opportunity
to identify and understand the patent claims that are relevant to the
litigation”).
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dates, Exhibits 2034–2036 are identified as not being considered, and for
Exhibit 2077, Petitioner’s hearsay arguments do not pertain to the particular
paragraphs of Mr. Walker’s testimony that we substantively considered. See
Section III.C.
For these reasons, we deny Petitioner’s Motion to Exclude.
V. CONCLUSION
We conclude that Petitioner has demonstrated by a preponderance of
the evidence that (1) claims 1 and 15 of the ’967 patent are anticipated by
the ’636 PCT, and (2) claims 1 and 15 of the ’967 patent are unpatentable as
obvious over the ’636 PCT.
This is a Final Written Decision of the Board under 35 U.S.C.
§ 318(a). Parties to the proceeding seeking judicial review of this decision
must comply with the notice and service requirements of 37 C.F.R. § 90.2.
VI. ORDER
For the reasons given, it is
ORDERED that claims 1 and 15 of U.S. Patent No. 7,162,967 are
determined by a preponderance of the evidence to be unpatentable;
FURTHER ORDERED that Patent Owner’s request for additional
discovery with respect to Multi Klient AS is denied;
FURTHER ORDERED that Petitioner’s Motion to Exclude is denied;
and
FURTHER ORDERED that because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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Patent 7,162,967 B2
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For PETITIONER:

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
Kevin B. Laurence
Katherine D. Cappaert
Christopher Ricciuti
OBLON, SPIVAK, McCLELLAND,
MAIER & NEUSTADT, L.L.P.
CPdocketMcKeown@oblon.com
CPdocketKickless@oblon.com

Timothy K. Gilman
Kirkland & Ellis, L.L.P.