1308 889 FEDERAL REPORTER, 3d SERIES · Specification includes both the written description and the...

1308 889 FEDERAL REPORTER, 3d SERIES

ed). Even if we were to assume that thedistrict court used the word ‘‘meritorious’’to mean ‘‘plausible,’’ the court’s findingcontradicts Therasense, which holds that‘‘when there are multiple reasonable infer-ences that may be drawn, intent to deceivecannot be found.’’ Therasense, 649 F.3d at1290–91.

Ultimately, this finding in the court’sopinion leaves us unsure as to whether thecourt’s basis for denying attorneys’ feesrests on a misunderstanding of the law oran erroneous fact finding. Accordingly, weare unable to affirm the court’s exercise ofdiscretion, absent further explanation orreconciliation of the court’s reasoning withregard to its finding of inequitable con-duct. We vacate the portion of the judg-ment denying attorneys’ fees on the basisthat this is not an exceptional case under§ 285, and we remand to the district courtfor reconsideration.

CONCLUSION

For the reasons above, we affirm thedistrict court’s declaratory judgment thatthe ’993 patent is unenforceable for inequi-table conduct. We therefore do not reachthe district court’s summary judgment ofobviousness, claim construction order, orsummary judgment of no direct infringe-ment. We also affirm the district court’sjudgment of tortious interference and de-nial of remedies under the North DakotaUnlawful Sales or Advertising PracticesAct. Finally, we vacate the district court’sdenial of attorneys’ fees under § 285 andremand on that issue alone.

AFFIRMED-IN-PART AND VACAT-ED-AND-REMANDED-IN-PART

COSTS

Costs to cross-appellants.

,

WESTERNGECO LLC, Appellant

v.

ION GEOPHYSICAL CORPORATION,ION International S.A.R.L.,

Appellees

In re: WesternGeco LLC, Appellant

2016-2099, 2016-2100, 2016-2101, 2016-2332, 2016-2333, 2016-2334

United States Court of Appeals,Federal Circuit.

Decided: May 7, 2018

Background: Competitor petitioned forinter partes review (IPR) of patents di-rected to technologies for positioningstreamers towed in array behind ship toconduct marine seismic surveys. Anothercompetitor intervened. The Patent Trialand Appeal Board, 2015 WL 10378275,2015 WL 10378495, 2015 WL 10380984,2016 WL 8944630, 2016 WL 8944631, and2015 WL 10378275, found all institutedclaims to be unpatentable as anticipated orobvious. Patentee appealed and first com-petitor settled and withdrew from case.

Holdings: The Court of Appeals Chen,Circuit Judge, held that:

(1) petitioning competitor was not in privi-ty with intervening competitor, andthus was not barred from seeking IPRon ground that intervening competitorwas served with infringement com-plaint more than year before IPR peti-tion;

(2) Patent Trial and Appeal Board actedwithin its discretion in denying paten-tee’s request for additional discovery;

(3) ‘‘predicting positions’’ meant estimat-ing the actual locations of streamerpositioning devices;

1309WESTERNGECO LLC v. ION GEOPHYSICAL CORP.Cite as 889 F.3d 1308 (Fed. Cir. 2018)

(4) ‘‘control mode’’ meant operationalstate;

(5) claims directed to ‘‘feather anglemode’’ were obvious over prior art ref-erence;

(6) Patent Trial and Appeal Board waspermitted to issue new claim construc-tion in final written decision, althoughpatentee and competitor previouslyagreed on proposed claim construction;

(7) claims directed to ‘‘global control sys-tem’’ were anticipated by prior art ref-erence; and

(8) nexus between claimed invention andindicia of nonobviousness was insuffi-cient to overcome strong showing ofobviousness.

Affirmed.

1. Patents O1138

Court of Appeals reviews decisions bythe Patent Trial and Appeal Board usingthe standard set forth in the Administra-tive Procedure Act (APA), which requirescourt to hold unlawful and set aside agencyaction not in accordance with law or with-out observance of procedure required bylaw. 5 U.S.C.A. § 706.

2. Patents O1138

Court of Appeals reviews the PatentTrial and Appeal Board’s legal conclusionsde novo but reviews for substantial evi-dence any underlying factual determina-tions.

3. Evidence O597

Substantial evidence is such relevantevidence as a reasonable mind might ac-cept as adequate to support a conclusion.

4. Statutes O1384

It is a cardinal rule of statutory con-struction that where Congress adopts a

common-law term without supplying a def-inition, courts presume that Congressknows and adopts the cluster of ideas thatwere attached to the term.

5. Statutes O1205

Where Congress adopts a term that isused in common law across multiple legalsubjects, courts cannot rely on any all-purpose definition but must consider theparticular context in which the term ap-pears.

6. Patents O428

‘‘Assignor estoppel’’ is an equitabledoctrine that prevents a patentee who hasassigned the rights to a patent, and thosein privity with the assignor, from latercontending that the patent assigned is anullity.

See publication Words and Phrasesfor other judicial constructions anddefinitions.

7. Judgment O678(1)

Privity analysis seeks to determinewhether the relationship between the pur-ported privy and the relevant other partyis sufficiently close such that both shouldbe bound by the trial outcome and relatedestoppels.

8. Constitutional Law O4012

Reach of privity to application of col-lateral estoppel cannot extend beyond thelimits of due process. U.S. Const. Amend.5.

9. Patents O1262

Preclusive effect of statute barringparty from instituting inter partes reviewof patent more than year after party isserved with infringement complaint ex-tends to privies, i.e., beyond those whowere parties to the prior lawsuit, to pre-


vent successive challenges to a patent bythose who previously have had the oppor-tunity to make such challenges in priorlitigation. 35 U.S.C.A. § 315(b).

10. Patents O1262

In determining preclusive effect ofstatute barring petitioner from institutinginter partes review (IPR) of patent morethan year after petitioner or its privy isserved with infringement complaint, privi-ty inquiry focuses on relationship betweennamed IPR petitioner and party in priorlawsuit; for example, it is important todetermine whether petitioner and prior lit-igant’s relationship, as it relates to lawsuit,is sufficiently close that it can be fairlysaid that petitioner had full and fair oppor-tunity to litigate validity of patent in law-suit, while in other cases, it may be morerelevant to determine whether petitioner issimply serving as proxy to allow anotherparty to litigate patent validity questionthat other party raised in earlier-filed liti-gation. 35 U.S.C.A. § 315(b).

11. Patents O1262

In determining whether petitioner isbarred from instituting inter partes review(IPR) of patent on ground it was in privitywith party that was served with infringe-ment complaint more than one year earli-er, non-exhaustive considerations include:(1) agreement to be bound; (2) pre-existingsubstantive legal relationships betweenperson to be bound and party to judgment;(3) adequate representation by someonewith same interests who was a party; (4)assumption of control over litigation inwhich judgment was rendered; (5) wherenonparty to earlier litigation acts as proxyfor named party to relitigate same issues;and (6) special statutory scheme expresslyforeclosing successive litigation by nonliti-gants. 35 U.S.C.A. § 315(b).

12. Patents O1262

Petitioner seeking inter partes review(IPR) of patents was not in privity withdefendant manufacturer of accused prod-uct in patentee’s infringement action, andthus petitioner was not barred from seek-ing IPR on ground that its privy wasserved with infringement complaint morethan year before IPR petition; there wasno evidence that manufacturer directed,funded, controlled, or influenced IPR peti-tions or used petitioner as proxy, petition-er and manufacturer were distinct and un-related corporate entities represented bydifferent counsel, and while they had pre-suit business alliance, it was contractualand fairly standard customer-manufactur-er relationship regarding accused product,and agreement for manufacturer to indem-nify petitioner was ambiguous and unde-fined. 35 U.S.C.A. § 315(b).

13. Patents O1262

In determining whether petitioner isbarred from instituting inter partes review(IPR) of patent on ground it was in privitywith party that was served with infringe-ment complaint more than one year earli-er, common desire among multiple partiesto see a patent invalidated, without more,does not establish privity. 35 U.S.C.A.§ 315(b).

14. Patents O1262

Patent Trial and Appeal Board actedwithin its discretion in denying patentee’srequest for additional discovery abouttime-bar in proceedings for inter partesreview (IPR) of patents directed to tech-nologies for positioning streamers towed inarray behind ship to conduct marine seis-mic surveys; patentee contended petitionerwas time-barred from seeking IPR onground that it was in privity with manufac-turer of accused product that patentee


sued in earlier infringement action, butboard considered discovery already provid-ed to patentee and reasonably found noevidence to suggest that additional discov-ery would produce agreements with anyrelation to infringement litigation or obli-gations on manufacturer to defend or in-demnify petitioner. 35 U.S.C.A. § 315(b).

15. Patents O1380

‘‘Predicting positions’’ meant estimat-ing the actual locations of streamer posi-tioning devices, in patent directed to tech-nologies for positioning streamers towedin array behind ship to conduct marineseismic surveys; contrary to patentee’sproposed construction requiring behavior-predictive model-based control logic, plainlanguage of claim did not mention behav-ior predictive model or require specifictype of prediction scheme, and while speci-fication described behavior-predictive mod-el-based control logic, this was preferredembodiment that did not limit claim.

16. Patents O905

Specification includes both the writtendescription and the claims of the patent.

17. Patents O1313

Patent’s specification, together withits prosecution history, constitutes intrinsicevidence to which the Patent Trial andAppeal Board, gives priority when it con-strues claims in inter partes review. 37C.F.R. § 42.100(b).

18. Patents O1138

Court of Appeals reviews de novo thePatent Trial and Appeal Board’s assess-ment of the intrinsic evidence when con-struing a patent in an inter partes review.

19. Patents O1380

‘‘Control mode’’ meant operationalstate, in patent directed to technologies

for positioning streamers towed in arraybehind ship to conduct marine seismic sur-veys; contrary to patentee’s proposed con-struction of ‘‘goal-oriented, automatic con-figuration,’’ any operation of computersystem or program would have goal, so in-jecting ‘‘goal-oriented’’ added nothingmeaningful and specification did not makeclear that control mode must be automat-ic.

20. Patents O740

Claims directed to ‘‘feather anglemode,’’ in patent directed to technologiesfor positioning streamers towed in arraybehind ship to conduct marine seismic sur-veys, were obvious over prior art referencethat disclosed method for controlling posi-tion and shape of marine seismic streamercables towed by vessel; ‘‘feather anglemode’’ referred to control mode that at-tempted to keep each streamer in straightline offset from towing direction by certainangle, and one of ordinary skill in artwould have been motivated to modify priorart to implement feather angle mode tomaintain consistent separations betweenstreamers, although prior did not disclosefeather angle, because entanglement ofstreamers was significant and known prob-lem. 35 U.S.C.A. § 103(a).

21. Patents O1138

Court of Appeals reviews the PatentTrial and Appeal Board’s ultimate determi-nation of obviousness in inter partes re-view (IPR) de novo, and court reviewsboard’s underlying factual findings for sub-stantial evidence. 35 U.S.C.A. § 103(a).

22. Patents O1262

Patent Trial and Appeal Board waspermitted to issue new claim constructionin final written decision in inter partesreview (IPR) of patent directed to technol-


ogies for positioning streamers towed inarray behind ship to conduct marine seis-mic surveys, although patentee and com-petitor previously agreed on proposedclaim construction; claim construction wasdisputed issue during the IPR proceedingsafter patentee revised its proposed con-struction, and patentee was not prejudicedbecause board concluded that challengedclaims were unpatentable even under pat-entee’s new proposed construction.

23. Patents O1262

Patent Trial and Appeal Board is notbound to adopt either party’s preferredarticulated construction of a disputed claimterm in inter partes review (IPR).

24. Patents O520

Claims directed to ‘‘global control sys-tem,’’ in patent directed to technologies forpositioning streamers towed in array be-hind ship to conduct marine seismic sur-veys, were anticipated by prior art refer-ence; reference’s background discussiondisclosed marine seismic streamers towedin array, each of which had plurality ofstreamer positioning devices, referencewent on to disclose control systems onindividual positioning devices that includedcontrol line configured to receive controlsignals, and thus it disclosed overall dis-tributive control system comprising localcontrol system in each positioning devicedispersed along streamers and separateglobal position determining system able tocontrol positioning devices by transmittingappropriate location information along con-trol lines. 35 U.S.C.A. § 102.

25. Patents O1357

Statement in a patent that somethingis in the prior art is binding on the appli-cant and patentee for determinations ofanticipation and obviousness. 35 U.S.C.A.§§ 102, 103.

26. Patents O792

Patent owner in inter partes reviewbears the burden of showing a sufficientnexus between the claimed invention andany objective evidence of nonobviousness.35 U.S.C.A. § 103.

27. Patents O792

To establish a presumption of a nexusbetween the claimed invention and anyobjective evidence of nonobviousness basedon a commercial embodiment, the patenteemust show that the commercial productembodies the claimed features, and iscoextensive with them. 35 U.S.C.A. § 103.

28. Patents O740

Nexus between claimed invention andindicia of nonobviousness was insufficientto overcome strong showing of obviousnessin inter partes review of patents directedto technologies for positioning streamerstowed in array behind ship to conductmarine seismic surveys; testimony of pat-entee’s witness did not indicate that com-mercial products embodied the challengedclaims, and patentee failed to show thatthe driving force behind the product saleswas a direct result of the unique character-istics of the claimed inventions. 35U.S.C.A. § 103.

Patents O2091

6,691,038. Cited.

Patents O2091

7,080,607, 7,162,967, 7,293,520. Un-patentable.

Patents O2091

5,790,472. Cited as Prior Art.

Appeals from the United States Patentand Trademark Office, Patent Trial and


Appeal Board in Nos. IPR2014-00687,IPR2014-00688, IPR2014-00689, IPR2014-01475, IPR2014-01477, IPR2014-01478,IPR2015-00565, IPR2015-00566, IPR2015-00567.

JOHN C. O’QUINN, Kirkland & Ellis LLP,Washington, DC, argued for appellant.Also represented by WILLIAM H. BURGESS;

LESLIE M. SCHMIDT, TIMOTHY GILMAN, NewYork, NY; MICHAEL KIKLIS, CHRISTOPHER

RICCIUTI, Oblon, McClelland, Maier &Neustadt, LLP, Alexandria, VA.

GREGORY A. CASTANIAS, Jones Day, Wash-ington, DC, argued for appellees. Also rep-resented by JASON M. GARR, EMILY JUSTINE

TAIT, Detroit, MI; DANIELLE J. HEALEY,

BRIAN GREGORY STRAND, Fish & Richardson,PC, Houston, TX.

Before WALLACH, CHEN, andHUGHES, Circuit Judges.

CHEN, Circuit Judge.

WesternGeco LLC (WesternGeco) ap-peals from the final written decisions ofthe Patent Trial and Appeal Board (Board)in inter partes review (IPR) proceedingsinstituted on six petitions filed by Petro-leum Geo–Services, Inc. (PGS)1 againstthree patents owned by WesternGeco: U.S.Patent Nos. 7,080,607 (the ’607 Patent),7,162,967 (the ’967 Patent), and 7,293,520(the ’520 Patent) (collectively, the West-ernGeco Patents). PGS filed its IPR peti-tions in two rounds: the first three peti-tions challenged certain claims of each ofthe three WesternGeco Patents; and thesecond three petitions challenged addition-

al claims of each of the WesternGeco Pat-ents. After the first round of IPRs wasinstituted, ION Geophysical Corp. andION International S.A.R.L. (together,ION) moved, under 35 U.S.C. § 315(c), tojoin those IPRs. The Board granted ION’srequest but restricted its involvement toreceiving notification of filings and attend-ing, rather than actively participating in,depositions and oral hearings.

The Board issued six final written deci-sions, finding all of the instituted claims inthe six proceedings to be unpatentable asanticipated or obvious. It also rejectedWesternGeco’s arguments that the IPRproceedings were time-barred under 35U.S.C. § 315(b). We conclude that substan-tial evidence supports the Board’s unpa-tentability determinations, as well as itsconclusion that the proceedings were nottime-barred. We thus affirm the Board’sdecisions.

BACKGROUND

I. Technical Background

We have familiarity with the Western-Geco Patents through prior appeals. See,e.g., WesternGeco L.L.C. v. ION Geophysi-cal Corp., 837 F.3d 1358, 1364 (Fed. Cir.2016).2 The WesternGeco Patents are di-rected to technologies for controlling themovement and positioning of a series ofstreamers towed in an array behind a ship.These streamers emit acoustic signals anddetect the returning signals that reflectfrom the ocean floor. ’967 Patent col. 1, ll.28–41. The collected data can be used tocreate a map of the subsurface geology,

1. While WesternGeco’s appeal before thiscourt was pending, PGS settled with Western-Geco and withdrew from the appeal. SeePGS’s Unopposed Mot. to Withdraw at 2,ECF No. 82; Order at 2, ECF No. 86.

2. The prior appeals involved an additionalpatent owned by WesternGeco, U.S. PatentNo. 6,691,038 (the ’038 Patent), which is notat issue here.


helping oil companies analyze underwaternatural resource formations and explorefor oil and gas beneath the ocean floor.

Conventional marine seismic survey sys-tems use long streamers that are towedbehind ships in open-water conditions. Thestreamers, equipped with sensors, canstretch for a mile or more. Vessel move-ments, weather, and other conditions cancause the streamers to tangle or driftapart. To obtain accurate survey data, it isnecessary to control the positioning of thestreamers, both vertically in the water, aswell as horizontally against ocean currentsand forces that can cause the normally-parallel streamers to bend and even entan-gle with each other. Id. at col. 1, l. 42–col.2, l. 16. The WesternGeco Patents general-ly relate to a system for controlling thepositioning of the streamers in relation toeach other by mounting on each streamera set of ‘‘streamer positioning devices’’which can realign the individual streamersinto their desired positions. Id. col. 2, ll.56–58.

II. Procedural History

WesternGeco, PGS, and ION are allparticipants in the marine seismic surveyindustry. WesternGeco launched its com-mercial steerable streamer system, the Q–Marine, in 2000. J.A. 4794. Subsequently,PGS commissioned ION to design andbuild a competing commercial streamersystem, the DigiFIN, which launched sev-eral years later. Id.

In 2009, WesternGeco sued ION in theU.S. District Court for the Southern Dis-

trict of Texas (the District Court) for in-fringement of the WesternGeco Patents, aswell as the ’038 Patent. To assist in devel-oping its infringement case against ION,WesternGeco served PGS with a third-party subpoena, seeking information relat-ing to PGS’s use and operation of ION’sDigiFIN product. In response, PGS ap-peared (through its own counsel) in thelawsuit as a third party and produced doc-uments, but did not file anything in thatlitigation. In August 2012, a jury returneda verdict finding ION had infringed allfour patents asserted and that ION hadfailed to prove that any of the assertedpatents were invalid. On appeal, this courtaffirmed all aspects of the District Court’sjudgment except for willful infringementand damages.3

After receiving a favorable infringementverdict against ION, WesternGeco nextsued PGS in the District Court for alleged-ly-related infringement of the same fourpatents ION had been found to have in-fringed. In response, PGS sought to havethe patent claims asserted against it ad-ministratively cancelled, by filing at theBoard the two rounds of inter partes re-view petitions discussed above. The Boarddenied institution of review for the peti-tions concerning the ’038 Patent but insti-tuted review on all six of PGR’s IPR peti-tions concerning the WesternGeco Patents,finding a reasonable likelihood that PGSwould prevail with respect to the chal-lenged claims.

After the first round of PGS’s petitionshad been instituted, ION moved to join

3. We vacated the judgment of no willful in-fringement by ION and remanded for furtherconsideration of enhanced damages under§ 284. See WesternGeco L.L.C. v. ION Geophy-sical Corp., 837 F.3d 1358, 1364 (Fed. Cir.2016). We also reversed the District Court’saward of lost profits resulting from conductoccurring abroad. Id. (reinstating aspects of

our judgment set forth in WesternGeco L.L.C.v. ION Geophysical Corp., 791 F.3d 1340,1344 (Fed. Cir. 2015) ). In January 2018, theSupreme Court agreed to review WesternGe-co’s challenge to our ruling on lost profits.WesternGeco L.L.C. v. ION Geophysical Corp.,––– U.S. ––––, 138 S.Ct. 734, 199 L.Ed.2d 601(2018). It heard oral argument in April 2018.


those proceedings. Both WesternGeco andPGS opposed. WesternGeco argued thatjoinder would create delay and complicatethe PGS IPR schedule. PGS, for its part,expressed concern that WesternGecowould seek to add a ‘‘substantial volume oftestimony’’ from the ION litigation to theIPR proceeding. PGS added that such tes-timony would be highly prejudicial becauseit did not have the opportunity to partici-pate in the ION lawsuit. After consideringthe arguments, the Board granted ION’srequest to join PGS’s first round of IPRs,but restricted ION’s role to ‘‘spectator’’status, meaning that it had no right ‘‘to filepapers, engage in discovery, or participatein any deposition or oral hearing.’’ J.A.13439. ION did not join the second roundof IPRs.

The Board issued six final written deci-sions (two decisions per patent), findingthat various claims were either anticipatedby or would have been obvious over sever-al prior art references. See generally Pe-troleum Geo–Servs., Inc. v. WesternGecoL.L.C. (PGS I ), No. IPR2014-00687, 2015WL 10378275 (P.T.A.B. Dec. 15, 2015)(J.A. 1–44) (invalidating claims 1 and 15 ofthe ’967 Patent); Petroleum Geo–Servs.,Inc. v. WesternGeco L.L.C. (PGS II ), No.IPR2014-00688, 2015 WL 10378495(P.T.A.B. Dec. 15, 2015) (J.A. 45–99) (inval-idating claims 1 and 15 of the ’607 Patent);Petroleum Geo–Servs., Inc. v. WesternGe-co L.L.C. (PGS III ), No. IPR2014-00689,2015 WL 10380984 (P.T.A.B. Dec. 15, 2015)(J.A. 100–52) (invalidating claims 1–2 and18–19 of the ’520 Patent); Petroleum Geo–Servs., Inc. v. WesternGeco L.L.C. (PGSIV ), No. IPR2014-01475, 2016 WL 8944630(P.T.A.B. Mar. 16, 2016) (J.A. 153–216)(invalidating claim 4 of the ’967 Patent);Petroleum Geo–Servs., Inc. v. WesternGe-co L.L.C. (PGS V ), No. IPR2014-01477,2016 WL 8946031 (P.T.A.B. Mar. 16, 2016)

(J.A. 217–95) (invalidating claims 16–23 ofthe ’607 Patent); Petroleum Geo–Servs.,Inc. v. WesternGeco L.L.C. (PGS VI ), No.IPR2014-01478, 2016 WL 8944631(P.T.A.B. Mar. 16, 2016) (J.A. 296–359)(invalidating claims 3, 5, 13–17, 20, 22, and30–34 of the ’520 Patent).

WesternGeco appealed the Board’s deci-sions in PGS I–VI to this court. The ap-peals were consolidated, listing both PGSand ION as Appellees. See Order at 1–2,ECF No. 27. In relevant part, WesternGe-co argued that the Board deprived West-ernGeco of due process and violated theAdministrative Procedure Act by denyingWesternGeco the opportunity to be heardon whether the inter partes reviews weretime-barred pursuant to 35 U.S.C.§ 315(b). WesternGeco also reservedrights to file additional briefing in light ofour then-pending en banc reconsiderationof Wi–Fi One, LLC v. Broadcom Corp.,837 F.3d 1329 (Fed. Cir. 2016). PGS filed aresponse brief, and ION ‘‘join[ed] in andadopt[ed] by reference’’ PGS’s brief ratherthan filing its own. ION’s Joinder in theBr. of PGS at 1, ECF No. 50; see Order at2, ECF No. 51.

After briefing was completed in this ap-peal, PGS settled with WesternGeco andfiled a motion to withdraw. See PGS’sUnopposed Mot. to Withdraw at 2, ECFNo. 82. We granted PGS’s motion, orderedthe USPTO to inform the court whether itintended to intervene, and ordered West-ernGeco and ION to file a joint statusreport. See Order at 2, ECF No. 86. TheUSPTO declined to intervene. Upon con-sideration of the parties’ report, we or-dered ION to file a new brief, addressingonly PGS I–III, and permitted Western-Geco to file a new reply brief. Order at 2,ECF No. 92.

Shortly before the date scheduled fororal argument, we issued our en banc deci-


sion in Wi–Fi One v. Broadcom Corp., 878F.3d 1364 (Fed. Cir. 2018) (en banc). Wi–Fi One held that ‘‘time-bar determinationsunder [35 U.S.C.] § 315(b) are reviewableby this court’’ and overruled our priorcontrary precedent. Id. at 1374. Conse-quently, WesternGeco requested leave tofile supplemental briefing regarding theproper legal standard to determine wheth-er a party is a ‘‘real party in interest, orprivy of the petitioner’’ under 35 U.S.C.§ 315(b) and whether ION was a ‘‘realparty in interest’’ or a ‘‘privy of’’ of PGS.Notice at 1, ECF No. 107. We granted therequest. Order at 2, ECF No. 108.

STANDARDS OF REVIEW

[1] We review Board decisions usingthe standard set forth in the Administra-tive Procedure Act (APA), 5 U.S.C. § 706et seq. In re Sullivan, 362 F.3d 1324, 1326(Fed. Cir. 2004) (citing Dickinson v. Zur-ko, 527 U.S. 150, 154, 119 S.Ct. 1816, 144L.Ed.2d 143 (1999) ); see Belden Inc. v.Berk–Tek LLC, 805 F.3d 1064, 1080 (Fed.Cir. 2015). Under the APA, we must ‘‘holdunlawful and set aside agency action TTT

not in accordance with law [or] TTT withoutobservance of procedure required by law.’’5 U.S.C. § 706.

[2, 3] We review the Board’s legal con-clusions de novo but review for substantialevidence any underlying factual determina-tions. See Nike, Inc. v. Adidas AG, 812F.3d 1326, 1332 (Fed. Cir. 2016); In reGiannelli, 739 F.3d 1375, 1378–79 (Fed.Cir. 2014). Substantial evidence is ‘‘suchrelevant evidence as a reasonable mindmight accept as adequate to support a

conclusion.’’ Consol. Edison Co. v. NLRB,305 U.S. 197, 229, 59 S.Ct. 206, 83 L.Ed.126 (1938); In re Applied Materials, Inc.,692 F.3d 1289, 1294 (Fed. Cir. 2012).

DISCUSSION

WesternGeco contends that the Board’sdecisions invalidating claims of the West-ernGeco Patents are wrong on the meritsand should be reversed. But WesternGecoargues we need not reach the merits be-cause Wi–Fi One has made time-bar deci-sions under § 315(b) judicially reviewable,and, as a threshold matter, we should va-cate and dismiss the petitions as time-barred. In WesternGeco’s view, (1) IONwas served with a patent infringementcomplaint well over a year before the IPRpetitions were filed and unquestionablywould have been time-barred from filingany petitions challenging the WesternGecoPatents had it not been joined with PGS’spetitions; and (2) PGS’s petitions should betime-barred because ION was a ‘‘real par-ty in interest,’’ or ‘‘privy’’ of PGS. Conse-quently, WesternGeco argues that theBoard never should have instituted therequested IPRs because no party timelyfiled the petitions.4

I. Time Bar Under 35 U.S.C. § 315(b)

A. Legal Standard for Privity

Section 315(b) of the Leahy–SmithAmerica Invents Act (AIA), Pub. L. No.112-29, § 3(b)(1), 125 Stat. 284, 287 (2011)provides that the USPTO may not institutean IPR where the petition ‘‘is filed morethan 1 year after the date on which the

4. WesternGeco did not argue before theBoard, nor does it argue here, that ION isbarred from joining the IPRs pursuant to 35U.S.C. § 315(c), provided the IPRs wereproperly instituted. J.A. 13436; see 35 U.S.C.

§ 315(b) (‘‘The time limitation set forth in thepreceding sentence shall not apply to a re-quest for joinder under subsection (c).’’ (em-phasis added) ).


petitioner, the real party in interest, orprivy of the petitioner is served with acomplaint alleging infringement of the pat-ent.’’ 35 U.S.C. § 315(b) (emphases added).

For purposes of this appeal, WesternGe-co focuses on privity as the key basis of itstime-bar challenge, reasoning that privityis more expansive in the types of parties itencompasses compared to real party ininterest. See Appellant’s Supp. Br. 8 n.5(citing the USPTO Office Patent TrialPractice Guide, 77 Fed. Reg. 48,756, 48,759(Aug. 14, 2012) (hereinafter, ‘‘Trial Prac-tice Guide’’) ).

[4–6] Neither the AIA nor the PatentAct defines the statutory term ‘‘privy.’’ But‘‘privy’’ is a well-established common-lawterm, and it is a ‘‘cardinal rule of statutoryconstruction’’ that where Congress adoptsa common-law term without supplying adefinition, courts presume that Congress‘‘knows and adopts the cluster of ideas thatwere attached’’ to the term. FAA v. Coo-per, 566 U.S. 284, 291–92, 132 S.Ct. 1441,182 L.Ed.2d 497 (2012); Microsoft Corp. v.i4i Ltd. P’ship, 564 U.S. 91, 103–04, 131S.Ct. 2238, 180 L.Ed.2d 131 (2011). WhereCongress adopts a term that is used incommon law across multiple legal subjects,courts ‘‘cannot rely on any all-purpose def-inition but must consider the particularcontext in which the term appears.’’ Coo-per, 566 U.S. at 294, 132 S.Ct. 1441.5

The AIA’s legislative history supportsadopting the common law meaning of priv-

ity. The proposed administrative reviewprocedures, including IPR, were intendedto provide ‘‘quick and cost effective alter-natives to litigation.’’ H. REP. NO. 112–98,at 48 (2011). Another expressed congres-sional goal was to ‘‘establish a more effi-cient and streamlined patent system thatwill improve patent quality[.]’’ Id. at 40. Atthe same time, Congress recognized theimportance of protecting patent ownersfrom patent challengers who could use thenew administrative review procedures as‘‘tools for harassment.’’ Id. (‘‘While thisamendment is intended to remove currentdisincentives to current administrativeprocesses, the changes made by it are notto be used as tools for harassment or ameans to prevent market entry throughrepeated litigation and administrative at-tacks on the validity of a patent.’’).

In particular, Congress observed thatthe then-existing inter partes reexamina-tion regime at times unfairly burdenedpatent owners in situations where a set ofchallengers coordinated reexamination at-tacks to tie up a patent in the administra-tive review process for an extended period.S. REP. NO. 111-18 at 54–55 (2009) (‘‘It isnot uncommon for the competitors of apatent’s owner or licensee to coordinatetheir efforts and bring serial inter parteschallenges to a patent, one after another,each raising a different set of prior art inits challenge.’’).

To address this concern, Congressplaced several restrictions on IPR petition-

5. Considering that the context here involvesan interpretation of the text of § 315(b), West-ernGeco’s reliance on our assignor estoppelcase law is misplaced. Assignor estoppel is anequitable doctrine that prevents a patenteewho has assigned the rights to a patent (andthose in privity with the assignor) from latercontending that the patent assigned is a nulli-ty. Intel Corp. v. ITC, 946 F.2d 821, 836–38

(Fed. Cir. 1991). In contrast, privity in thecontext of the § 315(b) bar refers to whetherthe relationship between the party to be es-topped and the party in the prior litigation issufficient to conclude that the act of oneshould be attributed to the other. In otherwords, assignor estoppel is about the conse-quences of a commercial transaction, ratherthan the effects of prior litigation.


ers. For example, it raised the substantivethreshold standard that governs the Pat-ent Office’s institution of the agency’s re-view process. Instead of requiring forIPRs, as for reexaminations, that a peti-tioner raise merely a ‘‘substantial newquestion of patentability,’’ the AIA re-quires a showing of ‘‘a reasonable likeli-hood that’’ the challenger would prevailwith respect to at least one of the claimschallenged in the petition. Compare 35U.S.C. § 312(a) (2006) (repealed 2012),with id. § 314(a) (2012).

The statute imposes other restrictions aswell. A party cannot file an IPR petitionagainst a patent after having alreadybrought a declaratory judgment actionchallenging the validity of a claim of thatpatent. Id. § 315(a)(1). IPR is also barredfor petitions filed more than one year aftera party is served with a complaint alleginginfringement of the patent. See id.§ 315(b). And following a final written de-cision in an IPR, the petitioner is estoppedfrom continuing to challenge the validity ofthe patent claims subject to that decisionbased on any grounds that the petition‘‘raised or reasonably could have raisedduring’’ the IPR. See id. § 315(e). For§ 315(b) and (e), these restrictions applywith equal force to an IPR petitioner, any‘‘real party in interest’’ to that IPR, andany ‘‘privy of the petitioner.’’

As one Senator observed, privity, asused in the AIA, ‘‘takes into account the‘practical situation,’ and should extend toparties to transactions and other activitiesrelating to the property in question.’’ 157Cong. Rec. S1376 (daily ed. March 8, 2011)(statement of Sen. Kyl); see also 154 Cong.Rec. S9987 (daily ed. Sept. 27, 2008) (state-ment of Sen. Kyl) (‘‘The concept of privity,of course, is borrowed from the commonlaw of judgments.’’). The legislative history

thus lends support to the conclusion that‘‘privity’’ in § 315(b) should be given itscommon law meaning.

Historically, common law definitions ofprivity were narrow and specific, denotingmutual succession or relationship to thesame rights of property. See 18A CharlesAlan Wright & Arthur R. Miller, FederalPractice and Procedure § 4449 & n.32 (2ded. 2017). Over time, its common lawmeaning expanded: ‘‘The term ‘privity,’however, has also come to be used morebroadly, as a way to express the conclusionthat nonparty preclusion is appropriate onany ground.’’ Taylor v. Sturgell, 553 U.S.880, 894 n.8, 128 S.Ct. 2161, 171 L.Ed.2d155 (2008) (citing 18A Wright & Miller§ 4449, at 351–53 & n.33); Cal. Physicians’Serv. v. Aoki Diabetes Research Inst., 163Cal. App. 4th 1506, 1521, 78 Cal.Rptr.3d646 (Cal. App. 2008). As the Trial PracticeGuide observes: ‘‘The emphasis is not on aconcept of identity of parties, but on thepractical situation.’’ 77 Fed. Reg. at 48,759(quoting Cal. Physicians’ Serv., 163 Cal.App. 4th at 1521, 78 Cal.Rptr.3d 646).

[7] The Trial Practice Guide furtherrecognizes that ‘‘privity’’ has no universal-ly-applicable common law definition. Id.‘‘Privity is essentially a shorthand state-ment that collateral estoppel is to be ap-plied in a given case.’’ Id. (quoting Cal.Physicians’ Serv., 163 Cal. App. 4th at1521, 78 Cal.Rptr.3d 646). That is, theprivity analysis seeks to determine‘‘whether the relationship between the pur-ported ‘privy’ and the relevant other partyis sufficiently close such that both shouldbe bound by the trial outcome and relatedestoppels.’’ See id. Given that determiningwhether two parties may be in privity ‘‘is ahighly fact-dependent question,’’ the TrialPractice Guide states the Board will en-gage in a ‘‘flexible’’ analysis on a ‘‘case-by-


case basis.’’ Id. In sum, these descriptionsof the privity analysis in the Trial PracticeGuide accurately reflect the common lawconsiderations for a privity inquiry.

[8] But, importantly, the reach of privi-ty cannot extend beyond the limits of dueprocess. In Taylor v. Sturgell, the Su-preme Court observed that a person whowas not a party to a suit generally has nothad a ‘‘full and fair opportunity to litigate’’the claims and issues settled in that suit.553 U.S. at 894, 128 S.Ct. 2161. Becausenonparty preclusion risks binding thosewho have not had a full and fair opportuni-ty to litigate, the Supreme Court has cau-tioned that there is a general rule againstnonparty preclusion, subject to certain ex-ceptions. Id. at 892–93, 128 S.Ct. 2161; seeAspex Eyewear, Inc. v. Zenni Optical,Inc., 713 F.3d 1377, 1382 (Fed. Cir. 2013)(‘‘A full and fair opportunity to litigate isthe touchstone of any preclusion analy-sis.’’); see also Cal. Physicians’ Serv., 163Cal. App. 4th at 1522, 78 Cal.Rptr.3d 646(‘‘Notions of privity have been expanded tothe limits of due process.’’).

[9, 10] As informed by Taylor and oth-er cases, the standards for the privity in-quiry must be grounded in due process.Turning back to the statute, the preclusiveeffect of § 315(b) extends to privies—i.e.,beyond those who were parties to the priorlawsuit. Because the rationale behind§ 315(b)’s preclusion provision is to pre-vent successive challenges to a patent bythose who previously have had the oppor-tunity to make such challenges in priorlitigation, the privity inquiry in this con-text naturally focuses on the relationshipbetween the named IPR petitioner and theparty in the prior lawsuit. For example, itis important to determine whether the pe-titioner and the prior litigant’s relation-

ship—as it relates to the lawsuit—is suffi-ciently close that it can be fairly said thatthe petitioner had a full and fair opportuni-ty to litigate the validity of the patent inthat lawsuit. In other cases, it may bemore relevant to determine whether thepetitioner is simply serving as a proxy toallow another party to litigate the patentvalidity question that the other partyraised in an earlier-filed litigation. SeeTaylor, 553 U.S. at 895, 128 S.Ct. 2161.

[11] The Supreme Court in Tayloridentified a non-exhaustive list of consider-ations where nonparty preclusion would bejustified. Id. at 894–95, 128 S.Ct. 2161.These considerations include: (1) an agree-ment to be bound; (2) pre-existing substan-tive legal relationships between the personto be bound and a party to the judgment(e.g., ‘‘preceding and succeeding owners ofproperty’’); (3) adequate representation bysomeone with the same interests who wasa party (e.g., ‘‘class actions’’ and ‘‘suitsbrought by trustees, guardians, and otherfiduciaries’’); (4) assumption of control overthe litigation in which the judgment wasrendered; (5) where the nonparty to anearlier litigation acts as a proxy for thenamed party to relitigate the same issues;and (6) a special statutory scheme express-ly foreclosing successive litigation by non-litigants. Id.

With these principles in mind, we turnto WesternGeco’s challenge to the Board’stime-bar decision under § 315(b).

B. WesternGeco’s Time–Bar Challenge

As noted, WesternGeco’s time-bar chal-lenge focuses on privity, rather than realparty in interest. See Appellant Supp. Br.8 n.5. WesternGeco argues that the scopeof privity is more expansive than real par-ty in interest, and that neither concept is


limited to the question of ‘‘control’’ as anexclusive test for privity. Id. In otherwords, the privity analysis is broader thansimply inquiring whether PGS controlledor had an opportunity to control ION’sdecisions in the ION patent infringementlitigation, or whether ION controlled orhad an opportunity to control PGS’s deci-sions in the PGS-initiated IPRs.6

[12] We agree with WesternGeco that‘‘control’’ is not the exclusive analyticalpathway for analyzing privity; as describedabove, it is but one of a variety of consider-ations. However, we disagree with West-ernGeco’s assertion that the Board appliedan unduly-restrictive test and focused onlyon control. To the extent the Board ana-lyzed privity based on ION’s control overthe PGS proceedings, it properly did so inresponse to WesternGeco’s advancementof a theory focusing primarily on control.See, e.g., J.A. 35 (summarizing WesternGe-co’s control arguments); see also Wi–FiOne, LLC v. Broadcom Corp., No. 2015-1944, 887 F.3d 1329, 2018 WL 1882911(Fed. Cir. Apr. 20, 2018) (on remand by enbanc court to merits panel, deciding meritsof WiFi One’s time-bar claim).7 But whereWesternGeco raised additional consider-ations, such as pre-existing legal relation-ships, the Board considered those argu-ments and found them unpersuasive. See,e.g., J.A. 33–38, 193–206.

Substantial evidence supports theBoard’s finding that ION lacked the oppor-

tunity to control PGS’s IPR petitions. SeeTaylor, 553 U.S. at 894, 128 S.Ct. 2161;Wi–Fi One, LLC v. Broadcom Corp., No.2015-1944, 887 F.3d at 1340-41, 2018 WL1882911, at *8 (noting control as a factor todetermine privity). The Board found noevidence to suggest that ION directed,funded, controlled, or influenced the PGSIPR petitions. See J.A. 35–38, 198–99, 204–06. Nor is there evidence supporting West-ernGeco’s contention that ION used PGSas a proxy. Id. The litigation history sug-gests that PGS filed its IPRs as a defen-sive measure in response to WesternGeco’slawsuit against PGS, rather than at ION’sinstruction. When ION tried to join theIPRs, PGS actively opposed the attemptedjoinder. Even when ION was joined, thePTO gave ION only spectator status.Moreover, ION did not disclose any priorart references to PGS in connection withthe IPR proceedings, nor did it pay forPGS’s IPRs. The Board reasonably foundthat ION did not control or direct the IPRpetitions.

[13] Further, ION and PGS are dis-tinct and unrelated corporate entities rep-resented by different counsel. J.A. 198.Nothing in the evidence shows that onehas any control over the other. J.A. 198–203. Nor does the record show that PGScontrolled or funded the prior litigation.Other than responding to a third-partysubpoena issued by WesternGeco, PGS

6. We are unpersuaded by ION’s contentionthat WesternGeco waived its privity argu-ment. This issue was raised in both rounds ofthe IPR. The Board fully considered the cir-cumstances surrounding the relationship be-tween ION and PGS and made extensive factfindings.

7. In that remand decision, we found that theBoard properly focused on the factors that thepatent owner raised in its argument, i.e.,

whether the IPR petitioner had been in con-trol of a prior litigation that challenged thevalidity of the patent. Wi–Fi One, No. 2015-1944, 887 F.3d at 1336-37, 1338 n. 3, 2018WL 1882911, at *4, *5 n.3. Wi–Fi One specifi-cally affirmed the Board’s understanding of abroader test to include ‘‘a number of circum-stances in which privity might be found, in-cluding when the nonparty controlled the dis-trict court litigation.’’ Id. at 1337, 2018 WL1882911 at *4.


lacked any substantive involvement in theION litigation. J.A. 194–95. As a generalproposition, we agree with the Board thata common desire among multiple parties tosee a patent invalidated, without more,does not establish privity. J.A. 196, 203;see Trial Practice Guide, 77 Fed. Reg. at48,760.

Setting aside factors concerning control,we also see no reason to overturn theBoard’s determination that privity did notexist based on any of the other allegedconsiderations. WesternGeco relies on thepre-existing business alliance betweenION and PGS before the ION lawsuitcommenced, as well as indemnity provi-sions contained in the purchase agree-ments for the product accused of infring-ing WesternGeco’s patents. AppellantSupp. Br. 13–19. As explained below, weagree with the Board that these factorsare insufficient to make PGS and IONprivies within the meaning of the statute.

Regarding the pre-suit business alliance,the Board found that ION and PGS had acontractual and fairly standard customer-manufacturer relationship regarding theaccused product. J.A. 203. This findingdoes not necessarily suggest that the rela-tionship is sufficiently close that bothshould be bound by the trial outcome andrelated estoppels, nor does it suggest,without more, that the parties were litigat-ing either the district court action or theIPRs as proxies for the other.

As for the parties’ legal relationship, theBoard reviewed the purchase agreementsas well as relevant business correspon-dence between ION and PGS but did notfind them adequate to establish privity.J.A. 35–36, 199–202. WesternGeco con-tends that ION is obligated to indemnifyPGS and is thus a privy of PGS. TheBoard, however, fully considered and rea-

sonably rejected such a contention basedon the ambiguous, undefined nature of theunderlying agreements. J.A. 205–06. Inparticular, the 2008 Master PurchaseAgreement between PGS and an ION sub-sidiary stated that the ION subsidiary‘‘shall indemnify’’ PGS. J.A. 200. But it didnot specify the meaning of ‘‘indemnify’’ asrequiring ION or its subsidiary to pay forany litigation defense expenses or for anydamages related to infringement. Rather,the provision included options by the IONsubsidiary to modify or replace the equip-ment if an infringement claim was madeagainst PGS. Id. After reviewing the entireprovision as a whole, the Board found thatthe evidence did not show any obligation ofION to defend PGS from a patent in-fringement lawsuit, reimburse or pay for alawsuit, cover any damages liability forany adverse patent infringement verdictagainst PGS, or initiate an invalidity chal-lenge in one or more fora. See J.A. 200–01.Moreover, as the Board observed, the com-munications between ION and PGS reveala cordial, but arms-length negotiation overpotential limited remedies available underthe indemnity provisions. See J.A. 38, 201–02. None of the correspondence relating tothe indemnity provision shows an expecta-tion that ION would be responsible forstepping in, or otherwise protecting PGSfrom a patent infringement suit. J.A. 36,206.

The Board reasonably found that thenon-specific nature of the indemnificationprovisions here, combined with the parties’communications as to the scope of thoseprovisions, did not obligate ION to protectPGS in the comprehensive way that West-ernGeco alleges. The Board also noted thatthe remedies may have been limited tooptions such as replacing or modifying aproduct found to have infringed a patent.We agree with the Board that such a


circumscribed indemnity provision doesnot amount to a sufficiently-close relation-ship to warrant finding ION and PGS inprivity.

Finally, WesternGeco points to ION andPGS’s conduct in the aftermath of the IONjury trial to argue that their relationship issufficiently close to trigger § 315(b)’stime-bar. Specifically, WesternGeco claimsthat ION and PGS continued meeting todiscuss litigation strategy after the jury’sverdict in the ION litigation. AppellantSupp. Br. 16. The evidence, however, onlyshows that ION’s counsel made two briefinquiries of PGS, one of which PGS ig-nored. J.A. 4085. The other was a single,half-hour phone call between PGS andION as to whether WesternGeco had dis-puted the prior art status of a particularreference during the ION trial, J.A. 4083–86, during which the attorneys did noteven discuss the substance of the refer-ence, J.A. 4084. These communications donot compel a reversal of the Board’s find-ings about the parties’ arms-length rela-tionship.

[14] For these reasons, we affirm theBoard’s conclusion that PGS and ION are

not privies within the meaning of§ 315(b).8 Substantial evidence supportsthe Board’s conclusion that ION’s relation-ship with PGS is not sufficiently close suchthat the ION proceeding would have givenPGS a full and fair opportunity to litigatethe validity of the claims of the Western-Geco Patents. Accordingly, the petitionsare not barred under 35 U.S.C. § 315(b).9

II. Merits

Having decided that PGS’s IPR peti-tions were not statutorily barred by§ 315(b), we turn to the merits of West-ernGeco’s appeal.

A. The ’607 Patent

[15] The only merits issue on appealfor the ’607 Patent is the construction ofthe claim term ‘‘predicting positions.’’ TheBoard construed this term to mean ‘‘esti-mating the actual locations’’ of streamerpositioning devices. J.A. 54–60, 226–32. Bycontrast, WesternGeco’s proposed con-struction requires the prediction to be per-formed in a particular way—using ‘‘behav-ior-predictive model-based control logic.’’

8. To the extent that WesternGeco makes aseparate argument regarding real party ininterest, that argument merely relies on thesame or a subset of considerations we havediscussed concerning privity and fails for sim-ilar reasons.

9. WesternGeco also argues that we shouldremand for additional discovery if we have‘‘substantial doubt’’ about whether PGSwould be time-barred under § 315(b), Appel-lant Supp. Br. 19; see 37 C.F.R. § 42.51(b)(2)(authorizing additional discovery when it is‘‘in the interests of justice’’), but we do not.To the extent WesternGeco asks for review ofthe Board’s denial of its initial request foradditional discovery, which is reviewed forabuse of discretion, see Ultratec, Inc. v. Cap-tionCall, LLC, 872 F.3d 1267, 1272 (Fed. Cir.2017), we find no abuse. The Board consid-ered the discovery already provided to West-

ernGeco and reasonably found no evidence tosuggest that additional discovery would pro-duce agreements with any relation to the IONlitigation, the DigiFIN product, or obligationson the part of ION to defend or indemnifyPGS. J.A. 34–39, 206–11. PGS responded totwo sets of interrogatories, J.A. 4077, 5417,and produced the Master Purchase Agree-ment, J.A. 5396, along with related businesscorrespondence, J.A. 4119–33. The Boardfound that the interrogatory responses unam-biguously stated that PGS had made no claimor demands to ION for indemnity concerningthe challenged patents. See J.A. 210 (citingJ.A. 4090). The Board further worked with theparties to limit discovery in accordance withthe parties’ agreement. J.A. 1116. On thisrecord, the Board did not abuse its discretionin concluding that additional discovery wasnot justified. J.A. 365–68.


Id. After considering the intrinsic evi-dence, we agree with the Board’s construc-tion.

Claim 1, which includes the step of ‘‘pre-dicting positions of at least some of thestreamer positioning devices,’’ is represen-tative. It recites:

1. A method comprising:

(a) towing an array of streamers eachhaving a plurality of streamer posi-tioning devices there along;

(b) predicting positions of at leastsome of the streamer positioning de-vices;

(c) using the predicted positions tocalculate desired changes in positionof one or more of the streamer posi-tioning devices; and

(d) implementing at least some of thedesired changes.

’607 Patent, claim 1 (emphasis added).

[16–18] The Board gives ‘‘[a] claim TTT

its broadest reasonable construction inlight of the specification of the patent inwhich it appears.’’ 37 C.F.R. § 42.100(b)(2015). A specification ‘‘includes both thewritten description and the claims’’ of thepatent. In re Packard, 751 F.3d 1307, 1320n.11 (Fed. Cir. 2014). A patent’s specifica-tion, together with its prosecution history,constitutes intrinsic evidence to which theBoard gives priority when it construesclaims. See Microsoft Corp. v. Proxyconn,Inc., 789 F.3d 1292, 1297–98 (Fed. Cir.2015), overruled on other grounds by AquaProds., Inc. v. Matal, 872 F.3d 1290 (Fed.Cir. 2017) (en banc). We review thePTAB’s assessment of the intrinsic evi-dence de novo. See id.

The plain language of the claim does notmention a ‘‘behavior predictive’’ model or

require a specific type of predictionscheme. As the Board noted, the word‘‘predict’’ itself does not impart any dy-namic characteristic to the limitation aswhole. J.A. 229. Although the claim limitswhat must be predicted (positions of atleast two streamer positioning devices), itimposes no limit on how those positionsare predicted.

The Board’s construction comes directlyfrom the ’607 specification, which disclosesthat, because of time delays inherent inmeasuring positions, ‘‘the global controlsystem 22 runs position predictor softwareto estimate the actual locations of each ofthe birds 18 [i.e., streamer positioning de-vices].’’ ’607 Patent col. 4, ll. 51–55; J.A. 56,227. The specification thus explains that itssystem runs ‘‘position predictor software’’to predict the positions of the streamerpositioning devices. See Phillips v. AWHCorp., 415 F.3d 1303, 1315 (Fed. Cir. 2005)(‘‘[T]he specification ‘is always highly rele-vant to the claim construction analysis’ andis ‘the single best guide to the meaning ofa disputed term.’ ’’ (citation omitted) ); cf.J.A. 15688 (WesternGeco’s expert acknowl-edging that construing the limitation inaccordance with this portion of the specifi-cation was ‘‘not unreasonable’’).

To support its position, WesternGecorelies on a sentence in the specificationthat states, ‘‘[t]o compensate for these lo-calized current fluctuations, the inventivecontrol system utilizes a distributed pro-cessing control architecture and behavior-predictive model-based control logic toproperly control the streamer positioningdevices.’’ ’607 Patent col. 4, ll. 10–14. A re-view of the preceding and following para-graphs, however, reveals that this passagedescribes a preferred embodiment. Id. atcol. 3, ll. 56–64; col. 4, ll. 15–27. It is wellestablished that claims are not limited to


preferred embodiments, unless the specifi-cation clearly indicates otherwise. Coma-per Corp. v. Antec, Inc., 596 F.3d 1343,1348 (Fed. Cir. 2010) (‘‘[T]his court hasrepeatedly cautioned against limitingclaims to a preferred embodiment.’’).Nothing in the ’607 specification providessuch an indication.

For these reasons, we affirm the Board’sconstruction of ‘‘predicting positions.’’ Be-cause that construction is the only appeal-ed issue as to the ’607 Patent, we affirmthe Board’s finding that claims 1 and 15–23of the ’607 Patent are unpatentable.

B. The ’520 Patent

WesternGeco makes two challenges tothe Board’s unpatentability rulings forthe ’520 Patent: (1) the Board’s construc-tion of ‘‘control mode’’ is overbroad; and(2) the Board’s finding that the prior artdisclosed or suggested the claimed ‘‘feath-er angle control mode’’ is legally flawed.Neither is persuasive.

1. Construction of ‘‘Control Mode’’

[19] The challenged claims recite acontrol system ‘‘configured to operate inone or more control modes.’’ ’520 Patent,claims 1, 18. The Board construed ‘‘controlmode’’ to mean ‘‘operational state.’’ J.A.307. The Board’s construction noted thatthe specification did not define ‘‘controlmode’’ and looked further to a computerdictionary for its construction. J.A. 306–07.

According to WesternGeco, the properconstruction of ‘‘control mode’’ should be‘‘a goal-oriented, automatic configuration.’’Appellant Br. 43. For support, WesternGe-

co cites a passage in the specification de-scribing three control modes: feather an-gle, streamer operation, and turn control.See ’520 Patent col. 10, ll. 27–60. Western-Geco contends that the description of eachof these control modes requires steeringthe streamers in an automated and coordi-nated manner.

The passage recited by WesternGeco,however, does not make it proper to readlimitations like ‘‘goal-oriented’’ or ‘‘auto-matic’’ into the term ‘‘control mode.’’ Asthe Board noted, any operation of a com-puter system or program would have agoal or desired result, so injecting ‘‘goal-oriented’’ to the construction adds nothingmeaningful. J.A. 114. Also, the specifica-tion does not make clear that a controlmode must be automatic. Indeed, thewords ‘‘automated’’ and ‘‘automatic’’ do notappear anywhere in the claims or the writ-ten description addressing ‘‘control mode.’’Further, there is evidence calling intoquestion whether the feather angle modenecessarily involves automatic operations.See J.A. 114, 306, 11251 ¶ 34, 20450 ¶ 34.That certain aspects of the feather anglemode can operate manually further under-mines WesternGeco’s assertion that thespecification’s disclosure of three controlmodes requires adding ‘‘automatic’’ intothe ‘‘control mode’’ construction. Accord-ingly, the Board correctly declined to readWesternGeco’s unsupported limitationsinto the claims.10

2. The Board Correctly Found that theWorkman Reference Renders the

Feather Angle Mode Obvious

[20] WesternGeco next challenges theBoard’s decision to cancel the claims di-

10. In PGS III, the Board held that, even ap-plying WesternGeco’s construction of ‘‘con-trol modes,’’ it did not discern ‘‘a substantivedifference between the claims and the prior

art.’’ Petroleum Geo–Services Inc. v. Western-Geco LLC, 2015 WL 10380984, at *10. West-ernGeco does not contest that holding onappeal.


rected to ‘‘feather angle mode’’ (claims 2,3, 5, 19, and 22) as obvious over U.S.Patent No. 5,790,472 (Workman). Work-man discloses a method for controlling theposition and shape of marine seismicstreamer cables towed by a vessel.

The ‘‘feather angle mode’’ in the ’520Patent refers to ‘‘a control mode that at-

tempts to keep each streamer in a straightline offset from the towing direction by acertain feather angle.’’ J.A. 111. Accordingto PGS’s expert, Dr. Brian Evans, a con-figuration with no feather angle meansthat the streamers are linear and parallelto each other behind a boat.

J.A. 20254. If there is a cross-current, thestreamers may drift and become offsetfrom the towing direction of the vessel.This phenomenon is known as ‘‘feather-ing.’’ The extent to which the streamersbecome offset from the towing direction of

the vessel is known as the ‘‘feather angle.’’In other words, the streamers, while orga-nized so as to be in parallel with eachother, are collectively ‘‘offset’’ at a smallangle from the direction of the ship towingthe streamers.


J.A. 20255.

[21] We review the Board’s ultimatedetermination of obviousness de novo andits underlying factual findings for substan-tial evidence. Allied Erecting & Disman-tling Co. v. Genesis Attachments, LLC, 825F.3d 1373, 1380 (Fed. Cir. 2016). A patentclaim is unpatentable ‘‘if the differencesbetween the subject matter sought to bepatented and the prior art are such thatthe subject matter as a whole would havebeen obvious at the time the invention wasmade to a [skilled artisan].’’ 35 U.S.C.§ 103(a) (2006). The Board found that oneof ordinary skill in the art would have beenmotivated to modify Workman’s controlsystem to implement a feather angle modethreshold parameter and would have had areasonable expectation of success. J.A.126–31. Although Workman does not dis-close a feather angle,11 the Board creditedpassages from Workman and expert testi-mony that explained why one of skill in the

art would want to control and maintainconsistent separations between streamersduring seismic surveys. For example, itwas well recognized that entanglement ofthe streamers was a significant and knownproblem. J.A. 127–28. A consistent separa-tion was thus important to optimize effi-cient seismic data collection. Id.

The Board also explained why prescrib-ing a specific offset ‘‘feather angle’’ valueto the streamers’ positioning determinationsystem would have been apparent to one ofskill in the art confronting the challenge oftowing streamers through cross-currents.For example, it credited Workman for evi-dence that noise produced by streamerpositioning devices was a well-known prob-lem to be avoided or minimized. J.A. 130.It also cited expert testimony by PGS’sexpert witness, Dr. Evans, that whenocean cross-currents offset the streamersfrom the line of survey (e.g., by five de-grees), attempting to reposition the

11. Workman discloses a ‘‘straight and paral-lel configuration,’’ meaning that the stream-ers are linear and parallel to each other. Thestreamers are also in-line with the towing

direction, which is essentially a configurationwith a zero-degree feather angle. J.A. 501(Workman Fig. 1); J.A. 325–26; see J.A. 127.


streamers to a zero-degree feather angleagainst the current may create too muchhydrophone noise, which impairs dataquality. Id. Additionally, Dr. Evans testi-fied that one of skill in the art would needto match feather angles in subsequent sur-veys of the geographic area to obtain reli-able 4D survey data. J.A. 20354–55. TheBoard found his reasoning to be persuasiveand found that a skilled artisan would havebeen motivated to use a specific featherangle for streamer positioning to maintaindata collection quality. J.A. 130–31. Fur-ther, the Board found that Workman dis-closes a control system that uses variousthreshold parameters to control the posi-tions of the streamers and that it wouldhave been possible to adapt Workman sothat its control system could include aparameter that measured the feather an-gle between streamers. J.A. 128. Viewedcollectively, substantial evidence supportsthe Board’s conclusion that the skilled arti-san would have been motivated to modifyWorkman to include a feather anglethreshold parameter with a reasonable ex-pectation of success.

WesternGeco objects to the Board’s con-clusion as impermissible hindsight. Thatargument lacks force in this case. PGS’sexpert testified from the perspective ofone of ordinary skill in the art as of thepriority date, and WesternGeco identifiesnothing to suggest that his testimony orthe other evidence cited by the Board in-voked facts unavailable to the skilled arti-san as of the priority date. J.A. 11107,20340–61. As discussed, substantial evi-dence before the Board shows that one ofordinary skill would have been motivatedto modify Workman to attempt to keepstreamers straight and parallel, whether ina zero or non-zero feather angle mode,with a reasonable expectation of success.

The Board appropriately relied on theprior art and expert testimony about how

the skilled artisan would have modified theprior art. Substantial evidence supports itsobviousness determination.

C. The ’967 Patent

WesternGeco challenges the Board’sclaim construction, anticipation, and obvi-ousness determinations regarding the‘‘global control system’’ limitation of theclaims at issue in the ’967 Patent.

The ’967 Patent relates to distributed-control systems that apportion operationalcommand between (1) a global control sys-tem onboard the towing vessel and (2)local control systems within each streamerpositioning device on a streamer. ’967 Pat-ent col. 10, ll. 18–21. According to thespecification, the global control systemmonitors the positions of the streamersand provides desired forces or desired po-sition information to the local control sys-tem. Id. at col. 10, ll. 18–29. The localcontrol system within each streamer posi-tioning device (e.g., ‘‘bird’’) is responsiblefor adjusting the bird’s wing splay angle torotate the bird to the proper position andfor adjusting the wing common angle toproduce the magnitude of total desiredforce required. Id.

Claims 1, 4, and 15 all recite a ‘‘globalcontrol system.’’ Claim 1 is illustrative:

1. A method comprising:

(a) towing an array of streamers eachhaving a plurality of streamer posi-tioning devices there along, at leastone of the streamer positioning de-vices having a wing;

(b) transmitting from a global controlsystem location information to at leastone local control system on the atleast one streamer positioning deviceshaving a wing; and


(c) adjusting the wing using the localcontrol system.

’967 Patent, claim 1 (emphasis added).

1. Construction of ‘‘GlobalControl System’’

As an initial matter, WesternGeco ar-gues that the Board’s construction of‘‘global control system’’ changed mid-stream. But the record shows that West-ernGeco is actually the one who changedcourse, urging a different constructionduring the IPR. J.A. 1213, 14314. Thechronology is undisputed. Before the insti-tution decisions, both PGS and Western-Geco agreed that the term ‘‘global controlsystem’’ should be interpreted as ‘‘a con-trol system that sends commands to otherdevices in a system (e.g., local control sys-tem).’’ J.A. 1420; see J.A. 1155, 3424. In thepatent owner response, WesternGeco re-vised its proposed construction to ‘‘a con-trol system configured to coordinate allstreamer positioning devices in the array.’’J.A. 1213, 14314. Upon considering thearguments from both sides, the Board con-strued the term as ‘‘a control system capa-ble of overseeing and affecting the array ofstreamers and streamer positioning de-vices.’’ J.A. 18, 171. This construction wasclose to that requested by WesternGeco,but did not require controlling all streamerpositioning devices in the array. J.A. 162–71.

[22, 23] Contrary to WesternGeco’s ar-gument, the Board was permitted to issuea new construction in the final writtendecision given that claim construction wasa disputed issue during the proceedings.See Intellectual Ventures II LLC v. Erics-son Inc., 686 Fed.Appx. 900, 905 (Fed. Cir.2017). Moreover, the Board is not bound toadopt either party’s preferred articulated

construction of a disputed claim term. SeeExxon Chem. Patents, Inc. v. LubrizolCorp., 64 F.3d 1553, 1556 (Fed. Cir. 1995);see also Homeland Housewares, LLC v.Whirlpool Corp., 865 F.3d 1372, 1376 (Fed.Cir. 2017).

The facts in this case can be distin-guished from SAS Institute, Inc. v. Com-plementSoft, LLC, 825 F.3d 1341, 1351(Fed. Cir. 2016), rev’d and remanded onother grounds, SAS Institute, Inc. v. Ian-cu, ––– U.S. ––––, 138 S.Ct. 1348, 200L.Ed.2d 695 (2018), on which WesternGecorelies. In SAS, the Board construed therelevant term in its institution decision,but in the final written decision sua sponteissued and adopted a significantly differentconstruction, even though neither partyhad disputed the Board’s original construc-tion and premised their arguments in theproceeding on that construction. Becausethe appellant had no notice that theBoard’s construction could change or anopportunity to address the new construc-tion, this court vacated the decision andremanded on that issue. Id. at 1351–53.

Here, by contrast, the construction of‘‘global control system’’ became disputedwhen WesternGeco changed course in itspatent owner response. Having put it atissue, WesternGeco was well aware thatthe Board could alter its construction inthe final written decision. See GenzymeTherapeutic Prods. v. Biomarin Pharm.Inc., 825 F.3d 1360, 1367 (Fed. Cir. 2016)(finding no APA violation where the par-ties ‘‘received adequate notice of the issuesthat would be considered, and ultimatelyresolved’’). Further, even though theBoard’s ultimate construction is not identi-cal to either party’s proposed construction,the differences are not so materially differ-ent as to raise potential due process con-cerns. WesternGeco does not contend that


it would have presented different argu-ments had it known what the final con-struction would be.

Moreover, the Board’s construction of‘‘global control system’’ did not affect theunpatentability outcome because the Boardconcluded that the challenged claims wereunpatentable even under WesternGeco’sconstruction requiring control of ‘‘all’’streamer positioning devices. J.A. 182(‘‘Even assuming the appropriate claimconstruction was limited to ‘all’ streamerpositioning devices, which it is not, thiswould not serve to distinguish the claimedinvention from the ’636 PCT.’’). Thus, theBoard’s decision to adopt a constructionbetween those offered by the parties didnot prejudice WesternGeco, and we per-ceive no reason to overturn the Board’sconstruction of this term.

2. The Board’s Unpatentability FindingsBased on the ’636 PCT Are Not

Erroneous

The Board found claims 1, 4, and 15 ofthe ’967 Patent to be unpatentable under35 U.S.C. §§ 102 and 103 in view of WO98/28636 (the ’636 PCT). The ’636 PCTdiscloses a streamer positioning device forcontrolling the position of a marine seismicstreamer as it is towed behind a boat in astreamer array.

[24] WesternGeco challenges theBoard’s unpatentability findings on twoseparate grounds. First, it argues thatthe ’636 PCT reference does not explicitlydisclose a ‘‘global control system’’ and thatthe Board improperly mixed the ’636PCT’s background discussion with its de-tailed description of the invention to findthat this reference teaches all limitationsof claims 1, 14, and 15. Second, it contendsthat the Board improperly relied on a pur-

ported ‘‘admission’’ in the ’967 Patentabout the ’636 PCT rather than relyingsolely on the ’636 PCT itself. Both argu-ments fail.

We see no error in this case from theBoard’s use of a reference’s background tofurnish context for how a skilled artisanwould understand the reference’s disclosedembodiments. Here, the ’636 PCT back-ground discloses ‘‘marine seismic stream-ers,’’ towed in an array, each of which hasa plurality of streamer positioning devices(birds). J.A. 485. That background, as theBoard found, provided context for the en-suing disclosures of the control systems onindividual birds, ‘‘for controlling the posi-tion of a marine seismic streamer,’’ witheach bird on a streamer that ‘‘includes acontrol line’’ configured ‘‘to receive controlsignals.’’ J.A. 485, 487. The Board alsofound a link between the background dis-closure of an array of streamers and thelater disclosures of control lines on eachstreamer that control the local systems oneach bird; further, this link would havebeen apparent to one of skill in the art.J.A. 177–78. As the Board concluded,the ’636 PCT discloses an overall distribu-tive control system comprising a local con-trol system in each bird dispersed alongthe streamers and a separate global ‘‘posi-tion determining system’’ capable of con-trolling the birds within the array bytransmitting appropriate location informa-tion along the disclosed control lines. J.A.176–80. Collectively, this provides substan-tial evidence that the ’636 PCT anticipatesclaims 1, 4, and 15 of the ’967 Patent.

[25] The Board’s consideration ofthe ’967 Patent’s characterization of theprior art was also proper. ‘‘A statement ina patent that something is in the prior artis binding on the applicant and patenteefor determinations of anticipation and obvi-


ousness.’’ Constant v. Advanced Micro–Devices, Inc., 848 F.2d 1560, 1570 (Fed.Cir. 1988); see PharmaStem Therapeutics,Inc. v. ViaCell, Inc., 491 F.3d 1342, 1362(Fed. Cir. 2007). Here, the Board reviewedthe disclosure of the ’636 PCT and con-cluded that it teaches the claimed distrib-uted control system. The Board’s findingwas grounded in the ’636 PCT’s disclosureof a global ‘‘positioning determining sys-tem’’ and a local control system on eachbird. See J.A. 176. The Board then foundthat the ’967 Patent’s characterization ofthe ’636 PCT reinforced the conclusionthat the ’636 PCT anticipated the claims.J.A. 178.

As we have explained, substantial evi-dence supports the Board’s determinationthat the ’636 PCT anticipates the chal-lenged claims of the ’967 Patent. See Ken-nametal, Inc. v. Ingersoll Cutting ToolCo., 780 F.3d 1376, 1381 (Fed. Cir. 2015)(affirming anticipation determinationwhere a person of skill in the art would ‘‘atonce envisage the claimed arrangement orcombination’’). But, even if the ’636 PCTdoes not anticipate, its disclosure, as inter-preted by the credited and undisputed tes-timony of PGS’s experts, would have ren-dered obvious the claimed combination oflocal control systems on birds with a globalcontrol system that controls the birds. SeeJ.A. 1044–46, 1443–44 (explaining how aperson of ordinary skill would have beenmotivated to adapt the ’636 PCT so that itemployed a global control system). Theevidence regarding the meaning of the ’636PCT disclosures and motivations of theskilled artisan is sufficient to support theBoard’s alternative finding of obviousness.

D. Objective Indicia of Nonobviousness

[26] Lastly, WesternGeco argues thatthe Board improperly disregarded objec-tive evidence of nonobviousness forthe ’967 and ’520 Patents. As the patentowner, WesternGeco bears the burden ofshowing a sufficient nexus between theclaimed invention and any objective evi-dence of nonobviousness. ABT Sys., LLCv. Emerson Elec. Co., 797 F.3d 1350, 1361–62 (Fed. Cir. 2015).

[27, 28] The Board found that West-ernGeco failed to establish a nexus be-tween the claims at issue and the purport-ed objective indicia of nonobviousness.12

Specifically, it found the testimony ofWesternGeco’s witness, Robin Walker, in-sufficient to establish nexus because it wasdirected to ‘‘lateral steering technology,’’not the inventions at issue. J.A. 32–33, 86–87, 133–34. The Board also credited thepatents’ inventor, who admitted that he didnot invent lateral steering, which was inthe prior art. J.A. 334. Further, Mr. Walk-er testified that the purchasers of West-ernGeco’s commercial product, Q–Marine,had no interest in the technical featuresactually recited in the claims of the West-ernGeco Patents. J.A. 14749–50. Based onthis evidence, even if a nexus existed, theBoard concluded that the evidence wasinsufficient to overcome the strong show-ing of obviousness demonstrated by thePetitioner. J.A. 33, 88, 134, 192, 271, 337.

Substantial evidence supports theBoard’s findings. Any commercial successenjoyed by the Q–Marine or the DigiFINproduct ‘‘is only significant if there is a

12. WesternGeco asserts that nexus is pre-sumed for a commercial embodiment like Di-giFIN, but provides no analysis. To establish apresumption of a nexus, the patentee mustshow that the ‘‘product ‘embodies the claimedfeatures, and is coextensive with them.’ ’’ Po-

laris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d1056, 1072 (Fed. Cir. 2018) (quoting Brown &Williamson Tobacco Corp. v. Philip MorrisInc., 229 F.3d 1120, 1130 (Fed. Cir. 2000) ).WesternGeco has not made this showing.

1331LOVE TERMINAL PARTNERS, L.P. v. U.S.Cite as 889 F.3d 1331 (Fed. Cir. 2018)

nexus between the claimed invention andthe commercial success.’’ Ormco Corp. v.Align Tech., Inc., 463 F.3d 1299, 1311–12(Fed. Cir. 2006). Here, WesternGeco reliedon the testimony of Mr. Walker, who didnot determine whether the Q–Marine orDigiFIN products embodied the chal-lenged claims. J.A. 2895. Further, West-ernGeco has not shown that the drivingforce behind the product sales was a directresult of the unique characteristics of theclaimed inventions. See In re DBC, 545F.3d 1373, 1384 (Fed. Cir. 2008) (findingno nexus absent evidence that ‘‘the drivingforce behind [the allegedly successfulproduct’s sales] was the [claimed inven-tion]’’). Even if WesternGeco had satisfiedits burden of showing a sufficient nexusbetween the claimed invention and its ob-jective evidence of nonobviousness, the evi-dence does not overcome the strong show-ing of obviousness in this case. See Sud–Chemie, Inc. v. Multisorb Techs., Inc., 554F.3d 1001, 1009 (Fed. Cir. 2009).

CONCLUSION

We have considered WesternGeco’s re-maining arguments and find them unper-suasive. The Board properly held that IONis not a real party in interest or privy ofPGS. Thus, the statutory time bar does notapply. On the merits, we find that, for eachof the WesternGeco Patents, the Boardcorrectly interpreted the claims, and sub-stantial evidence supports the Board’s un-patentability findings.

For these reasons, the Board’s decisionsregarding the WesternGeco Patents are

AFFIRMED

,

LOVE TERMINAL PARTNERS, L.P.,Virginia Aerospace, LLC,

Plaintiffs–Appellees

v.

UNITED STATES, Defendant–Appellant

2016-2276

United States Court of Appeals,Federal Circuit.

Decided: May 7, 2018

Background: Lessees of portion of air-port property on which they constructedsix-gate airline terminal filed suit againstUnited States, claiming Fifth Amendmenttaking effected by federal Wright Amend-ment Reform Act (WARA), partially codi-fying private agreement in which cityagreed to bar use of lessees’ gates forcommercial air transit and to acquire anddemolish their terminal. The United StatesCourt of Federal Claims, No. 1:08-cv-00536-MMS, Margaret M. Sweeney, J., 97Fed.Cl. 355 and 126 Fed.Cl. 389, grantedlessees summary judgment and awarded$133.5 million to lessees as just compensa-tion for regulatory and physical takings oftheir property. Government appealed.

Holdings: The Court of Appeals, Dyk,Circuit Judge, held that:

(1) regulatory taking was not effected byCongress’ failure to repeal amend-ment;

(2) regulatory taking was not effected byCongress’ failure to extend WARAbenefits to lessees;

(3) regulatory taking was not effected byWARA preventing lessees’ use of prop-erty for air service; and

(4) physical taking was not effected byWARA, which did not codify portion ofagreement to demolish gates.

Reversed.

NOTE: This order is nonprecedential.

United States Court of Appeals for the Federal Circuit

______________________

WESTERNGECO LLC, Appellant

v.

ION GEOPHYSICAL CORPORATION, ION INTERNATIONAL S.A.R.L.,

Appellees

---------------------------------------------------------------------------------

IN RE: WESTERNGECO LLC, Appellant

______________________

2016-2099, 2016-2100, 2016-2101, 2016-2332, 2016-2333, 2016-2334

______________________

Appeals from the United States Patent and Trade-mark Office, Patent Trial and Appeal Board in Nos. IPR2014-00687, IPR2014-00688, IPR2014-00689, IPR2014-01475, IPR2014-01477, IPR2014-01478, IPR2015-00565, IPR2015-00566, IPR2015-00567.

______________________

ON PETITION FOR PANEL REHEARING AND REHEARING EN BANC

______________________

WESTERNGECO LLC v. ION GEOPHYSICAL CORPORATION 2

Before PROST, Chief Judge, NEWMAN, LOURIE, DYK, MOORE, O’MALLEY, REYNA, WALLACH, TARANTO, CHEN,

HUGHES, and STOLL, Circuit Judges. PER CURIAM.

O R D E R Appellant WesternGeco LLC filed a combined petition for panel rehearing and rehearing en banc. A response to the petition was invited by the court and filed by appel-lees ION Geophysical Corporation and ION International S.A.R.L. The petition was referred to the panel that heard the appeal, and thereafter the petition for rehear-ing en banc was referred to the circuit judges who are in regular active service. Upon consideration thereof, IT IS ORDERED THAT: The petition for panel rehearing is denied. The petition for rehearing en banc is denied. The mandate of the court will issue on July 23, 2018. FOR THE COURT July 16, 2018 /s/ Peter R. Marksteiner Date Peter R. Marksteiner Clerk of Court

1308 889 FEDERAL REPORTER, 3d SERIES · Specification includes both the written description and the...

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