Takeaway: A petitioner is not barred from seeking IPR under § 315(b) if it receives a copy of a complaint that the patent owner filed against a third party more than a year before the petitioner files a petition for inter partes review.

In its Decision, the Board instituted inter partes review for claim 4 of U.S. Patent No. 7,162,967 B2. The ’967 patent generally relates to “a method and apparatus for improving marine seismic survey techniques by more effectively controlling the movement and positioning of marine seismic streamers towed in an array behind a boat.”

The Board began with claim construction, interpreting the claims according to their broadest reasonable construction in light of the specification of the ’967 patent. The Board considered the proper scope of the phrases “streamer positioning device” and “local control system.” The Board agreed with Petitioner that “streamer positioning device” means “a device that positions a streamer as it is towed.” In doing so, the Board rejected Patent Owner’s argument that the phrase should be construed as “a device that controls at least the lateral position of a streamer as it is towed,” stating that “any interpretation including specific directional terms would read limitations improperly from the specification into the claims.” Next, the Board considered the construction of “local control system.” Patent Owner did not propose a construction for this term, whereas Petitioner argued that it should be construed as “a control system located on or near the streamer positioning devices.” After considering Petitioner’s arguments in view of the specification, the Board adopted the construction proposed by Petitioner.

Next, the Board addressed Patent Owner’s argument that the grounds presented in this proceeding are redundant to the grounds set forth in an earlier IPR. The Board rejected this argument because the other IPR involved claim 1 of the ’967 patent but did not involve claim 4 (which depends from claim 1).

The Board then considered Patent Owner’s argument that Petitioner had been “served with a complaint” more than a year before filing the petition and, therefore, was barred from seeking IPR by 35 U.S.C. § 315(b). As described by the Board, Petitioner received a subpoena in litigation between Patent Owner and a third party, Petitioner’s counsel entered an appearance in the underlying litigation, and then Petitioner’s counsel was “served” with a copy of a complaint that named the third party as the defendant not Petitioner. The Board rejected Patent Owner’s argument that Petitioner was “served” and concurred with a prior panel’s statement that “[w]e do not do not believe that the Congress intended to have the time period start before a petitioner is officially a defendant in a law suit.” Because Petitioner was not a defendant in the litigation, it was not “served with a complaint” within the meaning of 35 U.S.C. § 315(b).

The Board then addressed Patent Owner’s argument that Petitioner failed to name all real parties-in-interest. The Board first rejected Patent Owner’s argument that a company who shared in-house counsel with Petitioner should have been named as a real party-in-interest, concluding that the evidence presented did not show that any control was exercised over Petitioner by the other party. The Board then rejected Patent Owner’s argument that another third party should have been identified as a real party-in-interest because Petitioner claimed a “common interest privilege” over communications with that party and because Petitioner invoked indemnity obligations by the third party. The Board stated:

The fact that Petitioner and [the third party], have a desire, and common interest, in invalidating the ’967 patent and other [Patent Owner] 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 [the third party] has the ability to control the instant Petition or is directing or funding the present proceeding.

While there are circumstances under which the Board has concluded that a non-party entity is a real party-in-interest, the Board here concluded that “absent specific facts evidencing the contractual obligations of the parties, we are not apprised of any evidence indicative of control, or potential to control this inter partes proceeding by [the third party].” Accordingly, the Board declined to deny the Petition for failure to identify all of the real parties-in-interest.

The Board then considered and rejected Patent Owner’s argument that Petitioner was in privity with the third party with whom its communications were covered by a common interest privilege and from whom it requested indemnification.

Finally, the Board turned to the merits of Petitioner’s asserted grounds of unpatentability. Based on the arguments and evidence presented by the parties, the Board concluded that Petitioner established a reasonable likelihood of prevailing on its arguments that claim 4 is anticipated and obvious over the ’636 PCT reference and instituted IPR on these grounds. In light of its decision to institute review based on the ’636 PCT, the Board exercised its discretion not to institute review over a second reference

Petroleum Geo-Services Inc. v. WesternGeco LLC, IPR2014-01475
Paper 18: Decision on Institution of Inter Partes Review
Dated: March 17, 2015
Patent: 7,162,967 B2
Before: Scott A. Daniels, Beverly M. Bunting, and Barbara A. Parvis
Written by: Daniels
Related Proceedings: WesternGeco L.L.C. v. Petroleum Geo-Services Inc., 4:13-cv-02725 (S.D. Tex.); WesternGeco L.L.C. v. ION Geophysical Corp., 4:09-cv-01827 (S.D. Tex.); IPR2014-00687; IPR2015-00566; IPR2014-01476; IPR2014-01477; and IPR2014-01478.