Takeaway: Evidence of failure to include a real party-in-interest that is presented after entry of a final written decision will not be considered because it is late.

In its Decision, the Board denied Patent Owner’s Request for Rehearing of the Final Written Decision regarding claims 1 and 15 of the ’607 Patent. The Board noted that a Final Written Decision is reviewed for abuse of discretion, and the party requesting rehearing bears the burden of showing that the Final Written Decision should be modified.  The Request must identify all matters the party believes were misapprehended or overlooked.

The Board first reviewed Patent Owner’s contention that Workman does not disclose a “prediction unit.” Specifically, Patent Owner argued that the Board misapprehended “real time” as teaching prediction to account for “signal processing delay time,” the Board erroneously interpreted Workman to disclose a Kalman filter that provides an estimate of real time streamer positions.  The Board stated that based upon evidence from Workman and Patent Owner’s expert, it determined that Workman predicts streamer positions as required by the claims.  The Board had fully considered Patent Owner’s arguments.  However, the Board realized that the Final Written Decision omitted a citation to the evidence upon which the Decision was based, and amends the decision to include that citation.

Patent Owner also argued that the Board erroneously found that the Petitioner merely received a copy of the complaint, rather than being served with the complaint. The Board disagreed, and stated that § 315(b) means that the party is served as a defendant in the case rather than being served with the complaint for the purposes of enforcing a third party subpoena.  Therefore, the Board declined to apply the § 315(b) time bar to third parties who after receiving a copy of a complaint concurrent with a third party subpoena, appear in the case for purposes of responding to the subpoena.

Patent Owner further argued that the Board overlooked relevant evidence of ION’s relationship to PGS and ION’s status as a real party-in-interest or privy. Specifically, Patent Owner argued that the Board did not fully consider ION’s broader financial interest in and ability to fund the IPR.  But the Board found that those are irrelevant to the issue of real party-in-interest.

Next, Patent Owner argued that the Board improperly denied its request for additional discovery regarding agreements between Petitioner and ION. The Board determined that based on the evidence of the provisions of the agreements that were eventually produced, the existence of the indemnity agreement did not sufficiently prove that ION was a real party-in-interest.  Therefore, the Board considered this evidence previously.

Patent Owner then argued that the Board failed to consider its request for rehearing filed in May 2015. However, the Board did so in a corrected order.

Lastly, Patent Owner argued that a week after the Decision was rendered, Petitioner filed an IPR challenging the validity of another patent of Patent Owner and named Multi Klient as a real party-in-interest. The Board found that the record is closed in this IPR and declined to decide whether inclusion of Multi Klient in another IPR is an admission that Multi Klient should have been named in this IPR.

Petroleum Geo-Services Inc. v. WesternGeco LLC, IPR2014-00688
Paper 106: Decision Denying Patent Owner’s Request for Rehearing
Dated: March 17, 2016
Patent 7,080,607 B2
Before: Bryan F. Moore, Scott A. Daniels, and Beverly M. Bunting
Written by: Moore