- Vtech Communications, Inc. / Uniden America Corporation v. Spherix IncorporatedAll claims unpatentablePTAB · Feb 3, 2016 · IPR2014-01431 · APJ Joni Y Chang · IPR · Final written decision
Claims 1–7 and 18 are unpatentable under § 103(a) over Figa and Martensson.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“The preambles of claims 1 and 18 recite essential structural elements of the claimed method pertaining to the cordless handset, base station, and memory device, rather than merely stating the purpose or intended use of the claimed method or apparatus. For instance, the recitation of “said memory device comprises first and second submemories” in the preambles of the claims sets forth the structural limitation that the first and second submemories are portions of the same memory device. Although the bodies of the claims recite first and second submemories, they do not recite a memory device, much less the structural relationship between the submemories and the memory device. It is apparent that the bodies of the claims do not recite the complete invention, and that the claim drafter of the ’599 patent chose to use both the preamble and the body of each claim to define the subject matter of the claimed method. See Bell Commc’ns Research v. Vitalink Commc’ns Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (noting that if the claim drafter “chooses to use both the preamble and the body to define the subject matter of the claimed invention, the invention so defined, and not some other, is the one the patent protects.” (emphasis in original)). Moreover, the recitation of a “cordless handset in user-interactive radio communication with an associated base station” in the preambles of 10 claims 1 and 18 describes a fundamental characteristic of the claimed method—namely, the handset referenced in the bodies of the claims is a cordless handset. The Specification states that “a principal objective of the present invention is to provide a digital data display in the cordless handset.” Ex. 1001, 1:51–53 (emphasis added). Essentially, the preambles of the claims recite structural elements that are important to the claimed invention. See Vizio, Inc. v. ITC, 605 F.3d 1330, 1340 (Fed. Cir. 2010) (“[T]he ‘for decoding’ language . . . is properly construed as a claim limitation, and not merely a statement of purpose or intended use for the invention, because ‘decoding’ is the essence or a fundamental characteristic of the claimed invention.”); Poly-America, L.P. v. GSE Lining Tech., Inc., 383 F.3d 1303, 1309-10 (Fed. Cir. 2004) (“blown-film” in the preamble was limiting where the specification was “replete with references to the invention as a ‘blown-film’ liner” and described it as a fundamental characteristic of the invention). In consideration of the foregoing, we determine that the preambles of claims 1 and 18 are entitled to patentable weight.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“supports its current proposed claim constructions. We observe that adopting those constructions would import improperly an extraneous feature into the claims—namely, “logically distinct portion of a physical memory.” It is well-settled that 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 v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). More importantly, Spherix does not provide sufficient evidence or reasoning to overcome the 12 “heavy presumption” that a claim term carries its ordinary and customary meaning. See CCS Fitness, 288 F.3d at 1366.” slip op. at 12
- Prior constructionPrior construction not adoptedDecided for petitioner
“Although a district court’s interpretation of a claim term recited in the involved patent is instructive, we nevertheless are not bound by that construction. See Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1326 (Fed. Cir. 2015) (“There is no dispute that the board is not generally bound by a prior judicial construction of a claim term.”). We note that patent claims have a presumption of validity in a district court proceeding. In contrast, there is no presumption of validity in an inter partes review, and, therefore, we will not be applying a rule of construction with an aim to preserve the validity of claims. Further, we observe that the parties’ arguments and supporting evidence submitted here are different than those presented in the district court proceeding. For instance, Spherix argued in the district court proceeding that the claim elements “first processor means” and “second processor means” are not means-plus-function limitations.” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached
“With regard to the issue of whether the “processor means” claim elements should be construed as means-plus-function limitations in this inter partes review, we observe at the outset that this claim construction determination does not affect the patentability determination of claims 1–7 18 and 18 of the ’599 patent, based on the prior art in this record. In other words, our determination on patentability of claims 1–7 and 18 of the ’599 patent is the same whether or not we adopt the District Court’s claim constructions as to these claim terms. For convenience, we reproduce those District Court’s claim constructions below (Ex. 2012, 104).” slip op. at 18
Patent outcomesUS 5,581,599 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 5,581,599 - Vtech Communications, Inc. / Uniden America Corporation v. Shperix IncorporatedAll claims unpatentablePTAB · Feb 3, 2016 · IPR2014-01432 · APJ Joni Y Chang · IPR · Final written decision
Claims 1–5 and 8–23 are unpatentable under § 103(a) over Pickering in view of Wood; claims 2, 3, 9–11, and 15–16 are also unpatentable over Pickering in view of Guan.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citations omitted). “Conversely, a preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.’” Id. In other words, the preamble is regarded as limiting if it recites essential structure that is important to the invention or necessary to give meaning to the claim. NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1305–06 (Fed Cir. 2005). When the limitations in the body of the claim “rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Having considered the relevant portions of the District Court’s Claim Construction Order and the evidence in this record, we are persuaded that each of the “updating” claim phrases requires a comparison step. That being said, we nevertheless are not persuaded that the comparison step must include “comparing an entry in the local telephony directory with an entry in the updated telephony directory information,” as construed by the District Court. Ex. 2004, 89–90, 105 (emphases added). Notably, the Specification of the ’899 patent makes clear that the comparison step does not necessarily include such an entry-by-entry comparison. Ex. 1001, 6:34–42. As explained in the Specification, the directory update device determines whether a corresponding listing is present in the local directory by, “for example, using a simple filename comparison” or, alternatively, “a more complex comparison taking into account actual data values within the files.” Id. (emphases added). The District Court’s claim construction is based on the exemplary embodiments shown in Figures 5 and 12 of the ’899 patent. Ex. 2004, 86–88; Ex. 1001, 2:24–30, 2:42–44 (“FIG. 5 is an exemplary diagram of a graphical user interface for comparing a local directory listing and a directory server listing according to the present invention”), 2:62–63 (“FIG. 12 is a flowchart outlining an exemplary operation of the directory update device of FIG. 3”), 3:1–2, 12:35–47. Our reviewing court “has repeatedly cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47 (Fed. Cir. 2015). “[I]t is the claims, not the written description, which define the scope of the patent right.” Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1347 (Fed. Cir. 1998); see also id. (“[A] court may not import limitations from the written description into the claims.”). Therefore, we decline to adopt the District Court’s claim construction that requires an entry-by-entry comparison because such a construction would import improperly a limitation from a preferred embodiment or specific example into the claims. Rather, in light of the Specification, we conclude that each of the “updating” claim phrases requires no more than a comparison step for determining whether there is a corresponding listing or entry in the local directory. The comparison step may encompass a filename comparison or other comparison methods for such a determination.” slip op. at 12
- Prior constructionPrior construction not adoptedDecided for petitioner
“Construction Order and the evidence in this record, we are persuaded that each of the “updating” claim phrases requires a comparison step. That being said, we nevertheless are not persuaded that the comparison step must include “comparing an entry in the local telephony directory with an entry in the updated telephony directory information,” as construed by the District Court. Ex. 2004, 89–90, 105 (emphases added). Notably, the Specification of the ’899 patent makes clear that the comparison step does not necessarily include such an entry-by-entry comparison. Ex. 1001, 6:34–42. As explained in the Specification, the directory update device determines whether a corresponding listing is present in the local directory by, “for example, using a simple filename comparison” or, alternatively, “a more complex comparison taking into account actual data values within the files.” Id. (emphases added). The District Court’s claim construction is based on the exemplary embodiments shown in Figures 5 and 12 of the ’899 patent. Ex. 2004, 86–88; Ex. 1001, 2:24–30, 2:42–44 (“FIG. 5 is an exemplary diagram of a graphical user interface for comparing a local directory listing and a directory server listing according to the present invention”), 2:62–63 (“FIG. 12 is a flowchart outlining an exemplary operation of the directory update device of FIG. 3”), 3:1–2, 12:35–47. Our reviewing court “has repeatedly cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47 (Fed. Cir. 2015). “[I]t is the claims, not the written description, which define the scope of the patent right.” Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1347 (Fed. Cir. 1998); see also id. (“[A] court may not import limitations from the written description into the claims.”). Therefore, we decline to adopt the District Court’s claim construction that requires an entry-by-entry comparison because such a construction would import improperly a limitation from a preferred embodiment or specific example into the claims. Rather, in light of the Specification, we conclude that each of the “updating” claim phrases requires no more than a comparison step for determining whether there is a corresponding listing or entry in the local directory. The comparison step may encompass a filename comparison or other comparison methods for such a determination.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“As evidenced by Wood, using an applet in a computer-telephony integrated system to facilitate the communication between a telephony device and network directory server, downloading updated information from the server, was well known in the art at the time of the invention. Ex. 1008, Abs, 2:28–30, 8:14–25, 8:45–65. Spherix does not provide sufficient or credible evidence that using an applet in Pickering’s computer-telephony integrated system would have been “uniquely challenging” or otherwise beyond the level of an ordinary skilled artisan. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).” slip op. at 32
Patent outcomesUS 6,614,899 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,614,899 - Google Inc. v. Visual Real Estate, Inc.All claims unpatentablePTAB · Jan 25, 2016 · IPR2014-01339 · APJ Beverly M Bunting · IPR · Final written decision
Claims 1 and 3–11 are unpatentable: claims 1, 3–7, and 9–11 as anticipated by Di Bernardo and obvious over Di Bernardo and Kawabe; claim 8 as obvious over Di Bernardo and Lachinski.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). There is evidence in the record before us that reflects the knowledge level of a person with ordinary skill in the art. Petitioner’s expert witness, Dr. Fuchs, attests that a person with ordinary skill in the art in the relevant time frame would be an individual who possesses a combination of experience and education in computer science, computer graphics, and imaging technology. Ex. 1001 ¶ 14. According to Dr. Fuchs, this would consist of the following: (1) a minimum of a bachelor degree in computer science or a related engineering filed; and (2) 2–5 years of work or research experience in the field of computer science and its sub-field of imagining technology. Id. Petitioner’s rebuttal witness, Dr. John R. Grindon, offers testimony as to the knowledge level of a person with ordinary skill in the art at the relevant time frame that is essentially the same as Dr. Fuch’s assessment. Ex. 1010 ¶ 12. Additionally, we note that the prior art of record in this proceeding— namely, Di Bernardo, Kawabe, and Lachinski—is indicative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We also determined in our Decision on Institution that there was no need to expressly construe the claim term “geographic location of interest” because Patent Owner’s narrow construction proposed in its Preliminary Response was not supported by the specification, which uses the term “broadly and generically, and consistent with its plain and ordinary meaning.” Id. at 7–8. Patent Owner did not challenge expressly our construction of “geographic location of interest” during trial. Nevertheless, Patent Owner’s arguments surrounding this claim term were based on their proposed definition. See e.g., PO Response 27–28 (“Accordingly, as taught and claimed by ’181 Patent, and consistent with the Institution Decision, a geographic location of interest specified in a user query must be able to be limited to a street address.”). Based on the full record developed during trial, and for purposes of this Decision, our position and analysis regarding the claim term “geographic location of interest” remains unchanged.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Here, it is unclear as to what limitation in the body of the claim, if any, would “refer back to” “server farm,” nor what “meaning and life” the recitation of “server farm” would add to independent claim 1. Patent Owner argued at oral hearing that: the video and data server farm includes at least one video data -- one video storage server that stores video image files containing video drive-by data that corresponds to geographic location; a database server that processes as data query received from the user over the Internet and corresponds to a geographic location; and an image server. Those are the three elements. When it says in the claim a video and data storage server comprising and then it gives those three elements as the composition, that’s perfectly consistent with saying that’s an important part of the claim. Id. at 48:20–49:9. Despite Patent Owner’s argument to the contrary, we observe that the body of independent claim 1 appears to recite a complete structure that includes the elements cited by Patent Owner of “at least one video storage server,” “a database server,” and “an image processing server.” Ex. 1002, 18:4–10. We further observe that the term “server farm” is not recited in the body of claim 1, nor in dependent claims 3–11. Thus, it does not appear to provide any antecedent basis support for any elements of the claims. Indeed, all the term “server farm” appears to do is to give a descriptive name to the set of limitations that completely set forth the invention. In such an instance, the preamble does not limit the claims. See IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir. 2000) (“The phrase ‘control apparatus’ in the preamble merely gives a descriptive name to the set of limitations in the body of the claim that completely set forth the invention. Its use does not limit the claims. . .”). For these reasons, we do not accord patentable weight to the recitation of “server farm” in the preamble of claim 1.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“We agree with Petitioner that the corresponding structure that performs the claimed function may include any computer system programmed to perform the identified function. See WMS Gaming at 1339, 1349 (“In a means-plus-function claim in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.” (citation omitted)). In Eon Corp. IP Holdings LLC, the Federal Circuit confirmed that, on this point, WMS Gaming remains correctly decided and elaborated that the disclosure of a general purpose computer or a microprocessor as corresponding structure for a software function does nothing to limit the scope of the claim and “avoid pure functional claiming.” [Aristocrat, 521 F.3d at 1336.] As such, when a patentee invokes means-plus-function claiming to recite a software function, it accedes to the reciprocal obligation of disclosing a sufficient algorithm as corresponding structure. Eon Corp. IP Holdings 785 F.3d at 623. Patent Owner’s efforts to limit the structure to the algorithms found in certain open source computer software is unavailing. Patent Owner does not point us to, nor have we found, where the specification of the ’181 patent adequately describes the algorithms used by the open source computer software. The mere disclosure of the name of the software is ineffective because “material incorporated by reference cannot provide the corresponding structure necessary to satisfy the definiteness requirement for a means-plus-function clause.” Default Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1301 (Fed. Cir. 2005) (citing Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1381 (Fed. Cir. 1999)). Instead, “[t]he inquiry under § 112, ¶ 2, does not turn on whether a patentee has ‘incorporated by reference’ material into the specification relating to structure, but instead asks first ‘whether structure is described in specification, and, if so, whether one skilled in the art would identify the structure from that description.’” Id. (quoting Atmel, 198 F.3d at 1381). We find that the only structure disclosed and linked to the recited function in this way are the structures identified by Petitioner. Thus, for the reasons discussed above, we do not agree with Patent Owner that the algorithm alone represents the requisite structure. Instead, based on the specification, claim language and evidence on the complete record before us, we adopt Petitioner’s proposed structures for the means-plus-function claim limitations recited in claim 7–10.” slip op. at 16
Patent outcomesUS 7,389,181 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,389,181 - LG Display Co., Ltd. / LG Electronics, Inc. v. Innovative Display Technologies LLCAll claims unpatentablePTAB · Dec 18, 2015 · IPR2014-01096 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 15 and 27 are unpatentable as obvious over Pristash and over Kobayashi in view of Pristash.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“persuaded us that applying the Phillips standard would affect our determination of this case. In fact, throughout this proceeding, Patent Owner has taken no position on claim construction. Prelim. Resp. 4; PO Resp. 6. The only claim term the Board construed in its Institution Decision is the term “deformities,” appearing in both challenged claims. Paper 11, 4. It was Petitioner who asserted that the ʼ370 patent “expressly defines” the term to mean “any change in the shape or geometry of the panel surface and/or coating or surface treatment that causes a portion of light to be emitted.” Pet. 7 (citing Ex. 1001, col. 4, ll. 36–40). Patent Owner did not oppose that construction. Hearing Tr. 45:20–25. In fact, Patent Owner pointed out that the construction of “deformities” proffered by Petitioner was agreed to and adopted by the district court. PO Resp. 7; Hearing Tr. 47:7–15. Patent Owner’s counsel agreed at the oral hearing that the expiration of the ʼ370 patent has no impact on that construction. Id. at 47:1– 18. Nor does Patent Owner seek any other particular constructions in light of the ʼ370 patent’s expiration. Id. at 46:9–19. In short, Patent Owner points to nothing that would change if the Phillips standard were applied. In light of the foregoing, we see no reason to modify our previous construction of “deformities” based either on the expiration of the ʼ370 patent or positions of the parties as developed during the trial, and adopt that construction for this Final Written Decision. Nor do we see the need to make any further constructions of the claims for the purposes of this decision that would be affected by the expiration of the ʼ370 patent or the Phillips standard.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“2. Analysis Petitioner contends that it would have been obvious to combine Pristash’s transition region with Kobayashi. Pet. 47. Petitioner asserts that this combination would have been obvious because “transition devices were known at the time for mixing and spreading light from the light source to the light guide.” Id. The Escuti Declaration (¶¶ 230–33) provides additional support for this contention.” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We are not persuaded by Patent Owner’s arguments attempting to distinguish Pristash. Instead, we are convinced by Petitioner’s arguments, citations to the Pristash disclosure, and the testimony of its expert, Dr. Escuti, that Pristash describes a panel that meets this limitation. Specifically, Pristash, taken as a whole, discloses in Figures 5 and 6 the combination of prismatic deformities with other deformity types (e.g., lenticular) on the same side of the light emitting panel as this claim requires. We are supported also in this conclusion by the testimony of Mr. Werner, who agreed that a lens is a different type of deformity than a prism. Werner Dep. 111:12–17. At oral argument, Patent Owner’s counsel asserted that Pristash does not meet this limitation because prismatic surface 48 in Figure 6 is not a “deformity” as the claims require, but is itself the surface of the panel. Hearing Tr. 49:7–10. We are not persuaded by this argument. There is no requirement in the claims that the deformities be on separate surfaces, only that they be on the same side of the panel. Moreover, the ʼ370 patent specifically refers to “prismatic surfaces, depressions or raised surfaces of various shapes” as examples of light extracting deformities. Ex. 1001, col. 5, ll. 57–60. We credit also Petitioner’s evidence, summarized supra (which Patent Owner does not challenge), that the other elements of claim 15 are found in Pristash. We conclude, therefore, that Petitioner has demonstrated, by a preponderance of the evidence that claim 15 would have been obvious over Pristash.” slip op. at 15
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“D. Real Party-in-Interest Patent Owner contends that the Petition is insufficient for failure to name two real parties-in-interest: LG Electronics Inc. and LG Electronics U.S.A. Inc. PO Resp. 15. The identical argument was raised in Patent Owner’s Preliminary Response. Prelim. Resp. 18. We determined in our Institution Decision that Patent Owner failed to provide convincing evidence that LG Electronics Inc. and LG Electronics U.S.A. Inc. are real parties in interest. Paper 11, 16–17. Patent Owner’s Response relies on the same arguments and evidence that we considered in our Institution Decision. For the reasons stated there, we determine that Patent Owner fails to prove that the Petition does not name the real parties-in-interest.” slip op. at 24
Patent outcomesUS 7,537,370 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,537,370 - Petroleum Geo-Services Inc. / Ion Geophysical Corporation And Ion International S.A.R.L. v. Westerngeco LLCAll claims unpatentablePTAB · Dec 15, 2015 · IPR2014-00689 · APJ Scott A Daniels · IPR · Final written decision
Claims 1, 2, 18, and 19 are unpatentable: claims 1 and 18 are anticipated by Workman, and all four claims are obvious over Workman.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“In the feather angle control mode, the global control system 22 attempts to keep each streamer in a straight line offset from the towing direction by a certain feather angle. The feather angle could be input either manually, through use of a current meter, or through use of an estimated value based on the average horizontal bird forces. Only when the crosscurrent velocity is very small will the feather angle be set to zero and the desired streamer positions be in precise alignment with the towing direction. Ex. 1001, 10:29–37. Although this passage indicates that there may be various ways, e.g. estimation, manual input, current measurement, to input or determine the feather angle, it is clear that the “feather angle” itself exists as a value used by global control system 22 to control the streamers positions.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Control Mode Patent Owner’s arguments with respect to anticipation each turn around an erroneous claim construction of “control mode.” Patent Owner argues that different from the claimed control modes which actively control the streamers, “Workman is concerned with noise minimization rather than generating noise through actively controlling streamer positioning devices.” PO Resp. 19. The correct interpretation of “control mode” does not include any aspect, state or condition that requires “active control.” We construed “control mode” to mean “operational state.” Whether Workman’s network solution system 10 or streamer control processor 40 does, or does not disclose “active control” in any of its operations is irrelevant because we are not persuaded that “control mode” in either claim 1 or 18 includes “active control.” Turning to Patent Owner’s next argument that “control mode” is “a goal-oriented automated configuration,” not disclosed by Workman, this argument is similarly unpersuasive. PO Resp. 19–20. As discussed above, the appropriate claim construction of “control mode” is “operational state.” Workman clearly discloses a computerized streamer control system having an operational state, being “a network solution system 10 for determining the position of the streamer cables 13 and seismic sources 12, and a streamer cable controller 16 for controlling the streamer positioning devices.” Ex. 1004, 3:40–43. To the extent that Patent Owner’s explanation of a control mode having “a goal-oriented automated configuration” is even relevant to the comparison with Workman we are still not apprised of a substantive difference between the claims and the prior art. Workman discloses that “the network solution system 10 implements a Kalman filter solution on the signals it receives . . . output[ing] real time streamer cable shapes, streamer cable positions, and streamer cable separations.” Id. at 3:46–51. A Kalman filter is explicitly part of the automated computer network solution system 10 performing data acquisition and determination of various output values, directed to the goal of controlling the streamers and their separations from one another. Workman therefore discloses an operational state of a computer system that, as specifically stated by Workman, determines streamer shapes, positions, and separations. Streamer Separation Mode As discussed above, we are not persuaded that streamer separation mode is properly defined as having a streamer spacing “set and maintain[ed]” as Patent Owner promotes. The appropriate claim construction of “streamer separation mode” is “a mode to control separation, or spacing, between streamers.” Patent Owner contends that under the proper definition the threshold spacing parameters disclosed by Workman “fails to control any separation or spacing (or set and maintain separation or spacing, for that matter).” PO Resp. 22 (citing Ex. 2042 ¶¶ 193–194.) Patent Owner’s own arguments, however, contradict this position. Patent Owner states that “Workman’s system is purely reactionary; it lies in wait and attempts to reposition the streamers only in the event that a certain threshold value is violated.” Id. This argument asserts, in effect, the operational state occurring under certain conditions, e.g. violation of a spacing threshold, the streamer is “repositioned” to control separation or spacing between streamers as the proper construction elucidates. Indeed Dr. Triantafyllou’s testimony supports our understanding where he states that “Workman does not move the streamers unless it violates a minimum threshold.” Ex. 2042 ¶ 194. Moreover, the fact that an additional parameter such as a high noise level might restrain the system from repositioning the streamers even if the threshold is exceeded makes no difference in our understanding that under appropriate operating conditions Workman controls streamer separation. PO Resp. 23. Patent Owner argues further that “[t]here is also no teaching in Workman of how much to correct, or where the streamers will end up once the violation is remedied.” Id. This is not persuasive because neither claim 1 nor claim 18, nor the proper construction of “streamer separation mode” includes any definition or limitation relating to a magnitude of correction or control. In addition to disclosing an array of streamers and streamer positioning devices, the evidence shows that Workman expressly teaches an operational state of a streamer control system that is no different than the claimed “control system configured to use a control mode selected from . . . a streamer separation mode” as recited in 18, or as called for in claim 1, “controlling the streamer positioning devices with a control system configured to operate in one or more control modes selected from . . . a streamer separation mode.” We are persuaded by the complete record before us that Petitioner has shown by a preponderance of the evidence that each of the limitations of independent claims 1 and 18 are disclosed by Workman.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“The question of obviousness in this proceeding for claims 2 and 19 rests on whether Dr. Evans has provided a persuasive articulated reasoning based on rational underpinnings to support the contention that one of ordinary skill in the art having familiarity with the design and operation of marine seismic surveys, seismic survey arrays including sensors such as hydrophones, streamers, streamer positioning devices and the associated electronic equipment, would have modified Workman to use a feather angle to control streamer positioning. Without this, Petitioner’s contentions would therefore appear to be the result of hindsight analysis as Patent Owner asserts. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), (cited with approval in KSR, 550 U.S. at 418.) Dr. Evans testifies persuasively that during collection of seismic data it was important to attempt to achieve a fairly consistent and straight streamer array behind the boat towing the array and along the plotted survey route, or line, and that maintaining “uniform streamer separation along the course of a planned survey line was a predictable solution to a problem that had been known in the art, because it would lead to a collection of the data at set streamer separations along the planned and desired survey line.” Ex. 1002 ¶ 146. Dr. Evans also testifies persuasively that streamer feathering was a known factor in seismic surveys where currents forced the streamers out of alignment behind the boat and “a marine seismic surveyor must be prepared to correct the recorded data where streamers are feathered and data collection does not follow the predetermined survey path.” Id. Based on this, Dr. Evans states that in order to optimize data collection, “a person of ordinary skill would have been motivated to, at minimum, set and maintain the streamers at a zero degree feather angle offset.” Id. at ¶ 149. What is not immediately clear from Petitioner’s argument is why prescribing a specific offset “feather angle” value to the streamers positioning determination system would have been apparent to one of skill in the art. But to this point, Dr. Evans directs us to Workman for evidence that it was a “well-known problem that the noise produced by streamer positioning devices can reduce seismic data quality in certain situations.” Id. at ¶ 150 (citing Ex. 1004, 1:62–2:9). We further ascertain from Dr. Evans testimony that when streamers are offset from the line of survey for instance by five degrees, “[i]n this situation, attempting to return the streamers to a zero degree feather angle against the current may generate hydrophone noise that adversely affects data quality.” Id. Based on these evidentiary underpinnings, Dr. Evans reasons that A person of ordinary skill would understand that it may be more desirable to maintain the streamers at a constant two degree feather angle than to return the streamers to the zero degree feather angle position. It was well-known to persons of ordinary skill that maintaining a straight and constant feather angle—even if non-zero—would produce more reliable seismic data than data retrieved from a cable that was not set and maintained in a straight configuration. Id. This reasoning is persuasive because it explains why one of ordinary skill in the art would have been motivated to use a specific feather angle value to determine streamer positioning apart from that imparted by a crosscurrent (five degrees) and different also from the streamers being repositioned to an alignment straight behind the boat towing the array i.e. zero degrees. In this scenario, by moving the streamers from five degrees, to a two degree feather angle, the data collection quality would be better and the noise generated by the SPD’s would not be as great as if the streamers were returned to the zero degree offset straight behind the boat and aligned with the plotted survey line.” slip op. at 30
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“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. 48. Patent Owner, however, does not explain adequately how the Q-Marine product allegedly embodies the challenged claims in the ’520 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. 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 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”); Ormco Corp. v. Align Technology Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 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 Workman. 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”). Accordingly, the alleged commercial success of the Q-Marine product does not support a conclusion of nonobviousness of the challenged claims in this case.” slip op. at 34
Patent outcomesUS 7,293,520 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,293,520 - Petroleum Geo-Services Inc. / Ion Geophysical Corporation et al. v. Westerngeco LLCAll claims unpatentablePTAB · Dec 15, 2015 · IPR2014-00687 · APJ Scott A Daniels · IPR · Final written decision
Claims 1 and 15 are unpatentable as anticipated by and obvious over the ’636 PCT.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“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” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“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 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). slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“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 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.” slip op. at 29
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“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).” slip op. at 30
Patent outcomesUS 7,162,967 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,162,967 - Petroleum Geo-Services Inc. / Ion Geophysical Corporation et al. v. Westerngeco LLCAll claims unpatentablePTAB · Dec 15, 2015 · IPR2014-00688 · APJ Scott A Daniels · IPR · Final written decision
Claims 1 and 15 are unpatentable as anticipated by Workman and obvious over Workman alone and Workman combined with Elholm.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownPlain and ordinary meaningDecided for petitioner
“Inst. Dec. 9. Our claim construction relies specifically on the nature of the temporal component described in the ’607 patent specification which states “the global positioning system runs position predictor software to estimate the actual locations of each of the birds 18.” Ex. 1001, 4:51–55. Based on the specification, the estimated “actual locations” recited in our construction is a future prediction relative to the old (measured) position data that takes into account the time delay, or lag, and as stated in Patent Owner’s point (1) above. The “actual location” in our claim construction is “where the streamer positioning device will be at the time when commands are received at the device” as contended by Patent Owner. See PO Resp. 7.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“This argument is not persuasive because Workman clearly describes that the Kalman filter would first receive signals including vessel positioning and location sensing device signals, i.e. position and location signals, and that the network solution 10 would make use of such signals to determine “real time . . . streamer cable positions.” Ex. 1004, 3:46–51, see also Ex. 1092, 434. We further understand the term “real time” cable positions to mean a cable position as a function of time and signal processing delay time, and that is most reasonably understood in context as current, actual, or some future estimated time relative to when the data i.e. old data, used to compute the “real time” cable position was observed. Thus, we interpret Workman to disclose a Kalman filter that provides an estimate of real time, i.e. actual, streamer positions based on previously observed location data, an interpretation that falls squarely within an “estimate of an actual position” as determined in our claim construction for the “predict[ing] positions” limitation in claims 1 and 15.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Despite Patent Owner’s arguments, we agree with Petitioner’s analysis as supported by Dr. Evans testimony, that one of ordinary skill in the art would have had reason to combine the teachings of Workman and Elholm to achieve the invention recited in challenged claims 1 and 15 with a reasonable expectation of success. Workman teaches every aspect of the claimed invention including towing an array of streamers, each streamer having a plurality of streamer positioning devices, predicting the positions of at least the streamers (if not the streamer positioning devices) and calculating changes in position of the streamer so as to control a streamer positioning device to affect the streamers. Based on Dr. Evans testimony, we are persuaded that one of skill in the art would have been motivated to modify Workman, by measuring, observing and changing the position of an SPD itself (as opposed to merely the streamer) as taught by Elholm, in order to accurately and precisely control the streamer. We agree that a person of ordinary skill in the art would have looked to Elholm’s teaching of an observable and controllable SPD via a “computer programme,” as a compatible streamer positioning device providing more accurate positional control of a streamer along its length, in the manner of Workman’s streamer control processor as it controls an array of streamers via multiple SPD’s on each streamer. We are not persuaded by Patent Owner’s position that Elholm only discloses a single SPD at the front of a streamer array because Petitioner is relying on Elholm for its teaching of an observable and controllable SPD, whereas it is Workman that teaches multiple SPD’s along the length of each streamer. See KSR, 550 U.S. at 420 (“[F]amiliar items may have obvious uses beyond their primary purpose, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”). Additionally, Patent Owner is arguing the references individually and these arguments fail to consider the collective teachings of Workman and Elholm from the perspective of one of ordinary skill in the art. See PO Resp. 40–43. Nonobviousness cannot be established by attacking the references individually when a challenge is predicated upon a combination of prior art disclosures. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In attacking Elholm individually, Patent Owner fails to address Petitioner’s actual challenges or, therefore, establish an insufficiency in the combined teachings of the references. Accordingly, we conclude Petitioner has established by a preponderance of evidence that claims 1 and 15 would have been obvious under 35 U.S.C. § 103 in view of the disclosures of Workman and Elholm.” slip op. at 37
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“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 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. 48 (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 long-felt need in the industry (Ex. 2077, ¶¶ 12–37) and ultimately contributed to billions of dollars in revenue (Ex. 2077, ¶¶ 47–51).” PO Resp. 48–49. Patent Owner, however, does not explain adequately how the Q-Marine product allegedly embodies the challenged claims in the ’607 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. 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 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. Cir. 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 Workman, and also Workman and Elholm. 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”). Accordingly, the alleged commercial success of the Q-Marine product does not support a conclusion of nonobviousness of the challenged claims in this case.” slip op. at 42
Patent outcomesUS 7,080,607 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,080,607 - Petroleum Geo-Services Inc. / Ion Geophysical Corporation And Ion International S.A.R.L. v. Westerngeco LLCAll claims unpatentablePTAB · Dec 15, 2015 · IPR2015-00567 · APJ Scott A Daniels · IPR · Final written decision
Claims 1 and 15 are unpatentable as anticipated by Workman and obvious over Workman alone and Workman combined with Elholm.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Id. at 7. First, we note that neither claim 1 nor claim 15 recites “predictive control” as stated here by Patent Owner. See Ex. 1001, 11:15–24, 12:26–34. Second, with respect to point (1), our claim construction accounts for exactly this temporal, i.e. future, aspect of “predicting.” As explained in our Decision to Institute: the received position data of any bird 18 is old, i.e., not instantaneous, or current, but is used to estimate a position of bird 18, and assess the estimate as an actual position of bird 18. Inst. Dec. 9. Our claim construction relies specifically on the nature of the temporal component described in the ’607 patent specification which states “the global positioning system runs position predictor software to estimate the actual locations of each of the birds 18.” Ex. 1001, 4:51–55. Based on the specification, the estimated “actual locations” recited in our construction is a future prediction relative to the old (measured) position data that takes into account the time delay, or lag, and as stated in Patent Owner’s point (1) above. The “actual location” in our claim construction is “where the streamer positioning device will be at the time when commands are received at the device” as contended by Patent Owner. See PO Resp. 7.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“the streamer on which the streamer positioning device is located, but also the complete streamer array.” PO Resp. 12. We are not persuaded to read such a limitation into this claim phrase. First, in the context of both claim 1 and claim 15, the phrase is more completely, “calculate desired changes in positions.” The plain meaning of, “calculate,” is essentially interchangeable with “determine,” thus we see no reason to clarify this aspect of the claim language. The direct object of the verb “calculate” is “changes in position” of the SPD, thus the proposed claim construction would substitute “forces based on streamer and array behavior” for “changes in position.” The asserted claim construction, however, naturally expresses how changes in position are, or could be accomplished. For example, “force” acting on an object is, from a physics perspective, a different quantity than the “position” of the object. A certain force may cause a change in position but it is not the “change in position” itself. We are, therefore, not persuaded by the plain meaning of the claim language that “changes in position” is required to be limited to any particular causational definition or quantity. Patent Owner’s claim construction relies upon preferred embodiments from the specification, for example, the specification states 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.” See PO Resp. 13 (citing Ex. 1001, 4:48–51). Furthermore, to the extent that Patent Owner is relying on the “global control system 22” as predicting or calculating such forces, the specification includes an alternative embodiment where the global control system does not calculate the forces, but alternatively, “can transmit location information to the local control system 36 instead of force information.” Ex. 1001, 6:38–39. Accordingly, we determine based on the specification, claim language, and evidence from the complete record before us, that under the broadest reasonable interpretation, and giving the words their plain and ordinary meaning consistent with the specification, that the phrase “calculating desired changes in position” needs no construction and should be accorded its plain and ordinary meaning.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“This argument is not persuasive because Workman clearly describes that the Kalman filter would first receive signals including vessel positioning and location sensing device signals, i.e. position and location signals, and that the network solution 10 would make use of such signals to determine “real time . . . streamer cable positions.” Ex. 1004, 3:46–51, see also Ex. 1092, 434. We further understand the term “real time” cable positions to mean a cable position as a function of time and signal processing delay time, and that is most reasonably understood in context as current, actual, or some future estimated time relative to when the data i.e. old data, used to compute the “real time” cable position was observed. Thus, we interpret Workman to disclose a Kalman filter that provides an estimate of real time, i.e. actual, streamer positions based on previously observed location data, an interpretation that falls squarely within an “estimate of an actual position” as determined in our claim construction for the “predict[ing] positions” limitation in claims 1 and 15.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Despite Patent Owner’s arguments, we agree with Petitioner’s analysis as supported by Dr. Evans testimony, that one of ordinary skill in the art would have had reason to combine the teachings of Workman and Elholm to achieve the invention recited in challenged claims 1 and 15 with a reasonable expectation of success. Workman teaches every aspect of the claimed invention including towing an array of streamers, each streamer having a plurality of streamer positioning devices, predicting the positions of at least the streamers (if not the streamer positioning devices) and calculating changes in position of the streamer so as to control a streamer positioning device to affect the streamers. Based on Dr. Evans testimony, we are persuaded that one of skill in the art would have been motivated to modify Workman, by measuring, observing and changing the position of an SPD itself (as opposed to merely the streamer) as taught by Elholm, in order to accurately and precisely control the streamer. We agree that a person of ordinary skill in the art would have looked to Elholm’s teaching of an observable and controllable SPD via a “computer programme,” as a compatible streamer positioning device providing more accurate positional control of a streamer along its length, in the manner of Workman’s streamer control processor as it controls an array of streamers via multiple SPD’s on each streamer. We are not persuaded by Patent Owner’s position that Elholm only discloses a single SPD at the front of a streamer array because Petitioner is relying on Elholm for its teaching of an observable and controllable SPD, whereas it is Workman that teaches multiple SPD’s along the length of each streamer. See KSR, 550 U.S. at 420 (“[F]amiliar items may have obvious uses beyond their primary purpose, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”). Additionally, Patent Owner is arguing the references individually and these arguments fail to consider the collective teachings of Workman and Elholm from the perspective of one of ordinary skill in the art. See PO Resp. 40–43. Nonobviousness cannot be established by attacking the references individually when a challenge is predicated upon a combination of prior art disclosures. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In attacking Elholm individually, Patent Owner fails to address Petitioner’s actual challenges or, therefore, establish an insufficiency in the combined teachings of the references. Accordingly, we conclude Petitioner has established by a preponderance of evidence that claims 1 and 15 would have been obvious under 35 U.S.C. § 103 in view of the disclosures of Workman and Elholm.” slip op. at 37
Patent outcomesUS 7,080,607 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,080,607 - Petroleum Geo-Services Inc. / Ion Geophysical Corporation And Ion International S.A.R.L. v. Westerngeco LLCAll claims unpatentablePTAB · Dec 15, 2015 · IPR2015-00566 · APJ Scott A Daniels · IPR · Final written decision
Claims 1 and 15 are unpatentable as anticipated by and obvious over the ’636 PCT.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“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.”” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“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 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). slip op. at 18
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“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).” slip op. at 30
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“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 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.” slip op. at 29
Patent outcomesUS 7,162,967 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,162,967 - Petroleum Geo-Services Inc. / Ion Geophysical Corporation et al. v. Westerngeco LLCAll claims unpatentablePTAB · Dec 15, 2015 · IPR2015-00565 · APJ Scott A Daniels · IPR · Final written decision
Claims 1, 2, 18, and 19 are unpatentable: claims 1 and 18 are anticipated by Workman, and all four claims are obvious over Workman.
RulingsFinal written decision- Skill levelSkill level board ownOther
“There is no specific dispute regarding the level of ordinary skill in the art between the parties although Petitioner’s definition essentially involves greater educational component and specific field experience on a survey vessel. Notwithstanding the evidence on skill level presented by the parties, the level of skill in the art often can be determined from a review of the prior art. See Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985). Based on our review of the prior art and the parties definitions, the applicable field of endeavor is marine seismic surveying, and the person of ordinary skill in the art would have at least a bachelor’s degree in ocean, mechanical, geophysical or electrical engineering, or a similar science degree, and a minimum of 3 years of marine seismic survey design and field experience. See Ex. 2042 ¶ 18; Ex. 1002 ¶ 23. The person of ordinary skill in the art would also be familiar with the design and operation of marine seismic surveys including the design of seismic survey arrays including sensors such as hydrophones, streamers, streamer positioning devices and the associated electronic equipment for producing representations of sub-surface geology. Ex. 1005, 1:5–35, Ex. 1004, 1:15– 68.” slip op. at 27
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Ex. 1001, 10:29–37. Although this passage indicates that there may be various ways, e.g. estimation, manual input, current measurement, to input or determine the feather angle, it is clear that the “feather angle” itself exists as a value used by global control system 22 to control the streamers positions. Petitioner argues that the above description “discloses implementing feather angle mode through use of a current meter” that “steers the streamers to counteract the current and attempts to keep them straight and parallel without a feather angle being input.” Reply 8–9. Petitioner misconstrues the written description. The object of the second sentence isn’t “feather angle mode,” it is “feather angle.” The specification states explicitly “[t]he feather angle could be input either manually, through use of a current meter, or through use of an estimated value based on the average horizontal bird forces.” This sentence does not read as alternatives to the feather angle itself, but different ways to determine a feather angle value. Patent Owner’s explanation is the more reasonable one here. Accordingly, we clarify our claim construction so that it is understood that the feather angle mode includes global control system 22 using a certain feather angle value to control the birds and streamers. The “feather angle mode” is properly, “a control mode that attempts to keep each streamer in a straight line offset from the towing direction using a certain feather angle.”” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“the streamers, “Workman is concerned with noise minimization rather than generating noise through actively controlling streamer positioning devices.” PO Resp. 19. The correct interpretation of “control mode” does not include any aspect, state or condition that requires “active control.” We construed “control mode” to mean “operational state.” Whether Workman’s network solution system 10 or streamer control processor 40 does, or does not disclose “active control” in any of its operations is irrelevant because we are not persuaded that “control mode” in either claim 1 or 18 includes “active control.” Turning to Patent Owner’s next argument that “control mode” is “a goal-oriented automated configuration,” not disclosed by Workman, this argument is similarly unpersuasive. PO Resp. 19–20. As discussed above, the appropriate claim construction of “control mode” is “operational state.” Workman clearly discloses a computerized streamer control system having an operational state, being “a network solution system 10 for determining the position of the streamer cables 13 and seismic sources 12, and a streamer cable controller 16 for controlling the streamer positioning devices.” Ex. 1004, 3:40–43. To the extent that Patent Owner’s explanation of a control mode having “a goal-oriented automated configuration” is even relevant to the comparison with Workman we are still not apprised of a substantive difference between the claims and the prior art. Workman discloses that “the network solution system 10 implements a Kalman filter solution on the signals it receives . . . output[ing] real time streamer cable shapes, streamer cable positions, and streamer cable separations.” Id. at 3:46–51. A Kalman filter is explicitly part of the automated computer network solution system 10 performing data acquisition and determination of various output values, directed to the goal of controlling the streamers and their separations from one another. Workman therefore discloses an operational state of a computer system that, as specifically stated by Workman, determines streamer shapes, positions, and separations. Streamer Separation Mode As discussed above, we are not persuaded that streamer separation mode is properly defined as having a streamer spacing “set and maintain[ed]” as Patent Owner promotes. The appropriate claim construction of “streamer separation mode” is “a mode to control separation, or spacing, between streamers.” Patent Owner contends that under the proper definition the threshold spacing parameters disclosed by Workman “fails to control any separation or spacing (or set and maintain separation or spacing, for that matter).” PO Resp. 22 (citing Ex. 2042 ¶¶ 193–194.) Patent Owner’s own arguments, however, contradict this position. Patent Owner states that “Workman’s system is purely reactionary; it lies in wait and attempts to reposition the streamers only in the event that a certain threshold value is violated.” Id. This argument asserts, in effect, the operational state occurring under certain conditions, e.g. violation of a spacing threshold, the streamer is “repositioned” to control separation or spacing between streamers as the proper construction elucidates. Indeed Dr. Triantafyllou’s testimony supports our understanding where he states that “Workman does not move the streamers unless it violates a minimum threshold.” Ex. 2042 ¶ 194. Moreover, the fact that an additional parameter such as a high noise level might restrain the system from repositioning the streamers even if the threshold is exceeded makes no difference in our understanding that under appropriate operating conditions Workman controls streamer separation. PO Resp. 23. Patent Owner argues further that “[t]here is also no teaching in Workman of how much to correct, or where the streamers will end up once the violation is remedied.” Id. This is not persuasive because neither claim 1 nor claim 18, nor the proper construction of “streamer separation mode” includes any definition or limitation relating to a magnitude of correction or control.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“What is not immediately clear from Petitioner’s argument is why prescribing a specific offset “feather angle” value to the streamers positioning determination system would have been apparent to one of skill in the art. But to this point, Dr. Evans directs us to Workman for evidence that it was a “well-known problem that the noise produced by streamer positioning devices can reduce seismic data quality in certain situations.” Id. at ¶ 150 (citing Ex. 1004, 1:62–2:9). We further ascertain from Dr. Evans testimony that when streamers are offset from the line of survey for instance by five degrees, “[i]n this situation, attempting to return the streamers to a zero degree feather angle against the current may generate hydrophone noise that adversely affects data quality.” Id. Based on these evidentiary underpinnings, Dr. Evans reasons that A person of ordinary skill would understand that it may be more desirable to maintain the streamers at a constant two degree feather angle than to return the streamers to the zero degree feather angle position. It was well-known to persons of ordinary skill that maintaining a straight and constant feather angle—even if non-zero—would produce more reliable seismic data than data retrieved from a cable that was not set and maintained in a straight configuration. Id. This reasoning is persuasive because it explains why one of ordinary skill in the art would have been motivated to use a specific feather angle value to determine streamer positioning apart from that imparted by a crosscurrent (five degrees) and different also from the streamers being repositioned to an alignment straight behind the boat towing the array i.e. zero degrees. In this scenario, by moving the streamers from five degrees, to a two degree feather angle, the data collection quality would be better and the noise generated by the SPD’s would not be as great as if the streamers were returned to the zero degree offset straight behind the boat and aligned with the plotted survey line.” slip op. at 31
Patent outcomesUS 7,293,520 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,293,520
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