Westerngeco LLC v. Ion Geophysical Corp. (In Re Westerngeco LLC)
889 F.3d 1308
| Fed. Cir. | 2018Background
- WesternGeco owns three patents (the ’607, ’967, and ’520) directed to systems for controlling/towing arrays of seismic streamers; PGS filed two rounds of IPR petitions challenging claims in those patents.
- ION (manufacturer of a competing product) sought joinder in the first-round IPRs and was allowed to join but only as a "spectator" (no filing, discovery, or participation rights); ION did not join the second round.
- The PTAB instituted review on six petitions and issued six final written decisions finding all instituted claims unpatentable as anticipated or obvious; the Board also rejected WesternGeco’s § 315(b) time‑bar/privity challenge.
- WesternGeco appealed, arguing (inter alia) that ION was a "real party in interest" or "privy" of PGS so that the IPRs were time‑barred under 35 U.S.C. § 315(b), and challenging multiple claim constructions and merits findings (anticipation/obviousness).
- The Federal Circuit reviewed de novo legal questions and for substantial evidence factual findings; it affirmed the Board on both the § 315(b) privity/time‑bar issue and the merits (claim construction and unpatentability determinations).
Issues
| Issue | WesternGeco’s Argument | PGS/ION’s Argument | Held |
|---|---|---|---|
| Whether ION was a "privy" or "real party in interest" of PGS for § 315(b) time‑bar purposes | ION and PGS were sufficiently connected (business dealings, indemnity language, post‑trial communications) so PGS’s IPRs are time‑barred | ION and PGS were distinct, arms‑length entities; ION did not control or fund PGS’s IPRs and was only a spectator | Affirmed: substantial evidence that ION and PGS were not privies/real parties in interest; § 315(b) did not bar PGS’s petitions |
| Claim construction of "predicting positions" (’607 patent) | Must require "behavior‑predictive model‑based control logic" (narrow) | Plain language and spec support broader construction—estimating/estimating actual positions | Affirmed: "predicting positions" means estimating the actual locations; not limited to the preferred behavior‑predictive model |
| Claim construction of "control mode" (’520 patent) | Should mean a "goal‑oriented, automatic configuration" | No basis to import "goal‑oriented" or "automatic" into the term | Affirmed: the Board’s broader construction as "operational state" (or equivalent) was correct; no improper addition of "automatic" |
| Obviousness/anticipation of asserted claims (’520, ’967 patents) | Prior art does not disclose claimed features (e.g., feather angle mode, global control system); objective indicia show nonobviousness | Prior art (e.g., Workman, ’636 PCT) discloses or renders obvious the claimed features; objective indicia lack the required nexus | Affirmed: substantial evidence supports PTAB’s findings of anticipation/obviousness; objective indicia lacked nexus or were insufficient to overcome obviousness |
Key Cases Cited
- WesternGeco L.L.C. v. ION Geophysical Corp., 837 F.3d 1358 (Fed. Cir. 2016) (prior appeal involving related patents and infringement proceedings)
- Wi‑Fi One v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018) (en banc) (held § 315(b) time‑bar decisions are reviewable by this court)
- Taylor v. Sturgell, 553 U.S. 880 (2008) (limits on nonparty preclusion; factors supporting binding privies)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (specification as primary guide to claim construction)
- Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376 (Fed. Cir. 2015) (substantial evidence can support anticipation where skilled artisan would "at once envisage" claimed arrangement)