UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD ION GEOPHYSICAL CORPORATION AND ION INTERNATIONAL S.A.R.L.

Transcription

1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD ION GEOPHYSICAL CORPORATION AND ION INTERNATIONAL S.A.R.L., Petitioners v. WESTERNGECO LLC Patent Owner PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,293,520 UNDER 35 U.S.C and 37 C.F.R , Mail Stop PATENT BOARD Patent Trial and Appeal Board U.S. Patent and Trademark Office P.O. Box 1450 Alexandria, VA

2 TABLE OF CONTENTS I. INTRODUCTION... 1 II. GROUNDS FOR STANDING (37 C.F.R (a)); PROCEDURAL STATEMENTS... 1 III. MANDATORY NOTICES (37 C.F.R. 42.8(a)(1))... 2 IV. STATEMENT OF THE PRECISE RELIEF REQUESTED AND THE REASONS THEREFOR (37 C.F.R (a) and (b))... 3 V. OVERVIEW... 3 VI. THE 520 PATENT... 7 A. The 520 Patent s Specification... 7 B. Challenged Claims 1, 2, 6, 18, 19 and 23 of the 520 Patent... 8 VII. CLAIM CONSTRUCTION A. Streamer Positioning Device B. Control System C. Feather Angle Mode D. Turn Control Mode E. Streamer Separation Mode F. A control system configured to use a control mode selected from a feather angle mode, a turn control mode, a streamer separation mode, and two or more of these modes VIII. DETAILED EXPLANATION OF GROUNDS FOR ANTICIPATION AND/OR OBVIOUSNESS A. GROUND 1: CLAIMS 18 AND 1 ARE ANTICIPATED BY THE WORKMAN PATENT B. GROUND 2: CLAIMS 1, 2, 18 & 19 ARE OBVIOUS OVER THE WORKMAN PATENT C. GROUND 3: CLAIMS 1, 2, 18, & 19 ARE ANTICIPATED BY THE HEDBERG PATENT D. GROUND 4: CLAIMS 1, 2, 18, and 19 ARE OBVIOUS OVER THE HEDBERG PATENT E. GROUND 5: CLAIMS 1, 6, 18, AND 23 ARE OBVIOUS OVER THE 636 PCT IN VIEW OF THE 153 PCT i

3 F. GROUND 6: CLAIMS 1, 6, 18, AND 23 ARE OBVIOUS OVER DOLENGOWSKI IN VIEW OF THE 636 PCT IX. CONCLUSION ii

4 TABLE OF AUTHORITIES FEDERAL CASES Abbott Labs v. Baxter Pharm. Prods., Inc., 334 F.3d 1274 (Fed. Cir. 2003)...26 Crystal Semiconductor Corp. v. TriTech Microelectronics, 246 F.3d 1336 (Fed. Cir. 2001)...26 Curtiss-Wright Flow Control Corp., 438 F.3d 1374, 1380 (Fed. Cir. 2006)...25 In re Yamamoto, 740 F.2d 1569 (Fed. Cir. 2004)...18 Janssen Pharmaceutica v. Eon Labs Mfg., Inc., 134 Fed. App x 425 (Fed. Cir. 2005)...10 KSR Int l Co. v. Teleflex Inc., 550 U.S. 398 (2007)...35, 57, 59 Philips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)...25 STATUTES, RULES & OTHER 37 C.F.R 42 et seq....1, 2, 3, U.S.C , 9-14, 28, U.S.C , U.S.C U.S.C U.S.C iii

5 G. Upchurch, Intellectual Property Litigation Guide: Patents and Trade Secrets (Oct. 2013)...10 S. Upadhy, Generic Pharmaceutical Patent and FDA Law (April 2013)...10 iv

6 I. INTRODUCTION Pursuant to 35 U.S.C. 311 and 37 C.F.R , ION Geophysical Corporation and ION International S.a.r.l. (collectively, ION or Petitioners ) request Inter Partes review of Claims 1, 2, 6, 18, 19, and 23 of U.S. Patent No. 7,293,520 (the 520 Patent ) (Ex. 1001), assigned on its face to WesternGeco L.L.C. ( Patent Owner ). This Petition substantively copies the petition filed in co-pending IPR , which was instituted on December 15, Accompanying this Petition is a motion to join IPR For at least the reasons stated herein, Petitioners request that Claims 1, 2, 6, 18, 19, and 23 of the 520 Patent be judged unpatentable and canceled. Because this Petition substantively copies the petition filed in co-pending IPR and that IPR has been instituted, this Petition establishes a reasonable likelihood Petitioners will prevail with regard to Claims 1, 2, 6, 18, 19, and 23 of the 520 Patent. II. GROUNDS FOR STANDING (37 C.F.R (a)); PROCEDURAL STATEMENTS Petitioners certify that (1) the 520 Patent is available for inter partes review; and (2) Petitioners are not barred or estopped from requesting inter partes review of any claim of the 520 Patent on the grounds identified in this Petition. 1 1 Petitioners were never served, they did not waive service, and a waiver of service was never filed in any litigation involving U.S. Patent No. 7,293,520, including 1

7 This Petition is filed in accordance with 37 C.F.R (a). Concurrently filed herewith are a Power of Attorney and Exhibit List pursuant to 42.10(b) and 42.63(e), respectively. The Director is authorized to charge the fees specified by 37 C.F.R (a) to Deposit Account No III. MANDATORY NOTICES (37 C.F.R. 42.8(a)(1)) Real Parties-In-Interest (37 C.F.R. 42.8(b)(1)): ION Geophysical Corporation and ION International S.a.r.l. (collectively, ION or Petitioners ). Notice of Related Matters (37 C.F.R. 42.8(b)(2)): The 520 patent is or has been the subject of the following civil actions: (i) Civ. Act. No cv (S.D. Tex.), filed Jun. 12, 2009; (ii) Civ. Act. No cv (S.D. Tex.), filed Jun. 16, 2010; (iii) Civ. Act. No cv (S.D. Tex.), filed Aug. 15, 2013; and (iv) Civ. Act. No cv (S.D. Tex.), filed Sep. 16, Additionally, the 520 patent is the subject of the following petitions for IPR: IPR and IPR Lead and Back-Up Counsel and Service Information (37 C.F.R. 42.8(b)(3) and (4)): Petitioners designate W. Karl Renner, Reg. No. 41,265, as Lead Counsel and Roberto Devoto, Reg. No. 55,108, as Backup Counsel, both available at 3200 RBC Civ. Act. No cv (S.D. Tex.), filed Jun. 12, See Ex (Docket of Civ. Act. No cv-01827). 2

8 Plaza, 60 South Sixth Street, Minneapolis, MN (T: ; F: ), or electronically by at IV. STATEMENT OF THE PRECISE RELIEF REQUESTED AND THE REASONS THEREFOR (37 C.F.R (a) and (b)) Petitioners request inter partes review under 37 C.F.R as to Claims 1, 2, 6, 18, 19 and 23 of the 520 Patent and a ruling that Claims 1, 2, 6, 18, 19 and 23 are unpatentable based on one or more of the grounds under 35 U.S.C. 102 or 103 set forth herein. Petitioners detailed statement of the reasons for the relief requested is set forth in Section VIII below. V. OVERVIEW The 520 Patent is directed to marine seismic surveying technology. These surveys use reflected sound waves to determine geological properties of the earth s subsurface by using vessels to tow acoustic energy sources that fire shots of sound waves into the water. These are reflected back and recorded by acoustic sensors ( hydrophones or receivers ) that are towed in long cables known as seismic streamers. In modern surveys, the vessel will typically tow a plurality of streamers in an array and will traverse the survey area in straight lines, turning in between, as if mowing a lawn. Ex (Evans) at 28, 32. 3

9 Streamer positioning devices, sometimes called birds or paravanes, are built into or attached to streamers to control their positions. See, e.g., Ex (U.S. Patent No. 3,605,674) ( Weese )). The devices have at least one water-deflecting surface (e.g., a wing, fin, or rudder) that can be positioned to adjust the streamers depths and/or lateral movement. The ability to control streamer positions was recognized long before 1998 as critical for efficiently obtaining quality seismic data. Currents and other forces can push the streamers off of their pre-planned paths. Ex (Evans) at 35. If the survey fails to record sufficient data throughout the survey area, in accordance with the survey plan, the vessel and streamers must re-acquire the missing data, which is a time-consuming and expensive process. Id. Moreover, streamers veering off course results in recording irregularly distributed and thus lower quality data. Id As Dr. Evans explains, one of the primary goals of 3D marine seismic data acquisition is to conform the actual survey to the survey plan s specifications, including maintaining the streamers positions along the pre-planned designated 4

10 course. Id. 32. Streamers deviating from their planned positions also risks entanglement of the expensive survey equipment. Id. 39. Long before 1998, streamer steering was known as an effective solution for avoiding the degradation of seismic data quality and streamer tangling that can be caused by currents. Id ; Ex (U.S. Patent No. 3,581,273) ( Hedberg ); Ex (Weese). Another long recognized problem relating to the positions of streamers relates to turning the vessel and the seismic array. Turns are time-consuming and risk streamer tangling. Ex (Evans) at 40; Ex (U.S. Patent No. 4,890,568) ( Dolengowski ); Ex (U.S. Patent No. 4,231,111) ( Neeley ); Ex (U.S. Patent No. 4,486,863) ( French ). Centripetal forces compress the streamers inward during a turn, which increases the risk of tangling. Ex (Evans) at 40, 88-89; Ex (Dolengowski) at 2: Streamer positioning devices can be used to counteract this force and to prepare for a straight and parallel configuration for use once the turn is complete. Id. 5

11 As explained by Dr. Evans, the problems relating to seismic data quality, streamer tangling, and turning became more acute when the use of multi-streamer arrays expanded throughout the 1980s and 1990s as a result of advances in computing technology. Ex (Evans) at 72; Ex (Cole) at 42. Not only were streamers being added to increase the width of the array, but also they were being placed closer together in order to increase the quality of the seismic image. Ex (Evans) at 71. As a result, both the amount of data acquired in a survey and the risk of entanglement increased significantly. And as survey equipment became more expensive to deploy, the cost of downtime during turns when no data are acquired also increased. The cost of in-filling to re-acquire missing or low quality data likewise increased. Id. at 73. Surveyors in 1998 thus were highly motivated to use streamer steering to avoid these problems. Seismic steering also increased in importance when so called 4D timelapse seismic surveys became more widely used in the mid-1990s. Time-lapse surveys are performed by repeating 3D surveys over the same area at different 6

12 times to monitor any changes in the earth s geology. Ex (David H. Johnston, Time-Lapse Seismic analysis of the North Sea Fulmer Field, SEG Extended Abstracts (1997)). It was well-understood that in order to be effective, the location of the streamers (and attached receivers) in a 4D survey should match the locations in the previous surveys. Id. ( [R]epeatability of seismic data is a key issue ); Ex (Evans) at 151. It was also well understood that streamer steering was useful for this purpose. Id. Surveyors were therefore motivated to implement streamer steering by the priority date to acquire high-quality 4D data. Id. The declarations of Dr. Evans and Dr. Cole summarize improvements in streamer positioning and control systems since the 1970s, including the disclosures of laterally steerable streamer positioning devices and automatic control systems that sought to address the following problems: (1) the degradation of seismic data quality and the avoidance of gaps in coverage; (2) streamer tangling; (3) issues related to turning; and (4) issues relating to the repeatability of 4D surveys. By the October 1998 priority date, systems to resolve these problems were well-known. VI. THE 520 PATENT A. The 520 Patent s Specification The 520 Patent, entitled Control System for Positioning of Marine Seismic Streamers, is directed to a system for controlling seismic streamer positions during a survey. The Patent points to the well known motivations for streamer steering, including avoiding reduced efficiency of current 3D seismic survey 7

13 operations, incidents of tangling adjacent streamers, and the loss of efficiency associated with turning the seismic survey vessel. Ex at 2: All of the Claims at issue in this proceeding relate to three control modes directed to addressing these well-known problems: feather angle control mode ; turn control mode and streamer separation mode. In the feather angle mode, the control system attempts to keep each streamer in a straight line offset from the towing direction by a certain feather angle. Id. at 10: In turn control mode, the control system sends signals to the streamer positioning devices to throw out the streamer by generating a force in the opposite direction of the turn. Id. at 10: Finally, in streamer separation mode, the control system sets a minimum separation between streamers in one embodiment and, in another, attempts to minimize the risk of entanglement of the streamers by positioning the streamers to maximize the distance between adjacent streamers. Id. at 10: B. Challenged Claims 1, 2, 6, 18, 19 and 23 of the 520 Patent The claims at issue in this proceeding relate to these modes. Claim 1 recites: 1. A method comprising: (a) towing an array of streamers each having a plurality of streamer positioning devices there along contributing to steering the streamers; (b) controlling the streamer positioning devices with a control system configured to operate in one or more control modes 8

14 selected from a feather angle mode, a turn control mode, and a streamer separation mode. Claim 18 is a corresponding apparatus claim for a control system configured to use a control mode selected from one or more of the three modes. Claims 2 and 19 are dependent method and apparatus claims that are directed only to feather angle control mode ; and Claims 6 and 23 are dependent claims directed to a particular embodiment of turn control mode. Ex at Cols C. Prior Art Relied Upon in this Petition 1. Workman The Workman Patent (Ex. 1004), titled Adaptive Control of Marine Seismic Streamers, issued on August 4, Because it was published before the October 1, 1998 filing date of the Great Britain application to which the 520 Patent claims priority, it is prior art under 35 U.S.C. 102(a). The Workman Patent also constitutes prior art under 35 U.S.C. 102(b) because it issued on August 4, 1998 and the critical date of the 520 Patent for 102(b) purposes is September 28, 1998 one year before its PCT filing date. The 520 Patent issued from a continuation that claims priority to PCT application No. 99/01590, filed on September 28, The filing date of the international PCT application is the effective U.S. filing date and is used to determine the critical date for purposes of 35 U.S.C. 102(b). See 35 U.S.C. 363 ( An international application designating the United States shall have the effect, from 9

15 its international filing date under article 11 of the treaty, of a national application for a patent regularly filed in the Patent and Trademark Office. ); 35 U.S.C. 119(a) (1994) ( no patent shall be granted on any application for patent for an invention which had been patented or described in a printed publication in any country more than one year before the date of the actual filing of the application in this country ). These provisions establish that the critical date is based on the PCT application date, not the date of an earlier filed foreign patent application. See, e.g., Janssen Pharmaceutica v. Eon Labs Mfg., Inc., 134 Fed. App x 425 (Fed. Cir. 2005); Ex (G. Upchurch, Intellectual Property Litigation Guide: Patents and Trade Secrets (Oct. 2013)) at 15:5 ( the PCT application is the U.S. filing date and the critical date for 102(b) prior art is one year before that date, rather than one year before the earlier British application date); Ex (Shashank Upadhy, Generic Pharmaceutical Patent and FDA Law (April 2013)) at Workman discloses an improved system for controlling the position and shape of marine seismic streamers. Ex (Workman) at 1:6-8. Like earlier art, Workman recognized that because currents will deflect the streamer cables from their intended paths, streamer steering is desirable for preventing the entanglement of streamer cables and for avoiding collisions with offshore hazards. Id. at 1: Workman also recognized that streamer steering was desirable for efficient high-quality 3D marine seismic surveys. See id. at 1:

16 To perform this steering, Workman disclosed streamer positioning devices to control the streamers lateral movement and depth during a survey. Id. at 1: Workman discloses a control system configured to operate in various streamer steering modes. In Workman s system, the operator would implement a particular mode by inputting threshold parameters that would determine when and how the streamer positioning devices are repositioned. Workman disclosed a non-exhaustive list of possible threshold parameters, including values for minimum allowable separations between streamer cables and minimum allowable separations between any streamer cable and any obstructive hazard. Id. at 3:65-4:3. These modes would substantially reduce the risk of streamer tangling, whether due to currents or obstructions such as oil rigs. Ex (Evans) at Hedberg The Hedberg Patent (Ex. 1005), titled Marine Seismic Exploration, was issued on May 25, 1971, and is prior art under 35 U.S.C. 102(a) and (b). Hedberg discloses a streamer positioning system that operates in a mode whereby multiple streamers are maintained in straight lines behind the vessel using laterally steerable streamer positioning devices. Hedberg recognized that errors in seismic data occur due to the set and drift or displacement of the spread by marine currents. Ex at 6: In response, Hedberg disclosed a system to maintain[] streamers in such fixed or predetermined relative positions during 11

17 [the] survey [so] as to assure the accuracy of records produced. Id. at 2:2-7. Hedberg s streamer positioning devices may be controlled to maintain them in predetermined and accurate positions with respect to each other. Id. at 6: Consequently, [t]he seismic means are... held in such consistent and related positions during traverse of the area under survey that the records obtained will be capable of ready and accurate correlation and interpretation. Id. at 6: The 636 PCT International PCT Application No. WO 98/28636 (Ex. 1006), titled Control Devices for Controlling the Position of a Marine Seismic Streamer, was published on July 2, Because it was published before the October 1, 1998 filing date of the Great Britain application to which the 520 Patent claims priority and the critical date, it is prior art under 35 U.S.C. 102(a) and (b). The 636 PCT discloses a sophisticated streamer positioning device control system. In so doing, it reiterates long-known motivations for streamer steering: During the seismic survey, the streamers are intended to remain straight, parallel to each other and equally spaced... But because of sea currents, the streamers frequently fail to accurately follow the path of the seismic survey vessel, sometimes deviating from this path by an angle, known as the feathering angle, of up to 10. This can adversely affect the coverage of the survey, frequently requiring that certain parts of the survey be repeated. In really bad circumstances, the 12

18 streamers can actually become entangled, which though rare, causes great damage and considerable financial loss. Ex ( 636 PCT) at 2. In response, the 636 PCT disclosed novel streamer control devices which alleviate at least some of the disadvantages of the current designs. Id. Its streamer positioning devices, called birds, are controlled by a control system on the vessel that sends positioning commands to control systems within each bird. Specifically, the 636 PCT explains that the local control system within each bird receive[s] control signals representative of desired depth, actual depth, desired lateral position, actual lateral position and roll angle of the bird.... Id. at 4-5. Using that information, the bird s control circuit then calculate[s] and applies the forces necessary to move the bird to the desired depth and lateral position. Id. 4. The 153 PCT Application International PCT Application Number WO 84/03153 (Ex. 1007), titled Device in a Hydrophone Cable for Marine Seismic Surveys, was published on August 16, 1984, and is prior art under 35 U.S.C. 102 (a) and (b). The 153 PCT controlled a streamer cable using a steerable end rudder or steerable fins provided in the longitudinal direction of the cable. Ex at 11. It recognized the problems of streamer deviation from the pre-determined path and thus disclosed an adaptive control system which manoeuvres the cable in such a way that [the cable] will be positioned as favourably as possible in relation to the 13

19 reference line from which data is wanted in the sailing programme. Id. at 10. The 153 PCT specifically addressed the problems associated with turning the streamer array, including that the turning process is very time consuming, since the turning must be carried out in such a way that the cable must be sufficiently straight before starting a new line. Id. at The 153 PCT thus endeavored to turn along a track which is as short as possible and renders an optimum shape of the cable prior to the commencement of another [survey] line. Id. at 11. To steer correctly during this shorter turn, the 153 PCT disclosed a turning programme that can be put in[to] [the system] as a completely controlled programme. Id. 5. Dolengowski The Dolengowski Patent, U.S. Patent No. 4,890,568 (Ex. 1008), titled Steerable Tail Buoy, was published on January 2, 1990, and is prior art under 35 U.S.C. 102(a) and (b). Dolengowski disclosed a steerable tail buoy, which is a streamer positioning device that is located at the end of the streamer. This tail buoy included two or more rudders, a steering mechanism and a communication system. Ex at 3:3-5. The steering mechanism controls the rudder position based on signals received by the communication system from a remote transmitter on the vessel. Id. at 3:9-12. The computer on the survey vessel would 14

20 continuously monitor the precise location of the tail buoy and initiate any necessary actions to adjust the course of the tail buoy. Id. at 3: Dolengowski s tail buoy was aimed primarily at ameliorating the turning problem. Dolengowski recognized that streamers can cross and become tangled during a turn. Id. at 2: Without lateral steering, the tail buoys are likely to cross and become hooked, or the ropes that connect the buoys to the streamers may become tangled. Id. at 2: Dolgenowski explained that steering was important outside the turn context as well, as the wind and water current may cause the trailing end of the streamer to feather outwardly from the vessel s path and thereby risk damage to the streamer or tail buoy. Id. at 2: Dolengowski thus disclosed a tail buoy which can be remotely steered to prevent tangling of the tail buoys or damage to the tail buoys or streamers. Id. at 2: A. Summary of the Prosecution History of the 520 Patent The 520 Patent issued from Application No. 11/455,042 which was filed on June 16, 2006 with 34 claims. On August 18, 2006, the examiner rejected four claims for nonstatutory double patenting and objected to the remaining 30 because they depended from the rejected claims. Ex at 2-3. After the applicant filed a terminal disclaimer, the examiner allowed all of the claims. Ex B. District Court Litigation Relating to the Validity of Claim 18 15

21 In District Court litigation, WesternGeco ( WG ) asserted that Claims 18, 19, and 23 of the 520 Patent were infringed by ION Geophysical Corporation ( ION ). ION contended Workman anticipated Claim 18. The jury concluded that ION had not proven invalidity by clear and convincing evidence, and the court denied ION s motion for a new trial. Ex (Jury Verdict) at 3; Ex (Order on Post Trial Motions) at 10. This Petition, however, presents new grounds for invalidity that were not presented or adjudicated in the ION litigation. The jury s conclusion that Workman did not anticipate, on a different record, with a different claim construction, and a different burden of proof, is not relevant or persuasive here. The argument at trial turned on the question of whether Workman disclosed streamer separation mode, which the Court (applying a different standard) construed to mean a control mode that attempts to set and maintain the spacing between adjacent streamers. Ex (Markman Order) at 28. That narrow construction plainly does not apply here, as the specification is bereft of support for the proposition that spacing between adjacent streamers must be set at both a minimum and maximum distance in streamer separation mode. The broadest reasonable construction of that term encompasses setting a minimum distance between the streamers. See Section VII.E., infra. There can be no dispute that Workman practices streamer separation mode under this construction, as WesternGeco acknowledged that Workman disclosed a threshold 16

22 parameter of minimum allowable separations between the streamer cables. Ex (WG s Opp. to ION s Mot. for New Trial) at In any event, even under the narrow construction it applied (which does not apply here), the jury s finding cannot be squared with even a basic understanding of the streamer array s physics. As Dr. Evans explains, there is a maximum separation distance that each vessel and streamer array may attain, depending on the length and geometry of the system s components. Ex at 139. Workman discloses a streamer separation mode even under the District Court s construction when its threshold parameter of minimum allowable separation distance is set at the same value as the maximum streamer separation distance. Id. at 140. At that threshold value, Workman would set both a minimum and maximum distance between streamers an appropriate array configuration in extreme weather conditions when the streamer entanglement risk is high. Id. WesternGeco s final argument that Workman did not enable lateral steering is likewise inapplicable and unsupportable on this record. Workman specifically disclosed a system of streamer positioning devices to control the streamers lateral movement during a survey. Ex at 1:45-61; Ex (Evans) at , 145. There is no doubt that the prior art including prior art addressed below and not considered in prosecution or the litigation repeatedly discloses and enables lateral steering. See, e.g., Ex (Weese) at 6:47-50; Ex. 17

23 1017 (U.S. Patent No. 5,532,975) ( Elholm ) at 5:56-67; Ex ( 636 PCT) at 2-3; Ex (U.S. Patent No. 6,011,752) ( Ambs ) at 2:56-63, 3:3-7. Indeed, WesternGeco conceded that the 636 PCT discloses a streamer positioning device, or bird, to steer the streamer both laterally and in depth. Ex (WG s Opp. to ION s Mot. for New Trial) at 2; As Dr. Evans and Dr. Cole explain, on the basis of approximately seven decades of combined experience in the field, the implementation of lateral steering was trivial in 1998 and cannot distinguish Claim 18 from the prior art presented in this Petition. Ex (Cole) at 75-81; Ex (Evans) at 50; Ex (Trial Tr.) at 578 (Inventor testifying that lateral steering of streamers dates back to World War Two). VII. CLAIM CONSTRUCTION A claim subject to Inter Partes Review is given its broadest reasonable construction in light of the specification in which it appears. 37 C.F.R (b); see In re Yamamoto, 740 F.2d 1569, 1572 (Fed. Cir. 2004). The constructions adopted in this Petition are consistent with the broadest reasonable interpretation standard, the specification, and the terms ordinary meanings, as well as the claim construction positions advanced by WesternGeco in the ION Case. 2 See FN7, infra, regarding the public availability of the unredacted version of this sentence. 18

24 A. Streamer Positioning Device: a device that controls the position of a streamer as it is towed (e.g., a bird ). The broadest reasonable construction of steamer positioning device is a device that controls the position of a streamer as it is towed (e.g., a bird ). Ex (Evans) at 108. WesternGeco agreed with this proposed construction in the district court litigation. Ex (WG s Reply Claim Constr. Brief) at 4. It is also consistent with the 520 Patent specification, which indicates that the term streamer positioning device includes birds, 3 and that bird is a term used in the prior art to describe devices that allow the position of the streamer to be controlled as it is towed through the water. Ex at 1:50-52, 3:48. B. Control System: An interconnection of components forming a system configuration that will provide a desired system response. A control system, consistent with its plain and ordinary meaning, refers to an interconnection of components forming a system configuration that will provide a desired system response. Ex. 1021(Richard C. Dorf & Robert H. Bishop, Modern Control Systems (8th ed. 1998)) at 2. A person of ordinary skill in the art ( POSA, defined in Dr. Evans Declaration, Ex at 23) would 3 The specification identifies deflectors and steerable tail buoys as other examples of streamer positioning devices. See Ex at 11:4-11; 1:67-2:2. 19

25 have understood a control system to be designed to receive inputs and to process those inputs to create outputs. Ex (Evans) at 54; Ex (Cole) at 32. C. Feather Angle Mode: A control mode that attempts to keep each streamer in a straight line offset from the towing direction by a certain feather angle. The specification describes feather angle mode as a mode wherein a global control system attempts to keep each streamer in a straight line offset from the towing direction by a certain feather angle. Ex at 10: Therefore, the broadest reasonable interpretation of feather angle mode is a control mode that attempts to keep each streamer in a straight line offset from the towing direction by a certain feather angle. Ex (Evans) at This is essentially the same construction advanced by WesternGeco and adopted by the court, Ex (Markman Order) at 25, and, as Dr. Evans explains, the difference in the proposed constructions is immaterial for validity purposes. Ex at 114. Consistent with the specification, the feather angle offset in a feather angle mode may either be zero or non-zero. Id. at 113. The specification states that when the crosscurrent velocity is very small... the feather angle [will] be set to zero and the desired streamer positions [will] be in precise alignment with the towing direction. Ex at 10: The figures below illustrate the 4 A mode is an often pre-configured way of operating a device. Ex at

26 feathering effect of a slight cross current and a zero degree feather angle mode that would result from steering streamers to realign them with the towing direction. In other situations, where large currents on the streamer make it difficult to steer streamers back to the zero feather degree angle position without creating undue noise on the streamer, the specification makes clear that streamers may be maintained at a non-zero feather angle. Ex (Evans) at 113. In such situations, it would be desirable to maintain a straight and parallel configuration of streamers at a non-zero angle, as is shown in the figure below. Id. 21

27 In short, as explained further in Dr. Evans' declaration, the feather angle mode operates to keep streamers straight and parallel in the face of currents that otherwise could cause substantial deviation in streamer positions. Id. D. Turn Control Mode: A control mode in which the streamer positioning devices first generate force in the opposite direction of the turn and then are directed back into position. The specification informs the meaning of turn control mode. It explains: The turn control mode consists of two phases. In the first part of the turn, every bird tries to throw out the streamer by generating a force in the opposite direction of the turn. In the last part of the turn, the birds are directed to go to the position defined by the feather angle control mode. By doing this a tighter turn can be achieved and the turn time of the vessel and equipment can be substantially reduced. Ex at 10: Thus, during a turn, streamer positioning devices throw out streamers in the opposite direction of the turn, so that the streamers do not tangle and so that the streamers can return to configuration in which data acquisition may resume (which, in many cases, will be a straight and parallel configuration of feather angle mode). Ex (Evans) at 116. Thus, the broadest reasonable construction of turn control mode is a control mode in which the streamer positioning devices first generate force in the opposite direction of the turn and then are directed back into position. This construction accords with the specification and the construction WesternGeco advanced in court. Ex (Markman Order) at

28 E. Streamer Separation Mode: A mode wherein the global control system attempts to direct the streamer positioning devices to maintain a minimum separation distance between adjacent streamers. The broadest reasonable construction of streamer separation mode is illustrated by disclosures of two distinct streamer separation mode embodiments in the 520 Patent, one of which is broader than the other. Both embodiments aim to prevent the streamers from tangling, which the patent deems [t]he most important requirement for [its] control system. Ex at 4:4-5. As Dr. Evans explains, [t]he first streamer separation mode applies to ordinary seismic survey operations, Ex at 117. The 520 Patent discloses that: In the preferred embodiment of the present invention, the global control system monitors the actual positions of each of the birds and is programmed with the desired positions of or the desired minimum separations between the seismic streamers. Ex at 4: A POSA would understand this preferred embodiment, in which the global control system is programmed with the desired minimum separations between the seismic streamers, to be a configuration of streamer separation mode wherein the global control system attempts to maintain minimum separation distances between streamers. See Ex (Evans) at 117. Beyond this first streamer separation configuration, the patent discloses that it may also operate in a second streamer separation configuration reserved for 23

29 extreme weather conditions. Ex at 10: Here, where the risk of streamer tangling is most prevalent, the streamer separation mode attempts to maintain a greater minimum separation between streamers. To avoid tangling in such conditions, the system attempts to maximize the distance between streamers and/or attempt[] to minimize the risk of entanglement of the streamers. Id. at 10: That configuration is a narrower embodiment of streamer separation mode than the preferred embodiment that merely attempts to maintain any desired minimum spacing between streamers. Ex (Evans) at 117. Given that both embodiments are taught in the specification, the broadest reasonable interpretation of streamer separation mode is a mode wherein the global control system attempts to direct the streamer positioning to maintain a minimum separation distance between adjacent streamers. This definition encompasses both embodiments. It also is consistent with the broadest claimed embodiment of streamer separation mode. U.S. Patent No. 6,932,017, which issued from the parent of the 520 Patent, contains an identical specification and claims a streamer separation mode... wherein the global control system attempts to direct... streamer positioning device[s] to maintain a minimum separation distance between adjacent streamers. Ex at 11: The doctrine of claim differentiation also supports the proposed construction. The claims of the 520 Patent that are directed to the narrower embodiment of 24

30 streamer separation mode, in which (for example) the system attempts to maximize the distance between and minimize the risk of entanglement of streamers, all depend from broader claims that refer to control systems that may be configured into a streamer separation mode. See Ex at Claims 13, 14, 30, 31. These claims further confirm that streamer separation mode cannot be defined narrowly to encompass only this maximal distance embodiment, as the dependent claim then would not further limit the dependent claim. See Philips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc); Curtiss-Wright Flow Control Corp., 438 F.3d 1374, 1380 (Fed.Cir.2006). The streamer separation mode construction advanced by WesternGeco in the district court litigation was incorrect. It sought a construction wherein streamer separation mode was a control mode that attempts to set and maintain the spacing between adjacent streamers. Ex (Markman Order) at 28. Though adopted by the court, see id., nothing in the specification or claims of the 520 Patent refers to a streamer separation mode that sets predefined spacing distances between streamers. As noted above, in its broadest description of the term, the 520 Patent only refers to maintaining a minimum distance between streamers, which by its plain language permits separation by a greater distance than the minimum in some circumstances, and does not imply that the distances between streamers are set. Ex (Evans) at 122. WesternGeco and the 25

31 court s narrow construction of streamer separation mode contravened the specification and is especially inappropriate under the broadest reasonable construction standard applicable here. F. A control system configured to use a control mode selected from a feather angle mode, a turn control mode, a streamer separation mode, and two or more of these modes A person of ordinary skill would understand this claim, by its plain language, to refer to a control system configured to use one or more of the recited modes of the specification. The claim clearly recites that the control system is configured to use a control mode an indefinite article understood to mean one or more. Crystal Semiconductor Corp. v. TriTech Microelectronics, 246 F.3d 1336, 1347 (Fed. Cir. 2001). Further, selected from is a formulation that can refer to a list of alternatives that is, a Markush group. See Abbott Labs v. Baxter Pharm. Prods., Inc., 334 F.3d 1274, 1280 (Fed. Cir. 2003); MPEP (h). Although the claim does not also employ the phrase consisting of, its language illustrates that it is intended to operate as a Markush group. This is further evidenced by Claim 1 the corresponding method claim which recites a control system configured to operate in one or more control modes selected from a feather angle mode, a turn control mode, and a streamer separation mode. Ex at Claim 1. Thus, Claim 18 is properly interpreted to be directed to a control system configured to use one or more control mode configurations selected as 26

32 follows: a system configuration with only a feather angle mode, only a turn control mode, only a streamer separation mode, or one with two or more of these modes. Ex (Evans) at 124. It does not require that the system be configured to operate in more than one of the recited modes. The court agreed: Claim 1 is the method claim that corresponds to the apparatus in claim 18; in examining these parallel claims, it seems clear that the drafters intended them to require the same thing, that is, that the control system could be configured to operate in at least one of the enumerated modes. Ex (Order) at 60-61; Ex (Jury Instructions) at 8. Thus, the broadest reasonable construction of Claim 18 only requires a configuration of a control system that is capable of operating in one or more of the recited control modes. * * * * These foregoing constructions will be applied in this Petition. 5 Any claim term not construed explicitly will be accorded its broadest reasonable interpretation in light of the specification as understood by those of ordinary skill in the art as of 5 Petitioners reserve the right to advance a different claim construction in a district court or another forum in accordance with the standards applied in such a forum. 27

33 October 1, Because the arguments presented below do not depend on adoption of the particular foregoing constructions, however, Claims 1, 2, 6, 18, 19 and 23 are invalid on the grounds presented herein under any broad reasonable interpretation. VIII. DETAILED EXPLANATION OF GROUNDS FOR ANTICIPATION AND/OR OBVIOUSNESS The following grounds for invalidity are presented as illustrated in the table below, followed by an in-depth explanation of each ground. Ground 35 U.S.C. Challenge 1 102(b) Claims 1 and 18 are anticipated by Workman (Ex. 1004) Claims 1, 2, 18, and 19 would have been obvious as of October 1, 1998 over Workman (b) Claims 1, 2, 18, and 19 are anticipated by Hedberg (Ex. 1005) Claims 1, 2, 18, and 19, would have been obvious as of October 1, 1998 over Hedberg Claims 1, 6, 18 and 23 would have been obvious over the 636 PCT (Ex. 1006) in view of the 153 PCT (Ex. 1007) Claims 1, 6, 18 and 23 would have been obvious over the 636 PCT in view of Dolengowski (Ex. 1008). A. GROUND 1: CLAIMS 18 AND 1 ARE ANTICIPATED BY THE WORKMAN PATENT As the declarations of Drs. Evans and Cole and the ensuing discussion confirm, Workman discloses every limitation of Claims 1 and 18. Claim 18 28

34 6. Limitation (a): An array of streamers each having a plurality of streamer positioning devices there along. Workman discloses that [d]uring a typical marine seismic survey a seismic vessel traverses programmed tracks towing arrays of seismic sources and seismic streamer cables. Ex at 1: Workman also discloses that streamer positioning devices 14, for example birds and tail buoys, may be attached to the exterior of the streamer cables 13 for adjusting the vertical and lateral positions of the streamer cables. Id. at 3: And Figure 1 of Workman illustrates a plurality of streamer positioning devices (labeled 14) on each of three streamers. 7. Limitation (b): A control system configured to use a control mode selected from a feather angle mode, a turn control mode, a streamer separation mode, and two or more of these modes Limitation (b) of the 520 Patent requires disclosure of a control system that is configured to use one or more of the feather angle, streamer separation, or turn control modes recited in the specification. See Section VII.G, supra. a. Control System 29

35 Generally, a control system receives inputs that it uses to form outputs. See Ex (Cole) at 32. Workman discloses a streamer control processor for deciding when the streamer cables should be repositioned and for calculating a position correction to steer streamer positioning devices on the streamers. Ex at 3: This processor performs repositioning calculations (outputs of desired position corrections) based on positioning inputs it receives relating to streamer positions. Id. at 4:8-21. It therefore qualifies as an interconnection of components forming a system configuration that will provide a desired system response, as control system is defined above. See Section VII.B., supra. b. One or More Modes Workman is configured to use a streamer separation mode and therefore meets the one or more modes requirement of Claim 18. Workman s control system operates in a mode in which it is pre-configured to apply threshold parameters that are constantly checked by its control system, one of which is a parameter for minimum allowable separations between cables. See Ex at 3: With this parameter, the streamer control processor of the control system continually checks whether the streamer cables are separated by a minimum distances. As Workman explains, the streamer control processor determine[s] if any of the real time signals exceed any threshold parameter received from the terminal.... [I]f any such threshold parameter is exceeded, a position correction is calculated that will 30

36 reposition the streamer cables back to within the threshold parameters. If no signal exceeds any threshold parameter, the streamer control processor is initialized and restarted.... Ex at 4: Thus, when signals exceed threshold parameters (i.e., where streamers move closer than the minimum allowable separations between cables ), Workman s system will calculate the position corrections necessary to attempt to maintain that minimum separation between the streamers. Workman s system thus operates in streamer separation mode, as it attempts to direct the streamer positioning devices to maintain a minimum separation distance between adjacent streamers. See Section VII.E., supra. This minimum separation distance parameter in this streamer separation mode may be entered into the streamer control processor of Workman s system before or contemporaneously with the acquisition of a marine seismic survey, see Ex (Workman) at 4:5-8. Thus, Workman s control system operates in the streamer separation mode claimed in the 520 Patent. See Ex (Evans) at 138. This should be the end of the matter. However, even if streamer separation mode were improperly construed to require that streamers set and maintain the separation distances between streamers, see supra Section VII.E., Workman would still satisfy this limitation. As noted above, the minimum allowable separation distance can be input into Workman s control system at any time during a survey. 31

37 Ex at 4:5-8. As Dr. Evans explains, a POSA would understand that there is a maximum separation distance between streamers that each vessel and streamer array configuration may attain. Ex at 139. This maximum separation distance would be known to the seismic crew based on resistances that cables face while being towed, which can cause certain streamers to slow down or speed up such that seismic data cannot be collected or cables could snap. See id. (Evans). Where a POSA used this maximum separation as the minimum allowable separation distance a strategy the 520 Patent acknowledges would make sense in severe weather conditions, Ex at 10:53-61 Workman s streamer separation mode sets and maintains the distances between streamers. Ex (Evans) at Thus, Workman s system is configured to use streamer separation even under the construction advanced by WesternGeco. Claim 1 Claim 1 is a method claim that contains essentially identical limitations to Claim 18. As Dr. Evans concludes, Workman anticipates Claim 1 for the same reasons that it anticipates Claim 18. See Ex at 141. B. GROUND 2: CLAIMS 1, 2, 18 & 19 ARE OBVIOUS OVER THE WORKMAN PATENT As explained above, Workman discloses all of the elements of limitation (a) of Claim 18. Workman also discloses limitation (b) of claim 18 because it may be configured into a streamer separation mode whereby it is programmed with a 32

38 threshold parameter of minimum allowable separation. Even if one were to accept WesternGeco s set and maintain construction, and reject Dr. Evans conclusion that Workman s system meets that narrower definition, it would have been obvious to a POSA to adapt Workman to implement a control mode that set and maintained distances between streamers. Ex (Evans) at 142. Moreover, although feather angle mode is not expressly disclosed by Workman, a POSA also would have had reason to implement a feather angle mode, given the teachings of Workman and common understandings in the art, with an expectation of success. Id. at 143. Therefore, Claims 1, 2, 18, and 23 of the 520 Patent are obvious in light of Workman s disclosures. 1. Streamer Separation Mode - Claims 1 and 18 There were several problems known in the art that would have motivated a POSA to set and maintain separations between streamers. For example, Workman states that the ability to control the position and shape of the streamer cables is desirable for preventing... entanglement of the streamer cables. Ex at 1: Workman also reflects a motivation to keep streamers separated at equally spaced intervals to optimize efficient seismic data collection: It [was]... desirable to have the ability to control the position and shape of the streamer cables during marine 3-D seismic surveys because the 3-D seismic binning process acquires subsurface seismic coverage by combining seismic data from different lines. The need 33

39 for this ability is taught by Franklyn K. Levin in Short Note: The effect of binning on data from a feathered streamer, Geophysics, Vol. 49, No. 8, pp Ex at 1: When surveys are planned, a theoretical grid comprised of bins is created within the survey area. The surveyor is tasked with collecting a minimum number of data points within each bin as a means of ensuring high quality data. Ex (Evans) at A POSA would have desired the ability to control the position and shape of the streamer cables for binning purposes by achieving the well-known goal (described above) to set and maintain streamers at straight, parallel, and equally spaced configurations, so that the streamers may collect optimal data along the planned survey paths. Id. at (explaining the desired straight and parallel configuration of seismic streamers for binning purposes). Indeed, the 520 Patent depicts this straight and parallel configuration as the basic prior art streamer configuration: Fig. 1 Prior Art For these reasons, and as Dr. Evans explains, maintaining streamers in a 34

40 straight and parallel configuration such that the streamer separations were set and maintained at predetermined distances would have been a predictable solution to a known problem in the art. Ex at 146. As such, a configuration of streamer separation mode that would set and maintain distances between the streamers would have been an obvious solution to obtain the known and desired straight, parallel, and regularly spaced streamer configuration. See KSR Int l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Additionally, given the disclosures of Workman and the technologies available to a POSA, which included a wide array of laterally steerable positioning devices, Ex (Evans) at 155, and complex control systems that could control these devices, Ex (Cole) 75-81, implementing this predictable solution would have been well within a POSA s technical grasp. Indeed, Workman s system already set a minimum threshold for streamer separation; adding a maximum threshold would have been trivial. Ex (Evans) at 148. Applying this well-known streamer positioning technology to achieve the ubiquitously desired streamer configuration would have been the product not of innovation but of ordinary skill and common sense. KSR, 550 U.S. at Feather Angle Mode - Claims 1, 2, 18, & 19 For the same reasons, Workman renders use of a feather angle mode obvious. Feather angle mode is defined as a control mode that attempts to keep 35