Docket No. 2016-2470, -2472, -2474 (IPR2015-00309, -00310, -0311)
WALLACH, TARANTO, STOLL
June 7, 2018
Brief summary: PTAB decision of obviousness affirmed. PTAB decision to only review certain claims and grounds included in IPR Petition not to be error in view of SAS Inst. (US 2018) but the FC panel decided it “need not…sua sponte revive the ‘non-instituted’ claims and grounds”.
Summary: PGS appealed PTAB (Board) conclusion that certain claims of US 6,906,981 relating to “methods and systems for performing ‘marine seismic surveying’ to determine the structure of earth formations below the seabed” are invalid for anticipation or obviousness. During the IPRs, the PTAB “specified for review only some of the claims [petitioner] WesternGeco challenged and only some of the grounds”. WesternGeco chose not to participate in this appeal and the PTO intervened. The FC panel opinion first explained that, although the PTAB’s limited review was error in view of SAS Inst. (US 2018 (“[n]othing suggests the Director enjoys a license to depart from the petition and institute a different [IPR] of his own design”)), the FC had “jurisdiction to address the merits of the Board’s final written decisions and that [it] need not, and will not, sua sponte revive the ‘non-instituted’ claims and grounds” since, e.g., “[n]either PGS nor the Director asks for any SAS-based action” (and nor did WesternGeco). Each of the three PTAB FWDs included “substantially similar” reasoning. PGS only appealed the PTAB’s finding that certain claims were obvious over US 5,924,049 (Beasley) and US 4,953,657 (Edington). The FC panel first explained that it has jurisdiction since, e.g., “the combination of non-institution decisions and the [FWDs] on the instituted claims and grounds ‘terminated the IPR proceeding[s]’ that are now on appeal” ((28 USC § 1295(a)(4)(A); In re Arunachalam, FC 2016; Arthrex, FC 2018; APA 5 USC § 704 (“[t]he standard for ‘final agency action’…is met”)), stating that “[s]ome of what the Board did is now seen to be legally erroneous under SAS, but legal error does not mean lack of finality.” Regarding obviousness, the FC panel explained that “PGS does not here dispute that the combination of Beasley and Edington teaches all of the limitations of the challenged claims”, and the Board found “any contrary argument for all claims now on appeal except claims 36 and 37” to be waived. However, PGS argued “that the Board erred regarding the needed motivation to combine” the references “by not adequately addressing the problem of smearing” (resulting from pictures of sea floor being taken from slightly different locations when the pictures are “later summed together”). The FC panel concluded the Board’s findings of what Beasley and Edington teach were reasonable (In re Fulton, FC 2004 (what a reference teaches is a factual question)). The FC panel also concluded that “the Board did not fail to address the motivation question” by, e.g., “affirmatively focus[ing] on the ‘other types of encoding’ language of Beasley as an affirmative suggestion to look elsewhere, especially a time-delay reference, in view of Beasley’s contemplation of small time delays” (Bowman, US 1974 and In re NuVasive, FC 2016 (“we will uphold a decision of less than ideal clarity if the agency’s path may reasonably be discerned”); SIBIA, FC 2000 (“[t]he motivation to modify a referenc can come from the knowledge of those skilled in the art, from the prior art reference itself, or from the nature of the problem to be solved”)). The FC panel also found “no reversible error” with the Board’s conclusion that there was no teaching away since, e.g., “neither party offered evidence as to the degree of smearing that could be tolerated in the marine context” (Panduit, FC 1987). Thus, the Board’s FWDs were affirmed.