United States: Federal Circuit Affirms PTAB Decision Holding IPRs Were Not Time-Barred

The Federal Circuit recently upheld a decision by the Patent Trial and Appeal Board (PTAB) which found that inter partes review (IPR) proceedings challenging patents related to marine seismic survey systems were not time-barred.

Pursuant to Section 315(b), the PTAB may not institute an IPR proceeding when the petition "is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent." 35 U.S.C. § 315(b) (emphasis added). WesternGeco LLC and Petroleum Geo-Services, Inc. (PGS), along with ION Geophysical Corp. and ION International S.A.R.L. (collectively, "ION"), are part of the marine seismic survey industry. In 2009, WesternGeco filed a patent infringement suit against ION and later served PGS with a third-party subpoena seeking information concerning PGS's operation and usage of the competitor system. In August 2012, a jury determined that ION had infringed the asserted patents and had failed to prove invalidity.

Thereafter, WesternGeco sued PGS for patent infringement, and PGS responded by filing two rounds of IPR petitions with the PTAB. After the first round of IPRs was instituted, ION moved to join the proceedings. WesternGeco and PGS opposed. After considering the arguments in opposition, the PTAB granted ION's request to join the proceedings. However, ION's role in the proceedings was restricted to "spectator" status, meaning that ION "had no right 'to file papers, engage in discovery, or participate in any deposition or oral hearing.'" The PTAB ultimately issued final written decisions finding that the claims under review were anticipated by, or obvious over, the prior art, and rejecting WesternGeco's argument that the IPRs were time-barred under 35 U.S.C. § 315(b).

Based on a recent Federal Circuit decision in Wi-Fi One v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018) (en banc), time-bar decisions under Section 315(b) are judicially reviewable. Consequently, on appeal, WesternGeco argued that the PTAB never should have instituted the IPRs because the proceedings were time-barred. In WesternGeco's view, ION was a "privy" of PGS within the meaning of Section 315(b), and, therefore, no party timely filed the petitions. WesternGeco further argued that the scope of privity is broader than real party in interest and is not limited to "whether PGS controlled or had an opportunity to control ION's decisions in the ION patent infringement litigation, or whether ION controlled or had an opportunity to control PGS's decisions in the PGS-initiated IPRs." According to WesternGeco, the PTAB applied an unduly restrictive test that improperly focused solely on control when analyzing whether the statutory bar should apply.

The Federal Circuit agreed that the control consideration is "not the exclusive analytical pathway for analyzing privity," but is "one of a variety of considerations." The Federal Circuit, however, disagreed with WesternGeco's assertion that the PTAB focused on only the control consideration when analyzing privity in the context of 35 U.S.C § 315(b). The Federal Circuit recounted that WesternGeco had raised additional considerations to the PTAB, including a pre-existing business alliance and indemnity agreements between ION and PGS, and explained that the PTAB had considered those arguments, but found them unpersuasive.

The Federal Circuit held that "[s]ubstantial evidence supports the [PTAB's] finding that ION lacked the opportunity to control PGS's IPR petitions" and found no basis to "overturn the [PTAB's] determination that privity did not exist based on any other alleged considerations." The Federal Circuit clarified that "[a]s a general proposition, [it] agree[s] with the [PTAB] that a common desire among multiple parties to see a patent invalidated, without more, does not establish privity." Because there was substantial evidence to support the PTAB's finding that "ION's relationship with PGS is not sufficiently close such that the ION proceeding would have given PGS a full and fair opportunity to litigate the validity of the claims of the WesternGeco Patents," the Federal Circuit affirmed the PTAB's conclusion that the IPR proceedings were not time-barred under 35 U.S.C. § 315(b).

Finding that the statutory bar did not apply, the Federal Circuit proceeded to the merits and found substantial evidence to support the PTAB's unpatentability findings.

WesternGeco LLC v. ION Geophysical Corp. (In re WesternGeco LLC), Nos. 2016-2099, 2016-2100, 2016-2101, 2016-2332, 2016-2333, 2016-2334 (Fed. Cir. May 7, 2018)

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions