Case 4:09-cv-01827 Document 502 Filed in TXSD on 08/13/12 Page 1 of 6
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVISION
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`§§
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`§§§§§§
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`§
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`§ CIVIL ACTION NO. 4:09-cv-01827
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`§
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`Judge Keith P. Ellison
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`JURY TRIAL DEMANDED
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`WESTERNGECO L.L.C.,
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`Plaintiff,
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`V.
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`ION GEOPHYSICAL CORPORATION,
`FUGRO-GEOTEAM, INC., FUGRO-
`GEOTEAM AS, FUGRO NORWAY
`MARINE SERVICES AS, FUGRO, INC.,
`FUGRO (USA), INC. and FUGRO
`GEOSERVICES, INC.,
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`Defendants.
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`ION GEOPHYSICAL CORPORATION’S TRIAL BRIEF ON MARKING
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`As a matter of law, Plaintiff WesternGeco L.L.C.
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`(“WesternGeco”) cannot recover
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`damages for any alleged infringement occurring before the date of this lawsuit because
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`WesternGeco failed to bring forth any evidence that it complied with the marking statute under
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`35 U.S.C.§ 278(a). Thus, if WesternGeco is entitled to recover damages at all, it is strictly
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`limited to recovering damages for infringement occurring after June 12, 2009.
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`35 USC § 278(a): The Marking Statute
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`Under 35 U.S.C. § 278(a), patentees are required to give either actual or constructive
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`notice to the public of their patented article. 35 U.S.C. § 287(a). This requirement “serves three
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`related purposes: (1) helping to avoid innocent infringement; (2) encouraging patentees to give
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`notice to the public that the article is patented; and (3) aiding the public to identify whether an
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`article is patented.” Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1443 (1998) (internal
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`citations omitted).
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`2881590v1
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`1
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`PGS v WESTERNGECO (IPR2014-00689)
`WESTERNGECO Exhibit 2151, pg. 1
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`Case 4:09-cv-01827 Document 502 Filed in TXSD on 08/13/12 Page 2 of 6
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`Actual notice under section 287(a) “demands notice of the patentee’s identity as well as
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`notice of infringement.” U.S. Phillips Corp. v. Iwasaki Elec. Co. Ltd., 505 F.3d 1371, 1375 (Fed.
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`Cir. 2007) (citing Lands v. Digital Equip. Corp., 252 F.3d 1320, 1327-28 Fed. Cir. 2001)).
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`Moreover, it also requires “an affirmative act on the part of the patentee which informs the
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`defendant of infringement.” Id. Thus, if a party fails to present evidence that it took affirmative
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`steps prior to filing suit to provide the infringer with actual notice, a court must conclude that the
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`infringer “did not receive actual notice of infringement until the dates on which [the] suit with
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`respect to each patent was filed.” Tesco Corp. v. Weatherford Intern., Inc., 722 F. Supp. 2d 755,
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`770 (S.D. Tex. 2010) (Ellison, J.).
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`A patentee can satisfy the constructive notice requirement by either: (1) “fixing thereon
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`the word ‘patent’ or the abbreviation ‘pat.’, together with the number of the patent;” or (2)
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`“fixing thereon the word ‘patent’ or the abbreviation ‘pat.’ together with an address of a posting
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`on the Internet . . . that associates the patented article with the number of the patent.” 35 U.S.C.
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`§ 287(a). However, in the event this cannot be done due to the character of the article, the
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`patentee is required to “[fix] to [the patented article] or to the package wherein one or more of
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`them is contained, a label containing a like notice.” Id. “[T]he plain language of the statute
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`requires marking when a product is made, sold, offered for sale, or imported.” WiAV Solutions
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`LLC v. Motorola, Inc., 732 F. Supp. 2d 634, 641-43 (E.D. Va. 2010). In the present case, there is
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`clearly an article to be marked, i.e., the portions of the Q-Marine system falling under the patent
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`claims.
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`Where the patent contains both apparatus and method claims and there is “a physical
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`device produced by the claimed method that [is] capable of being marked,” then the patentee
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`must still comply with the marking requirements of Section 287(a). Am. Med. Sys., Inc. v. Med.
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`2881590v1
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`2
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`PGS v WESTERNGECO (IPR2014-00689)
`WESTERNGECO Exhibit 2151, pg. 2
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`Case 4:09-cv-01827 Document 502 Filed in TXSD on 08/13/12 Page 3 of 6
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`Eng’g Corp., 6 F.3d 1523, 1538-39 (Fed. Cir. 1993) (concluding the patentee “was required to
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`mark its product pursuant to section 287(a) in order to recover damages under its method claims
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`prior to actual or constructive notice being given to [the alleged infringer]”); see also Tesco
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`Corp., 722 F. Supp. 2d at 769 (finding that because the patentee had “asserted both product and
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`method claims in [the] suit, the marking requirements of Section 287 [were] applicable.”).
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`The patentee bears the burden of pleading and proving at trial by a preponderance of the
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`evidence that the patentee fully complied with the statute. Nike, Inc., 138 F.3d at 1446. To
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`overcome this burden,
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`the patentee may show by a preponderance of the evidence that
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`“substantially all of its [patented articles] being [made, sold, offered for sale, or imported] were
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`marked, and that once marking was begun,
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`the marking was substantially consistent and
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`continuous.” Id. The patentee may also show compliance by demonstrating that it has never
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`made, offered for sale, sold, or imported patented products within the United States. See WiAV
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`Solutions, 732 F. Supp. 2d at 642-43 (placing the burden on the patentee to demonstrate that its
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`patented products were not made, sold, or offered for sale in the United States); see also PACT
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`XPP Techs., AG v. Xilinx, Inc., No. 2:07-CV-563, 2012 WL 1029064, at *2-3 (E.D. Tex. Mar.
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`26, 2012) (holding that the patentee had the burden of proof at summary judgment and at trial
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`that “it never made, offered for sale, sold, or imported patented product within the United
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`States”); cf. DR Sys., Inc. v. Eastman Kodak Co., No. 08-CV-0669, 2009 WL 2632685, at *4
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`(S.D. Cal. Aug. 24, 2009) (holding that the patentee has the burden to prove the nonexistence of
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`patented articles made or sold in the United States).
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`When a patentee fails to meet this burden, the patentee is precluded from recovering
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`damages for any infringement that occurs prior to the date the alleged infringer was notified of
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`the infringement. See 35 U.S.C. § 287(a). For example, absent actual or constructive notice, a
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`2881590v1
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`3
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`PGS v WESTERNGECO (IPR2014-00689)
`WESTERNGECO Exhibit 2151, pg. 3
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`Case 4:09-cv-01827 Document 502 Filed in TXSD on 08/13/12 Page 4 of 6
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`patentee would be precluded from recovering damages for infringement that occurs prior to the
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`filing of the original complaint. Id. (“Filing of an action for infringement shall constitute such
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`notice.”).
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`WesternGeco Failed to Meet it Burden of Proof
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`To recover damages for any infringement occurring before WesternGeco filed suit,
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`WesternGeco had to prove one of the following: (1) ION received actual notice of infringement
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`from WesternGeco; (2) ION received constructive notice of infringement because WesternGeco
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`marked its patented system; or (3) WesternGeco complied with the marking statute because
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`WesternGeco did not make, offer to sell, or sell within the United States the patented article.
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`Here, no reasonable jury could find that WesternGeco made a sufficient showing of compliance.
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`First, WesternGeco failed to introduce any evidence that ION received actual notice of
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`infringement from WesternGeco before the lawsuit was filed. Second, there is no evidence that
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`WesternGeco ever marked its patented Q-Marine system. And third, WesternGeco failed to
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`demonstrate that it has never made its patented Q-Marine system in the United States.
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`A claimed system is “made” at the place the system is assembled for operable use, i.e. the
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`place where all of the claim elements are combined. Cf. Deepsouth Packing Co. v. Laitram
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`Corp., 406 U.S. 518, 529 (1972); Centillion Data Sys., LLC v. Quest Commc’n Int’l Inc., 631
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`F.3d 1279, 1288 (Fed. Cir. 2011).1 There is no evidence upon which a reasonable jury could
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`conclude that WesternGeco never assembled its Q-Marine system for a 3D survey in the United
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`States.
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`In fact, the testimony of Mark Zajac indicates that WesternGeco’s patented Q-Marine
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`system may have been assembled in the United States. See Tr. Tran. 952:15—953:13.
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`1 Contrary to WesternGeco’s arguments at the charge conference, ION has not changed its
`position concerning what it takes to “make” a patented system.
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`2881590v1
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`PGS v WESTERNGECO (IPR2014-00689)
`WESTERNGECO Exhibit 2151, pg. 4
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`Case 4:09-cv-01827 Document 502 Filed in TXSD on 08/13/12 Page 5 of 6
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`Because WesternGeco failed to meet its burden of proof of compliance with the notice
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`statute, WesternGeco cannot recover damages for infringement occurring prior to June 12,
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`2009—the date WesternGeco filed suit against ION. Consequently, the jury charge should
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`include an affirmative statement to this effect.
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`Dated: August 13, 2012
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`Respectfully submitted,
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`/s/ David L. Burgert
`David L. Burgert
`ATTORNEY IN CHARGE
`State Bar No. 03378300
`Federal I.D. No. 2084
`dburgert@porterhedges.com
`Ray T. Torgerson
`State Bar No. 24003067
`Federal I.D. No. 22846
`rtorgerson@porterhedges.com
`Jonathan M. Pierce
`State Bar No. 24027744
`Federal I.D. No. 23801
`jpierce@porterhedges.com
`PORTER HEDGES LLP
`1000 Main Street, 36th Floor
`Houston, Texas 77002-6336
`Telephone: (713) 226-6668
`Facsimile:
`(713) 226-6268
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`ATTORNEYS FOR DEFENDANT
`ION GEOPHYSICAL CORPORATION
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`2881590v1
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`5
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`PGS v WESTERNGECO (IPR2014-00689)
`WESTERNGECO Exhibit 2151, pg. 5
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`Case 4:09-cv-01827 Document 502 Filed in TXSD on 08/13/12 Page 6 of 6
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on the 13th of August, 2012, the foregoing was
`electronically filed with the Clerk of Court using the CM/ECF system which will send
`notification of such filing to the following:
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`Lee L. Kaplan, Esq.
`SMYSER KAPLAN & VESELKA, L.L.P.
`700 Louisiana, Suite 2300
`Houston, TX 77002
`Tel: 713-221-2323
`Fax: 713-221-2320
`E-mail: lkaplan@skv.com
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`Timothy K. Gilman, Esq.
`Simeon G. Papacostas, Esq.
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, NY 10022
`Tel: 212-446-4689
`Main: 212-446-4800
`Fax: 212-446-4900
`E-mail: tgilman@kirkland.com
`E-mail: spapacostas@kirkland.com
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`Gregg F. LoCascio, P.C.
`KIRKLAND & ELLIS LLP
`655 Fifteenth Street, N.W.
`Washington, D.C. 20005
`Tel: 202-879-5290
`Fax: 202-879-5200
`E-mail: glocascio@kirkland.com
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`ATTORNEYS FOR PLAINTIFF
`WESTERNGECO L.L.C.
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`Gordon T. Arnold, Esq.
`Anthony W. Hong, Esq.
`ARNOLD & KNOBLOCH LLP
`4900 Woodway, Suite 900
`Houston, TX 77056
`Telephone: 713-972-1649
`Facsimile: 713-972-1180
`Email: GArnold@arnold-iplaw.com
`Email: AHong@arnold-iplaw.com
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`John M. Elsley, Esq.
`Rachel de Cordova, Esq.
`ROYSTON, RAYZOR, VICKERY
`& WILLIAMS, L.L.P.
`711 Louisiana, Suite 500
`Houston, TX 77002
`Telephone: 713-224-8380
`Facsimile: 713-225-9945
`Email: John.Elsley@roystonlaw.com
`Email: rachel.decordova@roystonlaw.com
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`ATTORNEYS FOR DEFENDANTS,
`FUGRO-GEOTEAM, INC.,
`FUGRO-GEOTEAM AS, FUGRO
`NORWAY MARINE SERVICES AS,
`FUGRO, INC., FUGRO (USA), INC., and
`FUGRO GEOSERVICES, INC.
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`/s/ David L. Burgert
`David L Burgert
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`2881590v1
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`6
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`PGS v WESTERNGECO (IPR2014-00689)
`WESTERNGECO Exhibit 2151, pg. 6
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