ConocoPhillips Company

Patent Trials and Appeals Board

Sep 3, 2020

IPR2019-00850 (P.T.A.B. Sep. 3, 2020)

Trials@uspto.gov Paper 56
571-272-7822 Date: September 3, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

IN-DEPTH GEOPHYSICAL, INC. AND
IN-DEPTH COMPRESSIVE SEISMIC, INC.,
Petitioner,

v.

CONOCOPHILLIPS COMPANY,
Patent Owner.
____________

IPR2019-00850
Patent 9,846,248 B2
____________

Before SCOTT A. DANIELS, JAMES A. TARTAL, and
SCOTT C. MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining Some Challenged Claims Unpatentable
35 U.S.C. § 318(a)
Denying Petitioner’s Motion to Exclude
Denying As Moot Patent Owner’s Motion to Exclude
37 C.F.R. § 42.64

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I. INTRODUCTION
Petitioner, In-Depth Geophysical, Inc. (“IDG”) and In-Depth
Compressive Seismic, Inc., (“IDC”), filed a Petition (Paper 1, “Pet.”)
requesting inter partes review of claims 1–17 of U.S. Patent No. 9,846,248
B2 (Ex. 1001, “’248 Patent”). We subsequently instituted an inter partes
review as to all asserted grounds and all challenged claims. Paper 14
(“Decision on Institution” or “D.I.”).
After institution, Patent Owner filed a Response to the Petition
(Paper 30, “Response” or “Resp.”), Petitioner filed a Reply (Paper 33,
“Reply”), and Patent Owner filed a Sur-Reply (Paper 44, “Sur-Reply”). In
addition, both parties filed Motions to Exclude (Papers 46, 47), as well as
corresponding Oppositions (Papers 48, 50) and Replies (Papers 52, 53).
An oral hearing was held on June 9, 2020, and a transcript of the
hearing is in the record. Paper 55 (“Hearing Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons that
follow, we determine that Petitioner has shown by a preponderance of the
evidence that challenged claims 1–9 are unpatentable, but has not shown by
a preponderance of the evidence that challenged claims 10–17 are
unpatentable. We also deny both parties’ Motions to Exclude.
A. Related Proceedings
The parties indicate that the ’248 Patent was asserted in
ConocoPhillips Company v. In-Depth Compressive Seismic, Inc. and In-
Depth Geophysical, Inc., Case No. 18-cv-00803 (S.D. Tex.). Pet. 8;
Paper 7, 1.
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Petitioner filed a concurrent petition seeking inter partes review of
U.S. Patent 9,632,193 B2, which is related to the ’248 Patent. Pet. 8–9;
Paper 7, 1. In that proceeding, we declined to institute an inter partes
review. See IPR2019-00849, Paper 14.
B. The ’248 Patent
The ’248 Patent is directed to a method of acquiring seismic data by
deploying seismic receivers, directing a seismic energy wavefield into the
ground, and recording reflected and/or refracted seismic data in the returning
wavefield. Ex. 1001, 1:41–46, 1:66–2:12. The invention uses non-uniform
or irregular spacing of the receivers in the lateral dimension to improve
sensing of the wavefield. Id. at 3:52–62.
In general, the ’248 Patent describes a survey area in which each
receiver is laterally spaced from one another in a deliberately non-uniform
manner. Id. at 1:66–2:4. The spacing between any two seismic receivers in
the deliberately non-uniform direction varies by a distance of at least five
percent between the largest spacing and the smallest spacing. Id. at 2:4–7.
The ’248 Patent describes various arrangements of seismic data
acquisition systems according to the claimed method. See id. at 2:56–3:22.
For example, Figure 2, reproduced below, is a schematic top view of a
portion of a seismic survey area showing an arrangement of lines of seismic
receivers. Ex. 1001, 2:59–61.
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Figure 2 shows receiver lines 25A–H, arranged to be spaced from one
another by an uncommon or irregular spacing 29ab–gh. Id. at 7:1–16, Fig. 2.
“Along each receiver line are a number of generally evenly spaced seismic
receivers 27” indicated by “x’s.” Id. at 3:41–43, 7:3–5. Figure 2 also
depicts seismic sources maintained in common regular spacing indicated as
small circles or shot points 28, 58, 68. Id. at 3:43–45, 8:22–25.
Figure 5, reproduced below, is a schematic top view of a portion of a
seismic survey area showing another arrangement of lines of seismic
receivers. Ex. 1001, 3:1–3.
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Figure 5 “has the same non-uniform receiver line spacing as system 20 in
FIG. 2, but the spacing of the receivers along the receiver line is not only
non-uniform, but not the same from receiver line to receiver line. In other
words, the receivers do not line up in straight columns.” Id. at 8:15–20.
Figure 6, reproduced below, is a schematic top view of a portion of a
seismic survey area showing an alternative arrangement of lines of seismic
receivers. Ex. 1001, 3:4–7.
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In Figure 6, system 60 does not include alignment of receivers in any
direction; rather, the arrangement of receivers is two dimensionally non-
uniform. Id. at 8:21–22.
C. Challenged Claims
Of the challenged claims, claims 1, 10, and 14 are independent, and
the remaining dependent claims all depend from one of claims 1, 10, or 14.
Claim 1, reproduced below, is illustrative of the claimed subject matter.
1. A method of acquiring seismic data
comprising the steps of:
a. deploying receivers in a survey area wherein
each receiver is laterally spaced from one another in
two horizontal directions wherein the lateral
spacing in at least one horizontal direction is
deliberately non-uniform, wherein the receivers are
not aligned in at least one of the two horizontal
directions and wherein the spacing between any two
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seismic receivers in the deliberately non-uniform
direction varies by a distance of at least five percent
between the largest spacing and smallest spacing;
b. identifying seismic source points within the
survey area;
c. directing seismic energy into the ground at the
source points and recording reflected and/or
refracted seismic data with the deployed seismic
receivers;
d. recovering the measured data from the
deployed seismic receivers; and
e. reconstructing the wavefield from the
recovered data.
D. Asserted Grounds of Unpatentability
Petitioner asserts the following grounds of unpatentability based on
35 U.S.C. §§ 102 and 103.1
Ground Claim(s)
Challenged
35 U.S.C. § Reference(s)/Basis
1 1–9 102 Zwartjes2
2 1–17 103 Clay,3 Pavel,4 and
Zwartjes

1 Because the ’248 Patent has an effective filing date prior to March 16,
2013, the effective date of applicable amendments to the Leahy-Smith
America Invents Act (“AIA”), 125 Stat. 284 (2011), we refer to the pre-AIA
versions of §§ 102 and 103.
2 P. M. Zwartjes and M. D. Sacchi, Fourier reconstruction of nonuniformly
sampled, aliased seismic data, 72 Geophysics V21-V32 (2007) (Ex. 1005).
3 U.S. Patent No. 2,906,363 (issued Sept. 29, 1959) (Ex. 1006).
4 U.S. Patent Application Publication No. 2009/0279384 A1 (published
Nov. 12, 2009) (Ex. 1007).
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Ground Claim(s)
Challenged
35 U.S.C. § Reference(s)/Basis
3 1–17 103 Cordsen5 and Zwartjes
Petitioner also relies on the Declaration of Dr. Ozgur Yilmaz
(Ex. 1015, “Yilmaz Declaration”), the Supplemented Declaration of
Dr. Yilmaz (Ex. 1023, “Yilmaz Supplemental Declaration”), and the
Rebuttal Declaration of Dr. Yilmaz (Paper 1033, “Yilmaz Rebuttal
Declaration”).
Patent Owner relies on the Declaration of Dr. Fred Aminzadeh
(Paper 2008, “Aminzadeh Declaration”).
The Yilmaz Supplemental Declaration was the subject of a Motion to
Submit Supplemental Information. Paper 21. We granted the Motion in
part, but denied Petitioner’s Motion as to paragraphs 65, 67, and 74 of the
Yilmaz Supplemental Declaration for reasons explained below. See Paper
27; infra § II.E.3. Accordingly, paragraphs 65, 67, and 74 of the Yilmaz
Supplemental Declaration are not of record in this proceeding, and Petitioner
may not rely on these three paragraphs. Id. at 9.
II. ANALYSIS
A. Level of Ordinary Skill in the Art
Petitioner asserts that a person of ordinary skill in the art to which
the ’248 Patent pertains would have had “a degree in Earth Sciences,
Geophysics, Applied Mathematics, Computer Science, or a similar

5 Andreas Cordsen, Mike Galbraith, and John Peirce, Planning Land 3-D
Seismic Surveys, Society of Exploration Geophysicists (1st ed. 2000)
(Ex. 1008).
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discipline, and accrued at least three years of experience with designing
seismic data surveys.” Pet. 18. Petitioner asserts that “[s]uch person would
be familiar with basic principles of compressive sensing including those that
can be leveraged to improve the design of seismic surveys.” Id.
Patent Owner does not challenge Petitioner’s definition of the level of
ordinary skill in the art. Resp. 15.
On this record, we adopt Petitioner’s formulation regarding the level
of ordinary skill in the art. We also find on this record that Petitioner’s
formulation is consistent with the level of skill reflected by the cited prior art
references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
B. Claim Construction
In an inter partes review for a petition filed on or after November 13,
2018, a claim “shall be construed using the same claim construction standard
that would be used to construe the claim in a civil action under 35 U.S.C.
282(b).” See Changes to the Claim Construction Standard for Interpreting
Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83
Fed. Reg. 51,340, 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R.
§ 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R.
§ 42.100(b) (2019)). In applying this claim construction standard, we are
guided by the principle that the words of a claim “are generally given their
ordinary and customary meaning,” as understood by a person of ordinary
skill in the art in question at the time of the invention. Phillips v. AWH
Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (citation omitted).
“In determining the meaning of the disputed claim limitation, we look
principally to the intrinsic evidence of record, examining the claim language
itself, the written description, and the prosecution history, if in evidence.”
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DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). There is a “heavy
presumption,” however, that a claim term carries its ordinary and customary
meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.
Cir. 2002) (citation omitted).
In the Petition, Petitioner proposed that we construe the following
terms (Pet. 19–27):
“two horizontal directions,”
“deliberately non-uniform,” and
“wherein the receivers are not aligned in at least one of the two
horizontal directions.”
We declined to construe any of these terms in our Institution Decision,
having found that it was unnecessary to do so. See D.I. 16.
Patent Owner asserts in its Response that “no express constructions
are necessary to resolve this IPR.” Resp. 12. Petitioner’s Reply does not
request that we construe these terms or assert that any of the issues in
dispute turns on the meaning of these terms. See generally Reply. On this
record, we determine that it is unnecessary to adopt explicit constructions of
any of these three claim terms in order to resolve the issues in dispute. See
Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
1999) (only terms that are in controversy need to be construed, and then only
to the extent necessary to resolve the controversy); Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
(applying Vivid Techs. in the context of an inter partes review).
Though the parties did not ask us to explicitly construe the claim term
“a survey area,” it appears that a dispute exists regarding the meaning of this
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claim term. Petitioner contends that “a survey area” means “an area of the
survey,” which may be less than “the entire survey area.” Reply 23. In
support of this contention, Petitioner asserts that Patent Owner admitted in
district court that “a survey area” can be a subset of the entire survey area.
Reply 23–25 (citing Ex. 1032, 43, 48–58, 63–67).
Patent Owner, in contrast, contends that the claim term “a survey
area” is the entire area where the source points and receivers are located.
See PO Resp. 34–35 (arguing that Petitioner erred by not measuring
distances between seismic receivers of Zwartjes located near the edge of
Figure 7); Sur-Reply 5 (reiterating that the claim term “a survey area” refers
to the entire seismic survey area, and not a portion thereof). In support,
Patent Owner cites testimony in which Dr. Yilmaz admitted that Zwartjes
Figure 1 depicts a portion of a seismic survey area. Sur-Reply 5 (citing
Ex. 2017, 59:15–20).
We agree with Petitioner that the claim limitation “a survey area” can
encompass less than the entire survey area. We are persuaded by
Dr. Yilmaz’s testimony that one of ordinary skill in the art would have
understood this claim limitation to mean “an area of the survey that could be
less than the entire survey area.” Ex. 1033 ¶¶ 28–30. We have reviewed the
Specification of the ’248 Patent, and Dr. Yilmaz’s opinion is consistent with
the plain and ordinary meaning of the claim as used throughout the
Specification. Patent Owner does not cite any testimony that disputes
Dr. Yilmaz’s opinions regarding how one of ordinary skill in the art would
have understood this term. Patent Owner also does not identify any
lexicographic definition or disclaimer that would justify limiting the
construction of “a survey area” in the manner it proposes. In addition, the
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testimony of Dr. Yilmaz that Patent Owner cites in its Sur-Reply does not
undermine Petitioner’s position. Dr. Yilmaz merely testified that Zwartjes
Figure 1 depicts “a portion of a seismic survey area” that “is less than the
entire seismic survey area.” Ex. 2017, 59:15–20. Dr. Yilmaz did not state
or imply that the claim term “a survey area,” as used in the ’248 Patent, can
only mean “the entire seismic survey area,” and cannot refer to a subset
thereof. See id.
We decline to further construe any claim terms. See Vivid Techs., 200
F.3d at 803; Nidec, 868 F.3d at 1017.
C. Overview of the Asserted Prior Art
1. Zwartjes (Ex. 1005)
Zwartjes discloses an algorithm for reconstruction of non-aliased,
non-uniform seismic data. Ex. 1005, V21. Zwartjes states that, “[o]f the
numerous methods for interpolating aliased seismic data, very few can
handle nonuniform sampling.” Id. at V22. Zwartjes describes combining
“the principles of Fourier reconstruction of nonaliased, nonuniformly
sampled data, which can handle nonuniform sampling, with the ideas of
Gulunay’s f-k interpolation of aliased uniformly sampled data in a new two-
stage algorithm.” Id.
Zwartjes indicates that, “[s]tarting from uniform sampling with or
without missing positions, the sampling locations can be perturbed more and
more to yield increasingly nonuniform sampling patterns. As sampling of
seismic data becomes more nonuniform, the aliasing becomes more and
more diffuse until it disappears altogether for random sampling.” Id. at V23.
Zwartjes discloses applying the algorithm to “three 2D sampling
geometries, one of which is completely uniform and two that are uniform
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with a random deviation in the coordinates of maximum 25% and 50% of
the sampling interval.” Id. at V29. Zwartjes Figure 9(c), below, is a
sampling geometry with two spatial directions measured in meters.
Ex. 1005, V29.

Figure 9(c) depicts a sampling geometry with 196 traces and a sampling
interval of 3 meters in both the X and Y directions, in which the coordinates
of the traces randomly deviate in the x and y directions a maximum of 50%
of the sampling interval. Id.
2. Clay (Ex. 1006)
Clay discloses improvements in the area of seismic prospecting,
“having application to the use of a pattern of geophones or of shot holes that
will furnish a broad band of reduction or rejection of horizontally traveling
seismic interferences.” Ex. 1006, 1:15–22. Clay describes an “arrangement
of geophones . . . so spaced that the response of the array to horizontally
traveling transients will be substantially less than that obtained with a
conventional array of evenly spaced geophones, thus still further improving
the ratio of essentially vertically traveling reflection energy to essentially
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horizontally traveling interfering energy.” Id. at 1:63–69. Clay discloses
“geophones 21 . . . placed upon or embedded in the surface of the ground 20
with the separate geophone groups 22, 23, and 24 each positioned at a
desired detection station along the profile being prospected.” Id. at 2:57–61.
Clay Figure 13, below, is a schematic plan view of a rectangular array
of transducers. Ex. 1006, 2:44–45.

Figure 13 “shows a rectangular areal pattern of geophones in which
geophones 1 through 8 . . . [,] 1a through 8a, 1b through 8b, and 1c through
8c,” are arranged in four rows. Id. at 4:62–67; Fig. 13. The geophones
within each row are spaced from each other in a non-uniform manner, and
the spacing between the rows also is non-uniform. See id.
3. Pavel (Ex. 1007)
Pavel discloses a node-based seismic data acquisition system 100
including a plurality of station units 108 including receivers 62 coupled to
the earth for sensing reflected seismic energy waves produced by a seismic
signal generator 106. Ex. 1007 ¶ 25. Pavel’s system includes “wireless
sensor stations 108 that form an array (spread) 110 for seismic data
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acquisition. The array may utilize asymmetric distribution or an asymmetric
grid distribution.” Id. at ¶ 26.
Pavel teaches “[a]symmetric distributions, which may in one sense be
characterized as a non-uniform spacing between at least some of the nodes
or stations 108, may be advantageous when the in-field environment has
obstacles (e.g., rivers or dense foliage) and/or when it may be desirable to
acquire a relatively large amount of information from a defined area.” Id.
Pavel Figure 4, below, is a schematic illustration of a node-based seismic
data acquisition system. Ex. 1007 ¶ 13.

Figure 4 depicts array 110, with seismic signal generator 106, and station
units 108. Id. at ¶ 25. The depicted station units 108 are spaced in a non-
uniform manner. See Fig. 8.
4. Cordsen (Ex. 1008)
Cordsen discloses that “[n]umerous layout strategies have been
developed for 3-D [seismic] surveys. One has to establish which features
are important in the area of the survey in order to select the best design
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option.” Ex. 1008, 77. Cordsen indicates that “[t]he trend in 3-D designs
has been to irregularize the offset and azimuth distribution, but still keep
field operations feasible (i.e., straight lines, short driving distances, etc.).
Sometimes this irregularity has been accomplished with rather arbitrary
offsets and skids.” Id. at 96. Cordsen discloses “[t]he main advantages of a
true randomization of sources and receivers are improvements in the offset
and azimuth distribution.” Id.
Cordsen Figure 5.18b, below, describes one possible layout of sources
and receivers.

Figure 5.18b illustrates receivers that are indicated by blue dots and source
stations by red squares. See Ex. 1008, 14. A randomization function was
used to determine the location of the source and receiver stations. Id. at 99.
According to Cordsen, “a quasi-random grid of sources shot into a quasi-
random grid of receivers leads to a reduction of migration aliasing artifacts
in the final image. Such field implementation could significantly reduce
acquisition costs.” Id.
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D. Ground 1: Alleged Anticipation of Claims 1–9 by Zwartjes
1. Principles of Law
Petitioner contends in Ground 1 that challenged claims 1–9 are
unpatentable as anticipated under 35 U.S.C. § 102. Pet. 10. To anticipate a
patent claim under 35 U.S.C. § 102, a single prior art reference must
“describe every element of the claimed invention, either expressly or
inherently,” to one of ordinary skill in the art. Advanced Display Sys., Inc. v.
Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). “[A] reference can
anticipate a claim even if it does not expressly spell out all the limitations
arranged or combined as in the claim, if a person of skill in the art, reading
the reference, would at once envisage the claimed arrangement or
combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d
1376, 1381 (Fed. Cir. 2015) (internal quotations omitted).
2. Analysis of Ground 1
Petitioner asserts that Zwartjes expressly or inherently discloses all
the limitations of claims 1–9. Pet. 28. In particular, Petitioner contends that
the sampling of seismic data described in Zwartjes is “a method of acquiring
seismic data” as recited in the preamble of claim 1. Pet. 28 (citing Ex. 1005,
V23). Petitioner contends that the discussions and examples in Zwartjes of
perturbing sampling locations to yield “increasingly nonuniform sampling
patterns” discloses deploying receivers that are laterally spaced in the
deliberately non-uniform manner recited by claim 1, step a. Pet. 29 (citing
Ex. 1005, V23, V29, V31, Fig. 9c; Ex. 1015 ¶ 59). Regarding the remainder
of this step, Petitioner contends that the same portions of Zwartjes disclose
receivers that are not aligned in at least one horizontal direction, wherein the
largest and smallest spacing in the deliberately non-uniform direction varies
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by at least five percent. See Pet. 30–32 (citing Ex. 1005, V29, Fig. 9c;
Ex. 1015 ¶ 59; Ex. 1016).
Petitioner contends that Zwartjes also inherently discloses
“identifying seismic source points within the survey area” as recited in
claim 1, step b. See Reply 6–7. In particular, Dr. Yilmaz testifies that the
data reflected in Figures 9(d), (e), and (f), which corresponds to the sampling
locations depicted in Figures 9(a), (b), and (c), could not have been
generated by a single seismic source. Ex. 1023, 24–25.6
Regarding claim 1, steps c, d, and e, Petitioner contends that directing
seismic energy into the ground at the source points, recording the reflected
or refracted seismic energy with deployed receivers, recovering data
measured by the deployed receivers, and reconstructing a wavefield from the
reconstructed data, would have been necessary to conduct a seismic survey
and generate results using the reconstruction methods discussed in Zwartjes.
Pet. 32–36 (citing Ex. 1005, V23, V29; V31, Fig. 9c; Ex. 1015 ¶ 59).
Petitioner further contends that the receivers depicted in Figure 9(c) of
Zwartjes are spaced in a manner that satisfies the additional limitations
recited in dependent claims 2–9. Pet. 36–39 (citing Ex. 1005, Fig. 9c;
Ex. 1015 ¶ 59; Ex. 1016).
Patent Owner argues in response that Zwartjes does not disclose either
an actual seismic survey of the type allegedly required by claim 1, or
multiple “source points” as recited in that claim. PO Resp. 33–48. Patent
Owner also argues that Petitioner relies on two separate embodiments from
Zwartjes in a manner that is impermissible in an anticipation argument. Id.

6 In some instances (e.g., when the contents of a numbered paragraph span
multiple pages), we have cited to page numbers of Dr. Yilmaz’s declaration.
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at 48–53. Patent Owner further argues that Petitioner has failed to show that
Zwartjes discloses deployed receivers spaced in the manner required by
dependent claims 3–9. Id. at 53–55.
We find on this record that Petitioner has demonstrated persuasively
that Zwartjes discloses each undisputed limitation of claims 1–9, and we
adopt Petitioner’s contentions regarding these limitations as our own
findings. See Pet. 27–39; Ex. 1015 ¶¶ 56–60. We now turn to the disputed
limitations. See Paper 15 (“[A]ny arguments for patentability not raised in
the response may be deemed waived.”).
Patent Owner’s first argument—that Zwartjes discloses a “synthetic
survey,” and not an “actual seismic survey” of the type required by claim 1–
is not persuasive. See Resp. 33–36. In this regard, Patent Owner offers
testimony from Dr. Aminzadeh that Figure 9 of Zwartjes depicts synthetic
data, and not real-world data of the type Patent Owner contends is required
by claim 1. See Ex. 2008 ¶¶ 28–33.
As discussed above, Zwartjes discloses an algorithm for
reconstruction of non-aliased, non-uniform seismic data. Ex. 1005, V21.
The mathematical models of Zwartjes are intended for use in reconstructing
seismic survey results in real-world surveys. See, e.g., Ex. 1015 ¶ 58
(“Zwartjes is directed to the field of seismic data acquisition and
reconstruction.”).
The particular seismic survey described on page V29 of Zwartjes and
depicted in Figure 9(c) was modeled on a computer, rather than performed in
the real world. See Ex. 1005, V29. But though Zwartjes uses a
mathematical model to simulate the results of a particular geologic survey,
the evidence persuasively demonstrates that one of ordinary skill in the art
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would have understood Zwartjes to disclose parameters and mathematical
reconstruction techniques for an actual seismic survey. See, e.g., Ex. 1015
¶ 56 (“Zwartjes is directed to the field of seismic data acquisition and
reconstruction.”); see also Bristol-Myers Squibb Co. v. Ben Venue Labs.,
Inc., 246 F.3d 1368, 1379 (Fed. Cir. 2001) (explaining that “anticipation
does not require actual performance of suggestions in a disclosure,” instead
“anticipation only requires that those suggestions be enabling to one of skill
in the art”). Indeed, Zwartjes was published in a geophysics journal, not a
mathematics journal. See id. at V21. Zwartjes also states that one set of
synthetic survey data “simulat[es] the situation in some parts of the North
Sea.” See id. at V29. Further, Dr. Aminzadeh admitted during his
deposition that synthetic data is intended to “simulate some sort of real life
situation,” and “is usually [a gross] approximation of the real life.”
Ex. 1034, 70:4–20; see also Ex. 1036, 3 (errata sheet correcting testimony at
Ex. 1034, 70:13).
We find on this record that one of ordinary skill in the art would have
understood page V29 and Figure 9(c) of Zwartjes to both expressly and
inherently disclose survey parameters and reconstruction techniques that
apply to real-world seismic surveys.
We also are not persuaded by Patent Owner’s argument that Zwartjes
fails to inherently disclose multiple seismic source points. Dr. Yilmaz
explains in his Supplemental Declaration that the laws of mathematics
dictate that multiple seismic source points were necessary to generate the
data illustrated in Figures 9(d), 9(e), and 9(f) of Zwartjes. Ex. 1023, 24–25.
Dr. Yilmaz’s deposition testimony further explains that Figures 9(d), 9(e),
and 9(f) of Zwartjes each depict planar events, and that it would be
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impossible to create such planar events with a single seismic source point
because a single seismic source point would create a spherical wave, not a
planar wave. Ex. 2009, 68:12–69:12.
Patent Owner argues in its Response that Clay, Pavel, and Cordsen
disclose that it is possible to perform a seismic survey using a single seismic
source point. Resp. 37–42. Patent Owner also points out that certain
portions of Zwartjes disclose that a seismic survey may be performed with a
single seismic source point. Id. at 39–40 (citing Ex. 2009, 84:16–17, 86:9–
10 (testimony from Dr. Yilmaz that Figures 4, 5, and 6(a) of Zwartjes could
be produced with a single shot)). These arguments are not persuasive
because they do not address the substance of Petitioner’s contentions.
Petitioner has never argued that it is not possible to conduct a seismic survey
with a single seismic source point, or that all embodiments disclosed in
Zwartjes use multiple source points. Petitioner and Dr. Yilmaz merely
contend that the specific survey described and depicted on page V29 and in
Figure 9(c) of Zwartjes—could not have been conducted with a single
seismic source point, which Patent Owner has not persuasively refuted.
Patent Owner additionally argues that we should discount
Dr. Yilmaz’s testimony because Dr. Aminzadeh was able to create a single-
source synthetic survey that produced results “remarkably similar to the
synthetic results in the Figure 9 series of Zwartjes.” Resp. 46–47 (citing
Ex. 2008 ¶¶ 45–53). But unlike the synthetic results depicted in Figure 9 of
Zwartjes, Dr. Aminzadeh’s single-source survey generated curved waves.
See Ex. 2008 ¶ 50. In other words, Dr. Aminzadeh’s results appear
consistent with Dr. Yilmaz’s opinion that a single-source seismic survey
would generate spherical (i.e., curved) waves, rather than the planar waves
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in Figure 9. See Ex. 2009, 68:12–69:12. Dr. Aminzadeh’s results do not
appear “remarkably similar” to those depicted in Figure 9 of Zwartjes.
On this record, and having reviewed the arguments, declarations, and
deposition transcripts of Dr. Yilmaz and Dr. Aminzadeh, we are persuaded
that Figure 9(c) of Zwartjes depicts results of a seismic survey that
necessarily employed two or more seismic source points. Accordingly, we
find on this record that Zwartjes inherently would have disclosed two or
more “seismic source points” to one of ordinary skill in the art.
Patent Owner additionally argues that Petitioner is relying on
Figure 11 of Zwartjes as teaching multiple source points, even though Figure
11 depicts an embodiment different than the one described and depicted on
page V29 and in Figure 9(c). Resp. 48–53. According to Patent Owner, this
reliance on two separate embodiments is improper in an anticipation
argument. Id. This argument is not persuasive because we have found that
the embodiment described and depicted at page V29 and Figure 9(c) of
Zwartjes inherently discloses multiple source points. Accordingly, we need
not reach Petitioner’s alternative argument that the embodiment depicted in
Figure 11 also discloses multiple seismic source points.
Patent Owner also raises an additional argument in its Sur-Reply
regarding claim 1—that Petitioner has not shown that the source points of
Zwartjes are “within the survey area.” Sur-Reply 2. Petitioner asserts in the
Petition that a person of ordinary skill in the art “would have understood
from the description of Zwartjes above and FIG. 9c that source points were
necessarily present in the survey area in order to acquire the non-uniformly
sampled seismic data.” Pet. 33 (citing Ex. 1015 ¶ 59). Petitioner further
argued at the oral hearing that it was improper for Patent Owner to raise this
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new argument in its Sur-Reply. Hearing Tr. 11:7–21. We agree with
Petitioner.
Our Scheduling Order and Practice Guide each make clear that Patent
Owner must set forth all substantive arguments for patentability in the
Response, and may not raise new arguments in the Sur-Reply. See Paper 15,
7 (“Patent Owner is cautioned that any arguments for patentability not raised
in the response may be deemed waived.”); Patent Trial and Appeal Board
Consolidated Trial Practice Guide (Nov. 2019) (“Consolidated TPG”),7 74
(“[A] reply or sur-reply may only respond to arguments raised in the
preceding brief. . . . ‘Respond’ . . . does not mean proceed in a new direction
with a new approach as compared to positions taken in a prior filing. . . . [A]
reply or sur-reply that raises a new issue or belatedly presents evidence may
not be considered.”)
Patent Owner argued at the oral hearing that this argument was not
new because it was disclosed “at Patent Owner’s Response at page number
seven,” where Patent Owner “highlight[ed] the words within the survey
area.” Hearing Tr. 42:13–18. But the portion of page 7 of the Response
cited by Patent Owner is part of Patent Owner’s argument that the synthetic
survey of Zwartjes does not satisfy “the real-world, physical aspects of claim
1” that supposedly require an actual seismic survey. See Resp., 6–7.
Specifically, Patent Owner argues that synthetic surveys, like the ones
described in Zwartjes, do not include the claim limitations “identifying
seismic source points within the survey area” or “directing seismic energy
into the ground at the source points” because they are performed on a

7 The Consolidated TPG is available at
https://www.uspto.gov/TrialPracticeGuideConsolidated.
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computer, and not by actually directing seismic energy into the ground
within a survey area. See id.
Though Patent Owner highlighted the claim language “within the
survey area” as part of its argument that this language required an actual,
physical survey, Patent Owner did not argue in the Response that the
synthetic source points of Zwartjes were not located within the
corresponding survey area. Accordingly, Patent Owner waived this
argument, and may not raise it in the Sur-Reply.
Moreover, on this record, and in view of Patent Owner’s failure to
argue otherwise in the Response, we find that Petitioner has demonstrated
that Zwartjes inherently discloses identifying multiple seismic source points
“within the survey area,” as recited in claim 1. See Pet. 32–33; Ex. 1015,
23–24; Ex. 1023, 24–25; Paper 15, 7; Consolidated TPG, 74.
Turning now to the dependent claims, Patent Owner argues that the
evidence cited by Petitioner fails to demonstrate that Zwartjes discloses
receivers spaced in the manner recited in claims 3–9. Resp. 53–55. In
particular, Patent Owner argues that claims 3–9 specify certain spacing
distances “between all of the deployed receivers in the survey area . . ., not
some undefined subset thereof.” Id. at 54. Patent Owner contends that
Petitioner’s measurements do “not reflect measurements of spacing
distances between all deployed receivers (or sources) in relevant survey
areas for all of the references.” Id.
This argument is not persuasive because it depends on Patent Owner’s
argument that the claim term “a survey area” can only refer to the entire
seismic survey area. See Resp. 53–55. For the reasons discussed above, we
reject this claim construction argument, and hold that the claim limitation “a
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survey area” can refer to less than the entire survey area. See supra § II.B.
Accordingly, the 12x12 grid of seismic receivers measured by Petitioner
constitutes “a survey area,” notwithstanding the fact that Zwartjes describes
a 14x14 grid of seismic receivers. See Reply 26 (citing Ex. 1033 ¶ 32;
Ex. 1016, 5–8).
We also find that Zwartjes discloses the receivers spaced in the
manner required by claims 3–9 even if the recited “a survey area” is
construed to encompass the entire 14x14 grid of seismic receivers described
in Zwartjes. In his Rebuttal Declaration, Dr. Yilmaz measured all of the
additional receivers depicted in Figure 9(c), and determined that over 80%
of the total number of receivers that could be measured were spaced more
than 30% further apart in the non-uniform direction than the smallest
spacing between receivers in the non-uniform direction. Ex. 1033 ¶ 33.
Dr. Yilmaz further calculated that at least 70% of all of the receivers
(including those depicted and those not depicted in Figure 9(c)) necessarily
would have been spaced more than 30% apart. Id. We credit Dr. Yilmaz’s
testimony because his calculations appear to be correct and consistent with
the receiver spacing depicted in Figure 9(c) of Zwartjes.
Patent Owner further argues that Petitioner’s measurements are
inaccurate because Petitioner did not take into account the differing scales
on the X and Y axes of Zwartjes. Resp. 55. However, the measured
distances are nearly perpendicular to the axes of Figure 9(c), so any
distortion would be minimal. Ex. 1033 ¶ 34. Petitioner also offers rebuttal
testimony from Dr. Yilmaz that any measurement error would be
insignificant and would not impact his opinion that the deployed receivers of
Zwartjes are spaced in a manner that would necessarily satisfy claims 3–9.
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See Reply 28–29 (citing Ex. 1033 ¶¶ 34–37). We have reviewed Dr.
Yilmaz’s calculations and find his methodology and results to be persuasive
and consistent with Figure 9(c). Accordingly, we determine on this record
that Petitioner has shown that Zwartjes discloses deployed receivers that are
spaced in the manner required by dependent claims 3–9.
For the reasons discussed above, and having considered all of the
evidence and arguments submitted by the parties, we find that Zwartjes
expressly or inherently discloses all of the disputed and undisputed
limitations of independent claim 1 and dependent claims 2–9. Accordingly,
Petitioner has shown by a preponderance of the evidence that claims 1–9 of
the ’248 Patent are anticipated by Zwartjes.
E. Grounds 2 and 3: Alleged Obviousness of Claims 1–17 over
Clay, Pavel, and Zwartjes; Alleged Obviousness of Claims 1–
17 over Cordsen and Zwartjes
1. Principles of Law
Petitioner argues in Grounds 2 and 3 that challenged claims 1–17 are
unpatentable as obvious under 35 U.S.C. § 103. Pet. 10. An invention is not
patentable under 35 U.S.C. § 103 “if the differences between the subject
matter sought to be patented and the prior art are such that the subject matter
as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.”
The question of obviousness is resolved on the basis of underlying factual
determinations including: (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
of skill in the art; and, (4) where in evidence, so-called secondary
considerations, including commercial success, long-felt but unsolved needs,
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and failure of others. Graham v. John Deere Co., 383 U.S. 1, 17−18 (1966).
Our Rules specify that a petition for inter partes review must “specify
where each element of the claim is found in the prior art patents or printed
publications relied upon.” 37 C.F.R. § 42.104(b)(4) (2018). When
evaluating a combination of teachings, we also must “determine whether
there was an apparent reason to combine the known elements in the fashion
claimed by the patent at issue.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (citing In re Kahn, 441, F.3d 977, 988 (Fed. Cir. 2006)). In
order to pass muster, the reason to combine must demonstrate that one of
ordinary skill would have had reason to combine the relevant teachings in
the specific manner claimed. See KSR, 550 U.S. at 418 (“[A] patent
composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the
prior art.” . . . [I]t can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does.”).
Thus, in order to set forth a ground of unpatentability based on
obviousness in the manner required by our Rules and governing case law,
the Petition must identify both the specific teaching in each prior art
reference that it relies upon with respect to each claim limitation, and a
rationale for why one of ordinary skill in the art would have combined those
specific teachings in the specific manner claimed.
2. Secondary Considerations
The parties have not directed us to any evidence of secondary
considerations.
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3. Analysis of Grounds 2 and 3
In our Decision on Institution, we observed that the Petition did not
appear to adequately specify the bases for Grounds 2 and 3:
The claim charts in the Petition do not appear to identify
the specific combination of teachings that Petitioner is relying
upon to demonstrate obviousness. For example, in its claim
chart for Ground 2, Petitioner cites portions of Clay, Pavel, and
Zwartjes as allegedly teaching or suggesting each and every
element of claim 1, and does not identify which specific
reference is relied upon with respect to each element. See Pet.
45–54. Petitioner’s claim chart for Ground 3 is similar:
Petitioner repeatedly cites disclosures from both Cordsen and
Zwartjes with respect to individual claim elements, and does
not identify the specific reference that is relied upon for each
claim element. See id. at 67–79.
Petitioner’s rationales for combining the cited references
also appear to lack specificity. For example, in its discussion of
Ground 2, Petitioner argues that a skilled artisan would have
had reason to modify Clay to incorporate Pavel’s receiver
pattern. Pet. 42–43. Two paragraphs later, Petitioner argues
that a skilled artisan would have had reason to modify Clay to
incorporate the non-aligned receiver pattern of Zwartjes. Id. at
44. In the next paragraph, Petitioner argues that such a person
also would have had reason to modify Zwartjes to incorporate
the non-uniform sampling patterns of Clay and/or Pavel. Id. at
44–45.
In its discussion of Ground 3, Petitioner indicates that a
skilled artisan would have had reason to apply “the
reconstruction techniques taught by Zwartjes to the irregular or
non-uniform sampling pattern of Cordsen with a reasonable
expectation of success.” Id. at. 66. This rationale also appears,
at least preliminarily, to lack specificity.
D.I. 28–29. After we issued our Decision on Institution, Petitioner moved to
supplement Dr. Yilmaz’s declaration to include additional testimony
regarding why one of ordinary skill in the art allegedly would have had
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reason to combine the cited references. See Paper 21, 2–4; Ex. 1023 ¶¶ 65,
67, 74. Though we permitted Petitioner to supplement the record in other
ways, we denied Petitioner’s request to supplement the evidence regarding
reasons to combine. See Paper 27, 9; Ex. 1023 ¶¶ 65, 67, 74.
Petitioner subsequently filed a Reply that purports to identify the
specific combinations of references upon which Petitioner is relying. See
Reply 12–14. Petitioner’s Reply identifies two specific combinations of
references for Ground 2, and one specific combination for Ground 3. See id.
at 14. Petitioner’s Reply also cites to new evidence regarding why one of
ordinary skill in the art allegedly would have combined these newly-
identified combinations to arrive at the claims. See id. at 16–21 (citing
Ex. 1033 ¶¶ 23–27; Ex. 2009, 182:14–17). Petitioner asserts that the
substance of these new arguments was disclosed to Patent Owner during the
October 31, 2019, deposition of Dr. Yilmaz—a deposition that took place
nearly two months after our September 6, 2019, Decision on Institution. See
Reply 12; D.I. 1. Petitioner further asserts that this post-institution
disclosure of the bases for Grounds 2 and 3 was justified because Petitioner
was unaware at the time it filed its Petition whether the Board would accept
its claim construction positions. See id. at 12–13.
Patent Owner argues in response that the Petition fails to adequately
specify the bases for Grounds 2 and 3 in the Petition, or to provide adequate
motivation-to-combine theories. Resp. 16. Regarding Ground 2, Patent
Owner argues: “Petitioners alternatively rely on all three references for most
of the claim limitations,” and thus “alternatively assert hundreds of different
combinations of these references for each of the independent claims.” Id. at
17–18. Patent Owner argues that Petitioner also failed to explain why one of
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ordinary skill in the art would have been motivated to combine the
references in any particular manner with a reasonable expectation of success.
Id. at 22. Patent Owner makes similar arguments regarding Ground 3. See
id. at 19–22. Patent Owner additionally argues that Petitioner should not be
permitted to rely on the new arguments regarding Grounds 2 and 3 set forth
in the Reply, and that Petitioner has not offered any adequate justification
for not including these arguments in its Petition. See Sur-Rely 2–5.
The statutes and rules governing inter parties reviews make clear that
Petitioner was required to specify the bases for Grounds 2 and 3, and the
evidence supporting these grounds, in the Petition itself. See 35 U.S.C.
§ 312(a) (We may consider a petition for inter partes review “only if . . . the
petition identifies, in writing and with particularity, each claim challenged,
the grounds on which the challenge to each claim is based, and the evidence
that supports the grounds for the challenge to each claim.”); 37 C.F.R.
42.104(b) (A petition for inter partes review must identify “how the
construed claim is unpatentable under the statutory grounds,” and “must
identify . . . where each element of the claim is found in the prior art patents
or printed publications relied upon”).
Decisions from our reviewing court also make clear that a petitioner
must make out its arguments for unpatentability in the petition, and cannot
change course later. “Unlike district court litigation—where parties have
greater freedom to revise and develop their arguments over time and in
response to newly discovered material—the expedited nature of IPRs bring
with it an obligation for petitioners to make their case in their petition to
institute.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d
1359, 1369 (Fed. Cir. 2016). In an inter partes review, the petitioner has the
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burden from the outset to show with particularity why the patent it
challenges is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d
1356, 1363 (Fed. Cir. 2016).
In addition, our Trial Practice Guide provides that Petitioner cannot
use its Reply to introduce evidence or arguments that should have been set
forth in its Petition. See, e.g., Consolidated TPG 73 (“Petitioner may not
submit new evidence or argument in reply that it could have presented
earlier, e.g., to make out a prima facie case of unpatentability.”).
On this record, and consistent with our Decision on Institution (see
D.I. 27–29) and Decision on Petitioner’s Motion to Submit Supplemental
Information (see Paper 27, 5–7), we determine that Petitioner improperly
waited until after institution to sufficiently identify the specific combination
of teachings from the prior art references on which it was relying, or the
reasons why one of ordinary skill in the art would have allegedly combined
the teachings of those references in a manner that would have satisfied the
challenged claims.
We reject Petitioner’s argument that it was unable to specify the bases
for Grounds 2 and 3 until after institution, when it knew whether the Board
would accept its claim construction positions. See Reply 12–13. We
declined to construe any claim terms in our Decision on Institution. See D.I.
15–16. Thus, even assuming arguendo that an unexpected claim
construction ruling could in some circumstances justify supplementing an
unpatentability ground, Petitioner’s argument would still have no merit in
this proceeding.
For the foregoing reasons, we do not consider the new arguments and
evidence regarding Grounds 2 and 3 that are set forth in the Reply. We
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instead evaluate Grounds 2 and 3 on the basis of the evidence and arguments
set forth in the Petition, the Yilmaz Declaration, and the portions of the
Yilmaz Supplemental Declaration that we admitted into the record.
We agree with Patent Owner that the claim charts in the Petition and
supporting declarations do not identify sufficiently the specific combination
of teachings that Petitioner is relying upon to demonstrate obviousness of
each claim. The claim charts are vague and identify multiple prior art
references that allegedly teach various claim limitations, without identifying
which specific reference Petitioner intends to rely on for each limitation.
See Pet. 45–63, 67–79.
Petitioner’s charts for Grounds 2 and 3 also do not contain citations to
specific portions of Zwartjes that allegedly teach or suggest the individual
limitations of claims 1, 10, or 14. Instead, Petitioner repeatedly directs
Patent Owner and the Board to “[s]ee Section VIII(B)(2) for Zwartjes
disclosure.” Pet. 67–71, 74–76, 78. It appears that Petitioner intended to
reference Section VIII(A)(2) of the Petition, the “Overview of Zwartjes”
section, rather than Section VIII(B)(2), which is an “Overview of Pavel.”
See Pet. 27–28, 40–41.8 But Section VIII(A)(2) of the Petition is merely a
generalized overview of Zwartjes. See Pet. 27–28. This section does not
adequately specify where any element of independent claims 1, 10, or 14 “is
found in the prior art” Zwartjes reference, or identify “the specific portions”
of Zwartjes “that support the challenge.” 37 C.F.R. § 42.104(b)(4).

8 In the Yilmaz Supplemental Declaration, Dr. Yilmaz corrects the
corresponding citations in his claim chart to refer to the “Overview of
Zwartjes” section of his declaration, which corresponds to Section
VIII(A)(2) of the Petition. See Ex. 1023, 60–65, 67–69, 71–72.
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Petitioner’s rationales for combining the cited references lack
specificity and do not cure the defects and ambiguities in Petitioner’s claim
charts. See Pet. 45–63. In its discussion of Ground 2, Petitioner first argues
that a skilled artisan would have had reason to modify Clay to incorporate
Pavel’s receiver pattern. Pet. 42–43. Two paragraphs later, Petitioner
argues that a skilled artisan would have had reason to modify Clay to
incorporate the non-aligned receiver pattern of Zwartjes. Id. at 44. In the
following paragraph, Petitioner argues that such a person also would have
had reason to modify Zwartjes to incorporate the non-uniform sampling
patterns of Clay and/or Pavel. Id. at 44–45. These contradictory rationales
do not adequately clarify Petitioner’s unpatentability contentions.
We find on this record that the Petition did not provide Patent Owner
with adequate notice of the specific combination of references that Petitioner
was pursuing with respect to Ground 2. For the same reasons, Petitioner has
not shown by a preponderance of the evidence that one of ordinary skill in
the art would have had reason to combine specific teachings or suggestions
from Clay, Pavel, and Zwartjes, in a manner that would have satisfied each
limitation of independent claims 1, 10, or 14, or dependent claims 2–9, 11–
13, or 15–17.
Petitioner’s stated rationale for Ground 3 is slightly more specific, but
nevertheless fails to remedy the defects and ambiguities in Petitioner’s claim
charts. See Pet. 62–79. Petitioner contends that a skilled artisan would have
had reason to apply “the reconstruction techniques taught by Zwartjes to the
irregular or non-uniform sampling pattern of Cordsen with a reasonable
expectation of success[].” Id. at. 66. Even assuming arguendo that this
conclusory and general rationale somehow would have given Patent Owner
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notice of the specific reference that Petitioner was relying on for each
limitation of claims 1–17, the Petition would still fail to identify “where each
element of the claim is found in the prior art” Zwartjes reference, or “the
specific portions of the evidence that support the challenge.” 37 C.F.R.
§ 42.104(b)(4).
For the foregoing reasons, we find that the Petition did not provide
Patent Owner with adequate notice of the specific combination of references
that Petitioner was pursuing with respect to Ground 3. For the same reasons,
Petitioner has not shown by a preponderance of the evidence that one of
ordinary skill in the art would have had reason to combine specific teachings
or suggestions from Cordsen and Zawartjes in a manner that would have
satisfied each limitation of independent claims 1, 10, or 14, or dependent
claims 2–9, 11–13, or 15–17.
F. Assignor Estoppel
Patent Owner argues in its Response that the doctrine of assignor
estoppel should bar institution in this case “because Mr. Peter Eick, one of
the listed inventors on the ’248 Patent who assigned all rights to Patent
Owner . . ., is now employed by Petitioner(s).” Resp. 58. Patent Owner
concedes that its assignor estoppel “argument is foreclosed by current
precedent,” but makes this argument in an attempt to preserve its rights on
appeal. See id. (citing Arista Networks, Inc. v. Cisco Sys., Inc., 908 F.3d 792
(Fed. Cir. 2018)).
We note that Patent Owner did not argue assignor estoppel in its
preliminary response to the Petition. Thus, the issue of assignor estoppel
was not before us when we issued our Decision on Institution. Even
assuming arguendo that Patent Owner could raise such an argument now
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after institution, it would still fail because it is foreclosed by controlling
precedent from our reviewing court. See Arista, 908 F.3d at 804 (“In sum,
we conclude that [35 U.S.C.] § 311(a) . . . unambiguously dictates that
assignor estoppel has no place in IPR proceedings.”). For the foregoing
reasons, we reject Patent Owner’s argument that the Petition was barred by
the doctrine of assignor estoppel.
G. Petitioner’s Motion to Exclude
Petitioner moves to exclude Exhibit 2008 (the Aminzadeh
Declaration), Exhibit 2011 (Dr. Aminzadeh’s CV), and Exhibits 2012–2015.
Paper 46, 1. For the reasons set forth below, Petitioner’s Motion to Exclude
is denied.
Before addressing the substance of Petitioner’s arguments, we note
that page 1 of the Motion to Exclude directs us to a separate document,
Paper 31, which “further explains the nature of the objections.” Paper 46, 1.
Page 11 of the Motion to Exclude contains similar references to arguments
set forth in Paper 31. See Paper 46, 11. Our Rules unambiguously foreclose
such attempts to incorporate by reference arguments from other documents.
37 C.F.R. § 42.6(a)(3) (2018) (“Arguments must not be incorporated by
reference from one document into another document.”). Accordingly, we
disregard these references to Paper 31 and consider only the arguments set
forth in the Motion to Exclude.
Petitioner first contends that the Aminzadeh Declaration should be
excluded pursuant to Federal Rules of Evidence 401, 402, 403, and 702.
Paper 46, 1. In particular, Petitioner argues that Dr. Aminzadeh’s testimony
is not the product of reliable principles and methods because he lacks the
experience in the field of compressive sensing necessary to qualify as a
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person of ordinary skill in the art. See Paper 46, 1–4; Fed. R. Evid. 702(c);
Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 592 n.10 (1993). We
note, however, that there is no requirement of a perfect match between the
expert’s experience and the relevant field. SEB S.A. v. Montgomery Ward &
Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). A person may not need to be a
person of ordinary skill in the art in order to testify as an expert under Rule
702, but rather must be “qualified in the pertinent art.” Sundance, Inc. v.
DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008).
Petitioner does not address the relevant legal standard, much less
demonstrate persuasively that Dr. Aminzadeh is not “qualified in the
pertinent art.” Sundance, 550 F.3d at 1363–64. Moreover, Dr. Aminzadeh
testifies in his declaration that he has been involved in numerous projects
related to compressive sensing over the course of 30+ years. Ex. 2008 ¶ 14.
We determine on this basis that Dr. Aminzadeh is “familiar with basic
principles of compressive sensing including those that can be leveraged to
improve the design of seismic surveys.” See supra § II.A. Accordingly,
Petitioner does not persuade us that Dr. Aminzadeh is not sufficiently
qualified to provide helpful testimony in this proceeding. See Paper 46, 2–3.
Petitioner next contends that Dr. Aminzadeh provides no basis for his
opinion that claim 1 requires a real-world, physical, seismic survey. See
Paper 46, 4–5. In our analysis of Ground 1, however, we found that
Zwartjes expressly or inherently discloses survey parameters and
reconstruction techniques for use in real-world seismic surveys. See supra
§ II.D.2. Thus, Zwartjes anticipates claim 1 even if Dr. Aminzadeh is
correct about this issue. Accordingly, this portion of Petitioner’s Motion to
Exclude is moot.
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Petitioner also contends that we should exclude several portions of
Dr. Aminzadeh’s testimony that support his opinion that the embodiment
described and depicted on page V29 and Figure 9(c) of Zwartjes could have
employed a single seismic source point, rather than multiple seismic source
points. Paper 46, 5–10. As discussed above, however, we are persuaded on
this record that the embodiment described and depicted on page V29 and
Figure 9(c) of Zwartjes inherently discloses multiple seismic source points.
See supra § II.D.2. Accordingly, these portions of Petitioner’s Motion to
Exclude also are moot.
Petitioner next contends that Exhibit 2011 (Dr. Aminzadeh’s CV)
should be excluded under Federal Rule of Evidence 702 because it “is
replete with opinions that are unreliable and inadmissible.” Paper 46, 11.
This portion of Petitioner’s Motion to Exclude is moot because this Decision
does not rely on any opinions allegedly set forth in Exhibit 2011.
Petitioner further contends that we should exclude Exhibits 2012
through 2015 under Federal Rules of Evidence 401, 402, 403, and 802,
because these exhibits relate to Patent Owner’s assignor estoppel
argument—an argument that Patent Owner admits is foreclosed by current
precedent. Paper 46, 11–12. Petitioner also asserts that Exhibits 2012,
2014, and 2015 are hearsay. These arguments are moot because this
Decision rejects Patent Owner’s assignor estoppel argument.
Because each substantive argument in Petitioner’s Motion to Exclude
is either unpersuasive or moot, Petitioner’s Motion to Exclude is denied.
H. Patent Owner’s Motion to Exclude
Patent Owner moves to exclude testimony during the October 31,
2019, deposition of Dr. Yilmaz that was allegedly elicited by leading
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questions, and testimony from Dr. Aminzadeh’s Deposition that was
allegedly transcribed incorrectly. Paper 47, 1–15. For the reasons set forth
below, Patent Owner’s Motion to Exclude is denied.
The testimony from Dr. Yilmaz’s October 31, 2019, deposition that is
the subject of Patent Owner’s Motion to Exclude is the testimony in which
Dr. Yilmaz allegedly disclosed the new arguments and evidence regarding
Grounds 2 and 3 that were set forth in Petitioner’s Reply. See Paper 47, 5–
10. We have held, however, that Petitioner may not rely on the new
evidence and arguments regarding Grounds 2 and 3 that were allegedly
disclosed during Dr. Yilmaz’s October 31, 2019, deposition, and set forth in
Petitioner’s Reply. See supra § II.E.3. Accordingly, this portion of Patent
Owner’s Motion to Exclude is moot.
Patent Owner’s argument regarding incorrectly transcribed testimony
relates to an instance in which Dr. Aminzadeh allegedly used the word
“simulate,” and the reporter incorrectly transcribed this word as “assimilate.”
See Paper 47, 14–15. Patent Owner subsequently withdrew this portion of
its Motion to Exclude after Dr. Aminzadeh corrected this alleged error in an
errata sheet. Paper 53, 5. Accordingly, this portion of Patent Owner’s
Motion to Exclude has been withdrawn.
Because each substantive objection in Patent Owner’s Motion to
Exclude is either moot or has been withdrawn, Patent Owner’s Motion to
Exclude is denied as moot.
III. CONCLUSION
For the foregoing reasons, we determine that Petitioner has shown by
a preponderance of the evidence that claims 1–9 of the ’248 Patent are
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unpatentable, but has not shown by a preponderance of the evidence that
claims 10–17 are unpatentable.9
In summary,
Claims 35 U.S.C. § Reference(s)/ Basis
Claims Shown
Unpatentable
Claims Not
Shown
Unpatentable
1–9 § 102 Zwartjes 1–9
1–17 § 103(a) Clay, Pavel, Zwartjes 1–17
1–17 § 103(a) Cordsen, Zwartjes 1–17
Overall
Outcome 1–9 10–17

9 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding, 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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Patent 9,846,248 B2

40

IV. ORDER
For the reasons set forth above, it is hereby:
ORDERED that claims 1–9 of U.S. Patent 9,846,248 B2 have been
shown to be unpatentable;
FURTHER ORDERED that claims 10–17 of U.S. Patent 9,846,248
B2 have not been shown to be unpatentable; and
FURTHER ORDERED that because this is a final written decision,
parties to the proceeding seeking judicial review of this decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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Patent 9,846,248 B2

41
PETITIONER:

William P. Jensen
James E. Hudson III
CRAIN, CATON & JAMES
wjensen@craincaton.com
jhudson@craincaton.com

PATENT OWNER:

Dion M. Bregman
Rick L. Rambo
Neil V. Ozarkar
Alexander B. Stein
MORGAN, LEWIS & BOCKIUS LLP
dion.bregman@morganlewis.com
rick.rambo@morganlewis.com
neil.ozarkar@morganlewis.com
alexander.stein@morganlewis.com