PGS GEOPHYSICAL AS v. IANCU ( 2018 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
PGS GEOPHYSICAL AS,
Appellant
v.
ANDREI IANCU, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2017-1582
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2015-
00313.
______________________
Decided: June 18, 2018
______________________
JESSAMYN SHELI BERNIKER, Williams & Connolly LLP,
Washington, DC, argued for appellant. Also represented
by DAVID I. BERL, DAVID M. KRINSKY, JAMES MATTHEW
RICE, CHRISTOPHER ALAN SUAREZ.
THOMAS W. KRAUSE, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA,
2 PGS GEOPHYSICAL AS v. IANCU
argued for intervenor. Also represented by NATHAN K.
KELLEY, MONICA BARNES LATEEF, MEREDITH HOPE
SCHOENFELD.
______________________
Before LOURIE, CLEVENGER, and REYNA, Circuit Judges.
CLEVENGER, Circuit Judge.
PGS Geophysical AS (“PGS”) appeals the final written
decisions of the Patent Trial and Appeal Board (“the
Board”) in an inter partes review (“IPR”) proceeding
instituted by WesternGeco LLC (“WesternGeco”). 1 In its
first decision, the Board invalidated claims 1, 4, 10 and 11
of U.S. Patent No. 6,026,059 (“’059 Patent”) as being
anticipated or obvious in light of the prior art. Further,
after granting WesternGeco’s request for rehearing, a
majority of the Board invalidated dependent claim 2 by
associating its limitation to one step in independent claim
1 (which was taught by the prior art), over PGS’s argu-
ments that the limitation applied to a different step in
claim 1 (which was not taught by the prior art). We agree
with the Board as to the invalidity of claims 1, 4, 10 and
11, but disagree with the majority of the Board as to claim
2.
1 While PGS’s appeal before this court was pending,
the parties settled and WesternGeco withdrew from the
appeal. See WesternGeco’s Unopposed Mot. to Withdraw
at 1 (Aug. 5, 2017), ECF No. 25; Order at 1–2 (Aug. 7,
2017), ECF No. 26. The United States Patent and
Trademark Office subsequently intervened pursuant to
35 U.S.C. § 143 and properly became the party-at-interest
in this appeal. See Notice of Intervention by the U.S. Pat.
& Trademark Off. at 1 (Aug. 7, 2017), ECF No. 27;
Knowles Elecs. LLC v. Iancu, 886 F.3d 1369, 1371 (Fed.
Cir. 2018).
PGS GEOPHYSICAL AS v. IANCU 3
BACKGROUND
The ’059 Patent concerns three-dimensional seismic
surveying and processing of the resultant data. Seismic
survey data is generated and acquired using source-
receiver pairs; a series of “sources” are physically placed
in an array relative to a series of “receivers.” The sources
emit a “shot” via vibrations or explosions, which travels
through the target geology and bounces off geological
features before returning to the receivers. Figure 1 below
shows a representative seismic survey diagram and
“generalized waveform response”—known as a “trace”—
picked up by the receiver. See J.A. 144. When a shot
bounces off of a geological feature, it produces a spike in
the trace signal’s amplitude relative to the background
noise. Data processors then collect these trace signals
and utilize a variety of techniques to increase the resolu-
tion and accuracy of the survey, in essence turning dis-
crete signal spikes into subsurface maps.
One metric by which data processors measure the
resolution of a survey is through the signal-to-noise
ratio—the ratio of signal strength (i.e. signal carrying
relevant information) to background noise. For three-
4 PGS GEOPHYSICAL AS v. IANCU
dimensional seismic surveys, data processors often
increase this ratio using a process called binning, which
groups traces together by some shared feature. For
instance, traces may be grouped into common midpoint
bins (CMBs)—containing traces that have the same
lateral midpoint between their source-receiver pairs—or
common reflection point bins (CRPs)—containing traces
that have the same subsurface reflection point between
their source-receiver pairs. CMBs are generally used for
simple sub-surface geometries, whereas CRPs may be
used for more complex geometries.
Each bin has a particular “fold,” which is the number
of traces within the bin. Each trace within the bin also
has a particular “offset”—the distance between the source
and receiver that produced the trace—and “azimuth”—the
angle between the offset line and some reference axis.
The figure below depicts an overhead view of a bin, where
each line passing through the reference point at “2”
represents a single trace. See J.A. 642. By “stacking” (i.e.
summing) numerous traces having a common reference
point (i.e. midpoint or reflection point), the amplitude of
the signal becomes more pronounced relative to the
amplitude of the noise, thereby increasing the signal-to-
noise ratio and overall resolution of the survey.
PGS GEOPHYSICAL AS v. IANCU 5
However, bins generally contain non-uniform offset
and azimuth distributions, as shown in the figure. In
other words, traces may be more concentrated at certain
offsets or azimuths, rather than evenly distributed about
the reference point. In the figure, bin 2 contains numer-
ous traces from mid-distance source-receiver pairs, but far
fewer traces from both the nearest and furthest source-
receiver pairs. According to the ’059 Patent, these non-
uniform distributions negatively impact the analysis of
the stacked trace data. In particular, variations that
arise when normalizing 2 the amplitude of each trace
subsequently impact the amplitudes of the stacked traces.
2 In seismic surveying, shots lose energy as they
propagate through the target geology. This means that
geological features further from the source produce weak-
er signal spikes relative to the background noise. Ampli-
tude normalization is a process that accounts for this
energy loss by adjusting the amplitude of identifiable
PGS GEOPHYSICAL AS v. IANCU 7
two traces. The process of generating sub-bins with the
same number of traces ensures each bin has sufficient
offset and azimuth diversity to increase the signal-to-
noise ratio, and that those traces are uniformly distribut-
ed within each bin so as to avoid problems caused by
amplitude normalization.
WesternGeco filed a petition requesting an IPR of
claims 1–12 of the ’059 Patent. The Board instituted the
IPR only as to claims 1-5, 10 and 11. Although the Board
erred in failing to institute the IPR on every claim West-
ernGeco challenged, SAS Inst., Inc. v. Iancu, 138 S. Ct.
1348, 1354 (2018), neither the Appellant nor the Interve-
nor complain about this failure, PGS Geophysical AS v.
Iancu, Nos. 16-2470, 16-2472, 16-2474, slip op. at 11–13,
2018 WL 2727663 at *5–6 (Fed. Cir. June 7, 2018) (noting
that the Board’s partial institution decision is a waivable
error). Claim 5 was upheld, and is not implicated in this
appeal.
Independent claim 1 of the ’059 Patent discloses a
method of generating bins with regularized sub-bins. The
relevant claims at issue read as follows:
1. A process for generating a bin of common mid-
point traces from a three dimensional seismic
survey data set, each of the traces having a
shot location and a receiver location associated
therewith, the process comprising:
gathering from the data a plurality of traces
having a common reference point . . . ;
assigning a coordinate set to a plurality of
traces in the common reference point bin,
wherein the coordinates are associated
particular bin have the same number of traces contained
therein. The parties do not challenge this construction.
8 PGS GEOPHYSICAL AS v. IANCU
with the shot position and the receiver po-
sition associated with the traces . . .
whereby a coordinate designated set of
traces is defined; and
organizing the coordinate-designated set of
traces into a set of bins having a regular-
ized number of traces.
2. A process as in claim 1, wherein a plurality of
the coordinate-designated set of traces have
the same coordinates.
3. A process as in claim 2, further comprising
adding a plurality of traces having the same
coordinates.
4. A process as in claim 1, wherein each trace has
a unique set of coordinates.
10. A process as in claim 1 wherein the common
reference point comprises a common midpoint.
11. A process as in claim 1 wherein the common
reference point comprises a common reflection
point.
’059 Patent, col. 5 l. 48–col. 6 l. 4; col. 6 ll. 20–23.
In its first written decision, the Board found that
claims 1, 4 and 10 were anticipated under 35 U.S.C. § 102by U.S. Patent No. 4,933,912 (“Gallagher”). Gallagher
discloses a method of improving the signal-to-noise ratio
in CMB data processing by ensuring the selected traces
have diverse offsets and azimuths. Gallagher, col. 1 ll.
51–54. Gallagher selects particular traces by: (1) choosing
a desired number (n1) of folds in a particular CMB,
(2) assigning a coordinate system to the bin’s trace data,
(3) generating a number (n2) of angular sections (i.e. lines
A and B, below) in the coordinate system, and (4) generat-
ing a number (n3) of concentric shells (dashed concentric
circles, below) in the coordinate system. Id. at col. 5 l. 15–
10 PGS GEOPHYSICAL AS v. IANCU
permit ignoring or discarding traces. Thus, according to
PGS, Gallagher did not teach the “organizing” step of
claim 1 because Gallagher generally selects a single trace
from each section-shell region and ignores all others. But
in finding claim 1 invalid, the Board summarily rejected
these arguments.
Further, PGS did not dispute that if Gallagher teach-
es the “organizing” step of claim 1, claims 4 and 10 are
also invalid because Gallagher’s process results in a single
trace in each section-shell region and utilizes CMBs,
respectively. The Board initially refused to invalidate
claims 2 and 3, however, based on the assumption that
the ’059 Patent required each regularized sub-bin to
contain a plurality of traces—a limitation not taught by
Gallagher.
The Board also invalidated claim 11 as being obvious
in view of Gallagher and U.S. Patent No. 4,596,005 (“Fra-
sier”). The Board relied on Frasier only because it taught
using CRP gathers instead of conventional CMB gathers
when surveying complex geologies. Frasier, col. 21 l. 67–
col. 22 l. 7. The Board rejected PGS’s arguments that the
combination was improper, pointing out its limited reli-
ance on Frasier and that neither Gallagher nor Frasier
teaches away from the claimed invention, but merely
address different aspects of trace data processing.
After the first written decision issued, WesternGeco
requested a rehearing based on the Board’s analysis of
claim 2. The Board granted the request, and subsequent-
ly issued a divided second decision, with a majority inval-
idating claim 2 over a dissent by the author of the initial
decision.
In the second decision, the majority reasoned that
claim 2 should be associated to the “assigning” step of
claim 1, rather than the “organizing” step, because that is
where “a coordinate-designated set of traces” is first
defined. In other words, the majority understood the
PGS GEOPHYSICAL AS v. IANCU 11
claim to require a plurality of traces before the “organiz-
ing” step, but not necessarily after. The majority thus
determined that Gallagher anticipated claim 2 because it
taught a plurality of traces in areas that would later
become section-shell regions (i.e. sub-bins) even though
Gallagher ultimately selected only one trace per region.
The dissent did not dispute that the term “coordinate-
designated set of traces” was defined in the assigning
step, but that the “organizing” step modified the “set of
traces” from the “assigning” step by arranging them into
regularized sub-bins. In other words, the dissent under-
stood the claim to require a plurality of traces in each
sub-bin after the “organizing” step. The dissent relied
heavily on the teachings of the specification, the sur-
rounding claims, and the evidence of record, and charged
the majority with considering only the “plain language,”
without context.
We have jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(4)(A) (2012); see PGS Geophysical AS, Nos. 16-
2470, 16-2472, 16-2474, slip op. at 9 (concluding that
appellate jurisdiction exists over final Board decisions
arising from a partial institution). 4
4 We asked the parties for additional briefing on the
issue of appellate jurisdiction. Both parties found no
impediment to our jurisdiction, while noting that the
Board in this case erred in failing to institute the IPR on
all of the claims asserted in the petition. See SAS Inst.,
138 S. Ct. at 1354 (requiring that the Board address all
claims asserted in a petition upon instituting an IPR).
Neither party seeks a remand pursuant to which the
Board would be required to adjudicate the claims on
which the IPR was not instituted.
12 PGS GEOPHYSICAL AS v. IANCU
A
PGS first challenges the Board’s construction of the
term “organizing,” and whether Gallagher anticipates the
“organizing” step of claim 1. We affirm the Board’s deci-
sion.
We review the Board’s claim construction rulings de
novo, In re Cuozzo Speed Techs., LLC, 793 F.3d 1268,
1279–80 (Fed. Cir. 2015), applying the broadest reasona-
ble interpretation. 5 37 C.F.R. § 42.100(b) (2016); Cuozzo
Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016).
Under the broadest reasonable interpretation, the words
of the claim must be given their plain meaning, unless
such meaning is inconsistent with the specification.
Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed.
Cir. 2016) (citing Straight Path IP Grp., Inc. v. Sipnet EU
S.R.O., 806 F.3d 1356, 1362 (Fed. Cir. 2015)).
Anticipation under 35 U.S.C. § 102 is a question of
fact, which we review for substantial evidence. Blue
Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1341 (Fed.
Cir. 2016). Substantial evidence is “something less than
the weight of the evidence but more than a mere scintilla”
and is “such relevant evidence as a reasonable mind
might accept as adequate to support a conclusion.” In re
Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012). “Where
5 While we review the claim construction applying
broadest reasonable interpretation, we note that the
outcome would be the same under the standard set forth
in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).
See Changes to the Claim Construction Standard for
Interpreting Claims in Trial Proceedings Before the
Patent Trial and Appeal Board, 83 Fed. Reg. 21,221 (May
9, 2018) (proposing a rule to use the same claim construc-
tion standard during IPR proceedings as that used by
district courts).
PGS GEOPHYSICAL AS v. IANCU 13
two different conclusions may be warranted based on the
evidence of record, the Board’s decision to favor one
conclusion over the other is the type of decision that must
be sustained by this court as supported by substantial
evidence.” In re Bayer Aktiengesellschaft, 488 F.3d 960,
970 (Fed. Cir. 2007).
The question we must answer is whether the Board
erred in holding that the term “organizing,” as used in
claim 1 of the ’059 Patent, includes ignoring or discarding
traces. It is undisputed that Gallagher ignores or dis-
cards traces after creating section-shell regions (i.e. sub-
bins). Thus, if the “organizing” step of claim 1 does not
preclude ignoring or discarding traces, Gallagher antici-
pates the claim. But if all traces assigned coordinates in
the “assigning” step must be placed into regularized sub-
bins in the “organizing” step, without ignoring or discard-
ing any traces, PGS argues that Gallagher cannot antici-
pate the claim, because Gallagher ignores or discards
some traces. Thus, applying the broadest reasonable
interpretation, we must discern the meaning of the term
“organizing” in the context of the ’059 Patent.
PGS concedes that the Patentee did not act as a lexi-
cographer by giving a special definition to the word “or-
ganizing.” Oral Argument at 9:58. PGS also recognizes
that the ordinary English language definition of “organiz-
ing” may include acts such as ignoring or discarding, but
argues that the claim term must nonetheless exclude such
acts. J.A. 882; Oral Argument at 2:27. According to PGS,
the ’059 Patent’s “organizing” step uses all available
traces, so the patent should not be understood to allow
any form of “organizing” that ignores or discards trace
data. PGS at bottom is arguing that the “organizing” step
must preclude such acts. But nothing in the specification
of the ’059 Patent supports PGS’s argument, and PGS
failed to produce an expert opinion that the ordinary
artisan in this art would necessarily understand that
“organizing” must mean rearranging data without ignor-
14 PGS GEOPHYSICAL AS v. IANCU
ing or discarding any data. If the Patentee had intended
to prohibit ignoring or discarding traces in the “organiz-
ing” step, it would have been easy to do so.
We first examine the intrinsic evidence—the ’059 Pa-
tent itself and prosecution history—to determine whether
the term “organizing” precludes ignoring or discarding
traces. We find no such support in the ’059 Patent or
prosecution history. The only support PGS provides is
that: (1) “a coordinate-designated set of traces” is defined
in the “assigning” step, (2) the same “coordinate-
designated set of traces” is organized in the “organizing”
step, and (3) ignoring or discarding data is supposedly
contrary to the purpose of the invention.
The specification, however, fails to address how trac-
es—which may be non-regularized at the time of data
acquisition—are processed and organized into regularized
sub-bins without ignoring or discarding trace data. On
the one hand, the specification teaches that offset distri-
butions cannot be regularized at the data acquisition
stage. ’059 Patent, col. 1 ll. 31–40 (“[I]t is seen that the
offset distribution is not uniform. This pattern is depend-
ent on the acquisition geometry, and this non-uniform
pattern has not been found to be avoidable. Changing the
acquisition geometry to accommodate offset distribution
in the [CMBs] is not practical.”). On the other hand, the
specification provides an exemplar that seemingly gener-
ates traces that would produce regularized sub-bins at the
acquisition stage. Id. at col. 4 ll. 1–5 (“In this example, the
acquisition geometry resulted in two traces populating
each common-inline/common-crossline bin . . . .”). Yet
nowhere has PGS alleged that merely associating the
azimuth to each trace automatically transforms a non-
regularized offset distribution to a regularized sub-bin
distribution. In short, there is no teaching that all of the
traces gathered are assigned coordinates in the “assign-
ing” step, or that all traces in the “assigning” step end up
in sub-bins after the “organizing” step.
PGS GEOPHYSICAL AS v. IANCU 15
Without any clear meaning based on the intrinsic evi-
dence, we may then look to extrinsic evidence to see
whether the term “organizing” precludes ignoring or
discarding. See Helmsderfer v. Bobrick Washroom Equip.,
Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008) (“A court may
look to extrinsic evidence so long as the extrinsic evidence
does not contradict the meaning otherwise apparent from
the intrinsic record.”) (citation omitted). PGS admits that
it did not act as its own lexicographer to define “organiz-
ing,” but nonetheless argues that using dictionary defini-
tions rids the term of all context provided by the ’059
Patent. While dictionaries may not resolve the plain
meaning of a term in a patent, they may be helpful,
especially as to how one of ordinary skill in the art would
understand the term. See id. (“When the intrinsic evi-
dence is silent as to the plain meaning of a term, it is
entirely appropriate . . . to look to dictionaries or other
extrinsic sources for context—to aid in arriving at the
plain meaning of a claim term.”).
Dictionaries define the term “organize” to mean: “to
undergo physical or organic organization . . . to arrange
elements into a whole of interdependent parts,” Merriam-
Webster’s Collegiate Dictionary 819 (10th ed. 1993), “to
systematize; order,” Random House Webster’s College
Dictionary 953 (1991), “to put together into an orderly,
functional, structured whole . . . [t]o arrange in a coherent
form; systematize . . . [or t]o arrange in a desired pattern
or structure,” The American Heritage Dictionary 1275 (3d
ed. 1992). None of these definitions explicitly preclude
ignoring or discarding as a part of “organizing.”
At oral argument, PGS clarified whether the ’059 Pa-
tent ever envisioned ignoring or discarding traces. PGS’s
attorney first reiterated that all traces assigned to the
coordinate system at the “assigning” step are subsequent-
ly organized, without ignoring or discarding any traces.
Oral Argument at 7:03. But PGS’s attorney later clarified
that some traces acquired during a survey may be ignored
16 PGS GEOPHYSICAL AS v. IANCU
prior to the “gathering” or “assigning” step in order to
produce regularized sub-bins. Oral Argument at 26:29.
In other words, PGS is attempting to distinguish Gal-
lagher by claiming that the ’059 Patent may ignore trace
data early in its process, but not between the “assigning”
and “organizing” steps.
We do not find this distinction compelling. Nothing in
the ’059 Patent or dictionary definitions limits the scope
of the term “organizing” to preclude ignoring or discarding
trace data. Nor does the specification require any such
ignoring or discarding to occur prior to the “gathering” or
“assigning” steps. The fact that the ’059 Patent envisions
ignoring or discarding traces to regularize its sub-bins is
enough to conclude that the term “organizing” may allow
for ignoring or discarding traces. To hold otherwise would
be to read in a preclusive limitation not present in the
claim. Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
898, 904 (Fed. Cir. 2004) (citing Arlington Indus., Inc. v.
Bridgeport Fittings, Inc., 345 F.3d 1318, 1327 (Fed. Cir.
2003); Gart v. Logitech, Inc., 254 F.3d 1334, 1343 (Fed.
Cir. 2001)).
And even if ignoring or discarding traces cannot be
considered part of the “organizing” step, the claim is not
limited to only the steps recited. See Dow Chem. Co. v.
Sumitomo Chem. Co., 257 F.3d 1364, 1380 (Fed. Cir.
2001) (“It is fundamental that the use of th[e] phrase
[comprising] as a transitional phrase does not exclude
additional unrecited elements, or steps (in the case of a
method claim).”) (internal quotation marks omitted); see
also In re Affinity Labs of Tex., LLC, 856 F.3d 902, 907
(Fed. Cir. 2017) (noting that use of the term “comprising”
“signals that the breadth of [the method claim] allows for
additional steps interleaved between the recited steps,”
and that the Board did not err in concluding that the
claim does not prohibit additional, intervening steps
between those recited); Exergen Corp. v. Wal-Mart Stores,
Inc., 575 F.3d 1312, 1319 (Fed. Cir. 2009) (finding that a
PGS GEOPHYSICAL AS v. IANCU 17
claim requiring a particular method step was anticipated
by prior art that performed additional steps because of
the claim’s use of “comprising”). Thus, it would not be
improper to consider ignoring or discarding traces as an
additional, unrecited step that occurs prior to or during
the “organizing” step.
Since the ’059 Patent does not preclude ignoring or
discarding traces as part of the “organizing” step, we
agree that Gallagher anticipates claim 1. Gallagher
teaches a process of assigning a coordinate system to
traces, thereby defining a coordinate-designated set of
traces (i.e. by graphically representing the physical array
locations), and organizing those traces into regularized
sub-bins (i.e. by generating section-shell regions, and
ignoring or discarding some trace data). Thus, we affirm
the Board’s decision invalidating claim 1.
B
Next, PGS challenges the Board’s majority decision on
rehearing to associate the limitation of claim 2 with the
“assigning” step—as opposed to the “organizing” step—of
claim 1. This too is a matter of claim construction, which
we review de novo. In re Cuozzo Speed Techs., LLC, 793
F.3d at 1279-80.
Claim 2 recites the limitation “wherein a plurality of
the coordinate-designated set of traces have the same
coordinates.” ’059 Patent, col. 5 ll. 65–67. As the majority
noted, “a coordinate-designated set of traces” is first
defined in the “assigning” step of claim 1. Id. at col. 5 ll.
56–62 (“assigning a coordinate set to a plurality of trac-
es . . . whereby a coordinate-designated set of traces is
defined . . . .”). But the same limitation is recited again in
the “organizing” step. Id. at col. 5 ll. 63–64 (“organizing
the coordinate-designated set of traces into a set of bins
having a regularized number of traces . . . .”). The ques-
18 PGS GEOPHYSICAL AS v. IANCU
tion is which step the limitation in dependent claim 2
modifies. 6
On rehearing, the Board’s majority answered this
question by associating the limitation of claim 2 to the
first recitation of “a coordinate-designated set of traces” in
the “assigning” step of claim 1. As a result, the majority’s
claim construction required a plurality of traces before the
“organizing” step, but not necessarily after. The majority
concluded that Gallagher anticipated claim 2, despite the
fact that Gallagher’s regularized sub-bins contain a single
trace post-organizing, because Gallagher taught a plurali-
ty of traces prior to its “organizing” step. Upon review, we
reverse the majority’s decision.
The specification and surrounding claims make clear
that the limitation in claim 2 should be associated with at
least the “organizing” step of claim 1. First, Figure 6 of
the ’059 Patent shows a plurality of traces having the
same coordinates (i.e. are in the same sub-bins) after the
“organizing” step. Second, the specification uses the exact
language of claim 2 when describing a final, organized set
of traces within sub-bins having a plurality of traces. ’059
Patent, col. 3 l. 62–col. 4 l. 1 (“In [the example of Fig. 5],
there is a constant fold of two traces per coordinate
6 Determining which recitation of “coordinate-
designated set of traces” in claim 1 that claim 2 modifies
does not require rewriting or reading additional limita-
tions into the claim, as the Board’s majority would be-
lieve. Because the recitations are identical, our task is
merely to decide where to “plug” the limitation of claim 2
into claim 1, as informed by the specification. Liebel-
Flarsheim Co., 358 F.3d at 904 (discussing the “twin
axioms regarding the role of the specification in claim
construction[:]” (1) that claims must be read in light of the
specification; but (2) that limitations from the specifica-
tion may not be read into the claims).
PGS GEOPHYSICAL AS v. IANCU 19
bin . . . [wherein] a plurality of the coordinate-designated
set of traces have the same coordinates.”). The specifica-
tion thus evinces that a plurality of traces having the
same coordinates exists both before and after the “organ-
izing” step, not just before.
An examination of the surrounding claims supports
this interpretation. For instance, claim 3, which depends
from claim 2, provides an additional step of “adding a
plurality of traces having the same coordinate.” Id. at col.
6 ll. 1–2. While one could presumably add traces having
the same coordinates before organizing the traces into
sub-bins, the specification also explicitly states that the
traces are added after the organizing step. Id. at col. 4
ll. 3–5 (“In this example, the acquisition geometry result-
ed in two traces populating each common-inline/common-
crossline bin, and, according to a further embodiment of
the invention, such traces are added to increase the signal
to noise ratio.”). Further, as the specification makes
clear, claim 4 discloses an alternative embodiment where
each sub-bin contains only a single trace post-organizing.
Id. at col. 4 ll. 5–7; col. 6 ll. 3–4. Taking all of these
factors together, claim 2 should be associated with at
least the “organizing” step of claim 1. Thus, Gallagher
does not anticipate the claim because it does not teach a
“plurality of the coordinate-designated set of traces” after
the “organizing” step.
Another way of looking at the question also arose dur-
ing oral argument. In essence, when applying the broad-
est reasonable interpretation to claim 2, the limitation
appears to fit comfortably into both the “assigning” and
“organizing” step of independent claim 1. Nothing in the
specification suggests doing so would be improper and, in
fact, it positively supports such an interpretation. See
’059 Patent, col. 3 l. 62–col. 4 l. 1 (disclosing a plurality of
traces having the same coordinates both before and after
the “organizing” step).
20 PGS GEOPHYSICAL AS v. IANCU
Furthermore, the typical rule of dependent claims is
that they “refer[] to a claim previously set forth and then
specify a further limitation of the subject matter claimed.”
35 U.S.C. § 112 (1975). The Manual of Patent Examining
Procedure (“MPEP”) generally requires that a patent
claim “provide explicit antecedent basis” for each term.
MPEP § 2173.05(e) (6th ed. Rev.3, July 1997); see Ener-
gizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366,
1370 (Fed. Cir. 2006) (looking to the MPEP and noting
that the requirement for antecedent basis is a rule of
patent drafting). Thus, we observe that when a claim
limitation has multiple antecedent recitations, the limita-
tion may apply equally to each previous recitation so long
as such an interpretation is not inconsistent with the
specification or claims. Viewed in this light, Gallagher
again does not anticipate claim 2, because it does not
teach a “plurality of the coordinate-designated set of
traces” both before and after the “organizing” step.
C
Finally, PGS challenges the Board’s conclusion that
Gallagher and Frasier render claim 11 obvious. Obvious-
ness under 35 U.S.C. § 103 is a legal conclusion based on
underlying factual findings. In re Gartside, 203 F.3d 1305,
1316 (Fed. Cir. 2000). As with anticipation, “[t]he scope
and content of the prior art . . . are determinations of fact”
that are reviewed for substantial evidence, In re Mouttet,
686 F.3d at 1330–31, but the ultimate legal conclusion of
obviousness is reviewed without deference. In re Elsner,
381 F.3d 1125, 1127 (Fed. Cir. 2004).
While PGS argues there was no expectation of success
in combining the prior art, that Gallagher and Frasier
address different problems, that the Board provided only
conclusory statements, and that it improperly shifted the
burden to PGS to disprove obviousness, we find none of
these arguments compelling.
PGS GEOPHYSICAL AS v. IANCU 21
Claim 11 states: “the common reference point [of
claim 1] comprises a common reflection point [(“CRP”)].”
’059 Patent, col. 6 ll. 22–23. While PGS attempts to frame
the issue as an extensive combination of Gallagher and
Frasier, the Board relied upon Frasier only because it
expounded on the use of CRP gathers to account for
nonsymmetrical travel paths and incident and reflected
signals in CMB gathers. The ’059 Patent only briefly
discusses the differences between CRP and CMB gathers,
and substantial evidence supports the Board’s finding of a
motivation to combine the two references—to account for
“complex subsurface structure containing dipping reflec-
tors [that] may produce inadequate subsurface coverage
maps.” J.A. 24 (quoting Petitioner’s motivation to com-
bine); see also J.A. 27 (adopting Petitioner’s motivation to
combine). We believe the motivation provided by the
Board is sufficient, and did not shift the burden of dis-
proving obviousness to PGS. Therefore, we affirm the
final decision of the Board invalidating claim 11.
AFFIRMED-IN-PART AND REVERSED-IN-PART
COSTS
No costs.