Westerngeco L.L.C. v. Ion Geophysical Corp. , 913 F.3d 1067 ( 2019 )

United States Court of Appeals
for the Federal Circuit
______________________
WESTERNGECO L.L.C.,
Plaintiff-Cross-Appellant
v.
ION GEOPHYSICAL CORPORATION,
Defendant-Appellant
______________________
2013-1527, 2014-1121, 2014-1526, 2014-1528
______________________
Appeals from the United States District Court for the
Southern District of Texas in No. 4:09-cv-01827, Judge
Keith P. Ellison.
______________________
Decided: January 11, 2019
______________________
JOHN C. O'QUINN, Kirkland & Ellis LLP, Washington,
DC, argued for plaintiff-cross-appellant. Also represented
by GREGG F. LOCASCIO, WILLIAM H. B URGESS; TIMOTHY
GILMAN, LESLIE M. SCHMIDT, New York, NY; LEE LANDA
KAPLAN, Smyser, Kaplan & Veselka, LLP, Houston, TX.
DAVID I. BERL, Williams & Connolly LLP, Washington,
DC, argued for defendant-appellant. Also represented by
KANNON K. SHANMUGAM, MASHA HANSFORD, ANDREW
CHARLES MCBRIDE, JAMES MATTHEW RICE; FRANK
PORCELLI, KEVIN SU, Fish & Richardson, PC, Boston, MA;
JACKOB BEN-EZRA, B AILEY KATHLEEN HARRIS, DANIELLE J.
2 WESTERNGECO L.L.C. v. ION GEOPHYSICAL CORP.
HEALEY, BRIAN GREGORY S TRAND, Houston, TX; FRANCIS
J. ALBERT, OLGA I. MAY, San Diego, CA; JUSTIN BARNES,
Troutman Sanders LLP, San Diego, CA.
______________________
Before DYK, WALLACH, and HUGHES, Circuit Judges.
DYK, Circuit Judge.
This case returns to us from the Supreme Court.
WesternGeco LLC v. ION Geophysical Corp., 138 S. Ct.
2129 (2018) (“WesternGeco III”). The sole claim remanded
to us by the Supreme Court is the lost profits award. The
Supreme Court held “that WesternGeco’s damages award
for lost profits was a permissible domestic application of
[35 U.S.C.] § 284,” id. at 2139, reversing our decision in
WesternGeco LLC v. ION Geophysical Corp., 791 F.3d
1340, 1349–52 (Fed. Cir. 2015), (“WesternGeco I”).1 But
the Supreme Court did not decide other challenges to the
lost profits award. In light of the Supreme Court’s deci-
sion and the intervening invalidation of four of the five
asserted patent claims that could support the lost profits
award, we remand to the district court.
BACKGROUND
This case involves a patent infringement suit brought
by WesternGeco L.L.C. (“WesternGeco”) against ION
Geophysical Corp. (“ION”) for infringement of claims 18,
19, and 23 of U.S. Patent No. 7,293,520, claim 15 of U.S.
Patent No. 7,162,967, and claim 15 of U.S. Patent No.
1 Our decision in WesternGeco I was vacated on
other grounds by WesternGeco LLC v. ION Geophysical
Corp., 136 S. Ct. 2486 (2016), but was reinstated in rele-
vant part on remand by WesternGeco LLC v. ION Geo-
physical Corp., 837 F.3d 1358 (Fed. Cir. 2016)
(“WesternGeco II”).
WESTERNGECO L.L.C. v. ION GEOPHYSICAL CORP. 3
7,080,607 (“Bittleston patents”), as well as claim 14 of
U.S. Patent No. 6,691,038 (“Zajac patent”).
The patented technology in this case relates to marine
seismic surveys for discovering oil and gas deposits be-
neath the ocean floor. The patent claims are directed to
technology for controlling the movement and positioning
of long streamers towed by a ship. Sensors are located
along the length of these streamers, and they detect
returning sound waves that are bounced off of the ocean
floor by an airgun. The collected data is then used to
create a map of the ocean’s subsurface geology. Control-
ling the positioning of the various streamers in the array
is important to the quality of the maps generated, which,
in turn, is important to identifying drilling locations for
oil or gas.
Both WesternGeco and ION domestically manufac-
ture devices, the Q-Marine and DigiFin respectively, for
steering streamers in marine seismic surveys. Western-
Geco does not sell its device, instead using it to perform
surveys abroad for oil companies. ION does not perform
surveys, instead supplying its device to customers who
perform the surveys abroad. This case does not involve
any question as to lost profits from domestic surveys.
In 2009, WesternGeco sued ION for patent infringe-
ment based on ION’s sales of its DigiFin devices to West-
ernGeco’s competitors in the marine seismic survey
market. After a jury trial, the asserted patent claims were
found to be not invalid, and ION was found to have in-
fringed all of the asserted patent claims under 35 U.S.C.
§§ 271(f)(1) and (2). The jury awarded WesternGeco a
reasonable royalty of $ 12.5 million and lost profits of
$ 93.4 million, but declined to award WesternGeco en-
hanced damages for willful infringement. The lost profits
award was based on 10 surveys, which, according to
WesternGeco, it would have won “but-for” ION’s sales of
its DigiFin device to WesternGeco’s competitors. West-
4 WESTERNGECO L.L.C. v. ION GEOPHYSICAL CORP.
ernGeco argues that without the patented technology
embodied in the device, ION’s customers would not have
been able to win the bids for the 10 surveys at issue.
In WesternGeco I we reversed the lost profits award as
being based on an unauthorized extraterritorial applica-
tion of the patent laws. Judge Wallach dissented on this
point. 791 F.3d at 1349–52, 1354–64. We unanimously
affirmed the district court’s refusal to award enhanced
damages for willful infringement. WesternGeco I, 791 F.3d
at 1353–54. WesternGeco petitioned for certiorari, which
the Supreme Court granted, vacated our original decision
in WesternGeco I, and remanded for further proceedings
consistent with its decision in Halo Elecs., Inc. v. Pulse
Elecs., Inc., 136 S. Ct. 1923, 1935–36 (2016). We reinstat-
ed our earlier opinion, including reversal of the lost prof-
its award, but we vacated the district court’s denial of
enhanced damages and remanded for further considera-
tion in light of Halo. WesternGeco II, 837 F.3d at 1361–64.
On remand, WesternGeco sought $ 43.6 million in en-
hanced damages, and the district court awarded West-
ernGeco $ 5 million in enhanced damages. The parties
then entered into a stipulated “Final Judgment pursuant
to Fed. R. Civ. P. 58.” The stipulation noted that the
parties had agreed to the reasonable royalty amount and
that ION had paid the full amount on November 25, 2016.
Both parties agreed not to appeal the enhanced damages
award and provided a schedule for payment of the en-
hanced damages award. The only item exempt from the
stipulation was the lost profits award, which Western-
Geco had petitioned for certiorari, requesting review of
our decision on the lost profits award. Neither party
appealed the stipulated final judgment.
The petition was granted with respect to the lost prof-
its award, and in WesternGeco III, the Supreme Court
reversed our decision on lost profits, holding that “West-
ernGeco’s damages award for lost profits [under 35 U.S.C.
WESTERNGECO L.L.C. v. ION GEOPHYSICAL CORP. 5
§ 271(f)(2)] was a permissible domestic application of
§ 284,” 138 S. Ct. at 2139, “as it was ION’s domestic act of
supplying the components that infringed WesternGeco’s
patents,” id. at 2138. The Supreme Court also noted that
“[i]n reaching this holding, we do not address the extent
to which other doctrines, such as proximate cause, could
limit or preclude damages in particular cases.” Id. at 2139
n.3. The Court then remanded the case to us “for further
proceedings consistent with this opinion.” Id. at 2139.
In December 2015, the United States Patent and
Trademark Office’s Patent Trial and Appeal Board
(“PTAB”) held four of the six asserted patent claims—’520
patent claims 18 and 19, ’967 patent claim 15, and ’607
patent claim 15—unpatentable. See WesternGeco LLC v.
ION Geophysical Corp., 889 F.3d 1308, 1331 (Fed. Cir.
2018) (“WesternGeco IPR”). While the case was pending in
the Supreme Court, we affirmed the PTAB’s unpatenta-
bility determination of these four claims. Id. Thus, the
only asserted claims that remain are ’520 patent claim 23
and ’038 patent claim 14, and it is uncontested that only
’520 patent claim 23 may now support the lost profits
award.
DISCUSSION
On remand from the Supreme Court, two issues re-
main for us to resolve: (1) the impact of the intervening
invalidation of four of the six asserted patent claims on
the fully paid reasonable royalty award, and (2) the
impact of the invalidation of the four claims on the lost
profits award and ION’s argument (presented in its
original appeal) that “Panduit cannot be satisfied because
ION and [WesternGeco] do not compete in the market-
place.” ION Open. Br. 56.
I. Reasonable Royalty Award
ION challenges the fully paid and satisfied reasonable
royalty award based on subsequent invalidation of a
6 WESTERNGECO L.L.C. v. ION GEOPHYSICAL CORP.
number of WesternGeco’s asserted patent claims. See
WesternGeco IPR, 889 F.3d at 1331. ION argues that the
calculation of the reasonable royalty under Georgia-
Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116,
1120 (S.D.N.Y. 1970), would be affected by the invalida-
tion of four of the six asserted patent claims, and there-
fore a new trial is required. For support, ION frames the
decision in Fresenius USA, Inc. v. Baxter International,
Inc., 721 F.3d 1330 (Fed. Cir. 2013) as holding that a
judgment cannot be final for purposes of intervening
patent invalidations if any part of the litigation remains
pending, and that here the lost profits award continues to
be litigated and is not final.
We disagree. Fresenius only applies where a judgment
is not final. Id. at 1340–41 & n.9; see also Fresenius USA,
Inc. v. Baxter Int’l, Inc., 733 F.3d 1369, 1371 (Fed. Cir.
2013) (Dyk, J., concurring in denial of rehearing en banc).
To be sure, finality under Fresenius requires that “the
litigation must be entirely concluded so that [the] cause of
action [against the infringer] was merged into a final
judgment . . . one that ends the litigation on the merits
and leaves nothing for the court to do but execute the
judgment.” 721 F.3d at 1341 (alterations in original)
(quoting Mendenhall v. Barber–Greene Co., 26 F.3d 1573,
1580 (Fed. Cir. 1994); see ePlus, Inc. v. Lawson Software,
Inc., 789 F.3d 1349, 1358 (Fed. Cir. 2015). But Fresenius
made clear that it does not allow reopening of a satisfied
and unappealable final judgment. 721 F.3d at 1340 (“As
the Supreme Court’s decision in Moffitt made clear, ‘[i]t is
a mistake to suppose . . . that . . . moneys recovered on
judgments in suits . . . might be recovered back [after a
patent is cancelled]. The title to these moneys does not
depend upon the patent, but upon . . . the judgment of the
court.’” (alterations in original) (quoting Moffitt v. Garr,
66 U.S. 273, 283 (1861)); see Pennsylvania v. Wheeling &
Belmont Bridge Co., 59 U.S. 421, 431 (1855).
WESTERNGECO L.L.C. v. ION GEOPHYSICAL CORP. 7
The particular facts of this case establish that the
reasonable royalty award constitutes a fully satisfied and
unappealable final judgment such that the subsequent
invalidation of asserted patent claims does not support
reopening. Here, ION and WesternGeco entered into a
compromise agreement resolving all of the issues in the
case except for the lost profits award. They stipulated to a
“Final Judgment pursuant to Fed. R. Civ. P. 58,” and ION
further manifested assent to the finality of the judgment
as to the reasonable royalty award by not appealing the
judgment and completing its payments under the agree-
ment. The parties’ agreement was reflected in a joint
motion filed in June 2017 that resolved all of the issues
except for lost profits, although the IPR decisions holding
that four of the six asserted patent claims were unpatent-
able had issued in December 2015. In these unique cir-
cumstances, it is clear that the reasonable royalty and
enhanced damages awards were agreed to by the parties
and subject to an unappealable final judgment, which was
satisfied and paid in full by ION to WesternGeco. ION
cannot now reopen the agreed and fully paid unappeala-
ble final judgment on the reasonable royalty based on the
subsequent invalidation of a subset of asserted patent
claims.
II. Lost Profits
ION argues that, despite the Supreme Court’s deci-
sion in WesternGeco III, we should either hold that lost
profits are not recoverable in this case or remand for a
new trial.
First, ION contends that the district court erred when
it denied ION’s renewed motion for judgment as a matter
of law (“JMOL”) on the theory that WesternGeco is not
entitled to lost profits based on a Panduit theory of but-
for causation because ION and WesternGeco are not
“direct competitors.” ION sells only devices and Western-
Geco sells only surveys. According to ION, because West-
8 WESTERNGECO L.L.C. v. ION GEOPHYSICAL CORP.
ernGeco and ION do not compete in the same market, lost
profits in the surveys are not recoverable. For legal sup-
port, ION relies on a statement from Rite-Hite Corp. v.
Kelley Co., 56 F.3d 1538 (Fed. Cir. 1995) (en banc) that
“the patentee must show a reasonable probability that,
‘but for’ the infringement, it would have made the sales
that were made by the infringer.” Id. at 1545 (emphasis
added). ION argues that the emphasized language estab-
lished a “direct competition” requirement between the
patentee and alleged infringer. ION also relies on our
decision in BIC Leisure Products, Inc. v. Windsurfing
International Inc., 1 F.3d 1214 (Fed. Cir. 1993), that “[t]he
Panduit test . . . operates under an inherent assumption
. . . that the patent owner and the infringer sell products
sufficiently similar to compete against each other in the
same market segment.” Id. at 1217–20.
We are not convinced. In context, the statement from
Rite-Hite was addressing the requirement of “but-for”
causation to recover lost profits, not imposing a require-
ment of direct competition between the patentee and
alleged infringer that was neither at issue in the case nor
further discussed in the opinion. See 56 F.3d at 1545. BIC
clearly focused the inquiry on whether the patent owner’s
and the infringer’s products are adequate substitutes for
consumers in a particular market. 1 F.3d at 1219. West-
ernGeco’s and ION’s devices competed by performing the
same types of functions for surveys. And there was suffi-
cient evidence in the record for the jury to conclude that
the products did compete—i.e., that consumers in the
surveying market (oil companies) considered Western-
Geco’s Q-Marine device and ION’s DigiFin device to be
substitutes for their surveying needs (i.e., that the prod-
ucts competed in the same market). See, e.g., J.A. 3791:1–
23; 7006; 7135.
To be sure, the fact that ION sells only devices while
WesternGeco only sells surveys may be relevant to the
computation of lost profits. WesternGeco had two catego-
WESTERNGECO L.L.C. v. ION GEOPHYSICAL CORP. 9
ries of lost profits: the profits attributable to providing the
patented device and the profits attributable to providing
other aspects of the surveys (e.g., the ship for towing the
streamers). “[A]pportionment is required even for non-
royalty forms of damages.” Ericsson, Inc. v. D-Link Sys.,
Inc., 773 F.3d 1201, 1226 (Fed. Cir. 2014). If the applica-
tion of the Panduit factors does not result in the separa-
tion of profits attributable to the patented device and the
profits attributable to providing other aspects of the
surveys (e.g., the ship for towing the streamers), it ap-
pears that apportionment is necessary. 2
This apportionment argument was not made in the
supplemental briefing and was raised for the first time at
oral argument. We conclude that the argument was
waived on this appeal. However, if the district court
orders a new trial on damages, ION may present argu-
ments concerning apportionment at the new trial.
ION’s second argument is that the lost profits award
cannot be sustained due to the intervening invalidation of
four of the five asserted Bittleston patent claims. Here,
the jury found all of the asserted claims to be infringed
and made a single lost profits award. But four of the five
claims relied on to support lost profits liability have since
been eliminated, and now the only remaining claim that
could support the lost profits award is ’520 patent claim
23, a dependent device claim. The jury instructions and
verdict form did not instruct the jury to award damages
based separately on infringement of each of the asserted
claims, and the jury did not do so.
2 See Mentor Graphics Corp. v. EVE-USA, Inc., 851
F.3d 1275, 1287–88 (Fed. Cir. 2017) (holding that “satis-
faction of the Panduit factors satisifie[d] principles of
apportionment” where, “on the undisputed facts of this
record,” it was clear the plaintiff’s damages were “tied to
the worth of its patented features”).
10 WESTERNGECO L.L.C. v. ION GEOPHYSICAL CORP.
The jury could have rested its award on infringement
of a now-invalidated claim, which cannot be sustained on
review. The general rule is that when a “jury was told it
could rely on any of two or more independent legal theo-
ries, one of which was defective,” the general verdict must
be set aside. i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d
831, 849–50 (Fed. Cir. 2010) (citing Walther v. Lone Star
Gas Co., 952 F.2d 119, 126 (5th Cir. 1992)), aff’d, 564 U.S.
91 (2011); see Northpoint Tech., Ltd. v. MDS Am., Inc.,
413 F.3d 1301, 1311–12 (Fed. Cir. 2005); United N.Y. &
N.J. Sandy Hook Pilots Ass’n v. Halecki, 358 U.S. 613,
619 (1959) (“[A] new trial will be required, for there is no
way to know that the invalid [legal theory] was not the
sole basis for the verdict.”); Maryland v. Baldwin, 112
U.S. 490, 493 (1884). We have recognized such a rule “[i]n
a situation—such as this one—where the jury rendered a
single verdict on damages, without breaking down the
damages attributable to each patent,” and at least one of
the patent claims was held to be defective. Verizon Servs.
Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1310
(Fed. Cir. 2007) (citing Memphis Cmty. Sch. Dist. v.
Stachura, 477 U.S. 299, 312 (1986)); see Accentra, Inc. v.
Staples, Inc., 500 F. App’x 922, 931 (Fed. Cir. 2013).
But we do not think a new trial is automatically re-
quired here if the jury must have found the technology
covered by ’520 patent claim 23 was essential for perform-
ing the surveys. In other words, the award can be sus-
tained if there was undisputed evidence that the
technology covered by ’520 patent claim 23 was necessary
to perform the surveys. In this area we apply a harmless-
ness analysis similar to our approach in the case of erro-
neous jury instructions. See Avid Tech., Inc. v. Harmonic,
Inc., 812 F.3d 1040, 1047 (Fed. Cir. 2016) (“[T]he error in
the instruction governing this central dispute at trial
would be harmless only if a reasonable jury would have
been required by the evidence to find non-infringement
even without the error.”).
WESTERNGECO L.L.C. v. ION GEOPHYSICAL CORP. 11
WesternGeco argues that both parties’ damages ex-
perts informed the jury that infringement of any one of
the Bittleston patent claims would support the full
amount of the lost profits award. It cites to ION’s own
expert, Mr. Gunderson. He testified that he “assumed
that . . . the patents are not found to be invalid and that—
that there is infringement that is occurring on at least one
valid claim,” “one of the base assumptions” for damages
experts. WesternGeco Open. Suppl. Br. 15 (citing Trial Tr.
at 4655:12–4656:3, WesternGeco LLC v. ION Geophysical
Corp., 953 F. Supp. 2d 731 (S.D. Tex. 2013), ECF No.
507). WesternGeco reads too much into this testimony.
Mr. Gunderson was merely identifying the basic assump-
tion of his patent damages calculations, and his testimony
was directed to showing that WesternGeco was not enti-
tled to the claimed lost profits for infringement based on
any of the patents. See, e.g., Trial Tr. at 4658, 4664, 4736,
ECF No. 507. We do not interpret this testimony as
supporting the theory that the entirety of the lost profits
could be supported by infringement of any one Bittleston
patent claim.
WesternGeco also relies on its own expert, Mr. Sims.
He testified that Bittleston’s lateral steering technology
was required to perform surveys and that “my under-
standing is that the benefits would be attributable to each
of the [Bittleston] patents because each of the patents
would prohibit ION from being able to sell and supply
and, therefore, the contractors from being able to use the
lateral steering technology.” WesternGeco Open. Supp.
Br. 14–15 (citing Trial Tr. at 2661:13–2662:6, ECF No.
497).
But it is clear that Sims was simply making an as-
sumption rather than making an independent determina-
tion the technology represented in the claims was
necessary to perform the surveys. See, e.g., Trial Tr. at
2386:2–7, ECF No. 474. Sims was a damages expert. He
disclaimed knowledge as to the technical aspects, and
12 WESTERNGECO L.L.C. v. ION GEOPHYSICAL CORP.
explicitly relied on others to support his assumption that
infringement of any one of the Bittleston patent claims
would have been necessary to perform the 10 surveys at
issue in the lost profits award. See, e.g., Trial Tr. at
2378:24–25 (“I confirmed with Mr. Walker, that there was
a requirement for lateral steering”), 2386, ECF No. 474;
Trial Tr. at 2657–58, ECF No. 497. Sims testified that he
relied on Mr. Walker for help in identifying surveys where
the patented technology was required, but Mr. Walker
disclaimed any knowledge as to the scope of the patents.
See Trial Tr. at 1760–61, ECF No. 453. Thus, this testi-
mony cannot support the jury award on lost profits.
WesternGeco has also not cited to any other specific
testimony that infringement of ’520 patent claim 23 was
necessary to perform the 10 surveys at issue. Instead, at
oral argument, WesternGeco argued that the jury was
informed generally that the lateral steering technology
was required for the surveys at issue and that claim 23
covers part of that technology. But lateral steering tech-
nology was also reflected in the four other, now-invalid,
asserted claims—’520 patent claims 18 and 19, ’967
patent claim 15, and ’607 patent claim 15. For example,
now-invalid ’520 patent claim 18 recites:
An apparatus comprising:
(a) an array of streamers each having a plu-
rality of streamer positioning devices there
along;
(b) a control system configured to use a control
mode selected from a feather angle mode, a
turn control mode, a streamer separation
mode, and two or more of these modes. ’520
Claim 18.
And now-invalid ’520 patent claim 19 recites:
The apparatus of claim 18 wherein the control
mode is the feather angle mode, and the control-
WESTERNGECO L.L.C. v. ION GEOPHYSICAL CORP. 13
ling comprises the control system attempting to
keep each streamer in a straight line offset from a
towing direction by a feather angle.
The only surviving claim, ’520 patent claim 23, recites:
The apparatus of claim 18 wherein the towing
comprises ending one pass, turning a towing ves-
sel having the streamers attached thereto while
throwing out the streamers before beginning an-
other pass, with the control mode in the turn con-
trol mode during the turning and throwing out.
To sustain the lost profits award, the record must estab-
lish that there was no dispute that the technology covered
by claim 23, independent of the technology covered by the
now-invalid claims (e.g., ’520 patent claim 18 and 19), was
required to perform the surveys at issue. This determina-
tion must be made on the present record.
Because of inadequate briefing on this issue prior to
oral argument, 3 and because the district court is in a
better position to consider the issue in the first instance,
we remand to the district court to determine whether a
new trial on lost profit damages is required. See Verizon,
503 F.3d at 1310; DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1262 (Fed. Cir. 2014). The district court
may deny a new trial on lost profits if, but only if, it
concludes that WesternGeco established at trial with
undisputed evidence that ’520 patent claim 23 covers
technology necessary to perform the surveys upon which
the lost profits award is based.
3 The parties subsequently filed Fed. R. App. P.
28(j) letters addressing where in the record the jury was
informed that the technology covered by ’520 patent claim
23 was necessary to perform the surveys at issue.
14 WESTERNGECO L.L.C. v. ION GEOPHYSICAL CORP.
CONCLUSION
For the foregoing reasons, we reject ION’s challenge
to the reasonable royalty award and remand to the dis-
trict court for further proceedings as to the lost profits.
We also reinstate sections I, II, and IV of our decision in
WesternGeco I and sections I and II of our decision in
WesternGeco II, which were not affected by either the
initial vacatur and remand from the Supreme Court, 136
S. Ct. 2486 (2016), or the Supreme Court’s subsequent
decision in WesternGeco III.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
No costs.